U.S. DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office
P.O. Box 1450 Alexandria, Virginia 22313-1450
MANUAL OF PATENT EXAMINING PROCEDURE
Ninth Edition, Latest Revision November 2015
Executive Summary
Chapters and Appendices
November 2015 Publication of Revision 07.2015
The November 2015 publication of Revision 07.2015 substantively revises MPEP §§ 2131.03, 2144.05, 2161, 2161.01, 2163, and 2181, and Appendix II. The PDF copies of MPEP Chapters 600, 700, 800, 1200, and FPC have also been re-dated to “November 2015” due to minor form paragraph revisions in these documents.
October 2015 Publication of Revision 07.2015
The October 2015 publication of Revision 07.2015 includes the following changes:
Substantive revisions to all Chapters of the MPEP except Chapters 1200, 1400, 1600, 1900, 2000, and 2300 (see the Summary of Changes Editor Note below for minor changes made to Chapters 1200, 1400, and 2300); the addition of Chapter 2900 entitled "International Design Applications" and Chapter FPC entitled "Form Paragraphs Consolidated"; and updates to the Table of Contents, Introduction, Subject Matter Index, and all Appendices except Appendix I and Appendix P.
The revised chapters and appendices incorporate changes to the laws, rules, and practice necessitated by, or made as a result of, the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012). The Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) as set forth in Title I of the PLTIA is effective as of May 13, 2015; the Patent Law Treaty (PLT) Implementation as set forth in Title II of the PLTIA is effective as of December 18, 2013. Editor Notes have been added to or revised in sections having limited applicability as a result of such changes.
Significant changes resulting from implementation of the Hague Agreement include the addition of Chapter 2900 (International Design Applications) and the revision of Chapter 1500 (Design Patents). In addition, Chapter 200 was revised to incorporate changes to priority and benefit claims made in the Hague Agreement implementation rulemaking. Conforming revisions were made in additional chapters.
Significant changes resulting from implementation of the PLT include revision of Chapter 600 to reflect changes to requirements for an application filing date (including filings without drawings or claims (for non-design applications)) and to provide for reference filings; and the addition in Chapter 200 of information relating to the provisions for the restoration of priority to foreign applications and domestic benefit of provisional applications where the later-filed application is filed more than 12 months after the relied upon application but within the 2 month grace period. Conforming revisions were made in additional chapters. Throughout the MPEP, revisions were also made to eliminate material pertaining to an "unavoidable delay"
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basis for revival, and to indicate a two month period for reply will be set in most instances where the Office previously set a one month or 30 day period for reply.
Chapters 800, 900, 1000, 1300, 1700, 1800, 2400, and 2500, which were not revised in the original Ninth Edition, 11.2013 (March 2014), also incorporate changes to the laws, rules, and practice necessitated by, or made as a result of, the Leahy-Smith America Invents Act (AIA), Public Law 112-29, 125 Stat. 284.
Chapters 500, 600, 1800, and 2400 were revised to reflect current practices pertaining to EFS-Web filings. Conforming revisions were made in additional chapters.
Chapter 900 was revised for changes necessitated by the Cooperative Patent Classification (CPC) system, a bilateral classification system jointly developed by the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). Conforming revisions were made in additional chapters.
Chapter 2700 was revised to update the discussion of patent term adjustment (PTA) provisions in view of recent rules changes and court decisions.
All revised chapters and Appendix R incorporate any changes necessitated by the nine patent-related final rule notices published between October 21, 2013 and May 19, 2015.
Summary of Effective Dates
MPEP Chapters
Sections that have been substantively revised in this revision (published October 2015 and November 2015) have a revision indicator of [R-07.2015] meaning that the section has been updated as of July 2015.
MPEP Appendices
App II (List of Decisions Cited) includes the decisions cited in this Revision of the Manual.
Appendix L (Patent Laws) and Appendix R (Patent Rules) include the laws and rules as in force effective May 19, 2015.
Appendix T is as in force effective July 1, 2015.
Appendix AI is as in force effective July 1, 2015.
Robert A. Clarke, Editor Manual of Patent Examining Procedure
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Summary of Changes to MPEP Chapters
[Editor Note: For MPEP chapters 1200, 1400, and 2300 (which are not substantively revised in the Ninth Edition, Revision 07.2015 of the MPEP), as a result of the publication process, the form paragraphs reproduced in these chapters have been updated and may include substantive changes. A future revision will revise sections of these chapters as necessary for consistency with the form paragraph changes.
In addition, in MPEP § 1202, corrected "September 16, 2102" to "September 16, 2012" following the reproduction of 35 U.S.C. 6, and in MPEP § 1214.06, corrected spelling of "Notice of Abandonment." In chapter 1400, added missing title text to prior versions of 37 CFR 1.175, 1.324, and 1.78 in MPEP §§ 1414.02, 1481.02, subsection II, and 1481.03, subsection II.C, respectively, inserted inadvertently omitted form paragraph in MPEP § 1401, and deleted form paragraph 14.29.01 from MPEP § 1490.]
For the substantively revised chapters, particular attention is called to the changes in the following sections:
ALL REVISED CHAPTERS:
—PLTIA: The Patent Law Treaties Implementation Act of 2012, Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012)
Editor Note: Acronyms and
—Hague Agreement: The Hague Agreement Concerning the International Registration of Industrial Designs (see also 37 CFR 1.9(l))
Short Form References
—Hague Article: An Article under the Hague Agreement (see also 37 CFR 1.9(l)) —Hague implementation rule: Changes to Implement the Hague Agreement Concerning International Registration of Industrial Designs, 80 FR 17918 (April 2, 2015) —Hague Rule: A Regulation set forth in the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement (see also 37 CFR 1.9(m)) —PLT: Patent Law Treaty —PLT Article: An Article under the PLT —PLT implementation rule: Changes to Implement the Patent Law Treaty, 78 FR 62368 (October 21, 2013) —PLT Rule: A Regulation under the Patent Law Treaty —For most time periods for reply previously set at one month, the time periods for reply have been revised to two months as a result of policy changes in the implementation of
Passim
the PLT. See the discussions in the PLT implementation rule regarding PLT Article 11 (78 FR at 62371) and various PLT Rules concerning noncompliance notifications ( id. at 62373). —Replaced "Express Mail" with "Priority Mail Express®" and "date in" with "date accepted" in light of the United States Postal Service (USPS) renaming Express Mail®
Passim
to Priority Mail Express® on July 28, 2013 and the final rule Renaming of Express Mail® to Priority Mail Express®, 79 FR 63036 (Oct. 22, 2014) to make corresponding nomenclature changes in the patent regulations. —Made minor nonsubstantive changes for consistency in style (e.g., "website" rather than "web site," "email" rather than "e-mail," removing "http://" from website addresses
Passim
that include "www."), and capitalization (e.g., "Internet," "intranet," "Web," "federal") unless otherwise used in treaty, statutory, or regulatory text. —Website addresses have been updated as necessary.Passim —Updated the following business unit names where necessary: Board of Patent Appeals and Interferences to Patent Trial and Appeal Board; Office of Initial Patent Examination
Passim
to Office of Patent Application Processing; Office of PCT Legal Administration to
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International Patent Legal Administration; and Office of Patent Publication to Office of Data Management. —Corrected or updated cross-references to sections within the MPEP chapters as necessary.
Passim
—Deleted as unnecessary Editor Notes concerning previously unrevised chapters. Revised section Editor Notes as necessary to account for the ability to file applications under 35 U.S.C. 385 (international design applications).
Passim
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CHAPTER 100:
—Updated 35 U.S.C. 122(b)(2)(B)(iii) and 37 CFR 1.14 to reflect changes resulting from the PTLIA and its implementation. Clarified that official papers are accepted only at the Customer Service Window, except for certain papers that have been specifically exempted from the central delivery policy.
101
—Revised to update 37 CFR 1.14. Added information pertaining to access to an international design application maintained by the Office in its capacity as a designated office (37 CFR 1.1003) or as an office of indirect filing (37 CFR 1.1002).
102
—Revised to update 37 CFR 1.14 throughout the section.103 —In subsection I, clarified that all patent applications filed after June 30, 2003, are available in public PAIR upon publishing or patenting. —In subsection II, deleted "U.S. Patent" from the subsection title and added explanation that pursuant to 35 U.S.C. 390, the publication by the International Bureau of an international design application designating the United States under the Hague Agreement is deemed to be a publication under 35 U.S.C. 122(b). —In subsection III, added cross-reference to 37 CFR 1.14(j) for access to international design applications. Added explanation that if an abandoned application is identified in a publication of an international registration under Hague Agreement Article 10(3), access to the abandoned application is available under 37 CFR 1.14(a)(1)(iv). Also added explanation that if a publication of an international registration under Hague Agreement Article 10(3) claims the benefit of, or incorporates by reference, an unpublished pending application, a copy of the application may be provided in accordance with 37 CFR 1.14(a)(1)(v) or (vi). Form PTO/SB/68 updated. —In subsection V, added reference to petitions for access in derivation proceedings. —In subsection VI, added references to benefit claims under 35 U.S.C. 386(c) and to publication of an international registration under Hague Agreement Article 10(3). Revised to limited "35 U.S.C. 365" to "35 U.S.C. 365(c)" in the context of benefit claims. —In subsection VIII, added references to access to applications involved in derivation proceedings and 37 CFR 42.3. Also added cross-reference to MPEP Chapter 2300. —Subsection III revised to indicate that petitions for access in special circumstances are filed under 37 CFR 1.14(i).
104
—Updated the name of the International Patent Legal Administration.110 —Added explanation that international design applications filed under the Hague Agreement in the U.S. Patent and Trademark Office (USPTO) are reviewed for the purposes of issuance of a foreign filing license.
115
—Updated 37 CFR 5.1 and 5.3. Revised the title of subsection IV to include international design applications, and added reference to a Secrecy Order applied to an international design application.
120
—Updated 37 CFR 5.11, 5.12, 5.13, 5.14, and 5.15. Added references to registrations of industrial designs in the context of foreign filing licenses. Revised to indicate that either the filing receipt or other official notice will indicate if a foreign filing license is granted.
140
—In subsection II, added a cross-reference to MPEP § 1002.02(b).
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CHAPTER 200:
Updated cross-references to paragraphs of 37 CFR 1.55 and 1.78 for consistency with the reorganization of these rules resulting from the PLTIA and its implementation.
Passim
—Updated 35 U.S.C. 171 in accordance with the PLTIA.201 —Updated 35 U.S.C. 111 in accordance with the provisions of the PLTIA. Corrected the text of pre-PLT (AIA) 35 U.S.C. 111 and added explanation that pre-AIA 35 U.S.C. 111 requirements
201.01
substantially correspond to those of pre-PLT (AIA) 35 U.S.C. 111, but do not include conforming amendments with regard to the oath or declaration provisions and other miscellaneous provisions of the AIA. Updated 37 CFR 1.9 to revise paragraph (a) and add paragraphs (l)-(n) for consistency with the Hague implementation rule. —Subsection I revised to provide an explanation of notable changes to the filing date requirements of nonprovisional applications filed under 35 U.S.C. 111(a) as a result of the PLTIA. Subsection I also revised to indicate that for applications not filed under 35 U.S.C. 111, MPEP Chapters 1800 and 2900 provide details regarding international applications (PCT) and international design applications, respectively. Deleted paragraph directed to domestic national applications as redundant to information in the first paragraph of the subsection. —In subsection II, updated definition of "national application" in accordance with 37 CFR 1.9(a)(1). Deleted references to applications filed before September 16, 2012 and pre-AIA 37 CFR 1.9 because 37 CFR 1.9 as revised in the Hague implementation rule is applicable to all applications irrespective of filing date. Subsection II further revised to specify that utility and plant patent applications filed on or after December 18, 2013, without a claim, are governed by the notification practice set forth in 37 CFR 1.53(f). —New subsection III added to discuss international design applications designating the United States. Subsection III includes the text of 35 U.S.C. 385 and 37 CFR 1.9(a) and (l)-(n), provides an overview of Title I of the PLTIA, which implemented the Hague Agreement Concerning International Registration of Industrial Designs (HagueAgreement), and provides a cross-reference to new MPEP Chapter 2900 for information regarding international design applications. —Revised text for consistency with 37 CFR 1.9 as amended in the Hague implementation rule.201.02 —Subsection I title revised to "Provisional Application Filed On or After December 18, 2013." Subsection I revised to update 35 U.S.C. 111 and provide an Editor Note as to its applicability,
201.04
to limit reproduction of 37 CFR 1.9 to paragraph (b), and to update 37 CFR 1.53 and provide an Editor Note as to its applicability. Subsection I further revised to provide a discussion of requisite parts of a provisional application in order to be accorded a filing date for applications filed on or after December 18, 2013. —Subsection II title revised to "Provisional Application Filed Before December 18, 2013." Subsection II revised to reflect that 35 U.S.C. 111 and 37 CFR 1.53 as set forth therein are the (pre-PLT) versions and to add Editor Notes as to their applicability. —Subsection III revised to add discussion regarding the possibility of restoring a provisional application for purposes of supporting the benefit claim of a subsequent nonprovisional application or international application designating the United States in accordance with 37 CFR 1.78. —Subsection III further revised to provide that a request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in 37 CFR 1.17(i); the filing fee, search fee, and examination fee for a nonprovisional application and the surcharge under 37 CFR 1.16(f), if appropriate, are also required. For provisional applications filed before December 18, 2013, if the inventor's oath or declaration was not filed with the provisional application, it must be submitted with the request for conversion. —Added 37 CFR 1.78(d)(2) and revised section text for consistency with the rule. Added discussion of Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001
201.06
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(Fed. Cir. 2008) which held that the protection afforded by 35 U.S.C. 121 only applies to divisional applications, and does not apply to continuation-in-part applications. —Revised to specify that divisional applications must be filed under 37 CFR 1.53(b), with the exception of design applications (but not international design applications) which may also be filed under 37 CFR 1.53(d). Further revised to indicate that a divisional application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), and added a cross-references to 37 CFR 1.78 and MPEP § 211 et seq. for the conditions for receiving the benefit of the filing date of a prior application. —Updated form paragraph 2.01 to clarify information pertaining to divisional applications. Pertaining to introductory text and subsection I. In General:201.06(c) —Preceding subsection I, inserted 37 CFR 1.53(b) as revised in the Hague implementation rule, and provided Editor Notes as to the applicability of the current and pre-PLT versions of that rule. Moved reproduction of 37 CFR 1.63(b) to subsection II. —Subsection I revised to add that a nonprovisional international design application is not an application filed under 37 CFR 1.53(b). —Subsection I revised to add text explaining that the filing date for applications (excluding design applications) filed on or after December 18, 2013, is the date on which a specification, with or without claims, is received in the Office. Also added explanation that an application filed under 35 U.S.C. 111(a) after December 18, 2013, may be filed by reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and drawings of the application are replaced by the reference to the previously filed application. Added cross-reference to MPEP § 601.01(a), subsection III for additional information. —Deleted text pertaining to applications filed under former 37 CFR 1.60, and moved to subsection II information pertaining to applications containing a copy of an oath or declaration from a prior application. —For consistency with current 37 CFR 1.78, revised text to explain that a petition to accept an unintentionally delayed benefit claim under 37 CFR 1.78(e) must be accompanied by the petition fee set forth in 37 CFR 1.17(m). Pertaining to subsection II. Oath/Declaration:201.06(c) —In subsection II, inserted 37 CFR 1.63(b) as revised in the Hague implementation rule, and provided Editor Notes as to the applicability of the current and pre-AIA versions of that rule. —Subsection II substantially rewritten to clarify the conditions under which a copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012. Information related to the content of an oath or declaration deleted and replaced with cross-references to MPEP §§ 602.05(a) and 602.05(b); information pertaining to paper processing was also deleted. —Added explanation that a new inventor's oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, because the inventor's oath or declaration submitted in any application filed on or after September 16, 2012, must comply with requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for such applications. Pertaining to subsection III. Specification and Drawings:201.06(c) —Subsection III updated to include 35 U.S.C. 386(c) among the list of ways to claim the benefit of a prior application. —Subsection III revised to specify that if a continuation or divisional application as filed contains subject matter that would have been new matter in the prior application, the applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part. Text further revised to limit the discussion pertaining to newly executed or supplemental oaths or declarations in continuation-in-part applications to those applications filed
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before September 16, 2012. Information pertaining to oaths or declarations in applications filed on or after September 16, 2012, moved to subsection II. —Subsection III revised to specify that any utility or plant patent application, including any continuing application, that will be published pursuant to 35 U.S.C. 122(b) should be filed under 37 CFR 1.53(b) with a specification that includes any claim(s) and drawings that the applicant would like to have published. Further revised text to clarify that the only format for a preliminary amendment to the specification (other than claims) that is usable for publication is a substitute specification. Pertaining to subsection IV. Incorporation by Reference:201.06(c) —In subsection IV, revised to replace instances of "continuation or divisional" with "continuing." Updated cross-references to paragraphs of 37 CFR 1.57 because the former provisions of paragraphs (a)-(f) were moved to paragraphs (b)-(h) in the PLT implementation rule. —Subsection IV updated to specify that for applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuation or divisional application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b). Moreover, pursuant to 37 CFR 1.57(b)(4), any amendment to an international design application pursuant to 37 CFR 1.57(b)(1) is effective only as to the United States and will only be acted upon after the international design application becomes a nonprovisional application. Added cross-reference to MPEP § 217 for more detailed information pertaining to incorporation by reference pursuant to 37 CFR 1.57(b). —Subsection IV.A revised to indicate that pursuant to 37 CFR 1.57(b)(3), an amendment to add inadvertently omitted material must be by way of a petition pursuant to 37 CFR 1.53(e). (Prior to the PLT implementation rule, such a petition was to be submitted under 37 CFR 1.57.) —Subsection IV.B revised to indicate that if an application is entitled to a filing but the Office identified omitted item(s) in a Notice of Omitted Item(s), applicant must respond to the notice by filing an appropriate amendment. Pertaining to subsections V - XII:201.06(c) —Subsection V title renamed to "Inventorship in a Continuing Application." Revised to replace instances of "continuation or divisional" with "continuing." —Subsection V.B revised to indicate that reflect "pre-AIA" 37 CFR 1.63 is applicable to applications filed prior to September 16, 2012. —Subsection VI.A (formerly subsection VI.1) updated to add references to 37 CFR 1.1021(d) and 35 U.S.C. 386(c). —Subsection VI.B (formerly subsection VI.2) renamed "Pre-AIA 37 CFR 1.47 Issues." —Subsection IX revised to delete reference to 37 CFR 1.171. —Subsection XI revised to delete reference to 37 CFR 1.63(d). —Subsection XII revised to specify that if the examiner determines that a continuation or divisional application as filed contains subject matter that would have been new matter in the prior application, the applicant is required to delete the benefit claim or redesignate the application as a continuation-in-part. Pertaining to introductory text and subsections I. CPA Practice has been Eliminated as to Utility and Plant Applications and V. Forms:
201.06(d)
Updated 37 CFR 1.53(d). —In subsection I, replaced the reference to form paragraph 8.27 with a reference to form paragraph 8.04.
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—Subsection V revised to delete reference to Form PTO/SB/29A, "For Design Applications Only: Receipt For Facsimile Transmitted CPA" and update the website address for accessing the CPA Form. Pertaining to subsection II. Filing and Initial Processing of CPAs for Design Applications201.06(d) —Revised to update 37 CFR 1.53(d)(1)(ii) and text throughout the subsection for consistency with the Hague implementation rule. Specifically, a continuation or divisional (but not a continuation-in-part) application may be filed under 37 CFR 1.53(d) if the prior application is a design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor's oath or declaration if the CPA is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in 37 CFR 1.53(f)(3)(i) (i.e., an application data sheet indicating the name, residence, and mailing address of each inventor). —Subsection II.A further revised to explain that although the previously filed oath or declaration (if any) will be considered to be the oath or declaration of the CPA, for continuing applications (including CPAs) filed on or after September 16, 2012, the oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. —Subsection II.E further revised to clarify that pre-AIA 37 CFR 3.73(b) is applicable to a CPA filed prior to September 16, 2012, governing the filing of assignment papers. —Subsection II.F revised to provide information pertaining to filing CPA requests via EFS-Web. —Subsection II.G revised to indicate that for CPAs filed on or after September 16, 2012, if the prior application does not contain the inventor's oath or declaration, the surcharge under 37 CFR 1.16(f) is required (unless the inventor's oath or declaration is being filed with the CPA). —Subsection II.K revised to delete reference to the handling of paper application files. Pertaining to subsection III. Examination of CPAs:201.06(d) —Subsection III.A revised to indicate that where the non-continued prosecution application originally assigned an application number itself claims the benefit of a prior application or applications under 35 U.S.C. 120, 121, or 386(c), 37 CFR 1.78(d)(2) continues to require that the non-continued prosecution application originally assigned the application number contain a reference to any such prior application(s). —Subsection III.A revised to indicate that where an applicant in an application filed under 37 CFR 1.53(b) seeks to claim the benefit of a CPA under 35 U.S.C. 120 or 121 (as a continuation, divisional, or continuation-in-part), 37 CFR 1.78(d)(2) requires a reference to the CPA by application number in an application data sheet or, for applications filed before September 16, 2012, in the first sentence of the specification. Revised to clarify that 37 CFR 1.78(d)(4) provides that "[t]he identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number." —Subsection III.C revised to clarify that an election in reply to a restriction requirement made in the prior application carries over to the CPA under certain conditions. —Added 37 CFR 1.78(d)(2) and revised section text for consistency with the rule.201.07 —Revised to specify that continuation applications must be filed under 37 CFR 1.53(b), with the exception of design applications (but not international design applications) which may also be filed under 37 CFR 1.53(d). Further revised to indicate that a divisional application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), and added a cross-references to 37 CFR 1.78 and MPEP § 211 et seq. for the conditions for receiving the benefit of the filing date of a prior application. —Revised to replace reference to the "applicant" with "inventorship" consistent with the AIA. Revised to emphasize that a continuation must not include anything that would constitute new matter if inserted in the original application.
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—Revised to clarify that the Office, not the primary examiner, will establish the right to further examination when new claim sets are filed in a continuation before the termination of proceedings in an earlier nonprovisional application. —Revised to indicate that a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior nonprovisional application is a design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor's oath or declaration if the CPA is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. —Revised to indicate that benefit may additionally be claimed under 35 U.S.C. 386(c), and to delete parenthetical reference to pre-AIA 35 U.S.C. 112, first paragraph.
201.08
—Subsection I revised to delete "substitute" from the list of applications that may claim benefit to a prior application. Revised to clarify that the identifying data of all prior applications for
202
which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012. —Subsection I revised to indicate that if benefit claim information is incorrect due to applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate. Further revised to indicate that a petition for an unintentionally delayed benefit claim may also be required. —Subsection II revised to add that a petition for an unintentionally delayed claim for priority may also be required in instances where the oath or declaration or the application data sheet is erroneous with regard to foreign priority claims. —Deleted.202.01 -
202.04 —Revised to indicate that an application's status as an "allowed" application continues from the date of the notice of allowance until it issues as a patent, is withdrawn from issue in accordance
203.04
with 37 CFR 1.313, or becomes abandoned for failure to pay the issue fee and any required publication fee. —Subsection I revised to update website address for the Patent Application Information Retrieval (PAIR) system.
203.08
—Revised to add reference to benefit and priority claims under 35 U.S.C. 386. Revised to indicate that title I of the PLTIA became effective May 13, 2015, along with corresponding revisions to the rules.
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—Subsection I revised to indicate that it presents an overview of the substantive changes to 37 CFR 1.78 resulting from implementation of the AIA and the PLTIA. Revised to reflect that benefit of an earlier-filed application may be under 35 U.S.C. 365(c), or 386(c). Subsection I title and text revised to replace "domestic" with "national." —Subsection I updated to explain that in implementing the PLTIA, the Office reorganized and revised 37 CFR 1.78 effective May 13, 2015. All versions of 37 CFR 1.78 in effect prior to May 13, 2015, have been consolidated in the current version of 37 CFR 1.78, for which a summary of the provisions is provided. Updated to reflect that 37 CFR 1.78(a)(6) and (d)(6) set forth provisions that are only applicable to nonprovisional applications filed on or after March 16, 2013 that claim the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013. —Subsection II updated to explain that implementation of the PLTIA impacted priority claims and 37 CFR 1.55.
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—Subsection II revised to delete the limited applicability of 35 U.S.C. 365(a) and (b) based on filing date. Revised to indicate that for all applications filed on or after September 16, 2012, a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) to the prior application must be presented in the application data sheet. Revised to explain that in implementing the PLTIA, the Office reorganized and revised 37 CFR 1.55 effective May 13, 2015. All versions of 37 CFR 1.55 in effect prior to May 13, 2015, have been consolidated in the current version of 37 CFR 1.55, for which a summary of the provisions is provided. —Subsection III revised to indicate that Title I of the PLTIA amended the definition of effective filing date in 35 U.S.C. 100(i) to provide for priority claims under 35 U.S.C. 386(a) or (b) and benefit claims under 35 U.S.C. 386(c). Further revised to indicate that in implementing the first inventor to file provision of the AIA, the Office added a statement requirement to 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6) for transition applications. The requirement for a statement under these provisions does not apply to nonprovisional international design applications. —Revised to update 35 U.S.C. 119(e) and 120 for consistency with the PLTIA. Updated 37 CFR 1.78 in accordance with the Hague implementation rule and added references to benefit claims
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under 35 U.S.C. 386(c). Revised to note that nonprovisional international design applications are excluded from the statement requirement under 37 CFR 1.78(a)(6) and (d)(6). —Subsection I revised to note that if the prior-filed application is an international design application designating the United States, the prior-filed application must be entitled to a filing date in accordance with 37 CFR 1.1023.
211.01
—Subsection I further revised to delete the parenthetical regarding the time period under 37 CFR 1.53(g) and to add a cross-reference to 37 CFR 1.78(a)(2). Updated form paragraph 2.40. —Subsection III revised to indicate that nonprovisional international design applications are excluded from the transition provisions of 37 CFR 1.78(a)(6) and (d)(6). —Revised to add new subsection heading "I. In General" to previous text. Subsection I revised to include discussion of restoration of benefits in accordance with the PLTIA and to add applicable cross-references for additional information.
211.01(a)
—Subsection I further revised to explain that as an alternative to claiming benefit to a provisional application that was filed in a language other than English, applicant may delete the benefit claim to the provisional application from the Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the ADS or the first sentence(s) of the specification, as appropriate. —Added to subsection I a discussion of restoration of priority benefit when a later-filed application is claiming the benefit of a provisional application via an intermediate copending application, and an indication that design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e). —Added new subsection "II. Restoring the Benefit of a Provisional Application." Subsection II explains that effective December 18, 2013, title II of the PLTIA provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e). —Subsection II further explains that as a result of the implementation of title I of the PLTIA, 37 CFR 1.78(a) and (b) were amended effective May 13, 2015, to provide that a petition to restore the right of priority filed on or after May 13, 2015, must be filed in the subsequent application and that the subsequent application is the application required to be filed within the period set forth in 37 CFR 1.78(a)(1)(i). —Subsection II discusses the requirements for filing a petition under 37 CFR 1.78(b). Added form paragraph 2.11.01, relocated from MPEP § 211.01(b), subsection I. —Subsection I revised to add 35 U.S.C. 386(c) among the laws under which a later-filed application may claim the benefit of a prior-filed nonprovisional application.
211.01(b)
Rev. 07.2015, November 201511
CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Subsection I revised to add reference to MOAEC, Inc. v. MusicIP Corp., 568 F. Supp. 2d 978 (W.D. Wis. 2008) wherein the district court interpreted "before" to mean "not later than" and allowed a continuation application filed the same day that the parent patent issued to have the benefit of the filing date of the parent application, followed by "But see Immersion Corp. v. HTC Corp.,Civil Action No. 12-259-RGA (D.Del. Feb. 11, 2015)." —In subsection I, updated form paragraph 2.11; form paragraph 2.11.01 deleted and relocated to MPEP § 211.01(a), subsection II. —Subsection II revised to indicate that a nonprovisional application that directly claims the benefit of a provisional application under 35 U.S.C. 119(e) must be filed within 12 months from the filing date of the provisional application, unless the benefit of the provisional application has been restored (in which case the nonprovisional application must be filed within 14 months). Added cross-references to 37 CFR 1.78(b) and MPEP § 211.01(a), subsection II. —Revised quotation of 35 U.S.C. 371(d) in accordance with amendments made in the PLTIA.211.01(c) —New section added directed to claiming the benefit of an international design application designating the United States.
211.01(d)
—Subsection I revised to indicate Office preference for the use of an application data sheet, rather than making specific reference to a prior application in the first sentence(s) of the specification for applications filed prior to September 16, 2012.
211.02
—Subsection I revised to incorporate discussion of international design applications designating the United States. Revised to update cross-references to paragraphs of 37 CFR 1.57. —Subsection I revised to replace instances of "surcharge" with "petition fee," and to replace 37 CFR 1.17(t) with 37 CFR 1.17(m). Updated form paragraph 2.15. —Subsection II revised to indicate that except for benefit claims to the prior application in a continued prosecution application (CPA), benefit claims under 35 U.S.C. 120, 121, 365(c), and 386(c) must identify the prior application by application number, by international application number and international filing date, or by international registration number and international filing date under 37 CFR 1.1023, and indicate the relationship between the applications. Further revised to add specific instructions for international design applications regarding reference to prior nonprovisional applications, and to indicate that a request for a CPA is not available for international design applications. —Subsection III revised to add cross-reference to MPEP § 2920.05(e) for benefit information specific to international design applications. —Revised to replace instances of "surcharge" with "petition fee" and to delete a reference to printing the PALM bib-data sheet.
211.02(a)
—Revised to update description of 37 CFR 1.78 to include international applications and international design applications.
211.03
—Updated to state that if the application is a utility or plant application filed under 35 U.S.C. 111(a), the benefit claim of the prior application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) must be made during the pendency of the application and within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. Updated the guidance regarding making a benefit claim for nonprovisional application entering the national stage from an international application under 35 U.S.C. 371. —Revised to add that if the application is a design application, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be submitted during the pendency of the later-filed application. —Revised to replace "surcharge" with "petition fee" and to replace 37 CFR 1.17(t) with 37 CFR 1.17(m). —Updated form paragraph 2.39.
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—Revised to replace of "surcharge" with "petition fee" and to replace 37 CFR 1.17(t) with 37 CFR 1.17(m). Revised to update all cross-references to 37 CFR 1.78 in accordance with the Hague implementation rule.
211.04
—Revised to add that effective May 13, 2015, 37 CFR 1.78(d)(3) was amended to make the procedures under 37 CFR 1.78(e) to accept an unintentionally delayed benefit claim applicable to design applications where the benefit claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.78(e) may be filed along with a request for certificate of correction after patent grant. —Revised to delete that the petition for an unintentionally delayed benefit claim must be submitted during the pendency of the nonprovisional application. Revised to add that if a petition under 37 CFR 1.78(c) or (e) is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then the petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application and will be treated as having been filed in the international application. Revised to add cross-reference to 37 CFR 1.78(i). —Revised to emphasize that a continuation application must not include anything which would constitute new matter if inserted in the original application. Updated form paragraphs.
211.05
—Updated 35 U.S.C. 119 and 37 CFR 1.55 in accordance with the PLTIA and the Hague implementation rule, and revised text for consistency therewith. Revised to add references to
213
restoration of the right of priority and to priority claims in nonprovisional international design applications. —Updated form paragraph 2.18, and deleted final paragraph of section as no longer necessary. —In the introductory text, deleted reference to "another treaty between the United States and some Latin American countries" and deleted paragraphs specific to Taiwan and Thailand.
213.01
—In subsection I, updated the table of states with respect to which the right of priority under 35 U.S.C. 119(a)-(d) has been recognized based on their status as party to the PCT or Paris Convention or as members of the WTO. Added website address for accessing the most current version of the table. —Subsection II revised to update 35 U.S.C. 365 in accordance with PLTIA. —Added new subsection III. Right of Priority Based Upon an International Design Application to provide an overview of the subject and a cross-reference to newly-added MPEP § 2920.05(d) for additional information. Former subsection III redesignated as subsection IV. —Subsection IV (formerly subsection III) revised to explain that under the Paris Convention, the right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design. Corrected title of "The Hague Agreement Concerning the International Registration of Industrial Designs." —Subsection I revised to add discussion of formal requirements relating to claiming foreign priority in international applications entering the national stage under 35 U.S.C. 371 and international design applications designating the United States.
213.02
—Subsection I revised to specify that for applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, the claim for priority must be presented in an application data sheet, and that for applications filed prior to September 16, 2012, the claim for priority must appear in the oath or declaration under 37 CFR 1.63. —Subsection I further revised to add a cross-reference to 37 CFR 1.57(a) and MPEP § 601.01(a), subsection III, regarding filing by reference to a previously filed application. Updated cross-references to paragraphs of 37 CFR 1.57. —Subsection III revised to change cross-reference of 37 CFR 1.55(j) to 37 CFR 1.55(k) and to explain that nonprovisional international design applications are excluded from the transition provision of 37 CFR 1.55(k), as such applications can only be filed on or after May 13, 2015.
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Introductory text revised to include a discussion of restoration of priority and to include a discussion of Hague Agreement Rule 4(4) relating to the last day for taking an action or paying a fee.
213.03
—In subsection II, revised the date in provided example so that it would not be impacted by restoration of the right of priority. —Add new subsection III. Restoring the Right of Priority to explain that the PLTIA provides for restoration of the right of priority under certain conditions, and to explain the requirements of a petition 37 CFR 1.55(c) for such restoration. —Section rewritten in its entirety to update 37 CFR 1.55(g) and the requirements for filing a proper priority claim and certified copy of the foreign application.
213.04
—Revised to update cross-references to paragraphs of 37 CFR 1.55.213.05 —Revised to update 37 CFR 1.55 and cross-references to paragraphs of 37 CFR 1.55, and to add PCT Rule 4.10 Priority Claim. Further revised to indicate that there are limited exceptions to the
213.06
time limits set forth in the PCT and the Regulations under the PCT regarding priority claims and filing the certified copy of the foreign application, and added cross-references to MPEP §§ 214.02 and 215.02. —New section added to discuss of provisions for claiming priority and filing a certified copy in a nonprovisional international design application in accordance with the Hague Agreement.
213.07
—Updated to indicate that implementation of the PLTIA resulted in changes to the procedural requirements relating to claims for priority to an earlier-filed foreign application and to the submission of a certified copy of the priority document as set forth in 37 CFR 1.55.
214
—Revised to add a parenthetical distinguishing between the time period for filing a claim for foreign priority in design patents from utility patents. —Revised to indicate that where the requirements for perfecting priority under 35 U.S.C. 119(a)-(d) or (f) have not been met before the issuance of patent, 37 CFR 1.55(g) and MPEP § 216.01 should be consulted for an explanation of when the deficiencies are correctable by a certificate of correction or reissue. Deleted discussion of Brenner v. State of Israel. —Revised to delete 37 CFR 1.55(c). Updated 37 CFR 1.55(d) and added discussion of its provisions. Updated cross-references to paragraphs of 37 CFR 1.55.
214.01
—Revised to add discussion of priority claims in design applications, and to explain that a claim for priority may be made at any time during the pendency of the application. Added cross-reference to MPEP §§ 1504.10 and 2920.05(d) added for additional information pertaining to priority claims in design applications. —Revised to limit discussion of priority claims in an application data sheet to applications filed under 35 U.S.C. 111(a). —Updated 37 CFR 1.55(e) and related discussion with respect to unintentionally delayed priority claims in accordance with the Hague implementation rule. Added explanation that 37 CFR 1.55(g)
214.02
allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application). —Revised to indicate that prior to May 13, 2015, there were no procedures for accepting an unintentionally delayed priority claim in a design application, but that effective May 13, 2015, such procedures were established. Added cross-reference to MPEP § 216.01. —Updated form paragraphs for consistency with 37 CFR 1.55.214.03 —In subsection III, revised to include caveat regarding priority not having been restored under PCT Rule 26 bis.3 or 37 CFR 1.55(c). Form paragraph 2.23 revised to include information pertaining to petitions under 37 CFR 1.55(c) to restore the right of priority.
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—Subsection V revised to update the protocol to follow when the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent and to add cross-reference to MPEP § 216.01. —Revised to correct cross-reference from MPEP § 215.01(a) to MPEP § 215.01.214.04 —Subsection I revised to indicate that an application data sheet may be used for applications filed prior to September 16, 2012 to identify the certified copy of the foreign priority application.
215
—Subsection III revised to insert 37 CFR 1.55(h) and update form paragraph 2.20. —Subsection IV revised to update procedures for correcting the priority claim when the foreign priority document does not correspond with the application identified in the priority claim and for adding a priority claim when the priority claim is presented after the time period set forth in 37 CFR 1.55. Updated form paragraph 2.22. —Subsection V revised to update the protocol to follow when the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, and to add cross-reference to MPEP § 216.01. —Updated website address for information concerning the priority document exchange program and corrected the reference to 37 CFR 1.323.
215.01
—Updated 37 CFR 1.55(f) and the discussion thereof in accordance with Hague implementation rule. In particular, text revised to indicate that the time period set forth in 37 CFR 1.55(f)(1) only
215.02
applies to applications filed under 35 U.S.C. 111(a) on or after March 16,2013, and to indicate that 37 CFR 1.55(f)(2) sets forth the time period for filing a certified copy of the foreign application for international applications entering the national stage under 35 U.S.C. 371. —Revised to explain that the time period requirement in 37 CFR 1.55(f)(1) or (f)(2) does not apply in three circumstances, namely those set forth in 37 CFR 1.55(h)(certified copy filed in parent or related application), 37 CFR 1.55(i)(foreign intellectual property priority document exchange participant), or (j)(interim copy of foreign application filed). —Updated 37 CFR 1.55(i)(formerly 37 CFR 1.55(h)) and cross-references to paragraphs of 37 CFR 1.55. Revised description of timeliness requirement to indicate that the time period is set forth in 37 CFR 1.55(g)(1).
215.02(a)
—Updated 37 CFR 1.55(j)(formerly 37 CFR 1.55(i)) and cross-references to paragraphs of 37 CFR 1.55. Added indication of the time period for providing an interim copy of the foreign
215.02(b)
application in an application entering the national stage under 35 U.S.C. 371. Revised to indicate that a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. Revised document description to be used when filing interim copies via EFS-Web. —Replaced paragraphs of 37 CFR 1.55 previously reproduced herein with 37 CFR 1.55(g), and revised text for consistency with the provisions of 37 CFR 1.55(g) as amended in the Hague
215.03
implementation rule. Deleted references to a processing fee under 37 CFR 1.17(i), and added brief discussion of petitions under 37 CFR 1.55(e), (f), or (g). —Revised to indicate that an application data sheet may be used for applications filed prior to September 16, 2012 to identify the foreign application to which priority is claimed. Revised to
216
indicate that for original applications filed under 35 U.S.C.111(a) and international applications, entering the national stage under 35 U.S.C. 371, the examiner should ensure that the claim for foreign priority is timely. Updated form paragraph 2.19. —Revised discussion specific to applications filed before September 16, 2012, for consistency with 37 CFR 1.55(n). Revised text to clarify that if the nonprovisional application and the certified copy of the foreign application do not name the same inventor or do not have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. —Revised to clarify circumstances under which a United Kingdom "complete specification" is treated as a different application than the United Kingdom "provisional specification."
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Section title revised to "Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent."
216.01
—Revised to update 35 U.S.C. 119(b) and add 37 CFR 1.55(e)-(g) pertaining to delayed priority claims and delayed submission of the certified copy of the priority document. Added text explaining that the failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 , provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application. —Moved discussion of Brenner v. State of Israel to subsection II and discussion of In re Van Esdonk to subsection I. —Added subsection I. Perfecting Priority Claim Via Certificate of Correction to explain that 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority, and to provide specific examples pertaining to 37 CFR 1.55(e) - (g) and 37 CFR 1.55(h). —Added subsection II. Perfecting Priority Claim Via Reissue to explain that in circumstances where a claim to foreign priority benefits cannot be perfected via a certificate of correction because the requirements of 35 U.S.C. 119(a) - (d) or (f) had not been satisfied in the patented application, or its parent, prior to issuance, and the requirements of 37 CFR 1.55 are not met, the claim to foreign priority benefits can be perfected only by way of a reissue application. —Revised to update 37 CFR 1.57(b)(formerly 37 CFR 1.57(a)) and to update cross-references to paragraphs of 37 CFR 1.57.
217
—Subsection I revised to indicate that the provisions of 37 CFR 1.57(b) are applicable to inadvertently omitted from an application that claims priority to, or the benefit, a prior-filed provisional, nonprovisional, international, or international design application. —Revised subsection II.F to indicate that pursuant to 37 CFR 1.57(b)(3), an amendment to add inadvertently omitted material must be by way of a petition pursuant to 37 CFR 1.53(e). Added subsection II.H directed to amendments to an international design application pursuant to 37 CFR 1.57(b)(1). —In subsection III, Example 3, replaced "the effective date of 37 CFR 1.57(a)" with "September 21, 2004" for clarification. —In subsection IV, updated form paragraph 6.19.02.
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CHAPTER 300:
—Updated 35 U.S.C. 261 to reflect revisions made in the PLT.301 —Updated 37 CFR 3.1 for consistency with the Hague implementation rule, adding international design applications designating the U.S. to the definition of "application" for the purposes of 37 CFR Part 3. —Revised the last paragraph of the section to add applications filed under 35 U.S.C. 385 to the list of applications wherein an assignment may contain the statements required to be made in an oath or declaration. —Updated 37 CFR 3.11 and the corresponding text in the section to specify that "other documents" that may be recorded at the discretion of the Director are documents "relating to interests in patent applications and patents."
302
—Revised the second paragraph of the section by deleting the reference to the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). —Updated 37 CFR 3.21 for consistency with the Hague implementation rule adding the manner in which an international design application must be identified in an assignment.
302.03
—Updated 37 CFR 3.31(h) for consistency with the PLT implementation rule, which provides that the assignment cover sheet required by 37 CFR 3.28 will be satisfied by certain Patent Law Treaty model forms.
302.07
—Updated 37 CFR 1.4 for consistency with the PLT implementation rule, which specifies how electronically submitted correspondence must be signed and the certifications made by submission of signed correspondence.
302.10
—Revised last paragraph by adding an exception to when substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee,
306
i.e., if the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein. —Revised to add that the recordation of a new assignment is not required in an application that both claims the benefit of a provisional application and adds matter not in common with the
306.01
provisional application if the application claiming the benefit is filed on or after September 16, 2012, and the assignee is the original applicant therein. —Updated 37 CFR 1.46 for consistency with the Hague implementation rule.308 —Revised Editor Note in 37 CFR 1.46 to include a reference to 35 U.S.C. 385 and a reference to "pre-Hague" 37 CFR 1.46. —Revised to add cross-reference to MPEP § 1701 for additional restrictions on Office employees.309 —Revised last paragraph to change the references to "prior copending" or "earlier" applications to "related" applications. Deleted cross-references to 37 CFR 1.78(a) and MPEP § 211 et seq. and specified the relevant paragraph of 37 CFR 1.77, i.e. 37 CFR 1.77(b)(1) - (3).
310
—Revised title by deleting first occurrence of "Other."313 —Revised text for consistency with 35 U.S.C. 261 and 37 CFR 3.11. Revised to replace the specific indication of where documents will be recorded (i.e., the Assignment Division) with "the Office." —Further revised to specify that in addition to documents that constitute a transfer or change of title, other documents relating to interests in patents or applications will generally be recorded. Added explanation that documents not accepted for recording include attorney's liens against patents or patent applications, citing to In re Refusal of Assignment Branch to Record Attorney's Lien, 8 USPQ2d 1446 (Comm'r Pat. 1988). Revised third paragraph, second sentence, by changing "Office" to "purported assignee" to correct an error. —Added cross-references to MPEP § 512 and MPEP § 513.317.02
Rev. 07.2015, November 201517
CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Revised by deleting "due to a typographical error" in first sentence of first paragraph because the discovery of an improperly recorded assignment or name change is not limited to typographical errors.
323.01(c)
—Revised to clarify by adding the explanation that petitions to correct, modify, or expunge an assignment record "will not result in the removal of a document from the assignment records."
323.01(d)
Further revised by adding an indication that assignment records are recognized as distinct from application file records. —Added the following explanation at the end of the section: "A redacted version of the 'expunged' document must be recorded and will appear in the assignment records instead of the 'expunged' document upon the granting of the petition. An additional assignment of the 'correct' document may be recorded in addition to the redacted version where the redacted version is incomplete or the original document was not correct." —Revised Editor Notes under (pre-AIA) 37 CFR 3.71 and pre-AIA 37 CFR 3.73 to include references to 35 U.S.C. 385. In subsection VII, changed "37 CFR 1.131" to "37 CFR 1.131(a)."
324
—Revised Editor Notes under 37 CFR 3.71 and 37 CFR 3.73 to include references to 35 U.S.C. 385. Revised "37 CFR 1.46(c)" to read "37 CFR 1.46(c)(2)" throughout section. Revised third
325
paragraph to indicate that the owner or assignee "can consent" (rather than "consents") to the filing of a reissue application. In subsection VII, changed "37 CFR 1.131" to "37 CFR 1.131(a)."
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CHAPTER 400:
—In subsection I, added cross-reference to MPEP § 601.03(a) explaining change of correspondence address in applications filed on or after September 16, 2012, and MPEP § 601.03(b) for change of correspondence address in applications filed before September 16, 2012.
402
—Added cross-references to MPEP § 1807 for representation in international applications (PCT) and MPEP § 2911 for representation in international design applications.
402.01
—Updated 37 CFR 1.32. In subsection II, added reference to 35 U.S.C. 386(c) in the context of powers of attorney in prior national applications to which benefit is claimed.
402.02(a)
—In subsection III, deleted information pertaining to applications filed before September 16, 2012, and added a link to forms available on the USPTO website. —In subsection III, deleted information pertaining to applications filed on or after September 16, 2012, and added reference to forms PTO/SB/80 and PTO/SB/81.
402.02(b)
—Updated 37 CFR 11.18.402.03 —Deleted form PTO/SB/83 and replaced with form PTO/AIA/83.402.06 —Updated Form PTO/SB/80.402.07 —Updated 37 CFR 1.33.403.01(a) —Updated Form PTO/SB/84.405 —Revised section title to read "Interviews With Patent Practitioner of Record." Revised text to indicate an examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 502.03) to suggest a telephonic, personal, or video conference interview.
408
—Replaced indication that a patent practitioner not of record should not be given information relative to the application by telephone with a cross-reference to MPEP §§ 101 -104 for information regarding access to application information by persons other than a patent practitioner of record. —Deleted reference to practitioners having offices or representatives in the Washington area. —At the end of subsection II, added cross-reference to MPEP § 1702.409.03(d) —Updated 37 CFR 1.46.409.05 —Updated 37 CFR 1.4. Provided additional guidance on certifications before the Office consistent with 37 CFR 1.4(d)(4) and (5) and 37 CFR 11.18(b). Revised to change cross-reference from
410
37 CFR 1.137(b) to 37 CFR 1.137(a) because the unintentional delay standard has been relocated to 37 CFR 1.137(a).
Rev. 07.2015, November 201519
CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
CHAPTER 500:
—Updated 37 CFR 1.1 and 1.4. Revised subsection I to include reference to requests for supplemental examination.
501
—Updated 37 CFR 1.5 and 1.6. Revised to indicate that papers filed in association with a supplemental examination proceeding should identify the patent number and the supplement examination request control number.
502
—Updated 37 CFR 1.6. Revised to indicate that correspondence in international design applications and requests for supplemental examination may not be submitted via facsimile.
502.01
—Updated 37 CFR 1.4. Revised to indicate that a graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1) or S-signatures as provided for in 37 CFR 1.4(d)(2) will be accepted when submitted via the Office electronic filing system.
502.02
—Revised to incorporate changes associated with Change to Internet Usage Policy to Permit Oral Authorization for Video Conferencing Tools by Patent Examiners, 80 FR 23787 (April 29, 2015).
502.03
—Section rewritten in its entirety to parallel the organizational structure of the April 2011 Legal Framework for EFS-Web (available at
502.05
www.uspto.gov/patents-application-process/applying-online/legal-framework-efs-web-06april11), and to reflect the current abilities and requirements of the Office Electronic Filing System (EFS-Web). —Subsection I is directed to the Legal Framework for EFS-Web, and subsection II provides additional information. Subsections I.A – I.G correspond to sections A – G of the April 2011 Legal Framework; subsections I.H – I.N reorganize sections H – J of the April 2011 Legal Framework and add additional information. Subsection II references the USPTO website for additional information on EFS-Web and PAIR. Pertaining to subsection I, following is a summary of the major differences between MPEP § 502.05, subsection I and the April 2011 Legal Framework.
502.05
—I.A. General Information on EFS-Web - revised to provide updated general information on web-based documents such as ePetitions and eTerminal Disclaimers submitted via EFS-Web. —I.B. Legal and Document Policies - revised to update the listing of applications and documents that are permitted to be filed via EFS-Web to provide for international design applications, supplemental examination requests, third-party preissuance submissions, citation of prior art and written statements in patent files, and web-based documents such as ePetitions and eTerminal Disclaimers. Clarified that registered users may not file follow-on documents in applications, reexamination proceedings, or supplemental examination proceedings, unless the practitioner is of record or acting in a representative capacity. Added listing of papers which may be filed and processed electronically by registered users, including: request for withdrawal as attorney or agent; ePetition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(b); Petition to withdraw an application from issue under 37 CFR 1.313; Petition for revival of an application under 37 CFR 1.137; eTerminal Disclaimers for nonprovisional utility applications under 37 CFR 1.321; and Petition to correct assignee after payment of Issue Fee under 37 CFR 3.81(b). —I.C. Electronic Acknowledgement Receipt and Date of Receipt - revised to clarify that the EFS-Web system records as the date of receipt of documents the local time and date in Alexandria, Virginia. —I.D. Proper Usage of EFS-Web - revised to clarify that providing an incorrect application number and confirmation number when filing a follow on document will result in the follow on document being entered in the wrong application. —I. E. Security and Authentication - revised to clarify that a Public Key Infrastructure (PKI) certificate holder has thirty (30) days to update changes to information in the certificate of action form and may only use his or her certificate to attempt to access applications which the certificate holder is authorized to access.
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—I.F. Signature Policy - revised to reflect changes to 37 CFR 1.4(d)(3) which permit the use of a graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1) or of an S-signature as provided for in 37 CFR 1.4(d)(2). —I.G. Submission of Pre-Grant (Eighteen-Month) Publication Requests via EFS-Web - revised to update form numbers. —I.H. Submission of Supplemental Examination Requests via EFS-Web – subsection added to provide that supplemental examination requests may be submitted via EFS-Web. Information in April 2011 Legal Framework section H moved to subsection I.K. —I.I. Filing of Third-party Preissuance Submissions and Citation of Prior Art and Written Statements in Patent Files Filed via EFS-Web – new subsection added to provide that third-party preissuance submissions and citation of prior art and written statements in patent files may be submitted via EFS-Web. Information in April 2011 Legal Framework section I moved to subsections I.K and I.L. —I.J. Submission of Interim Copies of Foreign Priority Documents via EFS-Web – new subsection added to provide that interim copies of foreign priority documents may be submitted via EFS-Web. Information in April 2011 Legal Framework section J moved to subsection I.M. —I.K. Submission of Photographs and Drawings via EFS-Web – subsection I.K includes information in April 2011 Legal Framework section I pertaining to the submission of drawings and photographs via EFS-Web and further revised to provide for international design applications, supplemental examination proceeding and to clarify that a petition under 37 CFR 1.84 to accept color drawings does not apply to design applications. —I.L. Text Files and File Limits – subsection I.L includes information in April 2011 Legal Framework section I pertaining to the submission of text files and file limits via EFS-Web and is further revised to address file limits for international design applications. —I.M. International Applications (PCT) and Associated Documents – subsection I.M includes information in April 2011 Legal Framework section J pertaining to the submission of international applications (PCT) and documents therefor via EFS-Web and is further revised to indicate that color drawings are not permitted in PCT international applications. —I.N. International Design Applications and Associated Documents – new subsection added to include information concerning the filing of international design applications and associated documents via EFS-Web. —Updated 37 CFR 1.54. Revised to indicate that the Office includes the application's confirmation number on the cover sheet accompanying Office actions and on filing receipts. Also revised to indicate
503
a nonprovisional application filed on or after December 18, 2013 may receive a filing date when filed with or without claims. —Updated 37 CFR 1.6.505 —Updated 37 CFR 1.53. Revised to distinguish between the statutory requirements for a nonprovisional utility application and a design application to have a filing date granted. Revised to update information concerning the processing of incomplete applications.
506
—Revised to distinguish between the requirements associated with the accordance of a filing date for nonprovisional utility and design applications.
506.02
—Replaced 37 CFR 1.52(d)(1) with 37 CFR 1.52(d).507 —Revised to indicate that applications are scanned and loaded into the Image File Wrapper system upon filing.
508
—Removed reference to patent lapses.508.04 —Updated 37 CFR 1.23.509 —Updated 37 CFR 1.25. Added explanation that fees in an international design application may be charged to a deposit account.
509.01
—Revised to indicate that, once small entity status is established, fee payments may be made without regard to change in status until the payment of the issue fee is due or a maintenance fee is due.
509.02
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Updated 37 CFR 1.27 and 1.4. Removed reference to former versions of USPTO forms being acceptable. Revised subsection IV to include circumstances in which payment of the individual designation fee in an international design application would qualify as an assertion of small entity status.
509.03
—Revised to indicate that a micro entity fee may be available in ex parte reexamination proceedings filed under 37 CFR 1.510 only when the request is filed by the patent owner.
509.04
—Updated 37 CFR 1.29.509.04(f) —Revised to add reference to the USPTO access control procedures which may affect visitors to the USPTO campus.
510
—Updated 37 CFR 1.10; removed reference to former Express Mail service of the USPS.511 —Updated 37 CFR 1.8. Removed reference to paper processing instructions.512 —Removed references to prior Express Mail service from the USPS. Updated 37 CFR 1.6 and 1.10. Removed reference to Nitto Chemical Industry. Co., Ltd. v. Comer, 39 USPQ2d 1778 (D.D.C. 1994).
513
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CHAPTER 600:
—Removed alternative citations to pre-AIA 35 U.S.C. 112, except in form paragraph text.Passim —Updated cross-references to paragraphs of 37 CFR 1.57 because the former provisions of paragraphs (a) - (f) were moved to paragraphs (b) - (h) in the PLT implementation rule, and new paragraph (a) pertaining to reference filing was added. —Deleted or modified the discussion of filing a petition under 37 CFR 1.57(a)(3) for consistency with the PLT implementation rule; pursuant to 37 CFR 1.57(b)(3), an amendment to add inadvertently omitted subject matter from a priority or benefit application must be by way of a petition pursuant to 37 CFR 1.53(e) accompanied by the fee set forth in 37 CFR 1.17(f). Updated all forms. —Added current 35 U.S.C. 111 as amended by the PLTIA. Designated the version of 35 U.S.C. 111 in effect prior to the PLTIA as "pre-PLT (AIA)" and added an Editor Note to state
601
its applicability to applications filed on or after September 16, 2012 but prior to December 18, 2013. Also added explanation that the pre-AIA 35 U.S.C. 111 requirements substantially correspond to those of pre-PLT (AIA) 35 U.S.C. 111, but do not include conforming amendments with regard to the oath or declaration provisions and other miscellaneous provisions of the AIA. —Updated 37 CFR 1.51. —In subsection I, in the first paragraph, added "which is governed by 37 CFR 1.41" after "naming of the inventors" for clarification. —In subsection II, in the first paragraph, in light of the changes to 35 U.S.C. 111(a), clarified that an application filed under 35 U.S.C. 111(a) requires claims before examination. —In subsection III, added or updated cross-references to portions of the MPEP that discuss continuation applications, commencement and entry into national stage of international applications, international design applications, and supplemental examination. —Added current 37 CFR 1.53 as amended in the PLT implementation rule. Designated the version of 37 CFR 1.53 in effect prior to the PLTIA as "pre-PLT (AIA)," added an Editor
601.01
Note to state its applicability to applications filed prior to December 18, 2013. Also added an Editor Note to pre-AIA 37 CFR 1.53 to discuss the applicability of certain paragraphs to applications filed before September 16, 2012. —Modified text to explain that the filing date requirements for applications, other than design applications, filed on or after December 18, 2013 have changed in that claims and drawings are no longer required to receive a filing date. Pertaining to subsection I. Application Filing Requirements:601.01(a) —In subsection I, added text to explain the filing date requirements for nonprovisional applications filed on or after December 18, 2013. For example, except for design applications, the filing date of an application under 35 U.S.C. 111(a) is the date on which a specification is received in the Office. Modified text to clarify that applications filed prior to December 18, 2013 are subject to pre-PLT filing date requirements, and therefore are required to include a description, at least one claim, and any necessary drawings to receive a filing date. —In subsection I, added text to state that for design continued prosecution applications (which are not available for international design applications) filed on or after September 16, 2012 an inventor's oath or declaration is not required if the prior application contains an application data sheet with the name, residence, and mailing address for each inventor, in accordance with 37 CFR 1.53(d)(1)(ii) as revised in the interim rule Changes to Continued Prosecution Application Practice, 79 FR 12384 (March 5, 2014)(adopted as final, 79 FR 68121 (November 14, 2014)). Revised text to include benefit claims to international design applications under 35 U.S.C. 386(c).
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
Pertaining to subsection II. Completion of Nonprovisional Application Under 35 U.S.C. 111 Subsequent to Filing:
601.01(a)
—Added new subsection II.A that discusses the completion of nonprovisional applications, except for design applications, which are filed on or after December 18, 2013. —Redesignated former subsection II.A as II.B, and modified the Editor Note to update applicability information. —Added text to subsection II.B to explain that 37 CFR 1.53(f) was further revised, effective December 18, 2013, to require that the inventor's oath or declaration or substitute statement must be filed no later than the date the issue fee is paid. Deleted the parenthetical discussing the use of the inventor's oath or declaration from a prior application under 37 CFR 1.53(d) in view of the 2014 CPA rulemaking. —In subsection II.B, revised discussion of 37 CFR 1.53(f) for consistency with the PLT implementation rule. Also added text to clarify that if applicant fails to properly reply to a "Notice Requiring Inventor's Oath or Declaration" before or with payment of the issue fee, then the application will be regarded as abandoned. —Redesignated former subsection II.B as II.C, and modified the Editor Note to update applicability information. Pertaining to subsection III. Application Under 35 U.S.C. 111(a) Filed By Reference:601.01(a) —Added new subsection III to discuss filing an application under 35 U.S.C. 111(a) by reference to another application. Includes 35 U.S.C. 111(a) and (c), and 37 CFR 1.57(a), as revised by the PLTIA and PLT implementation rule, respectively. —Subsection III provides a detailed explanation of reference filing requirements. As provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application under certain conditions. —Added text to explain the filing date requirements for provisional applications filed on or after December 18, 2013. For example, the filing date of an application under 35 U.S.C. 111(b) is the date on which a specification is received in the Office.
601.01(b)
—In subsection I, added that a provisional application is not entitled to claim priority or benefit to a prior-filed application under 35 U.S.C. 386.
601.01(c)
—In subsection II, added an Editor Note to explain the limited applicability of certain paragraphs of 37 CFR 1.53 to applications filed under 35 U.S.C. 111 on or after December 18, 2013, and revised the text of 37 CFR 1.53(c) as amended by the PLT implementation rule. Added text to clarify the requirements for converting a provisional application into a nonprovisional application in light of filing date requirement changes. —Modified text to clarify the filing date requirements of an application in light of the PLT implementation rule.
601.01(d)
—In subsection I, in the last paragraph, revised text to reflect that provisional application files are held in the Office's Image File Wrapper (IFW) system and will be automatically abandoned at the end of the pendency period. —In subsection II, paragraph (B), clarified that an application is not entitled to a filing date if the application was filed under 35 U.S.C. 111(a) prior to December 18, 2013 or is a design application and omitted a specification. —Revised title of subsection III to read "Application Forwarded to Examiner." Added text to explain the filing date requirements for design applications and for applications other than design applications filed on or after December 18, 2013. Also revised text to include international design applications as applications for which benefit can be claimed under 37 CFR 1.78.
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—Added an Editor Note to limit applicability of this section to nonprovisional applications filed prior to December 18, 2013 or to design applications. Similarly, modified text to clarify the applicability of the guidance provided in this section.
601.01(e)
—Added a sentence to clarify that for nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, there is no need to request conversion to a provisional application because such applications do not require presentation of at least one claim to obtain a filing date. —Added an Editor Note to limit applicability of this section to nonprovisional applications filed prior to December 18, 2013 or to design applications. Similarly, modified text to clarify
601.01(f)
the applicability of the guidance provided in this section. Also, revised text to include an international design application as an application for which benefit can be claimed under 37 CFR 1.78. —Modified text to clarify the different filing date requirements in regard to submitting drawings. Drawings if necessary as provided for in 35 U.S.C. 113 are required upon filing
601.01(g)
for applications filed prior to December 18, 2013 and for design applications. For applications filed under 35 U.S.C. 111 on or after December 18, 2013, except for design applications, drawings are not required to receive a filing date. —In subsection I, revised text to include an international design application as an application for which benefit can be claimed under 37 CFR 1.78. Also, deleted text that reflected discontinued paper processing and inserted text that reflects electronic processing and storage of files. In the last paragraph, clarified when correction is required if, in applications filed with drawings with several views, the specification is not consistent with the drawings as labelled. —Added "of attorney" after "power" in first paragraph in order to provide proper nomenclature.601.02 —Changed "would be" to "is" to improve grammar in the paragraph starting with "The submission of a daytime …."
601.03(a)
—Changed "would be" to "is" to improve grammar in the paragraph starting with "The submission of a daytime …" and corrected several other errors in grammar.
601.03(b)
—Added "a nonprovisional international design application" to the list of applications in which an application data sheet may be submitted.
601.05
—Updated 37 CFR 1.76 and the discussion thereof for consistency with the Hague implementation rule. Added text to the Editor Note to explain that the changes to 37 CFR
601.05(a)
1.76(b)(3) are only applicable to applications filed under 35 U.S.C. 111 on or after December 18, 2013. —In subsection I, added a new paragraph to discuss application data sheet (ADS) requirements for reference filing under 37 CFR 1.57(a). Also, added an explanation regarding the requirements of 37 CFR 1.46(b) if an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under 37 CFR 1.46(a). —In subsection II, revised the title to include "or information otherwise of record" and revised text to clarify that a corrected or updated ADS is required even if an ADS was not previously filed. Also, revised text to clarify that in an ADS, identification of information that is being changed is not required for an ADS included with the initial submission under 35 U.S.C. 371 and that any change to inventorship, foreign priority, and domestic benefit must comply with the requirements of 37 CFR 1.48, 37 CFR 1.55, and 37 CFR 1.78, respectively. Also, modified text to state that a corrected ADS should be filed with a request for a corrected filing receipt unless accompanied by a request to take some other action and to further clarify how changes should be indicated on a corrected ADS.
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—In subsection III, added 37 CFR 1.64 to the listing of "37 CFR 1.63 or 1.67" to accurately reflect the language in the current version of 37 CFR 1.76. Added text to explain that 37 CFR 1.76(d)(2) provides that information in the application data sheet will also govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form or certain Patent Law Treaty Model Forms. Also, at the end of the first example, added "with underlining for inserts and strike-through or brackets for text removed." Added cross-references to MPEP §§ 602.01(c) et seq. and 605.01, subsection II. —In subsection IV, added several paragraphs to discuss newly added provisions of 37 CFR 1.76(f) and (g) that permit use of Patent Law Treaty Model International Forms as appropriate or the Patent Cooperation Treaty Request Form in lieu of an application data sheet under 37 CFR 1.76 to provide certain information. —Updated 37 CFR 1.76 for consistency with the PLT implementation rule and added an Editor Note to clarify its applicability.
601.05(b)
—In subsection I, clarified that the applicant's suggested classification and TC assignment may be provided but the Office no longer uses such information. Also, deleted the paragraph about providing classification information for provisional applications because the Office does not use such information. —In subsection III, added text to explain that information in the application data sheet will also govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form or certain Patent Law Treaty Model Forms in accordance with 37 CFR 1.76(d)(2). Deleted text that discussed correction of a typographical or transliteration error in the spelling of an inventor's name because it is does not reflect current Office policy. Added text to state that if an inventor's name is incorrect, a request under 37 CFR 1.48(f) is required as is explained in MPEP§ 602.01(c)(2). —Added a new subsection heading "IV. ADDITIONAL INFORMATION" in order to mirror the structure in MPEP § 601.05(a). In subsection IV, added text to refer to MPEP § 601.05(a) for a discussion of the provisions of 37 CFR 1.76(f) and (g). —Revised subsection I to update 37 CFR 1.41 and add text to explain the provisions of new 37 CFR 1.41(f).
602.01
—Updated 35 U.S.C. 115(g)(1) and 37 CFR 1.63(d)(1).602.01(a) —In subsection I.A, added a paragraph explaining that 37 CFR 1.1021(d)(3) provides an alternative to the requirement in 37 CFR 1.63(b) to identify an inventor for nonprovisional international design applications. —In subsection I.A, revised text of the first paragraph to clarify when inventorship is set in an application.
602.01(c)
—In the Editor Note, changed "applications" to "requests" to more accurately state the applicability of pre-AIA 37 CFR 1.48 as to requests filed before September 16, 2012. Inserted
602.01(c)(1)
the current version of 37 CFR 1.48 which reflects the provisions in effect as amended by the AIA implementation rule packages. Deleted the sentence "A request filed on or after September 16, 2012 under 37 CFR 1.48(a) or (d) will generally correct inventorship in the application in which it is filed" because it was duplicative of other text in the section. —In subsection I, added a sentence to the end of the second paragraph to explain that the ADS must identify information being changed with underlining and strike-through or brackets, as appropriate. —In subsection III, added the parenthetical "(in addition to the processing fee)" after 37 CFR 1.17(d). —In subsection IV, added a sentence indicating that when an inventor is being added, applicants should file a corrected ADS or new cover sheet providing the residence of all inventors.
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—In the Editor Note, deleted "in an application" to more accurately state the applicability of pre-AIA 37 CFR 1.48 as to requests filed before September 16, 2012.
602.01(c)(2)
—Revised text to clarify the procedures for correcting inventorship by adding a parenthetical after "desired order" and adding the clause "[i]n addition to the corrected application data sheet," to the beginning of the last sentence. —In the Editor Note, delete two instances of "in an application" and inserted "requests for" to more accurately state the applicability of current 37 CFR 1.48 as to requests filed on or
602.01(c)(3)
after September 16, 2012. Inserted "pre-AIA" before certain regulations (e.g., 37 CFR 1.48 and 37 CFR 1.63) to clarify which version of the regulation is being discussed. —In subsection II, added the phrase "but prior to September 16, 2012" in Example A. In subsection III.E, updated form paragraphs 2.13 and 2.14.01. —Revised the section title to "Office Finds the Inventor's Oath or Declaration Defective" in order to clarify that this section is limited to policies and procedures when the Office finds
602.03
an error. In the first paragraph, added "for applications filed on or after September 16, 2012 following "condition for allowance" to clarify that delayed filing of an inventor's oath or declaration until allowance is limited to applications filed on or after September 16, 2012. —Added an Editor Note to 37 CFR 1.66 to state its applicability only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.
602.04
—Deleted the first paragraph as duplicative of the Editor Note.602.05(a) —Deleted the first paragraph as duplicative of the Editor Note.602.05(b) —In subsection III, deleted the one of the repetitious phrase "in an application filed" in the last paragraph.
602.08(a)
—In subsection I added a cross-reference to MPEP § 402.03 for a further discussion of signature requirements. Clarified the fourth paragraph by revising the text to indicate it is
602.08(b)
improper for an applicant to sign an oath or declaration which is not attached to or does not identify "the application (e.g., a specification and drawings) to which it is directed." Added a sentence to refer to 37 CFR 1.1021(d) and 1.1067 for nonprovisional international design applications. Inserted "pre-AIA" prior to "35 U.S.C. 102(e)" to clarify that the citation is to the provision in effect on March 15, 2013. —In subsection III.A, in the last sentence of the second paragraph added "along with a petition under 37 CFR 1.182" after "certificate of correction." In subsection III.B, added a sentence to clarify that the corrected ADS must identify the information being changed. —Added items (C) and (D) and relettered the remaining items in order to be consistent with 37 CFR 1.5(a).
602.08(c)
—Inserted 35 U.S.C. 116 as amended by the AIA, and added "(pre-AIA)" to the version of 35 U.S.C. 116 in effect prior to September 16, 2012.
602.09
—In subsection II, added "(pre-AIA)" in the title of 37 CFR 1.67 to clarify that it is the version in effect for applications filed prior to September 16, 2012.
603
—Added text regarding inventorship requirements for international design applications.604 —In subsection I, added an Editor Note and updated 37 CFR 1.46(b) and (c) to reflect changes made in the Hague implementation rule. At the end of the last paragraph, added two sentences
605.01
to state that the corrected ADS must identify the information being changed and the effect of changing the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii). —In subsection II, in the first paragraph, added "in accordance with 37 CFR 1.76(c)(2)." —Added "(pre-AIA)" in the title of 37 CFR 1.41 and 1.45 to clarify that they are the versions in effect for applications filed prior to September 16, 2012.
605.02
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Deleted "a formal" and inserted "an" prior to "examiner's amendment" for proper current nomenclature. Inserted a cross reference to MPEP § 1302.04(a) regarding an examiner's amendment that changes the title of invention.
606.01
—In subsection I, added "For international design applications under 35 U.S.C. 385, see 37 CFR 1.1031 for the required fees."
607
—In subsection II, added text in the first paragraph to clearly explain the Office's procedure for counting pages of preliminary amendments submitted on the filing date, and to indicate that the Office will not count the sheets of paper making up any English translation of a non-English language specification if submitted with the application on filing. —In subsection III, added a paragraph to explain the application of excess claim fees for nonprovisional applications filed under 35 U.S.C. 111(a) without claims. —Deleted the phrase "Jumbo Application" in form paragraph 6.31 and the discussion thereof because the Office no longer characterizes applications as "jumbo."
608.01
—In subsection I, updated 37 CFR 1.52 and 1.58. Inserted a reference to and website address for the EFS-Web Legal Framework. —In subsection V, added text and cross-references to MPEP § 601.01(a), subsection III, pertaining to reference filing. Added "via EFS-Web" to the recommended ways to file original application papers. —In subsection VI, modified language for consistency with 37 CFR 1.58(a) as revised by the PLT implementation rule. —Added "(e.g., not required)" after "preferable" to clarify that the order of arrangement of the specification elements is not a requirement. Also, added "in compliance with 37 CFR
608.01(a)
1.76" after "application date sheet" in the fifth paragraph of text. Updated form paragraphs 6.01 and 6.02. —Updated 37 CFR 1.72 regarding the requirements (e.g., a recommended word limit) for an abstract.
608.01(b)
—In subsection I.A, clarified language that a reader should be able to quickly determine the nature and gist of the invention and what is new from a cursory inspection of the abstract. In subsection I.B, deleted redundant sentences regarding compounds or compositions in chemical patents. Revised subsection I.C for consistency with 37 CFR 1.72 regarding the recommended word limit for an abstract. In subsection I.D, deleted the phrase "with any necessary editing and revision on allowance of the application" and inserted a new sentence to discuss the same with a reference to MPEP § 1302.04. After the third sample in subsection I.E, added subsection heading "F. Form Paragraphs." In subsection I.F, updated form paragraphs 6.14, 6.15, 6.16, and 6.16.01. —Added "(but is not required to)" after "may" to clarify that the suggested elements in the background of the invention are not required.
608.01(c)
—In first paragraph, deleted redundant text indicating that stereotyped general statements should not be in the brief summary of invention.
608.01(d)
—Added text to limit applicability of the citation of MPEP § 601.01(f) to applications, other than design applications, filed prior to December 18, 2013. Similarly, modified text to clarify
608.01(f)
the applicability of the guidance provided in MPEP § 601.01(g). Updated 37 CFR 1.84(a)(2) and (y) as amended by the Hague implementation rule. —Revised section title to "Claims Present on the Application Filing Date." In the first paragraph, "original claims" was replaced with "claims present on the filing date of the application." Second paragraph revised for consistency with current nomenclature.
608.01(l)
—In form paragraph 6.18.01, added a reference to 37 CFR 1.75(h).608.01(m) —Corrected 35 U.S.C. 112(e) by inserting missing heading. In subsection I.E, deleted "when granting the filing date" after "Office of Patent Application Processing." In subsection I.G.1,
608.01(n)
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added the phrase "or submitted in response to an OPAP notice requiring claims" to clarify the procedure when the application is not filed with claims. —In the second paragraph, changed "original claims" to "claims present on the filing date of the application" for clarity because claims are no longer required to be present on the filing
608.01(o)
date. In the first sentence of the third paragraph, added the phrase "including claims first presented after the application filing date where no claims were submitted on filing" for clarity. —In subsection I, updated 37 CFR 1.57 for consistency with the Hague implementation rule. Revised text to reflect the addition of 37 CFR 1.57 in 2004, and to discuss changes that
608.01(p)
occurred in 2013, i.e., the addition of a reference filing provision in 37 CFR 1.57(a) and relocation of the subject matter of former paragraph (a) to paragraph (b) of 37 CFR 1.57. Also added a paragraph that briefly discusses reference filing and refers to MPEP § 601.01(a), subsection III. —Updated form paragraph 6.28.02, examiner note 2.608.01(q) —Section title revised to read "Marks Used in Commerce and Trade Names." Added 15 U.S.C. 1127 and revised text to address trade names and marks as defined in 15 U.S.C. 1127
608.01(v)
(e.g., changed "product" to "product, service, or organization"). Form paragraph 6.20 was similarly revised to address marks and trade names. —In the last paragraph of subsection II, revised to include "and reply" after "complaint letter" to clarify that both the letter and the reply should be forwarded to the DCPEP. —Updated 37 CFR 1.81(a) as amended by the PLT implementation rule and inserted an Editor Note to state the applicability of paragraph (a). Inserted 37 CFR 1.81(a) (pre-PLT) as in effective prior to December 18, 2013.
608.02
—Revised title of subsection I and inserted new subsection I.A to discuss the filing date requirements regarding drawings for applications filed on or after December 18, 2013. Subsection I.B, directed to applications filed prior to December 18, 2013, contains the former text of subsection I, further modified to clarify when pre-PLT law and policy applies. The last paragraph of subsection I.B was further revised to state that a sequence listing or table should not be included in both the drawings and the descriptive portion of the specification in accordance with 37 CFR 1.58(a) and 1.83(a). —In subsection III, text revised to state whether pre-PLT law and policy applies or post-PLT law and policy applies. —In subsection IV, modified text to clarify that the lack of a drawing is treated as an informality and a filing date will be accorded. Deleted citations to 37 CFR 1.83 as its provisions do not apply when the drawing is missing. Clarified language regarding when the examiner may require a drawing under 37 CFR 1.81(c). —In subsection V, updated 37 CFR 1.84(a)(2) and (y) as amended by the Hague implementation rule. Inserted cross-reference to MPEP § 608.02(b) for information pertaining to the acceptability of drawings. Deleted text regarding the acceptability of good quality copies or facsimile copies and added a reference to international design reproductions and 37 CFR 1.1026. Added text to limit applicability of the citation of MPEP § 601.01(f) to design applications or applications filed prior to December 18, 2013. Similarly modified text to clarify the applicability of the guidance provided in MPEP § 601.01(g). —In subsection VII, inserted 37 CFR 1.84(a)(1). Added text in subsection VII.A pertaining to black and white drawings, including a reference to MPEP § 608.02(c) for more information. Original text is located in new subsection VII.B, further modified to clarify when black and white photographs and grayscale drawings are acceptable in utility and design applications. Deleted text regarding the requirements of photographic paper or mounted on Bristol Board. —In subsection VIII, updated 37 CFR 1.84(a)(2) as amended by the Hague implementation rule. Added text to state the required quality of the drawings. Also, revised text and FP 6.24.01
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
to state that one set of color drawings or color photographs is required if submitted via the Office electronic filing system, but three sets of color drawings or color photographs are required if not submitted via the Office electronic filing system. Text was also revised to state that color photographs or drawings will be stored in SCORE and a black and white copy will be stored in the IFW along with a SCORE placeholder sheet. Text and FP 6.24.01 were revised to limit the requirement for a petition under 37 CFR 1.84(a)(2) and (b)(2) to utility applications. Added a cross-reference to MPEP § 608.02(c). —In subsection IX, inserted a new paragraph to discuss that design applications should not generally use graphic symbols and that color drawings are permitted in design applications. Added cross references to MPEP §§ 1503.02 and 608.02. Revised the last paragraph to be limited to utility applications. —Added a citation to MPEP § 601.01(g) in reference to procedures when an application is missing drawings. Clarified text to indicate that OPAP will send a notice if drawings are
608.02(a)
unacceptable for purposes of publication and will not release applications to the technology centers until acceptable drawings are filed. —Updated 37 CFR 1.85(c) as amended by the Hague implementation rule. In subsection III, added an alternative citation to 37 CFR 1.1026 for the standard to which drawings must comply.
608.02(b)
—Added discussion of the processing and storage of drawings (including black and white line drawings, grayscale and color drawings, and black and white and color photographs)
608.02(c)
filed in various types of applications (e.g., utility applications under 35 U.S.C. 111, international applications, international design applications) or reexamination proceedings. —Updated 37 CFR 1.83(a) as amended by the PLT implementation rule.608.02(d) —In the first sentence, changed "see to it" to "ensure."608.02(e) —Updated 37 CFR 1.85(c) and 1.121(d) for consistency with the Hague implementation rule.608.02(p) —Revised text in the fourth paragraph to delete "(with no extensions of time permitted)" because current policy permits extensions of time for some notices.
608.02(z)
—In the second to last paragraph and in form paragraph 6.48, change "one month" to "two months" in light of policy changes in the implementation of the PLT.
608.03(a)
—In the first paragraph, changed "original claims" to "claims present on the filing date of the application" for clarity because claims are no longer required to be present on the filing
608.04
date. Added a cross-reference to MPEP § 211.05 for new matter in continuation or divisional applications. —Revised section title to read "Matter Not Present in Specification, Claims, or Drawings on the Application Filing Date." Revised the first sentence by adding "present on the filing date
608.04(a)
of the application" and deleting "original" for clarity because claims and drawings are no longer required to be present on the filing date. —Added 37 CFR 1.52(a)(5) and updated 37 CFR 1.52(e) as amended by the PLT implementation rule. Revised to clarify text for consistency with 37 CFR 1.52(e).
608.05
—In subsection I, added a citation to 37 CFR 1.77(b)(5) and to form paragraphs 6.61.02 and 6.71.02. In subsection I.A, revised text to correspond to 37 CFR 1.52(e), and to state that if a sequence listing text file submitted via EFS-Web on the application filing date complies with 37 CFR 1.824(a)(2)-(6) and applicant has not filed a sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy and the computer readable form. Also, revised text to explain that submission of the sequence listing in a PDF file on the application filing date is not recommended. Added a cross-reference to MPEP § 2422.05. In subsection I.B, changed the citation to 37 CFR 1.821(c) or (e) to 37 CFR 1.824(a)(2)-(6) and (b). In subsection I.C, added "text" prior to "file types" in the first sentence.
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—In subsection II, deleted the sentence "CD-R discs must be finalize so that they are closed to further writing to the CD-R" because this requirement was removed from 37 CFR 1.52(e). Revised text to clarify the reason incorporation by reference is required. Also modified text to state that an amendment to the material on the compact disc must be done by submitting a replacement compact disc or by filing the material as text file(s) via EFS-Web. Revised form paragraphs 6.61.02 and 6.71.02. —Revised text throughout the section to indicate that as an alternative to submission on a compact disc, a computer program listing appendix may be submitted in an ASCII text file via EFS-Web.
608.05(a)
—Subsection I is further revised to state that copies of publicly available program listings are available via Public PAIR, or may be purchased from the Office on paper or compact disc. —In subsection II, revised form paragraphs 6.64.01 and 6.64.02 to discuss submission of the computer program listing via EFS-Web as a text file; form paragraph 6.64.03 has been deleted as redundant. —Subsection III revised to state that the computer program listing appendix submitted electronically via EFS-Web in ASCII text or on a compact disc will be identified in the patent. Deleted text that reflected the discontinued practice of identifying the appendix on the front page of the patent and that reflected paper processing (e.g., placing a label on the file wrapper). Revised text to state that the specification entry "should" appear at the beginning of the specification to be consistent with 37 CFR 1.77. —Revised to indicate that submission of large tables via EFS-Web as text file(s) is permitted and is preferred. Deleted the last sentence in the first paragraph regarding the requirement to finalize CD-Rs because this requirement was removed from 37 CFR 1.52(e).
608.05(b)
—Added indication that a single table contained on fifty pages or less may be submitted as part of the specification in PDF (if filed via EFS-Web), and that landscape oriented tables should not be filed via EFS-Web. —Form paragraphs 6.63.01 and 6.63.02 revised to discuss submission of tables via EFS-Web as text files. —Added cross-reference to new MPEP § 2422.03(a) which discusses in detail submission of sequence listings as ASCII text files via EFS-Web.
608.05(c)
—Updated 37 CFR 1.97(b)(3)-(5) as amended by the Hague implementation rule. In the first sentence of the second paragraph of text, deleted "filed under 35 U.S.C. 111(a)" because the duty to submit material information applies to all nonprovisional applications.
609
—In the chart in item (A), updated row (1) to add a provision concerning the time for filing information disclosure statements for international design applications as set forth in 37 CFR 1.97(b)(5).
609.01
—Added new subsection title "I. Consideration of Prior Art Cited in a Parent International Application" prior to existing text. Designated prior subheading as subsection II. IDS in
609.02
Continued Examinations or Continuing Applications. In subsection II.A.2, added "(other than an international application; see subsection I, above)" in the first paragraph and added "and the timing requirements of 37 CFR 1.97" at the end of the second paragraph for clarification. —In subsection I, added a cross-reference to MPEP § 707.05(e) for more information on citing to publications and electronic documents in the second to last paragraph.
609.04(a)
—In the introductory text and in subsection I, added information to reflect a new provision in 37 CFR 1.97(b)(5) concerning the time for filing information disclosure statements for international design applications.
609.04(b)
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—Deleted redundant text "and any citations considered will have the examiner's initials adjacent thereto (or the bottom of each page … examiner's electronic initials)" in the third paragraph.
609.05(b)
—Revised "EFS" to "EFS-Web" in multiple locations. Modified text by deleting "signing, and dating" after "initialing" or "signed, and dated" after "initialed" to make text consistent
609.07
with current procedures. Also, deleted text that referred to discontinued paper processing steps. Revised the penultimate paragraph to state that "Applicants and registered practitioners are permitted to sign portions of an EFS-Web submission, including an IDS, with an electronic signature" and deleted the reference to a 2003 version of EFS system. —Revised to delete the reference to a prior version of eDAN and to deleted the entire text regarding electronic annotation and signature as such practice covered in detail elsewhere in
609.08
MPEP § 609 et seq. Also deleted the last sentence of the first paragraph regarding IDSs annotated by hand because most IDSs are annotated electronically. Inserted a cross-reference to MPEP § 609.04(b).
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CHAPTER 700:
—Corrected reproduced 35 U.S.C. 103 (both AIA and pre-AIA) by removing "of this title."Passim —Updated 35 U.S.C. 100(i)(1)(B).701 —Added discussion of changes to filing date requirements made pursuant to the Patent Law Treaties Implementation Act of 2012 (PLTIA).
702
—Updated form paragraphs 7.01 and 7.02 to provide a two-month period for reply.702.01 —Updated 37 CFR 1.105(a)(1).704.10 —Updated discussion of 37 CFR 1.105(a)(1) to address the identification of applications filed before June 8, 1995 and the requirement that they be kept in confidence by the Office
704.11(a)
per 35 U.S.C. 122(a). References to form paragraphs 7.104.02.fti and 7.104.02.aia changed to reference form paragraph 7.104.02. —Updated form paragraph 7.95 to provide a two-month period for reply.704.12(c) —Added Form Paragraph 7.104.02 for use in requiring information from the applicant regarding rescission of a statement under 37 CFR 1.55 or 1.78.
704.14(a)
—Clarified the procedure where primary examiners from requested and requesting Technology Centers (TCs) agree that a Patentability Report from the requested TC is necessary. Deleted reference to the IFW Manual.
705.01
—Deleted indication that the Patentability Report is not given a paper number, and deleted reference to IFW Manual.
705.01(a)
—Deleted reference to IFW Manual.705.01(e) —Updated 35 U.S.C. 102(d)(2).706.02 —In subsection II, added discussion of machine translations, translation resources and conditions for making an Office action final, including a supporting citation to In re Orbital Technologies Corporation. Also moved the cross reference to MPEP § 706.07(a) and added a cross reference to MPEP § 706.07(b) regarding final actions. —In subsection IV, added reference to 35 U.S.C. 386(c). —Revised to add form paragraphs 7.03.aia and 7.03.fti, as well as an introductory sentence.706.02(a) —In subsections II and III, inserted "pre-AIPA" before "35 U.S.C. 102(e)" to indicate the version of 35 U.S.C. 102(e) in force prior to November 29, 2000. Also in subsection II, inserted "pre-AIA" with regard to 35 U.S.C. 374.
706.02(a)(2)
—Updated discussion of overcoming a prior art rejection by submitting a benefit claim under 35 U.S.C. 120 or 35 U.S.C. 119(e), or by identifying a prior foreign application under 35 U.S.C. 119(a) – (d) in items (A)-(C).
706.02(b)(1)
—Updated discussion of overcoming a prior art rejection by submitting a benefit claim under 35 U.S.C. 120 or 35 U.S.C. 119(e), or by submitting a claim to priority under 35 U.S.C. 119(a) – (d).
706.02(b)(2)
—Added an indication that, effective December 18, 2013, the PLTIA provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e). Included a cross-reference to MPEP § 213.03, subsection III for more information. —Revised section text and Examiner Notes in the form paragraphs to state that a 2-month time period should be given for any reply to a requirement for information.
706.02(c)
—In subsection I, added reference to 35 U.S.C. 386(c). In subsection II, corrected date to March 15, 2013 immediately preceding the examples, and added benefit under 35 U.S.C. 365(c) or 386(c) to Example 1.
706.02(f)(1)
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—In subsection I, revised the title and notes in the form paragraphs to refer to common assignee, common applicant or at least one common joint inventor. In form paragraph
706.02(f)(2)
7.15.01.aia, note 3 further revised to clarify the conditions under which 35 U.S.C. 102(a)(2) may be applied. —Revised to rearrange the order of presentation of the form paragraphs. Revised several form paragraphs to make minor editorial changes and to clarify the applicability information in the notes.
706.02(i)
—As appropriate, revised form paragraphs to add references to international design applications and/or to 35 U.S.C. 386. Form paragraphs for provisional rejections revised to refer to a common assignee, a common applicant or at least one common joint inventor. —In form paragraph 7.15.fti, notes 3 and 5, added a reference to form paragraph 7.15.01.fti. In form paragraph 7.15.02.aia, note 9 was revised to indicate the applicant should be required to amend or cancel patentably indistinct claims using form paragraph 8.27.aia. In form paragraph 7.15.02.fti, note 10 was added. —In subsection II, changed "instructive as to" to "illustrative of." In subsection II, revised examples of rejection scenarios for clarity.
706.02(k)
—Added cross reference to MPEP § 717.02 et seq.706.02(l) —In subsection I, added ", or under an obligation to assign to" and inserted "pre-AIA" before the references to statutory sections.
706.02(l)(2)
—In subsection II, deleted sentence that referenced, but did not set forth, an exemplary statement. Further revised to delete the alternative of submitting the statement of common ownership in a separately labeled section. Clarified subsection II by adding an indication that "[t]he statement must be signed in accordance with 37 CFR 1.33(b)" and adding an explanation to examiners that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention. —In subsection III, added an indication that the applicant or patent owner may, but is not required to, present evidence supporting the existence of a joint research agreement. —Revised "the applicant(s) or an attorney or agent of record" to "the applicant(s) or patent owner(s)" in the context of who should make a statement of common ownership.
706.02(l)(3)
—In subsection III, clarified that the availability of double patenting rejections is subject to the conditions discussed in MPEP § 804 et seq. —Revised to rearrange the order of presentation of the form paragraphs. Revised several form paragraphs to make minor editorial changes and to clarify the applicability information in the notes.
706.02(m)
—Revised the notes of several form paragraphs to delete the reference to Graham v. Deere and add a reference to MPEP § 2144. —As appropriate, revised form paragraphs to add references to international design applications. In addition, form paragraphs for provisional rejections and certain obviousness rejections revised to refer to a common assignee, a common applicant, or at least one common joint inventor. —Subsection II revised for consistency with MPEP § 2103, subsection III, MPEP § 2106, subsection II, and the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 FR 74618 (Dec. 16, 2014).
706.03(a)
—In subsection IV, revised form paragraphs relevant to the rejection of claims directed to nonstatutory subject matter for consistency with guidance that was provided to examiners on December 16, 2014 (see www.uspto.gov/sites/default/files/documents/sme_memo_20141216.pdf). —Form paragraph 7.33.01 revised to more clearly explain the lack of enablement rejection.706.03(c)
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—Revised form paragraph 7.34.11 which should be used when it cannot be determined from the specification whether the term "means" connotes function or structure.
706.03(d)
—Added form paragraphs 7.30.03.h, 7.30.03 and 7.30.04 related to claim interpretation and means (or step) plus function claim limitations.
706.03(e)
—Revised order of form paragraphs.706.03(u) —Added cross-reference to MPEP § 1207.03(a) for guidance in determining what constitutes a new ground of rejection.
706.07(a)
—Updated form paragraph 13.02.02 so it is no longer limited to authorizations made by telephone.
706.07(f)
—Cross-reference to the Notice of Appeal and the appeal fee updated to 37 CFR 41.20(b). Revised the flow chart and form paragraphs to set a two month period for reply to a notice of nonresponsive submission.
706.07(g)
—Updated 37 CFR 1.114(e).706.07(h) —Revised the discussion and form paragraphs to indicate the provisions of 37 CFR 1.114 do not apply to an international application that does not comply with 35 U.S.C. 371 or to an international design application. Updated the time periods for reply to two months. —Forms PTO/SB/30 and PTO-2051 were updated. —Revised the discussion of interviews suggested by the examiner whereby the application may be placed in condition for allowance.
707
—Updated the discussion of communications from the examiner with respect to 35 U.S.C. 132 and 37 CFR 1.104. —Added "or more" to the discussion of applications that have been pending over five years.707.02 —In view of the restructuring of 35 U.S.C. 112 for applications filed on or after September 16, 2012, deleted the words "first paragraph."
707.07(l)
—Updated 37 CFR 1.102(a) and 1.102(e)(1).708.01 —Updated 37 CFR 1.102(a) and 1.102(e)(1). Added an indication that advancement of examination under 37 CFR 1.102 may be sought via a petition to make special under 37 CFR 1.102(c) or (d), or via a request for prioritized examination under 37 CFR 1.102(e).
708.02
—In subsections III, IV, and V, added an indication that "any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a)." —In subsection VI, added an indication that applications granted prioritized examination remain special until prioritized examination is terminated or until a final disposition of the application. Also added a cross-reference to MPEP § 708.02(b), subsection II. —In subsections III, VIII.D, VIII.E and IX, updated the discussion and form paragraphs to change the period for reply to two months and to indicate extensions of time under 37 CFR
708.02(a)
1.136(a) are permitted but the filing of a petition for an extension of time will result in the application being taken out of the accelerated examination program. Form paragraph examiner notes revised to indicate the provisions of 37 CFR 1.114 apply to an international application "that complies with 35 U.S.C. 371." —In subsection VIII.C, added reference to 35 U.S.C. 386(c). —Deleted form paragraphs 24.01.AE, 24.02.AE and 24.03.AE. —Revised to incorporate the changes, including updates to 37 CFR 1.102(e)(1), necessitated by the interim rule Changes to Permit Delayed Submission of Certain Requirements for
708.02(b)
Prioritized Examination, 79 FR 12386, March 5, 2014 (adopted as final, 79 FR 68124, Nov. 14, 2014). —Revised to indicate that any item submitted on the same day the request for prioritized examination is filed will be considered to have been filed with the request under 37 CFR 1.102(e).
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—Revised to indicate that a fee may be set by the USPTO to $0, and in such a case, that fee is considered to be paid and no additional payment is necessary for that fee. —Revised to remove outdated information concerning the time period for reply under the accelerated examination program. ——Updated discussion of the Patent Prosecution Highway Program (PPH) for consistency with the information available from
708.02(c)
www.uspto.gov/patents-getting-started/international-protection/ patent-prosecution-highway-pph-fast-track. —Added information about the USPTO's participation in the Global PPH and IP5 PPH pilot programs, and updated the information about the USPTO's PPH agreements with intellectual property offices that are not yet included in the Global PPH. —In subsection I.C, added a reference to 35 U.S.C. 386.709 —Updated 35 U.S.C. 133 and 35 U.S.C. 267.710 —Revised to indicate the time period for reply under 37 CFR 1.135(c) is generally 2 months.710.01 —Updated 37 CFR 1.136.710.02 —Revised for consistency with the PLT, which entered into force with respect to the United States on December 18, 2013 and provides for a time period of at least two months for replies to most Office actions and other notices.
710.02(b)
—Revised to eliminate discussion of petitions to revive based on unavoidable delay under former 37 CFR 1.137(a)
710.02(d)
—Updated 37 CFR 1.136.710.02(e) —Deleted the discussion of "some writing that manifested an intent to obtain an extension of time," which is no longer required for the granting of a petition filed under 37 CFR 1.136(a). —Deleted reference to IFW Manual. —Subsection III revised to include a cross-reference to 35 U.S.C. 115(f) and indicate that if a Notice Requiring Inventor's Oath or Declaration (PTOL-2306) is sent with the Notice of Allowability, the required inventor's oath or declaration must be submitted no later than the payment of the issue fee. —Updated 37 CFR 1.7(a) and updated the citation to the Executive Order regarding federal holidays that fall on a Sunday.
710.05
—Updated 37 CFR 1.138(b).711 Updated forms PTO/AIA/24, PTO/AIA/24A and PTO/AIA/24B.711.01 —Revised form paragraph 7.98.02 to remove discussion of petitions to revive based on unavoidable delay and updated the references to 37 CFR 1.137 for petitions based on unintentional delay.
711.02
—Changed "paragraph" to "subsection" in items (F) - (H).711.02(b) —Updated 37 CFR 1.137 and the discussion of petitions to revive filed under 37 CFR 1.137 to remove the discussion of petitions to revive based on unavoidable delay and references to lapsed patents.
711.03(c)
—In subsection II, included a discussion of the notable changes made by the PLTIA and included newly added 35 U.S.C. 27. —In subsection II.A, removed citation to Ex parte Richardson and added new subsection II.A.1 entitled "Abandonment for Failure To Timely Submit A Copy of the Specification And Any Drawings In An Application Filed By Reference Under 35 U.S.C. 111(c) and 37 CFR 1.57(a)." —Renumbered former subsection II.A.1 as subsection II.A.2, removed the discussion of Brenner v. Ebbert and In re Mills, and added a discussion of sections 202(b)(6) and 201(b)
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of the PLTIA. Added a discussion of the issue fee and publication fee payable when applicant changes entity status with the filing of a petition to revive. —Added new subsection II.A.3, entitled "Abandonment for Failure To Provide Required Drawings." —Renumbered former subsection II.A.2 as subsection II.A.4, removed the requirement for the appeal brief fee from item (A), and revised item (B) to include a reference to 37 CFR 1.114(b). —Renumbered former subsection II.A.3 as subsection II.A.5 and included a cross-reference to 37 CFR 1.137(f) for the revival of an application abandoned for failure to timely provide notice of a foreign filing. —In subsections II.B through II.F, removed information relating to petitions to revive on the basis of "unavoidable" delay. In addition, in subsection II.B, updated the discussion of 35 U.S.C. 41(a)(7); in subsection II.C, updated forms PTO/SB/64, PTO/SB/64a, and PTO/SB/64PCT; in subsection II.D, deleted reference to the 1887 Pratt decision and removed discussion of petitions not filed within 1 year of the date of abandonment of the application; and in subsection II.F, deleted the Haines decision and changed the cross-reference to reference 35 U.S.C. 27 instead of 35 U.S.C. 41(a)(7). —Revised to reference MPEP § 403 instead of MPEP § 402.711.04(c) —Subsections II and III were updated to incorporate changes described in the Federal Register Notice: Change to Internet Usage Policy To Permit Oral Authorization for Video Conferencing Tools by Patent Examiners, 80 FR 23787 (April 29, 2015).
713.01
—Changed the time period specified form paragraph 7.84 to two months.713.04 —Changed "no interview is permitted" to "interviews with examiners are not permitted."713.05 —Deleted reference to IFW Manual.713.08 —Updated 37 CFR 1.121(d). In subsection II.F, items (A), (C), and (F), changed "30 days or one month, whichever is later" to "two months."
714
—Updated pre-AIA 37 CFR 1.33(b). Revised form paragraph 7.84.01 to provide a two-month period for reply.
714.01(a)
—Updated cross-references in the third paragraph that formerly referenced 37 CFR 1.78(a).714.01(e) —In subsection I, inserted "(for applications filed prior to September 16, 2012)" with respect to placing a reference to a prior filed application in the first sentence(s) of the specification, corrected cross-reference to MPEP § 211 et seq., changed "one month" to "two months," deleted the phrase "so long as no new matter is included in the specification," and updated the reference to former 37 CFR 1.63(d)(1)(iii). —In subsection II, moved to the first sentence the indication that "Applicants are strongly discouraged from submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application." Changed "executed oath or declaration under 37 CFR 1.63" to "oath or declaration in compliance with 37 CFR 1.63." Deleted a discussion of the former requirement for a supplemental oath or declaration under 37 CFR 1.67 if a preliminary amendment is filed that contains subject matter not included in the specification and drawings of the application. Changed "will be required to submit a supplemental oath or declaration" to "should submit a supplemental oath or declaration." —Updated text and form paragraph 7.95 to provide a period for reply of two months.714.03 —Changed "petition" to "request" and added a reference to 37 CFR 1.48(f) in each of items (F) and (G).
714.16
—Updated 37 CFR 1.131(a)(1) and (d)(2). Changed "applicant" to "applicant or patent owner" in the context of establishing a date of completion of the invention in a NAFTA or WTO member country.
715
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—Revised to provide an updated discussion of the use of declarations (or affidavits) under current 37 CFR 1.131(a) and current 37 CFR 1.132 to overcome a rejection under pre-AIA
715.01(a)
35 U.S.C. 102(a), (e), or (f) where the rejection is based on a joint patent or published application to applicant and another. —Revised to include a requirement for an explanation of the presence of an additional inventor in the reference where the reference includes a claim reciting the subject matter relied upon in the rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination. —Revised to include a cross-reference to MPEP § 715.05 and an indication that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming another inventor which claims interfering subject matter as defined in 37 CFR 41.203(a). —In the last paragraph, changed "an applicant" to "the applicant or patent owner."715.07(c) —Added a reference to In re DeBaun with respect to an unequivocal declaration by S under 37 CFR 1.132 that he/she conceived or invented the subject matter that was disclosed but not claimed in the patent or patent application publication and relied on in the rejection.
716.10
—Revised to include a requirement for an explanation of the presence of an additional inventor in the reference where the reference includes a claim reciting the subject matter relied upon in the rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination. —Revised to include a cross-reference to MPEP § 715.05 and an indication that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming another inventor which claims interfering subject matter as defined in 37 CFR 41.203(a). —Corrected the citation to Ex parte Kroger. —Updated 37 CFR 1.130(d) and form paragraph 7.68.aia.717.01 —Revised the introductory text in item (A) to clarify that the list therein sets forth when the provision of 37 CFR 1.130(a) is not available. In item (A)(1), added "(e.g., patented,
717.01(a)(1)
described in a printed publication, or in public use, on sale, or otherwise available to the public) following "the disclosure was made." After item (A)(2), changed "the exceptions of 35 U.S.C. 102(b)(1)(A) or 35 U.S.C. 102(b)(2)(A) to "declarations or affidavits pursuant to 37 CFR 1.130(a)." —In item (B), corrected citation to Ex parte Kroger. —Deleted the parenthetical (E) at the beginning of the paragraph following item (D) as the text therein was not intended to be part of the list. —Revised the introductory text in item (A) to clarify that the list therein sets forth when the provision of 37 CFR 1.130(b) is not available. In item (A)(1), added "(e.g., patented,
717.01(b)(1)
described in a printed publication, or in public use, on sale, or otherwise available to the public)" following "the disclosure was made." —In subsection I, added an indication that "Anyone who has knowledge of the facts discussed in the declaration may sign a declaration under 37 CFR 1.130," and clarified text explaining
717.01(c)
it is the applicant or patent owner who may submit (i.e., file) a declaration or affidavit under 37 CFR 1.130. —In subsection I, changed "the applicant (or the applicant's representative of record)" to "the applicant (or the patent owner)" in the context of who must make the statement of common ownership.
717.02(a)
—Subsection I further revised to insert new subsections "A. Definition of Common Ownership" and "B. Evidence Required to Establish Common Ownership" and to add an
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expanded discussion of common ownership for AIA applications based on the discussion of common ownership in MPEP § 706.02(l)(2). —In subsection II, deleted discussion of practice under pre-AIA 35 U.S.C. 103(c) and added an expanded discussion of joint research agreements under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) for AIA applications based on the discussion of joint research agreements in MPEP § 706.02(l)(2). —Corrected 37 CFR 1.104(c)(4)(ii)(A) and 37 CFR 1.71(g).717.02(b) —In subsection III, first sentence, inserted "subject to the conditions discussed in MPEP § 804 et seq."
717.02(c)
—Updated form paragraph 7.20.04.aia.717.02(d) —Updated 37 CFR 1.131(d) and corrected a cross-reference to 37 CFR 1.131(c)(2).718 —Added a reference to 35 U.S.C. 386.719 —Corrected a cross-reference to MPEP § 602.08(a), inserted a cross-reference to MPEP § 601.05(a) for the formatting of corrected Application Data Sheets for patent applications
719.02
filed on or after September 16, 2012, and inserted a cross-reference to MPEP § 601.05(b) for the formatting of Supplemental Application Data Sheets for patent applications filed prior to September 16, 2012. —Updated to indicate that "[s]earches are listed in the 'SEARCHED' boxes and/or SEARCH NOTES box of the OACS Search Notes page." Revised examples throughout to reflect Cooperative Patent Classification (CPC).
719.05
—In subsection I, revised title to "'SEARCHED' Boxes Entries" and extensively revised discussion of the "searched" box entries to reflect recording searches performed under the Cooperative Patent Classification (CPC), CPC Combination Sets, and U.S. Patent Classification (USPC) paradigms. —In subsection II: Added new subsection heading, "A. Format of Entries in the "SEARCH NOTES" Section." Replaced information type (A), limited classification search, with "Annotations associated with classification searches, as shown in the examples in subsection I above." Revised information type (B) to list "Text search performed in a particular database (where no classification search was performed)." Inserted new information type (C), "Searches made within the International Classification System (IPC)" and new information type (D) "Searches performed by the Scientific and Technical Information Center (STIC)." Former information type "(C)" redesignated as information type "(E)" and former information type "(D)" divided into two new information types, "(F)" for Searches performed in electronic journals and electronic books available to examiners on their desktop through the STIC NPL website and "(I)" for Nonelectronic searches of publications in paper form. The content from former subsection II.D is now information type (G). The content from former subsection II.C is now information type (H). —Subsection III is a new subsection directed to conducting and recording the Interference Search. Former subsection III, directed to "Information Not Recorded in the Application File," has been redesignated as subsection IV. —Added the website address for accessing the August 2012 revision of the MPEP.720 —Deleted references to the IFW Manual.724.04 —Revised subsection III to add "[h]owever, if the papers are correctly matched with the application serial number given in an electronic filing via EFS-WEB, the information is not
724.05
considered to have been submitted in the incorrect application even if the identifying information in the heading of the papers is directed toward a different application."
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CHAPTER 800:
—Revised "obviousness-type double patenting" or "ODP" to "nonstatutory double patenting" or "NDP" to reflect current terminology.
Passim
—Revised to add cross-reference to MPEP § 823 for guidance on matters set forth in MPEP Chapter 800 that apply to national stage applications submitted under 35 U.S.C. 371. Paragraph
801
added to indicate that the general principles of this chapter, with certain exceptions, apply to design applications, reissue applications, and reexamination proceedings and to provide cross-references to MPEP sections for additional information. —Revised the title of the section and the first sentence to clarify that the section is limited setting forth the basis for restriction practice.
802
—Added a cross-reference to MPEP § 804.01.803.01 —Revised to indicate that in 2007, the Office rescinded the 1996 partial waiver of the requirements of 37 CFR 1.141 et seq. with regard to restriction requirements in certain
803.04
applications claiming polynucleotide molecules. Added that for national applications filed under 35 U.S.C. 111(a), polynucleotide inventions will be considered for restriction, rejoinder, and examination practice in accordance with the standards set forth in MPEP Chapter 800. Deleted text discussing the guidance provided in the Official Gazette notice regarding the1996 partial waiver. —New section added to explain policies and procedures for restriction practice in reissue applications.
803.05
—Revised text throughout the section to add "common applicant" to the situations in which double patenting rejections may be applicable.
804 (Passim)
—Modified text throughout the section to refer to both the current statutory provisions for common ownership and joint research agreement (35 U.S.C. 102(b)(2)(C) and 102(c), respectively) and the prior statutory provisions as amended by the CREATE Act (pre-AIA 35 U.S.C. 103(c)). Pertaining to introductory text and double patenting charts:804 —In the introductory text, added a citation to Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 110 USPQ2d 1551 (Fed. Cir. 2014). —In the introductory text, added preventing the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention to the purposes underlying the doctrine of nonstatutory double patenting. —Added explanation that a nonstatutory double patenting rejection may be based on an anticipation analysis, an "obviousness" analysis that is similar to, but not necessarily the same as, that undertaken with regard to 35 U.S.C. 103, or equitable principles. —Revised the double patenting charts for consistency with the AIA. Specifically, the charts cover when two applications have claims to the same invention (Charts I-A) or to patently indistinct inventions (Charts I-B) and when an application and a patent have claims to the same invention (Charts II-A) or to patently indistinct inventions (Charts II-B). One set of four charts apply when the application being examined is subject to the first to invent (FTI) provisions and a second set of four charts apply when the application being examined is subject to the first inventor to file (AIA) provisions. Added text to explain the revisions to the charts, including certain possible rejections that the charts do not address. Pertaining to subsection I. Instances Where Double Patenting Issue Can be Raised:804 —In subsection I.A, added a citation to In re Hubbell, 709 F.3d 1140, 106 USPQ2d 1032 (Fed. Cir. 2013), which indicates that complete identity of ownership or inventive entities is not required in order for nonstatutory double patenting rejection to apply.
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—In subsection I.B, second paragraph, deleted "unless that 'provisional' double patenting rejection is the only rejection remaining in at least one of the applications" and inserted "except as noted below" in its place. In subsections I.B.1 and I.B.2, added "Provisional" to the subsection title and completely rewrote the text to set forth procedures that are consistent with current practice as set forth in MPEP § 1490. —In subsection I.D, first paragraph, added "same" before "issue" in the last sentence for clarification. Pertaining to subsection II. Requirements of a Double Patenting Rejection (Including Provisional Rejections):
804
—In subsection II, second paragraph, deleted "substantively" before "the same" in the first sentence for clarification. Revised the list of determinations to be made with regard to the proper basis for a double patenting rejection to reorder the items and to added "nonstatutory" before "double patenting rejection" in the context of determining whether a rejection is prohibited by the third sentence of 35 U.S.C. 121. Added citation to AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014). —In subsection II.A, revised the examiner notes in form paragraphs 8.31 and 8.32, to conform with current terminology and to clarify guidance for applications being examined under pre-AIA (first to invent) law and for applications being examined under the first inventor to file provisions of the AIA. —In subsection II.B, at the end of the first paragraph, added preventing the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention as a public policy basis for nonstatutory double patenting rejections. Deleted subsection heading "1. Obviousness Type" and rewrote text previously thereunder in new subsections II.B.1 and II.B.2. The text in former subsection II.B.2 —Added new subsection II.B.1, entitled "Anticipation Analysis," to explain when an anticipation analysis should be used to explain the basis for a nonstatutory double patenting rejection. The added text specifically discusses policies in regard to species and sub-genus claims. Added citation to AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014) to support the statement that an obviousness analysis is required if one of ordinary skill in the art is not able to at once envisage the invention claimed within the scope of the genus claims of the conflicting application or patent. —Redesignated former subsection II.B.1 as subsection II.B.2. Obviousness Analysis. Revised to explain issues to be considered when determining the propriety of a nonstatutory double patenting rejection based on an obviousness analysis. Clarified text to explain that the specification of the applied patent or copending application may be used to interpret the applied claims, even though the specification is not prior art. Added citations to Geneva Pharmaceuticals, 349 F.3d at 1378 n.1, 68 USPQ2d at 1869 n.1 (Fed. Cir. 2003) and In re Basell Poliolefine, 547 F.3d 1371, 1379, 89 USPQ2d 1030, 1036 (Fed. Cir. 2008) to support the statement that the nonstatutory double patenting analysis is similar to, but not necessarily the same as, the analysis under 35 U.S.C. 103. —Added new subsection II.B.2(a), entitled "Construing the claim using the reference patent or application disclosure." Revised the former text discussing use of the reference disclosure to clarify the proper use of the specification for claim construction. Included supporting citations to Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc); AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014); Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); and Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC , 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003). Specifically, added new text to clarify procedures and help to avoid improper reliance on the disclosure of a reference patent or copending
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application. In addition, the result in In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968) is discussed to avoid improper application of double patenting rejections based on Schneller. —Relocated the text of former subsection II.B.1(a) to subsection II.B.2(b) One-Way Test for Distinctness. Revised text to use "distinctness" in place of "obviousness" to emphasize that a double patenting analysis is different from an obviousness analysis under 35 U.S.C. 103. In the first paragraph, deleted text drawn to "obvious-type" double patenting and anticipation from the last two sentences. In the second paragraph, added references to In re Hubbell, 709 F.3d 1140, 106 USPQ2d 1032 (Fed. Cir. 2013) and In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986). In the third paragraph, changed "an unjustified timewise extension rationale" to "equitable principles" to conform with current terminology. Moved form paragraphs 8.33 to 8.37 from former subsection II.B.2(b) to this subsection. Revised form paragraph 8.33 to improve clarity and revised the examiner notes in form paragraphs 8.34 to 8.37 to conform with current terminology and to clarify policies under the first to invent law and first inventor to file law. —Relocated the text of former subsection II.B.1(b) to added subsection II.B.2(c) Two-Way Test for Distinctness. In the first paragraph, added a citation to In re Hubbell, 709 F.3d 1140, 106 USPQ2d 1032 (Fed. Cir. 2013) to support that the Office must solely be responsible for delays to be entitled to a two-way test for distinctness. In the second paragraph, clarified the procedures in making a two-way distinctness determination and changed "the fundamental reason … by a patent" with "equitable principles" to conform with current terminology. Added a new paragraph that discusses the unusual facts of In re Braat. In the last paragraph, changed "an unjustified timewise extension rationale" to "equitable principles" to conform with current terminology. Form paragraphs 8.33 to 8.47 were moved to current subsection II.B.2(b). —Redesignated former subsection II.B.2 as subsection II.B.3. Nonstatutory Double Patenting Rejection Based on Equitable Principles. In the first paragraph, revised text to clarify that double patenting rejections based on equitable principles are intended to prevent unjustified timewise extension of patent rights, no matter how the extension is brought about. Added a supporting citation to Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003) and a new paragraph discussing that decision. Made conforming changes through the subsection by referring to "equitable principles" rather than "unjustified timewise extension of patent rights rationale" as the basis for such nonstatutory double patenting rejections. Revised the examiner notes in form paragraphs 8.38 and to 8.39, to conform with current terminology and to clarify guidance for applications being examined under pre-AIA (first to invent) law and for applications being examined under the first inventor to file provisions of the AIA. —Redesignated former subsection II.B.3 as subsection II.B.4. Revised text to use "distinctness" in place of "obviousness" to emphasize that double patenting analysis is different from obviousness analysis under 35 U.S.C. 103. In the second paragraph, clarified text regarding double patenting in a design-utility situation. Deleted "But see Carman Indus. (J. Nies, concurring)." Pertaining to subsection III. Contrast Between Double Patenting Rejection and Rejections Based on Prior Art:
804
—In subsection III, changed the citation of "35 U.S.C. 103(a)" to "35 U.S.C. 102 or 103" and "obviousness analysis" to "anticipation or obviousness analysis" because double patenting may be evaluated either an anticipation or obviousness analysis. In the first paragraph, added a quotation from In re Bartfeld. —In the second paragraph, replaced the citation to the In re Bowers CCPA decision with a citation to In re Heck, 699 F.2d 1331, 216 USPQ 1038 (Fed. Cir. 1983).
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—In the third paragraph, added "even though it may overcome a nonstatutory double patenting rejection" at the end of the first sentence to clarify that this paragraph is limited to nonstatutory double patenting, and replaced the citation of In re Fong with a citation to In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). Added a citation to Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 86 USPQ2d 1110 (Fed. Cir. 2008) for an example of the purpose of a terminal disclaimer. Pertaining to subsection IV. Double Patenting Rejections and Prior Art Exclusion under Pre-AIA 35 U.S.C. 103(c):
804
—Added new subsection IV, which contains modified text from former subsection III. Added "pre-AIA" before statutory citations to 35 U.S.C. 102 and 103 for clarification. Deleted the clause "and for reexamination proceedings in which the patent under reexamination was granted on or after December 10, 2004" as unnecessary. Added cross-references to MPEP § 706.02(l) and the charts in this section. Pertaining to subsection V. Double Patenting Rejections and Prior Art Exception under 35 U.S.C. 102(b)(2)(C) and 102(c):
804
—Added new subsection V, which contains new text to briefly discuss policies regarding double patenting rejections and the prior art exception under 35 U.S.C. 102(b)(2)(C) and 102(c). Pertaining to subsection VI. Double Patenting Rejections Once a Joint Research Agreement is Established:
804
—Added new subsection VI, which contains modified text from the last paragraph of former subsection III. Text was revised to clarify that this subsection (pertaining to joint research agreements) applies to both pre-AIA and AIA law and to clarify whether the statutory citations are to pre-AIA or AIA law. Also, minor clarifying changes to the text were made. —Revised text to clarify that the prohibition under 35 U.S.C. 121 applies to nonstatutory double patenting and does not apply to statutory double patenting. In the first paragraph, added
804.01
discussion of, and citation to, Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008). Added text that discusses the court's interpretation of the double patenting prohibition in Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003) and Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 40 USPQ2d 1481 (Fed. Cir. 1996). —In the third paragraph, added "independent or distinct inventions, such as" after "restriction between" in the first sentence for clarification. In item (A), clarified the language by moving qualifying phrases to a different location in the same sentence. In item (B), clarified the first sentence by changing "different applications or patents" to "application under examination and claims of the other application/patent." —In item (C), clarified the language by adding "requirement was withdrawn because the" after "restriction" in the first sentence and deleting the second sentence. In item (D), added a new second sentence to emphasize that the prohibition against double patenting rejections to apply to national stage applications. In item (E), added "in its entirety, or in part" after "withdrawn" in the first sentence and changed "third sentence" to "[double patenting]" in the second sentence for clarification. Added new text to explain the effect of withdrawing a restriction requirement and to add a supporting quote from In re Ziegler. —In item (F), added text to state that the 35 U.S.C. 121 prohibition against double patenting is not applicable to statutory double patenting with supporting citations to Miller v. Eagle Mfg. Co., 151 U.S. 186 (1984); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). In item (G), clarified the text in the last sentence that if any process claims are rejoined, the restriction requirement should be withdrawn in accordance with 37 CFR 1.141(b) and MPEP § 821.04.
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—Added new item (H) to explain that continuation-in-part (CIP) applications do not qualify for the 35 U.S.C. 121 prohibition against double patenting, including a supporting citation to Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001,
1007-08 (Fed. Cir. 2008). —Rewrote the first sentence of the last paragraph to improve clarify by relocating qualifying phrases. —Modified the citation of "37 CFR 1.131" to "37 CFR 1.131(a)" and revised text to clarify that a terminal disclaimer can obviate a "nonstatutory" double patenting rejection.
804.02
—In subsection II, added text to state that 35 U.S.C. 101 prevents two patents from issuing on the same invention and added supporting citations to Miller v. Eagle Mfg. Co., 151 U.S. 186 (1984); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). Revised the cross-reference to "35 U.S.C. 102(e)/103(a)" to "35 U.S.C. 102 or 103" to include both pre-AIA and AIA versions of the statutes. —Added a new paragraph to discuss the consonance requirement, including supporting citations to Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003), Symbol Techs, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991), and Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 40 USPQ2d 1481 (Fed. Cir. 1996). —In subsection IV, corrected "application date" to read "expiration date" in the first sentence. Also, changed "rejection" to "judicially created double patenting" in the last sentence of the second paragraph to make the quoted language consistent with the current text of 37 CFR 1.321(c)(3). Changed "ownership" to "separate enforcement" in the first sentence of the last paragraph to make the language consistent with 37 CFR 1.321(d). —In subsection VI, added citations to 35 U.S.C. 386(c), where appropriate. In the first paragraph, added a citation to 35 U.S.C. 156 following 35 U.S.C. 154(b) to clarify that certain patent term adjustments and extensions effect the patent term. Also added explanation that in certain situations copending applications will have the same effective filing date and may potentially have the same patent term. In the second paragraph, changed "extension" to "adjustment" to make the terminology consistent with 35 U.S.C. 154(b), and added text to explain the interplay between terminal disclaimers and patent term adjustment under 35 U.S.C. 154(b). Also added explanation that 37 CFR 1.321(d) limits enforcement of the patent to only when the patent and the reference application or patent are not separately enforced, and that a terminal disclaimer is only effective in the application in which it is filed. In the third paragraph, updated the citation to a 1997 Official Gazette notice with more complete identifying information and added a supporting citation to AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014). Added a new fourth paragraph to subsection VI indicating that a terminal disclaimer may be withdrawn if the conflicting claims are cancelled or shown to be patentably distinct from the reference claims. —Added 35 U.S.C. 102(b)(2)(C) and (c). Revised the title of 35 U.S.C. 103(c) to indicate that it is the pre-AIA version. Replaced former 37 CFR 1.78(c) with current 37 CFR 1.78(g)
804.03
and replaced former 37 CFR 1.130 with current 37 CFR 1.131(c) to provide the regulatory sections relevant to the discussion in the this MPEP section. Revised text to clarify that a terminal disclaimer can obviate a "nonstatutory" double patenting rejection. —Modified text to refer to both the current statutory provisions for common ownership and joint research agreement (35 U.S.C. 102(b)(2)(C) and 102(c), respectively) and the prior statutory provisions as amended by the CREATE Act (pre-AIA 35 U.S.C. 103(c)) and other conforming changes (e.g., updating form paragraph references and using "effective filing date" instead of "when the invention was made").
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—In subsection I, deleted the reference to Public Law 108-453. Also updated cross-references to other MPEP sections that contain more information on common ownership and joint research agreements. —In subsection II.A, added text from MPEP § 706.02(l)(2) to define common ownership and added cross-references to MPEP 717.02(a) and (b) for more information on the prior art exception based on common ownership. In subsection II.B, added text at the end to discuss the differences between the joint research agreement provisions of 35 U.S.C. 102(c) and pre-AIA 103(c). In subsection II.C, added "may be made final" to the end of the last sentence. —In subsection III, clarified text in the second paragraph to conform with current terminology. —In subsection IV, updated all form paragraphs to conform with current terminology. —In the first paragraph, added "nonstatutory" before "double patenting" for clarification and deleted "or continuing" because the 35 U.S.C. 121 prohibition against double patenting is only applicable to divisional applications.
804.04
—Added new paragraphs to further explain the 35 U.S.C. 121 prohibition against double patenting, including support citations to Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003), Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 40 USPQ2d 1481 (Fed. Cir. 1996), and Symbol Techs, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991). —Changed "void" to "invalid" to be consistent with current terminology in the last sentence.805 —Revised section title and modified text to refer to both the current statutory provisions for common ownership and joint research agreement (35 U.S.C. 102(b)(2)(C) and 102(c),
806.04(i)
respectively) and the prior statutory provisions as amended by the CREATE Act (pre-AIA 35 U.S.C. 103(c)). Made minor clarification changes to the first sentence. —Updated the cross-reference from MPEP § 818.03(d) to MPEP § 818.01(d).809.03 —Changed the period for reply from "1-month (not less than 30 days)" to "2 months." Deleted "or election" after "restriction" for clarification. Deleted the clause "When preparing … the
810
restriction requirement" and inserted text to more fully explain making a restriction requirement final. —In the second paragraph, made clarifying changes that the examiner must consider whether there is a serious burden before requiring a restriction of claims previous examined on the merits.
811
—Revised the order of the text and made minor revisions thereto for clarity. References to "documentation" and "the next Office action" reflect updates to use current terminology.
812.01
—In subsection I, added "if necessary" after "mentioned" for clarification and added cross-references to form paragraphs 8.01 and 8.02. In subsection III, added "linked" before "invention" for clarification.
814
—Revised the text in the paragraph following form paragraph 8.11 for clarification. Added new subitem (v) under item (C)(2) regarding the process of making and process of using.
817
—Updated form paragraph 8.21 and revised text to indicate that only form paragraph 8.21 must be used at the conclusion of all restriction requirements. Deleted form paragraphs 8.21.01-8.21.03. Added form paragraphs 8.27.aia and 8.28.aia. —Deleted text of section except for the first sentence, and added "by applicant" following "designation" in the first sentence for clarification. Added a new paragraph to discuss when
818
two or more independent and distinct inventions are presented, and to discuss the restriction process. Added text from former MPEP § 818.01. In addition, added a sentence about inventions elected by original presentation with a cross-reference to MPEP § 818.02(a). —Revised section title to "Election in reply to a restriction requirement," and added text from former section MPEP § 818.03, modified for clarity.
818.01
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—Added two new paragraphs to state the requirements for traversing a restriction requirement and to explain that where a rejection or objection is included with a restriction requirement, applicant must respond to all rejections and objections in addition to the restriction requirement. —New section added that contains modified text from former MPEP § 818.03(a). In the first paragraph, text was modified by adding "for restriction" after "requirement" in the first sentence
818.01(a)
and deleting all text after "37 CFR 1.111(b)." In the second paragraph, text was modified by changing the cross-reference from MPEP § 818.03(b) to MPEP § 818.01(b) and adding "if accompanied by an incomplete traversal of the requirement for restriction" at the end of the last sentence. —New section added that contains modified text from former MPEP § 818.03(b). In the second paragraph, text was revised to add "other than those containing only an election of
818.01(b)
species" after "restriction" and to refer to form paragraph 8.21 instead of 8.22. Deleted form paragraph 8.22. Added a paragraph that for election of species, form paragraph 8.01 or 8.02 should be used. —New section added that contains modified text from former MPEP §§ 818.03(a) and 818.03(c). Added text explaining that a traversal must point out all errors in order to preserve
818.01(c)
petition rights, and that the petition may be deferred until after final action but no later than the filing date of a notice of appeal. —New section added that contains modified text from former MPEP § 818.03(d). Text from former MPEP § 818.03(d) was revised to combine the text into a single paragraph and to
818.01(d)
clarify that regardless of the presence of a linking claim, a proper traverse must include a written statement of the reasons for traverse, including distinctly and specifically pointing out supposed errors in the restriction requirement. —Text is revised by changing "expressly" to "by explicitly or expressly identifying the elected invention or" and by adding a cross-reference to MPEP § 818.02(d).
818.02
—Section title is modified by adding "Election" at the beginning. In the first paragraph, text is revised by changing "an action is given, they are treated as original claims" to "the earlier
818.02(a)
of the mailing of a first restriction requirement or the mailing of a first Office action on the merits, those claims, along with ones presented upon filing the application, will be considered as originally presented claims." A cross reference to MPEP chapter 1400 is added for reissue applications. —Section title is modified by adding "; Linking Claims Only – No Election of Invention" and by adding text indicating that where only linking claims are first presented and prosecuted in
818.02(b)
an application in which no election of a single linked invention has been made, and applicant later presents claims to two or more linked, independent or distinct inventions, the examiner may require applicant to elect a single invention. —Section title revised by adding "Election." Added "independent or distinct" prior to "inventions," deleted "(which may be species or various types of related inventions)," and made minor changes to clarify the text.
818.02(c)
—New section added to explain that when applicant's reply to a restriction requirement does not expressly state the invention elected, but cancels claims to all but one invention, the remaining invention is deemed to be the elected invention.
818.02(d)
—Sections removed and reserved; text previously therein was modified and moved to MPEP § 818.01 et seq. as discussed above.
818.03 et seq.
—In the first paragraph, minor changes to text made for clarification and to add a cross-reference to MPEP § 706.07(h), subsection IV.B.
819
—In the second paragraph, reorganized the order which the information is presented and qualified the discussion of continued prosecution applications as limited to design applications (but not international design applications).
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—Delete text regarding interference and allowable genus claims. Added a new paragraph stating that an applicant, as a matter of right, may not shift from claiming one invention to another but an examiner is not precluded from permitting a shift. —Deleted the second paragraph and moved the citation of In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971) to the end of the final paragraph.
821
—Minor clarifying changes are made to the first paragraph. Text surrounding form paragraphs 8.25 and 8.05 rearranged and clarified to explain that if a restriction requirement is made final,
821.01
the claims to the nonelected invention should be clearly indicated as being withdrawn from consideration. —Deleted form paragraph 8.24 and text that indicated a complete reply to a final rejection must include cancellation of claims nonelected with traverse or other appropriate action because even after final rejection, the withdrawn claims to the non-elected invention might properly be rejoined. Deleted the second to last paragraph that states that the failure to cancel claims drawn to the nonelected invention in a reply to a final action that otherwise places the application in condition for allowance will be taken as an authorization to cancel claims not eligible for rejoinder or to take appropriate action. —In the last paragraph, clarified that "not later than appeal" means on or before the date of notice of appeal is filed and added a cross-reference to MPEP § 1204. —In the first paragraph, revised text to clarify that where the initial requirement is not traversed (either expressly or by virtue of an incomplete reply), the examiner should take appropriate
821.02
action, including determining whether the restriction requirement should be withdrawn in whole or in part. Also added a cross-reference to MPEP § 821.04. Added a sentence indicating when form paragraph 8.07 should be used. —Added explanation that even if an election was made without traverse, claims directed to nonelected species and nonelected inventions that are eligible for rejoinder should be rejoined; if not rejoined, such claims may only be cancelled by examiner's amendment when the cancellation is expressly authorized by applicant. —In the first paragraph, deleted the cross reference to MPEP § 818.01 and made minor clarification changes. Revised form paragraph 8.26 to provide a two month time period for
821.03
reply, and to add an examiner note indicating that the form paragraph should not be used for an application filed on or after August 25, 2006 that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d). —Revised form paragraphs 8.03 and 8.47 to provide a two month time period for reply.821.04(a) —Revised section title to "Claims to Inventions That Are Not Patentably Distinct in Plural Applications of Same Applicant or Assignee."
822
—Replaced former 37 CFR 1.78(b) with current 37 CFR 1.78(f), which relates to the treatment of applications containing patentably indistinct claims, and updated form paragraph 8.29 to cite to 37 CFR 1.78(f). Added brief discussion of appropriate rejections that should be made when claims in two or more applications filed by the same applicant or assignee are patentably indistinct. —Added cross-references to MPEP §§ 804.01 and 1490 for additional information pertaining to provisional double patenting rejections. —Section deleted in its entirety. See MPEP § 822 for information pertaining to the treatment of applications containing patentably indistinct claims.
822.01
—Revised to explain that the analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of
823
invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis), however the guidance set forth in MPEP Chapter 800
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with regard to other substantive and procedural generally applies to national stage applications submitted under 35 U.S.C. 371.
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CHAPTER 900:
—Revised to add "pre-AIA" to references to 35 U.S.C. 102(a), 35 U.S.C. 102(e), 35 U.S.C. 102(g)(1), 35 U.S.C. 104, 35 U.S.C. 135(a), 35 U.S.C. 135(b), and 35 U.S.C. 154(b)(1)(C).
Passim
Revised to replace references to "35 U.S.C. 112, first paragraph" with "35 U.S.C. 112(a)" and "35 U.S.C. 112, second paragraph" with "35 U.S.C. 112(b)." —Revised to indicate that matter canceled from the application file wrapper of a U.S. patent or U.S. patent application publication is publicly available, e.g., for purposes of 35 U.S.C. 102(a)(1), as of the patent or publication date, respectively.
901.01
—New section added regarding ordering patented and abandoned provisional and nonprovisional application files. Revises information previously in MPEP § 905.03 for consistency with current practices.
901.01(a)
—Revised to include discussion of relevant AIA provisions under 35 U.S.C. 102.901.02 —Revised to include information regarding the non-publication of international design applications filed under 35 U.S.C. 382. Revised to include discussion of use of U.S. patent application publications under AIA 35 U.S.C. 102.
901.03
—Revised to add cross-reference to MPEP § 2154.901.04 —Revised to delete previous subsection I, Placement of Foreign Patent Equivalents in the Search Files; renumbered the remaining subsections.
901.05
—Revised to update information regarding Scientific and Technical Information Center (STIC) commercial database offerings including Derwent World Patents Index, International Patent Documentation Center, and Chemical Abstract Service. Information regarding the STIC microfilm collection updated. —Revised to delete the alphabetical lists of the foreign language names of the months and of the names and abbreviations for the United States of America.
901.05(a)
—Revised to provide updated guidance on utilizing STIC to obtain copies of foreign patent documents.
901.05(c)
—Revised to update information about using STIC Translations Service Center to obtain human (written) or machine translations of non-patent literature and foreign patent
901.05(d)
documents, and to include a link to the STIC's listing of machine translation tools. Added cross-reference to MPEP § 706.02 relating to the use of machine translations where possible in the early phases of examination. —Revised to update information regarding the location of main STIC and the STIC-Electronic Information Centers (STIC-EICs), which are found in each of the Technology Centers.
901.06(a)
—Revised to update information regarding STIC collections, including books (electronic and print), periodicals, and special collections. Also revised to update information regarding locating materials in the STIC online catalog, and receiving loaned books from STIC. —Revised to update information on STIC services, including performing online searches using commercial databases, foreign patent document retrieval, document translation, and interlibrary loans. —Revised to add reference to a database that includes information on U.S. Alien Property Custodian bibliographic data.
901.06(c)
—Revised to specify that requests for statutory invention registration filed on or after March 16, 2013, will not be processed in light of the repeal of pre-AIA 35 U.S.C. 157.
901.06(d)
—Section rewritten in its entirety, and previous information pertaining to arrangement of art in technology centers deleted.
901.07
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—Section title revised to "Patent Family Information" and text rewritten to include information previously in MPEP § 905.06 regarding accessing patent family information. Additionally updated to include information about the Common Citation Document website accessible through the Patent Examiner's Toolkit. —Section removed and reserved.901.08 —Revised to include information regarding classification systems. Revised to indicate that U.S. Patent Classification (USPC) System will become a static searchable database after December 31, 2014.
902
—Section title revised to "Classification Manual for the U.S. Patent Classification System," and text revised to indicate that the classification manual for the U.S. Patent Classification
902.01
System will no longer be updated after December 31, 2014. Removed reference to bimonthly Manual updates and portable document format (.pdf) archiving on CD-ROM. —Revised section title to pertain to class and subclass definitions in the USPC.902.02 —Revised section title to pertain to definition notes in the USPC.902.02(a) —Revised to indicate that a majority of U.S. Patents and U.S. Patent Application Publications published after December 31, 2014, will no longer receive a designated U.S. patent classification.
902.03
—Revised to replace "IPC8" with "IPC."902.03(b) —Section removed and reserved.902.03(c) —Section removed and reserved.902.03(d) —Deleted.902.04 —Deleted.902.04(a) —Revised section title to pertain to classification in the USPC.903 —Section removed and reserved.903.02(a) —Revised section title to pertain to scope of a class in the USPC.903.02(b) —Deleted.903.02(c) —Revised to provide information about the Foreign Patents Service Center, which assists examiners in foreign patent data retrieval, patent family searches and document retrieval services for non-patent literature in the STIC collections.
903.03
—Revised section title to pertain to classifying applications for publication as a patent application publication in the USPC.
903.04
—Revised to delete reference to subclasses being regularly populated with documents from the EPO and JPO databases.
903.06
—Revised to reflect the current practice of electronic processing.903.07 —Deleted.903.07(b) —Revised to delete form paragraph 5.03 and the indication that applicants may be advised of expected application transfers by use of the form paragraph.
903.08
—Revised to delete indication that the SPE or a designee reviews each application to determine whether it belongs in the art unit.
903.08(a)
—Deleted outdated information regarding classification and assignment of applications filed under the Patent Cooperation Treaty (PCT).
903.08(c)
—In subsection II, deleted any distinction between the treatment of PCT, docketed, and undocketed applications in the context of application transfers.
903.08(d)
—Subsection III revised to delete references to eDAN messaging, to change "PALM EXPO" to "Patent File Wrapper (PFW)," and to delete the phrase "examinable in another TC" from identification of the controlling claim for the purposes of the application transfer request
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form. Subsection III further revised to delete information regarding handling of PCT applications and other special applications throughout the transfer process. —Revised the list setting forth how an application will be assigned by deleting reference to reclassification of entire classes from item (E), deleting former item (H) and redesignating former items (I-M) as items (H-L).
903.08(e)
—Subsection I retitled "Routing of Applications Transferred Between TCs" and revised to remove references to undocketed applications and eDAN messaging. Replaced "PALM EXPO" with "Patent File Wrapper (PFW)." —Subsection II retitled "Patent File Wrapper"; references to PALM EXPO transfer inquiry function and routing sheet deleted. —Section removed and reserved; moved information to new MPEP § 906.903.09 —Section removed and reserved; moved information to new MPEP § 907.903.09(a) —Revised to update discussion of a second search of the prior art following the first Office action.
904
—Revised to replace references to Information Technology Resource Person (ITPR) and Scientific and Technical Information Center (STIC) with Electronic Information Center.
904.02
—Revised to include classified searching in the Cooperative Patent Classification system.904.02(a) —Updated to reflect that an NPL search may be performed by the examiner or by using a STIC-EIC searcher.
904.02(b)
—Revised to update guidance on the use of the Internet as an examination search tool.904.02(c) —Revised to include general introduction of the cooperative patent classification (CPC) system.
905
—Revised to include explanation of the classification scheme for CPC, including specifics about each element of the classification symbol.
905.01
—New section added to explain that the title associated with CPC symbols defines the scope of the subject matter covered by that symbol.
905.01(a)
—New section added to explain references within CPC titles.905.01(a)(1) —New section added to explain significance of notes following a CPC class, subclass, main group or subgroup title.
905.01(a)(2)
—New section added to explain presence of warnings found within CPC schemes.905.01(a)(3) —New section added to explain guidance headings found in CPC schemes.905.01(a)(4) —Revised to explain CPC definitions.905.02 —Rewritten to provide guidance on classification rules in the CPC classification system. Information regarding ordering patented and abandoned provisional and nonprovisional application files relocated to new MPEP § 901.01(a).
905.03
—New section added containing information on the CPC database, which maintains technical information regarding the patent family documents for each patent included and associated CPC classification symbols.
905.03(a)
—New section added providing guidance on what subject matter to classify in the CPC classification scheme.
905.03(b)
—New section added providing guidance on searching using CPC combination sets.905.03(c) —Deleted. Content formerly in MPEP § 905.06 moved to MPEP § 901.07.905.04 - 905.06 —New section added containing updated information previously found in MPEP § 903.09 regarding the International Patent Classification system. Information pertaining to update of the Concordance was deleted.
906
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—New section added containing information previously found in MPEP § 903.09(a) regarding the Locarno International Classification system. Content revised to indicate that international design applications include a Locarno international classification designation.
907
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CHAPTER 1000:
—Updated 35 U.S.C. 2 and 3.1001 —Revised to add material emphasizing the distinction between appealable matters and petitionable matters.
1001.01
—Added 37 CFR 1.4(c) and updated 37 CFR 1.181 – 1.183.1002 —Revised to list four elements that should be included in a petition. —Revised to include a paragraph directed to the requirement of 37 CFR 1.4(c) for a separate paper/petition for each distinct subject, inquiry or order to avoid confusion and delay in answering the petition. Added an indication that many prior petitioners have benefitted by delaying the filing of petitions under 37 CFR 1.182 or 1.183 until after they receive a decision on a petition seeking supervisory review under 37 CFR 1.181. —Deleted a reference to 37 CFR 1.644. —Added form paragraph 10.30. —Revised to delete the last paragraph of the section, which was directed to notations made on the "Contents" of paper application file wrappers.
1002.01
—Revised to include a reference to MPEP § 1002.02(p).1002.02 —Revised the first paragraph to delete reference to petitions decided by PCT Legal Administration, to update the Mail Stop for applications for patent term extension under 35
1002.02(b)
U.S.C. 156, and to add the Mail Stop for petitions for retroactive foreign filing license under 37 CFR 5.25. —In item 1, removed reference to petitions to revive based on unavoidable delay. In item 4, changed 37 CFR "1.55(c)" to "1.55(e)" and MPEP § "201.14(a)" to "214.02." Added item 5 directed to petitions to restore the right of priority under 37 CFR 1.55(c). Added item 6 directed to petitions for the late filing of priority papers under 37 CFR 1.55(f). Renumbered former item 5 as item 7, changed "priority" to "benefit," changed 37 CFR "1.78(a)(3) and (a)(6)" to "1.78(c) and (e)," and changed MPEP § "201.11" to "211.04." Added item 8 directed to petitions to restore a domestic benefit claim under 37 CFR 1.78(b) or (e). —Renumbered former items 6-8 as 9-11, respectively. In former item 7 (renumbered as item 10), added "subsection I" after "MPEP § 711." In former item 8 (renumbered as item 11), deleted "assignments and" and added ", for example, issuance of a patent in the name of an assignee under 37 CFR 3.81" after "provided for." Deleted former item 9. Renumbered former items 10-21 as 12-23, respectively. In former item 10 (renumbered as item 12), added "or agent of record" after "attorney" and "and in applications pending in a Technology Center" after "Policy." In former item 12 (renumbered as item 14), changed "[r]equests by the examiner to the Board of Patent Appeals and Interferences for reconsideration of a decision" to "[r]equests from the examiner for the rehearing of a decision of the Patent Trial and Appeal Board." In former item 14 (renumbered as item 16), added "an unintentionally" before "delayed payment." In former item 15 (renumbered as item 17), added "or Central Reexamination Unit Director" after "Technology Center Director." —In former item 18 (renumbered as item 20), deleted "unavoidable or" and the reference to 35 U.S.C. 133. In former item 19 (renumbered as item 21), added "(or pre-AIA 37 CFR 1.14)" after "37 CFR 1.14." Renumbered former items 20 and 21 as items 22 and 23. Deleted former item 22. Renumbered former item 23 as item 24 and revised it to read "[a]pplications relating to Hatch-Waxman patent term extension, 37 CFR 1.710 - 1.791 and petitions relating to Hatch-Waxman patent term extension, 37 CFR 1.182 or 1.183." In former item 24 (renumbered as item 25), added "for original applications, other than designs, filed on or after June 8, 1995 and before May 29, 2000, MPEP § 2720." In former item 25 (renumbered as item 26), added a cross-reference to MPEP § 2734, subsection I. In former item 26, (renumbered as item 27),
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added a cross-reference to MPEP § 2734, subsection II. In former item 27 (renumbered as item 28), deleted references to former 37 CFR 1.60 and former 37 CFR 1.62. Added item 32, "[p]etitions, or requests at the initiative of the USPTO by someone other than a Technology Center Director, to withdraw patent applications from issue under 37 CFR 1.313(a) before payment of the issue fee." In former item 32 (renumbered as item 33), added "subsection II" after "MPEP § 1308." In former item 33 (renumbered as item 34), added a cross-reference to MPEP § 1308, subsection I.B. In former item 34 (renumbered as item 35), added "or assignment information." —Added new items 36-48. Item 42, directed to petitions for retroactive foreign filing license, was formerly item 7 of MPEP § 1002.02(c)(1). Item 48, directed to the return of papers containing discourteous remarks, was formerly item 3 of MPEP § 1003. —In item 2, revised the language addressing lack of unity in international applications to refer to "protests following a holding of lack of unity of invention by the USPTO in its
1002.02(c)
capacity as International Searching Authority ( 37 CFR 1.477 and MPEP § 1850 ) or International Preliminary Examining Authority (37 CFR 1.489 and MPEP § 1875.02)." —In item 3, deleted former sub-items (b) and (e) and relabeled sub-items (c), (d), and (f)-(j) as b-h, respectively. In former sub-item (d) (relabeled as sub-item c), changed 37 CFR "1.131" to 37 CFR "1.131(a)" and deleted references to 37 CFR 1.608 and MPEP § 2308 -§ 2308.02. In former sub-item (h) (relabeled as sub-item f), added a cross-reference to MPEP § 714.01(e). In former sub-item (j) (relabeled as sub-item h), MPEP § "704.11" was changed to "704.14(c)." —Items 5 and 9 were deleted and items 6-8 and 10-21 were renumbered as 5-19, respectively. In former item 7 (renumbered as item 6), "[p]etitions under 37 CFR 1.193(a) relating to the form of the appeal" was changed to "[p]etitions under 37 CFR 41.40 to request review of the primary examiner's failure to designate a rejection in the examiner's answer as a new ground of rejection, MPEP § 1207.03(b)." In former item 8 (renumbered as item 7), MPEP § "1206" was changed to "1205.01." In former item 11 (renumbered as item 9), a cross-reference to MPEP § 1205.01 was added. In former item 12 (renumbered as item 10), 37 CFR "1.515" was changed to 37 CFR "1.515(c)." In former item 13 (renumbered as item 11), "pending in the Technology Center" was deleted. In former item 16 (renumbered as item 14), a cross-reference to MPEP § 1204.03 was added. In former item 18 (renumbered as item 16), "where the application is before the Technology Center" was added after "37 CFR 1.313(a)." In former item 19 (renumbered as item 17), ", subsection II" was added after "MPEP § 1308." In former item 20 (renumbered as item 18), a cross-reference to MPEP § 608.03 was added. In former item 21 (renumbered as item 19), a cross-reference to MPEP § 608.03(a) was added. Former item 22 was deleted. —In item 1, a reference to MPEP § 710 was added. In item 2, a reference to MPEP § 709, subsection II was added. The text formerly between items 2 and 3 was deleted. In item 3, 37 CFR "5.12(a)" was changed to "5.12(b)."
1002.02(c)(1)
—Former item 7 is now item 42 of MPEP § 1002.02(b). The item was revised to include a reference to subsection II of MPEP § 140. Former items 8-14 were renumbered as 7-13, respectively. In former item 9 (renumbered as item 8), the cross-reference to MPEP § 1109 was deleted and "as in effect on March 15, 2013" was added. In former item 10 (renumbered as item 9), a cross-reference to MPEP § 150 was added. In former item 11 (renumbered as item 10), a cross-reference to MPEP § 150 was added. In former item 12 (renumbered as item 11), a cross-reference to MPEP § 140 was added. —Item 2 was changed from "[p]etitions to make biotechnology applications special where applicant is a small entity, MPEP § 708.02, item XII." to "[r]equest for a certificate of statement of availability of deposit, MPEP § 2410.02."
1002.02(c)(2)
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—In the section title, "and Requests" was added after "Petitions." In the preamble, before "requests," "petitions and" was deleted. Items 1 and 2 were deleted. The item number for item 3 was deleted.
1002.02(c)(3)
—New section added directed to petitions decided by the Director of the Central Reexamination Unit.
1002.02(c)(4)
—In item 2, MPEP § "1208.01" was changed to MPEP § "1207.04." In item 4, a cross-reference to MPEP § 1480 was added. In item 5, MPEP § "1481" was changed to MPEP § "1481.02."
1002.02(d)
—In item 6, a cross-reference to MPEP § 714.01(e) was added. In item 7, 37 CFR "1.603" was changed to "41.202" and MPEP § "2303" was changed to "2304.04 et seq." In item 9, a cross-reference to MPEP § 608.02, subsection VIII was added. In item 10, MPEP § "1211" was changed to "1211.01." —Section removed and reserved. The content was moved to MPEP § 1004, item 20.1002.02(e) —The first paragraph was revised to indicate that the Chief Administrative Patent Judge is authorized to delegate authority to decide any of the petitions or matters listed to the Deputy
1002.02(f)
Chief Administrative Patent Judge, to a Vice Chief Administrative Patent Judge, a Lead Administrative Patent Judge, or to an Administrative Patent Judge of the Patent Trial and Appeal Board. —Items 1 and 2 were added and former items 1-5 were renumbered as 3-7, respectively. Former item 1(renumbered as item 3) was revised to provide for "[d]esignation of members of the Patent Trial and Appeal Board to, on written appeal, review adverse decisions of examiners upon applications for patents, review appeals of ex parte reexaminations, conduct derivation proceedings, conduct inter partes reviews and post-grant reviews, initially and on request for reconsideration. 35 U.S.C. 6." —Former item 2 (renumbered as item 4) was revised to remove the reference to "37 CFR 1.610(a)" and to include after "interference," "including the determination of priority and patentability of invention. Pre-AIA 35 U.S.C. 6." —Former item 3 (renumbered as item 5) was revised to refer to the review of appeals of inter partes reexaminations. In former item 4 (renumbered as item 6), former sub-items a, c, e, f, g, and h were deleted. Sub-items b and d were relabeled as sub-items e and f, respectively. New sub-items a-d, g, and h were added. Former item 5 (renumbered as item 7) was revised to refer to "pre-AIA" 35 U.S.C. 135(c) throughout. Sub-item a was revised to refer to 37 CFR 41.205(b) rather than 37 CFR 1.666(c) and sub-item b was revised to refer to 37 CFR 41.205(d) rather than 37 CFR 1.666(b). —Former items 1-5 were deleted and replaced by new items 1-5.1002.02(g) —Former text was deleted and replaced by items 1-7.1002.02(j) —In item 2, 37 CFR "1.304(a)(3)" was changed to "90.3(c)" and 37 CFR "2.145(d)" was changed to "2.145(e)." In item 3, 37 CFR "10.2(c)" was changed to "11.2(d)" and the phrase
1002.02(k)(1)
"regarding enrollment or recognition" was added at the end of the item. Former item 4 was renumbered as item 5 and a new item 4 directed to petitions under 37 CFR 11.2(e) was added. In former item 4 (renumbered as item 5), 37 CFR "10.155" was changed to "11.55" and 37 CFR "10.156" was changed to "11.56(c)." —In item 2, "Petitions requesting review" was changed to "Administrative appeals." A new item 3 was added directed to "[c]ertain uncontested decisions involving the Office of Enrollment and Discipline."
1002.02(k)(2)
—In item 1, a cross-reference to MPEP § 1481 was added. In item 3, MPEP § "1481" was changed to "1481.02."
1002.02(l)
—In the section title, "the Office of" was added before "Enrollment and Discipline." Item 1 was revised to change "relating to registration" to "regarding enrollment or recognition under
1002.02(m)
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37 CFR 11.2(c)." Item 2 was revised to change 37 CFR "10.9" to "11.9." Former items 3 and 4 were deleted and former items 5 and 6 were renumbered as 3 and 4, respectively. In former item 5 (renumbered as item 3), 37 CFR "10.160" was changed to "11.60." In former item 6 (renumbered as item 4), 37 CFR "10.170" was changed to "11.3." New item 5, directed to a "[p]etition to withdraw a Rule to Show Cause under 37 CFR 11.11(b)," was added. —Revised text to eliminate item numbers and references to interferences and to specify that the Deputy Director of the USPTO has been delegated the authority to decide petitions to the
1002.02(o)
Director of the USPTO from actions taken by the PTAB for matters not otherwise delegated to the Chief Administrative Patent Judge, the Deputy Chief Administrative Patent Judge, a Vice Chief Administrative Patent Judge, or administrative patent judge(s). —Revised by replacing throughout the section, including in the section title, "PCT Legal Administrator" with "Director of International Patent Legal Administration." Revised item 8 to delete reference to petitions under 37 CFR 1.137 based on unavoidable delay.
1002.02(p)
—Former items 9 and 16 were deleted. Former items 10-14 were renumbered as 9-13, respectively. In former item 10 (renumbered as item 9), "pre-AIA" was added before "37 CFR 1.47" and before "37 CFR 1.42." New items 14-16 were added. Former items 15 and 17 were renumbered as 17 and 19, respectively. New items 18, 20 and 21 were added. —New item 1 was added. Former items 1-5 were renumbered as 2-6, respectively. Former item 6 was deleted. New item 8 was added.
1002.02(q)
—Item 3 was changed from "[r]equests to issue patent in name of the assignee after payment of the issue fee, 37 CFR 3.81(b), MPEP § 307" to "[r]equests for republication of an application, 37 CFR 1.221(a), MPEP § 1130." Item 4 was deleted.
1002.02(r)
—Revised section title by deleting "by the Special Program Examiners." Revised the section to be directed to petitions to make patent applications special under the accelerated program
1002.02(s)
set forth in MPEP § 708.02(a). Sub-items (a)-(k) were deleted and new sub-items a-d were added. Sub-item (l) was relabeled as sub-item e. Former item 2 was deleted from this section and added to item 12 of MPEP § 1002.02(b)). —In item 1, relabeled sub-items i-iii as a-c, respectively. In item 2, revised to replace "on the 'Contents' of the file wrapper" with "in the file wrapper" and to delete references to MPEP
1003
§ 201.14(c) and § 604.04(a). Item 3 was deleted from this section and added as new item 48 in MPEP § 1002.02(b). Former items 4-18 were renumbered as 3-17, respectively. —Former item 6 (renumbered as item 5) was revised to be directed to actions which hold claims unpatentable on grounds of rejection that would also be application to corresponding claims in a patent. In former item 7 (renumbered item 6), the cross-reference to MPEP § 2303 was deleted. In former item 9 (renumbered as item 8), MPEP § "2305.04" was changed to "2304.02." In former item 10 (renumbered as item 9), MPEP § "1208" was changed to "1207.02." In former item 11 (renumbered as item 10), MPEP § "2303" was changed to "2302." In former item 13 (renumbered as item 12), MPEP § "2305" was changed to "2304.04." In former item 14 (renumbered as item 13), "Office of Petitions" was changed to "Office of the Deputy Commissioner for Patent Examination Policy." In former item 16 (renumbered as item 15), a cross-reference to MPEP § 1308.01 was added. In former item 17 (renumbered item 16), sub-items i-ii were relabeled as a-b, respectively. In former item 18 (renumbered as item 17), MPEP § "1208" was changed to "1207.01." Former item 19 was deleted. —This section has been revised to include a number of actions (for example, allowances, examiner's amendments, Quayle actions, actions on amendments submitted after final rejection,
1004
and actions reopening prosecution) that previously were listed in MPEP § 1005 and require the attention of a primary examiner. The actions listed in this section have been numbered as 1-24 and the actions relating to interference practice were moved to the end of the list (now items 21-24). Item 10 was revised slightly from the language of item 10 in MPEP §
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1005 because approval by the supervisory patent examiner is required unless the amendment is directed merely to formal matters or the cancellation of claims (see MPEP §§ 714.16 and 1002.02(d)). Item 13 (decision on affidavits or declarations) was updated to specifically mention affidavits or declarations under 37 CFR 1.130(a), 1.130(b), 1.131(a), 1.131(c), and 1.132. Item 14 was revised from the language of item 14 of MPEP § 1005 because it is the Technology Center Director (and not the primary examiner), who can grant second or subsequent suspensions (see MPEP § 1003). —Item 20 (moved from former MPEP § 1002.02(e)) regarding decisions on requests filed under 37 CFR 1.48 has been revised to include "filed prior to September 16, 2012" because requests under 37 CFR 1.48 filed on or after September 16, 2012 are decided by the Director of the Office Patent Application Processing (see MPEP § 1002.02(q), item 1). —Introductory paragraph revised to change "the signature of the primary examiner" to "the signature of a primary examiner, Technology Center Director, or practice specialist."
1005
—The actions listed in this section have been numbered as 1-21 and the actions relating to interference practice were moved to the end of the list as items 19-21. In item 7, the citation for examiner's answers on appeal was changed from MPEP § "1208" to MPEP § "1207." Item 13 (actions based on affidavit or declaration evidence) was updated to specifically mention affidavits or declarations under 37 CFR 1.130(a), 1.130(b), 1.131(a), 1.131(c), and 1.132. Item 15 regarding reissue applications was revised to include "e.g.," before "decisions on reissue oath or declaration."
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CHAPTER 1100:
—Revised to update 35 U.S.C. 122(b)(2)(A)(ii)-(iv) for consistency with conforming amendments made in the AIA. Updated 37 CFR 1.211(b), which added international design applications under
1120
35 U.S.C. chapter 38 to the list of applications that will not be published. Subsection I revised to indicate that the Office will not publish "international design applications filed under 35 U.S.C. 385" under 35 U.S.C. 122(b). —In subsection I, added subordinate subsection headings A and B.1121 —Subsection III revised to replace "37 CFR 1.137(b)" with "37 CFR 1.137(a)" because the relevant subject matter was moved to 37 CFR 1.137(a) in the PLT implementation rule.
1122
—Revised to update 35 U.S.C. 122(b)(2)(B)(iii) for consistency with the PLTIA.1123 —Revised to update 35 U.S.C. 122(b)(2)(B)(iii) for consistency with the PLTIA. Added subsection headings I and II.
1124
—In subsection II, updated 37 CFR 1.137 and revised text of subsection for consistency with the revised rule, which no longer provides for petitions to revive abandoned applications on the basis of unavoidable delay. —Updated 37 CFR 1.14 for consistency with changes to the rule made as a result of the PLTIA.1128 —Subsection I revised to indicate that if a published patent application is pending and is not maintained in the IFW system, the paper application file itself will not be available to the public for inspection and that only copies of the application file may be obtained pursuant to 37 CFR 1.14(a)(1)(iii). A cross-reference to MPEP § 103 was also added. —Subsection III was removed and information pertaining to physical access to published applications is now in subsection I. —Renumbered subsection IV as subsection III. Revised subsection to indicate that status information may also be provided when an application is referred to by its application number in an international publication of an international application under PCT Article 21(2), or in a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. —Added subsection headings I and II.1130 —Revised to remove Editor Note concerning the effective date of certain AIA provisions.1134.01 —Updated 37 CFR 1.290(f) to replace the reference to "37 CFR 1.17(p)" with "37 CFR 1.17(o)." —Updated form PTO/SB/429 in subsection II.A.1. Revised subsection II.F.2 to explain that a resubmission of a third party submission after receipt of a notice of non-compliance must be complete as the Office will not accept amendments to a noncompliant submission. —Revised text to explicitly state that to be complete, the appropriate fee must accompany any resubmission made in response to a notification of non-compliance. Clarified that to satisfy the fee requirement for a resubmission after a finding of non-compliance where the proper fee set forth in 37 CFR 1.290(f), or a proper fee exemption statement under 37 CFR 1.290(g), accompanied the non-compliant submission, the third party may request that the Office apply the previously-paid fee or fee exemption statement to the resubmission. Added statement that "The determination of whether the fee requirement for a resubmission is satisfied will be made at the sole discretion of the Office." —Revised subsections V and VI to replace references to a notification "of non-compliance" with references to a notification "to the third party regarding its third-party submission."
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CHAPTER 1300:
—Revised to remove recommendation that examiners require applicants to limit the disclosure to be confined to and in harmony with the claims; deleted associated form paragraphs 13.07 and 13.08.
1302.01
—Revised to delete language stating that an examiner's amendment is required for changing the order of the claims, and to remove paper processing references. —Revised for consistency with 37 CFR 1.72 to specify that the title of an application may not exceed 500 words in length. —Updated Notice of Allowability form PTOL-37.1302.03 —Revised to delete "formal" when preceding "examiner's amendment," and to delete instructions pertaining to "informal" examiner's amendment" practices, as these practices are not available
1302.04
in electronic processing. Revised to provide updated guidance on when an examiner may make changes to the specification, or any other paper filed in the application, without an examiner's amendment approved by applicant. —Revised to indicate that for continuing applications, a reference to a parent application in the first sentence(s) of the specification is no longer required when the reference appears in an Application Data Sheet. Added reference to benefit claims under 35 U.S.C. 386(c). Added explanation that if applicant has included a reference to the parent application in the specification, the examiner should review the statement and the application data sheet for accuracy. Further revised to provide updated guidance as to when an ADS is required for benefit claims. —Revised text and form paragraphs 13.02.01 and 13.02.02 to remove references to specific interview types. —Revised to update the role of the Office of Patent Quality Assurance upon discovery of any informality in the application suitable for correction by examiner's amendment. —Section removed and reserved.1302.04(b) —Deleted "formal" preceding "examiner's amendment."1302.04(g) —Revised to replace "Publishing Division" with "Office of Data Management" and to replace "non-extendable period" with "time period."
1302.05
—Deleted.1302.05(a) —Updated cross-references to sections of MPEP Chapter 200.1302.06 —Updated Issue Classification sheet.1302.09 —Revised to add reference to benefit claims under 35 U.S.C. 386(c), and to remove references to paper processing instructions. —Revised to add cross-references to MPEP §§ 905 through 907.1302.10 —Revised to indicate that the Office Action Correspondence System (OACS) automatically populates the Issue Classification sheet with the Cooperative Patent Classification symbols applied to a family of documents, and as such it is possible that not all classification symbols shown on the Issue Classification Sheet have been searched by the examiner. —Section removed as unnecessary and reserved.1302.11 —Revised to remove reference to paper processing, and to add reference to derivation proceedings.
1302.12
—Revised to reflect electronic signatures by examiners.1302.13 —Revised to delete information specific to paper processing. Subsection V revised to include derivation among the proceedings considered by the Board.
1302.14
—Updated 37 CFR 1.311. Revised to note that the publication fee was reset to $0.00 effective January 1, 2014.
1303
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—Revised to update the Notice ofAllowance and Fee(s) Due form (PTOL-85) and the discussion thereof. Note that page 3 of the form indicates that the Office no longer provides a patent term adjustment calculation with the Notice of Allowance. —Revised to add processing instructions associated with applications filed after September 16, 2012, which are in condition for allowance but do not include an oath or declaration in compliance with 37 CFR 1.63 or a substitute statement in compliance with 37 CFR 1.64. —Revised to state that if an amendment received after allowance contains claims copied from a patent to provoke an interference, see MPEP Chapter 2300.
1303.01
—Revised to delete limitation of text to Image File Wrapper applications.1303.02 —Revised to replace cross-reference reference to MPEP § 409.01(f) with cross-references to MPEP §§ 409.01(a) and (b).
1303.03
—Revised to delete indication that an examiner may make an examiner's amendment correcting obvious errors after a Notice of Allowance is mailed.
1305
—Revised to indicate that once the patent has been granted, the Office can take no action concerning it, except as provided in 35 U.S.C. 135, 35 U.S.C. 251 through 256, 35 U.S.C. 302 through 307, 35 U.S.C. 311 through 319, and 35 U.S.C. 321 through 329. —Revised to reflect fee reductions for micro entities. Revised to remove reference to unavoidable delays in making issue fee payments.
1306
—Revised to remove paper processing instructions.1306.01 —Revised to remove prior instructions for ordering of allowed application paper files.1306.03 —Revised to update 37 CFR 1.313(b) and associated text in subsection II to reflect that derivation proceedings are a reason the Office may withdraw an application from issue.
1308
—In subsection I.B, added references to filing an ePetition via EFS-Web to withdraw an application from issue. Subsection I.B further revised to indicate that once a petition under 37 CFR 1.313(c)(1) or (c)(2) has been granted, the application will be withdrawn from issue, the applicant's submission(s) will be entered, and the application forwarded to the examiner for consideration of the submission and further action. —Subsection II revised to replace discussion of paper processing with current electronic processing procedures. —New subsection III added to provide guidance for handling of applications withdrawn from issue which contain an examiner's amendment. —Revised to reflect that a case may be withdrawn from issue due to a new grounds of rejection.1308.01 —Revised to replace discussion of paper processing with current electronic processing procedures. —Revised section title and text to add reference to withdrawal from issue for derivations purposes.
1308.02
—Updated business unit names.1308.03 —Revised to reflect current electronic processing procedures.1309 —Revised section title to "'Printer Rush' Cases." Revised text to reflect current electronic processing procedures.
1309.02
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CHAPTER 1500:
—Updated 35 U.S.C. 171. Revised to add references to international design applications as provided for in 35 U.S.C. chapter 38 as a result of the PLTIA. Added cross-reference to MPEP
1501
Chapter 2900 for additional information concerning international design applications. Also added explanation that certain statutory provisions in 35 U.S.C. chapter 38 provide for the applicability of the provisions of 35 U.S.C. chapter 16 to international design applications, and accordingly many of the practices set forth in MPEP Chapter 1500, such as those pertaining to examination in MPEP § 1504, are applicable to international design applications that designate the United States. —Revised to delete form paragraphs previously reproduced herein; form paragraphs relating to statutory subject matter are set forth in MPEP § 1504.01.
1502
—Revised to indicate that the term of a design patent is 15 years for applications filed on or after May 13, 2015 and 14 years for applications filed prior to May 13, 2015.
1502.01
—Revised to indicate that an international design application designating various countries may be filed for design applications under the Hague Agreement. —Revised to remove prior references to the effective date of changes to continued prosecution applications in design applications. —Revised section title and text to indicate that this section is directed to design applications filed under 35 U.S.C. chapter 16.
1503
—Revised to update 37 CFR 1.154 and to limit the applicability of form paragraph 15.05 to design applications filed under 35 U.S.C. chapter 16.
1503.01
—Subsection I revised to indicate that the title may contribute to defining the scope of the claim, and to delete text pertaining to objecting to the title when it does not correspond to the claim. —Subsection I further revised to indicate that the practice set forth in this section regarding the title of the design is generally applicable to international design applications designating the United States. Updated form paragraph 15.05.01. —In subsection II, item (A)(4), replaced "environmental use" with "intended use." Subsection II further revised to add form paragraph 15.61.01. —Subsection III revised to indicate that the form and content of the claim in an international design application is set forth in 37 CFR 1.1025 and mirrors 37 CFR 1.153. Revised form paragraphs 15.62 and 15.63 to include reference to 37 CFR 1.1025. —Revised form paragraph 15.05.03 for clarity.1503.02 —Subsection I revised to remove the indication that the basis for an objection pertaining to sectional views is 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph. —Subsection II revised to delete form paragraph 15.49 pertaining to surface shading. —In subsection III, revised form paragraphs pertaining to the use of broken lines, and deleted form paragraph 15.50.03. —Subsection V revised for consistency with 37 CFR 1.84(a) as amended in the Hague implementation rule to indicate that color drawings are permitted in design applications, and that one set of color drawings is required if submitted via the Office electronic filing system or three sets of color drawings are required if not submitted via the Office electronic filing system. Deleted references to petitions to accept color drawings in design applications and revised form paragraphs pertaining to color drawings or photographs. —Added cross-reference to MPEP § 401 and updated form paragraph 15.66 with regard to how to obtain a list of registered patent practitioners.
1504
—Revised to update 35 U.S.C. 171.1504.01 —Revised form paragraph 15.07.01 and inserted form paragraphs 15.42 and 15.43.
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—Revised subsection I.B to remove certain references to 37 CFR 1.71, 1.84, and 1.152-1.154 where the provisions discussed are also applicable to international design applications, and added cross-references to rules specific to international design applications where appropriate.
1504.01(a)
—Subsection II revised to add citation of In re Jung, 98 USPQ2d 1174 (Fed. Cir. 2011).1504.01(c) —Subsection V revised to add cross-reference to MPEP § 716.03(b) and to add a citation to, and discussion of, In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) regarding submission of evidence of commercial success. —Subsection V further revised to indicate that the requirement that the design was created for the 'purpose of ornamenting' must be met with appropriate evidence concerning visibility for a rejection under 35 U.S.C. 171 to be overcome if the design would be hidden during its end use and to cite In re Webb, 916 F.2d 1553 (Fed. Cir. 1990). —Revised to change form paragraph cross-reference to "15.09.01".1504.01(e) —Revised to delete text of 35 U.S.C. 172.1504.02 —Revised to remove discussion of In re Bartlett with regard to the standard for determining novelty. —Revised to include references to Door Master Corp. v. Yorktowne, Inc., 256 F.3d 1308 (Fed. Cir. 2001), International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009), Egyptian Goddess Inc. v. Swissa Inc., 543 F.3d 665 (Fed. Cir. 2008) ( en banc), Richardson v. Stanley Works Inc., 93 USPQ2d 1937 (Fed. Cir. 2010), and Amini Innovation
Corp. v. Anthony California Inc., 439 F.3d 1365 (Fed. Cir. 2006) with regard to the "ordinary observer" test for anticipation. Further revised to expand discussion of In re Glavas, 230 F.2d 447 (CCPA 1956). —Revised to clarify that registration of a design abroad is considered to be equivalent to patenting for priority purposes under 35 U.S.C. 119(a) - (d) and for prior art purposes pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published. —Revised form paragraphs. —Revised to update 35 U.S.C. 103, and to indicate that any reference to 35 U.S.C. 103 is equally applicable to pre-AIA 35 U.S.C. 103(a), unless otherwise noted.
1504.03
—Added form paragraph 15.19.02.aia and revised examiner note 8 of form paragraph 15.19.02.fti to reference benefit claims under 35 U.S.C. 368(c). —Revised subsection I.D to add citation to MRC Innovations, Inc. v. Hunter Mfg., LLP, 110 USPQ2d 1235 (Fed. Cir. 2014); and Crocs Inc. v. International Trade Commission, 93 USPQ2d 1777 (Fed. Cir. 2010). —Revised subsection II.A.2 title to read "Nonanalogous Art." —In subsection III, revised numerous form paragraphs related to obviousness rejections. —Revised to delete reproduction of pre-AIA 35 U.S.C. 112.1504.04 —Revised form paragraph 15.20.02 to indicate that it is applicable only to design applications filed under 35 U.S.C. chapter 16 and to delete the suggestion that applicant submit large, clear informal drawings in response to a rejection under 35 U.S.C. 112. Also revised form paragraph 15.21.01. —Revised to correctly state that the issue of whether a search and examination of an entire application can be made without a serious burden to the examiner does not apply to design applications.
1504.05
—Subsection III revised to clarify that clear admission on the record by the applicant, on its own, that the embodiments are not patentably distinct (as noted in MPEP § 809.02(a)) will not overcome a requirement for restriction if the embodiments do not have overall appearances that are basically the same as each other.
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—In subsection III, revised guidance as to the handling of applications which are in condition for allowance except for the presence of withdrawn claims so as to be consistent with MPEP § 821.01. —Revised to indicate that indicate that a double patenting rejection based on 35 U.S.C. 171 is a "statutory" double patenting rejection.
1504.06
—Revised the discussion of nonstatutory double patenting for consistency with MPEP § 804. —Revised to specify the conditions under which a double patenting rejection would be appropriate for consistency with MPEP § 804. Further revised to add citation to MPEP § 1490 for situations when a provisional double patenting rejection is the only rejection remaining in an application. —In subsection II, added explanation that a double patenting rejection also serves public policy when it prevents the possibility of multiple suits against an accused infringer by different assignees. —Subsection II revised to indicate that a nonstatutory double patenting rejection "may only be necessary" (rather than "should only be given") if the reference patent issued less than a year before the filing date of the application, and to clarify that a terminal disclaimer may obviate a nonstatutory double patenting rejection. —Subsection II further revised to replace "obviousness-type" double patenting with "nonstatutory" double patenting, and to replace "one-way obviousness" with "one-way distinctness" for consistency with MPEP § 804 and current terminology. Conforming revisions made to the form paragraphs. —Updated 35 U.S.C. 172. Revised text to indicate that for design applications filed on or after May 13, 2015, a claim for priority may be made to an international design application pursuant to the PLTIA.
1504.10
—Revised to add text explaining that under certain conditions, a right of priority to a foreign application may be restored if the U.S. design application is filed within two months of the expiration of the six-month period specified in 35 U.S.C. 172. —Revised form paragraphs 15.01, 15.01.01, 15.02, 15.03 for consistency with 37 CFR 1.55 as set forth in the Hague implementation rules. —Updated 35 U.S.C. 120. Revised text for consistency with 37 CFR 1.78(d) as amended in the Hague implementation rule to add a more detailed description of the requirements for a proper benefit claim.
1504.20
—Revised to add a discussion of how to delete or change a benefit claim, the impact of changing the relationship of an application from a continuation or divisional application to a continuation-in-part application, and the definition of a continuation-in-part application. Added an explanation of when a continuation-in-part application is not entitled to the benefit of the filing date of the parent application. Deleted reference to applications filed prior to September 21, 2004. —Revised form paragraphs related to continuation-in-part applications, and added new form paragraph 15.74.01. —Revised discussion of pre-AIA 35 U.S.C. 102(d)/172. —Revised to add citation of Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 11 USPQ2d 1300 (Fed. Cir. 1989) and Vas-Cath Inc. v. Mahukar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991) and with regard to benefit claims in the design application-utility application context. Deleted citation of In re Chu. —Revised to update 37 CFR 1.155 and discussion thereof to indicate that expedited examination is available for international design applications designating the United States that have been published pursuant to Hague Agreement Article 10(3).
1504.30
—Revised to update procedures for filing a request for expedited processing in a design application or international design application designating the United States, and to set forth
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recommended practices to facilitate processing of a request. Added instructions for filing requests for expedited examination via EFS-Web. —Revised to update 35 U.S.C. 173 in accordance with the PLTIA.1505 —Revised subsection II to indicate that the examiner will not object to a copyright notice as extraneous when it is limited in print size from 1/8 to ¼ inch and placed within "sight" of the drawing immediately below the figure representing the copyright material.
1512
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CHAPTER 1700:
—Revised to indicate that Office personnel are only permitted to express an opinion on the validity or patentability of any claim of a patent to the extent necessary to carry out an examination of a
1701
reissue application of the patent, a supplemental examination proceeding or reexamination proceeding to reexamine the patent, an interference or derivation proceeding involving the patent, or an inter partes or post-grant review of the patent. —Revised section title to read "Restrictions on Current and Former Office Employees Regarding Patent Matters." Added text of 35 U.S.C. 4 and updated 37 CFR 11.10. Added paragraph discussing
1702
the inventor's oath or declaration when an Office employee is named as an inventor in a patent application. —Revised to update the description of The Official Gazette – Patents (eOG:P), including the website address, information on the various pages of the eOG:P, and the information provided for each patent
1703
issued on the eOG:P publication date. Revised to delete reference to the availability of paper copies of the Official Gazette, as the Official Gazette is now only available in electronic form. —Revised to delete reference to bar code readers as means to enter transactions into PALM (Patent Application Locating and Monitoring) System. Also revised to replace "accelerated" with "expedited" to be consistent with PALM examiner docket reports.
1704
—Revised to delete Form PTO-1472 Examiner's Case Action Worksheet and references thereto. Revised to provide update of how the Examiner's Time and Activity Report is generated, and to
1705
delete references to an examiner "count" and instead utilize "credit," consistent with the current examiner production system. —Added subsection numbers to the subsection titles. Updated list of items for which the examiner will receive a disposal credit to further include institution of a derivation proceeding. —Section removed and reserved.1711 —Revised to reflect current practice for forwarding Board decisions to the examiner.1720 —Revised to change the term preceding "Commissioner for Patent Examination Policy" from "Associate" to "Deputy," and to change the term following "Deputy Commissioner" from "for Patents" to "for Patent Operations."
1721
—In subsection II.B, updated information pertaining to the Patent Electronic Business Center (EBC). In subsection II.B.1(e), updated information pertaining to Assignments on the Web (AOTW). Added
1730
new subsection II.B.1(f) directed to the Global Patent Network and its utility for providing English language translations of a large subset of Chinese patent documents created by machine translation technology. In subsection II.B.2(a), added cross-reference to the EFS-Web Legal Framework. —In subsection III, updated the PCT Help Desk hours. —In subsection IV, updated information pertaining to the location of the main library of the Scientific and Technical Information Center. —In subsection V, limited the discussion of the list of attorneys and agents registered to practice before the Office to providing the website where the list is available. —In subsection VI.A, updated contact information for the Application Assistance Unit. In subsection VI.E, updated information pertaining to acquiring copies of patent documents from the Office of Public Records' Patent and Trademark Copy Fulfillment Branch. In subsection VI.F, added cross-reference to relevant information found in MPEP § 2570. In subsection VI.G, provided updated contact information for Assignment Recordation Services regarding filing assignments or other documents affecting title. In subsection VI.H, updated information pertaining to petitions administered by the Office of Petitions. In subsection VI.I, updated information regarding downloading the PatentIn software program or using PatentIn. Added cross-reference to relevant information found in MPEP § 2430.
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CHAPTER 1800:
—Deleted phrase "international applications filed on or after January 1, 2004" at each occurrence.
Passim
—Revised subsection I to change "designates or elects" to "designates."1801 —Revised subsection II to change "earlier filed national application" to "earlier-filed application" in discussion of "priority date" for timing purposes. Also changed "date of filing" to "date of receipt," and added citations to PCT Rules 14.1(c), 15.3 and 16.1(f). —Revised subsection III to add the Australian Patent Office (IP Australia), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), and the Japan Patent Office (JPO) as International Searching Authorities (ISAs) which applicants filing in the United States Receiving Office (RO/US) may choose. Added cross-reference to MPEP §§ 1840.01-1840.06 for further information regarding ISA/EP, ISA/KR, ISA/AU, ISA/RU, ISA/IL, and ISA/JP. —Subsection III further revised to indicate that copies of the international search report and prior art will be "made available" (rather than "sent") to the applicant by the ISA. Added sentence to subsection III to indicate that if a Demand for Chapter II examination is not timely filed, the International Bureau communicates a copy of the written opinion established by the ISA (retitled International Preliminary Report on Patentability (Chapter I of the PCT)) to each designated Office after the expiration of 30 months from the priority date. —Subsection IV revised to indicate the applicant may request, by checking a box on Form PCT/RO/101, for the International Bureau to obtain a copy of the priority document from a digital library if the priority document is registered in a digital library and made available to the International Bureau within the prescribed time limit, as set forth in PCT Rule 17.1(b- bis) and the access code is furnished to the International Bureau. Also revised to change "prepare the certified copy" to "transmit a copy of a prior application." —Subsection IV revised to indicate that, for international applications filed before July 1, 2014, former PCT Rule 44 ter provided that the written opinion of the ISA would not be made publicly available until the expiration of 30 months from the priority date, but that, for international applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by applicant will be made available to the public as of the publication date. Also changed "International Bureau transmits copies" to "International Bureau communicates copies." —Subsection V revised to indicate that at the time of MPEP publication, only three countries had not adopted Article 22(1) as amended: Luxembourg (LU), United Republic of Tanzania (TZ) and Uganda (UG), and to indicate applicant may desire to file the Demand by 19 months from the priority date to extend the national stage entry deadline in these three countries. Also revised to indicate Luxembourg is included in the regional designation "EPO" and the United Republic of Tanzania and Uganda are included in the regional designation "ARIPO." Also revised to indicate the IB forwards any statement explaining the basis for the Article 19 amendments to the IPEA with the Demand. —Section title revised to mention Notifications of Incompatibility. Deleted discussion of a reservation under PCT Article 64(4) relating to the prior art effective date of a U.S. patent
1803
issuing from an international application. Revised the indication that the USPTO "has taken a reservation on adherence to" specified PCT rules to instead indicate the USPTO "has made a notification of incompatibility with respect to" the specified rules. —Revised to change citation regarding who can file an international application from 37 CFR 1.421-1.423 to MPEP § 1806. Deleted indication that, for purposes of designating the
1805
United States of America, the applicant(s) must be the inventor(s), and that the RO/US is located in Arlington, VA. Added indication that international applications may be filed
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electronically through EFS-Web. Also revised to indicate any request to transfer the application to the International Bureau which is received after substantial processing of the international application by the RO/US has occurred may be declined. —New section added. Subsection I discusses applicants and inventors for international applications filed on or after September 16, 2012, and subsection II discusses applicants and inventors for international applications filed before September 16, 2012.
1806
—Includes information formerly in MPEP § 1820 concerning deceased inventors, and information formerly in MPEP § 1821 regarding applicants and inventors. —Revised to update PCT Rules 90.4(b) and (d). Added an indication that a Customer Number may be used in the international phase solely for purposes of viewing the international
1807
application in PAIR and added a cross-reference to new MPEP § 1809. Updated PCT Rules 90.5(b)-(d). Also updated to indicate that a separate power of attorney or copy of the general power of attorney may still be required in certain cases, e.g., where waiver could result in harm to an applicant as in the case of the removal of an applicant. —Updated to include the International Bureau as an alternative to the U.S. receiving Office when submitting a request to withdraw from representation as attorney or agent in an
1808
international application. Changed references to former 37 CFR 10.40 to instead reference 37 CFR 11.116. The requirement to notify the client of any replies that may be due and the time frame for reply was deleted. —New section added to address PAIR access to international applications.1809 —Updated 35 U.S.C. 363 and 37 CFR 1.431(b)(3)(iii), and deleted 35 U.S.C. 373. With respect to the applicability of PCT Rules 4.18 and 20.6, deleted two occurrences of "In applications filed on or after April 1, 2007."
1810
—Deleted a reference to former PCT Administrative Instructions Section 102 bis.1812 —Revised to delete the table listing the PCT Contracting States; added website addresses for updated lists of PCT Contracting States and information about regional patents that can be obtained via the PCT.
1817
—Section deleted. The content formerly in this section was moved to a new subsection VIII in MPEP § 1821.
1817.01
—Section relating to international applications filed before January 1, 2004, deleted.1817.01(a) —Section deleted. The content formerly in this section was moved new MPEP § 1828.02.1817.02 —Updated PCT Rule 4.15. Deleted discussion of the requirement for a separate signed power of attorney in international applications filed prior to January 1, 2004. Added information
1820
concerning handwritten signatures and S-signatures, and included a cross-reference to MPEP § 502.02, subsection II. Deleted discussions concerning an applicant/inventor unavailable or unwilling to sign and moved information concerning a deceased inventor to new MPEP § 1806. —This section has been reorganized into an introductory portion and subsections numbered I-VIII.
1821
—In the introductory portion, removed the discussion of PCT-EASY physical media and former PCT Administrative Instructions Section 102 bis and added a discussion of filing the PCT Request form in PCT-EASY.zip file format via EFS-Web and obtaining a reduction of the international filing fee. —In subsection II, added a cross-reference to new MPEP § 1828.02 for how to indicate the international application is a continuation or continuation-in-part of an earlier application. —In subsection V, added a cross-reference to new MPEP § 1806 for who can be applicant and moved the discussion of applicants and inventors to new MPEP § 1806. Deleted the
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indication that the check box "applicant only" must be marked where the applicant is a corporation or other legal entity. —Subsection VIII, entitled "Designation of States," is a new subsection directed to the content of former MPEP § 1817.01, "Designation of States in International Applications Having an International Filing Date On or After January 1, 2004." —Revised to update PCT Administrative Instructions Section 204.1823 —Revised to update an IB website address.1823.01 —Revised to update PCT Administrative Instructions Section 208. Added "(text)" after occurrences of "electronic form" to clarify the type of electronic form. Subsection I revised
1823.02
to explain that full compliance with the requirements of the U.S. rules will generally ensure compliance with the applicable PCT requirements, but the requirements of 37 CFR 1.821 through 37 CFR 1.825 are less stringent than the requirements of WIPO Standard ST.25. Revised to include cross-references to MPEP § 2422, subsection II, MPEP § 2422.03(a), subsection IV, and MPEP § 2422.07 for information specific to filing sequence listings in international applications. Revised to include a paragraph explaining the calculation of the international filing fee for an international application filed with a sequence listing in ASCII text and/or PDF. —Deleted the text of former subsection II. Added a new subsection II directed to the requirements for submitting tables related to sequence listings in international applications. —Revised to update PCT Administrative Instructions Section 205. Removed the indication that paragraph numbers (e.g., paragraph numbers complying with 37 CFR 1.52(b)(6)) are acceptable provided they are not placed in the margins.
1824
—Deleted indication that where tables cannot be presented satisfactorily in an upright position, they may be placed sideways.
1825
—Clarified that rectifications of obvious mistakes are not considered to be amendments, and that an amendment shall not go beyond the disclosure in the international application as filed. Added a cross-reference to PCT Article 34(2)(b). —Updated to indicate, if drawings are referred to in an international application but not found in the search copy file, examiners may consult with a Quality Assurance Specialist or with a PCT Special Program Examiner. —Revised to indicate the International Searching Authority establishes the abstract if the applicant fails to furnish an abstract within a time limit fixed in the invitation and to include a cross-reference to PCT Rule 38.
1826
—Also revised to indicate the applicant may propose modifications of, or comment on, the new abstract until the expiration of 1 month from the date of mailing of the international search report. —Revised to indicate for international applications filed in the RO/US after November 15, 2011, the transmittal fee includes a non-electronic filing fee portion for international applications filed in paper rather than by EFS-Web.
1827
—The reference to specific ISAs (KIPO and EPO) was replaced with broadened language that covers all of the possible ISAs.
1827.01
—Deleted reference to July 1, 1998 effective date regarding the time limit for adding or correcting a priority claim. Added a cross-reference to MPEP § 1859 for a withdrawal of a priority claim.
1828
—Added an indication that the request (Form PCT/RO/101) includes a box which can be checked to request that the receiving Office prepare the certified copy of a priority document; also added that applicant may request that the International Bureau obtain a copy of the priority application from a digital library and added a cross-reference to PCT Rule 17.1(b- bis).
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—Revised to indicate the transmission may be delayed or prevented when no inventor common to the priority application is named in the international application. —Revised to include 37 CFR 1.452, a reference to 37 CFR 1.17(m) for the requisite fee, and an indication the RO/US may decline to forward the international application to the
1828.01
International Bureau under PCT Rule 19.4(a)(iii) if substantial processing of the international application by the RO/US has occurred. —Revised to indicate that in the United States, a right of priority that has been restored under PCT Rule 26 bis.3 during the international stage will be effective in the U.S. national stage and added a cross-reference to MPEP § 1893.03(c). Further revised to include a reference to WIPO's website for a full listing of the national offices that will not accept the restoration of the right of priority in the national stage. —Revised to clarify that, regardless of the Rule 26 bis.3 and 49 ter.1(g) status of any particular Office, the priority date will still govern all PCT time limits, including the thirty-month period for filing national stage papers and fees under 37 CFR 1.495. —Revised to remove an example of a U.S. national stage application that was not entitled to a right of priority because the earlier-filed application was filed more than a year before the international filing date of the U.S. national stage application. —Revised to remove references to the versions of 35 U.S.C. 119(a) and 365(b) that were in effect prior to December 18, 2013. —New section directed to the content of former MPEP § 1817.02, "Continuation or Continuation-in-Part Indication in the Request."
1828.02
—Revised to update a website address.1830 —Revised to remove a reference to the PCT international application transmittal letter, Form PTO-1382.
1832
—Revised to update PCT Rule 92.2(a).1834 —Revised to delete references to telegraph and teleprinter from the section title and text of the section. Added an indication that facsimile transmission may be used to submit article 34 amendments.
1834.01
—Revised to delete PCT Rule 82.2 and replaced the cross-reference to PCT Rule 82.2 with a cross-reference to PCT Rule 82 quater. Further revised to include subsection numbers in the subsection titles.
1834.02
—Revised to update the list of States for which the USPTO agreed to conduct international searches and prepare international search reports and written opinions of the International Searching Authority.
1840
—Revised subsection III to delete indication that the United States International Searching Authority is the Examining Corps of the USPTO and to add indication that the Australian Patent Office (IP Australia), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), and the Japan Patent Office (JPO) are competent to carry out the international search for international applications filed with the RO/US. Subsection III further revised to add that the choice of the ISA must be made by the applicant on filing the international application, information which was previously in MPEP §§ 1840.01 and 1840.02. —Added information to subsection III regarding the amount of the international search fee and when the fee is due. Also added that if the selected ISA considers that the international application does not comply with the requirement of unity of invention, it may invite applicants to timely pay directly to it an additional search fee for each additional invention. —Section rewritten to explain that effective January 1, 2015, the EPO no longer has any limitations concerning its competency to act as an International Searching Authority, and to
1840.01
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explain the extent to which applications containing claims relating to business methods and subject matter set forth in PCT Rule 39.1 will be searched. —Moved the indication that the choice of the ISA must be made by the applicant on filing the international application from this section to MPEP § 1840. —Moved the indication that the choice of the ISA must be made by the applicant on filing the international application as well as information regarding the search fee and unity of invention previously in this section to MPEP § 1840.
1840.02
—Revised to include indication that that copies of documents cited in the international search report by the ISA/KR will be made available to applicant on the KIPO website within three months from the mailing of the international search report and that a fee may be required for request of the cited documents after the expiration of the three month period. —Added new section directed to the Australian Patent Office as an ISA.1840.03 —Added new section directed to the Federal Service for Intellectual Property (Rospatent) (Russian Federation) as an ISA.
1840.04
—Added new section directed to the Israel Patent Office (ILPO) as an ISA.1840.05 —Added new section directed to the Japan Patent Office (JPO) as an ISA.1840.06 —Revised to include new subsection V, entitled "Supplementary International Search (SIS)," and redesignated former subsections V and VI as VI and VII, respectively.
1842
—Revised to include an indication in subsection VII.A that at the time of publication of this Chapter, only three countries have not adopted Article 22(1) as amended: Luxembourg (LU), United Republic of Tanzania (TZ) and Uganda (UG). —Revised to indicate that Luxembourg is included in the regional designation "EPO" and that the United Republic of Tanzania and Uganda are included in the regional designation "ARIPO." —Revised to remove "[f]or international applications having an international filing date on or after January 1, 2004."
1843.04
—Revised to indicate that for international applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by the applicant are made available to the public in their original language as of the publication date.
1843.05
—Revised to remove a discussion of internal processing times in the Technology Centers and in the International Application Processing Division. —Revised to change "the relevant listings or related tables" to "the relevant listings."1844 —Revised subsection I.C to delete references to tables related to sequence listings. Subsection I.C further revised to clarify information regarding boxes 1a-1c and to add information regarding items 2-3 of Form PCT/ISA/210.
1844.01
—Revised subsection V to change "U.S. Classification" to "the patent classification as required by the ISA/US." —Revised subsection VI to include an indication that the USPTO in its capacity as the International Searching Authority makes a separate detailed search history of record in the applications and mails these search histories to applicants with the international search report. —Revised subsection VIII to delete an indication that the date of actual completion of the ISR is generated automatically by OACS. Replaced the example of Form PCT/ISA/210 with an example created using the January 2015 form. —Revised to remove "[f]or international applications having an international filing date on or after January 1, 2004."
1845
—Revised to replace "International Patent Classification and U.S. Classification" with "classifications."
1845.01
—Revised to change "electronic form" to "electronic form (text)" and "paper" to "paper/image."
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—Revised to change "sequence listing and/or tables relating thereto" to "sequence listing" and to delete information about tables that fail to comply with the technical requirements of Annex C of the Administrative Instructions. —Revised subsection I to delete an indication that the examiner must indicate the "type of material (i.e., a sequence listing and/or tables related thereto)." Further revised subsection I to include an indication that item 5 is available for providing any additional comments. —Revised subsection II to add "Quality Assurance Specialist or PCT" prior to "Special Program Examiner." —Revised to replace the example of Form PCT/ISA/237 with an example created using the July 2014 form. —Revised to change "Form PCT/ISA/101" to "Form PCT/RO/101."1845.02 —Revised replace the example of Form PCT/ISA/220 with an example created using the January 2015 form. —Section removed and reserved.1846 - 1847 —Revised the section title and text to delete references to tables related to sequence listings.1848 —Revised to include PCT Rules 13 ter.2 and 13 ter.3 and to update PCT Administrative Instructions Sections 513(d)-(f). —Revised to remove a paragraph directed to the filing of a sequence listing and/or any tables related thereto in the RO/US on CD-R or CD-ROM. —Revised subsection V to include IPAU, Rospatent, and ILPO. Also revised subsection V to indicate the additional search fee amounts can be found in Annex D of the Applicant's Guide (www.wipo.int/pct/en/appguide).
1850
—Revised to change "Special Program Examiners" to "Quality Assurance Specialists."1851 —Revised to replace tables listing information from WIPO Standard ST.16 with an explanation of what is included in Parts 7.3.1, 7.3.2, and 7.3.3 of WIPO Standard ST.16. —Revised to remove the table listing the two-letter country codes set forth in WIPO Standard ST.3 and updated the website address for WIPO Standard ST.3. —Revised to remove an indication that upon specific request and payment of the appropriate international type search report fee in a U.S. national nonprovisional application, that an international type search report Form PCT/ISA/201 will be prepared.
1852
—Revised to include a discussion of taking into account the earlier search results from a foreign Office. —Revised to update PCT Rule 46.5 and PCT Administrative Instructions Section 205 and to remove 37 CFR 1.415.
1853
—Revised to include an enhanced discussion of amendment practice before the International Bureau under PCT Article 19. —New section added entitled "Supplementary International Searches."1856 —Revised to update 35 U.S.C. 374.1857 —Revised to change "sends copies of published international applications" to "communicates published international applications." Further revised to replace a discussion of the USPTO receiving published international applications in printed form, on CD-ROM, and in other formats with an indication that published international applications are available from WIPO's Patentscope (www.wipo.int/patentscope/en/ ). —Revised to remove former Section 805 of the PCT Administrative Instructions and the discussion of sequence listings and/or tables filed in electronic format under former Part 8 of the PCT Administrative Instructions. —Revised to include an indication that sequence listings forming part of the international application may be filed in ASCII text (.txt) format and need not be filed in paper or PDF in addition to .txt format.
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—Revised to include an updated explanation of how to view and download the sequence listing parts of the description. —Section deleted.1857.01 —Revised to update PCT Rule 90 bis.5. Further revised to replace a discussion of an applicant inventor for the United States of America who cannot be found or reached with an indication
1859
that for international applications filed prior to January 1, 2013, applicants should see the version of PCT Rule 90 bis.5 in effect at that time. —Revised to include subsection numbers I and II in the subsection headings.1860 —Revised subsection I to include an indication that the examiner shall search at least to the point of bringing the previous search up to date and added a cross-reference to PCT Rule 66.1 ter. —Subsection I also revised to include an indication that any written opinion of IP Australia, Rospatent ILPO or JPO (in addition to any written opinion of the USPTO, EPO, or KIPO as had been previously indicated), will be treated as the first written opinion of the United States International Preliminary Examining Authority. —Section deleted.1860.01 —Revised to include a website address for the agreement between the USPTO and IB.1862 —Revised to include the Patent Prosecution Highway as an example of an acceleration program for which a positive international preliminary examination report might be used as a basis.
1864
—Revised to replace a cross-reference to MPEP § 1730 with a website address for obtaining copies of Form PCT/IPEA/401. —Revised to update PCT Rule 66.8 and 37 CFR 1.485 and to delete a reference to MPEP § 1871.01.
1864.01
—Revised to include an enhanced discussion of the filing of amendments under PCT Article 34. —Revised to delete "or teleprinter address."1864.02 —Revised to delete "on or after January 1, 2004."1864.03 —Revised to include a discussion of PCT Rule 54 with respect to when the demand must be filed.
1865
—Revised to include a cross-reference to MPEP § 1842, subsection VII.A for more information about when it may be necessary to file a demand before the expiration of 19 months from the priority date. —Revised to delete the addresses for the EPO and KIPO. —Revised to change the heading "Choice of Examining Authority" to "Choice of International Preliminary Examining Authority" and to provide enhanced guidance for choosing among IPEA/US, IPEA/KR, IPEA/RU, IPEA/EP, IPEA/AU, IPEA/IL, and IPEA/JP. —Revised to add an indication that Demands filed with the USPTO should preferably be filed via EFS-Web. Further revised to include an indication that courtesy copies of the Demand should not be filed with USPTO and to delete an indication that PCT Rule 59.3 was amended July 1, 1998. —Revised to replace the example of Form PCT/IPEA/401 with an updated example created using the July 2015 form. —Section deleted.1865.01 —Section removed and reserved.1866 —Revised to delete an indication that the amount of the handling fee is set out in the schedule of fees annexed to the PCT Regulations.
1867
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—Revised to remove the discussion of former 37 CFR 1.481(a) as it pertained to Demands filed prior to January 1, 2004. —Revised to indicate the Demand is considered as if it had been received on the actual filing date, i.e., the original date of receipt, "provided that the demand as submitted permitted the international application to be identified."
1868
—Revised to update PCT Rules 62.1 and 62.2 and to include PCT Rule 66.8.1871 —Revised to include an indication that a copy of any Article 19 amendments and accompanying documents will be provided to the IPEA by the International Bureau unless the IPEA has indicated that it has already received such a copy. —Revised the language to mention the statement referred to in PCT Article 19 and the letter required under PCT Rule 46.5(b). —Revised to indicate that when amendments are made under PCT Rule 66.8, the applicant shall be required to submit a replacement sheet for every sheet of the international application which, on account of an amendment, differs from the replaced sheet. Further revised to indicate that the replacement sheet or sheets shall be accompanied by a letter drawing attention to the differences between the replaced sheets and the replacement sheets, the basis for the amendments, and preferably explaining the reasons for the amendment. —Section deleted.1871.01 Updated to remove discussion of applications having an international filing date prior to January 1, 2004.
1874
Updated to remove discussion of applications having an international filing date prior to January 1, 2004.
1875
—Revised to include updated WIPO website address.1875.01 —Revised to clarify that with respect to an invitation to pay additional fees, the applicant may reply "directly to the International Preliminary Examining Authority issuing the invitation."
1875.02
—Revised to update PCT Administrative Instructions Section 607.1876 —Revised subsection II to change "examiner" to "International Preliminary Examining Authority."
1876.01
—Deleted subsection III, which had indicated that Form PCT/IPEA/412 must be signed by an examiner having at least partial signatory. —Revised to change two occurrences of "computer readable form" to "computer readable form (text)."
1877
—Revised to remove the note providing a cross-reference to former MPEP § 1878.01.1878 —Revised the introductory portion to include PCT Rule 66.1 ter and a discussion of top-up search procedures. Also revised to include an indication that since the IPEA/US will consider the written opinion of the ISA to be the first written opinion of the IPEA, item 1 of the cover sheet is marked accordingly and in item 2 of the cover sheet, the written opinion of the IPEA needs to be indicated as a second opinion. —Revised subsection I to update the discussion of the claims to reference "claim nos. or pages," to change "paper" to "paper/image," "electronic form" to "electronic form (text)," and to remove references to tables related to sequence listings. Also revised to include an indication that applicant's submission of a timely amendment to the claims alleged to be under Article 19 is accepted under Article 34 (not Article 19) unless the International Bureau has indicated the amendments were accepted under Article 19. Also revised to include an indication that the examiner must point out in item 4 if the amendments were not accompanied by a letter indicating the basis for the amendment in the application as filed. Also revised to add an indication that item 6 needs to be marked if the opinion is established taking into account
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the supplementary international search report(s) from the specified Supplementary International Searching Authority(ies) (SISA). —Revised subsection V to indicate the previous search should be brought up to date in all cases. Further revised to indicate that one copy of each newly cited foreign patent document and non-patent literature reference will be sent to the applicant and one copy will be retained for the application file. Further revised to change "Chapter II file" to "application file." —Section removed and reserved.1878.01 —Revised to update WIPO website address.1878.01(a) —Revised to update PCT Rule 66.8(a) and 37 CFR 1.485 and to delete PCT Rule 66.9.1878.02 —Revised to include an indication that the IPEA will consider a reply to the written opinion of the ISA if a Demand has been filed with the IPEA. —Revised the discussion of amendments to the claims, the description, and the drawings to include additional requirements with respect to the claims. More specifically, the discussion has been revised to include the requirement of PCT Rules 66.8(c) and 46.5(a) for a complete set of claims and the discussion has been revised to include the requirements set forth in PCT Rules 66.8(c) and 46.5(b) with respect to the letter accompanying the replacement sheets. —Revised to change "originally filed" to "originally filed/furnished," updated the discussion of the claims to reference "claim nos. or pages," changed "paper" to "paper/image," changed
1879
"electronic form" to "electronic form (text)," and removed references to tables related to sequence listings. —Revised to include an indication that the international preliminary examination report is otherwise known as International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty). —Revised to include a discussion of the requirement for a top-up search. —The first subsection heading was deleted and subsections II - X were renumbered as I - IX, resulting in subsection numbers I - VIII that correspond to Box Numbers I - VIII of Form PCT/IPEA/409. —Original subsection IV (renumbered as subsection III) was revised to include a new item (D), "no international search report has been established for the claims." —Original subsection X (renumbered as subsection IX) was revised to remove the discussion of Form PCT/IPEA/416. Further revised to move the information relating to information generated automatically by the OACS software from this subsection to a location preceding original subsection II (renumbered as subsection I), under a new heading "Form PCT/IPEA/409 Cover Sheet." —Original subsection X (renumbered as subsection IX) was further revised to include a discussion of what is required before annexes will be sent to the applicant and to the International Bureau, and what is required for annexes to be sent only to the International Bureau. —Revised to include an example of Form PCT/IPEA/416 preceding the example of Form PCT/IPEA/409, and the example of Form PCT/IPEA/409 was replaced with an updated example creating using the January 2015 form. —Revised to delete the note referencing former MPEP § 1879.01(a) for international applications filed prior to January 1, 2004.
1879.01
—Section deleted.1879.01(a) —Revised to indicate the international preliminary examination report and its annexes, if any, are transmitted to the applicant and the International Bureau using a Notification of
1879.02
Transmittal of International Preliminary Report on Patentability (Form PCT/IPEA/416). Also revised to change the requirement for Form PCT/RO/416 to be signed by a primary examiner
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to a requirement for the name of the authorized officer responsible for the international preliminary report to be indicated. —Revised to add Arabic, Korean and Portuguese to the list of languages in which the written opinion and the international preliminary examination report may be established.
1879.03
—Revised to delete PCT Rule 44 ter and to update 37 CFR 1.11 and 37 CFR 1.14.1879.04 —Revised to delete language regarding withdrawal of the demand or any election where an applicant/inventor for the United States could not be found or reached after diligent effort.
1880
—Revised to delete information regarding the storage of paper records by the Office of PCT Operations.
1881
—Revised to delete the text of 37 CFR 1.9 and to provide a cross-reference to 37 CFR 1.9 after the enumeration of the three types of U.S. national applications. Further revised to delete
1893
item (C), which contained cross-references to MPEP §§ 1895.01 and 1896 for special provisions that apply when the filing of an international application is taken into account in determining the patentability or validity of any application for patent or granted patent. —Revised to update 35 U.S.C. 371(c)(1), 35 U.S.C. 371(c)(4), and 37 CFR 1.491. Further revised to expand the discussion of 37 CFR 1.491(b) to clarify when entry into the national
1893.01
stage occurs for applications having an international filing date before September 16, 2012 and for international applications having an international filing date on or after September 16, 2012. —Revised to update 37 CFR 1.414(c)(2). Revised to move 37 CFR 1.495 and the discussion thereof from this section to MPEP § 1893.01(a)(1).
1893.01(a)
—Revised to include 37 CFR 1.495 and pre-AIA 37 CFR 1.495. Also revised to replace "To begin entry into the national stage " with "To avoid abandonment of an international application
1893.01(a)(1)
as to the United States," to replace "on or before" with "not later than the expiration of," and to replace "prior to" with "not later than the." —Revised to indicate it is preferable to file the required national stage items online using the EFS-Web system. —Revised to indicate the publication of an international application by the International Bureau within 30 months from the priority date is considered to satisfy the requirement of 37 CFR 1.495(b) for the USPTO to be furnished with a copy of the international application. —Revised to indicate that where the basic national fee has been paid and the copy of the international application (if required) has been received by expiration of 30 months from the priority date, but applicant has omitted any required item set forth in 37 CFR 1.495(c)(1), the Office will process the national stage application in accordance with the provisions of 37 CFR 1.495 in effect for that application. —Revised to explain that 37 CFR 1.495 was amended to permit postponement of the submission of the inventor's oath or declaration under certain conditions in national stage applications having an international filing date on or after September 16, 2012. —Revised to indicate that Article 19 amendments including a complete claim set in English will be entered and that Article 19 amendments filed before July 1, 2009 were not required
1893.01(a)(2)
to include a complete claim set. Further revised to include a website address where Form PTO-1390 can be found and to provide an indication that Form PTO-1390 includes a check box by which the applicant may expressly instruct the U.S. Designated/Elected Office not to enter the Article 19 amendment(s) in the United States national stage application. —Revised to include a website address where Form PTO-1390 can be found and to provide an indication that Form PTO-1390 includes a check box by which the applicant may expressly
1893.01(a)(3)
instruct the U.S. Designated/Elected Office not to enter the Article 34 amendment(s) in the United States national stage application.
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—Revised the discussion of substituting pages of the claims to discuss substituting pages "of the description or claims." —Section added to explain that for national stage applications having an international filing date on or after September 16, 2012, the applicant may be: (a) the inventor(s); (b) the legal
1893.01(b)
representative of a deceased or legally incapacitated inventor; (c) the assignee; (d) the obligated assignee (i.e., a person to whom the inventor is under an obligation to assign the invention); or (e) a person who otherwise shows proprietary interest in the application. —Revised to add an indication that the number of sheets of description for purposes of calculating the application size fee includes sequence listings in PDF, but not sequence listings
1893.01(c)
in .txt format. Further revised to delete discussion of tables related to sequence listings. Further revised to change the reference to 37 CFR 1.495(c)(3) to instead reference 37 CFR 1.495(c)(4). —Revised to change "after completion of the 35 U.S.C. 371 requirements for entry into the national stage" to "from the date the national stage is entered as set forth in 37 CFR 1.491."
1893.01(d)
—Changed the section title from "Oath/Declaration" to "Inventor's Oath or Declaration" and revised text to include 35 U.S.C. 371(c)(4) and a discussion thereof.
1893.01(e)
—Revised to include new subsection I, entitled "National Stage Applications Having An International Filing Date On Or After September 16, 2012." —Revised to include new subsection II, entitled "National Stage Applications Having An International Filing Date Before September 16, 2012." —Revised to delete the "CORRECTION OF INVENTORSHIP" heading and to reflect updated procedures for correcting inventorship, including an indication that effective September 16, 2012, the procedure set forth in 37 CFR 1.48(f) may be used to correct or update the name of an inventor in a nonprovisional application. —Revised to include a discussion of filing options when EFS-Web becomes unavailable and to include the website address of the USPTO's Legal Framework for EFS-Web.
1893.02
—Revised to remove a reference to discontinued Form PTO/SB/61/PCT. —Revised to update 37 CFR 1.496. Further revised to add a cross-reference to MPEP § 1893.01(a) for the date of entry into the national stage, and to provide an indication this date is commonly referred to as the "35 U.S.C. 371(c)" date.
1893.03
—Revised to add an indication that choosing the screen prompt "U.S. National Stage Under 35 U.S.C. 371" will serve to identify the submission as a national stage submission under 35 U.S.C. 371.
1893.03(a)
—Revised to delete the reference to 1077 O.G. 13 (14 April 1987). —Revised to include a new heading, "Conflicting Instructions" and to add a discussion of 37 CFR 1.495(g) indicating that for an application filed prior to September 16, 2012, an application submission containing conflicting instructions as to treatment under 35 U.S.C. 371 or 35 U.S.C. 111(a) was to be treated under 35 U.S.C. 111(a), but that for an application filed on or after September 16, 2012, such conflicting instructions will result in the application being treated as a national stage submission under 35 U.S.C. 371. —Revised to update 35 U.S.C. 363 by deleting "except as otherwise provided in section 102(e) of this title." Further revised to delete a reference to 37 CFR 1.496(a) and to provide
1893.03(b)
a description of the "371(c) date." Further revised to include a cross-reference to MPEP § 1893.01 for entry into the national stage. —Revised to include an indication that a Form PTO/DO/EO/903 in a national stage application having an international filing date prior to September 16, 2012 identifies the 371(c) date as the date of receipt of the 35 U.S.C. 371(c)(1), (c)(2), and (c)(4) requirements, and that a Form PTO/DO/EO/903 in a national stage application having with an international filing date on or after September 16, 2012 identifies the 371(c) date as the date of receipt of the 371(c)(1) and (c)(2) requirements.
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—Revised to delete an indication that for most legal purposes, the filing date is the PCT international filing date and to delete the exceptions to this general rule. —Revised to include an updated discussion of patent term adjustment under 35 U.S.C. 154(b)(1)(A)(i)(II) and to indicate that under the AIA Technical Corrections Act, the fourteen-month period in 35 U.S.C. 154(b)(1)(A)(i) for a national stage application is measured from the date of commencement of the national stage under 35 U.S.C. 371. —Subsection I was updated to include a discussion of petitions to accept delayed priority claims under 37 CFR 1.55(e) and petitions for restoration of the right of priority under 37
1893.03(c)
CFR 1.55(c). Subsection I further revised to add an indication that in U.S. national stage applications it is permissible, but not required, to present the claim for priority in an application data sheet. —Subsection II was updated to include a discussion of applicant satisfying the certified copy requirement of PCT Rule 17 by requesting the International Bureau to obtain the priority document from a digital library, to include an updated cover sheet example that makes reference to PCT Rule 17.1(b- bis), and to discuss some situations when the applicant will be unable to rely on the International Bureau to forward a copy of the priority document. —Subsection II was further revised to include updated instructions to examiners regarding what to do when a certified copy of the priority document is not in the national stage application file but applicant asserts that a certified copy of the priority document was timely furnished under PCT Rule 17. The instructions were previously found in MPEP § 1896. —Subsection III was revised to change references to MPEP § 201.11 to instead reference MPEP § 211 et seq. Further revised to include a discussion of restoration of the benefit of a provisional application under 37 CFR 1.78(b). Further revised to indicate the reference to a prior filed provisional application must be in an application data sheet for national stage applications having an international filing date on or after September 16, 2012, but that requirement will be satisfied by the presentation of the claim in the PCT Request form or by the presence of the claim on the front page of the published international application. —Revised to change "lack of unity of invention requirement" to "unity of invention requirement" and to change "the claims lack unity of invention" to "the claims do not meet
1893.03(d)
the unity of invention requirement." Added a WIPO website address and mention of the Patent Examiner's Toolkit for the International Search and Preliminary Examination Guidelines. Changed "lack unity of invention" to "do not meet the unity of invention requirement." —Changed "forwarded" to "communicated" and revised Subsection I to indicate that "The publication may also include other items as set forth in PCT Rule 48."
1893.03(e)
—Revised subsection II to remove an indication that a sample copy of PCT/DO/EO/903 is reproduced at the end of MPEP § 1893.03(a) and to remove the indication that with respect to annexes that have been entered, the National Stage Processing Division will write in pencil on any original sheet that it was replaced by an Article 34 amendment. —Revised the discussion to address supplementary international search reports under PCT Rule 45 bis.
1893.03(g)
—Revised to update the description of a "bypass application."1895 —Revised to indicate applications that are filed under 35 U.S.C. 111(a) and claim the benefit of the filing date of an international application which designates the United States are often
1895.01
referred to as "bypass" applications. Further revised to include an indication that the specific reference to the international application must be in an application data sheet for continuing applications having a filing date on or after September 16, 2012. Further revised to update cross-references to specific locations within 37 CFR 1.55, 37 CFR 1.78, and MPEP Chapter 200.
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—Revised to include references to the requirements of 37 CFR 1.55(h) and (i) and to include a discussion of restoration of the right of priority under 37 CFR 1.55(c). Pertaining to revisions made in the "Chart of Some Common Differences":1896 —For the filing date of national applications filed under 35 U.S.C. 111(a), the chart now indicates "see 37 CFR 1.53(b)." The row directed to the date the application was "filed in the United States" for prior art purposes under 35 U.S.C. 102(e) has been deleted. —Regarding claiming priority under 35 U.S.C. (a)-(d), the information for both 111(a) and 371 applications has been updated so it is consistent with revised 37 CFR 1.55. —The row that was directed to "Reference to Application in Declaration" has been deleted. —The row that was directed to "Copendency with International Application" has been deleted. Pertaining to revisions made in subsections I-VI:1896 —Revised subsection I to indicate "except as provided in 35 U.S.C. 111(c)." —Revised to delete subsection II, "Effective date as a reference," and to renumber former subsections III-V as II-IV. —Revised original subsection III (renumbered as subsection II) for consistency with revised 37 CFR 1.55 and to eliminate a discussion of the processing of paper copies of priority documents. —Revised original subsection III (renumbered as subsection II) to move to MPEP § 1893.03(c) the instructions about what to do when a certified copy of the priority document is not in the national stage application file but applicant asserts that a certified copy of the priority document was timely furnished under PCT Rule 17. —Revised original subsection IV (renumbered as subsection III) to delete "(which entered the national stage from international applications after compliance with 35 U.S.C. 371)" following "U.S. national stage applications" and to delete "(effective May 1, 1993)" after "1.499." —Original subsection VI, entitled "Reference to application in declaration," has been deleted.
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CHAPTER 2100 (November 2015):
—Revised title of subsection II to add the word "approaching" to clarify that the discussion therein pertains to prior art which teaches a range overlapping, approaching, or touching the claimed range.
2131.03
—Revised section title to read “Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.”
2144.05
—In subsection I, revised subsection title to read "Overlapping, Approaching, and Similar Ranges, Amounts, and Proportions." Added a quotation from Titanium Metals Corp. of America to the parenthetical that discusses the decision. Added citations to, and discussions of, Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997); In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955); In re Waite, 168 F.2d 104 (CCPA 1948); In re Scherl, 156 F.2d 72 (CCPA 1946); In re Swenson, 132 F.2d 1020 (CCPA 1942); In re Bergen, 120 F.2d 329 (CCPA 1941); In re Becket, 88 F.2d 684 (CCPA 1937); In re Dreyfus, 73 F.2d 931 (CCPA 1934); In re
Lilienfeld, 67 F.2d 920 (CCPA 1933); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. Appx. 906 (Fed. Cir. 2014); and Gentiluomo v. Brunswick Bowling and Billiards Corp., 36 Fed. Appx. 433 (Fed. Cir. 2002) (non-precedential). —In subsection II, revised subsection title to read "Routine Optimization." —In subsection II.A, added citations to, and discussions of, Smith v. Nichols, 88 U.S. 112 (1874); In re Williams, 36 F.2d 436 (CCPA 1929); and KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398
(2007). —In subsection II.B, revised subsection title to read “There is a Motivation to Optimize Result-Effective Variables,” revised the explanation of In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); deleted the citation to, and explanation of, In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA); and added a citation to, and explanation of, KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). —In subsection III, added subsection heading "A. Showing That the Change is Critical" at the beginning of the subsection and added subsection heading "B. Showing That the Prior Art Teaches Away" preceding the final two paragraphs of subsection III. —In subsection III.A, added citations to, and explanations of, Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 (1916); In re Scherl; In re Becket; In re Lilienfeld; and In re Wells, 56 F.2d 674 (CCPA 1932). —In subsection II, clarified the explanation of Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 114 USPQ2d 1349 (Fed. Cir. 2015).
2161
—In subsection I, added a quotation from Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559 43 USPQ2d 1398,(Fed. Cir. 1997) in a parenthetical following the case citation.
2161.01
—In subsection III, expanded the explanation of MagSil Corp. v. Hitachi Global Storage Technologies, Inc., 687 F.3d 1377, 103 USPQ2d 1769 (Fed. Cir. 2012). Also revised parenthetical describing Convolve, Inc. v. Compaq Computer Corp., 527 F.App’x 910 (Fed. Cir. 2013) to explain that the decision affirmed a grant of summary judgment of invalidity due to lack of enablement. —Revised subsection I.A to add cross-references to MPEP § 2106 for guidance on subject matter eligibility of claims directed to genes or other biomolecule sequences.
2163
—In subsection II.A, in the second paragraph, added a citation to, and explanation of, Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007). In subsection II.A.1, first paragraph, clarified the parenthetical describing In re Katz Interactive Call Processing Patent Litigation. —In subsection II.A.3(a), replaced the example that followed the citation to Enzo Biochem, 323 F.3d at 964, 63 USPQ2d at 1613 with an expanded discussion of the Enzo Biochem decision. Also revised to clarify that the antibody at issue in Noelle v. Lederman was an unknown antibody,
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and that the antigen in Centocor Ortho Biotech, Inc. v. Abbott Laboratories was characterized in the prior art. —Revised to provide the full citation for Williamson v. Citrix Online, LLC, 792 F.3d 1339, 115 USPQ2d 1105 (Fed. Cir. 2015) and corrected the year in the citation to Watts v. XL Systems, Inc.
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CHAPTER 2100 (October 2015):
Corrected reproduced 35 U.S.C. 103 (pre-AIA) by removing "of this title."Passim —In subsection I.C, corrected the citation of Griffin v. Bertina.2103 —In subsection III.A, added discussion of and citations to Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 110 USPQ2d 1976 (2014) and Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012). Deleted discussion of and citations to Rubber Tip Pencil Co. v. Howard and Mackay Radio & Telegraph Co. Modified the discussion of Bilski v. Kappos to remind examiners that software and business methods are not excluded categories of subject matter. Deleted the cross-reference to MPEP § 2106.01. Modified the cross-reference to MPEP § 2107 to clarify that utility is a separate requirement from eligibility under 35 U.S.C. 101. —In subsection IV.A, in the third paragraph, clarified that the scope of a "means" limitation is defined by the inventor in the written description and equivalents thereof that perform the claimed function. —Revised to state that 35 U.S.C. 101 has four requirements. Added as a requirement that the inventor(s) must be the applicant in an application filed before September 16, 2012, and that
2104
the inventor or each joint inventor must be identified in an application filed on or after September 16, 2012. Added cross-reference to MPEP § 2137.01 for a detailed discussion of inventorship. Further added explanation that failure to identify the inventor(s) in an application filed on or after September 16, 2012 is a basis for a rejection under 35 U.S.C. 101 and 115. —Modified to include subsection headings. Revised and reorganized to set forth policies and procedures consistent with 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
2105
FR 74618 (December 16, 2014), 1410 OG 50 (January 6, 2015) and an Office memorandum "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," signed June 25, 2014. For example, added more explanation pertaining to the holding and scope of the Chakrabarty opinion and an explanation of and citation to In re Roslin Institute (Edinburgh), 750 F.3d 1333, 110 USPQ2d 1668 (Fed. Cir. 2014). —Revised to set forth policies and procedures consistent with 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 FR 74618 (December 16, 2014), 1410 OG 50 (January 6, 2015)
2106
and an Office memorandum "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," signed June 25, 2014. —In subsection I, revised the list of non-limiting examples of claims that are not directed to one of the statutory categories to delete "a naturally occurring organism …" and to add "data per se" with a citation to Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 111 USPQ2d 1717 (Fed. Cir. 2014). —Subsection II revised to include citations to Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 110 USPQ2d 1976 (2014); Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012); and the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 FR 74618 (Dec. 16, 2014) and related materials available on the USPTO website. —In subsection II, added the subheading "Analysis of Subject Matter Eligibility" and an explanation that if a claim is directed to a judicial exception, it must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination, are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself. Deleted the citation to Ultramercial v. Hulu, 657 F.3d 1323 (Fed. Cir. 2011) and deleted the analysis previously set forth in subsections II.A and II.B in their entirety. Added an explanation that the 2014 Interim Guidance on Patent Subject Matter Eligibility and related
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materials provide a detailed discussion of the analysis required to determine whether a claim is directed to patent-eligible subject matter. —In subsection III, changed "physical phenomenon" to "natural phenomenon" and "a practical application of an abstract idea" to "significantly more than an abstract idea." Additional changes made to improve readability. —Section removed and reserved.2106.01 —Revised to state that 35 U.S.C. 101 has four requirements. Added as a requirement that the inventor(s) must be the applicant in an application filed before September 16, 2012, and that
2107.01
the inventors must be identified in an application filed on or after September 16, 2012. Added cross-reference to MPEP § 2137.01 for a detailed discussion of inventorship. —Added a supporting citation to In re Suitco Surface, Inc., 603 F.3d 1255, 1259, 94 USPQ2d 1640, 1643 (Fed. Cir. 2010).
2111
—Added a new paragraph to clarify the differences between claim interpretation made during examination and court proceedings, including supporting citations to In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) and In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1321-22 (Fed. Cir. 1989). —Revised text to clarify that the broadest reasonable interpretation must be consistent with the ordinary and customary meaning of the term (unless there is an explicit special definition) as used in the specification and drawings. —In subsection I, deleted the first two sentences of the third paragraph that discussed broadest reasonable construction and moved the references to In re Zletz, 893 F.2d 319, 13 USPQ2d
2111.01
1320 (Fed. Cir. 1989) and Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 69 USPQ2d 1857 (Fed. Cir. 2004) to the first paragraph. —In subsection II, corrected a citation of 35 U.S.C. 112(a) to 112(f) and clarified that the structure, material or acts corresponding to the function should determine the meaning of the claim limitation. In subsection IV, revised text to clarify that applicant must set forth any special definitions "in the specification at the time of filing." Deleted the reference to In re Weiss, 989 F.2d 1202 (Fed. Cir. 1993). —In subsection III, deleted text following the citation to, and explanation of, Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 67 USPQ2d 1132 (Fed. Cir. 2003), except for the citation to Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 39 USPQ2d 1573 (Fed. Cir. 1996). Added references to In re Abbott Diabetes Care Inc., 696 F.3d 1142, 104 USPQ2d 1337 (Fed. Cir. 2012); In re Suitco Surface, Inc., 603 F.3d 1255, 1260-61, 94 USPQ2d 1640, 1644 (Fed. Cir. 2010); and 3M Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 107 USPQ2d 1717 (Fed. Cir. 2013). —Revised title of subsection IV to read "Applicant May Be Own Lexicographer and/or May Disavow Claim Scope." Added paragraph explaining that the only exceptions to giving the words in a claim their ordinary and customary meaning in the art are (1) when the applicant acts as his own lexicographer; and (2) when the applicant disavows or disclaims the full scope of a claim term in the specification. Included supporting references to Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); Starhome GMBH v. AT&T Mobility LLC, 743 F.3d 849, 109 USPQ2d 1885 (Fed. Cir. 2014); and Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 101 USPQ2d 1457 (Fed. Cir. 2012). —In subsection IV, added new subsection heading "A. Lexicography" and revised text therein to add a discussion of Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 78 USPQ2d 1705 (Fed. Cir. 2006) and to clarify the explanation of Merck & Co. v. Teva Pharms. USA, Inc. —In subsection IV, added new subsection "B. Disavowal" to clarify disavowal or disclaimer of claim scope and to add citations to and explanations of SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed.Cir.2001); In re Am. Acad. Of Sci. Tech Ctr.,
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367 F.3d 1359 (Fed. Cir. 2004); and In re Abbott Diabetes Care Inc., 696 F.3d 1142, 104 USPQ2d 1337 (Fed. Cir. 2012). —Added new subsection V, including a flowchart to assist the examiner in proper claim interpretation decisions. —Added an explanation of, and citation to, In re Giannelli, 739 F.3d 1375, 109 USPQ2d 1333 (Fed. Cir. 2014) and moved the parenthetical quoting Minton v. Nat'l Ass'n of Securities Dealers, Inc., to the end of the last sentence.
2111.04
—Revised the titles of subsections I, I.A, and II to clarify that the functional relationship discussed is between printed matter and an associated product (or process).
2111.05
—In subsection III, added that a claim directed to computer readable medium storing instructions or executable code that recites an abstract idea must be evaluated under 35 U.S.C. 101. —In subsection II, added a citation to, and explanation of, In re Omeprazole Patent Litigation, 483 F.3d 1364, 82 USPQ2d 1643 (Fed. Cir. 2007).
2112
—In subsection IV, deleted the citation to, quote to, and explanation of, In re Robertson, 169 F.3d 743 (Fed. Cir. 1999). —Revised the title of subsection V to clarify that the burden of production shifts to the applicant when the examiner presents evidence or reasoning showing inherency, and added an additional citation to In re Best, 562 F.2d 1252 (CCPA 1977) in the first paragraph. —In subsection II, moved the citation to In re Spada, 911 F.2d 605 (Fed. Cir. 1990) to after the first sentence.
2112.01
—In subsection III, expanded the discussion of In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004) and added citations to, and explanation of, In re Miller, 418 F.2d 1392 (CCPA 1969); In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947); In re Xiao, 462 Fed. Appx. 947 (Fed. Cir. 2011); and In re Bryan, 323 Fed. Appx. 898 (Fed. Cir. 2009) regarding printed matter. Also, added an explanation of, and citations to, King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 95 USPQ2d 1833 (2010) and In re Kao, 639 F.3d 1057, 98 USPQ2d 1799 (Fed. Cir. 2011) pertaining to "instruction" limitations in method claims. —Revised to number the subsections "I" and "II," and in subsection II, added "obviousness" before "rejection of claims 2-5 and 7-10."
2112.02
—Revised title of subsection I to clarify that the text therein discusses inherency and functional limitations in apparatus claims. Subsection I further revised the discussion of In re Schreiber,
2114
explaining that to establish a prima facie case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. Added supporting citations to Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629,100 USPQ2d 1433 (Fed. Cir. 2011) and In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971). —Quotation from Hewlett-Packard Co. v. Bausch & Lomb Inc. moved from subsection I to subsection II. —In subsection III, deleted the citation to In re Ruskin, 347 F.2d 843 (CCPA 1965). —In subsection IV added references to In re Translogic Technology, Inc., 504 F.3d 1249, 84 USPQ2d 1929 (Fed. Cir. 2007); Intel Corp. v. U.S. Int'l Trade Comm'n, 846 F.2d 821, 20 USPQ2d 1161 (Fed. Cir. 1991); Nazomi Communications, Inc. v. Nokia Corp., 739 F.3d 1339, 109 USPQ2d 1258 (Fed Cir. 2014); and Intel Corp. v. U.S. Int'l Trade Comm’n, 846 F.2d 821, 20 USPQ2d 1161 (Fed. Cir. 1991). —Revised the explanation of In re Otto, 312 F.2d 937 (CCPA 1963), including adding a new paragraph describing the claimed invention. Deleted the last sentence pertaining to the application of the discussed cases to product or kit claims.
2115
—Section removed and reserved.2116 —In subsection II.A, corrected the citation of 35 U.S.C. 102(a)(2) to 35 U.S.C. 102(a)(1).2127
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—In subsection IV, correct the quotation from footnote 4 in In re Klopfenstein at 380 F.3d, 1345, 1349. Added a citation to Diomed, Inc. v. Angiodynamics, 450 F.Supp.2d 130 (D. Mass.
2128.01
2006), wherein the court held that a video that accompanied oral presentations was not a printed publication. Moved text regarding oral presentations being prior art under 35 U.S.C. 102(a)(1) and the cross-reference to MPEP § 2125.02(e) to the last paragraph. —Replaced "Express Mail" with "Priority Mail Express®."2133 —Revised text in first two paragraphs to clarify the inventorship requirement for both AIA and pre-AIA applications. Changed cross-references to MPEP § 602.01(c) and MPEP § 706.03(a).
2137.01
—Corrected pre-AIA 35 U.S.C. 103 by deleting "of this title."2141 —Corrected the spelling of In re Lintner.2142 and
2144 —In subsection II.A.4(a), deleted the parenthetical about Baird, and in subsection II.A.4(d), corrected the spelling of In re Lintner.
2144.08
—Updated 37 CFR 1.130(d).2155 —Removed Editor Note, added cross references to MPEP § 602.01(c) et seq. and MPEP § 706.03(a), and added text to clarify that a rejection under pre-AIA 35 U.S.C. 102(f) should be
2157
not made if the application is subject to the first inventor to file provisions of the AIA and to cross-reference MPEP §§ 2159 and 2137. —Updated the website address for the Office's KSR training materials.2158 —In subsection II, added a citation to, and discussion of, Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 114 USPQ2d 1349 (Fed. Cir. 2015).
2161
—Revised the first paragraph to limit the cross-references to other MPEP sections to those necessary in the context of the subject matter of this section.
2161.01
—In subsection I, added a citation to LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 76 USPQ2d 1724 (Fed. Cir. 2005), reorganized the discussion of Ariad, and deleted the citation and discussion of In re Hayes Microcomputer Prods., Inc. Also, added new text at the end of subsection I to clarify that rejections under 35 U.S.C. 112(b) may be made in addition to a written description rejection, and included a supporting citation to In re Donaldson Co., 16 F.3d 1189,29 USPQ2d 1845 (Fed. Cir. 1994). —In subsection III, added citations to, and discussion of, Magsil Corp. v. Hitachi Global Storage Technologies, 687 F.3d 1377, 103 USPQ2d 1769 (Fed. Cir. 2012) and Convolve, Inc. v. Compaq Computer Corp., 527 F.App'x 910 (Fed. Cir. 2013). —In subsection I, added a citation to Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 94 USPQ2d 1161 (Fed. Cir. 2010) as additional support for the statement that the written description requirement is separate and distinct from the enablement requirement.
2163
—In the text preceding subsection I.A, deleted text that discussed new matter issues (such issues are discussed in more detail in subsection I.B) and deleted redundant text pertaining the question of adequate written description when a "claim limitation has been added or removed" in a new or amended claim. —In subsections I.A and II.A, deleted "strong" before presumption to more accurately reflect the supporting court citation. —In subsection II.A, added text to clarify that to make a prima facie case the examiner must point out the claim limitations that are not adequately supported and explain any other reasons the claim is not fully supported, including supporting citations to Hyatt v. Dudas, 492 F.3d 1365, 83 USPQ2d 1373 (Fed. Cir. 2007) and Stored Value Solutions, Inc. v. Card Activation Technologies, 499 Fed.App'x 5 (Fed. Cir. 2012). Also added a citation to AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014)
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as additional support for the statement that whether the written description requirement is satisfied is a question of fact. —In subsection II.A.1, added a citation to In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 97 USPQ2d 1737 (Fed. Cir. 2011). In subsection II.A.2, added a new last sentence to clarify that sufficient information must be provided to show that the inventor had possession of the invention as claimed. —In subsection II.A.3(a), deleted the citation to Fonar Corp. v. Gen. Elec. Co., and added references to Centocor Ortho Biotech, Inc. v. Abbott Laboratories, 636 F.3d 1341, 97 USPQ2d 1870 (Fed. Cir. 2011); Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 86 USPQ2d 1235 (Fed. Cir. 2008); Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 53 USPQ2d 1225 (Fed. Cir. 1999); and Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 83 USPQ2d 1118 (Fed. Cir. 2007). Also, added new text to clarify that when rejections under 35 U.S.C. 112(b) are made for means (or step) plus function claims based on failure of the specification to disclose sufficient corresponding structure, materials, or acts that perform the claimed function, a rejection for lack of adequate written description should also be made. —In subsection II.A.3(a)(i), in paragraph (C)(2), limited the example to the biotech art because the discussion therein regarding a structure-function correlation would not necessarily apply to other arts, such as some computer-related arts. Deleted citations to Fonar Corp. v. Gen. Elec. Co. and In re Hayes Microcomputer Prod., Inc. Patent Litigation. In subsection II.A.3(a)(ii), added citations to and explanation of AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014). Deleted the statement that what constitutes a representative number is an inverse function of the skill and knowledge in the art. —In the title of subsection II.A.3(b), changed "365(c)" to "365" and added "386" to address priority/benefit claims to international design applications. —Deleted the references to Regents of the Univ. of Cal. V. Eli Lilly, 119 F.3d 1559 (Fed. Cir. 1997) and In re Wertheim, 541 F.2d 257 (CCPA 1976). Added new subsections V. Original
2163.03
Claim not Sufficiently Described, and VI. Indefiniteness Rejection of a Means- (or Step-) Plus-Function Limitation. —In subsection I.B, added a citation to AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014). In subsection II, added a citation to Rozbicki v. Chiang, 590 Fed.App'x 990 (Fed. Cir. 2014).
2163.05
—In subsection I, added a new first paragraph discussing MagSil Corp. v. Hitachi Global Storage Technologies Inc., 103 USPQ2d 1769 (Fed. Cir. 2012) and Auto. Techs. Intl, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007).
2164.06(a)
—In subsection II, added text to clarify that programmed steps, algorithms or procedures that the computer performs to accomplish a claimed function can be described in any way that would be understood by one of ordinary skill in the art.
2164.06(c)
—In subsection I, added discussion of In re Bigio, 381 F.3d 1320, 72 USPQ2d 1209 (Fed. Cir. 2004).
2173.01
—In subsection I, revised subsection title and added discussions of and citations to Nautilus, Inc. v. Biosig Instruments, Inc., 527 U.S. __, 110 USPQ2d 1688 (2014); In re Packard, 751
2173.02
F.3d 1307, 110 USPQ2d 1785 (Fed. Cir. 2014); In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007); In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984); and In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989). Also, added a cross reference to MPEP § 2111 et seq. —In subsection I, deleted citations to Ex parte Miyazaki, 89 USPQ2d 1207, 1212 (Bd. Pat. App. & Int. 2008); In re Am. Acad. Of Sci. Tech Center, 367 F.3d 1359 (Fed. Cir. 2004); Exxon
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Research and Eng'g Co. v. United States, 265 F.3d 1371 (Fed. Cir. 2001), and Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354 (Fed. Cir. 2004). —Subsection II revised to add the court's analysis in In re Packard of the particularity and distinctness requirement for claims as set forth in 35 U.S.C. 112(b). Deleted citation of Orthokinetics Inc. v. Safety Travel Chairs, Inc. Also deleted citation to and explanation of Bancorp Services, L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367 (Fed. Cir. 2004) and the
discussion of the test for definiteness from the final paragraph of subsection II. —In subsection III.A, added "prima facie" before "indefinite" in the first paragraph. In subsection III.B, added citation to In re Packard in the context of making an indefiniteness rejection final and responding to indefiniteness rejections, and deleted reference to In re Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009). Subsection III.B further revised to clarify that applicants should respond to rejections by explaining that claim language would be recognized by a person of ordinary skill in the art as definite, and that examiners are encouraged to suggestion changes to the claims to improve clarity or precision. —Deleted reference to Bancorp Services, L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367 (Fed. Cir. 2004).
2173.03
—Deleted reference to Ultimax Cement Mfg. v. CTS Cement Mfg., 587 F.3d 1339 (Fed. Cir. 2010) and inserted a citation to In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA
2173.04
1970) with text explaining that a broad claim is not indefinite merely because it encompasses a wide scope if it is clearly defined. —In subsections I and II, added citations to, and discussion of, In re Packard, 751 F.3d 1307, 110 USPQ2d 1785 (Fed. Cir. 2014).
2173.05(a)
—In subsection II, deleted citations to, and discussion of, Shatterproof Glass Corp. v. Libbey Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985) and Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986). —In subsection I, added "[t]erms of degree are not necessarily indefinite" as the first sentence, and added citations to, and explanation of, Eibel Process Co. v. Minnesota & Ontario Paper
2173.05(b)
Co., 261 U.S. 45 (1923); Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 112 USPQ2d 1188 (Fed. Cir. 2014); and Ex parte Oetiker, 23 USPQ2d 1641 (Bd. Pat. App. & Inter. 1992). Deleted the citations to Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007); and Exxon Research and Eng'g Co. v. United States, 265 F.3d 1371, 60 USPQ2d 1272 (Fed. Cir. 2001). —In subsection II, moved former subsections II.A through II.E to new subsections III.A through III.E. Deleted subsection II.F and moved the discussion of Ex parte Oetiker to subsection I, the citation of Ex parte Anderson to subsection III, and the citation of Ex parte Caldwell to MPEP 2173.05(d). —Added new subsection heading III. Approximations and inserted thereunder the text of former subsections II.A through II.E. —Renumbered former subsection heading III as subsection IV and added citations to, and explanation of, Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 112 USPQ2d 1188 (Fed. Cir. 2014); Ex parte Anderson, 21 USPQ2d 1241 (Bd. Pat. App. & Inter. 1991); and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1261 (Fed. Cir. 2014). —Added new item (E), including a citation to Ex parte Caldwell, 1906 C.D. 58 (Comm'r Pat. 1906).
2173.05(d)
—Added citation to In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) after the first sentence. Deleted citation to, and explanation of, Energizer Holdings, Inc. v. Int'l Trade Comm'n, 435 F.3d 1366 (Fed. Cir. 2006).
2173.05(e)
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—Added a citation to, and discussion of, Datamize LLC v. Plumtree Software Inc., 75 USPQ2d 1801 (Fed. Cir. 2005) and changed "Keep in mind…" to read "Examiners should keep in mind…."
2173.05(g)
—In subsection I, added citation to, and discussion of, In re Packard, 751 F.3d 1307, 110 USPQ2d 1785 (Fed. Cir. 2014).
2173.06
—In subsection I, deleted the citations to Lighting World, Inc. v. Birchwood Lighting, Inc., and Inventio AG v. Thyssenkrupp Elevator Americas Corp. Revised text to state that the
2181
presumption that 35 U.S.C. 112(f) does not apply can be overcome when the claim fails to recite sufficient definite structure to accomplish the function. Added supporting citations to Williamson v. Citrix Online, LLC, ___F.3d ____, 115 USPQ2d 1105, 2015 WL 3687459, at *6-7 (Fed. Cir. 2015); Watts v. XL Systems, Inc., 232 F.3d 877 (Fed. Cir. 2001); and Personalized Media Communications, LLC v. International Trade Commission, 161 F. 3d 696 (Fed. Cir. 1998). Also added text setting forth the standard to determine if the claim has a sufficiently definite meaning, with supporting citations to Williamson and Greenberg v. Ethicon Endo-Surgery, Inc. —In subsection I.A, second paragraph, revised the phrase "understand the term to be the name" to read "understand the term to have a sufficiently definite meaning as the name." Added a discussion of Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 80 USPQ2d 1225 (Fed. Cir. 2006). In the fifth paragraph, deleted the last two sentences, including a reference to In re Morris. In the sixth paragraph, added "or other linking word" after "word 'for'". —In subsection I.C, revised "sufficient structure" to read "sufficiently definite structure." Also added a discussion of Mass. Inst. of Tech., and a reference to Williamson v. Citrix Online, LLC.
—Added new paragraph (B) indicating that if a means- (or step-) plus-function limitation in a claim is not supported by corresponding structure, material or acts in the specification disclosure,
2185
a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as lacking adequate written description should be considered. Redesignated paragraphs (B) and (C) to (C) and (D), respectively.
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CHAPTER 2200:
—Revised cross-reference description to read "See MPEP Chapter 2800 for guidance on the procedures for supplemental examination proceedings, and for procedures regarding the order
2201
and first Office action mailed in any ex parte reexamination proceeding ordered as a result of a supplemental examination proceeding." —In the penultimate paragraph, deleted the word "original" modifying "requests." —Corrected 37 CFR 1.902.2202 —In the fourth paragraph, deleted the second and third sentences discussing keeping identity confidential and modified the last sentence to clarify that it applied to persons other than reexamination requesters.
2203
—Added a new paragraph to clarify the procedures for keeping a requester's identity confidential and to mirror language in MPEP § 2214. —Revised the first paragraph to insert "generally" prior to "the length of the term of the patent," and to replace "citations" with "submissions."
2204
—Deleted the last sentence in the first paragraph because it discussed discontinued procedures. —Revised to indicate that no fee is required for a submission under 37 CFR 1.501 (rather than "a submission of citations"); submissions under 37 CFR 1.501 are no longer limited to citations under 35 U.S.C. 301.
2205
—In the paragraph before the examples, added "discarded, or closed" after "returned to the sender" to reflect current Office procedures for handling an improper submission. —Modified text regarding a submission after the date an order for reexamination is granted to state that such a submission will be stored until reexamination is concluded.
2206
—Revised to replace "citation(s)" with "submission(s)" throughout section in order to apply requirements to both prior art citations and written statement filings. —In subsection I.A.1, revised "reexamination file" to "patent file" to reflect current processing. In subsection I.A.2, deleted the example as outdated. —In subsections II.A.1 and II.A.2, revised text by adding "discarded, or closed if advertently entered into the file" as alternatives to returning the submission to sender to reflect current Office procedures for handling an improper submission. —In the second paragraph, deleted the text "It is to be understood that highlighting" and inserted "Highlighting" in the same place.
2207
—Added "and written statements under 35 U.S.C. 301" at the end of the sentence cross-referencing MPEP § 2206.
2208
—In the second paragraph, deleted the last sentence about prosecution being reopened as it reflected outdated procedures.
2209
—In the listing of the basic characteristics of ex parte reexamination, modified text in item (B) to clarify that the Office may also consider double patenting issues as discussed in MPEP § 2258 and added a parenthetical about ex parte reexamination ordered under 35 U.S.C. 257; in item (E) added a parenthetical about supplemental examination and ex parte reexamination ordered under 35 U.S.C. 257; and in item (I) added text to explain that images of non-patent literature are not viewable through Public PAIR and that such copies are available from the Office of Public Records and may be ordered online. —Added a cross reference to MPEP § 2803.02. —Added "AIA" prior to the citation to 35 U.S.C. 315 to clarify that it is the provision in effect on or after September 16, 2012.
2210
—Clarified text by moving text from the last paragraph into the middle of the first paragraph.2211
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—Added "AIA" prior to the citation to 35 U.S.C. 315 to clarify that it is the provision in effect on or after September 16, 2012. Added cross-references to MPEP §§ 1401-1403 and §§ 2801-2803.
2212
—Deleted the third paragraph "If an attorney or agent files a request for reexamination …" because it inaccurately implied that the attorney or agent is estopped, rather than the real party in interest for the request.
2213
—In the discussion about the requirement for a copy of every patent or printed publication, added a sentence to clarify that there is a waiver for copies of U.S. patents and U.S. patent application publications.
2214
—Added "AIA" prior to the citation to 35 U.S.C. 315 to clarify that it is the provision in effect on or after September 16, 2012. —In the penultimate paragraph, deleted "since a reexamination proceeding is not an 'application'" and inserted in its place "except as provided in MPEP § 2258.02" because the current rules pertaining to foreign priority and domestic benefit require an application data sheet in some situations. —Inserted an updated version of PTO/SB/57. —Modified text to clarify that only a patent owner requester can establish micro entity status.2215 —Revised to include written statements under 37 CFR 1.501 in the reference to prior art citations by replacing "prior art citations" with "submission under 37 CFR 1.501" and similar corresponding changes. —In the first paragraph, clarified that the substantial new question of patentability must be in view of patents and printed publications cited under the provisions of 35 U.S.C. 302.
2216
—Inserted "inventor" in the phrase "the first-inventor-to-file."2217 —Deleted paragraph that stated it is helpful to include copies of prior art considered during earlier prosecution as no longer necessary.
2218
—Revised text to clarify that the waiver of the copy requirement in 37 CFR 1.510(b)(3) brings the regulation in line with 37 CFR 1.98. —Added "or derivation" after "interference" to include derivation proceedings created by the AIA.
2219
—Added the phrase "of a request filed under 35 U.S.C. 302" after "requester" in the first sentence.2220 —Added the phrase "Filed under 35 U.S.C. 302" in the section title.2221 —Updated 37 CFR 1.33(c). Added text indicating that there is one power of attorney form for patent owners and another form for third party requesters. Included updated samples of both forms.
2222
—Updated sample of form PTO/SB/83.2223 —Removed the citation to 37 CFR 1.915 because inter partes reexaminations can no longer be filed.
2225
—Added the phrase "Filed under 35 U.S.C. 302" in the section title.2226 —In subsection A.2, deleted "third party" modifying requesters in two places because the policy applies to both third party and patent owner requesters.
2227
—In subsection B, revised language in two places to remove reference to a "memo" drafted by an examiner and instead state that the examiner will communicate with his or her supervisor, who will discuss the issues with a legal advisor in the Office of Patent Legal Administration (OPLA). Clarified text that the Central Reexamination Unit will draft a Decision Vacating the Proceeding, which will be reviewed and signed by the Office of Patent Legal Administration. —Deleted sentence regarding the location of requests filed because such procedures are discontinued.
2229
—Added "filed under 35 U.S.C. 302" after "a request for reexamination" in the second sentence.2230
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Deleted references to "the preprocessing area" and "reexamination preprocessing" staff as outdated.
2231
—Revised text to update instructions for searching for a reexamination proceeding in Public PAIR.
2232
—Modified text to delete outdated instructions on how to access PAIR using the Internet.2232.01 —In subsection I, added a citation to 37 CFR 1.20(c)(6) for petition fees and added text to clarify that micro entity reductions are only available for patent owners.
2233
—Deleted text, including items (A)-(G), that describes the entry of amendments because such procedures have been discontinued.
2234
—In item (A), deleted the intranet address as it is subject to change and to add "PTOWeb" as the name for the intranet site.
2235
—In item (B), deleted the phrase "while patent applications have status codes ranging from '020' to over '100'" because it no longer accurately reflects current status codes. —In item (C), text is revised to indicate that any paper patent file will be ordered and scanned into the Image File Wrapper; deleted text concerning the location of the physical files. —In item (D), clarified that the items provided are examples of reported events and added a parenthetical regarding the PALM system or the Office of Petitions tracking system. —In item (E), deleted most of the listed reports because they are no longer generated and added two new reports in addition to adding that PALM reports are provided to the CRU and appropriate Technology Centers. —Clarified that in the rare situation where a reexamination has been assigned to an assistant examiner, a primary examiner must sign all actions, conference all actions with a SPRS or manager and another examiner, and take responsibility for all actions taken.
2236
—In subsection I, clarified that the CRU Director's approval may be indicated by his or her signature at the end of the order or Office action. Added "generally" in stating that the same examiner will generally be assigned the new reexamination to allow for some flexibility for managers in assigning work load. —In subsection I, revised text to eliminate certain references to the "TC" because reissues are handled by the Central Reexamination Unit in addition to the TCs. —In subsection I, modified text to reflect electronic processing. For example, replaced the application "reaches the TC" with "is available for docketing" in step (B)(1) in subsection I. —Deleted the sentence stating SPRS should hand carry any paper patent file to the transferee because it reflects discontinued paper processing procedures.
2237
—Modified text to reflect electronic processing. For example, deleted the phrase "patent file is then forwarded to the" CRU.
2239
—Updated text to reflect that OPLA and the CRU or TC work cooperatively to determine whether the Director should order reexamination under the provisions of 35 U.S.C. 303 and deleted guidance as to a "disk" containing the memorandum. —Deleted the phrase "or 37 CFR 1.915" at the end of the section because inter partes reexamination requests can no longer be filed. —Revised to reflect current policy that examiners do not typically have to request litigation search at the time of assignment of a reexamination proceeding.
2240
—In subsection II, clarified text that a second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer or certificate that has issued. —Deleted the sentences that described time frames for when an examiner takes up a proceeding and when any action should be mailed in order to give supervisors more flexibility in assigning and monitoring work load.
2241
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—Changed "previous examination" to "earlier concluded examination or review" and expanded definition to include new proceedings, such as supplemental examination and post-grant reviews by the Board. Similar changes also made to form paragraph 22.01.01.
2242
—In subsection I, second paragraph, modified text to identify the different proceedings or examinations in which the same question of patentability may have already been decided or raised. —In subsection I, clarified text that a second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer or certificate that had issued. —In subsections I and II, added a sentence reading "Issues involving 35 U.S.C. 325(d) must be referred to the Director of the CRU." —Deleted sentence in the last paragraph pertaining to amended claims in copending proceeding because such merger policies are covered in MPEP §§ 2283-2285.
2243
—Added "under 35 U.S.C. 303(a)" after "determination" in the first sentence to distinguish from determinations made in supplemental examination.
2244
—Deleted the second paragraph which contained steps of discontinued paper processing.2245 —Deleted "original" modifying "signed copy" in the last paragraph. —In item (D), modified "prior examination" to "earlier concluded examination or review" and "the Federal Courts" to "a federal court, and was not raised to or by the Office in a pending
2246
reexamination or supplemental examination of the patent" to include new proceedings, such as supplemental examination and post-grant reviews by the Board. —In the paragraph starting with "The decision granting the request …" deleted the phrase "is made on a decision form and" because the decision is more than just a form. —Modified text to reflect electronic processing. For example, replaced the examiner's decision is "hand-carried … to the CRU support staff for processing and mailing" with "processed and mailed" in subsection I. —In subsection II, in the penultimate paragraph, changed policy of filing the opposition "by facsimile transmission" to "electronically." —In subsection III, revised text regarding prior art citations submitted after the order for reexamination to refer to prior art citations and written statements and deleted the indication that they be stored as a separate file in a physical location (because this does not account for electronic processing). —In item (A), modified "earlier examination" to "earlier concluded examination or review of the patent, or raised to or by the Office in a pending reexamination or supplemental examination of
2247
the patent" to include new proceedings, such as supplemental examination and post-grant reviews by the Board. —In example 1, replaced copy of former form PTO-471 with updated form PTO-471G. In example 2, replaced copy of former form PTO-471 with updated form PTO-471D.
2247.01
—Modified text to reflect electronic processing. For example, replaced the examiner's decision is "forwarded … to the Office of the CRU Director for decision" with "brought to the attention of the CRU Director or his/her designee for decision."
2248
—Changed the first sentence in paragraph starting with "Reassignment will be …" to "In the situation in which the examiner's determination failed to find any SNQ, reassignment will be the general rule" in order to distinguish procedures from situations in which the examiner's determination is only a partial denial of some SNQs. —Revised the last paragraph to clarify that a petition under 37 CFR 1.181 may be filed within one month of the mailing date of the order if the examiner's determination partially denies the request based on any advanced SNQ, that a decision on such a petition is final and non-appealable, and that if no timely petition is filed, the examiner's determination is final and non-appealable. Added a citation to Belkin Int'l, Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012).
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—In the paragraph beginning with "If reexamination is ordered…," deleted the last sentence stating that extensions of time will be granted only under extraordinary circumstances because
2249
such a statement fails to account for the new no-cause extensions of time for patent owners. Inserted a cross-reference to MPEP § 2265. —Updated 37 CFR 1.52 as amended by the PLT implementation rule. In subsection I.A, added the word "single" before "brackets" to clearly distinguish this requirement from reissue amendment
2250
practice. Also added a new sentence in the second paragraph indicating that presentation of the text of the paragraph to be deleted will assist the Office in proper entry of the amendment. Also added explanation of the importance of stating the precise point where each amendment is to be made. Deleted text that discussed discontinued paper processing. —In subsection I.D, revised form paragraph 22.13 so that the examiner will enter in the proper time period for response depending on whether the request was filed by a third party requester or the patent owner. —In subsection III, deleted text that discussed discontinued paper processing. —In subsection IV, under (A)(1) and (2), added "single" before "bracketing" to clarify proper amendment practice. Under (D) and (E), at the end of the first sentence, added "including the claim number and status indicator" to clarify that all text must be underlined for a new claim. —In the last paragraph, added text to explain that the time period for filing new drawing sheets depends on whether the request was filed by a third party requester or the patent owner. Clarified
2250.01
that the last sentence addresses the situation in which new drawing sheets are not filed "in response to the Quayle action." —Updated 37 CFR 1.530(l).2250.02 —In subsection I, added a cross-reference to 37 CFR 1.20(c)(3) and (c)(4) following the first sentence. Revised the last paragraph to apply to responses to non-final actions, added text to
2250.03
explain that the time period for filing a correction depends on whether the request was filed by a third party requester or the patent owner, and added a sentence to address responses to final actions. —Inserted "under 35 U.S.C. 304" after "ordered" in the first sentence.2253 —Updated 37 CFR 1.550 as amended by the PLT implementation rule. 37 CFR 1.550(c) was amended to provide for a no cause extension of time for patent owner requested or Director ordered examination.
2254
—In the second paragraph, added the phrase "after an examiner's determination that found the request did not raise any SNQ" and changed "will normally" to "will generally."
2255
—Changed "items of information" to "documents" because the former phrase is now used in supplemental examination and might be confusing.
2256
—Added "(B)" to the phrase "As to (B), (C) and (F) above." —Revised policies regarding the submission of prior art after a Notice of Intent to Issue ex parte Reexamination Certificate (NIRC) is mailed to reflect the Office's more recent publication procedures, i.e., the proceeding generally begins the publication (issue) cycle immediately after NIRC. To obtain entry, the submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier, (B) an unequivocal statement that one or more claims are unpatentable, and (C) an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. These requirements are similar to the requirements to withdraw an application from issue under 37 CFR 1.313(c)(1) and help the Office comply with the statutory mandate of special dispatch for reexaminations. —Revised to delete the statement that references will be printed on the reexamination certificate and instead state that a notice is printed on the reexamination certificate that the list of prior art documents is available via PAIR, which is in accord with current practice.
2257
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—Added 37 CFR 1.625 as the basis to discuss ex parte reexamination procedures following a supplemental examination request.
2258
—In the first paragraph, added a sentence to indicate that double patenting issues may also be considered during reexamination. Following the first paragraph, added text to address the scope of reexamination ordered under 35 U.S.C. 257. —In subsection I, added text to clarify that the first-to-invent prior art regime may apply under the specified conditions if a benefit claim is made under reexamination to a prior application with a filing date before March 16, 2013. Deleted "in the chart" in the sentence prior to subsection I.A because no chart is presented. —In subsection I.B, added "(with respect to original subject matter)" after "insufficiency of disclosure" to clarify that issues under 35 U.S.C. 112 may be raised for new or amended subject matter. —In subsection I.C, added a citation to In re NTP, Inc., 654 F.3d 1268, 99 USPQ2d 1500 (Fed. Cir. 2011), which held that the Office is not prohibited from performing a 35 U.S.C. 112 written description priority analysis during reexamination. —In subsection I.D, in the third paragraph, added the clause "over prior art patents or non-prior art patents" in the second sentence. Added a new fourth paragraph that states that double patenting issues may be addressed in reexaminations ordered under 35 U.S.C. 257. —In subsection I.F.2, added a new last paragraph that reexaminations ordered under 35 U.S.C. 257 may involve an admission by the patent owner. —In subsection I.G, first paragraph, added text regarding claim construction where there is related litigation and a federal court has made a judicial interpretation of a disputed claim term. In the first sentence of the last paragraph, added the phrase "ordered under 35 U.S.C. 304, and also during reexamination ordered under 35 U.S.C. 257" to clarify that the broadest reasonable interpretation applies to both proceedings. —In subsection II, first paragraph, added text pertaining to a determination of whether the claimed invention is entitled to a particular priority date and a citation to In re NTP, Inc. Added a new second paragraph to state that reexaminations ordered under 35 U.S.C. 257 may involve any issues under 35 U.S.C. 112. —In subsection IV.A, in the second paragraph, clarified the text by replacing "a 'live' claim" with "a claim under reexamination which is." —In subsection IV.E, deleted the text and replaced with a cross-reference to MPEP § 2258.02. —In subsection IV.G, added "or derivation" after "interference" to provide for the new derivation proceedings. —In subsection IV.H, added "pre-AIA" before "35 U.S.C. 102(c)" to clarify which provision applies and deleted the clause suggesting the patent owner may file a reissue application because the clause gave an erroneous impression that reissues can always be filed to resolve issues outside the scope of reexamination. Similarly, revised form paragraph 22.03 to clarify text and to remove the suggestion to file a reissue application. —In form paragraph 22.01.01, changed "earlier examination" to "earlier concluded examination or review" and added "or has been raised to or by the Office in a pending reexamination or
2258.01
supplemental examination" to include new proceedings, such as supplemental examination and post-grant reviews by the Board. —New section added to describe procedures for correcting claims for foreign priority or domestic benefit during a reexamination proceeding.
2258.02
—Deleted the last sentence, inserted two new sentences regarding the application of claim preclusion (res judicata) to the Office in reexamination proceedings, and added references to In
2259
re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007) and In re Construction Equipment Company, 665 F.3d 1254, 100 USPQ2d 1922 (Fed. Cir. 2011). —Inserted "in reexaminations ordered under 35 U.S.C. 304" after "issued" in the second sentence.2260
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—In the first paragraph, added, in two instances, a phrase pertaining to a claim no longer subject to reexamination. Also, in the first sentence, added the phrase "undergoing reexamination" after "any claim."
2260.01
—Deleted text that described time frames for when an examiner takes up a proceeding and when any action should be mailed in order to give supervisors more flexibility in assigning and monitoring work load.
2261
—In subsection I, added a cross-reference to MPEP § 2271.01 for more detailed information on conferences.
2262
—Deleted the second paragraph and revised the first paragraph to state that a shortened statutory period of two months will generally be set and extensions of time may be requested under 37 CFR 1.550(c) with a cross-reference to MPEP § 2265.
2263
—Revised the first paragraph to clarify mailing procedures to the patent owner and to delete the statement that multiple patent owners are each mailed a copy of the Office action because such
2264
statements are inconsistent with standard Office practice of only corresponding with a single representative or a single patent owner. In addition, deleted the reference to the PALM printer because such printers are no longer used. In the second paragraph, added a sentence to describe the mailing procedures when there is more than one third party requester for a request and if any requester failed to designate a mailing address of a registered practitioner as the correspondence address. In the third paragraph, deleted reference to "additional partial patent owner." —Updated 37 CFR 1.550(c) as amended by the PLT implementation rule2265 —Added subsections I-VI. Subsection I contains former text explaining that the provisions of 37 CFR 1.136 are not applicable to ex parte reexamination proceedings. Subsection II explains the fees required for an extension of time. Subsection III provides general guidance on extensions of time, including the sufficient cause extension and automatic extension for patent owner requested reexaminations. Subsection IV discusses procedures for extensions of time in third party requested reexaminations. Subsection V explains extensions of time for patent owner requested and director ordered reexaminations, which have been revised to include an automatic two month extension as a result of implementation of the Patent Law Treaty (PLT). Subsection VI discusses the requirements for a showing of sufficient cause. —Renumbered former subsections I and II as subsections VII and VIII, respectively. —Renumbered subsection VII was modified to include the automatic two month extension of time for patent owner requested and director ordered reexaminations. —Updated 37 CFR 1.550 as amended by the PLT implementation rule.2266 —Revised to clarify that the provisions of 37 CFR 1.136 do not apply in reexamination proceedings. —Revised the last paragraph to state that patent owners cannot submit an application data sheet (ADS) except as provided in MPEP § 2258.02 because an ADS is required in certain situations in order to claim foreign priority or domestic benefit as modified by the PLT implementation rule. —In item (B), added the phrase "including any extensions of the response period pursuant to 37 CFR 1.550(c)" to modify the response period to account for the no cause extension under 37 CFR 1.550(c).
2266.01
Revised references to time periods for response for consistency with response time changes in the implementation of the PLT. —Amended form paragraph 22.14 so that the examiner will enter in the proper time period for response depending on whether the request was filed by a third party requester or the patent owner. —In the last paragraph, deleted "closing prosecution" after "an action" because ex parte reexamination does not include "an action closing prosecution." —Revised text to discuss new form PTO-2311, which provides notification of a defect in submissions filed in a patent owner requested reexamination.
2266.02
—Modified the time period for response set in the final rejection from one month to two months.
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—Added text to clarify that form PTOL-475 is not mailed if an after-final response lacks proof of service. Instead, an advisory Office action will notify the patent owner of the lack of proof of service.
2266.03
—In subsection I, deleted text that pertains to discontinued paper processing procedures and revised text to explain that papers will be expunged from the official file by marking the papers "closed" and "non-public."
2267
—Subsection II title revised to read "Types of Papers Expunged With Approval of the Director of the USPTO or CRU/TC Director or SPRS." Revised text of subsection II to replace "returned" with "expunged" and to delete the penultimate sentence which referred to the return of papers. Clarified text in the last chart by adding "or if inadvertently entered, it will be expunged from the file." —In subsection IV, revised title to read "Papers Located in the Patent File." Deleted indication that citations by third parties are placed in the reexamination file because current processing places the citations in the patent file instead. —Added 35 U.S.C. 27, and updated 35 U.S.C. 41(a)(7) and 133; updated 37 CFR 1.137. Specifically, the statute and regulations were changed to only provide for revival under the
2268
unintentional standard and to provide for the extension of the 12-month period for filing a subsequent application. —In subsection I, rewrote text to state that a petition based on unavoidable delay is no longer available and to clarify that the amendments to 37 CFR 1.137 apply to any reexamination proceeding resulting from a supplemental examination proceeding filed before, on, or after December 18, 2013. —In subsection II, deleted former text and inserted text that explains the requirements for a petition to revive under the statute and regulations for consistency with the PLTIA and the PLT implementation rule. Also added an indication that questions had been raised concerning the Office's authority to revive an unintentionally abandoned application (without a showing of unavoidable delay) in certain situations, citing to Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech, 543 f.3D 657 (Fed. Cir. 2008) as an example. —In subsection III, changed the time period for submitting a reconsideration request from one month to two months, in accordance with the implementation of the PLT. Clarified that the extension of time provisions of 37 CFR 1.550(c) also apply to any reexamination proceeding ordered under 35 U.S.C. 257. —Added text to clarify that amendments submitted with a request filed under 35 U.S.C. 302, or after reexamination is ordered under 35 U.S.C. 304 or under 35 U.S.C. 257, and that are compliant with 37 CFR 1.530(d)-(j) are generally entered if submitted prior to a final action.
2270
—In subsection II, modified form paragraphs 22.09 and 22.10 to account for the no cause extension of time in 37 CFR 1.550(c)(3).
2271
—In subsection I, changed "manager will" to "manager may" to allow for some flexibility for managers.
2271.01
—In subsection I, changed the time period for submitting a response from one month to two months, in accordance with the implementation of the PLT. Clarified that the same time period
2272
also applies to any reexamination proceeding ordered under 35 U.S.C. 257. Added text that explains the no cause extension of time in patent owner requested and director ordered reexaminations newly provided for by 37 CFR 1.550(c) is in conformance with the minimum reply provisions of the PLT and thus additional "no cause" extensions are not available for a response to a final Office action. —In subsection II, added a reference to new form PTO-2311.
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—Deleted text discussing ex parte reexaminations filed before November 29, 1999 because such reexaminations are no longer pending. Deleted the word "current" before "version" in the sentences discussing 35 U.S.C. 134 as amended by Public Laws 106-113 and 107-273.
2273
—Changed the time period for extension given upon the timely filing of a first response to a final rejection from one month to two months, in accordance with the implementation of the PLT. —Added text to discuss new form PTO-2311, which provides notification of a defect in the notice of appeal filed in patent owner requested reexaminations (including reexaminations ordered under 35 U.S.C. 257) or Director ordered reexaminations and clarified that form PTOL-475 is used in third party requested reexaminations. —Clarified that form PTOL-468 "may" be used to provide notification that an appeal is dismissed because notification could also be provided as part of a Notice of Intent to Issue Ex Parte Reexamination Certificate. —In subsection III, modified text to explain that the no cause extension of time in patent owner requested and Director ordered reexaminations newly provided for by 37 CFR 1.550(c) is available for filing the appeal brief. Added a cross-reference to MPEP § 2265.
2274
—In subsection IV, clarified that form PTOL-468 "may" be used to provide notification that an appeal is dismissed because notification could also be provided as part of a Notice of Intent to Issue Ex Parte Reexamination Certificate. —Deleted the sentence that stated the determination should be completed within approximately one month from the filing of the appeal brief to give flexibility to the Board in managing their work load. Modified "an appeal conference" to "a conference" because reexamination proceedings are not required to have "appeal conferences" like patent applications. —In the first paragraph, inserted a sentence to explain that there is no requirement for a pre-appeal conference but there is a requirement for a panel review of an examiner's answer in reexamination proceedings.
2275
—Deleted text discussing ex parte reexaminations filed before November 29, 1999 because such reexaminations are no longer pending. Deleted the word "current" before "version" in the sentences discussing 35 U.S.C. 141 and 145 as amended by Public Laws 106-113 and 107-273.
2279
—Added a sentence to discuss that 35 U.S.C. 141(b) was further amended by Public Law 112-29. —Modified title to add "Filed under 35 U.S.C. 302" at the end. Revised to state that the material to patentability standard set forth in 37 CFR 1.56(b) is applicable to reexamination proceedings
2280
ordered as a result of supplemental examination under 35 U.S.C. 257 and added cross-references to MPEP § 2818.01 and chapter 2000. —Revised to incorporate by reference the procedures set forth in MPEP § 713.01 to provide guidelines for conducting interviews via electronic means.
2281
—Deleted the statement that the Office of Patent Legal Administration needs to authorize anything other than an in person interview at headquarters or a satellite office. —Revised to indicate that an interview initiated by the examiner to obtain an amendment to render the reexamined claims patentable might not have the panel members participating in the interview. —Modified to clarify that only publicly available information may be discussed by the examiner when a third party requests information. Added another example regarding claim interpretation and publicly available information. —Clarified that a copy of the interview summary form PTOL-474 should be mailed to the patent owner, if not already provided with a copy. —Revised text to clarify that notice of concurrent proceedings includes notification of any supplemental examination and any review before the Patent Trial and Appeal Board.
2282
—Amended form paragraph 22.07 to add the phrase "or reexamination ordered under 35 U.S.C. 257" at the end.
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—In subsection II, deleted as outdated policy the sentences regarding suspending the second proceeding where the first proceeding is on appeal before a federal court and requiring the express written approval of the CRU or TC Director for suspensions.
2283
—In subsection III, clarified the guidelines given in the second paragraph. —In subsection IV, modified text to remove reference to discontinued paper processing procedures. —In subsection VII, in the last sentence of the first paragraph, changed "returning" to "expunging" and deleted the clause "but no copy of the petition will be retained by the Office" because the prior sentences already cover the procedures. Added "or subsequent thereto" after "37 CFR 1.530" in the second paragraph. —Subsection II.A clarified by adding "(e.g., within three months from the request's filing date)" in the first sentence.
2285
—In subsection II.B, deleted as no longer applicable the paragraph regarding procedures to follow if the stay of a reexamination has been removed following a reissue application examination. —In subsection V, in the last sentence of the first paragraph, changed "returning" to "expunging" and deleted the clause "but no copy of the petition will be retained by the Office" because the prior sentences already cover the procedures. —In subsection I, deleted text that described time frames for when an examiner takes up a proceeding and when any action should be mailed in order to give supervisors more flexibility in
2286
assigning and monitoring work load. Also, deleted text that stated a one month time response is set because such policy is discontinued in light of the PLT implementation. Finally, deleted case law citations to In re Vamco Machine and Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed. Cir. 1985); Gould v. Control Laser Corp., 705 F.2d 1340, 217 USPQ 985 (Fed. Cir. 1983); Loffland Bros. Co. v. Mid-Western Energy Corp., 225 USPQ 886 (W.D. Okla. 1985); The Toro Co. v. L.R. Nelson Corp., 223 USPQ 636 (C.D. Ill. 1984); Digital Magnetic Systems, Inc. v. Ansley, 213 USPQ 290 (W.D. Okla. 1982); Raytek, Inc. v. Solfan Systems Inc., 211 USPQ 405 (N.D. Cal. 1981); and Dresser Industries, Inc. v. Ford Motor Co., 211 USPQ 1114 (N.D. Texas 1981) because none of the decisions related to the Office's policy regarding reexaminations. —In subsection V, deleted "by the STIC" at the end of the first paragraph because CRU staff performs most litigation searches. —Inserted " ex parte" prior to reexamination, two occurrences, because amended 35 U.S.C. 315(d) and 325(d) do not apply to inter partes reexamination.
2286.01
—Moved references to examiner's amendments from the introductory text to subsection V. Revised to amend procedural steps referring to discontinued paper processing to be applicable to current electronic processing throughout section.
2287
—In subsection I, revised the list of items to review in the reexamination and patent files by adding "such as the certificate number, e.g., 'C1' or 'C2'" following "thereon" in item (B), and by amending item (D) to indicate that the examiners should enter the current classification in the Issue Classification boxes, cross-referencing MPEP §§ 903.07 and 902.03(e). —In subsection III, example claim 2 under reexamination, "the sintered preform is machined into a lens" was changed to "a pressure of 300-400 psi is applied during the heating steps." —In subsection V, revised "a formal examiner's amendment" to read "an examiner's amendment" for consistency with the terminology in MPEP Chapter 1300. Added indication that any examiner's amendment to the title or abstract must be authorized by the patent owner. —In subsection VI, deleted the last paragraph because the same text appears more appropriately in MPEP § 2287.01. —Corrected the rule citation from 37 CFR 1.182 to 37 CFR 1.312 in the second sentence.2287.01 —Deleted the second paragraph pertaining to a screening process performed by OPLA because such procedures have been discontinued.
2289
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—Clarified text by making the sentence that discussed the ordinal sequence of inter partes reexamination certificates its own paragraph. Added a paragraph to discuss certificates issued from reexaminations ordered under 35 U.S.C. 257.
2290
—Deleted text that referred to "international and U.S. classification" and inserted "the current classification" in its place. —Modified "the list of prior art documents" to "the notice regarding the list of prior art documents" to more accurately reflect the current practice in which the list of documents is not printed on the certificate. —In the second item (A), added text to describe that the filing date and number of the request is preceded by "Supplemental Examination Request" if reexamination was ordered under 35 U.S.C. 257. —Updated the example certificates provided at the end of the section to reflect a certificate that does not list the prior art citations. —Modified the last paragraph to state that the Official Gazette notice will clearly indicate the type of certificate, e.g., ex parte reexamination certificate (for proceedings ordered under 35
2291
U.S.C. 304), an inter partes reexamination certificate, or an ex parte reexamination certificate from reexamination ordered under 35 U.S.C. 257. —Deleted text that stated that the proceedings are forwarded to OPLA after a NIRC is processed or for reissue review because such procedures have been discontinued.
2294
—In the second paragraph, modified the second sentence to state that the CRU technical support staff will print out a copy of the reexamination certificate and make it of record in the second
2295
reexamination file as a preliminary amendment to more accurately reflect current processing procedures. —In subsection II, added a reference to new form PTO-2311 and changed the 1 month time period to "an appropriate" time period to reflect changes in response time due to implementation of the PLT. —In subsection III, changed "Upon conclusion of the reexamination proceeding" to "After mailing of the NIRC" to more clearly reflect current procedures. —Added new forms PTOL-471D and PTOL-471G that replaced form PTOL-471, updated the title for form PTOL-475, and added new forms PTO-2311and PTO-2293.
2296
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CHAPTER 2400:
—Updated references to 35 U.S.C. 112, first and second paragraphs, to 35 U.S.C. 112(a) and (b) to reflect changes made in the AIA.
Passim
—Revised the word "code" to read "symbol" in the context of the description of nucleotide bases and amino acids to improve clarity and for consistency with the tables in ST.25.
Passim
—Replaced the phrase "Sequence Listing" with the same words without quotation marks or initial capital letters (i.e., sequence listing).
Passim
—Rewritten to delete historical background pertaining to the development of the deposit rules and sequence rules. This information can be accessed in MPEP § 2401 in the MPEP Ninth
2401
Edition (March 2014)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/old/index.htm). —Revised to insert 37 CFR 1.801(defining biological information) at the beginning of the section. Replaced citation to a district court case with a citation to Enzo Biochem, Inc. v.
2402
Gen-Probe, Inc., 323 F.3d 956, 63 USPQ2d 1609 (Fed. Cir. 2002)(deposit may satisfy the written description requirement). —Deleted historical information pertaining to effective date of the deposit rules and added notation to see PCT Rule 13 bis and MPEP § 1823.01 for the requirements under the PCT for a reference to a deposited biological material in an international application. —Revised to delete 37 CFR 1.801. Added caution to examiners against requiring that a specific biological material be deposited where a deposit of starting material would allow the skilled artisan to make and use the claimed invention; also added an example of such a situation.
2403
—Revised to indicate that the Office will consider 2500 to be an optimum number of seeds to deposit in the normal case, rather than the minimum number to deposit.
2403.02
—Revised the "Board of Patent Appeals and Interferences" to read "the Board."2404.01 —Revised to account for acceptable non-Budapest treaty deposits. Added paragraph explaining that with regard to such deposits, in reply to a request made under 37 CFR 1.808(c), the Office will not certify that a deposit has been stated to have been made under conditions which make it available to the public as of the issue date unless the record otherwise clearly indicates that an acceptable non-Budapest Treaty deposit was made and that all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of the patent (with the possible exception of requiring the request for the deposit to be in the format specified in 37 CFR 1.808(b)). —Replaced list of International Depositary Authorities (IDAs) with a reference to the WIPO website where a list of current IDAs under the Budapest Treaty is maintained (www.wipo.int/treaties/ en/registration/budapest).
2405
—Replaced sentence indicating that the deposit rules are equally applicable in international and national stage applications filed under the PCT with the explanation that while 37 CFR
2406
1.804 permits making a deposit after the filing date of an application, in many countries the deposit must be made before the filing date. —Deleted "the first paragraph of" before 35 U.S.C. 112.2406.01 —Replaced the phrase "foreign to the United States" with "other than the United States" and replaced the phrase "is sufficient to comply with 35 U.S.C. 112" with "may be relied upon to comply with 35 U.S.C. 112."
2406.03
—Revised first paragraph to clarify that pursuant to 37 CFR 1.805(a), an applicant is required to notify the Office when it obtains information that a depository cannot furnish samples of a
2407.01
deposit referenced in a pending application, and that a replacement or supplemental deposit
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must be made if access to the deposited material is necessary to satisfy the requirements for patentability under 35 U.S.C. 112. —Revised to add a new first paragraph stating the requirement for a patent owner to notify the Office when it obtains information that a depository cannot furnish samples of a deposit
2407.02
referenced in a patent and the consequences of failing to so notify the Office and diligently replace a deposit. —Revised to explain that a replacement or supplemental deposit made in connection with a patent, whether or not made during the pendency of an application for reissue patent or a reexamination proceeding or both, will not be accepted unless a certificate of correction under 37 CFR 1.323 is requested which meets the terms of 37 CFR 1.805(b) and 37 CFR 1.805(c) for replacement or supplemental deposits. Also added cross-references to MPEP §§ 1411.01 and 2219. —Added text explaining that a request for a certificate of correction of a patent under 37 CFR 1.805(b) and 37 CFR 1.805(c) will not be granted where no original deposit was made before or during the pendency of the application which matured into the patent. —Revised to delete "Finally," from the first sentence.2407.06 —Revised to add cross-reference to MPEP § 2701 for an explanation of the term of a patent. Revised the final sentence to clarify that a specific statement that the deposit would be stored
2408
under agreements that would make them available beyond the enforceable life of the patent for which the deposit was made is required only where the 30-year term of deposit would terminate within the enforceable life of the patent. —Revised to explain that there is a distinction between a statement by the applicant that the deposit has been made under the Budapest Treaty and one in which the deposit has been made
2409
and accepted under the Budapest Treaty. Where a statement is merely an indication that a deposit has been made (with no indication as to whether it has been accepted), there is no assurance that the requirements under 35 U.S.C. 112 have been satisfied. —In the final paragraph, revised to add "and accepted" after "a deposit had been made" to the discussion of the conditions prescribed by the Bupdapest Treaty.
2410.01
—Revised to indicate that persons requesting a certificate of statement of availability of deposit should contact the TC 1600 Director's office and should not submit the request via the examiner
2410.02
of record. Also revised to indicate that Form BP-12, which may be used for requests pertaining to deposits made pursuant to the Budapest Treaty, is available on the WIPO website. —Added paragraph explaining that the Office will not certify whether a deposit has been made under conditions which would make it available to the public until the issuance of a U.S. Patent referencing the deposit. —Updated 37 CFR 1.809(c).2411 —Revised to clarify description of possible rejections under 35 U.S.C. 112(a) or (b) in the context of the deposit of biological materials, and added indication that a lack of written description can arise in the context of original claims.
2411.01
—Added a cross-reference to 37 CFR 1.802 which describes when a deposit of biological material is needed. —Deleted citation of two cases in which the Federal Circuit resolved best mode issues in the litigation context. —Revised to add a reference to a supplemental deposit.2411.02 —Revised to indicate that where an application is otherwise in condition for allowance except for a required deposit, the Office may notify the applicant in a notice of allowability and set a
2411.03
three month time period within which the deposit must be made in order to avoid abandonment. This time period is not extendable under 37 CFR 1.136 (see 37 CFR 1.136(c)).
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—Removed and reserved. Information relevant to replacement or supplemental deposits after a patent has issued is set forth in MPEP § 2407.02.
2411.04
—Rewritten to delete historical background pertaining to the development of the sequence rules. This information can be accessed in MPEP § 2420 in the MPEP Ninth Edition (March
2420
2014)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/old/index.htm). —Added cross-references to PCT Rule 5 and Rule 13 ter , and MPEP § 1823.02 and § 2422, for the requirements under the PCT for international applications that disclose nucleic acid or amino acid sequences. —Section title and text therein rewritten to set forth the definition of "sequence listing" and "CRF." Deleted previous text, which set forth background information as to the applicability date of the sequence rules, in its entirety.
2421.01
—Added explanation that for purposes of the sequence rules and the discussion in MPEP Chapter 2400, the phrase "disclose(d) (or disclosure(s) of) nucleic acid or amino acid sequences" is intended to refer to those nucleic acid or amino acid sequences that are described in the patent application by enumeration of their residues and that meet the length thresholds of 37 CFR 1.821(a). —Added explanation that the "Sequence Listing" part of the disclosure required by 37 CFR 1.821(c) is the official copy of the sequence listing, and may be submitted as an ASCII text file via EFS-Web, on compact disc, as a PDF submitted via EFS-Web, or on paper. Also added cross-reference to MPEP § 2422.03 for additional information. —Added explanation that 37 CFR 1.821(e) requires that a copy of the sequence listing referred to in 37 CFR 1.821(c) must also be submitted in computer readable form (CRF) as an ASCII text file in accordance with the requirements of 37 CFR 1.824 (hereinafter "CRF of the sequence listing" or "CRF"). The computer readable form may be submitted on the electronic media permitted by 37 CFR 1.824 , or may be submitted as an ASCII text file via EFS-Web. Also added cross-reference to MPEP § 2422.04 for additional information. —Revised to clarify that the sequence rules define a set of symbols and procedures that are both mandatory and the only way that an applicant is permitted to describe information in the sequence listing.
2421.02
—Corrected description of the sequences that the sequence rules embrace (i.e., all unbranched nucleotide sequences with ten or more nucleotide bases and all unbranched, non-D amino acid sequences with four or more amino acids, provided that there are at least 10 "specifically defined" nucleotides or 4 "specifically defined" amino acids). —Revised description of initial treatment of noncompliant sequence listings in the Office of Patent Application Processing (OPAP) to reflect current procedures, i.e., OPAP will mail a
2421.03
Notice to Comply to applicant listing the requirements that have not been met and setting a two month time period within which to comply with the sequence rules, 37 CFR 1.821 - 1.825. Failure to comply with these requirements will result in abandonment of the application under 37 CFR 1.821(g). Extension of time may be obtained by filing a petition accompanied by the extension fee under the provisions of 37 CFR 1.136. —Added paragraph explaining that patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013, may be subject to reductions in patent terms adjustment pursuant to 37 CFR 1.704(c)(13) if they are not in condition for examination within eight months from the filing date or date of commencement, respectively. "In condition for examination" includes compliance with 37 CFR 1.821 - 1.825 (see 37 CFR 1.704(f)). —Revised to indicate that inquiries regarding a specific CRF that has been processed by the Office should be directed to the Sequence Systems Service Center.
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—Revised to delete references to general changes that may occur in the future. Added indication that the Office will continue work on the preparation of a new World Intellectual Property
2421.04
Organization (WIPO) standard on the presentation of nucleotide and amino acid sequence listings using eXtensible Markup Language (XML) with the members of the Task Force on Sequence Listings created by the Committee on WIPO Standards. —Revised to add subsection title "I. Incorporation by Reference of WIPO ST.25 (1998) in 37 CFR 1.821." Subsection I revised to indicate where a copy of the 1998 version of ST.25 is available online and to explain that ST.25 was updated in December 2009.
2422
—In subsection I, added explanation that modifications not listed in WIPO Standard ST.25 (1998) Appendix 2, Tables 2 and 4, may also be represented as the corresponding unmodified base or unmodified amino acid in the sequence itself, and the modification should be described using its full chemical name in the Feature section of the sequence listing. —Revised to add subsection title "II. Filing Internationally." Updated the considerations that applicants who wish to file internationally in countries which adhere to WIPO Standard ST.25 should take into account. In particular, references to the 1998 version of the standard have been revised to correspond to the language of the 2009 update to the standard, and the explanation regarding free text in numeric identifier <223> has been clarified. —Paragraph added to subsection II to explain that requirements related to the submission of sequence listings may also differ between filing in the United States and filing internationally. For example, where an international application is filed in paper, the sequence listing part of the international application must also be provided in paper, although the search copy must be filed in electronic form, e.g. on a CD or, in the RO/US, as an ASCII text file via EFS-Web. Also, any tables filed in an international application must be an integral part of the application, i.e., cannot be submitted as a separate file in text format. —Revised section title to read "Nucleotide and/orAminoAcid Disclosures Requiring a Sequence Listing" to more accurately reflect the content of the section.
2422.01
—Added subsection title "I. Length Thresholds," and revised the text therein to correctly indicate that sequences with fewer than ten specifically defined nucleotides are specifically excluded. —Added subsection title "II. Representation of Nucleic Acids and Amino Acids" and revised the text therein to delete the discussion pertaining to the limitation of the sequence rules to L-amino acids because D-amino acids are not precluded from representation in a sequence listing and the Office encourages voluntary compliance for D-amino acids. —Subsections III - V added to relocate information previously in MPEP § 2422.03. —Subsection III explains that in general, any sequence that is disclosed and/or claimed as a sequence, i.e., as a string of particular nucleotide bases or amino acids, and that otherwise meets the length thresholds of 37 CFR 1.821(a), must be set forth in the sequence listing. —Subsection IV explains that it is generally acceptable to present a single, primary sequence in the specification and sequence listing by enumeration of its residues in accordance with the sequence rules ("primary sequence") and to discuss and/or claim variants of that primary sequence without presenting each variant as a separate sequence in the sequence listing. However, the primary sequence should be annotated in the sequence listing to reflect such variants. Added sentence to strongly recommend that any sequences appearing in the claims, or sequences that are considered essential to understanding the invention, be included in the sequence listing as a separate sequence. —Subsection V explains the requirement for a sequence identifier for each sequence set forth in the sequence listing, and the use of sequence identifiers in the specification, claims, or drawings to reference sequences set forth in the sequence listing in accordance with 37 CFR 1.821(c) and (d).
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—Revised first paragraph to clarify that for all applications that disclose nucleic acid and/or amino acid sequences that fall within the definition set forth in 37 CFR 1.821(a), 37 CFR
2422.02
1.821(b) requires exclusive conformance to the requirements of 37 CFR 1.821 through 37 CFR 1.825 with regard to the manner in which the disclosed nucleic acid and/or amino acid sequences are presented and described. —Revised second paragraph to clarify when it may be appropriate to depict a sequence in a drawing figure. Deleted references to relaxing the exclusive conformance requirement for drawing figures. Clarified that when a sequence is presented in a drawing, the sequence must still be included in the sequence listing if the sequence falls within the definition set forth in 37 CFR 1.821(a), and the sequence identifier ("SEQ ID NO:X") must be used, either in the drawing or in the Brief Description of the Drawings —Rewritten to set forth the manner in which a sequence listing required pursuant to 37 CFR 1.821(c) may be submitted. Subject matter previously in this section relocated to MPEP § 2422.01, subsections III - V.
2422.03
—Revised to explain that the sequence listing required pursuant to 37 CFR 1.821(c) may be submitted as an ASCII text file via EFS-Web, on compact disc, as a PDF submitted via EFS-Web, or on paper. Also revised to clarify that the sequence listing required by 37 CFR 1.821(c) is the official copy of the sequence listing, and that 37 CFR 1.821(e) requires that a copy of the sequence listing referred to in 37 CFR 1.821(c) must also be submitted in computer readable form (CRF) in accordance with the requirements of 37 CFR 1.824. Further revised to explain the basic requirements for identifying ASCII text files and incorporating such files by reference in the specification. —New section added to explain that pursuant to the EFS-Web Legal Framework, applicants may submit a sequence listing under 37 CFR 1.821 as an ASCII text file via EFS-Web instead
2422.03(a)
of on compact disc, and to provide detailed information pertaining to the submission of such sequence listings. —Added subsection I to explain the implications of filing an ASCII text file sequence listing via EFS-Web in a variety of situations (e.g., on the filing date with or without a paper or PDF copy of the sequence listing, or in reply to a requirement under 37 CFR 1.821(g) or (h)). Includes specific note that the USPTO prefers the submission of a sequence listing in an ASCII text file via EFS-Web on the application filing date, and that submission of the sequence listing in a PDF file on the application filing date is not recommended. —Added subsection II to explain that a sequence listing submitted as a text file via EFS-Web will be excluded when determining the application size fee, whereas a sequence listing submitted as a PDF file will not be excluded. Also discusses application size fee as it relates to tables. —Added subsection III to discuss the size limit for text files submitted via EFS-Web and explain how to file an application that includes a sequence listing that is over 100 megabytes. —Added subsection IV to discuss filing sequence listings in international applications (PCT) via EFS-Web. —Subsection IV.A explains the preference for submission of the sequence listing part of the description as an ASCII text file and not as a PDF file, and discusses the international filing fee implications. —Subsection IV.B sets forth the file size and quantity limits for filing international applications via EFS-Web, and explains how to file an application that includes a sequence listing that is over 100 megabytes. —Subsection IV.C explains that tables related to a sequence listing must be an integral part of the description of the international application (PCT), and that when applicant submits tables related to a sequence listing in an international application (PCT) via EFS-Web, the tables must be in a PDF file.
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Revised to indicate that the computer readable form required by 37 CFR 1.821(e) may be submitted on the electronic media permitted by 37 CFR 1.824 or may be submitted as an ASCII
2422.04
text file via EFS-Web. Updated information pertaining to providing published sequence data to NCBI. —Revised to add explanation that if a new application is filed via EFS-Web with a compliant ASCII text file sequence listing, and applicant has not filed a sequence listing in a PDF file, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and CRF required by 37 CFR 1.821(e), eliminating any chance for discrepancies between the official copy and the CRF. —Section rewritten to clarify the procedure for requesting transfer of a computer readable form. Added text of 37 CFR 1.821(e) and explanation that the rule provides a mechanism to
2422.05
request the transfer of a CRF from an application already on file to a new application in limited circumstances. Added explanation of how applicant may be able to retrieve a copy of the sequence listing in ASCII text format in another application, and strong recommendation that applicant submit an ASCII text copy of a sequence listing in the new application rather than request a transfer to avoid possible application size fees and possible delays that may be introduced by defective transfer requests. —Deleted sample letter requesting transfer, and added indication that Form PTO/SB/93 should be used to request a transfer of a CRF under 37 CFR 1.821(e) to facilitate processing of the request. —Added subsection I to clearly set forth the requirements of a transfer request, and subsection II to describe a proper reply to a defective transfer request notice. —Revised to indicate that a statement under 37 CFR 1.821(f) that the content of the official and computer readable copies of a sequence listing are the same may be made by a registered
2422.06
practitioner, the applicant, an inventor, or the person who actually compares the sequence data on behalf of the aforementioned. —Added paragraph explaining when a statement under 37 CFR 1.821(f) is not required. —Revised to add explanation that when an amendment to comply with the requirements of 37 CFR 1.821(g) adds or amends a compact disc(s) or ASCII text file submitted via EFS-Web,
2422.07
applicant is required to update or insert in the specification an appropriate incorporation by reference statement. —Revised to indicate that the no new matter statement which must accompany submissions under 37 CFR 1.821(g) may be made by a registered practitioner, the applicant, an inventor, or the person who actually compares the sequence data on behalf of the aforementioned. —Added note that patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013, may be subject to reductions in patent terms adjustment pursuant to 37 CFR 1.704(c)(13) if they are not in condition for examination within eight months from the filing date or date of commencement, respectively. "In condition for examination" includes compliance with 37 CFR 1.821 through 1.825 (see 37 CFR 1.704(f)). —Revised to clarify the circumstances under which an applicant will be sent a notice requiring compliance with 37 CFR 1.821(b)-(f) in an international application. —In the final paragraph, deleted sentence regarding treatment of errors prior to the implementation date of the sequence rules. —Revised to delete indication that correspondence relating to the sequence rules may be hand-delivered to the Technology Center. Further revised to delete references to compact disc, floppy disk, tape, and magnetic media.
2422.09
—Revised to clarify language pertaining to the notation of modified bases or amino acids in a sequence listing. Also revised to clarify that applicants are encouraged to use the three-letter
2423.01
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MANUAL OF PATENT EXAMINING PROCEDURE
symbols for amino acids throughout the disclosure, instead of the one-letter symbols, for easier reading of the application and any patent issuing therefrom. —Revised to replace the final three sentences of the section with the simplified explanation that when the coding parts of a nucleotide sequence and their corresponding amino acids have
2423.02
been enumerated by their residues, those amino acids must also be set forth as a separate sequence if the amino acid sequence meets the length thresholds in 37 CFR 1.821(a). —Replaced the term "enumeration" with "numbering" for consistency with 37 CFR 1.822. Deleted background information regarding the basis for the numbering procedures.
2423.03
—Revised to rewrite the final paragraph of the section to clarify the procedures for presenting and numbering hybrid and gapped sequences. —Revised to generally explain that 37 CFR 1.823 sets forth the informational requirements for the sequence listing that must be submitted under 37 CFR 1.821(c) as part of the application.
2424.01
—Revised to specify that a CRF of a sequence listing submitted on compact disc cannot include table information, and that a sequence listing or CRF of a sequence listing is submitted as an ASCII text file via EFS-Web cannot contain information other than the sequence listing. Added cross-reference to MPEP § 608.05(b) for information regarding submission of large tables in ASCII text format via EFS-Web or on compact disc. —Replaced the table of numeric identifiers and accompanying information with a citation to 37 CFR 1.823(b) (reproduced in MPEP § 2424) which includes the same information.
2424.02
—Revised to explain proper citation of unpublished and published PCT applications, and to indicate that questions regarding the proper citation of patent documents should be directed to staff in the Office of International Patent Cooperation.
2424.03
—Revised to update the source of the controlled vocabulary that should be used in the numeric identifiers relating to features of a given sequence in the sequence listing. —Revised to indicate that if the sequence listing required by 37 CFR 1.821(c) cannot be submitted via EFS-Web because it is larger than 100 megabytes, and it is impractical to provide
2425
the sequence listing on compact discs or other electronic media as set forth in 37 CFR 1.824 due to the size of the sequence listing, an exception via a non-fee petition to waive this provision will be considered. —Revised to add information pertaining to amending a sequence listing or CRF thereof by submission of an ASCII text tile via EFS-Web.
2426
—Revised to delete "Notice to Comply" from the title, and to delete the associated text previously in MPEP § 2427.02 in its entirety. Information relevant to a Notice to Comply is set forth in MPEP § 2421.03.
2427
—Text previously set forth in the first two paragraphs of MPEP § 2427.01 with regard to certain minor errors pertaining to compliance with the sequence rules has been relocated to this section and further revised to describe some minor errors pertaining to compliance with the sequence rules that may be discovered after examination has begun. Form paragraphs 24.01 - 24.05.01 and the associated discussion thereof previously in MPEP § 2427.01 have been deleted in their entirety. —Deleted. See the discussion of the changes to MPEP § 2427, above, for additional information.2427.01 -
2427.02 —Revised to add a significant number of helpful hints for compliance with the sequence rules, including information pertaining to filing sequence listings via EFS-Web, filing sequence
2429
listings in international applications, fees implications, consequences of failing to reply to compliance issues in a timely manner, the mandatory items of information that must be included in a sequence listing, information specific to several numeric identifiers, and contact information for assistance from the Sequence Systems Service Center.
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—Revised section title to "PatentIn Information." Revised to delete historical background pertaining to the development of, and updates to, PatentIn, and to describe PatentIn version
2430
3.5.1 (November 2010). Added information regarding help related to downloading or using PatentIn, and deleted references to hands-on training. Also added a discussion of the Checker software that may be used to check a sequence listing for compliance with the requirements of 37 CFR 1.824, and a suggestion to consult the User Notes on the Checker website for an explanation of errors that are not indicated, and content that is not verified, by the Checker software. —Revised to indicate that in 2007, the Office rescinded the 1996 partial waiver of the requirements of 37 CFR 1.141 et seq. with regard to restriction requirements in certain
2434
applications claiming polynucleotide molecules. Added that for national applications filed under 35 U.S.C. 111(a), polynucleotide inventions will be considered for restriction, rejoinder, and examination practice in accordance with the standards set forth in MPEP Chapter 800. —Revised to explain that copies of patents and patent application publications that include sequence listings are available for sale through the Office of Public Records, Certification
2435
Division, on paper, on a CDROM, or in PDF format via the Internet. However, these copies will not include a sequence listing if the sequence listing is not included in the composed electronic image (page image) version of the patent or patent application publication. Applicants and members of the general public can obtain an electronic copy of a sequence listing through the Certification Division for a separate fee as set forth in 37 CFR 1.19(b)(3).
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CHAPTER 2500:
—Revised to update 35 U.S.C. 41(b). Deleted note about the administration of 35 U.S.C. 41(b) during 2005-2008. Further revised to remove discussion of Public Law 96-517 and subsequent Public Laws modifying the statutory provisions regarding maintenance fees.
2501
—Revised subsection I to refer to "entity status" rather than "small entity status" and removed indication regarding expired patents. Revised subsection II to remove reference to withdrawals of attorneys and agents. —Revised to remove reference to 35 U.S.C. 41 and multiple reissues.2504 —Revised to add reference to USPTO website page for payment options and mailing addresses.2510 —Revised subsection I to add reference to USPTO website for the Office of Finance Online Shopping Page in place of outdated steps to find the maintenance fee status information from the USPTO homepage. —Revised to update 37 CFR 1.366. Also revised to refer to changes in "entity status" rather than "small entity status."
2515
—Revised to include reference to fees for micro entities and to add a reference to current USPTO website page for USPTO Fee Schedule.
2520
—Deleted text that stated the maintenance fee amount is set by statute. —Revised to replace reference to "37 CFR 1.378(c)" with "37 CFR 1.378(a)-(c)."2530 —Revised to state that if a discounted fee (small or micro) is received without the entitlement to an entity status being established, the Office will mail an Underpayment Notice or Non-Acceptance Notice to the fee submitter.
2531
—Revised to remove references to unavoidable delay as the basis for petitions to accept late payment of a maintenance fee.
2540
—Revised to include reference to both pre-AIA 37 CFR 1.33(a) and current 37 CFR 1.33(a).2542 —Section retitled "Entity Status Discounts" and rewritten to provide more detailed information pertaining to maintenance fee payments and entity status. Added subsections I-III. New subsection
2550
I concerns claiming entitlement to small entity status and micro entity status. New subsection II concerns removal of either small entity status or micro entity status. New subsection III concerns payments which do not match the entity status of record. —Revised to add indication that post issuance revocation and withdrawal of attorney requests are not regularly processed.
2560
—Deleted text regarding outdated paper processing steps by the Office of Patent Application Processing. —Revised to include reference to USPTO website page for determining status of maintenance fee payments in place of outdated steps to find the maintenance fee status information from the USPTO homepage.
2570
—Revised subsection IV to reflect that a receipt of payment for a maintenance fee will only be made upon request.
2575
—Revised to indicate that pre-AIA 37 CFR 3.73(b) applies to pre-AIA applications and 37 CFR 3.73(c) applies to AIA applications. Added cross-reference to MPEP § 325.
2580
—Revised to update 37 CFR 1.378.2590 —Revised to indicate that a separate petition fee and a separate statement of unintentional delay are required for each delayed maintenance fee payment, to specify the signing requirements for pre-AIA and AIA applications, to remove the reference to 37 CFR 1.378(c), to replace the reference to 37 CFR 1.378(e) with 37 CFR 1.378(d), and to remove reference to a petition fee for reconsideration of a decision.
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Subsection I concerning the unavoidable delay basis for petitions to accept late payment of a maintenance fee was deleted. —Renumbered subsection II as subsection I. Revised subsection to replace 37 CFR 1.138(c) with 37 CFR 1.138(b) and 37 CFR 1.20(i)(2) with 37 CFR 1.17(m). Revised to provide information as to whether the EFS-web version of Form PTO/SB/66 or the non-EFS-web version of this form should be used in certain situations. —Revised to update title of Form PTO/SB/66 and to include updated versions of relevant forms.2595 —Revised to replace 37 CFR 1.138(c) with 37 CFR 1.138(b).
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CHAPTER 2600:
—Deleted the word "original" modifying "requests" in the fourth and ninth paragraphs as the modifier is not necessary.
2601
—Clarified that the first flowchart shows a reexamination filed prior to September 16, 2012, which would be subject to the SNQ standard.
2601.01
—Added a sentence after the description of the first flow chart explaining that except for the standard for instituting reexamination, the same procedure pertains for an inter partes reexamination filed from September 16, 2011 through September 15, 2012. —Moved the text specifying that the AIA amendment to 35 U.S.C. 301(a)(2) is not applicable to an ongoing inter partes reexamination no matter when the prior art citation was filed from item (B) to the end of the section.
2602
—In item (C), deleted "in the Central Reexamination Unit or Technology Center (in which the reexamination proceeding is being examined)" after "stored" because it reflected an outdated procedure. —Added ", prior to September 16, 2012," after "requester" in paragraph (A) as a reminder that inter partes reexamination was discontinued.
2609
—Updated 37 CFR 1.33(c).2622 —Added forms PTO/AIA/81B and PTO/SB/81C and deleted outdated form PTO/SB/81. —Updated form PTO/SB/83.2623 —Deleted the reference to 37 CFR 1.915 in two places in the first paragraph after the rules because requests for inter partes reexamination can no longer be filed.
2625
—Entire text deleted and replaced by the following notice: "No requests for inter partes Reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP."
2627
—Entire text deleted and replaced by the following notice: "No requests for inter partes Reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP."
2630
—Entire text deleted and replaced by the following notice: "No requests for inter partes Reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP."
2631
—Deleted outdated instructions pertaining to accessing Public PAIR.2632 —Deleted outdated instructions pertaining to accessing a reexamination file via Public PAIR.2632.01 —Clarified that micro entity reductions are only available for patent owners and not third party requesters.
2634
—Deleted an outdated intranet address for PALM, the phrase that stated the status codes for applications ranging from "020" to over "100," and instructions pertaining to discontinued paper processing.
2635
—Clarified that the stated reports from PALM are examples. —Revised to state that reexamination requests "are" assigned to the CRU. Clarified that in the rare situation where a reexamination has been assigned to an assistant examiner, a primary examiner
2636
must sign all actions, conference all actions with a SPRS or TC Quality Assurance Specialist (QAS) and another examiner, and take responsibility for all actions taken. —In the "Copending reissue and reexamination proceeding" subsection, text is revised to eliminate reference to the "TC" because reissue applications are assigned to examiners in the TC as well as the CRU.
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Revised text to indicate that the CRU support staff or STIC will perform a litigation search report prior to action by the examiner. Modified text to indicate that litigation information must be brought to the attention of a CRU SPRS.
2640
—Added a sentence to clarify that "… the second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer, or by any reexamination certificate that has issued as of the time of the determination." —Entire text deleted and replaced by the following notice: "No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP."
2641
—Revised text to clarify what Office proceedings are considered by the examiner in determining whether the same question of patentability has already been raised and to define "earlier concluded
2642
or pending examination or review" to include review of the patent in a trial by the Patent Trial and Appeal Board and other contested proceedings in addition to prior examinations. —Changed form paragraph 22.01.01 to specify "in an earlier concluded examination or review of the patent being reexamined, or has been raised to or by the Office in a pending reexamination or supplemental examination of the patent." —Deleted the last sentence of the section because it does not reflect current policies.2643 —In subsection I, in the last paragraph, two occurrences, changed form PTOL- "501" to "2070" to reflect current practice.
2646
—In subsection II, in the first paragraph, clarified that there is no right to petition "as an 'ultra-vires' action by the Office" a finding of a SNQ or RLP based on reasons other than those advanced by the requester. —In subsection II, in third to last paragraph, deleted "the extremely rare" and inserted "a" in its place. —In subsection II, in second to last paragraph, changed policy of filing the opposition "by facsimile transmission" to "electronically." —In subsection III, revised text regarding prior art citations submitted after the order for reexamination to delete the indication that they be stored as a separate file in a physical location (because this does not account for electronic processing). Added a sentence to note that written statements under 37 CFR 1.501 are not permitted in inter partes reexaminations. —In the last paragraph, two occurrences, changed form PTOL-"501" to "2070" to reflect current practice.
2647
—In the second paragraph, two occurrences, changed form PTOL-"501" to "2070" to reflect current practice.
2647.02
—Changed text that stated reassignment to another examiner is the general rule to limit the general rule to the situation in which the examiner's determination failed to find any SNQ or RLP in order
2648
to distinguish procedures from situations in which the examiner's determination is only a partial denial of some SNQs or RLPs. In last paragraph, two occurrences, added "or RLP(s)" after "SNQ(s)" to clarify that a petition may be filed when the reexamination is subject to the RLP standard. —Clarified the text of the Editor Note for 35 U.S.C. 314.2654 —In the second paragraph, added the phrase "of all the claims requested to be reexamined" after "a refusal to order reexamination" in the first sentence in order to distinguish procedures from situations in which the examiner's determination is only a partial denial of some SNQs or RLPs.
2655
—Changed "items of information" or "information" to "document(s)" in several locations because "items of information" is now a phrase associated with supplemental examination.
2656
—Revised text regarding the submission of prior art after a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) was mailed to reflect the Office's more recent publication procedures, i.e., the proceeding generally begins the publication (issue) cycle immediately after
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NIRC. To obtain entry, the submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier, (B) an unequivocal statement that one or more claims are unpatentable, and (C) an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. These requirements are similar to the requirements to withdraw an application from issue under 37 CFR 1.313(c)(1) and help the Office comply with the statutory mandate of "special dispatch" for reexaminations. —Revised to indicate a notice will be present on the certificate indicating that the list of cited prior art documents will be available via PAIR. Text was deleted regarding the discontinued practice of listing the references on the reexamination certificate.
2657
—Added "ordered under 35 U.S.C. 304" after " ex parte reexamination" in the last sentence before subsection I to distinguish from reexaminations ordered from a supplemental examination request.
2658
—In subsection I, in the first sentence, added "inter partes" before "reexamination" and added "under the first-to-invent prior art regime" after "publications" to clarify that all inter partes reexaminations are subject to this prior art regime. —In subsection II, added "ordered under 35 U.S.C. 304" after " ex parte reexamination" to distinguish from reexaminations ordered from a supplemental examination request. —In subsection IV.E, existing text was deleted and replaced by a reference to MPEP § 2258.02, which sets forth the applicable policies as to claiming foreign priority or domestic benefit in light of changes made by the PLTIA. —In subsection IV.H, added "pre-AIA" before "35 U.S.C. 102(c)" to clarify which provision applies and deleted text that suggested the filing of a reissue application to address questions outside the scope of reexamination. Similar text also deleted in form paragraph 26.03. —Deleted the last two sentences, inserted two new sentences regarding the application of claim preclusion (res judicata) to the Office in reexamination proceedings, and added references to In
2659
re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007) and In re Construction Equipment Company, 665 F.3d 1254, 100 USPQ2d 1922 (Fed. Cir. 2011). —In subsection I, in the first paragraph, deleted text that discusses a ten-week deadline.2660 —In subsection V, updated the text of the sample Office action to reflect current text in form paragraphs 7.20.fti, 7.21.fti, and 26.03. —Clarified the first sentence by adding "undergoing reexamination" after "any claim."2660.03 —Added an Editor Note to state the limited applicability of 35 U.S.C. 314(c) as reproduced.2661 —In item (B), added "except as provided in MPEP §§ 2666.40 and 2666.60" to clarify when a third party requester may file comments on a patent owner's supplemental response.
2662
—In item (F)(1), added a reference to MPEP § 2674 et seq. —In item (L), deleted text referring to reexamination resulting from a court order, litigation concurrent with an inter partes reexamination proceeding, and reexamination proceedings pending for more than one year. —Revised the second paragraph to clarify the Office's current policy on correspondence address used for the mailing of Office actions and to delete reference to the PALM printer because such printers are no longer used.
2664
—Deleted the reference to PTOL-2070 in the second and fourth paragraphs. —In the third paragraph, added a sentence to describe the mailing procedures when there is more than one third party requester for a request and if any requester failed to designate a mailing address of a registered practitioner as the correspondence address. —In the fourth paragraph, deleted "each additional partial patent owner as discussed above." —Added that CRU SPRS can also decide whether a request for an extension of time will be granted. Changed reference to the automatic extension of time in ex parte reexamination to be
2665
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
"two" months instead of one month to be consistent with changes due to implementation of the PLT. See MPEP § 2265. —In subsection I, after the reference to 37 CFR 1.111, added "other than the provision in 37 CFR 1.111(a)(1) to 'see …. [37 CFR] 1.136 for time for reply to avoid abandonment" to clarify that the extension of time provisions of 37 CFR 1.136 are not applicable to inter partes reexamination.
2666
—In subsection III, added "(i.e., closed)" after "sealed" in the first paragraph and changed the last paragraph to state that patent owners cannot submit an application data sheet (ADS) except as provided in MPEP § 2258.02 because an ADS is required in certain situations in order to claim foreign priority or domestic benefit as modified by the PLT implementation rule. —Added a reference to MPEP § 2667 at the end of the first paragraph after 37 CFR 1.530.2666.01 —In subsection I, in the fourth paragraph, added text to advise that a requester should file comments in the 30 day time period even if patent owner's response is filed with a petition under 37 CFR 1.183 requesting waiver of the page length requirement of 37 CFR 1.943(b).
2666.05
—In subsection II, seventh paragraph, added a clause to clarify that a requester is provided with a time period to supply corrected comments if the comments were in response to a non-final Office action. —Modified text in the second paragraph to clarify when a requester can file comments based on a patent owner's supplemental response.
2666.20
—Added a cross-reference to MPEP § 2682 after the sentence discussing 37 CFR 41.77(c) and (e) in the third paragraph. —Revised text under "Discussion of Option (B)" to state that the requester may file comments within 30 days of the date of service of patent owner's corrected or supplemental response.
2666.30
—Clarified text in regard to when a requester can and cannot file comments if patent owner files a corrected response in response to a defect in their original response.
2666.40
—Revised penultimate paragraph to provide an exception to the one month or thirty day time period as provided in MPEP §§ 2666.05 and 2667.
2666.50
—Updated final paragraph to reflect current procedures wherein the technical support staff of the CRU reviews papers filed by the patent owner and requester. —Revised the first paragraph to provide an exception to the one month or thirty day time period as provided in MPEP §§ 2666.05 and 2667.
2666.60
—Clarified text in the second and third paragraph about when a requester may file comments in response to a patent owner correcting an informal response. —Modified text regarding the procedures of the return of inappropriate papers to eliminate procedures for discontinued paper processing and to state that inappropriate papers are expunged by marking the papers "closed" and "non-public."
2667
—Revised the title for subsection I to read "Types of Papers Expunged with Approval of the Central Reexamination Unit Director or SPRS." —Throughout subsection I, replaced "returned" with "expunged." —In subsections I.A.2 and I.B.2, after "37 CFR 1.957(d)," added the clause "if the submission is made prior to the mailing of an ACP" to clarify that the stated procedures to file a corrected submission do not apply to submissions after an ACP. —In subsections I.A.1, I.A.3, and I.B.1, replaced "RLA" with "SPRS." —In subsection I.B.3, in the third paragraph, clarified text about when a requester may file comments in response to a patent owner correcting an informal response by adding the phrase "unless patent owner's submission correcting the defect is directed to form and does not go to the merits of the case (e.g. payment of a fee other than an excess claims fee)." —In subsection I.C, removed text that inappropriate papers are returned "to an identified third party or destroyed if the third party submitter is unidentified" and reference to a storage area to cover procedures for electronic as well as paper processing.
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—In subsection III, revised the title to "Papers Located in the Patent File," removed all reference to the "storage area" to cover procedures for electronic as well as paper processing, added a reference to 37 CFR 1.902 and deleted the last sentence because proper timely prior art submissions are placed in the patent file and not the reexamination file. —Added 35 U.S.C. 27, updated 35 U.S.C. 41(a)(7) and 133, and updated 37 CFR 1.137. Specifically, the statute and regulations were changed to only provide for revival under the
2668
unintentional standard and to provide for the extension of the 12-month period for filing a subsequent application. —Modified the text to make it clear that a petition based on unavoidable delay is no longer available and to discuss the requirements under revised 37 CFR 1.137(a) for a petition to revive. Also added an indication that questions had been raised concerning the Office's authority to revive an unintentionally abandoned application (without a showing of unavoidable delay) in certain situations, citing to Aristocrat Techs. Australia Pty Ltd. V Int'l Game Tech, 543 f.3D 657 (Fed. Cir. 2008) as an example. —In the first paragraph, clarified that only claims undergoing reexamination and under a rejection may be cancelled if the patent owner fails to file a timely and appropriate response to an Office action. —Changed "clerical staff" to "technical support staff" for consistency with current position titles and modified text (e.g., making copies) that referred to discontinued paper processing.
2670
—In subsection II, revised text to eliminate discontinued processing steps of consultation with a RLA in OPLA and modified text that referenced discontinued paper processing.
2671
—In subsection V, modified the text in form paragraph 26.03 to eliminate the suggestion to file a reissue for issues raised that exceed the scope of reexamination.
2671.01
—In subsection X, deleted "as the action that does not close prosecution." —In the second paragraph, the end of the first sentence was changed to "issues should be clearly developed."
2671.02
—In subsection I, last paragraph, "single" was deleted before "previous" in the first sentence. —In subsection IV, modified the text in form paragraph 26.03 to eliminate the suggestion to file a reissue for issues raised that exceed the scope of reexamination. —In subsection VIII, revised text by deleting the step of hand carrying actions to the support staff to eliminate processing steps that are drawn towards discontinued paper processing. —In subsection I, changed "manager will" to "manager may" to reflect current procedures that the manager may let the examiner select the third member.
2671.03
—In subsection III, second to last sentence, "the ACP and" was added after "comments responding to" and in the last sentence "replacement" was changed to "corrected."
2672
—In subsection IV, deleted ", and/or the issues raised in the ACP" in the third sentence because the ACP is not "served" on the requester. In subsection V, two instances, "and/or" was changed to "or." —In subsection III, added a new penultimate paragraph that states affidavits or declarations are treated the same as amendments. This text was copied from MPEP § 2265.
2673
—Added a new third paragraph stating "Note that a requester is not entitled to file an appeal or cross appeal for proposed rejections which were determined to not raise a substantial new question
2674
of patentability or a reasonable likelihood of prevailing. Such a decision is final and nonappealable. See 35 U.S.C. 312(c) and 37 CFR 1.927." —Added text reading "The respondent's brief may include any arguments previously made of record that support the examiner's finding with respect to any claim addressed in the opposing party's appellant brief. See MPEP § 2675.01." —Changed "corrected" brief or briefs to "amended" brief or briefs to make terminology consistent in all appeal sections.
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—In item (B) following the reproductions of the rules, added "Note that a party is not always entitled to file an appeal or cross appeal. See MPEP §§ 2674 and 2674.01."
2675
—Revised to delete text indicating that the examiner reviews the appellant brief for compliance because the Board currently reviews the brief for compliance. —Inserted text copied from MPEP § 2677 which states that examiners are not required to make any determination if fewer than all of the rejected claims are identified as being appealed and will treat all pending claims in the proceeding as being on appeal. —Revised first paragraph to add indication that "[i]f an appellant brief was not properly filed and a notice of non-compliance is mailed to the appellant, the party opposing the appellant may file
2675.01
a respondent brief within one month from the date of service of the amended appellant's brief filed in response to the non-compliance notice." Also added explanation that "[t]he respondent's brief may include any arguments previously made of record that support the examiner's finding with respect to any claim addressed in the opposing party's appellant brief." Added citation to Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 109 USPQ2d 1599 (Fed. Cir. 2014) as support for the text. —Revised to delete text indicating that the examiner reviews the respondent brief for compliance because the Board currently reviews the brief for compliance. —Deleted the indication that an "examiner will have two weeks following the appeal conference to prepare the examiner's answer" to allow the examiner's manager flexibility in assigning work tasks.
2676
—Changed "clerical staff" to "technical support staff" and "Reexamination Legal Advisor (RLA)" to "CRU SPRS" for consistency with current position titles and practice.
2677
—Modified text (e.g., making copies) that referred to discontinued paper processing. In the penultimate paragraph, deleted the phrase "no later than two weeks from the date of the appeal conference (unless otherwise authorized by the CRU director)" to allow the examiner's manager flexibility in assigning work tasks. —Revised to replace "Board of Patent Appeals and Interferences" with "Board."2681 —Deleted paragraph discussing suspension of action because it reflects discontinued practice. —In subsection I, clarified the text to state that the Board has "discretionary" authority to issue a new ground of rejection and to explain when the Board may use that authority. —Subsection II revised to limit the title and text to discussing that a Board decision containing a new ground of rejection is a non-final decision. —In subsection III, clarified that the rules do not provide for the Board to include in its decision a statement that a claim may be allowable in amended form. —In subsection IV, modified text to clarify that petitions on a Board decision are very limited (e.g., to procedural matters) and that disagreements with the merits of a Board decision cannot be petitioned. —In subsection V, revised text to simply state that Board decisions are published at the discretion of the Office. —Modified to remove language that described discontinued paper processing steps and to include language that describes current electronic processing steps. For example, deleted the second paragraph after the rule reproductions because it reflected outdated paper processing steps.
2682
—In subsection I, amended the title and text to clarify that the subsection discusses a Board decision in which there are no new grounds of rejection. Added text to define a final Board decision and to clarify the procedures if no further action is taken by any party after a Board decision. —In subsection I.A, clarified text as to the procedures followed when no action is taken by any party to the appeal. —In subsection I.B, revised text to clearly state when a request for rehearing must be filed and what happens if a request for rehearing is not timely filed.
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—In subsection II, modified text to provide more detailed guidance on procedures regarding practice under 37 CFR 41.77 when a new ground of rejection is made in a Board decision. For example, added text to clearly state that the patent owner must either request rehearing or reopening of prosecution or the appeal may be terminated. Also, added a paragraph that states when jurisdiction remains with the Board and a paragraph to discuss procedures when there is a new ground of rejection in addition to rejections or findings of patentability that are affirmed. —Revised the title of subsection II.A to clarify that it is drawn to a proceeding under 37 CFR 41.77(b)(2). —In subsection II.B, modified the title and the text to clarify that the subsection is drawn to when the patent owner requests that prosecution be reopened under 37 CFR 41.77(b)(1). Specifically, added and reorganized text to be in subsections that address paragraphs (b)(1), (c), (d), and (e) of 37 CFR 41.77. Text in subsections II.B.2 through II.B.4 is new. —Added new subsection II.C, to clarify procedures when no submission is made under 37 CFR 41.77(b)(1) or (2). —Deleted former subsection III as the material is now covered in subsection II. —Former subsection IV renumbered as subsection III. In subsection III.A, clarified procedures about when CRU director approval is needed to reopen prosecution after a Board decision. —Deleted 37 CFR 90.2 and 90.3; added former 37 CFR 1.302 and 1.304 as these provisions are still effective for appeals in inter partes reexaminations and are referenced in this MPEP section.
2683
—In subsection I.A, added a citation to Consumer Watchdog v. Wisconsin Alumni Research Foundation, 111 USPQ2d 1241, 753 F.3d 1258 (Fed. Cir. 2014) with an explanation that court dismissed a third party's appeal because it lacked Article III standing. —Revised first paragraph such that the interviews prohibited by 37 CFR 1.955 are not limited to telephonic interviews.
2685
—Clarified language regarding "any prior or concurrent proceedings" by deleting the examples given in the first sentence and adding a new third sentence to state that prior or concurrent
2686
proceedings include supplemental examination and reviews before the PTAB in addition to the examples provided in 37 CFR 1.985(a). —In subsection II, deleted the third sentence pertaining to the example of suspending the second proceeding when the first proceeding is awaiting appeal before a Federal court.
2686.01
—In subsection III, clarified that it is the third party in an " inter partes" proceeding that will have an opportunity to comment and deleted "hand-carried" and inserted "forwarded" to remove reference to discontinued paper processing. —Subsection III.A modified to remove language that described discontinued paper processing steps and to include language that describes current electronic processing steps. —In subsection VI, in the last sentence of the first paragraph, changed "returning" to "expunging" and deleted the clause "but no copy of the petition will be retained by the Office." —In subsection IV, inserted ", or it will be expunged, if the petition has been scanned into the Office's IFW system prior to its discovery" at the end of the first sentence. The second sentence
2686.02
was amended to read "[t]he decision returning or expunging such a premature petition will be made of record in the reexamination file." —In subsection I, in the first sentence of the second paragraph, deleted "the reissue application reaches the Technology Center (TC), that" to reflect that current procedures that reissue applications
2686.03
are also handled by the CRU. Similar phrase deleted in the first two paragraphs of subsection II.C. —In subsection III, revised text in first paragraph to eliminate reference to a RLA because that practice is discontinued. —In subsection IV, modified to remove language under (A) that described discontinued paper processing steps and to include language that describes current electronic processing steps.
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—In subsection V, first paragraph, inserted "(or it will be expunged, if the petition has been scanned into the Office's IFW system prior to its discovery)" after "CRU" in the first sentence. The last sentence was amended to read "[t]he decision returning or expunging such a premature petition will be made of record in both the reexamination file and the reissue application file." —Subsection VII revised to remove reference to specific interview types. —In subsection I, deleted case law citation regarding the response times set in reexaminations when litigation is pending and revised text to simply state that all aspects of the reexamination
2686.04
proceeding will be expedited to the extent possible and deleted text that stated the request will be taken up by the examiner for decision in 6 weeks after the request is filed. —In subsection II, in the first paragraph of item (B), inserted "pre-AIA" before "35 U.S.C. 317(b)," deleted the parenthetical "(as to those asserted by the patent owner, and/or challenged by the third party requester, and resolved in favor of the patent owner in the civil action)" and added a reference to subsection V of this section. In item (B)(3), deleted the sentence "[i]f the answer to each of questions (1)-(3) is 'yes'. . .," revised the sentences beginning "[i]f the examiner subsequently . . . subsection V. below" to reflect current practice, and inserted "or reasonable likelihood of prevailing" after "patentability" in the last sentence. —In subsection III, deleted the last sentence of the third to last paragraph because that practice is discontinued. —In subsection IV, third paragraph, revised text to reflect current practice. In the fourth paragraph, clarified text by adding "(and) if the Office is notified of the final court decision" and deleting "and the reexamination prosecution will be terminated." In the fifth sentence, "or reasonable likelihood of prevailing" was added after "patentability." In the penultimate paragraph, revised text to reflect current practice by replacing the language after "validity holding" in the first sentence with ", if a grantable petition under 37 CFR 1.182 to terminate reexamination of those claims is filed in accordance with the guidelines set forth in subsection V" and by deleting "the order to reexamine is vacated by the CRU Director if the decision was rendered prior to the order. If the decision was rendered subsequent to the order,". —In subsection V, added subsections A, B, and C to reflect current practice. —In subsection VI, deleted reference to the Scientific and Technical Information Center (STIC) because most litigation search reports are performed by the technical support staff in the CRU. —Deleted the phrase ", including providing for stay, transfer, consolidation or termination of such matter or proceeding."
2686.05
—In subsection II.B, modified text that "[t]he CRU SPRS/TC QAS will convene a panel review conference" to "[a] panel review conference will be convened" to reflect current practice that the examiner may convene a conference with the approval of the CRU SPRS or TC QAS.
2687
—Subsection III revised to remove reference to specific interview types. —In subsection V, deleted the phrase "via the appropriate Office" in the last sentence. —Subsection VI revised to reflect current electronic processing practice. —In subsection VII, added the phrase "that requires a response" after "an Office action" in the first sentence to clarify this situation from a failure to respond to an Office action that does not require a response, such as an Action Closing Prosecution. —Revised to remove reference to specific interview types.2687.01 —In item (F), inserted "(e.g., by checking Box 9 'Other' on form PTOL-2068 and describing the status and Box 16 'Other' on the examiner's checklist form PTO-1516)" to clarify how examiners can indicate this status when preparing the NIRC.
2688
—In the seventh paragraph, changed "international and U.S. classification" to "current classification" to reflect changes to the CPC system and changed "list of prior art documents" to
2690
"notice regarding the list of prior art documents" to more accurately reflect the current practice in which the list of documents is not printed on the certificate.
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—In the last sentence, deleted "forwarded to the Office of Patent Legal Administration in accordance with MPEP" to reflect current practice.
2694
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CHAPTER 2700:
—Added text to briefly explain that effective May 13, 2015, international design applications may be filed under the terms of the implementation of the Hague Agreement as to the U.S. and clarified
2701
that the term "design patents" includes patents issued from design applications filed under 35 U.S.C. 111 and international design applications filed under 35 U.S.C. 385. —In subsection V, added citation to Bayer AG and Bayer Corporation v. Carlsbad Technology Inc., 298 F.3d 1377, 64 USPQ2d 1045 (Fed. Cir. 2002) to support the existing statement that a certificate of correction may be used to correct the date a patent is expiring due to the 1995 change in 35 U.S.C. 154(c), which provides a term of 17 years from grant or 20 years from filing, whichever is greater. Also added a citation to Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317, 82 USPQ2d 1203 (Fed. Cir. 2007) to support the existing statement that patents subject to a terminal disclaimer may receive term extension under 35 U.S.C. 156. —Clarified that the term "design patents" includes patents issued from design applications filed under 35 U.S.C. 111 and international design applications filed under 35 U.S.C. 385.
2710
—Added Editor Notes to explain the limited applicability of some paragraphs of the rules reproduced herein.
2730
—Modified to include text that summarizes 37 CFR 1.702(d), 1.703, 1.704, and 1.705, as set forth in the final rule Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR 56366 (September 18, 2000)(PTA implementation rule). —Added text that defines "original application" as set forth in the PTA implementation rule and supporting citation to Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 87 USPQ2d 1705 (Fed. Cir. 2008). Revised text to explain that the term "design patents" includes patents issued from design applications filed under 35 U.S.C. 111 and international design applications filed under 35 U.S.C. 385. —Updated 37 CFR 1.704 to include changes effective December 18, 2013 and added text to describe the December 18, 2013 amendments to 37 CFR 1.704(c)(12) and 1.704(f) with regard to possible PTA reduction if the application is not in condition for examination within 8 months of its filing date or commencement of the national stage under 35 U.S.C. 371(b) or (f). —Updated 37 CFR 1.703(b)(1) and 37 CFR 1.704(c)(10), (12), (13), and (14) and (d)(1) to include changes effective either January 9, 2015 or March 10, 2015. The changes pertain to patent term adjustment calculations when a request for continued examination is filed. Added text that briefly summarizes the regulatory changes. —Modified text to clarify the multiple amendments over the last three years to the provision that defines further prosecution via a continuing application as a circumstance constituting a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. —Added an Editor Note to explain the limited applicability of some paragraphs of 37 CFR 1.703.2731 —Modified text to clarify that the recent changes to 37 CFR 1.703(a)(1) apply to patents granted on or after January 14, 2013. —Updated 37 CFR 1.703(b)(1) to include changes effective January 9, 2015. The changes pertain to patent term adjustment calculations when a request for continued examination is filed and are set forth in the final rule Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee, 80 FR 1346 (January 9, 2015). Added text that further explains the regulatory change. Specifically, provided several paragraphs that discuss what the Office deems "time consumed by continued examination." —Revised to discuss Novartis AG v. Lee, 740 F.3d 593, 109 USPQ2d 1385 (Fed. Cir. 2014) which pertain to PTA calculations when a request for continued examination is filed. —Clarified that under 37 CFR 1.703(e), the provisions of 37 CFR 41.31 are applicable if the notice of allowance was issued prior to September 17, 2012 in order to define when jurisdiction passes from the Board.
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Added an Editor Note to explain the limited applicability of some paragraphs of 37 CFR 1.704.2732 —Updated 37 CFR 1.704 to include changes effective December 18, 2013 and added text to describe the December 18, 2013 amendments to 37 CFR 1.704(c)(12) and 1.704(f) with regard to possible PTA reduction if the application is not in condition for examination within 8 months of its filing or commencement of national stage under 35 U.S.C. 371(b) or (f). —Updated 37 CFR 1.704(c)(10), (12), (13), and (14) and (d)(1) to include changes effective March 10, 2015. The changes pertain to patent term adjustment calculations when a request for continued examination is filed and are from the final rule Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee, 80 FR 1346 (January 9, 2015). Added text that discusses the regulatory changes. Specifically, modified the paragraphs discussing 37 CFR 1.704(c)(10) to indicate whether certain papers filed after a notice of allowance will or will not result in a reduction of any earned adjustment under 37 CFR 1.703; added several paragraphs to explain the new provision in 37 CFR 1.704(c)(12); and added a paragraph to explain the changes made to 37 CFR 1.704(d)(1). —Added reference to Gilead Sciences Inc. v. Lee, 778 F.3d 1341, 113 USPQ2d 1837 (Fed. Cir. 2015), which held that submission of an information disclosure statement after a reply to a restriction requirement and prior to an Office action, without a safe harbor statement under 37 CFR 1.704(d), is an applicant delay under 37 CFR 1.704(c)(8). —Modified to clarify that under 37 CFR 1.704(c)(10), the applicant delay (if any) would end on the date the patent issues if the Office does not mail a response to the applicant's post-allowance paper and the patent issues in less than four months from the applicant's post-allowance paper. —Added reference to Mohsenzadeh v. Lee, 115 USPQ2d 1483 (Fed. Cir. 2015) which held that PTA accrued in a parent application does not carry over to a continuing or divisional application. —Added an Editor Note to state the applicability of 37 CFR 1.705(a) based upon the effective date of the AIA Technical Corrections Act (Public Law 112-274).
2733
—Included a citation to Treatment of Letters Stating That the USPTO's Patent Term Adjustment Determination Is Greater Than What the Applicant or Patentee Believes Is Appropriate, 75 FR 42079 (July 20, 2010), 1357 OG 262 (August 24, 2010) to support the already stated policy that the Office will not act on letters from patentees stating that the patent term adjustment is greater than what they expected. —Added an Editor Note to state the applicability of 37 CFR 1.705(b) and (c) based upon the effective date of the AIA Technical Corrections Act (Public Law 112-274).
2734
Redesignated the former introductory text as subsection I. Office Procedure for the Treatment of Requests for Reconsideration of Patent Term Adjustment. In subsection I, added text to explicitly explain the Office's procedure of handling requests for reconsideration of patent term adjustment. For example, the text discusses the possible actions if the Office finds that the patent term adjustment printed on the patent is correct or incorrect. In addition, added a discussion of Novartis AG v. Lee, 740 F.3d 539, 109 USPQ2d 1385 (Fed. Cir. 2014), which held that there was not equitable tolling of the 180 day period to file a civil action in district court and Bristol-Myers Squibb Co. v. Kappos, 891 F.Supp.2d 135 (D.D.C. 2012), which did toll the same 180 day period because patentee timely requested reconsideration of the PTA determinations by the Office. —Redesignated former subsection I as subsection II. In subsection II, added text to clarify when a request for reinstatement under 37 CFR 1.705(c) must be filed in comparison to a request for reconsideration under 37 CFR 1.705(b). —Added new subsection III to describe an optional procedure to request recalculation of the patent term adjustment for patents that meet the following criteria: (1) issued between January 14, 2013 and May 20, 2014; and (2) resulted directly from international applications (e.g., applications that entered the national stage under 35 U.S.C. 371). Any requests under this optional procedure must have been filed prior to July 31, 2014. Form PTO/SB/132 can be used to make a request under this optional procedure and a copy of the form is reproduced.
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—Added an Editor Note to state the applicability of 37 CFR 1.705(d) is based upon the effective date of the AIA Technical Corrections Act (Public Law 112-274).
2736
Clarified text in regard to which provision of 37 CFR 1.705 applies depending on whether the patent was granted on/after January 14, 2013 or prior to January 14, 2013. —Corrected 35 U.S.C. 156 by adding the phrase "which claims … the approved product" in paragraph (d)(1)(B) and the last two sentences in paragraph (d)(1)(E) regarding the date on which a product receives permission.
2752
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CHAPTER 2800:
—Replaced form PTO/SB/81B and references thereto with form PTO/AIA/81B, which is an updated version of form PTO/SB/81B.
2805
—In the second paragraph, changed "supplemental reexamination" to "supplemental examination" in order to use proper nomenclature.
2806
—Added subsections I and II. Text previously in the section is moved to new subsection I. Added subsection II to discuss policies and procedures on making a determination on the request for supplemental examination when litigation is copending.
2816
—Changed "SNQ" to "substantial new question of patentability" in several locations.2816.02 —In subsection I, modified text to make the SNQ determination discussion consistent with MPEP § 2242 as amended in this revision of the MPEP. For example, changed "earlier examination" to "earlier concluded examination or review" and expanded its definition to include new proceedings, such as supplemental examination and post-grant reviews by the Board. —Updated form PTO-2302 to the current version.2818.01 —In the first sentence, changed "supplemental reexamination" to "supplemental examination" in order to use proper nomenclature.
2821
—Changed "SNQ" to "substantial new question of patentability."
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CHAPTER 2900:
Chapter 2900 is newly added to the MPEP and provides guidance related to international design applications.
—Provides a general overview of the Hague Agreement Concerning the International Registration of Industrial Designs. Discusses the flow of an international design application
2901
from filing to formal examination, registration, and publication by the International Bureau, and examination by the Offices of the designated Contracting Parties. —References 35 U.S.C. 381, 37 CFR 1.9 and 1.1011, Article 1 of the Hague Agreement, and Rule 1 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague
2902
Agreement for definitions of relevant terms. States that within the context of Chapter 2900, "Article" means an article of the Hague Agreement; "Rule" means a rule under the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement and "Administrative Instruction" means the Administrative Instruction for the Application of the Hague Agreement referred to in Rule 34. —Discusses the specific declarations made by the United States under the Hague Agreement where the United States is designated in an international design application.
2903
—Reproduces and discusses Hague Article 3 regarding who is entitled to file an international design application.
2904
—Reproduces and discusses Hague Article 4, which indicates that an international design application may be filed either directly with the International Bureau or indirectly with an applicant's Contracting Party.
2905
—Reproduces 35 U.S.C. 382, and 37 CFR 1.1002, 1.1011, 1.1012, and 1.1045 and discusses procedures for filing through the USPTO as an office of indirect filing.
2905.01
—Explains that international design applications may be filed via EFS-Web, mail, or hand delivery to the Customer Service Window at the USPTO Alexandria headquarters. Explains
that the Priority Mail Express® provisions of 37 CFR 1.10 apply to international design applications, but international design applications are excluded from Certificate of Mailing or Transmission procedures of 37 CFR 1.8. —Reproduces Hague Article 9, Hague Rules 6, 13 and 14, and discusses the requirements for according a filing date to an international design application.
2906
—Reproduces relevant portions of Hague Articles 5 and 10, Hague Rule 15, and discusses international registration and date of international registration.
2907
—Reproduces and discusses 35 U.S.C. 381 and 384, and 37 CFR 1.1023, directed to the filing date of an international design application in the United States.
2908
—Reproduces Hague Article 5, Hague Rule 7, 35 U.S.C. 383, and 37 CFR 1.1021, directed to the contents of the international design application.
2909
—Subsection I discusses mandatory contents required in all international design applications. —Subsection II discusses additional mandatory contents required by certain Contracting Parties. —Subsection III discusses optional contents as addressed in Hague Rule 7(5) and 37 CFR 1.1021(c). —Subsection IV is directed to the contents required of international applications designating the United States. —Reproduces 37 CFR 1.1022, sets forth relevant portions of Hague Rules 1 and 7, and discusses the requirement that international design applications must be presented on the forms established
2909.01
by the International Bureau, an electronic interface made available by the International Bureau, or any form or electronic interface having the same contents and format.
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—Discusses the requirements of reproductions (drawings) in the context of 37 CFR 1.1026, Hague Rule 9 and Hague Administrative Instructions 401-405.
2909.02
—Discusses the filing of reproductions, including drawings, photographs, or combinations thereof, with the USPTO through EFS-Web.
2902.02(a)
—Discusses where annex forms may be accessed and that annex forms specific to the designation of the USPTO include those for submitting the inventor's oath or declaration, information disclosure statements, and certification of micro entity status.
2909.03
—Reproduces and discusses 37 CFR 1.1031 and Hague Rule 12 as related to the payment of fees. Subsection I discusses the transmittal fee. Subsection II discusses payment of the basic
2910
fee, publication fee, designation fee, and individual designation fee required by the USPTO. Subsection III discusses the payment of fees payable to the International Bureau through the USPTO as an office of indirect filing. —Reproduces and discusses 37 CFR 1.1041 and Hague Rule 3 with respect to who may represent an applicant before the International Bureau. Emphasizes that a representative of an
2911
applicant before the USPTO as an office of indirect filing must be a practitioner registered in compliance with 37 CFR 11.6 or granted a limited recognition to practice under 37 CFR 11.9(a) or (b). —Reproduces and discusses 37 CFR 1.1042 and Hague Administrative Instruction 302 with respect to establishing a correspondence address for the applicant.
2912
—Reproduces 35 U.S.C. 387 and 37 CFR 1.1051. Discusses the manner by which an applicant may petition to excuse, with respect to the United States, applicant's failure to act within
2913
prescribed time limits under the Hague Agreement where the delay in applicant's failure to act was unintentional. —Reproduces 35 U.S.C. 384 and 37 CFR 1.1052. Discusses the process by which an applicant may petition for the conversion of an international design application designating the United States to a design application filed under 35 U.S.C. chapter 16.
2914
—Reserved for future use.2915-2919 —Reproduces 35 U.S.C. 389, and select paragraphs of 37 CFR 1.9, Hague Article 10, Hague Article 12, and Hague Article 14. Explains that upon receipt of the publication under Hague
2920
Article 10(3), the Office will establish an application file for an international design application which designates the United States and examine said application in due course. —Reproduces 37 CFR 1.41(f). Discusses the requirements under 37 CFR 1.48 for requests for correction of inventorship and requests to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors.
2920.01
—Explains that the rules governing the applicant set forth in 37 CFR 1.42-1.46 are generally applicable to nonprovisional international design applications.
2920.02
—Reproduces 37 CFR 1.1066 and discusses how the Office will establish a correspondence address.
2920.03
—Section title only.2920.04 —Discusses the requirements for the specification of a nonprovisional international design application.
2920.04(a)
—Subsection I discusses the requirements for the title and reproduces form paragraphs 15.05.01 and 15.59 for use by examiners. —Subsection II discusses description requirements and explains that statements in the specification of a design application filed under 35 U.S.C. chapter 16 are also generally permissible in the specification of a nonprovisional international design application. Also discusses the use of broken lines in nonprovisional international design applications.
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—Subsection III reproduces and discusses 37 CFR 1.1025. Explains that a design application may only include one claim and explains the proper terminology required for the claim. —Reproduces 37 CFR 1.1026. Discusses the formal requirements for reproductions in nonprovisional international design applications. Explains that reproductions may be submitted
2920.04(b)
in either black and white or color. Sets forth form paragraphs for use by examiners when reproductions are objected to or include matter not forming part of the claimed design. —Reproduces 37 CFR 1.1021(d)(3) and 37 CFR 1.1067(b). Explains that international design applications that designate the United States are required to contain an inventor's oath or
2920.04(c)
declaration. The International Bureau reviews the international design application designating the United States to ensure that the required inventor's oath or declaration is provided. —Reproduces 35 U.S.C. 389 and 37 CFR 1.1062 and 1.1063. Discusses similarities and differences in examination practice for nonprovisional international design applications and design applications filed under 35 U.S.C. chapter 16.
2920.05
—Reproduces portions of Hague Rules 12 and 18, and 37 CFR 1.1063. Discusses the Notification of Refusal.
2920.05(a)
—Reproduces Hague Article 13 and 37 CFR 1.1064. Explains that only one independent and distinct design may be claimed in each nonprovisional international design application.
2920.05(b)
—Explains that the requirements of 35 U.S.C. 112(a) and (b) apply to nonprovisional international design applications. Sets forth form paragraphs for use by examiners when making rejections under 35 U.S.C. 112(b).
2920.05(c)
—Reproduces 35 U.S.C. 386 and 37 CFR 1.55, and discusses foreign priority claims.2920.05(d) —Reproduces 35 U.S.C. 386(c) and 37 CFR 1.78(a), (d), and (e), and discusses domestic benefit claims.
2920.05(e)
—Explains that applicants for international design applications are subject to the duty to disclose information material to patentability as defined in 37 CFR 1.56, and discusses filing of an information disclosure statement in an international design application.
2920.05(f)
—Explains the procedure to be followed when a nonprovisional international design application is in condition for allowance.
2920.06
—Reserved for future use.2921-2929 —Reproduces Hague Rule 22, Hague Article 16, and 37 CFR 1.1065. Explains the process by which an applicant may request correction or other change in an international design registration.
2930
—Reserved for future use.2931-2939 —Reproduces Hague Rule 18 bis and 37 CFR 1.1068 and explains that upon issuance of a patent on a nonprovisional international design application, the Office will send to the International Bureau a statement that protection has been granted in the United States.
2940
—Reserved for future use.2941-2949 —Reproduces 35 U.S.C. 389, 35 U.S.C. 173, 37 CFR 1.1071 and 37 CFR 1.1031. Explains that a grant of protection for an industrial design that is the subject of an international
2950
registration shall only arise in the United States through the issuance of a patent pursuant to 35 U.S.C. 389(d) or 171, and in accordance with 35 U.S.C. 153.
124Rev. 07.2015, November 2015
MANUAL OF PATENT EXAMINING PROCEDURE
CHAPTER FPC:
Chapter FPC is newly added to the MPEP and provides a consolidated listing of the form paragraphs of the MPEP. The FPC sections within this chapter are organized by form paragraph number, and do not necessarily correspond to the chapters of the MPEP in which the form paragraphs appear.
Rev. 07.2015, November 2015125
CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
Manual of PATENT EXAMINING PROCEDURE
Original Ninth Edition, March 2014
Latest Revision November 2015 [R-07.2015]
U.S. DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Rev. 07.2015, November 2015
AVAILABILITY
The paperbound format of the Manual was discontinued by the Government Publishing Office effective December 13, 2012. The Manual is available electronically in html and PDF renderings on the USPTO website at www.uspto.gov/web/offices/pac/mpep/. The Office also provides a search engine for searching the full text of the Manual at http://mpep.uspto.gov/RDMS.
Most hyperlinks from the Manual to internal and external websites are active. For particularly long website addresses (URLs), an extra space has been added to the rendered text for readability (especially in the PDF rendering). Clicking on a hyperlink will direct the user to the referenced website because the reference link data in the source document includes the URL without the extra space; however, copying text that includes the extra space and thereafter pasting it in a browser will result in an error.
Previous editions and revisions of the Manual are available from the MPEP Archives page on the USPTO website at www.uspto.gov/web/offices/pac/mpep/old/index.htm.
EXPLANATION OF NOTATIONS
Revision Date Indicator. Each section within an MPEP Chapter includes a revision date indicator, e.g., [R-07.2015]. The numbers within the bracket indicate the date the revision cycle for that section was completed, which would be July 2015 in the example above. Note that the publication date of the Manual as indicated on the title page and on the bottom of the PDF renderings may be later than the date the revision cycle was completed because of the time required for clearance processes.
"Pre-AIA." Where the phrase "pre-AIA" is associated with a law or rule, it means that version which was in force before the date of the change necessitated by the Leahy-Smith America Invents Act (AIA), Public Law 112-29, 125 Stat. 284.
"Pre-PLT" or pre-PLT (AIA)." Where the phrase "pre-PLT" or "pre-PLT (AIA)" is associated with a law or rule, it means that version which was in force before the date of the change necessitated by the Patent Law Treaties Implementation Act of 2012, Title II (Patent Law Treaty Implementation (PLT)), Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012). Note that the "pre-PLT (AIA)" designation is used when there is also a "pre-AIA" version of the law or rule that still has applicability in limited circumstances.
Five Asterisks. The use of five asterisks in the body of the laws, rules, treaties, and administrative instructions indicates a portion of the law, rule, treaty, or administrative instruction which was not reproduced.
First Edition, November 1949 Second Edition, November 1953 Third Edition, November 1961 Fourth Edition, June 1979 Fifth Edition, August 1983 Sixth Edition, January 1995 Seventh Edition, July 1998 Eighth Edition, August 2001
Final Revision, August 2012 Ninth Edition, March 2014 [R-11.2013]
Revised, October 2015 [R-07.2015] Revised, November 2015 [R-07.2015]
Rev. 07.2015, November 2015
Foreword
This Manual is published to provide U.S. Patent and Trademark Office (USPTO) patent examiners, applicants, attorneys, agents, and representatives of applicants with a reference work on the practices and procedures relative to the prosecution of patent applications before the USPTO. It contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application. The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations.
A separate manual entitled “Trademark Manual of Examining Procedure” is published by the USPTO as a reference work for trademark cases.
Examiners will be governed by the applicable statutes, rules, decisions, and orders and instructions issued by the Director of the USPTO and other officials authorized by the Director of the USPTO.
Subsequent changes in practice and other revisions will be incorporated in the form of revisions to sections of chapters and/or to appendices of the Manual.
Suggestions for improving the form and content of the Manual are always welcome. They should be addressed to:
Mail Stop MPEP Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450
March 2014
INTRODUCTION
Constitutional Basis
The Constitution of the United States provides:
“Art. 1, Sec. 8. The Congress shall have power . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
Statutes
Pursuant to the provision of the Constitution, Congress has over the years passed a number of statutes under which the U.S. Patent and Trademark Office (USPTO) is organized and our patent system is established. The provisions of the statutes can in no way be changed or waived by the USPTO.
Prior to January 1, 1953, the law relating to patents consisted of various sections of the Revised Statutes of 1874, derived from the Patent Act of 1870 and numerous amendatory and additional acts.
By an Act of Congress approved July 19, 1952, which came into effect on January 1, 1953, the patent laws were revised and codified. The patent law is Title 35 of the United States Code which governs all cases in the USPTO. In referring to a particular section of the patent code the citation is given, for example, as, 35 U.S.C. 1. Title 35 of the United States Code is reproduced in Appendix L of the Manual of Patent Examining Procedure (MPEP). A copy of the consolidated patent laws is available on t h e U S P T O w e b s i t e a t w w w. u s p t o . g ov / w e b / o f fi c e s / p a c / m p e p / consolidated_laws.pdf.
35 U.S.C. 1 Establishment.
(a) ESTABLISHMENT.— The United States Patent and Trademark Office is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the United States Patent and Trademark Office shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law. Those
operations designed to grant and issue patents and those operations which are designed to facilitate the registration of trademarks shall be treated as separate operating units within the Office.
(b) OFFICES.— The United States Patent and Trademark Office shall maintain its principal office in the metropolitan Washington, D.C., area, for the service of process and papers and for the purpose of carrying out its functions. The United States Patent and Trademark Office shall be deemed, for purposes of venue in civil actions, to be a resident of the district in which its principal office is located, except where jurisdiction is otherwise provided by law. The United States Patent and Trademark Office may establish satellite offices in such other places in the United States as it considers necessary and appropriate in the conduct of its business.
(c) REFERENCE.— For purposes of this title, the United States Patent and Trademark Office shall also be referred to as the “Office” and the “Patent and Trademark Office.”
Rules
One of the sections of the patent statute, namely, 35 U.S.C. 2, authorizes the USPTO, subject to the policy direction of the Secretary of Commerce, to establish regulations, not inconsistent with law, for the conduct of proceedings in the USPTO.
These regulations or rules and amendments thereto are published in the Federal Register and in the Official Gazette. In the Federal Register and in the Code of Federal Regulations the rules pertaining to patents are in Parts 1, 3, 4, 5, 11, 41, 42, and 90 of Title 37, Patents, Trademarks, and Copyrights. In referring to a particular section of the rules the citation is given, for example, as 37 CFR 1.31. A booklet entitled “Code of Federal Regulations, Title 37, Patents, Trademarks, and Copyrights,” published by the Office of the Federal Register, contains all of the patent rules as well as trademark rules and copyright rules. Persons desiring a copy of this booklet should order a copy from the Superintendent of Documents. A copy of the consolidated patent rules is available on the USPTO website at w w w. u s p t o . g ov / w e b / o f fi c e s / p a c / m p e p / consolidated_rules.pdf.
The primary function of the rules is to advise the public of the rules which have been established in accordance with the statutes and which must be followed before the USPTO. The rules govern the examiners, as well as applicants and their attorneys
Rev. 07.2015, October 20151
and agents. The rules pertaining to patent practice appear in the MPEP as Appendix R.
Director’s Orders and Notices
From time to time, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, formerly the Commissioner of Patents and Trademarks, has issued Orders and Notices relating to various specific situations that have arisen in operating the USPTO. Notices and circulars of information or instructions have also been issued by other USPTO officials under authority of the Director. Orders and Notices have served various purposes including giving examiners instruction, information, interpretations, and the like. Others have been for the information of the public, advising what the USPTO will do under specified circumstances.
Decisions
In addition to the statutes and rules, the actions taken by the examiner in the examination of applications for patents are to a great extent governed by decisions on prior cases. Applicants dissatisfied with an examiner’s action may have it reviewed. In general, that portion of the examiner’s action pertaining to objections on formal matters may be reviewed by petition to the Director of the USPTO (see MPEP § 1002), and that portion of the examiner’s action pertaining to the rejection of claims on the merits may be reviewed by appeal to the Patent Trial and Appeal Board (see MPEP § 1201). The distinction is set forth in 37 CFR 1.181 and 1.191. In citing decisions as authority for his or her actions, the examiner should cite the decision in the manner set forth in MPEP § 707.06.
Publications Available from the U.S. Government Publishing Office
For current price and availability information, visit the U.S. Government Publishing Office (GPO) web site (http://bookstore.gpo.gov), call the GPO Order
Desk (202-512-1800 or 1-866-512-1800), or send a fax to 202-512-2104.
Products and Services Available From the U.S. Patent and Trademark Office
Patent and trademark related products and services available from the USPTO are described on the electronic data products page of the USPTO’s website (www.uspto.gov/learning-and-resources/ electronic-bulk-data-products).
Call 800-786-9199 for information on Patent, Trademark, and General Products. Customer Service Representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 8:00 p.m.
For further information on electronic information products, contact:
Electronic Information Products Division EIPD, Randolph Square 2800 S. Randolph Street Arlington, VA 22206Telephone: 571-272-5600 Fax: 571-273-0110 E-mail: ipd@uspto.gov
For further information on patent and trademark copy/document sales, contact:
Office of Public Records (OPR) Customer Service Telephone: 571-272-3150 or 800-972-6382 Fax: 571-273-3250 Email: dsd@uspto.gov Website: http://ebiz1.uspto.gov/oems25p/index.html
See MPEP § 1730 for additional information sources.
2Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
-1Change Summary ..............................................................................................................................................
-1Title Page ...........................................................................................................................................................
-1Foreword ............................................................................................................................................................
-1Introduction .......................................................................................................................................................
100-1Secrecy, Access, National Security, and Foreign Filing ..............................................................................................................100
200-1Types, Cross-Noting, and Status of Application ..........................................................................................................................200
300-1Ownership and Assignment .........................................................................................................................................................300
400-1Representative of Applicant or Owner ........................................................................................................................................400
500-1Receipt and Handling of Mail and Papers ...................................................................................................................................500
600-1Parts, Form, and Content of Application .....................................................................................................................................600
700-1Examination of Applications .......................................................................................................................................................700
800-1Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting ................................................................................800
900-1Prior Art, Classification, and Search ...........................................................................................................................................900
1000-1Matters Decided by Various U.S. Patent and Trademark Office Officials ................................................................................1000
1100-1Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions ..................................1100
1200-1Appeal ........................................................................................................................................................................................1200
1300-1Allowance and Issue ..................................................................................................................................................................1300
1400-1Correction of Patents .................................................................................................................................................................1400
1500-1Design Patents ...........................................................................................................................................................................1500
1600-1Plant Patents ..............................................................................................................................................................................1600
1700-1Miscellaneous ............................................................................................................................................................................1700
1800-1Patent Cooperation Treaty .........................................................................................................................................................1800
1900-1Protest ........................................................................................................................................................................................1900
2000-1Duty of Disclosure .....................................................................................................................................................................2000
2100-1Patentability ...............................................................................................................................................................................2100
2200-1Citation of Prior Art and Ex Parte Reexamination of Patents ...................................................................................................2200
2300-1Interference Proceedings ...........................................................................................................................................................2300
2400-1Biotechnology ............................................................................................................................................................................2400
2500-1Maintenance Fees ......................................................................................................................................................................2500
2600-1Optional Inter Partes Reexamination .........................................................................................................................................2600
2700-1Patent Terms and Extensions .....................................................................................................................................................2700
2800-1Supplemental Examination ........................................................................................................................................................2800
2900-1International Design Applications .............................................................................................................................................2900
FPC-1Form Paragraphs Consolidated ...................................................................................................................................................FPC
I-1Appendix I: [Reserved] ....................................................................................................................................I
II-1Appendix II: List of Decisions Cited ..............................................................................................................II
L-1Appendix L: Patent Laws ................................................................................................................................L
R-1Appendix R: Patent Rules ...............................................................................................................................R
T-1Appendix T: Patent Cooperation Treaty and Regulations Under the PCT ......................................................T
AI-1Appendix AI: Administrative Instructions Under the PCT ...........................................................................AI
P-1Appendix P: Paris Convention ........................................................................................................................P
Rev. 07.2015, November 2015
Table of Contents
PageChapter
Subject Matter Index ................................................................................................................................Index-1Index
Rev. 07.2015, November 2015
Table of Contents
PageChapter
Chapter 100 Secrecy, Access, National Security, and Foreign Filing
General101 Information as to Status of an Application
102
Right of Public To Inspect Patent Files and Some Application Files
103
Power to Inspect Application104 Suspended or Excluded Practitioner Cannot Inspect
105
Control of Inspection by Assignee106 Rights of Assignee of Part Interest106.01
[Reserved]107-109 Confidential Nature of International Applications
110
[Reserved]111-114 Review of Applications for National Security and Property Rights Issues
115
[Reserved]116-119 Secrecy Orders120 Handling ofApplications under Secrecy Order and/or Bearing National Security Markings
121
[Reserved]122-129 Examination of Secrecy Order Cases130 [Reserved]131-139 Foreign Filing Licenses140 [Reserved]141-149 Statements to DOE and NASA150 Content of the Statements151
101 General [R-07.2015]
35 U.S.C. 122 Confidential status of applications; publication of patent applications.
(a) CONFIDENTIALITY.— Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.
(b) PUBLICATION.—
(1) IN GENERAL.—
(A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.
(B) No information concerning published patent applications shall be made available to the public except as the Director determines.
(C) Notwithstanding any other provision of law, a determination by the Director to release or not to release information concerning a published patent application shall be final and nonreviewable.
(2) EXCEPTIONS.—
(A) An application shall not be published if that application is—
(i) no longer pending;
(ii) subject to a secrecy order under section 181 ;
(iii) a provisional application filed under section 111(b); or
(iv) an application for a design patent filed under chapter 16.
(B)(i) If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, the application shall not be published as provided in paragraph (1).
(ii) An applicant may rescind a request made under clause (i) at any time.
(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned.
(iv) If an applicant rescinds a request made under clause (i) or notifies the Director that an application was filed in a foreign country or under a multilateral international agreement specified in clause (i), the application shall be published in accordance with the provisions of paragraph (1) on or as soon as is practical after the date that is specified in clause (i).
(v) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign filed applications corresponding to an application filed in the Patent and Trademark Office or the description of the invention in such foreign filed applications is less extensive than the application or description of the invention in the application filed in the Patent and Trademark Office, the applicant may submit a
Rev. 07.2015, October 2015100-1
redacted copy of the application filed in the Patent and Trademark Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding applications filed in a foreign country. The Director may only publish the redacted copy of the application unless the redacted copy of the application is not received within 16 months after the earliest effective filing date for which a benefit is sought under this title. The provisions of section 154(d) shall not apply to a claim if the description of the invention published in the redacted application filed under this clause with respect to the claim does not enable a person skilled in the art to make and use the subject matter of the claim.
(c) PROTEST AND PRE-ISSUANCE OPPOSITION.— The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.
(d) NATIONAL SECURITY.— No application for patent shall be published under subsection (b)(1) if the publication or disclosure of such invention would be detrimental to the national security. The Director shall establish appropriate procedures to ensure that such applications are promptly identified and the secrecy of such inventions is maintained in accordance with chapter 17 .
(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—
(1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—
(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
(B) the later of—
(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or
(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.
(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—
(A) set forth a concise description of the asserted relevance of each submitted document;
(B) be accompanied by such fee as the Director may prescribe; and
(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.
18 U.S.C. 2071 Concealment, removal, or mutilation generally.
(a) Whoever willfully and unlawfully conceals, removes, mutilates, obliterates, or destroys, or attempts to do so, or, with intent to do so takes and carries away any record, proceeding, map, book, paper, document, or other thing, filed or deposited with any clerk or officer of any court of the United States, or in any public office, or with any judicial or public officer of the United States, shall be fined under this title or imprisoned not more than three years, or both.
(b) Whoever, having the custody of any such record, proceeding, map, book, document, paper, or other thing, willfully and unlawfully conceals, removes, mutilates, obliterates, falsifies, or destroys the same, shall be fined under this title or imprisoned not more than three years, or both; and shall forfeit his office and be disqualified from holding any office under the United States. As used in this subsection, the term “office” does not include the office held by any person as a retired officer of the Armed Forces of the United States.
37 CFR 1.11 Files open to the public.
(a) The specification, drawings, and all papers relating to the file of: A published application; a patent; or a statutory invention registration are open to inspection by the public, and copies may be obtained upon the payment of the fee set forth in § 1.19(b)(2). If an application was published in redacted form pursuant to § 1.217, the complete file wrapper and contents of the patent application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; and the application is still pending. See § 2.27 of this title for trademark files.
*****
37 CFR 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
(1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
(i) Patented applications and statutory invention registrations. The file of an application that has issued as a patent or published as a statutory invention registration is available to the public as set forth in § 1.11. A copy of the patent application-as-filed, the file contents of the application, or a specific document in the file of such an application may be provided upon request and payment of the appropriate fee set forth in § 1.19(b).
100-2Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 101
(ii) Published abandoned applications. The file of an abandoned published application is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b).
(iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (i) of this section.
(iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title, and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)).
(v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed, or a specific document in the file of the pending application may also be provided to any person upon
written request and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified . A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
(vii) When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (i)) or a power to inspect (see paragraph (c) of this section) is necessary to obtain the application, or a copy of the application.
(2) Information concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public ( i.e., status information) includes:
(i) Whether the application is pending, abandoned, or patented;
(ii) Whether the application has been published under 35 U.S.C. 122(b);
(iii) The application “numerical identifier” which may be:
(A) The eight-digit application number (the two-digit series code plus the six-digit serial number); or
Rev. 07.2015, October 2015100-3
§ 101SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING
(B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and
(iv) Whether another application claims the benefit of the application ( i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121, 365, or 386 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications ( e.g., continuation), whether the application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b).
*****
All U.S. Patent and Trademark Office employees are legally obligated to preserve pending applications for patents in confidence until they are published or patented in accordance with 35 U.S.C. 122 and 37 CFR 1.14. 35 U.S.C. 122 and 18 U.S.C. 2071 impose statutory requirements which cover the handling of patent applications and related documents. Suspension, removal, and even criminal penalties may be imposed for violations of these statutes.
Any employee having custody of a patent application or related documents will be responsible for maintaining confidentiality and otherwise conforming with the requirements of law. No part of any application or paper related thereto should be reproduced or copied except for official purposes. Application files must not be displayed or handled so as to permit perusal or inspection by any unauthorized member of the public.
Whenever an application, or an artifact file in an Image File Wrapper (IFW) application, is removed from the operating area having custody of the file, a charge on the PALM system must be properly and promptly made. Applications, artifact files, and official papers for which there is no electronic file must not be placed in desk drawers or other locations where they might be easily overlooked or are not visible to authorized personnel. Interoffice mail must be sent in appropriate envelopes.
Official papers are accepted only at the Customer Service Window, except for certain papers that have been specifically exempted from the central delivery policy. See MPEP § 502. Appropriate corrective
action for IFW messages with faulty identifications or incorrect routing should be taken at once to ensure the prompt receipt thereof at the appropriate destination.
All U.S. Patent and Trademark Office employees should bear in mind at all times the critical importance of ensuring the confidentiality and accessibility of patent application files and related documents, and in addition to the specific procedures referred to above, should take all appropriate action to that end.
Examiners, classifiers, and other U.S. Patent and Trademark Office employees who assist public searchers by outlining or indicating a field of search, should also bear in mind the critical importance of ensuring the confidentiality of information revealed by a searcher when requesting field of search assistance. See MPEP § 1701. Statutory requirements and curbs regarding the use of information obtained by an employee through government employment are imposed by 5 U.S.C. 2635.701- 2635.703 and 18 U.S.C. 1905.
Examiners, while holding interviews with attorneys and applicants, should be careful to prevent exposures of files and drawings of other applicants.
Extreme care should be taken to prevent inadvertent and/or inappropriate disclosure of the filing date or application number of any application. This applies not only to Office actions but also to notes in the file or in the artifact folder of IFW applications.
TELEPHONE AND IN-PERSON REQUESTS FOR INFORMATION CONCERNING PENDING OR ABANDONED APPLICATIONS
37 CFR 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
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(2) Information concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application
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as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public ( i.e., status information) includes:
(i) Whether the application is pending, abandoned, or patented;
(ii) Whether the application has been published under 35 U.S.C. 122(b);
(iii) The application “numerical identifier” which may be:
(A) The eight-digit application number (the two-digit series code plus the six-digit serial number); or
(B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and
(iv) Whether another application claims the benefit of the application ( i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121, 365, or 386 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications ( e.g., continuation), whether the application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b).
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Except as provided in 35 U.S.C. 122(b), no information concerning pending or abandoned patent applications (except applications which have been published, reissue applications and reexamination proceedings) may be given to the public without appropriate written authorization. See 35 U.S.C. 122 and 37 CFR 1.14.
When handling an incoming telephone call or an in-person request for information regarding an unpublished pending or abandoned patent application, no information should be disclosed until the identity of the requester can be adequately verified as set forth below. Particular care must be exercised when a request is made for the publication date or publication number, or issue date and patent number assigned to a pending patent application. If the publication or issue date is later than the current date (i.e., the date of the request), such information may be given only to the applicant, an inventor, the assignee of record, or the attorney or agent of record.
The following procedure should be followed before any information about an unpublished pending or
abandoned patent application is given over the telephone:
(A) Obtain the caller’s full name, the application number, and the caller’s telephone number. Ask the caller if there is a patent practitioner (attorney or agent) of record.
(1) If there is a patent practitioner of record, ask for his or her registration number. If the registration number is not known, ask for the name of the patent practitioner of record. Inform the caller that a patent practitioner of record will be called after verification of his/her identity and that information concerning the application will be released to that patent practitioner.
(2) If there is no patent practitioner of record, ask the caller why he or she is entitled to information concerning the application. If the caller identifies himself or herself as inventor, an applicant or an authorized representative of the assignee of record, ask for the correspondence address of record and inform caller that his or her association with the application must be verified before any information concerning the application can be released and that he or she will be called back. If the caller indicates that he or she is not an inventor, applicant or an authorized representative of the assignee of record then status information may only be given pursuant to MPEP § 102.
(B) Verify that information concerning the application can be released by checking PALM or the application file.
(1) If the caller stated there was a patent practitioner of record, PALM intranet should be used to verify the registration number given or to obtain the registration number of a patent practitioner of record. Then PALM intranet (using the registration number) should be used to obtain a telephone number for a patent practitioner of record.
(2) If the caller identified himself or herself as an inventor, applicant or an authorized representative of the assignee of record, PALM intranet should be used to verify the correspondence address of record. PALM intranet should be used to determine if there is a patent practitioner of record. If there is a patent practitioner of record, their telephone number can be obtained from PALM intranet.
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(C) Return the call using the telephone number as specified below.
(1) If a patent practitioner is of record in the application, information concerning the application should only be released by calling the patent practitioner's telephone number obtained from PALM intranet.
(2) If the inventor, applicant or an authorized representative of the assignee of record requests information, and there is no patent practitioner of record and the correspondence address of record has been verified, information concerning the application can be released to the caller using the telephone number given by the caller. If the caller’s association with the application cannot be verified, no information concerning the application will be released. However, the caller should be informed that the caller’s association with the application could not be verified.
In handling an in-person request, ask the requester to wait while verifying their identification as in (B) above.
102 Information as to Status of an Application [R-07.2015]
37 CFR 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
(1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
(i) Patented applications and statutory invention registrations. The file of an application that has issued as a patent or published as a statutory invention registration is available to the public as set forth in §1.11(a). A copy of the patent application-as-filed, the file contents of the application, or a specific document in the file of such an application may be provided upon request and payment of the appropriate fee set forth in § 1.19(b).
(ii) Published abandoned applications. The file of an abandoned published application is available to the public as set forth in §1.11(a) . A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published application may be provided to any
person upon request and payment of the appropriate fee set forth in § 1.19(b) .
(iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b) . If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (i) of this section.
(iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title, and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e) ,120 , 121 , 365(c), or 386(c) in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b) ).
(v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed or a specific document in the file of the pending application may also be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
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(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
(vii) When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (i)) or a power to inspect (see paragraph (c) of this section) is necessary to obtain the application, or a copy of the application.
(2) Information concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public ( i.e., status information) includes:
(i) Whether the application is pending, abandoned, or patented;
(ii) Whether the application has been published under 35 U.S.C. 122(b);
(iii) The application “numerical identifier” which may be:
(A) The eight-digit application number (the two-digit series code plus the six-digit serial number); or
(B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and
(iv) Whether another application claims the benefit of the application ( i.e., whether there are any applications that
claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121, 365, or 386 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications ( e.g., continuation), whether the application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b).
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Status information of an application means only the following information:
(A) whether the application is pending, abandoned, or patented;
(B) whether the application has been published;
(C) the application number or the serial number plus any one of the filing date of the national application, the international filing date or the date of entry into the national stage; and
(D) whether another application claims the benefit of the application (i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121, 365, or 386 of the application), and if there are any such applications, status information therefor as set forth in 37 CFR 1.14(a)(2)(iv).
A requester seeking status information regarding an application should check the Patent Application Information Retrieval (PAIR) system on the USPTO website at www.uspto.gov/learning-and-resources/ support-centers/patent-electronic-business-center. Alternatively, the requester may contact the File Information Unit (see MPEP § 1730). The File Information Unit (FIU) will check the relevant Office records and will inform the requester whether the application has been published or has issued as a patent. If the application has been published, the FIU will inform the requester of the publication number and publication date, and if the application has issued as a patent, the patent number, issue date and classification. If the application has not been published, but is pending or abandoned then the FIU should determine whether the requester is:
(1) the applicant;
(2) a patent practitioner of record;
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(3) the assignee or an assignee of an undivided part interest;
(4) the inventor or a joint inventor; or
(5) a registered attorney or agent named in the papers accompanying the application papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495, if a power of attorney has not been appointed under 37 CFR 1.32.
If the requester is any of (1) - (5) as set forth above, or if the application contains written authority granting access to the requester signed by any of (1) - (5) as set forth above, then the requester is entitled to status information. See 37 CFR 1.14(c) and MPEP § 104 for additional information pertaining to who can provide written authority granting access to such information. If the requester is inquiring about whether a reply was received or when an Office action can be expected, the requester should be directed to call the Technology Center (TC) to which the application is assigned. The assignment of an application to a TC can be determined from PALM intranet.
If the requester is not any of (1) - (5) or a person with written authority from any of (1) - (5) as set forth above, and the application is (1) identified by application number (or serial number and filing date) in a published patent document, or (2) an application claiming the benefit of the filing date of an application identified by application number (or serial number and filing date) in a published patent document, then a written request including a copy of a published patent document (United States or foreign) which refers to the specific application must be provided when requesting status information for the application. If the published patent document is not in English, then a translation of the pertinent part thereof must also be included. The published patent document may be presented in person to the FIU or in written correspondence to the U.S. Patent and Trademark Office, for example, by facsimile transmission. Any written correspondence must include a return address or facsimile number. If the application is referred to by application number or serial number and filing date in a published patent document (e.g., a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international application publication or an international design application), or in a U.S.
application open to public inspection, pursuant to 37 CFR 1.14(a), the requester is entitled to status information for the application. (The published patent document will at least identify the application from which the patent itself was issued.) PALM intranet should be used to determine the status of the application. If the requester asks whether there are any applications on file which claim the benefit of the filing date of the identified application, pursuant to 37 CFR 1.14(a)(2)(iv), status information (application number, filing date and whether the application is pending, abandoned or patented) for the applications claiming benefit of the identified application may be given to the requester as well. PALM intranet should be used to determine the application number and filing date of any applications claiming the benefit of the filing date of the identified application. The requester should be informed of the national applications listed in the “child” section of the screen. If the child application is not shown to have been patented , PALM intranet should be used to determine whether the application is pending or abandoned. Alternatively, PALM intranet may be used with the patent number for continuity data for the patent. Other information contained on the screen, such as whether the application is a Continuation-in-Part (CIP), continuation or divisional application, the date of abandonment of the application, and the issue date, may be confidential information and should not be communicated. As to the extent of the chain of applications for which status information is available, the rule applies only to subsequent and not prior applications.
Furthermore, if the requester is not any of (1) - (5) or a person with written authority from any of (1) - (5) as set forth above, but the application is a national stage application or any application claiming the benefit of the filing date of a published international application and the United States of America has been indicated as a Designated State in the international application, pursuant to 37 CFR 1.14(a)(2)(iv), the requester is entitled to status information for the national stage application as well as any application claiming the benefit of the filing date of the published international application. A copy of the first page of the published international application or of the corresponding page of the PCT Gazette must be supplied with the status request.
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The status request should be made in writing to the International Patent LegalAdministration (see MPEP § 1730). Alternatively, inquiries relating to applications claiming the benefit of the filing date of a published international application may be directed to the PCT Help desk. Only the serial number and filing date, or application number, as well as whether the application is pending, abandoned, or patented may be given for the national stage application and for any applications claiming the benefit of the filing date of the referenced published international application. Other information contained on the continuity data screen, such as whether the application is a CIP, continuation or divisional application, the date of abandonment of the application and issue date may be confidential information and should not be communicated.
If the requester is not any of (1) - (5) or a person with written authority from any of (1) - (5) as set forth above, but the application is an international design application maintained by the Office in its capacity as a designated office (37 CFR 1.1003) for national processing, pursuant to 37 CFR 1.14(a)(2)(iv), the requester is entitled to status information for the international design application as well as any application claiming the benefit of the filing date of the published international design application. With respect to an international design application maintained by the Office in its capacity as an office of indirect filing (37 CFR 1.1002), status information may be made available where contained in the file of the international design application maintained by the Office for national processing.
STATUS LOCATION INFORMATION FOR OFFICE PERSONNEL
When it is desired to determine the current location or status of an application, Office personnel should use PALM. If the application is an Image File Wrapper (IFW) application, no location is associated with the file.
Office personnel requesting status/location information on applications prior to 07 series applications that are not in the PALM system should contact the FIU (see MPEP § 1730) where the
numerical index records of the above mentioned applications are maintained.
103 Right of Public To Inspect Patent Files and Some Application Files [R-07.2015]
37 CFR 1.11 Files open to the public.
(a) The specification, drawings, and all papers relating to the file of: A published application; a patent; or a statutory invention registration are open to inspection by the public, and copies may be obtained upon the payment of the fee set forth in § 1.19(b)(2). If an application was published in redacted form pursuant to § 1.217, the complete file wrapper and contents of the patent application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; and the application is still pending. See § 2.27 of this title for trademark files.
(b) All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor. The filing of reissue applications, other than continued prosecution applications under §1.53(d) of reissue applications, will be announced in the Official Gazette. The announcement shall include at least the filing date, reissue application and original patent numbers, title, class and subclass, name of the inventor, name of the owner of record, name of the attorney or agent of record, and examining group to which the reissue application is assigned.
(c) All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette. The announcement shall include at least the date of the request, if any, the reexamination request control number or the Director initiated order control number, patent number, title, class and subclass, name of the inventor, name of the patent owner of record, and the examining group to which the reexamination is assigned.
(d) All papers or copies thereof relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to inspection by the general public, and copies may be furnished upon paying the fee therefor.
(e) Except as prohibited in § 41.6(b), § 42.14 or § 42.410(b), the file of any interference or trial before the Patent Trial and Appeal Board is open to public inspection and copies of the file may be obtained upon payment of the fee therefor.
37 CFR 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
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(1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
(i) Patented applications and statutory invention registrations. The file of an application that has issued as a patent or published as a statutory invention registration is available to the public as set forth in §1.11(a). A copy of the patent application-as-filed, the file contents of the application, or a specific document in the file of such an application may be provided upon request and payment of the appropriate fee set forth in § 1.19(b).
(ii) Published abandoned applications. The file of an abandoned published application is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b).
(iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (i) of this section.
(iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title, and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application underPCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)).
(v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application underPCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed or a specific document in the file of the pending application may also be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
(vii) When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (i)) or a power to inspect (see paragraph (c) of this section) is necessary to obtain the application, or a copy of the application.
(2) Information concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this
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section. The information that may be communicated to the public ( i.e., status information) includes:
(i) Whether the application is pending, abandoned, or patented;
(ii) Whether the application has been published under 35 U.S.C. 122(b);
(iii) The application “numerical identifier” which may be:
(A) The eight-digit application number (the two-digit series code plus the six-digit serial number); or
(B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and
(iv) Whether another application claims the benefit of the application ( i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121, 365, or 386 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications ( e.g., continuation), whether the application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b).
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I. ACCESS TO IMAGE FILE WRAPPER (IFW) APPLICATIONS
The Image File Wrapper (IFW) system uses image technology to replace the paper processing of patent applications in the Office. Paper components of these application files (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) have been scanned to create electronic image files. For patent applications in the IFW system, the IFW file is the Official file and no access is granted to the original paper document sheets used to create the IFW file. All processing and examination is conducted using the electronic images instead of the paper source documents.
If an IFW file has been created for a patented application, published application, or an application to which a patented or published application claims domestic priority, the IFW file (with the exception of non-patent literature) is accessible through public PAIR. All patent applications filed after June 30, 2003, have been scanned into the IFW system are available in public PAIR upon publishing or
patenting. Pending applications filed before June 30, 2003, are scanned into IFW as incoming papers are received in the Office.
II. PUBLISHED APPLICATIONS
37 CFR 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
(1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
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(ii) Published abandoned applications. The file of an abandoned published application is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b).
(iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (i) of this section.
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If a patent application has been published pursuant to 35 U.S.C. 122(b), then a copy of the specification, drawings, and all papers relating to the file of that published application (whether abandoned or pending) may be provided to any person upon written request and payment of the fee set forth in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(ii) and (iii). Pursuant to 35 U.S.C. 374 and 35 U.S.C. 390, the publication by the International Bureau of an international application under the PCT or an international design application designating the United States under the Hague Agreement is deemed to be a publication under 35 U.S.C. 122(b). Note that the U.S. is automatically designated in all
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international applications under the PCT filed on or after January 1, 2004.
If a redacted copy of the application was used for the patent application publication, the copy of the application will be limited to the redacted copy of the application and the redacted materials provided under 37 CFR 1.217(d).
See paragraph I., above, for information pertaining to access to Image File Wrapper (IFW) applications. Published applications maintained in the IFW system are available on the USPTO website in the public Patent Application Information Retrieval (PAIR) system. If the published patent application is pending and it is not maintained in the IFW system, the paper application file itself will not be available to the public for inspection. Only copies of the application file may be obtained pursuant to 37 CFR 1.14(a)(1)(iii). If the published patent application is abandoned, the entire application is available to the public for inspection and obtaining copies. See 37 CFR 1.11(a).
III. UNPUBLISHED ABANDONED AND PENDING APPLICATIONS (INCLUDING PROVISIONAL APPLICATIONS) THAT ARE IDENTIFIED
37 CFR 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
(1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
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(iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named
inventor, title, and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)).
(v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed or a specific document in the file of the pending application may also be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
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Abandoned applications meeting the requirements of 37 CFR 1.14(a)(1)(iv) and any application that is open to the public under 37 CFR 1.11 may be obtained by any person upon written request to the File Information Unit (FIU) without the specific
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written authority of the inventor, applicant in an application filed on or after September 16, 2012, assignee, attorney or agent of record or Director. The following abandoned applications are available from the FIU: (A)An abandoned application referred to in a U.S. patent application publication or U.S. patent; and (B) a pending File Wrapper Continuation application (FWC) filed under former 37 CFR 1.62 of an abandoned application that meets the requirements of 37 CFR 1.14(a)(1)(iv). Under former 37 CFR 1.62(f), where access is permitted to an application within the file wrapper of a FWC application, the applicant has waived the right to keep all earlier filed applications in the same file wrapper in confidence.
37 CFR 1.14(a)(1)(i) relates only to United States applications that are open to public inspection. See 37 CFR 1.14(g)(3)-(5) for access to international applications where the U.S. is designated. See also MPEP § 110. See 37 CFR 1.14(j) for access to international design applications. If an abandoned application is referred to in an international publication of an international application under PCT Article 21(2), or in a publication of an international registration under Hague Agreement Article 10(3), access to the abandoned application is available under 37 CFR 1.14(a)(1)(iv).
An abandoned non-IFW application identified in a U.S. patent application publication, U.S. patent or a U.S. application that is open to public inspection may be ordered for inspection by any member of the public through the FIU. An abandoned file received by a member of the public must be returned to the charge counter in the FIU before closing the same day it is received. If the abandoned application is contained within a pending FWC application, the requester will generally be directed to the appropriate Technology Center (TC) to inquire as to the availability of the pending FWC application. If the pending FWC application is available, it will be forwarded to the FIU for the requester to pick-up. See paragraph I., above, for information pertaining to access to IFW applications.
The incorporation by reference of a pending application in a U.S. patent application publication, a U.S. patent, a published international application
published in accordance with PCT Article 21(2), a publication of an international registration under Hague Agreement Article 10(3), or a statutory invention registration constitutes a special circumstance under 35 U.S.C. 122 warranting that a copy of the application-as-filed be provided upon written request as provided in 37 CFR 1.14(a)(1)(vi). In addition, if a U.S. patent application publication, a U.S. patent, a published international application, or a published international registration claims benefit under 35 U.S.C. 119(e), 120, 121, 365, or 386 to a U.S. patent application, a copy of that application-as-filed may be provided upon written request (see 37 CFR 1.14(a)(1)(v)), or be available through the public PAIR system if the application is maintained in the IFW system. A benefit claim in an international design application that does not designate the United States is not a claim under 35 U.S.C. 119(e), 120, 121, 365 or 386. The written request, including a copy of the page of the patent application publication, U.S. patent, published international application, or published international registration including the incorporation by reference or specific reference under 35 U.S.C. 119(e), 120, 121, 365, or 386 and the requisite fee set forth in 37 CFR 1.19(b)(1), should be directed to the Certification Division. However, an incorporation by reference that is made as part of a transmittal letter for the application, or that is a part of the text of the application that has been canceled and which does not appear as part of the printed patent, may not be relied upon to obtain a copy of the application as originally filed. A petition for access with an explanation of special circumstances other than the not-printed incorporation by reference will be required. See 37 CFR 1.14(a)(1)(vii).
Copies of a patent application-as-filed and the contents of a patent application file wrapper may be ordered on-line or requested by facsimile from the Certification Division. Payment of the appropriate fee under 37 CFR 1.19(b) may be made by USPTO Deposit Account, American Express®, Discover®, MasterCard®, or Visa® by any person having a right to access to the originally filed application or patent. The Office does not provide for access to non-United States applications.
Form PTO/SB/68 may be used to request access.
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IV. ACCESS WHERE PART OF AN APPLICATION IS INCORPORATED BY REFERENCE IN A U.S. PATENT APPLICATION PUBLICATION OR A U.S. PATENT
37 CFR 1.14(a)(1)(vi) permits a member of the public, without a petition for access, to obtain a copy of a pending application as originally filed, when the application is incorporated by reference in a U.S. patent application publication or a U.S. patent, upon the filing of an appropriate request and the payment of the required fee. However, if only part of the application is incorporated by reference, for example, where an application states, “the disclosure of a valve on page 5, lines 5-35, of application No. XX/YYY,YYY, is hereby incorporated by reference,” then a petition for access is required to obtain access to or a copy of the incorporated material. Incorporation by reference of part of an application in a U.S. patent application publication or a U.S. patent constitutes a special circumstances under 35 U.S.C. 122(a) warranting that access to that part of the original disclosure of the application be granted on petition. The incorporation by reference will be interpreted as a waiver of confidentiality of only that part of the original disclosure as filed, and not the entire application file. In re Gallo, 231 USPQ 496 (Comm’r Pat. 1986). If applicant objects to access to the entire application file, applicant must file two copies of the information incorporated by reference along with the objection. In the example given, applicant would be required to provide two copies of page 5, lines 5-35 of the XX/YYY,YYY application. Failure to provide the material within the time period provided will result in the entire application content (including prosecution history) being made available to the petitioner. The Office will not attempt to separate the noted materials from the remainder of the application. Compare In re Marsh Eng’g. Co., 1913 C.D. 183 (Comm’r Pat. 1913).
V. PETITION FOR ACCESS BY THIRD PARTY
37 CFR 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
(1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
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(vii) When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (i)) or a power to inspect (see paragraph (c) of this section) is necessary to obtain the application, or a copy of the application.
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(i) Access or copies in other circumstances. The Office, either sua sponte or on petition, may also provide access or copies of all or part of an application if necessary to carry out an Act of Congress or if warranted by other special circumstances. Any petition by a member of the public seeking access to, or copies of, all or part of any pending or abandoned application preserved in confidence pursuant to paragraph (a) of this section, or any related papers, must include:
(1) The fee set forth in § 1.17(g); and
(2) A showing that access to the application is necessary to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access to all or part of the application.
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Any interested party may file a petition, accompanied by the petition fee, to the Director for access to an application. Inasmuch as the post office address is necessary for the complete identification of the petitioner, it should always be included complete with ZIP Code number. In addition, telephone and facsimile numbers should be provided to expedite handling of the petition. Petitions for access are handled in the Office of Patent Legal Administration, unless the application is involved
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in an interference, derivation proceeding, or trial before the Patent Trial and Appeal Board. See MPEP § 1002.02(b), item 21.
The petition may be filed either with proof of service of copy upon the inventor, applicant in an application filed on or after September 16, 2012, assignee of record, or attorney or agent of record in the application to which access is sought, or the petition may be filed in duplicate, in which case the duplicate copy will be sent by the Office to the inventor, applicant in an application filed on or after September 16, 2012, assignee of record, or attorney or agent of record in the application (hereinafter “applicant”). A separate petition, with fee, must be filed for each application file to which access is desired. Each petition should show not only why access is desired, but also why petitioner believes he or she is entitled to access. The applicant will normally be given a limited period such as 3 weeks within which to state any objection to the granting of the petition for access and reasons why it should be denied. If applicant states that he or she has no objection to the requested access, the petition will be granted. If objection is raised or applicant does not respond, the petition will be decided on the record. If access is granted to the application, any objections filed by the applicant will be available to the petitioner since these papers are in the application file. If access to the application is denied, petitioner will not receive copies of any objections filed by the applicant. A determination will be made whether “special circumstances” are present which warrant a grant of access under 35 U.S.C. 122. See below when the application is the basis of a claim for benefit of an earlier filing date under 35 U.S.C. 120 or part of the application is incorporated by reference in a United States patent. “Special circumstances” could be found where an applicant has relied upon his or her application as a means to interfere with a competitor’s business or customers. See, e.g., In re Crossman, 187 USPQ 367 (PTO Solicitor 1975); and In re Trimless Cabinets, 128 USPQ 95 (Comm’r Pat. 1960). Furthermore, “special circumstances” could be found where an attorney or agent of record in an application in which a provisional double patenting rejection is made does not have power of attorney in the copending application having a common assignee or inventor. However, a more expeditious means of obtaining
access would be to obtain power to inspect from an assignee or inventor. See MPEP §§ 104 and 106.01.
VI. ACCESS WHERE PATENT CLAIMS 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) BENEFIT
37 CFR 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
(1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
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(iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title, and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)).
(v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application underPCT Article 21(2) , or a publication of an international
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registration under Hague Agreement Article 10(3). A copy of the application-as-filed or a specific document in the file of the pending application may also be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
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Whenever a patent relies on the filing date of an earlier but still pending application, the Office permits an applicant to obtain a copy of the prior application, either as originally filed or of the pending file history, upon written request (to the Office of Public Records) and payment of the appropriate fee. Furthermore, after publication of a U.S. patent, a U.S. patent application publication, a statutory invention registration, an international application under PCT Article 21(2), or an international registration under Hague Agreement Article 10(3), the file contents of any abandoned application identified or relied upon in such a publication are available pursuant to 37 CFR 1.14(a)(1)(iv). If the application is pending and benefit of the application is claimed pursuant to 35 U.S.C.119(e), 120, 121, 365(c), or 386(c) in such a patent document, then the file contents of the application are available pursuant to 37 CFR 1.14(a)(1)(v). Such a patent application is available through the public PAIR system if the application is maintained in the IFW system.
VII. ACCESS TO PROVISIONAL APPLICATIONS
In provisional applications, access or certified copies will only be given to parties with written authority
from a named inventor, the assignee of record, the attorney or agent of record, or, for an application filed on or after September 16, 2012, an applicant other than an inventor. Since provisional applications do not require an oath or declaration, there may be no power of attorney in the application. If there is no power of attorney in the provisional application, a certified copy requested by the registered attorney or agent named in the papers accompanying the provisional application papers will be supplied to the correspondence address of the provisional application. Provisional applications are also available in the same manner as any other application. For example, an application that is relied upon for priority in a U.S. patent and is abandoned is available under 37 CFR 1.14(a)(1)(iv) and, as a result may be available through public PAIR.
VIII. APPLICATION AT THE PATENT TRIAL AND APPEAL BOARD
The Patent Trial and Appeal Board handles all requests for access to, or copies of Office records directly related to, applications involved in interferences, derivation proceedings, or trials. See 37 CFR 41.109 and 37 CFR 42.3. See also MPEP Chapter 2300.
IX. DEFENSIVE PUBLICATIONS
The entire application file of a defensive publication is available to the public for inspection and obtaining copies. See MPEP § 711.06.
X. REISSUE APPLICATIONS
37 CFR 1.11(b) opens reissue applications to inspection by the general public. 37 CFR 1.11(b) also provides for announcement of the filings of reissue applications in the Official Gazette (except for continued prosecution applications filed under 37 CFR 1.53(d)). This announcement gives interested members of the public an opportunity to submit to the examiner information pertinent to patentability of the reissue application.
IFW reissue application files are open to inspection by the general public by way of Public PAIR via the USPTO Internet site. In viewing the images of the files, members of the public will be able to view the
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entire content of the reissue application file history. To access Public PAIR, a member of the public would (A) go to the USPTO website at www.uspto.gov, (B) click on “Check Status” under the “Patents” column, (C) click on Public PAIR, and (D) enter the reissue application number.
XI. REQUEST FOR REEXAMINATION
An announcement of the filing of each request for reexamination in which the entire fee has been paid, and of each reexamination ordered at the initiative of the Director under 37 CFR 1.520, will be published in the Official Gazette. A reexamination file is normally NOT open to inspection by the general public until the file has been scanned into the IFW system, at which point the file is open to inspection by the public by way of Public PAIR via the USPTO Internet site. In viewing the images of the reexamination proceedings, members of the public will be able to view the entire contents of the reexamination file with the exception of non-patent literature. See also MPEP § 2232.
XII. DECISIONS BY THE DIRECTOR
37 CFR 1.14 Patent applications preserved in confidence. *****
(e) Decisions by the Director. Any decision by the Director that would not otherwise be open to public inspection may be published or made available for public inspection if:
(1) The Director believes the decision involves an interpretation of patent laws or regulations that would be of precedential value; and
(2) The applicant is given notice and an opportunity to object in writing within two months on the ground that the decision discloses a trade secret or other confidential information. Any objection must identify the deletions in the text of the decision considered necessary to protect the information, or explain why the entire decision must be withheld from the public to protect such information. An applicant or party will be given time, not less than twenty days, to request reconsideration and seek court review before any portions of a decision are made public under this paragraph over his or her objection
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37 CFR 41.6 Public availability of Board records.
(a) Publication.
(1) Generally. Any Board action is available for public inspection without a party’s permission if rendered in a file open
to the public pursuant to § 1.11 of this title or in an application that has been published in accordance with §§ 1.211 to 1.221 of this title. The Office may independently publish any Board action that is available for public inspection.
(2) Determination of special circumstances.Any Board action not publishable under paragraph (a)(1) of this section may be published or made available for public inspection if the Director believes that special circumstances warrant publication and a party does not, within two months after being notified of the intention to make the action public, object in writing on the ground that the action discloses the objecting party’s trade secret or other confidential information and states with specificity that such information is not otherwise publicly available. If the action discloses such information, the party shall identify the deletions in the text of the action considered necessary to protect the information. If the affected party considers that the entire action must be withheld from the public to protect such information, the party must explain why. The party will be given time, not less than twenty days, to request reconsideration and seek court review before any contested portion of the action is made public over its objection.
(b) Record of proceeding.
(1) The record of a Board proceeding is available to the public unless a patent application not otherwise available to the public is involved.
(2) Notwithstanding paragraph (b)(1) of this section, after a final Board action in or judgment in a Board proceeding, the record of the Board proceeding will be made available to the public if any involved file is or becomes open to the public under § 1.11 of this title or an involved application is or becomes published under §§ 1.211 to 1.221 of this title.
37 CFR 1.14(e) states the conditions under which significant decisions by the Director that would not otherwise be open to public inspection will be made available to the public. 37 CFR 41.6 describes the procedure for making a decision of the Patent Trial and Appeal Board available to the public. These sections are applicable to decisions deemed by the Director to involve an interpretation of patent laws or regulation that would be of significant precedential value, where such decisions are contained in either pending or abandoned applications or in Board records not otherwise open to the public. It is applicable whether or not the decision is a final decision of the U.S. Patent and Trademark Office.
37 CFR 1.14(e) and 37 CFR 41.6 are considered to place a duty on the U.S. Patent and Trademark Office to identify significant decisions and to take the steps necessary to inform the public of such decisions, by
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publication of such decisions, in whole or in part. It is anticipated, however, that no more than a few dozen decisions per year will be deemed of sufficient importance to warrant publication under the authority of this section.
XIII. FOIA REQUESTS
37 CFR 102.4 Requirements for making requests.
(a) A request for USPTO records that are not customarily made available to the public as part of USPTO’s regular informational services must be in writing, and shall be processed under FOIA, regardless of whether FOIA is mentioned in the request. Requests should be sent to the USPTO FOIA Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 (records FOIA requires to be made regularly available for public inspection and copying are addressed in § 102.2(c)). For the quickest handling, the request letter and envelope should be marked “Freedom of Information Act Request.” For requests for records about oneself, § 102.24 contains additional requirements. For requests for records about another individual, either a written authorization signed by that individual permitting disclosure of those records to the requester or proof that individual is deceased (for example, a copy of a death certificate or an obituary) facilitates processing the request.
(b) The records requested must be described in enough detail to enable USPTO personnel to locate them with a reasonable amount of effort. Whenever possible, a request should include specific information about each record sought, such as the date, title or name, author, recipient, and subject matter of the record, and the name and location of the office where the record is located. Also, if records about a court case are sought, the title of the case, the court in which the case was filed, and the nature of the case should be included. If known, any file designations or descriptions for the requested records should be included. In general, the more specifically the request describes the records sought, the greater the likelihood that USPTO will locate those records. If the FOIA Officer determines that a request does not reasonably describe records, the FOIA Officer will inform the requester what additional information is needed or why the request is otherwise insufficient. The FOIA Officer also may give the requester an opportunity to discuss the request so that it may be modified to meet the requirements of this section.
Many decisions of the Office are available on the FOIA section of the USPTO website at www.uspto .gov/ learning-and-resources /ip-policy/electronic-freedom-information-act-e-foia. See 37 CFR Part 102, Subpart A, “Freedom of
Information Act,” for rules pertaining to FOIA requests.
104 Power to InspectApplication [R-07.2015]
I. AUTHORITY TO GRANT ACCESS - APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012
37 CFR 1.14 Patent applications preserved in confidence. *****
(c) Power to inspect a pending or abandoned application. Access to an application may be provided to any person if the application file is available, and the application contains written authority ( e.g., a power to inspect) granting access to such person. The written authority must be signed by:
(1) The applicant;
(2) A patent practitioner of record;
(3) The assignee or an assignee of an undivided part interest;
(4) The inventor or a joint inventor; or
(5) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495, if a power of attorney has not been appointed under § 1.32.
*****
For applications filed on or after September 16, 2012, the applicant, a patent practitioner of record, the assignee or an assignee of an undivided part interest, or an inventor may provide a written authority for access to a pending or abandoned application kept in confidence under 35 U.S.C. 122(a), except as provided in 37 CFR 1.11, 1.14, 41.6, or 42.412. The written authority must identify the application to be inspected and the name of the person authorized to have access, and will be made of record. Access provided upon the written order of the Director will also become a part of the record of the application.
A person acting in a representative capacity under 37 CFR 1.34 may execute a power to inspect an application only if the patent practitioner was named in the application transmittal papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495 and a power of attorney has not been appointed under 37 CFR 1.32. Once a power of attorney has been filed, any previously filed power
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to inspect signed by a patent practitioner who does not have a power of attorney will cease to have effect. For a discussion of power of attorney in an application, see MPEP § 402.
II. AUTHORITY TO GRANT ACCESS - APPLICATION FILED BEFORE SEPTEMBER 16, 2012
37 CFR 1.14 (pre-AIA) Patent applications preserved in confidence.
*****
(c) Power to inspect a pending or abandoned application. Access to an application may be provided to any person if the application file is available, and the application contains written authority (e.g., a power to inspect) granting access to such person. The written authority must be signed by:
(1) An applicant;
(2) An attorney or agent of record;
(3) An authorized official of an assignee of record (made of record pursuant to § 3.71 of this chapter); or
(4) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495, if an executed oath or declaration pursuant to § 1.63 or § 1.497 has not been filed.
*****
For applications filed prior to September 16, 2012, if an executed oath or declaration pursuant to 37 CFR 1.63 or 1.497 has been filed, no person but the applicant (any one of joint applicants), an attorney or agent of record (if a power of attorney was filed), or an assignee whose assignment is of record will be permitted to have access to the file of any pending application kept in confidence under 35 U.S.C. 122(a), except as provided for under 37 CFR 1.11, 1.14, 41.6, or 42.412, unless written authority from one of the above indicated parties, identifying the application to be inspected and the name of the person authorized to have access, is made of record, or upon the written order of the Director, which will also become a part of the record of the application.
A person acting in a representative capacity under 37 CFR 1.34 may execute a power to inspect an application only if the attorney or agent was named in the application transmittal papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495 and an executed oath or declaration
has not been filed. Once an executed oath or declaration has been filed, any previously filed power to inspect signed by a registered attorney or agent who does not have a power of attorney will cease to have effect. For a discussion of power of attorney in an application, see MPEP § 402.
III. POWER TO INSPECT
Powers to inspect are not accepted in Image File Wrapper (IFW) applications. IFW applications are available through the Private Patent Application Information Retrieval (PAIR) system, and pro se applicants and attorneys of record have direct access to the IFW through Private PAIR (when a Customer Number is associated with the correspondence address for the application, and the applicant or attorney has access to Private PAIR for the customer number). In addition, IFW application files of published applications or patents are available at least through Public PAIR. If for some reason an applicant, inventor, assignee, or attorney or agent of record cannot view an IFW application through PAIR, then a copy of the application must be purchased from the Office of Public Records. A "power to inspect" is, in effect, the same as a "power to inspect and make copies."
Where an applicant relied on his or her application as a means to interfere with a competitor’s business or customers, permission to inspect the application may be given the competitor by the Director. Such permission is via petition for access under 37 CFR 1.14(i).
An unrestricted power to inspect given by an applicant or inventor is, under existing practice, recognized as in effect until and unless rescinded. The same is true in the case of one given by the attorney or agent of record, or assignee so long as such attorney or agent, or assignee retains his or her connection with the application.
Permission to inspect given by the Director, however, is not of a continuing nature, since the conditions that justified the permission to inspect when given may not apply at a later date.
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IV. ACCESS TO PATENT APPLICATIONS (PROVISIONAL AND NONPROVISIONAL) AND BOARD RECORDS
In order to ensure that access to patent applications, other than applications that are available pursuant to 37 CFR 1.11 or 1.14, and Board records are given only to persons who are entitled thereto or who are specially authorized to have access under 37 CFR 1.11, 1.14 and 41.6 and to ensure also that the file record identifies any such specially authorized person who has been given access to a file, the following practice will be observed by all personnel of the U.S. Patent and Trademark Office:
(A) Access, as provided for in the rules, will be given on oral request to any applicant, inventor, patentee, assignee, or attorney or agent of record in an application or patent only upon proof of identity or upon recognition based on personal acquaintance.
(B) Where a power of attorney or authorization of agent was given to a registered firm prior to July 2, 1971, access will be given upon oral request as in paragraph (A) above to any registered member or employee of the firm who has signatory power for the firm.
(C) Unregistered employees of attorneys or agents, public stenographers, and all other persons not within the provisions of paragraphs (A) and (B) above will be given access only upon presentation of a written authorization for access (power to inspect) signed by a person specified in paragraph (A) above, which authorization will be entered as a part of the official file. The power to inspect must specifically name the person who is entitled to inspect and copy the application. An associate or representative of the named person is not entitled to access to the application on behalf of the authorized person. Further, the power to inspect must specifically identify the application by application number and be limited to a single application. Form PTO/SB/67 may be used for this purpose.
(D) In provisional applications, access or certified copies may only be requested by parties with written authority from a named inventor, the applicant, the assignee of record, or the attorney or agent of record, unless the application is available pursuant to 37 CFR 1.14(a)(1)(iv)-(vi). Since provisional applications do not require an oath or declaration, there may be no power of attorney in
the application. If the person requesting a certified copy is not a named inventor, the applicant, assignee of record, or an attorney or agent of record, the requested certified copy will be supplied to the correspondence address of the provisional application
105 Suspended or Excluded Practitioner Cannot Inspect [R-11.2013]
U.S. Patent and Trademark Office (USPTO) employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application unless it is one in which said attorney or agent is an inventor or the applicant. Power to inspect given to such an attorney or agent will not be accepted.
106 Control of Inspection by Assignee [R-11.2013]
The applicant or assignee of record of the entire interest in an application may file an application or intervene in the prosecution of the application, appointing an attorney or agent of his or her own choice. See 37 CFR 1.46 and 3.71. Such an application filing or intervention, however, does not exclude the inventor from access to the application to see that it is being prosecuted properly, unless the applicant or assignee makes specific request to that effect. Any request to prevent the inventor from obtaining access to the file should be filed as a separate paper, 37 CFR 1.4(c), and should be directed to the Office of Petitions. If the request is granted, the inventor will be informed that he or she will only be permitted to inspect the application on sufficient showing why such inspection is necessary to conserve his or her rights. Of course, after the application has published pursuant to 35 U.S.C. 122(b), the application will be available to the public and any restriction on the inventor to access his or her application previously granted will no longer be in effect.
106.01 Rights of Assignee of Part Interest [R-11.2013]
While it is only the assignee of record of the entire interest who can intervene in the prosecution of an
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application or interference to the exclusion of the applicant (or, for applications filed on or after September 16, 2012, can prosecute the application after becoming the applicant under 37 CFR 1.46), an assignee of a part interest or a licensee of exclusive right is entitled to inspect the application. For information pertaining to prosecution by the assignee, see MPEP § 324 (for applications filed before September 16, 2012) and MPEP § 325 (for applications filed on or after September 16, 2012).
107-109 [Reserved]
110 Confidential Nature of International Applications [R-07.2015]
PCT Article 30
Confidential Nature of the International Application.
(1)(a) Subject to the provisions of subparagraph (b), the International Bureau and the International Searching Authorities shall not allow access by any person or authority to the international application before the international publication of that application, unless requested or authorized by the applicant.
(b) The provisions of subparagraph (a) shall not apply to any transmittal to the competent International Searching Authority, to transmittals provided for under Article 13, and to communications provided for under Article 20.
(2)(a) No national Office shall allow access to the international application by third parties unless requested or authorized by the applicant, before the earliest of the following dates:
(i) date of the international publication of the international application,
(ii) date of receipt of the communication of the international application under Article 20,
(iii) date of receipt of a copy of the international application under Article 22.
(b) The provisions of subparagraph (a) shall not prevent any national Office from informing third parties that it has been designated, or from publishing that fact. Such information or publication may, however, contain only the following data: identification of the receiving Office, name of the applicant, international filing date, international application number, and title of the invention.
(c) The provisions of subparagraph (a) shall not prevent any designated Office from allowing access to the international application for the purposes of the judicial authorities.
(3) The provisions of paragraph (2)(a) shall apply to any receiving Office except as so far as transmittals provided for under Article 12(1) are concerned.
(4) For the purposes of this Article, the term “access” covers any means by which third parties may acquire cognizance, including individual communication and general publication, provided, however, that no national Office shall generally publish an international application or its translation before the international publication or, if international publication has not taken place by the expiration of 20 months from the priority date, before the expiration of 20 months from the said priority date.
PCT Article 38
Confidential Nature of the International Preliminary Examination.
(1) Neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or authorized by the applicant, allow access within the meaning, and with the proviso, of Article 30(4) to the file of the international preliminary examination by any person or authority at any time, except by the elected Offices once the international preliminary examination report has been established.
(2) Subject to the provisions of paragraph (1) and Articles 36(1) and (3) and 37(3)(b), neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or authorized by the applicant, give information on the issuance or non-issuance of an international preliminary examination report and on the withdrawal or non-withdrawal of the demand or of any election.
35 U.S.C. 368 Secrecy of certain inventions; filing international applications in foreign countries.
(a) International applications filed in the Patent and Trademark Office shall be subject to the provisions of chapter 17.
(b) In accordance with article 27(8) of the treaty, the filing of an international application in a country other than the United States on the invention made in this country shall be considered to constitute the filing of an application in a foreign country within the meaning of chapter 17, whether or not the United States is designated in that international application.
(c) If a license to file in a foreign country is refused or if an international application is ordered to be kept secret and a permit refused, the Patent and Trademark Office when acting as a Receiving Office, International Searching Authority, or International Preliminary ExaminingAuthority, may not disclose the contents of such application to anyone not authorized to receive such disclosure.
Although most international applications are published soon after the expiration of 18 months from the priority date, PCT Article 21(2)(a), such
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publication does not open up the Home Copy or Search Copy to the public for inspection, except as provided in 37 CFR 1.14(g) .
37 CFR 1.14 Patent applications preserved in confidence. *****
(g) International applications.
(1) Copies of international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2), or copies of a document in such application files, will be furnished in accordance with PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3, upon written request including a showing that the publication of the application has occurred and that the U.S. was designated, and upon payment of the appropriate fee (see § 1.19(b)), if:
(i) With respect to the Home Copy (the copy of the international application kept by the Office in its capacity as the Receiving Office, see PCT Article 12(1)), the international application was filed with the U.S. Receiving Office;
(ii) With respect to the Search Copy (the copy of an international application kept by the Office in its capacity as the International Searching Authority, see PCT Article 12(1)), the U.S. acted as the International Searching Authority, except for the written opinion of the International Searching Authority which shall not be available until the expiration of thirty months from the priority date; or
(iii) With respect to the Examination Copy (the copy of an international application kept by the Office in its capacity as the International Preliminary Examining Authority), the United States acted as the International Preliminary Examining Authority, an International Preliminary Examination Report has issued, and the United States was elected.
(2) A copy of an English language translation of a publication of an international application which has been filed in the United States Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be furnished upon written request including a showing that the publication of the application in accordance with PCT Article 21(2) has occurred and that the U.S. was designated, and upon payment of the appropriate fee (§ 1.19(b)(4)).
(3) Access to international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2), or copies of a document in such application files, will be permitted in accordance with PCT Articles 30 and 38 and PCT Rules 44 ter .1, 94.2 and 94.3, upon written request including a showing that the publication of the application has occurred and that the U.S. was designated.
(4) In accordance with PCT Article 30, copies of an international application-as-filed under paragraph (a) of this section will not be provided prior to the international publication of the application pursuant to PCT Article 21(2).
(5) Access to international application files under paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section
will not be permitted with respect to the Examination Copy in accordance with PCT Article 38.
*****
37 CFR 1.14(g) applies to international applications having an international filing date on or after November 29, 2000. After publication of an application under 35 U.S.C. 122(b), the USPTO will make available copies of the application files and also allow for access to those files in accordance with 37 CFR 1.14(a). Therefore, after publication of an international application designating the U.S. under PCT Article 21, the USPTO will make available copies of, and allow access to, those international application files which are kept in the USPTO (see 37 CFR 1.14(g) ).
37 CFR 1.14(g)(1) sets forth those conditions upon which copies of international application files may be provided to the public. 37 CFR 1.14(g)(1)(i) and (ii) address the situation where the U.S. acted as the receiving Office and the International Searching Authority, respectively. Under these provisions, copies of the Home and Search Copies of the international file will be provided upon request. However, the written opinion established by the International Searching Authority will not be available until the expiration of 30 months from the priority date. 37 CFR 1.14(g)(1)(iii) addresses the situation in which the U.S. acted as the International Preliminary Examining Authority (IPEA), the U.S. was elected, and the international preliminary examination report (IPER) has issued. PCT Rule 94.2 provides that after issuance of the IPER, the IPEA shall provide copies of any documents in the examination file to the elected Offices upon request. PCT Rule 94.3 permits the elected Offices to provide access to any documents in its files after international publication has occurred. Therefore, the USPTO acting in its capacity as an elected Office, will provide a copy of the examination file in an international application to a third party upon submission of a request complying with the requirements of 37 CFR 1.14(g)(1)(iii). Requests for copies of an international application file under 37 CFR 1.14(g)(1) must be in the form of a written request sent to the International Patent Legal Administration and must include a showing that the international application has been published and that
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the U.S. was designated. Such a showing should preferably be in the form of the submission of a copy of the front page of the published international application. Additionally, requests for copies of international application files must also be accompanied by the appropriate fee (37 CFR 1.19(b)).
37 CFR 1.14(g)(2) provides that copies of English language translations of international applications, which were published in a non-English language and which designated the U.S., and which have been submitted to the Office pursuant to 35 U.S.C. 154(d)(4), will also be available to the public. The USPTO will not provide general notification to the public of the filing of English language translations under 35 U.S.C. 154. Under 35 U.S.C. 154, it is the responsibility of the applicant to notify any possible infringers for the purposes of obtaining provisional rights.
37 CFR 1.14(g)(3) addresses access to the Home Copy and the Search Copy of the international application. Access to the Examination Copy of the international application is prohibited under 37 CFR 1.14(g)(5) as required by PCT Article 38.
111-114 [Reserved]
115 Review of Applications for National Security and Property Rights Issues [R-07.2015]
35 U.S.C. 181 Secrecy of certain inventions and withholding of patent.
Whenever publication or disclosure by the publication of an application or by the grant of a patent on an invention in which the Government has a property interest might, in the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of an application or the grant of a patent therefor under the conditions set forth hereinafter.
*****
All provisional applications filed under 35 U.S.C. 111(b), nonprovisional applications filed under 35 U.S.C. 111(a), international applications filed
under the PCT, and international design applications filed under the Hague Agreement, in the U.S. Patent and Trademark Office (USPTO) are reviewed for the purposes of issuance of a foreign filing license pursuant to 35 U.S.C. 184. See also 37 CFR 5.1(b). These applications are screened upon receipt in the USPTO for subject matter that, if disclosed, might impact the national security. Such applications are referred to the appropriate agencies for consideration of restrictions on disclosure of the subject matter as provided for in 35 U.S.C. 181.
If a defense agency concludes that disclosure of the invention would be detrimental to the national security, a secrecy order is recommended to the Commissioner for Patents. The Commissioner then issues a Secrecy Order and withholds the publication of the application or the grant of a patent for such period as the national interest requires.
For those applications in which the Government has a property interest (including applications indicating national security classified subject matter), responsibility for notifying the Commissioner for Patents of the need for a Secrecy Order resides with the agency having that interest. Applications that are national security classified (see 37 CFR 1.9(i)) may be so indicated by use of authorized national security markings (e.g., “Confidential,” “Secret,” or “Top Secret”). National security classified documents filed in the USPTO must be either hand-carried to Licensing and Review or mailed to the Office in compliance with 37 CFR 5.1(a) and Executive Order 13526 of December 29, 2009. However, the Office will accept such applications filed with the USPTO via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) and consider them as filed via the USPTO’s electronic filing system for purposes of 37 CFR 1.16(t) and 37 CFR 1.445(a)(ii). As set forth in 37 CFR 5.1(d), the applicant in a national security classified patent application must obtain a secrecy order from the appropriate defense agency or provide authority to cancel the markings. A list of contacts at the appropriate defense agency can be obtained by contacting Licensing and Review.
A second purpose for the screening of all applications, with an exception for provisional applications, is to identify inventions in which DOE
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or NASA might have property rights. See 42 U.S.C. 2182, 51 U.S.C. 20135, and MPEP § 150.
A third function of the screening procedure is to process foreign filing license petitions under 37 CFR 5.12(a). See MPEP § 140.
Provisional applications filed in a foreign language are also screened under these provisions. The Office will make an attempt to determine the subject matter of the application, but the applicant may be required to provide at least an English language abstract of the information for screening purposes. It is strongly recommended that if the applicant is in possession of an English language description of the technology, it should be filed with the provisional application to prevent screening delays.
All applications are required to be cleared from secrecy review before forwarding to issue. If the L&R code on the general information display does not equal 1, then in an IFW application, a message should be sent to LREVINCOMINGDOCS.
The Patent Application Locating and Monitoring (PALM) System's general information display discloses the current Licensing and Review status as well as the historical status. The indicator “L&R code” displays the current status of the application while the indicators “Third Level Review” and “Secrecy Order” display the historical status of the application. An L&R code of “3” or a “Third Level Review” of “Yes” indicates that application is/has been considered for security screening.
An L&R code of “4” indicates that application is currently under Secrecy Order. In this case, the application has been converted to a paper application file and there should be no images maintained in the Image File Wrapper system (IFW).
While the initial screening is performed only by designated personnel, all examiners have a responsibility to be alert for obviously sensitive subject matter either in the original disclosure or subsequently introduced, for example, by amendment. If the examiner is aware of subject matter which should be subject to screening by appropriate office personnel, this should be brought to the attention of Licensing and Review, to any of
the supervisory patent examiners (SPEs) of Technology Center Working Group 3640.
116-119 [Reserved]
120 Secrecy Orders [R-07.2015]
37 CFR 5.1 Correspondence.
(a) All correspondence in connection with this part, including petitions, should be addressed to: Mail Stop L&R, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(b) Definitions.
(1) Application as used in this part includes provisional applications (§ 1.9(a)(2) of this chapter), nonprovisional applications (§ 1.9(a)(3)), international applications (§ 1.9(b)), or international design applications (§ 1.9(n)).
(2) Foreign application as used in this part includes, for filing in a foreign country, foreign patent office, foreign patent agency, or international agency (other than the United States Patent and Trademark Office acting as a Receiving Office for international applications (35 U.S.C. 361, § 1.412) or as an office of indirect filing for international design applications (35 U.S.C. 382, § 1.1002)) any of the following: An application for patent, international application, international design application, or application for the registration of a utility model, industrial design, or model.
(c) Patent applications and documents relating thereto that are national security classified (see § 1.9(i) of this chapter) and contain authorized national security markings ( e.g., “Confidential,” “Secret” or “Top Secret”) are accepted by the Office. National security classified documents filed in the Office must be either hand-carried to Licensing and Review or mailed to the Office in compliance with paragraph (a) of this section.
(d) The applicant in a national security classified patent application must obtain a secrecy order pursuant to § 5.2(a). If a national security classified patent application is filed without a notification pursuant to § 5.2(a), the Office will set a time period within which either the application must be declassified, or the application must be placed under a secrecy order pursuant to § 5.2(a), or the applicant must submit evidence of a good faith effort to obtain a secrecy order pursuant to § 5.2(a) from the relevant department or agency in order to prevent abandonment of the application. If evidence of a good faith effort to obtain a secrecy order pursuant to § 5.2(a) from the relevant department or agency is submitted by the applicant within the time period set by the Office, but the application has not been declassified or placed under a secrecy order pursuant to § 5.2(a), the Office will again set a time period within which either the application must be declassified, or the application must be placed under a secrecy order pursuant to § 5.2(a), or the applicant must submit evidence of a good faith effort to again obtain a secrecy order pursuant to § 5.2(a) from the relevant department or agency in order to prevent abandonment of the application.
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(e) An application will not be published under § 1.211 of this chapter or allowed under § 1.311 of this chapter if publication or disclosure of the application would be detrimental to national security. An application under national security review will not be published at least until six months from its filing date or three months from the date the application was referred to a defense agency, whichever is later. A national security classified patent application will not be published under § 1.211 of this chapter or allowed under § 1.311 of this chapter until the application is declassified and any secrecy order under § 5.2(a) has been rescinded.
(f) Applications on inventions made outside the United States and on inventions in which a U.S. Government defense agency has a property interest will not be made available to defense agencies.
37 CFR 5.2 Secrecy order.
(a) When notified by the chief officer of a defense agency that publication or disclosure of the invention by the granting of a patent would be detrimental to the national security, an order that the invention be kept secret will be issued by the Commissioner for Patents.
(b) Any request for compensation as provided in 35 U.S.C. 183 must not be made to the Patent and Trademark Office, but directly to the department or agency which caused the secrecy order to be issued.
(c) An application disclosing any significant part of the subject matter of an application under a secrecy order pursuant to paragraph (a) of this section also falls within the scope of such secrecy order. Any such application that is pending before the Office must be promptly brought to the attention of Licensing and Review, unless such application is itself under a secrecy order pursuant to paragraph (a) of this section. Any subsequently filed application containing any significant part of the subject matter of an application under a secrecy order pursuant to paragraph (a) of this section must either be hand-carried to Licensing and Review or mailed to the Office in compliance with § 5.1(a).
37 CFR 5.3 Prosecution of application under secrecy orders; withholding patent.
Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section:
(a) National applications under secrecy order which come to a final rejection must be appealed or otherwise prosecuted to avoid abandonment. Appeals in such cases must be completed by the applicant but unless otherwise specifically ordered by the Commissioner for Patents will not be set for hearing until the secrecy order is removed.
(b) An interference or derivation will not be instituted involving a national application under secrecy order. An applicant whose application is under secrecy order may suggest an interference (§ 41.202(a) of this title), but the Office will not
act on the request while the application remains under a secrecy order.
(c) When the national application is found to be in condition for allowance except for the secrecy order the applicant and the agency which caused the secrecy order to be issued will be notified. This notice (which is not a notice of allowance under § 1.311 of this chapter) does not require reply by the applicant and places the national application in a condition of suspension until the secrecy order is removed. When the secrecy order is removed the Patent and Trademark Office will issue a notice of allowance under § 1.311 of this chapter, or take such other action as may then be warranted.
(d) International applications and international design applications under secrecy order will not be mailed, delivered, or otherwise transmitted to the international authorities or the applicant. International applications under secrecy order will be processed up to the point where, if it were not for the secrecy order, record and search copies would be transmitted to the international authorities or the applicant.
37 CFR 5.4 Petition for rescission of secrecy order.
(a) A petition for rescission or removal of a secrecy order may be filed by, or on behalf of, any principal affected thereby. Such petition may be in letter form, and it must be in duplicate.
(b) The petition must recite any and all facts that purport to render the order ineffectual or futile if this is the basis of the petition. When prior publications or patents are alleged the petition must give complete data as to such publications or patents and should be accompanied by copies thereof.
(c) The petition must identify any contract between the Government and any of the principals under which the subject matter of the application or any significant part thereof was developed or to which the subject matter is otherwise related. If there is no such contract, the petition must so state.
(d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied. Appeal must be taken within sixty days from the date of the denial, and the party appealing, as well as the department or agency which caused the order to be issued, will be notified of the time and place of hearing.
37 CFR 5.5 Permit to disclose or modification of secrecy order.
(a) Consent to disclosure, or to the filing of an application abroad, as provided in 35 U.S.C. 182, shall be made by a “permit” or “modification” of the secrecy order.
(b) Petitions for a permit or modification must fully recite the reason or purpose for the proposed disclosure. Where any proposed disclosee is known to be cleared by a defense agency to receive classified information, adequate explanation of such clearance should be made in the petition including the name of the agency or department granting the clearance and the date and degree thereof. The petition must be filed in duplicate.
(c) In a petition for modification of a secrecy order to permit filing abroad, all countries in which it is proposed to file must
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be made known, as well as all attorneys, agents and others to whom the material will be consigned prior to being lodged in the foreign patent office. The petition should include a statement vouching for the loyalty and integrity of the proposed disclosees and where their clearance status in this or the foreign country is known all details should be given.
(d) Consent to the disclosure of subject matter from one application under secrecy order may be deemed to be consent to the disclosure of common subject matter in other applications under secrecy order so long as not taken out of context in a manner disclosing material beyond the modification granted in the first application.
(e) Organizations requiring consent for disclosure of applications under secrecy order to persons or organizations in connection with repeated routine operation may petition for such consent in the form of a general permit. To be successful such petitions must ordinarily recite the security clearance status of the disclosees as sufficient for the highest classification of material that may be involved.
I. SECRECY ORDER TYPES
Three types of Secrecy Orders, each of a different scope, are issued as follows:
(A) Secrecy Order and Permit for Foreign Filing in Certain Countries (Type I secrecy order)— to be used for those patent applications that disclose critical technology with military or space application in accordance with DoD Directive 5230.25 “Withholding of Unclassified Technical Data From Public Disclosure,” based on 10 U.S.C. 130 “Authority to Withhold From Public Disclosure Certain Technical Data.”
(B) Secrecy Order and Permit for Disclosing Classified Information (Type II secrecy order)— to be used for those patent applications which contain data that is properly classified or classifiable under a security guideline where the patent application owner has a current DoD Security Agreement, DD Form 441. If the application is classifiable, this secrecy order allows disclosure of the technical information as if it were classified as prescribed in the National Industrial Security Program Operating Manual (NISPOM).
(C) General Secrecy Order (Type III secrecy order)— to be used for those patent applications that contain data deemed detrimental to national security if published or disclosed, including that data properly classifiable under a security guideline where the patent application owner does not have a DoD Security Agreement. The order prevents disclosure
of the subject matter to anyone without an express written consent from the Commissioner for Patents. However, quite often this type of secrecy order includes a permit “Permit A” which relaxes the disclosure restrictions as set forth in the permit.
The Type I Secrecy Order is intended to permit the widest utilization of the technical data in the patent application while still controlling any publication or disclosure which would result in an unlawful exportation. This type of Secrecy Order also identifies the countries where corresponding patent applications may be filed. Countries with which the United States has reciprocal security agreements are: Australia, Belgium, Canada, Denmark, France, Germany, Greece, Italy, Japan, Luxembourg, Netherlands, Norway, Portugal, Republic of Korea, Spain, Sweden, Turkey and the United Kingdom. Please note that applications subject to a secrecy order cannot be filed directly with the European Patent Office since no reciprocal security agreement with this organization exists. Applications must be filed in the individual EPO member countries identified above. Applicant must arrange filing of such subject matter through the agency sponsoring the secrecy order.
The intent of the Type II Secrecy Order is to treat classified and classifiable technical data presented as a patent application in the same manner as any other classified material. Accordingly, this Secrecy Order will include a notification of the classification level of the technical data in the application.
The Type III Secrecy Order is used where the other types of Orders do not apply, including Orders issued by direction of agencies other than the Department of Defense.
A Secrecy Order should not be construed in any way to mean that the Government has adopted or contemplates adoption of the alleged invention disclosed in an application; nor is it any indication of the value of such invention.
II. RELATED SUBJECT MATTER
The Secrecy Orders apply to the subject matter of the invention, not just to the patent application itself.
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Thus, the Secrecy Order restricts disclosure or publication of the invention in any form. Furthermore, other patent applications already filed or later filed which contain any significant part of the subject matter of the application also fall within the scope of the Order and must be brought to the attention of Licensing & Review if such applications are not already under Secrecy Order by the Commissioner.
The effects of a Secrecy Order are detailed in the notifying letter and include restrictions on disclosure of the invention and delay of any patent grant until the Order is rescinded.
III. CORRESPONDENCE
When the Secrecy Order issues, the law specifies that the subject matter or any material information relevant to the application, including unpublished details of the invention, shall not be published or disclosed to any person not aware of the invention prior to the date of the Order, including any employee of the principals except as permitted by the Secrecy Order. The law also requires that all information material to the subject matter of the application be kept in confidence, unless written permission to disclose is first obtained from the Commissioner for Patents except as provided by the Secrecy Order. Therefore, all correspondence to be filed in an application which is subject to a secrecy order and which is directly related to the subject matter covered by the Secrecy Order must be transmitted to the Office in a manner which would preclude disclosure to unauthorized individuals and addressed as set forth in 37 CFR 5.1(a). Use of facsimile transmission is not permitted. 37 CFR 1.6(d)(6).
Subject matter under Secrecy Order must be safeguarded under conditions that will provide adequate protection and prevent access by unauthorized persons.
When applicants desire to change the Power of Attorney in an application under Secrecy Order, applicant is required to provide a statement that the new attorney(s) has been apprised of the secrecy order.
In the case of applications bearing National Security Classification markings pursuant to an Executive Order, e.g., “Confidential” or “Secret,” applicants must provide a DoD cage code as evidence of the ability to accept and store classified information. Applicants no longer need to provide individual personal information to ensure a proper security clearance. Personnel controlling the cleared correspondence address bear the burden of ensuring that individuals obtaining classified information from the correspondence address follow the proper procedures for handling classified information.
IV. INTERNATIONALAPPLICATIONS (PCT)AND INTERNATIONAL DESIGN APPLICATIONS
If the Secrecy Order is applied to an international application or an international design application, the application will not be mailed, delivered, or otherwise transmitted to the international authorities or the applicant as long as the Secrecy Order remains in effect.
An international application will be considered withdrawn (abandoned) if the Secrecy Order remains in effect at the end of the time limit under PCT Rule 22.3 because the Record Copy of the international application was not received in time by the International Bureau. 37 CFR 5.3(d), PCT Article 12(3), and PCT Rule 22.3. If the United States of America has been designated, however, it is possible to save the U.S. filing date, by fulfilling the requirements of 35 U.S.C. 371(c) prior to the withdrawal.
V. CHANGES IN SECRECY ORDERS
Applicants may petition for rescission or modification of the Secrecy Order. For example, if the applicant believes that certain existing facts or circumstances would render the Secrecy Order ineffectual, he or she may informally contact the sponsoring agency to discuss these facts or formally petition the Commissioner for Patents to rescind the Order. Rescission of a Secrecy Order may also be effected in some circumstances by expunging the sensitive subject matter from the disclosure, provided the sensitive subject matter is not necessary for an enabling disclosure under 35 U.S.C. 112. See MPEP § 724.05. The defense agency identified with the
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Secrecy Order as sponsoring the Order should be contacted directly for assistance in determining what subject matter in the application is sensitive, and whether the agency would agree to rescind the Order upon expunging this subject matter. The applicant may also petition the Commissioner for Patents for a permit to disclose the invention to another or to modify the Secrecy Order stating fully the reason or purpose for disclosure or modification. An example of such a situation would be a request to file the application in a foreign country. The requirements for petitions are described in 37 CFR 5.4 and 5.5. The law also provides that if an appeal is necessary, it may be taken to the Secretary of Commerce. Any petition or appeal should be addressed to the Mail Stop L&R, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia, 22313-1450.
VI. IMPROPER OR INADVERTENT DISCLOSURE
If, prior to or after the issuance of the Secrecy Order, any significant part of the subject matter or material information relevant to the application has been or is revealed to any U.S. citizen in the United States, the principals must promptly inform such person of the Secrecy Order and the penalties for improper disclosure. If such part of the subject matter was or is disclosed to any person in a foreign country or foreign national in the U.S., the principals must not inform such person of the Secrecy Order, but instead must promptly furnish to Mail Stop L&R, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia, 22313-1450 the following information to the extent not already furnished: date of disclosure; name and address of the disclosee; identification of such subject matter; and any authorization by a U.S. government agency to export such subject matter. If the subject matter is included in any foreign patent application or patent, this should be identified.
VII. EXPIRATION
Under the provision of 35 U.S.C. 181, a Secrecy Order remains in effect for a period of 1 year from its date of issuance. A Secrecy Order may be renewed for additional periods of not more than 1 year upon notice by a government agency that the national interest so requires. The applicant is notified of any such renewal.
The expiration of or failure to renew a Secrecy Order does not lessen in any way the responsibility of the principals for the security of the subject matter if it is subject to the provisions of Exec. Order No. 12958 or the Atomic Energy Act of 1954, as amended, 42 U.S.C. 141 et. seq. and 42 U.S.C. 2181 et. seq. or other applicable law unless the principals have been expressly notified that the subject patent application has been declassified by the proper authorities and the security markings have been authorized to be canceled or removed.
121 Handling of Applications under Secrecy Order and/or Bearing National Security Markings [R-08.2012]
Applications subject to Secrecy Order will be deleted from any image file system within the USPTO, converted to paper and held with Licensing and Review. The application will be transferred to an examiner designated by Licensing and Review for examination. Under the current Executive Order for Classified National Security Information, standards are prescribed for the marking, handling, and care of official information which requires safeguarding in the interest of security.
Papers marked as prescribed in the Executive Orders and showing that such marking is applied by, or at the direction of, a government agency, are accepted in patent applications. All applications or papers, including non-patent literature, in the U.S. Patent and Trademark Office bearing words such as “Secret,” “Confidential,” “ITAR” or similar must be promptly referred to Technology Center (TC) Working Group 3640 for clarification or security treatment. Under no circumstances can any such application, drawing, exhibit, or other paper be placed in public records, such as the patented files, until all security markings have been considered and declassified or otherwise explained. For applications filed with the Office bearing what appears to be National Security Markings, the applicant will be so notified by Licensing and Review and asked to explain the markings, remove such markings if improper, or obtain a Secrecy Order, if necessary. If markings are found improper and removed, the application may be referred to a defense agency if deemed necessary for review under the second paragraph of 35 U.S.C. 181. Any application filed
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directly with Licensing and Review, not bearing proper security markings or Secrecy Order will be transmitted to scanning for incorporation as an electronic file in IFW and treated as a normal application.
Authorized security markings may be placed on the patent application drawings when filed provided that such markings are outside the illustrations and that they are removed when the material is declassified. 37 CFR 1.84(v).
122-129 [Reserved]
130 Examination of Secrecy Order Cases [R-11.2013]
All applications in which a Secrecy Order has been imposed are examined in a secure location by examiners possessing national security clearances under the control of Licensing and Review. If the Order is imposed subsequent to the docketing of an application in another TC, the application will be transferred to an examiner designated by Licensing and Review.
Secrecy Order cases are examined for patentability as in other cases, but will not be passed to issue; nor will an interference or derivation be instituted where one or more of the conflicting cases is classified or under Secrecy Order. See 37 CFR 5.3 and MPEP § 2306.
In case of a final rejection, while such action must be properly replied to, and an appeal, if filed, must be completed by the applicant to prevent abandonment, such appeal will not be set for hearing by the Patent Trial and Appeal Board until the Secrecy Order is removed, unless specifically ordered by the Commissioner for Patents.
When a Secrecy Order case is in condition for allowance, a notice of allowability (Form D-10) is issued, thus closing the prosecution. See 37 CFR 5.3(c). Any amendments received thereafter are not entered or responded to until such time as the Secrecy Order is rescinded. At such time,
amendments which are free from objection will be entered; otherwise they are denied entry.
Due to the additional administrative burdens associated with handling papers in Secrecy Order cases, the full statutory period for reply will ordinarily be set for all Office actions issued on such cases.
Sometimes applications bearing national security markings but no Secrecy Order come up for examination. In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application. Pursuant to 37 CFR 5.1(d), if no Secrecy Order has issued in a national security classified patent application, the Office will set a time period within which the applicant must take one of the following three actions in order to prevent abandonment of the application:
(A) obtain a Secrecy Order;
(B) declassify the application; or
(C) submit evidence of a good faith effort to obtain a Secrecy Order pursuant to 37 CFR 5.2(a).
Pursuant to 37 CFR 5.1(e), a national security classified patent application will not be allowed until the application is declassified and any Secrecy Order pursuant to 37 CFR 5.2(a) has been rescinded.
131-139 [Reserved]
140 Foreign Filing Licenses [R-07.2015]
35 U.S.C. 184 Filing of application in foreign country.
(a) FILING IN FOREIGN COUNTRY.—Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed
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abroad through error and the application does not disclose an invention within the scope of section 181.
(b) APPLICATION.—The term “application” when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.
(c) SUBSEQUENT MODIFICATIONS,AMENDMENTS, AND SUPPLEMENTS.—The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not change the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181. In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United States application was not required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require the United States application to have been made available for inspection under such section 181.
35 U.S.C. 185 Patent barred for filing without license.
Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error, and the patent does not disclose subject matter within the scope of section 181.
35 U.S.C. 186 Penalty.
Whoever, during the period or periods of time an invention has been ordered to be kept secret and the grant of a patent thereon withheld pursuant to section 181, shall, with knowledge of such order and without due authorization, willfully publish or disclose or authorize or cause to be published or disclosed the invention, or material information with respect thereto, or whoever willfully, in violation of the provisions of section 184, shall file or cause or authorize to be filed in any foreign country an application for patent or for the registration of a utility model, industrial design, or model in respect of any invention made in the United States, shall, upon conviction, be fined not more than $10,000 or imprisoned for not more than two years, or both.
35 U.S.C. 187 Nonapplicability to certain persons
The prohibitions and penalties of this chapter shall not apply to any officer or agent of the United States acting within the scope of his authority, nor to any person acting upon his written instructions or permission.
35 U.S.C. 188 Rules and regulations, delegation of power.
The Atomic Energy Commission, the Secretary of a defense department, the chief officer of any department or agency of the Government designated by the President as a defense agency of the United States, and the Secretary of Commerce, may separately issue rules and regulations to enable the respective department or agency to carry out the provisions of this chapter, and may delegate any power conferred by this chapter.
37 CFR 5.11 License for filing in, or exporting to, a foreign country an application on an invention made in the United States or technical data relating thereto.
(a) A license from the Commissioner for Patents under 35 U.S.C. 184 is required before filing any application for patent including any modifications, amendments, or supplements thereto or divisions thereof or for the registration of a utility model, industrial design, or model, in a foreign country, foreign patent office, foreign patent agency, or any international agency (other than the United States Patent and Trademark Office acting as a Receiving Office for international applications (35 U.S.C. 361 , § 1.412 ) or as an office of indirect filing for international design applications (35 U.S.C. 382 , §1.1002 )), if the invention was made in the United States, and:
(1) An application on the invention has been filed in the United States less than six months prior to the date on which the application is to be filed, or
(2) No application on the invention has been filed in the United States.
(b) The license from the Commissioner for Patents referred to in paragraph (a) of this section would also authorize the export of technical data abroad for purposes relating to the preparation, filing or possible filing and prosecution of a foreign application without separately complying with the regulations contained in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730 through 774 (Export Administration Regulations of the Bureau of Industry and Security, Department of Commerce) and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy).
(c) Where technical data in the form of a patent application, or in any form, are being exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign application, without the license from the Commissioner for Patents referred to in paragraphs (a) or (b) of this section, or on an invention not made in the United States, the export regulations contained in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts
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730 through 774 (Export Administration Regulations of the Bureau of Industry and Security, Department of Commerce) and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy) must be complied with unless a license is not required because a United States application was on file at the time of export for at least six months without a secrecy order under § 5.2 being placed thereon. The term “exported” means export as it is defined in 22 CFR part 120, 15 CFR part 734 and activities covered by 10 CFR part 810.
(d) If a secrecy order has been issued under § 5.2, an application cannot be exported to, or filed in, a foreign country (including an international agency in a foreign country), except in accordance with § 5.5.
(e) No license pursuant to paragraph (a) of this section is required:
(1) If the invention was not made in the United States, or
(2) If the corresponding United States application is not subject to a secrecy order under § 5.2, and was filed at least six months prior to the date on which the application is filed in a foreign country, or
(3) For subsequent modifications, amendments and supplements containing additional subject matter to, or divisions of, a foreign patent application if:
(i) A license is not, or was not, required under paragraph (e)(2) of this section for the foreign application;
(ii) The corresponding United States application was not required to be made available for inspection under 35 U.S.C. 181; and
(iii) Such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181.
(f) A license pursuant to paragraph (a) of this section can be revoked at any time upon written notification by the United States Patent and Trademark Office. An authorization to file a foreign patent application resulting from the passage of six months from the date of filing of a United States patent application may be revoked by the imposition of a secrecy order.
37 CFR 5.12 Petition for license.
(a) Filing of an application on an invention made in the United States will be considered to include a petition for license under 35 U.S.C. 184 for the subject matter of the application. The filing receipt or other official notice will indicate if a license is granted. If the initial automatic petition is not granted, a subsequent petition may be filed under paragraph (b) of this section.
(b) A petition for license must include the fee set forth in § 1.17(g) of this chapter, the petitioner’s address, and full instructions for delivery of the requested license when it is to be delivered to other than the petitioner. The petition should be presented in letter form.
37 CFR 5.13 Petition for license; no corresponding application.
If no corresponding national, international design, or international application has been filed in the United States, the petition for license under § 5.12(b) must also be accompanied by a legible copy of the material upon which a license is desired. This copy will be retained as a measure of the license granted.
37 CFR 5.14 Petition for license; corresponding U.S. application.
(a) When there is a corresponding United States application on file, a petition for license under § 5.12(b) must also identify this application by application number, filing date, inventor, and title, but a copy of the material upon which the license is desired is not required. The subject matter licensed will be measured by the disclosure of the United States application.
(b) Two or more United States applications should not be referred to in the same petition for license unless they are to be combined in the foreign or international application, in which event the petition should so state and the identification of each United States application should be in separate paragraphs.
(c) Where the application to be filed or exported abroad contains matter not disclosed in the United States application or applications, including the case where the combining of two or more United States applications introduces subject matter not disclosed in any of them, a copy of the application as it is to be filed or exported abroad, must be furnished with the petition. If, however, all new matter in the application to be filed or exported is readily identifiable, the new matter may be submitted in detail and the remainder by reference to the pertinent United States application or applications.
37 CFR 5.15 Scope of license.
(a) Applications or other materials reviewed pursuant to §§ 5.12 through 5.14, which were not required to be made available for inspection by defense agencies under 35 U.S.C. 181, will be eligible for a license of the scope provided in this paragraph. This license permits subsequent modifications, amendments, and supplements containing additional subject matter to, or divisions of, a foreign patent application, if such changes to the application do not alter the general nature of the invention in a manner which would require the United States application to have been made available for inspection under 35 U.S.C. 181. Grant of this license authorizes the export and filing of an application in a foreign country or to any foreign patent agency or international patent agency when the subject matter of the foreign application corresponds to that of the domestic application. This license includes authority:
(1) To export and file all duplicate and formal application papers in foreign countries or with international agencies;
(2) To make amendments, modifications, and supplements, including divisions, changes or supporting matter consisting of the illustration, exemplification, comparison, or explanation of subject matter disclosed in the application; and
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(3) To take any action in the prosecution of the foreign application provided that the adding of subject matter or taking of any action under paragraphs (a)(1) or (2) of this section does not change the general nature of the invention disclosed in the application in a manner that would require such application to have been made available for inspection under 35 U.S.C. 181 by including technical data pertaining to:
(i) Defense services or articles designated in the United States Munitions List applicable at the time of foreign filing, the unlicensed exportation of which is prohibited pursuant to the Arms Export Control Act, as amended, and 22 CFR parts 120 through 130; or
(ii) Restricted Data, sensitive nuclear technology or technology useful in the production or utilization of special nuclear material or atomic energy, dissemination of which is subject to restrictions of the Atomic Energy Act of 1954, as amended, and the Nuclear Non-Proliferation Act of 1978, as implemented by the regulations for Assistance to Foreign Atomic Energy Activities, 10 CFR part 810, in effect at the time of foreign filing.
(b) Applications or other materials which were required to be made available for inspection under 35 U.S.C. 181 will be eligible for a license of the scope provided in this paragraph. Grant of this license authorizes the export and filing of an application in a foreign country or to any foreign patent agency or international patent agency. Further, this license includes authority to export and file all duplicate and formal papers in foreign countries or with foreign and international patent agencies and to make amendments, modifications, and supplements to, file divisions of, and take any action in the prosecution of the foreign application, provided subject matter additional to that covered by the license is not involved.
(c) A license granted under § 5.12(b) pursuant to § 5.13 or § 5.14 shall have the scope indicated in paragraph (a) of this section, if it is so specified in the license. A petition, accompanied by the required fee (§ 1.17(g) of this chapter), may also be filed to change a license having the scope indicated in paragraph (b) of this section to a license having the scope indicated in paragraph (a) of this section. No such petition will be granted if the copy of the material filed pursuant to § 5.13 or any corresponding United States application was required to be made available for inspection under 35 U.S.C. 181. The change in the scope of a license will be effective as of the date of the grant of the petition.
(d) In those cases in which no license is required to file or export the foreign application, no license is required to file papers in connection with the prosecution of the foreign application not involving the disclosure of additional subject matter.
(e) Any paper filed abroad or transmitted to an international patent agency following the filing of a foreign application that changes the general nature of the subject matter disclosed at the time of filing in a manner which would require such application to have been made available for inspection under 35 U.S.C. 181 or which involves the disclosure of subject matter listed in paragraphs (a)(3)(i) or (ii) of this section must be separately licensed in the same manner as a foreign application. Further, if no license has been granted under § 5.12(a) on filing the
corresponding United States application, any paper filed abroad or with an international patent agency that involves the disclosure of additional subject matter must be licensed in the same manner as a foreign application.
(f) Licenses separately granted in connection with two or more United States applications may be exercised by combining or dividing the disclosures, as desired, provided:
(1) Subject matter which changes the general nature of the subject matter disclosed at the time of filing or which involves subject matter listed in paragraphs (a)(3) (i) or (ii) of this section is not introduced and,
(2) In the case where at least one of the licenses was obtained under § 5.12(b), additional subject matter is not introduced.
(g) A license does not apply to acts done before the license was granted. See § 5.25 for petitions for retroactive licenses.
37 CFR 5.18 Arms, ammunition, and implements of war.
(a) The exportation of technical data relating to arms, ammunition, and implements of war generally is subject to the International Traffic in Arms Regulations of the Department of State (22 CFR parts 120 through 130); the articles designated as arms, ammunitions, and implements of war are enumerated in the U.S. Munitions List (22 CFR part 121). However, if a patent applicant complies with regulations issued by the Commissioner for Patents under 35 U.S.C. 184, no separate approval from the Department of State is required unless the applicant seeks to export technical data exceeding that used to support a patent application in a foreign country. This exemption from Department of State regulations is applicable regardless of whether a license from the Commissioner for Patents is required by the provisions of §§ 5.11 and 5.12 (22 CFR part 125).
(b) When a patent application containing subject matter on the Munitions List (22 CFR part 121) is subject to a secrecy order under § 5.2 and a petition is made under § 5.5 for a modification of the secrecy order to permit filing abroad, a separate request to the Department of State for authority to export classified information is not required (22 CFR part 125).
37 CFR 5.19 Export of technical data.
(a) Under regulations (15 CFR 734.3(b)(1)(v)) established by the Department of Commerce, a license is not required in any case to file a patent application or part thereof in a foreign country if the foreign filing is in accordance with the regulations (§§ 5.11 through 5.25) of the U.S. Patent and Trademark Office.
(b) An export license is not required for data contained in a patent application prepared wholly from foreign-origin technical data where such application is being sent to the foreign inventor to be executed and returned to the United States for subsequent filing in the U.S. Patent and Trademark Office (15 CFR 734.10(a)).
37 CFR 5.20 Export of technical data relating to sensitive nuclear technology.
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Under regulations (10 CFR 810.7) established by the United States Department of Energy, an application filed in accordance with the regulations (§§ 5.11 through 5.25) of the Patent and Trademark Office and eligible for foreign filing under 35 U.S.C. 184, is considered to be information available to the public in published form and a generally authorized activity for the purposes of the Department of Energy regulations.
37 CFR 5.25 Petition for retroactive license.
(a) A petition for retroactive license under 35 U.S.C. 184 shall be presented in accordance with § 5.13 or § 5.14(a), and shall include:
(1) A listing of each of the foreign countries in which the unlicensed patent application material was filed,
(2) The dates on which the material was filed in each country,
(3) A verified statement (oath or declaration) containing:
(i) An averment that the subject matter in question was not under a secrecy order at the time it was filed aboard [sic], and that it is not currently under a secrecy order,
(ii) A showing that the license has been diligently sought after discovery of the proscribed foreign filing, and
(iii) An explanation of why the material was filed abroad through error without the required license under § 5.11 first having been obtained, and
(4) The required fee (§ 1.17(g) of this chapter).
(b) The explanation in paragraph (a) of this section must include a showing of facts rather than a mere allegation of action through error. The showing of facts as to the nature of the error should include statements by those persons having personal knowledge of the acts regarding filing in a foreign country and should be accompanied by copies of any necessary supporting documents such as letters of transmittal or instructions for filing. The acts which are alleged to constitute error should cover the period leading up to and including each of the proscribed foreign filings.
(c) If a petition for a retroactive license is denied, a time period of not less than thirty days shall be set, during which the petition may be renewed. Failure to renew the petition within the set time period will result in a final denial of the petition. A final denial of a petition stands unless a petition is filed under § 1.181 within two months of the date of the denial. If the petition for a retroactive license is denied with respect to the invention of a pending application and no petition under § 1.181 has been filed, a final rejection of the application under 35 U.S.C. 185 will be made.
In the interests of national security, the United States government imposes restrictions on the export of technical information. These restrictions are administered by the Departments of Commerce,
State, and/or Energy depending on the subject matter involved. For the filing of patent applications and registrations of industrial designs in foreign countries, the authority for export control has been delegated to the Commissioner for Patents (note that the term “Commissioner of Patents” is used in Chapter 17 of title 35 of the U.S. Code, but “Commissioner for Patents” is used in most of the remainder of the statute and throughout title 37 of the Code of Federal Regulations; both titles are understood to represent the same individual). Note that the export of subject matter abroad for purposes not related to foreign filing of a patent application or a registration of an industrial design, such as preparing an application in a foreign country for subsequent filing in the USPTO is not covered by any license from the USPTO. Applicants are directed to the Bureau of Industry and Security at the Department of Commerce for the appropriate clearances.
There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed. 37 CFR 5.11(e)(2).
There are several means by which a foreign filing license may be issued. First, every U.S. origin application filed in the USPTO is considered to include an implicit petition for a foreign filing license. The grant of a license is not immediate or even ensured. If the application is not marked by the security screeners, the petition is granted. The filing receipt or other official notice will indicate if a foreign filing license is granted. The license becomes effective on the date shown. Further, grant of this license is made of record in the application file. The scope of this license is quite broad as set forth in 37 CFR 5.15(a).
I. EXPEDITED FOREIGN FILING LICENSE
Explicit petitions for foreign filing licenses will also be accepted in accordance with 37 CFR 5.12(b). Such petitions may be hand carried to the Office, faxed to Licensing and Review, or submitted via
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EFS-Web. See MPEP §§ 502, 502.01 and 502.05. Applicants may be interested in such petitions in cases:
(A) in which the filing receipt license is not granted;
(B) in which the filing receipt has not yet been issued (37 CFR 5.14(a) or (b));
(C) in which there is no corresponding U.S. application (37 CFR 5.13);
(D) in which subject matter additional to that already licensed is sought to be licensed (37 CFR 5.14(c) and 5.15(e)); or
(E) in which expedited handling is requested.
The scope of any license granted on these petitions is indicated on the license.
Petitions under 37 CFR 5.14(a) or (b) as well as any license granted on the petition are made of record in the application file. Petitions under 37 CFR 5.14(c) are not ordinarily made of record in the application file.
Applicants granted a license under 37 CFR 5.12(b) having the relatively narrow scope indicated in 37 CFR 5.15(b) may petition under 37 CFR 5.15(c) to convert the license to the broad scope of 37 CFR 5.15(a). A fee is charged for such a petition. See 37 CFR 1.17(g). If the petition is granted, the change in the scope of the license is effective as of that day.
Generally, a license will be granted, if there is no national security concern, within 3 business days from receipt of the expedited petition (filed under 37 CFR 5.12(b)) in Licensing and Review. Applicants are strongly encouraged to hand deliver or fax the license request directly to Licensing and Review at 571-273-0185. Applicants should also provide a contact number or fax number to which the license should be sent. Without this information, the license will be mailed to the requester, thereby delaying the receipt of the license.
II. RETROACTIVE LICENSES
A petition for a retroactive filing license may be filed under 37 CFR 5.25 if an unlicensed foreign filing has occurred through error. However, the
requirements of 37 CFR 5.25 must be fulfilled in order for such a petition to be granted. Note that for petitions filed prior to September 16, 2012, the petition must specify that the error occurred without deceptive intent (see pre-AIA 37 CFR 5.25(a)(3)(iii) and (b)). Licenses under 37 CFR 5.25 are only made retroactive with respect to specific acts of foreign filing, and therefore the countries, the actual dates of filing and the establishing of the nature of the error must be provided for each act of proscribed foreign filing for which a retroactive license is sought. Also, the required verified statement must be in oath or declaration form.
Upon written notification from the USPTO, any foreign filing license required by 37 CFR 5.11(a) may be revoked. Ordinarily, revocation indicates that additional review of the licensed subject matter revealed the need for referral of the application to the appropriate defense agencies. Revocation of a filing receipt license (37 CFR 5.12(a)) does not necessarily mean that a petition under 37 CFR 5.12(b) for a license of narrower scope will not be granted. The revocation becomes effective on the date on which the notice is mailed. Foreign filings, which occurred prior to revocation, need not be abandoned or otherwise specially treated; however, additional filings without a license are not permitted unless 6 months have elapsed from the filing of any corresponding U.S. application. Papers and other documents needed in support of prosecution of foreign applications may be sent abroad if they comply with any pertinent export regulations. Of course, if and once a Secrecy Order is issued, the restrictions thereof must immediately be observed.
Only the imposition of a Secrecy Order will cause revocation of the authority which arises from 35 U.S.C. 184 to file a foreign patent application 6 months or later after the date of filing of a corresponding U.S. patent application.
The penalties for failing to obtain any necessary license to file a patent application abroad are set forth in 35 U.S.C. 182, 35 U.S.C. 185, and 35 U.S.C. 186 and include loss of patenting rights in addition to possible fine or imprisonment. Petitions for retroactive foreign filing licenses are processed by Licensing and Review and decided by the Office of Petitions. See MPEP § 1002.02(b). If applicant also
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wishes an expedited license for future filings, a separate expedited license request must be filed with Licensing and Review.
141-149 [Reserved]
150 Statements to DOE and NASA [R-11.2013]
37 CFR 1.14 Patent applications preserved in confidence. *****
(d) Applications reported to Department of Energy. Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications. Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).
*****
Title 42 United States Code, Section 2182 reads in part:
42 U.S.C. 2182 Inventions conceived during Commission contracts; ownership; waiver; hearings
*****
No patent for any invention or discovery, useful in the production or utilization of special nuclear material or atomic energy, shall be issued unless the applicant files with the application, or within thirty days after request therefor by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (unless the Commission advises the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office that its rights have been determined and that accordingly no statement is necessary) a statement under oath setting forth the full facts surrounding the making or conception of the invention or discovery described in the application and whether the invention or discovery was made or conceived in the course of or under any contract, subcontract, or arrangement entered into with or for the benefit of the Commission, regardless of whether the contract, subcontract, or arrangement involved the expenditure of funds by the Commission. The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office shall as soon as the application is otherwise in condition for allowance forward copies of the application and the statement to the Commission.
*****
Similarly, Title 51 United States Code, section 20135 provides in part:
51 U.S.C. 20135 Property rights in inventions
*****
(d) Patent Application. - No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (hereafter in this section referred to as the "Director") to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or within 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any contract of the Administration. Copies of each such statement and the application to which it relates shall be transmitted forthwith by the Director to the Administrator.
*****
Property rights statements to DOE or NASA may be filed at any time but should be updated if necessary to accurately reflect property rights at the time the application is allowed.
Shortly after filing, an informal request for a property rights statement will be mailed to those applicants whose nonprovisional applications have been marked by the USPTO security screeners as being of interest to DOE or NASA. Provisional applications are not subject to DOE or NASA property rights review. While no formal time period is set, a response by applicants within 45 days will expedite processing. If the statement submitted during this period is defective, another letter is sent from Licensing and Review detailing the deficiencies and giving applicant another opportunity to respond during this period of informal correspondence.
If no response to the initial so called 45-Day Letter is received or if repeated efforts to correct a defective statement evidence an absence of cooperation on the part of the applicant, a formal request for a statement in accordance with the statutes will be made. A 30-day statutory period for response is then set. There is no provision for an extension of this time period. If no proper and timely statement is received, the application will be held abandoned and the
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applicant so notified. Such applications may be revived under the provisions of 37 CFR 1.137. In re Rutan, 231 USPQ 864 (Comm’r Pat. 1986).
Any papers pertaining to property rights under section 152 of the Atomic Energy Act, 42 U.S.C. 2182, (DOE), or section 305(c) or the National Aeronautics and Space Act, 42 U.S.C. 2457, (NASA), that have not been associated with the application file, or have not been made of record in the file and processed by the Licensing and Review section, must be sent to the Licensing and Review section immediately.
151 Content of the Statements [R-11.2013]
The law requires the statement to set forth “the full facts” surrounding the conception and making of the invention. These facts should include those which are unique to that invention. The use of form paragraphs or printed forms which set forth only broad generalized statements of fact is not ordinarily regarded as meeting the requirements of these statutes.
The word “applicant” in both of these statutes is construed by the Office to mean the inventor or joint inventors in person, or an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter. Accordingly, in the ordinary situation, the statements must be signed by the inventor or the joint inventors, or an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter if available. This construction is consistent with the fact that no other person could normally be more knowledgeable of the “full facts concerning the circumstances under which such invention was made,” (42 U.S.C. 2457) or, “full facts surrounding the making or conception of the invention or discovery” (42 U.S.C. 2182). If a request under 37 CFR 1.48 for correction of inventorship is granted during pendency of an application in which a property rights statement has been filed, a supplemental statement executed by any added inventor(s) is required and should promptly be filed with Licensing and Review.
In instances where an applicant does not have firsthand knowledge whether the invention involved
work under any contract, subcontract, or arrangement with or for the benefit of the Atomic Energy Commission, or had any relationship to any work under any contract of the National Aeronautics and Space Administration, and includes in his or her statement information of this nature derived from others, his or her statement should identify the source of his or her information. Alternatively, the statement by the applicant could be accompanied by a supplemental declaration or oath, as to the contractual matters, by the assignee or other person, e.g., an employee thereof, who has the requisite knowledge.
When an inventor applicant is deceased or legally incapacitated, or where it is shown to the satisfaction of this Office that he or she refuses to furnish a statement or cannot be reached after diligent efforts, declarations or statements under oath setting forth the information required by the statutes may be accepted from an officer or employee of the assignee who has sufficient knowledge of the facts. The offer of such substitute statements should be based on the actual unavailability of or refusal by the applicant, rather than mere inconvenience. Where it is shown that one of the joint inventors is deceased or unavailable, a statement by all of the other inventor(s) may be accepted.
The following is an acceptable format for statements to DOE or NASA assuming that no government funds or other considerations were involved in the making or conception of the invention. It is important that the information provided in the statement be an accurate reflection of the fact situation at the time the statement is made. While the sample below is in the form of a declaration, a sworn oath is equally acceptable.
Note that the statement must be in the form of an oath or declaration. Further note that the statement must be signed by all the inventors. See also the notice entitled “Statements Filed Under Atomic Energy Act and NASA Act” published in 914 OG 1 (Sept. 4, 1973) for further information.
I (We) _____________________ citizens of residing at declare: That I (we) made and conceived the invention described and claimed
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in patent application number filed in the United States of America on titled. I (We) ________________ citizens of ________________ residing at ________________ declare: That I (we) made and conceived the invention described and claimed in patent application number ________________ filed in the United States of America on ________________ titled ________________. (Include completed I. or II. below) I. (for Inventors Employed by an Organization) That I (we) made and conceived this invention while employed by ________________. That the invention is related to the work I am (we are) employed to perform and was made within the scope of my (our) employment duties; That the invention was made during working hours and with the use of facilities, equipment, materials, funds, information and services of ________________. Other relevant facts are: ________________. That to the best of my (our) knowledge and belief based upon information provided by ________________ of ________________: -OR- II. (For Self-Employed Inventors) That I (we) made and conceived this invention on my (our) own time using only my (our) own facilities, equipment, materials, funds, information and services. Other relevant facts are ________________ That to the best of my (our) knowledge and belief: (Include III. and/or IV. below as appropriate) III. The invention or discovery was not made or conceived in the course of, or in connection with, or under the terms of any contract, subcontract or arrangement entered into with or for the benefit of the United States Atomic Energy Commission or its successors Energy Research and Development Administration or the Department of Energy. -AND/OR- IV. The invention was not made under nor is there any relationship of the invention to the performance of any work under any contract of the National Aeronautics and Space Administration.
V. The undersigned inventor(s) declare(s) further that all statements made herein of his or her (their)own knowledge are true and that all statements made on information and belief are believed to be true and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issuing thereon. Inventor’s Signature________________ Post Office Address________________ Date________________ Inventor’ s Signature________________ Post Office Address________________ Date________________
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Chapter 200 Types, Cross-Noting, and Status of Application
Types of Applications201 National Applications201.01 General Terms Used to Describe Applications
201.02
[Reserved]201.03 Provisional Application201.04 Reissue Application201.05 Divisional Application201.06
Former 37 CFR 1.60 Divisional Continuation Procedure
201.06(a)
Former 37 CFR 1.62 File Wrapper Continuing Procedure
201.06(b)
37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure
201.06(c)
37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice
201.06(d)
Continuation Application201.07 Continuation-in-Part Application201.08
Cross-Noting202 Status of Applications203
New203.01 Rejected203.02 Amended203.03 Allowed or in Issue203.04 Abandoned203.05 Incomplete203.06 [Reserved]203.07 Status Inquiries203.08
Congressional and Other Official Inquiries
203.08(a)
[Reserved]204-209 Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application
210
Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e)
211
Requirements Related to the Prior-Filed Application
211.01
Claiming the Benefit of a Provisional Application
211.01(a)
Claiming the Benefit of a Nonprovisional Application
211.01(b)
Claiming the Benefit of an International Application Designating the United States
211.01(c)
Claiming the Benefit of an International Design Application Designating the United States
211.01(d)
Reference to Prior Application(s)211.02
Correcting or Adding a Benefit Claim After Filing
211.02(a)
Time Period for Making a Claim for Benefit Under 37 CFR 1.78
211.03
Delayed Benefit Claims211.04 Sufficiency of Disclosure in Prior-Filed Application
211.05
[Reserved]212 Right of Priority of Foreign Application213
Recognized Countries and Regional Patent Offices of Foreign Filing
213.01
Formal Requirements Relating to Foreign Priority Application
213.02
Time for Filing U.S. Nonprovisional Application
213.03
Requirement to File Priority Claim and Certified Copy During Pendency of Application
213.04
Right of Priority Based Upon an Application for an Inventor’s Certificate
213.05
Claiming Priority and Filing a Certified Copy in a National Stage Application (35 U.S.C. 371)
213.06
Claiming Priority and Filing a Certified Copy in a Nonprovisional International Design Application
213.07
Formal Requirements of Claim for Foreign Priority
214
Time for Filing Priority Claim214.01 Unintentionally Delayed Priority Claims
214.02
Office Acknowledgement of Priority Claims
214.03
Proper Identification of Priority Application in Foreign Priority Claim
214.04
Certified Copy of Foreign Application215 Electronic Priority Document Exchange
215.01
Time For Filing Certified Copy – Application Filed On or After March 16, 2013
215.02
Timeliness Requirement – Met By Priority Document Exchange
215.02(a)
Timeliness Requirement – Met By Interim Copy of Foreign Application
215.02(b)
Time For Filing Certified Copy – Application Filed Before March 16, 2013
215.03
Entitlement to Priority216
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216.01
Incorporation by Reference Under 37 CFR 1.57(b)
217
201 Types of Applications [R-07.2015]
35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 161 Patents for plants.
Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided.
35 U.S.C. 171 Patents for designs.
(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
(c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.
Patent applications can be directed to three broad types of subject matter:
(A) applications for patents as provided for by 35 U.S.C. 101 relating to a “new and useful process, machine, manufacture, or composition of matter," etc.;
(B) applications for plant patents as provided for by 35 U.S.C. 161; and
(C) applications for design patents as provided for by 35 U.S.C. 171.
The first type of patent application is sometimes referred to as a “utility” patent applications when being contrasted with a plant or design patent
application. The specialized procedure which pertains to the examination of applications for design and plant patents are treated in detail in Chapters 1500 and 1600, respectively.
201.01 National Applications [R-07.2015]
35 U.S.C. 111 Application.
[Editor Note: Applicable to any patent application filed on or after December 18, 2013. See 35 U.S.C. 111 (pre-PLT (AIA)) or 35 U.S.C. 111 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.
(3) FEE, OATH OR DECLARATION, AND CLAIMS.—The application shall be accompanied by the fee required by law. The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) FEE.—The application shall be accompanied by the fee required by law. The fee may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee within
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such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of a provisional application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to all the conditions in this subsection and section 119(e), and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119, 365(a), or 386(a) or to the benefit of an earlier filing date in the United States under section 120, 121, 365(c), or 386(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
(c) PRIOR FILED APPLICATION.—Notwithstanding the provisions of subsection (a), the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. Such application shall be treated as having never been filed, unless—
(1) the application is revived under section 27; and
(2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.
35 U.S.C. 111 (pre-PLT (AIA)) Application.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012, and before December 18, 2013. See 35 U.S.C. 111 or 35 U.S.C. 111 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.
(3) FEE AND OATH OR DECLARATION.—The application must be accompanied by the fee required by law. The fee and oath or declaration may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(4) FAILURE TO SUBMIT.—Upon failure to submit the fee and oath or declaration within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath or declaration was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) FEE.—
(A) The application must be accompanied by the fee required by law.
(B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional.
(4) FILING DATE.—The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
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§ 201.01TYPES, CROSS-NOTING, AND STATUS OF APPLICATION
(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to all the conditions in this subsection and section 119(e), and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
Pre-AIA 35 U.S.C. 111 requirements substantially correspond to those of pre-PLT (AIA) 35 U.S.C. 111, but do not include conforming amendments with regard to the oath or declaration provisions and other miscellaneous provisions of the AIA.
37 CFR 1.9 Definitions.
(a)(1) A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the HagueAgreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
(2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).
(3) A nonprovisional application as used in this chapter means either a U.S. national application for patent which was filed in the Office under 35 U.S.C. 111(a), an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
(b) An international application as used in this chapter means an international application for patent filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.
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(l) Hague Agreement as used in this chapter means the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and Hague Agreement Article as used in this chapter means an Article under the Hague Agreement.
(m) Hague Agreement Regulations as used in this chapter means the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, and Hague Agreement Rule as used in this chapter means one of the Hague Agreement Regulations.
(n) An international design application as used in this chapter means an application for international registration of a design filed under the Hague Agreement. Unless otherwise clear from the wording, reference to "design application" or "application for a design patent" in this chapter includes an international design application that designates the United States.
I. APPLICATIONS FILED UNDER 35 U.S.C. 111
Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d). See MPEP § 601.01(a) for an overview of the procedures and requirements for filing applications under 35 U.S.C. 111(a).
For details regarding reissue, design, and plant patent applications, see MPEP Chapters 1400, 1500, and 1600, respectively. For details regarding divisional, continuation, and continuation-in-part applications, see MPEP §§ 201.06 et seq., 201.07, and 201.08, respectively. See MPEP § 201.06(d) for a discussion of continued prosecution applications filed under 37 CFR 1.53(d).
Effective December 18, 2013, the Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions of the Patent Law Treaty in title II. Notable changes include the filing date requirements for nonprovisional applications filed under 35 U.S.C. 111(a). Unless the application is for a design patent, nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, are no longer required to include at least one claim or any drawings in order to receive a filing date for the application. See MPEP §§ 601.01(e) and 601.01(f). The filing date of an application for a design patent is the date on which the Office receives the specification
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including at least one claim and any required drawings. See 35 U.S.C. 171(c). In addition, as provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application. See MPEP § 601.01(a), subsection III.
Applications filed under 35 U.S.C. 111(b) are provisional applications for patent and are filed under 37 CFR 1.53(c). Significant differences between nonprovisional applications filed under 35 U.S.C. 111(a) and provisional applications filed under 35 U.S.C. 111(b) include the following:
(A) No claim is required in a provisional application.
(B) No oath or declaration is required in a provisional application.
(C) Provisional applications will not be examined for patentability.
(D) A provisional application is not entitled to claim priority to any foreign application or the benefit of any earlier filed national application.
(E) A design patent application is not entitled to claim the benefit of a provisional application (See 35 U.S.C. 172 and 37 CFR 1.53(c)(4)).
See MPEP § 201.04 for detailed information regarding provisional applications.
For applications not filed under 35 U.S.C. 111, see MPEP Chapters 1800 and 2900 for details regarding international applications (PCT) and international design applications, respectively.
II. INTERNATIONAL APPLICATION DESIGNATING THE UNITED STATES
35 U.S.C. 363 International application designating the United States: Effect.
An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.
37 CFR 1.9(a)(1) defines a national application as a U.S. application which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the HagueAgreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
Note that 37 CFR 1.9(b) defines an international application for patent as one filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.
Treatment of a national application under 35 U.S.C. 111 and a national stage application (a national application which entered the national stage from an international application in which the conditions of 37 CFR 1.9(a)(1) have been satisfied) are similar but not identical.
See MPEP § 1893.03 et seq. for examination of international applications in the national stage, and MPEP § 1896 for a description of the differences between a nonprovisional application filed under 35 U.S.C. 111(a) and an international application filed under the Patent Cooperation Treaty that entered the national stage. Note in particular the following examples:
(A) Restriction practice as explained in MPEP § 806 et seq. is applied to national applications under 35 U.S.C. 111(a) while unity of invention practice as explained in MPEP §§ 1850 and 1893.03(d) is applied to national stage applications.
(B) National nonprovisional applications filed under 35 U.S.C. 111(a) without an executed oath or declaration, basic filing fee, search fee, or examination fee are governed by the notification practice set forth in 37 CFR 1.53(f), as are utility and plant patent applications filed on or after December 18, 2013, without a claim. Incomplete national stage applications are governed by the notification practice set forth in 37 CFR 1.495.
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III. INTERNATIONAL DESIGN APPLICATION DESIGNATING THE UNITED STATES
35 U.S.C. 385 Effect of international design application.
An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16.
37 CFR 1.9 Definitions.
(a)(1) A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the HagueAgreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
(2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).
(3) A nonprovisional application as used in this chapter means either a U.S. national application for patent which was filed in the Office under 35 U.S.C. 111(a), an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
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(l) Hague Agreement as used in this chapter means the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and Hague Agreement Article as used in this chapter means an Article under the Hague Agreement.
(m) Hague Agreement Regulations as used in this chapter means the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, and Hague Agreement Rule as used in this chapter means one of the Hague Agreement Regulations.
(n) An international design application as used in this chapter means an application for international registration of a design filed under the Hague Agreement. Unless otherwise clear from the wording, reference to "design application" or "application for a design patent" in this chapter includes an international design application that designates the United States.
Title I of the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012) implemented the Hague Agreement Concerning International Registration of Industrial Designs. The Hague Agreement is an
international agreement that enables an applicant to file a single international design application which may have the effect of an application for protection for the design(s) in countries and/or intergovernmental organizations that are parties to the Hague Agreement (the “Contracting Parties”) designated in the application. The United States is a Contracting Party to the Hague Agreement, which took effect with respect to the United States on May 13, 2015. The Hague Agreement is administered by the International Bureau of the World Intellectual Property Organization (“the International Bureau”).
See MPEP Chapter 2900 for information regarding international design applications.
201.02 General Terms Used to Describe Applications [R-07.2015]
See 37 CFR 1.9(a) for definitions of the terms “national application,” “provisional application,” and “nonprovisional application;” see 37 CFR 1.9(b) for the definition of “international application;" and see 37 CFR 1.9(n) for the definition of ”international design application." See also MPEP § 201.01.
“Original” application is used in the patent statutes and rules to refer to an application which is not a reissue application. An original application may be a first filing or a continuing application.
A continuing application is a continuation, divisional, or continuation-in-part application filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.
A “substitute” application is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. Current practice does not require applicant to insert in the specification reference to the earlier application; however, attention should be called to the earlier application. A substitute application does not obtain the benefit of the filing date of the prior application. Use form paragraph 2.07 to remind applicant of possible substitute status.
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¶ 2.07 Definition of a Substitute
Applicant refers to this application as a “substitute” of Application No. [1], filed [2]. The term “substitute” is used to designate an application which is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. A “substitute” does not obtain the benefit of the filing date of the prior application.
201.03 [Reserved]
[Editor Note: Information pertaining to correction of inventorship, name of inventor, and order of names in an application has been moved to MPEP § 602.01(c) et seq.]
201.04 Provisional Application [R-07.2015]
I. PROVISIONAL APPLICATION FILED ON OR AFTER DECEMBER 18, 2013
35 U.S.C. 111 Application.
[Editor Note: Applicable to any patent application filed on or after December 18, 2013. See 35 U.S.C. 111 (pre-PLT) for the law applicable to provisional applications filed under 35 U.S.C. 111(b) before December 18, 2013.]
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(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) FEE.—The application shall be accompanied by the fee required by law. The fee may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of a provisional application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed
under subsection (a). Subject to section 119(e)(3), if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to all the conditions in this subsection and section 119(e), and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119, 365(a), or 386(a) or to the benefit of an earlier filing date in the United States under section 120, 121, 365(c), or 386(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
37 CFR 1.9 Definitions.
(a)
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(2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).
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37 CFR 1.53 Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013.]
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(c) Application filing requirements — Provisional application. The filing date of a provisional application is the date on which a specification, with or without claims, is received in the Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
(1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request
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for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e), rather than converting the provisional application into a nonprovisional application pursuant to this paragraph. A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application ( i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a) may be made in a design application based on a provisional application. The requirements of §§ 1.821 through 1.825 regarding application
disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
Effective December 18, 2013, the Patent Law Treaties Implementation Act of 2012 (PLTIA), title II, amended 35 U.S.C. 111(b) to more closely align the corresponding provisions for nonprovisional applications in 35 U.S.C. 111(a) and provisional applications in 35 U.S.C. 111(b). The corresponding provision in 37 CFR 1.53(c) was revised accordingly.
The parts of a provisional application that are required are set forth in 37 CFR 1.51(c) and MPEP § 601.01(b). The filing date of a provisional application filed on or after December 18, 2013, is the date on which a specification as prescribed by 35 U.S.C. 112(a), with or without claims, is filed in the United States Patent and Trademark Office. Although the application will be accorded a filing date regardless of whether any drawings are submitted, applicants are advised to file any drawing required by 37 CFR 1.81(a) with the application. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
A provisional application must include a cover sheet required by 37 CFR 1.51(c)(1), which may be an application data sheet (37 CFR 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under 37 CFR 1.53(b). The filing fee is set forth in 37 CFR 1.16(d).
II. PROVISIONALAPPLICATION FILED BEFORE DECEMBER 18, 2013
35 U.S.C. 111 Application (pre-PLT)
[Editor Note: 35 U.S.C. 111(b) as reproduced herein is applicable to any patent application filed before December 18, 2013. See 35 U.S.C. 111 for the law applicable to provisional applications filed under 35 U.S.C. 111(b) on or after December 18, 2013.]
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(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the
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inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by section 112; and
(B) a drawing as prescribed by section 113.
(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) FEE.—
(A) The application must be accompanied by the fee required by law.
(B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional.
(4) FILING DATE.—The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to all the conditions in this subsection and section 119(e), and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
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37 CFR 1.9 Definitions.
(a)
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(2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).
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37 CFR 1.53 (pre-PLT) Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 before December 18, 2013.]
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(c) Application filing requirements—Provisional application. The filing date of a provisional application is the date on which a specification as prescribed by 35 U.S.C. 112(a), and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
(1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional
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application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, the inventor’s oath or declaration, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application ( i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 35 U.S.C. 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78(a) of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a)(4) may be made in a design application based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
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The parts of a provisional application that are required are set forth in 37 CFR 1.51(c) and MPEP § 601.01(b). The filing date of a provisional application is the date on which a specification as prescribed by 35 U.S.C. 112(a) and any drawing required by 37 CFR 1.81(a) are filed in the U.S. Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
A provisional application must also include the cover sheet required by 37 CFR 1.51(c)(1), which may be an application data sheet (37 CFR 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated
as an application filed under 37 CFR 1.53(b). The filing fee is set forth in 37 CFR 1.16(d).
III. PROVISIONALAPPLICATION - IN GENERAL
One of the provisions of the Uruguay Round Agreements Act (effective as of June 8, 1995), is the establishment of a domestic priority system. The Act provides a mechanism to enable domestic applicants to quickly and inexpensively file provisional applications. Under the provisions of 35 U.S.C. 119(e), applicants are entitled to claim the benefit of priority in a given application in the United States. The domestic priority period will not count in the measurement of the 20-year patent term. See 35 U.S.C. 154(a)(3). Thus, domestic applicants are placed on equal footing with foreign applicants with respect to the patent term.
A provisional application is a regular national filing that starts the Paris Convention priority year. Foreign filings must be made within 12 months of the filing date of the provisional application if applicant wishes to rely on the filing date of the provisional application in the foreign filed application.
NOTE:
(A) No claim is required in a provisional application.
(B) No oath or declaration is required in a provisional application.
(C) Provisional applications will not be examined for patentability.
(D) A provisional application is not entitled to claim priority to any foreign application or the benefit of any earlier filed national application.
A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter. See 35 U.S.C. 111(b)(5). The period of pendency of a provisional application is extended to the next succeeding business day if the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or federal holiday within the District of Columbia. See 35 U.S.C. 119(e)(3) and 37 CFR 1.7(b). For example, if a provisional application was filed on January 15,
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1999, the last day of pendency of the provisional application under 35 U.S.C. 111(b)(5) and 35 U.S.C. 119(e)(3) is extended to January 18, 2000 (January 15, 2000 is a Saturday and Monday, January 17, 2000 is a federal holiday and therefore, the next succeeding business day is Tuesday, January 18, 2000). A nonprovisional application claiming the benefit of the provisional application must be filed no later than January 18, 2000.
Effective December 18, 2013, a nonprovisional application that was filed more than 12 months after the filing date of the provisional application, but within 14 months after the filing date of the provisional application, may have the benefit of the provisional application restored by filing a grantable petition to restore the benefit under 37 CFR 1.78(b). See MPEP § 211.01(a).
A provisional application is not entitled to claim priority benefits based on any other application under 35 U.S.C. 119, 120, 121, 365, or 386. If applicant attempts to claim the benefit of an earlier U.S. or foreign application in a provisional application, the filing receipt will not reflect the improper benefit or priority claim. Moreover, if a nonprovisional application claims the benefit of the filing date of a provisional application, and states that the provisional application relies upon the filing date of an earlier application, the claim for benefit or priority earlier than the filing date of the provisional application will be disregarded.
An application filed under 37 CFR 1.53(b) may be converted to a provisional application provided a request for conversion is submitted along with the fee as set forth in 37 CFR 1.17(q). The request and fee must be submitted in the nonprovisional application prior to the earlier of the abandonment of the nonprovisional application, the payment of the issue fee, or the expiration of 12 months after
the filing date of the nonprovisional application. The grant of any such request will not entitle applicant to a refund of the fees which were properly paid in the application filed under 37 CFR 1.53(b). See MPEP § 601.01(c). 35 U.S.C. 111(b)(5) permits a provisional application filed under 37 CFR 1.53(c) to be converted to a nonprovisional application filed under 37 CFR 1.53(b). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in 37 CFR 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112, unless the provisional application otherwise contains at least one such claim. The request must be filed in the provisional application prior to the earliest of the abandonment of the provisional application or the expiration of twelve months after the filing date of the provisional application. The filing fee, search fee, and examination fee for a nonprovisional application and the surcharge under 37 CFR 1.16(f), if appropriate, are also required. For provisional applications filed before December 18, 2013, if the inventor's oath or declaration was not filed with the provisional application, it must be submitted with the request for conversion. The grant of any such request will not entitle applicant to a refund of the fees which were properly paid in the application filed under 37 CFR 1.53(c). Conversion of a provisional application to a nonprovisional application will result in the term of any patent issuing from the application being measured from at least the filing date of the provisional application. This adverse patent term impact can be avoided by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e), rather than requesting conversion of the provisional application to a nonprovisional application. See 37 CFR 1.53(c)(3).
Design applications may not make a claim for priority of a provisional application under 35 U.S.C. 119(e). See 35 U.S.C. 172 and 37 CFR 1.78(a).
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201.05 Reissue Application [R-11.2013]
A reissue application is an application for a patent to take the place of an unexpired patent that is defective. A detailed treatment of reissue applications can be found in MPEP Chapter 1400.
201.06 Divisional Application [R-07.2015]
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
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(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
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(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
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A later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States and disclosing and claiming only subject matter disclosed
in the earlier or parent application, is known as a divisional application. The divisional application should set forth at least the portion of the earlier disclosure that is germane to the invention as claimed in the divisional application. A continuation-in-part application should not be designated as a divisional application. The Court of Appeals for the Federal Circuit has concluded that the protection of 35 U.S.C. 121 does not extend to continuation-in-part applications, stating that “the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.” Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-1008 (Fed. Cir. 2008). Thus the disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.
A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application, but not an international design application). The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78, especially paragraphs (d) and (e), and MPEP § 211 et seq. for additional requirements and more information regarding entitlement to the benefit of the filing date of a prior-filed copending application.
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a “divisional” of the provisional application. See 37 CFR 1.78, especially paragraphs (a)-(c), and MPEP § 211 et seq. for requirements and information pertaining to entitlement to the benefit of the filing date of a provisional application.
For applications filed on or after September 16, 2012 it is no longer suggested to include the appropriate U.S. Patent and Trademark Office classification of the divisional application and the status and assigned art unit of the parent application in the application data sheet. See MPEP § 601.05.
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Use form paragraph 2.01 to remind applicant of possible divisional status.
¶ 2.01 Possible Status as Divisional
This application, which discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], appears to claim only subject matter directed to an invention that is independent and distinct from that claimed in the prior application, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a divisional application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq .
Examiner Note:
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may be a divisional, but a benefit claim has not been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "divisional" of the prior application.
A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d). See MPEP § 1504.20.
While a divisional application may depart from the phraseology used in the parent application there may be no departure therefrom in substance or variation in the disclosure that would amount to “new matter” if introduced by amendment into the parent application. Compare MPEP § 201.08 and MPEP § 211 et seq.
For notation to be put in the file history by the examiner in the case of a divisional application, see MPEP § 202.
201.06(a) Former 37 CFR 1.60 Divisional Continuation Procedure [R-08.2012]
37 CFR 1.60 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. A continuation or divisional application filed under 37 CFR 1.60 on or after December 1, 1997, will automatically be treated as an application filed under 37 CFR 1.53(b). All continuation and divisional applications filed under 37 CFR 1.60 prior to December 1, 1997 will continue to be processed and examined under the procedures set forth in former 37 CFR 1.60. For more information pertaining to practice and procedure under former 37 CFR 1.60, see MPEP § 201.06(a) in the MPEP 8th Edition, Rev. 1 (February 2003)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/mpep.htm).
201.06(b) Former 37 CFR 1.62 File Wrapper Continuing Procedure [R-08.2012]
37 CFR 1.62 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. A request for a continuation or divisional application filed under former 37 CFR 1.62 on or after December 1, 1997, in an application that was filed on or after June 8, 1995, will be treated as a request for continued examination (RCE) under 37 CFR 1.114, see MPEP 706.07(h), paragraph IV. A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application, or for a continuation or divisional of an application having a filing date before June 8, 1995, will be treated as an improper application.
All continuation, divisional and CIP applications filed under former 37 CFR 1.62 prior to December 1, 1997, will continue to be processed and examined under the procedures set forth in former 37 CFR 1.62. For more information pertaining to practice and procedure under former 37 CFR 1.62, see MPEP § 201.06(b) in the MPEP 8th Edition, Rev. 1 (February
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2003)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/mpep.htm).
201.06(c) 37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure [R-07.2015]
37 CFR 1.53 Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013.]
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(b) Application filing requirements— Nonprovisional application. The filing date of an application for patent filed under this section, other than an application for a design patent or a provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in the Office. The filing date of an application for a design patent filed under this section, except for a continued prosecution application under paragraph (d) of this section, is the date on which the specification as prescribed by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78.
(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
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37 CFR 1.53 (pre-PLT) Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 (pre-PLT) before December 18, 2013.]
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(b) Application filing requirements - Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part
application, may be filed under the conditions specified in 35 U.S.C. 120 , 121 or 365(c) and § 1.78(c) and (d).
(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
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I. IN GENERAL
37 CFR 1.53(b) is the section under which all applications are filed EXCEPT: (A) an application resulting from entry of an international application into the national stage under 35 U.S.C. 371 and 37 CFR 1.495; (B) a provisional application under 35 U.S.C. 111(b) and 37 CFR 1.53(c); (C) a continued prosecution application (CPA) of a design application under 37 CFR 1.53(d); or (D) a nonprovisional international design application. Applications submitted under 37 CFR 1.53(b), as well as CPAs submitted under 37 CFR 1.53(d), are applications filed under 35 U.S.C. 111(a). An application filed under 37 CFR 1.53(b) may be an original or a reissue, a continuation, a divisional, a continuation-in-part, or a substitute. (See MPEP § 201.02 for substitute application.) The application may be for a utility patent under 35 U.S.C. 101, a design patent under 35 U.S.C. 171, a plant patent under 35 U.S.C. 161, or a reissue under 35 U.S.C. 251. An application will be treated as one filed under 37 CFR 1.53(b) unless otherwise designated.
For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with or without claims, is received in the Office. Effective December 18, 2013, utility and plant patent applications filed under 35 U.S.C. 111(a) are no longer required to include at least one claim or any drawings in order to receive a filing date for the application. See MPEP § 601.01(a), subsection I. The filing date of an application for a design patent is the date on which the Office receives the specification including at least one claim and any required drawings. 35 U.S.C. 171(c). In addition, as
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provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application. See MPEP § 601.01(a), subsection III.
In order to be complete for filing date purposes, all applications filed under 37 CFR 1.53(b) before December 18, 2013, must include a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to 37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing required by 37 CFR 1.81(a).
For applications filed on or after September 16, 2012, the basic filing fee, search fee, examination fee and application size fee, and the inventor’s oath or declaration in compliance with 37 CFR 1.63 (and 37 CFR 1.64 (for a substitute statement), 37 CFR 1.175 (for a reissue) or 37 CFR 1.162 (for a plant patent)) are also required by 37 CFR 1.51(b) for a complete application. However, the filing of the basic filing fee, search fee, examination fee, application size fee and inventor’s oath or declaration may be filed after the application filing date upon payment of the surcharge set forth in 37 CFR 1.16(f). Additionally, the filing of the inventor’s oath or declaration may be postponed until payment of the issue fee where the application contains an application data sheet under 37 CFR 1.76 identifying each inventor by his or her legal name, and a mailing address where each inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.
For applications filed prior to September 16, 2012, the statutory filing fee and an oath or declaration in compliance with 37 CFR 1.63 (and 37 CFR 1.175 (if a reissue) or 37 CFR 1.162 (if for a plant patent)) are also required by 37 CFR 1.51(b) for a complete application, but the filing fee and oath or declaration may be filed after the application filing date upon payment of the surcharge set forth in 37 CFR 1.16(f). See 37 CFR 1.53(f) and MPEP § 607.
Unless an application is submitted with a statement that the application is a continuation or divisional application, see 37 CFR 1.78(d)(2), the Office will process the application as a new non-continuing application. Applicants are advised to clearly designate any continuation, divisional, or continuation-in-part application as such by submitting a reference to the prior-filed application with the appropriate relationship (i.e., continuation, divisional, or continuation-in-part) in compliance with 37 CFR 1.78(d)(2) (i.e., in an application data sheet for an application filed on or after September 16, 2012, or in the first sentence(s) of the specification or in an application data sheet for an application filed prior to September 16, 2012) to avoid the need for a petition to accept an unintentionally delayed claim under 37 CFR 1.78(e) and the petition fee set forth in 37 CFR 1.17(m), and the issuance of a filing receipt that does not indicate that the application is a continuation, divisional, or continuation-in-part. See MPEP § 211 et seq.
II. OATH/DECLARATION
37 CFR 1.63 Oath or Declaration.
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012.]
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(d)(1) A newly executed oath or declaration under § 1.63, or substitute statement under § 1.64, is not required under §§ 1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.
(2) The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.
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(3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64.
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37 CFR 1.63 (pre-AIA) Oath or Declaration.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012.]
(d)(1) A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
(i) The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section;
(ii) The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application;
(iii) The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and
(iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application.
(2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application.
(3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under § 1.47, the copy of the executed oath or declaration for such prior application must be accompanied by:
(i) A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under § 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120 , 121, or 365(c); and
(ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application.
(4) Where the power of attorney or correspondence address was changed during the prosecution of the prior application, the change in power of attorney or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of
attorney or correspondence address during the prosecution of the prior application.
(5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
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A copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012, even if the oath or declaration identifies the application number of the prior application. However, if such a copy of the oath or declaration is filed after the filing date of the continuation or divisional application and an application number has been assigned to the continuation or divisional application (see 37 CFR 1.5(a)), the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application. The cover letter should also indicate that the oath or declaration submitted is a copy of the oath or declaration from a prior application to avoid the oath or declaration being incorrectly matched with the prior application file. Furthermore, applicant should also label the copy of the oath or declaration with the application number of the continuation or divisional application in the event that the cover letter is separated from the copy of the oath or declaration.
A copy of the oath or declaration from a prior nonprovisional application may be filed in a continuation or divisional application even if the specification for the continuation or divisional application is different from that of the prior application, in that revisions have been made to clarify the text to incorporate amendments made in the prior application, or to make other changes provided the changes do not constitute new matter relative to the prior application. If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.
For applications filed on or after September 16, 2012, a continuing application, including a
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continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64. See 37 CFR 1.63(d)(1). It should be noted that a copy of the inventor’s oath or declaration submitted in a continuing application filed on or after September 16, 2012 must comply with requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012. For example, the inventor’s oath or declaration must include a statement that the inventor is an original inventor of the claimed application and a statement that the application was made or was authorized to be made by the person executing the oath or declaration. Accordingly, a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012. See MPEP § 602.05(a) for additional details regarding oaths or declarations in continuing applications filed on or after September 16, 2012.
For applications filed prior to September 16, 2012, a newly executed oath or declaration is required in a continuation or divisional application filed under 37 CFR 1.53(b) naming an inventor not named in the prior application, and in a continuation-in-part application. See MPEP § 602.05(b) for additional details regarding oaths or declarations in continuing applications filed before September 16, 2012.
III. SPECIFICATION AND DRAWINGS
A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification
and drawings do not contain any subject matter that would have been new matter in the prior application. For continuing applications filed on or after September 16, 2012, claiming the benefit of an application filed before September 16, 2012, a copy of the inventor’s oath or declaration filed in the earlier-filed application can only be submitted in the continuing application if the oath or declaration complies with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet. For applications filed prior to September 16, 2012, the reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet. See MPEP § 211 et seq.
The new specification and drawings of a continuation or divisional application filed under 37 CFR 1.53(b) may include changes to the specification and drawings originally filed in the prior application in the manner that an applicant may file a substitute specification, see 37 CFR 1.125, or amend the drawings of an application so long as it does not result in the introduction of new matter. Applicant should file a new set of claims as the original claims of the continuing application instead of filing a copy of the claims from the prior application and a preliminary amendment to those claims. It is the applicant’s responsibility to review any new specification or drawings submitted for a continuation or divisional application under 37 CFR 1.53(b) to determine that it contains no new matter. For applications filed before September 16, 2012, an applicant is advised to simply file a continuing application with a newly executed oath or declaration when it is questionable as to whether the continuing application adds material that would have been new matter if presented in the prior application. In addition, for applications filed prior to September 16, 2012, if one or more claims are allowed in the continuation or divisional application which are directed to matter shown and described in the prior nonprovisional application but not claimed in the prior application, the applicant should be required to file a supplemental oath or declaration under pre-AIA 37 CFR 1.67(b). For applications filed on
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or after September 16, 2012, pursuant to 37 CFR 1.67(b), no supplemental oath or declaration will be required.
If a continuation or divisional application as filed contains subject matter that would have been new matter in the prior application, the applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part. Form paragraph 2.10.01 may be used to require the applicant to correct the relationship of the applications. See MPEP § 211 et seq.
Any utility or plant patent application, including any continuing application, that will be published pursuant to 35 U.S.C. 122(b) should be filed under 37 CFR 1.53(b) with a specification that includes any claim(s) and drawings that the applicant would like to have published. This is important because under 35 U.S.C. 154(d), a patentee may obtain provisional rights if the invention claimed in a patent is substantially identical to the invention claimed in the patent application publication and the Office will generally publish the specification (including the claims) and drawings as filed. Filing a continuing application under 37 CFR 1.53(b) with a preliminary amendment (which makes all the desired changes to the specification, including adding, deleting or amending claims) is NOT recommended. For applications filed on or after September 21, 2004, a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application. If a preliminary amendment is filed in a format that cannot be included in the publication, the Office of Patent Application Processing (OPAP) will issue a notice to the applicant requiring the applicant to submit the amendment in a format usable for publication purposes. See 37 CFR 1.115(a)(1) and 1.215. The only format for an amendment to the specification (other than the claims) that is usable for publication is a substitute specification in compliance with 37 CFR 1.121(b)(3) and 1.125. As noted above, a continuation or divisional application filed under 37 CFR 1.53(b) may be filed with a new specification and corrected drawings, along with a copy of an oath or declaration from a prior (parent) application, provided the new specification and drawings do not contain any subject matter that would have been new
matter in the prior application. Thus, the new specification and corrected drawings may include some or all of the amendments entered during the prosecution of the prior application(s), as well as additional amendments submitted for clarity or contextual purposes, and a new set of claims. In order to have a patent application publication of a continuation or divisional application contain only a desired set of claims, rather than the set of claims in the prior application, it is strongly recommended that the continuation or divisional application be filed under 37 CFR 1.53(b) with a new specification containing only the desired set of claims.
See subsection II., above and MPEP § 602.05 et seq. for requirements pertaining to filing a copy of an oath or declaration from a prior application in a continuing application.
IV. INCORPORATION BY REFERENCE
An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification. See 37 CFR 1.57(c) and MPEP § 608.01(p). The inclusion of this incorporation by reference statement will permit an applicant to amend the continuing application to include subject matter from the prior application(s), without the need for a petition provided the continuing application is entitled to a filing date notwithstanding the incorporation by reference. For applications filed prior to September 21, 2004, the incorporation by reference statement may appear in the transmittal letter or in the specification. Note that for applications filed prior to September 21, 2004, if applicants used a former version of the transmittal letter form provided by the USPTO, the incorporation by reference statement could only be relied upon to add inadvertently omitted material to the continuation or divisional application.
For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design
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application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b). Note that pursuant to 37 CFR 1.57(b)(4), any amendment to an international design application pursuant to 37 CFR 1.57(b)(1) is effective only as to the United States and will only be acted upon after the international design application becomes a nonprovisional application.
Effective December 18, 2013, 37 CFR 1.57(b) was amended to contain the provisions of former 37 CFR 1.57(a). The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. For applications filed on or after September 21, 2004, applicants are encouraged to provide an explicit incorporation by reference statement to the prior-filed application(s) for which benefit is claimed under 35 U.S.C. 120 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 CFR 1.57(b). See 37 CFR 1.57(c) and MPEP § 608.01(p) for discussion regarding explicit incorporation by reference. See MPEP § 217 for more detailed information pertaining to incorporation by reference pursuant to 37 CFR 1.57(b).
An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)). If an incorporation by reference statement is included in an amendment to the specification to add a benefit claim under 35 U.S.C. 120 after the filing date of the application, the amendment would not be proper. When a benefit claim under 35 U.S.C. 120 is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement of the prior application. See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980).
Mere reference to another application, patent, or publication is not an incorporation of anything therein into the application containing such reference
for the purpose of the disclosure required by 35 U.S.C. 112(a). In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). See MPEP § 608.01(p). As noted above, however, for applications filed on or after September 21, 2004, 37 CFR 1.57(b) provides that a claim for the benefit of a prior-filed application under 37 CFR 1.78 is considered an incorporation by reference as to inadvertently omitted material. See MPEP § 217.
A. Application NOT Entitled to a Filing Date
Material needed to accord an application a filing date may not be incorporated by reference unless an appropriate petition under 37 CFR 1.53(e) or under 37 CFR 1.182 is granted. Until such a petition has been granted, the application will not be entitled to a filing date.
For an application filed on or after September 21, 2004, if the material needed for a filing date is completely contained within a prior-filed application to which benefit is claimed, applicant may file a petition under 37 CFR 1.53(e) along with the fee set forth in 37 CFR 1.17(f) and an amendment with the inadvertently omitted material requesting that the amendment be entered and the application be accorded a filing date as of the original date of deposit of the application papers. See 37 CFR 1.57(b)(3) and MPEP § 217 .
In an application containing an explicit incorporation by reference statement in the specification or in a transmittal letter (if the transmittal letter was filed prior to September 21, 2004), a petition for the granting of a filing date may be made under 37 CFR 1.182. A petition under 37 CFR 1.182 and the required petition fee, including an amendment submitting the necessary omitted material, requesting that the necessary omitted material contained in the prior application and submitted in the amendment, be included in the continuation or divisional application based upon the incorporation by reference statement, is required in order to accord the application a filing date as of the date of deposit of the continuing application. An amendment submitting the omitted material and relying upon the incorporation by reference will not be entered in the continuing application unless a decision granting
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the petition states that the application is accorded a filing date and that the amendment will be entered.
B. Application Entitled to a Filing Date
If a continuing application as originally filed on or after September 21, 2004 does not include an explicit incorporation by reference statement and is entitled to a filing date despite the inadvertent omission of a portion of the prior application(s), applicant may be permitted to add the omitted material by way of an amendment under 37 CFR 1.57(b). Such an amendment must be made within any time period set by the Office. See 37 CFR 1.57(b)(1).
If an application as originally filed included a proper explicit incorporation by reference statement (or an explicit incorporation by reference statement that has been made effective under 37 CFR 1.57(h)), the omitted specification page(s) and/or drawing figure(s) may be added by amendment provided the omitted item(s) contains only subject matter in common with a document that has been properly incorporated by reference. If the Office identified the omitted item(s) in a “Notice of Omitted Item(s),” applicant must respond to the “Notice of Omitted Item(s)” by filing an appropriate amendment. See MPEP § 601.01(d) and § 601.01(g).
V. INVENTORSHIP IN A CONTINUING APPLICATION
A. Applications Filed On or After September 16, 2012
For applications filed on or after September 16, 2012, the filing of a continuing application by all or by fewer than all of the inventors named in a prior application without a newly executed oath or declaration is permitted provided that an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement under 37 CFR 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application. Note, in order to submit a copy of the inventor’s oath or declaration from the earlier-filed application into a continuation or divisional application filed on or after September 16, 2012, the
oath or declaration from the earlier-filed application must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. Specifically, the inventor’s oath or declaration must state that the inventor (1) is an original inventor of the claimed invention; and (2) authorized the filing of the patent application for the claimed invention. The inventor’s oath or declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of U.S. Code title 18 by fine or imprisonment of not more than 5 years, or both.
37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor’s oath or declaration from the earlier-filed application, unless the copy of the inventor’s oath or declaration is accompanied by a statement signed pursuant to 37 CFR 1.33(b) stating the name of each inventor in the continuing application. 37 CFR 1.63(d)(3) provides that any new joint inventor named in the continuing application must provide an oath or declaration in compliance with 37 CFR 1.63, except as provided for in 37 CFR 1.64.
37 CFR 1.63(f) provides that with respect to an application naming only one inventor, any reference to the inventor's oath or declaration in this chapter includes a substitute statement executed under 37 CFR 1.64. With respect to an application naming more than one inventor, any reference to the inventor's oath or declaration in this chapter means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless otherwise clear from the context.
B. Applications Filed Prior to September 16, 2012
For applications filed prior to September 16, 2012, Applicant has the option of filing: (A) a newly executed oath or declaration signed by the inventors
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for the continuation or divisional application; or (B) a copy of the oath or declaration filed in the prior application accompanied by a statement from applicant, applicant’s representative or other authorized party requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application. See pre-AIA 37 CFR 1.63(d) (in effect on September 15, 2012). Where the continuation or divisional application and a copy of the oath or declaration from the prior application are filed without a statement from an authorized party requesting deletion of the names of any person or persons named in the prior application, the continuation or divisional application will be treated as naming as inventors the person or persons named in the copy of the executed oath or declaration from the prior application. Accordingly, if a petition or request under 37 CFR 1.48(a) or (c) was granted in the prior application, the oath or declaration filed in a continuation or divisional application pursuant to 37 CFR 1.53(b) and pre-AIA 37 CFR 1.63(d) should be a copy of the oath or declaration executed by the added inventor(s) filed in the prior application. The statement requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application must be signed by person(s) authorized pursuant to 37 CFR 1.33(b) to sign an amendment in the continuation or divisional application.
A newly signed oath or declaration in compliance with pre-AIA 37 CFR 1.63 is required where an inventor who was not named as an inventor in the signed oath or declaration filed in the prior application is to be named in a continuation or divisional application filed under 37 CFR 1.53(b). The newly signed oath or declaration must be signed by all the inventors.
VI. SUBSTITUTE STATEMENT AND RULE 47 ISSUES
A. Substitute Statement
Under 37 CFR 1.63(d)(1) a newly executed substitute statement under 37 CFR 1.64 is not required under 37 CFR 1.51(b)(2) and 37 CFR 1.53(f) or under 37 CFR 1.497 and 1.1021(d) for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c)
in compliance with 37 CFR 1.78 of an earlier-filed application, provided a substitute statement under 37 CFR 1.64 was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such substitute statement showing the signature or an indication thereon that it was executed is submitted in the continuing application.
B. Pre-AIA 37 CFR 1.47 Issues
For applications filed prior to September 16, 2012, pre-AIA 37 CFR 1.63(d)(3) provides for the situation in which the executed oath or declaration, of which a copy is submitted for a continuation or divisional application, was originally filed in a prior application accorded status under 37 CFR 1.47. 37 CFR 1.63(d)(3)(i) requires that the copy of the executed oath or declaration must be accompanied by a copy of any decision granting a petition to accord 37 CFR 1.47 status to such application, unless all nonsigning inventor(s) or legal representative (pursuant to 37 CFR 1.42 or 1.43) have filed an oath or declaration to join in an application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121 or 365(c). 37 CFR 1.63(d)(3)(ii) also requires that where one or more, but not all, nonsigning inventor(s) or legal representative(s) (pursuant to 37 CFR 1.42 or 1.43) subsequently joins in any application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121 or 365(c) a copy of any oath or declaration filed by the inventor or legal representative who subsequently joined in such application must also accompany the copy of the executed oath or declaration.
Continuation or divisional applications filed under 37 CFR 1.53(b) prior to September 16, 2012, which contain a copy of an oath or declaration that is not signed by one of the inventors and a copy of the decision according 37 CFR 1.47 status in the prior application, should be forwarded by the Office of Patent Application Processing (OPAP) to the Office of Petitions before being forwarded to the Technology Center (TC). The Office of Petitions will mail applicant a letter stating that “Rule 47” status has been accorded to the continuation or divisional application, but will not repeat the notice to the nonsigning inventor nor the announcement in the Official Gazette . See 37 CFR 1.47(c).
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It is important to note that if the filing date of the continuing application is on or after September 16, 2012, the oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012, even though the continuing application may claim the benefit of an application filed before September 16, 2012. Specifically, the inventor’s oath or declaration in the continuing application filed on or after September 16, 2012, must state that the inventor (1) is an original inventor of the claimed invention; and (2) authorized the filing of the patent application for the claimed invention. The inventor’s oath or declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of U.S. Code title 18 by fine or imprisonment of not more than 5 years, or both.
VII. CHANGE OF ATTORNEY/CORRESPONDENCE ADDRESS
For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless:
(1) The power of attorney was granted by the inventor; and
(2) The continuing application names an inventor who was not named as an inventor in the prior application.
Filing a copy of the power of attorney in the continuing application in all situations (even where a change in power of attorney did not occur in the prior application) will make the record clear with respect to who has power of attorney. The Office recommends that the power of attorney should be from the assignee where one exists, but for applications filed on or after September 16, 2012, the power of attorney may only be signed by the applicant (see 37 CFR 1.42) or patent owner (for reissue applications).
With respect to the correspondence address for applications filed on or after September 16, 2012, 37 CFR 1.33(f) provides that where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
For applications filed prior to September 16, 2012, pre-AIA 37 CFR 1.63(d)(4) provides that where the power of attorney or correspondence address was changed during the prosecution of the prior application, the change in power of attorney or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney or correspondence address which occurred during the prosecution of the prior application.
VIII. SMALL ENTITY OR MICRO ENTITY STATUS
If small entity status has been established in a parent application and is still proper and desired in a continuation, continuation-in-part, or divisional application filed under 37 CFR 1.53(b), a new assertion as to the continued entitlement to small entity status under 37 CFR 1.27 is required. See MPEP § 509.03.
The refiling of an application under 37 CFR 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under 37 CFR 1.53(d) (design applications only)), requires a new certification of entitlement to micro entity status in the continuing application. See 37 CFR 1.29(e) and MPEP § 509.04.
IX. COPIES OF AFFIDAVITS
Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the prior nonprovisional
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application do not automatically become a part of a continuation or divisional application filed under 37 CFR 1.53(b). Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make such remarks of record in the 37 CFR 1.53(b) application and include a copy of the original affidavit or declaration filed in the prior nonprovisional application.
Use form paragraph 2.03 for instructions to applicant concerning affidavits or declarations filed in the prior application.
¶ 2.03 Affidavits or Declarations in Prior Application
Applicant refers to an affidavit or declaration filed in the prior application. Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application. Where it is desired to rely on an earlier-filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior application.
Examiner Note:
This form paragraph is to be used in applications filed under 37 CFR 1.53(b). Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.
X. EXTENSIONS OF TIME
If an extension of time is necessary to establish continuity between the prior application and the continuing application filed under 37 CFR 1.53(b), the petition for an extension of time must be filed as a separate paper directed to the prior nonprovisional application. Under 37 CFR 1.136(a)(3), an authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time for its timely submission. A continuing application filed under 37 CFR 1.53(b) is a new application which is assigned a new application number and filing date and is maintained separately from the file of the prior application. The filing of a continuing application is not a paper directed to, or placed in, the file of the prior
application and is not a “reply” to the last Office action in the prior application. Thus, a petition for an extension of time and the fee set forth in 37 CFR 1.17 are required to be filed as a separate paper in the prior application. Any petition for an extension of time directed to the prior application must be accompanied by its own certificate of mailing under 37 CFR 1.8 (if mailed by first class mail) or under
37 CFR 1.10 (if mailed by Priority Mail Express®), if the benefits of those rules are desired.
XI. ABANDONMENT OF THE PRIOR NONPROVISIONAL APPLICATION
Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application. If the prior nonprovisional application is to be expressly abandoned, such a paper must be signed in accordance with 37 CFR 1.138. A registered patent practitioner not of record acting in a representative capacity under 37 CFR 1.34 may also expressly abandon a prior nonprovisional application as of the filing date granted to a continuing application when filing such a continuing application.
If the prior nonprovisional application which is to be expressly abandoned has a notice of allowance issued therein, the prior nonprovisional application can become abandoned by the nonpayment of the issue fee. However, once an issue fee has been paid in the prior application, even if the payment occurs following the filing of a continuing application under 37 CFR 1.53(b), a petition to withdraw the prior nonprovisional application from issue must be filed before the prior nonprovisional application can be abandoned (37 CFR 1.313). See MPEP § 711.01.
If the prior nonprovisional application which is to be expressly abandoned is before the Patent Trial and Appeal Board (Board), a separate notice should be forwarded by the appellant to the Board, giving them notice thereof.
After a decision by the Court of Appeals for the Federal Circuit (CAFC) in which the rejection of all claims is affirmed, the proceeding is terminated when the mandate is issued by the Court.
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XII. EXAMINATION
The practice relating to making first action rejections final also applies to continuation and divisional applications filed under 37 CFR 1.53(b). See MPEP § 706.07(b).
Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure. Amendments must be filed in compliance with the requirements of 37 CFR 1.121 (e.g., the amendment must include a complete claim listing whenever a claim is added, canceled, or amended). See MPEP § 714. The Office may require a substitute specification for preliminary amendments. See MPEP § 714.01(e). Applications should be classified and assigned to the proper Technology Center (TC) by taking into consideration the claims that will be before the examiner upon entry of such a preliminary amendment. Where a copy of the oath or declaration from a prior application was filed in a continuation or divisional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require applicant to delete the benefit claim or redesignate the application as a continuation-in-part. See subsection III., above and MPEP § 211. See MPEP § 608.04(b) when new matter is contained in a preliminary amendment. If the filing date of the continuing application is on or after September 16, 2012, the inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012, even though the continuing application may claim the benefit of an application filed before September 16, 2012. Specifically, the inventor’s oath or declaration in the continuing application filed on or after September 16, 2012, must state that the inventor (1) is an original inventor of the claimed invention; and (2) authorized the filing of the patent application for the claimed invention. The inventor’s oath or declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of U.S. Code title 18 by fine or imprisonment of not more than 5 years, or both.
If the examiner finds that pages of the specification or drawings figures described in the specification are missing and the application is a continuation or divisional application filed prior to September 21, 2004 under 37 CFR 1.53(b) using a copy of the oath or declaration filed in the prior application under pre-AIA 37 CFR 1.63(d), the examiner must check to determine whether the continuation or divisional application, as originally filed, includes a statement incorporating by reference the prior application(s). For applications filed prior to September 21, 2004, the statement could appear in the application transmittal letter (or the specification, rather than only in the specification). The inclusion of this incorporation by reference of the prior application(s) was necessary in these applications to permit applicant to amend the continuation or divisional application to include subject matter in the prior application(s) without the need for a petition. See also the subsection above regarding “Incorporation by Reference.” If the continuation or divisional application filed prior to September 21, 2004 under 37 CFR 1.53(b) does not include the incorporation by reference statement in the application papers (in the specification or in the transmittal letter) as originally filed and applicant has not been informed of the omitted items, the application should be returned to OPAP for mailing of a “Notice of Omitted Item(s).” For applications filed on or after September 21, 2004, see 37 CFR 1.57(b) and MPEP § 217 .
201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice [R-07.2015]
37 CFR 1.53 Application number, filing date, and completion of application.
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(d) Application filing requirements - Continued prosecution (nonprovisional) application.
(1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent;
(ii) The prior nonprovisional application is a design application, but not an international design application, that is complete as defined by § 1.51(b), except for the inventor’s oath or declaration if the application is filed on or after September
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16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in § 1.53(f)(3)(i); and
(iii) The application under this paragraph is filed before the earliest of:
(A) Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior application;
(iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and the inventor's oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
(v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
(3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b), the search fee as set forth in § 1.16(l), and the examination fee as set forth in § 1.16(p).
(4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.
(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would
have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
37 CFR 1.53 (pre-AIA) Application number, filing date, and completion of application.
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(d) Application filing requirements - Continued prosecution (nonprovisional) application.
(1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent:
(ii) The prior nonprovisional application is a design application that is complete as defined by § 1.51(b); and
(iii) The application under this paragraph is filed before the earliest of:
(A) Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
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(2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior application;
(iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
(v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
(3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b), the search fee as set forth in § 1.16(l), and the examination fee as set forth in § 1.16(p).
(4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.
(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
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I. CPA PRACTICE HAS BEEN ELIMINATED AS TO UTILITY AND PLANT APPLICATIONS
Effective July 14, 2003, continued prosecution application (CPA) practice has been eliminated as to utility and plant applications. Applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed should consider filing a request for continued examination (RCE) under 37 CFR 1.114. For more information on RCE practice, see MPEP § 706.07(h). Applicants who wish to file a continuation, divisional, or continuation-in-part application should file an application under 37 CFR 1.53(b). See MPEP § 201.06(c). CPAs filed prior to July 14, 2003, will continue to be processed and examined under the procedures set forth in prior 37 CFR 1.53(d). Any request for a CPA filed on or after July 14, 2003, in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed.
The Office will not convert an improper CPA into an application under 37 CFR 1.53(b) unless the applicant shows that there are extenuating circumstances that warrant the burdensome process of such conversion.
If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the Technology Center
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(TC) who will reprocess the CPA and correct the application records as appropriate.
A. Applications Filed on or After June 8, 1995
If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 will be treated as a request for continued examination (RCE) under 37 CFR 1.114. See MPEP § 706.07(h) and form paragraph 7.42.15. If the improper CPA does not satisfy the requirements of 37 CFR 1.114 (e.g., the request lacks a submission or the fee under 37 CFR 1.17(e), or the prosecution of the application is not closed), the Office will treat the improper CPA as an improper RCE, and the time period set in the last Office action (or notice) will continue to run. The Office will send the applicant a Notice of Improper Request for Continued Examination (RCE), PTO-2051. If the time period for reply to the last Office action (or notice) has expired, the application is abandoned and the applicant must file a petition under 37 CFR 1.137 and the required petition fee to revive the abandoned application. Unless prosecution in the application was not closed, the petition must be accompanied by a submission as defined by 37 CFR 1.114(c) and the fee set forth in 37 CFR 1.17(e), unless previously filed. If the last Office action is a notice of allowance, the issue fee must also be paid at the time of filing the petition to revive. If prosecution in the application was not closed, the petition must be accompanied by a reply to the non-final Office action.
Applicants cannot, as a matter of right, obtain continued examination on claims that are independent and distinct from the invention previously claimed (i.e., applicants cannot switch inventions when filing an RCE). See 37 CFR 1.145. Therefore, if applicants file a request for a divisional CPA on or after July 14, 2003 and the request satisfies all the requirements in 37 CFR 1.114 (e.g., the request is accompanied by the fee as set forth in 37 CFR 1.17(e) and a submission), the Office will treat the improper divisional CPA as a proper RCE. However, any amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the nonelected invention will be treated as nonresponsive. See MPEP § 821.03. Any newly submitted claims that are directed to an invention
distinct from and independent of the invention previously claimed will be withdrawn from consideration.Applicants should be notified by using form paragraph 8.04 or 8.26.
B. Applications Filed Before June 8, 1995
If a utility or plant application has a filing date before June 8, 1995, the Office cannot treat an improper CPA filed on or after July 14, 2003 as an RCE because RCE practice does not apply to applications filed before June 8, 1995. The Office will notify the applicant of the improper CPA by mailing a Notice of Improper CPA (or FWC) Filing For Utility or Plant Applications Filed Before June 8, 1995, PTO-2011 (Rev. 7/03 or later). The time period for reply set in the last Office action (or notice) will continue to run. Applicant may file a continuing application under 37 CFR 1.53(b). If the time period for reply has expired, the application is abandoned. If the application in which the improper CPA is filed is abandoned when a continuing application is filed, applicant would need to file a petition under 37 CFR 1.137 to revive the prior application to establish copendency with the continuing application under 37 CFR 1.53(b).
II. FILING AND INITIAL PROCESSING OF CPAs FOR DESIGN APPLICATIONS
A. In General
In addition to the provisions of 37 CFR 1.53(b), a continuation or divisional (but not a continuation-in-part) application may be filed under 37 CFR 1.53(d) if the prior application is a design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in 37 CFR 1.53(f)(3)(i) (i.e., an application data sheet indicating the name, residence, and mailing address of each inventor). A continuation or divisional application filed under 37 CFR 1.53(d) is called a “Continued Prosecution Application” or “CPA.” A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers
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required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b). In addition, the Office will not normally issue a new filing receipt for a CPA. See 37 CFR 1.54(b). The time delay between the filing date and the first Office action should be less for a CPA than for an application filed under 37 CFR 1.53(b). For examination priority purposes only, the USPTO will treat continuation CPAs as if they were “amended” applications (as of the CPA filing date) and not as “new” applications. This treatment is limited to CPAs in which the prior application has an Office action issued by the examiner. If no Office action has been issued in the prior application, the CPA will be treated, for examination purposes, like a “new” application unless a petition to make special under 37 CFR 1.102 or a request for expedited examination under 37 CFR 1.155 is filed in the CPA. As “amended” applications generally have a shorter time frame for being acted on by examiners than “new” applications, the treatment of a CPA as an “amended” application will result in a first Office action being mailed in the CPA much sooner than if it had been filed as a continuation application under 37 CFR 1.53(b) (or under former 37 CFR 1.60 or 1.62). Therefore, applicants are strongly encouraged to file any preliminary amendment in a CPA at the time the CPA is filed. See 37 CFR 1.115 and MPEP § 714.03(a).
A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA. See 37 CFR 1.53(d)(2)(v). Therefore, where the prior application is not to be abandoned, any continuation or divisional application must be filed under 37 CFR 1.53(b). If applicant wants the USPTO to disregard a previously filed request for a CPA filed in a design application (and not recognize its inherent request to expressly abandon the prior application) and to treat the paper as the filing of an application under 37 CFR 1.53(b), the applicant must file a petition under 37 CFR 1.182. A request to expressly abandon an application is not effective until the abandonment is acknowledged, including the express abandonment of the prior application of a CPA that occurs by operation of 37 CFR 1.53(d)(2)(v). The express abandonment of the prior application is acknowledged and becomes effective upon processing and entry of the CPA into the file
of the prior application. Thus, such a petition under 37 CFR 1.182 should be filed expeditiously since the petition will not be granted once the request for a CPA has been entered into the prior application (and the inherent request to expressly abandon the prior application has been acknowledged). If the request for a CPA has been entered into the prior application by the time the petition under 37 CFR 1.182 and the application file are before the deciding official for a decision on the petition, the petition will be denied. It is noted, however, that if the applicant intended to file a second application (either a continuation or a divisional) without abandoning the prior application, applicant can still achieve that result without loss of the benefit of the original filing date by: (A) continuing the prosecution of the original application via the CPA; and (B) filing a new continuation/divisional under 37 CFR 1.53(b) claiming benefit of the CPA and its parent applications under 35 U.S.C. 120 during the pendency of the CPA.
Since no new matter may be introduced in a CPA, the procedure set forth in 37 CFR 1.53(d) is not available for filing a continuation-in-part application. All continuation-in-part applications must be filed under 37 CFR 1.53(b) and a newly executed oath or declaration is required.
Under the CPA procedure, the continuation or divisional application will utilize the file wrapper and contents of the prior nonprovisional application, including the specification, drawings and oath or declaration from the prior nonprovisional application, and will be assigned the same application number as the prior nonprovisional application. Any changes to the continuation or divisional application desired when filing the CPA must be made in the form of an amendment to the prior application as it existed prior to filing the CPA, see 37 CFR 1.53(d)(5). Any new specification filed with the CPA request will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with 37 CFR 1.125. However, the applicant must comply with the requirements of 37 CFR 1.125(b) before the substitute specification will be entered into the CPA. Since 37 CFR 1.125(b) requires that a substitute specification be accompanied by, inter alia, a statement that the substitute specification
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includes no new matter, any substitute specification containing new matter will be denied entry by the examiner.Any preliminary amendment to the written description and claims, other than a substitute specification, filed with a CPA request will ordinarily be entered. Any new matter which is entered, however, will be required to be canceled pursuant to 35 U.S.C. 132 from the descriptive portion of the specification. Further, any claim(s) which relies upon such new matter for support will be rejected under 35 U.S.C. 112(a). See MPEP § 2163.06. In the event that a substitute specification or preliminary amendment containing new matter was filed with a request for a CPA, applicant may file a petition under 37 CFR 1.182 requesting that the substitute specification or preliminary amendment be removed from the CPA application file, and be accorded the status as a separate application by being placed in a new file wrapper and assigned a new application number, with the new application being accorded a filing date as of the date the request for a CPA and substitute specification/preliminary amendment were filed. Of course, a request for a CPA is not improper simply because the request is accompanied by a substitute specification or preliminary amendment containing new matter. Thus, an applicant will not be entitled to a refund of the filing fee paid in a proper CPA as a result of the granting of a petition under 37 CFR 1.182 requesting that the substitute specification or preliminary amendment be removed from the CPA application file.
A CPA may be based on a prior CPA so long as the prior CPA is complete under 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the prior CPA contained an application data sheet indicating the name, residence, and mailing address of each inventor) and is a design application. There is no other limit to the number of CPAs that may be filed in a chain of continuing applications. However, only one CPA may be pending at one time based on the same prior nonprovisional application.
Under 37 CFR 1.53(d), the specification, claims, and drawings, and any amendments entered in the prior nonprovisional application are used in the CPA. A new basic filing fee, search fee, and examination fee are required in accordance with 35 U.S.C. 41 and 37 CFR 1.16. No search and examination fees
are required for a CPA filed before December 8, 2004. The only other statutory requirement under 35 U.S.C. 111(a) is a signed oath or declaration. Since a CPA cannot contain new matter, the oath or declaration filed in the prior nonprovisional application would supply all the information required under the statute and rules to have a complete application and to obtain a filing date. Accordingly, the previously filed oath or declaration (if any) will be considered to be the oath or declaration of the CPA. However, for continuing applications (including CPAs) filed on or after September 16, 2012, the oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012.
The original disclosure of a CPA is the same as the original disclosure of the parent non-continued prosecution application and amendments entered in the parent application(s). However, any subject matter added by amendment in the parent application which is deemed to be new matter in the parent application will also be considered new matter in the CPA. No amendment filed in a CPA, even if filed on the filing date of the CPA, may include new matter.
If application papers for a design application are in any way designated as a CPA filing under 37 CFR 1.53(d) (e.g., contain a reference to 37 CFR 1.53(d), CPA, or continued prosecution application), the application papers will be treated by the Office as a CPA filed under 37 CFR 1.53(d), even if the application papers also contain other inconsistent designations (e.g., if the papers are also designated as an application filed under 37 CFR 1.53(b) or include a reference to a “continuation-in-part CPA”). If application papers for a utility or plant application are in any way designated as a CPA filing under 37 CFR 1.53(d), the application papers will be treated as a request for continued examination (RCE) under 37 CFR 1.114. See subsection I., above.
B. Conditions for Filing a CPA
A continuation or divisional application may be filed under 37 CFR 1.53(d), if the prior nonprovisional application is a design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b). The term “prior
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nonprovisional application” in 37 CFR 1.53(d)(1) means the nonprovisional application immediately prior to the CPA. A complete application as defined by 37 CFR 1.51(b) must contain, inter alia, the appropriate filing fee (including the basic filing fee, search fee, and examination fee) and a signed oath or declaration under 37 CFR 1.63(d). If the CPA is filed on or after September 16, 2012, the inventor’s oath or declaration is not required to have been filed in the prior application if the prior application contains an application data sheet indicating the name, residence, and mailing address of each inventor. The inventor’s oath or declaration must be submitted no later than payment of the issue fee.
In addition, a continuation or divisional application filed under 37 CFR 1.53(d) must be filed before the earliest of: (A) payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted in the prior application; (B) abandonment of the prior application; or (C) termination of proceedings on the prior application.
Note that request for continued examination (RCE) practice under 37 CFR 1.114 is not available in design applications. Any improper RCE filed in a design application will not be treated as a CPA. An improper RCE filed in a design application will not toll the running of any time period for reply.
C. Initial Processing
A CPA request will be initially processed by the TC assigned the prior application. The TC will verify that (A) the prior application is a design application, but not an international design application, (B) the correct application number of the prior nonprovisional application is identified in the request, (C) the request is properly signed, (D) the prior nonprovisional application was pending on, and that the issue fee has not been paid in the prior nonprovisional application on or prior to, the filing date of the CPA request, (E) the prior nonprovisional application was complete under 37 CFR 1.51(b) (e.g., the filing fee has been paid and a signed oath or declaration under 37 CFR 1.63 has been filed in the prior application), except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012, and the prior application contains an application data sheet indicating the
name, residence, and mailing address of each inventor, and (F) the proper filing fee has been paid in the CPA. If one or more other conditions for filing a CPA have not been satisfied or the proper basic filing fee, search fee, and examination fee have not been paid, the applicant will be so notified and no examination will be made in the CPA until the filing error has been corrected or the proper fees have been submitted. See 37 CFR 1.53(h). If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the TC who will reprocess the CPA and correct the application records.
D. Incorrect Patent Application Number Identified
A request for a CPA must identify the prior nonprovisional application (37 CFR 1.53(d)(2)(i)) by application number (series code and serial number) or by serial number and filing date. Where a paper requesting a CPA is filed which does not properly identify the prior nonprovisional application number, the TC should attempt to identify the proper application number by reference to other identifying information provided in the CPA papers, e.g., name of the inventor, filing date, title of the invention, and attorney’s docket number of the prior application. If the TC is unable to identify the application number of the prior application and the party submitting the CPA papers is a registered practitioner, the practitioner may be requested by telephone to supply a letter signed by the practitioner providing the correct application number. If all attempts to obtain the correct application number are unsuccessful, the paper requesting the CPA should be returned by the TC to the sender where a return address is available. The returned CPA request must be accompanied by a cover letter which will indicate to the sender that if the returned CPA request is resubmitted to the U.S. Patent and Trademark Office with the correct application number within two weeks of the mail date on the cover letter, the original date of receipt of the CPA request will be considered by the U.S. Patent and Trademark Office as the date of receipt of the CPA request. See 37 CFR 1.5(a). A copy of the returned CPA request and a copy of the date-stamped cover letter should be retained by the TC. Applicants may use either the Certificate of
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Mailing or Transmission procedure under 37 CFR
1.8 or the Priority Mail Express® procedure under 37 CFR 1.10 for resubmissions of returned CPA requests if they desire to have the benefit of the date of deposit in the United States Postal Service. If the returned CPA request is not resubmitted within the two-week period with the correct application number, the TC should cancel the original “Office Date” stamp on the CPA request and re-stamp the returned CPA request with the date of receipt of the resubmission or with the date of deposit as Priority
Mail Express® with the United States Postal Service, if the CPA request is resubmitted under 37 CFR 1.10. Where the CPA request is resubmitted later than two weeks after the return mailing by the U.S. Patent and Trademark Office, the later date of receipt
or date of deposit as Priority Mail Express® of the resubmission will be considered to be the filing date of the CPA request. The two-week period to resubmit the returned CPA request is not extendible. See 37 CFR 1.5(a).
In addition to identifying the application number of the prior application, applicant is urged to furnish in the request for a CPA the following information relating to the prior application to the best of his or her ability: (A) title of invention; (B) name of applicant(s); and (C) correspondence address. See 37 CFR 1.53(d)(8).
E. Signature Requirement
A CPA is a request to expressly abandon the prior application (37 CFR 1.53(d)(2)(v)) and, therefore, must be properly signed. For a listing of the individuals who may properly sign a CPA request, see 37 CFR 1.33(b). A CPA request filed on or after September 16, 2012, must be signed by:
(1) A patent practitioner of record appointed in compliance with 37 CFR 1.32(b);
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or
(3) The applicant (37 CFR 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
A CPA request filed prior to September 16, 2012, must be signed by
(1) A patent practitioner of record appointed in compliance with 37 CFR 1.32(b);
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34;
(3) An assignee as provided for under 37 CFR 3.71(b); or
(4) All of the applicants (37 CFR 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with 37 CFR 3.71.
In a joint application with no attorney or agent, all applicants must sign the CPA request in order for the CPA request to be considered properly signed. An unsigned or improperly signed CPA request will be placed in the file of the prior application, and is entitled to an application filing date, but is ineffective to abandon the prior application. A CPA will NOT be examined until the CPA request is properly signed.
A request for a CPA may be signed by a registered practitioner acting in a representative capacity under 37 CFR 1.34. However, correspondence concerning the CPA will be sent by the Office to the correspondence address as it appears in the prior nonprovisional application until a new power of attorney, or change of correspondence address signed by an attorney or agent of record in the prior application, is filed in the CPA.
A request for a CPA filed prior to September 16, 2012 may also be signed by the assignee or assignees of the entire interest. However, the request must be accompanied by papers establishing the assignee's ownership under pre-AIA 37 CFR 3.73(b), unless such papers were filed in the prior application and ownership has not changed.
F. Filing Date
The filing date of a CPA is the date on which a request for a CPA on a separate paper for a CPA is filed. A request for a CPA cannot be submitted as a part of papers filed for another purpose, see 37 CFR
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1.53(d)(2), (e.g., the filing of a request for a CPA within an amendment after final for the prior application is an improper request for a CPA).
A paper requesting a CPA may be filed via EFS-Web. CPA requests are filed as follow-on documents, and may only be filed by registered e-filers. See MPEP § 502.05 for additional information regarding filing correspondence via EFS-Web. The date of receipt accorded to a CPA request submitted via EFS-Web is the date the complete request is received by the Office. See 37 CFR 1.6(a)(4).
A request for a CPA may also be sent to the U.S. Patent and Trademark Office by mail (see MPEP § 501), facsimile transmission (see MPEP § 502.01) or hand delivery to the USPTO Customer Service Window in Alexandria, VA 22314. The date of receipt accorded to a CPA request sent by facsimile transmission is the date the complete transmission is received by an Office facsimile unit, unless the transmission is completed on a Saturday, Sunday, or federal holiday within the District of Columbia. Correspondence for which transmission was completed on a Saturday, Sunday, or federal holiday within the District of Columbia, will be accorded a receipt date of the next succeeding day which is not a Saturday, Sunday, or federal holiday within the District of Columbia. See 37 CFR 1.6(a)(3).
Applicants filing a CPA by facsimile transmission may include a “Receipt for Facsimile Transmitted CPA” (PTO/SB/29A) containing a mailing address and identifying information (e.g., the prior application number, filing date, title, first named inventor) with the request for a CPA. The USPTO will: (A) separate the “Receipt for Facsimile Transmitted CPA” from the CPA request papers; (B) date-stamp the “Receipt for Facsimile Transmitted CPA”; (C) verify that the identifying information provided by the applicant on the “Receipt for Facsimile Transmitted CPA” is the same information provided on the accompanying request for a CPA; and (D) mail the “Receipt for Facsimile Transmitted CPA” to the mailing address provided on the “Receipt for Facsimile Transmitted CPA.” The “Receipt for Facsimile Transmitted CPA” cannot be used to acknowledge receipt of any paper(s) other than the request for a CPA. A returned
“Receipt for Facsimile Transmitted CPA” may be used as prima facie evidence that a request for a CPA containing the identifying information provided on the “Receipt for Facsimile Transmitted CPA” was filed by facsimile transmission on the date stamped thereon by the USPTO. As the USPTO will verify only the identifying information contained on the request for a CPA, and will not verify whether the CPA was accompanied by other papers (e.g., a preliminary amendment), the “Receipt for Facsimile Transmitted CPA” cannot be used as evidence that papers other than a CPA were filed by facsimile transmission in the USPTO. Likewise, applicant-created “receipts” for acknowledgment of facsimile transmitted papers (whether created for the acknowledgment of a CPA or other papers) cannot be used as evidence that papers were filed by facsimile in the USPTO. Applicants are cautioned not to include information on a “Receipt for Facsimile Transmitted CPA” that is intended for retention in the application file, as the USPTO does not plan on retaining a copy of such receipts in the file of the application.
If an applicant filing a CPA by facsimile does not include an authorization to charge the basic filing fee, search fee, and examination fee to a deposit account or to a credit card using PTO-2038 (See MPEP § 509), the application will be treated under 37 CFR 1.53(f) as having been filed without the appropriate fees (as fees cannot otherwise be transmitted by facsimile).
37 CFR 1.6(f) provides for the situation in which the Office has no evidence of receipt of a CPA transmitted to the Office by facsimile transmission. 37 CFR 1.6(f) requires that a showing thereunder include, inter alia, a copy of the sending unit’s report confirming transmission of the application or evidence that came into being after the complete transmission of the application and within one business day of the complete transmission of the application.
The Certificate of Mailing Procedure under 37 CFR 1.8 does not apply to filing a request for a CPA, since the filing of such a request is considered to be a filing of national application papers for the purpose of obtaining an application filing date (37 CFR 1.8(a)(2)(i)(A)). Thus, if (A) the Office mails a final
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Office action on July 2, 1997 (Wednesday), with a shortened statutory period of 3 months to reply and (B) a petition for a three-month extension of time (and the fee) and a CPA are received in the Office on January 5, 1998 (Monday), accompanied by a certificate of mailing under 37 CFR 1.8 dated January 2, 1998 (Friday), then the prior application was abandoned on January 3, 1998, and the CPA is improper because the CPA was not filed before the abandonment of the prior application. As a further example, if (A) the Office mails a final Office action on July 2, 1997 (Wednesday), with a shortened statutory period of 3 months to reply and (B) applicant submits a petition for a three-month extension of time (and the fee) and a CPA request via facsimile transmission accompanied by a certificate of transmission under 37 CFR 1.8 at 9:00 PM Pacific Time on January 2, 1998 (Friday), but the Office does not receive the complete transmission until 12:01 AM Eastern Time on January 3, 1998 (Saturday), then the CPA is improper because the CPA request was not filed until January 5, 1998, see 37 CFR 1.6(a)(3), which is after the abandonment (midnight on Friday, January 2, 1998) of the prior application.
G. Filing Fee
The filing fees for a CPA are the basic filing fee as set forth in 37 CFR 1.16(b), the search fee as set forth in 37 CFR 1.16(l), and the examination fee as set forth in 37 CFR 1.16(p). See 37 CFR 1.53(d)(3).
A general authorization to charge fees to a deposit account which was filed in the prior application carries over from the prior nonprovisional application to a CPA. Thus, where a general authorization to charge fees to a deposit account was filed in the prior application the Office should charge the necessary filing fee of the CPA to the deposit account.
Where a general authorization to charge fees to a deposit account was filed in the prior application and applicant desires to file a CPA without paying the filing fee on the filing date of the application, applicant may file the CPA with specific instructions revoking the general authorization filed in the prior application.
Where a filing date has been assigned to a CPA, but the basic filing fee, search fee, and examination fee are insufficient or have been omitted, applicant will be so notified by the Office and given a period of time in which to file the missing fee(s) and to pay the surcharge set forth in 37 CFR 1.16(f) in order to prevent abandonment of the application. For CPAs filed on or after December 8, 2004 but prior to July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(d), if the search and/or examination fees are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is not required. For CPAs filed on or after July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(d), if any of the basic filing fee, search fee, or examination fee are paid on a date later than the filing date of the CPA, the surcharge under 37 CFR 1.16(f) is required. For CPAs filed on or after September 16, 2012, if the prior application does not contain the inventor’s oath or declaration, the surcharge under 37 CFR 1.16(f) is required (unless the inventor’s oath or declaration is being filed with the CPA). The time period usually set is 2 months from the date of notification. This time period is subject to the provisions of 37 CFR 1.136(a). A CPA will not be placed upon the files for examination until all of its required parts, including the basic filing fee, search fee, examination fee, and any necessary surcharge, are received. See 37 CFR 1.53(h). Thus, it would be inappropriate to conduct an interview or to issue an action on the merits in the CPA until the basic filing fee, search fee, examination fee, and any necessary surcharge, are received.
H. Small Entity or Micro Entity Status
Small entity status established in the parent application does not automatically carry over to a CPA. Status as a small entity must be specifically established in every application in which the status is available and desired. 37 CFR 1.27(c)(4) provides that the refiling of an application as a continued prosecution application under 37 CFR 1.53(d) requires a new assertion of continued entitlement to small entity status. Similarly, pursuant to 37 CFR 1.29(e), the refiling of an application under 37 CFR 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d))
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requires a new certification of entitlement to micro entity status for the continuing application. See also MPEP § 509.04.
Because small entity status and micro entity status do not automatically carry over from the prior application to the CPA, unless the request for a CPA specifically indicates that the filing fee is to be charged in the small entity or micro entity amount, or otherwise includes an assertion of entitlement to small entity or micro entity status, the regular undiscounted entity filing fee should be charged.
I. Extensions of Time
If an extension of time is necessary to establish continuity between the prior application and the CPA, the petition for extension of time should be filed as a separate paper directed to the prior nonprovisional application. However, a CPA is not improper simply because the request for a CPA is combined in a single paper with a petition for extension of time. The “separate paper” requirement of 37 CFR 1.53(d)(2) is intended to preclude an applicant from burying a request for a CPA in a paper submitted primarily for another purpose, e.g., within an amendment after final for the prior application.
While the filing of a CPA is not strictly a reply to an Office action mailed in a prior application, a request for a CPA is a paper directed to and placed in the file of the prior application, and seeks to take action in (i.e., expressly abandon) the prior application. Thus, it will be considered a “reply” for purposes of 37 CFR 1.136(a)(3). As a result, an authorization in the prior application to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees to a deposit account or to a credit card (See MPEP § 509) will be treated as a constructive petition for an extension of time in the prior application for the purpose of establishing continuity with the CPA. The correct extension fee to be charged in the prior application would be the extension fee necessary to establish continuity between the prior application and the CPA on the filing date of the CPA.
If an extension of time directed to the prior application is filed as a separate paper, it must be
accompanied by its own certificate of mailing under 37 CFR 1.8 (if mailed by first class mail) or under
37 CFR 1.10 (if mailed by Priority Mail Express®), if the benefits of those rules are desired.
J. Notice of CPA Filing
Since a “Notice of Abandonment” is not mailed in the prior application as a result of the filing of a CPA nor is a filing receipt normally mailed for a CPA, the examiner should advise the applicant that a request for a CPA has been granted by including form paragraph 2.30 in the first Office action of the CPA.
¶ 2.30 CPA Status Acceptable (for Design Applications)
The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.
Examiner Note:
1. Use this form paragraph in the first Office action of a CPA to advise the applicant that a request for a CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA. If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).
2. In bracket 1 insert the filing date of the request for a CPA.
3. In bracket 2 insert the Application Number of the parent application.
A “conditional” request for a CPA will not be permitted. Any “conditional” request for a CPA submitted as a separate paper with an amendment after final in an application will be treated as an unconditional request for a CPA of the application. This will result (by operation of 37 CFR 1.53(d)(2)(v)) in the abandonment of the prior application, and (if so instructed in the request for a CPA) the amendment after final in the prior application will be treated as a preliminary amendment in the CPA. The examiner should advise the applicant that a “conditional” request for a CPA has been treated as an unconditional request for a CPA and has been accepted by including form paragraph 2.35 in the first Office action of the CPA.
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§ 201.06(d)TYPES, CROSS-NOTING, AND STATUS OF APPLICATION
¶ 2.35 CPA Status Acceptable - Conditional Request (for Design Applications)
Receipt is acknowledged of the “conditional” request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on prior Application No. [2]. Any “conditional” request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA. Accordingly, the request for a CPA application is acceptable and a CPA has been established. An action on the CPA follows.
Examiner Note:
1. Use this form paragraph in the first Office action of a CPA to advise the applicant that a “conditional” request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA. If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).
2. In bracket 1 insert the filing date of the request for a CPA.
3. In bracket 2 insert the Application Number identified in the CPA request.
Where the examiner recognizes that a paper filed in the prior application contains a request for a CPA, but the request is not in a separate paper, the examiner should, if possible, contact applicant by telephone to notify applicant that the request for a CPA is ineffective or notify the applicant in the next Office action that the CPA request is ineffective by using form paragraph 2.31.
¶ 2.31 CPA Status NotAcceptable - Request Not on Separate Paper (for Design Applications)
Receipt is acknowledged of the request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on Application No. [2]. However, because the request was not submitted on a separate paper as required by 37 CFR 1.53(d)(2) , the request is not acceptable and no CPA has been established.
Examiner Note:
1. Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.
2. In bracket 1 insert the filing date of the paper containing the request for a CPA.
3. In bracket 2 insert the Application Number identified in the CPA request.
K. Inventorship
The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA. 37 CFR 1.53(d)(4).
The statement requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application must be signed by person(s) authorized pursuant to 37 CFR 1.33(b) to sign an amendment in the continuation or divisional application. For applications filed on or after September 16, 2012, the statement must be signed by:
(1) A patent practitioner of record appointed in compliance with 37 CFR 1.32(b);
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or
(3) The applicant (37 CFR 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
For applications filed prior to September 16, 2012, the statement must be signed by:
(1) A patent practitioner of record appointed in compliance with 37 CFR 1.32(b);
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34;
(3) An assignee as provided for under 37 CFR 3.71(b); or
(4) All of the applicants (37 CFR 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with 37 CFR 3.71.
The examiner should acknowledge receipt of a statement filed with a CPA requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in
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MANUAL OF PATENT EXAMINING PROCEDURE§ 201.06(d)
the CPA in the first Office action in the CPA by using form paragraph 2.32.
¶ 2.32 Request To Delete a Named Inventor in CPA (for Design Applications)
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.
Examiner Note:
1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.
2. In bracket 1 insert the name or names of the inventor(s) requested to be deleted.
3. In bracket 2 insert the filing date of the CPA.
After the first Office action is mailed, the application file should be sent to OPAP for revision of its records to reflect the change of inventorship. Any request by applicant for a corrected filing receipt to show the change in inventorship should not be submitted until after the examiner has acknowledged the change in inventorship in an Office action. Otherwise, the “corrected” filing receipt may not show the change in inventorship.
The inventive entity of the CPA will be the same as the inventive entity of the prior application even if the CPA papers include a transmittal letter or a new oath or declaration naming an inventor not named in the prior application. However, the new oath or declaration will be placed in the application file. Upon review of the application, the examiner will notify the applicant in the first Office action using form paragraph 2.33 that the inventive entity of the prior application has been carried over into the CPA. If the inventive entity set forth in the transmittal letter of the new oath or declaration is desired, then a request under 37 CFR 1.48 along with the required fee set forth in 37 CFR 1.17(i) must be filed. See MPEP § 602.01(c)(1) for requests under 37 CFR 1.48 filed on or after September 16, 2012. For requests filed before September 16, 2012, see MPEP § 602.01(c)(3). No new oath or declaration need be filed with the later-filed request under 37 CFR 1.48
if such was submitted on filing of the CPA. For continuing applications filed on or after September 16, 2012, the oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012 even though the application may claim the benefit of an application filed before September 16, 2012. Specifically, the inventor’s oath or declaration in the continuing application filed on or after September 16, 2012, must state that the inventor (1) is an original inventor of the claimed invention; and (2) authorized the filing of the patent application for the claimed invention. The inventor’s oath or declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of U.S. Code title 18 by fine or imprisonment of not more than 5 years, or both. For the oath or declaration requirements in applications filed prior to September 16, 2012 see MPEP § 602.01(b).
If a request under 37 CFR 1.48 is not filed, it should be noted that the filing in a CPA of a transmittal letter or a new oath or declaration containing an inventor not named in the prior nonprovisional application may result in the claims in the CPA being rejected under pre-AIA 35 U.S.C. 102(f).
¶ 2.33 New Inventor Identified in CPA (for Design Applications)
It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship. Any request to add an inventor must be in the form of a request under 37 CFR 1.48. Otherwise, the inventorship in the CPA shall be the same as in the prior application.
Examiner Note:
1. Use this form paragraph where a request for a Continued Prosecution Application (CPA) identifies one or more inventors who were not named as inventors in the prior application on the filing date of the CPA.
2. In bracket 1 insert the name or names of the inventor(s) requested to be added followed by either --was-- or --were--, as appropriate.
3. In bracket 2 insert the filing date of the CPA.
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§ 201.06(d)TYPES, CROSS-NOTING, AND STATUS OF APPLICATION
III. EXAMINATION OF CPAs
A. Benefit of Earlier Filing Date
A request for a CPA is a specific reference under 35 U.S.C. 120 to every application assigned the application number identified in the request, and 37 CFR 1.78(d)(4) provides that a request for a CPA is the specific reference under 35 U.S.C. 120 to the prior application. That is, the CPA includes the request for an application under 37 CFR 1.53(d) and the recitation of the application number of the prior application in such request is the “specific reference to the earlier filed application” required by 35 U.S.C. 120. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).
Where an application claims a benefit under 35 U.S.C. 120 of a chain of applications, the application must make a reference to the first (earliest) application and every intermediate application. See Sampson v. Ampex Corp., 463 F.2d 1042, 1044-45, 174 USPQ 417, 418-19 (2d Cir. 1972); Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 93, 160 USPQ 177, 179 (7th Cir. 1968); Hovlid v. Asari, 305 F.2d 747, 751, 134 USPQ 162, 165 (9th Cir. 1962). See also MPEP § 211 et seq. In addition, every intermediate application must also make a reference to the first (earliest) application and every application after the first application and before such intermediate application.
In the situation in which there is a chain of CPAs, each CPA in the chain will, by operation of 37 CFR 1.53(d)(7), contain the required specific reference to its immediate prior application, as well as every other application assigned the application number identified in such request. Put simply, a specific reference to a CPA by application number and filing date will constitute a specific reference to: (A) the non-continued prosecution application originally assigned such application number (the prior application as to the first CPA in the chain); and (B)
every CPA assigned the application number of such non-continued prosecution application.
Where the non-continued prosecution application originally assigned such application number itself claims the benefit of a prior application or applications under 120, 121, or 386(c), 37 CFR 1.78(d)(2) continues to require that the non-continued prosecution application originally assigned such application number contain a reference to any such prior application(s). As a CPA uses the application file of the prior application, a specific reference in the prior application (as to the CPA) will constitute a specific reference in the CPA, as well as every CPA in the event that there is a chain of CPAs.
Where an applicant in an application filed under 37 CFR 1.53(b) seeks to claim the benefit of a CPA under 35 U.S.C. 120 or 121 (as a continuation, divisional, or continuation-in-part), 37 CFR 1.78(d)(2) requires a reference to the CPA by application number in an application data sheet or, for applications filed before September 16, 2012, in the first sentence of the specification. 37 CFR 1.78(d)(4) provides that “[t]he identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.” Thus, where a referenced CPA is in a chain of CPAs, this reference will constitute a reference under 35 U.S.C. 120 and 37 CFR 1.78(d)(4) to every CPA in the chain as well as the non-continued prosecution application originally assigned such application number.
Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes). See 37 CFR 1.53(d)(7).
Further, an applicant in a CPA is not permitted to amend the first sentence(s) of the specification to
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MANUAL OF PATENT EXAMINING PROCEDURE§ 201.06(d)
provide the specific reference to the prior application, or to provide such a reference in an application data sheet. Any such amendment will not be entered. The applicant should be advised in the next Office action that any such amendment to the specification or reference in the application data sheet has not been entered by using form paragraph 2.34.
¶ 2.34 Reference in CPA to Prior Application (by Amendment to the Specification; for Design Applications)
The amendment filed [1] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [2] application of Application No. [3] has not been entered. As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.
Examiner Note:
1. Use this form paragraph to inform the applicant that an amendment to the first sentence(s) of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again.
2. In bracket 1, insert the filing date of the amendment.
3. In bracket 2, insert either --continuation-- or --divisional--.
4. In bracket 3, insert the Application Number of the prior nonprovisional application.
Priority claims under 35 U.S.C. 119(a)-(d) made in a parent application will automatically carry over to a CPA.
B. Terminal Disclaimer
A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed. If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA. See MPEP § 1490, “Withdrawing a Recorded Terminal Disclaimer,” subheading entitled “A. Before Issuance of Patent.”
C. Prior Election
An election in reply to a restriction requirement made in the prior application carries over to the CPA only if all of the following conditions are met: (A) the CPA is designated as a continuation or is not designated at all (i.e., the CPA is NOT designated as a divisionan( � (B) there was an express election by the applicant in reply to a restriction requirement in the prior application; (C) the CPA presents claim(s) drawn only to invention(s) claimed in the prior application; and (D) the CPA does not contain an indication that a shift in election is desired.
Where all of the conditions are met, the examiner’s first action should repeat the restriction requirement made in the prior application to the extent it is still applicable in the CPA and include a statement that prosecution is being continued on the invention elected and prosecuted by applicant in the prior application.
D. Information Disclosure Statements and Preliminary Amendments
All information disclosure statements filed in the prior application that comply with the content requirements of 37 CFR 1.98 will be considered in a CPA by the examiner. No specific request that the previously submitted information be considered in a CPA is required.
In addition, all information disclosure statements that comply with the content requirements of 37 CFR 1.98 and are filed before the mailing of a first Office action on the merits will be considered by the examiner, regardless of whatever else has occurred in the examination process up to that point in time. The submission of an information disclosure statement after the first Office action is mailed could delay prosecution. Therefore, applicants are encouraged to file any information disclosure statement in a CPA as early as possible, preferably at the time of filing the CPA. For further discussion of information disclosure statements, see MPEP § 609.
Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the
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§ 201.06(d)TYPES, CROSS-NOTING, AND STATUS OF APPLICATION
filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action. See MPEP § 714.03(a). In a situation where the applicant needs more time to prepare a preliminary amendment or to file an information disclosure statement, applicant can request a three-month suspension of action under 37 CFR 1.103(b). The three-month suspension of action under 37 CFR 1.103(b) must be filed at the time of filing a CPA. See MPEP § 709.
E. Copies of Affidavits
Affidavits and declarations, such as those under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application, automatically become a part of the CPA. Therefore, no copy of the original affidavit or declaration filed in the parent nonprovisional application need be filed in the CPA.
IV. PUBLIC ACCESS TO CPAs
A. Waiver of Confidentiality
A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file. 37 CFR 1.53(d)(6).
B. Certified Copy
A certified copy of a CPA will be prepared by the Certification Branch upon request. The certified copy will consist of a copy of the most recent non-continued prosecution application in the chain of CPAs. The filing date of the CPA will be shown in the certified copy as the filing date of the most recent non-continued prosecution application in the chain of CPAs.
V. FORMS
Form PTO/SB/29, “For Design Applications Only: Continued Prosecution Application (CPA) Request Transmittal,” may be used by applicant for filing a CPA under 37 CFR 1.53(d). The form is available o n t h e O f fi c e w e b s i t e a t www.uspto.gov/patent/patents-forms.
201.07 ContinuationApplication [R-07.2015]
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
*****
(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
*****
(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
*****
A continuation application is an application for the invention(s) disclosed in a prior- filed copending nonprovisional application, international application designating the United States, or international design application designating the United States. The disclosure presented in the continuation must not
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include any subject matter which would constitute new matter if submitted as an amendment to the parent application.
The continuation application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application, but not an international design application). The inventorship in the continuation application must include at least one inventor named in the prior-filed application, and the continuation application must also claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78, especially paragraphs (d) and (e), and MPEP § 211 et seq. for additional requirements and more information regarding entitlement to the benefit of the filing date of a prior-filed copending application.
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a “divisional” of the provisional application. See 37 CFR 1.78, especially paragraphs (a)-(c), and MPEP § 211 et seq. for requirements and information pertaining to entitlement to the benefit of the filing date of a provisional application.
At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office. A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application. In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior application is a nonprovisional design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012), and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. Use form paragraph 2.05 to remind applicant of possible continuation status.
¶ 2.05 Possible Status as Continuation
This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq .
Examiner Note:
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may be a continuation, but a benefit claim has not been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation" of the prior application.
201.08 Continuation-in-Part Application [R-07.2015]
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
*****
(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
*****
(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must
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§ 201.08TYPES, CROSS-NOTING, AND STATUS OF APPLICATION
identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
*****
A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application. A continuation-in-part application may only be filed under 37 CFR 1.53(b). The continuation-in-part application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c). For more information on claiming the benefit of a prior nonprovisional application, see MPEP § 211 et seq. A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a “continuation-in-part” of the provisional application because an application that claims benefit of a provisional application is a nonprovisional application of a provisional application, not a continuation, division, or continuation-in-part of the provisional application.
The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.
A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.
The Office does not need to make a determination as to whether the requirement of 35 U.S.C. 120 that
the earlier nonprovisional application discloses the invention of the second application in the manner provided by 35 U.S.C. 112(a) is met unless the filing date of the earlier nonprovisional application is relied upon in a proceeding before the Office. Accordingly, an alleged continuation-in-part application should be permitted to claim the benefit of the filing date of an earlier nonprovisional application if the alleged continuation-in-part application complies with the other requirements of 35 U.S.C. 120 and 37 CFR 1.78, such as:
(A) The first application and the alleged continuation-in-part application were filed with the same inventor or at least one common joint inventor;
(B) The alleged continuation-in-part application was “filed before the patenting or abandonment of or termination of proceedings on the first application or an application similarly entitled to the benefit of the filing date of the first application”; and
(C) The alleged continuation-in-part application “contains or is amended to contain a specific reference to the earlier filed application.” (For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For applications filed prior to September 16, 2012, the specific reference must be submitted either in the first sentence(s) of the specification or in an application data sheet (see 37 CFR 1.76(b)(5)).)
See MPEP § 211 et seq. for more information on claiming the benefit of a prior nonprovisional application.
For notation to be put in the file history by the examiner in the case of a continuation-in-part application see MPEP § 202. See MPEP § 708 for order of examination.
Use form paragraph 2.06 to remind applicant of possible continuation-in-part status.
¶ 2.06 Possible Status as Continuation-in-Part
This application repeats a substantial portion of prior Application No. [1], filed [2], and adds additional disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the
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filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq .
Examiner Note:
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation-in-part" of the prior application.
202 Cross-Noting [R-07.2015]
I. NOTATION IN FILE HISTORY REGARDING PRIOR U.S. APPLICATIONS, INCLUDING PROVISIONAL APPLICATIONS
The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications. Therefore, the identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012. See 37 CFR 1.78(a)(3) and (d)(2) and MPEP § 211 et seq. For example, the reference to a prior nonprovisional application must include the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between the nonprovisional applications.
The front page of a printed patent issuing on a continued prosecution application (CPA) filed under 37 CFR 1.53(d) will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application.
Where prior application data, including provisional application data, is preprinted on the PALM bib-data sheet, the examiner should check that data for
accuracy, including whether the application is, in fact, copending with the prior nonprovisional application or applications for which benefit is claimed. Similarly, the application number of any provisional application for which benefit is claimed should be printed on the PALM bib-data sheet. If applicant claims benefit under 35 U.S.C. 119(e) to a prior provisional application, and states that the provisional application claims priority to earlier domestic or foreign application(s), the earlier application(s) should not be reflected on the PALM bib-data sheet because a provisional application is not entitled to the right of priority of any other application. See 35 U.S.C. 111(b)(7).
Where the data is correct, the examiner should initial the PALM bib-data sheet in the provided space. Should there be an error in the preprinted prior application data, the correction or entry of the data in the PALM data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new PALM bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate. See MPEP § 601.05 et seq. and § 211.02. A petition for an unintentionally delayed benefit claim may also be required. See MPEP § 211.03.
The inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date. See MPEP § 306 for information pertaining to the assignment of applications claiming a benefit under 35 U.S.C. 119(e) or 120 to the filing date of an earlier filed application. In the situation in which there has been no reference to a prior application because the benefit of its filing date is not desired, no notation as to the prior application is made on the PALM bib-data sheet.
II. NOTATION IN FILE HISTORY REGARDING FOREIGN PRIORITY APPLICATION
If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the PALM bib-data sheet, the examiner should
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provide the information regarding the foreign application number, the country, and the filing date on the PALM bib-data sheet and forward the marked-up PALM bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems. Applications listed on the PALM bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through in ink. A listing of countries qualifying for benefits under 35 U.S.C. 119(a)-(d) appears at MPEP § 213.01.
Where foreign applications are listed on the 37 CFR 1.63 oath or declaration (for applications filed prior to September 16, 2012) or application data sheet, the examiner should check that such foreign applications are properly listed on the PALM bib-data sheet. A PALM bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. Should there be an error on the oath or declaration, or application data sheet itself, the examiner should require a new oath or declaration, or application data sheet, where appropriate. A petition for an unintentionally delayed claim for priority may also be required. See MPEP § 214 et seq. If the oath or declaration or the application data sheet is accurate, but there is an error on the PALM bib-data sheet, the examiner should make the appropriate corrections directly on the PALM bib-data sheet, and have the information corrected in the Office computer systems by forwarding the information to the examiner’s Legal Instrument Examiner, with an explanation of the correction to be made. The examiner should initial the PALM bib-data sheet in the “VERIFIED” space provided when the information is correct or has been amended to be correct. However, the examiner must still indicate on the Office action and on the PALM bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.
If the filing dates of several foreign applications are claimed and the certified copy of each foreign application has been received, information respecting each of the foreign applications is to be entered on the PALM bib-data sheet.
The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the PALM bib-data sheet has been endorsed.
203 Status of Applications [R-11.2013]
203.01 New [R-11.2013]
A “new” application is a nonprovisional application that has not yet received an action by the examiner. An amendment filed prior to the first Office Action does not alter the status of a “new” application. Note that a request for continued examination (RCE)(see 37 CFR 1.114) is not a type of new application filing. See MPEP § 706.07(h).
203.02 Rejected [R-08.2012]
A nonprovisional application which, during its prosecution in the examining group and before allowance, contains an unanswered examiner’s action is designated as a “rejected” application. Its status as a “rejected” application continues as such until acted upon by the applicant in reply to the examiner’s action (within the allotted reply period), or until it becomes abandoned.
203.03 Amended [R-08.2012]
An “amended” nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application.
203.04 Allowed or in Issue [R-07.2015]
An “allowed” nonprovisional application or an application “in issue” is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an “allowed” application continues from the date of the notice of allowance until it issues as a patent, unless
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it is withdrawn from issue (37 CFR 1.313), or becomes abandoned for failure to pay the issue fee and any required publication fee (37 CFR 1.314 and 1.316).
203.05 Abandoned [R-11.2013]
An abandoned application is, inter alia, one which is removed from the Office docket of pending applications:
(A) through formal abandonment by the applicant or by the attorney or agent of record;
(B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application;
(C) for failure to pay the issue fee (MPEP § 711 to § 711.05); or
(D) in the case of a provisional application, no later than 12 months after the filing date of the provisional application (see MPEP § 711.03(c) and 35 U.S.C. 111(b)(5)).
203.06 Incomplete [R-08.2012]
An application that is not entitled to a filing date (e.g., for lacking some of the essential parts) is termed an incomplete application. (MPEP § 506 and § 601.01(d)-(g)).
203.07 [Reserved]
203.08 Status Inquiries [R-11.2013]
I. IN GENERAL
Status information relating to patent applications is available through the Patent Application Information Retrieval (PAIR) system. There is both a public and private interface to PAIR. In public PAIR, information is available relating to issued patents, published patent applications, and applications to which a patented or published application claims domestic priority. In private PAIR, an applicant (or his or her registered patent attorney or registered patent agent) can securely track the progress of his or her application(s) through the USPTO. Private
PAIR makes available information relating to unpublished patent applications, but the applicant must associate a Customer Number with the application to obtain access. See MPEP § 403 for Customer Number practice.
Applicants and other persons seeking status information regarding an application should check the PAIR system on the Office website at www.uspto.gov/learning-and-resources/support-centers/ patent-electronic-business-center. Alternatively, the requester may contact the File Information Unit (see MPEP § 1730). The File Information Unit (FIU) will check the relevant Office records and will inform the requester whether the application has been published or has issued as a patent. If the application has been published, the FIU will inform the requester of the publication number and publication date, and if the application has issued as a patent, the FIU will inform the requester of the patent number, issue date and classification. If the application has not been published, but is pending or abandoned then the FIU determines whether the requester is entitled to such information. See MPEP § 102 for additional information.
Inquiries as to the status of applications, by persons entitled to the information, should be answered promptly. Simple letters of inquiry regarding the status of applications will be transmitted from the Office of Patent Application Processing to the TCs for direct action. Such letters will be stamped “Status Letters.”
If the correspondent is not entitled to the information, in view of 37 CFR 1.14, he or she should be so informed.
For Congressional and other official inquiries, see MPEP § 203.08(a).
II. NEW APPLICATION
A Notice of Allowability, Form PTOL-37, is routinely mailed in every application determined to be allowable. Thus, the mailing of a form PTOL-37 in addition to a formal Notice of Allowance and Fee(s) Due (PTOL-85) in all allowed applications would seem to obviate the need for status inquiries even as a precautionary measure where the applicant
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may believe his or her new application may have been passed to issue on the first examination. However, as an exception, a status inquiry would be appropriate where a Notice of Allowance (PTOL-85) is not received within three months from receipt of form PTOL-37.
Current examining procedures aim to minimize the spread in dates among the various examiner dockets of each art unit and TC with respect to actions on new applications. Accordingly, the dates of the “oldest new applications” appearing in the Official Gazette are fairly reliable guides as to the expected time frames of when the examiners reach the applications or action.
III. AMENDED APPLICATIONS
Amended applications are expected to be taken up by the examiner and an action completed within two months of the date the examiner receives the application. Accordingly, a status inquiry is not in order after reply by the attorney until 5 or 6 months have elapsed with no response from the Office. However, in the event that a six month period has elapsed, and no response from the Office is received, applicant should inquire as to the status of the application to avoid potential abandonment.
Applicants are encouraged to use PAIR to make status inquiries. See subsection I, above. A stamped postcard receipt or Electronic Acknowledgement Receipt for replies to Office actions, adequately and specifically identifying the papers filed, will be considered prima facie proof of receipt of such papers. See MPEP § 503. Where such proof indicates the timely filing of a reply, the submission of a copy of the postcard or Electronic Acknowledgement Receipt with a copy of the reply will ordinarily obviate the need for a petition to revive. Proof of receipt of a timely reply to a final action will obviate the need for a petition to revive only if the reply was in compliance with 37 CFR 1.113.
203.08(a) Congressional and Other Official Inquiries [R-11.2013]
Correspondence and inquiries from the White House, Members of Congress, embassies, and heads of Executive departments and agencies normally are
cleared by the USPTO’s Office of Policy and External Affairs and/or the Office of Governmental Affairs.
Inquiries referred to in this section such as correspondence from embassies, the Office of the U.S. Trade Representative, and the Department of State should immediately be transmitted to the Administrator of the Office of Policy and External Affairs, and a staff member of that office should be notified by phone that such correspondence has been received at 571-272-9300. Inquiries referred to in this section such as correspondence from Congress or the White House should immediately be transmitted to the Director of the Office of Governmental Affairs, and a staff member of that office should be notified by phone that such correspondence has been received at 571-272-7300.
This procedure is used so that there will be uniformity in the handling of contacts from the indicated sources, and also so that compliance with directives of the Department of Commerce is attained.
204-209 [Reserved]
210 Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application [R-07.2015]
Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).
As a result of recent changes to the applicable laws and rules, the procedural requirements and time frames for claiming priority to, or the benefit of, an earlier-filed application may vary based on the filing date of the later-filed nonprovisional application.
Note that effective December 18, 2013, the Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions
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of the Patent Law Treaty (PLT) in title II; corresponding revisions to title 37 of the Code of Federal Regulations also became effective on December 18, 2013. Notable changes to the law and rules include the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. In addition, title I of the PLTIA became effective May 13, 2015, along with corresponding revisions to the rules. Notable changes include the ability to file international design applications and to claim priority to, and the benefit of, international design applications in nonprovisional applications.
I. REQUIREMENTS OF 37 CFR 1.78 (CLAIMING THE BENEFIT OF AN EARLIER NATIONAL APPLICATION)
The following is an overview of the substantive changes to 37 CFR 1.78 resulting from implementation of Public Law 112-29, 125 Stat. 284 (Leahy Smith America Invents Act (AIA)) and implementation of Public Law 112-211, 126 Stat. 1527 (titles I and II of the Patent Law Treaties Implementation Act (PLTIA)). See MPEP § 211 et seq. for the detailed requirements for claiming (and entitlement to), the benefit of an earlier-filed application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c).
Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application. 35 U.S.C. 119(e), 120.
The inventor’s oath or declaration provisions of Public Law 112-29, sec. 4, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective September 16, 2012. In implementing these provisions the Office revised 37 CFR 1.78 to require that a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365(c) must be in the application data sheet (37 CFR 1.76). Thus for all applications filed on or after September 16, 2012, the specific reference to the prior application must
be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification.
In implementing the Patent Law Treaties Implementation Act (PLTIA), the Office reorganized and revised 37 CFR 1.78 effective May 13, 2015. All versions of 37 CFR 1.78 in effect prior to May 13, 2015, have been consolidated in the current version of 37 CFR 1.78. The following is a summary of the provisions of 37 CFR 1.78.
(A) 37 CFR 1.78(a) contains provisions relating to claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application;
(B) 37 CFR 1.78(b) contains provisions relating to restoration of the right to claim the benefit of a provisional application under 35 U.S.C. 119(e) when the delay in filing the subsequent application was unintentional.
(C) 37 CFR 1.78(c) contains provisions relating to delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application;
(D) 37 CFR 1.78(d) contains provisions relating to claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application;
(E) 37 CFR 1.78(e) contains provisions relating to delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application;
(F) 37 CFR 1.78(f) contains provisions relating to applications containing patentably indistinct claims;
(G) 37 CFR 1.78(g) contains provisions relating to applications or patents under reexamination naming different inventors and containing patentably indistinct claims;
(H) 37 CFR 1.78(h) provides for situations where the specific reference to a prior filed application may be presented in the first sentence(s) of the specification in applications filed before September 16, 2012;
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(I) 37 CFR 1.78(i) provides for situations where a petition under 37 CFR 1.78(b), (c), or (e) required in an international application can be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application;
(J) 37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon; and
(K) 37 CFR 1.78(k) provides that the time periods set forth in 37 CFR 1.78 are not extendable, but are subject to 35 U.S.C. 21(b) (and 37 CFR 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
37 CFR 1.78(a)(6) and (d)(6) set forth provisions that are only applicable to nonprovisional applications filed on or after March 16, 2013 that claim the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013. Specifically, the paragraphs require that if the later filed application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within the time periods set forth in the rule. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in 37 CFR 1.56(c) that the later filed nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013. An applicant is also not required to provide such a statement if the application claims the benefit of an earlier application in which a statement that the earlier application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed. See MPEP § 211.01 for additional information.
II. REQUIREMENTS OF 37 CFR 1.55 (CLAIMING PRIORITY TO AN EARLIER FOREIGN APPLICATION)
The following is an overview of the substantive changes to 37 CFR 1.55 resulting from implementation of Public Law 112-29, 125 Stat. 284 (Leahy Smith America Invents Act (AIA)) and implementation of Public Law 112-211, 126 Stat. 1527 (titles I and title II of the Patent Law Treaties Implementation Act (PLTIA)). See MPEP § 213 et seq. for the detailed requirements for claiming (and entitlement to), priority to of an earlier filed foreign application under 35 U.S.C. 119(a)-(d) or (f), 35 U.S.C. 365(a) or (b), or 386(a) or (b).
Whether an application was filed before, on, or after March 16, 2013, 35 U.S.C. 119(b)(1) requires a claim for priority identifying the foreign application. Prior to September 16, 2012, 37 CFR 1.55 and 1.63 required the claim for priority to be identified on an application data sheet or in the oath or declaration.
The inventor’s oath or declaration provisions of Public Law 112-29, sec. 4, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective September 16, 2012. In implementing these provisions the Office revised 37 CFR 1.55 to require that a claim for foreign priority must be presented in the application data sheet (37 CFR 1.76). Thus for all applications filed on or after September 16, 2012, a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) to the prior application must be presented in the application data sheet; for applications filed prior to September 16, 2012, the claim for priority to the foreign application must be identified in an application data sheet or in the oath or declaration.
In implementing the Patent Law Treaties Implementation Act (PLTIA), the Office reorganized and revised 37 CFR 1.55 effective May 13, 2015. All versions of 37 CFR 1.55 in effect prior to May 13, 2015, have been consolidated in the current version of 37 CFR 1.55. The following is a summary of the provisions of 37 CFR 1.55.
(A) 37 CFR 1.55(a) provides generally that a nonprovisional application may claim priority to one or more prior foreign applications under the
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conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b);
(B) 37 CFR 1.55(b) contains provisions relating to the time for filing a nonprovisional application claiming priority to a foreign application under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b);
(C) 37 CFR 1.55(c) contains provisions relating to the restoration of the right of priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b);
(D) 37 CFR 1.55(d) contains provisions relating to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371;
(E) 37 CFR 1.55(e) contains provisions relating to delayed priority claims in an application filed under 35 U.S.C. 111(a) or in a national stage application under 35 U.S.C. 371;
(F) 37 CFR 1.55(f) contains provisions relating to the time for filing the certified copy of a foreign application in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371;
(G) 37 CFR 1.55(g) contains provisions relating to the filing of a priority claim, certified copy of the foreign application, and translation of a non-English language foreign application in any application;
(H) 37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application;
(I) 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement;
(J) 37 CFR 1.55(j) contains provisions relating to the filing of an interim copy of a foreign application;
(K) 37 CFR 1.55(k) contains provisions relating to requirements for certain applications filed on or after March 16, 2013;
(L) 37 CFR 1.55(l) contains provisions relating to inventor's certificates; and
(M) 37 CFR 1.55(m) contains provisions relating to the time for the filing of a priority claim and certified copy of the foreign application in an
international design application designating the United States;
(N) 37 CFR 1.55(n) provides for situations where a foreign priority claim may be presented in the oath or declaration in applications filed before September 16, 2012;
(O) 37 CFR 1.55(o) provides that right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon; and
(P) 37 CFR 1.55(p) provides that the time periods set forth in 37 CFR 1.55 are not extendable, but are subject to 35 U.S.C. 21(b) (and 37 CFR 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
III. REQUIREMENT FOR A STATEMENT UNDER 37 CFR 1.55 OR 1.78 FOR FIRST INVENTOR TO FILE TRANSITION APPLICATIONS
The first inventor to file provisions of Public Law 112-29, sec. 3, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective March 16, 2013. These provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective filing date as defined under section 100(i) of title 35, United States Code, that is on or after March 16, 2013; or
(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim. See 35 U.S.C. 100 (note)
As a result, the effective filing date of each claimed invention determines whether an application is subject to examination under 35 U.S.C. 102 and 103 as effective on March 16, 2013 or under 35 U.S.C. 102 and 103 in effect on March 15, 2013 (i.e., pre-AIA 35 U.S.C. 102 or 103).
Title I of the PLTIA amended the definition of effective filing date in 35 U.S.C. 100(i) to provide
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for priority claims under 35 U.S.C. 386(a) or (b) and benefit claims under 35 U.S.C. 386(c).
The effective filing date for a claimed invention in a patent or application (except in an application for reissue or reissued patent) is set forth in 35 U.S.C. 100(i)(1) as:
(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).
For an application for reissue or a reissued patent, the effective filing date for a claimed invention, as set forth in 35 U.S.C. 100(i)(2), is determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
In implementing the first inventor to file provision of the AIA, the Office added a statement requirement to 37 CFR 1.55 and 1.78 for transition applications. See 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6). Note that the statement requirement for transition applications does not apply to nonprovisional international design applications.
A. Transition Applications
Transition applications are nonprovisional applications that:
(A) are filed on or after March 16, 2013; and
(B) claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013.
Transition applications are either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications depending on the effective filing date of the claimed invention(s).
The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date
on or after March 16, 2013, the applicant must provide a statement to that effect (unless the later-filed application is a nonprovisional international design application). The statement must be provided within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in 37 CFR 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application. Nonprovisional international design applications are excluded from the transition provisions of 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6).
For a nonprovisional application filed on or after March 16, 2013 that claims priority to, or the benefit of, the filing date of an earlier filed application, the applicant would not be required to provide any statement if:
(A) The nonprovisional application discloses only subject matter also disclosed in a priority or domestic benefit application filed prior to March 16, 2013; or
(B) the nonprovisional application claims only priority to, or the benefit of, the filing date of an application filed on or after March 16, 2013.
An applicant is not required to provide such a statement under 37 CFR 1.78 in a continuing transition application if the application claims the benefit of a nonprovisional application in which such a statement under 37 CFR 1.55 or 1.78 has been filed. See 37 CFR 1.78(d)(6)(i).
An applicant is not required to provide such a statement under 37 CFR 1.55 or 1.78 if the applicant reasonably believes on the basis of information already known to the individuals designated in 37 CFR 1.56(c) that the later-filed transition application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
Applicant is not required to identify how many or which claims in the transition application have an effective filing date on or after March 16, 2013, or
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identify the subject matter in the transition application not also disclosed in the priority or benefit application. Applicant is only required to state that there is a claim in the transition application that has an effective filing date on or after March 16, 2013. The Office may issue a requirement for information under 37 CFR 1.105 if an applicant takes conflicting positions on whether an application contains, or contained at any time, a claim to a claimed invention having an effective filing date on or after March 16, 2013. For example, the Office may require the applicant to identify where there is written description support under 35 U.S.C. 112(a) in the pre-AIA application for each claim to a claimed invention if an applicant provides the statement under 37 CFR 1.78(a)(6), but later argues that the application should have been examined as a pre-AIA application because the application does not actually contain a claim to a claimed invention having an effective filing date on or after March 16, 2013.
B. Application Data Sheet and Filing Receipt
The application data sheet (ADS, Form PTO/AIA/14) and the transmittal letter for 35 U.S.C. 371 national stage filing (Form PTO- 1390) are available for an applicant to make the 37 CFR 1.55/1.78 statement by marking a check box on the forms. The presence or absence of the 37 CFR 1.55/1.78 statement is reflected on the filing receipt. If applicant receives a filing receipt with incorrect information regarding the 37 CFR 1.55/1.78 statement, applicant may request a corrected filing receipt. Therefore, applicants should carefully and promptly review their filing receipts in order to ensure that their applications will be examined under the correct statutory framework.
211 Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) [R-07.2015]
35 U.S.C. 120 Benefit of earlier filing date in the United States.
An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor in the previously filed
application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section.
35 U.S.C. 119 Benefit of earlier filing date; right of priority.
*****
(e)(1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application under section 111(a) or section 363 within the 12-month period was unintentional. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.
(2) A provisional application filed under section 111(b) may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) has been paid.
(3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day. For an application for patent filed under section 363 in a Receiving Office other than the Patent and Trademark Office, the 12-month and additional
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2-month period set forth in this subsection shall be extended as provided under the treaty and Regulations as defined in section 351.
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
(a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. An applicant in a nonprovisional application, other than for a design patent, or an international application designating the United States may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.
(1) The nonprovisional application or international application designating the United States must be:
(i) Filed not later than twelve months after the date on which the provisional application was filed, subject to paragraph (b) of this section (a subsequent application); or
(ii) Entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a subsequent application that was filed within the period set forth in paragraph (a)(1)(i) of this section.
(2) Each prior-filed provisional application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(d) must have been paid for such provisional application within the time period set forth in § 1.53(g).
(3) Any nonprovisional application or international application designating the United States that claims the benefit of one or more prior-filed provisional applications must contain, or be amended to contain, a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number). If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)).
(4) The reference required by paragraph (a)(3) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed provisional application. Except as provided in paragraph (c) of this section, failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) of the prior-filed provisional application. The time periods in this paragraph do not apply if the later-filed application is:
(i) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
(ii) An international application filed under 35 U.S.C. 363 before November 29, 2000.
(5) If the prior-filed provisional application was filed in a language other than English and both an English-language translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application, the applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application, or an application data sheet (§ 1.76(b)(5)) eliminating the reference under paragraph (a)(3) of this section to the prior-filed provisional application, or the nonprovisional application will be abandoned. The translation and statement may be filed in the provisional application, even if the provisional application has become abandoned.
(6) If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed provisional application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(b) Delayed filing of the subsequent nonprovisional application or international application designating the United States. If the subsequent nonprovisional application or international application designating the United States has a filing date which is after the expiration of the twelve-month period set forth in paragraph (a)(1)(i) of this section but within two months from the expiration of the period set forth in paragraph (a)(1)(i) of this section, the benefit of the provisional application may be restored under PCT Rule 26 bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent nonprovisional application or international application designating the United States within the period set forth in paragraph (a)(1)(i) of this section was unintentional.
(1) A petition to restore the benefit of a provisional application under this paragraph filed on or after May 13, 2015,
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must be filed in the subsequent application, and any petition to restore the benefit of a provisional application under this paragraph must include:
(i) The reference required by 35 U.S.C. 119(e) to the prior-filed provisional application in an application data sheet (§ 1.76(b)(5)) identifying it by provisional application number (consisting of series code and serial number), unless previously submitted;
(ii) The petition fee as set forth in § 1.17(m); and
(iii) A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period set forth in paragraph (a)(1)(i) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(2) The restoration of the right of priority under PCT Rule 26 bis.3 to a provisional application does not affect the requirement to include the reference required by paragraph (a)(3) of this section to the provisional application in a national stage application under 35 U.S.C. 371 within the time period provided by paragraph (a)(4) of this section to avoid the benefit claim being considered waived.
(c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. If the reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section is presented in an application after the time period provided by paragraph (a)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application may be accepted if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application must be accompanied by:
(1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section to the prior-filed provisional application, unless previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the entire delay between the date the benefit claim was due under paragraph (a)(4) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
(1) Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed application must either be:
(i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States;
(ii) An international design application entitled to a filing date in accordance with § 1.1023 and designating the United States; or
(iii) A nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in § 1.53(b) or (d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application.
(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
(3)
(i) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section must be submitted during the pendency of the later-filed application.
(ii) If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed application. The time periods in this paragraph do not apply if the later-filed application is:
(A) An application for a design patent;
(B) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
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(C) An international application filed under 35 U.S.C. 363 before November 29, 2000.
(iii) Except as provided in paragraph (e) of this section, failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application.
(4) The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
(5) Cross-references to other related applications may be made when appropriate (see § 1.14), but cross-references to applications for which a benefit is not claimed under title 35, United States Code, must not be included in an application data sheet (§ 1.76(b)(5)).
(6) If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims the benefit of the filing date of a nonprovisional application or an international application designating the United States filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application. An applicant is not required to provide such a statement if either:
(i) The application claims the benefit of a nonprovisional application in which a statement under § 1.55(k), paragraph (a)(6) of this section, or this paragraph that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed; or
(ii) The applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the later filed application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(7) Where benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application or an international design application which designates but did not originate in the United States, the Office may require a certified copy of such application together with an English translation thereof if filed in another language.
(e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application,
international application, or international design application. If the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is presented after the time period provided by paragraph (d)(3) of this section, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States may be accepted if the reference required by paragraph (d)(2) of this section was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by:
(1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section to the prior-filed application, unless previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the entire delay between the date the benefit claim was due under paragraph (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(f) Applications containing patentably indistinct claims. Where two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
(g) Applications or patents under reexamination naming different inventors and containing patentably indistinct claims. If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain patentably indistinct claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the Office may require the applicant or assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on such date, and if not, indicate which named inventor is the prior inventor, as applicable. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the patentably indistinct claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.
(h) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (a)(3) and (d)(2) of this section that any specific reference to a prior-filed application be presented in an application data sheet (§ 1.76), this requirement in paragraph (a)(3) and (d)(2) of this section will be satisfied by the presentation of such specific reference in the first sentence(s) of the specification following the title in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any
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specific reference submitted for a petition under paragraph (b) of this section to restore the benefit of a provisional application.
(i) Petitions required in international applications. If a petition under paragraph (b), (c), or (e) of this section is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then such petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application and will be treated as having been filed in the international application.
(j) Benefit under 35 U.S.C. 386(c). Benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
(k) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
There are several procedural requirements for a later-filed application to claim the benefit of the filing date of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) or, provided the later-filed application is not a design application (see 35 U.S.C. 172), under 35 U.S.C. 119(e). These requirements are briefly summarized below, followed by a cross-reference to the MPEP section where the requirement is discussed in greater detail.
(A) The prior-filed application must be entitled to a filing date and meet additional requirements as discussed in MPEP § 211.01.
(B) The later-filed application must name the inventor or at least one joint inventor named in the prior-filed application for a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) (see MPEP § 211.01).
(C) For a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c), the later-filed application must contain a reference to the prior-filed application (see MPEP § 211.02).
(D) The reference to the prior-filed application must be submitted within the time periods set forth in 37 CFR 1.78. See MPEP § 211.03. However, the Office will accept an unintentionally delayed benefit claim in certain circumstances. See MPEP § 211.04.
(E) In order to be entitled to the benefit of the prior-filed application, the earlier application must disclose the claimed invention of the later-filed application in the manner provided by 35 U.S.C.
112(a) except for the best mode requirement. See MPEP § 211.05.
(F) If a nonprovisional application, other than a nonprovisional international design application, filed on or after March 16, 2013, claims the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.78(a)(6) and (d)(6) and MPEP § 210, subsection III. If the claims in the later-filed application are not entitled to the benefit of an earlier filing date, the examiner should:
(1) Notify applicant that the claims in the later-filed application are not entitled to the benefit of an earlier filing date because one or more conditions for receiving the benefit of an earlier filing date have not been satisfied (the examiner may use form paragraph 2.09 and other appropriate form paragraphs provided in the following subsections); and
(2) Conduct a prior art search based on the actual filing date of the application instead of the earlier filing date. The examiner may use an intervening reference in a rejection until applicant corrects the benefit claim or shows that the conditions for entitlement to the benefit of the prior application have been met.
211.01 Requirements Related to the Prior-Filed Application [R-07.2015]
I. THE PRIOR-FILED APPLICATION MUST BE ENTITLED TO A FILING DATE
If the prior-filed application is a nonprovisional application filed under 35 U.S.C. 111(a), the application must be entitled to a filing date as set forth in 37 CFR 1.53(b) or (d), and the basic filing fee as set forth in 37 CFR 1.16 must have been paid within the pendency of the application. See 37 CFR 1.78(d)(1)(iii). If the prior-filed application is an international application designating the United States, the prior-filed application must be entitled to a filing date in accordance with PCT Article 11. See 37 CFR 1.78(d)(1)(i). If the prior-filed application is an international design application designating the United States, the prior-filed application must be
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entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).
If the prior-filed application is a provisional application, the provisional application must be entitled to a filing date as set forth in 37 CFR 1.53(c) and the basic filing fee of the provisional application must have been paid within the time period set in 37 CFR 1.53(g). See 37 CFR 1.78(a)(2).
Form paragraph 2.40 may be used to notify applicant that the application is not entitled to the benefit of the prior-filed application because the prior-filed application was not entitled to a filing date and/or did not include the basic filing fee.
¶ 2.40 Prior-Filed Application Not Entitled to a Filing Date or Basic Filing Fee Was Not Paid
This application claims the benefit of prior-filed application No. [1] under 120, 121, 365(c), or 386(c) or under 35 U.S.C. 119(e). If the prior-filed application is an international application designating the United States, it must be entitled to a filing date in accordance with PCT Article 11; if the prior-filed application is an international design application designating the United States, it must be entitled to a filing date in accordance with 37 CFR 1.1023; and if the prior-filed application is a nonprovisional application under 35 U.S.C. 111(a), the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(b) or 1.53(d) and include the basic filing fee set forth in 37 CFR 1.16. See 37 CFR 1.78(d)(1). If the prior-filed application is a provisional application, the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(c) and the basic filing fee must be paid within the time period set forth in 37 CFR 1.53(g). See 37 CFR 1.78(a)(2).
This application is not entitled to the benefit of the prior-filed application because the prior-filed application [2]. Applicant is required to delete the benefit claim to the prior-filed application from the Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the ADS or the first sentence(s) of the specification as appropriate.
Examiner Note:
1. Use this form paragraph to notify applicant that the application is not entitled to the benefit of the prior-filed application because the prior-filed application was not entitled to a filing date and/or did not include the basic filing fee.
2. In bracket 1, insert the application number of the prior-filed application.
3. In bracket 2, insert “was not entitled to a filing date”; “did not include the basic filing fee”; or “was not entitled to a filing date and did not include the basic filing fee”.
II. SAME INVENTOR OR A COMMON JOINT INVENTOR
The statute requires that applications claiming benefit of the earlier filing date under 35 U.S.C. 119(e) or 120 name the inventor or at least one joint inventor named in the previously filed application or provisional application. Note that to be entitled to the benefit of any prior-filed application(s), in addition to naming the inventor or at least one common joint inventor, the invention claimed in the later-filed application must be supported in the manner provided by the 35 U.S.C. 112(a), except for the best mode requirement. See MPEP § 211.05.
III. TRANSITION APPLICATION STATEMENT
If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.78(a)(6) and (d)(6) and MPEP § 210, subsection III. Nonprovisional international design applications are excluded from the transition provisions of 37 CFR 1.78(a)(6) and (d)(6).
IV. ADDITIONAL REQUIREMENTS
See MPEP § 211.01(a) for additional information and requirements specific to claiming the benefit of a provisional application.
See MPEP § 211.01(b) for additional information and requirements specific to claiming the benefit of an earlier-filed nonprovisional application.
211.01(a) Claiming the Benefit of a Provisional Application [R-07.2015]
I. IN GENERAL
When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed, unless
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the benefit of the provisional application has been restored. See 37 CFR 1.78(a)(1) and (b) and subsection II, below. If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or federal holiday within the District of Columbia, the nonprovisional application may be filed on the next succeeding business day. See 35 U.S.C. 21(b), 37 CFR 1.7(b), and MPEP § 201.04 and § 505.
In addition, each prior-filed provisional application must have the same inventor or at least one joint inventor in common with the later-filed application and must be entitled to a filing date as set forth in 37 CFR 1.53(c), and the basic filing fee set forth in 37 CFR 1.16(d) must have been paid for such provisional application within the time period set forth in 37 CFR 1.53(g). See 37 CFR 1.78(a)(2) and MPEP § 211.01.
If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application. If the translation and statement were not filed in the provisional application, the applicant will be notified in the nonprovisional application and given a period of time within which to file the translation and statement in the provisional application, and a reply in the nonprovisional application confirming that the translation and statement were filed in the provisional application. See 37 CFR 1.78(a)(5). In the alternative, applicant may delete the benefit claim to the provisional application from the Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the ADS or the first sentence(s) of the specification, as appropriate. See MPEP § 601.05(a) or (b), as appropriate, for additional details on the requirements for a corrected or supplemental ADS. In a pending nonprovisional application, failure to timely reply to such notice will result in the abandonment of the nonprovisional application. Form paragraph 2.38 may be used to notify applicant that an English translation of the non-English language provisional application is required.
¶ 2.38 Claiming Benefit to a Non-English Language Provisional Application
This application claims benefit to provisional application No. [1], filed on [2], in a language other than English. An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No. [3]. See 37 CFR 1.78. The [4] required by 37 CFR 1.78 is missing. Accordingly, applicant must supply 1) the missing [5] in provisional application No. [6] and 2) in the present application, a confirmation that the translation and statement were filed in the provisional application. If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78.
Examiner Note:
1. Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required. Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.
2. In brackets 1 and 3, insert the application number of the non-English language provisional application.
3. In bracket 2, insert the filing date of the prior provisional application.
4. In brackets 4 and 5, insert --English translation and a statement that the translation is accurate-- or --statement that the translation is accurate--, where appropriate.
Applicant may claim the benefit of a provisional application by claiming the benefit of an intermediate copending nonprovisional application. The later-filed application must claim the benefit of the intermediate nonprovisional application under 35 U.S.C. 120, 121, or 365(c); the intermediate application must be filed not later than 12 months after the filing date of the provisional application (in which the basic filing fee was timely filed) unless the benefit of the provisional application has been restored (see 37 CFR 1.78(b) and subsection II., below); and both the later-filed application and the intermediate application must claim the benefit of the provisional application under 35 U.S.C. 119(e). Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e). See 35 U.S.C. 172.
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II. RESTORING THE BENEFIT OF A PROVISIONAL APPLICATION
Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e). If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional. Thus, an application may now validly claim the benefit of a provisional application filed up to fourteen months earlier. As a result of the implementation of title I of the PLTIA, 37 CFR 1.78(a) and (b) were amended effective May 13, 2015, to provide that a petition to restore the right of priority filed on or after May 13, 2015, must be filed in the subsequent application and to clarify that the subsequent application is the application required to be filed within the period set forth in 37 CFR 1.78(a)(1)(i). For purposes of 37 CFR 1.78(a)(1)(ii), the subsequent application may be a nonprovisional application or an international application designating the United States. Where a petition under 37 CFR 1.78(b) is required in an international application that was not filed in the United States Receiving Office and is not a nonprovisional application, then the petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, or 365(c) to the international application and will be treated as being filed in the international application. See 37 CFR 1.78(i).
A petition under 37 CFR 1.78(b) requires:
(A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet);
(B) the petition fee as set forth in 37 CFR 1.17(m); and
(C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.
The Director may require additional information where there is a question whether the delay was unintentional.
If a petition under 37 CFR 1.78(b) to restore benefit of a provisional application is granted, a further petition under 37 CFR 1.78(b) is not required in an application entitled to claim benefit under 35 U.S.C. 120, 121, or 365(c) of the subsequent application for which benefit of the provisional application was restored.
Use form paragraphs 2.09 and 2.11.01 to indicate that the later-filed application must be filed not later than 12 months after the filing date of the provisional application for which a benefit is sought unless the benefit of the provisional application has been restored (37 CFR 1.78(b)).
¶ 2.11.01 Application Must Be Filed Within 12 Months From the Provisional Application Unless Petition Granted
This application is claiming the benefit of provisional application No. [1] under 35 U.S.C. 119(e). However, this application was not filed within twelve months from the filing date of the provisional application, and there is no indication of an intermediate nonprovisional application or international application designating the United States that is directly claiming the benefit of the provisional application and filed within 12 months of the filing date of the provisional application. In addition, no petition under 37 CFR 1.78(b) or request under PCT Rule 26 bis.3 to restore the benefit of the provisional application has been granted.
Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application or international application designating the United States, was filed within 12 months of the filing date of the provisional application. See 35 U.S.C. 119(e)(3). Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional. A petition under 37 CFR 1.78(b) to restore the benefit of the provisional application must include: (1) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the
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subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional. A petition to restore the benefit of a provisional application must be filed in the subsequent application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Examiner Note:
1. This form paragraph must be preceded by heading form paragraph 2.09.
2. In bracket 1, insert the application number of the prior-filed provisional application.
211.01(b) Claiming the Benefit of a Nonprovisional Application [R-07.2015]
I. COPENDENCY
When a later-filed application is claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate nonprovisional application similarly entitled to the benefit of the filing date of the prior application. Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application. If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application. See MOAEC, Inc. v. MusicIP Corp., 568 F. Supp. 2d 978, 982 (W.D. Wis. 2008) wherein the district court interpreted “before” to mean “not later than” and allowed a continuation application filed the same day that the parent patent issued to have the benefit of the filing date of the parent application. But see Immersion Corp. v. HTC Corp, Civil Action No. 12-259-RGA (D.Del. Feb. 11, 2015). Thus, the later-filed application may be filed under 37 CFR 1.53(b) while the prior application is still pending before the examiner, or is in issue, or even between the time the issue fee is paid and the patent issues. Patents usually will be published within four weeks of payment of the issue fee. Applicants are encouraged
to file any continuing applications no later than the date the issue fee is paid, to avoid issuance of the prior application before the continuing application is filed.
If the prior application is abandoned, the later-filed application must be filed before the abandonment in order for it to be copending with the prior application. The term “abandoned,” refers to abandonment for failure to prosecute (MPEP § 711.02), express abandonment (MPEP § 711.01), abandonment for failure to pay the issue fee (37 CFR 1.316), and abandonment for failure to notify the Office of a foreign filing after filing a nonpublication request under 35 U.S.C. 122(b)(2)(B)(iii) (MPEP § 1124). The expression “termination of proceedings” includes the situations when an application is abandoned or when a patent has been issued, and hence this expression is the broadest of the three copendency definitions.
After a decision by the Court of Appeals for the Federal Circuit in which the rejection of all claims is affirmed, the proceeding is terminated when the mandate is issued by the Court. There are several other situations in which proceedings are terminated as is explained in MPEP § 711.02(c).
When proceedings in an application are terminated, the application is treated in the same manner as an abandoned application, and the term “abandoned application” may be used broadly to include such applications.
The term “continuity” is used to express the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common. The later-filed application may be referred to as a continuing application when the prior application is not a provisional application. Continuing applications include divisional, continuation, and continuation-in-part applications. The statute is so worded that the prior application may disclose more than the later-filed application, or the later-filed application may disclose more than the prior application, and in either case the later-filed application is entitled to the benefit of the filing date of the prior application as to the common subject
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matter disclosed in compliance with 35 U.S.C. 112(a), except for the best mode requirement.
A later-filed application which is not copending with the prior application (which includes those called “substitute” applications as set forth in MPEP § 201.02) is not entitled to the benefit of the filing date of the prior application. Therefore, prior art against the claims of the later-filed application is determined based on the filing date of the later-filed application. An applicant should not refer to such prior application(s) in an application data sheet (see 37 CFR 1.76) and is not required to refer to the prior application in the specification of the later-filed application, but is required to otherwise call the examiner’s attention to the prior application if it or its contents or prosecution is material to patentability of the later-filed application as defined in 37 CFR 1.56(b).
Use form paragraphs 2.09 and 2.11 to indicate the benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) is improper because there is no copendency between the applications.
¶ 2.11 Application Must Be Copending With Parent
This application is claiming the benefit of prior-filed application No. [1] under 35 U.S.C. 120, 121, 365(c), or 386(c). Copendency between the current application and the prior application is required. Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.
Examiner Note:
1. This form paragraph must be preceded by heading form paragraph 2.09.
2. Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.
3. In bracket 1, insert the application number of the prior-filed application.
II. BENEFIT CLAIMS TO MULTIPLE PRIOR APPLICATIONS
Sometimes a pending application is one of a series of applications wherein the pending application is not copending with the first filed application but is copending with an intermediate application entitled to the benefit of the filing date of the first
application. If applicant wishes that the pending application have the benefit of the filing date of the first filed application, applicant must, besides making reference to the intermediate application, also make reference to the first application. See Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 160 USPQ 177 (7th Cir. 1968) and Hovlid v. Asari, 305 F.2d 747, 134 USPQ 162 (9th Cir. 1962). The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications. Appropriate references must be made in each intermediate application in the chain of prior applications. See MPEP § 211.02 for guidance regarding properly referencing prior applications.
There is no limit to the number of prior applications through which a chain of copendency may be traced to obtain the benefit of the filing date of the earliest of a chain of prior copending applications. See In re Henriksen, 399 F2.d 253, 158 USPQ 224 (CCPA 1968). But see MPEP § 2190 (prosecution laches).
A nonprovisional application that directly claims the benefit of a provisional application under 35 U.S.C. 119(e) must be filed within 12 months from the filing date of the provisional application unless the benefit of the provisional application has been restored. See 37 CFR 1.78(b) and MPEP § 211.01(a), subsection II. Although an application that itself directly claims the benefit of a provisional application is not required to specify the relationship to the provisional application, if the instant nonprovisional application is not filed within the 12 month period, but claims the benefit of an intermediate nonprovisional application under 35 U.S.C. 120 that was filed within 12 months from the filing date of the provisional application and claimed the benefit of the provisional application, the intermediate application must be clearly identified as claiming the benefit of the provisional application so that the Office can determine whether the intermediate nonprovisional application was filed within 12 months of the provisional application and thus, whether the claim is proper. Where the benefit of more than one provisional application is being claimed, the intermediate nonprovisional application(s) claiming
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the benefit of each provisional application must be indicated. See MPEP § 211.02 for guidance regarding properly referencing prior applications.
If a benefit claim to a provisional application is submitted without an indication that an intermediate application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the 12 month period (or 14 month period if the benefit of the provisional application has been restored pursuant to 37 CFR 1.78(b)) or the relationship between each nonprovisional application is not indicated, the Office will not recognize such benefit claim and will not include the benefit claim on the filing receipt. Therefore, a petition under 37 CFR 1.78(c) and the petition fee set forth in 37 CFR 1.17(m) will be required if the intermediate application and the relationship of each nonprovisional application are not indicated within the period set forth in 37 CFR 1.78. See MPEP § 201.04.
211.01(c) Claiming the Benefit of an International Application Designating the United States [R-07.2015]
Pursuant to 35 U.S.C. 365(c), a regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) may claim the benefit of the filing date of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371. See MPEP §§ 1895 and 1895.01. Thus, rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as “bypass” applications. To claim the benefit of the filing date of an international application, the international application must designate the United States and be entitled to a filing date in accordance with PCT Article 11, and the later-filed application must be filed during the pendency (e.g., prior to the abandonment) of the international application.
The ability to take such action is based on provisions of the United States patent law. 35 U.S.C. 363 provides that “An international application
designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.” 35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) “shall be regarded as abandonment of the application by the parties thereof.” It is therefore clear that an international application which designates the United States has the effect of a pending U.S. application from the international application filing date until its abandonment as to the United States. The first sentence of 35 U.S.C. 365(c) specifically provides that “In accordance with the conditions and requirements of section 120,... a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States.” The condition of 35 U.S.C. 120 relating to the time of filing requires the later application to be “filed before the patenting or abandonment of or termination of proceedings on the first application....”
211.01(d) Claiming the Benefit of an International DesignApplication Designating the United States [R-07.2015]
Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States. See MPEP §§ 211 and 2920.05(e). 37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon. To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).
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See MPEP § 2920.05(e) for additional information pertaining to benefit claims under 35 U.S.C. 386(c).
211.02 Reference to Prior Application(s) [R-07.2015]
I. APPLICATION DATA SHEET
Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.
For applications filed on or after September 16, 2012, the specific reference to the prior application must be included in an application data sheet (37 CFR 1.76). For applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet (37 CFR 1.76(a)) and/or in the first sentence(s) of the specification following the title, although the Office prefers the use of an application data sheet. If applicant is claiming the benefit of multiple prior applications, and the reference to the prior applications is in the specification, the reference may be in a continuous string of multiple sentences at the beginning of the specification. The multiple sentences must begin as the first sentence after the title, and any additional sentence(s) including a benefit claim must follow the first sentence and not be separated from the first sentence by any other sentence not making a benefit claim. If the specific reference is only contained in the application data sheet, then the benefit claim information will be included on the front page of any patent or patent application publication, but will not be included in the first sentence(s) of the specification.
For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 119(e) or 120 and 37 CFR 1.78 for benefit of a prior-filed provisional application, nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuation or divisional application, or the nonprovisional application claiming benefit of a prior-filed provisional application, is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR
1.57(b). The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. See MPEP § 201.06 and 217. However, applicants are encouraged to provide in the specification an explicit incorporation by reference statement to the prior-filed application(s) for which benefit is claimed under 35 U.S.C. 119(e) or 120 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 CFR 1.57(b). See 37 CFR 1.57(c). See also MPEP §§ 217 and MPEP § 608.01(p).
When a benefit claim is submitted after the filing of an application, and the later-filed application as filed did not incorporate the prior-filed application by reference, applicant cannot add an incorporation by reference statement of the prior application. An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)). See Dart Indus. v. Banner , 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). See also 37 CFR 1.57(b).
If an applicant includes a benefit claim in the application but not in the manner specified by 37 CFR 1.78 (e.g., if the claim is included in an oath or declaration or the application transmittal letter) within the time period set forth in 37 CFR 1.78, the Office will not require a petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) to correct the claim if the information concerning the claim was recognized by the Office as shown by its inclusion on the filing receipt. If, however, a claim is not included in an ADS (or for applications filed prior to September 16, 2012 in the first sentence(s) of the specification or in an ADS) and is not recognized by the Office as shown by its absence on the filing receipt, the Office will require a petition under 37 CFR 1.78 and the petition fee to correct the claim. The Office may not recognize any benefit claim where, for example, there is no indication of the relationship between the nonprovisional applications, or no indication of an intermediate nonprovisional application that is directly claiming the benefit of a provisional application. See subsection II, below. Even if the Office has recognized a benefit claim by entering it into the
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Office’s database and including it on applicant’s filing receipt, the benefit claim is not a proper benefit claim under 35 U.S.C. 119(e) or 35 U.S.C. 120 and 37 CFR 1.78 unless the reference is included in an ADS or for applications filed prior to September 16, 2012, included in the ADS or in the first sentence(s) of the specification and all other requirements are met.
In view of this requirement for a specific reference in the later-filed application, the right to rely on a prior application may be waived by an applicant if a reference to the prior application is not included in the later-filed application. If the examiner is aware of the fact that an application is a continuing application of a prior application or the applicant fails to submit the reference to the prior application in compliance with 37 CFR 1.78 (e.g., the reference was submitted in the transmittal letter but not in an application data sheet (or for applications filed prior to September 16, 2012 in the first sentence(s) of the specification or an application data sheet)), he or she should merely call attention to this in an Office action by using the wording of form paragraph 2.15.
¶ 2.15 Reference to Prior Application, 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) Benefit
This application makes reference to or appears to claim subject matter disclosed in Application No. [1], filed [2]. If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.
If the instant application is a utility or plant application filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a national stage application under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(4) for benefit claims under 35 U.S.C. 119(e)
and 37 CFR 1.78(d)(3) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c). A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)). The petition must be accompanied by (1) the reference required by 35 U.S.C. 120 or 119(e) and by 37 CFR 1.78 to the prior application (unless previously submitted), (2) the petition fee under 37 CFR 1.17(m), and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an ADS with the reference (or, if the application was filed before September 16, 2012, by filing either an amendment to the first sentence(s) of the specification or an ADS with the reference. See MPEP § 211.02.
Examiner Note:
1. Use this paragraph when an application does not claim the benefit of a prior-filed application, but makes a reference to, or appears to claim subject matter disclosed in, the prior-filed application.
2. In bracket 1, insert the application number of the prior-filed application.
3. In bracket 2, insert the filing date of the prior-filed application.
4. In a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the first sentence(s) of the specification, or in an application data sheet, to the prior application is not required and may not be made. The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA. 37 CFR 1.53(d)(2)(iv) and 1.53(d)(7).
If the examiner is aware of a prior application he or she should note it in an Office action, as indicated above, but should not require the applicant to call attention to the prior application.
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For notations to be placed in the file history in the case of continuing applications, see MPEP § 202 and § 1302.09.
II. REFERENCE TO PRIOR NONPROVISIONAL APPLICATIONS
Except for benefit claims to the prior application in a continued prosecution application (CPA), benefit claims under 35 U.S.C. 120, 121, 365(c), and 386(c) must identify the prior application by application number, by international application number and international filing date, or by international registration number and international filing date under 37 CFR 1.1023, and indicate the relationship between the applications. See 37 CFR 1.78. The relationship between the applications is whether the instant application is a continuation, divisional, or continuation-in-part of the prior nonprovisional application. For international design applications, the required reference can identify the nonprovisional application number instead of the international registration number and filing date under 37 CFR 1.1023 once the international design application becomes a nonprovisional application. Identifying the prior international design application by the nonprovisional application number is preferable to the Office.
Where the reference to a prior nonprovisional application appears in the specification of an application as permitted for applications filed before September 16, 2012, an example of a proper benefit claim is “this application is a continuation of prior Application No. ---, filed ---.” A benefit claim that merely states that “this application claims the benefit of Application No. ---, filed ---” does not comply with 35 U.S.C. 120 and 37 CFR 1.78, since the relationship between the applications is not stated. In addition, a benefit claim that merely states that “this application is a continuing application of Application No. ---, filed ---” does not comply with 35 U.S.C. 120 and 37 CFR 1.78 since the proper relationship, which includes the type of continuing (i.e., continuation, divisional, or continuation-in-part) application, is not stated.
A request for a CPA filed under 37 CFR 1.53(d) (available only for design applications, but not international design applications) is itself the specific
reference required by 35 U.S.C. 120 and 37 CFR 1.78 to every application assigned the same application number identified in the request. (Note: The CPA is assigned the same application number as the prior application.) In a CPA, a specific reference in the first sentence(s) of the specification following the title, or in an application data sheet, to a prior application assigned the same application number is not required and may not be made. Any such reference should be deleted. No amendment in a CPA may delete the specific reference to the prior application assigned the same application number. A specific reference to an application not assigned the same application number, but relied on for benefit under 35 U.S.C. 120 and 37 CFR 1.78 is required. Cross references to other related applications not assigned the same application as the CPA may be made when appropriate.
When a nonprovisional application (other than a CPA) filed on or after September 16, 2012 is entitled under 35 U.S.C. 120 to an earlier U.S. effective filing date, the reference must be included in an application data sheet. For applications filed prior to September 16, 2012, the benefit claim must appear either in the application data sheet, or as a statement in the first sentence(s) of the specification. An example of such a statement is “This is a divisional (or continuation, or continuation-in-part, as appropriate) application of Application No. ---, filed ---.”In the case of a design application filed under 37 CFR 1.53(b) as a divisional, continuation or continuation-in-part of a CPA, there should be only one reference to the series of applications assigned the same application number, with the filing date cited being that of the original non-continued application. See MPEP § 1504.20 for additional information pertaining to benefit claims in design applications.
Where a nonprovisional application is claiming the benefit under 35 U.S.C. 120 of a prior national stage application under 35 U.S.C. 371, the appropriate relationship must be indicated on an application data sheet for applications filed on or after September 16, 2012. For applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet (37 CFR 1.76(a)) and/or in the first sentence(s) specification, Where the reference to the prior-filed national stage application appears in the specification, a suitable
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reference would read “This application is a continuation of U.S. Application No. 08/---, which was the National Stage of International Application No. PCT/DE95/---, filed ---.”
Any benefit claim that does not both identify a prior application by its application number and specify a relationship between the applications will not be considered to contain a specific reference to a prior application as required by 35 U.S.C. 120. Such benefit claim may not be recognized by the Office and may not be included on the filing receipt even if the claim appears in an application data sheet (for an application filed on or after September 16, 2012), or in the application data sheet or the first sentence(s) of the specification (for an application filed prior to September 16, 2012). As a result, publication of the application may not be scheduled on the basis of the prior application’s filing date. If the Office does not recognize a benefit claim under 35 U.S.C. 120 because it does not contain the required reference and the time period set forth in 37 CFR 1.78 for submitting the required reference has expired, applicant must submit a petition under 37 CFR 1.78 and the petition fee set forth in 37 CFR 1.17(m) in order for the Office to accept the unintentionally delayed claim under 35 U.S.C. 120 because the application will not have been scheduled for publication on the basis of the prior application’s filing date.
To specify the relationship between the applications, applicant must specify whether the application is a continuation, divisional, or continuation-in-part of the prior application. Note that the terms are exclusive. An application cannot be, for example, both a continuation and a divisional or a continuation and a continuation-in-part of the same application. Moreover, if the benefit of more than one nonprovisional application is claimed, then the relationship between each application (i.e., continuation, divisional, or continuation-in-part) must be specified in order to establish copendency throughout the entire chain of prior-filed applications. For example, where the reference to a prior nonprovisional application appears in the specification of an application as permitted for applications filed before September 16, 2012, a statement that “this application claims the benefit of Application Nos. C, B, and A” or “this application
is a continuing application of Application Nos. C, B, and A” is improper. Applicant instead must state, for example, that “this application is a continuation of Application No. C, filed ---, which is a continuation of Application No. B, filed ---, which is a continuation of Application No. A, filed ---.
III. REFERENCE TO PRIOR PROVISIONAL APPLICATIONS
When a nonprovisional application filed on or after September 16, 2012 is entitled to an earlier U.S. effective filing date of one or more provisional applications under 35 U.S.C. 119(e), the reference must be included in an application data sheet. For applications filed prior to September 16, 2012, the reference to the provisional application must be in an application data sheet (37 CFR 1.76(a)) and/or in the first sentence(s) specification. Where the reference to a prior provisional application appears in the first sentence(s) of the specification a statement such as “This application claims the benefit of U.S. Provisional Application No. 60/---, filed ---, and U.S. Provisional Application No. 60/ ---, filed ---.” should appear as the first sentence(s) of the description. In addition, where a nonprovisional application benefit claim appears in the specification of an application filed before September 16, 2012 and the application is claiming the benefit under 35 U.S.C. 120 of a prior application, which in turn claims the benefit of a provisional application under 35 U.S.C. 119(e), a suitable reference would read, “This application is a continuation of U.S. Application No. 10/---, filed ---, which claims the benefit of U.S. Provisional Application No. 60/---, filed ---.”. Note that a design application cannot claim the benefit of a provisional application. See MPEP § 1504.20 for benefit information specific to design applications and MPEP § 2920.05(e) for benefit information specific to international design applications.
The relationship (i.e., continuation, divisional, or continuation-in-part) is not required and should not be specified when the benefit of a prior provisional application is being claimed under 35 U.S.C. 119(e). No relationship should be specified because whenever a priority claim to a provisional application under 35 U.S.C. 119(e) is made, it is implicit that the relationship is “nonprovisional application of a
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provisional application.” If a relationship between a prior provisional application and the nonprovisional application is submitted, it may be unclear whether the applicant wishes to claim the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) or 120. Thus, applicants seeking to claim the priority to a provisional application under 35 U.S.C. 119(e) should not state that the application is a “continuation” of a provisional application or that the application claims 35 U.S.C. 120 benefit to a provisional application. Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).
211.02(a) Correcting or Adding a Benefit Claim After Filing [R-07.2015]
I. CORRECTED FILING RECEIPT
If applicant receives a filing receipt with missing or incorrect benefit claim information, applicant may request a corrected filing receipt. The Office will not grant a request for a corrected filing receipt to include a benefit claim unless the proper reference to the prior application is included (i) in an ADS (for applications filed on or after September 16, 2012) or (ii) in the first sentence(s) of the specification or an ADS (for applications filed prior to September 16, 2012) within the time period required by 37 CFR 1.78 with a few exceptions. See MPEP § 211.03. If the proper reference was previously submitted in an application filed on or after September 16, 2012, the request for a corrected filing receipt should indicate that the reference was properly and timely made in the ADS. If the proper reference was previously submitted in an application filed prior to September 16, 2012, the request for a corrected filing receipt should indicate that the reference was properly and timely made and where such reference is located (i.e., the specification, an amendment to the specification, or an ADS). The Office plans to notify applicants on or with the filing receipt that a benefit claim may not have been recognized because the
benefit claim was improper but applicants are advised that only the benefit claims that are listed on the filing receipt have been recognized by the Office. Therefore, applicants should carefully and promptly review their filing receipts in order to avoid the need for a petition (37 CFR 1.78) and the petition fee.
II. ADDING BENEFIT CLAIMS
If a benefit claim is added after the time period required by 37 CFR 1.78, a petition and the petition fee are required. See MPEP § 211.04. Any petition under 37 CFR 1.78 must be accompanied by a corrected ADS in compliance with 37 CFR 1.76(c) (for applications filed on or after September 16, 2012), or by an amendment to the specification or a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) (for applications filed prior to September 16, 2012) unless the proper reference was previously submitted. In addition to the petition under 37 CFR 1.78 and ADS or amendment, to add a benefit claim it may be necessary for applicant to file one of the following, depending on the status of the application:
(A) a request for continued examination (RCE) under 37 CFR 1.114, if the application is under a final rejection or has been allowed (see MPEP § 706.07(h)). An amendment or ADS filed after final rejection or allowance is not entered as a matter of right and must be filed in compliance with 37 CFR 1.116 or 1.312, respectively; or
(B) a reissue application or a request for a certificate of correction under 37 CFR 1.323, if appropriate (see MPEP §§ 1402 and 1481), if the application has issued as a patent.
When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement specifying of the prior application unless an incorporation by reference statement specifying of the prior application was presented upon filing of the application. See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
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III. DELETING BENEFIT CLAIMS
In certain circumstances, applicants may choose to delete a benefit claim. For applications filed on or after September 16, 2012, applicant may do so by filing a corrected application data sheet in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application. For applications filed prior to September 16, 2012, applicant may do so by amending the specification (if the benefit claim is in the specification) or by submitting a supplemental application data sheet in compliance with pre-AIA 37 CFR 1.76(c) to delete any references to prior applications.
The examiner should consider whether any new prior art may now be available if a benefit claim is deleted. If an applicant is submitting an amendment to the specification or an ADS to delete a benefit claim after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116 (see MPEP § 714.12 and § 714.13). If the amendment or ADS to delete a benefit claim is submitted after the application has been allowed, the amendment or ADS will be treated under 37 CFR 1.312 (see MPEP § 714.16). A deletion of a benefit claim will not delay the publication of the application unless the amendment or ADS is recognized by the Office within nine weeks prior to the projected publication date that was originally calculated based on the benefit claim.
A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application. If the applicant later files a petition to accept an unintentionally delayed claim to add the benefit claim to the prior application in the same application from which the benefit claim was canceled, the Office may refuse to accept such benefit claim because the delay was not unintentional. The correction or entry of the data in the PALM data base can be made by technical support staff of the TC. Upon entry of the data, a new PALM bib-data sheet should be placed in the file. See also MPEP § 707.05 and § 1302.09.
In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), no amendment may delete
the specific reference to a prior application assigned the same application number. (Note: In the CPA, the request is the specific reference required by 35 U.S.C. 120 and 37 CFR 1.78 to every application assigned the same application number identified in the request. Further, in a CPA, a specific reference in the first sentence(s) of the specification following the title, or in an application data sheet, to a prior application assigned the same application number is not required and should not be made.)
211.03 Time Period for Making a Claim for Benefit Under 37 CFR 1.78 [R-07.2015]
37 CFR 1.78 specifies: (A) a time period within which a benefit claim to a prior nonprovisional application, international application, international design application, or provisional application must be stated or it is considered waived; and (B) provisions for the acceptance of the unintentionally delayed submission of a claim to the benefit of a prior nonprovisional application, international application, international design application, or provisional application.
If the application is a utility or plant application filed under 35 U.S.C. 111(a), the benefit claim of the prior application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) must be made during the pendency of the application and within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of: (1) four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f); (2) four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage; or (3) sixteen months from the filing date of the prior application. This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c) unless a petition to accept an unintentionally delayed benefit claim is granted. See MPEP § 211.04.
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If the application is a design application, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be submitted during the pendency of the later-filed application.
If an applicant includes a claim to the benefit of a prior application elsewhere in the application but not in the manner specified in 37 CFR 1.78 (e.g., if the benefit claim is included in an oath or declaration, or the application transmittal letter, or in the first sentence(s) of the specification for an application filed on or after September 16, 2012) within the time period set forth in 37 CFR 1.78, the Office will not require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on a filing receipt. This is because the application will have been scheduled for publication on the basis of such information concerning the benefit claim. Applicant must still submit the benefit claim in the manner specified in 37 CFR 1.78 (i.e., in an ADS for applications filed on or after September 16, 2012, or by an amendment to the first sentence(s) of the specification or in an ADS for applications filed prior to September 16, 2012) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the benefit of a prior application. If, however, an applicant includes a benefit claim elsewhere in the application and the claim is not recognized by the Office as shown by its absence on a filing receipt, the Office will require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim. This is because the application will not have been scheduled for publication on the basis of the information concerning the benefit claim contained elsewhere in the application.
A petition under 37 CFR 1.78 and the petition fee would not be required for correcting a timely submitted benefit claim for the following situations:
(A) Changing the relationship of the applications (e.g., changing from “continuation” or “divisional” to “continuation-in-part” or from “continuation-in-part” to “continuation” or “divisional”);
(B) Changing the filing date of a prior-filed nonprovisional or provisional application; and
(C) Changing a benefit claim of a prior-filed provisional application under 35 U.S.C. 120 (e.g., “This application is a continuation of prior-filed provisional application No. ---”) to a benefit claim of the same provisional application under 35 U.S.C. 119(e) (e.g., “This application claims the benefit of prior-filed provisional application No. ---”) during the pendency of the later-filed application. Note, however: If the later-filed application has issued as a patent, the correction cannot be made by a certificate of correction and would not be effective in a reissue application because the term of a patent is measured from the prior application’s filing date and removing the benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) would have the effect of lengthening the term of the patent.
If a benefit claim is filed after the required time period and without a petition as required by 37 CFR 1.78, the applicant should be informed that the benefit claim was not entered and that a petition needs to be filed using form paragraph 2.39.
¶ 2.39 35 U.S.C. 119(e), 120, 121, or 365(c), or 386(c) Benefit Claim is Untimely
The benefit claim filed on [1] was not entered because the required reference was not timely filed within the time period set forth in 37 CFR 1.78. If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application. If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications. See 37 CFR 1.78(a) for benefit claims under 35 U.S.C. 119(e) and 37 CFR 1.78(d) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).
If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35
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U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). The petition must be accompanied by: (1) the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted); (2) a petition fee under 37 CFR 1.17(m); and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Examiner Note:
1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
2. In bracket 1, insert the filing date of the amendment or paper containing the benefit claim.
3. Do not use this form paragraph if the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78, but not in the location of the application as required by 37 CFR 1.78 (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt. In this situation, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an amendment to the first sentence(s) of the specification (only if the application was filed before September 16, 2012) or an ADS. The reference is required in the ADS if the application was filed on or after September 16, 2012. See MPEP § 210, subsection I and MPEP § 211.03.
211.04 Delayed Benefit Claims [R-07.2015]
If the reference required by 35 U.S.C. 120 and 37 CFR 1.78 is not submitted within the required time period, a petition for an unintentionally delayed claim may be filed. The petition must be accompanied by: (A) the reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. See 37 CFR 1.78(e).
Effective May 13, 2015, 37 CFR 1.78(d)(3) was amended to make the procedures under 37 CFR
1.78(e) to accept an unintentionally delayed benefit claim applicable to design applications where the benefit claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.78(e) may be filed along with a request for certificate of correction after patent grant. See MPEP § 1481.03.
Likewise, if the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 is not submitted within the required time period, a petition for an unintentionally delayed claim may be filed. The petition must be accompanied by: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior provisional application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. See 37 CFR 1.78(c).
Petitions for an unintentionally delayed benefit claim should be forwarded to the Office of Petitions. See MPEP § 1002.02(b).
DELAYED SUBMISSION OF BENEFIT CLAIM IN INTERNATIONAL APPLICATION
A petition under 37 CFR 1.78 for accepting an unintentionally delayed benefit claim and the petition fee under 37 CFR 1.17(m) are required to add a benefit claim under 35 U.S.C. 120 and 365(c) in an abandoned international application designating the United States, even when the international application did not enter the national stage under 35 U.S.C. 371. For example, when filing a “bypass” continuation application under 35 U.S.C. 111(a) that claims the benefit of an international application designating the United States that could have but did not claim the benefit of an earlier U.S. application, and the benefit claim is to be added to the international application, a petition under 37 CFR 1.78 must be filed in the international application.
If a petition under 37 CFR 1.78(c) or (e) is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then the petition may be
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filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application and will be treated as having been filed in the international application. See 37 CFR 1.78(i).
211.05 Sufficiency of Disclosure in Prior-Filed Application [R-07.2015]
I. DISCLOSURE REQUIREMENT
To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement. See Transco Prods., Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). Accordingly, the disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.
A. Claiming the Benefit of Provisional Applications
Under 35 U.S.C. 119(e), the written description and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter claimed in the nonprovisional application that claims the benefit of the provisional application. In New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
298 F.3d 1290, 1294, 63 USPQ2d 1843, 1846 (Fed. Cir. 2002), the court held that for a nonprovisional application to be afforded the priority date of the provisional application, “the specification of the provisional must ‘contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms,’ 35 U.S.C. 112¶1, to enable an ordinarily skilled artisan to practice the invention claimed in the nonprovisional application.”
In New Railhead, the patented drill bit was the subject of a commercial offer for sale. A provisional application was filed after the sale offer, but well within the one year grace period of 35 U.S.C. 102(b). A nonprovisional application, which issued as Patent No. 5,899,283, was filed within one year of the filing of the provisional application but more than one year after the sale offer. If the ‘283 patent was not afforded the priority date of the provisional application, the patent would be invalid under 35 U.S.C. 102(b) since it was filed more than one year after the commercial offer for sale. The court looked at claim 1 of the ‘283 patent which recites a bit body being angled with respect to the sonde housing. The court then reviewed the provisional application and concluded that nowhere in the provisional application is the bit body expressly described as “being angled with respect to the sonde housing” as recited in claim 1 of the ‘283 patent. The court held that the disclosure of the provisional application does not adequately support the invention claimed in the ‘283 patent as to the angle limitation and therefore, the ‘283 patent is not entitled to the filing date of the provisional application under 35 U.S.C. 119(e)(1) and the ‘283 patent is invalid under 35 U.S.C. 102(b).
A claim is not required in a provisional application. However, for a claim in a later filed nonprovisional application to be entitled to the benefit of the filing date of the provisional application, the written description and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter of the claim in the later filed nonprovisional application. If a claim in the nonprovisional application is not adequately supported by the written description and drawing(s) (if any) of the provisional application (as in New Railhead), that claim in the nonprovisional application is not entitled to the benefit of the filing date of the provisional application. If the filing date of the earlier provisional application is necessary, for example, in the case of an interference or to overcome a reference, care must be taken to ensure that the disclosure filed as the provisional application adequately provides (1) a written description of the subject matter of the claim(s) at issue in the later filed nonprovisional application, and (2) an enabling disclosure to permit one of ordinary skill in the art to make and use the claimed invention in the later
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filed nonprovisional application without undue experimentation.
B. Claiming the Benefit of Nonprovisional Applications
The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP § 201.07. The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, or include at least that portion of the disclosure of the prior-filed application that is germane to the invention claimed in the divisional application. See MPEP § 201.06. The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application. A continuation-in-part application may include matter not disclosed in the prior-filed application. See MPEP § 201.08. Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application. If there is a continuous chain of copending nonprovisional applications, each copending application must disclose the claimed invention of the later-filed application in the manner provided by 35 U.S.C. 112(a) in order for the later-filed application to be entitled to the benefit of the earliest filing date.
Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) except for the best mode requirement, in the earlier filed application. See, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d 1829 (Fed. Cir. 1998); In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA 1978). A claim in a subsequently filed application that relies on a combination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120 since 35 U.S.C. 120 requires that the earlier filed application contain a disclosure which complies with 35 U.S.C. 112(a) except for the best mode requirement for each claim in the subsequently filed application. Studiengesellschaft Kohle m.b.H. v. Shell Oil Co.,
112 F.3d 1561, 1564, 42 USPQ2d 1674, 1677 (Fed. Cir. 1997).
A claim in the later-filed application is not entitled to the benefit of the filing date of the prior-filed application if the disclosure of the prior-filed application does not enable one skilled in the art to “use” the claimed invention. See In re Hafner, 410 F.2d 1403, 1406, 161 USPQ 783, 786 (CCPA 1969) (“[T]o be entitled to the benefits provided by [35 U.S.C. 120], the invention disclosed in the “previously filed” application must be described therein in such a manner as to satisfy all the requirements of the first paragraph of [35 U.S.C.] 112, including that which requires the description to be sufficient to enable one skilled in the art to use the [invention].”).
Where the prior application (a nonprovisional application) is found to be fatally defective because of insufficient disclosure to support allowable claims, a later-filed application filed as a “continuation-in-part” of the first application to supply the deficiency is not entitled to the benefit of the filing date of the first application. Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 587, 83 USPQ 277, 281 (2d Cir. 1949) and cases cited therein. Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application. See, e.g., In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); Transco Products, Inc. v. Performance Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994); In re Van Lagenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA 1972).
By way of further illustration, if the claims of a continuation-in-part application which are only entitled to the continuation-in-part filing date “read
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on” published, publicly used or sold, or patented subject matter (e.g., as in a genus-species relationship) a rejection under 35 U.S.C. 102 would be proper. Cases of interest in this regard are as follows: Mendenhall v. Cedarapids Inc., 5 F.3d 1557, 28 USPQ2d 1081 (Fed. Cir. 1993); In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971); In re Hafner, 410 F.2d 1403, 161 USPQ 783 (CCPA 1969); In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958); In re Steenbock, 83 F.2d 912, 30 USPQ 45 (CCPA 1936); and Ex parte Hageman, 179 USPQ 747 (Bd. App. 1971).
Form paragraphs 2.09 and 2.10 should be used where the claims of the later-filed application are not adequately disclosed or enabled by the disclosure of the prior application.
¶ 2.09 Heading for Conditions for Benefit Claims Under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c)
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. [1] as follows:
Examiner Note:
1. In bracket 1, insert the appropriate statutory section(s).
2. One or more of form paragraphs 2.10 to 2.11.01 or 2.38 to 2.40 must follow depending upon the circumstances.
¶ 2.10 Disclosure of Prior-Filed Application Does Not Provide Support for Claimed Subject Matter
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. [1], fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. [2]
Examiner Note:
1. This form paragraph must be preceded by heading form paragraph 2.09.
2. This form paragraph may be used when there is lack of support or enablement in the prior-filed application for the claims in the application that is claiming the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) or under 35 U.S.C. 119(e). The prior-filed application can be a provisional application, a nonprovisional application, an international application (PCT) that designates the United States, or an international design application that designates the United States.
3. In bracket 1, insert the application number of the prior-filed application.
4. In bracket 2, provide an explanation of lack of support or enablement. If only some of the claims are not entitled to the benefit of the filing date of the prior application, the examiner should include a list of those claims after the explanation (e.g., “Accordingly, claims 1-10 are not entitled to the benefit of the prior application.”).
Form paragraph 2.10.01 should be used where applicant is claiming the benefit of a prior nonprovisional application under 35 U.S.C. 120, 121, or 365(c) and the relationship (continuation or divisional) of the applications should be changed to continuation-in-part because the disclosure of the later-filed application contains matter not disclosed in the prior-filed nonprovisional application.
¶ 2.10.01 Continuation or Divisional Application Contains New Matter Relative to the Prior-Filed Application
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application: [1].
Examiner Note:
1. This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a “continuation,” “division,” or “divisional application” of the prior-filed application. Do not use this form paragraph if the applicant is claiming the benefit of a provisional application under 35 U.S.C. 119(e).
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2. In bracket 1, provide an example of the matter not disclosed in the prior-filed application.
212 [Reserved]
213 Right of Priority of Foreign Application [R-07.2015]
Under certain conditions and on fulfilling certain requirements, an application for patent filed in the United States may be entitled to the benefit of the filing date of a prior application filed in a foreign country. The conditions are specified in 35 U.S.C. 119(a)-(d) and (f), 172, 365(a) and (b), and 386(a) and (b), and 37 CFR 1.55.
35 U.S.C. 119 Benefit of earlier filing date; right of priority.
(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7) , pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application in this country within the 12-month period was unintentional.
(b)(1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.
(2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim under this section.
(3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual
property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.
(c) In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.
(d) Applications for inventors’certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of such filing.
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(f) Applications for plant breeder’s rights filed in a WTO member country (or in a foreign UPOV Contracting Party) shall have the same effect for the purpose of the right of priority under subsections (a) through (c) of this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents.
*****
37 CFR 1.55 Claim for foreign priority.
(a) In general. An applicant in a nonprovisional application may claim priority to one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b) and this section.
(b) Time for filing subsequent application. The nonprovisional application must be:
(1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or
(2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.
(c) Delayed filing of subsequent application. If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26 bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. A petition to restore the right of
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priority under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. Any petition to restore the right of priority under this paragraph must include:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b) , or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(d) Time for filing priority claim—
(1) Application under 35 U.S.C. 111(a). The claim for priority must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application in an original application filed under 35 U.S.C. 111(a), except as provided in paragraph (e) of this section. The claim for priority must be presented in an application data sheet (§ 1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.
(2) Application under 35 U.S.C. 371. The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.
(e) Delayed priority claim. Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) not presented in the manner required by paragraph (d) or (m) of this section during pendency and within the time period provided by paragraph (d) of this section (if applicable) is considered to have been waived. If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) must be accompanied by:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which
priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
(2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies;
(3) The petition fee as set forth in § 1.17(m); and
(4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(f) Time for filing certified copy of foreign application—
(1) Application under 35 U.S.C. 111(a). A certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application, or sixteen months from the filing date of the prior foreign application, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section. The time period in this paragraph does not apply in a design application.
(2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371. If a certified copy of the foreign application is not filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
(3) If a certified copy of the foreign application is not filed within the time period specified [in] paragraph (f)(1) of this section in an application under 35 U.S.C. 111(a) or within the period specified in paragraph (f)(2) of this section in an international application entering the national stage under 35 U.S.C. 371, and an exception in paragraph (h), (i), or (j) of this section is not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).
(g) Requirement for filing priority claim, certified copy of foreign application, and translation in any application.
(1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed
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after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.
(2) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in this section:
(i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
(ii) When necessary to overcome the date of a reference relied upon by the examiner; or
(iii) When deemed necessary by the examiner.
(3) An English language translation of a non-English language foreign application is not required except:
(i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
(ii) When necessary to overcome the date of a reference relied upon by the examiner; or
(iii) When specifically required by the examiner.
(4) If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.
(h) Certified copy in another U.S. patent or application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will be considered satisfied in a reissue application if the patent for which reissue is sought satisfies the requirement of this section for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will also be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
(i) Foreign intellectual property office participating in a priority document exchange agreement. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
(1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), or a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy;
(2) The claim for priority is presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number,
country (or intellectual property authority), day, month, and year of its filing, and the applicant provides the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application;
(3) The copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the period specified in paragraph (g)(1) of this section; and
(4) The applicant files in a separate document a request that the Office obtain a copy of the foreign application from a participating intellectual property office that permits the Office to obtain such a copy where, although the foreign application was not filed in a participating foreign intellectual property office, a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy. The request must identify the participating intellectual property office and the subsequent application by the application number, day, month, and year of its filing in which a copy of the foreign application was filed. The request must be filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), or four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or the request must be accompanied by a petition under paragraph (e) or (f) of this section.
(j) Interim copy. The requirement in paragraph (f) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
(1) A copy of the original foreign application clearly labeled as "Interim Copy," including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority);
(2) The copy of the foreign application and separate cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or with a petition under paragraph (e) or (f) of this section; and
(3) A certified copy of the foreign application is filed within the period specified in paragraph (g)(1) of this section.
(k) Requirements for certain applications filed on or after March 16, 2013. If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims priority to a foreign application filed prior
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to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior foreign application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(l) Inventor's certificates. An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor's certificate in a country granting both inventor's certificates and patents. To claim the right of priority on the basis of an application for an inventor's certificate in such a country under 35 U.S.C. 119(d), the applicant, when submitting a claim for such right as specified in this section, must include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor’s certificate, had the option to file an application for either a patent or an inventor’s certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority.
(m) Time for filing priority claim and certified copy of foreign application in an international design application designating the United States. In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations. In a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.
(n) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section that any priority claim be presented in an application data sheet (§ 1.76), this requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section will be satisfied by the presentation of such priority claim in the oath or declaration under § 1.63 in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any priority claim submitted for a petition under paragraph (c) of this section to restore the right of priority to a foreign application.
(o) Priority under 35 U.S.C. 386(a) or (b). The right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
(p) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
Implementation of Public Law 112-211, 126 Stat. 1527 (titles I and title II of the Patent Law Treaties Implementation Act (PLTIA)), necessitated changes to the procedural requirements relating to claims for priority to an earlier-filed foreign application and to the submission of a certified copy of the priority document. The conditions for claiming priority to an earlier-filed foreign application are summarized below:
(A) The foreign application must be one filed in “a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States or in a WTO member country.” See MPEP § 213.01.
(B) The foreign application must have been filed by the same applicant as the applicant in the United States, or by his or her legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common. See MPEP § 213.02.
(C) The application, or its earliest parent United States application under 35 U.S.C. 120, must have been filed in a “recognized” country (see MPEP § 213.01) within 12 months from the date of the earliest foreign filing unless the right of priority has been restored (see MPEP § 213.03). However, the period of 12 months specified in this section is 6 months in the case of designs pursuant to 35 U.S.C. 172. See MPEP §§ 1504.10 and 2920.05(d).
(D) The foreign application must be for the same invention as the application in the United States.
(E) For an original application filed under 35 U.S.C. 111(a) (other than a design application), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date
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of the prior foreign application. This time period is not extendable. See MPEP § 214.01.
(F) For applications entering the national stage under 35 U.S.C. 371 from an international application, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT Articles and Regulations.
(G) For a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet during the pendency of the application. See 37 CFR 1.55(m). In addition, the right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application can only be claimed in a nonprovisional, international, or international design application filed on or after May 13, 2015. See 37 CFR 1.55(o).
(H) In the case where the basis of the claim is an application for an inventor's certificate, the requirements of 37 CFR 1.55(l) must also be met. See MPEP § 213.05.
(I) A certified copy of the foreign application must be filed within the time period set forth in 37 CFR 1.55. See MPEP § 215.02 et seq. for applications filed on or after March 16, 2013, and MPEP § 215.03 for applications filed before March 16, 2013. The claim for priority and the certified copy of the foreign application must, in any event, be filed within the pendency of the application and before the patent is granted. See MPEP § 213.04.
(J) If a nonprovisional application (other than a nonprovisional international design application) filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.55(k) and MPEP § 210, subsection III.
Applicant may be informed of possible priority rights under 35 U.S.C. 119(a)-(d) and (f) by using the wording of form paragraph 2.18.
¶ 2.18 Right of Priority Under 35 U.S.C. 119(a)-(d) and (f)
Applicant is advised of possible benefits under 35 U.S.C. 119(a)-(d) and (f), wherein an application for patent filed in the United States may be entitled to claim priority to an application filed in a foreign country.
213.01 Recognized Countries and Regional Patent Offices of Foreign Filing [R-07.2015]
The right to rely on a foreign application is known as the right of priority in international patent law and this phrase has been adopted in the U.S. statute. The right of priority originated in a multilateral treaty of 1883, to which the United States adhered in 1887, known as the Paris Convention for the Protection of Industrial Property (Paris Convention). The treaty is administered by the World Intellectual Property Organization (WIPO) at Geneva, Switzerland. This treaty has been revised several times, the latest revision in effect being written in Stockholm in July 1967 (copy at Appendix P of this Manual). Articles 13-30 of the Stockholm Revision became effective on September 5, 1970. Articles 1-12 of the Stockholm Revision became effective on August 25, 1973. One of the many provisions of the Paris Convention requires each of the adhering countries to accord the right of priority to the nationals of the other countries and the first United States statute relating to this subject was enacted to carry out this obligation. A foreign country may also provide for this right by reciprocal legislation.
I. LIST OF RECOGNIZED COUNTRIES
Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized. The table indicates whether a basis for priority is that the state is party to the Patent Cooperation Treaty (PCT) or the Paris Convention for the Protection of Industrial Property (Paris), or a member of the World Trade Organization (WTO). See 35 U.S.C. 119(a). See w w w. w i p o . i n t / e x p o r t / s i t e s / w w w / p c t / en/texts/pdf/pct_paris_wto.pdf for the most current version of the table reproduced below. See also h t t p : / / w w w. w t o . o r g / e n g l i s h / t h e w t o _ e /whatis_e/tif_e/org6_e.htm for a current list of WTO member countries along with their dates of membership. Applications for plant breeder’s rights filed in WTO member countries and foreign UPOV
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contracting parties may be relied upon for priority pursuant to 35 U.S.C. 119(f). See MPEP §§ 1612
and 1613.
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Note that the United States and Taiwan signed an agreement on priority for patent and trademark applications on April 10, 1996, and as of that date Taiwan is a country for which the right of priority is recognized in the United States. Taiwan became a member of the WTO on January 1, 2002.
If any applicant asserts the benefit of the filing date of an application filed in a country not on this list, the examiner should contact the Office of External Affairs to determine if there has been any change in the status of that country. It should be noted that the right is based on the country of the foreign filing and not upon the citizenship of the applicant.
II. RIGHT OF PRIORITY BASED UPON AN INTERNATIONAL APPLICATION FILED UNDER THE PATENT COOPERATION TREATY
35 U.S.C. 365 Right of priority; benefit of the filing date of a prior application.
(a) In accordance with the conditions and requirements of subsections (a) through (d) of section 119, a national application shall be entitled to the right of priority based on a prior filed international application which designated at least one country other than the United States.
(b) In accordance with the conditions and requirements of section 119(a) and the treaty and the Regulations, an international application designating the United States shall be entitled to the right of priority based on a prior foreign application, or a prior international application designating at least one country other than the United States. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim for priority under the treaty and the Regulations, and to accept a priority claim that pertains to an application that was not filed within the priority period specified in the treaty and Regulations, but was filed within the additional 2-month period specified under section 119(a) or the treaty and Regulations.
*****
35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States. Of course, the conditions prescribed by 35 U.S.C. 119(a)-(d), which deals with the right of priority based on earlier filed foreign applications, must be complied with.
35 U.S.C. 365(b) provides that an international application designating the United States shall be
entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application. The international application upon which the claim of priority is based can either have been filed in the United States or a foreign country; however, it must contain the designation of at least one country other than, or in addition to, the United States.
As far as the actual place of filing is concerned, for the purpose of 35 U.S.C. 365(a) and (b) and 35 U.S.C. 119(a)-(d) and (f), an international application designating a country is considered to be a national application regularly filed in that country on the international filing date irrespective of whether it was physically filed in that country, in another country, or in an intergovernmental organization acting as Receiving Office for a country.
III. RIGHT OF PRIORITY BASED UPON AN INTERNATIONAL DESIGN APPLICATION
35 U.S.C. 386 Right of priority.
(a) NATIONAL APPLICATION.—In accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172, a national application shall be entitled to the right of priority based on a prior international design application that designated at least 1 country other than the United States.
(b) PRIOR FOREIGN APPLICATION.—In accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172 and the treaty and the Regulations, an international design application designating the United States shall be entitled to the right of priority based on a prior foreign application, a prior international application as defined in section 351(c) designating at least 1 country other than the United States, or a prior international design application designating at least 1 country other than the United States.
*****
Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States. Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations
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thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States. The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o) and MPEP §§ 213 et seq. and 1504.10.
See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.
IV. RIGHT OF PRIORITY (35 U.S.C. 119(a)-(d), 365(a)-(b), AND 386(a)-(b)) BASED ON A FOREIGN APPLICATION FILED UNDER A BILATERAL OR MULTILATERAL TREATY
Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries. Examples of such treaties pertaining to the protection of designs are The Hague Agreement Concerning the International Registration of Industrial Designs, the Benelux Designs Convention, and the Office for Harmonization in the Internal Market (OHIM) as created under European Union law. Treaties pertaining to utility and/or plant patents include The Convention on the Grant of European Patents (which established the European Patent Office), the Patent Cooperation Treaty, and the International Convention for the Protection of New Varieties of Plants (UPOV).
In addition to the list of recognized countries set forth in subsection I, above, applicants may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in foreign regional patent offices having member states who are contracting states under the Patent Cooperation Treaty (PCT). These include the African Regional Intellectual Property Organization (ARIPO), the Eurasian Patent Office (EAPO), the
European Patent Office (EPO), and the African Intellectual Property Organization (known under the acronym OAPI for its French name, Organisation Africaine de la Propriété Intellectuelle).
213.02 Formal Requirements Relating to Foreign Priority Application [R-07.2015]
I. IDENTIFICATION OF FOREIGNAPPLICATION
For original applications filed under 35 U.S.C. 111(a), the claim for foreign priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. For international applications entering the national stage as to the Unites States, see MPEP § 213.06. For international design applications designating the United States, see MPEP § 2920.05(d).
For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, the claim for priority must be presented in an application data sheet. See 37 CFR 1.55(d)(1). Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55. In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT. See 37 CFR 1.55(d)(2). Note that it is permissible, but not required, to present the claim for priority in an application data sheet in an international application entering the national stage under 35 U.S.C. 371. For international design applications designating the United States, the claim for priority must be presented in an application data sheet unless the priority claim was made in accordance with the Hague Agreement and the Hague Agreement Regulations. See 37 CFR 1.55(m).
For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority. For
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applications filed prior to September 16, 2012, the claim for priority must appear in the oath or declaration under 37 CFR 1.63 or in an application data sheet (37 CFR 1.76). See 37 CFR 1.55(n).
For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that was present on the filing date of the application is considered an incorporation by reference of the prior-filed foreign priority application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b). The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. See MPEP §§ 201.06(c) and 217. However, applicants are encouraged to provide an explicit incorporation by reference statement to the prior-filed foreign priority application(s) for which priority is claimed under 37 CFR 1.55 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 CFR 1.57(b). See 37 CFR 1.57(c). Thus, the incorporation by reference statement can be relied upon to permit the entering of a portion of the foreign priority application into the U.S. application when a portion of the foreign priority application has been inadvertently omitted from the U.S. application, or to permit the correction of translation error in the U.S. application where the foreign priority application is in a non-English language. See MPEP § 217 for additional information regarding 37 CFR 1.57(b), and MPEP § 608.01(p) for information regarding incorporation by reference statements. For information regarding 37 CFR 1.57(a) and filing by reference to a previously filed application, see MPEP § 601.01(a), subsection III.
II. THE SAME INVENTOR OR AT LEAST ONE COMMON JOINT INVENTOR
Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by his or her legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common. For example, a right of priority
does not exist in the case of an application of sole inventor A in the foreign country and sole inventor B in the United States, even though the two applications may be owned by the same party. The application in the foreign country may have been filed by the assignee, or by the legal representative or agent of the inventor, rather than by the inventor, but in such cases the name of the inventor is usually given in the foreign application on a paper filed therein. Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications. See MPEP § 602.09.
III. TRANSITION APPLICATION STATEMENT
If a nonprovisional application filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.55(k) and MPEP § 210, subsection III. Nonprovisional international design applications are excluded from the transition provision of 37 CFR 1.55(k), as such applications can only be filed on or after May 13, 2015.
213.03 Time for Filing U.S. Nonprovisional Application [R-07.2015]
The United States nonprovisional application must be filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, unless the right of priority has been restored, or the nonprovisional application must be entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of an application that was filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, unless the right of priority has been restored. See 37 CFR 1.55(c) and subsection III, below. This twelve-month period is subject to 35 U.S.C. 21(b) (and 37 CFR 1.7(a)) and PCT Rule
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80.5, and the six month period is subject to 35 U.S.C. 21(b), 37 CFR 1.7(a), and Hague Agreement Rule 4(4).
35 U.S.C. 21(b) and 37 CFR 1.7(a) provide that when the day, or the last day, for taking an action (e.g., filing a nonprovisional application within twelve months of the date on which the foreign application was filed) or paying a fee in the Office falls on Saturday, Sunday, or a federal holiday within the District of Columbia, the action may be taken, or fee paid, on the next succeeding secular or business day. PCT Rule 80.5 has similar provisions relating to the expiration of any period during which any document or fee in an international application must reach a national Office or intergovernmental organization. Hague Agreement Rule 4(4) provides that if the period expires on a day on which the International Bureau or the office concerned is not open to the public, the period shall expire on the first subsequent day on which the International Bureau or the office concerned is open to the public.
In computing this 12 months (or six months in the case of a design application), the first day is not counted; thus, if an application was filed in Canada on January 3, 1983, the U.S. nonprovisional application may be filed on January 3, 1984. The Paris Convention specifies in Article 4C(2) that “the day of filing is not counted in this period.” (This is the usual method of computing periods, for example a 6-month period for reply to an Office action dated January 2 does not expire on July 1, but the reply may be made on July 2.) If the last day of the 12 months is a Saturday, Sunday, or federal holiday within the District of Columbia, the U.S. non-provisional application is in time if filed on the next succeeding business day; thus, if the foreign application was filed on September 4, 1981, the U.S. nonprovisional application is in time if filed on September 7, 1982, since September 4, 1982, was a Saturday and September 5, 1982 was a Sunday and September 6, 1982 was a federal holiday. In view of 35 U.S.C. 21, and the Paris Convention which provides “if the last day of the period is an official holiday, or a day on which the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day” (Article 4C(3)), if the 12 months expires on Saturday, the
U.S. application may be filed on the following Monday. Note Ex parte Olah, 131 USPQ 41 (Bd. App. 1960). See, e.g., Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 1562, 227 USPQ 977, 977 (Fed. Cir. 1985).
I. FILING OF PAPERS DURING UNSCHEDULED CLOSINGS OF THE U.S. PATENT AND TRADEMARK OFFICE
37 CFR 1.9(h) provides that the definition of “Federal holiday within the District of Columbia” includes an official closing of the Office. When the entire U.S. Patent and Trademark Office is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a “Federal holiday within the District of Columbia” under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open. In addition, 37 CFR 1.6(a)(1) provides “[t]he U.S. Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia” to clarify that any day that is a Saturday, Sunday or federal holiday within the District of Columbia is a day that the U.S. Patent and Trademark Office is not open for the filing of applications within the meaning of Article 4C(3) of the Paris Convention. Note further that in accordance with 37 CFR 1.6(a)(2), even when the Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or federal holiday within the District of Columbia, correspondence deposited
as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 or filed via EFS-Web will be considered filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or federal holiday within the District of Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7).
When the U.S. Patent and Trademark Office is open for business during any part of a business day between 8:30 a.m. and 5:00 p.m., papers are due on that day even though the Office may be officially closed for some period of time during the business day because of an unscheduled event. The procedures of 37 CFR 1.10 may be used for filing applications. Information regarding whether or not the Office is officially closed on any particular day
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may be obtained by calling 1-800-PTO-9199 or (571) 272-1000.
II. FIRST FOREIGN APPLICATION
The 12 months is from earliest foreign filing except as provided in 35 U.S.C. 119(c). If an inventor has filed an application in France on October 4, 1981, and an identical application in the United Kingdom on March 3, 1982, and then files in the United States on February 2, 1983, the inventor is not entitled to the right of priority at all; the inventor would not be entitled to the benefit of the date of the French application since this application was filed more than twelve months before the U.S. application, and the inventor would not be entitled to the benefit of the date of the United Kingdom application since this application is not the first one filed. Ahrens v. Gray, 1931 C.D. 9, 402 O.G. 261 (Bd. App. 1929). If the first foreign application was filed in a country which is not recognized with respect to the right of priority, it is disregarded for this purpose. 35 U.S.C. 119(c) extends the right of priority to “subsequent” foreign applications if one earlier filed had been withdrawn, abandoned, or otherwise disposed of, under certain conditions.
The United Kingdom and a few other countries have a system of “post-dating” whereby the filing date of an application is changed to a later date. This “post-dating” of the filing date of the application does not affect the status of the application with respect to the right of priority; if the original filing date is more than one year prior to the U.S. filing no right of priority can be based upon the application. See In re Clamp, 151 USPQ 423 (Comm’r Pat. 1966).
If an applicant has filed two foreign applications in recognized countries, one outside the year and one within the year, and the later application discloses additional subject matter, a claim in the U.S. application specifically limited to the additional disclosure would be entitled to the date of the second foreign application since this would be the first foreign application for that subject matter.
III. RESTORING THE RIGHT OF PRIORITY
Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right of priority under 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) or (b). As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional. Thus, an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a)35 U.S.C. 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application). As a result of title I of the PLTIA, 37 CFR 1.55(c) was amended effective May 13, 2015, to provide that restoration of the right of priority is available for priority claims under 35 U.S.C. 386(a) or (b). In addition, 37 CFR 1.55(c) was amended to provide that a petition to restore the right of priority filed on or after May 13, 2015, must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application.
A petition under 37 CFR 1.55(c) requires:
(A) the priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted in an application data sheet);
(B) the petition fee as set forth in 37 CFR 1.17(m); and
(C) a statement that the delay in filing the subsequent application within the twelve-month period (or six-month period in the case of a design
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application) set forth in 37 CFR 1.55(b) was unintentional.
The Director may require additional information where there is a question whether the delay was unintentional.
Where the subsequent application is not a nonprovisional application, the Office may not have an application file established for the subsequent application. This would occur, for example, where an international application designating the United States was filed in a foreign Receiving Office and the applicant filed a continuation of an international application under 35 U.S.C. 111(a) rather than entering the national stage under 35 U.S.C. 371. Thus, in this situation, the petition under 37 CFR 1.55(c) may be filed in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application. However, the statement required under 37 CFR 1.55(c)(3) must still relate to the unintentional delay in filing the subsequent application, i.e., the international application.
If a petition under 37 CFR 1.55(c) to restore the right of priority is granted, a further petition under 37 CFR 1.55(c) is not required in an application entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of the subsequent application for which the right of priority was restored.
It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date. Thus, the application may still be subject to a rejection under pre-AIA 35 U.S.C. 102(b) or (d)
despite the priority claim. See MPEP §§ 2133 and 2135 et seq.
213.04 Requirement to File Priority Claim and Certified Copy During Pendency of Application [R-07.2015]
37 CFR 1.55 Claim for foreign priority. *****
(g) Requirement for filing priority claim, certified copy of foreign application, and translation in any application.
(1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.
(2) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in this section:
(i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
(ii) When necessary to overcome the date of a reference relied upon by the examiner; or
(iii) When deemed necessary by the examiner.
(3) An English language translation of a non-English language foreign application is not required except:
(i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
(ii) When necessary to overcome the date of a reference relied upon by the examiner; or
(iii) When specifically required by the examiner.
(4) If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.
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37 CFR 1.55(g) sets forth the requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications. 37 CFR 1.55(g)(1) specifies that the claim for priority and the certified copy of the foreign
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application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e) or (f), or with a petition accompanied by the fee set forth in 37 CFR 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. These provisions do not in any way supersede the timing requirements elsewhere in 37 CFR 1.55 for filing a claim for priority and the certified copy of the foreign application. 37 CFR 1.55(g)(1) simply indicates that the claim for priority and the certified copy of the foreign application must be filed in or received by the Office within the pendency of the application in all situations, unless an appropriate petition is filed.
If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
In the following situations, the Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in 37 CFR 1.55 (see 37 CFR 1.55(g)(2)), or that an English translation of a non-English language foreign application be filed (see 37 CFR 1.55(g)(3)):
(1) When the application is involved in an interference (see 37 CFR 41.202) or derivation (see 37 CFR part 42) proceeding;
(2) When necessary to overcome the date of a reference relied upon by the examiner; or
(3) When deemed necessary by the examiner.
If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.
213.05 Right of Priority Based Upon an Application for an Inventor’s Certificate [R-07.2015]
35 U.S.C. 119 Benefit of earlier filing date; right of priority.
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(d) Applications for inventors’certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of such filing.
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37 CFR 1.55 Claim for foreign priority. *****
(l) Inventor's certificates. An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor’s certificate in a country granting both inventor’s certificates and patents. To claim the right of priority on the basis of an application for an inventor’s certificate in such a country under 35 U.S.C. 119(d), the applicant when submitting a claim for such right as specified in this section, must include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor’s certificate, had the option to file an application for either a patent or an inventor’s certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority.
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37 CFR 1.55(l) contains the provisions relating to claiming priority to inventor's certificates. An inventor’s certificate may form the basis for rights of priority under 35 U.S.C. 119(d) only when the country in which it is filed gives to applicants, at their discretion, the right to apply, on the same invention, either for a patent or for an inventor’s certificate. The affidavit or declaration specified under 37 CFR 1.55(l) is only required for the purpose of ascertaining whether, in the country where the application for an inventor’s certificate originated, this option generally existed for applicants with respect to the particular subject matter of the invention involved. The requirements of 35 U.S.C. 119(d) and 37 CFR 1.55(l) are not intended, however, to probe into the eligibility of the particular applicant to exercise the option in the particular priority application involved.
It is recognized that certain countries that grant inventors’ certificates also provide by law that their own nationals who are employed in state enterprises may only receive inventors’ certificates and not
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patents on inventions made in connection with their employment. This will not impair their right to be granted priority in the United States based on the filing of the inventor’s certificate.
Accordingly, affidavits or declarations filed pursuant to 37 CFR 1.55(l) need only show that in the country in which the original inventor’s certificate was filed, applicants generally have the right to apply at their own option either for a patent or an inventor’s certificate as to the particular subject matter of the invention. Priority rights on the basis of an inventor’s certificate application will be honored only if the applicant had the option or discretion to file for either an inventor’s certificate or a patent on his or her invention in his or her home country. Certain countries which grant both patents and inventor’s certificates issue only inventor’s certificates on certain subject matter, generally pharmaceuticals, foodstuffs, and cosmetics.
To ensure compliance with the treaty and statute, 37 CFR 1.55(l) provides that at the time of claiming priority to an inventor’s certificate, the applicant or his or her attorney must submit an affidavit or declaration stating that the applicant when filing his or her application for the inventor’s certificate had the option either to file for a patent or an inventor’s certificate as to the subject matter forming the basis for the claim of priority.
213.06 Claiming Priority and Filing a Certified Copy in a National Stage Application (35 U.S.C. 371) [R-07.2015]
37 CFR 1.55 Claim for foreign priority. *****
(d) Time for filing priority claim—
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(2) Application under 35 U.S.C. 371. The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.
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(f) Time for filing certified copy of foreign application—
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(2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set
forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371. If a certified copy of the foreign application is not filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
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PCT Rule 4
The Request (Contents)
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4.10 Priority Claim
(a) Any declaration referred to in Article 8(1) (“priority claim”) may claim the priority of one or more earlier applications filed either in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for any Member of the World Trade Organization that is not party to that Convention. Any priority claim shall be made in the request; it shall consist of a statement to the effect that the priority of an earlier application is claimed and shall indicate:
(i) the date on which the earlier application was filed;
(ii) the number of the earlier application;
(iii) where the earlier application is a national application, the country party to the Paris Convention for the Protection of Industrial Property or the Member of the World Trade Organization that is not party to that Convention in which it was filed;
(iv) where the earlier application is a regional application, the authority entrusted with the granting of regional patents under the applicable regional patent treaty;
(v) where the earlier application is an international application, the receiving Office with which it was filed.
(b) In addition to any indication required under paragraph (a)(iv) or (v):
(i) where the earlier application is a regional application or an international application, the priority claim may indicate one or more countries party to the Paris Convention for the Protection of Industrial Property for which that earlier application was filed;
(ii) where the earlier application is a regional application and at least one of the countries party to the regional patent treaty is neither party to the Paris Convention for the Protection of Industrial Property nor a Member of the World Trade Organization, the priority claim shall indicate at least one country party to that Convention or one Member of the Organization for which that earlier application was filed.
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(c) For the purposes of paragraphs (a) and (b), Article 2(vi) shall not apply.
(d) If, on September 29, 1999, paragraphs (a) and (b) as amended with effect from January 1, 2000, are not compatible with the national law applied by a designated Office, those paragraphs as in force until December 31, 1999, shall continue to apply after that date in respect of that designated Office for as long as the said paragraphs as amended continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by October 31, 1999. The information received shall be promptly published by the International Bureau in the Gazette.
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PCT Rule 17
The Priority Document
17.1. Obligation to Submit Copy of Earlier National or International Application
(a) Where the priority of an earlier national or international application is claimed under Article 8, a copy of that earlier application, certified by the authority with which it was filed (“the priority document”), shall, unless that priority document has already been filed with the receiving Office together with the international application in which the priority claim is made, and subject to paragraphs (b) and (b -bis), be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date, provided that any copy of the said earlier application which is received by the International Bureau after the expiration of that time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the date of international publication of the international application.
(b) Where the priority document is issued by the receiving Office, the applicant may, instead of submitting the priority document, request the receiving Office to prepare and transmit the priority document to the International Bureau. Such request shall be made not later than 16 months after the priority date and may be subjected by the receiving Office to the payment of a fee.
(b -bis) Where the priority document is, in accordance with the Administrative Instructions, made available to the International Bureau from a digital library prior to the date of international publication of the international application, the applicant may, instead of submitting the priority document, request the International Bureau, prior to the date of international publication, to obtain the priority document from such digital library.
(c) If the requirements of none of the three preceding paragraphs are complied with, any designated Office may, subject to paragraph (d), disregard the priority claim, provided that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable under the circumstances.
(d) No designated Office shall disregard the priority claim under paragraph (c) if the earlier application referred to in paragraph (a) was filed with it in its capacity as national Office
or if the priority document is, in accordance with the Administrative Instructions, available to it from a digital library.
17.2. Availability of Copies
(a) Where the applicant has complied with Rule 17.1(a), (b) or (b -bis), the International Bureau shall, at the specific request of the designated Office, promptly but not prior to the international publication of the international application, furnish a copy of the priority document to that Office. No such Office shall ask the applicant himself to furnish it with a copy. The applicant shall not be required to furnish a translation to the designated Office before the expiration of the applicable time limit under Article 22. Where the applicant makes an express request to the designated Office under Article 23(2) prior to the international publication of the international application, the International Bureau shall, at the specific request of the designated Office, furnish a copy of the priority document to that Office promptly after receiving it.
(b) The International Bureau shall not make copies of the priority document available to the public prior to the international publication of the international application.
(c) Where the international application has been published under Article 21, the International Bureau shall furnish a copy of the priority document to any person upon request and subject to reimbursement of the cost unless, prior to that publication:
(i) the international application was withdrawn,
(ii) the relevant priority claim was withdrawn or considered, under Rule 26 bis.2(b), not to have been made.
37 CFR 1.451 The priority claim and priority document in an international application.
(a) The claim for priority must, subject to paragraph (d) of this section, be made on the Request (PCT Rule 4.10) in a manner complying with sections 110 and 115 of the Administrative Instructions.
(b) Whenever the priority of an earlier United States national application or international application filed with the United States Receiving Office is claimed in an international application, the applicant may request in a letter of transmittal accompanying the international application upon filing with the United States Receiving Office or in a separate letter filed in the United States Receiving Office not later than 16 months after the priority date, that the United States Patent and Trademark Office prepare a certified copy of the prior application for transmittal to the International Bureau (PCT Article 8 and PCT Rule 17). The fee for preparing a certified copy is set forth in § 1.19(b)(1).
(c) If a certified copy of the priority document is not submitted together with the international application on filing, or, if the priority application was filed in the United States and a request and appropriate payment for preparation of such a certified copy do not accompany the international application on filing or are not filed within 16 months of the priority date, the certified copy of the priority document must be furnished by the applicant to the International Bureau or to the United
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States Receiving Office within the time limit specified in PCT Rule 17.1(a).
(d) The applicant may correct or add a priority claim in accordance with PCT Rule 26 bis.1.
37 CFR 1.55(d)(2) and (f)(2) pertain to the time for filing a priority claim and the time for filing a certified copy of a foreign application in an international application entering the national stage under 35 U.S.C. 371.
In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT with limited exceptions. See MPEP §§ 214.02 and 215.02. Note that it is permissible, but not required, to present the claim for priority in an application data sheet in an international application entering the national stage under 35 U.S.C. 371.
An international application which seeks to establish the right of priority must comply with the conditions and requirements as prescribed by the Treaty and the PCT Regulations, in order to avoid rejection of the claim to the right of priority. Reference is especially made to the requirement of making a declaration of the claim of priority at the time of filing of the international application (Article 8(1) of the Treaty and Rule 4.10 of the PCT Regulations) or correcting or adding a priority claim (PCT Rule 26 bis.1) and the requirement of either filing a certified copy of the priority document with the international application, or submitting a certified copy of the priority document to the International Bureau at a certain time (Rule 17 of the PCT Regulations). The submission of the priority document to the International Bureau is only required in those instances where priority is based on an earlier filed foreign national application. With respect to the requirements of 37 CFR 1.55 as they pertain to applications entering the national stage under 35 U.S.C. 371, if the applicant submitted a certified copy of the foreign priority document in compliance with PCT Rule 17 during the international phase, the International Bureau will forward a copy of the certified priority document to each Designated Office that has requested a copy of the foreign priority document and the copy received from the International Bureau is acceptable to
establish that applicant has filed a certified copy of the priority document. See MPEP § 1893.03(c). If, however, the International Bureau is unable to forward a copy of the certified priority document because the applicant failed to submit a certified copy of the foreign priority document during the international phase, the applicant will need to provide a certified copy of the priority document or have the Office retrieve the priority application in accordance with the priority document exchange program during the national stage to fulfill the requirements of 37 CFR 1.55.
If the priority document is an earlier national application and did not accompany the international application when filed with the Receiving Office, an applicant must submit such document to the International Bureau not later than 16 months after the priority date. However, should an applicant request early processing of his or her international application in accordance with Article 23(2) of the Treaty, the priority document may not be available to the Office at that time (Rule 17.2(a) of the PCT Regulations). Applicants are encouraged to check the Patent Application Information Retrieval (PAIR) system to verify that the certified copy has been received from the International Bureau. The formal requirements for obtaining the right of priority under 35 U.S.C. 365 differ somewhat from those imposed by 35 U.S.C. 119(a)-(d) and (f), however, the substantive right of priority is the same, in that it is derived from Article 4 of the Paris Convention for the Protection of Industrial Property (Article 8(2) of the Treaty).
35 U.S.C. 365(c) recognizes the benefit of the filing date of an earlier application under 35 U.S.C. 120. Any international application designating the United States, whether filed with a Receiving Office in this country or abroad, and even though other countries may have also been designated, has the effect of a regular national application in the United States, as of the international filing date. As such, any later filed national application, or international application designating the United States, may claim the benefit of the filing date of an earlier international application designating the United States, if the requirements and conditions of 35 U.S.C. 120 are fulfilled. Under the same circumstances, the benefit of the earlier filing date of a national application
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may be obtained in a later filed international application designating the United States. See MPEP § 211.01(c).
In those instances, where the applicant relies on an international application designating, but not originating in, the United States the Director may require submission of a copy of such application together with an English translation, since in some instances, and for various reasons, a copy of that international application or its translation might not otherwise be filed in the U.S. Patent and Trademark Office.
213.07 Claiming Priority and Filing a Certified Copy in a Nonprovisional International Design Application [R-07.2015]
37 CFR 1.55 Claim for foreign priority. *****
(m) Time for filing priority claim and certified copy of foreign application in an international design application designating the United States. In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations. In a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.
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(o) Priority under 35 U.S.C. 386(a) or (b). The right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
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Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States. Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application
designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States. The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o).
See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.
214 Formal Requirements of Claim for Foreign Priority [R-07.2015]
Under the statute (35 U.S.C. 119(b)), an applicant who wishes to secure the right of priority must comply with certain formal requirements within a time specified. If these requirements are not complied with the right of priority is lost and cannot thereafter be asserted.
The maximum time limit specified in the statute is that the claim for priority and the priority papers must be filed before the patent is granted, but the statute gives the Director authority to set this time limit at an earlier time during the pendency of the application. As a result of implementation of Public Law 112-211, 126 Stat. 1527 (titles I and title II of the Patent Law Treaties Implementation Act (PLTIA)), the procedural requirements relating to claims for priority to an earlier-filed foreign application and to the submission of a certified copy of the priority document were revised. The procedural requirements and the time relating to claims for priority of an earlier filed foreign application are set forth in 37 CFR 1.55. See MPEP § 214.01 for procedural requirements pertaining to filing a claim for priority. See MPEP §§ 215.02-215.03 for timing requirements for submitting a certified copy of the priority application. See MPEP § 213.06 for claiming foreign priority and filing a certified copy of the priority
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document in a national stage application and MPEP § 213.07 for claiming foreign priority and filing a certified copy of the priority document in a nonprovisional international design application.
Where a claim for priority under 35 U.S.C. 119(b) has not been made in a parent application, the claim for priority may be made in a continuing application provided the parent application has been filed within 12 months from the date of the earliest foreign filing (6 months for design applications). See In re Tangsrud, 184 USPQ 746 (Comm’r Pat. 1973). Where the requirements for perfecting priority under 35 U.S.C. 119(a)-(d) or (f) have not been met before the issuance of patent, see 37 CFR 1.55(g) and MPEP § 216.01 for an explanation of when the deficiencies are correctable by a certificate of correction or reissue.
It should be particularly noted that the certified copy must be filed in all cases even though it may not be necessary during the pendency of the application to overcome the date of any reference. The statute also gives the Director authority to require a translation of the foreign documents if not in the English language and such other information as the Director may deem necessary. See MPEP § 213.04 for additional information.
214.01 Time for Filing Priority Claim [R-07.2015]
37 CFR 1.55 Claim for foreign priority. *****
(d) Time for filing priority claim—
(1) Application under 35 U.S.C. 111(a). The claim for priority must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application in an original application filed under 35 U.S.C. 111(a), except as provided in paragraph (e) of this section. The claim for priority must be presented in an application data sheet (§ 1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.
(2) Application under 35 U.S.C. 371. The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.
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37 CFR 1.55(d)(1) sets forth the time periods for filing a priority claim in an application filed under 35 U.S.C. 111(a). See 37 CFR 1.55(d)(2) and MPEP § 213.06 for the time period for claiming priority in an application entering the national stage. The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.
For original applications filed under 35 U.S.C. 111(a), the requirements of the statute are that the applicant must (a) file a claim for the right of priority and (b) identify the original foreign application by specifying the application number of the foreign application, the intellectual property authority or country in which the application was filed and the date of filing of the application. 35 U.S.C. 119(b)(1) specifies that the claim for priority and the required identification information must be filed at such time during the pendency of the application as set by the Director. For applications other than design applications, the Director has by rule set this time period as the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1). This time period is not extendable. In an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06. In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g). See also MPEP §§ 1504.10 and 2920.05(d) for additional information pertaining to priority claims in design applications.
Claims for foreign priority not presented within the time period specified in 37 CFR 1.55 are considered to have been waived. If a claim for priority under 35 U.S.C. 119(a) - (d) or (f), 365(a) or (b), or386(a)
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or (b) is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it includes the required identification information and is accompanied by a grantable petition to accept the unintentionally delayed claim for priority. See MPEP § 214.02 for the treatment of unintentionally delayed priority claims.
For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet. For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing. See 37 CFR 1.55(n).
214.02 Unintentionally Delayed Priority Claims [R-07.2015]
37 CFR 1.55 Claim for foreign priority. *****
(e) Delayed priority claim. Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) not presented in the manner required by paragraph (d) or (m) of this section during pendency and within the time period provided by paragraph (d) of this section (if applicable) is considered to have been waived. If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) must be accompanied by:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
(2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies;
(3) The petition fee as set forth in § 1.17(m); and
(4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional. The Director may
require additional information where there is a question whether the delay was unintentional.
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Where a priority claim under 37 CFR 1.55(g) was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application). Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant. See MPEP § 216.01.
If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if the priority claim was unintentionally delayed. In all applications, a grantable petition to accept an unintentionally delayed claim for priority must include: (1) the claim (i.e., the claim required by 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) and 37 CFR 1.55) for priority to the prior foreign application, unless previously submitted; (2) a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) applies; (3) the petition fee set forth in 37 CFR 1.17(m); and (4) a statement that the entire delay between the date the claim was due and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
37 CFR 1.55(e)(2) requires that a petition to accept a delayed claim for priority be accompanied by a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) applies. 37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application (see also MPEP § 215, subsection III); 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement (see also MPEP §§ 215.01 and 215.02(a)); and 37 CFR 1.55(j) contains provisions relating to the filing of an interim copy of a foreign application (see also MPEP § 215.02(b)).
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Priority claims and certified copies of foreign applications filed after payment of the issue fee and before the patent grant will be placed in the application file but will not be reviewed.
Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant in utility, plant, and design applications. See MPEP § 216.01.
214.03 Office Acknowledgement of Priority Claims [R-07.2015]
I. UNTIMELY CLAIM FOR PRIORITY
If the foreign priority claim in an original application filed under 35 U.S.C. 111(a) (other than a design application) is submitted after the time period set in 37 CFR 1.55 and without a petition under 37 CFR 1.55, the examiner may use form paragraph 2.21.01 to notify applicant that the foreign priority claim will not be entered
¶ 2.21.01 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) Foreign Priority Claim is Untimely
The foreign priority claim filed on [1] was not entered because the foreign priority claim was not filed during the time period set forth in 37 CFR 1.55. For original applications filed under 35 U.S.C. 111(a) (other than a design application) on or after November 29, 2000, the time period is during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. In addition, if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet. See 37 CFR 1.55(d)(1). For national stage applications under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT. See 37 CFR 1.55(d)(2). If applicant desires priority under 35 U.S.C. 119(a)-(d), (f), 365(a) or (b), or 386(a) based upon a prior foreign application, applicant must file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e). The petition must be accompanied by (1) the priority claim under 35 U.S.C. 119(a)-(d), (f), 365(a) or (b), or 386(a) in accordance with 37 CFR 1.55 identifying the prior foreign
application to which priority is claimed, unless previously submitted; (2) a certified copy of the foreign application, unless previously submitted or an exception under 37 CFR 1.55 applies; (3) the petition fee under 37 CFR 1.17(m); and (4) a statement that the entire delay between the date the claim was due under 37 CFR 1.55 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Examiner Note:
1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
2. In bracket 1, insert the date the amendment or paper containing the foreign priority claim was filed.
II. NO IRREGULARITIESAND PRIORITY CLAIM TIMELY
When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.
¶ 2.26 Claimed Foreign Priority - Certified Copy Filed
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Where the foreign priority papers have been filed in a parent application, use form paragraph 2.27.
¶ 2.27 Acknowledge Certified Copy of Foreign Priority Paper in Parent
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119(a) -(d). The certified copy has been filed in parent Application No. [1], filed on [2].
Examiner Note:
1. For problems with foreign priority, see form paragraphs 2.18 to 2.24.
2. In bracket 1, insert series code and serial no. of parent.
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III. FOREIGNAPPLICATION FILED MORE THAN A YEAR BEFORE EARLIEST EFFECTIVE U.S. FILING
Where the earlier foreign application was filed more than 12 months prior to the U.S. application and priority has not been restored under PCT Rule 26bis.3 for an international application or upon a granted petition under 37 CFR 1.55(c), use form paragraph 2.23.
¶ 2.23 Foreign Filing More Than 12 Months Earlier, No Petition to Restore Priority Granted
Acknowledgment is made of applicant's claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) based upon an application filed in [1] on [2]. The claim for priority cannot be based on said application, because the subsequent nonprovisional or international application designating the United States was filed more than twelve months thereafter and no petition under 37 CFR 1.55 or request under PCT Rule 26 bis.3 to restore the right of priority has been granted.
Applicant may wish to file a petition under 37 CFR 1.55(c) to restore the right of priority if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional. A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional. The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Examiner Note:
1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
2. In bracket 1, insert the country name.
3. In bracket 2, insert the filing date of the foreign application.
IV. SOME FOREIGN APPLICATIONS FILED MORE THAN A YEAR BEFORE U.S. FILING
For example, where a British provisional specification was filed more than a year before a U.S. application, but the British complete application was filed within the year, and certified copies of both were submitted, language similar to the following should be used: “Receipt is acknowledged of papers filed on September 18, 1979, purporting to comply with the requirements of 35 U.S.C. 119(a)-(d). It is not seen how the claim for priority can be based on the British specification filed January 23, 1978, because the instant application was filed more than one year thereafter. However, the printed heading of the patent will note the claimed priority date based on the complete specification; i.e., November 1, 1978, for such subject matter as was not disclosed in the provisional specification.”
V. APPLICATION IN ISSUE
When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there will be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the foreign priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C. 111(a) or international applications entering the national stage under 35 U.S.C. 371, a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55 must be filed with the certificate of correction. See MPEP § 216.01.
214.04 Proper Identification of Priority Application in Foreign Priority Claim [R-07.2015]
To ensure an accurate and complete citation of a foreign priority application, applicants should review the list of the various intellectual property offices and the recommended presentation of a foreign application number for each, which can be found in the tables of the online WIPO Handbook on
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Industrial Property Information and Documentation (www.wipo.int/standards/en/), Part 7: Examples and Industrial Property Offices Practices (www.wipo.int/standards/en/part_07.html), including Part 7.2.1: Presentation of Application N u m b e r s (www.wipo.int/standards/en/pdf/07-02-01.pdf).The tables should enable applicants, examiners and others to extract from the various formats the minimum required data which comprises a proper citation. The “Minimum Significant Part of the Number” identified in the tables should be used in United States Patent and Trademark Office records. Proper identification of priority applications is essential to
establishing accurate and complete relationships among various patent documents, especially in the context of electronic priority document exchange programs (see MPEP § 215.01).
The tables set forth below include only a partial list of recommended presentations of foreign application numbers. A complete updated list of the recommended presentation of a foreign application number based on the numbering system used by the foreign intellectual property office is maintained by the WIPO and can be found in the online WIPO Handbook on Industrial Property Information and Documentation as explained above.
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215 Certified Copy of Foreign Application [R-07.2015]
I. REQUIREMENT FOR CERTIFIED COPY
35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of the foreign priority application, and the Office requires such a copy pursuant to 37 CFR 1.55. The filing of the foreign priority papers under 35 U.S.C. 119(a)-(d) makes the record of the file of the United States patent complete. The U.S. Patent and Trademark Office does not normally examine the papers to determine whether the applicant is in fact entitled to the right of priority and does not grant or refuse the right of priority, except when the application is involved in an interference or derivation proceeding, when necessary to overcome the date of a reference relied upon by the examiner, or when deemed necessary by the examiner. See MPEP § 216. When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner should review the certified copy to see that it contains no obvious formal defects and that it corresponds in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.
II. MEANING OF “CERTIFIED COPY”
The certified copy which must be filed is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information. Certified copies include those retrieved by the Office in accordance with a priority document exchange program. See MPEP § 215.01. “Application” in this connection is not considered to include formal papers such as a petition. A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.
III. CERTIFIED COPY FILED IN PARENT OR RELATED APPLICATION
37 CFR 1.55 Claim for foreign priority. *****
(h) Certified copy in another U.S. patent or application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will be considered satisfied in a reissue application if the patent for which reissue is sought satisfies the requirement of this section for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will also be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
*****
Where the benefit of a foreign filing date based on a foreign application is claimed in a later filed application (i.e., continuation, continuation-in-part, division) or in a reissue application, and a certified copy of the foreign application has been filed in a parent or related application, it is not necessary to file an additional certified copy in the later application. See 37 CFR 1.55(h). A reminder of this provision is found in form paragraph 2.20. The applicant when making such claim for priority may simply identify the application containing the certified copy. In such cases, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707.
If the applicant fails to call attention to the fact that the certified copy is in the parent or related application and the examiner is aware of the fact that a claim for priority under 35 U.S.C. 119(a)-(d) or (f) was made in the parent application, the examiner should call applicant’s attention to these facts in an Office action, so that if a patent issues on the later or reissue application, the priority data will appear in the patent. In such cases, the language of form paragraph 2.20 should be used.
¶ 2.20 Certified Copies of Priority Papers in Parent or Related (Reissue Situation) - Application
Applicant is reminded that in order for a patent issuing on the instant application to obtain priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b), based on priority papers
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filed in a parent or related Application No. [1] (to which the present application claims the benefit under 35 U.S.C. 120, 121, 365(c)), or 386(c) or is a reissue application of a patent issued on the related application), a claim for such foreign priority must be timely made in this application. To satisfy the requirement of 37 CFR 1.55 for a certified copy of the foreign application, applicant may simply identify the parent nonprovisional application or patent for which reissue is sought containing the certified copy.
Where the benefit of a foreign filing date, based on a foreign application, is claimed in a later filed application or in a reissue application and a certified copy of the foreign application, as filed, has not been filed in a parent or related application, a claim for priority may be made in the later application. In re Tangsrud, 184 USPQ 746 (Comm’r Pat. 1973). When such a claim is made in the later application and a certified copy of the foreign application is placed therein, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707.
IV. FOREIGN PRIORITY DOCUMENT INCONSISTENT WITH A TIMELY FOREIGN PRIORITY CLAIM OR NO CLAIM FOR FOREIGN PRIORITY
For applications filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet. For applications filed prior to September 16, 2012, any foreign priority claim must be identified in either the oath or declaration or in an application data sheet. Where applicant has filed a certified copy that does not correspond to the foreign application identified in the foreign priority claim by its application number, country (or intellectual property authority), day month, and year of its filing, the applicant should be notified by using form paragraph 2.22. Applicant must submit an application data sheet in compliance with 37 CFR 1.76(c), (or, for applications filed prior to September 16, 2012, a supplemental application data sheet or a new oath or declaration) that correctly sets forth the priority claim. See MPEP §§ 601.05(a) and (b). If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55, the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition under 37 CFR 1.53(e) to accept an unintentionally delayed claim for priority.
Where applicant has filed a certified copy of a foreign application but has not made a claim for foreign priority, applicant should be notified using form paragraph 2.22.
¶ 2.22 Certified Copy Filed, But Proper Claim Not Made
Receipt is acknowledged of a certified copy of foreign application [1], however the present application does not properly claim priority to the submitted foreign application. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a), applicant must also file a claim for such priority as required by 35 U.S.C. 119(b) or 365(b), and 37 CFR 1.55. If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.
If the application being examined is an original application filed under 35 U.S.C. 111(a) (other than a design application), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1). If the application being examined is a national stage application under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2). Any claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) not presented within the time period set forth in 37 CFR 1.55 is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55, the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority.
Examiner Note:
1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
2. In bracket 1, insert the application number of the foreign application.
NOTE: Where the applicant’s accompanying letter states that the certified copy is filed for priority purposes or for the convention date, it is accepted as a claim for priority, but such claim is not in compliance with the requirements of 37 CFR 1.55 and either 37 CFR 1.76 or pre-AIA 37 CFR 1.63.
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V. APPLICATION IN ISSUE
When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there will be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the foreign priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C. 111(a) or international applications entering the national stage under 35 U.S.C. 371, a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55 must be filed with the certificate of correction. See MPEP § 216.01.
VI. NO CERTIFIED COPY
Where priority is claimed but no certified copy of the foreign application has been filed, use form paragraph 2.25.
¶ 2.25 Claimed Foreign Priority, No Papers Certified Copy Filed
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in [1] on [2]. It is noted, however, that applicant has not filed a certified copy of the [3] application as required by 37 CFR 1.55.
Examiner Note:
1. In bracket 1, insert the country name.
2. In bracket 2, insert the filing date of the foreign application.
3. In bracket 3, insert the application number of the foreign application.
Any unusual situation may be referred to the Technology Center (TC) Director.
VII. RETURN OF CERTIFIED COPY
Certified copies that have been entered into the application file will not be returned to applicant.
215.01 Electronic Priority Document Exchange [R-07.2015]
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices. The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office. A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired. A separate written request is required in the situation where the foreign application is not originally filed in a participating office, but a certified copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office. Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.
An improper, incomplete, or inconsistent citation of a foreign priority application and/or its filing date will result in a delay or prevent retrieval under the Priority Document Exchange program. In particular, any foreign priority claim that is incomplete will prevent successful electronic retrieval of the priority application. Applicants are strongly encouraged to cite the foreign application using an acceptable format (see MPEP § 214.04) and use proper and consistent citation format throughout the U.S. application.
In general, an attempt to retrieve an eligible foreign application to which priority is claimed in a U.S. application will be made by the USPTO at approximately 19 months from the filing date of that foreign application. However, an electronic retrieval attempt by the USPTO will be initiated earlier than
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19 months in the following situations: applications granted accelerated examination status; applications in which a petition has been granted under the Patent Prosecution Highway program; and, when an Office action by the examiner is mailed prior to 19 months from the foreign priority date. In any case the USPTO will not attempt electronic retrieval until the Office of Patent Application Processing has completed its review of the application. Applicants are encouraged to check the Patent Application and Information Retrieval (PAIR) to determine whether the foreign priority application has been successfully retrieved. A successful request to retrieve an electronic foreign priority application takes approximately 1 week to complete.
The Office will not send a notice setting a time period for filing a certified copy of the priority document. Upon receipt of a Notice of Allowance, applicants should check to see whether the Office has received a copy of the foreign application under the priority document exchange program because successful retrieval of priority documents cannot be guaranteed. To be entitled to priority, the Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or receive a paper certified copy of the foreign application during that time period. If a certified copy of the foreign application is filed after the date the issue fee is paid, it must be accompanied by the processing fee set forth in 37 CFR 1.17(i), but the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. See MPEP § 215.02(a) for information pertaining to meeting the timeliness requirement for filing a certified copy by using PDX.
The Office website provides additional information concerning the priority document exchange program (www.uspto.gov/patents-getting-started/international- protection/electronic-priority-document-exchange-pdx). This information includes the intellectual property offices that participate in the priority document exchange program, as well as the information necessary for each participating foreign intellectual property office to provide the Office with access to the foreign application.
APPLICATIONS THAT ARE NOT PDX ELIGIBLE
The Office cannot obtain a copy of a design application to which priority is claimed, or a foreign application to which priority is claimed in a design application, through the priority document exchange program. In addition, note that the Office can obtain a PCT application to which priority is claimed through the priority document exchange program for PCT applications filed in a limited number of PCT Receiving Offices (currently, RO/DK (Denmark), RO/FI (Finland), RO/IB (International Bureau), and RO/SE (Sweden)).
215.02 Time For Filing Certified Copy – Application Filed On orAfter March 16, 2013 [R-07.2015]
[Editor Note: See MPEP § 215.03 for information regarding the time for filing a certified copy in an application filed before March 16, 2013.]
37 CFR 1.55 Claim for foreign priority *****
(f) Time for filing certified copy of foreign application—
(1) Application under 35 U.S.C. 111(a). A certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application, or sixteen months from the filing date of the prior foreign application, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section. The time period in this paragraph does not apply in a design application.
(2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371. If a certified copy of the foreign application is not filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
(3) If a certified copy of the foreign application is not filed within the time period specified [in] paragraph (f)(1) of this section in an application under 35 U.S.C. 111(a) or within the period specified in paragraph (f)(2) of this section in an international application entering the national stage under 35 U.S.C. 371, and an exception in paragraph (h), (i), or (j) of this section is not applicable, the certified copy of the foreign
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application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).
*****
For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets forth the time period for filing a certified copy of the foreign application. The time period in 37 CFR 1.55(f)(1) does not apply in design applications. 37 CFR 1.55(f)(1) requires that a certified copy of the foreign application be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application with three exceptions. For international applications entering the national stage under 35 U.S.C. 371, 37 CFR 1.55(f)(2) sets forth the time period for filing a certified copy of the foreign application. 37 CFR 1.55(f)(2) requires a certified copy of the foreign application be filed within the time limit set forth in the PCT and the Regulations under the PCT, and if a certified copy is not filed during international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, of sixteen months from the filing date of the prior foreign application with three exceptions. As provided in 37 CFR 1.55(h), (i), or (j), the time period requirement in 37 CFR 1.55(f)(1)or (f)(2) does not apply if:
(1) a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c) or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application, or in the case of a reissue application, if the patent for which reissue is sought satisfies the requirement for a certified copy and such patent is identified as containing the certified copy (see 37 CFR 1.55(h) and MPEP § 215, subsection III);
(2) the priority application was filed in a participating foreign intellectual property office, or if a copy of the foreign application was filed in an
application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy, and the Office either receives a copy of the foreign application from the participating foreign intellectual property office or a certified copy of the foreign application during the pendency of the application and before the patent is granted (see 37 CFR 1.55(i) and MPEP § 215.02(a)); or
(3) the applicant provides an interim copy of the original foreign application within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application, and files a certified copy of the foreign application within the pendency of the application and before the patent is granted (see 37 CFR 1.55(j) and MPEP § 215.02(b)).
Because U.S. patent application publications (as well as U.S. patents) will have a prior art effect as of the earliest priority date (for subject matter disclosed in the priority application) with respect to applications subject to AIA 35 U.S.C. 102, the Office needs to ensure that it has a copy of the priority application by the time of publication. The time period of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application is consistent with the international norm for when the certified copy of the foreign application needs to be filed in an application. See PCT Rule 17.1(a).
If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f)(1) or (f)(2), as appropriate, and the exceptions in 37 CFR 1.55(h), (i), and (j) are not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g). This provision for the belated filing of a certified copy of the foreign application obviates the need for a petition under 37 CFR 1.183 to waive or suspend a requirement of the regulations in such a situation. 37 CFR 1.55(f) provides a lower standard (good and sufficient cause versus an extraordinary situation) and lower fee ($200 petition fee set forth in 37 CFR 1.17(g) versus the $400 petition fee set forth in 37 CFR 1.17(f)) than petitions under 37 CFR 1.183.
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See MPEP § 213.06 for additional information regarding filing a certified copy in a national stage application (35 U.S.C. 371).
215.02(a) Timeliness Requirement – Met By Priority Document Exchange [R-07.2015]
37 CFR 1.55 Claim for foreign priority. *****
(i) Foreign intellectual property office participating in a priority document exchange agreement. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
(1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), or a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy;
(2) The claim for priority is presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and the applicant provides the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application;
(3) The copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the period specified in paragraph (g)(1) of this section; and
(4) The applicant files in a separate document a request that the Office obtain a copy of the foreign application from a participating intellectual property office that permits the Office to obtain such a copy where, although the foreign application was not filed in a participating foreign intellectual property office, a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy. The request must identify the participating intellectual property office and the subsequent application by the application number, day, month, and year of its filing in which a copy of the foreign application was filed. The request must be filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), or four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or the request must be accompanied by a petition under paragraph (e) or (f) of this section.
*****
37 CFR 1.55(i) provides that the requirement in 37 CFR 1.55(f) and (g) for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) and (g) will be considered satisfied if the Office receives a copy of the priority document through the priority document exchange program during the pendency of the application and before the patent is granted. 37 CFR 1.55(i) specifically provides that this requirement for a timely filed certified copy of the foreign application will be considered satisfied if: (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office); (2) the claim for priority is presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application; and (3) the copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the time period set forth in 37 CFR 1.55(g)(1)).
37 CFR 1.55(i) also provides that if the foreign application was not filed in a participating foreign intellectual property office, but a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy, the applicant must also file a request in a separate document that the Office obtain a copy of the foreign application from the participating intellectual property office. This request must identify the participating intellectual property office and the application number and filing date of the subsequent application in which a copy of the foreign application was filed, and be filed within the later of sixteen months from the filing date of the prior foreign application or four months from the actual filing date of an application under 35 U.S.C. 111(a), within four months from the later of the date of commencement (37 CFR 1.491(a)) or the date of the initial submission under 35 U.S.C. 371 in an application
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entering the national stage under 35 U.S.C. 371, or with a petition under 37 CFR 1.55(e) or (f). Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.
The Office website provides information concerning the priority document exchange program ( www.uspto.gov/patents-getting-started/international- protection/electronic-priority-document-exchange-pdx). See also MPEP § 215.01. This information includes the intellectual property offices that participate in the priority document exchange program, as well as the information necessary for each participating foreign intellectual property office to provide the Office with access to the foreign application. The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
Note that the Office cannot obtain a copy of a design application to which priority is claimed, or a foreign application to which priority is claimed in a design application, through the priority document exchange program. In addition, note that the Office can obtain a PCT application to which priority is claimed through the priority document exchange program for PCT applications filed in a limited number of PCT Receiving Offices (currently, RO/DK (Denmark), RO/FI (Finland), RO/IB (International Bureau), and RO/SE (Sweden)).
Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents. Priority documents retrieved from a participating foreign intellectual property office will bear the document description: ‘‘Priority documents electronically retrieved by USPTO from a participating IP Office.’’ Furthermore, 37 CFR
1.55(i)(4) provides that, under specified conditions, if the foreign application was not filed in a participating foreign intellectual property office, the applicant can file a request in a separate document that the Office obtain a copy of the foreign application from a participating intellectual property office that permits the Office to obtain such a copy. Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request. If the Office receives a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, the applicant need not file a certified paper copy of the foreign application. As a specific example, Germany is not currently a participating foreign intellectual property office, however a DE application may be retrieved via the priority document exchange program if it is identified in the claim for priority on the application data sheet, a subsequent application filed in the European Patent Office (EPO) or the Japan Patent Office (JPO) contains a certified copy of the DE application, and the applicant timely files a separate request for the Office to obtain from the EPO or JPO a copy of the certified copy of the DE application, wherein the request identifies the DE application and the subsequent EP or JP application by their application number, country, day, month, and year of their filing.
The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office. A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55(f) has not expired. A separate written request is required in the situation where the foreign application is not originally filed in a participating office, but a certified copy of the foreign application
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was filed in an application subsequently filed in a participating foreign intellectual property office.
215.02(b) Timeliness Requirement – Met By Interim Copy of Foreign Application [R-07.2015]
I. TRUE COPY OF FOREIGN APPLICATION AS FILED
37 CFR 1.55 Claim for foreign priority. *****
(j) Interim copy. The requirement in paragraph (f) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
(1) A copy of the original foreign application clearly labeled as "Interim Copy," including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority);
(2) The copy of the foreign application and separate cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or with a petition under paragraph (e) or (f) of this section; and
(3) A certified copy of the foreign application is filed within the period specified in paragraph (g)(1) of this section.
*****
37 CFR 1.55(j) permits an applicant to provide an ‘‘interim copy’’ of the original foreign application from the applicant’s own records to provide for the situation in which the applicant cannot obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f), although there is no requirement that an applicant be unable to obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f) to use 37 CFR 1.55(j). The requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) will be considered satisfied if the applicant files a copy of the original foreign application clearly labeled as ‘‘Interim Copy,’’ including the specification, and
any drawings or claims upon which it is based with the time period specified in 37 CFR 1.55(j). 37 CFR 1.55(j) also provides that the interim copy of the foreign application must be filed together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority). 37 CFR 1.55(i) also provides that the interim copy of the foreign application and cover sheet must be filed within the later of sixteen months from the filing date of the prior foreign application or four months from the actual filing date of an application under 35 U.S.C. 111(a), within four months from the later of the date of commencement (37 CFR 1.491(a)) or the date of the initial submission under 35 U.S.C. 371 in an application entering the national stage under 35 U.S.C. 371, or with a petition under 37 CFR 1.55(e) or (f). 37 CFR 1.55(j) finally provides that a certified copy of the foreign application ultimately must be filed within the period specified in 37 CFR 1.55(g)(1). Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.
An interim copy of a foreign priority application will be entered into the file wrapper of the application in which it was filed and labeled as “Interim copy of Foreign Priority Document.”
II. FILING INTERIM COPY VIA EFS-WEB
If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, Sequence Listing or Computer Program Listings, along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF file via EFS-Web. The PDF file will be stored in the Image File Wrapper of the application, and applicants must select the document description “Interim Copy of the Foreign Priority
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Application” to index this document when filing online.
Application parts that were filed in a foreign patent office only as plain text computer files (e.g. TXT file), such as a Sequence Listing, lengthy Tables(s), or Computer Program Listing appendix, may be filed as a TXT file via EFS-Web (or on compact disc). When filing online via EFS-Web, applicants must select the document description “Interim Copy of the Foreign Priority (text file)” to index a plain text file part of the application. See MPEP § 502.05 for additional information regarding filing documents via EFS-Web.
215.03 Time For Filing Certified Copy – Application Filed Before March 16, 2013 [R-07.2015]
[Editor Note: See MPEP § 215.02 for information regarding the time for filing a certified copy in an application filed on or after March 16, 2013.]
37 CFR 1.55 Claim for foreign priority. *****
(g) Requirement for filing priority claim, certified copy of foreign application, and translation in any application.
(1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.
(2) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in this section:
(i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
(ii) When necessary to overcome the date of a reference relied upon by the examiner; or
(iii) When deemed necessary by the examiner.
(3) An English language translation of a non-English language foreign application is not required except:
(i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
(ii) When necessary to overcome the date of a reference relied upon by the examiner; or
(iii) When specifically required by the examiner.
(4) If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.
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35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of priority papers. Pursuant to 37 CFR 1.55, applicants are required to submit the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 before the patent is granted. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. See 37 CFR 1.55(g)(1). Certification by the authority empowered under a bilateral or multilateral treaty to receive applications which give rise to a right of priority under Article 4A(2) of the Paris Convention will be deemed to satisfy the certification requirement. See MPEP § 214.01 for the time period for claiming priority to a foreign application.
If a claim for foreign priority has been made, the latest time at which the certified copy of the foreign application may be filed in order for the patent to include the priority claim without the need for a certificate of correction is the date of the payment of the issue fee. Under certain circumstances, the certified copy may be required at an earlier date. These circumstances are specified in 37 CFR 1.55(g)(2) as:
(A) when the application is involved in an interference or derivation proceeding;
(B) when necessary to overcome the date of a reference relied on by the examiner; and
(C) when specifically required by the examiner.
The claim for foreign priority and the certified copy of the foreign application specified in 35 U.S.C.
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119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted. If the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the priority claim or certified copy will be placed in the file record but there will be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C. 111(a) (other than a design application), where the priority claim was not timely filed, a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55(e) must also be filed with the certificate of correction. Furthermore, where the priority claim was timely filed but was not included on the patent because the certified copy was not submitted, a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g) must also be filed with the certificate of correction unless the exception in 37 CFR 1.55(h) is applicable. See MPEP § 216.01.
In view of the shortened periods for prosecution leading to allowances, it is recommended that priority papers be filed as early as possible. Although 37 CFR 1.55(g)(1) permits the filing of priority papers up to and including the date for payment of the issue fee, it is advisable that such papers be filed promptly after filing the application. Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects. For applications filed prior to September 16, 2012, where the priority claim is presented in the oath or declaration, a new oath or declaration may be necessary where the original oath or declaration omits the reference to the foreign filing date for which the benefit is claimed. The early filing of priority papers would thus be advantageous to applicants in that it would afford time to explain any inconsistencies that exist or to supply any additional documents that may be necessary. It is important to note that for applications filed on or after September 16, 2012, the claim for foreign priority must be
presented in an application data sheet (37 CFR 1.76(b)(6)).
It is suggested that a pencil notation of the application number of the corresponding U.S. application be placed on the priority papers. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data. Experience indicates that cover letters and priority papers occasionally become separated, and without the suggested pencil notations on the priority papers, correlating them with the corresponding U.S. application becomes exceedingly difficult, frequently resulting in severe problems for both the Office and applicant. Adherence to the foregoing suggestion for making a pencil notation on the priority document of the U.S. application data will result in a substantial lessening of the problem.
216 Entitlement to Priority [R-07.2015]
When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012. In addition, for original applications filed under 35 U.S.C. 111(a) (other than design applications) and international applications entering the national stage under 35 U.S.C. 371, the examiner should make sure that the claim for foreign priority is timely. Examiners may use form paragraph 2.21.01 to notify applicant that the foreign priority claim is untimely. See also MPEP § 214.03.
The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof. The only times during ex parte prosecution that the examiner considers the merits of an applicant’s claim of priority is when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States and when an interference
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situation is under consideration. If at the time of making an action the examiner has found such an intervening reference, he or she simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed). The applicant in his or her reply may argue the rejection if it is of such a nature that it can be argued, or present the foreign papers for the purpose of overcoming the date of the reference. If the applicant argues the reference, the examiner, in the next action in the application, may specifically require the foreign papers to be filed in addition to repeating the rejection if it is still considered applicable, or he or she may merely continue the rejection.
Form paragraph 2.19 may be used in this instance.
¶ 2.19 Overcome Rejection by Translation
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. See MPEP §§ 215 and 216.
Examiner Note:
This paragraph should follow a rejection based on an intervening reference.
In those cases where the applicant files the certified copy of the foreign application for the purpose of overcoming the effective date of a reference, a translation is required if the certified copy is not in the English language. When the examiner requires the filing of the certified copy, the translation should also be required at the same time. This translation must be filed together with a statement that the translation of the certified copy is accurate. When the necessary certified copy and translation are filed to overcome the date of the reference, the examiner’s action, if he or she determines that the applicant is not entitled to the priority date, is to repeat the rejection on the reference, stating the reasons why the applicant is not considered entitled to the date. If it is determined that the applicant is entitled to the date, the rejection is withdrawn in view of the priority date.
If the certified copy, and translation if necessary, is already in the file when the examiner finds a
reference with the intervening effective date, the examiner will study the certified copy, if it is in the English language, to determine if the applicant is entitled to the priority date. If the applicant is found to be entitled to the priority date, the reference is not relied upon as prior art, but may be cited to applicant on form PTO-892. If the applicant is found not entitled to the date, the unpatentable claims are rejected on the reference with an explanation. If the certified copy is not in the English language and there is no translation, the examiner may reject the unpatentable claims and at the same time require an English translation for the purpose of determining the applicant’s right to rely on the foreign filing date.
The foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant. In such cases, if the certified copy of the foreign application corresponds with the one identified in an application data sheet, or for applications filed prior to September 16, 2012, in an application data sheet or in the oath or declaration filed under 37 CFR 1.63 (see 37 CFR 1.55(n)) and no discrepancies appear, it may be assumed that the nonprovisional application is entitled to claim priority to the foreign application. If the nonprovisional application and the certified copy of the foreign application do not name the same inventor or do not have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. See also MPEP § 213.02.
The most important aspect of the examiner’s action pertaining to a right of priority is the determination of the identity of invention between the U.S. and the foreign applications. The foreign application may be considered in the same manner as if it had been filed in this country on the same date that it was filed in the foreign country, and the applicant is ordinarily entitled to any claims based on such foreign application that he or she would be entitled to under U.S. laws and practice. The foreign application must be examined for the question of sufficiency of the disclosure under 35 U.S.C. 112 as well as to determine if there is a basis for the claims sought.
In applications filed from the United Kingdom there may be submitted a certified copy of the “provisional specification,” which may also in some cases be
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accompanied by a copy of the “complete specification.” The nature and function of the United Kingdom provisional specification is described in an article in the Journal of the Patent Office Society of November 1936, pages 770-774. According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required. Consequently, in considering such provisional specifications, the question of completeness of disclosure is important. If it is found that the United Kingdom provisional specification is insufficient for lack of disclosure, reliance may then be had on the complete specification and its date, if one has been presented, the complete specification then being treated as a different application than the provisional specification. In some instances, the specification and drawing of the foreign application may have been filed at a date subsequent to the filing of the petition in the foreign country. Even though the petition is called the application and the filing date of this petition is the filing date of the application in a particular country, the date accorded here is the date on which the specification and drawing were filed.
A nonprovisional application may be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. In addition, an applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims.
216.01 Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent [R-07.2015]
35 U.S.C. 119 Benefit of Earlier Filing Date; Right of Priority.
*****
(b)(1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.
(2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim under this section.
(3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.
*****
37 CFR 1.55 Claim for foreign priority. *****
(e) Delayed priority claim. Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) not presented in the manner required by paragraph (d) or (m) of this section during pendency and within the time period provided by paragraph (d) of this section (if applicable) is considered to have been waived. If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) must be accompanied by:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
(2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies;
(3) The petition fee as set forth in § 1.17(m); and
(4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(f) Time for filing certified copy of foreign application—
(1) Application under 35 U.S.C. 111(a). A certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application, or sixteen months from the filing date of the prior foreign application, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section. The time period in this paragraph does not apply in a design application.
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(2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371. If a certified copy of the foreign application is not filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
(3) If a certified copy of the foreign application is not filed within the time period specified [in] paragraph (f)(1) of this section in an application under 35 U.S.C. 111(a) or within the period specified in paragraph (f)(2) of this section in an international application entering the national stage under 35 U.S.C. 371, and an exception in paragraph (h), (i), or (j) of this section is not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).
(g) Requirement for filing priority claim, certified copy of foreign application, and translation in any application.
(1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.
*****
The failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application.
I. PERFECTING PRIORITY CLAIM VIA CERTIFICATE OF CORRECTION
Effective May 13, 2015, 37 CFR 1.55(g) provides that the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. 37 CFR 1.55(g) eliminates the need in
many instances to file a reissue application in order to perfect a claim for foreign priority. Specifically,
(A) Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g). In this situation, a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim is not needed. A grantable petition under 37 CFR 1.55(f) or (g) must include the fee set forth in 37 CFR 1.17(g) and a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application; and
(B) Where a priority claim under 37 CFR 1.55 was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application).
37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application. Thus, applicant may request a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 where the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application and where the priority claim was timely made in the application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) and the certified copy of the foreign application was timely filed in the parent application.
As an example of when a request to issue a certificate of correction may be used in order to perfect a claim to foreign priority benefits, see In re Van Esdonk, 187 USPQ 671 (Comm’r Pat. 1975). In In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior
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to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the “applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.”
Although In re Van Esdonk involved the patent of a continuation application filed under former 37 CFR 1.60, it is proper to apply the holding of that case in similar factual circumstances to any patented application having benefits under 35 U.S.C. 120. This is primarily because a claim to foreign priority benefits in a continuing application, where the claim has been perfected in the parent application, constitutes in essence a mere affirmation of the applicant’s previously expressed desire to receive benefits under 35 U.S.C. 119(a)-(d) or (f) for subject matter common to the foreign, parent, and continuing applications.
In summary, a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 may be requested and issued in order to perfect a claim for foreign priority benefit in a patent if (1) the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied in the patented application or in a parent application prior to issuance of the patent, and (2) the requirements of 37 CFR 1.55 are met.
II. PERFECTING PRIORITY CLAIMVIA REISSUE
As an alternative to requesting a certificate of correction, a claim to foreign priority benefits can be perfected by way of a reissue application in accordance with the rationale set forth in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968). In circumstances where a claim to foreign priority benefits cannot be perfected via a certificate of correction because the requirements of 35 U.S.C. 119(a)-(d) or (f) had not been satisfied in the patented application, or its parent, prior to issuance, and the requirements of 37 CFR 1.55 are not met, the claim to foreign priority benefits can be perfected only by way of a reissue application. Note that 37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in a reissue application if the
patent for which reissue is sought satisfies the requirement for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application.
217 Incorporation by Reference Under 37 CFR 1.57(b) [R-07.2015]
37 CFR 1.57 Incorporation by reference. *****
(b) Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application, or a claim under § 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or § 1.78 shall also be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).
(1) The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b), or abandonment of the application, whichever occurs earlier. The applicant is also required to:
(i) Supply a copy of the prior-filed application, except where the prior-filed application is an application filed under 35 U.S.C. 111;
(ii) Supply an English language translation of any prior-filed application that is in a language other than English; and
(iii) Identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
(2) Any amendment to an international application pursuant to paragraph (b)(1) of this section shall be effective only as to the United States, and shall have no effect on the international filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (§ 1.491) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application. Any omitted portion of the international application which applicant desires to be effective as to all designated States, subject to PCT Rule 20.8(b), must be submitted in accordance with PCT Rule 20.
(3) If an application is not otherwise entitled to a filing date under § 1.53(b), the amendment must be by way of a
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petition pursuant to § 1.53(e) accompanied by the fee set forth in § 1.17(f).
(4) Any amendment to an international design application pursuant to paragraph (b)(1) of this section shall be effective only as to the United States and shall have no effect on the filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international design application will be acted upon by the Office prior to the international design application becoming a nonprovisional application.
*****
I. IN GENERAL
37 CFR 1.57(b) (formerly 37 CFR 1.57(a)) provides that if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, international, or international design application that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim for priority or benefit shall be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawings.
The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is (are) inadvertently omitted from an application, such as through a clerical error. It allows inadvertently omitted material to be added to the application by way of a later-filed amendment if the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application even though there is no explicit incorporation by reference of the prior-filed application. For a discussion of explicit incorporation by reference statements, see MPEP § 608.01(p).
II. CONDITIONS AND REQUIREMENTS OF 37 CFR 1.57(b)
The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(b):
(A) the application must have been filed on or after September 21, 2004;
(B) all or a portion of the specification or drawing(s) must have been inadvertently omitted from the application;
(C) a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, international, or international design application, must have been present on the filing date of the application;
(D) the inadvertently omitted portion of the specification or drawing(s) must be completely contained in the prior-filed application;
(E) applicant must file an amendment to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier;
(F) if the application is not otherwise entitled to a filing date, applicant must also file a petition under 37 CFR 1.53(e) accompanied by the petition fee set forth in 37 CFR 1.17(f);
(G) applicant must supply a copy of the prior-filed application, except where the prior-filed application is an application filed under 35 U.S.C. 111;
(H) applicant must supply an English language translation of any prior-filed application that is in a language other than English; and
(I) applicant must identify where the inadvertently omitted portion of the specification or drawing(s) can be found in the prior-filed application.
A. Application Filed On or After September 21, 2004
The provisions set forth in 37 CFR 1.57(b) became effective on September 21, 2004 and apply to
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applications filed on or after that date. Thus, an application that inadvertently omits material must have been filed on or after September 21, 2004 in order for 37 CFR 1.57(b) to apply. Applicants may, however, rely on prior-filed applications filed before September 21, 2004 to supply inadvertently omitted material to applications filed on or after September 21, 2004.
B. Material Must Be Inadvertently Omitted
There is no requirement for applicant to submit a declaration stating that the omission was inadvertent or to submit proof that a particular omission was inadvertent at the time of filing of the application. If applicant submits an amendment to add the omitted material pursuant to 37 CFR 1.57(b), it would constitute a certification under 37 CFR 11.18(b) that the omission was inadvertent. The Office, however, may inquire as to inadvertence where the record raises such issue.
C. Claim Under 37 CFR 1.55 or 1.78 Present on Filing Date
The priority claim under 37 CFR 1.55 or the benefit claim under 37 CFR 1.78 of the prior-filed application must be present on the filing date of the later-filed application in order for it to be considered an incorporation by reference of the prior-filed application under 37 CFR 1.57(b). The later-filed application claiming benefit of the prior-filed application can be a continuation, divisional, or continuation-in-part application of the prior-filed application.
D. Omitted Material Completely Contained in Prior-filed Application
The phrase “completely contained” in 37 CFR 1.57(b) requires that the material to be added to the later-filed application under 37 CFR 1.57(b) must be expressly, as opposed to implicitly, disclosed in the prior-filed application. Furthermore, the material to be added must be completely contained in the prior-filed application as filed since it is the prior application as filed which is being incorporated under 37 CFR 1.57(b).
E. Amendment to Add Inadvertently Omitted Material
The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined in 37 CFR 1.114(b), or the abandonment of the application, whichever occurs earlier. If the Office of Patent Application Processing (OPAP) mails a “Notice of Omitted Item(s)” indicating that a portion of the specification or drawings have been omitted, any amendment pursuant to 37 CFR 1.57(b) should be submitted within the two month time period set in the notice and should be identified as an amendment under 37 CFR 1.57(b). The amendment must be in compliance with 37 CFR 1.57(b) and 1.121. See MPEP § 601.01(d) and § 601.01(g). While an amendment to include inadvertently omitted material may be submitted in reply to a final Office action which first raises the issue of the omitted material, such an amendment does not have a right of entry as it would be considered as an amendment under 37 CFR 1.116. If the application is abandoned or the prosecution is closed, applicant may file a petition to revive an application under 37 CFR 1.137 and/or a request for continued examination under 37 CFR 1.114, as appropriate, in order to restore the application to pending status and/or reopen prosecution in the application. If, however, an application has been patented, a certificate of correction or a reissue application could not be used to add inadvertently omitted material to that patent via 37 CFR 1.57(b).
In order for the omitted material to be included in the application, and hence considered to be part of the disclosure, the application must be amended to include the omitted portion. Therefore, applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.
In addition to filing the amendment to add the inadvertently omitted material, applicant is also required to: (A) supply a copy of the prior-filed
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application, except where the prior-filed application is an application filed under 35 U.S.C. 111; (B) supply an English-language translation of any prior-filed application that is in a language other than English; and (C) identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
F. Petition Requirement
If an application is not otherwise entitled to a filing date under 37 CFR 1.53(b), the amendment must be by way of petition under 37 CFR 1.53(e) accompanied by the fee set forth in 37 CFR 1.17(f). If OPAP mails a “Notice of Incomplete Application” indicating that the application lacks a specification or drawings, applicant should file a petition under 37 CFR 1.57(b) in response to the notice if applicant wants to rely on 37 CFR 1.57(b). See MPEP § 601.01(d) and § 601.01(f).
G. International Applications
Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11. In addition, no request to add the inadvertently omitted portion of the specification or drawings in an international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (37 CFR 1.491) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application.
H. International Design Applications
Any amendment to an international design application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the filing date of the application. In addition, no request to add the inadvertently omitted portion of the specification or drawings in an
international design application will be acted upon by the Office prior to the international design application becoming a nonprovisional application.
III. EXAMPLES
Example 1:
The Office of Patent Application Processing (OPAP) noticed that Figure 3 was omitted from the application during the initial review of the application although the specification included a description of Figure 3. The application as originally filed contained a claim under 37 CFR 1.78 for the benefit of a prior-filed application that included the appropriate Figure 3. OPAP mailed a Notice of Omitted Item(s) notifying the applicant of the omission of Figure 3 and providing a two-month period for reply.
Applicant may rely on the incorporation by reference provided by 37 CFR 1.57(b) to amend the application to add Figure 3. Applicant, however, must file the amendment to add the inadvertently omitted drawing figure in compliance with 37 CFR 1.57(b) within the time period set forth in the Notice of Omitted Item(s).
Example 2:
Applicant discovered that the last page of the specification is inadvertently omitted after the prosecution of the application has been closed (e.g., a final Office action, an Ex Parte Quayle action, or a notice of allowance has been mailed to the applicant). The application, as originally filed, contained a claim under 37 CFR 1.78 for the benefit of a prior-filed application that included the last page of the specification.
If applicant wishes to amend the specification to include the inadvertently omitted material, applicant must reopen the prosecution by filing a Request for Continued Examination (RCE) under 37 CFR 1.114 accompanied by the appropriate fee and an amendment in compliance with 37 CFR 1.57(b) within the time period for reply set forth in the last Office action (e.g., prior to payment of the issue fee, unless applicant also files a petition to withdraw the application from issue).
Example 3:
Applicant filed a (third) application that includes a claim under 37 CFR 1.78 for the benefit of a (second) prior-filed application and a (first) prior-filed application. The second application was a continuation application of the first application and the second application was abandoned after the filing of the third application. Subsequently, the applicant discovered the last page of the specification was inadvertently omitted from the third application and the second application.
If the benefit of the filing date of first application for the omitted subject matter is required (for example, the omitted material is required to provide support for the claimed subject matter of the third application and there is an intervening reference that has a prior art date prior to the filing date of the third application,
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but after the filing date of the first application), applicant must amend the specification of the second application and the specification of the third application to include the inadvertently omitted material in compliance with 37 CFR 1.57(b) (note: the second and third applications must be filed on or after September 21, 2004. Since the second application is abandoned, applicant must file a petition to revive under 37 CFR 1.137 in the second application only for the purpose of correcting the specification under 37 CFR 1.57(b) along with the amendment in compliance with 37 CFR 1.57(b).
IV. FORM PARAGRAPHS
Examiners may use form paragraph 6.19.02 set forth below to notify applicant that an amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(b) is not in compliance with 37 CFR 1.57(b). If the amendment is made to the specification and/or drawings and introduces new matter into the disclosure, form paragraph 7.28 must also be used to object to the new matter added to the disclosure, and if the amendment adds new matter to the claims or affects the claims, form paragraph 7.31.01 must also be used to reject the claims under 35 U.S.C. 112(a).
¶ 6.19.02 Amendment Not in Compliance with 37 CFR 1.57(b)
The amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(b) filed [1] is not in compliance with 37 CFR 1.57(b) because [2].
Examiner Note:
1. In bracket 1, insert the date the amendment was filed.
2. In bracket 2, insert the reason why the amendment has not been entered. For example: (1) the present application was filed before September 21, 2004, the effective date of the provisions now in 37 CFR 1.57(b) (the provisions were formerly in 37 CFR 1.57(a)); (2) the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application; (3) the inadvertently omitted portion is not completely contained in the prior-filed application; (4) a copy of the prior-filed application (except where the prior-filed application is an application filed under 35 U.S.C. 111) was not submitted; (5) an English language translation of the prior-filed non-English language application was not submitted; or (6) applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
3. This form paragraph must be followed by form paragraph 7.28, where the amendment is made to the specification and/or drawings and introduces new matter into the disclosure, and/or form paragraph 7.31.01, where the amendment adds new matter to the claims or affects the claims.
4. If the amendment is an after-final amendment, an advisory action should be issued indicating that the amendment raises new issues because it is not in compliance with 37 CFR 1.57(b).
5. This form paragraph should not be used if there is an express incorporation by reference since applicant would not need to comply with the requirements of 37 CFR 1.57(b).
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Chapter 300 Ownership and Assignment
Ownership/Assignability of Patents and Applications
301
Accessibility of Assignment Records301.01 Recording of Assignment Documents302
Assignment Document Must Be Copy for Recording
302.01
Translation of Assignment Document302.02 Identifying Patent or Application302.03 Foreign Assignee May Designate Domestic Representative
302.04
Address of Assignee302.05 Fee for Recording302.06 Assignment Document Must Be Accompanied by a Cover Sheet
302.07
Mailing Address for Submitting Assignment Documents
302.08
Facsimile Submission of Assignment Documents
302.09
Electronic Submission of Assignment Documents
302.10
Assignment Documents Not Endorsed on Pending Applications
303
[Reserved]304-305 Assignment of Division, Continuation, Substitute, and Continuation-in-Part in Relation to Parent Application
306
Assignment of an Application Claiming the Benefits of a Provisional Application
306.01
Issue to Non-Applicant Assignee307 Issue to Applicant308 Restrictions Upon Employees of U.S. Patent and Trademark Office
309
Government License Rights to Contractor-Owned Inventions Made
310
Under Federally Sponsored Research and Development Filing of Notice of Arbitration Awards311 [Reserved]312 Recording of Licenses, Security Interests, and Documents Other Than Assignments
313
Certificates of Change of Name or of Merger
314
Indexing Against a Recorded Certificate
315
[Reserved]316 Handling of Documents in the Assignment Division
317
Recording Date317.01
Correction of Unrecorded Returned Documents and Cover Sheets
317.02
Effect of Recording317.03 Documents Not to be Placed in Files318 [Reserved]319 Title Reports320 [Reserved]321-322 Procedures for Correcting Errors in Recorded Assignment Document
323
Correction of Error in Recorded Cover Sheet
323.01
Typographical Errors in Cover Sheet
323.01(a)
Typographical Errors in Recorded Assignment Document
323.01(b)
Assignment or Change of Name Improperly Filed and Recorded
323.01(c)
by Another Person Against Owner’s Application or Patent Expungement of Assignment Records
323.01(d)
Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
324
Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012
325
301 Ownership/Assignability of Patents and Applications [R-07.2015]
35 U.S.C. 261 Ownership; assignment.
Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.
Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.
A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the
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United States, shall be prima facie evidence of the execution of an assignment, grant, or conveyance of a patent or application for patent.
An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.
35 U.S.C. 262 Joint owners.
In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.
37 CFR 3.1 Definitions.
For purposes of this part, the following definitions shall apply:
Application means a national application for patent, an international patent application that designates the United States of America, an international design application that designates the United States of America, or an application to register a trademark under section 1 or 44 of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless otherwise indicated.
Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.
Document means a document which a party requests to be recorded in the Office pursuant to § 3.11 and which affects some interest in an application, patent, or registration.
Office means the United States Patent and Trademark Office.
Recorded document means a document which has been recorded in the Office pursuant to § 3.11.
Registration means a trademark registration issued by the Office.
I. OWNERSHIP
Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1). Ownership of the patent does not furnish the owner with the right to make, use, offer for sale,
sell, or import the claimed invention because there may be other legal considerations precluding same (e.g., existence of another patent owner with a dominant patent, failure to obtain FDA approval of the patented invention, an injunction by a court against making the product of the invention, or a national security related issue).
For applications filed on or after September 16, 2012, the original applicant is presumed to be the initial owner of an application for an original patent. See 37 CFR 3.73(a). For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent. See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248, 26 USPQ2d 1572, 1582 (Fed. Cir. 1993). A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261.
II. ASSIGNMENT
“Assignment,” in general, is the act of transferring to another the ownership of one’s property, i.e., the interest and rights to the property. In 37 CFR 3.1, assignment of patent rights is defined as “a transfer by a party of all or part of its right, title and interest in a patent [or] patent application....” An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application. In order for an assignment to take place, the transfer to another must include the entirety of the bundle of rights that is associated with the ownership interest, i.e., all of the bundle of rights that are inherent in the right, title and interest in the patent or patent application.
III. LICENSING
As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use. A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the
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licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds delineated by the license agreement.
An exclusive license may be granted by the patent owner to a licensee. The exclusive license prevents the patent owner (or any other party to whom the patent owner might wish to sell a license) from competing with the exclusive licensee, as to the geographic region, the length of time, and/or the field of use, set forth in the license agreement.
A license is not an assignment of the patent. Even if the license is an exclusive license, it is not an assignment of patent rights in the patent or application.
IV. INDIVIDUAL AND JOINT OWNERSHIP
Individual ownership - An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inventor, and the inventor has not assigned the patent property. Alternatively, it occurs where all parties having ownership interest (all inventors and assignees) assign the patent property to one party.
Joint ownership - Multiple parties may together own the entire right, title and interest of the patent property. This occurs when any of the following cases exist:
(A) Multiple partial assignees of the patent property;
(B) Multiple inventors who have not assigned their right, title and interest; or
(C) A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest.
Each individual inventor may only assign the interest he or she holds; thus, assignment by one joint inventor renders the assignee a partial assignee. A partial assignee likewise may only assign the interest it holds; thus, assignment by a partial assignee renders a subsequent assignee a partial assignee. All parties having any portion of the ownership in the patent property must act together as a composite entity in patent matters before the Office.
V. MAKING THE ASSIGNMENT OF RECORD
An assignment can be made of record in the United States Patent and Trademark Office (Office) in two different ways, for two different purposes. The differences are important to note:
(A) An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3. Recordation of the assignment provides legal notice to the public of the assignment. It should be noted that recording of the assignment is merely a ministerial act; it is not an Office determination of the validity of the assignment document or the effect of the assignment document on the ownership of the patent property. See 37 CFR 3.54 and MPEP § 317.03. For a patent to issue to an assignee, the assignment must have been recorded or filed for recordation in accordance with 37 CFR 3.11. See 37 CFR 3.81(a).
(B) An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding). This step may be necessary to permit the assignee to “take action” in the application, patent, or other patent proceeding under the conditions set forth in 37 CFR 1.46 and 37 CFR 3.81(a) and MPEP § 325 (for applications filed on or after September 16, 2012) or under the conditions set forth in pre-AIA 37 CFR 3.73 and MPEP § 324 (for applications filed before September 16, 2012). Recordation of an assignment in the assignment records of the Office does not, by itself, permit the assignee to take action in the application, patent, or other patent proceeding.
Additionally, for applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (“assignment-statement”), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration. See 35 U.S.C. 115(e), 37 CFR 1.63(e), and MPEP §§ 302.07, 317, and MPEP § 602.01(a).
301.01 Accessibility of Assignment Records [R-11.2013]
37 CFR 1.12 Assignment records open to public inspection.
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(a)(1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records.
(2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
(b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14, are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.
(c) Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under § 1.14, or any information with respect thereto, must:
(1) Be in the form of a petition including the fee set forth in § 1.17(g); or
(2) Include written authority granting access to the member of the public to the particular assignment records from an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record.
(d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.
Assignment documents relating to patents, published patent applications, registrations of trademarks, and applications for registration of trademarks are open to public inspection. Records related to assignments of patents, and patent applications that have been published as patent application publications are available on the USPTO website. To view the recorded assignment document itself, members of
the public must place an order pursuant to 37 CFR 1.12(d).
The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open. Thus, if a document covers either a trademark or a patent in addition to one or more patent applications, it will be available to the public ab initio; and if it covers a number of patent applications, it will be so available as soon as any one of them is published or patented. Documents relating only to one or more pending applications for patent which have not been published under 35 U.S.C. 122(b) will not be open to public inspection.
Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public. For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority. For applications filed on or after September 16, 2012, the written authority must be from (A) an inventor, (B) the applicant, (C) the assignee or an assignee of an undivided part interest, (D) a patent practitioner of record, or (E) a person with written authority from (A), (B), or (C) or (D). See 37 CFR 1.12. For applications filed prior to September 16, 2012, the written authority must be from the applicant or applicant’s assignee or from the attorney or agent of either, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application. See pre-AIA 37 CFR 1.12.
If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14.
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Assignment records relating to reissue applications are open to public inspection because reissue applications are open to public inspection pursuant to 37 CFR 1.11(b).
Requests for abstracts of title for assignments of patents recorded after May 1, 1957, are provided by the Certification Division upon request and payment of fee required in 37 CFR 1.19. Requests for copies of pre-1957 records for patents should be directed to the National Archives and Records Administration (NARA). Since these records are maintained by NARA, it is more expeditious to request copies directly from NARA, rather than from the Office, which would then have to route the requests to NARA. Payment of the fees required by NARA should accompany all requests for copies.
All assignment records from 1837 to April 30, 1957 for patents are now maintained and are open for public inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Maryland 20746. Assignment documents recorded before 1837 are maintained at the Civilian Records Division of the National Archives at College Park, 8601Adelphi Road, College Park, MD 20740-6001.
302 Recording of Assignment Documents [R-07.2015]
37 CFR 3.11 Documents which will be recorded.
(a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31, will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31, affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
(b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
(c) A joint research agreement or an excerpt of a joint research agreement will also be recorded as provided in this part.
37 CFR 3.58 Governmental registers.
(a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12.
(b) The Office will maintain a Secret Register to record governmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submitted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Register.
37 CFR Part 3 sets forth Office rules on recording assignments and other documents relating to interests in patent applications and patents and the rights of an assignee.
37 CFR 3.11(c) provides that the Office will record a joint research agreement or an excerpt of a joint research agreement.
302.01 Assignment Document Must Be Copy for Recording [R-08.2012]
37 CFR 3.24 Requirements for documents and cover sheets relating to patents and patent applications.
(a) For electronic submissions: Either a copy of the original document or an extract of the original document may be submitted for recording. All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 cm (one-inch) margin must be present on all sides.
(b) For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page
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may be used. The paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin must be present on all sides. For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable. The Office will not return recorded documents, so original documents must not be submitted for recording.
The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document. See MPEP § 317. The document submitted for recordation will not be returned to the submitter. If the copy submitted for recordation is illegible, the recorded document will be illegible. Accordingly, applicants and patent owners should ensure that only a legible copy is submitted for recordation.
302.02 Translation of Assignment Document [R-08.2012]
37 CFR 3.26 English language requirement.
The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.
302.03 Identifying Patent or Application [R-07.2015]
37 CFR 3.21 Identification of patents and patent applications.
An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number; e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number; e.g., PCT/US2012/012345. An assignment relating to an international design application which designates the United States of America must identify the international design application by the international registration number or by the U.S. application number assigned to the international design application. If an assignment of a patent application filed under § 1.53(b) of this chapter is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment
of a provisional application under § 1.53(c) of this chapter is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.
The patent or patent application to which an assignment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed. Then, the application must be identified by the name(s) of the inventors, and the title of the invention. If an assignment of a provisional application is executed before the provisional application is filed, it must identify the provisional application by name(s) of the inventors and the title of the invention.
The Office makes every effort to provide applicants with the application numbers for newly filed patent applications as soon as possible. It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is:
“I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.”
302.04 Foreign Assignee May Designate Domestic Representative [R-11.2013]
35 U.S.C. 293 Nonresident patentee; service and notice.
Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.
37 CFR 3.61 Domestic representative.
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If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.
An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative. The designation of domestic representative should always be a paper separate from any assignment document, in order that the paper of designation can be retained in the appropriate application or patent file. Also, there should be a separate paper of designation of representative for each patent or application, so that a designation paper can be placed in each file. The designation of a domestic representative should be directed to the Office of Public Records for processing.
302.05 Address of Assignee [R-08.2012]
The address of the assignee may be recited in the assignment document and must be given in the required cover sheet. See MPEP § 302.07.
302.06 Fee for Recording [R-08.2012]
37 CFR 3.41 Recording fees.
(a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for trademarks.
(b) No fee is required for each patent application and patent against which a document required by Executive Order 9424 is to be filed if:
(1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); and
(2) The document and cover sheet are either: Faxed or electronically submitted as prescribed by the Director, or mailed to the Office in compliance with § 3.27.
The recording fee set forth in 37 CFR 1.21(h) is charged for each patent application and patent identified in the required cover sheet except as provided in 37 CFR 3.41(b).
302.07 Assignment Document Must Be Accompanied by a Cover Sheet [R-07.2015]
37 CFR 3.28 Requests for recording.
Each document submitted to the Office for recording must include a single cover sheet (as specified in § 3.31) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted.
37 CFR 3.31 Cover sheet content.
(a) Each patent or trademark cover sheet required by § 3.28 must contain:
(1) The name of the party conveying the interest;
(2) The name and address of the party receiving the interest;
(3) A description of the interest conveyed or transaction to be recorded;
(4) Identification of the interests involved:
(i) For trademark assignments and trademark name changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the Office received the application; or
(ii) For any other document affecting title to a trademark or patent application, registration or patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;
(5) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
(6) The date the document was executed;
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(7) The signature of the party submitting the document. For an assignment document or name change filed electronically, the person who signs the cover sheet must either:
(i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’Malley III/) in the signature block on the electronic submission; or
(ii) Sign the cover sheet using some other form of electronic signature specified by the Director.
(8) For trademark assignments, the entity and citizenship of the party receiving the interest. In addition, if the party receiving the interest is a domestic partnership or domestic joint venture, the cover sheet must set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture.
(b) A cover sheet should not refer to both patents and trademarks, since any information, including information about pending patent applications, submitted with a request for recordation of a document against a trademark application or trademark registration will become public record upon recordation.
(c) Each patent cover sheet required by § 3.28 seeking to record a governmental interest as provided by § 3.11(b) must:
(1) Indicate that the document relates to a Government interest; and
(2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see § 3.41(b)).
(d) Each trademark cover sheet required by § 3.28 seeking to record a document against a trademark application or registration should include, in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document.
(e) Each patent or trademark cover sheet required by § 3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee.
(f) Each trademark cover sheet should include the citizenship of the party conveying the interest.
(g) The cover sheet required by § 3.28 seeking to record a joint research agreement or an excerpt of a joint research agreement as provided by § 3.11(c) must:
(1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form);
(2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form);
(3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and
(4) Indicate the date the joint research agreement was executed.
(h) The assignment cover sheet required by § 3.28 for a patent application or patent will be satisfied by the Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, Patent Law Treaty Model International Request for Recordation of a License/ Cancellation of the Recordation of a License Form, Patent Law Treaty Model Certificate of Transfer Form or Patent Law Treaty Model International Request for Recordation of a Security Interest/ Cancellation of the Recordation of a Security Interest Form, as applicable, except where the assignment is also an oath or declaration under § 1.63 of this chapter. An assignment cover sheet required by § 3.28 must contain a conspicuous indication of an intent to utilize the assignment as an oath or declaration under § 1.63 of this chapter.
Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28. The cover sheet for patents or patent applications must contain:
(A) The name of the party conveying the interest;
(B) The name and address of the party receiving the interest;
(C) A description of the interest conveyed or transaction to be recorded;
(D) Each patent application number or patent number against which the document is to be recorded, or an indication that the document is filed together with a patent application;
(E) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
(F) The date the document was executed; and
(G) The signature of the party submitting the document.
For applications filed on or after September 16, 2012, if the assignment document is also intended to serve as the required oath or declaration, the cover sheet must also contain a conspicuous indication of an intent to utilize the assignment as the required oath or declaration under 37 CFR 1.63. See 37 CFR 3.31(h).
If the document submitted for recordation is a joint research agreement or an excerpt of a joint research
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agreement, the cover sheet must clearly identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed if using Form PTO-1595). The date the joint research agreement was executed must also be identified. The cover sheet must also identify the name(s) of the owner(s) of the application or patent (in the space provided for the name and address of the party receiving the interest if using Form PTO-1595). The name(s) of every other party(ies) to the joint research agreement must also be identified (in the space provided for the name of the party conveying the interest if using Form PTO-1595).
Each patent cover sheet should contain the number of patent applications or patents identified in the cover sheet and the total fee.
Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are:
(A) assignment;
(B) security agreement;
(C) merger;
(D) change of name;
(E) license;
(F) foreclosure;
(G) lien;
(H) contract; and
(I) joint research agreement.
Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.
A patent cover sheet may not refer to trademark applications or registrations.
Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.
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302.08 Mailing Address for Submitting Assignment Documents [R-08.2012]
37 CFR 3.27 Mailing address for submitting documents to be recorded.
Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.
37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office. In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications. Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
302.09 Facsimile Submission of Assignment Documents [R-11.2013]
Assignments and other documents affecting title may be submitted to the Office via facsimile (fax). See the USPTO website or MPEP § 1730 for the facsimile number. This process allows customers to submit their documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their fax machine. The customer’s fax machine should be connected to a dedicated line because recordation notices will be returned automatically to the sending fax number through the Patent and Trademark Assignment System. If the Office system is unable to complete transmission of the recordation notice, the notice will be printed and mailed to the sender by U.S. Postal Service first class mail. Recorded documents will not be returned with the “Notice of Recordation.”
Any assignment-related document for patent matters submitted by facsimile must include:
(A) an identified application or patent number;
(B) one cover sheet to record a single transaction; and
(C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509), is required for the credit card information to be kept separate from the assignment records) or a USPTO Deposit Account.
The following documents cannot be submitted via facsimile:
(A) Assignments submitted concurrently with newly filed patent applications;
(B) Documents with two or more cover sheets (e.g., a single document with one cover sheet to record an assignment, and a separate cover sheet to record separately a license relating to the same property); and
(C) Requests for “at cost” recordation services.
The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office. See MPEP § 502.01. The benefits of a certificate of transmission under 37 CFR 1.8 are available.
If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office “Notice of Non-Recordation” will be transmitted via fax back to the sender. Once corrections are made, the initial submission, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.
The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.
302.10 Electronic Submission of Assignment Documents [R-07.2015]
37 CFR 3.31 Cover sheet content.
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§ 302.10OWNERSHIP AND ASSIGNMENT
(a) *****
(7) The signature of the party submitting the document. For an assignment document or name change filed electronically, the person who signs the cover sheet must either:
(i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’ Malley III/) in the signature block on the electronic submission; or
(ii) Sign the cover sheet using some other form of electronic signature specified by the Director.
*****
37 CFR 1.4 Nature of correspondence and signature requirements.
*****
(d) *****
(2) S-signature. An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by paragraph (d)(1) of this section. An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature as provided for in paragraph (d)(1) of this section. Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d), or via the Office electronic filing system as an attachment as provided in § 1.6(a)(4), for a patent application, patent, or a reexamination or supplemental examination proceeding may be S-signature signed instead of being personally signed ( i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) of this section are as follows.
(i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature ( e.g., /Dr. James T. Jones, Jr./); and
(ii) A patent practitioner (§ 1.32(a)(1)), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
(iii) The signer’s name must be:
(A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
(B) Reasonably specific enough so that the identity of the signer can be readily recognized.
(3) Electronically submitted correspondence. Correspondence permitted via the Office electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the Office electronic filing system.
(4) Certifications—
(i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
(ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
(5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms (e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.
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Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS). See
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the USPTO website at http://epas.uspto.gov for additional information regarding EPAS.
Any assignment related document submitted by EPAS must include:
(A) an identified application or patent number;
(B) one cover sheet to record a single transaction which cover sheet is to be completed on-line; and
(C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509), is required for the credit card information to be kept separate from the assignment records), electronic fund transfer (EFT) or a USPTO Deposit Account.
For an assignment document filed electronically, the signature of the person who signs the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2).
The date of receipt accorded to an assignment document sent to the Office by EPAS is the date the complete transmission is received in the Office.
If a document submitted by EPAS is determined not to be recordable, the entire document, with its associated cover sheet, and the Office "Notice of Non-Recordation" will be transmitted via fax back to the sender. Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.
The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.
303 Assignment Documents Not Endorsed on Pending Applications [R-08.2012]
Certified copies of patent applications as filed do not include an indication of assignment documents.
Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 CFR 1.19.
When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM. See MPEP § 320.
304-305 [Reserved]
306 Assignment of Division, Continuation, Substitute, and Continuation-in-Part in Relation to Parent Application [R-07.2015]
In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications. Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.
In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications. Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original
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applicant therein. See 37 CFR 3.81. See also MPEP § 307 and § 308.
306.01 Assignment of an Application Claiming the Benefits of a Provisional Application [R-07.2015]
If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120. See MPEP § 306. If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120. See MPEP § 306, § 307, and § 308.
307 Issue to Non-Applicant Assignee [R-11.2013]
35 U.S.C. 152 Issue of patent to assignee.
Patents may be granted to the assignee of the inventor of record in the Patent and Trademark Office, upon the application made and the specification sworn to by the inventor, except as otherwise provided in this title.
37 CFR 3.81 Issue of patent to assignee.
(a) With payment of the issue fee: An application may issue in the name of the assignee consistent with the application’s assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office. If the assignment has not been previously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11.
(b) After payment of the issue fee: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter
(accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17 (i) of this chapter.
(c) Partial assignees.
(1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.
(2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.
Normally, for a patent to issue to an assignee (other than an assignee who is the applicant in an application filed on or after September 16, 2012), a request for issuance of the application in the name of the assignee must be filed in the United States Patent and Trademark Office (Office) at a date not later than the day on which the issue fee is paid. Such a request must indicate that the assignment has been previously recorded in the Office. If the assignment has not been previously recorded in the Office, the request must state that the document has been filed for recordation as set forth in 37 CFR 3.11. See 37 CFR 3.81(a). See MPEP § 308 for information regarding issuance of a patent to an assignee who is the applicant in an application filed on or after September 16, 2012.
If a request for issuance to an assignee pursuant to 37 CFR 3.81(b) is submitted after the day on which the issue fee is paid, the request under 37 CFR 3.81(b) must include a request for a certificate of correction under 37 CFR 1.323 (accompanied by the fee set forth in 37 CFR 1.20(a)) and the processing fee set forth in 37 CFR 1.17(i). The request under 37 CFR 3.81(b) must state that the assignment was submitted for recordation as set forth in 37 CFR 3.11 before issuance of the patent. The Office will issue a certificate of correction to reflect that the patent issued to the assignee provided the requirements of 37 CFR 3.81(b) and 37 CFR 1.323 are complied with.
Only the first appearing name of an assignee will be printed on the patent where multiple names for the same party are identified on the Fee(s) Transmittal form, PTOL-85B. Such multiple names may occur when both a legal name and an “also known as” or “doing business as” name is also included. This printing practice will not, however, affect the
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existing practice of recording assignments with the Office in the Assignment Division. The assignee entry on form PTOL-85B should still be completed to indicate the assignment data as recorded in the Office. For example, the assignment filed in the Office and, therefore, the PTOL-85B assignee entry might read “Smith Company doing business as (d.b.a.) Jones Company.” The assignee entry on the printed patent will read “Smith Company.”
Unless an assignee’s name and address are identified in item 3 of the Fee(s) Transmittal form PTOL-85B, the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied. Assignment information printed on a patent is not updated after a patent is issued, and may not be reflective of the assignment recorded in the Office subsequent to the issuance of the patent. Detailed assignment information can be found by performing an assignment search on the USPTO website and by inspecting the recorded assignment documents.
A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued. Any such request under 37 CFR 3.81(b) should be directed to the Office of Petitions and should include:
(A) the processing fee required by 37 CFR 1.17(i);
(B) a request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee;
(C) a statement that the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the issuance of the patent; and
(D) a request for a certificate of correction under 37 CFR 1.323 accompanied by the fee set forth in 37 CFR 1.20(a).
308 Issue to Applicant [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications filed on or after September 16, 2012.]
35 U.S.C. 118 Filing by other than inventor.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012. See pre-AIA 35 U.S.C. 118 for the law otherwise applicable.]
A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.
37 CFR 1.46 Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a), 363,or 385 on or after September 16, 2012. See pre-Hague 37 CFR 1.46 or pre-AIA 37 CFR 1.46 for the rule otherwise applicable.]
*****
(b) If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. If an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under paragraph (a) of this section, the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).
(1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership ( e.g., assignment for an assignee, employment agreement for a person to whom the
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inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
(2) If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including:
(i) The fee set forth in § 1.17(g);
(ii) A showing that such person has sufficient proprietary interest in the matter; and
(iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
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(e) If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81. Where a real party in interest has filed an application under § 1.46, the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest.
35 U.S.C. 118 and 37 CFR 1.46(e) provide that where the Director grants a patent on an application filed under 35 U.S.C. 118 by a person other than the inventor, the Office must grant the patent to the real party in interest. Therefore, the Office is requiring applicants other than the inventor to notify the Office of any change in the real party in interest in a reply to a notice of allowance. Absent any such notification, the Office will presume no change has occurred and will grant the patent to the real party in interest of record.
Applicants other than the inventor can notify the Office of a change in the real party in interest by providing the real party in interest in Box 3 of the PTOL-85B. See MPEP § 307.
Applicants other than the inventor should record the documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an
obligation to assign the invention) before payment of the issue fee.
309 Restrictions Upon Employees of U.S. Patent and Trademark Office [R-07.2015]
35 U.S.C. 4 Restrictions on officers and employees as to interests in patents.
Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.
See MPEP § 1701 for additional restrictions on Office employees.
310 Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development [R-07.2015]
Where a Government contractor retains U.S. domestic patent rights, the contractor is under an obligation by virtue of 35 U.S.C. 202(c)(6) to include the following statement at the beginning of the application and any patents issued thereon:
“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”
If reference is made in the first sentence(s) of the specification following the title to related applications, the above “Government License Rights” statement should follow immediately as the second paragraph of the specification. If there is no such reference to related applications, the “Government License Rights” statement should
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appear as the first paragraph of the specification. See 37 CFR 1.77(b)(1)-(3).
311 Filing of Notice of Arbitration Awards [R-11.2013]
35 U.S.C. 294 Voluntary arbitration.
(a) A contract involving a patent or any right under a patent may contain a provision requiring arbitration of any dispute relating to patent validity or infringement arising under the contract. In the absence of such a provision, the parties to an existing patent validity or infringement dispute may agree in writing to settle such dispute by arbitration. Any such provision or agreement shall be valid, irrevocable, and enforceable, except for any grounds that exist at law or in equity for revocation of a contract.
(b) Arbitration of such disputes, awards by arbitrators, and confirmation of awards shall be governed by title 9, to the extent such title is not inconsistent with this section. In any such arbitration proceeding, the defenses provided for under section 282 shall be considered by the arbitrator if raised by any party to the proceeding.
(c) An award by an arbitrator shall be final and binding between the parties to the arbitration but shall have no force or effect on any other person. The parties to an arbitration may agree that in the event a patent which is the subject matter of an award is subsequently determined to be invalid or unenforceable in a judgment rendered by a court of competent jurisdiction from which no appeal can or has been taken, such award may be modified by any court of competent jurisdiction upon application by any party to the arbitration. Any such modification shall govern the rights and obligations between such parties from the date of such modification.
(d) When an award is made by an arbitrator, the patentee, his assignee or licensee shall give notice thereof in writing to the Director. There shall be a separate notice prepared for each patent involved in such proceeding. Such notice shall set forth the names and addresses of the parties, the name of the inventor, and the name of the patent owner, shall designate the number of the patent, and shall contain a copy of the award. If an award is modified by a court, the party requesting such modification shall give notice of such modification to the Director. The Director shall, upon receipt of either notice, enter the same in the record of the prosecution of such patent. If the required notice is not filed with the Director, any party to the proceeding may provide such notice to the Director.
(e) The award shall be unenforceable until the notice required by subsection (d) is received by the Director.
37 CFR 1.335 Filing of notice of arbitration awards.
(a) Written notice of any award by an arbitrator pursuant to 35 U.S.C. 294 must be filed in the Patent and Trademark Office by the patentee, or the patentee’s assignee or licensee. If the award involves more than one patent a separate notice must be filed for placement in the file of each patent. The notice must set forth the patent number, the names of the inventor and patent
owner, and the names and addresses of the parties to the arbitration. The notice must also include a copy of the award.
(b) If an award by an arbitrator pursuant to 35 U.S.C. 294 is modified by a court, the party requesting the modification must file in the Patent and Trademark Office, a notice of the modification for placement in the file of each patent to which the modification applies. The notice must set forth the patent number, the names of the inventor and patent owner, and the names and addresses of the parties to the arbitration. The notice must also include a copy of the court’s order modifying the award.
(c) Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be unenforceable until any notices required by paragraph (a) or (b) of this section are filed in the Patent and Trademark Office. If any required notice is not filed by the party designated in paragraph (a) or (b) of this section, any party to the arbitration proceeding may file such a notice.
The written notices required by this section should be directed to the attention of the Office of the Solicitor. The Office of the Solicitor will be responsible for processing such notices.
312 [Reserved]
313 Recording of Licenses, Security Interests, and Documents Other Than Assignments [R-07.2015]
In addition to assignments and documents required to be recorded by Executive Order 9424, upon request, assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents will be recorded in the Office. See 35 U.S.C. 261 and 37 CFR 3.11. Other documents affecting title to applications, patents, and registrations will be recorded as provided in 37 CFR Part 3 or at the discretion of the Director. 37 CFR 3.11(a).
In addition to documents that constitute a transfer or change of title, other documents relating to interests in patents or applications will generally be recorded. Typical of these documents which are accepted for recording are license agreements and agreements which convey a security interest. Such documents are recorded in the public interest in order to give third parties notification of equitable interests or other matters relevant to the ownership of a patent or application. Documents that are not accepted for
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recording include attorney's liens against patents or patent applications. See In re Refusal of Assignment Branch to Record Attorney's Lien, 8 USPQ2d 1446 (Comm'r Pat. 1988).
Any document returned unrecorded, which the sender nevertheless believes represents an unusual case which justifies recordation, may be submitted to the Office of Petitions with a petition under 37 CFR 1.181 requesting recordation of the document.
The recordation of a document is not a determination of the effect of the document on the chain of title. The determination of what, if any, effect a document has on title will be made by the Office at such times as ownership must be established to permit action to be taken by the purported assignee in connection with a patent or an application. See MPEP § 324 and § 325.
314 Certificates of Change of Name or of Merger [R-08.2012]
Certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses are recordable. Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title. Documents of merger are also proper links in the chain of title. They may represent a change of entity as well as a change of name.
315 Indexing Against a Recorded Certificate [R-11.2013]
The Office does not process requests for “indexing” or “cross-referencing” additional patent numbers or application numbers against a document, other than an assignment, previously recorded in the Assignment Division. Such requests do not comply with 37 CFR 3.11, 3.28, and 3.31, which require that each request for recordation include the document to be recorded and a cover sheet.
Therefore, even where a document has already been recorded in the Assignment Division in connection with a patent or patent application, a party that wishes recordation of that document with respect to
additional patents and/or patent applications must submit the following to the Assignment Division:
(A) a copy of the original document (which may consist of the previously recorded papers on which the Assignment Division has stamped the reel and frame numbers at which they are recorded, or a copy of such papers);
(B) a completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07); and
(C) the appropriate recording fee (see 37 CFR 1.21(h) and 3.41).
The Office will assign a new recording date to that submission, update the assignment database, and include the cover sheet and document as part of the official record.
316 [Reserved]
317 Handling of Documents in the Assignment Division [R-11.2013]
All documents and cover sheets submitted for recording are examined for formal requirements in the Assignment Division in order to separate documents which are recordable from those which are not recordable.
Documents and cover sheets that are considered not to be recordable are returned to the sender by the Assignment Division with an explanation. If the sender disagrees or believes that the document represents an unusual case which justifies recordation, the sender may present the question to the Director by way of petition under 37 CFR 1.181, filed with the Office of Petitions.
After an assignment and cover sheet have been recorded, notification will be sent to the name and address indicated on the cover sheet to receive correspondence, showing the reel and frame number.
317.01 Recording Date [R-08.2012]
37 CFR 3.51 Recording date.
The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is
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filed in the Office. A document which does not comply with the identification requirements of § 3.21 will not be recorded. Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available. The returned papers, stamped with the original date of receipt by the Office, will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of filing of the papers as the date of recording of the document. The procedure set forth in § 1.8 or § 1.10 of this chapter may be used for resubmissions of returned papers to have the benefit of the date of deposit in the United States Postal Service. If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document. The specified period to resubmit the returned papers will not be extended.
The date of recording of a document is the date the document meeting the requirements for recording set forth in the regulations is filed in the Office. A document which does not comply with the identification requirements of 37 CFR 3.21 will not be recorded. Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender when a correspondence address is available.
317.02 Correction of Unrecorded Returned Documents and Cover Sheets [R-07.2015]
Assignment documents and cover sheets, or copies of the same, which are returned by Assignment Division will be stamped with the original date of receipt by the Office and will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of receipt of the papers as the date of recording of the document. See 37 CFR 3.51. The certification procedure under 37 CFR 1.8
(see MPEP § 512) or the “Priority Mail Express®” procedure under 37 CFR 1.10 (see MPEP § 513) may be used for resubmissions of returned papers to obtain the benefit of the date of deposit in the United States Postal Service to establish that the papers were returned within the time period specified. If the returned papers are not corrected
and resubmitted within the specified period, the date of receipt of the corrected papers will be considered to be the date of recording of the document. The specified period to resubmit the returned papers will not be extended.
317.03 Effect of Recording [R-11.2013]
37 CFR 3.54 Effect of recording.
The recording of a document pursuant to § 3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration. When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office.
37 CFR 3.56 Conditional assignments.
Assignments which are made conditional on the performance of certain acts or events, such as the payment of money or other condition subsequent, if recorded in the Office, are regarded as absolute assignments for Office purposes until canceled with the written consent of all parties or by the decree of a court of competent jurisdiction. The Office does not determine whether such conditions have been fulfilled.
The recording of a document is not a determination by the Office of the validity of the document or the effect that document has on the title to an application or patent. When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office. See MPEP §§ 324 and 325.
37 CFR 3.56 provides that an assignment, which at the time of its execution is conditional on a given act or event, will be treated by the Office as an absolute assignment. This rule serves as notification as to how a conditional assignment will be treated by the Office in any proceeding requiring a determination of the owner of an application, patent, or registration. Since the Office will not determine whether a condition has been fulfilled, the Office will treat the submission of such an assignment for recordation as signifying that the act or event has occurred. A security agreement that does not convey
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the right, title, and interest of a patent property is not a conditional assignment.
318 Documents Not to be Placed in Files [R-08.2012]
Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.
319 [Reserved]
320 Title Reports [R-08.2012]
The “title report” is a form which can be used under certain circumstances by the Assignment Division to report to someone within the Office the name of the owner of an application or patent as shown by the Assignment Division records on the date the title report is made. For example, a title report is requested by the Reexamination Preprocessing Staff when a request for reexamination is filed. Title reports may not be ordered by applicants or attorneys.
Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report. See MPEP § 303. Examiners may obtain a title report using the PALM Intranet (select “General Information,” insert the appropriate application number, select “Search,” select “Assignments”). The screen resulting from the search may be printed to yield the copy of the title report.
NOTE: The public can request a certified abstract of title. The fee for this service is set forth at 37 CFR
1.19(b)(4). See MPEP § 301.01 for a discussion of which assignment records are publicly available.
321-322 [Reserved]
323 Procedures for Correcting Errors in RecordedAssignment Document [R-08.2012]
An error in a recorded assignment document will be corrected by Assignment Division provided a “corrective document” is submitted. The “corrective document” must include the following:
(A) A copy of the original assignment document with the corrections made therein. The corrections must be initialed and dated by the party conveying the interest; and
(B) A new Recordation Form Cover Sheet (form PTO-1595) (See MPEP § 302.07).
The new recordation form cover sheet must identify the submission as a “corrective document” submission and indicate the reel and frame number where the incorrectly recorded assignment document appears. The original cover sheet should be submitted with the corrective document. The corrective document will be recorded and given a new reel and frame number and recording date. The recording fee set forth in 37 CFR 1.21(h) is required for each patent application and patent against which the corrective document is being recorded. See MPEP § 302.06.
Corrections may be made on the original assignment document, for example, by lining out an incorrect patent or application number in a merger or change of name (see MPEP § 314).
Office policy regarding recordation of assignment documents is directed toward maintaining a complete history of claimed interests in property and, therefore, recorded assignment documents will not be expunged even if subsequently found to be invalid. See In re Ratny, 24 USPQ2d 1713 (Comm’r Pat. 1992). Once a document is recorded with the Assignment Services Division, the Assignment Services Division will not remove the papers from
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the record relating to that application or patent. See MPEP § 323.01(d).
323.01 Correction of Error in Recorded Cover Sheet [R-08.2012]
37 CFR 3.34 Correction of cover sheet errors.
(a) An error in a cover sheet recorded pursuant to § 3.11 will be corrected only if:
(1) The error is apparent when the cover sheet is compared with the recorded document to which it pertains and
(2) A corrected cover sheet is filed for recordation.
(b) The corrected cover sheet must be accompanied by a copy of the document originally submitted for recording and by the recording fee as set forth in § 3.41.
Any alleged error in a recorded cover sheet will only be corrected if the error is apparent from a comparison with the recorded assignment document. The corrected cover sheet should be directed to Assignment Division.
During the recording process, the Assignment Services Division will check to see that a cover sheet is complete and record the data exactly as it appears on the cover sheet. The Assignment Services Division does not compare the cover sheet with the assignment document (or other document affecting title). Once the document is recorded, the Office will issue a notice of recordation.
The party recording the document should carefully review the notice of recordation.
Typographical errors made by the Office will be corrected promptly and without charge upon written request directed to theAssignment Services Division. For any other error, the party recording the document is responsible for filing the papers and paying the recordation fees necessary to correct the error, using
the procedures set forth in MPEP §§ 323.01(a) through 323.01(c).
323.01(a) Typographical Errors in Cover Sheet [R-08.2012]
A party who wishes to correct a typographical error on a recorded cover sheet must submit the following to the Assignment Services Division:
(A) a copy of the originally recorded assignment document (or other document affecting title);
(B) a corrected cover sheet; and
(C) the required fee for each application or patent to be corrected (37 CFR 3.41).
See 37 CFR 3.34. The party requesting correction should also submit a copy of the original cover sheet, to facilitate comparison of the corrected cover sheet with the originally recorded document.
The party filing the corrected cover sheet should check the box titled “Other” in the area of the sheet requesting “Nature of Conveyance,” and indicate that the submission is to correct an error in a cover sheet previously recorded. The party should also identify the reel and frame numbers (if known), and the nature of the correction (e.g., “correction to the spelling of assignor’s name” or “correction of application number or patent number”). The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature. If the error is typographical in nature, the Assignment Services Division will record the corrected cover sheet and correct the Assignment Historical Database.
I. TYPOGRAPHICAL ERRORS IN COVER SHEET THAT DO NOTAFFECT TITLE TOAPPLICATION OR PATENT
If the original cover sheet contains a typographical error that does not affect title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will correct the Assignment Historical Database and permit the recording party to keep the original date of recordation.
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II. TYPOGRAPHICAL ERRORS IN COVER SHEET THAT DO AFFECT TITLE TO APPLICATION OR PATENT
If the original cover sheet contains a typographical error that affects title to the application or patent against which the assignment or name change is recorded, the recording party will not be entitled to keep the original date of recordation. Rather, the Assignment Services Division will correct its automated records and change the date of recordation to the date the corrected cover sheet was received in the Office.
323.01(b) Typographical Errors in Recorded Assignment Document [R-08.2012]
If there is an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the party responsible for an erroneous document (e.g., the assignor) must either create and record a new document or make corrections to the original document and re-record it. If an assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit or declaration in which the assignee identifies the error and requests correction. The affidavit or declaration must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41). See In re Abacab International Computers Ltd., 21 USPQ2d 1078 (Comm’r Pat. 1987).
323.01(c) Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent [R-07.2015]
When the owner of an application or registration discovers that another party has improperly recorded an assignment or name change against the owner’s application or patent, the owner must correct the error by having a corrected cover sheet filed with the Assignment Services Division.
The owner should contact the party who recorded the papers with the erroneous information and request that such party record corrective papers.
However, if the party cannot be located or is unwilling to file corrective papers, then the true owner must record the necessary papers with the Assignment Services Division to correct the error.
Specifically, the owner should submit the following to the Assignment Services Division:
(A) a completed cover sheet identifying the application or patent against which the assignment was improperly recorded;
(B) an affidavit or declaration (1) identifying itself as the correct owner, (2) stating that the previously recorded document was submitted with erroneous information, and (3) providing the reel and frame number of the previously recorded document; and
(C) the required fee (37 CFR 3.41) for each application or patent to be corrected.
The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change, and a statement that the original applicant or patentee or last correct assignee has been, and continues to be, the owner of the application, or patent at issue.
On the corrected cover sheet, the owner should check the box titled “Other” in the area of the cover sheet requesting the “Nature of Conveyance,” and indicate that the submission is to correct an error made in a previously recorded document that erroneously affects the identified application(s), or patent(s). The party should also write the name of the correct owner in both the box requesting the name of the conveying party and the box requesting the name and address of the receiving party; this is to make it clear that ownership never changed and that any assignment or name change recorded against the application(s) or patent(s) was erroneous.
323.01(d) Expungement of Assignment Records [R-07.2015]
Petitions to correct, modify or “expunge” assignment records are rarely granted and will not result in the removal of a document from the assignment records.
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Such petitions are granted only if the petitioner can prove that:
(A) the normal corrective procedures outlined in MPEP § 323.01(a) through § 323.01(c) will not provide the petitioner with adequate relief; and
(B) the integrity of the assignment records will not be affected by granting the petition.
Assignment records are recognized as distinct from application file records. Even if a petition to “expunge” a document is granted with respect to a particular application or patent, the image of the recorded document will remain in the records of the Assignment Services Division at the same reel and frame number, and the image will appear when someone views that reel and frame number. The Office will, however, delete the links to the application or patent that was the subject of the petition, so that no information about the recorded document will appear when someone searches for that application or patent number in the Assignment Historical Database. A redacted version of the "expunged" document must be recorded and will appear in the assignment records instead of the "expunged" document upon the granting of the petition. An additional assignment of the “correct” document may be recorded in addition to the redacted version where the redacted version is incomplete or the original document was not correct.
324 Establishing Right of Assignee To Take Action inApplication Filed Before September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 325 for establishing the right of assignee to take action in an application filed on or after September 16, 2012.]
37 CFR 3.71 (pre-AIA) Prosecution by assignee.
[Editor Note: Not applicable to applications filed under 35 U.S.C. 111(a), 363 or 385 on or after September 16, 2012. See 37 CFR 3.71 for the rule otherwise applicable.]
(a) Patents — conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may, after becoming of record pursuant to paragraph (c) of this section, conduct prosecution of a national patent application or a reexamination proceeding to the exclusion of either the inventive entity, or the assignee(s) previously entitled to conduct prosecution.
(b) Patents — assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are:
(1) A single assignee. An assignee of the entire right, title and interest in the application or patent being reexamined who is of record, or
(2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent being reexamined.
(c) Patents — Becoming of record. An assignee becomes of record either in a national patent application or a reexamination proceeding by filing a statement in compliance with § 3.73(b) that is signed by a party who is authorized to act on behalf of the assignee.
(d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee’s trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).
37 CFR 3.73 (pre-AIA) Establishing right of assignee to take action.
[Editor Note: Not applicable to applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012. See 37 CFR 3.73 for the rule otherwise applicable.]
(a) The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b)(1) In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For trademark matters only, the documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office. For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or
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concurrently is being submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office ( e.g., reel and frame number).
(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
(c) For patent matters only:
(1) Establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.
(2) If the submission under this section is by an assignee of less than the entire right, title and interest, such assignee must indicate the extent (by percentage) of its ownership interest, or the Office may refuse to accept the submission as an establishment of ownership.
The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances. The owner or assignee can sign a reply to an Office action (pre-AIA 37 CFR 1.33(b)(3) and (4)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a terminal disclaimer (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102). The owner or assignee can file an application under pre-AIA 37 CFR 1.47(b) (MPEP § 409.03(b)), appoint its own registered patent practitioner to prosecute an application (pre-AIA 37 CFR 1.32 and MPEP § 402.07), and grant a power to inspect an application (MPEP § 104). The owner or assignee consents to the filing of a reissue application (MPEP § 1410.01), and to the correction of inventorship (MPEP § 602.01(c) or MPEP § 1481).
Effective September 16, 2012, an owner or assignee who is a juristic entity must be represented by a patent practitioner. See 37 CFR 1.31. Juristic entities may sign small entity assertions under 37 CFR 1.27
(MPEP § 509.03), disclaimers under 37 CFR 1.321 (MPEP § 1490), submissions under 37 CFR 3.73 to establish ownership, powers of attorney under 37 CFR 1.32 (MPEP § 402) and powers to inspect under 37 CFR 1.14 (MPEP § 104). However, any other paper submitted on behalf of a juristic entity on or after September 16, 2012, must be signed by a patent practitioner.
See subsection VI below for a discussion of when ownership must be established to take action in a patent matter, and subsection VII below for a discussion of when ownership need not be established to sign certain papers.
I. THE ASSIGNEE/OWNER THAT CAN TAKE ACTION IN PATENT MATTERS
The provisions of pre-AIA 37 CFR 3.71(b)(1) and(2) identify the owner or assignee that can take action in patent matters, e.g., the assignee which may conduct the prosecution of a U.S. national application for a patent (35 U.S.C. 111(a)), or any other patent proceeding (e.g., a reexamination proceeding, an interference proceeding). A national patent application is owned by one of the following individual or composite entities:
(A) the inventor(s);
(B) an assignee or multiple assignees of the inventor(s); or
(C) some combination of the assignee(s), and inventor(s) who have not assigned away their right, title and interest in the application.
Pursuant to pre-AIA 37 CFR 3.73(b), a party must be established as the assignee by satisfying the requirements of that subsection, in order to be recognized as an owner or part owner, for purposes of taking action in patent matters before the Office.
As discussed in subsection II below, all parties having any portion of the ownership must join in “taking action” (i.e., act together as a composite entity) in order to be entitled to conduct the prosecution in patent matters.
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A. Individual and Partial Assignees
If there is a single assignee of the entire right, title and interest in the patent application, pre-AIA 37 CFR 3.71(b)(1) provides that the single assignee (i.e., individual assignee) may act alone to conduct the prosecution of an application or other patent proceeding (upon complying with pre-AIA 37 CFR 3.73(b)).
If there is no assignee of the entire right, title and interest of the patent application, then two possibilities exist:
(A) The application has not been assigned, and ownership resides solely in the inventor(s) (i.e., the applicant(s)). In this situation, pre-AIA 37 CFR 3.71 does not apply, since there is no assignee, and the combination of all inventors is needed to conduct the prosecution of an application.
(B) The application has been assigned by at least one of the inventors, and there is thus at least one “partial assignee.” As defined in pre-AIA 37 CFR 3.71(b)(2), a partial assignee is any assignee of record who has less than the entire right, title and interest in the application. The application is owned by the combination of all partial assignees and all inventors who have not assigned away their right, title and interest in the application.
Where at least one inventor retains an ownership interest together with the partial assignee(s), the combination of all partial assignees and inventors retaining ownership interest is needed to conduct the prosecution of an application, unless one or more inventors have refused to join in the filing of the application and a petition under pre-AIA 37 CFR 1.47 has been granted. If a petition under pre-AIA 37 CFR 1.47 has been granted, then the assignee need only be the assignee of the entire interest of the pre-AIA 37 CFR 1.47 applicant to sign a power of attorney. See pre-AIA 37 CFR 1.32(b)(4). Where an applicant retains an ownership interest, the combination of all partial assignees and the applicant with the ownership interest is needed to conduct the prosecution of an application.
Where a reissue application is filed to correct inventorship in the patent by the deletion of the name of inventor X and inventor X has not assigned his/her
rights to the patent, inventor X has an ownership interest in the patent. Inventor X must consent to the filing of the reissue application, even though inventor X is being deleted and need not sign the reissue oath or declaration. If inventor X has assigned his/her rights to the patent, then inventor X’s assignee must consent to the filing of the reissue application.
B. Example
Inventors A and B invent a process and file their application, signing the declaration for the patent application. Inventors A and B together may conduct prosecution of the application. Inventor A then assigns all his/her rights in the application to Corporation X. As soon as Corporation X (now a partial assignee as per pre-AIA 37 CFR 3.71(b)(2)) is made of record in the application as a partial assignee (by filing a statement pursuant to pre-AIA 37 CFR 3.73(b) stating Corporation X is an assignee of an undivided interest in the entirety of the application), Corporation X and Inventor B together may conduct prosecution of the application. Corporation X and Inventor B then both assign their rights in the application to Corporation Y. As soon as Corporation Y (now an assignee of the entire right, title and interest) is made of record in the application as the assignee (by filing a statement pursuant to pre-AIA 37 CFR 3.73(b) stating it is assignee of the entire right, title and interest), CorporationY is then the sole (one hundred percent) owner and thus may, by itself, conduct prosecution of the application.
II. ESTABLISHING OWNERSHIP
When an assignee first seeks to take action in a matter before the Office with respect to a patent application filed before September 16, 2012, or a with respect to a patent or a reexamination proceeding relating to a patent that issued from an application that was filed before September 16, 2012, the assignee must establish its ownership of the property to the satisfaction of the Director. Pre-AIA 37 CFR 3.73(b). The assignee’s ownership may be established under pre-AIA 37 CFR 3.73(b) by submitting to the Office, in the Office file related to the matter in which action is sought to be taken:
(A) documentary evidence of a chain of title from the original owner to the assignee (e.g., copy
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of an executed assignment submitted for recording) and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is, submitted for recordation pursuant to 37 CFR 3.11; or
(B) a statement specifying, by reel and frame number, where such evidence is recorded in the Office.
Documents submitted to establish ownership are required to be recorded, or submitted for recordation pursuant to 37 CFR 3.11, as a condition to permitting the assignee to take action in a matter pending before the Office.
The action taken by the assignee, and the pre-AIA 37 CFR 3.73(b) submission establishing that the assignee is the appropriate assignee to take such action, can be combined in one paper.
The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted. Pre-AIA 37 CFR 3.73(c). If the submission establishing ownership is not present, the action sought to be taken will not be given effect. If the submission establishing ownership is submitted at a later date, that date will be the date of the request for action or the date of the assignee’s action taken.
The submission establishing ownership by the assignee must be signed by a party who is authorized to act on behalf of the assignee. See discussion below. Once pre-AIA 37 CFR 3.73(b) is complied with by an assignee, that assignee may continue to take action in that application, patent, or reexamination proceeding without filing a pre-AIA 37 CFR 3.73(b) submission each time, provided that ownership has not changed.
The submission establishing ownership by the assignee pursuant to pre-AIA 37 CFR 3.73(b) is generally referred to as the “statement under 37 CFR 3.73(b)” or the “37 CFR 3.73(b) statement.” A duplicate copy of the pre-AIA 37 CFR 3.73(b) statement is not required and should not be submitted. See 37 CFR 1.4(b) and MPEP § 502.04.
III. CONTINUING APPLICATIONS
When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must:
(A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or
(B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).
When a continuation-in-part application is filed before September 16, 2012 by an assignee, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed. When in a design application, a continued prosecution application (CPA) under 37 CFR 1.53(d) is filed, the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.
IV. REQUESTS FOR CONTINUED EXAMINATION
Where a Request for Continued Examination of an application is filed under 37 CFR 1.114, the application is not considered to be abandoned; rather the finality of the Office action is withdrawn and the prosecution continues. Thus, the statement under pre-AIA 37 CFR 3.73(b) in the application will continue to serve as the statement establishing ownership.
V. PARTY WHO MUST SIGN
The submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. The submission under pre-AIA 37 CFR 3.73(b) may be signed on behalf of the assignee in the following manner if the assignee is an organization (e.g., corporation, partnership, university, government agency, etc.):
(A) The submission may be signed by a person in the organization having apparent authority to sign on behalf of the organization. Pre-AIA 37 CFR 3.73(b)(2)(ii). An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director. Modifications of these
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basic titles are acceptable, such as vice-president for sales, executive vice-president, assistant treasurer, vice-chairman of the board of directors. In foreign countries, a person who holds the title “Manager” or “Director” is normally an officer and is presumed to have the authority to sign on behalf of the organization. A person having a title (administrator, general counsel) that does not clearly set forth that person as an officer of the assignee is not presumed to have authority to sign the submission on behalf of the assignee. A power of attorney (pre-AIA 37 CFR 1.32(b)(4)) to a patent practitioner to prosecute a patent application executed by the applicant or the assignee of the entire interest does not make that practitioner an official of an assignee or empower the practitioner to sign the submission on behalf of the assignee.
(B) The submission may be signed by any person, if the submission sets forth that the person signing is authorized (or empowered) to act on behalf of the assignee, i.e., to sign the submission on behalf of the assignee. Pre-AIA 37 CFR 3.73(b)(2)(i).
(C) The submission may be signed by a person empowered by an organizational resolution (e.g., corporate resolution, partnership resolution) to sign the submission on behalf of the assignee, if a copy of the resolution is, or was previously, submitted in the record.
Where a submission does not comply with (A), (B), or (C) above, evidence of the person’s authority to sign will be required.
VI. WHEN OWNERSHIP MUST BE ESTABLISHED
Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP §§ 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP § 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); consents to the correction of inventorship in a patent (MPEP § 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP § 1306). Effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner. See 37 CFR 1.31.
VII. WHEN OWNERSHIP NEED NOT BE ESTABLISHED
Examples of situations where ownership need not be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a small entity statement (MPEP § 509.03); signs a statement of common ownership of two inventions (MPEP § 706.02(l)(2)); signs a NASA or DOE property rights statement (MPEP § 151); signs an affidavit under 37 CFR 1.131(a) where the inventor is unavailable (MPEP § 715.04); signs a certificate under 37 CFR 1.8 (MPEP § 512); or files a request for reexamination of a patent under 37 CFR 1.510 (MPEP § 2210).
VIII. MULTIPLE ASSIGNEES
When an assignee seeks to take action in a matter before the Office with respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b). In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners). Pre-AIA 37 CFR 3.73(c)(2). If the extent of the partial assignee’s ownership interest is not set forth in the submission under pre-AIA 37 CFR 3.73(b), the Office may refuse to accept the submission as an establishment of ownership interest.
IX. CONFLICTING PRE-AIA 37 CFR 3.73(b) STATEMENTS
Where there are two or more conflicting pre-AIA 37 CFR 3.73(b) statements in an application or other Office proceeding, the statement with the latest date of submission to the Office will normally control as to establishment of the assignee. If, however, the ownership established as controlling is contested on the record by another party who has submitted a conflicting pre-AIA 37 CFR 3.73(b) statement, then the application or other proceeding shall be forwarded by the Office official in charge of the application or other proceeding to the Office of Patent Legal Administration for resolving any procedural issues. Generally, where there are two or more conflicting pre-AIA 37 CFR 3.73(b) statements
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in an application, the ownership entity that filed that application will be permitted to conduct the prosecution, and the other party that submitted a pre-AIA 37 CFR 3.73(b) statement to establish its ownership may wish to consider filing its own application.
X. FORMS
Form PTO/SB/96 may be used to establish ownership under pre-AIA 37 CFR 3.73(b).
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325 Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 324 for establishing the right of assignee to take action in an application filed before September 16, 2012.]
37 CFR 3.71 Prosecution by assignee.
[Editor Note: Applicable to patent applications under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012. See pre-AIA 37 CFR 3.71 for the rule otherwise applicable.]
(a) Patents—conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may conduct prosecution of a national patent application as the applicant under § 1.46 of this title, or conduct prosecution of a supplemental examination or reexamination proceeding, to the exclusion of the inventor or previous applicant or patent owner. Conflicts between purported assignees are handled in accordance with § 3.73(c)(3).
(b) Patents—assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent as the applicant under § 1.46 of this title or a supplemental examination or reexamination proceeding are:
(1) A single assignee. An assignee of the entire right, title and interest in the application or patent, or
(2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent, who together own the entire right, title and interest in the application or patent. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent. The word "assignee" as used in this chapter means with respect to patent matters the single assignee of the entire right, title and interest in the application or patent if there is such a single assignee, or all of the partial assignees, or all of the partial assignee and inventors who have not assigned their interest in the application or patent, who together own the entire right, title and interest in the application or patent.
(c) Patents—Becoming of record. An assignee becomes of record as the applicant in a national patent application under § 1.46 of this title, and in a supplemental examination or reexamination proceeding, by filing a statement in compliance with § 3.73(c) that is signed by a party who is authorized to act on behalf of the assignee.
(d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee’s trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).
37 CFR 3.73 Establishing right of assignee to take action.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a), 363 or 385 on or after September 16, 2012. See pre-AIA 37 CFR 3.73 for the rule otherwise applicable.]
(a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(1) Documentary evidence of a chain of title from the original owner to the assignee ( e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or
(2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office ( e.g., reel and frame number).
(c)(1) In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee ( e.g., copy of an executed assignment). The submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office ( e.g., reel and frame number).
(2) If the submission is by an assignee of less than the entire right, title and interest ( e.g., more than one assignee exists) the Office may refuse to accept the submission as an establishment of ownership unless:
(i) Each assignee establishes the extent (by percentage) of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties including inventors; or
(ii) Each assignee submits a statement identifying the parties including inventors who together own the entire right,
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title and interest and stating that all the identified parties own the entire right, title and interest.
(3) If two or more purported assignees file conflicting statements under paragraph (c)(1) of this section, the Director will determine which, if any, purported assignee will be permitted to control prosecution of the application.
(d) The submission establishing ownership under paragraph (b) or (c) of this section must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(1) Including a statement that the person signing the submission is authorized to act on behalf of the assignee;
(2) Being signed by a person having apparent authority to sign on behalf of the assignee; or
(3) For patent matters only, being signed by a practitioner of record.
The owner or assignee of a patent property can take action in a patent application as the applicant. However, an owner or assignee that is a juristic entity must be represented by a patent practitioner. See 37 CFR 1.31 and 1.33(b)(3).
An assignee who is not the original applicant must become the applicant under 37 CFR 1.46(a) in order to request or take action in a patent application. A request to change the applicant under 37 CFR 1.46(c)(2) must be filed and must be accompanied by an application data sheet under 37 CFR 1.76 specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 37 CFR 3.73.
As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102). The owner or assignee can file an application under 37 CFR 1.46, appoint its own registered patent practitioner to prosecute an application (37 CFR 1.32), and grant a power to inspect an application (MPEP § 104). The owner or assignee can consent to the filing of a reissue application (MPEP § 1410.01), and to the correction of inventorship (MPEP § 602.01(c) or MPEP § 1481).
Effective September 16, 2012, juristic entities may sign small entity assertions under 37 CFR 1.27 (MPEP § 509.03 ), disclaimers under 37 CFR 1.321 (MPEP § 1490), submissions under 37 CFR 3.73 to establish ownership, powers of attorney under 37 CFR 1.32 (MPEP § 402) and powers to inspect under 37 CFR 1.14 (MPEP § 104). However, any other paper submitted on behalf of a juristic entity on or after September 16, 2012, must be signed by a patent practitioner.
See subsection VI below for a discussion of when ownership must be established to take action in a patent matter, and subsection VII below for a discussion of when ownership need not be established to sign certain papers.
I. THE ASSIGNEE/OWNER THAT CAN TAKE ACTION IN PATENT MATTERS
The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. 37 CFR 3.73(a).
The provisions of 37 CFR 3.71(b) provide that the assignee(s) who may conduct either the prosecution of a national application for patent as the applicant under 37 CFR 1.46 or a supplemental examination or reexamination proceeding are:
(1) a single assignee who is the assignee of the entire right, title and interest in the application or patent, or
(2) all partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent, who together own the entire right, title and interest in the application or patent.
As discussed in subsection II below, all parties having any portion of the ownership must join in “taking action” (i.e., act together as a composite entity) in order to be entitled to conduct the prosecution in patent matters. For a discussion of the applicant for patent, see MPEP § 409 et seq. and § 605 et seq.
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A. Individual and Partial Assignees
If there is a single assignee of the entire right, title and interest in the patent application, 37 CFR 3.71(b)(1) provides that the single assignee (i.e., individual assignee) may act alone to conduct the prosecution of an application or other patent proceeding. If the assignee is not already the applicant under 37 CFR 1.46 in the patent application, then the assignee must file a request to change the applicant under 37 CFR 1.46(c)(2).
If there is no assignee of the entire right, title and interest of the patent application, then either:
(1) The application has not been assigned, 37 CFR 3.71 is not applicable, and the prosecution must be conducted by the applicant. The word "applicant" refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in 37 CFR 1.43, 1.45, or 1.46. See MPEP § 409 et seq. and § 605 et seq.
(2) The application has been assigned by at least one of the inventors, and there is thus at least one “partial assignee.” As defined in 37 CFR 3.71(b)(2), a partial assignee is any assignee of record who has less than the entire right, title and interest in the application. The application is owned by the combination of all partial assignees and all inventors who have not assigned away their right, title and interest in the application.
Where at least one inventor retains an ownership interest together with the partial assignee(s), the combination of all partial assignees and inventors retaining ownership interest is needed to conduct the prosecution of an application, unless one or more inventors have refused to join in the filing of the application and a petition under 37 CFR 1.46(b)(2) has been granted.
Where a reissue application is filed to correct inventorship in the patent by the deletion of the name of inventor X and inventor X has not assigned his/her rights to the patent, inventor X has an ownership interest in the patent. Inventor X must consent to the filing of the reissue application, even though inventor X is being deleted; however, inventor X need not sign the reissue oath or declaration. If inventor X has assigned his/her rights to the patent, then
inventor X’s assignee must consent to the filing of the reissue application.
B. Example
Inventors A and B invent a process and file a patent application as the applicant, naming both inventors. Inventors A and B together may conduct prosecution of the application.
Inventor A then assigns all his/her rights in the application to Corporation X. Corporation X and Inventor B together may conduct prosecution of the application only if Corporation X (now a partial assignee as per 37 CFR 3.71(b)(2)) is made of record in the application as a partial assignee and the applicant is changed under 37 CFR 1.46(c)(2) to Corporation X and Inventor B. Pursuant to 37 CFR 1.46(c)(2), an application data sheet must be filed specifying the applicant (i.e., Corporation X and Inventor B) in the applicant information section, and a statement pursuant to 37 CFR 3.73(c) must be filed establishing that Corporation X is an assignee of an undivided interest in the entirety of the application.
Corporation X and Inventor B then both assign their rights in the application to Corporation Y. CorporationY is then the sole (one hundred percent) owner and may, by itself, conduct prosecution of the application after Corporation Y (now an assignee of the entire right, title and interest) is made of record in the application as the applicant (by filing a request to change the applicant under 37 CFR 1.46(c)(2), an application data sheet pursuant to 37 CFR 1.76 specifying the applicant as Corporation Y, and a statement pursuant to 37 CFR 3.73(c) establishing that Corporation Y is assignee of the entire right, title and interest).
II. ESTABLISHING OWNERSHIP
An assignee who is not the original applicant must become the applicant under 37 CFR 1.46 in order to request or take action in a patent application. When an assignee who is not the original applicant first seeks to take action in a matter before the Office with respect to a patent application filed on or after September 16, 2012, the assignee must establish its ownership of the property to the satisfaction of the Director. 37 CFR 3.73(c). The assignee must also
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file a request to change the applicant under 37 CFR 1.46(c)(2) and an application data sheet under 37 CFR 1.76 specifying the applicant in the application information section. When an assignee who was not the original applicant or patent owner first seeks to take action in a matter before the Office with respect to a reissue patent application, patent, reexamination proceeding or supplemental examination proceeding for a patent that issued from an application filed on or after September 16, 2012, the assignee must establish its ownership of the property to the satisfaction of the Director. 37 CFR 3.73(c).
The statement establishing assignee’s ownership under 37 CFR 3.73(c) must be filed in the Office file related to the matter in which action is sought to be taken, and must contain:
(A) documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment submitted for recording) and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is, submitted for recordation pursuant to 37 CFR 3.11; or
(B) a statement specifying, by reel and frame number, where such evidence is recorded in the Office.
Documents submitted to establish ownership are required to be recorded, or submitted for recordation pursuant to 37 CFR 3.11, as a condition to permitting the assignee to take action in a matter pending before the Office.
The action taken by the assignee, and the 37 CFR 3.73(c) submission establishing that the assignee is the appropriate assignee to take such action, can be combined in one paper.
The establishment of ownership by the assignee (and the request for change of applicant under 37 CFR 1.46(c)(2)) must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted. 37 CFR 3.73(c). If the submission establishing ownership and the request for change of applicant are not present, the action sought to be taken will not be given effect. If the submission establishing ownership is submitted at a later date,
that date will be the date of the request for action or the date of the assignee’s action taken.
The submission establishing ownership by the assignee must be signed by a party who is authorized to act on behalf of the assignee or a patent practitioner of record. See discussion below. Once 37 CFR 3.73(c) is complied with by an assignee, that assignee may continue to take action in that application, patent, or reexamination proceeding without filing a 37 CFR 3.73(c) submission each time, provided that ownership has not changed.
Where there is more than one assignee (i.e., partial assignees) or a combination of partial assignees and inventors who have not assigned away their right, title and interest in the application, each owner must submit a statement under 37 CFR 3.73(c) that either:
(A) Specifies (by percentage) the extent of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties. 37 CFR 3.73(c)(2)(i); or
(B) Identifies the parties including inventors who together own the entire right, title and interest and state that all the identified parties own the entire right, title and interest. 37 CFR 3.73(c)(2)(ii).
The submission establishing ownership by the assignee pursuant to 37 CFR 3.73(c) is generally referred to as the “statement under 37 CFR 3.73(c)” or the “37 CFR 3.73(c) statement.” A duplicate copy of the 37 CFR 3.73(c) statement is not required and should not be submitted. See 37 CFR 1.4(b)and MPEP § 502.04.
III. CONTINUING APPLICATIONS
When an assignee files a continuing application under 37 CFR 1.53(b), the application papers must:
(A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) or under 37 CFR 3.73(c) in the parent application; or
(B) contain a newly executed statement under 37 CFR 3.73(c).
When a CPA under 37 CFR 1.53(d) is filed in a design application, the statement filed under pre-AIA 37 CFR 3.73(b) or under 37 CFR 3.73(c) in the
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parent application will serve as the statement for the CPA.
IV. REQUESTS FOR CONTINUED EXAMINATION
Where a Request for Continued Examination (RCE) of an application is filed under 37 CFR 1.114, the application is not considered to be abandoned; rather the finality of the Office action is withdrawn and the prosecution continues. Thus, the statement under pre-AIA 37 CFR 3.73(b) or under 37 CFR 3.73(c) in the application will continue to serve as the statement establishing ownership.
V. PARTY WHO MUST SIGN
The submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. The submission under 37 CFR 3.73(c) may be signed on behalf of the assignee in the following manner if the assignee is an organization (e.g., corporation, partnership, university, government agency, etc.):
(A) The submission may be signed by a person in the organization having apparent authority to sign on behalf of the organization. 37 CFR 3.73(d)(2). An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director. Modifications of these basic titles are acceptable, such as vice-president for sales, executive vice-president, assistant treasurer, vice-chairman of the board of directors. In foreign countries, a person who holds the title “Manager” or “Director” is normally an officer and is presumed to have the authority to sign on behalf of the organization. A person having a title (administrator, general counsel) that does not clearly set forth that person as an officer of the assignee is not presumed to have authority to sign the submission on behalf of the assignee. A power of attorney (37 CFR 1.32(b)(4)) to a patent practitioner to prosecute a patent application executed by the applicant or the assignee of the entire interest does not make that practitioner an official of an assignee or empower the practitioner to sign the submission on behalf of the assignee.
(B) The submission may be signed by any person, if the submission sets forth that the person signing is authorized (or empowered) to act on behalf of the assignee, i.e., to sign the submission on behalf of the assignee. 37 CFR 3.73(d)(1) .
(C) The submission may be signed by a patent practitioner of record. 37 CFR 3.73(d)(3). A patent practitioner will be considered “of record” where the patent practitioner was appointed in a power of attorney already of record, or where the 37 CFR 3.73(c) statement is accompanied by a power of attorney that appoints the patent practitioner who signed the statement.
(D) The submission may be signed by a person empowered by an organizational resolution (e.g., corporate resolution, partnership resolution) to sign the submission on behalf of the assignee, if a copy of the resolution is, or was previously, submitted in the record.
Where a submission does not comply with (A), (B), (C) or (D) above, evidence of the person’s authority to sign will be required.
VI. WHEN OWNERSHIP MUST BE ESTABLISHED
Examples of situations where ownership must be established under 37 CFR 3.73(c) are when the assignee who is not the applicant: signs a request for status of an application or gives a power to inspect an application (MPEP § 102 and § 104); appoints its own registered attorney or agent to prosecute an application (37 CFR 3.71 and MPEP § 402.07 ); signs a disclaimer under 37 CFR 1.321 (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); or signs a Fee Transmittal (PTOL-85B) (MPEP § 1306 ). Effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.
VII. WHEN OWNERSHIP NEED NOT BE ESTABLISHED
Examples of situations where ownership need not be established under 37 CFR 3.73(c) are when the assignee: signs a small entity statement under 37 CFR 1.27 (MPEP § 509.03); signs a statement of common ownership of two inventions ( MPEP § 706.02(l)(2)); signs a NASA or DOE property rights
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statement (MPEP § 151 ); signs an affidavit under 37 CFR 1.131(a) where the inventor is unavailable (MPEP § 715.04); signs a certificate under 37 CFR 1.8 (MPEP § 512); or files a request for reexamination of a patent under 37 CFR 1.510 (MPEP § 2210).
VIII. MULTIPLE ASSIGNEES
When an assignee seeks to take action in a matter before the Office with respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submission under 37 CFR 3.73(c). In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners). 37 CFR 3.73(c)(2)(i). Where there are unspecified percentages of ownership, each partial assignee must submit a statement identifying the parties including inventors who together own the entire right, title and interest and state that all the identified parties own the entire right, title and interest. 37 CFR 3.73(c)(2)(ii). If the extent of the partial assignee’s ownership interest is not set forth in the submission under 37 CFR 3.73(c), the Office may refuse to
accept the submission as an establishment of ownership interest.
IX. CONFLICTING 37 CFR 3.73(c) STATEMENTS
Where two or more purported assignees file conflicting 37 CFR 3.73(c) statements in an application or other Office proceeding, the Director will determine which, if any, purported assignee will be permitted to control prosecution of the application. 37 CFR 3.73(c)(3). Additionally, if the ownership established as controlling is contested on the record by another party who has submitted a conflicting 37 CFR 3.73(c) statement, then the application or other proceeding shall be forwarded by the Office official in charge of the application or other proceeding to the Office of Patent Legal Administration for resolving any procedural issues. Generally, where there are two or more conflicting 37 CFR 3.73(c) statements in an application, the applicant will be permitted to conduct the prosecution, and the other party that submitted a 37 CFR 3.73(c) statement to establish its ownership may wish to consider filing its own application.
X. FORMS
Form PTO/AIA/96 may be used to establish ownership under 37 CFR 3.73(c).
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Chapter 400 Representative of Applicant or Owner
U.S. Patent and Trademark Office Cannot Aid in Selection of Patent Practitioner
401
Power of Attorney; Naming Representative
402
Limited Recognition in Patent Matters402.01 Appointment of Power of Attorney402.02
Appointment inApplication Filed On or After September 16, 2012
402.02(a)
Appointment inApplication Filed Before September 16, 2012
402.02(b)
Signature Requirements for Papers Filed in an Application
402.03
[Reserved]402.04 Revocation of Power of Attorney402.05
Applicant Revocation - Application Filed On or After September 16, 2012
402.05(a)
Applicant Revocation - Application Filed Before September 16, 2012
402.05(b)
Attorney or Agent Withdraws402.06 Assignee Revocation of Power of Attorney of Applicant and
402.07
Appointment of New Power of Attorney Application in Interference or Derivation Proceeding
402.08
International Application402.09 Appointment/Revocation by Less Than All Applicants or Owners
402.10
Correspondence — With Whom Held; Customer Number Practice
403
[Reserved]403.01 Correspondence in Applications Filed On or After September 16, 2012
403.01(a)
Correspondence in Applications Filed Before September 16, 2012
403.01(b)
Two Patent Practitioners for Same Application
403.02
[Reserved]404 Interviews With Patent Practitioner Not of Record
405
Death of Patent Practitioner406 Suspended or Excluded Patent Practitioner
407
Interviews With Patent Practitioner of Record
408
Death, Legal Incapacity, or Unavailability of Inventor
409
[Reserved]409.01 Deceased or Legally Incapacitated Inventor -
409.01(a)
Application Filed on or After September 16, 2012 Deceased or Legally Incapacitated Inventor-
409.01(b)
Application Filed Before September 16, 2012
Unavailable Joint Inventor – Application Filed on or after September 16, 2012
409.02
Unavailability of Inventor - Application Filed Before September 16, 2012
409.03
At Least One Joint Inventor Available
409.03(a)
No Inventor Available409.03(b) Unavailable Legal Representative of Deceased Inventor
409.03(c)
Proof of Unavailability or Refusal409.03(d) Statement of Last Known Address
409.03(e)
Proof of Proprietary Interest409.03(f) Proof of Irreparable Damage409.03(g) Processing and Acceptance of a Pre-AIA 37 CFR 1.47 Application
409.03(h)
Rights of the Nonsigning Inventor409.03(i) Action Following Acceptance of a Pre-AIA 37 CFR 1.47 Application
409.03(j)
[Reserved]409.04 Application For Patent by an Assignee, Obligated Assignee, or a
409.05
Person Who Otherwise Shows Sufficient Proprietary Interest – Application Filed On or After September 16, 2012
Representations to the U.S. Patent and Trademark Office
410
401 U.S. Patent and Trademark Office CannotAid in Selection of Patent Practitioner [R-11.2013]
37 CFR 1.31 Applicant may be represented by one or more patent practitioners or joint inventors.
An applicant for patent may file and prosecute the applicant's own case, or the applicant may give power of attorney so as to be represented by one or more patent practitioners or joint
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inventors, except that a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner even if the juristic entity is the applicant. The Office cannot aid in the selection of a patent practitioner.
An applicant who is a juristic entity must be represented by a patent practitioner. An applicant for patent, other than a juristic entity (e.g., organizational assignee), may file and prosecute his or her own application, and thus act as his or her own representative (pro se ) before the Office. See 37 CFR 1.31. In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2). See 37 CFR 1.4(d)(4). See also MPEP §§ 402.03 and 410.
If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant that it may be desirable to employ a registered patent attorney or agent. It is suggested that form paragraph 4.10 be incorporated in an Office action if the use of an attorney or agent is considered desirable and if patentable subject matter exists in the application.
¶ 4.10 Employ Services of Attorney or Agent
An examination of this application reveals that applicant is unfamiliar with patent prosecution procedure. While an applicant may prosecute the application (except that a juristic entity must be represented by a patent practitioner, 37 CFR 1.31), lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting an attorney or agent.
A listing of registered patent attorneys and agents is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent attorneys and agents located in their area by writing to the Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Examiner Note:
The examiner should not suggest that applicant employ an attorney or agent if the application appears to contain no patentable subject matter.
402 Power of Attorney; Naming Representative [R-07.2015]
37 CFR 1.32 Power of attorney. *****
(c) A power of attorney may only name as representative:
(1) One or more joint inventors (§ 1.45);
(2) Those registered patent practitioners associated with a Customer Number;
(3) Ten or fewer patent practitioners, stating the name and registration number of each patent practitioner. Except as provided in paragraph (c)(1) or (c)(2) of this section, the Office will not recognize more than ten patent practitioners as being of record in an application or patent. If a power of attorney names more than ten patent practitioners, such power of attorney must be accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record in the application or patent to which the power of attorney is directed.
*****
I. NAMING REPRESENTATIVE IN A POWER OF ATTORNEY
An applicant may give a power of attorney to one or more patent practitioners or one or more joint inventors. A power of attorney to a joint inventor will be recognized even though the one to whom it is given is not a registered practitioner. See 37 CFR 1.31 and 37 CFR 1.32(c)(1).
Powers of attorney naming firms of attorneys or agents filed in patent applications will not be recognized. Furthermore, a power of attorney that names more than ten patent practitioners will only be entered if Customer Number practice is used or if such power of attorney is accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record in the application or patent to which the power of attorney is directed. If a power of attorney is not entered because more than ten patent practitioners were named, a copy of the power of attorney should be refiled with the separate paper as set forth in 37 CFR 1.32(c)(3).
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Powers of attorney naming joint inventors, one or more registered individuals, or all registered practitioners associated with a Customer Number, may be made. See MPEP § 403 for Customer Number practice. Where a power of attorney is given to ten or fewer patent practitioners, 37 CFR 1.32(c)(3) requires the name and registration number of each patent practitioner to be stated in the power of attorney. If the name submitted on the power of attorney does not match the name associated with the registration number provided in the Office of Enrollment and Discipline records for patent practitioners, the person that the Office will recognize as being of record will be the person associated with the registration number provided, because the Office enters the registration number, not the name, when making the practitioner of record. Accordingly, if the wrong registration number is provided, a new power of attorney will be required to correct the error.
See MPEP § 601.03(a) for change of correspondence address in applications filed on or after September 16, 2012; see MPEP § 601.03(b) for change of correspondence address in applications filed before September 16, 2012. See MPEP § 201.06(c), 402.02(a), and 402.02(b) for change in the power of attorney in continuation or divisional applications filed under 37 CFR 1.53(b). See MPEP § 403 for the addition and/or deletion of a practitioner from the list of practitioners associated with a Customer Number. For a representative of a requester of reexamination, see MPEP § 2213.
II. REGISTERED PRACTITIONERS
For a power of attorney to be valid, the attorney or agent appointed must be registered to practice before the U.S. Patent and Trademark Office in accordance with 37 CFR 11.6. Note that under 37 CFR 11.6(c), certain foreigners who are in good standing before the patent office of the country in which they reside and practice may be registered as a patent agent to practice before the Office for the limited purpose of presenting and prosecuting patent applications of applicants located in such country.
Any power of attorney given to a practitioner who has been suspended or disbarred by the Office is ineffective, and does not authorize the person to
practice before the Office or to represent applicants or patentees in patent matters.
III. INEFFECTIVE POWER OF ATTORNEY
When an application for patent is filed accompanied by a power of attorney to a person who is neither registered to practice before the United States Patent and Trademark Office nor named as the inventor or a joint inventor in the application, the Office of Patent Application Processing will send the official filing receipt directly to the first named applicant, together with an explanatory letter. A copy of the letter will be sent to the person named in the power and a copy placed in the file without being given a paper number. The name of the unregistered person will not be added to the list of patent practitioners of record for the application in the Office’s electronic records.
Form paragraph 4.09 may be used to notify applicant that the attorney or agent is not registered.
¶ 4.09 Unregistered Attorney or Agent
An examination of this application reveals that applicant has attempted to appoint an attorney or agent who is neither registered to practice before the U.S. Patent and Trademark Office in patent matters nor named as an inventor in the application, contrary to the Code of Federal Regulations, 37 CFR 1.31 and 1.32. Therefore, the appointment is void, ab initio, and the Office will not recognize the appointment. All communications from the Office will be addressed to the first named applicant, unless specific instructions to the contrary are supplied by the applicant(s) for patent or owner(s).
For applications filed before September 16, 2012, in the absence of the appointment of a registered practitioner, all papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
For applications filed on or after September 16, 2012, all papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.
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While an applicant (other than a juristic entity) may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is, therefore, encouraged to secure the services of a registered patent attorney or agent (i.e., registered to practice before the U.S. Patent and Trademark Office) to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecution.
The Office cannot aid you in selecting a registered attorney or agent, however, a list of attorneys and agents registered to practice before the U.S. Patent and Trademark Office is available at https://oedci.uspto.gov/OEDCI/. For assistance locating this information, contact the Office of Enrollment and Discipline at (571) 272-4097 or call the Inventors Assistance Center toll-free number, 1(800)786-9199.
Examiner Note:
This form paragraph is to be used ONLY after ensuring that the named representative is not registered with the Office. A PALM inquiry should be first made and if no listing is given, the Office of Enrollment and Discipline should be contacted to determine the current “recognition” status of the individual named by the applicant in a “power of attorney.” If the named individual is NOT registered or otherwise recognized by the Office, the correspondence address of record should be promptly changed to that of the first named applicant unless applicant specifically provides a different “correspondence address.” A copy of the Office communication incorporating this form paragraph should also be mailed to the unregistered individual named by the applicant in the “power of attorney.”
402.01 Limited Recognition in Patent Matters [R-07.2015]
37 CFR 11.9 Limited recognition in patent matters.
(a) Any individual not registered under §11.6 may, upon a showing of circumstances which render it necessary or justifiable, and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications. Limited recognition under this paragraph shall not extend further than the application or applications specified. Limited recognition shall not be granted while individuals who have passed the examination or for whom the examination has been waived are awaiting registration to practice before the Office in patent matters.
(b) A nonimmigrant alien residing in the United States and fulfilling the provisions of §11.7(a) and (b) may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application. Limited recognition shall be granted for a period consistent with the terms of authorized employment or training. Limited recognition shall not be granted or extended to a non-United States citizen residing abroad. If granted, limited recognition shall
automatically expire upon the nonimmigrant alien’s departure from the United States.
(c) An individual not registered under §11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1 bis and 90.1.
If a request for limited recognition under 37 CFR 11.9 accompanies the application, the Office of Patent Application Processing will forward the file to the Director of the Office of Enrollment and Discipline.
See MPEP § 1807 for representation in international applications (PCT) and MPEP § 2911 for representation in international design applications.
402.02 Appointment of Power of Attorney [R-11.2013]
For appointment of a power of attorney in applications filed on or after September 16, 2012, see MPEP § 402.02(a). For appointment of a power of attorney in applications filed before September 16, 2012, see MPEP § 402.02(b).
Note that effective June 25, 2004, the associate power of attorney practice was eliminated. See Revision of Power of Attorney and Assignment
Practice, 69 FR 29865 (May 2004). The Office no longer accepts a power of attorney signed by a principal to name an associate power of attorney. An appointment of an associate power of attorney filed on or after June 25, 2004 will not be accepted. See also MPEP § 406.
402.02(a) Appointment in Application Filed On or After September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 402.02(b) for information pertaining to appointment of a power of attorney in an application filed before September 16, 2012.]
37 CFR 1.32 Power of attorney. *****
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(b) A power of attorney must:
(1) Be in writing;
(2) Name one or more representatives in compliance with paragraph (c) of this section;
(3) Give the representative power to act on behalf of the principal; and
(4) Be signed by the applicant for patent (§ 1.42) or the patent owner. A patent owner who was not the applicant under § 1.46 must appoint any power of attorney in compliance with §§ 3.71 and 3.73 of this chapter.
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(d) A power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless:
(1) The power of attorney was granted by the inventor; and
(2) The continuing application names an inventor who was not named as an inventor in the prior application.
(e) If the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request. This provision does not preclude a practitioner from acting pursuant to § 1.34, if applicable.
I. GENERAL REQUIREMENTS FOR POWERS OF ATTORNEY
For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings). An assignee who is not an applicant cannot revoke or appoint power of attorney in a patent application.
Pursuant to 37 CFR 1.42, the word “applicant” refers to the inventor or all of the joint inventors or to the person applying for a patent as provided in 37 CFR 1.43 (legal representative of a deceased or legally incapacitated inventor), 1.45 (joint inventor(s) on behalf of themselves and an omitted inventor) or 1.46 (assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest). As set forth in 37 CFR 1.42(b), if a person is applying for a patent as provided in 37 CFR 1.46, that person
(which may be a juristic entity), and not the inventor, is the applicant. In this situation the Office would not accept a power of attorney from the inventor. An assignee or obligated assignee who is the applicant may appoint an effective power of attorney without the need to establish the right to take action under 37 CFR 3.71. See also MPEP § 325. Persons who otherwise show sufficient proprietary interest in the matter may supply a power of attorney along with a petition under 37 CFR 1.46(b)(2), which power would be effective once the petition is granted.
An assignee who is not the applicant may sign a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c) (which requires compliance with 37 CFR 3.71 and 3.73). See MPEP § 325. A patent owner who was not the applicant under 37 CFR 1.46 must appoint any power of attorney in compliance with 37 CFR 3.71 and 3.73. This covers a patent owner in a reissue application who was not the applicant under 37 CFR 1.46 in the application for the original patent, as well as a patent owner in a supplemental examination or reexamination proceeding who was not the applicant under 37 CFR 1.46.
The power of attorney must be signed by someone who is authorized to act on behalf of the assignee-applicant (i.e., a person with a title that carries apparent authority, or a person who includes a statement of authorization to act.). A patent practitioner is not authorized to act on behalf of an assignee simply by existence of authority to prosecute an application.
II. POWERS OF ATTORNEY IN CONTINUING APPLICATIONS
Pursuant to 37 CFR 1.32(d), a power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, 365(c) , or 386(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless: (1) The power of attorney was granted by the inventor; and (2) the continuing application names an inventor who was not named as an inventor in the prior application. Thus 37 CFR 1.32(d) specifically requires that a
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copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).
III. POWER OF ATTORNEY FORMS FOR APPLICATIONS FILED ON OR AFTER SEPTEMBER 16, 2012
Form PTO/AIA/80 should be used by assignees who want to become the applicant (see 37 CFR 1.46(c)). The form may also be used by assignee-applicants who were named as the applicant when the application was filed, if desired. In either situation, this form must be accompanied by a statement under 37 CFR 3.73(c) (form PTO/AIA/96 or equivalent). Where an assignee gives the practitioner specific authority to act on behalf of the assignee (e.g., authority given by organizational resolution), a practitioner may sign the PTO/AIA/80 on behalf of the assignee. Where an assignee is named as the applicant in the patent application (i.e., in a signed Application Data Sheet, form PTO/AIA/14 or equivalent), the assignee-applicant can appoint a power of attorney using the PTO/AIA/82 form. The forms are available on the USPTO website at www.uspto.gov/patent/patents-forms. These forms should only be used in applications filed on or after September 16, 2012.
Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides such a form on the USPTO website.
402.02(b) Appointment in Application Filed Before September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 402.02(a) for information pertaining to appointment of a power of attorney in an application filed on or after September 16, 2012.]
I. GENERAL REQUIREMENTS FOR POWERS OF ATTORNEY
37 CFR 1.32 (pre-AIA) Power of attorney. *****
(b) A power of attorney must:
(1) Be in writing;
(2) Name one or more representatives in compliance with paragraph (c) of this section;
(3) Give the representative power to act on behalf of the principal; and
(4) Be signed by the applicant for patent (§ 1.41(b)) or the assignee of the entire interest of the applicant.
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For applications filed before September 16, 2012, pre-AIA 37 CFR 1.32(b) sets forth that a power of attorney must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
Pursuant to pre-AIA 37 CFR 1.41(b), the word “applicant” refers to the inventor or all of the joint inventors or to the person applying for a patent in place of the inventor under pre-AIA 37 CFR 1.42 (legal representative of deceased inventor), 1.43 (legal representative of a deceased or legally incapacitated inventor), 1.47(a) (joint inventor(s) on behalf of themselves and joint inventor(s) who refuse to join or cannot be reached or found after diligent effort) or 1.47(b) (by assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest whenever all of the inventors refuse to sign or cannot be found or reached after diligent effort). Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides a combined declaration and power of attorney form on the USPTO website.
While a power of attorney may be signed by the inventor(s), the power of attorney should be signed by the assignee of the entire interest where one exists. Otherwise, the assignee may be paying the bill, while the inventor is providing the power of attorney, thereby possibly raising an issue as to who is the practitioner’s client. Additionally, relationships between an assignee and the inventors may deteriorate. It is not uncommon in these situations for inventors to stop cooperating and in some cases file powers of attorney in an attempt to control prosecution of the application. A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in pre-AIA 37 CFR 3.71 and pre-AIA 37 CFR 3.73(b). See MPEP § 324.
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II. POWERS OF ATTORNEY IN CONTINUING APPLICATIONS
When filing a continuation or divisional application with a copy of a declaration from the parent application in accordance with pre-AIA 37 CFR 1.63(d), applicants are required to identify in the continuation or divisional application any change in power of attorney that occurred after the filing of the parent application. See pre-AIA 37 CFR 1.63(d)(4). The Office suggests doing so by submitting a copy of the most recent power of attorney from the parent application in the continuing application to ensure that the Office recognizes the correct power of attorney.
III. POWER OF ATTORNEY FORMS FOR APPLICATIONS FILED BEFORE SEPTEMBER 16, 2012
Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms) should be used for powers of attorney in applications filed before September 16, 2012. Note that the Office does not recommend that practitioners use a combined declaration and power of attorney document, and no longer provides such a form on the USPTO website.
402.03 Signature Requirements for Papers Filed in an Application [R-07.2015]
I. SIGNATURE AND CERTIFICATE
37 CFR 11.18 Signature and certificate for correspondence filed in the Office.
(a) For all documents filed in the Office in patent, trademark, and other non-patent matters, and all documents filed with a hearing officer in a disciplinary proceeding, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed or inserted by such practitioner, in compliance with § 1.4(d) or § 2.193(a) of this chapter.
(b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within
the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
(c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of—
(1) Striking the offending paper;
(2) Referring a practitioner’s conduct to the Director of Enrollment and Discipline for appropriate action;
(3) Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
(4) Affecting the weight given to the offending paper; or
(5) Terminating the proceedings in the Office.
(d) Any practitioner violating the provisions of this section may also be subject to disciplinary action.
37 CFR 11.18(a) emphasizes that every paper filed by a practitioner must be personally signed by the practitioner, except those required to be signed by the applicant or party.
37 CFR 11.18(b) provides that, by presenting any paper to the Office, the party presenting such paper (whether a practitioner or nonpractitioner) is: (1)
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certifying that the statements made therein are subject to the declaration clause of 37 CFR 1.68; and (2) making the certifications required for papers filed in a federal court under Rule 11(b) of the Federal Rules of Civil Procedure. See MPEP § 410. 37 CFR 11.18(d) provides that any practitioner violating the provisions of 37 CFR 11.18 may also be subject to disciplinary action, thus clarifying that a practitioner may be subject to disciplinary action in lieu of, or in addition to, the sanctions set forth in 37 CFR 11.18(c) for violations of 37 CFR 11.18. See also 37 CFR 1.4(d)(4).
The certifications in 37 CFR 11.18(b) apply to all papers filed in the Office, including allegations of improper conduct made by a registered practitioner in any Office proceeding.
II. ACTING IN A REPRESENTATIVE CAPACITY
37 CFR 1.34 Acting in a representative capacity
When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts. In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.
In accordance with 37 CFR 1.34, a paper filed by a registered patent attorney or agent in an application in which he or she is not of record must include his or her name and registration number with his or her signature. Acceptance of papers filed in patent applications and reexamination proceedings by registered attorneys and agents upon a representation that the attorney or agent is authorized to act in a representative capacity is for the purpose of facilitating replies on behalf of applicants in patent applications and, further, to obviate the need for filing powers of attorney in individual applications or patents when there has been a change in composition of law firms or corporate patent staffs.
See MPEP § 408 for information concerning interviews with an attorney or agent not of record.
Except as noted below, a person acting in a representative capacity may not sign (A) a power of attorney (37 CFR 1.32), (B) a document granting access to an application, (C) a change of correspondence address)), (D) a terminal disclaimer (37 CFR 1.321(b)(1)(iv)), or (E) a request for an express abandonment without filing a continuing application (37 CFR 1.138(b)). In an application filed on or after September 16, 2012, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if (1) a power of attorney has not been appointed under 37 CFR 1.32(b) and (2) the patent practitioner was named in the application transmittal papers. See 37 CFR 1.14(c) and 1.33(a). In an application filed before September 16, 2012, a person acting in a representative capacity may sign a document granting access to an application or a change of correspondence address if (1) an executed oath or declaration under pre-AIA 37 CFR 1.63 has not been filed and (2) the patent practitioner was named in the application transmittal papers. See pre-AIA 37 CFR 1.14(c) and pre-AIA 37 CFR 1.33(a).
402.04 [Reserved]
402.05 Revocation of Power of Attorney [R-11.2013]
Revocation of a power of attorney becomes effective on the date that the revocation is RECEIVED in the Office (not on the date of ACCEPTANCE). Upon revocation of the power of attorney, appropriate notification is sent by the Office. While an application is involved in an interference or derivation proceeding, any power of attorney or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration. See MPEP § 402.08.
See MPEP § 402.05(a) for applicant revocation of powers of attorney in applications filed on or after September 16, 2012. See MPEP § 402.05(b) for applicant revocation of powers of attorney in applications filed before September 16, 2012. See
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MPEP § 402.07 for assignee revocation of a power of attorney.
402.05(a) Applicant Revocation - Application Filed On or After September 16, 2012 [R-11.2013]
37 CFR 1.36 Revocation of power of attorney; withdrawal of patent attorney or agent.
(a) A power of attorney, pursuant to § 1.32(b), may be revoked at any stage in the proceedings of a case by the applicant or patent owner. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given. Fewer than all of the applicants (or fewer than all patent owners in a supplemental examination or reexamination proceeding) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f). A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2)), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee may become the applicant under § 1.46(c) and revoke any previous power of attorney and grant a power of attorney as provided in § 1.32(b).
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A power of attorney may be revoked only by the applicant or patent owner. An assignee who is not the applicant may revoke a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c) (which requires compliance with 37 CFR 3.71 and 3.73).
If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request. This provision does not preclude a practitioner from acting pursuant to 37 CFR 1.34, if applicable. See MPEP § 402.03 for information pertaining to acting in a representative capacity.
A nonsigning inventor or legal representative may subsequently join in the application by submitting an oath or declaration under 37 CFR 1.63. However, 37 CFR 1.64(f) provides that the submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under 37 CFR 1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.
See MPEP § 402.02(a) for appointment of a new power of attorney in an application filed on or after September 16, 2012.
When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney. Similarly, if the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee. In addition, if a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second. The power of attorney to the practitioners associated with the first Customer Number is automatically revoked in this situation. In all of these situations, the most recently filed power of attorney will control.
402.05(b) Applicant Revocation - Application Filed Before September 16, 2012 [R-11.2013]
37 CFR 1.36 (pre-AIA) Revocation of power of attorney; withdrawal of patent attorney or agent.
(a) A power of attorney, pursuant to § 1.32(b), may be revoked at any stage in the proceedings of a case by an applicant for patent (§ 1.41(b)) or an assignee of the entire interest of the applicant, or the owner of the entire interest of a patent. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of
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attorney previously given. Fewer than all of the applicants (or fewer than all of the assignees of the entire interest of the applicant or, in a reexamination proceeding, fewer than all the owners of the entire interest of a patent) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f). A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2)), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee of the entire interest of the applicant may revoke previous powers of attorney and give another power of attorney of the assignee’s own selection as provided in § 1.32(b).
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See MPEP § 402.07 for revocation of a power attorney by the assignee. Form PTO/SB/81 may be used to revoke a power of attorney in an application filed before September 16, 2012. See also MPEP § 402.02(b).
If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request. This provision does not preclude a practitioner from acting pursuant to 37 CFR 1.34, if applicable. See MPEP § 402.03 for information pertaining to acting in a representative capacity.
When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney. Similarly, if the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee. In addition, if a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later
received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second. The power of attorney to the practitioners associated with the first Customer Number is automatically revoked in this situation. In all of these situations, the most recently filed power of attorney will control.
A nonsigning inventor may subsequently join in a pre-AIA 37 CFR 1.47 application by submitting an oath or declaration under pre-AIA 37 CFR 1.63. However, even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the pre-AIA 37 CFR 1.47 applicant.
402.06 Attorney or Agent Withdraws [R-07.2015]
37 CFR 1.36 Revocation of power of attorney; withdrawal of patent attorney or agent.
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(b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners associated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given power of attorney to the patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Patent Trial and Appeal Board.
37 CFR 11.116 Declining or terminating representation.
(a) Except as stated in paragraph (c) of this section, a practitioner shall not represent a client, or where representation has commenced, shall withdraw from the representation of a client if:
(1) The representation will result in violation of the USPTO Rules of Professional Conduct or other law;
(2) The practitioner’s physical or mental condition materially impairs the practitioner’s ability to represent the client; or
(3) The practitioner is discharged.
(b) Except as stated in paragraph (c) of this section, a practitioner may withdraw from representing a client if:
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(1) Withdrawal can be accomplished without material adverse effect on the interests of the client;
(2) The client persists in a course of action involving the practitioner’s services that the practitioner reasonably believes is criminal or fraudulent;
(3) The client has used the practitioner’s services to perpetrate a crime or fraud;
(4) A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement;
(5) The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner’s services and has been given reasonable warning that the practitioner will withdraw unless the obligation is fulfilled;
(6) The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client; or
(7) Other good cause for withdrawal exists.
(c) A practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation. When ordered to do so by a tribunal, a practitioner shall continue representation notwithstanding good cause for terminating the representation.
(d) Upon termination of representation, a practitioner shall take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred. The practitioner may retain papers relating to the client to the extent permitted by other law.
See MPEP § 402.05(a) for applicant revocation of power of attorney in applications filed on or after September 16, 2012. For revocation of power of attorney in applications filed before September 16, 2012, see MPEP § 402.05(b) for revocation by the applicant and MPEP § 402.07 for revocation by the assignee. See 37 CFR 11.116 for information regarding permissive and mandatory withdrawal. When filing a request to withdraw as attorney or agent of record, the patent attorney or agent should briefly state the reason(s) for which he or she is withdrawing so that the Office can determine whether to grant the request. Among several scenarios addressed in 37 CFR 11.116(b), subsections (5) and (6) permit withdrawal when after reasonable warning the client fails to compensate the practitioner, or when the representation “has been rendered unreasonably difficult by the client.” When preparing a request for withdrawal for such reasons, the practitioner should also be mindful of 37 CFR
11.106, which requires a practitioner to maintain the confidentiality of client information (except in limited circumstances). Where withdrawal is predicated upon such reasons, the practitioner, rather than divulging confidential or secret information about the client, should identify the reason(s) for requesting to withdraw as being based on “irreconcilable differences.” An explanation of and the evidence supporting “irreconcilable differences” should be submitted as proprietary material in accordance with MPEP § 724.02 to ensure that the client’s confidences are maintained.
In the event that a notice of withdrawal is filed by the attorney or agent of record, the file will be forwarded to the appropriate official for decision on the request. The withdrawal is effective when approved rather than when received.
Each attorney of record must sign the notice of withdrawal, or the notice of withdrawal must contain a clear indication of one attorney signing on behalf of himself or herself and another. A withdrawal of another attorney or agent of record, without also withdrawing the attorney or agent signing the request is a revocation, not a withdrawal.
Pursuant to 37 CFR 11.116(c), when terminating a representation a practitioner must provide notice to, or request permission from, a tribunal when required by applicable law. Pursuant to 37 CFR 11.116(d), a practitioner is required to take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred.
The Request for Withdrawal As Attorney or Agent and Change of Correspondence Address forms (PTO/SB/83 or PTO/AIA/83, available at www.uspto.gov/patent/patents-forms) provide a section wherein practitioners may certify the completion of activities necessary for the request to withdraw from representation to be granted. A Request for Withdrawal As Attorney or Agent may alternatively be filed as a Web-based e-petition (see www.uspto.gov/patents-application-process/applying-online/ epetitions/epetitions-faqs for more information).
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When the correspondence address will change as a result of withdrawal, the withdrawing practitioner(s) must request that the Office direct all future correspondence to (i) the first named inventor or assignee that has properly made itself of record pursuant to 37 CFR 3.71 (for applications filed before September 16, 2012), or (ii) the applicant (for applications filed on or after September 16, 2012) or (iii) the assignee of record (for proceedings involving issued patents). Practitioners may do so by specifying either the correspondence address of, or the address associated with the Customer Number of, any appropriate party as specified above. Withdrawing practitioner(s) cannot change the correspondence address to the address associated with the Customer Number of another law firm, or any other address except as noted above.
As long as the Request is filed prior to the expiration date of a time period for reply or the expiration date of a time period which can be obtained by a petition and fee for extension of time under 37 CFR 1.136(a), the Office will review the Request and render a decision, even if the decision on the Request is decided after the stated period for reply, after the application is abandoned, or after proceedings have terminated. In contrast, the Office will not decide requests to withdraw from representation as practitioner of record which are filed after the expiration date of a time period for reply or the expiration date of a time period which can be obtained by a petition and fee for extension of time under 37 CFR 1.136(a). These Requests will be
placed in the application but will not be treated on their merits. In a similar situation, a revocation of power of attorney filed after the expiration date of a time period for reply or the expiration date of a time period which can be obtained by a petition and fee for an extension of time under 37 CFR 1.136 will simply be placed in the application file. The only exception will be a revocation and power of attorney accompanied with a petition to revive.
For withdrawal during reexamination proceedings, see MPEP § 2223. Requests for withdrawal filed after a patent has issued will be placed in the file but will generally not be treated on their merits.
The Office will not approve requests from practitioners to withdraw from applications where the requesting practitioner is acting, or has acted, in a representative capacity pursuant to 37 CFR 1.34. In these situations, the practitioner is responsible for the correspondence the practitioner files in the application while acting in a representative capacity. As such, there is no need for the practitioner to obtain the Office's permission to withdraw from representation. However, practitioners acting in a representative capacity, like practitioners who have a power of attorney in the application, remain responsible for noncompliance with 37 CFR 1.56, as well as 37 CFR 11.18, with respect to documents they file.
Form PTO/AIA/83 may be used to request withdrawal of attorney or agent of record.
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402.07 Assignee Revocation of Power of Attorney of Applicant and Appointment of New Power of Attorney [R-07.2015]
I. APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012
In applications filed on or after September 16, 2012, any power of attorney must be signed by the applicant or patent owner. See 37 CFR 1.32(b). For an assignee to revoke a previously given power of attorney and/or grant a power of attorney, the assignee must become the applicant under 37 CFR 1.46(c). See MPEP §§ 402.02(a) and 402.05(a). See MPEP § 325 for details pertaining to establishing the right of an assignee to take action in an application filed on or after September 16, 2012.
II. APPLICATION FILED BEFORE SEPTEMBER 16, 2012
In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an “irrevocable” right to prosecute the application had been given as in some government owned applications.
37 CFR 3.71 (pre-AIA) Prosecution by assignee.
(a) Patents — conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may, after becoming of record pursuant to paragraph (c) of this section, conduct prosecution of a national patent application or a reexamination proceeding to the exclusion of either the inventive entity, or the assignee(s) previously entitled to conduct prosecution.
(b) Patents — assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are:
(1) A single assignee. An assignee of the entire right, title and interest in the application or patent being reexamined who is of record, or
(2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined.
A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent being reexamined.
(c) Patents — Becoming of record. An assignee becomes of record either in a national patent application or a reexamination proceeding by filing a statement in compliance with § 3.73(b) that is signed by a party who is authorized to act on behalf of the assignee.
(d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee’s trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).
See pre-AIA 37 CFR 1.36 in MPEP § 402.05(b).
A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in pre-AIA 37 CFR 3.73(b). See MPEP § 324. Ordinarily, the applicant will still have access to the application (MPEP § 106).
In an application that has been accorded status under pre-AIA 37 CFR 1.47(a), or for which status under pre-AIA 37 CFR 1.47(a) has been requested, a power of attorney given by the inventors who have signed the declaration (available inventors) may be revoked by an assignee of the entire interest of the available inventors (i.e., the applicant). See pre-AIA 37 CFR 1.32(b)(4). Rights of the assignee to take action may be established as provided in pre-AIA 37 CFR 3.73(b) and MPEP § 324.
Form PTO/SB/80 may be used by an assignee of the entire interest of the applicant to revoke a power of attorney and appoint a new power of attorney. The assignee would sign the power of attorney, and a newly appointed practitioner, having authority to take action on behalf of the assignee would sign a statement under pre-AIA 37 CFR 3.73(b) for the application in which the general power of attorney is to be used.
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402.08 Application in Interference or Derivation Proceeding [R-11.2013]
While an application is involved in an interference or derivation proceeding, any power of attorney of or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.
402.09 International Application [R-11.2013]
37 CFR 11.9 Limited recognition in patent matters.
(a) Any individual not registered under § 11.6 may, upon a showing of circumstances which render it necessary or justifiable, and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications. Limited recognition under this paragraph shall not extend further than the application or applications specified. Limited recognition shall not be granted while individuals who have passed the examination or for whom the examination has been waived are awaiting registration to practice before the Office in patent matters.
(b) A nonimmigrant alien residing in the United States and fulfilling the provisions of § 11.7(a) and (b) may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application. Limited recognition shall be granted for a period consistent with the terms of authorized employment or training. Limited recognition shall not be granted or extended to a non-United States citizen residing abroad. If granted, limited recognition shall automatically expire upon the nonimmigrant alien’s departure from the United States.
(c) An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1 bis and 90.1.
37 CFR 1.455 Representation in international applications.
(a) Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 11.9). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants.
An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated (PCT Rule 90.6(b) and (c)).
(b) Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
(c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.
(d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions.
For representation in international applications, see MPEP § 1807.
402.10 Appointment/Revocation by Less Than All Applicants or Owners [R-11.2013]
Papers giving or revoking a power of attorney in an application generally require signature by all the applicants or owners of the application. Papers revoking a power of attorney in an application (or giving a power of attorney) will not be accepted by the Office when signed by less than all of the applicants or owners of the application unless they are accompanied by a petition under 37 CFR 1.36(a) and fee under 37 CFR 1.17(f) with a showing of sufficient cause (if revocation), or a petition under 37 CFR 1.183 and fee under 37 CFR 1.17(f) (if appointment) demonstrating the extraordinary situation where justice requires waiver of the requirement of 37 CFR 1.32(b)(4). The petition should be directed to the Office of Petitions. The appointment and/or revocation are not accepted until the petition under 37 CFR 1.36(a) or 1.183 is granted. Therefore, the attorney or agent newly appointed by such papers is not permitted to submit any documents (such as an information disclosure statement (IDS)) into the application file until the petition under 37 CFR 1.36(a) or 1.183 is granted. The acceptance of such papers by petition under 37 CFR 1.36(a) or 1.183 will result in more than one
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attorney, agent, applicant, or owner prosecuting the application at the same time. Therefore, each of these parties must sign all subsequent replies submitted to the Office. See In re Goldstein, 16 USPQ2d 1963 (Dep. Assist. Comm’r Pat. 1988). In an application filed under pre-AIA 37 CFR 1.47(a), an assignee of the entire interest of the available inventors (i.e., the applicant) who has signed the declaration may appoint or revoke a power of attorney without a petition under 37 CFR 1.36(a) or 1.183. See MPEP § 402.07. However, in applications accepted under pre-AIA 37 CFR 1.47, such a petition under 37 CFR 1.36(a) or 1.183 submitted by a previously nonsigning inventor who has now joined in the application will not be granted. See MPEP § 409.03(i). Upon accepting papers appointing and/or revoking a power of attorney that are signed by less than all of the applicants or owners, the Office will indicate to applicants who must sign subsequent replies. Dual correspondence will still not be permitted. Accordingly, when the acceptance of such papers results in an attorney or agent and at least one applicant or owner prosecuting the application, correspondence will be mailed to the attorney or agent. When the acceptance of such papers results in more than one attorney or agent prosecuting the application, the correspondence address will continue to be that of the attorney or agent first named in the application, unless all parties agree to a different correspondence address. Each attorney or agent signing subsequent papers must indicate whom he or she represents.
The following are examples of who must sign replies when there is more than one person responsible for prosecuting the application:
(A) If coinventor A has given a power of attorney to a patent practitioner and coinventor B has not, replies must be signed by the patent practitioner of A and by coinventor B.
(B) If coinventors A and B have each appointed their own patent practitioner, replies must be signed by both patent practitioners.
403 Correspondence — With Whom Held; Customer Number Practice [R-11.2013]
37 CFR 1.33 states that when an attorney or agent has been duly appointed to prosecute an application,
correspondence will be held with the attorney or agent unless some other correspondence address has been given. If an attorney or agent of record assigns a correspondence address which is different than an address where the attorney or agent normally receives mail, the attorney or agent is reminded that 37 CFR 11.106 requires the attorney or agent to keep information obtained by attorney/agent – client relationship in confidence. Double correspondence with an applicant and his or her attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).
If double correspondence is attempted, form paragraph 4.01 should be included in the next Office action.
¶ 4.01 Dual Correspondence
Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant's attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.
Examiner Note:
1. The first time a reply is received directly from applicant, include this paragraph in the Office action and send a copy of the action to the applicant. See MPEP §§ 403 and 714.01.
2. Should applicant file additional replies, do not send copies of subsequent Office actions to the applicant.
3. Status letters from the applicant may be acknowledged in isolated instances.
See MPEP § 403.01(a) for additional information pertaining to correspondence in applications filed on or after September 16, 2012. See MPEP § 403.01(b) for additional information pertaining to correspondence in applications filed before September 16, 2012.
I. CUSTOMER NUMBER PRACTICE
A Customer Number (previously a “Payor Number”) may be used to:
(A) designate the correspondence address of a patent application or patent such that the correspondence address for the patent application or patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(i));
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(B) designate the fee address (37 CFR 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(ii)); and
(C) submit a list of practitioners such that those practitioners associated with the Customer Number would have power of attorney (37 CFR 1.32(a)(5)(iii)).
Thus, a Customer Number may be used to designate the address associated with the Customer Number as the correspondence address of an application (or patent) or the fee address of a patent, and may also be used to submit a power of attorney in the application (or patent) to the registered practitioners associated with the Customer Number.
Applicant may use either the same or different customer number(s) for the correspondence address, the fee address and/or a list of practitioners. The customer number associated with the correspondence address is the Customer Number used to obtain access to the Patent Application Information Retrieval (PAIR) system at http://pair.uspto.gov. See MPEP § 1730 for additional information regarding PAIR.
The following forms are suggested for use with the Customer Number practice:
(A) the “Request for Customer Number” (PTO/SB/125) to request a Customer Number;
(B) the “Request for Customer Number Data Change” (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number;
(C) the “Change of Correspondence Address, Application” (PTO/SB/122) to change the correspondence address of an individual application to the address associated with a Customer Number; and
(D) the “Change of Correspondence Address, Patent” (PTO/SB/123) to change the correspondence address of an individual patent to the address associated with a Customer Number.
The Office will also accept requests on electronic storage media submitted electronically to change the correspondence address of a list of applications or patents or the fee address for a list of patents to the
address associated with a Customer Number. Instructions for submitting such requests are available on the “Customer Number Upload S p r e a d s h e e t ” a v a i l a b l e a t www.uspto.gov/learning-and-resources/support-centers /patent-electronic-business-center.
Such electronic requests must comply with the requirements set forth in the Notice entitled “Extension of the Payor Number Practice (through “Customer Numbers”) to Matters Involving Pending Patent Applications,” published in the Federal Register at 61 FR 54622, 54623-24 (October 21, 1996), and in the Official Gazette at 1191 O. G. 187, 188-89 (October 29, 1996).
With Customer Number practice, a patentee is also able to designate a “fee address” for the receipt of maintenance fee correspondence, and a different address for the receipt of all other correspondence. The designation of a “fee address” by reference to a Customer Number will not affect or be affected by the designation of a correspondence address by reference to another Customer Number, in that the Office will send maintenance fee correspondence to the address associated with the Customer Number designated as the “fee address” and will send all other correspondence to the address associated with the Customer Number designated as the correspondence address.
The association of a list of practitioners with a Customer Number will permit an applicant to appoint all of the practitioners associated with the Customer Number merely by reference to the Customer Number in the Power of Attorney (i.e., without individually listing the practitioners in the Power of Attorney). The addition and/or deletion of a practitioner from the list of practitioners associated with a Customer Number by submitting a corresponding “Request for Customer Number Data Change” (PTO/SB/124) will result in the addition or deletion of such practitioner from the list of persons authorized to represent any applicant or assignee of the entire interest of the applicant who appointed all of the practitioners associated with such Customer Number. This will avoid the necessity for the filing of additional papers in each patent application affected by a change in the practitioners of the law firm prosecuting the application. The
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appointment of practitioners associated with a Customer Number is optional, in that any applicant may continue to individually name those practitioners to represent the applicant in a patent application, so long as fewer than ten patent practitioners are named. See 37 CFR 1.32(c)(3).
The Customer Number practice does not affect the prohibition against, and does not amount to, an appointment of a law firm (rather than specified practitioners). The Office prohibits an appointment of a specified law firm because the Office cannot ascertain from its records whether a particular practitioner submitting a paper to the Office is associated with the law firm specified in an appointment. The Office will permit an appointment of all of the practitioners associated with a specified Customer Number because the Office can ascertain from its records for the specified Customer Number whether a particular practitioner is associated with that Customer Number.
As the Office will not recognize more than one correspondence address (37 CFR 1.33(a)), any inconsistencies between the correspondence address resulting from a Customer Number being provided in an application for the correspondence address and any other correspondence address provided in that application will generally be resolved in favor of the address of the Customer Number or the application data sheet (37 CFR 1.76(d)). Due to the prohibition against dual correspondence in an application (37 CFR 1.33(a)), an applicant will be permitted to provide only a single number at a time as the Customer Number for the correspondence address.
Where an applicant appoints all of the practitioners associated with a Customer Number as well as a list of individually named practitioners, such action would be treated as only an appointment of all of the practitioners associated with a Customer Number due to the potential for confusion and data entry errors in entering registration numbers from plural sources. Furthermore, Office computer systems do not allow for entry of both a power of attorney to a list of practitioners associated with a Customer Number and a list of practitioners.
Although Customer Numbers are designed to designate both a correspondence address and to
associate one or more patent practitioners with an application, one Customer Number may be used for the correspondence address, and another Customer Number may be used for the power of attorney.
Applicants are strongly cautioned not to attempt to appoint more than one Customer Number for a particular purpose (e.g., correspondence address) in a single communication, as such action will not have a cumulative effect.
The Office has created a Mail Stop designation for correspondence related to a Customer Number (“Mail Stop EBC”), and all correspondence related to a Customer Number (e.g., requests for a Customer Number) should be addressed to this mail stop designation.
The following persons are authorized to change the information associated with an established Customer Number: (1) a registered practitioner associated with the Customer Number; and (2) the person who requested the Customer Number (signed the Request for Customer Number, Form PTO/SB/125).
II. PATENT APPLICATION FILED WITHOUT CORRESPONDENCE ADDRESS
In accordance with the provisions of 35 U.S.C. 111(a) and 37 CFR 1.53, a filing date is granted to a nonprovisional application for patent filed in the U.S. Patent and Trademark Office, if it includes at least a specification prescribed by 35 U.S.C. 112 containing a description pursuant to 37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing required by 37 CFR 1.81(a). If a nonprovisional application which has been accorded a filing date does not include the appropriate basic filing fee, search fee, examination fee, or inventor’s oath or declaration, the applicant will be so notified and given a period of time within which to file the missing parts to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) in order to prevent abandonment of the application. If a provisional application which has been accorded a filing date does not include the appropriate filing fee, or the cover sheet, the applicant will be so notified and given a period of time within which to file the missing parts to complete the application and
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to pay the surcharge as set forth in 37 CFR 1.16(g) in order to prevent abandonment of the application.
In order for the Office to so notify the applicant, a correspondence address must also be provided by the applicant. The address may be different from the post office address of the applicant. For example, the address of the applicant’s registered attorney or agent may be used as the correspondence address. If the applicant fails to provide the Office with a correspondence address, the Office will be unable to provide the applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional applications and 37 CFR 1.16(g) for provisional applications. In such a case, the applicant will be considered to have constructive notice as of the filing date that the application must be completed and the applicant will have 2 months from the filing date in which to do so before abandonment occurs.
The periods of time within which the applicant must complete the application may be extended under the provisions of 37 CFR 1.136. Applications which are not completed in a timely manner will be abandoned.
403.01 [Reserved]
403.01(a) Correspondence in Applications Filed On or After September 16, 2012 [R-07.2015]
37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
(a) Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(b)(2)) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office's electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified, the Office will select one of the specified addresses for use as
the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed by the parties set forth in paragraph (b)(1) or (b)(3) of this section. Prior to the appointment of any power of attorney under § 1.32(b), the correspondence address may also be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of § 1.34.
(b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by:
(1) A patent practitioner of record;
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34; or
(3) The applicant (§ 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
(c) All notices, official letters, and other communications for the patent owner or owners in a reexamination or supplemental examination proceeding will be directed to the correspondence address in the patent file. Amendments filed in a reexamination proceeding, and other papers filed in a reexamination or supplemental examination proceeding, on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34. Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken.
(d) A “correspondence address” or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. The “correspondence address” will be used in any correspondence relating to maintenance fees unless a separate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee purposes.
(e) A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.
(f) Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
(g) A patent practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of
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correspondence address is accompanied by a statement that notice has been given to the patentee or owner.
37 CFR 1.33(a) specifies that if an applicant provides more than one correspondence address (in a single paper or in different papers), the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the correspondence address associated with a Customer Number over a typed correspondence address. However, the hierarchy provided in 37 CFR 1.76(d) for inconsistencies between an application data sheet and other documents will still apply.
37 CFR 1.33(a) also provides that the correspondence address may be changed by the parties set forth in 37 CFR 1.33(b)(1) (a patent practitioner of record) or 37 CFR 1.33(b)(3) (the applicant under 37 CFR 1.42)). Prior to the appointment of any power of attorney under 37 CFR 1.32(b), the correspondence address may also be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of 37 CFR 1.34. While a practitioner acting in a representative capacity cannot change the correspondence address in an application after a power of attorney has been appointed, 37 CFR 1.33(g) provides that a practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner.
Amendments and other papers, except for written assertions pursuant to 37 CFR 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by: (1) A patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant (37 CFR 1.42). Pursuant to 37 CFR 1.33(b)(3), unless otherwise specified (e.g., terminal disclaimers and 37 CFR 3.73(c) statements; see MPEP § 325), all papers submitted on behalf of a juristic entity must be signed by a patent practitioner, as 37 CFR 1.31 provides that a juristic entity may prosecute a patent application only through a patent practitioner.
Where application papers (e.g., the inventor’s oath or declaration) from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. See 37 CFR 1.33(f). Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
403.01(b) Correspondence in Applications Filed Before September 16, 2012 [R-11.2013]
37 CFR 1.33 (pre-AIA) Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
(a) Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(c)(2)) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office’s electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed as follows:
(1) Prior to filing of § 1.63 oath or declaration by any of the inventors. If a § 1.63 oath or declaration has not been filed by any of the inventors, the correspondence address may be changed by the party who filed the application. If the application was filed by a patent practitioner, any other patent practitioner named in the transmittal papers may also change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address in that application under this paragraph.
(2) Where a § 1.63 oath or declaration has been filed by any of the inventors. If a § 1.63 oath or declaration has been
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filed, or is filed concurrent with the filing of an application, by any of the inventors, the correspondence address may be changed by the parties set forth in paragraph (b) of this section, except for paragraph (b)(2).
(b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application must be signed by:
(1) A patent practitioner of record appointed in compliance with § 1.32(b);
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34;
(3) An assignee as provided for under § 3.71(b) of this chapter; or
(4) All of the applicants (§ 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.
(c) All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the correspondence address. Amendments and other papers filed in a reexamination proceeding on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34. Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken.
(d) A “correspondence address” or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. The “correspondence address” will be used in any correspondence relating to maintenance fees unless a separate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee purposes.
(e) A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.
Pre-AIA 37 CFR 1.33(a) provides for an applicant to supply an address to receive correspondence from the U.S. Patent and Trademark Office so that the Office may direct mail to any address of applicant’s selection, such as a corporate patent department, a firm of attorneys or agents, or an individual attorney, agent, or other person.
Pre-AIA 37 CFR 1.33(a) provides that when filing a patent application the applicant must specify a correspondence address to which the Office will send notices, letters and other communications relating to the application. The correspondence address must appear either in an application data
sheet (37 CFR 1.76) or in a clearly identifiable manner elsewhere in any papers submitted with an application filing. Where more than one correspondence address is specified, the Office will select one of the correspondence addresses for use as the correspondence address. This is intended to cover, for example, the situation where an application is submitted with multiple addresses, such as one correspondence address being given in the application transmittal letter, and a different one in an accompanying pre-AIA 37 CFR 1.63 oath or declaration, or other similar situations. The Office will select which of the multiple correspondence addresses to use according to the following order: (A) application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (D) power of attorney. If more than one correspondence address is specified in a single document, the Office will select the address associated with a Customer Number over a typed correspondence address.
Pre-AIA 37 CFR 1.33(a) requests the submission of a daytime telephone number of the party to whom correspondence is to be addressed. While business is to be conducted on the written record (37 CFR 1.2), a daytime telephone number would be useful in initiating contact that could later be reduced to writing. The telephone number would be changeable by any party who could change the correspondence address.
Pre-AIA 37 CFR 1.33(a)(1) provides that any party filing the application and setting forth a correspondence address could later change the correspondence address provided that a pre-AIA 37 CFR 1.63 oath/declaration by any of the inventors has not been submitted. If one joint inventor filed an application, the person who may change the correspondence address would include only the one inventor who filed the application, even if another inventor was identified on the application transmittal letter. If two of three inventors filed the application, the two inventors filing the application would be needed to change the correspondence address. Additionally, any registered practitioner named in the application transmittal letter, or a person who has the authority to act on behalf of the party that will be the assignee (if the application was filed by the party that will be the assignee), could change the
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§ 403.01(b)REPRESENTATIVE OF APPLICANT OR OWNER
correspondence address. A registered practitioner named in a letterhead would not be sufficient, but rather a clear identification of the individual as being a representative would be required. A company (to whom the invention has been assigned, or to whom there is an obligation to assign the invention) who files an application, is permitted to designate the correspondence address, and to change the correspondence address, until such time as a (first) pre-AIA 37 CFR 1.63 oath/declaration is filed. The mere filing of a pre-AIA 37 CFR 1.63 oath/declaration that does not include a correspondence address does not affect any correspondence address previously established on the filing of the application, or changed per pre-AIA 37 CFR 1.63(a)(1), even if the application was filed by a company that is only a partial assignee. The expression “party that will be the assignee,” rather than assignee, is used in that until a declaration is submitted, inventors have only been identified, and any attempted assignment, or partial assignment, cannot operate for Office purposes until the declaration is supplied. Hence, if the application transmittal letter indicates that the application is being filed on behalf of XYZ company, with an assignment to be filed later, XYZ company would be allowed to change the correspondence address without resort to pre-AIA 37 CFR 3.73 (b) until an executed oath or declaration is filed, and with resort to pre-AIA 37 CFR 3.73(b) after the oath or declaration is filed.
Where a correspondence address was set forth or changed pursuant to pre-AIA 37 CFR 1.33(a)(1) (prior to the filing of a pre-AIA 37 CFR 1.63 oath or declaration), that correspondence address remains in effect upon filing of a pre-AIA 37 CFR 1.63 declaration and can then only be changed pursuant to pre-AIA 37 CFR 1.33(a)(2).
In a joint application with no power of attorney to either a registered practitioner or joint inventor, the applicant whose name first appears in the papers receives the correspondence, unless other instructions are given. All applicants must sign the replies. See MPEP §§ 402 and 714.01(a). If the assignee of the entire interest of the applicant is prosecuting the application (MPEP § 402.07), the assignee may specify a correspondence address.
Pre-AIA 37 CFR 1.33(c) relates to which address communications for the patent owner will be sent in reexamination proceedings. See also MPEP § 2224.
Powers of attorney to firms are not recognized by the U.S. Patent and Trademark Office. See MPEP § 402. However, the firm’s address may be used for the correspondence address. The address should appear as follows:
John Doe (inventor) In care of Able, Baker, and Charlie (firm) 1234 Jefferson Davis Highway Arlington, Virginia 22202
Patent practitioners are reminded that the attorney and agent roster must be updated separately from and in addition to any change of address filed in individual patent applications.
See MPEP § 601.03 for change of correspondence address.
See MPEP § 201.06(c) regarding change of correspondence address in continuation or divisional applications filed under 37 CFR 1.53(b).
403.02 Two Patent Practitioners for Same Application [R-11.2013]
If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address. See MPEP §§ 403, 403.01(a), and MPEP § 403.01(b).
If, after one patent practitioner is appointed, a second patent practitioner is later appointed without revocation of the power of the first patent practitioner, correspondence will be mailed to the
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latest correspondence address of record. See 37 CFR 1.33 and 1.76
404 [Reserved]
405 Interviews With Patent Practitioner Not of Record [R-07.2015]
Papers may be filed in patent applications and reexamination proceedings by registered attorneys or agents not of record under 37 CFR 1.34. Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant. See MPEP § 402.03. Interviews may be conducted with a registered practitioner who has proper authority from the applicant or attorney or agent of record in the form of a power of attorney or authorization to act in a representative capacity, whether or not the
practitioner has a copy of the application file. See MPEP § 713.05. Registered practitioners, when acting in a representative capacity, can alternatively show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A). See MPEP §§ 713.01 and 713.05. This eliminates the need to file a power of attorney or authorization to act in a representative capacity before having an interview. However, an interview concerning an application that has not been published under 35 U.S.C. 122(b) with an attorney or agent not of record who obtains authorization through use of the interview request form will be conducted based on the information and files supplied by the attorney or agent in view of the confidentiality requirements of 35 U.S.C. 122(a). Such a paper may be a Form/PTO/SB/84, "Authorization to Act in a Representative Capacity," which is available from the USPTO website at www.uspto.gov/sites/default/files/web/forms/sb0084.pdf.
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§ 405REPRESENTATIVE OF APPLICANT OR OWNER
See MPEP § 402.03 for information regarding when a change of correspondence address or a document granting access (i.e., a power to inspect) may be signed by an attorney or agent who is not of record.
406 Death of Patent Practitioner [R-11.2013]
The power of attorney of a patent practitioner will be revoked or terminated by his or her death. The patent practitioner may not appoint a “substitute” and any attempt by the patent practitioner to appoint a “substitute” patent practitioner whose power is intended to survive his or her own will not be recognized by the Office.
If notification of the death of the sole practitioner of record is received by the Office, correspondence continues to be held with the office of the deceased practitioner but a copy of the Office action is also mailed to the person who originally appointed the practitioner. In such an Office action, the examiner should add form paragraph 4.03.
¶ 4.03 Death of Patent Practitioner
Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.
Note MPEP § 405.
407 Suspended or Excluded Patent Practitioner [R-11.2013]
Any power of attorney given to a practitioner who has been suspended or disbarred by the Office is ineffective, and does not authorize the person to practice before the Office or to represent applicants or patentees in patent matters.
See MPEP § 105.
Form paragraphs 4.07, and 4.08 should be used where power of attorney is given to an attorney or agent who has been suspended from practice before the Office.
¶ 4.07 Attorney/Agent Suspended (Sole Practitioner)
The instant application contains a power of attorney to [1] who has been [2] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice. Accordingly, the Office action is being mailed to the address of the applicant first named in the application. Applicant(s) may file a new power of attorney in the application to have a registered attorney or agent represent them before the Office.
In the absence of an attorney or agent of record, for applications filed before September 16, 2012, all papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34.
For applications filed on or after September 16, 2012, all papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.
Applicants may obtain a list of registered patent attorneys and agents located in their area by consulting the USPTO website, https://oedci.uspto.gov/OEDCI/, or by calling the Office of Enrollment and Discipline at (571) 272-4097.
Examiner Note:
1. In bracket 1, insert the name of the suspended or excluded practitioner.
2. In bracket 2, insert either --suspended-- or --excluded--.
3. This form paragraph should be used when the suspended or excluded practitioner is the only practitioner of record.
4. The Office action is to be mailed only to the applicant first named in the application at that applicant’s current address of record.
¶ 4.08 Attorney/Agent Suspended (Plural Practitioners)
The present application was filed containing a power of attorney to [1] and [2]. A correspondence address was supplied for [3]. No address was supplied for [4].
[5] was [6] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.
As a correspondence address, other than to [7], is not of record, this Office action is being mailed to [8] at his/her last known
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address as listed on the register of patent attorneys and agents. To ensure that a copy of this Office action is received in a timely manner to allow for a timely reply, a copy of the Office action is being mailed directly to the address of the applicant first named in the application. Any reply by applicant(s) should be by way of the remaining practitioner(s) of record and should include a new correspondence address.
Examiner Note:
1. In brackets 1, 3, 5 and 7 insert the name of the suspended or excluded practitioner.
2. In brackets 2, 4 and 8, insert the name of the first named unsuspended (unexcluded) registered practitioner of record.
3. In bracket 6, insert either --suspended-- or --excluded--.
4. This form paragraph should be used when there is at least one registered practitioner still of record who has not been suspended or excluded from practice. Use form paragraph 4.07 if there are no remaining registered attorneys or agents of record.
5. The Office action is to be mailed both to the first named registered attorney or agent of record (who is not suspended or excluded) at the address currently listed in the Attorney’s Roster, and to the applicant first named in the application at that applicant’s current address of record.
408 Interviews With Patent Practitioner of Record [R-07.2015]
The Office encourages the use of interviews to expedite prosecution. When the examiner believes the progress of the application would be advanced by an interview, he or she may contact the patent practitioner of record in the application (in accordance with MPEP § 502.03) and suggest a telephonic, personal, or video conference interview. Registered attorneys or agents not of record in a patent application and acting in a representative capacity under 37 CFR 1.34 should not be contacted for restriction requirements or approval of examiner's amendments. In addition, non-registered representatives of the practitioner of record should not be contacted for such actions, even if apparently authorized by the attorney or agent of record. See MPEP § 812.01 for telephone restriction practice. See MPEP § 405 for interviews with a patent practitioner not of record. See also MPEP §§ 101-104 for information regarding access to application information by persons other than a patent practitioner of record.
When applicant is initiating a request for an interview, an “Applicant Initiated Interview Request” form (PTOL-413A) should be submitted to the
examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. See MPEP §§ 713.01 and 713.05.
409 Death, Legal Incapacity, or Unavailability of Inventor [R-11.2013]
For information regarding applications for patent filed on or after September 16, 2012 on behalf of a deceased or legally incapacitated inventor, see MPEP § 409.01(a). For information regarding applications for patent filed on or after September 16, 2012 where the inventor or at least one joint inventor is unavailable, see MPEP § 409.02, 604, and 605.
For information regarding applications for patent filed before September 16, 2012 on behalf of a deceased inventor or legally incapacitated inventor, see MPEP § 409.01(b). For information regarding applications for patent filed before September 16, 2012 where at least one inventor is unavailable, see MPEP §§ 409.03 – 409.03(j).
409.01 [Reserved]
409.01(a) Deceased or Legally Incapacitated Inventor - Application Filed on or After September 16, 2012 [R-11.2013]
[Editor Note: See MPEP § 409.01(b) for information pertaining to a deceased or legally incapacitated inventor in an application filed before September 16, 2012.]
35 U.S.C. 117 Death or incapacity of inventor.
Legal representatives of deceased inventors and of those under legal incapacity may make application for patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor.
37 CFR 1.43 Application for patent by a legal representative of a deceased or legally incapacitated inventor.
If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent
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§ 409.01(a)REPRESENTATIVE OF APPLICANT OR OWNER
on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See 35 U.S.C. 117. See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
409.01(b) Deceased or Legally Incapacitated Inventor-Application Filed Before September 16, 2012 [R-11.2013]
[Editor Note: See MPEP § 409.01(a) for information pertaining to a deceased or legally incapacitated inventor in an application filed on or after September 16, 2012.]
35 U.S.C. 117 Death or incapacity of inventor.
Legal representatives of deceased inventors and of those under legal incapacity may make application for patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor.
37 CFR 1.42 (pre-AIA) When the inventor is dead.
In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.
37 CFR 1.43 (pre-AIA)When the inventor is insane or legally incapacitated.
In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.
I. TERMINATION OF POWER OF ATTORNEY – DECEASED INVENTOR
Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated. See also pre-AIA 37 CFR 1.422.
II. PROSECUTION BY LEGAL REPRESENTATIVE, ADMINISTRATOR OR EXECUTOR
When an inventor becomes legally incapacitated prior to the filing of an application and prior to executing the oath or declaration required by pre-AIA 37 CFR 1.63 and no legal representative has been appointed, one must be appointed by a court of competent jurisdiction for the purpose of execution of the oath or declaration of the application.
One who has reason to believe that he or she will be appointed legal representative of a deceased inventor may apply for a patent as legal representative in accordance with pre-AIA 37 CFR 1.42.
Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator. The heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted pursuant to pre-AIA 37 CFR 1.63 and 1.64.
III. PROOF OF AUTHORITY OF ADMINISTRATOR OR EXECUTOR
The Office no longer requires proof of authority of the legal representative of a deceased or incapacitated inventor. Although the Office does not require proof of authority to be filed, any person acting as a legal representative of a deceased or
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incapacitated inventor should ensure that he or she is properly acting in such a capacity.
IV. AFTER ADMINISTRATOR OR EXECUTOR HAS BEEN DISCHARGED
When an administrator or executor has performed his or her functions and has been discharged and it is desired to make an application for an invention of the deceased, it is necessary for the administrator or executor to take out new letters of administration in order that he or she may file a new application for an invention of the deceased inventor.
V. EXCEPTION IN SOME FOREIGN COUNTRIES
The terms “Executor” and “Administrator” do not have exact counterparts in all foreign countries, and therefore, those terms must be construed to fit the circumstances of the case. Hence, the person or persons having authority corresponding to that of executor or administrator are permitted to make application as, for example, the heirs in the Federal Republic of Germany where no existing executor or administrator has been or will be appointed.
VI. IF INVENTOR OF ASSIGNED APPLICATION DIES
When an inventor who has prosecuted an application after assignment, dies, the administrator of the deceased inventor’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes (see MPEP § 402.07).
VII. INTERVENTION OF EXECUTOR NOT COMPULSORY
When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.
This practice is applicable to an application which has been placed in condition for allowance or passed
to issue prior to notification of the death of the inventor. See MPEP § 409.01.
When a joint inventor of a pro se application dies after filing the application, the living joint inventor(s) must submit proof that the other joint inventor is dead. Upon submission of such proof, only the signatures of the living joint inventors are required on the papers filed with the USPTO if the legal representative of the deceased inventor does not intervene. If the legal representative of the deceased inventor wishes to intervene, the legal representative must submit an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and 1.64 (e.g., stating that he or she is the legal representative of the deceased inventor and his or her residence, citizenship and post office address). Once the legal representative of the deceased inventor intervenes in the pro se application, the signatures of the living joint inventors and the legal representative are required on the papers filed with the USPTO.
409.02 Unavailable Joint Inventor – Application Filed on or after September 16, 2012 [R-11.2013]
[Editor Note: See MPEP § 409.03 et seq. for information pertaining to the unavailability of an inventor in an application filed on or after September 16, 2012.]
37 CFR 1.45 Application for patent by joint inventors.
(a) Joint inventors must apply for a patent jointly, and each must make an inventor's oath or declaration as required by § 1.63, except as provided for in § 1.64. If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See § 1.64 concerning the execution of a substitute statement by the other joint inventor or inventors in lieu of an oath or declaration.
*****
Joint inventors must apply for a patent jointly, and each joint inventor must make the inventor’s oath or declaration required by 37 CFR 1.63, except as provided for in 37 CFR 1.64. See 35 U.S.C. 116(a) (“[w]hen an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title.”). 37 CFR 1.45(a) provides
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that if a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor(s) may make the application for patent on behalf of themselves and the omitted inventor. 37 CFR 1.45(a) also cross-references 37 CFR 1.64 concerning the execution of a substitute statement by the other joint inventor(s) in lieu of an oath or declaration. See MPEP § 604 for additional information pertaining to substitute statements
409.03 Unavailability of Inventor - Application Filed Before September 16, 2012 [R-11.2013]
[Editor Note: MPEP §§409.03 – 409.03(j) are not applicable to patent applications filed under 35 U.S.C. 111(a), 363, or 35 U.S.C. 385 on or after September 16, 2012. See MPEP § 409.02 for information pertaining to the unavailability of an inventor in an application filed on or after September 16, 2012.]
35 U.S.C. 116 (pre-AIA) Inventors.
When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.
Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Director may permit the application to be amended accordingly, under such terms as he prescribes.
35 U.S.C. 118 (pre-AIA) Filing by other than inventor.
Whenever an inventor refuses to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom the inventor has assigned or agreed in writing
to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage; and the Director may grant a patent to such inventor upon such notice to him as the Director deems sufficient, and on compliance with such regulations as he prescribes.
37 CFR 1.47 (pre-AIA) Filing when an inventor refuses to sign or cannot be reached.
(a) If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts, the fee set forth in § 1.17(g), and the last known address of the nonsigning inventor. The nonsigning inventor may subsequently join in the application by filing an oath or declaration complying with § 1.63 .
(b) Whenever all of the inventors refuse to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom an inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for all the inventors. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts, a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage, the fee set forth in § 1.17(g), and the last known address of all of the inventors. An inventor may subsequently join in the application by filing an oath or declaration complying with § 1.63.
(c) The Office will send notice of the filing of the application to all inventors who have not joined in the application at the address(es) provided in the petition under this section, and publish notice of the filing of the application in the Official Gazette. The Office may dispense with this notice provision in a continuation or divisional application, if notice regarding the filing of the prior application was given to the nonsigning inventor(s).
Application papers submitted pursuant to pre-AIA 37 CFR 1.47 are forwarded by the Office of Patent Application Processing (OPAP) to the Office of Petitions for a determination of whether the papers are proper, complete, and acceptable under pre-AIA 37 CFR 1.47 and for a decision on the petition under pre-AIA 37 CFR 1.47 before the application is sent to the Technology Center. Since an application without an oath or declaration executed by all of the inventors may be an incomplete application, an examiner should not mail an Office action in an application without a fully executed oath or
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declaration under pre-AIA 37 CFR 1.63 unless the application has been accorded status under pre-AIA 37 CFR 1.47 in a written decision on the petition.
A bona fide attempt must be made to comply with the provisions of pre-AIA 37 CFR 1.47 at the time the oath or declaration is first submitted. If the oath or declaration, and evidence submitted with the oath or declaration, are not acceptable, the pre-AIA 37 CFR 1.47 applicant will be notified of the reasons why the papers are not acceptable. The pre-AIA 37 CFR 1.47 applicant may request reconsideration and file supplemental evidence in a case where a bona fide attempt was made to comply with pre-AIA 37 CFR 1.47 from the outset.
A decision granting a petition under pre-AIA 37 CFR 1.47 does not alter the ownership interest or title of the application. If the nonsigning inventor has not signed an assignment document which has been recorded in the USPTO, then the pre-AIA 37 CFR 1.47 applicant (the company that files the petition under pre-AIA 37 CFR 1.47(b) and establishes proprietary interest in the application) is NOT the assignee of the entire interest of the application.
409.03(a) At Least One Joint Inventor Available [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]
Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application “on behalf of” themselves and on behalf of a joint inventor who “cannot be found or reached after diligent effort” or who refuses to “join in an application.”
In addition to other requirements of law (pre-AIA 35 U.S.C. 111(a) and 115), an application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements:
(A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 (see MPEP §§ 602, 605.01, 602.09, and 1414) and (2)
make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64. An oath or declaration signed by all the available joint inventors with the signature block of the nonsigning inventor(s) left blank may be treated as having been signed by all the available joint inventors on behalf of the nonsigning inventor(s), unless otherwise indicated.
(B) The application must be accompanied by proof that the nonsigning inventor (1) cannot be found or reached after diligent effort or (2) refuses to execute the application papers. See MPEP § 409.03(d).
(C) The last known address of the nonsigning joint inventor must be stated. See MPEP § 409.03(e).
409.03(b) No Inventor Available [R-08.2012]
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]
Filing under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118 is permitted only when no inventor is available to make application. These provisions allow a “person” with a demonstrated proprietary interest to make application “on behalf of and as agent for” an inventor who “cannot be found or reached after diligent effort” or who refuses to sign the application oath or declaration. The word “person” has been construed by the U.S. Patent and Trademark Office to include juristic entities, such as a corporation. Where pre-AIA 37 CFR 1.47(a) is available, application cannot be made under pre-AIA 37 CFR 1.47(b).
In addition to other requirements of law (pre-AIA 35 U.S.C. 111(a) and 115), an application deposited pursuant to pre-AIA 37 CFR 1.47(b) must meet the following requirements:
(A) The pre-AIA 37 CFR 1.47(b) applicant must make the oath required by pre-AIA 37 CFR 1.63 and 1.64 or 1.175. Where a corporation is the pre-AIA 37 CFR 1.47(b) applicant, an officer (President, Vice-President, Secretary, Treasurer, or Chief Executive Officer) thereof should normally sign the necessary oath or declaration. A corporation may authorize any person, including an attorney or agent registered to practice before the U.S. Patent and Trademark Office, to sign the application oath or
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declaration on its behalf. Where an oath or declaration is signed by a registered attorney or agent on behalf of a corporation, either proof of the attorney's or agent's authority in the form of a statement signed by an appropriate corporate officer must be submitted, or the attorney or agent may simply state that he or she is authorized to sign on behalf of the corporation. Where the oath or declaration is being signed on behalf of an assignee, see MPEP § 324. An inventor may not authorize another individual to act as his or her agent to sign the application oath or declaration on his or her behalf. Staeger v. Commissioner, 189 USPQ 272 (D.D.C. 1976), In re Striker, 182 USPQ 507 (Comm'r Pat. 1973). Where an application is executed by one other than the inventor, the declaration required by pre-AIA 37 CFR 1.63 must state the full name, residence, post office address, and citizenship of the nonsigning inventor. Also, the title or position of the person signing must be stated if signing on behalf of a corporation under pre-AIA 37 CFR 1.47(b).
(B) The pre-AIA 37 CFR 1.47(b) applicant must state his or her relationship to the inventor as required by pre-AIA 37 CFR 1.64.
(C) The application must be accompanied by proof that the inventor (1) cannot be found or reached after a diligent effort or (2) refuses to execute the application papers. See MPEP § 409.03(d).
(D) The last known address of the inventor must be stated. See MPEP § 409.03(e).
(E) The pre-AIA 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application. See MPEP § 409.03(f).
(F) The pre-AIA 37 CFR 1.47(b) applicant must prove that the filing of the application is necessary (1) to preserve the rights of the parties or (2) to prevent irreparable damage. See MPEP § 409.03(g).
409.03(c) Unavailable Legal Representative of Deceased Inventor [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]
Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language “cannot be found or reached after diligent effort” has no reasonable application to a deceased inventor. In re Application Papers Filed September 10, 1954, 108 USPQ 340 (Comm’r Pat. 1955). See pre-AIA 37 CFR 1.42 and MPEP § 409.01. However, pre-AIA 37 CFR 1.47 does apply where a known legal representative of a deceased inventor cannot be found or reached after diligent effort, or refuses to make application. In such cases, the last known address of the legal representative must be given (see MPEP § 409.03(e)).
409.03(d) Proof of Unavailability or Refusal [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]
I. INVENTOR CANNOT BE REACHED
Where inability to find or reach a nonsigning inventor “after diligent effort” is the reason for filing under pre-AIA 37 CFR 1.47, a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.
The fact that a nonsigning inventor is on vacation or out of town and is therefore temporarily unavailable to sign the declaration is not an acceptable reason for filing under pre-AIA 37 CFR 1.47.
Furthermore, the fact that an inventor is hospitalized and/or is not conscious is not an acceptable reason for filing under pre-AIA 37 CFR 1.47. Pre-AIA 37 CFR 1.43 may be available under these circumstances. See MPEP § 409.01(b). Such a petition under pre-AIA 37 CFR 1.47 will be dismissed as inappropriate.
The statement of facts must be signed, where at all possible, by a person having firsthand knowledge of the facts recited therein. Statements based on hearsay will not normally be accepted. Copies of documentary evidence such as Internet searches, certified mail return receipts, cover letters of
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instructions, telegrams, that support a finding that the nonsigning inventor could not be found or reached should be made part of the statement. The steps taken to locate the whereabouts of the nonsigning inventor should be included in the statement of facts. It is important that the statement contain facts as opposed to conclusions.
II. REFUSAL TO JOIN
A refusal by an inventor to sign an oath or declaration when the inventor has not been presented with the application papers does not itself suggest that the inventor is refusing to join the application unless it is clear that the inventor understands exactly what he or she is being asked to sign and refuses to accept the application papers. A copy of the application papers should be sent to the last known address of the nonsigning inventor, or, if the nonsigning inventor is represented by counsel, to the address of the nonsigning inventor’s attorney. The fact that an application may contain proprietary information does not relieve the pre-AIA 37 CFR 1.47 applicant of the responsibility to present the application papers to the inventor if the inventor is willing to receive the papers in order to sign the oath or declaration. It is noted that the inventor may obtain a complete copy of the application, unless the inventor has assigned his or her interest in the application, and the assignee has requested that the inventor not be permitted access. See MPEP § 106. It is reasonable to require that the inventor be presented with the application papers before a petition under pre-AIA 37 CFR 1.47 is granted since such a procedure ensures that the inventor is apprised of the application to which the oath or declaration is directed. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956).
Where a refusal of the inventor to sign the application papers is alleged, the circumstances of the presentation of the application papers and of the refusal must be specified in a statement of facts by the person who presented the inventor with the application papers and/or to whom the refusal was made. Statements by a party not present when an oral refusal is made will not be accepted.
Proof that a bona fide attempt was made to present a copy of the application papers (specification,
including claims, drawings, and oath or declaration) to the nonsigning inventor for signature, but the inventor refused to accept delivery of the papers or expressly stated that the application papers should not be sent, may be sufficient. When there is an express oral refusal, that fact along with the time and place of the refusal must be stated in the statement of facts. When there is an express written refusal, a copy of the document evidencing that refusal must be made part of the statement of facts. The document may be redacted to remove material not related to the inventor’s reasons for refusal.
When it is concluded by the pre-AIA 37 CFR 1.47 applicant that a nonsigning inventor’s conduct constitutes a refusal, all facts upon which that conclusion is based should be stated in the statement of facts in support of the petition or directly in the petition. If there is documentary evidence to support facts alleged in the petition or in any statement of facts, such evidence should be submitted. Whenever a nonsigning inventor gives a reason for refusing to sign the application oath or declaration, that reason should be stated in the petition. See also MPEP § 1702.
409.03(e) Statement of Last Known Address [R-08.2012]
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]
An application filed pursuant to pre-AIA 37 CFR 1.47 must state the last known address of the nonsigning inventor.
That address should be the last known address at which the inventor customarily receives mail. See MPEP § 602.08(a). Ordinarily, the last known address will be the last known residence of the nonsigning inventor.
Inasmuch as a nonsigning inventor is notified that an application pursuant to pre-AIA 37 CFR 1.47 has been filed on his or her behalf, other addresses at
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§ 409.03(e)REPRESENTATIVE OF APPLICANT OR OWNER
which the nonsigning inventor may be reached should also be given.
409.03(f) Proof of Proprietary Interest [R-08.2012]
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012. See MPEP §§ 325, 409.05, and 605 for information pertaining to applications for patent filed on or after September 16, 2012 by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.]
When an application is deposited pursuant to pre-AIA 37 CFR 1.47(b), the pre-AIA 37 CFR 1.47(b) applicant must prove that
(A) the invention has been assigned to the applicant, or
(B) the inventor has agreed in writing to assign the invention to the applicant, or
(C) the applicant otherwise has sufficient proprietary interest in the subject matter to justify the filing of the application.
If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant. A statement under pre-AIA 37 CFR 3.73(b) by the assignee must also be submitted (see MPEP § 324). An assignment of an application and any “reissue, division, or continuation of said application” does not itself establish an assignment of a continuation-in-part application. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956). An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).
When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted. If an agreement to
assign is dependent on certain specified conditions being met, it must be established by a statement of facts by someone with first hand knowledge of the circumstances in which those conditions have been met. A typical agreement to assign is an employment agreement where an employee (nonsigning inventor) agrees to assign to his or her employer (pre-AIA 37 CFR 1.47(b) applicant) all inventions made during employment. When such an agreement is relied on, it must be established by a statement of a person having firsthand knowledge of the facts that the invention was made by the employee while employed by the pre-AIA 37 CFR 1.47(b) applicant.
If the invention has not been assigned, or if there is no written agreement to assign, the pre-AIA 37 CFR 1.47(b) applicant must demonstrate that he or she otherwise has a sufficient proprietary interest in the matter.
A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the pre-AIA 37 CFR 1.47(b) applicant. The facts in support of any conclusion that a court would award title to the pre-AIA 37 CFR 1.47(b) applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same. The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved. A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to demonstrate a proprietary interest should be made of record.
409.03(g) Proof of Irreparable Damage [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]
Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement)
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that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.
409.03(h) Processing and Acceptance of a Pre-AIA 37 CFR 1.47 Application [R-08.2012]
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]
A filing date is assigned to an application deposited pursuant to pre-AIA 37 CFR 1.47 provided the requirements of 37 CFR 1.53(b) are met. A filing receipt will be sent to the applicant and the application , or an electronic message concerning the petition under pre-AIA 37 CFR 1.47, will be forwarded to the Office of Petitions, for consideration of the petition filed under pre-AIA 37 CFR 1.47.
When papers deposited pursuant to pre-AIA 37 CFR 1.47 are found acceptable, the Office of Petitions enters a decision to that effect in the file. A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s). The U.S. Patent and Trademark Office will notify the nonsigning inventor(s) or, if the inventor is deceased, the legal representative(s), of the filing of an application under pre-AIA 37 CFR 1.47 by sending a letter to the last known address of the nonsigning inventor(s) or legal representative(s). In a continuation or divisional application filed under 37 CFR 1.53(b) of an application accorded status under pre-AIA 37 CFR 1.47, if a copy of a declaration from a prior application and a copy of a decision according status under pre-AIA 37 CFR 1.47 are filed as permitted by pre-AIA 37 CFR 1.63(d)(3)(i), the notice will not be repeated. See pre-AIA 37 CFR 1.47(c). In addition, the notice is not repeated in continued prosecution applications filed under 37 CFR 1.53(d).
409.03(i) Rights of the Nonsigning Inventor [R-08.2012]
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]
The nonsigning inventor (also referred to as an “inventor designee”) may protest his or her designation as an inventor. The nonsigning inventor is entitled to inspect any paper in the application, order copies thereof at the price set forth in 37 CFR 1.19, and make his or her position of record in the file wrapper of the application. Alternatively, the nonsigning inventor may arrange to do any of the preceding through a registered patent attorney or agent.
While the U.S. Patent and Trademark Office will grant the nonsigning inventor access to the application, inter partes proceedings will not be instituted in a pre-AIA 37 CFR 1.47 case. In re Hough, 108 USPQ 89 (Comm'r Pat. 1955). A nonsigning inventor is not entitled to a hearing (Cogar v. Schuyler, 464 F.2d 747, 173 USPQ 389 (D.C. Cir. 1972)), and is not entitled to prosecute the application if status under pre-AIA 37 CFR 1.47 has been accorded, or if proprietary interest of the pre-AIA 37 CFR 1.47(b) applicant has been shown to the satisfaction of the U.S. Patent and Trademark Office.
A nonsigning inventor may join in a pre-AIA 37 CFR 1.47 application. To join in the application, the nonsigning inventor must file an appropriate pre-AIA 37 CFR 1.63 oath or declaration. Even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the 37 CFR 1.47 applicant. See MPEP § 402.10.
The rights of a nonsigning inventor are protected by the fact that the patent resulting from an application filed under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118 must issue to the inventor, and in an application filed under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has the same rights that he or she would have if he or she had joined in the application. In re Hough, 108 USPQ 89 (Comm'r Pat. 1955).
If a nonsigning inventor feels that he or she is the sole inventor of an invention claimed in a pre-AIA 37 CFR 1.47 application naming him or her as a joint inventor, the nonsigning inventor may file his or her own application and request that his or her application be placed in interference with the
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§ 409.03(i)REPRESENTATIVE OF APPLICANT OR OWNER
pre-AIA 37 CFR 1.47 application. If the claims in both the nonsigning inventor's application and the pre-AIA 37 CFR 1.47 application are otherwise found allowable, an interference may be declared.
409.03(j) Action Following Acceptance of a Pre-AIA 37 CFR 1.47 Application [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]
After an application deposited pursuant to pre-AIA 37 CFR 1.47 is found acceptable by the Office, the examiner will act on the application in the usual manner. Papers filed by an inventor who did not originally join in the application, and papers relating to its pre-AIA 37 CFR 1.47 status, will be placed in the file wrapper.
In the event the previously nonsigning inventor decides to join in the application by filing an executed oath or declaration complying with pre-AIA 37 CFR 1.63, the oath or declaration will be placed in the application file.
When an examiner receives an application in which a petition under pre-AIA 37 CFR 1.47 has been filed, he or she must check the file to determine that the petition has been decided by the Office of Petitions. If the petition has not been decided by the Office of Petitions, the application, or an electronic message concerning the petition, must be forwarded to the Office of Petitions for appropriate action.
An application filed under pre-AIA 37 CFR 1.47 can be published as a Statutory Invention Registration (provided the request for a Statutory Invention Registration was filed before March 16, 2013).
409.04 [Reserved]
409.05 Application For Patent by an Assignee, Obligated Assignee, or a Person Who Otherwise Shows Sufficient Proprietary
Interest – Application Filed On or After September 16, 2012 [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications filed on or after September 16, 2012.]
37 CFR 1.46 Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.
(a) A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
(b) If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. If an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under paragraph (a) of this section, the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).
(1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
(2) If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including:
(i) The fee set forth in § 1.17(g)
(ii) A showing that such person has sufficient proprietary interest in the matter; and
(iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
37 CFR 1.64 Substitute statement in lieu of an oath or declaration.
(a) An applicant under § 1.43, 1.45 or 1.46 may execute a substitute statement in lieu of an oath or declaration under §
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1.63 if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration under § 1.63, or cannot be found or reached after diligent effort.
(b) A substitute statement under this section must:
(1) Comply with the requirements of § 1.63(a), identifying the inventor or joint inventor with respect to whom a substitute statement in lieu of an oath or declaration is executed, and stating upon information and belief the facts which such inventor is required to state;
(2) Identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor with respect to whom the substitute statement is executed, and unless such information is supplied in an application data sheet in accordance with § 1.76, the residence and mailing address of the person signing the substitute statement;
(3) Identify the circumstances permitting the person to execute the substitute statement in lieu of an oath or declaration under § 1.63, namely whether the inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration under § 1.63; and
(4) Unless the following information is supplied in an application data sheet in accordance with § 1.76, also identify:
(i) Each inventor by his or her legal name; and
(ii) The last known mailing address where the inventor customarily receives mail, and last known residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor who is not deceased or under a legal incapacity.
I. ASSIGNEE OR OBLIGATED ASSIGNEE
An assignee or obligated assignee may file a patent application as the applicant. An assignee or obligated assignee doing so should record documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) as provided for in 37 CFR part 3 no later than the date the issue fee is paid in the application. See 37 CFR 1.46(b)(1).
See 37 CFR 1.64 concerning the execution of a substitute statement by an assignee or obligated assignee in lieu of an inventor’s oath or declaration (available when an inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration under 37 CFR 1.63). See also MPEP § 604.
II. SUFFICIENT PROPRIETARY INTEREST
37 CFR 1.46(a) provides that a person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. The ability for a person who otherwise shows sufficient proprietary interest in the matter to make an application for patent is not limited to situations in which all of the inventors refuse to execute the application, or cannot be found or reached after diligent effort.
Section 1.46(b)(2) provides that if the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (1) The fee set forth in § 1.17(g); (2) a showing that such person has sufficient proprietary interest in the matter; and (3) a statement that making the application for patent by a person who otherwise shows sufficient proprietary interest on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties. See 37 CFR 1.64 concerning the execution of a substitute statement by a person who otherwise shows sufficient proprietary interest in the matter in lieu of an inventor’s oath or declaration. See also MPEP § 604.
A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.46 applicant. The facts in support of any conclusion that a court would award title to the 37 CFR 1.46 applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same. The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved. A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to
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demonstrate a proprietary interest should be made of record.
410 Representations to the U.S. Patent and Trademark Office [R-07.2015]
37 CFR 1.4 Nature of correspondence and signature requirements.
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(d)
*****
(4) Certifications—
(i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
(ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
(5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms (e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 37 CFR 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.
(e) The following correspondence must be submitted with an original handwritten signature personally signed in permanent dark ink or its equivalent:
(1) Correspondence requiring a person's signature and relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and
(2) Payments by credit cards where the payment is not being made via the Office's electronic filing systems.
*****
37 CFR 11.18 Signature and certificate for correspondence filed in the Office.
(a) For all documents filed in the Office in patent, trademark, and other non-patent matters, and all documents filed with a hearing officer in a disciplinary proceeding, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed or inserted by such practitioner, in compliance with § 1.4(d) or § 2.193(a) of this chapter.
(b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
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(c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of—
(1) Striking the offending paper;
(2) Referring a practitioner’s conduct to the Director of Enrollment and Discipline for appropriate action;
(3) Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
(4) Affecting the weight given to the offending paper; or
(5) Terminating the proceedings in the Office.
(d) Any practitioner violating the provisions of this section may also be subject to disciplinary action.
37 CFR 1.4(d)(4) and (5) provide that the presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper or Office form by a party, whether a practitioner or nonpractitioner, constitutes a certification under 37 CFR 11.18(b), and that violations of 37 CFR 11.18(b)(2) may subject the party to sanctions under 37 CFR 11.18(c). Thus, by presenting to the Office a paper or Office form, the party is making the certifications set forth in 37 CFR 11.18(b), and is subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2), regardless of whether the party is a practitioner or nonpractitioner. A practitioner violating 37 CFR 11.18(b) may also be subject to disciplinary action in lieu of or in addition to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b). See 37 CFR 11.18(d).
Additional certifications provided in 37 CFR 1.4(d)(4) and (5) include that a person inserting a signature into a document under 37 CFR 1.4(d)(2) certifies that the inserted signature appearing in the document is his or her own signature. Also, a person filing a document signed by another under 37 CFR 1.4(d)(2) is obligated to have a reasonable basis to believe that the signature present on the document was actually inserted by that person. The person filing the document should retain evidence of the authenticity of the signature. See 37 CFR 1.4(h).
37 CFR 11.18(b) provides that, by presenting any paper to the USPTO, the party presenting such paper is making two certifications: (1) the first certification is that the statements made therein are subject to the
declaration clause of 37 CFR 1.68; (2) the second certification is the certification required for papers filed in a federal court under Rule 11(b) of the Federal Rules of Civil Procedure. 37 CFR 1.4(d)(5) makes clear that presenting a completed Office form to the USPTO constitutes a specific certification under 37 CFR 11.18(b).
The first certification has permitted the USPTO to eliminate the separate verification requirement previously contained in several rules for statements of facts by persons who are not registered to practice before the USPTO. As statements submitted to the USPTO by any person are now, by operation of 37 CFR 11.18(b)(1), verified statements, a separate verification requirement is no longer necessary. The USPTO, however, has retained the verification requirement for a statement to be submitted under oath or declaration (37 CFR 1.68) in a number of sections (e.g., 37 CFR 1.63, 1.64, 1.130, 1.131, 1.132, 1.495(f), and 5.25).
The second certification is based upon Rule 11(b) of the Federal Rules of Civil Procedure (2007). This provision is promulgated pursuant to the Director’s authority under 35 U.S.C. 2(b)(2) to establish regulations for the conduct of proceedings in the USPTO, and is intended to discourage the filing of frivolous papers by practitioners or non-practitioners in the USPTO. Rule 11(b) of the Federal Rules of Civil Procedure provides:
Representations to Court. By presenting to the court a pleading, written motion, or other paper—whether by signing, filing, submitting, or later advocating it—an attorney or unrepresented party certifies that to the best of the person's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances: (1) it is not being presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation; (2) the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law;
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(3)the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery; and (4) the denials of factual contentions are warranted on the evidence or, if specifically so identified, are reasonably based on belief or a lack of information.
Fed. R. Civ. P. 11(b)(2007).
37 CFR 11.18(b)(2) includes the same substantive requirements as Fed. R. Civ. P. 11(b). The advisory committee notes to the 1993 revision of Fed. R. Civ. P. 11(b) provide, in part, that:
[Fed. R. Civ. P. 11(b) and (c)] restate the provisions requiring attorneys and pro se litigants to conduct a reasonable inquiry into the law and facts before signing pleadings, written motions, and other documents, and prescribing sanctions for violations of these obligations. The [1993] revision in part expands the responsibilities of litigants to the court, while providing greater constraints and flexibility in dealing with infractions of the rule. The rule continues to require litigants to “stop-and-think” before initially making legal or factual contentions. It also, however, emphasizes the duty of candor by subjecting litigants to potential sanctions for insisting upon a position after it is no longer tenable and by generally providing protection against sanctions if they withdraw or correct contentions after a potential violation is called to their attention. The rule applies only to assertions contained in papers filed with or submitted to the court. It does not cover matters arising for the first time during oral presentations to the court, when counsel may make statements that would not have been made if there had been more time for study and reflection. However, a litigant's obligations with respect to the contents of these papers are not measured solely as of the time they are filed with or submitted to the court, but include reaffirming to the court and advocating positions contained in those pleadings and motions after learning that they
cease to have any merit. For example, an attorney who during a pretrial conference insists on a claim or defense should be viewed as “presenting to the court” that contention and would be subject to the obligations of [Rule 11(b)] measured as of that time. Similarly, if after a notice of removal is filed, a party urges in federal court the allegations of a pleading filed in state court (whether as claims, defenses, or in disputes regarding removal or remand), it would be viewed as “presenting”-- and hence certifying to the district court under Rule 11--those allegations. The certification with respect to allegations and other factual contentions is revised in recognition that sometimes a litigant may have good reason to believe that a fact is true or false but may need discovery, formal or informal, from opposing parties or third persons to gather and confirm the evidentiary basis for the allegation. Tolerance of factual contentions in initial pleadings by plaintiffs or defendants when specifically identified as made on information and belief does not relieve litigants from the obligation to conduct an appropriate investigation into the facts that is reasonable under the circumstances; it is not a license to join parties, make claims, or present defenses without any factual basis or justification. Moreover, if evidentiary support is not obtained after a reasonable opportunity for further investigation or discovery, the party has a duty under the rule not to persist with that contention. [Rule 11(b)] does not require a formal amendment to pleadings for which evidentiary support is not obtained, but rather calls upon a litigant not thereafter to advocate such claims or defenses. The certification is that there is (or likely will be) “evidentiary support” for the allegation, not that the party will prevail with respect to its contention regarding the fact. That summary judgment is rendered against a party does not necessarily mean, for purposes of this certification, that it had no evidentiary support for its position. On the other hand, if a party has evidence with respect to a contention that would suffice to defeat a motion for summary judgment based thereon, it would have
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sufficient “evidentiary support” for purposes of Rule 11. Denials of factual contentions involve somewhat different considerations. Often, of course, a denial is premised upon the existence of evidence contradicting the alleged fact. At other times a denial is permissible because, after an appropriate investigation, a party has no information concerning the matter or, indeed, has a reasonable basis for doubting the credibility of the only evidence relevant to the matter. A party should not deny an allegation it knows to be true; but it is not required, simply because it lacks contradictory evidence, to admit an allegation that it believes is not true. The changes in [Rule 11(b)(3) and (4)] will serve to equalize the burden of the rule upon plaintiffs and defendants, who under Rule 8(b) are in effect allowed to deny allegations by stating that from their initial investigation they lack sufficient information to form a belief as to the truth of the allegation. If, after further investigation or discovery, a denial is no longer warranted, the defendant should not continue to insist on that denial. While sometimes helpful, formal amendment of the pleadings to withdraw an allegation or denial is not required by [Rule 11(b)]. Arguments for extensions, modifications, or reversals of existing law or for creation of new law do not violate [Rule 11(b)(2)] provided they are “nonfrivolous.” This establishes an objective standard, intended to eliminate any “empty-head pure-heart” justification for patently frivolous arguments. However, to the extent to which a litigant has researched the issues and found some support for its theories even in minority opinions, in law review articles, or through consultation with other attorneys should certainly be taken into account in determining whether [Rule 11(b)(2)] has been violated.Although arguments for a change in law are not required to be specifically so identified, a contention that is so identified should be viewed with greater tolerance under [Rule 11].
Amendments to the Federal Rules of Civil Procedure at 50-53 (1993). An “inquiry reasonable under the circumstances” requirement of 37 CFR 10.18(b)(2)
is identical to that in Fed. R. Civ. P. 11(b). The Federal courts have stated in regard to the “reasonable inquiry” requirement of Fed. R. Civ. P. 11:
In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands “an objective determination of whether a sanctioned party's conduct was reasonable under the circumstances.” In effect it imposes a negligence standard, for negligence is a failure to use reasonable care. The equation between negligence and failure to conduct a reasonable precomplaint inquiry is . . . that “the amount of investigation required by Rule 11 depends on both the time available to investigate and on the probability that more investigation will turn up important evidence; the Rule does not require steps that are not cost-justified.”
Hays v. Sony Corp. of Am., 847 F.2d 412, 418, 7 USPQ2d 1043, 1048 (7th. Cir. 1988) (citations omitted) (decided prior to the 1993 amendment to Fed. R. Civ. P. 11, but discussing a “reasonable under the circumstances” standard).
37 CFR 1.4(d)(4) and (5) and 11.18 do not require a practitioner to advise the client (or third party) providing information of this certification effect (or the sanctions applicable to noncompliance), or question the client (or third party) when such information or instructions are provided. When a practitioner is submitting information (e.g., a statement of fact) from the applicant or a third party, or relying upon information from the applicant or a third party in his/her arguments, the Office will consider a practitioner's “inquiry reasonable under the circumstances” duty under 37 CFR 11.18 met so long as the practitioner has no knowledge of information that is contrary to the information provided by the applicant or third party or would otherwise indicate that the information provided by the applicant or third party was so provided for the purpose of a violation of 37 CFR 11.18 (e.g., was submitted to cause unnecessary delay).
Nevertheless, it is highly advisable for a practitioner to advise a client or third party that any information
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so provided must be reliable and not misleading. The submission by an applicant of misleading or inaccurate statements of facts during the prosecution of applications for patent has resulted in the patents issuing on such applications being held unenforceable. See, e.g. , Refac Int'l Ltd. v. Lotus Development Corp., 81 F.3d 1576, 38 USPQ2d 1665 (Fed. Cir. 1996); Paragon Podiatry Laboratory, Inc. v. KLM Laboratories, Inc., 984 F.2d 1182, 25 USPQ2d 1561 (Fed. Cir 1993); Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556, 200 USPQ 289 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); Ott v. Goodpasture, 40 USPQ2d 1831 (D.N. Tex. 1996); Herman v. William Brooks Shoe Co., 39 USPQ2d 1773 (S.D.N.Y. 1996); Golden Valley Microwave Food Inc. v. Weaver Popcorn Co., 837 F. Supp. 1444, 24 USPQ2d 1801 (N.D. Ind. 1992), aff'd, 11 F.3d 1072 (Fed. Cir. 1993)(table), cert.
denied, 511 U.S. 1128 (1994). Likewise, false statements by a practitioner in a paper submitted to the Office during the prosecution of an application for patent have resulted in the patent issuing on such application also being held unenforceable. See General Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 30 USPQ2d 1149 (Fed. Cir. 1994)(false statement in a petition to make an application special constitutes inequitable conduct, and renders the patent issuing on such application unenforceable).
An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996); FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5 USPQ2d 1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772 (Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520 (1984). Thus, the “inquiry reasonable under the circumstances” requirement of 37 CFR 11.18 does not create any new duty on the part of an applicant for patent to conduct a prior art search. See MPEP § 609; cf. Judin v. United States, 110 F.3d 780, 42 USPQ2d 1300 (Fed. Cir 1997)(the failure to obtain and examine the accused infringing device prior to bringing a civil action for infringement violates the 1983 version of Fed. R. Civ. P. 11). The “inquiry
reasonable under the circumstances” requirement of 37 CFR 11.18, however, will require an inquiry into the underlying facts and circumstances when a practitioner provides conclusive statements to the Office (e.g., a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(a) was unintentional).
37 CFR 11.18(c) specifically provides that violations of 37 CFR 11.18(b)(1) may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom, and that violations of any of 37 CFR 11.18(b)(2)(i) through (iv) are, after notice and reasonable opportunity to respond, subject to such sanctions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of:
(1) Striking the offending paper;
(2) Referring a practitioner’s conduct to the Director of Enrollment and Discipline for appropriate action;
(3) Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
(4) Affecting the weight given to the offending paper; or
(5) Terminating the proceedings in the Office
The Office has amended 37 CFR 1.4(d)(4) and 11.18 with the objective of discouraging the filing of frivolous or clearly unwarranted correspondence in the Office, not to routinely review correspondence for compliance with 37 CFR 11.18(b)(2) and impose sanctions under 37 CFR 11.18(c).
Where the circumstances of an application or other proceeding warrant a determination of whether there has been a violation of 37 CFR 11.18(b), the file or the application or other proceeding will be forwarded to the Office of Enrollment and Discipline (OED) for a determination of whether there has been a violation of 37 CFR 11.18(b). In the event that OED determines that a provision of 37 CFR 11.18(b) has been violated, the USPTO Director will determine what (if any) sanction(s) under 37 CFR 11.18(c) is to be imposed in the application or other proceeding.
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In addition, if OED determines that a provision of 37 CFR 11.18(b) has been violated by a practitioner, OED will determine whether such practitioner is to be subject to disciplinary action (see 37 CFR 1.4(d)(4) and 11.18(d)). That is, OED will provide a determination of whether there has been a violation of 37 CFR 11.18(b), and if such violation is by a practitioner, whether such practitioner is to be subject to disciplinary action; however, OED will not be responsible for imposing sanctions under 37 CFR 11.18(c) in an application or other proceeding.
37 CFR 11.18(d) provides that any practitioner violating the provisions of this section may also be subject to disciplinary action. 37 CFR 11.18(d) (and the corresponding provision of 37 CFR 1.4(d)(4)) clarifies that a practitioner may be subject to disciplinary action in lieu of, or in addition to, the sanctions set forth in 37 CFR 11.18(c) for violations of 37 CFR 11.18.
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Chapter 500 Receipt and Handling of Mail and Papers
Filing Papers With the U.S. Patent and Trademark Office
501
Depositing Correspondence502 Correspondence Transmitted by Facsimile
502.01
Correspondence Signature Requirements
502.02
Communications via Internet Electronic Mail (email)
502.03
Duplicate Copies of Correspondence502.04 Correspondence Transmitted by EFS-Web
502.05
Application Number and Filing Receipt503 Assignment of Application for Examination
504
Date of Receipt Stamp505 Completeness of Original Application506
[Reserved]506.01 Review of Refusal To Accord Filing Date
506.02
Drawing Review in the Office of Patent Application Processing
507
Distribution508 [Reserved]508.01 Papers Received After Patenting or Abandonment
508.02
[Reserved]508.03 Unlocatable Patent or Application Files
508.04
Payment of Fees509 Deposit Accounts509.01 Small Entity Status — Definitions509.02 Claiming Small Entity Status509.03 Micro Entity Status — Definitions509.04
Gross Income Basis for Micro Entity Status
509.04(a)
Institution of Higher Education Basis for Micro Entity Status
509.04(b)
Parties Who Can Sign the Micro Entity Certification
509.04(c)
Continued Obligation to Determine Micro Entity Qualification
509.04(d)
Notification of Loss of Entitlement to Micro Entity Status
509.04(e)
Correcting Errors in Micro Entity Status
509.04(f)
U.S. Patent and Trademark Office Business Hours
510
Postal Service Interruptions and Emergencies
511
Certificate of Mailing or Transmission512 Deposit as Priority Mail Express® with U.S. Postal Service
513
501 Filing Papers With the U.S. Patent and Trademark Office [R-07.2015]
37 CFR 1.1 Addresses for non-trademark correspondence with the United States Patent and Trademark Office.
(a) In general. Except as provided in paragraphs (a)(3)(i), (a)(3)(ii) and (d)(1) of this section, all correspondence intended for the United States Patent and Trademark Office must be addressed to either “Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450” or to specific areas within the Office as set out in paragraphs (a)(1), and (a)(3)(iii) of this section. When appropriate, correspondence should also be marked for the attention of a particular office or individual.
(1) Patent correspondence.
(i) In general. All correspondence concerning patent matters processed by organizations reporting to the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(ii) Patent Trial and Appeal Board. See § 41.10 or § 42.6 of this title. Notices of appeal, appeal briefs, reply briefs, requests for oral hearing, as well as all other correspondence in an application or a patent involved in an appeal to the Board for which an address is not otherwise specified, should be addressed as set out in paragraph (a)(1)(i) of this section.
(2) [Reserved]
(3) Office of General Counsel correspondence.—
(i) Litigation and service. Correspondence relating to pending litigation or otherwise within the scope of part 104 of this title shall be addressed as provided in § 104.2.
(ii) Disciplinary proceedings. Correspondence to counsel for the Director of the Office of Enrollment and Discipline relating to disciplinary proceedings pending before a Hearing Officer or the Director shall be mailed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(iii) Solicitor, in general. Correspondence to the Office of the Solicitor not otherwise provided for shall be addressed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(iv) General Counsel. Correspondence to the Office of the General Counsel not otherwise provided for, including correspondence to the General Counsel relating to disciplinary proceedings, shall be addressed to: General Counsel, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
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(v) Improper correspondence. Correspondence improperly addressed to a Post Office Box specified in paragraphs (a)(3)(i) and (a)(3)(ii) of this section will not be filed elsewhere in the United States Patent and Trademark Office, and may be returned.
(4) Office of Public Records correspondence.
(i) Assignments. All patent-related documents submitted by mail to be recorded by Assignment Services Division, except for documents filed together with a new application, should be addressed to: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. See § 3.27.
(ii) Documents. All requests for certified or uncertified copies of patent documents should be addressed to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(5) Office of Enrollment and Discipline correspondence. All correspondence directed to the Office of Enrollment and Discipline concerning enrollment, registration, and investigation matters should be addressed to Mail Stop OED, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(b) Patent Cooperation Treaty. Letters and other communications relating to international applications during the international stage and prior to the assignment of a national serial number should be additionally marked “Mail Stop PCT.”
(c) For reexamination or supplemental examination proceedings.
(1) All correspondence concerning ex parte reexamination, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 102.04 of this chapter, should be additionally marked “Mail Stop Ex Parte Reexam.”
(2) All correspondence concerning inter partes reexamination, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 102.4 of this chapter, should be additionally marked ‘‘Mail Stop Inter Partes Reexam.’’
(3) Requests for supplemental examination (original and corrected request papers) and any other paper filed in a supplemental examination proceeding, should be additionally marked ‘‘Mail Stop Supplemental Examination.’’
(4) All correspondence concerning a reexamination proceeding ordered as a result of a supplemental reexamination proceeding, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 102.4 of this chapter should be additionally marked “Mail Stop Ex Parte Reexam.”
(d) Payments of maintenance fees in patents not submitted electronically over the Internet, and correspondence related to maintenance fees may be addressed to: Director of the United
States Patent and Trademark Office, Attn: Maintenance Fee, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
(e) Patent term extension. All applications for extension of patent term under 35 U.S.C. 156 and any communications relating thereto intended for the United States Patent and Trademark Office should be additionally marked “Mail Stop Hatch-Waxman PTE.” When appropriate, the communication should also be marked to the attention of a particular individual, as where a decision has been rendered.
(f) [Reserved]
37 CFR 1.4 Nature of correspondence and signature requirements.
(a) Correspondence with the Patent and Trademark Office comprises:
(1) Correspondence relating to services and facilities of the Office, such as general inquiries, requests for publications supplied by the Office, orders for printed copies of patents, orders for copies of records, transmission of assignments for recording, and the like, and
(2) Correspondence in and relating to a particular application or other proceeding in the Office. See particularly the rules relating to the filing, processing, or other proceedings of national applications in subpart B of this part; of international applications in subpart C of this part; of ex parte reexaminations of patents in subpart D of this part; of supplemental examination of patents in subpart E of this part; of extension of patent term in subpart F of this part; of inter partes reexaminations of patents in subpart H of this part; of international design applications in subpart I of this part; and of the Patent Trial and Appeal Board in parts 41 and 42 of this chapter.
(b) Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical. The filing of duplicate copies of correspondence in the file of an application, patent, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.
(c) Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects. Subjects provided for on a single Office or World Intellectual Property Organization form may be contained in a single paper.
(d)(1) Handwritten signature. Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (d)(4), (e) and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person’s signature, must:
(i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equivalent, by that person; or
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(ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original.
(2) S-signature. An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by paragraph (d)(1) of this section. An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature as provided for in paragraph (d)(1) of this section. Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d), or via the Office electronic filing system as an attachment as provided in § 1.6(a)(4), for a patent application, patent, or a reexamination or supplemental examination proceeding may be S-signature signed instead of being personally signed (i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) of this section are as follows.
(i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature ( e.g., /Dr. James T. Jones, Jr./); and
(ii) A patent practitioner (§ 1.32(a)(1)), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
(iii) The signer’s name must be:
(A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
(B) Reasonably specific enough so that the identity of the signer can be readily recognized.
(3) Electronically submitted correspondence. Correspondence permitted via the Office electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the Office electronic filing system.
(4) Certifications—
(i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of
this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
(ii) Certifications as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
(5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms (e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.
(e) The following correspondence must be submitted with an original handwritten signature personally signed in permanent dark ink or its equivalent:
(1) Correspondence requiring a person's signature and relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and
(2) Payments by credit cards where the payment is not being made via the Office's electronic filing systems.
(f) When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.
(g) An applicant who has not made of record a registered attorney or agent may be required to state whether assistance was received in the preparation or prosecution of the patent application, for which any compensation or consideration was given or charged, and if so, to disclose the name or names of the person or persons providing such assistance. Assistance includes the preparation for the applicant of the specification and amendments or other papers to be filed in the Patent and Trademark Office, as well as other assistance in such matters, but does not include merely making drawings by draftsmen or stenographic services in typing papers.
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(h) Ratification/confirmation/evidence of authenticity: The Office may require ratification, confirmation (which includes submission of a duplicate document but with a proper signature), or evidence of authenticity of a signature, such as when the Office has reasonable doubt as to the authenticity (veracity) of the signature, e.g., where there are variations of a signature, or where the signature and the typed or printed name, do not clearly identify the person signing.
I. GENERAL MAILING ADDRESSES
The U.S. Patent and Trademark Office (Office) has three separate general mailing addresses. The addresses are as follows:
A. For Patent Applications and Patent-Related Papers
Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to:
Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450
Such correspondence includes: patent applications, replies to notices of informality, requests for extension of time, notices of appeal to the Patent Trial and Appeal Board (the Board), briefs in support of an appeal to the Board, requests for oral hearing before the Board, applications for extensions of term of patent, requests for reexamination, requests for supplemental examination, statutory disclaimers, certificates of correction, petitions to the Commissioner for Patents, submission of information disclosure statements, petitions to revive abandoned patent applications, and other correspondence related to patent applications and patents which is processed by organizations reporting to the Commissioner for Patents.
Certain patent-related correspondence requires immediate Office attention. Examples are:
(A) Petitions for express abandonment to avoid publication under 37 CFR 1.138(c);
(B) Petitions to withdraw an application from issue under 37 CFR 1.313(c);
(C) Request for expedited examination of a design application (rocket docket); and
(D) Papers required by the Office of Data Management to be hand-carried or faxed to the Office of Data Management.
Applicants are encouraged to transmit these types of correspondence by facsimile transmission (see MPEP § 502.01) or, where permitted (items B and D only), hand-carry them to the appropriate area of the Office for processing. (see MPEP § 502).
B. For Trademark Applications and Trademark-Related Papers
Correspondence in trademark-related matters under the direction of the Commissioner for Trademarks or the Trademark Trial and Appeal Board should be addressed to:
Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
Such correspondence includes all trademark applications and other trademark-related mail, except for trademark documents sent to the Assignment Division for recordation, correspondence for the Office’s Madrid Processing Unit, requests for certified and uncertified copies of trademark documents, and filings submitted electronically. See 37 CFR 2.190.
Correspondence to be delivered by the United States Postal Service to the Office’s Madrid Processing Unit must be mailed to:
Commissioner for Trademarks Madrid Processing Unit 600 Dulany St., MDE 7B87 Alexandria, VA 22314-5793
C. For Other Correspondence
Patent and trademark documents sent to the Assignment Division for recordation (Mail Stop Assignment Recordation Services), requests for certified or uncertified copies of patent and trademark documents (Mail Stop Document Services), and for correspondence for which an address is not otherwise specified in 37 CFR 1.1 or 2.190, should be addressed to:
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Director of the United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
II. SEPARATE MAILING ADDRESSES FOR CERTAIN CORRESPONDENCE
The Office has separate mailing addresses for certain correspondence:
(A) Certain court-related correspondence (e.g., summons and complaint) being delivered to the Office via the U.S. Postal Service (USPS) must be addressed: General Counsel United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
(B) Correspondence directed to the Office of Enrollment and Discipline (OED) Director relating to disciplinary proceedings pending before a Hearing Officer or the Director must be addressed: Mail Stop 8 Office of the Solicitor United States Patent and Trademark Office P.O. Box 1450 Alexandria, Virginia 22313-1450
(C) Maintenance fee payments not electronically submitted over the Internet and correspondence related to maintenance fees may be addressed to: Director of the United States Patent and Trademark Office Attn: Maintenance Fees 2051 Jamieson Ave., Ste. 300 Alexandria, VA 22314
(D) A payment to replenish a deposit account may be addressed to: Director of the United States Patent and Trademark Office Attn: Deposit Accounts 2051 Jamieson Ave., Ste. 300 Alexandria, VA 22314
Persons filing correspondence with the Office should check the rules of practice, the Official Gazette, or the USPTO website (www.uspto.gov) to determine the appropriate mailing address for such correspondence.
III. HAND-DELIVERY OF PAPERS
Patent-related papers may be hand-carried to the Office. If the correspondence is hand-carried to the Office, with limited exceptions (see subsection I.A., above) it must be delivered to:
Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314
See MPEP § 502.
Trademark-related papers may be filed at the “walk-up” window located in the Trademark Assistance Center, Madison East, Concourse Level, Room C55, 600 Dulany Street, Alexandria, VA 22314.
As provided in 37 CFR 1.4(c), matters that are to be considered by different branches or sections of the USPTO must be contained in separate papers. The following form paragraph may be used to notify the applicant of this requirement when the applicant has filed a single paper containing distinct subjects, inquiries, or orders.
¶ 5.01.01 Separate Paper Required
The [1] submitted [2] should have been submitted as a separate paper as required by 37 CFR 1.4(c). The paper has been entered. However, all future correspondence must comply with 37 CFR 1.4.
Examiner Note:
1. In bracket 1, indicate the item required to be separately submitted, such as an affidavit, petition, or other appropriate document.
2. If the applicant is a pro se inventor, include a copy of the rule.
Those who correspond with the USPTO are strongly encouraged not to include correspondence which will have to be directed to different areas (e.g., Patents and Trademarks) of the Office in a single envelope. Including multiple papers in a single envelope increases the likelihood that one or more of the papers will be delayed before reaching the appropriate area. Placing the papers in separately addressed envelopes will reduce the number of actions being performed by the USPTO unnecessarily or inappropriately.
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Pursuant to 37 CFR 1.1, non-trademark correspondence intended for the USPTO must be mailed to P.O. Box 1450, Alexandria, VA 22313-1450, except as otherwise provided. Except for certain mail addressed incorrectly to the Office of the General Counsel (see 37 CFR 1.1(a)(3)(v)), there will be no penalty for addressing a document to the wrong area within the Office, as long as one of the approved addresses is used. Use of the specific addresses listed within 37 CFR 1.1 is strongly encouraged because it will facilitate the process both for the Office and the filer. Accordingly, a new application incorrectly addressed to the Director will be treated the same as if the application was addressed to the specific Commissioner.
All mailed communications are received by the Incoming-Mail Section of the Office of Patent Application Processing (OPAP), which opens and processes all official mail.
Special mail stops have been established to allow the forwarding of particular types of correspondence to appropriate areas of the Office as quickly as possible. A list of these mail stops is published weekly in the Official Gazette. Only the specified type of document for a particular mail stop should be placed in an envelope addressed to that mail stop.
If any documents other than the specified type identified for each department are addressed to that department, they will be significantly delayed in reaching the appropriate area for which they were intended.
502 Depositing Correspondence [R-07.2015]
37 CFR 1.5 Identification of patent, patent application, or patent-related proceeding.
(a) No correspondence relating to an application should be filed prior to receipt of the assigned application number (i.e., U.S. application number, international application number, or international registration number as appropriate). When correspondence directed to the Patent and Trademark Office concerns a previously filed application for a patent, it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Patent and Trademark Office, or the international application number of the international application, or the international registration number of an international design application. Any correspondence not containing such identification will be returned to the sender
where a return address is available. The returned correspondence will be accompanied with a cover letter which will indicate to the sender that if the returned correspondence is resubmitted to the Patent and Trademark Office within two weeks of the mail date on the cover letter, the original date of receipt of the correspondence will be considered by the Patent and Trademark Office as the date of receipt of the correspondence. Applicants may use either the Certificate of Mailing or Transmission
procedure under § 1.8 or the Priority Mail Express® procedure under § 1.10 for resubmissions of returned correspondence if they desire to have the benefit of the date of deposit in the United States Postal Service. If the returned correspondence is not resubmitted within the two-week period, the date of receipt of the resubmission will be considered to be the date of receipt of the correspondence. The two-week period to resubmit the returned correspondence will not be extended. In addition to the application number, all correspondence directed to the Patent and Trademark Office concerning applications for patent should also state the name of the first listed inventor, the title of the invention, the date of filing the same, and if known, the group art unit or other unit within the Patent and Trademark Office responsible for considering the correspondence and the name of the examiner or other person to which it has been assigned.
(b) When the letter concerns a patent other than for purposes of paying a maintenance fee, it should state the number and date of issue of the patent, the name of the patentee, and the title of the invention. For letters concerning payment of a maintenance fee in a patent, see the provisions of § 1.366(c).
(c) Correspondence relating to a trial proceeding before the Patent Trial and Appeal Board (part 42 of this title) are governed by § 42.6 of this title.
(d) A letter relating to a reexamination or supplemental examination proceeding should identify it as such by the number of the patent undergoing reexamination or supplemental examination, the request control number assigned to such proceeding, and, if known, the group art unit and name of the examiner to which it been assigned.
(e) [Reserved]
(f) When a paper concerns a provisional application, it should identify the application as such and include the application number.
37 CFR 1.6 Receipt of correspondence.
(a) Date of receipt and Priority Mail Express® date of deposit. Correspondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:
(1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2) Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail
Express® with the United States Postal Service.
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(3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
(4) Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
(b) [Reserved]
(c) Correspondence delivered by hand. In addition to being mailed, correspondence may be delivered by hand during hours the Office is open to receive correspondence.
(d) Facsimile transmission. Except in the cases enumerated below, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the United States Patent and Trademark Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See paragraph (a)(3) of this section. To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the United States Patent and Trademark Office. The application number of a patent application, the control number of a reexamination or supplemental examination proceeding, the interference number of an interference proceeding, the trial number of a trial proceeding before the Board, or the patent number of a patent should be entered as a part of the sender's identification on a facsimile cover sheet. Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:
(1) Correspondence as specified in § 1.4(e), requiring an original signature;
(2) Certified documents as specified in § 1.4(f);
(3) Correspondence that cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D),(F), (I), and (K), and § 1.8(a)(2)(iii)(A), except that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;
(4) Color drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.173, 1.437 , or 1.1026;
(5) A request for reexamination under § 1.510 or § 1.913 , or a request for supplemental examination under § 1.610 ;
(6) Correspondence to be filed in an application subject to a secrecy order under §§ 5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application;
(7) In contested cases and trials before the Patent Trial and Appeal Board, except as the Board may expressly authorize.
(e) [Reserved]
(f) Facsimile transmission of a patent application under § 1.53(d). In the event that the Office has no evidence of receipt of an application under § 1.53(d) (a continued prosecution application) transmitted to the Office by facsimile transmission, the party who transmitted the application under § 1.53(d) may petition the Director to accord the application under § 1.53(d) a filing date as of the date the application under § 1.53(d) is shown to have been transmitted to and received in the Office,
(1) Provided that the party who transmitted such application under § 1.53(d):
(i) Informs the Office of the previous transmission of the application under § 1.53(d) promptly after becoming aware that the Office has no evidence of receipt of the application under § 1.53(d);
(ii) Supplies an additional copy of the previously transmitted application under § 1.53(d); and
(iii) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previous transmission of the application under § 1.53(d) and is accompanied by a copy of the sending unit’s report confirming transmission of the application under § 1.53(d) or evidence that came into being after the complete transmission and within one business day of the complete transmission of the application under § 1.53(d).
(2) The Office may require additional evidence to determine if the application under § 1.53(d) was transmitted to and received in the Office on the date in question.
(g) Submission of the national stage correspondence required by § 1.495 via the Office electronic filing system. In the event that the Office has no evidence of receipt of the national stage correspondence required by § 1.495, which was submitted to the Office by the Office electronic filing system, the party who submitted the correspondence may petition the Director to accord the national stage correspondence a receipt date as of the date the correspondence is shown to have been officially submitted to the Office.
(1) The petition of this paragraph (g) requires that the party who submitted such national stage correspondence:
(i) Informs the Office of the previous submission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence under § 1.495;
(ii) Supplies an additional copy of the previously submitted correspondence;
(iii) Includes a statement that attests on a personal knowledge basis, or to the satisfaction of the Director, that the correspondence was previously officially submitted; and
(iv) Supplies a copy of an acknowledgment receipt generated by the Office electronic filing system, or equivalent
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evidence, confirming the submission to support the statement of paragraph (g)(1)(iii) of this section.
(2) The Office may require additional evidence to determine if the national stage correspondence was submitted to the Office on the date in question.
All applications (provisional and nonprovisional) may be sent to the U.S. Patent and Trademark Office by mail using the United States Postal Service (see MPEP § 501), or they may be hand-carried to the Customer Service Window. However, applicants should consider filing new patent applications (as well as patent-related correspondence) via the Office electronic filing system (EFS-Web) whenever permitted. See the EFS-Web Guidance and Resources page of the USPTO website (www.uspto.gov/patents-application-process/ applying-online/efs-web-guidance-and-resources) for additional information. See also MPEP § 502.05. New applications cannot be transmitted by facsimile and are not entitled to the benefit of a Certificate of Transmission under 37 CFR 1.8. A request for a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (available only for design applications) may be transmitted to the Office by facsimile (37 CFR 1.6(d)(3)); however, it is not entitled to the benefit of a Certificate of Transmission (see 37 CFR 1.8(a)(2)(i)(A)). See 37 CFR 1.6(d) and MPEP § 502.01.
See 37 CFR 2.190 and MPEP § 501 for addresses pertaining to trademark correspondence.
All correspondence related to a national patent application already filed with the U.S. Patent and Trademark Office must include the identification of the application number or the serial number and the filing date assigned to the application by the Office. Any correspondence not containing the proper identification set forth in 37 CFR 1.5(a) will be returned to the sender by the Office of Patent Application Processing (OPAP). Each paper should be inspected to assure that the papers being returned contain either an “Office Date” stamp indicating the date of receipt. If there is a minor obvious error in the identification of the application such that the Office readily recognizes both the existence of the error and the appropriate correction, the error can be corrected by the Office. The Office often
experiences difficulty in matching incoming papers with the application file to which they pertain because insufficient or erroneous information is given. This applies especially to amendments, powers of attorney, changes of address, status letters, petitions for extension of time, and other petitions.
It would be of great assistance to the Office if all incoming papers pertaining to a filed application carried the following items:
(A) Application number (checked for accuracy, including series code and serial no.).
(B) Art Unit number (copied from most recent Office communication).
(C) Filing date.
(D) Name of the examiner who prepared the most recent Office action.
(E) Title of invention.
(F) Confirmation number (see MPEP § 503).
Applicants may be reminded of this by including form paragraph 5.01.
¶ 5.01 Proper Heading for Incoming Papers
It would be of great assistance to the Office if all incoming papers pertaining to a filed application carried the following items:
1. Application number (checked for accuracy, including series code and serial no.).
2. Art Unit number (copied from most recent Office communication).
3. Filing date.
4. Name of the examiner who prepared the most recent Office action.
5. Title of invention.
6. Confirmation number (seeMPEP § 503).
The Office prefers identifying indicia to be provided on the drawings. If such identifying indicia is provided, it must be placed on the front of each sheet of drawings within the top margin. See 37 CFR 1.84(c). The identifying indicia should include the title of the invention, inventor’s name, application number, and confirmation number (see MPEP §
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503). If the Office has not yet assigned an application number and confirmation number to the application, the docket number (if any) used by the applicant to track the application should be provided.
When the Office receives replacement sheets of drawings for patent applications after the application has been filed, a cover letter identifying the drawings by application number should accompany them. The application number and other identifying indicia should be placed on each sheet of drawings in accordance with 37 CFR 1.84(c). Each drawing sheet submitted after the filing date of the application must be identified as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
It is requested that the submission of additional or supplemental papers on a newly filed application be deferred until an application number has been received.
Documents which have no particular time or order of submission requirements should be filed in the Office with materials submitted in reply to the statutory or regulatory requirements. Examples are certified copies of foreign documents to support priority in patent applications, changes of power of attorney, or changes in mailing address following first action.
All letters relating to a reexamination proceeding should identify the proceeding involved by patent number and reexamination request control number.
All letters relating to a supplemental examination proceeding should identify the proceeding involved by patent number and supplemental examination request control number.
I. PRIORITY MAIL EXPRESS® (FORMERLY “EXPRESS MAIL”) SERVICE
Effective July 28, 2013, the United States Postal Service (USPS) changed the name of “Express Mail”
to Priority Mail Express®. All characteristics of the
Priority Mail Express® service are the same as those of the former “Express Mail” service (although the mailing labels differ).
The addresses that should be used for Priority Mail
Express® sent to the U.S. Patent and Trademark Office are set forth in 37 CFR 1.1 (see MPEP § 501).
The Office does not have resources for picking up any mail. Therefore mail should NOT be sent using the “Hold for Pickup” service option (whereby the mail is retained at the destination postal facility for retrieval by the addressee). Mail sent using the “Hold for pickup” service will not reach the Office.
See MPEP § 513 for the use of the Priority Mail
Express® mailing procedures of 37 CFR 1.10.
II. POST ALLOWANCE CORRESPONDENCE
All post allowance correspondence, except for petitions under 37 CFR 1.313(c), should be addressed “Mail Stop Issue Fee.” Any petition filed under 37 CFR 1.313(c) to withdraw an application from issue after payment of the issue fee should be clearly marked “Petition under 37 CFR 1.313(c)” and be either filed as a Web-based ePetition (see www.uspto.gov/patents-application-process/applying- online/epetition-resource-page), hand-carried to the Office of Petitions or submitted by facsimile to the Office of Petitions at (571) 273-0025. See MPEP § 1308, subsection I.B. All other types of petitions, if transmitted by facsimile transmission to the Office, must be directed to the central facsimile number ((571) 273-8300).
Any paper filed after receiving the Issue notification should include the indicated patent number.
Since an allowed application may be issued as a patent within about four weeks of payment of the issue fee, all post allowance correspondence should be filed prior to the date of issue fee payment to ensure the papers reach the appropriate USPTO official for consideration before the date the application issues as a patent. See MPEP § 2732 for a discussion of the patent term adjustment impact of submitting amendments or other papers after a notice of allowance has been mailed.
If the above suggestions are adopted, the processing of both new and allowed applications could proceed
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more efficiently and promptly through the U.S. Patent and Trademark Office.
III. HAND-DELIVERY OF PAPERS
No official paper which relates to a pending application may be personally delivered to a TC except papers that are directed to an application subject to a secrecy order pursuant to 35 U.S.C. 181, or are national security classified and that are directed to Licensing and Review. All official patent application related correspondence for organizations reporting to the Commissioner for Patents (e.g., TCs, the Office of Data Management, and the Office of Petitions) that is hand-carried (or delivered by other delivery services) must be delivered to the Customer Service Window, with a few exceptions.
Correspondence for Which Centralized Delivery of Hand-Carried Papers Is Not Required
The following types of patent application related correspondence may be delivered to the specific location where they are processed instead of the Customer Service Window. Before hand-carrying papers to a specific location or a particular office within the USPTO, the office should be called to obtain its current location. Applicants should check the USPTO website for the current telephone number. Any such correspondence carried to the Customer Service Window will be accepted and routed to the appropriate office, thereby incurring a delay before being processed. Correspondence which is not related to a specific patent or patent application, such as questions on policy, on employment, or other general inquiry may be hand-carried to the current designated locations depending on the substance of the correspondence.
(A) Access Requests - Requests for access to patent application files may be hand-carried to the
File Information Unit (FIU) on the 3rd floor of Randolph Square, 2800 South Randolph Street, Arlington, VA 22206. Requests for access to patent application files that are maintained in the Image File Wrapper system and that have not yet been published may be hand-carried to the Public Search
Facility on the 1st floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314.
(B) Patent Term Extensions under 35 U.S.C. 156 - Applications for patent term extension under 35 U.S.C. 156 may be hand-carried to the Office of Patent Legal Administration (OPLA) in the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call OPLA at (571) 272-7701 or (571) 272-7746 for delivery assistance.
(C) Assignments to be Recorded - Assignments may be hand-carried to the Office of Public Records
Customer Service Window Randolph Square, 3rd
floor, 2800 South Randolph Street, Arlington, VA 22206.
(D) Office of General Counsel - Correspondence for the Office of General Counsel may be hand-carried to the Office of General Counsel in Room 10C20 of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison East, the security guard should call the Office of General Counsel at (571) 272-7000 for delivery assistance.
(E) Solicitor’s Office - Correspondence for the Solicitor’s Office may be hand-carried to the Solicitor’s Office in Room 8C43-A of the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Solicitor’s Office at (571) 272-9035 for delivery assistance.
(F) Interference and Trial Related Correspondence - Correspondence relating to
interferences may be hand-carried to the 1st floor lobby of Madison East Building, 600 Dulany Street, Alexandria, VA 22314, where a drop-off box for hand-carried documents to be filed with the Patent Trial and Appeal Board (Board) is located. Customers need to pass through the magnetometer and have the materials passed through the x-ray sensor before placing them in the drop-off box. The drop-off box is for interference related correspondence only. Boxes are not permitted in the drop-off box. Box materials should be hand-carried to Madison East, Room 9B55-A using the following procedures. At the guard station in Madison East, the security guard should call the Board at (571) 272-9797 to obtain authorization to allow entry into the building for delivery to Room 9B55-A. Access to Room 9B55-A is available from 8:30 am to 4:45 pm only. Documents/boxes hand-carried to the drop-off box or to Room 9B55-A after 4:45 pm will
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receive the next day’s filing date. Customers desiring a stamped return receipt for their filing need to personally bring their filing and postcard to Room 9B55-A during the hours stated above, or leave the postcard with the filing (postcard must include correct postage mail stamp and the address where the postcard is to be mailed). The Board will stamp the filing date and mail the postcard to the customer. Correspondence related to contested cases may only be hand-carried as authorized by the Board.
(G) Secrecy Order - Applications subject to a secrecy order pursuant to 35 U.S.C. 181, or that are national security classified, and correspondence related thereto, may be hand-carried to Licensing and Review in Room 4B31 of the Knox Building, 501 Dulany Street, Alexandria, VA 22314. At the guard station in Knox, the security guard should call Licensing and Review at (571) 272-8203 for delivery assistance.
(H) Expedited Foreign Filing License Petitions - Petitions for foreign filing license pursuant to 37 CFR 5.12(b) for which expedited handling is requested and petitions for retroactive license under 37 CFR 5.25 may be hand-carried to a drop-off box located at the guard station at the lobby of the Knox Building, 501 Dulany Street, Alexandria, VA 22314. Upon approaching the guard station, the delivery personnel should state their desire to drop off the request. Correspondence packages will be inspected/scanned before being placed in the drop-off box. All requests should identify a fax number, telephone number and mailing address. All responses to the request will be sent by fax, followed by a mailed copy. If a fax number is not available, a hardcopy will be mailed to the mailing address provided.
(I) Petitions to Withdraw from Issue - Petitions to withdraw from issue may be hand-carried to the
Office of Petitions on the 7th floor of the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Office of Petitions at (571) 272-3282 for delivery assistance. Hand-carried papers will be accepted between the hours of 8:30 am to 3:45 pm.
(J) Documents Requested by the Office of Data Management - Documents requested by the Office of Data Management may be hand-carried to the
Office of Data Management, Randolph Square, 9th
floor, 2800 South Randolph Street, Arlington, VA 22206, during business hours.
(K) Office of Enrollment and Discipline (OED) – Correspondence for the Office of Enrollment and Discipline may be hand-carried to the receptionist at Room 8C43-B of the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Office of Enrollment and Discipline at 571-272-4097 for delivery assistance.
(L) Office of Finance – Refund requests, deposit account replenishments, and maintenance fee payments may be hand-carried to the Office of Finance receptionist in Suite 300 of the Carlyle Place Building, 2051 Jamieson Ave., Alexandria, VA 22314. Hand-carried correspondence will only be accepted, and not processed. Although the receptionist will not process any correspondence, if the correspondence is delivered with an itemized postcard, the receptionist will provide a delivery receipt by date stamping the postcard. Depending on whether the correspondence is a refund request, deposit account related (e.g., a deposit account replenishment), or maintenance fee related (e.g., a maintenance fee payment), the correspondence should be placed in an envelope with REFUND, DEPOSIT ACCOUNT, or MAINTENANCE FEE written in dark ink across the envelope.
(M) Office of Public Records – Requests for certified copies of Office records including patent and trademark copies, applications-as-filed, file wrappers and contents, and assignment records may be hand-carried to the Office of Public Records’
Customer Service Window on the 3rd floor of Randolph Square, 2800 South Randolph Street, Arlington, VA 22206, during business hours.
502.01 Correspondence Transmitted by Facsimile [R-07.2015]
37 CFR 1.6 Receipt of correspondence. *****
(d) Facsimile transmission. Except in the cases enumerated below, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the United States Patent and Trademark Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See paragraph (a)(3) of this section. To facilitate proper processing, each transmission session should be limited to correspondence
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to be filed in a single application or other proceeding before the United States Patent and Trademark Office. The application number of a patent application, the control number of a reexamination or supplemental examination proceeding, the interference number of an interference proceeding, the trial number of a trial proceeding before the Board, or the patent number of a patent should be entered as a part of the sender's identification on a facsimile cover sheet. Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:
(1) Correspondence as specified in § 1.4(e), requiring an original signature;
(2) Certified documents as specified in § 1.4(f);
(3) Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D), (F), (I) and (K), § 1.8(a)(2)(iii)(A), except that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;
(4) Color drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026;
(5) A request for reexamination under § 1.510 or § 1.913 or a request for supplemental examination under § 1.610;
(6) Correspondence to be filed in an application subject to a secrecy order under §§ 5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application;
(7) In contested cases and trials before the Patent Trial and Appeal Board, except as the Board may expressly authorize.
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The date of receipt accorded to any correspondence permitted to be sent by facsimile transmission, including a continued prosecution application (CPA) filed under 37 CFR 1.53(d), (for design applications only) is the date the complete transmission is received by an Office facsimile unit, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia. Correspondence for which transmission was completed on a Saturday, Sunday, or Federal holiday within the District of Columbia, will be accorded a receipt date of the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia. For example, a facsimile transmission to the Office from California starting on a Friday at 8:45 p.m. Pacific time and taking 20 minutes, would be completed at 9:05 p.m. Pacific time. The complete transmission would be received in the Office around 12:05 a.m. Eastern time on Saturday. The receipt date accorded to the correspondence is the date of the following business day, which in this case, would be Monday (assuming that Monday was not a Federal holiday within the
District of Columbia). Note, however, that if the Certificate of Transmission is available (for documents not proscribed by 37 CFR 1.8(a)(2)), then the above facsimile may be considered timely filed on Friday if it contains a Certificate of Transmission and is in compliance with 37 CFR 1.8(a)(1)(i)(B) and (ii).
37 CFR 1.6(d) specifies the types of correspondence which may be transmitted by facsimile. These would include CPAs filed under 37 CFR 1.53(d) (available for design applications only), amendments, declarations, petitions, information disclosure statements (IDS), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examination (RCEs) under 37 CFR 1.114, assignment documents, issue fee transmittals and authorizations to charge deposit accounts. The situations where transmissions by facsimile are prohibited are identified in 37 CFR 1.6(d)(1)-(7). Prohibitions cover situations where originals are required as specified in 37 CFR 1.4(e) and (f), and situations where accepting a facsimile transmission would be unduly burdensome on the Office. As a courtesy, the Office will attempt to notify senders whenever correspondence is sent to the Office by facsimile transmission that falls within one of these prohibitions. Senders are cautioned against submitting correspondence by facsimile transmission which is not permitted under 37 CFR 1.6(d) since such correspondence will not be accorded a receipt date.
An applicant filing a CPA (for a design application only) by facsimile transmission must include an authorization to charge the basic filing fee to a deposit account or to a credit card, or the application will be treated under 37 CFR 1.53(f) as having been filed without the basic filing fee (as fees cannot otherwise be transmitted by facsimile).
There is a special receipt procedure for filing a CPA by fax, whereby the Office will fax back a receipt of the CPA filing if applicant submits the Office receipt form along with the CPA filing.
37 CFR 1.6 Receipt of correspondence. *****
(f) Facsimile transmission of a patent application under § 1.53(d). In the event that the Office has no evidence of receipt of an application under § 1.53(d) (a continued prosecution
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application) transmitted to the Office by facsimile transmission, the party who transmitted the application under § 1.53(d) may petition the Director to accord the application under § 1.53(d) a filing date as of the date the application under § 1.53(d) is shown to have been transmitted to and received in the Office,
(1) Provided that the party who transmitted such application under § 1.53(d):
(i) Informs the Office of the previous transmission of the application under § 1.53(d) promptly after becoming aware that the Office has no evidence of receipt of the application under § 1.53(d);
(ii) Supplies an additional copy of the previously transmitted application under § 1.53(d); and
(iii) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previous transmission of the application under § 1.53(d) and is accompanied by a copy of the sending unit’s report confirming transmission of the application under § 1.53(d) or evidence that came into being after the complete transmission and within one business day of the complete transmission of the application under § 1.53(d).
(2) The Office may require additional evidence to determine if the application under § 1.53(d) was transmitted to and received in the Office on the date in question.
37 CFR 1.6(f) provides for the situation in which the Office has no evidence of receipt of a CPA transmitted to the Office by facsimile transmission. 37 CFR 1.6(f) requires a petition be filed requesting that the CPA be accorded a filing date as of the date the CPA is shown to have been transmitted to and received in the Office. The showing must include,
inter alia, a copy of the sending unit’s report confirming transmission of the application or evidence that came into being after the complete transmission of the application and within one business day of the complete transmission of the application.
I. CENTRALIZED FACSIMILE NUMBER FOR OFFICIAL PATENT APPLICATION RELATED CORRESPONDENCE
A. Central Number
All patent application related correspondence transmitted by facsimile must be directed to the central facsimile number, with a few exceptions below. The central facsimile number is (571) 273-8300. Replies to Office actions including after-final amendments that are transmitted by
facsimile must be directed to the central facsimile number. Correspondence such as draft proposed amendments for interviews may continue to be transmitted by facsimile to the Technology Centers (TCs) and should be made of record as part of the interview summary record. See MPEP § 713.04. Office personnel should not use their personal facsimile numbers for official application related correspondence. Office personnel that inadvertently receive official application related correspondence on a personal facsimile number must either route (do not forward) the correspondence to the official central facsimile number or they may, with applicant’s (or applicant’s representative) permission, make the facsimile amendment part of an examiner’s amendment.
B. Correspondence Which May Be Sent by Facsimile to Other Than the Central Facsimile Number
For each Office location listed below, only the particular type of correspondence indicated may be transmitted to the specific facsimile number at that Office location. All other types of facsimile transmitted correspondence must be sent to the central facsimile number ((571) 273-8300).
(1) PCT Operations and International Patent Legal Administration. Correspondence subsequent to filing in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority:
-- Papers in international applications may be submitted by facsimile to (571) 273-3201.
-- Responses to Decisions on Petition may be submitted by facsimile to (571) 273-0459.
Note: An international application for patent or a copy of the international application and the basic national fee necessary to enter national stage, as specified in 37 CFR 1.495(b), may not be submitted by facsimile. See 37 CFR 1.6(d)(3) (referencing 37 CFR 1.8(a)(2)(i)(D) and (F)). Subsequent correspondence may be transmitted by facsimile in an application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority, but it will not receive the benefit of any certificate of transmission (or mailing). See 37 CFR 1.8(a)(2)(i)(E). Correspondence filed during the national stage, subsequent to entry, is handled in the same manner as a U.S. to national application.
-- PCT Help Desk contact information:
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Telephone number: (571) 272-4300.
Facsimile number: (571) 273-0419.
(2) Office of Data Management. Payment of an issue fee and any required publication fee by authorization to charge a deposit account or credit card, and drawings may be submitted to facsimile number (571) 273-2885.
Note: Although submission of drawings by facsimile may reduce the quality of the drawings, the Office will generally print the drawings as received.
Office of Data Management telephone numbers to check on receipt of payment: (571) 272-4200 or 1-888-786-0101.
(3) Electronic Business Center (EBC). Requests for Customer Number Data Change (PTO/SB/124), and Requests for a Customer Number (PTO/SB/125) may be submitted via facsimile to (571) 273-0177.
Note: The EBC may also be reached by email at: ebc@uspto.gov. EBC telephone number for customer service and assistance: 866-217-9197.
(4) Assignment Branch. Assignments or other documents affecting title may be submitted via facsimile to (571) 273-0140.
Note: Only documents with an identified patent application or patent number, a single cover sheet to record a single type of transaction, and the fee paid by an authorization to charge a USPTO deposit account or credit card may be submitted via facsimile. Customers may submit documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their facsimile machine. (Assignment documents submitted through the Electronic PatentAssignment System also permit the recordation notice to be faxed to customers.) Credit card payments to record assignment documents are acceptable, and use of the Credit Card form (PTO-2038) is required for the credit card information to be separated from the assignment records.
Assignment Branch telephone number for assistance: (571) 272-3350.
(5) Central Reexamination Unit (CRU). Ex parte and Inter partes reexamination correspondence, except for the initial request: (571) 273-9900 facsimile number.
Note: Correspondence related to reexamination proceedings will be separately scanned in the CRU.
CRU telephone number for customer service and inquiries: (571) 272-7705.
(6) Patent Trial and Appeal Board. Correspondence related to contested cases and trials permitted to be transmitted by facsimile (only where expressly authorized, see 37 CFR 1.6(d)(7)): (571) 273-0042 facsimile number.
(7) Office of the General Counsel. Correspondence permitted to be transmitted by facsimile to the Office of the General Counsel: (571) 273-0099 facsimile number.
(8) Office of the Solicitor. Correspondence permitted to be transmitted by facsimile to the Office of the Solicitor: (571) 273-0373 facsimile number.
(9) Licensing and Review. Petitions for a foreign filing license pursuant to 37 CFR 5.12(b), including a petition for a foreign filing license where there is no corresponding U.S. application (37 CFR 5.13): (571) 273-0185 facsimile number.
Note: Correspondence to be filed in a patent application subject to a secrecy order under 37 CFR 5.1 to 5.5 and directly related to the secrecy order content of the application may not be transmitted via facsimile. See 37 CFR 1.6(d)(6).
(10) Office of Petitions. Petitions to withdraw from issue: (571) 273-0025 facsimile number
Note: All other types of petitions must be directed to the central facsimile number (571) 273-8300. Petitions sent to the central facsimile number should be marked "Special Processing Submission."
(11) Office of the Enrollment and Discipline Correspondence permitted to be transmitted to the Office of the Enrollment and Discipline: (571) 273-0074 facsimile number.
(12) Office of Finance. Refund requests, deposit account inquiries, and maintenance fee payments: (571) 273-6500 facsimile number. Office of Finance telephone number for customer service and inquiries: (571) 272-6500.
(13) Office of Public Records. Requests for certified copies of Office records may be transmitted to: (571) 273-3250 facsimile number. The Office of Public Records’ Patent and Trademark Copy Fulfillment Branch telephone number for customer service and inquiries: (571) 272-3150.
II. CORRESPONDENCE RELATIVE TO PATENTS AND PATENT APPLICATIONS WHERE FILING
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BY FACSIMILE TRANSMISSION IS NOT PERMITTED
As set forth in 37 CFR 1.6(d), facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:
(A) A document that is required by statute to be certified (see 37 CFR 1.4(f));
(B) A national patent application specification and drawing (provisional or nonprovisional) or other correspondence for the purpose of obtaining an application filing date, other than a continued prosecution application filed under 37 CFR 1.53(d);
(C) An international application for patent;
(D) An international design application;
(E) A copy of the international application and the basic national fee necessary to enter the national stage, as specified in 37 CFR 1.495(b);
(F) A third-party submission under 37 CFR 1.290;
(G) Correspondence relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings;
(H) Color drawings submitted under 37 CFR 1.81, 1.83-1.85, 1.152, 1.165, 1.173, 1.437 , or 1.1026;
(I) A request for reexamination under 37 CFR 1.510 or 37 CFR 1.913;
(J) A request for supplemental examination under 37 CFR 1.610;
(K) Correspondence to be filed in a patent application subject to a secrecy order under 37 CFR 5.1 - 5.5 and directly related to the secrecy order content of the application; and
(L) Correspondence to be filed in a contested case or trial before the Patent Trial and Appeal Board, except as the Board may expressly authorize.
Applicants are reminded that the facsimile process may reduce the quality of the drawings, and the Office will generally print the drawings as received.
See MPEP § 1834.01 for a discussion concerning facsimile transmissions in PCT applications.
502.02 Correspondence Signature Requirements [R-07.2015]
37 CFR 1.4 Nature of correspondence and signature requirements.
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(d)(1) Handwritten signature. Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (d)(4), (e) and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person’s signature, must:
(i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equivalent, by that person; or
(ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original.
(2) S-signature. An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by paragraph (d)(1) of this section. An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature as provided for in paragraph (d)(1) of this section. Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d), or via the Office electronic filing system as an attachment as provided in § 1.6(a)(4), for a patent application, patent, or a reexamination or supplemental examination proceeding may be S-signature signed instead of being personally signed ( i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) of this section are as follows.
(i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature ( e.g., /Dr. James T. Jones, Jr./); and
(ii) A patent practitioner (§ 1.32(a)(1)), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
(iii) The signer’s name must be:
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(A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
(B) Reasonably specific enough so that the identity of the signer can be readily recognized.
(3) Electronically submitted correspondence. Correspondence permitted via the Office electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the Office electronic filing system.
(4) Certifications—
(i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
(ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
(5) Forms. The Office provides forms to the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms (e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.
(e) The following correspondence must be submitted with an original handwritten signature personally signed in permanent dark ink or its equivalent:
(1) Correspondence requiring a person's signature and relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and
(2) Payments by credit cards where the payment is not being made via the Office's electronic filing systems.
(f) When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.
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(h) Ratification/confirmation/evidence of authenticity: The Office may require ratification, confirmation (which includes submission of a duplicate document but with a proper signature), or evidence of authenticity of a signature, such as when the Office has reasonable doubt as to the authenticity (veracity) of the signature, e.g., where there are variations of a signature, or where the signature and the typed or printed name, do not clearly identify the person signing.
Correspondence filed in the Office, which requires a person’s signature, may be filed with one of two types of signatures: (A) handwritten signature; and (B) “S-signature.” See 37 CFR 1.4(d).
I. HANDWRITTEN SIGNATURE
A person’s handwritten signature may be an original or a copy thereof, except where an original handwritten signature is required pursuant to 37 CFR 1.4(e). The word original, as used herein, is defined as correspondence which is personally signed in permanent dark ink or its equivalent by the person whose signature appears thereon. Dark ink or equivalent permits traditional ink and newer non-liquid gel type ink technologies. Since incoming correspondence is electronically stored and scanned as a black and white image, a dark color is required so that the scanned image is legible. Where copies of correspondence are acceptable, photocopies or facsimile transmissions may be filed. For example, a photocopy or facsimile transmission of an original of an amendment, declaration (e.g., under 37 CFR 1.63 or 1.67), petition, issue fee transmittal form, and authorization to charge a deposit account or a credit card may be submitted in a patent application. Where copies are permitted, second and further generation copies (i.e., copy of a copy) are acceptable. For example, a client may fax a paper to an attorney and the attorney may then fax the paper to the Office, provided the paper is eligible to be faxed (see MPEP § 502.01). The original, if not
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submitted to the Office, should be retained as evidence of proper execution in the event that questions arise as to the authenticity of the signature reproduced on the photocopy or facsimile-transmitted correspondence. If a question of authenticity arises, the Office may require submission of the original.
37 CFR 1.4(d)(1) covers all handwritten signatures, except for the handwritten signatures on the types of correspondence covered by 37 CFR 1.4(e). The requirement in 37 CFR 1.4(d)(1) of permanent dark ink or its equivalent relates to whether a handwritten signature is compliant and is not limiting on the type of handwritten signature that is covered by 37 CFR 1.4(d)(1). Thus, 37 CFR 1.4(d)(1) would cover handwritten signatures in red ink or in pencil; although, under 37 CFR 1.4(d)(1) neither would be acceptable since red ink is not dark, and pencil is not permanent. A scanned image of a document that contains a handwritten signature filed via the Office’s electronic filing system is permitted as a copy under 37 CFR 1.4(d)(1)(ii). A signature applied by an electric or mechanical typewriter directly to paper is not a handwritten signature, which is applied by hand. Accordingly, if a typewriter applied signature is used, it must meet the requirements of 37 CFR 1.4(d)(2). Adding forward slashes to a handwritten (or hand-printed) ink signature that is personally applied will not cause the signature to be treated under 37 CFR 1.4(d)(2). Such a signature will be treated under 37 CFR 1.4(d)(1) or (e) with the slashes ignored. The end product from a manually applied hand stamp or from a signature replication or transfer means (such as by pen or by screen) appears to be a handwritten signature, but is not actually handwritten, and would be treated under 37 CFR 1.4(d)(2). An electronic reproduction of a handwritten signature, e.g., scanned, that is electronically applied to a document is not a personally signed original document under 37 CFR 1.4(d)(1)(i) and reproductions of such correspondence cannot be copies under 37 CFR 1.4(d)(1)(ii). A graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1) will be accepted when submitted via the Office electronic filing system, pursuant to 37 CFR 1.4(d)(3).
II. S-SIGNATURE
The second type of signature is an S-signature. See 37 CFR 1.4(d)(2). An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by 37 CFR 1.4(d)(1) or (e). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature not covered by either a handwritten signature of 37 CFR 1.4(d)(1) or (e). The S-signature can be used with correspondence e.g., oaths and affidavits filed in the Office in paper, by facsimile transmission as provided in 37 CFR 1.6(d), or via the Office electronic filing system as an attachment as provided in 37 CFR 1.6(a)(4), for a patent application, a patent, or a reexamination or supplemental examination proceeding. 37 CFR 1.4(d) does not authorize filing correspondence by email. The S-signature cannot be used for correspondence that requires a person’s signature and relates to (1) registration to practice before the USPTO, (2) payments by credit card where a paper including the signature is submitted to the USPTO by means other than the Office’s electronic filing systems, and (3) filing a document that is required by statute to be certified. See 37 CFR 1.4(e). A legible electronic image of a handwritten signature inserted, or copied and pasted by the person signing the correspondence into the correspondence may be considered to be an acceptable signature under 1.4(d)(2) provided the signature is surrounded by a first single forward slash mark before the electronic image and a second single forward slash mark after the electronic image and includes the signers name below or adjacent to the signature as required.
An S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and punctuation (i.e., commas, periods, apostrophes, or hyphens). “Letters” include English and non- English alphabet letters, and text characters (e.g., Kanji). Non-text, graphic characters (e.g., a smiley face created in the True Type Wing Dings font) are not permitted. “Arabic numerals” are the numerals 0, 1, 2, 3, 4, 5, 6, 7, 8, and 9, which are the standard numerals used in the United States. To accommodate as many varieties of names as possible, a signer may select any combination of letters, Arabic numerals, or both, for his or her S-signature under 37 CFR
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1.4(d)(2)(i). The person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./). Additional forward slashes are not permitted as part of the S-signature. The presentation of just letters and Arabic numerals as an S-signature without the S-signature being placed between two forward slashes will be treated as an unsigned document.
Commas, periods, apostrophes, and hyphens are often found in names and will therefore be found in many S-signatures. These punctuation marks and appropriate spaces may be used with letters and Arabic numerals in an S-signature. A sample S-signature including punctuation marks and spaces, between two forward slashes, is: /John P. Doe/. Punctuation marks, per se, are not punctuation and are not permitted without proper association with letters and Arabic numerals. An S-signature of only punctuation marks would be improper (e.g., /- - -/). In addition, punctuation marks, such as question marks (e.g., /???/), are often utilized to represent an intent not to sign a document and may be interpreted to be a non- bona fide attempt at a signature, in addition to being improper.
Script fonts are not permitted for any portion of a document except the S-signature. See 37 CFR 1.52(b)(2)(ii). Presentation of a typed name in a script font without the typed name being placed between the required slashes does not present the proper indicia manifesting an intent to sign and will be treated as an unsigned document.
37 CFR 1.4(d)(2)(i) also defines who can insert an S-signature into a document. 37 CFR 1.4(d)(2)(i) requires that a person, which includes a practitioner, must insert his or her own signature using letters and/or Arabic numerals, with appropriate commas, periods, apostrophes, or hyphens as punctuation and spaces. The “must insert his or her own signature” requirement is met by the signer directly typing his or her own signature using a keyboard. The requirement does not permit one person (e.g., a secretary) to type in the signature of a second person (e.g., a practitioner) even if the second person directs the first person to do so. A person physically unable to use a keyboard, however, may, while
simultaneously reviewing the document for signature, direct another person to press the appropriate keys to form the S-signature.
For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided. The signer should review any indicia of identity of the signer in the body of the document, including any printed or typed name and registration number, to ensure that the indicia of identity in the body of the document is consistent with how the document is S-signed. Knowingly adopting an S-signature of another is not permitted.
While an S-signature need not be the name of the signer of the document, the Office strongly suggests that each signer use an S-signature that has his or her full name. The Office expects that where persons do not sign with their name it will be because they are using an S-signature that is the usual S-signature for that person, which is his or her own signature, and not something that is employed to obfuscate or misidentify the signer. Titles may be used with the signer’s S-signature and must be placed between the slash marks (e.g., /Dr. John Doe/), or with the printed or typed version of the name.
37 CFR 1.4(d)(2)(ii) requires that a practitioner (37 CFR 1.32(a)(1)) signing pursuant to 37 CFR 1.33(b)(1) or (b)(2) must place his or her registration number, either as part of, or adjacent, his or her S-signature. A number character (#) may only be used in an S-signature if it is prior to a practitioner’s registration number that is part of the S-signature. For an application filed on or after September 16, 2012, when a practitioner is signing as an applicant as defined in 37 CFR 1.42 (e.g., as an inventor), a registration number is not required and should not be supplied to avoid confusion as to which basis the practitioner is signing, e.g., as a practitioner or as the applicant. A patent practitioner signing on behalf of a juristic entity applicant (see 37 CFR 1.33(b)(3)) is signing as a patent practitioner and thus must provide his or her registration number. For applications filed before September 16, 2012, when a practitioner is signing as an applicant as defined in pre-AIA 37 CFR 1.41 or as an assignee a registration number is not required and should not be supplied for the reasons noted above.
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The signer’s name must be (A) presented in printed or typed form preferably immediately below or adjacent the S-signature, and (B) reasonably specific enough so that the identity of the signer can be readily recognized. See 37 CFR 1.4(d)(2)(iii)(A). The printed or typed name requirement is intended to describe any manner of applying the signer’s name to the document, including by a typewriter or machine printer. It could include a printer (mechanical, electrical, optical, etc.) associated with a computer or a facsimile machine but would not include manual or hand printing. See 37 CFR 1.52(a)(1)(iv). The printed or typed name may be inserted before or after the S-signature is applied, and it does not have to be inserted by the S-signer. A printed or typed name appearing in the letterhead or body of a document is not acceptable as the presentation of the name of the S-signer. A graphic representation of an S-signature as provided for in 37 CFR 1.4(d)(2) with be accepted when submitted via the Office electronic filing system, pursuant to 37 CFR 1.4(d)(3).
III. CERTIFICATIONS
37 CFR 1.4(d)(4)(i) establishes that the presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non- practitioner, constitutes a certification under 37 CFR 11.18(b) of this chapter.
37 CFR 1.4(d)(4)(ii) establishes certifications as to the signature of another for a person submitting a document signed by another under 37 CFR 1.4(d)(2) or 37 CFR 1.4(d)(3) . Thus, the submitting person is obligated to have a reasonable basis to believe that the person whose signature is present on the document actually inserted the signature on the document. Such reasonable basis does not require an actual knowledge but does require some reason to believe the signature is appropriate. For example, where a practitioner emails a 37 CFR 1.63 declaration to an inventor for signature by the inventor and receives an executed declaration by the inventor in return from the inventor, reasonable basis would exist. Evidence of authenticity should be retained. This may involve retaining the emails sent to the inventor and any cover letter or email (with the signed document as an attachment) back to the
practitioner from the inventor in the example relating to execution of a 37 CFR 1.63 declaration.
37 CFR 1.4(d)(4)(ii) further establishes that a person inserting a signature under 37 CFR 1.4(d)(2) or 37 CFR 1.4(d)(3) in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. This is meant to prohibit a first person from requesting a second person to insert the first person’s signature in a document. While the certification is directed at the person inserting another S- signature, the person requesting the inappropriate insertion may also be subject to sanctions.
37 CFR 1.4(d)(4)(ii) additionally establishes that violations of the certifications as to the signature of another or a person’s own signature, set forth in 37 CFR 1.4(d)(4)(ii) , may result in the imposition of sanctions under 37 CFR 11.18(c) and (d).
IV. RATIFICATION, CONFIRMATION, OR EVIDENCE OF AUTHENTICITY
Pursuant to 37 CFR 1.4(h), the Office may additionally inquire in regard to a signature so as to identify the signer and clarify the record where the identity of the signer is unclear. An example of when ratification or confirmation of a signature may be required is when there are variations in a signature or whenever a name in an S-signature is not exactly the same as the name indicated as an inventor, or a practitioner of record. Hence, whatever signature is adopted by a signer, that signature should be consistently used on all documents. Also addressed is the treatment of variations in a signature or where a printed or typed name accompanies the S-signature but the identity of the signer is unclear. In such cases, the Office may require ratification or confirmation of a signature. Ratification requires the person ratifying to state he/she personally signed the previously submitted document as well as, if needed, the submission of a compliant format of the signature. Confirmation includes submitting a duplicate document, which is compliantly signed if the previous signature was noncompliant (as opposed to unclear).
In lieu of ratification, the Office may require a resubmission of a properly signed duplicate
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document. Resubmission of a document may be required, for example, where ratification alone is inappropriate, such as where the image of the signature is of such poor quality (e.g., illegible font) that the Office is unable to store or reproduce the document with the signature image.
Ratification or confirmation alone does not provide a means for changing the name of a signer. For example, when an inventor changes her/his name and the inventor desires to change her/his name in the nonprovisional application, such change must be by way of a request under 37 CFR 1.48(f). See MPEP §§ 602.01(c)(2) and 602.08(b).
In addition, the Office may require evidence of authenticity where the Office has reasonable doubt as to the authenticity (veracity) of the signature. Evidence of authenticity may include evidence establishing a chain of custody of a document from the person signing the document to the person filing the document. Proper evidence of a chain of custody will aid in avoiding the impact of repudiation of a signature.
Where there has been a bona fide attempt to follow the rule, but where there is some doubt as to the identity of the signer of a signed document, the Office may require ratification of the signature. Note, ratification would only be an effective remedy if the signer was a proper party to have executed the document to be ratified. For example, a practitioner of record may ratify his or her signature on an amendment, but not the signature of a secretary who is not a practitioner or inventor in the application. A registered practitioner may, however, ratify the amendment made by another registered practitioner but may not ratify a document required to be signed by an inventor, such as a 37 CFR 1.63 declaration. Similarly, an inadvertent typographical error or simple misspelling of a name will be treated as a bona fide attempt to follow the rule, which would
require ratification only where there is some doubt as to the identity of the signer rather than be treated as an unsigned paper requiring resubmission. Where there is an obvious typographical error so that the Office does not have some doubt as to the identity of the signer (and therefore notification to applicant is not needed), further action by applicant would not
be required and, where appropriate, the obvious error will be noted in the record.
The inadvertent failure to follow the format and content of an S-signature will be treated as a bona fide attempt at a signature but the paper will be considered as being unsigned correspondence. Examples of correspondence that will be treated as unsigned are (A) the S-signature is not enclosed in forward slashes, (B) the S-signature is composed of non-text graphic characters (e.g., a smiley face) and not letters and numerals, and (C) the S-signature is not a name and there is no other accompanying name adjacent or below the S-signature so that the identity of the signer cannot be readily recognized.
If the signer, after being required to ratify or resubmit a document with a compliant signature, repeats the same S-signature in reply without appropriate correction, the reply will not be considered to be a bona fide attempt to reply, and no additional time period will be given to submit a properly signed document.
V. CERTIFICATION OF DOCUMENTS PROVIDED FOR BY STATUTE
When a statute requires or permits the Director to require a document to be certified (such as the requirement in 37 CFR 1.55 for a certified copy of a foreign patent application pursuant to 35 U.S.C. 119 or a certified copy of an international application pursuant to 35 U.S.C. 365) a copy of the certification, including a photocopy or facsimile transmission, will not be acceptable. Note that for applications filed under 35 U.S.C. 111(a), foreign priority documents retrieved by the Office from a foreign intellectual property office that participates with the Office in a priority document exchange (PDX) agreement can serve as the certified copy provided the requirements of 37 CFR 1.55(h) are met. The requirement for an original certification does not apply to certifications such as required
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under 37 CFR 1.8 since these certifications are not provided for by statute.
502.03 Communications via Internet Electronic Mail (email) [R-07.2015]
The Office published a Patent Internet Usage Policy to :
(A) establish a policy for use of the Internet by the Patent Examining Corps and other organizations within the USPTO,
(B) address use of the Internet to conduct interview-like communications and other forms of formal and informal communications,
(C) publish guidelines for locating, retrieving, citing, and properly documenting scientific and technical information sources on the Internet,
(D) inform the public how the USPTO intends to use the Internet, and
(E) establish a flexible Internet policy framework which can be modified, enhanced, and corrected as the USPTO, the public, and customers learn to use, and subsequently integrate, new and emerging Internet technology into existing business infrastructures and everyday activities to improve the patent application, examining, and granting functions.
See Internet Usage Policy, 64 FR 33056 (June 21, 1999). The Articles of the Patent Internet Usage Policy pertinent to communications via electronic mail are summarized below. See MPEP § 904.02(c) for information pertinent to Internet searching, and MPEP § 707.05(e) for information pertaining to the citation of electronic documents. See also MPEP § 713.04 for recordation of email interviews.
I. CONFIDENTIALITY OF PROPRIETARY INFORMATION (ARTICLE 4)
If security and confidentiality cannot be attained for a specific use, transaction, or activity, then that specific use, transaction, or activity shall NOT be undertaken/conducted.
All use of the Internet by Patent Organization employees, contractors, and consultants shall be conducted in a manner that ensures compliance with
confidentiality requirements in statutes, including 35 U.S.C. 122, and regulations. Where a written authorization is given by the applicant for the USPTO to communicate with the applicant via Internet email, communications via Internet email may be used.
Backup, archiving, and recovery of information sent or received via the Internet is the responsibility of individual users. The OCIO does not, and will not, as a normal practice, provide backup and recovery services for information produced, retrieved, stored, or transmitted to/from the Internet.
II. COMMUNICATIONSVIA THE INTERNETAND AUTHORIZATION (ARTICLE 5)
Communications via Internet email are at the discretion of the applicant. All Internet communications between USPTO employees and applicants must be made using USPTO tools.
Without a written authorization by applicant in place, the USPTO will not respond via Internet email to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence and response will be placed in the appropriate patent application. Except for correspondence that only sets up an interview time, all correspondence between the Office and the applicant including applicant's representative must be placed in the appropriate patent application. If an email contains any information beyond scheduling an interview such as an interview agenda or authorization, it must be placed in the application.
For those applications where applicant wishes to communicate with the examiner via Internet communications, e.g., email or video conferencing tools, the following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these
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communications will be made of record in the application file.”
A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization. The following is a sample form which may be used by applicant to withdraw the authorization:
“The authorization given on______, to the USPTO to communicate with any practitioner of record or acting in a representative capacity in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application via video conferencing, instant messaging, or electronic mail is hereby withdrawn”
Where a written authorization is given by the applicant, communications via Internet email, other than those under 35 U.S.C. 132 or which otherwise require a signature, may be used. In such case, a printed copy of the Internet email communications MUST be given a paper number, entered into the Patent Application Locating and Monitoring System (PALM) and entered in the patent application file (Doc Code is EMAIL). A reply to an Office action may NOT be communicated by applicant to the USPTO via Internet email. If such a reply is submitted by applicant via Internet email, a copy will be placed in the appropriate patent application file with an indication that the reply is NOT ENTERED.
USPTO employees are NOT permitted to initiate communications with applicants via Internet email unless there is a written authorization of record in the patent application by the applicant.
If applicant has authorized Internet communications, USPTO employees may respond to Internet email and initiate communications with applicants via Internet email.
All reissue applications are open to public inspection under 37 CFR 1.11(a) and all papers relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to public inspection under 37 CFR 1.11(d). USPTO employees are NOT permitted to initiate communications with applicant in a reissue
application or a patentee of a reexamination proceeding via Internet email unless written authorization is given by the applicant or patentee.
III. AUTHENTICATION OF SENDER BY A PATENT ORGANIZATION RECIPIENT (ARTICLE 6)
The misrepresentation of a sender’s identity (i.e., spoofing) is a known risk when using electronic communications. Therefore, Patent Organization users have an obligation to be aware of this risk and conduct their Internet activities in compliance with established procedures.
Internet email must be initiated by a registered practitioner, or an applicant in a pro se application, and sufficient information must be provided to show representative capacity in compliance with 37 CFR 1.34. Examples of such information include the attorney registration number, attorney docket number, and patent application number.
Similar to the policy set forth in MPEP 100 for handling telephone calls, when responding to an email, no information should be disclosed until the identity of the requester can be adequately verified. Examiners should verify the identity of the person by checking PALM or the application file, such as checking the email address previously provided in PALM or the application.
IV. USE OF ELECTRONIC MAIL SERVICES (ARTICLE 7)
Once email correspondence has been received from the applicant, as set forth in Patent Internet Usage Policy Article 4, such correspondence must be responded to appropriately. The Patent Examiner may respond to an applicant’s email correspondence by telephone, fax, or other appropriate means.
V. INTERVIEWS (ARTICLE 8)
Internet email and instant messaging shall NOT be used to conduct an exchange of communications similar to those exchanged during telephone or personal interviews unless a written authorization has been given under Patent Internet Usage Policy Article 5 to use Internet email. In such cases, a paper
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copy of the Internet email or instant messaging contents MUST be made and placed in the patent application file, as required by the Federal Records Act, in the same manner as an Examiner Interview Summary Form is entered.
USPTO video conferencing tools, such as WebEx , may be used to conduct examiner interviews in both published and unpublished applications under the Patent Internet Usage Policy. Authorization by the practitioner is required and must be obtained prior to sending a meeting invite using Outlook/WebEx. Authorization is required to confirm that the practitioner is able to conduct a WebEx interview and to confirm the email address to which the invitation must be sent. The practitioner’s participation in the interview is considered consent to the use of the video conferencing tool for the interview.
All Internet communications between USPTO employees and applicants must be made using USPTO tools. Video conferencing communications must be hosted by USPTO personnel. No personal phones, email, PDAs, etc. may be used by USPTO employees for Official communications.
VI. POLICY GUIDANCE AND CLARIFICATIONS (ARTICLE 13)
Within the Patent Organization, any questions regarding Internet usage policy should be directed to the user’s immediate supervisor. Non-USPTO personnel should direct their questions to the Office of the Deputy Commissioner for Patent Examination Policy.
502.04 Duplicate Copies of Correspondence [R-08.2012]
37 CFR 1.4 Nature of correspondence and signature requirements.
*****
(b) Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical. The filing of duplicate copies of correspondence in the file of an application, patent, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies. The Office may
dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.
*****
When the Office does not require duplicate copies of a paper, the filing of multiple copies may cause a delay in processing by the Office. Accordingly, the Office may discard duplicate copies of correspondence filed in an application or patent file.
502.05 Correspondence Transmitted by EFS-Web [R-07.2015]
I. LEGAL FRAMEWORK FOR EFS-WEB
The April 2011 version of the Legal Framework for EFS-Web is posted on the USPTO website at www.uspto.gov/patents-application-process/applying- online/legal-framework-efs-web-06april11. The information in this MPEP section is an update to the April 2011 version of the Legal Framework, which was based on the following Federal Register notices with minor editorial changes: Legal Framework for Electronic Filing System - Web (EFS-Web), 74 FR 55200 (October 27, 2009); Revised Procedure for Public Key Infrastructure Certificates, 74 FR 66955 (December 17, 2009); and Electronic Filing System – Web (EFS-Web) Contingency Option, 75 FR 27986 (May 19, 2010)
A. General Information on EFS-Web
EFS-Web is the United States Patent and Trademark Office’s (USPTO’s) system for electronic filing of patent correspondence. EFS-Web is accessible via the Internet on the USPTO website. The system utilizes standard Web-based screens and prompts to enable users to submit patent documents in Portable Document Format (PDF) directly to the USPTO. Users may electronically submit most patent applications, applications for international registration of industrial designs, reexamination requests, supplemental examination requests, and other patent-related documents securely using EFS-Web. Users may also use EFS-Web to submit Web-based documents such as ePetitions and eTerminal Disclaimers that can be filled out completely online through Web-based screens. ePetitions and eTerminal Disclaimers are auto-processed and granted immediately upon
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submission if the petition or request meets all of the requirements. An ePetition or eTerminal Disclaimer document is generated by EFS-Web based on the information entered into EFS-Web. This petition or request and a decision granting the petition or request will be loaded into the electronic application file (i.e., IFW), if the ePetition or eTerminal Disclaimer is approved. If the ePetition, eTerminal Disclaimer or request does not meet all of the requirements, it will not be loaded into the electronic application file (i.e., IFW). Users may also use EFS-Web to submit payments of most patent fees including patent application filing fees. Users need not provide a duplicate copy of any document filed through EFS-Web unless the USPTO specifically requires the filing of a duplicate in a particular situation. Users may review and check their electronic submissions including their attached PDF files, before submitting the documents to the USPTO. After submitting the documents via EFS-Web, the system will display a page that states the USPTO has received the user’s submission and that generally provides an application number. Users of EFS-Web will receive an ElectronicAcknowledgement Receipt of a successful submission received by the USPTO, usually within a few minutes. The processing of fees may delay the issuance of the Electronic Acknowledgement Receipt. The Electronic Acknowledgement Receipt is the electronic equivalent of a postcard receipt. See MPEP § 503. Most documents submitted via EFS-Web will be viewable by the user via the Private Patent Application Information Retrieval (PAIR) system within an hour after the USPTO receives the documents if the user has associated the application with the user’s customer number. Therefore, users will be able to immediately check the contents of their applications for completeness and accuracy of their electronic submissions. A user may become a registered user by obtaining a PKI digital certificate. See subsection E, below, for more information on PKI digital certificates. A registered user may file most patent applications and follow-on documents in a patent application; a non-registered user may file most patent applications but is only permitted to file limited types of follow-on documents in a patent application. See subsection B, below, for more information.
EFS-Web is a PDF-based filing system. Accordingly, all EFS-Web submissions are required to be in PDF format unless otherwise indicated in the Legal Framework for EFS-Web. EFS-Web permits submission of: (1) the American Standard Code of Information Interchange (ASCII) text files (.TXT) to submit bio-sequence listings, computer program listings, mega tables, and Complex Work Units; (2) PCT-EASY.zip compressed files to submit the Request form generated by PCT-SAFE (operated in PCT-EASY mode) in Patent Cooperation Treaty (PCT) international applications filed with the United States Receiving Office; and (3) JPEG reproductions in international design applications. See subsections L, M, and N below for more information on ASCII text files and electronic filing of PCT international applications, respectively. In addition, the USPTO provides users with PDF EFS-Web fillable forms, such as the Provisional Application for Patent Cover Sheet, the Information Disclosure Statement, the Application Data Sheet, Petition to Make Special Under Accelerated Examination Program, Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent, Request for Continued Examination (RCE) Transmittal, and Petition to Make Special Based on Age; ePetitions and eTerminal Disclaimers. When users submit information using an EFS-Web fillable form (not a scanned image (PDF) of a document) or the web-based version of the ADS (AIA/14), the information will directly load into the USPTO databases which will increase accuracy and facilitate faster processing. Users may use other USPTO-created PDF fillable forms available on the USPTO website, or user-created forms, and submit the completed forms via EFS-Web. The information entered on these forms, however, will not be automatically loaded into the USPTO databases.
B. Legal and Document Policies
To the extent that any USPTO regulation is inconsistent with the procedures for EFS-Web, the regulation will be interpreted in a manner to support EFS-Web. USPTO’s policies concerning documents submitted electronically using EFS-Web, including patent applications and requests for reexamination or supplemental examination, as well as follow-on documents in patent applications and reexamination proceedings are set forth below.
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1. Types of Patent Applications and Documents Permitted to be Filed via EFS-Web
a. Filings Permitted by Registered and Non-registered Users
EFS-Web permits registered users (who have a PKI digital certificate) and non-registered users to file the following applications, requests for reexamination, and documents:
(1) Provisional patent applications filed under 35 U.S.C. 111(b).
(2) Nonprovisional utility patent applications filed under 35 U.S.C. 111(a).
(3) Nonprovisional design patent applications (see 35 U.S.C. 171) filed under 35 U.S.C. 111(a).
(4) International applications filed under the PCT in the United States Receiving Office (see 35 U.S.C. 361).
(5) Submissions to enter the national stage under 35 U.S.C. 371.
(6) International design applications filed under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Design (see 35 U.S.C. 382).
(7) Requests for ex parte reexamination under 35 U.S.C. 302 for utility or design patents.
(8) Requests for supplemental examination under 35 U.S.C. 257 for utility, design, or plant patents.
(9) Third-Party Preissuance Submissions under 35 U.S.C. 122(e) and 37 CFR 1.290 for utility, design, or plant patent applications.
(10) Citation of prior art and written statements in patent files under 37 CFR 1.501 for utility applications
(11) Petitions to make special based on age under 37 CFR 1.102(c).
(12) Petitions to accept an unintentionally delayed payment of maintenance fee under 37 CFR 1.378, and payments of maintenance fees when submitted with the petition.
(13) Petition to make special under accelerated examination program (must be filed with a
nonprovisional utility patent application under 35 U.S.C. 111(a)).
(14) Reissue utility patent applications and reissue design patent applications.
b. Filing of Follow-on Documents
Registered users are permitted to file follow-on documents in their applications, reexamination proceedings and supplemental examination proceedings as listed above via EFS-Web. Registered users are not permitted to file follow-on documents in applications, reexamination proceedings and supplemental examination proceedings where they are not of record or acting in a representative capacity under 37 CFR 1.34 unless specifically authorized under the EFS-Web Legal Framework.
Follow-on documents are any documents filed after the initial submission of the application, request for reexamination, or request for supplemental examination. Follow-on documents include, but are not limited to, the following: amendments, information disclosure statements (IDS), replies to Office actions and notices, requests for continued examination (RCEs), continued prosecution applications in design applications (CPAs), evidence, petitions, and terminal disclaimers. In addition, registered users may file a copy of a patent application (e.g., a copy of the amended specification including the claims, and drawings) for the purposes of publication of the application when filed with any of the following pre-grant (eighteen-month) publication requests via EFS-Web: amended publication under 37 CFR 1.215(c), redacted publication under 37 CFR 1.217, early publication under 37 CFR 1.219, and voluntary publication or republication under 37 CFR 1.221(a). See subsection G below for more information on filing these publication requests via EFS-Web. Follow-on documents also include any documents submitted on the same day as the application, but after the initial submission. In reexamination proceedings, both the reexamination requester and the patent owner may file documents via EFS-Web, if they are registered users. Registered users may also file a second or subsequent submission for patent term extension under 35 U.S.C. 156 in a patent file via EFS-Web.
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Non-registered users are not permitted to file follow-on documents via EFS-Web, except those listed in items 9-12 above. Non-registered users may file follow-on documents by mail (with a certificate of mailing in accordance with 37 CFR 1.8), Priority
Mail Express® from USPS in accordance with 37 CFR 1.10, or hand delivery.
Any follow-on document must be signed in accordance with 37 CFR 1.33(b) and it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Office, or the international application number of the international application, or the international registration number of the international design registration. See 37 CFR 1.4, 37 CFR 1.33(b) and 37 CFR 1.5.
2. Types of Patent Applications and Documents Not Permitted to be Filed via EFS-Web
The following is a list of submission types that are not permitted to be filed using EFS-Web:
(1) Plant patent applications (see 35 U.S.C. 161) filed under 35 U.S.C. 111(a) and follow-on documents associated with plant patent applications, other than third party preissuance submissions under 37 CFR 1.290.
(2) Requests for Reexamination under 35 U.S.C. 302 for plant patents and documents associated with reexamination proceedings for plant patents.
(3) Requests for inter partes review under 35 U.S.C. 311.
(4) Any third party inquiries, petitions or papers unless specifically authorized by the EFS-Web Legal Framework (e.g., citation of prior art and written statements in patent files under 37 CFR 1.501) and/or provided for via dedicated EFS-Web interface (e.g.,Third Party Preissuance Submissions under 37 CFR 1.290) is improper. See subsection B.1., above. The Office considers inappropriate any third-party inquiry or submission in an application that is not provided for in 37 CFR 1.290 or 37 CFR 1.292. Some examples of third party papers include inquiries into the timing of future actions on an application, disputes over inventorship in an
application, and demands that the Office withdraw an application from issue under 37 CFR 1.313 on the basis of unpatentability of a claim.
(5) Color drawings and color photographs for international applications that have not entered the national stage.
(6) Initial submissions for patent term extension under 35 U.S.C. 156.
(7) Correspondence concerning registration practice as specified in 37 CFR 1.4(e). See also 37 CFR 1.6(d)(1).
(8) Certified documents as specified in 37 CFR 1.4(f). See also 37 CFR 1.6(d)(2).
(9) Correspondence to be filed in an application subject to a secrecy order under 37 CFR 5.1 through 37 CFR 5.5. See also 37 CFR 1.6(d)(6).
(10) Documents filed in contested cases and trials before the Patent Trial and Appeal Board (PTAB), except as the PTAB may expressly authorize. See also 37 CFR 1.6(d)(7).
(11) Documents filed in contested cases and trials before the PTAB, which are governed by 37 CFR Part 41, Subpart D and Part 42, respectively. See also 37 CFR 1.6(d)(3) and 1.8(a)(2)(i)(B) and (C).
(12) Correspondence filed in connection with a disciplinary proceeding under 37 CFR part 11. See also 37 CFR 1.6(d)(3).
(13) Maintenance fees submitted under 37 CFR 1.366 that are not submitted with a petition under 37 CFR 1.378(c) (see item 12 in subsection B.1. above). Patent owners may pay electronically using the Office of Finance On-Line Shopping Page at https://ramps.uspto.gov/eram/. See MPEP § 2510 for information regarding the proper methods for submitting maintenance fees.
(14) Assignment documents under 35 U.S.C. 261, which may be electronically filed using the Electronic Assignment System (EPAS) or the Electronic Trademark Assignment System (ETAS). Information regarding EPAS is available at: http://epas.uspto.gov. Information regarding ETAS is available at: http://etas.uspto.gov.
(15) Submissions that are not associated with a patent application, international design application, reexamination proceeding, or supplemental examination proceeding.
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If any of the documents listed above is submitted via EFS-Web, the document will not be accorded a date of receipt and it will not be considered officially filed in the USPTO. Furthermore, no benefit will be given to a certificate of transmission under 37 CFR 1.8 on the document.
3. Papers That May Be Filed and Processed Electronically
Registered users may use EFS-Web to submit Web-based documents such as ePetitions and eTerminal Disclaimers. ePetitions and eTerminal Disclaimers are auto-processed and granted immediately upon submission if the petition or request meets all of the requirements. See the ePetition Resource Page at www.uspto.gov/ patents-application-process/applying-online/epetition- resource-page for a list of ePetitions. Registered users sign into EFS-Web and fill out Web-based screens. An ePetition or eTerminal Disclaimer document (PDF) is generated by EFS-Web based on the information entered into EFS-Web. This document and a decision granting the petition or request will be loaded into the electronic application file (i.e., IFW), if the ePetition or eTerminal Disclaimer is approved. If the ePetition, eTerminal Disclaimer or request does not meet all of the requirements, it will not be loaded into the electronic application file (i.e., IFW).
EFS-Web permits registered users (who have a PKI digital certificate) to file the following auto-processed ePetitions and eTerminal disclaimers:
1. Request for withdrawal as attorney or agent; 2. ePetition for Revival of an Application for
Patent Abandoned Unintentionally Under 37 CFR 1.137(a);
3. Petition to withdraw an application from issue under 37 CFR 1.313;
4. Petition for revival of an application under 37 CFR 1.137;
5. eTerminal Disclaimers for nonprovisional utility applications under 37 CFR 1.321; and
6. Petition to correct assignee after payment of Issue Fee under 37 CFR 3.81(b).
4. The Official Record of Documents Submitted via EFS-Web
When the USPTO successfully receives PDF documents filed in accordance with the EFS-Web requirements, the USPTO will convert the PDF files submitted by users into Tagged Image File Format (TIFF) image files and then store the TIFF image files in the Image File Wrapper (IFW) as part of the official record, except for those drawings which are stored in the Supplemental Complex Repository for Examiners (SCORE) as part of the official record (i.e., color and grayscale drawings and drawings submitted in design applications). The USPTO also will store JPEG drawing files successfully received in international design applications in accordance with the EFS-Web requirements in SCORE as part of the official record. In addition, certain submissions filed as ASCII text files (e.g., sequence listings or computer program listings), are stored in SCORE as part of the official record. Accordingly, the official record for the patent application, international design application, reexamination proceeding, or supplemental examination proceeding comprises:
(1) ASCII text documents and drawings stored in SCORE as set forth above; and
(2) TIFF images of all other original documents as stored in IFW as well as the Electronic Acknowledgement Receipt and the Electronic Patent Application Fee Transmittal, both of which contain information entered via the EFS-Web graphical user interface (GUI) data collection screens and TIFF images stored in IFW in international design applications generated from XML data received from the International Bureau.
The original documents submitted via EFS-Web (e.g., applications and reexamination and supplemental examination proceeding documents) are stored exactly as filed in an independent location. See subsection L. below for more information on ASCII text documents and subsections K. and M.2. below for information on color and grayscale drawings and subsection N for information on international design applications. Submissions for pre-grant (eighteen-month) publication are forwarded to the Pre-Grant Publication Division and are not stored in IFW or SCORE as part of the official
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record of the patent application. See subsection G. below for more information on publication requests.
5. How is internally inconsistent information submitted via EFS-Web treated?
When filing a new application via EFS-Web, EFS-Web requires the input of certain application data. This includes the type of application being filed (e.g., 35 U.S.C. 111(a), national stage application under 35 U.S.C. 371, international application), the title of the application (unless the application is an international design application), the first named inventor or applicant, and a correspondence address. In addition, other application data, such as a docket number, may be provided.
Routing of the submission to the appropriate area of the Office for processing is based on the application type indicted in EFS-Web, and such indication will be treated as an instruction to treat the submission as the selected application type. Where the submission includes conflicting indications as to the type of application being filed, and there is no provision to resolve such conflict (see, e.g., 37 CFR 1.495(g)), the submission may be treated in accordance with the indication provided in EFS-Web, and a petition under 37 CFR 1.182 may be required to correct the error. In the case of other conflicting information in the submission, the conflict will be resolved in accordance with the applicable regulations. For example, inventorship will be determined in accordance with the provisions of 37 CFR 1.41. Where no corresponding information is included in the submission, or the corresponding information was not made in accordance with the applicable regulations, the Office may use the application data furnished through EFS-Web for purposes of correspondence until corrected by the applicant. For example, the Office may use the correspondence address associated with a customer number entered through EFS-Web rather than an address furnished in an unsigned paper in the new application submission.
6. Application Size Fee for Applications Submitted via EFS-Web
For patent applications filed under 35 U.S.C. 111 (including provisional applications, utility and design
nonprovisional applications, and reissue applications), the paper size equivalent of the specification (including claims) and drawings of an application submitted via EFS-Web will be considered to be seventy-five percent (75%) of the number of sheets of paper present in the specification (including claims) and drawings of the application when entered into IFW after being rendered by EFS-Web for purposes of determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.53(f)(2) and MPEP § 607. The paper size equivalency under 37 CFR 1.52(f)(2) for EFS-Web filings does not apply to national stage submissions. See MPEP § 1893.01(c).
Any sequence listing submitted in ASCII text as part of an associated file of the application in compliance with 37 CFR 1.821(c) or (e), and any computer program listing in compliance with 37 CFR 1.96, submitted via EFS-Web will be excluded when determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(2) and subsections K.2. and M.3., below. Sequence listings or computer program listings submitted as PDF files will not be excluded when determining the application size fee.
7. Fee Payments Submitted via EFS-Web
Non-registered and registered users may submit the filing fees (e.g., the basic filing fee, search and examination fee, and excess claims fee) using the online fee payment in EFS-Web at the time of filing a patent application, request for reexamination, or request for supplemental examination, and may submit fees for third party preissuance submissions under 37 CFR 1.290. Only registered users may submit payment of fees in a previously filed application, reexamination proceeding, or supplemental examination proceeding. EFS-Web permits users to electronically submit the payment of fees with a credit/debit card, USPTO deposit account, or electronic fund transfer. Users may also provide authorizations to charge fees to a deposit account with the documents being submitted electronically via EFS-Web (e.g., a fee transmittal letter or form). However, users should not submit a credit/debit card charge authorization including the Credit Card Payment Form (PTO-2038) electronically via EFS-Web, because the electronic submission automatically will be loaded into the
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application file in IFW, and the credit/debit card information may become part of the record of an application file that is open to public inspection.
When the online fee payment in EFS-Web is unavailable, a deposit account authorization transmittal (e.g., PTO/SB/17) may be included with the documents being submitted via EFS-Web. A credit card authorization transmittal (e.g., PTO-2038) may also be submitted by facsimile transmission to the USPTO central facsimile number (571)
273-8300, or sent via Priority Mail Express® from the United States Postal Service (USPS) in accordance with 37 CFR 1.10. Applicants must include the application number from the Electronic Acknowledgement Receipt to ensure that the fees are paid in the correct application. Facsimile submission of the basic national fee for national stage under 35 U.S.C. 371 is not accepted. Failure to timely pay the basic national fee prior to the expiration of 30 months from the priority date will result in abandonment of the international application.
If applicant wishes to submit the application filing fees on the filing date of a patent application to avoid the surcharge, the payment of the filing fees must be submitted and received by the USPTO before midnight ET on the filing date of the application. Failure to pay the fees on the filing date of the application will result in a surcharge.
When the online fee payment in EFS-Web is unavailable, the following types of submissions cannot be filed via EFS-Web, since online fee payment must accompany the submission:
(1) Petitions that require a fee for auto-processing by EFS-Web;
(2) Pre-grant publication submissions under 37 CFR 1.211 to 1.221 that require a fee; and
(3) Third-party preissuance submissions under 37 CFR 1.290 that require a fee.
C. Electronic Acknowledgement Receipt and Date Of Receipt
The Electronic Acknowledgement Receipt establishes the date of receipt by the USPTO of
documents submitted via EFS-Web. The electronic documents are itemized in the Electronic Acknowledgement Receipt, which will contain a full listing of the documents submitted to the USPTO as described by the user during the submission process, including the count of pages and/or byte sizes for each document. Thus, the Electronic Acknowledgement Receipt is the electronic equivalent of the postcard receipt described in MPEP § 503.
The official application filing date will be noted on the Filing Receipt (37 CFR 1.54) after the submitted application parts are reviewed for compliance with 35 U.S.C. 111 (or for compliance with 35 U.S.C. 371 for entry into the U.S. national stage of an international application). The filing date of an application filed under 35 U.S.C. 111 via EFS-Web is based on the dates indicated on the Electronic Acknowledgement Receipt assuming that, after review, the documents submitted are found to be entitled to an application filing date. Likewise, the official reexamination filing date will be noted on the “Notice of Ex Parte Reexamination Request Filing Date” and the official supplemental examination filing date will be noted on the “Notice of Supplemental Examination Request Filing Date” after Central Reexamination Unit (CRU) review for filing date compliance, and is based on the dates indicated on the Electronic Acknowledgement Receipt.
If the official version of any document received by EFS-Web is lost, damaged or rendered unreadable and if it cannot be recovered from the stored files received by electronic submission, then the user will be promptly notified. Such events are expected to be rare. In that situation, the user may have to resubmit any lost document and petition for the original filing date. The user would be required to present: (1) the Electronic Acknowledgement Receipt; (2) a copy of the missing files as submitted; and (3) a signed petition accompanied by a statement stating that the attached files are the same as those originally submitted and mentioned in the Electronic Acknowledgement Receipt for that application number (e.g., a petition under 37 CFR 1.53(e) or 37 CFR 1.182 with the appropriate petition fee under 37 CFR 1.17(f)).
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The Electronic Acknowledgement Receipt and statement will serve as prima facie evidence that the resubmitted documents are the same as those submitted on the date of receipt, except when the document description used by the user does not match the document. For example, if an applicant originally filed a specification and a set of claims and used the correct document descriptions for a specification and a set of claims, then the Electronic Acknowledgement Receipt will serve as prima facie evidence that the applicant filed the specification and set of claims on the original filing date. However, if the applicant actually filed two sets of claims, the Electronic Acknowledgement Receipt will not serve as prima facie evidence that the applicant filed a specification and a set of claims (even though the applicant used the document descriptions for a specification and a set of claims). Note the Electronic Acknowledgement Receipt only indicates that the USPTO received what was actually sent, as opposed to what may have been intended to be transmitted. Users should exercise the same care in preparing and preserving a copy of a submission in electronic form as in paper.
1. The Date of Receipt of a Follow-on Document Submitted via EFS-Web
Follow-on documents filed in an application or reexamination proceeding after the initial filing of the application or request for reexamination will be accorded a receipt date, which is the date the follow-on document is received at the USPTO. See 37 CFR 1.6(a)(4).
A follow-on document required to be filed in the USPTO within a set period of time (e.g., a reply to an Office action) will be considered as being timely filed if the follow-on document is submitted in compliance with the procedure set forth in 37 CFR 1.8(a):
(1) The follow-on document is submitted via EFS-Web prior to expiration of the set period of time in accordance with the requirements for EFS-Web; and
(2) The document includes a certificate of transmission stating the date of transmission and signed by a person that has reasonable basis to expect that the document would be transmitted on or before
the date of transmission. See 37 CFR 1.8(a)(1)(i)(C) and (ii).
However, the certificate of transmission practice under 37 CFR 1.8 does not apply to the documents listed in 37 CFR 1.8(a)(2) (e.g., a document filed for the purpose of obtaining an application filing date).
2. The Date of Receipt of an Application Submitted via EFS-Web
The time and date of receipt of an application filed via EFS-Web is the local time and date of receipt of the application in the USPTO headquarters in Alexandria, Virginia, which is in the Eastern Time zone. Accordingly, the date of receipt of an application officially submitted through EFS-Web will be the date in the Eastern Time zone when the USPTO received the submission. As such, the submission’s “date of receipt,” as shown on the Electronic Acknowledgement Receipt, is the Eastern Time zone date that the documents are fully, successfully, and officially received at the USPTO, after the user clicks the SUBMIT button on the Confirm and Submit screen. See 37 CFR 1.6(a)(4). This date is controlling for filing date purposes of a newly filed application. There is no “certificate of transmission” practice for new application filings (37 CFR 1.8).
To be very specific, the EFS-Web system records as the time and date of receipt of documents the local time and date in Alexandria, Virginia. on which the USPTO receives the documents, after the user clicks the SUBMIT button on the Confirm and Submit screen for those documents.
For example, if an applicant in California officially files a patent application with the USPTO through EFS-Web by clicking on the SUBMIT button at 10 p.m. Pacific Time in California on May 1, that application would be officially received by the USPTO at 1 a.m., local time (i.e., Eastern Daylight Time) on May 2. Accordingly, the application would receive a filing date of May 2. However, the applicant could alternatively file the application
using Priority Mail Express® from the USPS in accordance with 37 CFR 1.10 in which case the applicant would have until midnight on May 1 in his
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or her local time zone to file the application and obtain a filing date of May 1.
3. EFS-Web Availability
Hours of operation of EFS-Web will be clearly provided in the EFS-Web instructions when users log on to the system. The USPTO will post information on any scheduled down time due to system maintenance in advance. Users may file patent documents electronically during the hours of operation of EFS-Web every day of the week, including weekends and holidays. If the submission is successfully received (even on a Saturday, Sunday or Federal holiday within the District of Columbia), the USPTO will assign that receipt date to the submission.
If a transmission is attempted during a down time, the USPTO cannot accept it and will, if possible, transmit back a notice that the USPTO is not accepting submissions. No Electronic Acknowledgement Receipt will be sent. Instead a notice will advise the user to use alternative filing
methods, such as Priority Mail Express® from the USPS in accordance with 37 CFR 1.10 or hand delivery of paper to the USPTO, to establish the filing date. Note that applications filed under 37 CFR 1.53, PCT international applications, international design applications, and reexamination requests, cannot be submitted by facsimile transmission (37 CFR 1.6(d)(3) and (5)), and that certificate of mailing procedures do not apply to new applications and reexamination requests (37 CFR 1.8(a)(2)(i)(A) and (D)). Users are strongly advised to transmit their electronic filings sufficiently early in the day to allow time for alternative paper filing when transmission cannot be initiated or correctly completed.
4. EFS-Web Contingency Option
The USPTO will provide EFS-Web Contingency Option to users to file new applications, national stage submissions under 35 U.S.C. 371, requests for reexamination, requests for supplemental examination, and certain petitions when the primary portal to EFS-Web is unavailable during an unscheduled outage. The USPTO will post a notification of any unscheduled outage of the
primary portal to EFS-Web and provide the link to EFS-Web Contingency Option on the EFS-Web Internet page www.uspto.gov/patents- application-process/applying-online/about-efs-web. The EFS-Web Contingency Option has the same functionality as EFS-Web for unregistered e-filers (www.uspto.gov/patents-application-process/ applying-online/efs-web-contingency.html). It permits users to sign on as unregistered EFS-Web users to file new applications, national stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage, requests for reexamination, requests for supplemental examination and certain petitions. However, other follow-on documents and fee payments filed after the initial submission of the application, reexamination request, or supplemental examination request (e.g., amendments and replies to Office actions) cannot be filed using EFS-Web Contingency Option.
a. Proper Submissions Under EFS-Web Contingency Option
Specifically, EFS-Web Contingency Option only permits users to electronically file the following items as unregistered EFS-Web users:
(1) Provisional patent applications filed under 35 U.S.C. 111(b);
(2) Nonprovisional utility patent applications filed under 35 U.S.C. 111(a)
(3) Nonprovisional design patent applications (see 35 U.S.C. 171) filed under 35 U.S.C. 111(a)
(4) International applications filed under the Patent Cooperation Treaty (PCT) in the United States Receiving Office (see 35 U.S.C. 361);
(5) Submissions to enter the national stage under 35 U.S.C. 371;
(6) International design applications filed under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (see 35 U.S.C. 382);
(7) Requests for ex parte reexamination under 35 U.S.C. 302 for utility or design patents;
(8) Requests for supplemental examination under 35 U.S.C. 257 for utility, design, or plant patents;
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(9) Petitions to make special based on age under 37 CFR 1.102(c) when filed as an e-petition using – the EFS-Web SB130 form, for the automatic processing of the e-petition (for more information see www.uspto.gov/sites/default/files/ebc/ portal/efs/sb130_instructions.doc);
(10) Petitions to accept an unintentionally delayed payment of maintenance fee under 37 CFR 1.378(b) when filed as an e-petition using the EFS-Web SB66 form, for the automatic processing of the e-petition (for more information see www.uspto.gov/sites/default/files/ebc/portal/efs/ sb0066e_fill.doc);
(11) Petition to make special under the accelerated examination program (must be filed with a nonprovisional utility patent application under 35 U.S.C. 111(a)); and
(12) Reissue utility patent applications and reissue design patent applications.
Documents filed via EFS-Web Contingency Option as part of the submissions listed above must meet the same file format requirements established for EFS-Web, e.g., file size and PDF embedded-font requirements. The same file validation performed in EFS-Web will be performed in EFS-Web Contingency Option. Similar to EFS-Web, EFS-Web Contingency Option will provide an Electronic Acknowledgement Receipt that establishes the date of receipt by the USPTO of an application or document submitted via EFS-Web Contingency Option. Applicant is not required to, and should not, resubmit the application or document when the primary portal to EFS-Web is once again available. Any resubmission of an application will result in filing a duplicate application and, if applicant pays the filing fees again when submitting the duplicate application, no refund will be provided.
Applications filed via EFS-Web Contingency Option are protected with the same level of security as EFS-Web for unregistered e-filers by using Transport Layer Security (TLS) to encrypt transmission over the Internet. Registered e-filers who have uploaded documents to a Saved Submission package in EFS-Web will not be able to access those Saved Submission documents in EFS-Web Contingency Option. Applicants can submit on-line fee payments by selecting fees on the fee calculation screen and completing their payment at time of submission (i.e.,
chose the “Yes! I want to pay now” button rather than “No - I will pay later” button).
When the primary portal to EFS-Web is unavailable during an unscheduled outage, applicants may also file new applications, national stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage, reexamination requests, and requests for supplemental examination, by hand-delivery to the
USPTO, or Priority Mail Express® from the United States Postal Service (USPS) in accordance with 37 CFR 1.10, to establish the filing date or national stage submission date. New applications, national stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage, reexamination requests, and requests for supplemental examination cannot be submitted by facsimile transmission and certificate of mailing procedures under 37 CFR 1.8 do not apply to these items.
The EFS-Web Contingency Option does not permit follow-on fee payments and follow-on documents other than those listed above. Applicants may file the documents or fee payments by: (1) facsimile transmission in accordance with 37 CFR 1.6(d) and 1.8, (2) first class mail with a certificate of mailing in accordance with 37 CFR 1.8, (3) hand-delivery
to the USPTO, or (4) Priority Mail Express® from USPS in accordance with 37 CFR 1.10. Documents that are required to establish the filing date of an application (e.g., a missing drawing figure or page of the specification) cannot be submitted by facsimile transmission, and certificate of mailing procedures under 37 CFR 1.8 do not apply to these documents.
b. Improperly Filed Follow-on Documents
As previously stated, EFS-Web Contingency Option and EFS-Web for unregistered e-filers permit users to sign on as unregistered EFS-Web users to file new applications, national stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage, requests for reexamination, requests for supplemental examination, and certain petitions. EFS-Web Contingency and EFS-Web for unregistered e-filers have limited functionality, and do not permit users
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to file other follow-on documents and follow-on fee payments after the initial submission of the application, reexamination request, or supplemental examination request (e.g., amendments and replies to Office actions). Note that it is improper for users to file follow-on documents as new applications. The USPTO provides answers to frequently asked questions, and other helpful information on the USPTO website. Users are encouraged to check the USPTO website for more information and contact the Patent Electronic Business Center for questions related to the usage of USPTO electronic systems.
c. Additional Information Regarding National Stage Submissions
The basic national fee is required in order for an international application to enter the national stage under 35 U.S.C. 371. See 37 CFR 1.495. Users are permitted to submit the basic national fee with the national stage submission under 35 U.S.C. 371 via EFS-Web and EFS-Web Contingency Option using on-line payment screens that interface with the Revenue Accounting and Management (RAM) system. If the RAM system is unavailable, neither EFS-Web nor EFS-Web Contingency Option will permit users to make payment using the interactive payment screens. Applicant may pay the necessary national stage entry fees by including a written authorization to charge the desired fees together with the national stage submission under 35 U.S.C. 371,
or sending the payment via Priority Mail Express®
from the USPS in accordance with 37 CFR 1.10 on the same date that the national stage submission is electronically filed.
For any national stage submissions under 35 U.S.C. 371 filed via the EFS-Web or EFS-Web Contingency Option, the system automatically checks the Patent Application Locating and Monitoring (PALM) system to verify that no previous national stage submission has been made for the particular PCT international application referenced in the initial national stage submission. If the PALM system is unavailable, neither EFS-Web nor EFS-Web Contingency Option can complete the PALM verification, and thus EFS-Web and EFS-Web Contingency Option will not permit any national stage submissions under 35 U.S.C. 371 to be filed. Therefore, if PALM is unavailable, applicants may
use hand-delivery or Priority Mail Express® from the USPS in accordance with 37 CFR 1.10 to timely submit documents and fees for national stage entry. However, applicants may not file national stage submissions under 35 U.S.C. 371 and the basic national fee necessary to enter the national stage via facsimile transmission. See 37 CFR 1.6(d)(3) and 1.8(a)(2)(i)(F).
See subsection M below for additional information pertaining to the filing of international applications and entry into the national stage.
5. Document Inadvertently Omitted from Application
One advantage of filing a patent application via EFS-Web is that a registered user may view his or her submission in Private PAIR and file a document directly into the application on the same day as the filing date of the application. In certain situations, applicant may correct an error by filing a missing item(s) on the same day as the filing date of the application. Applicant, however, may wish to file another new application in other certain situations.
The following examples describe implications raised when applicant inadvertently omits an item when filing an application under 35 U.S.C. 111 electronically via EFS-Web:
(1) Oath or Declaration - Applicant may file an executed oath or declaration on the same day as the filing date as the application via EFS-Web. The oath or declaration will not be considered late and thus a surcharge for filing a late oath or declaration will not be required.
(2) Filing Fees - Applicant may file the filing fees (e.g., the basic filing fee, search and examination fees, application size fee, or excess claims fee) on the same day as the filing date of the application via EFS-Web. The fees will not be considered late and thus a surcharge for filing the filing fees will not be required.
(3) Nonpublication request - Because 37 CFR 1.213(a)(1) requires any nonpublication request to be filed with the application, applicant cannot simply file the nonpublication request to correct the error. If applicant does not wish to have the application publish, applicant must file: (a) a new
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application with a nonpublication request; and (b) in the initial application, a petition for express abandonment to avoid publication under 37 CFR 1.138(c) and fee under 37 CFR 1.17(h) in sufficient time to permit the appropriate officials in the Pre-Grant Publication Division to recognize the abandonment and remove the application from the publication process.
(4) Drawings - Applicant may file missing drawings as a preliminary amendment on the same day as the filing date of the application. The drawings will be considered as part of the original disclosure of the application. See 37 CFR 1.115(a)(1). If the application was filed with the “wrong drawings,” a preliminary amendment could be filed on the same day as the filing date of the application adding the correct drawings and deleting the “wrong drawings.” An amendment adding new drawings and deleting the “wrong drawings,” filed on a day after the filing date of the application may raise new matter issues.
(5) Claims - Applicant may file claims as a preliminary amendment on the same day that applicant filed the application papers and such claims will be considered as part of the original disclosure of the application.
(6) Part of the specification - Applicant may file any missing portion of the written description as a preliminary amendment on the filing date of the application. Such amendment will be considered as part of the original disclosure.
If applicant files a second application to correct an error in the first application, applicant will have filed two applications. Applicant may continue to prosecute the first application that has the error or abandon the first application by filing a petition for express abandonment. Please note that any fees paid in the first application will not be refunded or applied to the second application. Applicant may request refund of the search fee and any excess claims fees (but not the basic filing fee, examination fee, and application size fee) paid in the first application if the application was filed under 35 U.S.C. 111(a), and the applicant files a petition for express abandonment in accordance with 37 CFR 1.138(d).
6. Legal Consequences of the USPTO’s Accepting Electronic Patent Applications on Saturday and Sunday
Applicants may file patent applications electronically during the hours of operation of EFS-Web every day of the week, including weekends and holidays. EFS-Web will provide applicants with the opportunity to receive a filing date on any day of the week, including Saturday, Sunday, and Federal holidays. In addition, 35 U.S.C. 21(b) states:
When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, the action may be taken, or fee paid, on the next succeeding secular or business day.
Further, 35 U.S.C. 119(e)(3) states, in pertinent part:
If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day.
Thus, under United States law, applicants will be permitted to take action on the next business day when the last day for taking action falls on a weekend or Federal holiday, regardless of the mode or form of filing.
However, Article 4 of the Paris Convention addresses the priority period and in Article 4(C)(3) it states:
If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.
As stated above, the USPTO is capable of accepting electronic patent application filings every day of the week, including weekends and holidays, through EFS-Web. Thus, applicants filing international applications with the United States Receiving Office or international design applications with the USPTO
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as an office of indirect filing are cautioned to consider possible adverse consequences regarding the determination in other countries of priority periods under Article 4(C)(3) of the Paris Convention. Specifically, the ability to file applications electronically on weekends and holidays in the USPTO may result in loss of priority rights in foreign jurisdictions designated in international applications filed with the United States Receiving Office or international design applications with the USPTO as an office of indirect filing, if applicants elect, in accordance with 35 U.S.C. 21(b) or 119(e)(3), to file an international application or international design application on the next succeeding business day in the event that the twelve-month Paris Convention priority period (or six-month period in the case of international design) set out in Article 4(C)(1) falls on a Saturday, Sunday, or Federal Holiday. In such circumstances, other patent offices may deny the priority claim on the basis that the international application or international design application was not timely filed if their national law strictly incorporates the provision of Paris Convention Article 4(C)(3) and considers the USPTO to be open for the filing of applications on weekends and holidays. For this reason, applicants may prefer not to rely upon the “next business day” provisions of 35 U.S.C. 21(b) and 119(e)(3) when filing international applications or international design applications with the USPTO, and instead file the international application or international design application before the Paris Convention priority period has expired.
D. Proper usage of EFS-Web
Users should follow the instructions and guidelines for EFS-Web provided on the USPTO website. Before clicking the SUBMIT button, the user should check whether the correct documents have been attached to the submission, and whether the information related to the submission has been entered correctly. Once the user clicks the SUBMIT button on the Confirm and Submit screen, the submission will be electronically sent to the USPTO. A submission is officially filed at the USPTO when the documents are received by the USPTO (the local time and date in Alexandria, VA, which is located in the Eastern Time zone). Use of EFS-Web in a manner significantly in violation of the instructions
and guidelines for EFS-Web provided on the USPTO website may result in non-entry of the submission or failure to accord a filing date in the event the USPTO does not fully, successfully, and officially receive all of the elements necessary to obtain a filing date for an intended submission. Furthermore, electronic files submitted via EFS-Web must be free of executables, worms, viruses, or any other type of potentially malicious content. Please note that 18 U.S.C. 1030 imposes a duty on users not to intentionally cause damage to federal government computers.
1. Filing Documents as PDF Files via EFS-Web
EFS-Web accepts standard PDF documents up to 25 megabytes for each file, and 60 electronic files per submission. For international design applications, EFS-Web can accept more than 60 electronic files in a single submission, subject to certain conditions. See subsection L.4. below for more information. PDF files created from scanned documents and submitted via EFS-Web must be created using a scanning resolution no lower than 300 dpi. Lower resolution scans have significantly delayed processing and publication of applications, e.g., resubmission has been required for documents failing to comply with the legibility requirements. See 37 CFR 1.52(a)(1)(v) and (a)(5) regarding document legibility requirements.
In addition, because the PDF format is so feature-rich, certain PDF features are currently not supported by the USPTO systems. For example, PDF documents with multiple layers must be flattened prior to submission to ensure that the complete document is received by the USPTO and readable to the examiner or other deciding officials. If a document contains layers that are marked as “invisible”, the invisible layers will be lost when the document is processed by the USPTO, and thus the official records in IFW will not contain the information on the invisible layers. Furthermore, if a user enters information on a form using the PDF comments or annotations features, only the blank form without the PDF comments and annotations will be processed. Therefore, the complete document will not be officially filed at the USPTO and the user cannot rely on the Electronic Acknowledgement Receipt as evidence that the completed form was
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filed at the USPTO. Users are encouraged to check the contents of their submissions for completeness and accuracy via PAIR.
Users must follow the PDF Guidelines for EFS-Web and PDF Creation for EFS-Web (available on the USPTO website) to create and submit PDF files via EFS-Web to ensure that all of the information in the PDF files is successfully received and processed by the USPTO.
2. Entering Information on EFS-Web Screens
EFS-Web collects information from on-screen entries made by the user through the EFS-Web graphical user interface (GUI) data collection screens. Through these data collection screens, the user provides the USPTO with information regarding the electronic submission, such as the type of application being filed, the application number of the application in which a follow-on document is being submitted, or the type of document being submitted. The USPTO systems (e.g., EFS-Web, IFW, etc.) will use the information entered by the user on the EFS-Web screens to automatically: (1) assign the application number, create the application, and process the application, if a new application is being filed; (2) upload the follow-on document into the application file specified by the user; or (3) message the deciding official based on the document description selected by the user. Providing incorrect information regarding the submission could lead to, for example: (1) an incorrect type of application file being created; (2) a delay in processing the document; (3) filing a document in an incorrect application; or (4) the deciding official not recognizing the document in sufficient time to avoid publication, to withdraw the application from issue, or to avoid the abandonment of the application.
a. Follow-on Documents
When a user submits a follow-on document (e.g., a reply to an Office action or notice) via EFS-Web, the user is required to enter the correct application number and confirmation number of the application in which the follow-on document is being filed. Providing the incorrect application number and confirmation number pair will result in filing the follow-on document in the wrong application.
Therefore, it is important for the user to enter the correct application number and confirmation number on the EFS-Web screen when filing the follow-on document. Furthermore, users cannot file a follow-on document as a new application.
After the submission of the follow-on document is completed, the user should log on to PAIR to review the application file and check whether the follow-on document has been filed in the correct application. Checking the application file via PAIR would also help the user to discover other filing errors, such as filing a wrong document or omitting a portion of the document.
b. Filing a New Application
When a user is submitting a new application via EFS-Web, the user is required to select the application type (e.g., design, utility, provisional or nonprovisional) being filed on the EFS-Web screen. Only document descriptions and fee codes pertinent to the selected application type will be available for the submission. The system will also automatically generate the application number based on the user’s selection. For example, if the user indicates that the submission is a provisional application by selecting the EFS-Web radio button for a provisional application, the application will be assigned a provisional application number, provisional application fees will be collected or required, and the application will be further processed as a provisional application. Furthermore, the application will not be assigned to an examiner for examination and will not be published because the submission is processed as a provisional application. Therefore, it is important for the user to select the correct application type on the EFS-Web screen, and review the Electronic Acknowledgement Receipt and the application file using PAIR after the submission is completed.
c. Document Indexing
When a user submits an application or a follow-on document in an application using EFS-Web, the user must select from the list of document descriptions to specify the files being submitted via EFS-Web. For instance, when the user is filing a patent application, the submission must be separated into
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appropriate sections: specification, claims, abstract, and drawing; and when the user is filing an amendment, the user must select the appropriate type of amendment: amendment after non-final, amendment after allowance, preliminary amendment, and amendment after final. Based on the document description selected by the user, a document code is assigned and a message regarding the document submitted to the USPTO will be forwarded to the appropriate organization for processing, and to the appropriate official for consideration. Furthermore, the IFW and PAIR systems use the document code for identifying the document maintained in the application file. Therefore, accurate document indexing is important to facilitate efficient processing and proper consideration of the document by the USPTO. For example: (a) if the user indicated an after-final amendment as a non-final amendment, the processing of such amendment may be delayed and the examiner may not have sufficient time to consider the amendment before the time period for reply expires; (b) if the user selects the “Pre-Grant Publication” radio button on the EFS-Web data collection screen for submitting a substitute specification filed in response to a non-final Office action, the submission will be forwarded to the publication branch rather than processed into IFW and forwarded to the examiner for consideration; and (c) if the user selects “drawings - only black and white line drawings" for submitting color drawings in a utility application rather than “drawing - other than black and white line drawings", the color drawings would not be processed as color drawings, and would be maintained as black and white drawings in IFW.
More information on document indexing is available on the USPTO website. It is important for users to select the correct document description, and check the application file via PAIR after the submission is completed.
3. Refunds
The USPTO will grant refunds to users when, due to a malfunction with the EFS-Web system, the EFS-Web system has misled a user into paying a fee in error. If it cannot be determined that a malfunction occurred, but rather it seems to be a user error, no refund will be given. Users should contact the Patent
Electronic Business Center (Patent EBC) if there are any issues associated with their submissions.
E. Security and Authentication
The USPTO requires PKI certificates to meet federal government computer system authentication guidelines as defined by the National Institute of Standards and Technology (NIST) and the Office of Management and Budget (OMB). The required evaluation of EFS-Web and PAIR determined that level three authentication was needed; this is met by the USPTO’s PKI.
Only a PKI certificate holder (or the designated employee under the certificate holder’s direction and control) can submit follow-on documents. This preserves confidentiality, and is consistent with power of attorney and correspondence regulations. In order to obtain a PKI certificate, the user must be a registered practitioner (i.e., an attorney or agent) or an inventor, and complete the appropriate paperwork (e.g., review the PKI Subscriber Agreement and complete the certificate action form, available on the USPTO website). Once the user has a PKI certificate, the user can authenticate himself or herself to the USPTO through the EFS-Web sign-on. This will generate a secure, encrypted connection with the USPTO.
For users that do not have, or do not wish to use, a PKI certificate to authenticate to the USPTO, they may still submit new application filings only via a non-authenticated workflow. The user would go to the EFS-Web page and choose to submit without a PKI certificate as a non-registered user, which would generate a Transport Layer Security (TLS) connection for the session, thus allowing secure data transmission to the USPTO. Non-registered users have the same level of protection for filing as a registered user, but are limited to submission of initial filings (except as noted in subsection B.1., above). This practice minimizes the risk of improperly-filed third party submissions and other documents. Non-registered users may file follow-on documents by mail (with a certificate of mailing in accordance with 37 CFR 1.8), Priority Mail
Express® from USPS in accordance with 37 CFR 1.10, or hand delivery.
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Note: Users are advised that the USPTO may revoke a user’s digital PKI certificate if the user makes an improper submission through EFS-Web. See subsection B., above, and section 4 of the United States Patent and Trademark Office Public Key Infrastructure Subscriber Agreement ("PKI Subscriber Agreement") (available at www.uspto.gov/patents-application-process/applying- online/efs-web-guidance-and-resources), listed as "PKI Subscriber Agreement").
1. PKI Subscriber Agreement
The PKI Subscriber Agreement (April 2013) explains that a holder of a PKI certificate must update changes in the information in their Certificate of Action Form within thirty (30) calendar days of the change. Information may be updated by submitting a new certificate of action form or a letter to the Electronic Business Center (EBC). A holder’s registered email address and password may be updated on the Digital Certificate Management webpage.
The PKI Subscriber Agreement has been revised to clarify that a PKI certificate holder will only use the certificate for applications for which the certificate holder is authorized to access and that unauthorized use such as attempting or gaining access to nonpublic information or inadvertently disclosed nonpublic information may lead to immediate revocation of the PKI certificate.
A PKI certificate holder is permitted to designate more than one employee to use the PKI certificate under the direction and control of the holder in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web. The designated employees should be paralegals or support staff of the certificate holder. Each designated employee must be either an employee of the holder’s organization or an employee of a contractor of the holder. The PKI certificate holder and the designated employees may use the holder’s PKI certificate concurrently. For example, a registered patent practitioner may file a patent application electronically via EFS-Web using his or her PKI certificate at the same time as one of the practitioner’s paralegals files a follow-on document
in another application electronically via EFS-Web, and a second paralegal of the practitioner retrieves an e-Office action via Private PAIR, using the practitioner’s PKI certificate under the direction and control of the practitioner.
The PKI Subscriber Agreement permits a holder of a PKI certificate to designate more than one employee to use the PKI certificate under the direction and control of the holder in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web. Any revised PKI Subscriber Agreement will apply to new PKI certificate holders and current PKI certificate holders that continue to use their PKI certificates (includes any PKI certificate usage by their designated employees).
A practitioner who is a PKI certificate holder, or the designated employee acting under the direction and control of the practitioner, may file documents signed by either the practitioner or another practitioner via EFS-Web, in compliance with the PKI Subscriber Agreement. Filing of a document that is unauthorized to be filed via EFS-Web (e.g., a protest under 37 CFR 1.291) is inconsistent with the Subscriber Agreement and the rules and policies of the USPTO. Thus, the certificate holder, and designated employee acting under the direction and control of the certificate holder, must make sure that the document being submitted is authorized to be filed via EFS-Web, regardless of whether the document is signed by the practitioner exercising the direction and control or by another practitioner.
EFS-Web also permits a legal assistant or paralegal to submit an application or a request for reexamination previously reviewed by a registered practitioner without the registered practitioner being present. See subsection E.2., below, for more information.
The following are Frequently Asked Questions (FAQs) regarding PKI certificates:
1. Can current PKI certificate holders designate more than one employee without applying for a new PKI certificate or filing a newly signed certificate action form (PTO-2042)?
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Yes, a new request for a PKI certificate is not needed. Continued use of a PKI certificate after the publication of the Subscriber Agreement and any modifications thereto will constitute agreement to the most current PKI Subscriber Agreement by the current PKI certificate holder. See section 9 of the PKI Subscriber Agreement. Therefore, a current PKI certificate holder may designate more than one employee to use the holder’s PKI certificate under the direction and control of the holder in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web.
2. What is the maximum number of employees that a PKI certificate holder may designate?
A PKI certificate holder may only designate a reasonable number of employees for which he or she can maintain proper control. The PKI certificate holder is responsible for the usage by the designated employees who can only use the PKI certificate under the direction and control of the holder in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web. The holder must take reasonable steps to ensure compliance with the requirements in the PKI Subscriber Agreement and the rules and policies of the USPTO. When a PKI certificate holder or one of the holder’s designated employees electronically transmits a submission to the USPTO via EFS Web using the holder’s PKI certificate, the PKI certificate holder is presenting the information in the submission to the USPTO and making the certification under 37 CFR 11.18(b). Furthermore, the PKI certificate holder is not permitted to designate a person who is not an employee as defined above, and designated employees are not permitted to share the certificate with anyone else (e.g., a designated employee cannot designate another employee).
3. Can a PKI certificate holder designate employees of more than one contractor?
Yes, a PKI certificate holder may designate employees of more than one contractor as long as the PKI certificate holder maintains control of the PKI certificate usage and can ensure that the employees of the contractors are using the PKI certificate in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web.
4. Can multiple PKI certificate holders designate the same employee to use their certificates?
Yes, multiple PKI certificate holders may designate the same employee if the PKI certificate holders and the designated employee take reasonable steps to ensure that the designated employee uses the proper PKI certificate for each task in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web. For example, if Holder Smith asked the designated employee to electronically submit a patent application via EFS-Web, the designated employee must use the PKI certificate of Holder Smith to submit the patent application, rather than a certificate of another holder who did not give the designated employee the direction to file the patent application.
5. Can a PKI certificate holder designate an employee that is not located in the same location?
Yes, a PKI certificate holder may designate an employee that is not located in the same location as long as the designated employee uses the PKI certificate under the direction and control of the holder in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web
6. What should a PKI certificate holder do if one of his or her designated employees is leaving the holder’s organization or the contractor’s organization?
The PKI certificate holder must take reasonable steps to ensure that the employee does not continue to use the PKI certificate when the employee leaves the holder’s organization or the contractor’s organization or when the contractor is no longer a contractor to the holder.
7. Can an inventor use his or her PKI certificate to file an application or document for another person or retrieve information regarding another person’s application?
No, an inventor cannot use (or permit someone else to use) his or her PKI certificate to file an application or document for another person, or retrieve information (e.g., an e-Office action or the status) regarding another person’s application. An inventor may use his or her PKI certificate to file his or her application, or follow-on documents in his or her application.
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8. Can a PKI certificate holder designate a company that offers paralegal services to use the PKI certificate?
No, a PKI certificate holder cannot designate a company. A PKI certificate holder may only designate more than one employee of a contractor (or the organization of the holder) to use his or her certificate under the holder’s direction and control in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web.
9. Can a PKI certificate holder designate an invention promotion company or an invention promoter to use the PKI certificate?
No, a PKI certificate holder is not permitted to designate an invention promotion company or an invention promoter to use the PKI certificate. A PKI certificate holder may only designate more than one employee of a contractor (or the organization of the holder) to use his or her certificate under the holder’s direction and control in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web. The designated employees should be paralegals or support staff of the holder’s organization (or a contractor’s organization). A PKI certificate holder must take reasonable steps to ensure that the PKI certificate is not being used in connection with the unauthorized practice before the USPTO in patent matters. See section 3 of the PKI Subscriber Agreement.
10. Can a registered patent practitioner who is a PKI certificate holder designate his or her client or a “foreign associate” (e.g., an attorney in another law firm) to use the PKI certificate?
No, a PKI certificate holder cannot designate his or her client, and cannot designate a “foreign associate” (e.g., an attorney in another law firm) who is not an employee of the certificate holder’s organization and is not an employee of a contractor. A PKI certificate holder may only designate more than one employee of a contractor (or the organization of the holder) to use his or her certificate under the holder’s direction and control in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web. The designated employees should be paralegals or support staff of the certificate holder. Furthermore, if the “foreign
associate” is located outside of the United States, it would be difficult for the holder to maintain control of the PKI certificate usage and ensure compliance with the rules and policies of the USPTO by a person located outside of the United States. In addition, accessing an application before the applicant has received a foreign filing license by a person located outside of the United States, or by a foreign national inside the United States, constitutes an export. The holder cannot permit the use of the PKI certificate in a manner that would violate or circumvent the Export Administration Regulations. See section 6 of the PKI Subscriber Agreement for more information.
11. Can a PKI certificate holder or a designated employee file third party papers such as a protest via EFS-Web using the PKI certificate?
The EFS-Web Legal Framework specifically prohibits filing via EFS-Web most third party papers as well as protests in patent applications. See subsection B.2., above. Circumventing established rules and procedures would be a violation of the Legal Framework for EFS-Web and the PKI Subscriber Agreement. Such violation may cause the USPTO to revoke the PKI certificate and/or refer the PKI certificate holder to the Office of Enrollment and Discipline for appropriate action. Therefore, PKI certificate holders should take reasonable steps to ensure that their designated employees do not improperly file third party papers and protests via EFS-Web.
Any third party papers such as protests under 37 CFR 1.291, citation of prior art in patent files under 37 CFR 1.501 or any petition, cannot be filed via EFS-Web unless specifically authorized by the EFS Legal Framework and/or provided for via dedicated EFS-Web interface (e.g., Third Party Preissuance Submissions under 37 CFR 1.290). See subsection B.1., above.
12. Can a designated employee continue to use the PKI certificate of a deceased holder?
No, all of the designated employees must stop using the PKI certificate upon the death of the holder because designated employees only have the authority to use the PKI certificate under the direction and control of the holder. The USPTO will revoke the PKI certificate once the USPTO becomes aware that the holder is deceased.
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13. Can a PKI certificate holder or his or her designated employees continue to use the PKI certificate after the holder is suspended from practice before the USPTO?
No, the PKI certificate holder and all of his or her designated employees must stop using the PKI certificate once the holder is suspended from practice before the USPTO. The USPTO will revoke the PKI certificate once the appropriate official in the USPTO becomes aware of the suspension.
2. Authorized Assistants of the Digital Certificate Holder
A PKI digital certificate holder is permitted to designate more than one employee of the holder’s organization (or a contractor’s organization), under the PKI Subscriber Agreement and certificate action form. The designated employee under the direction and control of the digital certificate holder may use the certificate holder’s certificate to submit documents through EFS-Web in compliance with the PKI Subscriber Agreement and the rules and policies of the USPTO.
The documents submitted through EFS-Web must be signed in accordance with 37 CFR 1.4, 1.33(b), and 11.18. If the designated employee is an assistant who is not an authorized party to sign the documents, the designated employee is not responsible for the contents of the documents submitted. Instead, the person who signs the documents (e.g., the inventor or a registered practitioner who is representing the inventor) is responsible for the contents. For example, the documents may be electronically signed or ink signed by the applicant or attorney of record. The assistant (i.e., designated employee) who serves the ministerial function of pickup and delivery of documents may submit the signed documents electronically via EFS-Web under the direction and control of the certificate holder. (Ink signed documents can be electronically scanned and then e-filed.) This employee may also view and retrieve documents from Private PAIR under the direction and control of the certificate holder in compliance with the PKI Subscriber Agreement.
It also should be noted that the assistant could pay the fees associated with the submission in the EFS-Web process. This is comparable to the paper
practice in which law firms designate individuals to pay fees.
F. Signature Policy
Signatures included in image attachments submitted via EFS-Web are governed by the requirements of 37 CFR 1.4(d)(3).
If the signer is submitting an application through EFS-Web as PDF files, he or she may apply either a handwritten signature in compliance with 37 CFR 1.4(d)(1) or an S-signature in compliance with 37 CFR 1.4(d)(2) before scanning the document or converting it to a PDF file. Alternatively, correspondence submitted through EFS-Web may be signed by a graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1) or a graphic representation of an S-signature as provided for 37 CFR 1.4(d)(2). See 37 CFR 1.4(d)(3). Any follow-on documents, such as responding to a Notice to File Missing Parts of Nonprovisional Application or an amendment filed in an application, must also be signed in accordance with applicable requirements. See 37 CFR 1.33(b). Even though a new patent application is entitled to a filing date if it complies with all the statutory requirements set forth in 35 U.S.C. 111(a) or (b), it is noted that when filing a new application by EFS-Web, a signed transmittal form or a signed application data sheet (ADS) is recommended for identification purposes, and any nonpublication request and certification that accompany the application must be signed.. The correspondence address must be set forth in either an application data sheet or clearly set forth in another paper submitted with the application, which must be signed. See 37 CFR 1.33(a).
The presentation to the USPTO (whether by signing, filing, submitting, or later advocating) of any document constitutes a certification under 37 CFR 11.18(b). See 37 CFR 1.4(d)(4).
G. Submission of Pre-Grant (Eighteen-Month) Publication Requests Via EFS-Web
EFS-Web enables users to electronically submit pre-grant publication requests for amended publication, redacted publication, early publication,
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voluntary publication, or republication under 37 CFR 1.215, 1.217, 1.219, and 1.221(a) via EFS-Web. When filing pre-grant publication requests via EFS-Web, the appropriate form-fillable application data sheet (PTO/AIA/14 or PTO/SB/14) is required to be used for fulfilling the bibliographic data requirements. An electronic submission for voluntary publication, amended publication, republication (37 CFR 1.221(a)) or redacted publication must be submitted as a “Pre-Grant Publication” by selecting the “Pre-Grant Publication” radio button on the EFS-Web data collection screen. It is not sufficient for a user to submit a document via EFS-Web requesting amended publication, redacted publication, early publication, voluntary publication, or republication without also selecting the “Pre-Grant Publication” radio button on the EFS-Web data collection screen.
While the Office may publish certain amendments in the Pre-Grant Publication, to be entitled to have the patent application publication be based upon a copy of the application (specification, drawings, and the application data sheet and/or the inventor’s oath or declaration) as amended, applicant must supply such a copy via EFS-Web as set forth above. See 37 CFR 1.215(c).
H. Submission of Supplemental Examination Requests via EFS-Web
Patent owners may submit a request for supplemental examination via the electronic filing system (EFS-Web). When filing a new request for supplemental examination, the patent owner should s e l e c t t h e fi l i n g o p t i o n “ N ew application/proceeding”, and then select “Supplemental Examination.” Any paper(s) that are to be filed in an existing supplemental examination proceeding, and any paper(s) that are to be filed in a reexamination proceeding ordered as a result of a supplemental examination proceeding, may be filed by selecting “Existing application/patent/proceeding” (e.g., a proceeding that has already been assigned a control number), “Documents/Fees for an existing application/proceeding”, and then entering the assigned control number and confirmation number for the proceeding.
I. Filing of Third-party Preissuance Submissions and Citation of Prior Art and Written Statements in Patent Files Filed via EFS-Web
Registered and unregistered eFilers may submit a third-party preissuance submission in any non-provisional utility, design, or plant application, including any continuing application. The application may be pending or abandoned and need not be published. To submit a third-party preissuance submission, the radio button “Third-Party Preissuance Submission under 37 CFR 1.290” must be selected. To submit a Third-Party Preissuance Submission, sign on to EFS-Web, select the “Existing application/patent” radio button. The Web screen will expand to display additional options. Select the radio button located next to “Third-Party Preissuance Submission under 37 CFR 1.290” and enter the Application Number and Confirmation Number. The Confirmation Number can be obtained by viewing the application in the Public Patent Application Information Retrieval (PAIR) System.
Registered and unregistered eFilers may submit a prior art and/or written statement submission into a patent file under 37 CFR 1.501, at any time during the period of enforceability of the patent. A submission into a patent file under 37 CFR 1.501 cannot be filed via EFS-Web in design or plant patents. To submit a 37 CFR 1.501 submission, select the radio button “Prior Art Submission into Patent File under 37 CFR 1.501” and enter the Application Number and Patent Number.
J. Submission of Interim Copies of Foreign Priority Documents via EFS-Web
Interim copies of foreign priority documents as provided for in 37 CFR 1.55(j) may be submitted via EFS-Web in (i) applications filed under 35 U.S.C. 111(a), except for plant patent applications and design applications, and (ii) national stage applications under 35 U.S.C. 371. See 37 CFR 1.55 for details regarding claims for foreign priority, including the timing for submitting interim copies. See MPEP § 215 et seq.
The following are Frequently Asked Questions (FAQs) regarding interim copies of foreign priority applications:
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1. If an applicant submits an interim copy of a foreign priority application, will the applicant still need to provide a certified copy of the foreign priority document? How will an interim copy submission be reflected in the USPTO’s records?
Yes. If an applicant files an interim copy of a foreign priority application, the applicant must provide a certified copy of the foreign priority document before patent grant in order to perfect the priority claim. An interim copy of a foreign priority application will be entered into the file wrapper of the application in which it was filed and labeled as “Interim copy of Foreign Priority Document.”
2. Are there any special instructions for filing an interim copy of the foreign priority application?
Yes. Main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, Sequence Listing or Computer Program Listings, along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF file via EFS-Web (or as a single paper document). The PDF file will be stored in the Image File Wrapper of the application, and applicants must select the document description “Interim copy of Foreign Priority Application” to index this document when filing online.
Application parts that were filed in a foreign patent office only as plain text computer files (e.g. TXT file), such as a Sequence Listing, lengthy Tables(s), or Computer Program Listing appendix, may be filed as a TXT file via EFS-Web (or on compact disc). When filing online via EFS-Web, applicants must select the document description “Interim copy of Foreign Priority (text file)” to index a plain text file part of the application. Please note that EFS-Web will not perform preliminary validation on an interim sequence listing text file, and that a sequence listing in an interim copy of a foreign priority document over 25 MB must be split into multiple files under the 25 MB upload limit . If a TXT file is filed on compact disc, the compact disc must be labeled as “Text File of Interim Copy of Foreign Priority Application” along with (1) the country code and application number of the foreign priority document, (2) at least two pieces of identifying information for the application (e.g., application number, docket number, title, etc.) in which the interim copy of the foreign application
was filed, and (3) if multiple compact discs are submitted, a label indicating their order (e.g. “1 of X”).
The file name of each TXT file must begin with the country code and application number of the foreign priority application of which it is a part (any punctuation or space in the application number must either be omitted or replaced with a dash “-“ or underscore ”_” character); e.g. “EP111838637_SequenceListing.txt” or “EP_11183863_7_Table 2”. Where an original TXT file must be split into multiple parts, the file name for each part should indicate the order; for example, EP111838637_SeqList_part1of2.txt and EP111838637_SeqList_part2of2.txt.
K. Submission of Photographs and Drawings via EFS-Web
The USPTO prefers black and white line drawings as prescribed in 37 CFR 1.84(a)(1) when applicants are required to submit drawings in patent applications. Pursuant to 37 CFR 1.84(a)(2), color drawings are permitted in design applications filed under 35 U.S.C. chapter 16. As stated in 37 CFR 1.84(a)(2) color drawings are not ordinarily permitted in utility patent applications, and as stated in 37 CFR 1.84(b), photographs are not ordinarily permitted in utility or design patent applications, but the USPTO will accept photographs in utility or design patent applications, or color drawings in utility patent applications, if they are the only practicable medium for illustrating the claimed subject matter. The photographs and color drawings submitted in utility or design patent applications must be of sufficient quality such that all details in the photographs and drawings are reproducible in black and white in the printed patent.
Drawings submitted in PCT international applications are required to comply with PCT Rule 11.13, which does not permit color drawings. Furthermore, there is no provision for photographs in PCT international applications. Nevertheless, black and white photographs will be accepted where it is impossible to present in a drawing what is to be shown (e.g., crystalline structures). Color photographs are not permitted in PCT international applications.
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Color drawings and photographs (in black and white or in color) may be submitted in international design applications as provided under Section 401 of the Administrative Instructions for the Application of the Hague Agreement. See subsection N for additional information concerning international design applications.
The USPTO may object to the drawings and photographs, and require corrections or deletions if they do not comply with 37 CFR 1.84 or PCT Rule 11.13. Additionally, since color drawings are not permitted in PCT international applications, color drawings and color photographs filed in a national stage application under 35 U.S.C. 371 will be treated as an amendment and will be objected to if they introduce new matter.
1. Types of Photographs and Drawings Permitted to be Filed via EFS-Web
Black and white line drawings may be submitted via EFS-Web in the types of patent applications and proceedings listed in subsection B.1., above. However, photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings may be submitted via EFS-Web in only the following types of applications and proceedings:
(1) Nonprovisional design patent applications, including reissue design patent applications;
(2) Provisional applications under 35 U.S.C. 111(b);
(3) Nonprovisional utility patent applications under 35 U.S.C. 111(a), including reissue utility patent applications;
(4) U.S. national stage applications under 35 U.S.C. 371, including reissue utility patent applications;
(5) International design applications;
(6) Reexamination proceedings for utility or design patents; and
(7) Supplemental examination proceedings under 35 U.S.C. 257.
Only black and white photographs, and black and white line drawings, may be submitted via EFS-Web in PCT international applications.
2. Document Description for Photograph and Drawings
Users must select the correct document description when submitting photographs and drawings via EFS-Web. Selecting an incorrect document description may cause the photographs and drawings to be processed in a quality that is not sufficient for examination and publication. Applicant must select:
(1) “Drawings – only black and white line drawings” (document code “DRW”) for the following:
(a) Black and white line drawings in:
(i) provisional applications under 35 U.S.C. 111(b);
(ii) nonprovisional utility patent applications under 35 U.S.C. 111(a), including reissue utility patent applications;
(iii) PCT international applications and national stage applications under 35 U.S.C. 371; and
(iv) reexamination proceedings for utility patents.
These drawings will be converted into TIFF images and stored in IFW.
(b) Black and white line drawings in design applications, including reissue design patent applications, international design applications, and reexamination proceedings for design patents. These drawings will be stored in SCORE, and a black and white copy will be stored in IFW along with a SCORE placeholder sheet.
(2) “Drawings – other than black and white line drawings” (document code “DRW.NONBW”) for the following:
(a) Photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings in:
(i) provisional applications under 35 U.S.C. 111(b);
(ii) nonprovisional utility and design patent applications under 35 U.S.C. 111(a), including reissue utility and design patent applications;
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(iii) national stage applications under 35 U.S.C. 371;
(iv) international design applications;
(v) reexamination proceedings for utility patents and design patents; and
(vi) supplemental examination proceedings.
These drawings will be stored in SCORE, and a black and white copy will be stored in IFW along with a SCORE placeholder sheet.
(b) Black and white photographs, and grayscale drawings, in PCT international applications. These drawings will be stored in SCORE, and a black and white copy will be stored in IFW along with a SCORE placeholder sheet.
3. Additional Requirements
For color drawings in utility patent applications, a petition filed under 37 CFR 1.84(a)(2) explaining why the color drawings are necessary is required. See MPEP § 608.02. Pursuant to 37 CFR 1.84(a)(2)(ii), only one set of color drawings is necessary when filing via EFS-Web.
EFS-Web supports the use of black and white, color, or grayscale images within the PDF document. However, grayscale or color images filed as “drawings - other than black and white line drawings” in a utility patent application will be converted to black and white images when stored into IFW. The quality of black and white images may be degraded. To obtain sufficient quality so that all details in the images are reproducible in black and white in the eighteen-month publication and the printed patent, images should be scanned at a minimum resolution of 300 DPI. Furthermore, PAIR is only capable of displaying portrait orientation. Users should not submit landscape oriented drawings via EFS-Web because PAIR will automatically convert the image to portrait, which may cause the images to be distorted during viewing.
For international design applications, EFS-Web supports the use of black and white, color, or grayscale images within a JPEG document. To obtain sufficient image quality for purposes of WIPO publication of the international application and any
subsequent U.S. patent that may issue thereon, image resolution should be between 250x250 DPI to 300x300 DPI. In addition, the images should have at least a one pixel border, and preferably between 1-20 pixel. See subsection N for further information concerning reproductions in international design applications.
L. Text Files and File Limits
1. Biotechnology Sequence Listings, Large Tables, or Computer Program Listing Appendices Submitted as Text Files via EFS-Web
Biotechnology sequence listings, large tables, and computer program listing appendices may be submitted as ASCII text files with a “.txt” extension (e.g., “seqlist.txt”) for applications filed under 35 U.S.C. 111, national stage applications under 35 U.S.C. 371, reexamination proceedings, and supplemental examination proceedings. The compact disc practice of 37 CFR 1.52(e) and 1.821 et seq. remains as a filing option. The filing of international applications via EFS-Web is discussed in subsection M., below.
Users may submit the following document types, as specified in 37 CFR 1.52(e), as ASCII text files via EFS-Web instead of on compact disc, provided the specification contains a statement in a separate paragraph that incorporates by reference the material in the ASCII text file identifying the name of the ASCII text file, the date of creation, and the size of the ASCII text file in bytes:
(1) A computer program listing (see 37 CFR 1.96);
(2) A sequence listing (submitted under 37 CFR 1.821); or
(3) Any individual table (see 37 CFR 1.58) if the table is more than 50 pages in length, or if the total number of pages of all of the tables in an application exceeds 100 pages in length, wherein a table page is a page printed on paper in conformance with 37 CFR 1.52(b) and 1.58(c).
The requirements of 37 CFR 1.52(e)(3)-(6) for documents submitted on compact disc are not applicable to computer program listings, sequence
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listings, and tables submitted as ASCII text files via EFS-Web. However, each text file must be in compliance with ASCII and have a file name with a “.txt” extension. Further, the specification must contain an incorporation-by-reference of the material in the ASCII text file in a separate paragraph identifying the name of the ASCII text file, the date of creation, and the size of the ASCII text file in bytes similar to the requirements of 37 CFR 1.52(e)(5) for compact discs. See 37 CFR 1.77(b)(5).
It is recommended that a sequence listing be submitted in an ASCII text file via EFS-Web rather than in a PDF file. If a sequence listing ASCII text file submitted via EFS-Web on the application filing date complies with the requirements of 37 CFR 1.824(a)(2)-(6) and (b), and applicant has not filed a sequence listing in a PDF file, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the computer readable form (CRF) required by 37 CFR 1.821(e). Thus, the following are not required and should not be submitted: (1) a second copy of the sequence listing in a PDF file; (2) a statement under 37 CFR 1.821(f) (indicating that the paper copy and CRF copy of the sequence listing are identican( � and (3) a request to use a compliant computer readable “Sequence Listing” that is already on file for another application pursuant to 37 CFR 1.821(e). If such a request is filed, the USPTO will not carry out the request but will use the sequence listing submitted in an ASCII text file with the application via EFS-Web. Checker software that may be used to check a sequence listing for compliance with the requirements of 37 CFR 1.824 is available on the USPTO website at www.uspto.gov/patents-getting-started/patent-basics/ types-patent-applications/utility-patent/checker- version-446. The User Notes on the Checker website should be consulted for an explanation of errors that are not indicated, and content that is not verified, by the Checker software.
If a user submits a sequence listing (under 37 CFR 1.821(c) and (e)) as an ASCII text file via EFS-Web in response to a requirement under 37 CFR 1.821(g) or (h), the sequence listing text file must be accompanied by a statement that the submission does not include any new matter which goes beyond the disclosure of the application as filed. In addition, if a user submits an amendment to, or a replacement
of, a sequence listing (under 37 CFR 1.821(c) and (e)) as an ASCII text file via EFS-Web, the sequence listing text file must be accompanied by: (1) a statement that the submission does not include any new matter, and (2) a statement that indicates support for the amendment in the application, as filed. See 37 CFR 1.825.
Submission of the sequence listing in a PDF file on the application filing date is not recommended. Applicant must still provide the CRF required by 37 CFR 1.821(e), and the sequence listing in the PDF file will not be excluded when determining the application size fee. The USPTO prefers the submission of a sequence listing in an ASCII text file via EFS-Web on the application filing date because as stated above, if applicant has not filed a second copy of the sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the CRF required by 37 CFR 1.821(e). Any sequence listing submitted in PDF format (or on paper) on the application filing date is treated as the paper copy required by 37 CFR 1.821(c). If applicant submits a sequence listing in both a PDF file and an ASCII text file via EFS-Web on the application filing date, a statement that the sequence listing content of the PDF copy and the ASCII text file copy are identical is required. In situations where applicant files the sequence listing in PDF format and requests the use of the CRF of another application under 37 CFR 1.821(e), applicant must submit a letter and request in compliance with 37 CFR 1.821(e) and a statement that the PDF copy filed in the new application is identical to the CRF filed in the other application.
2. Application Size Fee
Any sequence listing submitted as an ASCII text file via EFS-Web that is otherwise in compliance with 37 CFR 1.52(e) and 1.824(a)(2)-(6) and (b), and any computer program listing submitted as an ASCII text file via EFS-Web that is otherwise in compliance with 37 CFR 1.52(e) and 1.96, will be excluded when determining the application size fee required by 37 CFR 1.16(s) or 1.492(j) as per 37 CFR 1.52(f)(1).
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Regarding a table submitted as an ASCII text file via EFS-Web that is part of the specification or drawings, each three kilobytes of content submitted will be counted as a sheet of paper for purposes of determining the application size fee required by 37 CFR 1.16(s) or 1.492(j). Each table should be submitted as a separate text file. Further, the file name for each table should indicate which table is contained therein.
3. Size Limit for Text Files
One hundred (100) megabytes is the size limit for sequence listing text files submitted via EFS-Web. If a user wishes to submit an electronic copy of a sequence listing text file that exceeds 100 megabytes, it is recommended that the user file the application without the sequence listing using EFS-Web to obtain the application number and confirmation number, and then file the sequence listing on compact disc in accordance with 37 CFR 1.52(e) on
the same day by using Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or hand delivery, in order to secure the same filing date for all parts of the application. Alternatively, a user may submit the application on paper and include the electronic copy of the sequence listing text file on compact disc in accordance with 37 CFR 1.52(e). Sequence listing text files may not be partitioned into multiple files for filing via EFS-Web as the EFS-Web system is not currently capable of handling such submissions. If the sequence listing is filed on a compact disc, the sequence listing must be a single document, but the document may be split using software designed to divide a file, that is too large to fit on a single compact disc, into multiple concatenated files. If the user breaks up a sequence listing so that it may be submitted on multiple compact discs, the compact discs must be labeled to indicate their order (e.g., “1 of X”, “2 of X”).
JPEG image files submitted via EFS-Web in international design applications, and PDF image files submitted in international design applications using the “Attach Reproductions” section of the “Attach Documents” EFS-Web screen, are limited to a file size of two megabytes. See subsection N for additional information concerning international design applications.
For all other file types, 25 megabytes is the size limit. If a user wishes to submit an electronic copy of a computer program listing or table that is larger than 25 megabytes, it is recommended that the electronic copy be submitted on compact disc via
Priority Mail Express® from the USPS in accordance with 37 CFR 1.10 on the date of the corresponding EFS-Web filing in accordance with 37 CFR 1.52(e) if the user wishes the electronic copy to be considered to be part of the application as filed. Alternatively, the user may submit the application in paper and include the electronic copies on compact disc in accordance with 37 CFR 1.52(e). Another alternative would be for the user to break up a computer program listing or table file that is larger than 25 megabytes into multiple files that are no larger than 25 megabytes each and submit those smaller files via EFS-Web. If the user chooses to break up a large computer program listing or table file so that it may be submitted electronically, the file names must indicate their order ( e.g., “1 of X”, “2 of X”).
4. Limit on the Number of Electronic files in a Single EFS-Web Submission
Sixty (60) electronic files is the file number limit per submission, as EFS-Web is not currently capable of accepting more than 60 electronic files in any one submission (subject to certain exceptions for international design applications set forth below). Accordingly, if an application file is comprised of more than 60 electronic files, it is recommended that the user submit 60 or fewer files in an initial filing via EFS-Web at which time the application will be assigned an application number. Note that regarding the 60 electronic file limit per submission, an applicant may upload and validate in sets of up to 20 files each, with a limit of three sets of 20 files. If applicant chooses to divide a file into multiple parts using the multi-doc feature, each part is counted as one file. Then the user may submit any additional electronic files as follow-on documents later on the same day as the initial filing. This will allow all of the electronic files making up the application to receive the same filing date.
For international design applications, the 60 electronic files limit per submission excludes electronic files of reproductions that are attached via
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the “Attach Reproductions” section of the “Attach Documents” screen in EFS-Web (available for submissions through the USPTO as an office of indirect filing prior to transmittal of the application to the International Bureau) or attached via the “Attach JPEG Reproductions” section of the “Attach Documents” screen in EFS-Web (available after transmittal of an international design application to the International Bureau or, where the USPTO was not an office of indirect filing, after receipt of the WIPO publication of an international design application designating the United States). The “Attach Reproductions” section allows up to 5000 (up to 100 designs with 50 views per design) additional single-page PDF and JPEG image files to be uploaded in one submission. The “Attach JPEG Reproductions” section allows up to 50 additional JPEG image files to be uploaded in one submission. See subsection N for further information concerning international design applications.
5. Complex Work Units
Under the Complex Work Unit Pilot Program, complex work units (such as chemical structure drawings, mathematical formulae, three-dimensional protein crystalline structure data and table data) may be submitted as ASCII text files via EFS-Web for applications filed under 35 U.S.C. 111, national stage submissions under 35 U.S.C. 371, reexamination proceedings, and supplemental examination proceedings. Complex work units cannot be submitted as ASCII text files in PCT international applications. More information is available on the USPTO website at www.uspto.gov/patent/ initiatives/complex-work-unit-pilot-program.
M. New PCT International Applications, New National Stage Submissions, and Associated Documents
The term “PCT international application” as used in this subsection refers to an international application filed under the PCT. The term “national stage submission” as used in this subsection refers to an international application where a submission has been made to enter the U.S. national stage under 35 U.S.C. 371.
1. New PCT International Applications Filed under the PCT with the United States Receiving Office
EFS-Web enables users to electronically file PCT international applications with the United States Receiving Office (RO/US). The required page size for PCT international applications filed via EFS-Web in PDF format is A4 (29.7 cm x 21 cm). See PCT Rule 11.5. See subsection M.7., below, for more information about follow-on submissions during the international phase.
a. The Request
EFS-Web permits users to submit PCT-EASY.zip files created by PCT-SAFE when operated in the PCT-EASY mode. On the Contents screen in PCT-SAFE, both PCT-EASY and EFS-Web should be marked. A PCT-EASY.zip file will contain the PCT Request and a fee calculation sheet in PDF format, which are converted to TIFF images and loaded into the image file wrapper by the USPTO. PCT-SAFE permits users to create and electronically sign using an S-signature the PCT Request, including the Declaration of Inventorship, for the purposes of filing via EFS-Web with the United States Receiving Office. PCT-SAFE when operated in the PCT-EASY mode creates a .zip file containing a validated PCT Request which will entitle the applicant to a reduction of the international filing fee when included in a new PCT international application filed with the RO/US. Alternatively, if the applicant chooses not to use PCT-SAFE to create the PCT Request and fee calculation sheet, the applicant may use Form PCT/RO/101 (or equivalent) for the Request and attach it to the EFS-Web submission as a PDF document.
b. Other Documents
All other documents including application parts (e.g., description, claims, drawings and abstract) and accompanying items MUST be separately prepared as PDF documents and attached to the EFS-Web submission. See subsection M.3., below, for more information on sequence listings.
More information regarding filing PCT international applications is available on the USPTO website
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(www.uspto.gov/sites/default/files/patents/process/ file/efs/guidance/indexing-pct-new-appl.pdf).
2. Specific Requirements for Drawings or Photographs
a. PCT International Application
Drawings submitted in PCT international applications are required to comply with PCT Rule 11.13, which does not permit color drawings. Furthermore, there is no provision for photographs. Nevertheless, black and white photographs will be accepted where it is impossible to represent in a drawing what is to be shown (e.g., crystalline structures). Color photographs are not permitted in PCT international applications. Also see subsections B.2 and K.1, above.
The USPTO may object to the drawings and photographs, and require corrections or deletions if they do not comply with PCT Rule 11.13.
b. National Stage Submission:
Since color drawings and color photographs are not permitted in PCT international applications, color drawings and color photographs filed in a national stage application will be treated as an amendment and will be objected to if they introduce new matter. See subsection K.1., above, regarding a petition to accept color drawings.
3. Specific Requirements Pertaining to New National Stage Submissions, Including the Payment of Filing Fee
a. Online Payment Option
The basic national fee is required in order for an international application to enter the national stage under 35 U.S.C. 371. See 37 CFR 1.495. Users are permitted to submit the basic national fee with the national stage submission under 35 U.S.C. 371 via EFS-Web using online payment screens that interface with the Revenue Accounting and Management (RAM) system.
b. Alternative Payment Methods
If the RAM system is unavailable, EFS-Web will not permit users to make payment using the interactive payment screens. The applicant may pay the necessary national stage entry fee by either including a written authorization to charge the desired fee(s) together with the national stage submission under 35 U.S.C. 371, or sending the
payment via Priority Mail Express® from the USPS in accordance with 37 CFR 1.10 on the same date that the national stage submission is electronically filed. However, applicants may not file the basic national fee necessary to enter the national stage via facsimile transmission. See 37 CFR 1.6(d)(3) and 1.8(a)(2)(i)(F).
For more information on fees associated with national stage submissions under 35 U.S.C. 371, see MPEP § 1893.01(c).
4. New National Stage Submissions to Enter the U.S. National Stage Under 35 U.S.C. 371
a. Validation by PALM
New National Stage Submission: For any new national stage submissions under 35 U.S.C. 371 filed via EFS-Web, the system automatically checks the PatentApplication Locating and Monitoring (PALM) system to verify that no previous national stage submission has been made for the particular PCT international application referenced in the new national stage submission. Filers should confirm that the correct PCT international application number is entered on the EFS-Web screen to insure that the correct PCT international application is initialized as a national stage submission. If the PALM system finds a previous national stage submission has been made, the user will be given a warning message and an opportunity to verify, and correct if necessary, the referenced PCT international application number and filing date. If the PALM system is unavailable, EFS Web cannot complete the PALM verification, and thus EFS-Web will not permit a new national stage submission under 35 U.S.C. 371 to be filed. Therefore, if PALM is unavailable, applicants may send a new national stage submission by hand
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delivery, or Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, to timely submit documents and fee(s) for national stage entry. However, applicants may not file national stage submissions under 35 U.S.C. 371 and the basic national fee necessary to enter the national stage via facsimile transmission. See 37 CFR 1.6(d)(3) and 1.8(a)(2)(i)(F).
b. Transmittal Letter
It is recommended that applicants continue to use the Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371 (Form PTO-1390) when electronically filing documents for entry into the U.S. national stage under 35 U.S.C. 371. The PTO-1390 Form includes useful information that is not otherwise collected by EFS-Web at this time. Filers should confirm that the correct PCT international application number is entered on the EFS-Web screen to insure that the correct PCT international application is initialized as a national stage submission.
c. Application Data Sheet
An application data sheet is recommended for new national stage submissions.
d. Initial Processing
If a timely submission to enter the national stage of an international application is compliant with the conditions of 35 U.S.C. 371 and other applicable requirements, Form PCT/DO/EO/903 indicating acceptance of the application as a national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt.
5. Specific Requirements for Nucleotide or Amino Acid Sequence Listings in PCT International Applications
a. Sequence Listing
Under PCT Rule 5.2(a), the sequence listing must always be presented as a separate part of the description. When filing a PCT international
application using EFS-Web, the sequence listing part of the description may be submitted either as a single ASCII text file with a “.txt” extension (e.g., “seqlist.txt”) or as a PDF file. Note that 100 megabytes is the size limit for submitting a sequence listing text file via EFS-Web. If the sequence listing is submitted as an ASCII text file, applicant need not and should not submit any additional copies. The single ASCII text file is preferred because the ASCII text file will serve both as the sequence listing part of the description under PCT Rule 5.2 and the electronic form under PCT Rule 13 ter.1(a) in the absence of a PDF sequence listing file. The check list of the PCT Request provided via EFS-Web together with the PCT international application must indicate that the sequence listing forms part of the international application. Furthermore, the statement as set forth in paragraph 4(v) of the AI Annex C (Administrative Instructions under the PCT, Annex C), that “the information recorded in electronic form furnished under Rule 13 ter is identical to the sequence listing as contained in the international application,” is not required. Also the sequence listing in an ASCII text file will not be taken into account when calculating the application sheet count, i.e., no excess sheet fees will be required for the sequence listing text file.
Submission of the sequence listing part of the description in a PDF file is not recommended because the applicant would also be required to supply a copy of the sequence listing in an ASCII text file for purposes of international search and/or international preliminary examination in accordance with paragraph 40 of AI Annex C. When a sequence listing is filed via EFS-Web in a new PCT international application in both a PDF file and an ASCII text file, the PDF copy of the sequence listing will be considered to form part of the application and the ASCII text file will be used for search purposes and will be transmitted to the International Bureau with the record copy. The pages of the PDF file that contain the sequence listing will be taken into account when calculating the application sheet count, i.e., excess sheet fee may be required for the PDF file.
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b. File Size and Quantity Limits
One hundred (100) megabytes is the size limit for sequence listing text files submitted via EFS-Web. Sequence listing text files must not be partitioned into multiple files for filing via EFS-Web as the EFS-Web electronic filing system is not currently capable of handling such submissions. For all other file types EFS-Web is currently not capable of accepting files that are larger than 25 megabytes. Additionally, a single EFS-Web submission may include no more than 60 electronic files. Note that regarding the 60 electronic file limit, an applicant may upload and validate in sets of up to 20 files each, with a limit of three sets of 20. If applicant chooses to divide a file into multiple parts using the multi-doc feature, each part is counted as one file. The need to submit unusually large sequence listings and/or numerous electronic files may prevent applicant from making a complete PCT international application filing in a single EFS-Web submission. Applicant may use EFS-Web to file part of the PCT international application and to obtain the PCT international application number and the confirmation number, and then file the remainder of the PCT international application on the same day as one or more follow-on submissions using EFS-Web, in order to secure the same filing date for all parts of the PCT international application. However, applicant is not permitted to file part of the PCT international application electronically via EFS-Web, and then file the remainder of the PCT international application on paper to secure a filing date of all parts of the PCT international application.
In the situation where applicant needs to file a sequence listing that is over one hundred (100) megabytes, applicant may use EFS-Web to file the PCT international application without the sequence listing to obtain the PCT international application number and the confirmation number, and then file the sequence listing on compact discs on the same
day by using Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or hand delivery, in order to secure the same filing date for all parts of the PCT international application. However,
Priority Mail Express® from the USPS and hand-carried submissions may not contain PDF files and must fully comply with the guidelines for filing
a sequence listing on electronic media. The check list of the PCT Request provided via EFS-Web together with the PCT international application must indicate that the sequence listing part of the description will be filed separately on physical data carrier(s), on the same day and in the form of an Annex C/ST.25 text file. The sequence listing must be a single document, but the document may be split using software designed to divide a file, that is too large to fit on a single compact disc, into multiple concatenated files. If the user breaks up a sequence listing into multiple concatenated files so that it may be submitted on multiple compact discs, the compact discs must be labeled to indicate their order (e.g., “1 of X”, “2 of X”).
c. Fee Determination for PCT International Applications Containing a Sequence Listing
The calculation of the international filing fee for a PCT international application, including a sequence listing, filed via EFS-Web is determined based on the type of sequence listing file. A sequence listing filed in an ASCII text file will not be included in the sheet count of the PCT international application. A sequence listing filed in a PDF file will be included in the sheet count of the PCT international application. Therefore, the sheet count for an EFS-Web filed PCT International application containing both a PDF file and a text file sequence listing will be calculated to include the number of sheets of the PDF sequence listing.
6. Limitations concerning computer program listings and tables related to a sequence listing in PCT international applications
a. Computer Program Listings
There is no provision for computer program listings in ASCII text file in PCT international applications.
b. Tables Related to a Sequence Listing
Tables related to a sequence listing must be an integral part of the description of the PCT international application, and must not be included in the sequence listing part or the drawing part. Such tables will be taken into account when calculating
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the application sheet count, and excess sheet fees may be required. When applicant submits tables related to a sequence listing in a PCT international application via EFS-Web, the tables must be in a PDF file. If applicant submits tables related to a sequence listing in a text file, such tables will not be accepted as part of the PCT international application. For more information, see Sequence Listings and Tables Related Thereto in International Applications Filed in the United States Receiving Office, 1344 Off. Gaz. Pat. Office 50 (July 7, 2009).
7. Follow-on Submissions for PCT International Applications
As noted above, a sequence listing in an ASCII text file, as well as additional PDF files, may be submitted in one or more follow-on submissions, via EFS-Web. Such follow-on submissions will form part of the PCT international application if filed on the same date on which the PCT international application was filed. Note that follow-on submissions of PDF files (including, but not limited to, PDF sequence listings) may change the number of pages in the PCT international application and therefore may affect the international filing fee. EFS-Web may also be used to submit a sequence listing in an ASCII text file after the international filing date in response to a requirement under 37 CFR 1.821(h) and PCT Rule 13 ter. Such sequence listing will not form part of the PCT international application as set forth in PCT Rule 13 ter.1(e).
8. Policy of Annex F of the PCT Administrative Instructions (AI Annex F)
EFS-Web employs a Web-based approach to document submission which is different from the AI Annex F “wrapped, bundled and signed package” approach. Thus EFS-Web does not meet the AI Annex F requirements. See Annex F of the PCT Administrative Instructions located at www.wipo.int/pct/en/texts/.
N. International Design Applications and Associated Documents
The term “international design application” as used in this subsection refers to an application for international registration of an industrial design filed
under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”). The term “Rule” as used in this subsection refers to the “Common Regulations Under the 1999 and the 1960 Act of the Hague Agreement”.
1. New international design applications filed through the USPTO as an office of indirect filing
EFS-Web enables registered and unregistered eFilers to electronically file new international design applications through the USPTO as an office of indirect filing. To submit an international design application through EFS-Web, users must select the radio button “International Design Application (Hague) for filing through the USPTO as an office of indirect filing” after selecting the radio button “New application/proceeding” on the main EFS-Web screen. The documents listed below should be included in new international design application submissions.
a. Official form (Form DM/1):
Applicants filing international design applications through the USPTO are required to present the international design application on the official form established by the International Bureau (i.e., Form DM/1, entitled “Application for International Registration”) or on any form having the same form and content as the official form. Form DM/1 is available on the website of the International Bureau at www.wipo.int/hague/en/forms/. The DM/1 form includes boxes for providing information concerning the applicant, applicant’s entitlement to file an international design application, the creator, product identification, designations of Contracting Parties, priority claim, description, and other relevant information.
eFilers should use the document description “App for Intl Registration (DM/1 or equiv)” for a DM/1 form (or equivalent) submitted via EFS-Web. For new international design application submissions, EFS-Web will check for the presence of the document description for the DM/1 form when upload and validation functions are performed and, if not present, will alert the user that the DM/1 form is not indicated as being attached. EFS-Web will not
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block submission of a new international design application based on the missing document description. If the DM/1 form document description is present, EFS-Web will prompt the user to verify that the DM/1 form indicates applicant’s entitlement to file the international design application through the USPTO as an office of indirect filing. The USPTO will not transmit an international design application to the International Bureau if applicant’s entitlement to file the application through the USPTO is not indicated in the submission.
b. Reproductions:
Reproductions of industrial designs are required in international design applications and may be submitted as drawings, photographs, or a combination thereof, and may be in black and white or in color. See Rule 9 and Part Four of the Administrative Instructions for the Application of the Hague Agreement. Reproductions may be submitted through EFS-Web as PDF or JPEG files as set forth below. Technical requirements regarding image files, such as resolution, minimum and maximum image size, border width, etc., are also set forth on the website of the International Bureau at www.wipo.int/hague/en/how_to/ file/prepare.html.
Reproductions may be submitted as single page PDF or JPEG files by attaching the file(s) using the “Attach Reproductions” section of the “Attach Documents” screen. Alternatively, applicants may attach reproductions as PDFs (including multi-page PDFs) using the “Attach Documents other than Reproductions” section of the “Attach Documents” screen. Attaching compliant reproductions via the “Attach Reproductions” section, rather than the “Attach Documents other than Reproductions” section, may help to avoid incurring additional per page publication fees that might otherwise be required by the International Bureau. Each image file attached through the “Attach Reproductions” section should contain only one view of the design. The “Attach Reproductions” section will prompt the user to assign a design and view number to each file attached under this section. The “Attach Reproductions” section allows up to 5000 (up to 100 designs with 50 views per design) additional single-page PDF and JPEG image files to be
uploaded in one submission. The “Attach JPEG Reproductions” section allows up to 50 additional JPEG image files to be uploaded in one submission.
In accordance with the technical requirements set forth by the International Bureau, EFS-Web will not permit submission of any PDF or JPEG file via the “Attach Reproductions” section that exceeds a file size of two megabytes. For JPEG submissions, EFS-Web will provide warnings where requirements pertaining to image resolution and minimum and maximum dimensions have not been satisfied; EFS-Web does not check color mode or border size for JPEG images. For PDF submissions via the “Attach Reproductions” section, EFS-Web will not permit submission of any PDF file that is more than one page. In addition, EFS-Web does not check color mode, border size, resolution, or maximum or minimum dimensions of the reproduction (other than certain minimum and maximum page size dimensions) for PDF images. It is the responsibility of applicants to ensure that reproductions satisfy all applicable requirements.
Users attaching reproductions under either the “Attach Reproductions” section or the “Attach Documents other than Reproductions” section should use the document description “drawings – only black and white line drawings” or “drawing – other than black and white line drawings”, as appropriate. EFS-Web will provide a warning to users about the possibility of incurring additional per page publication fees where reproductions are attached via the “Attach Documents other than Reproductions” section. EFS-Web will also provide a warning to users where a new international design application does not contain an indication that at least one reproduction is attached.
c. Annexes:
An international design application may be accompanied by annexes submitted for the purpose of complying with certain national law requirements that may be applicable to a designated Contracting Party, for example, the requirement for an inventor’s oath or declaration where the United States is designated. Annex forms specific to particular Contracting Parties are available on the website of the International Bureau at www.wipo.int/
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hague/en/forms/. Annexes should be attached to the EFS-Web submission using the document description “Annex(es) to the DM/1 or equivalent”.
More information regarding filing international design applications is available on the USPTO website at www.uspto.gov/patents-application- process/applying-online/efs-web-guidance-and-resources.
2. International design application fees required by or payable through the USPTO as an office of indirect filing
a. Transmittal fee:
International design applications filed through the USPTO as an office of indirect filing are subject to payment of a transmittal fee. See 37 CFR 1.1031(a). Users are permitted to submit the transmittal fee via EFS-Web using online payment screens that interface with the Revenue Accounting and Management (RAM) system. The USPTO will not transmit the international design application to the International Bureau if the transmittal fee has not been paid to the USPTO. See 37 CFR 1.1045. Applicants are cautioned that an international design application not received by the International Bureau within six months from the date the international design application is received by the USPTO will not be entitled to a filing date as of the date of receipt by the USPTO. See Rule 13.
b. International fees payable to WIPO
Certain international design application fees payable to the International Bureau may be paid through the USPTO as an office of indirect filing, provided such fees are paid no later than the date of payment of the transmittal fee. See 37 CFR 1.1031(c). Applicants are not required to pay such fees through the USPTO but rather may pay such fees directly to the International Bureau. Furthermore, any payment of such fees through the USPTO must be in U.S. dollars. As all payments made to the International Bureau must be in Swiss currency, the U.S. dollar amount collected may, when converted to Swiss currency, be different than the required Swiss currency amount. Accordingly, applicants are cautioned that paying such fees through the USPTO may still result in a requirement by the International
Bureau to pay additional amounts where the conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts.
International fees payable to WIPO include the prescribed fees set forth under Rule 12(1) (i.e., the basic fee, standard designation fee(s), individual designation fee(s), and publication fee) and Rule 11(2) (fee for a description exceeding 100 words). The “Calculate Fees” screen of EFS-Web does not provide for individual selection of these fees but rather provides for input of one lump sum in Swiss francs. The screen includes a link to the WIPO Industrial Design Fee Calculator (www.wipo.int/hague/en/fees/calculator.jsp) where users can input the appropriate data concerning their international design applications, and the WIPO Fee Calculator will determine the total amount of fees required in Swiss francs. Users can then copy and paste this amount into the “International Fees Payable to WIPO (CHF)” field of the EFS-Web Calculate Fees screen, and EFS-Web will calculate the U.S. dollar amount based on current exchange rates. EFS-Web will only permit payment of the international fees that are payable to WIPO until 12 midnight Eastern Time of the date of payment of the transmittal fee required under 37 CFR 1.1031(a).
3. Follow-on submissions in international design applications
In accordance with the requirements of this framework, only registered efilers may file follow-on submissions via EFS-Web in international design applications.
Where an international design application was filed with the USPTO as an office of indirect filing, the USPTO will generally not forward communications to the International Bureau received after transmittal of the application to the International Bureau has been effected. Thus, for example, where the International Bureau has sent an invitation requiring compliance with a requirement under the Hague Agreement, the applicant must file any reply to that invitation directly with the International Bureau to avoid abandonment or other loss of rights under the treaty. See 37 CFR 1.1045.
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The available document descriptions and fees that may be paid through EFS-Web will differ depending on stage of the international design application. After transmittal of the international design application to the International Bureau has occurred, the document descriptions and fees that may be paid through EFS-Web include those that would be relevant for U.S. national processing and examination. Follow-on submissions filed after transmittal of the international design application to the International Bureau but prior to WIPO publication of the international design application designating the United States will generally be presumed to have been intended for consideration by the USPTO acting as an examining office for the application. Accordingly, action by the Office on any such submission will generally be taken after receipt of the WIPO publication of the international design application designating the United States.
No follow-on submission or fee payment is required from the applicant to initiate examination of an international design application that designates the United States. Upon receipt by the Office of the WIPO publication of an international design application designating the United States, the Office will prepare the application file for examination. Registered users may, in accordance with this framework, file follow-on submissions in the international design application via EFS-Web relevant to U.S. national processing and examination. Reproductions amended pursuant to 37 CFR 1.121 may be submitted via EFS-Web as either PDF or JPEG electronic files. Any such JPEG file must be attached to the EFS-Web submission using the “Attach JPEG Reproductions” section of the “Attach Documents” EFS-Web screen. See Section L3 for JPEG file size limits and Section L4 for the limit on the number of JPEG files that may be attached in one submission.
II. Additional Information
The USPTO website provides additional information on EFS-Web and PAIR, such as instructions, guidelines, frequently asked questions, and tutorials. Users may contact the Patent EBC for assistance
with EFS-Web and PAIR as well as for requesting PKI digital certificates and customer numbers.
503 Application Number and Filing Receipt [R-07.2015]
37 CFR 1.54 Parts of application to be filed together; filing receipt.
(a) It is desirable that all parts of the complete application be deposited in the Office together; otherwise, a letter must accompany each part, accurately and clearly connecting it with the other parts of the application. See § 1.53(f) and (g) with regard to completion of an application.
(b) Applicant will be informed of the application number and filing date by a filing receipt, unless the application is an application filed under § 1.53(d). A letter limited to a request for a filing receipt may be signed by a juristic applicant or patent owner.
I. APPLICATION NUMBER
Application numbers consisting of a series code and a serial number are assigned by the Office of Patent Application Processing (OPAP) immediately after mail has been opened. If an application is filed using the Office’s electronic filing system, EFS-Web provides an Acknowledgement Receipt that contains a time and date stamp, an application number and a confirmation number.
The following series codes are assigned to the applications identified below:
(A) 01/ - 14/ - for nonprovisional applications (utility, plant, and reissue), during the following time periods:
01 –1925 to 1934,
02 – 1935 to 1947,
03 – 1948 to 1959,
04 – 1960 to 1969,
05 – 1970 to 1978,
06 – 1979 to 1986,
07 – 1987 to 1992,
08 – 1993 to 1997,
09 – 1998 to Nov. 2001,
10 – Dec. 2001 to Nov. 2004,
11 – Dec. 2004 to Dec. 2007,
12 – Dec. 2007 to Mar. 2011,
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13 – Dec. 2010 to Aug. 2013; and
14 – Aug. 2013 to present;
(B) 29/ - for design applications;
(C) 60/ and 61/ - for provisional applications;
(D) 90/ - for ex parte reexamination proceedings;
(E) 95/ - for inter partes reexamination proceedings; and
(F) 96/ - for supplemental examination proceedings and resulting ex parte reexamination proceedings.
If a self-addressed postcard is submitted with a patent application, that postcard will be provided with both the receipt date and application number prior to returning it to the addressee. The application number identified on such a postcard receipt is merely the preliminary assignment of an application number to the application, and should not be relied upon (e.g., with respect to foreign filings) as necessarily representing the application number assigned to such application. See 37 CFR 1.53(b).
The identifying data on the postcard should include:
(A) inventor’s name(s);
(B) title of invention;
(C) number of pages of specification, claims (for nonprovisional applications), and sheets of drawing;
(D) whether the inventor's oath or declaration is included;
(E) a list of any additional forms included with the application (e.g., application transmittal form, application data sheet, fee transmittal form, and/or provisional application cover sheet); and
(F) amount and manner of paying the fee.
A return postcard should be attached to each patent application for which a receipt is desired.
It is important that the return postcard itemize all of the components of the application. If the postcard does not itemize each of the components of the application, it will not serve as evidence that any component which was not itemized was received by the United States Patent and Trademark Office (USPTO). See subsection III, below, for additional
information pertaining to return postcards. It should be recognized that the identification of an application by application number does not necessarily signify that the USPTO has accepted the application as complete (37 CFR 1.53(a)).
For applications filed via EFS-Web, after the Office receives a successful submission, an Electronic Acknowledgement Receipt is sent to the person filing the application. The acknowledgment receipt contains the "receipt date," the time the correspondence was received at the Office (not the local time at the submitter's location), and a full listing of the correspondence submitted. The Electronic Acknowledgement Receipt is the electronic equivalent of a postcard receipt. See MPEP § 502.05.
II. FILING RECEIPTS
OPAP mails a filing receipt to the attorney or agent, if any, otherwise to the applicant, at the correspondence address of record for each application filed which meets the minimum requirements to receive a filing date. The filing receipt includes the application number, filing date, a confirmation number, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined. The filing receipt also includes other information about the application as applicable, such as continuing data, national stage data, foreign priority data, foreign filing license data, entity status information, and the date the Office anticipates publishing the application under 35 U.S.C. 122(b). The filing receipt represents the official assignment by the USPTO of a specific application number and confirmation number to a particular application. See 37 CFR 1.54(b). The application number officially assigned to an application on the filing receipt may differ from the application number identified on a postcard receipt submitted with such application, and, as between inconsistent filing receipts and postcard receipts, the application number on the filing receipt is controlling.
The confirmation number is a four-digit number that is assigned to each newly filed application. The confirmation number, in combination with the
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application number, is used to verify the accuracy of the application number placed on correspondence filed with the Office to avoid misidentification of an application due to a transposition error in the application number. The confirmation number may be found in the upper left-hand corner of the filing receipt. The confirmation number will also be available through the Patent Application Information Retrieval (PAIR) system. The Office includes the application’s confirmation number (in addition to the application number) on the cover sheet accompanying Office actions and on filing receipts. The confirmation number must be used when submitting an electronic filing system (EFS-Web) copy of the application for publication to verify that the application number correctly identifies the application for which a copy is being submitted for publication. The Office also recommends that applicants include the application’s confirmation number (in addition to the application number) on all correspondence submitted to the Office concerning the application.
A continued prosecution application (CPA) filed under 37 CFR 1.53(d) (design applications only) will be assigned the application number of the prior application for identification purposes.
A nonprovisional application, other than a CPA filed under 37 CFR 1.53(d), is entitled to a filing date as of the date of receipt of the specification, including claims, and any required drawing. See 37 CFR 1.53(b). The filing receipt will be mailed at the time a determination is made that the application meets the minimum requirements to receive a filing date. The inventor's oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506). See 37 CFR 1.53(f). If the inventor's oath or declaration, basic filing fee, and/or any required search fee and examination fee with the appropriate surcharge are not timely filed, the application will be abandoned. For original (non-reissue) applications filed on or after September 16, 2012, the filing of the inventor’s oath or declaration may be postponed until the date the issue fee is paid if an application data sheet in accordance with 37 CFR 1.76 is timely filed providing the
required inventor information. See 35 U.S.C. 115(f) and 37 CFR 1.53(f). The surcharge required for filing the inventor’s oath or declaration after the filing date of the application, however, must be paid on filing of the application or in response to a Notice to File Missing Parts. Also, for applications filed on or after December 18, 2013, the filing of at least one claim may be postponed until the expiration of the time period set in Notice to File Missing Parts. Claim(s) and the surcharge must be filed in response to the Notice to File Missing Parts. See MPEP § 506.
A provisional application filed on or after December 18, 2013 is entitled to a filing date as of the date of receipt of the specification, with or without claims, in the Office (37 CFR 1.53(c)); a provisional application filed before December 18, 2013 must also include any required drawings to be entitled to a filing date (pre-PLT (AIA) 37 CFR 1.53 (c)). See also MPEP § 608.02, subsection I. See 37 CFR 1.53(c). A cover sheet (37 CFR 1.51(c)(1)), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application is required to prevent the provisional application from being treated as a nonprovisional application. 37 CFR 1.53(c)(1).
Each application which meets the minimum requirements to receive a filing date is given a filing date. It is important, when referring to application files, to identify them by their filing dates and confirmation numbers as well as by application numbers.
Attorney docket numbers must be limited to a maximum of 25 characters to prevent truncation. The Patent Application Locating and Monitoring (PALM) system data base allows a maximum of 25 characters for the attorney docket numbers. Spaces, slashes, and hyphens will no longer be included in the entered docket number on the official filing receipt. In an application where CASE or NAVY-CASE appears before the first character in the docket number, only the characters after CASE or NAVY-CASE will be entered on the official filing receipt.
The application papers are processed by OPAP and added to the Office’s Image File Wrapper (IFW) system.
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Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail
Express® under 37 CFR 1.10, by hand-delivery, by the Office’s Electronic Filing System (EFS-Web), or otherwise, will not be returned to applicant even if requested. See 37 CFR 1.59. Accordingly, applicants must be careful not to file applications which are not intended to be filed, e.g., duplicates of applications already filed. Note that 37 CFR 1.26(a) provides that a change of purpose after the payment of a fee, as when a party desires to withdraw the filing of a patent application for which the fee was paid, will not entitle the party to a refund of such fee. See MPEP § 607.02.
III. RETURN POSTCARD
If a submitter desires a receipt for any item (e.g., paper or fee) filed in the USPTO by means other than the Office's electronic filing system, it may be obtained by enclosing with the paper a self-addressed postcard specifically identifying the item. See subsection I, above, and MPEP § 502.05 for Electronic Acknowledgment Receipts. To ensure the receipt of return receipt postcards, users must either: (A) purchase already stamped postcards from the United States Postal Service (USPS) or affix postage stamps to their postcards; or (B) if a postage meter is used, ensure that the meter postmark does not show the date. Any return receipt postcard containing a dated meter postmark may not be delivered by the USPS to the address provided on the postcard. Users are reminded that they are solely responsible for placing the proper postage on self-addressed postcards that are submitted to the USPTO for the purpose of obtaining a receipt for correspondence being filed in the USPTO. Users should check with the USPS regarding postage and what size cards are acceptable to the USPS. Any return receipt postcard that does not contain sufficient postage or is not acceptable may not be delivered by the USPS to the address provided on the postcard, and, if returned to the USPTO, may be discarded.
The USPTO will stamp the receipt date on the postcard and place it in the outgoing mail. A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items
listed thereon on the date stamped thereon by the USPTO.
The identifying data on the postcard should be so complete as to clearly identify the item for which a receipt is requested. For example, the postcard should identify the inventor’s name, application number (if known), confirmation number (if known), filing date, interference number, title of the invention, etc. The postcard should also identify the type of paper being filed, e.g., new application, affidavit, amendment, notice of appeal, appeal brief, drawings, fees, motions, supplemental oath or declaration, petition, etc., and the number of pages being submitted. If a new application is being filed, all parts of the application being submitted should be separately listed on the postcard, e.g., the number of pages of specification (including written description, claims and abstract), number of claims, number of sheets of drawings, number of pages of oath/declaration, number of pages of cover sheet (provisional application).
The postcard receipt will not serve as prima facie evidence of receipt of any item which is not adequately itemized on the postcard. For example, merely listing on the postcard “a complete application” or “patent application” will not serve as a proper receipt for each of the required components of an application (e.g., specification (including claims), drawings (if necessary), oath or declaration and the application filing fee) or missing portions (e.g., pages, sheets of drawings) of an application if one of the components or portion of a component is found to be missing by the USPTO. Each separate component should be specifically and properly itemized on the postcard. Furthermore, merely incorporating by reference in the postcard receipt, the items listed in a transmittal letter will not serve as prima facie evidence of receipt of those items.
The person receiving the item(s) in the USPTO will check the listing on the postcard against the item(s) being filed to be sure they are properly identified and that all the items listed on the postcard are presently being submitted to the USPTO. If any of the items listed on the postcard are not being submitted to the USPTO, those items will be crossed
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off and the postcard initialed by the person receiving the items.
Upon return of a postcard receipt from the USPTO, the postcard receipt should be promptly reviewed by the person who filed the items to ensure that every item specifically denoted on the postcard was received by the USPTO. If the postcard receipt has been annotated to indicate that a particular item denoted on the postcard was not received by the USPTO, the postcard receipt will not serve as prima facie evidence of receipt of that item in the USPTO.
504 Assignment of Application for Examination [R-08.2012]
The Office of Patent Application Processing assigns a nonprovisional application to the art unit to which it appears to belong. Provisional applications will not be examined.
505 Date of Receipt Stamp [R-07.2015]
37 CFR 1.6 Receipt of correspondence.
(a) Date of receipt and Priority Mail Express® date of deposit. Correspondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:
(1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2) Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail
Express® with the United States Postal Service.
(3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
(4) Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
*****
The United States Patent and Trademark Office (Office) stamps papers and fees received through the mail (other than those submitted by Priority Mail
Express® in accordance with 37 CFR 1.10), by facsimile, or via EFS-Web with the date of their receipt in the Office. Papers that are hand-carried to the Office will be date stamped at the Customer Service Window. See MPEP § 502. The stamp is referred to as the “Office Date” stamp.
When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.
New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the
date of deposit as Priority Mail Express® with the United States Postal Service. For example, if a new patent application is deposited in Priority Mail
Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).
Similarly, correspondence submitted via the USPTO electronic filing system (EFS-Web) will be accorded a receipt date on the date the correspondence is received at the correspondence address for the Office set forth in 37 CFR 1.1 (i.e., local time in Alexandria, VA), without regard to whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See MPEP §§ 502.05 and 512.
If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the “Office Date” stamp establishes the “filing date.”
506 Completeness of Original Application [R-07.2015]
37 CFR 1.53 Application number, filing date, and completion of application.
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(a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.
(b) Application filing requirements - Nonprovisional application. The filing date of an application for patent filed under this section, other than an application for a design patent or provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in Office. The filing date of an application for a design patent filed under this section, except for a continued prosecution application under paragraph (d) of this section, is the date on which the specification as prescribed by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121 365(c) or 386(c) and § 1.78.
(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
(c) Application filing requirements - Provisional application. The filing date of a provisional application is the date on which a specification, with or without claims, is received in the Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
(1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e), rather than converting the provisional application into a nonprovisional application pursuant to this paragraph. A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application ( i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a) may be made in a design application based on a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
(d) Application filing requirements - Continued prosecution (nonprovisional) application.
(1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent;
(ii) The prior nonprovisional application is a design application, but not an international design application , that is
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complete as defined by § 1.51(b), except for the inventor’s oath or declaration if the application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in § 1.53(f)(3)(i); and
(iii) The application under this paragraph is filed before the earliest of:
(A) Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior application;
(iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and the inventor's oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
(v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
(3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b), the search fee as set forth in § 1.16(l) , and the examination fee as set forth in § 1.16(p).
(4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.
(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in
an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
(e) Failure to meet filing date requirements.
(1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to correct the filing error. If, however, a request for an application under paragraph (d) of this section does not meet the requirements of that paragraph because the application in which the request was filed is not a design application, and if the application in which the request was filed was itself filed on or after June 8, 1995, the request for an application under paragraph (d) of this section will be treated as a request for continued examination under § 1.114.
(2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f). In the absence of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.
(3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely
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(§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.
(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application.
(1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, the search fee, or the examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include at least one claim or the inventor's oath or declaration (§ 1.63, § 1.64, § 1.162 or § 1.175), and the applicant has provided a correspondence address (§ 1.33(a)), the applicant will be notified and given a period of time within which to pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by § 1.16(f) to avoid abandonment.
(2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, search fee, examination fee, at least one claim, or the inventor's oath or declaration, and the applicant has not provided a correspondence address (§ 1.33(a)), the applicant has three months from the filing date of the application within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge required by § 1.16(f) to avoid abandonment.
(3) The inventor's oath or declaration in an application under § 1.53(b) must also be filed within the period specified in paragraph (f)(1) or (f)(2) of this section, except that the filing of the inventor's oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in paragraphs (f)(3)(i) and (f)(3)(ii) of this section.
(i) The application must be an original (non-reissue) application that contains an application data sheet in accordance with § 1.76 identifying:
(A) Each inventor by his or her legal name;
(B) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
(ii) The applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee for the patent is paid. If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)). The Office may dispense with the notice provided for in paragraph (f)(1) of this section if each
required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, has been filed before the application is in condition for allowance.
(4) If the excess claims fees required by § 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by § 1.16(h), (i), and (j), must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s), the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
(5) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuation-in-part applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the inventor's oath or declaration from the prior application for a continuing application under paragraph (b) of this section.
(6) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
(g) Completion of application subsequent to filing—Provisional application.
(1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.
(2) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.
(3) If the application size fee required by § 1.16(s) (if any) is not paid on filing, the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
(4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
(h) Subsequent treatment of application - Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required
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parts, complying with the rules relating thereto, are received, except that the inventor's oath or declaration may be filed when the application is otherwise in condition for allowance pursuant to paragraph (f)(3) of this section and minor informalities may be waived subject to subsequent correction whenever required.
(i) Subsequent treatment of application - Provisional application. A provisional application for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).
I. INCOMPLETE NONPROVISIONAL APPLICATIONS FILED UNDER 37 CFR 1.53(b)
A. Utility Applications
If the nonprovisional utility application papers filed under 37 CFR 1.53(b) do not include at least a specification or if the submitted papers are too informal to be given a filing date, the case is held in the Office of Patent Application Processing (OPAP) as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.
B. Design Applications
If the nonprovisional design application papers filed under 37 CFR 1.53(b) do not include at least a specification containing a description and at least one claim and a drawing, if necessary under 35 U.S.C. 113 (first sentence), or if the submitted application papers are too informal to be given a filing date, the case is held in the Office of Patent Application Processing (OPAP) as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.
C. Handling of Incomplete Applications
A Notice of Incomplete Application is prepared and mailed by OPAP when nonprovisional application papers filed under 37 CFR 1.53(b) are deemed incomplete under 35 U.S.C. 111(a).
Even though an application purports to include the component parts necessary to obtain a filing date, the application will still be held to be incomplete and a filing date will be refused if the component parts fail to satisfy the requirements set forth above.
For example, if the documents purporting to be a specification are so obviously informal and incoherent that they clearly do not constitute a specification as required by 35 U.S.C. 112 and 37 CFR 1.71, the application is not acceptable for examination and it will not be accorded a filing date until corrections are made. The filing date of the application will be the date the corrections are made.
Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)), at least one claim (for applications filed on or after December 13, 2013) and/or the inventor's oath or declaration. In such cases, a notice is mailed by OPAP requiring the appropriate fees, claims (for applications filed on or after December 13, 2013) and for applications filed before September 16, 2012, the oath or declaration (which must include the names of all the inventors), accompanied by a surcharge (37 CFR 1.16(f)).
For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by his or her legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mails, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.53(f)(3). Applicant must file the inventor’s oath or declaration no later than the date on which the issue fee is paid. See 35 U.S.C. 115(f).
The Office has modified the missing parts practice for applications (other than reissue applications) filed on or after September 16, 2012. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, contains the applicable filing fees (basic filing fee, search fee, examination fee, any applicable excess claims fee, and any applicable application size fee), the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the required inventor information, but does not include the inventor’s oath or declaration, the Office will
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not issue a Notice to File Missing Parts requiring the applicant to file the inventor’s oath or declaration. Instead, the Office may send an informational notice notifying the applicant that the inventor’s oath or declaration has not been received or that there are deficiencies in an inventor’s oath or declaration that was filed. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, that does not contain the inventor’s oath or declaration also does not contain the applicable filing fees, or the surcharge required by 37 CFR 1.16(f), or a signed ADS providing the inventor information, the Office will issue a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing filing fees, the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the inventor information (or the inventor’s oath or declaration) to avoid abandonment. If an application is in condition for allowance and the required inventor’s oath or declaration (an oath or declaration under 37 CFR 1.63, or a substitute statement under 37 CFR 1.64, executed by or with respect to each actual inventor) has not yet been filed, the Office will issue a notice with the Notice of Allowability requiring the inventor’s oath or declaration to be filed no later than the date on which the issue fee is paid.
For applications which have been accorded a filing date under 37 CFR 1.53(b), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required. In addition to the basic filing fee, the search fee, and the examination fee, 37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which, excluding a sequence listing or computer program listing filed in an electronic medium (see 37 CFR 1.52(f)), exceed 100 sheets of paper. The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. Any sequence listing in an electronic medium in compliance with 37 CFR 1.52(e) and 37 CFR 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with 37 CFR 1.52(e) and 1.96, will be excluded when determining the application size fee required by 37 CFR 1.16(s). The application size fee required by 37 CFR 1.16(s) must
be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment (37 CFR 1.53(f)(3)). See MPEP § 607 for additional information regarding fees. In addition to the basic filing fee, the search fee, the examination fee, and the application size fee required under 37 CFR 1.16, the prescribed filing fee (37 CFR 1.51(b)(4)) may include additional fees for filing more than 3 independent claims (37 CFR 1.16(h)), for filing a total of more than 20 claims (37 CFR 1.16(i)), or for filing a multiple dependent claim (37 CFR 1.16(j)). In those cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.
A nonprovisional application filed under 37 CFR 1.53(b) may be filed with a preliminary amendment which is limited to the cancellation of claims. Any preliminary amendment, regardless of when it is filed, must be in compliance with 37 CFR 1.121, e.g., it must include a complete listing of all of the claims. Therefore, the Office strongly recommends that applicants file their applications with a specification containing only the desired set of claims, rather than filing the application with a preliminary amendment canceling claims. If such a preliminary amendment canceling claims is filed, it will diminish the number of claims to be considered for calculation of the filing fee. Any other changes to the application should be the subject of a separate amendment which may be entered after the filing fee has been calculated and the filing date granted. If a preliminary amendment which cancels claims does not accompany the application at the time the application is filed, and there is a fee deficiency, the notification of insufficient fee will inform the inventor, attorney, or agent of the possibility of correcting the insufficient payment by either (1) paying the additional required fee amount, or (2) filing an amendment which cancels claims so that the remaining claims are covered by the fee submitted upon filing. However, no refund will be made once the fee for claims is properly paid, even though claims are later canceled, unless a petition for express abandonment under 37 CFR 1.138(d) is granted. See MPEP § 711.01.
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A filing date is normally granted before a review of the subject matter claimed in a nonprovisional application. If a nonprovisional application filed under 37 CFR 1.53(b) appears sufficient, the application is forwarded to the examiner for consideration during the regular course of examination.
II. INCOMPLETE PROVISIONALAPPLICATIONS
If the provisional application papers do not include at least a specification containing a description and a drawing, if necessary under 35 U.S.C. 113 (first sentence) (for applications filed prior to March 18, 2013) or if the submitted application papers are too informal to be given a filing date, the case is held in OPAP as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.
Such incompleteness may consist of the omission of any one of the following parts of an application. The component parts of a provisional application necessary to obtain a filing date are:
A specification, with or without claims, as prescribed by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, and 37 CFR 1.71.
A drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.81(a) (for applications filed prior to March 18, 2013).
Even though an application purports to include the component part(s) necessary to obtain a filing date, the application will still be held to be incomplete and a filing date will be refused if the component parts fail to satisfy the requirements set forth above. For example, if the documents purporting to be a specification are so obviously informal and incoherent that they would clearly not constitute a specification as required by 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph, and 37 CFR 1.71, the application would not be acceptable and would not be accorded a filing date until corrections are made. The filing date of the application would be the date the corrections were made. A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37
CFR 1.51(c)(1), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b). See 37 CFR 1.53(c)(1).
NOTE: No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application. See 37 CFR 1.53(c).
III. INFORMAL APPLICATIONS
An application is informal if it is typed on both sides of the paper, or is not permanent, legible, or reproducible. If such informalities are timely corrected, the application is given the filing date on which the original informal papers were filed.
OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices. In such applications, OPAP will send a Notice (e.g., Notice to File Corrected Application Papers) requiring correction of the informality. Failure to correct the informality within the specified time results in abandonment of the application.
506.01 [Reserved]
506.02 Review of Refusal To Accord Filing Date [R-07.2015]
The filing date of the provisional or nonprovisional application is the date of receipt in the Office of the application which includes a specification containing description pursuant to 37 CFR 1.71 and at least one claim (required for nonprovisional design applications only) pursuant to 37 CFR 1.75, and any
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drawings required by 37 CFR 1.81(a). See 37 CFR 1.53(b) and (c).
If any of these items are missing, applicant will be notified to file them and the filing date will be the date of receipt of the missing part(s). If the oath or declaration for a nonprovisional application was executed and filed with the application, a supplemental oath or declaration by the inventor is required in some circumstances if the nonprovisional application was filed before September 16, 2012, e.g., where the missing item is the claim, specification, or a drawing. The supplemental declaration must identify the missing item and indicate, as appropriate, that it accurately claims, describes, or illustrates applicant’s invention. See MPEP § 601.01(d)-(g) where the application is filed without all the pages of the specification, without at least one claim (nonprovisional design application), without drawings, or without all the figures of the drawings. For applications filed on or after September 16, 2012, the Office will not require a person who has executed an oath or declaration in compliance with 35 U.S.C. 115 and 37 CFR 1.63 or 1.162 for an application to provide an additional inventor’s oath or declaration for the application (37 CFR 1.67(c)). An error in or failure to identify inventorship does not raise a filing date issue.
Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary. If petitioner alleges that no defect exists, a request for refund of the petition fee may be included in the petition.
For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was
deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent
application is deposited in Priority Mail Express®
in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR
1.6(a)(2). If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the Office. Any review of these matters would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)), providing whatever arguments and evidence petitioner has that the application is entitled to a filing date as of the date it was deposited as Priority
Mail Express®. See MPEP § 513.
Petitions relating to the filing date accorded to patent applications under 37 CFR 1.53 are decided in the Office of the Deputy Commissioner for Patent Examination Policy (See MPEP § 1002.02(b)).
Any petition under this section should be marked to the attention of the Office of Petitions.
507 Drawing Review in the Office of Patent Application Processing [R-07.2015]
The Office of Patent Application Processing (OPAP) performs an initial review of drawings in new utility and plant patent applications to determine whether the drawings can be effectively scanned for publication purposes. Design applications are not published, and drawings filed in design patent applications are not reviewed by OPAP for publication purposes. The standard of review employed by OPAP is such that most drawings, including those that have been indicated by applicant to be "informal drawings," will be acceptable.
OPAP inspects the drawings to see if they can be effectively scanned and adequately reproduced. If the drawings are not acceptable, OPAP will object to the drawings and notify applicant that a timely submission of acceptable drawings (e.g., drawings which can be scanned) is required.
Under the OPAP review process, OPAP may object to and require corrected drawings within a set time period, if the drawings:
(A) have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). See 37 CFR 1.84(l) and (p)(1);
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(B) have missing lead lines. See 37 CFR 1.84(q). Lead lines are those lines between the reference characters and the details referred to;
(C) contain excessive text or text that is not in English (including, for example, a flow chart that was originally not in English that has been marked up to include the English text). See 37 CFR 1.84(o) and (p)(2) and 37 CFR 1.52(d);
(D) do not have the appropriate margin or are not on the correct size paper. See 37 CFR 1.84(f) and (g). Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left size margin of at least 2.5 cm. (1 inch), a right size margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch). The size of the sheets on which drawings are made must be either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8-1/2 by 11 inches);
(E) have more than one figure and each figure is not labeled “Fig.” with a consecutive Arabic numeral (1, 2, etc.) or an Arabic numeral and capital letter in the English alphabet (A, B, etc.). See 37 CFR 1.84(u)(1);
(F) include photographs of the claimed invention which are capable of illustration by other medium such as ink drawings, and which are illegible after scanning. See 37 CFR 1.84(b); and
(G) contain color drawings or color photographs, but not a petition to accept color drawings/ photographs. Note that the requirement for a black and white photocopy of any color drawings/photographs has been eliminated.
If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP. Otherwise, in most situations, patent application publications and patents will reflect the quality of the drawings that are included with a patent application on filing unless applicant
voluntarily submits better quality drawings as set forth in MPEP § 1121.
508 Distribution [R-07.2015]
All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.
For handling of models, exhibits, and specimen, see MPEP §§ 608.03 and 608.03(a).
508.01 [Reserved]
508.02 Papers Received After Patenting or Abandonment [R-08.2012]
After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, “return” of the paper will be accomplished by the Office closing it in IFW.
508.03 [Reserved]
508.04 Unlocatable Patent or Application Files [R-07.2015]
37 CFR 1.251 Unlocatable file.
(a) In the event that the Office cannot locate the file of an application, patent, or other patent-related proceeding after a reasonable search, the Office will notify the applicant or patentee and set a time period within which the applicant or patentee must comply with the notice in accordance with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section.
(1) Applicant or patentee may comply with a notice under this section by providing:
(i) A copy of the applicant’s or patentee’s record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents);
(ii) A list of such correspondence; and
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(iii) A statement that the copy is a complete and accurate copy of the applicant’s or patentee’s record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records.
(2) Applicant or patentee may comply with a notice under this section by:
(i) Producing the applicant’s or patentee’s record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding for the Office to copy (except for U.S. patent documents); and
(ii) Providing a statement that the papers produced by applicant or patentee are applicant’s or patentee’s complete record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records.
(3) If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.
(b) With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.
37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search. The phrase “an application” in 37 CFR 1.251 applies to any type of application (national or international), and regardless of the status (pending or abandoned) of the application.
37 CFR 1.251(a) provides that in the event the Office cannot locate the file of an application, patent, or any other patent-related proceeding after a reasonable search, the Office will notify the applicant or patentee and set a time period within which the applicant or patentee must comply with the notice. The applicant or patentee may comply with a notice
under 37 CFR 1.251 by providing: (1) a copy of his or her record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents); (2) a list of such correspondence; and (3) a statement that the copy is a complete and accurate copy of the applicant’s or patentee’s record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records (37 CFR 1.251(a)(1)). The applicant or patentee may also comply with a notice under 37 CFR 1.251 by: (1) producing his or her record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding for the Office to copy (except for U.S. patent documents); and (2) providing a statement that the papers produced by applicant or patentee are applicant’s or patentee’s complete record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records (37 CFR 1.251(a)(2)). If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, the applicant or patentee must comply with a notice under 37 CFR 1.251 by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (37 CFR 1.251(a)(3)).
According to 37 CFR 1.251(a), if the applicant or patentee possesses all or just some of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, the applicant or patentee is to reply by providing a copy of (or producing) his or her record of all of the correspondence between the Office and the applicant or patentee for such application, patent,
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or other proceeding (37 CFR 1.251(a)(1) or (a)(2)). If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, the applicant or patentee is to reply with a statement to that effect (37 CFR 1.251(a)(3)).
If an applicant or patentee decides to produce his or her record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding for copying by the Office under 37 CFR 1.251(a)(2) (rather than provide a copy under 37 CFR 1.251(a)(1)), the record should be brought to the Customer Service Center in the Office of Patent Application Processing (OPAP).
The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application. See 35 U.S.C. 133. If, however, an applicant fails to reply to a notice under 37 CFR 1.251 within three months of its mailing date, any patent term adjustment under 35 U.S.C. 154(b) will be reduced by a period equal to the number of days (if any) beginning on the day after the date that is three months after the mailing date of the notice under 37 CFR 1.251 and ending on the date the reply to the notice under 37 CFR 1.251 was filed. See 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b). The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent because 35 U.S.C. 41(a)(8) only authorizes the Office to charge fees for extensions of time in proceedings involving an application.
37 CFR 1.251 generally applies only to situations in which the file of an application or patent (not just certain documents) is unlocatable. When a document is missing from an application, Office practice is to call the applicant’s representative and request submission (generally by facsimile) of a copy of the missing document. While the Office will generally treat missing documents in this relatively informal manner (rather than issuing a notice under 37 CFR 1.251), the Office may issue a notice under 37 CFR 1.251 to obtain a copy of a missing document if the
Office’s informal attempts to obtain a copy of the document are unsuccessful. The notice under 37 CFR 1.251 will include a printout of the contents entries from the Office’s PALM system.
Any appendix or information disclosure statement submitted with an application is not contained in the Office’s database. Therefore, the applicant or patentee must also provide a copy of any appendix or information disclosure statement (except in the limited circumstance discussed below) submitted with the application. Since the Office can obtain copies of U.S. patent documents (U.S. patent application publications and patents) from its internal databases, the Office is not requiring applicants or patentees to provide copies of U.S. patent application publications and patents that are among the applicant’s or patentee’s record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding.
37 CFR 1.251(b) provides that with regard to a pending application, the failure to provide a reply to such a notice within the time period set in the notice will result in abandonment of the application. While abandonment (or expiration) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent). In addition, if the patent is involved in a proceeding before the Office, the Office may take action under 37 CFR 41.128 or 37 CFR 11.18.
509 Payment of Fees [R-07.2015]
The latest fee schedule is available by contacting the USPTO at 1-800-PTO(786)-9199 or (571) 272-1000, or on the USPTO webpage at www.uspto.gov.
37 CFR 1.22 Fees payable in advance.
(a) Patent fees and charges payable to the United States Patent and Trademark Office are required to be paid in advance; that is, at the time of requesting any action by the Office for which a fee or charge is payable with the exception that under § 1.53 applications for patent may be assigned a filing date without payment of the basic filing fee.
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(b) All fees paid to the United States Patent and Trademark Office must be itemized in each individual application, patent, or other proceeding in such a manner that it is clear for which purpose the fees are paid. The Office may return fees that are not itemized as required by this paragraph. The provisions of § 1.5(a) do not apply to the resubmission of fees returned pursuant to this paragraph.
37 CFR 1.23 Method of payment.
(a) All payments of money required for United States Patent and Trademark Office fees, including fees for the processing of international applications (§ 1.445), shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.
(b) Payments of money required for United States Patent and Trademark Office fees may also be made by credit card, except for replenishing a deposit account. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is subject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card information is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge.
(c) A fee transmittal letter may be signed by a juristic applicant or patent owner.
37 CFR 1.26 Refunds.
(a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
(b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph or in § 1.28(a). If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 1.25(b)), any request for refund
based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
(c) If the Director decides not to institute a reexamination proceeding in response to a request for reexamination or supplemental examination, fees paid with the request for reexamination or supplemental examination will be refunded or returned in accordance with paragraphs (c)(1) through (c)(3) of this section. The reexamination requester or the patent owner who requested a supplemental examination proceeding, as appropriate, should indicate the form in which any refund should be made ( e.g., by check, electronic funds transfer, credit to a deposit account). Generally, refunds will be issued in the form that the original payment was provided.
(1) For an ex parte reexamination request, the ex parte reexamination filing fee paid by the reexamination requester, less the fee set forth in § 1.20(c)(7), will be refunded to the requester if the Director decides not to institute an ex parte reexamination proceeding.
(2) For an inter partes reexamination request, a refund of $7,970 will be made to the reexamination requester if the Director decides not to institute an inter partes reexamination proceeding.
(3) For a supplemental examination request, the fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2), will be returned to the patent owner who requested the supplemental examination proceeding if the Director decides not to institute a reexamination proceeding.
Where the Office has notified an applicant, in writing, that a fee is due and has specified a particular dollar amount for that fee, if the applicant timely submits the specified fee amount in response to the notice, the applicant should be considered to have complied with the notice so as to avoid abandonment of the application. If the fee paid by the applicant is insufficient, either because the notice specified an incorrect dollar amount for the fee or because of a fee increase effective after the mailing of the notice and before payment of the fee by the applicant, the applicant should be notified in writing by the Office of the fee insufficiency and given a new time period in which to submit the remaining balance. The written notification of the fee insufficiency should set forth the reason (i.e., the fee amount indicated by the Office in the earlier notice was incorrect or the fees have increased since the earlier notice was mailed) why applicant is being required to submit an additional fee.
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I. ITEMIZATION AND APPLICATION OF FEES
37 CFR 1.22(b) sets forth that fees must be itemized in such a manner that it is clear for which purpose fees are paid. The Office may return fees that are not itemized. The intent of the fee itemization requirement is to encourage a better explanation by applicants of how fees being paid are to be applied by the Office. This will allow Office employees to properly account for the fees being paid by applicants. It should be noted that the language of 37 CFR 1.22 is not intended to create a problem when it is clear what fee is needed. A reference to “filing fee(s)” would be sufficient to cover filing fees (including search and examination fees) of all different types of applications and all types of claims. Further, in a paper submitted on a date later than the actual filing date, the reference to “filing fee(s)” would also be sufficient to cover the surcharge under 37 CFR 1.16, as the surcharge is also required to make the application complete. A reference to “any corresponding fee under 37 CFR 1.16” would be sufficient to cover any fee (e.g., surcharge, application size fee, excess claims fees) under 37 CFR 1.16. In a petition for an extension of time filed without a specifically itemized fee, but with a general authorization to charge a deposit account, it is clear that a fee for an extension of time is needed and the deposit account should be charged the appropriate extension of time fee.
In situations in which a payment submitted for the fees due on filing in a nonprovisional application filed under 35 U.S.C. 111(a) is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended:
(1) the basic filing fee (37 CFR 1.16(a), (b), (c), or (e));
(2) the non-electronic filing fee (37 CFR 1.16(t));
(3) the application size fee (37 CFR 1.16(s));
(4) the late filing surcharge (37 CFR 1.16(f));
(5) the processing fee for an application filed in a language other than English (37 CFR 1.17(i));
(6) the search fee (37 CFR 1.16(k), (l), (m), or (n));
(7) the examination fee (37 CFR 1.16(o), (p), (q), or (r)); and
(8) the excess claims fee (37 CFR 1.16(h), (i), and (j)).
In situations in which a payment submitted for the fees due on filing in a provisional application filed under 35 U.S.C. 111(b) is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended:
(1) the basic filing fee (37 CFR 1.16(d));
(2) the application size fee (37 CFR 1.16(s)); and
(3) the late filing surcharge (37 CFR 1.16(g)).
See also MPEP § 607.
II. PAYMENT BY CREDIT CARD
37 CFR 1.23 permits payment of any patent process fee, trademark process fee, or information product fee by credit card, subject to actual collection of the fee. The Office currently accepts charges to the following credit cards: AMERICAN EXPRESS®, DISCOVER®, MASTER CARD®, and VISA®.
Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark process fee (or the fee for an information product) by credit card, unless the payment is being made using the Office’s electronic filing systems. The credit card payment form is not required (and should not be used) when making a credit card payment via EFS-Web or other electronic filing systems. Form PTO-2038 may be downloaded at w w w. u s p t o . g o v / s i t e s / d e f a u l t / fi l e s / documents/PTO-2038.pdf. The Office will not include the Credit Card Payment Form (PTO-2038) among the records open to public inspection in the file of a patent, trademark registration, or other proceeding. The Office does not require customers to use this form when paying a patent process or trademark process fee by credit card. If a customer provides a credit card charge authorization in another form or document (e.g., a communication relating to the patent or trademark), the credit card information may become part of the record of an
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Office file that is open to public inspection. Thus, failure to use the Credit Card Payment Form (PTO-2038) when submitting a credit card payment may result in the credit card information becoming part of the record of an Office file that is open to public inspection.
Credit card payments by facsimile are permitted, except in situations in which facsimile submission of correspondence is not permitted in 37 CFR 1.6(d). Credit card payments that are not being made via the Office’s electronic filing systems (e.g., EFS-Web, the Electronic Patent Assignment System (EPAS), or the Finance On-line Shopping Web page for patent maintenance fees), may only be submitted with a handwritten signature personally signed in permanent dark ink or its equivalent by that person. See 37 CFR 1.4(e). Such payments may not be signed using an S-signature as provided for in 37 CFR 1.4(d)(2). A handwritten signature is required (i.e., an S-signature is not permitted) only when the credit card payment is being made in paper and thus the Office’s Credit Card Payment Form (PTO-2038), or an equivalent, is being used. A credit card payment via facsimile is considered a paper submission and requires a handwritten signature. Form PTO-2038 (or an equivalent) should not be filed via EFS-Web.
35 U.S.C. 42(d) and 37 CFR 1.26 (which concern refund of patent and trademark fees) also apply to requests for refund of fees paid by credit card. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. See 37 CFR 1.26(a).
See MPEP § 607.02 for returnability of fees.
Any payment of a patent process or trademark process fee by credit card must be in writing (see 37 CFR 1.2), and preferably submitted via the appropriate Office electronic filing system, or if filed in paper, on the Credit Card Payment Form (PTO-2038). If a Credit Card Payment Form or other
document authorizing the Office to charge a patent process or trademark process fee to a credit card does not contain the information necessary to charge the fee to the credit card, the customer must submit a revised Credit Card Payment Form or document containing the necessary information. Office employees will not accept oral (telephonic) instructions to complete the Credit Card Payment Form or otherwise charge a patent process or trademark process fee (as opposed to information product or service fees) to a credit card.
Credit card payment submissions made on the USPTO website at www.uspto.gov must include the 3-digit or 4-digit security code associated with the credit card in addition to the credit card number. The security code will not be required when the paper Credit Card Payment Form (PTO-2038) or other written authorization is submitted.
The security code is part of an authentication procedure established by credit card companies to further efforts towards reducing fraudulent or unauthorized credit card use for Internet payment transactions. The security code must be entered at the time of the Internet payment transaction to verify that the physical card is in the cardholder’s possession. The security code appears on all major credit cards and is not part of the credit card number itself. Each credit card company has its own name for the security code (such as CVV, CVV2, CVC2 or CID), but it functions the same for all major card types.
On DISCOVER®, MASTERCARD®, and VISA® credit cards, the security codes is a 3-digit code that is printed on the back of the card, often following the credit card number digits. For AMERICAN EXPRESS® credit cards, the security code is a 4-digit code that is printed on the front of the cards. If you cannot read the security code, you will have to contact the financial institution that issued your credit card.
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509.01 Deposit Accounts [R-07.2015]
37 CFR 1.25 Deposit accounts.
(a) For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc., deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account § 1.21(b)(1). A minimum deposit of $1,000 is required for paying any fee due or in ordering any services offered by the Office. However, a minimum deposit of $300 may be paid to establish a restricted subscription deposit account used exclusively for subscription order of patent copies as issued. At the end of each month, a deposit account statement will be rendered. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit value. An amount sufficient to cover all fees, services, copies, etc., requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§ 1.21(b)(2)) will be assessed for each month that the balance at the end of the month is below $1,000. For restricted subscription deposit accounts, a service charge (§ 1.21(b)(3)) will be assessed for each month that the balance at the end of the month is below $300.
(b) Filing, issue, appeal, international-type search report, international application processing, international design application fees, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees. A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 through 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with a particular paper filed. A general authorization to charge fees in an international design application set forth in § 1.1031 will only be effective for the transmittal fee (§ 1.1031(a)). An authorization to charge fees under § 1.16 in an international application entering the national stage under 35 U.S.C. 371 will be treated as an authorization to charge fees under § 1.492. An authorization to charge fees set forth in § 1.18 to a deposit account is subject to the provisions of § 1.311(b). An authorization to charge to a deposit account the fee for a request for reexamination pursuant to § 1.510 or 1.913 and any other fees required in a reexamination proceeding in a patent may also be filed with the request for reexamination, and an authorization to charge to a deposit account the fee for a request for supplemental examination pursuant to § 1.610 and any other fees required in a supplemental examination proceeding in a patent may also be filed with the request for supplemental examination. An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective as to the particular fee to be charged unless sufficient funds are present in the account to cover the fee.
(c) A deposit account holder may replenish the deposit account by submitting a payment to the United States Patent and Trademark Office. A payment to replenish a deposit account must be submitted by one of the methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of this section.
(1) A payment to replenish a deposit account may be submitted by electronic funds transfer through the Federal Reserve Fedwire System, which requires that the following information be provided to the deposit account holder’s bank or financial institution:
(i) Name of the Bank, which is Treas NYC (Treasury New York City);
(ii) Bank Routing Code, which is 021030004;
(iii) United States Patent and Trademark Office account number with the Department of the Treasury, which is 13100001; and
(iv) The deposit account holder’s company name and deposit account number.
(2) A payment to replenish a deposit account may be submitted by electronic funds transfer over the Office’s Internet website (www.uspto.gov).
(3) A payment to replenish a deposit account may be addressed to: Director of the United States Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
An overdrawn account will be immediately suspended and no charges will be accepted against it until a proper balance is restored, together with a payment of $10 (37 CFR 1.21(b)(1)) to cover the work done by the U.S. Patent and Trademark Office incident to suspending and reinstating the account and dealing with charges which may have been made in the meantime.
If there is an authorization to charge the basic filing fee (37 CFR 1.16(a), (b), (c), (d), or (e)) to a deposit account which is overdrawn or has insufficient funds, a surcharge (37 CFR 1.16(f)) is required in addition to payment of the basic filing fee (37 CFR 1.16(a), (b), (c), (d), or (e)). For applications filed on or after July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(b) or (d), if there is an authorization to charge any of the basic filing fee, the search fee, or the examination fee to a deposit account which is overdrawn or has insufficient funds, a surcharge under 37 CFR 1.16(f) is required in addition to payment of the required fee(s). Failure to timely pay the filing fee and surcharge will result in abandonment of the application.
It is expected, however, that reasonable precautions will be taken in all cases to avoid overdrafts, and if an account is suspended repeatedly it will be closed.
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Similarly, because of the burden placed on the U.S. Patent and Trademark Office incident to the operation of deposit accounts, a charge of $10 (37 CFR 1.21(b)(1)) will be made for opening each new account.
I. DEPOSIT ACCOUNT AUTHORIZATIONS
37 CFR 1.25(b) states that:
A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular paper filed.
As provided in 37 CFR 1.311(b), an authorization to charge the issue fee (37 CFR 1.18) to a deposit account may be filed in an individual application only after the mailing of the notice of allowance. 37 CFR 1.25(b) also makes clear that a general authorization made prior to the mailing of a notice of allowance does not apply to issue fees under 37 CFR 1.18.
In addition, a general authorization does not apply to document supply fees under 37 CFR 1.19, such as those required for certified copies, to post issuance fees under 37 CFR 1.20, such as those required for maintenance fees, or to miscellaneous fees and charges under 37 CFR 1.21, such as assignment recording fees.
Many applications contain broad language authorizing any additional fees which might have been due to be charged to a deposit account. The U.S. Patent and Trademark Office will interpret such broad authorizations to include authorization to charge to a deposit account fees set forth in 37 CFR 1.16, and 1.17. Fees under 37 CFR 1.19, 1.20, and 1.21 will not be charged as a result of a general authorization under 37 CFR 1.25 except to cover the processing fee under 37 CFR 1.21(m) in the event a check or credit card payment is refused or charged back by a financial institution. Fees under 37 CFR 1.18 will not be charged as a result of a preauthorization of issue fee payment.
An authorization to charge fees relating only to a specific paper, could read “The Director is hereby authorized to charge any fees under 37 CFR 1.16 and 1.17 which may be required by this paper to Deposit Account No.________.” Such an authorization would cover situations in which a check to cover a filing and/or a processing fee under 37 CFR 1.16 and 1.17 was omitted or was for an amount less than the amount required. An authorization covering any omission or deficiency in a check or credit card payment applies to the processing fee under 37 CFR 1.21(m) in the event a check or credit card payment is refused or charged back by a financial institution, regardless of whether such deposit account authorization is limited to other fees (e.g., fees under 37 CFR 1.16 and 1.17). If a check or credit card payment for the issue fee is refused or charged back by a financial institution, the application may be held abandoned for failure to pay the issue fee within the statutory period for reply. See MPEP § 1306.
It is extremely important that the authorization be clear and unambiguous. If applicants file authorizations which are ambiguous and deviate from the usual forms of authorizations, the Office may not interpret the authorizations in the manner applicants intend and may return the fees. As a result, applicants could be subject to further expenses, petitions, etc. in order to have a particular fee charged to a deposit account (which was not charged as intended) or to resubmit a fee(s) due to an ambiguous authorization.
The Office will treat a deposit account authorization to charge “the filing fee” as an authorization to charge the following applicable fees under 37 CFR 1.16: basic filing fee; search fee; examination fee; any excess claims fees; any application size fee; and any non-electronic filing fee (see 37 CFR 1.16(t)). The Office will treat a deposit account authorization to charge “the basic filing fee” as an authorization to charge the following applicable fees under 37 CFR 1.16: basic filing fee; search fee; and examination fee. Any deposit account authorization to charge the filing fee but not the search fee or examination fee must specifically limit the authorization by reference to one or more paragraphs (a) - (e) of 37 CFR 1.16.
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37 CFR 1.25(b) provides that an authorization to charge fees under 37 CFR 1.16 (which relates to national application filing fees) in an application filed under 35 U.S.C. 371 will be treated as an authorization to charge fees under 37 CFR 1.492 (which relates to national stage fees). Papers filed for the purpose of entering the national stage under 35 U.S.C. 371 and 37 CFR 1.495 that include an authorization to charge fees under 37 CFR 1.16 are treated by the Office as an authorization to charge fees under 37 CFR 1.492 since: (1) timely payment of the appropriate national fee under 37 CFR 1.492 is necessary to avoid abandonment of the application as to the United States; and (2) the basic filing fee under 37 CFR 1.16 is not applicable to such papers or applications.
37 CFR 1.25(b) sets forth that fees in an international design application may be charged to a deposit account. A general authorization to charge fees in an international design application set forth in 37 CFR 1.1031 will only be effective for the transmittal fee (37 CFR 1.1031(a)). The international fees set forth in 37 CFR 1.1031, other than the transmittal fee set forth in 37 CFR 1.1031(a), are not required to be paid to the Office as an office of indirect filing. See 37 CFR 1.1031(d).
II. DEPOSIT ACCOUNT REPLENISHMENTS
37 CFR 1.25(c) specifies how a deposit account holder may submit a payment to the Office to replenish the deposit account. A payment to replenish a deposit account may be submitted by:
(A) making the payment by electronic funds transfer through the Federal Reserve Fedwire System. Deposit account holders who use the Federal Reserve Fedwire System must provide the following information to their bank or financial institution: (1) Name of the Bank, which is Treas NYC (Treasury New York City); (2) Bank Routing Code, which is 021030004; (3) United States Patent and Trademark Office account number with the Department of Treasury, which is 13100001; and (4) the deposit account holder’s company name and deposit account number. The deposit account holder should inform his or her bank or financial institution to use due care to ensure that all pertinent account numbers are listed on the transaction because the failure to
include the proper deposit account number will delay the processing of the replenishment;
(B) electronic funds transfer over the Office’s Internet website (www.uspto.gov); or
(C) mailing the payment to: Director of the United States Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, VA 22314.
In the event a payment to replenish a deposit account is refused (e.g., for insufficient funds or due to a stop payment order), the fee under 37 CFR 1.21(m) for processing the payment refusal will be charged to the deposit account. Further information on deposit account replenishment may be obtained from the Office’s Internet website or by contacting the Deposit Account Division at (571) 272-6500.
III. REFUNDS TO A DEPOSIT ACCOUNT
For refunds to a deposit account, see MPEP § 607.02.
509.02 Small Entity Status — Definitions [R-07.2015]
Under 35 U.S.C. 41(h)(1), fees charged under 35 U.S.C. 41(a), (b) and (d)(1) shall be reduced by 50 percent with respect to their application to any small business concern as defined under section 3 of the Small Business Act, and to any independent inventor or nonprofit organization as defined in regulations issued by the Director. Effective March 19, 2013, the availability of the small entity discount was extended to certain other fees not contained in 35 U.S.C. 41(a), (b) and (d)(1), but which are included among fees “for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents” as authorized by Public Law 112-29, sec. 10(b), 125 Stat. 284 (September 16, 2011)(Leahy-Smith America Invents Act (AIA)). Effective January 1, 2014, the small entity discount also becomes available to certain “filing, searching, [and] examining” fees for international applications under the Patent Cooperation Treaty (PCT). Note that if applicant qualifies as a small entity under 37 CFR 1.27, applicant may also qualify for “Micro Entity Status” under 35 U.S.C. 123. See 37 CFR 1.29 and MPEP § 509.04 et seq. for the requirements to establish
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micro entity status for the purpose of paying micro entity fees.
The fees which are reduced by 50% for small entities include patent application filing fees including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees (37 CFR 1.16), extension of time, revival, and appeal fees (37 CFR 1.17), patent issue fees (37 CFR 1.18), and maintenance fees on patents (37 CFR 1.20). Fees which are reduced by 50% effective March 19, 2013, but which were previously not reduced, include certain petition fees, 37 CFR 1.17(f)-(h), the request for reexamination fees, 37 CFR 1.20(c)(1), the fee for submitting an information disclosure statement in certain time frames, 37 CFR 1.17(p), the surcharge for reinstating an expired patent, 37 CFR 1.20(i), and the fee for an unintentionally delayed claim for priority, 37 CFR 1.17(t). Fees which are reduced by 50% effective January 1, 2014, but which were previously not reduced, are certain PCT international stage fees, including the transmittal fee (37 CFR 1.445(a)(1)(i)(B)), the search fee (37 CFR 1.445(a)(2)(ii)) and the preliminary examination fee (37 CFR 1.482(a)(1)(i)(B)).
Fees which are not reduced include document supply fees, 37 CFR 1.19, certificate of correction fees, 37 CFR 1.20(a), and miscellaneous fees and charges, 37 CFR 1.21. There is only one fee for which a small entity discount was offered prior to March 19, 2013 that is now ineligible for a small entity discount – the fee for a statutory disclaimer under 37 CFR 1.20(d).
The Consolidated Appropriations Act, 2005, provides that the filing fee charged under 35 U.S.C. 41(a)(1)(A) shall be reduced by 75 percent with respect to its application to any small entity “if the application is filed by electronic means as prescribed by the Director” (35 U.S.C. 41(h)(3)). Therefore, the filing fee for a nonprovisional original utility application filed on or after December 8, 2004 by a small entity in compliance with the Office electronic filing system is reduced by 75 percent. See 37 CFR 1.16(a)(1). The 75 percent reduction set forth in 35 U.S.C. 41(h)(3) does not apply to design applications, plant applications, reissue applications, or provisional applications.
35 U.S.C. 41(h)(1) gives the Director the authority to establish regulations defining independent inventors and nonprofit organizations. The Small Business Administration was given authority to establish the definition of a small business concern. A small entity for purposes of paying reduced fees is defined in 37 CFR 1.27(a) as a person, a small business concern, or a nonprofit organization. The term “person” rather than “independent inventor” is used since individuals who are not inventors but who have received some rights in the invention are intended to be covered by 37 CFR 1.27.
37 CFR 1.27 Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.
(a) Definition of small entities. A small entity as used in this chapter means any party (person, small business concern, or nonprofit organization) under paragraphs (a)(1) through (a)(3) of this section.
(1) Person. A person, as used in paragraph (c) of this section, means any inventor or other individual ( e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.
(2) Small business concern. A small business concern, as used in paragraph (c) of this section, means any business concern that:
(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization; and
(ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416.
(3) Nonprofit Organization. A nonprofit organization, as used in paragraph (c) of this section, means any nonprofit organization that:
(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to
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assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
(ii) Is either:
(A) A university or other institution of higher education located in any country;
(B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 19 86 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
(C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201(i)); or
(D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.
(4) License to a Federal agency.
(i) For persons under paragraph (a)(1) of this section, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status.
(ii) For small business concerns and nonprofit organizations under paragraphs (a)(2) and (a)(3) of this section, a license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a license for the purposes of paragraphs (a)(2)(i) and (a)(3)(i) of this section.
(5) Security Interest. A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.
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I. PERSON
37 CFR 1.27(a)(1) defines a person as any inventor or other individual (e.g., an individual to whom an inventor has transferred some rights in the invention), who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization.
II. SMALL BUSINESS CONCERN
In order to be eligible for reduced patent fees as a “small business concern” under 37 CFR 1.27(a)(2), a business concern must meet the standards set forth in 13 CFR 121.801 through 121.805. Questions relating to standards for a small business concern may be directed to:
Small Business Administration Office of Size Standards 409 Third Street, S.W. Washington, DC 20416 (202)205-6618Email: sizestandards@sba.gov
III. NONPROFIT ORGANIZATIONS
37 CFR 1.27(a)(3) defines a nonprofit organization by utilizing and interpreting the definition contained in 35 U.S.C. 201(i). The term “university or other institution of higher education” as used in 37 CFR 1.27(a)(3)(ii)(A) means an educational institution which
(A) admits as regular students only persons having a certificate of graduation from a school providing secondary education, or the recognized equivalent of such a certificate,
(B) is legally authorized within the jurisdiction in which it operates to provide a program of education beyond secondary education,
(C) provides an educational program for which it awards a bachelor’s degree or provides not less than a 2-year program which is acceptable for full credit toward such a degree,
(D) is a public or other nonprofit institution, and
(E) is accredited by a nationally recognized accrediting agency or association, or if not so accredited, is an institution that has been granted preaccreditation status by such agency or association that has been recognized by the Secretary for the granting of preaccreditation status, and the Secretary has determined that there is satisfactory assurance that the institution will meet the accreditation standards of such an agency or association within a reasonable time.
The definition of “university or other institution of higher education” as set forth herein essentially follows the definition of “institution of higher
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education” contained in 20 U.S.C. 1000. Institutions which are strictly research facilities, manufacturing facilities, service organizations, etc., are not intended to be included within the term “other institution of higher education” even though such institutions may perform an educational function or publish the results of their work.
Nonprofit organizations also include organizations of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and which are exempt from taxation under 26 U.S.C. 501(a). Organizations described in 26 U.S.C. 501(c)(3) include corporations, and any community chest, fund, or foundation, organized and operated exclusively for religious, charitable, scientific, testing for public safety, literary, or educational purposes, or to foster national or international amateur sports competition (but only if no part of its activities involve the provision of athletic facilities or equipment), or for the prevention of cruelty to children or animals, no part of the net earnings of which inures to the benefit of any private shareholder or individual, no substantial part of the activities of which is carrying on propaganda, or otherwise attempting to influence legislation (limited exceptions may apply under 26 U.S.C. 501(h)) and which does not participate in, or intervene in (including the publishing or distributing of statements), any political campaign on behalf of (or in opposition to) any candidate for public office.
IV. LOCATION OF SMALL ENTITY
Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States. The same definitions apply to all applicants equally in accordance with the Paris Convention for the Protection of Industrial Property.
V. RIGHTS IN THE INVENTION AND TRANSFER OF RIGHTS
The “rights in the invention” under 37 CFR 1.27(a)(1), (a)(2)(i), and (a)(3)(i) are the rights in the United States. Rights in the invention include the right to exclude others from making, using, offering for sale, or selling the invention throughout
the United States or importing the invention into the United States. Therefore, for example, status as a small entity is lost by an inventor who has transferred or has an obligation to transfer a shop right to an employer who could not qualify as a small entity.
Individual inventors (37 CFR 1.27(a)(1)), small business concerns (37 CFR 1.27(a)(2)), and nonprofit organizations (37 CFR 1.27(a)(3)) can make an assignment, grant, conveyance, or license of partial rights in the invention to another individual(s), small business concern, or nonprofit organization who could qualify as a person (37 CFR 1.27(a)(1)), small business concern, or nonprofit organization. Under the circumstances described, the individual inventor, small business concern, or nonprofit organization could still qualify for small entity status. However, if the individual inventor, small business concern, or nonprofit organization assigned, granted, conveyed, or licensed, or came under an obligation to assign, grant, convey, or license, any rights to the invention to any individual, small business concern, or nonprofit organization which would not qualify as a small entity (37 CFR 1.27(a)), then the inventor, small business concern, or nonprofit organization would no longer qualify for small entity status.
With regard to transfer of rights in the invention, the rights in question are those in the United States to be covered by an application or patent. Transfer of rights to a Japanese patent, for example, would not affect small entity status if no rights in the United States to a corresponding patent were likewise transferred.
The payment of reduced fees under 35 U.S.C. 41 is limited to those situations in which all of the rights in the invention are owned by small entities, i.e., persons, small business concerns, or nonprofit organizations. To do otherwise would be clearly contrary to the intended purpose of the legislation which contains no indication that fees are to be reduced in circumstances where rights are owned by non-small entities. For example, a non-small entity is not permitted to transfer patent rights to a small business concern which would pay the reduced fees and grant a license to the entity.
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If rights transferred to a non-small entity are later returned to a small entity so that all rights are held by small entities, reduced fees may be claimed.
The term “license” in the definitions includes nonexclusive as well as exclusive licenses and royalty free as well as royalty generating licenses. Implied licenses to use and resell patented articles purchased from a small entity, however, will not preclude the proper claiming of small entity status. Likewise, an order by an applicant to a firm to build a prototype machine or product for the applicant’s own use is not considered to constitute a license for purposes of the definitions. A grant of a non-exclusive license to a non-small entity will disqualify applicant from claiming small entity status. See Ulead Systems, Inc. v. Lex Computer & Management Corp., 351 F.3d 1139, 1142, 69 USPQ2d 1097, 1099 (Fed. Cir. 2003).
A security interest does not involve an obligation to transfer rights in the invention for the purposes of 37 CFR 1.27(a)(1) through (a)(3) unless the security interest is defaulted upon. See 37 CFR 1.27(a)(5). For example, an applicant or patentee may take out a loan from a large entity banking institution and the loan may be secured with rights in a patent application or patent of the applicant or patentee, respectively. The granting of such a security interest to the banking institution is not a currently enforceable obligation to assign, grant, convey, or license any rights in the invention to the banking institution. Only if the loan is defaulted upon will the security interest permit a transfer of rights in the application or patent to the banking institution. Thus, where the banking institution is a large entity, the applicant or patentee would not be prohibited from claiming small entity status merely because the banking institution has been granted a security interest, but if the loan is defaulted upon, there would be a loss of entitlement to small entity status. Pursuant to 37 CFR 1.27(g), notification of the loss of entitlement due to default on the terms of the security interest would need to be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which small entity status is no longer appropriate. See MPEP § 509.03, subsection VII. Removal of Status.
Once small entity status is established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due. 37 CFR 1.27(g)(1). 37 CFR 1.27(g)(2) requires that notification of any change in status resulting in loss of entitlement to small entity status be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate. 37 CFR 1.27(g)(2) also requires that the notification of loss of entitlement to small entity status be in the form of a specific written assertion to that extent, rather than only payment of a non-small entity fee. For example, when paying the issue fee in an application that has previously been accorded small entity status and the required new determination of continued entitlement to small entity status reveals that status has been lost, applicant should not just simply pay the non-small entity issue fee or cross out the recitation of small entity status on Part B of the Notice of Allowance and Fee(s) Due (PTOL-85), but should (A) check the appropriate box on Part B of the PTOL-85 form to indicate that there has been a change in entity status and applicant is no longer claiming small entity status, and (B) pay the fee amount for a non-small entity.
VI. RIGHTS HELD BY GOVERNMENT ORGANIZATIONS
Also, although the Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under the rules, a license to a Federal agency resulting from a funding agreement with the agency pursuant to 35 U.S.C. 202(c)(4) will not preclude the proper claiming of small entity status. Furthermore, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status by a person under 37 CFR 1.27(a)(1).
Public Law 96-517 added a new chapter 18 of Title 35 of the United States Code entitled “Patent Rights in Inventions Made With Federal Assistance.” Under the provisions of the statute, each funding agreement between a Federal agency and an individual, small
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business firm, or nonprofit organization must provide, inter alia, that “. . . the Federal agency shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention . . .” See 35 U.S.C. 202(c)(4). The Federal agencies do not qualify as nonprofit organizations for paying reduced patent fees under the rules. Applying this construction to the licensing of an invention to a Federal agency by a person, small business concern, or nonprofit organization pursuant to a funding agreement under 35 U.S.C. 202(c)(4) would preclude their qualifying for paying reduced fees. This, however, would frustrate the intent of Public Law 97-247 and Public Law 96-517 when taken together.
Government organizations as such, whether domestic or foreign, cannot qualify as nonprofit organizations as defined in 37 CFR 1.27(a)(3). Thus, for example, a government research facility or other government-owned corporation could not qualify. 37 CFR 1.27(a)(3) was based upon 35 U.S.C. 201(i), as established by Public Law 96-517. The limitation to “an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a))” would by its nature exclude the U.S. government and its agencies and facilities, including research facilities and government corporations. State and foreign governments and governmental agencies and facilities would be similarly excluded. 37 CFR 1.27(a)(3) is not intended to include within the definition of a nonprofit organization government organizations of any kind located in any country. A university or other institution of higher education located in any country would qualify, however, as a “nonprofit organization” under 37 CFR 1.27(a)(3) even though it has some government affiliation since such institutions are specifically included.
A wholly owned subsidiary of a nonprofit organization or of a university is considered a part
of the nonprofit organization or university and is not precluded from qualifying for small entity status.
509.03 Claiming Small Entity Status [R-07.2015]
37 CFR 1.27 Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.
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(b) Establishment of small entity status permits payment of reduced fees.
(1) A small entity, as defined in paragraph (a) of this section, who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was asserted. Establishment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1).
(2) Submission of an original utility application in compliance with the Office electronic filing system by an applicant who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section in that application allows the payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3).
(c) Assertion of small entity status. Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
(1) Assertion by writing. Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
(i) Be clearly identifiable;
(ii) Be signed (see paragraph (c)(2) of this section); and
(iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
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(3) Assertion by payment of the small entity basic filing, basic transmittal, basic national fee, international search fee, or individual designation fee in an international design application. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in § 1.16(a), (b), (c), (d), or (e), the small entity transmittal fee set forth in§ 1.445(a)(1), the small entity international search fee set forth in § 1.445(a)(2) to a Receiving Office other than the United States Receiving Office in the exact amount established for that Receiving Office pursuant to PCT Rule 16, or the small entity basic national fee set forth in § 1.492(a), will be treated as a written assertion of entitlement to small entity status even if the type of basic filing, basic transmittal, or basic national fee is inadvertently selected in error. The payment, by any party, of the small entity first part of the individual designation fee for the United States to the International Bureau (§ 1.1031) will be treated as a written assertion of entitlement to small entity status.
(i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f), or § 1.16(g).
(ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.
(4) Assertion required in related, continuing, and reissue applications. Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.
(d) When small entity fees can be paid. Any fee, other than the small entity basic filing fees and the small entity national fees of paragraph (c)(3) of this section, can be paid in the small entity amount only if it is submitted with, or subsequent to, the submission of a written assertion of entitlement to small entity status, except when refunds are permitted by § 1.28(a).
(e) Only one assertion required.
(1) An assertion of small entity status need only be filed once in an application or patent. Small entity status, once established, remains in effect until changed pursuant to paragraph (g)(1) of this section. Where an assignment of rights or an obligation to assign rights to other parties who are small entities occurs subsequent to an assertion of small entity status, a second assertion is not required.
(2) Once small entity status is withdrawn pursuant to paragraph (g)(2) of this section, a new written assertion is required to again obtain small entity status.
(f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. The Office will generally not question any assertion of small entity status that is made in accordance with the requirements of this section, but note paragraph (h) of this section.
(g)(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
(2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.
(h) Fraud attempted or practiced on the Office.
(1) Any attempt to fraudulently establish status as a small entity, or pay fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
(2) Improperly, and with intent to deceive, establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
37 CFR 1.4 Nature of correspondence and signature requirements.
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(d) *****
(4) Certifications.
(i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
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(ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
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37 CFR 11.18 Signature and certificate for correspondence filed in the Office.
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(b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
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In order to establish small entity status for the purpose of paying small entity fees, any party (person, small business concern or nonprofit organization) must make an assertion of entitlement to small entity status in the manner set forth in 37 CFR 1.27(c)(1) or (c)(3), in the application or patent in which such small entity fees are to be paid. Under 37 CFR 1.27, as long as all of the rights remain in small entities, the fees established for a small entity can be paid. This includes circumstances where the rights were divided between a person, a small business concern, and a nonprofit organization, or any combination thereof.
Under 37 CFR 1.4(d)(4), an assertion of entitlement to small entity status, including the mere payment of an exact small entity basic filing fee, inherently contains a certification under 37 CFR 11.18(b). It is not required that an assertion of entitlement to small entity status be filed with each fee paid. Rather, once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due. 37 CFR 1.27(g)(1). Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate. 37 CFR 1.27(g)(2).
Status as a small entity may be established in a provisional application by complying with 37 CFR 1.27.
Status as a small entity must be specifically established in each application or patent in which the status is available and desired. Status as a small entity in one application or patent does not affect any other application or patent, including applications or patents which are directly or indirectly dependent upon the application or patent in which the status has been established. The filing of an application under 37 CFR 1.53 as a continuation-in-part, continuation or division (including a continued prosecution application under 37 CFR 1.53(d) for design applications), or the filing of a reissue application requires a new assertion as to continued entitlement to small entity status for
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the continuing or reissue application. Submission of a request for continued examination (RCE) under 37 CFR 1.114 does not require a new determination or assertion of entitlement to small entity status since it is not a new application.
Examiners may use the following form paragraph to notify applicant that he or she may qualify for small entity status.
¶ 5.05 Small Entity Status
This application may qualify for “Small Entity Status” and, therefore, applicant may be entitled to the payment of reduced fees. In order to establish small entity status for the purpose of paying small entity fees, applicant must make a determination of entitlement to small entity status under 37 CFR 1.27(f) and make an assertion of entitlement to small entity status in the manner set forth in 37 CFR 1.27(c)(1) or 37 CFR 1.27(c)(3). Accordingly, if applicant meets the requirements of 37 CFR 1.27(a), applicant must submit a written assertion of entitlement to small entity status under 37 CFR 1.27(c) before fees can be paid in the small entity amount. See 37 CFR 1.27(d). The assertion must be signed, clearly identifiable, and convey the concept of entitlement to small entity status. See 37 CFR 1.27(c)(1). No particular form is required. If applicant qualifies as a small entity under 37 CFR 1.27, applicant may also qualify for “Micro Entity Status” under 35 U.S.C. 123. See 37 CFR 1.29 for the requirements to establish micro entity status for the purpose of paying micro entity fees.
I. ASSERTION BY WRITING
Small entity status may be established by the submission of a simple written assertion of entitlement to small entity status. The assertion must be signed, clearly identifiable, and convey the concept of entitlement to small entity status. 37 CFR 1.27(c)(1). The written assertion is not required to be presented in any particular form. Written assertions of small entity status or references to small entity fees will be liberally interpreted to represent the required assertion. The written assertion can be made in any paper filed in or with the application and need be no more than a simple sentence or a box checked on an application transmittal letter.
II. PARTIES WHO CAN ASSERT AND SIGN AN ENTITLEMENT TO SMALL ENTITY STATUS BY WRITING
A. Applications Filed On or After September 16, 2012
37 CFR 1.27 Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.
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(c) Assertion of small entity status. Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
(1) Assertion by writing. Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
(i) Be clearly identifiable;
(ii) Be signed (see paragraph (c)(2) of this section); and
(iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
(2) Parties who can sign and file the written assertion. The written assertion can be signed by:
(i) The applicant (§ 1.42 or § 1.421);
(ii) A patent practitioner of record or a practitioner acting in a representative capacity under § 1.34;
(iii) The inventor or a joint inventor, if the inventor is the applicant; or
(iv) The assignee.
(3) Assertion by payment of the small entity basic filing, basic transmittal, basic national fee, or international search fee, or individual designation fee in an international design application. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in §§ 1.16(a), 1.16(b), 1.16(c), 1.16(d), 1.16(e), the small entity transmittal fee set forth in § 1.445(a)(1), the small entity international search fee set forth in § 1.445(a)(2) to a Receiving Office other than the United States Receiving Office in the exact amount established for that Receiving Office pursuant to PCT Rule 16,
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or the small entity basic national fee set forth in § 1.492(a), will be treated as a written assertion of entitlement to small entity status even if the type of basic filing, basic transmittal, or basic national fee is inadvertently selected in error. The payment, by any party, of the small entity first part of the individual designation fee for the United States to the International Bureau (§ 1.1031) will be treated as a written assertion of entitlement to small entity status.
(i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f), or § 1.16(g).
(ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.
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For applications filed on or after September 16, 2012, the written assertion of entitlement to small entity status can be signed by: (1) the applicant (37 CFR 1.42 or 1.421); (2) a patent practitioner of record or acting in a representative capacity under 37 CFR 1.34; (3) the inventor or a joint inventor, if the inventor is the applicant; or (4) the assignee. See 37 CFR 1.27(c)(2). The change to 37 CFR 1.27 for applications filed on or after September 16, 2012, is for consistency with the change in practice concerning who is the applicant for patent in 37 CFR 1.42. The applicant as defined in 37 CFR 1.42 (or 37 CFR 1.421) can sign a written assertion of small entity status. Thus, the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under 37 CFR 1.46 can sign the written assertion of small entity status. In addition, if there are joint inventors who are the applicant, then one of the joint inventors can sign a written assertion of small entity status and thereby establish small entity status for the application (but see paragraph VI. below). The assignee can sign a written assertion of small entity status even if the assignee is not the applicant or is a juristic entity.
B. Applications Filed Before September 16, 2012
37 CFR 1.27 (pre-AIA) Definition of small entities and establishing status as a small entity to permit payment of small
entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.
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(c) Assertion of small entity status. Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
(1) Assertion by writing. Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
(i) Be clearly identifiable;
(ii) Be signed (see paragraph (c)(2) of this section); and
(iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
(2) Parties who can sign and file the written assertion. The written assertion can be signed by:
(i) One of the parties identified in § 1.33(b) (e.g., an attorney or agent registered with the Office), § 3.73(b) of this chapter notwithstanding, who can also file the written assertion;
(ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been submitted), notwithstanding § 1.33(b)(4), who can also file the written assertion pursuant to the exception under § 1.33(b) of this part; or
(iii) An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identified under § 1.33(b) of this part.
(3) Assertion by payment of the small entity basic filing or basic national fee. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in §§ 1.16(a), 1.16(b), 1.16(c), 1.16(d), 1.16(e), or the small entity basic national fee set forth in § 1.492(a), will be treated as a written assertion of entitlement to small entity status even if the type of basic filing or basic national fee is inadvertently selected in error.
(i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is
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applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f), or § 1.16(g).
(ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.
(4) Assertion required in related, continuing, and reissue applications. Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.
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For applications filed before September 16, 2012, the parties who can assert entitlement to small entity status by writing include all parties permitted by pre-AIA 37 CFR 1.33(b) to file a paper in an application, including a registered practitioner. Pre-AIA 37 CFR 1.27(c)(2)(i). Additionally, one of the individuals identified as an inventor, or a partial assignee, can also sign the written assertion. Pre-AIA 37 CFR 1.27(c)(2)(ii) and (iii). By way of example, in the case of three pro se inventors for a particular application, one of the three inventors upon filing the application can submit a written assertion of entitlement to small entity status and thereby establish small entity status for the application, (but see paragraph VI. below). Where rights are divided between a person, small business concern, and nonprofit organization, or any combination thereof, only one party is required to assert small entity status. For example, where one of two inventors has assigned his or her rights in the invention, it is sufficient if either of the two inventors or the assignee asserts entitlement to small entity status.
Any inventor is permitted to submit a written assertion of small entity status, including individuals identified as inventors but who are not officially named of record as an executed oath or declaration under pre-AIA 37 CFR 1.63 has not yet been submitted. See pre-AIA 37 CFR 1.41(a)(1). Where an application is filed without an executed oath or
declaration pursuant to pre-AIA 37 CFR 1.53(f), the Office will accept the written assertion of an individual who has merely been identified as an inventor on filing of the application (e.g., application transmittal letter) as opposed to having to be named as an inventor by the filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 (pre-AIA 37 CFR 1.41(a)(1)). Pre-AIA 37 CFR 1.4(d)(4) and 37 CFR 11.18(b) are seen as sufficient basis to permit any individual to provide a written assertion so long as the individual identifies himself or herself as an inventor. An actual inventor who has not been identified as an inventor (e.g., by way of application transmittal letter) or named as an inventor (i.e., executed pre-AIA 37 CFR 1.63 oath or declaration) in the file record may not file a written assertion as to small entity entitlement.
Where an oath or declaration under pre-AIA 37 CFR 1.63 is later filed, any original written assertion as to small entity status (which has been previously appropriately submitted to the Office) will remain unless changed by an appropriate party under 37 CFR 1.27(g)(2). Where a later-filed oath or declaration under pre-AIA 37 CFR 1.63 sets forth an inventive entity that does not include the person who initially was identified as an inventor and who asserted small entity status, small entity status will also remain.
An assignee asserting small entity status is not required to submit a pre-AIA 37 CFR 3.73(b) certification whether the assignee is a partial assignee or an assignee of the entire right, title, and interest, (but see paragraph III. below).
III. PARTIES WHO CAN FILE THE WRITTEN ASSERTION ONCE SIGNED
For applications filed before September 16, 2012, a distinction exists as to who can file a written assertion of entitlement to small entity status once the written assertion is signed. Pre-AIA 37 CFR 1.27(c)(2)(ii) and pre-AIA 37 CFR 1.33(b) permit one of several inventors to file as well as to sign a written assertion. The same is not true for a partial assignee. Pre-AIA 37 CFR 1.27(c)(2)(iii). While a partial assignee may sign a written assertion, the written assertion must be filed by an appropriate party under pre-AIA 37 CFR 1.33(b).
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IV. ASSERTION BY PAYMENT OF SMALL ENTITY BASIC FILING. BASIC NATIONAL FEE, OR INDIVIDUAL DESIGNATION FEE
The payment of an exact small entity basic filing (37 CFR 1.16(a), (b), (c), (d), or (e)), basic national fee (37 CFR 1.492(a)), or individual designation fee in an international design application (37 CFR 1.1031) is also considered to be a sufficient assertion of entitlement to small entity status. 37 CFR 1.27(c)(3). An applicant filing a patent application and paying an exact small entity basic filing, basic national fee, or individual designation fee automatically establishes small entity status for the application even without any other assertion of small entity status. This is so even if an applicant inadvertently selects the wrong type of small entity basic filing or basic national fee for the application being filed (e.g., the exact small entity basic filing fee for a design application is selected but the application is a utility application). If small entity status was not established when the basic filing or basic national fee was paid, such as by payment of a non-small entity basic filing, basic national fee, individual designation fee, a later claim to small entity status requires a written assertion under 37 CFR 1.27(c)(1). Payment of a small entity fee other than a small entity basic filing, basic national fee, or individual designation fee (e.g., extension of time fee, issue fee, or reexamination filing fee) without inclusion of a written assertion is not sufficient.
Even though applicants can assert small entity status only by payment of an exact small entity basic filing, basic national fee, or individual designation fee in an international design application, the Office encourages applicants to also file a written assertion of small entity status as well as to pay the exact amount of the small entity basic filing, basic national fee, or individual designation fee. The Office’s application transmittal forms include a check box that can be used to submit a written assertion of small entity status. A written assertion will provide small entity status should applicant fail to pay the exact small entity basic filing, basic national fee, or individual designation fee. The provision providing for small entity status by payment of an exact small entity basic filing, basic national fee, or individual designation fee is intended to act as a safety net to
avoid possible financial loss to inventors or small businesses that qualify for small entity status.
Even though small entity status is accorded where the wrong type of small entity basic filing fee, basic national fee, or individual designation fee in an international design application is selected but the exact amount of the fee is paid, applicant still needs to pay the correct small entity amount for the basic filing, basic national fee, or individual designation fee in an international design application where selection of the wrong type of fee results in a deficiency. While an accompanying general authorization to charge any additional fees suffices to pay the balance due of the proper small entity basic filing, basic national fee or individual designation fee, specific authorizations to charge fees under 37 CFR 1.17 or extension of time fees do not suffice to pay any balance due of the proper small entity basic filing, basic national fee, or individual designation fee because they do not actually authorize payment of small entity amounts. If payment is attempted of the proper type of basic filing, basic national fee, or individual designation fee (applicant correctly identifies the type of fee for the type of application being filed), but the amount of the fee paid is not the exact small entity fee required (an incorrect fee amount is supplied) and a written assertion of small entity status is not present, small entity status will not be accorded. The Office will mail a notice of insufficient basic filing, basic national fee, or individual designation fee in an international design application with a surcharge due if an authorization to charge the basic filing or basic national fee is not present. The Office does not consider a basic filing or basic national fee submitted in an amount above the correct fee amount, but below the non-small entity fee amount, as a request to establish small entity status unless an additional written assertion is also present. The submission of a basic filing or basic national fee below the correct fee amount also does not serve to establish small entity status.
Where an application is originally filed by a party, who is in fact a small entity, with an authorization to charge fees (including basic filing fee, basic national fee, or individual designation fee) and there is no indication (assertion) of entitlement to small entity status present, that authorization is not
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sufficient to establish small entity status unless the authorization is specifically directed to small entity basic filing, basic national, or individual designation fees. The general authorization to charge fees will continue to be acted upon immediately and the full (not small entity) basic filing, basic national, or individual designation fees will be charged. Applicant will have three months under 37 CFR 1.28 to request a refund by asserting entitlement to small entity status. This is so even if the application is a continuing application where small entity status had been established in the prior application.
V. PARTIES WHO CAN ASSERT AND FILE SMALL ENTITY STATUS BY PAYMENT
Where small entity status is sought by way of payment of the basic filing fee, basic national fee, or individual designation fee, any party (including a third party), may submit payment, such as by check, and small entity status will be accorded.
VI. CONTINUED OBLIGATIONS FOR THOROUGH INVESTIGATION OF SMALL ENTITY STATUS
While small entity status is not difficult to obtain, it should be clearly understood that applicants need to do a complete and thorough investigation of all facts and circumstances before making a determination of actual entitlement to small entity status. 37 CFR 1.27(f). Where entitlement to small entity status is uncertain, it should not be claimed.
The assertion of small entity status (e.g., even by mere payment of the exact small entity basic filing fee) is not appropriate until such an investigation has been completed. For example, where there are three pro se inventors, before one of the inventors pays the small entity basic filing, basic national, or individual designation fee to establish small entity status, the single inventor asserting entitlement to small entity status should check with the other two inventors to determine whether small entity status is appropriate.
If small entity status is desired on the basis that the entity is a small business concern, the investigation should include a review of whether the business is a small business concern as defined by section 3 of
the Small Business Act (Public Law 85-536 as amended by Public Law 106-50). Review of whether the business concern meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees is also appropriate. Additionally, if the business has assigned, granted, conveyed or licensed (or is under an obligation to do so) any rights in the invention to others directly or indirectly, the same review for each other entity would also be appropriate.
Furthermore, once status as a small entity has been established in an application, a new determination of entitlement to small entity status is needed in the application or patent (1) when the issue fee is due and (2) when any maintenance fee is due. If an ex parte reexamination is requested for a patent, the requester must affirmatively state in the reexamination request that it is entitled to small entity in order for a requester to pay the small entity filing fees. For example, requester can affirmatively assert small entity status by checking the appropriate box in line 3 on the transmittal form (PTO/SB/57). It should be appreciated that the costs incurred in appropriately conducting the initial and subsequent investigations may outweigh the benefit of claiming small entity status. For some applicants it may be desirable to file as a non-small entity (by not filing a written assertion of small entity status and by submitting non-small entity fees) rather than undertaking the appropriate investigations which may be both difficult and time-consuming and which may be cost effective only where several applications are involved.
The intent of 37 CFR 1.27 is that the person making the assertion of entitlement to small entity status is the person in a position to know the facts about whether or not status as a small entity can be properly established. That person, thus, has a duty to investigate the circumstances surrounding entitlement to small entity status to the fullest extent. It is important to note that small entity status must not be claimed unless the person or persons can unequivocally make the required self-certification.
The U.S. Patent and Trademark Office does not give advisory opinions as to whether or not a specific individual or organization qualifies as a small entity. In establishing reduced fees for persons, small
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business concerns, and nonprofit organizations, the Congressional consideration of the legislation which became Public Law 97-247 indicated an intent that the U.S. Patent and Trademark Office rely exclusively on a self-certification that a patent applicant qualifies as an independent inventor (now person), small business concern, or nonprofit organization. In addition, it was also stated during Congressional consideration of the legislation that no additional resources would be required to administer the system whereby fees would be reduced for small entities.
In view of the intent expressed during Congressional consideration of the legislation, it would be inappropriate for the U.S. Patent and Trademark Office to give advisory opinions as to entitlement to small entity status. Accordingly, any individual seeking to establish status as a small entity for purposes of paying the fee in an application or patent must file the assertion required by 37 CFR 1.27 and in so doing is self-certifying entitlement to small entity status.
Consistent with 37 CFR 1.4(d)(4), the payment of a small entity basic filing or national fee constitutes a certification under 37 CFR 11.18(b). Thus, a simple payment of the small entity basic filing, basic national, or individual designation fee, without a specific written assertion, activates the provisions of 37 CFR 1.4(d)(4) and, by that, invokes the self-certification requirement set forth in 37 CFR 11.18(b), regardless of whether the party is a practitioner or non-practitioner.
VII. REMOVAL OF STATUS
Once small entity status is established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due. 37 CFR 1.27(g)(1). 37 CFR 1.27(g)(2) requires that notification of any change in status resulting in loss of entitlement to small entity status be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate. 37 CFR 1.27(g)(2) also requires that the notification of loss
of entitlement to small entity status be in the form of a specific written assertion to that extent, rather than only payment of a non-small entity fee. For example, when paying the issue fee in an application that has previously been accorded small entity status and the required new determination of continued entitlement to small entity status reveals that status has been lost, applicant should not just simply pay the non-small entity issue fee or cross out the recitation of small entity status on Part B of the Notice of Allowance and Fee(s) Due (PTOL-85), but should (A) check the appropriate box on Part B of the PTOL-85 form to indicate that there has been a change in entity status and applicant is no longer claiming small entity status, and (B) pay the fee amount for a non-small entity.
For correcting errors in small entity status, see paragraph X below.
VIII. IMPROPERLY ESTABLISHING SMALL ENTITY STATUS
37 CFR 1.27(h) indicates that any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office. Applicants should not rely on any oral advice inadvertently given by an Office employee as to entitlement to small entity status. In addition, improperly and with intent to deceive establishing status as a small entity or paying fees as a small entity will be considered as a fraud practiced or attempted on the Office. Normally, the Office will not question a claim to status as a small entity.
IX. REFUNDS BASED ON LATER ESTABLISHMENT OF SMALL ENTITY STATUS
37 CFR 1.28 Refunds when small entity status is later established; how errors in small entity status are excused.
(a) Refunds based on later establishment of small entity status. A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136. Status as a small entity is waived for any fee by the failure to establish the status prior to paying, at the time of paying, or within three months of the date of payment of, the full fee.
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(b) Date of payment.
(1) The three-month period for requesting a refund, pursuant to paragraph (a) of this section, starts on the date that a full fee has been paid;
(2) The date when a deficiency payment is paid in full determines the amount of deficiency that is due, pursuant to paragraph (c) of this section.
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37 CFR 1.28(a) provides a three-month time period for requesting a refund of a portion of a non-small entity fee based on later establishment of small entity status. The start date of the three-month refund period of 37 CFR 1.28(a) is the date the full fee has been paid. See 37 CFR 1.28(b)(1). Payment by authorization to charge a deposit account is treated for refund purposes the same as payments by other means (e.g., check or credit card authorizations), with each being treated as paid (for refund purposes) on the date of receipt in the Office as defined by 37 CFR 1.6. Thus, the date of receipt of an authorization to charge fees starts the three-month period for refunds under 37 CFR 1.28(a), not the date of debit of the fee to a deposit account. If a payment is mailed with a Certificate of Mailing under 37 CFR 1.8, the three month period for requesting a refund will start on the actual date of receipt of the payment in the Office, and not the Certificate of Mailing date. If a
payment is filed by Priority Mail Express® under 37 CFR 1.10, the date of deposit with the United States Postal Service (shown by the “date accepted”
on the Priority Mail Express® mailing label or other official USPS notation) is the date of receipt of the payment by the Office under 37 CFR 1.10(a) and the three month period for requesting a refund starts on the date shown by the “date accepted” on the
Priority Mail Express® mailing label rather than the date when the payment actually reaches the Office.
Request for refunds, along with the assertions under 37 CFR 1.27(c), should be addressed to Mail Stop 16, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
X. CORRECTING ERRORS IN SMALL ENTITY STATUS
37 CFR 1.28 Refunds when small entity status is later established; how errors in small entity status are excused.
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(c) How errors in small entity status are excused. If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section:
(1) Separate submission required for each application or patent. Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error), required by paragraph (c)(2) of this section, for one application or one patent. Where more than one application or patent is involved, separate submissions of deficiency payments (e.g., checks) and itemizations are required for each application or patent. See § 1.4(b).
(2) Payment of deficiency owed. The deficiency owed, resulting from the previous erroneous payment of small entity fees, must be paid.
(i) Calculation of the deficiency owed. The deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current fee amount (for other than a small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously erroneously paid as a small entity. Where a fee paid in error as a small entity was subject to a fee decrease between the time the fee was paid in error and the time the deficiency is paid in full, the deficiency owed is equal to the amount (previously) paid in error;
(ii) Itemization of the deficiency payment. An itemization of the total deficiency payment is required. The itemization must include the following information:
(A) Each particular type of fee that was erroneously paid as a small entity, ( e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a non-small entity;
(B) The small entity fee actually paid, and when. This will permit the Office to differentiate, for example, between two one-month extension of time fees erroneously paid as a small entity but on different dates;
(C) The deficiency owed amount (for each fee erroneously paid); and
(D) The total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts set forth in paragraph (c)(2)(ii)(C) of this section.
(3) Failure to comply with requirements. If the requirements of paragraphs (c)(1) and (c)(2) of this section are not complied with, such failure will either: be treated as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month
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non-extendable time period under § 1.136(a) to avoid the return of the fee deficiency paper, at the option of the Office.
(d) Payment of deficiency operates as notification of loss of status. Any deficiency payment (based on a previous erroneous payment of a small entity fee) submitted under paragraph (c) of this section will be treated under § 1.27(g)(2) as a notification of a loss of entitlement to small entity status.
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37 CFR 1.28(c) provides that if small entity status is established in good faith and the small entity fees are paid in good faith, and it is later discovered that such status as a small entity was established in error or through error the Office was not notified of a change of status, the error will be excused upon compliance with the separate submission and itemization requirements of 37 CFR 1.28(c)(1) and (c)(2), and the deficiency payment requirement of 37 CFR 1.28(c)(2). The deficiency amount owed under 37 CFR 1.28(c) is calculated using the date on which the deficiency was paid in full. See 37 CFR 1.28(b)(2).
37 CFR 1.28(c)(1) requires that a deficiency paper be limited to one application or patent file. Where, for example, the same set of facts has caused errors in payment in more than one application and/or patent file, a separate paper must be submitted in each file for which an error is to be excused.
37 CFR 1.28(c)(2) requires that for each fee that was erroneously paid as a small entity, the deficiencies owed must be paid, and the payment of the deficiencies must be itemized. The deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current fee amount (for other than a small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment. Where there has been a fee decrease, the deficiency owed is equal to the amount (previously) paid in error, not the difference between the amount (previously) paid in error and the new lower non-small entity fee. 37 CFR 1.28(c)(2)(ii) requires the following itemizations: (A) the particular fee involved (e.g., basic filing fee, extension of time fee); (B) the small entity fee amount actually paid and when (for example, distinguishing between two one-month extension of time fees erroneously paid on two different dates); (C) the actual deficiency
owed for each fee previously paid in error; and (D) the total deficiency owed (i.e., the sum of the individual deficiencies owed).
Under 37 CFR 1.28(c)(3), the failure to comply with the requirements of 37 CFR 1.28(c)(1) and (c)(2) permits the Office at its option to either charge a processing fee (37 CFR 1.17(i)) to process the paper or require compliance within a one-month non-extendable time period to avoid return of the paper.
Any paper submitted under 37 CFR 1.28(c) is treated as a notification of loss of small entity status under 37 CFR 1.27(g)(2). See 37 CFR 1.28(d).
A maintenance fee improperly paid as a small entity where small entity status has been established but is no longer appropriate will be treated as a matter under 37 CFR 1.28(c) and will not be considered to involve expiration of the patent under 37 CFR 1.378. On the other hand, payment of a maintenance fee in the small entity amount where small entity status has not been established would result in the expiration of the patent under 37 CFR 1.378 unless the full maintenance fee due or a written assertion of small entity status is timely filed.
509.04 Micro Entity Status — Definitions [R-07.2015]
35 U.S.C. 123 Micro entity defined.
(a) IN GENERAL.—For purposes of this title, the term "micro entity" means an applicant who makes a certification that the applicant—
(1) qualifies as a small entity, as defined in regulations issued by the Director;
(2) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under section 111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under section 41(a) was not paid;
(3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
(4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or
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convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
(b) APPLICATIONS RESULTING FROM PRIOR EMPLOYMENT.—An applicant is not considered to be named on a previously filed application for purposes of subsection (a)(2) if the applicant has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s previous employment.
(c) FOREIGN CURRENCY EXCHANGE RATE.—If an applicant’s or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s or entity’s gross income exceeds the threshold specified in paragraphs (3) or (4) of subsection (a).
(d) INSTITUTIONS OF HIGHER EDUCATION.—For purposes of this section, a micro entity shall include an applicant who certifies that—
(1) the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
(2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education.
(e) DIRECTOR’S AUTHORITY.—In addition to the limits imposed by this section, the Director may, in the Director’s discretion, impose income limits, annual filing limits, or other limits on who may qualify as a micro entity pursuant to this section if the Director determines that such additional limits are reasonably necessary to avoid an undue impact on other patent applicants or owners or are otherwise reasonably necessary and appropriate. At least 3 months before any limits proposed to be imposed pursuant to this subsection take effect, the Director shall inform the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate of any such proposed limits.
Public Law 112-29, sec. 10(b), 125 Stat. 284 (September 16, 2011)( Leahy-SmithAmerica Invents Act (AIA)) adds 35 U.S.C. 123 to define a ‘‘micro entity.’’ March 19, 2013 is the date that the 75% micro entity discount first became available, because that is the date that fees “for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents” were first set or adjusted by rulemaking under the Office’s fee setting
authority. See Setting and Adjusting Patent Fees, 78 FR 4212 (January 18, 2013) which became effective in large part on March 19, 2013. January 1, 2014 is the rulemaking’s effective date for the micro entity discount as it applies to certain “filing, searching [and] examining” fees for international applications under the PCT.
The fees which are reduced by 75% for micro entities include filing fees (nonprovisional and provisional), search fees, examination fees, issue fees, and appeal fees for utility, design, plant, and reissue patent applications. Also included are patent maintenance fees including the maintenance fee grace period surcharges as well as the surcharge for a petition to accept a delayed maintenance fee payment in order to reinstate an expired patent. Included within the ambit of filing fees subject to the micro entity discount are excess claims fees, application size fees, and the surcharge required by 37 CFR 1.16(f) if either the basic filing fee or the oath or declaration for a nonprovisional application was not present on the filing date. Included within the ambit of examination fees subject to the micro entity discount are the fees for requesting prioritized examination under 37 CFR 1.102(e), ex parte reexamination under 37 CFR 1.510 (only if the request is filed by the patent owner), and supplemental examination under 37 CFR 1.601. Included within the ambit of appeal fees subject to the micro entity discount are the fees for filing notice of appeal, forwarding an appeal to the PTAB, and requesting an oral hearing.
I. REQUIREMENT FOR A CERTIFICATION
35 U.S.C. 123 requires a certification as a condition for an applicant to be considered a micro entity. The certification must be in writing and must be filed prior to or at the time a fee is first paid in the micro entity amount in an application or patent. Status as a micro entity in one application or patent does not affect the status of any other application or patent. The refiling of an application under 37 CFR 1.53 as a continuation or divisional, or continuation-in-part application (including a continued prosecution application under 37 CFR 1.53(d) (design applications only)), or the filing of a reissue application, requires a new certification of entitlement to micro entity status in the continuing or reissue application. See 37 CFR 1.29(e). A fee
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may be paid in the micro entity amount only if it is submitted with, or subsequent to, the submission of a certification of entitlement to micro entity status. See 37 CFR 1.29(f). The micro entity provisions of 37 CFR 1.29 apply to applications filed before, on, and after March 19, 2013. A micro entity certification may be filed in pending applications, reexamination proceedings (for patent owners only, and supplemental examination proceedings at any time during prosecution and in patents prior to or concurrent with a maintenance fee payment.
Any attempt to fraudulently establish status or pay fees as a micro entity shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status or paying fees as a micro entity shall be considered as a fraud practiced or attempted on the Office. See 37 CFR 1.29(j).
II. BASES FOR ESTABLISHING MICRO ENTITY STATUS
There are two separate bases for establishing micro entity status referred to as the “gross income basis” under 35 U.S.C. 123(a) and the “institution of higher education basis” under 35 U.S.C. 123(d). 37 CFR 1.29(a) implements the gross income basis for establishing micro entity status, and 37 CFR 1.29(d) implements the institution of higher education basis for establishing micro entity status. The Office’s micro entity certification forms are form PTO/SB/15A (gross income basis)(see MPEP § 509.04(a)) and form PTO/SB/15B (institution of higher education basis)(see MPEP § 509.04(b)). No evidence such as a copy of a tax return need accompany the certification form(s). In addition, the certification form(s) need not be notarized. The certification form(s) must, however, identify the application or patent to which it pertains and it must be signed by an authorized party as set forth in MPEP § 509.04(c). For new application filings not previously assigned a patent application number, providing the first named inventor and the title of the invention at the top of the certification form(s) in the spaces provided will be sufficient to identify the application. It is strongly recommended that the following document descriptions in EFS-Web be used as appropriate:
• Certification of Micro Entity (Gross Income Basis)
• Certification of Micro Entity (Education Basis)
509.04(a) Gross Income Basis for Micro Entity Status [R-11.2013]
35 U.S.C. 123(a) provides that the term ‘‘micro entity’’means an applicant who makes a certification that the applicant: (1) qualifies as a small entity as defined in 37 CFR 1.27; (2) has not been named as an inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid; (3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and (4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census. 37 CFR 1.29(a)(1)-(4) implements the requirements under 35 U.S.C. 123(a)(1)-(4) for establishing micro entity status on the gross income basis.
The income level that is three times the median household income for the preceding calendar year, as most recently reported by the Bureau of the Census (i.e., the income threshold set forth in 35 U.S.C. 123(a)(3) and (a)(4)) is referred to as the “gross income limit” or the “maximum qualifying gross income.” The Office’s micro entity status certification form PTO/SB/15A refers to the official Web page address providing the up-to-date maximum qualifying gross income. Each inventor and each non-inventor applicant (e.g., an assignee-applicant) must individually meet the gross
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income limit. The gross income limit applies to the assignee (if any) regardless of whether the assignee is identified as the applicant. Under 37 CFR 1.29(a)(4), the gross income limit applies to each party with an ownership interest in the application including any party(ies) to whom an ownership interest obligation is owed. Accordingly, each assignee, licensee, and inventor must individually meet the gross income limit.
35 U.S.C. 123(b) provides that an applicant is not considered to be named on a previously filed application for purposes of 35 U.S.C. 123(a)(2) if the applicant has assigned, or is under an obligation by contract or law to assign, all ownership rights in the previously filed application as the result of the applicant’s previous employment. 37 CFR 1.29(b) implements the provisions of 35 U.S.C. 123(b).
35 U.S.C. 123(c) provides that if an applicant’s or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s or entity’s gross income exceeds the gross income limit specified in 35 U.S.C. 123(a)(3) or (4). 37 CFR 1.29(c) implements the provisions of 35 U.S.C. 123(c).
I. SECTION 1.29(a) – GROSS INCOME BASIS REQUIREMENTS
37 CFR 1.29 Micro entity status.
(a) To establish micro entity status under this paragraph, the applicant must certify that:
(1) The applicant qualifies as a small entity as defined in § 1.27;
(2) Neither the applicant nor the inventor nor a joint inventor has been named as the inventor or a joint inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid;
(3) Neither the applicant nor the inventor nor a joint inventor, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
(4) Neither the applicant nor the inventor nor a joint inventor has assigned, granted, or conveyed, nor is under an
obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
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37 CFR 1.29(a)(1)-(4) sets forth the requirements for establishing micro entity status on the gross income basis. If an application names more than one inventor, each inventor must meet the requirements of 37 CFR 1.29(a)(1)-(4) to file a micro entity certification on the gross income basis in the application. If the applicant is other than the inventor(s) (e.g., an assignee-applicant), then each such non-inventor applicant as well as each inventor must meet the requirements of 37 CFR 1.29(a)(1)-(4) to file a micro entity certification on the gross income basis in the application. If there is any assignee or licensee that received “ownership rights” from any inventor or non-inventor applicant, then the party(ies) with the “ownership interest” must also meet the gross income limit requirement.
Because each inventor and each non-inventor applicant (e.g., assignee-applicant) must separately meet the requirements under 37 CFR 1.29(a)(1)-(4), it would not be appropriate to file a micro entity certification under 37 CFR 1.29(a) for the application if there were more than one applicant or inventor and not all of the applicants and inventors qualified as micro entities under 35 U.S.C. 123(a): e.g., (1) an applicant or inventor exceeded the gross income limit; (2) an applicant or inventor had more than four other nonprovisional applications; or (3) an applicant or inventor had assigned, granted, or conveyed the application or was under an obligation to do so, to an entity that exceeds the gross income limit. Additionally, the gross income limit under 35 U.S.C. 123(a)(3) applies to each applicant’s and inventor’s income separately (i.e., the combined gross income of all of the applicants and inventors need not be below the income level in 35 U.S.C. 123(a)(3)). Further, the assignment requirement in 37 CFR 1.29(a)(4) applies to each applicant and inventor (i.e., if an applicant or inventor assigns or is obligated to assign the invention to more than one assignee (e.g., half interest in the invention to two
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assignees), each of the assignees must meet the income limit specified in 37 CFR 1.29(a)(4)). Note also that in this context an inventor ordinarily should qualify as a small entity under 37 CFR 1.29(a)(1) and 1.27(a)(1). Under 37 CFR 1.27(a)(1), an inventor generally is a small entity and retains such status even if the inventor assigns some rights to another small entity. Similarly, to obtain micro entity status, 37 CFR 1.29(h) requires that any non-applicant assignee be a small entity.
CERTIFICATION FORM – GROSS INCOME BASIS
The Office’s form PTO/SB/15A contains the certifications under 37 CFR 1.29(a)(1)-(4) that are required to establish micro entity status on the gross income basis. The form refers to the certification requirements as: (1) Small Entity Requirement, (2) Application Filing Limit, (3) Gross Income Limit on Applicants and Inventors, and (4) Gross Income Limit on Parties with an “Ownership Interest.”
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A. Small Entity Requirement
In order to meet the small entity requirement, every party holding rights in the application must qualify as a small entity under 37 CFR 1.27. If any rights in the application are assigned, granted, conveyed, or licensed to a party that does not qualify as a small
entity under 37 CFR 1.27, the applicant cannot qualify for any patent fee discount. An obligation to assign, grant, convey, or license rights in the application to a party that does not qualify for small entity status would also disqualify the applicant from receiving any patent fee discount. In order to qualify for small entity status, and in order to meet the small
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entity requirement for micro entity status, there can be no party holding rights or obligated rights in the application that does not qualify as a small entity. See MPEP § 509.02 for a discussion of the requirements for small entity status.
B. Application Filing Limit
For purposes of establishing micro entity status under the “gross income” basis, the application filing limit as set forth in 37 CFR 1.29(a)(2) includes: (i) previously filed U.S. nonprovisional applications (e.g., utility, design, plant, continuation, and divisional applications), (ii) previously filed U.S. reissue applications, and (iii) previously filed U.S. national stage applications under the Patent Cooperation Treaty (PCT). All such applications naming the inventor or a joint inventor are counted toward the application filing limit, whether the applications were filed before, on, or after March 19, 2013. Further, it does not matter whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.
The application filing limit does not include: (i) foreign applications; (ii) international (PCT) applications for which the basic U.S. national stage filing fee was not paid; and (iii) provisional applications. In addition, where an applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s, inventor’s, or joint inventor’s previous employment the applicant, inventor or joint inventor is not considered to be named on the prior filed application for purposes of determining micro entity status. See 37 CFR 1.29(b).
Because the four application limit is a limit on previously filed U.S. nonprovisional applications, reissues applications, and national stage applications, the maximum number of applications in which fees can be paid at the micro entity discount rate can vary from 0 to 5 for any given inventor. For example, consider a person named as a sole inventor in five previously filed U.S. nonprovisional patent applications in which all ownership rights have remained with the sole inventor (i.e., no assignment
or licensing of patent rights ever occurred). This person was not named as an inventor in any other application. Because all five applications count against the application filing limit, this person cannot be named as an inventor in any future-filed application entitled to micro entity status on the “gross income” basis under 37 CFR 1.29(a). (However, the filing of a future sixth application will not jeopardize entitlement to micro entity status in any of the five applications already filed.) If the first two of the inventor’s five applications went abandoned prior to March 19, 2013, then the inventor would not have had the opportunity to pay fees at the micro entity discount rate in those two applications. (The micro entity discount became available for the first time on March 19, 2013.) However if the third-filed application issued as a patent, then for purposes of paying maintenance fees, the applicant-turned-patentee (the sole inventor in this example) may establish entitlement to micro entity status on the “gross income” basis if all 4 requirements under 37 CFR 1.29(a) are met. If the fourth and fifth filed applications are still pending, then similarly, the inventor may establish entitlement to micro entity status on the “gross income” basis if the four requirements under 37 CFR 1.29(a) are met.
C. Gross Income Limit on Applicants and Inventors
For purposes of qualifying for micro-entity status under 37 CFR 1.29(a) and paying fees at the micro entity discount, it is required that no inventor had a gross income exceeding the gross income limit in the calendar year preceding the time of fee payment. This gross income level requirement also applies to any applicant who is not an inventor (e.g., an assignee-applicant). 35 U.S.C. 123(a)(3) and 37 CFR 1.29(a)(3) define the gross income limit as “three times median household income for [the] preceding calendar year, as most recently as reported by the Bureau of the Census.” Based on that definition, the gross income limit is reported on the USPTO website at www.uspto.gov/patent/laws-and-regulations/ micro-entity-status-gross-income-limit as the “maximum qualifying gross income.” At the time any fee is to be paid in the micro entity amount, it is required that no inventor and no non-inventor applicant (if any) have a preceding calendar year’s gross income exceeding the “maximum qualifying gross income” posted on the USPTO website.
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It should be noted that “gross income” means total income. “Gross income” and “adjusted gross income” are not the same thing. Adjusted gross income is defined as gross income minus adjustments to income. For purposes of micro entity status it is “gross income” – not “adjusted gross income” that matters. Section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)) provides that: "[e]xcept as otherwise provided in this subtitle, gross income means all income from whatever source derived, including (but not limited to) the following items: (1) Compensation for services, including fees, commissions, fringe benefits, and similar items; (2) Gross income derived from business; (3) Gains derived from dealings in property; (4) Interest; (5) Rents; (6) Royalties; (7) Dividends; (8) Alimony and separate maintenance payments; (9) Annuities; (10) Income from life insurance and endowment contracts; (11) Pensions; (12) Income from discharge of indebtedness; (13) Distributive share of partnership gross income; (14) Income in respect of a decedent; and (15) Income from an interest in an estate or trust."
With the coming of each new year, the “preceding calendar year” advances, and anyone’s preceding calendar year’s gross income may change as a result. Therefore, if the prosecution of an application under micro entity status extends across multiple calendar years, each applicant, inventor, and joint inventor must verify that the gross income limit for the requisite calendar year is met to maintain eligibility for the micro entity discount. If the gross income limit is no longer met, then a notification of loss of entitlement to micro entity status must be filed in the application to remove micro entity status. On the other hand, it is possible a small entity applicant not meeting the gross income limits specified in 37 CFR 1.29(a)(3) and (4) in the calendar year in which the application was filed could meet the 37 CFR 1.29(a)(3) and (4) gross income limits in the calendar year in which the issue fee is paid, for example, due to a reduction in income. However, the applicant must still be a small entity at the time of issue fee payment, and the applicant must have met the application filing limit under 37 CFR 1.29(a)(2) when the application was filed.
The applicable “maximum qualifying gross income” that is reported on the USPTO website at
w w w . u s p t o . g o v / p a t e n t / l a w s - a n d - regulations/micro-entity-status-gross-income-limit is anticipated to change (increase or decrease) in September or October of each year. If the reported “maximum qualifying gross income” increases, then parties that met the gross income limit earlier that calendar year will continue to meet the gross income limit for the rest of the calendar year. There may also be additional parties that meet the gross income limit. If the reported “maximum qualifying gross income” decreases, however, some parties that met (e.g., barely met) the gross income limit earlier that calendar year might no longer meet the gross income limit for the remainder of the calendar year. In that event a notification of loss of entitlement to micro entity status must be filed as fees could not be paid in the micro entity amount in the relevant patent application or patent for the remainder of that calendar year.
For inventors who file tax returns jointly with their spouse, for example, determining the inventor’s gross income may not be readily apparent from the preceding calendar year’s joint tax return. Regardless of whether any inventor, or any person who is a non-inventor applicant (e.g., assignee-applicant), or any person with an “ownership interest” under 37 CFR 1.29(a)(4) actually filed a joint tax return rather than a separate tax return in the preceding calendar year, the gross income limit applies to the amount of income the person would have reported as gross income if that person were filing a separate tax return, which includes for example, properly accounting for that person’s portion of interest, dividends, and capital gains from joint bank or brokerage accounts.
For filings on behalf of deceased inventors, gross income from the deceased inventor’s estate or trust does not count toward the gross income limit because the trust or decedent’s estate is considered a separate legal entity. However, the deceased inventor’s legal representative acting on behalf of the deceased inventor under 37 CFR 1.43 is an “applicant” in terms of 37 CFR 1.29(a). Therefore the legal representative’s gross income in the preceding calendar year cannot exceed the gross income limit under 37 CFR 1.29(a)(3) in order to qualify for micro entity status. For example, if the deceased inventor has a surviving spouse who is named on the
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Application Data Sheet (ADS) as an applicant by virtue of being the legal representative of the deceased inventor, the surviving spouse’s gross income in the preceding calendar year cannot exceed the gross income limit in order to qualify for micro entity status. On the other hand, if the deceased inventor had assigned all rights in the application (or if subsequent to the inventor’s death, the legal representative assigned all rights in the application) AND the assignee that received all rights was named as an applicant (or the applicant), then it would be the assignee that would have to meet the gross income limit (under 37 CFR 1.29(a)(4)) and not the legal representative. In any event, each other joint inventor, assignee, and licensee (if any) would also have to meet the gross income limit in order to qualify for micro entity status.
D. Gross Income Limit on PartiesWith an “Ownership Interest”
Pursuant to 37 CFR 1.29(a)(4), the gross income limit extends to any party with an “ownership interest” from any applicant or inventor. Accordingly, for each inventor, applicant, and party with an “ownership interest,” gross income in the calendar year preceding the time of fee payment must not exceed the “maximum qualifying gross income.” Thus, the gross income limit applies to the assignee regardless of whether the assignee is identified as the applicant. For micro entity status, 37 CFR 1.29(a)(4) requires that the gross income limit be met by each assignee and licensee (if any) as well as by each inventor.
An applicant is disqualified from micro entity status on the gross income basis if an inventor or an assignee-applicant transfers, or is obligated to transfer, any ownership interest in the patent application to an entity that exceeds the gross income limit. For example, consider a patent application with a sole inventor who does not exceed the gross income limit. If the inventor assigns, or is obligated to assign, all rights in the patent application to an employer that is, for example, a corporation having several million dollars in annual receipts, there can be no micro entity discount of patent fees. Depending on the size of the corporation, the small entity discount may be unavailable as well. If the corporation transfers all of its rights back to the
inventor, or transfers all of its rights to some other person who does not exceed the gross income limit, such a retransfer will not result in qualification for micro entity status. The 37 CFR 1.29(a)(4) certification requirement is that no ownership interest "has" been transferred, or is obligated to be transferred, to an assignee or licensee that exceeds the gross income limit. Once an assignee or licensee exceeding the gross income limit receives the ownership interest, the 37 CFR 1.29(a)(4) certification requirement can no longer be met – even if the assignee or licensee retransfers rights and no longer holds any ownership interest in the application.
If prosecution of an application that is under 37 CFR 1.29(a) micro entity status extends into a new year, it is important to verify that no inventor, no non-inventor applicant, and no party with a 37 CFR 1.29(a)(4) “ownership interest,” had a gross income in the new preceding calendar year that exceeds the “maximum qualifying gross income” reported on the USPTO website. If the coming of a new year results in the gross income limit not being met by any inventor, applicant or party with a 37 CFR 1.29(a)(4) “ownership interest,” then a notification of loss of entitlement to micro entity status under 37 CFR 1.29(i) must be filed in the application to remove micro entity status.
II. SECTION 1.29(b) – PREVIOUSLY FILED PATENT APPLICATION EXCLUSION
37 CFR § 1.29 Micro entity status. *****
(b) An applicant, inventor, or joint inventor is not considered to be named on a previously filed application for purposes of paragraph (a)(2) of this section if the applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s, inventor’s, or joint inventor’s previous employment.
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37 CFR 1.29(b) implements the provisions of 35 U.S.C. 123(b). 37 CFR 1.29(b) provides that an applicant, inventor, or joint inventor is not considered to be named on a previously filed application for purposes of 37 CFR 1.29(a)(2) if the applicant, inventor, or joint inventor has assigned,
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or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s, inventor’s, or joint inventor's previous employment.
III. SECTION 1.29(c) – GROSS INCOME DETERMINED BY CURRENCY EXCHANGE RATE
37 CFR § 1.29 Micro entity status. *****
(c) If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.
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Section 1.29(c) implements the provisions of 35 U.S.C. 123(c). Section 1.29(c) provides that if an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in 37 CFR 1.29(a)(3) or (a)(4). The Internal Revenue Service reports the average currency exchange rate (Yearly Average Currency Exchange Rates) on its Internet website (www.irs.gov/Individuals/International-Taxpayers/ Yearly-Average-Currency-Exchange-Rates).
For an applicant or entity whose previous calendar year’s gross income was received partially in U.S. dollars and partially in non-United States currency, the gross income amount in non-United States currency must be converted into U.S. dollars in accordance with 37 CFR 1.29(c) and then added to the gross income amount in U.S. dollars to determine whether the applicant or entity meets the gross income requirement of 37 CFR 1.29(a)(3).
509.04(b) Institution of Higher Education Basis for Micro Entity Status [R-11.2013]
37 CFR 1.29 Micro entity status. *****
(d) To establish micro entity status under this paragraph, the applicant must certify that:
(1) The applicant qualifies as a small entity as defined in § 1.27; and
(2)(i) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
(ii) The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.
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35 U.S.C. 123(a) provides a gross income basis under which an applicant may establish micro entity status. See MPEP § 509.04(a). 35 U.S.C. 123 provides that a micro entity shall also include an applicant who certifies that: (1) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education. 37 CFR 1.29(d) implements the provisions of 35 U.S.C. 123(d).
To the extent that 35 U.S.C. 123(d) (unlike 35 U.S.C. 123(a)) does not expressly require that an applicant qualify as a small entity under 37 CFR 1.27, the Office has invoked its authority under 35 U.S.C. 123(e) to “…impose… other limits on who may qualify as a micro entity…” in order to expressly require that a party claiming micro entity status via 35 U.S.C. 123(d) qualify as a small entity under 37 CFR 1.27. Accordingly, 37 CFR 1.29(d)(1) requires that an applicant claiming micro entity status on the institution of higher education basis must certify that the “applicant qualifies as a small entity as defined in § 1.27” in addition to certifying that the other requirements set forth in 35 U.S.C. 123(d)(1) or (2) are met. See MPEP § 509.02 for a discussion of the requirements for small entity status.
I. REQUIREMENTS
An applicant for micro entity status under the “institution of higher education” basis set forth in
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37 CFR 1.29(d) must satisfy two requirements. First, the applicant must certify that the applicant qualifies as a small entity as defined in 37 CFR 1.27. Second, the applicant must certify that either (i) the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (ii) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.
A. Small Entity Requirement
In order to meet the small entity requirement, every party holding rights in the application must qualify as a small entity under 37 CFR 1.27. If any rights in the application are assigned, granted, conveyed, or licensed to a party that does not qualify as a small entity under 37 CFR 1.27, the applicant cannot qualify for any patent fee discount. An obligation to assign, grant, convey, or license rights in the application to a party that does not qualify for small entity status would also disqualify the applicant from receiving any patent fee discount. In order to qualify for small entity status, and in order to meet the small entity requirement for micro entity status, there can be no party holding rights or obligated rights in the application that does not qualify as a small entity. See MPEP § 509.02 for a discussion of the requirements for small entity status.
B. Section 1.29(d)(2) Requirement
Under 37 CFR 1.29(d)(2)(i) the applicant must certify that the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education. Because only a person can have an “employer,” the applicant certifying under 37 CFR 1.29(d)(2)(i) must be a person or persons, which in most cases, means the inventor(s).
Under 37 CFR 1.29(d)(2)(ii) the applicant must certify that the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education. An attempt to
obtain micro entity status by merely seeking to transfer a de minimus interest to an institution of higher education could be considered a sham transaction. Although the Office considers it highly unlikely that institutions of higher education would be party to such transactions, the Office plans to closely monitor the percentage of applicants claiming micro entity status under 35 U.S.C. 123(d) to ensure that applicants are not engaging in such transactions in order to obtain micro entity status.
II. MEANING OF “INSTITUTION OF HIGHER EDUCATION”
Section 101(a) of the Higher Education Act of 1965 defines what is meant by “institution of higher education” in the context of 37 CFR 1.29(d). See 20 U.S.C. 1001. Section 101(a) of the Higher Education Act states that the term “institution of higher education” means:
an educational institution in any State that—
1. admits as regular students only persons having a certificate of graduation from a school providing secondary education, or the recognized equivalent of such a certificate, or persons who meet the requirements of section 1091(d)(3) of this title;
2. is legally authorized within such State to provide a program of education beyond secondary education;
3. provides an educational program for which the institution awards a bachelor’s degree or provides not less than a 2-year program that is acceptable for full credit toward such a degree, or awards a degree that is acceptable for admission to a graduate or professional degree program, subject to review and approval by the Secretary;
4. is a public or other nonprofit institution; and
5. is accredited by a nationally recognized accrediting agency or association, or if not so accredited, is an institution that has been granted pre-accreditation status by such an agency or association that has been recognized by the Secretary for the granting of pre-accreditation status, and the Secretary has determined that there is satisfactory assurance that the institution will meet the accreditation standards of such an agency or association within a reasonable time.’
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Additionally, section 103 of the Higher Education Act of 1965 provides that the term “State” means the 50 States of the United States as well as “the Commonwealth of Puerto Rico, the District of Columbia, Guam, American Samoa, the United States Virgin Islands, the Commonwealth of the Northern Mariana Islands, and the Freely Associated States’’ and that the Freely Associated States means the ‘‘Republic of the Marshall Islands, the Federated States of Micronesia, and the Republic of Palau.’’ See 20 U.S.C. 1003.
Based upon these definitions, public or non-profit institutions located in one of the 50 States or U.S. territories offering certain undergraduate educational programs credited toward a bachelor’s degree or educational programs awarding “a degree that is acceptable for admission to a graduate or professional degree program” are eligible as an “institution of higher education” for purposes of establishing micro entity status under 37 CFR 1.29(d). Except for universities or other institutions of higher education located outside the United States, any university or other U.S. institution of higher education that qualifies for small entity status by virtue of being a nonprofit organization under 37 CFR 1.27(a)(3) meets the criteria of an “institution of higher education” for micro entity status purposes.
An institution such as a non-profit research foundation, technology transfer organization, or Federal Government research laboratory does not qualify as an “institution of higher education” under the definition of “institution of higher education” set forth in the Higher Education Act of 1965 for purposes of establishing micro entity status.
A. Universities and Colleges that Do Not Qualify as Institutions of Higher Education
One of the requirements for an “institution of higher education” under section 101(a) of the Higher Education Act of 1965 is that the institution be non-profit. Therefore, for-profit universities and colleges do not qualify as an “institution of higher education” for purposes of establishing micro entity status. As previously stated, foreign universities do not qualify as an “institution of higher education” for purposes of establishing micro entity status. A foreign university may offer an on-line educational
program in the United States, however, on-line classes offered in the United States would not qualify the foreign university as an “institution of higher education” for purposes of establishing micro entity status. That’s because the university must be located “in any State” in the context of what “in any State” meant in 1965 – the year of the Higher Education Act of 1965. In addition, institutions that only grant graduate degrees do not qualify as an “institution of higher education” for purposes of establishing micro entity status because section 101(a) of the Higher Education Act of 1965 is limited to an institution that “provides an educational program for which the institution awards a bachelor’s degree or provides not less than a 2-year program that is acceptable for full credit toward such a degree, or awards a degree that is acceptable for admission to a graduate or professional degree program…”
B. The University Cannot be the Micro Entity Applicant
Although the 37 CFR 1.29(d) basis for qualifying for micro entity status is referred to as the “institution of higher education” basis, it is not the institution of higher education that can qualify for micro entity status, but rather inventors who are employees of an institution of higher education (see 37 CFR 1.29(d)(2)(i)) or inventors or applicants who have conveyed ownership rights to an institution of higher education (see 37 CFR 1.29(d)(2)(ii)). The institution (university) logically cannot make the certifications required under 37 CFR 1.29(d)(2)(i) and (d)(2)(ii) (that the employer from which the university obtains the majority of its income is an institution of higher education as defined by section 101(a) of the Higher Education Act of 1965, or that the university itself has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application).
C. CERTIFICATION FORM – INSTITUTION OF HIGHER EDUCATION BASIS
The Office’s form PTO/SB/15B contains the certifications under 37 CFR 1.29(d) that are required to establish micro entity status on the institution of higher education basis. There are 2 signature blocks reflecting that in addition to the small entity
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requirement under 37 CFR 1.29(d)(1), there are two alternative requirements under 37 CFR 1.29(d)(2). The first signature block is for certifying under 37 CFR 1.29(d)(2)(i) that the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher
education. The second signature block is for certifying under 37 CFR 1.29(d)(2)(ii) that the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education.
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509.04(c) Parties Who Can Sign the Micro Entity Certification [R-11.2013]
A certification of micro entity status, on either the gross income basis or the institution of higher
education basis, can be signed only by an authorized party as set forth in 37 CFR 1.33(b), which includes:
(1) A patent practitioner of record;
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(2) A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or
(3) The applicant (37 CFR 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
For joint inventor applicants, each joint inventor should sign a separate copy of the relevant micro entity certification form. However, if one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form. See USPTO form PTO/AIA/81, titled “Power Of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address”, available on the USPTO forms Web page at www.uspto.gov/patent/patent-forms.
Additionally, if any applicant is an assignee or other party under 37 CFR 1.46, and the assignee or other party is a corporation or organization rather than a person, a registered practitioner must sign the certification of micro entity status. An officer of the assignee corporation, for example, is not authorized to sign a certification of micro entity status.
509.04(d) Continued Obligation to Determine Micro Entity Qualification [R-11.2013]
37 CFR 1.29 Micro entity status. *****
(g) A certification of entitlement to micro entity status need only be filed once in an application or patent. Micro entity status, once established, remains in effect until changed pursuant to paragraph (i) of this section. However, a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid. Where an assignment of rights or an obligation to assign rights to other parties who are micro entities occurs subsequent to the filing of a certification of entitlement to micro entity status, a second certification of entitlement to micro entity status is not required.
(h) Prior to submitting a certification of entitlement to micro entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of this section. It should be determined that each applicant qualifies for micro entity status under paragraph (a) or (d) of this section, and that any other party holding rights in the invention qualifies for small entity status under § 1.27. The Office will generally not question
certification of entitlement to micro entity status that is made in accordance with the requirements of this section.
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An applicant is not required to provide a certification of micro entity status with each fee payment once micro entity status has been established by filing a certification in an application. While an applicant is not required to provide such a certification with each fee payment, the applicant must still be entitled to micro entity status to pay a fee in the micro entity amount at the time of all payments of fees in the micro entity amount. Thus it must be determined whether the requirements for micro entity status exist at the time each fee payment is made. If any requirement for micro entity status is no longer met, then the applicant must notify the Office of loss of micro entity status and pay the required fee in the small entity or undiscounted amount, as appropriate.
For micro entity status on the gross income basis under 37 CFR 1.29(a), the applicant must determine that the applicant and each inventor or joint inventor still meet the applicable conditions of 37 CFR 1.29(a) to claim micro entity status. For example, the applicant must determine that neither the applicant nor inventor nor joint inventor has had a change in gross income that exceeds the “maximum qualifying gross income” as reported on the USPTO website (a new determination must be made each year because gross income may change from year to year, and micro entity status is based upon gross income in the calendar year preceding the calendar year in which the applicable fee is being paid). In addition, the applicant must determine that neither the applicant nor inventor nor joint inventor has made, or is obligated by contract or law to make, an assignment, grant, or conveyance to an entity exceeding the “maximum qualifying gross income,” and that no new inventor or joint inventor has been named in the application who does not meet the conditions specified in 37 CFR 1.29(a). See MPEP § 509.04(a), subsection I, for additional information.
For micro entity status under 35 U.S.C. 123(d), the applicant must determine that each applicant still complies with 37 CFR 1.29(d) (e.g., still obtains the majority of his or her income from an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)). 37 CFR 1.29(g) also provides that where an
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assignment of rights or an obligation to assign rights to other parties who are micro entities occurs subsequent to the filing of a certification of entitlement to micro entity status, a second certification of entitlement to micro entity status is not required.
509.04(e) Notification of Loss of Entitlement to Micro Entity Status [R-11.2013]
37 CFR 1.29 Micro entity status. *****
(i) Notification of a loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity as defined in paragraph (a) or (d) of this section is no longer appropriate. The notification that micro entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate. A notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also contains a notification of loss of entitlement to small entity status under § 1.27(f)(2) [§ 1.27(g)(2)]. Once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status.
*****
37 CFR 1.29(i) contains provisions for a micro entity that correspond to the provisions of 37 CFR 1.27(g)(2) for a small entity. 37 CFR 1.29(i) provides that notification of a loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity as defined in 37 CFR 1.29(a) or 1.29(d) is no longer appropriate. The notification that micro entity status is no longer appropriate must be signed by a party identified in 37 CFR 1.33(b). Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate. An applicant can make a simple statement that the applicant is no longer eligible for micro entity status without identifying the particular reason(s) for loss of entitlement to micro entity status.
37 CFR 1.29(i) further provides that a notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also provides
notification of loss of entitlement to small entity status under 37 CFR 1.27(g)(2). Thus, an applicant or patentee who files a notification that micro entity status is no longer appropriate will be treated as a small entity by default. For applications under micro entity status, regular unreduced fee status will result from: (1) a notification of loss of entitlement to micro entity status accompanied by regular unreduced fees or some other indication of loss of entitlement to small entity status; or (2) a notification of loss of entitlement to small entity status by itself.
37 CFR 1.29(i) finally provides that once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status. It is strongly recommended that the following document descriptions in EFS-Web be used as appropriate:
• Notification of loss of entitlement to small entity status
• Notification of loss of entitlement to micro entity status
509.04(f) Correcting Errors in Micro Entity Status [R-07.2015]
37 CFR 1.29 Micro entity status. *****
(k) If status as a micro entity is established in good faith in an application or patent, and fees as a micro entity are paid in good faith in the application or patent, and it is later discovered that such micro entity status either was established in error, or that the Office was not notified of a loss of entitlement to micro entity status as required by paragraph (i) of this section through error, the error will be excused upon compliance with the separate submission and itemization requirements of paragraph (k)(1) of this section and the deficiency payment requirement of paragraph (k)(2) of this section.
(l) Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. Where more than one application or patent is involved, separate submissions of deficiency payments are required for each application or patent (see § 1.4(b)). The paper must contain an itemization of the total deficiency payment for the single application or patent and include the following information:
(i) Each particular type of fee that was erroneously paid as a micro entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or nonsmall entity, as applicable;
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(ii) The micro entity fee actually paid, and the date on which it was paid;
(iii) The deficiency owed amount (for each fee erroneously paid); and
(iv) The total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts as set forth in paragraph (k)(2) of this section.
(2) The deficiency owed, resulting from the previous erroneous payment of micro entity fees, must be paid. The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously and erroneously paid as a micro entity.
(3) If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.
(4) Any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under this paragraph will be treated as a notification of a loss of entitlement to micro entity status under paragraph (i) of this section.
37 CFR 1.29(k) contains provisions for a micro entity that correspond to the provisions of 37 CFR 1.28(c) for a small entity. 37 CFR 1.28(c) permits an applicant or patentee to correct the erroneous payment of a patent fee in the small entity amount if status as a small entity was established in good faith, and fees as a small entity were paid in good faith. See DH Tech. Inc. v. Synergystex Int’l Inc., 154 F.3d 1333 (Fed. Cir. 1998). 37 CFR 1.29(k) provides that if: (i) an applicant or patentee establishes micro entity status in an application or patent in good faith; (ii) the applicant or patentee pays fees as a micro entity in the application or patent in good faith; and (iii) applicant or patentee later discovers that such micro entity status either was established in error, or that the Office was not notified of a loss of entitlement to micro entity status as required by 37 CFR 1.29(i) through error, the error will be excused upon compliance with the separate submission and itemization requirements of 37 CFR 1.29(k)(1) and the deficiency payment requirement of 37 CFR 1.29(k)(2).
37 CFR 1.29(k)(1) provides that any paper submitted under 37 CFR 1.29(k) must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. 37 CFR 1.29(k)(1) provides that where more than one application or patent is involved, separate submissions of deficiency payments (e.g., checks) and itemizations are required for each application or patent. 37 CFR 1.29(k)(1) also provides that the paper must contain an itemization of the total deficiency payment and include the following information: (1) each particular type of fee that was erroneously paid as a micro entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity; (2) the micro entity fee actually paid, and the date on which it was paid; (3) the deficiency owed amount (for each fee erroneously paid); and (4) the total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts as set forth in 37 CFR 1.29(k)(2).
37 CFR 1.29(k)(2) provides that the deficiency owed, resulting from the previous erroneous payment of micro entity fees, must be paid. The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously and erroneously paid as a micro entity. This corresponds to the procedure for fee deficiency payments based upon the previous erroneous payment of patent fees in the small entity amount. See 37 CFR 1.28(c)(2)(i) ("[t]he deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current full fee amount (for non-small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment").
37 CFR 1.29(k)(3) provides that if the requirements of 37 CFR 1.29(k)(1) and (k)(2) are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in 37 CFR 1.17(i), or result
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in a requirement for compliance within a one-month nonextendable time period under 37 CFR 1.136(a) to avoid the return of the fee deficiency payment.
37 CFR 1.29(k)(4) provides that any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under 37 CFR 1.29(k) will be treated as a notification of a loss of entitlement to micro entity status under 37 CFR 1.29(i).
510 U.S. Patent and Trademark Office Business Hours [R-07.2015]
The U.S. Patent and Trademark Office (USPTO or Office) working hours are 8:30 a.m. to 5:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia. Outside these hours, only USPTO employees are authorized to be in areas of the USPTO other than the Public Search Facilities.
The hours for the Public Search Facility in Alexandria are 8:00 a.m. to 8:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.
See subsections II and III below for information regarding public access to, and conduct on, USPTO premises.
I. FILING OF PAPERS DURING UNSCHEDULED CLOSINGS OF THE U.S. PATENT AND TRADEMARK OFFICE
37 CFR 1.9(h) provides that the definition of “Federal holiday within the District of Columbia” includes an official closing of the Office. When the entire USPTO is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a “Federal holiday within the District of Columbia” under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open. In addition, 37 CFR 1.6(a)(1) provides “[t]he Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia” to clarify that any day that is a Saturday, Sunday or Federal holiday within the District of
Columbia is a day that the USPTO is not open for the filing of applications within the meaning of Article 4(C)(3) of the Paris Convention. Note further that in accordance with 37 CFR 1.6(a)(2), even when the Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or federal holiday within the District of Columbia, correspondence deposited as Priority Mail
Express® with the United States Postal Service in accordance with 37 CFR 1.10 will be considered filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or federal holiday within the District of Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7).
When the USPTO is open for business during any part of a business day between 8:30 a.m. and 5:00 p.m., papers are due on that day even though the Office may be officially closed for some period of time during the business day because of an unscheduled event. The procedures of 37 CFR 1.10 may be used for filing applications.
Information regarding whether or not the Office is officially closed on any particular day may be obtained by calling 1-800-PTO(786)-9199 or (571) 272-1000.
New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the
date of deposit as Priority Mail Express® with the United States Postal Service. For example, if a new patent application is deposited in Priority Mail
Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).
II. CONDUCT IN PUBLIC INFORMATION FACILITIES
The USPTO has established procedures and regulations governing public conduct on all Office premises, and additional regulations specific to the use of public information facilities, including the Lutrelle F. Parker Sr. Public Search Facility, the Scientific and Technical Information Center, and the File Information Unit. The USPTO instituted
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new access control procedures that may affect visitors to the USPTO campus effective Monday, August 4, 2014. See www.uspto.gov/page/new- rules-may-adjust-how-some-visitors-can-enter-uspto-buildings for more information.
A valid Public User or Visitor’s badge is required to enter USPTO facilities. This badge can be obtained from the Office of Security next door to the Public Search Facility located on the first floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314. User badges will be issued to persons not under prohibition from using the search facilities who sign an application form and acknowledge receipt of a copy of the noted regulations. User badges are nontransferable and are valid until reissue or revocation for cause. Office
employees must show their Building badges in order to enter the Patent Search Room. An On-line Service Card is required for access to all Public Search Facilities and on-line systems. On-line Service Cards are obtained at the Public Search Facility Receptionist Desk on a user’s first visit.
Persons violating the regulations governing public conduct on Office premises (reproduced below) may be denied the use of Office facilities, and may further be subjected to prosecution under the Criminal Code. Additionally, the name of any person violating these regulations who is registered to practice before the Office may be forwarded to the Office of Enrollment and Discipline for appropriate action under 37 CFR Part 11.
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III. USE OF TECHNOLOGY CENTER FACILITIES
In addition to the rules set forth above with regard to public conduct on USPTO premises, authorized members of the public using the facilities of the Technology Centers (TCs) are required to follow the rules set forth below.
(A) TC facilities are defined as those areas in Carlyle (Alexandria, VA) where the TCs are located.
(B) The use of the TC facilities is strictly limited to the regular business hours of the USPTO, i.e., between the hours of 8:30 a.m. and 5:00 p.m. on regular business days (see subsection I above).
(C) Authorized Officials, under these regulations, include Supervisory Patent Examiners and TC Directors.
(D) Under applicable statutes and regulations, including Title 41, Code of Federal Regulations, Part 102-74, Subpart C:
(1) No records, or other documents of the USPTO shall be removed from the TC facilities except by express written authorization by an authorized official in the TC where the material resides.
(2) The presence or use of equipment such as dictation equipment, reproducing machines, typewriters, and photographic equipment is prohibited without prior permission from an authorized official in the TC where the use is intended.
(3) All packages, briefcases, or other personal effects brought into the TC Facilities are subject to search by authorized officials upon request and must be removed when leaving the TC facilities.
(4) All verbal requests for compliance with these regulations or other posted USPTO Notices pertaining to activity in the TC facilities, when made by authorized officials, must be promptly complied with.
(E) Persons violating these regulations may be denied the use of the facilities in the TC and Office public information facilities, and may further be subject to prosecution under the Criminal Code. Additionally, the name of any person violating these regulations who is registered to practice before the USPTO may be forwarded to the Office of
Enrollment and Discipline for appropriate action under 37 CFR Part 11.
If any individual is observed in violation of any of the regulations, immediate compliance should be courteously requested. If a verbal request is not complied with, a note should be made of the individual’s name and Visitor or User badge number, if possible (the badge is required to be prominently displayed) and a report of the incident should be made to the Supervisory Patent Examiner, Supervisory Applications Examiner, or other appropriate supervisor who will take further action.
In addition, if any individual in TC Facilities appears to be a stranger and is not wearing a Visitor badge or User badge, some identification, such as a Visitor, User, or Building badge (issued to Office employees and contractors), should be requested. If the individual refuses, notify a supervisor. Consequently, all Office employees are expected to carry their Building badge with them at all times.
Supervisors, when aware of violations of the posted regulations, should prepare a memorandum detailing the facts of the incident and forward this memorandum to the Deputy Commissioner for Patent Operations via their TC Director. Supervisory Patent Examiners and TC Directors are authorized to demand surrender of a User or Visitor badge on-the-spot. If the Supervisory Patent Examiner exercises this function, the TC Director should be immediately notified, followed up by a memorandum as previously set forth.
511 Postal Service Interruptions and Emergencies [R-07.2015]
In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.
35 U.S.C. 21 Filing date and day for taking action.
(a) The Director may by rule prescribe that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service or would have
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been deposited with the United States Postal Service but for postal service interruptions or emergencies designated by the Director.
*****
37 CFR 1.10 Filing of correspondence by Priority Mail Express®.
*****
(g) Any person who mails correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the
Priority Mail Express® Post Office to Addressee service of the USPS, but has the correspondence returned by the USPS due
to an interruption or emergency in Priority Mail Express®
service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
(1) The petition is filed promptly after the person becomes aware of the return of the correspondence;
(2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail
Express®;
(3) The petition includes the original correspondence or a copy of the original correspondence showing the number
of the Priority Mail Express® mailing label thereon and a copy
of the Priority Mail Express® mailing label showing the “date accepted”; and
(4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was returned by the USPS
due to an interruption or emergency in Priority Mail Express®
service.
(h) Any person who attempts to mail correspondence addressed as set out in § 1.1(a) to the Office with sufficient
postage utilizing the Priority Mail Express® Post Office to Addressee service of the USPS, but has the correspondence refused by an employee of the USPS due to an interruption or
emergency in Priority Mail Express® service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
(1) The petition is filed promptly after the person becomes aware of the refusal of the correspondence;
(2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by Priority Mail
Express®;
(3) The petition includes the original correspondence or a copy of the original correspondence showing the number
of the Priority Mail Express® mailing label thereon; and
(4) The petition includes a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS
due to an interruption or emergency in Priority Mail Express®
service.
(i) Any person attempting to file correspondence under this section that was unable to be deposited with the USPS
due to an interruption or emergency in Priority Mail Express®
service which has been so designated by the Director, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
(1) The petition is filed in a manner designated by the Director promptly after the person becomes aware of the
designated interruption or emergency in Priority Mail Express®
service;
(2) The petition includes the original correspondence or a copy of the original correspondence; and
(3) The petition includes a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated
interruption or emergency in Priority Mail Express® service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.
I. “EXPRESS MAIL” RENAMED “PRIORITY MAIL EXPRESS”
Effective July 28, 2013, the United States Postal Service (USPS) changed the name of “Express Mail” to “Priority Mail Express.” All characteristics of the “Priority Mail Express” service are the same as those of the former “Express Mail” service (although the mailing labels differ).
The addresses that should be used for Priority Mail
Express® sent to the U.S. Patent and Trademark Office are set forth in 37 CFR 1.1 (see MPEP § 501). The Office does not have resources for picking up any mail. Therefore mail should NOT be sent using the “Hold for Pickup” service option (whereby the mail is retained at the destination postal facility for
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retrieval by the addressee). Mail sent using the “Hold for pickup” service will not reach the Office.
See MPEP § 513 for the use of the Priority Mail
Express® Mailing procedure of 37 CFR 1.10.
II. PETITION DUE TO A POSTAL SERVICE INTERRUPTION OR EMERGENCY
37 CFR 1.10(i) provides a procedure under which applicant may petition the Director to have correspondence (papers and fees) which was unable to be deposited with the United States Postal Service (USPS) because of an interruption or emergency in
Priority Mail Express® service which is so designated by the Director considered as having been filed on a particular date in the Office. Authority for such a practice is found in 35 U.S.C. 21(a). In addition, the Director has designated certain events as a postal service interruption or emergency by rule (37 CFR 1.10(g) and (h)). 37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in
Priority Mail Express® service considered as filed on a particular date in the Office. 37 CFR 1.10(h) provides a procedure under which applicant may petition the Director to have correspondence that was refused by an employee of the USPS due to an
interruption or emergency in Priority Mail Express®
service considered as filed on a particular date in the Office. For more information on filing a petition under 37 CFR 1.10(g), (h), or (i), see MPEP § 513, especially subsections IX-XI.
Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility. 35 U.S.C. 21(a) requires, in part, that “any paper or fee required to be filed in the Patent and Trademark Office…would have been deposited with the United States Postal Service but for postal service interruptions or
emergencies designated by the Director.” The statute requires that the correspondence was complete and ready to be deposited with the USPS on the filing date requested (e.g., complete application papers have been prepared and printed) and that the correspondence could not have been deposited with the USPS on the requested filing date for the sole reason that the postal service was not available due to the interruption or emergency designated by the Office.
III. ALTERNATIVES TO FILING CORRESPONDENCE VIA PRIORITY MAIL
EXPRESS®
The Office strongly recommends that applicants file
new applications by Priority Mail Express® in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit
in Priority Mail Express® with the USPS as the filing date. See 37 CFR 1.6(a) and MPEP § 513. Applications that are not filed by Priority Mail
Express® can only be accorded the date of receipt in the Office as the filing date (unless there is a postal interruption or emergency designated by the Office and applicants are instructed to file their applications in a manner other than by Priority Mail
Express®), thus any applicant who files an application by first class mail bears the risk of any delay in the delivery of the application to the Office, even if the delay is unusually significant due to some unforeseen event.
In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the Office electronic filing system (EFS-Web) whenever permitted. See the Legal Framework for EFS-Web posted on the USPTO website (www.uspto.gov/patents- application-process/applying-online/legal- framework-efs-web-06april11) for information pertaining to the types of patent applications and documents that are permitted to be filed via EFS-Web. See also MPEP § 502.05. New applications cannot be transmitted by facsimile and are not entitled to the benefit of a Certificate of Transmission under 37 CFR 1.8. A request for a
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continued prosecution application (CPA) filed under 37 CFR 1.53(d) (available only for design applications) may be transmitted to the Office by facsimile (37 CFR 1.6(d)(3)); however, it is not entitled to the benefit of a Certificate of Transmission (see 37 CFR 1.8(a)(2)(i)(A)). See 37 CFR 1.6(d) and MPEP § 502.01. New patent applications may also be hand-delivered to the Office. See MPEP § 501.
Correspondence in a patent application can be filed via the USPS, hand-delivery, or, when permitted, via EFS-Web or facsimile. Applicants should file correspondence with a Certificate of Mailing or a Certificate of Transmission under 37 CFR 1.8 when permitted. See MPEP §§ 502.01 and 512. Even if the post office is closed due to an emergency, applicants should ordinarily be able to deposit correspondence in a mailbox for first class mail.
512 Certificate of Mailing or Transmission [R-07.2015]
37 CFR 1.8 Certificate of mailing or transmission.
(a) Except in the situations enumerated in paragraph (a)(2) of this section or as otherwise expressly excluded in this chapter, correspondence required to be filed in the U.S. Patent and Trademark Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.
(1) Correspondence will be considered as being timely filed if:
(i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being:
(A) Addressed as set out in § 1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail; or
(B) Transmitted by facsimile to the Patent and Trademark Office in accordance with § 1.6(d); or
(C) Transmitted via the Office electronic filing system in accordance with § 1.6(a)(4); and
(ii) The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
(2) The procedure described in paragraph (a)(1) of this section does not apply to, and no benefit will be given to a Certificate of Mailing or Transmission on, the following:
(i) Relative to Patents and Patent Applications—
(A) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date, including a request for a continued prosecution application under § 1.53(d);
(B) Papers filed in trials before the Patent Trial and Appeal Board, which are governed by § 42.6(b) of this title;
(C) Papers filed in contested cases before the Patent Trial and Appeal Board, which are governed by § 41.106(f) of this title;
(D) The filing of an international application for patent;
(E) The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority;
(F) The filing of a copy of the international application and the basic national fee necessary to enter the national stage, as specified in § 1.495(b).
(G) The filing of a written declaration of abandonment under § 1.138;
(H) The filing of a submission under § 1.217 for publication of a redacted copy of an application;
(I) The filing of a third-party submission under § 1.290;
(J) The calculation of any period of adjustment, as specified in § 1.703(f);
(K) The filing of an international design application.
(ii) [Reserved]
(iii) Relative to Disciplinary Proceedings—
(A) Correspondence filed in connection with a disciplinary proceeding under part 11 of this chapter.
(B) [Reserved]
(b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence, or after the application is held to be abandoned, or after the proceeding is dismissed or decided with prejudice, or the prosecution of a reexamination proceeding is terminated pursuant to § 1.550(d) or § 1.957(b) or limited pursuant to § 1.957(c), or a requester paper is refused consideration pursuant to § 1.957(a), the correspondence will be considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence;
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(2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
(3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission. If the correspondence was sent by facsimile transmission, a copy of the sending unit’s report confirming transmission may be used to support this statement. If the correspondence was transmitted via the Office electronic filing system, a copy of an acknowledgment receipt generated by the Office electronic filing system confirming submission may be used to support this statement.
(c) The Office may require additional evidence to determine if the correspondence was timely filed.
A suggested format for a Certificate of Mailing and a Certificate of Transmission for facsimile transmissions and for transmissions via the Office electronic filing system (EFS-Web) under 37 CFR 1.8 to be included with the correspondence is reproduced below.
Certificate of Mailing
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:
Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450 on ___________.
(Date)
Typed or printed name of person signing this certificate
___________________________________________ Signature________________________________________
Certificate of Facsimile Transmission
I hereby certify that this correspondence is being facsimile transmitted to the U.S. Patent and Trademark Office (Fax No. (___)___-____)
on____________.
(Date)
Typed or printed name of person signing this certificate
___________________________________________ Signature________________________________________
Certificate of EFS-Web Transmission
I hereby certify that this correspondence is being transmitted via the U.S. Patent and Trademark Office electronic filing system (EFS-Web) to the USPTO.
on____________.
(Date)
Typed or printed name of person signing this certificate
___________________________________________ Signature________________________________________
¶ 5.02 Format of Certificate of Mailing or Transmission
The following are suggested formats for either a Certificate of Mailing or Certificate of Transmission under 37 CFR 1.8(a). The certification may be included with all correspondence concerning this application or proceeding to establish a date of mailing or transmission under 37 CFR 1.8(a). Proper use of this procedure will result in such communication being considered as timely if the established date is within the required period for reply. The Certificate should be signed by the individual actually depositing or transmitting the correspondence or by an individual who, upon information and belief, expects the correspondence to be mailed or transmitted in the normal course of business by another no later than the date indicated.
Certificate of Mailing
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:
Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 on ___________. (Date) Typed or printed name of person signing this certificate: _____________________________________________ Signature: ________________________________________ Registration Number: ______________________________
Certificate of Transmission
I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office, Fax No. (___)_____ -_________ on _____________. (Date)
Typed or printed name of person signing this certificate: _________________________________________ Signature: ________________________________________ Registration Number: ______________________________
Certificate of EFS-Web Transmission
I hereby certify that this correspondence is being transmitted via the U.S. Patent and Trademark Office (USPTO) electronic filing system (EFS-Web) to the USPTO on _____________. (Date)
Typed or printed name of person signing this certificate: _________________________________________ Signature: ________________________________________ Registration Number: ______________________________
Please refer to 37 CFR 1.6(a)(4), 1.6(d) and 1.8(a)(2) for filing limitations concerning transmissions via EFS-Web, facsimile transmissions and mailing, respectively.
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Under 37 CFR 1.8, a person may state on certain papers directed to the Office (some exceptions are stated in 37 CFR 1.8), the date on which the paper will be deposited in the United States Postal Service, transmitted by facsimile or transmitted via the USPTO electronic filing system (EFS-Web). If the date stated is within the period for reply, the reply in most instances will be considered to be timely. This is true even if the paper does not actually reach the Office until after the end of the period for reply. The Certificate of Mailing procedure does not apply to papers mailed in a foreign country.
The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.
It should be noted, however, that the Office will continue its normal practice of stamping the date of receipt (“Office Date” Stamp; see MPEP § 505) on all papers received through the mail, by facsimile or via EFS-Web except those filed under 37 CFR 1.10 (See MPEP § 513). The receipt date stamped on all papers will also be the date which is entered on Office records and from which any subsequent periods are calculated. For example, 37 CFR 41.37 gives an appellant 2 months from the receipt date of the notice of appeal to file an appeal brief. If the last day to reply to a final Office action was November 10, 2014, and applicant deposited a Notice of Appeal with fee in the U.S. mail on November 10, 2014, and so certified, that appeal is timely even if it was not received in the U.S. Patent and Trademark Office until November 12, 2014. Since the date of receipt of the notice of appeal will be used to calculate the time at which the brief is due, the brief was due on January 12, 2015. This is 2 months after the date of receipt of the notice of appeal.
37 CFR 1.8(a)(2)(i)(A) specifically refers to a request for a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (available only for design applications) as a correspondence filed for the purposes of obtaining an application filing date and the procedures and benefit set forth in 37
CFR 1.8(a)(1) are not applicable to a request for a CPA. The date on a certificate of mailing or transmission (37 CFR 1.8(a)) of a CPA is not controlling or even relevant. A CPA filed by facsimile transmission or via EFS-Web will not be accorded a filing date as of the date on the certificate of transmission unless Office records indicate, or applicant otherwise establishes pursuant to 37 CFR 1.6(f), receipt in the Office of the complete CPA on the date on the certificate of transmission and that date is not a Saturday, Sunday, or federal holiday within the District of Columbia (for EFS-Web transmission, that date can be a Saturday, Sunday, or federal holiday within the District of Columbia).
I. PROCEDURE BY APPLICANT
(A) The certification requires a signature. Specifically, if the certification appears on a paper that requires a signature, two signatures are required, one for the paper and one for the certification. Although not specifically required by 37 CFR 1.8, it is preferred that the certificate be signed by the applicant or registered practitioner.
(B) When possible, the certification should appear on a portion of the paper being submitted. However, if there is insufficient space to make the certification on the same paper, the certification should be on a separate sheet securely attached to the paper.
(C) When the certification is presented on a separate sheet, that sheet must (1) be signed and (2) fully identify and be securely attached to the paper it accompanies. The required identification should include the application number and filing date of the application as well as the type of paper being filed, e.g., reply to rejection or refusal, Notice of Appeal, etc. An unsigned certification will not be considered acceptable.
Moreover, without the proper identifying data, a certification presented on a separate sheet will not be considered acceptable if there is any question or doubt concerning the connection between the sheet and the paper filed.
For submissions by the U.S. Postal Service or facsimile transmissions, if the sheet should become detached from the paper and thereafter not associated with the appropriate file, evidence that this sheet was received in the Office can be
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supported by submitting a copy of a postcard receipt specifically identifying this sheet and the paper and by submitting a copy of the sheet as originally mailed. Attention is directed to MPEP § 503 relative to the use of postcards as receipts. For submissions via EFS-Web, evidence that this sheet was received in the Office can be supported by submitting a copy of an electronic acknowledgement receipt specifically identifying this sheet and the paper and by submitting a copy of the sheet as originally submitted. See MPEP §§ 502.05 and 503.
(D) In situations wherein the correspondence includes papers for more than one application (e.g., a single envelope containing separate papers responding to Office actions in different applications) or papers for various parts of the Office (e.g., a patent issue fee transmittal form PTOL-85B and an assignment), each paper must have its own certification as a part thereof or attached thereto.
Although Part B of Form PTOL-85, Notice of Allowance and Fee(s) Due, may contain a Certificate of Mailing thereon, a separate Certificate of Mailing is required for all papers included with this form, including replacement drawings. Checks submitted with the papers do not require certification.
(E) In situations wherein the correspondence includes several papers directed to the same area of the Office for the same application (for example, a proposed reply under 37 CFR 1.116 and a Notice of Appeal), each paper should have its own certification as a part thereof or attached thereto.
(F) For the purposes of 37 CFR 1.8(a)(1)(i)(A), first class mail is interpreted as including Priority
Mail Express® and “Priority Mail” deposited with the U.S. Postal Service.
Alternatively, the correspondence may be submitted with a cover or transmittal letter that itemizes and properly identifies the papers and on which is placed the certificate under 37 CFR 1.8.
II. USE OF STAMPED CERTIFICATION
Some practitioners place the certification language on the first page of a paper with an inked stamp. Such a practice is encouraged because the
certification is not only readily visible but also forms an integral part of the paper.
III. OFFICE PROCEDURE
A. Mail Center of the Office of Patent Application Processing
The Mail Center of the Office of Patent Application Processing (OPAP) will continue to date stamp the actual date of receipt of all papers received by mail in the Office. No attempt will be made to retain the envelopes in which the papers are received or to indicate on the papers the postal cancellation date (postmark).
However, the benefits of 37 CFR 1.8 or 37 CFR 1.10 apply only to documents delivered to the Office by the U.S. Postal Service. A number of instances have been uncovered where individuals are certifying that documents were deposited with the U.S. Postal Service when, in fact, the documents were hand-carried or delivered to the Office via commercial couriers, e.g., “Federal Express,” “DHL,” “Purolator,” “Air Borne,” or “UPS.” In those instances where documents include a Certificate of
Mailing under 37 CFR 1.8 or Priority Mail Express®
mailing label (commonly used to comply with 37 CFR 1.10) but were delivered to the Office by other than the U.S. Postal Service, (OPAP) personnel are placing a notice indicating that fact on the correspondence involved to alert Office personnel that the benefits of 37 CFR 1.8 or 37 CFR 1.10 do not apply.
B. Processing Areas
When papers are received in a specific location of the Office (e.g., Pre-Grant Publication Division, Office of Data Management, Office of Petitions - see MPEP §§ 502 and 502.01), the date of receipt in the Office is stamped on the papers in accordance with 37 CFR 1.6(a).
The date indicated on the Certificate of Mailing or of Transmission will be used by the Office only to determine if the paper was deposited in the United States Postal Service, transmitted by facsimile or
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transmitted via EFS-Web within the period for reply. If the paper was actually received in the Office within the period for reply, there is no need to refer to the Certificate. Note however, that 37 CFR 1.6(a)(3) provides that “[c]orrespondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.” Note further that 37 CFR 1.6(a)(4) provides that “[c]orrespondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.” This date can be a Saturday, Sunday, or federal holiday within the District of Columbia.
If, however, the paper was received in the U.S. Patent and Trademark Office after the end of the period for reply, the paper should be inspected to determine if a Certificate of Mailing or of Transmission has been included. Where no such Certificate is found, the paper is untimely since applicant did not reply within the period for reply. This may result in abandonment of the application or other loss of rights.
In those instances where a Certificate of Mailing or of Transmission does appear in the paper or a cover letter thereto, a check should be made to determine whether the indicated date of deposit or transmission is within the period for reply. If the date indicated in the Certificate is after the end of the period for reply, the paper is untimely and no notation of the date need be made. Where the date indicated on the Certificate is within the period for reply, the paper should be considered to be timely filed. A notation should be made adjacent to the Office stamp indicating the date of receipt (“Office Date” Stamp) which notes the date stated on the Certificate. This notation should be “C of Mail” , “C of Fax” >or “C of EFS-Web” followed by the date. A paper with a certificate dated November 10, 1997, would be noted
next to the “Office Date” Stamp “(C of Mail. 11/10/97).”
If the period set for taking an action in the U.S. Patent and Trademark Office ends on a Saturday, Sunday, or federal holiday within the District of Columbia (37 CFR 1.7), the action will be considered to be timely if deposited in the United States mail, transmitted by facsimile or transmitted by EFS-Web and certified under 37 CFR 1.8(a) on the next succeeding day which is not a Saturday, Sunday, or a federal holiday.
It should be noted that the filing of a paper for the purpose of obtaining a continuation or division application under 37 CFR 1.53(d) (available only for design applications) is excluded from the Certificate practice under 37 CFR 1.8(a)(2)(i)(A) since it is considered to be the filing of a national patent application.
Pursuant to 35 U.S.C. 119(e)(3), the period of pendency of a provisional application is extended to the next succeeding business day if the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or federal holiday within the District of Columbia. See also 37 CFR 1.7(b).
No benefit will be given to a Certificate of Mailing or Certificate of Facsimile Transmission relative to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date. A national patent application specification and drawing or other correspondence for the purpose of obtaining a filing date may be filed via EFS-Web. New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the
date of deposit as Priority Mail Express® with the United States Postal Service. For example, if a new patent application is deposited as Priority Mail
Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).
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All Certificates of Mailing or Transmission filed in applications should be placed in the image file wrappers.
Office personnel receiving a hand-delivered paper from other than U.S. Postal Service personnel should inspect the paper to ensure that the benefits
of 37 CFR 1.8 or Priority Mail Express® benefits under 37 CFR 1.10 are not accorded in error. If the paper contains a certificate of mailing under 37 CFR
1.8 or Priority Mail Express® mailing label (commonly used to comply with 37 CFR 1.10), the words “HAND DELIVERED” should be written adjacent to the date stamp.
Applicant should be notified in the next Office action when a paper containing a Certificate of Mailing has been denied the benefits under 37 CFR 1.8 or a paper
containing an Priority Mail Express® mailing label (commonly used to comply with 37 CFR 1.10) is denied benefits under 37 CFR 1.10 by including, for example, form paragraph 5.04.
¶ 5.04 Benefit of Certificate of Mailing Denied
The [1] filed [2] is not entitled to the benefits of 37 CFR 1.[3] since it was not deposited with the U. S. Postal Service for delivery to the U.S. Patent and Trademark Office. Therefore, the date of receipt in the U.S. Patent and Trademark Office has been used to determine the timeliness of the paper.
Examiner Note:
1. This form paragraph is to be used in those situations where correspondence contains a Certificate of Mailing under 37 CFR
1.8 or requests the benefit of Priority Mail Express® under 37 CFR 1.10, but the correspondence was not actually deposited with the U. S. Postal Service.
2. In bracket 3, insert --8-- or --10--, as appropriate.
Misuse of a Certificate of Mailing under 37 CFR 1.8 or improperly claiming the benefit of 37 CFR 1.10 which appears to be more than a one-time, inadvertent error should be brought to the attention of the Office of Enrollment and Discipline.
IV. ORIGINAL MAILED PAPER NOT DELIVERED
Paragraphs (b) and (c) of 37 CFR 1.8 concern the situation where a paper containing a Certificate was timely deposited in the U.S. Postal Service, transmitted by facsimile or transmitted via EFS-Web,
but never received by the U.S. Patent and Trademark Office. In the TCs, all submissions under these paragraphs should be considered and the sufficiency thereof determined by the TC Director.
37 CFR 1.8(b) permits a party to notify the Office of a previous mailing through the U.S. Postal Service, or transmission by facsimile or EFS-Web, of correspondence when a reasonable amount of time has elapsed from the time of mailing or transmission of the correspondence. In the event that correspondence may be considered timely filed because it was mailed or transmitted in accordance with 37 CFR 1.8(a), but was not received in the Office after a reasonable amount of time has elapsed, (e.g., more than one month from the time the correspondence was mailed), applicant is not required to wait until the end of the maximum extendable period for reply set in a prior Office action (for the Office to hold the application abandoned) before informing the Office of the previously submitted correspondence. Applicant may notify the Office of the previous mailing or transmission and supply a duplicate copy of the previously mailed or transmitted correspondence and a statement attesting on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing or transmission. If the person signing the statement did not sign the certificate of mailing or the certificate of transmission, then the person signing the statement should explain how they have firsthand knowledge of the previous timely mailing or transmission. Such a statement should be filed promptly after the person becomes aware that the Office has not received the correspondence.
Before notifying the Office of a previously submitted correspondence that appears not to have been received by the Office, applicants are encouraged to check the private Patent Application Information
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Retrieval (PAIR) System to see if the correspondence has been entered into the application file.
513 Deposit as Priority Mail Express® with U.S. Postal Service [R-07.2015]
“EXPRESS MAIL” RENAMED PRIORITY MAIL
EXPRESS®
Effective July 28, 2013, the United States Postal Service (USPS) changed the name of “Express Mail”
to Priority Mail Express®. All characteristics of the
Priority Mail Express® service are the same as those of the former “Express Mail” service (although the mailing labels differ).
35 U.S.C. 21 Filing date and day for taking action.
(a) The Director may by rule prescribe that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service or would have been deposited with the United States Postal Service but for postal service interruptions or emergencies designated by the Director.
*****
37 CFR 1.6 Receipt of correspondence.
(a) Date of receipt and Priority Mail Express® date of deposit. Correspondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:
(1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2) Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail
Express® with the United States Postal Service.
(3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
(4) Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted
to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
*****
37 CFR 1.10 Filing of correspondence by Priority Mail Express®.
(a)(1) Any correspondence received by the U.S. Patent and Trademark Office (USPTO) that was delivered by the
Priority Mail Express® Post Office to Addressee service of the United States Postal Service (USPS) will be considered filed with the USPTO on the date of deposit with the USPS.
(2) The date of deposit with USPS is shown by the
“date accepted” on the Priority Mail Express® label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the USPTO receipt date as the filing date. See § 1.6(a).
(b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the Priority Mail
Express® mailing label with the “date accepted” clearly marked. Persons dealing indirectly with the employees of the USPS (such
as by deposit in a Priority Mail Express® drop box) do so at the
risk of not receiving a copy of the Priority Mail Express®
mailing label with the desired “date accepted” clearly marked. The paper(s) or fee(s) that constitute the correspondence should
also include the Priority Mail Express® mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
(c) Any person filing correspondence under this section that was received by the Office and delivered by the Priority
Mail Express® Post Office to Addressee service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the “date accepted” on the Priority Mail
Express® mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date
as of the “date accepted” on the Priority Mail Express® mailing label or other official USPS notation, provided that:
(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
(2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail
Express®; and
(3) The petition includes a true copy of the Priority
Mail Express® mailing label showing the “date accepted,” and of any other official notation by the USPS relied upon to show the date of deposit.
(d) Any person filing correspondence under this section that was received by the Office and delivered by the Priority
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Mail Express® Post Office to Addressee service of the USPS, who can show that the “date accepted” on the Priority Mail
Express® mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
(2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail
Express®; and
(3) The petition includes a showing which establishes, to the satisfaction of the Director, that the requested filing date was the date the correspondence was deposited in the Priority
Mail Express® Post Office to Addressee service prior to the last scheduled pickup for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or that came into being after deposit and within one business day of the deposit of the correspondence in the Priority Mail
Express® Post Office to Addressee service of the USPS.
(e) Any person mailing correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the
Priority Mail Express® Post Office to Addressee service of the USPS but not received by the Office, may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:
(1) The petition is filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
(2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail
Express®;
(3) The petition includes a copy of the originally deposited paper(s) or fee(s) that constitute the correspondence
showing the number of the Priority Mail Express® mailing label thereon, a copy of any returned postcard receipt, a copy of the
Priority Mail Express® mailing label showing the “date accepted,” a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the “date accepted” on the Priority
Mail Express® mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the requested filing date was the date the
correspondence was deposited in the Priority Mail Express®
Post Office to Addressee service prior to the last scheduled pickup for that day; and
(4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the
correspondence and that the copies of the correspondence, the
copy of the Priority Mail Express® mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed
correspondence, original Priority Mail Express® mailing label, returned postcard receipt, and official notation entered by the USPS.
(f) The Office may require additional evidence to determine
if the correspondence was deposited as Priority Mail Express®
with the USPS on the date in question.
(g) Any person who mails correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing
the Priority Mail Express® Post Office to Addressee service of the USPS, but has the correspondence returned by the USPS
due to an interruption or emergency in Priority Mail Express®
service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
(1) The petition is filed promptly after the person becomes aware of the return of the correspondence;
(2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail
Express®;
(3) The petition includes the original correspondence or a copy of the original correspondence showing the number
of the Priority Mail Express® mailing label thereon and a copy
of the Priority Mail Express® mailing label showing the “date accepted”; and
(4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was returned by the USPS
due to an interruption or emergency in Priority Mail Express®
service.
(h) Any person who attempts to mail correspondence addressed as set out in § 1.1(a) to the Office with sufficient
postage utilizing the Priority Mail Express® Post Office to Addressee service of the USPS, but has the correspondence refused by an employee of the USPS due to an interruption or
emergency in Priority Mail Express® service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
(1) The petition is filed promptly after the person becomes aware of the refusal of the correspondence;
(2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the
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correspondence prior to the attempted mailing by Priority Mail
Express®;
(3) The petition includes the original correspondence or a copy of the original correspondence showing the number
of the Priority Mail Express® mailing label thereon; and
(4) The petition includes a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS
due to an interruption or emergency in Priority Mail Express®
service.
(i) Any person attempting to file correspondence under this sect ion that was unable to be deposited with the USPS due to
an interruption or emergency in Priority Mail Express® service which has been so designated by the Director, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
(1) The petition is filed in a manner designated by the Director promptly after the person becomes aware of the
designated interruption or emergency in Priority Mail Express®
service;
(2) The petition includes the original correspondence or a copy of the original correspondence; and
(3) The petition includes a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated
interruption or emergency in Priority Mail Express® service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.
The statutory authority for the granting of a filing date based on the date of deposit for correspondence
sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.
The specific rule for obtaining a filing date as of the
date of deposit in Priority Mail Express® (rather than the date of receipt at the Office) is 37 CFR 1.10.
35 U.S.C. 21(a) is limited to correspondence deposited with the United States Postal Service (USPS). The procedure in 37 CFR 1.10 is limited to
correspondence deposited in the Priority Mail
Express® Post Office to Addressee service of the USPS. There are no similar provisions and no similar benefit can be obtained for correspondence deposited in International Express Mail.
Effective July 28, 2013, the USPS changed the name
of Express Mail®. In addition, the USPS updated
the Priority Mail Express® mailing label. The mailing label now has a ‘‘date accepted’’field rather than a ‘‘date-in’’ field, which was previously used
on the Express Mail® label.
I. EFFECTIVE DATE, WEEKENDS & HOLIDAYS
37 CFR 1.6(a)(2) provides that correspondence
deposited as Priority Mail Express® in accordance with 37 CFR 1.10 will be stamped, and, therefore, considered as filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or federal holiday within the District of Columbia. 37 CFR 1.10 provides a procedure for assigning the date on which any paper or fee is deposited as
Priority Mail Express® with the USPS as the filing date of the paper or fee in the U.S. Patent and Trademark Office (Office). The date of deposit with the USPS is shown by the “date accepted” on the
Priority Mail Express® mailing label or other official USPS notation. This holds true for any day that the correspondence may be accepted as Priority Mail
Express® by the USPS, even when the paper or fee is deposited and accepted on a Saturday, Sunday or federal holiday within the District of Columbia. For example, if a person files a patent application by
Priority Mail Express® with the USPS on a Saturday in compliance with 37 CFR 1.10, he or she will receive the benefit of the Saturday date, even though the Office is closed on Saturdays and, therefore, the person could not have filed the application by depositing it directly at the Office on that Saturday. See 37 CFR 1.6(a)(1). In those cases where the procedure of 37 CFR 1.10(a) has not been properly followed, e.g., the “date accepted” is illegible, the filing date of the correspondence will be the date of actual receipt in the Office. An applicant may file a petition under the conditions specified in 37 CFR 1.10(c), (d) or (e) (discussed below) presenting
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whatever arguments and evidence that the paper or fee is entitled to a filing date other than the filing date accorded by the Office.
II. DATE ACCEPTED, DIRECT DEPOSIT,
PRIORITY MAIL EXPRESS® BOX RECEPTACLES & LOG BOOKS
The procedure in 37 CFR 1.10(a) requires the use
of the Priority Mail Express® Post Office to Addressee service of the USPS. This service provides for the use of a mailing label on which the USPS clearly indicates the date on which it was deposited. Correspondence sent by the Priority Mail
Express® Post Office to Addressee service is considered filed in the Office on the “date accepted” entered by the USPS. The “date accepted” on the
Priority Mail Express® mailing label must be completed by the USPS, not by the applicant. For correspondence filed in accordance with 37 CFR 1.10, Office personnel will routinely look to the
Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence. Accordingly, if the USPS enters the deposit date as its “date accepted,” the correspondence will receive the deposit date as its filing date. If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. An applicant may file a petition under the conditions specified in 37 CFR 1.10(c), (d), (e), (g), (h), or (i) (discussed below) presenting whatever arguments and evidence that the paper or fee is entitled to a filing date other than the filing date accorded by the Office.
37 CFR 1.10(b) further provides that correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the
Priority Mail Express® mailing label with the “date accepted” clearly marked, and that persons dealing indirectly with the employees of the USPS (such as by depositing correspondence in a Priority Mail
Express® drop box) do so at the risk of not receiving
a copy of the Priority Mail Express® mailing label with the desired “date accepted” clearly marked. On
petition, the failure to obtain a Priority Mail
Express® receipt with the “date accepted” clearly marked may be considered an omission that could have been avoided by the exercise of due care, as discussed below. While the Office strongly urges
direct deposit of Priority Mail Express®
correspondence in order to obtain a legible copy of
the Priority Mail Express® mailing label, parties are
not precluded from using Priority Mail Express®
drop boxes, but do so at their own risk.
A paper or fee placed in a Priority Mail Express®
box receptacle after the box has been cleared for the last time on a given day will be considered to be deposited as of the date of receipt (“date accepted”)
indicated on the Priority Mail Express® mailing
label by the Postal Service Priority Mail Express®
acceptance clerk. 37 CFR 1.10(d) permits the Office to correct a USPS “date-in” error when the correspondence is deposited in an Priority Mail
Express® drop box prior to last scheduled pick up of the day, that is, the time clearly marked on the
Priority Mail Express® drop box indicating when the box will be cleared for the last time on the date of deposit. 37 CFR 1.10(d) sets forth the procedures to be followed to be entitled to such a correction.
Parties who do use drop boxes can protect themselves from uncertainty due to illegible mailing labels by routinely maintaining a log of Priority Mail
Express® deposits in which notations are entered by the person who deposited the correspondence as
Priority Mail Express® within one business day after deposit with the USPS. Such evidence could be useful to later support a petition filed under 37 CFR 1.10(c), (d), (e), or (g). Evidence that came into being after deposit and within one day after the deposit of the correspondence as Priority Mail
Express® may be in the form of a log book which contains information such as the Priority Mail
Express® number; the application number, attorney docket number or other such file identification number; the place, date and time of deposit; the time of the last scheduled pick-up for that date and place
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of deposit; the depositor’s initials or signature; and the date and time of entry in the log.
III. PRIORITY MAIL EXPRESS® MAILING LABEL NUMBER
While 37 CFR 1.10(b) does not require placement
of the Priority Mail Express® mailing label number on the correspondence prior to mailing, it is advisable to do so. If the number of the mailing label did not appear on the correspondence as originally filed, relief will not be granted on petition under 37 CFR 1.10(c), (d), (e), (g), or (h), even if the party who filed the correspondence satisfies the other requirements of 37 CFR 1.10(c), 1.10(d), 1.10(e), 1.10(g), or 1.10(h). To be effective, the number must be placed on each separate paper and each fee transmittal either directly on the document or by a separate paper firmly and securely attached thereto. In situations wherein the correspondence includes several papers directed to the same application (for example, the specification, drawings, and declaration for a new application), the correspondence may be submitted with a cover or transmittal letter which should itemize the papers. It is not necessary that the number be placed on each page of a particular paper or fee transmittal. Merely placing the number in one prominent location on each separate paper or fee transmittal (or cover sheet or transmittal letter which should itemize the separate papers and fees) will be sufficient.
Since the filing of correspondence under 37 CFR 1.10 without the number of the Priority Mail
Express® mailing label thereon is an oversight that can be avoided by the exercise of reasonable care, requests for waiver of this requirement will not be granted on petition. A party’s inadvertent failure to comply with the requirements of a rule is not deemed to be an extraordinary situation that would warrant waiver of a rule under 37 CFR 1.183, 2.146(a)(5) or 2.148. See Honigsbaum v. Lehman, 903 F. Supp. 8, 37 USPQ2d 1799 (D.D.C. 1995) (Commissioner did not abuse his discretion in refusing to waive requirements of 37 CFR 1.10(c) in order to grant filing date to patent application, where applicant failed to produce “Express Mail” customer receipt or any other evidence that application was actually deposited with USPS as “Express Mail.”), aff’d
without opinion, 95 F.3d 1166 (Fed. Cir. 1996); Gustafson v. Strange, 227 USPQ 174 (Comm’r Pat. 1985) (counsel’s unawareness of 37 CFR 1.8 not extraordinary situation warranting waiver of a rule); In re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289 (Comm’r Pat. 1978) (since certificate of mailing procedure under 37 CFR 1.8 was available to petitioner, lateness due to mail delay not deemed to be extraordinary situation).
IV. PETITIONS
37 CFR 1.10(c) through 1.10(e) and 1.10(g) set forth procedures for petitioning the Director to accord a filing date as of the date of deposit as Priority Mail
Express® (Priority Mail Express). Briefly, 37 CFR 1.10(c) applies where there is a discrepancy between the filing date accorded by the Office and the “date accepted” entered by the USPS on the Priority Mail
Express® mailing label or other official USPS notation; 37 CFR 1.10(d) applies where the “date accepted” is incorrectly entered by the USPS; 37 CFR 1.10(e) applies where correspondence deposited
with the USPS as Priority Mail Express® is not received by the Office; and 37 CFR 1.10(g) applies where correspondence deposited with the USPS as “Express Mail” was returned by the USPS due to an
interruption or emergency in Priority Mail Express®
service.
37 CFR 1.10(h) and 1.10(i) set forth procedures for petitioning the Director when correspondence was
attempted to be deposited as Priority Mail Express®. 37 CFR 1.10(h) applies where correspondence was refused by an employee of the USPS due to an
interruption or emergency in Priority Mail Express®
service; and 37 CFR 1.10(i) applies where correspondence was unable to be deposited with the USPS due to an interruption or emergency in Priority
Mail Express® service which has been so designated by the Director.
V. PETITION TO CORRECT FILING DATE AND DATE ACCEPTED DISCREPANCY
37 CFR 1.10(c) sets forth procedures for filing a petition to the Director for a filing date as of the date
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§ 513RECEIPT AND HANDLING OF MAIL AND PAPERS
of deposit with the USPS, where there is a discrepancy between the filing date initially accorded by the Office and the “date accepted” entered by the USPS or other official USPS notation. Such a petition should:
(A) be filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
(B) include a showing that the number of the
Priority Mail Express® mailing label was placed on each piece of correspondence prior to the original mailing; and
(C) include a true copy of the Priority Mail
Express® mailing label showing the “date accepted” or other official notation by the USPS.
VI. PETITION TO CORRECT INCORRECTLY ENTERED DATE-IN
37 CFR 1.10(d) sets forth procedures for filing a petition to the Director to accord a filing date as of the actual date of deposit with the USPS, where the “date accepted” or other official notation is incorrectly entered by the USPS. Such a petition should:
(A) be filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
(B) include a showing that the number of the
Priority Mail Express® mailing label was placed on each piece of correspondence prior to the original mailing; and
(C) include a showing that the correspondence
was deposited as Priority Mail Express® prior to the last scheduled pickup on the requested filing date.
The showing under 37 CFR 1.10(d) must be corroborated by (1) evidence from the USPS, or (2) evidence that came into being after deposit and within one business day of the deposit of the
correspondence as Priority Mail Express®. Evidence
from the USPS may be the Priority Mail Express®
Corporate Account Mailing Statement. Evidence that came into being within one day after the deposit
of the correspondence as Priority Mail Express®
may be in the form of a log book which contains
information such as the Priority Mail Express®
number; the application number, attorney docket number or other such file identification number; the place, date and time of deposit; the time of the last scheduled pick-up for that date and place of deposit; the depositor’s initials or signature; and the date and time of entry in the log.
The reason the Office considers correspondence to have been filed as of the date of deposit as Priority
Mail Express® is that this date has been verified by a disinterested USPS employee, through the insertion of a “date accepted,” or other official USPS notation,
on the Priority Mail Express® mailing label. Due to the questionable reliability of evidence from a party other than the USPS that did not come into being contemporaneously with the deposit of the correspondence with the USPS, 37 CFR 1.10(d) specifically requires that any petition under 37 CFR 1.10(d) be corroborated either by evidence from the USPS, or by evidence that came into being after deposit and within one business day after the deposit
of the correspondence as Priority Mail Express®.
A petition alleging that the USPS erred in entering the “date accepted” will be denied if it is supported only by evidence (other than from the USPS) which was:
(A) created prior to the deposit of the
correspondence as Priority Mail Express® with the USPS (e.g., an application transmittal cover letter, or a client letter prepared prior to the deposit of the correspondence); or
(B) created more than one business day after the deposit of the correspondence as Priority Mail
Express® (e.g., an affidavit or declaration prepared more than one business day after the correspondence was deposited with the USPS as Priority Mail
Express®).
On the other hand, a notation in a log book, entered after deposit by the person who deposited the
correspondence as Priority Mail Express® within one business day of such deposit, setting forth the
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items indicated above, would be deemed on petition to be an adequate showing of the date of deposit under 37 CFR 1.10(d)(3).
37 CFR 1.10(d)(3) further provides that a party must show that correspondence was deposited as Priority
Mail Express® before the last scheduled pickup on the requested filing date in order to obtain a filing date as of that date.
VII. PETITION FOR CORRESPONDENCE NEVER RECEIVED
37 CFR 1.10(e) sets forth procedures for filing a petition to the Director to accord a filing date as of the date of deposit with the USPS, where
correspondence deposited as Priority Mail Express®
is never received by the Office. Such a petition should:
(A) be filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
(B) include a showing that the number of the
Priority Mail Express® mailing label was placed on each piece of correspondence prior to the original mailing;
(C) include a true copy of the originally deposited correspondence showing the number of
the Priority Mail Express® mailing label thereon, a copy of any returned postcard receipt, a copy of the
Priority Mail Express® mailing label showing the “date accepted” or other official notation entered by the USPS; and
(D) include a statement, signed by the person who deposited the documents as Priority Mail
Express® with the USPS, setting forth the date and time of deposit, and declaring that the copies of the
correspondence, Priority Mail Express® mailing label, and returned postcard receipt accompanying the petition are true copies of the correspondence, mailing label and returned postcard receipt originally mailed or received.
37 CFR 1.10(e) provides for the filing of a petition to accord correspondence a filing date as of the date
of deposit with the USPS as Priority Mail Express®
only where the correspondence was mailed with sufficient postage and addressed as set out in 37 CFR 1.1(a). There is no corresponding provision that correspondence be properly addressed and mailed with sufficient postage in 37 CFR 1.10(a), (c) and (d), because these sections apply only to correspondence that is actually received by the Office. Correspondence mailed by Priority Mail
Express® that is actually received by the Office will not be denied a filing date as of the date of deposit
as Priority Mail Express® simply because the correspondence was not mailed with sufficient postage or not addressed as set out in 37 CFR 1.1(a). 37 CFR 1.10(e)(3) provides that if the requested filing date is a date other than the “date accepted”
on thePriority Mail Express® mailing label, the petition should include a showing under 37 CFR 1.10(d)(3), as discussed above, that the correspondence was deposited as Priority Mail
Express® before the last scheduled pickup on the requested filing date in order to obtain a filing date as of that date. 37 CFR 1.10(e) applies only in those situations in which the correspondence at issue was lost in toto (i.e., the entire correspondence was not delivered to the Office). Where there is a dispute as to the contents of correspondence submitted to the Office (e.g., an applicant asserts that three sheets of drawings were submitted under 37 CFR 1.10 with an application, but the Office records indicate receipt of only two sheets of drawings with the application), an applicant may not rely upon the provisions of 37 CFR 1.10(e) to establish what document(s) and/or fee(s) were filed in the Office with such correspondence. Rather, where the records of the Office (e.g., the file of the application) contain any document(s) or fee(s) corresponding to the contents of the correspondence at issue, the Office will rely upon its official record of the contents of such correspondence in absence of convincing evidence (e.g., a postcard receipt under MPEP § 503 containing specific itemization of the document(s) or fee(s) purported to have been filed with the correspondence at issue) that the Office received and misplaced any document(s) or fee(s) that is not among the official records of the Office.
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§ 513RECEIPT AND HANDLING OF MAIL AND PAPERS
VIII. ADDITIONAL EVIDENCE MAY BE REQUIRED
37 CFR 1.10(f) provides that the Office may require additional evidence to determine whether the correspondence was deposited as Priority Mail
Express® with the USPS on the date in question.
IX. PETITION FOR CORRESPONDENCE RETURNED DUE TO POSTAL INTERRUPTION OR EMERGENCY
37 CFR 1.10(g) provides that any person who mails correspondence addressed as set out in 37 CFR 1.1(a) to the Office with sufficient postage utilizing the
Priority Mail Express® Post Office to Addressee service of the USPS, but has the correspondence returned by the USPS due to an interruption or
emergency in Priority Mail Express® service, may petition the Director to consider the correspondence as filed on a particular date in the Office. Such a petition must:
(A) be filed promptly after the person becomes aware of the return of the correspondence;
(B) include a showing that the number of the
Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by
Priority Mail Express®
(C) include the original correspondence or a copy of the original correspondence showing the
number of the Priority Mail Express® mailing label
thereon and a copy of the Priority Mail Express®
mailing label showing the “date accepted;” and
(D) include a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or the copy of the correspondence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date.
The Office may require additional evidence to determine if the correspondence was returned by the USPS due to an interruption or emergency in Priority
Mail Express® service. For example, the Office may
require a letter from the USPS confirming that the return was due to an interruption or emergency in
the Priority Mail Express® service.
This procedure does not apply where the USPS
returned the Priority Mail Express® for a reason other than an interruption or emergency in Priority
Mail Express® service such as the address was incomplete or the correspondence included
insufficient payment for the Priority Mail Express®
service.
X. PETITION FOR CORRESPONDENCE REFUSED DUE TO POSTAL INTERRUPTION OR EMERGENCY
37 CFR 1.10(h) provides that any person who attempts to mail correspondence addressed as set out in 37 CFR 1.1(a) to the Office with sufficient
postage utilizing the Priority Mail Express® Post Office to Addressee service of the USPS, but has the correspondence refused by an employee of the USPS due to an interruption or emergency in Priority
Mail Express® service, may petition the Director to consider the correspondence as filed on a particular date in the Office. Such a petition must:
(A) be filed promptly after the person becomes aware of the refusal of the correspondence;
(B) include a showing that the number of the
Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by
Priority Mail Express®
(C) include the original correspondence or a copy of the original correspondence showing the
number of the Priority Mail Express® mailing label thereon; and
(D) include a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally
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MANUAL OF PATENT EXAMINING PROCEDURE§ 513
attempted to be deposited with the USPS on the requested filing date.
The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS due to an interruption or
emergency in Priority Mail Express® service. For example, the Office may require a letter from the USPS confirming that the refusal was due to an interruption or emergency in the Priority Mail
Express® service.
This procedure does not apply where the USPS
refused the Priority Mail Express® for a reason other than an interruption or emergency in Priority Mail
Express® service such as the address was incomplete or the correspondence included insufficient payment
for the Priority Mail Express® service. In addition, this procedure does not apply because an Priority
Mail Express® drop box is unavailable or a Post Office facility is closed.
XI. PETITION FOR CORRESPONDENCE UNABLE TO BE DEPOSITED DUE TO A DIRECTOR-DESIGNATED POSTAL INTERRUPTION OR EMERGENCY
37 CFR 1.10(i) provides that any person attempting
to file correspondence by Priority Mail Express®
that was unable to be deposited with the USPS due to an interruption or emergency in Priority Mail
Express® service which has been so designated by the Director may petition the Director to consider such correspondence as filed on a particular date in the Office. Such a petition must:
(A) be filed in a manner designated by the Director promptly after the person becomes aware of the designated interruption or emergency in
Priority Mail Express® service;
(B) include the original correspondence or a copy of the original correspondence; and
(C) include a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or emergency in Priority
Mail Express® service, and that the correspondence
or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.
This procedure applies only when the Director designates an interruption or emergency in Priority
Mail Express® service. In the notice designating the interruption or emergency the Director will provide guidance on the manner in which petitions under 37 CFR 1.10(i) should be filed. The notice will be placed on the USPTO website at www.uspto.gov and published in the Official Gazette.
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§ 513RECEIPT AND HANDLING OF MAIL AND PAPERS
Chapter 600 Parts, Form, and Content of Application
Content of Provisional and Nonprovisional Applications
601
Complete Application601.01 Nonprovisional Applications Filed Under 35 U.S.C. 111(a)
601.01(a)
Provisional Applications Filed Under 35 U.S.C. 111(b)
601.01(b)
Conversion to or from a Provisional Application
601.01(c)
Application Filed Without All Pages of Specification
601.01(d)
Nonprovisional Application Filed Without at Least One Claim
601.01(e)
Applications Filed Without Drawings
601.01(f)
Applications Filed Without All Figures of Drawings
601.01(g)
Power of Attorney601.02 Correspondence Address601.03
Change of Correspondence Address in Applications Filed On or After September 16, 2012
601.03(a)
Change of Correspondence Address in Applications Filed Before September 16, 2012
601.03(b)
National Stage Requirements of the United States as a Designated Office
601.04
Bibliographic Information - Application Data Sheet (ADS)
601.05
Application Data Sheet (ADS) -- Application Filed On or After September 16, 2012
601.05(a)
Application Data Sheet (ADS) in Application Filed Before September 16, 2012
601.05(b)
Oaths and Declarations602 Inventorship602.01
Inventor’s Oath or Declaration in Application Filed On or After September 16, 2012
602.01(a)
Inventor’s Oath or Declaration in Application Filed Before September 16, 2012
602.01(b)
Correction of Inventorship, Name of Inventor, and Order of Names in an Application
602.01(c)
Correction of Inventorship in an Application – Request
602.01(c)(1)
Filed On or After September 16, 2012
Correcting or Updating Inventor Name 37 CFR
602.01(c)(2)
1.48(f) – Request Filed On or After September 16, 2012 Correction of Inventorship in an Application – Request
602.01(c)(3)
Under 37 CFR 1.48 Filed Prior to September 16, 2012
New Oath or Substitute for Original602.02 Office Finds the Inventor’s Oath or Declaration Defective
602.03
Foreign Executed Oath602.04 Oath or Declaration in Continuing Applications
602.05
Oath or Declaration in Continuing Applications Filed On or After September 16, 2012
602.05(a)
Oath or Declaration in Continuing Applications Filed Before September 16, 2012
602.05(b)
Non-English Oath or Declaration602.06 Oath or Declaration Filed in United States as a Designated Office
602.07
Inventor and Application Information602.08 Inventor Bibliographic Information
602.08(a)
Inventor Signature and Name602.08(b) Identification of Application602.08(c)
Joint Inventors602.09 Supplemental Oath or Declaration603
Supplemental Oath or Declaration Filed After Allowance
603.01
Substitute Statements604 Applicant605
Applicant for Application filed on or after September 16, 2012
605.01
Applicant for Application Filed Before September 16, 2012
605.02
Title of Invention606 Examiner May Require Change in Title
606.01
Filing Fee607 [Reserved]607.01 Returnability of Fees607.02
Disclosure608 Specification608.01
Arrangement of Application608.01(a) Abstract of the Disclosure608.01(b) Background of the Invention608.01(c) Brief Summary of Invention608.01(d)
Rev. 07.2015, November 2015600-1
Reservation Clauses Not Permitted
608.01(e)
Brief Description of Drawings608.01(f) Detailed Description of Invention608.01(g) Mode of Operation of Invention608.01(h) Claims608.01(i) Numbering of Claims608.01(j) Statutory Requirement of Claims608.01(k) Claims Present on theApplication Filing Date
608.01(l)
Form of Claims608.01(m) Dependent Claims608.01(n) Basis for Claim Terminology in Description
608.01(o)
Completeness of Specification608.01(p) Substitute or Rewritten Specification
608.01(q)
Derogatory Remarks About Prior Art in Specification
608.01(r)
Restoration of Canceled Matter608.01(s) Use in Subsequent Application608.01(t) [Reserved]608.01(u) Marks Used in Commerce and Trade Names
608.01(v)
Copyright and Mask Work Notices
608.01(w)
Drawing608.02 New Drawing — When Replacement is Required Before Examination
608.02(a)
Acceptability of Drawings608.02(b) Location of Drawings608.02(c) Complete Illustration in Drawings608.02(d) Examiner Determines Completeness and Consistency of Drawings
608.02(e)
Modifications in Drawings608.02(f) Illustration of Prior Art608.02(g) Replacement Drawings608.02(h) Transfer of Drawings From Prior Applications
608.02(i)
[Reserved]608.02(j) -608.02(o)
Correction of Drawings608.02(p) [Reserved]608.02(q)
-608.02(s) Cancelation of Figures608.02(t) [Reserved]608.02(u) Drawing Changes Which Require Annotated Sheets
608.02(v)
Drawing Changes Which May Be Made Without Applicant’s Annotated Sheets
608.02(w)
Drawing Corrections or Changes Accepted Unless Notified Otherwise
608.02(x)
Return of Drawing608.02(y) Allowable Applications Needing Drawing Corrections or Corrected Drawings
608.02(z)
Models, Exhibits, Specimens608.03 Handling of Models, Exhibits, and Specimens
608.03(a)
New Matter608.04 Matter Not Present in Specification, Claims, or
608.04(a)
Drawings on the Application Filing Date New Matter by Preliminary Amendment
608.04(b)
Review of Examiner’s Holding of New Matter
608.04(c)
Sequence Listing, Table, or Computer Program Listing Appendix Submitted in Electronic Form
608.05
Deposit of Computer Program Listings
608.05(a)
Compact Disc Submissions of Large Tables
608.05(b)
Submissions of Biological Sequence Listings as ASCII Files
608.05(c)
Information Disclosure Statement609 Examiner Checklist for Information Disclosure Statements
609.01
Information Disclosure Statements in Continued Examinations or Continuing Applications
609.02
Information Disclosure Statements in National Stage Applications
609.03
[Reserved]609.04 Content Requirements for an Information Disclosure Statement
609.04(a)
Timing Requirements for an Information Disclosure Statement
609.04(b)
Examiner Handling of Information Disclosure Statements
609.05
Noncomplying Information Disclosure Statements
609.05(a)
Complying Information Disclosure Statements
609.05(b)
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MANUAL OF PATENT EXAMINING PROCEDURE
Documents Submitted as Part of Applicant’s Reply to Office Action
609.05(c)
Information Printed on Patent609.06 IDSs Electronically Submitted (e-IDS) Using EFS-Web
609.07
Electronic Processing of Information Disclosure Statement
609.08
601 Content of Provisional and Nonprovisional Applications [R-07.2015]
35 U.S.C. 111 Application.
[Editor Note: Applicable to any patent application filed under this provision on or after December 18, 2013. See pre-PLT (AIA) 35 U.S.C. 111 or pre-AIA 35 U.S.C. 111 for the law otherwise applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.
(3) FEE, OATH OR DECLARATION, AND CLAIMS.—The application shall be accompanied by the fee required by law. The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) FEE.—The application shall be accompanied by the fee required by law. The fee may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of a provisional application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to all the conditions in this subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119, 365(a), or 386(a) or to the benefit of an earlier filing date in the United States under section 120, 121, 365(c), or 386(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
(c) PRIOR FILED APPLICATION.—Notwithstanding the provisions of subsection (a), the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. Such application shall be treated as having never been filed, unless—
(1) the application is revived under section 27; and
(2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.
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§ 601PARTS, FORM, AND CONTENT OF APPLICATION
35 U.S.C. 111 (pre-PLT (AIA)) Application.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012, and before December 18, 2013. See 35 U.S.C. 111 or pre-AIA 35 U.S.C. 111 for the law otherwise applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.
(3) FEE AND OATH OR DECLARATION.—The application must be accompanied by the fee required by law. The fee and oath or declaration may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(4) FAILURE TO SUBMIT.—Upon failure to submit the fee and oath or declaration within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath or declaration was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) FEE.—
(A) The application must be accompanied by the fee required by law.
(B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director
that the delay in submitting the fee was unavoidable or unintentional.
(4) FILING DATE.—The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to all the conditions in this subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
Pre-AIA 35 U.S.C. 111 requirements substantially correspond to those of pre-PLT (AIA) 35 U.S.C. 111, but do not include conforming amendments with regard to the oath or declaration provisions and other miscellaneous provisions of the AIA.
37 CFR 1.51 General requisites of an application.
(a) Applications for patents must be made to the Director of the United States Patent and Trademark Office.An application transmittal letter limited to the transmittal of the documents and fees comprising a patent application under this section may be signed by a juristic applicant or patent owner.
(b) A complete application filed under § 1.53(b) or § 1.53(d) comprises:
(1) A specification as prescribed by 35 U.S.C. 112, including a claim or claims, see §§ 1.71 to 1.77;
(2) The inventor’s oath or declaration, see §§ 1.63 and 1.64;
(3) Drawings, when necessary, see §§ 1.81 to 1.85; and
(4) The prescribed filing fee, search fee, examination fee, and application size fee, see § 1.16.
(c) A complete provisional application filed under § 1.53(c) comprises:
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(1) A cover sheet identifying:
(i) The application as a provisional application,
(ii) The name or names of the inventor or inventors, (see § 1.41(a)(2)),
(iii) The residence of each named inventor,
(iv) The title of the invention,
(v) The name and registration number of the attorney or agent (if applicable),
(vi) The docket number used by the person filing the application to identify the application (if applicable),
(vii) The correspondence address, and
(viii) The name of the U.S. Government agency and Government contract number (if the invention was made by an agency of the U.S. Government or under a contract with an agency of the U.S. Government);
(2) A specification as prescribed by 35 U.S.C. 112(a), see § 1.71;
(3) Drawings, when necessary, see §§ 1.81 to 1.85; and
(4) The prescribed filing fee and application size fee, see § 1.16.
(d) Applicants are encouraged to file an information disclosure statement in nonprovisional applications. See § 1.97 and § 1.98. No information disclosure statement may be filed in a provisional application.
I. GUIDELINES FOR DRAFTING A NONPROVISIONAL PATENT APPLICATION UNDER 35 U.S.C. 111(a)
The following guidelines illustrate the preferred layout and content of patent applications filed under 35 U.S.C. 111(a). These guidelines are suggested for the applicant’s use. See also 37 CFR 1.77 and MPEP § 608.01(a). If an application data sheet (37 CFR 1.76) is used, data supplied in the application data sheet need not be provided elsewhere in the application with one exception for applications filed before September 16, 2012. For such applications, the citizenship of each inventor must be provided in the oath or declaration under pre-AIA 37 CFR 1.63 even if this information is provided in the application data sheet (see pre-AIA 37 CFR 1.76(b)). If there is a discrepancy between the information submitted in an application data sheet and the information submitted elsewhere in the application, the application data sheet will control except for the naming of the inventors which is governed by 37 CFR 1.41 and, for applications filed before
September 16, 2012, the citizenship of the inventors. See MPEP § 601.05.
A complete application filed under 35 U.S.C. 111(a) comprises a specification, including claims, as prescribed by 35 U.S.C. 112, drawings as prescribed by 35 U.S.C. 113, an oath or declaration as prescribed by 35 U.S.C. 115, and the prescribed filing fee, search fee, examination fee and application size fee.
Arrangement and Contents of the Specification
The following order of arrangement is preferable in framing the specification. See also MPEP § 608.01(a). Each of the lettered items should appear in upper case, without underlining or bold type, as section headings.
(A) Title of the invention. (See MPEP § 606).
(B) Cross-reference to related applications. (See MPEP § 211 et seq.).
(C) Statement regarding federally sponsored research or development. (See MPEP § 310).
(D) The names of the parties to a joint research agreement (see 37 CFR 1.71(g)).
(E) Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on compact disc and an incorporation-by-reference of the material on the compact disc.
(F) Statement regarding prior disclosures by an inventor or joint inventor.
(G) Background of the invention. (See MPEP § 608.01(c)).
(1) Field of the invention.
(2) Description of related art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98.
(H) Brief summary of the invention. (See MPEP § 608.01(d)).
(I) Brief description of the several views of the drawing. (See MPEP § 608.01(f)).
(J) Detailed description of the invention. (See MPEP § 608.01(g)).
(K) Claim(s) (commencing on a separate sheet). (See MPEP § 608.01(i)-(p)).
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(L) Abstract of the Disclosure (commencing on a separate sheet). (See MPEP § 608.01(b)).
(M) Sequence Listing, if on paper (see 37 CFR 1.821 through 37 CFR 1.825).
II. GUIDELINES FOR DRAFTING A PROVISIONAL APPLICATION UNDER 35 U.S.C. 111(b)
A provisional application should preferably conform to the arrangement guidelines for nonprovisional applications. The specification must, however, comply with 35 U.S.C. 112(a) and refer to drawings, where necessary for an understanding of the invention. Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims. Furthermore, no oath or declaration is required. See MPEP § 201.04.
A cover sheet providing identifying information is required for a complete provisional application. In accordance with 37 CFR 1.51(c)(1) the cover sheet must state that it is for a provisional application, it must identify and give the residence of the inventor or inventors, and it must give a title of the invention. The cover sheet must also give the name and registration number of the attorney or agent (if applicable), the docket number used by the person filing the application (if applicable) and the correspondence address. If there is a governmental interest, the cover sheet must include a statement as to rights to inventions made under federally sponsored research and development (See MPEP § 310). 37 CFR 1.51(c)(1)(viii) requires the name of the government agency and the contract number, if the invention was developed by or while under contract with an agency of the U.S. government.
Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement. See 37 CFR 1.51(d). Since no substantive examination is made, such statements are unnecessary. The Office will not accept an information disclosure statement in a provisional application. Any such statement received will be returned or disposed of at the convenience of the Office.
This cover sheet information enables the Office to prepare a proper filing receipt and provides the Office of Patent Application Processing (OPAP) with most of the information needed to process the provisional application. See MPEP § 201.04 for a sample cover sheet.
III. THE APPLICATION
The parts of the application may be included in a single document.
The paper standard requirements for papers submitted as part of the record of a patent application is covered in MPEP § 608.01, subsection I. Determination of completeness of an application is covered in MPEP § 506 and § 601.01 et seq.
The elements of the application are stored together in an electronic file wrapper, bearing appropriate identifying data including the application number and filing date (MPEP § 719).
See also the following the MPEP sections.
Provisional applications, MPEP § 201.04.
Divisional applications, MPEP § 201.06.
Continuation applications, MPEP § 201.06(c).
Continued prosecution applications, MPEP § 201.06(d).
Reissue applications, MPEP § 1401.
Design applications, MPEP Chapter 1500.
Plant applications, MPEP Chapter 1600.
International applications filed under the Patent Cooperation Treaty (PCT), MPEP Chapter 1800.
InternationalApplications, commencement and entry into national stage, MPEP § 1893.01.
International design applications, MPEP Chapter 2900.
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Ex Parte Reexamination, MPEP Chapter 2200.
Inter Partes Reexamination, MPEP Chapter 2600.
Supplemental Examination, MPEP Chapter 2800.
A model, exhibit, or specimen is normally not admitted as part of the application, although it may be required in the prosecution of the application (37 CFR 1.91 and 1.93, MPEP § 608.03).
Copies of an application will be provided by the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b) unless the application has been disposed of (see 37 CFR 1.53(e), (f) and (g)).
601.01 Complete Application [R-07.2015]
37 CFR 1.53 Application number, filing date, and completion of application.
[Editor Note: Paragraphs (b), (c), (f) and (h) below have limited applicability as follows:]
(1) Paragraphs (b) and (c), are applicable only to patent applications filed under 35 U.S.C. 111(a) on or after December 18, 2013. See pre-PLT (AIA) 37 CFR 1.53 for paragraphs (b) and (c) otherwise in effect;
(2) Paragraph (f), effective December 18, 2013, and paragraph (h), effective September 16, 2012, are applicable only to patent applications filed under 35 U.S.C. 111(a) on or after September 16, 2012. See pre-AIA 37 CFR 1.53 for paragraphs (f) and (h) otherwise in effect.]
(a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.
(b) Application filing requirements — Nonprovisional application. The filing date of an application for patent filed under this section, other than an application for a design patent or a provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in the Office. The filing date of an application for a design patent filed under this section, except for a continued prosecution application under paragraph (d) of this section, is the date on which the specification as prescribed by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78.
(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named
in the prior application may be filed under this paragraph or paragraph (d) of this section.
(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
(c) Application filing requirements — Provisional application. The filing date of a provisional application is the date on which a specification, with or without claims, is received in the Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
(1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e), rather than converting the provisional application into a nonprovisional application pursuant to this paragraph. A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b), unless the
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provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application (i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a) may be made in a design application based on a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
(d) Application filing requirements — Continued prosecution (nonprovisional) application.
(1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent;
(ii) The prior nonprovisional application is a design application, but not an international design application, that is complete as defined by § 1.51(b) except for the inventor’s oath or declaration if the application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in § 1.53(f)(3)(i); and
(iii) The application under this paragraph is filed before the earliest of:
(A) Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior application;
(iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and the inventor's oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
(v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
(3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b), the search fee as set forth in § 1.16(l), and the examination fee as set forth in § 1.16(p).
(4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.
(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
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(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
(e) Failure to meet filing date requirements.
(1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to correct the filing error. If, however, a request for an application under paragraph (d) of this section does not meet the requirements of that paragraph because the application in which the request was filed is not a design application, and if the application in which the request was filed was itself filed on or after June 8, 1995, the request for an application under paragraph (d) of this section will be treated as a request for continued examination under § 1.114.
(2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f). In the absence of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.
(3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.
(f) Completion of application subsequent to filing — Nonprovisional (including continued prosecution or reissue) application.
(1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, search fee, or examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include at least one claim or the inventor's oath or declaration (§§ 1.63, 1.64 , 1.162 or 1.175), and the applicant has provided a correspondence address (§ 1.33(a)), the applicant will be notified and given a period of time within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by § 1.16(f) to avoid abandonment.
(2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include
the basic filing fee, search fee, examination fee, at least one claim, or the inventor's oath or declaration, and the applicant has not provided a correspondence address (§ 1.33(a)), the applicant has three months from the filing date of the application within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge required by § 1.16(f) to avoid abandonment.
(3) The inventor's oath or declaration in an application under § 1.53(b) must also be filed within the period specified in paragraph (f)(1) or (f)(2) of this section, except that the filing of the inventor's oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in paragraphs (f)(3)(i) and (f)(3)(ii) of this section.
(i) The application must be an original (non-reissue) application that contains an application data sheet in accordance with § 1.76 identifying:
(A) Each inventor by his or her legal name;
(B) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
(ii) The applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee for the patent is paid. If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)). The Office may dispense with the notice provided for in paragraph (f)(1) of this section if each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, has been filed before the application is in condition for allowance.
(4) If the excess claims fees required by § 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by § 1.16(h), (i), and (j) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s), the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
(5) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuation-in-part applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the inventor's oath or declaration from the prior application for a continuing application under paragraph (b) of this section.
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(6) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
(g) Completion of application subsequent to filing — Provisional application.
(1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.
(2) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.
(3) If the application size fee required by § 1.16(s) (if any) is not paid on filing, the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
(4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
(h) Subsequent treatment of application — Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying with the rules relating thereto, are received, except that the inventor's oath or declaration may be filed when the application is otherwise in condition for allowance pursuant to paragraph (f)(3) of this section and minor informalities may be waived subject to subsequent correction whenever required.
(i) Subsequent treatment of application - Provisional application. A provisional application for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).
37 CFR 1.53 pre-PLT (AIA) Application number, filing date, and completion of application.
[Editor Note: Paragraphs (b) and (c) are applicable to patent applications filed under 35 U.S.C. 111 before December 18, 2013. For the text of paragraphs (a), (d), (e), (g), and (i) applicable to patent applications filed under 35 U.S.C. 111 before December 18, 2013, see 37 CFR 1.53. For the text of paragraphs (f) and (h), see 37 CFR 1.53 for applications filed under 35 U.S.C. 111 on or after September 16, 2012 and see pre-AIA 37 CFR 1.53 for applications filed before September 16, 2012.]
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(b) Application filing requirements - Nonprovisional application . The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and § 1.78(c) and (d).
(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
(c) Application filing requirements - Provisional application . The filing date of a provisional application is the date on which a specification as prescribed by 35 U.S.C. 112(a), and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
(1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will
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not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, the inventor's oath or declaration, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application ( i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a)(4) may be made in a design application based on a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
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37 CFR 1.53 pre-AIA Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under pre-AIA 35 U.S.C. 111 before September 16, 2012. For the text of paragraphs (a), (d), (e), (g), and (i) applicable to patent applications filed under 35 U.S.C. 111 before September 16, 2012, see 37 CFR 1.53. For the text of paragraphs (b) and (c) applicable to patent applications filed under 35 U.S.C. 111 before September 16, 2012, see pre-PLT (AIA) 37 CFR 1.53.]
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(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application.
(1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, the search fee, or the examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include an oath or declaration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration in an application under paragraph (b) of this section, and pay the surcharge if required by § 1.16(f) to avoid abandonment.
(2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, the search fee, the examination fee, or an oath or declaration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration, and pay the surcharge required by § 1.16(f) to avoid abandonment.
(3) If the excess claims fees required by §§ 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by §§ 1.16(h), (i) and (j) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s), the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
(4) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuation-in-part applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the oath or declaration from the prior application for a continuation or divisional application under paragraph (b) of this section.
(5) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
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(h) Subsequent treatment of application — Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying with the rules relating thereto, are received, except that certain minor informalities may be waived subject to subsequent correction whenever required.
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Rev. 07.2015, November 2015600-11
§ 601.01PARTS, FORM, AND CONTENT OF APPLICATION
37 CFR 1.53 relates to application numbers, filing dates, and completion of applications. Note that the substantive requirements under 37 CFR 1.53 for applications filed on or after September 16, 2012 as compared to those filed prior to September 16, 2012 (pre-AIA) are the same with the exception of 37 CFR 1.53(f), pertaining to completion of a nonprovisional application subsequent to filing.Also, note that the filing date requirements under 37 CFR 1.53(b) and (c) for applications filed on or after December 18, 2013 are different from those filed prior to December 18, 2013. For example, under 37 CFR 1.53(b), except for design applications, nonprovisional applications filed on or after December 18, 2013 may receive a filing date even if the application is filed without claims or drawings. See MPEP § 601.01(a) for additional information. Similarly, provisional applications filed on or after December 18, 2013 may receive a filing date even if the application is filed without drawings. See MPEP § 601.01(b) for additional information. If the subject matter of a nonprovisional application admits of illustration by a drawing to facilitate understanding of the invention, including where a drawing is necessary for the understanding of the invention, the Office will continue the practice of requiring a drawing. See MPEP § 608.02 (item IV). Any claim or any drawing submitted after the filing date of an application may not contain new matter. 37 CFR 1.53(a) indicates that an application number is assigned for identification purposes to any paper which purports to be an application for a patent, even if the application is incomplete or informal. The remaining sections of 37 CFR 1.53 treat nonprovisional applications filed under 35 U.S.C. 111(a) separately from provisional applications filed under 35 U.S.C. 111(b).
37 CFR 1.53(d) sets forth the filing date requirements for a continued prosecution application (CPA). A CPA is a nonprovisional application which must be filed on or after December 1, 1997. Only a continuation or divisional application (but not a continuation-in-part) may be filed as a CPA. See MPEP § 201.06(d). Effective July 14, 2003, CPA practice under 37 CFR 1.53(d) does not apply to
utility and plant applications. CPAs can only be filed in design applications filed under 35 U.S.C. 111(a).
601.01(a) Nonprovisional Applications Filed Under 35 U.S.C. 111(a) [R-07.2015]
I. APPLICATION FILING REQUIREMENTS
The procedure for filing a nonprovisional application under 35 U.S.C. 111(a) is set forth in 37 CFR 1.53(b) and 37 CFR 1.53(d). 37 CFR 1.53(b) may be used to file any original, reissue, or substitute nonprovisional application and any continuing application, i.e., continuation, divisional, or continuation-in-part.
Except for design applications, the filing date for applications filed under 35 U.S.C. 111 on or after December 18, 2013 is the date on which a specification, with or without claims, is received in the Office. The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. Effective for applications filed on or after December 18, 2013, 37 CFR 1.53(b) was amended to implement the changes to 35 U.S.C. 111(a) and 35 U.S.C. 171 by the Patent Law Treaties Implementation Act of 2012 (PLTIA) (Public Law 112-211). 35 U.S.C. 111(a) now provides minimal formal requirements necessary for an application to be entitled to a filing date to safeguard against the loss of a filing date due to a technicality. However, these minimal formal requirements should not be viewed as prescribing a best practice for the preparation and filing of a patent application. The preparation of claims to any claimed invention for which patent protection is desired and the inclusion of such claims with the application on filing will help ensure that the application satisfies the disclosure requirements of 35 U.S.C. 112(a) for any such claimed invention.
For applications filed under 35 U.S.C. 111(a) prior to December 18, 2013, a filing date is assigned to a nonprovisional application as of the date a specification containing a description and claim and any necessary drawings are filed in the U.S. Patent
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and Trademark Office (Office). See pre-PLT (AIA) 37 CFR 1.53(b).
Failure to meet any of the requirements in 37 CFR 1.53(b) will result in the application being denied a filing date. The filing date to be accorded such an application is the date on which all of the requirements of 37 CFR 1.53(b) are met.
37 CFR 1.53(d) may be used to file either a continuation or a divisional application (but not a continuation-in-part) of a design application. The prior nonprovisional application must be a design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor’s oath or declaration if the continued prosecution application (CPA) is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. Any application filed under 37 CFR 1.53(d) must disclose and claim only subject matter disclosed in the prior nonprovisional application and must name as inventors the same or less than all of the inventors named in the prior nonprovisional application. Under 37 CFR 1.53(d), the filing date assigned is the date on which a request, on a separate paper, for an application under 37 CFR 1.53(d) is filed. An application filed under 37 CFR 1.53(d) must be filed before the earliest of:
(A) payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted in the prior application;
(B) abandonment of the prior application; or
(C) termination of proceedings on the prior application.
The filing fee , search fee and examination fee for an application filed under 37 CFR 1.53(b) or 37 CFR 1.53(d) and the oath or declaration for an application filed under 37 CFR 1.53(b) can be submitted after the filing date. In addition, for applications, other than design applications, filed under 35 U.S.C. 111(a) on or after December 18, 2013, the claims and drawings may be submitted after the filing date, within such period and under such conditions, including the payment of a surcharge, as prescribed by the Office. See subsection II below for more
information on completion of an application subsequent to filing. However, no amendment (including the submission of claims and drawings) may introduce new matter into the disclosure of an application after its filing date. Drawings should be submitted on filing if necessary for the understanding of the invention.
If the required basic filing fee is not paid during the pendency of the application, the application will be disposed of.
The basic filing fee must be paid within the pendency of a nonprovisional application in order to permit benefit of the application to be claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) in a subsequent nonprovisional application, international application, or international design application.
See 37 CFR 1.78. Copies of an application will be provided by the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b) unless the application has been disposed of (see 37 CFR 1.53(e) and (f)).
37 CFR 1.53(h) indicates that a patent application will not be forwarded for examination on the merits until all required parts have been received, except applications filed on or after September 16, 2012 will be forwarded for examination even if lacking the inventor’s oath or declaration provided that a compliant application data sheet (ADS) is filed.
II. COMPLETION OF NONPROVISIONAL APPLICATION UNDER 35 U.S.C. 111 SUBSEQUENT TO FILING
For applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, except for design applications, a filing date is granted to a nonprovisional application when a specification, with or without claims, is received in the Office. The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office.
Rev. 07.2015, November 2015600-13
§ 601.01(a)PARTS, FORM, AND CONTENT OF APPLICATION
For applications filed prior to December 18, 2013, a filing date is granted to a nonprovisional application for patent that includes at least a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to 37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing referred to in the specification or required by 37 CFR 1.81(a), which is filed in the U.S. Patent and Trademark Office.
A. Completion of Nonprovisional Application That Is Filed On or After December 18, 2013 And Is Not A Design Application
[Editor Note: See subsection B., below, for information that pertains to all applications filed under 35 U.S.C. 111(a) on or after September 16, 2012 (including utility and plant patent applications filed on or after December 18, 2013 and design patent applications). See subsection C., below, for information pertaining to applications filed under 35 U.S.C. 111(a) before September 16, 2012.]
If an application which has been accorded a filing date does not include the appropriate filing fee, search fee, examination fee, or inventor's oath or declaration, applicant will be so notified in accordance with 37 CFR 1.53(f). See subsection II.B. below for information regarding completion of a nonprovisional application that is missing the appropriate filing fee, search fee, examination fee, or inventor’s oath or declaration.
If an application which has been accorded a filing date does not include at least one claim, the applicant will be notified and given a time period to file claim(s) and pay the surcharge, if required by 37 CFR 1.16(f), to avoid abandonment of the application provided the applicant has given a correspondence address. If the applicant failed to provide a correspondence address, the applicant has three months from the filing date of the application within which to file claim(s) and pay the surcharge required by 37 CFR 1.16(f) to avoid abandonment of the application. Therefore, an application filed without any claims will be treated in a manner analogous to how an application without the filing fee, search fee, or examination fee is treated. See subsection B. below for more information.
If an application which has been accorded a filing date does not include any drawings, see MPEP § 601.01(f) for information on completing the application. If an application which has been accorded a filing date but is without all the figures of drawings, see MPEP § 601.01(g) for information on completing the application.
B. Completion of Nonprovisional Application, Including Design Application, Filed On or After September 16, 2012
[Editor Note: See subsection A., above, for specific information regarding applications that are filed under 35 U.S.C. 111(a) on or after December 18, 2013 and are not design applications. See subsection C., below, for applications filed before September 16, 2012.]
If an application which has been accorded a filing date does not include the appropriate filing fee, search fee, examination fee, or inventor's oath or declaration, applicant will be so notified in accordance with 37 CFR 1.53(f).
For applications filed before September 16, 2012, the Office issued a Notice to File Missing Parts if an application under 37 CFR 1.53(b) did not contain the basic filing fee, the search fee, or the examination fee, or the inventor's oath or declaration, and the applicant was given a time period (usually two months) within which to file the missing basic filing fee, the search fee, the examination fee, or the inventor's oath or declaration and pay the surcharge required by 37 CFR 1.16(f) to avoid abandonment. See subsection II.C. below for additional information regarding completion of a nonprovisional application filed before September 16, 2012.
For applications filed on or after September 16, 2012, the former missing parts practice under pre-AIA 37 CFR 1.53(f) was revised to allow applicants to postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance. 37 CFR 1.53(f) was further revised, effective December 18, 2013, to require that, for applications filed on or after September 16, 2012, the inventor’s oath or declaration in compliance with 37 CFR 1.63 or a substitute statement in compliance with 37 CFR 1.64 must be filed no later than the date the issue fee is paid to
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avoid abandonment of the application. This time period is not extendable under 37 CFR 1.136 (see 37 CFR 1.136(c)). The Office may dispense with the notice under 37 CFR 1.53(f)(1) if each required oath or declaration in compliance with 37 CFR 1.63 or substitute statement in compliance with 37 CFR 1.64 has been filed before the application is in condition for allowance.
37 CFR 1.53(f)(1) provides for a notice (if the applicant has provided a correspondence address) if the application does not contain the basic filing fee, the search fee, or the examination fee, or if the application under 37 CFR 1.53(b) does not contain the inventor's oath or declaration. 37 CFR 1.53(f)(1) provides that applicant must pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by 37 CFR 1.16(f) within the time period set in the notice to avoid abandonment.
Section 1.53(f)(3) (discussed subsequently) sets forth the time period for filing the inventor's oath or declaration in an application under 37 CFR 1.53(b) and provides the conditions under which an applicant may postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance.
37 CFR 1.53(f)(2) provides for the situation where applicant has not provided a correspondence address in an application under 37 CFR 1.53(b), and the application does not contain the basic filing fee, the search fee, or the examination fee, or does not contain the inventor's oath or declaration.37 CFR 1.53(f)(2) provides that if the applicant has not provided a correspondence address, the applicant must pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by 37 CFR 1.16(f), within three months from the filing date of the application to avoid abandonment.
37 CFR 1.53(f)(3) sets forth the time period for filing the inventor's oath or declaration in an application under 37 CFR 1.53(b) and provides the conditions under which an applicant may postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance. Section 1.53(f)(3) specifically provides that the inventor's oath or declaration in an application under 37 CFR 1.53(b) must also be filed within the period specified
in 37 CFR 1.53(f)(1) or (f)(2), except that the filing of the inventor's oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in 37 CFR 1.53(f)(3)(i) through (f)(3)(ii). This requires payment of the surcharge under 37 CFR 1.16(f) if the inventor’s oath or declaration (executed by or with respect to each inventor) is not submitted on filing of the application. If the surcharge is not paid at the time the application is filed, the Office will send a Notice to File Missing Parts requiring the surcharge. If, however, a general authorization to charge any required fees to a deposit account (that covers fees under 37 CFR 1.16) is submitted on filing of the application, the Office will charge the surcharge in accordance with the deposit account authorization. Payment of the surcharge cannot be postponed until a Notice of Allowance issues or payment of the issue fee but must be paid in the time period specified in 37 CFR 1.53(f)(1) or 37 CFR 1.53(f)(2).
37 CFR 1.53(f)(3)(i) provides that the application must be an original (non-reissue) application that contains an application data sheet in accordance with 37 CFR 1.76 identifying: (1) each inventor by his or her legal name; and (2) a mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor. The applicant must file an oath or declaration in compliance with 37 CFR 1.63, or substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor no later than the date on which the issue fee is paid. See 35 U.S.C. 115(f).
If an application under 37 CFR 1.53(b) does not include the inventor's oath or declaration but does contain the applicable filing fees (basic filing fee, search fee, the examination fee, any applicable excess claims fee, and any applicable application size fee), the surcharge required by 37 CFR 1.16(f) (for filing the oath or declaration later than the filing date), and a signed application data sheet providing the information required by 37 CFR 1.53(f)(3)(i), the Office will not issue a Notice to File Missing Parts requiring the applicant to file the inventor's oath or declaration.
Rev. 07.2015, November 2015600-15
§ 601.01(a)PARTS, FORM, AND CONTENT OF APPLICATION
If an application under 37 CFR 1.53(b) that does not contain the inventor's oath or declaration also does not contain the applicable filing fees, or the surcharge required by 37 CFR 1.16(f), or a signed application data sheet providing the information required by 37 CFR 1.53(f)(3)(i), the Office will issue a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing parts. While the inventor's oath or declaration will not be required to be filed within the period for reply to the Notice to File Missing Parts if the applicant provides a signed application data sheet providing the information required by 37 CFR 1.53(f)(3)(i), any required filing fees and surcharge required by 37 CFR 1.16(f) must be filed within the period for reply to the Notice to File Missing Parts to avoid abandonment.
If an application is in condition for allowance but does not include an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, the Office will issue a “Notice of Allowance and Fee(s) Due” (PTOL-85) together with a "Notice of Allowability'' (PTOL-37) including a "Notice Requiring Inventor’s Oath or Declaration" (PTOL-2306) requiring the applicant to file an oath or declaration in compliance with 37 CFR 1.63, or substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, no later than the date of payment of the issue fee to avoid abandonment. If applicant receives a “Notice Requiring Inventor’s Oath or Declaration” and fails to file a proper reply to the notice before or with the payment of the issue fee, the application will be regarded as abandoned. See 37 CFR 1.53(f)(3)(ii).
C. Completion of Nonprovisional Application Filed Before September 16, 2012
[Editor Note: See subsections A. and B., above, for applications filed under 35 U.S.C. 111 on or after December 18, 2013. See subsection B., above, for applications filed on or after September 16, 2012.]
If an application which has been accorded a filing date does not include the appropriate filing fee, search fee, examination fee, or oath or declaration, applicant will be so notified in accordance with
pre-AIA 37 CFR 1.53(f) and given a period of time within which to file the missing parts to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) in order to prevent abandonment of the application
Applicants should submit a copy of any notice to file missing parts or notice of incomplete application with the reply submitted to the U.S. Patent and Trademark Office, unless the reply is being submitted via EFS-Web. Applicants should also include the application number on all correspondence to the Office. These measures will aid the Office in matching papers to applications, thereby expediting the processing of applications.
In order for the Office to so notify the applicant, a correspondence address must also be provided in the application. The correspondence address may be different from the mailing (post office) address of the applicant. For example, the address of applicant’s registered attorney or agent may be used as the correspondence address. If applicant fails to provide the Office with a correspondence address, the Office will be unable to provide applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f). In such a case, applicant will be considered to have constructive notice as of the filing date that the application must be completed within two months from the filing date before abandonment occurs per pre-AIA 37 CFR 1.53(f). This time period may be extended pursuant to 37 CFR 1.136.
The oath or declaration filed in reply to such a notice under pre-AIA 37 CFR 1.53(f) must be executed by the inventors and must identify the specification and any amendment filed with the specification which includes subject matter not otherwise included in the specification (including claims) or drawings of the application as filed. See MPEP § 602. If an amendment is filed with the oath or declaration filed after the filing date of the application, it may be identified in the oath or declaration but may not include new matter. No new matter may be included after the filing date of the application. See MPEP § 608.04(b). If the oath or declaration improperly refers to an amendment filed after the filing date of the application which contains new matter, a supplemental oath or declaration will be required
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pursuant to pre-AIA 37 CFR 1.67, deleting the reference to the amendment containing new matter. If an amendment is filed on the same day that the application filed under pre-AIA 37 CFR 1.53(b) is filed it is a part of the original application papers and the question of new matter is not considered. Similarly, if the application papers are altered prior to execution of the oath or declaration and the filing of the application, new matter is not a consideration since the alteration is considered as part of the original disclosure.
III. APPLICATION UNDER 35 U.S.C. 111(a) FILED BY REFERENCE
35 U.S.C. 111 Application.
[Editor Note: Applicable to any patent application filed under this provision on or after December 18, 2013. See pre-PLT (AIA) 35 U.S.C. 111 or pre-AIA 35 U.S.C. 111 for the law otherwise applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.
(3) FEE, OATH OR DECLARATION, AND CLAIMS.—The application shall be accompanied by the fee required by law. The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
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(c) PRIOR FILED APPLICATION.—Notwithstanding the provisions of subsection (a), the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application
was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. Such application shall be treated as having never been filed, unless—
(1) the application is revived under section 27; and
(2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.
37 CFR 1.57 Incorporation by reference
[Editor Note: Paragraph (a) below is only applicable to patent applications filed under 35 U.S.C. 111(a) on or after December 18, 2013.]
(a) Subject to the conditions and requirements of this paragraph, a reference made in the English language in an application data sheet in accordance with § 1.76 upon the filing of an application under 35 U.S.C. 111(a) to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a) for purposes of a filing date under § 1.53(b).
(1) If the applicant has provided a correspondence address (§ 1.33(a)), the applicant will be notified and given a period of time within which to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i) if it is in a language other than English, and pay the surcharge required by § 1.16(f), to avoid abandonment. Such a notice may be combined with a notice under § 1.53(f).
(2) If the applicant has not provided a correspondence address (§ 1.33(a)), the applicant has three months from the filing date of the application to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i) if it is in a language other than English, and pay the surcharge required by § 1.16(f), to avoid abandonment.
(3) An application abandoned under paragraph (a)(1) or (a)(2) of this section shall be treated as having never been filed, unless:
(i) The application is revived under § 1.137; and
(ii) A copy of the specification and any drawings of the previously filed application are filed in the Office.
(4) A certified copy of the previously filed application must be filed in the Office, unless the previously filed application is an application filed under 35 U.S.C. 111 or 363, or the
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previously filed application is a foreign priority application and the conditions set forth in § 1.55(i) are satisfied with respect to such foreign priority application. The certified copy of the previously filed application, if required by this paragraph, must be filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, or be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).
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Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions of the Patent Law Treaty. Section 201(a) of the PLTIA amended 35 U.S.C. 111 to add 35 U.S.C. 111(c). As provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application. 35 U.S.C. 111(c) specifically provides that the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under 35 U.S.C. 111(a) to a previously filed application (specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed) shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. 35 U.S.C. 111(c) further provides that a copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director, and that a failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. 35 U.S.C. 111(c) finally provides that such an application shall be treated as having never been filed, unless: (1) the application is revived under 35 U.S.C. 27; and (2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.
Effective December 18, 2013, 37 CFR 1.57 was amended to implement the reference filing provisions of 35 U.S.C. 111(c). 37 CFR 1.57(a) now provides that, subject to the conditions and requirements of 37 CFR 1.57(a), a reference, made in the English language in an application data sheet (ADS) in accordance with 37 CFR 1.76 upon the filing of an application under 35 U.S.C. 111(a), to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a) for purposes of a filing date under 37 CFR 1.53(b). Thus, the specification and any drawings of the previously filed application will be considered in determining whether an application under 35 U.S.C. 111(a) filed by reference under 37 CFR 1.57(a) is entitled to a filing date under 37 CFR 1.53(b). When an application for a design patent includes a reference to a previously filed application under 35 U.S.C. 111(c), the previously filed application must include at least one claim. 35 U.S.C. 171 provides that the filing date of an application for a design patent is the date on which the specification as prescribed by 35 U.S.C. 112, which includes at least one claim, and any required drawings are filed.
In a reference filing under 37 CFR 1.57(a), the reference to a previously filed application in an ADS is not sufficient to establish a priority or benefit claim to that previously filed application. Reference filing information is provided in a section of the ADS that is separate from the foreign priority information section and the domestic benefit claim information section. See MPEP § 211 et seq. for information regarding domestic benefit claims and MPEP § 213 et seq. for information regarding claims for foreign priority.
The PLT and the Regulations under the PLT provide for the establishment of Model International Forms (PLT Model forms). The PLT Model forms may be found on WIPO’s Internet website at www.wipo.int/treaties/en/text.jsp?file_id=289773. The requirement for a reference to the previously
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filed application in an ADS will be satisfied by the presentation of such reference to the previously filed application on the Patent Law Treaty Model International Request Form (PLT Model Request form). Applicants may use the PLT Model Request form for national applications under 35 U.S.C. 111 filed in the USPTO or national applications filed in other PLT countries. However, as provided in 37 CFR 1.76(d)(2), information in an ADS will govern when inconsistent with the information supplied at any time in PLT Model forms. Furthermore, if applicants want to postpone submission of the inventor’s oath or declaration until the application is in condition for allowance, an ADS that provides the inventor information is required. Accordingly, the use of an ADS to supply application information for reference filing is encouraged.
If the applicant has provided a correspondence address (37 CFR 1.33(a)), the applicant will be notified and given a period of time within which to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application and the fee required by 37 CFR 1.17(i) if it is in a language other than English, and pay the surcharge required by 37 CFR 1.16(f), to avoid abandonment. Such a notice may be combined with a notice under 37 CFR 1.53(f) (e.g., a notice requiring that the applicant provide at least one claim and pay the filing fees). See 37 CFR 1.57(a)(1).
If the applicant has not provided a correspondence address (37 CFR 1.33(a)), the applicant has three months from the filing date of the application under 35 U.S.C. 111(a) filed by reference under 37 CFR 1.57(a) to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application and the fee required by 37 CFR 1.17(i) if it is in a language other than English, and pay the surcharge required by 37 CFR 1.16(f), to avoid abandonment. See 37 CFR 1.57(a)(2).
In response to a notice requiring a copy of the specification and drawings from the previously filed application, applicants must submit an actual copy of the specification and any drawings of the previously filed application without any modifications. If the specification and drawings
submitted in response to the notice are modified, i.e., updated, corrected, or reformatted in any manner, such modified specification and any modified drawings would not satisfy the copy requirement of 35 U.S.C. 111(c) and 37 CFR 1.57(a). Any desired changes to the copy of the previously filed application must be made by way of an amendment under 37 CFR 1.121 without adding new matter.
An application abandoned under 37 CFR 1.57(a)(1) or (a)(2) shall be treated as having never been filed, unless: (1) the application is revived under 37 CFR 1.137; and (2) a copy of the specification and any drawings of the previously filed application are filed in the Office. See 37 CFR 1.57(a)(3).
An applicant may also claim priority to or the benefit of an application filed by reference under 35 U.S.C. 111(c) and 37 CFR 1.57(a). However, the phrase ”treated as having never been filed” in 35 U.S.C. 111(c) and 37 CFR 1.57(a)(3) precludes an applicant from claiming priority to or the benefit of an application filed by reference that has been abandoned under 35 U.S.C. 111(c) and 37 CFR 1.57(a)(1) or 1.57(a)(2). An applicant may claim priority to or the benefit of an application abandoned under 35 U.S.C. 111(c) and 37 CFR 1.57(a)(1) or (a)(2) only if the application is revived under 37 CFR 1.137 and a copy of the specification and any drawings of the previously filed application are submitted to the Office.
A certified copy of the previously filed application must be filed in the Office within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, unless the previously filed application is an application filed under 35 U.S.C. 111 or 35 U.S.C. 363, or the previously filed application is a foreign priority application and the conditions set forth in 37 CFR 1.55(h) are satisfied with respect to such foreign priority application. See 37 CFR 1.57(a)(4).
If a certified copy is required under 37 CFR 1.57(a)(4) and it is not filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, the certified copy must be
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accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g). The requirement for a certified copy of a previously filed foreign application is to ensure that the copy of the specification and any drawings subsequently provided by the applicant correspond to the specification and any drawings of the previously filed foreign application. The interim copy provision of 37 CFR 1.55(j) is not applicable to the requirement for a certified copy of a previously filed foreign application in an application filed by reference under 35 U.S.C. 111(c) and 37 CFR 1.57(a).
Applicants filing by reference under 35 U.S.C. 111(c) and 37 CFR 1.57 should take care to ensure that the application number, filing date, and intellectual property authority or country of the previously filed application is accurately specified on the ADS as the specification and drawings of the application specified on the ADS is the specification and drawings of the application being filed by reference under 35 U.S.C. 111(c) and 37 CFR 1.57. If an applicant specifies an application number, filing date, or intellectual property authority or country of an application other than the application number, filing date, or intellectual property authority or country of the intended previously filed application on the ADS (i.e., the applicant mistypes the application number, filing date, or intellectual property authority or country on the ADS), the applicant may file a petition under 37 CFR 1.53 to have the application accorded a filing date as of the date the specification and drawings of the intended previously filed application is filed in the Office using that specification and drawings (rather than the specification and drawings of the application specified on the ADS). Simply submitting the specification and drawings of the intended previously filed application without such a petition under 37 CFR 1.53 in reply to a notice under 37 CFR 1.57(a) requiring the specification and drawings of the application specified on the ADS will result in the submission being treated as an incomplete reply. A reference filing statement made upon filing cannot be rescinded because the reference to the previously filed application constitutes the specification and any drawings of the instant application. See 35 U.S.C. 111(c). Accordingly, to avoid the risk of
incorrect filings and the required surcharge, applicants should simply file a copy of the specification and drawings of the previously filed application, if available, instead of relying upon the reference filing provisions.
If the previously filed application is also a priority application under 35 U.S.C. 119(a) through (d) and (f), 172, 35 U.S.C. 365(a) or (b), or 35 U.S.C. 386(a) or (b) and 37 CFR 1.55, an applicant should also consider filing a copy of the specification and drawings of the previously filed application in the Office no later than fourteen month from the filing date of the previously filed application (regardless of the time period provided in 37 CFR 1.57(a)) to avoid the loss of the right of priority under 37 CFR 1.55 in the event that the application number, filing date, or intellectual property authority or country of an application specified on the ADS is not the application number, filing date, or intellectual property authority or country of the intended previously filed application.
An application filed to obtain a filing date which includes both a reference to a previously filed application as provided for in 37 CFR 1.57(a) and application papers including a specification and drawings will be processed as a reference filing and applicant will be charged the surcharge under 37 CFR 1.16(f) even though a specification and drawings were submitted with the reference filing. The ADS form indicates that “the description and any drawings of the present application are replaced by this reference to the previously filed application.” Accordingly, the Office will send out a notice (e.g., Notice to File Missing Parts) requiring the surcharge and a copy of the specification and any drawings. Applicants must respond to the notice by filing a copy of the specification and any drawings of the previously filed application or by stating that the specification and drawings submitted on filing is a copy of the specification and drawings of the previously filed application. If the specification and drawings submitted on filing were not a copy of the specification and drawings of the previously filed application but instead were modified, i.e., updated, corrected, or reformatted in any manner, such modified specification and any modified drawings would not satisfy the copy requirement of 35 U.S.C. 111(c) and 37 CFR 1.57(a). In response to the notice,
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applicant must submit a copy of the specification and any drawings of the previously filed application. Any desired changes to the copy of the previously filed application must be made by way of an amendment under 37 CFR 1.121 without adding new matter. The modified specification and any drawings that were submitted on filing would not constitute the specification and drawings of the instant application and thus would not be used for examination purposes.
Reference filing is intended for situations when a copy of the previously filed application is not available at the time the current application is being filed. If a copy of the previously filed application is available, applicant should file the copy of the specification and drawings under 35 U.S.C. 111(a) and 37 CFR 1.51(b) and not complete the section of the ADS for filing by reference. As explained above, if the reference filing section of the ADS is completed, applicants will be required to pay the surcharge under 37 CFR 1.16(f), even if a copy of the previously filed application is present on filing the application. A reference filing statement made upon filing cannot be rescinded because the reference to the previously filed application constitutes the specification and any drawings of the instant application. See 35 U.S.C. 111(c).
There is no provision for the filing of a continuation-in-part of a previously filed application under 37 CFR 1.57(a). 35 U.S.C. 111(c) provides that the reference to the previously filed application “shall constitute the specification and any drawings of the subsequent application.” The specification and any drawings of a continuation-in-part would need to extend beyond the specification and any drawings of the previously filed application. Thus, the filing by reference of a continuation-in-part of the previously filed application is not contemplated by 35 U.S.C. 111(c).
601.01(b) Provisional Applications Filed Under 35 U.S.C. 111(b) [R-07.2015]
A provisional application filed on or after December 18, 2013 will be given a filing date as of the date a specification, with or without claims, is received in the Office. For provisional applications filed prior to December 18, 2013, the application will be given
a filing date in accordance with pre-PLT (AIA) 37 CFR 1.53(c) as of the date the written description and any necessary drawings are filed in the Office. The filing date requirements for a provisional application set forth in 37 CFR 1.53(c) substantially parallel the requirements for a nonprovisional application set forth in 37 CFR 1.53(b). Amendments, other than those required to make the provisional application comply with applicable regulations, are not permitted after the filing date of the provisional application.
When the specification or drawing are omitted, 37 CFR 1.53(e) requires that the applicant be notified and given a time period in which to submit the missing element to complete the filing. See MPEP § 601.01(f) and § 601.01(g) for treatment of applications filed without drawings, or filed without all figures of drawings, respectively.
37 CFR 1.53(c)(1) requires all provisional applications be filed with a cover sheet, which may be an application data sheet (37 CFR 1.76) or a cover letter identifying the application as a provisional application. The Office will treat an application as having been filed under 37 CFR 1.53(b), unless the application is clearly identified as a provisional application. A provisional application, which is identified as such, but which does not have a complete cover sheet as required by 37 CFR 1.51(c)(1) will be treated as a provisional application. However, the complete cover sheet and a surcharge will be required to be submitted at a later date in conformance with 37 CFR 1.53(g).
When the provisional application does not have a complete cover sheet or the appropriate fee, the applicant will be notified pursuant to 37 CFR 1.53(g) and given a time period in which to provide the necessary fee or cover sheet and to pay the surcharge as set forth in 37 CFR 1.16(g) in order to avoid abandonment of the application. The time period will usually be set at two (2) months from the date of notification. This time period may be extended under 37 CFR 1.136(a). If the filing fee is not timely paid, the Office may dispose of the provisional application. If no correspondence address has been provided, applicant has two months from the filing date to file the basic filing fee, cover sheet, and to pay the surcharge as set forth in 37 CFR 1.16(g) in
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order to avoid abandonment of the provisional application. Copies of a provisional application will be provided by the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b) unless the provisional application has been disposed of (see 37 CFR 1.53(e) and (g)).
The basic filing fee must be paid in a provisional application on filing or within the time period set forth in 37 CFR 1.53(g), and the provisional application must be entitled to a filing date under 37 CFR 1.53(c), if any claim for benefits under 35 U.S.C. 119(e) based on that application is made in a subsequently filed nonprovisional application. See 37 CFR 1.78.
37 CFR 1.53(e)(2) requires that any request for review of a refusal to accord an application a filing date be made by way of a petition accompanied by the fee set forth in 37 CFR 1.17(f) (see MPEP § 506.02).
601.01(c) Conversion to or from a Provisional Application [R-07.2015]
I. CONVERSION FROM A NONPROVISIONAL APPLICATION TO A PROVISIONAL APPLICATION
37 CFR 1.53 Application number, filing date, and completion of application.
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(c)
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(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
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An application filed under 37 CFR 1.53(b) may be converted to a provisional application in accordance with the procedure described in 37 CFR 1.53(c)(2). The procedure requires the filing of a request for conversion and the processing fee set forth in 37 CFR 1.17(q). The provisional application filing fee (37 CFR 1.16(d)) and the surcharge set forth in 37 CFR 1.16(g) are also required, although these fees do not need to be paid with the request for conversion. If the provisional application filing fee and the surcharge are not paid at the time of filing of the request for conversion, the Office will send a Notice to File Missing Parts in the provisional application requiring these fees. Filing of the request in the nonprovisional application is required prior to the abandonment of the 37 CFR 1.53(b) application, the payment of the issue fee, or the expiration of 12 months after the filing date of the 37 CFR 1.53(b) application, whichever event is earlier. The grant of any such request does not entitle applicant to a refund of the fees properly paid in the application filed under 37 CFR 1.53(b).
Converting a nonprovisional application to a provisional application will not avoid the publication of the nonprovisional application unless the request to convert is recognized in sufficient time to permit the appropriate officials to remove the nonprovisional application from the publication process. The Office cannot ensure that it can remove an application from publication or avoid publication of application information any time after the publication process for the application has been initiated. For information on procedures for removing an application from publication, see MPEP § 1120.
A provisional application is not entitled to claim priority to or benefit of a prior-filed application under 35 U.S.C. 119, 120, 121, 365, or 386. See MPEP § 201.04.After the nonprovisional application has been converted to a provisional application, any priority or benefit claims submitted in the nonprovisional application will be disregarded.
Applicants who wish to file a request for conversion under 37 CFR 1.53(c)(2) by mail should designate “Mail Stop Conversion” as part of the U. S. Patent and Trademark Office address.
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II. CONVERSION FROM A PROVISIONAL APPLICATION TO A NONPROVISIONAL APPLICATION
37 CFR 1.53 Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013. See pre-PLT (AIA) 37 CFR 1.53(c) for the rule otherwise in effect.]
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(c)
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(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e), rather than converting the provisional application into a nonprovisional application pursuant to this paragraph. A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application ( i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
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An application filed under 37 CFR 1.53(c) may be converted to a nonprovisional application in accordance with the procedure described in 37 CFR
1.53(c)(3). Applicants should carefully consider the patent term consequences of requesting conversion rather than simply filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e). Claiming the benefit of the provisional application under 35 U.S.C. 119(e) is less expensive and will result in a longer patent term. The procedure requires the filing of a request in the provisional application for the conversion of the provisional application to a nonprovisional application and the fee set forth in 37 CFR 1.17(i). The nonprovisional application resulting from conversion of a provisional application must also include the basic filing fee, search fee, and examination fee for the nonprovisional application. In addition, if the provisional application was not filed with an executed oath or declaration and the appropriate fees for a nonprovisional application, the surcharge set forth in 37 CFR 1.16(f) is required. Furthermore, an inventor’s oath or declaration is required to be filed in accordance with 37 CFR 1.53(f) if the provisional application was filed on or after September 16, 2012 or pre-AIA 37 CFR 1.53(f) if the provisional application was filed prior to September 16, 2012. See MPEP § 601.01(a). Filing of the request for conversion in the provisional application is required prior to the abandonment of the provisional application or the expiration of 12 months after the filing date of the 37 CFR 1.53(c) application, whichever event is earlier. The grant of any such request does not entitle applicant to a refund of the fees properly paid in the application filed under 37 CFR 1.53(c).
Applicants who wish to file a request for conversion under 37 CFR 1.53(c)(3) by mail should designate “Mail Stop Conversion” as part of the U. S. Patent and Trademark Office address.
601.01(d) Application Filed Without All Pages of Specification [R-07.2015]
The Office of Patent Application Processing (OPAP) reviews application papers to determine whether all of the pages of specification are present in the application. For an application filed under 37 CFR 1.53(b) or (c) prior to December 18, 2013 or a design application, if the application is filed without all of the page(s) of the specification, but containing
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something that can be construed as a written description, at least one drawing figure, if necessary under 35 U.S.C. 113 (first sentence), and, in a nonprovisional application, at least one claim, an OPAP notice (e.g., a “Notice of Omitted Items”) will be sent indicating that the application papers so deposited have been accorded a filing date, but are lacking some page(s) of the specification. For an application other than a design application filed under 37 CFR 1.53(b) or (c) on or after December 18, 2013, if the application is filed without all of the page(s) of the specification, but contains something that can be construed as a specification, with or without claims, an OPAP notice (e.g., a “Notice of Omitted Items”) will be sent indicating that the application papers so deposited have been accorded a filing date, but are lacking some page(s) of the specification.
If the application does not contain anything that can be construed as a written description, OPAP will mail a Notice of Incomplete Application indicating that the application lacks the specification required by 35 U.S.C. 112 and no filing date is granted.
I. APPLICATION ENTITLED TO FILING DATE
The procedure for handling nonprovisional application papers having omitted items was revised in 2007. See “Change in Procedure for Handling NonprovisionalApplications Having Omitted Items,” 1315 OG 103 (February 20, 2007). Under the revised procedure, the mailing of an OPAP notice regarding a missing page(s) of specification in a nonprovisional application will permit the applicant to:
(A) promptly establish prior receipt in the USPTO of the page(s) at issue. An applicant asserting that the page(s) was in fact received by the USPTO with the application papers must, within two months from the date of the OPAP notice, file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), along with evidence of such deposit. The petition fee will be refunded if it is determined that the page(s) was in fact received by the USPTO with the application papers deposited on filing. The two-month period is extendable under 37 CFR 1.136;
(B) promptly submit the omitted page(s) in a nonprovisional application and accept the date of
such submission as the application filing date. An applicant desiring to submit the omitted page(s) in a nonprovisional application and accept the date of such submission as the application filing date must, within two months from the date of the OPAP notice, file any omitted page(s) and a petition under 37 CFR 1.182 with the petition fee set forth in 37 CFR 1.17(f), requesting the later filing date. The two-month period is extendable under 37 CFR 1.136. For applications filed before September 16, 2012, an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 37 CFR 1.64 must be filed with the omitted page(s) and refer to such page(s); or
(C) accept the application as deposited in the USPTO by filing an appropriate amendment. Applicant may accept the application as deposited in the USPTO by either:
(1) filing a substitute specification (including claims) that amends the specification to renumber the pages consecutively and cancels any incomplete sentences, in compliance with 37 CFR 1.121(b)(3) and 1.125, without adding the subject matter that was in the omitted page(s) and without adding any new matter (see 35 U.S.C. 132(a)). For a missing page of the claim listing only, applicant is required to submit a replacement claim listing with the claims renumbered consecutively, or, if amendment to the claims is also necessary, then a complete claim listing in compliance with 37 CFR 1.121(c). The application will maintain the filing date as of the date of deposit of the application papers in the USPTO, and the original application papers (i.e., the original disclosure of the invention) will include only those application papers present in the USPTO on the date of deposit , or
(2) filing a substitute specification (excluding claims), in compliance with 37 CFR 1.121(b)(3) and 1.125, to add the subject matter in the omitted page(s) by relying on an incorporation by reference under 37 CFR 1.57(b) or other portions of the original disclosure, without any adding new matter (see 35 U.S.C. 132(a)). For a missing page of the claim listing, applicant is required to submit a complete claim listing in compliance with 37 CFR 1.121(c). If an application was filed on or after September 21, 2004, and contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional,
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or international application that was present on the filing date of the application, and the omitted portion of the specification was inadvertently omitted from the application and is completely contained in the prior-filed application, applicant may submit an amendment to include the inadvertently omitted portion of the specification pursuant to 37 CFR 1.57(b). The amendment should be identified as an amendment pursuant to 37 CFR 1.57(b) and must comply with the requirements of 37 CFR 1.57(b) and 37 CFR 1.121. See MPEP § 217. The application will maintain the filing date as of the date of deposit of the original application papers in the USPTO. The original application papers (i.e., the original disclosure of the invention) will include only those application papers present in the USPTO on the original date of deposit. The two-month period is extendable under 37 CFR 1.136.
The submission of omitted page(s) in a nonprovisional application and acceptance of the date of such submission as the application filing date is tantamount to simply filing a new application. Thus, applicants should consider filing a new application as an alternative to submitting a petition under 37 CFR 1.182 (with the petition fee under 37 CFR 1.17(f)) with any omitted page(s), which is a cost effective alternative in instances in which a nonprovisional application is deposited without filing fees. Likewise, in view of the relatively low filing fee for provisional applications, and the USPTO’s desire to minimize the processing of provisional applications, the USPTO will not grant petitions under 37 CFR 1.182 to accept omitted page(s) and accord an application filing date as of the date of such submission in provisional applications. The applicant should simply file a new completed provisional application. The mailing of an OPAP notice regarding omitted page(s) in a provisional application will permit the applicant to either: (1) promptly establish prior receipt of the page(s) at issue by filing of a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), along with evidence of such deposit; or (2) accept the application as deposited by failing to file a petition within a two-month non-extendable time period. Applications in which an OPAP notice regarding omitted items has been mailed will be retained in OPAP to await a reply to the notice.
Failure to timely reply to the OPAP notice in a nonprovisional application will result in abandonment of the application. Nonprovisional applications that are timely completed will then be forwarded to the appropriate Technology Center for examination of the application. For provisional applications in which applicant accepts the application as deposited by failing to timely file a petition in response to an OPAP notice regarding omitted items, if the provisional application is complete under 37 CFR 1.51(c), it will be held in Office’s Image File Wrapper (IFW) system and automatically abandoned at the end of its pendency period. See MPEP § 601.01(a) for treatment of nonprovisional applications that are not complete under 37 CFR 1.51(b) and MPEP § 601.01(b) for treatment of provisional applications that are not complete under 37 CFR 1.51(c)).
II. APPLICATION NOT ENTITLED TO FILING DATE
If the application does not contain anything that can be construed as a written description, OPAP will mail a Notice of Incomplete Application indicating that the application lacks the specification required by 35 U.S.C. 112. Applicant may:
(A) file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), asserting that (1) the missing specification was submitted, or (2) the application papers as deposited contain an adequate written description under 35 U.S.C. 112. The petition under 37 CFR 1.53(e) must be accompanied by sufficient evidence (37 CFR 1.181(b)) to establish applicant’s entitlement to the requested filing date (e.g. , a date-stamped postcard receipt (MPEP § 503) to establish prior receipt in the USPTO of the missing specification);
(B) submit the omitted specification, including at least one claim if the application is a nonprovisional application filed under 35 U.S.C. 111(a) prior to December 18, 2013 or a design application, and accept the date of such submission as the application filing date. For applications filed before September 16, 2012, the omitted specification should be accompanied by an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 37 CFR 1.64 referring to the specification being submitted; or
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(C) submit an amendment under 37 CFR 1.57(b) in a nonprovisional application. If a nonprovisional application was filed on or after September 21, 2004, and contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application that was present on the filing date of the application, and the specification was inadvertently omitted from the application and is completely contained in the prior-filed application, applicant may submit an amendment to include the inadvertently omitted specification pursuant to 37 CFR 1.57(b). The amendment must be accompanied by a petition under 37 CFR 1.53(e) along with the petition fee set forth in 37 CFR 1.17(f). See MPEP § 217. The amendment should be identified as an amendment pursuant to 37 CFR 1.57(b) and must comply with the requirements of 37 CFR 1.57(b) and 37 CFR 1.121. The two-month period is extendable under 37 CFR 1.136.
Applications in which a “Notice of Incomplete Application” has been mailed will be retained in OPAP to await action by the applicant since further action by the applicant is necessary for the application to be accorded a filing date. Unless applicant completes the application or files a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), within the period set in the “Notice of Incomplete Application,” the application will be processed as an incomplete application under 37 CFR 1.53(e).
III. APPLICATION FORWARDED FOR EXAMINATION
If it is discovered that an application that was forwarded to a Technology Center (TC) for examination was filed without all of the page(s) of the specification, and a Notice of Omitted Items has not been mailed by OPAP, the examiner should review the application to determine whether the application is entitled to a filing date. An application filed under 35 U.S.C. 111(a) prior to December 18, 2013 or a design application is entitled to a filing date if the application contains something that can be construed as a written description, at least one drawing figure (if necessary under 35 U.S.C. 113, first sentence), and at least one claim. If the application is not a design application and was filed
under 35 U.S.C. 111(a) on or after December 18, 2013, the application is entitled to a filing date if it is filed with a specification, with or without claims. However, claims must be filed before the application is sent to the TC.
A. Application Entitled to a Filing Date
If an application filed without all of the pages of the specification is entitled to a filing date, the examiner should notify applicant of the omission in the next Office action and require applicant to do one of the following:
(A) accept the application, as filed, without all of the page(s) of the specification;
(B) file any omitted page(s) and a petition under 37 CFR 1.182 with the petition fee set forth in 37 CFR 1.17(f), requesting the date of submission of the omitted page(s) as the application filing date. For applications filed before September 16, 2012, the omitted pages must be accompanied by an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 37 CFR 1.64 referring to the omitted page(s); or
(C) file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f) alleging that the page(s) indicated as omitted was in fact deposited with the USPTO with the application papers, including any and all evidence supporting the allegation. See MPEP § 503. The petition fee will be refunded if it is determined that the page(s) was in fact received by the USPTO with the application papers deposited on filing.
If applicant is willing to accept the application, as filed, without all of the page(s) of the application (item A above), an amendment of the specification is required to renumber the pages of the application consecutively and to cancel any incomplete sentences caused by the absence of the omitted page(s). The amendment should be submitted in response to the Office action.
If an application was filed on or after September 21, 2004, and contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, international, or international design application that was present on
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the filing date of the application, and the omitted portion of the specification was inadvertently omitted from the application and is completely contained in the prior-filed application, applicant may submit an amendment to include the inadvertently omitted portion of the specification pursuant to 37 CFR 1.57(b). The amendment should be submitted in response to the Office action and must comply with 37 CFR 1.57(b) and 37 CFR 1.121. See MPEP § 217.
Any petition filed in accordance with item B or C above will be forwarded to the Office of Petitions.
B. Application NOT Entitled to a Filing Date
If upon review of the application, the examiner determines that the application is NOT entitled to a filing date, the examiner should forward the application to OPAP for mailing of a “Notice of Incomplete Application.”
601.01(e) Nonprovisional Application Filed Without at Least One Claim [R-07.2015]
[Editor’s Note: This section is only applicable to nonprovisional applications filed prior to December 18, 2013 or to design applications. Nonprovisional applications, which are not design applications, filed under 35 U.S.C. 111(a) on or after December 18, 2013 are entitled to a filing date even if the specification does not contain claims. If such an application is filed without claims, it may be completed subsequent to its filing date. See MPEP § 601.01(a), subsection II.]
For nonprovisional applications filed prior to December 18, 2013 or design applications, the applicable version of 35 U.S.C. 111(a)(2) requires that an application for patent include, inter alia, “a specification as prescribed by section 112,” and the applicable version of 35 U.S.C. 111(a)(4) provides that the “filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.” 35 U.S.C. 112(a) provides, in part, that “[t]he specification shall contain a written description of the invention,” and 35 U.S.C. 112(b), provides that “[t]he specification shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his invention.” Also, the Court of Appeals for the Federal Circuit stated in Litton Systems, Inc. v. Whirlpool Corp.:
Both statute, 35 U.S.C. 111[(a)], and federal regulations, 37 CFR 1.51[(b)], make clear the requirement that an application for a patent must include. . . a specification and claims. . . . The omission of any one of these component parts makes a patent application incomplete and thus not entitled to a filing date.
728 F.2d 1423, 1437, 221 USPQ 97, 105 (Fed. Cir. 1984)(citing Gearon v. United States, 121 F. Supp 652, 654, 101 USPQ 460, 461 (Ct. Cl. 1954), cert. denied, 348 U.S. 942, 104 USPQ 409 (1955))(emphasis in the original).
Therefore, in an application filed under 35 U.S.C. 111(a) prior to December 18, 2013 and in a design application, a claim is a statutory requirement for according a filing date to the application. 35 U.S.C. 171 makes 35 U.S.C. 112 applicable to design applications. 35 U.S.C. 162 specifically requires the specification in a plant patent application to contain a claim, but a claim is not required for receiving a filing date for plant patent applications filed on or after December 18, 2013. In addition, 35 U.S.C. 111(b)(2) provides that “[a] claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.” Thus, only design applications and nonprovisional applications filed prior to December 18, 2013 that are filed without at least one claim are incomplete and not entitled to a filing date.
If a nonprovisional application filed prior to December 18, 2013 or a design application does not contain at least one claim, a “Notice of Incomplete Application” will be mailed to the applicant(s) indicating that no filing date has been granted and setting a period for submitting a claim. The filing date will be the date of receipt of at least one claim. See In re Mattson, 208 USPQ 168 (Comm’r Pat. 1980). In applications filed before September 16, 2012, an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 37 CFR 1.64
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referring to the claim being submitted is also required.
If a nonprovisional application filed prior to December 18, 2013 or a design application is accompanied by a preliminary amendment which cancels all claims without presenting any new or substitute claims, the Office will disapprove such an amendment. See 37 CFR 1.115(b)(1) and Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001). Thus, the application will not be denied a filing date merely because such a preliminary amendment was submitted on filing. For fee calculation purposes, the Office will treat such an application as containing only a single claim.
As 37 CFR 1.53(c)(2) permits the conversion of an application filed under 35 U.S.C. 111(a) to an application under 35 U.S.C. 111(b), an applicant in an application, other than for a design patent, filed under 35 U.S.C. 111(a) on or after June 8, 1995, without at least one claim has the alternative of filing a petition under 37 CFR 1.53(c)(2) to convert such application into an application under 35 U.S.C. 111(b), which does not require a claim to be entitled to its date of deposit as a filing date. Such a petition, however, must be filed prior to the expiration of 12 months after the date of deposit of the application under 35 U.S.C. 111(a), and comply with the other requirements of 37 CFR 1.53(c)(2). See MPEP § 601.01(c). For nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, there is no need to request conversion to a provisional application because such applications do not require presentation of at least one claim to obtain a filing date.
The treatment of an application subsequent to the mailing of a “Notice of Incomplete Application” is discussed in MPEP § 601.01(d).
601.01(f) Applications Filed Without Drawings [R-07.2015]
[Editor’s Note: This section is only applicable to applications filed prior to December 18, 2013 or to design applications. Applications, which are not design applications, filed under 35 U.S.C. 111(a) or (b) on or after December 18, 2013 are entitled to a filing date even if the application does not contain
drawings. If such an application is filed without drawings, it may be completed subsequent to its filing date. See 37 CFR 1.53(e) and MPEP § 601.01(g).]
35 U.S.C. 111(a)(2)(B) and 35 U.S.C. 111(b)(1)(B) each provide, in part, that an “application shall include . . . a drawing as prescribed by section 113.” 35 U.S.C. 113 (first sentence) in turn provides that an “applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented.” For applications filed prior to December 18, 2013, 35 U.S.C. 111(a)(4) and 35 U.S.C. 111(b)(4) each provide, in part, that the “filing date. . . shall be the date on which . . . any required drawing are received in the Patent and Trademark Office.” Therefore, design applications and applications filed under 35 U.S.C. 111(a) or (b) prior to December 18, 2013 must have any required drawing, if it is necessary for the understanding of the invention, in order to receive a filing date. For applications other than design applications filed on or after December 18, 2013, although drawings are not required in order to receive a filing date, drawings should be submitted on filing if necessary for the understanding of the invention because no amendment may introduce new matter into the disclosure of an application after its filing date.
Applications filed without drawings are initially inspected to determine whether a drawing is referred to in the specification, and if not, whether a drawing is necessary for the understanding of the invention. 35 U.S.C. 113 (first sentence).
It has been USPTO practice to treat an application that contains at least one process or method claim as an application for which a drawing is not necessary for an understanding of the invention under 35 U.S.C. 113 (first sentence). The same practice has been followed in composition applications. Other situations in which drawings are usually not considered necessary for the understanding of the invention under 35 U.S.C. 113 (first sentence) are:
(A) Coated articles or products: where the invention resides solely in coating or impregnating a conventional sheet ( e.g., paper or cloth, or an article of known and conventional character with a particular composition), unless significant details of
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structure or arrangement are involved in the article claims;
(B) Articles made from a particular material or composition: where the invention consists in making an article of a particular material or composition, unless significant details of structure or arrangement are involved in the article claims;
(C) Laminated structures: where the claimed invention involves only laminations of sheets (and coatings) of specified material unless significant details of structure or arrangement (other than the mere order of the layers) are involved in the article claims; or
(D) Articles, apparatus, or systems where sole distinguishing feature is presence of a particular material: where the invention resides solely in the use of a particular material in an otherwise old article, apparatus or system recited broadly in the claims, for example:
(1) A hydraulic system distinguished solely by the use therein of a particular hydraulic fluid;
(2) Packaged sutures wherein the structure and arrangement of the package are conventional and the only distinguishing feature is the use of a particular material.
A nonprovisional application having at least one claim, or a provisional application having at least some disclosure, directed to the subject matter discussed above for which a drawing is usually not considered essential for a filing date, not describing drawing figures in the specification, and filed without drawings will simply be processed, so long as the application contains something that can be construed as a written description. A nonprovisional application having at least one claim, or a provisional application having at least some disclosure, directed to the subject matter discussed above for which a drawing is usually not considered essential for a filing date, describing drawing figure(s) in the specification, but filed without drawings will be treated as an application filed without all of the drawing figures referred to in the specification as discussed in MPEP § 601.01(g), so long as the application contains something that can be construed as a written description. In a situation in which the appropriate Technology Center (TC) determines that drawings are necessary under 35 U.S.C. 113 (first sentence) the filing date issue will be reconsidered
by the USPTO in nonprovisional applications filed prior to December 18, 2013 or in design applications. The application will be returned to the Office of Patent Application Processing (OPAP) for mailing of a “Notice of Incomplete Application.”
If a nonprovisional application filed prior to December 18, 2013 or a design application does not have at least one claim directed to the subject matter discussed above for which a drawing is usually not considered essential for a filing date, or a provisional application filed prior to December 18, 2013 does not have at least some disclosure directed to the subject matter discussed above for which a drawing is usually not considered essential for a filing date, and is filed without drawings, OPAP will mail a “Notice of Incomplete Application” indicating that the application lacks drawings and that 35 U.S.C. 113 (first sentence) requires a drawing where necessary for the understanding of the subject matter sought to be patented.
Applicant may file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), asserting that (A) the drawing(s) at issue was submitted, or (B) the drawing(s) is not necessary under 35 U.S.C. 113 (first sentence) for a filing date. The petition must be accompanied by sufficient evidence to establish applicant’s entitlement to the requested filing date (e.g., a date-stamped postcard receipt (MPEP § 503) to establish prior receipt in the USPTO of the drawing(s) at issue). Alternatively, applicant in a nonprovisional application may submit drawing(s) and accept the date of such submission as the application filing date. For applications filed before September 16, 2012, such drawings must be accompanied by an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 37 CFR 1.64 referring to the drawing(s) being submitted.
If the drawing(s) was inadvertently omitted from a nonprovisional application filed on or after September 21, 2004, and the application contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, international application, or international design application that was present on the filing date of the application, and the inadvertently omitted drawing(s) is completely
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contained in the prior-filed application, the applicant may submit the omitted drawing(s) by way of an amendment in compliance with 37 CFR 1.57(b). The amendment must be by way of a petition under 37 CFR 1.53(e) accompanied by the petition fee set forth in 37 CFR 1.17(f). See MPEP § 217.
In design applications, OPAP will mail a “Notice of Incomplete Application” indicating that the application lacks the drawings required under 35 U.S.C. 113 (first sentence). The applicant may: (A) promptly file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), asserting that the missing drawing(s) was submitted; or (B) promptly submit drawing(s) and accept the date of such submission as the application filing date. For applications filed before September 16, 2012, such drawing(s) must be accompanied by an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 37 CFR 1.64. Applicant may also be able to file an amendment by way of a petition under 37 CFR 1.53(e) as provided for in 37 CFR 1.57(b)(3) as discussed above. 37 CFR 1.153(a) provides that the claim in a design application “shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described.” As such, petitions under 37 CFR 1.53(e) asserting that drawings are unnecessary under 35 U.S.C. 113 (first sentence) for a filing date in a design application will not be found persuasive.
The treatment of an application subsequent to the mailing of a “Notice of Incomplete Application” is discussed in MPEP § 601.01(d).
601.01(g) Applications Filed Without All Figures of Drawings [R-07.2015]
I. REVIEW BY THE OFFICE OF PATENT APPLICATION PROCESSING
The Office of Patent Application Processing (OPAP) reviews application papers to determine whether all of the figures of the drawings that are mentioned in the specification are present in the application. If an application filed under 35 U.S.C. 111 prior to December 18, 2013, or a design application, is filed without all of the drawing figure(s) referred to in the specification, and the application contains something that can be construed as a written description, at least
one drawing, if necessary under 35 U.S.C. 113 (first sentence), and, in a nonprovisional application, at least one claim, an OPAP notice (e.g., a “Notice of Omitted Item(s)”) will be sent indicating that the application papers so deposited have been accorded a filing date, but are lacking some of the figures of drawings described in the specification. For an application, which is not a design application, filed under 37 CFR 1.53(b) or (c) on or after December 18, 2013, if the application is filed without all of the drawings, but contains something that can be construed as a specification, with or without claims, an OPAP notice (e.g., a “Notice of Omitted Items”) will be sent indicating that the application papers so deposited have been accorded a filing date, but are lacking some drawings.
The procedure for handling nonprovisional applications having omitted items was revised in 2007. See “Change in Procedure for Handling NonprovisionalApplications Having Omitted Items,” 1315 OG 103 (February 20, 2007).
Under the revised procedure, the mailing of an OPAP notice regarding a missing drawing figure(s) in a nonprovisional application will permit the applicant to:
(A) promptly establish prior receipt in the USPTO of the drawing(s) at issue. An applicant asserting that the drawing(s) was in fact received by the USPTO with the application papers must, within two months from the date of the OPAP notice, file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR1.17(f), along with evidence of such deposit. The petition fee will be refunded if it is determined that the drawing(s) was in fact received by the USPTO with the application papers deposited on filing. The two-month period is extendable under 37 CFR 1.136;
(B) promptly submit the omitted drawing(s) in a nonprovisional application and accept the date of such submission as the application filing date. An applicant desiring to submit the omitted drawing(s) in a nonprovisional application and accept the date of such submission as the application filing date must, within two months from the date of the OPAP notice, file any omitted drawing(s) and a petition under 37 CFR 1.182 with the petition fee set forth in 37 CFR 1.17(f), requesting the later filing date.
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For applications filed before September 16, 2012, the omitted drawings must be filed with an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 37 CFR 1.64 referring to such drawing(s). The two-month period is extendable under 37 CFR 1.136; or
(C) accept the application as deposited in the USPTO by filing an appropriate amendment. Applicant may accept the application as deposited in the USPTO by either:
(1) filing an amendment including replacement drawing sheets in compliance with 37 CFR 1.121(d) to renumber the drawing figures consecutively (if necessary), and a substitute specification (excluding claims) that amends the specification to cancel any references to any omitted drawing(s) and corrects the references in the specification to the drawing figures to correspond with any relabeled drawing figures, in compliance with 37 CFR 1.121(b)(3) and 1.125, without adding the subject matter that was in the omitted drawing(s) and without adding any new matter (see 35 U.S.C. 132(a)). The application will maintain the filing date as of the date of deposit of the original application papers in the USPTO. The original application papers (i.e., the original disclosure of the invention) will include only those application papers present in the USPTO on the original date of deposit. Amendment of the specification is required in a nonprovisional application to cancel all references to the omitted drawing, both in the brief and detailed descriptions of the drawings and including any reference numerals shown only in the omitted drawings. In addition, an amendment with replacement sheets of drawings in compliance with 37 CFR 1.121(d) is required in a nonprovisional application to renumber the drawing figures consecutively, if necessary, and amendment of the specification is required to correct the references to the drawing figures to correspond with any relabeled drawing figures, both in the brief and detailed descriptions of the drawings, or
(2) filing an amendment to add the missing figure(s) by relying on an incorporation by reference under 37 CFR 1.57(b) or other portions of the original disclosure, without adding any new matter (see 35 U.S.C. 132(a)). Applicant is required to submit new and replacement drawing sheets in compliance with 37 CFR 1.121(d) to add the missing figure(s). If an application was filed on or after
September 21, 2004, and contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, international application, or international design application, that was present on the filing date of the application, and the omitted portion of the drawings was inadvertently omitted from the application and is completely contained in the prior-filed application, applicant may submit an amendment to include the inadvertently omitted portion of the drawings pursuant to 37 CFR 1.57(b). The amendment should be identified as an amendment pursuant to 37 CFR 1.57(b) and must comply with the requirements of 37 CFR 1.57(b) and 37 CFR 1.121. See MPEP § 217. The application will maintain the filing date as of the date of deposit of the original application papers in the USPTO. The original application papers (i.e., the original disclosure of the invention) will include only those application papers present in the USPTO on the original date of deposit.
The submission of omitted drawing(s) in a nonprovisional application and acceptance of the date of such submission as the application filing date is tantamount to simply filing a new application. Thus, applicants should consider filing a new application as an alternative to submitting a petition under 37 CFR 1.182 (with the petition fee under 37 CFR 1.17(f)) with any omitted drawing(s), which is a cost effective alternative in instances in which a nonprovisional application is deposited without filing fees. Likewise, in view of the relatively low filing fee for provisional applications, and the USPTO’s desire to minimize the processing of provisional applications, the USPTO will not grant petitions under 37 CFR 1.182 to accept omitted drawing(s) and accord an application filing date as of the date of such submission in provisional applications. The applicant should simply file a new completed provisional application. The mailing of an OPAP notice regarding missing drawing figure(s) in a provisional application will permit the applicant to either: (1) promptly establish prior receipt of the drawing(s) at issue by filing a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), along with evidence of such deposit; or (2) accept the application as deposited by failing to file a petition within a two-month non-extendable time period.
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Applications in which an OPAP notice regarding omitted items has been mailed will be retained in OPAP to await a reply to the notice. Failure to timely reply to the OPAP notice in a nonprovisional application will result in abandonment of the application. Nonprovisional applications that are timely completed will then be forwarded to the appropriate Technology Center for examination of the application. For provisional applications in which applicant accepts the application as deposited by failing to timely file a petition in response to an OPAP notice regarding omitted items, if the provisional application is complete under 37 CFR 1.51(c), it will be held in Office’s Image File Wrapper (IFW) system and automatically abandoned at the end of its pendency period. See MPEP § 601.01(a) for treatment of nonprovisional applications that are not complete under 37 CFR 1.51(b) and MPEP § 601.01(b) for treatment of provisional applications that are not complete under 37 CFR 1.51(c).
The treatment of an application subsequent to the mailing of a “Notice of Omitted Item(s)” is discussed in MPEP § 601.01(d).
Applications are often filed with drawings with several views of the invention where the views are labeled using a number-letter combination, e.g., Fig. 1A, Fig. 1B, and Fig. 1C. If a figure which is referred to in the specification by a particular number cannot be located among the drawings, and the drawings include at least one figure labeled with that particular number in combination with a letter, correction will be required. For example, if the drawings show Figures 1A, 1B, and 1C and the brief description of the drawings refers only to Figure 1, this is an error in the specification which must be corrected.
II. REVIEW BY EXAMINER
If it is discovered that an application that was forwarded for examination was filed without all of the drawing figure(s) referred to in the specification, and a Notice of Omitted Items or other OPAP notice regarding omitted items has not been mailed by OPAP, the examiner should review the application to determine whether the application is entitled to a filing date if the application was filed under 35 U.S.C. 111(a) prior to December 18, 2013
or is a design application. An application filed under 35 U.S.C. 111(a) prior to December 18, 2013 or a design application is entitled to a filing date if the application contains something that can be construed as a written description, at least one drawing figure (if necessary under 35 U.S.C. 113, first sentence), and at least one claim. If the application is not a design application and was filed under 35 U.S.C. 111(a) on or after December 18, 2013, the application is entitled to a filing date if it is filed with a specification, with or without drawings.
A. Application Entitled to a Filing Date
If the application is entitled to a filing date, the examiner should notify applicant of the omission in the next Office action and require applicant to do one of the following:
(A) accept the application, as filed, without all of the drawing figure(s) referred to in the specification;
(B) file any omitted drawing figure(s) and a petition under 37 CFR 1.182 with the petition fee set forth in 37 CFR 1.17(f), requesting the date of submission of the omitted drawing figure(s) as the application filing date. For applications filed before September 16, 2012, the omitted drawing(s) must be filed with an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 37 CFR 1.64 referring to the omitted drawing figure(s); or
(C) file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f) alleging that the drawing figure(s) indicated as omitted was in fact deposited with the USPTO with the application papers, including any and all evidence supporting the allegation. See MPEP § 503. The petition fee will be refunded if it is determined that the drawing figure(s) was in fact received by the USPTO with the application papers deposited on filing.
If applicant is willing to accept the application, as filed, without all of the drawing figure(s) referred to in the application (item A above), applicant is required to submit (1) an amendment to the specification canceling all references to the omitted drawing figure(s) including any reference numerals shown only in the omitted drawing figure(s), (2) an amendment with replacement sheets of drawings in compliance with 37 CFR 1.121(d) renumbering the
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drawing figure(s) submitted on filing consecutively, and (3) a further amendment to the specification correcting references to drawing figure(s) to correspond with the relabeled drawing figure(s), both in the brief and detailed descriptions of the drawings. The amendment should be submitted in response to the Office action.
If an application contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, international application, or international design application, that was present on the filing date of the application, and the omitted portion of the drawing(s) was inadvertently omitted from the application and is completely contained in the prior-filed application, applicant may submit an amendment to include the inadvertently omitted portion of the drawing(s) pursuant to 37 CFR 1.57(b). The amendment should be submitted in response to the Office action and must comply with 37 CFR 1.57(b) and 37 CFR 1.121. See MPEP § 217.
Any petition filed in accordance with item (B) or (C) above will be forwarded to the Office of Petitions.
B. Application NOT Entitled to a Filing Date
If upon review of the application, the examiner determines that the application filed under 35 U.S.C. 111(a) prior to December 18, 2013 or a design application is NOT entitled to a filing date because the application does not contain any drawing figure, and at least one drawing figure is necessary under 35 U.S.C 113, first sentence, the examiner should forward the application to OPAP for mailing of a “Notice of Incomplete Application.”
601.02 Power of Attorney [R-07.2015]
The attorney’s or agent’s full mailing address (including ZIP Code) must be given in every power of attorney. The telephone and fax numbers of the attorney or agent should also be included in the power of attorney. The prompt delivery of communications will thereby be facilitated.
See MPEP § 402.02(a) for detailed information and relevant forms pertaining to appointment of a power of attorney in applications filed on or after September 16, 2012. See MPEP § 402.02(b) for detailed information and relevant forms pertaining to appointment of a power of attorney in applications filed before September 16, 2012.
601.03 Correspondence Address [R-11.2013]
An application must specify a correspondence address to which the Office will send notices, letters, and other communications relating to an application. The Office should be promptly notified of any change in correspondence address. The required notification of change of correspondence address need take no particular form. However, it should be provided in a manner calling attention to the fact that a change of address is being made. Thus, the mere inclusion, in a paper being filed for another purpose, of an address which is different from the previously provided correspondence address, without mention of the fact that an address change is being made would not ordinarily be recognized or deemed as instructions to change the correspondence address on the file record.
See MPEP § 601.03(a) for information specific to correspondence address changes in an application filed on or after September 16, 2012. See MPEP § 601.03(b) for information specific to correspondence address changes in an application filed before September 16, 2012.
See MPEP § 711.03(c) for treatment of petitions to revive applications abandoned as a consequence of failure to timely receive an Office action at the correspondence address of record (e.g., because the Office action was mailed to the incorrect correspondence address).
Note that the obligation (see 37 CFR 11.11) of a registered attorney or agent to notify the Director of the Office of Enrollment and Discipline of any change of his or her address is separate from the obligation to file a notice of change of address in individual applications. Unless the correspondence address is designated as the address associated with a Customer Number, a separate notification must be filed in each application for which a person is
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intended to receive communications from the Office. See MPEP § 403 for Customer Number Practice. In those instances where a change in the correspondence address of a registered attorney or agent is necessary in a plurality of applications, the notification filed in each application may be a reproduction of a properly executed, original notification. The original notice may either be sent to the Office of Enrollment and Discipline as notification of the change of address (37 CFR 11.11), or may be retained by applicant.
601.03(a) Change of Correspondence Address in Applications Filed On or After September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 601.03(b) for change of correspondence address in applications filed before September 16, 2012.]
37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
(a) Correspondence address and daytime telephone number . When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 37 CFR 1.63(b)(2)) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office's electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed by the parties set forth in paragraph (b)(1) or (b)(3) of this section. Prior to the appointment of any power of attorney under § 1.32(b), the correspondence address may also be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of § 1.34.
(b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by:
(1) A patent practitioner of record;
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34; or
(3) The applicant (§ 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
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(e) A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.
(f) Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
(g) A patent practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner.
37 CFR 1.33(a) provides that the application must specify a correspondence address to which the Office will send notice, letters, and other communications relating to an application. The correspondence address must either be in an application data sheet (37 CFR 1.76) or in a clearly identifiable manner elsewhere in any papers submitted with the application filing.
Applicants should provide clear instructions regarding the correspondence address. If more than one correspondence address is specified, whether in a single paper or in multiple papers, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address. If an applicant provides multiple correspondence addresses in a single paper (e.g., providing both a typed correspondence address and a Customer Number in a single paper) or multiple papers (e.g., an oath or declaration, a transmittal letter, and a preliminary amendment that each includes a different correspondence address), and the Office does not select the correspondence address actually desired by applicant, the Office will not re-mail papers to
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the desired address. Note however that the hierarchy provided in 37 CFR 1.76(d) for inconsistencies between an application data sheet and other documents governs. Accordingly, if the ADS includes a typed correspondence address, and the declaration submitted at the same time gives a different address (e.g., the address associated with a Customer Number) as the correspondence address, the Office will use the typed correspondence address as included on the ADS. After the correspondence address has been entered according to the above procedure, it will only be changed pursuant to 37 CFR 1.33(a).
For applications submitted via the Office’s electronic filing system, although an electronic acknowledgment receipt will be sent to the submitter, a correspondence address must still set be forth in either an application data sheet (37 CFR 1.76) or in a clearly identifiable manner elsewhere in any papers submitted with the application filing.
The submission of a daytime telephone number of the party to whom correspondence is to be addressed is requested pursuant to 37 CFR 1.33(a). While business is to be conducted on the written record (37 CFR 1.2), a daytime telephone number is useful in initiating contact that could later be reduced to writing. Any party who may change the correspondence address may also change the telephone number.
37 CFR 1.33(a) specifies that the correspondence address may be changed by the parties set forth in 37 CFR 1.33(b)(1) (a patent practitioner of record) or 37 CFR 1.33(b)(3) (the applicant under 37 CFR 1.42). 37 CFR 1.33(a) also provides that prior to the appointment of any power of attorney under 37 CFR 1.32(b), the correspondence address may be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of 37 CFR 1.34.
Prior to the appointment of any power of attorney, if a patent practitioner (i.e., registered attorney or agent) filed the application, any other patent practitioners named in the transmittal papers may also change the correspondence address. A patent practitioner named in a letterhead would not be considered as being named in the transmittal papers
for purposes of changing the correspondence address. A clear identification of the individual as a representative is required. If an application is filed by a company to whom the invention has been assigned or to whom there is an obligation to assign the invention, a person (other than a patent practitioner) who has the authority to act on behalf of the company may not change the correspondence address, as all papers signed on behalf of a juristic entity must be signed by a patent practitioner.
The correspondence address will not be changed by filing a paper (such as an application data sheet) which includes a correspondence address which is different from the correspondence address of record if the paper does not clearly identify that an address change is being made.
37 CFR 1.33(e) provides that a change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See 37 CFR 11.11.
37 CFR 1.33(f) provides that where application papers (e.g., the inventor’s oath or declaration) from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. If not submitted, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application and correspondence may be mailed to a previously designated correspondence address.
37 CFR 1.33(g) provides that a practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner. 37 CFR 1.33(g) provides a means for practitioners acting in a representative capacity in an application to effect a change in correspondence address after the patent has granted but does not provide authority to a practitioner acting
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under 37 CFR 1.34 to change the correspondence address in an application. See 37 CFR 1.33(a).
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601.03(b) Change of Correspondence Address in Applications Filed Before September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 601.03(a) for change of correspondence address in applications filed on or after September 16, 2012.]
37 CFR 1.33 (pre-AIA) Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
(a) Correspondence address and daytime telephone number . When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(c)(2)) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office’s electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed as follows:
(1) Prior to filing of § 1.63 oath or declaration by any of the inventors . If a § 1.63 oath or declaration has not been filed by any of the inventors, the correspondence address may be changed by the party who filed the application. If the application was filed by a patent practitioner, any other patent practitioner named in the transmittal papers may also change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address in that application under this paragraph.
(2) Where a § 1.63 oath or declaration has been filed by any of the inventors. If a § 1.63 oath or declaration has been filed, or is filed concurrent with the filing of an application, by any of the inventors, the correspondence address may be changed by the parties set forth in paragraph (b) of this section, except for paragraph (b)(2).
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Pre-AIA 37 CFR 1.33(a) provides that the application must specify a correspondence address
to which the Office will send notice, letters, and other communications relating to an application. The correspondence address must either be in an application data sheet (pre-AIA 37 CFR 1.76) or in a clearly identifiable manner elsewhere in any papers submitted with the application filing. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. Additionally, applicants will often specify the correspondence address in more than one paper that is filed with an application, and the address given in the different places sometimes conflicts. Where the applicant specifically directs the Office to use non-matching correspondence addresses in more than one paper, priority will be accorded to the correspondence address specified in the following order: (A) application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (D) power of attorney. Accordingly, if the ADS includes a typed correspondence address, and the declaration gives a different address (i.e., the address associated with a Customer Number) as the correspondence address, the Office will use the typed correspondence address as included on the ADS. In the experience of the Office, the ADS is the most recently created document and tends to have the most current address. After the correspondence address has been entered according to the above procedure, it will only be changed pursuant to pre-AIA 37 CFR 1.33(a)(1).
The submission of a daytime telephone number of the party to whom correspondence is to be addressed is requested pursuant to pre-AIA 37 CFR 1.33(a). While business is to be conducted on the written record (37 CFR 1.2), a daytime telephone number is useful in initiating contact that could later be reduced to writing. Any party who may change the correspondence address may also change the telephone number.
Pre-AIA 37 CFR 1.33(a)(1) provides that the party filing the application and setting forth a correspondence address may later change the correspondence address provided that an executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors has not been filed. If a patent
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practitioner (i.e., registered attorney or agent) filed the application, any other patent practitioners named in the transmittal papers may also change the correspondence address. A patent practitioner named in a letterhead would not be considered as being named in the transmittal papers for purposes of changing the correspondence address. A clear identification of the individual as a representative is required. If an application is filed by a company to whom the invention has been assigned or to whom there is an obligation to assign the invention, a person who has the authority to act on behalf of the company may change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address pursuant to pre-AIA 37 CFR 1.33(a)(1). The filing of an executed oath or declaration that does not include a correspondence address does not affect any correspondence address previously established on filing of the application, or changed pursuant to pre-AIA 37 CFR 1.33(a)(1).
Where a correspondence address has been established on filing of the application or changed pursuant to pre-AIA 37 CFR 1.33(a)(1) (prior to the filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors), that correspondence address remains in effect upon filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 and can only be subsequently changed
pursuant to pre-AIA 37 CFR 1.33(a)(2). Under pre-AIA 37 CFR 1.33(a)(2), where an executed oath or declaration under pre-AIA 37 CFR 1.63 has been filed by any of the inventors, the correspondence address may be changed by (A) a patent practitioner of record, (B) an assignee as provided for under pre-AIA 37 CFR 3.71(b), or (C) all of the applicants (pre-AIA 37 CFR 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with pre-AIA 37 CFR 3.71. See pre-AIA 37 CFR 1.33(a)(2).
Special care should be taken in continuation or divisional applications to ensure that any change of correspondence address in a prior application is reflected in the continuation or divisional application. For example, where a copy of the oath or declaration from the prior application is submitted for a continuation or divisional application filed under pre-AIA 37 CFR 1.53(b) and the copy of the oath or declaration from the prior application designates an old correspondence address, the Office may not recognize, in the continuation or divisional application, the change of correspondence address made during the prosecution of the prior application. Applicant is required to identify the change of correspondence address in the continuation or divisional application to ensure that communications from the Office are mailed to the current correspondence address. See pre-AIA 37 CFR 1.63(d)(4).
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601.04 National Stage Requirements of the United States as a Designated Office [R-08.2012]
See MPEP Chapter 1800, especially MPEP § 1893.01 for requirements for entry into the national stage before the Designated Office or Elected Office under the Patent Cooperation Treaty (PCT).
601.05 Bibliographic Information - Application Data Sheet (ADS) [R-07.2015]
An application data sheet (ADS) is a sheet or set of sheets containing bibliographic data, which is arranged in a format specified by the Office. An ADS must comply with the requirements of 37 CFR 1.76, and may be submitted in a provisional application under 35 U.S.C. 111(b), a nonprovisional application under 35 U.S.C. 111(a), a nonprovisional international design application, or a national stage application under 35 U.S.C. 371. See MPEP § 601.05(a) for requirements for an ADS that are specific to applications filed on or after September 16, 2012. See MPEP § 601.05(b) for requirements for an ADS that are specific to applications filed prior to September 16, 2012.
When an application data sheet is provided in a patent application, the application data sheet becomes part of the application and must comply with 37 CFR 1.52. While the use of an application data sheet is not always required (see MPEP §§ 601.05(a) and 601.05(b)), the Office prefers its use in all applications to help facilitate the electronic capturing of important data. When an ADS is optional, the data that is suggested to be supplied by way of an application data sheet can also be provided elsewhere in the application papers, but it is to applicant’s advantage to submit the data via an application data sheet. To help ensure that the Office efficiently captures the data, the Office specifies a particular format to be used. The Office also provides a fillable form (PTO/AIA/14 for applications filed on or after September 16, 2012 and PTO/SB/14 for applications filed prior to September 16, 2012) on the Office’s website, which contains the bibliographic data arranged in the specified format. The Office’s fillable form is designed to be completed electronically and then filed via EFS-Web
or in paper. However, the data will only load directly into the Office’s electronic systems when the PTO/AIA/14 or PTO/SB/14 is submitted as an EFS-Web Fillable Form, rather than a scanned portable document format (PDF) image submitted electronically via EFS-Web or in paper.
601.05(a) Application Data Sheet (ADS) -- Application Filed On or After September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 601.05(b) for a discussion of the requirements of an ADS for applications filed before September 16, 2012. 37 CFR 1.76(b)(3), directed to reference filing under 37 CFR 1.57(a), is applicable only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013. For 37 CFR 1.76(b)(3) applicable to applications filed on or after September 16, 2012 and before December 18, 2013, see 37 CFR 1.76 (2012-09-16 thru 2013-12-17); for applications filed prior to September 16, 2012, see pre-AIA 37 CFR 1.76 as reproduced in MPEP § 601.05(b).]
37 CFR 1.76 Application data sheet.
(a) Application data sheet: An application data sheet is a sheet or sheets, that may be submitted in a provisional application under 35 U.S.C. 111(b), a nonprovisional application under 35 U.S.C. 111(a), a nonprovisional international design application, or a national stage application under 35 U.S.C. 371, and must be submitted when required by § 1.55 or 1.78 to claim priority to or the benefit of a prior-filed application under 35 U.S.C. 119, 120, 121, 365, or 386. An application data sheet must be titled "Application Data Sheet." An application data sheet must contain all of the section headings listed in paragraph (b) of this section, except as provided in paragraph (c)(2) of this section, with any appropriate data for each section heading. If an application data sheet is provided, the application data sheet is part of the application for which it has been submitted.
(b) Bibliographic data. Bibliographic data as used in paragraph (a) of this section includes:
(1) Inventor information. This information includes the legal name, residence, and mailing address of the inventor or each joint inventor.
(2) Correspondence information . This information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see § 1.33(a)).
(3) Application information . This information includes the title of the invention, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, the type of application (e.g., utility, plant, design, reissue,
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provisional), whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to § 5.2 of this chapter (see § 5.2(c)), and, for plant applications, the Latin name of the genus and species of the plant claimed, as well as the variety denomination. When information concerning the previously filed application is required under § 1.57(a), application information also includes the reference to the previously filed application, indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed.
(4) Representative information . This information includes the registration number of each practitioner having a power of attorney in the application (preferably by reference to a customer number). Providing this information in the application data sheet does not constitute a power of attorney in the application (see § 1.32).
(5) Domestic benefit information . This information includes the application number, the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and § 1.78.
(6) Foreign priority information . This information includes the application number, country (or intellectual property authority), and filing date of each foreign application for which priority is claimed. Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55.
(7) Applicant information : This information includes the name (either natural person or juristic entity) and address of the legal representative, assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter who is the applicant under § 1.43 or § 1.46. Providing assignment information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
(c) Correcting and updating an application data sheet.
(1) Information in a previously submitted application data sheet, inventor's oath or declaration under § 1.63, § 1.64 or § 1.67, or otherwise of record, may be corrected or updated until payment of the issue fee by a new application data sheet providing corrected or updated information, except that inventorship changes must comply with the requirements of § 1.48, foreign priority and domestic benefit information changes must comply with §§ 1.55 and 1.78, and correspondence address changes are governed by § 1.33(a).
(2) An application data sheet providing corrected or updated information may include all of the sections listed in paragraph (b) of this section or only those sections containing changed or updated information. The application data sheet must include the section headings listed in paragraph (b) of this section for each section included in the application data sheet,
and must identify the information that is being changed, with underlining for insertions, and strike-through or brackets for text removed, except that identification of information being changed is not required for an application data sheet included with an initial submission under 35 U.S.C. 371.
(d) Inconsistencies between application data sheet and other documents. For inconsistencies between information that is supplied by both an application data sheet under this section and other documents:
(1) The most recent submission will govern with respect to inconsistencies as between the information provided in an application data sheet, a designation of a correspondence address, or by the inventor's oath or declaration, except that:
(i) The most recent application data sheet will govern with respect to foreign priority (§ 1.55) or domestic benefit (§ 1.78) claims; and
(ii) The naming of the inventorship is governed by § 1.41 and changes to inventorship or the names of the inventors is governed by § 1.48.
(2) The information in the application data sheet will govern when inconsistent with the information supplied at the same time by a designation of correspondence address or the inventor's oath or declaration. The information in the application data sheet will govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form.
(3) The Office will capture bibliographic information from the application data sheet. The Office will generally not review the inventor's oath or declaration to determine if the bibliographic information contained therein is consistent with the bibliographic information provided in an application data sheet. Incorrect bibliographic information contained in an application data sheet may be corrected as provided in paragraph (c)(1) of this section.
(e) Signature requirement . An application data sheet must be signed in compliance with § 1.33(b). An unsigned application data sheet will be treated only as a transmittal letter.
(f) Patent Law Treaty Model International Forms . The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied by the presentation of such priority or benefit claim in the Patent Law Treaty Model International Request Form, and the requirement in § 1.57(a) for a reference to the previously filed application in an application data sheet will be satisfied by the presentation of such reference to the previously filed application in the Patent Law Treaty Model International Request Form. The requirement in § 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied by the presentation of the name of the applicant in the Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name
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or Address Form, or Patent Law Treaty Model International Request for Recordation of Change inApplicant or Owner Form, as applicable.
(g) Patent Cooperation Treaty Request Form . The requirement in § 1.78 for the presentation of a benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied in a national stage application under 35 U.S.C. 371 by the presentation of such benefit claim in the Patent Cooperation Treaty Request Form contained in the international application or the presence of such benefit claim on the front page of the publication of the international application under PCT Article 21(2). The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet and the requirement in § 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied in an application under 35 U.S.C. 111 by the presentation of such priority or benefit claim and presentation of the name of the applicant in a Patent Cooperation Treaty Request Form. If a Patent Cooperation Treaty Request Form is submitted in an application under 35 U.S.C. 111, the Patent Cooperation Treaty Request Form must be accompanied by a clear indication that treatment of the application as an application under 35 U.S.C. 111 is desired.
37 CFR 1.76(a) provides that an application data sheet may be submitted in a provisional application under 35 U.S.C. 111(b), a nonprovisional application under 35 U.S.C. 111(a), a nonprovisional international design application, or a national stage application under 35 U.S.C. 371. However, 37 CFR 1.76(a) also provides that an application data sheet must be submitted when required by 37 CFR 1.55 and 1.78 to claim priority to, or the benefit of, a prior-filed application under 35 U.S.C. 119, 120, 121, 365, or 386 in accordance with 37 CFR 1.55 and 1.78. An application data sheet must also be submitted in accordance with 37 CFR 1.46 when an application is filed by an assignee, a person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows a sufficient proprietary interest in the matter under 35 U.S.C. 118.
I. BIBLIOGRAPHIC INFORMATION
37 CFR 1.76(a) requires that any ADS contain the seven headings listed in 37 CFR 1.76(b) with any appropriate data for each section heading (except as provided in 37 CFR 1.76(c)(2) for an ADS providing corrected or updated information). The ADS must be titled “Application Data Sheet” and any heading that does not contain any corresponding data will be interpreted by the Office to mean that there is no
corresponding data for that heading anywhere in the application. Bibliographic data under 37 CFR 1.76(b) includes: (1) inventor information; (2) correspondence information; (3) application information; (4) representative information; (5) domestic benefit information; (6) foreign priority information; and (7) applicant information.
Inventor information includes the legal name, residence, and mailing address of each inventor (37 CFR 1.41(b)). Whether or not the inventor is the applicant, the Office will to continue to use the inventor’s name for application and patent identification purposes. Inventor names tend to provide a more distinct identification than assignee name, for example. The “mailing address” is the address where the inventor customarily receives mail.
Correspondence information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see 37 CFR 1.33(a)).
As set forth in 37 CFR 1.76(b)(3), application information includes the title of the invention, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, and the type of application (e.g., utility, plant, design, reissue, provisional). Note that the Office is not bound to print the suggested drawing figure, as the Office may decide to print another figure on the front page of any patent application publication or patent issuing from the application.
Application information includes whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to 37 CFR 5.2(c). 37 CFR 1.76(b)(3) also requests that the plant patent applicant state the Latin name and the variety denomination for the plant claimed. The Latin name of the genus and species and the variety denomination of the claimed plant are usually included in the specification of the plant patent application, and will be included in any plant patent or plant patent application publication if included in an application data sheet or patent application. The Office, pursuant to the
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“International Convention for the Protection of New Varieties of Plants” (generally known by its French acronym as the UPOV convention), has been asked to compile a database of the plants patented and the database must include the Latin name and the variety denomination of each patented plant. Having this information in an ADS will make the process of compiling this database more efficient.
For applications filed on or after December 18, 2013, when information concerning the previously filed application is required under 37 CFR 1.57(a), application information also includes the reference to the previously filed application, indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed. Effective December 18, 2013, 37 CFR 1.57 and 37 CFR 1.76(b)(3) were amended to implement the reference filing provisions of 35 U.S.C. 111(c). 37 CFR 1.57(a) now provides that, subject to the conditions and requirements of 37 CFR 1.57(a), a reference to a previously filed application, made in the English language in an ADS in accordance with 37 CFR 1.76 upon the filing of an application under 35 U.S.C. 111(a) indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a) for purposes of a filing date under 37 CFR 1.53(b). Thus, applicants filing by reference under 35 U.S.C. 111(c) and 37 CFR 1.57 should take care to ensure that the application number, filing date, and intellectual property authority or country of the previously filed application are accurately specified on the ADS as the specification and drawings of the application specified on the ADS is the specification and drawings of the application being filed by reference under 35 U.S.C. 111(c) and 37 CFR 1.57. See MPEP § 601.01(a), subsection III, for more information on reference filing. The reference to a previously filed application in an ADS under 37 CFR 1.57(a) is not sufficient to establish a priority or benefit claim to that previously filed application. Applicants must still provide priority and/or benefit information under the domestic benefit information
heading or foreign priority information heading, as appropriate, in the application data sheet even if utilizing the reference filing provisions of 35 U.S.C. 111(c) and 37 CFR 1.57(a).
Representative information includes the registration number of each practitioner appointed with a power of attorney in the application (preferably by reference to a customer number). 37 CFR 1.76(b)(4) states that providing this information in the application data sheet does not constitute a power of attorney in the application (see 37 CFR 1.32). This is because the Office does not expect the application data sheet to be executed by the party (applicant or assignee) who may appoint a power of attorney in the application.
Domestic benefit information includes the application number (series code and serial number), the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). The application data sheet, if provided, is considered part of the application. 37 CFR 1.76(b)(5) states that providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and 37 CFR 1.78. A specific reference to the earlier application(s) is no longer required to be made in the specification, such as in the first sentence(s) thereof. The continuity data for the patent front page will be taken from the application data sheet. No continuity data will be included in the first sentence(s) of the specification, unless applicant separately provides it there. 37 CFR 1.76(b)(5) does not apply to provisional applications.
Foreign priority information includes the application number, country (or intellectual property authority), and filing date of each foreign application for which priority is claimed. 37 CFR 1.76(b)(6) states that providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55. 37 CFR 1.76(b)(6) does not apply to provisional applications.
37 CFR 1.76(b)(7) provides that applicant information includes the name (either natural person or juristic entity) and address of the applicant under 37 CFR 1.43 or 1.46. Thus, 37 CFR 1.76(b)(7)
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provides for the situation in which the applicant is a person other than the inventor under 37 CFR 1.43 (legal representative) or 37 CFR 1.46 (assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter). This heading should be left blank if the applicant is the inventor or is the remaining joint inventor or inventors (37 CFR 1.45).
37 CFR 1.46(b) provides that if an application is filed by the assignee, a person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter, the application must contain an application data sheet under 37 CFR 1.76 specifying the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter in the applicant information section. 37 CFR 1.46(b) also requires if an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under 37 CFR 1.46(a), the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under HagueAgreement Article 10(3). 37 CFR 1.46(c)(1) provides that any request to correct or update the name of the applicant must include an application data sheet under 37 CFR 1.76 specifying the corrected or updated name of the applicant in the applicant information section in accordance with 37 CFR 1.76(c)(2). 37 CFR 1.46(c)(1) also provides that a change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application. 37 CFR 1.46(c)(2) provides that any request to change the applicant must include an application data sheet under 37 CFR 1.76 specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. The application data sheet must comply with the provisions for correcting and updating an application data sheet set forth in 37 CFR 1.76(c).
37 CFR 1.76(b)(7) explains that providing assignment information in the application data sheet does not substitute for compliance with any requirement of 37 CFR part 3 to have an assignment recorded by the Office. Assignment information must be recorded to have legal effect.
II. CORRECTING AND UPDATING AN ADS OR INFORMATION OTHERWISE OF RECORD
37 CFR 1.76(c) provides the procedure for correcting and updating not only an application data sheet (ADS), but also information otherwise of record (e.g., information provided on the most recent filing receipt). Any ADS filed after the filing date of the application is considered a corrected (or updated) ADS even if an ADS was not previously submitted. Such a corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed, except that identification of information being changed is not required for an ADS included with an initial submission under 35 U.S.C. 371. In general, the identification of the information being changed should be made relative to the most recent filing receipt. A corrected ADS may be submitted until payment of the issue fee to either correct or update information in a previously submitted application data sheet, or in an inventor’s oath or declaration under 37 CFR 1.63, 1.64 , or 1.67, or otherwise of record. See 37 CFR 1.76(c)(1). However, inventorship changes must comply with the requirements of 37 CFR 1.48, foreign priority and domestic benefit information changes must comply with 37 CFR 1.55 and 1.78, and correspondence address changes must comply with 37 CFR 1.33(a). Note also that any request to correct or update the name of the applicant, or change the applicant, must comply with 37 CFR 1.46(c).
A corrected application data sheet may include all of the section headings listed in 37 CFR 1.76(b) with all appropriate data for each heading or only those sections (including the section headings) containing changed or updated information. See 37 CFR 1.76(c)(2).
A corrected ADS should be filed with a request for a corrected filing receipt unless accompanied by a request to take some other action, such as a request
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under 37 CFR 1.48, a request under 37 CFR 1.46(c), or the submission of a power of attorney. A corrected ADS accompanying a request to change the applicant under 37 CFR 1.46(c) must show the changes in applicant information relative to the applicant information on the most recent filing receipt, even if an ADS was not previously filed or an applicant was not previously identified in an ADS because the filing receipt identifies the applicant information of record. Similarly, where the most recent filing receipt does not include a benefit claim, either because a previously submitted ADS failed to comply with 37 CFR 1.78 or the benefit claim was not previously included in an ADS, a corrected ADS submitted to add the benefit claim must identify the addition of the benefit claim with underlining. A petition under 37 CFR 1.78 may be required if the benefit claim is being submitted outside the time period in 37 CFR 1.78. To delete a foreign priority claim included on an original ADS, applicant must provide a corrected ADS identifying the deletion of the foreign priority claim with strike-through or brackets. Additionally, a corrected ADS submitted to correct information provided in an inventor’s oath or declaration, such as residence information for an inventor, must show the original incorrect information with strike-through or brackets, and the new information with underlining, as if the incorrect information was submitted in an ADS filed with the application.
III. TREATMENT OF INCONSISTENT INFORMATION
Resolution of inconsistent information supplied by both an application data sheet and other documents (e.g., the oath or declaration under 37 CFR 1.63, 1.64 , or 1.67) are addressed in 37 CFR 1.76(d).
37 CFR 1.76(d)(1) provides that the most recent submission will govern (control) with respect to inconsistencies as between the information provided in an application data sheet, a designation of a correspondence address, or by the inventor’s oath or declaration, except that: (1) the most recent application data sheet will govern with respect to foreign priority (37 CFR 1.55) or domestic benefit (37 CFR 1.78) claims; and (2) the naming of the inventorship is governed by 37 CFR 1.41 and changes to inventorship or the names of the inventors is governed by 37 CFR 1.48.
37 CFR 1.76(d)(2) provides that the information in the application data sheet will govern when the inconsistent information is supplied at the same time by a designation of correspondence address or the inventor’s oath or declaration. The information in the application data sheet will also govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form.
If an ADS is inconsistent with the information provided in another document that was submitted at the same time or prior to the ADS submission, the ADS will control. This is because the application data sheet is intended to be the means by which applicant provides complete bibliographic information. In the small number of instances where another document has more accurate information than a concurrently supplied application data sheet (37 CFR 1.76(d)(2)), a corrected application data sheet should be submitted to conform the information in the ADS to the correct information as provided in the other document(s).
37 CFR 1.76(d)(3) provides that the Office will capture bibliographic information from the application data sheet. 37 CFR 1.76(d)(3) further provides that the Office will generally not review the inventor’s oath or declaration to determine if the bibliographic information contained therein is consistent with the bibliographic information provided in an application data sheet. 37 CFR 1.76(d)(3) further provides that incorrect bibliographic information contained in an application data sheet may be corrected as provided in 37 CFR 1.76(c)(1).
Examples:
If an application naming inventors A and B is filed with an application data sheet that improperly identifies the residence of inventor B and an executed 37 CFR 1.63 declaration that properly identifies the residence of inventor B, the Office will capture the residence information of inventor B as identified in the application data sheet, and include that information in the filing receipt. Applicant may correct the residence information by submitting an application data sheet under 37 CFR 1.76(c)
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with the name of inventor B and the corrected residence for inventor B with underlining for insertions and strike-through or brackets for text removed.
If an application is filed with an application data sheet improperly identifying inventors A, B and C and an executed 37 CFR 1.63 declaration correctly setting forth the inventorship as A and B, the Office will capture the inventorship as inventors A, B and C based on the information in the application data sheet, and include that information in the filing receipt. To correct the inventorship, applicant must submit a request to correct the inventorship pursuant to 37 CFR 1.48. See MPEP § 602.01(c) et seq.
If an application is filed with an application data sheet, the Office will capture the applicant information as identified in the application data sheet. To change the name of the applicant, a request in accordance with 37 CFR 1.46(c), and in compliance with 37 CFR 3.71 and 3.73, is required. See MPEP § 605.01, subsection II.
IV. ADDITIONAL INFORMATION
The application data sheet form PTO/AIA/14 provides a section where applicants can make a request not to publish the application or a request for early publication.
The application data sheet form PTO/AIA/14 provides a section where applicants can provide an Authorization to Permit Access to the Instant Application by Participating Offices. If the box in this section of the form is checked, the Office has the authority to provide access to the instant patent application to the participating offices in which a foreign application claiming priority to the instant patent application is filed.
The application data sheet form PTO/AIA/14 provides an assignee information section, which includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application. The inclusion of this information in the application data sheet does not substitute for compliance with any requirement of 37 CFR part 3 to have an assignment recorded by the Office. Providing assignee information in the application data sheet is considered a request to
include such information on the patent application publication, since there is no other reason for including such information in the application data sheet. Assignment information must be recorded to have legal effect. Assignees who are the applicant will appear on the patent application publication as the applicant and only need to separately provide assignee information in the assignee information section if identification as an assignee is also desired on the patent application publication.
37 CFR 1.76(e) provides that an application data sheet must be signed in compliance with 37 CFR 1.33(b). The rule further provides that an unsigned application data sheet will be treated only as a transmittal letter. Thus, an unsigned application data sheet will not be effective to provide the name of the inventor for any invention claimed in the application (37 CFR 1.41(b)), name as the applicant an assignee, obligated assignee, or a person who otherwise shows sufficient propriety interest in the application (37 CFR 1.46), make a claim to priority of a foreign application (37 CFR 1.55), or make a claim to the benefit of a prior-filed domestic application (37 CFR 1.78).
Effective December 18, 2013 for all applications no matter when filed, 37 CFR 1.76 was amended by adding new paragraphs (f) and (g) to permit the use of Patent Law Treaty Model International Forms as appropriate or the Patent Cooperation Treaty Request Form in lieu of an application data sheet under 37 CFR 1.76 to provide certain information. However, as provided in 37 CFR 1.76(d)(2), information in an ADS will govern when inconsistent with the information supplied at any time in such forms. Furthermore, if applicants want to postpone submission of the inventor’s oath or declaration until after the time period set to complete the application as provided in 37 CFR 1.53(f)(1) or (2), an ADS that provides the inventor information is required. Accordingly, the use of an ADS to supply application information is encouraged.
37 CFR 1.76(f) provides that: (1) The requirement in 37 CFR 1.55 or 37 CFR 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied by the presentation of such priority or benefit claim in the Patent Law Treaty Model
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International Request Form; (2) the requirement in 37 CFR 1.57(a) for a reference to the previously filed application in an application data sheet will be satisfied by the presentation of such reference to the previously filed application in the Patent Law Treaty Model International Request Form; and (3) the requirement in 37 CFR 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied by the presentation of the name of the applicant in the Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, as applicable.
37 CFR 1.76(g) provides that the requirement in 37 CFR 1.78 for the presentation of a benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied in a national stage application under 35 U.S.C. 371 by the presentation of such benefit claim in the Patent Cooperation Treaty Request Form contained in the international application or the presence of such benefit claim on the front page of the publication of the international application under PCT Article 21(2). 37 CFR 1.76(g) states ‘‘the Patent Cooperation Treaty Request Form contained in the international application’’ to make clear that the provision does not allow for that addition or correction of benefit claim (or any other) information during the national stage via the submission of a new Patent Cooperation Treaty Request Form. Applicants may add or correct benefit claim (or any other) information during the national stage via the submission of an application data sheet under 37 CFR 1.76 (assuming that the conditions and requirements for such addition or correction are satisfied). 37 CFR 1.76(g) provides for presence of such benefit claim on the front page of the publication of the international application under PCT Article 21(2) to account for replacement sheets of the Patent Cooperation Treaty Request Form that may not be forwarded to each national office but that are reflected in the International Bureau’s publication of the international application. 37 CFR 1.76(g) does not mention either the provisions in 37 CFR 1.55 for the presentation of a priority claim under 35 U.S.C. 119 or 365 in an application data
sheet or the provisions in 37 CFR 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet with respect to a national stage application under 35 U.S.C. 371 as this information is taken from the WIPO records of the international application in a national stage application under 35 U.S.C. 371.
37 CFR 1.76(g) also provides that the requirement in 37 CFR 1.55 or 37 CFR 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet and the requirement in 37 CFR 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied in an application under 35 U.S.C. 111 by the presentation of such priority or benefit claim and presentation of the name of the applicant in a Patent Cooperation Treaty Request Form. 37 CFR 1.76(g) finally also provides that if a Patent Cooperation Treaty Request Form is submitted in an application under 35 U.S.C. 111, the Patent Cooperation Treaty Request Form must be accompanied by a clear indication that treatment of the application as an application under 35 U.S.C. 111 is desired.
601.05(b) Application Data Sheet (ADS) in Application Filed Before September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 601.05(a) for a discussion of the requirements of an ADS for applications filed on or after September 16, 2012.]
37 CFR 1.76 (pre-AIA) Application data sheet.
[Editor Note: 37 CFR 1.76 as reproduced below includes the revisions to paragraph (d)(2) and the addition of paragraphs (f) and (g) set forth in Changes to Implement the Patent Law Treaty, 78 FR 62368 (October 21, 2013)(final rule) as those provisions are applicable to applications filed before September 16, 2012.]
(a) Application data sheet. An application data sheet is a sheet or sheets, that may be voluntarily submitted in either provisional or nonprovisional applications, which contains bibliographic data, arranged in a format specified by the Office. An application data sheet must be titled “Application Data Sheet” and must contain all of the section headings listed in paragraph (b) of this section, with any appropriate data for each section heading. If an application data sheet is provided, the application data sheet is part of the provisional or nonprovisional application for which it has been submitted.
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(b) Bibliographic data. Bibliographic data as used in paragraph (a) of this section includes:
(1) Applicant information . This information includes the name, residence, mailing address, and citizenship of each applicant (§ 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. If the applicant is not an inventor, this information also includes the applicant’s authority (§§ 1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor.
(2) Correspondence information . This information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see § 1.33(a)).
(3) Application information . This information includes the title of the invention, a suggested classification, by class and subclass, the Technology Center to which the subject matter of the invention is assigned, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, the type of application (e.g., utility, plant, design, reissue, provisional), whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to § 5.2 of this chapter (see § 5.2(c)), and, for plant applications, the Latin name of the genus and species of the plant claimed, as well as the variety denomination. The suggested classification and Technology Center information should be supplied for provisional applications whether or not claims are present. If claims are not present in a provisional application, the suggested classification and Technology Center should be based upon the disclosure.
(4) Representative information . This information includes the registration number of each practitioner having a power of attorney in the application (preferably by reference to a customer number). Providing this information in the application data sheet does not constitute a power of attorney in the application (see § 1.32).
(5) Domestic priority information . This information includes the application number, the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and § 1.78(a)(2) or § 1.78(a)(5), and need not otherwise be made part of the specification.
(6) Foreign priority information . This information includes the application number, country, and filing date of each foreign application for which priority is claimed. Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55(a).
(7) Assignee information. This information includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application. Providing this information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
(c) Supplemental application data sheets. Supplemental application data sheets:
(1) May be subsequently supplied prior to payment of the issue fee either to correct or update information in a previously submitted application data sheet, or an oath or declaration under § 1.63 or § 1.67, except that inventorship changes are governed by § 1.48, correspondence changes are governed by § 1.33(a), and citizenship changes are governed by § 1.63 or § 1.67; and
(2) Must be titled “Supplemental Application Data Sheet,” include all of the section headings listed in paragraph (b) of this section, include all appropriate data for each section heading, and must identify the information that is being changed, preferably with underlining for insertions, and strike-through or brackets for text removed.
(d) Inconsistencies between application data sheet and other documents . For inconsistencies between information that is supplied by both an application data sheet under this section and other documents.
(1) The latest submitted information will govern notwithstanding whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by a § 1.63 or § 1.67 oath or declaration, except as provided by paragraph (d)(3) of this section;
(2) The information in the application data sheet will govern when the inconsistent information is supplied at the same time by an amendment to the specification, a designation of correspondence address, or a § 1.63 or § 1.67 oath or declaration, except as provided by paragraph (d)(3) of this section. The information in the application data sheet will govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change inApplicant or Owner Form.
(3) The oath or declaration under § 1.63 or § 1.67 governs inconsistencies with the application data sheet in the naming of inventors (§ 1.41(a)(1)) and setting forth their citizenship (35 U.S.C. 115);
(4) The Office will capture bibliographic information from the application data sheet (notwithstanding whether an oath or declaration governs the information). Thus, the Office shall generally, for example, not look to an oath or declaration under § 1.63 to see if the bibliographic information contained therein is consistent with the bibliographic information captured from an application data sheet (whether the oath or declaration is submitted prior to or subsequent to the application data sheet). Captured bibliographic information derived from an application data sheet containing errors may be corrected if applicant submits a request therefor and a supplemental application data sheet.
[Editor Note: 37 CFR 1.76(e) is not applicable to applications filed before September 16, 2012.]
(f) Patent Law Treaty Model International Forms . The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied by the presentation of
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such priority or benefit claim in the Patent Law Treaty Model International Request Form, and the requirement in § 1.57(a) for a reference to the previously filed application in an application data sheet will be satisfied by the presentation of such reference to the previously filed application in the Patent Law Treaty Model International Request Form. The requirement in § 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied by the presentation of the name of the applicant in the Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change inApplicant or Owner Form, as applicable.
(g) Patent Cooperation Treaty Request Form . The requirement in § 1.78 for the presentation of a benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied in a national stage application under 35 U.S.C. 371 by the presentation of such benefit claim in the Patent Cooperation Treaty Request Form contained in the international application or the presence of such benefit claim on the front page of the publication of the international application under PCT Article 21(2). The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet and the requirement in § 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied in an application under 35 U.S.C. 111 by the presentation of such priority or benefit claim and presentation of the name of the applicant in a Patent Cooperation Treaty Request Form. If a Patent Cooperation Treaty Request Form is submitted in an application under 35 U.S.C. 111, the Patent Cooperation Treaty Request Form must be accompanied by a clear indication that treatment of the application as an application under 35 U.S.C. 111 is desired.
I. BIBLIOGRAPHIC INFORMATION
The naming of the inventors and the setting forth of the citizenship of each inventor must be provided in the oath or declaration under pre-AIA 37 CFR 1.63 (as required by pre-AIA 35 U.S.C. 115) even if this information is provided in the application data sheet.
Applicant information includes the name, residence, mailing address, and citizenship of each applicant ( pre-AIA 37 CFR 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. (If the applicant is not an inventor, this information also includes the applicant’s authority (pre-AIA 37 CFR 1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor. The “mailing address” is the address where applicant customarily receives mail.
Correspondence information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see pre-AIA 37 CFR 1.33(a)).
Application information includes the title of the invention, a suggested classification by class and subclass, the Technology Center (TC) to which the subject matter of the invention is assigned, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, and the type of application (e.g., utility, plant, design, reissue, provisional). Application information also includes whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to 37 CFR 5.2(c).
Although the submission of the information related to a suggested classification and TC may be provided for both provisional and nonprovisional applications filed before September 16, 2012, the Office no longer utilizes this information and will continue to follow its present procedures for classifying and assigning new applications. Similarly for the suggested drawing figure, the Office may decide to print another figure on the front page of any patent application publication or any patent issuing from the application.
Pre-AIA 37 CFR 1.76(b)(3) also requests that the plant patent applicant state the Latin name and the variety denomination for the plant claimed. The Latin name and the variety denomination of the claimed plant are usually included in the specification of the plant patent application, and will be included in any plant patent or plant patent application publication if included in an application data sheet or patent application. The Office, pursuant to the “International Convention for the Protection of New Varieties of Plants” (generally known by its French acronym as the UPOV convention), has been asked to compile a database of the plants patented and the database must include the Latin name and the variety denomination of each patented plant. Having this information in an ADS will make the process of compiling this database more efficient.
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Representative information includes the registration number appointed with a power of attorney in the application (preferably by reference to a customer number). Pre-AIA 37 CFR 1.76(b)(4) states that providing this information in the application data sheet does not constitute a power of attorney in the application (see pre-AIA 37 CFR 1.32). This is because the Office does not expect the application data sheet to be executed by the party (applicant or assignee) who may appoint a power of attorney in the application.
Domestic priority information includes the application number (series code and serial number), the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Pre-AIA 37 CFR 1.76(b)(5) states that providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C.119(e) or 120. Since the application data sheet, if provided, is considered part of the application, the specific reference to an earlier filed provisional or nonprovisional application in the application data sheet satisfies the “specific reference” requirement of 35 U.S.C.119(e)(1) or 120, and it also complies with 37 CFR 1.78(a)(3) or (d)(3). Thus, a specific reference does not otherwise have to be made in the specification, such as in the first sentence(s) of the specification. If continuity data is included in an application data sheet, but not in the first sentence(s) of the specification, the continuity data for the patent front page will be taken from the application data sheet. No continuity data will be included in the first sentence(s) of the specification if applicant does not provide it there. Pre-AIA 37 CFR 1.76(b)(5) does not apply to provisional applications.
Foreign priority information includes the application number, country, and filing date of each foreign application for which priority is claimed, as well as any foreign application having a filing date before that of the application for which priority is claimed. Pre-AIA 37 CFR 1.76(b)(6) states that providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55. The patent statute, 35 U.S.C. 119(b), does not require that a claim to the benefit of a prior foreign application
take any particular form. Pre-AIA 37 CFR 1.76(b)(6) does not apply to provisional applications.
Pre-AIA 37 CFR 1.76(b)(7) provides that the assignee information includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application. The inclusion of this information in the application data sheet does not substitute for compliance with any requirement of 37 CFR part 3 to have an assignment recorded by the Office. Providing assignee information in the application data sheet is considered a request to include such information on the patent application publication, since there is no other reason for including such information in the application data sheet. Assignment information must be recorded to have legal effect.
Supplemental application data sheets may be subsequently supplied prior to payment of the issue fee to either correct or update information in a previously submitted application data sheet, or an oath or declaration under pre-AIA 37 CFR 1.63 or 1.67. See pre-AIA 37 CFR 1.76(c)(1). A supplemental data sheet cannot be used to correct the following: (1) inventorship changes (37 CFR 1.48); (2) correspondence changes (pre-AIA 37 CFR 1.33(a)); and (3) citizenship changes (pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67). Supplemental application data sheets must be titled “Supplemental Application Data Sheet” and also contain all of the seven section headings listed in 37 CFR 1.76(b) with all appropriate data for each heading. Supplemental application data sheets identifying only the information that is being changed (added, deleted, or modified) in the supplemental ADS are not acceptable. A supplemental ADS containing only new or changed information is likely to confuse the record, create unnecessary work for the Office, and does not comply with pre-AIA 37 CFR 1.76. If no ADS was originally filed, but applicant wants to submit an ADS to correct, modify, or augment the original application data, the ADS, even though it is the first-filed ADS, must be titled “Supplemental Application Data Sheet.”
II. SUPPLEMENTAL ADS SUBMISSIONS
For applications filed before September 16, 2012, when submitting an application data sheet after the
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initial filing of the application to correct, modify, or augment the application data sheet that was submitted with the application papers on filing, the following applies:
(A) the supplemental application data sheet must be titled “Supplemental Application Data Sheet” (while the title “Supplemental Application Data Sheet” is preferred, “Supp. ADS”, “Supplemental ADS” or other variations thereof will be accepted);
(B) the supplemental application data sheet must be a full replacement copy of the original ADS, if any, with each of the seven section headings listed in pre-AIA 37 CFR 1.76(b), and with all appropriate data for the section heading;
(C) the supplemental application data sheet must be submitted with all changes indicated, preferably with insertions or additions indicated by underlining, and deletions, with or without replacement data, indicated by strike-through or brackets; and
(D) the supplemental application data sheet must be signed as it is a paper and/or amendment filed in the application (see pre-AIA 37 CFR 1.33(b) and 37 CFR 11.18).
Any ADS submitted after the filing date of the application is a supplemental ADS, regardless of whether an original ADS was submitted with the application papers on filing. A supplemental ADS that is being used to correct data shown in an oath or declaration, such as foreign priority or residence information for an inventor, would show the original incorrect information with strike-through or brackets, and the new information with underlining, as if an ADS had originally been used to submit the information. For example, if the original oath or declaration included a foreign priority claim, in order to delete the foreign priority claim, applicant should provide a supplemental ADS showing the foreign priority claim with strike-through or brackets to ensure that the patent will reflect such change.
III. TREATMENT OF INCONSISTENT INFORMATION
Resolution of inconsistent information supplied by both an application data sheet and other documents (e.g., the oath or declaration under pre-AIA 37 CFR 1.63 , or pre-AIA 37 CFR 1.67) are addressed in pre-AIA 37 CFR 1.76 (d). If an ADS is inconsistent
with the information provided in another document that was submitted at the same time or previous to the ADS submission, the ADS will control. Pre-AIA 37 CFR 1.76(d)(1) provides that the latest submitted information will govern notwithstanding whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by an oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67, except as provided by pre-AIA 37 CFR 1.76(d)(3). This is because the application data sheet is intended as the means by which applicants will provide most information to the Office. In the small number of instances where another document has more accurate information than a concurrently supplied application data sheet (37 CFR 1.76(d)(2)), a supplemental application data sheet should be submitted to conform the information presented by the supplemental application data sheet with the correct information in the other document(s) (pre-AIA 37 CFR 1.76(d)(1)). The information in the application data sheet will also govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form.
If an application is filed with an application data sheet improperly identifying the residence of one of the inventors, inventor B, and an executed pre-AIA 37 CFR 1.63 declaration setting forth the correct but different residence of inventor B, the Office will capture the residence of inventor B found in the application data sheet as the residence of B, and include that information in the filing receipt. If applicant desires correction of the residence, applicant should submit a supplemental application data sheet under pre-AIA 37 CFR 1.76(c), with the name of inventor B and the corrected residence for inventor B.
Pursuant to pre-AIA 37 CFR 1.76(d)(3), the oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67 governs inconsistencies with the application data sheet in the naming of inventors and setting forth their citizenship. If different inventors
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are listed in the application data sheet than are named in the oath or declaration for the application, the inventors, named in the oath or declaration, are considered to be the inventors named in the patent application. See pre-AIA 37 CFR 1.76(d)(3). Any change in the inventorship set forth in the oath or declaration under pre-AIA 37 CFR 1.63 must be by way of a request under pre-AIA 37 CFR 1.48(a) notwithstanding identification of the correct inventive entity in an application data sheet or supplemental application data sheet. Similarly, if the oath or declaration under pre-AIA 37 CFR 1.63 incorrectly sets forth the citizenship of one of the inventors, that inventor must submit a supplemental oath or declaration under pre-AIA 37 CFR 1.67 with the correct citizenship notwithstanding the correct identification of the citizenship in an application data sheet or supplemental application data sheet. If the spelling of the inventor’s name is incorrect, a request under 37 CFR 1.48(f) is required. See MPEP §§ 602.01(c)(2) and 602.08(b).
The Office will rely upon information supplied in the application data sheet over an oath or declaration to capture the data even where the type of information supplied (citizenship, inventorship) is governed by the oath or declaration according to statute (pre-AIA 35 U.S.C. 115) or other rule (pre-AIA 37 CFR 1.41(a)(1)). Where the oath or declaration under 37 CFR 1.63 or pre-AIA 37 CFR 1.67 contains the correct information regarding inventors or their citizenship and the application data sheet does not, even though the oath or declaration governs pursuant to pre-AIA 37 CFR 1.76(d)(3), the information in the application data sheet must be corrected by submission of a request for correction and a supplemental application data sheet. If the spelling of the inventor’s name is incorrect, a request under 37 CFR 1.48(f) is required. See MPEP §§ 602.01(c)(2) and 602.08(b).
If an application is filed with an application data sheet correctly setting forth the citizenship of inventor B, and an executed pre-AIA 37 CFR 1.63 declaration setting forth a different incorrect citizenship of inventor B, the Office will capture the citizenship of inventor B found in the application data sheet. Applicant, however, must submit a supplemental oath or declaration under pre-AIA 37 CFR 1.67 by inventor B setting forth the correct
citizenship even though it appears correctly in the application data sheet. A supplemental application data sheet cannot be used to correct the citizenship error in the oath or declaration. If, however, the error is one of residence, no change would be required (pre-AIA 37 CFR 1.76(d)(2)).
IV. ADDITIONAL INFORMATION
As to the submission of class/subclass information in the application data sheet, the Office notes that there is a distinction between permitting applicants to aid in the identification of the appropriate Art Unit to examine the application and requiring the Office to always honor such identification/request, which could lead to misuse by some applicants of forum shopping. Even when an applicant’s identification of an Art Unit is appropriate, internal staffing/workload requirements may dictate that the application be handled by another Art Unit qualified to do so, particularly when the art or claims encompass the areas of expertise of more than one Art Unit.
If the applicant is not an inventor, the applicant information should also include the applicant’s authority to apply for the patent on behalf of the inventor (see pre-AIA 37 CFR 1.42, 1.43 and 1.47). For example, if the inventor is deceased or legally incapacitated, the applicant should include “Legal Representative” as the authority. Similarly, if a petition under pre-AIA 37 CFR 1.47(b) is filed, the applicant’s authority would be “Party in Interest under 35 U.S.C. 118.” If the application is filed by the Administrator of NASA, the applicant’s authority would be “Government Property Interest.”
The correspondence information may be indicated by reference to a Customer Number to which correspondence is to be directed.
Effective December 18, 2013 for all applications no matter when filed, 37 CFR 1.76 was amended by adding new paragraphs (f) and (g) to permit the use of Patent Law Treaty Model International Forms as appropriate or the Patent Cooperation Treaty Request Form in lieu of an application data sheet under 37
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CFR 1.76. See MPEP § 601.05(a), subsection IV, for more information.
602 Oaths and Declarations [R-11.2013]
35 U.S.C. 25 Declaration in lieu of oath.
(a) The Director may by rule prescribe that any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration in such form as the Director may prescribe, such declaration to be in lieu of the oath otherwise required.
(b) Whenever such written declaration is used, the document must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both ( 18 U.S.C. 1001).
35 U.S.C. 26 Effect of defective execution.
Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be executed in a specified manner may be provisionally accepted by the Director despite a defective execution, provided a properly executed document is submitted within such time as may be prescribed.
A copy, such as a photocopy or facsimile transmission, of an originally executed oath or declaration is encouraged to be filed (see MPEP § 502.01), especially since applications are maintained in electronic form, not paper. The original should be retained by applicant, or his or her representative as evidence of authenticity. If a question of authenticity arises, the U.S. Patent and Trademark Office may require submission of the original. See 37 CFR 1.4(d)(1)(ii).
I. OATHS
37 CFR 1.66 Statements under oath.
An oath or affirmation may be made before any person within the United States authorized by law to administer oaths. An oath made in a foreign country may be made before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States, or by an apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. The oath shall be attested in all cases in this and other countries, by the proper official seal of the officer before whom the oath or affirmation is made. Such oath or affirmation shall be valid as to execution if it complies with the laws of the State or country where made.
When the person before whom the oath or affirmation is made in this country is not provided with a seal, his official character shall be established by competent evidence, as by a certificate from a clerk of a court of record or other proper officer having a seal.
An oath or affirmation may be made before any person within the United States authorized by law to administer oaths. An oath made in a foreign country may be made in accordance with 37 CFR 1.66. The authority of military personnel to act as a notary is set forth in 10 U.S.C. 1044(a).
The language of 35 U.S.C. 115 and 37 CFR 1.66 is such that an attorney in the application is not barred from administering the oath as notary. The Office presumes that an attorney acting as notary is cognizant of the extent of his or her authority and jurisdiction and will not knowingly jeopardize his or her client’s rights by performing an illegal act. If such practice is permissible under the law of the jurisdiction where the oath is administered, then the oath is a valid oath.
The law of the District of Columbia prohibits the administering of oaths by the attorney in the case. If the oath is known to be void because of being administered by the attorney in a jurisdiction where the law holds this to be invalid, a new oath or declaration should be submitted. The application file may be referred to the Office of Enrollment and Discipline. See 37 CFR 1.66 and MPEP § 604.
A. SEAL
A seal is usually impressed on an oath. Documents with seals cannot be adequately scanned for retention in an Image File Wrapper, and because the Office maintains patent applications in an image form, the Office strongly encourages the use of declarations rather than oaths. However, oaths executed by military personnel in accordance with 10 U.S.C. 1044(a) and those executed in many states including Alabama, Louisiana, Maryland, Massachusetts, New Jersey, New York, Rhode Island, South Carolina, and Virginia need not be impressed with a seal. See paragraph B. below for information regarding venue.
When the person before whom the oath or affirmation is made in this country is not provided with a seal, his or her official character shall be
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established by competent evidence, as by a certificate from a clerk of a court of record or other proper officer having a seal, except as noted above. When the issue concerns the authority of the person administering the oath, proof of authority may be required. Depending on the jurisdiction, the seal may be either embossed or rubber stamped. The latter should not be confused with a stamped legend indicating only the date of expiration of the notary’s commission.
In some jurisdictions, the seal of the notary is not required but the official title of the officer must be on the oath. This applies to Alabama, California (certain notaries), Louisiana, Maryland, Massachusetts, New Jersey, NewYork, Ohio, Puerto Rico, Rhode Island, South Carolina, and Virginia.
See MPEP § 602.04 for foreign executed oaths.
B. VENUE
That portion of an oath or affidavit indicating where the oath is taken is known as the venue. Where the county and state in the venue agree with the county and state in the seal, no problem arises. If the venue and seal do not correspond in county and state, the jurisdiction of the notary must be determined from statements by the notary appearing on the oath. Venue and notary jurisdiction must correspond or the oath is improper. The oath should show on its face that it was taken within the jurisdiction of the certifying officer or notary. This may be given either in the venue or in the body of the jurat. Otherwise, a new oath or declaration, or a certificate of the notary that the oath was taken within his or her jurisdiction, should be submitted.
II. DECLARATIONS
37 CFR 1.68 Declaration in lieu of oath.
Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration. Such declaration may be used in lieu of the oath otherwise required, if, and only if, the declarant is on the same document, warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant's own
knowledge are true and that all statements made on information and belief are believed to be true.
18 U.S.C. 1001 Statements or entries generally.
Whoever, in any matter within the jurisdiction of any department or agency of the United States knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be fined not more than $10,000 or imprisoned not more than five years, or both.
By statute, 35 U.S.C. 25, the Director has been empowered to prescribe instances when a written declaration may be accepted in lieu of the oath for “any document to be filed in the Patent and Trademark Office.” A declaration may be submitted in lieu of an oath in any document filed in the Office provided the declaration complies with the requirements of 37 CFR 1.68. A 37 CFR 1.68 declaration need not be ribboned to the other papers, even if signed in a country foreign to the United States. However, because it is an integral part of the application, it must be maintained together therewith. When a declaration is used, it is unnecessary to appear before any official in connection with the making of the declaration.
The filing of a written declaration is acceptable in lieu of an original application oath that is informal.
Office personnel are authorized to accept a statutory declaration under 28 U.S.C. 1746 filed in the U.S. Patent and Trademark Office in lieu of an “oath” or declaration under 35 U.S.C. 25 and 37 CFR 1.68, provided the statutory declaration otherwise complies with the requirements of law.
Section 1746 of Title 28 of the United States Code provides:
Whenever, under any law of the United States or under any rule, regulation, order, or requirement made pursuant to law, any matter is required or permitted to be supported, evidenced, established, or proved by the sworn declaration, verification, certificate, statement, oath or affidavit, in writing of the person making the same (other than a deposition, or an oath of office, or an oath required to be taken
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before a specified official other than notary public), such matter may, with like force and effect, be supported, evidenced, established, or proved by the unsworn declaration, certificate, verification, or statement, in writing of such person which is subscribed by him, as true under penalty of perjury, and dated, in substantially the following form: [1] If executed without the United States: “I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on (date). (Signature).” [2] If executed within the United States its territories, possessions, or commonwealths: “I declare (or certify, verify, or state) under penalty of perjury that the foregoing is true and correct. Executed on (date). (Signature).”
602.01 Inventorship [R-07.2015]
The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in 37 CFR 1.64. See MPEP § 602.01(a) for the requirements of an inventor’s oath or declaration in an application filed on or after September 16, 2012. See MPEP § 602.01(b) for the requirements of an original oath or declaration in an application filed before September 16, 2012.
See MPEP § 602.09 for a discussion of joint inventorship. See MPEP § 2137.01 for the definition of, and requirements for, inventorship.
I. Naming Inventorship in application filed on or after September 16, 2012
[Editor Note: See subsection II., below, for naming inventorship in applications filed before September 16, 2012.]
37 CFR 1.41 Applicant for patent.
(a) An application must include, or be amended to include, the name of the inventor for any invention claimed in the application.
(b) The inventorship of a nonprovisional application under 35 U.S.C. 111(a) is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed before or concurrently with the inventor's oath or declaration. If an application data sheet is not filed before or concurrently with the inventor's oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor's oath or declaration, except as provided for in §§ 1.53(d)(4) and 1.63(d). Once an application data sheet or the inventor's oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to § 1.48. If neither an application data sheet nor the inventor's oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(b), unless the applicant files a paper, including the processing fee set forth in § 1.17(i), supplying the name or names of the inventor or joint inventors.
(c) The inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by § 1.51(c)(1). Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any correction of inventorship must be pursuant to § 1.48. If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying the name or names of the inventor or joint inventors.
(d) In a nonprovisional application under 35 U.S.C. 111(a) filed without an application data sheet or the inventor’s oath or declaration, or in a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name and residence of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
(e) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371. Unless the initial submission under 35 U.S.C. 371 is accompanied by an application data sheet in accordance with § 1.76 setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92 bis .
(f) The inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). Any correction of inventorship must be pursuant to § 1.48.
An application must include, or be amended to include, the name of the inventor for any invention claimed in the application (the inventorship). See 35 U.S.C. 115(a) and 37 CFR 1.41(a).
As provided in 37 CFR 1.41(b), the applicant may name the inventorship of a nonprovisional
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application under 35 U.S.C. 111(a) in the application data sheet in accordance with 37 CFR 1.76 or the inventor’s oath or declaration. The inventorship of a nonprovisional application under 35 U.S.C. 111(a) is the inventor or joint inventors set forth in the application data sheet in accordance with 37 CFR 1.76 filed before or concurrently with the inventor’s oath or declaration. An application data sheet must be signed to comply with 37 CFR 1.76. An unsigned application data sheet is treated as only a transmittal letter. See 37 CFR 1.76(e). If an application data sheet is not filed before or concurrently with the inventor’s oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor’s oath or declaration except as provided in 37 CFR 1.53(d)(4) (continued prosecution applications for designs) and 37 CFR 1.63(d) (continuing applications). Once an application data sheet or the inventor’s oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to 37 CFR 1.48(a). If neither an application data sheet nor inventor’s oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to 37 CFR 1.53(b), unless the applicant files a paper, including the processing fee set forth in 37 CFR 1.17(i), supplying the name or names of the inventor or joint inventors.
Applicants who wish to take advantage of the ability to name the inventors in an application data sheet rather than the inventor’s oath or declaration should take care to ensure that an application data sheet under 37 CFR 1.76 that is signed in compliance with 37 CFR 1.33(b) is present on filing, or at least prior to the filing of any inventor’s oath or declaration in the application. If an inventor’s oath or declaration is filed in the application prior to the filing of an application data sheet under 37 CFR 1.76 that is signed in compliance with 37 CFR 1.33(b), the inventorship named in the inventor’s oath or declaration controls. For example, if an inventor’s oath or declaration naming only inventor “A” is present on filing without an accompanying application data sheet, and a signed application data sheet is filed naming inventors “A” and “B” is subsequently filed in the application, the application will be treated as naming only inventor “A” (the inventor provided in the inventor’s oath or
declaration) until the inventorship is corrected under 37 CFR 1.48(a).
As provided in 37 CFR 1.41(c), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1). Once a cover sheet as prescribed by 37 CFR 1.51(c)(1) is filed in a provisional application, any correction of inventorship must be pursuant to 37 CFR 1.48. If a cover sheet as prescribed by 37 CFR 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to 37 CFR 1.53(c), unless the applicant files a paper including the processing fee set forth in 37 CFR 1.17(q), supplying the name or names of the inventor or joint inventors.
37 CFR 1.41(d) provides that in either a nonprovisional application under 35 U.S.C. 111(a) filed without an application data sheet or the inventor’s oath or declaration, or in a provisional application filed without a cover sheet as prescribed by 37 CFR 1.51(c)(1), the name and residence of each person believed to be an actual inventor should be provided when the application papers filed pursuant to 37 CFR 1.53(b) or (c) are filed. Naming the individuals known to be inventors or the persons believed to be the inventors may enable the Office to identify the application, if applicant does not know the application number. Where no inventor(s) is known and applicant cannot name a person believed to be an inventor on filing, the Office requests that an alphanumeric identifier be submitted for the application. The use of very short identifiers should be avoided to prevent confusion. Without supplying at least a unique identifying name the Office may have no ability or only a delayed ability to match any papers submitted after filing of the application and before issuance of an identifying application number with the application file. Any identifier used that is not an inventor’s name should be specific, alphanumeric characters of reasonable length, and should be presented in such a manner that it is clear to application processing personnel what the identifier is and where it is to be found. Failure to apprise the Office of an application identifier such as the names of the inventors or the alphanumeric identifier being used may result in applicants having
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to resubmit papers that could not be matched with the application and proof of the earlier receipt of such papers where submission was time dependent.
37 CFR 1.41(e) provides that the inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with 37 CFR 1.76 filed with the initial submission under 35 U.S.C. 371. Thus, the applicant in an international application may change inventorship as to the U.S. at the time of national stage entry by simply filing an application data sheet in accordance with 37 CFR 1.76 with the initial submission under 35 U.S.C. 371 naming the inventor or joint inventors. Unless the initial submission under 35 U.S.C. 371 is accompanied by an application data sheet in accordance with 37 CFR 1.76 setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis . 37 CFR 1.41(e) does not provide the ability to name the inventor or joint inventors via the inventor’s oath or declaration even when an application data sheet in accordance with 37 CFR 1.76 is not provided.
37 CFR 1.41(f) was added to set forth the inventorship in an international design application designating the United States. Specifically, the inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). 37 CFR 1.41(f) further provides that any correction of inventorship must be pursuant to 37 CFR 1.48.
II. Naming Inventorship in an Application filed Before September 16, 2012
[Editor Note: See subsection I., above, for naming inventorship in applications filed on or after September 16, 2012.]
Pre-AIA 37 CFR 1.41(a)(1) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as provided for in 37 CFR 1.53(d)(4) and
pre-AIA 37 CFR 1.63(d). See MPEP §§ 602.08(b) and 605.02 for additional information.
III. Correction of Inventorship
For correction of inventorship, see MPEP § 602.01(c) et seq. Note that requests to correct the inventorship under 37 CFR 1.48 filed on or after September 16, 2012 (regardless of the application filing date) are treated by OPAP. If the request is granted, OPAP will correct the Office records and send a corrected filing receipt.
602.01(a) Inventor’s Oath or Declaration in Application Filed On or After September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 602.01(b) for information pertaining to an inventor's oath or declaration in applications filed before September 16, 2012.]
35 U.S.C. 115 Inventor’s oath or declaration.
(a) NAMING THE INVENTOR; INVENTOR’S OATH OR DECLARATION.—An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.
(b) REQUIRED STATEMENTS.—An oath or declaration under subsection (a) shall contain statements that—
(1) the application was made or was authorized to be made by the affiant or declarant; and
(2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.
(c) ADDITIONAL REQUIREMENTS.—The Director may specify additional information relating to the inventor and the invention that is required to be included in an oath or declaration under subsection (a).
(d) SUBSTITUTE STATEMENT.—
(1) IN GENERAL.—In lieu of executing an oath or declaration under subsection (a), the applicant for patent may provide a substitute statement under the circumstances described in paragraph (2) and such additional circumstances that the Director may specify by regulation.
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(2) PERMITTED CIRCUMSTANCES.—A substitute statement under paragraph (1) is permitted with respect to any individual who—
(A) is unable to file the oath or declaration under subsection (a) because the individual—
(i) is deceased;
(ii) is under legal incapacity; or
(iii) cannot be found or reached after diligent effort; or
(B) is under an obligation to assign the invention but has refused to make the oath or declaration required under subsection (a).
(3) CONTENTS.—A substitute statement under this subsection shall—
(A) identify the individual with respect to whom the statement applies;
(B) set forth the circumstances representing the permitted basis for the filing of the substitute statement in lieu of the oath or declaration under subsection (a); and
(C) contain any additional information, including any showing, required by the Director.
(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT OF RECORD.—An individual who is under an obligation of assignment of an application for patent may include the required statements under subsections (b) and (c) in the assignment executed by the individual, in lieu of filing such statements separately.
(f) TIME FOR FILING.—The applicant for patent shall provide each required oath or declaration under subsection (a), substitute statement under subsection (d), or recorded assignment meeting the requirements of subsection (e) no later than the date on which the issue fee is paid.
(g) EARLIER-FILED APPLICATION CONTAINING REQUIRED STATEMENTS OR SUBSTITUTE STATEMENT.—
(1) EXCEPTION.—The requirements under this section shall not apply to an individual with respect to an application for patent in which the individual is named as the inventor or a joint inventor and that claims the benefit under section 120, 121, 365(c), or 386(c) of the filing of an earlier-filed application, if—
(A) an oath or declaration meeting the requirements of subsection (a) was executed by the individual and was filed in connection with the earlier-filed application;
(B) a substitute statement meeting the requirements of subsection (d) was filed in connection with the earlier filed application with respect to the individual; or
(C) an assignment meeting the requirements of subsection (e) was executed with respect to the earlier-filed
application by the individual and was recorded in connection with the earlier-filed application.
(2) COPIES OF OATHS, DECLARATIONS, STATEMENTS, OR ASSIGNMENTS.—Notwithstanding paragraph (1), the Director may require that a copy of the executed oath or declaration, the substitute statement, or the assignment filed in connection with the earlier-filed application be included in the later-filed application.
(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; FILING ADDITIONAL STATEMENTS.—
(1) IN GENERAL.—Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement at any time. If a change is made in the naming of the inventor requiring the filing of 1 or more additional statements under this section, the Director shall establish regulations under which such additional statements may be filed.
(2) SUPPLEMENTAL STATEMENTS NOT REQUIRED.—If an individual has executed an oath or declaration meeting the requirements of subsection (a) or an assignment meeting the requirements of subsection (e) with respect to an application for patent, the Director may not thereafter require that individual to make any additional oath, declaration, or other statement equivalent to those required by this section in connection with the application for patent or any patent issuing thereon.
(3) SAVINGS CLAUSE.—A patent shall not be invalid or unenforceable based upon the failure to comply with a requirement under this section if the failure is remedied as provided under paragraph (1).
(i) ACKNOWLEDGMENT OF PENALTIES.—Any declaration or statement filed pursuant to this section shall contain an acknowledgment that any willful false statement made in such declaration or statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.
37 CFR 1.63 Inventor's oath or declaration.
(a) The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided for in § 1.64 . An oath or declaration under this section must:
(1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;
(2) Identify the application to which it is directed;
(3) Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and
(4) State that the application was made or was authorized to be made by the person executing the oath or declaration.
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(b) Unless the following information is supplied in an application data sheet in accordance with § 1.76, the oath or declaration must also identify:
(1) Each inventor by his or her legal name; and
(2) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
(c) A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56. There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing.
(d)
(1) A newly executed oath or declaration under § 1.63, or substitute statement under § 1.64 , is not required under §§ 1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64 , was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.
(2) The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.
(3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64 .
(e)
(1) An assignment may also serve as an oath or declaration required by this section if the assignment as executed:
(i) Includes the information and statements required under paragraphs (a) and (b) of this section; and
(ii) A copy of the assignment is recorded as provided for in part 3 of this chapter.
(2) Any reference to an oath or declaration under this section includes an assignment as provided for in this paragraph.
(f) With respect to an application naming only one inventor, any reference to the inventor's oath or declaration in this chapter includes a substitute statement executed under § 1.64 . With respect to an application naming more than one inventor, any reference to the inventor's oath or declaration in this chapter means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless otherwise clear from the context.
(g) An oath or declaration under this section, including the statement provided for in paragraph (e) of this section, must be executed (i.e., signed) in accordance either with § 1.66 or with an acknowledgment that any willful false statement made in such declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.
(h) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1) will be placed in the file record of the application or patent, but may not necessarily be reviewed by the Office. Any request for correction of the named inventorship must comply with § 1.48 in an application and § 1.324 in a patent.
I. IDENTITY OF INVENTOR(S), APPLICATION, AND REQUIRED STATEMENTS
The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in 37 CFR 1.64 . See 37 CFR 1.63(a) and 35 U.S.C. 115. An oath or declaration must: (1) identify the inventor or joint inventor executing the oath or declaration by his or her legal name; (2) identify the application to which it is directed; (3) include a statement the person executing the oath or declaration believes the named inventor or joint inventors to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and (4) state that the application was made or authorized to be made by the person executing the oath or declaration. Items (3) and (4) above are requirements of 35 U.S.C. 115(a) and (b).
A. INVENTOR NAME AND MAILING ADDRESS
The requirements that an oath or declaration must identify the inventor or joint inventor executing the oath or declaration by his or her legal name and identify the application to which it is directed are necessary for the Office to ensure compliance with the requirement of 35 U.S.C. 115(a). Specifically, 35 U.S.C. 115(a) requires that each individual who is the inventor or a joint inventor of a claimed
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invention in an application for patent has executed an oath or declaration in connection with the application (except as provided for in 35 U.S.C. 115). See MPEP § 602.08(b) for additional information pertaining to inventor names.
Unless such information is supplied in an application data sheet in accordance with 37 CFR 1.76, the oath or declaration must also identify: (1) each inventor by his or her legal name; (2) a mailing address where the inventor or each joint inventor customarily receives mail; and (3) a residence for each inventor or joint inventor who lives at a location which is different from where the inventor or joint inventor customarily receives mail. See 37 CFR 1.63(b).
For nonprovisional international design applications, 37 CFR 1.1021(d)(3) provides that the requirement in 37 CFR 1.63(b) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, will be considered satisfied by the presentation of such information in the international design application prior to international registration.
See also MPEP § 602.08(a) for additional details regarding inventor bibliographic information.
If applicant files an application data sheet (ADS) that identifies each inventor by his or her legal name, in accordance with 37 CFR 1.76, the applicant is not required to name each inventor in a single oath or declaration. This permits each joint inventor to execute an oath or declaration stating only that the joint inventor executing the oath or declaration is an original joint inventor of the claimed invention in the application for which the oath or declaration is being submitted. To be in accordance with 37 CFR 1.76, the application data sheet must be signed in compliance with 37 CFR 1.33(b). An unsigned application data sheet will be treated only as a transmittal letter.
B. IDENTIFICATION OF APPLICATION
See MPEP § 602.08(c) for the minimum information necessary to identify the application to which an oath or declaration under 37 CFR 1.63 is directed.
C. REQUIRED STATEMENTS
An oath or declaration under 37 CFR 1.63 in an application filed on or after September 16, 2012 is no longer required to contain the “reviewed and understands” clause and “duty to disclose” clause of pre-AIA 37 CFR 1.63(b)(2) and (b)(3). However, 37 CFR 1.63 still requires that a person executing an oath or declaration review and understand the contents of the application, and be aware of the duty to disclose under 37 CFR 1.56. See 37 CFR 1.63(c). There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute (i.e., understand) the document that the person is executing.
II. ASSIGNMENT-STATEMENT AS OATH OR DECLARATION
37 CFR 1.63(e) implements the provisions of 35 U.S.C. 115(e). An assignment may also serve as an oath or declaration required by 37 CFR 1.63 if the assignment: (1) includes the information and statements required under 37 CFR 1.63(a) and (b); and (2) a copy of the assignment is recorded as provided for in 37 CFR part 3. The assignment, including the information and statements required under 37 CFR 1.63(a) and (b), must be executed by the individual who is under the obligation of assignment. Any reference to an oath or declaration includes an assignment as provided for in 37 CFR 1.63(e).
Applicants should be mindful that 37 CFR 3.31 requires a conspicuous indication, such as by use of a check-box on the assignment cover sheet, to alert the Office that an assignment submitted with an application is being submitted for a dual purpose: recording in the assignment database, such as to support a power of attorney, and for use in the application as the inventor’s oath or declaration. Assignments cannot be recorded unless an application number is provided against which the assignment is to be recorded. When filing an application on paper, if an assignment is submitted for recording along with the application, the assignment is separated from the paper application after the application is assigned an application number and is forwarded to the Assignment Recordation Branch for recording in its database.
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The assignment does not become part of the application file. If the applicant indicates that an assignment-statement is also an oath or declaration, the Office will scan the assignment into the Image File Wrapper (IFW) file for the application before forwarding it to theAssignment Recordation Branch.
For EFS-Web filing of application papers, EFS-Web does not accept assignments for recording purposes when filing an application. Assignments submitted via EFS-Web will be made of record in the application, and will not be forwarded to the Assignment Recordation Branch for recordation by the Office. Recording of assignments may only be done electronically in EPAS (Electronic Patent Assignment System). If an applicant files the assignment-statement for recording via EPAS and utilizes the check-box, the Office will place a copy of the assignment-statement in the application file.
III. EXECUTION OF INVENTOR’S OATH OR DECLARATION
With respect to an application naming more than one inventor, any reference to the inventor’s oath or declaration in 37 CFR chapter I means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless it is otherwise clear from the context. Thus, any requirement in 37 CFR chapter I for the inventor’s oath or declaration with respect to an application naming more than one inventor is met if an oath or declaration under 37 CFR 1.63, an assignment-statement under 37 CFR 1.63(e), or a substitute statement under 37 CFR 1.64 executed by or with respect to each joint inventor is filed. See 37 CFR 1.63(f).
An oath or declaration under 37 CFR 1.63, including the assignment-statement provided for in 37 CFR 1.63(e), must be executed (i.e., signed) in accordance either with 37 CFR 1.66, or with an acknowledgement that any willful false statement made in such declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both. See 37 CFR 1.63(g) and 35 U.S.C. 115(i). The inventor’s oath or declaration must be executed (i.e., signed) by the inventor or the joint inventors, unless the inventor’s oath or declaration is a substitute statement under
37 CFR 1.64, which must be signed by the applicant, or an assignment-statement under 37 CFR 1.63(e), which must be signed by the inventor who is under the obligation of assignment of the patent application.
See MPEP § 602.08(b) for additional information regarding the execution of the inventor’s oath or declaration.
See 35 U.S.C. 115(g), 37 CFR 1.63(d) and MPEP § 602.05(a) regarding the use of copies of inventor’s oaths or declarations in continuing applications.
35 U.S.C. 115(h)(1) provides that any person making a statement under this section may at any time “withdraw, replace, or otherwise correct the statement at any time.” 37 CFR 1.63(h) provides that an oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1) will be placed in the file record of the application or patent, but may not necessarily be reviewed by the Office.
IV. FORMS
Forms PTO/AIA/01 through PTO/AIA/09 may be used when submitting the inventor’s oath or declaration in an application filed on or after September 16, 2012. These forms and an "AIA Inventor's Oath or Declaration Quick Reference Guide" are available on the USPTO website at www.uspto.gov/patent/forms/forms-patent- applications-filed-or-after-september-16-2012.
602.01(b) Inventor’s Oath or Declaration in Application Filed Before September 16, 2012 [R-11.2013]
[Editor Note: See MPEP § 602.01(a) for information pertaining to an inventor’s oath or declaration in applications filed on or after September 16, 2012.]
35 U.S.C. 115 (pre-AIA) Oath of applicant.
The applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent; and shall state of what country he is a citizen. Such oath may be made before any person within the United States authorized by law to administer oaths, or, when made in
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a foreign country, before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority is proved by certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. Such oath is valid if it complies with the laws of the state or country where made. When the application is made as provided in this title by a person other than the inventor, the oath may be so varied in form that it can be made by him. For purposes of this section, a consular officer shall include any United States citizen serving overseas, authorized to perform notarial functions pursuant to section 1750 of the Revised Statutes, as amended (22 U.S.C. 4221).
37 CFR 1.63 (pre-AIA) Oath or declaration.
(a) An oath or declaration filed under § 1.51(b)(2) as a part of a nonprovisional application must:
(1) Be executed, i.e., signed, in accordance with either § 1.66 or § 1.68. There is no minimum age for a person to be qualified to sign, but the person must be competent to sign, i.e., understand the document that the person is signing;
(2) Identify each inventor by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial;
(3) Identify the country of citizenship of each inventor; and
(4) State that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.
(b) In addition to meeting the requirements of paragraph (a) of this section, the oath or declaration must also:
(1) Identify the application to which it is directed;
(2) State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims, as amended by any amendment specifically referred to in the oath or declaration; and
(3) State that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.
(c) Unless such information is supplied on an application data sheet in accordance with § 1.76, the oath or declaration must also identify:
(1) The mailing address, and the residence if an inventor lives at a location which is different from where the inventor customarily receives mail, of each inventor; and
(2) Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made pursuant to § 1.55, and any foreign application having a filing date before that of the application on which priority is claimed, by specifying
the application number, country, day, month, and year of its filing.
(d)(1) A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
(i) The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section;
(ii) The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application;
(iii) The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and
(iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application.
(2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application.
(3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under § 1.47, the copy of the executed oath or declaration for such prior application must be accompanied by:
(i) A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under § 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and
(ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application.
(4) Where the power of attorney or correspondence address was changed during the prosecution of the prior application, the change in power of attorney or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney or correspondence address during the prosecution of the prior application.
(5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
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(e) A newly executed oath or declaration must be filed in any continuation-in-part application, which application may name all, more, or fewer than all of the inventors named in the prior application.
The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in pre-AIA 37 CFR 1.64. See pre-AIA 37 CFR 1.63(a) and pre-AIA 35 U.S.C. 115. When joint inventors execute separate oaths or declarations, each oath or declaration should make reference to the fact that the affiant is a joint inventor together with each of the other inventors indicating them by name. This may be done by stating that he or she does verily believe himself or herself to be the original, first and joint inventor together with “A” or “A & B, etc.” as the facts may be.
Pre-AIA 37 CFR 1.63(a) and (b) set forth the basic requirements for an oath or declaration in an application filed before September 16, 2012.
See MPEP § 602.08 et seq. for details specific to the required inventor bibliographic information,
signature, and name, and to the identification of the application to which the oath or declaration applies.
Unless included in an application data sheet, oaths and declarations must make reference to any foreign application for patent (or inventor’s certificate) for which priority is claimed and any foreign application filed prior to the filing date of an application on which priority is claimed. See pre-AIA 37 CFR 1.63(c)(2).
The applicant is required to recite all foreign applications filed prior to the application on which priority is claimed. It is required to give the foreign application number and name of the country or office in which filed, as well as the filing date of each foreign application to which priority is claimed.
See MPEP § 602.03 for information pertaining to defective oaths or declarations.
Forms PTO/SB/01 and PTO/SB/01A may be used when submitting the inventor’s oath or declaration in an application filed before September 16, 2012.
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602.01(c) Correction of Inventorship, Name of Inventor, and Order of Names in an Application [R-07.2015]
I. NAMING INVENTORSHIP
The Office will issue a filing receipt listing the inventors identified at the time of filing of the application even if the application was filed without an executed oath or declaration.
A. Applications Filed on or After September 16, 2012
As provided in 37 CFR 1.41(b), the inventorship of a nonprovisional application under 35 U.S.C. 111(a) is the inventor or joint inventors set forth in the application data sheet in accordance with 37 CFR 1.76 filed before or concurrently with the inventor’s oath or declaration. If the application data sheet is not filed before or concurrently with the inventor’s oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor’s oath or declaration (except as otherwise provided in 37 CFR 1.41(b)). Once an application data sheet or the inventor’s oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to 37 CFR 1.48(a).
As provided in 37 CFR 1.41(c), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1). Once a cover sheet as prescribed by 37 CFR 1.51(c)(1) is filed in a provisional application, any correction of inventorship must be pursuant to 37 CFR 1.48.
See MPEP § 602.01, subsection I for information specific to naming inventorship in applications filed on or after September 16, 2012. See MPEP § 601.01(a), subsection II for information regarding completion of an nonprovisional application subsequent to the filing date pursuant to 37 CFR 1.53(f) (e.g., because the inventor’s oath or declaration was not present on filing date). See MPEP § 601.01(b) for information regarding completion of a provisional application subsequent to the filing date.
B. Applications Filed Before September 16, 2012
Pre-AIA 37 CFR 1.41(a)(1) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as otherwise provided. For applications filed prior to September 16, 2012, where the first-filed executed oath or declaration sets forth an inventive entity which is different from the inventive entity initially set forth at the time of filing of the application, the actual inventorship of the application will be taken from the executed oath or declaration. See Pre-AIA 37 CFR 1.41(a)(1).
As provided in pre-AIA 37 CFR 1.41(a)(2), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1).
II. REQUESTS FOR CORRECTION OF INVENTORSHIP UNDER 37 CFR 1.48
Correction of inventorship in an application is permitted by amendment under 35 U.S.C. 116, which is implemented by 37 CFR 1.48.
For requests for correction of inventorship filed under 37 CFR 1.48(a) or (d) on or after September 16, 2012 (without regard to the filing date of the application), see MPEP § 602.01(c)(1).
For requests filed on or after September 16, 2012, under 37 CFR 1.48(f) to correct or update inventor names, or to change the order of inventor names, see MPEP § 602.01(c)(2). Note that requests under 37 CFR 1.48 filed on or after September 16, 2012 will be handled by the Office of Patent Application Processing (OPAP).
For requests for correction of inventorship filed before September 16, 2012 (without regard to the filing date of the application), see MPEP § 602.01(c)(3).
37 CFR 1.48 does not apply to reissue applications as is noted in its title, whether correcting an inventorship error in the patent to be reissued or in the reissue application itself. Where an error in inventorship in a patent is to be corrected via a
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reissue application, see 37 CFR 1.171- 37 CFR 1.175 and MPEP § 1412.04. Where such an error is to be corrected via a certificate of correction under 37 CFR 1.324, see MPEP § 1481. See 37 CFR 1.48(i) for correction of inventorship in interferences and contested cases before the Patent Trial and Appeal Board.
Although 37 CFR 1.48 does not contain a diligence requirement for filing the request, once an inventorship error is discovered, timeliness requirements under 37 CFR 1.116 and 37 CFR 1.312 apply.
A request under 37 CFR 1.48 will not be required:
(A)Where an application is to issue with the correct inventorship based on the allowed claims even though the application may have been filed with an incorrect inventorship based on the claims as originally submitted; and
(B)Where a court has issued an order under 35 U.S.C. 256 for correction of the inventorship of a patent. Such request should be submitted directly to the Certificate of Correction Division along with form PTO/SB/44 (see MPEP § 1485).
III. CORRECTION OF INVENTORSHIP BY FILING CONTINUING APPLICATION
Correction of inventorship may also be obtained by the filing of a continuing application under 37 CFR 1.53 without the need for filing a request under 37 CFR 1.48, although it should be noted that the requirements for a request under 37 CFR 1.48 filed on or after September 16, 2012 are minimal.
35 U.S.C. 120 permits a continuing application to claim the benefit of the filing date of a copending, previously filed, parent application provided there is inventorship overlap between the continuing application and the parent application. If the inventive entity of a continuing application includes an inventor named in the parent application, the inventorship overlap required by 35 U.S.C. 120 is met. However, refiling to change inventorship could result in the loss of a benefit claim if there is no overlap in inventorship between the two applications.
Note that a correction of inventorship may result in the loss of power of attorney. For applications filed on or after September 16, 2012, 37 CFR 1.32(e) provides that if the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to 37 CFR 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the 37 CFR 1.48 request. This provision does not preclude a practitioner from acting in a representative capacity pursuant to 37 CFR 1.34, if applicable.
For applications filed on or after September 16, 2012, the inventorship in the continuing application is the inventor or joint inventors specified in the ADS filed before or with the copy of the inventor’s oath or declaration from the earlier-filed application. If an ADS is not filed before or with the copy of the inventor’s oath or declaration, then the inventorship is the inventorship in the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement, signed by a 37 CFR 1.33(b) party, stating the name of each inventor in the continuing application. Any new joint inventor named in the continuing application must execute an inventor’s oath or declaration, except as provided for in 37 CFR 1.64.
602.01(c)(1) Correction of Inventorship in an Application – Request Filed On or After September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 602.01(c)(3) for information about correction of inventorship for requests filed before September 16, 2012.]
37 CFR 1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application.
(a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41 must include:
(1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name; and
(2) The processing fee set forth in § 1.17(i).
(b) Inventor's oath or declaration for added inventor: An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any
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actual inventor who has not yet executed such an oath or declaration.
(c) Any request to correct or change the inventorship under paragraph (a) of this section filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in § 1.17(d), unless the request is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.
(d) Provisional application . Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any request to correct or change the inventorship must include:
(1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and
(2) The processing fee set forth in § 1.17(q).
(e) Additional information may be required. The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.
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Requests for correction of inventorship under 37 CFR 1.48 filed on or after September 16, 2012 will be handled by the Office of Patent Application Processing (OPAP).
I. 37 CFR 1.48(a) - Nonprovisional Application
Under 37 CFR 1.48(a), an applicant may submit a request for correction of inventorship in a nonprovisional patent application once the inventorship has been established. See MPEP § 602.08(b), subsection III, for details regarding naming inventorship in an application filed on or after September 16, 2012.
A request to correct the inventorship filed under 37 CFR 1.48(a) should identify the inventorship change and must be accompanied by a signed application data sheet (ADS) including the legal name, residence, and mailing address of the inventor or each actual joint inventor (see 37 CFR 1.76(b)(1)) and the processing fee set forth in 37 CFR 1.17(i). The application data sheet submitted with a request under 37 CFR 1.48(a) must identify the information being changed with underlining for insertions and strike-through or brackets for text removed.
37 CFR 1.48(a) enables an applicant to correct inventorship where an application sets forth improper
inventorship as well as where the prosecution of an application results in the need to add or delete one or more inventors (e.g., due to the addition or deletion of claims or an amendment to the claims).
II. 37 CFR 1.48(b) – Inventor’s Oath or Declaration for Added Inventor
37 CFR 1.48(b) provides that an oath or declaration as required by 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.
For applications filed on or after September 16, 2012, the oath or declaration required by 37 CFR 1.48(b) must comply with 37 CFR 1.63 in effect for applications filed on or after September 16, 2012. See MPEP § 602.01(a). A substitute statement in compliance with 37 CFR 1.64 is only available for applications filed on or after September 16, 2012. See MPEP § 604 for the requirements for substitute statements.
For applications filed before September 16, 2012, the oath or declaration required by 37 CFR 1.48(b) for an added inventor must comply with pre-AIA 37 CFR 1.63 which remains in effect for applications filed before September 16, 2012. See MPEP § 602.01(b).
III. 37 CFR 1.48(c) – Request filed after Office Action on the Merits
37 CFR 1.48(c) provides that the fee set forth in 37 CFR 1.17(d) (in addition to the processing fee) is required when requests under 37 CFR 1.48 are filed after the Office action on the merits has been given or mailed in the application. However, the fee will not be required when inventors are deleted if the request to correct or change inventorship is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.
IV. 37 CFR 1.48(d) – Provisional Application
37 CFR 1.48(d) provides for correcting inventorship in provisional applications. Under 37 CFR 1.41(c), the inventorship of a provisional application is the
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inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1). Once a cover sheet is filed in a provisional application, any correction of inventorship must be pursuant to 37 CFR 1.48. If a cover sheet as prescribed by 37 CFR 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant 37 CFR 1.53(c), unless the applicant files a paper, including the processing fee set forth in 37 CFR 1.17(q), supplying the name or names of the inventor or joint inventors.
37 CFR 1.48(d) provides a procedure for adding or deleting or correcting or updating the name of an inventor in a provisional application. 37 CFR 1.48(d) requires that the submission include: (1) a request, signed by a party set forth in 37 CFR 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and (2) the fee set forth in 37 CFR 1.17(q). When an inventor is being added, applicants should also file a corrected application data sheet or a new cover sheet providing the residence of all inventors. See 37 CFR 1.51(c). For provisional applications, it may not be necessary to correct the inventorship under 37 CFR 1.48(d) unless there would be no overlap of inventors upon the filing of the nonprovisional application with the correct inventorship. The need to correct the inventorship in any U.S. nonprovisional or provisional application may in part be dependent upon whether a foreign filing under the Paris Convention will occur subsequent to the U.S. filing. See MPEP § 213.
602.01(c)(2) Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 602.01(c)(3) for a discussion of the requirements for requests to correct or update inventor name filed before September 16, 2012.]
37 CFR 1.48 Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.
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(f) Correcting or updating the name of an inventor: Any request to correct or update the name of the inventor or a joint
inventor, or the order of the names of joint inventors, in a nonprovisional application must include:
(1) An application data sheet in accordance with § 1.76that identifies each inventor by his or her legal name in the desired order; and
(2) The processing fee set forth in § 1.17(i).
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The change in the order of the names of inventors in a provisional application is not provided for since provisional applications do not become application publications or patents.
As of September 16, 2012, it is no longer necessary to have distinct procedures for correction of inventorship and for correction to the name of an inventor or to the order of the names of the inventors. 37 CFR 1.48(f) permits an applicant to change or update a particular inventor’s name if his/her legal name has changed (e.g., due to marriage), or an inventor’s name contains an error (e.g., typographical or transliteration mistake or the reversal of family or given names) and allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent). 37 CFR 1.48(f) specifically provides that any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include: (1) an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name in the desired order (identifying the information that is being changed as required by 37 CFR 1.76(c)(2)); and (2) the processing fee set forth in 37 CFR 1.17(i). In addition to the corrected application data sheet, the request should also identify the desired inventor name change.
602.01(c)(3) Correction of Inventorship in an Application – Request Under 37 CFR 1.48 Filed Prior to September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 602.01(c)(1) for requests for correction of inventorship filed on or after September 16, 2012 and MPEP § 602.01(c)(2) for a discussion of the requirements for requests to correct or update inventor name filed on or after September 16, 2012.]
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I. GENERAL INFORMATION
37 CFR 1.48 (pre-AIA) Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.
(a) Nonprovisional application after oath/declaration filed . If the inventive entity is set forth in error in an executed § 1.63 oath or declaration in a nonprovisional application, and such error arose without any deceptive intention on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, the inventorship of the nonprovisional application may be amended to name only the actual inventor or inventors. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the desired inventorship change;
(2) A statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part;
(3) An oath or declaration by the actual inventor or inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43 or § 1.47;
(4) The processing fee set forth in § 1.17(i); and
(5) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).
(b) Nonprovisional application—fewer inventors due to amendment or cancellation of claims. If the correct inventors are named in a nonprovisional application, and the prosecution of the nonprovisional application results in the amendment or cancellation of claims so that fewer than all of the currently named inventors are the actual inventors of the invention being claimed in the nonprovisional application, an amendment must be filed requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed. Amendment of the inventorship requires:
(1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the named inventor or inventors being deleted and acknowledges that the inventor’s invention is no longer being claimed in the nonprovisional application; and
(2) The processing fee set forth in § 1.17(i).
(c) Nonprovisional application—inventors added for claims to previously unclaimed subject matter. If a nonprovisional application discloses unclaimed subject matter by an inventor or inventors not named in the application, the application may be amended to add claims to the subject matter and name the correct inventors for the application. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the desired inventorship change;
(2) A statement from each person being added as an inventor that the addition is necessitated by amendment of the
claims and that the inventorship error occurred without deceptive intention on his or her part;
(3) An oath or declaration by the actual inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43, or § 1.47;
(4) The processing fee set forth in § 1.17(i); and
(5) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).
(d) Provisional application—adding omitted inventors. If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive intention on the part of the omitted inventor or inventors, the provisional application may be amended to add the name or names of the omitted inventor or inventors. Amendment of the inventorship requires:
(1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the inventor or inventors being added and states that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and
(2) The processing fee set forth in § 1.17(q).
Requests under 37 CFR 1.48 filed before September 16, 2012 are governed by the provisions of 37 CFR 1.48 in effect prior to September 16, 2012 (pre-AIA 37 CFR 1.48) as discussed below. However, for applications filed prior to September 16, 2012, where a 37 CFR 1.48 request is filed on or after September 16, 2012, the provisions of 37 CFR 1.48 in effect as of September 16, 2012 apply because it is the date of the request for correction that controls which version of the rule is applicable. See MPEP § 602.01(c).
If a request to correct inventorship filed before September 16, 2012 is deficient, any new request to correct the inventorship must comply with 37 CFR 1.48 as revised effective September 16, 2012.
Pre-AIA 37 CFR 1.48(a) is directed at correcting the inventorship in an application where the inventorship was improperly set forth in the executed oath or declaration filed in the application. Pre-AIA 37 CFR 1.48(b) is directed at correcting the inventorship where the executed oath or declaration had correctly set forth the inventorship but due to prosecution of the application, e.g., claim cancellation or amendment, fewer than all of the currently named inventors are the actual inventors of the remaining claims. Pre-AIA 37 CFR 1.48(c) is directed at correcting the inventorship where the
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executed oath or declaration had correctly set forth the inventorship but due to amendment of the claims to include previously unclaimed but disclosed subject matter, one or more inventors of the amended subject matter must be added to the current inventorship. Pre-AIA 37 CFR 1.48(d) is directed at provisional applications where an inventor is to be added. Pre-AIA 37 CFR 1.48(e) is directed at provisional applications where an inventor is to be deleted. Pre-AIA 37 CFR 1.48(f) operates to automatically correct the inventorship upon filing of a first executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors in a nonprovisional application or upon filing of a cover sheet in a provisional application.
Requests under pre-AIA 37 CFR 1.48 are generally decided by the primary examiner except:
(A) When the application is involved in an interference (decided by the Patent Trial and Appeal Board);
(B) When the application is a national stage application filed under 35 U.S.C. 371 which, as of the date of filing of the request, has not been accepted as satisfying the requirements for entry into the national stage (decided in the International Patent Legal Administration); and
(C) When accompanied by a petition under 37 CFR 1.183 requesting waiver of a requirement under pre-AIA 37 CFR 1.48(a) or (c), e.g., waiver of the statement of lack of deceptive intent by an inventor to be added or deleted, or waiver of the reexecution of the declaration by all of the inventors (decided in the Office of Petitions).
When any request for correction of inventorship under pre-AIA 37 CFR 1.48(a)-(c) is granted, the examiner will acknowledge any addition or deletion of the names of inventors by using either form paragraph 2.14 or form paragraph 2.14.01 in the next Office communication to applicant. The application will be forwarded to OPAP for issuance of a corrected filing receipt and correction of Office records.
¶ 2.14 Correction of Inventorship Under 37 CFR 1.48(a) or (c) Filed Before Sept. 16, 2012, Sufficient
In view of the request to correct inventorship under 37 CFR 1.48 and the accompanying papers filed before September 16,
2012, it has been found that this nonprovisional application, as filed, through error and without deceptive intent, improperly set forth the inventorship, and accordingly, this application has been corrected in compliance with 37 CFR 1.48 ([1]). The inventorship of this application has been changed by [2].
The application will be forwarded to the Office of Patent Application Processing (OPAP) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as corrected.
Examiner Note:
1. In bracket 1, insert --a-- or --c--, as appropriate.
2. In bracket 2, insert explanation of correction made, including addition or deletion of appropriate names.
3. This form paragraph should only be used if the request to correct inventorship was filed before September 16, 2012. Requests under 37 CFR 1.48 filed on or after September 16, 2012, are handled by the Office of Patent Application Processing.
¶ 2.14.01 Correction of Inventorship Under 37 CFR 1.48(b) Filed Before Sept. 16, 2012, Sufficient
In view of the request to correct inventorship under 37 CFR 1.48(b) and accompanying papers filed before September 16, 2012, the inventorship of this nonprovisional application has been changed by the deletion of [1].
The application will be forwarded to the Office of Patent Application Processing (OPAP) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as corrected.
Examiner Note:
1. This form paragraph is to be used only for 37 CFR 1.48(b) corrections.
2. In bracket 1, insert the names of the deleted inventor(s).
3. This form paragraph should only be used if the request to correct inventorship was filed before September 16, 2012. Requests under 37 CFR 1.48 filed on or after September 16, 2012, are handled by the Office of Patent Application Processing.
The grant or denial of a request under pre-AIA 37 CFR 1.48(a) may result in the lack of inventorship overlap between a parent application and a continuing application and the consequent inability to claim benefit in the continuing application of the parent application’s filing date under 35 U.S.C. 120. Intervening references must then be considered.
For correction of inventorship in a patent, see 37 CFR 1.324 and MPEP § 1481.
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II. APPLICATIONS FILED UNDER 37 CFR 1.53(f) - NO OATH/DECLARATION
The Office will issue a filing receipt listing the inventors identified at the time of filing of the application even if the application was filed under 37 CFR 1.53(f) without an executed oath or declaration. A request under 37 CFR 1.48(a), (b), or (c) will not be necessary. See 37 CFR 1.48(f).
Where the first-filed executed oath or declaration was submitted prior to December 1, 1997 in an application filed without an executed oath or declaration, if the inventive entity identified on the executed oath or declaration differs from the inventive entity identified at the time of filing of the application, a request under 37 CFR 1.48(a) or (c) must also be submitted.
Example
A nonprovisional application is filed (either prior to, on or after December 1, 1997 but prior to September 16, 2012) naming A as the sole inventor without an executed oath or declaration under pre-AIA 37 CFR 1.63. Only claim 1 is presented.
A “Notice to File Missing Parts of Application” is mailed to the applicant requiring an oath or declaration under pre-AIA 37 CFR 1.63. In timely reply thereto after December 1, 1997 but prior to September 16, 2012, a preliminary amendment adding claim 2, and a declaration under pre-AIA 37 CFR 1.63 executed by inventors A and B are submitted with B being added in view of claim 2. A request under pre-AIA 37 CFR 1.48(c) is not required, in that pre-AIA 37 CFR 1.48(f)(1) will act to set forth an inventorship of A and B.
Similarly, where a preliminary amendment canceling or amending claims concomitantly requires the deletion of an inventor, such deletion may be accomplished by the submission of a first-filed executed oath or declaration on or after December 1, 1997 naming the actual inventive entity. A request under pre-AIA 37 CFR 1.48(b) would not be necessary.
III. Pre-AIA 37 CFR 1.48(a)
37 CFR (pre-AIA) 1.48 Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.
(a) Nonprovisional application after oath/declaration filed . If the inventive entity is set forth in error in an executed § 1.63 oath or declaration in a nonprovisional application, and such error arose without any deceptive intention on the part of the person named as an inventor in error or on the part of the person
who through error was not named as an inventor, the inventorship of the nonprovisional application may be amended to name only the actual inventor or inventors. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the desired inventorship change;
(2) A statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part;
(3) An oath or declaration by the actual inventor or inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43 or § 1.47;
(4) The processing fee set forth in § 1.17(i); and
(5) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).
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Under pre-AIA 37 CFR 1.48(a), if the correct inventor or inventors are not named in an executed oath or declaration under pre-AIA 37 CFR 1.63 in a nonprovisional application for patent, the application can be amended to name only the actual inventor or inventors so long as the error in the naming of the inventor or inventors occurred without any deceptive intention on the part of the person named as an inventor in error or the person who through error was not named as an inventor.
Pre-AIA 37 CFR 1.48(a) requires that the amendment be accompanied by: (1) a request to correct the inventorship that sets forth the desired inventorship change; (2) a statement from each person being added and from each person being deleted as an inventor that the error occurred without deceptive intention on his or her part; (3) an oath or declaration by each actual inventor or inventors as required by pre-AIA 37 CFR 1.63 or as permitted by pre-AIA 37 CFR 1.42, 1.43 or 1.47; (4) the fee set forth in 37 CFR 1.17(i); and (5) the written consent of any existing assignee, if any of the originally named inventors has executed an assignment.
Correction may be requested in cases where the person originally named as inventor was in fact not an inventor or the sole inventor of the subject matter being claimed. If such error occurred without any deceptive intention on the part of the inventor named and/or not named in error, the Office has the
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authority to substitute the true inventive entity for the erroneously named inventive entity. Instances where corrections can be made include changes from: a mistaken sole inventor to a different but actual sole inventor; a mistakenly identified sole inventor to different, but actual, joint inventors; a sole inventor to joint inventors to include the original sole inventor; erroneously identified joint inventors to different but actual joint inventors; erroneously identified joint inventors to a different, but actual, sole inventor. (Note that 35 U.S.C. 120 and 37 CFR 1.78 require an overlap of inventorship, hence, refiling, rather than requesting under pre-AIA 37 CFR 1.48 to change inventorship where the change would not result in an inventorship overlap may result in the loss of a benefit claim.)
A. Statement of Lack of Deceptive Intention
Where a similar inventorship error has occurred in more than one application for which correction is requested wherein petitioner seeks to rely on identical statements, only one original set need be supplied if copies are submitted in all other applications with a reference to the application containing the originals (original oaths or declarations under pre-AIA 37 CFR 1.63 and written consent of assignees along with separate processing fees must be filed in each application).
The statement required from each inventor being added or deleted may simply state that the inventorship error occurred without deceptive intention. The statement need not be a verified statement (see MPEP § 410).
Note that if a request to correct inventorship filed before September 16, 2012 is deficient, any new request to correct the inventorship must comply with 37 CFR 1.48 as revised effective September 16, 2012. Requests under 37 CFR 1.48 filed on or after September 16, 2012 do not require a “lack of deceptive intention” statement.
B. Oath or Declaration
An oath or declaration under pre-AIA 37 CFR 1.63 by each actual inventor must be presented. While each inventor need not execute the same oath or declaration, each oath or declaration executed by an
inventor must contain a complete listing of all inventors so as to clearly indicate what each inventor believes to be the appropriate inventive entity. Where individual declarations are executed, they must be submitted as individual declarations rather than combined into one declaration. For example, where the inventive entity is A and B, a declaration may not be executed only by A naming only A as the inventor and a different declaration may not be executed only by B naming only B as the inventor, which two declarations are then combined into one declaration with a first page of boiler plate, a second page with A’s signature, and a second page with B’s signature (so that it appears that the declaration was executed with the entire inventive entity appearing in the declaration when it did not).
Conflicting oaths or declarations filed: If the first executed oaths or declarations that are submitted name different inventive entities (e.g., one declaration names A, B, and C as inventors and a second declaration names D as the inventor) and are filed on the same day, the application will be considered to name the inventors named in both declarations (A, B, C, and D) and a new oath or declaration in compliance with pre-AIA 37 CFR 1.63 including the entire inventive entity will be required. Where an application is filed with an executed declaration under pre-AIA 37 CFR 1.63 naming an inventive entity that is in conflict with another paper filed in the application, such as the transmittal letter, the executed declaration will govern. However, where an executed declaration is never submitted and the application papers are in conflict as to the inventorship, each party identified as an inventor on filing will be considered to have been named as part of the inventive entity. See pre-AIA 37 CFR 1.41(a)(1).
Pre-AIA 37 CFR 1.47 is available in applications filed prior to September 16, 2012, to meet the requirement for an oath or declaration under pre-AIA 37 CFR 1.63 as for example where A, B, and C were originally named as inventors and D who refuses to cooperate is to be later added as an inventor. The oath or declaration under pre-AIA 37 CFR 1.63 of inventor D may be supplied pursuant to pre-AIA 37 CFR 1.47(a), but note that the required pre-AIA 37 CFR 1.48(a)(2) statement must still be supplied by inventor D (an unlikely event in view of the inability
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to obtain the executed oath or declaration under pre-AIA 37 CFR 1.63), or waiver thereof petitioned under 37 CFR 1.183. Alternatively, where D is to be added as an inventor (where inventors A, B, and C have previously executed the application under pre-AIA 37 CFR 1.63) and it is original inventor A who refuses to cooperate, the statement under pre-AIA 37 CFR 1.48(a)(2) is only required to be signed by inventor D. Originally named inventor A is merely required to reexecute an oath or declaration in compliance with pre-AIA 37 CFR 1.63. Petitions under pre-AIA 37 CFR 1.47 are only applicable to an original oath or declaration and are not applicable to the reexecution of another oath or declaration by A. In such circumstances, a petition under pre-AIA 37 CFR 1.183 should be considered requesting waiver of the requirement of pre-AIA 37 CFR 1.64 that each of the actual inventors, i.e., inventor A, execute the oath or declaration, particularly where assignee consent is given to the requested correction. Absent assignee consent, the petition under 37 CFR 1.183 requesting waiver of the reexecution of the oath or declaration will be evaluated as to whether the nonsigning inventor was actually given the opportunity to reexecute the oath or declaration, or whether the nonsigning inventor could not be reached.
Applications filed with a petition under pre-AIA 37 CFR 1.47 and a request under pre-AIA 37 CFR 1.48(a) will be forwarded to the Office of Petitions, after mailing the filing receipt by the Office of Patent Application Processing (OPAP), for consideration of the petition and the request. In those instances wherein a request under pre-AIA 37 CFR 1.48(a) and a petition under pre-AIA 37 CFR 1.47 have both been filed in an application, the Office of Petitions may first issue a decision on the request under 37 CFR 1.48(a) so as to determine the appropriate oath or declaration under pre-AIA 37 CFR 1.63 required for the petition under pre-AIA 37 CFR 1.47.
The oath or declaration submitted subsequent to the filing date (37 CFR 1.53(f)) of an application filed under 37 CFR 1.53(b) must clearly identify the previously filed specification it is intended to execute. See MPEP § 601.01(a) and § 602.
C. Fee
Where waiver under 37 CFR 1.183 is requested in relation to a requirement under pre-AIA 37 CFR 1.48(a), a processing fee under pre-AIA 37 CFR 1.48(a) and a petition fee under 37 CFR 1.183 are required. Similarly, where in addition to a request under pre-AIA 37 CFR 1.48, two petitions under 37 CFR 1.183 are presented, e.g., one requesting waiver of a requirement under pre-AIA 37 CFR 1.48 and the other requesting waiver of the reexecution of an oath or declaration under pre-AIA 37 CFR 1.64, three fees are required (one for the request filed under 37 CFR 1.48 and two for the two petitions filed under 37 CFR 1.183).
Where a similar error has occurred in more than one application a separate processing fee must be submitted in each application in which correction is requested.
If the processing fee has not been submitted or authorized the request will be dismissed.
D. Written Consent of Assignee
The written consent of every existing assignee of the original named inventors must be submitted. See pre-AIA 37 CFR 1.48(a)(5). Pre-AIA 37 CFR 1.48(a) does not limit assignees to those who are recorded in the U.S. Patent and Trademark Office records. The Office employee deciding the request should check the file record for any indication of the existence of an assignee (e.g., a small entity assertion from an assignee).
Where no assignee exists, requester should affirmatively state that fact. If the file record, including the request, is silent as to the existence of an assignee it will be presumed that no assignee exists. Such presumption should be set forth in the decision to alert requesters to the requirement.
The individual signing on behalf of the assignee giving its consent to the requested inventorship correction, should specifically state that he or she has the authority to act on behalf of the assignee. In the absence of such a statement, the consent will be accepted if it is signed by an appropriate official of the assignee (e.g., president, vice president,
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secretary, treasurer, or derivative thereof) if the official’s title has been made of record. A general statement of authority to act for the assignee, or on the specific matter of consent, or the appropriate title of the party signing on behalf of the assignee should be made of record in the consent. However, if it appears in another paper of record, e.g., small entity assertion, it is also acceptable. Further, the assignee must establish its ownership of the application in accordance with pre-AIA 37 CFR 3.73. MPEP § 324.
E. Continuing Applications
35 U.S.C. 120 permits a continuing application to claim the benefit of the filing date of a copending, previously filed, parent application provided there is inventorship overlap between the continuing application and the parent application. If the inventive entity of a continuing application includes an inventor named in the parent application, the inventorship overlap required by 35 U.S.C. 120 is met.
Example
The parent application names inventors A and B and claims inventions 1 and 2. Inventor A contributes only to invention 1 and inventor B contributes only to invention 2. A restriction requirement is made and invention 1 was elected. Upon allowance of claims directed to invention 1 and cancellation of claims directed to invention 2, a request under pre-AIA 37 CFR 1.48(b) was filed requesting deletion of inventor B. The request under pre-AIA 37 CFR 1.48(b) was granted by the primary examiner. Prior to the issuance of the parent application, a divisional application claiming benefit under 35 U.S.C. 120 to the parent application, is filed claiming only invention 2 and naming only inventor B. The inventorship overlap required by 35 U.S.C. 120 is met in this instance even though at the time of filing of the divisional application, the inventorship overlap was lost as a result of the deletion of an inventor in the parent application. The overlap of inventorship need not be present on the date the continuing application is filed nor present when the parent application issues or becomes abandoned.
On filing a continuing application under 37 CFR 1.53(b) it should not be assumed that an error in inventorship made in a parent application was in fact corrected therein in response to a request under pre-AIA 37 CFR 1.48(a) unless a decision from the U.S. Patent and Trademark Office to that effect was received by the requester. A continuing application naming the additional inventor can be filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) with a newly
executed oath or declaration by the new inventive entity along with a request for benefit under 35 U.S.C. 120 without the need for a decision on the request under pre-AIA 37 CFR 1.48 filed in the parent application.
Should an error in inventorship in a parent application be discovered, whether it is the need to add and/or to delete inventors, when preparing to file a continuing application, the continuing application may be filed under 37 CFR 1.53(b) with the correct inventive entity without the need for a request under pre-AIA 37 CFR 1.48(a) in the parent or continuing application provided the parent application is to be abandoned on filing of the continuing application. In filing a continuation or divisional application under 37 CFR 1.53(b), a copy of an oath or declaration from the prior application can only be used where inventors are to be deleted (37 CFR 1.53(b)(1) and pre-AIA 37 CFR 1.63(d)(1)(ii)), but not where inventors are to be added. Where inventors are to be added, a newly executed oath or declaration must be submitted. See pre-AIA 37 CFR 1.63(d)(5).
In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), a request under pre-AIA 37 CFR 1.48(a) or (c) to add an inventor to a parent application that was not acted on (e.g., filed after final rejection) will be automatically considered in the CPA. Until the request is granted, the inventorship remains the same as the prior application. Note, however, that effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications. If the application is a design application, after discovery of an inventorship error, the application can also be refiled under 37 CFR 1.53(d)(4) as a CPA where inventors are only to be deleted.
In filing a continuing application to correct the inventorship, it is important to recognize that 37 CFR 1.78 requires for purposes of claiming the benefit of the prior application that the prior application must have had the filing fee paid within the period set forth in 37 CFR 1.53(f) so as to establish copendency. The basic filing fee must be paid within the pendency of a nonprovisional application in order to permit benefit of the application to be claimed under 35 U.S.C. 120, 121,
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or 365(c) in a subsequent nonprovisional or international application.
Should a continuation or divisional application be filed under 37 CFR 1.53(b)(1) where a copy of the oath or declaration from the prior application is utilized (or under 37 CFR 1.53(d) as a CPA if the prior application is a design application) purporting to add an inventor, the inventorship of the prior application will be retained in the continuing application as addition of an inventor is not permitted in these instances. The absence of a request to correct the inventorship submitted with the continuing application will not affect the filing date of the continuing application. However, the retained inventorship must then be corrected by the filing of a request under pre-AIA 37 CFR 1.48(a) in the continuation or divisional application stating that the error in failing to name the additional inventor in the prior application was without deceptive intention. Where an inventor is to be added, it is recommended that a continuation or divisional application be filed under 37 CFR 1.53(b) with a newly executed oath or declaration and not be filed with a copy of the oath or declaration from the prior application. This procedure eliminates the need for a request under pre-AIA 37 CFR 1.48.
An inventorship error discovered while prosecuting a continuing application that occurred in both an abandoned parent application and the continuing application can be corrected in both applications by filing a single request in the continuing application (e.g., A + B named in parent, B + C named in continuing application, actual inventorship is C + D thereby eliminating inventorship overlap and resulting loss of benefit claim under 35 U.S.C. 120 if the error is not corrected in abandoned parent application as well as in continuation application). Absent such loss of inventorship overlap, correction need not be made in the abandoned application.
When entering the national stage under 35 U.S.C. 371, correction of inventorship is via the provisions of pre-AIA 37 CFR 1.497(d). See MPEP § 1893.01(e).
¶ 2.13 Correction of Inventorship Under 37 CFR 1.48(a), Insufficient
The request to correct the inventorship of this nonprovisional application under 37 CFR 1.48(a) is deficient because:
Examiner Note:
1. This form paragraph should only be used in response to requests to correct an error in the naming of the prior inventors in nonprovisional applications. If the request is merely to delete an inventor because claims were canceled or amended such that the deleted inventor is no longer an actual inventor of any claim in the application, use form paragraph 2.13.01 instead of this form paragraph.
Potential rejections
A rejection under pre-AIA 35 U.S.C. 102(f) or (g) must be considered if the request is denied.
The grant or denial of the request may result in the loss of inventorship overlap between a parent application and a continuing application and an inability to claim benefit in the continuing application of the parent application’s filing date under 35 U.S.C. 120. Intervening references must then be considered.
2. A primary examiner may not decide the request if the request is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.48(a) (typically a refusal of one of the inventors to be added or deleted to execute the required statement of facts) – the request for correction of inventorship and request for waiver of the rules should be forwarded to the Office of Petitions.
3. One or more of form paragraphs 2.13a - 2.13e should follow this form paragraph, as applicable.
4. Where it appears that: 1) the inventor(s) to be added or deleted may be hostile and will not execute a required statement of facts; and 2) the actual inventorship would overlap the original inventorship (37 CFR 1.78), follow this form paragraph with form paragraph 2.13f.
5. Requests under 37 CFR 1.41 to change inventorship where an executed oath or declaration has not been filed are to be acted upon by OPAP.
6. Where there is a correction in a person’s name, e.g., due to misspelling, or marriage, a request under 37 CFR 1.48 is inappropriate. SeeMPEP § 602.08(b) for name changes.
7. An initial executed oath or declaration under 37 CFR 1.63 may change the inventorship as originally set forth when the application is filed without an executed oath or declaration without request for correction of inventorship (37 CFR 1.48(f)).
8. This form paragraph should only be used if the request to correct inventorship was filed before September 16, 2012. Requests under 37 CFR 1.48 filed on or after September 16,
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2012, are handled by the Office of Patent Application Processing.
¶ 2.13a Statement of Facts Problem (for Use Following FP 2.13, If Applicable)
The statement of facts by an inventor or inventors to be added or deleted does not explicitly state that the inventorship error occurred without deceptive intent on his or her part or cannot be construed to so state.
¶ 2.13b No New Oath or Declaration (for Use Following FP 2.13 or 2.13.02, If Applicable)
An oath or declaration by each actual inventor or inventors listing the entire inventive entity has not been submitted.
¶ 2.13c Required Fee Not Submitted (for Use Following FP 2.13, 2.13.01 or 2.13.02, If Applicable)
It lacks the required fee under 37 CFR 1.17(i).
¶ 2.13d Written Consent Missing (for Use Following FP 2.13 or 2.13.02, If Applicable)
It lacks the written consent of any assignee of one of the originally named inventors.
¶ 2.13e 37 CFR 3.73(b) Submission (for Use Following FP 2.13 or 2.13.02, If Applicable)
A 37 CFR 3.73(b) submission has not been received to support action by the assignee.
¶ 2.13f Hostile Inventor(s)/Inventorship Overlap (for Use Following FP 2.13, If Applicable)
As it appears that a party required by 37 CFR 1.48(a)(2) to submit a statement of facts may not be willing to submit such statement, applicant should consider either: a) submission of a petition under 37 CFR 1.183 to waive that requirement if the original named inventor(s) has assigned the entire right and interest to an assignee who has given its consent to the requested inventorship correction, MPEP § 602.01(c)(3), subsection III.A., or b) refiling the application (where addition is needed) under 37 CFR 1.53(b) with a new oath or declaration and any necessary petition under 37 CFR 1.47, or where only deletion is needed, either under 37 CFR 1.53(b) utilizing a copy of a prior oath or declaration under 37 CFR 1.63(d)(1)(iv), or under 37 CFR 1.53(d)) (design applications only), thereby eliminating the need for a 37 CFR 1.48 request.
¶ 2.13.01 Correction of Inventorship Under 37 CFR 1.48(b), Insufficient
The request for the deletion of an inventor in this nonprovisional application under 37 CFR 1.48(b) is deficient because:
Examiner Note:
1. This form paragraph should only be used when the inventorship was previously correct when originally executed
but an inventor is being deleted because claims have been amended or canceled such that he or she is no longer an inventor of any remaining claim in the non-provisional application. If the inventorship is being corrected because of an error in naming the correct inventors, use form paragraph 2.13 instead of this form paragraph.
2. Follow this form paragraph with one or both of form paragraphs 2.13c and 2.13g.
3. See note 1 of form paragraph 2.13, Potential rejections.
¶ 2.13g Statement Under 37 CFR 1.48(b)(2) Problem (for Use Following FP 2.13.01, If Applicable)
The request was not accompanied by the statement required under 37 CFR 1.48(b)(2).
¶ 2.13.02 Correction of Inventorship Under 37 CFR 1.48(c), Insufficient
The request to correct the inventorship in this nonprovisional application under 37 CFR 1.48(c) requesting addition of an inventor(s) is deficient because:
Examiner Note:
1. This form paragraph should only be used when the inventorship was previously correct when the application was originally executed, but the inventorship now needs to be changed due to subsequent addition of subject matter from the specification to the claims, which subject matter was contributed by a party not originally named as an inventor.
2. See note 2 of form paragraph 2.13.
3. Follow this form paragraph with any of form paragraphs 2.13b-2.13e or 2.13h.
4. See note 1 of form paragraph 2.13, Potential rejections.
5. See notes 4-7 of form paragraph 2.13.
¶ 2.13h Statement of Facts, Added Inventor (for Use Following FP 2.13.02, If Applicable)
The statement of facts by the inventor(s) to be added does not explicitly state that the amendment of the inventorship is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intent on the part of the inventor(s) to be added, or cannot be construed to so state.
¶ 2.14.01 Correction of Inventorship Under 37 CFR 1.48(b) Filed Before Sept. 16, 2012, Sufficient
In view of the request to correct inventorship under 37 CFR 1.48(b) and accompanying papers filed before September 16, 2012, the inventorship of this nonprovisional application has been changed by the deletion of [1].
The application will be forwarded to the Office of Patent Application Processing (OPAP) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as corrected.
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Examiner Note:
1. This form paragraph is to be used only for 37 CFR 1.48(b) corrections.
2. In bracket 1, insert the names of the deleted inventor(s).
3. This form paragraph should only be used if the request to correct inventorship was filed before September 16, 2012. Requests under 37 CFR 1.48 filed on or after September 16, 2012, are handled by the Office of Patent Application Processing.
IV. Pre-AIA 37 CFR 1.48(b)
37 CFR 1.48 (pre-AIA) Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.
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(b) Nonprovisional application—fewer inventors due to amendment or cancellation of claims. If the correct inventors are named in a nonprovisional application, and the prosecution of the nonprovisional application results in the amendment or cancellation of claims so that fewer than all of the currently named inventors are the actual inventors of the invention being claimed in the nonprovisional application, an amendment must be filed requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed. Amendment of the inventorship requires:
(1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the named inventor or inventors being deleted and acknowledges that the inventor's invention is no longer being claimed in the nonprovisional application; and
(2) The processing fee set forth in § 1.17(i).
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Pre-AIA 37 CFR 1.48(b) provides for deleting the names of persons originally properly included as inventors, but whose invention is no longer being claimed in a nonprovisional application. Such a situation would arise where claims have been amended or deleted during prosecution because they are unpatentable or as a result of a requirement for restriction of the application to one invention, or for other reasons. A request under pre-AIA 37 CFR 1.48(b) to delete an inventor would be appropriate prior to an action by the TC where it is decided not to pursue particular aspects of an invention attributable to some of the original named inventors.
Pre-AIA 37 CFR 1.48(b) requires that the amendment be accompanied by: (1) a request including a statement identifying each named inventor who is being deleted and acknowledging
that the inventor’s invention is no longer being claimed in the application; and (2) a fee under 37 CFR 1.17(i). The statement may be signed by applicant’s registered attorney or agent who then takes full responsibility for ensuring that the inventor is not being improperly deleted from the application. Written consent of any assignee is not required for requests filed under pre-AIA 37 CFR 1.48(b).
V. Pre-AIA 37 CFR 1.48(c)
37 CFR 1.48 (pre-AIA) Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.
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(c) Nonprovisional application—inventors added for claims to previously unclaimed subject matter. If a nonprovisional application discloses unclaimed subject matter by an inventor or inventors not named in the application, the application may be amended to add claims to the subject matter and name the correct inventors for the application. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the desired inventorship change;
(2) A statement from each person being added as an inventor that the addition is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intention on his or her part;
(3) An oath or declaration by the actual inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43, or § 1.47;
(4) The processing fee set forth in § 1.17(i); and
(5) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).
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Pre-AIA 37 CFR 1.48(c) provides for the situation where a nonprovisional application discloses unclaimed subject matter by an inventor or inventors not named in the application when an executed declaration under pre-AIA 37 CFR 1.63 was first filed. In such a situation, the nonprovisional application may be amended pursuant to pre-AIA 37 CFR 1.48(c) to add claims directed to the originally unclaimed but disclosed subject matter and also to name the correct inventors for the application based on the newly added claims. Any claims added to the application must be supported by the disclosure as filed and cannot add new matter.
Pre-AIA 37 CFR 1.48(c) requires that the amendment must be accompanied by: (1) a request
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to correct the inventorship that sets forth the desired inventorship change; (2) a statement from each person being added as an inventor that the amendment is necessitated by an amendment to the claims and that the inventorship error occurred without deceptive intention on his or her part; (3) an oath or declaration by each actual inventor; (4) the fee under 37 CFR 1.17(i); and (5) the written consent of any assignee of the original named inventors.
VI. Pre-AIA 37 CFR 1.48(d)
37 CFR 1.48 (pre-AIA) Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.
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(d) Provisional application—adding omitted inventors. If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive intention on the part of the omitted inventor or inventors, the provisional application may be amended to add the name or names of the omitted inventor or inventors. Amendment of the inventorship requires:
(1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the inventor or inventors being added and states that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and
(2) The processing fee set forth in § 1.17(q).
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Pre-AIA 37 CFR 1.48(d) provides a procedure for adding the name of an inventor in a provisional application, where the name was originally omitted without deceptive intent.
Pre-AIA 37 CFR 1.48(d) requires that the amendment be accompanied by: (1) a request to correct the inventorship that sets forth the desired inventorship change; (2) a statement that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and (3) the fee set forth in 37 CFR 1.17(q). The statement of lack of deceptive intent may be included in the request and may be signed by a registered attorney or agent. A statement of lack of deceptive intent is not required from any of the original or to be added inventors.
See also discussion below regarding requests filed under 37 CFR 1.48(e).
VII. Pre-AIA 37 CFR 1.48(e)
37 CFR 1.48 (pre-AIA) Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.
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(e) Provisional application—deleting the name or names of the inventor or inventors. If a person or persons were named as an inventor or inventors in a provisional application through error without any deceptive intention on the part of such person or persons, an amendment may be filed in the provisional application deleting the name or names of the person or persons who were erroneously named. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the desired inventorship change;
(2) A statement by the person or persons whose name or names are being deleted that the inventorship error occurred without deceptive intention on the part of such person or persons;
(3) The processing fee set forth in § 1.17(q); and
(4) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).
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Pre-AIA 37 CFR 1.48(e) provides a procedure for deleting the name of a person who was erroneously named as an inventor in a provisional application.
Pre-AIA 37 CFR 1.48(e) requires that the amendment be accompanied by: (1) a request to correct the inventorship that sets forth the desired inventorship change; (2) a statement of lack of deceptive intent by the person whose name is being deleted establishing that the error occurred without deceptive intention on his or her part; (3) the fee set forth in 37 CFR 1.17(q); and (4) the written consent of any assignee.
Under 35 U.S.C. 119(e), a later filed nonprovisional application under 35 U.S.C. 111(a) that is filed within twelve months of an earlier provisional application may claim benefits based on the earlier filed provisional application so long as both applications have at least one inventor in common. An error in not naming or in naming a person as an inventor in a provisional application would not require correction under either pre-AIA 37 CFR 1.48(d) (to add an inventor) or pre-AIA 37 CFR 1.48(e) (to delete an inventor) in the provisional application so long as the nonprovisional application naming the correct inventorship would contain an
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overlap of at least one inventor with the provisional application. The existence of inventorship overlap would prevent the original inventorship error from having any effect upon the ability of the provisional application to serve as a basis for a benefit claim under 35 U.S.C. 119(e) with the U.S. Patent and Trademark Office. If, however, applicant chooses to correct the inventive entity of a provisional application, for example, to permit the provisional application to serve as the basis of a priority claim in a foreign country, pre-AIA 37 CFR 1.48(d) and (e) set forth the procedures for adding one or more actual inventors and for deleting one or more erroneously named inventors respectively. In the situation where an inventor was not named in a provisional application and an inventor was also erroneously named in the same provisional application and correction is desired, a request under pre-AIA 37 CFR 1.48(d) and a request under pre-AIA 37 CFR 1.48(e) would be required. Where an inventorship error in a provisional application is desired to be corrected after expiration of twelve months from the filing date of the provisional application, a request under 37 CFR 1.48(d) and/or 37 CFR 1.48(e) may still be filed with OPAP, which handles requests under pre-AIA 37 CFR 1.48(d) and (e), to correct the inventorship in provisional applications.
VIII. Pre-AIA 37 CFR 1.48(f)
37 CFR 1.48 (pre-AIA) Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.
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(f)(1) Nonprovisional application—filing executed oath/declaration corrects inventorship . If the correct inventor or inventors are not named on filing a nonprovisional application under § 1.53(b) without an executed oath or declaration under § 1.63 by any of the inventors, the first submission of an executed oath or declaration under § 1.63 by any of the inventors during the pendency of the application will act to correct the earlier identification of inventorship. See §§ 1.41(a)(4) and 1.497(d) and (f) for submission of an executed oath or declaration to enter the national stage under 35 U.S.C. 371 naming an inventive entity different from the inventive entity set forth in the international stage.
(2) Provisional application filing cover sheet corrects inventorship. If the correct inventor or inventors are not named on filing a provisional application without a cover sheet under § 1.51(c)(1), the later submission of a cover sheet under § 1.51(c)(1) during the pendency of the application will act to correct the earlier identification of inventorship.
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Pre-AIA 37 CFR 1.48(f)(1) and (f)(2) will act to automatically correct an earlier identification of inventorship in a nonprovisional application by the filing of an initial executed oath or declaration and in a provisional application by the filing of an initial cover sheet. A request and fee is not required for the inventorship correction to occur.
The provision in pre-AIA 37 CFR 1.48(f)(1) for changing the inventorship only applies if an executed oath or declaration under pre-AIA 37 CFR 1.63 has not been submitted by any of the inventors. In this situation, the submission of an executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors is sufficient to correct an earlier identification of inventorship. A first-filed oath or declaration under pre-AIA 37 CFR 1.63 executed by less than all of the inventors initially identified will, under pre-AIA 37 CFR 1.48(f)(1), determine the inventorship in the application. Any subsequent oath or declaration filed by a different inventive entity will not be effective under pre-AIA 37 CFR 1.48(f)(1) to correct the inventorship that was specified in the first-filed oath or declaration.
Pre-AIA 37 CFR 1.48(f)(1) is not applicable for national stage applications filed under 35 U.S.C. 371 where the inventorship has been erroneously named in the international application. Accordingly, if the inventorship set forth in the oath or declaration filed in the national stage application differs from the inventorship specified in the international application, the requirements of pre-AIA 37 CFR 1.497(d) must be satisfied. See MPEP § 1893.01(e).
602.02 New Oath or Substitute for Original [R-11.2013]
Applicant may submit a new inventor’s oath or declaration to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration. See 37 CFR 1.67(a). Some deficiencies or inaccuracies can be corrected with an application data sheet (ADS) in accordance with 37 CFR 1.76. See MPEP § 601.05.
For applications filed on or after September 16, 2012, joint inventors may execute separate oaths or
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declarations in which only the person executing the oath or declaration is identified if an ADS is filed that provides the required inventor information. If such an ADS is not filed, then each oath or declaration must name all of the inventors. See 37 CFR 1.63(a) and (b). Each separate oath or declaration by an inventor should be complete in itself.
For applications filed before September 16, 2012, where neither the original oath or declaration, nor the substitute oath or declaration is complete in itself, but each oath or declaration names all of the inventors and the two taken together give all the required data, no further oath or declaration is needed.
602.03 Office Finds the Inventor’s Oath or Declaration Defective [R-07.2015]
Examiners are no longer required to review inventor’s oaths or declarations that are filed in non-reissue applications. Non-examiner staff will review inventor’s oaths or declarations that are filed before allowance of an application for compliance with 37 CFR 1.63 or 1.64 and may send an informational notice to the applicant regarding any deficiencies. Similarly, non-examiner staff will review inventor’s oaths or declarations at or after allowance of an application for compliance with 37 CFR 1.63 or 1.64 and will send a requirement to the applicant to correct any deficiencies. If an application data sheet has been submitted, applicant may postpone the filing of the inventor’s oath or declaration until the application is in condition for allowance for applications filed on or after September 16, 2012. If an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each inventor has not been submitted at the time of allowance, a notice requiring the inventor’s oath or declaration may be sent with the Notice of Allowability. The required inventor’s oath or declaration must be submitted no later than the date on which the issue fee is paid. See 35 U.S.C. 115(f).
The Office does not check the date of execution of the oath or declaration and will not require a newly executed oath or declaration based on an oath or
declaration being stale (i.e., when the date of execution is more than three months prior to the filing date of the application) or where the date of execution has been omitted. However, applicants are reminded that they have a continuing duty of disclosure under 37 CFR 1.56.
The wording of an oath or declaration should not be amended, altered or changed in any manner after it has been signed. If the wording is not correct or if all of the required affirmations have not been made, or if it has not been properly subscribed to, a new oath or declaration should be submitted. However, in some cases, a deficiency in the oath or declaration can be corrected by a supplemental paper such as an application data sheet (see 37 CFR 1.76 and MPEP § 601.05) and a new oath or declaration is not necessary. See 37 CFR 1.63(b). For example, if the oath does not set forth evidence that the notary was acting within his or her jurisdiction at the time he or she administered the oath, a certificate of the notary that the oath was taken within his or her jurisdiction will correct the deficiency. See MPEP § 602.
The inventor’s oath or declaration must include certain inventor bibliographic information (see MPEP § 602.08(a)), name the inventor or each joint inventor and except as otherwise provided be signed by each inventor (see MPEP § 602.08(b)), and identify the application to which it is directed (see MPEP § 602.08(c)). See MPEP § 602.04 for a defective foreign executed oath.
602.04 Foreign Executed Oath [R-07.2015]
37 CFR 1.66 Statements under oath.
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012. See 37 CFR 1.66 (pre-AIA) for the rule otherwise in effect.]
An oath or affirmation may be made before any person within the United States authorized by law to administer oaths. An oath made in a foreign country may be made before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States, or by an apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. The oath shall be attested in all cases in this and other countries, by the proper official seal of the officer before whom the oath or affirmation
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is made. Such oath or affirmation shall be valid as to execution if it complies with the laws of the State or country where made. When the person before whom the oath or affirmation is made in this country is not provided with a seal, his official character shall be established by competent evidence, as by a certificate from a clerk of a court of record or other proper officer having a seal.
An oath executed in a foreign country must be properly authenticated.
I. HAGUE CONVENTION APOSTILLE
On October 15, 1981, the Hague “Convention Abolishing the Requirement of Legalization for Foreign Public Documents” entered into force between the United States and 28 foreign countries as parties to the Convention. Subsequently, additional countries have become parties to the Convention. The Convention applies to any document submitted to the United States Patent and Trademark Office for filing or recording, which is sworn to or acknowledged by a notary public in any one of the member countries. The Convention abolishes the certification of the authority of the notary public in a member country by a diplomatic or consular officer of the United States and substitutes certification by a special certificate, or apostille, executed by an officer of the member country.
Accordingly, the Office will accept for filing or recording a document sworn to or acknowledged before a notary public in a member country if the document bears, or has appended to it, an apostille certifying the notary’s authority. The requirement for a diplomatic or consular certificate, specified in 37 CFR 1.66, will not apply to a document sworn to or acknowledged before a notary public in a member country if an apostille is used.
A list of the current member countries that are parties to the Hague Convention can be obtained from the Internet website of the Hague Conference on Private International Law at www.hcch.net/index_en.php by selecting “Apostille Section” under “International Legal Co-operation and Litigation” and then selecting “Status table of the Apostille Convention” under “Contracting States.”
The Convention prescribes the following form for the apostille:
Model of Certificate
The certificate will be in the form of a square with sides at least 9 centimeters long.
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II. CERTIFICATE OF DIPLOMATIC OR CONSULAR OFFICER
When the oath is made in a foreign country not a member of the Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents, the authority of any officer other than a diplomatic or consular officer of the United States authorized to administer oaths must be proved by certificate of a diplomatic or consular officer of the
United States. See 37 CFR 1.66. This proof may be through an intermediary, e.g., the consul may certify as to the authority and jurisdiction of another official who, in turn, may certify as to the authority and jurisdiction of the officer before whom the oath is taken.
Where the oath is taken before an officer in a foreign country other than a diplomatic or consular officer
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of the United States and whose authority is not authenticated or accompanied with an apostille certifying the notary’s authority, the application is nevertheless accepted for purposes of examination. Applicant should submit a new oath properly authenticated by an appropriate diplomatic or consular officer, the filing of proper apostille, or a declaration (37 CFR 1.68). The Office does not return improperly authenticated oaths for proper authentication.
602.05 Oath or Declaration in Continuing Applications [R-11.2013]
A copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012, even if the oath or declaration identifies the application number of the prior application. However, if such a copy of the oath or declaration is filed after the filing date of the continuation or divisional application and an application number has been assigned to the continuation or divisional application (see 37 CFR 1.5(a)), the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application. The cover letter should also indicate that the oath or declaration submitted is a copy of the oath or declaration from a prior application to avoid the oath or declaration being incorrectly matched with the prior application file. Furthermore, applicant should also label the copy of the oath or declaration with the application number of the continuation or divisional application in the event that the cover letter is separated from the copy of the oath or declaration.
A copy of the oath or declaration from a prior nonprovisional application may be filed in a continuation or divisional application even if the specification for the continuation or divisional application is different from that of the prior application, in that revisions have been made to clarify the text to incorporate amendments made in the prior application, or to make other changes provided the changes do not constitute new matter relative to the prior application. If the examiner determines that the continuation or divisional application contains new matter relative to the prior
application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.
See MPEP § 602.05(a) for information regarding an oath or declaration in a continuing application filed on or after September 16, 2012. See MPEP § 602.05(b) for information regarding an oath or declaration in a continuing application filed before September 16, 2012.
602.05(a) Oath or Declaration in Continuing Applications Filed On or After September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 602.05(b) for information regarding oath or declaration in a continuing application filed before September 16, 2012.]
For applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64. See 37 CFR 1.63(d)(1). It should be noted that a copy of the inventor’s oath or declaration submitted in a continuing application filed on or after September 16, 2012 must comply with requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012. For example, the inventor’s oath or declaration must include a statement that the application was made or was authorized to be made by the person executing the oath or declaration. Accordingly, a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012.
For continuing applications filed on or after September 16, 2012 under 37 CFR 1.53(b), the inventorship is the inventor or joint inventors
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specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor’s oath or declaration from the earlier-filed application, unless it is accompanied by a signed statement pursuant to 37 CFR 1.33(b) that states the name of each inventor in the continuing application. See 37 CFR 1.63(d)(2). Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with 37 CFR 1.63, except as provided in 37 CFR 1.64. See 37 CFR 1.63(d)(3).
602.05(b) Oath or Declaration in Continuing Applications Filed Before September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 602.05(a) for information regarding oath or declaration in a continuing application filed on or after September 16, 2012.]
A continuation or divisional application filed before September 16, 2012 under 37 CFR 1.53(b) (other than a continuation-in-part (CIP)) may be filed with a copy of the oath or declaration from the prior nonprovisional application. See pre-AIA 37 CFR 1.63(d)(1)(iv).
A continuation or divisional application of a prior application accorded status under pre-AIA 37 CFR 1.47 will be accorded status under pre-AIA 37 CFR 1.47 if a copy of the decision according pre-AIA 37 CFR 1.47 status in the prior application is filed in the continuation or divisional application, unless an oath or declaration signed by all of the inventors is included upon filing the continuation or divisional application. An oath or declaration in an application accorded status under pre-AIA 37 CFR 1.47 is generally not signed by all of the inventors. Accordingly, if a copy of an oath or declaration of a prior application is submitted in a continuation or divisional application filed under 37 CFR 1.53(b) and the copy of the oath or declaration omits the signature of one or more inventors, the Office of Patent Application Processing (OPAP) should send
a “Notice to File Missing Parts” requiring the signature of the nonsigning inventor, unless a copy of the decision according status under pre-AIA 37 CFR 1.47 is also included at the time of filing of the continuation or divisional application. If OPAP mails such a Notice, a copy of the decision according status under pre-AIA 37 CFR 1.47, together with a surcharge under 37 CFR 1.16(f) for its late filing, will be an acceptable reply to the Notice. Alternatively, applicant may submit an oath or declaration signed by the previously nonsigning inventor together with the surcharge set forth in 37 CFR 1.16(f) in reply to the Notice.
If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(b), the continuation or divisional application may either be filed (A) with a copy of an oath or declaration from a prior application and a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application (see pre-AIA 37 CFR 1.63(d)), or (B) with a newly executed oath or declaration naming the correct inventive entity. If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(d) (continued prosecution design application), the request for filing the continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application (see 37 CFR 1.53(d)(4)).
A continuation or divisional application filed under 37 CFR 1.53(b) of a prior application in which a petition (or request) under pre-AIA 37 CFR 1.48 to add an inventor was filed should be filed with a copy of the executed declaration naming the correct inventive entity from the prior application or a newly executed declaration naming the correct inventive entity. A copy of any decision under pre-AIA 37 CFR 1.48 from the prior application is not required
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to be filed in the continuation or divisional application.
602.06 Non-English Oath or Declaration [R-08.2012]
37 CFR 1.69 Foreign language oaths and declarations.
(a) Whenever an individual making an oath or declaration cannot understand English, the oath or declaration must be in a language that such individual can understand and shall state that such individual understands the content of any documents to which the oath or declaration relates.
(b) Unless the text of any oath or declaration in a language other than English is in a form provided by the Patent and Trademark Office or in accordance with PCT Rule 4.17(iv), it must be accompanied by an English translation together with a statement that the translation is accurate, except that in the case of an oath or declaration filed under § 1.63, the translation may be filed in the Office no later than two months from the date applicant is notified to file the translation.
37 CFR 1.69 requires that oaths and declarations be in a language which is understood by the individual making the oath or declaration, i.e., a language which the individual comprehends. If the individual comprehends the English language, he or she should preferably use it. If the individual cannot comprehend the English language, any oath or declaration must be in a language which the individual can comprehend. If an individual uses a language other than English for an oath or declaration, the oath or declaration must include a statement that the individual understands the content of any documents to which the oath or declaration relates. If the documents are in a language the individual cannot comprehend, the documents may be explained to him or her so that he or she is able to understand them.
The Office will accept a single non-English language oath or declaration where there are joint inventors, of which only some understand English but all
understand the non-English language of the oath or declaration.
602.07 Oath or Declaration Filed in United States as a Designated Office [R-08.2012]
See MPEP § 1893.01(e).
602.08 Inventor andApplication Information [R-11.2013]
The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in 37 CFR 1.64. See MPEP § 602.01(a) for the requirements of an inventor’s oath or declaration in an application filed on or after September 16, 2012. See MPEP § 602.01(b) for the requirements of an original oath or declaration in an application filed before September 16, 2012.
The inventor’s oath or declaration must include certain inventor bibliographic information (see MPEP § 602.08(a)), name the inventor or each joint inventor and except as otherwise provided be signed by each inventor (see MPEP § 602.08(b)), and identify the application to which it is directed (see MPEP § 602.08(c)).
602.08(a) Inventor Bibliographic Information [R-07.2015]
I. INVENTOR’S CITIZENSHIP
For applications filed on or after September 16, 2012, the citizenship of the inventor is no longer required by 35 U.S.C. 115 or 37 CFR 1.63.
For nonprovisional applications filed before September 16, 2012, pre-AIA 35 U.S.C. 115 requires the inventor(s) to state his or her citizenship. Where an inventor is not a citizen of any country, a statement to this effect is accepted as satisfying the statutory requirement, but a statement as to citizenship applied for or first papers taken out looking to future citizenship in this (or any other) country does not meet the requirement.
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II. INVENTOR’S RESIDENCE
Each inventor’s place of residence, that is, the city and either state or foreign country, is required to be included in the oath or declaration in a nonprovisional application for compliance with 37 CFR 1.63 unless it is included in an application data sheet (37 CFR 1.76). In the case of an inventor who is in one of the U.S. Armed Services, a statement to that effect is sufficient as to residence. For change of residence, see MPEP § 719.02. Each inventor’s residence must be included on the cover sheet for a provisional application unless it is included in an application data sheet (37 CFR 1.76).
If only a mailing address where the inventor customarily receives mail is provided, the Office will presume that the inventor’s residence is the city and either state or foreign country of the mailing address. If the inventor lives at a location which different from the inventor’s mailing address, the inventor’s residence (city and either state or foreign country) must be included in the inventor’s oath or declaration or an application data sheet.
III. INVENTOR’S MAILING OR POST OFFICE ADDRESS
Each inventor’s mailing or post office address is required to be supplied on the oath or declaration, if not stated in an application data sheet. See 37 CFR 1.63(b), pre-AIA 37 CFR 1.63(c), and 37 CFR 1.76. If the mailing address of any inventor has been omitted, OPAP will notify applicant of the omission and require the omitted mailing address in response to the notice.
The inventor’s mailing address means that address at which he or she customarily receives his or her mail, even if it is not the main mailing address of the inventor. Either the inventor’s home or business address is acceptable as the mailing address. A post office box is also acceptable. The mailing address should include the ZIP Code designation. The object of requiring each inventor’s mailing address is to enable the Office to communicate directly with the inventor if desired; hence, the address of the attorney with instruction to send communications to the inventor in care of the attorney is not sufficient.
In situations where an inventor does not execute the oath or declaration and the inventor is not deceased or legally incapacitated, such as in an application filed on or after September 16, 2012 in which a substitute statement under 37 CFR 1.64 is filed, the inventor’s most recent home address must be given to enable the Office to communicate directly with the inventor as necessary.
602.08(b) Inventor Signature and Name [R-07.2015]
I. SIGNATURE REQUIREMENT - EXECUTION OF INVENTOR’S OATHS OR DECLARATIONS
United States patent applications which have not been prepared and executed in accordance with the requirements of Title 35 of the United States Code and Title 37 of the Code of Federal Regulations may be abandoned. Although the statute and the rules have been in existence for many years, the Office continues to receive a number of applications which have been improperly executed and/or filed. Since the improper execution and/or filing of patent applications can ultimately result in a loss of rights, it is appropriate to emphasize the importance of proper execution and filing.
There is no requirement that a signature be made in any particular manner. See MPEP § 402.03. It is permissible for an applicant to use a title of nobility or other title, such as “Dr.”, in connection with his or her signature. The title will not appear in the printed patent. If applicant signs his or her name using non-English characters, then such a signature will be accepted. If the applicant is unable to write, his or her mark as affixed to the oath or declaration must be attested to by a witness. In the case of the oath, the notary’s signature to the jurat is sufficient to authenticate the mark. See MPEP § 602.
Applications filed through EFS-Web must also contain an oath or declaration personally signed by the inventor.
It is improper for an applicant to sign an oath or declaration which is not attached to or does not identify the application (e.g., a specification and drawings) to which it is directed.
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Attached does not necessarily mean that all the papers must be literally fastened. It is sufficient that the specification, including the claims, and the oath or declaration are physically located together at the time of execution. Physical connection is not required. Copies of declarations are encouraged. See MPEP § 502.01, § 502.02, § 602, and § 602.05(a).
An oath or declaration under 37 CFR 1.63 by each actual inventor must be presented. Each inventor need not execute the same oath or declaration. For nonprovisional international design applications, see also 37 CFR 1.1021(d) and 1.1067. For applications filed before September 16, 2012, each oath or declaration executed by an inventor must contain a complete listing of all inventors so as to clearly indicate what each inventor believes to be the appropriate inventive entity. Where individual declarations are executed, they must be submitted as individual declarations rather than combined into one declaration (by combining the signature pages).
The provisions of 35 U.S.C. 363 for filing an international application under the Patent Cooperation Treaty (PCT) which designates the United States and thereby has the effect of a regularly filed United States national application, except as provided in pre-AIA 35 U.S.C. 102(e), are somewhat different than the provisions of 35 U.S.C. 111. The oath or declaration requirements for an international application before the Patent and Trademark Office are set forth in 35 U.S.C. 371(c)(4) and 37 CFR 1.497.
37 CFR 1.52(c) states that “[i]nterlineation, erasure, cancellation, or other alteration of the application papers may be made before or after the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers. A substitute specification (§ 1.125) may be required if the application papers do not comply with paragraphs (a) and (b) of this section.”
An inventor is not required to re-execute a new inventor’s oath or declaration after alteration of the application papers provided that the changes are minor, for example, correction of typographical errors, grammatical problems, and clarifying
sentences. If the changes would amount to the introduction of new matter had the change been made to a filed application, however, then the inventor should execute a new oath or declaration after reviewing the amended application. The rule permits alterations to the specification without the inventor re-executing an oath or declaration only where the statements in the executed declaration remain applicable. Additionally, an inventor must before executing the oath or declaration (i) review and understand the contents of the application; and (ii) be aware of his or her duty of disclosure. See 37 CFR 1.63(c). If the changes made to the specification before an application is filed result in substantial alterations to the application, then an inventor may not understand the contents of the application or be aware of his/her duty to disclose information relating to the substantial alteration.
The signing and execution by the applicant of oaths or declarations in certain continuation or divisional applications may be omitted. See MPEP § 201.06, § 201.07, and § 602.05(a). For the signature on a reply, see MPEP §§ 714.01(a), 714.01(c), and 714.01(d).
II. SIGNATURE REQUIREMENT - EXECUTION OF OATH OR DECLARATION ON BEHALF OF INVENTOR
A. For applications filed on or after September 16, 2012
The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided under 37 CFR 1.64. Only inventors can execute an oath or declaration under 37 CFR 1.63. The applicant for patent may execute a substitute statement under 37 CFR 1.64 in lieu of an oath or declaration under the permitted circumstances. For information on the execution of a substitute statement, see MPEP § 604.
B. For applications filed before September 16, 2012
The oath or declaration required by pre-AIA 35 U.S.C. 115 must be signed by all of the actual inventors, except under limited circumstances. 35 U.S.C. 116 provides that joint inventors can sign on
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behalf of an inventor who cannot be reached or refuses to join. See MPEP § 409.03(a). 35 U.S.C. 117 provides that the legal representative of a deceased or incapacitated inventor can sign on behalf of the inventor. If a legal representative executes an oath or declaration on behalf of a deceased inventor, the legal representative must state that the person is a legal representative and provide the citizenship, residence, and mailing address of the legal representative. See pre-AIA 37 CFR 1.64 and MPEP § 409.01(b). Pre-AIA 35 U.S.C. 118 provides that a party with proprietary interest in the invention claimed in an application can sign on behalf of the inventor, if the inventor cannot be reached or refuses to join in the filing of the application. See MPEP § 409.03(b) and § 409.03(f). The oath or declaration may not be signed by an attorney on behalf of the inventor, even if the attorney has been given a power of attorney to do so. Opinion of Hon. Edward Bates, 10 Op. Atty. Gen. 137 (1861). See also Staeger v. Commissioner of Patents and Trademarks, 189 USPQ 272 (D.D.C. 1976) and In re Striker, 182 USPQ 507 (PTO Solicitor 1973) (In each case, an oath or declaration signed by the attorney on behalf of the inventor was defective because the attorney did not have a proprietary interest in the invention.).
III. INVENTOR’S NAME
For nonprovisional applications filed on or after September 16, 2012, 37 CFR 1.63 requires the identification of the inventor by his or her legal name. 37 CFR 1.63(a)(1) simplifies the requirement for the inventor’s name to be his or her legal name and no longer refers to a family or given name. The requirement for an inventor’s legal name is sufficient, given that individuals do not always have both a family name and a given name, or have varying understandings of what a “given” name requires.
For nonprovisional applications filed before September 16, 2012, pre-AIA 37 CFR 1.63(a)(2) requires that each inventor be identified by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial in the oath or declaration. For example, if the applicant's full name is “John Paul Doe,” either “John P. Doe” or “J. Paul Doe” is acceptable. A situation may arise where an inventor’s
full given name is a singular letter, or is a plurality of singular letters. For example, an inventor’s full given name may be “J. Doe” or “J.P. Doe,” i.e., the “J” and the “P” are not initials. In such a situation, identifying the inventor by his or her family name and the singular letter(s) is acceptable, since that is the inventor’s full given name. In order to avoid an objection under 37 CFR 1.63(a)(2), applicant should point out in the oath or declaration that the singular lettering set forth is the inventor’s given name. A statement to this effect, accompanying the filing of the oath or declaration, will also be acceptable.
A. Correction of Name
In an application where the name is typewritten with a middle name or initial, but the signature does not contain such middle name or initial, the typewritten version of the name will be used as the inventor’s name for the purposes of the application and any patent that may issue from the application. No objection should be made in this instance, since the inventor’s signature may differ from his or her legal name. Effective September 16, 2012, any request to have the name of the inventor or a joint inventor in a nonprovisional application corrected or updated, including correction of a typographical or transliteration error in the spelling of an inventor’s name, must be by way of a request under 37 CFR 1.48(f). A request under 37 CFR 1.48(f) must include (1) an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name, and (2) the processing fee set forth in 37 CFR 1.17(i). Requests under 37 CFR 1.48(f) filed on or after September 16, 2012, are treated by the Office of Patent Application Processing (OPAP). If the request complies with 37 CFR 1.48(f), OPAP will correct the Office records and send a corrected filing receipt.
If the error in the inventor’s name is not detected until after the payment of the issue fee, because amendments are not permitted after the payment of the issue fee, either (A) the application must be withdrawn from issue under 37 CFR 1.313(c)(2) and a request under 37 CFR 1.48(f) to correct the inventor’s name submitted with a request for continued examination (RCE) under 37 CFR 1.114, or (B) a certificate of correction, along with a petition under 37 CFR 1.182, must be filed after the
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patent issues requesting correction of inventor’s name.
Effective September 16, 2012, any request to correct or change inventorship, or correct or update the name of the inventor or a joint inventor, in a provisional application must be made pursuant to 37 CFR 1.48(d). 37 CFR 1.48(d) requires a request signed by a party set forth in 37 CFR 1.33(b), that identifies each inventor by his or her legal name, and the processing fee set forth in 37 CFR 1.17(q). OPAP treats requests under 37 CFR 1.48(d) and will correct the Office records and send a corrected filing receipt if the request complies with 37 CFR 1.48(d).
B. Change of Name
Effective September 16, 2012, when an inventor’s name has been changed after the nonprovisional application has been filed and the inventor desires to change his or her name on the application, he or she must submit a request under 37 CFR 1.48(f), including an application data sheet in accordance with 37 CFR 1.76, that identifies each inventor by his or her legal name and the processing fee set forth in 37 CFR 1.17(i). The corrected application data sheet must identify the information being changed as required by 37 CFR 1.76(c)(2). The Office of PatentApplication Processing (OPAP) treats requests under 37 CFR 1.48(f) and will correct the Office records and send a corrected filing receipt if the request complies with 37 CFR 1.48(f).Since amendments are not permitted after the payment of the issue fee (37 CFR 1.312), a request under 37 CFR 1.48(f) to change the name of the inventor cannot be granted if filed after the payment of the issue fee.
If the application is assigned, applicant should submit a corrected assignment document along with a cover sheet and the recording fee as set forth in 37 CFR 1.21(h) to theAssignment Division for a change in the assignment record.
C. Order of Joint Inventor Names
For applications filed on or after September 16, 2012, the order of names of joint patentees in the heading of the patent is taken from the order in which the names appear in the application data sheet
if submitted before or with the inventor’s oath or declaration. For applications filed before September 16, 2012, the order of names of joint patentees in the heading of the patent is taken from the order in which the typewritten names appear in the original oath or declaration. Care should therefore be exercised in selecting the preferred order of the typewritten names of the joint inventors, before filing, as requests for subsequent shifting of the names would entail changing numerous records in the Office.
Because the particular order in which the names appear is of no consequence insofar as the legal rights of the joint inventors are concerned, no changes will be made except when a request under 37 CFR 1.48(f) (filed on or after September 16, 2012) is granted. It is suggested that all typewritten and signed names appearing in the application papers should be in the same order as the typewritten names in the oath or declaration. The Office of Patent Application Processing (OPAP) treats requests under 37 CFR 1.48(f) and if the request is granted OPAP will change the order of the names in the Office computer records and send a corrected filing receipt. Because a change to the order of names of joint inventors is an amendment to the application and amendments are not permitted after the payment of the issue fee (37 CFR 1.312), a request under 37 CFR 1.48(f) to change the order of the names of joint inventors cannot be granted if filed after the payment of the issue fee.
In those instances where the joint inventors file separate oaths or declarations in an application filed before September 16, 2012, the order of names is taken from the order in which the several oaths or declarations appear in the application papers unless a different order is requested at the time of filing or a request under 37 CFR 1.48(f) is granted. For applications filed on or after September 16, 2012, the order of inventors is taken from an application data sheet in accordance with 37 CFR 1.76 if filed before or with the inventor’s oath or declaration unless a request under 37 CFR 1.48(f) is granted. A request under 37 CFR 1.48(f) may be filed on or after September 16, 2012 to change the order of the names of joint inventors in a nonprovisional
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application regardless of the filing date of the application.
602.08(c) Identification of Application [R-07.2015]
37 CFR 1.63 requires that an oath or declaration identify the application (e.g., specification and drawings) to which it is directed.
The following combination of information supplied in an oath or declaration filed on the application filing date with a specification are acceptable as minimums for identifying the application and compliance with any one of the items below will be accepted as complying with the identification requirement of 37 CFR 1.63:
(A) name of inventor(s), and reference to an attached specification or application which is both attached to the oath or declaration at the time of execution and submitted with the oath or declaration on filing;
(B) name of inventor(s), and attorney docket number which was on the specification as filed; or
(C) name of inventor(s), and title of the invention which was on the specification as filed.
Filing dates are granted on applications filed without an inventor’s oath or declaration in compliance with 37 CFR 1.63. The following combinations of information supplied in an oath or declaration filed after the filing date of the application are acceptable as minimums for identifying the application and compliance with any one of the items below will be accepted as complying with the identification requirement of 37 CFR 1.63:
(A) application number (consisting of the series code and the serial number, e.g., 08/123,456);
(B) serial number and filing date;
(C) international application number of an international application;
(D) international registration number of an international design application;
(E) attorney docket number which was on the specification as filed;
(F) title of the invention which was on the specification as filed and reference to an attached specification or application which is both attached to the oath or declaration at the time of execution and submitted with the oath or declaration; or
(G) title of the invention which was on the specification as filed and accompanied by a cover letter accurately identifying the application for which it was intended by either the application number (consisting of the series code and the serial number, e.g., 08/123,456), or serial number and filing date. Absent any statement(s) to the contrary, it will be presumed that the application filed in the USPTO is the application which the inventor(s) executed by signing the oath or declaration.
Any specification that is filed attached to an oath or declaration on a date later than the application filing date will not be compared with the specification submitted on filing. Absent any statement(s) to the contrary, the “attached” specification will be presumed to be a copy of the specification and any amendments thereto, which were filed in the USPTO in order to obtain a filing date for the application.
Any variance from the above guidelines will only be considered upon the filing of a petition for waiver of the rules under 37 CFR 1.183 accompanied by a petition fee (37 CFR 1.17(f)).
Further an oath or declaration attached to a cover letter referencing an incorrect application may not become associated with the correct application and, therefore, could result in the abandonment of the correct application.
See MPEP § 1896 for the identification requirements for a declaration filed in a U.S. national stage application filed under 35 U.S.C. 371.
602.09 Joint Inventors [R-07.2015]
[Editor Note: Applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 116 (pre-AIA) for the law otherwise applicable.]
35 U.S.C. 116 Inventors.
(a) JOINT INVENTIONS.—When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided
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in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
(b) OMITTED INVENTOR.—If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.
(c) CORRECTION OF ERRORS IN APPLICATION.—Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, the Director may permit the application to be amended accordingly, under such terms as he prescribes.
35 U.S.C. 116 (pre-AIA) Inventors.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 116 for the law otherwise applicable.]
When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
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37 CFR 1.45 Joint inventors.
(b) Inventors may apply for a patent jointly even though:
(1) They did not physically work together or at the same time;
(2) Each inventor did not make the same type or amount of contribution; or
(3) Each inventor did not make a contribution to the subject matter of every claim of the application.
(c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.
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Because provisional applications may be filed without claims, 37 CFR 1.45(c) states that each inventor named in a joint provisional application must have made a contribution to the subject matter disclosed in the application.
35 U.S.C. 116 recognizes the realities of modern team research. A research project may include many inventions. Some inventions may have contributions made by individuals who are not involved in other, related inventions.
35 U.S.C. 116 (and 37 CFR 1.45) allows inventors to apply for a patent jointly even though
(A) they did not physically work together or at the same time,
(B) each did not make the same type or amount of contribution, or
(C) each did not make a contribution to the subject matter of every claim of the patent.
The significant features of 35 U.S.C. 116 are the following:
(A) The joint inventors do not have to separately “sign the application,” but only need apply for the patent jointly and make the required oath or declaration by signing the same.
(B) Inventors may apply for a patent jointly even though “they did not physically work together or at the same time,” thereby clarifying (a) that it is not necessary that the inventors physically work together on a project, and (b) that one inventor may “take a step at one time, the other an approach at different times.” ( Monsanto Co. v. Kamp, 269 F. Supp. 818, 824, 154 USPQ 259, 262 (D.D.C. 1967)). While 35 U.S.C. 116 does not require joint inventors to physically work together at the same time, see Kimberly-Clark Corp. v. Procter & Gamble Distributing Co., 973 F.2d 911, 916-17, 23 USPQ 2d 1921, 1925-26 (Fed. Cir. 1992) (some quantum of collaboration or connection is required in order for persons to be “joint” inventors under 35 U.S.C. 116, and thus individuals who are completely ignorant of what each other has done until years after their individual independent efforts cannot be considered joint inventors).
(C) Inventors may apply for a patent jointly even though “each did not make the same type or amount
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of contribution,” thereby clarifying the “fact that each of the inventors play a different role and that the contribution of one may not be as great as that of another does not detract from the fact that the invention is joint, if each makes some original contribution, though partial, to the final solution of the problem.” Monsanto Co. v. Kamp, 269 F. Supp. at 824, 154 USPQ at 262.
(D) Inventors may apply for a patent jointly even though “each did not make a contribution to the subject matter of every claim of the patent.”
(E) Inventors may apply for a patent jointly as long as each inventor made a contribution, i.e., was an inventor or joint inventor, of the subject matter of at least one claim of the patent; there is no requirement that all the inventors be joint inventors of the subject matter of any one claim.
(F) If an application by joint inventors includes more than one independent and distinct invention, restriction may be required with the possible result of a necessity to change the inventorship named in the application if the elected invention was not the invention of all the originally named inventors.
(G) 35 U.S.C. 116 increases the likelihood that different claims of an application or patent may have different dates of invention even though the patent covers only one independent and distinct invention within the meaning of 35 U.S.C. 121. When necessary, the U.S. Patent and Trademark Office or a court may inquire of the patent applicant or owner the inventorship or ownership of each claimed invention on its effective filing date, or on its date of invention, as applicable. 37 CFR 1.110. Pending nonprovisional applications will be permitted to be amended by complying with 37 CFR 1.48 to add claims to inventions by inventors not named when the application was filed as long as such inventions were disclosed in the application as filed since 37 CFR 1.48 permits correction of inventorship where the correct inventor or inventors are not named in an application for patent.
Applicants are responsible for correcting, and are required to correct, the inventorship in compliance with 37 CFR 1.48 when the application is amended to change the claims so that one (or more) of the named inventors is no longer an inventor of the subject matter of a claim remaining in the application. Requests under 37 CFR 1.48 filed on
or after September 16, 2012 (regardless of the application filing date) are treated by OPAP. If the request is granted, OPAP will correct the Office records and send a corrected filing receipt.
Like other patent applications, jointly filed applications are subject to the requirements of 35 U.S.C. 121 that an application be directed to only a single invention. If more than one invention is included in the application, the examiner may require the application to be restricted to one of the inventions. In such a case, a “divisional” application complying with 35 U.S.C. 120 would be entitled to the benefit of the earlier filing date of the original application. In requiring restriction in an application filed by joint inventors, the examiner should remind applicants of the necessity to correct the inventorship pursuant to 37 CFR 1.48 if an invention is elected and the claims to the invention of one or more inventors are canceled.
The examiner should not inquire of the patent applicant concerning the inventors and the invention dates for the subject matter of the various claims until it becomes necessary to do so in order to properly examine the application. If an application is filed with joint inventors, the examiner should assume that the subject matter of the various claims was commonly owned at the time the inventions covered therein were made, unless there is evidence to the contrary.
603 Supplemental Oath or Declaration [R-07.2015]
I. APPLICATIONS FILED ON OR AFTER SEPTEMBER 16, 2012
[Editor Note: See subsection II., below, for information regarding supplemental oath or declaration in an application filed before September 16, 2012.]
37 CFR 1.67 Supplemental oath or declaration.
(a) The applicant may submit an inventor's oath or declaration meeting the requirements of § 1.63, § 1.64, or § 1.162 to correct any deficiencies or inaccuracies present in an earlier-filed inventor's oath or declaration. Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(b) in an oath or declaration may be corrected with an
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application data sheet in accordance with § 1.76, except that any correction of inventorship must be pursuant to § 1.48.
(b) A supplemental inventor's oath or declaration under this section must be executed by the person whose inventor’s oath or declaration is being withdrawn, replaced, or otherwise corrected.
(c) The Office will not require a person who has executed an oath or declaration in compliance with 35 U.S.C. 115 and § 1.63 or 1.162 for an application to provide an additional inventor's oath or declaration for the application.
(d) No new matter may be introduced into a nonprovisional application after its filing date even if an inventor's oath or declaration is filed to correct deficiencies or inaccuracies present in the earlier-filed inventor's oath or declaration.
37 CFR 1.67 provides for a supplemental inventor’s oath or declaration (which includes oaths, declarations, assignment-statements under 37 CFR 1.63(e), and substitute statements under 37 CFR 1.64) under 35 U.S.C. 115(h).
37 CFR 1.67(a) provides that the applicant may submit an inventor’s oath or declaration meeting the requirements of 37 CFR 1.63, 1.64, or 1.162 to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration. See 35 U.S.C. 115(h)(1). 37 CFR 1.67(a) also provides that deficiencies or inaccuracies due to the failure to meet the requirements of 37 CFR 1.63(b) in an oath or declaration may be corrected with an application data sheet in accordance with 37 CFR 1.76, except that any correction of inventorship must be pursuant to 37 CFR 1.48. Thus, an error in an inventor’s mailing address may be corrected with an application data sheet in accordance with 37 CFR 1.76. See 37 CFR 1.76(c). Any request to correct or change inventorship in a nonprovisional application must be by way of a request under 37 CFR 1.48(a). Any request to correct or update the name of an inventor in a nonprovisional application must be by way of a request under 37 CFR 1.48(f).
37 CFR 1.67(b) provides that a supplemental inventor’s oath or declaration under 37 CFR 1.67 must be executed by the person whose inventor’s oath or declaration is being withdrawn, replaced, or otherwise corrected.
37 CFR 1.67(c) provides that the Office will not require a person who has executed an oath or declaration in compliance with 35 U.S.C. 115 and 37 CFR 1.63 or 1.162 for an application to provide
an additional inventor’s oath or declaration for the application. See 35 U.S.C. 115(h)(2).
37 CFR 1.67(d) contains the provision of former 37 CFR 1.67(b) that no new matter may be introduced into a nonprovisional application after its filing date even if an inventor’s oath or declaration is filed to correct deficiencies or inaccuracies present in the earlier-filed oath or declaration.
II. APPLICATIONS FILED BEFORE SEPTEMBER 16, 2012
[Editor Note: See subsection I., above, for information regarding supplemental oath or declaration in an application filed on or after September 16, 2012.]
37 CFR 1.67 (pre-AIA) Supplemental oath or declaration.
(a) The Office may require, or inventors and applicants may submit, a supplemental oath or declaration meeting the requirements of § 1.63 or § 1.162 to correct any deficiencies or inaccuracies present in the earlier filed oath or declaration.
(1) Deficiencies or inaccuracies relating to all the inventors or applicants (§§ 1.42, 1.43, or § 1.47) may be corrected with a supplemental oath or declaration signed by all the inventors or applicants.
(2) Deficiencies or inaccuracies relating to fewer than all of the inventor(s) or applicant(s) (§§ 1.42, 1.43 or § 1.47) may be corrected with a supplemental oath or declaration identifying the entire inventive entity but signed only by the inventor(s) or applicant(s) to whom the error or deficiency relates.
(3) Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(c) (e.g ., to correct the omission of a mailing address of an inventor) in an oath or declaration may be corrected with an application data sheet in accordance with § 1.76.
(4) Submission of a supplemental oath or declaration or an application data sheet (§ 1.76), as opposed to who must sign the supplemental oath or declaration or an application data sheet, is governed by § 1.33(a)(2) and paragraph (b) of this section.
(b) A supplemental oath or declaration meeting the requirements of § 1.63 must be filed when a claim is presented for matter originally shown or described but not substantially embraced in the statement of invention or claims originally presented or when an oath or declaration submitted in accordance with § 1.53(f) after the filing of the specification and any required drawings specifically and improperly refers to an amendment which includes new matter. No new matter may be introduced into a nonprovisional application after its filing date even if a supplemental oath or declaration is filed. In proper situations, the oath or declaration here required may be made on information and belief by an applicant other than the inventor.
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(c) [Reserved]
Pre-AIA 37 CFR 1.67 requires in the supplemental oath or declaration substantially all the data called for in pre-AIA 37 CFR 1.63 for the original oath or declaration. As to the purpose to be served by the supplemental oath or declaration, the examiner should bear in mind that it cannot be availed of to introduce new matter into an application.
Deficiencies or inaccuracies in an oath or declaration may be corrected by a supplemental oath or declaration. The supplemental oath or declaration must (1) identify the entire inventive entity, and (2) be signed by all the inventors when the correction relates to all the inventors or applicants (pre-AIA 37 CFR 1.42, 1.43, or 1.47), or by only those inventor(s) or applicants (pre-AIA 37 CFR 1.42, 1.43, or 1.47) to whom the corrections relates. See pre-AIA 37 CFR 1.67(a). A deficiency or inaccuracy relating to information required by pre-AIA 37 CFR 1.63(c) may also be corrected with an application data sheet (pre-AIA 37 CFR 1.67(a)(3)). The following examples illustrate how certain deficiencies or inaccuracies in an oath or declaration may be corrected:
Example 1: An application was filed with a declaration under pre-AIA 37 CFR 1.63 executed by inventors A, B, and C. If it is later determined that the citizenship of inventor C was in error, a supplemental declaration identifying inventors A, B, and C may be signed by inventor C alone correcting C’s citizenship.
Example 2: An application was filed with a declaration under pre-AIA 37 CFR 1.63 executed by inventors A, B, and C. If it is later determined that the duty to disclose clause was omitted, a supplemental declaration identifying inventors A, B, and C must be signed by inventors A, B, and C. If separate declarations had been executed by each of the inventors and the duty to disclose clause had been omitted only in the declaration by inventor B, then only inventor B would need to execute a supplemental declaration identifying the entire inventive entity.
Example 3: An application was filed with a declaration under pre-AIA 37 CFR 1.63 executed
by inventors A, and B, and the legal representative of deceased inventor C. It is later determined that an error was made in the citizenship of deceased inventor C. A supplemental declaration identifying A, B, and C as the inventors would be required to be signed by the legal representative of deceased inventor C alone correcting C’s citizenship.
Example 4: An application was filed with a declaration under pre-AIA 37 CFR 1.63 executed by inventors A and B. If it is later determined that an error exists in the mailing address of inventor B, the mailing address of inventor B may be corrected by a supplemental declaration identifying the entire inventive entity and signed by inventor B alone, or an application data sheet under 37 CFR 1.76 containing only a change in inventor B’s mailing address.
When an inventor who executed the original declaration is refusing or cannot be found to execute a required supplemental declaration, the requirement for that inventor to sign the supplemental declaration may be suspended or waived in accordance with 37 CFR 1.183. All available joint inventor(s) must sign the supplemental declaration on behalf of themselves, if appropriate, and on behalf of the nonsigning inventor. See MPEP § 409.03(a). If there are no joint inventor(s), then the party with sufficient proprietary interest must sign the supplemental declaration on behalf of the nonsigning inventor. See MPEP § 409.03(b).
603.01 Supplemental Oath or Declaration Filed After Allowance [R-11.2013]
Supplemental oaths and declarations covering the claims in the application may be filed after allowance as a matter of right. When received they will be placed in the file by the Office of Data Management, but their receipt will not be acknowledged to the party filing them. They should not be filed or considered as amendments under 37 CFR 1.312,
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since they make no change in the wording of the papers on file. See MPEP § 714.16.
604 Substitute Statements [R-07.2015]
[Editor Note: This MPEP section is only applicable to patent applications filed on or after September 16, 2012.]
37 CFR 1.64 Substitute statement in lieu of an oath or declaration.
(a) An applicant under § 1.43, 1.45 or 1.46 may execute a substitute statement in lieu of an oath or declaration under § 1.63 if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration under § 1.63, or cannot be found or reached after diligent effort.
(b) A substitute statement under this section must:
(1) Comply with the requirements of § 1.63(a), identifying the inventor or joint inventor with respect to whom a substitute statement in lieu of an oath or declaration is executed, and stating upon information and belief the facts which such inventor is required to state;
(2) Identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor with respect to whom the substitute statement is executed, and unless such information is supplied in an application data sheet in accordance with § 1.76, the residence and mailing address of the person signing the substitute statement;
(3) Identify the circumstances permitting the person to execute the substitute statement in lieu of an oath or declaration under § 1.63, namely whether the inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration under § 1.63; and
(4) Unless the following information is supplied in an application data sheet in accordance with § 1.76, also identify:
(i) Each inventor by his or her legal name; and
(ii) The last known mailing address where the inventor customarily receives mail, and last known residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor who is not deceased or under a legal incapacity.
(c) A person may not execute a substitute statement provided for in this section for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.
(d) Any reference to an inventor's oath or declaration includes a substitute statement provided for in this section.
(e) A substitute statement under this section must contain an acknowledgment that any willful false statement made in
such statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.
(f) A nonsigning inventor or legal representative may subsequently join in the application by submitting an oath or declaration under § 1.63. The submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under § 1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.
37 CFR 1.64 implements the substitute statement provisions of 35 U.S.C. 115(d) and applies to applications filed on or after September 16, 2012.
37 CFR 1.64(a) provides that an applicant under 37 CFR 1.43, 1.45 or 1.46 may execute a substitute statement in lieu of an oath or declaration under 37 CFR 1.63 if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration under 37 CFR 1.63, or cannot be found or reached after diligent effort. Thus, the following applicant entities may sign a substitute statement on behalf of an inventor when such a statement is permitted in a patent application:
(i) the inventor’s legal representative under 37 CFR 1.43, where the inventor is deceased or legally incapacitated;
(ii) the other joint inventors under 37 CFR 1.45, where the inventor refuses to execute the oath or declaration or cannot be found or reached after diligent effort;
(iii) an applicant under 37 CFR 1.46 who is the assignee or party to whom the inventor is under an obligation to assign, where the inventor is deceased, legally incapacitated, refuses to execute the oath or declaration, or cannot be found or reached after diligent effort; or
(iv) an applicant under 37 CFR 1.46 who is a party who otherwise shows a sufficient proprietary interest in the claimed invention under 37 CFR 1.46(b), where the inventor is deceased, legally incapacitated, refuses to sign the declaration or cannot be reached or located after diligent effort.
A non-inventor applicant need not submit proof of the permitted circumstance to file a substitute statement (e.g., inventor’s death certificate to establish that a named inventor is deceased). However, where the permitted circumstance identified in accordance with 37 CFR 1.64(b)(3) is
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other than the inventor’s death or legal incapacity, the inventor must have refused to execute the oath or declaration, or applicant must have exercised diligent effort to find or reach the inventor. Though proof is not required to be submitted to the Office, proof of attempts to secure the inventor’s signature should be kept in applicant’s file. There is no change to what is considered a good faith attempt to contact an inventor and what constitutes a refusal to sign.
A substitute statement under 37 CFR 1.64 must: (1) comply with the requirements of 37 CFR 1.63(a), identifying the inventor or joint inventor with respect to whom a substitute statement in lieu of an oath or declaration is executed, and stating upon information and belief the facts which such inventor is required to state; (2) identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor with respect to whom the substitute statement is executed, and unless such information is supplied in an application data sheet in accordance with 37 CFR 1.76, the residence and mailing address of the person signing the substitute statement; and (3) identify the circumstances permitting the person to execute the substitute statement, namely whether the inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration under 37 CFR 1.63. For nonprovisional international design applications, the requirement in 37 CFR 1.64(b)(2) to identify the residence and mailing address of the person signing the substitute statement will be considered satisfied by the presentation of such information in the international design application prior to international registration. See 37 CFR 1.1021(d)(3).
Where an assignee executes a substitute statement, the assignee must supply his/her residence and mailing address. If the assignee is a juristic entity,
the residence and mailing address of the juristic entity should be used. Additionally, if the assignee is a juristic entity, the applicant name and the title of the person executing the substitute statement must be included. In addition, unless such information is supplied in an application data sheet in accordance with 37 CFR 1.76, or in an international design application prior to registration (see 37 CFR 1.1021(d)(3)), the substitute statement must also identify: (1) each inventor by his or her legal name; and (2) the last known mailing address where the inventor customarily receives mail, and last known residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor who is not deceased or under a legal incapacity.
A non-inventor applicant is not required to state in the substitute statement that he/she has reviewed and understands the contents of the application, including the claims. Nevertheless, it should be noted that a person may not execute a substitute statement under 37 CFR 1.64 unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in 37 CFR 1.56. See 37 CFR 1.64(c). Any reference to an inventor’s oath or declaration also includes a substitute statement as provided for in 37 CFR 1.64.
A substitute statement under 37 CFR 1.64 must contain an acknowledgement that any willful false statement made in such statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.
A nonsigning inventor may subsequently join in the application by submitting an oath or declaration under 37 CFR 1.63.
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605 Applicant [R-11.2013]
Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor. See MPEP § 605.01 for information regarding the applicant in applications filed on or after September 16, 2012.
For applications filed before September 16, 2012, a person to whom the inventor assigned an invention could file and prosecute an application for patent, but the inventor is considered the applicant. See MPEP § 605.02 for information regarding the applicant in applications filed before September 16, 2012.
605.01 Applicant for Application filed on or after September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 605.02 for information regarding the applicant in applications filed before September 16, 2012.]
The owner or assignee of a patent property can take action in a patent application as the applicant. The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom in the absence of an assignment. 37 CFR 3.73. An assignee who is not the original applicant must become the applicant under 37 CFR 1.46 in order to request or take action in a patent application. See MPEP § 325.
I. DEFINITION OF APPLICANT
37 CFR 1.42 Applicant for patent.
(a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.
(b) If a person is applying for a patent as provided in § 1.46, the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and not the inventor.
(c) If fewer than all joint inventors are applying for a patent as provided in § 1.45, the phrase "the applicant" means the joint inventors who are applying for the patent without the omitted inventor(s).
(d) Any person having authority may deliver an application and fees to the Office on behalf of the applicant. However, an oath or declaration, or substitute statement in lieu of an oath or declaration, may be executed only in accordance with § 1.63 or 1.64 , a correspondence address may be provided only in accordance with § 1.33(a), and amendments and other papers must be signed in accordance with § 1.33(b).
(e) The Office may require additional information where there is a question concerning ownership or interest in an application, and a showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.
37 CFR 1.43 Application for patent by a legal representative of a deceased or legally incapacitated inventor.
If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
37 CFR 1.45 Application for patent by joint inventors.
(a) Joint inventors must apply for a patent jointly, and each must make an inventor's oath or declaration as required by § 1.63, except as provided for in § 1.64. If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See § 1.64 concerning the execution of a substitute statement by the other joint inventor or inventors in lieu of an oath or declaration.
(b) Inventors may apply for a patent jointly even though:
(1) They did not physically work together or at the same time;
(2) Each inventor did not make the same type or amount of contribution; or
(3) Each inventor did not make a contribution to the subject matter of every claim of the application.
(c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.
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37 CFR 1.46 Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012. See 37 CFR 1.46 (pre-AIA) for the rule otherwise in effect.]
(a) A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
(b) If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. If an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under paragraph (a) of this section, the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).
(1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership ( e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
(2) If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including:
(i) The fee set forth in § 1.17(g);
(ii) A showing that such person has sufficient proprietary interest in the matter; and
(iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
(c) Any request to correct or update the name of the applicant after an applicant has been specified under paragraph (b) of this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7)). Any request to change the applicant after an original applicant has been specified under paragraph (b) of this section must include an application data sheet under § 1.76 specifying the applicant in
the applicant information section (§ 1.76(b)(7)) and comply with §§ 3.71 and 3.73 of this title.
(1) Correction or update in the name of the applicant. Any request to correct or update the name of the applicant after an applicant under this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7)). in accordance with § 1.76(c)(2). A change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application.
(2) Change in the applicant. Any request to change the applicant under this section after an original applicant has been specified must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7)) and comply with §§ 3.71 and 3.73 of this title.
(d) Even if the whole or a part interest in the invention or in the patent to be issued is assigned or obligated to be assigned, an oath or declaration must be executed by the actual inventor or each actual joint inventor, except as provided for in § 1.64. See § 1.64 concerning the execution of a substitute statement by an assignee, person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter.
(e) If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81. Where a real party in interest has filed an application under § 1.46, the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest.
(f) The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette.
37 CFR 1.42 defines who is the applicant for a patent. The word “applicant” when used in title 37 refers to the inventor or all joint inventors, or to the person applying for a patent as provided in 37 CFR 1.43, 1.45, or 1.46. If a person is applying for a patent as provided in 37 CFR 1.46, the word “applicant” refers to the assignee, the person to whom the inventor is under an obligation to assign, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for the patent under 37 CFR 1.46 and not the inventor. If fewer than all joint inventors are applying for the patent as provided in 37 CFR 1.45, the phrase “the applicant” means the joint inventors who are applying for the patent without the omitted inventor(s).
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37 CFR 1.43 provides that if an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. See also MPEP § 409.01(a).
37 CFR 1.45 pertains to an application filed by joint inventors. Joint inventors must apply for a patent jointly and each joint inventor must make the inventor’s oath or declaration required by 37 CFR 1.63, except as provided for in 37 CFR 1.64. See 35 U.S.C. 116(a) and 37 CFR 1.45(a). If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See 35 U.S.C. 116(b) and 37 CFR 1.45(a). See also MPEP § 409.02.
37 CFR 1.46 provides for the filing of an application for patent by an assignee, a person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter under 35 U.S.C. 118. If an application under 35 U.S.C. 111 is made by a person other than the inventor under 37 CFR 1.46(a), the application must contain an application data sheet under 37 CFR 1.76 specifying in the applicant information section the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter. While identifying the party making the application for patent (the applicant) in an application data sheet is not a filing date requirement, a delay in naming the applicant under 37 CFR 1.46 may cause it to appear that applicant is the inventor and thus requiring the party to file a request under 37 CFR 1.46(c) to become the applicant, which requires compliance with 37 CFR 3.71 and 3.73. See MPEP § 325. If an assignee is filing an application under 37 CFR 1.46, but the assignee is not the assignee of the entire right, title and interest in the application, then the assignee would need to be named as the applicant under 37 CFR 1.46 together with the other party who has an ownership interest. For example, if there are two joint inventors, and one inventor has assigned his rights in the invention to the assignee, but the other inventor has not assigned his rights in the invention and is under no obligation to assign his rights, the assignee and the other inventor should
be identified as the applicant in the applicant information section of the application data sheet. See 37 CFR 3.71.
If the applicant is the assignee or person to whom the inventor is under an obligation to assign the invention, the documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) should be recorded as provided for in 37 CFR part 3 no later than the date the issue fee is paid. See 37 CFR 1.46(b)(1).
If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (1) the fee set forth in 37 CFR 1.17(g); (2) a showing that such person has sufficient proprietary interest in the matter; and (3) a statement that making the application for patent by a person who otherwise shows sufficient proprietary interest on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties. See 37 CFR 1.46(b)(2). A discussion of the evidence necessary for a showing that a person has sufficient proprietary interest in the matter is set forth in MPEP § 409.05. The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette . See 37 CFR 1.46(f).
Any request to correct or update the name of the applicant after an applicant has been specified under 37 CFR 1.46(b) must include an application data sheet under 37 CFR 1.76 specifying the correct or updated name of the applicant in in the applicant information section. See 37 CFR 1.46(c)(1). Thus, if there is no change in the applicant itself but just the applicant’s name (due to a correction or name change), the applicant need only submit an application data sheet specifying the correct or updated name of the applicant in the applicant information section. Any corrected application data sheet must identify the information being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2). A change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the
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applicant in a nonprovisional international design application.
II. CHANGE OF APPLICANT
Where no applicant is identified, the Office will, by default, consider the inventor to be the applicant (e.g., to complete processing of the application so that it can be forwarded for examination). Any request to change the applicant must include an application data sheet under 37 CFR 1.76 specifying the applicant in the applicant information section in accordance with 37 CFR 1.76(c)(2) and must comply with 37 CFR 3.71 and 3.73. See 37 CFR 1.46(c)(2). Thus, if there is a change of applicant under 37 CFR 1.46 (e.g., from the inventor to the assignee, or from one assignee to another assignee), the new applicant must establish its ownership of the application under 37 CFR 3.71(b) and 3.73.
37 CFR 1.46(e) provides that if a patent is granted on an application filed under 37 CFR 1.46 by a person other than the inventor, the patent shall be granted to the real party in interest (e.g., the current assignee for an application that has been assigned). Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in 37 CFR 3.81.
Where a real party in interest has filed an application under 37 CFR 1.46, the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest. See 35 U.S.C. 118 and 37 CFR 1.46(e). The use of box 3 of the Part B – Fee(s) Transmittal form, PTOL-85B will be required where the real party in interest has changed from filing of the application and the application was filed pursuant to 37 CFR 1.46.
605.02 Applicant for Application Filed Before September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 605.01 for information regarding the applicant in applications filed on or after September 16, 2012.]
37 CFR 1.41 (pre-AIA) Applicant for patent.
(a) A patent is applied for in the name or names of the actual inventor or inventors.
(1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63, except as provided for in §§ 1.53(d)(4) and 1.63(d). If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b), unless applicant files a paper, including the processing fee set forth in § 1.17(i), supplying or changing the name or names of the inventor or inventors.
(2) The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1). If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying or changing the name or names of the inventor or inventors.
(3) In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63 or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name, residence, and citizenship of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
(4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis. See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv) (§ 1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371).
(b) Unless the contrary is indicated the word “applicant” when used in these sections refers to the inventor or joint inventors who are applying for a patent, or to the person mentioned in §§ 1.42, 1.43 or 1.47 who is applying for a patent in place of the inventor.
(c) Any person authorized by the applicant may physically or electronically deliver an application for patent to the Office on behalf of the inventor or inventors, but an oath or declaration for the application (§ 1.63) can only be made in accordance with § 1.64.
(d) A showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.
37 CFR 1.45 (pre-AIA) Joint inventors.
(a) Joint inventors must apply for a patent jointly and each must make the required oath or declaration; neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47.
(b) Inventors may apply for a patent jointly even though
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(1) They did not physically work together or at the same time,
(2) Each inventor did not make the same type or amount of contribution, or
(3) Each inventor did not make a contribution to the subject matter of every claim of the application.
(c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.
Pre-AIA 37 CFR 1.41(a) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as provided for in 37 CFR 1.53(d)(4) and pre-AIA 37 CFR 1.63(d). The oath or declaration may be filed on the filing date of the application or on a later date. If an oath or declaration is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to 37 CFR 1.53(b), unless an applicant files a paper under pre-AIA 37 CFR 1.41(a)(1) accompanied by the processing fee set forth in 37 CFR 1.17(i) supplying or changing the name or names of the inventor or inventors.
For correction of inventorship, see MPEP § 602.01(c) et seq.
For applications filed before September 16, 2012, if the application is filed by another, see MPEP § 409.03 et seq.
For assignments of application by inventor, see MPEP § 301.
For applications filed before September 16, 2012 by another on behalf of a deceased or legally incapacitated inventor, see MPEP § 409.01(b). For applications filed before September 16, 2012 where
at least one inventor is unavailable, see MPEP § 409.03 et seq.
606 Title of Invention [R-08.2012]
37 CFR 1.72 Title and abstract.
(a) The title of the invention may not exceed 500 characters in length and must be as short and specific as possible. Characters that cannot be captured and recorded in the Office’s automated information systems may not be reflected in the Office’s records in such systems or in documents created by the Office. Unless the title is supplied in an application data sheet (§ 1.76), the title of the invention should appear as a heading on the first page of the specification.
*****
The title of the invention should be placed at the top of the first page of the specification unless it is provided in the application data sheet (see 37 CFR 1.76). The title should be brief but technically accurate and descriptive and should contain fewer than 500 characters. Inasmuch as the words “new,” “improved,” “improvement of,” and “improvement in” are not considered as part of the title of an invention, these words should not be included at the beginning of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues. Similarly, the articles “a,” “an,” and “the” should not be included as the first words of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues.
606.01 Examiner May Require Change in Title [R-07.2015]
Where the title is not descriptive of the invention claimed, the examiner should require the substitution of a new title that is clearly indicative of the invention to which the claims are directed. Form paragraphs 6.11 and 6.11.01 may be used.
¶ 6.11 Title of Invention Is Not Descriptive
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Examiner Note:
If a change in the title of the invention is being suggested by the examiner, follow with form paragraph 6.11.01.
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¶ 6.11.01 Title of Invention, Suggested Change
The following title is suggested: “[1]”
This may result in slightly longer titles, but the loss in brevity of title will be more than offset by the gain in its informative value in indexing, classifying, searching, etc. If a satisfactory title is not supplied by the applicant, the examiner may, at the time of allowance, change the title by an examiner’s amendment. See MPEP § 1302.04(a). When the Technology Center (TC) technical support staff prepares the application for issue and sees that the title has been changed, the TC technical support staff will make the required change in the Office computer record systems.
607 Filing Fee [R-07.2015]
Patent application filing fees are set in accordance with 35 U.S.C. 41 and the Fee Setting Authority set forth in section 10 of Public Law 112-29, September 16, 2011 (the Leahy-Smith America Invents Act). The fee amounts are available from the USPTO’s website at www.uspto.gov/learning-and- resources/fees-and-payment/uspto-fee-schedule.
I. BASIC FILING, SEARCH, AND EXAMINATION FEES
For nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 8, 2004 (including reissue applications), the following fees are required: basic filing fee as set forth in 37 CFR 1.16(a), (b), (c) or (e); search fee as set forth in 37 CFR 1.16(k), (l), (m), or (n); examination fee as set forth in 37 CFR 1.16(o),(p), (q), or (r) ; application size fee as set forth in 37 CFR 1.16(s), if applicable (see subsection II. below); excess claims fees as set forth in 37 CFR 1.16(h), (i), or (j), if applicable (see subsection III. below); and non-electronic filing fee as set forth in 37 CFR 1.16(t), if applicable (see subsection IV. below).
The basic filing, search and examination fees are due on filing of the nonprovisional application under 35 U.S.C. 111(a). These fees may be paid on a date later than the filing date of the application provided they are paid within the time period set forth in 37
CFR 1.53(f) and include the surcharge set forth in 37 CFR 1.16(f).
For provisional applications filed under 35 U.S.C. 111(b), the basic filing fee set forth in 37 CFR 1.16(d) is required. The basic filing fee is due on filing of the provisional application, but may be paid later, if paid within the time period set forth in 37 CFR 1.53(g) and accompanied by payment of a surcharge as set forth in 37 CFR 1.16(g).
For international applications entering the national stage under 35 U.S.C. 371, see 37 CFR 1.492 for the required fees. See also MPEP § 1893.01(c). For international design applications under 35 U.S.C. 385, see 37 CFR 1.1031 for the required fees.
See also MPEP § 1415 for reissue application fees.
II. APPLICATION SIZE FEE
The application size fee set forth in 37 CFR 1.16(s) applies to any application (including any provisional applications and any reissue applications) filed under 35 U.S.C. 111 the specification (including claims) and drawings of which, excluding a sequence listing or computer program listing filed in an electronic medium in compliance with the rules (see 37 CFR 1.52(f)), exceed 100 sheets of paper. The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. A preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application. See MPEP § 714.01(e), subsection II. Thus, the Office will count the pages of a preliminary amendment present on the filing date of the application, including multiple sets of drawings or multiple sets of a specification, e.g., clean and marked-up versions, in determining the application size fee required. Accordingly, the Office does not recommend filing a substitute specification or multiple sets of drawings with the initial filing of the application. The Office will not count the sheets of paper making up any English translation of a non-English language specification if submitted with the application on filing. However, if the originally-filed application papers did not comply with 37 CFR 1.52, any papers filed to comply with 37 CFR 1.52 (if the page count of such papers is larger than the page count of the initial submission)
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will be counted for the purpose of determining the application size fee due, in place of the originally-filed specification and drawings. Any sequence listing in an electronic medium in compliance with 37 CFR 1.52(e) and 37 CFR 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with 37 CFR 1.52(e) and 1.96, will be excluded when determining the application size fee required by 37 CFR 1.16(s).
For purposes of determining the application size fee required by 37 CFR 1.16(s), for an application the specification (including claims) and drawings of which, excluding any sequence listing in compliance with 37 CFR 1.52(e) and 37 CFR 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with 37 CFR 1.52(e) and 37 CFR 1.96, are submitted in whole or in part on an electronic medium other than the Office electronic filing system, each three kilobytes of content submitted on an electronic medium shall be counted as a sheet of paper. See 37 CFR 1.52(f)(1).
The paper size equivalent of the specification (including claims) and drawings of an application submitted via the Office electronic filing system will be considered to be seventy five percent of the number of sheets of paper present in the specification (including claims) and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of computing the application size fee required by 37 CFR 1.16(s). Any sequence listing in compliance with 37 CFR 1.821(c) or (e), and any computer program listing in compliance with 37 CFR 1.96, submitted via the Office electronic filing system will be excluded when determining the application size fee required by 37 CFR 1.16(s) if the listing is submitted in American Standard Code for Information Interchange (ASCII) text as part of an associated file of the application. See 37 CFR 1.52(f)(2). Sequence listings or computer program listings submitted via the Office electronic filing system in Portable Document Format (PDF) as part of the specification or as Tagged Image File Format (TIFF) drawing files would not be excluded when determining the application size fee required by 37 CFR 1.16(s).
III. EXCESS CLAIMS FEES
37 CFR 1.16(h) sets forth the excess claims fee for each independent claim in excess of three. 37 CFR 1.16(i) sets forth the excess claims fee for each claim (whether independent or dependent) in excess of twenty. The excess claims fees specified in 37 CFR 1.16(h) and (i).
also apply to all reissue applications. Under 35 U.S.C. 41(a)(2), the claims in the original patent are not taken into account in determining the excess claims fee for a reissue application. The excess claims fees specified in 37 CFR 1.16(h) and (i) are required for each independent claim in excess of three that is presented in a reissue application and for each claim (whether independent or dependent) in excess of twenty that is presented in a reissue application.
Fees for a proper multiple dependent claim are calculated based on the number of claims to which the multiple dependent claim refers, 37 CFR 1.75(c), and a separate fee is required in each application containing a proper multiple dependent claim. See 37 CFR 1.16(j). For an improper multiple dependent claim, the fee charged is that charged for a single dependent claim. See MPEP § 608.01(n) for multiple dependent claims.
For nonprovisional applications filed under 35 U.S.C. 111(a) without claims, if more than three independent claims, more than twenty total claims, or a multiple dependent claim, are presented in the application, the excess claims fee as set forth in 37 CFR 1.16(h), (i), and/or (j) is due when the excess claims are presented in the application.
Upon submission of an amendment (whether entered or not) affecting the claims, payment of fees for those claims in excess of the number previously paid for is required.
Amendments before the first action, or not filed in reply to an Office action, presenting additional claims in excess of the number already paid for, not accompanied by the full additional fee due, will not be entered in whole or in part and applicant will be so advised. Such amendments filed in reply to an Office action will be regarded as not responsive
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thereto and the practice set forth in MPEP § 714.03 will be followed.
The additional fees, if any, due with an amendment are calculated on the basis of the claims (total and independent) which would be present, if the amendment were entered. The amendment of a claim, unless it changes a dependent claim to an independent claim or adds to the number of claims referred to in a multiple dependent claim, and the replacement of a claim by a claim of the same type, unless it is a multiple dependent claim which refers to more prior claims, do not require any additional fees.
For purposes of determining the fee due the U.S. Patent and Trademark Office, a claim will be treated as dependent if it contains reference to one or more other claims in the application. A claim determined to be dependent by this test will be entered if the fee paid reflects this determination.
Any claim which is in dependent form but which is so worded that it, in fact, is not a proper dependent claim, as for example it does not include every limitation of the claim on which it depends, will be required to be canceled as not being a proper dependent claim; and cancellation of any further claim depending on such a dependent claim will be similarly required. The applicant may thereupon amend the claims to place them in proper dependent form, or may redraft them as independent claims, upon payment of any necessary additional fee.
After a requirement for restriction, nonelected claims will be included in determining the fees due in connection with a subsequent amendment unless such claims are canceled.
An amendment canceling claims accompanying the papers constituting the application will be effective to diminish the number of claims to be considered in calculating the filing fees to be paid. A preliminary amendment filed concurrently with a response to a Notice To File Missing Parts of Application that required the fees set forth in 37 CFR 1.16, which preliminary amendment cancels or adds claims, will be taken into account in determining the appropriate fees due in response to the Notice To File Missing Parts of Application. No refund will be
made for claims being canceled in the response that have already been paid for.
The additional fees, if any, due with an amendment are required prior to any consideration of the amendment by the examiner.
Money paid in connection with the filing of a proposed amendment will not be refunded by reason of the nonentry of the amendment. However, unentered claims will not be counted when calculating the fee due in subsequent amendments.
Amendments affecting the claims cannot serve as the basis for granting any refund. See MPEP § 607.02 subsection V for refund of excess claims fees.
Excess claims fees set forth in 37 CFR 1.20(c)(3) and (c)(4) apply to excess claims that are presented during a reexamination proceeding.
IV. NON-ELECTRONIC FILING FEE
Section 10(h) of Public Law 112-29, September 16, 2011 (the Leahy-Smith America Invents Act) provides that an additional fee of $400 ($200 for a small entity) shall be established for each application for an original (i.e., non-reissue) patent, except for a design, plant, or provisional application, not filed by electronic means. See 37 CFR 1.16(t) for the non-electronic fee applicable to applications under 35 U.S.C. 111(a) filed on or after November 15, 2011 other than by the USPTO’s electronic filing system (EFS-Web). See 37 CFR 1.445(a)(1)(ii) for the non-electronic filing fee portion of the transmittal fee due in an international application filed with the USPTO as receiving Office on or after November 15, 2011.
V. APPLICANT DOES NOT SPECIFY FEES TO WHICH PAYMENT IS TO BE APPLIED
In situations in which a payment submitted for the fees due on filing in a nonprovisional application filed under 35 U.S.C. 111(a) is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended:
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(1) the basic filing fee (37 CFR 1.16(a), (b), (c), or (e));
(2) the non-electronic filing fee (37 CFR 1.16(t));
(3) the application size fee (37 CFR 1.16(s));
(4) the late filing surcharge (37 CFR 1.16(f));
(5) the processing fee for an application filed in a language other than English (37 CFR 1.17(i));
(6) the search fee (37 CFR 1.16(k), (l), (m), or (n));
(7) the examination fee (37 CFR 1.16(o), (p), (q), or (r)); and
(8) the excess claims fee (37 CFR 1.16(h), (i), and (j)).
In situations in which a payment submitted for the fees due on filing in a provisional application filed under 35 U.S.C. 111(b) is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended:
(1) the basic filing fee (37 CFR 1.16(d));
(2) the application size fee (37 CFR 1.16(s)); and
(3) the late filing surcharge (37 CFR 1.16(g)).
See also MPEP § 509.
Since the basic filing fee, search fee, and examination fee under the new patent fee structure are often referred to as the “filing fee,” the Office will treat a deposit account authorization to charge “the filing fee” as an authorization to charge the applicable fees under 37 CFR 1.16 (the basic filing fee, search fee, examination fee, any excess claims fee, and any application size fee) to the deposit account. The Office will also treat a deposit account authorization to charge “the basic filing fee” as an authorization to charge the applicable basic filing fee, search fee, and examination fee to the deposit account. Any deposit account authorization to charge the filing fee but not the search fee or examination fee must specifically limit the authorization by
reference to one or more of paragraphs (a) through (e) of 37 CFR 1.16. See MPEP § 509.01.
607.01 [Reserved]
607.02 Returnability of Fees [R-11.2013]
35 U.S.C. 42 Patent and Trademark Office funding
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(d) The Director may refund any fee paid by mistake or any amount paid in excess of that required.
*****
37 CFR 1.26 Refunds.
(a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
(b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph or in § 1.28(a). If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 1.25(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
(c) If the Director decides not to institute a reexamination proceeding in response to a request for reexamination or supplemental examination, fees paid with the request for reexamination or supplemental examination will be refunded or returned in accordance with paragraphs (c)(1) through (c)(3) of this section. The reexamination requester or the patent owner who requested a supplemental examination proceeding, as appropriate, should indicate the form in which any refund should be made ( e.g., by check, electronic funds transfer, credit to a deposit account). Generally, refunds will be issued in the form that the original payment was provided.
(1) For an ex parte reexamination request, the ex parte reexamination filing fee paid by the reexamination requester, less the fee set forth in § 1.20(c)(7), will be refunded to the requester if the Director decides not to institute an ex parte reexamination proceeding.
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(2) For an inter partes reexamination request, a refund of $7,970 will be made to the reexamination requester if the Director decides not to institute an inter partes reexamination proceeding.
(3) For a supplemental examination request, the fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2), will be returned to the patent owner who requested the supplemental examination proceeding if the Director decides not to institute a reexamination proceeding.
Under 35 U.S.C. 42(d) and 37 CFR 1.26, the Office may refund: (1) a fee paid by mistake (e.g., fee paid when no fee is required); or (2) any fee paid in excess of the amount of fee that is required. See Ex parte Grady, 59 USPQ 276, 277 (Comm’r Pat. 1943) (the statutory authorization for the refund of fees under the “by mistake” clause is applicable only to a mistake relating to the fee payment).
When an applicant or patentee takes an action “by mistake” (e.g., files an application or maintains a patent in force “by mistake”), the submission of fees required to take that action (e.g., a filing fee submitted with such application or a maintenance fee submitted for such patent) is not a “fee paid by mistake” within the meaning of 35 U.S.C. 42(d).
37 CFR 1.26(a) also provides that a change of purpose after the payment of a fee, as when a party desires to withdraw the filing of a patent application for which the fee was paid, will not entitle the party to a refund of such fee.
All questions pertaining to the return of fees are referred to the Refunds Section of the Receipts Division of the Office of Finance. No opinions should be expressed to attorneys or applicants as to whether or not fees are returnable in particular cases. Such questions may also be treated, to the extent appropriate, in decisions on petition decided by various U.S. Patent and Trademark Office officials.
I. MANNER OF MAKING A REFUND
Effective November 7, 2000, 37 CFR 1.26(a) was amended to authorize the Office to obtain the banking information necessary for making refunds by electronic funds transfer, or obtain the deposit account information to make the refund to the deposit account. If a party paying a fee or requesting
a refund does not instruct the refund to be credited to a deposit account, the Office will attempt to make the refund by electronic fund transfer. The Office may (1) use the banking information on a payment instrument (e.g., a personal check) to refund an amount paid by the payment instrument in excess of that required, or (2) in other situations, require the banking information necessary for electronic funds transfer or require instructions to credit a deposit account. If it is not cost effective to require the banking information, the Office may obtain the deposit account information or simply issue any refund by treasury check.
37 CFR 1.26(a) further provides that any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. The Office will not refund a fee paid by credit card by treasury check, electronic funds transfer, or credit to a deposit account.
II. TIME PERIOD FOR REQUESTING A REFUND
Any request for a refund which is not based upon subsequent entitlement to small entity status (see 37 CFR 1.28(a)) must be filed within the two-year nonextendable time limit set forth in 37 CFR 1.26(b).
III. FEES PAID BY DEPOSIT ACCOUNT
The Office treats authorizations to charge a deposit account as being received by the Office on the date of receipt as defined in 37 CFR 1.6 for purposes of refund payments under 37 CFR 1.26 and 37 CFR 1.28. Payment by authorization to charge a deposit account is treated for refund purposes the same as payments by other means (e.g., check or credit card charge authorization). Accordingly, the time period for requesting a refund of any fee paid by a deposit account begins on the date the charge authorization is received in the Office. For refund purposes: where a 37 CFR 1.8 certificate is used, the refund period will begin on the date of actual receipt (not the 37 CFR 1.8 date of mailing); where Priority Mail Express® under 37 CFR 1.10 is used, the “date accepted” on the Priority Mail Express® label will control (not the actual date of receipt by the Office). The use of payment receipt date for refund purposes has no effect on the certificate of mailing practice
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under 37 CFR 1.8 for making a timely reply to an Office action.
Notwithstanding the foregoing, if the Office charges a deposit account by an amount other than an amount specifically indicated on the charge authorization, any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and must include a copy of that deposit account statement. This provision of 37 CFR 1.26(b) applies, for example, in the following types of situations: (1) a deposit account charged for an extension of time pursuant to 37 CFR 1.136(a)(3) as a result of there being a prior general authorization in the application; or (2) a deposit account charged for the outstanding balance of a fee as a result of an insufficient fee submitted with an authorization to charge the deposit account for any additional fees that are due. In these situations, the party providing the charge authorization is not in a position to know the exact amount by which the deposit account will be charged until the date of the deposit account statement indicating the amount of the charge. Therefore, the two-year time period set forth in 37 CFR 1.26(b) does not begin until the date of the deposit account statement indicating the amount of the charge.
IV. LATER ESTABLISHMENT OF SMALL ENTITY STATUS
Effective November 7, 2000, 37 CFR 1.28(a) was amended to provide a three-month period (instead of the former two-month period) for requesting a refund based on later establishment of small entity status. As the Office now treats the receipt date of a deposit account charge authorization as the fee payment date (for refund purposes), any request for a refund under 37 CFR 1.28(a) must be made within three months from the date the charge authorization is received in the Office.
V. REFUND OF SEARCH FEE AND EXCESS CLAIMS FEE
The Office may refund the search fee and any excess claims fee paid in an application filed under 35 U.S.C. 111(a) if applicant files a petition under 37 CFR 1.138(d) to expressly abandon the application
before an examination has been made of the application. See MPEP § 711.01.
The basic filing fee, non-electronic filing fee, the examination fee, and the application size fee cannot be refunded unless the fee was paid by mistake or in excess of that required.
608 Disclosure [R-11.2013]
To obtain a valid patent, a patent application as filed must contain a full and clear disclosure of the invention in the manner prescribed by 35 U.S.C. 112(a). The requirement for an adequate disclosure ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent. All amendments and claims must find descriptive basis in the original disclosure. No new matter may be introduced into an application after its filing date. Applicant may rely for disclosure upon the specification with original claims and drawings, as filed. See also 37 CFR 1.121(f) and MPEP § 608.04.
If during the course of examination of a patent application, an examiner notes the use of language that could be deemed offensive to any race, religion, sex, ethnic group, or nationality, he or she should object to the use of the language as failing to comply with 37 CFR 1.3 which proscribes the presentation of papers which are lacking in decorum and courtesy. The inclusion of such proscribed language in a federal government publication would not be in the public interest. Also, the inclusion in application drawings of any depictions or caricatures that might reasonably be considered offensive to any group should be similarly objected to.
An application should not be classified for publication under 35 U.S.C. 122(b) and an examiner should not pass the application to issue until such language or drawings have been deleted, or questions relating to the propriety thereof fully resolved.
For design application practice, see MPEP § 1504 et seq.
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See MPEP § 714.25 for information pertaining to amendments and other papers presented in violation of 37 CFR 1.3.
608.01 Specification [R-07.2015]
35 U.S.C. 22 Printing of papers filed.
The Director may require papers filed in the Patent and Trademark Office to be printed, typewritten, or on an electronic medium.
37 CFR 1.71 Detailed description and specification of the invention.
(a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.
(b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.
(c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.
(d) A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s). The content of the notice must be limited to only those elements provided for by law. For example, “©1983 John Doe”(17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in paragraph (e) of this section is included at the beginning (preferably as the first paragraph) of the specification.
(e) The authorization shall read as follows:
A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or
records, but otherwise reserves all (copyright or mask work) rights whatsoever.
(f) The specification must commence on a separate sheet. Each sheet including part of the specification may not include other parts of the application or other information. The claim(s), abstract and sequence listing (if any) should not be included on a sheet including any other part of the application.
(g)(1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement as defined in § 1.9(e).
(2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth § 1.17(i) if not filed within one of the following time periods:
(i) Within three months of the filing date of a national application;
(ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
(iii) Before the mailing of a first Office action on the merits; or
(iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.
(3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.
The specification is a written description of the invention and of the manner and process of making and using the same. The specification must be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention pertains to make and use the same. See 35 U.S.C. 112 and 37 CFR 1.71. If a newly filed application obviously fails to disclose an invention with the clarity required by 35 U.S.C. 112, revision of the application should be required. See MPEP § 702.01. The written description must not include information that is not related to applicant’s invention, e.g., prospective disclaimers regarding comments made by examiners. If such information is included in the written description, the examiner will object to the specification and require applicant to take appropriate action, e.g., cancel the information. The specification must commence on a separate sheet. Each sheet including part of the
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specification may not include other parts of the application or other information. The claim(s), abstract and sequence listing (if any) should not be included on a sheet including any other part of the application (37 CFR 1.71(f)). That is, the claim(s), abstract and sequence listings (if any) should each begin on a new page since each of these sections (specification, abstract, claims, sequence listings) of the disclosure are separately indexed in the Image File Wrapper (IFW). There should be no overlap on a single page of more than one section of the disclosure.
The specification does not require a date.
Certain cross references to other related applications may be made. References to foreign applications or to applications identified only by the attorney’s docket number should be required to be canceled. U.S. applications identified only by the attorney’s docket number may be amended to properly identify the earlier application(s). See 37 CFR 1.78.
As the specification is never returned to applicant under any circumstances, the applicant should retain an accurate copy thereof. In amending the specification, the attorney or the applicant must comply with 37 CFR 1.121 (see MPEP § 714).
Examiners should not object to the specification and/or claims in patent applications merely because applicants are using British English spellings (e.g., colour) rather than American English spellings. It is not necessary to replace the British English spellings with the equivalent American English spellings in the U.S. patent applications. Note that 37 CFR 1.52(b)(1)(ii) only requires the application to be in the English language. There is no additional requirement that the English must be American English.
Form paragraph 7.29 may be used where the disclosure contains minor informalities.
¶ 7.29 Disclosure Objected to, Minor Informalities
The disclosure is objected to because of the following informalities: [1]. Appropriate correction is required.
Examiner Note:
Use this paragraph to point out minor informalities such as spelling errors, inconsistent terminology, numbering of elements, etc., which should be corrected. See form paragraphs 6.28 to 6.31 for specific informalities.
Form paragraphs 6.29-6.31 should be used where appropriate.
¶ 6.29 Specification, Spacing of Lines
The spacing of the lines of the specification is such as to make reading difficult. New application papers with lines 1 1/2 or double spaced on good quality paper are required.
¶ 6.30 Numerous Errors in Specification
35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA). Examples of some unclear, inexact or verbose terms used in the specification are: [1].
¶ 6.31 Lengthy Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
I. PAPER REQUIREMENTS
37 CFR 1.52 Language, paper, writing, margins, compact disc specifications.
(a) Papers that are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application, or a reexamination or supplemental examination proceeding.
(1) All papers, other than drawings, that are submitted on paper or by facsimile transmission, and are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination or supplemental examination proceeding, must be on sheets of paper that are the same size, not permanently bound together, and:
(i) Flexible, strong, smooth, non-shiny, durable, and white;
(ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8 1/2 by 11 inches), with each sheet including a top margin of at least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch), and a bottom margin of at least 2.0 cm (3/4 inch);
(iii) Written on only one side in portrait orientation;
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(iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent; and
(v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition.
(2) All papers that are submitted on paper or by facsimile transmission and are to become a part of the permanent records of the United States Patent and Trademark Office should have no holes in the sheets as submitted.
(3) The provisions of this paragraph and paragraph (b) of this section do not apply to the pre-printed information on paper forms provided by the Office, or to the copy of the patent submitted on paper in double column format as the specification in a reissue application or request for reexamination.
(4) See § 1.58 for chemical and mathematical formulae and tables, and § 1.84 for drawings.
(5) Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office’s electronic filing system requirements.
(b) The application (specification, including the claims, drawings, and the inventor’s oath or declaration) or reexamination or supplemental examination proceeding, any amendments to the application or reexamination proceeding, or any corrections to the application, or reexamination or supplemental examination proceeding.
(1) The application or proceeding and any amendments or corrections to the application (including any translation submitted pursuant to paragraph (d) of this section) or proceeding, except as provided for in § 1.69 and paragraph (d) of this section, must:
(i) Comply with the requirements of paragraph (a) of this section; and
(ii) Be in the English language or be accompanied by a translation of the application and a translation of any corrections or amendments into the English language together with a statement that the translation is accurate.
(2) The specification (including the abstract and claims) for other than reissue applications and reexamination or supplemental examination proceedings, and any amendments for applications (including reissue applications) and reexamination proceedings to the specification, except as provided for in §§ 1.821 through 1.825, must have:
(i) Lines that are 1 1/2 or double spaced;
(ii) Text written in a nonscript type font ( e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high ( e.g., a font size of 6); and
(iii) Only a single column of text.
(3) The claim or claims must commence on a separate physical sheet or electronic page (§ 1.75(h)).
(4) The abstract must commence on a separate physical sheet or electronic page or be submitted as the first page of the patent in a reissue application or reexamination or supplemental examination proceeding (§ 1.72(b)).
(5) Other than in a reissue application or reexamination or supplemental examination proceeding, the pages of the specification including claims and abstract must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably below, the text.
(6) Other than in a reissue application or reexamination or supplemental examination proceeding, the paragraphs of the specification, other than in the claims or abstract, may be numbered at the time the application is filed, and should be individually and consecutively numbered usingArabic numerals, so as to unambiguously identify each paragraph. The number should consist of at least four numerals enclosed in square brackets, including leading zeros ( e.g., [0001]). The numbers and enclosing brackets should appear to the right of the left margin as the first item in each paragraph, before the first word of the paragraph, and should be highlighted in bold. A gap, equivalent to approximately four spaces, should follow the number. Nontext elements ( e.g., tables, mathematical or chemical formulae, chemical structures, and sequence data) are considered part of the numbered paragraph around or above the elements, and should not be independently numbered. If a nontext element extends to the left margin, it should not be numbered as a separate and independent paragraph. A list is also treated as part of the paragraph around or above the list, and should not be independently numbered. Paragraph or section headers (titles), whether abutting the left margin or centered on the page, are not considered paragraphs and should not be numbered.
(c) Interlineation, erasure, cancellation, or other alteration of the application papers may be made before or after the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers. A substitute specification (§ 1.125) may be required if the application papers do not comply with paragraphs (a) and (b) of this section.
(d) A nonprovisional or provisional application under 35 U.S.C. 111 may be in a language other than English.
(1) Nonprovisional application . If a nonprovisional application under 35 U.S.C. 111(a) is filed in a language other than English, an English language translation of the non-English language application, a statement that the translation is accurate, and the processing fee set forth in § 1.17(i) are required. If these items are not filed with the application, applicant will be notified and given a period of time within which they must be filed in order to avoid abandonment.
(2) Provisional application . If a provisional application under 35 U.S.C. 111(b) is filed in a language other than English, an English language translation of the non-English language provisional application will not be required in the provisional application. See § 1.78(a) for the requirements for claiming the
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benefit of such provisional application in a nonprovisional application.
(e) Electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application, or reexamination or supplemental examination proceeding.
(1) The following documents may be submitted to the Office on a compact disc in compliance with this paragraph:
(i) A computer program listing (see § 1.96);
(ii) A “Sequence Listing” (submitted under § 1.821(c)); or
(iii) Any individual table (see § 1.58) if the table is more than 50 pages in length, or if the total number of pages of all the tables in an application exceeds 100 pages in length, where a table page is a page printed on paper in conformance with paragraph (b) of this section and § 1.58(c).
(2) A compact disc as used in this part means a Compact Disc-Read Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance with this paragraph. A CD-ROM is a “read-only” medium on which the data is pressed into the disc so that it cannot be changed or erased. A CD-R is a “write once” medium on which once the data is recorded, it is permanent and cannot be changed or erased.
(3)(i) Each compact disc must conform to the International Organization for Standardization (ISO) 9660 standard, and the contents of each compact disc must be in compliance with the American Standard Code for Information Interchange (ASCII).
(ii) Each compact disc must be enclosed in a hard compact disc case within an unsealed padded and protective mailing envelope and accompanied by a transmittal letter on paper in accordance with paragraph (a) of this section. The transmittal letter must list for each compact disc the machine format ( e.g., IBM-PC, Macintosh), the operating system compatibility ( e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret ( e.g. , tables in landscape orientation should be identified as landscape orientation or be identified when inquired about) the information on the compact disc. Compact discs submitted to the Office will not be returned to the applicant.
(4) Any compact disc must be submitted in duplicate unless it contains only the “Sequence Listing” in computer readable form required by § 1.821(e). The compact disc and duplicate copy must be labeled “Copy 1” and “Copy 2,” respectively. The transmittal letter which accompanies the compact disc must include a statement that the two compact discs are identical. In the event that the two compact discs are not identical, the Office will use the compact disc labeled “Copy 1” for further processing. Any amendment to the information on a compact disc must be by way of a replacement compact disc in compliance with this paragraph containing the substitute information, and must be accompanied by a statement that the replacement compact disc contains no new matter. The compact
disc and copy must be labeled “COPY 1 REPLACEMENT MM/DD/YYYY” (with the month, day and year of creation indicated), and “COPY 2 REPLACEMENT MM/DD/YYYY,” respectively.
(5) The specification must contain an incorporation-by-reference of the material on the compact disc in a separate paragraph (§ 1.77(b)(5)), identifying each compact disc by the names of the files contained on each of the compact discs, their date of creation and their sizes in bytes. The Office may require applicant to amend the specification to include in the paper portion any part of the specification previously submitted on compact disc.
(6) A compact disc must also be labeled with the following information:
(i) The name of each inventor (if known);
(ii) Title of the invention;
(iii) The docket number, or application number if known, used by the person filing the application to identify the application;
(iv) A creation date of the compact disc;
(v) If multiple compact discs are submitted, the label shall indicate their order ( e.g. “1 of X”); and
(vi) An indication that the disc is “Copy 1” or “Copy 2” of the submission. See paragraph (b)(4) of this section.
(7) If a file is unreadable on both copies of the disc, the unreadable file will be treated as not having been submitted. A file is unreadable if, for example, it is of a format that does not comply with the requirements of paragraph (e)(3) of this section, it is corrupted by a computer virus, or it is written onto a defective compact disc.
(f)(1) Any sequence listing in an electronic medium in compliance with §§ 1.52(e) and 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, will be excluded when determining the application size fee required by § 1.16(s) or § 1.492(j). For purposes of determining the application size fee required by § 1.16(s) or § 1.492(j), for an application the specification and drawings of which, excluding any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, are submitted in whole or in part on an electronic medium other than the Office electronic filing system, each three kilobytes of content submitted on an electronic medium shall be counted as a sheet of paper.
(2) Except as otherwise provided in this paragraph, the paper size equivalent of the specification and drawings of an application submitted via the Office electronic filing system will be considered to be seventy-five percent of the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of determining the application size fee required by § 1.16(s). Any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing in compliance with § 1.96, submitted via the Office electronic filing system will be excluded when
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determining the application size fee required by § 1.16(s) if the listing is submitted in ASCII text as part of an associated file.
37 CFR 1.58 Chemical and mathematical formulae and tables.
(a) The specification, including the claims, may contain chemical and mathematical formulae, but shall not contain drawings or flow diagrams. The description portion of the specification may contain tables, but the same tables should not be included in both the drawings and description portion of the specification. Claims may contain tables either if necessary to conform to 35 U.S.C. 112 or if otherwise found to be desirable.
(b) Tables that are submitted in electronic form (§§ 1.96(c) and 1.821(c)) must maintain the spatial relationships ( e.g., alignment of columns and rows) of the table elements when displayed so as to visually preserve the relational information they convey. Chemical and mathematical formulae must be encoded to maintain the proper positioning of their characters when displayed in order to preserve their intended meaning.
(c) Chemical and mathematical formulae and tables must be presented in compliance with § 1.52(a) and (b), except that chemical and mathematical formulae or tables may be placed in a landscape orientation if they cannot be presented satisfactorily in a portrait orientation. Typewritten characters used in such formulae and tables must be chosen from a block (nonscript) type font or lettering style having capital letters which should be at least 0.422 cm. (0.166 inch) high ( e.g., preferably Arial, Times Roman, or Courier with a font size of 12), but may be no smaller than 0.21 cm. (0.08 inch) high ( e.g., a font size of 6). A space at least 0.64 cm. (1/4 inch) high should be provided between complex formulae and tables and the text. Tables should have the lines and columns of data closely spaced to conserve space, consistent with a high degree of legibility.
The pages of the specification including claims and abstract must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably, below, the text. The lines of the specification, and any amendments to the specification, must be 1 1/2 or double spaced. The text must be written in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 6) (37 CFR1.52(b)(2)(ii)). The text may not be written solely in capital letters.
All application papers (specification, including claims, abstract, any drawings, oath or declaration, and other papers), and also papers subsequently filed, must have each page plainly written on only one side of a sheet of paper. The specification must commence on a separate sheet. Each sheet including part of the specification may not include other parts
of the application or other information. The claim(s), abstract and sequence listing (if any) should not be included on a sheet including any other part of the application (37 CFR 1.71(f)). The claim or claims must commence on a separate sheet or electronic page and any sheet including a claim or portion of a claim may not contain any other parts of the application or other material (37 CFR 1.75(h)). The abstract must commence on a separate sheet and any sheet including an abstract or portion of an abstract may not contain any other parts of the application or other material (37 CFR 1.72(b)).
All application papers that are submitted on paper or by facsimile transmission which are to become a part of the permanent record of the U.S. Patent and Trademark Office must be on sheets of paper which are the same size (for example, an amendment should not have two different sizes of paper, but the specification can have one size of paper and the drawings a different size) and are either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches). See 37 CFR 1.52(a)(1) and 37 CFR 1.84(f). Each sheet, other than the drawings, must include a top margin of at least 2.0 cm. (3/4 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 2.0 cm. (3/4 inch), and a bottom margin of at least 2.0 cm. (3/4 inch). No holes should be made in the sheets as submitted.
Application papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office’s electronic filing system requirements. See 37 CFR 1.52(a)(5). See also MPEP § 502.05 and the EFS-Web Legal Framework (www.uspto.gov/patents-application-process/ applying-online/legal-framework-efs-web-06april11) for details regarding correspondence transmitted to the Office using EFS-Web, the Office’s system for the electronic filing of patent correspondence.
Applicants must make every effort to file patent applications, and papers that are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or a reexamination proceeding, in a form that is clear and reproducible. If the papers are not of the required quality, substitute papers of suitable quality will be required. See 37 CFR 1.125 for filing rewritten papers constituting a substitute specification required
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by the Office. See also MPEP § 608.01(q). All papers which are to become a part of the permanent records of the U.S. Patent and Trademark Office must be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, nonshiny, durable, and white paper. Typed, mimeographed, xeroprinted, multigraphed or nonsmearing carbon copy forms of reproduction are acceptable. So-called “Easily Erasable” paper having a special coating so that erasures can be made more easily may not provide a “permanent” copy, 37 CFR 1.52(a)(1)(iv). Since application papers are now maintained in an Image File Wrapper, the type of paper is unlikely to be an issue so long as the Office is able to scan and reproduce the papers that were filed.
Where an application is filed with papers that do not comply with 37 CFR 1.52, the Office of Patent Application Processing will mail a “Notice to File Corrected Application Papers” indicating the deficiency and setting a time period within which the applicant must correct the deficiencies to avoid abandonment. The failure to submit application papers in compliance with 37 CFR 1.52 does not affect the grant of a filing date, and original application papers that do not comply with 37 CFR 1.52 will be retained in the application file as the original disclosure of the invention. The USPTO will not return papers simply because they do not comply with 37 CFR 1.52.
Legibility includes ability to be photocopied and scanned so that suitable reprints can be made and paper can be electronically reproduced by use of digital imaging and optical character recognition. This requires a high contrast, with black lines and a white background. Gray lines and/or a gray background sharply reduce photo reproduction quality.
Some of the patent application papers received by the U.S. Patent and Trademark Office are copies of the original, ribbon copy. These are acceptable if, in the opinion of the Office, they are legible and permanent.
¶ 6.32.01 Application Papers Must Be Legible
The specification (including the abstract and claims), and any amendments for applications, except as provided for in 37 CFR 1.821 through 1.825, must have text written plainly and legibly either by a typewriter or machine printer in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g. , a font size of 6) in portrait orientation and presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition; and only a single column of text. See 37 CFR 1.52(a) and (b).
The application papers are objected to because [1].
A legible substitute specification in compliance with 37 CFR 1.52(a) and (b) and 1.125 is required.
Examiner Note:
1. In bracket 1, identify the part of the specification that is illegible: all of the specification; or certain pages of the specification.
2. Do not use this form paragraph for reissue applications or reexamination proceedings.
II. ALTERATION OF APPLICATION PAPERS
Effective September 16, 2012, 37 CFR 1.52(c) no longer prohibits interlineations and other alterations of the application papers from being made after the signing of the inventor’s oath or declaration. It should be noted that if such interlineations or other alterations are made after the signing of the inventor’s oath or declaration, then the statements in the inventor’s oath or declaration pursuant to 37 CFR 1.63 must remain applicable to the application papers. Otherwise, the inventor may need to execute a new inventor’s oath or declaration. See also MPEP § 602.08(b).
III. CERTIFIED COPIES OF AN APPLICATION-AS-FILED
If an application-as-filed does not meet the sheet size/margin and quality requirements of 37 CFR 1.52 and 1.84(f) and (g), certified copies of such application may be illegible and/or ineffective as priority documents. When an applicant requests that the USPTO provide a certified copy of an application-as-filed and pays the fee set forth in 37
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CFR 1.19(b)(1), the USPTO will make a copy of the application-as-filed from the records in the IFW database (or the microfilm database). If papers submitted in the application-as-filed are not legible, certified copies of the application as originally filed will not be legible.
The USPTO performs exception processing when scanning application papers that do not comply with the sheet size/margin and quality requirements. If papers submitted in the application-as-filed (including any transmittal letter or cover sheet) do not meet the sheet size requirement of 37 CFR 1.52 and 1.84(f) (e.g., the papers are legal size (8 1/2 by 14 inches)), the USPTO must reduce such papers to be able to image-scan the entire application and record it in the IFW database. In addition, if papers submitted in the application-as-filed do not meet the quality requirements of 37 CFR 1.52 (e.g., the papers are shiny or non-white), the USPTO will attempt to enhance such papers before scanning to make the resulting electronic record in the IFW database more readable. However, if exception processing is required to make the IFW copy, certified copies of the application as originally filed may not be legible.
If application papers are filed that do not meet sheet size/margin and quality requirements, the USPTO will require the applicant to file substitute papers that do comply with the requirements of 37 CFR 1.52 and 1.84(e), (f) and (g). The substitute papers submitted in reply to the above-mentioned requirement will provide the USPTO with an image- and OCR-scannable copy of the application for printing the application as a patent publication or patent. However, the USPTO will not treat application papers submitted after the filing date of an application as the original disclosure of the application for making a certified copy of the application-as-filed or any other purpose. That is, even if an applicant subsequently files substitute application papers that comply with 37 CFR 1.52 and then requests that the USPTO provide a certified copy of an application-as-filed, paying the fee set forth in 37 CFR 1.19(b)(1), the USPTO will still make a copy of the application-as-filed rather than a copy of the subsequently filed substitute papers.
IV. USE OF METRIC SYSTEM OF MEASUREMENTS IN PATENT APPLICATIONS
In order to minimize the necessity in the future for converting dimensions given in the English system of measurements to the metric system of measurements when using printed patents as research and prior art search documents, all patent applicants should use the metric (S.I.) units followed by the equivalent English units when describing their inventions in the specifications of patent applications.
The initials S.I. stand for “Le Système International d’ Unités,” the French name for the International System of Units, a modernized metric system adopted in 1960 by the International General Conference of Weights and Measures based on precise unit measurements made possible by modern technology.
V. FILING OF NON-ENGLISH LANGUAGE APPLICATIONS
37 CFR 1.52 Language, Paper, Writing, Margins, Compact Disc Specifications.
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(d) A nonprovisional or provisional application under 35 U.S.C. 111 may be in a language other than English.
(1) Nonprovisional application . If a nonprovisional application under 35 U.S.C. 111(a) is filed in a language other than English, an English language translation of the non-English language application, a statement that the translation is accurate, and the processing fee set forth in § 1.17(i) are required. If these items are not filed with the application, applicant will be notified and given a period of time within which they must be filed in order to avoid abandonment.
(2) Provisional application . If a provisional application under 35 U.S.C. 111(b) is filed in a language other than English, an English language translation of the non-English language provisional application will not be required in the provisional application. See § 1.78(a) for the requirements for claiming the benefit of such provisional application in a nonprovisional application.
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The U.S. Patent and Trademark Office will accord a filing date to an application meeting the requirements of 35 U.S.C. 111(a), or a provisional application in accordance with 35 U.S.C. 111(b), even though some or all of the application papers, including the written description and any claims, is
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in a language other than English and hence does not comply with 37 CFR 1.52.
As provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application. See MPEP § 601.01(a), subsection III, for more information on the filing and treatment of such applications.
If a nonprovisional application under 35 U.S.C. 111(a) is filed in a language other than English, an English translation of the non-English language papers, a statement that the translation is accurate, the fees set forth in 37 CFR 1.16, the oath or declaration and fee set forth in 37 CFR 1.17(i) should either accompany the nonprovisional application papers or be filed in the Office within the time set by the Office. If a provisional application is filed in a language other than English, an English translation of the non-English language provisional application and a statement that the translation is accurate must be submitted if benefit of the provisional application is claimed in a later-filed nonprovisional application (see 37 CFR 1.78(a)(5)). If the translation and statement were not previously filed in the provisional application, applicant will be notified in the nonprovisional application that claims the benefit of the provisional application and be given a period of time within which to file the translation and statement in the provisional application. Applicants may file the translation and statement in the provisional application even if the provisional application has become abandoned. A timely reply to such notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application or withdrawal of the benefit claim. For applications filed before September 16, 2012, an amendment or Supplemental Application Data Sheet withdrawing the benefit claim may be filed. For applications filed on or after September 16, 2012, a corrected application data sheet withdrawing the benefit claim may be filed. Failure to take one of the above actions will result in the abandonment of the nonprovisional application.
A subsequently filed English translation must contain the complete identifying data for the application in order to permit prompt association with the papers initially filed. Accordingly, it is strongly recommended that the original application papers be filed via EFS-Web or be accompanied by a cover letter and a self-addressed return postcard, each containing the following identifying data in English: (a) applicant’s name(s); (b) title of invention; (c) number of pages of specification, claims, and sheets of drawings; (d) whether an oath or declaration was filed and (e) amount and manner of paying the fees set forth in 37 CFR 1.16.
The translation must be a literal translation and must be accompanied by a statement that the translation is accurate. The translation must also be accompanied by a signed request from the applicant, his or her attorney or agent, asking that the English translation be used as the copy for examination purposes in the Office. If the English translation does not conform to idiomatic English and United States practice, it should be accompanied by a preliminary amendment making the necessary changes without the introduction of new matter prohibited by 35 U.S.C. 132. If such an application is published as a patent application publication, the document that is published is the translation. See 37 CFR 1.215(a) and MPEP § 1121 regarding the content of the application publication. In the event that the English translation and the statement are not timely filed in the nonprovisional application, the nonprovisional application will be regarded as abandoned.
It should be recognized that this practice is intended for emergency situations to prevent loss of valuable rights and should not be routinely used for filing applications. There are at least two reasons why this should not be used on a routine basis. First, there are obvious dangers to applicant and the public if he or she fails to obtain a correct literal translation. Second, the filing of a large number of applications under the procedure will create significant administrative burdens on the Office. See also MPEP § 601.01(a), subsection III, for information on reference filing, which is also a practice intended for emergency situations to prevent the loss of rights and should not be routinely used for filing applications.
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VI. ILLUSTRATIONS IN THE SPECIFICATION
Graphical illustrations, diagrammatic views, flowcharts, and diagrams in the descriptive portion of the specification do not come within the purview of 37 CFR 1.58(a), which permits tables, chemical and mathematical formulas in the specification in lieu of drawings. The examiner should object to such descriptive illustrations in the specification and request drawings in accordance with 37 CFR 1.81 when an application contains graphs, drawings, or flow charts in the specification.
The specification, including any claims, may contain chemical formulas and mathematical equations, but the written description portion of the specification must not contain drawings or flow diagrams. A claim may incorporate by reference to a specific figure or table where there is no practical way to define the invention in words. See MPEP § 2173.05(s). The description portion of the specification may contain tables, but the same tables should not be included in both the drawings as a figure and in the description portion of the specification. Claims may contain tables either if necessary to conform to 35 U.S.C. 112 or if otherwise found to be desirable. See MPEP § 2173.05(s). When such a patent is printed, however, the table will not be included as part of the claim, and instead the claim will contain a reference to the table number.
VII. Hyperlinks and Other Forms of Browser-Executable Code in the Specification
Examiners must review patent applications to make certain that hyperlinks and other forms of browser-executable code, especially commercial site URLs, are not included in a patent application. 37 CFR 1.57(e) states that an incorporation by reference by hyperlink or other form of browser executable code is not permitted. Examples of a hyperlink or a browser-executable code are a URL placed between these symbols “< >” and http:// followed by a URL address. When a patent application with embedded hyperlinks and/or other forms of browser-executable code issues as a patent (or is published as a patent application publication) and the patent document is placed on the USPTO Web page, when the patent document is retrieved and viewed via a Web browser, the URL is interpreted as a valid HTML
code and it becomes a live web link. When a user clicks on the link with a mouse, the user will be transferred to another Web page identified by the URL, if it exists, which could be a commercial website. USPTO policy does not permit the USPTO to link to any commercial sites since the USPTO exercises no control over the organization, views or accuracy of the information contained on these outside sites.
If hyperlinks and/or other forms of browser-executable code are embedded in the text of the patent application, examiners should object to the specification and indicate to applicants that the embedded hyperlinks and/or other forms of browser-executable code are impermissible and that references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. This requirement does not apply to electronic documents listed on forms PTO-892 and PTO/SB/08 where the electronic document is identified by reference to a URL.
The attempt to incorporate subject matter into the patent application by reference to a hyperlink and/or other forms of browser-executable code is considered to be an improper incorporation by reference. See 37 CFR 1.57(e) and MPEP § 608.01(p), paragraph I regarding incorporation by reference. Where the hyperlinks and/or other forms of browser-executable codes themselves rather than the contents of the site to which the hyperlinks are directed are part of applicant’s invention and it is necessary to have them included in the patent application in order to comply with the requirements of 35 U.S.C. 112(a), and applicant does not intend to have these hyperlinks be active links, examiners should not object to these hyperlinks. The Office will disable these hyperlinks when preparing the text to be loaded onto the USPTO Web database.
Note that nucleotide and/or amino acid sequence data placed between the symbols “< >” are not considered to be hyperlinks and/or browser-executable code and therefore should not be objected to as being an improper incorporation by reference (see 37 CFR 1.821 – 1.825).
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¶ 7.29.04 Disclosure Objected To, Embedded Hyperlinks or Other Forms of Browser-Executable Code
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Examiner Note:
1. Examples of a hyperlink or a browser-executable code are a URL placed between these symbols “< >” and “http://” followed by a URL address. Nucleotide and/or amino acid sequence data placed between the symbols “< >” are not considered to be hyperlinks and/or browser-executable code.
2. If the application attempts to incorporate essential or nonessential subject matter into the patent application by reference to the contents of the site to which a hyperlink and/or other form of browser-executable code is directed, use form paragraph 6.19 or 6.19.01 instead. See also MPEP § 608.01(p).
3. The requirement to delete an embedded hyperlink or other form of browser-executable code does not apply to electronic documents listed on forms PTO-892 and PTO/SB/08B where the electronic document is identified by reference to a URL.
4. Examiners should not object to hyperlinks where the hyperlinks and/or browser-executable codes themselves (rather than the contents of the site to which the hyperlinks are directed) are necessary to be included in the patent application in order to meet the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, and applicant does not intend to have those hyperlinks be active links.
608.01(a) Arrangement of Application [R-07.2015]
37 CFR 1.77 Arrangement of application elements.
(a) The elements of the application, if applicable, should appear in the following order:
(1) Utility application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings.
(6) The inventor’s oath or declaration.
(b) The specification should include the following sections in order:
(1) Title of the invention, which may be accompanied by an introductory portion stating the name, citizenship, and residence of the applicant (unless included in the application data sheet).
(2) Cross-reference to related applications.
(3) Statement regarding federally sponsored research or development.
(4) The names of the parties to a joint research agreement.
(5) Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc (see § 1.52(e)(5)). The total number of compact discs including duplicates and the files on each compact disc shall be specified.
(6) Statement regarding prior disclosures by the inventor or a joint inventor.
(7) Background of the invention.
(8) Brief summary of the invention.
(9) Brief description of the several views of the drawing.
(10) Detailed description of the invention.
(11) A claim or claims.
(12) Abstract of the disclosure.
(13) “Sequence Listing,” if on paper (see §§ 1.821 through 1.825).
(c) The text of the specification sections defined in paragraphs (b)(1) through (b)(12) of this section, if applicable, should be preceded by a section heading in uppercase and without underlining or bold type.
For design patent specification, see MPEP § 1503.01.
For plant patent specification, see MPEP § 1605.
For reissue patent specification, see MPEP § 1411.
The order of arrangement of specification elements as set forth in 37 CFR 1.77(b) is preferable (e.g., not required) in framing the nonprovisional specification and each of the items should appear in upper case, without underlining or bold type, as section headings. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading. It is recommended that provisional applications follow the same general format, although claims are not required. If an application data sheet (37 CFR 1.76) is used, data supplied in the application data sheet need not be provided elsewhere in the application except that for applications filed before September 16, 2012, the citizenship of each inventor must be provided in the oath or declaration under 37 CFR 1.63 even if this information is provided in the application data sheet.
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For applications filed on or after September 16, 2012, if there is a discrepancy between the information submitted in an application data sheet and the information submitted elsewhere in the application, the application data sheet will control except for the naming of inventors. The naming of the inventorship is governed by 37 CFR 1.41, and changes to inventorship or the names of inventors is governed by 37 CFR 1.48. In addition, for applications filed on or after September 16, 2012, the most recent application data sheet in compliance with 37 CFR 1.76 will govern with respect to foreign priority claims or domestic benefit claims. See 37 CFR 1.76(d) and MPEP § 601.05(a).
For applications filed before September 16, 2012, if there is a discrepancy between the information submitted in an application data sheet and the information submitted elsewhere in the application, the application data sheet will control except for the naming of the inventors and the citizenship of the inventors. See pre-AIA 37 CFR 1.76(d) and MPEP § 601.05(b).
Applicant (typically a pro se) may be advised of the proper arrangement by using Form Paragraph 6.01 or 6.02.
¶ 6.01 Arrangement of the Sections of the Specification in a Utility Application
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TOA JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A COMPACT DISC OR AS A TEXT FILE VIA THE OFFICE ELECTRONIC FILING SYSTEM (EFS-WEB).
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821-1.825. A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on compact disc or as a text file via the Office electronic filing system (EFS-Web.)
Examiner Note:
For the arrangement of the sections of the specification in a design application, see 37 CFR 1.154(b). Form paragraph 15.05 may be used for a design application. For the arrangement of the sections of the specification in a plant application, see 37 CFR 1.163(c). For the requirements of the specification in a reissue application, see 37 CFR 1.173(a)(1).
¶ 6.02 Content of Specification
Content of Specification
(a) TITLE OF THE INVENTION: See 37 CFR 1.72(a) and MPEP § 606. The title of the invention should be placed at the top of the first page of the specification unless the title is provided in an application data sheet. The title of the invention should be brief but technically accurate and descriptive, preferably from two to seven words. It may not contain more than 500 characters.
(b) CROSS-REFERENCES TO RELATED APPLICATIONS: See 37 CFR 1.78 and MPEP § 211 et seq.
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(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT: See MPEP § 310.
(d) THE NAMES OF THE PARTIES TOA JOINT RESEARCH AGREEMENT. See 37 CFR 1.71(g).
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A COMPACT DISC OR AS A TEXT FILE VIA THE OFFICE ELECTRONIC FILING SYSTEM (EFS-WEB): The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application. See 37 CFR 1.52(e) and MPEP § 608.05. See also the Legal Framework for EFS-Web posted on the USPTO website ( w w w. u s p t o . g o v / p a t e n t s - a p p l i c a t i o n - p ro c e s s / applying-online/legal-framework-efs-web-06april11) and MPEP § 502.05
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR. See 35 U.S.C. 102(b)and 37 CFR 1.77.
(g) BACKGROUND OF THE INVENTION: See MPEP § 608.01(c). The specification should set forth the Background of the Invention in two parts:
(1) Field of the Invention: A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions of the subject matter of the claimed invention. This item may also be titled “Technical Field.”
(2) Description of the Related Art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98: A description of the related art known to the applicant and including, if applicable, references to specific related art and problems involved in the prior art which are solved by the applicant’s invention. This item may also be titled “Background Art.”
(h) BRIEF SUMMARY OF THE INVENTION: See MPEP § 608.01(d). A brief summary or general statement of the invention as set forth in 37 CFR 1.73. The summary is separate and distinct from the abstract and is directed toward the invention rather than the disclosure as a whole. The summary may point out the advantages of the invention or how it solves problems previously existent in the prior art (and preferably indicated in the Background of the Invention). In chemical cases it should point out in general terms the utility of the invention. If possible, the nature and gist of the invention or the inventive concept should be set forth. Objects of the invention should be treated briefly and only to the extent that they contribute to an understanding of the invention.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S): See MPEP § 608.01(f). A reference to and brief description of the drawing(s) as set forth in 37 CFR 1.74.
(j) DETAILED DESCRIPTION OF THE INVENTION: See MPEP § 608.01(g).A description of the preferred embodiment(s) of the invention as required in 37 CFR 1.71. The description should be as short and specific as is necessary to describe the invention adequately and accurately. Where elements or groups of elements, compounds, and processes, which are conventional and generally widely known in the field of the invention described, and their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art, they should not be described in detail. However, where particularly complicated subject matter is involved or where the elements, compounds, or processes may not be commonly or widely known in the field, the specification should refer to another patent or readily available publication which adequately describes the subject matter.
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
(l) ABSTRACT OF THE DISCLOSURE: See 37 CFR 1.72(b) and MPEP § 608.01(b). The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, commencing on a separate sheet following the claims. In an international application which has entered the national stage (37 CFR 1.491(b)), the applicant need not submit an abstract commencing on a separate sheet if an abstract was published with the international application under PCT Article 21. The abstract that appears on the cover page of the pamphlet published by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) is the abstract that will be used by the USPTO. See MPEP § 1893.03(e).
(m) SEQUENCE LISTING: See 37 CFR 1.821-1.825 and MPEP §§ 2421-2431. The requirement for a sequence listing applies to all sequences disclosed in a given application, whether the sequences are claimed or not. See MPEP § 2422.01.
Examiner Note:
In this paragraph an introductory sentence will be necessary. This paragraph is intended primarily for use in pro se applications.
608.01(b) Abstract of the Disclosure [R-07.2015]
37 CFR 1.72 Title and abstract. *****
(b) A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading “Abstract” or “Abstract of the Disclosure.” The sheet or sheets presenting the abstract may not include other parts of the application or other material.
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The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length. The purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.
The Office of Patent Application Processing (OPAP) will review all applications filed under 35 U.S.C. 111(a) for compliance with 37 CFR 1.72 and will require an abstract, if one has not been filed. In all other applications which lack an abstract, the examiner in the first Office action should require the submission of an abstract directed to the technical disclosure in the specification. See Form Paragraph 6.12 (below). Applicants may use either “Abstract” or “Abstract of the Disclosure” as a heading.
If the abstract contained in the application does not comply with the guidelines, the examiner should point out the defect to the applicant in the first Office action, or at the earliest point in the prosecution that the defect is noted, and require compliance with the guidelines. Since the abstract of the disclosure has been interpreted to be a part of the specification for the purpose of compliance with 35 U.S.C. 112 ( In re Armbruster, 512 F.2d 676, 678-79, 185 USPQ 152, 154 (CCPA 1975)), it would ordinarily be preferable that the applicant make the necessary changes to the abstract to bring it into compliance with the guidelines. See Form Paragraphs 6.13-6.16 (below).
Replies to such actions requiring either a new abstract or amendment to bring the abstract into compliance with the guidelines should be treated under 37 CFR 1.111(b) practice like any other formal matter. Any submission of a new abstract or amendment to an existing abstract should be carefully reviewed for introduction of new matter, 35 U.S.C. 132, MPEP § 608.04. The abstract will be printed on the patent.
Upon passing the application to issue, the examiner should make certain that the abstract is an adequate and clear statement of the contents of the disclosure and generally in line with the guidelines. If the application is otherwise in condition for allowance except that the abstract does not comply with the guidelines, the examiner generally should make any necessary revisions by a formal examiner’s amendment after obtaining applicant’s authorization
(see MPEP § 1302.04) rather than issuing an Ex parte Quayle action requiring applicant to make the necessary revisions.
I. GUIDELINES FOR THE PREPARATION OF PATENT ABSTRACTS
A. Background
The Rules of Practice in Patent Cases require that each application for patent include an abstract of the disclosure, 37 CFR 1.72(b).
The content of a patent abstract should be such as to enable the reader thereof, regardless of his or her degree of familiarity with patent documents, to determine quickly from a cursory inspection of the abstract the nature and gist of the technical disclosure and that which is new in the art to which the invention pertains.
B. Content
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure.
If the patent is in the nature of an improvement in old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps. Extensive mechanical and design details of apparatus should not be included in the abstract.
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With regard particularly to chemical patents, for compounds or compositions, the general nature of the compound or composition should be given as well as the use thereof, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
C. Language and Format
The abstract must commence on a separate sheet, preferably following the claims, under the heading “Abstract” or “Abstract of the Disclosure.” The sheet or sheets presenting the abstract may not include other parts of the application or other material. Form paragraph 6.16.01 (below) may be used if the abstract does not commence on a separate sheet. Note that the abstract for a national stage application filed under 35 U.S.C. 371 may be found on the front page of the Patent Cooperation Treaty publication (i.e., pamphlet). See MPEP § 1893.03(e).
The abstract should be in narrative form and generally limited to a single paragraph preferably within the range of 50 to 150 words in length. The abstract should not exceed 15 lines of text. Abstracts exceeding 15 lines of text or 150 words should be checked to see that they are as concise as the disclosure permits. The form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. The abstract should sufficiently describe the disclosure to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “This disclosure concerns,” “The disclosure defined by this invention,” “This disclosure describes,” etc.
D. Responsibility
Preparation of the abstract is the responsibility of the applicant. Background knowledge of the art and an appreciation of the applicant’s contribution to the art are most important in the preparation of the
abstract. The review of the abstract for compliance with these guidelines is the responsibility of the examiner. Any necessary amendment to the abstract at the time of allowance or a printer query must be made either by the applicant or by the examiner with applicant’s approval. See MPEP § 1302.04.
E. Sample Abstracts
(1) A heart valve which has an annular valve body defining an orifice and a plurality of struts forming a pair of cages on opposite sides of the orifice. A spherical closure member is captively held within the cages and is moved by blood flow between open and closed positions in check valve fashion. A slight leak or backflow is provided in the closed position by making the orifice slightly larger than the closure member. Blood flow is maximized in the open position of the valve by providing an inwardly convex contour on the orifice-defining surfaces of the body. An annular rib is formed in a channel around the periphery of the valve body to anchor a suture ring used to secure the valve within a heart.
(2) A method for sealing whereby heat is applied to seal, overlapping closure panels of a folding box made from paperboard having an extremely thin coating of moisture-proofing thermoplastic material on opposite surfaces. Heated air is directed at the surfaces to be bonded, the temperature of the air at the point of impact on the surfaces being above the char point of the board. The duration of application of heat is made so brief, by a corresponding high rate of advance of the boxes through the air stream, that the coating on the reverse side of the panels remains substantially non-tacky. Under such conditions the heat applied to soften the thermoplastic coating is dissipated after completion of the bond by absorption into the board acting as a heat sink without the need for cooling devices.
(3) Amides are produced by reacting an ester of a carbonized acid with an amine, using as catalyst an dioxide of an alkali
metal. The ester is first heated to at least 75°C under a pressure of no more than 500 mm. of mercury to remove moisture and acid gases which would prevent the reaction, and then converted to an amide without heating to initiate the reaction.
F. Form Paragraphs
¶ 6.12 Abstract Missing (Background)
This application does not contain an abstract of the disclosure as required by 37 CFR 1.72(b). An abstract on a separate sheet is required.
Examiner Note:
1. For a pro se applicant, consider following this paragraph with form paragraphs 6.14 to 6.16 as applicable.
2. This form paragraph should not be used during the national stage prosecution of international applications (“371
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applications”) if an abstract was published with the international application under PCT Article 21.
¶ 6.13 Abstract Objected To
The abstract of the disclosure is objected to because [1]. Correction is required. See MPEP § 608.01(b).
Examiner Note:
1. In bracket 1, indicate the informalities that require correction such as the inclusion of legal phraseology, undue length, etc.
2. For a pro se applicant, this paragraph should be followed by form paragraphs 6.14 to 6.16 as applicable.
¶ 6.14 Abstract of the Disclosure: Content
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps. Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Examiner Note:
See form paragraph 6.16
¶ 6.15 Abstract of the Disclosure: Chemical Cases
Applicant is reminded of the proper content of an abstract of the disclosure.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.”
Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
Examiner Note:
See also form paragraphs 6.12 – 6.14 and 6.16.
¶ 6.16 Abstract of the Disclosure: Language
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet preferably within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Examiner Note:
See also form paragraph 6.12 - 6.15.
¶ 6.16.01 Abstract of the Disclosure: Placement
The abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR 1.52(b)(4) and 1.72(b). A new abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.
Examiner Note:
1. 37 CFR 1.72(b) requires that the abstract be set forth on a separate sheet. This requirement applies to amendments to the abstract as well as to the initial filing of the application.
2. This form paragraph should not be used during the national stage prosecution of international applications (“371 applications”) if an abstract was published with the international application under PCT Article 21.
608.01(c) Background of the Invention [R-07.2015]
The Background of the Invention may (but is not required to) include the following parts:
(1) Field of the Invention: A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions. The statement
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should be directed to the subject matter of the claimed invention.
(2) Description of the related art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98: A paragraph(s) describing to the extent practical the state of the prior art or other information disclosed known to the applicant, including references to specific prior art or other information where appropriate. Where applicable, the problems involved in the prior art or other information disclosed which are solved by the applicant’s invention should be indicated. See also MPEP § 608.01(a), § 608.01(p) and § 707.05(b).
608.01(d) Brief Summary of Invention [R-07.2015]
37 CFR 1.73 Summary of the invention.
A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description. Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.
Since the purpose of the brief summary of invention is to apprise the public, and more especially those interested in the particular art to which the invention relates, of the nature of the invention, the summary should be directed to the specific invention being claimed, in contradistinction to mere generalities which would be equally applicable to numerous preceding patents. That is, the subject matter of the invention should be described in one or more clear, concise sentences or paragraphs.
The brief summary, if properly written to set out the exact nature, operation, and purpose of the invention, will be of material assistance in aiding ready understanding of the patent in future searches. The brief summary should be more than a mere statement of the objects of the invention, which statement is also permissible under 37 CFR 1.73.
The brief summary of invention should be consistent with the subject matter of the claims. Note final
review of application and preparation for issue, MPEP § 1302.
608.01(e) Reservation Clauses Not Permitted [R-08.2012]
37 CFR 1.79 Reservation clauses not permitted.
A reservation for a future application of subject matter disclosed but not claimed in a pending application will not be permitted in the pending application, but an application disclosing unclaimed subject matter may contain a reference to a later filed application of the same applicant or owned by a common assignee disclosing and claiming that subject matter.
608.01(f) Brief Description of Drawings [R-07.2015]
37 CFR 1.74 Reference to drawings.
When there are drawings, there shall be a brief description of the several views of the drawings and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures, and to the different parts by use of reference letters or numerals (preferably the latter).
The Office of Patent Application Processing (OPAP) will review the specification, including the brief description, to determine whether all of the figures of drawings described in the specification are present. If the specification describes a figure which is not present in the drawings or lacks any drawings if the application, other than a design application, is filed on or after December 18, 2013, the application will be treated as an application filed without all figures of drawings in accordance with MPEP § 601.01(g). If the application is filed prior to December 18, 2013 or is a design application and lacks any drawings, the application will be treated as an application filed without drawings in accordance with MPEP § 601.01(f).
The examiner should see to it that the figures are correctly described in the brief description of the drawing, that all section lines used are referred to, and that all needed section lines are used. If the drawings show Figures 1A, 1B, and 1C and the brief description of the drawings refers only to Figure 1, the examiner should object to the brief description, and require applicant to provide a brief description of Figures 1A, 1B, and 1C.
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The specification must contain or be amended to contain proper reference to the existence of drawings executed in color as required by 37 CFR 1.84.
37 CFR 1.84 Standards for drawings.
(a) Drawings. There are two acceptable categories for presenting drawings in utility and design patent applications.
(1) Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings; or
(2) Color. Color drawings are permitted in design applications. Where a design application contains color drawings, the application must include the number of sets of color drawings required by paragraph (a)(2)(ii) of this section and the specification must contain the reference required by paragraph (a)(2)(iii) of this section. On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application. The color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color drawings are not permitted in international applications (see PCT Rule 11.13). The Office will accept color drawings in utility patent applications only after granting a petition filed under this paragraph explaining why the color drawings are necessary. Any such petition must include the following:
(i) The fee set forth in § 1.17(h);
(ii) One (1) set of color drawings if submitted via the Office electronic filing system, or three (3) sets of color drawings if not submitted via the Office electronic filing system; and
(iii) An amendment to the specification to insert (unless the specification contains or has been previously amended to contain) the following language as the first paragraph of the brief description of the drawings:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
(b) Photographs.—
(1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots ( e.g., immunological, western, Southern, and northern), auto- radiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits
of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.
(2) Color photographs. Color photographs will be accepted in utility and design patent applications if the conditions for accepting color drawings and black and white photographs have been satisfied. See paragraphs (a)(2) and (b)(1) of this section.
*****
(y) Types of drawings . See § 1.152 for design drawings, § 1.1026 for international design reproductions, § 1.165 for plant drawings, and § 1.173(a)(2) for reissue drawings.
608.01(g) Detailed Description of Invention [R-11.2013]
A detailed description of the invention and drawings follows the general statement of invention and brief description of the drawings. This detailed description, required by 37 CFR 1.71, MPEP § 608.01, must be in such particularity as to enable any person skilled in the pertinent art or science to make and use the invention without involving extensive experimentation. An applicant is ordinarily permitted to use his or her own terminology, as long as it can be understood. Necessary grammatical corrections, however, should be required by the examiner, but it must be remembered that an examination is not made for the purpose of securing grammatical perfection.
The reference characters must be properly applied, no single reference character being used for two different parts or for a given part and a modification of such part. See 37 CFR 1.84(p). Every feature specified in the claims must be illustrated, but there should be no superfluous illustrations.
The description is a dictionary for the claims and should provide clear support or antecedent basis for all terms used in the claims. See 37 CFR 1.75, MPEP § 608.01(i), § 608.01(o), and § 1302.01, and § 2111.01.
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For completeness of the specification, see MPEP § 608.01(p).
608.01(h) Mode of Operation of Invention [R-11.2013]
The best mode contemplated by the inventor of carrying out his or her invention must be set forth in the description. See 35 U.S.C. 112. There is no statutory requirement for the disclosure of a specific example. A patent specification is not intended nor required to be a production specification. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d
1524, 1536, 3 USPQ2d 1737, 1745 (Fed. Cir. 1987); In re Gay, 309 F.2d 769, 135 USPQ 311 (CCPA
1962). The absence of a specific working example is not necessarily evidence that the best mode has not been disclosed, nor is the presence of one evidence that it has. In re Honn, 364 F.2d 454, 150 USPQ 652 (CCPA 1966). In determining the adequacy of a best mode disclosure, only evidence of concealment (accidental or intentional) is to be considered. That evidence must tend to show that the quality of an applicant’s best mode disclosure is so poor as to effectively result in concealment. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d
1524, 1536, 3 USPQ2d 1737, 1745 (Fed. Cir. 1987); In re Sherwood, 613 F.2d 809, 204 USPQ 537
(CCPA 1980).
The question of whether an inventor has or has not disclosed what he or she feels is his or her best mode is a question separate and distinct from the question of sufficiency of the disclosure. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1532, 3 USPQ2d 1737, 1742 (Fed. Cir. 1987); In re Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974); In re Gay, 309 F.2d 769, 135 USPQ 311 (CCPA 1962). See 35 U.S.C. 112 and 37 CFR 1.71(b).
If the best mode contemplated by the inventor at the time of filing the application is not disclosed, such defect cannot be cured by submitting an amendment seeking to put into the specification something required to be there when the application was originally filed. In re Hay, 534 F.2d 917, 189 USPQ 790 (CCPA 1976). Any proposed amendment of this type should be treated as new matter.
For completeness, see MPEP § 608.01(p). For a discussion of the best mode requirement see MPEP § 2165 to § 2165.04.
608.01(i) Claims [R-08.2012]
37 CFR 1.75 Claims.
(a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
(b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.
(c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(j). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.
(d)(1) The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description (See § 1.58(a).)
(2) See §§ 1.141 to 1.146 as to claiming different inventions in one application.
(e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
(1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
(2) A phrase such as “wherein the improvement comprises,” and
(3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
(f) If there are several claims, they shall be numbered consecutively in Arabic numerals.
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§ 608.01(i)PARTS, FORM, AND CONTENT OF APPLICATION
(g) The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.
(h) The claim or claims must commence on a separate physical sheet or electronic page. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material.
(i) Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.
For numbering of claims, see MPEP § 608.01(j).
For form of claims, see MPEP § 608.01(m).
For dependent claims, see MPEP § 608.01(n).
For examination of claims, see MPEP § 706.
For claims in excess of fee, see MPEP § 714.10.
608.01(j) Numbering of Claims [R-08.2012]
37 CFR 1.126 Numbering of claims.
The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled the remaining claims must not be renumbered. When claims are added, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not). When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant.
In a single claim case, the claim is not numbered.
Form paragraph 6.17 may be used to notify applicant.
¶ 6.17 Numbering of Claims, 37 CFR 1.126
The numbering of claims is not accordance with 37 CFR 1.126, which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claim [1] been renumbered [2].
Examiner Note:
1. In bracket 1, insert appropriate claim number(s) and --has-- or -- have --.
2. In bracket 2, insert correct claim number(s) and --, respectively -- if more than one claim is involved.
608.01(k) Statutory Requirement of Claims [R-08.2012]
35 U.S.C. 112 requires that the applicant shall particularly point out and distinctly claim the subject matter which he or she regards as his or her invention. The portion of the application in which he or she does this forms the claim or claims. This is an important part of the application, as it is the definition of that for which protection is granted.
608.01(l) Claims Present on the Application Filing Date [R-07.2015]
In establishing a disclosure, applicant may rely not only on the description and drawing as filed but also on the claims present on the filing date of the application if their content justifies it.
Where subject matter not shown in the drawing or described in the description is claimed in the application as filed, and such claim itself constitutes a clear disclosure of this subject matter, then the claim should be treated on its merits, and requirement made to amend the drawing and description to show this subject matter. The claim should not be objected to or rejected because this subject matter is lacking in the drawing and description. It is the drawing and description that are defective, not the claim.
It is, of course, to be understood that this disclosure in the claim must be sufficiently specific and detailed to support the necessary amendment of the drawing and description.
608.01(m) Form of Claims [R-07.2015]
The claim or claims must commence on a separate physical sheet or electronic page and should appear after the detailed description of the invention. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other
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material. While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence starting with “I (or we) claim,” “The invention claimed is” (or the equivalent). If, at the time of allowance, the quoted terminology is not present, it is inserted by the Office of Data Management. Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i).
There may be plural indentations to further segregate subcombinations or related steps. In general, the printed patent copies will follow the format used but printing difficulties or expense may prevent the duplication of unduly complex claim formats.
Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. The reference characters, however, should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. The use of reference characters is to be considered as having no effect on the scope of the claims.
Many of the difficulties encountered in the prosecution of patent applications after final rejection may be alleviated if each applicant includes, at the time of filing or no later than the first reply, claims varying from the broadest to which he or she believes he or she is entitled to the most detailed that he or she is willing to accept.
Claims should preferably be arranged in order of scope so that the first claim presented is the least restrictive. All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Where separate species are claimed, the claims of like species should be grouped together where possible. Similarly, product and process claims should be separately grouped. Such arrangements are for the purpose of facilitating classification and examination.
The form of claim required in 37 CFR 1.75(e) is particularly adapted for the description of improvement-type inventions. It is to be considered a combination claim. The preamble of this form of claim is considered to positively and clearly include all the elements or steps recited therein as a part of the claimed combination.
The following form paragraphs may be used to object to the form of the claims.
¶ 6.18.01 Claims: Placement
The claims in this application do not commence on a separate sheet or electronic page in accordance with 37 CFR 1.52(b)(3) and 1.75(h). Appropriate correction is required in response to this action.
¶ 7.29.01 Claims Objected to, Minor Informalities
Claim[1] objected to because of the following informalities: [2]. Appropriate correction is required.
Examiner Note:
1. Use this form paragraph to point out minor informalities such as spelling errors, inconsistent terminology, etc., which should be corrected.
2. If the informalities render the claim(s) indefinite, use form paragraph 7.34.01 instead to reject the claim(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph.
¶ 7.29.02 Claims Objected to, Reference Characters Not Enclosed Within Parentheses
The claims are objected to because they include reference characters which are not enclosed within parentheses.
Reference characters corresponding to elements recited in the detailed description of the drawings and used in conjunction with the recitation of the same element or group of elements in the claims should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. See MPEP § 608.01(m).
Examiner Note:
1. If the lack of parentheses renders the claim(s) indefinite, use form paragraph 7.34.01 instead to reject the claim(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph.
¶ 7.29.03 Claims Objected to, Spacing of Lines
The claims are objected to because the lines are crowded too closely together, making reading difficult. Substitute claims with lines one and one-half or double spaced on good quality paper are required. See 37 CFR 1.52(b).
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§ 608.01(m)PARTS, FORM, AND CONTENT OF APPLICATION
Amendments to the claims must be in compliance with 37 CFR 1.121(c).
608.01(n) Dependent Claims [R-07.2015]
I. MULTIPLE DEPENDENT CLAIMS
35 U.S.C. 112 Specification.
*****
(e) REFERENCE IN MULTIPLE DEPENDENT FORM. — A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
*****
37 CFR 1.75 Claim(s). *****
(c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(j). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.
*****
Generally, a multiple dependent claim is a dependent claim which refers back in the alternative to more than one preceding independent or dependent claim.
35 U.S.C. 112(e), authorizes multiple dependent claims in applications as long as they are in the alternative form (e.g., “A machine according to claims 3 or 4, further comprising ---”). Cumulative claiming (e.g., “A machine according to claims 3 and 4, further comprising ---”) is not permitted. A multiple dependent claim may refer in the alternative
to only one set of claims. A claim such as “A device as in claims 1, 2, 3, or 4, made by a process of claims 5, 6, 7, or 8” is improper. 35 U.S.C. 112 allows reference to only a particular claim. Furthermore, a multiple dependent claim may not serve as a basis for any other multiple dependent claim, either directly or indirectly. These limitations help to avoid undue confusion in determining how many prior claims are actually referred to in a multiple dependent claim.
A multiple dependent claim which depends from another multiple dependent claim should be objected to by using form paragraph 7.45.
¶ 7.45 Improper Multiple Dependent Claims
Claim [1] objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim [2]. See MPEP § 608.01(n). Accordingly, the claim [3] not been further treated on the merits.
Examiner Note:
1. In bracket 2, insert --should refer to other claims in the alternative only--, and/or, --cannot depend from any other multiple dependent claim--.
2. Use this paragraph rather than 35 U.S.C. 112(e) or 35 U.S.C. 112 (pre-AIA), fifth paragraph.
3. In bracket 3, insert --has-- or --s have--.
Assume each claim example given below is from a different application.
A. Acceptable Multiple Dependent Claim Wording
Claim 5. A gadget according to claims 3 or 4, further comprising ---
Claim 5. A gadget as in any one of the preceding claims, in which ---
Claim 5. A gadget as in any one of claims 1, 2, and 3, in which ---
Claim 3. A gadget as in either claim 1 or claim 2, further comprising ---
Claim 4. A gadget as in claim 2 or 3, further comprising ---
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Claim 16. A gadget as in claims 1, 7, 12, or 15, further comprising ---
Claim 5. A gadget as in any of the preceding claims, in which ---
Claim 8. A gadget as in one of claims 4-7, in which ---
Claim 5. A gadget as in any preceding claim, in which ---
Claim 10. A gadget as in any of claims 1-3 or 7-9, in which ---
Claim 11. A gadget as in any one of claims 1, 2, or 7-10 inclusive, in which ---
B. Unacceptable Multiple Dependent Claim Wording
1. Claim Does Not Refer Back in the Alternative Only
Claim 5. A gadget according to claim 3 and 4, further comprising ---
Claim 9. A gadget according to claims 1-3, in which ---
Claim 9. A gadget as in claims 1 or 2 and 7 or 8, which ---
Claim 6. A gadget as in the preceding claims in which ---
Claim 6. A gadget as in claims 1, 2, 3, 4 and/or 5, in which ---
Claim 10. A gadget as in claims 1-3 or 7-9, in which ---
2. Claim Does Not Refer to a Preceding Claim
Claim 3. A gadget as in any of the following claims, in which ---
Claim 5. A gadget as in either claim 6 or claim 8, in which ---
3. Reference to Two Sets of Claims to Different Features
Claim 9. A gadget as in claim 1 or 4 made by the process of claims 5, 6, 7, or 8, in which ---
4. Reference Back to Another Multiple Dependent Claim
Claim 8. A gadget as in claim 5 (claim 5 is a multiple dependent claim) or claim 7, in which ---
35 U.S.C. 112 indicates that the limitations or elements of each claim incorporated by reference into a multiple dependent claim must be considered separately. Thus, a multiple dependent claim, as such, does not contain all the limitations of all the alternative claims to which it refers, but rather contains in any one embodiment only those limitations of the particular claim referred to for the embodiment under consideration. Hence, a multiple dependent claim must be considered in the same manner as a plurality of single dependent claims.
C. Restriction Practice
For restriction purposes, each embodiment of a multiple dependent claim is considered in the same manner as a single dependent claim. Therefore, restriction may be required between the embodiments of a multiple dependent claim. Also, some embodiments of a multiple dependent claim may be held withdrawn while other embodiments are considered on their merits.
D. Handling of Multiple Dependent Claims by the Office of Patent Application Processing
The Office of Patent Application Processing (OPAP) is responsible for verifying whether multiple dependent claims filed with the application are in proper alternative form, that they depend only upon prior independent or single dependent claims and also for calculating the amount of the filing fee. Form PTO/SB/07 has been designed to be used in conjunction with the current fee calculation form PTO/SB/06.
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§ 608.01(n)PARTS, FORM, AND CONTENT OF APPLICATION
E. Handling of Multiple Dependent Claims by the Technology Center Technical Support Staff
The Technology Center (TC) technical support staff is responsible for verifying compliance with the statute and rules of multiple dependent claims added by amendment and for calculating the amount of any additional fees required. This calculation should be performed on form PTO/SB/07.
There is no need for a TC technical support staff to check the accuracy of the initial filing fee since this has already been verified by the Office of Patent Application Processing.
If a multiple dependent claim (or claims) is added in an amendment without the proper fee, either by adding references to prior claims or by adding a new multiple dependent claim, the amendment should not be entered until the fee has been received. In view of the requirements for multiple dependent claims, no amendment containing new claims or changing the dependency of claims should be entered before checking whether the paid fees cover the costs of the amended claims. The applicant, or his or her attorney or agent, should be contacted to pay the additional fee. Where a letter is written in an insufficient fee situation, a copy of the multiple dependent claim fee calculation, form PTO/SB/07 should be included for applicant’s information.
Where the TC technical support staff notes that the reference to the prior claims is improper in an added or amended multiple dependent claim, a notation should be made in the left margin next to the claim itself and the number 1, which is inserted in the “Dep. Claim” column of that amendment on form PTO/SB/07 should be circled in order to call this matter to the examiner’s attention.
F. Handling of Multiple Dependent Claims by the Examiner
Pursuant to 35 U.S.C. 112 and 37 CFR 1.75(c), a claim in dependent form must refer only to a claim or claims previously set forth. The following procedures are to be followed by examiners when faced with claims which refer to numerically succeeding claims:
If any series of dependent claims contains a claim with an improper reference to a numerically following claim which cannot be understood, the claim referring to a following claim should normally be objected to and not treated on the merits.
However, in situations where a claim refers to a numerically following claim and the dependency is clear, both as presented and as it will be renumbered at issue, all claims should be examined on the merits and no objection as to form need be made. In such cases, an examiner’s amendment should be prepared if the order of the claims is changed. (See Example B, below.)
Any unusual problems should be brought to the supervisor’s attention.
Example A
(Claims 4 and 6 should be objected to as not being understood and should not be treated on the merits.)
1. Independent
2. Dependent on claim 5
3. Dependent on claim 2
4. “. . . as in any preceding claim”
5. Independent
6. Dependent on claim 4
Example B
Note: Parenthetical numerals represent the claim numbering for issue should all claims be allowed.
(All claims should be examined.)
1. (1) Independent
2. (5) Dependent on claim 5 (4)
3. (2) Dependent on claim 1 (1)
4. (3) Dependent on claim 3 (2)
5. (4) Dependent on either claim 1 (1) or claim 3 (2)
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The following practice is followed by patent examiners when making reference to a dependent claim either singular or multiple:
(A) When identifying a singular dependent claim which does not include a reference to a multiple dependent claim, either directly or indirectly, reference should be made only to the number of the dependent claim.
(B) When identifying the embodiments included within a multiple dependent claim, or a singular dependent claim which includes a reference to a multiple dependent claim, either directly or indirectly, each embodiment should be identified by using the number of the claims involved, starting with the highest, to the extent necessary to specifically identify each embodiment.
(C) When all embodiments included within a multiple dependent claim or a singular dependent claim which includes a reference to a multiple dependent claim, either directly or indirectly, are subject to a common rejection, objection, or requirement, reference may be made only to the number of the dependent claim.
The following table illustrates the current practice where each embodiment of each claim must be treated on an individual basis:
Approved practice
Identification All claims
Claim dependency
Claim No.
11Independent1 22/1Depends from 12 33/2/1Depends from 23 4/2 4/34/2/1 4/3/2/1Depends from 2
or 3 4
55/3/2/1Depends from 35 6/2 6/3 6/56/2/1 6/3/2/1
6/5/3/2/1 Depends from 2, 3, or 5
6
7/6/2 7/6/3 7/6/5
7/6/2/1 7/6/3/2/1 7/6/5/3/2/1
Depends from 67
When all embodiments in a multiple dependent claim situation (claims 4, 6, and 7 above) are subject to a common rejection, objection, or requirements, reference may be made to the number of the individual dependent claim only. For example, if 4/2 and 4/3 were subject to a common ground of
rejection, reference should be made only to claim 4 in the statement of that rejection.
The provisions of 35 U.S.C. 132 require that each Office action make it explicitly clear what rejection, objection and/or requirement is applied to each claim embodiment.
G. Fees for Multiple Dependent Claims
1. Use of Form PTO/SB/07
To assist in the computation of the fees for multiple dependent claims, a separate “Multiple Dependent Claim Fee Calculation Sheet,” form PTO/SB/07 has been designed for use with the current “Patent Application Fee Determination Record,” form PTO/SB/06. Form PTO/SB/07 will be placed in the application file by the Office of Patent Application Processing (OPAP) where multiple dependent claims are in the application as filed or submitted in response to an OPAP notice requiring claims. If multiple dependent claims are not included upon filing or submitted in response to an OPAP notice requiring claims, but are later added by amendment, the TC technical support staff will place the form in the application file. If there are multiple dependent claims in the application, the total number of independent and dependent claims for fee purposes will be calculated on form PTO/SB/07 and the total number of claims and number of independent claims is then placed on form PTO/SB/06 for final fee calculation purposes.
2. Calculation of Fees
(a) Proper Multiple Dependent Claim
35 U.S.C. 41(a), provides that claims in proper multiple dependent form may not be considered as single dependent claims for the purpose of calculating fees. Thus, a multiple dependent claim is considered to be that number of dependent claims to which it refers. Any proper claim depending directly or indirectly from a multiple dependent claim is also considered as the number of dependent claims as referred to in the multiple dependent claim from which it depends.
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§ 608.01(n)PARTS, FORM, AND CONTENT OF APPLICATION
(b) Improper Multiple Dependent Claim
If none of the multiple dependent claims is proper, the multiple dependent claim fee set forth in 37 CFR 1.16(j) will not be required. However, the multiple dependent claim fee is required if at least one multiple dependent claim is proper.
If any multiple dependent claim is improper, OPAP may indicate that fact by placing an encircled numeral “1” in the “Dep. Claims” column of form
PTO/SB/07. The fee for any improper multiple dependent claim, whether it is defective for either not being in the alternative form or for being directly or indirectly dependent on a prior multiple dependent claim, will only be one, since only an objection to the form of such a claim will normally be made. This procedure also greatly simplifies the calculation of fees. Any claim depending from an improper multiple dependent claim will also be considered to be improper and be counted as one dependent claim.
(c) Fee calculation example
i) Comments On Fee Calculation Example
Claim 1 — This is an independent claim; therefore, a numeral “1” is placed opposite claim number 1 in the “Ind.” column.
Claim 2 — Since this is a claim dependent on a single independent claim, a numeral “1” is placed opposite claim number 2 of the “Dep.” column.
Claim 3 — Claim 3 is also a single dependent claim, so a numeral “1” is placed in the “Dep.” column.
Claim 4 — Claim 4 is a proper multiple dependent claim. It refers directly to two claims in the alternative, namely, claim 2 or 3. Therefore, a numeral “2” to indicate direct reference to two claims is placed in the “Dep.” column opposite claim number 4.
Claim 5 — This claim is a singularly dependent claim depending from a multiple dependent claim. For fee calculation purposes, such a claim is counted as being that number of claims to which direct reference is made in the multiple dependent claim from which it depends. In this case, the multiple dependent claim number 4 it depends from counts as 2 claims; therefore, claim 5 also counts as 2 claims. Accordingly, a numeral “2” is placed opposite claim number 5 in the “Dep.” column.
Claim 6 — Claim 6 depends indirectly from a multiple dependent claim 4. Since claim 4 counts as 2 claims, claim 6 also counts as 2 dependent claims. Consequently, a numeral “2” is placed in the “Dep.” column after claim 6.
Claim 7 — This claim is a multiple dependent claim since it refers to claims 4, 5, or 6. However, as can be seen by looking at the “2” in the “Dep.” column
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opposite claim 4, claim 7 depends from a multiple dependent claim. This practice is improper under 35 U.S.C.112 and 37 CFR 1.75(c). Following the procedure for calculating fees for improper multiple dependent claims, a numeral “1” is placed in the “Dep.” column with a circle drawn around it to alert the examiner that the claim is improper.
Claim 8 — Claim 8 is improper since it depends from an improper claim. If the base claim is in error, this error cannot be corrected by adding additional claims depending therefrom. Therefore, a numeral “1” with a circle around it is placed in the “Dep.” column.
Claim 9 — Here again we have an independent claim which is always indicated with a numeral “1” in the “Ind.” column opposite the claim number.
Claim 10 — This claim refers to two independent claims in the alternative. A numeral “2” is, therefore, placed in the “Dep.” column opposite claim 10.
Claim 11 — Claim 11 is a dependent claim which refers to two claims in the conjunctive (“1” and “9”) rather than in the alternative (“1” or “9”). This form is improper under 35 U.S.C. 112 and 37 CFR 1.75(c). Accordingly, since claim 11 is improper, an encircled number “1” is placed in the “Dep.” column opposite Claim 11.
ii) Calculation of Fee in Fee Example
After the number of “Ind.” and “Dep.” claims are noted on form PTO/SB/07, each column is added. In this example, there are 2 independent claims and 13 dependent claims or a total of 15 claims. The number of independent and total claims can then be placed on form PTO/SB/06 and the fee calculated.
II. TREATMENT OF IMPROPER DEPENDENT CLAIMS
The initial determination, for fee purposes, as to whether a claim is dependent must be made by persons other than examiners; it is necessary, at that time, to accept as dependent virtually every claim which refers to another claim, without determining whether there is actually a true dependent relationship. The initial acceptance of a claim as a
dependent claim does not, however, preclude a subsequent holding by the examiner that a claim is not a proper dependent claim.
The fact that a dependent claim which is otherwise proper might relate to a separate invention which would require a separate search or be separately classified from the claim on which it depends would not render it an improper dependent claim.
The fact that the independent and dependent claims are in different statutory classes does not, in itself, render the latter improper. Thus, if claim 1 recites a specific product, a claim for the method of making the product of claim 1 in a particular manner would be a proper dependent claim since it could not be infringed without infringing claim 1. Similarly, if claim 1 recites a method of making a product, a claim for a product made by the method of claim 1 could be a proper dependent claim. On the other hand, if claim 1 recites a method of making a specified product, a claim to the product set forth in claim 1 would not be a proper dependent claim since it is conceivable that the product claim can be infringed without infringing the base method claim if the product can be made by a method other than that recited in the base method claim.
When examining a dependent claim, the examiner should determine whether the claim complies with 35 U.S.C. 112(d), which requires that dependent claims contain a reference to a previous claim in the same application, specify a further limitation of the subject matter claimed, and include all the limitations of the previous claim. If the dependent claim does not comply with the requirements of 35 U.S.C. 112(d), the examiner should reject the dependent claim under 35 U.S.C. 112(d) as unpatentable rather than objecting to the claim. See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92, 79 USPQ2d 1583, 1589-90 (Fed. Cir. 2006) (holding a dependent claim in a patent invalid for failure to comply with pre-AIA 35 U.S.C. 112, fourth paragraph (now 35 U.S.C. 112(d))). Although the requirements of 35 U.S.C. 112(d) are related to matters of form, non-compliance with 35 U.S.C. 112(d) renders the claim unpatentable just as non-compliance with other paragraphs of 35 U.S.C. 112 would. For example, a dependent claim must be rejected under 35 U.S.C. 112(d) if it omits an
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element from the claim upon which it depends or it fails to add a limitation to the claim upon which it depends.
Claims which are in improper dependent form for failing to further limit the subject matter of a previous claim, or for not including every limitation of the claim from which it depends, should be rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph by using form paragraphs 7.36 and 7.36.01.
¶ 7.36 Statement of Statutory Basis, 35 U.S.C. 112(d) and Pre-AIA 35 U.S.C. 112, Fourth Paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Examiner Note:
1. The statute is no longer being recited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.
2. Form paragraph 7.36 is to be used ONLY ONCE in a given Office action.
¶ 7.36.01 Rejection under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th Paragraph, Improper Dependent Claim
Claim [1] rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. [2]. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Examiner Note:
1. In bracket 2, insert an explanation of what is in the claim and why it does not constitute a further limitation.
2. The U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of pre-AIA 35 U.S.C. 112, 4th paragraph, are related to matters of form, non-compliance with pre-AIA 35 U.S.C. 112, 4th paragraph, renders the claim unpatentable just as non-compliance with other paragraphs of 35 U.S.C. 112 would. See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92, 79 USPQ2d 1583, 1589-90 (Fed. Cir. 2006) (holding a dependent claim in a patent invalid for failure to comply with pre-AIA 35 U.S.C. 112, 4th paragraph). Therefore, if a dependent claim does not comply with the requirements of 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, the dependent claim should be rejected under pre-AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as unpatentable rather than objecting to the claim. See also MPEP § 608.01(n), subsection III, “Infringement Test” for dependent claims.
3. This form paragraph must be preceded by form paragraph 7.36.
III. INFRINGEMENT TEST
The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends (35 U.S.C. 112(d)) or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim. Another requirement is that the dependent claim must specify a further limitation(s) of the subject matter claimed.
A dependent claim does not lack compliance with 35 U.S.C. 112(d) simply because there is a question as to the significance of the further limitation added by the dependent claim.
Thus, for example, if claim 1 recites the combination of elements A, B, C, and D, a claim reciting the structure of claim 1 in which D was omitted or replaced by E would not be a proper dependent claim, even though it placed further limitations on the remaining elements or added still other elements.
Examiners are reminded that a dependent claim is directed to a combination including everything recited in the base claim and what is recited in the dependent claim. It is this combination that must be compared with the prior art, exactly as if it were presented as one independent claim.
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IV. CLAIM FORM AND ARRANGEMENT
A singular dependent claim 2 could read as follows:
2. The product of claim 1 in which . . . .
A series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim.
A claim which depends from a dependent claim should not be separated therefrom by any claim which does not also depend from said “dependent claim.” It should be kept in mind that a dependent claim may refer back to any preceding independent claim. These are the only restrictions with respect to the sequence of claims and, in general, applicant’s sequence should not be changed. See MPEP § 608.01(j). Applicant may be so advised by using form paragraph 6.18.
¶ 6.18 Series of Singular Dependent Claims
A series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim.
A claim which depends from a dependent claim should not be separated by any claim which does not also depend from said dependent claim. It should be kept in mind that a dependent claim may refer to any preceding independent claim. In general, applicant’s sequence will not be changed. See MPEP § 608.01(n).
During prosecution, the order of claims may change and be in conflict with the requirement that dependent claims refer to a preceding claim. Accordingly, the numbering of dependent claims and the numbers of preceding claims referred to in dependent claims should be carefully checked when claims are renumbered upon allowance.
V. REJECTION AND OBJECTION
If the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be rejected as incomplete. If the base claim is rejected, the dependent claim should be objected to rather than rejected, if it is otherwise allowable.
Form paragraph 7.43 can be used to state the objection.
¶ 7.43 Objection to Claims, Allowable Subject Matter
Claim [1] objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
608.01(o) Basis for Claim Terminology in Description [R-07.2015]
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
Usually the terminology of the claims present on the filing date of the application follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
New claims, including claims first presented after the application filing date where no claims were submitted on filing, and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103. Note that examiners should ensure that the terms and phrases used in claims presented late in prosecution of the application (including claims amended via an examiner’s amendment) find clear support or
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antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description, see 37 CFR 1.75(d)(1). If the examiner determines that the claims presented late in prosecution do not comply with 37 CFR 1.75(d)(1), applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the terms appearing in the claims provided no new matter is introduced.
The specification should be objected to if it does not provide proper antecedent basis for the claims by using form paragraph 7.44.
¶ 7.44 Claimed Subject Matter Not in Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: [1]
608.01(p) Completeness of Specification [R-07.2015]
Newly filed applications obviously failing to disclose an invention with the clarity required are discussed in MPEP § 702.01.
The contents of an application, to be complete, must include a specification containing a written description of the invention using such description and details as to enable any person skilled in the art or science to which the invention pertains to make and use the invention as of its filing date. See 35 U.S.C. 112. At least one specific operative embodiment or example of the invention must be set forth. The example(s) and description should be of sufficient scope as to justify the scope of the claims.
For the written description requirement, an applicant’s specification must reasonably convey to those skilled in the art that the applicant was in possession of the claimed invention as of the date of invention. See MPEP § 2163 et seq. for further guidance with respect to the evaluation of a patent application for compliance with the written description requirement.
An applicant’s specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation. The fact that experimentation is complex, however, will not make it undue if a person of skill in the art typically engages in such complex experimentation. See MPEP § 2164 et seq. for detailed guidance with regard to the enablement requirement of 35 U.S.C. 112.
See also MPEP § 2161.01 regarding computer programming and 35 U.S.C. 112; and MPEP § 2181 and § 2185 regarding 35 U.S.C. 112 in the context of functional claims.
The specification should include a statement which identifies a specific and substantial credible utility for the claimed invention. This usually presents no problem in mechanical or electrical cases. Questions regarding compliance with the utility requirement arise more often in biotechnological or chemical cases.
For “Guidelines For Examination Of Applications For Compliance With The Utility Requirement of 35 U.S.C. 101,” see MPEP § 2107.
For “General Principles Governing Utility Rejections,” see MPEP § 2107.01.
For a discussion of the utility requirement under 35 U.S.C. 111(a) in drug cases, see MPEP § 2107.03 and § 2164.06(a).
For “Procedural Considerations Related to Rejections for Lack of Utility,” see MPEP § 2107.02.
For “Special Considerations forAsserted Therapeutic or Pharmacological Utilities,” see MPEP § 2107.03.
I. INCORPORATION BY REFERENCE
37 CFR 1.57 Incorporation by reference.
[Editor Note: Paragraph (a) below is only applicable to patent applications filed under 35 U.S.C. 111(a) on or after December 18, 2013.]
(a) Subject to the conditions and requirements of this paragraph, a reference made in the English language in an application data sheet in accordance with § 1.76 upon the filing
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of an application under 35 U.S.C. 111(a) to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a) for purposes of a filing date under § 1.53(b).
(1) If the applicant has provided a correspondence address (§ 1.33(a)), the applicant will be notified and given a period of time within which to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i) if it is in a language other than English, and pay the surcharge required by § 1.16(f), to avoid abandonment. Such a notice may be combined with a notice under § 1.53(f).
(2) If the applicant has not provided a correspondence address (§ 1.33(a)), the applicant has three months from the filing date of the application to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i) if it is in a language other than English, and pay the surcharge required by § 1.16(f), to avoid abandonment.
(3) An application abandoned under paragraph (a)(1) or (a)(2) of this section shall be treated as having never been filed, unless:
(i) The application is revived under § 1.137; and
(ii) A copy of the specification and any drawings of the previously filed application are filed in the Office.
(4) A certified copy of the previously filed application must be filed in the Office, unless the previously filed application is an application filed under 35 U.S.C. 111 or 363, or the previously filed application is a foreign priority application and the conditions set forth in § 1.55(i) are satisfied with respect to such foreign priority application. The certified copy of the previously filed application, if required by this paragraph, must be filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, or be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).
(b) Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application, or a claim under § 1.78 for the benefit of a prior-filed provisional, nonprovisional, international application, or international design application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or 1.78 shall also be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).
(1) The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b), or abandonment of the application, whichever occurs earlier. The applicant is also required to:
(i) Supply a copy of the prior-filed application, except where the prior-filed application is an application filed under 35 U.S.C. 111;
(ii) Supply an English language translation of any prior-filed application that is in a language other than English; and
(iii) Identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
(2) Any amendment to an international application pursuant to paragraph (b)(1) of this section shall be effective only as to the United States, and shall have no effect on the international filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (§ 1.491) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application. Any omitted portion of the international application which applicant desires to be effective as to all designated States, subject to PCT Rule 20.8(b), must be submitted in accordance with PCT Rule 20.
(3) If an application is not otherwise entitled to a filing date under § 1.53(b), the amendment must be by way of a petition pursuant to § 1.53(e) accompanied by the fee set forth in § 1.17(f).
(4) Any amendment to an international design application pursuant to paragraph (b)(1) of this section shall be effective only as to the United States and shall have no effect on the filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international design application will be acted upon by the Office prior to the international design application becoming a nonprovisional application.
(c) Except as provided in paragraphs (a) or (b) of this section, an incorporation by reference must be set forth in the specification and must:
(1) Express a clear intent to incorporate by reference by using the root words “incorporat(e)” and “reference” ( e.g. , “incorporate by reference”); and
(2) Clearly identify the referenced patent, application, or publication.
(d) “Essential material” may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. “Essential material” is material that is necessary to:
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(1) Provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out the invention as required by 35 U.S.C. 112(a);
(2) Describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b); or
(3) Describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. 112(f).
(e) Other material (“Nonessential material”) may be incorporated by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications. An incorporation by reference by hyperlink or other form of browser executable code is not permitted.
(f) The examiner may require the applicant to supply a copy of the material incorporated by reference. If the Office requires the applicant to supply a copy of material incorporated by reference, the material must be accompanied by a statement that the copy supplied consists of the same material incorporated by reference in the referencing application.
(g) Any insertion of material incorporated by reference into the specification or drawings of an application must be by way of an amendment to the specification or drawings. Such an amendment must be accompanied by a statement that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter.
(h) An incorporation of material by reference that does not comply with paragraphs (c), (d), or (e) of this section is not effective to incorporate such material unless corrected within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b), or abandonment of the application, whichever occurs earlier. In addition:
(1) A correction to comply with paragraph (c)(1) of this section is permitted only if the application as filed clearly conveys an intent to incorporate the material by reference. A mere reference to material does not convey an intent to incorporate the material by reference.
(2) A correction to comply with paragraph (c)(2) of this section is only permitted for material that was sufficiently described to uniquely identify the document.
(i) An application transmittal letter limited to the transmittal of a copy of the specification and drawings from a previously filed application submitted under paragraph (a) or (b) of this section may be signed by a juristic applicant or patent owner.
The Director has considerable discretion in determining what may or may not be incorporated by reference in a patent application. General Electric
Co. v. Brenner, 407 F.2d 1258, 159 USPQ 335 (D.C. Cir. 1968). In 2004, the Office codified in 37 CFR 1.57(b) – (g) existing practice with respect to explicit incorporations by reference with a few changes to reflect the eighteen-month publication of applications. In addition, in 2004, 37 CFR 1.57(a) was added to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is inadvertently omitted from an application, such as through a clerical error. In 2013, the Office moved the provisions of former 37 CFR 1.57(a) to 37 CFR 1.57(b) in order to provide for reference filing in 37 CFR 1.57(a), which is a new procedure provided by the implementation of section 201(a) of the Patent Law Treaties Implementation Act of 2012 (PLTIA) (Public Law 112-211). 37 CFR 1.57(b) permits inadvertently omitted material to be added to the application by way of a later filed amendment if the inadvertently omitted portion of the specification or drawing(s) is completely contained in a prior-filed application (for which priority/benefit is claimed) even though there is no explicit incorporation by reference of the prior-filed application. See MPEP § 217 for discussion regarding 37 CFR 1.57(b).
As mentioned above, 37 CFR 1.57 was revised, effective December 18, 2013, to implement the reference filing provisions in title II of the PLTIA, which amended the patent laws in accordance with the Patent Law Treaty. As provided in 35 U.S.C. 111(c), as amended by the PLTIA, a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application. See MPEP § 601.01(a), subsection III, for information on the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under 35 U.S.C. 111(a) to a previously filed application shall constitute the specification and any drawings of the subsequent application for purposes of a filing date.
The incorporation by reference practice with respect to applications which issue as U.S. patents provides the public with a patent disclosure which minimizes
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the public’s burden to search for and obtain copies of documents incorporated by reference which may not be readily available. Through the Office’s incorporation by reference policy, the Office ensures that reasonably complete disclosures are published as U.S. patents. The following is the manner in which the Director has elected to exercise that discretion. Section A provides the guidance for incorporation by reference in applications which are to issue as U.S. patents. Section B provides guidance for incorporation by reference in benefit applications; i.e., those domestic (35 U.S.C. 120) or foreign (35 U.S.C. 119(a)) applications relied on to establish an earlier effective filing date. See MPEP § 2181 for the impact of incorporation by reference on the determination of whether applicant has complied with the requirements of 35 U.S.C. 112(b) when 35 U.S.C. 112(f) is invoked.
A. Review of Applications Which Are To Issue as Patents
An application as filed must be complete in itself in order to comply with 35 U.S.C. 112. Material nevertheless may be incorporated by reference. An application for a patent when filed may incorporate “essential material” by reference to (1) a U.S. patent, or (2) a U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. See 37 CFR 1.57(d).
“Essential material” is defined in 37 CFR 1.57(d) as that which is necessary to (1) provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out the invention as required by 35 U.S.C. 112(a); (2) describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b); or (3) describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. 112(f). In any application that is to issue as a U.S. patent, essential material may only be incorporated by reference to a U.S. patent or patent application publication.
Other material (“nonessential subject matter”)may be incorporated by reference to (1) patents or applications published by the United States or foreign countries or regional patent offices, (2) prior and concurrently filed, commonly owned U.S. applications, or (3) non-patent publications . Nonessential subject matter is subject matter referred to for purposes of indicating the background of the invention or illustrating the state of the art. See 37 CFR 1.57(e).
An incorporation by reference by hyperlink or other form of browser executable code is not permitted. See 37 CFR 1.57(e) and MPEP § 608.01.
Mere reference to another application, patent, or publication is not an incorporation of anything therein into the application containing such reference for the purpose of the disclosure required by 35 U.S.C. 112. In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). 37 CFR 1.57(c)(1) limits a proper incorporation by reference (except as provided in 37 CFR 1.57(b)) to instances only where the perfecting words “incorporated by reference” or the root of the words “incorporate” (e.g., incorporating, incorporated) and “reference” (e.g., referencing) appear. The requirement for specific root words will bring greater clarity to the record and provide a bright line test as to where something is being referred to is an incorporation by reference. The Office intends to treat references to documents that do not meet this “bright line” test as noncompliant incorporations by reference and may require correction pursuant to 37 CFR 1.57(h). If a reference to a document does not clearly indicate an intended incorporation by reference, examination will proceed as if no incorporation by reference statement has been made and the Office will not expend resources trying to determine if an incorporation by reference was intended. In addition to other requirements for an application, the referencing application must include an identification of the referenced patent, application, or publication. See 37 CFR 1.57(c)(2). Particular attention should be directed to specific portions of the referenced document where the subject matter being incorporated may be found. Guidelines for situations where applicant is permitted to fill in a number for Application No. __________ left blank in the application as filed can be found in In re Fouche,
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439 F.2d 1237, 169 USPQ 429 (CCPA 1971) (Abandoned applications less than 20 years old can be incorporated by reference to the same extent as copending applications; both types are open to the public upon the referencing application issuing as a patent.). See 37 CFR 1.14(a)(i), (iv), and (vi), and MPEP § 103.
1. Complete Disclosure Filed
If an application is filed with a complete disclosure, essential material may be canceled by amendment and may be substituted by reference to a U.S. patent or a U.S. patent application publication. The amendment must be accompanied by a statement signed by the applicant, or a practitioner representing the applicant, stating that the material canceled from the application is the same material that has been incorporated by reference and no new matter has been included (see 37 CFR 1.57(g)). The same procedure is available for nonessential material.
If an application as filed incorporates material by reference, a copy of the incorporated by reference material may be required to be submitted to the Office even if the material is properly incorporated by reference. The examiner may require a copy of the incorporated material to review and to understand what is being incorporated or to put the description of the material in its proper context. Another instance where a copy of the incorporated material may be required is where the material is being inserted by amendment into the body of the application to replace an improper incorporation by reference statement so that the Office can determine that the material being added by amendment in lieu of the incorporation is the same material as was attempted to be incorporated. If the Office requires the applicant to supply a copy of the material incorporated by reference, the material must be accompanied by a statement that the copy supplied consists of the same material incorporated by reference in the referencing application. See 37 CFR 1.57(f).
2. Improper Incorporation
37 CFR 1.57(g) addresses corrections of incorporation by reference by inserting the material previously incorporated by reference. A
noncompliant incorporation by reference statement may be corrected by an amendment. 37 CFR 1.57(g). However, the amendment must not include new matter. Incorporating by reference material that was not incorporated by reference on filing of an application may introduce new matter. An incorporation by reference of essential material to an unpublished U.S. patent application, a foreign application or patent, or to a publication is improper under 37 CFR 1.57(d). The improper incorporation by reference is not effective to incorporate the material unless corrected by the applicant (37 CFR 1.57(h)). Any underlying objection or rejection (e.g., under 35 U.S.C. 112) should be made by the examiner until applicant corrects the improper incorporation by reference by submitting an amendment to amend the specification or drawings to include the material incorporated by reference. A statement that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter is also required. 37 CFR 1.57(g). See also In re Hawkins, 486 F.2d 569, 179 USPQ 157 (CCPA 1973); In re Hawkins, 486 F.2d 579, 179 USPQ 163 (CCPA 1973); In re Hawkins, 486 F.2d 577, 179 USPQ 167 (CCPA 1973). Improper incorporation by reference statements and late corrections thereof require expenditure of unnecessary examination resources and slow the prosecution process. Applicants know (or should know) whether they want material incorporated by reference, and must timely correct any incorporation by reference errors. Correction must be done within the time period set forth in 37 CFR 1.57(h).
An incorporation by reference that does not comply with 37 CFR 1.57(c), (d), or (e) is not effective to incorporate such material unless corrected within any time period set by the Office (should the noncompliant incorporation by reference be first noticed by the Office and applicant informed thereof), but in no case later than the close of prosecution as defined by 37 CFR 1.114(b) (should applicant be the first to notice the noncompliant incorporation by reference and the Office informed thereof), or abandonment of the application, whichever occurs earlier. The phrase “or abandonment of the application” is included in 37 CFR 1.57(h) to address the situations where an application is abandoned prior to the close of
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prosecution, e.g., the situation where an application is abandoned after a non-final Office action.
37 CFR 1.57(h)(1) authorizes the correction of noncompliant incorporation by reference statements that do not use the root of the words “incorporate” and “reference” in the incorporation by reference statement when the application as filed clearly conveys an intent to incorporate the material by reference. This correction can usually be made, for example, when an originally filed claim of an application identifies an amino acid or nucleotide sequence by database accession number. In making the determination of clear intent the examiner should consider the language used in referencing the sequence, the context in which it is disclosed, and any additional arguments or evidence presented by applicants.
37 CFR 1.57(h)(2) states that a citation of a document can be corrected where the document is sufficiently described to uniquely identify the document. Correction of a citation for a document that cannot be identified as the incorporated document may be new matter and is not authorized by 37 CFR 1.57(h)(2). An example would be where applicant intended to incorporate a particular journal article but supplied the citation information for a completely unrelated book by a different author, and there is no other information to identify the correct journal article. Since it cannot be determined from the citation originally supplied what article was intended to be incorporated, it would be improper (e.g., new matter) to replace the original incorporation by reference with the intended incorporation by reference. A citation of a patent application by attorney docket number, inventor name, filing date and title of invention may sufficiently describe the document, but even then correction should be made to specify the application number.
A petition under 37 CFR 1.183 to suspend the time period requirement set forth in 37 CFR 1.57(h) will not be appropriate. After the application has been abandoned, applicant must file a petition to revive under 37 CFR 1.137 for the purpose of correcting the incorporation by reference. After the application has issued as a patent, applicant may correct the patent by filing a reissue application. Correcting an
improper incorporation by reference with a certificate of correction is not an appropriate means of correction because it may alter the scope of the claims. The scope of the claims may be altered because 37 CFR 1.57(h) provides that an incorporation by reference that does not comply with paragraph (c), (d), or (e) is not an effective incorporation. For example, an equivalent means omitted from a patent disclosure by an ineffective incorporation by reference would be outside the scope of the patented claims. Hence, a correction of an incorporation by reference pursuant to 37 CFR 1.57 may alter the scope of the claims by adding the omitted equivalent means. Changes involving the scope of the claims should be done via the reissue process. Additionally, the availability of the reissue process for corrections would make a successful showing required under 37 CFR 1.183 unlikely. The following examples show when an improper incorporation by reference is required to be corrected:
Example 1:
Upon review of the specification, the examiner noticed that the specification included an incorporation by reference statement incorporating essential material disclosed in a foreign patent. In a non-final Office action, the examiner required the applicant to amend the specification to include the essential material.
In reply to the non-final Office action, applicant must correct the improper incorporation by reference by filing an amendment to add the essential material disclosed in the foreign patent and a statement in compliance with 37 CFR 1.57(g) within the time period for reply set forth in the non-final Office action.
Example 2:
Upon review of the specification, the examiner determined that the subject matter incorporated by reference from a foreign patent was “nonessential material” and therefore, did not object to the incorporation by reference. In reply to a non-final Office action, applicant filed an amendment to the claims to add a new limitation that was supported only by the foreign patent. The amendment filed by the applicant caused the examiner to re-determine that the incorporated subject matter was “essential material” under 37 CFR 1.57(d). The examiner rejected the claims that include the new limitation under 35 U.S.C. 112(a) in a final Office action.
Since the rejection under 35 U.S.C. 112(a) was necessitated by the applicant’s amendment, the finality of the Office action is proper. If the applicant wishes to overcome the rejection under 35 U.S.C. 112(a) by filing an amendment under 37 CFR 1.57(g) to add the subject material disclosed in the foreign patent into the specification, applicant may file the amendment as an after final amendment in compliance with 37 CFR 1.116.
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Alternatively, applicant may file an RCE under 37 CFR 1.114 accompanied by the appropriate fee, and an amendment per 37 CFR 1.57(g) within the time period for reply set forth in the final Office action.
The following form paragraphs may be used:
¶ 6.19 Incorporation by Reference, Unpublished U.S. Application, Foreign Patent or Application, Publication
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
Examiner Note:
Since the material that applicant is attempting to incorporate in the specification is considered to be essential material, an appropriate objection to the specification under 35 U.S.C. 132 and/or rejection of the claim(s) under 35 U.S.C. 112, should be made. One or more of form paragraphs 7.31.01 to 7.31.04, as for example, should be used following this form paragraph.
¶ 6.19.01 Ineffective Incorporation by Reference, General
The attempt to incorporate subject matter into this application by reference to [1] is ineffective because [2].
Examiner Note:
1. In bracket 1, identify the document such as an application or patent number or other identification.
2. In bracket 2, give reason(s) why it is ineffective (e.g., the root words “incorporate” and/or “reference” have been omitted, see 37 CFR 1.57(c)(1); the reference document is not clearly identified as required by 37 CFR 1.57(c)(2)).
3. This form paragraph should be followed by form paragraph 6.19.03.
¶ 6.19.03 Correction of Ineffective Incorporation by Reference
The incorporation by reference will not be effective until correction is made to comply with 37 CFR 1.57(c), (d), or (e). If the incorporated material is relied upon to meet any outstanding objection, rejection, or other requirement imposed by the Office, the correction must be made within any time period set by the Office for responding to the objection, rejection, or other requirement for the incorporation to be effective. Compliance will not be held in abeyance with respect to responding to the objection, rejection, or other requirement
for the incorporation to be effective. In no case may the correction be made later than the close of prosecution as defined in 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.
Any correction inserting material by amendment that was previously incorporated by reference must be accompanied by a statement that the material being inserted is the material incorporated by reference and the amendment contains no new matter. 37 CFR 1.57(g).
The filing date of any application wherein essential material is improperly incorporated by reference will not be affected by applicant’s correction where (A) there is a clear intent to incorporate by reference the intended material and the correction is to add the root words of “incorporate” and “reference,” (B) the incorporated document can be uniquely identified and the correction is to clarify the document’s identification, and (C) where the correction is to insert the material from the reference where incorporation is to an unpublished U.S. patent application, foreign application or patent, or to a publication.
Reliance on a commonly assigned, prior filed or concurrently filed copending application by a different inventor may ordinarily be made for the purpose of completing the disclosure provided the incorporated material is directed to nonessential material. See 37 CFR 1.57(e). See In re Fried, 329 F.2d 323, 141 USPQ 27 (CCPA 1964), and General Electric Co. v. Brenner, 407 F.2d 1258, 159 USPQ 335 (D.C. Cir. 1968).
Since a disclosure must be complete as of the filing date, subsequent publications or subsequently filed applications cannot be relied on to establish a constructive reduction to practice or an enabling disclosure as of the filing date. White Consol. Indus., Inc. v. Vega Servo-Control, Inc., 713 F.2d 788, 218 USPQ 961 (Fed. Cir. 1983); In re Scarbrough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974); In re Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974).
B. Review of Applications Which Are Relied on To Establish an Earlier Effective Filing Date
The limitations on the material which may be incorporated by reference in U.S. patent applications which are to issue as U.S. patents do not apply to
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applications relied on only to establish an earlier effective filing date under 35 U.S.C. 119 or 35 U.S.C. 120. Neither 35 U.S.C. 119(a) nor 35 U.S.C. 120 places any restrictions or limitations as to how the claimed invention must be disclosed in the earlier application to comply with 35 U.S.C. 112(a). Accordingly, an application is entitled to rely upon the filing date of an earlier application, even if the earlier application itself incorporates essential material by reference to another document. See Ex parte Maziere, 27 USPQ2d 1705, 1706-07 (Bd. Pat. App. & Inter. 1993).
The reason for incorporation by reference practice with respect to applications which are to issue as U.S. patents is to provide the public with a patent disclosure which minimizes the public’s burden to search for and obtain copies of documents incorporated by reference which may not be readily available. Through the Office’s incorporation by reference policy, the Office ensures that reasonably complete disclosures are published as U.S. patents. The same policy concern does not apply where the sole purpose for which an applicant relies on an earlier U.S. or foreign application is to establish an earlier filing date. Incorporation by reference in the earlier application of (1) patents or applications published by foreign countries or regional patent offices, (2) nonpatent publications, (3) a U.S. patent or application which itself incorporates “essential material” by reference, or (4) a foreign application, is not critical in the case of a “benefit” application.
When an applicant, or a patent owner in a reexamination or interference, claims the benefit of the filing date of an earlier application which incorporates material by reference, the applicant or patent owner may be required to supply copies of the material incorporated by reference. For example, an applicant may claim the benefit of the filing date of a foreign application which itself incorporates by reference another earlier filed foreign application. If necessary, due to an intervening reference, applicant should be required to supply a copy of the earlier filed foreign application, along with an English language translation. A review can then be made of the foreign application and all material incorporated by reference to determine whether the foreign application discloses the invention sought to be patented in the manner required by 35 U.S.C.
112(a) so that benefit may be accorded. In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989).
As a safeguard against the omission of a portion of a prior application for which priority is claimed under 35 U.S.C. 119(a)-(d) or (f), or for which benefit is claimed under 35 U.S.C. 119(e) or 120, applicant may include a statement at the time of filing of the later application incorporating by reference the prior application. See MPEP § 201.06(c) and 211 et seq. where domestic benefit is claimed. See MPEP §§ 213 - 216 where foreign priority is claimed. See MPEP § 217 regarding 37 CFR 1.57(b). The inclusion of such an incorporation by reference statement in the later-filed application will permit applicant to include subject matter from the prior application into the later-filed application without the subject matter being considered as new matter. For the incorporation by reference to be effective as a proper safeguard, the incorporation by reference statement must be filed at the time of filing of the later-filed application. An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
II. SIMULATED OR PREDICTED TEST RESULTS OR PROPHETIC EXAMPLES
Simulated or predicted test results and prophetical examples (paper examples) are permitted in patent applications. Working examples correspond to work actually performed and may describe tests which have actually been conducted and results that were achieved. Paper examples describe the manner and process of making an embodiment of the invention which has not actually been conducted. Paper examples should not be represented as work actually done. No results should be represented as actual results unless they have actually been achieved. Paper examples should not be described using the past tense. Hoffman-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1367, 66 USPQ2d 1385, 1394 (Fed. Cir. 2003).
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For problems arising from the designation of materials by trademarks and trade names, see MPEP § 608.01(v).
608.01(q) Substitute or Rewritten Specification [R-07.2015]
37 CFR 1.125 Substitute specification.
(a) If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including the claims, or any part thereof, be rewritten.
(b) Subject to § 1.312, a substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes no new matter.
(c) A substitute specification submitted under this section must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown pursuant to this paragraph.
(d) A substitute specification under this section is not permitted in a reissue application or in a reexamination proceeding.
The specification is sometimes in such faulty English that a new specification is necessary; in such instances, a new specification should be required.
Form paragraph 6.28 may be used where the specification is in faulty English.
¶ 6.28 Idiomatic English
A substitute specification in proper idiomatic English and in compliance with 37 CFR 1.52(a) and (b) is required. The substitute specification filed must be accompanied by a statement that it contains no new matter.
37 CFR 1.125(a) applies to a substitute specification required by the Office. If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including
the claims, or any part thereof be rewritten. Note that legibility includes ability to be photocopied and scanned so that suitable reprints can be made and papers can be electronically reproduced by use of digital imaging and optical character recognition. See MPEP § 608.01.
Form paragraph 6.28.01 may be used where the examiner, for reasons other than faulty English, requires a substitute specification.
¶ 6.28.01 Substitute Specification Required by Examiner
A substitute specification [1] the claims is required pursuant to 37 CFR 1.125(a) because [2].
A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strikethrough except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strikethrough cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
Examiner Note:
1. In bracket 1, insert either --excluding-- or --including--.
2. In bracket 2, insert clear and concise examples of why a new specification is required.
3. A new specification is required if the number or nature of the amendments render it difficult to consider the application or to arrange the papers for printing or copying, 37 CFR 1.125.
4. See also form paragraph 13.01 for partial rewritten specification.
37 CFR 1.125(b) applies to a substitute specification voluntarily filed by the applicant. Subject to the provisions of 37 CFR 1.312, a substitute specification, excluding claims, may be voluntarily filed by the applicant at any point up to the payment of the issue fee provided it is accompanied by a statement that the substitute specification includes no new matter. The Office will accept a substitute specification voluntarily filed by the applicant if the requirements of 37 CFR 1.125(b) are satisfied.
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37 CFR 1.125(c) requires a substitute specification filed under 37 CFR 1.125(a) or (b) be submitted in clean form without markings. A marked-up copy of the substitute specification showing all the changes relative to the immediate prior version of the specification of record must also be submitted. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five of fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Numbering the paragraphs of the specification of record is not considered a change that must be shown under 37 CFR 1.125(c). The paragraphs of any substitute specification, other than the claims, should be individually numbered in Arabic numerals (for example [0001]) so that any amendment to the specification may be made by replacement paragraph in accordance with 37 CFR 1.121(b)(1).
A substitute specification filed under 37 CFR 1.125(b) must be accompanied by a statement indicating that no new matter was included. There is no obligation on the examiner to make a detailed comparison between the old and the new specifications for determining whether or not new matter has been added. If, however, an examiner becomes aware that new matter is present, objection thereto should be made.
The filing of a substitute specification rather than amending the original application has the advantage for applicants of eliminating the need to prepare an amendment of the specification. The Office receives the advantage of saving the time needed to enter amendments in the specification and a reduction in the number of printing errors. A substitute specification is not permitted in a reissue application or in a reexamination proceeding. 37 CFR 1.125(d).
A substitute specification which complies with 37 CFR 1.125 should normally be entered. A substitute specification which is denied entry should be so marked.
Form paragraph 6.28.02 may be used to notify applicant that a substitute specification submitted under 37 CFR 1.125(b) has not been entered.
¶ 6.28.02 Substitute Specification Filed Under 37 CFR 1.125(b) and (c) Not Entered.
The substitute specification filed [1] has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because: [2]
Examiner Note:
1. In bracket 2, insert statement of why the substitute specification is improper, for example: -- the statement as to a lack of new matter under 37 CFR 1.125(b) is missing--, -- a marked-up copy of the substitute specification has not been supplied (in addition to the clean copy)--; -- a clean copy of the substitute specification has not been supplied (in addition to the marked-up copy)--; or, -- the substitute specification has been filed: - in a reissue application or in a reexamination proceeding, 37 CFR 1.125(d)-, or - after payment of the issue fee-, or - containing claims (to be amended)- --.
2. A substitute specification filed after final action or appeal (prior to the date an appeal brief is filed pursuant to 37 CFR 41.37, see 37 CFR 41.33(a)) is governed by 37 CFR 1.116. A substitute specification filed after the mailing of a notice of allowance is governed by 37 CFR 1.312.
See MPEP § 714.20 regarding entry of amendments which include an unacceptable substitute specification.
For new matter in amendment, see MPEP § 608.04.
For application prepared for issue, see MPEP § 1302.02.
608.01(r) Derogatory Remarks About Prior Art in Specification [R-08.2012]
The applicant may refer to the general state of the art and the advance thereover made by his or her invention, but he or she is not permitted to make derogatory remarks concerning the inventions of others. Derogatory remarks are statements disparaging the products or processes of any particular person other than the applicant, or statements as to the merits or validity of applications or patents of another person. Mere comparisons with
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the prior art are not considered to be disparaging, per se.
608.01(s) Restoration of Canceled Matter [R-08.2012]
Canceled text in the specification can be reinstated only by a subsequent amendment presenting the previously canceled matter as a new insertion. 37 CFR 1.121(b)(4). A claim canceled by amendment (deleted in its entirety) may be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number. 37 CFR 1.121(c)(5). See MPEP § 714.
608.01(t) Use in Subsequent Application [R-11.2013]
A reservation for a future application of subject matter disclosed but not claimed in a pending application will not be permitted in the pending application. 37 CFR 1.79; MPEP § 608.01(e).
No part of a specification can normally be transferred to another application. Similarly, drawings cannot normally be transferred to another application See MPEP § 608.02(i).
608.01(u) [Reserved]
608.01(v) Marks Used in Commerce and Trade Names [R-07.2015]
15 U.S.C. 1127 Construction and definitions; intent of chapter
*****
The terms "trade name" and "commercial name" mean any name used by a person to identify his or her business or vocation.
The term "trademark" includes any word, name, symbol, or device, or any combination thereof-
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The term "service mark" means any word, name, symbol, or device, or any combination thereof-
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
The term "certification mark" means any word, name, symbol, or device, or any combination thereof-
(1) used by a person other than its owner, or
(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
The term "collective mark" means a trademark or service mark-
(1) used by the members of a cooperative, an association, or other collective group or organization, or
(2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
and includes marks indicating membership in a union, an association, or other organization.
The term "mark" includes any trademark, service mark, collective mark, or certification mark.
*****
I. PERMISSIBLE USE IN PATENTAPPLICATIONS
A mark as defined by 15 U.S.C. 1127 (i.e., trademark, service mark, collective mark, or certification mark) or trade name may be used in a
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patent application to identify an article or product, service, or organization if:
(A) its meaning is established by an accompanying definition in the specification which is sufficiently descriptive, enabling, precise and definite such that a claim including the mark or trade name complies with the requirements of 35 U.S.C. 112, or
(B) its meaning is well-known to one skilled in the relevant art and is satisfactorily defined in the literature.
See, e.g., United States Gypsum Co. v. National Gypsum Co., 74 F3d 1209, ____ n.6, 37 USPQ2d 1388, 1392 n. 6 (Fed. Cir. 1996). Condition (A) or (B) must be met at the time of filing of the complete application.
The relationship between a mark or trade name and the product, service, or organization it identifies is sometimes indefinite, uncertain, and arbitrary. For example, the formula or characteristics of a product may change from time to time and yet it may continue to be sold under the same mark or trade name. In patent specifications, the details of the product, service, or organization identified by a mark or trade name should be set forth in positive, exact, intelligible language, so that there will be no uncertainty as to what is meant. Arbitrary marks or trade names which are liable to mean different things at the pleasure of the owner do not constitute such language. Ex Parte Kattwinkle, 12 USPQ 11 (Bd. App. 1931).
If the product, service, or organization to which a mark refers is set forth in such language that its identity is clear, examiners are authorized to permit the use of the mark if it is distinguished from common descriptive nouns by capitalization. See subsection II, below. If a mark or trade name has a fixed and definite meaning, it constitutes sufficient identification unless some specific characteristic of the product, service, or organization is involved in the invention such that further description is necessary to comply with the requirements of 35 U.S.C. 112. In that event, as also in those cases where the mark or trade name has no fixed and definite meaning, identification by scientific or other explanatory language is necessary. See, e.g., United
States Gypsum Co. v. National Gypsum Co., 74 F3d 1209, ____ n.6, 37 USPQ2d 1388, 1392 n. 6 (Fed. Cir. 1996); In re Gebauer-Fuelnegg, 121 F.2d 505, 50 USPQ 125 (CCPA 1941).
The matter of sufficiency of disclosure must be decided on an individual case-by-case basis. In re Metcalfe, 410 F.2d 1378, 161 USPQ 789 (CCPA 1969).
Where the identification of a mark or trade name is introduced by amendment, it must be restricted to the characteristics of the product, service, or organization known at the time the application was filed to avoid any question of new matter.
If proper identification of the product, service, or organization identified by a mark or a trade name is omitted from the specification and such identification is deemed necessary under the principles set forth above, the examiner should hold the disclosure insufficient and reject, on the ground of insufficient disclosure, any claims based on the identification of the product, service, or organization merely by mark or trade name. If, for example, a product cannot be otherwise defined, an amendment defining the process of its manufacture may be permitted unless such amendment would result in the introduction of new matter. Such amendments must be supported by satisfactory showings establishing that the specific nature or process of manufacture of the product as set forth in the amendment was known at the time of filing of the application.
II. PROPRIETARY NATURE OF MARKS USED IN COMMERCE
Although the use of marks having definite meanings is permissible in patent applications, the proprietary nature of the marks should be respected. Marks should be identified by capitalizing each letter of the mark (in the case of word or letter marks) or otherwise indicating the description of the mark (in the case of marks in the form of a symbol or device or other nontextual form). Every effort should be made to prevent their use in any manner which might adversely affect their validity as marks.
Examiners may conduct a search for registered marks by using the Trademark Electronic Search System
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(TESS) which is available on the USPTO website to determine whether an apparent or identified mark in the patent application is a registered mark or to what particular goods a registered mark applies.
Form paragraph 6.20 may be used to inform applicant of the proprietary nature of marks used in commerce.
¶ 6.20 Trade Names, Trademarks, and Other Marks Used in Commerce
The use of the term [1], which is a trade name or a mark used in commerce, has been noted in this application. It should be capitalized wherever it appears and be accompanied by the generic terminology.
Although the use of trade names and marks used in commerce (i.e., trade marks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Examiner Note:
1. Capitalize each letter of the word in the bracket or, where appropriate, include a proper symbol indicating use in commerce
such as ™, SM, or ® following the word.
2. Examiners may conduct a search for registered marks by using the Trademark Electronic Search System (TESS) which is available on the USPTO website to determine whether a mark identified in the patent application is a registered mark or not.
The examiner should not permit the use of language such as “the product X (a descriptive name) commonly known as Y (trade name or mark)” since such language does not bring out the fact that the latter is a trade name or mark. Language such as “the product X (a descriptive name) sold under the trademark Y” is permissible.
The use of a mark in the title of an application should be avoided as well as the use of a mark coupled with the word “type”, e.g., “Band-Aid type bandage.”
In the event that a registered mark is a “symbol or device” depicted in a drawing, either the brief description of the drawing or the detailed description of the drawing should specify that the “symbol or device” is a registered mark of Company X. The owner of a mark may be identified in the specification.
Technology Center Directors should reply to all complaint letters regarding the misuse of marks used in commerce and forward a copy of the complaint letter and reply to the Office of the Deputy Commissioner for Patent Examination Policy. Where a letter demonstrates the misuse of a mark in a patent application publication, the Office should, where the application is still pending, ensure that the mark is replaced by appropriate generic terminology.
608.01(w) Copyright and Mask Work Notices [R-11.2013]
37 CFR 1.71 Detailed description and specification of the invention
*****
(d) A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s). The content of the notice must be limited to only those elements provided for by law. For example, “©1983 John Doe” (17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in paragraph (e) of this section is included at the beginning (preferably as the first paragraph) of the specification.
(e) The authorization shall read as follows:
A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever.
*****
37 CFR 1.84 Standards for drawings *****
(s) Copyright or Mask Work Notice. A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing immediately below the figure representing the copyright or mask work material and be limited to letters having a print size of .32 cm. to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be limited to only those elements provided for by law. For example, “ ©1983 John Doe” (17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in § 1.71(e) is
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included at the beginning (preferably as the first paragraph) of the specification.
*****
The U.S. Patent and Trademark Office will permit the inclusion of a copyright or mask work notice in a design or utility patent application, and thereby any patent issuing therefrom, which discloses material on which copyright or mask work protection has previously been established, under the following conditions:
(A) The copyright or mask work notice must be placed adjacent to the copyright or mask work material. Therefore, the notice may appear at any appropriate portion of the patent application disclosure, including the drawing. However, if appearing in the drawing, the notice must comply with 37 CFR 1.84(s). If placed on a drawing in conformance with these provisions, the notice will not be objected to as extraneous matter under 37 CFR 1.84.
(B) The content of the notice must be limited to only those elements required by law. For example, “©1983 John Doe”(17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited, and under current statutes, legally sufficient notices of copyright and mask work respectively.
(C) Inclusion of a copyright or mask work notice will be permitted only if the following authorization in 37 CFR 1.71(e) is included at the beginning (preferably as the first paragraph) of the specification to be printed for the patent:
A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent disclosure, as it appears in the Patent and Trademark Office patent files or records, but otherwise reserves all (copyright or mask work) rights whatsoever.
(D) Inclusion of a copyright or mask work notice after a Notice of Allowance has been mailed will be permitted only if the criteria of 37 CFR 1.312 have been satisfied.
The inclusion of a copyright or mask work notice in a design or utility patent application, and thereby
any patent issuing therefrom, under the conditions set forth above will serve to protect the rights of the author/inventor, as well as the public, and will serve to promote the mission and goals of the U.S. Patent and Trademark Office. Therefore, the inclusion of a copyright or mask work notice which complies with these conditions will be permitted. However, any departure from these conditions may result in a refusal to permit the desired inclusion. If the authorization required under condition (C) above does not include the specific language “(t)he (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent files or records,...” the notice will be objected to as improper by the examiner of the application. If the examiner maintains the objection upon reconsideration, a petition may be filed in accordance with 37 CFR 1.181.
608.02 Drawing [R-07.2015]
35 U.S.C. 113 Drawings.
The applicant shall furnish a drawing where necessary for the understanding of the subject matter to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Commissioner may require its submission within a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.
37 CFR 1.81 Drawings required in patent application.
[Editor Note: Para. (a) below is only applicable to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013.]
(a) The applicant for a patent is required to furnish a drawing of the invention where necessary for the understanding of the subject matter sought to be patented. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.
(b) Drawings may include illustrations which facilitate an understanding of the invention (for example, flow sheets in cases of processes, and diagrammatic views).
(c) Whenever the nature of the subject matter sought to be patented admits of illustration by a drawing without its being necessary for the understanding of the subject matter and the
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applicant has not furnished such a drawing, the examiner will require its submission within a time period of not less than two months from the date of the sending of a notice thereof.
(d) Drawings submitted after the filing date of the application may not be used to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.
37 CFR 1.81 (pre-PLT) Drawings required in patent application
[Editor Note: Para. (a) below is applicable to patent applications filed before December 18, 2013.]
(a) The applicant for a patent is required to furnish a drawing of the invention where necessary for the understanding of the subject matter sought to be patented; this drawing, or a high quality copy thereof, must be filed with the application. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.
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I. FILING DATE IN THE ABSENCE OF DRAWING
A. Applications filed under 35 U.S.C. 111 on or after December 18, 2013
For applications filed on or after December 18, 2013, other than design applications, 35 U.S.C. 111 no longer requires that an application contain a drawing where necessary for the understanding of the subject matter sought to be patented to be entitled to a filing date. 35 U.S.C. 113 continues to provide, however, that “[t]he applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented” and that “[d]rawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.” Thus, the absence of any drawing on the filing date of an application where a drawing is necessary for the understanding of the subject matter sought to be patented may result in an applicant not being able to obtain a patent for any claimed invention presented in the application, but except for design applications, the absence of any drawing on the filing of an application no longer raises a question as to whether the application is entitled to a filing date.
Pursuant to 35 U.S.C. 171, a design application (whether filed before, on, or after December 18, 2013) must be filed with any required drawing to be entitled to a filing date.
The preparation of drawings for a provisional or nonprovisional application is prudent where a drawing is necessary for the understanding of the subject matter sought to be patented, and inclusion of such drawing(s) with the application on filing will help ensure that the requirements of 35 U.S.C. 113 are satisfied for any such claimed invention.
B. Applications filed before December 18, 2013
For applications filed under 35 U.S.C. 111 before December 18, 2013, a drawing (where necessary for the understanding of the subject matter sought to be patented), or a high quality copy thereof, must be filed with the application. See pre-PLT 35 U.S.C. 111, 35 U.S.C. 113, and pre-PLT 37 CFR 1.81.
In accordance with pre-PLT 35 U.S.C. 111, a specification and any necessary drawing(s) are among the requirements for an application to be given a filing date. The first sentence of 35 U.S.C 113 requires a drawing to be submitted where such drawing is necessary for the understanding of the invention. In this situation, the lack of a drawing renders the application incomplete and, as such, the application cannot be given a filing date until the drawing is received. The second sentence of 35 U.S.C. 113 addresses the situation wherein a drawing is not necessary for the understanding of the invention, but the subject matter sought to be patented admits of illustration and no drawing was submitted on filing. The lack of a drawing in this situation does not render the application incomplete but rather is treated as an informality. The examiner should require such drawings in almost all such instances. Such drawings could be required during the initial processing of the application but do not have to be furnished at the time the application is filed. The applicant is given at least two months from the date of the letter requiring drawings to submit the drawing(s).
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II. RECEIPT OF DRAWING AFTER THE FILING DATE
If the examiner discovers new matter in a substitute or additional drawing, the drawing should not be entered. The drawing should be objected to as containing new matter. A new drawing without such new matter may be required if the examiner determines that a drawing is needed under 37 CFR 1.81 or 37 CFR 1.83. The examiner’s decision would be reviewable by filing a petition under 37 CFR 1.181. The Technology Center (TC) Director would decide such a petition.
III. HANDLING OF DRAWING REQUIREMENTS UNDER THE FIRST SENTENCE OF 35 U.S.C. 113
The Office of Patent Application Processing (OPAP) will make the initial decision in all new applications as to whether a drawing is “necessary” under the first sentence of 35 U.S.C. 113. A drawing will be considered necessary under the first sentence of 35 U.S.C. 113 in all applications where the drawing is referred to in the specification and one or more figures have been omitted.
The determination under 35 U.S.C. 113 (first sentence) as to when a drawing is necessary will be handled in OPAP in accordance with the following procedure. OPAP will make the initial determination as to whether drawings are required for the understanding of the subject matter of the invention. When no drawings are included in the application as filed and drawings are required, the applicant is so informed by OPAP. A filing date will not be granted if the application was filed under 35 U.S.C. 111 before December 18, 2013 and applicant will be notified to complete the application (37 CFR 1.53(e)). If a drawing is later furnished in an application filed under 35 U.S.C. 111 before December 18, 2013, a filing date may be granted as of the date of receipt of such drawing.
An OPAP formality examiner should not treat an application without drawings as incomplete if drawings are not required. A drawing is not required for a filing date for applications, other than design applications, filed under 35 U.S.C. 111 on or after December 18, 2013. For applications filed before December 18, 2013 a drawing is not required for a
filing date under pre-PLT 35 U.S.C. 111 if the application contains:
(A) at least one process claim including the term “process” or “method” in its introductory phrase;
(B) at least one composition claim including the term “composition,” “compound,” “mixture” or “pharmaceutical” in its introductory phrase;
(C) at least one claim directed to a coated article or product or to an article or product made from a particular material or composition (i.e., an article of known and conventional character (e.g., a table), coated with or made of a particular composition (e.g., a specified polymer such as polyvinyl-chloride));
(D) at least one claim directed to a laminated article or product (i.e., a laminated article of known and conventional character (e.g., a table)); or
(E) at least one claim directed to an article, apparatus, or system where the sole distinguishing feature is the presence of a particular material (e.g., a hydraulic system using a particular hydraulic fluid, or a conventional packaged suture using a particular material).
For a more complete explanation about when a drawing is required, see MPEP § 601.01(f). For applications submitted without all of the drawings described in the specification, see MPEP § 601.01(g).
If an examiner determines that a filing date should not have been granted in an application filed before December 18, 2013 because it does not contain drawings, the matter should be brought to the attention of the supervisory patent examiner (SPE) for review. If the SPE decides that drawings are required to understand the subject matter of the invention, the SPE should return the application to OPAP with a typed, signed, and dated memorandum requesting cancellation of the filing date and identifying the subject matter required to be illustrated.
IV. HANDLING OF DRAWING REQUIREMENTS UNDER THE SECOND SENTENCE OF 35 U.S.C.
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113 - ILLUSTRATION SUBSEQUENTLY REQUIRED
35 U.S.C.113 addresses the situation wherein a drawing is not necessary for the understanding of the invention, but the subject matter sought to be patented admits of illustration by a drawing and the applicant has not furnished a drawing. The lack of a drawing in this situation is treated as an informality. A filing date will be accorded with the original presentation of the papers. The acceptance of an application without a drawing does not preclude the examiner from requiring an illustration in the form of a drawing under 37 CFR 1.81(c). In requiring such a drawing, the examiner should clearly indicate that the requirement is made under 37 CFR 1.81(c) which applies when the nature of the subject matter sought to be patented admits of illustration by a drawing without its being necessary for the understanding of the subject matter. Examiners making such requirements are to specifically require, as a part of the applicant’s next reply, at least an ink sketch or permanent print of any drawing in reply to the requirement, even though no allowable subject matter is yet indicated. This will afford the examiner an early opportunity to determine the sufficiency of the illustration and the absence of new matter. See 37 CFR 1.121 and 37 CFR 1.81(d). One of the following form paragraphs may be used to require a drawing:
¶ 6.23 Subject Matter Admits of Illustration
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
Examiner Note:
When requiring drawings before examination use form paragraph 6.23.01 with a PTOL-90 or PTO-90C form as a cover sheet.
¶ 6.23.01 Subject Matter Admits of Illustration (No Examination of Claims)
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81. No new matter may be introduced in the required drawing.
Applicant is given a TWO MONTH time period to submit a drawing in compliance with 37 CFR 1.81. Extensions of time may be obtained under the provisions of 37 CFR 1.136(a). Failure to timely submit a drawing will result in ABANDONMENT of the application.
Examiner Note:
1. Use of this form paragraph should be extremely rare and limited to those instances where no examination can be performed due to lack of an illustration of the invention resulting in a lack of understanding of the claimed subject matter.
2. Use a PTOL-90 or PTO-90C form as a cover sheet for this communication.
Applicant should also amend the specification accordingly to refer to the new illustration at the time of submission of the drawing(s). This may obviate further correspondence where an amendment places the application in condition for allowance.
V. DRAWING STANDARDS
37 CFR 1.84 Standards for drawings.
(a) Drawings. There are two acceptable categories for presenting drawings in utility and design patent applications.
(1) Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings; or
(2) Color.Color drawings are permitted in design applications. Where a design application contains color drawings, the application must include the number of sets of color drawings required by paragraph (a)(2)(ii) of this section and the specification must contain the reference required by paragraph (a)(2)(iii) of this section. On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application. The color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color drawings are not permitted in international applications (see PCT Rule 11.13). The Office will accept color drawings in utility patent applications only after granting a petition filed under this paragraph explaining why the color drawings are necessary. Any such petition must include the following:
(i) The fee set forth in § 1.17(h);
(ii) One (1) set of color drawings if submitted via the Office electronic filing system, or three (3) sets of color drawings if not submitted via the Office electronic filing system; and
(iii) An amendment to the specification to insert (unless the specification contains or has been previously amended to contain) the following language as the first paragraph of the brief description of the drawings:
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The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
(b) Photographs.—
(1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots ( e.g., immunological, western, Southern, and northern), auto- radiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.
(2) Color photographs. Color photographs will be accepted in utility and design patent applications if the conditions for accepting color drawings and black and white photographs have been satisfied. See paragraphs (a)(2) and (b)(1) of this section.
(c) Identification of drawings . Identifying indicia should be provided, and if provided, should include the title of the invention, inventor’s name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet within the top margin. Each drawing sheet submitted after the filing date of an application must be identified as either “Replacement Sheet” or “New Sheet” pursuant to § 1.121(d). If a marked-up copy of any amended drawing figure including annotations indicating the changes made is filed, such marked-up copy must be clearly labeled as “Annotated Sheet” pursuant to § 1.121(d)(1).
(d) Graphic forms in drawings. Chemical or mathematical formulae, tables, and waveforms may be submitted as drawings and are subject to the same requirements as drawings. Each chemical or mathematical formula must be labeled as a separate figure, using brackets when necessary, to show that information is properly integrated. Each group of waveforms must be presented as a single figure, using a common vertical axis with time extending along the horizontal axis. Each individual waveform discussed in the specification must be identified with a separate letter designation adjacent to the vertical axis.
(e) Type of paper. Drawings submitted to the Office must be made on paper which is flexible, strong, white, smooth, non-shiny, and durable. All sheets must be reasonably free from cracks, creases, and folds. Only one side of the sheet may be used for the drawing. Each sheet must be reasonably free from
erasures and must be free from alterations, overwritings, and interlineations. Photographs must be developed on paper meeting the sheet-size requirements of paragraph (f) of this section and the margin requirements of paragraph (g) of this section. See paragraph (b) of this section for other requirements for photographs.
(f) Size of paper. All drawing sheets in an application must be the same size. One of the shorter sides of the sheet is regarded as its top. The size of the sheets on which drawings are made must be:
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or
(2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).
(g) Margins. The sheets must not contain frames around the sight ( i.e., the usable surface), but should have scan target points ( i.e., cross-hairs) printed on two cater-corner margin corners. Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.
(h) Views. The drawing must contain as many views as necessary to show the invention. The views may be plan, elevation, section, or perspective views. Detail views of portions of elements, on a larger scale if necessary, may also be used. All views of the drawing must be grouped together and arranged on the sheet(s) without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract. Views must not be connected by projection lines and must not contain center lines. Waveforms of electrical signals may be connected by dashed lines to show the relative timing of the waveforms.
(1) Exploded views. Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.
(2) Partial views. When necessary, a view of a large machine or device in its entirety may be broken into partial views on a single sheet, or extended over several sheets if there is no loss in facility of understanding the view. Partial views drawn on separate sheets must always be capable of being linked edge to edge so that no partial view contains parts of another partial view. A smaller scale view should be included showing the whole formed by the partial views and indicating the positions of the parts shown. When a portion of a view is enlarged for magnification purposes, the view and the enlarged view must each be labeled as separate views.
(i) Where views on two or more sheets form, in effect, a single complete view, the views on the several sheets must be so arranged that the complete figure can be assembled without concealing any part of any of the views appearing on the various sheets.
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(ii) A very long view may be divided into several parts placed one above the other on a single sheet. However, the relationship between the different parts must be clear and unambiguous.
(3) Sectional views. The plane upon which a sectional view is taken should be indicated on the view from which the section is cut by a broken line. The ends of the broken line should be designated by Arabic or Roman numerals corresponding to the view number of the sectional view, and should have arrows to indicate the direction of sight. Hatching must be used to indicate section portions of an object, and must be made by regularly spaced oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished without difficulty. Hatching should not impede the clear reading of the reference characters and lead lines. If it is not possible to place reference characters outside the hatched area, the hatching may be broken off wherever reference characters are inserted. Hatching must be at a substantial angle to the surrounding axes or principal lines, preferably 45°. A cross section must be set out and drawn to show all of the materials as they are shown in the view from which the cross section was taken. The parts in cross section must show proper material(s) by hatching with regularly spaced parallel oblique strokes, the space between strokes being chosen on the basis of the total area to be hatched. The various parts of a cross section of the same item should be hatched in the same manner and should accurately and graphically indicate the nature of the material(s) that is illustrated in cross section. The hatching of juxtaposed different elements must be angled in a different way. In the case of large areas, hatching may be confined to an edging drawn around the entire inside of the outline of the area to be hatched. Different types of hatching should have different conventional meanings as regards the nature of a material seen in cross section.
(4) Alternate position. A moved position may be shown by a broken line superimposed upon a suitable view if this can be done without crowding; otherwise, a separate view must be used for this purpose.
(5) Modified forms. Modified forms of construction must be shown in separate views.
(i) Arrangement of views . One view must not be placed upon another or within the outline of another. All views on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright position. If views wider than the width of the sheet are necessary for the clearest illustration of the invention, the sheet may be turned on its side so that the top of the sheet, with the appropriate top margin to be used as the heading space, is on the right-hand side. Words must appear in a horizontal, left-to-right fashion when the page is either upright or turned so that the top becomes the right side, except for graphs utilizing standard scientific convention to denote the axis of abscissas (of X) and the axis of ordinates (of Y).
(j) Front page view. The drawing must contain as many views as necessary to show the invention. One of the views should be suitable for inclusion on the front page of the patent application publication and patent as the illustration of the invention. Views must not be connected by projection lines and must not contain center lines. Applicant may suggest a single
view (by figure number) for inclusion on the front page of the patent application publication and patent.
(k) Scale. The scale to which a drawing is made must be large enough to show the mechanism without crowding when the drawing is reduced in size to two-thirds in reproduction. Indications such as “actual size” or “scale 1/2” on the drawings are not permitted since these lose their meaning with reproduction in a different format.
(l) Character of lines, numbers, and letters. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
(m) Shading. The use of shading in views is encouraged if it aids in understanding the invention and if it does not reduce legibility. Shading is used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object. Flat parts may also be lightly shaded. Such shading is preferred in the case of parts shown in perspective, but not for cross sections. See paragraph (h)(3) of this section. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color.
(n) Symbols. Graphical drawing symbols may be used for conventional elements when appropriate. The elements for which such symbols and labeled representations are used must be adequately identified in the specification. Known devices should be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art. Other symbols which are not universally recognized may be used, subject to approval by the Office, if they are not likely to be confused with existing conventional symbols, and if they are readily identifiable.
(o) Legends. Suitable descriptive legends may be used subject to approval by the Office, or may be required by the examiner where necessary for understanding of the drawing. They should contain as few words as possible.
(p) Numbers, letters, and reference characters.
(1) Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g., encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference characters should be arranged to follow the profile of the object depicted.
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(2) The English alphabet must be used for letters, except where another alphabet is customarily used, such as the Greek alphabet to indicate angles, wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference characters must measure at least .32 cm. (1/8 inch) in height. They should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary, such as indicating a surface or cross section, a reference character may be underlined and a blank space may be left in the hatching or shading where the character occurs so that it appears distinct.
(4) The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts.
(5) Reference characters not mentioned in the description shall not appear in the drawings. Reference characters mentioned in the description must appear in the drawings.
(q) Lead lines. Lead lines are those lines between the reference characters and the details referred to. Such lines may be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing. See paragraph (l) of this section.
(r) Arrows. Arrows may be used at the ends of lines, provided that their meaning is clear, as follows:
(1) On a lead line, a freestanding arrow to indicate the entire section towards which it points;
(2) On a lead line, an arrow touching a line to indicate the surface shown by the line looking along the direction of the arrow; or
(3) To show the direction of movement.
(s) Copyright or Mask Work Notice . A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing immediately below the figure representing the copyright or mask work material and be limited to letters having a print size of .32 cm. to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be limited to only those elements provided for by law. For example, “©1983 John Doe” (17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in § 1.71(e) is included at the beginning (preferably as the first paragraph) of the specification.
(t) Numbering of sheets of drawings. The sheets of drawings should be numbered in consecutive Arabic numerals,
starting with 1, within the sight as defined in paragraph (g) of this section. These numbers, if present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second being the total number of sheets of drawings, with no other marking.
(u) Numbering of views.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation “FIG.” Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear.
(2) Numbers and letters identifying the views must be simple and clear and must not be used in association with brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference characters.
(v) Security markings . Authorized security markings may be placed on the drawings provided they are outside the sight, preferably centered in the top margin.
(w) Corrections. Any corrections on drawings submitted to the Office must be durable and permanent.
(x) Holes. No holes should be made by applicant in the drawing sheets.
(y) Types of drawings . See § 1.152 for design drawings, § 1.1026 for international design reproductions, § 1.165 for plant drawings, and § 1.173(a)(2) for reissue drawings.
See MPEP § 608.02(b) for information pertaining to the acceptability of drawings. Note that good quality copies are acceptable if the lines are uniformly thick, black, and solid.
Each drawing sheet submitted after the filing date of an application must be identified as either “Replacement Sheet” or “New Sheet” so that the Office will recognize how to treat such a drawing sheet for entry into the application. See 37 CFR 1.84(c). Corrections to drawings must be made in the form of replacement sheets labeled, in the header, “Replacement Sheet” since the Office does not release drawings for correction. See 37 CFR 1.85. If a marked-up copy of any amended drawing figure, including annotations indicating the changes made,
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is filed, such marked-up copy must be clearly labeled as “Annotated Sheet.”
Black and white drawings are permitted to be transmitted by facsimile if the drawings are being submitted after the filing date of the application. Applicants should ensure that the facsimile transmission process does not unreasonably degrade the quality of the drawings. Color drawings are not permitted to be transmitted by facsimile. See 37 CFR 1.6(d)(4).
Drawings are currently accepted in two different size formats. It is, however, required that all drawing sheets in a particular application be the same size for ease of handling.
For information regarding certified copies of an application-as-filed which does not meet the sheet size/margin and quality requirements of 37 CFR 1.52, 1.84(f), and 1.84(g), see MPEP § 608.01, subsection III.
For design patent drawings, 37 CFR 1.152, see MPEP § 1503.02.
For international design reproductions, see 37 CFR 1.1026. Note that pursuant to 37 CFR 1.1061, the provisions of 37 CFR 1.84, except for 1.84(c), do not apply to international design applications.
For plant patent drawings, 37 CFR 1.165, see MPEP § 1606.
For reissue application drawings, see MPEP § 1413.
For correction of drawings, see MPEP § 608.02(p). For return of drawings, see MPEP § 608.02(y).
For amendment of drawings, 37 CFR 1.121(d), see MPEP § 714.
The filing of a divisional or continuation application under the provisions of 37 CFR 1.53(b) does not obviate the need for acceptable drawings. See MPEP § 608.02(b).
See MPEP § 601.01(f) for treatment of design applications without drawings or applications filed
prior to December 18, 2013 without drawings and MPEP § 601.01(g) for treatment of applications filed without all figures of drawings or applications, other than a design application, filed on or after December 18, 2013 without drawings.
VI. DEFINITIONS
A number of different terms are used when referring to drawings in patent applications. The following definitions are used in this Manual.
Original drawings: The drawing submitted with the application when filed.
Substitute drawing: A drawing filed later than the filing date of an application. Usually submitted to replace an original drawing that was unacceptable.
Acceptable drawing: A drawing that is acceptable for publication of the application or issuance of the patent.
Corrected drawing: A drawing that includes corrections of informalities and changes approved by the examiner.
Unacceptable drawing: The Office no longer considers drawings as formal or informal; drawings are either acceptable or unacceptable. Drawings that do not comply with all of the form requirements of 37 CFR 1.84, e.g., because they are not on the proper size sheets, or the quality of the lines is poor, may be acceptable for the purposes of publication and examination if the drawings are readable and reproducible for publication purposes. An objection will generally only be made to a drawing that does not comply with the form requirements of 37 CFR 1.84 if the Office is unable to reproduce the drawing or the contents of the drawing are unacceptable to the examiner.
Plan: This term is used to illustrate the top view.
Elevation: This term is used to illustrate views showing the height of objects.
VII. BLACK AND WHITE PHOTOGRAPHS AND LINE DRAWINGS
37 CFR 1.84 Standards for drawings.
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(a) Drawings. There are two acceptable categories for presenting drawings in utility and design patent applications.
(1) Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings; or
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(b) Photographs.—
(1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots ( e.g., immunological, western, Southern, and northern), auto- radiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.
*****
A. BLACK AND WHITE DRAWINGS
Black and white drawings are normally required in utility patent applications. India ink, or its equivalent that secures solid black lines, must be used for drawings. See MPEP § 608.02(c) for information relating to the location of drawings in IFW applications.
B. BLACK AND WHITE PHOTOGRAPHS AND GRAYSCALE DRAWINGS
Black and white photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. Photographs or photomicrograph printed on sensitized paper are acceptable as drawings, in lieu of India ink drawings, as are photographic images submitted via EFS-Web, to illustrate inventions which are incapable of being accurately or adequately depicted by India ink drawings, e.g., electrophoresis gels, blots, (e.g., immunological, western, Southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline
structures, metallurgical microstructures, textile fabrics, grain structures and, in a design patent application, ornamental effects. The photographs or photomicrographs must show the invention more clearly than they can be done by India ink drawings and otherwise comply with the rules concerning such drawings.
Black and white photographs submitted in lieu of ink drawings must comply with 37 CFR 1.84(b). There is no requirement for a petition or petition fee, and only one set of photographs is required. See 37 CFR 1.84(b)(1).
To be acceptable, such photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. If several photographs are used to make one sheet of drawings, the photographs must be contained on a single sheet.
See MPEP § 608.02(c) for information relating to the location of drawings in IFW applications. See MPEP § 1503.02 for discussion of photographs used in design patent applications.
VIII. COLOR DRAWINGS OR COLOR PHOTOGRAPHS
37 CFR 1.84 Standards for drawings.
(a) Drawings. There are two acceptable categories for presenting drawings in utility and design patent applications:
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(2) Color. Color drawings are permitted in design applications. Where a design application contains color drawings, the application must include the number of sets of color drawings required by paragraph (a)(2)(ii) of this section and the specification must contain the reference required by paragraph (a)(2)(iii) of this section. On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application. The color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color drawings are not permitted in international applications (see PCT Rule 11.13). The Office will accept color drawings in utility patent applications only after granting a petition filed under this paragraph explaining why the color drawings are necessary. Any such petition must include the following:
(i) The fee set forth in § 1.17(h);
(ii) One (1) set of color drawings if submitted via the Office electronic filing system, or three (3) sets of color
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drawings if not submitted via the Office electronic filing system; and
(iii) An amendment to the specification to insert (unless the specification contains or has been previously amended to contain) the following language as the first paragraph of the brief description of the drawings:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
(b) Photographs .
*****
(2) Color photographs. Color photographs will be accepted in utility and design patent applications if the conditions for accepting color drawings and black and white photographs have been satisfied. See paragraphs (a)(2) and (b)(1) of this section.
*****
Color drawings and color photographs are permitted in design applications without the need for a petition. However, the specification of design applications filed under 35 U.S.C. 111(a) must include, or be amended to include, the reference to a drawing executed in color as provided for in 37 CFR 1.84(a)(2)(iii). Note that the drawing requirements set forth in 37 CFR 1.84 do not apply to nonprovisional international design applications, except for those set forth in 37 CFR 1.84(c). See 37 CFR 1.1061(b).
Color drawings and color photographs are not accepted in utility applications filed under 35 U.S.C. 111 unless a petition filed under 37 CFR 1.84(a)(2) or (b)(2) is granted. Color drawings and color photographs are not permitted in international applications (see PCT Rule 11.13).
Unless a petition is filed and granted, color drawings or color photographs will not be accepted in a utility patent application filed under 35 U.S.C. 111. The examiner must object to the color drawings or color photographs as being improper and require applicant either to cancel the drawings or to provide substitute black and white drawings.
Under 37 CFR 1.84(a)(2) and (b)(2), the applicant must file a petition with fee requesting acceptance of the color drawings or color photographs. Color drawings and photographs must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color photographs may be acceptable if the conditions for accepting color drawings and black and white photographs are met. One set of color drawings or color photographs is required if submitted via the Office electronic filing system, or three sets of color drawings or color photographs are required if not submitted via the Office electronic filing system (37 CFR 1.84(a)(2)(ii)). The petition is decided by a Supervisory Patent Examiner. See MPEP § 1002.02(d).
Color photographs or color drawings will be stored in SCORE and a black and white copy thereof will be stored in IFW along with a SCORE placeholder sheet. Color drawings or color photographs submitted in paper are also maintained in an artifact folder.
Where color drawings or color photographs are filed in a continuing utility application, applicant must renew the petition under 37 CFR 1.84(a)(2) and (b)(2) even though a similar petition was filed in the prior application. Until the renewed petition is granted, the examiner must object to the color drawings or color photographs in the utility patent application as being improper.
In light of the substantial administrative and economic burden associated with printing a utility patent with color drawings or color photographs, the patent copies which are printed at issuance of the patent will depict the drawings in black and white only. However, a set of color drawings or color photographs will be attached to the Letters Patent. Moreover, copies of the patent with color drawings or color photographs attached thereto will be provided by the U.S. Patent and Trademark Office upon special request and payment of the fee necessary to recover the actual costs associated therewith.
Accordingly, the petition must also be accompanied by a proposed amendment to insert the following language as the first paragraph in the portion of the
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specification containing a brief description of the drawings:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
If color drawings or color photographs have been filed, but the required petition has not, form paragraph 6.24.01 may be used to notify applicant that a petition is needed.
¶ 6.24.01 Color Photographs and Color Drawings, Petition Required
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via EFS-Web or three sets of color drawings or color photographs, as appropriate, if not submitted via EFS-Web, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Examiner Note:
1. This form paragraph should be used only if the application contains color photographs or color drawings as the drawings required by 37 CFR 1.81.
2. This form paragraph should not be used in design applications.
It is anticipated that such a petition will be granted only when the U.S. Patent and Trademark Office has determined that a color drawing or color photograph is the only practical medium by which to disclose in a printed utility patent the subject matter to be patented.
It is emphasized that a decision to grant the petition should not be regarded as an indication that color
drawings or color photographs are necessary to comply with a statutory requirement. In this latter respect, clearly it is desirable to file any desired color drawings or color photographs as part of the original application papers in order to avoid issues concerning statutory defects (e.g., lack of enablement under 35 U.S.C. 112 or new matter under 35 U.S.C. 132).
See MPEP § 608.02(c) for information relating to the location of drawings in IFW applications.
IX. DRAWING SYMBOLS
37 CFR 1.84(n) indicates that graphic drawing symbols and other labeled representations may be used for conventional elements where appropriate, subject to approval by the Office. Also, suitable legends may be used, or may be required, in proper cases. The American National Standards Institute (ANSI) (www.ansi.org) and the International Organization for Standardization (ISO) (www.iso.org) are organizations whose numerous publications include some that pertain to graphical symbols,; the symbols therein are considered to be generally acceptable in patent drawings. Although ANSI and ISO documents and other published sources may be used as guides during the selection of graphic symbols for patent drawings, the Office will not “approve” any published collection of symbols as a group because their use and clarity must be decided on a case-by-case basis. Overly specific symbols should be avoided. Symbols with unclear meanings should be labeled for clarification.
Since design patents protect the appearance of an article, the use of graphic drawing symbols in design patent applications to indicate a particular material is generally not appropriate and will not be approved unless the material contributes to the appearance of the article. In addition, because color drawings may now be filed in a design application without the need for a petition, the use of graphic symbols to represent color is generally not appropriate and will not normally be approved by the Office. See MPEP § 1503.02, subsection V, and MPEP § 608.02,subsection VIII, for the submission of color drawings in design applications.
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In utility patent applications, the following symbols should be used to indicate various materials where the material is an important feature of the invention.
The use of conventional features is very helpful in making prior art searches.
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608.02(a) New Drawing — When Replacement is Required Before Examination [R-07.2015]
See MPEP § 608.02 for the procedure to follow when drawings have not been filed, but a drawing will aid in the understanding of the invention. See MPEP § 601.01(f) or 601.01(g) for the procedures
to follow when applications appear to be missing drawing(s). Drawings in utility and plant applications will be reviewed by the Office of Patent Application Processing (OPAP) for compliance with certain requirements of 37 CFR 1.84. OPAP will send a Notice to File Corrected Application Papers if the drawings are unacceptable for purposes of publication. The notice will give applicant a time
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period of two (2) months from the mailing date of the notice to file acceptable drawings. This time period for reply is extendable under 37 CFR 1.136(a). OPAP will not release applications to the Technology Centers until acceptable drawings are filed in the applications.
If at the time of the initial assignment of an application to an examiner’s docket, or if at the time the application is taken up for action, the supervisory patent examiner believes the drawings to be of such a condition as to not permit reasonable examination of the application, applicant should be required to immediately submit corrected drawings. However, if the drawings do permit reasonable examination and the supervisory patent examiner believes the drawings are of such a character as to render the application defective under 35 U.S.C. 112, examination should begin immediately with a requirement for corrected drawings and a rejection of the claims as not being in compliance with 35 U.S.C. 112(a) being made.
If the drawings have been indicated by the applicant as "informal," but the drawings are considered acceptable by OPAP, the examiner should not require replacement of the drawings. If the examiner does make objections to the drawings, the examiner should require correction in reply to the Office action and not permit the objection to be held in abeyance. See MPEP § 608.02(b), § 608.02(d) - § 608.02(h) and § 608.02(p) for further information on specific grounds for finding drawings informalities.
I. UNTIMELY FILED DRAWINGS
If a drawing is not timely received in reply to a notice from the Office or a letter from the examiner who requires a drawing, the application becomes abandoned for failure to reply.
For the handling of replacement drawings, see MPEP § 608.02(h).
608.02(b) Acceptability of Drawings [R-07.2015]
37 CFR 1.85 Corrections to drawings.
(a) A utility or plant application will not be placed on the files for examination until objections to the drawings have been
corrected. Except as provided in § 1.215(c), any patent application publication will not include drawings filed after the application has been placed on the files for examination. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action (§ 1.135(c)). If a drawing in a design application meets the requirements of § 1.84(e), (f), and (g) and is suitable for reproduction, but is not otherwise in compliance with § 1.84, the drawing may be admitted for examination.
(b) The Office will not release drawings for purposes of correction. If corrections are necessary, new corrected drawings must be submitted within the time set by the Office.
(c) If a corrected drawing is required or if a drawing does not comply with § 1.84 or an amended drawing submitted under § 1.121(d) in a nonprovisional international design application does not comply with § 1.1026 at the time an application is allowed, the Office may notify the applicant in a notice of allowability and set a three-month period of time from the mail date of the notice of allowability within which the applicant must file a corrected drawing in compliance with § 1.84 or 1.1026, as applicable, to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)).
In instances where the drawing is such that the prosecution can be carried on without the corrections, applicant is informed of the reasons why the drawing is objected to in an examiner’s action, and that the drawing is admitted for examination purposes only (see MPEP § 707.07(a)). To be fully responsive, an amendment must include corrected drawings. See 37 CFR 1.85(c) and 37 CFR 1.121(d). The objection to the drawings will not be held in abeyance.
I. ACCEPTABILITY OF DRAWINGS
The Office no longer considers drawings as formal or informal. Drawings are either acceptable or unacceptable. Drawings will be accepted by the Office of Patent Application Processing (OPAP) if the drawings are readable and reproducible for publication purposes. See MPEP § 507.
Examiners should review the drawings for disclosure of the claimed invention and for proper use of reference numerals. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance. A request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final
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action (37 CFR 1.135(c)). Drawing corrections should be made promptly before allowance of the application in order to avoid delays in issuance of the application as a patent or a reduction to any term adjustment. See 37 CFR 1.704(c)(10).
II. NOTIFYING APPLICANT
If the original drawings are unacceptable, applicant will be notified and informed of what the objections are and that new corrected drawings are required. In either case, the drawings will be accepted as satisfying the requirements of 37 CFR 1.51. The examiners are directed to advise the applicants (see MPEP § 707.07(a)) in the first Office action of the reasons why the drawings are unacceptable. If the examiner discovers a defect in the content of the drawing, one or more of the form paragraphs reproduced below may be used to notify applicant.
¶ 6.21 New Drawings, Competent Draftsperson
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because [1]. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office does not prepare new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
¶ 6.22 Drawings Objected To
The drawings are objected to because [1]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, insert the reason for the objection, for example, --the drawings do not show every feature of the invention
specified in the claims-- or --the unlabeled rectangular box(es) shown in the drawings should be provided with descriptive text labels--.
2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.26 Drawings Do Not Permit Examination
The drawings are not of sufficient quality to permit examination. Accordingly, replacement drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to this Office action. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
Applicant is given a TWO MONTH time period to submit new drawings in compliance with 37 CFR 1.81. Extensions of time may be obtained under the provisions of 37 CFR 1.136(a). Failure to timely submit replacement drawing sheets will result in ABANDONMENT of the application.
Examiner Note:
1. Use of this form paragraph should be extremely rare and limited to those instances where no examination can be performed due to the poor quality of the drawings resulting in a lack of understanding of the claimed subject matter.
2. Use a PTOL-90 or PTO-90C form as a cover sheet for this communication.
¶ 6.27 Requirement for Marked-up Copy of Drawing Corrections
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the corrected drawing and marked-up copy will result in the abandonment of the application.
Examiner Note:
1. When this form paragraph is used by the examiner, the applicant must provide a marked-up copy of any amended drawing figure, including annotations indicating the changes made in the drawing replacement sheets. See 37 CFR 1.121(d)(2).
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2. Applicants should be encouraged to submit corrected drawings before allowance in order to avoid having any term adjustment reduced pursuant to 37 CFR 1.704(c)(10).
III. HANDLING OF REPLACEMENT DRAWINGS
In those situations where an application is filed with unacceptable drawings, applicants will be notified by OPAP to file new acceptable drawings complying with 37 CFR 1.84 and 1.121(d) or 37 CFR 1.1026, as applicable. If the requirement for corrected drawings appears on the notice of allowability (PTOL-37), the drawings must be filed within three months of the date of mailing of the notice of allowability. Also, each sheet of the drawing should include the application number and the art unit in the upper center margin (37 CFR 1.84(c)) and labeled, in the header, “Replacement Sheet.”
In utility applications, the examination will normally be conducted using the originally presented drawings. The sufficiency of disclosure, as concerns the subject matter claimed, will be made by the examiner utilizing the original drawings. IT IS APPLICANT’S RESPONSIBILITY TO SEE THAT NO NEW MATTER IS ADDED when submitting replacement drawings after allowance since they will not normally be reviewed by an examiner. Of course, if the examiner notices new matter in the replacement drawings, appropriate action to have the new matter deleted should be undertaken.
608.02(c) Location of Drawings [R-07.2015]
Black and white line drawings submitted in: (i) provisional applications under 35 U.S.C. 111(b); (ii) nonprovisional utility patent applications under 35 U.S.C. 111(a), including reissue utility patent applications; (iii) international applications (PCT) and national stage applications under 35 U.S.C. 371; and (iv) reexamination proceedings for utility patents will be converted into TIFF images and stored in IFW.
Black and white line drawings in design applications, including reissue design patent applications, international design applications, and reexamination proceedings for design patents will be stored in SCORE, and a black and white copy will be stored in IFW along with a SCORE placeholder sheet.
Black and white photographs and grayscale drawings in: (i) provisional applications under 35 U.S.C. 111(b); (ii) nonprovisional utility and design patent applications under 35 U.S.C. 111(a), including reissue utility and design patent applications; (iii) national stage applications under 35 U.S.C. 371; (iv) international applications (PCT); (v) international design applications ; (vi) reexamination proceedings for utility patents and design patents; and (vii) supplemental examination proceedings will be stored in SCORE, and a black and white copy will be stored in IFW along with a SCORE placeholder sheet.
Color drawings and color photographs are not permitted in international applications (see PCT Rule 11.13). Except for international applications, color photographs and color drawings in utility and design applications and proceedings will be stored in SCORE and a black and white copy thereof will be stored in IFW along with a SCORE placeholder sheet.
Originally submitted drawings on paper that are photographs or in color may be maintained in an artifact folder.
608.02(d) Complete Illustration in Drawings [R-07.2015]
37 CFR 1.83 Content of drawing.
(a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation ( e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that are included in sequence listings should not be duplicated in the drawings.
(b) When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
(c) Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. Such corrections are subject to the requirements of § 1.81(d).
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If an application filed under 35 U.S.C. 111 or under 35 U.S.C. 371 includes a sequence listing or a table, such a sequence listing or table should not be included in both the drawings and the descriptive portion of the specification. 37 CFR 1.83(a) and 1.58(a).
Any structural detail that is of sufficient importance to be described should be shown in the drawing. ( Ex parte Good, 1911 C.D. 43, 164 OG 739 (Comm’r Pat. 1911).)
Form paragraph 6.22.01, 6.22.04, or 6.36, where appropriate, may be used to require illustration.
¶ 6.22.01 Drawings Objected To, Details Not Shown
The drawings are objected to under 37 CFR 1.83(a) because they fail to show [1] as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, identify the structural details not shown in the drawings.
2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.22.04 Drawings Objected to, Incomplete
The drawings are objected to under 37 CFR 1.83(b) because they are incomplete. 37 CFR 1.83(b) reads as follows:
When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. Supply a full explanation, if it is not readily apparent how the drawings are incomplete.
2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.36 Drawings Do Not Show Claimed Subject Matter
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the [1] must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing
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should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
In bracket 1, insert the features that must be shown.
See also MPEP § 608.02.
608.02(e) Examiner Determines Completeness and Consistency of Drawings [R-07.2015]
The examiner should ensure that the figures are correctly described in the brief description of the several views of the drawing section of the specification, that the reference characters are properly applied, that no single reference character is used for two different parts or for a given part and a modification of such part, and that there are no superfluous illustrations.
One or more of the following form paragraphs may be used to require correction.
¶ 6.22.01 Drawings Objected To, Details Not Shown
The drawings are objected to under 37 CFR 1.83(a) because they fail to show [1] as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New
Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, identify the structural details not shown in the drawings.
2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.22.02 Drawings Objected to, Different Numbers Refer to Same Part
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters “[1]” and [2] have both been used to designate [3]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In brackets 1 and 2, identify the numbers which refer to the same part.
2. In bracket 3, identify the part which is referred to by different numbers.
3. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
4. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.22.03 Drawings Objected to, Different Parts Referred to by Same Number
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “[1]” has been used to designate both [2] and [3]. Corrected drawing sheets in
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compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet ” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, identify the number which refers to the different parts.
2. In brackets 2 and 3, identify the parts which are referred to by the same number.
3. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
4. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.22.06 Drawings Objected to, Reference Numbers Not in Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: [1]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, specify the reference characters which are not found in the drawings, including the page and line number where they first occur in the specification.
2. This form paragraph may be modified to require or allow the applicant to delete the reference character(s) from the description instead of adding them to the drawing(s).
3. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
4. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.22.07 Drawings Objected to, Reference Numbers Not in Specification
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: [1]. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d) If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, specify the reference characters which are not found in the specification, including the figure in which they occur.
2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
608.02(f) Modifications in Drawings [R-08.2012]
Modifications may not be shown in broken lines on figures which show in solid lines another form of the invention. Ex parte Badger, 1901 C.D. 195, 97 OG 1596 (Comm’r Pat. 1901).
All modifications described must be illustrated, or the text canceled. ( Ex parte Peck, 1901 C.D. 136, 96 OG 2409 (Comm’r Pat. 1901).) This requirement does not apply to a mere reference to minor variations nor to well-known and conventional parts.
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Form paragraph 6.22.05 may be used to require correction.
¶ 6.22.05 Drawings Objected to, Modifications in Same Figure
The drawings are objected to under 37 CFR 1.84(h)(5) because Figure [1] show(s) modified forms of construction in the same view. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, insert the appropriate Figure number(s).
2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
608.02(g) Illustration of Prior Art [R-08.2012]
Figures showing the prior art are usually unnecessary and should be canceled. Ex parte Elliott, 1904 C.D. 103, 109 OG 1337 (Comm’r Pat. 1904). However, where needed to understand applicant’s invention, they may be retained if designated by a legend such as “Prior Art.”
If the prior art figure is not labeled, form paragraph 6.36.01 may be used.
¶ 6.36.01 Illustration of “Prior Art”
Figure [1] should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
608.02(h) Replacement Drawings [R-11.2013]
All sheets of replacement drawings will be routinely entered into the contents of the application. However, the examiner should not overlook such factors as new matter, the necessity for the replacement sheets and consistency with other sheets. If the examiner decides that the sheets should not be entered, the examiner should provide the applicant with the complete, explicit reasoning for the denial of entry. The entries previously made will be marked "not entered."
Form paragraph 6.37 may be used to acknowledge replacement drawing sheets.
¶ 6.37 Acknowledgment of Replacement Drawing Sheets
The drawings were received on [1]. These drawings are [2].
Examiner Note:
1. In bracket 2, insert either --acceptable-- or --unacceptable--.
2. If unacceptable because of noncompliance with 37 CFR 1.121(d), an explanation must be provided. Form PTOL-324 may be used instead of this form paragraph to provide the explanation.
Alternatively, PTOL-326 Office Action Summary includes a block for acknowledgment of replacement drawings.
When an amendment is filed stating that replacement sheets of drawings are filed with the amendment and such drawings are not in the IFW, in the next communication by the examiner, the applicant must be notified that replacement drawings do not appear to have been received and thus have not been entered in the application.
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Note that drawings will not be returned to the applicant. See MPEP § 608.02(y).
608.02(i) Transfer of Drawings From Prior Applications [R-11.2013]
Drawings cannot normally be transferred from a first pending application to another as the Office no longer considers drawings as formal or informal. Drawings that do not comply with all of the form requirements of 37 CFR 1.84 may be acceptable for the purposes of publication and examination if the drawings are readable and reproducible for publication purposes.
608.02(j) -608.02(o) [Reserved]
608.02(p) Correction of Drawings [R-07.2015]
37 CFR 1.121 Manner of making amendments in applications.
*****
(d) Drawings. One or more application drawings shall be amended in the following manner: Any changes to an application drawing must be in compliance with § 1.84 or, for a nonprovisional international design application, in compliance with §§ 1.84(c) and 1.1026 and must be submitted on a replacement sheet of drawings which shall be an attachment to the amendment document and, in the top margin, labeled “Replacement Sheet.” Any replacement sheet of drawings shall include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. Any new sheet of drawings containing an additional figure must be labeled in the top margin as “New Sheet.” All changes to the drawings shall be explained, in detail, in either the drawing amendment or remarks section of the amendment paper.
(1) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change to the drawings.
(2) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
*****
37 CFR 1.85 Corrections to drawings.
(a) A utility or plant application will not be placed on the files for examination until objections to the drawings have been corrected. Except as provided in § 1.215(c), any patent
application publication will not include drawings filed after the application has been placed on the files for examination. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action (§ 1.135(c)). If a drawing in a design application meets the requirements of § 1.84(e), (f), and (g) and is suitable for reproduction, but is not otherwise in compliance with § 1.84, the drawing may be admitted for examination.
(b) The Office will not release drawings for purposes of correction. If corrections are necessary, new corrected drawings must be submitted within the time set by the Office.
(c) If a corrected drawing is required or if a drawing does not comply with § 1.84 or an amended drawing submitted under § 1.121(d) in a nonprovisional international design application does not comply with § 1.1026 at the time an application is allowed, the Office may notify the applicant in a notice of allowability and set a three-month period of time from the mail date of the notice of allowability within which the applicant must file a corrected drawing in compliance with § 1.84 or 1.1026, as applicable, to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)).
See also MPEP § 608.02(b). For correction at allowance and issue, see MPEP § 608.02(w) and MPEP § 1302.05.
A canceled figure may be reinstated. An amendment should be made to the specification adding the brief description of the view if a canceled figure is reinstated.
The following form paragraphs may be used to notify applicants of drawing corrections.
¶ 6.39 USPTO Does Not Make Drawing Changes
The United States Patent and Trademark Office does not make drawing changes. It is applicant’s responsibility to ensure that the drawings are corrected. Corrections must be made in accordance with the instructions below.
Examiner Note:
This form paragraph is to be used whenever the applicant has filed a request for the Office to make drawing changes. Form paragraph 6.40 must follow.
¶ 6.40 Information on How To Effect Drawing Changes
INFORMATION ON HOW TO EFFECT DRAWING CHANGES
Replacement Drawing Sheets
Drawing changes must be made by presenting replacement sheets which incorporate the desired changes and which comply
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with 37 CFR 1.84. An explanation of the changes made must be presented either in the drawing amendments section, or remarks, section of the amendment paper. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). A replacement sheet must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of the amended drawing(s) must not be labeled as “amended.” If the changes to the drawing figure(s) are not accepted by the examiner, applicant will be notified of any required corrective action in the next Office action. No further drawing submission will be required, unless applicant is notified.
Identifying indicia, if provided, should include the title of the invention, inventor’s name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet and within the top margin.
Annotated Drawing Sheets
A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be submitted or required by the examiner. The annotated drawing sheets must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change(s) to the drawings.
Timing of Corrections
Applicant is required to submit acceptable corrected drawings within the time period set in the Office action. See 37 CFR 1.85(a). Failure to take corrective action within the set period will result in ABANDONMENT of the application.
If corrected drawings are required in a Notice of Allowability (PTOL-37), the new drawings MUST be filed within the THREE MONTH shortened statutory period set for reply in the “Notice of Allowability.” Extensions of time may NOT be obtained under the provisions of 37 CFR 1.136 for filing the corrected drawings after the mailing of a Notice of Allowability.
¶ 6.41 Reminder That USPTO Does Not Make Drawing Changes
Applicant is reminded that the U.S. Patent and Trademark Office does not make drawing changes and that it is applicant’s responsibility to ensure that the drawings are corrected in accordance with the instructions set forth in the paper mailed on [1].
Examiner Note:
This form paragraph is to be used when the applicant has been previously provided with information on how to effect drawing changes.
¶ 6.42 Reminder That Applicant Must Make Drawing Changes
Applicant is reminded that in order to avoid an abandonment of this application, the drawings must be corrected in accordance with the instructions set forth in the paper mailed on [1].
Examiner Note:
This form paragraph is to be used when allowing the application and when applicant has previously been provided with information on how to effect drawing changes.
¶ 6.43 Drawings Contain Informalities, Application Allowed
The drawings filed on [1] are acceptable subject to correction of the informalities indicated below. In order to avoid abandonment of this application, correction is required in reply to the Office action. The correction will not be held in abeyance.
Examiner Note:
1. Use this form paragraph when allowing the application, particularly at time of first action issue. Supply an explanation of drawings informalities (see MPEP § 608.02(b), § 608.02(d) - § 608.02(h) and § 608.02(p)).
2. Form paragraph 6.40 or 6.41 must follow.
¶ 6.47 Examiner’s Amendment Involving Drawing Changes
The following changes to the drawings have been approved by the examiner and agreed upon by applicant: [1]. In order to avoid abandonment of the application, applicant must make these agreed upon drawing changes.
Examiner Note:
1. In bracket 1, insert the agreed upon drawing changes.
2. Form paragraphs 6.39 and 6.40 must follow.
608.02(q) -608.02(s) [Reserved]
608.02(t) Cancelation of Figures [R-08.2012]
If a drawing figure is canceled, a replacement sheet of drawings must be submitted without the figure (see 37 CFR 1.121(d)). If the canceled drawing figure was the only drawing on the sheet, then only a marked-up copy of the drawing sheet including an annotation showing that the drawing has been cancelled is required. The marked-up (annotated) copy must be clearly labeled as "Annotated Sheet" and must be presented in the amendment or remarks section of the amendment document which explains the changes to the drawings (see 37 CFR
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1.121(d)(1)). The brief description of the drawings should also be amended to reflect this change.
608.02(u) [Reserved]
608.02(v) Drawing Changes Which Require Annotated Sheets [R-08.2012]
When changes are to be made in the drawing itself, other than mere changes in reference characters, designations of figures, or inking over lines pale and rough, a marked-up copy of the drawing should be filed with a replacement drawing. The marked-up copy must be clearly labeled as “Annotated Sheet.” See 37 CFR 1.84(c) and 1.121(d). Ordinarily, broken lines may be changed to full without a sketch.
Annotated sheets filed by an applicant and used for correction of the drawing will not be returned. All such annotated sheets must be in ink or permanent prints.
608.02(w) Drawing Changes Which May Be Made Without Applicant’s Annotated Sheets [R-11.2013]
Where an application is ready for issue except for a slight defect in the drawing not involving change in structure, the examiner will prepare a letter to the applicant indicating the change to be made and may include a marked-up copy of the drawing showing the addition or alteration to be made. The marked-up copy of the drawing should be attached to the letter to the applicant made of record in the application file.
As a guide to the examiner, the following corrections are illustrative of those that may be suggested without requiring annotated sheets from the applicant:
(A) Adding two or three reference characters or exponents.
(B) Changing one or two numerals or figure ordinals.
(C) Removing superfluous matter.
(D) Adding or reversing directional arrows.
(E) Changing Roman Numerals to Arabic Numerals to agree with specification.
(F) Adding section lines or brackets, where easily executed.
(G) Changing lead lines.
(H) Correcting misspelled legends.
608.02(x) Drawing Corrections or Changes Accepted Unless Notified Otherwise [R-08.2012]
Drawing corrections or changes will be entered at the time they are presented, unless applicant is notified to the contrary by the examiner in the action following the amended drawing submission.
CORRECTION OR CHANGE NOT ACCEPTED
Where the corrected or changed drawing is not accepted, for example, because the submitted corrections or changes are erroneous, or involve new matter or do not include all necessary corrections, the applicant will be notified and informed of any required corrective action in the next Office action. The examiner should explicitly and clearly set forth all the reasons for not approving the corrections to the drawings in the next communication to the applicant. See MPEP § 608.02(p) for suggested form paragraphs that may be used by examiners to notify applicants of drawing corrections.
608.02(y) Return of Drawing [R-08.2012]
Drawings will not be returned to the applicant.
608.02(z) Allowable Applications Needing Drawing Corrections or Corrected Drawings [R-07.2015]
If the drawings submitted in an application have been indicated by the applicant as “informal,” but the drawings are considered acceptable by OPAP, the examiner should not require replacement of the drawings.
In IFW applications, generally, the most recently filed drawings will be used for printing, unless they have been indicated as “Not Entered.”
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If the examiner makes an objection to the drawings, the examiner should require correction in reply to the Office action that sets forth the objection. If an application is being allowed, and corrected drawings have not been filed, form PTOL-37 provides an appropriate check box for requiring corrected drawings.
Extensions of time to provide acceptable drawings in response to a notice of allowability are not permitted. If the Office of Data Management receives drawings that cannot be scanned or are otherwise unacceptable for publication, the Office of Data Management will mail a requirement for corrected drawings, giving applicant a shortened statutory period of two months to reply. The drawings will ordinarily not be returned to the examiner for corrections.
I. UTILITY PATENTAPPLICATIONS RECEIVING REPLACEMENT DRAWINGS AFTER THE NOTICE OF ALLOWABILITY
Where replacement drawings are received in utility patent applications after the Notice of Allowability was mailed, the replacement drawings are handled by the Office of Data Management. Submission to the examiner is not necessary unless an amendment to the specification accompanies the drawings, such as an amendment where the description of figures is added or canceled. It is applicant’s responsibility to see that no new matter is added when submitting replacement drawings after allowance because they will not normally be reviewed by an examiner.
II. 37 CFR 1.312 AMENDMENTS
For information on handling amendments to drawings filed under 37 CFR 1.312, see MPEP § 714.16.
608.03 Models, Exhibits, Specimens [R-08.2012]
35 U.S.C. 114 Models, specimens.
The Director may require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention.
When the invention relates to a composition of matter, the Director may require the applicant to furnish specimens or ingredients for the purpose of inspection or experiment.
37 CFR 1.91 Models or exhibits not generally admitted as part of application or patent.
(a) A model or exhibit will not be admitted as part of the record of an application unless it:
(1) Substantially conforms to the requirements of § 1.52 or § 1.84;
(2) Is specifically required by the Office; or
(3) Is filed with a petition under this section including:
(i) The fee set forth in § 1.17(h); and
(ii) An explanation of why entry of the model or exhibit in the file record is necessary to demonstrate patentability.
(b) Notwithstanding the provisions of paragraph (a) of this section, a model, working model, or other physical exhibit may be required by the Office if deemed necessary for any purpose in examination of the application.
(c) Unless the model or exhibit substantially conforms to the requirements of § 1.52 or § 1.84 under paragraph (a)(1) of this section, it must be accompanied by photographs that show multiple views of the material features of the model or exhibit and that substantially conform to the requirements of § 1.84.
Models or exhibits are generally not admitted as part of an application or patent unless the requirements of 37 CFR 1.91 are satisfied.
With the exception of cases involving perpetual motion, a model is not ordinarily required by the Office to demonstrate the operability of a device. If operability of a device is questioned, the applicant must establish it to the satisfaction of the examiner, but he or she may choose his or her own way of so doing.
Models or exhibits that are required by the Office or filed with a petition under 37 CFR 1.91(a)(3) must be accompanied by photographs that (A) show multiple views of the material features of the model or exhibit, and (B) substantially conform to the requirements of 37 CFR 1.84. See 37 CFR 1.91(c). Material features are considered to be those features which represent that portion(s) of the model or exhibit forming the basis for which the model or exhibit has been submitted. Where a video or DVD or similar item is submitted as a model or exhibit, applicant must submit photographs of what is depicted in the video or DVD (the content of the
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material such as a still image single frame of a movie) and not a photograph of a video cassette, DVD disc, or compact disc.
37 CFR 1.93 Specimens.
When the invention relates to a composition of matter, the applicant may be required to furnish specimens of the composition, or of its ingredients or intermediates, for the purpose of inspection or experiment.
See MPEP Chapter 2400 regarding treatment of biological deposits.
608.03(a) Handling of Models, Exhibits, and Specimens [R-07.2015]
All models and exhibits received in the U.S. Patent and Trademark Office should be taken to the Technology Center (TC) assigned the related application for examination. The receipt of all models and exhibits which are to be entered into the application file record must be properly recorded on an artifact sheet.
A label indicating the application number, filing date, and attorney’s name and address should be attached to the model or exhibit so that it is clearly identified and easily returned. The Office may return the model, exhibit, or specimen, at any time once it is no longer necessary for the conduct of business before the Office and return of the model or exhibit is appropriate. See 37 CFR 1.94.
If the model or exhibit cannot be conveniently stored in an artifact folder, it should not be accepted.
Models and exhibits may be presented for demonstration purposes during an interview. The models and exhibits should be taken away by applicant or his/her attorney or agent at the conclusion of the interview since models or exhibits are generally not permitted to be admitted as part of the application or patent unless the requirements of 37 CFR 1.91 are satisfied. See MPEP § 713.08. A full description of what was demonstrated or exhibited during the interview must be made of record. See 37 CFR 1.133. Any model or exhibit that is left with the examiner at the conclusion of the interview, which is not made part of the application
or patent, may be disposed of at the discretion of the Office.
37 CFR 1.94 Return of models, exhibits or specimens.
(a) Models, exhibits, or specimens may be returned to the applicant if no longer necessary for the conduct of business before the Office. When applicant is notified that a model, exhibit, or specimen is no longer necessary for the conduct of business before the Office and will be returned, applicant must arrange for the return of the model, exhibit, or specimen at the applicant’s expense. The Office will dispose of perishables without notice to applicant unless applicant notifies the Office upon submission of the model, exhibit or specimen that a return is desired and makes arrangements for its return promptly upon notification by the Office that the model, exhibit or specimen is no longer necessary for the conduct of business before the Office.
(b) Applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from the application. The provisions of this paragraph do not apply to a model or exhibit that substantially conforms to the requirements of § 1.52 or § 1.84, where the model or exhibit has been described by photographs that substantially conform to § 1.84, or where the model, exhibit or specimen is perishable.
(c) Where applicant is notified, pursuant to paragraph (a) of this section, of the need to arrange for return of a model, exhibit or specimen, applicant must arrange for the return within the period set in such notice, to avoid disposal of the model, exhibit or specimen by the Office. Extensions of time are available under § 1.136, except in the case of perishables. Failure to establish that the return of the item has been arranged for within the period set or failure to have the item removed from Office storage within a reasonable amount of time notwithstanding any arrangement for return, will permit the Office to dispose of the model, exhibit or specimen.
When applicant is notified that a model, exhibit, or specimen is no longer necessary for the conduct of business before the Office and will be returned, applicant must make arrangements for the return of the model, exhibit, or specimen at applicant’s expense. The Office may return the model, exhibit, or specimen at any time once it is no longer necessary for the conduct of business and need not wait until the close of prosecution or later. Where the model, exhibit, or specimen is a perishable, the Office will be presumed to have permission to dispose of the item without notice to applicant, unless applicant notifies the Office upon submission of the item that a return is desired and arrangements are promptly made for the item’s return upon notification by the Office.
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For models, exhibits, or specimens that are returned, applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from the application except where: (A) the model or exhibit substantially conforms to the requirements of 37 CFR 1.52 or 1.84; (B) the model or exhibit has been described by photographs that substantially conform to 37 CFR 1.84; or (C) the model, exhibit, or specimen is perishable.Applicant may be called upon to resubmit such returned model, exhibit, or specimen under appropriate circumstances, such as where a continuing application is filed.
The notification to applicant that a model, exhibit, or specimen is no longer necessary for the conduct of business before the Office will set a time period within which applicant must make arrangements for a return of a model, exhibit, or specimen. The time period is normally two months from the mailing date of the notification, unless the item is perishable, in which case the time period will be shorter. Extensions of time are available under 37 CFR 1.136, except in the case of perishables. Failure by applicant to establish that arrangements for the return of a model, exhibit, or specimen have been made within the time period set in the notice will result in the disposal of the model, exhibit, or specimen by the Office.
Form paragraph 6.48 may be used to notify applicant that the model, exhibit, or specimen is no longer necessary for the conduct of business before the Office and that applicant must make arrangement for the return of the model, exhibit, or specimen.
¶ 6.48 Model, Exhibit, or Specimen - Applicant Must Make Arrangements for Return
The [1] is no longer necessary for the conduct of business before the Office. Applicant must arrange for the return of the model, exhibit or specimen at the applicant’s expense in accordance with 37 CFR 1.94(a).
Applicant is given TWO MONTHS from the mailing date of this letter to make arrangements for return of the above-identified model, exhibit, or specimen to avoid its disposal in accordance with 37 CFR 1.94(c). Extensions of time are available under 37 CFR 1.136, except in the case of perishables.
Applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from
the application unless one of the exceptions set forth in 37 CFR 1.94(b) applies.
Examiner Note:
1. In bracket 1, identify the model, exhibit, or specimen that is no longer needed by the Office.
2. The Office will dispose of perishables without notice to Applicant unless applicant notifies the Office upon submission of the model, exhibit or specimen that a return is desired and makes arrangements for its return promptly upon notification by the Office that the model, exhibit or specimen is no longer necessary for the conduct of business before the Office.
For plant specimens, see MPEP § 1607 and 37 CFR 1.166.
37 CFR 1.95 Copies of exhibits.
Copies of models or other physical exhibits will not ordinarily be furnished by the Office, and any model or exhibit in an application or patent shall not be taken from the Office except in the custody of an employee of the Office specially authorized by the Director.
608.04 New Matter [R-07.2015]
37 CFR 1.121 Manner of making amendments in applications.
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(f) No new matter. No amendment may introduce new matter into the disclosure of an application.
*****
In establishing a disclosure, applicant may rely not only on the specification and drawing as filed but also on the claims present on the filing date of the application if their content justifies it. See MPEP § 608.01(l).
While amendments to the specification and claims involving new matter are ordinarily entered, such matter is required to be canceled from the descriptive portion of the specification, and the claims affected are rejected under 35 U.S.C. 112(a).
When new matter is introduced into the specification, the amendment should be objected to under 35 U.S.C. 132 (35 U.S.C. 251 if a reissue application) and a requirement made to cancel the new matter. The subject matter which is considered to be new matter must be clearly identified by the examiner. If the new matter has been entered into the claims or affects the scope of the claims, the claims affected
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should be rejected under 35 U.S.C. 112(a) because the new matter is not described in the application as originally filed.
A “new matter” amendment of the drawing is ordinarily not entered; neither is an additional or substitute sheet containing “new matter” even though provisionally entered by the TC technical support staff. See MPEP § 608.02(h).
The examiner’s holding of new matter may be petitionable or appealable. See MPEP § 608.04(c).
For new matter in reissue application, see MPEP § 1411.02. For new matter in substitute specification, see MPEP § 608.01(q). For new matter in a continuation or divisional application, see MPEP § 211.05.
Note: No amendment is permitted in a provisional application after it receives a filing date.
608.04(a) Matter Not Present in Specification, Claims, or Drawings on the Application Filing Date [R-07.2015]
Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter. See MPEP §§ 2163.06 and 2163.07 for guidance in determining whether an amendment adds new matter. See MPEP § 2163.07(a) to determine whether added characteristics such as chemical or physical properties, a new structural formula or a new use are inherent characteristics that do not introduce new matter. For rejection of claim involving new matter, see MPEP § 706.03(o).
For completeness of specification, see MPEP § 608.01(p). For trademarks and trade names, see MPEP § 608.01(v).
608.04(b) New Matter by Preliminary Amendment [R-11.2013]
A preliminary amendment present on the filing date of the application (e.g., filed along with the filing of the application) is considered a part of the original disclosure. See MPEP § 714.01(e) and § 602. A
preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application. See MPEP § 706.03(o). For applications filed on or after September 21, 2004, the Office will automatically treat any preliminary amendment under 37 CFR 1.115(a)(1) that is present on the filing date of the application as part of the original disclosure. Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application. Applicants are strongly encouraged to avoid submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application.
608.04(c) Review of Examiner’s Holding of New Matter [R-11.2013]
Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition. But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one, and should not be considered on petition even though that new matter has been introduced into the specification also. See also MPEP § 2163.06.
608.05 Sequence Listing, Table, or Computer Program Listing Appendix Submitted in Electronic Form [R-07.2015]
37 CFR 1.52 Language, paper, writing, margins, compact disc specifications.
(a)
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(5) Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office’s electronic filing system requirements.
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(e) Electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination or supplemental examination proceeding.
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(1) The following documents may be submitted to the Office on a compact disc in compliance with this paragraph:
(i) A computer program listing (see § 1.96);
(ii) A “Sequence Listing” (submitted under § 1.821(c)); or
(iii) Any individual table (see § 1.58) if the table is more than 50 pages in length, or if the total number of pages of all of the tables in an application exceeds 100 pages in length, where a table page is a page printed on paper in conformance with paragraph (b) of this section and § 1.58(c).
(2) A compact disc as used in this part means a Compact Disc-Read Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance with this paragraph. A CD-ROM is a “read-only” medium on which the data is pressed into the disc so that it cannot be changed or erased. A CD-R is a “write once” medium on which once the data is recorded, it is permanent and cannot be changed or erased.
(3)(i) Each compact disc must conform to the International Organization for Standardization (ISO) 9660 standard, and the contents of each compact disc must be in compliance with the American Standard Code for Information Interchange (ASCII).
(ii) Each compact disc must be enclosed in a hard compact disc case within an unsealed padded and protective mailing envelope and accompanied by a transmittal letter on paper in accordance with paragraph (a) of this section. The transmittal letter must list for each compact disc the machine format ( e.g., IBM-PC, Macintosh), the operating system compatibility ( e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret ( e.g., tables in landscape orientation should be identified as landscape orientation or be identified when inquired about) the information on the compact disc. Compact discs submitted to the Office will not be returned to the applicant.
(4) Any compact disc must be submitted in duplicate unless it contains only the “Sequence Listing” in computer readable form required by § 1.821(e). The compact disc and duplicate copy must be labeled “Copy 1” and “Copy 2,” respectively. The transmittal letter which accompanies the compact disc must include a statement that the two compact discs are identical. In the event that the two compact discs are not identical, the Office will use the compact disc labeled “Copy 1” for further processing. Any amendment to the information on a compact disc must be by way of a replacement compact disc in compliance with this paragraph containing the substitute information, and must be accompanied by a statement that the replacement compact disc contains no new matter. The compact disc and copy must be labeled “COPY 1 REPLACEMENT MM/DD/YYYY” (with the month, day and year of creation indicated), and “COPY 2 REPLACEMENT MM/DD/YYYY,” respectively.
(5) The specification must contain an incorporation-by-reference of the material on the compact disc in a separate paragraph (§ 1.77(b)(5)), identifying each compact
disc by the names of the files contained on each of the compact discs, their date of creation and their sizes in bytes. The Office may require applicant to amend the specification to include in the paper portion any part of the specification previously submitted on compact disc.
(6) A compact disc must also be labeled with the following information:
(i) The name of each inventor (if known);
(ii) Title of the invention;
(iii) The docket number, or application number if known, used by the person filing the application to identify the application;
(iv) A creation date of the compact disc.
(v) If multiple compact discs are submitted, the label shall indicate their order ( e.g. “1 of X”); and
(vi) An indication that the disc is “Copy 1” or “Copy 2” of the submission. See paragraph (b)(4) of this section.
(7) If a file is unreadable on both copies of the disc, the unreadable file will be treated as not having been submitted. A file is unreadable if, for example, it is of a format that does not comply with the requirements of paragraph (e)(3) of this section, it is corrupted by a computer virus, or it is written onto a defective compact disc.
(f)(1) Any sequence listing in an electronic medium in compliance with §§ 1.52(e) and 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, will be excluded when determining the application size fee required by § 1.16(s) or § 1.492(j). For purposes of determining the application size fee required by § 1.16(s) or § 1.492(j), for an application the specification and drawings of which, excluding any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, are submitted in whole or in part on an electronic medium other than the Office electronic filing system, each three kilobytes of content submitted on an electronic medium shall be counted as a sheet of paper.
(2) Except as otherwise provided in this paragraph, the paper size equivalent of the specification and drawings of an application submitted via the Office electronic filing system will be considered to be the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of computing the application size fee required by § 1.16(s). Any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing in compliance with § 1.96, submitted via the Office electronic filing system will be excluded when determining the application size fee required by § 1.16(s) if the listing is submitted in ACSII text as part of an associated file.
37 CFR 1.77 Arrangement of application elements.
(a) The elements of the application, if applicable, should appear in the following order:
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(1) Utility application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings.
(6) The inventor’s oath or declaration.
(b) The specification should include the following sections in order:
(1) Title of the invention, which may be accompanied by an introductory portion stating the name, citizenship, and residence of the applicant (unless included in the application data sheet).
(2) Cross-reference to related applications.
(3) Statement regarding federally sponsored research or development.
(4) The names of the parties to a joint research agreement.
(5) Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc (see § 1.52(e)(5)). The total number of compact discs including duplicates and the files on each compact disc shall be specified.
(6) Statement regarding prior disclosures by the inventor or a joint inventor.
(7) Background of the invention.
(8) Brief summary of the invention.
(9) Brief description of the several views of the drawing.
(10) Detailed description of the invention.
(11) A claim or claims.
(12) Abstract of the disclosure.
(13) “Sequence Listing,” if on paper (see §§ 1.821 through 1.825).
(c) The text of the specification sections defined in paragraphs (b)(1) through (b)(12) of this section, if applicable, should be preceded by a section heading in uppercase and without underlining or bold type.
In view of lengthy data listings being submitted as part of the disclosure in some patent applications, the Office established procedures for the presentation of large tables (37 CFR 1.58), computer program listings (37 CFR 1.96) and biotechnology sequence listings (37 CFR 1.821(c)) in electronic form. Such listings are often several hundred pages or more in length. By filing and publishing such data listings in electronic form, substantial cost savings can result
to the applicants, the public, and the U.S. Patent and Trademark Office.
The following document types may be submitted as ASCII text files with a “.txt” extension via EFS-Web or as compact discs in compliance with 37 CFR 1.52(e) and 1.821 et seq. provided the specification contains a statement in a separate paragraph that incorporates by reference the material in the ASCII text file identifying the name of the ASCII text file, the date of creation, and the size of the ASCII text file in bytes:
(1) A computer program listing (see 37 CFR 1.96);
(2) A sequence listing (submitted under 37 CFR 1.821); or
(3) Any individual table (see 37 CFR 1.58) if the table is more than 50 pages in length, or if the total number of pages of all of the tables in an application exceeds 100 pages in length, wherein a table page is a page printed on paper in conformance with 37 CFR 1.52(b) and 1.58(c).
I. TEXT FILES SUBMITTED VIA EFS-WEB
The requirements of 37 CFR 1.52(e)(3)-(6) for documents submitted on compact disc are not applicable to computer program listings, sequence listings, and tables submitted as ASCII text files via EFS-Web. However, each text file must be in compliance with ASCII and have a file name with a “.txt” extension. Further, the specification must contain an incorporation-by-reference of the material in the ASCII text file in a separate paragraph identifying the name of the ASCII text file, the date of creation, and the size of the ASCII text file in bytes similar to the requirements of 37 CFR 1.52(e)(5) for compact discs. See 37 CFR 1.77(b)(5).
Form paragraphs 6.61.02 and 6.71.02 (reproduced in subsection II., below) may be used to indicate the need to add or amend an incorporation by reference statement for text files submitted via EFS-Web.
A. Information Specific to Sequence Listings
It is recommended that a sequence listing be submitted in an ASCII text file via EFS-Web rather than in a PDF file. If a sequence listing text file
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submitted via EFS-Web on the application filing date complies with the requirements of 37 CFR 1.824(a)(2)-(6) and (b), and applicant has not filed a sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the computer readable form (CRF) required by 37 CFR 1.821(e). Thus, the following are not required and should not be submitted: (1) a second copy of the sequence listing in a PDF file; (2) a statement under 37 CFR 1.821(f) (indicating that the paper copy and CRF copy of the sequence listing are identican( � and (3) a request to use a compliant computer readable “Sequence Listing” that is already on file for another application pursuant to 37 CFR 1.821(e). If such a request is filed, the USPTO will not carry out the request but will use the sequence listing submitted in an ASCII text file with the application via EFS-Web. See MPEP § 2422.05. Checker software that may be used to check a sequence listing for compliance with the requirements of 37 CFR 1.824 is available on the USPTO website at www.uspto.gov/patents-getting-started/patent-basics/ types-patent-applications/utility-patent/checker-version-446.
If a user submits a sequence listing (under 37 CFR 1.821(c) and (e)) as an ASCII text file via EFS-Web in response to a requirement under 37 CFR 1.821(g) or (h), the sequence listing text file must be accompanied by a statement that the submission does not include any new matter which goes beyond the disclosure of the application as filed. In addition, if a user submits an amendment to, or a replacement of, a sequence listing (under 37 CFR 1.821(c) and (e)) as an ASCII text file via EFS-Web, the sequence listing text file must be accompanied by: (1) a statement that the submission does not include any new matter; and (2) a statement that indicates support for the amendment in the application, as filed. See 37 CFR 1.825.
Submission of the sequence listing in a PDF file on the application filing date is not recommended. Applicant must still provide the CRF required by 37 CFR 1.821(e), and the sequence listing in the PDF file will not be excluded when determining the application size fee. The USPTO prefers the submission of a sequence listing in an ASCII text file via EFS-Web on the application filing date because as stated above, if applicant has not filed a
second copy of the sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the CRF required by 37 CFR 1.821(e). Any sequence listing submitted in PDF format (or on paper) on the application filing date is treated as the paper copy required by 37 CFR 1.821(c). If applicant submits both a sequence listing in a PDF file and an ASCII text file via EFS-Web on the application filing date, a statement that the sequence listing content of the PDF copy and the ASCII text file copy are identical is required. In situations where applicant files the sequence listing in PDF format and requests the use of the CRF of another application under 37 CFR 1.821(e), applicant must submit a letter and request in compliance with 37 CFR 1.821(e) and a statement that the PDF copy filed in the new application is identical to the CRF filed in the other application. See also MPEP § 2422.05.
B. Application Size Fee
Any sequence listing submitted as an ASCII text file via EFS-Web that is otherwise in compliance with 37 CFR 1.52(e) and 1.824(a)(2)-(6) and (b), and any computer program listing submitted as an ASCII text file via EFS-Web that is otherwise in compliance with 37 CFR 1.52(e) and 1.96, will be excluded when determining the application size fee required by 37 CFR 1.16(s) or 1.492(j) as per 37 CFR 1.52(f)(1).
Regarding a table submitted as an ASCII text file via EFS-Web that is part of the specification or drawings, each three kilobytes of content submitted will be counted as a sheet of paper for purposes of determining the application size fee required by 37 CFR 1.16(s) or 1.492(j). Each table should be submitted as a separate text file. Further, the file name for each table should indicate which table is contained therein.
C. Size Limit for Text Files
One hundred (100) megabytes is the size limit for sequence listing text files submitted via EFS-Web; for all other text file types, 25 megabytes is the size limit. If a user wishes to submit an electronic copy of a file that exceeds these size limits, it is recommended that the electronic copy be submitted
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on compact disc via Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or hand delivery, on the date of the corresponding EFS-Web filing in accordance with 37 CFR 1.52(e) if the user wishes the electronic copy to be considered to be part of the application as filed.
See the EFS-Web Legal Framework (www.uspto.gov/patents-application-process/ applying-online/legal-framework-efs-web-06april11) for addition information pertaining to limits on the number and size of files submitted via EFS-Web. See also MPEP § 502.05.
II. Submissions On Compact Disc
A compact disc submitted under 37 CFR 1.52(e) must either be a CD-ROM or a CD-R. A CD-ROM is made by a process of pressing the disc from a master template; the data cannot be erased or rewritten. A CD-R is a compact disc that has a recording medium only capable of writing once. CD-RW type media which are erasable and rewriteable are not acceptable. Limiting the media types to CD-ROM and CD-R media will ensure the longevity and integrity of the data submitted. The files stored on the compact disc must contain only ASCII characters. No non-ASCII characters or proprietary file formats are permitted. A text viewer is recommended for viewing ASCII files. While virtually any word processor may be used to view an ASCII file, care must be taken since a word processor will often not distinguish ASCII and non-ASCII files when displayed. For example, a word processor normally does not display hidden proprietary non-ASCII characters used for formatting when viewing a non-ASCII word processor file.
Compact disc(s) filed on the date that the application was accorded a filing date are to be treated as part of the originally filed disclosure even if the requisite “incorporation by reference” statement (see 37 CFR 1.77(b)(5)) is omitted. Similarly, if a preliminary amendment accompanies the application when it is filed in the Office and the preliminary amendment includes compact disc(s), the compact disc(s) will be treated as part of the original disclosure. The compact disc(s) is considered part of the original disclosure by virtue of its inclusion with the application on the date the application is accorded
a filing date. The incorporation by reference statement of the material on the compact disc is required to be part of the specification so it is clear to the Office, the printer, and the public that the application as originally filed includes material on compact disc. The examiner should require applicant(s) to insert this statement if it is omitted or the examiner may insert the statement by examiner’s amendment at the time of allowance.
37 CFR 1.52(e)(3)(ii) requires that each compact disc must be enclosed in a hard compact disc case within an unsealed padded and protective mailing envelope and accompanied by a transmittal letter on paper in accordance with 37 CFR 1.52(a). The transmittal letter must list for each compact disc the machine format (e.g., IBM-PC, Macintosh), the operating system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret the information on the compact disc. Compact discs submitted to the Office will not be returned to the applicant.
All compact discs submitted under 37 CFR 1.52(e) must be submitted in duplicate labeled as “copy 1” and “copy 2” respectively. If more than one compact disc is required to hold all of the information, each compact disc must be submitted in duplicate to form two sets of discs: one set labeled “copy 1” and a second set labeled “copy 2.” Both disc copies should initially be routed to the Office of Patent Application Processing (OPAP). The compact discs will be checked by OPAP for viruses, readability, the presence of non-ASCII files, and compliance with the file and disc labeling requirements. OPAP will retain one copy of the discs and place the other copy in an artifact folder associated with the Image File Wrapper. In the event that there is not a complete set of files on both copies of the originally filed discs, OPAP will retain the originally filed discs and send a notice to the applicant to submit an additional complete copy. For provisional applications, OPAP will provide applicant notification and, where appropriate, require correction for virus infected compact discs, unreadable compact discs (or unreadable files thereon), and missing duplicate discs.
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An amendment to the material on a compact disc must be done by submitting a replacement compact disc with the amended file(s) or by filing the material as text file(s) via EFS-Web. The amendment should include a corresponding amendment to the description of the incorporation by reference portion of the specification. A replacement compact disc containing the amended files must contain all of the files of the original compact disc that were not amended. This will insure that the Office, printer, and public can quickly access all of the current files in an application or patent by referencing only the latest electronic version of the ASCII file.
The following form paragraphs may be used to notify applicant of corrections needed with respect to compact disc submissions.
¶ 6.60.01 CD-ROM/CD-R Requirements (No Statement that CDs are Identical)
This application is objected to under 37 CFR 1.52(e)(4) because it does not contain a statement in the transmittal letter that the two compact discs are identical. Correction is required.
¶ 6.60.02 CD-ROM/CD-R Requirements (No Listing in Transmittal Letter)
This application is objected to because it contains a data file on CD-ROM/CD-R, however, the transmittal letter does not list for each compact disc, the machine format, the operating system compatibility, a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret the information on the compact disc as required by 37 CFR 1.52(e)(3). A statement listing the required information is required.
¶ 6.61.01 Specification Lacking List of Compact Disc(s) and /or Associated Files
Portions of this application are contained on compact disc(s). When portions of an application are contained on a compact disc, the paper portion of the specification must identify the compact disc(s) and list the files including name, file size, and creation date on each of the compact discs. See 37 CFR 1.52(e). Compact disc labeled[1] is not identified in the paper portion of the specification with a listing of all of the files contained on the disc. Applicant is required to amend the specification to identify each disc and the files contained on each disc including the file name, file size, and file creation date.
Examiner Note:
In bracket 1, insert the name on the label of the compact disc.
¶ 6.61.02 Specification Lacking An Incorporation By Reference Statement for Compact Disc or Text File Submitted Via EFS-Web
This application contains compact disc(s) or text file(s) submitted via EFS-Web as part of the originally filed subject matter, but does not contain an incorporation by reference statement for the compact discs or text files. See 37 CFR 1.77(b)(5) and MPEP § 502.05. Applicant(s) are required to insert in the specification an appropriate incorporation-by-reference statement.
¶ 6.62 Data File on CD-ROM/CD-R Not in ASCII File Format
This application contains a data file on CD-ROM/CD-R that is not in an ASCII file format. See 37 CFR 1.52(e). File [1] is not in an ASCII format. Applicant is required to resubmit file(s) in ASCII format. No new matter may be introduced in presenting the file(s) in ASCII format.
Examiner Note:
1. This form paragraph must be used to indicate whenever a data file (table, computer program listing or Sequence Listing) is submitted in a non-ASCII file format. The file may be in a file format that is proprietary, e.g., a Microsoft Word, Excel or Word Perfect file format; and/or the file may contain non-ASCII characters.
2. In bracket 1, insert the name of the file and whether the file is a non-text proprietary file format and/or contains non-ASCII characters.
The following form paragraphs should be used to respond to amendments which include amended or substituted compact discs.
¶ 6.70.01 CD-ROM/CD-R Requirements (Amendment Does Not Include Statement that CDs are Identical)
The amendment filed [1] is objected to under 37 CFR 1.52(e)(4) because it does not contain a statement in the transmittal letter that the two compact discs are identical. Correction is required.
¶ 6.70.02 CD-ROM/CD-R Requirements (No Listing in Transmittal Letter Submitted With Amendment)
The amendment filed [1] contains data on compact disc(s). Compact disc labeled [2] is not identified in the transmittal letter and/or the transmittal letter does not list for each compact disc, the machine format, the operating system compatibility, a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret the information on the compact disc as required by 37 CFR 1.52(e)(3). A statement listing the required information is required.
Examiner Note:
1. Use this form paragraph when the transmittal letter does not include a listing of the files and required information.
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2. In bracket 1, insert the date of the amendment.
3. In bracket 2, insert the name on the label of the compact disc.
¶ 6.71.01 Specification Lacking List of Compact Disc(s) and/or Associated Files (Amendment Filed With Compact Disc(s))
The amendment filed [1] contains data on compact disc(s). Compact disc labeled [2] is not identified in the paper portion of the specification with a listing of all of the files contained on the disc. Applicant is required to amend the specification to identify each disc and the files contained on each disc including the file name, file size, and file creation date. See 37 CFR 1.52(e).
Examiner Note:
1. In bracket 1, insert the date of the amendment.
2. In bracket 2, insert the name on the label of the compact disc.
¶ 6.71.02 Specification Lacking Incorporation By Reference Statement for Amended or Added Compact Disc or Text File
The amendment filed [1] amends or adds compact disc(s) or text file(s) submitted via EFS-Web. Applicant is required to update or insert an appropriate incorporation-by-reference statement in the specification. See 37 CFR 1.77(b)(5) and 1.52(e)(5).
Examiner Note:
1. Use this form paragraph when a CD-ROM/CD-R or text file submitted via EFS-Web is filed with an amendment, but the required incorporation-by-reference statement is neither amended nor added to the specification.
2. In bracket 1, insert the date of the amendment.
¶ 6.72.01 CD-ROM/CD-R Requirements (CDs Not Identical)
The amendment filed [1] is objected to under 37 CFR 1.52(e)(4) because the two compact discs are not identical. Correction is required.
Examiner Note:
1. Use this form paragraph when the two compact discs are not identical.
2. See also form paragraph 6.70.01 where the transmittal letter does not include a statement that the two compact discs are identical.
¶ 6.72.02 Data File, Submitted With Amendment, on CD-ROM/CD-R Not in ASCII File Format
The amendment filed [1] contains a data file on CD-ROM/CD-R that is not in an ASCII file format. File [2] is not in an ASCII format. Applicant is required to resubmit file(s) in ASCII format
as required by 37 CFR 1.52(e)(3). No new matter may be introduced in presenting the file(s) in ASCII format.
Examiner Note:
1. This form paragraph must be used whenever a data file (table, computer program listing or Sequence Listing) is submitted in a non-ASCII file format. The file may be in a file format that is proprietary, e.g., a Microsoft Word, Excel or Word Perfect file format; and/or the file contains non-ASCII characters.
2. In bracket 1, insert the date of the amendment.
3. In bracket 2, insert the name of the file and whether the file is a non-text proprietary file format and/or contains non-ASCII characters.
¶ 6.72.03 CD-ROM/CD-R Are Not Readable
The amendment filed [1] contains a data file on CD-ROM/CD-R that is unreadable. Applicant is required to resubmit the file(s) in International Organization for Standardization (ISO) 9660 standard and American Standard Code for Information Interchange (ASCII) format as required by 37 CFR 1.52(e)(3). No new matter may be introduced in presenting the file in ISO 9660 and ASCII format.
¶ 6.72.04 CD-ROM/CD-R Contains Viruses
The amendment filed [1] is objected to because the compact disc contains at least one virus. Correction is required.
¶ 6.72.05 CD-ROM/CD-R Requirements (Missing Files On Amended Compact Disc)
The amendment to the application filed [1] is objected to because the newly submitted compact disc(s) do not contain all of the unamended data file(s) together with the amended data file(s) that were on the CD-ROM/CD-R. Since amendments to a compact disc can only be made by providing a replacement compact disc, the replacement disc must include all of the files, both amended and unamended, to be a complete replacement.
Examiner Note:
Use this form paragraph when a replacement compact disc is submitted that fails to include all of the files on the original compact disc(s) that have not been cancelled by amendment.
608.05(a) Deposit of Computer Program Listings [R-07.2015]
37 CFR 1.96 Submission of computer program listings.
(a) General. Descriptions of the operation and general content of computer program listings should appear in the description portion of the specification. A computer program listing for the purpose of this section is defined as a printout that lists in appropriate sequence the instructions, routines, and other contents of a program for a computer. The program listing may be either in machine or machine-independent (object or source) language which will cause a computer to perform a
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desired procedure or task such as solve a problem, regulate the flow of work in a computer, or control or monitor events. Computer program listings may be submitted in patent applications as set forth in paragraphs (b) and (c) of this section.
(b) Material which will be printed in the patent: If the computer program listing is contained in 300 lines or fewer, with each line of 72 characters or fewer, it may be submitted either as drawings or as part of the specification.
(1) Drawings . If the listing is submitted as drawings, it must be submitted in the manner and complying with the requirements for drawings as provided in § 1.84. At least one figure numeral is required on each sheet of drawing.
(2) Specification.
(i) If the listing is submitted as part of the specification, it must be submitted in accordance with the provisions of § 1.52.
(ii) Any listing having more than 60 lines of code that is submitted as part of the specification must be positioned at the end of the description but before the claims. Any amendment must be made by way of submission of a substitute sheet.
(c) As an appendix which will not be printed : Any computer program listing may, and any computer program listing having over 300 lines (up to 72 characters per line) must, be submitted on a compact disc in compliance with § 1.52(e). A compact disc containing such a computer program listing is to be referred to as a “computer program listing appendix.” The “computer program listing appendix” will not be part of the printed patent. The specification must include a reference to the “computer program listing appendix” at the location indicated in § 1.77(b)(5).
(1) Multiple computer program listings for a single application may be placed on a single compact disc. Multiple compact discs may be submitted for a single application if necessary. A separate compact disc is required for each application containing a computer program listing that must be submitted on a “computer program listing appendix.”
(2) The “computer program listing appendix” must be submitted on a compact disc that complies with § 1.52(e) and the following specifications (no other format shall be allowed):
(i) Computer Compatibility: IBM PC/XT/AT, or compatibles, or Apple Macintosh;
(ii) Operating System Compatibility: MS-DOS, MS-Windows, Unix, or Macintosh;
(iii) Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
(iv) Control Codes: the data must not be dependent on control characters or codes which are not defined in the ASCII character set; and
(v) Compression: uncompressed data.
Special procedures for presentation of computer program listings in the form of ASCII text files in
U.S. national patent applications are set forth in 37 CFR 1.96. Submission via EFS-Web or the use of compact disc files is desirable in view of the number of computer program listings being submitted as part of the disclosure in patent applications. Such listings are often several hundred pages in length. By filing and publishing such computer program listings electronically or on compact discs rather than on paper, substantial cost savings can result to the applicants, the public, and the U.S. Patent and Trademark Office.
See MPEP § 608.05, subsection I., for details pertaining to submission of text files via EFS-Web, and subsection II. for details pertaining to submissions on compact disc.
I. BACKGROUND
A computer program listing, as used in these rules, means the printout that lists, in proper sequence, the instructions, routines, and other contents of a program for a computer. The listing may be either in machine or machine-independent (object or source) programming language which will cause a computer to perform a desired task, such as solving a problem, regulating the flow of work in computer, or controlling or monitoring events. The general description of the computer program listing will appear in the specification while the computer program listing may appear either directly or as a computer program listing appendix to the specification, submitted in an ASCII text file via EFS-Web or on compact disc, and incorporated into the specification by reference.
Copies of publicly available computer program listings are available via Public PAIR. The U.S. Patent and Trademark Office also provides publicly available computer program listings on paper and on compact disc at the cost set forth in 37 CFR 1.19(a).
II. DISCUSSION OF THE BACKGROUND AND MAJOR ISSUES INVOLVED
The provisions of 37 CFR 1.52 and 37 CFR 1.84 for submitting specifications and drawings on paper have been found suitable for most patent applications, although submission via EFS-Web is
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preferred. When lengthy computer program listings must be disclosed in a patent application in order to provide a complete disclosure, use of paper copies can become burdensome. The cost of printing long computer programs in patent documents is also very expensive to the U.S. Patent and Trademark Office. Under 37 CFR 1.96, several different methods for submitting computer program listings, including the use of compact discs, are set forth. A computer program listing contained on three hundred printout lines or less may be submitted either as drawings (in compliance with 37 CFR 1.84), as part of the written specification (in compliance with 37 CFR 1.52), on compact disc (in compliance with 37 CFR 1.52(e)), or as an ASCII text file via EFS-Web (in compliance with the EFS-Web Legal Framework (see MPEP § 502.05)). A computer program listing contained on three hundred and one (301) printout lines or more must be submitted as ASCII files on compact discs (in compliance with 37 CFR 1.96(c)) or submitted via EFS-Web.
Form paragraph 6.64.01 or 6.64.02 may be used to notify the applicant of this requirement.
¶ 6.64.01 Computer Program Listing Appendix of More Than 300 Lines in Specification
The specification of this application contains a computer program listing consisting of more than three hundred (300) lines. In accordance with 37 CFR 1.96(c), a computer program listing of more than three hundred lines must be submitted as an appendix in text format. The computer program listing appendix may be submitted as a text file via EFS-Web or on compact disc conforming to the standards set forth in 37 CFR 1.96(c)(2). The computer program listing must be appropriately referenced in the specification (see 37 CFR 1.77(b)(5)). Accordingly, applicant is required to cancel the current computer program listing, file a computer program listing appendix as a text file via EFS-Web or on compact disc in compliance with 37 CFR 1.96(c), and insert an appropriate reference to the newly added computer program listing appendix at the beginning of the specification.
Examiner Note:
1. This form paragraph must be used whenever a computer program listing consisting of more than three hundred lines is included as part of the descriptive portion of the specification if the computer program listing was filed on or after September 8, 2000. See MPEP § 608.05(a).
2. In bracket 1, insert the range of page numbers of the specification which include the computer program listing.
¶ 6.64.02 Computer Program Listing as Printout Within the Specification (More Than 60 Lines And Not More Than Three Hundred Lines)
This application contains a computer program listing of over sixty (60) lines and less than three hundred and one (301) lines within the written specification. In accordance with 37 CFR 1.96(b), a computer program listing contained on over sixty (60) lines and less than three hundred-one (301) lines must, if submitted as part of the specification, be positioned at the end of the specification and before the claims. Accordingly, applicant is required to cancel the computer program listing and either incorporate such listing in a text file submitted via EFS-Web or on compact disc in compliance with 37 CFR 1.96, or insert the computer program listing after the detailed description of the invention but before the claims.
Examiner Note:
This form paragraph must be used whenever a computer program listing consisting of a paper printout of more than 60 lines and no more than three hundred lines is included as part of the descriptive portion of the specification and the computer program listing was filed on or after September 8, 2000. See MPEP § 608.05(a).
A computer program listing of more than three hundred lines will not be printed in any patent application publication or patent. See 37 CFR 1.96(c).
III. OTHER INFORMATION
A Computer Program Listing Appendix submitted electronically via EFS-Web in ASCII text or on compact disc will be identified as such in the patent but will not be part of the printed patent. A statement must be included in the specification to the effect that a computer program listing appendix on compact disc is included in the application. The specification entry should appear at the beginning of the specification following any cross-reference to related applications. 37 CFR 1.77(b)(5). When an application containing compact discs is received in the Office of Patent Application Processing (OPAP), an artifact folder will be created. The application file will then proceed on its normal course.
The Office provided for the continuation of prior microfiche appendix practice for computer listings until March 1, 2001. All computer listings as part of the application disclosure filed prior to March 2, 2001 that are in conformance with the microfiche appendix rules as in force on September 7, 2000 may rely on the microfiche and need not submit a
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computer program listing appendix on compact disc; all computer listings as part of the application disclosure not in conformance with such microfiche appendix rules must conform to the requirements of 37 CFR 1.52 and 37 CFR 1.96 as set forth above.
IV. TEMPORARY CONTINUATION OF MICROFICHE PRACTICE UNTIL MARCH 1, 2001
Form paragraph 6.64.04 may be used to notify applicant of an unacceptable microfiche appendix.
¶ 6.64.04 “Microfiche Appendix” Unacceptable
The computer program listing filed on [1] as a “microfiche appendix” is unacceptable. A computer program listing conforming to the requirements of 37 CFR 1.96 is required.
Examiner Note:
1. This form paragraph should be used if a “microfiche appendix” was filed after March 1, 2001 or if a “microfiche appendix” filed on or before March 1, 2001 was not in compliance with former rule 37 CFR 1.96(c). See MPEP § 608.05(a).
2. In bracket 1, insert the date the “microfiche appendix” was filed.
608.05(b) Compact Disc Submissions of Large Tables [R-07.2015]
37 CFR 1.58 Chemical and mathematical formulae and tables.
*****
(b) Tables that are submitted in electronic form (§§ 1.96(c) and 1.821(c)) must maintain the spatial relationships ( e.g. , alignment of columns and rows) of the table elements when displayed so as to visually preserve the relational information they convey. Chemical and mathematical formulae must be encoded to maintain the proper positioning of their characters when displayed in order to preserve their intended meaning.
*****
The provisions of 37 CFR 1.52 and 37 CFR 1.58 for submitting specifications and tables on paper have been found suitable for most patent applications, although submission via EFS-Web is preferred. When lengthy tables must be disclosed in a patent application in order to provide a complete disclosure, use of paper copies can become burdensome. The cost of printing long tables in patent documents is also very expensive to the U.S. Patent and Trademark Office. In the past, all disclosures forming part of a patent application were presented
on paper with the exception of microorganisms and computer program listings. Under 37 CFR 1.58, several different methods for submitting large tables, including the use of CD-ROM and CD-R, are set forth. Applicants may also submit large tables as ASCII text files submitted via EFS-Web.
See MPEP § 608.05, subsection I., for details pertaining to submission of text files via EFS-Web, and subsection II. for details pertaining to submissions on compact disc.
The text files submitted via EFS-Web or stored on the compact disc containing the table must contain only ASCII characters. No special formatting characters or proprietary file formats are permitted. Accordingly, great care must be taken so that the spatial arrangement of the data in rows and columns is maintained in the table when the file is opened for viewing at the Office. This will allow the table to viewed with virtually any text viewer. A single table contained on fifty pages or less must be submitted either as drawings (in compliance with 37 CFR 1.84) or as part of the specification in paper (in compliance with 37 CFR 1.52) or PDF (if filed via EFS-Web).
A single table contained on 51 pages or more, or if there are multiple tables in an application and the total number of pages of the tables exceeds one hundred pages, the tables may be submitted on a CD-ROM or CD-R (in compliance with 37 CFR 1.52(e) and 37 CFR 1.58) or as an ASCII text file via EFS-Web (in compliance with the EFS-Web Legal Framework (see MPEP § 502.05)). A table page is defined in 37 CFR 1.52(e)(1)(iii) as a page printed on paper in conformance with 37 CFR 1.52(b) and 1.58(c). The presentation of a subheading to divide a large table into smaller sections of less than 51 pages should not be used to prevent an applicant from submitting the table on a compact disc unless the subdivided tables are presented as numerous files on the compact disc so as to lose their relationship to the overall large table.
Tables in landscape orientation should be identified as landscape orientation in the transmittal letter accompanying the compact disc to allow the Office to properly upload the tables into the Image File Wrapper (IFW) or other automated systems. 37 CFR 1.52(e)(3)(ii). Most tables filed with patent
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applications are intended to be rendered in portrait mode. Accordingly, filings without an identification of landscape mode will be rendered as portrait mode tables by the Office. Landscape oriented tables should not be filed via EFS-Web because PAIR will automatically convert the tables to portrait orientation, which may cause the images to be distorted during viewing.
If tables on more than two hundred consecutive pages, or large numbers of tables (lengthy tables) are submitted on a CD or as text files submitted via EFS-Web as provided in 37 CFR 1.52(e), or in an electronic format in response to a specific request from the Office of Data Management, these lengthy tables will not be published as part of a patent document (e.g., patent, patent application publication or Statutory Invention Registration (SIR)). The lengthy tables will be published separately on the sequence homepage of the USPTO website (http://seqdata.uspto.gov) as an XML file. See, for example, patent application publication nos. US 20030235811 A1 and US 20030237110 A9.
The Office discourages the embedding of a lengthy table in the specification of a patent application. If a lengthy table is embedded in the specification of a patent application, and if the lengthy table is available in an electronic form (either XML or a format convertible to XML), when the patent or patent application publication is published, the following single-column statement will be inserted in place of each replaced table in the document.
LENGTHY TABLE
Lengthy table referenced here. Please refer to the end of the specification for access instructions.
When the lengthy tables are separately published on the USPTO website, there will be a standardized “Lengthy Table” statement, in the patent document following the detailed description (see 37 CFR 1.77(b)(8)).
For a patent application publication, the following page-wide text would appear:
LENGTHY TABLES
The patent application contains a lengthy table section. A copy of the table is available in electronic form from the USPTO Web site (http://seq data.uspto.gov/?pageRequest=docDetail& docID=[publication number]). An electronic copy of the table will also be available from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).
For a patent, the following page-wide text would appear:
LENGTHY TABLES
The patent contains a lengthy table section. A copy of the table is available in electronic form from the USPTO Web site ( h t t p : / / s e q d a t a . u s p t o . g o v / ? p a g e R e q u e s t = d o c Detail&docID=[patent number]). An electronic copy of the table will also be available from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).
For a SIR, the following page-wide text would appear:
LENGTHY TABLES
The statutory invention registration contains a lengthy table section. A copy of the table is available in electronic form from the USPTO Web site (http://seqdata.uspto.gov/?page Request=docDetail&docID =[statutory invention registration number]). An electronic copy of the table will also be available from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b).
Form paragraphs 6.63.01 and 6.63.02 may be used to notify applicant of corrections needed to comply with the requirements of 37 CFR 1.52(e) and 37 CFR 1.58(b) with respect to tables.
¶ 6.63.01 Table Less Than 51 Pages Submitted Only as Text File
The description portion of this application contains a table consisting of less than fifty one (51) pages only in ASCII text format submitted either via EFS-Web or on compact disc. In accordance with 37 CFR 1.52(e), only a table of at least fifty one (51) pages may be submitted as an ASCII text file. Accordingly, applicant is required to cancel the references to the table in text format appearing in the specification on pages [1], file a paper version of the table in compliance with 37 CFR 1.52 or file a PDF version via EFS-Web, and change all appropriate references to the former table in text format to the newly added paper or PDF version of the table in the remainder of the specification.
Examiner Note:
1. This form paragraph must be used whenever a table on a compact disc or submitted as a text file via EFS-Web consisting
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of less than fifty one (51) pages as part of the descriptive portion of the specification is filed on or after September 8, 2000. See MPEP § 608.05(b).
2. In bracket 1, insert the range of page numbers of the specification which reference the table.
¶ 6.63.02 Table Column/Row Relationship Not Maintained
This application contains a table in ASCII text format submitted either via EFS-Web or on compact disc. Tables submitted as an ASCII text file in compliance with 37 CFR 1.58 must maintain the spatial orientation of the cell entries. The table submitted does not maintain the data within each table cell in its proper row/column alignment. The data is misaligned in the table as follows: [1]. Applicant is required to submit a replacement text file via EFS-Web or on compact disc with the table data properly aligned.
Examiner Note:
1. This form paragraph must be used whenever the data in a table cannot be accurately read because the data in the table cells do not maintain their row and column alignments.
2. In bracket 1, insert the area of the table that does not maintain the row and column alignments.
608.05(c) Submissions of Biological Sequence Listings as ASCII Files [R-07.2015]
Filing of biological sequence information on compact disc or in text format via EFS-Web is now permitted in lieu of filing on paper. See MPEP § 608.05. See also MPEP § 2422.03 for compact disc filings and MPEP § 2422.03(a) for sequence listings submitted as ASCII text files via EFS-Web. See also MPEP § 502.05 and the EFS-Web Legal Framework (www.uspto.gov/patents-application-process/ applying-online/legal-framework-efs-web-06april11) for submissions via EFS-Web.
609 Information Disclosure Statement [R-07.2015]
37 CFR 1.97 Filing of information disclosure statement.
(a) In order for an applicant for a patent or for a reissue of a patent to have an information disclosure statement in compliance with § 1.98 considered by the Office during the pendency of the application, the information disclosure statement must satisfy one of paragraphs (b), (c), or (d) of this section.
(b) An information disclosure statement shall be considered by the Office if filed by the applicant within any one of the following time periods:
(1) Within three months of the filing date of a national application other than a continued prosecution application under § 1.53(d);
(2) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
(3) Before the mailing of a first Office action on the merits;
(4) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114; or
(5) Within three months of the date of publication of the international registration under Hague Agreement Article 10(3) in an international design application.
(c) An information disclosure statement shall be considered by the Office if filed after the period specified in paragraph (b) of this section, provided that the information disclosure statement is filed before the mailing date of any of a final action under § 1.113, a notice of allowance under § 1.311, or an action that otherwise closes prosecution in the application, and it is accompanied by one of:
(1) The statement specified in paragraph (e) of this section; or
(2) The fee set forth in § 1.17(p).
(d) An information disclosure statement shall be considered by the Office if filed by the applicant after the period specified in paragraph (c) of this section, provided that the information disclosure statement is filed on or before payment of the issue fee and is accompanied by:
(1) The statement specified in paragraph (e) of this section; and
(2) The fee set forth in § 1.17(p).
(e) A statement under this section must state either:
(1) That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or
(2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
(f) No extensions of time for filing an information disclosure statement are permitted under § 1.136. If a bona fide attempt is made to comply with § 1.98, but part of the required content is inadvertently omitted, additional time may be given to enable full compliance.
(g) An information disclosure statement filed in accordance with this section shall not be construed as a representation that a search has been made.
(h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited
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in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).
(i) If an information disclosure statement does not comply with either this section or § 1.98, it will be placed in the file but will not be considered by the Office.
37 CFR 1.98 Content of information disclosure statement.
(a) Any information disclosure statement filed under § 1.97 shall include the items listed in paragraphs (a)(1), (a)(2) and (a)(3) of this section.
(1) A list of all patents, publications, applications, or other information submitted for consideration by the Office. U.S. patents and U.S. patent application publications must be listed in a section separately from citations of other documents. Each page of the list must include:
(i) The application number of the application in which the information disclosure statement is being submitted;
(ii) A column that provides a space, next to each document to be considered, for the examiner’s initials; and
(iii) A heading that clearly indicates that the list is an information disclosure statement.
(2) A legible copy of:
(i) Each foreign patent;
(ii) Each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
(iii) For each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion; and
(iv) All other information or that portion which caused it to be listed.
(3)(i) A concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other information listed that is not in the English language. The concise explanation may be either separate from applicant’s specification or incorporated therein.
(ii) A copy of the translation if a written English-language translation of a non-English-language document, or portion thereof, is within the possession, custody, or control of, or is readily available to any individual designated in § 1.56(c).
(b)(1) Each U.S. patent listed in an information disclosure statement must be identified by inventor, patent number, and issue date.
(2) Each U.S. patent application publication listed in an information disclosure statement shall be identified by applicant, patent application publication number, and publication date.
(3) Each U.S. application listed in an information disclosure statement must be identified by the inventor, application number, and filing date.
(4) Each foreign patent or published foreign patent application listed in an information disclosure statement must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application.
(5) Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.
(c) When the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of one of the patents or publications as specified in paragraph (a) of this section may be submitted without copies of the other patents or publications, provided that it is stated that these other patents or publications are cumulative.
(d) A copy of any patent, publication, pending U.S. application or other information, as specified in paragraph (a) of this section, listed in an information disclosure statement is required to be provided, even if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by, the Office in an earlier application, unless:
(1) The earlier application is properly identified in the information disclosure statement and is relied on for an earlier effective filing date under 35 U.S.C. 120; and
(2) The information disclosure statement submitted in the earlier application complies with paragraphs (a) through (c) of this section.
Information Disclosure Statements (IDSs) are not permitted in provisional applications filed under 35 U.S.C. 111(b). See 37 CFR 1.51(d). Since no substantive examination is given in provisional applications, a disclosure of information is unnecessary. Any such statement filed in a provisional application will be returned or destroyed at the option of the Office.
In nonprovisional applications, applicants and other individuals substantively involved with the preparation and/or prosecution of the application have a duty to submit to the Office information which is material to patentability as defined in 37 CFR 1.56. The provisions of 37 CFR 1.97 and 37 CFR 1.98 provide a mechanism by which patent applicants may comply with the duty of disclosure provided in 37 CFR 1.56. Applicants and other individuals substantively involved with the preparation and/or prosecution of the patent
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application also may want the Office to consider information for a variety of other reasons; e.g., to make sure that the examiner has an opportunity to consider the same information that was considered by these individuals, or by another patent office in a counterpart or related patent application filed in another country.
Third parties (individuals not covered by 37 CFR 1.56(c)) cannot file information disclosure statements under 37 CFR 1.97 and 37 CFR 1.98. Third parties may only submit patents and publications in compliance with 37 CFR 1.290 in applications published under 35 U.S.C. 122(b). See MPEP § 1134.01. For unpublished, pending applications, any member of the public, including private persons, corporate entities, and government agencies, may file a protest under 37 CFR 1.291 prior to the mailing of a notice of allowance under 37 CFR 1.311. See MPEP Chapter 1900. Alternatively, third parties may provide information to the applicant who may submit the information to the Office in an IDS. See 37 CFR 1.56(d). The Office will review any submission in an application filed by a third party to determine whether the submission is in compliance with 37 CFR 1.290 or 1.291. Any third party submission that does not comply with the requirements of 37 CFR 1.290 or 37 CFR 1.291 will not be entered into the application file and will be discarded. Office personnel (including the Patent Examining Corps) are instructed to: (1) not reply to or act upon any third-party inquiry or other submission in an application, except those in compliance with 37 CFR 1.290 or 37 CFR 1.291; and (2) decline to accept oral or telephone comments or submissions about applications from third parties. See MPEP § 1134.01.
An information disclosure statement filed in accordance with the provisions of 37 CFR 1.97 and 37 CFR 1.98 will be considered by the examiner assigned to the application. Individuals associated in a substantive way with the filing and prosecution of a patent application are encouraged to submit information to the Office so the examiner can evaluate its relevance to the claimed invention. The procedures for submitting an information disclosure statement under the rules are designed to encourage individuals to submit information to the Office promptly and in a uniform manner. These rules
provide certainty for the public by defining the requirements for submitting information disclosure statements to the Office so that the Office will consider information contained therein before a patent is granted.
The filing of an information disclosure statement shall not be construed as a representation that a search has been made. 37 CFR 1.97(g). There is no requirement that an applicant for a patent make a patentability search. Further, the filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in 37 CFR 1.56(b). 37 CFR 1.97(h). See MPEP § 2129 regarding admissions by applicant.
In order to have information considered by the Office during the pendency of a patent application, an information disclosure statement must be (1) in compliance with the content requirements of 37 CFR 1.98, and (2) filed in accordance with the procedural requirements of 37 CFR 1.97. The requirements as to content are discussed in MPEP § 609.04(a). The requirements based on the time of filing the statement are discussed in MPEP § 609.04(b). Examiner handling of information disclosure statements is discussed in MPEP § 609.05. For discussion of IDS filed electronically (e-IDS) via the Office’s Electronic Filing System (EFS), see MPEP § 609.07. For discussion of electronic processing of IDS, see MPEP § 609.08.
Once the minimum requirements of 37 CFR 1.97 and 37 CFR 1.98 are met, the examiner has an obligation to consider the information. There is no requirement that the information must be prior art references in order to be considered by the examiner. Consideration by the examiner of the information submitted in an IDS means nothing more than considering the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. The initials of the examiner placed adjacent to the citations on the PTO/SB/08A and 08B or its equivalent mean that the information has been considered by the examiner to the extent noted above. In addition, the following alternative electronic signature method may be used
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by examiners in information disclosure statements to indicate whether the information has been considered. Examiners will no longer initial each reference citation considered, but will continue to strikethrough each citation not considered. Each page of reference citations will be stamped by the examiner with the phrase “All references considered except where lined through” along with the examiner’s electronic initials, and the final page of reference citations will include the examiner’s electronic signature. Information submitted to the Office that does not comply with the requirements of 37 CFR 1.97 and 37 CFR 1.98 will not be considered by the Office but will be placed in the application file.
Multiple information disclosure statements may be filed in a single application, and they will be
considered, provided each is in compliance with the appropriate requirements of 37 CFR 1.97 and 37 CFR 1.98. Use of form PTO/SB/08A and 08B, “Information Disclosure Statement,” is encouraged as a means to provide the required list of information as set forth in 37 CFR 1.98(a)(1). Applicants are encouraged to use the USPTO form PTO/SB/08A and 08B when preparing an information disclosure statement because this form is updated by the Office. The form PTO/SB/08A and 08B will enable applicants to comply with the requirement to list each item of information being submitted and to provide the Office with a uniform listing of citations and with a ready way to indicate that the information has been considered. A copy of form PTO/SB/08A and 08B is reproduced at the end of this section.
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609.01 Examiner Checklist for Information Disclosure Statements [R-07.2015]
Examiners must check to see if an information disclosure statement (IDS) complies with:
(A) All the time-related requirements of 37 CFR 1.97, which are based on the time of the filing of the IDS. See MPEP § 609.04(b) for more information.
37 CFR 1.97 Requirements
Time when IDS is filed
None(1)(a) for national applications (not including CPAs), within three months of filing or before first Office action on the merits, whichever is later; (b) for national stage applications, within three months of entry into national stage or before first Office action on the merits, whichever is later; (c) for RCEs and CPAs before the first Office action on the merits; or (d) for international design applications, within three months of the date of publication of the international registration under Hague Agreement Article 10(3) or before first Office action on the merits, whichever is later.
1.97(e) statement or 1.17(p) fee.
(2) After (1) but before final action, notice of allowance, or Quayle action
1.97(e) statement, and 1.17(p) fee.
(3) After (2) and before (or with) payment of issue fee.
IDS will not be considered.
(4) After payment of issue fee.
(B) All content requirements of 37 CFR 1.98. See MPEP § 609.04(a) for more information.
(1) Requirements for the IDS listing:
(a) A separate section for citations of U.S. patents and U.S. patent application publications;
(b) The application number of the application in which the IDS is being submitted on each page of the listing, if known;
(c) A column that provides a blank space next to each citation for the examiner’s initials when the examiner considers the cited document; and
(d) A heading on the listing that clearly indicates that the list is an Information Disclosure Statement;
(e) Proper identification of all cited references:
(i) U.S. patents cited by patent number, issue date and inventor(s);
(ii) U.S. patent application publications cited by publication number, publication date and inventor(s);
(iii) Pending U.S. applications cited by application number, filing date and inventor(s);
(iv) Foreign patent documents cited by document number (including kind code), country and publication or issue date; and
(v) Non-patent literature cited by publisher, author (if any), title, relevant pages, and date and place of publication.
(2) The requirement of copies for:
(a) Each cited foreign patent document;
(b) Each cited non-patent literature publication, or the portion therein which caused it to be listed;
(c) Each cited U.S. pending application that is not stored in IFW;
(d) All information cited (e.g., an affidavit or Office action), other than the specification, including claims and drawings, of a pending U.S. application; and
(e) All other cited information or the portion which caused it to be listed.
(3) For non-English documents that are cited, the following must be provided:
(a) A concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, unless a complete translation is provided; and/or
(b) A written English language translation of a non-English language document, or portion thereof, if it is within the possession, custody or
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control of, or is readily available to any individual designated in 37 CFR 1.56(c).
After the examiner reviews the IDS for compliance with 37 CFR 1.97 and 1.98 (see MPEP § 609.05), the examiner should:
(A) Consider the information properly submitted in an IDS in the same manner that the examiner considers other documents in Office search files while conducting a search of the prior art in a proper field of search.
(1) For e-IDS, use the e-IDS icon on examiner’s workstation to consider cited U.S. patents and U.S. patent application publications. See MPEP § 609.07 for more information on e-IDS.
(2) Initial the blank column next to the citation to indicate that the information has been considered by the examiner, or use the alternative electronic signature method by inserting on each page of reference citations the phrase “All references considered except where lined through” along with the examiner’s electronic initials, and providing the examiner’s electronic signature on the final page of reference citations.
(B) Draw a line through the citation to show that it has not been considered if the citation fails to comply with all the requirements of 37 CFR 1.97 and 37 CFR 1.98. The examiner should inform applicant the reasons why a citation was not considered.
(C) Write “not considered” on an information disclosure statement if none of the information listed complies with the requirements of 37 CFR 1.97 and 37 CFR 1.98. The examiner will inform applicant the reasons why the IDS was not considered by using form paragraphs 6.49 through 6.49.10.
(D) Sign and date the bottom of the IDS listing, or use the alternative electronic signature method noted in item (A)(2) above.
(E) Ensure that a copy of the IDS listing that is signed and dated by the examiner is entered into the file and mailed to applicant.
For discussion of electronic processing of IDS, see MPEP § 609.08.
609.02 Information Disclosure Statements in Continued Examinations or Continuing Applications [R-07.2015]
I. CONSIDERATION OF PRIOR ART CITED IN A PARENT INTERNATIONAL APPLICATION
When filing a continuing application that claims benefit under 35 U.S.C. 120 to a parent application (other than an international application that designated the U.S.), it will not be necessary for the applicant to submit an information disclosure statement in the continuing application that lists the prior art cited by the examiner in the parent application unless the applicant desires the information to be printed on the patent issuing from the continuing application (for continued prosecution applications filed under 37 CFR 1.53(d), see subsection A.1. below). The examiner of the continuing application will consider information which has been considered by the Office in the parent application.
When filing a continuing application that claims benefit under 35 U.S.C. 120 to an international application that designated the U.S. (see MPEP § 1895), it will be necessary for the applicant to submit an information disclosure statement complying with 37 CFR 1.97 and 1.98 in the continuing application listing the documents cited in the international search report and/or the international preliminary examination report of the international application if applicant wishes to ensure that the information is considered by the examiner in the continuing application.
See MPEP § 609.03 for consideration of documents cited in the international search report in a PCT national stage application.
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II. IDS IN CONTINUED EXAMINATIONS OR CONTINUING APPLICATIONS
A. IDS That Has Been Considered (1) in the Parent Application, or (2) Prior to the Filing of a Request for Continued Examination (RCE)
1. Continued Prosecution Applications (CPAs) Filed Under 37 CFR 1.53(d)
Information which has been considered by the Office in the parent application of a continued prosecution application (CPA) filed under 37 CFR 1.53(d) will be part of the file before the examiner and need not be resubmitted in the continuing application to have the information considered and listed on the patent.
2. Continuation Applications, Divisional Applications, or Continuation-in-Part Applications Filed Under 37 CFR 1.53(b)
The examiner will consider information which has been considered by the Office in a parent application (other than an international application; see subsection I., above) when examining: (A) a continuation application filed under 37 CFR 1.53(b), (B) a divisional application filed under 37 CFR 1.53(b), or (C) a continuation-in-part application filed under 37 CFR 1.53(b). A listing of the information need not be resubmitted in the continuing application unless the applicant desires the information to be printed on the patent.
If resubmitting a listing of the information, applicant should submit a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and the timing requirements of 37 CFR 1.97. Applicants are strongly discouraged from submitting a list that includes copies of PTO/SB/08 or PTO-892 forms from other applications. A completed PTO/SB/08 form from another application may already have initials of an examiner and the application number of another application. This information will likely confuse the record. Furthermore, when the spaces provided on the form have initials of an examiner, there are no spaces available next to the documents listed for the examiner of the subsequent application to provide his or her initials, and the previously
relevant initials may be erroneously construed as being applied for the current application.
3. Requests for Continued Examination (RCE) Under 37 CFR 1.114
Information which has been considered by the Office in the application before the filing of a RCE will be part of the file before the examiner and need not be resubmitted to have the information considered by the examiner and listed on the patent.
B. IDS That Has Not Been Considered (1) in the Parent Application, or (2) Prior to the Filing of a Request for Continued Examination
1. Continued Prosecution Applications Filed Under 37 CFR 1.53(d)
Information filed in the parent application that complies with the content requirements of 37 CFR 1.98 will be considered by the examiner in the CPA. No specific request from the applicant that the previously submitted information be considered by the examiner is required.
2. Continuation Applications, Divisional Applications, or Continuation-In-Part Applications Filed Under 37 CFR 1.53(b)
For these types of applications, in order to ensure consideration of information previously submitted, but not considered, in a parent application, applicant must resubmit the information in the continuing application in compliance with 37 CFR 1.97 and 37 CFR 1.98. Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.
When resubmitting a listing of the information, applicant should submit a new listing that complies with the format requirements in 37 CFR 1.98(a)(1). Applicants are strongly discouraged from submitting a list that includes copies of PTO/SB/08 or PTO-892 forms from other applications. A PTO/SB/08 form from another application may already have the
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application number of another application. This information will likely confuse the record.
3. Requests for Continued Examination Under 37 CFR 1.114
Information filed in the application in compliance with the content requirements of 37 CFR 1.98 before the filing of a RCE will be considered by the examiner after the filing of the RCE. For example, an applicant filed an IDS in compliance with 37 CFR 1.98 after the mailing of a final Office action, but the IDS did not comply with the requirements of 37 CFR 1.97(d)(1) and (d)(2) and therefore, the IDS was not considered by the examiner. After applicant files a RCE, the examiner will consider the IDS filed prior to the filing of the RCE. For more details on RCE, see MPEP § 706.07(h).
609.03 Information Disclosure Statements in National Stage Applications [R-08.2012]
The examiner will consider the documents cited in the international search report in a PCT national stage application when the Form PCT/DO/EO/903 indicates that both the international search report and the copies of the documents are present in the national stage file. In such a case, the examiner should consider the documents from the international search report and indicate by a statement in the first Office action that the information has been considered. There is no requirement that the examiner list the documents on a PTO-892 form.
In a national stage application, the following form paragraphs may be used where appropriate to notify applicant regarding references listed in the search report of the international application:
¶ 6.53 References Considered in 35 U.S.C. 371 Application Based Upon Search Report - Prior to Allowance
The references cited in the PCT international search report by the [1] have been considered, but will not be listed on any patent resulting from this application because they were not provided on a separate list in compliance with 37 CFR 1.98(a)(1). In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08A and 08B form, must be filed within the set period for reply to this Office action.
Examiner Note:
1. In bracket [1], identify the office (e.g., JPO, EPO, etc.) that issued the international search report and the date it issued.
2. This form paragraph may be used for national stage applications under 35 U.S.C. 371 where the examiner has obtained copies of the cited references or where copies of such references are not required under 37 CFR 1.98. If receipt of copies of references required under 37 CFR 1.98 is not indicated on the PCT/DO/EO/903 form in the file, burden is on the applicant to supply such copies for consideration. See MPEP § 1893.03(g).
3. Instead of using this form paragraph, the examiner may list the references on a PTO-892, thereby notifying the applicant that the references have been considered and will be printed on any patent resulting from this application.
4. This form paragraph should only be used prior to allowance when a statutory period for reply is being set in the Office action.
5. If the application is being allowed, form paragraph 6.54 should be used with the Notice of Allowability instead of this form paragraph.
¶ 6.54 References Considered in 35 U.S.C. 371 Application Based Upon Search Report - Ready for Allowance
The references cited in the PCT international search report by the [1] have been considered, but will not be listed on any patent resulting from this application because they were not provided on a separate list in compliance with 37 CFR 1.98(a)(1). In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08A and 08B form, must be filed within ONE MONTH of the mailing date of this communication. NO EXTENSION OF TIME WILL BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b) to comply with this requirement.
Examiner Note:
1. In bracket [1], identify the office (e.g., JPO, EPO, etc.) that issued the international search report and the date it issued.
2. This form paragraph may be used for national stage applications under 35 U.S.C. 371 where the examiner has obtained copies of the cited references or where copies of such references are not required under 37 CFR 1.98. If receipt of copies of references required under 37 CFR 1.98 is not indicated on the PCT/DO/EO/903 form in the file, burden is on the applicant to supply such copies for consideration. See MPEP § 1893.03(g).
3. Instead of using this form paragraph, the examiner may list the references on a PTO-892, thereby notifying the applicant that the references have been considered and will be printed on any patent resulting from this application.
¶ 6.55 References Not Considered in 35 U.S.C. 371 Application Based Upon Search Report
The listing of references in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98. 37 CFR 1.98(a)(2) requires a
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legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed; (3) for each cited pending U.S. application, the application specification including claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system; and (4) all other information, or that portion which caused it to be listed. In addition, each IDS must include a list of all patents, publications, applications, or other information submitted for consideration by the Office (see 37 CFR 1.98(a)(1) and (b)), and MPEP § 609.04(a), subsection I. states, “the list ... must be submitted on a separate paper.” Therefore, the references cited in the international search report have not been considered. Applicant is advised that the date of submission of any item of information or any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the IDS, including all “statement” requirements of 37 CFR 1.97(e). See MPEP § 609.05(a).
Examiner Note:
1. This form paragraph may be used in national stage applications under 35 U.S.C. 371.
2. Do not use this form paragraph when the missing references are U.S. patents, U.S. patent application publications, or U.S. pending applications that are stored in IFW.
609.04 [Reserved]
609.04(a) Content Requirements for an Information Disclosure Statement [R-07.2015]
An information disclosure statement (IDS) must comply with the provisions of 37 CFR 1.98 as to content for the information listed in the IDS to be considered by the Office. Each information disclosure statement must comply with the applicable provisions of subsection I., II., and III. below.
I. LIST OF ALL PATENTS, PUBLICATIONS, U.S. APPLICATIONS, OR OTHER INFORMATION
Each information disclosure statement must include a list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office.
37 CFR 1.98(a)(1) requires the following format for an IDS listing: (A) a specified format/identification for each page of an IDS, and that U.S. patents and
U.S. patent application publications be listed in a section separately from citations of other documents; (B) a column that provides a space next to each document listed to permit the examiner’s initials; and (C) a heading that identifies the list as an IDS.
37 CFR 1.98(a)(1) specifically requires that U.S. patents and U.S. patent application publications be listed separately from the citations of other documents. The separation of citations will permit the Office to obtain the U.S. patent numbers and the U.S. patent application publication numbers by optical character recognition (OCR) from the scanned documents such that the documents can be made available electronically to the examiner to facilitate searching and retrieval of the cited U.S. patents and U.S. patent application publications from the Office’s search databases. Applicants will comply with this requirement if they use forms PTO/SB/08A and 08B, which provide a separate section for listing U.S. patents and U.S. patent application publications. Applicants who do not use these forms for submitting an IDS must make sure that the U.S. patents and U.S. patent application publications are listed in a separate section from citations of other documents.
37 CFR 1.98(a)(1) also requires that each page of the list must clearly identify the application number of the application in which the IDS is being submitted, if known. In the past, the Office has experienced problems associated with lists that do not properly identify the application in which the IDS is being submitted (e.g., when applicants submit a list that includes copies of PTO/SB/08 or PTO-892 forms from other applications). Even though the IDS transmittal letter had the proper application number, each page of the list did not include the proper application number, but instead had the application numbers of the other applications. If the pages of the list became separated, the Office could not associate the pages with the proper application.
In addition, 37 CFR 1.98(a)(1) requires that the list must include a column that provides a space next to each document listed in order to permit the examiner to enter his or her initials next to the citations of the documents that have been considered by the examiner. This provides a notification to the applicant and a clear record in the application to
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indicate which documents have been considered by the examiner in the application. Applicants are strongly discouraged from submitting a list that includes copies of PTO/SB/08 or PTO-892 forms from other applications. A completed PTO/SB/08 form from another application may already have initials of an examiner and the application number of another application. This information will likely confuse the record. Furthermore, when the spaces provided on the form have initials of an examiner, there are no spaces available next to the documents listed for the examiner of the subsequent application to provide his or her initials, and the previously relevant initials may be erroneously construed as being applied for the current application.
37 CFR 1.98(a)(1) also requires that each page of the list include a heading that clearly indicates that the list is an IDS. Since the Office treats an IDS submitted by the applicant differently than information submitted by a third-party (e.g., the Office may discard any non-compliant third-party submission under 37 CFR 1.99), a heading on each page of the list to indicate that the list is an IDS would promote proper treatment of the IDS submitted by the applicant and reduce handling errors.
37 CFR 1.98(b) requires that each item of information in an IDS be identified properly. U.S. patents must be identified by the inventor, patent number, and issue date. U.S. patent application publications must be identified by the applicant, patent application publication number, and publication date. U.S. applications must be identified by the inventor, the eight digit application number (the two digit series code and the six digit serial number), and the filing date. If a U.S. application being listed in an IDS has been issued as a patent or has been published, the applicant should list the patent or application publication in the IDS instead of the application. Each foreign patent or published foreign patent application must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application. Each publication must be identified by publisher, author (if any), title, relevant pages of the publication, and date and place of publication. The date of publication supplied must
include at least the month and year of publication, except that the year of publication (without the month) will be accepted if the applicant points out in the information disclosure statement that the year of publication is sufficiently earlier than the effective U.S. filing date and any foreign priority date so that the particular month of publication is not in issue. The place of publication refers to the name of the journal, magazine, or other publication in which the information being submitted was published. See MPEP § 707.05(e), for more information on data that should be used when citing publications and electronic documents. Pending U.S. applications that are being cited can be listed under the non-patent literature section or in a new section appropriately labeled.
The list of information complying with the format requirements of 37 CFR 1.98(a)(1) and the identification requirements of 37 CFR 1.98(b) may not be incorporated into the specification of the application in which it is being supplied, but must be submitted in a separate paper. A separate list is required so that it is easy to confirm that applicant intends to submit an information disclosure statement and because it provides a readily available checklist for the examiner to indicate which identified documents have been considered. A separate list will also provide a simple means of communication to applicant to indicate the listed documents that have been considered and those listed documents that have not been considered. Use of form PTO/SB/08A and 08B, Information Disclosure Statement, to list the documents is encouraged.
II. LEGIBLE COPIES
In addition to the list of information, each information disclosure statement must also include a legible copy of:
(A) Each foreign patent ;
(B) Each publication or that portion which caused it to be listed , other than U.S. patents and U.S. patent application publications unless required by the Office;
(C) For each cited pending unpublished U.S. application, the application specification including the claims, and any drawings of the application, or that portion of the application which caused it to be
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listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system. The requirement in 37 CFR 1.98(a)(2)(iii) for a legible copy of the specification, including the claims, and drawings of each cited pending U.S. patent application (or portion of the application which caused it to be listed) is sua sponte waived where the cited pending application is stored in the USPTO’s IFW system. See Waiver of the Copy Requirement in 37 CFR 1.98 for Cited Pending U.S. Patent Applications, 1287 OG 163 (October 19, 2004); and
(D) All other information or that portion which caused it to be listed.
The requirement for a copy of each U.S. patent or U.S. patent application publication listed in an IDS, has been eliminated, unless required by the Office. 37 CFR 1.98(a)(2).
37 CFR 1.98(a)(2)(iii) requires a copy of a pending U.S. application that is being cited in an IDS if (A) the cited information is not part of the specification, including the claims, and the drawings (e.g., an Office Action, remarks in an amendment paper, etc.), or (B) the cited application is not stored in the USPTO’s IFW system. The requirement in 37 CFR 1.98(a)(2)(iii) for a legible copy of the specification, including the claims, and drawings of each cited pending U.S. patent application (or portion of the application which caused it to be listed) is sua sponte waived where the cited pending application is stored in the USPTO’s IFW system. This waiver is limited to the specification, including the claims, and drawings in the U.S. application (or portion of the application). If material other than the specification, including the claims, and drawings in the file of a U.S. patent application is being cited in an IDS, the IDS must contain a legible copy of such material.
A pending U.S. application only identified in the specification’s background information rather than being cited separately on an IDS listing is not part of an IDS submission. Therefore, the requirements of 37 CFR 1.98(a)(2)(iii) of supplying a copy of the pending application is not applicable. Pursuant to 37 CFR 1.98(a)(2)(iii), applicant may choose to cite only a portion of a pending application including
any claims directed to that portion rather than the entire application. There are exceptions to this requirement that a copy of the information must be provided. First, 37 CFR 1.98(d) states that a copy of any patent, publication, pending U.S. application, or other information listed in an information disclosure statement is not required to be provided if: (A) the information was previously cited by or submitted to, the Office in a prior application, provided that the prior application is properly identified in the IDS and is relied on for an earlier filing date under 35 U.S.C. 120; and (B) the IDS submitted in the earlier application complies with 37 CFR 1.98(a)-(c). If both of these conditions are met, the examiner will consider the information previously cited or submitted to the Office and considered by the Office in a prior application relied on under 35 U.S.C. 120. This exception to the requirement for copies of information does not apply to information which was cited in an international application under the Patent Cooperation Treaty. If the information cited or submitted in the prior application was not in English, a concise explanation of the relevance of the information to the new application is not required unless the relevance of the information differs from its relevance as explained in the prior application. See subsection III. below.
Second, 37 CFR 1.98(c) states that when the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of one of the patents or publications may be submitted without copies of the other patents or publications provided that a statement is made that these other patents or publications are cumulative. The examiner will then consider only the patent or publication of which a copy is submitted and will so indicate on the list, form PTO/SB/08A and 08B, submitted, e.g., by crossing out the listing of the cumulative information. But see Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1374, 54 USPQ2d 1001, 1005 (Fed. Cir. 2000) (Reference was not cumulative since it contained a more complete combination of the claimed elements than any other reference before the examiner. “A withheld reference may be highly material when it discloses a more complete combination of relevant features, even if those
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features are before the patent examiner in other references.” (citations omitted).).
37 CFR 1.98(a)(3)(ii) states that if a written English language translation of a non-English language document, or portion thereof, is within the possession, custody or control of, or is readily available to any individual designated in 37 CFR 1.56(c), a copy of the translation shall accompany the statement. Translations are not required to be filed unless they have been reduced to writing and are actually translations of what is contained in the non-English language information. If no translation is submitted, the examiner will consider the information in view of the concise explanation and insofar as it is understood on its face, e.g., drawings, chemical formulas, English language abstracts, in the same manner that non-English language information in Office search files is considered by examiners in conducting searches.
Electronic means or medium for filing IDSs are not permitted except for: (A) citations to U.S. patents, U.S. patent application publications, foreign patent documents, and non-patent literature (NPLs) in an IDS filed via the Office’s Electronic Filing System (EFS) (see MPEP § 609.07); or (B) a compact disc (CD) that has tables, sequence listings, or program listings included in a paper IDS in compliance with 37 CFR 1.52(e). A CD cannot be used to submit an IDS listing or copies of the documents cited in the IDS.
III. CONCISE EXPLANATION OF RELEVANCE FOR NON-ENGLISH LANGUAGE INFORMATION
Each information disclosure statement must further include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information listed that is not in the English language. The concise explanation may be either separate from the specification or part of the specification. If the concise explanation is part of the specification, the IDS listing should include the page(s) or line(s) numbers where the concise explanation is located in the specification.
The requirement for a concise explanation of relevance is limited to information that is not in the
English language. The explanation required is limited to the relevance as understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information at the time the information is submitted to the Office. If a complete translation of the information into English is submitted with the non-English language information, no concise explanation is required. An English-language equivalent application may be submitted to fulfill this requirement if it is, in fact, a translation of a foreign language application being listed in an information disclosure statement. There is no requirement for the translation to be verified. Submission of an English language abstract of a reference may fulfill the requirement for a concise explanation. Where the information listed is not in the English language, but was cited in a search report or other action by a foreign patent office in a counterpart foreign application, the requirement for a concise explanation of relevance can be satisfied by submitting an English-language version of the search report or action which indicates the degree of relevance found by the foreign office. This may be an explanation of which portion of the reference is particularly relevant, to which claims it applies, or merely an “X”, “Y”, or “A” indication on a search report. The requirement for a concise explanation of non-English language information would not be satisfied by a statement that a reference was cited in the prosecution of a United States application which is not relied on under 35 U.S.C. 120.
If information cited or submitted in a prior application relied on under 35 U.S.C. 120 was not in English, a concise explanation of the relevance of the information to the new application is not required unless the relevance of the information differs from its relevance as explained in the prior application.
The concise explanation may indicate that a particular figure or paragraph of the patent or publication is relevant to the claimed invention. It might be a simple statement pointing to similarities between the item of information and the claimed invention. It is permissible but not necessary to discuss differences between the cited information and the claims. However, see Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376, 54 USPQ2d 1001, 1007 (Fed. Cir.
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2000) (“[A]lthough MPEP Section 609A(3) allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.”).
In Semiconductor Energy Laboratory, patentee during prosecution submitted an untranslated 29-page Japanese reference as well as a concise explanation of its relevance and an existing one-page partial English translation, both of which were directed to less material portions of the reference. The untranslated portions of the Japanese reference “contained a more complete combination of the elements claimed [in the patent] than anything else before the PTO.” 204 F.3d at 1376, 54 USPQ2d at 1005. The patentee, whose native language was Japanese, was held to have understood the materiality of the reference. “The duty of candor does not require that the applicant translate every foreign reference, but only that the applicant refrain from submitting partial translations and concise explanations that it knows will misdirect the examiner’s attention from the reference’s relevant teaching.” 204 F.3d at 1378, 54 USPQ2d at 1008.
Although a concise explanation of the relevance of the information is not required for English language information, applicants are encouraged to provide a concise explanation of why the English-language information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability.
609.04(b) Timing Requirements for an Information Disclosure Statement [R-07.2015]
The procedures and requirements under 37 CFR 1.97 for submitting an information disclosure statement are linked to four stages in the processing of a patent application:
(1)(a) for national applications (not including CPAs), within three months of filing, or before the mailing of a first Office action on the merits, whichever is later;
(b) for international applications, within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 or before the mailing of a first Office action on the merits in the national stage application, whichever is later;
(c) for continued examinations (i.e., RCEs filed under 37 CFR 1.114) and CPAs filed under 37 CFR 1.53(d), before the mailing of a first Office action on the merits;
(d) for international design applications, within three months of the date of publication of the international registration under Hague Agreement Article 10(3) or before first Office action on the merits, whichever is later;
(2) after the period in (1), but prior to the prosecution of the application closes, i.e., before the mailing of a final Office action, a Notice of Allowance, or an Ex parte Quayle action, whichever is earlier;
(3) after the period in (2) but on or before the date the issue fee is paid; and
(4) after the period in (3) and up to the time the patent application can be effectively withdrawn from issue under 37 CFR 1.313(c).
These procedures and requirements apply to applications filed under 35 U.S.C. 111(a) (utility), 161 (plants), 171 (designs), and 251 (reissue), as well as international applications entering the national stage under 35 U.S.C. 371.
The requirements based on the time when the information disclosure statement is filed are summarized in MPEP § 609.01.
I. INFORMATION DISCLOSURE STATEMENT FILED BEFORE FIRSTACTION ON THE MERITS OR WITHIN THREE (3) MONTHS OF ACTUAL FILING DATE, NATIONAL STAGE ENTRY DATE, OR PUBLICATION UNDER ARTICLE 10(3) OF THE HAGUE AGREEMENT (37 CFR 1.97(b))
An information disclosure statement will be considered by the examiner if filed within any one of the following time periods:
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(A) for national applications (not including CPAs), within three months of the filing date of the national application or before the mailing date of a first Office action on the merits;
(B) for international applications, within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 or before the mailing date of a first Office action on the merits;
(C) for RCEs and CPAs, before the mailing date of a first Office action on the merits; or
(D) for international design applications, within three months of the date of publication of the international registration under Hague Agreement Article 10(3) or before first Office action on the merits, whichever is later
An information disclosure statement filed within one of these periods requires neither a fee nor a statement under 37 CFR 1.97(e). An information disclosure statement will be considered to have been filed on the day it was received in the Office, or on an earlier date of mailing if accompanied by a properly executed certificate of mailing or facsimile transmission under 37 CFR 1.8, or if it is in compliance with the provisions of Priority Mail Express® delivery under 37 CFR 1.10. If the last day of the three months period set forth in 37 CFR 1.97(b)(1) and (b)(2) falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, the IDS will be considered timely if filed on the next succeeding business day which is not a Saturday, Sunday, or a federal holiday. See 37 CFR 1.7(a). An Office action is mailed on the date indicated in the Office action.
It would not be proper to make final a first Office action in a continuing application or in an application after the filing of a RCE if the information submitted in the IDS during the time period set forth in 37 CFR 1.97(b) is used in a new ground of rejection.
A. National Applications, International Applications, and International Design Applications
The term “national application” includes continuing applications (continuations, divisions, and continuations-in-part but not CPAs), so three months will be measured from the actual filing date of an application as opposed to the effective filing date of a continuing application. For international
applications, the three months will be measured from the date of entry of the national stage. For international design applications, the three months will be measured from the date of publication of the international registration under Hague Agreement Article 10(3).
All information disclosure statements that comply with the content requirements of 37 CFR 1.98 and are filed within three months of the filing date, will be considered by the examiner, regardless of whatever else has occurred in the examination process up to that point in time. Thus, in the rare instance that a final Office action, a notice of allowance, or an Ex parte Quayle action is mailed prior to a date which is three months from the filing date, any information contained in a complete information disclosure statement filed within that three-month window will be considered by the examiner.
Likewise, an information disclosure statement will be considered if it is filed later than three months after the application filing date but before the mailing date of a first Office action on the merits. An action on the merits means an action which treats the patentability of the claims in an application, as opposed to only formal or procedural requirements. An action on the merits would, for example, contain a rejection or indication of allowability of a claim or claims rather than just a restriction requirement (37 CFR 1.142) or just a requirement for additional fees to have a claim considered (37 CFR 1.16). Thus, if an application was filed on January 2 and the first Office action on the merits was not mailed until six months later on July 2, the examiner would be required to consider any proper information disclosure statement filed prior to July 2.
B. RCE and CPA
The three-month window as discussed above does not apply to a RCE filed under 37 CFR 1.114 or a CPA filed under 37 CFR 1.53(d) (effective July 14, 2003, CPAs are only available for design applications). An IDS filed after the filing of a RCE will be considered if the IDS is filed before the mailing date of a first Office action on the merits. A RCE is not the filing of an application, but merely the continuation of prosecution in the current
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application. After the mailing of a RCE, such application is treated as an amended application by the examiner and is subject to a short turnover time. Therefore, applicants are encouraged to file any IDS with the filing of a RCE. See MPEP § 706.07(h) for details on RCEs.
Similarly, an IDS filed in a CPA will be considered if the IDS is filed before the mailing date of a first Office action on the merits. Applicants are encouraged to file any IDS in a CPA as early as possible, preferably at the time of filing of the CPA request.
If an IDS cannot be filed before the mailing of a first Office action on the merits (generally within two months from the filing of the RCE or CPA), applicants may request a three-month suspension of action under 37 CFR 1.103(c) in an application at the time of filing of the RCE, or under 37 CFR 1.103(b) in a CPA, at the time of filing of the CPA. Where an IDS is mailed to the Office shortly before the expiration of a three-month suspension under 37 CFR 1.103(b) or (c), applicant is requested to make a courtesy call to notify the examiner as to the IDS submission.
II. INFORMATION DISCLOSURE FILED AFTER I. ABOVE BUT BEFORE MAILING OF FINAL ACTION, NOTICE OF ALLOWANCE, OR AN EX PARTE QUAYLE ACTION (37 CFR 1.97(c))
An information disclosure statement will be considered by the examiner if filed after the period specified in subsection I. above, but prior to the date the prosecution of the application closes, i.e., before (not on the same day as the mailing date of any of the following:
a final action under 37 CFR 1.113, e.g., final rejection;
a notice of allowance under 37 CFR 1.311; or
an action that closes prosecution in the application, e.g., an Ex parte Quayle action,
whichever occurs first, provided the information disclosure statement is accompanied by either (1) a statement as specified in 37 CFR 1.97(e) (see the
discussion in subsection V below); or (2) the fee set forth in 37 CFR 1.17(p). If a final action, notice of allowance, or an Ex parte Quayle action is mailed in an application and later withdrawn, the application will be considered as not having had a final action, notice of allowance, or an Ex parte Quayle action mailed for purposes of considering an information disclosure statement.
An Ex parte Quayle action is an action that closes the prosecution in the application as referred to in 37 CFR 1.97(c). Therefore, an information disclosure statement filed after an Ex parte Quayle action must comply with the provisions of 37 CFR 1.97(d).
A. Information is Used in a New Ground of Rejection
1. Final Rejection is Not Appropriate
If information submitted during the period set forth in 37 CFR 1.97(c) with a statement under 37 CFR 1.97(e) is used in a new ground of rejection on unamended claims, the next Office action will not be made final since in this situation it is clear that applicant has submitted the information to the Office promptly after it has become known and the information is being submitted prior to a final determination on patentability by the Office.
2. Final Rejection Is Appropriate
The information submitted with a statement under 37 CFR 1.97(e) can be used in a new ground of rejection and the next Office action can be made final, if the new ground of rejection was necessitated by amendment of the application by applicant. Where the information is submitted during this period with a fee as set forth in 37 CFR 1.17(p), the examiner may use the information submitted, and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner. See MPEP § 706.07(a).
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III. INFORMATION DISCLOSURE STATEMENT FILED AFTER II. ABOVE BUT PRIOR TO PAYMENT OF ISSUE FEE (37 CFR 1.97(d))
An information disclosure statement will be considered by the examiner if filed on or after the mailing date of any of the following: a final action under 37 CFR 1.113; a notice of allowance under 37 CFR 1.311; or an action that closes prosecution in the application, e.g., an Ex parte Quayle action, but before or simultaneous with payment of the issue fee, provided the statement is accompanied by:
(A) a statement as specified in 37 CFR 1.97(e) (see the discussion in subsection V; and
(B) the fee set forth in 37 CFR 1.17(p).
These requirements are appropriate in view of the late stage of prosecution when the information is being submitted, i.e., after the examiner has reached a final determination on the patentability of the claims presented for examination. Payment of the fee (37 CFR 1.17(p)) and submission of the appropriate statement (37 CFR 1.97(e)) are the essential elements for having information considered at this advanced stage of prosecution, assuming the content requirements of 37 CFR 1.98 are satisfied.
Form paragraph 6.52 may be used to inform the applicant that the information disclosure statement is being considered.
¶ 6.52 Information Disclosure Statement Filed After Prosecution Has Been Closed
The information disclosure statement (IDS) submitted on [1] was filed after the mailing date of the [2] on [3]. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Examiner Note:
1. In bracket 1, insert the date the IDS was filed.
2. In bracket 2, insert --final Office action--, --Notice of Allowance--, or an -- Ex parte Quayle action-- as appropriate.
The requirements of 37 CFR 1.97 provide for consideration by the Office of information which is submitted within a reasonable time, i.e., within three months after an individual designated in 37 CFR 1.56(c) becomes aware of the information or within three months of the information being cited in a
communication from a foreign patent office in a counterpart foreign application. This undertaking by the Office to consider information would be available throughout the pendency of the application until the point where the patent issue fee was paid.
If an applicant chose not to comply, or could not comply, with the requirements of 37 CFR 1.97(d), the applicant may file a RCE under 37 CFR 1.114, or a continuing application under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application) to have the information considered by the examiner. If the applicant files a continuing application under 37 CFR 1.53(b), the parent application could be permitted to become abandoned by not paying the issue fee required in the Notice of Allowance. If the prior application is a design application, the filing of a continued prosecution application under 37 CFR 1.53(d) automatically abandons the prior application. See the discussion in MPEP § 609.02.
IV. INFORMATION DISCLOSURE STATEMENT FILED AFTER PAYMENT OF ISSUE FEE
After the issue fee has been paid on an application, it is impractical for the Office to attempt to consider newly submitted information. Information disclosure statements filed after payment of the issue fee in an application will not be considered but will merely be placed in the application file. See MPEP § 609.05(b). The application may be withdrawn from issue at this point, pursuant to 37 CFR 1.313(c)(2) or 1.313(c)(3) so that the information can be considered in the application upon the filing of a RCE under 37 CFR 1.114 or in a continuing application filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application). In this situation, a RCE, or a CPA (if the prior application is a design application), or a continuing application filed under 37 CFR 1.53(b) could be filed even though the issue fee had already been paid. See MPEP § 1308. Applicants are encouraged to file the petition under 37 CFR 1.313(c)(2) with a RCE, or the petition under 37 CFR 1.313(c)(3) with a CPA or continuing application under 37 CFR 1.53(b), by EFS-Web (see MPEP § 502.05) or facsimile transmission to the Office of Petitions (see MPEP § 502.01, subsection I.B. and § 1730 for the facsimile number). Alternatively, petitions to withdraw from
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issue may be hand-carried to the Office of Petitions (see MPEP § 502). The Office cannot ensure that any petition under 37 CFR 1.313(c) will be acted upon prior to the date of patent grant. Applicants considering filing a petition under 37 CFR 1.313(c) are encouraged to call the Office of Petitions to determine whether sufficient time remains before the patent issue date to consider and grant a petition under 37 CFR 1.313(c). If a petition under 37 CFR 1.313(c)(3) is being filed by facsimile transmission, the petition need not be accompanied by the information disclosure statement if the size of the statement makes its submission by facsimile impracticable, but the petition should indicate that an IDS will be filed in the continuing application if it does not accompany the petition under 37 CFR 1.313(c)(3). The IDS should be filed before the mailing of a first Office action on the merits. If a design CPA is being filed and the IDS cannot be filed within this time period, applicants may request a three-month suspension of action under 37 CFR 1.103(b) at the time of filing of the design CPA. See the discussion above in paragraph I.B. If a petition under 37 CFR 1.313(c)(2) is being filed, the RCE must be accompanied by a proper submission in order for the RCE to be in compliance with 37 CFR 1.114. Therefore, the IDS must accompany the RCE and the petition under 37 CFR 1.313(c)(2) if the IDS is the submission for the RCE.
Alternatively, for example, a petition pursuant to 37 CFR 1.313(c)(1) could be filed if applicant states that one or more claims are unpatentable. This statement that one or more claims are unpatentable over the information must be unequivocal. A statement that a serious question as to patentability of a claim has been raised, for example, would not be acceptable to withdraw an application from issue under 37 CFR 1.313(c)(1). Form paragraph 13.09 may be used.
¶ 13.09 Information Disclosure Statement, Issue Fee Paid
Applicant’s information disclosure statement of [1] was filed after the issue fee was paid. Information disclosure statements filed after payment of the issue fee will not be considered, but will be placed in the file. However, the application may be withdrawn from issue in order to file a request for continued examination (RCE) under 37 CFR 1.114 upon the grant of a petition under 37 CFR 1.313(c)(2), or a continuing application under 37 CFR 1.53(b) (or a continued prosecution application (CPA) under 37 CFR 1.53(d) if the CPA is for a design patent and the prior application of the CPA is a design application filed
under 35 U.S.C. chapter 16) upon the grant of a petition filed under the provisions of 37 CFR 1.313(c)(3). Alternatively, the other provisions of 37 CFR 1.313 may apply, e.g., a petition to withdraw the application from issue under the provisions of 37 CFR 1.313(c)(1) may be filed together with an unequivocal statement by the applicant that one or more claims are unpatentable over the information contained in the statement. The information disclosure statement would then be considered upon withdrawal of the application from issue under 37 CFR 1.313(c)(1).
Examiner Note:
1. For information disclosure statements submitted after the issue fee has been paid, use this form paragraph with form PTOL-90 or PTO-90C.
2. In bracket 1, insert the filing date of the IDS.
If an application has been withdrawn from issue under one of the provisions of 37 CFR 1.313(c)(1)-(3), it will be treated as though no notice of allowance had been mailed and the issue fee had not yet been paid with regard to the time for filing information disclosure statements. Petitions under 37 CFR 1.313(c) should be directed to the Office of Petitions in the Office of the Deputy Commissioner for Patent Examination Policy. See MPEP § 1308.
V. STATEMENT UNDER 37 CFR 1.97(e)
A statement under 37 CFR 1.97(e) must state either
(1) that each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the statement, or
(2) that no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in 37 CFR 1.56(c) more than three months prior to the filing of the statement.
A statement under 37 CFR 1.97(e) can contain either of two statements. One statement is that each item of information in an information disclosure statement was first cited in any communication, such as a search report, from a patent office outside the U.S.
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in a counterpart foreign application not more than three months prior to the filing date of the statement. Applicant would not be able to make a statement under 37 CFR 1.97(e) where an item of information was first cited by a foreign patent office, for example, a year before the filing of the IDS, in a communication from that foreign patent office, and the same item of information is once again cited by another foreign patent office within three months prior to the filing of the IDS in the Office. Similarly, applicant would not be able to make a statement under 37 CFR 1.97(e) where an item of information was cited in an examination report and the same item of information was previously cited more than three months prior to the filing of the IDS in the Office, in a search report from the same foreign patent office. Under this statement, it does not matter whether any individual with a duty of disclosure actually knew about any of the information cited before receiving the search report.
The date on the communication by the foreign patent office begins the three-month period in the same manner as the mailing of an Office action starts a three-month shortened statutory period for reply. If the communication contains two dates, the mailing date of the communication is the one which begins the three-month period. The date which begins the three-month period is not the date the communication was received by a foreign associate or the date it was received by a U.S. registered practitioner. Likewise, the statement will be considered to have been filed on the date the statement was received in the Office, or on an earlier date of mailing or transmission if accompanied by a properly executed certificate of mailing or facsimile transmission under 37 CFR 1.8, or if it is in compliance with the provisions for Priority Mail Express® delivery under 37 CFR 1.10.
The term counterpart foreign patent application means that a claim for priority has been made in either the U.S. application or a foreign application based on the other, or that the disclosures of the U.S. and foreign patent applications are substantively identical (e.g., an application filed in the European Patent Office claiming the same U.K. priority as claimed in the U.S. application).
Communications from foreign patent offices in foreign applications sometimes include a list of the
family of patents corresponding to a particular patent being cited in the communication. The family of patents may include a United States patent or other patent in the English language. Some applicants submit information disclosure statements to the PTO which list and include copies of both the particular patent cited in the foreign patent office communication and the related United States or other English language patent from the family list. Since this is to be encouraged, the United States or other English language patent will be construed as being cited by the foreign patent office for purposes of a statement under 37 CFR 1.97(e)(1). The examiner should consider the United States or other English language patent if 37 CFR 1.97 and 37 CFR 1.98 are complied with.
If an information disclosure statement includes a copy of a dated communication from a foreign patent office which clearly shows that the statement is being submitted within three months of the date on the communication, the copy of the dated communication from the foreign patent office by itself will not be accepted as the required statement under 37 CFR 1.97(e)(1) since it would not be clear from the dated communication whether the information in the IDS was “first cited” in any communication from a foreign patent office not more than three months prior to the filing of the IDS as required by 37 CFR 1.97(e)(1).
In the alternative, a statement can be made if no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application and, to the knowledge of the person signing the statement after making reasonable inquiry, neither was it known to any individual having a duty to disclose more than three months prior to the filing of the statement. If an inventor of the U.S. application is also a named inventor of one of the items of information contained in the IDS, the 37 CFR 1.97(e)(2) statement cannot be made for that particular item of information, and if made, will not be accepted.
The phrase “after making reasonable inquiry” makes it clear that the individual making the statement has a duty to make reasonable inquiry regarding the facts that are being stated. The statement can be made by
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a registered practitioner who represents a foreign client and who relies on statements made by the foreign client as to the date the information first became known. A registered practitioner who receives information from a client without being informed whether the information was known for more than three months, however, cannot make the statement under 37 CFR 1.97(e)(2) without making reasonable inquiry. For example, if an inventor gave a publication to the attorney prosecuting an application with the intent that it be cited to the Office, the attorney should inquire as to when that inventor became aware of the publication and should not submit a statement under 37 CFR 1.97(e)(2) to the Office until a satisfactory response is received. The statement can be based on present, good faith knowledge about when information became known without a search of files being made.
A statement under 37 CFR 1.97(e) need not be in the form of an oath or a declaration under 37 CFR 1.68. A statement under 37 CFR 1.97(e) by a registered practitioner or any other individual that the statement was filed within the three-month period of either first citation by a foreign patent office or first discovery of the information will be accepted as dispositive of compliance with this provision in the absence of evidence to the contrary. For example, a statement under 37 CFR 1.97(e) could read as follows:
I hereby state that each item of information contained in this Information Disclosure Statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of this statement., or I hereby state that no item of information in the Information Disclosure Statement filed herewith was cited in a communication from a foreign patent office in a counterpart foreign application, and, to my knowledge after making reasonable inquiry, no item of information contained in this Information Disclosure Statement was known to any individual designated in 37 CFR 1.56(c) more than three months prior to the filing of this Information Disclosure Statement.
An information disclosure statement may include two lists and two statements, similar to the above examples, in situations where some of the information listed was cited in a communication from a foreign patent office not more than three months prior to filing the statement and some was not, but was not known more than three months prior to filing the statement.
A copy of the foreign search report need not be submitted with the statement under 37 CFR 1.97(e), but an individual may wish to submit an English-language version of the search report to satisfy the requirement for a concise explanation where non-English language information is cited. The time at which information was known to any individual designated in 37 CFR 1.56(c) is the time when the information was discovered in association with the application even if awareness of the materiality came later. The Office wishes to encourage prompt evaluation of the relevance of information and to have a date certain for determining if a statement under 37 CFR 1.97(e) can properly be made. A statement on information and belief would not be sufficient. Examiners should not remind or otherwise make any comment about an individual’s duty of candor and good faith. Questions about the adequacy of any statement received in writing by the Office should be directed to the Office of Patent Legal Administration.
VI. EXTENSIONS OF TIME (37 CFR 1.97(f))
No extensions of time for filing an information disclosure statement are permitted under 37 CFR 1.136(a) or (b). If a bona fide attempt is made to comply with the content requirements of 37 CFR 1.98, but part of the required content is inadvertently omitted, additional time may be given to enable full compliance.
609.05 Examiner Handling of Information Disclosure Statements [R-08.2012]
Information disclosure statements will be reviewed for compliance with the requirements of 37 CFR 1.97 and 37 CFR 1.98 as discussed in MPEP § 609.04(a) and § 609.04(b). Applicant will be notified
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of compliance and noncompliance with the rules as discussed in MPEP § 609.05(a) and § 609.05(b).
609.05(a) Noncomplying Information Disclosure Statements [R-11.2013]
Pursuant to 37 CFR 1.97(i), submitted information, filed before the grant of a patent, which does not comply with 37 CFR 1.97 and 37 CFR 1.98 will be placed in the file, but will not be considered by the Office. Information submitted after the grant of a patent must comply with 37 CFR 1.501.
If an information disclosure statement does not comply with the requirements based on the time of filing of the IDS as discussed in MPEP § 609.04(b), including the requirements for fees and/or statement under 37 CFR 1.97(e), the IDS will be placed in the application file, but none of the information will be considered by the examiner. The examiner may use form paragraph 6.49 which is reproduced below to inform applicant that the information has not been considered. Applicant may then file a new information disclosure statement or correct the deficiency in the previously filed IDS, but the date that the new IDS or correction is filed will be the date of the IDS for purposes of determining compliance with the requirements based on the time of filing of the IDS (37 CFR 1.97).
The examiner should write “not considered” on an information disclosure statement where none of the information listed complies with the requirements, e.g., the format requirements of 37 CFR 1.98(a)(1) are not met. If none of the information listed on a PTO/SB/08A and 08B form is considered, a diagonal line should also be drawn across the form and the form made of record in the application file. The examiner will inform applicant that the information has not been considered and the reasons why by using form paragraphs 6.49 through 6.49.10. If the improper citation appears as part of another paper, e.g., an amendment, which may be properly entered and considered, the portion of the paper which is proper for consideration will be considered.
If an item of information in an IDS fails to comply with all the requirements of 37 CFR 1.97 and 37 CFR 1.98, that item of information in the IDS will not be considered and a line should be drawn through
the citation to show that it has not been considered. However, other items of information that do comply with all the requirements of 37 CFR 1.97 and 37 CFR 1.98 will be considered by the examiner.
If information listed in the specification rather than in a separate paper, or if the other content requirements as discussed in MPEP § 609.04(a) are not complied with, the information need not be considered by the examiner, in which case, the examiner should notify applicant in the next Office action that the information has not been considered.
FORM PARAGRAPHS
¶ 6.49 Information Disclosure Statement Not Considered
The information disclosure statement filed [1] fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because [2]. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any resubmission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Examiner Note:
See MPEP § 609.05(a) for situations where the use of this form paragraph would be appropriate.
¶ 6.49.01 Information Disclosure Statement Not Considered, After First Action, But Before the Prosecution of the Application Closes, No Statement
The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(c) because it lacks a statement as specified in 37 CFR 1.97(e). It has been placed in the application file, but the information referred to therein has not been considered.
¶ 6.49.02 Information Disclosure Statement Not Considered, After First Action, But Before the Prosecution of the Application Closes, No Fee
The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(c) because it lacks the fee set forth in 37 CFR 1.17(p). It has been placed in the application file, but the information referred to therein has not been considered.
¶ 6.49.03 Information Disclosure Statement Not Considered, After the Prosecution of the Application Closes, Issue Fee Not Paid, No Statement
The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(d) because it lacks a statement as specified
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in 37 CFR 1.97(e). It has been placed in the application file, but the information referred to therein has not been considered.
¶ 6.49.05 Information Disclosure Statement Not Considered, After the Prosecution of the Application Closes, Issue Fee Not Paid, No Fee
The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(d) because it lacks the fee set forth in 37 CFR 1.17(p). It has been placed in the application file, but the information referred to therein has not been considered.
¶ 6.49.06 Information Disclosure Statement Not Considered, References Listed in Specification
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, applications, or other information submitted for consideration by the Office, and MPEP § 609.04(a), subsection I. states, “the list may not be incorporated into the specification but must be submitted in a separate paper.” Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
¶ 6.49.07 Information Disclosure Statement Not Considered, No Copy of References
The information disclosure statement filed [1] fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Examiner Note:
Do not use this form paragraph when the missing reference(s) are U.S. patents, U.S. patent application publications, or U.S. pending applications (limited to the specification, including claims, and drawings) stored in IFW.
¶ 6.49.08 Information Disclosure Statement Not Considered, Non-Compliant List of References
The information disclosure statement filed [1] fails to comply with 37 CFR 1.98(a)(1), which requires the following: (1) a list of all patents, publications, applications, or other information submitted for consideration by the Office; (2) U.S. patents and U.S. patent application publications listed in a section separately from citations of other documents; (3) the application number of the application in which the information disclosure statement is being submitted on each page of the list; (4) a column that provides a blank space next to each document to be considered, for the examiner’s initials; and (5) a heading that clearly indicates that the list is an information disclosure statement. The information disclosure statement has been placed in the application file, but the information referred to therein has not been considered.
Examiner Note:
If an IDS listing includes a copy of an initialed IDS listing from another application, the IDS listing would not comply with the requirements under 37 CFR 1.98(a)(1). This form paragraph is applicable for such an IDS submission.
¶ 6.49.09 Information Disclosure Statement Not Considered, No Explanation of Relevance of Non-English Language Information
The information disclosure statement filed [1] fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
¶ 6.49.10 Information Disclosure Statement Not Considered, Non-acceptable Electronic Medium
The information disclosure statement filed [1] was submitted on an electronic medium that was not acceptable. It has been placed in the application file, but the information referred to therein has not been considered. Note that U.S. patents, U.S. application publications, foreign patent documents and non-patent literature cited in an information disclosure statement may be electronically submitted in compliance with the Office Electronic Filing System (EFS) requirements.
Examiner Note:
This form paragraph may be used when the IDS that includes patents and non-patent literature documents is submitted on compact discs or any other electronic medium, except via EFS. Only tables, sequence listings, and program listings may be submitted on CDs. See 37 CFR 1.52(a) and (e).
¶ 6.51 Time for Completing Information Disclosure Statement
The information disclosure statement filed on [1] does not fully comply with the requirements of 37 CFR 1.98(b) because: [2]. Since the submission appears to be bona fide , applicant is given ONE (1) MONTH from the date of this notice to supply the above-mentioned omissions or corrections in the information disclosure statement. NO EXTENSION OF THIS TIME LIMIT MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b). Failure to timely comply with this notice will result in the above-mentioned information disclosure statement being placed in the application file with the non-complying information not being considered. See 37 CFR 1.97(i).
Examiner Note:
Use this form paragraph if an IDS complies with the timing requirements of 37 CFR 1.97 but part of the content requirements of 37 CFR 1.98(b) has been inadvertently omitted.
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This practice does not apply where there has been a deliberate omission of some necessary part of an Information Disclosure Statement or where the requirements based on the time of filing the statement, as set forth in 37 CFR 1.97, have not been complied with.
609.05(b) Complying Information Disclosure Statements [R-07.2015]
The information contained in information disclosure statements which comply with both the content requirements of 37 CFR 1.98 and the requirements, based on the time of filing the statement, of 37 CFR 1.97 will be considered by the examiner. Consideration by the examiner of the information submitted in an IDS means that the examiner will consider the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. The initials of the examiner placed adjacent to the citations on the PTO/SB/08A and 08B or its equivalent mean that the information has been considered by the examiner to the extent noted above.
In addition, the following alternative electronic signature method may be used by examiners in information disclosure statements to indicate whether the information has been considered. Examiners will no longer initial each reference citation considered, but will continue to strikethrough each citation not considered. Each page of reference citations will be stamped by the examiner with the phrase “All references considered except where lined through” along with the examiner’s electronic initials, and the final page of reference citations will include the examiner’s electronic signature.
Examiners must consider all citations submitted in conformance with the rules, and their initials when placed adjacent to the considered citations on the list or in the boxes provided on a form PTO/SB/08A and 08B (or the examiner may use the alternative electronic signature method noted above)provides a clear record of which citations have been considered by the Office. The examiner must also fill in his or her name and the date the information was considered in blocks at the bottom of the PTO/SB/08A and 08B form. If any of the citations are considered, a copy of the submitted list, form
PTO/SB/08A and 08B, as reviewed by the examiner, will be returned to the applicant with the next communication. Those citations not considered by the examiner will have a line drawn through the citation. The original copy of the list, form PTO/SB/08A and 08B will be entered into the application file. The copy returned to applicant will serve both as acknowledgement of receipt of the information disclosure statement and as an indication as to which references were considered by the examiner. Forms PTO-326 and PTOL-37 include a box to indicate the attachment of form PTO/SB/08A and 08B.
Information which complies with requirements as discussed in this section but which is in a non-English language will be considered in view of the concise explanation submitted (see MPEP § 609.04(a), subsection III.) and insofar as it is understood on its face, e.g., drawings, chemical formulas, in the same manner that non-English language information in Office search files is considered by examiners in conducting searches. The examiner need not have the information translated unless it appears to be necessary to do so. The examiner will indicate that the non-English language information has been considered in the same manner as consideration is indicated for information submitted in English. The examiner should not require that a translation be filed by applicant. The examiner should not make any comment such as that the non-English language information has only been considered to the extent understood, since this fact is inherent. See Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1377-78, 54 USPQ2d 1001, 1008 (Fed. Cir. 2000) (“[A]s MPEP Section 609C(2) reveals, the examiner’s understanding of a foreign reference is generally limited to that which he or she can glean from the applicant’s concise statement…Consequently, while the examiner’s initials require that we presume that he or she considered the [foreign] reference, this presumption extends only to the examiner’s consideration of the brief translated portion and the concise statement.”).
If an item of information in an IDS fails to comply with requirements of 37 CFR 1.97 and 37 CFR 1.98, a line should be drawn through the citation to show
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that it has not been considered. The other items of information listed that do comply with the requirements of 37 CFR 1.97 and 37 CFR 1.98 will be considered by the examiner and will be appropriately initialed.
609.05(c) Documents Submitted as Part of Applicant’s Reply to Office Action [R-08.2012]
Occasionally, documents are submitted and relied on by an applicant when replying to an Office action. These documents may be relied on by an applicant, for example, to show that an element recited in the claim is operative or that a term used in the claim has a recognized meaning in the art. Documents may be in any form but are typically in the form of an affidavit, declaration, patent, or printed publication.
To the extent that a document is submitted as evidence directed to an issue of patentability raised in an Office action, and the evidence is timely presented, applicant need not satisfy the requirements of 37 CFR 1.97 and 37 CFR 1.98 in order to have the examiner consider the information contained in the document relied on by applicant. In other words, compliance with the information disclosure rules is not a threshold requirement to have information considered when submitted by applicant to support an argument being made in a reply to an Office action. However, consideration by the examiner of the document submitted as evidence directed to an issue of patentability raised in the Office action is limited to the portion of the document relied upon as rebuttal evidence; the entirety of the document may not necessarily be considered by the examiner.
At the same time, the document supplied and relied on by applicant as evidence need not be processed as an item of information that was cited in an information disclosure statement. The record should reflect whether the evidence was considered, but listing on a form (e.g., PTO-892, or PTO/SB/08A and 08B) and appropriate marking of the form by the examiner is not required.
For example, if applicant submits and relies on three patents as evidence in reply to the first Office action and also lists those patents on a PTO/SB/08A and 08B along with two journal articles, but does not file
a statement under 37 CFR 1.97(e) or the fee set forth in 37 CFR 1.17(p), it would be appropriate for the examiner to indicate that the teachings relied on by applicant in the three patents have been considered, but to line through the citation of all five documents on the PTO/SB/08A and 08B and to inform applicant that the information disclosure statement did not comply with 37 CFR 1.97(c).
609.06 Information Printed on Patent [R-08.2012]
A citation listed on form PTO/SB/08A and 08B and considered by the examiner will be printed on the patent. A citation listed in a separate paper, equivalent to but not on form PTO/SB/08A and 08B, and considered by the examiner will be printed on the patent if the list lends itself to easy capture of the necessary information by the Office printing contractor, i.e., each item of information is listed on a single line, the lines are at least double-spaced from each other, and the information is uniform in format for each listed item. For patents printed after January 1, 2001, citations from information disclosure statements that are printed on the face of the patent will be distinguished from citations cited by the examiner on a form PTO-892. The citations cited by the examiner on a form PTO-892 will be marked with an asterisk. If an item of information is cited more than once in an IDS and on a form PTO-892, the citation of the item will be listed only once on the patent as a citation cited by the examiner.
If the applicant does not provide classification information for a citation, or if the examiner lines through incorrect classification data, the citation will be printed on the face of the patent without the classification information. If a U.S. patent application number is listed on a PTO/SB/08A and 08B form or its equivalent and the examiner considers the information and initials the form, the application number will be printed on the patent. Applicants may wish to list U.S. patent application numbers on other than a form PTO/SB/08A and 08B format to avoid the application numbers of pending applications being published on the patent. If a citation is not printed on the patent but has been
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considered by the examiner, the patented file will reflect that fact as noted in MPEP § 609.05(b).
609.07 IDSs Electronically Submitted (e-IDS) Using EFS-Web [R-07.2015]
As of May of 2002, IDSs may be submitted to the Office via the Office’s electronic filing system. Applicants can file an e-IDS using EFS-Web by (A) entering the references’ citation information in an electronic data entry form, equivalent to the paper PTO/SB/08A form, and (B) transmitting the electronic data entry form to the Office. As of January 2007, an e-IDS filed via EFS-Web may include citations of U.S. patents, U.S. patent application publications, foreign patent documents, and non-patent literature (NPLs). Copies of U.S. patents and U.S. patent application publications cited in the IDS are not required to be submitted by the applicants with the e-IDS. If any references to foreign patent documents or NPLs or unpublished U.S. patent applications (that are not stored in the Office’s Image File Wrapper (IFW) system)are to be cited, applicants must submit copies of these documents in PDF using EFS-Web.
The electronic IDS form may be included with a new EFS-Web electronic application filing, or it may be submitted for previously filed patent applications. An e-IDS contains an electronic list of U.S. patent numbers, U.S. patent application publication numbers, foreign patent documents and non-patent literature (NPLs). An individual e-IDS may contain a listing of (1) a combined total of 50 U.S. patents and U.S. patent application publications, (2) 50 foreign patent documents, and (3) 50 NPLs. Applicants are permitted to file more than one e-IDS if these numbers are exceeded.
If more than one e-IDS is necessary to file a complete IDS for which a fee is required under 37 CFR1.17(p), only a single fee under 37 CFR 1.17(p) will be required under the following conditions:
(A) the fee required by 37 CFR 1.17(p) is included with the first e-IDS submission (since it will normally be processed first);
(B) all subsequent submissions making up the IDS should explicitly state that the fee was included in the earlier submission and request that the one fee
be accepted for the second and any subsequent submission; and
(C) all subsequent submissions (electronic or paper) must be received by the Office on the same date as the first e-IDS submission with which the fee was included.
A subsequent non-electronic submission is considered received by the Office on the same date as the first e-IDS submission with which the fee was included for purposes of the fee due under 37 CFR 1.17(p) if it is deposited in Priority Mail Express® under 37 CFR 1.10, deposited in the first class U.S. mail with a certificate of mailing in accordance with 37 CFR 1.8, or transmitted by facsimile with a certificate of transmission in accordance with 37 CFR 1.8, on the same date as the first e-IDS submission with which the fee was included. If a subsequent e-IDS submission is received by the Office on a date later than the date the fee was paid, the later submission will require an additional fee.
A copy of the e-IDS form will be scanned to become part of the Image File Wrapper (IFW). In all applications, the e-IDS will be added to the application file contents listing, and to the PALM EXPO database record for the application.
If the e-IDS complies with the requirements of 37 CFR 1.97, examiners must consider the e-IDS and complete the e-IDS form by initialing, signing, and dating the e-IDS form entries. See MPEP § 609.05(b). Examiners may notice numbering gaps in the “Citation No.” column on the printed e-IDS form due to an applicant data entry error. This data entry error will not affect the e-IDS and is not a sufficient reason not to consider the e-IDS. A copy of the initialed e-IDS form must be sent to the applicant. The completed copy of the e-IDS form sent to an applicant should be made of record in the official file when the copy is sent to the applicant.
An electronic list of all U.S. patents and U.S. patent application publications on an e-IDS form is available and accessible from the examiner’s workstation by clicking on the e-IDS icon, on the workstation desktop. Consideration of the e-IDS may not be deferred and an examiner should not require an applicant to submit paper copies of e-IDS references. It is most important that the U.S. patent
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and U.S. patent application publication numbers listed on the e-IDS be accurate and devoid of transcription error since no copies of the documents listed on the e-IDS are provided in the file wrapper for the examiner to review. Instead the examiner will electronically retrieve the U.S. patents and U.S. patent application publications identified by the cited document numbers. The only mechanism for having the correct document reviewed and considered when an erroneous U.S. patent or U.S. patent application publication is cited in an e-IDS will be by citing the correct citation number in a subsequent IDS that conforms to the requirements of 37 CFR 1.97 and 1.98.
Examiners can copy and paste U.S. patent and U.S. patent application publication numbers from the e-IDS to EAST and/or WEST for searching. Examiners should copy and paste U.S. patent and U.S. patent application publication numbers from the e-IDS to EAST and/or WEST to review the references that are listed in the e-IDS.
Applicants and registered practitioners are permitted to sign portions of an EFS-Web submission, including an IDS, with an electronic signature. See 37 CFR 1.4(d)(3).
If the e-IDS transmittal letter and list of references is missing from an application file, an examiner may request that the technical support staff obtain an additional printed copy of the letter and reference list from the Office of Patent Application Processing (OPAP).
609.08 Electronic Processing of Information Disclosure Statement [R-07.2015]
As of January 18, 2006, the Office began electronic processing of the list of citations (e.g., form PTO/SB/08) submitted as part of an information disclosure statement (IDS) submitted in applications stored by the Office in image form. Examiners are provided with a tool to electronically annotate citations and electronically sign the IDS when reviewing the cited references. See MPEP § 609.04(b) for determining whether a cited reference has been considered by the examiner. The electronically processed IDS will be stored in the Office’s official record as an entry in the application’s image file wrapper (IFW) and a copy will be mailed to applicant as part of an Office action.
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Chapter 700 Examination of Applications
Statutory Authority for Examination701 Requisites of the Application702
Obviously Informal Cases702.01 [Reserved]703 Search and Requirements for Information
704
Search704.01 [Reserved]704.02
-704.09 Requirements for Information704.10 What Information May Be Required704.11
Examples of Information Reasonably Required
704.11(a)
When May a Requirement for Information Be Made
704.11(b)
Replies to a Requirement for Information
704.12
Relationship of Requirement for Information to Duty of Disclosure
704.12(a)
What Constitutes a Complete Reply
704.12(b)
Treatment of an Incomplete Reply
704.12(c)
Time Periods for Reply704.13 Making a Requirement for Information
704.14
Format of the Requirement704.14(a) Examiner’s Obligation Following Applicant’s Reply
704.14(b)
Petitions to Requirements Under 37 CFR 1.105
704.14(c)
Relationship to Information Disclosure Statements
704.14(d)
Patentability Reports705 Instructions re Patentability Reports705.01
Nature of P.R., Its Use and Disposal
705.01(a)
Sequence of Examination705.01(b) Counting and Recording P.R.s705.01(c) [Reserved]705.01(d) Limitation as to Use705.01(e) Interviews With Applicants705.01(f)
Rejection of Claims706 Contrasted With Objections706.01 Rejection on Prior Art706.02
Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA
706.02(a)
35 U.S.C. 102(a), (b), or (e); Printed Publication or Patent
Determining Whether To Apply 35 U.S.C. 102(a)(1) or 102(a)(2)
706.02(a)(1)
Determining Whether To Apply Pre-AIA 35 U.S.C. 102(a), (b), or (e)
706.02(a)(2)
Overcoming a 35 U.S.C. 102 Rejection Based on a Printed Publication or Patent
706.02(b)
Overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2)
706.02(b)(1)
Rejection Based on a Printed Publication or Patent Overcoming a Pre-AIA 35 U.S.C. 102(a), (b), or (e)
706.02(b)(2)
Rejection Based on a Printed Publication or Patent
Rejections Under 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C.
706.02(c)
102(a) or (b); Knowledge by Others or Public Use or Sale
Rejections under 35 U.S.C. 102(a)(1); Public Use or Public Sale
706.02(c)(1)
Rejections under Pre-AIA 35 U.S.C. 102(a) and (b); Public Use or On Sale
706.02(c)(2)
Rejections Under Pre-AIA 35 U.S.C. 102(c)
706.02(d)
Rejections Under Pre-AIA 35 U.S.C. 102(d)
706.02(e)
Rejection Under Pre-AIA 35 U.S.C. 102(e)
706.02(f)
Examination Guidelines for Applying References Under Pre-AIA 35 U.S.C. 102(e)
706.02(f)(1)
Provisional Rejections Under 35 U.S.C. 102(a)(2) or
706.02(f)(2)
Pre-AIA 35 U.S.C. 102(e); Reference Is a Copending U.S. Patent Application
Rejections Under Pre-AIA 35 U.S.C. 102(f)
706.02(g)
Rejections Under Pre-AIA 35 U.S.C. 102(g)
706.02(h)
Form Paragraphs for Use in Rejections Under 35 U.S.C. 102
706.02(i)
Contents of a 35 U.S.C. 103 Rejection
706.02(j)
Provisional Rejection (Obviousness) Under 35 U.S.C.
706.02(k)
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103 Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e) Rejections Under Pre-AIA 35 U.S.C. 103(a) Using Prior Art
706.02(l)
Under Only Pre-AIA 35 U.S.C. 102 (e), (f), or (g)
Rejections Under Pre-AIA 35 U.S.C. 103(a) Using PriorArt
706.02(l)(1)
Under Pre-AIA 35 U.S.C. 102(e), (f), or (g); Prior Art Disqualification Under Pre-AIA 35 U.S.C. 103(c) Establishing Common Ownership or Joint Research
706.02(l)(2)
Agreement Under Pre-AIA 35 U.S.C. 103(c) Examination Procedure With Respect to Pre-AIA 35 U.S.C. 103(c)
706.02(l)(3)
Form Paragraphs for Use in Rejections Under 35 U.S.C. 103
706.02(m)
Biotechnology Process Applications; Pre-AIA 35 U.S.C. 103(b)
706.02(n)
Rejections Not Based on Prior Art706.03 Rejections Under 35 U.S.C. 101706.03(a) Barred by Atomic Energy Act706.03(b) Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
706.03(c)
Rejections Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph
706.03(d)
Form Paragraphs for Use Relating to 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph
706.03(e)
[Reserved]706.03(f) -706.03(j)
Duplicate Claims706.03(k) [Reserved]706.03(l) Nonelected Inventions706.03(m) [Reserved]706.03(n) New Matter706.03(o) [Reserved]706.03(p)
-706.03(r) Foreign Filing Without License706.03(s) [Reserved]706.03(t) Disclaimer706.03(u) After Interference or Former Public Use Proceeding
706.03(v)
Res Judicata706.03(w)
Reissue706.03(x) Rejection of Previously Allowed Claims
706.04
Rejection After Allowance of Application
706.05
Rejection of Claims Copied From Patent
706.06
Final Rejection706.07 Final Rejection, When Proper on Second Action
706.07(a)
Final Rejection, When Proper on First Action
706.07(b)
Final Rejection, Premature706.07(c) Final Rejection, Withdrawal of, Premature
706.07(d)
Withdrawal of Final Rejection, General
706.07(e)
Time for Reply to Final Rejection706.07(f) Transitional After-Final Practice706.07(g) Request for Continued Examination (RCE) Practice
706.07(h)
Examiner’s Letter or Action707 Primary Examiner Indicates Action for New Assistant
707.01
Applications Up for Third Action and 5-Year Applications
707.02
[Reserved]707.03-707.04 Citation of References707.05
Copies of Cited References707.05(a) Citation of Related Art and Information by Applicants
707.05(b)
Order of Listing707.05(c) Reference Cited in Subsequent Actions
707.05(d)
Data Used in Citing References707.05(e) [Reserved]707.05(f) Incorrect Citation of References707.05(g)
Citation of Decisions, Orders Memorandums, and Notices
707.06
Completeness and Clarity of Examiner’s Action
707.07
Complete Action on Formal Matters
707.07(a)
[Reserved]707.07(b) -707.07(c)
Language To Be Used in Rejecting Claims
707.07(d)
Note All Outstanding Requirements
707.07(e)
Answer All Material Traversed707.07(f) Piecemeal Examination707.07(g)
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MANUAL OF PATENT EXAMINING PROCEDURE
Notify of Inaccuracies in Amendment
707.07(h)
Each Claim To Be Mentioned in Each Office Action
707.07(i)
State When Claims Are Allowable
707.07(j)
Numbering Paragraphs707.07(k) Comment on Examples707.07(l)
Reviewing and Initialing by Assistant Examiner
707.08
Signing by Primary or Other Authorized Examiner
707.09
Entry707.10 Date707.11 Mailing707.12 Returned Office Action707.13
Order of Examination708 List of Special Cases708.01 Petition To Make Special708.02
Accelerated Examination708.02(a) Prioritized Examination708.02(b) Patent Prosecution Highway Program
708.02(c)
Examiner Tenders Resignation708.03 Suspension of Action709
Overlapping Applications by Same Applicant or Owned by Same Assignee
709.01
Period for Reply710 Statutory Period710.01
Statutory Period, How Computed710.01(a) Shortened Statutory Period and Time Limit Actions Computed
710.02
[Reserved]710.02(a) Shortened Statutory Period: Situations in Which Used
710.02(b)
Specified Time Limits: Situations in Which Used
710.02(c)
Difference Between Shortened Statutory Periods for Reply and Specified Time Limits
710.02(d)
Extension of Time710.02(e) [Reserved]710.03 Two Periods Running710.04
Copying Patent Claims710.04(a) Period Ending on Saturday, Sunday, or a Federal Holiday
710.05
Situations When Reply Period Is Reset or Restarted
710.06
Abandonment of Patent Application711 Express or Formal Abandonment711.01
Failure To Take Required Action During Statutory Period
711.02
Insufficiency of Reply711.02(a) Special Situations Involving Abandonment
711.02(b)
Termination of Proceedings711.02(c) Reconsideration of Holding of Abandonment; Revival
711.03
Holding Based on Insufficiency of Reply
711.03(a)
Holding Based on Failure To Reply Within Period
711.03(b)
Petitions Relating to Abandonment
711.03(c)
Examiner’s Statement on Petition To Set Aside Examiner’s Holding
711.03(d)
Public Access to Abandoned Applications
711.04
Date of Abandonment711.04(a) Ordering of Patented and Abandoned Files
711.04(b)
Notifying Applicants of Abandonment
711.04(c)
Letter of Abandonment Received After Application Is Allowed
711.05
Abstracts, Abbreviatures, and Defensive Publications
711.06
Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References
711.06(a)
[Reserved]712 Interviews713
General Policy, How Conducted713.01 Interviews Prior to First Official Action
713.02
Interview for “Sounding Out” Examiner Not Permitted
713.03
Substance of Interview Must Be Made of Record
713.04
Interviews Prohibited or Granted, Special Situations
713.05
No Inter Partes Questions Discussed Ex Parte
713.06
Exposure of Other Cases713.07 Demonstration, Exhibits, Models713.08 Finally Rejected Application713.09 Interview Preceding Filing Amendment Under 37 CFR 1.312
713.10
Amendments, Applicant’s Action714 Signatures to Amendments714.01
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EXAMINATION OF APPLICATIONS
Unsigned or Improperly Signed Amendment
714.01(a)
[Reserved]714.01(b) Signed by Attorney or Agent Not of Record
714.01(c)
Amendment Signed by Applicant but Not by Attorney or Agent of Record
714.01(d)
Amendments Before First Office Action
714.01(e)
Must Be Fully Responsive714.02 Amendments Not Fully Responsive, Action To Be Taken
714.03
Supplemental Amendment714.03(a) Claims Presented inAmendment With No Attempt To Point Out Patentable Novelty
714.04
Examiner Should Immediately Review
714.05
[Reserved]714.06 Amendments Not in Permanent Ink714.07 [Reserved]714.08
-714.09 Claims Added in Excess of Claims Previously Paid For
714.10
Amendment Filed During Interference Proceedings
714.11
Amendments and Other Replies After Final Rejection or Action
714.12
Amendments and Other Replies After Final Rejection or Action, Procedure Followed
714.13
Amendments After Allowance of All Claims
714.14
Amendment Received in Technology Center After Mailing of Notice of Allowance
714.15
Amendment After Notice of Allowance, 37 CFR 1.312
714.16
Amendments Under 37 CFR 1.312, Copied Patent Claims
714.16(a)
Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208
714.16(b)
Amendments Under 37 CFR 1.312, Additional Claims
714.16(c)
Amendments Under 37 CFR 1.312, Handling
714.16(d)
Amendments Under 37 CFR 1.312, Entry in Part
714.16(e)
Amendment Filed After the Period for Reply Has Expired
714.17
Entry of Amendments714.18 List of Amendments, Entry Denied714.19 List of Amendments Entered in Part714.20 Amendments Inadvertently Entered, No Legal Effect
714.21
[Reserved]714.22 -714.24
Discourtesy of Applicant or Attorney714.25 Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a)
715
37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits
715.01
Reference Is a Joint Patent or Published Application to Applicant and Another
715.01(a)
Reference and Application Have Common Assignee
715.01(b)
Reference Is Publication of Applicant’s Own Invention
715.01(c)
Activities Applied Against the Claims
715.01(d)
How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims
715.02
Genus-Species, Practice Relative to Cases Where Predictability Is in Question
715.03
Who May Make Affidavit or Declaration Under 37 CFR 1.131(a);
715.04
Formal Requirements of Affidavits and Declarations U.S. Patent orApplication Publication Claiming Same Invention
715.05
[Reserved]715.06 Facts and Documentary Evidence715.07
Diligence715.07(a) Interference Testimony Sometimes Used
715.07(b)
Acts Relied Upon Must Have Been Carried Out in This Country
715.07(c)
or a NAFTA or WTO Member Country Disposition of Exhibits715.07(d)
Decided by Primary Examiner715.08 Timely Presentation715.09 Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode
715.10
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MANUAL OF PATENT EXAMINING PROCEDURE
Affidavits or Declarations Traversing Rejections, 37 CFR 1.132
716
Generally Applicable Criteria716.01 Objective Evidence of Nonobviousness
716.01(a)
Nexus Requirement and Evidence of Nonobviousness
716.01(b)
Probative Value of Objective Evidence
716.01(c)
Weighing Objective Evidence716.01(d) Allegations of Unexpected Results716.02
Evidence Must Show Unexpected Results
716.02(a)
Burden on Applicant716.02(b) Weighing Evidence of Expected and Unexpected Results
716.02(c)
Unexpected Results Commensurate in Scope With Claimed Invention
716.02(d)
Comparison With Closest Prior Art
716.02(e)
Advantages Disclosed or Inherent716.02(f) Declaration or Affidavit Form716.02(g)
Commercial Success716.03 Commercial Success Commensurate in Scope With Claimed Invention
716.03(a)
Commercial Success Derived From Claimed Invention
716.03(b)
Long-Felt Need and Failure of Others716.04 Skepticism of Experts716.05 Copying716.06 Inoperability of References716.07 Utility and Operability of Applicant’s Disclosure
716.08
Sufficiency of Disclosure716.09 Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103
716.10
Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2)
717
Affidavit or Declaration Under 37 CFR 1.130
717.01
Declarations or Affidavits under 37 CFR 1.130(a) – Attribution
717.01(a)
Evaluation of Declarations or Affidavits under 37 CFR 1.130(a)
717.01(a)(1)
Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure
717.01(b)
Evaluation of Declarations or Affidavits under 37 CFR 1.130(b)
717.01(b)(1)
Determining if the Subject Matter of the Intervening
717.01(b)(2)
Disclosure is the Same as the Subject Matter of the Inventor–Originated Prior Public Disclosure
Who May Make Affidavit or Declaration; Formal
717.01(c)
Requirements of Affidavits and Declarations U.S. Patent or Application Publication Claiming Same Invention
717.01(d)
Passed Upon (or Decided by) by Primary Examiner
717.01(e)
Seasonable (or Timely) Presentation
717.01(f)
Prior Art Exception for Commonly Owned or Joint Research Agreement
717.02
Subject Matter under AIA 35 U.S.C. 102(b)(2)(C)
Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C)
717.02(a)
Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked
717.02(b)
Examination Procedure With Respect to the Prior Art
717.02(c)
Exception under AIA 35 U.S.C. 102(b)(2)(C) Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)
717.02(d)
Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c)
718
File Wrapper719 Papers in Image File Wrapper719.01 Residence of Inventor Changed719.02 Classification During Examination719.03 Index of Claims719.04 Field of Search719.05
Public Use Proceedings720 [Reserved]721-723 Trade Secret, Proprietary, and Protective Order Materials
724
Completeness of the Patent File Wrapper
724.01
Rev. 07.2015, November 2015700-5
EXAMINATION OF APPLICATIONS
Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials
724.02
Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02
724.03
Office Treatment and Handling of Materials Submitted Under MPEP § 724.02
724.04
Materials Submitted in an Application Covered by 35 U.S.C. 122
724.04(a)
Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b)
724.04(b)
Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d)
724.04(c)
Petition To Expunge Information or Copy of Papers in Application File
724.05
Handling of Petitions To Expunge Information or Copy of Papers in Application File
724.06
701 Statutory Authority for Examination [R-07.2015]
35 U.S.C. 131 Examination of application.
The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.
The main conditions precedent to the grant of a patent to an applicant are set forth in 35 U.S.C. 101, 102, 103, and 112.
35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Form paragraph 7.04.01 copies 35 U.S.C. 101. See MPEP § 706.03(a).
35 U.S.C. 100 Definitions.
[Editor Note: 35 U.S.C. 100(e)-(j) as set forth below are only applicable to patent applications and patents subject to the first inventor to file provisions of the AIA (35 U.S.C. 100 (note)). See pre-AIA 35 U.S.C. 100(e) for paragraph (e) as applicable to
patent applications and patents not subject to the first inventor to file provisions of the AIA.]
When used in this title unless the context otherwise indicates -
(a) The term “invention” means invention or discovery.
(b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
(c) The terms “United States” and “this country” mean the United States of America, its territories and possessions.
(d) The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.
(e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 who is not the patent owner.
(f) The term "inventor" means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
(g) The terms "joint inventor" and "coinventor" mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.
(h) The term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
(i)
(1) The term "effective filing date" for a claimed invention in a patent or application for patent means—
(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).
(2) The effective filing date for a claimed invention in an application for reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
(j) The term "claimed invention" means the subject matter defined by a claim in a patent or an application for a patent.
Pre-AIA 35 U.S.C. 100 Definitions.
[Editor Note: Pre-AIA 35 U.S.C. 100(e) as set forth below is not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). For an application or patent subject to the first inventor to file provisions of the AIA, see 35 U.S.C. 100.]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 701
When used in this title unless the context otherwise indicates -
*****
(e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 or inter partes reexamination under section 311 who is not the patent owner.
702 Requisites of the Application [R-07.2015]
The Office of Patent Application Processing (OPAP) reviews application papers to determine whether a new application is entitled to a filing date. Note that as a result of the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, December 18, 2012, and specifically, the amendments to the patent laws to implement the provisions of the Patent Law Treaty (PLT) in title II of the PLTIA, the filing date requirements for applications filed on or after December 18, 2013 are different from the filing date requirements for applications filed prior to December 18, 2013. Except for design applications, the filing date for nonprovisional applications filed on or after December 18, 2013 is the date on which a specification, with or without claims, is received in the Office. See MPEP § 601.01(a) for additional information. Similarly, provisional applications filed on or after December 18, 2013 may receive a filing date even if the application is filed without drawings. See MPEP § 601.01(b) for additional information. The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. See MPEP § 601.01(a).Also, for applications filed on or after December 18, 2013, an application (other than an application for a design patent) is not required to include any drawings to be entitled to a filing date. It should be noted, however, 35 U.S.C. 111(a)(2) continues to require the application to include a drawing as prescribed by 35 U.S.C. 113, which requires a drawing where necessary for the understanding of the subject matter sought to be patented. Therefore, any drawings necessary for the understanding of the invention should be submitted with the application on filing.
If the subject matter of the application admits of illustration by a drawing to facilitate understanding
of the invention, including where a drawing is necessary for the understanding of the invention, the Office will continue the practice of requiring a drawing. See MPEP § 608.02, subsection IV. As discussed in MPEP § 608.02, this requirement prior to examination should continue to be extremely rare and limited to the situation in which no examination can be performed due to the lack of an illustration of the invention.
In addition, as provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013 may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application. See MPEP § 601.01(a), subsection III.
The minimal formal requirements resulting from the implementation of the PLTIA and PLT should not be viewed as prescribing a best practice for the preparation and filing of a patent application. The preparation of claims to any claimed invention for which patent protection is desired and the inclusion of such claims with the application on filing will help ensure that the application satisfies the disclosure requirements of 35 U.S.C. 112(a) for any such claimed invention. Similarly, while the absence of any drawing on the filing of an application no longer raises a question as to whether the application is entitled to a filing date, the preparation of drawings for a provisional or nonprovisional application is prudent where a drawing is necessary for the understanding of the subject matter sought to be patented, and inclusion of such drawing(s) with the application on filing will help ensure that the requirements of 35 U.S.C. 113 are satisfied for any such claimed invention.
If an application (other than an application for a design patent) is filed on or after December 18, 2013, without any claims, OPAP will issue a notice giving the applicant a time period within which to submit at least one claim in order to avoid abandonment. An application will not be placed on an examiner’s docket unless and until the application includes a specification including at least one claim.
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§ 702EXAMINATION OF APPLICATIONS
For applications filed under pre-PLT (AIA) 35 U.S.C. 111 prior to December 18, 2013, a filing date is assigned to a nonprovisional application as of the date a specification containing a description and claim and any necessary drawings are filed in the U.S. Patent and Trademark Office (Office). See pre-PLT (AIA) 37 CFR 1.53(b).
Once OPAP determines that the application is entitled to a filing date, OPAP then determines whether the application as filed is complete, e.g., includes the required fees, the inventor’s oath or declaration, and all pages of the specification and drawings. If the papers filed are not entitled to a filing date, OPAP will send a “Notice of Incomplete Application” informing applicant of the deficiencies; if the application is entitled to a filing date but it is not complete, an OPAP notice (e.g., a “Notice of Omitted Item(s)”) will be sent indicating that the application papers so deposited have been accorded a filing date and indicating what papers must be filed to complete the application.
The examiner should be careful to see that the application is complete when taken up for examination. If, for example, pages of the specification or drawings are missing, the examiner should determine whether the application is entitled to the filing date assigned, and what action should be taken. See MPEP §§ 601.01(d) and 601.01(g) for guidance.
702.01 Obviously Informal Cases [R-07.2015]
When an application is taken up for examination and it is then discovered to be impractical to give a complete action on the merits because of an informal or insufficient disclosure, the following procedure may be followed:
(A) A reasonable search should be made of the invention so far as it can be understood from the disclosure, objects of invention and claims and any apparently pertinent art cited. In the rare case in which the disclosure is so incomprehensible as to preclude a reasonable search, the Office action should clearly inform applicant that no search was made;
(B) Any form that lists informalities and any additional formal requirements to be made should
be included in the first Office action (see MPEP § 707.07(a));
(C) A requirement should be made that the specification be revised to conform to idiomatic English and United States patent practice;
(D) The claims should be rejected as failing to define the invention in the manner required by 35 U.S.C. 112 if they are informal. A blanket rejection is usually sufficient.
The examiner should attempt to point out the points of informality in the specification and claims. The burden is on the applicant to revise the application to render it in proper form for a complete examination.
If a number of obviously informal claims are filed in an application, such claims should be treated as being a single claim for fee and examination purposes.
It is to applicant’s advantage to file the application with an adequate disclosure and with claims which conform to the U.S. Patent and Trademark Office usages and requirements. This should be done whenever possible. If, however, due to the pressure of a Convention deadline or other reasons, this is not possible, applicants are urged to submit promptly, preferably within 3 months after filing, a preliminary amendment which corrects the obvious informalities. The informalities should be corrected to the extent that the disclosure is readily understood and the claims to be initially examined are in proper form, particularly as to dependency, and otherwise clearly define the invention. “New matter” must be excluded from these amendments since preliminary amendments filed after the filing date of the application do not enjoy original disclosure status. See MPEP § 608.04(b).
Whenever, upon examination, it is found that the terms or phrases or modes of characterization used to describe the invention are not sufficiently consonant with the art to which the invention pertains, or with which it is most nearly connected, to enable the examiner to make the examination specified in 37 CFR 1.104, the examiner should make a reasonable search of the invention so far as it can be understood from the disclosure. The action of the examiner may be limited to a citation of what
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MANUAL OF PATENT EXAMINING PROCEDURE§ 702.01
appears to be the most pertinent prior art found and a request that applicant correlate the terminology of the specification with art-accepted terminology before further action is made.
Use form paragraph 7.01 where the terminology is such that a proper search cannot be made.
¶ 7.01 Use of Unconventional Terminology, Cannot Be Examined
A preliminary examination of this application reveals that it includes terminology which is so different from that which is generally accepted in the art to which this invention pertains that a proper search of the prior art cannot be made. For example: [1]
Applicant is required to provide a clarification of these matters or correlation with art-accepted terminology so that a proper comparison with the prior art can be made. Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
Examiner Note:
1. Use this or form paragraph 7.02 when a proper search cannot be made. However, see MPEP § 702.01 which requires a reasonable search.
2. In bracket 1, fill in an appropriate indication of the terminology, properties, units of data, etc. that are the problem as well as the pages of the specification involved.
3. For the procedure to be followed when the drawing is not acceptable, see MPEP §§ 608.02(a) and 608.02(b).
Use form paragraph 7.02 where the application is so incomprehensible that a reasonable search cannot be made.
¶ 7.02 Disclosure Is Incomprehensible
The disclosure is objected to under 37 CFR 1.71, as being so incomprehensible as to preclude a reasonable search of the prior art by the examiner. For example, the following items are not understood: [1]
Applicant is required to submit an amendment which clarifies the disclosure so that the examiner may make a proper comparison of the invention with the prior art.
Applicant should be careful not to introduce any new matter into the disclosure ( i.e., matter which is not supported by the disclosure as originally filed).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
Examiner Note:
1. Use this form paragraph when a search cannot be made.
2. In bracket 1, indicate the page numbers and features which are not understood.
3. See form paragraphs 6.28 and 6.30 for improper idiomatic English.
4. Use form paragraphs 7.31.01 – 7.31.04, as appropriate, for a rejection of claims (when necessary) based on the deficiencies set forth in this form paragraph.
For the procedure to be followed when the drawing is not acceptable, see MPEP §§ 608.02(a) and 608.02(b).
703 [Reserved]
704 Search and Requirements for Information [R-08.2012]
704.01 Search [R-08.2012]
After reading the specification and claims, the examiner searches the prior art. The subject of searching is more fully treated in MPEP Chapter 900. See especially MPEP §§ 904 through 904.03. The invention should be thoroughly understood before a search is undertaken. However, informal cases, or those which can only be imperfectly understood when they come up for action in their regular turn are also given a search, in order to avoid piecemeal prosecution.
PREVIOUS EXAMINER’S SEARCH
When an examiner is assigned to act on an application which has received one or more actions by some other examiner, full faith and credit should be given to the search and action of the previous examiner unless there is a clear error in the previous action or knowledge of other prior art. In general the second examiner should not take an entirely new approach to the application or attempt to reorient the point of view of the previous examiner, or make a
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§ 704.01EXAMINATION OF APPLICATIONS
new search in the mere hope of finding something. See MPEP § 719.05.
704.02 -704.09 [Reserved]
704.10 Requirements for Information [R-07.2015]
37 CFR 1.105 Requirements for information.
(a)
(1) In the course of examining or treating a matter in a pending or abandoned application, in a patent, or in a reexamination proceeding, including a reexamination proceeding ordered as a result of a supplemental examination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
(i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
(ii) Search: Whether a search of the prior art was made, and if so, what was searched.
(iii) Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
(iv) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
(v) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
(vi) Improvements: Where the claimed invention is an improvement, identification of what is being improved.
(vii) In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
(viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.
(2) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
(iii) Stipulations as to facts with which the applicant may agree or disagree.
(3) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
(b) The requirement for information of paragraph (a)(1) of this section may be included in an Office action, or sent separately.
(c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136.
An examiner or other Office employee may require from individuals identified under 37 CFR 1.56(c), the submission of such information as may be reasonably necessary to properly examine or treat a matter in a pending or abandoned application filed under 35 U.S.C. 111, in a pending or abandoned application that has entered the national stage under 35 U.S.C. 371, in a patent, or in a reexamination proceeding. The scope of 37 CFR 1.105 is extended to any assignee or anyone to whom there is an obligation to assign the application because the information required may be known to some members of the assignee or obligated assignee even if not known by the inventors.
The authority for the Office to make such requirements arises from the statutory requirements of examination pursuant to 35 U.S.C. 131 and 132. An examiner or other Office employee may make a requirement for information reasonably necessary to the examination or treatment of a matter in accordance with the policies and practices set forth by the Director(s) of the Technology Center or other administrative unit to which that examiner or other Office employee reports. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1283, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005) (“Star Fruits’ argument fails to come to grips with the real issue in this case, which is whether the Office can use section 1.105 to compel disclosure of information that the examiner deems pertinent to patentability when the
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applicant has a contrary view of the applicable law. We answer this question in the affirmative.”)
704.11 What Information May Be Required [R-11.2013]
Information which may be required under 37 CFR 1.105 is that information reasonably necessary to properly examine or treat a matter in a pending or abandoned application filed under 35 U.S.C. 111 (including a reissue application), in a pending or abandoned application that has entered the national stage under 35 U.S.C. 371, in a patent, or in a reexamination proceeding.
There must be a reasonable basis for the information required that would aid in the examination of an application or treatment of some matter. A requirement for information under 37 CFR 1.105 places a substantial burden on the applicant that is to be minimized by clearly focusing the reason for the requirement and the scope of the expected response. Thus, the scope of the requirement should be narrowly defined, and a requirement under 37 CFR 1.105 may only be made when the examiner has a reasonable basis for requiring information.
The terms “factual” and “facts” are included in 37 CFR 1.105 to make it clear that it is facts and factual information, that are known to applicant, or readily obtained after reasonable inquiry by applicant, that are sought, and that requirements under 37 CFR 1.105 are not requesting opinions that may be held or would be required to be formulated by applicant. Where the factual information requested related to the subject application, and details thereof, applicant would be expected to make a reasonable inquiry under the circumstances to find the factual information requested (37 CFR 11.18(b)(2)). Applicant need not, however, derive or independently discover a fact, such as by experimentation, in response to a requirement for information. The purpose of 37 CFR 1.105 is to improve patent quality, and render better decisions, and not to put applicants in jeopardy of meeting their duties of candor and good faith in their replies to a requirement for information.
INFORMATION REASONABLY NECESSARY FOR FINDING PRIOR ART
The criteria stated in 37 CFR 1.105 for making a requirement for information is that the information be reasonably necessary to the examination or treatment of a matter in an application. The information required would typically be that necessary for finding prior art or for resolving an issue arising from the results of the search for art or from analysis of the application file. A requirement for information necessary for finding prior art is not a substitute for the examiner performing a search of the relevant prior art; the examiner must make a search of the art according to MPEP §§ 704.01 and 904 – 904.03.
The criteria of reasonable necessity is generally met, e.g., where:
(A) the examiner’s search and preliminary analysis demonstrates that the claimed subject matter cannot be adequately searched by class or keyword among patents and typical sources of non-patent literature, or
(B) either the application file or the lack of relevant prior art found in the examiner’s search justifies asking the applicant if he or she has information that would be relevant to the patentability determination.
The first instance generally occurs where the invention as a whole is in a new area of technology which has no patent classification or has a class with few pieces of art that diverge substantially from the nature of the claimed subject matter. In this situation, the applicant is likely to be among the most knowledgeable in the art, as evidenced by the scarcity of art, and requiring the applicant’s information of areas of search is justified by the need for the applicant’s expertise.
The second instance generally occurs where the application file, or other related applications or publications authored by the applicant, suggests the applicant likely has access to information necessary to a more complete understanding of the invention and its context. In this situation, the record suggests that the details of such information may be relevant to the issue of patentability, and thus shows the need
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for information in addition to that already submitted by the applicant.
704.11(a) Examples of Information Reasonably Required [R-07.2015]
37 CFR 1.105(a)(1)(i)-(viii) list specific examples of information that may be reasonably required. Other examples, not meant to be exhaustive, of information that may be reasonably required for examination of an application include:
(A) The name and citation of any particularly relevant indexed journal, or treatise.
(B) The trade name of any goods or services the claimed subject matter is embodied in.
(C) The citation for, the dates initially published and copies of any advertising and promotional literature prepared for any goods or services the claimed subject matter has been embodied in.
(D) The citation for and copies of any journal articles describing any goods or services the claimed subject matter has been embodied in.
(E) The trade names and providers of any goods or services in competition with the goods or services the claimed subject matter has been embodied in.
(F) Any written descriptions or analyses, prepared by any of the inventors or assignees, of goods or services in competition with the goods or services the claimed subject matter has been embodied in.
(G) Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee as the current application that disclose similar subject matter that are not otherwise identified in the current application. Regarding the identification of applications filed before June 8, 1995, 35 U.S.C. 122(a) requires the identified applications to be kept in confidence by the Office and no information concerning the same is to be given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director. See MPEP § 103 and Hyatt v. United States Patent and Trademark Office, No. 1:13-cv-1535 (E.D. Va., May 29, 2014) (2014 WL 2446176).
(H) A reply to a matter raised in a protest under 37 CFR 1.291.
(I) An explanation of technical material in a publication, such as one of the inventor’s publications.
(J) The identification of changes made in a reformatted continuing application filed under 37 CFR 1.53(b).
(K) A mark-up for a continuation-in-part application showing the subject matter added where there is an intervening reference.
(L) Comments on a new decision by the Federal Circuit that appears on point.
(M) The publication date of an undated document mentioned by applicant that may qualify as printed publication prior art (35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b)).
(N) Comments on information of record which raises a question of whether applicant derived the invention from another under 35 U.S.C. 101 and 115, and pre-AIA 35 U.S.C. 102(f).
(O) Art related to applicant’s invention, applicant’s disclosure, or the claimed subject matter.
(P) Other factual information pertinent to patentability.
(Q) The accuracy of the examiner’s stated analysis of such items.
(R) Clarification of the correlation and identification of what structure, material, or acts set forth in the specification would be capable of carrying out a function recited in a means or steps plus function claim limitation. If it is not apparent to the examiner where in the specification and drawings there is support for a particular claim limitation reciting a means to accomplish a function, and if an inquiry by the examiner for such support is met by a stated lack of knowledge thereof by the applicant, the examiner could very well conclude that there is no such support and make appropriate rejections under, for example, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph (written description) and 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
(S) Interrogatories or Stipulations.
(1) Of the common technical features shared among all claims, or admission that certain groups
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of claims do not share any common technical features,
(2) About the support found in the disclosure for means or steps plus function claims (35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6),
(3) Of precisely which portion(s) of the disclosure provide the written description and enablement support for specific claim element(s),
(4) Of the meaning of claim limitations or terms used in the claims, such as what teachings in the prior art would be covered by particular limitations or terms in a claim and which dictionary definitions would define a particular claim term, particularly where those terms are not used per se in the specification,
(5) Of which portions of each claim correspond to any admitted prior art in the specification,
(6) Of the specific utility provided by the claimed subject matter on a claim-by-claim basis,
(7) As to whether a dependent claim element is known in the prior art based on the examiner having a reasonable basis for believing so,
(8) Of support for added limitations in an amended claim,
(9) Of facts related to public use or sale situations.
(T) Information from the applicant regarding a third party submission under 37 CFR 1.290. In no circumstance may an examiner direct a requirement for information to the third party that submitted the paper under 37 CFR 1.290. See MPEP § 1134.
(U) Information from the applicant regarding rescission of a statement under 37 CFR 1.55 or 1.78. See MPEP § 704.14(a) for form paragraph 7.104.02.
704.11(b) When May a Requirement for Information Be Made [R-08.2012]
A requirement for information under 37 CFR 1.105 is discretionary. A requirement may be made at any time once the necessity for it is recognized and should be made at the earliest opportunity after the necessity is recognized. The optimum time for making a requirement is prior to or with a first action on the merits because the examiner has the maximum
opportunity to consider and apply the response. Ordinarily, a request for information should not be made with or after a final rejection.
I. PRIOR TO THE FIRST ACTION ON THE MERITS
It may be appropriate to make a requirement for information prior to the first action on the merits, such as with a restriction requirement, when the examiner’s search and preliminary analysis demonstrates that the claimed subject matter cannot be adequately searched by class or keyword among patents or in areas of emerging technology where the Office has minimal prior art.
Factors to be considered for the appropriateness of a separate requirement for information prior to the first action on the merits include:
(A) Whether the claimed subject matter is in a newly established art area without a well-developed prior art resource pool;
(B) Whether the applicant submitted an Information Disclosure Statement;
(C) Whether the specification’s background description adequately describes the background of the disclosed subject matter;
(D) Whether related documents, written by an inventor or an employee of the assignee, which were not submitted, are found during the search or described in the application file;
(E) Whether non-patent literature is referred to in the disclosure, but a copy has not been supplied; and
(F) Whether the specification’s background of the invention describes information as being known or conventional, which may be considered as an admission of prior art, but such information is unfamiliar to examiner and cannot be found within the application file or from the examiner’s search, and further details of the information would be relevant to the question of patentability.
II. WITH THE FIRST ACTION ON THE MERITS
A requirement for information may be combined with a first action on the merits that includes at least one rejection, if, for example, either the application
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§ 704.11(b)EXAMINATION OF APPLICATIONS
file or the lack of relevant prior art found in the examiner’s search justifies asking the applicant if he or she has information that would be relevant to the patentability determination.
It is not appropriate to make a requirement for information based on a lack of relevant prior art with a first action on the merits allowance or Ex parte Quayle action.
III. AFTER THE FIRSTACTION ON THE MERITS
A requirement for information made after the first action on the merits may be appropriate when the application file justifies asking the applicant if he or she has information that would be relevant to the patentability determination. It is rarely appropriate to require information because of a lack of relevant prior art after the first action on the merits.
A requirement for information is not proper when no further action would be taken by the examiner. The reasonable necessity criteria for a requirement for information implies further action by the examiner. This means that actions in which requirements for information necessary for examination are made should generally be a non-final action because the applicant’s reply must be considered and applied as appropriate.
Under limited circumstances, requirements under 37 CFR 1.105 may be made in an application that is issued or abandoned. Such a requirement would normally be made only during part of some ongoing proceeding involving the issued patent or abandoned application. Examples of proceedings when an examiner or other Office employee would issue such a request in an abandoned application include proceedings to revive the abandoned application. Examples of proceedings when an examiner or other Office employee would issue such a request in a patent include proceedings to change inventorship and reexamination proceedings.
704.12 Replies to a Requirement for Information [R-08.2012]
Replies to requirements for information must be complete and filed within the time period set including any extensions. Failure to reply within the
time period set will result in the abandonment of the application. All replies for a request for information should be checked for completeness.Any incomplete reply can be completed within the original time period set including any extensions. Supplemental replies filed after the expiration of the original period for reply including any extensions of time must comply with all other rules for submissions of information.
704.12(a) Relationship of Requirement for Information to Duty of Disclosure [R-08.2012]
The duty of candor and good faith under 37 CFR 1.56 applies to the applicant’s reply to a requirement for information under 37 CFR 1.105, and requires that the applicant reply to a requirement under 37 CFR 1.105 with information reasonably and readily available.
37 CFR 1.56 requires parties identified in 37 CFR 1.56(c) to disclose to the Office information material to the patentability of the claimed subject matter. This threshold is substantially higher than that for requiring information under 37 CFR 1.105, which is reasonable necessity to the examination of the application. See, e.g., Star Fruits S.N.C. v. United States, 280 F.Supp.2d 512, 515-16 (E.D. Va 2003)(“Beyond that which a patent applicant is duty-bound to disclose pursuant to 37 CFR 1.56, an examiner may require the production of ‘such information as may be reasonably necessary to properly examine or treat the matter.’”)
In contrast with the applicant’s duty to disclose on his or her own initiative information material to patentability under 37 CFR 1.56, the Office has the authority to require information reasonably necessary to the examination or treatment of a matter in an application. Such information may not be considered material to patentability by applicant, hence applicant would not be required to provide the information under 37 CFR 1.56. The information is instead reasonably necessary to determine the state of the art, the context in which the invention is practiced, the directions in which the relevant art are advancing, the similarity between the claimed subject matter and other art worked on by the applicants and their assignees or to otherwise proceed in the examination and treatment of matters in an application.
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Similar to 37 CFR 1.56, applicant is required by 37 CFR 1.105 to submit information already known, but there is no requirement to search for information that is unknown. Unlike 37 CFR 1.56, applicant is required by 37 CFR 1.105 to submit information that may not be material to patentability in itself, but that is necessary to obtain a complete record from which a determination of patentability may be determined.
704.12(b) What Constitutes a Complete Reply [R-08.2012]
A complete reply to a 37 CFR 1.105 requirement is a reply to each enumerated requirement for information giving either the information required or a statement that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested. There is no requirement for the applicant to show that the required information was not, in fact, readily attainable, but applicant is required to make a good faith attempt to obtain the information and to make a reasonable inquiry once the information is requested.
There is no need for applicants to distinguish between whether the required information is unknown or is not readily available. Thus, if information remains unknown after a reasonable inquiry is made, applicant may simply reply that the requested information is either unknown or is not readily available rather than be required to make a categorical position either that the information is unknown to the applicant, or that the information is not readily available to the applicant.
A reply stating that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested will generally be sufficient unless, for example, it is clear the applicant did not understand the requirement, or the reply was ambiguous and a more specific answer is possible.
Depending on the facts surrounding the requirement and the reply, a follow up requirement may be made where both reasonable and warranted.
704.12(c) Treatment of an Incomplete Reply [R-07.2015]
An incomplete reply to a 37 CFR 1.105 requirement in a pending application or reexamination proceeding is handled in the same manner as an amendment not fully responsive to a non-final Office action. See 37 CFR 1.135(c) and MPEP § 714.03. Where the reply is a bona fide reply, form paragraph 7.95 may be used. Note that a 37 CFR 1.105 requirement, even absent an action on the merits, is an Office action.
¶ 7.95 Bona Fide, Non-Responsive Amendments
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).
Examiner Note:
This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.
704.13 Time Periods for Reply [R-08.2012]
A reply, or a failure to reply, to a requirement for information under 37 CFR 1.105 will be governed by 37 CFR 1.135 and 1.136. See MPEP § 710 et seq.
Requirements for information under 37 CFR 1.105 made without an action on the merits should set a shortened statutory period of two months for reply. Applicant may extend the time period for reply up to six months in accordance with 37 CFR 1.136(a).
Requirements sent with an Office action on the merits, and not as a separate Office action, will be given the same period for reply as the action on the merits.
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§ 704.13EXAMINATION OF APPLICATIONS
A requirement for information under 37 CFR 1.105 is an Office action under 35 U.S.C. 132 for patent term adjustment purposes. See MPEP § 2730 for information pertaining to patent term adjustment.
704.14 Making a Requirement for Information [R-08.2012]
A requirement for information under 37 CFR 1.105 should be narrowly specified and limited in scope. It is a significant burden on both the applicant and the Office since the applicant must collect and submit the required information and the examiner must consider all the information that is submitted. A requirement for information is only warranted where the benefit from the information exceeds the burden in obtaining information.
704.14(a) Format of the Requirement [R-07.2015]
The requirement must clearly indicate that a requirement under 37 CFR 1.105 is being made, the basis for the requirement, and what information is being required. Requirements should specify the particular art area involved, and the particular claimed subject matter within such art area, in which the information is required in order to avoid overly burdening the applicant and to avoid inviting large volumes of information that are not relevant to the need for the information. The requirement should also clearly indicate the form the required information is expected to take. That is, whether the requirement is for citations and copies of individual art references, for the identification of whole collections of art, for answers to questions, or for another specified form.
A requirement for information under 37 CFR 1.105 is generally prepared as a separate document that may be attached to an Office action on the merits or mailed as a stand alone action. The rule permits a requirement to be included within an Office action, but creating a separate document is preferable because the existence of the requirement is immediately brought to the attention of the recipient and it is more readily routed by the applicant to the parties best able to respond.
The requirement should state why the requirement has been made and how the information is necessary to the examination.
Interrogatories may be used to ask specific questions seeking applicant’s factual knowledge. Such a requirement for information may include an inquiry as to the existence of a particular document or other piece of information and a requirement that such information be supplied if it is known to exist and is readily available. A stipulation may be used as to facts with which applicant may agree or disagree in order to clarify the record about uncontroverted matters.
FORM PARAGRAPHS
The following form paragraphs should be used when preparing a requirement for information:
¶ 7.104.02 Requirement for Information, Rescission of Statement Under 37 CFR 1.55 or 1.78
Applicant submitted a rescission of the prior-filed 1.55/1.78 statement which indicated that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013. In order for the examiner to properly consider patentability of the claimed invention, additional information regarding this issue is required as follows: [1]
Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This form paragraph should only be used in an application filed on or after March 16, 2013, where the applicant rescinded a statement pursuant to 37 CFR 1.55 or 1.78 and clarification on the reasoning why pre-AIA law applies is needed.
3. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability.
4. In bracket 1, insert the information that is sought from the applicant.
5. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having a shortened statutory period (SSP), in which case the period for reply will apply also to the requirement.
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¶ 7.105 Requirement for Information, Heading
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
Examiner Note:
1. This form paragraph should appear at the beginning of any requirement for information under 37 CFR 1.105, and should be followed by an explanation of why the required information is necessary for examination. Form paragraph 7.104.aia, 7.104.fti, 7.104.02 or 7.106 – 7.121 may be used as appropriate.
2. The requirement for information should conclude with form paragraphs 7.122 – 7.126 as appropriate.
The following form paragraphs should be used as appropriate where the information required pertains to stipulations of facts or interrogatories of facts known to the applicant:
¶ 7.105.01 Stipulations of Facts Known to Applicant
In response to this requirement, please agree or disagree to the stipulation of each of the following assertions of facts:
[1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 –7.126 as appropriate.
2. In bracket 1, specify each factual assertion, in the form of a separate, numbered sentence, that the applicant is to either agree or disagree to so stipulate. It is suggested that at the end of each assertion, the parenthetical phrase “(agree/disagree)” be appended to facilitate a reply by way of applicant marking up a copy of the requested stipulations.
¶ 7.105.02 Interrogatories of Facts Known to Applicant
In response to this requirement, please provide answers to each of the following interrogatories eliciting factual information:
[1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 –7.126 as appropriate.
2. In bracket 1, specify each interrogatory question, in the form of a separate, numbered sentence, that the applicant is to answer. The scope of each query must be clearly set forth and the content of the expected reply is to be characterized as factual information.
The following form paragraphs should be used as appropriate where the information required pertains to a search for prior art, or to citations and/or copies of publications:
¶ 7.106 Domain of Search
The information is required to extend the domain of search for prior art. Limited amounts of art related to the claimed subject matter are available within the Office, and are generally found in class [1] and subclasses [2], which describe [3]. A broader range of art to search is necessary to establish the level of knowledge of those of ordinary skill in the claimed subject matter art of [4].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 4, insert a description of the art claimed but not found in the classification system.
¶ 7.107 Level of Skill and Knowledge in the Art
The information is required to document the level of skill and knowledge in the art of [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.108 Background Description
The information is required to complete the background description in the disclosure by documenting [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.109 Products and Services Embodying Invention
The information is required to identify products and services embodying the disclosed subject matter of [1] and identify the properties of similar products and services found in the prior art.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
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¶ 7.110 Art Suggested as Relevant
The information is required to enter in the record the art suggested by the applicant as relevant to this examination in [1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 1, describe where in the application file applicant suggests that the art is relevant, e.g., the specification and the relevant page thereof, or a paper received in the Office on a specified date and the relevant page thereof.
¶ 7.111 List of Keywords
In response to this requirement, please provide a list of keywords that are particularly helpful in locating publications related to the disclosed art of [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.112 Citations for Electronically Searchable Databases or Other Indexed Collections
In response to this requirement, please provide a list of citations to electronically searchable databases or other indexed collections containing publications that document the knowledge within the disclosed art of [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.113 Copy of Art Referred to in the Disclosure, But Not Submitted
In response to this requirement, please provide a copy of each of the following items of art referred to in the [1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 1, describe where in the application file applicant refers to art that has not been previously submitted, e.g., the specification and the relevant page thereof, or a paper received in the Office on a specified date and the relevant page thereof.
¶ 7.114 Copies of Publications Authored by Inventor(s)
In response to this requirement, please provide copies of each publication which any of the applicants authored or co-authored and which describe the disclosed subject matter of [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.115 Art Relied Upon for Description of Prior Art
In response to this requirement, please provide the title, citation and copy of each publication that is a source used for the description of the prior art in the disclosure. For each publication, please provide a concise explanation of that publication’s contribution to the description of the prior art.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.
¶ 7.116 Art Relied Upon for Development of Invention
In response to this requirement, please provide the title, citation and copy of each publication that any of the applicants relied upon to develop the disclosed subject matter that describes the applicant’s invention, particularly as to developing [1]. For each publication, please provide a concise explanation of the reliance placed on that publication in the development of the disclosed subject matter.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.
3. In bracket 1, insert a description of the most important inventive elements.
¶ 7.117 Art Relied Upon for Drafting Claimed Subject Matter
In response to this requirement, please provide the title, citation and copy of each publication that was relied upon to draft the claimed subject matter. For each publication, please provide a concise explanation of the reliance placed on that publication in distinguishing the claimed subject matter from the prior art.
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Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.
¶ 7.118 Results of Applicant’s Prior Art Search
In response to this requirement, please state whether any search of prior art was performed. If a search was performed, please state the citation for each prior art collection searched. If any art retrieved from the search was considered material to demonstrating the knowledge of a person having ordinary skill in the art to the disclosed [1], please provide the citation for each piece of art considered and a copy of the art.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 1, describe the subject matter for which art is required.
¶ 7.119 Names of Products or Services Incorporating Claimed Invention
In response to this requirement, please provide the names of any products or services that have incorporated the claimed subject matter.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.120 Names of Products or Services Incorporating Disclosed Prior Art
In response to this requirement, please provide the names of any products or services that have incorporated the disclosed prior art [1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 1, specify the attributes of the prior art that most closely approximate the claimed subject matter to narrow the focus of the reply.
¶ 7.121 Details of Improvement Over the Prior Art
In response to this requirement, please state the specific improvements of the subject matter in claims [1] over the disclosed prior art and indicate the specific elements in the claimed subject matter that provide those improvements. For
those claims expressed as means or steps plus function, please provide the specific page and line numbers within the disclosure which describe the claimed structure and acts.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
The following form paragraphs should appear at the end of the requirement for information, as appropriate:
¶ 7.122 Submission of Only Pertinent Pages Where Document is Large
In responding to those requirements that require copies of documents, where the document is a bound text or a single article over 50 pages, the requirement may be met by providing copies of those pages that provide the particular subject matter indicated in the requirement, or where such subject matter is not indicated, the subject matter found in applicant’s disclosure.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. Use this form paragraph where the scope of the requirement for information specifically includes copies of publications.
¶ 7.123 Waiver of Fee and Statement Requirements for Certain Information Disclosures
The fee and certification requirements of 37 CFR 1.97 are waived for those documents submitted in reply to this requirement. This waiver extends only to those documents within the scope of the requirement under 37 CFR 1.105 that are included in the applicant’s first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR 1.105 are subject to the fee and certification requirements of 37 CFR 1.97 where appropriate.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraph 7.124 and either form paragraph 7.125 or 7.126 as appropriate.
2. Use this form paragraph where the scope of the requirement for information specifically includes citations to and/or copies of publications.
¶ 7.124 Contents of Good Faith Reply
The applicant is reminded that the reply to this requirement must be made with candor and good faith under 37 CFR 1.56. Where the applicant does not have or cannot readily obtain an item of required information, a statement that the item is unknown or
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cannot be readily obtained may be accepted as a complete reply to the requirement for that item.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraph 7.125 or 7.126 as appropriate.
2. This form paragraph should appear in the conclusion of any requirement for information.
¶ 7.125 Conclusion of Requirement That Accompanies Office Action
This requirement is an attachment of the enclosed Office action. A complete reply to the enclosed Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should appear at the conclusion of any requirement for information that accompanies an Office action. If the requirement for information is mailed without any other Office action, use form paragraph 7.126 instead.
2. Form paragraph 7.127 should appear at the end of any Office action that includes an attached requirement for information.
¶ 7.126 Conclusion Of Requirement Mailed Without Any Other Office Action
This requirement is subject to the provisions of 37 CFR 1.134, 1.135 and 1.136 and has a shortened statutory period of [1] months. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should appear at the conclusion of any requirement for information mailed without any other Office action. If the requirement for information is mailed with an Office action, use form paragraph 7.125 instead.
2. The period for reply is ordinarily set for 2 months.
¶ 7.127 Conclusion of Office Action That Includes Requirement
This Office action has an attached requirement for information under 37 CFR 1.105. A complete reply to this Office action must include a complete reply to the attached requirement for information. The time period for reply to the attached requirement coincides with the time period for reply to this Office action.
Examiner Note:
This form paragraph should appear at the end of any Office action that includes an attached requirement for information.
704.14(b) Examiner’s Obligation Following Applicant’s Reply [R-11.2013]
The examiner must consider the information submitted with the applicant’s reply and apply the information as the examiner deems appropriate. This obligation arises from the examiner’s assertion that the information is necessary to the examination in making the requirement.
Information constituting identification of areas of search must be considered and the examiner must indicate which areas were used and which areas were not used in performing a search.
The examiner must record in the appropriate sections of the OACS “Search Notes” page the areas in which the search for prior art was made. See MPEP § 719.05. Information constituting answers to queries posed by the examiner or another Office employee must be considered, and the record must indicate that the answers were considered. This indication may be made minimally by indicating “Considered” with the Stamper tool in Adobe Acrobat and including the receipt date on the reply.
Art that is submitted in response to a 37 CFR 1.105 requirement must be considered, at least to the extent that art submitted with an Information Disclosure Statement under 37 CFR 1.97 and 1.98 is considered. See MPEP § 609. If the applicant provides a written list of citations for the art submitted with a reply to a 37 CFR 1.105 requirement, an examiner must indicate on that list which art has been considered and which art has not been considered, in the same manner as with an Information Disclosure Statement under 37 CFR 1.97 and 1.98. The examiner may annotate the list by using Adobe Acrobat to stamp the document with “All References Considered” while also providing the receipt date, application number and art unit. If the applicant provides no such list, there is no requirement for the examiner to prepare such a list or otherwise make the submitted art of record unless the examiner relies on such art in a rejection.
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It is never appropriate to deny considering information that is submitted in reply to, and is within the scope of, a requirement under 37 CFR 1.105. However, information that is beyond the scope of a 37 CFR 1.105 requirement, submitted along with information responding to a requirement under 37 CFR 1.105, need not be considered unless the submission of such art conforms to the provisions of 37 CFR 1.97 and 1.98, and MPEP § 609. The criteria for measuring the scope of a 37 CFR 1.105 requirement is the plain meaning of the text of the requirement. For this reason, it is essential that the scope of information required be carefully specified. If art which is beyond the scope of a 37 CFR 1.105 requirement is submitted in accordance with the provisions of 37 CFR 1.97 and 1.98, and MPEP § 609, such art must be considered according to the provisions of 37 CFR 1.97 and 37 CFR 1.98.
704.14(c) Petitions to Requirements Under 37 CFR 1.105 [R-08.2012]
Applicants who seek to have a requirement under 37 CFR 1.105 withdrawn or modified, or who seek to have information submitted under 37 CFR 1.105 considered, may submit a petition under 37 CFR 1.181 to the Director of the Technology Center in which the requirement was issued. However, a petition is not a reply to a 37 CFR 1.105 requirement. The time period for the applicant to reply to the 37 CFR 1.105 requirement continues to run, even where a petition has been submitted.
704.14(d) Relationship to Information Disclosure Statements [R-08.2012]
The initial reply, if responsive to the requirement for information under 37 CFR 1.105 and submitted within the original time period for reply including any extensions of time, does not have to satisfy the fee and/or certification requirements of 37 CFR 1.97 and 1.98. Applicant should list the references on a copy of Form PTO/SB/08 to have the citations entered in the record. Any replies made subsequent to the initial reply must meet the provisions of 37 CFR 1.97 and 1.98 as appropriate.
Any submission of art beyond the scope of a requirement for information under 37 CFR 1.105 is
a submission of art under 37 CFR 1.97 and 1.98 and MPEP § 609, and must meet the provisions of 37 CFR 1.97 and 1.98 for the art to be considered.
Where information is submitted in a reply to a requirement under 37 CFR 1.105, the examiner may NOT make the next Office action relying on that art final unless all instances of the application of such art are necessitated by amendment. This section explicitly distinguishes the practice following a reply under 37 CFR 1.105 from the practice in MPEP § 609.04(b) and MPEP § 706.07(a) following a submission of an Information Disclosure Statement under 37 CFR 1.97 and 1.98.
705 Patentability Reports [R-08.2012]
Where an application, properly assigned to one Technology Center (TC), is found to contain one or more claims, per se, classifiable in one or more other TCs, which claims are not divisible inter se or from the claims which govern classification of the application in the first TC, the application may be referred to the other TC(s) concerned for a report as to the patentability of certain designated claims. This report is known as a Patentability Report (P.R.) and is signed by the primary examiner in the reporting TC.
Note that the Patentability Report practice is only to be used in extraordinary circumstances. See MPEP § 705.01(e).
705.01 Instructions re Patentability Reports [R-07.2015]
When an application comes up for any action and the primary examiners involved (i.e., from both the requesting and the requested Technology Center (TC)) agree that a Patentability Report from the requested TC is necessary for some of the claims, and if the TC Director of the requesting TC approves, the application is forwarded to the
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requested TC with a request for the Patentability Report.
705.01(a) Nature of P.R., Its Use and Disposal [R-07.2015]
The primary examiner in the Technology Center (TC) from which the Patentability Report is requested, if he or she approves the request, will direct the preparation of the Patentability Report. This Patentability Report is in memorandum form and will include the citation of all pertinent references and a complete action on all claims involved. The field of search covered must be recorded in the appropriate section of the OACS "Search Notes" page. When an examiner to whom an application has been forwarded for a Patentability Report is of the opinion that final action is in order as to the referred claims, he or she should so state. The Patentability Report when signed by the primary examiner in the reporting TC will be returned to the TC to which the application is regularly assigned and placed in the file wrapper.
The examiner preparing the Patentability Report will be entitled to receive an explanation of the disclosure from the examiner to whom the case is assigned to avoid duplication of work.
If the primary examiner in a reporting TC is of the opinion that a Patentability Report is not in order, he or she should so advise the primary examiner in the forwarding TC.
I. DISAGREEMENT AS TO CLASSIFICATION
Conflict of opinion as to classification may be referred to a classification dispute TC representative panel for decision.
If the primary examiner in the TC having jurisdiction of the application agrees with the Patentability Report, he or she should incorporate the substance thereof in his or her action, which action will be complete as to all claims.
II. DISAGREEMENT ON PATENTABILITY REPORT
If the primary examiner does not agree with the Patentability Report or any portion thereof, he or she may consult with the primary examiner responsible for the report. If agreement as to the resulting action cannot be reached, the primary examiner having jurisdiction of the application need not rely on the Patentability Report but may make his or her own action on the referred claims, in which case the Patentability Report should be removed from the file.
III. APPEAL TAKEN
When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, the application should be transferred to said TC for the purpose of appeal. The receiving TC will take jurisdiction of the application and prepare the examiner’s answer. If allowed, the application may be sent to issue by said TC with its classification determined by the controlling claims remaining in the application.
705.01(b) Sequence of Examination [R-08.2012]
In the event that the supervisory patent examiners concerned in a P.R. case cannot agree as to the order of examination by their Technology Centers (TCs), the supervisory patent examiner having jurisdiction of the application will direct that a complete search be made of the art relevant to his or her claims prior to referring the application to another TC for report. The TC to which the application is referred will be advised of the results of this search.
If the supervisory patent examiners are of the opinion that a different sequence of search is expedient, the order of search should be correspondingly modified.
705.01(c) Counting and Recording P.R.s [R-08.2012]
The forwarding of the application for a Patentability Report is not to be treated as a transfer by the forwarding Technology Center (TC). When the P.R.
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is completed and the application is ready for return to the forwarding TC, it is not counted either as a receipt or action by transfer. Credit, however, is given for the time spent.
The date status of the application in the reporting TC will be determined on the basis of the dates in the TC of original jurisdiction. To ensure orderly progress in the reported dates, a timely reminder should be furnished to the TC making the P.R.
705.01(d) [Reserved]
705.01(e) Limitation as to Use [R-07.2015]
The above outlined Patentability Report practice is not obligatory and should be resorted to only where it will save total examiner time or result in improved quality of action due to specialized knowledge. A saving of total examiner time that is required to give a complete examination of an application is of primary importance. Patentability Report practice is based on the proposition that when plural, indivisible inventions are claimed, in some instances either less time is required for examination, or the results are of better quality, when specialists on each character of the claimed invention treat the claims directed to their specialty. However, in many instances a single examiner can give a complete examination of as good quality on all claims, and in less total examiner time than would be consumed by the use of the Patentability Report practice.
Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper.
Exemplary situation where Patentability Reports are ordinarily not proper are as follows:
(A) Where the claims are related as a manufacturing process and a product defined by the process of manufacture. The examiner having jurisdiction of the process can usually give a complete, adequate examination in less total examiner time than would be consumed by the use of a Patentability Report.
(B) Where the claims are related as product and a process which involves merely the fact that a
product having certain characteristics is made. The examiner having jurisdiction of the product can usually make a complete and adequate examination.
(C) Where the claims are related as a combination distinguished solely by the characteristics of a subcombination and such subcombination, per se. The examiner having jurisdiction of the subcombination can usually make a complete and adequate examination.
Where it can be shown that a Patentability Report will save total examiner time, one is permitted with the approval of the Director of the Technology Center to which the application is assigned. The “Approved” stamp should be impressed on the memorandum requesting the Patentability Report.
705.01(f) Interviews With Applicants [R-08.2012]
In situations where an interview is held on an application in which a Patentability Report has been adopted, the reporting Technology Center may be called on for assistance at the interview when it concerns claims treated by them. See MPEP § 713 to § 713.10 regarding interviews in general.
706 Rejection of Claims [R-07.2015]
After the application has been read and the claimed invention understood, a prior art search for the claimed invention is made. With the results of the prior art search, including any references provided by the applicant, the patent application should be reviewed and analyzed in conjunction with the state of the prior art to determine whether the claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification. The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity. The examiner then reviews all the evidence, including arguments and evidence responsive to any rejection, before issuing the next Office action. Where the examiner determines that information reasonably necessary for the examination should be required from the applicant under 37 CFR 1.105, such a requirement should generally be made either prior to or with the
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first Office action on the merits and should follow the procedures in MPEP § 704.10 et seq.
Although this part of the Manual explains the procedure in rejecting claims, the examiner should never overlook the importance of his or her role in allowing claims which properly define the invention.
37 CFR 1.104 Nature of examination. *****
(c) Rejection of claims.
(1) If the invention is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected.
(2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.
(3) In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section.
(4)
(i) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(ii) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if:
(A) The applicant or patent owner provides a statement to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(5)
(i) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application filed on or after November 29, 1999, or any patent issuing thereon, in an application filed before November 29, 1999, but pending on December 10, 2004, or any patent issuing thereon, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, at the time the claimed invention was made, were owned by the same person or subject to an obligation of assignment to the same person.
(ii) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application pending on or after December 10, 2004, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect prior to March 16, 2013, if:
(A) The applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention were made by or on behalf of the parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(6) Patents issued prior to December 10, 2004, from applications filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in effect on November 28, 1999.
*****
I. UNIFORM APPLICATION OF THE PATENTABILITY STANDARD
The standards of patentability applied in the examination of claims must be the same throughout the Office. In every art, whether it be considered “complex,” “newly developed,” “crowded,” or “competitive,” all of the requirements for patentability (e.g., patent eligible, useful, novel, nonobvious, enabled, and clearly described as provided in 35 U.S.C. 101, 102, 103 and 112) must be met before a claim is allowed. The mere fact that a claim recites in detail all of the features of an invention (i.e., is a “picture” claim) is never, in itself, justification for the allowance of such a claim.
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An application should not be allowed, unless and until issues pertinent to patentability have been raised and resolved in the course of examination and prosecution, since otherwise the resultant patent would not justify the statutory presumption of validity (35 U.S.C. 282), nor would it “strictly adhere” to the requirements laid down by Congress in the 1952 Act as interpreted by the Supreme Court. The standard to be applied in all cases is the “preponderance of the evidence” test. In other words, an examiner should reject a claim if, in view of the prior art and evidence of record, it is more likely than not that the claim is unpatentable.
II. DEFECTS IN FORM OR OMISSION OF A LIMITATION; CLAIMS OTHERWISE ALLOWABLE
When an application discloses patentable subject matter and it is apparent from the claims and the applicant’s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner’s action should be constructive in nature and when possible should offer a definite suggestion for correction.
III. PATENTABLE SUBJECT MATTER DISCLOSED BUT NOT CLAIMED
If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, he or she may note in the Office action that certain aspects or features of the patentable invention have not been claimed and that if properly claimed such claims may be given favorable consideration.
IV. RECONSIDERATION OF CLAIMS AFTER REPLY BY APPLICANT
37 CFR 1.112 Reconsideration before final action.
After reply by applicant or patent owner (§ 1.111 or § 1.945) to a non-final action and any comments by an inter partes reexamination requester (§ 1.947), the application or the patent under reexamination will be reconsidered and again examined. The applicant, or in the case of a reexamination proceeding the
patent owner and any third party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination (§ 1.104). Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111 or § 1.945, with or without amendment, unless such Office action indicates that it is made final (§ 1.113) or an appeal (§ 41.31 of this title) has been taken (§ 1.116), or in an inter partes reexamination, that it is an action closing prosecution (§ 1.949) or a right of appeal notice (§ 1.953).
37 CFR 1.112 provides for the reconsideration and continued examination of an application after reply by the applicant, and for the reconsideration and continued examination of a reexamination proceeding after a response by the patent owner. If claims are rejected, or objections or requirements are made, the applicant or patent owner will be notified in the same manner as notification was provided after the first examination. Applicant or patent owner may reply to such Office action (with or without amendment) in the same manner provided in 37 CFR 1.111, or 37 CFR 1.945 for an inter partes reexamination, unless such Office action indicates that it is made final (37 CFR 1.113), or an appeal under 37 CFR 41.31 has been taken (37 CFR 1.116), or such Office action indicates in an inter partes reexamination that it is an action closing prosecution (37 CFR 1.949) or a right of appeal notice (37 CFR 1.953). Once an appeal has been taken in an application or in an ex parte reexamination proceeding, any amendment (filed prior to an appeal brief) is subject to the provisions of 37 CFR 1.116(b) and (c), even if the appeal is in reply to a non-final Office action. See 37 CFR 41.33(b) for amendments filed with or after the filing of an appeal brief.
V. REJECTIONS IN STATUTORY INVENTION REGISTRATIONS
See MPEP Chapter 1100 for rejection of claims in an application for a Statutory Invention Registration.
706.01 Contrasted With Objections [R-11.2013]
The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” The term “rejected” must be applied to such claims in the examiner’s action. If the form of the claim (as distinguished from its substance) is
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improper, an “objection” is made. An example of a matter of form as to which objection is made is dependency of a claim on a rejected claim, if the dependent claim is otherwise allowable. See MPEP § 608.01(n). The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeal Board, while an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO.
Similarly, the Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board. These formal matters should not be combined in appeals to the Board.
706.02 Rejection on Prior Art [R-07.2015]
35 U.S.C. 102 Conditions for patentability; novelty.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See pre-AIA 35 U.S.C. 102 for the law applicable to applications and patents not subject to the first inventor to file provisions of the AIA.]
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c) based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
35 U.S.C. 102 (pre-AIA) Conditions for patentability; novelty and loss of right to patent.
[Editor Note: With the exception of subsection (g) in limited circumstances, not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). For an application or patent subject to the first inventor to file provisions of the AIA, see 35 U.S.C. 102.]
A person shall be entitled to a patent unless —
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(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
(e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or
(f) he did not himself invent the subject matter sought to be patented, or
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See pre-AIA 35 U.S.C. 102 for the law applicable to applications and patents not subject to the first inventor to file provisions of the AIA.]
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having
ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
35 U.S.C. 103 (pre-AIA) Conditions for patentability; non-obvious subject matter.
[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). For an application or patent subject to the first inventor to file provisions of the AIA, see 35 U.S.C. 103.]
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
(b)
(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if-
(A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and
(B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.
(2) A patent issued on a process under paragraph (1)-
(A) shall also contain the claims to the composition of matter used in or made by that process, or
(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.
(3) For purposes of paragraph (1), the term “biotechnological process” means-
(A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to-
(i) express an exogenous nucleotide sequence,
(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
(iii) express a specific physiological characteristic not naturally associated with said organism;
(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and
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(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).
(c)
(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
By far the most frequent ground of rejection is on the ground of unpatentability in view of the prior art, that is, that the claimed subject matter is either not novel under 35 U.S.C. 102, or else it is obvious under 35 U.S.C. 103. The language to be used in rejecting claims should be unequivocal. See MPEP § 707.07(d).
I. CHOICE OF PRIOR ART; BEST AVAILABLE
Prior art rejections should ordinarily be confined strictly to the best available art. Exceptions may properly be made, for example, where:
(A) the propriety of a 35 U.S.C. 102 or 103 rejection depends on a particular interpretation of a claim;
(B) a claim is met by a reference which does not disclose the inventive concept involved; or
(C) the most pertinent reference seems likely avoided by invoking an exception in a 37 CFR 1.130 declaration or to be antedated by a 37 CFR 1.131 affidavit or declaration depending on the applicable version of 35 U.S.C. 102.
Such rejections should be backed up by the best other art rejections available. Merely cumulative rejections, i.e., those which would clearly fall if the primary rejection were not sustained, should be avoided.
See also MPEP § 707.05.
II. RELIANCE UPONABSTRACTSAND FOREIGN LANGUAGE DOCUMENTS IN SUPPORT OF A REJECTION
Prior art uncovered in searching the claimed subject matter of a patent application often includes English language abstracts of underlying documents, such as technical literature or foreign patent documents which may not be in the English language. When an abstract is used to support a rejection, the evidence relied upon is the facts contained in the abstract, not additional facts that may be contained in the underlying full text document. Citation of and reliance upon an abstract without citation of and reliance upon the underlying scientific document is generally inappropriate where both the abstract and the underlying document are prior art. See Ex parte Jones, 62 USPQ2d 1206, 1208 (Bd. Pat. App. & Inter. 2001) (unpublished). To determine whether both the abstract and the underlying document are prior art, a copy of the underlying document must be obtained and analyzed. If the document is in a language other than English and the examiner seeks to rely on that document, a translation must be obtained so that the record is clear as to the precise facts the examiner is relying upon in support of the rejection. The record must also be clear as to whether the examiner is relying upon the abstract or the full text document to support a rejection. The rationale for this is several-fold. It is not uncommon for a full text document to reveal that the document fully anticipates an invention that the abstract renders obvious at best. The converse may also be true, that the full text document will include teachings away from the invention that will preclude an obviousness rejection under 35 U.S.C. 103, when the abstract alone appears to support the rejection. An abstract
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can have a different effective publication date than the full text document. Because all patentability determinations are fact dependent, obtaining and considering full text documents at the earliest practicable time in the examination process will yield the fullest available set of facts upon which to determine patentability, thereby improving quality and reducing pendency. When both the abstract and the underlying document qualify as prior art, the underlying document should normally be used to support a rejection. In limited circumstances, it may be appropriate for the examiner to make a rejection in a non-final Office action based in whole or in part on the abstract only without relying on the full text document. In such circumstances, the full text document and a translation (if not in English) may be supplied in the next Office action.
Examiners may rely on a machine translation of a foreign language document unless the machine translation is not of sufficient quality to be adequate evidence of the contents of the document. See In re Orbital Technologies Corporation, 603 Fed. App’x 924, 932 (Fed. Cir. 2015). A request by the applicant for the examiner to obtain a human language translation should be granted if the applicant provides evidence (e.g., a translation inconsistent with the machine translation) showing the machine translation does not accurately represent the document’s contents.
An Office action supplying a full text document and/or translation may be made final if the conditions described in MPEP § 706.07(a) or for a first Office action or RCE, in MPEP § 706.07(b), have been met.
Some translation resources available to examiners are discussed in MPEP § 901.05(d).
III. RELIANCE ON ADMITTED PRIOR ART IN SUPPORT OF REJECTION
A statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. Riverwood
Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988). See MPEP §§ 2129 and 2152.03 for discussion on admissions as prior art. Where the admitted prior art anticipates the claim but does not qualify as prior art under any of the paragraphs of 35 U.S.C. 102, the claim may be rejected as being anticipated by the admitted prior art without citing to 35 U.S.C. 102.
IV. REEXAMINATION
For scope of rejections in ex parte reexamination proceedings, see MPEP § 2258 and in inter partes reexamination, see MPEP § 2658.
V. DISTINCTION BETWEEN 35 U.S.C. 102 AND 103
The distinction between rejections based on 35 U.S.C. 102 and those based on 35 U.S.C. 103 should be kept in mind. Under the former, the claim is anticipated by the reference. No question of obviousness is present. In other words, for anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention either explicitly or impliedly. Any feature not directly taught must be inherently present. Whereas, in a rejection based on 35 U.S.C. 103, the reference teachings must somehow be modified in order to meet the claims. The modification must be one which would have been obvious to one of ordinary skill in the art at the time the invention was made. See MPEP §§ 2131 - 2146 and 2150 - 2159.04 for guidance on patentability determinations under 35 U.S.C. 102 and 103.
VI. DETERMINING THE EFFECTIVE FILING DATE OF A CLAIMED INVENTION
The effective filing date of an invention claimed in a U.S. application may be determined as follows:
(A) If the application is a continuation or divisional of one or more earlier U.S. applications or international applications and if the requirements of 35 U.S.C. 120, 365(c), or 386(c) have been satisfied, the effective filing date is the same as the
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earliest filing date in the line of continuation or divisional applications.
(B) If the application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the specification and claims of the parent application have an effective filing date equal to the filing date of the new application. Any claims which are fully supported under 35 U.S.C. 112 by the earlier parent application have the effective filing date of that earlier parent application.
(C) If the application properly claims benefit under 35 U.S.C. 119(e) to a provisional application, the effective filing date is the filing date of the provisional application for any claims which are fully supported under the first paragraph of 35 U.S.C. 112 by the provisional application.
(D) If the application claims foreign priority under 35 U.S.C. 119(a) - (d) or 365(a) or (b), the definition of the effective filing date of a claimed inventions depends on whether any claim in the application is subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159 et seq. for guidance on this determination.
In examining applications subject to current (first inventor to file) 35 U.S.C. 102, for each claim the effective filing date is the filing date of the foreign priority document if the claim is adequately supported in the foreign priority document. See MPEP § 2152.01.
In examining applications subject to pre-AIA 35 U.S.C. 102, the effective filing date is the filing date of the U.S. application, unless situation (A) or (B) as set forth above applies. The effective filing date is not the filing date of the foreign priority document, although the filing date of the foreign priority document may be used to overcome certain references. See MPEP §§ 706.02(b) and 2136.05.
See MPEP § 1893.03(b) for determining the effective filing date of an application under 35 U.S.C. 371. See MPEP § 211.01(c) and 1895 for additional information on determining the effective filing date of a continuation, divisional, or continuation-in-part of a PCT application designating the U.S. See also MPEP §§ 1895.01 and 1896 which discuss differences between applications filed under 35
U.S.C. 111(a) and international applications that enter national stage under 35 U.S.C. 371.
VII. REJECTION OF CLAIMS CORRESPONDING TO PATENT CLAIMS
When claims corresponding to claims of a patent are presented in an application, the examiner must determine whether the presented claims are unpatentable on any ground(s), e.g., under 35 U.S.C. 101, 102, 103, 112, double patenting, etc. If any of the claims presented in the application are rejectable on any grounds, they should be so rejected. The ground of rejection of the claims presented in the application may or may not be one which would also be applicable to the corresponding claims in the patent. If the ground of rejection is also applicable to the corresponding claims in the patent, any office action including the rejection must have the approval of the Technology Center Director. See MPEP § 1003. For interferences and derivation proceedings, see MPEP Chapter 2300 and 37 CFR Parts 41 and 42.
706.02(a) Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e); Printed Publication or Patent [R-07.2015]
Once the examiner conducts a search and finds a printed publication or patent which discloses the claimed invention, the examiner should determine whether the rejection should be made under 35 U.S.C. 102(a)(1) or (a)(2) or if the application is subject to the former prior art regime, pre-AIA 35 U.S.C. 102(a), (b), or (e). See MPEP § 2159 for guidance. Form paragraph 7.03.aia or 7.03.fti should be used in an Office action to indicate whether the application is being examined under the first inventor to file provisions of the AIA or the pre-AIA prior art provisions, respectively.
¶ 7.03.aia Application Examined Under AIA First Inventor to File Provisions
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA.
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Examiner Note:
This form paragraph should be used in any application subject to the first inventor to file provisions of the AIA.
¶ 7.03.fti Application Examined Under First to Invent provisions
The present application, filed on or after March 16, 2013, is being examined under the pre-AIA first to invent provisions.
Examiner Note:
This form paragraph should be used in any application filed on or after March 16, 2013 that is subject to the pre-AIA prior art provisions.
In order to determine which paragraph of 35 U.S.C. 102 applies, the effective filing date of the application and each claimed invention must be determined and compared with the date of the reference. See MPEP §§ 706.02 and 2152.01 regarding determination of effective filing date of the claimed invention.
The examiner must also determine the issue or publication date of the reference so that a proper comparison between the application and reference dates can be made. See MPEP §§ 2124, 2126, 2128 - 2128.02, and 2152.02 - 2154.02(c) for case law relevant to reference date determination.
See MPEP § 706.02(a)(1) for determining whether to apply 35 U.S.C. 102(a)(1) or (a)(2). See MPEP § 706.02(a)(2) for determining whether to apply pre-AIA 35 U.S.C. 102(a), (b), or (e).
706.02(a)(1) Determining Whether To Apply 35 U.S.C. 102(a)(1) or 102(a)(2) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(a)(2) for examination of applications subject to pre-AIA 35 U.S.C. 102.]
I. 35 U.S.C. 102(a)(1)
First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(a)(1). Next the examiner must determine if any exceptions in 35 U.S.C. 102(b)(1) apply.
Patents claiming or describing the claimed inventions, descriptions of the claimed invention in a printed publication, public use of the claimed invention, placing the claimed invention on sale, and otherwise making the claimed invention available to the public qualify as prior art under 35 U.S.C. 102(a)(1) if the reference predates the effective filing date of the claim. The sale or use of the invention need not occur in the United States to qualify. See MPEP § 2152.
Potential references may be disqualified as prior art under 35 U.S.C. 102(b)(1)(A) when the inventor’s own work has been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(1)(A) provides that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) One year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. See MPEP §§ 2153.01(a) and 2153.01(b).
Potential references may also be disqualified as prior art under 35 U.S.C. 102(b)(1)(B) if the reference discloses subject matter that was publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. Specifically, 35 U.S.C. 102(b)(1)(B) provides that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) (patent, printed publication, public use, sale, or other means of public availability) may be disqualified as prior art if: (1) The disclosure was made one year or less before the effective filing date of the claimed invention; and (2) the subject matter disclosed had been previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly
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from the inventor or joint inventor. See MPEP §§ 2153.02 and 717.01(b)(2).
II. 35 U.S.C. 102(a)(2)
First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(a)(2). Next the examiner must determine if any exceptions in 35 U.S.C. 102(b)(2) apply.
U.S. patents, U.S. patent applications published under 35 U.S.C. 122(b), and international patent applications published under the Patent Cooperation Treaty to another are prior art under 35 U.S.C. 102(a)(2) if the filing or effective filing date of the disclosure of the reference is before the effective filing date of the claimed invention. Even if the issue or publication date of the reference is not before the effective filing date of the claimed invention, the reference may still be applicable as prior art under 35 U.S.C. 102(a)(2) if it was “effectively filed” before the effective filing date of the claimed invention with respect to the subject matter relied upon to reject the claim. MPEP § 2152.01 discusses the “effective filing date” of a claimed invention. 35 U.S.C. 102(d) sets forth the criteria to determine when subject matter described in a U.S. patent, U.S. patent application publication, or WIPO published application was “effectively filed” for purposes of 35 U.S.C. 102(a)(2). See MPEP § 2154.
Potential references may be disqualified as prior art under 35 U.S.C. 102(a)(2) by the three exception provisions of 35 U.S.C. 102(b)(2). 35 U.S.C. 102(b)(2)(A) limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(2)(B) disqualifies subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(2)(C) disqualifies subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and
the claimed invention, not later than the effective filing date of the claimed invention, “were owned by the same person or subject to an obligation of assignment to the same person.” 35 U.S.C. 102(b)(2)(C) resembles pre-AIA 35 U.S.C. 103(c) in that both concern common ownership, and both offer an avenue by which an applicant may avoid certain prior art. However, there are significant differences between 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c). See MPEP § 2154.02(b).
706.02(a)(2) Determining Whether To Apply Pre-AIA 35 U.S.C. 102(a), (b), or (e) [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(a)(1) for the examination of applications subject to the first inventor to file provisions of the AIA.]
I. PRE-AIA 35 U.S.C. 102(b)
First, the examiner should consider whether the reference qualifies as prior art under pre-AIA 102(b) because this section results in a statutory bar to obtaining a patent. If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the application (MPEP § 706.02), the reference qualifies as prior art under pre-AIA 102(b).
Where the last day of the year dated from the date of publication falls on a Saturday, Sunday or federal holiday, the publication is not a statutory bar under pre-AIA 102(b) if the application was filed on the next succeeding business day. Ex parte Olah, 131 USPQ 41 (Bd. App. 1960) (The Board in Olah held that 35 U.S.C. 21(b) is applicable to the filing of an original application for patent and that applicant’s own activity will not bar a patent if the 1-year grace period expires on a Saturday, Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding business day.). Despite changes to 37 CFR 1.6(a)(2) and 1.10 which permit the USPTO to accord a filing date to an application as of the date
of deposit as Priority Mail Express® with the U.S.
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Postal Service in accordance with 37 CFR 1.10 (e.g., a Saturday filing date), the rule changes do not affect applicant’s concurrent right to defer the filing of an application until the next business day when the last day for “taking any action” falls on a Saturday, Sunday, or federal holiday (e.g., the last day of the 1-year grace period falls on a Saturday).
II. PRE-AIA 35 U.S.C. 102(e)
If the publication or issue date of the reference is too recent for pre-AIA 35 U.S.C. 102(b) to apply, then the examiner should consider pre-AIA 35 U.S.C. 102(e).
Pre-AIA 35 U.S.C. 102(e) allows the use of certain international application publications and U.S. patent application publications, and certain U.S. patents as prior art under pre-AIA 35 U.S.C. 102(e) as of their respective U.S. filing dates, including certain international filing dates. The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. See MPEP § 706.02(f)(1) for examination guidelines on the application of pre-AIA 35 U.S.C. 102(e). References based on international applications that were filed prior to November 29, 2000 are subject to the "pre-AIPA" version of 35 U.S.C. 102(e) in force on November 28, 2000. See subsection III, below and MPEP § 2136.03 for additional information.
In order to apply a reference under pre-AIA 35 U.S.C. 102(e), the inventive entity of the application must be different than that of the reference. Note that, where there are joint inventors, only one inventor needs to be different for the inventive entities to be different and a rejection under pre-AIA 35 U.S.C. 102(e) is applicable even if there are some inventors in common between the application and the reference.
35 U.S.C. 102 (pre-AIA) Conditions for patentability; novelty and loss of right to patent.
*****
(e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or
*****
Pre-AIA 35 U.S.C. 102(e) has two separate clauses, namely, pre-AIA 35 U.S.C. 102(e)(1) for publications of patent applications and pre-AIA 35 U.S.C. 102(e)(2) for U.S. patents. Pre-AIA 35 U.S.C. 102(e)(1), in combination with pre-AIA 35 U.S.C. 374, created a new category of prior art by providing prior art effect for certain publications of patent applications, including certain international applications, as of their effective United States filing dates (which include certain international filing dates). Under pre-AIA 35 U.S.C. 102(e), an international filing date which is on or after November 29, 2000 is the United States filing date if the international application designated the United States and was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. Therefore, the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date (if all three conditions noted above are met) or an earlier U.S. filing date for which priority or benefit is properly claimed.
Publication under PCT Article 21(2) may result from a request for early publication by an applicant of an international application or after the expiration of 18-months after the earliest claimed filing date in an international application. An applicant in an international application that has designated only the U.S. continues to be required to request publication from WIPO as the reservation under PCT Article 64(3) continues to be in effect for such applicants. International applications, which: (1) were filed prior to November 29, 2000, or (2) did not designate the U.S., or (3) were not published in English under PCT Article 21(2) by WIPO, may not be used to reach back (bridge) to an earlier filing date through a priority or benefit claim for prior art purposes under pre-AIA 35 U.S.C. 102(e). An
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international filing date which is on or after November 29, 2000 is a United States filing date for purposes of determining the earliest effective prior art date of a patent if the international application designated the United States and was published in the English language under Article 21(2) by WIPO. No international filing dates prior to November 29, 2000 may be relied upon as a prior art date under pre-AIA 35 U.S.C. 102(e).
III. "PRE-AIPA" 35 U.S.C. 102(e) AS IN FORCE ON NOVEMBER 28, 2000
"Pre-AIPA" 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent (as in force on November 28, 2000).
A person shall be entitled to a patent unless -
*****
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.
*****
Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000. Thus, the pre-AIA 35 U.S.C. 102(e) date of such a prior art patent is the earliest of the date of compliance with 35 U.S.C. 371(c)(1), (2) and (4), or the filing date of the later-filed U.S. continuing application that claimed the benefit of the international application. Publications of international applications filed before November 29, 2000 (which would include WIPO publications and U.S. publications of the national stage (35 U.S.C. 371)) do not have a pre-AIA 35 U.S.C. 102(e) date at all (however, such publications are available as prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of the publication date).
IV. PRE-AIA 35 U.S.C. 102(a)
Even if the reference is prior art under pre-AIA 35 U.S.C. 102(e), the examiner should still consider pre-AIA 35 U.S.C. 102(a) for two reasons. First, if
the reference is a U.S. patent or patent application publication of, or claims benefit of, an international application, the publication of the international application under PCT Article 21(2) may be the earliest prior art date under pre-AIA 35 U.S.C. 102(a) for the disclosure. Second, references that are only prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g) and applied in a rejection under pre-AIA 35 U.S.C. 103(a) are subject to being disqualified under pre-AIA 35 U.S.C. 103(c) if the reference and the application were commonly owned, or subject to an obligation of common assignment, at the time the invention was made. For pre-AIA 35 U.S.C. 102(a) to apply, the reference must have a publication date earlier in time than the effective filing date of the application, and must not be applicant’s own work.
706.02(b) Overcoming a 35 U.S.C. 102 Rejection Based on a Printed Publication or Patent [R-11.2013]
In all applications, an applicant may overcome a 35 U.S.C. 102 rejection by persuasively arguing that the claims are patentably distinguishable from the prior art, or by amending the claims to patentably distinguish over the prior art. Additional ways available to overcome a rejection based on 35 U.S.C. 102 prior art depend on whether or not any claim in the application being examined is subject to the first inventor to file provisions of the AIA.
See MPEP § 706.02(b)(1) for overcoming a rejection under 35 U.S.C. 102(a)(1) or (a)(2). See MPEP § 706.02(b)(2) for overcoming a prior art rejection under pre-AIA 35 U.S.C. 102.
706.02(b)(1) Overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) Rejection Based on a Printed Publication or Patent [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(b)(2) for examination of applications subject to pre-AIA 35 U.S.C. 102.]
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In addition to persuasively arguing that the claims are patentably distinguishable over the prior art or amending the claims to overcome the prior art rejection, a rejection under 35 U.S.C. 102(a)(1) or 102(a)(2) can be overcome by:
(A) Submitting a benefit claim under 35 U.S.C. 120 within the time period set in 37 CFR 1.78 by providing the required reference to a prior application in a corrected application data sheet under 37 CFR 1.76 and by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a), or filing a grantable petition to accept an unintentionally delayed benefit claim under 37 CFR 1.78. See MPEP §§ 211 et seq. and 706.02; or
(B) Submitting a benefit claim under 35 U.S.C. 119(e) within the time period set in 37 CFR 1.78 by providing the required reference to a prior provisional application in a corrected application data sheet under 37 CFR 1.76 and by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) or filing a grantable petition to accept an unintentionally delayed benefit claim under 37 CFR 1.78. See MPEP §§ 211 et seq. and 706.02; or
(C) Submitting a claim to priority under 35 U.S.C. 119(a) - (d) within the time period set in 37 CFR 1.55 by identifying a prior foreign application in a corrected application data sheet under 37 CFR 1.76 and by establishing that the prior foreign application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) or filing a grantable petition to accept a delayed priority claim under 37 CFR 1.55. See MPEP §§ 213 - 216. The foreign priority filing date must antedate the reference and be perfected. The filing date of the priority document is not perfected unless applicant has filed a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(g)); or
(D) Filing an affidavit or declaration under 37 CFR 1.130 to establish that an applied reference or disclosure that was not made more than one year before the effective filing date of the claimed invention is not prior art under 35 U.S.C. 102(a) due to an exception listed in 35 U.S.C. 102(b). Under 37 CFR 1.130(a), an affidavit or declaration of attribution may be submitted to disqualify a
disclosure as prior art because it was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. Under 37 CFR 1.130(b), an affidavit or declaration of prior public disclosure may be submitted to disqualify an intervening disclosure as prior art if the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor (1) before the date the intervening disclosure was made on which the rejection is based, or (2) before the date the subject matter in the U.S. patent, U.S. patent application publication, or WIPO published application on which the rejection is based was effectively filed. See MPEP §§ 717 and 2155; or
(E) Establishing common ownership or establishing evidence of a Joint Research Agreement to overcome a 35 U.S.C. 102(a)(2) rejection or a 35 U.S.C. 103 rejection based on prior art under 35 U.S.C. 102(a)(2) by establishing entitlement to the 35 U.S.C. 102(b)(2)(C) exception. See MPEP §§ 717.02 and 2154.02(c).
706.02(b)(2) Overcoming a Pre-AIA 35 U.S.C. 102(a), (b), or (e) Rejection Based on a Printed Publication or Patent [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(b)(1) for examination of applications subject to 35 U.S.C. 102.]
A rejection based on pre-AIA 35 U.S.C. 102(b) can be overcome by:
(A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
(B) Amending the claims to patentably distinguish over the prior art;
(C) Submitting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78:
(1)
(a) for applications filed on or after September 16, 2012, by filing a corrected application data sheet under 37 CFR 1.76 which contains a
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specific reference to a prior application in accordance with 37 CFR 1.78, or
(b) for applications filed prior to September 16, 2012, by amending the specification of the application to contain a specific reference to a prior application or by filing a corrected application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78, and
(2) by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) (for applications filed on or after September 16, 2012), or 35 U.S.C. 112, first paragraph (for applications filed prior to September 16, 2012) or filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78. See MPEP §§ 211 et seq. and 706.02; or
(D) Submitting a benefit claim under 35 U.S.C. 119(e) by complying with the requirements of 37 CFR 1.78 or filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 (see item (C) above). Because a provisional application could not have been filed more than one year prior to the filing of a nonprovisional application that claims benefit to the provisional application, once the benefit claim under 35 U.S.C. 119(e)) is perfected, the rejection must be reconsidered to determine whether the prior art still qualifies as prior art under pre-AIA 35 U.S.C. 102(b) or whether the prior art qualifies as prior art under pre-AIA 35 U.S.C. 102(a). Note, however, effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e). See MPEP § 213.03, subsection III. If the prior art qualifies as prior art under pre-AIA 35 U.S.C. 102(a), see below as to how to overcome the pre-AIA 35 U.S.C. 102(a) rejection.
A rejection based on pre-AIA 35 U.S.C. 102(e) can be overcome by:
(A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
(B) Amending the claims to patentably distinguish over the prior art;
(C) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.” See MPEP §§ 715.01(a), 715.01(c), and 716.10;
(D) Filing an affidavit or declaration under 37 CFR 1.131(a) showing prior invention, if the reference is not a U.S. patent or a U.S. patent application publication claiming interfering subject matter as defined in 37 CFR 41.203(a) (subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa). See MPEP § 715 for more information on 37 CFR 1.131(a) affidavits. When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration under 37 CFR 1.131(a) is not an acceptable method of overcoming the rejection. Under these circumstances, the examiner must determine whether a double patenting rejection or interference is appropriate. If there is a common assignee or inventor between the application and patent, a double patenting rejection must be made. See MPEP § 804. If there is no common assignee or inventor and the rejection under 35 U.S.C. 102(e) is the only possible rejection, the examiner must determine whether an interference should be declared. See MPEP Chapter 2300 for more information regarding interferences;
(E) Submitting a claim to priority under 35 U.S.C. 119(a) - (d) within the time period set in 37 CFR 1.55:
(1)
(a) for applications filed on or after September 16, 2012, by filing a corrected application data sheet under 37 CFR 1.76 which identifies a prior foreign application in accordance with 37 CFR 1.55, or
(b) for applications filed prior to September 16, 2012, by filing a corrected application data sheet under 37 CFR 1.76 which identifies a prior foreign application in accordance with 37 CFR 1.55 or by identifying the prior foreign application in the oath or declaration under pre-AIA 37 CFR 1.63, and
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(2) by establishing that the prior foreign application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) (for applications filed on or after September 16, 2012), or 35 U.S.C. 112, first paragraph (for applications filed prior to September 16, 2012); or filing a grantable petition to accept an unintentionally delayed priority claim under 37 CFR 1.55. See MPEP §§ 213 - 216. The foreign priority filing date must antedate the reference and be perfected. The filing date of the priority document is not perfected unless applicant has filed a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55).
(F) Submitting a benefit claim under 35 U.S.C. 119(e) or 120, within the time periods set in 37 CFR 1.78:
(1)
(a) for applications filed on or after September 16, 2012, filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78, or
(b) for applications filed prior to September 16, 2012, amending the specification of the application to contain a specific reference to a prior application or by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78, and
(2) establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) (for applications filed on or after September 16, 2012), or 35 U.S.C. 112, first paragraph (for applications filed prior to September 16, 2012) or filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78.
A rejection based on pre-AIA 35 U.S.C. 102(a) can be overcome by:
(A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
(B) Amending the claims to patentably distinguish over the prior art;
(C) Filing an affidavit or declaration under 37 CFR 1.131(a) showing prior invention, if the reference is not a U.S. patent or a U.S. patent application publication claiming interfering subject matter as defined in 37 CFR 41.203(a) (subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa). See MPEP § 715 for information on the requirements of 37 CFR 1.131(a) affidavits. When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration under 37 CFR 1.131(a) is not appropriate to overcome the rejection.
(D) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.” See MPEP §§ 715.01(a), 715.01(c), and 716.10;
(E) Submitting a claim to priority under 35 U.S.C. 119(a) - (d) as explained in reference to pre-AIA 35 U.S.C. 102(e) above;
(F) Submitting a benefit claim under pre-AIA 35 U.S.C. 119(e) or 120 as explained in reference to pre-AIA 35 U.S.C. 102(e).
706.02(c) Rejections Under 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(a) or (b); Knowledge by Others or Public Use or Sale [R-07.2015]
An applicant may make an admission, or submit evidence of sale of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was sold by applicant or known by others.
Note that as an aid to resolving public use or on sale issues, as well as to other related matters of pre-AIA 35 U.S.C. 102(b) activity, an applicant may be required to answer specific questions posed by the examiner and to explain or supplement any evidence of record. See 35 U.S.C. 132 and 37 CFR 1.104(a)(2). Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. The examiner may consider making a requirement for information under 37 CFR 1.105 where the evidence
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of record indicates reasonable necessity. See MPEP § 704.10 et seq.
A 2-month time period should be set by the examiner for any reply to the requirement, unless the requirement is part of an Office action having a shortened statutory period, in which case the period for reply to the Office action will also apply to the requirement. If applicant fails to reply in a timely fashion to a requirement for information, the application will be regarded as abandoned. 35 U.S.C. 133. See MPEP § 2133.03.
If there is not enough information on which to base a public use or on sale rejection, the examiner should make a requirement for more information. Form paragraph 7.104.aia. or 7.104.fti can be used.
¶ 7.104.aia Requirement for Information, Public Use or Sale or Other Public Availability
An issue of public use, on sale activity, or other public availability has been raised in this application. In order for the examiner to properly consider patentability of the claimed invention under 35 U.S.C. 102(a)(1), additional information regarding this issue is required as follows: [1]
Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
3. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. See MPEP § 2133.03.
4. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having a shortened statutory period (SSP), in which case the period for reply will apply also to the requirement.
5. If sufficient evidence already exists to establish a prima facie case of public use, sale, or other public availability use form paragraph 7.16.aia to make a rejection under 35 U.S.C. 102(a)(1). See MPEP § 2133.03.
¶ 7.104.fti Requirement for Information, Public Use or Sale
An issue of public use or on sale activity has been raised in this application. In order for the examiner to properly consider patentability of the claimed invention under pre-AIA 35 U.S.C. 102(b), additional information regarding this issue is required as follows: [1]
Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 –7.126 as appropriate.
2. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. See MPEP § 2133.03.
3. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having an SSP, in which case the SSP will apply also to the requirement.
4. If sufficient evidence already exists to establish a prima facie case of public use or on sale, use form paragraph 7.16.fti to make a rejection under pre-AIA 35 U.S.C. 102(b). See MPEP § 2133.03.
706.02(c)(1) Rejections under 35 U.S.C. 102(a)(1); Public Use or Public Sale [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(c)(2) for the examination of applications not subject to the first inventor to file provisions of the AIA involving public use or public sale.]
Public use and on sale rejections under 35 U.S.C. 102(a)(1) may be based on uses and sales from anywhere in the world. The uses and on sale activities must be “public.” Secret commercial sales should not be applied as “on sale” prior art under 35 U.S.C. 102(a)(1). See MPEP § 2152.02(d). While there is no requirement that the use or sale activity be by another, it should be noted that certain uses or sales are subject to the exceptions in 35 U.S.C. 102(b)(1), e.g., uses or sales by the inventor or a joint inventor (or have originated with the inventor),
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that precede the effective filing date by less than one year. See MPEP § 2154.02.
706.02(c)(2) Rejections under Pre-AIA 35 U.S.C. 102(a) and (b); Public Use or On Sale [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(c)(1) for the examination of applications subject to the first inventor to file provisions of the AIA involving public use or public sale.]
The language “in this country” in pre-AIA 35 U.S.C. 102(a) and (b) means in the United States only and does not include other WTO or NAFTA member countries. In these cases the examiner must determine if pre-AIA 35 U.S.C. 102(a) or pre-AIA 102(b) applies. See MPEP § 2133.03 for a discussion of case law treating the “public use” and “on sale” statutory bars.
If the activity is by an entity other than the inventors or assignee, such as sale by another, manufacture by another or disclosure of the invention by applicant to another then both pre-AIA 35 U.S.C. 102(a) and (b) may be applicable. If the evidence only points to knowledge within the year prior to the effective filing date then pre-AIA 35 U.S.C. 102(a) applies. However, no rejection under pre-AIA 35 U.S.C. 102(a) should be made if there is evidence that applicant made the invention and only disclosed it to others within the year prior to the effective filing date.
Pre-AIA 35 U.S.C. 102(b) is applicable if the activity occurred more than 1 year prior to the effective filing date of the application. See MPEP § 2133.03 for a discussion of “on sale” and “public use” bars under pre-AIA 35 U.S.C. 102(b).
706.02(d) Rejections Under Pre-AIA 35 U.S.C. 102(c) [R-08.2012]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first
inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159.]
Under pre-AIA 35 U.S.C. 102(c), abandonment of the “invention” (as distinguished from abandonment of an application) results in loss of right to a patent. See MPEP § 2134 for case law which sets forth the criteria for abandonment under pre-AIA 35 U.S.C. 102(c).
706.02(e) Rejections Under Pre-AIA 35 U.S.C. 102(d) [R-08.2012]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159.]
Pre-AIA 35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a statutory bar against the granting of a patent in this country:
(A) The foreign application must be filed more than 12 months before the effective filing date of the United States application. See MPEP § 706.02 regarding determination of the effective filing date of the application.
(B) The foreign and United States applications must be filed by the same applicant, his or her legal representatives or assigns.
(C) The foreign application must have actually issued as a patent or inventor’s certificate (e.g., granted by sealing of the papers in Great Britain) before the filing in the United States. It need not be published but the patent rights granted must be enforceable.
(D) The same invention must be involved.
If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory bar.
See MPEP § 2135.01 for case law which further clarifies each of the four requirements of pre-AIA 35 U.S.C. 102(d).
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§ 706.02(e)EXAMINATION OF APPLICATIONS
SEARCHING FOR PRE-AIA 35 U.S.C. 102(d) PRIOR ART
The examiner should only undertake a search for an issued foreign patent for use as pre-AIA 35 U.S.C. 102(d) prior art if there is a reasonable possibility that a foreign patent covering the same subject matter as the U.S. application has been granted to the same inventive entity before the U.S. effective filing date, i.e., the time period between foreign and U.S. filings is greater than the usual time it takes for a patent to issue in the foreign country. Normally, the probability of the inventor’s foreign patent issuing before the U.S. filing date is so slight as to make such a search unproductive. However, it should be kept in mind that the average pendency varies greatly between foreign countries. In Belgium, for instance, a patent may be granted in just a month after its filing, while in Japan the patent may not issue for several years.
The search for a granted patent can be accomplished on an electronic database either by the examiner or by the staff of the Scientific and Technical Information Center. See MPEP § 901.06(a), subsection IV.B., for more information on online searching. The document must be a patent or inventor’s certificate and not merely a published or laid open application.
706.02(f) Rejection Under Pre-AIA 35 U.S.C. 102(e) [R-08.2012]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 2154 et seq. for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, rejections based on U.S. patent documents.]
Pre-AIA 35 U.S.C. 102(e), in part, allows for certain prior art (i.e., U.S. patents, U.S. patent application publications and WIPO publications of international applications) to be applied against the claims as of its effective U.S. filing date. This provision of pre-AIA 35 U.S.C. 102 is mostly utilized when the publication or issue date is too recent for the reference to be applied under pre-AIA 35 U.S.C.
102(a) or pre-AIA 35 U.S.C. 102(b). In order to apply a reference under pre-AIA 35 U.S.C. 102(e), the inventive entity of the application must be different than that of the reference. Note that, where there are joint inventors, only one inventor needs to be different for the inventive entities to be different and a rejection under pre-AIA 35 U.S.C. 102(e) is applicable even if there are some inventors in common between the application and the reference.
706.02(f)(1) Examination Guidelines for Applying References Under Pre-AIA 35 U.S.C. 102(e) [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 2154 et seq. for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, rejections based on U.S. patent documents.]
I. DETERMINE THE APPROPRIATE PRE-AIA 35 U.S.C. 102(e) DATE FOR EACH POTENTIAL REFERENCE BY FOLLOWINGTHE GUIDELINES, EXAMPLES, AND FLOW CHARTS SET FORTH BELOW:
(A) The potential reference must be a U.S. patent, a U.S. application publication (35 U.S.C. 122(b)) or a WIPO publication of an international application under PCT Article 21(2) in order to apply the reference under pre-AIA 35 U.S.C. 102(e).
(B) Determine if the potential reference resulted from, or claimed the benefit of, an international application. If the reference does, go to step (C) below. The 35 U.S.C. 102(e) date of a reference that did not result from, nor claimed the benefit of, an international application is its earliest effective U.S. filing date, taking into consideration any proper benefit claims to prior U.S. applications under 35 U.S.C. 119(e) or 120 if the prior application(s) properly supports the subject matter used to make the rejection in compliance with 35 U.S.C. 112, first paragraph. See MPEP § 2136.02.
(C) If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined:
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(1) If the international application meets the following three conditions:
(a) an international filing date on or after November 29, 2000;
(b) designated the United States; and
(c) published under PCT Article 21(2) in English,
then the international filing date is a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e). If such an international application properly claims benefit to an earlier-filed U.S. or international application, or to an earlier-filed U.S. provisional application, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the earlier filing date, assuming all the conditions of pre-AIA 35 U.S.C. 102(e), 119(e), 120, 365(c), or 386(c) are met. The subject matter used in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112, first paragraph, in order for that subject matter to be entitled to the earlier filing date under pre-AIA 35 U.S.C. 102(e). Note, where the earlier application is an international application, the earlier international application must satisfy the same three conditions (i.e., filed on or after November 29, 2000, designated the U.S., and had been published in English under PCT Article 21(2)) for the earlier international filing date to be a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
(2) If the international application was filed on or after November 29, 2000, but did not designate the United States or was not published in English under PCT Article 21(2), do not treat the international filing date as a U.S. filing date for prior art purposes. In this situation, do not apply the reference as of its international filing date, its date of completion of the 35 U.S.C. 371(c)(1), (2) and (4) requirements, or any earlier filing date to which such an international application claims benefit or priority. The reference may be applied under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b) as of its publication date, or pre-AIA 35 U.S.C. 102(e) as of any later U.S. filing date of an application that properly claimed the benefit of the international application (if applicable).
(3) If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of pre-AIA
35 U.S.C. 102 and 374, prior to the AIPA amendments:
(a) For U.S. patents, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later-filed U.S. application that claimed the benefit of the international application;
(b) For U.S. application publications and WIPO publications directly resulting from international applications under PCT Article 21(2), never apply these references under pre-AIA 35 U.S.C. 102(e). These references may be applied as of their publication dates under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b);
(c) For U.S. application publications of applications that claim the benefit under 35 U.S.C. 120 or 365(c) of an international application filed prior to November 29, 2000, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the actual filing date of the later-filed U.S. application that claimed the benefit of the international application.
(4) Examiners should be aware that although a publication of, or a U.S. Patent issued from, an international application may not have a pre-AIA 35 U.S.C. 102(e) date at all, or may have a pre-AIA 35 U.S.C. 102(e) date that is after the effective filing date of the application being examined (so it is not “prior art”), the corresponding WIPO publication of an international application may have an earlier pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b)) date.
(D) Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)-(d), (f), or 365(a) or (b)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a) or (b).
II. EXAMPLES
In order to illustrate the prior art dates of U.S. and WIPO publications of patent applications and U.S. patents under pre-AIA 35 U.S.C. 102(e), nine examples are presented below. The examples only cover the most common factual situations that might be encountered when determining the pre-AIA
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35 U.S.C. 102(e) date of a reference. Examples 1 and 2 involve only U.S. application publications and U.S. patents. Example 3 involves a priority claim to a foreign patent application. Examples 4-9 involve international applications. The time lines in the examples below show the history of the prior art references that could be applied against the claims of the application under examination, or the patent under reexamination.
The examples only show the information necessary to determine a prior art date under pre-AIA 35 U.S.C. 102(e). Also, the dates in the examples below are arbitrarily used and are presented for illustrative purposes only. Therefore, correlation of patent grant dates with Tuesdays or application publication dates with Thursdays may not be portrayed in the examples. All references to 35 U.S.C. 102 in the examples and flowcharts below are to the version of 35 U.S.C. 102 in effect on March 15, 2013 (the pre-AIA version).
Example 1: Reference Publication and Patent of 35 U.S.C. 111(a) Application with no Priority/Benefit Claims. For reference publications and patents of patent applications filed under 35 U.S.C. 111(a) with no claim for the benefit of, or priority to, a prior application, the prior art dates under pre-AIA 35 U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. Thus, a publication and patent of a 35 U.S.C. 111(a) application, which does not claim any benefit under either 35 U.S.C. 119(e), 120, 365(c) or 386(c), would be accorded the application’s actual filing date as its prior art date under pre-AIA 35 U.S.C. 102(e).
The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication is 08 Dec. 2000. The pre-AIA 35 U.S.C. 102(e)(2) date for the Patent is: 08 Dec.
2000.
Example 2: Reference Publication and Patent of 35 U.S.C. 111(a) Application with a Benefit Claim to a Prior U.S. Provisional or Nonprovisional Application. For reference publications and patents of patent applications filed under 35 U.S.C. 111(a), the prior art dates under pre-AIA 35 U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. Thus, a publication and patent of a 35 U.S.C. 111(a) application, which claims benefit under 35 U.S.C. 119(e) to a prior U.S. provisional application or claims the benefit under 35 U.S.C. 120 of a prior nonprovisional application, would be accorded the earlier filing date as its prior art date under pre-AIA 35 U.S.C. 102(e), assuming the earlier-filed application has proper support for the subject matter as required by 35 U.S.C. 119(e) or 120.
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The 35 U.S.C. 102(e)(1) date for the Publication is: 01 Jan. 2000. The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2000.
Example 3: Reference Publication and Patent of 35 U.S.C. 111(a) Application with 35 U.S.C. 119(a)-(d) Priority Claim to a Prior Foreign Application. For reference publications and patents of patent applications filed under 35 U.S.C. 111(a), the prior art dates under pre-AIA 35 U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. No benefit of the filing date of the foreign application is given under pre-AIA 35 U.S.C. 102(e) for prior art purposes ( In re Hilmer, 149 USPQ 480 (CCPA 1966)). Thus, a publication and patent of a 35 U.S.C. 111(a) application, which claims priority under 35 U.S.C. 119(a)-(d) to a prior foreign-filed application (or under 35 U.S.C. 365(a) to an international application), would be accorded its U.S. filing date as its prior art date under pre-AIA 35 U.S.C. 102(e). In the example below, it is assumed that the earlier-filed U.S. application has proper support for the subject matter of the later-filed U.S. application as required by 35 U.S.C. 120.
The 35 U.S.C. 102(e)(1) date for the Publication is: 21 June 1999. The 35 U.S.C. 102(e)(2) date for the Patent is: 21 June 1999.
Example 4: References based on the national stage (35 U.S.C. 371) of an International Application filed on or after November 29, 2000 and which was published in English under PCT Article 21(2).
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All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an international application (IA) that was filed on or after November 29, 2000, designated the U.S., and was published in English under PCT Article 21(2) by WIPO have the 35 U.S.C. 102(e) prior art date of the international filing date or earlier effective U.S. filing date. No benefit of the international filing date (or of any U.S. filing dates prior to the IA), however, is given for pre-AIA 35 U.S.C. 102(e) prior art purposes if the IA was published under PCT Article 21(2) in a language other than English.
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Jan. 2001. The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Jan. 2001. The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan.
2001.
Additional Benefit Claims: If a later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of the IA in the example above, the pre-AIA 35 U.S.C. 102(e) date of the patent or publication of the later-filed U.S. application would be the international filing date, assuming the earlier-filed IA has proper support for the subject matter relied upon as required by 35 U.S.C. 120. If the IA properly claimed the benefit of an earlier-filed U.S. provisional (35 U.S.C. 111(b)) application or the benefit of an earlier-filed U.S. nonprovisional (35 U.S.C. 111(a)) application, the pre-AIA 35 U.S.C. 102(e) date for all the references would be the filing date of the earlier-filed U.S. application, assuming the earlier-filed application has proper support for the subject matter relied upon as required by 35 U.S.C. 119(e) or 120.
Example 5: References based on the national stage (35 U.S.C. 371) of an International Application filed on or after November 29, 2000 and which was not published in English under PCT Article 21(2). All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an international application (IA) that was filed on or after November 29, 2000, but was not published in English under PCT Article 21(2) have no 35 U.S.C. 102(e) prior art date at all. According to pre-AIA 35 U.S.C. 102(e), no benefit of the international filing date (or of any U.S. filing dates prior to the IA) is given for pre-AIA 35 U.S.C. 102(e) prior art purposes if the IA was published under PCT Article 21(2) in a language other than English, regardless of whether the international application entered the national stage. Such references may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication dates, but never under pre-AIA 35 U.S.C. 102(e).
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The pre-AIA 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None. The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None. The pre-AIA 35 U.S.C. 102(e)(2) date for the Patent
is: None.
The IA publication by WIPO can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date (01 July 2002). Additional Benefit Claims: If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no pre-AIA 35 U.S.C. 102(e) date for all the references. If a later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of the IA in the example above, the pre-AIA 35 U.S.C. 102(e) date of the patent or publication of the later-filed U.S. application would be the actual filing date of the later-filed U.S. application.
Example 6: References based on the national stage ( 35 U.S.C. 371 ) of an International Application filed prior to November 29, 2000 (language of the publication under PCT Article 21(2) is not relevant). The reference U.S. patent issued from an international application (IA) that was filed prior to November 29, 2000, has a pre-AIA 35 U.S.C. 102(e) prior art date of the date of fulfillment of the requirements of 35 U.S.C. 371(c)(1), (2) and (4). This is the former pre-AIPA 35 U.S.C. 102(e). The application publications, both the WIPO publication and the U.S. publication, published from an international application that was filed prior to November 29, 2000, do not have any pre-AIA 35 U.S.C. 102(e) prior art date. According to the effective date provisions as amended by Public Law 107-273, the amendments to pre-AIA 35 U.S.C. 102(e) and 374 are not applicable to international applications having international filing dates prior to November 29, 2000. The application publications can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication dates.
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The pre-AIA 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None. The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None. The pre-AIA 35 U.S.C. 102(e) date for the Patent is:
01 July 2002.
The IA publication by WIPO can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date (01 July 2001). Additional Benefit Claims: If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no pre-AIA 35 U.S.C. 102(e)(1) date for the U.S. and WIPO application publications, and the pre-AIA 35 U.S.C. 102(e) date for the patent will still be 01 July 2002 (the date of fulfillment of the requirements under 35 U.S.C. 371(c)(1), (2) and (4)). If a later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of the IA in the example above, the pre-AIA 35 U.S.C. 102(e)(1) date of the application publication of the later-filed U.S. application would be the actual filing date of the later-filed U.S. application, and the pre-AIA 35 U.S.C. 102(e) date of the patent of the later-filed U.S. application would be 01 July 2002 (the date that the earlier-filed IA fulfilled the requirements of 35 U.S.C. 371(c)(1), (2) and (4)). If the patent was based on a later-filed U.S. application that claimed the benefit of the international application and the later filed U.S. application’s filing date is before the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled (if fulfilled at all), the pre-AIA 35 U.S.C. 102(e) date of the patent would be the filing date of the later-filed U.S. application that claimed the benefit of the international application.
Example 7: References based on a 35 U.S.C. 111(a) Application which is a Continuation of an International Application, which was filed on or after November 29, 2000, designated the U.S. and was published in English under PCT Article 21(2). All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of or claiming the benefit of, an international application (IA) that was filed on or after November 29, 2000, designated the U.S., and was published in English under PCT Article 21(2) have the pre-AIA 35 U.S.C. 102(e) prior art date of the international filing date or earlier effective U.S. filing date. No benefit of the international filing date (or of any U.S. filing dates prior to the IA), however, is given for pre-AIA 35 U.S.C. 102(e) purposes if the IA was published under PCT Article 21(2) by WIPO in a language other than English. In the example below, it is assumed that the earlier-filed IA has proper support for the subject matter of the later-filed U.S. application as required by 35 U.S.C. 120 and 365(c).
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The pre-AIA35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Mar. 2001. The pre-AIA 35 U.S.C. 102(e)(1) date for the
Publication by USPTO is: 01 Mar. 2001. The pre-AIA 35 U.S.C. 102(e)(2) date for the Patent is: 01 Mar. 2001.
Additional Benefit Claims: If the IA properly claimed the benefit of an earlier-filed U.S. provisional (35 U.S.C. 111(b)) application or the benefit of an earlier-filed U.S. nonprovisional (35 U.S.C. 111(a)) application, the pre-AIA 35 U.S.C. 102(e) date for all the references would be the filing date of the earlier-filed U.S. application, assuming the earlier-filed application has proper support for the subject matter relied upon as required by 35 U.S.C. 119(e) or 120. If a second, later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of the 35 U.S.C. 111(a) application in the example above, the pre-AIA 35 U.S.C. 102(e) date of the patent or publication of the second, later-filed U.S. application would still be the international filing date of the IA, assuming the earlier-filed IA has proper support for the subject matter relied upon as required by 35 U.S.C. 120 and 365(c).
Example 8: References based on a 35 U.S.C. 111(a) Application which is a Continuation of an International Application, which was filed on or after November 29, 2000 and was not published in English under PCT Article 21(2). Both the U.S. publication and the U.S. patent of the 35 U.S.C. 111(a) continuation of an international application (IA) that was filed on or after November 29, 2000 but not published in English under PCT Article 21(2) have the pre-AIA 35 U.S.C. 102(e) prior art date of the actual U.S. filing date of the 35 U.S.C. 111(a) application. No benefit of the international filing date (or of any U.S. filing dates prior to the IA) is given for pre-AIA 35 U.S.C. 102(e) purposes since the IA was published under PCT Article 21(2) in a language other than English. The IA publication under PCT Article 21(2) does not have a prior art date under pre-AIA 35 U.S.C. 102(e)(1) because the IA was not published in English under PCT Article 21(2). The IA publication under PCT Article 21(2) can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date.
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The pre-AIA 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None. The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 May 2003. The pre-AIA 35 U.S.C. 102(e)(2) date for
the Patent is: 01 May 2003
The IA publication by WIPO can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date (01 Sept 2002). Additional Benefit Claims: If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no pre-AIA 35 U.S.C. 102(e)(1) date for the IA publication by WIPO, and the U.S. patent application publication and patent would still have a pre-AIA 35 U.S.C. 102(e) date of the actual filing date of the later-filed 35 U.S.C. 111(a) application in the example above (01 May 2003). If a second, later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of the 35 U.S.C. 111(a) application in the example above, the pre-AIA 35 U.S.C. 102(e) date of the patent or publication of the second, later-filed U.S. application would still be the actual filing date of the 35 U.S.C. 111(a) application in the example above (01 May 2003).
Example 9: References based on a 35 U.S.C. 111(a) Application which is a Continuation (filed prior to any entry of the national stage) of an International Application, which was filed prior to November 29, 2000 (language of the publication under PCT Article 21(2) is not relevant). Both the U.S. publication and the U.S. patent of the 35 U.S.C. 111(a) continuation (filed prior to any entry of the national stage) of an international application (IA) that was filed prior to November 29, 2000, have the pre-AIA 35 U.S.C. 102(e) prior art date of their actual U.S. filing date under 35 U.S.C. 111(a). No benefit of the international filing date (or of any U.S. filing dates prior to the IA) is given for pre-AIA 35 U.S.C. 102(e) prior art purposes since the IA was filed prior to November 29, 2000. The IA publication under PCT Article 21(2) does not have a prior art date under pre-AIA 35 U.S.C. 102(e)(1) because the IA was filed prior to November 29, 2000. The IA publication under PCT Article 21(2) can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date.
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The pre-AIA 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None. The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Dec. 2000. The pre-AIA 35 U.S.C. 102(e)(2) date for
the Patent is: 01 Dec. 2000.
The IA publication by WIPO can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date (01 Sept 2000). Additional Benefit Claims: If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no pre-AIA 35 U.S.C. 102(e)(1) date for the IA publication by WIPO, and the U.S. application publication and patent would still have a pre-AIA 35 U.S.C. 102(e) date of the actual filing date of the later-filed 35 U.S.C. 111(a) application in the example above (01 Dec 2000). If a second, later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of the 35 U.S.C. 111(a) application in the example above, the pre-AIA 35 U.S.C. 102(e) date of the patent or publication of the second, later-filed U.S. application would still be the actual filing date of the 35 U.S.C. 111(a) application in the example above (01 Dec 2000).
III. FLOWCHARTS
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706.02(f)(2) Provisional Rejections Under 35 U.S.C. 102(a)(2) or Pre-AIA 35 U.S.C. 102(e); Reference Is a Copending U.S. Patent Application [R-07.2015]
If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) of the later filed application can be made. In addition, a provisional rejection under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) may be made, in the circumstances described below, if the earlier filed, pending application has been published as redacted (37 CFR 1.217) and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application.
I. COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON INVENTOR OR ARE COMMONLY ASSIGNED
If (1) at least one common inventor exists between the applications or the applications are commonly assigned and (2) the effective filing dates are different, then a provisional rejection of the later filed application should be made. The provisional rejection is appropriate in circumstances where if the earlier filed application is published or becomes a patent it would constitute actual prior art under 35 U.S.C. 102. Since the earlier-filed application is not published at the time of the rejection, the rejection must be provisionally made under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e).
A provisional rejection under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) can be overcome in the same manner that a 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) rejection can be overcome. See MPEP § 706.02(b). The provisional rejection can also be overcome by abandoning the applications and filing a new application containing the subject matter of both.
Form paragraph 7.15.01.aia should be used when making a provisional rejection under 35 U.S.C. 102(a)(2). Form paragraph 7.15.01.fti should be used
when making a provisional rejection under pre-AIA 35 U.S.C. 102(e).
¶ 7.15.01.aia Provisional Rejection, 35 U.S.C. 102(a)(2) - Common Assignee, Common Applicant, or At Least One Common Joint Inventor
Claim(s) [1] is/are provisionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.
Based upon the earlier effective filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(a)(2), if published under 35 U.S.C. 122(b) or patented under 35 U.S.C. 151. This provisional rejection under 35 U.S.C. 102(a)(2) is based upon a presumption of future publication or patenting of the copending application. [4].
This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph is used to provisionally reject over a copending application with an earlier effective filing date that discloses the claimed invention and has not been published under 35 U.S.C. 122. The copending application must have either a common assignee, common applicant (35 U.S.C. 118) or at least one common joint inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
a. a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the application;
b. a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the application; or
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c. a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the application. If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) issued or was published before the effective filing date of the application under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
4. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.aia.
5. In bracket 1, insert claim number(s) under rejection.
6. In bracket 2, insert the application number.
7. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
8. In bracket 4, provide an appropriate explanation of the examiner’s position on anticipation.
9. If the claims of the copending application are directed to the same invention as the claims of the instant application, a provisional double patenting rejection should also be made using form paragraphs 8.30 and 8.32.
10. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 102(e) - Common Assignee, Common Applicant, or At Least One Common Joint Inventor
Claim(s) [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.
Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e), if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future publication or patenting of the copending application. [4].
This provisional rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention “by another,” or by an appropriate showing under 37 CFR 1.131(a).
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph is used to provisionally reject over a copending application with an earlier filing date that discloses the claimed invention which has not been published under 35 U.S.C. 122. The copending application must have either a
common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor.
2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) to determine the copending application’s prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti). See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
3. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.fti.
4. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
5. In bracket 4, an appropriate explanation may be provided in support of the examiner’s position on anticipation, if necessary.
6. If the claims of the copending application are directed to the same invention as the claims of the instant application, a provisional double patenting rejection should also be made using form paragraphs 8.30 and 8.32.
7. If evidence is additionally of record to show that either invention is prior art to the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection using form paragraphs 7.13.fti and/or 7.14.fti should also be made.
8. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
II. COPENDING APPLICATIONS HAVING NO COMMON INVENTOR OR ASSIGNEE
If there is no common assignee or common inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the earlier filed, unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e). For applications subject to pre-AIA 35 U.S.C. 102(g), if the filing dates of the applications are within 6 months of each
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other (3 months for simple subject matter) then interference may be proper. See MPEP Chapter 2300. If the application with the earliest effective U.S. filing date will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met. After the patent is published, it may be used as a reference in a rejection under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) in the still pending application as appropriate. See MPEP §§ 706.02(a), 2136 et seq. and 2154.
706.02(g) Rejections Under Pre-AIA 35 U.S.C. 102(f) [R-08.2012]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.03(a), subsection IV, for rejections based on improper naming of the inventor in applications subject to the first inventor to file provisions of the AIA.]
Pre-AIA 35 U.S.C. 102(f) bars the issuance of a patent where an applicant did not invent the subject matter being claimed and sought to be patented. See also 35 U.S.C. 101, which requires that whoever invents or discovers is the party who may obtain a patent for the particular invention or discovery. The examiner must presume the applicants are the proper inventors unless there is proof that another made the invention and that applicant derived the invention from the true inventor.
See MPEP §§ 2137 - 2137.02 for more information on the substantive requirements of rejections under pre-AIA 35 U.S.C. 102(f).
706.02(h) Rejections Under Pre-AIA 35 U.S.C. 102(g) [R-08.2012]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA except in limited circumstances as explained in 35 U.S.C. 100 (note) and MPEP § 2159.]
Pre-AIA 35 U.S.C. 102(g) bars the issuance of a patent where another made the invention in the United States before applicant and had not abandoned, suppressed, or concealed it. This section of pre-AIA 35 U.S.C. 102 forms a basis for interference practice. See MPEP Chapter 2300 for more information on interference procedure. See MPEP §§ 2138 - 2138.06 for more information on the requirements of pre-AIA 35 U.S.C. 102(g).
706.02(i) Form Paragraphs for Use in Rejections Under 35 U.S.C. 102 [R-07.2015]
The following form paragraphs should be used in making the appropriate rejections.
Note that the particular part of the reference relied upon to support the rejection should be identified.
¶ 7.06 Notice re prior art available under both pre-AIA and AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Examiner Note:
1. This form paragraph must be used in all Office Actions when a prior art rejection is made in an application with an actual filing date on or after March 16, 2013, that claims priority to, or the benefit of, an application filed before March 16, 2013.
2. This form paragraph should only be used ONCE in an Office action.
¶ 7.07.aia Statement of Statutory Basis, 35 U.S.C. 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless—
Examiner Note:
1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use form paragraph 7.103.
2. Form paragraphs 7.07.aia, 7.08.aia, 7.12.aia and 7.14.aia are to be used ONLY ONCE in a given Office action.
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3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.07.fti Statement of Statutory Basis, pre-AIA 35 U.S.C. 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless—
Examiner Note:
1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use form paragraph 7.103.
2. Form paragraphs 7.07.fti to 7.14.fti are to be used ONLY ONCE in a given Office action.
3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.08.aia 102(a)(1), Activity Before the Effective Filing Date of Claimed Invention
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act.
2. This form paragraph must be preceded by form paragraphs 7.03.aia and 7.07.aia.
¶ 7.08.fti Pre-AIA 102(a), Activity by Another Before Invention by Applicant
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.fti.
¶ 7.09.fti Pre-AIA 102(b), Activity More Than One Year Prior to Filing
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on
sale in this country, more than one year prior to the date of application for patent in the United States.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by form paragraph 7.08.fti.
¶ 7.10.fti Pre-AIA 102(c), Invention Abandoned
(c) he has abandoned the invention.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti and 7.09.fti.
¶ 7.11.fti Pre-AIA 102(d), Foreign Patenting
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.10.fti.
¶ 7.12.aia 102(a)(2), U.S. Patent, U.S. Patent Application Publication or WIPO Published Application That Names Another Inventor and Has an Earlier Effectively Filed Date
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act.
2. This form paragraph must be preceded by form paragraphs 7.03.aia and 7.07.aia and may be preceded by 7.08.aia.
3. This form paragraph should only be used if the reference is one of the following:
(a) a U.S. patent granted under 35 U.S.C. 151 having an effectively filed date earlier than the application;
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(b) a U.S. Patent Application Publication published under 35 U.S.C. 122(b) having an effectively filed date earlier than the application; or
(c) a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the application.
If any of these three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claims under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
¶ 7.12.fti Pre-AIA 35 U.S.C 102(e), Patent Application Publication or Patent to Another with Earlier Filing Date, in view of the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Examiner Note:
1. This form paragraph should only be used if the reference is one of the following:
(a) a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
(b) a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (i.e., a PCT application) if the international application has an international filing date on or after November 29, 2000;
(c) a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
2. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). Do NOT consider foreign priority claims under 35 U.S.C. 119(a) - (d), 365(a) or (b), or 386(a) or (b).
3. In order to rely on an international filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e), the international application (PCT) must have been filed on or after November 29, 2000, it must have designated the U.S., and the international publication under PCT Article 21(2) by WIPO must have been
in English. If any one of the conditions is not met, the international filing date is not a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
4. If an international application (PCT) was published by WIPO in a language other than English, or did not designate the U.S., the international application’s publication by WIPO, the U.S. publication of the national stage application (35 U.S.C. 371) of the international application and a U.S. patent issued from the national stage of the international application may not be applied as a reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
5. If an international application (PCT) was published by WIPO in a language other than English, the U.S. publication of, or a U.S. patent issued from, a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to such an international application, has a pre-AIA 35 U.S.C. 102(e) date as of the earliest U.S. filing date after the international filing date.
6. If the reference is a U.S. patent issued directly, or indirectly, from an international application (PCT) that has an international filing date prior to November 29, 2000, use form paragraph 7.12.01.fti. In that situation, pre-AIPA 35 U.S.C. 102(e) is applicable in the determination of the prior art date of the patent issued from such an international application.
7. If the reference is a publication of an international application (PCT), including the U.S. publication of a national stage (35 U.S.C. 371), that has an international filing date prior to November 29, 2000, do not use this form paragraph. Such a reference may not be applied as a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
8. This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.11.fti.
¶ 7.12.01.fti Pre-AIPA 35 U.S.C. 102(e), Patent to Another with Earlier Filing Date, Reference is a U.S. Patent Issued Directly or Indirectly From a National Stage of, or a ContinuingApplication Claiming Benefit to, an International Application Having an International Filing Date Prior to November 29, 2000
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.
The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed
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before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)).
Examiner Note:
1. This form paragraph should only be used if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit to an international application having an international filing date prior to November 29, 2000.
2. If the reference is a U.S. patent issued directly from a national stage of such an international application, the reference’s pre-AIPA 35 U.S.C. 102(e) date is the date that the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. The language of WIPO publication (PCT) is not relevant in this situation. Caution: the international publication of the international application (PCT) by WIPO may have an earlier prior art date under pre-AIA 35 U.S.C. 102(a) or pre-AIA 102(b).
3. If the reference is a U.S. patent issued directly from a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to such an international application (which had not entered the national stage prior to the continuing application’s filing date, otherwise see note 4), the prior art reference’s pre-AIPA 35 U.S.C. 102(e) date is the actual U.S. filing date of the continuing application. Caution: the international publication of the international application (PCT) by WIPO may have an earlier prior art date under pre-AIA 35 U.S.C. 102(a) or pre-AIA 102(b).
4. In determining the pre-AIPA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) only if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application. Do NOT consider foreign priority claims under 35 U.S.C. 119(a)-(d), 365(a) or (b), or 386(a) or (b).
5. This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.11.fti.
¶ 7.13.fti Pre-AIA 102(f), Applicant Not the Inventor
(f) he did not himself invent the subject matter sought to be patented.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.12.fti.
¶ 7.14.aia Pre-AIA 102(g), Priority of Invention
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.aia.
¶ 7.14.fti Pre-AIA 102(g), Priority of Invention
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.13.fti.
¶ 7.15.aia Rejection, 35 U.S.C. 102(a)(1)/102(a)(2)
Claim(s) [1] is/are rejected under 35 U.S.C. 102 [2] as being [3] by [4].
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Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. In bracket 1, insert the claim numbers which are under rejection.
3. In bracket 2, insert either “(a)(1)” or “(a)(2)” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia, 7.15.02.aia or 7.15.03.aia where applicable.
4. In bracket 3, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
5. In bracket 4, insert the prior art relied upon.
6. This rejection must be preceded either by form paragraph 7.07.aia and form paragraphs 7.08.aia, and 7.12.aia as appropriate, or by form paragraph 7.103.
7. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.fti Rejection, Pre-AIA 35 U.S.C. 102(a), (b) Patent or Publication, and (g)
Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102 [2] as being [3] by [4].
Examiner Note:
1. In bracket 2, insert the appropriate paragraph letter or letters of pre-AIA 35 U.S.C. 102 in parentheses. If paragraph (e) of pre-AIA 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.
2. In bracket 3, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
3. In bracket 4, insert the prior art relied upon.
4. This rejection must be preceded either by form paragraph 7.07.fti and form paragraphs 7.08.fti, 7.09.fti, and 7.14.fti as appropriate, or by form paragraph 7.103.
5. If pre-AIA 35 U.S.C. 102(e) is also being applied, this form paragraph must be followed by either form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.
6. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.01.aia Provisional Rejection, 35 U.S.C. 102(a)(2) - Common Assignee, Common Applicant, or At Least One Common Joint Inventor
Claim(s) [1] is/are provisionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.
Based upon the earlier effective filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(a)(2), if published under 35 U.S.C. 122(b) or patented under 35 U.S.C. 151. This provisional rejection under 35 U.S.C. 102(a)(2) is based upon a presumption of future publication or patenting of the copending application. [4].
This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph is used to provisionally reject over a copending application with an earlier effective filing date that discloses the claimed invention and has not been published under 35 U.S.C. 122. The copending application must have either a common assignee, common applicant (35 U.S.C. 118) or at least one common joint inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
a. a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the application;
b. a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the application; or
c. a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the application. If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) issued or was published before the effective filing date of the application under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
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4. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.aia.
5. In bracket 1, insert claim number(s) under rejection.
6. In bracket 2, insert the application number.
7. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
8. In bracket 4, provide an appropriate explanation of the examiner’s position on anticipation.
9. If the claims of the copending application are directed to the same invention as the claims of the instant application, a provisional double patenting rejection should also be made using form paragraphs 8.30 and 8.32.
10. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 102(e) - Common Assignee, Common Applicant, or At Least One Common Joint Inventor
Claim(s) [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.
Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e), if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future publication or patenting of the copending application. [4].
This provisional rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention “by another,” or by an appropriate showing under 37 CFR 1.131(a).
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph is used to provisionally reject over a copending application with an earlier filing date that discloses the claimed invention which has not been published under 35 U.S.C. 122. The copending application must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor.
2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) to determine the copending application’s prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the
copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti). See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
3. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.fti.
4. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
5. In bracket 4, an appropriate explanation may be provided in support of the examiner’s position on anticipation, if necessary.
6. If the claims of the copending application are directed to the same invention as the claims of the instant application, a provisional double patenting rejection should also be made using form paragraphs 8.30 and 8.32.
7. If evidence is additionally of record to show that either invention is prior art to the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection using form paragraphs 7.13.fti and/or 7.14.fti should also be made.
8. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.02.aia Rejection, 35 U.S.C. 102(a)(2), Common Assignee, Applicant, or Joint Inventor(s)
Claim(s) [1] is/are rejected under 35 U.S.C. 102(a)(2) as being [2] by [3].
The applied reference has a common [4] with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the
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Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph is used to reject claims under 35 U.S.C. 102(a)(2) over a U.S. patent, U.S. patent application publication, or WIPO publication with an earlier effectively filed date. These references must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
a. a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the effective filing date of the claimed invention;
b. a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
c. a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.
If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
4. In bracket 1, insert the claim numbers which are under rejection.
5. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
6. In bracket 3, insert the prior art relied upon.
7. In bracket 4, insert --assignee--, --applicant--, or --joint inventor--.
8. This form paragraph must be preceded by form paragraph 7.12.aia.
9. If the claims of the copending application are directed to the same invention as the claims of the instant application, a provisional double patenting rejection should also be made using form paragraphs 8.30 and 8.32, and applicant should be required to amend or cancel patentably indistinct claims using form paragraph 8.27.aia.
10. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.02.fti Rejection, Pre-AIA 35 U.S.C. 102(e), Common Assignee, Applicant, or Joint Inventor
Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by [2].
The applied reference has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e). This rejection under pre-AIA 35 U.S.C. 102(e) might
be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or if the same invention is not being claimed, by an appropriate showing under 37 CFR 1.131(a).
Examiner Note:
1. This form paragraph is used to reject over a patent or patent application publication with an earlier effective filing date. The patent or patent application publication must have either a common assignee, a common applicant (35 U.S.C. 118), or a common joint inventor.
2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) must be applied if the reference is by another and is one of the following:
a. a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
b. a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
c. a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.
3. Pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) - (d), 365(a) or (b), or 386(a) or (b).
5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO PCT publication, that has an international filing date prior to November 29, 2000,
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did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. This form paragraph must be preceded by either of form paragraphs 7.12.fti or 7.12.01.fti.
8. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12.fti.
9. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
10. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) using form paragraphs 8.30 - 8.32. Additionally, the applicant should be required to resolve any issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) using form paragraph 8.27.fti. See MPEP § 804, subsection II.A.
¶ 7.15.03.aia Rejection, 35 U.S.C. 102(a)(2), No Common Assignee or Inventor(s)
Claim(s) [1] is/are rejected under 35 U.S.C. 102(a)(2) as being [2] by [3].
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph is used to reject a claim over a U.S. patent, U.S. patent application publication or WIPO patent application publication with an earlier effective filing date. The reference is not required to have a common assignee or inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference is one of the following:
a. a U.S. patent granted under 35 U.S.C. 151 that has an effective filing date earlier than the application;
b. a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effective filing date earlier than the application; or
c. a WIPO publication of an international application where the WIPO publication has an effective filing date earlier than the application.
If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the
application under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
4. In bracket 1, insert the claim numbers which are under rejection.
5. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
6. In bracket 3, insert the prior art relied upon.
7. This form paragraph must be preceded by form paragraph 7.12.aia.
¶ 7.15.03.fti Rejection, pre-AIA 35 U.S.C. 102(e), No Common Assignee or Inventor(s)
Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102(e) as being [2] by [3].
Examiner Note:
1. This form paragraph is used to reject over a patent or patent application publication with an earlier filing date. The patent or patent application publication is not required to have a common assignee or a common inventor.
2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) must be applied if the reference is one of the following:
a. a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
b. a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
c. a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.
3. Pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any
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benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) - (d), 365(a) or (b), or 35 U.S.C. 386(a) or (b).
5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO (PCT) publication, that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
6. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
7. In bracket 3, insert the prior art relied upon.
8. This form paragraph must be preceded by either of form paragraphs 7.12.fti or 7.12.01.fti.
9. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12.fti.
¶ 7.16.aia Rejection, 35 U.S.C. 102(a)(1), Public Use, On Sale, or Otherwise Publicly Available
Claim [1] rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. [2]
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be preceded either by form paragraphs 7.07.aia and 7.08.aia or by form paragraph 7.103.
3. In bracket 1, insert the claim numbers which are under rejection.
4. A full explanation of the evidence establishing a public use or sale or other public availability must be provided in bracket 2.
¶ 7.16.fti Rejection, pre-AIA 35 U.S.C. 102(b), Public Use or on Sale
Claim [1] rejected under pre-AIA 35 U.S.C. 102(b) based upon a public use or sale of the invention. [2]
Examiner Note:
1. This form paragraph must be preceded either by form paragraphs 7.07.fti and 7.09.fti or by form paragraph 7.103.
2. A full explanation of the evidence establishing a public use or sale must be provided in bracket 2.
¶ 7.17.fti Rejection, pre-AIA 35 U.S.C. 102(c), Abandonment of Invention
Claim [1] rejected under pre-AIA 35 U.S.C. 102(c) because the invention has been abandoned. [2]
Examiner Note:
1. This form paragraph must be preceded either by form paragraph 7.07.fti and 7.10.fti or by form paragraph 7.103.
2. In bracket 2, insert a full explanation of the evidence establishing abandonment of the invention. See MPEP § 2134.
¶ 7.18.fti Rejection, pre-AIA 35 U.S.C. 102(d), Foreign Patenting
Claim [1] rejected under pre-AIA 35 U.S.C. 102(d) as being barred by applicants [2]. [3]
Examiner Note:
1. This form paragraph must be preceded either by form paragraphs 7.07.fti and 7.11.fti or by form paragraph 7.103.
2. In bracket 3, insert an explanation of this rejection which must include appropriate dates and how they make the foreign patent available under pre-AIA 35 U.S.C. 102(d).
3. Refer to MPEP § 2135 for applicable pre-AIA 35 U.S.C. 102(d) prior art.
¶ 7.19.fti Rejection, pre-AIA 35 U.S.C. 102(f), Applicant Not the Inventor
Claim [1] is/are rejected under pre-AIA 35 U.S.C. 102(f) because the applicant did not invent the claimed subject matter. [2]
Examiner Note:
1. This paragraph must be preceded either by paragraphs 7.07.fti and 7.13.fti or by paragraph 7.103.
2. In bracket 2, insert an explanation of the supporting evidence establishing that applicant was not the inventor. See MPEP § 2137.
¶ 7.17.aia 102(a)(1) Rejection Using Prior Art Excepted under 102(b)(2)(C)
Applicant has provided evidence in this file showing that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, although reference [2] has been disqualified as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be disqualified under 35 U.S.C. 102(b)(2)(C).
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Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be included following form paragraph 7.20.aia or 7.15.aia where the anticipation rejection is based on a reference that has been disqualified under 35 U.S.C. 102(b)(2)(C) but still qualifies as prior art under 35 U.S.C. 102(a)(1).
3. In bracket 1, identify the common assignee.
4. In bracket 2, identify the reference which has been disqualified.
¶ 7.18.aia Rejection, Pre-AIA 35 U.S.C. 102(g)
Claim [1] rejected under pre-AIA 35 U.S.C. 102 (g) as being [2] by [3].
Examiner Note:
1. This form paragraph should only be used for an application or a patent that is being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act (must be preceded by form paragraph 7.03.aia) and MUST contain or have contained a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained such a claim.
2. In bracket 1, insert the claim numbers which are under rejection.
3. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
4. In bracket 3, insert the prior art relied upon.
5. This rejection must be preceded either by form paragraph 7.14.aia, or by form paragraph 7.103.
706.02(j) Contents of a 35 U.S.C. 103 Rejection [R-11.2013]
35 U.S.C. 103 authorizes a rejection where, to meet the claim, it is necessary to modify a single reference or to combine it with one or more other references. After indicating that the rejection is under 35 U.S.C.
103, the examiner should set forth in the Office action:
(A) the relevant teachings of the prior art relied upon, preferably with reference to the relevant column or page number(s) and line number(s) where appropriate,
(B) the difference or differences in the claim over the applied reference(s),
(C) the proposed modification of the applied reference(s) necessary to arrive at the claimed subject matter, and
(D) an explanation as to why the claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made.
“To support the conclusion that the claimed invention is directed to obvious subject matter, either the references must expressly or impliedly suggest the claimed invention or the examiner must present a convincing line of reasoning as to why the artisan would have found the claimed invention to have been obvious in light of the teachings of the references.” Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Inter. 1985).
Where a reference is relied on to support a rejection, whether or not in a minor capacity, that reference should be positively included in the statement of the rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3 166 USPQ 406, 407 n. 3 (CCPA 1970).
It is important for an examiner to properly communicate the basis for a rejection so that the issues can be identified early and the applicant can be given fair opportunity to reply. Furthermore, if an initially rejected application issues as a patent, the rationale behind an earlier rejection may be important in interpreting the scope of the patent claims. Since issued patents are presumed valid (35 U.S.C. 282) and constitute a property right (35 U.S.C. 261), the written record must be clear as to the basis for the grant. Since patent examiners cannot normally be compelled to testify in legal proceedings regarding their mental processes (see MPEP § 1701.01), it is important that the written record clearly explain the rationale for decisions made during prosecution of the application.
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See MPEP §§ 2141 - 2144.09 generally for guidance on patentability determinations under 35 U.S.C. 103, including a discussion of the requirements of Graham v. John Deere, 383 U.S. 1, 148 USPQ 459 (1966). See MPEP § 2145 for consideration of applicant’s rebuttal arguments. See MPEP §§ 2154 and 2154.02 for a discussion of exceptions to prior art under 35 U.S.C. 102(b). See MPEP § 2156 for a discussion of 35 U.S.C. 102(c) and references of joint researchers. See MPEP §§ 706.02(l) - 706.02(l)(3) for a discussion of prior art disqualified under pre-AIA 35 U.S.C. 103(a).
706.02(k) Provisional Rejection (Obviousness) Under 35 U.S.C. 103 Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e) [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 2154 et seq. for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, rejections based on U.S. patent documents.]
I. HISTORICAL BACKGROUND
Effective November 29, 1999, subject matter which was prior art under former 35 U.S.C. 103 via pre-AIA 35 U.S.C. 102(e) was disqualified as prior art against the claimed invention if that subject matter and the claimed invention “were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” This amendment to pre-AIA 35 U.S.C. 103(c) was made pursuant to section 4807 of the American Inventors Protection Act of 1999 (AIPA); see Public Law 106-113, 113 Stat. 1501, 1501A-591 (1999). The changes to pre-AIA 35 U.S.C. 102(e) in the Intellectual Property and High Technology Technical Amendments Act of 2002 (Public Law 107-273, 116 Stat. 1758 (2002)) did not affect the exclusion under pre-AIA 35 U.S.C. 103(c) as amended on November 29, 1999. Subsequently, the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) (Public Law 108-453, 118 Stat. 3596 (2004)) further amended pre-AIA 35 U.S.C. 103(c) to provide that subject matter
developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if three conditions are met:
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement (hereinafter “joint research agreement disqualification”).
These changes to pre-AIA 35 U.S.C. 103(c) apply to all patents (including reissue patents) granted on or after December 10, 2004 and issuing from applications not subject to examination under the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). The amendment to pre-AIA 35 U.S.C. 103(c) made by the AIPA to change “subsection (f) or (g)” to “one or more of subsections (e), (f), and (g)” applies to applications filed on or after November 29, 1999 that are not subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note).
For a reexamination proceeding of a patent granted prior to December 10, 2004, on an application filed on or after November 29, 1999, it is the 1999 changes to pre-AIA 35 U.S.C. 103(c) that are applicable to the disqualifying commonly assigned/owned prior art provisions of pre-AIA of 35 U.S.C. 103(c). See MPEP § 706.02(l)(1) for additional information regarding disqualified prior art under pre-AIA 35 U.S.C. 103(c). For a reexamination proceeding of a patent granted prior to December 10, 2004, on an application filed prior to November 29, 1999, neither the 1999 nor the 2004 changes to pre-AIA 35 U.S.C. 103(c) are applicable. Therefore, only prior art under pre-AIA 35 U.S.C. 102(f) or (g) used in a rejection under pre-AIA 35 U.S.C. 103(a) may be disqualified under the commonly assigned/owned prior art provision of pre-AIA 35 U.S.C. 103(c).
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II. PROVISIONAL OBVIOUSNESS REJECTION
Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under pre-AIA 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) should be made in the later filed application unless the application has been excluded under pre-AIA 35 U.S.C. 103(c). See MPEP § 706.02(l)(3) for examination procedure with respect to pre-AIA 35 U.S.C. 103(c). See also MPEP § 706.02(f) for examination procedure in determining when provisional rejections are appropriate. Otherwise the confidential status of unpublished application, or any part thereof, under 35 U.S.C. 122 must be maintained. Such a rejection alerts the applicant that he or she can expect an actual rejection on the same ground if one of the applications issues and also lets applicant know that action must be taken to avoid the rejection.
This gives applicant the opportunity to analyze the propriety of the rejection and possibly avoid the loss of rights to desired subject matter. Provisional rejections of the obviousness type under pre-AIA 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) are rejections applied to copending applications having different effective filing dates wherein each application has a common assignee or a common inventor. The earlier filed application, if patented or published, would constitute prior art under pre-AIA 35 U.S.C. 102(e). The rejection can be overcome by:
(A) Arguing patentability over the earlier filed application;
(B) Combining the subject matter of the copending applications into a single application claiming benefit under 35 U.S.C. 120 of the prior applications and abandoning the copending applications (Note that a claim in a subsequently filed application that relies on a combination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120 if the earlier filed application does not contain a disclosure which complies with 35 U.S.C. 112 for the claim in the subsequently filed application. Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 42 USPQ2d 1674 (Fed. Cir. 1997).);
(C) Filing an affidavit or declaration under 37 CFR 1.132 showing that any unclaimed invention disclosed in the copending application was derived from the inventor of the other application and is thus not invention “by another” (see MPEP §§ 715.01(a), 715.01(c), and 716.10);
(D) Filing an affidavit or declaration under 37 CFR 1.131(a) showing a date of invention prior to the effective U.S. filing date of the copending application. See MPEP § 715; or
(E) For an application that is pending on or after December 10, 2004, a showing that (1) the prior art and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person, or (2) the subject matter is disqualified under pre-AIA 35 U.S.C. 103(c) (i.e., joint research agreement disqualification).
Where the applications are claiming interfering subject matter as defined in 37 CFR 41.203(a), a terminal disclaimer and an affidavit or declaration under 37 CFR 1.131(c) may be used to overcome a rejection under 35 U.S.C. 103 in a common ownership situation if the earlier filed application has been published or matured into a patent. See MPEP § 718.
If a provisional rejection is made and the copending applications are combined into a single application and the resulting single application is subject to a restriction requirement, the divisional application would not be subject to a provisional or actual rejection under 35 U.S.C. 103 since the provisions of 35 U.S.C. 121 preclude the use of a patent issuing therefrom as a reference against the other application. Additionally, the resulting continuation-in-part is entitled to 35 U.S.C. 120 benefit of each of the prior applications. This is illustrated in Example 2, below.
The following examples are illustrative of the application of 35 U.S.C. 103 in applications filed prior to November 29, 1999 for which a patent was granted prior to December 10, 2004:
Example 1. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed.
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RESULTSSITUATIONS This is permissible.1. A invents X and later files application. No 35 U.S.C. 103 rejection based on prior art under pre-AIA 35 U.S.C. 102(f) or 102(g); provisional 35
2. B modifies X to XY. B files application before A’s filing.
U.S.C. 103 rejection made in A’s later-filed application based on B’s application as provisional prior art under pre-AIA 35 U.S.C. 102(e). Provisional double patenting rejection made. A’s claims rejected over B’s patent under 35 U.S.C. 103 based on prior art under pre-AIA 35 U.S.C. 102(e) and double patenting.
3. B’s patent issues.
Rejection under 35 U.S.C.103 based on prior art under pre-AIA 35 U.S.C. 102(e) may be overcome and double
4. A files 37 CFR 1.131(c) affidavit to disqualify B’s patent as prior art where interfering subject matter as
patenting rejection may be overcome if inventions X anddefined in 37 CFR 41.203(a) is being claimed. Terminal disclaimer filed under 37 CFR 1.321(c). XY are commonly owned and all requirements of 37
CFR 1.131(c) and 1.321 are met.
In situation (2.) above, the result is a provisional rejection under 35 U.S.C. 103 made in the later-filed application based on provisional prior art under pre-AIA 35 U.S.C. 102(e). The rejection is
provisional since the subject matter and the prior art are pending applications.
Example 2. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed.
RESULTSSITUATIONS This is permissible.1. A invents X and files application. Provisional 35 U.S.C. 103 rejection made in B’s later-filed application based on A’s application as
2. B modifies X to XY after A’s application is filed. B files application establishing that A and B were both
provisional prior art under pre-AIA 35 U.S.C. 102(e)under obligation to assign inventions to C at the time the inventions were made. made; provisional double patenting rejection made; no
35 U.S.C. 103 rejection based on prior art under pre-AIA 35 U.S.C. 102(f) or 102(g) made. Assume it is proper that restriction be required between X and XY.
3. A and B jointly file continuing application claiming priority to both their earlier applications and abandon the earlier applications.
No rejection of divisional application under 35 U.S.C. 103 based on prior art under pre-AIA 35 U.S.C. 102(e) in view of 35 U.S.C. 121.
4. X is elected, a patent issues on X, and a divisional application is timely filed on XY.
The following examples are illustrative of rejections under 35 U.S.C. 103 based on prior art under pre-AIA 35 U.S.C. 102(e) in applications that are pending on or after December 10, 2004:
Example 3. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed. Employee A’s application, which is pending on or after December 10, 2004, is being examined.
RESULTSSITUATIONS This is permissible.1. A invents X and later files application. Provisional 35 U.S.C. 103 rejection of A’s later-filed application based on B’s application as provisional prior
2. B modifies X to XY. B files application before A’s filing. A files an application on invention X.
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RESULTSSITUATIONS art under pre-AIA 35 U.S.C. 102(e) and a provisional double patenting rejection are made. A’s claims are rejected under 35 U.S.C. 103 based on B’s patent under pre-AIA 35 U.S.C. 102(e) and double patenting.
3. B’s patent issues.
Rejection of A’s claims under 35 U.S.C. 103 based on prior art under pre-AIA 35 U.S.C. 102(e) will be
4. A files evidence of common ownership of inventions X and XY at the time invention XY was made to
withdrawn and double patenting rejection will bedisqualify B’s patent as prior art. In addition, A files a terminal disclaimer under 37 CFR 1.321(c). obviated if inventions X and XY are commonly owned
at the time invention XY was made and all requirements of 37 CFR 1.321 are met.
In situation (2.) above, the result is a provisional rejection under 35 U.S.C. 103 made in the later-filed application based on provisional prior art under pre-AIA 35 U.S.C. 102(e) (the earlier-filed application). The rejection is provisional since the subject matter and the prior art are pending applications.
Example 4. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed. Employee B’s application, which is pending on or after December 10, 2004, is being examined.
RESULTSSITUATIONS This is permissible.1. A invents X and files application. Provisional 35 U.S.C. 103 rejection of B’s claims based on A’s application as provisional prior art under pre-AIA
2. B modifies X to XY after A’s application is filed. B files evidence in B’s application establishing that A and
35 U.S.C. 102(e) cannot be made; provisional doubleB were both under obligation to assign inventions to C at the time the invention XY was made. patenting rejection is made; no 35 U.S.C. 103 rejection
based on prior art under pre-AIA 35 U.S.C. 102(f) or 102(g) is made. The provisional double patenting rejection made in B’s application would be obviated if all requirements of 37 CFR 1.321 are met.
3. B files a terminal disclaimer under 37 CFR 1.321(c).
Example 5. Assumption: Employee A works for assignee I and Employee B works for assignee J. There is a joint research agreement, pursuant to pre-AIA 35 U.S.C. 103(c), between assignees I and J. Employees A and B each filed an application as set forth below. Employee B’s invention claimed in his application was made after the joint research agreement was
entered into, and it was made as a result of activities undertaken within the scope of the joint agreement. Employee B’s application discloses assignees I and J as the parties to the joint research agreement. Employee B’s application, which is pending on or after December 10, 2004, is being examined.
RESULTSSITUATIONS This is permissible.1. A invents X and files application. Provisional 35 U.S.C. 103 rejection of B’s claims based on A’s application as provisional prior art under pre-AIA
2. B modifies X to XY after A’s application is filed. B files evidence in B’s application establishing a joint
35 U.S.C. 102(e) cannot be made; provisional doubleresearch agreement in compliance with pre-AIA 35 U.S.C. 103(c). patenting rejection is made; no 35 U.S.C. 103 rejection
based on prior art under pre-AIA 35 U.S.C. 102(f) or 35 U.S.C. 102(g) made.
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RESULTSSITUATIONS The provisional double patenting rejection made in B’s application would be obviated if all requirements of 37 CFR 1.321 are met.
3. B files a terminal disclaimer under 37 CFR 1.321.
III. EXAMINATION OF CONTINUING APPLICATION COMMONLY OWNED WITH ABANDONED PARENT APPLICATION TO WHICH BENEFIT IS CLAIMED UNDER 35 U.S.C. 120
An application claiming the benefit of a prior filed copending national or international application under 35 U.S.C. 120 must name as an inventor at least one inventor named in the prior filed application. The prior filed application must also disclose the named inventor’s invention claimed in at least one claim of the later filed application in the manner provided by 35 U.S.C. 112(a) for applications filed on or after September 16, 2012, or 35 U.S.C. 112, first paragraph for applications filed prior to September 16, 2012. This practice contrasts with the practice in effect prior to November 8, 1984 (the date of enactment of Public Law 98-622) where the inventorship entity in each of the applications was required to be the same for benefit under 35 U.S.C. 120.
So long as the applications have at least one inventor in common and the other requirements are met, the Office will permit a claim for 35 U.S.C. 120 benefit without any additional submissions or notifications from applicants regarding inventorship differences.
In addition to the normal examination conducted by the examiner, he or she must examine the earlier filed application to determine if the earlier and later applications have at least one inventor in common and that the other 35 U.S.C. 120 and 37 CFR 1.78 requirements are met. The claim for 35 U.S.C. 120 benefit will be permitted without examination of the earlier application for disclosure and support of at least one claim of the later filed application under 35 U.S.C. 112 unless it becomes necessary to do so, for example, because of an intervening reference.
706.02(l) Rejections Under Pre-AIA 35 U.S.C. 103(a) Using Prior Art Under Only
Pre-AIA 35 U.S.C. 102 (e), (f), or (g) [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 717.02 et seq., 2154.02(c) and 2156 for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
35 U.S.C. 103 (pre-AIA) Conditions for patentability; non-obvious subject matter.
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(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
It is important to recognize that pre-AIA 35 U.S.C. 103(c) applies only to consideration of prior art for purposes of obviousness under 35 U.S.C. 103. It does not apply to or affect subject matter which is
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applied in a rejection under 35 U.S.C. 102 or a double patenting rejection. In addition, if the subject matter qualifies as prior art under any other subsection of pre-AIA 35 U.S.C. 102 (e.g., pre-AIA 35 U.S.C. 102(a) or (b)) it will not be disqualified as prior art under pre-AIA 35 U.S.C. 103(c).
A patent applicant or patentee urging that subject matter is disqualified has the burden of establishing that the prior art is disqualified under pre-AIA 35 U.S.C. 103(c). Absent proper evidence of disqualification, the appropriate rejection under pre-AIA 35 U.S.C. 103(a) with applying prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g) should be made. See MPEP § 706.02(l)(2) for information pertaining to establishing prior art exclusions due to common ownership or joint research agreements.
The term “subject matter” will be construed broadly, in the same manner the term is construed in the remainder of pre-AIA 35 U.S.C. 103. The term “another” as used in pre-AIA 35 U.S.C. 103 means any inventive entity other than the inventor and would include the inventor and any other persons. The term “developed” is to be read broadly and is not limited by the manner in which the development occurred. The term “commonly owned” means wholly owned by the same person(s) or organization(s) at the time the invention was made. The term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. See MPEP § 706.02(l)(2).
For a discussion of the three conditions of 35 U.S.C. 102(c) that must be satisfied for a claimed invention and subject matter disclosed which might otherwise qualify as prior art to be treated as having been owned by the same person or subject to an obligation of assignment to the same person in applying the joint research agreement provisions of AIA 35 U.S.C. 102(b)(2)(C), see MPEP § 2156. See also MPEP § 717.02 et seq.
FOR APPLICATIONS FILED PRIOR TO NOVEMBER 29, 1999, AND GRANTED AS PATENTS PRIOR TO DECEMBER 10, 2004
Prior to November 29, 1999, pre-AIA 35 U.S.C. 103(c) provided that subject matter developed by another which qualifies as “prior art” only under subsections pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g) is not to be considered when determining whether an invention sought to be patented is obvious under pre-AIA 35 U.S.C. 103, provided the subject matter and the claimed invention were commonly owned at the time the invention was made. See MPEP § 706.02(l)(1) for information regarding when prior art under pre-AIA 35 U.S.C. 102(e) is disqualified under pre-AIA 35 U.S.C. 103(c).
For applications filed prior to November 29, 1999, and granted as patents prior to December 10, 2004, the subject matter that is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) is strictly limited to subject matter that A) qualifies as prior art only under pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g), and B) was commonly owned with the claimed invention at the time the invention was made. If the subject matter that qualifies as prior art only under pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g) was not commonly owned at the time of the invention, the subject matter is not disqualified as prior art under pre-AIA 35 U.S.C. 103(c) in effect on December 9, 2004. See OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1403-04, 43 USPQ2d 1641, 1646 (Fed. Cir. 1997) (“We therefore hold that subject matter derived from another not only is itself unpatentable to the party who derived it under § 102(f), but, when combined with other prior art, may make a resulting obvious invention unpatentable to that party under a combination of §§ 102(f) and 103.”) Therefore, in these applications, information learned from or transmitted to persons outside the organization is not disqualified as prior art.
Inventors of subject matter not commonly owned at the time of the invention, but currently commonly owned, may file as joint inventors in a single application. However, the claims in such an application are not protected from a 35 U.S.C. 103 rejection based on prior art under pre-AIA 35 U.S.C.
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102(f) or pre-AIA 35 U.S.C. 102(g). Applicants in such cases have an obligation pursuant to 37 CFR 1.56 to point out the inventor and invention dates of each claim and the lack of common ownership at the time the later invention was made to enable the examiner to consider the applicability of a 35 U.S.C. 103 rejection based on prior art under pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g). The examiner will assume, unless there is evidence to the contrary, that applicants are complying with their duty of disclosure.
Foreign applicants will sometimes combine the subject matter of two or more related applications with different inventors into a single U.S. application naming joint inventors. The examiner will make the assumption, absent contrary evidence, that the applicants are complying with their duty of disclosure if no information is provided relative to invention dates and common ownership at the time the later invention was made. Such a claim for 35 U.S.C. 119(a) - (d) priority based upon the foreign filed applications is appropriate and 35 U.S.C. 119(a) - (d) priority can be accorded based upon each of the foreign filed applications.
For rejections under pre-AIA 35 U.S.C. 103(a) using prior art under pre-AIA 35 U.S.C. 102(f) or (g) in applications pending on or after December 10, 2004, see MPEP § 706.02(l)(1).
706.02(l)(1) Rejections Under Pre-AIA 35 U.S.C. 103(a) Using PriorArt Under Pre-AIA 35 U.S.C. 102(e), (f), or (g); Prior Art Disqualification Under Pre-AIA 35 U.S.C. 103(c) [R-07.2015]
35 U.S.C. 103 (pre-AIA) Conditions for patentability; non-obvious subject matter.
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 717.02 et seq., 2154.02(c) and 2156 for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
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(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude
patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
I. COMMON OWNERSHIP OR ASSIGNEE PRIOR ART EXCLUSION UNDER PRE-AIA 35 U.S.C. 103(c)
Enacted on November 29, 1999, the American Inventors Protection Act (AIPA) added subject matter which was prior art under former 35 U.S.C. 103 via pre-AIA 35 U.S.C. 102(e) as disqualified prior art against the claimed invention if that subject matter and the claimed invention “were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” The 1999 change to pre-AIA 35 U.S.C. 103(c) only applied to all utility, design and plant patent applications filed on or after November 29, 1999. The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act), in part, redesignated the former 35 U.S.C. 103(c) to pre-AIA 35 U.S.C. 103(c)(1) and made this provision effective to all applications in which the patent is granted on or after December 10, 2004, but the AIA provides that certain applications are subject to the current 35 U.S.C. 102 and 103, see MPEP § 2159. Therefore, the provision of pre-AIA 35 U.S.C.103(c)(1) is effective for all applications pending on or after December 10, 2004, including applications filed prior to November 29, 1999, except those applications subject to the current 35 U.S.C. 102 and 103. In addition, this provision applies to
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all patent applications, including utility, design, plant and reissue applications, except those applications subject to the current 35 U.S.C. 102 and 103. The amendment to pre-AIA 35 U.S.C. 103(c)(1) does not affect any application filed before November 29, 1999 and issued as a patent prior to December 10, 2004. The AIA provides that applications subject to the AIA prior art provisions are not subject to either the 1999 or 2004 changes, but are subject to 35 U.S.C. 102(c). See MPEP § 2159.
In a reexamination proceeding, however, one must look at whether or not the patent being reexamined was granted on or after December 10, 2004, and whether the patent is subject the current 35 U.S.C. 102 to determine whether pre-AIA 35 U.S.C. 103(c), as amended by the CREATE Act, applies. For a reexamination proceeding of a patent granted prior to December 10, 2004, on an application filed on or after November 29, 1999, it is the 1999 changes to pre-AIA 35 U.S.C. 103(c) that are applicable to the disqualifying commonly assigned/owned prior art provisions of pre-AIA 35 U.S.C. 103(c). For a reexamination proceeding of a patent granted prior to December 10, 2004, on an application filed prior to November 29, 1999, neither the 1999 nor the 2004 changes to pre-AIA 35 U.S.C. 103(c) are applicable. Therefore, only prior art under pre-AIA 35 U.S.C. 102(f) or (g) used in a rejection under pre-AIA 35 U.S.C. 103(a) may be disqualified under the commonly assigned/owned prior art provisions of 35 U.S.C. 103(c). Similarly patents issued from applications subject to the current 35 U.S.C. 102 are not subject to either the 1999 or 2004 changes, but are subject to 35 U.S.C. 102(c). See MPEP § 2159.
For reissue applications, the doctrine of recapture may prevent the presentation of claims in the reissue applications that were amended or cancelled from the application which matured into the patent for which reissue is being sought, if the claims were amended or cancelled to overcome a rejection under 35 U.S.C. 103 based on prior art under pre-AIA 35 U.S.C. 102(e) which was not able to be excluded under pre-AIA 35 U.S.C. 103(c) in the application that issued as a patent. If an examiner determines that this situation applies in the reissue application under examination, a consultation with the Office of Patent Legal Administration should be initiated
via the Technology Center Quality Assurance Specialist.
Pre-AIA 35 U.S.C. 103(c) applies only to prior art usable in an obviousness rejection under 35 U.S.C. 103. Subject matter that qualifies as anticipatory prior art under pre-AIA 35 U.S.C. 102 is not affected, and may still be used to reject claims as being anticipated. In addition, double patenting rejections, based on subject matter now disqualified as prior art in amended pre-AIA 35 U.S.C. 103(c), should still be made as appropriate. See 37 CFR 1.78(c) and MPEP § 804. By contrast current 35 U.S.C. 102(c) operates to disqualify similar prior art from being applied in either an obviousness rejection or an anticipation rejection. See MPEP § 2156.
The burden of establishing that subject matter is disqualified as prior art is placed on applicant once the examiner has established a prima facie case of obviousness based on the subject matter. For example, the fact that the reference and the application have the same assignee is not, by itself, sufficient evidence to disqualify the prior art under pre-AIA 35 U.S.C. 103(c). There must be a statement that the common ownership was “at the time the invention was made.”
See MPEP § 706.02(l)(2) for information regarding establishing common ownership. See MPEP § 706.02(l)(3) for examination procedure with respect to pre-AIA 35 U.S.C. 103(c).
II. JOINT RESEARCH AGREEMENT DISQUALIFICATION UNDER PRE-AIA 35 U.S.C. 103(c) BY THE CREATE ACT
The CREATE Act (Public Law 108-453, 118 Stat. 3596 (2004)) was enacted on December 10, 2004, and is effective for applications for which the patent is granted on or after December 10, 2004, except those patents subject to the current 35 U.S.C. 102 and 35 U.S.C. 103. Specifically, the CREATE Act amended pre-AIA 35 U.S.C. 103(c) to provide that:
- subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of pre-AIA 35 U.S.C. 102 shall not preclude patentability under 35 U.S.C. 103 where the subject matter
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and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person;
- for purposes of 35 U.S.C. 103, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if
- the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made,
- the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement, and
- the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement;
- the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made, - the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement, and - the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement;
- for purposes of pre-AIA 35 U.S.C. 103(c), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, development, or research work in the field of the claimed invention.
The effective date provision of the CREATE Act provided that its amendments shall apply to any patent (including any reissue patent) granted on or after December 10, 2004, except those patents subject to the current 35 U.S.C. 102 and 103. The CREATE Act also provided that its amendment shall not affect any final decision of a court or the Office rendered before December 10, 2004, and shall not affect the right of any party in any action pending before the Office or a court on December 10, 2004, to have that party’s rights determined on the basis of the provisions of title 35, United States Code, in effect on December 9, 2004. Since the CREATE Act also includes the amendment to pre-AIA 35 U.S.C. 103(c) made by section 4807 of the AIPA (see Public Law 106-113, 113 Stat. 1501, 1501A-591 (1999)), the change of “subsection (f) or (g)” to “one or more of subsections (e), (f), or (g)” in pre-AIA 35 U.S.C. 103(c) is now also applicable to applications filed prior to November 29, 1999, that were pending on December 10, 2004.
Pre-AIA 35 U.S.C. 103(c), as amended by the CREATE Act, continues to apply only to subject matter which qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g), and which is being relied upon in a rejection under 35 U.S.C. 103. If the rejection is anticipation under pre-AIA 35 U.S.C. 102(e), (f), or (g), pre-AIA 35 U.S.C. 103(c) cannot be relied upon to disqualify the subject matter in order to overcome or prevent the anticipation rejection. Likewise, pre-AIA 35 U.S.C. 103(c) cannot be relied upon to overcome or prevent a double patenting rejection. See 37 CFR 1.78(c) and MPEP § 804.
Because the CREATE Act applies only to patents granted on or after December 10, 2004, the recapture doctrine may prevent the presentation of claims in the reissue applications that had been amended or cancelled (e.g., to avoid a rejection under pre-AIA 35 U.S.C. 103(a) based on subject matter that may now be disqualified under the CREATE Act) during
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the prosecution of the application which resulted in the patent being reissued.
706.02(l)(2) Establishing Common Ownership or Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c) [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 717.02 et seq., 2154.02(c) and 2156 for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
In order to be disqualified as prior art under pre-AIA 35 U.S.C. 103(c), the subject matter which would otherwise be prior art to the claimed invention and the claimed invention must be commonly owned, or subject to an obligation of assignment to the same person, at the time the claimed invention was made or be subject to a joint research agreement at the time the invention was made. See MPEP § 706.02(l) for rejections under 35 U.S.C. 103 based on prior art under pre-AIA 35 U.S.C. 102(f) or 102(g) and prior art disqualified under pre-AIA 35 U.S.C. 103(c) in applications granted as patents prior to December 10, 2004. See MPEP § 706.02(l)(1) for rejections under 35 U.S.C. 103 based on prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g), and prior art disqualified under pre-AIA 35 U.S.C. 103(c).
I. DEFINITION OF COMMON OWNERSHIP
The term “commonly owned” is intended to mean that the subject matter which would otherwise be prior art to the claimed invention and the claimed invention are entirely or wholly owned by, or under an obligation to assign to, the same person(s) or organization(s)/business entity(ies). For purposes of pre-AIA 35 U.S.C. 103(c), common ownership must be at the time the claimed invention was made. If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person(s) or organization(s)/business
entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention.
Specifically, if an invention claimed in an application is owned by more than one entity and those entities seek to exclude the use of a reference under pre-AIA 35 U.S.C. 103(c), then the reference must be owned by, or subject to an obligation of assignment to, the same entities that owned the application, at the time the later invention was made. For example, assume Company A owns twenty percent of patent Application X and Company B owns eighty percent of patent Application X at the time the invention of Application X was made. In addition, assume that Companies A and B seek to exclude the use of Reference Z under pre-AIA 35 U.S.C. 103(c). Reference Z must have been co-owned, or have been under an obligation of assignment to both companies, on the date the invention was made in order for the exclusion to be properly requested. A statement such as “Application X and Patent Z were, at the time the invention of Application X was made, jointly owned by Companies A and B” would be sufficient evidence of common ownership.
For applications owned by a joint venture of two or more entities, both the application and the reference must have been owned by, or subject to an obligation of assignment to, the joint venture at the time the invention was made. For example, if Company A and Company B formed a joint venture, Company C, both Application X and Reference Z must have been owned by, or subject to an obligation of assignment to, Company C at the time the invention was made in order for Reference Z to be properly excluded as prior art under pre-AIA 35 U.S.C. 103(c). If Company A by itself owned Reference Z at the time the invention of Application X was made and Application X was owned by Company C on the date the invention was made, then a request for the exclusion of Reference Z as prior art under pre-AIA 35 U.S.C. 103(c) would not be proper.
As long as principal ownership rights to either the subject matter or the claimed invention under examination reside in different persons or organizations common ownership does not exist. A license of the claimed invention under examination to another by the owner where basic ownership rights are retained would not defeat ownership.
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The requirement for common ownership at the time the claimed invention was made is intended to preclude obtaining ownership of subject matter after the claimed invention was made in order to disqualify that subject matter as prior art against the claimed invention.
The question of whether common ownership exists at the time the claimed invention was made is to be determined on the facts of the particular case in question. Actual ownership of the subject matter and the claimed invention by the same individual(s) or organization(s) or a legal obligation to assign both the subject matter and the claimed invention to the same individual(s) or organization(s)/business entity(ies) must be in existence at the time the claimed invention was made in order for the subject matter to be disqualified as prior art. A moral or unenforceable obligation would not evidence common ownership.
Under pre-AIA 35 U.S.C. 103(c), an applicant’s admission that subject matter was developed prior to applicant’s invention would not make the subject matter prior art to applicant if the subject matter qualifies as prior art only under sections pre-AIA 35 U.S.C. 102(e), (f), or (g), and if the subject matter and the claimed invention were commonly owned at the time the invention was made. See In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982), for a decision involving an applicant’s admission which was used as prior art against their application. If the subject matter and invention were not commonly owned, an admission that the subject matter is prior art would be usable under 35 U.S.C. 103.
The burden of establishing that subject matter is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) is intended to be placed and reside upon the person or persons urging that the subject matter is disqualified. For example, a patent applicant urging that subject matter is disqualified as prior art under pre-AIA 35 U.S.C. 103(c), would have the burden of establishing that it was commonly owned at the time the claimed invention was made. The patentee in litigation would likewise properly bear the same burden placed upon the applicant before the U.S. Patent and Trademark Office. To place the burden upon the patent examiner or the defendant in litigation would not be appropriate since evidence
as to common ownership at the time the claimed invention was made might not be available to the patent examiner or the defendant in litigation, but such evidence, if it exists, should be readily available to the patent applicant or the patentee.
In view of pre-AIA 35 U.S.C. 103(c), the Director has reinstituted in appropriate circumstances the practice of rejecting claims in commonly owned applications of different inventive entities on the grounds of double patenting. Such rejections can be overcome in appropriate circumstances by the filing of terminal disclaimers. This practice has been judicially authorized. See In re Bowers, 359 F.2d 886, 149 USPQ 57 (CCPA 1966). The use of double patenting rejections which then could be overcome by terminal disclaimers preclude patent protection from being improperly extended while still permitting inventors and their assignees to obtain the legitimate benefits from their contributions. See also MPEP § 804.
The following examples are provided for illustration only:
Example 1
Parent Company owns 100% of Subsidiaries A and B
- inventions of A and B are commonly owned by the Parent Company.
Example 2
Parent Company owns 100% of Subsidiary A and 90% of Subsidiary B
- inventions of A and B are not commonly owned by the Parent Company.
Example 3
If same person owns subject matter and invention at time invention was made, license to another may be made without the subject matter becoming prior art.
Example 4
Different Government inventors retaining certain rights (e.g. foreign filing rights) in separate inventions owned by Government precludes common ownership of inventions.
Example 5
Company A and Company B form joint venture Company C. Employees of A, while working for C with an obligation to assign inventions to C, invent invention #1; employees of B
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while working for C with an obligation to assign inventions to C, invent invention #2, with knowledge of #1.
Question: Are #1 and #2 commonly owned at the time the later invention was made so as to preclude a rejection under pre-AIA 35 U.S.C. 102(e), (f) or (g) in view of pre-AIA 35 U.S.C. 103?
Answer: Yes- If the required evidence of common ownership is made of record in the patent application file. If invention #1 was invented by employees of Company A not working for Company C and Company A maintained sole ownership of invention #1 at the time invention #2 was made, inventions #1 and #2 would not be commonly owned as required by pre-AIA 35 U.S.C. 103(c).
Example 6
Company A owns 40% of invention #1 and 60% of invention #2, and Company B owns 60% of invention #1 and 40% of invention #2 at the time invention #2 was made.
-inventions #1 and #2 are commonly owned.
Example 7
Company B has a joint research project with UniversityA. Under the terms of the joint research project, University A has agreed that all of its patents will be jointly owned by Company B and University A. Professor X, who works for University A, has an employee agreement with University A assigning all his patents only to University A. After the joint research project agreement is executed, University A files patent application #1 for the invention of Professor X, before Company B files patent application #2 on a similar invention.
- inventions #1 and #2 are commonly owned because Professor X’s obligation to assign patents to University A who has an obligation to assign patents to the A-B joint venture legally establishes Professor X’s obligation to assign patents to the A-B joint venture.
Example 8
Inventor X working at Company A invents and files patent application #1 on technology T, owned by Company A. After application #1 is filed, Company A spins off a 100% owned Subsidiary B for technology T including the transfer of the ownership of patent application #1 to Subsidiary B. After Subsidiary B is formed, inventor Y (formerly a Company A employee, but now an employee of Subsidiary B obligated to assign to Subsidiary B) jointly files application #2 with inventor X (now also an employee of Subsidiary B with an obligation to assign to Subsidiary B), which is directed to a possibly unobvious improvement to technology T.
- the inventions of applications #1 and #2 are commonly owned since Subsidiary B is a wholly owned subsidiary of Company A.
The examiner must examine the application as to all grounds except pre-AIA 35 U.S.C. 102(e), (f) and (g) as they apply through pre-AIA 35 U.S.C. 103(a) only if the application file(s) establishes common ownership at the time the later invention was made. Thus, it is necessary to look to the time at which common ownership exists. If common ownership does not exist at the time the later invention was made, the earlier invention is not disqualified as potential prior art under pre-AIA 35 U.S.C. 102(e), (f) and (g) as they apply through pre-AIA 35 U.S.C. 103(a). An invention is “made” when conception is complete as defined in Mergenthaler v. Scudder, 11 App. D.C. 264, 81 OG 1417, 1897 C.D. 724 (D.C. Cir. 1897); In re Tansel, 253 F.2d 241, 117 USPQ 188 (CCPA 1958). See Pfaff v. Wells Elecs., 525 U.S. 55, 119 S. Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998) (“the invention must be ready for patenting . . . . by proof that prior to the critical date the inventor had prepared drawing or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.”) Common ownership at the time the invention was made for purposes of obviating a rejection under pre-AIA 35 U.S.C. 103(a) based on prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) may be established irrespective of whether the invention was made in the United States or abroad. The provisions of pre-AIA 35 U.S.C. 104, however, will continue to apply to other proceedings in the U.S. Patent and Trademark Office, e.g. in an interference proceeding, with regard to establishing a date of invention by knowledge or use thereof, or other activity with respect thereto, in a foreign country, except the provisions do not apply to applications subject to the current 35 U.S.C. 102 as pre-AIA 35 U.S.C. 104 was repealed effective March 16, 2013 The foreign filing date will continue to be used for interference purposes under 35 U.S.C. 119(a) - (d) and 35 U.S.C. 365.
II. EVIDENCE REQUIRED TO ESTABLISH COMMON OWNERSHIP
It is important to recognize just what constitutes sufficient evidence to establish common ownership at the time the invention was made. The common ownership must be shown to exist at the time the later invention was made. A statement of present
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common ownership is not sufficient. In re Onda, 229 USPQ 235 (Comm’r Pat. 1985).
Applications and references (whether patents, patent applications, patent application publications, etc.) will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, at the time the invention was made, if the applicant(s) or patent owner(s) make(s) a statement to the effect that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person. The statement must be signed in accordance with 37 CFR 1.33(b). See “Guidelines Setting Forth a Modified Policy Concerning the Evidence of Common Ownership, or an Obligation of Assignment to the Same Person, as Required by 35 U.S.C. 103(c),” 1241 OG 96 (December 26, 2000). The applicant(s) or the representative(s) of record have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient evidence because of their paramount obligation of candor and good faith to the USPTO.
The statement concerning common ownership should be clear and conspicuous (e.g., on a separate piece of paper) to ensure the examiner notices the statement. Applicants or patent owners may, but are not required to, submit further evidence, such as assignment records, affidavits or declarations by the common owner, or court decisions, in addition to the above-mentioned statement concerning common ownership.
For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected under pre-AIA 35 U.S.C. 103(a) using Patent A in view of Patent B wherein Patent A is only available as prior art under pre-AIA 35 U.S.C. 102(e), (f), and/or (g). In her response to the Office action, the attorney or agent of record for Application X states, in a clear and conspicuous manner, that:
“Application X and Patent A were, at the time the invention of Application X was made, owned by Company Z.”
This statement alone is sufficient evidence to disqualify Patent A from being used in a rejection under pre-AIA 35 U.S.C. 103(a) against the claims of Application X.
In rare instances, the examiner may have independent evidence that raises a material doubt as to the accuracy of applicant’s representation of either (1) the common ownership of, or (2) the existence of an obligation to commonly assign, the application being examined and the applied U.S. patent or U.S. patent application publication reference. In such cases, the examiner may explain why the accuracy of the representation is doubted. The examiner may also require objective evidence of common ownership of, or the existence of an obligation to assign, the application being examined and the applied reference as of the date of invention of the application being examined. Examiners should note that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention.
As mentioned above, applicant(s) or patent owner(s) may submit, in addition to the above-mentioned statement regarding common ownership, the following objective evidence:
(A) Reference to assignments, which are recorded in the U.S. Patent and Trademark Office in accordance with 37 CFR Part 3, and which convey the entire rights in the applications to the same person(s) or organization(s);
(B) Copies of unrecorded assignments which convey the entire rights in the applications to the same person(s) or organization(s), and which are filed in each of the applications;
(C) An affidavit or declaration by the common owner, which is filed in the application or patent, and which states that there is common ownership, states facts which explain why the affiant or declarant believes there is common ownership, and is properly signed (i.e., the affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization); and
(D) Other evidence, which is submitted in the application or patent, and which establishes common ownership.
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III. EVIDENCE REQUIRED TO ESTABLISH A JOINT RESEARCH AGREEMENT
Once an examiner has established a prima facie case of obviousness under pre-AIA 35 U.S.C. 103(a), the burden of overcoming the rejection by invoking the joint research agreement provisions of pre-AIA 35 U.S.C. 103(c) as amended by the CREATE Act is on the applicant or the patentee. Pre-AIA 35 U.S.C. 103(c)(3) defines a “joint research agreement” as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention, that was in effect on or before the date the claimed invention (under examination or reexamination) was made.
Like the common ownership or assignment provision, the joint research agreement must be shown to be in effect on or before the time the later invention was made. The joint research agreement may be in effect prior to the effective date (December 10, 2004) of the CREATE Act. In addition, the joint research agreement is NOT required to be in effect on or before the prior art date of the reference that is sought to be disqualified.
To overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon subject matter (whether a patent document, publication, or other evidence) which qualifies as prior art under only one or more of pre-AIA 35 U.S.C. 102(e), (f), or (g) via the CREATE Act, the applicant must comply with the statute and the rules of practice in effect.
37 CFR 1.71 Detailed description and specification of the invention.
*****
(g)(1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement as defined in § 1.9(e).
(2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth § 1.17(i) if not filed within one of the following time periods:
(i) Within three months of the filing date of a national application;
(ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
(iii) Before the mailing of a first Office action on the merits; or
(iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.
(3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.
37 CFR 1.104 Nature of examination. *****
(c) Rejection of claims.
*****
(5)
(i) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application filed on or after November 29, 1999, or any patent issuing thereon, in an application filed before November 29, 1999, but pending on December 10, 2004, or any patent issuing thereon, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, at the time the claimed invention was made, were owned by the same person or subject to an obligation of assignment to the same person.
(ii) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application pending on or after December 10, 2004, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect prior to March 16, 2013, if:
(A) The applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention were made by or on behalf of the parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(6) Patents issued prior to December 10, 2004, from applications filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in effect on November 28, 1999.
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*****
37 CFR 1.71(g) provides for the situation in which an application discloses or is amended to disclose the names of the parties to a joint research agreement. 37 CFR 1.71(g)(1) specifically provides that the specification may disclose or be amended to disclose the name of each party to the joint research agreement because this information is required by 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2)(C).
37 CFR1.71(g)(2) provides that an amendment under 37 CFR 1.71(g)(1) must be accompanied by the processing fee set forth in 37 CFR 1.17(i) if it is not filed within one of the following time periods: (1) within three months of the filing date of a national application; (2) within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 in an international application; (3) before the mailing of a first Office action on the merits; or (4) before the mailing of a first Office action after the filing of a request for continued examination under 37 CFR 1.114.
37 CFR 1.71(g)(3) provides that if an amendment under 37 CFR 1.71(g)(1) is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. 37 CFR 1.71(g)(3) also provides that if the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 for the amendment to be effective. The requirements of 37 CFR 1.71(g)(3) (correction of the patent by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323) also apply in the situation in which such an amendment is not filed until after the date the patent was granted (in a patent granted on or after December 10, 2004). It is unnecessary to file a reissue application or request for reexamination of the patent to submit the amendment and other information necessary to take advantage of pre-AIA 35 U.S.C. 103(c) as amended by the CREATE Act. See H.R. Rep. No. 108-425, at 9 (“[t]he omission of the names of parties to the agreement is not an error that would justify commencement of a reissue or reexamination proceeding”).
The submission of such an amendment remains subject to the rules of practice: e.g., 37 CFR 1.116, 1.121, and 1.312. For example, if an amendment under 37 CFR 1.71(g) is submitted in an application under final rejection to overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon a U.S. patent which qualifies as prior art only under pre-AIA 35 U.S.C. 102(e), the examiner may refuse to enter the amendment under 37 CFR 1.71(g) if it is not accompanied by an appropriate terminal disclaimer (37 CFR 1.321(d)). This is because such an amendment may necessitate the reopening of prosecution (e.g., for entry of a double patenting rejection).
If an amendment under 37 CFR 1.71(g) is submitted to overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon a U.S. patent or U.S. patent application publication which qualifies as prior art only under pre-AIA 35 U.S.C. 102(e), and the examiner withdraws the rejection under pre-AIA 35 U.S.C. 103(a), the examiner may need to issue an Office action containing a new double patenting rejection based upon the disqualified patent or patent application publication. In these situations, such Office action can be made final, provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant. This is the case regardless of whether the claims themselves have been amended.
In addition to amending the specification to disclose the names of the parties to the joint research agreement, applicant must submit the required statement to invoke the prior art disqualification under the CREATE Act. 37 CFR 1.104(c)(4) sets forth the requirement for the statement, which includes a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of pre-AIA 35 U.S.C. 103(c)(3), which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within
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the scope of the joint research agreement. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b). As is the case with establishing common ownership, the applicant or patent owner may, but is not required to, present evidence supporting the existence of the joint research agreement.
If the applicant disqualifies the subject matter relied upon by the examiner in accordance with pre-AIA 35 U.S.C. 103(c) as amended by the CREATE Act and the procedures set forth in the rules, the examiner will treat the application under examination and the pre-AIA 35 U.S.C. 102(e), (f), or (g) prior art as if they are commonly owned for purposes of pre-AIA 35 U.S.C. 103(a).
The following examples are provided for illustration only:
Example 1
Company A and University B have a joint research agreement (JRA) in place prior to the date Company A’s invention X' was made. Professor BB from University B communicates invention X to Company A. On November 12, 2004, University B filed a patent application on invention X. On December 13, 2004, Company A filed a patent application disclosing and claiming invention X', which is an obvious variant of invention X. Invention X' was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X and Company A retains ownership of invention X', without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of pre-AIA 35 U.S.C. 103(c) to disqualify University B’s application as prior art in a rejection under pre-AIA 35 U.S.C. 103(a).
Example 2
Professor BB from University B communicates invention X to Company A. On November 12, 2004, University B filed a patent application on invention X. On December 13, 2004, Company A filed a patent application disclosing and claiming invention X', which is an obvious variant of invention X. Company A and University B have a joint research agreement (JRA), which goes into effect on December 20, 2004. University B retains ownership of invention X and Company A retains ownership of invention X', without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of pre-AIA 35 U.S.C. 103(c) to disqualify University B’s application as prior art in a rejection under pre-AIA 35 U.S.C. 103(a) because the JRA was not in effect until after the later invention was made.
Example 3
Company A and University B have a joint research agreement (JRA) in place prior to the date invention X' was made but the JRA is limited to activities for invention Y, which is distinct from invention X. Professor BB from University B communicates invention X to Company A. On November 12, 2004, University B filed a patent application on invention X. On December 13, 2004, Company A filed a patent application disclosing and claiming invention X', which is an obvious variant of invention X. University B retains ownership of invention X and Company A retains ownership of invention X', without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of pre-AIA 35 U.S.C. 103(c) to disqualify University B’s application as prior art in a rejection under pre-AIA 35 U.S.C. 103(a) because the claimed invention was not made as a result of the activities undertaken within the scope of the JRA.
706.02(l)(3) Examination Procedure With Respect to Pre-AIA 35 U.S.C. 103(c) [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 717.02 et seq., 2154.02(c) and 2156 for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
Examiners are reminded that a reference used in an anticipatory rejection under pre-AIA 35 U.S.C. 102(e), (f), or (g) is not disqualified as prior art if evidence is provided to show that the reference is disqualified under pre-AIA 35 U.S.C. 103(c). Generally, such a reference is only disqualified when
(A) proper evidence is filed,
(B) the reference only qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) (e.g., not pre-AIA 35 U.S.C. 102(a) or (b)), and
(C) the reference was used in an obviousness rejection under pre-AIA 35 U.S.C. 103(a).
Applications and patents will be considered to be owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made, if the applicant(s) or patent owner(s) make(s) a statement to the effect that the application and the reference were, at the time the invention was made,
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owned by, or subject to an obligation of assignment to, the same person(s) or organization(s). In order to overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon a reference which qualifies as prior art under only one or more of pre-AIA 35 U.S.C. 102(e), (f), or (g), via the CREATE Act, the applicant must comply with the statute and the rules of practice in effect.
See MPEP § 706.02(l)(2) for additional information pertaining to establishing common ownership.
I. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP ORA JOINT RESEARCH AGREEMENT HAS NOT BEEN ESTABLISHED
If the application file being examined has not established that the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c), the examiner will:
(A) assume the reference is not disqualified under pre-AIA 35 U.S.C. 103(c);
(B) examine the application on all grounds other than any conflict between the reference patent(s) or application(s) arising from a possible 35 U.S.C. 103 rejection based on prior art under pre-AIA 35 U.S.C. 102(e), (f) and/or (g);
(C) consider the applicability of any references under 35 U.S.C. 103 based on prior art under pre-AIA 35 U.S.C. 102(e), (f) and/or (g), including provisional rejections under 35 U.S.C. 103 based on provisional prior art under pre-AIA 35 U.S.C. 102(e); and
(D) apply the best references against the claimed invention by rejections under 35 U.S.C. 102 and 103, including any rejections under 35 U.S.C. 103 based on prior art under pre-AIA 35 U.S.C. 102(e), (f) and/or (g), until such time that the reference is disqualified under pre-AIA 35 U.S.C. 103(c). When applying any references that qualify as prior art under pre-AIA 35 U.S.C. 102(e) in a rejection under 35 U.S.C. 103 against the claims, the examiner should anticipate that the reference may be disqualified under pre-AIA 35 U.S.C. 103(c). See MPEP § 706.02, subsection I. If a statement of common ownership or assignment is filed in reply to the 35 U.S.C. 103 rejection based on prior art under pre-AIA 35 U.S.C. 102(e) and the claims are
not amended, the examiner may not make the next Office action final if a new rejection is made. See MPEP § 706.07(a). If the reference is disqualified under the joint research agreement provision of pre-AIA 35 U.S.C. 103(c) and a new subsequent double patenting rejection based upon the disqualified reference is applied, the next Office action, which contains the new double patenting rejection, may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant.
II. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP ORA JOINT RESEARCH AGREEMENT HAS BEEN ESTABLISHED
If the application being examined has established that the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) the examiner will:
(A) examine the applications as to all grounds, except pre-AIA 35 U.S.C. 102(e), (f) and (g) including provisional rejections based on provisional prior art under pre-AIA 35 U.S.C. 102(e), as they apply through 35 U.S.C. 103;
(B) examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection, if appropriate; and
(C) invite the applicant to file a terminal disclaimer to overcome any provisional or actual nonstatutory double patenting rejection, if appropriate (see 37 CFR 1.321).
III. DOUBLE PATENTING REJECTIONS
Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier application, subject to the conditions discussed in MPEP § 804 et seq. In addition, double patenting rejection may arise as a result of the amendment to pre-AIA 35 U.S.C.
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103(c) by the CREATE Act (Public Law 108-453, 118 Stat. 3596 (2004)). Congress recognized that this amendment to 35 U.S.C. 103(c) would result in situations in which there would be double patenting rejections between applications not owned by the same party (see H.R. Rep. No. 108-425, at 5-6 (2003). For purposes of double patenting analysis, the application or patent and the subject matter disqualified under pre-AIA 35 U.S.C. 103(c) as amended by the CREATE Act will be treated as if commonly owned.
A rejection based on a pending application would be a provisional rejection. The practice of rejecting claims on the ground of double patenting in commonly owned applications of different inventive entities is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See MPEP § 804 for guidance on double patenting issues. In accordance with established patent law doctrines, double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the existing provisions of 37 CFR 1.321, the terminal portion of the term of the later patent and including in the disclaimer a provision that the patent shall be enforceable only for and during the period the patent is commonly owned with the application or patent which formed the basis for the rejection, thereby eliminating the problem of extending patent life. For a double patenting rejection based on a non-commonly owned patent (treated as if commonly owned pursuant to the CREATE Act), the double patenting rejection may be obviated by filing a terminal disclaimer in accordance with 37 CFR 1.321(d). See MPEP §§ 804 and 804.02.
706.02(m) Form Paragraphs for Use in Rejections Under 35 U.S.C. 103 [R-07.2015]
The following form paragraphs should be used in making the appropriate rejections under 35 U.S.C. 103.
¶ 7.06 Notice re prior art available under both pre-AIA and AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Examiner Note:
1. This form paragraph must be used in all Office Actions when a prior art rejection is made in an application with an actual filing date on or after March 16, 2013, that claims priority to, or the benefit of, an application filed before March 16, 2013.
2. This form paragraph should only be used ONCE in an Office action.
¶ 7.20.aia Statement of Statutory Basis, 35 U.S.C. 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. The statute is not to be cited in all Office actions. It is only required in first actions on the merits employing 35 U.S.C. 103 and final rejections. Where the statute is being applied, but is not cited in an action on the merits, use paragraph 7.103.
3. This form paragraph should only be used ONCE in a given Office action.
4. This form paragraph must precede any of form paragraphs 7.20.01.aia, 7.20.02.aia, 7.20.04.aia, 7.20.05.aia, 7.21.aia, 7.21.01.aia, 7.21.02.aia, and 7.22.aia when this form paragraph is used to cite the statute in first actions and final rejections.
¶ 7.20.fti Statement of Statutory Basis, Pre-AIA 35 U.S.C. 103(a)
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time
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the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Examiner Note:
1. The statute is not to be cited in all Office actions. It is only required in first actions on the merits employing pre-AIA 35 U.S.C. 103(a) and final rejections. Where the statute is being applied, but is not cited in an action on the merits, use paragraph 7.103.
2. This form paragraph should only be used ONCE in a given Office action.
3. This form paragraph must precede form paragraphs 7.20.01.fti - 7.22.fti when this form paragraph is used to cite the statute in first actions and final rejections.
¶ 7.20.01.aia 103 Rejection Using Prior Art Excepted Under 102(b)(2)(C) Because Reference is Prior Art Under 102(a)(1)
Applicant has provided evidence in this file showing that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement not later than the effective filing date of the claimed invention. However, although reference [2] has been disqualified as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be disqualified under 35 U.S.C. 102(b)(2)(C).
Applicant may overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art as set forth in 35 U.S.C. 102(b)(1)(A). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be included following form paragraph 7.20.aia or 7.15.aia where the 103 rejection is based on a reference that has since been disqualified under 102(b)(2)(C), but still qualifies as prior art under 35 U.S.C. 102(a)(1).
3. In bracket 1, identify the common assignee.
4. In bracket 2, identify the reference which has been disqualified.
¶ 7.20.01.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Not Disqualified Under Pre-AIA 35 U.S.C. 103(c) Because Reference Is Prior Art Under Another Subsection of Pre-AIA 35 U.S.C. 102
Applicant has provided evidence in this file showing that the invention was owned by, or subject to an obligation of assignment to, the same entity as [1] at the time this invention was made, or was subject to a joint research agreement at the time this invention was made. However, reference [2] qualifies as prior art under another subsection of pre-AIA 35 U.S.C. 102, and therefore is not disqualified as prior art under pre-AIA 35 U.S.C. 103(c).
Applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore, not the invention “by another,” or by antedating the applied art under 37 CFR 1.131(a).
Examiner Note:
1. This form paragraph must be included following form paragraph 7.20.fti in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) using art that is disqualified under pre-AIA 103(c) using pre-AIA 102(e), (f), or (g), but which qualifies under another section of pre-AIA 35 U.S.C. 102.
2. In bracket 1, identify the common assignee.
3. In bracket 2, identify the reference which has been disqualified.
¶ 7.20.02.aia Joint Inventors, Common Ownership Presumed
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were effectively filed absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).
¶ 7.20.02.fti Joint Inventors, Common Ownership Presumed
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the
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examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Examiner Note:
This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).
¶ 7.20.04.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Disqualified Under 35 U.S.C. 102(b)(2)(C) Using the Common Ownership or Assignment Provision
Applicant has attempted to disqualify reference [1] under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time the claimed invention was effectively filed. However, applicant has failed to provide a statement that the claimed invention and the subject matter disclosed were owned by, or subject to an obligation of assignment to, the same person no later than the effective filing date of the claimed invention in a conspicuous manner, and therefore, the reference is not disqualified as prior art under 35 U.S.C. 102(a)(2). Applicant must file the required evidence in order to properly disqualify the reference under 35 U.S.C. 102(b)(2)(C). See generally MPEP § 706.02(l).
In addition, applicant may rely upon the exception under 35 U.S.C. 102(b)(2)(A)to overcome the rejection under 35 U.S.C. 102(a)(2) either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph should be included in all actions containing rejections using 35 U.S.C. 102(a)(2) prior art, whether anticipation or obviousness rejections, where an attempt has been made to disqualify the reference under 35 U.S.C. 102(b)(2)(C), but where the applicant has not provided a proper statement indicating common ownership or assignment not later than the effective filing date of the claimed invention.
3. In bracket 1, identify the commonly owned applied art (e.g., patent or co-pending application).
4. In bracket 2, identify the common assignee.
¶ 7.20.04.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Attempted To Be Disqualified Under pre-AIA 35 U.S.C. 103(c) Using the Common Ownership or Assignment Provision
Applicant has attempted to disqualify reference [1] under pre-AIA 35 U.S.C. 103(c) by showing that the invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time this invention was made. However, applicant has failed to provide a statement that the application and the reference were owned by, or subject to an obligation of assignment to, the same person at the time the invention was made in a conspicuous manner, and therefore, is not disqualified as prior art under pre-AIA 35 U.S.C. 103(a). Applicant must file the required evidence in order to properly disqualify the reference under pre-AIA 35 U.S.C. 103(c). See MPEP § 706.02(l).
In addition, applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore not the invention “by another,” or by antedating the applied art under 37 CFR 1.131(a).
Examiner Note:
1. This form paragraph must be included in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) where an attempt has been made to disqualify the reference under pre-AIA 35 U.S.C. 103(c), but where the applicant has not provided a proper statement indicating common ownership or assignment at the time the invention was made.
2. In brackets 1 and 2, identify the commonly owned applied art (e.g., patent or co-pending application).
¶ 7.20.05.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Disqualified Under 35 U.S.C. 102(b)(2)(C) Using the Joint Research Agreement Provisions of 35 U.S.C. 102(c)
Applicant has attempted to disqualify reference [1] under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was subject to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly disqualify the reference under 35 U.S.C. 102(b)(2)(C). See 37 CFR 1.71(g)(1) and1.104(c)(4)(ii).
In addition, applicant may overcome the rejection either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained, either directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
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Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be included in all actions containing obviousness or anticipation rejections where an attempt has been made to disqualify the 35 U.S.C. 102(a)(2) prior art reference under 35 U.S.C. 102(b)(2)(C) using the joint research agreement provisions but the disqualification attempt is ineffective.
3. In bracket 1, identify the reference which is sought to be disqualified via 35 U.S.C. 102(b)(2)(C).
4. In bracket 2, identify the reason(s) why the disqualification attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of 35 U.S.C. 102(b)(2)(C) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii).
¶ 7.20.05.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Attempted To Be Disqualified Under Pre-AIA 35 U.S.C. 103(c) Using the Joint Research Agreement Provisions
Applicant has attempted to disqualify reference [1] under pre-AIA 35 U.S.C. 103(c) by showing that the invention was subject to a joint research agreement at the time this invention was made. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly disqualify the reference under pre-AIA 35 U.S.C. 103(c). See 37 CFR 1.71(g) and 1.104(c) and MPEP § 706.02(l).
In addition, applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore, not the invention “by another,” or by antedating the applied art under 37 CFR 1.131(a).
Examiner Note:
1. This form paragraph must be included in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) where an attempt has been made to disqualify the reference under pre-AIA 35 U.S.C. 103(c) using the joint research agreement provisions but the disqualification attempt is ineffective.
2. In bracket 1, identify the reference which is sought to be disqualified under pre-AIA 35 U.S.C. 103(c).
3. In bracket 2, identify the reason(s) why the disqualification attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of pre-AIA 35 U.S.C. 103(c) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.104(c)(5)(ii).
¶ 7.21.aia Rejection, 35 U.S.C. 103
Claim [1] is/are rejected under 35 U.S.C. 103 as being unpatentable over [2].
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be preceded by either form paragraph 7.20.aia or form paragraph 7.103.
3. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
4. If this rejection is a provisional 35 U.S.C. 103 rejection based upon a copending application that would constitute prior art under 35 U.S.C. 102(a)(2) if patented or published, use form paragraph 7.21.01.aia instead of this paragraph.
5. In bracket 1, insert the claim numbers which are under rejection.
6. In bracket 2, insert the prior art relied upon.
7. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.21.fti Rejection, Pre-AIA 35 U.S.C. 103(a)
Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2].
Examiner Note:
1. This paragraph must be preceded by either form paragraph 7.20.fti or form paragraph 7.103.
2. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
4. If the applicability of this rejection (e.g., the availability of the prior art as a reference under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b)) prevents the reference from being
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disqualified under pre-AIA 35 U.S.C. 103(c), form paragraph 7.20.01.fti must follow this form paragraph.
5. If this rejection is a provisional pre-AIA 35 U.S.C. 103(a) rejection based upon a copending application that would comprise prior art under pre-AIA 35 U.S.C. 102(e) if patented or published, use form paragraph 7.21.01.fti instead of this paragraph.
6. In bracket 1, insert the claim numbers which are under rejection.
7. In bracket 2, insert the prior art relied upon.
¶ 7.21.01.aia Provisional Rejection, 35 U.S.C. 103, Common Assignee, Common Applicant, or at Least One Common Joint Inventor
Claim [1] is/are provisionally rejected under 35 U.S.C. 103 as being obvious over copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effectively filed date of the copending application, it would constitute prior art under 35 U.S.C. 102(a)(2) if published or patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption of future publication or patenting of the copending application. [4]
This provisional rejection might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention either were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier effectively filed date and also having either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor.
3. If the claimed invention is fully disclosed in the copending application, use form paragraph 7.15.01.aia.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the application number.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional nonstatutory double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.
¶ 7.21.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common Joint Inventor
Claim [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future publication or patenting of the copending application. [4]
This provisional rejection might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the copending application under 37 CFR 1.131(a). This rejection might also be overcome by showing that the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a rejection under pre-AIA 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Examiner Note:
1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier U.S. filing date and also having either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor. This form paragraph should not be used when the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(3).
2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) to determine the copending application's prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) to determine the copending application’s prior art date. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
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3. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01.fti.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the application number.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.
9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the copending application is also prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
b. the copending application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
¶ 7.21.02.aia Rejection, 35 U.S.C. 103, Common Assignee, CommonApplicant, or at Least One Common Joint Inventor
Claim [1] is/are rejected under 35 U.S.C. 103 as being obvious over [2].
The applied reference has a common [3] with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). [4]
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This paragraph is used to reject over a reference (patent or published application) with an earlier effectively filed date that
discloses the claimed invention, and that ONLY qualifies as prior art under 35 U.S.C. 102(a)(2). If the reference qualifies as prior art under 35 U.S.C. 102(a)(1), then this form paragraph should not be used (form paragraph 7.21.aia should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118 ), or at least one common joint inventor. This form paragraph should not be used in applications when the reference is not prior art in view of the 35 U.S.C. 102(b)(2)(C) exception.
3. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
4. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
¶ 7.21.02.fti Rejection, pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common Joint Inventor
Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over [2].
The applied reference has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e). This rejection under pre-AIA 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a); or (3) an oath or declaration under 37 CFR 1.131(c) stating that the application and reference are currently owned by the same party and that the inventor or joint inventors (i.e., the inventive entity) named in the application is the prior inventor under pre-AIA 35 U.S.C. 104 as in effect on March 15, 2013, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a rejection under pre-AIA 35 U.S.C. 103(a). See MPEP §§ 706.02(l)(1) and 706.02(l)(2). [4]
Examiner Note:
1. This paragraph is used to reject over a reference (patent or published application) with an earlier filing date that discloses the claimed invention, and that only qualifies as prior art under pre-AIA 35 U.S.C. 102(e). If the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or (b), then this form paragraph should not be used (form paragraph 7.21.fti should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor. This form paragraph should not be used in applications when the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(3).
2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) must be applied if the reference is by another and is one of the following:
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a. a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
b. a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
c. a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.
3. Pre-AIPA 35 U.S.C. 102(e) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the prior art reference(s) relied upon for the obviousness rejection.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
¶ 7.22.aia Rejection, 35 U.S.C. 103, Further in View Of
Claim [1] is/are rejected under 35 U.S.C. 103 as being unpatentable over [2] as applied to claim [3] above, and further in view of [4].
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be preceded by form paragraph 7.21.aia.
3. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
¶ 7.22.fti Rejection, pre-AIA 35 U.S.C. 103(a), Further in View Of
Claim [1] rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2] as applied to claim [3] above, and further in view of [4].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.21.fti.
2. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c) or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
¶ 7.23.aia Graham v. Deere, Test for Obviousness
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph may be used, if appropriate, in response to an argument regarding the applicability of the Graham v. Deere factors.
¶ 7.23.fti Graham v. Deere, Test for Obviousness
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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Examiner Note:
This form paragraph may be used, if appropriate, in response to an argument regarding the applicability of the Graham v. Deere factors.
¶ 7.27.aia Rejection, 35 U.S.C. 102 or 103
Claim(s) [1] is/are rejected under 35 U.S.C. 102([2]) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over [3].
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph is NOT intended to be commonly used as a substitute for a rejection under 35 U.S.C. 102. In other words, a single rejection under either 35 U.S.C. 102 or 35 U.S.C. 103 should be made whenever possible. Examples of circumstances where this paragraph may be used are as follows:
a. When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under 35 U.S.C. 102 is appropriate and given another interpretation, a rejection under 35 U.S.C. 103 is appropriate. See MPEP §§ 2111 - 2116.01 for guidelines on claim interpretation.
b. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
c. When the reference teaches a small genus which places a claimed species in the possession of the public as in In re Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would have been obvious even if the genus were not sufficiently small to justify a rejection under 35 U.S.C. 102. See MPEP §§ 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus.
d. When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
e. When the reference teaches all claim limitations except a means plus function limitation and the examiner is not certain whether the element disclosed in the reference is an equivalent of the claimed element and therefore anticipatory, or whether the prior art element is an obvious variant of the claimed element. See MPEP §§ 2183 - 2184.
f. When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range. See the concurring opinion in Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See MPEP § 2131.03.
3. If the interpretation of the claim(s) renders the claim(s) indefinite, a rejection under 35 U.S.C. 112(b) may be appropriate.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the appropriate paragraph letter(s) in parenthesis.
6. In bracket 3, insert the prior art reference relied upon for the rejection.
7. A full explanation must follow this form paragraph, i.e., the examiner must provide an explanation of how the claims at issue could be considered to be anticipated, as well as how they could be considered to be obvious.
8. This form paragraph must be preceded by 7.07.aia and 7.08.aia and/or 7.12.aia or by form paragraph 7.103.
9. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.27.fti Rejection, pre-AIA 35 U.S.C. 102 or pre-AIA 103(a)
Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102([2]) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over [3].
Examiner Note:
1. This form paragraph is NOT intended to be commonly used as a substitute for a rejection under pre-AIA 35 U.S.C. 102. In other words, a single rejection under either pre-AIA 35 U.S.C. 102 or pre-AIA 35 U.S.C. 103(a) should be made whenever possible using appropriate form paragraphs 7.15.fti to 7.19.fti, 7.21.fti and 7.22.fti. Examples of circumstances where this paragraph may be used are as follows:
a. When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under pre-AIA 35 U.S.C. 102 is appropriate and given another interpretation, a rejection under pre-AIA 35 U.S.C. 103(a) is appropriate. See MPEP §§ 2111 - 2116.01 for guidelines on claim interpretation.
b. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
c. When the reference teaches a small genus which places a claimed species in the possession of the public as in In re Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the
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species would have been obvious even if the genus were not sufficiently small to justify a rejection under 35 U.S.C. 102. See MPEP §§ 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus.
d. When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
e. When the reference teaches all claim limitations except a means plus function limitation and the examiner is not certain whether the element disclosed in the reference is an equivalent of the claimed element and therefore anticipatory, or whether the prior art element is an obvious variant of the claimed element. See MPEP §§ 2183 - 2184.
f. When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range. See the concurring opinion in Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See MPEP § 2131.03.
2. If the interpretation of the claim(s) renders the claim(s) indefinite, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, may be appropriate.
3. In bracket 1, insert the claim number(s) which is/are under rejection.
4. In bracket 2, insert the appropriate paragraph letter(s) in parenthesis.
5. In bracket 3, insert the prior art reference relied upon for the rejection.
6. A full explanation should follow this form paragraph.
7. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120 , 121 or 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
8. This form paragraph must be preceded by 7.07.fti, one or more of form paragraphs 7.08.fti to 7.14.fti as appropriate, and form paragraph 7.20.fti or by form paragraph 7.103.
9. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application
filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.06.01 Claim Limitation Relating to a Tax Strategy Deemed To Be Within the Prior Art under 35 U.S.C. 102 and/or 103
Claim limitation “[1]” has been interpreted as a strategy for reducing, avoiding, or deferring tax liability (“tax strategy”) pursuant to Section 14 of the Leahy-Smith America Invents Act. Accordingly, this claim limitation is being treated as being within the prior art and is insufficient to differentiate the invention of claim [2] from the prior art.
Examiner Note:
1. In bracket 1, recite the claim limitation that relates to a tax strategy. For more information see MPEP § 2124.01.
2. In bracket 2, insert claim number(s), pluralize “claim” as appropriate.
706.02(n) Biotechnology Process Applications; Pre-AIA 35 U.S.C. 103(b) [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159.]
Pre-AIA 35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
*****
(b)
(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if-
(A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and
(B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.
(2) A patent issued on a process under paragraph (1)-
(A) shall also contain the claims to the composition of matter used in or made by that process, or
(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.
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(3) For purposes of paragraph (1), the term “biotechnological process” means-
(A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to-
(i) express an exogenous nucleotide sequence,
(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
(iii) express a specific physiological characteristic not naturally associated with said organism;
(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and
(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).
*****
Pre-AIA 35 U.S.C. 103(b) is applicable to biotechnological processes only. Pre-AIA 35 U.S.C. 103(b) precludes a rejection of process claims which involve the use or making of certain nonobvious biotechnological compositions of matter under pre-AIA 35 U.S.C. 103(a). Only applications subject to pre-AIA 35 U.S.C. 102 are subject to pre-AIA 35 U.S.C. 103(b). See MPEP § 2159.
Pre-AIA 35 U.S.C. 103(b) requires that:
(A) the biotechnological process and composition of matter be contained in either the same application or in separate applications having the same effective filing date;
(B) both the biotechnological process and composition of matter be owned or subject to an assignment to the same person at the time the process was invented;
(C) a patent issued on the process also contain the claims to the composition of matter used in or made by the process, or, if the process and composition of matter are in different patents, the patents expire on the same date;
(D) the biotechnological process falls within the definition set forth in pre-AIA 35 U.S.C. 103(b); and
(E) a timely election be made to proceed under the provisions of pre-AIA 35 U.S.C. 103(b).
An election to proceed under pre-AIA 35 U.S.C. 103(b) shall be made by way of petition under 37 CFR 1.182. The petition must establish that all the requirements set forth in pre-AIA 35 U.S.C. 103(b) have been satisfied.
An election will normally be considered timely if it is made no later than the earlier of either the payment of the issue fee or the filing of an appeal brief in an application which contains a composition of matter claim which has not been rejected under pre-AIA 35 U.S.C. 102 or 103.
In an application where at least one composition of matter claim has not been rejected under pre-AIA 35 U.S.C. 102 or 103, a pre-AIA 35 U.S.C. 103(b) election may be made by submitting the petition and an amendment requesting entry of process claims which correspond to the composition of matter claim.
For applications pending on or after November 1, 1995, in which the issue fee has been paid prior to March 26, 1996, the timeliness requirement for an election under pre-AIA 35 U.S.C. 103(b) will be considered satisfied if the conditions of 37 CFR 1.312(b) are met. However, if a patent is granted on an application entitled to the benefit of pre-AIA 35 U.S.C. 103(b) without an election having been made as a result of error, patentees may file a reissue application to permit consideration of process claims which qualify for pre-AIA 35 U.S.C. 103(b) treatment. See MPEP § 1412.02, subsection II
.
See MPEP § 2116.01 for a discussion of the Federal Circuit’s decisions in In re Ochiai, 71 F.3d 1565, 37 USPQ 1127 (Fed. Cir. 1995) and In re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996) which address the general issue of whether an otherwise conventional process could be patented if it were limited to making or using a nonobvious product. In view of the Federal Circuit’s decisions in Ochiai and Brouwer, an applicant’s need to rely upon pre-AIA 35 U.S.C. 103(b) should be rare. See also 1184 OG 86 (Comm’r Pat. 1996). See 35 U.S.C. 282 for the effect of a determination of
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nonobviousness under pre-AIA 35 U.S.C. 103(b)(1) on the presumption of validity.
706.03 Rejections Not Based on Prior Art [R-11.2013]
Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved. Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion.
Rejections based on nonstatutory subject matter are explained in MPEP §§ 706.03(a), 2105, 2106, and 2107 - 2107.02. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 706.03(b). Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and subject matter that is directed to a human organism is explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 706.03(k), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 706.03(o) and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 706.03(s). Disclaimer, after interference or public use proceeding, res judicata, and reissue are explained in MPEP §§ 706.03(u) to 706.03(x). Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 - 2174. IF THE LANGUAGE IN THE FORM PARAGRAPHS IS INCORPORATED IN THE OFFICE ACTION TO STATE THE REJECTION, THERE WILL BE LESS
CHANCE OF A MISUNDERSTANDING AS TO THE GROUNDS OF REJECTION.
706.03(a) Rejections Under 35 U.S.C. 101 [R-07.2015]
Patents are not granted for all new and useful inventions and discoveries. The subject matter of the invention or discovery must come within the boundaries set forth by 35 U.S.C. 101, which permits a patent to be granted only for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”
I. DOUBLE PATENTING
35 U.S.C. 101 prevents two patents issuing on the same invention to the same applicant. The “same invention” means that identical subject matter is being claimed. If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims included in more than one application that are directed to the same invention.
See MPEP Chapter 800, specifically MPEP § 804 for criteria relevant to the doctrine of “double patenting.”
II. SUBJECT MATTER ELIGIBILITY
A claimed invention must fall within one of the four categories of invention recited in 35 U.S.C. 101: process, machine, manufacture, or composition of matter, as these categories have been interpreted by the courts. The subject matter which courts have found to be outside of, or exceptions to, the four statutory categories of invention is limited to abstract ideas, laws of nature and natural phenomena (i.e., the judicial exceptions). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 2354, 110 USPQ2d 1976, 1980 (2014) (citing Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. _, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972, 1979 (2013)). See also Bilski v. Kappos, 561 U.S. 593, 601, 130 S. Ct. 3218, 3225, 95 USPQ2d 1001, 1005-06 (2010) (citing Diamond v. Chakrabarty, 447 U.S. 303, 309, 206 USPQ 193, 197 (1980)).
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In addition to the terms "laws of nature," "natural phenomena," and "abstract ideas," judicially recognized exceptions have been described using various other terms, including "physical phenomena," "scientific principles," "systems that depend on human intelligence alone," "disembodied concepts," "mental processes" and "disembodied mathematical algorithms and formulas," for example. The exceptions reflect the courts’view that the basic tools of scientific and technological work are not patentable. “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1852). Instead, such “manifestations of laws of nature” are “part of the storehouse of knowledge,” “free to all men and reserved exclusively to none.” Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948).
See MPEP § 2103, subsection III for a discussion of the breadth of 35 U.S.C. 101, MPEP § 2105 for patent eligibility of living subject matter, and MPEP § 2106 for guidelines pertaining to the analysis of subject matter eligibility in general. See also the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 FR 74618 (Dec. 16, 2014) and related materials available at www.uspto.gov/ patent/laws-and-regulations/examination-policy/ 2014-interim-guidance-subject-matter-eligibility-0.
Eligible subject matter is further limited by the Atomic Energy Act explained in MPEP § 706.03(b), which prohibits patents granted on any invention or discovery that is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.
III. UTILITY
A rejection on the ground of lack of utility is appropriate when (1) it is not apparent why the invention is “useful” because applicant has failed to identify any specific and substantial utility and there is no well established utility, or (2) an assertion of specific and substantial utility for the invention is not credible. Such a rejection can include the more specific grounds of inoperativeness, such as inventions involving perpetual motion. A rejection
under 35 U.S.C. 101 for lack of utility should not be based on grounds that the invention is frivolous, fraudulent or against public policy. See Juicy Whip Inc. v. Orange Bang Inc., 185 F.3d 1364, 1367-68, 51 USPQ2d 1700, 1702-03 (Fed. Cir. 1999) (“[Y]ears ago courts invalidated patents on gambling devices on the ground that they were immoral…, but that is no longer the law…Congress never intended that the patent laws should displace the police powers of the States, meaning by that term those powers by which the health, good order, peace and general welfare of the community are promoted…we find no basis in section 101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool some members of the public.”). The statutory basis for this rejection is 35 U.S.C. 101. See MPEP § 2107 for guidelines governing rejections for lack of utility. See MPEP §§ 2107.01 - 2107.03 for legal precedent governing the utility requirement.
Use Form Paragraphs 8.30, 8.31 and 8.32 for statutory double patenting rejections. Use Form Paragraphs 7.04.01 through 7.05.03 to reject under 35 U.S.C. 101 for failure to claim eligible subject matter and for failure to satisfy the utility requirement.
IV. IMPROPER NAMING OF INVENTOR
Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent laws still require the naming of the actual inventor or joint inventors of the claimed subject matter. See 35 U.S.C. 115(a). The Office presumes that the named inventor or joint inventors in the application are the actual inventor or joint inventors of the claimed invention. See MPEP § 2137.01. Where an application has an incorrect inventorship, the applicant should submit a request to correct inventorship under 37 CFR 1.48. In the rare situation it is clear the application does not name the correct inventorship and the applicant has not filed a request to correct inventorship under 37 CFR 1.48, the examiner should reject the claims under 35 U.S.C. 101 and 35 U.S.C. 115 (and pre-AIA 35 U.S.C. 102(f) for applications subject to pre-AIA 35 U.S.C. 102). Use Form Paragraph 7.04.02.aia to reject under 35 U.S.C. 101 and 115 for failing to set forth the correct inventorship.
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¶ 7.04.101.aia Statement of Statutory Bases, 35 U.S.C. 101 and 35 U.S.C. 115— Improper Inventorship
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 115(a) reads as follows (in part):
An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.
The present application sets forth the incorrect inventorship because [1].
Examiner Note:
1. If form paragraph 7.04.01 is already being used for a rejection that is not based on improper inventorship, then in lieu of this form paragraph, use form paragraph 7.04.102.aia with form paragraph 7.04.01 for a rejection based on improper inventorship.
2. In bracket 1, insert the basis for concluding that the inventorship is incorrect.
3. This form paragraph must be followed by form paragraph 7.04.02.aia.
¶ 7.04.102.aia Statement of Statutory Basis, 35 U.S.C. 115— Improper Inventorship
35 U.S.C. 115(a) reads as follows (in part):
An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.
The present application sets forth the incorrect inventorship because [1].
Examiner Note:
1. This form paragraph is to be used ONLY when a rejection under 35 U.S.C. 101 on another basis has been made and the statutory text thereof is already present.
2. This form paragraph must be preceded by form paragraph 7.04.01 for a rejection based on improper inventorship.
3. In bracket 1, insert an explanation of the supporting evidence establishing that an improper inventor is named.
¶ 7.04.01 Statement of Statutory Basis, 35 U.S.C. 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Examiner Note:
This form paragraph must precede the first use of 35 U.S.C. 101 in all first actions on the merits and final rejections.
¶ 7.04.02.aia Rejection, 35 U.S.C. 101/115
Claim [1] rejected under 35 U.S.C. 101 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.
Examiner Note:
1. In bracket 1, pluralize “Claim” if necessary, insert “is” or “are” as appropriate, and insert the claim number(s) which are under rejection.
2. This rejection must be preceded by either form paragraph 7.04.101.aia or 7.04.102.aia.
¶ 7.04.03 Human Organism
Section 33(a) of the America Invents Act reads as follows
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim [1] rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). [2]
Examiner Note:
1. This paragraph must be preceded by form paragraph 7.04.01 which quotes 35 U.S.C. 101.
2. In bracket 1, pluralize “Claim” if necessary, insert claim number(s), and insert “is” or “are” as appropriate.
3. In bracket 2, explain why the claim is interpreted to read on a human organism.
¶ 7.05 Rejection, 35 U.S.C. 101, -Heading Only- (Utility, Nonstatutory, Inoperative)
Claim [1] rejected under 35 U.S.C. 101 because
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.04.01 in first actions and final rejections.
2. This form paragraph must be followed by a detailed explanation of the grounds of rejection using one or more of form paragraphs 7.05.01, 7.05.015, 7.05.02, 7.05.03, or another appropriate reason.
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3. See MPEP §§ 706.03(a) and 2105 - 2107.03 for additional guidance.
¶ 7.05.01 Rejection, 35 U.S.C. 101, Nonstatutory (Not One of the Four Statutory Categories)
the claimed invention is directed to nonstatutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because [1]
Examiner Note:
1. This form paragraph should be preceded by form paragraph 7.05.
2. In bracket 1, explain why the claimed invention is not patent eligible subject matter by identifying what the claim(s) is/are directed to and explain why it does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (process, machine, manufacture, or composition of matter), e.g., the claim(s) is/are directed to a signal per se, mere information in the form of data, a contract between two parties, or a human being (see MPEP § 2106, subsection I).
3. For a claim that is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) and is nonstatutory, use form paragraph 7.05.015.
¶ 7.05.015 Rejection, 35 U.S.C. 101, Nonstatutory (Directed to a Judicial Exception without Significantly More)
the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim(s) [1] is/are directed to [2]. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because [3].
Examiner Note:
1. This form paragraph should be preceded by form paragraph 7.05.
2. This form paragraph is for use with all claims, including product (machine, manufacture, and composition of matter) and process claims, and for any type of judicial exception.
3. In bracket 1, identify the claim or claims that recite the judicial exception.
4. In bracket 2, identify the exception by referring to how it is recited (set forth or described) in the claim and explain why it is considered an exception. For example, “the Arrhenius equation, which is a law of nature in the form of a mathematical algorithm” or “the series of steps instructing how to hedge risk, which is a fundamental economic practice and thus an abstract idea.” For products of nature, explain how the characteristics are not markedly different from the product’s naturally occurring counterpart in its natural state. For example, “the naturally occurring DNA segment, which is not markedly different from its naturally occurring counterpart because it conveys the same genetic information.” Provide additional explanation regarding the exception and how it has been identified when appropriate.
5. In bracket 3, identify the additional elements and explain why, when considered separately and in combination, they do not add significantly more to the exception. For example, if the claim is directed to an abstract idea with additional generic computer elements explain that the generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation, or if the claim is directed to a method of using a naturally occurring correlation explain that steps for routine data gathering in order to test for the correlation do not add a meaningful limitation to the method as they would be routinely used by those of ordinary skill in the art in order to apply the correlation.
¶ 7.05.02 Rejection, 35 U.S.C. 101, Utility Lacking
the claimed invention lacks patentable utility. [1]
Examiner Note:
In bracket 1, provide explanation of lack of utility. See MPEP §§ 706.03(a) and 2105 - 2107.03.
¶ 7.05.03 Rejection, 35 U.S.C. 101, Inoperative
the disclosed invention is inoperative and therefore lacks utility. [1]
Examiner Note:
In bracket 1, explain why invention is inoperative.
¶ 7.05.04 Utility Rejections Under 35 U.S.C. 101 and 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), First Paragraph
Claim [1] rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a [2] asserted utility or a well established utility.
[3]
Claim [4] also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a [5] asserted utility or a well established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
Examiner Note:
1. Where the specification would not enable one skilled in the art to make the claimed invention, or where alternative reasons support the enablement rejection, a separate rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, enablement should be made using the factors set forth in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) and an undue experimentation analysis. See MPEP §§ 2164 - 2164.08(c).
2. Use Format A, B, or C below as appropriate.
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Format A:
(a) Insert the same claim numbers in brackets 1 and 4.
(b) Insert --specific and substantial-- in inserts 2 and 5.
(c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility or a well established utility.
(d) Format A is to be used when there is no asserted utility and when there is an asserted utility but that utility is not specific and substantial.
Format B:
(a) Insert the same claim numbers in brackets 1 and 4.
(b) Insert --credible-- in inserts 2 and 5.
(c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a credible asserted utility or a well established utility.
Format C:
For claims that have multiple utilities, some of which are not specific and substantial, some of which are not credible, but none of which are specific, substantial and credible:
(a) Insert the same claim numbers in brackets 1 and 4.
(b) Insert --specific and substantial asserted utility, a credible-- in inserts 2 and 5.
(c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility, a credible asserted utility or a well established utility. Each utility should be addressed.
706.03(b) Barred by Atomic Energy Act [R-08.2012]
A limitation on what can be patented is imposed by the Atomic Energy Act of 1954. Section 151(a) (42 U.S.C. 2181(a)) thereof reads in part as follows:
No patent shall hereafter be granted for any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.
The terms “atomic energy” and “special nuclear material” are defined in Section 11 of the Act (42 U.S.C. 2014).
Sections 151(c) and 151(d) (42 U.S.C. 2181(c) and (d)) set up categories of pending applications relating to atomic energy that must be brought to the attention of the Department of Energy. Under 37 CFR 1.14(d), applications for patents which disclose or which appear to disclose, or which purport to disclose, inventions or discoveries relating to atomic energy are reported to the Department of Energy and the Department will be given access to such applications, but such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or an invention or discovery or that such application in fact discloses subject matter in categories specified by the Atomic Energy Act.
All applications received in the U.S. Patent and Trademark Office are screened by Technology Center (TC) work group 3640 personnel, under 37 CFR 1.14(d), in order for the Director to fulfill his or her responsibilities under section 151(d) (42 U.S.C. 2181(d)) of the Atomic Energy Act. Papers subsequently added must be inspected promptly by the examiner when received to determine whether the application has been amended to relate to atomic energy and those so related must be promptly forwarded to Licensing and Review in TC work group 3640.
All rejections based upon sections 151(a)(42 U.S.C. 2181(a)), 152 (42 U.S.C. 2182), and 155 (42 U.S.C. 2185) of the Atomic Energy Act must be made only by TC work group 3640 personnel.
706.03(c) Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph [R-07.2015]
Rejections based on 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112 are discussed in MPEP §§ 2161 - 2165.04. For a discussion of the utility requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, first paragraph, and 35 U.S.C. 101, see MPEP §§ 2107 - 2107.03. The appropriate form paragraphs 7.30.01 and 7.31.01 through 7.33.01 should be used in making rejections under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112.
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§ 706.03(c)EXAMINATION OF APPLICATIONS
¶ 7.30.01 Statement of Statutory Basis, 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Examiner Note:
1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.
2. Form paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action.
¶ 7.31.01 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Description Requirement, Including New Matter Situations
Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. [2]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.
2. In bracket 2, identify (by suitable reference to page and line numbers and/or drawing figures) the subject matter not properly described in the application as filed, and provide an explanation of your position. The explanation should include any questions the examiner asked which were not satisfactorily resolved and consequently raise doubt as to possession of the claimed invention at the time of filing.
Form paragraph 7.31.02 should be used when it is the examiner’s position that nothing within the scope of the claims is enabled. In such a rejection, the examiner should explain all the reasons why nothing within the scope of the claim is enabled. To make sure all relevant issues are raised, this should include any issues regarding the breadth of the claims relative to the guidance in the disclosure.
¶ 7.31.02 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Enablement
Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. [2]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.
2. If the problem is one of scope, form paragraph 7.31.03 should be used.
3. In bracket 2, identify the claimed subject matter for which the specification is not enabling. Also explain why the specification is not enabling, applying the factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP §§ 2164.01(a) and 2164.04. The explanation should include any questions the examiner may have asked which were not satisfactorily resolved and consequently raise doubt as to enablement.
4. Where an essential component or step of the invention is not recited in the claims, use form paragraph 7.33.01.
Form paragraph 7.31.03 should be used when it is the examiner’s position that something within the scope of the claims is enabled but the claims are not limited to that scope.
¶ 7.31.03 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph: Scope of Enablement
Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the specification, while being enabling for [2], does not reasonably provide enablement for [3]. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to [4] the invention commensurate in scope with these claims. [5]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.
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2. This form paragraph is to be used when the scope of the claims is not commensurate with the scope of the enabling disclosure.
3. In bracket 2, identify the claimed subject matter for which the specification is enabling. This may be by reference to specific portions of the specification.
4. In bracket 3, identify aspect(s) of the claim(s) for which the specification is not enabling.
5. In bracket 4, fill in only the appropriate portion of the statute, i.e., one of the following: --make--, --use--, or --make and use--.
6. In bracket 5, identify the claimed subject matter for which the specification is not enabling. Also explain why the specification is not enabling, applying the factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP §§ 2164.01(a) and 2164.04. The explanation should include any questions posed by the examiner which were not satisfactorily resolved and consequently raise doubt as to enablement.
¶ 7.31.04 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph: Best Mode Requirement
Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the best mode contemplated by the inventor or a joint inventor, or for pre-AIA the inventor(s) has not been disclosed. Evidence of concealment of the best mode is based upon [2].
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.
2. In bracket 2, insert the basis for holding that the best mode has been concealed, e.g., the quality of applicant’s disclosure is so poor as to effectively result in concealment.
3. Use of this form paragraph should be rare. See MPEP §§ 2165- 2165.04.
Form paragraph 7.33.01 should be used when it is the examiner’s position that a feature considered critical or essential by applicant to the practice of the claimed invention is missing from the claim.
¶ 7.33.01 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Essential Subject Matter Missing From Claims (Enablement)
Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without [2], which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). [3]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.
2. In bracket 2, recite the subject matter omitted from the claims.
3. In bracket 3, give the rationale for considering the omitted subject matter critical or essential.
4. The examiner shall cite the statement, argument, date, drawing, or other evidence which demonstrates that a particular feature was considered essential by the applicant, is not reflected in the claims which are rejected.
706.03(d) Rejections Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph [R-07.2015]
Rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, are discussed in MPEP §§ 2171 - 2174 and 2181, subsection II. Form paragraphs 7.30.02, 7.34 through 7.34.19, 7.35 and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
¶ 7.30.02 Statement of Statutory Basis, 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, Second Paragraph
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of pre-AIA 35 U.S.C. 112, second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Examiner Note:
1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.
2. Paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action.
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§ 706.03(d)EXAMINATION OF APPLICATIONS
¶ 7.34 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Claim Inventor’s Invention
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as their invention. Evidence that claim [2] fail(s) to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as the invention can be found in the reply filed [3]. In that paper, the inventor or a joint inventor, or for pre-AIA the applicant has stated [4], and this statement indicates that the invention is different from what is defined in the claim(s) because [5].
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. This paragraph is to be used only where inventor or applicant has stated, somewhere other than in the application, as filed, that the invention is something different from what is defined in the claim(s).
3. In bracket 3, identify the submission by inventor or applicant (which is not the application, as filed, but may be in the remarks by applicant, in the brief, in an affidavit, etc.) by the date the paper was filed in the USPTO.
4. In bracket 4, set forth what inventor or applicant has stated in the submission to indicate a different invention.
5. In bracket 5, explain how the statement indicates an invention other than what is being claimed.
¶ 7.34.01 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point out and Distinctly Claim (Indefinite)
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. This form paragraph should be followed by one or more of the following form paragraphs 7.34.02 - 7.34.11, as applicable. If none of these form paragraphs are appropriate, a full explanation of the deficiency of the claims should be supplied. Whenever possible, identify the particular term(s) or limitation(s) which render the claim(s) indefinite and state why such term or limitation renders the claim indefinite. If the scope of the claimed subject matter can be determined by one having ordinary skill in the art, a rejection using this form paragraph would not be appropriate. See MPEP §§ 2171 - 2174 for guidance. See also form paragraph 7.34.15 for pro se applicants.
¶ 7.34.02 Terminology Used Inconsistent with Accepted Meaning
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “[1]” in claim [2] is used by the claim to mean “[3],” while the accepted meaning is “[4].” The term is indefinite because the specification does not clearly redefine the term.
Examiner Note:
1. In bracket 3, point out the meaning that is assigned to the term by applicant’s claims, taking into account the entire disclosure.
2. In bracket 4, point out the accepted meaning of the term. Support for the examiner’s stated accepted meaning should be provided through the citation of an appropriate reference source, e.g., textbook or dictionary. See MPEP § 2173.05(a).
3. This paragraph must be preceded by form paragraph 7.34.01.
4. This paragraph should only be used where the specification does not clearly redefine the claim term at issue.
¶ 7.34.03 Relative Term - Term of Degree Rendering Claim Indefinite
The term “[1]” in claim [2] is a relative term which renders the claim indefinite. The term “[1]” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. [3]
Examiner Note:
1. In bracket 3, explain which parameter, quantity, or other limitation in the claim has been rendered indefinite by the use of the term appearing in bracket 1.
2. This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.04 Broader Range/Limitation And Narrow Range/Limitation in Same Claim
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by “such as” and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a
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required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). In the present instance, claim [1] recites the broad recitation [2], and the claim also recites [3] which is the narrower statement of the range/limitation.
Examiner Note:
1. In bracket 2, insert the broader range/limitation and where it appears in the claim; in bracket 3, insert the narrow range/limitation and where it appears. This form paragraph may be modified to fit other instances of indefiniteness in the claims.
2. This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.05 Lack of Antecedent Basis in the Claims
Claim [1] recites the limitation [2] in [3]. There is insufficient antecedent basis for this limitation in the claim.
Examiner Note:
1. In bracket 2, insert the limitation which lacks antecedent basis, for example --said lever-- or --the lever--.
2. In bracket 3, identify where in the claim(s) the limitation
appears, for example, --line 3--, --the 3rd paragraph of the claim--, --the last 2 lines of the claim--, etc.
3. This form paragraph should ONLY be used in aggravated situations where the lack of antecedent basis makes the scope of the claim indeterminate. It must be preceded by form paragraph 7.34.01.
¶ 7.34.06 Use Claims
Claim [1] provides for the use of [2], but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claim [3] is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Examiner Note:
1. In bracket 2, insert what is being used. For example, insert --the monoclonal antibodies of claim 4--, where the claim recites “a method for using monoclonal antibodies of claim 4 to purify interferon.”
2. See MPEP § 2173.05(q).
3. This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.07 Claims Are a Literal Translation
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.08 Indefinite Claim Language: “For Example”
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.09 Indefinite Claim Language: “Or The Like”
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.10 Indefinite Claim Language: “Such As”
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.11 Modifier of “Means” Lacks Function
Claim [1] uses the word “means” or a generic placeholder as a substitute for “means” and is preceded by the word(s) “[2].” It is unclear whether these words convey function or structure. A limitation construed under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph must not recite the structure for performing the function. Since no clear function is specified by the word(s) preceding “means,” it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967).
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Examiner Note:
1. This paragraph should be used when words precede the term “means” or a substitute for “means” and it cannot be determined from the specification whether those words connote function or structure. Therefore, it is unclear whether the presumption is rebutted that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is being invoked. If the claim element recites structure for performing the function, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph will not be invoked. It is necessary for the words which precede “means” to convey a function to be performed and not recite structure to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
2. This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.12 Essential Steps Omitted
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. In bracket 2, recite the steps omitted from the claims.
3. Give the rationale for considering the omitted steps critical or essential.
¶ 7.34.13 Essential Elements Omitted
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. In bracket 2, recite the elements omitted from the claims.
3. Give the rationale for considering the omitted elements critical or essential.
¶ 7.34.14 Essential Cooperative Relationships Omitted
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: [2]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. In bracket 2, recite the structural cooperative relationships of elements omitted from the claims.
3. Give the rationale for considering the omitted structural cooperative relationships of elements being critical or essential.
¶ 7.34.15 Rejection Under 35 U.S.C. 112, Pro Se
Claim [1] rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
¶ 7.34.16 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Unclear Whether the Recited Structure, Material, or Acts in the Claim Preclude Application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph
The claim limitation “[1]” uses the phrase “means for” or “step for” or a generic placeholder coupled with functional language, but it is modified by some structure, material, or acts recited in the claim. It is unclear whether the recited structure, material, or acts are sufficient for performing the claimed function because [2].
If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that the phrase “means for” or “step for” or the generic placeholder is clearly not modified by sufficient structure, material, or acts for performing the claimed function, or may present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function.
If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph
Examiner Note:
1. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
2. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., why it is unclear whether the limitation recites sufficient structure, material, or acts to preclude the application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.)
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3. This form paragraph may be used when the phrase “means for” or “step for” is used in the claim limitation and it is unclear to one of ordinary skill in the art whether the recited structure, material, or acts in the claim are sufficient for performing the claimed function.
4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.
¶ 7.34.17 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Applicant Asserts that Claim Limitation Is Invoking 35 U.S.C. 112(f) or pre-AIA 35 US.C. 112, Sixth Paragraph, but the Phrase “Means for” or “Step for” Is Not Used
Applicant asserts that the claim element “[1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because [2]. If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
(a) Amend the claim to include the phrase “means for” or “step for”. The phrase “means for” or “step for” must be modified by functional language, and the phrase or term must not be modified by sufficient structure, material, or acts for performing the claimed function; or
(b) Present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.
Examiner Note:
1. This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation is invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, even though the phrase “means for” or “step for” is not used in the claim limitation. See MPEP § 707.07(a) for guidance on when the second action may be made final.
2. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
3. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function or it is unclear whether the corresponding structure is sufficiently disclosed in the written description of the specification.
4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.
¶ 7.34.18 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, No Disclosure or Insufficient Disclosure of the Structure, Material, or Acts for Performing
the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112, Sixth Paragraph
Claim element “[1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. [2]
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Examiner Note:
1. In bracket 1, recite the limitation that invokes 35 U.S.C. 112, sixth paragraph.
2. In bracket 2, explain why there is insufficient disclosure of the corresponding structure, material, or acts for performing the claimed function.
3. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.
¶ 7.34.19 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Fails To Clearly Link or Associate the Disclosed Structure, Material, or Acts to the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph
Claim element “[1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function. [2]
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Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function. For more information, see 37 CFR 1.175(d) and MPEP §§ 608.01(o) and 2181 .
Examiner Note:
1. In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
2. In bracket 2, explain why the written description of the specification fails to clearly link or associate the structure, material, or acts to the claimed function.
3. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.
¶ 7.35 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point out and Distinctly Claim - Omnibus Claim
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. Use this paragraph to reject an “omnibus” type claim. No further explanation is necessary.
3. See MPEP § 1302.04(b) for cancellation of such a claim by examiner’s amendment upon allowance.
4. An example of an omnibus claim is: “A device substantially as shown and described.”
¶ 7.35.01 Trademark or Trade Name as a Limitation in the Claim
Claim [1] contains the trademark/trade name [2]. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods,
and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/description is indefinite.
Examiner Note:
1. In bracket 2, insert the trademark/trade name and where it is used in the claim.
2. In bracket 3, specify the material or product which is identified or described in the claim by the trademark/trade name.
706.03(e) Form Paragraphs for Use Relating to 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph [R-07.2015]
Form paragraphs 7.30.03.h, 7.30.03, 7.30.04, and 7.34.20 - 7.34.22 should be used when a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See MPEP § 2181. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph relating to 35 U.S.C. 112(f) or 35 U.S.C. 112, sixth paragraph, use form paragraphs 7.34.16 to 7.34.19, reproduced in MPEP § 706.03(d).
¶ 7.30.03.h Header for Claim Interpretation
CLAIM INTERPRETATION
Examiner Note:
This form paragraph may precede form paragraph 7.30.03.
¶ 7.30.03 Statement of Statutory Basis, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph
The following is a quotation of 35 U.S.C. 112(f):
(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the
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corresponding structure, material, or acts described in the specification and equivalents thereof.
Examiner Note:
1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.
2. Use this paragraph ONLY ONCE in a given Office action when claim elements use “means” (or “step for”) or otherwise invoke treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
3. This form paragraph must be followed with form paragraph 7.30.04.
¶ 7.30.04 Use of “Means” (or “Step for”) in Claim Drafting and Rebuttable Presumptions Raised
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
Examiner Note:
1. Use this paragraph ONLY ONCE in a given Office action when claim elements use “means” (or “step for”) or otherwise invoke treatment under 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) by using a substitute term for “means” that serves as a generic placeholder.
2. This paragraph must be preceded with form paragraph 7.30.03 unless already cited in a previous Office action.
3. An explanation should be provided when the presumptions raised are rebutted by the claim language, for example by using “means” in a claim element along with definite structure that performs the function or by not using “means” and failing to recite structure that performs the function.
4. This paragraph may be followed by form paragraphs 7.34.11, 7.34.16, 7.34.18, 7.34.19, 7.34.20, 7.34.21, as appropriate.
¶ 7.34.20 The Specification Is Objected To; the Written Description Only Implicitly or Inherently Discloses the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph
Claim element “[1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The written description only implicitly or inherently sets forth the corresponding structure, material, or acts that perform the claimed function.
Pursuant to 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181, applicant should:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites the corresponding structure, material, or acts that perform the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) State on the record what corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function.
Examiner Note:
In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
¶ 7.34.21 Claim Limitation Interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph
Claim limitation(s) “[1]” has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “[2]” coupled with functional language “[3]” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. [4].
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) [5] has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: [6].
If applicant wishes to provide further explanation or dispute the examiner's interpretation of the corresponding structure,
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applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining
Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Examiner Note:
1. Use this form paragraph ONLY when additional explanation regarding treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is necessary. For example, use this paragraph if clarification is needed when a claim element does not use the word “means” but no structure for performing the function is recited in the claim itself or when the associated structure in the specification for performing the function is needs explanation. If the claim element clearly invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph and the corresponding structure is easily identified in the specification for performing the claimed function, it is not necessary to use this form paragraph.
2. This paragraph may be used to explain more than one claim when multiple claims recite similar language or raise similar issues.
3. In bracket 1, recite the claim limitation that has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
4. In bracket 2, recite the generic placeholder that is merely a substitute for the term “means.”
5. In bracket 3, recite the functional language.
6. In bracket 4, provide an explanation, if appropriate, why the generic placeholder is not recognized as the name of a structure but is merely a substitute for the term “means.”
7. In bracket 5, recite the claim number(s) of the claim(s) that contains/contain the claim limitation.
8. In bracket 6, recite the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters.
¶ 7.34.22 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, Applicant Asserts that Claim Limitation Does Not Invoke 35 U.S.C. 112(f) or pre-AIA 35
U.S.C. 112, 6th Paragraph, but No Structure is Recited to Perform the Claimed Function
Applicant asserts that the claim element “[1]” is a limitation that does not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th paragraph because [2]. If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th Paragraph applicant may:
(a) Amend the claim to add structure, material or acts that are sufficient to perform the claimed function; or
(b) Present a sufficient showing that the claim limitation recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.
Examiner Note:
1. This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation does not invoke 35 U.S.C. 112(f), even though no structure is provided in the claim limitation for performing the function. See MPEP § 706.07(a) for guidance on when the second action may be made final.
2. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
3. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function.
4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.
706.03(f) -706.03(j) [Reserved]
706.03(k) Duplicate Claims [R-08.2012]
Inasmuch as a patent is supposed to be limited to only one invention or, at most, several closely related indivisible inventions, limiting an application to a single claim, or a single claim to each of the related inventions might appear to be logical as well as convenient. However, court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough.
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Nevertheless, when two claims in an application are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim.
Form paragraphs 7.05.05 and 7.05.06 may be used where duplicate claims are present in an application.
¶ 7.05.05 Duplicate Claims, Warning
Applicant is advised that should claim [1] be found allowable, claim [2] will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).
Examiner Note:
1. Use this form paragraph whenever two claims are found to be substantial duplicates, but they are not allowable. This will give the applicant an opportunity to correct the problem and avoid a later objection.
2. If the claims are allowable, use form paragraph 7.05.06.
¶ 7.05.06 Duplicate Claims, Objection
Claim [1] objected under 37 CFR 1.75 as being a substantial duplicate of claim [2]. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).
Examiner Note:
If the duplicate claims are not allowable, use form paragraph 7.05.05.
See MPEP § 804 for double patenting rejections of inventions not patentable over each other.
706.03(l) [Reserved]
706.03(m) Nonelected Inventions [R-08.2012]
See MPEP § 821 to § 821.03 for treatment of claims held to be drawn to nonelected inventions.
706.03(n) [Reserved]
706.03(o) New Matter [R-08.2012]
35 U.S.C. 132 Notice of rejection; reexamination.
(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.
*****
In amended cases, subject matter not disclosed in the original application is sometimes added and a claim directed thereto. Such a claim is rejected on the ground that it recites elements without support in the original disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). See MPEP § 2163.06 - § 2163.07(b) for a discussion of the relationship of new matter to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method. See MPEP § 608.04 to § 608.04(c). See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and MPEP § 2163.05 for guidance in determining whether the addition of specific percentages or compounds after a broader original disclosure constitutes new matter.
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§ 706.03(o)EXAMINATION OF APPLICATIONS
In the examination of an application following amendment thereof, the examiner must be on the alert to detect new matter. 35 U.S.C. 132(a) should be employed as a basis for objection to amendments to the abstract, specification, or drawings attempting to add new disclosure to that originally disclosed on filing.
If subject matter capable of illustration is originally claimed and it is not shown in the drawing, the claim is not rejected but applicant is required to add it to the drawing. See MPEP § 608.01(l).
If new matter is added to the specification, it should be objected to by using Form Paragraph 7.28.
¶ 7.28 Objection to New Matter Added to Specification
The amendment filed [1] is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: [2].
Applicant is required to cancel the new matter in the reply to this Office action.
Examiner Note:
1. This form paragraph is not to be used in reissue applications; use form paragraph 14.22.01 instead.
2. In bracket 2, identify the new matter by page and the line numbers and/or drawing figures and provide an appropriate explanation of your position. This explanation should address any statement by applicant to support the position that the subject matter is described in the specification as filed. It should further include any unresolved questions which raise a doubt as to the possession of the claimed invention at the time of filing.
3. If new matter is added to the claims, or affects the claims, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, using form paragraph 7.31.01 should also be made. If new matter is added only to a claim, an objection using this paragraph should not be made, but the claim should be rejected using form paragraph 7.31.01. As to any other appropriate prior art or 35 U.S.C. 112 rejection, the new matter must be considered as part of the claimed subject matter and cannot be ignored.
706.03(p)
-706.03(r) [Reserved]
706.03(s) Foreign Filing Without License [R-11.2013]
35 U.S.C. 182 Abandonment of invention for unauthorized disclosure.
The invention disclosed in an application for patent subject to an order made pursuant to section 181 may be held abandoned upon its being established by the Commissioner of Patents that in violation of said order the invention has been published or disclosed or that an application for a patent therefor has been filed in a foreign country by the inventor, his successors, assigns, or legal representatives, or anyone in privity with him or them, without the consent of the Commissioner of Patents. The abandonment shall be held to have occurred as of the time of violation. The consent of the Commissioner of Patents shall not be given without the concurrence of the heads of the departments and the chief officers of the agencies who caused the order to be issued. A holding of abandonment shall constitute forfeiture by the applicant, his successors, assigns, or legal representatives, or anyone in privity with him or them, of all claims against the United States based upon such invention.
35 U.S.C. 184 Filing of application in foreign country.
(a) FILING IN FOREIGN COUNTRY.—Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and the application does not disclose an invention within the scope of section 181.
(b) APPLICATION.—The term “application” when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.
(c) SUBSEQUENT MODIFICATIONS,AMENDMENTS, AND SUPPLEMENTS.—The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not change the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181. In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United States
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application was not required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require the United States application to have been made available for inspection under such section 181.
35 U.S.C. 185 Patent barred for filing without license.
Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error, and the patent does not disclose subject matter within the scope of section 181.
If, upon examining an application, the examiner learns of the existence of a corresponding foreign application which appears to have been filed before the United States application had been on file for 6 months, and if the invention apparently was made in this country, he or she shall refer the application to Licensing and Review Section of Technology Center (TC) working group 3640, calling attention to the foreign application. Pending investigation of the possible violation, the application may be returned to the TC for prosecution on the merits. When it is otherwise in condition for allowance, the application will be again submitted to Licensing and Review Section of TC work group 3640 unless the latter has already reported that the foreign filing involves no bar to the United States application.
If it should be necessary to take action under 35 U.S.C. 185, Licensing and Review Section of TC work group 3640 will request transfer of the application to it.
706.03(t) [Reserved]
706.03(u) Disclaimer [R-07.2015]
Claims may be rejected on the ground that applicant has disclaimed the subject matter involved. Such disclaimer may arise, for example, from the applicant’s failure to:
(A) make claims suggested for interference with another application under 37 CFR 41.202(c) (See MPEP Chapter 2300 ),
(B) copy a claim from a patent when suggested by the examiner (MPEP Chapter 2300 ), or
(C) respond or appeal, within the time limit fixed, to the examiner’s rejection of claims copied from a patent (see MPEP Chapter 2300).
The rejection on disclaimer applies to all claims not patentably distinct from the disclaimed subject matter as well as to the claims directly involved.
Rejections based on disclaimer should be made by using one of Form Paragraphs 7.48.aia, 7.48.fti and 7.49.
¶ 7.48.aia Failure To Present Claims for Interference
Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].
Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act, and the application also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013, or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
2. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.
3. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.
4. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 102(g)/103(a), the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.
5. This form paragraph must be preceded by form paragraph 7.14.aia, or by form paragraph 7.103.
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§ 706.03(u)EXAMINATION OF APPLICATIONS
¶ 7.48.fti Failure To Present Claims for Interference
Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].
Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).
Examiner Note:
1. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.
2. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.
3. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 103(a), the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.
¶ 7.49 Rejection, Disclaimer, Failure To Appeal
An adverse judgment against claim [1] has been entered by the Board. Claim [2] stand(s) finally disposed of for failure to reply to or appeal from the examiner’s rejection of such claim(s) presented for interference within the time for appeal or civil action specified in 37 CFR 90.3. Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently. See 37 CFR 41.127(a)(2).
706.03(v) After Interference or Former Public Use Proceeding [R-11.2013]
For rejections following an interference, see MPEP Chapter 2300.
The outcome of public use proceedings may also be the basis of a rejection. See 37 CFR 1.292 in effect on September 15, 2012, and In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983). Public use proceedings, effective September 16, 2012, are no longer authorized. For certain patents, prior public use may be raised in a post-grant review proceeding. See 35 U.S.C. 321-329. Information on prior public use may continue to be submitted by third parties via a protest in a pending application when the requirements of 37 CFR 1.291 have been met, and utilization of 37 CFR 1.291 will promote Office
efficiency with respect to treatment of these issues. See MPEP § 1901.02.
706.03(w) Res Judicata [R-11.2013]
Res judicata may constitute a proper ground for rejection. However, res judicata rejections should be applied only when the earlier decision was a decision of the Patent Trial and Appeal Board (or its predecessor Board) or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decision.
The timely filing of a second application copending with an earlier application does not preclude the use of res judicata as a ground of rejection for the second application claims. A patent owner or applicant is precluded from seeking a claim that is not patentably distinct from a claim that was finally refused or canceled during an administrative trial. Similarly, a patent owner is precluded from seeking an amendment of a specification or drawing that was denied entry during a trial if the application or patent for which the amendment is sought has the same written description as the patent or application that was the subject of the administrative trial. See 37 CFR 42.73(d)(3).
When making a rejection on res judicata, action should ordinarily be made also on the basis of prior art, especially in continuing applications. In most situations the same prior art which was relied upon in the earlier decision would again be applicable.
In the following cases a rejection of a claim on the ground of res judicata was sustained where it was based on a prior adjudication, against the inventor on the same claim, a patentably nondistinct claim, or a claim involving the same issue.
In re Freeman, 30 F.3d 1459, 31 USPQ 2d 1444 (Fed. Cir. 1994).
Edgerton v. Kingland, 168 F. 2d 121, 75 USPQ 307 (D.C. Cir. 1947).
In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 1963).
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In re Katz, 467 F.2d 939, 167 USPQ 487 (CCPA 1970) (prior decision by District Court).
In the following cases for various reasons, res judicata rejections were reversed.
In re Fried, 312 F.2d 930, 136 USPQ 429 (CCPA 1963) (differences in claims).
In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 1963) (differences in claim).
In re Hellbaum, 371 F.2d 1022, 152 USPQ 571 (CCPA 1967) (differences in claims).
In re Herr, 377 F.2d 610, 153 USPQ 548 (CCPA 1967) (same claims, new evidence, prior decision by CCPA).
In re Kaghan, 387 F.2d 398, 156 USPQ 130 (CCPA 1967) (prior decision by Board of Appeals, final rejection on prior art withdrawn by examiner “to simplify the issue,” differences in claims; holding of waiver based on language in MPEP at the time).
In re Craig, 411 F.2d 1333, 162 USPQ 157 (CCPA 1969) (Board of Appeals held second set of claims patentable over prior art).
In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 1970) (difference in claims).
In re Russell, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971) (new evidence, rejection on prior art reversed by court).
In re Ackermann, 444 F.2d 1172, 170 USPQ 340 (CCPA 1971) (prior decision by Board of Appeals, new evidence, rejection on prior art reversed by court).
Plastic Contact Lens Co. v. Gottschalk, 484 F.2d 837, 179 USPQ 262 (D.C. Cir. 1973) (follows In re Kaghan).
706.03(x) Reissue [R-11.2013]
The examination of reissue applications is covered in MPEP Chapter 1400.
35 U.S.C. 251 forbids the granting of a reissue “enlarging the scope of the claims of the original patent” unless the reissue is applied for within 2 years from the grant of the original patent (or the reissue application properly claims the benefit of a broadening reissue application filed within 2 years of the patent grant). This is an absolute bar and cannot be excused. This prohibition has been interpreted to apply to any claim which is broader in any respect than the claims of the original patent. Such claims may be rejected as being barred by 35 U.S.C. 251.
For a reissue application filed prior to September 16, 2012, 35 U.S.C. 251 permits the filing of a reissue application by the assignee of the entire interest only in cases where it does not “enlarge the scope of the claims of the original patent.” For reissue applications filed on or after September 16, 2012, the assignee of the entire interest may file the reissue application if (1) the application does not seek to enlarge the scope of the claims of the original patent, or (2) the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest. Such claims which do enlarge the scope may also be rejected as barred by the statute. In In re Bennett, 766 F.2d 524, 226 USPQ 413 (Fed. Cir. 1985), however, the court permitted the erroneous filing by the assignee in such a case to be corrected.
A defective reissue oath affords a ground for rejecting all the claims in the reissue application. See MPEP § 1444.
Note that a reissue application is “special” and remains so even if applicant does not make a prompt reply. See MPEP § 1442.
706.04 Rejection of Previously Allowed Claims [R-11.2013]
A claim noted as allowable may be rejected only after a primary examiner has considered all the facts. An Office action rejecting a previously allowed claim must be signed by a primary examiner. See MPEP § 1004.
Great care should be exercised in making such a rejection.
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§ 706.04EXAMINATION OF APPLICATIONS
PREVIOUS ACTION BY DIFFERENT EXAMINER
Full faith and credit should be given to the search and action of a previous examiner unless there is a clear error in the previous action or knowledge of other prior art. In general, an examiner should not take an entirely new approach or attempt to reorient the point of view of a previous examiner, or make a new search in the mere hope of finding something. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 126
F. Supp. 2d 69, 139, 57 USPQ2d 1449, 1499-50 (D. Mass. 2001).
Because it is unusual to reject a previously allowed claim, the examiner should point out in his or her office action that the claim now being rejected was previously allowed by using Form Paragraph 7.50.
¶ 7.50 Claims Previously Allowed, Now Rejected, New Art
The indicated allowability of claim [1] is withdrawn in view of the newly discovered reference(s) to [2]. Rejection(s) based on the newly cited reference(s) follow.
Examiner Note:
1. In bracket 2, insert the name(s) of the newly discovered reference.
2. Any action including this form paragraph requires the signature of a Primary Examiner. MPEP § 1004.
706.05 Rejection After Allowance of Application [R-08.2012]
See MPEP § 1308.01 for a rejection based on a reference after allowance.
706.06 Rejection of Claims Copied From Patent [R-08.2012]
See MPEP Chapter 2300 .
706.07 Final Rejection [R-11.2013]
37 CFR 1.113 Final rejection or action.
(a) On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant’s, or for ex parte reexaminations filed under § 1.510, patent owner’s reply is limited to appeal in the case of rejection of any claim (§ 41.31 of this title), or to amendment as specified in § 1.114 or § 1.116. Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim (§ 1.181). Reply to a final rejection or action must comply with §
1.114 or paragraph (c) of this section. For final actions in an inter partes reexamination filed under § 1.913, see § 1.953.
(b) In making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable to the claims in the application, clearly stating the reasons in support thereof.
(c) Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form.
Before final rejection is in order a clear issue should be developed between the examiner and applicant. To bring the prosecution to as speedy conclusion as possible and at the same time to deal justly by both the applicant and the public, the invention as disclosed and claimed should be thoroughly searched in the first action and the references fully applied; and in reply to this action the applicant should amend with a view to avoiding all the grounds of rejection and objection. Switching from one subject matter to another in the claims presented by applicant in successive amendments, or from one set of references to another by the examiner in rejecting in successive actions claims of substantially the same subject matter, will alike tend to defeat attaining the goal of reaching a clearly defined issue for an early termination, i.e., either an allowance of the application or a final rejection.
While applicant does not have the right to amend as often as the examiner presents new references or reasons for rejection, examiners should not make hasty and ill-considered final rejections. The applicant who is seeking to define his or her invention in claims that will give him or her the patent protection to which he or she is justly entitled should receive the cooperation of the examiner to that end, and not be prematurely cut off in the prosecution of his or her application.
The examiner should never lose sight of the fact that in every case the applicant is entitled to a full and fair hearing, and that a clear issue between applicant and examiner should be developed, if possible, before appeal. However, it is to the interest of the applicants as a class as well as to that of the public that prosecution of an application be confined to as few actions as is consistent with a thorough consideration of its merits.
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STATEMENT OF GROUNDS
In making the final rejection, all outstanding grounds of rejection of record should be carefully reviewed, and any such grounds relied on in the final rejection should be reiterated. They must also be clearly developed to such an extent that applicant may readily judge the advisability of an appeal unless a single previous Office action contains a complete statement supporting the rejection.
However, where a single previous Office action contains a complete statement of a ground of rejection, the final rejection may refer to such a statement and also should include a rebuttal of any arguments raised in the applicant’s reply. If appeal is taken in such a case, the examiner’s answer should contain a complete statement of the examiner’s position. The final rejection letter should conclude with Form Paragraph 7.39.
¶ 7.39 Action Is Final
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).
2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
Form paragraph 7.39.01 may be used to notify applicant of options available after final rejection.
¶ 7.39.01 Final Rejection, Options for Applicant, Pro Se
This action is a final rejection and is intended to close the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited either to an appeal to the Patent Trial and Appeal Board or to an amendment complying with the requirements set forth below.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee of $[1].
If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing a good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b), the application will become abandoned.
Examiner Note:
The form paragraph must be preceded by any one of form paragraphs 7.39, 7.40, 7.40.01, 7.41, 7.42.03.fti, or 7.42.09.
The OfficeAction Summary Form PTOL-326 should be used in all Office actions up to and including final rejections.
For amendments filed after final rejection, see MPEP § 714.12 and § 714.13.
For final rejection practice in reexamination proceedings see MPEP § 2271.
706.07(a) Final Rejection, When Proper on Second Action [R-07.2015]
Second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). Where information is submitted in an information disclosure statement during the period set forth in 37 CFR 1.97(c) with a fee, the examiner may use the information submitted, e.g., a printed publication or evidence of public use, and make the
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next Office action final whether or not the claims have been amended, provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner. See MPEP § 609.04(b). Furthermore, a second or any subsequent action on the merits in any application will not be made final if it includes a rejection, on newly cited art, other than information submitted in an information disclosure statement filed under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p), of any claim not amended by applicant or patent owner in spite of the fact that other claims may have been amended to require newly cited art. Where information is submitted in a reply to a requirement under 37 CFR 1.105, the examiner may NOT make the next Office action relying on that art final unless all instances of the application of such art are necessitated by amendment.
For guidance in determining what constitutes a new ground of rejection, see MPEP § 1207.03(a).
A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection, on prior art not of record, of any claim amended to include limitations which should reasonably have been expected to be claimed. See MPEP § 904 et seq. However, note that an examiner cannot be expected to foresee whether or how an applicant will amend a claim to overcome a rejection except in very limited circumstances (e.g., where the examiner suggests how applicant can overcome a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings may not be made final if it contains a new ground of rejection necessitated by the amendments to pre-AIA 35 U.S.C. 102(e) by the Intellectual Property and High Technology Technical Amendments Act of 2002 (Public Law 107-273, 116 Stat. 1758 (2002)), unless the new ground of rejection was necessitated by an amendment to the claims or as a result of information submitted in an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).
When applying any 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e)/103 references against the claims of an application the examiner should anticipate that a statement averring common ownership may qualify the applicant for the exemption under 35 U.S.C. 102(b)(2)(C) or a statement of common ownership at the time the invention was made may disqualify any patent or application applied in a rejection under 35 U.S.C. 103 based on 35 U.S.C. 102(e). If such a statement is filed in reply to the 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e)/103 rejection and the claims are not amended, the examiner may not make the next Office action final if a new rejection is made. See MPEP §§ 706.02(l)(3) and 2154.02(c). If a reference is disqualified under the joint research agreement provision of 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c) and a new subsequent double patenting rejection based upon the disqualified reference is applied, the next Office action, which contains the new double patenting rejection, may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant.
Where the only changes in a rejection are based on treating the application to be subject to current 35 U.S.C. 102 rather than the version of 35 U.S.C. 102 in effect on March 15, 2013, (the pre-AIA version) or the reverse, and any prior art relied upon in the subsequent action was prior art under both versions of 35 U.S.C. 102, then the action may be made final. For example, if a first action relied upon a reference as being available under pre-AIA 35 U.S.C. 102(e) and the subsequent action relied only on the same reference under 35 U.S.C. 102(a)(2), then the subsequent action may be made final assuming no new requirements or non-prior art rejections were made. See MPEP § 809.02(a) for actions which indicate generic claims as not allowable.
In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the examiner should be on guard not to
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allow such claims. See MPEP § 714.04. The claims may be finally rejected if, in the opinion of the examiner, they are clearly open to rejection on grounds of record.
Form paragraph 7.40 should be used where an action is made final including new grounds of rejection necessitated by applicant’s amendment.
¶ 7.40 Action Is Final, Necessitated by Amendment
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).
2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
¶ 7.40.01 Action Is Final, Necessitated by IDS With Fee
Applicant’s submission of an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) on [1] prompted the new ground(s) of rejection presented in this Office action.Accordingly, THISACTION IS MADE FINAL. See MPEP § 609.04(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should not be used and a final rejection is improper where there is another new ground of rejection introduced by the examiner which was not necessitated by amendment to the claims.
2. In bracket 1, insert the filing date of the information disclosure statement containing the identification of the item of information used in the new ground of rejection.
¶ 7.40.02.aia Action Is Final, Necessitated by Invoking the Joint Research Agreement Prior Art Exclusion Under 35 U.S.C. 102(b)(2)(C)
Applicant’s submission of the requirements for the joint research agreement prior art exclusion under 35 U.S.C. 102(b)(2)(C) on [1] prompted the new double patenting rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 2156. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph should not be used, and a final rejection is improper, where there is another new ground of rejection introduced by the examiner which was not necessitated by amendment to the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).
3. In bracket 1, insert the filing date of the submission of the requirements for the joint research agreement prior art exclusion as defined under 35 U.S.C. 102(c).
¶ 7.40.02.fti Action Is Final, Necessitated by Invoking the Joint Research Agreement Prior Art Exclusion Under Pre-AIA 35 U.S.C. 103(c)
Applicant’s submission of the requirements for the joint research agreement prior art exclusion under pre-AIA 35 U.S.C. 103(c) on [1] prompted the new double patenting rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.02(l)(3). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should not be used and a final rejection is improper where there is another new ground of rejection introduced by the examiner which was not necessitated by amendment to the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17.
2. In bracket 1, insert the filing date of the submission of the requirements for the joint research agreement prior art exclusion under pre-AIA 35 U.S.C. 103(c).
706.07(b) Final Rejection, When Proper on First Action [R-11.2013]
The claims of a new application may be finally rejected in the first Office action in those situations where (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are drawn to the same invention claimed in the earlier application, and (2) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.
The claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action immediately subsequent to the filing of the RCE (with a submission and fee under 37 CFR 1.114) where all the claims in the application after the entry of the submission under 37 CFR 1.114 (A) are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114, and (B) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR 1.114.
It would not be proper to make final a first Office action in a continuing or substitute application or an RCE where that application contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied entry because (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was raised.
Further, it would not be proper to make final a first Office action in a continuation-in-part application where any claim includes subject matter not present in the earlier application.
A request for an interview prior to first action on a continuing or substitute application should ordinarily be granted.
A first action final rejection should be made by using Form Paragraphs 7.41 or 7.41.03, as appropriate.
¶ 7.41 Action Is Final, First Action
This is a [1] of applicant’s earlier Application No. [2]. All claims are drawn to the same invention claimed in the earlier application and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. In bracket 1, insert either --continuation-- or --substitute--, as appropriate.
2. If an amendment was refused entry in the parent case on the grounds that it raised new issues or new matter, this form paragraph cannot be used. See MPEP § 706.07(b).
3. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP-1 or 2 months).
4. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
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¶ 7.41.03 Action Is Final, First Action Following Submission Under 37 CFR 1.53(d), Continued Prosecution Application (CPA) in a Design Application
All claims are drawn to the same invention claimed in the parent application prior to the filing of this Continued Prosecution Application under 37 CFR 1.53(d) and could have been finally rejected on the grounds and art of record in the next Office action. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing under 37 CFR 1.53(d). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph is for a first action final rejection in a Continued Prosecution Application filed under 37 CFR 1.53(d) (design applications only).
2. This form paragraph must be preceded by one of form paragraphs 2.30 or 2.35, as appropriate.
¶ 7.42.09 Action Is Final, First Action Following Request for Continued Examination under 37 CFR 1.114
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
This form paragraph is for a first action final rejection following a Request for Continued Examination filed under 37 CFR 1.114.
706.07(c) Final Rejection, Premature [R-11.2013]
Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner. This is purely a question of practice, wholly distinct from the tenability of the rejection. It may therefore not be advanced as a ground for appeal, or made the basis of complaint before the Patent Trial and Appeal Board. It is reviewable by petition under 37 CFR 1.181. See MPEP § 1002.02(c).
706.07(d) Final Rejection, Withdrawal of, Premature [R-08.2012]
If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection. The finality of the Office action must be withdrawn while the application is still pending. The examiner cannot withdraw the final rejection once the application is abandoned.
Once the finality of the Office action has been withdrawn, the next Office action may be made final if the conditions set forth in MPEP § 706.07(a) are met.
Form paragraph 7.42 should be used when withdrawing the finality of the rejection of the last Office action.
¶ 7.42 Withdrawal of Finality of Last Office Action
Applicant’s request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.
706.07(e) Withdrawal of Final Rejection, General [R-08.2012]
See MPEP § 714.12 and § 714.13 for amendments after final rejection.
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§ 706.07(e)EXAMINATION OF APPLICATIONS
Once a final rejection that is not premature has been entered in an application/reexamination proceeding, it should not be withdrawn at the applicant’s or patent owner’s request except on a showing under 37 CFR 1.116(b). Further amendment or argument will be considered in certain instances. An amendment that will place the application either in condition for allowance or in better form for appeal may be admitted. Also, amendments complying with objections or requirements as to form are to be permitted after final action in accordance with 37 CFR 1.116(a).
The examiner may withdraw the rejection of finally rejected claims. If new facts or reasons are presented such as to convince the examiner that the previously rejected claims are in fact allowable or patentable in the case of reexamination, then the final rejection should be withdrawn. Occasionally, the finality of a rejection may be withdrawn in order to apply a new ground of rejection.
Although it is permissible to withdraw a final rejection for the purpose of entering a new ground of rejection, this practice is to be limited to situations where a new reference either fully meets at least one claim or meets it except for differences which are shown to be completely obvious. Normally, the previous rejection should be withdrawn with respect to the claim or claims involved. See MPEP § 1207.03 for a discussion of what may constitute a new ground of rejection.
The practice should not be used for application of subsidiary references, or of cumulative references, or of references which are merely considered to be better than those of record.
When a final rejection is withdrawn, all amendments filed after the final rejection are ordinarily entered.
New grounds of rejection made in an Office action reopening prosecution after the filing of an appeal
brief require the approval of the supervisory patent examiner. See MPEP § 1002.02(d).
706.07(f) Time for Reply to Final Rejection [R-07.2015]
The time for reply to a final rejection is as follows:
(A) All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain one of form paragraphs 7.39, 7.40, 7.40.01, 7.40.02.fti, 7.40.02.aia, 7.41, 7.41.03, 7.42.03.fti, 7.42.031.fti, or 7.42.09 advising applicant that if the first reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later. Thus, a variable reply period will be established. If the last day of “2 months of the date of the final Office action” falls on Saturday, Sunday, or a federal holiday within the District of Columbia, and a reply is filed on the next succeeding day which is not a Saturday, Sunday, or a federal holiday, pursuant to 37 CFR 1.7(a), the reply is deemed to have been filed within the 2 months period and the shortened statutory period will expire at 3 months from the date of the final rejection or on the mailing date of the advisory action, whichever is later (see MPEP § 710.05). In no event can the statutory period for reply expire later than 6 months from the mailing date of the final rejection.
(B) This procedure of setting a variable reply period in the final rejection dependent on when applicant files a first reply to a final Office action does not apply to situations where a SSP less than 3 months is set, e.g., reissue litigation applications (1-month SSP) or any reexamination proceeding.
I. ADVISORY ACTIONS
(C) Where the final Office action sets a variable reply period as set forth in paragraph (A) above AND applicant files a complete first reply to the final Office action within 2 months of the date of the final Office action, the examiner must determine if the reply:
(1) places the application in condition for allowance — then the application should be processed as an allowance and no extension fees are due;
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(2) places the application in condition for allowance except for matters of form which the examiner can change without authorization from applicant, MPEP § 1302.04 — then the application should be amended as required and processed as an allowance and no extension fees are due; or
(3) does not place the application in condition for allowance — then the advisory action should inform applicant that the SSP for reply expires 3 months from the date of the final rejection or as of the mailing date of the advisory action, whichever is later, by checking box 1.b) at the top portion of the Advisory Action form, PTOL-303.
(D) Where the final Office action sets a variable reply period as set forth in paragraph (A) above, and applicant does NOT file a complete first reply to the final Office action within 2 months, examiners should check box 1.a) at the top portion of the Advisory Action form, PTOL-303.
(E) When box 1.b) at the top portion of the Advisory Action form, PTOL-303 is checked, the time for applicant to take further action (including
the calculation of extension fees under 37 CFR 1.136(a)) begins to run 3 months from the date of the final rejection, or from the date of the advisory action, whichever is later. Extension fees cannot be prorated for portions of a month. In no event can the statutory period for reply expire later than 6 months from the date of the final rejection. For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such case, if a petition for extension of time is granted, the due date for a reply is computed from the date stamped or printed on the Office action with the final rejection. See MPEP § 710.01(a). If the examiner, however, does not mail an advisory action until after the end of the 3-month period, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension of time fee would be calculated from the mailing date of the advisory action.
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II. EXAMINER’S AMENDMENTS
(F) Where a complete first reply to a final Office action has been filed within 2 months of the final Office action, an examiner’s amendment to place the application in condition for allowance may be made without the payment of extension fees even if the examiner’s amendment is made more than 3 months from the date of the final Office action. Note that an examiner’s amendment may not be made more than 6 months from the date of the final Office action, as the application would be abandoned at that point by operation of law.
(G) Where a complete first reply to a final Office action has not been filed within 2 months of the final Office action, applicant’s authorization to make an amendment to place the application in condition for allowance must be made either within the 3 month shortened statutory period or within an extended period for reply that has been petitioned and paid for by applicant pursuant to 37 CFR 1.136(a). However, an examiner’s amendment correcting only formal matters which are identified for the first time after a reply is made to a final Office action would not require any extension fee, since the reply to the final Office action put the application in condition for allowance except for the correction of formal matters, the correction of which had not yet been required by the examiner.
(H) An extension of time under 37 CFR 1.136(a) requires a petition for an extension and the appropriate fee provided for in 37 CFR 1.17. Where an extension of time is necessary to place an application in condition for allowance (e.g., when an examiner’s amendment is necessary after the shortened statutory period for reply has expired), applicant may file the required petition and fee or give authorization to the examiner to make the petition of record and charge a specified fee to a deposit account. Office employees may not accept oral (telephonic) instructions to complete the Credit Card Payment Form or otherwise charge a patent process fee (as opposed to information product or service fees) to a credit card. When authorization to make a petition for an extension of time of record is given to the examiner, the authorization must be given before the extended period expires. The authorization must be made of record in an examiner’s amendment by indicating the name of the person making the authorization, when the
authorization was given, the deposit account number to be charged, the length of the extension requested and the amount of the fee to be charged to the deposit account. Form Paragraph 13.02.02 should be used. ¶ 13.02.02 Extension of Time and Examiner’s Amendment Authorized
An extension of time under 37 CFR 1.136(a) is required in order to make an examiner’s amendment which places this application in condition for allowance. During a conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension and authorized the following examiner’s amendment. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
Examiner Note:
See MPEP § 706.07(f) which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance.
III. PRACTICE AFTER FINAL
(I) Replies after final should be processed and considered promptly by all Office personnel.
(J) Replies after final should not be considered by the examiner unless they are filed within the SSP or are accompanied by a petition for an extension of time and the appropriate fee (37 CFR 1.17 and 37 CFR 1.136(a)). See also MPEP § 710.02(e). This requirement also applies to supplemental replies filed after the first reply.
(K) Interviews may be conducted after the expiration of the shortened statutory period for reply to a final Office action but within the 6-month statutory period for reply without the payment of an extension fee.
(L) Formal matters which are identified for the first time after a reply is made to a final Office action and which require action by applicant to correct may be required in an Ex parte Quayle action if the application is otherwise in condition for allowance. No extension fees would be required since the reply puts the application in condition for allowance except for the correction of formal matters — the correction of which had not yet been required by the examiner.
(M) If prosecution is to be reopened after a final Office action has been replied to, the finality of the previous Office action should be withdrawn to avoid
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§ 706.07(f)EXAMINATION OF APPLICATIONS
the issue of abandonment and the payment of extension fees. For example, if a new reference comes to the attention of the examiner which renders unpatentable a claim indicated to be allowable, the Office action should begin with a statement to the effect: “The finality of the Office action mailed is hereby withdrawn in view of the new ground of rejection set forth below.” Form paragraph 7.42 could be used in addition to this statement. See MPEP § 706.07(d).
706.07(g) Transitional After-Final Practice [R-07.2015]
37 CFR 1.129 Transitional procedures for limited examination after final rejection and restriction practice.
(a) An applicant in an application, other than for reissue or a design patent, that has been pending for at least two years as of June 8, 1995, taking into account any reference made in such application to any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is entitled to have a first submission entered and considered on the merits after final rejection under the following circumstances: The Office will consider such a submission, if the first submission and the fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in § 1.17(r). If a subsequent final rejection is made in the application, applicant is entitled to have a second submission entered and considered on the merits after the subsequent final rejection under the following circumstances: The Office will consider such a submission, if the second submission and a second fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the subsequent final rejection is automatically withdrawn upon the timely filing of the submission and payment of the second fee set forth in § 1.17(r). Any submission filed after a final rejection made in an application subsequent to the fee set forth in § 1.17(r) having been twice paid will be treated as set forth in § 1.116. A submission as used in this paragraph includes, but is not limited to, an information disclosure statement, an amendment to the
written description, claims or drawings and a new substantive argument or new evidence in support of patentability.
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(c) The provisions of this section shall not be applicable to any application filed after June 8, 1995.
In order to facilitate the completion of prosecution of applications pending in the USPTO as of June 8, 1995 and to ease the transition between a 17-year patent term and a 20-year patent term, Public Law 103-465 provided for the further limited reexamination of an application pending for 2 years or longer as of June 8, 1995, taking into account any reference made in the application to any earlier filed application under 35 U.S.C. 120, 121, or 365(c). The further limited reexamination permits applicants to present for consideration, as a matter of right upon payment of a fee, a submission after a final rejection has been issued on an application. An applicant will be able to take advantage of this provision on two separate occasions provided the submission and fee are presented prior to the filing of the Appeal Brief and prior to abandonment of the application. This will have the effect of enabling an applicant to essentially remove the finality of the prior Office action in the pending application on two separate occasions by paying a fee for each occasion, and avoid the impact of refiling the application to obtain consideration of additional claims and/or information relative to the claimed subject matter. The transitional after-final practice is only available to applications filed on or before June 8, 1995 and it is not available for reissue or design applications or reexamination proceedings.
The following flowchart illustrates the transitional after-final procedures set forth in 37 CFR 1.129(a).
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Effective June 8, 1995, in any pending application having an actual or effective filing date of June 8, 1993 or earlier, applicant is entitled, under 37 CFR 1.129(a), to have a first submission after final rejection entered and considered on the merits, if the submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an Appeal Brief under 37 CFR 41.37 and prior to abandonment. For an application entering national stage under 35 U.S.C. 371 or an application filed under 35 U.S.C. 111(a) claiming benefit under 35 U.S.C. 120 of a PCT application designating the U.S., the PCT international filing date will be used to determine whether the application has been pending for at least 2 years as of June 8, 1995.
Form paragraph 7.41.01.fti may be used to notify applicant that the application qualifies under 37 CFR 1.129(a).
¶ 7.41.01.fti Transitional After Final Practice, First Submission (37 CFR 1.129(a))
This application is subject to the provisions of Public Law 103-465, effective June 8, 1995. Accordingly, since this application has been pending for at least two years as of June 8, 1995, taking into account any reference to an earlier-filed application under 35 U.S.C. 120, 121 or 365(c), applicant, under 37 CFR 1.129(a), is entitled to have a first submission entered and considered on the merits if, prior to abandonment, the submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 41.37. Upon the timely filing of a first submission and the appropriate fee of $[1] for a [2] entity under 37 CFR 1.17(r), the finality of the previous Office action will be withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant will be construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). In view of 35 U.S.C. 132, no amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application.
If applicant has filed multiple proposed amendments which, when entered, would conflict with one another, specific instructions for entry or non-entry of each such amendment should be provided upon payment of any fee under 37 CFR 1.17(r).
Examiner Note:
1. This form paragraph may follow any of form paragraphs 7.39 - 7.41 in any application filed prior to June 9, 1995, which has been pending for at least two years as of June 8, 1995, taking into account any reference under 35 U.S.C. 120, 121 or 365(c) to a previously filed application and no previous fee has been paid under 37 CFR 1.17(r).
2. This form paragraph should NOT be used in a design or reissue application, or in a reexamination proceeding.
3. In bracket 1, insert the current fee for a large or small entity, as appropriate.
4. In bracket 2, insert --small-- or --large--, depending on the current status of the application.
The submission under 37 CFR 1.129(a) may comprise, but is not limited to, an information disclosure statement (IDS), an amendment to the written description, claims or drawings, a new substantive argument and/or new evidence. No amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application 35 U.S.C. 132. In view of the fee set forth in 37 CFR 1.17(r), any (IDS) previously refused consideration in the application because of applicant’s failure to comply with 37 CFR 1.97(c) or (d) will be treated as though it has been filed within one of the time periods set forth in 37 CFR 1.97(b) and will be considered without the petition and petition fee required in 37 CFR 1.97(d), if it complies with the requirements of 37 CFR 1.98. Any IDS submitted under 37 CFR 1.129(a) on or after June 8, 2005 without a statement specified in 37 CFR 1.97(e) will be treated as though it had been filed within the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The examiner may introduce a new ground of rejection based on the information submitted in the IDS and make the next Office action final provided that the examiner introduces no other new ground of rejection, which has not been necessitated by amendment to the claims. See MPEP § 706.07(a).
If the application qualifies under 37 CFR 1.129(a), that is, it was filed on or before June 8, 1995 and the application has an effective U.S. filing date of June 8, 1993 or earlier, the examiner must check to see if the submission and 37 CFR 1.17(r) fee were filed prior to the filing of the Appeal Brief and prior to abandonment of the application. If an amendment was timely filed in reply to the final rejection but the fee set forth in 37 CFR 1.17(r) did not accompany the amendment, examiners will continue to consider these amendments in an expedited manner as set forth in MPEP § 714.13 and issue an advisory action notifying applicant whether the amendment has been entered. If the examiner
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indicated in an advisory action that the amendment has not been entered, applicant may then pay the fee set forth in 37 CFR 1.17(r) and any necessary fee to avoid abandonment of the application and obtain entry and consideration of the amendment as a submission under 37 CFR 1.129(a). If the submission and the fee set forth in 37 CFR 1.17(r) were timely filed in reply to the final rejection and no advisory action has been issued prior to the payment of the fee set forth in 37 CFR 1.17(r), no advisory action will be necessary. The examiner will notify applicant that the finality of the previous office action has been withdrawn pursuant to 37 CFR 1.129(a). It is noted that if the submission is accompanied by a “conditional” payment of the fee set forth in 37 CFR 1.17(r), i.e., an authorization to charge the fee set forth in 37 CFR 1.17(r) to a deposit account or to a credit card in the event that the submission would not otherwise be entered, the Office will treat the conditional payment as an unconditional payment of the 37 CFR 1.17(r) fee.
The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in 37 CFR 1.17(r). Upon the timely payment of the fee set forth in 37 CFR 1.17(r), all previously unentered submissions, and submissions filed with the 37 CFR 1.17(r) fee will be entered in the order in which they were filed absent specific instructions for entry. Any conflicting amendments should be clarified for entry by the applicant upon payment of the 37 CFR 1.17(r) fee. Form paragraph 7.42.01.fti should be used to notify applicant that the finality of the previous Office action has been withdrawn.
¶ 7.42.01.fti Withdrawal of Finality of Last Office Action - Transitional Application Under 37 CFR 1.129(a)
Since this application is eligible for the transitional procedure of 37 CFR 1.129(a), and the fee set forth in 37 CFR 1.17(r) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.129(a). Applicant’s [1] submission after final filed on [2] has been entered.
Examiner Note:
Insert --first-- or --second-- in bracket 1.
If a Notice of Appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by
applicant is construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a).
Upon the timely payment of the fee set forth in 37 CFR 1.17(r), if the examiner determines that the submission is not fully responsive to the previous Office action, e.g., if the submission only includes an information disclosure statement, applicant will be given a new shortened statutory period of 2 months to submit a complete reply. Form paragraph 7.42.02.fti should be used.
¶ 7.42.02.fti Nonresponsive Submission Filed Under 37 CFR 1.129(a)
The timely submission under 37 CFR 1.129(a) filed on [1] is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of TWO MONTHS from the mailing date of this letter to submit a complete reply. This shortened statutory period supersedes the time period set in the prior Office action. This time period may be extended pursuant to 37 CFR 1.136(a). If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant is construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). The appeal stands dismissed.
Examiner Note:
The reasons why the examiner considers the submission not to be fully responsive must be set forth in bracket 2.
I. SUBMISSIONS UNDER 37 CFR 1.129(a) FILED PRIOR TO JUNE 8, 2005
After submission and payment of the fee set forth in 37 CFR 1.17(r), the next Office action on the merits may be made final only under the conditions for making a first action in a continuing application final set forth in MPEP § 706.07(b).
Form paragraph 7.42.03.fti may be used if it is appropriate to make the first action final following a submission under 37 CFR 1.129(a) filed prior to June 8, 2005.
¶ 7.42.03.fti Action Is Final, First Action Following Submission Under 37 CFR 1.129(a) Filed Prior to June 8, 2005
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR
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1.129(a) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.129(a). Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the submission under 37 CFR 1.129(a). See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
Also use form paragraph 7.41.02.fti if this is a final rejection following a first submission under 37 CFR 1.129(a).
If a subsequent final rejection is made in the application, applicant would be entitled to have a second submission entered and considered on the merits under the same conditions set forth for consideration of the first submission. Form paragraph 7.41.02.fti should be used.
¶ 7.41.02.fti Transitional After Final Practice, Second Submission (37 CFR 1.129(a))
Since the fee set forth in 37 CFR 1.17(r) for a first submission subsequent to a final rejection has been previously paid, applicant, under 37 CFR 1.129(a), is entitled to have a second submission entered and considered on the merits if, prior to abandonment, the second submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 41.37. Upon the timely filing of a second submission and the appropriate fee of $[1] for a [2] entity under 37 CFR 1.17(r), the finality of the previous Office action will be withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant will be construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). In view of 35 U.S.C. 132, no amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application.
Examiner Note:
1. This form paragraph is to follow any of form paragraphs 7.39 - 7.41 in any application filed prior to June 9, 1995, which has been pending for at least two years as of June 8, 1995, taking into account any reference under 35 U.S.C. 120, 121 or 365(c)
to a previously filed application and a first submission fee has been previously paid under 37 CFR 1.17(r).
2. This form paragraph should NOT be used in a design or reissue application or in a reexamination proceeding.
3. In bracket 1, insert the current fee for a large or small entity, as appropriate.
4. In bracket 2, insert --small-- or --large--, depending on the current status of the application.
5. If the fee set forth in 37 CFR 1.17(r) has been twice paid, the provisions of 37 CFR 1.129(a) are no longer available.
Any submission filed after a final rejection made in the application subsequent to the fee set forth in 37 CFR 1.17(r) having been twice paid will be treated in accordance with the current after-final practice set forth in 37 CFR 1.116.
II. SUBMISSIONS UNDER 37 CFR 1.129(a) FILED ON OR AFTER JUNE 8, 2005
For timely submission and payment of the fee set forth in 37 CFR 1.17(r) on or after June 8, 2005, the next Office action on the merits will be equivalent to the next Office action following a reply to a non-final Office action. Under existing second Office action final practice, such an Office action on the merits will be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an IDS filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
Form paragraph 7.42.031.fti may be used to make the next Office action final following a submission under 37 CFR 1.129(a) filed on or after June 8, 2005.
¶ 7.42.031.fti Action Is Final, Action Following Submission Under 37 CFR 1.129(a) Filed On or After June 8, 2005
Under the final action practice for Office actions following a submission under 37 CFR 1.129(a) filed on or after June 8, 2005, the next Office action following timely filing of a submission under 37 CFR 1.129(a) will be equivalent to the next Office action following a reply to a non-final Office action. Under existing Office second action final practice, such an Office action on the merits will be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
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In this Office action, there is no new ground of rejection that was not necessitated by applicant’s amendment of the claims or based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). Accordingly, THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
Also use form paragraph 7.41.02.fti if this is a final rejection following a first submission under 37 CFR 1.129(a)
An applicant whose application is eligible for the transitional further limited examination procedure set forth in 37 CFR 1.129(a) is entitled to consideration of two after final submissions. Thus, if such an applicant has filed one submission under 37 CFR 1.129(a) and the application is again under a final rejection, the applicant is entitled to only one additional submission under 37 CFR 1.129(a). If such an applicant has filed two submissions under 37 CFR 1.129(a) and the application is again under a final rejection, applicant is not entitled to have any additional submissions considered under 37 CFR 1.129(a). Applicant may be entitled to consideration of an additional submission if the submission meets the conditions set forth in 37 CFR 1.116.
706.07(h) Request for Continued Examination (RCE) Practice [R-07.2015]
35 U.S.C. 132 Notice of rejection; reexamination.
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(b) The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1).
37 CFR 1.114 Request for continued examination.
(a) If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of:
(1) Payment of the issue fee, unless a petition under § 1.313 is granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.
(b) Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last Office action is a final action (§ 1.113), a notice of allowance (§ 1.311), or an action that otherwise closes prosecution in the application.
(c) A submission as used in this section includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of § 1.111.
(d) If an applicant timely files a submission and fee set forth in § 1.17(e), the Office will withdraw the finality of any Office action and the submission will be entered and considered. If an applicant files a request for continued examination under this section after appeal, but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. An appeal brief (§ 41.37 of this title) or a reply brief (§ 41.41 of this title), or related papers, will not be considered a submission under this section.
(e) The provisions of this section do not apply to:
(1) A provisional application;
(2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
(3) An international application filed under 35 U.S.C. 363 before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371;
(4) An application for a design patent;
(5) An international design application; or
(6) A patent under reexamination.
35 U.S.C. 132(b) provides for continued examination of an application at the request of the applicant (request for continued examination or RCE) upon payment of a fee, without requiring the applicant to file a continuing application under 37 CFR 1.53(b). To implement the RCE practice, 37 CFR 1.114 provides a procedure under which an applicant may obtain continued examination of an application in which prosecution is closed (e.g., the application is
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under final rejection or a notice of allowance) by filing a submission and paying a specified fee. Applicants cannot file an RCE to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145. Any newly submitted claims that are directed to an invention that is independent and distinct from the invention previously claimed will be withdrawn from consideration and not entered. See subsection VI. below. An RCE is not the filing of a new application. Thus, the Office will not convert an RCE to a new application such as an application filed under 37 CFR 1.53(b) or a continued prosecution application (CPA) under 37 CFR 1.53(d).
I. CONDITIONS FOR FILING AN RCE
The provisions of 37 CFR 1.114 apply to utility or plant applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, or international applications filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE provisions of 37 CFR 1.114 do not apply to:
(A) a provisional application;
(B) an application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
(C) an international application filed under 35 U.S.C. 363 before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371;
(D) an application for a design patent;
(E) an international design application; or
(F) a patent under reexamination.
See 37 CFR 1.114(e).
An applicant may obtain continued examination of an application by filing a request for continued examination (see form PTO/SB/30), a submission and the fee set forth in 37 CFR 1.17(e) prior to the earliest of:
(A) payment of the issue fee (unless a petition under 37 CFR 1.313 is granted);
(B) abandonment of the application; or
(C) the filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or the commencement of a civil action (unless the appeal or civil action is terminated).
See 37 CFR 1.114(a). An applicant cannot request continued examination of an application until after prosecution in the application is closed. See 37 CFR 1.114(a). Prosecution in an application is closed if the application is under appeal, or the last Office action is a final action (37 CFR 1.113), a notice of allowance (37 CFR 1.311), or an action that otherwise closes prosecution in the application (e.g., an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935)).
II. SUBMISSION REQUIREMENT
A “submission” as used in 37 CFR 1.114 includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. See 37 CFR 1.114(c). If a reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of 37 CFR 1.111. See 37 CFR 1.114(c). Thus, an applicant may file a submission under 37 CFR 1.114 containing only an information disclosure statement (37 CFR 1.97 and 1.98) in an application subject to a notice of allowance under 35 U.S.C. 151, but not in an application where the last Office action is a final rejection or an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or in an application that is under appeal. A request for a suspension of action, an appeal brief or a reply brief (or related papers) will not be considered a submission under 37 CFR 1.114. See 37 CFR 1.103 and 1.114(d). The submission, however, may consist of the arguments in a previously filed appeal brief or reply brief, or may simply consist of a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief. In addition, a previously filed amendment after final (whether or not entered) may satisfy this submission requirement.
Arguments submitted after final rejection, which were entered by the examiner but not found persuasive, may satisfy the submission requirement if such arguments are responsive within the meaning
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of 37 CFR 1.111 to the Office action. Consideration of whether any submission is responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action is done without factoring in the “final” status of such outstanding Office action. Thus, a
reply which might not be acceptable as a reply under 37 CFR 1.113 when the application is under a final rejection may be acceptable as a reply under 37 CFR 1.111.
For More InformationThe Submission:Status of the Application See subsections V. and VI.Must include a reply under 37 CFR
1.111 to the final rejection (e.g., an After Final
amendment filed with the RCE or a previously-filed after final amendment).
See subsection IX.Must include a reply to the Ex Parte Quayle action.
After Ex Parte Quayle action
See subsection IX.Includes, but not limited to, an IDS, amendment, new arguments, or new evidence.
After allowance
See subsections X., XI., and XII.Must include a reply under 37 CFR 1.111 to the final rejection (e.g., a
After appeal
statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief).
III. INITIAL PROCESSING
An RCE will be initially processed by the Technology Center (TC) assigned the application. Technical support personnel in the TC will verify that:
(A) the RCE was filed on or after May 29, 2000;
(B) the application was filed on or after June 8, 1995;
(C) the application is a utility or plant application (e.g., not a design application);
(D) the application was pending (i.e., not patented or abandoned) when the RCE was filed;
(E) prosecution in the application is closed (e.g., the last Office action is a final rejection, notice of allowance, or an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or the application is under appean( �
(F) the RCE was filed before the payment of the issue fee or, if not, a petition under 37 CFR 1.313 to withdraw the application from issue was filed and granted;
(G) the RCE was accompanied by the proper fee(s) including the RCE fee under 37 CFR 1.17(e); and
(H) the RCE included a submission as required by 37 CFR 1.114.
A. Treatment of Improper RCE
If one or more conditions for filing an RCE have not been satisfied, applicant will be so notified. Generally, a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, will be mailed to applicant. An improper RCE will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application.
If an examiner discovers that an improper RCE has been forwarded to the examiner in error, the application should be immediately returned to a head supervisory legal instruments examiner (HSLIE) within the TC.
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1. Prosecution Is Not Closed
If prosecution in the application is not closed, applicant will be notified of the improper RCE and any amendment/reply will be entered. Thereafter, the application will be forwarded to the examiner for consideration of the amendment/reply under 37 CFR 1.111.
2. Application Is Under Appeal
If the application is under appeal and the RCE was not accompanied by the fee set forth in 37 CFR 1.17(e) and/or a submission as required by 37 CFR 1.114, the application will be forwarded to the examiner for appropriate treatment and applicant will be notified of the improper RCE (See subsection X below).
B. Ambiguous Transmittal Paper
If an applicant files a transmittal paper that is ambiguous as to whether it is a continued prosecution application (CPA) under 37 CFR 1.53(d) or a request for continued examination (RCE) under 37 CFR 1.114 (e.g., contains references to both an RCE and a CPA), and the application is a plant or utility application filed on or after June 8, 1995, the Office will treat the transmittal paper as an RCE under 37 CFR 1.114 since effective July 14, 2003, CPA practice has been eliminated as to plant and utility applications. If an applicant files a transmittal paper that is ambiguous as to whether it is a CPA or an RCE, and the application is a design application, the Office will treat the transmittal paper as a request for a CPA under 37 CFR 1.53(d) since RCE practice does not apply to design applications. Other papers filed with the transmittal paper (e.g., a preliminary amendment or information disclosure statement) will not be taken into account in determining whether a transmittal paper is a CPA, or an RCE, or ambiguous as to whether it is a CPA or an RCE. If, however, applicant files an unambiguous transmittal paper that is an RCE in a design application, it will be treated as an improper RCE and a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, will be mailed to the applicant. An RCE is not a type of new application filing. Therefore, the Office cannot convert an RCE
(whether proper or improper) to a new application such as a CPA under 37 CFR 1.53(d).
C. Treatment of Conditional RCE
If a submission is accompanied by a “conditional” RCE and payment of the RCE fee under 37 CFR 1.17(e) (i.e., an authorization to charge the 37 CFR 1.17(e) fee to a deposit account in the event that the submission would not otherwise be entered), the Office will treat the “conditional” RCE and payment as if an RCE and payment of the fee set forth in 37 CFR 1.17(e) had been filed.
D. Treatment of Proper RCE
If the conditions for filing an RCE have been satisfied, the technical support personnel will process the proper RCE. Any previously filed unentered amendments, and amendments filed with the RCE will normally be entered. Such amendments will be entered in the order in which they were filed in the absence of any specific instructions for entry. For example, if applicant files an amendment after final rejection which is denied entry by the examiner and applicant subsequently files an RCE with an amendment but the RCE is silent as to whether or not the previously filed after-final amendment should be entered, then the Office will enter both amendments in the order in which they were filed. If, however, applicant files an amendment after final rejection which is denied entry by the examiner and applicant subsequently files an RCE with an amendment including specific instructions that the previously filed after-final amendment is not to be entered, then the Office will enter the amendment filed with the RCE but will not enter the after-final amendment. If conflicting amendments have been previously filed, applicant should clarify which amendments should be entered upon filing the RCE (and fee). Applicants are encouraged to file all amendments no later than the filing of the RCE to avoid disapproval of entry under 37 CFR 1.111(b). See MPEP § 714.03(a). If additional time is needed to prepare and file a supplement (e.g., affidavit or declaration containing test data) to the previously filed submission, applicant should consider filing a suspension of action by the Office under 37 CFR 1.103(c) with the RCE. For more details on suspension of action, see MPEP § 709.
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After entry of any amendments and processing of the fee(s), the application will be forwarded to the examiner. Applicant does not need to pay a fee for excess claims previously paid for prior to the filing of the RCE. Of course, new claims in excess of the number previously paid for, which are filed with the RCE or thereafter, will require payment of the appropriate fees(s) under 37 CFR 1.16.
IV. IMPROPER CPA TREATED AS RCE
37 CFR 1.53(d)(1) has been amended to provide that CPA practice under 37 CFR 1.53(d) does not apply to utility and plant applications. Effective July 14, 2003, a CPA may only be filed if the prior nonprovisional application is a design application. For more details on filing a CPA, see MPEP § 201.06(d).
In the event that an applicant files a request for a CPA (on or after July 14, 2003) of a utility or plant application that was filed on or after June 8, 1995, the Office will automatically treat the improper CPA as an RCE of the prior application (identified in the request for CPA) under 37 CFR 1.114. If the CPA does not satisfy the requirements of 37 CFR 1.114 to be a proper RCE (e.g., lacks a submission under 37 CFR 1.114(b), or is not accompanied by the fee set forth in 37 CFR 1.17(e)), the improper CPA will be treated as an improper RCE, and the time period set in the last Office action (or notice of allowance) will continue to run. If the time period (considering any available extension under 37 CFR 1.136(a)) has expired, the applicant will need to file a petition under 37 CFR 1.137 (with the lacking submission under 37 CFR 1.114(b) or fee set forth in 37 CFR 1.17(e)) to revive the abandoned application.
Effective July 14, 2003, the Office will not convert an improper CPA into an application under 37 CFR 1.53(b) simply because it is requested by the applicant. The Office will convert an improper CPA into an application under 37 CFR 1.53(b) only if the applicant shows that there are extenuating circumstances that warrant the burdensome process of converting a CPA into an application under 37 CFR 1.53(b) (e.g., restoring the application to pending status and correcting the improper RCE is not possible because the application has issued as a patent).
Form paragraph 7.42.15 should be used by the examiner to inform applicant that a CPA is being treated as a RCE.
¶ 7.42.15 Continued Prosecution Application Treated as Continued Examination under 37 CFR 1.114
The request for a continued prosecution application (CPA) under 37 CFR 1.53(d) filed on [1] is acknowledged. A CPA may only be filed in a design application filed under 35 U.S.C. chapter 16. See 37 CFR 1.53(d)(1). Since a CPA of this application is not permitted under 37 CFR 1.53(d)(1), the improper request for a CPA is being treated as a request for continued examination of this application under 37 CFR 1.114.
Examiner Note:
1. Use this form paragraph to advise the applicant that a CPA is being treated as an RCE.
2. Also use form paragraph 7.42.04, 7.42.05, 7.42.06, or 7.42.07 as applicable, to acknowledge entry of applicant’s submission if the fee set forth in 37 CFR 1.17(e) has been timely paid.
3. If the fee set forth in 37 CFR 1.17(e) and/or a submission as required by 37 CFR 1.114 is/are missing and the application is not under appeal, a Notice of Improper Request for Continued Examination should be mailed. If the application is under appeal and the fee set forth in 37 CFR 1.17(e) and/or submission is/are missing, this form paragraph should be followed with one of form paragraphs 7.42.10 - 7.42.14, as applicable.
V. AFTER FINAL REJECTION
If an applicant timely files an RCE with the fee set forth in 37 CFR 1.17(e) and a submission that meets the reply requirements of 37 CFR 1.111, the Office will withdraw the finality of any Office action to which a reply is outstanding and the submission will be entered and considered. See 37 CFR 1.114(d). The submission meeting the reply requirements of 37 CFR 1.111 must be timely received to continue prosecution of an application. In other words, the mere request for, and payment of the fee for, continued examination will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application.
Any submission that is an amendment must comply with the manner of making amendments as set forth in 37 CFR 1.121. See MPEP § 714.03. The amendment must include markings showing the changes relative to the last entered amendment. Even though previously filed unentered amendments after final may satisfy the submission requirement under
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37 CFR 1.114(c), applicants are encouraged to file an amendment at the time of filing the RCE that incorporates all of the desired changes, including changes presented in any previously filed unentered after final amendments, accompanied by instructions not to enter the unentered after final amendments. See subsection VI for treatment of not fully responsive submissions including noncompliant amendments.
If the RCE is proper, form paragraph 7.42.04 should be used to notify applicant that the finality of the previous Office action has been withdrawn.
¶ 7.42.04 Continued Examination under 37 CFR 1.114 after Final Rejection
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.
Examiner Note:
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a final rejection.
2. In bracket 1, insert the date(s) of receipt of the submission. The submission may be a previously filed amendment(s) after final rejection and/or an amendment accompanying the RCE. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If a reply to the Office action is outstanding the submission must meet the reply requirements of 37 CFR 1.111. Use instead form paragraph 7.42.08 if the submission does not comply with 37 CFR 1.111. Arguments which were previously submitted in a reply after final rejection, which were entered but not found persuasive, may be considered a submission under 37 CFR 1.114 if the arguments are responsive within the meaning of 37 CFR 1.111 to the outstanding Office action. If the last sentence of this form paragraph does not apply (e.g., the submission consists of previously entered arguments), it may be deleted or modified as necessary.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
VI. NOT FULLY RESPONSIVE SUBMISSION
If reply to a final Office action is outstanding and the submission is not fully responsive to the final Office action, then it must be a bona fide attempt to provide a complete reply to the final Office action in order for the RCE to toll the period for reply.
If the submission is not a bona fide attempt to provide a complete reply, the RCE should be treated as an improper RCE. Thus, a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, should be prepared by the technical support personnel and mailed to the applicant indicating that the request was not accompanied by a submission complying with the requirements of 37 CFR 1.111 (see 37 CFR 1.114(c)). The RCE will not toll the period for reply and the application will be abandoned after the expiration of the statutory period for reply if no submission complying with 37 CFR 1.111 is filed. For example, if a reply to a final Office action is outstanding and the submission only includes an information disclosure statement (IDS), the submission will not be considered a bona fide attempt to provide a complete reply to the final Office action and the period for reply will not be tolled. Similarly, an amendment that would cancel all of the claims in an application and does not present any new or substitute claims is not a bona fide attempt to advance the application to final action. The Office will not enter such an amendment. See Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001).
If the submission is a bona fide attempt to provide a complete reply, applicant should be informed that the submission is not fully responsive to the final Office action, along with the reasons why, and given a new shortened statutory period of two months to complete the reply. See 37 CFR 1.135(c). Form paragraph 7.42.08 set forth below should be used.
Situations where a submission is not a fully responsive submission, but is a bona fide attempt to provide a complete reply are:
(A) Non-compliant amendment - An RCE filed with a submission which is an amendment that is not in compliance with 37 CFR 1.121, but which is a bona fide attempt to provide a complete reply to the last Office action, should be treated as a proper
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RCE and a Notice of Noncompliant Amendment should be mailed to the applicant. Applicant is given a time period of two months from the mailing date of the notice, to provide an amendment complying with 37 CFR 1.121. See MPEP § 714.03 for information on the amendment practice under 37 CFR 1.121.
(B) Presentation of claims for different invention - Applicants cannot file an RCE to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145. If an RCE is filed with an amendment canceling all claims drawn to the elected invention and presenting only claims drawn to a nonelected invention, the RCE should be treated as a proper RCE but the amendment should not be entered. The amendment is not fully responsive and applicant should be given a time period of two months to submit a complete reply. See MPEP § 821.03. Form paragraphs 8.04 or 8.26 should be used as appropriate. ¶ 7.42.08 Request For Continued Examination With Submission Filed Under 37 CFR 1.114 Which is Not Fully Responsive
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on [1]. The submission, however, is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of TWO MONTHS from the mailing date of this letter to submit a complete reply. This shortened statutory period for reply supersedes the time period set in the prior Office action. This time period may be extended pursuant to 37 CFR 1.136(a).
Examiner Note:
1. Use this form paragraph to acknowledge an RCE filed with the fee and a submission where the submission is not fully responsive to the prior Office action. This form paragraph may be used for any RCE filed with a submission which is not fully responsive, i.e., an RCE filed after final rejection, after allowance, after an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or after appeal.
2. In bracket 2, identify the reasons why the examiner considers the submission not to be fully responsive.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after
June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
VII. NEW MATTER
35 U.S.C. 132(a) provides that “[n]o amendment shall introduce new matter into the disclosure of the invention.” Any amendment entered pursuant to 37 CFR 1.114 that is determined to contain new matter should be treated in the same manner that a reply under 37 CFR 1.111 determined to contain new matter is currently treated. See MPEP § 706.03(o). In those instances in which an applicant seeks to add new matter to the disclosure of an application, the procedure in 37 CFR 1.114 is not available, and the applicant must file a continuation-in-part application under 37 CFR 1.53(b) containing such new matter.
VIII. FIRST ACTION FINAL AFTER FILING AN RCE
The action immediately subsequent to the filing of an RCE with a submission and fee under 37 CFR 1.114 may be made final only if the conditions set forth in MPEP § 706.07(b) are met.
It would not be proper to make final a first Office action immediately after the filing of an RCE if the first Office action includes a new ground of rejection. See MPEP § 1207.03 for a discussion of what may constitute a new ground of rejection.
Form paragraph 7.42.09 should be used if it is appropriate to make the first action after the filing of the RCE final.
¶ 7.42.09 Action Is Final, First Action Following Request for Continued Examination under 37 CFR 1.114
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action.
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In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
This form paragraph is for a first action final rejection following a Request for Continued Examination filed under 37 CFR 1.114.
IX. AFTER ALLOWANCE OR QUAYLE ACTION
The phrase “withdraw the finality of any Office action” in 37 CFR 1.114(d) includes the withdrawal of the finality of a final rejection, as well as the closing of prosecution by an Office action under Ex parte Quayle , 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or notice of allowance under 35 U.S.C. 151 (or notice of allowability). Therefore, if an applicant files an RCE with the fee set forth in 37 CFR 1.17(e) and a submission in an application which has been allowed, prosecution will be reopened. If the issue fee has been paid, however, payment of the fee for an RCE and a submission without a petition under 37 CFR 1.313 to withdraw the application from issue will not avoid issuance of the application as a patent. If an RCE (with the fee and a submission) is filed in an allowed application prior to payment of the issue fee, a petition under 37 CFR 1.313 to withdraw the application from issue is not required.
If an RCE complying with the requirements of 37 CFR 1.114 is filed in an allowed application after the issue fee has been paid and a petition under 37 CFR 1.313 is also filed and granted, prosecution will be reopened. Applicant may not obtain a refund of the issue fee. If, however, the application is subsequently allowed, the Notice of Allowance will reflect an issue fee amount that is due that is the difference between the current issue fee amount and the issue fee that was previously paid.
Form paragraph 7.42.05 should be used to notify applicant that prosecution has been reopened.
¶ 7.42.05 Continued Examination Under 37 CFR 1.114 After Allowance or Quayle Action
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle , 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.
Examiner Note:
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a notice of allowance (or notice of allowability) or Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
2. In bracket 1 insert the date(s) of receipt of the submission. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
4. If the RCE was filed after the issue fee was paid, a petition under 37 CFR 1.313 to withdraw the application from issue must have been filed and granted.
X. AFTER APPEAL BUT BEFORE DECISION BY THE BOARD
If an applicant files an RCE under 37 CFR 1.114 after the filing of a Notice of Appeal to the Patent Trial and Appeal Board (Board), but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner, regardless of whether the RCE is proper or improper. See 37 CFR 1.114(d). The Office will withdraw the appeal upon the filing of an RCE. Applicants should advise the Board when an RCE under 37 CFR 1.114 is filed in an application containing an appeal awaiting decision. Otherwise, the Board may refuse to vacate a decision rendered after the filing (but before the recognition by the Office) of an RCE under 37 CFR 1.114.
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A. Proper RCE
If the RCE is accompanied by a fee (37 CFR 1.17(e)) and a submission that includes a reply which is responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action, the Office will withdraw the finality of the last Office action and the submission will be entered and considered. If the submission is not fully responsive to the last outstanding Office action but is considered to be a bona fide attempt to provide a complete reply, applicant will be notified that the submission is not fully responsive, along with the reasons why, and will be given a new time period to complete the reply (using form paragraph 7.42.08). See 37 CFR 1.135(c) and subsection VI.
If the RCE is proper, form paragraph 7.42.06 should be used to notify applicant that the appeal has been withdrawn and prosecution has been reopened.
¶ 7.42.06 Continued Examination Under 37 CFR 1.114 After Appeal But Before A Board Decision
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.
Examiner Note:
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a Notice of Appeal or an appeal brief, but there has not been a decision on the appeal. Note that it is not necessary for an appeal brief to have been filed.
2. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. The submission may consist of arguments in a previously filed appeal brief or reply brief, or an incorporation of such arguments in the transmittal letter or other paper accompanying the RCE.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
B. Improper RCE
The appeal will be withdrawn even if the RCE is improper. If an RCE is filed in an application after appeal to the Board but the request does not include the fee required by 37 CFR 1.17(e) or the submission required by 37 CFR 1.114, or both, the examiner should treat the request as an improper RCE and withdraw the appeal pursuant to 37 CFR 1.114(d). If the submission is not considered to be a bona fide attempt to provide a complete reply to the last outstanding Office action (e.g., an IDS only), the submission will be treated as an improper submission or no submission at all under 37 CFR 1.114(c) (thus the request is an improper RCE). See subsection VI.
Upon withdrawal of the appeal, the application will be treated in accordance with MPEP § 1215.01 based on whether there are any allowed claims or not. The proceedings as to the rejected claims are considered terminated. Therefore, if no claim is allowed, the application is abandoned. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. See MPEP § 1215.01. If there is at least one allowed claim, the application should be passed to issue on the allowed claim(s). If there is at least one allowed claim but formal matters are outstanding, applicant should be given a shortened statutory period of two months in which to correct the formal matters. Form paragraphs 7.42.10 - 7.42.14 should be used as appropriate.
¶ 7.42.10 Application On Appeal, Request For Continued Examination Under 37 CFR 1.114 Without Submission/Fee; No Claims Allowed
A request for continued examination under 37 CFR 1.114 was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e) and/or the submission required by 37 CFR 1.114. Since the proceedings as to the rejected claims are considered terminated, and no claim is allowed, the application is abandoned. See MPEP § 1215.01.
Examiner Note:
1. If a request for continued examination was filed after a Notice of Appeal or after an appeal brief, but before a decision on the appeal, and the request lacks the fee set forth in 37 CFR 1.17(e) or a submission or both, use this form paragraph to withdraw the appeal and hold the application abandoned if there are no allowed claims.
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2. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.11 Application On Appeal, Request For Continued Examination Under 37 CFR 1.114 Without Submission; Claim Allowed
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the submission required by 37 CFR 1.114. Since the proceedings as to the rejected claims are considered terminated, the application will be passed to issue on allowed claim[2] . Claim[3] been canceled. See MPEP § 1215.01.
Examiner Note:
1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or after an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.
2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01.
3. This form paragraph should be used with the mailing of a Notice of Allowability.
4. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.12 Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Submission; Claim Allowed with Formal Matters Outstanding
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) , was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the submission required by 37 CFR 1.114. The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01. Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire
TWO MONTHS from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136.
Examiner Note:
1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.
2. In bracket 3, explain the formal matters which must be corrected.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.13 Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Fee; Claim Allowed
A request for continued examination under 37 CFR 1.114, including a submission, was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e). Therefore, the submission has not been entered. See 37 CFR 1.116(c). Since the proceedings as to the rejected claims are considered terminated, the application will be passed to issue on allowed claim[2]. Claim[3] been canceled. See MPEP § 1215.01.
Examiner Note:
1. If a request for continued examination, including the submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required fee, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.
2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01.
3. This form paragraph should be used with the mailing of a Notice of Allowability.
4. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
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¶ 7.42.14 Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Fee; Claim Allowed With Formal Matters Outstanding
A request for continued examination under 37 CFR 1.114, including a submission, was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e). Therefore, the submission has not been entered. See 37 CFR 1.116(c). The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim[2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01. Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire TWO MONTHS from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136.
Examiner Note:
1. If a request for continued examination, including a submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the fee required by 37 CFR 1.17(e), use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.
2. In bracket 3, explain the formal matters that must be corrected.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
XI. AFTER DECISION BY THE BOARD
A. Proper RCE After Board Decision
The filing of an RCE (accompanied by the fee and a submission) after a decision by the Patent Trial and Appeal Board (Board), but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit (Federal Circuit) or the commencement of a civil action in federal district court, will also result in the finality of the rejection or action being withdrawn and the submission being considered. Generally, the time period for filing a notice of appeal to the Federal Circuit or for commencing a civil action is within two months of the Board’s decision. See 37 CFR 1.304 and MPEP § 1216. Thus, an RCE filed within this two month time period and before the filing of a notice of appeal
to the Federal Circuit or the commencement of a civil action would be timely filed. In addition to the res judicata effect of a Board decision in an application (see MPEP § 706.03(w)), a Board decision in an application is the “law of the case,” and is thus controlling in that application and any subsequent, related application. See MPEP § 1214.01 (where a new ground of rejection is entered by the Board pursuant to 37 CFR 41.50(b), argument without either amendment of the claims so rejected or the submission of a showing of facts can only result in a final rejection of the claims, since the examiner is without authority to allow the claims unless amended or unless the rejection is overcome by a showing of facts not before the Board). As such, a submission containing arguments without either amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such rejection.
Form paragraph 7.42.07 should be used to notify applicant that the appeal has been withdrawn and prosecution has been reopened.
¶ 7.42.07 Continued Examination under 37 CFR 1.114 after Board Decision but Before Further Appeal or Civil Action
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.
Examiner Note:
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was timely filed after a decision by the Patent Trial and Appeal Board but before further appeal or civil action. Generally, the deadline for filing a notice of appeal to the Federal Circuit or for commencing a civil action is sixty-three (63) days after the date of the final Board decision. See MPEP § 1216 and 37 CFR 90.3.
2. A Patent Trial and Appeal Board decision in an application has res judicata effect and is the “law of the case” and is thus controlling in that application and any subsequent, related application. Therefore, a submission containing arguments without either an amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such rejection. See MPEP §§ 706.03(w) and 1214.01.
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3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
B. Improper RCE After Board Decision
If an RCE is filed after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action in federal district court, and the RCE was not accompanied by the fee and/or the submission, the examiner should notify the applicant that the RCE is improper by using form paragraph 7.42.16 set forth below. If the time for seeking court review has passed without such review being sought, the examiner should include the form paragraph with the mailing of a Notice of Allowability or a Notice of Abandonment depending on the status of the claims. See MPEP § 1214.06. If the time for seeking court review remains, the examiner should include the form paragraph on a PTOL-90. No time period should be set. If a submission is filed with the RCE, but the fee is missing, the examiner should also include a statement as to whether or not the submission has been entered. In general, such a submission should not be entered. If, however, the submission is an amendment that obviously places the application in condition for allowance, it should be entered with the approval of the supervisory patent examiner. See MPEP § 1214.07. Form paragraph 7.42.16 should not be used if the application is not a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. In that situation, a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, should be prepared and mailed by the technical support personnel to notify applicant that continued examination does not apply to the application. When the time for seeking court review has passed without such review being sought, the examiner must take up the application for consideration. See MPEP § 1214.06 for guidance on the action to be taken.
¶ 7.42.16 After Board Decision But Before Further Appeal Or Civil Action, Request for Continued Examination Under 37 CFR 1.114 Without Submission and/or Fee
A request for continued examination (RCE) under 37 CFR 1.114 was filed in this application on [1] after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. The request, however, lacks the fee required by 37 CFR 1.17(e) and/or the submission required by 37 CFR 1.114. Accordingly, the RCE is improper and any time period running was not tolled by the filing of the improper request.
Examiner Note:
1. This form paragraph should be used with the mailing of a Notice of Allowability or a Notice of Abandonment, as appropriate, if the time for seeking court review has passed without such review being sought, or it should be used on a PTOL-90 if time still remains.
2. This form paragraph should not be used if the application is not a utility application or a plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. In that situation, a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, should be prepared and mailed by the technical support personnel to notify applicant that continued examination does not apply to the application.
3. In general, if a submission was filed with the improper RCE in this situation, it should not be entered. An exception exists for an amendment which obviously places the application in condition for allowance. See MPEP § 1214.07. The examiner should also include a statement as to whether or not any such submission has been entered (e.g., “The submission filed with the improper RCE has not been entered.”).
XII. AFTERAPPEAL TO THE FEDERAL CIRCUIT OR CIVIL ACTION
The procedure set forth in 37 CFR 1.114 is not available in an application after the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action in federal district court, unless the appeal or civil action is terminated and the application is still pending. If an RCE is filed in an application that has undergone court review, the examiner should bring the application to the attention of the supervisory patent examiner or a quality assurance specialist in the TC to determine whether the RCE is proper. Unless an application contains allowed claims (or the court’s mandate clearly indicates that further action is to be taken by the Office), the termination of an unsuccessful appeal or civil action results in abandonment of the application. See MPEP § 1216.01.
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XIII. FORMS
Form PTO/SB/30, “Request for Continued Examination (RCE) Transmittal,” may be used by applicant for filing a RCE under 37 CFR 1.114. The
form used by the Technology Centers to notify applicant of an improper RCE, “Notice of Improper Request for Continued Examination (RCE),” form PTO-2051, is shown below following form PTO/SB/30.
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707 Examiner’s Letter or Action [R-07.2015]
37 CFR 1.104 Nature of examination.
(a) Examiner’s action.
(1) On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application or patent under reexamination with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.
(2) The applicant, or in the case of a reexamination proceeding, both the patent owner and the requester, will be notified of the examiner’s action. The reasons for any adverse action or any objection or requirement will be stated in an Office action and such information or references will be given as may be useful in aiding the applicant, or in the case of a reexamination proceeding the patent owner, to judge the propriety of continuing the prosecution.
(3) An international-type search will be made in all national applications filed on and after June 1, 1978.
(4) Any national application may also have an international-type search report prepared thereon at the time of the national examination on the merits, upon specific written request therefor and payment of the international-type search report fee set forth in § 1.21(e). The Patent and Trademark Office does not require that a formal report of an international-type search be prepared in order to obtain a search fee refund in a later filed international application.
(b) Completeness of examiner’s action. The examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable.
(c) Rejection of claims.
(1) If the invention is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected.
(2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.
(3) In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section.
(4)
(i) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(ii) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if:
(A) The applicant or patent owner provides a statement to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(5)
(i) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application filed on or after November 29, 1999, or any patent issuing thereon, in an application filed before November 29, 1999, but pending on December 10, 2004, or any patent issuing thereon, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, at the time the claimed invention was made, were owned by the same person or subject to an obligation of assignment to the same person.
(ii) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f) , or (g) in effect prior to March 16, 2013, and a claimed invention in an application pending on or after December 10, 2004, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect prior to March 16, 2013, if:
(A) The applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention were made by or on behalf of the parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
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(B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(6) Patents issued prior to December 10, 2004, from applications filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in effect on November 28, 1999.
(d) Citation of references.
(1) If domestic patents are cited by the examiner, their numbers and dates, and the names of the patentees will be stated. If domestic patent application publications are cited by the examiner, their publication number, publication date, and the names of the applicants will be stated. If foreign published applications or patents are cited, their nationality or country, numbers and dates, and the names of the patentees will be stated, and such other data will be furnished as may be necessary to enable the applicant, or in the case of a reexamination proceeding, the patent owner, to identify the published applications or patents cited. In citing foreign published applications or patents, in case only a part of the document is involved, the particular pages and sheets containing the parts relied upon will be identified. If printed publications are cited, the author (if any), title, date, pages or plates, and place of publication, or place where a copy can be found, will be given.
(2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.
(e) Reasons for allowance. If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication.
For Office actions in ex parte reexamination proceedings, see MPEP §§ 2260, 2262, 2271 and their indents. For Office actions in inter partes reexamination proceedings, see MPEP §§ 2660, 2671, 2673, and their indents.
Under the current first action procedure, the examiner signifies on the Office Action Summary Form PTOL-326 certain information including the period set for reply, any attachments, and a
“Summary of Action,” which is the position taken on all the claims.
The examiner, in the exercise of his or her professional judgment, is permitted to indicate that an interview with applicant’s representative may result in agreements whereby the application may be placed in condition for allowance. Any amendment agreed upon during an interview may be made either by the applicant’s attorney or agent or by the examiner in an examiner’s amendment. It should be recognized that when extensive amendments are necessary it would be preferable if they were filed by the attorney or agent of record, thereby reducing the professional and clerical workload on the Office and also providing the file wrapper with a better record, including applicant’s arguments for allowability as required by 37 CFR 1.111. See MPEP § 713 et seq. for interview practice.
The list of references cited appears on a separate form, Notice of References Cited, PTO-892 (copy in MPEP § 707.05) attached to applicant’s copy of the Office action. Where applicable, a Notice of Informal Patent Application is attached to the first Office action.
The attachments have the same paper number and are to be considered as part of the Office action.
Replies to Office actions should include the application number as well as the 4-digit art unit number and the examiner’s name to expedite handling within the Office. Further, applicants are encouraged to include the 4-digit confirmation number on every paper filed in the Office. See MPEP § 503 for an explanation of the confirmation number.
In accordance with the patent statute, “Whenever, on examination, any claim for a patent is rejected, or any objection . . . made,” notification of the reasons for rejection and/or objection together with such information and references as may be useful in judging the propriety of continuing the prosecution (35 U.S.C. 132) should be given.
Information useful in judging the propriety of continuing the prosecution may include, for example, the identification and a brief discussion of the particular figure(s) of the drawing(s), and/or page(s)
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or paragraph(s) of the best reference(s) cited by the examiner, the applicant, or a foreign office.
In rejecting claims for want of novelty or for obviousness, the pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. See 37 CFR 1.104(c)(2). For rejections under 35 U.S.C. 103, the way in which a reference is modified or plural references are combined should be set out.
The Office action may include objections to the disclosure, an explanation of references cited but not applied, an indication of allowable subject matter, other requirements (including requirements for restriction if applicable), and other pertinent comments. OfficeAction Summary form PTOL-326, which serves as the first page of the Office action (although a Form PTOL-90 may be used as a coversheet for the correspondence address and the mail date of the Office action), is to be used with all first Office actions and will identify any allowed claims.
One of form paragraphs 7.100, 7.101, or 7.102 should conclude all actions.
¶ 7.100 Name And Number of Examiner To Be Contacted
Any inquiry concerning this communication should be directed to [1] at telephone number [2].
Examiner Note:
1. This form paragraph, form paragraph 7.101, or form paragraph 7.102 should be used at the conclusion of all actions.
2. In bracket 1, insert the name of the examiner designated to be contacted first regarding inquiries about the Office action. This could be either the non-signatory examiner preparing the action or the signatory examiner.
3. In bracket 2, insert the individual area code and phone number of the examiner to be contacted.
¶ 7.101 Telephone Inquiry Contacts- Non 5/4/9 Schedule
Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [6], can be reached on [7]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner Note:
1. In bracket 1, insert your name.
2. In bracket 2, insert your individual area code and phone number.
3. In bracket 3, insert the days that you work every week, e.g. “Monday-Thursday” for an examiner off every Friday.
4. In brackets 4 and 5, insert your normal duty hours, e.g. “6:30 AM - 5:00 PM.”
5. In bracket 6, insert your SPE’s name.
6. In bracket 7, insert your SPE’s area code and phone number.
¶ 7.102 Telephone Inquiry Contacts- 5/4/9 Schedule
Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5]. The examiner can also be reached on alternate [6].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [7], can be reached on [8]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner Note:
1. In bracket 1, insert your name.
2. In bracket 2, insert your individual area code and phone number.
3. In bracket 3, insert the days that you work every week, e.g. “Monday-Thursday” for an examiner off on alternate Fridays.
4. In brackets 4 and 5, insert your normal duty hours, e.g. “6:30 AM - 4:00 PM.”
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5. In bracket 6, insert the day in each pay-period that is your compressed day off, e.g. “Fridays” for an examiner on a 5/4/9 work schedule with the first Friday off.
6. In bracket 7, insert your SPE’s name.
7. In bracket 8, insert your SPE’s area code and phone number.
Where the text of sections of Title 35, U.S. Code was previously reproduced in an Office action, form paragraph 7.103 may be used.
¶ 7.103 Statute Cited in Prior Office Action
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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707.01 Primary Examiner Indicates Action for New Assistant [R-07.2015]
After the search has been completed, action is taken in the light of the references found. Where the assistant examiner has been in the Office but a short time, it is the duty of the primary examiner to review the application thoroughly. The usual procedure is for the assistant examiner to explain the invention and discuss the references which he or she regards as most pertinent. The primary examiner may indicate the action to be taken, whether restriction or election of species is to be required, or whether the claims are to be considered on their merits. If action on the merits is to be given and claims rejected, the primary examiner may indicate how the references are to be applied in any prior art rejection and explain the basis for any non-prior art grounds of rejection. The primary examiner may authorize allowance if all statutory requirements are met and no further field of search is known.
707.02 Applications Up for Third Action and 5-Year Applications [R-07.2015]
The supervisory patent examiners should impress upon their assistants that the shortest path to the final disposition of an application is by finding the best references on the first search and carefully applying them.
The supervisory patent examiners are expected to personally check on the pendency of every application which is up for the third or subsequent Office action with a view to finally concluding its prosecution.
Any application that has been pending five years or more should be carefully studied by the supervisory patent examiner and every effort should be made to terminate its prosecution. In order to accomplish this result, the application is to be considered “special” by the examiner.
707.03-707.04 [Reserved]
707.05 Citation of References [R-11.2013]
37 CFR 1.104 Nature of examination.
*****
(d) Citation of references.
(1) If domestic patents are cited by the examiner, their numbers and dates, and the names of the patentees will be stated. If domestic patent application publications are cited by the examiner, their publication number, publication date, and the names of the applicants will be stated. If foreign published applications or patents are cited, their nationality or country, numbers and dates, and the names of the patentees will be stated, and such other data will be furnished as may be necessary to enable the applicant, or in the case of a reexamination proceeding, the patent owner, to identify the published applications or patents cited. In citing foreign published applications or patents, in case only a part of the document is involved, the particular pages and sheets containing the parts relied upon will be identified. If printed publications are cited, the author (if any), title, date, pages or plates, and place of publication, or place where a copy can be found, will be given.
(2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.
*****
During the examination of an application or reexamination of a patent, the examiner should cite appropriate prior art which is nearest to the subject matter defined in the claims. When such prior art is cited, its pertinence should be explained.
The examiner must consider all the prior art references (alone and in combination) cited in the application or reexamination, including those cited by the applicant in a properly submitted Information Disclosure Statement. See MPEP § 609.
Form paragraph 7.96 may be used as an introductory sentence.
¶ 7.96 Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. [1]
Examiner Note:
When such prior art is cited, its relevance should be explained in bracket 1 in accordance with MPEP § 707.05.
Effective June 8, 1995, Public Law 103-465 amended 35 U.S.C. 154 to change the term of a patent to 20 years measured from the filing date of
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the earliest U.S. application for which benefit under 35 U.S.C. 120, 121 or 365(c) is claimed. The 20-year patent term applies to all utility and plant patents issued on applications filed on or after June 8, 1995. Effective March 16, 2013, Public Law 112-196 amended Title 35 of the U.S. Code to change U.S. practice from a first to invent system to a first inventor to file system. In certain circumstances, applicants may cancel their benefit/priority claim by amending the specification to delete any references to prior applications. Therefore, examiners should search all applications based on the actual U.S. filing date of the application rather than on the filing date of any parent U.S. application for which benefit is claimed or foreign application to which priority is claimed. Examiners should cite of interest all material prior art having an effective filing date after the filing date of the U.S. parent application or the foreign priority application but before the actual filing date of the application being examined.
Allowed applications should generally contain a citation of pertinent prior art for printing in the patent, even if no claim presented during the prosecution was considered unpatentable over such prior art. Only in those instances where a proper search has not revealed any prior art relevant to the claimed invention is it appropriate to send an application to issue with no art cited. In the case where no prior art is cited, the examiner must indicate “None” on a form PTO-892 and include it in the application file wrapper. Where references have been cited during the prosecution of parent applications and a continuing application, having no newly cited references, is ready for allowance, the cited references of the parent applications should be listed on a form PTO-892. The form should then be placed in the file of the continuing application. See MPEP § 1302.12. In a continued prosecution application filed under 37 CFR 1.53(d), it is not necessary to prepare a new form PTO-892 because the form from the parent application is in the same file wrapper and will be used by the printer.
In all continuation and continuation-in-part applications, the parent applications should be reviewed for pertinent prior art.
Applicants and/or applicants’ attorneys in PCT related national applications may wish to cite the
material citations from the PCT International Search Report by an information disclosure statement under 37 CFR 1.97 and 1.98 in order to ensure consideration by the examiner.
In those instances where no information disclosure statement has been filed by the applicant and where documents are cited in the International Search Report but neither a copy of the documents nor an English translation (or English family member) is provided, the examiner may exercise discretion in deciding whether to take necessary steps to obtain the copy and/or translation.
Copies of documents cited will be provided as set forth in MPEP § 707.05(a). That is, copies of documents cited by the examiner will be provided to applicant except where the documents:
(A) are cited by applicant in accordance with MPEP § 609, § 707.05(b), and § 708.02;
(B) have been referred to in applicant’s disclosure statement;
(C) are cited and have been provided in a parent application; or
(D) are U.S. Patents or U.S. application publications.
See MPEP § 707.05(e) regarding data used in citing references.
707.05(a) Copies of Cited References [R-07.2015]
Copies of cited foreign patent documents and non-patent literature references (except as noted below) are automatically furnished without charge to applicant together with the Office action in which they are cited. Copies of the cited references are also placed in the application file for use by the examiner during the prosecution. Copies of U.S. patents and U.S. patent application publications are not provided in paper to applicants and are not placed in the application file.
Copies of references cited by applicant in accordance with MPEP §§ 609, 707.05(b) and 708.02 are not furnished to applicant with the Office action. Additionally, copies of references cited in
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continuation applications if they had been previously cited in the parent application are not furnished. The examiner should check the left hand column of form PTO-892 if a copy of the reference is not to be furnished to the applicant.
Copies of foreign patent documents and nonpatent literature (NPL) which are cited by the examiner at the time of allowance will be furnished to applicant with the Office action and be retained in the image file wrapper. This will apply to all allowance actions, including first action allowances and Ex Parte Quayle actions.
In the rare instance where no art is cited in a continuing application, all the references cited during the prosecution of the parent application will be listed at allowance for printing in the patent.
To assist in providing copies of , or access to, references, the examiner should:
(A) Type the citation of the references on form PTO-892, “Notice of References Cited” using OACS;
(B) Include in the eRed Folder all of the references cited by the examiner which are to be furnished to the applicant.
(C) After any necessary review has taken place, forward the action to the TC mailbox for counting. Any application which is handed in without all of the required references will be returned to the examiner. The missing reference(s) should be obtained and the file returned to the technical support staff as quickly as possible.
In the case of design applications, procedures are the same as set forth in MPEP §§ 707.05(a) - 707.05(g).
¶ 7.82.03 How To Obtain Copies of U.S. Patents and U.S. Patent Application Publications
In June 2004, the USPTO ceased mailing paper copies of cited U.S. patents and U.S. patent application publications with all Office actions. See “USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies,” 1282 OG 109 (May 18, 2004). Foreign patent documents and non-patent literature will continue to be provided to the applicant on paper.
All U.S. patents and U.S. patent application publications are available free of charge from the USPTO website (www.uspto.gov/patft/index.html), for a fee from the Office of Public Records (http://ebiz1.uspto.gov/oems25p/index.html), and from commercial sources. Copies are also available at the Patent and Trademark Resource Centers (PTRCs). A list of the PTRCs may be found on the USPTO website (www.uspto.gov/products/library/ptdl/locations/index.jsp). Additionally, a simple new feature in the Office’s Private Patent Application Information Retrieval system (PAIR), E-Patent Reference, is available for downloading and printing of U.S. patents and U.S. patent application publications cited in U.S. Office Actions.
STEPS TO USE THE E-PATENT REFERENCE FEATURE
Access to Private PAIR is required to utilize E-Patent Reference. If you do not already have access to Private PAIR, the Office urges practitioners and applicants not represented by a practitioner to: (1) obtain a no-cost USPTO Public Key Infrastructure (PKI) digital certificate; (2) obtain a USPTO customer number; (3) associate all of their pending and new application filings with their customer number; (4) install free software (supplied by the Office) required to access Private PAIR and the E-Patent Reference; and (5) make appropriate arrangements for Internet access.
Instructions for performing the 5 steps:
Step 1: Full instructions for obtaining a PKI digital certificate are available at the Office’s Electronic Business Center (EBC) web page (www.uspto.gov/ebc/downloads.html). Note that a notarized signature will be required to obtain a digital certificate.
Step 2: To get a Customer Number, download and complete the Customer Number Request form, PTO/SB/125, from the USPTO website (www.uspto.gov/web/forms/sb0125.pdf). The completed form can be transmitted by facsimile to the Patent Electronic Business Center at (571) 273-0177, or mailed to the address on the form. If you are a registered attorney or agent, your registration number must be associated with your customer number. This association is accomplished by adding your registration number to the Customer Number Request form.
Step 3: A description of associating a customer number with the correspondence address of an application is described at the EBC Web page (www.uspto.gov/ebc/registration_pair.html).
Step 4: The software for electronic filing is available for downloading at www.uspto.gov/ebc. Users can also contact the EFS Help Desk at (571) 272-4100 and request a copy of the software on compact disc. Users will also need Adobe Acrobat Reader, which is available through a link from the USPTO website.
Step 5: Internet access will be required which applicants may obtain through a supplier of their own choice. As images of large documents must be downloaded, high-speed Internet access is recommended.
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The E-Patent Reference feature is accessed using a button on the Private PAIR screen. Ordinarily all of the cited U.S. patent and U.S. patent application publication references will be available over the Internet using the Office’s new E-Patent Reference feature. The size of the references to be downloaded will be displayed by E-Patent Reference so the download time can be estimated. Applicants and registered practitioners can select to download all of the references or any combination of cited references. Selected references will be downloaded as complete documents in Portable Document Format (PDF). The downloaded documents can be viewed and printed using
commercially available software, such asADOBE® READER®. ADOBE® READER® is available free of charge from Adobe S y s t e m s I n c o r p o r a t e d (www.adobe.com/products/acrobat/readermain.html).
Examiner Note:
This form paragraph is recommended for use in Office actions citing U.S. patents or U.S. patent application publications when the applicant is not represented by a registered patent attorney or a registered patent agent.
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707.05(b) Citation of Related Art and Information by Applicants [R-08.2012]
I. CITATION OF RELATEDART BYAPPLICANTS
MPEP § 609 sets forth guidelines for applicants, their attorneys and agents who desire to submit prior art for consideration by the U.S. Patent and Trademark Office.
Submitted citations will not in any way diminish the obligation of examiners to conduct independent prior art searches, or relieve examiners of citing other pertinent prior art of which they may be aware.
Prior art submitted by applicant in the manner provided in MPEP § 609 will not be supplied with an Office action.
II. CITATION OF RELATED INFORMATION BY APPLICANTS
37 CFR 1.105 and MPEP § 704.10 et seq. set forth procedures for examiners to require applicants, their attorneys and agents to submit information reasonably necessary for the Office to examine an application or treat a matter being addressed in an application.
Any such requirement, and any information submitted in reply thereto, will not in any way diminish the obligation of examiners to conduct independent prior art searches, or relieve examiners of citing other pertinent prior art of which they may be aware.
Information submitted by applicant in the manner provided in MPEP § 704.10 et seq. will not be supplied with an Office action.
707.05(c) Order of Listing [R-08.2012]
In citing references for the first time, the identifying data of the citation should be placed on form PTO-892 “Notice of References Cited,” a copy of which will be attached to the Office action. No distinction is to be made between references on which a claim is rejected and those formerly referred to as “pertinent.” With the exception of applicant
submitted citations, MPEP § 609 and § 708.02, it is recommended that the pertinent features of references which are not used as a basis for rejection be pointed out briefly.
See MPEP § 1302.12.
707.05(d) Reference Cited in Subsequent Actions [R-08.2012]
Where an applicant in an amendatory paper refers to a reference that is subsequently relied upon by the examiner, such reference shall be cited by the examiner in the usual manner using a form PTO-892, “Notice of References Cited,” unless applicant has listed the reference on a form PTO/SB/08 that has been initialed by the examiner.
707.05(e) Data Used in Citing References [R-07.2015]
37 CFR 1.104(d) (see also MPEP §§ 707.05 and 901.05(a)) requires the examiner to provide certain data when citing references. The examiner should provide the citations on the “Notice of References Cited” form PTO-892 (copy at MPEP § 707.05).
I. U.S. PATENT DOCUMENTS
If a U.S. patent application publication is cited by the examiner, the publication number, publication date, name of the applicant, class, and subclass should be cited under the section “U.S. Patent Documents” on the form PTO-892. For U.S. patents, the patent number, patent date, name of the patentee, and the relevant classification should also be cited under the same section. In addition, examiners are encouraged to cite the kind codes printed on U.S. patent application publications and patents. See MPEP § 901.04(a) for an explanation of the kind codes. See MPEP § 901.04 for details concerning the various series of U.S. patents and how to cite them. Note that patents of the X-Series (dated prior to July 4, 1836) are not to be cited by number. Some U.S. patents issued in 1861 have two numbers thereon. The larger number should be cited.
Defensive Publications and Statutory Invention Registrations (SIRs) should be cited under the
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section “U.S. Patent Documents” on the form PTO-892 (see MPEP §§ 711.06(a) and 901.06(a)).
II. FOREIGN PATENTS AND FOREIGN PUBLISHED APPLICATIONS
In citing foreign patents, the patent number, kind code, citation date, name of the country, name of the patentee, and the relevant classification, if appropriate, must be given. Foreign patents searched in those Technology Centers (TCs) using the International Patent Classification (IPC) will be cited using the appropriate IPC subclass/group/subgroup. On the application’s “Search Notes” FWF form and PTO-892, the IPC subclass/group/subgroup shall be cited in the spaces provided for “Classification.”
Where less than the entire disclosure of the reference is relied upon, the sheet and page numbers specifically relied upon and the total number of sheets of drawing and pages of specification must be included (except applicant submitted citations). If the entire disclosure is relied on, the total number of sheets and pages are not required to be included on the PTO-892.
Publications such as German allowed applications and Belgian and Netherlands printed specifications should be similarly handled.
See MPEP § 901.05(a) for a chart in which foreign language terms indicative of foreign patent and publication dates to be cited are listed.
III. PUBLICATIONS
Abstracts, abbreviatures, Alien Property Custodian publications, withdrawn U.S. patents, withdrawn U.S. patent application publications, and other non-patent documents should be cited under the section “Non-Patent Documents” on the form PTO-892). See MPEP § 711.06(a) for citation of abstracts, and abbreviatures. See MPEP § 901.06(c) for citation of Alien Property Custodian publications. In citing a publication, sufficient information should be given to determine the identity and facilitate the location of the publication. For books, the data required by 37 CFR 1.104(d) (MPEP § 707.05) with the specific pages relied on identified together with the Scientific and Technical Information Center
(STIC) call number will suffice. The call number appears on the “spine” of the book if the book is thick enough and, in any event, on the back of the title page. Books on interlibrary loan will be marked with the call numbers of the other library, of course. THIS NUMBER SHOULD NOT BE CITED. The same convention should be followed in citing articles from periodicals. The call number should be cited for periodicals owned by the STIC, but not for periodicals borrowed from other libraries. In citing periodicals, information sufficient to identify the article includes the author(s) and title of the article and the title, volume number issue number, date, and pages of the periodical. If the copy relied on is located only in the Technology Center making the action (there may be no call number), the additional information, “Copy in Technology Center — —” should be given.
The following are examples of nonpatent bibliographical citations:
(A) For books:
Winslow. C. E. A. Fresh Air and Ventilation. N.Y., E. P. Dutton, 1926. p. 97-112. TI17653.W5.
(B) For parts of books:
Smith, J. F. “Patent Searching.” in: Singer, T.E.R., Information and Communication Practice in Industry (NewYork, Reinhold, 1958), pp. 157-165. T 175.S5.
(C) For encyclopedia articles:
Calvert, R. “Patents (Patent Law).” in: Encyclopedia of Chemical Technology (1952 ed.), vol. 9, pp. 868-890. Ref. TP9.E68.
(D) For sections of handbooks:
Machinery’s Handbook, 16th ed. NewYork, International Press, 1959. pp. 1526-1527. TJ151.M3 1959.
(E) For periodical articles:
Noyes, W. A. A Climate for Basic Chemical Research
Chemical & Engineering News, Vol. 38, no. 42 (Oct. 17, 1960), pp. 91-95. TP1.I418.
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The following are examples of how withdrawn U.S. patents and withdrawn U.S. patent application publications should be cited:
(A) Withdrawn U.S. patents:
US 6,999,999, 10/2002, Brown et al., 403/155 (withdrawn).
(B) Withdrawn U.S. patents application publications:
US 2002/0009999A1, 7/2002, Jones et al., 403/155 (withdrawn).
Titles of books and periodicals SHOULD NOT be abbreviated because an abbreviation such as P.S.E.B.M. will not be sufficient to identify the publication. References are to be cited so that anyone reading a patent may identify and retrieve the publications cited. Bibliographic information provided must be at least enough to identify the publication. author, title and date. For books, minimal information includes the author, title, and date. For periodicals, at least the title of the periodical, the volume number, date, and pages should be given. These minimal citations may be made ONLY IF the complete bibliographic details are unknown or unavailable.
Where a nonpatent literature reference with a document identification number is cited, the identification number and the class and subclass should be included on form PTO-892. For example, the citation should be as follows: (S00840001) Winslow, C.E.A. Fresh Air and Ventilation N.Y., E.P. Dutton, 1926, p. 97-112, TH 7653, W5, 315/22.
If the original publication is located outside the Office, the examiner should immediately make or order a photocopy of at least the portion relied upon and indicate the class and subclass in which it will be filed, if any.
IV. ELECTRONIC DOCUMENTS
An electronic document is one that can be retrieved from an online source (e.g., the Internet, online database, etc.) or sources found on electronic storage media (e.g., CD-ROM, magnetic disk or tape, etc.). Many references in paper format may also be retrieved as electronic documents. Other references are retrievable only from electronic sources.
The U.S. Patent and Trademark Office follows the format recommended by World Intellectual Property Organization (WIPO) Standard ST.14, “Recommendation for the Inclusion of References Cited in Patent Documents.” The format for the citation of an electronic document is as similar as possible to the format used for paper documents of the same type, but with the addition of the following information in the locations indicated, where appropriate:
(A) the type of electronic medium provided in square brackets [ ] after the title of the publication or the designation of the host document, e.g., [online], [CD-ROM], [disk], [magnetic tape]. If desired, the type of publication (e.g., monograph, serial, database, electronic mail, computer program, bulletin board) may also be specified in the type of medium designator;
(B) the date when the document was retrieved from the electronic media in square brackets following after the date of publication, e.g., [retrieved on March 4, 1998], [retrieved on 1998-03-04]. The four-digit year must always be given.
(C) identification of the source of the document using the words “Retrieved from” and its address where applicable. This item will precede the citation of the relevant passages.
(D) reference to the unique Digital Object Identifier (DOI) number, or other unique identification number, if known.
(E) if considered necessary, the standard identifier and number assigned to the item, e.g., ISBN 2-7654-0537-9, ISSN 1045-1064. It should be noted that these numbers may differ for the same title in the printed and electronic versions.
(F) where multiple renderings of the same document are published (e.g., PDF and HTML), an indication of the format (e.g., paper, PDF) and the location of the cited document.
(G) use paragraph numbers, sentence numbers and line numbers (if available) to describe the specific location of the cited material within an electronic document.
(H) claim numbers, figure numbers, chemical formula numbers, mathematical formula numbers,
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table heading numbers, gene sequence numbers, and computer program listing numbers if available.
(I) specific headings within the document structure such as Best Mode of Performing the Invention or Industrial Applicability can be indicated if page, paragraph, and line numbers are not available in a cited patent document in electronic format.
(J) specific passages of the text can be indicated if the format of the document includes pagination or an equivalent internal referencing system, or by the first and last words of the passage cited.
Office copies of an electronic document must be retained if the same document may not be available for retrieval in the future. This is especially important for sources such as the Internet and online databases.
If an electronic document is also available in paper form it does not need to be identified as an electronic document, unless it is considered desirable or useful to do so.
Examples 1-4: Documents retrieved from online databases outside the Internet
Example 1:
SU 1511467 A (BRYAN MECH) 1989-09-30 (abstract) World Patents Index [database online]. Derwent Publications, Ltd. [retrieved on 1998-02-24]. Retrieved from: Questel. DW9016, Accession No. 90-121923.
Example 2:
DONG, XR. ‘Analysis of patients of multiple injuries with AIS-ISS and its clinical significance in the evaluation of the emergency managements’, Chung Hua Wai Ko Tsa Chih, May 1993, Vol. 31, No. 5, pages 301-302. (abstract) Medline [online]: United States National Library of Medicine [retrieved on 24 February 1998]. Retrieved from: Dialog . Medline Accession no. 94155687, Dialog Accession No. 07736604.
Example 3:
JENSEN, BP. ‘Multilayer printed circuits: production and application II’. Electronik, June-July 1976, No. 6-7, pages 8, 10,12,14,16. (abstract) INSPEC [online]. London, U.K.: Institute of Electrical Engineers [retrieved on 1998-02-24]. Retrieved from: STN International, USA. Accession No. 76:956632.
Example 4:
JP 3002404 (Tamura Toru) 1991-03-13 (abstract). [online] [retrieved on 1998-09-02]. Retrieved from: EPOQUE PAJ Database.
Examples 5-15: Documents retrieved from the Internet
Example 5:
(Electronic patent document – not page based)
WO 2004/091307 A2 (ADVANCED BIONUTRITON CORP) 2004-10-28, paragraphs [0068], [0069]; examples 2, 6.
GB 2,432,062 A (GE INSPECTION TECHNOLOGY LP) 2007.05.09, Detailed Description, third paragraph beginning ‘Referring to Figure 2’.
Example 6:
(Electronically registered Intellectual Property – other than patent documents)
HU D9900111 Industrial Design Application, (HADJDUTEJ TEJIPARI RT, DEBRECEN) 2007-07-19, [database online], [retrieved on 1999-10-26] Retrieved from the Industrial Design Database of the Hungarian Patent Office using Internet <URL: http://elajstrom.hpo.hu/?lang=EN>
Example 7:
(Entire Work – Book or Report)
WALLACE, S, and BAGHERZADEH, N. Multiple Branch and Block Prediction. Third International Symposium on High-Performance Computer Architecture [online], February 1997 [retrieved on 2007-07-18]. Retrieved from the Internet:< URL: http: / / ieeexplore . ieee.org/xpl/ freeabs_all.jsp?tp=&arnumber= 569645&isnumber=12370> <DOI:10.1109/HPCA.1977.569645>. >.
Example 8:
(Part of Work – chapter or equivalent designation)
National Research Council, Board on Agriculture, Committee on Animal Nutrition, Subcommittee on Beef Cattle Nutrition. Nutrient Requirements of Beef Cattle [online]. 7th revised edition. Washington, DC: National Academy Press, 1996 [retrieved on 2007-07-19]. Retrieved from the Internet:< URL: http://books.nap.edu/openbook.php ?record_id=9791&page=24> Chapter 3, page 24, table 3-1, ISBN-10: 0-309-06934-3.
Example 9:
(Electronic Serial – articles or other contributions)
AJTAI, Miklos,. Generating Hard Instances of Lattice Problems. Electronic Colloquium on Computational Complexity, Report
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TR96-007 [serialonline], [retrieved on 1996-01-30]. Retrieved from the In terne t <URL: ht tp : / /eccc . hpi-web.de/pub/eccc/reports/1996/TR96-007/index.html>
Example 10:
OWEN, RW et al. Olive-oil consumption and health: the possible role of antioxidants. Lancet Oncology, Vol 1, No. 2, 1 October 2000, pp. 107-112 [online], [retrieved on 2007-07-18]. Retrieved from the Internet <URL: http://www.ingentaconnect. com /content/els /14702045/2000/00000001/00000002/art0001> <DOI: 10.1016/S1470-2045(00)00015-2>
Example 11:
(Electronic bulletin boards, message systems, and discussion lists – Entire System)
BIOMET-L (A forum for the Bureau of Biometrics of New York) [online]. Albany (NY): Bureau of Biometrics, New York State Health Department, July, 1990 [retrieved 1998-02-24]. Retrieved from the Internet: <listserv@health.state.ny.us>, message: subscribe BIOMET-L your real name.
Example 12:
(Electronic bulletin boards, message systems, and discussion lists – Contributions)
PARKER, Elliott. ‘Re: citing electronic journals’. In PACS-L (Public Access Computer Systems Forum) [online]. Houston (TX): University of Houston Libraries, November 24, 1989; 13:29:35 CST [retrieved on 1998-02-24]. Retrieved from the Internet: <URL:telnet://bruser@a.cni.org>.
Example 13:
(Electronic mail)
‘Plumb design of a visual thesaurus’. The Scout Report [online]. 1998, vol. 5 no. 3 [retrieved on 1998-05-18]. Retrieved from Internet electronic mail: <listserv@cs.wisc.edu>, subscribe message: info scout-report. Retrieved from the Internet: <URL: http://scout.wisc.edu/Reports/ScoutReport/1998/scout-980515.html#13> ISSN: 1092-3861\cf15.
Example 14:
(Product Manual/Catalogue or other information obtained from a website)
Corebuilder 3500 Layer 3 High-function Switch. Datasheet [online]. 3Com Corporation, 1997 [retrieved on 1998-02-24]. R e t r i eve d f r o m t h e I n t e r n e t : < U R L : www.3com.com/products/dsheets/400347.html>.
Examples 15 and 16: Documents retrieved from CD-ROM products
Example 15:
JP 0800085 A (TORAY IND INC), (abstract), 1996-05-31. In: Patent Abstracts of Japan [CD-ROM].
Example 16:
HAYASHIDA, O et al.: Specific molecular recognition by chiral cage-type cyclophanes having leucine, valine, and alanine residues. : Tetrahedron 1955, Vol. 51 (31), p. 8423-36. In: Chemical Abstracts [CD-ROM]. CAS Abstract
707.05(f) [Reserved]
707.05(g) Incorrect Citation of References [R-11.2013]
Where an error in citation of a reference is brought to the attention of the Office by applicant, a letter correcting the error, together with a correct copy of the reference, is sent to applicant. See MPEP § 710.06. Where the error is discovered by the examiner, applicant is also notified and the period for reply restarted. See MPEP § 710.06.
One or more of form paragraphs 7.81, 7.82, 7.82.01, and 7.83 may be used to correct citations or copies of references cited.
¶ 7.81 Correction Letter Re Last Office Action
In response to applicant’s [1] regarding the last Office action, the following corrective action is taken.
The period for reply of [2] MONTHS set in said Office action is restarted to begin with the mailing date of this letter.
Examiner Note:
1. In bracket 1, insert --telephone inquiry of _____-- or --communication dated ______--.
2. In bracket 2, insert new period for reply.
3. This form paragraph must be followed by one or more of form paragraphs 7.82, 7.82.01 or 7.83.
4. Before restarting the period, the SPE should be consulted.
¶ 7.82 Correction of Reference Citation
The reference [1] was not correctly cited in the last Office action. The correct citation is shown on the attached PTO-892.
Examiner Note:
1. Every correction MUST be reflected on a corrected or new PTO-892.
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2. This form paragraph must follow form paragraph 7.81.
3. If a copy of the PTO-892 is being provided without correction, use form paragraph 7.83 instead of this form paragraph.
4. Also use form paragraph 7.82.01 if reference copies are being supplied.
¶ 7.82.01 Copy of Reference(s) Furnished
Copies of the following references not previously supplied are enclosed:
Examiner Note:
1. The USPTO ceased mailing paper copies of U.S. patents and U.S. application publications cited in Office Actions in nonprovisional applications beginning in June 2004. See the phase-in schedule of the E-Patent Reference program provided in “USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies,” 1282 OG 109 (May 18, 2004). Therefore, this form paragraph should only be used for foreign patent documents, non-patent literature, pending applications that are not stored in the image file wrapper (IFW) system, and other information not previously supplied.
2. The reference copies being supplied must be listed following this form paragraph.
3. This form paragraph must be preceded by form paragraph 7.81 and may also be used with form paragraphs 7.82 or 7.83.
¶ 7.83 Copy of Office Action Supplied
[1] of the last Office action is enclosed.
Examiner Note:
1. In bracket 1, explain what is enclosed. For example:
a. “A corrected copy”
b. “A complete copy”
c. A specific page or pages, e.g., “Pages 3-5”
d. “A Notice of References Cited, Form PTO-892”
2. This form paragraph should follow form paragraph 7.81 and may follow form paragraphs 7.82 and 7.82.01.
In any application otherwise ready for issue, in which the erroneous citation has not been formally corrected in an official paper, the examiner is directed to correct the citation by examiner’s amendment accompanying the Notice of Allowability form PTOL-37.
If a FOREIGN patent is incorrectly cited: for example, the wrong country is indicated or the country omitted from the citation, the General
Reference Branch of the Scientific and Technical Library may be helpful. The date and number of the patent are often sufficient to determine the correct country which granted the patent.
707.06 Citation of Decisions, Orders Memorandums, and Notices [R-11.2013]
In citing court decisions, when it is convenient to do so, the U.S. or Federal Reporter citation should be provided; in the alternative, the USPQ citation should be given.
The citation of decisions which are not available to the public should be avoided.
It is important to recognize that a federal district court decision that has been reversed on appeal cannot be cited as authority.
In citing a decision which is available to the public but which has not been published, the tribunal rendering the decision and complete data identifying the paper should be given. Thus, a decision of the Patent Trial and Appeal Board which has not been published but which is available to the public in the patented file should be cited, as “ Ex parte — — , decision of the Patent Trial and Appeal Board, Patent No. — — — , paper No. — — , — — — pages.”
Decisions found only in patented files should be cited only when there is no published decision on the same point.
When a Director’s order, notice or memorandum not yet incorporated into this manual is cited in any official action, the title and date of the order, notice or memorandum should be given. When appropriate other data, such as a specific issue of the Official Gazette may also be given.
707.07 Completeness and Clarity of Examiner’s Action [R-08.2012]
37 CFR 1.104 Nature of examination. *****
(b) Completeness of examiner’s action. The examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action
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§ 707.07EXAMINATION OF APPLICATIONS
of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable.
*****
707.07(a) Complete Action on Formal Matters [R-08.1012]
Any form that lists informalities and any additional formal requirements which the examiner desires to make should be included in the first action.
When any formal requirement is made in an examiner’s action, that action should, in all cases where it indicates allowable subject matter, call attention to 37 CFR 1.111(b) and state that a complete reply must either comply with all formal requirements or specifically traverse each requirement not complied with.
¶ 7.43.03 Allowable Subject Matter, Formal Requirements Outstanding
As allowable subject matter has been indicated, applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Examiner Note:
This form paragraph would be appropriate when changes (for example, drawing corrections or corrections to the specification) must be made prior to allowance.
707.07(b) -707.07(c) [Reserved]
707.07(d) Language To Be Used in Rejecting Claims [R-07.2015]
Where a claim is refused for any reason relating to the merits thereof it should be “rejected” and the ground of rejection fully and clearly stated, and the word “reject” must be used. The examiner should designate the statutory basis for any ground of rejection by express reference to a section of 35 U.S.C. in the opening sentence of each ground of rejection. Claims should not be grouped together in a common rejection unless that rejection is equally applicable to all claims in the group.
The burden is on the Office to establish any prima facie case of unpatentability (see, e.g., MPEP § 2103), thus the reasoning behind any rejection must be clearly articulated. For example, if the claim is rejected as broader than the enabling disclosure, the reason for so holding should be explained; if rejected as indefinite the examiner should point out wherein the indefiniteness resides; or if rejected as incomplete, the element or elements lacking should be specified, or the applicant be otherwise advised as to what the claim requires to render it complete.
See MPEP §§ 706.02(i), 706.02(j), and 706.02(m) for language to be used.
Everything of a personal nature must be avoided. Whatever may be the examiner’s view as to the utter lack of patentable merit in the disclosure of the application examined, he or she should not express in the record the opinion that the application is, or appears to be, devoid of patentable subject matter. Nor should he or she express doubts as to the allowability of allowed claims or state that every doubt has been resolved in favor of the applicant in granting him or her the claims allowed.
The examiner should, as a part of the first Office action on the merits, identify any claims which he or she judges, as presently recited, to be allowable and/or should suggest any way in which he or she considers that rejected claims may be amended to make them allowable.
707.07(e) Note All Outstanding Requirements [R-08.2012]
In taking up an amended application for action the examiner should note in every letter all the requirements outstanding against the application. Every point in the prior action of an examiner which is still applicable must be repeated or referred to, to prevent the implied waiver of the requirement . Such requirements include requirements for information under 37 CFR 1.105 and MPEP § 704.10; however the examiner should determine whether any such requirement has been satisfied by a negative reply under 37 CFR 1.105(a)(3).
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As soon as allowable subject matter is found, correction of all informalities then present should be required.
707.07(f) Answer All Material Traversed [R-11.2013]
In order to provide a complete application file history and to enhance the clarity of the prosecution history record, an examiner must provide clear explanations of all actions taken by the examiner during prosecution of an application.
Where the requirements are traversed, or suspension thereof requested, the examiner should make proper reference thereto in his or her action on the amendment.
Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant’s argument and answer the substance of it.
If applicant’s arguments are persuasive and upon reconsideration of the rejection, the examiner determines that the previous rejection should be withdrawn, the examiner must provide in the next Office communication the reasons why the previous rejection is withdrawn by referring specifically to the page(s) and line(s) of applicant’s remarks which form the basis for withdrawing the rejection. It is not acceptable for the examiner to merely indicate that all of applicant’s remarks form the basis for withdrawing the previous rejection. Form paragraph 7.38.01 may be used. If the withdrawal of the previous rejection results in the allowance of the claims, the reasons, which form the basis for the withdrawal of the previous rejection, may be included in a reasons for allowance. See MPEP § 1302.14. If applicant’s arguments are persuasive and the examiner determines that the previous rejection should be withdrawn but that, upon further consideration, a new ground of rejection should be made, form paragraph 7.38.02 may be used. See MPEP § 706.07(a) to determine whether the Office action may be made final.
If a rejection of record is to be applied to a new or amended claim, specific identification of that ground of rejection, as by citation of the paragraph in the
former Office letter in which the rejection was originally stated, should be given.
ANSWERING ASSERTED ADVANTAGES
After an Office action, the reply (in addition to making amendments, etc.) may frequently include arguments and affidavits to the effect that the prior art cited by the examiner does not teach how to obtain or does not inherently yield one or more advantages (new or improved results, functions or effects), which advantages are urged to warrant issue of a patent on the allegedly novel subject matter claimed.
If it is the examiner’s considered opinion that the asserted advantages are not sufficient to overcome the rejection(s) of record, he or she should state the reasons for his or her position in the record, preferably in the action following the assertion or argument relative to such advantages. By so doing the applicant will know that the asserted advantages have actually been considered by the examiner and, if appeal is taken, the Patent Trial and Appeal Board will also be advised. See MPEP § 716 et seq. for the treatment of affidavits and declarations under 37 CFR 1.132.
The importance of answering applicant’s arguments is illustrated by In re Herrmann, 261 F.2d 598, 120 USPQ 182 (CCPA 1958) where the applicant urged that the subject matter claimed produced new and useful results. The court noted that since applicant’s statement of advantages was not questioned by the examiner or the Board, it was constrained to accept the statement at face value and therefore found certain claims to be allowable. See also In re Soni, 54 F.3d 746, 751, 34 USPQ2d 1684, 1688 (Fed. Cir. 1995) (Office failed to rebut applicant’s argument).
Form paragraphs 7.37 through 7.37.13 may be used where applicant’s arguments are not persuasive.
Form paragraphs 7.38 through 7.38.02 may be used where applicant’s arguments are moot or persuasive.
¶ 7.37 Arguments Are Not Persuasive
Applicant’s arguments filed [1] have been fully considered but they are not persuasive. [2]
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Examiner Note:
1. The examiner must address all arguments which have not already been responded to in the statement of the rejection.
2. In bracket 2, provide explanation as to non-persuasiveness.
¶ 7.38 Arguments Are Moot Because of New Ground(s) of Rejection
Applicant’s arguments with respect to claim [1] have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Examiner Note:
The examiner must, however, address any arguments presented by the applicant which are still relevant to any references being applied.
¶ 7.38.01 Arguments Persuasive, Previous Rejection/Objection Withdrawn
Applicant’s arguments, see [1], filed [2], with respect to [3] have been fully considered and are persuasive. The [4] of [5] has been withdrawn.
Examiner Note:
1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous rejection/objection.
2. In bracket 3, insert claim number, figure number, the specification, the abstract, etc.
3. In bracket 4, insert rejection or objection.
4. In bracket 5, insert claim number, figure number, the specification, the abstract, etc.
¶ 7.38.02 Arguments Persuasive, New Ground(s) of Rejection
Applicant’s arguments, see [1], filed [2], with respect to the rejection(s) of claim(s) [3] under [4] have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of [5].
Examiner Note:
1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous rejection.
2. In bracket 3, insert the claim number(s).
3. In bracket 4, insert the statutory basis for the previous rejection.
4. In bracket 5, insert the new ground(s) of rejection, e.g., different interpretation of the previously applied reference, newly found prior art reference(s), and provide an explanation of the rejection.
¶ 7.37.01 Unpersuasive Argument: Age of Reference(s)
In response to applicant’s argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.02 Unpersuasive Argument: Bodily Incorporation
In response to applicant’s argument that [1], the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Examiner Note:
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of bodily incorporation.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.03 Unpersuasive Argument: Hindsight Reasoning
In response to applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.04 UnpersuasiveArgument: No Teaching, Suggestion, or Motivation To Combine
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, [1].
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Examiner Note:
1. In bracket 1, explain where the teaching, suggestion, or motivation for the rejection is found, either in the references, or in the knowledge generally available to one of ordinary skill in the art.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.05 Unpersuasive Argument: Nonanalogous Art
In response to applicant’s argument that [1] is nonanalogous art, it has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, [2].
Examiner Note:
1. In bracket 1, enter the name of the reference which applicant alleges is nonanalogous.
2. In bracket 2, explain why the reference is analogous art.
3. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.06 Unpersuasive Argument: Number of References
In response to applicant’s argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.07 UnpersuasiveArgument:Applicant Obtains Result Not Contemplated by Prior Art
In response to applicant’s argument that [1], the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Examiner Note:
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of results not contemplated by the prior art.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.08 Unpersuasive Argument: Arguing Limitations Which Are Not Claimed
In response to applicant’s argument that the references fail to show certain features of applicant’s invention, it is noted that
the features upon which applicant relies (i.e., [1]) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Examiner Note:
1. In bracket 1, recite the features upon which applicant relies, but which are not recited in the claim(s).
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.09 Unpersuasive Argument: Intended Use
In response to applicant’s argument that [1], a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Examiner Note:
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of intended use.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.10 Unpersuasive Argument: Limitation(s) in Preamble
In response to applicant’s arguments, the recitation [1] has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Examiner Note:
1. In bracket 1, briefly restate the recitation about which applicant is arguing.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.11 Unpersuasive Argument: General Allegation of Patentability
Applicant’s arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
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§ 707.07(f)EXAMINATION OF APPLICATIONS
¶ 7.37.12 Unpersuasive Argument: Novelty Not Clearly Pointed Out
Applicant’s arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.13 Unpersuasive Argument: Arguing Against References Individually
In response to applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
707.07(g) Piecemeal Examination [R-07.2015]
Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references. (See MPEP § 904.03.) Rejections on grounds such as lack of proper disclosure, lack of enablement, indefiniteness and res judicata should be applied where appropriate even though there may be a seemingly sufficient rejection on the basis of prior art. Where a non-prior art ground of rejection is proper, it should be stated with a full development of reasons rather than by a mere conclusion coupled with a boiler plate expression.
Certain technical rejections (e.g., negative limitations, indefiniteness) should not be made where the examiner, recognizing the limitations of the English language, is not aware of an improved manner of reciting the claimed invention.
Some situations exist where examination of an application appears best accomplished by limiting action on the claim thereof to a particular issue. These situations include the following:
(A) Where an application is too informal for a complete action on the merits. See MPEP § 702.01;
(B) Where there is an undue multiplicity of claims, and there has been no successful telephone request for election of a limited number of claims for full examination. See MPEP § 2173.05(n);
(C) Where there is a misjoinder of inventions and there has been no successful telephone request for election. See MPEP §§ 803, 810, and 812.01;
(D) Where disclosure is directed to perpetual motion. See Ex parte Payne, 1904 C.D. 42, 108 OG 1049 (Comm’r Pat. 1903). However, in such cases, the best prior art readily available should be cited and its pertinence pointed out without specifically applying it to the claims.
On the other hand, a rejection on the grounds of res judicata, no prima facie showing for reissue, new matter, or inoperativeness (not involving perpetual motion) should be accompanied by rejection on all other available grounds.
707.07(h) Notify of Inaccuracies in Amendment [R-08.2012]
See MPEP § 714, subsection II. G.
707.07(i) Each Claim To Be Mentioned in Each Office Action [R-11.2013]
In every Office action, each pending claim should be mentioned by number, and its treatment or status given. Since a claim retains its original numeral throughout the prosecution of the application, its history through successive actions is thus easily traceable. Each action should include a summary of the status of all claims presented for examination. Form PTO-326 “Office Action Summary” should be used.
Claims retained after a restriction requirement (37 CFR 1.142) or election of species requirement (37 CFR 1.146) should be treated as set out in MPEP §§ 821 to 821.04(b).
See MPEP Chapter 2300 for treatment of claims in the application of losing party in interference.
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The Index of Claims should be kept up to date as set forth in MPEP § 719.04.
707.07(j) State When Claims Are Allowable [R-11.2013]
I. INVENTOR FILED APPLICATIONS
When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.
This practice will expedite prosecution and offer a service to individual inventors not represented by a registered patent attorney or agent. Although this practice may be desirable and is permissible in any case deemed appropriate by the examiner, it is especially useful in all cases where it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications.
II. ALLOWABLE EXCEPT AS TO FORM
When an application discloses patentable subject matter and it is apparent from the claims and applicant’s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner’s action should be constructive in nature and, when possible, should offer a definite suggestion for correction. Further, an examiner’s suggestion of allowable subject matter may justify indicating the possible desirability of an interview to accelerate early agreement on allowable claims.
If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, the examiner may note in the Office action that certain aspects or features of the patentable invention have not been claimed and that if properly claimed such claims may be given favorable consideration.
If a claim is otherwise allowable but is dependent on a canceled claim or on a rejected claim, the Office action should state that the claim would be allowable if rewritten in independent form.
III. EARLY ALLOWANCE OF CLAIMS
Where the examiner is satisfied that the prior art has been fully developed and some of the claims are clearly allowable, the allowance of such claims should not be delayed.
Form paragraphs 7.43, 7.43.01, and 7.43.02 may be used to indicate allowable subject matter.
¶ 7.43 Objection to Claims, Allowable Subject Matter
Claim [1] objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
¶ 7.43.01Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Independent Claim/Dependent Claim
Claim [1] would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in this Office action.
Examiner Note:
This form paragraph is to be used when (1) the noted independent claim(s) or (2) the noted dependent claim(s), which depend from an allowable claim, have been rejected solely on the basis of35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and would be allowable if amended to overcome the rejection.
¶ 7.43.02Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Dependent Claim
Claim [1] would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Examiner Note:
This form paragraph is to be used only when the noted dependent claim(s), which depend from a claim that is rejected based on prior art, have been rejected solely on the basis of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and would be allowable if amended as indicated.
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§ 707.07(j)EXAMINATION OF APPLICATIONS
¶ 7.43.04 Suggestion of Allowable Drafted Claim(s), Pro Se
The following claim [1] drafted by the examiner and considered to distinguish patentably over the art of record in this application, [2] presented to applicant for consideration:
[3].
Examiner Note:
1. In bracket 2, insert --is-- or --are--.
2. In bracket 3, insert complete text of suggested claim(s).
Form paragraph 7.97 may be used to indicate allowance of claims.
¶ 7.97 Claims Allowed
Claim [1] allowed.
707.07(k) Numbering Paragraphs [R-08.2012]
It is good practice to number the paragraphs of the Office action consecutively. This facilitates their identification in the future prosecution of the application.
707.07(l) Comment on Examples [R-07.2015]
The results of the tests and examples should not normally be questioned by the examiner unless there is reasonable basis for questioning the results. If the examiner questions the results, the appropriate claims should be rejected as being based on an insufficient disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. In re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970). See MPEP §§ 2161 - 2164.08(c) for a discussion of the written description and enablement requirements of 35 U.S.C 112. The applicant must reply to the rejection, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to believe that the result would be as predicted. Care should be taken that new matter is not entered into the application.
If questions are present as to operability or utility, consideration should be given to the applicability of
a rejection under 35 U.S.C. 101. See MPEP §§ 706.03(a) and 2107 et seq.
707.08 Reviewing and Initialing by Assistant Examiner [R-11.2013]
The full surname of the examiner who prepares the Office action will, in all cases, be typed at the end of the action. The name and telephone number of the examiner who should be called if the application is to be discussed or an interview arranged will also be provided in the Office action. Form paragraph 7.100, 7.101 or 7.102 should be used.
¶ 7.100 Name And Number of Examiner To Be Contacted
Any inquiry concerning this communication should be directed to [1] at telephone number [2].
Examiner Note:
1. This form paragraph, form paragraph 7.101, or form paragraph 7.102 should be used at the conclusion of all actions.
2. In bracket 1, insert the name of the examiner designated to be contacted first regarding inquiries about the Office action. This could be either the non-signatory examiner preparing the action or the signatory examiner.
3. In bracket 2, insert the individual area code and phone number of the examiner to be contacted.
¶ 7.101 Telephone Inquiry Contacts- Non 5/4/9 Schedule
Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [6], can be reached on [7]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner Note:
1. In bracket 1, insert your name.
2. In bracket 2, insert your individual area code and phone number.
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3. In bracket 3, insert the days that you work every week, e.g. “Monday-Thursday” for an examiner off every Friday.
4. In brackets 4 and 5, insert your normal duty hours, e.g. “6:30 AM - 5:00 PM.”
5. In bracket 6, insert your SPE’s name.
6. In bracket 7, insert your SPE’s area code and phone number.
¶ 7.102 Telephone Inquiry Contacts- 5/4/9 Schedule
Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5]. The examiner can also be reached on alternate [6].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [7], can be reached on [8]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner Note:
1. In bracket 1, insert your name.
2. In bracket 2, insert your individual area code and phone number.
3. In bracket 3, insert the days that you work every week, e.g. “Monday-Thursday” for an examiner off on alternate Fridays.
4. In brackets 4 and 5, insert your normal duty hours, e.g. “6:30 AM - 4:00 PM.”
5. In bracket 6, insert the day in each pay-period that is your compressed day off, e.g. “Fridays” for an examiner on a 5/4/9 work schedule with the first Friday off.
6. In bracket 7, insert your SPE’s name.
7. In bracket 8, insert your SPE’s area code and phone number.
The surname or initials of the examiner who prepared the action and the date on which the action was prepared should appear at the end of the action. If this examiner does not have the authority to sign the action, he or she should initial as appropriate,
and forward the action to the authorized signatory examiner for signing.
707.09 Signing by Primary or Other Authorized Examiner [R-11.2013]
The electronic signature of the Supervisory Patent Examiner, Primary or other authorized examiner is inserted to sign Office actions. All Office actions and other correspondence should be signed promptly.
707.10 Entry [R-11.2013]
The action, signed by the authorized examiner, is soft scanned into the IFW and a copy is given electronically or mailed to applicant.
707.11 Date [R-08.2012]
The mailing date should not be typed when the Office action is written, but should be stamped or printed on all copies of the action after it has been signed by the authorized signatory examiner and the copies are about to be mailed.
707.12 Mailing [R-11.2013]
Access to the examiner’s action is given electronically or copies are mailed after the original, initialed by the assistant examiner, if any, and signed by the authorized signatory examiner, has been soft scanned into the image file wrapper.
707.13 Returned Office Action [R-11.2013]
Office actions are sometimes returned to the Office because the United States Postal Service has not been able to deliver them. Upon receipt of the returned Office action, the Technology Center (TC) technical support staff will check the application file record to ensure that the Office action was mailed to the correct correspondence address. If the Office action was not mailed to the correct correspondence address, it should be stamped “remailed” with the remailing date and mailed to the correct correspondence address. The period running against the application begins with the date of remailing. If the Office action was mailed to the correct correspondence address and it was addressed to an
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§ 707.13EXAMINATION OF APPLICATIONS
attorney or agent, a letter along with a copy of the Office action may be sent to the applicant, or the first named inventor if more than one inventor is the applicant, informing the applicant of the returned action. The time period for reply to the Office action will be restarted to run from the mailing date of the letter informing applicant of the returned action .
A copy of the letter and a copy of the envelope should be added to the IFW. If the period dating from the remailing elapses with no communication from applicant, the application is abandoned.
708 Order of Examination [R-11.2013]
Nonprovisional applications filed in the U.S. Patent and Trademark Office and accepted as complete applications are assigned for examination to the respective examining Technology Centers (TCs) having the classes of inventions to which the applications relate. Nonprovisional applications are ordinarily taken up for examination by the examiner to whom they have been assigned in the order in which they have been filed except for those applications in which examination has been advanced pursuant to 37 CFR 1.102. See 37 CFR 1.496 and MPEP § 1893.03 for the order of examination of international applications in the national stage, including taking up out of order certain national stage applications which have been indicated as satisfying the criteria of PCT Article 33(1)-(4) as to novelty, inventive step and industrial applicability.
Applications which have been acted upon by the examiner, and which have been placed by the applicant in condition for further action by the examiner (amended applications) shall be taken up for action in such order as shall be determined by the Director of the USPTO.
Each examiner will give priority to that application in his or her docket, whether amended or new, which has the oldest effective U.S. filing date. This basic policy applies to all applications; rare circumstances may justify TC Directors granting individual exceptions.
The actual filing date of a continuation-in-part application is used for docketing purposes. However,
the examiner may act on a continuation-in-part application by using the effective filing date, if desired.
If at any time an examiner determines that the “effective filing date” status of any application differs from what the records show, the technical support staff should be informed, who should promptly amend the records to show the correct status, with the date of correction.
The order of examination for each examiner is to give priority to reissue applications and to reexamination proceedings, with top priority to reissue applications in which litigation has been stayed (MPEP § 1442.03), to ex parte reexamination proceedings involved in litigation (MPEP § 2261), and to inter partes reexamination proceedings involved in litigation (MPEP § 2661), then to those special cases having a fixed 30-day due date, such as examiner’s answers and decisions on motions. Most other cases in the “special” category (for example, interference cases, cases made special by petition, cases ready for final conclusion, etc.) will continue in this category, with the earliest effective U.S. filing date among them normally controlling priority.
All amendments before final rejection should be responded to within two months of receipt.
708.01 List of Special Cases [R-07.2015]
37 CFR 1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Director to expedite the business of the Office, or upon filing of a request under paragraph (b) or (e) of this section or upon filing a petition or request under paragraph (c) or (d) of this section with a showing which, in the opinion of the Director, will justify so advancing it.
(b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination.
(c) A petition to make an application special may be filed without a fee if the basis for the petition is:
(1) The applicant’s age or health; or
(2) That the invention will materially:
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(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy resources; or
(iii) Contribute to countering terrorism.
(d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the fee set forth in § 1.17(h).
(e) A request for prioritized examination under this paragraph must comply with the requirements of this paragraph and be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, the publication fee set forth in § 1.18(d). An application for which prioritized examination has been requested may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim. Prioritized examination under this paragraph will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings.A request for prioritized examination must also comply with the requirements of paragraph (e)(1) or paragraph (e)(2) of this section.
(1) A request for prioritized examination may be filed with an original utility or plant nonprovisional application under 35 U.S.C. 111(a). The application must include a specification as prescribed by 35 U.S.C. 112 including at least one claim, a drawing when necessary, and the inventor’s oath or declaration on filing, except that the filing of an inventor’s oath or declaration may be postponed in accordance with § 1.53(f)(3) if an application data sheet meeting the conditions specified in § 1.53(f)(3)(i) is present upon filing. If the application is a utility application, it must be filed via the Office’s electronic filing system and include the filing fee under § 1.16(a), search fee under § 1.16(k), and examination fee under § 1.16(o) upon filing. If the application is a plant application, it must include the filing fee under § 1.16(c), search fee under § 1.16(m), and examination fee under § 1.16(q) upon filing. The request for prioritized examination in compliance with this paragraph must be present upon filing of the application, except that the applicant may file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, and any multiple dependent claim not later than one month from a first decision on the request for prioritized examination. This one-month time period is not extendable.
(2) A request for prioritized examination may be filed with or after a request for continued examination in compliance with § 1.114. If the application is a utility application, the request must be filed via the Office’s electronic filing system. The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114. Only a single such request for prioritized examination under this paragraph may be granted in an application.
Certain procedures by the examiners take precedence over actions even on special cases.
For example, all papers typed and ready for signature should be completed and mailed.
All allowed cases returned to the examiner marked as a “Printer Rush” must be processed and returned within the period indicated.
Reissue applications, particularly those involved in stayed litigation, should be given priority.
Applications in which practice requires that the examiner act within a set period, such as 2 months after appellants brief to furnish the examiner’s answers (MPEP § 1208), necessarily take priority over special cases without specific time limits.
If an examiner has an application in which he or she is satisfied that it is in condition for allowance, or in which he or she is satisfied will have to be finally rejected, he or she should give such action forthwith instead of making the application await its turn.
Subject alone to diligent prosecution by the applicant, an application for patent that has once been made special and advanced out of turn for examination by reason of a ruling made in that particular case (by the Director of the USPTO or a Commissioner) will continue to be special throughout its entire course of prosecution in the U.S. Patent and Trademark Office, including appeal, if any, to the Patent Trial and Appeal Board.
The following is a list of special cases (those which are advanced out of turn for examination):
(A) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and when for that reason the head of some department of the Government requests immediate action and the Director of the USPTO so orders (37 CFR 1.102).
(B) Applications made special as a result of a petition to make special, a request for prioritized examination, or a request for participation in a PPH program. (See MPEP § 708.02 et seq.)
(C) Applications for reissues, particularly those involved in stayed litigation (37 CFR 1.176).
(D) Applications remanded by an appellate tribunal for further action.
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(E) An application, once taken up for action by an examiner according to its effective filing date, should be treated as special by an examiner, art unit or Technology Center to which it may subsequently be transferred; exemplary situations include new cases transferred as the result of a telephone election and cases transferred as the result of a timely reply to any official action.
(F) Applications which appear to interfere with other applications previously considered and found to be allowable, or which will be placed in interference with an unexpired patent or patents.
(G) Applications ready for allowance, or ready for allowance except as to formal matters.
(H) Applications which are in condition for final rejection.
(I) Applications pending more than 5 years, including those which, by relation to a prior United States application, have an effective pendency of more than 5 years. See MPEP § 707.02.
(J) Reexamination proceedings, MPEP §§ 2261 and 2661.
See also MPEP §§ 714.13, 1207, and 1309.
708.02 Petition To Make Special [R-07.2015]
37 CFR 1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Director to expedite the business of the Office, or upon filing of a request under paragraph (b) or (e) of this section or upon filing a petition or request under paragraph (c) or (d) of this section with a showing which, in the opinion of the Director, will justify so advancing it.
(b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination.
(c) A petition to make an application special may be filed without a fee if the basis for the petition is:
(1) The applicant’s age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy resources; or
(iii) Contribute to countering terrorism.
(d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the fee set forth in § 1.17(h).
(e) A request for prioritized examination under this paragraph must comply with the requirements of this paragraph and be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, the publication fee set forth in § 1.18(d). An application for which prioritized examination has been requested may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim. Prioritized examination under this paragraph will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings.A request for prioritized examination must also comply with the requirements of paragraph (e)(1) or paragraph (e)(2) of this section.
(1) A request for prioritized examination may be filed with an original utility or plant nonprovisional application under 35 U.S.C. 111(a). The application must include a specification as prescribed by 35 U.S.C. 112 including at least one claim, a drawing when necessary, and the inventor’s oath or declaration on filing, except that the filing of an inventor’s oath or declaration may be postponed in accordance with § 1.53(f)(3) if an application data sheet meeting the conditions specified in § 1.53(f)(3)(i) is present upon filing. If the application is a utility application, it must be filed via the Office’s electronic filing system and include the filing fee under § 1.16(a), search fee under § 1.16(k), and examination fee under § 1.16(o) upon filing. If the application is a plant application, it must include the filing fee under § 1.16(c), search fee under § 1.16(m), and examination fee under § 1.16(q) upon filing. The request for prioritized examination in compliance with this paragraph must be present upon filing of the application, except that the applicant may file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, and any multiple dependent claim not later than one month from a first decision on the request for prioritized examination. This one-month time period is not extendable.
(2) A request for prioritized examination may be filed with or after a request for continued examination in compliance with § 1.114. If the application is a utility application, the request must be filed via the Office’s electronic filing system. The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114. Only a single such request for prioritized examination under this paragraph may be granted in an application.
New applications ordinarily are taken up for examination in the order of their effective United States filing dates. Certain exceptions are made by way of petitions to make special, which may be granted under the conditions set forth below. Any statement in support of a petition to make special must be based on a good faith belief that the invention in fact qualifies for special status. See 37 CFR 1.56 and 11.18. Advancement of examination
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under 37 CFR 1.102 may be sought via a petition to make special under 37 CFR 1.102(c) - (d), or via a request for prioritized examination under 37 CFR 1.102(e).
Any petition to make special, other than those based on applicant’s health or age or participation in the Patent Prosecution Highway (PPH) pilot program, filed on or after August 25, 2006 must meet the requirements for the revised accelerated examination program set forth in MPEP § 708.02(a). For prioritized examination under 37 CFR 1.102(e), see MPEP § 708.02(b). See subsections I and II below for the requirements for filing a petition to make special based on applicant’s health or age.
See the version of MPEP § 708.02 in force in August 2010 (Eighth Edition, Revision 9) for guidelines and the requirements for a petition to make special filed in an application before August 25, 2006. A petition to make special filed on or after August 25, 2006 will only be granted if it is based upon applicant’s health or age, is under the PPH pilot program (see MPEP § 708.02(c)), or complies with the requirements set forth in MPEP § 708.02(a). For a request for prioritized examination under 37 CFR 1.102(e) filed on or after September 26, 2011, see MPEP § 708.02(b).
I. APPLICANT’S HEALTH
An application may be made special upon a petition by applicant accompanied by any evidence showing that the state of health of the applicant is such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course, such as a doctor’s certificate or other medical certificate. No fee is required for such a petition. See 37 CFR 1.102(c).
Personal/medical information submitted as evidence to support the petition will be available to the public if the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14. If applicant does not wish to have this information become part of the application file record, the information must be submitted pursuant to MPEP § 724.02.
II. APPLICANT’S AGE
An application may be made special upon filing a petition including any evidence showing that the applicant is 65 years of age, or more, such as applicant’s statement or a statement from a registered practitioner that he or she has evidence that the applicant is 65 years of age or older. No fee is required with such a petition. See 37 CFR 1.102(c).
Personal/medical information submitted as evidence to support the petition will be available to the public if the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14. If applicant does not wish to have this information become part of the application file record, the information must be submitted pursuant to MPEP § 724.02.
III. ENVIRONMENTAL QUALITY
The U.S. Patent and Trademark Office will accord “special” status to all patent applications for inventions which materially enhance the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).
All applicants desiring to participate in this program should petition that their applications be accorded “special” status. The petition under 37 CFR 1.102 must state that special status is sought because the invention materially enhances the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements. No fee is required for such a petition. See 37 CFR 1.102(c). If the application disclosure is not clear on its face that the claimed invention materially enhances the quality of the environment by contributing to the restoration or maintenance of one of the basic life-sustaining natural elements, the petition must be accompanied by a statement under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a
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hypothetical end-user might specially apply the invention in a manner that could materially enhance the quality of the environment. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may enhance the quality of the environment.
IV. ENERGY
The U.S. Patent and Trademark Office will, on petition, accord “special” status to all patent applications for inventions which materially contribute to (A) the discovery or development of energy resources, or (B) the more efficient utilization and conservation of energy resources. Examples of inventions in category (A) would be developments in fossil fuels (natural gas, coal, and petroleum), hydrogen fuel technologies, nuclear energy, solar energy, etc. Category (B) would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, household appliances, etc. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).
All applicants desiring to participate in this program should petition that their applications be accorded “special” status. The petition under 37 CFR 1.102 must state that special status is sought because the invention materially contributes to category (A) or (B) set forth above. No fee is required for such a petition, 37 CFR 1.102(c). If the application disclosure is not clear on its face that the claimed invention materially contributes to category (A) or (B), the petition must be accompanied by a statement under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially contribute to category (A) or (B). Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to category (A) or (B).
V. INVENTIONS FOR COUNTERING TERRORISM
In view of the importance of developing technologies for countering terrorism and the desirability of prompt disclosure of advances made in these fields, the U.S. Patent and Trademark Office will accord “special” status to patent applications for inventions which materially contribute to countering terrorism. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).
International terrorism as defined in 18 U.S.C. 2331 includes “activities that - (A) involve violent acts or acts dangerous to human life that are a violation of the criminal laws of the United States or of any State, or that would be a criminal violation if committed within the jurisdiction of the United States or of any State; [and] (B) appear to be intended - (i) to intimidate or coerce a civilian population; (ii) to influence the policy of a government by intimidation or coercion; or (iii) to affect the conduct of a government by assassination or kidnapping...” The types of technology for countering terrorism could include, but are not limited to, systems for detecting/identifying explosives, aircraft sensors/security systems, and vehicular barricades/disabling systems.
All applicants desiring to participate in this program should petition that their applications be accorded special status. The petition under 37 CFR 1.102 must state that special status is sought because the invention materially contributes to countering terrorism. No fee is required for such a petition. See 37 CFR 1.102(c). If the application disclosure is not clear on its face that the claimed invention is materially directed to countering terrorism, the petition must be accompanied by a statement under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the invention materiality contributes to countering terrorism. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could counter terrorism. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because
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some minor aspect of the claimed invention may be directed to countering terrorism.
VI. HANDLING OF PETITIONS TO MAKE SPECIAL OR REQUESTS FOR ADVANCEMENT OF EXAMINATION
Applications which have been made special will be advanced out of turn for examination and will continue to be treated as special throughout the entire prosecution in the Office with the exception of applications having been granted prioritized examination which remain special until prioritized examination is terminated or until a final disposition of the application (see MPEP § 708.02(b), subsection II).
Each petition to make special or request to advance examination, regardless of the ground upon which the petition or request is based and the nature of the decision, is made of record in the application file, together with the decision thereon. The part of the Office that rules on a petition is responsible for properly entering that petition and the resulting decision in the file record. The petition, with any attached papers and supporting affidavits, will be provided as a single document in the application’s image file wrapper. The decision will be provided as a separate document similarly entered. To ensure entries in the “Contents” in proper order, the technical support staff in the TC will make certain that all papers prior to a petition have been entered and/or listed in the application file before forwarding it for consideration of the petition. Note MPEP § 1002.02(s). Currently petitions to make special based on applicant’s health or age, participation in a PPH program, or under a pilot program, and requests for prioritized examination under 37 CFR 1.102(e) are decided by the Office of Petitions. All other petitions to make special are decided by the QualityAssurance Specialist of the TC to which the application is assigned.
708.02(a) Accelerated Examination [R-07.2015]
All petitions to make special, except those based on applicant’s health or age or participation in the Patent Prosecution Highway (PPH) pilot program must meet the requirements set forth in subsection I below.
See MPEP § 708.02 subsection I or II (where appropriate) for the requirements for filing a petition to make special based on applicant’s health or age. For prioritized examination under 37 CFR 1.102(e), see MPEP § 708.02(b). For participation in the Patent Prosecution Highway program, see MPEP § 708.02(c).
I. REQUIREMENTS FOR PETITIONS TO MAKE SPECIAL UNDER ACCELERATED EXAMINATION
A new application may be granted accelerated examination status under the following conditions:
(A) The application must be filed with a petition to make special under the accelerated examination program accompanied by either the fee set forth in 37 CFR 1.17(h) or a statement that the claimed subject matter is directed to environmental quality, the development or conservation of energy resources, or countering terrorism. See 37 CFR 1.102(c)(2). Applicant should use form PTO/SB/28 for filing the petition.
(B) The application must be a non-reissue utility or design application filed under 35 U.S.C. 111(a).
(C) The application, petition, and required fees must be filed electronically using the USPTO’s electronic filing system (EFS), or EFS-Web. If the USPTO’s EFS and EFS-Web are not available to the public during the normal business hours for these systems at the time of filing the application, applicant may file the application, other papers and fees by mail accompanied by a statement that EFS and EFS-Web were not available during the normal business hours, but the final disposition of the application may occur later than twelve months from the filing of the application. See subsection VIII.F. below for more information.
(D) At the time of filing, the application must be complete under 37 CFR 1.51 and in condition for examination. For example, the application must be filed together with the basic filing fee, search fee, examination fee, and application size fee (if applicable), and an executed inventor’s oath or declaration (under 37 CFR 1.63 or 1.64) for each inventor. See subsection VIII.C. below for more information.
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(E) The application must contain three or fewer independent claims and twenty or fewer total claims. The application must also not contain any multiple dependent claims. By filing a petition to make special under the accelerated examination program the applicant is agreeing not to separately argue the patentability of any dependent claim during any appeal in the application. Specifically, the applicant is agreeing that the dependent claims will be grouped together with and not argued separately from the independent claim from which they depend in any appeal brief filed in the application (37 CFR 41.37(c)(1)(vii)). The petition must include a statement that applicant will agree not to separately argue the patentability of any dependent claim during any appeal in the application. See form PTO/SB/28.
(F) The claims must be directed to a single invention. If the USPTO determines that all the claims presented are not directed to a single invention, applicant must make an election without traverse in a telephonic interview. The petition must include a statement that applicant will agree to make an election without traverse in a telephonic interview. See form PTO/SB/28.
(G) The applicant must be willing to have an interview (including an interview before a first Office action) to discuss the prior art and any potential rejections or objections with the intention of clarifying and possibly resolving all issues with respect to patentability at that time. The petition must include a statement that applicant will agree to have such an interview when requested by the examiner. See form PTO/SB/28.
(H) At the time of filing, applicant must provide a statement that a preexamination search was conducted, including an identification of the field of search by United States class and subclass and the date of the search, where applicable, and for database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search.
(1) This preexamination search must involve U.S. patents and patent application publications, foreign patent documents, and non-patent literature, unless the applicant can justify with reasonable certainty that no references more pertinent than those already identified are likely to be found in the
eliminated source and includes such a justification with this statement.
(2) This preexamination search must be directed to the claimed invention and encompass all of the features of the claims, giving the claims the broadest reasonable interpretation.
(3) The preexamination search must also encompass the disclosed features that may be claimed. An amendment to the claims (including any new claim) that is not encompassed by the preexamination search or an updated accelerated examination support document (see item I) will be treated as not fully responsive and will not be entered. See subsection IV below for more information.
(4) A search report from a foreign patent office will not satisfy this preexamination search requirement unless the search report satisfies the requirements for a preexamination search.
(5) Any statement in support of a petition to make special must be based on a good faith belief that the preexamination search was conducted in compliance with these requirements. See 37 CFR 1.56 and 11.18.
(I) At the time of filing, applicant must provide in support of the petition an accelerated examination support document.
(1) An accelerated examination support document must include an information disclosure statement (IDS) in compliance with 37 CFR 1.98 citing each reference deemed most closely related to the subject matter of each of the claims.
(2) For each reference cited, the accelerated examination support document must include an identification of all the limitations in the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference.
(3) The accelerated examination support document must include a detailed explanation of how each of the claims are patentable over the references cited with the particularity required by 37 CFR 1.111(b) and (c).
(4) The accelerated examination support document must include a concise statement of the utility of the invention as defined in each of the independent claims (unless the application is a design application).
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(5) The accelerated examination support document must include a showing of where each limitation of the claims finds support under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112 in the written description of the specification. If applicable, the showing must also identify:
(i) each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6; and
(ii) the structure, material, or acts in the specification that correspond to each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of the claims finds support under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112 in each such application in which such support exists.
(6) The accelerated examination support document must identify any cited references that may be disqualified as prior art under 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c).
II. DECISION ON PETITION TO MAKE SPECIAL
Applicant will be notified of the decision by the deciding official. If the application and/or petition does not meet all the requirements set forth in subsection I above for the application to be granted special status (including a determination that the search is deemed to be insufficient), the applicant will be notified of the defects and the application will remain in the status of a new application awaiting action in its regular turn. In those instances in which the petition or accelerated examination support document is defective in one or more requirements, applicant will be given a single opportunity to perfect the petition or accelerated examination support document within a time period of one month (no extensions under 37 CFR 1.136(a)). This opportunity to perfect a petition does not apply to applications that are not in condition for examination on filing. See subsection VIII.C. below. If the document is satisfactorily corrected in a timely manner, the petition will then be granted,
but the final disposition of the application may occur later than twelve months from the filing date of the application. Once a petition has been granted, prosecution will proceed according to the procedure set forth below.
III. THE INITIAL ACTION ON THE APPLICATION BY THE EXAMINER
Once the application is granted special status, the application will be docketed and taken up for action expeditiously (e.g., within two weeks of the granting of special status). If it is determined that all the claims presented are not directed to a single invention, the telephone restriction practice set forth in MPEP § 812.01 will be followed. Applicant must make an election without traverse during the telephonic interview. If applicant refuses to make an election without traverse, or the examiner cannot reach the applicant after a reasonable effort, the examiner will treat the first claimed invention (the invention of claim 1) as constructively elected without traverse for examination. Continuing applications (e.g., a divisional application directed to the non-elected inventions) will not automatically be given special status based on papers filed with the petition in the parent application. Each continuing application must on its own meet all requirements for special status.
If the USPTO determines that a possible rejection or other issue must be addressed, the examiner will telephone the applicant to discuss the issue and any possible amendment or submission to resolve such issue. The USPTO will not issue an Office action (other than a notice of allowance) unless either: (A) an interview was conducted but did not result in the application being placed in condition for allowance; or (B) there is a determination that an interview is unlikely to result in the application being placed in condition for allowance. Furthermore, prior to the mailing of any Office action rejecting the claims, the USPTO will conduct a conference to review the rejections set forth in the Office action.
If an Office action other than a notice of allowance or a final Office action is mailed, the Office action will set a shortened statutory period of two months. Extensions of this shortened statutory period under 37 CFR 1.136(a) will be permitted. However, filing
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a petition for extension of time will result in the application being taken out of the accelerated examination program. Failure to timely file a reply will result in abandonment of the application. See subsections V and VI for more information on post-allowance and after-final procedures.
IV. REPLY BY APPLICANT
A reply to an Office action must be limited to the rejections, objections, and requirements made. Any amendment that attempts to: (A) add claims which would result in more than three independent claims, or more than twenty total claims, pending in the application; (B) present claims not encompassed by the preexamination search (see subsection I, item (H) above) or an updated accelerated examination support document (see next paragraph); or (C) present claims that are directed to a nonelected invention or an invention other than previously claimed in the application, will be treated as not fully responsive and will not be entered. See subsection VIII.D. below for more information.
For any amendment to the claims (including any new claim) that is not encompassed by the accelerated examination support document in subsection I, item (I) above, applicant is required to provide an updated accelerated examination support document that encompasses the amended or new claims at the time of filing the amendment. Failure to provide such updated accelerated examination support document at the time of filing the amendment will cause the amendment to be treated as not fully responsive and not to be entered. See subsection VIII.D. below for more information. Any IDS filed with an updated accelerated examination support document must also comply with the requirements of 37 CFR 1.97 and 1.98.
Any reply or other papers must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the papers are not filed electronically via EFS-Web, or the reply is not fully responsive, the final disposition of the application may occur later than twelve months from the filing of the application.
V. POST-ALLOWANCE PROCESSING
The mailing of a notice of allowance is the final disposition for purposes of the twelve-month goal for the accelerated examination program. In response to a notice of allowance, applicant must pay the issue fee within three months from the date of mailing of the Notice of Allowance and Fee(s) Due (form PTOL-85) to avoid abandonment of the application. In order for the application to be expeditiously issued as a patent, the applicant must also: (A) pay the issue fee (and any outstanding fees due) within one month from the mailing date of the form PTOL-85; and (B) not file any post-allowance papers that are not required by the USPTO (e.g., an amendment under 37 CFR 1.312 that was not requested by the USPTO).
VI. AFTER-FINAL AND APPEAL PROCEDURES
The mailing of a final Office action or the filing of a notice of appeal, whichever is earlier, is the final disposition for purposes of the twelve-month goal for the accelerated examination program. Prior to the mailing of a final Office action, the USPTO will conduct a conference to review the rejections set forth in the final Office action (i.e., the type of conference conducted in an application on appeal when the applicant requests a pre-appeal brief conference). In order for the application to be expeditiously forwarded to the Patent Trial and Appeal Board (PTAB) for a decision, applicant must: (A) promptly file the notice of appeal, appeal brief, and appeal fees; and (B) not request a pre-appeal brief conference. A pre-appeal brief conference would not be of value in an application under a final Office action because the examiner will have already conducted such a conference prior to mailing the final Office action. During the appeal process, the application will be treated in accordance with the normal appeal procedures (see MPEP Chapter 1200). The USPTO will continue to treat the application as special under the accelerated examination program after the decision by the PTAB.
Any after-final amendment, affidavit, or other evidence filed under 37 CFR 1.116 or 41.33 must also meet the requirements set forth in subsection IV above. If applicant files a request for continued examination (RCE) under 37 CFR 1.114 with a
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submission and fee, the submission must meet the reply requirements under 37 CFR 1.111 (see 37 CFR 1.114(c)) and the requirements set forth in subsection IV above. The filing of the RCE is a final disposition for purposes of the twelve-month goal for the accelerated examination program. The application will retain its special status and remain in the accelerated examination program. Thus, the examiner will continue to examine the application in accordance with the procedures set forth in subsection III above and any subsequent replies filed by applicant must meet the requirements of subsection IV above. The goal of the accelerated examination program will then be to reach a final disposition of the application within twelve months from the filing of the RCE.
VII. PROCEEDINGS OUTSIDE THE NORMAL EXAMINATION PROCESS
If an application becomes involved in proceedings outside the normal examination process (e.g., a secrecy order, national security review, interference, or petitions under 37 CFR 1.181, 1.182, or 1.183), the USPTO will treat the application special under the accelerated examination program before and after such proceedings. During those proceedings, however, the application will not be accelerated. For example, during an interference proceeding, the application will be treated in accordance with the normal interference procedures and will not be treated under the accelerated examination program. Once any one of these proceedings is completed, the USPTO will process the application expeditiously under the accelerated examination program until it reaches final disposition, but that may occur later than twelve months from the filing of the application.
VIII. MORE INFORMATION
A. Eligibility
Any non-reissue utility or design application filed under 35 U.S.C. 111(a) on or after August 25, 2006 is eligible for the accelerated examination program. The following types of filings are not eligible for the accelerated examination program:
(1) plant applications;
(2) reissue applications;
(3) applications entering the national stage from an international application after compliance with 35 U.S.C. 371;
(4) reexamination proceedings;
(5) RCEs under 37 CFR 1.114 (unless the application was previously granted special status under the program);
(6) petitions to make special based on applicant’s health or age (see MPEP § 708.02; and
(7) petitions to make special based on participation in the PPH pilot program. (see MPEP § 708.02(c)).
Rather than participating in the accelerated examination program, applicants for a design patent may participate in the expedited examination program by filing a request in compliance with the guidelines set forth in MPEP § 1504.30. See 37 CFR 1.155.
B. Form
Applicant should use form PTO/SB/28 for filing a petition to make special, other than those based on applicant’s health or age or the PPH pilot program. The form is available on EFS-Web and on the U S P T O ’ s w e b s i t e a t www.uspto.gov/web/forms/index.html.
C. Conditions for Examination
The application must be in condition for examination at the time of filing. This means the application must include the following:
(1) Basic filing fee, search fee, and examination fee, under 37 CFR 1.16 (see MPEP § 607 subsection I);
(2) Application size fee under 37 CFR 1.16(s) (if the specification and drawings exceed 100 sheets of paper) (see MPEP § 607 subsection II);
(3) An executed inventor’s oath or declaration in compliance with 37 CFR 1.63 or 1.64 for each inventor;
(4) A specification (in compliance with 37 CFR 1.52) containing a description (37 CFR 1.71) and claims in compliance with 37 CFR 1.75;
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(5) A title and an abstract in compliance with 37 CFR 1.72;
(6) Drawings in compliance with 37 CFR 1.84;
(7) Electronic submissions of sequence listings in compliance with 37 CFR 1.821(c) or (e), large tables, or computer listings in compliance with 37 CFR 1.96, submitted via the USPTO’s electronic filing system (EFS) in ASCII text as part of an associated file (if applicable);
(8) Foreign priority claim under 35 U.S.C. 119(a) - (d) identified in the executed oath or declaration or an application data sheet (if applicable);
(9) Domestic benefit claims under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) in compliance with 37 CFR 1.78 (e.g., for applications filed on or after September 16, 2012, the specific reference to the prior application must be in an application data sheet and for applications filed prior to September 16, 2012, the specific reference to the prior application must be submitted in the first sentence(s) of the specification or in an application data sheet, and for any benefit claim to a non-English language provisional application, the application must include a statement that (a) an English language translation, and (b) a statement that the translation is accurate, have been filed in the provisional application) (if applicable);
(10) English language translation under 37 CFR 1.52(d), a statement that the translation is accurate, and the processing fee under 37 CFR 1.17(i) (if the specification is in a non-English language);
(11) No preliminary amendments present on the filing date of the application; and
(12) For an application filed prior to September 16, 2012, no petition under 37 CFR 1.47 for a non-signing inventor.
Furthermore, if the application is a design application, the application must also comply with the requirements set forth in 37 CFR 1.151, 1.152, 1.153, and 1.154.
The petition to make special will be dismissed if the application omits an item or includes a paper that causes the Office of Patent Application Processing (OPAP) to mail a notice during the formality review (e.g., a notice of incomplete application, notice to
file missing parts, notice to file corrected application papers, notice of omitted items, or notice of informal application). The opportunity to perfect a petition (subsection II above) does not apply to applications that are not in condition for examination on filing.
D. Reply Not Fully Responsive
If a reply to a non-final Office action is not fully responsive, but is a bona fide attempt to advance the application to final action, the examiner may provide two months for applicant to supply the omission or a fully responsive reply. Extensions of this time period under 37 CFR 1.136(a) will be permitted. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. Failure to timely file the omission or a fully responsive reply will result in abandonment of the application. If the reply is not a bona fide attempt or if it is a reply to a final Office action, no additional time period will be given. The time period set forth in the previous Office action will continue to run.
E. Withdrawal From Accelerated Examination
There is no provision for “withdrawal” from special status under the accelerated examination program. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. An applicant may abandon the application that has been granted special status under the accelerated examination program in favor of a continuing application, and the continuing application will not be given special status under the accelerated examination program unless the continuing application is filed with a petition to make special under the accelerated examination program. The filing of an RCE under 37 CFR 1.114, however, will not result in an application being withdrawn from special status under the accelerated examination program.
F. The Twelve-Month Goal
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. The twelve-month goal is
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successfully achieved when one of the following final dispositions occurs:
(1) the mailing of a notice of allowance;
(2) the mailing of a final Office action;
(3) the filing of an RCE; or
(4) the abandonment of the application.
The final disposition of an application, however, may occur later than the twelve-month time frame in certain situations (e.g., an IDS citing new prior art after the mailing of a first Office action). See subsection VII above for more information on other events that may cause examination to extend beyond this twelve-month time frame. In any event, however, this twelve-month time frame is simply a goal. Any failure to meet the twelve-month goal or other issues relating to this twelve-month goal are neither petitionable nor appealable matters.
IX. FORM PARAGRAPHS
The following form paragraphs may be used for the accelerated examination program:
¶ 7.126.AE Conclusion of Requirement Mailed Without Any Other Office Action – Application Under Accelerated Examination
This requirement is subject to the provisions of 37 CFR 1.134, 1.135 and 1.136 and has a shortened statutory period of TWO (2) MONTHS. This application has been granted special status under the accelerated examination program. Extensions of time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. Any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should appear at the conclusion of any requirement for information mailed without any other Office action. If the requirement for information is mailed with an Office action, use form paragraph 7.125 instead.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special
status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.42.08.AE Request for Continued Examination With Submission Filed Under 37 CFR 1.114 Which Is Not Fully Responsive - Application Under Accelerated Examination
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on [1]. The submission, however, is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this letter, to submit a complete reply. This shortened statutory period for reply supersedes the time period set in the prior Office action. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. Use this form paragraph to acknowledge an RCE filed with the fee and a submission where the submission is not fully responsive to the prior Office action. This form paragraph may be used for any RCE filed with a submission which is not fully responsive, i.e., an RCE filed after final rejection, after allowance, after an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or after appeal.
2. In bracket 2, identify the reasons why the examiner considers the submission not to be fully responsive.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
4. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
5. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1)
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on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.51.AE Quayle Action - Application Under Accelerated Examination
This application is in condition for allowance except for the following formal matters: [1].
Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
Since this application has been granted special status under the accelerated examination program, a shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. Explain the formal matters which must be corrected in bracket 1.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.70.AE Updated Accelerated Examination Support Document Required for Claim Amendments Not Encompassed by PreviousAccelerated Examination Support Document(s) – Application Under Accelerated Examination
Applicant is reminded that for any amendments to the claims (including any new claim) that is not encompassed by the preexamination search and accelerated examination support documents previously filed, applicant is required to provide updated preexamination search and accelerated examination support documents that encompass the amended or new claims at the time of filing the amendment. Failure to provide such updated preexamination search and accelerated examination support documents at the time of filing the amendment will cause the amendment to be treated as not fully responsive and not to be entered. See MPEP § 708.02(a), subsection VIII.D. for more information.
If the reply is not fully responsive, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. This form paragraph and form paragraph 7.71.AE must be included in every Office action, other than a notice of allowance, in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway Program (pilot and permanent).
¶ 7.71.AE Use Of Proper Document and Fee Codes When Filing A Reply Electronically Via EFS-Web – Application Under Accelerated Examination
Any reply or other papers must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the papers are not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Any reply to this communication filed via EFS-Web must include a document that is filed using the document description of “Accelerated Exam - Transmittal amendment/reply.” Applicant is reminded to use proper indexing for documents to avoid any delay in processing of follow on papers. Currently document indexing is not automated in EFS-Web and applicant must select a particular document description for each attached file. An incorrect document description for a particular file may potentially delay processing of the application. A complete listing of all document codes currently supported in EFS-Web i s a v a i l a b l e a t www.uspto.gov/ebc/portal/efs/efsweb_document_descriptions.xls.
Any payment of fees via EFS-Web must be accompanied by selection of a proper fee code. An improper fee code may potentially delay processing of the application. Instructions on payment of fees via EFS-Web are available at www.uspto.gov/ebc/portal/efs/quick-start.pdf.
Examiner Note:
1. This form paragraph and form paragraph 7.70.AE must be included in every Office action, other than a notice of allowance, in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway Program (pilot and permanent).
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¶ 7.84.AE Amendment Is Non-Responsive to Interview – Application Under Accelerated Examination
The reply filed on [1] is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the [2] interview. [3] Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. In bracket 2, insert the date of the interview.
2. In bracket 3, explain the deficiencies.
3. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
4. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.84.01.AE Paper Is Unsigned – Application Under Accelerated Examination
The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of TWO (2) MONTHS within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. Examiner should first try to contact applicant by telephone and ask for a properly signed reply or ratification of the reply. If attempts to contact applicant are unsuccessful, examiner may use this form paragraph in a letter requiring a properly signed reply or ratification if the reply is to a non-final Office action.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.95.AE Bona Fide, Non-Responsive Amendments – Application Under Accelerated Examination
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
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¶ 8.26.AE Canceled Elected Claims, Non-Responsive – Application Under Accelerated Examination
The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive (MPEP § 821.03). The remaining claims are not readable on the elected invention because [2].
Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a TIME PERIOD of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of time under 37 CFR 1.136(a) are available. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 19.02.AE Requirement for Information – Application Under Accelerated Examination
The protest under 37 CFR 1.291 filed on [1] has been considered. In order to reach a full and proper consideration of the issues raised therein, it is necessary to obtain additional information from applicant regarding these issues. In particular [2]. The failure to reply to this requirement for information within ONE (1) MONTH or THIRTY (30) DAYS, whichever is longer, of the mailing date of this requirement will result in abandonment of the application. Since this application has been granted special status under the accelerated examination program, NO extensions of time under 37 CFR 1.136(a) will be permitted.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. While the examiner normally should not need further information from applicant, this form paragraph may be used to request specific additional information from the applicant.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
708.02(b) Prioritized Examination [R-07.2015]
37 CFR 1.102 Advancement of examination. *****
(e) A request for prioritized examination under this paragraph must comply with the requirements of this paragraph and be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, the publication fee set forth in § 1.18(d). An application for which prioritized examination has been requested may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim. Prioritized examination under this paragraph will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings.A request for prioritized examination must also comply with the requirements of paragraph (e)(1) or paragraph (e)(2) of this section.
(1) A request for prioritized examination may be filed with an original utility or plant nonprovisional application under 35 U.S.C. 111(a). The application must include a specification as prescribed by 35 U.S.C. 112 including at least one claim, a drawing when necessary, and the inventor’s oath or declaration on filing, except that the filing of an inventor’s oath or declaration may be postponed in accordance with § 1.53(f)(3) if an application data sheet meeting the conditions specified in § 1.53(f)(3)(i) is present upon filing. If the application is a utility application, it must be filed via the Office’s electronic filing system and include the filing fee under § 1.16(a), search fee under § 1.16(k), and examination fee under § 1.16(o) upon filing. If the application is a plant application, it must include the filing fee under § 1.16(c), search fee under § 1.16(m), and examination fee under § 1.16(q) upon filing. The request for prioritized examination in compliance with this paragraph must be present upon filing of the application, except that the applicant may file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, and any multiple dependent claim not later than one month from a first decision on the request for prioritized examination. This one-month time period is not extendable.
(2) A request for prioritized examination may be filed with or after a request for continued examination in compliance
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with § 1.114. If the application is a utility application, the request must be filed via the Office’s electronic filing system. The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114. Only a single such request for prioritized examination under this paragraph may be granted in an application.
Section 11(h) of the Leahy-Smith America Invents Act provides for prioritized examination whereby applicants may request prioritized examination upon payment of appropriate fees and compliance with certain requirements.
Under prioritized examination, an application will be accorded special status until a final disposition is reached in the application. The goal for handling applications under prioritized examination is to provide, on average, a final disposition within twelve months of prioritized status being granted. Prioritized examination is available at the time of filing an original utility or plant application under 35 U.S.C. 111(a), as set forth in 37 CFR 1.102(e)(1). This is referred to as “Track One” prioritized examination. An “original” application includes a continuing application (i.e., a continuation, continuation-in-part, or divisional application) but does not include reissue applications. In addition, a single request for prioritized examination may be granted for a request for continued examination (RCE) in a plant or utility application, including an application that has entered the national stage under 35 U.S.C. 371, as set forth in 37 CFR 1.102(e)(2). This type of prioritized examination is referred to as “prioritized examination for requests for continued examination” (PE-RCE). The Office maintains a “Quick Start Guide” that illustrates how to file an electronic request for prioritized examination at www.uspto.gov/ patents/init_events/track_one_quick_start_guide_11-24-2013.pdf.
To maximize the benefit of prioritized examination, applicants should consider one or more of the following: (A) acquiring a good knowledge of the state of the prior art to be able to file the application with a clear specification having a complete schedule of claims from the broadest which the applicant believes he is entitled in view of the prior art to the narrowest which the applicant is willing to accept; (B) submitting an application in condition for examination; (C) filing replies that are completely responsive to an Office action and within the shortened statutory period for reply set in the Office
action; and (D) being prepared to conduct interviews with the examiner. The phrase “in condition for examination” in this context means the same as it does with respect to the current accelerated examination program, which is discussed in MPEP § 708.02(a), subsection VIII.C.
The Office intends to monitor the prioritized examination program carefully. As the Office gains experience with prioritized examination as a result of the initial implementation, it may reevaluate the annual numerical cap of 10,000 granted prioritized examination requests. The Office may also consider whether there is a need to limit the number of requests for prioritized examination that may be filed in each Technology Center or by any given applicant. Statistical findings about prioritized examination, including statistics concerning the Office’s ability to meet its stated goals for the program are available to the public on the Office’s Internet website at www.uspto.gov/patents/init_events/Track_One.jsp.
I. REQUIREMENTS FOR REQUESTING PRIORITIZED EXAMINATION
The requirements for requesting prioritized examination are set forth below. A request must meet the general requirements specified in subsection I.A. below, and also meet the specific requirements for either subsection I.B. (for a newly filed application) or subsection I.C. (for a request for continued examination).
A. General Requirements
1. Type of Application
The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application). The procedure for prioritized examination does not apply to design applications, reissue applications, provisional applications, or reexamination proceedings. The procedure for prioritized examination does not apply to international applications that have entered the national stage under 35 U.S.C. 371, except that such an application may undergo prioritized examination if an RCE is filed (see I.C. below). A continuing
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application will not automatically be given prioritized examination status based on a request filed in the parent application; each application (including each continuing application) must, on its own, meet all requirements for prioritized examination under 37 CFR 1.102(e). A utility or plant nonprovisional application filed under 35 U.S.C. 111(a) may claim priority to a foreign application under 35 U.S.C. 119(a) - (d) or (f) and remain eligible for prioritized examination.
2. Fees
Upon filing the request for prioritized examination, the following fees must be paid for the application:
(A) the prioritized examination fee set forth in 37 CFR 1.17(c),
(B) the processing fee set forth in 37 CFR 1.17(i)(1),
(C) the publication fee set forth in 37 CFR 1.18(d),
(D) the basic filing fee set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c),
(E) the search fee set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m), and
(F) the examination fee set forth in 37 CFR 1.16(o).
Small entity and micro entity fee reductions are available for many of the above fees; see the current fees at www.uspto.gov/curr_fees. Note that a fee may be set by the USPTO to $0, and in such a case, that fee is considered to be paid and no additional payment is necessary for that fee. If any fee is unpaid at the time of filing of the application, the request for prioritized examination will be dismissed. However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the application and the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.
3. Claims
The application must contain, or be amended to contain, no more than four independent claims and no more than thirty total claims. In addition, the
application must not contain any multiple dependent claims. After prioritized examination has been granted in an application, an amendment that results in more than four independent claims or thirty total claims, or a multiple dependent claim, will result in termination of prioritized examination.
4. Yearly Limit
The request for prioritized examination may be accepted if the requirements under 37 CFR 1.102(e) are satisfied and the limit for the number of requests for the year has not been reached. The number of granted requests for prioritized examination under 37 CFR 1.102(e) is limited to a maximum of 10,000 per fiscal year, although the Office may choose to revise that cap in the future. The Office posts statistics, including the number of granted prioritized examination requests, on its website at www.uspto.gov/aia_implementation/patents.jsp. In addition, the Office will post a message in EFS-Web if/when the number of granted requests is close to the limit. If the limit is reached, the Office will turn off the ability to file a request for prioritized examination in EFS-Web.
5. Additional Requirements
Additional requirements must be met depending on whether prioritized examination is requested upon filing of a new application (Track One), see subsection I.B. or incident to filing a request for continued examination (PE-RCE), see subsection I.C.
It is strongly recommended that applicants use the Office’s certification and request form PTO/AIA/424 to request prioritized examination, but the form is not required. The form is available on EFS-Web and on the Office’s Internet website at www.uspto.gov/forms/index.jsp. Failure to use form PTO/AIA/424 could result in the Office not recognizing the request or delays in processing the request. If applicant decides to use an applicant-created form for requesting prioritized examination, applicant’s form should be an equivalent to the Office’s form.
Any item submitted on the same day the request for prioritized examination is filed will be considered
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to have been filed with the request under 37 CFR 1.102(e).
B. Prioritized Examination for Application Filings under 35 U.S.C. 111(a) (Track One)
A newly filed patent application may be granted Track One prioritized examination status if it meets the general conditions in subsection I.A. above, and the additional following conditions:
1. Type of Application
The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application), filed under 35 U.S.C. 111(a) on or after September 26, 2011. The application must be filed via the Office’s electronic filing system (EFS-Web) if it is a utility application. Plant applications must be filed in paper. Due to the need to limit the number of applications in the prioritized examination program in its initial stages, applications entering the national stage under 35 U.S.C. 371 are not eligible at the time of entry; see subsection I.C. below for prioritized examination of national stage entries under 35 U.S.C. 371 in which as RCE has been filed. However, an applicant who has filed an international application may participate in the prioritized examination program by filing a by-pass continuation; i.e., a new application filed in the United States under 35 U.S.C. 111(a) that claims the benefit of the earlier international application under 35 U.S.C. 365(c), rather than entering the national stage under 35 U.S.C. 371. In such a case, it is not necessary that the earlier international application have been filed in English in order to request prioritized examination of the 111(a) application; however, a translation is required in accordance with 37 CFR 1.52(b)(1).
2. Disclosure and Inventor’s Oath or Declaration
A proper request for prioritized examination must include, on filing, a specification as prescribed by 35 U.S.C. 112 including at least one claim, and a drawing when necessary. The application must be filed with an executed application data sheet meeting the conditions specified in 1.53(f)(3)(i), or with the inventor’s oath or declaration (under 37 CFR 1.63
and 1.64) executed for each inventor. Such an application data sheet must include the legal name, mailing address, and residence (if not residing at the mailing address) for each inventor. Note that filing an application without the inventor’s oath or declaration requires payment of the surcharge set forth in 37 CFR 1.16(f).
3. Claims
The application must contain no more than four independent claims and no more than thirty total claims. If, at the time the request for prioritized examination is considered by the USPTO, the application does not meet this requirement, applicant will be notified of the deficiency through a decision on the request, which will provide one month for applicant to amend the claims consistent with the requirements for prioritized examination. In order to reduce Office processing and ensure that patent application publications are printed correctly, the Office strongly encourages applicants to file applications without any preliminary amendments.
4. Fees
The application must be filed with the basic filing fee, the search fee, the examination fee, any excess claims fees, and any application size fee. If applicable, any excess claims fees due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h), and any excess claim fee due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i), and any application size fee due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s), must be paid before Track One status will be granted. If, at the time the request for prioritized examination is considered by the USPTO, any of these three fees are required but have not been paid, applicant will be notified of the deficiency through a decision on the request. These three fees must be paid not later than one month from a first decision on the request for prioritized examination.
A nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) may be submitted together with a request for prioritized examination. However, the publication fee set forth in 37 CFR 1.18(d) still must be paid upon request for prioritized examination. If
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the application is not published, a refund of the publication fee may be requested as provided in subsection III below and in MPEP § 1126.
Color drawings may be filed with new nonprovisional utility patent applications under 35 U.S.C. 111(a) and in U.S. national stage applications under 35 U.S.C. 371 applications through EFS-Web; see MPEP § 502.05, subsection VIII. See also the EFS-Web legal framework at 74 FR 55200 (October 27, 2009). A petition is still required for entry of color drawings; see MPEP § 608.02 subsection VIII.
If applicant discovers that a required item has been inadvertently omitted from the application filing, a follow-on EFS-Web submission may be filed, but only if the follow-on EFS-Web submission is submitted on the same day that the utility application and the prioritized examination request form are filed. For example, if an inventor’s oath or declaration or the filing fees are inadvertently omitted when the application is filed via EFS-Web, then applicant may submit the inventor’s oath or declaration or the filing fees as a follow-on submission directly into the application on the same day as the filing date of the application. Applicants are also reminded that only registered users of EFS-Web can submit follow-on documents via EFS-Web and that follow-on documents are documents filed after the initial submission of the application. Thus, applicant would need to be a registered user of EFS-Web to submit such a follow-on document on the same day the application was filed. See also MPEP § 502.05, subsection III. D. for examples describing implications raised when applicant inadvertently omits an item when filing an application electronically via EFS-Web.
Applicants may receive a notice regarding informalities in their application (e.g., a notice to file corrected application papers because the application papers are not in compliance with 37 CFR 1.52) which will delay a decision on the request for prioritized examination; however, the request for prioritized examination may still be granted if the request is otherwise compliant with 37 CFR 1.102(e)(1). Any pre-examination notice from the Office of Patent Application Processing will delay a decision on the request for prioritized examination until after applicant has filed a complete and timely
reply to the pre-examination notice. Any request for an extension of time, including an extension of time for the purpose of responding to a pre-examination notice (e.g., Notice to File Missing Parts), will cause the application to be ineligible for further treatment under the prioritized examination program.A request for an extension of time prior to the grant of prioritized examination status will prevent such status from being granted.
If the request for prioritized examination is dismissed, applicant can file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Applicant may not refile a request for Track One prioritized examination in order to correct a deficiency in the request because a proper request for Track One prioritized examination (i.e., for prioritized examination of a newly-filed utility or plant application under 35 U.S.C. 111(a) and not for an RCE) requires that the request be included upon filing.
C. Prioritized Examination of an Application for a Request for Continued Examination (PE-RCE)
A pending patent application in which a request for continued examination has been filed may be granted PE-RCE prioritized examination status under the following conditions:
1. Type of Application
The application must be a non-reissue utility or plant nonprovisional application filed under 35 U.S.C. 111(a), or that has entered the national stage under 35 U.S.C. 371.
2. Fees
The publication fee set forth in 37 CFR 1.18(d) must be paid for the application, either previously or with the request for prioritized examination. Note that a fee may be set by the USPTO to $0, and in such a case, that fee is considered to be paid and no additional payment is necessary for that fee.
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3. Timing of the Request
The PE-RCE request may be filed concurrently with, or subsequently to, the filing of a request for continued examination (RCE). However, the PE-RCE request must be filed before the mailing of the first Office action after the filing of the RCE. The conditions for filing an RCE are set forth in 37 CFR 1.114. Prosecution must be closed; i.e., the application is under appeal, the last Office action is a final action (37 CFR 1.113), a notice of allowance has been issued (37 CFR 1.311), or there has been an action that otherwise closes prosecution in the application. Any request for prioritized examination of an application in which there has been a request for continued examination is premised on the existence of a properly filed RCE. Prioritized examination will not be granted in an application where the RCE does not meet the requirements of 37 CFR 1.114.
4. Number of Requests
Only a single such request for prioritized examination for a request for continued examination may be granted in an application. The prioritized examination program permits a single request to be granted under 37 CFR 1.102(e)(1) upon filing a new application under 35 U.S.C. 111(a), and a single request to be granted under 37 CFR 1.102(e)(2) upon filing a request for continued examination under 37 CFR 1.114.
Applicant may file a petition under 37 CFR 1.181 if applicant believes a decision dismissing a PE-RCE request is not proper. Applicant should review the reason(s) stated in the decision dismissing the PE-RCE request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Alternatively, applicant may choose to correct the deficiencies in the PE-RCE request by filing a new PE-RCE request for that same RCE. The new PE-RCE request must include any required fees and be timely; i.e., it must be filed prior to the mailing of a first Office action after the filing of the RCE.
II. PROSECUTION OF AN APPLICATION UNDER PRIORITIZED EXAMINATION
The time periods set for reply in Office actions for applications undergoing prioritized examination will be the same as set forth in MPEP § 710.02(b). Where, however, an applicant files a petition for an extension of time to file a reply or files a request for suspension of action, the petition or request will be acted upon, but the prioritized examination of the application will be terminated. In addition, filing an amendment to the application which results in more than four independent claims, more than thirty total claims, or a multiple dependent claim will terminate the prioritized examination. Upon termination of prioritized examination, the application will be removed from the examiner’s special docket and placed on the examiner’s regular docket in accordance with its stage of prosecution.
The goal of the Office is to provide a final disposition within twelve months, on average, of the date that prioritized status was granted. The final disposition for the twelve-month goal means that within twelve months from the date prioritized status has been granted that one of the following occur: (A) mailing of a notice of allowance; (B) mailing of a final Office action; (C) filing of a notice of appeal; (D) completion of examination as defined in 37 CFR 41.102; (E) filing of a request for continued examination; or (F) abandonment of the application. An application under prioritized examination, therefore, would not be accorded special status during appeal or interference before the Patent Trial and Appeal Board (PTAB), or after the filing of a request for continued examination. As noted above, the submission of an amendment resulting in more than four independent claims or more than thirty total claims is not prohibited, but simply terminates the prioritized examination. Thus, upon mailing of a final rejection (at which point prioritized examination is terminated), applicants may amend the claims to place them in independent form where dependent claims were found allowable, or add new claims, subject only to the limitations applicable to any application under final rejection. See 37 CFR 1.116. Similarly, upon mailing of a notice of allowance, applicants may submit amendments to the claims, again subject only to the limitations applicable to any application that has been allowed.
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See 37 CFR 1.312. A patent that issues will not contain any indication on its face that it was processed via prioritized examination.
III. REFUND OF FEES
If a request for prioritized examination is dismissed, the prioritized examination fee set forth in 37 CFR 1.17(c) will be refunded. This fee will be refunded automatically (if paid) without the need for applicant to request such a refund. The processing fee set forth in 37 CFR 1.17(i) will be retained to cover the cost of processing the request. In accordance with 37 CFR 1.26, the application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded. Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application in accordance with 37 CFR 1.138(d). Furthermore, applicant may request a refund of the publication fee in accordance with MPEP § 1126 if the application is not published under 35 U.S.C. 122(b).
As the termination of prioritized examination does not cause the prioritized examination fee to have been paid by mistake or in an amount in excess of that required, the termination of prioritized examination will not entitle the applicant to a refund of the prioritized examination fee. See 35 U.S.C. 42(d) and 37 CFR 1.26(a).
708.02(c) Patent Prosecution Highway Program [R-07.2015]
The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating patent offices. Under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.
The USPTO participates in the Global PPH and IP5 PPH pilot programs, and also has PPH agreements with several intellectual property offices that are not yet included in the Global PPH. See www.uspto.gov/patents/init_events/pph/index.jsp for details and forms to request participation in, and to petition to make an application special under, the PPH program.
708.03 Examiner Tenders Resignation [R-11.2013]
Whenever an examiner tenders his or her resignation, the supervisory patent examiner should see that the remaining time as far as possible is used in winding up prosecution in those applications with complex issues or involved records that the examiner is already familiar with (e.g., applications with RCEs and continuation applications) and getting as many of his or her amended cases as possible ready for final disposition.
709 Suspension of Action [R-07.2015]
37 CFR 1.103 Suspension of action by the Office.
(a) Suspension for cause. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph for good and sufficient cause. The Office will not suspend action if a reply by applicant to an Office action is outstanding. Any petition for suspension of action under this paragraph must specify a period of suspension not exceeding six months. Any petition for suspension of action under this paragraph must also include:
(1) A showing of good and sufficient cause for suspension of action; and
(2) The fee set forth in § 1.17(g), unless such cause is the fault of the Office.
(b) Limited suspension of action in a continued prosecution application (CPA) filed under § 1.53(d) . On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph in a continued prosecution application filed under § 1.53(d) for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for an application filed under § 1.53(d), specify the period of suspension, and include the processing fee set forth in § 1.17(i).
(c) Limited suspension of action after a request for continued application (RCE) under § 1.114 . On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph after the filing of a request for continued examination in compliance with § 1.114 for a period not exceeding three months.Any request for suspension of action under this paragraph must be filed with the request for continued
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examination under § 1.114, specify the period of suspension, and include the processing fee set forth in § 1.17(i).
(d) Deferral of examination . On request of the applicant, the Office may grant a deferral of examination under the conditions specified in this paragraph for a period not extending beyond three years from the earliest filing date for which a benefit is claimed under title 35, United States Code. A request for deferral of examination under this paragraph must include the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i). A request for deferral of examination under this paragraph will not be granted unless:
(1) The application is an original utility or plant application filed under § 1.53(b) or resulting from entry of an international application into the national stage after compliance with § 1.495;
(2) The applicant has not filed a nonpublication request under § 1.213(a), or has filed a request under § 1.213(b) to rescind a previously filed nonpublication request;
(3) The application is in condition for publication as provided in § 1.211(c); and
(4) The Office has not issued either an Office action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
(e) Notice of suspension on initiative of the Office. The Office will notify applicant if the Office suspends action by the Office on an application on its own initiative.
(f) Suspension of action for public safety or defense. The Office may suspend action by the Office by order of the Director if the following conditions are met:
(1) The application is owned by the United States;
(2) Publication of the invention may be detrimental to the public safety or defense; and
(3) The appropriate department or agency requests such suspension.
Suspension of action (37 CFR 1.103) should not be confused with extension of time for reply (37 CFR 1.136). It is to be noted that a suspension of action applies to an impending Office action by the examiner whereas an extension of time for reply applies to action by the applicant. In other words, the action cannot be suspended in an application which contains an outstanding Office action or requirement awaiting reply by the applicant. It is only the action by the examiner which can be suspended under 37 CFR 1.103.
Suspension of action under 37 CFR 1.103(a) - (d) at the applicant’s request will cause a reduction in patent term adjustment accumulated (if any) under 37 CFR 1.703. The reduction is equal to the number of days beginning on the date a request for suspension of action was filed and ending on the date of the termination of the suspension. See 37 CFR 1.704(c)(1).
I. REQUEST BY THE APPLICANT
Maximum length of Suspension
Fee(s), 37 CFR Section
RequirementRequest, 37 CFR Section
6 months1.17(g)Petition with a showing of good and sufficient cause.
1.103(a)
3 months1.17(i)Request at the time of filing a CPA1.103(b) 3 months1.17(i)Request at the time of filing an RCE1.103(c) 3 yrs. from earliest filing date for which a benefit is claimed under Title 35.
1.17(i) & 1.18(d)See below in “Deferral of Examination”1.103(d)
A. Petition Under 37 CFR 1.103(a) With a Showing of Good and Sufficient Cause
A request that action in an application be delayed will be granted only under the provisions of 37 CFR 1.103, which provides for “Suspension of Action.” A petition for suspension of action under 37 CFR 1.103(a) must:
(A) be presented as a separate paper;
(B) be accompanied by the petition fee set forth in 37 CFR 1.17(g);
(C) request a specific and reasonable period of suspension not greater than 6 months; and
(D) present good and sufficient reasons why the suspension is necessary.
If the requirements of 37 CFR 1.103(a) are not met, applicants should expect that their applications, whether new or amended, will be taken up for action
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by the examiner in the order provided in MPEP § 708, Order of Examination.
A petition for suspension of action to allow applicant time to submit an information disclosure statement will be denied as failing to present good and sufficient reasons, since 37 CFR 1.97 provides adequate recourse for the timely submission of prior art for consideration by the examiner.
In new applications, the mere inclusion in the transmittal form letter of a request that action be delayed cannot be relied upon to avoid immediate action in the application. However, applicant may consider filing a request for deferral of examination under 37 CFR 1.103(d) (see below for the requirements). Applicants should be aware of the possibility of requesting suspension of action by the Office under 37 CFR 1.103(b) or (c) for a period not exceeding three months at the time of filing a continued prosecution application (CPA) under 37 CFR 1.53(d) if the application is a design application, or a request for continued examination (RCE) under 37 CFR 1.114. Note that effective July 14, 2003, CPA practice does not apply to utility and plant applications. Many Technology Center (TC) art units and examiners have short pendency to first action, and new applications may be taken up for action before preliminary amendments are filed in those applications. Where a preliminary amendment and petition to suspend action have been filed, it would be helpful to telephone the examiner in that regard to avoid having the amendment and the first Office action cross in the mail. The following form paragraphs should be used to notify the grant or denial of the petition under 37 CFR 1.103(a):
¶ 7.54 Suspension of Action, Applicant’s Request
Pursuant to applicant’s request filed on [1], action by the Office is suspended on this application under 37 CFR 1.103(a) for a period of [2] months. At the end of this period, applicant is required to notify the examiner and request continuance of prosecution or a further suspension. See MPEP § 709.
Examiner Note:
1. Maximum period for suspension is 6 months.
2. Only the Technology Center Director can grant second or subsequent suspensions. See MPEP § 1003. Such approval must appear on the Office letter.
¶ 7.56 Request for Suspension, Denied, Outstanding Office Action
Applicant’s request filed [1], for suspension of action in this application under 37 CFR 1.103(a), is denied as being improper. Action cannot be suspended in an application awaiting a reply by the applicant. See MPEP § 709.
A supplemental reply will be entered if it is filed within the period during which action is suspended by the Office under 37 CFR 1.103(a). See MPEP § 714.03(a) regarding supplemental reply.
B. Request for Suspension Under 37 CFR 1.103(b) or (c)
Applicants may request a suspension of action by the Office under 37 CFR 1.103(b) or (c) for a period not exceeding three months in a continued prosecution application (CPA) filed under 37 CFR 1.53(d) if the application is a design application, or in a continued examination (RCE) filed under 37 CFR 1.114. The request for suspension must be filed at the time of filing of the CPA or RCE.
A supplemental reply will be entered if it is filed within the period during which action is suspended by the Office under 37 CFR 1.103(c). See MPEP § 714.03(a) regarding supplemental reply.
1. Requirements
The Office will not grant the requested suspension of action unless the following requirements are met:
(A) the request must be filed with the filing of a design CPA or an RCE (applicants may use the check box provided on the transmittal form PTO/SB/29 or PTO/SB/30, or submit the request on a separate paper);
(1) if the request is filed with an RCE, the RCE must be in compliance with 37 CFR 1.114, i.e., the RCE must be accompanied by a submission and the fee set forth in 37 CFR 1.17(e). Note that the payment of the RCE filing fee may not be deferred and the request for suspension cannot substitute for the submission;
(2) if the request is filed with a CPA, a filing date must be assigned to the CPA;
(B) the request should specify the period of suspension in a whole number of months (maximum
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of 3 months). If the request specifies no period of suspension or a period of suspension that exceeds 3 months, the Office will assume that a 3-month suspension is requested; and
(C) the request must include the processing fee set forth in 37 CFR 1.17(i).
2. Missing Parts for the CPA (Filing Date Granted)
If the Office assigns a filing date to the design CPA, the request for suspension will be processed, even if the CPA was not accompanied by the CPA basic filing fee, the search fee, and the examination fee. The suspension request acts to suspend a first Office action by the examiner but will not affect the processing of the CPA for a missing part. The applicant will be given a notice that provides a time period of 2 months from the date of the notification to pay the CPA basic filing fee, the search fee, the examination fee, and the surcharge set forth in 37 CFR 1.16(f). Applicant must pay the CPA basic filing fee, the search fee, the examination fee, and the surcharge within 2 months to avoid the abandonment of the CPA. Pursuant to applicant’s request for suspension, the action by the Office will be suspended on the CPA for the period requested by the applicant, starting on the filing date of the CPA.
3. Improper RCE or CPA (No Filing Date Granted)
If the CPA or the RCE is improper (e.g., a filing date was not accorded in the CPA or the RCE was filed without a submission or the RCE fee), the Office will not recognize the request for suspension, and action by the Office will not be suspended. A notice of improper CPA or RCE will be sent to applicant as appropriate. The time period set in the previous Office communication (e.g., a final Office action or a notice of allowance) continues to run from the mailing date of that communication. If applicant subsequently files another RCE, the request for suspension should be resubmitted to ensure that the Office processes the request for suspension properly. The request for suspension of action will not be processed until the Office accords a filing date to the CPA or receives a proper RCE in compliance with 37 CFR 1.114.
4. Improper Request for Suspension
If the CPA or the RCE is properly filed, but the request for suspension is improper (e.g., the request for suspension was filed untimely or without the processing fee set forth in 37 CFR 1.17(i)), action by the Office will not be suspended on the application. The Office will process the CPA or RCE and place the application on the examiner’s docket. The examiner will notify the applicant of the denial of the request in the next Office communication using the following form paragraph:
¶ 7.56.01 Request for Suspension of Action under 37 CFR 1.103, Denied
Applicant’s request filed [1], for suspension of action in this application under 37 CFR 1.103(b) or (c) is denied as being improper. The request was (1) not filed at the time of filing a CPA or RCE, and/or (2) not accompanied by the requisite fee as set forth in 37 CFR 1.17(i). See MPEP § 709.
Examiner Note:
In bracket 1, insert the filing date of the request for suspension of action.
5. Proper Request for Suspension
If the CPA or the RCE and the request for suspension of action are proper, the Office’s technical support staff will process the CPA or RCE, and the request for suspension of action. A notification of the approval of the request for suspension will be sent to the applicant. The application will be placed in suspension status until the end of the suspension period. The suspension request acts to suspend a first Office action by the examiner. Once the suspension period has expired, the application will be placed on the examiner’s docket for further prosecution.
C. Request for Deferral of Examination Under 37 CFR 1.103(d)
In new applications, applicants may request a deferral of examination under 37 CFR 1.103(d) for a period not extending beyond three years from the earliest filing date for which a benefit is claimed under 35 U.S.C. 119(a)-(d), (e), (f), 120, 121, 365, or 386. The request must be filed before the Office issues an Office action under 35 U.S.C. 132 or a notice of allowance in the application. The suspension will start on the day that the Office grants
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the request for deferral of examination. Once the deferral of examination has been granted, the application will not be taken up for action by the examiner until the suspension period expires. For example, if an applicant files a request for deferral of examination under 37 CFR 1.103(d) for the maximum period permitted under the rule in an application that claims priority of a foreign application filed 1/3/00, the action by the Office on the application will be suspended and the application will automatically be placed in a regular new case status on the examiner’s docket on 1/4/03 (36 months from the effective filing date of the application, i.e., 1/3/00).
1. Requirements
Form PTO/SB/37 (reproduced at the end of this section) may be used to submit a request for deferral of examination under 37 CFR 1.103(d).
A request for deferral of examination under 37 CFR 1.103(d) must include:
(A) a period of suspension, in a whole number of months, not extending beyond three years from the earliest effective filing date (if the request includes no period of suspension or a period that exceeds the maximum period permitted under the rule, i.e., beyond 3 years from the earliest effective filing date, the Office will assume that the maximum period is requested);
(B) the publication fee set forth in 37 CFR 1.18(d); and
(C) the processing fee set forth in 37 CFR 1.17(i).
The Office will not grant a deferral of examination unless the following conditions are met:
(A) the application must be
(1) an original utility or plant application filed under 37 CFR 1.53(b) or
(2) an application resulting from entry of an international application into the national stage after compliance with 37 CFR 1.495 (the application cannot be a design application, a reissue application, or a CPA under 37 CFR 1.53(d));
(B) the application must be filed on or after November 29, 2000 (the effective date of the eighteen month publication provisions of the AIPA);
(C) the applicant has not filed a nonpublication request under 37 CFR 1.213(a), or if a nonpublication request has been filed in the application, the applicant must file a request under 37 CFR 1.213(b) to rescind a previously filed nonpublication request (see the second check box on the form PTO/SB/37);
(D) the application must be in condition for publication as provided in 37 CFR 1.211(c) (if the application has been forwarded to the Technology Center by the Office of Patent Application Processing (OPAP), the application can be assumed to be in condition for publication); and
(E) the Office has not issued either an Office action under 35 U.S.C. 132 (e.g., a restriction, a first Office action on the merits, or a requirement under 37 CFR 1.105) or a notice of allowance under 35 U.S.C. 151.
2. Improper Request
If the request is improper, the following form paragraphs may be used to notify the applicant of the denial of the request:
¶ 7.56.02 Request for Deferral of Examination under 37 CFR 1.103(d), Denied
Applicant’s request filed on [1], for deferral of examination under 37 CFR 1.103(d) in the application is denied as being improper. [2]
See MPEP § 709.
Examiner Note:
1. In bracket 1, insert the filing date of the request for deferral of examination.
2. In bracket 2, insert the reason(s) for denying the request. For example, if appropriate insert --The applicant has not filed a request under 37 CFR 1.213(b) to rescind the previously filed nonpublication request--; --A first Office action has been issued in the application--; or --Applicant has not submitted a request for voluntary publication under 37 CFR 1.221--.
3. Proper Request
A supervisory patent examiner’s approval is required for the grant of a deferral of examination in an application. If the request is proper, the following
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form paragraph may be used to notify applicant that the request for deferral has been granted:
¶ 7.54.01 Request for Deferral of Examination under 37 CFR 1.103(d), Granted
Applicant’s request filed on [1], for deferral of examination under 37 CFR 1.103(d) in the application has been approved. The examination of the application will be deferred for a period of [2] months.
Examiner Note:
1. In bracket 1, insert the filing date of the request for deferral of examination.
2. In bracket 2, insert the number of months for the deferral.
D. Termination of Suspension of Action
Once the request for suspension of action under 37 CFR 1.103 has been approved, action on the application will be suspended until the suspension period has expired, unless the applicant submits a request for termination of the suspension of action prior to the end of the suspension period. The request for termination of a suspension of action will be effective when an appropriate official of the Office takes action thereon. If the request for termination properly identifies the application and the period of suspension has not expired when the Office acts on the request, the Office will terminate the suspension and place the application on the examiner’s docket. An acknowledgment should be sent to the applicant using the following form paragraph:
¶ 7.54.02 Request for Termination of a Suspension of Action, Granted
Applicant’s request filed on [1], for termination of a suspension of action under 37 CFR 1.103, has been approved. The suspension of action has been terminated on the date of mailing this notice.
Examiner Note:
In bracket 1, insert the filing date of the request for termination of the suspension of action.
II. AT THE INITIATIVE OF THE OFFICE
Suspension of action at the initiative of the Office should be avoided, if possible, because such suspension will cause delays in examination, will increase pendency of the application, and may lead to a shortening of the effective patent term or,
conversely, patent term extension, or adjustment, due to the suspension. Once a suspension of action has been initiated, it should be terminated immediately once the reason for initiating the suspension no longer exists, even if the suspension period has not expired.
37 CFR 1.103(e) provides that the Office will notify applicant if the Office suspends action in an application on its own initiative. Every suspension of action initiated by the Office will be limited to a time period of a maximum of 6 months. An examiner may grant an initial suspension of Office action on his or her own initiative, as in MPEP § 709.01 and MPEP Chapter 2300, for a maximum period of 6 months. A notification of suspension must be mailed to the applicant for each Office-initiated suspension of action, even for second or subsequent suspensions, and must include a suspension period (a maximum of 6 months). When the suspension period has expired, the examiner should take up action on the application or evaluate all possibilities for giving an action on the merits. For example, if a reference is still not available after waiting for six months, the examiner should try to find another source for the information or update the search to find another reference that can be used to make a rejection. If, in an extraordinary circumstance, a second or subsequent suspension is necessary, the examiner must obtain the TC director’s approval (see MPEP § 1003) and prepare another suspension notification with a suspension period (a maximum of 6 months). The notification for a second or subsequent suspension must be signed by the TC Director.
Suspension of action under 37 CFR 1.103(f) is decided by the TC Director of work group 3640.
The following form paragraphs should be used in actions relating to suspension of action at the initiative of the Office.
¶ 7.52 Suspension of Action, Awaiting New Reference
A reference relevant to the examination of this application may soon become available. Ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application.
Examiner Note:
1. Maximum period for suspension is six months.
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2. The TC Director must approve all second or subsequent suspensions, see MPEP § 1003.
3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.
¶ 7.53 Suspension of Action, Possible Interference
All claims are allowable. However, due to a potential interference, ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter.
Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application.
Examiner Note:
1. Maximum period for suspension is six months.
2. The TC Director must approve all second or subsequent suspensions, see MPEP § 1003.
3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.
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709.01 Overlapping Applications by Same Applicant or Owned by Same Assignee [R-11.2013]
In general, examiners should not consider ex parte questions which are pending before the Office in
inter partes proceedings involving the same applicant. This situation may arise when at least one application or patent of the same applicant that is involved in an interference, derivation proceeding, inter partes reexamination or inter partes review
contains claims which overlap with claims of an application (original or reissue) under examination or with claims involved in an ex parte reexamination proceeding. An examiner should consult with the TC Quality Assurance Specialist to determine the appropriate course of action.
710 Period for Reply [R-07.2015]
35 U.S.C. 133 Time for prosecuting application.
Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto.
35 U.S.C. 267 Time for taking action in Government applications.
Notwithstanding the provisions of sections 133 and 151, the Director may extend the time for taking any action to three years, when an application has become the property of the United States and the head of the appropriate department or agency of the Government has certified to the Director that the invention disclosed therein is important to the armament or defense of the United States.
See MPEP Chapter 1200 for period for reply when appeal is taken or court review sought.
Extension of time under 35 U.S.C. 267 is decided by the Technology Center Director of work group 3640.
710.01 Statutory Period [R-07.2015]
37 CFR 1.135 Abandonment for failure to reply within time period.
(a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the
application will become abandoned unless an Office action indicates otherwise.
(b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
(c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
The maximum statutory period for reply to an Office action is 6 months. 35 U.S.C. 133. Shortened periods are currently used in practically all cases. See MPEP § 710.02(b).
37 CFR 1.135 provides that if no reply is filed within the time set in the Office action under 37 CFR 1.134 or as it may be extended under 37 CFR 1.136, the application will be abandoned unless an Office action indicates otherwise.
37 CFR 1.135(b) specifies that: (A) the admission of, or refusal to admit, any amendment after final rejection, or any related proceedings, will not operate to save the application from abandonment; and (B) the admission of, or refusal to admit, any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
37 CFR 1.135(c) was amended to change the practice of providing a nonstatutory time limit (generally 1 month) during which an applicant may supply an omission to a previous reply. Under the current practice, the examiner may set a shortened statutory time period (generally 2 months) during which an applicant must supply the omission to the previous reply to avoid abandonment.
The prior practice under 37 CFR 1.135(c) was to set a time limit during which the applicant could supply the omission to the previous reply. Failure to supply the omission resulted in the abandonment of the application as of the due date for the previous reply. Filing a new application during the time limit, but beyond the due date for the previous reply, could
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have caused a loss of patent rights due to the lack of copendency between the applications.
37 CFR 1.135(c) now authorizes the examiner to accept a reply to a non-final Office action that is bona fide and is substantially complete but for an inadvertent omission as an adequate reply to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135. When a bona fide attempt to reply includes an inadvertent omission that precludes action on the merits of the application (e.g., an amendment is unsigned or improperly signed, or presents an amendment with additional claims so as to require additional fees pursuant to 37 CFR 1.16(h), (i), or (j)), the examiner may consider that reply adequate to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135, and give the applicant a shortened statutory time period of 2 months to correct the omission (e.g., provide a duplicate paper or ratification, or submit the additional claims fees or cancel the claims so that no fee is due). The failure to timely supply the omission will result in abandonment under 35 U.S.C. 133 and 37 CFR 1.135. Extensions of time under 37 CFR 1.136(a) or (b) will be available, unless the action setting the shortened statutory period indicates otherwise.
When a bona fide attempt to reply includes an omission that does not preclude action on the merits of the application (e.g., a reply fails to address a rejection or objection), the examiner may waive the deficiency in the reply and act on the application. The examiner may repeat and make final the rejection, objection, or requirement that was the subject of the omission. Thus, a reply to a non-final Office action that is bona fide but includes an omission may be treated by: (A) issuing an Office action that does not treat the reply on its merits but requires the applicant to supply the omission to avoid abandonment; or (B) issuing an Office action that does treat the reply on its merits (and which can also require the applicant to supply the omission to avoid abandonment).
Finally, whether a 2-month shortened statutory time period is provided to the applicant to supply the omission to the previous reply is within the discretion of the examiner. Where the examiner determines that the omission was not inadvertent (e.g., the applicant is abusing the provisions of 37
CFR 1.135(c) to gain additional time to file a proper reply or to delay examination of the application), the examiner should notify the applicant of the omission in the reply and advise the applicant that the omission to the previous reply must be supplied within the period for reply to the prior action, including extensions of time under 37 CFR 1.136(a), if permitted. See also MPEP § 714.03.
710.01(a) Statutory Period, How Computed [R-08.2012]
The actual time taken for reply is computed from the date stamped or printed on the Office action to the date of receipt by the Office of applicant’s reply. No cognizance is taken of fractions of a day and applicant’s reply is due on the corresponding day of the month 6 months or any lesser number of months specified after the Office action.
For example, reply to an Office action with a 3-month shortened statutory period dated November 30 is due on the following February 28 (or 29 if it is a leap year), while a reply to an Office action dated February 28 is due on May 28 and not on the last day of May. Ex parte Messick, 7 USPQ 57 (Comm’r Pat. 1930).
A 1-month extension of time extends the time for reply to the date corresponding to the Office action date in the following month. For example, a reply to an Office action mailed on January 31 with a 3-month shortened statutory period would be due on April 30. If a 1-month extension of time were given, the reply would be due by May 31. The fact that April 30 may have been a Saturday, Sunday, or federal holiday has no effect on the extension of time. Where the period for reply is extended by some time period other than “1-month” or an even multiple thereof, the person granting the extension should indicate the date upon which the extended period for reply will expire.
When a timely reply is ultimately not filed, the application is regarded as abandoned after midnight of the date the period for reply expired. In the above example where May 31 is not a Saturday, Sunday, or federal holiday and no further extensions of time are obtained prior to the end of the 6-month statutory period, the application would be abandoned as of
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June 1. The fact that June 1 may be a Saturday, Sunday, or federal holiday does not change the abandonment date since the reply was due on May 31, a business day. See MPEP § 711.04(a) regarding the pulling and forwarding of abandoned applications.
A 30-day period for reply in the Office means 30 calendar days including Saturdays, Sundays, and federal holidays. However, if the period ends on a Saturday, Sunday, or federal holiday, the reply is timely if it is filed on the next succeeding business day. If the period for reply is extended, the time extended is added to the last calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Saturday, Sunday, or federal holiday.
The date of receipt of a reply to an Office action is given by the “Office date” stamp which appears on the reply paper.
In some cases the examiner’s Office action does not determine the beginning of a statutory reply period. In all cases where the statutory reply period runs from the date of a previous action, a statement to that effect should be included.
Since extensions of time are available pursuant to 37 CFR 1.136(a), it is incumbent upon applicants to recognize the date for reply so that the proper fee for any extension will be submitted. Thus, the date upon which any reply is due will normally be indicated only in those instances where the provisions of 37 CFR 1.136(a) are not available. See MPEP Chapter 2200 for reexamination proceedings.
710.02 Shortened Statutory Period and Time Limit Actions Computed [R-07.2015]
37 CFR 1.136 Extensions of time.
(a)
(1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless:
(i) Applicant is notified otherwise in an Office action;
(ii) The reply is a reply brief submitted pursuant to § 41.41 of this title;
(iii) The reply is a request for an oral hearing submitted pursuant to § 41.47(a) of this title;
(iv) The reply is to a decision by the Patent Trial and Appeal Board pursuant to § 41.50 or § 41.52 of this chapter; or to § 90.3 of this chapter; or
(v) The application is involved in a contested case (§ 41.101(a) of this title) or a derivation proceeding (§ 42.4(b) of this title).
(2) The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (§ 1.135), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of paragraph (a) of this section are available.
(3) A written request may be submitted in an application that is an authorization to treat any concurrent or future reply, requiring a petition for an extension of time under this paragraph for its timely submission, as incorporating a petition for extension of time for the appropriate length of time. An authorization to charge all required fees, fees under § 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under this paragraph for its timely submission. Submission of the fee set forth in § 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission.
(b) When a reply cannot be filed within the time period set for such reply and the provisions of paragraph (a) of this section are not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under this paragraph must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension under this paragraph. In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute. Any request under this paragraph must be accompanied by the petition fee set forth in § 1.17(g).
(c) If an applicant is notified in a “Notice of Allowability” that an application is otherwise in condition for allowance, the following time periods are not extendable if set in the “Notice of Allowability” or in an Office action having a mail date on or after the mail date of the “Notice of Allowability”:
(1) The period for submitting the inventor’s oath or declaration;
(2) The period for submitting formal drawings set under § 1.85(c); and
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(3) The period for making a deposit set under § 1.809(c).
(d) See § 1.550(c) for extensions of time in ex parte reexamination proceedings, § 1.956 for extensions of time in inter partes reexamination proceedings; §§ 41.4(a) and 41.121(a)(3) of this chapter for extensions of time in contested cases before the Patent Trial and Appeal Board; § 42.5(c) of this chapter for extensions of time in trials before the Patent Trial and Appeal Board; and § 90.3 of this chapter for extensions of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action.
37 CFR 1.136 implements 35 U.S.C. 41(a)(8) which directs the Director of the USPTO to charge fees for extensions of time to take action in patent applications.
Under 37 CFR 1.136 (35 U.S.C. 133) an applicant may be required to reply in a shorter period than 6 months, not less than 30 days. Some situations in which shortened periods for reply are used are listed in MPEP § 710.02(b).
In other situations, for example, the rejection of a copied patent claim, the examiner may require applicant to reply on or before a specified date. These are known as time limit actions and are established under authority of 35 U.S.C. 2 and 35 U.S.C. 3. Some situations in which time limits are set are noted in MPEP § 710.02(c). The time limit requirement should be typed in capital letters where required.
An indication of a shortened time for reply should appear prominently on the first page of all copies of actions in which a shortened time for reply has been set so that a person merely scanning the action can easily see it.
Shortened statutory periods are subject to the provisions of 37 CFR 1.136(a) unless applicant is notified otherwise in an Office action. See MPEP § 710.02(e) for a discussion of extensions of time. See Chapter 2200 for ex parte reexamination
proceedings and Chapter 2600 for inter partes reexamination proceedings.
710.02(a) [Reserved]
710.02(b) Shortened Statutory Period: Situations in Which Used [R-07.2015]
Under the authority given him or her by 35 U.S.C. 133, the Director of the USPTO has directed the examiner to set a shortened period for reply to every action. The length of the shortened statutory period to be used depends on the type of reply required. Some specific cases of shortened statutory periods for reply are given below. These periods may be changed under special, rarely occurring circumstances.
A shortened statutory period may not be less than 30 days (35 U.S.C. 133).
The Patent Law Treaty (PLT), which entered into force with respect to the United States on December 18, 2013, provides for a time period of at least two months for replies to most Office actions and other notices. The Office has certain pilot programs that are not encompassed by this requirement of the PLT and set a time period of less than two months for reply.
2 MONTHS
(A) Requirement for restriction or election of species only (no action on the merits) ...... MPEP §§ 809.02(a) and 817.
(B) When a reply by an applicant for a nonfinal Office action is bona fide but includes an inadvertent omission, the examiner may set a 2 month shortened statutory time period to correct the omission .... MPEP §§ 710.01 and 714.03.
(C) Winning party in a terminated interference to reply to an unanswered Office action ...... MPEP Chapter 2300.
Where, after the termination of an interference proceeding, the application of the winning party contains an unanswered Office action, final rejection or any other action, the primary examiner notifies the applicant of this fact. In this
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case reply to the Office action is required within a shortened statutory period running from the date of such notice. See Ex parte Peterson, 49 USPQ 119, 1941 C.D. 8, 525 OG 3 (Comm’r Pat. 1941).
(D) To reply to an Ex parte Quayle Office action ......... MPEP § 714.14.
When an application is in condition for allowance, except as to matters of form, such as correction of the specification, a new oath, etc., the application will be considered special and prompt action taken to require correction of formal matters. Such action should include an indication on the Office Action Summary form PTOL-326 that prosecution on the merits is closed in accordance with the decision in Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935). A 2-month shortened statutory period for reply should be set.
(E) Multiplicity rejection — no other rejection ........ MPEP § 2173.05(n).
3 MONTHS
To reply to any Office action on the merits.
PERIOD FOR REPLY RESTARTED
Where the citation of a reference is incorrect or an Office action contains some other defect and this error is called to the attention of the Office within 1 month of the mail date of the action, the Office will restart the previously set period for reply to run from the date the error is corrected, if requested to do so by applicant. See MPEP § 710.06.
710.02(c) Specified Time Limits: Situations in Which Used [R-11.2013]
There are certain situations in which the examiner specifies a time for the applicant to take some action, and the applicant’s failure to timely take the specified action results in a consequence other than abandonment. Situations in which a specified time limit for taking an action is set are as follows:
(A) Where a member of the public files a petition under 37 CFR 1.14(a) for access to an application, the Office may give the applicant a specified time (usually 3 weeks) within which to state any objections to the granting of the petition for access and the reasons why it should be denied.
The failure to timely reply will not affect the prosecution of the application (assuming that it is still pending), but will result in the Office rendering a decision on the petition for access without considering any objections by the applicant. See MPEP § 103.
(B) Where an information disclosure statement complies with the requirements set forth in 37 CFR 1.97 (including the requirement for fees or statement under 37 CFR 1.97(e) based upon the time of filing), but part of the content requirement of 37 CFR 1.98 has been inadvertently omitted, the examiner may set a 1-month time limit for completion of the information disclosure statement. The failure to timely comply will not result in abandonment of the application, but will result in the information disclosure statement being placed in the application file with the noncomplying information not being considered. See MPEP § 609.05(a).
(C) Where an application is otherwise allowable but contains a traverse of a restriction requirement, the applicant may be given a specified time (e.g., a 2-month time limit) to cancel claims to the nonelected invention or species or take other appropriate action (i.e., petition the restriction requirement under 37 CFR 1.144). The failure to timely file a petition under 37 CFR 1.144 (or cancel the claims to the nonelected invention or species) will not result in abandonment of the application, but will be treated as authorization to cancel the claims to the non-elected invention or species, and the application will be passed to issue. See 37 CFR 1.141 and 1.144, and MPEP §§ 821.01 and 821.04(a).
(D) A portion of 37 CFR 41.202(c) provides that in suggesting claims for interference:
An examiner may require an applicant to add a claim to provoke an interference for an application subject to pre-AIA 35 U.S.C. 102(g). Failure to satisfy the requirement within a period (not less than one month) the examiner sets will operate as a concession of priority for the subject matter of the claim.
The failure to timely present the suggested claim will not result in abandonment of the application, but will be treated as a concession by the applicant of the priority of the subject matter of the claim. See MPEP Chapter 2300.
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§ 710.02(c)EXAMINATION OF APPLICATIONS
Where the failure to take the specified action may result in abandonment (e.g., filing a new complete appeal brief correcting the deficiencies in a prior appeal brief), a time period should be set for taking the specified action. Where the condition of the application requires that such action not be subject to extensions under 37 CFR 1.136, the action should specify that the provisions of 37 CFR 1.136 (or 1.136(a)) do not apply to the time period for taking action (i.e., a specified time limit should not be set simply to exclude the possibility of extending the period for reply under 37 CFR 1.136).
710.02(d) Difference Between Shortened Statutory Periods for Reply and Specified Time Limits [R-07.2015]
Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133:
(A) The penalty attaching to failure to take a particular action within a specified time is a loss of rights in regard to the particular matter (e.g., the failure to timely copy suggested claims results in a disclaimer of the involved subject matter). On the other hand, a failure to reply within the set statutory period under 35 U.S.C. 133 results in abandonment of the entire application. Abandonment of an application is not appealable, but a petition to revive may be granted if the delay was unintentional (37 CFR 1.137(a)).
(B) As a specified time or time limit is not a shortened statutory period under 35 U.S.C. 133, the Office may specify a time for taking action (or a time limit) of less than the 30 day minimum specified in 35 U.S.C. 133. See MPEP § 103.
(C) Where an applicant replies a day or two after the specified time, the delay may be excused by the examiner if satisfactorily explained. The examiner may use his or her discretion to request an explanation for the delay if the reason for the delay is not apparent from the reply. A reply 1 day late in an application carrying a shortened statutory period under 35 U.S.C. 133, no matter what the excuse, results in abandonment. Extensions of the statutory period under 35 U.S.C. 133 may be obtained under 37 CFR 1.136, provided the extension does not go
beyond the 6-month statutory period from the date of the Office action (35 U.S.C. 133).
The 2-month time period for filing an appeal brief on appeal to the Patent Trial and Appeal Board (37 CFR 41.37(a) ) and the 1-month time period for filing a new appeal brief to correct the deficiencies in a defective appeal brief (37 CFR 41.37(d) ) are time periods, but are not (shortened) statutory periods for reply set pursuant to 35 U.S.C. 133. Thus, these periods are, unless otherwise provided, extendable by up to 5 months under 37 CFR 1.136(a), and, in an exceptional situation, further extendable under 37 CFR 1.136(b) (i.e., these periods are not statutory periods subject to the 6-month maximum set in 35 U.S.C. 133). In addition, the failure to file an appeal brief (or a new appeal brief) within the time period set in 37 CFR 41.37(a) (or (d)) results in dismissal of the appeal. The dismissal of an appeal results in abandonment, unless there is any allowed claim(s) (see MPEP § 1215.04), in which case the examiner should cancel the nonallowed claims and allow the application.
The 2-month time period for reply to A Notice to File Missing Parts of an Application is not identified on the Notice as a statutory period subject to 35 U.S.C. 133. Thus, extensions of time of up to 5 months under 37 CFR 1.136(a), followed by additional time under 37 CFR 1.136(b), when appropriate, are permitted.
710.02(e) Extension of Time [R-07.2015]
37 CFR 1.136 Extensions of time.
(a)(1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless:
(i) Applicant is notified otherwise in an Office action;
(ii) The reply is a reply brief submitted pursuant to § 41.41 of this title;
(iii) The reply is a request for an oral hearing submitted pursuant to § 41.47(a) of this title;
(iv) The reply is to a decision by the Patent Trial and Appeal Board pursuant to § 41.50 or § 41.52 of this chapter; or to § 90.3 of this chapter; or
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(v) The application is involved in a contested case (§ 41.101(a) of this title) or a derivation proceeding (§ 42.4(b) of this title).
(2) The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (§ 1.135), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of paragraph (a) of this section are available.
(3) A written request may be submitted in an application that is an authorization to treat any concurrent or future reply, requiring a petition for an extension of time under this paragraph for its timely submission, as incorporating a petition for extension of time for the appropriate length of time. An authorization to charge all required fees, fees under § 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under this paragraph for its timely submission. Submission of the fee set forth in § 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission.
(b) When a reply cannot be filed within the time period set for such reply and the provisions of paragraph (a) of this section are not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under this paragraph must be filed on or before the day on which such reply is due, but the mere filing of such a request will not affect any extension under this paragraph. In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute. Any request under this section must be accompanied by the petition fee set forth in § 1.17(g).
(c) If an applicant is notified in a “Notice of Allowability” that an application is otherwise in condition for allowance, the following time periods are not extendable if set in the “Notice of Allowability” or in an Office action having a mail date on or after the mail date of the “Notice of Allowability”:
(1) The period for submitting an inventor’s oath or declaration
(2) The period for submitting formal drawings set under § 1.85(c); and
(3) The period for making a deposit set under § 1.809(c).
(d) See § 1.550(c) for extensions of time in ex parte reexamination proceedings, § 1.956 for extensions of time in inter partes reexamination proceedings; §§ 41.4(a) and 41.121(a)(3) of this chapter for extensions of time in contested cases before the Patent Trial and Appeal Board; § 42.5(c) of this chapter for extensions of time in trials before the Patent Trial and Appeal Board; and § 90.3 of this chapter for extensions
of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action.
37 CFR 1.136 provides for two distinct procedures to extend the period for action or reply in particular situations. The procedure which is available for use in a particular situation will depend upon the circumstances. 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee as set forth in 37 CFR 1.17(a) up to 5 months after the end of the time period set to take action except:
(A) where prohibited by statute,
(B) where prohibited by one of the items listed in the rule, or
(C) where applicant has been notified otherwise in an Office action.
The petition and fee must be filed within the extended time period for reply requested in the petition and can be filed prior to, with, or without the reply. The filing of the petition and fee will extend the time period to take action up to 5 months dependent on the amount of the fee paid except in those circumstances noted above. 37 CFR 1.136(a) will effectively reduce the amount of paperwork required by applicants and the Office since the extension will be effective upon filing of the petition and payment of the appropriate fee and without acknowledgment or action by the Office and since the petition and fee can be filed with or without the reply. 37 CFR 1.136(b) provides for requests for extensions of time upon a showing of sufficient cause when the procedure of 37 CFR 1.136(a) is not available. Although the petition and fee procedure of 37 CFR 1.136(a) will normally be available within 5 months after a set period for reply has expired, an extension request for cause under 37 CFR 1.136(b) must be filed during the set period for reply. Extensions of time in interference proceedings are governed by 37 CFR 41.4(a).
It should be very carefully noted that neither the primary examiner nor the Director of the USPTO has authority to extend the shortened statutory period unless a petition for the extension is filed. While the shortened period may be extended within the limits of the statutory 6 months period, no extension can operate to extend the time beyond the 6 months.
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§ 710.02(e)EXAMINATION OF APPLICATIONS
Any request under 37 CFR 1.136(b) for extension of time for reply must state a reason in support thereof and supply the fee under 37 CFR 1.17(g). Such extensions will only be granted for sufficient cause and must be filed prior to the end of the set period for reply.
Extensions of time with the payment of a fee pursuant to 37 CFR 1.136(a) are possible in reply to most Office actions of the examiner. Exceptions include:
(A) all extensions in a reexamination proceeding (see 37 CFR 1.550(c) and MPEP § 2265 for ex parte reexamination, and 37 CFR 1.956 and MPEP § 2665 for inter partes reexamination);
(B) all extensions during an interference proceeding (but not preparatory to an interference where a claim is suggested for interference);
(C) those specific situations where an Office action states that the provisions of 37 CFR 1.136(a) are not applicable (e.g., reply to a notice of allowability, in reissue applications associated with litigation, or where an application in allowable condition has nonelected claims and time is set to cancel such claims); and
(D) those limited instances where applicant is given a specified time limit to take certain actions.
The fees for extensions of time under 37 CFR 1.136(a) are set forth in 37 CFR 1.17(a) and are subject to a 50% reduction for persons or concerns qualifying as small entities. The fees itemized at 37 CFR 1.17(a) are cumulative. Thus, if an applicant has paid an extension fee in the amount set forth in 37 CFR 1.17(a)(l) for a 1-month extension of time and thereafter decides that an additional 1 month is needed, the proper fee would be the amount set forth in 37 CFR 1.17(a)(2) less the amount set forth in 37 CFR 1.17(a)(l) which was previously paid.
37 CFR 1.136(a)(3) provides that:
(A) a written request may be submitted in an application that is an authorization to treat any concurrent or future reply that requires a petition for an extension of time under 37 CFR 1.136(a) to be timely, as incorporating a petition for extension of time for the appropriate length of time;
(B) an authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under 37 CFR 1.136(a) to be timely; and
(C) submission of the fee set forth in 37 CFR 1.17(a) will be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under 37 CFR 1.136(a) to be timely.
Accordingly, 37 CFR 1.136(a)(3) is a “safety net” to avoid a potential loss of patent rights for applicants who inadvertently omitted a petition, but who had:
(A) previously filed a written request to treat a reply requiring an extension of time as incorporating a petition for such extension of time;
(B) previously filed an authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees; or
(C) submitted the fee set forth in 37 CFR 1.17(a) with the reply.
The Office strongly recommends including a written petition for any desired extension of time in reply to the Office action for which the extension was requested to avoid processing delays.
A proper petition may be only a few sentences such as
The applicant herewith petitions the Director of the United States Patent and Trademark Office to extend the time for reply to the Office action dated ____ for ____ month(s) from ____ to ____ . Submitted herewith is a check for $____ to cover the cost of the extension [Please Charge my deposit account number ____ , in the amount of $ ____ to cover the cost of the extension. Any deficiency or overpayment should be charged or credited to the above numbered deposit account.]
37 CFR 1.136(a)(2) provides, in part, that “[t]he date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee.”
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Thus, a petition under 37 CFR 1.136(a) need not be accompanied by a reply (e.g. , in situations in which the extension is necessary for copendency with a continuing application). 37 CFR 1.136(a)(2), however, clarifies that “[a] reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application” under 35 U.S.C. 133 and 37 CFR 1.135 (e.g., where the extension is obtained solely for the purpose of copendency with a continuing application, and no reply is filed, the application will become abandoned upon expiration of the so-extended period for reply).
While a petition for an extension of time under 37 CFR 1.136(a) must be filed within the extended period for reply, the petition need not be filed within the original shortened statutory period for reply. If a petition for an extension of time under 37 CFR 1.136(a) (with or without a reply) requests an insufficient period of extension such that the petition would be filed outside the so-extended period for reply, but the period for reply could be further extended under 37 CFR 1.136(a) such that the petition would be filed within the further extended period for reply, it is Office practice to simply treat the petition for extension of time as requesting the period of extension necessary to make the petition filed within the further extended period for reply if the petition or application contains an authorization to charge extension fees or fees under 37 CFR 1.17 to a deposit account. That is, in such situations a petition for an extension of time under 37 CFR 1.136(a) is simply construed as requesting the appropriate period of extension. For example, if a petition (and requisite fee) for a two-month extension of time containing an authorization to charge fee deficiencies to a deposit account are filed in an application four and one-half months after the date a notice of appeal was filed in that application, it is Office practice to treat the petition as requesting the period of extension (three months) necessary to make the petition filed within the extended period for reply. This practice applies even if no further reply (appeal brief or continued prosecution application (CPA) under 37 CFR 1.53(d)) is filed in the application to be treated as a constructive petition for an extension of time under 37 CFR 1.136(a)(3).
To facilitate processing, any petition for an extension of time (or petition to revive under 37 CFR 1.137)
in which a continuing application is filed in lieu of a reply should specifically refer to the filing of the continuing application and also should include an express abandonment of the prior application conditioned upon the granting of the petition and the granting of a filing date to the continuing application.
Applicants are cautioned that an extension of time will not be effected in the prior application by filing a petition for an extension of time, extension fee, or fee authorization, in the continuing application. This is because the petition for an extension of time (or constructive petition under 37 CFR 1.136(a)(3)) must be directed toward and filed in the application to which it pertains in accordance with 37 CFR 1.4 and 1.5.
Where a reply is filed after the set period for reply has expired and no petition or fee accompanies it, the reply will not be accepted as timely until the petition (which may be a constructive petition under 37 CFR 1.136(a)(3)) and the appropriate fee are submitted. For example, if an Office action sets a 3-month period for reply and applicant replies in the 4th month and includes only the petition for a 1-month extension of time, the reply is not acceptable until the fee is filed. If the fee is not filed until the 5th month, an additional fee for the 2nd month extension would also be required in order to render the reply timely.
An extension of time under 37 CFR 1.136 is not necessary when submitting a supplemental reply to an Office action if a complete first reply was timely filed in reply to the Office action.
When the provisions of 37 CFR 1.136(a) are not applicable, extensions of time for cause pursuant to 37 CFR 1.136(b) may be possible. Any such extension must be filed on or before the day on which the reply is due. The mere filing of such a request will not effect any extension. All such requests are to be decided by the Technology Center (TC) Director. No extension can operate to extend the time beyond the 6-month statutory period. Extensions of time under 37 CFR 1.136(b) (or 37 CFR 1.136(a)) are not available to extend the time period set in a Notice of Allowability, or in an Office action having a mail date after the mail date of the
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§ 710.02(e)EXAMINATION OF APPLICATIONS
Notice of Allowability, to submit an inventor’s oath or declaration under 37 CFR 1.63 and 1.64, to submit formal drawings, or to make a deposit of biological material.
If a request for extension of time under 37 CFR 1.136(b) is filed in duplicate and accompanied by a stamped return-addressed envelope, the Office will indicate the action taken on the duplicate and return it promptly in the envelope. Utilization of this procedure is optional on the part of applicant. In this procedure, the action taken on the request should be noted on the original and on the copy which is to be returned. The notation on the original, which becomes a part of the file record, should be signed by the person granting or denying the extension, and the name and title of that person should also appear in the notation on the copy which is returned to the person requesting the extension.
When the request is granted, no further action by the Office is necessary. When the request is granted in part, the extent of the extension granted will be clearly indicated on both the original and on the copy which is to be returned. When the request is denied, the reason for the denial will be indicated on both the original and on the copy which is to be returned or a formal decision letter giving the reason for the denial will be forwarded promptly after the mailing of the duplicate.
If the request for extension of time is granted, the due date is computed from the date stamped or printed on the action, as opposed to the original due date. See MPEP § 710.01(a). For example, a reply to an action with a 3-month shortened statutory period, dated November 30, is due on the following February 28 (or 29, if it is a leap year). If the period for reply is extended an additional month, the reply becomes due on March 30, not on March 28.
Hand-carried requests for extensions of time will no longer be accepted in the TCs. Hand-carried requests for extensions of time may only be delivered to the Customer Window, which is located at:
U.S. Patent and Trademark Office Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314
Applicant should be advised promptly regarding action taken on the request for extension of time under 37 CFR 1.136(b) so that the file record will be complete.
Form paragraphs 7.98 or 7.98.01 may be used where a reply is filed late but an extension of time is possible.
¶ 7.98 Reply Is Late, Extension of Time Suggested
Applicant’s reply was received in the Office on [1], which is after the expiration of the period for reply set in the last Office action mailed on [2]. This application will become abandoned unless applicant obtains an extension of time to reply to the last Office action under 37 CFR 1.136(a).
Examiner Note:
Since the provisions of 37 CFR 1.136(a) do not apply to reexamination proceedings or to litigation related reissue applications, do not use this form paragraph in these cases.
¶ 7.98.01 Reply Is Late, Extension of Time Suggested, Pro Se
Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the above noted Office action. The application will become abandoned unless applicant obtains an extension of the period for reply set in the above noted Office action. An extension of the reply period may be obtained by filing a petition under 37 CFR 1.136(a). The petition must be accompanied by the appropriate fee as set forth in 37 CFR 1.17(a) (copy of current fee schedule attached). The date on which the reply, the petition, and the fee have been filed is the date of the reply and also the date for purposes of determining the period of extension and the corresponding amount of the fee due. The expiration of the time period is determined by the amount of the fee paid. Applicant is advised that in no case can any extension carry the date for reply to an Office action beyond the maximum period of SIX MONTHS set by statute. Additionally, extensions may not be granted under 37 CFR 1.136(a) for more than FIVE MONTHS beyond the time period set in an Office action.
Examiner Note:
Enclose a photocopy of current fee schedule with action so that applicant can determine the required fee.
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I. FINAL REJECTION — TIME FOR REPLY
If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection. This procedure applies only to a first reply to a final rejection. The following language must be included by the examiner in each final rejection.
A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST REPLY IS FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS FINAL ACTION AND THE ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE THREE-MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED STATUTORY PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY EXTENSION FEE PURSUANT TO 37 CFR 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR REPLY EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION.
For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, if a petition for extension of time is granted, the due date for a reply is computed from the date stamped or printed on the Office action with the final rejection. See MPEP § 710.01(a). If the examiner, however,
does not mail an advisory action until after the end of 3 months, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension of time fee may be calculated from the mailing date of the advisory action. In no event will the statutory period for reply expire later than 6 months from the mailing date of the final Office action.
See also MPEP § 706.07(f).
II. EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS AFTER FINAL REJECTION
Frequently, applicants request an extension of time, stating as a reason therefor that more time is needed in which to submit an affidavit. When such a request is filed after final rejection, the granting of the request for extension of time is without prejudice to the right of the examiner to question why the affidavit is now necessary and why it was not earlier presented. If applicant’s showing is insufficient, the examiner may deny entry of the affidavit, notwithstanding the previous grant of an extension of time to submit it. The grant of an extension of time in these circumstances serves merely to keep the application from becoming abandoned while allowing the applicant the opportunity to present the affidavit or to take other appropriate action. Moreover, prosecution of the application to save it from abandonment must include such timely, complete and proper action as required by 37 CFR 1.113. The admission of the affidavit for purposes other than allowance of the application, or the refusal to admit the affidavit, and any proceedings relative thereto, shall not operate to save the application from abandonment.
Implicit in the above practice is the fact that affidavits submitted after final rejection are subject to the same treatment as amendments submitted after final rejection. See 37 CFR 1.116(c).
Failure to file a reply during the shortened statutory period results in abandonment of the application.
Extensions of time to appeal to the courts under 37 CFR 90.3(c) are covered in MPEP § 1216.
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§ 710.02(e)EXAMINATION OF APPLICATIONS
III. NO EXTENSIONS OF TIMEAFTER PAYMENT OF ISSUE FEE
The statutory (nonextendable) time period for payment of the issue fee is 3 months from the date of the Notice of Allowance (35 U.S.C. 151). In situations where informalities such as drawing corrections are outstanding at the time of allowance, applicants will be notified on the PTOL-37 (Notice of Allowability) of such informalities. Extensions of time under 37 CFR 1.136(a) or (b) are NOT available to correct such informalities. Any such informalities must be corrected and the issue fee and the publication fee, if required, must be paid within the 3-month period. If a Notice Requiring Inventor’s Oath or Declaration (PTOL-2306) is sent with the Notice of Allowability, the required inventor’s oath or declaration must be submitted no later than the payment of the issue fee. See 35 U.S.C. 115(f).
710.03 [Reserved]
710.04 Two Periods Running [R-08.2012]
There sometimes arises a situation where two different periods for reply are running against an application, the one limited by the regular statutory period, the other by the limited period set in a subsequent Office action. The running of the first period is not suspended nor affected by an ex parte limited time action or even by an appeal therefrom. For an exception involving suggested claims, see MPEP Chapter 2300.
710.04(a) Copying Patent Claims [R-08.2012]
Where, in an application in which there is an unanswered rejection of record, claims are copied from a patent and all of these claims are rejected there results a situation where two different periods for reply are running against the application. One period, the first, is the regular statutory period of the unanswered rejection of record, the other period is the limited period set for reply to the rejection (either first or final). The date of the last unanswered Office action on the claims other than the copied patent claims is the controlling date of the statutory period.
See Ex parte Milton, 63 USPQ 132 (P.O. Super Exam. 1938). See also MPEP Chapter 2300 .
710.05 Period Ending on Saturday, Sunday, or a Federal Holiday [R-07.2015]
35 U.S.C. 21 Filing date and day for taking action.
*****
(b) When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia the action may be taken, or the fee paid, on the next succeeding secular or business day.
37 CFR 1.7 Times for taking action; Expiration on Saturday, Sunday, or Federal holiday.
(a) Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by or under this part for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding business day which is not a Saturday, Sunday, or a Federal holiday. See § 90.3 of this chapter for time for appeal or for commencing civil action.
(b) If the day that is twelve months after the filing date of a provisional application under 35 U.S.C. 111(b) and § 1.53(c) falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the period of pendency shall be extended to the next succeeding secular or business day which is not a Saturday, Sunday, or a Federal holiday.
The federal holidays under 5 U.S.C. 6103(a) are New Year’s Day, January 1; Martin Luther King’s birthday, the third Monday in January; Washington’s Birthday, the third Monday in February; Memorial Day, the last Monday in May; Independence Day, July 4; Labor Day, the first Monday in September; Columbus Day, the second Monday in October; Veteran’s Day, November 11; Thanksgiving Day, the fourth Thursday in November; and Christmas Day, December 25. Whenever a federal holiday falls on a Sunday, the following day (Monday) is also a federal holiday. Exec. Order No. 11582, 36 FR 2957 (February 11, 1971); 5 U.S.C. 6103.
When a federal holiday falls on a Saturday, the preceding day, Friday, is considered to be a federal holiday and the U.S. Patent and Trademark Office will be closed for business on that day (5 U.S.C. 6103). Accordingly, any action or fee due on such a federal holiday Friday or Saturday is to be considered timely if the action is taken, or the fee
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paid, on the next succeeding day which is not a Saturday, Sunday, or a federal holiday.
Pursuant to 5 U.S.C. 6103(c), Inauguration Day (January 20, every 4 years) “is a legal public holiday for the purpose of statutes relating to pay and leave of employees . . .” employed in the District of Columbia and surrounding areas. It further provides that when Inauguration Day falls on a Sunday, the next day selected for the observance of the Inauguration is considered a legal public holiday for purposes of this subsection. No provision is made for an Inauguration Day falling on a Saturday.
When an amendment is filed a day or two later than the expiration of the period fixed by statute, care should be taken to ascertain whether the last day of that period was Saturday, Sunday, or a federal holiday and if so, whether the amendment was filed or the fee paid on the next succeeding day which is not a Saturday, Sunday, or a federal holiday.
An amendment received on such succeeding day which was due on Saturday, Sunday, or federal holiday is endorsed with the date of receipt. The Saturday, Sunday, or federal holiday is also indicated.
The period of pendency of a provisional application will be extended to the next succeeding secular or business day which is not a Saturday, Sunday, or a federal holiday, if the day that is twelve months after the filing date of the provisional application under 35 U.S.C. 111(b) and 37 CFR 1.53(c) falls on Saturday, Sunday, or a federal holiday within the District of Columbia. See 35 U.S.C. 119(e)(3) and MPEP § 201.04.
710.06 Situations When Reply Period Is Reset or Restarted [R-11.2013]
Where the citation of a reference is incorrect or an Office action contains some other error that affects applicant’s ability to reply to the Office action and this error is called to the attention of the Office within 1 month of the mail date of the action, the Office will restart the previously set period for reply to run from the date the error is corrected, if requested to do so by applicant. If the error is brought to the attention of the Office within the
period for reply set in the Office action but more than 1 month after the date of the Office action, the Office will set a new period for reply, if requested to do so by the applicant, to substantially equal the time remaining in the reply period. For example, if the error is brought to the attention of the Office 5 weeks after mailing the action, then the Office would set a new 2-month period for reply. The new period for reply must be at least 1 month and would run from the date the error is corrected. See MPEP § 707.05(g) for the manner of correcting the record where there has been an erroneous citation.
Where for any reason it becomes necessary to remail any action (MPEP § 707.13), applicant’s period for reply will be restarted to correspond to the remailing date of the action.
A supplementary action after a rejection explaining the references more explicitly or giving the reasons more fully, even though no further references are cited, establishes a new date from which the statutory period runs.
If the error in citation or other defective Office action is called to the attention of the Office after the expiration of the period for reply, the period will not be restarted and any appropriate extension fee will be required to render a reply timely. The Office letter correcting the error will note that the time period for reply remains as set forth in the previous Office action.
See MPEP §§ 505, 512, and 513 for U.S. Patent and Trademark Office practice on date stamping documents.
In the event that correspondence from the Office is received late (A) due to delays in the U.S. Postal Service, or (B) because the mail was delayed in leaving the USPTO (the postmark date is later than the mail date printed on the correspondence), applicants may petition to reset the period for reply, which petition shall be evaluated according to the guidelines which follow. Where the Office action involved in the petition was mailed by a Technology Center (TC), the authority to decide such petitions has been delegated to the TC Director. See Notice entitled “Petition to reset a period for response due
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to late receipt of a PTO action,” 1160 OG 14 (March 1, 1994).
I. PETITIONS TO RESET A PERIOD FOR REPLY DUE TO LATE RECEIPT OF AN OFFICE ACTION
The Office will grant a petition to restart the previously set period for reply to an Office action to run from the date of receipt of the Office action at the correspondence address when the following criteria are met:
(A) the petition is filed within 2 weeks of the date of receipt of the Office action at the correspondence address;
(B) a substantial portion of the set reply period had elapsed on the date of receipt (e.g., at least 1 month of a 2- or 3-month reply period had elapsed); and
(C) the petition includes (1) evidence showing the date of receipt of the Office action at the correspondence address (e.g., a copy of the Office action having the date of receipt of the Office action at the correspondence address stamped thereon, a copy of the envelope (which contained the Office action) having the date of receipt of the Office action at the correspondence address stamped thereon, etc.), and (2) a statement setting forth the date of receipt of the Office action at the correspondence address and explaining how the evidence being presented establishes the date of receipt of the Office action at the correspondence address.
There is no statutory requirement that a shortened statutory period of longer than 30 days to reply to an Office action be reset due to delay in the mail or in the Office. However, when a substantial portion of the set reply period had elapsed on the date of receipt at the correspondence address (e.g., at least 1 month of a 2- or 3-month period had elapsed), the procedures set forth above for late receipt of action are available. Where an Office action was received with less than 2 months remaining in a shortened statutory period of 3 months the period may be restarted from the date of receipt. Where the period remaining is between 2 and 3 months, the period will be reset only in extraordinary situations, e.g., complex Office action suggesting submission of comparative data.
II. PETITIONS TO RESET A PERIOD FOR REPLY DUE TO A POSTMARK DATE LATER THAN THE MAIL DATE PRINTED ON AN OFFICE ACTION
The Office will grant a petition to restart the previously set period for reply to an Office action to run from the postmark date shown on the Office mailing envelope which contained the Office action when the following criteria are met:
(A) the petition is filed within 2 weeks of the date of receipt of the Office action at the correspondence address;
(B) the reply period was for payment of the issue fee, or the reply period set was 1 month or 30 days; and
(C) the petition includes (1) evidence showing the date of receipt of the Office action at the correspondence address (e.g., copy of the Office action having the date of receipt of the Office action at the correspondence address stamped thereon, etc.), (2) a copy of the envelope which contained the Office action showing the postmark date, and (3) a statement setting forth the date of receipt of the Office action at the correspondence address and stating that the Office action was received in the postmarked envelope.
The provisions of 37 CFR 1.8 and 1.10 apply to the filing of the above-noted petitions with regard to the requirement that the petition be filed within 2 weeks of the date of receipt of the Office action.
The showings outlined above may not be sufficient if there are circumstances that point to a conclusion that the Office action may have been delayed after receipt rather than a conclusion that the Office action was delayed in the mail or in the Office.
711 Abandonment of Patent Application [R-07.2015]
37 CFR 1.135 Abandonment for failure to reply within time period.
(a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.
(b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the
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application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
(c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
37 CFR 1.138 Express abandonment.
(a) An application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment of the application may not be recognized by the Office before the date of issue or publication unless it is actually received by appropriate officials in time to act.
(b) A written declaration of abandonment must be signed by a party authorized under § 1.33(b)(1) or (b)(3) to sign a paper in the application, except as otherwise provided in this paragraph. A registered attorney or agent, not of record, who acts in a representative capacity under the provisions of § 1.34 when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application.
(c) An applicant seeking to abandon an application to avoid publication of the application (see § 1.211(a)(1)) must submit a declaration of express abandonment by way of a petition under this section including the fee set forth in § 1.17(h) in sufficient time to permit the appropriate officials to recognize the abandonment and remove the application from the publication process. Applicant should expect that the petition will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication.
Abandonment may be either of the invention or of an application. This discussion is concerned with abandonment of the application for patent.
An abandoned application, in accordance with 37 CFR 1.135 and 1.138, is one which is removed from the Office docket of pending applications through:
(A) formal abandonment
(1) by the applicant,
(2) by the attorney or agent of record , or
(3) by a registered attorney or agent acting in a representative capacity under 37 CFR 1.34 when filing a continuing application; or
(B) failure of applicant to take appropriate action within a specified time at some stage in the prosecution of the application.
711.01 Express or Formal Abandonment [R-07.2015]
The applicant or the attorney/agent of record, if any, can sign an express abandonment. It is imperative that the attorney or agent of record exercise every precaution in ascertaining that the abandonment of the application is in accordance with the desires and best interests of the applicant prior to signing a letter of express abandonment of a patent application. Moreover, special care should be taken to ensure that the appropriate application is correctly identified in the letter of abandonment.
A letter of abandonment properly signed becomes effective when an appropriate official of the Office takes action thereon. When so recognized, the date of abandonment may be the date of recognition or a later date if so specified in the letter itself. For example, where a continuing application is filed with a request to abandon the prior application as of the filing date accorded the continuing application, the date of the abandonment of the prior application will be in accordance with the request once it is recognized.
A letter of express abandonment or a petition under 37 CFR 1.138(c) for express abandonment to avoid publication of the application (see 37 CFR 1.211(a)(1)) accompanied by the petition fee set forth in 37 CFR 1.17(h) may be:
(A) mailed to Mail Stop Express Abandonment, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450; or
(B) filed electronically using EFS-Web.
Since a petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication, applicants should transmit the petition electronically using EFS-Web in all instances where the projected publication date is less than 3 months from the date of the petition. This will increase the chance of such petition being received by the appropriate officials in sufficient time to recognize the abandonment and
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remove the application from the publication process. If the issue fee has been paid, the letter of express abandonment should be directed to the Office of Petitions instead of the Pre-Grant Publication Division and be accompanied by a petition to withdraw an application from issue under 37 CFR 1.313(c). See subsection “I. After Payment of Issue Fee.”
Action in recognition of an express abandonment may take the form of an acknowledgment by the Publishing Division of the receipt of the express abandonment, indicating that it is in compliance with 37 CFR 1.138.
It is suggested that divisional applications be reviewed before filing to ascertain whether the prior application should be abandoned. Care should be exercised in situations such as these as the Office looks on express abandonments as acts of deliberation, intentionally performed.
Applications may be expressly abandoned as provided for in 37 CFR 1.138. When a letter expressly abandoning an application (not in issue) is received, the Office should acknowledge receipt thereof, and indicate whether it does or does not comply with the requirements of 37 CFR 1.138.
The filing of a request for a continued prosecution application (CPA) under 37 CFR 1.53(d) in a design application is considered to be a request to expressly abandon the prior application as of the filing date granted the continuing application.
If the letter expressly abandoning the application does comply with 37 CFR 1.138, the Office personnel should respond by using a “Notice of Abandonment” form PTO-1432, and by checking the appropriate box(es). If such a letter does not comply with the requirements of 37 CFR 1.138, a fully explanatory letter should be sent.
A letter of express abandonment which is not timely filed (because it was not filed within the period for reply), is not acceptable to expressly abandon the application. The letter of express abandonment should be placed in the application file but not formally entered.
The application should be pulled for abandonment after expiration of the maximum permitted period for reply (see MPEP § 711.04(a)) and applicant notified of the abandonment for failure to reply within the statutory period. See MPEP §§ 711.02 and 711.04(c).
An amendment canceling all of the claims is not an express abandonment. The Office will not enter any amendment that would cancel all of the claims in an application without presenting any new or substitute claims. See Exxon Corp. v. Phillips Petroleum Co. , 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001). Such an amendment is regarded as nonresponsive and is not a bona fide attempt to advance the application to final action. The practice set forth in 37 CFR 1.135(c) does not apply to such amendment. Applicant should be notified as explained in MPEP §§ 714.03 to 714.05.
An attorney or agent not of record in an application may file a withdrawal of an appeal under 37 CFR 1.34 except in those instances where such withdrawal would result in abandonment of the application. In such instances the withdrawal of appeal is in fact an express abandonment.
I. AFTER PAYMENT OF ISSUE FEE
If a letter of express abandonment is being submitted in an allowed application after the payment of the issue fee, the express abandonment must be accompanied by a petition to withdraw from issue under 37 CFR 1.313(c) and the fee set forth in 37 CFR 1.17(h). Also see MPEP § 1308. The express abandonment may not be recognized by the Office unless it is actually received by appropriate officials in time to withdraw the application from issue. A petition under 37 CFR 1.313 will not be effective to withdraw the application from issue unless it is actually received and granted by the appropriate official before the date of issue. After the issue fee has been paid, the application will not be withdrawn upon petition by the applicant for any reason except those reasons listed in 37 CFR 1.313(c), which include express abandonment of the application. An application may be withdrawn from issue for express abandonment of the application in favor of a continuing application. The petition under 37 CFR 1.313(c) accompanied by the petition fee should be
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addressed to the Office of Petitions. If the petition and the letter of abandonment are received by appropriate officials in sufficient time to act on the petition and remove the application from the issue process, the letter of abandonment will be acknowledged by the Office of Data Management after the petition is granted. Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be:
(A) mailed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450;
(B) transmitted by facsimile transmission to (571) 273-0025; or
(C) hand-carried to the Office of Petitions,
Madison West, 7th Floor, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Office of Petitions at (571) 272-3282 for delivery assistance; or
(D) submitted electronically by EFS-Web.
Applicants are strongly encouraged to either transmit by EFS-Web, or facsimile or hand-carry the petition to the Office of Petitions to allow sufficient time to process the petition and if the petition can be granted, withdraw the application from issue.
See MPEP §§ 711.05 and 1308. In cases where 37 CFR 1.313 precludes giving effect to an express abandonment, the appropriate remedy is a petition, with fee, under 37 CFR 1.183, showing an extraordinary situation where justice requires suspension of 37 CFR 1.313.
II. TO AVOID PUBLICATION OF APPLICATION
A petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication. The petition will be granted when it is recognized in sufficient time to avoid publication of the application. The petition will be denied when it is not recognized in time to avoid publication. Generally, a petition under 37 CFR 1.138(c) will not be granted and the application will be published in regular course unless such declaration of express abandonment and
petition are received by the appropriate officials more than four weeks prior to the projected date of publication. It is unlikely that a petition filed within four weeks of the projected date of publication will be effective to avoid publication. Also note that withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of an application under 35 U.S.C. 122(b). See 37 CFR 1.313(d).
III. TO OBTAIN REFUND OF SEARCH FEE AND EXCESS CLAIMS FEE
37 CFR 1.138 Express abandonment. *****
(d) An applicant seeking to abandon an application filed under 35 U.S.C. 111(a) and § 1.53(b) on or after December 8, 2004, to obtain a refund of the search fee and excess claims fee paid in the application, must submit a declaration of express abandonment by way of a petition under this paragraph before an examination has been made of the application. The date indicated on any certificate of mailing or transmission under § 1.8 will not be taken into account in determining whether a petition under § 1.138(d) was filed before an examination has been made of the application. If a request for refund of the search fee and excess claims fee paid in the application is not filed with the declaration of express abandonment under this paragraph or within two months from the date on which the declaration of express abandonment under this paragraph was filed, the Office may retain the entire search fee and excess claims fee paid in the application. This two-month period is not extendable. If a petition and declaration of express abandonment under this paragraph are not filed before an examination has been made of the application, the Office will not refund any part of the search fee and excess claims fee paid in the application except as provided in § 1.26.
As provided in 37 CFR 1.138(d), refund of the search fee and excess claims fee paid in an application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) on or after December 8, 2004 may be obtained by submitting a petition and declaration of express abandonment before an examination has been made of the application.
A petition under 37 CFR 1.138(d) will be granted if it was filed before an examination has been made of the application and will be denied if it was not filed before an examination has been made of the application. This averts the situation in which an applicant files a declaration of express abandonment to obtain a refund of the search fee and excess claims fee, the request for a refund is not granted because the declaration of express abandonment was not filed
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before an examination has been made of the application, the applicant then wishes to rescind the declaration of express abandonment upon learning that the declaration of express abandonment was not filed before an examination has been made of the application, and the Office cannot revive the application (once the declaration of express abandonment is recognized) because the application was expressly and intentionally abandoned by the applicant.
An “examination has been made of the application” for purposes of 37 CFR 1.138(d) once an action (e.g., restriction or election of species requirement, requirement for information under 37 CFR 1.105, first Office action on the merits, notice of allowability or notice of allowance, or action under Ex parte Quayle , 1935 Dec. Comm’r Pat. 11 (1935)) is shown in the Patent Application Locating and Monitoring (PALM) system as having been counted. For purposes of 37 CFR 1.138(d), “before” means occurring earlier in time, in that if a petition under 37 CFR 1.138(d) is filed and an action is counted on the same day, the petition under 37 CFR 1.138(d) was not filed before an examination has been made of the application. In addition, the date indicated on any certificate of mailing or transmission under 37 CFR 1.8 is not taken into account in determining whether a petition under 37 CFR 1.138(d) was filed before an examination has been made of the application.
The PALM system maintains computerized contents records of all patent applications and reexamination proceedings. The PALM system will show a status higher than 031 once an action has been counted. If the status of an application as shown in PALM is higher than 031 before or on the day that the petition under 37 CFR 1.138(d) was filed, the petition under 37 CFR 1.138(d) will be denied and the search fee and excess claims fee will not be refunded except as provided in 37 CFR 1.26.
A petition under 37 CFR 1.138(d) may not be effective to stop publication of an application unless the petition under 37 CFR 1.138(d) is granted and the abandonment processed before technical preparations for publication of the application has begun. Technical preparations for publication of an application generally begin four months prior to the projected date of publication.
The Office recommends that petitions under 37 CFR 1.138(d) be submitted by EFS-Web. The use of form PTO/SB/24B (or PTO/AIA/24B), reproduced in MPEP § 711.01, subsection V., is recommended.
IV. APPLICATION IN INTERFERENCE
An express abandonment pursuant to 37 CFR 1.138 of an application involved in an interference under pre-AIA 35 U.S.C. 135 is considered an abandonment of the contest and it is construed as a request for entry of an adverse judgment against the applicant. See 37 CFR 41.127(b)(4).
V. FORMS FOR FILING EXPRESS ABANDONMENT
Form PTO/AIA/24 (or PTO/SB/24 for applications filed before September 16, 2012) may be used for filing a letter of express abandonment or a letter of express abandonment in favor of a continuing application. Form PTO/AIA/24A (or PTO/SB/24A for applications filed before September 16, 2012) may be used for filing a petition for express abandonment under 37 CFR 1.138(c) to avoid publication of the application. Form PTO/AIA/24B (or PTO/SB/24B for applications filed before September 16, 2012) may be used for filing a petition for express abandonment under 37 CFR 1.138(d) to obtain a refund of the search fee and excess claims fee.
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711.02 Failure To Take Required Action During Statutory Period [R-07.2015]
37 CFR 1.135(a) specifies that an application becomes abandoned if applicant “fails to reply” to an office action within the fixed statutory period. This failure may result either from (A) failure to reply within the statutory period, or (B) insufficiency of reply, i.e., failure to file a “complete and proper reply, as the condition of the case may require” within the statutory period (37 CFR 1.135(b)).
When an amendment is filed after the expiration of the statutory period, the application is abandoned and the remedy is to petition to revive it. The examiner should notify the applicant or attorney at once that the application has been abandoned by using Notice of Abandonment form PTOL-1432. The proper boxes on the form should be checked and the blanks for the dates of the proposed amendment and the Office action completed. The late amendment is placed in the file wrapper but not formally entered. See MPEP § 714.17.
Form paragraph 7.90 or 7.98.02 may also be used.
¶ 7.90 Abandonment, Failure to Reply
This application is abandoned in view of applicant’s failure to submit a proper reply to the Office action mailed on [1] within the required period for reply.
Examiner Note:
1. A letter of abandonment should not be mailed until after the period for requesting an extension of time under 37 CFR 1.136(a) has expired.
2. In pro se cases see form paragraph 7.98.02.
¶ 7.98.02 Reply Is Late, Petition To Revive Suggested, Pro Se
Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the last Office Action. Since no time remains for applicant to obtain an extension of the period for reply by filing a petition under 37 CFR 1.136(a), this application is abandoned. Applicant is advised that the abandonment of this application may only be overcome by filing a petition to revive under 37 CFR 1.137. A petition to revive may be appropriate if applicant’s failure to reply was unintentional, as set forth below.
Failure to reply was unintentional.
A petition to revive an abandoned application on the grounds that the failure to reply was unintentional (37 CFR 1.137) must be accompanied by: (1) the required reply (which has been filed); (2) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137 was unintentional; (3) any terminal disclaimer required pursuant to 37 CFR 1.137(d); and (4) the $[3] petition fee as set forth in 37 CFR 1.17(m). No consideration to the substance of a petition will be given until this fee is received. The Director may require additional information where there is a question whether the delay was unintentional.
The required items and fees must be submitted promptly under a cover letter entitled “Petition to Revive.”
Further correspondence with respect to this matter should be addressed as follows:
By mail:
Mail Stop Petition Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
By FAX:
571-273-8300 Attn: Office of Petitions
Telephone inquiries with respect to this matter should be directed to the Office of Petitions Staff at (571) 272-3282. For more detailed information, see MPEP § 711.03(c).
To pass on questions of abandonment, it is essential that the examiner know the dates that mark the beginning and end of the statutory period under varying situations. Applicant’s reply must reach the Office within the set shortened statutory period for reply dating from the date stamped or printed on the Office letter or within the extended time period obtained under 37 CFR 1.136. (See MPEP § 710 to § 710.06.)
For a petition to withdraw a holding of abandonment based upon failure to receive an Office action, see MPEP § 711.03(c).
711.02(a) Insufficiency of Reply [R-08.2012]
Abandonment may result from a situation where applicant’s reply is within the period for reply but is not fully responsive to the Office action. But see
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MPEP § 710.02(c). See also MPEP § 714.02 to § 714.04.
¶ 7.91 Reply Is Not Fully Responsive, Extension of Time Suggested
The reply filed on [1] is not fully responsive to the prior Office action because: [2]. Since the period for reply set forth in the prior Office action has expired, this application will become abandoned unless applicant corrects the deficiency and obtains an extension of time under 37 CFR 1.136(a).
The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. In no case may an applicant reply outside the SIX (6) MONTH statutory period or obtain an extension for more than FIVE (5) MONTHS beyond the date for reply set forth in an Office action. A fully responsive reply must be timely filed to avoid abandonment of this application.
Examiner Note:
1. In bracket 2, set forth why the examiner considers there to be a failure to take “complete and proper action” within the statutory period.
2. If the reply appears to be a bona fide attempt to respond with an inadvertent omission, do not use this form paragraph; instead use form paragraph 7.95.
711.02(b) Special Situations Involving Abandonment [R-07.2015]
The following situations involving questions of abandonment often arise, and should be specially noted:
(A) Copying claims from a patent when not suggested by the U.S. Patent and Trademark Office does not constitute a reply to the last Office action and will not save the application from abandonment, unless the last Office action relied solely on the patent for the rejection of all the claims rejected in that action.
(B) An application may become abandoned through withdrawal of, or failure to prosecute, an appeal to the Patent Trial and Appeal Board. See MPEP §§ 1215.01 to 1215.04.
(C) An application may become abandoned through dismissal of appeal to the Court of Appeals for the Federal Circuit or civil action, where there was not filed prior to such dismissal an amendment putting the application in condition for issue or fully responsive to the Board’s decision. Abandonment results from failure to perfect an appeal as required
by the Court of Appeals for the Federal Circuit. See MPEP §§ 1215.04 and 1216.01.
(D) Where claims are suggested for interference near the end of the period for reply running against the application. See MPEP Chapter 2300.
(E) Where a continued prosecution application (CPA) under 37 CFR 1.53(d) is filed. See MPEP §§ 201.06(d) and 711.01.
(F) Prior to a decision by the Board, an application on appeal that has no allowed claims may become abandoned when a Request for Continued Examination (RCE) is improperly filed without the appropriate fee or a submission (37 CFR 1.114(d)) in the application. The filing of an RCE will be treated as a withdrawal of the appeal by the applicant. See MPEP § 706.07(h), subsection X.
(G) When a reply to a final Office action is outstanding, an application may become abandoned if an RCE is filed without a timely submission that meets the reply requirements of 37 CFR 1.111. The filing of an improper RCE will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application. See MPEP § 706.07(h), subsection VI.
(H) Prior to payment of the issue fee, an allowed application may become abandoned if an RCE is improperly filed without the appropriate fee or a submission in the application. The improper RCE will not operate to toll the running of the time period for payment of the issue fee. See MPEP § 706.07(h), subsection IX.
711.02(c) Termination of Proceedings [R-11.2013]
“Termination of proceedings” is an expression found in 35 U.S.C. 120. As there stated, a second application is considered to be copending with an earlier application if it is filed before
(A) the patenting,
(B) the abandonment of, or
(C) termination of proceedings on the earlier application.
“Before” has consistently been interpreted, in this context, to mean “not later than.”
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In each of the following situations, proceedings are terminated:
(A) When the issue fee is not paid and the application is abandoned for failure to pay the issue fee, proceedings are terminated as of the date the issue fee was due and the application is the same as if it were abandoned after midnight on that date (but if the issue fee is later accepted, on petition, the application is revived). See MPEP § 711.03(c).
(B) If an application is in interference wherein all the claims present in the application correspond to the counts and the application loses the interference as to all the claims, then proceedings on that application are terminated as of the date appeal or review by civil action was due if no appeal or civil action was filed.
(C) Proceedings are terminated in an application after decision by the Patent Trial and Appeal Board as explained in MPEP § 1214.06.
(D) Proceedings are terminated after a decision by the court as explained in MPEP § 1216.01.
711.03 Reconsideration of Holding of Abandonment; Revival [R-08.2012]
When advised of the abandonment of his or her application, applicant may either ask for reconsideration of such holding, if he or she disagrees with it on the basis that there is no abandonment in fact; or petition for revival under 37 CFR 1.137.
711.03(a) Holding Based on Insufficiency of Reply [R-8.2012]
Applicant may deny that the reply was incomplete.
While the primary examiner has no authority to act upon an application in which no action by applicant was taken during the period for reply, he or she may reverse his or her holding as to whether or not an amendment received during such period was responsive and act on an application of such character which he or she has previously held abandoned. This is not a revival of an abandoned
application but merely a holding that the application was never abandoned. See also MPEP § 714.03.
711.03(b) Holding Based on Failure To Reply Within Period [R-08.2012]
When an amendment reaches the U.S. Patent and Trademark Office after the expiration of the period for reply and there is no dispute as to the dates involved, no question of reconsideration of a holding of abandonment can be presented.
However, the examiner and the applicant may disagree as to the date on which the period for reply commenced to run or ends. In this situation, as in the situation involving sufficiency of reply, the applicant may take issue with the examiner and point out to him or her that his or her holding was erroneous.
711.03(c) Petitions Relating to Abandonment [R-07.2015]
37 CFR 1.135 Abandonment for failure to reply within time period.
(a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.
(b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
(c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
37 CFR 1.137 Revival of abandoned application, or terminated or limited reexamination prosecution.
(a) Revival on the basis of unintentional delay. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this section to revive an abandoned application or a reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited under § 1.957(c).
(b) Petition requirements. A grantable petition pursuant to this section must be accompanied by:
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(1) The reply required to the outstanding Office action or notice, unless previously filed;
(2) The petition fee as set forth in § 1.17(m);
(3) Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section; and
(4) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(c) Reply. In an application abandoned under § 1.57(a), the reply must include a copy of the specification and any drawings of the previously filed application. In an application or patent abandoned for failure to pay the issue fee or any portion thereof, the required reply must include payment of the issue fee or any outstanding balance. In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In a nonprovisional utility or plant application filed on or after June 8, 1995, abandoned after the close of prosecution as defined in § 1.114(b), the required reply may also be met by the filing of a request for continued examination in compliance with § 1.114.
(d) Terminal disclaimer.
(1) Any petition to revive pursuant to this section in a design application must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. Any petition to revive pursuant to this section in either a utility or plant application filed before June 8, 1995, must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the lesser of:
(i) The period of abandonment of the application; or
(ii) The period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, 365(c), or 386(c) from the date on which the earliest such application was filed.
(2) Any terminal disclaimer pursuant to paragraph (d)(1) of this section must also apply to any patent granted on a continuing utility or plant application filed before June 8, 1995, or a continuing design application, that contains a specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to the application for which revival is sought.
(3) The provisions of paragraph (d)(1) of this section do not apply to applications for which revival is sought solely for purposes of copendency with a utility or plant application filed on or after June 8, 1995, to reissue applications, or to reexamination proceedings.
(e) Request for reconsideration. Any request for reconsideration or review of a decision refusing to revive an abandoned application, or a terminated or limited reexamination prosecution, upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under:
(1) The provisions of § 1.136 for an abandoned application;
(2) The provisions of § 1.550(c) for a terminated ex parte reexamination prosecution, where the ex parte reexamination was filed under § 1.510; or
(3) The provisions of § 1.956 for a terminated inter partes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the inter partes reexamination was filed under § 1.913.
(f) Abandonment for failure to notify the Office of a foreign filing. A nonprovisional application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the filing of an application in a foreign country or under a multinational treaty that requires publication of applications eighteen months after filing, may be revived pursuant to this section. The reply requirement of paragraph (c) of this section is met by the notification of such filing in a foreign country or under a multinational treaty, but the filing of a petition under this section will not operate to stay any period for reply that may be running against the application.
(g) Provisional applications. A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section. Subject to the provisions of 35 U.S.C. 119(e)(3) and § 1.7(b), a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances.
37 CFR 1.181 Petition to the Director.
(a) Petition may be taken to the Director:
(1) From any action or requirement of any examiner in the ex parte prosecution of an application, or in ex parte or inter partes prosecution of a reexamination proceeding which is not subject to appeal to the Patent Trial and Appeal Board or to the court;
(2) In cases in which a statute or the rules specify that the matter is to be determined directly by or reviewed by the Director; and
(3) To invoke the supervisory authority of the Director in appropriate circumstances. For petitions involving action of the Patent Trial and Appeal Board, see § 41.3 of this title.
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(f) The mere filing of a petition will not stay any period for reply that may be running against the application, nor act as a stay of other proceedings. Any petition under this part not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely, except as otherwise provided. This two-month period is not extendable.
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I. PETITION TO WITHDRAW HOLDING OF ABANDONMENT
A petition to revive an abandoned application (discussed below) should not be confused with a petition from an examiner’s holding of abandonment. Where an applicant contends that the application is not in fact abandoned (e.g., there is disagreement as to the sufficiency of the reply, or as to controlling dates), a petition under 37 CFR 1.181(a) requesting withdrawal of the holding of abandonment is the appropriate course of action, and such petition does not require a fee. Where there is no dispute as to whether an application is abandoned (e.g., the applicant’s contentions merely involve the cause of abandonment), a petition under 37 CFR 1.137 (accompanied by the appropriate petition fee) is necessary to revive the abandoned application.
The procedure available for reviving an application that has become abandoned due to a failure to reply to an Office Action is a petition under 37 CFR 1.137(a) based on unintentional delay.
A. Petition To Withdraw Holding of Abandonment Based on Failure To Receive Office Action
In Delgar v. Schulyer, 172 USPQ 513 (D.D.C. 1971), the court decided that the Office should mail a new Notice of Allowance in view of the evidence presented in support of the contention that the applicant’s representative did not receive the original Notice of Allowance. Under the reasoning of Delgar, an allegation that an Office action was never received may be considered in a petition to withdraw the holding of abandonment. If adequately supported, the Office may grant the petition to withdraw the holding of abandonment and remail the Office action. That is, the reasoning of Delgar is applicable regardless of whether an application is held abandoned for failure to timely pay the issue fee (35 U.S.C. 151) or for failure to prosecute (35 U.S.C. 133).
The showing required to establish nonreceipt of an Office communication must include a statement from the practitioner describing the system used for recording an Office action received at the correspondence address of record with the USPTO.
The statement should establish that the docketing system is sufficiently reliable. It is expected that the record would include, but not be limited to, the application number, attorney docket number, the mail date of the Office action and the due date for the response.
Practitioner must state that the Office action was not received at the correspondence address of record, and that a search of the practitioner’s record(s), including any file jacket or the equivalent, and the application contents, indicates that the Office action was not received. A copy of the record(s) used by the practitioner where the non-received Office action would have been entered had it been received is required.
A copy of the practitioner’s record(s) required to show non-receipt of the Office action should include the master docket for the firm. That is, if a three month period for reply was set in the nonreceived Office action, a copy of the master docket report showing all replies docketed for a date three months from the mail date of the nonreceived Office action must be submitted as documentary proof of nonreceipt of the Office action. If no such master docket exists, the practitioner should so state and provide other evidence such as, but not limited to, the following: the application file jacket; incoming mail log; calendar; reminder system; or the individual docket record for the application in question.
The showing outlined above may not be sufficient if there are circumstances that point to a conclusion that the Office action may have been lost after receipt rather than a conclusion that the Office action was lost in the mail (e.g., if the practitioner has a history of not receiving Office actions).
Evidence of nonreceipt of an Office communication or action (e.g., Notice of Abandonment or an advisory action) other than that action to which reply was required to avoid abandonment would not warrant withdrawal of the holding of abandonment. Abandonment takes place by operation of law for failure to reply to an Office action or timely pay the issue fee, not by operation of the mailing of a Notice of Abandonment. See Lorenz v. Finkl, 333 F.2d 885, 889-90, 142 USPQ 26, 29-30 (CCPA 1964);
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Krahn v. Commissioner, 15 USPQ2d 1823, 1824 (E.D. Va. 1990); In re Application of Fischer, 6 USPQ2d 1573, 1574 (Comm’r Pat. 1988).
B. Petition To Withdraw Holding of Abandonment Based on Evidence That a Reply Was Timely Mailed or Filed
37 CFR 1.10(c) through 1.10(e) and 1.10(g) set forth procedures for petitioning the Director of the USPTO to accord a filing date to correspondence as of the date of deposit of the correspondence as Priority
Mail Express®. A petition to withdraw the holding of abandonment relying upon a timely reply placed
in Priority Mail Express® must include an appropriate petition under 37 CFR 1.10(c), (d), (e), or (g) (see MPEP § 513). When a paper is shown to have been mailed to the Office using the “Express Mail” procedures, the paper must be entered in
PALM with the Priority Mail Express® date.
Similarly, applicants may establish that a reply was filed with a postcard receipt that properly identifies the reply and provides prima facie evidence that the reply was timely filed. See MPEP § 503. For example, if the application has been held abandoned for failure to file a reply to a first Office action, and applicant has a postcard receipt showing that an amendment was timely filed in response to the Office action, then the holding of abandonment should be withdrawn upon the filing of a petition to withdraw the holding of abandonment. When the reply is shown to have been timely filed based on a postcard receipt, the reply must be entered into PALM using the date of receipt of the reply as shown on the post card receipt.
Where a certificate of mailing under 37 CFR 1.8, but not a postcard receipt, is relied upon in a petition to withdraw the holding of abandonment, see 37 CFR 1.8(b) and MPEP § 512. As stated in 37 CFR 1.8(b)(3) the statement that attests to the previous timely mailing or transmission of the correspondence must be on a personal knowledge basis, or to the satisfaction of the Director of the USPTO. If the statement attesting to the previous timely mailing is not made by the person who signed the Certificate of Mailing (i.e., there is no personal knowledge basis), then the statement attesting to the previous
timely mailing should include evidence that supports the conclusion that the correspondence was actually mailed (e.g., copies of a mailing log establishing that correspondence was mailed for that application). When the correspondence is shown to have been timely filed based on a certificate of mailing, the correspondence is entered into PALM with the actual date of receipt (i.e., the date that the duplicate copy of the papers was filed with the statement under 37 CFR 1.8).
37 CFR 1.8(b) also permits applicant to notify the Office of a previous mailing or transmission of correspondence and submit a statement under 37 CFR 1.8(b)(3) accompanied by a duplicate copy of the correspondence when a reasonable amount of time (e.g., more than one month) has elapsed from the time of mailing or transmitting of the correspondence. Applicant does not have to wait until the application becomes abandoned before notifying the Office of the previous mailing or transmission of the correspondence. Applicant should check the private Patent Application Information Retrieval (PAIR) system for the status of the correspondence before notifying the Office. See MPEP § 512.
C. Treatment of Untimely Petition To Withdraw Holding of Abandonment
37 CFR 1.181(f) provides that, inter alia , except as otherwise provided, any petition not filed within 2 months from the action complained of may be dismissed as untimely. Therefore, any petition (under 37 CFR 1.181) to withdraw the holding of abandonment not filed within 2 months of the mail date of a notice of abandonment (the action complained of) may be dismissed as untimely. 37 CFR 1.181(f).
Rather than dismiss an untimely petition to withdraw the holding of abandonment under 37 CFR 1.181(f), the Office may require a terminal disclaimer as a condition of granting an untimely petition to withdraw the holding of abandonment.
Where the record indicates that the applicant intentionally delayed the filing of a petition to withdraw the holding of abandonment, the Office may simply dismiss the petition as untimely (37 CFR
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1.181(f)) solely on the basis of such intentional delay in taking action in the application without further addressing the merits of the petition. Obviously, intentional delay in seeking the revival of an abandoned application precludes relief under 37 CFR 1.137(a) (discussed below).
1. Design Applications, Utility Applications Filed Before June 8, 1995, and Plant Applications Filed Before June 8, 1995
(a) Applicant Receives Notice of Abandonment
In any design application, any utility application filed before June 8, 1995, or any plant application filed before June 8, 1995, if applicant receives a notice of abandonment, any petition to withdraw the holding of abandonment that is not filed within two months of the mail date of the notice of abandonment will not (absent extraordinary circumstances) be treated on its merits unless accompanied by a terminal disclaimer under 37 CFR 1.321(a), and the required fee set forth in 37 CFR 1.20(d). The period to be disclaimed is the terminal part of the term of any patent granted on the application, or of any patent granted on any utility or plant application that claims the benefit of the filing date of the application under 35 U.S.C. 120, 121, or 365(c), equivalent to the period between:
(A) the date that is two months after the mail date of the notice of abandonment; and
(B) the filing date of a grantable petition to withdraw the holding of abandonment.
See MPEP § 711.03(c), subsection II.G.
(b) Applicant Does Not Receive Notice of Abandonment
In any design application, any utility application filed before June 8, 1995, or any plant application filed before June 8, 1995, if applicant never receives the notice of abandonment, any petition to withdraw the holding of abandonment that is not filed within twelve months from the date of applicant’s filing (or date of submission, if the correspondence was never received by the Office) of correspondence with the Office for which further action by the Office can
reasonably be expected, will not (absent extraordinary circumstances) be treated on its merit unless accompanied by a terminal disclaimer under 37 CFR 1.321(a), and the required fee set forth in 37 CFR 1.20(d). The period to be disclaimed is the terminal part of the term of any patent granted thereon, or of any patent granted on any utility or plant application that claims the benefit of the filing date of the application under 35 U.S.C. 120, 121, or 365(c), equivalent to the period between:
(A) the date that is twelve months from the date of applicant’s filing or submission of correspondence with the Office, for which further action by the Office can reasonably be expected; and
(B) the filing date of a grantable petition to withdraw the holding of abandonment.
See MPEP § 711.03(c), subsection II.G.
2. Utility and Plant Applications Filed on or After June 8, 1995 but Before May 29, 2000
In utility and plant applications filed on or after June 8, 1995, but before May 29, 2000, a terminal disclaimer should not be required as a condition of granting an untimely petition to withdraw the holding of abandonment. However, the Office of Patent Legal Administration (OPLA) must be consulted in such situations if the holding of abandonment involves a period during: (A) appellate review by the Patent Trial and Appeal Board; (B) an interference or derivation proceeding under 35 U.S.C. 135, including any suspension due to an interference or derivation proceeding; or (C) which the application was in a sealed condition or prosecution was suspended due to a secrecy order under 35 U.S.C. 181. This is because it is necessary to effect (if appropriate) a reduction of patent term extension under the “due diligence” provisions of 37 CFR 1.701(d)(2).
3. Utility and Plant Applications Filed on or After May 29, 2000
In utility and plant applications filed on or after May 29, 2000, a terminal disclaimer should not be required as a condition of granting an untimely petition to withdraw the holding of abandonment. This is because any patent term adjustment is
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automatically reduced under the provisions of 37 CFR 1.704(c)(4) in applications subject to the patent term adjustment provisions of the American Inventors Protection Act of 1999 (AIPA) if a petition to withdraw a holding of abandonment is not filed within two months from the mailing date of the notice of abandonment, and if applicant does not receive the notice of abandonment, any patent term adjustment is reduced under the provisions of 37 CFR 1.704(a) by a period equal to the period of time during which the applicant “failed to engage in reasonable efforts to conclude prosecution” (processing or examination) of the application.
II. PETITIONS TO REVIVE AN ABANDONED APPLICATION, OR ACCEPT LATE PAYMENT OF ISSUE FEE
Effective December 18, 2013, the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, amended the patent laws to implement the provisions of the Patent Law Treaty (PLT) in title II. Notable changes to the law included the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments. Section 201(b) of the PLTIA specifically added new 35 U.S.C. 27, providing that the Director may establish procedures to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing a patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner. The PLTIA eliminated the provisions of the patent statutes relating to revival of abandoned applications or acceptance of delayed maintenance fee payments on the basis of a showing of “unavoidable” delay.
35 U.S.C. 27 Revival of applications; reinstatement of reexamination proceedings.
The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing each patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner.
37 CFR 1.137 provides for the revival of abandoned applications, or terminated or limited reexamination
prosecution on the basis of unintentional delay for the failure:
(A) to timely reply to an Office requirement in a provisional application;
(B) to timely prosecute in a nonprovisional application;
(C) to timely pay the issue fee for a design application;
(D) to timely pay the issue fee for a utility or plant application; and
(E) to provide copendency between the abandoned application and a subsequently filed application.
A petition under 37 CFR 1.137(a) requires:
(A) the required reply, unless previously filed;
(B) the petition fee as set forth in 37 CFR 1.17(m);
(C) any terminal disclaimer (and fee as set forth in 37 CFR 1.20(d)) required pursuant to 37 CFR 1.137(d); and
(D) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137 was unintentional.
The Director of the USPTO may require additional information where there is a question whether the delay was unintentional.
A. Reply Requirement
Unlike a petition to withdraw the holding of abandonment, a petition to revive under 37 CFR 1.137 must be accompanied by, inter alia, the required reply. Generally, the required reply is the reply sufficient to have avoided abandonment, had such reply been timely filed. A petition for an extension of time under 37 CFR 1.136 and a fee for such an extension of time are not required to be included with the reply.
37 CFR 1.137(c) applies to the reply requirement for a petition under 37 CFR 1.137(a). In an application abandoned under 37 CFR 1.57(a), the reply must include a copy of the specification and
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any drawings of the previously filed application. In an application or patent abandoned for failure to pay the issue fee or any portion thereof, the required reply must include payment of the issue fee or any outstanding balance. In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In a nonprovisional utility or plant application filed on or after June 8, 1995, abandoned after the close of prosecution as defined in 37 CFR 1.114(b), the required reply may also be met by the filing of a request for continued examination (RCE) in compliance with 37 CFR 1.114. See below for more details on the reply requirement in specific situations of abandonment.
1. Abandonment for Failure To Timely Submit A Copy of the Specification and Any Drawings In An Application Filed By Reference Under 35 U.S.C. 111(c) and 37 CFR 1.57(a)
In an application abandoned under 37 CFR 1.57(a), the required reply must include a copy of the specification and any drawings of the previously filed application. Although not required as a condition for revival, a certified copy of the previously filed application may be required for an application filed by reference. If the certified copy is required and is not filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17 are required. For more details regarding an application filed by reference under 35 U.S.C. 111(c) and 37 CFR 1.57(a), see MPEP § 601.01(a), subsection III.
2. Abandonment for Failure To Pay the Issue Fee or Publication Fee
In an application abandoned for failure to timely pay the issue fee, the required reply must include the issue fee (and any required publication fee).
Section 202(b)(6) of the PLTIA amended 35 U.S.C. 151 to provide that: (1) if it appears that an applicant is entitled to a patent under the law, a written notice
of allowance of the application shall be given or mailed to the applicant; (2) the notice of allowance shall specify a sum, constituting the issue fee and any required publication fee, which shall be paid within three months thereafter; and (3) upon payment of this sum, the patent may issue, but if payment is not timely made, the application shall be regarded as abandoned. Under the changes to 35 U.S.C. 151 in the PLTIA, the sum specified in the notice of allowance will constitute the issue fee and any required publication fee, and the Office will proceed to issue a patent when the applicant pays the sum specified in the notice of allowance, regardless of the issue fee and/or publication fee in effect on the date the sum specified in the notice of allowance is paid.
Section 201(b) of the PLTIA specifically added new 35 U.S.C. 27, providing that the Director may establish procedures to revive an unintentionally abandoned application for a patent, accept an unintentionally delayed payment of the fee for issuing a patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner.
35 U.S.C. 41(a)(7) authorizes the acceptance of an “unintentionally delayed payment of the fee for issuing each patent.” Thus, 35 U.S.C. 41(a)(7) requires payment of the issue fee as a condition of reviving an application abandoned for failure to pay the issue fee. Therefore, the filing of a continuing application without payment of the issue fee is not an acceptable reply in an application abandoned for failure to pay the issue fee.
The issue fee due with the petition to revive is the issue fee specified in the notice of allowance. If the notice of allowance also specified a publication fee, then the publication fee must also be paid in the amount specified on the notice of allowance. An applicant may change the entity status with the filing of the petition to revive, if appropriate, and pay the petition fee in the new entity status amount, but the issue fee (and any publication fee) must be paid in the amount specified in the notice of allowance.
In an application abandoned for failure to pay the publication fee, the required reply must include
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payment of the publication fee. Even if an application abandoned for failure to pay the publication fee is being revived solely for purposes of continuity with a continuing application, the petition to revive under 37 CFR 1.137 must include payment of the publication fee.
3. Abandonment for Failure To Provide Required Drawings
In an application abandoned for failure to provide required drawings, a petition to revive the application will be dismissed unless the required drawings are filed before or with the petition to revive the application.
4. Abandonment for Failure To Reply in a Nonprovisional Application
(a) Abandonment for Failure To Reply to a Non-Final Action
The required reply to a non-final action in a nonprovisional application abandoned for failure to prosecute may be either:
(A) an argument or an amendment under 37 CFR 1.111;
(B) the filing of a continuing application under 37 CFR 1.53(b) (or a continued prosecution application (CPA) under 37 CFR 1.53(d) if the application is a design application).
The grant of a petition under 37 CFR 1.137 is not a determination that any reply under 37 CFR 1.111 is complete. Where the proposed reply is to a non-final Office action, the petition may be granted if the reply appears to be bona fide . After revival of the application, the patent examiner may, upon more detailed review, determine that the reply is lacking in some respect. In this limited situation, the patent examiner should send out a letter giving a 2-month shortened statutory period under 37 CFR 1.135(c) for correction of the error or omission. Extensions of time under 37 CFR 1.136(a) are permitted. If applicant does not correct the omission within the time period set in the letter (including any extension), the application is again abandoned.
(b) Abandonment for Failure To Reply to a Final Action
A reply under 37 CFR 1.113 to a final action must include a request for continued examination (RCE) under 37 CFR 1.114 or cancellation of, or appeal from the rejection of, each claim so rejected. Accordingly, in a nonprovisional application abandoned for failure to reply to a final action, the reply required for consideration of a petition to revive must be:
(A) a Notice of Appeal and appeal fee;
(B) an amendment under 37 CFR 1.116 that cancels all the rejected claims or otherwise prima facie places the application in condition for allowance;
(C) the filing of an RCE (accompanied by a submission that meets the reply requirements of 37 CFR 1.111 and the requisite fee) under 37 CFR 1.114 for utility or plant applications filed on or after June 8, 1995 (see paragraph (d) below); or
(D) the filing of a continuing application under 37 CFR 1.53(b) (or a CPA under 37 CFR 1.53(d) if the application is a design application).
When a notice of appeal is the reply filed pursuant to 37 CFR 1.137(b)(1), the time period under 37 CFR 41.37 for filing the appeal brief will be set by the Director of the USPTO in the decision granting the petition.
An application subject to a final action in which a proposed amendment under 37 CFR 1.116 is filed as the required reply will normally be routed by the Office of Petitions to the Technology Center (TC) to determine whether a proposed amendment places the application in condition for allowance prior to granting any petition to revive such application. The examiner is instructed that if the reply places the application in condition for allowance, the examiner should use the typewriter tool in Adobe Acrobat to write in the margin of the reply “OK to enter upon revival.” If the petition is otherwise grantable and the examiner indicates that the reply places the application in condition for allowance, the petition will be granted. If, on the other hand, the reply would not place the application in condition for allowance, the examiner is instructed to complete form PTOL-303 and return the form to the Office of
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Petitions with the application. Form PTOL-303 should not be mailed to the applicant by the examiner. In this situation, the Office of Petitions will not grant the petition. A copy of the form PTOL-303 is marked with the notation “Courtesy Copy” by the Office of Petitions. The courtesy copy is sent as an attachment with the decision on the petition. The advisory form PTOL-303 merely serves as an advisory notice to the Office of Petitions regarding the decision of the examiner on the amendment after final rejection.
(c) Abandonment for Failure To File an Appeal Brief
In those situations where abandonment occurred because of the failure to file an appeal brief, the reply required pursuant to 37 CFR 1.137(b)(1) must be either:
(A) an appeal brief in compliance with 37 CFR 41.37(c);
(B) the filing of an RCE accompanied by a submission and the requisite fee in compliance with 37 CFR 1.114 for utility or plant applications filed on or after June 8, 1995, abandoned after the close of prosecution as defined in 37 CFR 1.114(b) (see paragraph (d) below); or
(C) the filing of a continuing application under 37 CFR 1.53(b) (or a CPA under 37 CFR 1.53(d) if the application is a design application).
(d) Filing an RCE as the Required Reply
For utility or plant applications abandoned for failure to reply to a final Office action or for failure to file an appeal brief, the required reply may be the filing of an RCE accompanied by a submission and the requisite fee. When an RCE is the reply filed pursuant to 37 CFR 1.137(b)(1) to revive such an application, the submission accompanying the RCE must be a reply responsive within the meaning of 37 CFR 1.111 to the last Office action. Consideration of whether the submission is responsive within the meaning of 37 CFR 1.111 to the last Office action is done without factoring in the “final” status of such action. The submission may be a previously filed amendment after final or a statement that incorporates by reference the arguments in a previously filed appeal or reply brief. See MPEP § 706.07(h), subsection II.
The petition may be granted if the submission appears to be a bona fide attempt to provide a complete reply to the last Office action. After revival of the application, the examiner may, upon a more detailed review, determine that the reply is lacking in some respect. In this limited situation, the examiner should send out a letter giving a 2-month shortened statutory period under 37 CFR 1.135(c) for correction of the error or omission. Extensions of time under 37 CFR 1.136(a) are permitted. If the applicant does not correct the omission within the time period set in the letter (including any extension), the application is again abandoned.
(e) A Continuing Application or RCE May Be Required by the Office
The Office may require the filing of a continuing application or an RCE (if the prosecution prior to abandonment was closed) (or request for further examination pursuant to 37 CFR 1.129(a)) to meet the reply requirement of 37 CFR 1.137(b)(1) where, under the circumstances of the application, treating a reply under 37 CFR 1.111 or 1.113 would place an inordinate burden on the Office. Exemplary circumstances of when treating a reply under 37 CFR 1.111 or 1.113 may place an inordinate burden on the Office are where:
(A) an application has been abandoned for an inordinate period of time;
(B) an application file contains multiple or conflicting replies to the last Office action; or
(C) the reply or replies submitted under 37 CFR 1.137(b)(1)) are questionable as to compliance with 37 CFR 1.111 or 1.113.
5. Abandonment for Failure To Notify the Office of a Foreign Filing After the Submission of a Non-Publication Request
If an applicant makes a nonpublication request upon filing with the appropriate certifications, the utility or plant application filed on or after November 29, 2000 will not be published under 35 U.S.C. 122(b)(1). See 35 U.S.C. 122(b)(2)(B)(i). If an applicant makes a nonpublication request and then rescinds, pursuant to 35 U.S.C. 122(b)(2)(B)(ii), the nonpublication request before or on the date a counterpart application is filed in a foreign country,
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or under a multilateral international agreement, that requires eighteen-month publication, the nonpublication request will be treated as annulled and the application will be treated as if the nonpublication request were never made. See MPEP §§ 1123 and 1124. An applicant who has made a nonpublication request, but who subsequently files an application directed to the invention disclosed in the U.S. application in a foreign country, or under a multilateral international agreement, that requires eighteen-month publication before the nonpublication request is rescinded, must, in addition to the rescission, notify the Office of such filing within forty-five days after the date of such filing. The requirement in 35 U.S.C. 122(b)(2)(B)(iii) for notice of the foreign filing is in addition to any rescission of the nonpublication request under 35 U.S.C. 122(b)(2)(B)(ii). If an applicant files a counterpart application in a foreign country after having filed an application in the USPTO with a nonpublication request, filing a rescission of the nonpublication request under 35 U.S.C. 122(b)(2)(B)(ii) without also providing a notice of the foreign filing in a timely manner will result in the abandonment of the U.S. application under 35 U.S.C. 122(b)(2)(B)(iii). 37 CFR 1.137(f), however, provides that an application abandoned as a result of the failure to timely provide such a notice to the Office is subject to revival pursuant to 37 CFR 1.137 if the delay in submitting the notice was unintentional.
A nonprovisional application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the filing of an application in a foreign country or under a multinational treaty that requires eighteen-month publication may be revived only on the basis of unintentional delay pursuant to 37 CFR 1.137. The reply requirement of 37 CFR 1.137(c) is met by the notification of such filing in a foreign country or under a multinational treaty, but the filing of a petition under 37 CFR 1.137 will not operate to stay any period for reply that may be running against the application. Since the Office cannot ascertain whether an application is abandoned under 35 U.S.C. 122(b)(2)(B)(iii), the Office may continue to process and examine the application until the Office is notified of applicant’s failure to meet the forty-five days notice requirement of 35 U.S.C. 122(b)(2)(B)(iii). Therefore, the filing of a petition
under 37 CFR 1.137 to revive such an application will not operate to stay any period for reply that may be running against the application. Applicants may use form PTO/SB/64a to file a petition for revival under 37 CFR 1.137.
B. Petition Fee Requirement
35 U.S.C. 41(a)(7) provides that the Office shall charge $1,700.00 on filing each petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining a patent in force, for the delayed submission of a priority or benefit claim, or for the extension of the 12-month period for filing a subsequent application. 35 U.S.C. 41(a)(7) also provides that the Director may refund any part of the fee, in exceptional circumstances as determined by the Director. This provision permits the Office to refund (or waive) the fee specified in 35 U.S.C. 41(a)(7) in situations in which the failure to take the required action or pay the required fee was due to a widespread disaster, such as a hurricane, earthquake, or flood, in the manner that the Office would waive surcharges that are not required by statute. The “exceptional circumstances” provision does not permit applicants to request a refund on the basis of there being exceptional circumstances.
The phrase “[o]n filing” in 35 U.S.C. 41(a)(7) means that the petition fee is required for the filing (and not merely the grant) of a petition under 37 CFR 1.137. See H.R. Rep. No. 542, 97th Cong., 2d Sess. 6 (1982), reprinted in 1982 U.S.C.C.A.N. 770 (“[t]he fees set forth in this section are due on filing the petition”). Therefore, the Office: (A) will not refund the petition fee required by 37 CFR 1.17(m), regardless of whether the petition under 37 CFR 1.137 is dismissed or denied (unless there are exceptional circumstances as determined by the Director); and (B) will not reach the merits of any petition under 37 CFR 1.137 lacking the requisite petition fee.
C. Unintentional Delay
While the Office reserves the authority to require further information concerning the cause of
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abandonment and delay in filing a petition to revive, the Office relies upon the applicant’s duty of candor and good faith and accepts the statement that “the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(a) was unintentional” without requiring further information in the vast majority of petitions under 37 CFR 1.137(a). This is because the applicant is obligated under 37 CFR 11.18 to inquire into the underlying facts and circumstances when a practitioner provides this statement to the Office. In addition, providing an inappropriate statement in a petition under 37 CFR 1.137(a) to revive an abandoned application may have an adverse effect when attempting to enforce any patent resulting from the application. See Lumenyte Int’l Corp. v. Cable Lite Corp., Nos. 96-1011, 96-1077, 1996 U.S. App. LEXIS 16400, 1996 WL 383927 (Fed. Cir. July 9, 1996)(unpublished)(patents held unenforceable due to a finding of inequitable conduct in submitting an inappropriate statement that the abandonment was unintentional).
The Office is almost always satisfied as to whether “the entire delay…was unintentional” on the basis of statement(s) by the applicant or representative explaining the cause of the delay (accompanied at most by copies of correspondence relevant to the period of delay).
The legislative history of Public Law 97-247, § 3, 96 Stat. 317 (1982), reveals that the purpose of 35 U.S.C. 41(a)(7) is to permit the Office to have discretion to revive abandoned applications in appropriate circumstances, but places a limit on this discretion stating that “[u]nder this section a petition accompanied by [the requisite fee] would not be granted where the abandonment or the failure to pay the fee for issuing the patent was intentional as opposed to being unintentional or unavoidable.” H.R. Rep. No. 542, 97th Cong., 2d Sess. 6-7 (1982), reprinted in 1982 U.S.C.C.A.N. 770-71. A delay resulting from a deliberately chosen course of action on the part of the applicant is not an “unintentional” delay within the meaning of 37 CFR 1.137.
Where the applicant deliberately permits an application to become abandoned (e.g., due to a conclusion that the claims are unpatentable, that a
rejection in an Office action cannot be overcome, or that the invention lacks sufficient commercial value to justify continued prosecution), the abandonment of such application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as “unintentional” within the meaning of 37 CFR 1.137. See In re Application of G, 11 USPQ2d 1378, 1380 (Comm’r Pat. 1989). An intentional course of action is not rendered unintentional when, upon reconsideration, the applicant changes his or her mind as to the course of action that should have been taken. See In re Maldague, 10 USPQ2d 1477, 1478 (Comm’r Pat. 1988).
A delay resulting from a deliberately chosen course of action on the part of the applicant does not become an “unintentional” delay within the meaning of 37 CFR 1.137 because:
(A) the applicant does not consider the claims to be patentable over the references relied upon in an outstanding Office action;
(B) the applicant does not consider the allowed or patentable claims to be of sufficient breadth or scope to justify the financial expense of obtaining a patent;
(C) the applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining the patent;
(D) the applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining the patent; or
(E) the applicant remains interested in eventually obtaining a patent, but simply seeks to defer patent fees and patent prosecution expenses.
Likewise, a change in circumstances that occurred subsequent to the abandonment of an application does not render “unintentional” the delay resulting from a previous deliberate decision to permit an application to be abandoned. These matters simply confuse the question of whether there was a deliberate decision not to continue the prosecution of an application with why there was a deliberate decision not to continue the prosecution of an application.
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In order to expedite treatment, applicants filing a petition under 37 CFR 1.137 to revive an abandoned application are advised to include the statement “the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(a) was unintentional,” even if applicant chooses to include a statement of the facts concerning the delay. Electronic petitions, that are automatically processed and immediately decided, may be filed using the Web-based ePetition process for the following types of petitions: (1) Petitions to Accept Late Payment of Issue Fee - Unintentional Late Payment (37 CFR 1.137(a)); (2) Petitions for Revival of an Application based on Failure to Notify the Office of a Foreign
or International Filing (37 CFR 1.137(f)); (3) Petitions for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(a)); and (4) Petitions for Revival of an Abandoned Patent Application Abandoned Unintentionally (37 CFR 1.137(a)) (For Cases Abandoned After 1st Action and Prior to Notice of Allowance). Applicants may use the forms provided by the Office (PTO/SB/64, PTO/SB/64a, or PTO/SB/64PCT). Additional information regarding the ePetition process is available from: www.uspto.gov/patents-application-process/applying-online/ epetition-resource-page.
Applicants may use the forms provided by the Office (PTO/SB/64, PTO/SB/64a, or PTO/SB/64PCT).
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D. Delay Until the Filing of a Grantable Petition
There are three periods to be considered during the evaluation of a petition under 37 CFR 1.137:
(A) the delay in reply that originally resulted in the abandonment;
(B) the delay in filing an initial petition pursuant to 37 CFR 1.137 to revive the application; and
(C) the delay in filing a grantable petition pursuant to 37 CFR 1.137 to revive the application.
As discussed above, the abandonment of an application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as “unintentional” within the meaning of 37 CFR 1.137, where the applicant deliberately permits the application to become abandoned. See Application of G, 11 USPQ2d at 1380. Likewise, where the applicant deliberately chooses not to seek or persist in seeking the revival of an abandoned application, or where the applicant deliberately chooses to delay seeking the revival of an abandoned application, the resulting delay in seeking revival of the abandoned application cannot be considered as “unintentional” within the meaning of 37 CFR 1.137. An intentional delay resulting from a deliberate course of action chosen by the applicant is not affected by:
(A) the correctness of the applicant’s (or applicant’s representative’s) decision to abandon the application or not to seek or persist in seeking revival of the application;
(B) the correctness or propriety of a rejection, or other objection, requirement, or decision by the Office; or
(C) the discovery of new information or evidence, or other change in circumstances subsequent to the abandonment or decision not to seek or persist in seeking revival.
Obviously, delaying the revival of an abandoned application, by a deliberately chosen course of action, until the industry or a competitor shows an interest in the invention is the antithesis of an “unintentional” delay. An intentional abandonment of an application, or an intentional delay in seeking the revival of an abandoned application, precludes a finding of unavoidable or unintentional delay
pursuant to 37 CFR 1.137. See Maldague, 10 USPQ2d at 1478.
The Office does not generally question whether there has been an intentional or otherwise impermissible delay in filing an initial petition pursuant to 37 CFR 1.137, when such petition is filed: (A) within 3 months of the date the applicant is first notified that the application is abandoned; and (B) within 1 year of the date of abandonment of the application. Thus, an applicant seeking revival of an abandoned application is advised to file a petition pursuant to 37 CFR 1.137 within 3 months of the first notification that the application is abandoned to avoid the question of intentional delay being raised by the Office (or by third parties seeking to challenge any patent issuing from the application).
Where a petition pursuant to 37 CFR 1.137 is not filed within 3 months of the date the applicant is first notified that the application is abandoned, the Office may consider there to be a question as to whether the delay was unintentional. In such instances the Office may require further information as to the cause of the delay between the date the applicant was first notified that the application was abandoned and the date a 37 CFR 1.137 petition was filed, and how such delay was “unintentional.”
To avoid delay in the consideration of the merits of a petition under 37 CFR 1.137 in instances in which such petition was not filed within 3 months of the date the applicant was first notified that the application was abandoned, applicants should include a showing as to how the delay between the date the applicant was first notified by the Office that the application was abandoned and the filing of a petition under 37 CFR 1.137 was “unintentional.”
Where a petition pursuant to 37 CFR 1.137 is not filed within 1 year of the date of abandonment of the application (note that abandonment takes place by operation of law, rather than by the mailing of a Notice of Abandonment), the Office may require:
(A) further information as to when the applicant (or the applicant’s representative) first became aware of the abandonment of the application; and
(B) a showing as to how the delay in discovering the abandoned status of the application occurred
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despite the exercise of due care or diligence on the part of the applicant (or applicant’s representative).
To avoid delay in the consideration of the merits of a petition under 37 CFR 1.137 in instances in which such petition was not filed within 1 year of the date of abandonment of the application, applicants should include:
(A) the date that the applicant first became aware of the abandonment of the application; and
(B) a showing as to how the delay in discovering the abandoned status of the application occurred despite the exercise of due care or diligence on the part of the applicant.
Applicant’s failure to carry the burden of proof to establish that the “entire” delay was “unintentional” may lead to the denial of a petition under 37 CFR 1.137, regardless of the circumstances that originally resulted in the abandonment of the application.
E. Party Whose Delay Is Relevant
The question under 37 CFR 1.137 is whether the delay on the part of the party having the right or authority to reply to avoid abandonment (or not reply) was unintentional. When the applicant assigns the entire right, title, and interest in an invention to a third party (and thus does not retain any legal or equitable interest in the invention), the applicant’s delay is irrelevant in evaluating whether the delay was unintentional. See Kim v. Quigg, 718 F. Supp. 1280, 1284, 12 USPQ2d 1604, 1607-08 (E.D. Va. 1989). When an applicant assigns the application to a third party (e.g., the inventor/applicant’s employer), and the third party decides not to file a reply to avoid abandonment, the applicant’s actions, inactions or intentions are irrelevant under 37 CFR 1.137, unless the third party has reassigned the application to the applicant prior to the due date for the reply. Id.
Likewise, where the applicant permits a third party (whether a partial assignee, licensee, or other party) to control the prosecution of an application, the third party’s decision whether or not to file a reply to avoid abandonment is binding on the applicant. See Winkler, 221 F. Supp. at 552, 138 USPQ at 667.
Where an applicant enters an agreement with a third party for the third party to take control of the
prosecution of an application, the applicant will be considered to have given the third party the right and authority to prosecute the application to avoid abandonment (or not prosecute), unless, by the express terms of the contract between applicant and the third party, the third party is conducting the prosecution of the application for the applicant solely in a fiduciary capacity. See Futures Technology Ltd. v. Quigg, 684 F. Supp. 430, 431, 7 USPQ2d 1588, 1589 (E.D. Va. 1988). Otherwise, the applicant will be considered to have given the third party unbridled discretion to prosecute (or not prosecute) the application to avoid abandonment, and will be bound by the actions or inactions of such third party.
F. Burden of Proof To Establish Unintentional Delay
37 CFR 1.137(b)(4) requires that a petition under 37 CFR 1.137 must be accompanied by a statement that the entire delay in providing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137 was unintentional, but also provides that “[t]he Director may require additional information where there is a question whether the delay was unintentional.” While the Office will generally require only the statement that the entire delay in providing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137 was unintentional, the Office may require an applicant to carry the burden of proof to establish that the delay from the due date for the reply until the filing of a grantable petition was unintentional within the meaning of 35 U.S.C. 27 and 37 CFR 1.137 where there is a question whether the entire delay was unintentional. See Application of G, 11 USPQ2d at 1380.
G. Terminal Disclaimer Requirement
37 CFR 1.137(d) requires that a petition under 37 CFR 1.137 be accompanied by a terminal disclaimer (and fee), regardless of the period of abandonment, in:
(A) a design application;
(B) a nonprovisional utility application (other than a reissue application) filed before June 8, 1995; or
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(C) a nonprovisional plant application (other than a reissue application) filed before June 8, 1995.
In addition, a terminal disclaimer (and fee) is also required for a utility or plant application filed on or after June 8, 1995, but before May 29, 2000, where the application became abandoned (1) during appeal, (2) during interference, or (3) while under a secrecy order. The reason being that utility and plant patents issuing on applications filed on or after June 8, 1995, but before May 29, 2000, are eligible for the patent term extension under former 35 U.S.C. 154(b) (as a result of the Uruguay Round Agreements Act (URAA)). See 35 U.S.C. 154(b) (1999); see also 37 CFR 1.701. If such an application is abandoned (1) during appeal, (2) during interference, or (3) while under a secrecy order, the patentee of a patent issuing from such an application is eligible for patent term extension for the entire period of abandonment. The requirement for a terminal disclaimer for these situations will make certain that any patent term extension obtained for the period of abandonment while the application is under appeal, interference, or a secrecy order will be dedicated to the public. For utility and plant applications filed on or after May 29, 2000, a terminal disclaimer (and fee) is not required since the period of abandonment is reduced from the patent term adjustment pursuant to 37 CFR 1.704.
The terminal disclaimer submitted in a design application must dedicate to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. The terminal disclaimer submitted in either a utility or plant application filed before June 8, 1995 must dedicate to the public a terminal part of the term of any patent granted thereon equivalent to the lesser of: (1) the period of abandonment of the application; or (2) the period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on which the earliest such application was filed. The terminal disclaimer must also apply to any patent granted on any continuing utility or plant application filed before June 8, 1995, or any continuing design application, entitled under 35 U.S.C. 120, 121, or 365(c) to the benefit of the filing date of the application for which revival is
sought. The terminal disclaimer requirement of 37 CFR 1.137(d) does not apply to (A) applications for which revival is sought solely for purposes of copendency with a utility or plant application filed on or after June 8, 1995, (B) reissue applications, or (C) reexamination proceedings.
The Office cannot determine (at the time a petition to revive is granted) the period disclaimed (i.e., which period is lesser: the period of abandonment of the application, or the period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on which the earliest such application was filed). Therefore, the Office will not indicate the period disclaimed under 37 CFR 1.137(d) in its decision granting a petition to revive an abandoned application.
The filing of a terminal disclaimer is not a substitute for unintentional delay. See Application of Takao, 17 USPQ2d at 1159. The requirement that the entire delay have been unintentional (37 CFR 1.137) is distinct from the requirement for a terminal disclaimer. Therefore, the filing of a terminal disclaimer cannot excuse an intentional delay in filing a petition or renewed petition to revive an abandoned application. Likewise, an unintentional delay in filing a petition or renewed petition to revive an abandoned application will not warrant waiver of the terminal disclaimer requirement of 37 CFR 1.137(d).
In the event that an applicant considers the requirement for a terminal disclaimer to be inappropriate under the circumstances of the application at issue, the applicant should file a petition under 37 CFR 1.183 (and petition fee) to request a waiver of this requirement of 37 CFR 1.183. Such a petition may request waiver of this requirement in toto, or to the extent that such requirement exceeds the period considered by applicant as the appropriate period of disclaimer. The grant of such a petition, however, is strictly limited to situations wherein applicant has made a showing of an “extraordinary situation” in which “justice requires” the requested relief. An example of such a situation is when the abandonment of the
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application caused no actual delay in prosecution (e.g., an application awaiting decision by the Board of Appeals and Interferences during period of abandonment).
See MPEP § 1490 for additional information pertaining to terminal disclaimers.
H. Request for Reconsideration
37 CFR 1.137(e) requires that any request for reconsideration or review of a decision refusing to revive an abandoned application must be filed within 2 months of the decision refusing to revive or within such time as set in the decision. 37 CFR 1.137(e) further provides that, unless a decision indicates otherwise, this time period for requesting reconsideration or review may be extended under the provisions of 37 CFR 1.136.
37 CFR 1.137(e) specifies a time period within which a renewed petition pursuant to 37 CFR 1.137 must be filed to be considered timely. Where an applicant files a renewed petition, request for reconsideration, or other petition seeking review of a prior decision on a petition pursuant to 37 CFR 1.137 outside the time period specified in 37 CFR 1.137(e), the Office may require, inter alia , a specific showing as to how the entire delay was “unintentional.” As discussed above, a delay resulting from the applicant deliberately choosing not to persist in seeking the revival of an abandoned application cannot be considered “unintentional” within the meaning of 37 CFR 1.137, and the correctness or propriety of the decision on the prior petition pursuant to 37 CFR 1.137, the correctness of the applicant’s (or the applicant’s representative’s) decision not to persist in seeking revival, the discovery of new information or evidence, or other change in circumstances subsequent to the abandonment or decision to not persist in seeking revival are immaterial to such intentional delay caused by the deliberate course of action chosen by the applicant.
I. Provisional Applications
37 CFR 1.137 is applicable to a provisional application abandoned for failure to reply to an Office requirement. A petition under 37 CFR
1.137(a) must be accompanied by any outstanding reply to an Office requirement, since 37 CFR 1.137(c) permits the filing of a continuing application in lieu of the required reply only in a nonprovisional application.
35 U.S.C. 111(b)(5) provides that a provisional application shall be regarded as abandoned 12 months after its filing date and shall not be subject to revival after such 12-month period. 37 CFR 1.137(g) provides that a provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to 37 CFR 1.137, however a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances. Note that the pendency of a provisional application is extended to the next succeeding secular or business day if the day that is twelve months after the filing date of the provisional application falls on a Saturday, Sunday, or federal holiday within the District of Columbia. See 35 U.S.C. 119(e)(3).
A provisional application may be abandoned prior to 12 months from its filing date for failure to reply to an Office requirement (e.g., failure to submit the filing fee and/or cover sheet). Applicant may petition to have an abandoned provisional application revived as a pending provisional application for a period of no longer than 12 months from the filing date of the provisional application where the delay was unintentional. It would be permissible to file a petition for revival later than 12 months from the filing date of the provisional application but only to revive the application for the 12-month period following the filing of the provisional application. Thus, even if the petition were granted to establish the pendency up to the end of the 12-month period, the provisional application would not be considered pending after 12 months from its filing date.
711.03(d) Examiner’s Statement on Petition To Set Aside Examiner’s Holding [R-08.2012]
37 CFR 1.181 states that the examiner “may be directed by the Director to furnish a written statement, within a specific time, setting forth the reasons for his or her decision upon the matters averred in the petition, supplying a copy to the petitioner.” Unless requested, however, such a
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statement should not be prepared. See MPEP § 1002.01.
711.04 Public Access to Abandoned Applications [R-08.2012]
Access will be provided to the application file itself for any non-Image File Wrapper (IFW) abandoned published application. When access to the IFW system is available in the File Information Unit (FIU) and/or Internet access to abandoned published IFW applications, such files will be provided to the public via the FIU and/or Internet. Since there is no paper file wrapper for IFW applications, if electronic access is not available to the public, then access to IFW files is only available by ordering a copy of the application-as-filed, the file contents of the published application or a specific document in the file of the published application from the Office of Public Records and payment of the appropriate fee set forth in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(ii).
Access to an abandoned unpublished application may be provided to any person if a written request for access is submitted, and the abandoned application is identified or relied upon:
(A) in a U.S. patent application publication or patent;
(B) in statutory invention registration; or
(C) in an international application that is published in accordance with PCT Article 21(2).
An application is considered identified in a document such as a patent when the application number or serial number and filing date, first named inventor, title and filing date or other application specific information are provided in the text of the patent, but not when the identification is made in a paper in the file contents of the patent and is not included in the printed patent. See 37 CFR 1.14(a)(1)(iv). A copy of the application-as-filed, the file contents of the abandoned application, or a specific document in the file of the abandoned application may also be provided to any person upon written request, and payment of the fee set forth in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(iv). See also MPEP § 103. Form
PTO/SB/68 may be used to request access of an abandoned application under 37 CFR 1.14(a)(1)(iv).
711.04(a) Date of Abandonment [R-11.2013]
Applications are not ordinarily reviewed for possible abandonment until the maximum permissible period for which an extension of time under 37 CFR 1.136(a) plus 1 month has expired.
The applications should be carefully scrutinized by the appropriate examiner to verify that they are actually abandoned. A check should be made of files containing a decision of the Patent Trial and Appeal Board for the presence of allowed claims to avoid erroneously treating the proceedings as terminated (see MPEP § 1214.06, subsections II-IV for proper treatment of any claims that stand allowed).
If the application is abandoned, the date of the abandonment is after midnight of the date on which the set shortened statutory period, including any extensions under 37 CFR 1.136, expired. This is normally the end of the 3-month shortened statutory period.
711.04(b) Ordering of Patented and Abandoned Files [R-11.2013]
In examination of an application it is sometimes necessary to inspect the application papers of a previously patented or abandoned application. It is always necessary to do so in the examination of a reissue application.
Recently patented and abandoned paper files are stored at the Files Repository. Older files are housed in warehouses located off site. Image File Wrapper (IFW) applications are stored electronically and do not have a paper file wrapper to be stored other than certain artifact material. The electronic file is the official record of the application.
Patented and abandoned paper files or artifact folders are ordered by means of a PALM transaction. To place such an order, the examiner is required to input his/her PALM location code, employee number, and patent number(s) and/or application number(s) of the file(s) that are needed. After transmission of the
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requested transaction by the examiner, a “response” screen informs him/her of the status of the request for each file. The examiner is informed that the request is:
(A) accepted;
(B) accepted, but for which the file is stored at a warehouse off site (in which case delivery time is increased);
(C) not accepted because the file is not located at the repository or warehouse;
(D) not accepted because a previous request for the file has not yet been filled; or
(E) not accepted because the patent or application number inputted is not valid.
Personnel at the Files Repository regularly perform a PALM print transaction which produces a list of all accepted requests in patent number order and, for requests for abandoned files, in application number order. The printed record of each request is detached from the list when its associated file is found and then stapled to it. Periodic deliveries of files are made to the offices of their requestors by Files Repository personnel, and files that are ready to be returned to the repository are picked up. For applications stored in IFW, this process is not necessary.
With the exception of certain older files, the drawings of patented and abandoned files, if any, are now stored within their respective application file wrappers. Since it is desired not to separate one from the other, both the file and its drawings are delivered when a file is ordered.
711.04(c) Notifying Applicants of Abandonment [R-07.2015]
The Patent Examining Corps currently mails to the correspondence address of record, a Notice of Abandonment form PTOL-1432 in all applications which become abandoned for failure to prosecute. However, in no case will mere failure to receive a notice of abandonment affect the status of an abandoned application.
This procedure should enable applicants to take appropriate and diligent action to reinstate an
application inadvertently abandoned for failure to timely reply to an official communication. In most cases, a petition to revive under 37 CFR 1.137 will be the appropriate remedy. It may be that a reply to the Office action was mailed to the Office with a certificate of mailing declaration as a part thereof (MPEP § 512) but was not received in the Office. In this instance, adequate relief may be available by means of a petition to withdraw the holding of abandonment. See MPEP § 711.03(c).
In any instance, if action is not taken promptly after receiving the notice of abandonment, appropriate relief may not be granted. If a lack of diligent action is predicated on the contention that neither the Office action nor the notice of abandonment was received, one may presume that there is a problem with the correspondence address of record. Accordingly, attention is directed to MPEP §§ 403 and MPEP § 601.03(a) and (b) dealing with changes of address. In essence, it is imperative that a paper notifying the Office of a change of address be filed promptly in each application in which the correspondence address is to be changed (except as provided for under Customer Number practice — see MPEP § 403).
711.05 Letter of Abandonment Received After Application Is Allowed [R-08.2012]
Receipt of a letter of abandonment while an application is allowed is acknowledged by the Publishing Division.
An express abandonment arriving after the issue fee has been paid will not be accepted without a showing of one of the reasons indicated in 37 CFR 1.313(c), or else a showing under 37 CFR 1.183 justifying suspension of 37 CFR 1.313. See also MPEP § 711.01.
711.06 Abstracts, Abbreviatures, and Defensive Publications [R-08.2012]
I. ABSTRACTS
Abstracts were prepared and published in accordance with the Notice of January 25, 1949, 619 OG 258. Each abstract includes a summary of the disclosure
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of the abandoned application, and in applications having drawings, a figure of the drawing. The publication of such abstracts was discontinued in 1953.
II. ABBREVIATURES
Abbreviatures were prepared and published in accordance with the procedure indicated in the Notice of October 13, 1964, 808 OG 1. Each abbreviature contains a specific portion of the disclosure of the abandoned application, preferably a detailed representative claim, and, in applications having drawings, a figure of the drawing. The publication of such abbreviatures was discontinued in 1965.
III. DEFENSIVE PUBLICATIONS
The Defensive Publication Program, which provided for the publication of the abstract of the technical disclosure of a pending application if the applicant waived his or her rights to an enforceable patent, was available between April 1968 and May 8, 1985. The program was ended in view of the applicant’s ability to obtain a Statutory Invention Registration.
An application was laid open for public inspection under the Defensive Publication Program and the applicant provisionally abandoned the application, retaining rights to an interference for a limited period of 5 years from the earliest effective U.S. filing date.
The Defensive Publication Abstract and a selected figure of the drawing, if any, were published in the
Official Gazette. Defensive Publication Search Copies, containing the defensive publication abstract and suitable drawings, if any, were provided for the application file, the Patent Search Room and the examiner’s search files. A defensive publication is not a patent or an application publication under 35 U.S.C. 122(b); it is a publication. Therefore, it is prior art only as of its publication date. See MPEP § 2136.
The defensive publication application files are accessible by request to the File Information Unit (Record Room).
Defensive Publication Number
Distinct numbers are assigned to all Defensive Publications published December 16, 1969 through October 1980, for example.
For Defensive Publications published on and after November 4, 1980, a different numbering system is used.
The revised numbering system is as follows:
Defensive Publications are included in subclass lists and subscription orders. The distinct numbers are used for all official reference and document copy requirements.
A conversion table from the application serial number to the distinct number for all Defensive Publications published before December 16, 1969 appears at 869 OG 687.
711.06(a) Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References [R-11.2013]
It is important that abstracts, abbreviatures, and defensive publications (OG Defensive Publication and Defensive Publication Search Copy) be referred to as publications.
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These printed publications are cited as prior art under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) or 102(b) effective from the date of publication in the Official Gazette. See Ex parte Osmond, 191 USPQ 334 (Bd. App. 1973) and Ex Parte Osmond, 191 USPQ 340 (Bd. App. 1976). See also MPEP § 2136.
An application or portion thereof from which an abstract, abbreviature or defensive publication has been prepared may be used as a reference under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a), effective from the actual date of filing in the United States, only for evidence of prior knowledge of another.
These publications may be used alone or in combination with other prior art in rejecting claims under 35 U.S.C. 102(a)(1) or 103 or pre-AIA 35 U.S.C. 102 and 103.
Defensive Publications are listed with “U.S. Patent Documents.” Abstracts and Abbreviatures are listed under “Other References” in the citation thereof as follows:
(A) Abstracts and Abbreviatures
Brown, (abstract or abbreviature) of Serial No. ........, filed ............., published in OG ........., on ........, (list classification).
(B) Applications or designated portions thereof, abstracts, abbreviatures, and defensive publications
Jones, Application Serial No. ........, filed ............., laid open to public inspection on ............... as noted at .......... OG (portion of application relied on), (list classification, if any).
712 [Reserved]
713 Interviews [R-07.2015]
Discussions between an applicant and an examiner are often indispensable to advance the prosecution of a patent application. Generally, interviews that improve the mutual understanding of specific issues in an application should be promoted. Properly conducted, an interview can bridge the gap between an examiner and an applicant with regard to the substantive matters at issue in an application.
Interviews often help to advance prosecution and identify patentable subject matter. The applicant and the examiner should consider the advantages of conducting an interview to advance the prosecution of a particular patent application. Positions presented during an interview should be advanced with decorum and courtesy.
An interview should be granted when the nature of the case is such that the interview serves to develop or clarify outstanding issues in an application. Both applicants and examiners should understand that interview time is limited for both, and therefore they should use the interview time efficiently. Both parties should ensure the interview does not extend beyond a reasonable time and minimize interruptions during the interview. Applicants and examiners should facilitate the grouping of interviews where effective.
All discussions between the applicant/practitioner and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. This includes any and all records or communications received in connection with the interview, whether the interview was conducted in-person or through a telephone conversation, video conference, electronic mail, or electronic message system. This policy and other interview tips are detailed in the Interview Best Practices document which is available at www.uspto.gov/patents/law/exam/interview_ best_ practices.pdf. Where an electronic record is created as part of the interview, e.g., a series of electronic messages, a copy of the electronic record is to be made of record in the application. Where an electronic record is not created a summary of the interview must be made of record.
713.01 General Policy, How Conducted [R-07.2015]
37 CFR 1.133 Interviews.
(a)(1) Interviews with examiners concerning applications and other matters pending before the Office must be conducted on Office premises and within Office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Director.
(2) An interview for the discussion of the patentability of a pending application will not occur before the first Office
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action, unless the application is a continuing or substitute application or the examiner determines that such an interview would advance prosecution of the application.
(3) The examiner may require that an interview be scheduled in advance.
(b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in §§ 1.111 and 1.135.
I. WHERE AND WHEN TO CONDUCT INTERVIEWS
i) Face-to-face interviews may be accomplished via video conferencing or in-person. The physical location of either party participating in an interview should not limit the USPTO’s ability to hold face-to-face interviews. A request for a face-to-face interview will normally be granted. Other times, a telephone interview provides an appropriate level of interaction.
ii) In-person interviews with the examiner should normally be granted. In-person interviews must be conducted on the Office premises, such as in an examiner’s office, a conference room, an interview room or a video conference center, and should be held during normal business hours of 8:30 a.m. – 5:00 p.m. Monday through Friday.
iii) Interviews other than in-person interviews should be held during normal business hours and may also be held during mutually agreed upon non-traditional business hours, such as Saturday and evening hours.
iv) When an examiner is working remotely from a USPTO campus, there may not be an opportunity to have an in-person interview. The examiner shall accommodate an applicant, attorney, or agent’s preference for an interview via telephone conversation, video conference, electronic mail, or electronic instant message system using USPTO-based collaboration tools, consistent with the special requirements of section II. below. Alternatively, an applicant, attorney, or agent may request to have an interview on a USPTO campus while the examiner is remotely participating via the phone or video conference. In this instance, appropriate arrangements will be made on the USPTO campus for equipment and/or internet access to facilitate the interview. Appropriate USPTO
representative may be present with the applicant during the on campus interview.
v) Any Examiner may, with the applicant’s consent, conduct an interview by using video conferencing and collaboration tools provided by the Office.
vi) Examiners who normally work remotely should arrange to hold an interview on campus if the timing can be mutually agreed upon with the applicant. In special situations the examiner will be required to travel to campus for an in-person interview. The decision on special situations will be made at the TC Director level or higher as to whether the examiner of record or another USPTO representative will be on campus for the interview. A hoteling examiner within the local commuting area of a satellite office may use that satellite office for in-person or video conference interviews.
vii) Examiners working on campus may hold interviews in-person, telephonically, or via video conference. Examiners may receive requests from an applicant for an interview using video conferencing. Such requests should normally be granted. See MPEP § 713.01, subsection III below. Telework does not prevent examiners from conducting interviews via video conference or telephonically from their approved alternate worksite.
II. SPECIAL REQUIREMENTS FOR USING INTERNET COMMUNICATIONS
Internet email, instant message system, or video conferencing shall NOT be used to conduct an exchange or communications similar to those exchanged during telephone or personal interviews unless authorization from the applicants or an attorney/agent of record has been given to use Internet communications. See MPEP § 502.03.
A. Written Authorization
The following is a sample written authorization which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33
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and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”
B. Oral Authorization
The best practice is to have a written authorization of record in the file. However, an oral authorization from the applicant/practitioner is sufficient for video conferencing interviews. The oral authorization is limited to the arrangement of video conference interview (including the meeting invitation) and does not extend to other communications regarding the application. The examiner should note on the record the details of the oral authorization in the interview summary or in a separate communication.
III. VIDEO CONFERENCING
i) A video conference is a meeting, usually via the Internet, using USPTO-supplied collaboration tools to visually interact and collaborate with people anywhere in real time.
ii) All video conferences for interviews MUST originate or be hosted by USPTO personnel. Examiners may not conduct interviews via video conferences hosted by applicants or third parties. The examiner assigned to the subject application should coordinate the video conference using USPTO-supplied collaboration tools.
iii) When an applicant requests a video conference with an examiner, the request should normally be granted. When applicants request an in-person interview but there is not an opportunity for both parties to be on the same USPTO campus at a mutually agreed upon time, a video conference should be offered. All examiners, regardless of worksite location, should offer and hold interviews via video conferencing when appropriate.
iv) Video conferencing should be conducted consistent with the special procedure of subsection II above. Authorization from the applicant, preferably written, should be obtained prior to scheduling and setting up a video conference. See MPEP § 502.03.
IV. SCHEDULING AND CONDUCTING AN INTERVIEW
An interview should normally be arranged for in advance, as by letter, facsimile, electronic mail, or telephone call, in order to insure that the primary examiner and/or the examiner in charge of the application will be available. When applicant is initiating a request for an interview, an “Applicant Initiated Interview Request” form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, instant message system or video conference, and should include a brief description of the issues to be discussed. A copy of the completed “Applicant Initiated Interview Request” form should be attached to the Interview Summary form, PTOL-413 at the completion of the interview and a copy should be given to applicant or applicant’s representative.Applicants are encouraged to use form PTO-413A, however, the fact that applicant does not submit an “Applicant Initiated Interview Request” form is not, by itself, grounds for the examiner to deny a request for an interview. When a second art unit is involved, such as in the case where approval of a Patentability Report is necessary, the availability of the second examiner should also be checked. See MPEP §§ 705-705.01(f). An appointment for interview once arranged should be kept by examiner and applicant, attorney, or agent. When, after an appointment has been made, circumstances compel the absence of a party necessary to an effective interview (e.g., applicant, applicant’s representative, or examiner), the other party should be notified immediately so that substitute arrangements may be made.
When a telephone call is made to an examiner and it becomes evident that a lengthy discussion will ensue or that the examiner needs time to restudy the situation, the call should be terminated with an agreement that the examiner will call back at a specified time. Such a call and all other calls originated by the examiner should be made through the Office’s telephone system.
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An examiner’s suggestion of allowable subject matter may justify indicating the possibility of an interview to accelerate early agreement on allowable claims.
The unexpected appearance of an attorney or applicant requesting an interview without any previous notice may well justify the examiner’s refusal of the interview at that time, particularly in an involved case.
An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application.
Thus, the attorney when presenting himself or herself for an interview should be fully prepared to discuss the issues raised in the Office action. When it is obvious that the attorney is not so prepared, the interview should be rescheduled. It is desirable that the attorney or applicant indicate in advance what issues he or she desires to discuss at the interview by submitting, in writing, a proposed amendment. This would permit the examiner to prepare in advance for the interview and to focus on the matters set forth in the proposed amendment.
In order to have an effective interview, both parties should avoid unnecessary interruptions. Do not take incoming telephone calls, emails, or text messages unless an emergency. All parties participating in an interview should familiarize themselves with the status and existing issues in an application or reexamination proceeding before an interview.
The examiner should not hesitate to state, when appropriate, that claims presented for discussion at an interview would require further search and consideration. Nor should the examiner hesitate to conclude an interview when it appears that no common ground can be reached or when it becomes apparent that the application requires further amendment or an additional action by the examiner. However, the examiner should attempt to identify issues and resolve differences during the interview as much as possible.
It is the responsibility of all participants to see that the interview is not extended beyond a reasonable period, usually 30 minutes. It is the duty of the primary examiner to see that an interview is not extended beyond a reasonable period.
During an interview with a pro se applicant (i.e., an applicant who is prosecuting his or her own case and is not familiar with Office procedure), the examiner may make suggestions that will advance the prosecution of this case; this lies wholly within the examiner’s discretion. Excessive time, however, should not be allowed for such interviews.
Examiners should inspect all incoming papers. See MPEP § 714.05. Where a complete reply to a first action includes a request for an interview, a telephone consultation to be initiated by the examiner or a video conference, or where an out-of-town attorney under similar circumstances requests that the examiner defer taking any further action on the case until the attorney’s next visit to a USPTO campus (provided such visit is not beyond the date when the Office action would normally be taken up for action), the examiner, as soon as he or she has considered the effect of the reply, should grant such request if it appears that the interview or consultation would result in expediting the case to a final action.
Where agreement is reached as a result of an interview, applicant’s representative should be advised that an amendment pursuant to the agreement should be promptly submitted. If the amendment prepares the case for final action, the examiner should take the case up as special. If not, the case should await its turn.
A duplicate copy of a filed amendment and/or remarks may be sent to the examiner in order to facilitate early consideration.
A duplicate copy is unnecessary when the amendment and/or remarks are filed via the Office’s electronic filing system (EFS-Web) as the examiner will be able to quickly access such documents. See the EFS-Web Guidance and Resources page of the Office website (www.uspto.gov/patents /process/file/efs/guidance/index. jsp) for additional information. See also MPEP § 502.05.
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The substance of any interview, whether in person, by video conference, by electronic mail, electronic message system or by telephone must be made of record in the application. See MPEP §§ 502.03 and 713.04. A paper copy of the Internet email contents or instant message system transcripts or video conferencing transcripts, if any, MUST be made and placed in the patent application file as required by the Federal Records Act in the same manner as an Examiner Interview Summary Form is entered.
Examiners may grant one interview after final rejection. See MPEP § 713.09.
V. VIEWING OF VIDEO DURING INTERVIEWS
The USPTO has compact disc player equipment available for viewing video discs from applicants during interviews with patent examiners.
Attorneys or applicants wishing to show a video during an examiner interview must be able to demonstrate that the content of the video has a bearing on an outstanding issue in the application and its viewing will advance the prosecution of the application. If the video that applicant would like to display during the interview is in a format other than current DVD format, the applicant should also bring to the interview the equipment necessary to display
the video. The substance of the interview, including a summary of the content of the video must be made of record in the application. See MPEP § 713.04.
VI. EXAMINATION BY EXAMINER OTHER THAN THE ONE WHO CONDUCTED THE INTERVIEW
Sometimes the examiner who conducted the interview is transferred to another Technology Center or resigns, and the examination is continued by another examiner. If there is an indication that an interview had been held, the second examiner should ascertain if any agreements were reached at the interview. Where conditions permit, as in the absence of a clear error or knowledge of other prior art, the second examiner should take a position consistent with the agreements previously reached. See MPEP § 812.01 for a statement of telephone practice in restriction and election of species situations.
VII. COLLABORATION TOOLS
Collaboration tools include instant messaging, document sharing and whiteboard, virtual meeting tools, and video conferencing equipment and software. All collaboration tools used for interviews must be supplied by the USPTO and hosted by the USPTO network.
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713.02 Interviews Prior to First Official Action [R-07.2015]
A request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications. In all other applications, an interview before the first Office action is encouraged where the examiner determines that such an interview would advance prosecution of the application. Thus, the examiner may require that an applicant requesting an interview before the first Office action provide a paper that includes a general statement of the state of the art at the time of the invention, and an identification of no more than three (3) references believed to be the “closest” prior art and an explanation as to how the broadest claim distinguishes over such references. See 37 CFR 1.133(a). Applicants seeking prioritized examination should be prepared to participate in an interview with the examiner. See MPEP § 708.02(b). Similarly the Office announced a pilot program in which an interview is conducted before a first action on the merits. Information on this pilot program is available f r o m : www.uspto.gov/patents/init_events/faipp_full.jsp.
I. SEARCHING IN GROUP
Seeking search help in the Technology Center art unit should be permitted only with the consent of a primary examiner.
II. EXPOUNDING PATENT LAW
The U.S. Patent and Trademark Office cannot act as an expounder of the patent law, nor as a counselor for individuals.
713.03 Interview for “Sounding Out” Examiner Not Permitted [R-08.2012]
Interviews that are solely for the purpose of “sounding out” the examiner, as by a local attorney acting for an out-of-town attorney, should not be permitted when it is apparent that any agreement
that would be reached is conditional upon being satisfactory to the principal attorney.
713.04 Substance of Interview Must Be Made of Record [R-07.2015]
A complete written statement as to the substance of any in-person, video conference, electronic mail, telephone interview, or electronic message system discussion with regard to the merits of an application must be made of record in the application, whether or not an agreement with the examiner was reached at the interview. The requirement may be satisfied by submitting a transcript generated during an electronic mail or message exchange. See 37 CFR 1.133(b) and MPEP §§ 502.03 and 713.01.
37 CFR 1.133 Interviews. *****
(b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in §§ 1.111 and 1.135.
37 CFR 1.2 Business to be transacted in writing.
All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
The action of the U.S. Patent and Trademark Office cannot be based exclusively on the written record in the Office if that record is itself incomplete through the failure to record the substance of interviews.
It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, except where the interview was initiated by the examiner and the examiner indicated on the “Examiner Initiated Interview Summary” form (PTOL-413B) that the examiner will provide a written summary. It is the examiner’s responsibility to see that such a record is made and to correct material inaccuracies which bear directly on the question of patentability.
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Examiners must complete an Interview Summary form PTOL-413 for each interview where a matter of substance has been discussed during the interview by checking the appropriate boxes and filling in the appropriate blanks. If applicant initiated the interview, a copy of the completed “Applicant Initiated Interview Request” form, PTOL-413A (if available), should be attached to the Interview Summary form, PTOL-413 and a copy be given to the applicant (or applicant’s attorney or agent), upon completion of the interview. If the examiner initiates an interview, the examiner should complete part I of the “Examiner Initiated Interview Summary” form, PTOL-413B, in advance of the interview identifying the rejections, claims and prior art documents to be discussed with applicant. The examiner should complete parts II and III of the “Examiner Initiated Interview Summary” form at the conclusion of the interview. The completed PTOL-413B form will be considered a proper interview summary record and it will not be necessary for the examiner to complete another PTOL-413 form. Discussions regarding only procedural matters, directed solely to restriction requirements for which interview recordation is otherwise provided for in MPEP § 812.01, or pointing out typographical errors in Office actions or the like, are excluded from the interview recordation procedures. Where a complete record of the interview has been incorporated in an examiner’s amendment, it will not be necessary for the examiner to complete an Interview Summary form.
The Interview Summary form PTOL-413 shall include the date the interview was held and the substance of the interview shall be properly recorded. In a personal interview, the duplicate copy of the Interview Summary form along with any attachment(s) is given to the applicant (or attorney or agent) at the conclusion of the interview. In the case of a telephonic, electronic mail, electronic message system or video conference interview, the copy is mailed to the applicant’s correspondence address either with or prior to the next official communication. A copy of the form may be faxed or, if the Office has appropriate authorization to conduct communications via the Internet, a copy of the form may be e-mailed to applicant (or applicant’s attorney or agent) at the conclusion of the interview. If additional correspondence from the examiner is
not likely before an allowance or if other circumstances dictate, the Interview Summary form should be mailed promptly after the telephonic, electronic mail, electronic message system or video conference interview rather than with the next official communication.
The PTOL-413 form provides for recordation of the following information:
(A) application number;
(B) name of applicant;
(C) name of examiner;
(D) date of interview;
(E) type of interview (personal, telephonic, or video conference);
(F) name of participant(s) (applicant, applicant’s representative, etc.);
(G) an indication whether or not an exhibit was shown or a demonstration conducted;
(H) an identification of the claims discussed;
(I) an identification of the specific prior art discussed;
(J) an indication whether an agreement was reached and if so, a description of the general nature of the agreement (may be by attachment of a copy of amendments or claims agreed as being allowable). (Agreements as to allowability are tentative and do not restrict further action by the examiner to the contrary.);
(K) the signature of the examiner who conducted the interview;
(L) names of other U.S. Patent and Trademark Office personnel present.
The PTOL-413 form also contains a statement reminding the applicant of his or her responsibility to record the substance of the interview.
It is desirable that the examiner orally remind the applicant of his or her obligation to record the substance of the interview in each case unless the interview was initiated by the examiner and the examiner indicated on the “Examiner Initiated Interview Summary” form, PTOL-413B, that the examiner will provide a written summary. Where
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an interview initiated by the applicant results in the allowance of the application, the applicant is advised to file a written record of the substance of the interview as soon as possible to prevent any possible delays in the issuance of a patent. Where an examiner initiated interview directly results in the allowance of the application, the examiner may check the appropriate box on the “Examiner Initiated Interview Summary” form, PTOL-413B, to indicate that the examiner will provide a written record of the substance of the interview with the Notice of Allowability.
It should be noted, however, that the Interview Summary form will not be considered a complete and proper recordation of the interview unless it includes, or is supplemented by the applicant, or the examiner to include, all of the applicable items required below concerning the substance of the interview.
The complete and proper recordation of the substance of any interview should include at least the following applicable items:
(A) a brief description of the nature of any exhibit shown or any demonstration conducted;
(B) identification of the claims discussed;
(C) identification of specific prior art discussed;
(D) identification of the principal proposed amendments of a substantive nature discussed, unless these are already described on the Interview Summary form completed by the examiner;
(E) the general thrust of the principal arguments of the applicant and the examiner should also be identified, even where the interview is initiated by the examiner. The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully describe those arguments which he or she feels were or might be persuasive to the examiner;
(F) a general indication of any other pertinent matters discussed;
(G) if appropriate, the general results or outcome of the interview; and
(H) in the case of an interview via electronic mail a paper copy of the contents exchanged over the internet MUST be made and placed in the patent application file as required by the Federal Records Act in the same manner as an Examiner Interview Summary Form, PTOL-413, is entered.
Examiners are expected to carefully review the applicant’s record of the substance of an interview. If the record is not complete or accurate, the examiner may give the applicant a 2-month time period to complete the reply under 37 CFR 1.135(c) where the record of the substance of the interview is in a reply to a non-final Office action.
¶ 7.84 Amendment Is Non-Responsive to Interview
The reply filed on [1] is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the [2] interview. [3] Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).
Examiner Note:
1. In bracket 2, insert the date of the interview.
2. In bracket 3, explain the deficiencies.
EXAMINER TO CHECK FOR ACCURACY
Applicant’s summary of what took place at the interview should be carefully checked to determine the accuracy of any argument or statement attributed to the examiner during the interview. If there is an inaccuracy and it bears directly on the question of patentability, it should be pointed out in the next Office communication from the examiner (e.g., rejection, interview summary, or notice of allowability), and the examiner should set forth his or her version of the statement attributed to him or her.
If the record is complete and accurate, the examiner should electronically annotate the record with the indication “Interview record OK” on the paper recording the substance of the interview.
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713.05 Interviews Prohibited or Granted, Special Situations [R-07.2015]
Except in unusual situations, interviews with examiners are not permitted after the submission of an appeal brief or after a notice of allowability for the application has been mailed.
An interview may be appropriate before applicant’s first reply when the examiner has suggested that allowable subject matter is present or where it will assist applicant in judging the propriety of continuing the prosecution.
Office employees are forbidden to hold either oral or written communication with an unregistered or a suspended or excluded attorney or agent regarding an application unless it is one in which said attorney or agent is the applicant. See MPEP § 105.
Interviews (MPEP § 713) are frequently requested by persons whose credentials are of such informal character that there is serious question as to whether such persons are entitled to any information under the provisions of 37 CFR 1.14. In general, interviews are not granted to persons who lack proper authority from the applicant or attorney or agent of record in the form of a paper on file in the application. A MERE POWER TO INSPECT IS NOT SUFFICIENTAUTHORITY FOR GRANTINGAN INTERVIEW INVOLVING THE MERITS OF THE APPLICATION.
Interviews are generally not granted to registered individuals to whom there is no power of attorney or authorization to act in a representative capacity. See MPEP § 405 for additional information and for form PTO/SB/84, Authorization to Act in a Representative Capacity. Note that pursuant to 37 CFR 11.106, a practitioner cannot authorize other registered practitioners to conduct interviews unless the client gives informed consent. Furthermore, even with informed consent, a practitioner should not authorize a nonpractitioner to conduct interviews as this could be considered aiding in the unauthorized practice of law. See 37 CFR 11.505.
While a registered practitioner not of record may request an interview (if the practitioner is authorized to do so by the applicant or the attorney of record),
it is recommended that a power of attorney or authorization to act in a representative capacity be filed, preferably via EFS-Web, prior to the interview. Otherwise, the examiner will conduct the telephone interview with the Office’s file closed and work solely from the practitioner’s file, which may be difficult to do if the interview is not in-person.
Interviews normally should not be granted unless the requesting party has authority to bind the principal concerned.
For an interview with an examiner who does not have negotiation authority, arrangements should always include an examiner who does have such authority, and who is familiar with the application, so that authoritative agreement may be reached at the time of the interview.
GROUPED INTERVIEWS
For attorneys remote from the Washington, D.C. area who prefer in-person or video conference interviews, the grouped interview practice is effective. If in any case there is a prearranged interview, with agreement to file a prompt supplemental amendment putting the case as nearly as may be in condition for concluding action, prompt filing of the supplemental amendment gives the application special status, and brings it up for immediate special action.
713.06 No Inter Partes Questions Discussed Ex Parte [R-08.2012]
The examiner may not discuss inter partes questions ex parte with any of the interested parties.
713.07 Exposure of Other Cases [R-11.2013]
Prior to an interview in the examiner’s office space or via video conference, the examiner should arrange his or her desk so that all files, drawings and other
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papers, except those necessary in the interview, are placed out of view. See MPEP § 101.
713.08 Demonstration, Exhibits, Models [R-07.2015]
The invention in question may be exhibited or demonstrated during the interview by a model or exhibit thereof. A model or exhibit will not generally be admitted as part of the record of an application. See 37 CFR 1.91. However, a model or exhibit submitted by the applicant which complies with 37 CFR 1.91 would be made part of the application record. See MPEP §§ 608.03 and 608.03(a).
If the model or exhibit is merely used for demonstration purpose during the course of the interview, it will not be made part of the record (does not comply with 37 CFR 1.91). A full description as to what was demonstrated/exhibited must be made of record in the application. See 37 CFR 1.133(b). Demonstrations of apparatus or exhibits too large to be brought into the Office may be viewed by the examiner outside of the Office (in the Washington, D.C. area) with the approval of the supervisory patent examiner. It is presumed that the witnessing of the demonstration or the reviewing of the exhibit is actually essential in the developing and clarifying of the issues involved in the application.
713.09 Finally Rejected Application [R-11.2013]
Normally, one interview after final rejection is permitted in order to place the application in condition for allowance or to resolve issues prior to appeal. However, prior to the interview, the intended purpose and content of the interview should be presented briefly, preferably in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied. See MPEP § 714.13.
Interviews may be held after the expiration of the shortened statutory period and prior to the maximum
permitted statutory period of 6 months without an extension of time. See MPEP § 706.07(f).
A second or further interview after a final rejection may be held if the examiner is convinced that it will expedite the issues for appeal or disposal of the application.
713.10 Interview Preceding Filing Amendment Under 37 CFR 1.312 [R-08.2012]
After an application is sent to issue, it is technically no longer under the jurisdiction of the primary examiner. 37 CFR 1.312. An interview with an examiner that would involve a detailed consideration of claims sought to be entered and perhaps entailing a discussion of the prior art for determining whether or not the claims are allowable should not be given. Obviously an applicant is not entitled to a greater degree of consideration in an amendment presented informally than is given an applicant in the consideration of an amendment when formally presented, particularly since consideration of an amendment filed under 37 CFR 1.312 cannot be demanded as a matter of right.
Requests for interviews on cases where a notice of allowance has been mailed should be granted only with specific approval of the Technology Center Director upon a showing in writing of extraordinary circumstances.
714 Amendments, Applicant’s Action [R-07.2015]
37 CFR 1.121 Manner of making amendments in application.
(a) Amendments in applications, other than reissue applications. Amendments in applications, other than reissue applications, are made by filing a paper, in compliance with § 1.52, directing that specified amendments be made.
(b) Specification . Amendments to the specification, other than the claims, computer listings (§ 1.96) and sequence listings (§ 1.825), must be made by adding, deleting or replacing a paragraph, by replacing a section, or by a substitute specification, in the manner specified in this section.
(1) Amendment to delete, replace, or add a paragraph. Amendments to the specification, including amendment to a section heading or the title of the invention which are considered for amendment purposes to be an amendment of a paragraph, must be made by submitting:
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(i) An instruction, which unambiguously identifies the location, to delete one or more paragraphs of the specification, replace a paragraph with one or more replacement paragraphs, or add one or more paragraphs;
(ii) The full text of any replacement paragraph with markings to show all the changes relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strikethrough cannot be easily perceived;
(iii) The full text of any added paragraphs without any underlining; and;
(iv) The text of a paragraph to be deleted must not be presented with strike-through or placed within double brackets. The instruction to delete may identify a paragraph by its paragraph number or include a few words from the beginning, and end, of the paragraph, if needed for paragraph identification purposes.
(2) Amendment by replacement section . If the sections of the specification contain section headings as provided in § 1.77(b), § 1.154(b), or § 1.163(c), amendments to the specification, other than the claims, may be made by submitting:
(i) A reference to the section heading along with an instruction, which unambiguously identifies the location, to delete that section of the specification and to replace such deleted section with a replacement section; and;
(ii) A replacement section with markings to show all changes relative to the previous version of the section. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived.
(3) Amendment by substitute specification. The specification, other than the claims, may also be amended by submitting:
(i) An instruction to replace the specification; and
(ii) A substitute specification in compliance with §§ 1.125(b) and (c).
(4) Reinstatement of previously deleted paragraph or section. A previously deleted paragraph or section may be reinstated only by a subsequent amendment adding the previously deleted paragraph or section.
(5) Presentation in subsequent amendment document. Once a paragraph or section is amended in a first amendment document, the paragraph or section shall not be represented in a subsequent amendment document unless it is amended again or a substitute specification is provided.
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes ( e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement ( e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn— currently amended.”
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the
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status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
(d) Drawings : One or more application drawings shall be amended in the following manner:Any changes to an application drawing must be in compliance with § 1.84, or, for a nonprovisional international design application, in compliance with §§ 1.84(c) and 1.1026, and must be submitted on a replacement sheet of drawings which shall be an attachment to the amendment document and, in the top margin, labeled “Replacement Sheet”. Any replacement sheet of drawings shall include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. Any new sheet of drawings containing an additional figure must be labeled in the top margin as “New Sheet.” All changes to the drawings shall be explained, in detail, in either the drawing amendment or remarks section of the amendment paper.
(1) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change to the drawings.
(2) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
(e) Disclosure consistency. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(f) No new matter. No amendment may introduce new matter into the disclosure of an application.
(g) Exception for examiner’s amendments. Changes to the specification, including the claims, of an application made by the Office in an examiner’s amendment may be made by specific instructions to insert or delete subject matter set forth in the examiner’s amendment by identifying the precise point in the specification or the claim(s) where the insertion or deletion is to be made. Compliance with paragraphs (b)(1), (b)(2), or (c) of this section is not required.
(h) Amendment sections. Each section of an amendment document ( e.g., amendment to the claims, amendment to the specification, replacement drawings, and remarks) must begin on a separate sheet.
(i) Amendments in reissue applications. Any amendment to the description and claims in reissue applications must be made in accordance with § 1.173.
(j) Amendments in reexamination proceedings. Any proposed amendment to the description and claims in patents involved in reexamination proceedings must be made in accordance with § 1.530.
(k) Amendments in provisional applications. Amendments in provisional applications are not usually made. If an
amendment is made to a provisional application, however, it must comply with the provisions of this section. Any amendments to a provisional application shall be placed in the provisional application file but may not be entered.
I. WHEN APPLICANT MAY AMEND
The applicant may amend:
(A) ) before or after the first Office action and also after the second Office actions as specified in 37 CFR 1.112;
(B) after final rejection, if the amendment meets the criteria of 37 CFR 1.116;
(C) after the date of filing a notice of appeal pursuant to 37 CFR 41.31(a), if the amendment meets the criteria of 37 CFR 41.33; and
(D) when and as specifically required by the examiner.
Amendments in provisional applications are not normally made. If an amendment is made to a provisional application, however, it must comply with the provisions of 37 CFR 1.121. Any amendments to a provisional application will be placed in the provisional application file, but may not be entered.
II. MANNER OF MAKINGAMENDMENTS UNDER 37 CFR 1.121
All amendments filed on or after July 30, 2003 must comply with 37 CFR 1.121 as revised in the notice of final rule making published in the Federal Register on June 30, 2003 at 65 FR 38611. The manner of making amendments has been revised to assist in the implementation of beginning-to-end electronic image processing of patent applications. Specifically, changes have been made to facilitate electronic image data capture and processing and streamline the patent application process. If an amendment filed on or after July 30, 2003 does not comply with revised 37 CFR 1.121, the Office will notify applicants via a Notice of Non-Compliant Amendment that the amendment is not accepted.
The revised amendment practice is summarized as follows.
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A. Amendment Sections
Each section of an amendment document (e.g., Specification Amendments, Claim Amendments, Drawing Amendments, and Remarks) must begin on a separate sheet to facilitate separate indexing and electronic scanning of each section of an amendment document for placement in an image file wrapper.
It is recommended that applicants use the following format when submitting amendment papers. The amendment papers should include, in the following order:
(A) a cover sheet, or introductory comments, providing the appropriate application information (e.g., application number, applicant, filing date) and which serves as a table of contents to the amendment document by indicating on what page of the amendment document each of the following sections begin;
(B) a section (must begin on a separate sheet) entitled “Amendments to the Specification” (if there are any amendments to the specification). This section should include all amendments to the specification including amendments to the abstract of the disclosure. A more detailed discussion is provided in subsection II.B below;
(C) a section (must begin on a separate sheet) entitled “Amendments to the Claims” which includes a complete listing of all claims ever presented in the application (if there are any amendments to the claims). A more detailed discussion is provided in subsection II.C below;
(D) a section (must begin on a separate sheet) entitled “Amendments to the Drawings” in which all changes to the drawings are discussed (if there are any amendments to the drawings). A more detailed discussion is provided in subsection II.D below;
(E) a remarks section (must begin on a separate sheet); and
(F) any drawings being submitted including any “Replacement Sheet,” “New Sheet,” or “Annotated Sheet.”
B. Amendments to the Specification
Amendments to the specification, other than the claims, computer listings (37 CFR 1.96) and sequence listings (37 CFR 1.825), must be made by adding, deleting or replacing a paragraph, by replacing a section, or by a substitute specification. In order to delete, replace or add a paragraph to the specification of an application, the amendment must unambiguously identify the paragraph to be modified either by paragraph number (see MPEP § 608.01), page and line, or any other unambiguous method and be accompanied by any replacement or new paragraph(s). Replacement paragraphs must include markings to show the changes. A separate clean version of any replacement paragraphs is not required. Any new paragraphs must be presented in clean form without any markings (i.e., underlining).
Where paragraph numbering has been included in an application as provided in 37 CFR 1.52(b)(6), applicants can easily refer to a specific paragraph by number when presenting an amendment. If a numbered paragraph is to be replaced by a single paragraph, the added replacement paragraph should be numbered with the same number of the paragraph being replaced. Where more than one paragraph is to replace a single original paragraph, the added paragraphs should be numbered using the number of the original paragraph for the first replacement paragraph, followed by increasing decimal numbers for the second and subsequent added paragraphs, e.g., original paragraph [0071] has been replaced with paragraphs [0071], [0071.1], and [0071.2]. If a numbered paragraph is deleted, the numbering of the subsequent paragraphs should remain unchanged.
37 CFR 1.121(b)(1)(ii) requires that the full text of any replacement paragraph be provided with markings to show all the changes relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of any deleted subject matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show the deletion of five or fewer consecutive characters (e.g., [[eroor]]). The term “brackets” set forth in 37 CFR 1.121 means square brackets – [ ], and not parentheses – ( ). The text of any deleted subject matter must be shown by
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being placed within double brackets if strike-through cannot be easily perceived (e.g., deletion of the number “4” must be shown as [[4]]). As an alternative to using double brackets, however, extra portions of text may be included before and after text being deleted, all in strike-through, followed by including and underlining the extra text with the desired change (e.g., number 4 as number 14 as). For added paragraphs, 37 CFR 1.121(b)(1)(iii) requires that the full text of any added paragraph(s) be presented in clean form without any underlining. Similarly, under 37 CFR 1.121(b)(1)(iv), a marked up version does not have to be supplied for any deleted paragraph(s). It is sufficient to merely indicate or identify any paragraph that has been deleted. The instruction to delete may identify a paragraph by its paragraph number, page and line number, or include a few words from the beginning, and end, or the paragraph, if needed for paragraph identification.
Applicants are also permitted to amend the specification by replacement sections (e.g., as provided in 37 CFR 1.77(b), 1.154(b), or 1.163(c)). As with replacement paragraphs, the amended version of a replacement section is required to be provided with markings to show all the changes relative to the previous version of the section. The text of any added subject matter must be shown by underlining the added text. The text of any deleted subject matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show the deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived.
Specifically regarding amendments to the abstract of the disclosure, where the amendments to the abstract are minor in nature, the abstract should be provided as a marked-up version under 37 CFR 1.121(b)(2)(ii) using strike-through and underlining as the methods to show all changes relative to the immediate prior version. Where the abstract is being substantially rewritten and the amended abstract bears little or no resemblance to the previously filed version of the abstract, a new (substitute) abstract may be provided in clean form accompanied by an instruction for the cancellation of the previous
version of the abstract. The text of the new abstract must not be underlined. It would be counterproductive for applicant to prepare and provide an abstract so riddled with strike-through and underlining that its meaning and language are obscured from view and comprehension. Whether supplying a marked-up version of a previous abstract or a clean form new abstract, the abstract must comply with 37 CFR 1.72(b) regarding the length and placement of the abstract on a separate sheet of paper.
Applicants are also permitted to amend the specification by submitting a substitute specification, provided the requirements of 37 CFR 1.125(b) and (c) are met. Under 37 CFR 1.125, a clean version of the substitute specification, a separate marked up version showing the changes in the specification relative to the previous version, and a statement that the substitute specification contains no new matter are required.
Any previously deleted paragraph or section can only be reinstated by a subsequent amendment presenting the previously deleted subject matter. A direction by applicant to remove a previously entered amendment will not be permitted.
C. Amendments to the Claims
Each amendment document that includes a change to an existing claim, including the deletion of an existing claim, or submission of a new claim, must include a complete listing of all claims ever presented (including previously canceled and non-entered claims) in the application. After each claim number, the status identifier of the claim must be presented in a parenthetical expression, and the text of each claim under examination as well as all withdrawn claims (each with markings if any, to show current changes) must be presented. The listing will serve to replace all prior versions of the claims in the application.
(A) Status Identifiers: The current status of all of the claims in the application, including any previously canceled or withdrawn claims, must be given. Status is indicated in a parenthetical expression following the claim number by one of the following status identifiers: (original), (currently amended), (previously presented), (canceled),
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(withdrawn), (new), or (not entered). The status identifier (withdrawn – currently amended) is also acceptable for a withdrawn claim that is being currently amended. See paragraph (E) below for acceptable alternative status identifiers.
Claims added by a preliminary amendment must have the status identifier (new) instead of (original), even when the preliminary amendment is present on the filing date of the application and such claim is treated as part of the original disclosure. If applicant files a subsequent amendment, applicant must use the status identifier (previously presented) if the claims are not being amended, or (currently amended) if the claims are being amended, in the subsequent amendment. Claims that are canceled by a preliminary amendment that is present on the filing date of the application are required to be listed and must have the status identifier (canceled) in the preliminary amendment and in any subsequent amendment.
The status identifier (not entered) is used for claims that were previously proposed in an amendment (e.g., after-final) that was denied entry.
In an amendment submitted in a U.S. national stage application, claims that were present on the international filing date or rectified pursuant to PCT Rule 91 must have the status identifier (originan( � claims that were amended or added under PCT Article 19 or 34 with effect in the U.S. national stage application must have the status identifier (previously presented); and claims that were canceled pursuant to PCT Article 19 or 34 with effect in the U.S. national stage application must have the status identifier (canceled). If the amendment submitted in the U.S. national stage application is making a change in a claim, the status identifier (currently amended) must be used for that claim.
For any amendment being filed in response to a restriction or election of species requirement and any subsequent amendment, any claims which are non-elected must have the status identifier (withdrawn). Any non-elected claims which are being amended must have either the status identifier (withdrawn) or (withdrawn – currently amended) and the text of the non-elected claims must be presented with markings to indicate the changes. Any non-elected claims that are being canceled must have the status identifier (canceled).
(B) Markings to Show the Changes: All claims being currently amended must be presented with markings to indicate the changes that have been made relative to the immediate prior version. The changes in any amended claim must be shown by strike-through (for deleted matter) or underlining (for added matter) with 2 exceptions: (1) for deletion of five or fewer consecutive characters, double brackets may be used (e.g., [[eroor]]); (2) if strike-through cannot be easily perceived (e.g., deletion of number “4” or certain punctuation marks), double brackets must be used (e.g., [[4]]). As an alternative to using double brackets, however, extra portions of text may be included before and after text being deleted, all in strike-through, followed by including and underlining the extra text with the desired change (e.g., number 4 as number 14 as ). An accompanying clean version is not required and should not be presented. Only claims of the status “currently amended” or “withdrawn” will include markings.
Any claims added by amendment must be indicated as “new” and the text of the claim must not be underlined.
(C) Claim Text: The text of all pending claims under examination and withdrawn claims must be submitted each time any claim is amended. The text of pending claims not being currently amended, including withdrawn claims, must be presented in clean version, i.e., without any markings. Any claim presented in clean version will constitute an assertion that it has not been changed relative to the immediate prior version except to omit markings that may have been present in the immediate prior version of the claims. A claim being canceled must be indicated as “canceled;” the text of the claim must not be presented. Providing an instruction to cancel is optional. Canceled and not entered claims must be listed by only the claim number and status identifier, without presenting the text of the claims. When applicant submits the text of canceled or not-entered claims in the amendment, the Office may accept such an amendment, if the amendment otherwise complies with 37 CFR 1.121, instead of sending out a notice of non-compliant amendment to reduce the processing time.
(D) Claim Numbering: All of the claims in each amendment paper must be presented in ascending numerical order. Consecutive canceled
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or not entered claims may be aggregated into one statement (e.g., Claims 1 – 5 (canceled)).
A canceled claim can be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number. The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. For example, when applicant cancels all of the claims in the original specification and adds a new set of claims, the claim listing must include all of the canceled claims with the status identifier (canceled) (the canceled claims may be aggregated into one statement). The new claims must be numbered consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not) in compliance with 37 CFR 1.126.
Example of listing of claims: Claims 1-5 (canceled) Claim 6 (withdrawn): A process for molding a bucket. Claim 7 (previously presented): A bucket with a handle. Claim 8 (currently amended): A bucket with a green blue handle. Claim 9 (withdrawn): The process for molding a bucket of claim 6 using molten plastic material. Claim 10 (originan( � The bucket of claim 8 with a wooden handle. Claim 11 (canceled) Claim 12 (previously presented): A bucket having a circumferential upper lip. Claim 13 (not entered) Claim 14 (new): A bucket with plastic sides and bottom.
(E) Acceptable Alternative Status Identifiers : To prevent delays in prosecution, the Office will waive certain provisions of 37 CFR 1.121 and accept alternative status identifiers not specifically set forth in 37 CFR 1.121(c). See Acceptance of Certain Non-Compliant Amendments Under 37 CFR 1.121(c) , OG (July 5, 2005). Accordingly claim listings that include alternative status identifiers as set forth below may be accepted if the amendment otherwise complies with 37 CFR 1.121.
Acceptable AlternativesStatus Identifiers Set Forth in 37 CFR 1.121(c)
Original Claim; and Originally Filed Claim
1. Original
Presently amended; and Currently amended claim
2. Currently amended
Canceled without prejudice; Cancel;
3. Canceled
Canceled; Canceled herein; Previously canceled; Canceled claim; and Deleted Withdrawn from consideration; Withdrawn
4. Withdrawn
– new; Withdrawn claim; and Withdrawn – currently amended Previously amended; Previously added;
5. Previously presented
Previously submitted; and Previously presented claim Newly added; and New claim
6. New
Not entered claim7. Not entered
The Office may also accept additional variations of the status identifiers provided in 37 CFR 1.121(c) not listed above if an Office personnel determines that the status of the claims is accurate and clear. When accepting alternative status identifiers, the examiner is not required to correct the status identifiers using an examiner’s amendment. Applicant will not be notified and will not be required to submit a corrective compliant amendment. The examiner does not need to make a statement on the record that the alternative status identifiers have been accepted.
D. Amendments to the Drawing
Any changes to an application drawing must comply with 37 CFR 1.84 and must be submitted on a replacement sheet of drawings, even when applicant is only submitting better quality drawings without any substantive changes. Any additional new drawings must be submitted on a new sheet of drawings. The replacement or new sheet of drawings must be an attachment to the amendment document and must be identified in the top margin as
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“Replacement Sheet.” The new drawing sheet must be identified in the top margin as “New Sheet.” The replacement drawing sheet must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. The figure or figure number of the amended drawing(s) must not be labeled as “amended.” A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change to the drawings. A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
An explanation of the changes made must be presented in the “Amendments to the Drawings” or the remarks section of the amendment document. If the changes to the drawing figure(s) are not approved by the examiner, applicant will be notified in the next Office action. Applicant must amend the brief and detailed description of drawings sections of the specification if they are not consistent with the changes to the drawings. For example, when applicant files a new drawing sheet, an amendment to the specification is required to add the brief and detailed description of the new drawings.
The proposed drawing correction practice has been eliminated. For any changes to the drawings, applicant is required to submit a replacement sheet of drawings with the changes made. No proposed changes in red ink should be submitted. Any proposed drawing corrections will be treated as non-compliant under 37 CFR 1.121(d). In response to any drawing objections, applicant should submit drawing changes by filing a replacement sheet of drawings or a new sheet of drawings with the corrections made. A letter to the official draftsman is no longer required.
Drawing submissions without any amendments to the specification and claims after allowance should be forwarded to the Office of Data Management.
E. Examiner’s Amendments
37 CFR 1.121(g) permits the Office to make amendments to the specification, including the claims, by examiner’s amendments without paragraph/section/claim replacement in the interest of expediting prosecution and reducing cycle time. Additions or deletions of subject matter in the specification, including the claims, may be made by instructions to make the change at a precise location in the specification or the claims. Examiner’s amendments do not need to comply with paragraphs (b)(1), (b)(2), or (c) of 37 CFR 1.121. See MPEP § 1302.04.
If a non-compliant amendment would otherwise place the application in condition for allowance, the examiner may enter the non-compliant amendment and provide an examiner’s amendment to correct the non-compliance (e.g., an incorrect status identifier). Similarly, if an amendment under 37 CFR 1.312 after allowance is non-compliant under 37 CFR 1.121 and the entry of the amendment would have been otherwise recommended, the examiner may enter the amendment and correct the non-compliance (e.g., an incorrect status identifier) using an examiner’s amendment. See subsection “F. Non-Compliant Amendments” for more information on non-compliant amendments. For example, if some of the status identifiers are incorrect in an amendment, the examiner may enter the non-compliant amendment and:
(A) provide a claim listing presenting all of the claims with the proper status identifiers in an examiner’s amendment;
(B) print a copy of the claim listing of the non-compliant amendment, cross out the improper status identifiers, write in the correct status identifiers and include it as an attachment to an examiner’s amendment; or
(C) correct the improper status identifiers by instructions in an examiner’s amendment.
The examiner’s amendment should include the reason why the amendment is non-compliant and indicate how it was corrected. Authorization from the applicant or attorney/agent of record and appropriate extensions of time are not required if the changes are not substantive (e.g., corrections of
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format errors or typographical errors). Such an examiner’s amendment may be made after the time period for reply, or after the shortened statutory period without any extensions of time, as long as the non-compliant amendment was timely filed.
Authorization and appropriate extensions of time are required if the changes made in the examiner’s amendment are substantive (e.g., the examiner’s amendment would include a cancellation of a claim or change the scope of the claims). The authorization must be given within the time period for reply set forth in the last Office action. See MPEP § 1302.04.
F. Non-Compliant Amendments
If an amendment submitted on or after July 30, 2003, fails to comply with 37 CFR 1.121 (as revised on June 30, 2003), the Office will notify applicant by a Notice of Non-Compliant Amendment, Form PTOL-324, that the amendment fails to comply with the requirements of 37 CFR 1.121 and identify: (1) which section of the amendment is non-compliant (e.g., the amendments to the claims section); (2) items that are required for compliance (e.g., a claim listing in compliance with 37 CFR 1.121(c)); and (3) the reasons why the section of the amendment fails to comply with 37 CFR 1.121 (e.g., the status identifiers are missing). The type of amendment will determine whether applicant will be given a period of time in which to comply with the rule and whether applicant’s reply to a notice should consist of the corrected section of the amendment (e.g., a complete claim listing in compliance of 37 CFR 1.121(c)) instead of the entire corrected amendment. If the noncompliant amendment is:
(A) A preliminary amendment filed after the filing date of the application , the technical support staff (TSS) will send the notice which sets a time period of two months for reply. No extensions of time are permitted. Failure to submit a timely reply will result in the application being examined without entry of the preliminary amendment. Applicant’s reply is required to include the corrected section of the amendment.
(B) A preliminary amendment that is present on the filing date of the application , the Office of Patent Application Processing (OPAP) will send applicant a notice (e.g., Notice to File Corrected
Application Papers) which sets a time period of 2 months for reply. Extensions of time are available under 37 CFR 1.136(a). Failure to reply to the (OPAP) notice will result in abandonment of the application. Applicant’s reply is required to include either a substitute specification under 37 CFR 1.125 if the amendment is to the specification, or a complete claim listing under 37 CFR 1.121(c) if the amendment is to the claims.
(C) A non-final amendment including an amendment filed as a submission for an RCE, the TSS will send the notice which sets a time period of two months for reply. Extensions of time are available under 37 CFR 1.136(a). Failure to reply to this notice will result in abandonment of the application. Applicant’s reply is required to include the corrected section of the amendment.
(D) An after-final amendment , the amendment will be forwarded in unentered status to the examiner. In addition to providing reasons for non-entry when the amendment is not in compliance with 37 CFR 1.116 (e.g., the proposed amendment raises new issues that would require further consideration and/or search), the examiner should also indicate in the advisory action any non-compliance in the after-final amendment. The examiner should attach a Notice of Non-Compliant Amendment to the advisory action. The notice provides no new time period for correcting the non-compliance. The time period for reply continues to run from the mailing of the final Office action. Applicant still needs to respond to the final Office action to avoid abandonment of the application. If the applicant wishes to file another after-final amendment, the entire corrected amendment (not only the corrected section of the amendment) must be submitted within the time period set forth in the final Office action.
(E) A supplemental amendment filed when there is no suspension of action under 37 CFR 1.103(a) or (c), the amendment will be forwarded to the examiner. Such a supplemental amendment is not entered as a matter of right. See 37 CFR 1.111(a)(2)(ii). The examiner will notify the applicant if the amendment is not approved for entry. The examiner may use form paragraph 7.147. See MPEP § 714.03(a).
(F) A supplemental amendment filed within a suspension period under 37 CFR 1.103(a) or (c)
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(e.g., applicant requested a suspension of action at the time of filing an RCE), the TSS will send the notice which sets a time period of two months for reply. No extensions of time are permitted. Failure to submit a timely reply will result in the application being examined without entry of the supplemental amendment. Applicant’s reply is required to include the corrected section of the amendment.
(G) An amendment filed in response to a Quayle action , the TSS will send the notice which sets a time period of 30 days or one month, whichever is later, for reply. Extensions of time are available under 37 CFR 1.136(a). Failure to reply to this notice will result in abandonment of the application. Applicant’s reply is required to include the corrected section of the amendment.
(H) An after-allowance amendment under 37 CFR 1.312, the amendment will be forwarded to the examiner. Amendments under 37 CFR 1.312 are not entered as matter of right. The examiner will notify the applicant if the amendment is not approved for entry. The examiner may attach a Notice of Non-Compliant Amendment (37 CFR 1.121) to the form PTO-271, Response to Rule 312 Communication (see MPEP § 714.16(d)). The notice provides no new time period. If applicant wishes to file another after-allowance amendment under 37 CFR 1.312, the entire corrected amendment must be submitted before the payment of the issue fee.
Any amendments (including after-final amendments) that add new claims in excess of the number of claims previously paid for in an application must be accompanied by the payment of the required excess claims fees. Failure to pay the excess claims fees will result in non-entry of the amendment. See MPEP § 607.
G. Entry of Amendments, Directions for, Defective
The directions for the entry of an amendment may be defective. Examples include inaccuracy in the paragraph number and/or page and line designated, or a lack of precision where the paragraph or section to which insertion of the amendment is directed occurs. If the correct place of entry is clear from the context, the amendatory paper will be properly amended in the Technology Center and notation thereof, initialed in ink by the examiner, who will assume full responsibility for the change, will be made on the margin of the amendatory paper. In the next Office action, the applicant should be informed of this alteration in the amendment and the entry of the amendment as thus amended. The applicant will also be informed of the nonentry of an amendment where defective directions and context leave doubt as to the intent of applicant.
H. Amendment of Amendments
When a replacement paragraph or section of the specification is to be amended, it should be wholly rewritten and the original insertion canceled. A marked-up version of the replacement paragraph or section of the specification should be presented using underlining to indicate added subject matter and strike-through to indicate deleted subject matter. Matter canceled by amendment can be reinstated only by a subsequent amendment presenting the canceled matter as a new insertion. A claim cancelled by amendment (deleted in its entirety) may be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number.
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III. AMENDMENT IN REEXAMINATION PROCEEDINGS AND REISSUE APPLICATIONS
Amendments in reissue applications must be made in accordance with 37 CFR 1.173. Amendments in ex parte and inter partes reexamination proceedings must be made in accordance with 37 CFR 1.530. In patent-owner-filed ex parte reexaminations, the patent owner may amend at the time of the request for ex parte reexamination in accordance with 37 CFR 1.510(e). In any ex parte reexamination proceeding, no amendment or response can be filed between the date of the request for ex parte reexamination and the order for ex parte reexamination. See 37 CFR 1.530(a). Following the order for ex parte reexamination under 37 CFR 1.525 and prior to the examination phase of ex parte reexamination proceeding, an amendment may be filed only with the patent owner’s statement under 37 CFR 1.530(b). During the examination phase of the ex parte reexamination proceeding, an amendment may be filed:
(A) after the first examination as specified in 37 CFR 1.112;
(B) after final rejection or an appeal has been taken, if the amendment meets the criteria of 37 CFR 1.116; and
(C) when and as specifically required by the examiner.
See also MPEP § 714.12.
For amendments in ex parte reexamination proceedings see MPEP § 2250 and § 2266. For amendments by patent owner in an inter partes reexamination proceeding, see MPEP § 2666.01 and § 2672. For amendments in reissue applications, see MPEP § 1453.
714.01 Signatures to Amendments [R-08.2012]
An amendment must be signed by a person having authority to prosecute the application. An unsigned or improperly signed amendment will not be entered. See MPEP § 714.01(a).
To facilitate any telephone call that may become necessary, it is recommended that the complete
telephone number with area code and extension be given, preferably near the signature.
714.01(a) Unsigned or Improperly Signed Amendment [R-07.2015]
37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
*****
(b) Amendments and other papers . Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by:
(1) A patent practitioner of record;
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34; or
(3) The applicant (§ 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
*****
37 CFR 1.33 (pre-AIA) Correspondence respecting patent applications, reexamination proceedings, and other proceedings (applicable to applications filed before September 16, 2012).
*****
(b) Amendments and other papers . Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application must be signed by:
(1) A patent practitioner of record appointed in compliance with § 1.32(b);
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34;
(3) An assignee as provided for under § 3.71(b) of this chapter; or
(4) All of the applicants (§ 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.
*****
An unsigned amendment or one not properly signed by a person having authority to prosecute the application is not entered. This applies, for instance, where the amendment is signed by only one of two joint inventors and the one signing has not been given a power of attorney by the other inventor.
When an unsigned or improperly signed amendment is received the amendment will be listed in the contents of the application file, but not entered. The examiner will notify applicant of the status of the
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application, advising him or her to furnish a duplicate amendment properly signed or to ratify the amendment already filed. In an application not under final rejection, applicant should be given a 1-month time period in which to ratify the previously filed amendment (37 CFR 1.135(c)).
Applicants may be advised of unsigned amendments by use of form paragraph 7.84.01.
¶ 7.84.01 Paper Is Unsigned
The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide , applicant is given a TIME PERIOD of TWO (2) MONTHS within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).
Sometimes problems arising from unsigned or improperly signed amendments may be disposed of by calling in the local representative of the attorney or agent of record, since he or she may have the authority to sign the amendment.
An amendment signed by a practitioner who has been suspended or excluded from practice under the provisions of 37 CFR Part 11 is not entered. The file and unentered amendment are submitted to the Office of Enrollment and Discipline for appropriate action.
714.01(b) [Reserved]
714.01(c) Signed by Attorney or Agent Not of Record [R-11.2013]
A registered attorney or agent acting in a representative capacity under 37 CFR 1.34, may sign amendments even though he or she does not have a power of attorney in the application. See MPEP § 402.03 .
714.01(d) Amendment Signed by Applicant but Not by Attorney or Agent of Record [R-11.2013]
If an amendment signed by the applicant is received in an application in which there is a duly appointed attorney or agent, the amendment should be entered
and acted upon. Attention should be called to 37 CFR 1.33 in patent applications. Two copies of the action should be prepared, one being sent to the attorney and the other directly to the applicant. The notation: “Copy to applicant” should appear on the original and on both copies.
714.01(e) Amendments Before First Office Action [R-07.2015]
37 CFR 1.115 Preliminary amendments.
(a) A preliminary amendment is an amendment that is received in the Office (§ 1.6) on or before the mail date of the first Office action under § 1.104. The patent application publication may include preliminary amendments (§ 1.215(a)).
(1) A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application.
(2) A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application.
*****
A preliminary amendment is an amendment that is received in the Office on or before the mail date of the first Office action under 37 CFR 1.104. See 37 CFR 1.115(a). For applications filed on or after September 21, 2004 (the effective date of 37 CFR 1.115(a)(1)), a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application. For applications filed before September 21, 2004, a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application if the preliminary amendment was referred to in the first executed oath or declaration under 37 CFR 1.63 filed in the application. See MPEP § 602. Any amendment filed after the filing date of the application is not part of the original disclosure of the application. See MPEP § 706.03(o) regarding new matter. When the Office publishes the application under 35 U.S.C. 122(b), the Office may include preliminary amendments in the patent application publication. See MPEP § 1121.
If a preliminary amendment is filed in a format that cannot be included in the publication, the Office of Patent Application Processing (OPAP) will issue a notice to the applicant requiring the applicant to submit the amendment in a format usable for publication purposes. See 37 CFR 1.115(a)(1) and
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1.215. The only format for an amendment to the specification (other than the claims) that is usable for publication is a substitute specification in compliance with 37 CFR 1.121(b)(3) and 1.125. As a result, the Office has revised its procedures to mail a notice (e.g., “Notice to File Corrected Application Papers”) requiring a substitute specification in compliance with 37 CFR 1.121(b)(3) and 1.125, if an applicant included a preliminary amendment to the specification (other than the claims) on filing.
For applications filed prior to September 16, 2012, where applicant intends to claim the benefit of a prior application under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78, the specific reference to the benefit application may be submitted in an application data sheet (ADS) under 37 CFR 1.76 or in a preliminary amendment to the first sentence(s) of the specification. See 37 CFR 1.78(h). If the specific reference is submitted in a preliminary amendment, a substitute specification will not be required if the preliminary amendment only adds or amends a benefit claim to a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 119(e). If an applicant receives a notice from OPAP (e.g., “Notice to File Corrected Application Papers”) requiring a substitute specification because a preliminary amendment was filed that only adds or amends a benefit claim, applicant may reply to the notice explaining that a substitute specification should not have been required because the amendment was only to add or amend a benefit claim. In order to avoid abandonment, applicant should file a reply with the required substitute specification or an explanation that the substitute specification is not necessary because the preliminary amendment only adds or amends a benefit claim. If the preliminary amendment contains other amendments to the specification (other than the claims), a substitute specification will be required, and a reply to a notice requiring a substitute specification without the substitute specification will be treated as an incomplete reply with no new time period for reply being provided. Note that the above does not apply to applications filed on or after September 16, 2012, because the reference to a prior application as required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78, must be submitted in an application data sheet (ADS) under 37 CFR 1.76.
Requiring a substitute specification (with all preliminary amendments made therein) is also important to ensure that applicants do not circumvent the limitations upon redacted publications set forth in 35 U.S.C. 122(b)(2)(B)(v). As preliminary amendments to the specification, excluding the claims, cannot be easily published, the Office must require a substitute specification whenever an application is filed with a preliminary amendment to the specification, excluding the claims, in order to ensure that the application, including any new matter added by way of a preliminary amendment included on the filing date of the application, is published.
Because a preliminary amendment to the claims or abstract in compliance with 37 CFR 1.121(c) or 1.121(b)(2) will include a complete claim listing or replacement abstract, the Office can publish the amended claims or the replacement abstract as submitted in the preliminary amendment without a substitute specification being filed. Applicants should note, however, that there is no need to file a preliminary amendment to the claims on filing. By making the new claim set part of the originally filed specification, applicant may avoid having to pay an application size fee, as both the specification (including the claims) and any preliminary amendment are used in counting the number of pages for purposes of 37 CFR 1.16(s). The claim set submitted should be the set of claims intended to be examined, and when the claims submitted on filing are part of the specification (on sequentially numbered pages of the specification (see 37 CFR 1.52(b)(5))), no status identifiers and no markings showing the changes need to be used.
A preliminary amendment filed with a submission to enter the national stage of an international application under 35 U.S.C. 371 is not part of the original disclosure under 37 CFR 1.115(a) because it was not present on the international filing date accorded to the application under PCT Article 11. See MPEP § 1893.03(b). Accordingly, a “Notice to File Corrected Application Papers” requiring a substitute specification will not ordinarily be mailed in an international application even if the national stage submission includes a preliminary amendment.
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Since a request for continued examination (RCE) is not a new application, an amendment filed before the first Office action after the filing of the RCE is not a preliminary amendment. See MPEP § 706.07(h).Any amendment canceling claims in order to reduce the excess claims fees should be filed before the expiration of the time period set forth in a notice that requires excess claims fees. Such an amendment would be effective to reduce the number of claims to be considered in calculating the excess claims fees. See MPEP § 607.
I. PRELIMINARY AMENDMENTS MUST COMPLY WITH 37 CFR 1.121
Any preliminary amendment, regardless of when it is filed, must comply with 37 CFR 1.121, e.g., the preliminary amendment must include a complete listing of all of the claims and each section of the amendment must begin on a separate sheet of paper. See MPEP § 714. Preliminary amendments made in a transmittal letter of the application will not comply with 37 CFR 1.121. For example, applicants should include the reference to a prior filed application in the first sentence(s) of the specification following the title (for applications filed prior to September 16, 2012) or in an application data sheet in compliance with 37 CFR 1.78 instead of submitting the reference in a preliminary amendment in a transmittal letter. See MPEP § 211 et seq. If a preliminary amendment filed after the filing date of the application fails to comply with 37 CFR 1.121, applicant will be notified by way of a Notice of Non-Compliant Amendment and given a non-extendable period of two months to bring the amendment into compliance with 37 CFR 1.121. If the applicant takes no corrective action, examination of the application will commence without consideration of the proposed changes in the non-compliant preliminary amendment. If a preliminary amendment that is present on the filing date of the application fails to comply with 37 CFR 1.121, the Office of Patent Application Processing (OPAP) will notify applicant of the non-compliance and give a two-month time period to correct the non-compliance to avoid the abandonment of the application. See MPEP § 714.
Filing a preliminary amendment is not recommended because the changes made by the preliminary
amendment may not be reflected in the patent application publication even if the preliminary amendment is referred to in an oath or declaration. If there is insufficient time to have the preliminary amendment be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun, the preliminary amendment will not be reflected in the patent application publication. Technical preparations for publication of an application generally begin four months prior to the projected date of publication. For more information on publication of applications, see MPEP § 1121. Applicants may avoid preliminary amendments by incorporating any desired amendments into the text of the specification including a new set of claims, even where the application is a continuation or divisional application of a previously filed patent application. In such a continuation or divisional application, a clean copy of a specification (i.e., reflecting amendments made in the parent application) may be submitted together with a copy of the oath or declaration from the previously filed application. See 37 CFR 1.63(d)(1) and MPEP § 201.06(c).
II. PRELIMINARY AMENDMENTS PRESENT ON THE FILING DATE OF THE APPLICATION
Applicants are strongly discouraged from submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application.
For applications filed on or after September 21, 2004 (the effective date of 37 CFR 1.115(a)(1)), a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application.
For applications filed before September 21, 2004, a preliminary amendment that was present on the filing date of the application is part of the original disclosure of the application if the preliminary amendment was referred to in the first oath or declaration in compliance with 37 CFR 1.63 filed in the application. See MPEP §§ 602 and 608.04(b). If the preliminary amendment was not referred to in the oath or declaration, applicant should submit a
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supplemental oath or declaration under 37 CFR 1.67 referring to both the application and the preliminary amendment filed with the original application. A surcharge under 37 CFR 1.16(f) will also be required unless it has been previously paid.
III. PRELIMINARY AMENDMENTS MUST BE TIMELY
Any preliminary amendments should either accompany the application or be filed after the application has received its application number and filing date so that the preliminary amendments would include the appropriate identifications (e.g., the application number and filing date). See MPEP § 502. Any amendments filed after the mail date of the first Office action is not a preliminary amendment. If the date of receipt (37 CFR 1.6) of the amendment is later than the mail date of the first Office action and is not responsive to the first Office action, the Office will not mail a new Office action, but simply advise the applicant that the amendment is nonresponsive to the first Office action and that a responsive reply must be timely filed to avoid abandonment. See MPEP § 714.03.
IV. PRELIMINARY AMENDMENTS MAY BE DISAPPROVED
37 CFR 1.115 Preliminary amendments. *****
(b) A preliminary amendment in compliance with § 1.121 will be entered unless disapproved by the Director.
(1) A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.
(2) A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. Factors that will be considered in disapproving a preliminary amendment include:
(i) The state of preparation of a first Office action as of the date of receipt (§ 1.6) of the preliminary amendment by the Office; and
(ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.
(3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than:
(i) Three months from the filing date of an application under § 1.53(b);
(ii) The filing date of a continued prosecution application under § 1.53(d); or
(iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application.
(4) The time periods specified in paragraph (b)(3) of this section are not extendable.
A preliminary amendment filed in compliance with 37 CFR 1.121 will be entered unless it is disapproved by the Director. A preliminary amendment will be disapproved by the Director if the preliminary amendment cancels all the claims in the application without presenting any new or substitute claims. A preliminary amendment may also be disapproved by the Director if the preliminary amendment unduly interferes with the preparation of an Office action. 37 CFR 1.115(b).
A. Cancellations of All the Claims
If applicant files a preliminary amendment (whether submitted prior to, on or after the filing date of the application) seeking cancellation of all claims in the application without presenting any new claims, the Office will not enter such an amendment. See Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1369 (Fed. Cir. 2001), 37 CFR 1.115(b)(1), and MPEP § 601.01(e). Thus, the application will not be denied a filing date merely because such a preliminary amendment was submitted on filing. For fee calculation purposes, the Office will treat such an application as containing only a single claim. In most cases, an amendment that cancels all the claims in the application without presenting any new claims would not meet the requirements of 37 CFR 1.121(c) that requires a complete claim listing. See MPEP § 714. The Office will send a notice of non-compliant amendment (37 CFR 1.121) to applicant and require an amendment in compliance with 37 CFR 1.121.
B. Unduly InterferesWith the Preparation of an Office Action
Once the examiner has started to prepare a first Office action, entry of a preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of the first Office action. Applicants are encouraged to file all preliminary amendments as soon as possible. Entry
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of a preliminary amendment will not be disapproved under 37 CFR 1.115(b)(2) if it is filed no later than:
(A) 3 months from the filing date of the application under 37 CFR 1.53(b);
(B) 3 months from the date the national stage is entered as set forth in 37 CFR 1.491 in an international application;
(C) the filing date of a CPA under 37 CFR 1.53(d) in a design application; or
(D) the last day of any suspension period requested by applicant under 37 CFR 1.103 (see MPEP § 709).
Even if the examiner has spent a significant amount of time preparing the first Office action, entry of a preliminary amendment filed within these time periods should not be disapproved under 37 CFR 1.115(b)(2). These time periods are not extendable. See 37 CFR 1.115(b)(4).
If a preliminary amendment is filed after these time periods and the conditions set forth below are met, entry of the preliminary amendment may be denied subject to the approval of the supervisory patent examiner (MPEP § 1002.02(d)).
1. When Disapproval is Appropriate
The factors that will be considered for denying entry of preliminary amendments under 37 CFR 1.115 include:
(A) The state of preparation of a first Office action as of the date of receipt (37 CFR 1.6) of the preliminary amendment; and
(B) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.
The entry of a preliminary amendment that would unduly interfere with the preparation of an Office action may be denied if the following two conditions are met:
(A) the examiner has devoted a significant amount of time on the preparation of an Office action before the amendment is received in the Office (i.e., the 37 CFR 1.6 receipt date of the amendment); and
(B) the entry of the amendment would require significant additional time in the preparation of the Office action.
For example, if the examiner has spent a significant amount of time to conduct a prior art search or draft an Office action before a preliminary amendment is received by the Office, the first condition is satisfied. Entry of the amendment may be denied if it:
(A) amends the claims;
(B) adds numerous new claims;
(C) amends the specification to change the scope of the claims;
(D) amends the specification so that a new matter issue would be raised;
(E) includes arguments;
(F) includes an affidavit or declaration under 37 CFR 1.131 or 37 CFR 1.132; or
(G) includes evidence traversing rejections from a prior Office action in the parent application,
and would require the examiner to spend significant additional time to conduct another prior art search or revise the Office action (i.e., the second condition is satisfied). This list is not an exhaustive list, and the entry of a preliminary amendment may be denied in other situations that satisfy the two conditions set forth above. Once these conditions are met, the examiner should obtain the approval of the SPE before the entry of the amendment may be denied.
2. When Disapproval is Inappropriate
Denying entry of a preliminary amendment under 37 CFR 1.115(b)(2) is inappropriate if either:
(A) the examiner has NOT devoted a significant amount of time on the preparation of an Office action before the amendment is received in the Office (i.e., the 37 CFR 1.6 receipt date of the amendment); or
(B) the entry of the amendment would NOT require significant additional time in the preparation of the Office action.
Thus, the amendment will be entered unless it is denied entry for other reasons such as those listed in MPEP § 714.19.
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For example, if before the preliminary amendment is received in the Office, the examiner has not started working on the Office action or has started, but has merely inspected the file for formal requirements, then the examiner should enter and consider the preliminary amendment.
Furthermore, even if the examiner has devoted a significant amount of time to prepare an Office action prior to the date the preliminary amendment is received in the Office, it is not appropriate to disapprove the entry of such an amendment if it:
(A) merely cancels some of the pending claims;
(B) amends the claims to overcome rejections under 35 U.S.C. 112, second paragraph;
(C) amends the claims to place the application in condition for allowance; or
(D) only includes changes that were previously suggested by the examiner, and would not require the examiner to spend significant additional time to revise the Office action.
3. Form Paragraph
Form paragraph 7.46 should be used to notify applicant that the entry of a preliminary amendment is denied because the amendment unduly interferes with the preparation of an Office action.
¶ 7.46 Preliminary Amendment Unduly Interferes with the Preparation of an Office Action
The preliminary amendment filed on [1] was not entered because entry of the amendment would unduly interfere with the preparation of the Office action. See 37 CFR 1.115(b)(2). The examiner spent a significant amount of time on the preparation of an Office action before the preliminary amendment was received. On the date of receipt of the amendment, the examiner had completed [2].
Furthermore, entry of the preliminary amendment would require significant additional time on the preparation of the Office action. Specifically, entry of the preliminary amendment would require the examiner to [3].
A responsive reply (under 37 CFR 1.111 or 37 CFR 1.113 as appropriate) to this Office action must be timely filed to avoid abandonment.
If this is not a final Office action, applicant may wish to resubmit the amendment along with a responsive reply under 37 CFR 1.111 to ensure proper entry of the amendment.
Examiner Note:
1. In bracket 1, provide the date that the Office received the preliminary amendment (use the date of receipt under 37 CFR 1.6, not the certificate of mailing date under 37 CFR 1.8).
2. In bracket 2, provide an explanation on the state of preparation of the Office action as of the receipt date of the preliminary amendment. For example, where appropriate insert --the claim analysis and the search of prior art of all pending claims-- or --the drafting of the Office action and was waiting for the supervisory patent examiner’s approval--.
3. In bracket 3, provide a brief explanation of how entry of the preliminary amendment would require the examiner to spend significant additional time in the preparation of the Office action. For example, where appropriate insert --conduct prior art search in another classification area that was not previously searched and required-- or --revise the Office action extensively to address the new issues raised and the new claims added in the preliminary amendment--.
714.02 Must Be Fully Responsive [R-08.2012]
37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action.
(a)(1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
(2) Supplemental replies.
(i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner suggestion(s);
(C) Placement of the application in condition for allowance;
(D) Reply to an Office requirement made after the first reply was filed;
(E) Correction of informalities ( e.g., typographical errors); or
(F) Simplification of issues for appeal.
(ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).
(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply
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to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.
In all cases where reply to a requirement is indicated as necessary for further consideration of the claims, or where allowable subject matter has been indicated in an application, a complete reply must either comply with the formal requirements or specifically traverse each one not complied with.
Drawing and specification corrections, presentation of a new oath and the like are generally considered as formal matters, although the filing of drawing corrections in reply to an objection to the drawings cannot normally be held in abeyance. However, the line between formal matter and those touching the merits is not sharp, and the determination of the merits of an application may require that such corrections, new oath, etc., be insisted upon prior to any indication of allowable subject matter.
The claims may be amended by canceling particular claims, by presenting new claims, or by rewriting particular claims as indicated in 37 CFR 1.121(c). The requirements of 37 CFR 1.111(b) must be complied with by pointing out the specific distinctions believed to render the claims patentable over the references in presenting arguments in support of new claims and amendments.
An amendment submitted after a second or subsequent non-final action on the merits which is otherwise responsive but which increases the number of claims drawn to the invention previously acted
upon is not to be held not fully responsive for that reason alone. (See 37 CFR 1.112, MPEP § 706.)
The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06.
An amendment which does not comply with the provisions of 37 CFR 1.121(b), (c), (d), and (h) may be held not fully responsive. See MPEP § 714.
Replies to requirements to restrict are treated under MPEP § 818.
714.03 Amendments Not Fully Responsive, Action To Be Taken [R-07.2015]
37 CFR 1.135 Abandonment for failure to reply within time period.
*****
(c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
An examiner may treat an amendment not fully responsive to a non-final Office action by:
(A) accepting the amendment as an adequate reply to the non-final Office action to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135;
(B) notifying the applicant that the reply must be completed within the remaining period for reply to the non-final Office action (or within any extension pursuant to 37 CFR 1.136(a)) to avoid abandonment; or
(C) setting a new time period for applicant to complete the reply pursuant to 37 CFR 1.135(c).
The treatment to be given to the amendment depends upon:
(A) whether the amendment is bona fide;
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(B) whether there is sufficient time for applicant’s reply to be filed within the time period for reply to the non-final Office action; and
(C) the nature of the deficiency.
Where an amendment substantially responds to the rejections, objections, or requirements in a non-final Office action (and is a bona fide attempt to advance the application to final action) but contains a minor deficiency (e.g. , fails to treat every rejection, objection, or requirement), the examiner may simply act on the amendment and issue a new (non-final or final) Office action. The new Office action may simply reiterate the rejection, objection, or requirement not addressed by the amendment (or otherwise indicate that such rejection, objection, or requirement is no longer applicable). This course of action would not be appropriate in instances in which an amendment contains a serious deficiency (e.g. , the amendment is unsigned or does not appear to have been filed in reply to the non-final Office action). Where the amendment is bona fide but contains a serious omission, the examiner should: A) if there is sufficient time remaining for applicant’s reply to be filed within the time period for reply to the non-final Office action (or within any extension pursuant to 37 CFR 1.136(a)), notify applicant that the omission must be supplied within the time period for reply; or B) if there is insufficient time remaining, issue an Office action setting a 2-month time period to complete the reply pursuant to 37 CFR 1.135(c). In either event, the examiner should not further examine the application on its merits unless and until the omission is timely supplied.
If a new time period for reply is set pursuant to 37 CFR 1.135(c), applicant must supply the omission within this new time period for reply (or any extensions under 37 CFR 1.136(a) thereof) in order to avoid abandonment of the application. The applicant, however, may file a continuing application during this period (in addition or as an alternative to supplying the omission), and may also file any further reply as permitted under 37 CFR 1.111.
Where there is sufficient time remaining in the period for reply (including extensions under 37 CFR 1.136(a)), the applicant may simply be notified that
the omission must be supplied within the remaining time period for reply. This notification should be made, if possible, by telephone, and, when such notification is made by telephone, an interview summary record (see MPEP § 713.04) must be completed and entered into the file of the application to provide a record of such notification. When notification by telephone is not possible, the applicant must be notified in an Office communication that the omission must be supplied within the remaining time period for reply. For example, when an amendment is filed shortly after an Office action has been mailed, and it is apparent that the amendment was not filed in reply to such Office action, the examiner need only notify the applicant (preferably by telephone) that a reply responsive to the Office action must be supplied within the remaining time period for reply to such Office action.
The practice set forth in 37 CFR 1.135(c) does not apply where there has been a deliberate omission of some necessary part of a complete reply; rather, 37 CFR 1.135(c) is applicable only when the missing matter or lack of compliance is considered by the examiner as being “inadvertently omitted.” For example, if an election of species has been required and applicant does not make an election because he or she believes the requirement to be improper, the amendment on its face is not a “bona fide attempt to advance the application to final action” (37 CFR 1.135(c)), and the examiner is without authority to postpone decision as to abandonment. Similarly, an amendment that would cancel all of the claims in an application and does not present any new or substitute claims is not a bona fide attempt to advance the application to final action. The Office will not enter such an amendment. See Exxon Corp. v. Phillips Petroleum Co. , 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001). If there is time remaining to reply to the non-final Office action (or within any extension of time pursuant to 37 CFR 1.136(a)), applicant will be notified to complete the reply within the remaining time period to avoid abandonment. Likewise, once an inadvertent omission is brought to the attention of the applicant, the question of inadvertence no longer exists. Therefore, a second Office action giving another new (2-month) time period to supply the omission would not be appropriate under 37 CFR 1.135(c).
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37 CFR 1.135(c) authorizes, but does not require, an examiner to give the applicant a new time period to supply an omission. Thus, where the examiner concludes that the applicant is attempting to abuse the practice under 37 CFR 1.135(c) to obtain additional time for filing a reply (or where there is sufficient time for applicant’s reply to be filed within the time period for reply to the non-final Office action), the examiner need only indicate by telephone or in an Office communication (as discussed above) that the reply must be completed within the period for reply to the non-final Office action or within any extension pursuant to 37 CFR 1.136(a) to avoid abandonment.
The practice under 37 CFR 1.135(c) of giving applicant a time period to supply an omission in a bona fide reply does not apply after a final Office action. Amendments after final are approved for entry only if they place the application in condition for allowance or in better form for appeal. Otherwise, they are not approved for entry. See MPEP § 714.12 and § 714.13. Thus, an amendment should be denied entry if some point necessary for a complete reply under 37 CFR 1.113 (after final) was omitted, even if the omission was through an apparent oversight or inadvertence. Where a submission after a final Office action (e.g. , an amendment under 37 CFR 1.116) does not place the application in condition for allowance, the period for reply under 37 CFR 1.113 continues to run until a reply under 37 CFR 1.113 (i.e., a notice of appeal or an amendment that places the application in condition for allowance) is filed. The nature of the omission (e.g. , whether the amendment raises new issues, or would place the application in condition for allowance but for it being unsigned or not in compliance with 37 CFR 1.121) is immaterial. The examiner cannot give the applicant a time period under 37 CFR 1.135(c) to supply the omission; however, applicant may obtain additional time under 37 CFR 1.136(a) to file another or supplemental amendment in order to supply the omission.
When a reply to a final Office action substantially places the application in condition for allowance, an examiner may request that the applicant (or representative) authorize an examiner’s amendment to correct the omission and place the application in condition for allowance, in which case the date of
the reply is the date of such authorization (and not the date the incomplete reply was filed). An examiner also has the authority to enter the reply, withdraw the finality of the last Office action, and issue a new Office action, which may be a non-final Office action, a final Office action (if appropriate), or an action closing prosecution on the merits in an otherwise allowable application under Ex parte Quayle , 25 USPQ 74, 1935 C.D. 11, 435 OG 213 (Comm’r Pat. 1935) (if appropriate). These courses of action, however, are solely within the discretion of the examiner. It is the applicant’s responsibility to take the necessary action in an application under a final Office action to provide a complete reply under 37 CFR 1.113.
Where there is an informality as to the fee in connection with an amendment to a non-final Office action presenting additional claims, the applicant is notified by the technical support staff. See MPEP §§ 607 and 714.10.
Form paragraph 7.95, and optionally form paragraph 7.95.01, should be used where a bona fide reply to a non-final Office action is not fully responsive.
¶ 7.95 Bona Fide, Non-Responsive Amendments
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).
Examiner Note:
This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.
¶ 7.95.01 Lack of Arguments in Response
Applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.
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Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.95.
2. This form paragraph is intended primarily for use in pro se applications.
714.03(a) Supplemental Amendment [R-08.2012]
37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action.
(a)(1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
(2) Supplemental replies.
(i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner suggestion(s);
(C) Placement of the application in condition for allowance;
(D) Reply to an Office requirement made after the first reply was filed;
(E) Correction of informalities ( e.g., typographical errors); or
(F) Simplification of issues for appeal.
(ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).
*****
Applicants are encouraged to include a complete fully responsive reply in compliance with 37 CFR 1.111(b) to an outstanding Office action in the first reply to prevent the need for supplemental replies. Supplemental replies will not be entered as a matter of right, except when a supplemental reply is filed within a suspended period under 37 CFR 1.103(a) or (c) (e.g., a suspension of action requested by the applicant when filing an RCE). See MPEP § 709 regarding suspension of action. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
(A) cancellation of a claim;
(B) adoption of the examiner’s suggestions;
(C) placement of the application in condition of allowance;
(D) reply to an Office requirement made after the first reply was filed;
(E) correction of informalities (e.g., typographical errors); or
(F) simplification of issues for appeal.
When a supplemental reply is filed in sufficient time to be entered into the application before the examiner considers the prior reply, the examiner may approve the entry of the supplemental reply if, after a cursory review, the examiner determines that the supplemental reply is limited to one of the situations set forth above. This list is not exhaustive. The examiner has the discretion to approve the entry of a supplemental reply that is not listed above. If a supplemental reply is a non-compliant amendment under 37 CFR 1.121 (see MPEP § 714), the supplemental reply will not be entered. If a supplemental reply is not approved for entry, the examiner should notify the applicant in the subsequent Office action. If applicant wishes to have a not-entered supplemental reply considered, applicant should include the changes in a reply filed in response to the next Office action. Applicant cannot simply request for its entry in the subsequent reply. The submission of a supplemental reply will cause a reduction of any accumulated patent term adjustment under 37 CFR 1.704(c)(8). If the supplemental reply is approved for entry, the examiner should clearly indicate that the subsequent Office action is responsive to the first reply and the supplemental reply.
Examiners may use form paragraph 7.147 to notify applicants that a supplemental reply is not approved for entry.
¶ 7.147 Supplemental Reply Not Approved for Entry
The supplemental reply filed on [1] was not entered because supplemental replies are not entered as a matter of right except as provided in 37 CFR 1.111(a)(2)(ii). [2].
Examiner Note:
1. Use this form paragraph to notify applicant that the supplemental reply filed on or after October 21, 2004 is not approved for entry.
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2. Do not use this form paragraph if the supplemental reply has been entered. Use the Office Action Summary (PTOL-326) or the Notice of Allowability (PTOL-37), whichever is appropriate, to indicate that the Office action is responsive to the reply filed in compliance with 37 CFR 1.111(b) and the supplemental reply.
3. Do not use this form paragraph if the supplemental reply was filed within the period during which action is suspended by the Office under 37 CFR 1.103(a) or (c). Such supplemental reply must be entered. If the supplemental reply filed during the suspended period is not in compliance with 37 CFR 1.121, a notice of non-compliant amendment (PTOL-324) should be mailed to the applicant.
4. In bracket 1, provide the date that the Office received the supplemental reply (use the date of receipt under 37 CFR 1.6, not the certificate of mailing date under 37 CFR 1.8).
5. In bracket 2, insert a reason for non-entry as noted in 37 CFR 1.111(a)(2)(i). For example, “The supplemental reply is clearly not limited to placement of the application in condition for allowance.”
If a supplemental reply is received in the Office after the mail date of an Office action, and it is not responsive to that Office action, the Office will not mail a new Office action responsive to that supplemental reply. As a courtesy, applicant may be notified that the supplemental reply is nonresponsive to the mailed Office action and that a responsive reply (under 37 CFR 1.111 or 1.113 as the situation may be) to the mailed Office action must be timely filed to avoid abandonment. Also see MPEP § 714.03 for replies not fully responsive and MPEP § 714.05 when the Office action crosses in the mail with a supplemental reply.
714.04 Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty [R-08.2012]
In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the claims should not be allowed. See 37 CFR 1.111 and MPEP § 714.02.
An amendment failing to point out the patentable novelty which the applicant believes the claims present in view of the state of the art disclosed by the references cited or the objections made may be held to be not fully responsive and a time period set to furnish a proper reply if the statutory period has expired or almost expired (MPEP § 714.03). However, if the claims as amended are clearly open
to rejection on grounds of record, a final rejection should generally be made.
714.05 Examiner Should Immediately Review [R-11.2013]
Actions by applicant, especially those filed near the end of the period for reply, should be reviewed as soon as possible upon becoming available to the examiner to determine whether they are completely responsive to the preceding Office action so as to prevent abandonment of the application. If found inadequate, and sufficient time remains, applicant should be notified of the deficiencies and warned to complete the reply within the period. See MPEP § 714.03.
All amended applications forwarded to the examiner should be reviewed at once to determine the following:
(A) If the amendment is properly signed (MPEP § 714.01(a)).
(B) If the amendment has been filed within the statutory period, set shortened statutory period, or time limit (MPEP § 710 - § 710.05).
(C) If the amendment is fully responsive (MPEP § 714.03 and § 714.04) and complies with 37 CFR 1.121 (MPEP § 714).
(D) If the changes made by the amendment warrant transfer (MPEP § 903.08(d)).
(E) If the application is special (MPEP § 708.01).
(F) If claims suggested to applicant for interference purposes have been copied. (MPEP Chapter 2300).
(G) If there is a traversal of a requirement for restriction MPEP § 818.01(a)).
(H) If applicant has cited references (MPEP § 707.05(b) and § 1302.12).
(I) If a terminal disclaimer has been filed (MPEP § 804.02, § 804.03, and § 1490).
(J) If any matter involving security has been added (MPEP § 115).
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ACTION CROSSES AMENDMENT
A supplemental action may be necessary when an amendment is filed on or before the mailing date of the regular action but reaches the Technology Center later. The supplemental action should be promptly prepared. It need not reiterate all portions of the previous action that are still applicable but it should specify which portions are to be disregarded, pointing out that the period for reply runs from the mailing of the supplemental action. The action should be headed “Responsive to amendment of (date) and supplemental to the action mailed (date).”
714.06 [Reserved]
714.07 Amendments Not in Permanent Ink [R-11.2013]
37 CFR 1.52(a) requires “permanent dark ink or its equivalent” to be used on papers which will become part of the record. So-called “Easily Erasable” paper having a special coating so that erasures can be made more easily may not provide a “permanent” copy. However, because application papers are now maintained in an Image File Wrapper, the type of paper is unlikely to be an issue so long as the Office is able to scan and reproduce the papers that were filed.
See MPEP § 608.01 for more discussion on acceptable copies.
714.08 -714.09 [Reserved]
714.10 Claims Added in Excess of Claims Previously Paid For [R-08.2012]
Applicant is required to pay excess claims fees for each claim that is in excess of 3 in independent form or in excess of 20 (whether dependent or independent). Fees for a proper multiple dependent claim are calculated based on the number of claims to which the multiple dependent claim refers (37 CFR 1.75(c)) and a separate fee is also required in each application containing a proper multiple
dependent claim. See MPEP § 607. When applicant adds a new excess claim that is in excess of the number of claims that were previously paid for after taking into account claims that have been canceled, applicant must pay the required excess claims fees before the examiner considers the new claim. For example, in an application that contains 6 independent claims and 30 total claims for which the excess claims fees were previously paid, when applicant cancels 10 claims, 2 of which are independent, and adds 11 claims, 3 of which are
independent, excess claims fees for a 7th
independent claim and a 31st claim are required.
714.11 Amendment Filed During Interference Proceedings [R-08.2012]
See MPEP Chapter 2300.
714.12 Amendments and Other RepliesAfter Final Rejection or Action [R-08.2012]
37 CFR 1.116 Amendments and affidavits or other evidence after final action and prior to appeal.
(a) An amendment after final action must comply with § 1.114 or this section.
(b) After a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913, but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title):
(1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;
(2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or
(3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
(c) The admission of, or refusal to admit, any amendment after a final rejection, a final action, an action closing prosecution, or any related proceedings will not operate to relieve the application or reexamination proceeding from its condition as subject to appeal or to save the application from abandonment under § 1.135, or the reexamination prosecution from termination under § 1.550(d) or § 1.957(b) or limitation of further prosecution under § 1.957(c).
(d)
(1) Notwithstanding the provisions of paragraph (b) of this section, no amendment other than canceling claims, where
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such cancellation does not affect the scope of any other pending claim in the proceeding, can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
(2) Notwithstanding the provisions of paragraph (b) of this section, an amendment made after a final rejection or other final action (§ 1.113) in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913 may not cancel claims where such cancellation affects the scope of any other pending claim in the reexamination proceeding except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
(e) An affidavit or other evidence submitted after a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913 but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title), may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.
(f) Notwithstanding the provisions of paragraph (e) of this section, no affidavit or other evidence can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
(g) After decision on appeal, amendments, affidavits and other evidence can only be made as provided in §§ 1.198 and 1.981, or to carry into effect a recommendation under § 41.50(c) of this title.
Once a final rejection that is not premature has been entered in an application, applicant or patent owner no longer has any right to unrestricted further prosecution. This does not mean that no further amendment or argument will be considered. Any amendment that will place the application either in condition for allowance or in better form for appeal may be entered. Also, amendments filed after a final rejection, but before or on the date of filing an appeal, complying with objections or requirements as to form are to be permitted after final action in accordance with 37 CFR 1.116(b). Amendments filed after the date of filing an appeal may be entered if the amendment complies with 37 CFR 41.33. See MPEP § 1206. Ordinarily, amendments filed after the final action are not entered unless approved by the examiner. See MPEP § 706.07(f), § 714.13 and § 1206.
An affidavit or other evidence filed after a final rejection, but before or on the same date of filing an appeal, may be entered upon a showing of good and
sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e). See 37 CFR 41.33 and MPEP § 1206 for information on affidavit or other evidence filed after appeal.
The prosecution of an application before the examiner should ordinarily be concluded with the final action. However, one personal interview by applicant may be entertained after such final action if circumstances warrant. Thus, only one request by applicant for a personal interview after final should be granted, but in exceptional circumstances, a second personal interview may be initiated by the examiner if in his or her judgment this would
materially assist in placing the application in condition for allowance.
Many of the difficulties encountered in the prosecution of patent applications after final rejection may be alleviated if each applicant includes, at the time of filing or no later than the first reply, claims varying from the broadest to which he or she believes he or she is entitled to the most detailed that he or she is willing to accept.
714.13 Amendments and Other RepliesAfter Final Rejection or Action, Procedure Followed [R-07.2015]
I. FINAL REJECTION — TIME FOR REPLY
If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection. This procedure applies only to a first reply to a final rejection. The following language must be included by the examiner in each final rejection:
A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET
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TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST REPLY IS FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS FINAL ACTION AND THE ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE THREE-MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED STATUTORY PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY EXTENSION FEE PURSUANT TO 37 CFR 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR REPLY EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION.
This wording is part of form paragraphs 7.39, 7.40, 7.40.01, 7.40.02, 7.41, 7.41.03.fti, 7.42.03, and 7.42.09. Form paragraph 7.39 appears in MPEP § 706.07. Form paragraphs 7.40, 7.40.01 and 7.40.02 appear in MPEP § 706.07(a). Form paragraphs 7.41, 7.41.03.fti, and 7.42.09 appear in MPEP § 706.07(b). Form paragraph 7.42.03 appears in MPEP § 706.07(g).
For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, any extension fee would then be calculated from the end of the 3-month period. If the examiner, however, does not mail an advisory action until after the end of 3 months, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension fee may be calculated from that date. In the event that a first reply is not filed within 2 months of the mailing date of the final rejection, any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the end of the reply period set in the final rejection.
Failure to file a reply during the shortened statutory period results in abandonment of the application
unless the time is extended under the provisions of 37 CFR 1.136.
II. ENTRY NOT A MATTER OF RIGHT
It should be kept in mind that applicant cannot, as a matter of right, amend any finally rejected claims, add new claims after a final rejection (see 37 CFR 1.116) or reinstate previously canceled claims.
Except where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR 1.116(b)(3) is expected in all amendments after final rejection. An affidavit or other evidence filed after a final rejection, but before or on the same date of filing an appeal, may be entered upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e). See 37 CFR 41.33 and MPEP § 1206 for information on affidavit or other evidence filed after appeal. Failure to properly reply under 37 CFR 1.113 to the final rejection results in abandonment. A reply under 37 CFR 1.113 is limited to:
(A) an amendment complying with 37 CFR 1.116;
(B) a Notice of Appeal (and appeal fee); or
(C) a request for continued examination (RCE) filed under 37 CFR 1.114 with a submission (i.e., an amendment that meets the reply requirement of 37 CFR 1.111) and the fee set forth in 37 CFR 1.17(e). RCE practice under 37 CFR 1.114 does not apply to utility or plant patent applications filed before June 8, 1995 and design applications.
Further examination of the application may be obtained by filing a continued prosecution application (CPA) under 37 CFR 1.53(d), if the application is a design application. See MPEP § 201.06(d). Effective July 14, 2003, CPA practice does not apply to utility and plant applications.
An amendment filed at any time after final rejection, but before an appeal brief is filed, may be entered upon or after filing of an appeal brief provided the
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total effect of the amendment is to (A) remove issues for appeal, and/or (B) adopt examiner suggestions.
See also MPEP § 1206 and § 1211.
The U.S. Patent and Trademark Office does not recognize “conditional” authorizations to charge an appeal fee if an amendment submitted after a final Office action is not entered. Any “conditional” authorization to charge an appeal fee set forth in 37 CFR 1.17(b) will be treated as an unconditional payment of the fee set forth in 37 CFR 1.17(b).
III. ACTION BY EXAMINER
See also MPEP § 706.07(f).
In the event that a proposed amendment does not place the case in better form for appeal, nor in condition for allowance, applicant should be promptly informed of this fact, whenever possible, within the statutory period. The refusal to enter the proposed amendment should not be arbitrary. The proposed amendment should be given sufficient consideration to determine whether the claims are in condition for allowance and/or whether the issues on appeal are simplified. Ordinarily, the specific deficiencies of the amendment need not be discussed. However, if the proposed amendment raises the issue of new matter, the examiner should identify the subject matter that would constitute new matter. If the proposed amendment presents new issues requiring further consideration and/or search, the examiner should provide an explanation as to the reasons why the proposed amendment raises new issues that would require further consideration and/or search. The reasons for nonentry should be concisely expressed. For example:
(A) The claims, if amended as proposed, would not avoid any of the rejections set forth in the last Office action, and thus the amendment would not place the case in condition for allowance or in better condition for appeal.
(B) The claims, if amended as proposed, would raise the issue of new matter.
(C) The claims as amended present new issues requiring further consideration or search.
(D) Since the amendment presents additional claims without canceling any finally rejected claims it is not considered as placing the application in better condition for appeal. Ex parte Wirt, 1905 C.D. 247, 117 OG 599 (Comm’r Pat. 1905).
Examiners should indicate the status of each claim of record or proposed in the amendment, and which proposed claims would be entered on the filing of an appeal if filed in a separate paper. Whenever such an amendment is entered for appeal purposes, the examiner must indicate on the advisory action which individual rejection(s) set forth in the action from which the appeal was taken (e.g., the final rejection) would be used to reject the new or amended claim(s).
Applicant should be notified, if certain portions of the amendment would be acceptable as placing some of the claims in better form for appeal or complying with objections or requirements as to form, if a separate paper were filed containing only such amendments. Similarly, if the proposed amendment to some of the claims would render them allowable, applicant should be so informed. This is helpful in assuring the filing of a brief consistent with the claims as amended. A statement that the final rejection stands and that the statutory period runs from the date of the final rejection is also in order.
Advisory Action Before the Filing of an Appeal Brief form PTOL-303 should be used to acknowledge receipt of a reply from applicant after final rejection where such reply is prior to filing of an appeal brief and does not place the application in condition for allowance. This form has been devised to advise applicant of the disposition of the proposed amendments to the claims and of the effect of any argument or affidavit not placing the application in condition for allowance or which could not be made allowable by a telephone call to clear up minor matters.
Any amendment timely filed after a final rejection should be immediately considered to determine whether it places the application in condition for allowance or in better form for appeal. An examiner is expected to turn in a response to an amendment after final rejection within an average of 11 calendar days from the time the amendment is received by the examiner. A reply to an amendment after final rejection should be mailed within 30 days of the date
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the amendment is received by the Office. In all instances, both before and after final rejection, in which an application is placed in condition for allowance, applicant should be notified promptly of the allowability of the claims by a Notice of Allowability form PTOL-37. If delays in processing the Notice of Allowability are expected, e.g., because an extensive examiner’s amendment must be entered, and the end of a statutory period for reply is near, the examiner should notify applicant by way of an interview that the application has been placed in condition for allowance, and an Examiner Initiated Interview Summary PTOL-413B should be mailed. Prompt notice to applicant is important because it may avoid an unnecessary appeal and act as a safeguard against a holding of abandonment. Every effort should be made to mail the letter before the period for reply expires.
If no appeal has been filed within the period for reply and no amendment has been submitted to make the application allowable or which can be entered in part (see MPEP § 714.20), the application stands abandoned.
It should be noted that under 37 CFR 1.181(f), the filing of a 37 CFR 1.181 petition will not stay the period for reply to an examiner’s action which may be running against an application. See MPEP § 1206 for appeal and post-appeal procedure. For after final rejection practice relative to affidavits or declarations filed under 37 CFR 1.131(a) and 1.132, see MPEP § 715.09 and § 716.
Form paragraph 7.169 may be used to notify applicant in the Advisory Action that the proposed amendment(s) will be entered upon appeal and how the new or amended claim(s) would be rejected.
¶ 7.169 Advisory Action, Proposed Rejection of Claims, Before Appeal Brief
For purposes of appeal, the proposed amendment(s) will be entered and the proposed rejection(s) detailed below will be included in the Examiner’s Answer. To be complete, such rejection(s) must be addressed in any brief on appeal.
Upon entry of the amendment(s) for purposes of appeal:
Claim(s) [1] would be rejected for the reasons set forth in [2] of the final Office action mailed [3].
Examiner Note:
1. In bracket 1, identify all the new or amended claim(s) that would be grouped together in a single rejection.
2. In bracket 2, identify the rejection by referring to either the paragraph number or the statement of the rejection (e.g., the rejection under 35 U.S.C. 103 based upon A in view of B) in the final Office action under which the claims would be rejected on appeal.
3. Repeat this form paragraph for each group of claims subject to the same rejection(s).
4. Use this form paragraph if item 7 of the Advisory Action form, PTOL-303 (Rev. 9-04 or later) has been checked to indicate that the proposed amendment(s) will be entered upon appeal.
IV. HAND DELIVERY OF PAPERS
Hand carried papers for the Technology Centers (TCs) may only be delivered to the Customer Window which is located at:
U.S. Patent and Trademark Office Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314
Effective December 1, 2003, all official patent application related correspondence for organizations reporting to the Commissioner of Patents (e.g., TCs, the Office of Data Management, and the Office of Petitions) that is hand-carried (or delivered by other delivery services, e.g., FedEx, UPS, etc.) must be delivered to the Customer Window, with a few limited exceptions. See MPEP § 502. Hand-carried amendments and other replies after final rejection (37 CFR 1.116) will no longer be accepted in the TCs. Any courier who attempts delivery of such after final correspondence at a TC (or where it is no longer permitted) will be re-directed to the Customer Window. Patent application related compact disks (CDs) and other non-paper submissions that are hand-carried must be delivered to the Customer Window.
V. EXPEDITED PROCEDURE FOR PROCESSING AMENDMENTS AND OTHER REPLIES AFTER FINAL REJECTION (37 CFR 1.116)
In an effort to improve the timeliness of the processing of amendments and other replies under 37 CFR 1.116, and thereby provide better service to
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the public, an expedited processing procedure has been established which the public may utilize in filing amendments and other replies after final rejection under 37 CFR 1.116.
Amendments and other replies under 37 CFR 1.116 filed via EFS-Web are processed promptly provided the submitter describes the document as an amendment after final rejection. Based on the document description selected by the user, a document code is assigned and a message regarding the document submitted to the USPTO will be forwarded to the appropriate organization for processing, and to the appropriate official for consideration. Accurate document indexing is important to facilitate efficient processing and proper consideration of the document by the USPTO.
In order for an applicant to take advantage of the expedited procedure, an amendment or other reply under 37 CFR 1.116 filed in paper format must be marked as a “Reply under 37 CFR 1.116 — Expedited Procedure - Technology Center (Insert Technology Center Number)” on the upper right portion of the amendment or other reply and the envelope must be clearly marked “Mail Stop AF” in the lower left hand corner. If the reply is mailed to the Office, the envelope should contain only replies under 37 CFR 1.116 and should be mailed to “Mail Stop AF, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia, 22313-1450.” Instead of mailing the envelope to “Mail Stop AF” as noted above, the reply may be hand-carried to the Customer Window located at the above address. The outside of the envelope should be marked “Reply Under 37 CFR 1.116 - Expedited Procedure - Technology Center (Insert Technology Center Number).”
Upon receipt by the U.S. Patent and Trademark Office from the U.S. Postal Service of an envelope appropriately marked “Mail Stop AF,” the envelope will be specially processed by the Mail Center and forwarded to the Technology Center after being uploaded as a scanned image into the file wrapper. Upon receipt of the reply in the TC it will be promptly processed by a designated technical support staff member and forwarded to the examiner, via the supervisory patent examiner (SPE), for action. The SPE is responsible for ensuring that prompt action
on the reply is taken by the examiner. If the examiner to which the application is assigned is not available and will not be available for an extended period, the SPE will ensure that action on the application is promptly taken to assure meeting the USPTO goal described below. Once the examiner has completed his or her consideration of the reply, the examiner’s action will be promptly typed and printed, and mailed by technical support staff or other Office personnel designated to expedite the processing of replies filed under this procedure. The TC supervisory personnel, e.g., the supervisory patent examiner, supervisory applications examiner, and TC Director are responsible for ensuring that actions on replies filed under this procedure are promptly processed and mailed. The U.S. Patent and Trademark Office goal is to mail the examiner’s action on the reply within 1 month from the date on which the amendment or reply is received by the U.S. Patent and Trademark Office.
Applicants are encouraged to utilize this expedited procedure in order to facilitate U.S. Patent and Trademark Office processing of replies under 37 CFR 1.116. If applicants do not utilize the procedure by appropriately marking the envelope and enclosed papers, the benefits expected to be achieved therefrom will not be attained. The procedure cannot be expected to result in achievement of the goal in applications in which the delay results from actions by the applicant, e.g., delayed interviews, applicant’s desire to file a further reply, or a petition by applicant which requires a decision and delays action on the reply. In any application in which a reply under this procedure has been filed and no action by the examiner has been received within the time referred to herein, plus normal mailing time, a telephone call to the SPE of the relevant TC art unit would be appropriate in order to permit the SPE to determine the cause for any delay. If the SPE is unavailable or if no satisfactory reply is received, the TC Director should be contacted.
714.14 Amendments After Allowance of All Claims [R-08.2012]
Under the decision in Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11; 453 OG 213 (Comm’r Pat. 1935), after all claims in an application have been allowed the prosecution of the application on the merits is
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closed even though there may be outstanding formal objections which preclude fully closing the prosecution.
Amendments touching the merits are treated in a manner similar to amendments after final rejection, though the prosecution may be continued as to the formal matters. See MPEP § 714.12 and § 714.13.
See MPEP § 714.20 for amendments entered in part.
See MPEP § 607 for additional fee requirements.
See MPEP § 714 for non-compliant amendments.
Use form paragraph 7.51 to issue an Ex parte Quayle action.
¶ 7.51 Quayle Action
This application is in condition for allowance except for the following formal matters: [1].
Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
Examiner Note:
Explain the formal matters which must be corrected in bracket 1.
714.15 Amendment Received in Technology Center After Mailing of Notice of Allowance [R-08.2012]
Where an amendment, even though prepared by applicant prior to allowance, does not reach the Office until after the notice of allowance has been mailed, such amendment has the status of one filed under 37 CFR 1.312. Its entry is a matter of grace. For discussion of amendments filed under 37 CFR 1.312, see MPEP § 714.16 to § 714.16(e).
If the amendment is filed in the Office prior to the mailing of the notice of allowance, but is received by the examiner after the mailing of the notice of allowance, it may also not be approved for entry. If the amendment is a supplemental reply filed when
action is not suspended, such an amendment will not be approved for entry because supplemental replies are not entered as matter of right. See 37 CFR 1.111(a)(2) and MPEP § 714.03(a). If the amendment is a preliminary amendment, such an amendment may be disapproved under 37 CFR 1.115(b). See MPEP § 714.01(e). If the amendment is approved for entry, the examiner may enter the amendment and provide a supplemental notice of allowance, or withdraw the application from issue and provide an Office action.
The application will not be withdrawn from issue for the entry of an amendment that would reopen the prosecution if the Office action next preceding the notice of allowance closed the application to further amendment, i.e., by indicating the patentability of all of the claims, or by allowing some and finally rejecting the remainder.
After an applicant has been notified that the claims are all allowable, further prosecution of the merits of the application is a matter of grace and not of right. Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11, 453 OG 213 (Comm’r Pat. 1935).
714.16 Amendment After Notice of Allowance, 37 CFR 1.312 [R-07.2015]
37 CFR 1.312 Amendments after allowance.
No amendment may be made as a matter of right in an application after the mailing of the notice of allowance. Any amendment filed pursuant to this section must be filed before or with the payment of the issue fee, and may be entered on the recommendation of the primary examiner, approved by the Director, without withdrawing the application from issue.
The amendment of an application by applicant after allowance falls within the guidelines of 37 CFR 1.312. Further, the amendment of an application broadly encompasses any change in the file record of the application. Accordingly, the following are examples of “amendments” by applicant after allowance which must comply with 37 CFR 1.312:
(A) an amendment to the specification,
(B) a change in the drawings,
(C) an amendment to the claims,
(D) a change in the inventorship,
(E) the submission of prior art,
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(F) a request to correct the spelling of an inventor’s name (37 CFR 1.48(f)),
(G) a request to change the order of the names of the inventors (37 CFR 1.48(f)), etc.
Finally, it is pointed out that an amendment under 37 CFR 1.312 must be filed on or before the date the issue fee is paid, except where the amendment is required by the Office of Data Management, see MPEP § 714.16(d), subsection III. An amendment under 37 CFR 1.312 must comply with the provisions of 37 CFR 1.121. If the amendment is non-compliant under 37 CFR 1.121 and the entry of the amendment would have been otherwise recommended, the examiner may enter the amendment and correct the non-compliance (e.g., an incorrect status identifier) using an examiner’s amendment. See MPEP § 714.
The Director has delegated the approval of recommendations under 37 CFR 1.312 to the supervisory patent examiners.
With the exception of a supplemental oath or declaration submitted in a reissue, a supplemental oath or declaration is not treated as an amendment under 37 CFR 1.312. See MPEP § 603.01. A supplemental reissue oath or declaration is treated as an amendment under 37 CFR 1.312 because the correction of the patent which it provides is an amendment of the patent, even though no amendment is physically entered into the specification or claim(s). Thus, for a reissue oath or declaration submitted after allowance to be entered, the reissue applicant must comply with 37 CFR 1.312 in the manner set forth in this section.
After the Notice of Allowance has been mailed, the application is technically no longer under the jurisdiction of the primary examiner. He or she can, however, make examiner’s amendments (see MPEP § 1302.04) and has authority to enter amendments submitted after Notice of Allowance of an application which embody merely the correction of formal matters in the specification or drawing, or formal matters in a claim without changing the scope thereof, or the cancellation of claims from the application, without forwarding to the supervisory patent examiner for approval.
Amendments other than those which merely embody the correction of formal matters without changing the scope of the claims require approval by the supervisory patent examiner. The Technology Center (TC) Director establishes TC policy with respect to the treatment of amendments directed to trivial informalities which seldom affect significantly the vital formal requirements of any patent, namely, (A) that its disclosure be adequately clear, and (B) that any invention present be defined with sufficient clarity to form an adequate basis for an enforceable contract.
Consideration of an amendment under 37 CFR 1.312 cannot be demanded as a matter of right. Prosecution of an application should be conducted before, and thus be complete including editorial revision of the specification and claims at the time of the Notice of Allowance. However, where amendments of the type noted are shown (A) to be needed for proper disclosure or protection of the invention, and (B) to require no substantial amount of additional work on the part of the Office, they may be considered and, if proper, entry may be recommended by the primary examiner.
The requirements of 37 CFR 1.111(c) (MPEP § 714.02) with respect to pointing out the patentable novelty of any claim sought to be added or amended, apply in the case of an amendment under 37 CFR 1.312, as in ordinary amendments. See MPEP §§ 713.04 and 713.10 regarding interviews. As to amendments affecting the disclosure, the scope of any claim, or that add a claim, the remarks accompanying the amendment must fully and clearly state the reasons on which reliance is placed to show:
(A) why the amendment is needed;
(B) why the proposed amended or new claims require no additional search or examination;
(C) why the claims are patentable; and
(D) why they were not presented earlier.
I. NOT TO BE USED FOR CONTINUED PROSECUTION
37 CFR 1.312 was never intended to provide a way for the continued prosecution of an application after it has been passed for issue. When the recommendation is against entry, a detailed statement
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of reasons is not necessary in support of such recommendation. The simple statement that the proposed claim is not obviously allowable and briefly the reason why is usually adequate. Where appropriate, any one of the following reasons is considered sufficient:
(A) an additional search is required;
(B) more than a cursory review of the record is necessary; or
(C) the amendment would involve materially added work on the part of the Office, e.g., checking excessive editorial changes in the specification or claims.
Where claims added by amendment under 37 CFR 1.312 are all of the form of dependent claims, some of the usual reasons for nonentry are less likely to apply although questions of new matter, sufficiency of disclosure, or undue multiplicity of claims could arise.
See MPEP §§ 607 and 714.16(c) for additional fee requirements.
II. AMENDMENTS FILED AFTER PAYMENT OF ISSUE FEE
No amendments should be filed after the date the issue fee has been paid.
¶ 13.10 Amendment Filed After the Payment of Issue Fee, Not Entered
Applicant’s amendment filed on [1] will not be entered because the amendment was filed after the issue fee was paid. 37 CFR 1.312 no longer permits filing an amendment after the date the issue fee has been paid.
Examiner Note:
1. Use this paragraph with form PTOL-90 or PTO-90C.
2. In bracket 1, insert the date of the amendment.
714.16(a) Amendments Under 37 CFR 1.312, Copied Patent Claims [R-08.2012]
See MPEP Chapter 2300 for the procedure to be followed when an amendment is received after notice of allowance which includes one or more claims copied or substantially copied from a patent.
The entry of the copied patent claims is not a matter of right. See MPEP § 714.19.
See MPEP § 607 and § 714.16(c) for additional fee requirements.
714.16(b) Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208 [R-08.2012]
Where an amendment filed with a motion under 37 CFR 41.208(c)(2) applies to an application in issue, the amendment is not entered unless and until the motion has been granted.
714.16(c) Amendments Under 37 CFR 1.312, Additional Claims [R-08.2012]
If the amendment under 37 CFR 1.312 adds claims (total and independent) in excess of the number previously paid for, additional fees are required. The amendment is not considered by the examiner unless accompanied by the full fee required. See MPEP § 607 and 35 U.S.C. 41.
714.16(d) Amendments Under 37 CFR 1.312, Handling [R-07.2015]
I. AMENDMENTS AFFECTING THE DISCLOSURE OF THE SPECIFICATION,ADDING CLAIMS, OR CHANGING THE SCOPE OF ANY CLAIM
Amendments under 37 CFR 1.312 are sent to the Office of Patent Application Processing (OPAP) to be scanned and uploaded into the IFW. Thereafter OPAP messages the Office of Data Management, which reviews the message and forwards the message to the Technology Center (TC) which allowed the application. Once the TC completes the action, the TC will message the Office of Data Management that issue processing can resume. If an amendment under 37 CFR 1.312 has been filed directly with the TC, the paper will be forwarded to OPAP for scanning.
Hand delivered amendments under 37 CFR 1.312 are no longer accepted in the TC. Hand delivered amendments (unless specifically required by the
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Office of Data Management, see subsection III. below) may only be delivered to the Customer Window located at:
U.S. Patent and Trademark Office Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314
In the event that the class and subclass in which the application is classified has been transferred to another TC after the application was allowed, the proposed amendment, file and drawing (if any) are transmitted directly to said other TC and the Publishing Division notified. If the examiner who allowed the application is still employed in the U.S. Patent and Trademark Office but not in said other TC, he or she may be consulted about the propriety of the proposed amendment and given credit for any time spent in giving it consideration.
The amendment is PROMPTLY considered by the examiner who indicates whether or not its entry is recommended by using the typewriter tool in Adobe Acrobat to annotate the amendment with “Enter — 312,” “Do Not Enter” or “Enter In Part” in the upper left corner.
In addition, the amendment must comply with the provisions of 37 CFR 1.121. See MPEP § 714.
If the amendment is favorably considered, it is entered and a Response to Rule 312 Communication (PTO-271) is prepared. The primary examiner indicates his or her recommendation by stamping and signing his or her name on the PTO-271. Form paragraph 7.85 may also be used to indicate entry.
¶ 7.85 Amendment Under 37 CFR 1.312 Entered
The amendment filed on [1] under 37 CFR 1.312 has been entered.
Examiner Note:
Use this form paragraph both for amendments under 37 CFR 1.312 that do not affect the scope of the claims (may be signed by primary examiner) and for amendments being entered under 37 CFR 1.312 which do affect the scope of the claims (requires signature of supervisory patent examiner). See MPEP § 714.16.
If the examiner’s recommendation is completely adverse, a Response to Rule 312 Communication form PTO-271 is prepared and signed by the primary examiner.
Form paragraph 7.87 may also be used to indicate nonentry.
¶ 7.87 Amendment Under 37 CFR 1.312 Not Entered
The proposed amendment filed on [1] under 37 CFR 1.132 has not been entered. [2]
Examiner Note:
The reasons for non-entry should be specified in bracket 2, for example:
--The amendment changes the scope of the claims.--
In either case, whether the amendment is entered or not entered, the file, drawing, and unmailed notices are forwarded to the supervisory patent examiner for consideration, approval, and mailing.
For entry-in-part, see MPEP § 714.16(e).
The filling out of the appropriate form by the technical support staff does not signify that the amendment will be entered; although the amendment paper is placed in the application file, it is not officially entered unless and until approved by the supervisory patent examiner.
See MPEP §§ 607 and 714.16(c) for additional fee requirements.
II. AMENDMENTS WHICH EMBODY MERELY THE CORRECTION OF FORMAL MATTERS IN THE SPECIFICATION, FORMAL CHANGES IN A CLAIM WITHOUT CHANGING THE SCOPE THEREOF, ORTHE CANCELLATION OF CLAIMS
The examiner indicates approval of amendments concerning merely formal matters by writing “Enter” thereon with the stamper tool in Adobe Acrobat. Such amendments do not require submission to the supervisory patent examiner prior to entry. See MPEP § 714.16. The Response to Rule 312 Communication form PTO-271 is date stamped and mailed by the TC. If such amendments are disapproved either in whole or in part, they require the signature of the supervisory patent examiner.
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III. AMENDMENTS REQUIRED BY THE OFFICE OF DATA MANAGEMENT
In preparation of a patent for issuance as a patent grant, if the Office of Data Management discovers an error in the text, or drawings of a patent application, including any missing text, or an inconsistency between the drawings and the application papers, the Office of Data Management may require an appropriate amendment to the specification or drawings. 37 CFR 1.312, however, does not permit an amendment after the payment of the issue fee without withdrawal of the application from issue. In order to be able to accept such an amendment as may be required without having to withdraw an application from issue, the Office of Data Management has been delegated the authority to waive the requirement of 37 CFR 1.312 and accept an amendment filed after the payment of the issue fee. Furthermore, these amendments required by the Office of Data Management may be hand delivered to the Office of Data Management located at:
Office of Data Management Randolph Square Building 9th Floor 2800 South Randolph Street Arlington, VA 22206
714.16(e) Amendments Under 37 CFR 1.312, Entry in Part [R-11.2013]
The general rule that an amendment cannot be entered in part and refused in part should not be relaxed, but when, under 37 CFR 1.312, an amendment, for example, is proposed containing a plurality of claims or amendments to claims, some of which may be entered and some not, the acceptable claims or amendments should be entered in the application. If necessary, the claims should be renumbered to run consecutively with the claims already in the case. The examiner should annotate the amendments by using the Strike-Out Line tool to cross out any refused claims or amendments.
The examiner should then submit a Response to Rule 312 Communication form PTO-271 recommending the entry of the acceptable portion of the amendment and the nonentry of the remaining portion together with his or her reasons therefor. The claims entered should be indicated by number in this response.
Applicant may also be notified by using form paragraph 7.86.
¶ 7.86 Amendment Under 37 CFR 1. 312 Entered in Part
The amendment filed on [1] under 37 CFR 1.312 has been entered-in-part. [2]
Examiner Note:
When an amendment under 37 CFR 1.312 is proposed containing plural changes, some of which may be acceptable and some not, the acceptable changes should be entered.An indication of which changes have and have not been entered with appropriate explanation should follow in bracket 2.
Handling is similar to complete entry of a 37 CFR 1.312 amendment.
Entry in part is not recommended unless the full additional fee required, if any, accompanies the amendment. See MPEP § 607 and § 714.16(c).
714.17 Amendment Filed After the Period for Reply Has Expired [R-08.2012]
When an application is not prosecuted within the period set for reply and thereafter an amendment is filed without a petition for extension of time and fee pursuant to 37 CFR 1.136(a), such amendment shall be placed in the file of the application, but not formally entered. The technical support staff shall immediately notify the applicant, by telephone and letter, that the amendment was not filed within the time period and therefore cannot be entered and that the application is abandoned unless a petition for extension of time and the appropriate fee are timely filed. See MPEP § 711.02.
See MPEP § 710.02(e) for a discussion of the requirements of 37 CFR 1.136(a).
714.18 Entry of Amendments [R-11.2013]
All amendments received in the technical support staff sections are processed and distributed to the examiners.
Every mail delivery should be carefully screened so that all amendments replying to a final action in which a time period is running against the applicant
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§ 714.18EXAMINATION OF APPLICATIONS
are promptly processed (e.g., within the next 24 hours).
The purpose of this procedure is to ensure uniform and prompt treatment by the examiners of all applications where the applicant is awaiting a reply to a proposed amendment after final action. In cases of this type, the applicant should receive an Office communication in sufficient time to adequately consider his or her next action if the application is not allowed. Consequently, technical support staff handling will continue to be special when these applications are returned by the examiners to the technical support staff.
Evaluation of the amendment after final rejection for compliance with 37 CFR 1.121 should be left to the examiner, and not treated by the technical support staff before forwarding the amendment to the examiner. If the examiner determines that the proposed amendment is not in compliance with 37 CFR 1.121, the examiner should notify applicant of this fact and attach a Notice of Non-Compliant Amendment to the advisory action. See MPEP § 714.
Amendments are entered as papers into the IFW. When several amendments are made in an application on the same day no particular order as to the hour of the receipt or the mailing of the amendments can be assumed, but consideration of the application must be given as far as possible as though all the papers filed were a composite single paper.
After entry of the amendment the application is “up for action.” It is forwarded to the examiner, and he or she is responsible for its proper disposal. The examiner should immediately inspect the amendment as set forth in MPEP § 714.05. After inspection, if no immediate or special action is required, the application awaits examination in regular order.
See MPEP § 714 for the treatment of amendments that are not in compliance with 37 CFR 1.121.
714.19 List of Amendments, Entry Denied [R-11.2013]
The following types of amendments are ordinarily denied entry:
(A) An amendment presenting an unpatentable claim, or a claim requiring a new search or otherwise raising a new issue in an application whose prosecution before the primary examiner has been closed, as where
(1) All claims have been allowed,
(2) All claims have been finally rejected (for exceptions see MPEP § 714.12, § 714.13, and § 714.20, item (D)),
(3) Some claims have been allowed and the remainder finally rejected. See MPEP § 714.12 to § 714.14.
(B) Substitute specification that does not comply with 37 CFR 1.125. See MPEP § 608.01(q) and § 714.20.
(C) A patent claim suggested by the examiner and not presented within the time limit set or an extension thereof, unless entry is authorized by the Director. See MPEP Chapter 2300.
(D) While copied patent claims are generally admitted even though the application is under final rejection or on appeal, under certain conditions, the claims may be refused entry. See MPEP Chapter 2300.
(E) An unsigned or improperly signed amendment or one signed by a suspended or excluded attorney or agent.
(F) An amendment filed in the U.S. Patent and Trademark Office after the expiration of the statutory period or set time period for reply and any extension thereof. See MPEP § 714.17.
(G) An amendment so worded that it cannot be entered with certain accuracy. See MPEP § 714, subsection II.G.
(H) An amendment canceling all of the claims and presenting no substitute claim or claims. See 37 CFR 1.115(b)(1), MPEP § 711.01 and § 714.01(e).
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(I) An amendment after a notice of allowance has been mailed in an application, with certain limited exceptions. See MPEP § 714.16.
(J) Amendments to the drawing held by the examiner to contain new matter are not entered until the question of new matter is settled. This practice of nonentry because of alleged new matter, however, does not apply in the case of amendments to the specification and claims. See MPEP § 608.04 and § 706.03(o).
(K) An amendatory paper containing objectionable remarks that, in the opinion of the examiner, brings it within the condemnation of 37 CFR 1.3, will be submitted to the Deputy Commissioner for Patent Examination Policy. See MPEP § 714.25 and MPEP § 1002.02(b). If the Deputy Commissioner determines that the remarks are in violation of 37 CFR 1.3, he or she will notify the applicant of the non-entry of the paper.
(L) Amendments that cannot be scanned or clearly reproduced. See MPEP § 714.07.
(M) An amendment presenting claims (total and independent) in excess of the number previously paid for and not accompanied by the full fee for the claims or an authorization to charge the fee to a deposit account or credit card. See MPEP § 509 and § 607.
(N) An amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the nonelected invention should not be entered. Such an amendment is nonresponsive. Applicant should be notified as directed in MPEP § 714.03 and § 714.05. See MPEP § 821.03.
(O) An amendment including changes to the specification/claims which is not in compliance with 37 CFR 1.121, e.g., one which does not include replacement paragraphs or claim listings. See MPEP § 714.
(P) A preliminary amendment that unduly interferes with the preparation of a first Office action. Factors to be considered in denying entry of the preliminary amendment are set forth in 37 CFR 1.115(b). See MPEP § 714.01(e).
(Q) A supplemental reply is not entered as a matter of right unless it is filed during a suspension period under 37 CFR 1.103(a) or (c). See 37 CFR 1.111(a)(2) and MPEP § 714.03(a).
While amendments falling within any of the foregoing categories should not be entered by the examiner at the time of filing, a subsequent showing by applicant may lead to entry of the amendment.
714.20 List of Amendments Entered in Part [R-11.2013]
To avoid confusion of the record the general rule prevails that an amendment should not be entered in part. At times, the strict observance of its letter may sometimes work more harm than would result from its infraction, especially if the amendment in question is received at or near the end of the period for reply. Thus:
(A) An “amendment” presenting an unacceptable substitute specification along with amendatory matter, as amendments to claims or new claims, should be entered in part, rather than refused entry in toto. The substitute specification should be denied entry and so marked, while the rest of the paper should be entered. The application as thus amended is acted on when reached in its turn, the applicant being advised that the substitute specification has not been entered.
See 37 CFR 1.125 and MPEP § 608.01(q) for information regarding the submission of a substitute specification.
Under current practice, substitute specifications may be voluntarily filed by the applicant if he or she desires. A proper substitute specification will normally be accepted by the Office even if it has not been required by the examiner. However, entry of a substitute specification filed after the notice of allowance has been mailed (37 CFR 1.312) is not a matter of right.
(B) An amendment under 37 CFR 1.312, which in part is approved and in other part disapproved, is entered only as to the approved part. See MPEP § 714.16(e).
(C) In an application in which prosecution on the merits is closed, i.e., after the issuance of an Ex Parte Quayle action, where an amendment is presented curing the noted formal defect and adding one or more claims some or all of which are in the opinion of the examiner not patentable, or will require a further search, the amendment in such a case will be entered only as to the formal matter.
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Applicant has no right to have new claims considered or entered at this point in the prosecution.
(D) In an amendment accompanying a motion granted only in part, the amendment is entered only to the extent that the motion was granted.
NOTE. The examiner writes “Enter” with the Stamper tool in Adobe Acrobat in the left margin opposite the enterable portions.
714.21 Amendments Inadvertently Entered, No Legal Effect [R-11.2013]
If the technical support staff inadvertently enters an amendment when it should not have been entered, such entry is of no legal effect, and the same action is taken as if the changes had not been actually made, inasmuch as they have not been legally made. Unless such unauthorized entry is deleted, suitable notation should be made on the margin of the amendatory paper, as “Not Officially Entered” with the typewriter tool in Adobe Acrobat.
If an amendatory paper is to be retained in the file, even though not entered, it should be given a paper number and listed on the file wrapper with the notation “Not Entered.” See 37 CFR 1.3 and MPEP § 714.25 for an example of a paper which may be denied entry.
714.22 -714.24 [Reserved]
714.25 Discourtesy of Applicant or Attorney [R-11.2013]
37 CFR 1.3 Business to be conducted with decorum and courtesy.
Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Director and will not be entered. A notice of the non-entry of the paper will be provided. Complaints against examiners and other employees must be made in correspondence separate from other papers.
All papers received in the U.S. Patent and Trademark Office should be briefly reviewed to determine whether any discourteous remarks appear therein.
If the attorney or agent is discourteous in the remarks or arguments in his or her amendment or other paper submitted for entry in an application file, either the discourtesy should be entirely ignored or the paper should be submitted to the Deputy Commissioner for Patent Examination Policy for review. See MPEP § 1002.02(b). If the Deputy Commissioner determines that the remarks are in violation of 37 CFR 1.3, the Deputy Commissioner will send a notice of non-entry of the paper to the applicant. At its discretion, the Office may also close the non-entered paper in the IFW of the application or remove the paper from the IFW.
715 Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) [R-07.2015]
[Editor Note: This MPEP section and the provisions of 37 CFR 1.131(a) are not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
37 CFR 1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.
(a) When any claim of an application or a patent under reexamination is rejected, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination, or the party qualified under § 1.42 or § 1.46, may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. The effective date of a U.S. patent, U.S. patent application publication, or international application publication under PCT Article 21(2) is the earlier of its publication date or the date that it is effective as a reference under 35 U.S.C. 102(e) as in effect on March 15, 2013. Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. Prior invention may not be established under this section if either:
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(1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application naming another inventor which claims interfering subject matter as defined in § 41.203(a) of this chapter, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this chapter; or
(2) The rejection is based upon a statutory bar.
(b) The showing of facts for an oath or declaration under paragraph (a) of this section shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained.
(c) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.
(d) The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
(1) A claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013.
(e) In an application for patent to which the provisions of § 1.130 apply, and to any patent issuing thereon, the provisions of this section are applicable only with respect to a rejection under 35 U.S.C. 102(g) as in effect on March 15, 2013.
Under 37 CFR 1.131(a) which provides for the establishment of a date of completion of the
invention in a NAFTA or WTO member country, as well as in the United States, an applicant or patent owner can establish a date of completion in a NAFTA member country on or after December 8, 1993, the effective date of section 331 of Public Law 103-182, the North American Free Trade Agreement Act, and can establish a date of completion in a WTO member country other than a NAFTA member country on or after January 1, 1996, the effective date of section 531 of Public Law 103-465, the Uruguay Round Agreements Act (URAA). Acts occurring prior to the effective dates of NAFTA or URAA may be relied upon to show completion of the invention; however, a date of completion of the invention may not be established under 37 CFR 1.131(a) before December 8, 1993, in a NAFTA country or before January 1, 1996, in a WTO country other than a NAFTA country, in applications subject to pre-AIA 35 U.S.C. 104.
If a country joined the WTO after January 1, 1996, the effective date for proving inventive activity in that country for the purpose of pre-AIA 35 U.S.C. 104 and 37 CFR 1.131(a) is the date the country becomes a member of the WTO. See MPEP § 213.01 for a list that includes WTO member countries.
Any printed publication or activity dated prior to an applicant’s or patent owner’s effective filing date, or any domestic patent of prior filing date, which is in its disclosure pertinent to the claimed invention, is available for use by the examiner as a reference in the rejection of the claims of the application or patent under reexamination. In addition, patent application publications and certain international application publications having an effective prior art date prior to the application being examined may be used in a rejection of the claims. See MPEP §§ 706.02(a) and 2136 - 2136.03.
Such a rejection may be overcome, in certain instances noted below, by filing of an affidavit or declaration under 37 CFR 1.131(a), known as “swearing behind” the reference.
It should be kept in mind that it is the rejection that is withdrawn and not the reference.
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I. SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS CAN BE USED
Affidavits or declarations under 37 CFR 1.131 may be used to overcome rejections in applications subject to pre-AIA 35 U.S.C. 102, and to overcome rejections under pre-AIA 35 U.S.C. 102(g) in applications subject to pre-AIA 35 U.S.C. 102(g) and current 35 U.S.C. 102, for example:
(A) To antedate a reference or activity that qualifies as prior art under pre-AIA 35 U.S.C. 102(a) and not under pre-AIA 35 U.S.C. 102(b), e.g., where the prior art date under pre-AIA 35 U.S.C. 102(a) of the patent, the publication or activity used to reject the claim(s) is less than 1 year prior to applicant’s or patent owner’s effective filing date. If the prior art reference under pre-AIA 35 U.S.C. 102(a) is a U.S. patent or U.S. patent application publication, the reference may not be antedated if it claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05 for a discussion of “interfering subject matter.”
(B) To antedate a reference that qualifies as prior art under pre-AIA 35 U.S.C. 102(e), where the reference has a prior art date under pre-AIA 35 U.S.C. 102(e) prior to applicant’s effective filing date, and shows but does not claim interfering subject matter. See MPEP § 715.05 for a discussion of “interfering subject matter.” See MPEP § 706.02(a) and §§ 2136 - 2136.03 for an explanation of what references qualify as prior art under pre-AIA 35 U.S.C. 102(e).
(C) During examination, to antedate an activity that qualifies as prior art under pre-AIA 35 U.S.C. 102(g) and not under pre-AIA 35 U.S.C. 102(b), e.g., where the prior art date under pre-AIA 35 U.S.C. 102(g) of the activity used to reject the claim(s) is less than 1 year prior to applicant’s or patent owner’s effective filing date. If the evidence of the activity under pre-AIA 35 U.S.C. 102(g) is a U.S. patent or U.S. patent application publication, the evidence may not be antedated if it claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05 for a discussion of “interfering subject matter”.
II. SITUATIONS WHERE 37 CFR 1.131(a) AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE
An affidavit or declaration under 37 CFR 1.131(a) is not appropriate in the following situations:
(A) Where the application is subject to current 35 U.S.C. 102 and the affidavit or declaration is not directed to evidence used in a rejection based on pre-AIA 35 U.S.C. 102(g).
(B) Where the reference publication date is more than 1 year prior to applicant’s or patent owner’s effective filing date. Such a reference is a “statutory bar” under pre-AIA 35 U.S.C. 102(b) as referenced in 37 CFR 1.131(a)(2). A reference that only qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or (e) is not a “statutory bar.”
(C) Where the reference U.S. patent or U.S. patent application publication claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05 for a discussion of “interfering subject matter” and MPEP Chapter 2300 . Where the reference patent and the application or patent under reexamination are commonly owned, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent are not identical but are not patentably distinct, a terminal disclaimer and an affidavit or declaration under 37 CFR 1.131(c) may be used to overcome a rejection under 35 U.S.C. 103. See MPEP § 718.
(D) Where the reference is a foreign patent for the same invention to applicant or patent owner or his or her legal representatives or assigns issued prior to the filing date of the domestic application or patent on an application filed more than 12 months prior to the filing date of the domestic application. See pre-AIA 35 U.S.C. 102(d).
(E) Where the effective filing date of applicant’s or patent owner’s parent application or an International Convention proved filing date is prior to the effective date of the reference, an affidavit or declaration under 37 CFR 1.131(a) is unnecessary because the reference should not have been used. See MPEP §§ 211 - 216.
(F) Where the reference is a prior U.S. patent to the same entity, claiming the same invention. The question involved is one of “double patenting.”
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(G) Where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art. In this case, that subject matter may be used as a basis for rejecting his or her claims and may not be overcome by an affidavit or declaration under 37 CFR 1.131. In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA 1964); In re Lopresti, 333 F.2d 932, 142 USPQ 177 (CCPA 1964).
(H) Where the subject matter relied upon is prior art under pre-AIA 35 U.S.C. 102(f).
(I) Where the subject matter corresponding to a lost count in an interference is either prior art under pre-AIA 35 U.S.C. 102(g) or barred to applicant by the doctrine of interference estoppel. In re Bandel , 348 F.2d 563, 146 USPQ 389 (CCPA 1965); In re Kroekel , 803 F.2d 705, 231 USPQ 640 (Fed. Cir. 1986). See also In re Deckler , 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992) (Under the principles of res judicata and collateral estoppel , applicant was not entitled to claims that were patentably indistinguishable from the claim lost in interference even though the subject matter of the lost count was not available for use in an obviousness rejection under 35 U.S.C. 103). But see In re Zletz , 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989) (A losing party to an interference, on showing that the invention now claimed is not “substantially the same” as that of the lost count, may employ the procedures of 37 CFR 1.131(a) to antedate the filing date of an interfering application). On the matter of when a “lost count” in an interference constitutes prior art under pre-AIA 35 U.S.C. 102(g), see In re McKellin, 529 F.2d 1342, 188 USPQ 428 (CCPA 1976) (A count is not prior art under pre-AIA 35 U.S.C. 102(g) as to the loser of an interference where the count was lost based on the winner’s foreign priority date). Similarly, where one party in an interference wins a count by establishing a date of invention in a NAFTA or WTO member country (see pre-AIA 35 U.S.C. 104), the subject matter of that count is unpatentable to the other party by the doctrine of interference estoppel, even though it is not available as statutory prior art under pre-AIA 35 U.S.C. 102(g). See MPEP §§ 2138.01 and 2138.02.
III. REFERENCE DATE TO BE OVERCOME
The date to be overcome under 37 CFR 1.131(a) is the effective date of the reference (i.e., the date on which the reference is available as prior art).
A. U.S. Patents, U.S. Patent Application Publications, and International Application Publications
See MPEP §§ 706.02(a), 706.02(f)(1), and 2136 - 2136.03 for a detailed discussion of the effective date of a U.S. patent, U.S. patent application publication, or WIPO publication of an international application as a reference under pre-AIA 35 U.S.C. 102(e).
The effective date of a domestic patent when used as a reference in a rejection under pre-AIA 35 U.S.C. 102(e) is not the foreign filing date to which the application for patent may have been entitled under 35 U.S.C. 119(a) during examination. In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966). Therefore, the date to be overcome under 37 CFR 1.131(a) is the effective U.S. filing date, not the foreign priority date. When a U.S. patent or U.S. patent application publication reference is entitled to claim the benefit of an earlier filed application, its effective filing date is determined under pre-AIA 35 U.S.C. 102(e). See MPEP §§ 706.02(a), 706.02(f)(1), and 2136 - 2136.03.
B. Foreign Patents
See MPEP §§ 2126 through 2127 regarding date of availability of foreign patents as prior art.
C. Printed Publications
A printed publication, including a published foreign patent application, is effective as of its publication date, not its date of receipt by the publisher. For additional information regarding effective dates of printed publications, see MPEP §§ 2128 - 2128.02.
D. Activities
An applicant may make an admission, or submit evidence of use of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was used or
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known by others in this country. See MPEP §§ 706.02(c) and 2133.03. The effective date of the activity used to reject the claim(s) is the date the activity was first known to have occurred.
FORM PARAGRAPHS
Form paragraphs 7.57.fti - 7.64.fti may be used to respond to 37 CFR 1.131(a) affidavits.
¶ 7.57.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective- Heading
The [1] filed on [2] under 37 CFR 1.131(a) has been considered but is ineffective to overcome the [3] reference.
Examiner Note:
1. In bracket 1, insert either --affidavit-- or --declaration--.
2. This form paragraph must be followed by one or more of form paragraphs 7.58.fti to 7.63.fti or a paragraph setting forth proper basis for the insufficiency, such as failure to establish acts performed in this country, or that the scope of the declaration or affidavit is not commensurate with the scope of the claim(s).
¶ 7.58.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Claiming Same Invention
The [1] reference is a U.S. patent or U.S. patent application publication of a pending or patented application that claims the rejected invention. An affidavit or declaration is inappropriate under 37 CFR 1.131(a) when the reference is claiming interfering subject matter as defined in 37 CFR 41.203(a), see MPEP Chapter 2300. If the reference and this application are not commonly owned, the reference can only be overcome by establishing priority of invention through interference proceedings. See MPEP Chapter 2300 for information on initiating interference proceedings. If the reference and this application are commonly owned, the reference may be disqualified as prior art by an affidavit or declaration under 37 CFR 1.131(c). See MPEP § 718.
Examiner Note:
1. If used to respond to the submission of an affidavit under 37 CFR 1.131(a), this paragraph must be preceded by paragraph 7.57.fti.
2. This form paragraph may be used without form paragraph 7.57.fti when an affidavit has not yet been filed, and the examiner desires to notify applicant that the submission of an affidavit under 37 CFR 1.131(a) would be inappropriate.
¶ 7.59.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Reduction to Practice Before Reference Date
The evidence submitted is insufficient to establish a reduction to practice of the invention in this country or a NAFTA or WTO
member country prior to the effective date of the [1] reference. [2]
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.57.fti.
2. An explanation of the lack of showing of the alleged reduction to practice must be provided in bracket 2.
¶ 7.60.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Reference Is a Statutory Bar
The [1] reference is a statutory bar under pre-AIA 35 U.S.C. 102(b) and thus cannot be overcome by an affidavit or declaration under 37 CFR 1.131(a).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.57.fti.
¶ 7.61.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Conception
The evidence submitted is insufficient to establish a conception of the invention prior to the effective date of the [1] reference. While conception is the mental part of the inventive act, it must be capable of proof, such as by demonstrative evidence or by a complete disclosure to another. Conception is more than a vague idea of how to solve a problem. The requisite means themselves and their interaction must also be comprehended. See Mergenthaler v. Scudder, 1897 C.D. 724, 81 OG 1417 (D.C.
Cir. 1897). [2]
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.57.fti.
2. An explanation of the deficiency in the showing of conception must be presented in bracket 2.
3. If the affidavit additionally fails to establish either diligence or a subsequent reduction to practice, this form paragraph should be followed by form paragraph 7.62.fti and/or 7.63.fti. If either diligence or a reduction to practice is established, a statement to that effect should follow this paragraph.
¶ 7.62.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Diligence Lacking
The evidence submitted is insufficient to establish diligence from a date prior to the date of reduction to practice of the [1] reference to either a constructive reduction to practice or an actual reduction to practice. [2]
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.57.fti.
2. If the affidavit additionally fails to establish conception, this paragraph must also be preceded by form paragraph 7.61.fti.
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If the affidavit establishes conception, a statement to that effect should be added to this paragraph.
3. If the affidavit additionally fails to establish an alleged reduction to practice prior to the application filing date, this paragraph must be followed by form paragraph 7.63.fti. If such an alleged reduction to practice is established, a statement to that effect should be added to this paragraph.
4. An explanation of the reasons for a holding of non-diligence must be provided in bracket 2.
5. See MPEP § 715.07(a) which explains that diligence is not required after reduction to practice.
¶ 7.63.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Actual Reduction to Practice
The evidence submitted is insufficient to establish applicant’s alleged actual reduction to practice of the invention in this country or a NAFTA or WTO member country after the effective date of the [1] reference. [2].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.57.fti.
2. If the alleged reduction to practice is prior to the effective date of the reference, do not use this paragraph. See form paragraph 7.59.fti.
3. If the affidavit additionally fails to establish either conception or diligence, form paragraphs 7.61.fti and/or 7.62.fti should precede this paragraph. If either conception or diligence is established, a statement to that effect should be included after this paragraph.
4. An explanation of the lack of showing of the alleged reduction to practice must be given in bracket 2.
¶ 7.64.fti Affidavit or Declaration Under 37 CFR 1.131(a): Effective To Overcome Reference
The [1] filed on [2] under 37 CFR 1.31(a) is sufficient to overcome the [3] reference.
Examiner Note:
1. In bracket 1, insert either --affidavit-- or --declaration--.
2. In bracket 2, insert the filing date of the affidavit or declaration.
3. In bracket 3, insert the name of the reference.
715.01 37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C.
102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.].
The purpose of a 37 CFR 1.131(a) affidavit or declaration is to overcome a prior art rejection under pre-AIA 35 U.S.C. 102 or 103 by proving invention of the claimed subject matter by applicant prior to the effective date of the reference or activity relied upon in the rejection.
In some situations, an applicant may, alternatively, be able to overcome prior art rejections relying on references or activities which are available as prior art under pre-AIA 35 U.S.C. 102(a) or references which are available as prior art under pre-AIA 35 U.S.C. 102(e) by proving that the subject matter relied upon in the reference or activity was applicant’s own invention.
Similarly, where the reference relied upon in a 35 U.S.C. 103 rejection qualifies as prior art only under pre-AIA 35 U.S.C. 102(f) or (g), or, in an application filed on or after November 29, 1999, under pre-AIA 35 U.S.C. 102(e), applicant may be able to overcome this rejection by proving that the subject matter relied upon and the claimed invention were commonly owned or subject to common assignment at the time the later invention was made. See MPEP § 706.02(l)(1) through § 706.02(l)(3).
715.01(a) Reference Is a Joint Patent or Published Application to Applicant and Another [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
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When subject matter disclosed in a patent or patent application publication filed jointly by S and another is claimed in a later application filed by S, the joint patent or joint patent application publication is a valid reference under pre-AIA 35 U.S.C. 102(a), (e), or (f) unless overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132. An unequivocal declaration under 37 CFR 1.132 by S that he/she conceived or invented the subject matter that was disclosed but not claimed in the patent or application publication and relied on in the rejection would be sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982). Where the reference is a U.S. patent or patent application publication which includes a claim reciting the subject matter relied upon in a rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination, a declaration under 37 CFR 1.132 must also explain the presence of the additional inventor in the reference (e.g., the disclosure in claim 1 of the reference is relied upon to reject the claims; the affidavit or declaration explains that S is the sole inventor of claim 1, and the additional inventor and S are joint inventors of claim 2 of the reference). Disclaimer by the other patentee or applicant of the patent application publication should not be required but, if submitted, may be accepted by the examiner.
Note that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming another inventor which claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05. See MPEP § 716.10 for a discussion of the use of 37 CFR 1.132 affidavits or declarations to overcome rejections by establishing that the subject matter relied on in the patent or application publication was the invention of the applicant.
For applications subject to current 35 U.S.C. 102, see MPEP §§ 717 and 2155.01.
Although affidavits or declarations submitted for the purpose of establishing that the reference discloses applicant’s invention are properly filed under 37 CFR 1.132, rather than 37 CFR 1.131(a), such
affidavits submitted improperly under 37 CFR 1.131(a) will be considered as though they were filed under 37 CFR 1.132 to traverse a ground of rejection. In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969).
715.01(b) Reference and Application Have Common Assignee [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
The mere fact that the reference patent or application publication which shows but does not claim certain subject matter and the application which claims it are owned by the same assignee does not avoid the necessity of filing an affidavit or declaration under 37 CFR 1.131(a), in the absence of a showing under 37 CFR 1.132 that the patentee derived the subject matter relied on from the applicant (MPEP § 716.10). The common assignee does not obtain any rights in this regard by virtue of common ownership which he or she would not have in the absence of common ownership. In re Frilette, 412 F.2d 269, 162 USPQ 163 (CCPA 1969); Pierce v. Watson, 275 F.2d 890, 124 USPQ 356 (D.C. Cir. 1960); In re Beck, 155 F.2d 398, 69 USPQ 520 (CCPA 1946). Where, however, a rejection is applied under pre-AIA 35 U.S.C. 102(f)/103 or pre-AIA 35 U.S.C. 102(g)/103, or, in an application filed on or after November 29, 1999, under pre-AIA 35 U.S.C. 102(e)/103 using the reference, a showing that the invention was commonly owned, or subject to an obligation of assignment to the same person, at the time the later invention was made would preclude such a rejection or be sufficient to overcome such a rejection. See MPEP § 706.02(l) and § 706.02(l)(1).
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For applications subject to current 35 U.S.C. 102, see MPEP § 2154.02(c).
715.01(c) Reference Is Publication of Applicant’s Own Invention [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 prior art based on a publication may be overcome by a showing that it was published either by applicant himself/herself or on his/her behalf. Since such a showing is not made to show a date of invention by applicant prior to the date of the reference under 37 CFR 1.131(a), the limitation in pre-AIA 35 U.S.C. 104 and in 37 CFR 1.131(a) that only acts which occurred in this country or in a NAFTA or WTO member country may be relied on to establish a date of invention is not applicable. See MPEP § 716.10 regarding 37 CFR 1.132 affidavits submitted to show that the reference is a publication of applicant’s own invention to overcome a rejection based on pre-AIA 35 U.S.C. 102 or 103. For applications subject to current 35 U.S.C. 102, see MPEP §§ 2153 and 2154.
I. CO-AUTHORSHIP
Where the applicant is one of the co-authors of a publication cited against his or her application, he or she may overcome the rejection by filing an affidavit or declaration under 37 CFR 1.131(a). Alternatively, the applicant may overcome the rejection by filing a specific affidavit or declaration under 37 CFR 1.132 establishing that the article is describing applicant’s own work. An affidavit or declaration by applicant alone indicating that applicant is the sole inventor and that the others were merely working under his or her direction is sufficient to remove the publication as a reference
under pre-AIA 35 U.S.C. 102(a). In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982).
II. DERIVATION
When the unclaimed subject matter of a patent, application publication, or other publication is applicant’s own invention, a rejection, which is not a statutory bar, on that patent or publication may be removed by submission of evidence establishing the fact that the patentee, applicant of the published application, or author derived his or her knowledge of the relevant subject matter from applicant. Moreover applicant must further show that he or she made the invention upon which the relevant disclosure in the patent, application publication, or other publication is based. In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969); In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969).
715.01(d) Activities Applied Against the Claims [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 or 103 based on an activity showing that the claimed invention was used or known prior to the filing date of the application may be overcome by an affidavit or declaration under 37 CFR 1.131(a) establishing a date of invention prior to the date of the activity. Alternatively, the applicant(s) may overcome the rejection by filing a specific affidavit
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or declaration under 37 CFR 1.132 showing that the activity was performed by the applicant(s).
715.02 How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
The 37 CFR 1.131(a) affidavit or declaration must establish possession of either the whole invention claimed or something falling within the claim (such as a species of a claimed genus), in the sense that the claim as a whole reads on it. In re Tanczyn, 347 F.2d 830, 146 USPQ 298 (CCPA 1965) (Where applicant claims an alloy comprising both nitrogen and molybdenum, an affidavit showing applicant made an alloy comprising nitrogen but not molybdenum is not sufficient under 37 CFR 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 103 based on the combined teachings of one reference disclosing an alloy comprising nitrogen but not molybdenum and a second reference disclosing an alloy comprising molybdenum but not nitrogen). Note, however, where the differences between the claimed invention and the disclosure of the reference(s) are so small as to render the claims obvious over the reference(s), an affidavit or declaration under 37 CFR 1.131(a) is required to show no more than the reference shows. In re Stryker, 435 F.2d 1340, 168 USPQ 372 (CCPA 1971). In other words, where the examiner, in rejecting a claim under pre-AIA 35 U.S.C. 103, has treated a claim limitation as being an obvious feature or modification of the disclosure of the reference(s) relied upon, without citation of a reference which teaches such feature or modification, a 37 CFR 1.131(a) affidavit or declaration may be sufficient to overcome the rejection even if it does not show such feature or modification.
Further, a 37 CFR 1.131(a) affidavit is not insufficient merely because it does not show the identical disclosure of the reference(s) or the identical subject matter involved in the activity relied upon. If the affidavit contains facts showing a completion of the invention commensurate with the extent of the invention as claimed is shown in the reference or activity, the affidavit or declaration is sufficient, whether or not it is a showing of the identical disclosure of the reference or the identical subject matter involved in the activity. See In re Wakefield, 422 F.2d 897, 164 USPQ 636 (CCPA 1970).
Even if applicant’s 37 CFR 1.131(a) affidavit is not fully commensurate with the rejected claim, the applicant can still overcome the rejection by showing that the differences between the claimed invention and the showing under 37 CFR 1.131(a) would have been obvious to one of ordinary skill in the art, in view of applicant’s 37 CFR 1.131(a) evidence, prior to the effective date of the reference(s) or the activity. Such evidence is sufficient because applicant’s possession of what is shown carries with it possession of variations and adaptations which would have been obvious, at the same time, to one of ordinary skill in the art. However, the affidavit or declaration showing must still establish possession of the invention (i.e., the basic inventive concept) and not just of what one reference (in a combination of applied references) happens to show, if that reference does not itself teach the basic inventive concept. In re Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974) (Claimed invention was use of electrostatic forces to adhere dry starch particles to a wet paper web on the Fourdrinier wire of a paper-making machine. 37 CFR 1.131 affidavit established use of electrostatic forces to adhere starch particles to wet blotting paper moved over a fluidized bed of starch particles prior to the applied reference date. Affidavit was sufficient in view of prior art reference showing that deposition of dry coatings directly on wet webs on the Fourdrinier wire of a paper-making machine was well known in the art prior to the date of the applied reference. The affidavit established possession of the basic invention, i.e., use of electrostatic forces to adhere starch to wet paper.).
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I. SWEARING BEHIND ONE OF A PLURALITY OF COMBINED REFERENCES
Applicant may overcome a pre-AIA 35 U.S.C. 103 rejection based on a combination of references by showing completion of the invention by applicant prior to the effective date of any of the references; applicant need not antedate the reference with the earliest filing date. However, as discussed above, applicant’s 37 CFR 1.131(a) affidavit must show possession of either the whole invention as claimed or something falling within the claim(s) prior to the effective date of the reference being antedated; it is not enough merely to show possession of what the reference happens to show if the reference does not teach the basic inventive concept.
Where a claim has been rejected under pre-AIA 35 U.S.C. 103 based on Reference A in view of Reference B, with the effective date of secondary Reference B being earlier than that of Reference A, the applicant can rely on the teachings of Reference B to show that the differences between what is shown in his or her 37 CFR 1.131(a) affidavit or declaration and the claimed invention would have been obvious to one of ordinary skill in the art prior to the date of Reference A. However, the 37 CFR 1.131(a) affidavit or declaration must still establish possession of the claimed invention, not just what Reference A shows, if Reference A does not teach the basic inventive concept.
II. GENERAL RULE AS TO GENERIC CLAIMS
A reference or activity applied against generic claims may (in most cases) be antedated as to such claims by an affidavit or declaration under 37 CFR 1.131(a) showing completion of the invention of only a single species, within the genus, prior to the effective date of the reference or activity (assuming, of course, that the reference or activity is not a statutory bar or a patent, or an application publication, claiming the same invention). See Ex parte Biesecker, 144 USPQ 129 (Bd. App. 1964). See, also, In re Fong, 288 F.2d 932, 129 USPQ 264 (CCPA 1961); In re Dafano, 392 F.2d 280, 157 USPQ 192 (CCPA 1968) (distinguishing chemical species of genus compounds from embodiments of a single invention).
See, however, MPEP § 715.03 for practice relative to cases in unpredictable arts.
715.03 Genus-Species, Practice Relative to Cases Where Predictability Is in Question [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Where generic claims have been rejected on a reference or activity which discloses a species not antedated by the affidavit or declaration, the rejection will not ordinarily be withdrawn, subject to the rules set forth below, unless the applicant is able to establish that he or she was in possession of the generic invention prior to the effective date of the reference or activity. In other words, the affidavit or declaration under 37 CFR 1.131(a) must show as much as the minimum disclosure required by a patent specification to furnish support for a generic claim.
I. REFERENCE OR ACTIVITY DISCLOSES SPECIES
A. Species Claim
Where the claim under rejection recites a species and the reference or activity discloses the claimed species, the rejection can be overcome under 37 CFR 1.131(a) directly by showing prior completion of the claimed species or indirectly by a showing of prior completion of a different species coupled with a showing that the claimed species would have been an obvious modification of the species completed by applicant. See In re Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974).
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§ 715.03EXAMINATION OF APPLICATIONS
B. Genus Claim
The principle is well established that the disclosure of a species in a cited reference is sufficient to prevent a later applicant from obtaining a “generic claim.” In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989); In re Slayter, 276 F.2d 408, 125 USPQ 345 (CCPA 1960).
Where the only pertinent disclosure in the reference or activity is a single species of the claimed genus, the applicant can overcome the rejection directly under 37 CFR 1.131(a) by showing prior possession of the species disclosed in the reference or activity. On the other hand, a reference or activity which discloses several species of a claimed genus can be overcome directly under 37 CFR 1.131(a) only by a showing that the applicant completed, prior to the date of the reference or activity, all of the species shown in the reference. In re Stempel, 241 F.2d 755, 113 USPQ 77 (CCPA 1957).
Proof of prior completion of a species different from the species of the reference or activity will be sufficient to overcome a reference indirectly under 37 CFR 1.131(a) if the species shown in the reference or activity would have been obvious in view of the species shown to have been made by the applicant. In re Clarke, 356 F.2d 987, 148 USPQ 665 (CCPA 1966); In re Plumb, 470 F.2d 1403, 176 USPQ 323 (CCPA 1973); In re Hostettler, 356 F.2d 562, 148 USPQ 514 (CCPA 1966). Alternatively, if the applicant cannot show possession of the species of the reference or activity in this manner, the applicant may be able to antedate the reference or activity indirectly by, for example, showing prior completion of one or more species which put him or her in possession of the claimed genus prior to the reference’s or activity’s date. The test is whether the species completed by applicant prior to the reference date or the activity’s date provided an adequate basis for inferring that the invention has generic applicability. In re Plumb, 470 F.2d 1403, 176 USPQ 323 (CCPA 1973); In re Rainer, 390 F.2d 771, 156 USPQ 334 (CCPA 1968); In re Clarke, 356 F.2d 987, 148 USPQ 665 (CCPA 1966); In re Shokal, 242 F.2d 771, 113 USPQ 283 (CCPA 1957).
It is not necessary for the affidavit evidence to show that the applicant viewed his or her invention as encompassing more than the species actually made. The test is whether the facts set out in the affidavit are such as would persuade one skilled in the art that the applicant possessed so much of the invention as is shown in the reference or activity. In re Schaub, 537 F.2d 509, 190 USPQ 324 (CCPA 1976).
C. Species Versus Embodiments
References or activities which disclose one or more embodiments of a single claimed invention, as opposed to species of a claimed genus, can be overcome by filing a 37 CFR 1.131(a) affidavit showing prior completion of a single embodiment of the invention, whether it is the same or a different embodiment from that disclosed in the reference or activity. See In re Fong , 288 F.2d 932, 129 USPQ 264 (CCPA 1961) (Where applicant discloses and claims a washing solution comprising a detergent and polyvinylpyrrolidone (PVP), with no criticality alleged as to the particular detergent used, the PVP being used as a soil-suspending agent to prevent the redeposition of the soil removed, the invention was viewed as the use of PVP as a soil-suspending agent in washing with a detergent. The disclosure in the reference of the use of PVP with two detergents, both of which differed from that shown in applicant’s 37 CFR 1.131(a) affidavit, was considered a disclosure of different embodiments of a single invention, rather than species of a claimed genus); In re Defano, 392 F.2d 280, 157 USPQ 192 (CCPA 1968).
II. REFERENCE OR ACTIVITY DISCLOSES CLAIMED GENUS
In general, where the reference or activity discloses the claimed genus, a showing of completion of a single species within the genus is sufficient to antedate the reference or activity under 37 CFR 1.131(a). Ex parte Biesecker, 144 USPQ 129 (Bd. App. 1964).
In cases where predictability is in question, on the other hand, a showing of prior completion of one or a few species within the disclosed genus is generally not sufficient to overcome the reference or activity. In re Shokal, 242 F.2d 771, 113 USPQ 283 (CCPA
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1957). The test is whether the species completed by applicant prior to the reference date or the date of the activity provided an adequate basis for inferring that the invention has generic applicability. In re Mantell, 454 F.2d 1398, 172 USPQ 530 (CCPA 1973); In re Rainer, 390 F.2d 771, 156 USPQ 334 (CCPA 1968); In re DeFano, 392 F.2d 280, 157 USPQ 192 (CCPA 1968); In re Clarke, 356 F.2d 987, 148 USPQ 665 (CCPA 1965). In the case of a small genus such as the halogens, which consists of four species, a reduction to practice of three, or perhaps even two, species might show possession of the generic invention, while in the case of a genus comprising hundreds of species, reduction to practice of a considerably larger number of species would be necessary. In re Shokal, supra.
It is not necessary for the affidavit evidence to show that the applicant viewed his or her invention as encompassing more than the species he or she actually made. The test is whether the facts set out in the affidavit are such as would persuade one skilled in the art that the applicant possessed so much of the invention as is shown in the reference. In re Schaub, 537 F. 509, 190 USPQ 324 (CCPA 1976).
715.04 Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
I. WHO MAY MAKE AFFIDAVIT OR DECLARATION
Affidavits or declarations filed under 37 CFR 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 102 or 103 must be made by either:
(A) All the inventors of the subject matter claimed.
(B) Less than all named inventors of an application if it is shown by affidavit or declaration that less than all named inventors of an application invented the subject matter of the claim or claims under rejection. For example, one of two joint inventors is accepted where it is shown that one of the joint inventors is the sole inventor of the claim or claims under rejection.
(C) For affidavits and declarations submitted in an application filed before September 16, 2012, a joint inventor or assignee under pre-AIA 37 CFR 1.47 if a petition under pre-AIA 37 CFR 1.47 was granted or the application was accepted under pre-AIA 37 CFR 1.42 or 1.43.
(D) For affidavits and declarations in applications filed before September 16, 2012, the legal representative of a deceased, insane or otherwise legally incapacitated inventor under pre-AIA 37 CFR 1.42 or 1.43.
(E) For affidavits and declarations submitted in applications filed on or after September 16, 2012, the party qualified under 37 CFR 1.42 or 1.46.
(F) The assignee or other party in interest when it is not possible to produce the affidavit or declaration of the inventor. Ex parte Foster, 1903 C.D. 213, 105 OG 261 (Comm’r Pat. 1903).
(G) The owner of the patent under reexamination.
For affidavits and declarations submitted in applications filed before September 16, 2012, where one or more of the named inventors of the subject matter of the rejected claim(s) (who had originally signed the oath or declaration for patent application under 37 CFR 1.63) is thereafter unavailable to sign an affidavit or declaration under 37 CFR 1.131(a), the affidavit or declaration under 37 CFR 1.131(a) may be signed by the remaining joint inventors provided a petition under 37 CFR 1.183 requesting waiver of the signature of the unavailable inventor is submitted with the affidavit or declaration under 37 CFR 1.131(a). Proof that the non-signing inventor is unavailable or cannot be found (similar to the proof required for a petition under pre-AIA 37 CFR 1.47) must be submitted with the petition under 37 CFR 1.183 (see MPEP § 409.03(d)). Petitions under
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37 CFR 1.183 are decided by the Office of Petitions (see MPEP § 1002.02(b)).
II. FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS
An affidavit is a statement in writing made under oath before a notary public, magistrate, or officer authorized to administer oaths. See MPEP § 602 et seq. for additional information regarding formal requirements of affidavits.
37 CFR 1.68 permits a declaration to be used instead of an affidavit. The declaration must include an acknowledgment by the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.
715.05 U.S. Patent orApplication Publication Claiming Same Invention [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
For applications subject to pre-AIA 35 U.S.C. 102, when the reference in question is a noncommonly owned U.S. patent or patent application publication claiming the same invention as applicant and its publication date is less than 1 year prior to the presentation of claims to that invention in the application being examined, applicant’s remedy, if any, must be by way of 37 CFR 41.202 instead of 37 CFR 1.131(a). If the reference is claiming the same invention as the application and its publication date is less than 1 year prior to the presentation of
claims to that invention in the application, this fact should be noted in the Office action. The reference can then be overcome only by way of interference. See MPEP Chapter 2300. If the reference is a U.S. patent which claims the same invention as the application and its issue date is more than 1 year prior to the presentation of claims to that invention in the application, a rejection of the claims of the application under pre-AIA 35 U.S.C. 135(b)(1) applicable generally to applications subject to pre-AIA 35 U.S.C. 102, see MPEP § 2159, should be made. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) (The court holding that application of 35 U.S.C. 135(b) is not limited to inter partes interference proceedings, but may be used as a basis for ex parte rejections.). The expression “prior to one year from the date on which the patent was granted” in pre-AIA 35 U.S.C. 135(b) includes the one-year anniversary date of the issuance of a patent. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964).
If the reference is a U.S. patent application publication under 35 U.S.C. 122(b), or a WIPO publication on an international application filed on or after November 29, 2000, which claims the same invention as the application being examined and its publication date is more than 1 year prior to the presentation of claims to that invention in the application being examined, a rejection of the claims of the application (being examined) under pre-AIA 35 U.S.C. 135(b)(2) applicable generally to applications subject to pre-AIA 35 U.S.C. 102, see MPEP § 2159, should be made only if the application being examined was filed after the publication date of the reference.
Form paragraph 23.14 or 23.14.01 may be used when making a rejection under pre-AIA 35 U.S.C. 135(b).
¶ 23.14 Claims Not Copied Within OneYear of Patent Issue Date
Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(1) as not being made prior to one year from the date on which U.S. Patent No. [2] was granted. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.
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¶ 23.14.01 Claims Not Copied Within One Year Of Application Publication Date
Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(2) as not being made prior to one year from the date on which [2] was published under 35 U.S.C. 122(b). See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.
Examiner Note:
1. In bracket 2, insert the publication number of the published application.
2. This form paragraph should only be used if the application being examined was filed after the publication date of the published application.
Where the reference and the application or patent under reexamination are commonly owned, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the reference are not identical but are not patentably distinct, a terminal disclaimer and an affidavit or declaration under 37 CFR 1.131(c) may be used to overcome a rejection under 35 U.S.C. 103. See MPEP § 718.
A 37 CFR 1.131(a) affidavit is ineffective to overcome a United States patent or patent application publication, not only where there is a verbatim correspondence between claims of the application and of the patent, but also where there is no patentable distinction between the respective claims. In re Clark, 457 F.2d 1004, 173 USPQ 359 (CCPA 1972); In re Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962); In re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958); In re Ward, 236 F.2d 428, 111 USPQ 101 (CCPA 1956); In re Wagenhorst, 62 F.2d 831, 16 USPQ 126 (CCPA 1933).
If the application (or patent under reexamination) and the domestic reference contain claims which are identical, or which are not patentably distinct, then the application and patent are claiming “interfering subject matter” as defined in 37 CFR 41.203(a).
As provided in 37 CFR 41.203(a), an interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa. An applicant who is claiming an invention which is identical to, or obvious in view
of, the invention as claimed in a domestic patent or patent application publication cannot employ an affidavit under 37 CFR 1.131(a) as a means for avoiding an interference with the reference. To allow an applicant to do so would result in the issuance of two patents to the same invention.
Since 37 CFR 1.131(a) defines “interfering subject matter” in the same way as the interference rules (37 CFR 41.203(a)), the USPTO cannot prevent an applicant from overcoming a reference by a 37 CFR 1.131(a) affidavit or declaration on the grounds that the reference claims applicant’s invention and, at the same time, deny applicant an interference on the grounds that the claims of the application and those of the reference are not for substantially the same invention. See In re Eickmeyer, 602 F.2d 974, 202 USPQ 655 (CCPA 1979). Where, in denying an applicant’s motion in interference to substitute a broader count, it is held that the limitation to be deleted was material for the opponent patentee, this constitutes a holding that the proposed count is for an invention which is not interfering subject matter with respect to the claims of the reference. Therefore, the applicant may file an affidavit or declaration under 37 CFR 1.131(a) to overcome a prior art rejection based on the reference. Adler v. Kluver, 159 USPQ 511 (Bd. Pat. Int. 1968).
Form paragraph 7.58.fti (reproduced in MPEP § 715) may be used to note such a situation in the Office action.
715.06 [Reserved]
715.07 Facts and Documentary Evidence [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a
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discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
I. GENERAL REQUIREMENTS
The essential thing to be shown under 37 CFR 1.131(a) is priority of invention and this may be done by any satisfactory evidence of the fact. FACTS, not conclusions, must be alleged. Evidence in the form of exhibits may accompany the affidavit or declaration. Each exhibit relied upon should be specifically referred to in the affidavit or declaration, in terms of what it is relied upon to show. For example, the allegations of fact might be supported by submitting as evidence one or more of the following:
(A) attached sketches;
(B) attached blueprints;
(C) attached photographs;
(D) attached reproductions of notebook entries;
(E) an accompanying model;
(F) attached supporting statements by witnesses, where verbal disclosures are the evidence relied upon. Ex parte Ovshinsky, 10 USPQ2d 1075 (Bd. Pat. App. & Inter. 1989);
(G) testimony given in an interference. Where interference testimony is used, the applicant must point out which parts of the testimony are being relied on; examiners cannot be expected to search the entire interference record for the evidence;
(H) documents submitted under the Disclosure Document Program (discontinued February 1, 2007) may be used as documentary evidence of conception.
Exhibits and models must comply with the requirements of 37 CFR 1.91 to be entered into an application file. See also MPEP § 715.07(d).
A general allegation that the invention was completed prior to the date of the reference is not sufficient. Similarly, a declaration by the inventor to the effect that his or her invention was conceived or reduced to practice prior to the reference date, without a statement of facts demonstrating the correctness of this conclusion, is insufficient to satisfy 37 CFR 1.131(a).
37 CFR 1.131(b) requires that original exhibits of drawings or records, or photocopies thereof, accompany and form part of the affidavit or declaration or their absence satisfactorily explained. In Ex parte Donovan, 1890 C.D. 109, 52 OG 309 (Comm’r Pat. 1890) the court stated:
If the applicant made sketches he should so state, and produce and describe them; if the sketches were made and lost, and their contents remembered, they should be reproduced and furnished in place of the originals. The same course should be pursued if the disclosure was by means of models. If neither sketches nor models are relied upon, but it is claimed that verbal disclosures, sufficiently clear to indicate definite conception of the invention, were made the witness should state as nearly as possible the language used in imparting knowledge of the invention to others.
When reviewing a 37 CFR 1.131(a) affidavit or declaration, the examiner must consider all of the evidence presented in its entirety, including the affidavits or declarations and all accompanying exhibits, records and “notes.” An accompanying exhibit need not support all claimed limitations, provided that any missing limitation is supported by the declaration itself. Ex parte Ovshinsky, 10 USPQ2d 1075 (Bd. Pat. App. & Inter. 1989).
The affidavit or declaration and exhibits must clearly explain which facts or data applicant is relying on to show completion of his or her invention prior to the particular date. Vague and general statements in broad terms about what the exhibits describe along with a general assertion that the exhibits describe a reduction to practice “amounts essentially to mere pleading, unsupported by proof or a showing of facts” and, thus, does not satisfy the requirements of 37 CFR 1.131(b). In re Borkowski, 505 F.2d 713, 184 USPQ 29 (CCPA 1974). Applicant must give a clear explanation of the exhibits pointing out exactly what facts are established and relied on by applicant. 505 F.2d at 718-19, 184 USPQ at 33. See also In re Harry, 333 F.2d 920, 142 USPQ 164 (CCPA 1964) (Affidavit “asserts that facts exist but does not tell what they are or when they occurred.”).
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II. ESTABLISHMENT OF DATES
If the dates of the exhibits have been removed or blocked off, the matter of dates can be taken care of in the body of the oath or declaration.
When alleging that conception or a reduction to practice occurred prior to the effective date of the reference, the dates in the oath or declaration may be the actual dates or, if the applicant or patent owner does not desire to disclose his or her actual dates, he or she may merely allege that the acts referred to occurred prior to a specified date. However, the actual dates of acts relied on to establish diligence must be provided. See MPEP § 715.07(a) regarding the diligence requirement.
III. THREE WAYS TO SHOW PRIOR INVENTION
The affidavit or declaration must state FACTS and produce such documentary evidence and exhibits in support thereof as are available to show conception and completion of invention in this country or in a NAFTA or WTO member country (MPEP § 715.07(c)), at least the conception being at a date prior to the effective date of the reference. Where there has not been reduction to practice prior to the date of the reference, the applicant or patent owner must also show diligence in the completion of his or her invention from a time just prior to the date of the reference continuously up to the date of an actual reduction to practice or up to the date of filing his or her application (filing constitutes a constructive reduction to practice, 37 CFR 1.131).
As discussed above, 37 CFR 1.131(b) provides three ways in which an applicant can establish prior invention of the claimed subject matter. The showing of facts must be sufficient to show:
(A) (actual) reduction to practice of the invention prior to the effective date of the reference; or
(B) conception of the invention prior to the effective date of the reference coupled with due diligence from prior to the reference date to a subsequent (actual) reduction to practice; or
(C) conception of the invention prior to the effective date of the reference coupled with due diligence from prior to the reference date to the filing
date of the application (constructive reduction to practice).
A conception of an invention, though evidenced by disclosure, drawings, and even a model, is not a complete invention under the patent laws, and confers no rights on an inventor, and has no effect on a subsequently granted patent to another, UNLESS THE INVENTOR FOLLOWS IT WITH REASONABLE DILIGENCE BY SOME OTHER ACT, such as an actual reduction to practice or filing an application for a patent. Automatic Weighing Mach. Co. v. Pneumatic Scale Corp., 166 F.2d 288, 1909 C.D. 498, 139 OG 991 (1st Cir. 1909).
Conception is the mental part of the inventive act, but it must be capable of proof, as by drawings, complete disclosure to another person, etc. In Mergenthaler v. Scudder, 1897 C.D. 724, 81 OG
1417 (D.C. Cir. 1897), it was established that conception is more than a mere vague idea of how to solve a problem; the means themselves and their interaction must be comprehended also.
In general, proof of actual reduction to practice requires a showing that the apparatus actually existed and worked for its intended purpose. However, “there are some devices so simple that a mere construction of them is all that is necessary to constitute reduction to practice.” In re Asahi/America Inc., 68 F.3d 442, 37 USPQ2d 1204, 1206 (Fed. Cir. 1995) (Citing Newkirk v. Lulejian, 825 F.2d 1581, 3USPQ2d 1793 (Fed. Cir. 1987) and Sachs v. Wadsworth, 48 F.2d 928, 929, 9 USPQ
252, 253 (CCPA 1931). The claimed restraint coupling held to be so simple a device that mere construction of it was sufficient to constitute reduction to practice. Photographs, coupled with articles and a technical report describing the coupling in detail were sufficient to show reduction to practice.).
The facts to be established under 37 CFR 1.131(a) are similar to those to be proved in interference. The difference lies in the way in which the evidence is presented. If applicant disagrees with a holding that the facts are insufficient to overcome the rejection, his or her remedy is by appeal from the continued rejection.
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See MPEP § 2138.04 through § 2138.06 for a detailed discussion of the concepts of conception, reasonable diligence, and reduction to practice.
For the most part, the terms “conception,” “reasonable diligence,” and “reduction to practice” have the same meanings under 37 CFR 1.131(a) as they have in interference proceedings. However, in In re Eickmeyer, 602 F.2d 974, 202 USPQ 655
(CCPA 1979), the court stated:
The purpose of filing a [37 CFR 1.]131 affidavit is not to demonstrate prior invention, per se, but merely to antedate the effective date of a reference. See In re Moore, 58 CCPA 1340, 444 F.2d 572, 170 USPQ 260 (1971). Although the test for sufficiency of an affidavit under Rule 131(b) parallels that for determining priority of invention in an interference under pre-AIA 35 U.S.C. 102(g), it does not necessarily follow that Rule 131 practice is controlled by interference law. To the contrary, “[t]he parallel to interference practice found in Rule 131(b) should be recognized as one of convenience rather than necessity.” Id. at 1353, 444 F.2d at 580, 170 USPQ at 267. Thus, “the ‘conception’ and ‘reduction to practice’ which must be established under the rule need not be the same as what is required in the ‘interference’ sense of those terms.” Id.; accord, In re Borkowski, 505 F.2d 713, 718-19, 184 USPQ 29, 33 (CCPA 1974).
One difference is that in interference practice a reduction to practice requires a proof that a utility was known, whereas under 37 CFR 1.131(a) practice, proof of a utility must be shown only if the reference discloses a utility. In re Wilkinson, 304 F.2d 673, 134 USPQ 171 (CCPA 1962); In re Moore, 444 F.2d 572, 170 USPQ 260 (CCPA 1971). Where proof of utility is required, whether or not test results are required to establish the utility of the subject matter in question depends on the facts of each case. The ultimate issue is whether the evidence is such that one of ordinary skill in the art would be satisfied to a reasonable certainty that the subject matter necessary to antedate the reference possessed the alleged utility. In re Blake, 358 F.2d 750, 149 USPQ 217 (CCPA 1966). Also, in interference practice, conception, reasonable diligence, and
reduction to practice require corroboration, whereas averments made in a 37 CFR 1.131(a) affidavit or declaration do not require corroboration; an applicant may stand on his or her own affidavit or declaration if he or she so elects. Ex parte Hook, 102 USPQ 130 (Bd. App. 1953).
Form paragraph 7.59 or 7.63 (both reproduced in MPEP § 715) may be used where insufficient evidence is included in a 37 CFR 1.131(a) affidavit.
715.07(a) Diligence [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Where conception occurs prior to the date of the reference, but reduction to practice is afterward, it is not enough merely to allege that applicant or patent owner had been diligent. Rather, applicant must show evidence of facts establishing diligence.
In determining the sufficiency of a 37 CFR 1.131(a) affidavit or declaration, diligence need not be considered unless conception of the invention prior to the effective date is clearly established, pursuant to 37 CFR 1.131(b), diligence comes into question only after prior conception is established.
In patent law, an inventor is either diligent at a given time or he is not diligent; there are no degrees of diligence. An applicant may be diligent within the meaning of the patent law when he or she is doing nothing, if his or her lack of activity is excused. Note, however, that the record must set forth an explanation or excuse for the inactivity; the USPTO or courts will not speculate on possible explanations for delay or inactivity. See In re Nelson, 420 F.2d 1079, 164 USPQ 458 (CCPA 1970). Diligence must be judged on the basis of the particular facts in each case. See MPEP § 2138.06 for a detailed discussion
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of the diligence requirement for proving prior invention.
Under 37 CFR 1.131(a), the critical period in which diligence must be shown begins just prior to the effective date of the reference or activity and ends with the date of a reduction to practice, either actual or constructive (i.e., filing a United States patent application). Note, therefore, that only diligence before reduction to practice is a material consideration. Any lack of due diligence between an actual reduction to practice of an invention and the filing of an application thereon is not relevant to the sufficiency of an affidavit or declaration under 37 CFR 1.131(a).
Form paragraph 7.62 (reproduced in MPEP § 715) may be used to respond to a 37 CFR 1.131(a) affidavit where diligence is lacking.
715.07(b) Interference Testimony Sometimes Used [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
In place of an affidavit or declaration the testimony of the applicant in an interference may be sometimes used to antedate a reference in lieu of a 37 CFR 1.131(a) affidavit or declaration.
The part of the testimony to form the basis of priority over the reference should be pointed out. Ex parte
Bowyer, 1939 C.D. 5, 42 USPQ 526 (Comm’r Pat. 1939).
715.07(c) Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Pre-AIA 35 U.S.C. 104 Invention Made Abroad.
(a) IN GENERAL.—
(1) PROCEEDINGS.—In proceedings in the Patent and Trademark Office, in the courts, and before any other competent authority, an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a foreign country other than a NAFTA country or a WTO member country, except as provided in sections 119 and 365.
(2) RIGHTS.—If an invention was made by a person, civil or military—
(A) while domiciled in the United States, and serving in any other country in connection with operations by or on behalf of the United States,
(B) while domiciled in a NAFTA country and serving in another country in connection with operations by or on behalf of that NAFTA country, or
(C) while domiciled in a WTO member country and serving in another country in connection with operations by or on behalf of that WTO member country, that person shall be entitled to the same rights of priority in the United States with respect to such invention as if such invention had been made in the United States, that NAFTA country, or that WTO member country, as the case may be.
(3) USE OF INFORMATION.—To the extent that any information in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or disproving a date of invention has not been made available for use in a proceeding in the Patent and Trademark Office, a court, or any other competent authority to the same extent as such information could be made available in the United States, the Director, court, or such other authority shall draw appropriate inferences, or take other action permitted by statute, rule, or
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regulation, in favor of the party that requested the information in the proceeding.
(b) DEFINITIONS.—As used in this section—
(1) The term “NAFTA country” has the meaning given that term in section 2(4) of the North American Free Trade Agreement Implementation Act; and
(2) The term “WTO member country” has the meaning given that term in section 2(10) of the Uruguay Round Agreements Act.
The 37 CFR 1.131(a) affidavit or declaration must contain an allegation that the acts relied upon to establish the date prior to the reference or activity were carried out in this country or in a NAFTA country or WTO member country. See pre-AIA 35 U.S.C. 104.
Under 37 CFR 1.131(a), which provides for the establishment of a date of completion of the invention in a NAFTA or WTO member country, as well as in the United States, the applicant or patent owner can establish a date of completion in a NAFTA member country on or after December 8, 1993, the effective date of section 331 of Public Law 103-182, the North American Free Trade Agreement Act, and can establish a date of completion in a WTO member country other than a NAFTA member country on or after January 1, 1996, the effective date of section 531 of Public Law 103-465, the Uruguay Round Agreements Act. Acts occurring prior to the effective dates of NAFTA or URAA may be relied upon to show completion of the invention; however, a date of completion of the invention may not be established under 37 CFR 1.131(a) before December 8, 1993 in a NAFTA country or before January 1, 1996 in a WTO country other than a NAFTA country.
715.07(d) Disposition of Exhibits [R-11.2013]
Exhibits, such as those filed as part of an affidavit or declaration under 37 CFR 1.131(a), must comply with the requirements of 37 CFR 1.91 to be entered into an application file. Exhibits that do not comply with the requirements of 37 CFR 1.91 will be
disposed of or returned to applicant at the discretion of the Office. See also MPEP § 608.03(a).
715.08 Decided by Primary Examiner [R-11.2013]
The question of sufficiency of affidavits or declarations under 37 CFR 1.131(a) should be reviewed and decided by a primary examiner.
Review of an examiner’s decision with regard to questions of formal sufficiency and propriety of an affidavit or declaration under 37 CFR 1.131(a) is by a petition filed under 37 CFR 1.181. Such petitions are answered by the Technology Center Directors (MPEP § 1002.02(c)).
Review of an examiner’s determination on the merits of a 37 CFR 1.131(a) affidavit or declaration is by appeal to the Patent Trial and Appeal Board.
715.09 Timely Presentation [R-11.2013]
Affidavits or declarations under 37 CFR 1.131(a) must be timely presented in order to be admitted. Affidavits and declarations submitted under 37 CFR 1.131(a) and other evidence traversing rejections are considered timely if submitted:
(A) prior to a final rejection;
(B) before appeal in an application not having a final rejection;
(C) after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e); or
(D) after the prosecution is closed (e.g., after a final rejection, after appeal, or after allowance) if applicant files the affidavit or other evidence with a request for continued examination (RCE) under 37 CFR 1.114 in a utility or plant application filed on or after June 8, 1995; or a continued prosecution application (CPA) under 37 CFR 1.53(d) in a design application.
All admitted affidavits and declarations are acknowledged and commented upon by the examiner in his or her next succeeding action.
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For affidavits or declarations under 37 CFR 1.131(a) filed after appeal, see 37 CFR 41.33(d) and MPEP § 1206 and § 1211.03.
Review of an examiner’s refusal to enter an affidavit as untimely is by petition and not by appeal to the Patent Trial and Appeal Board. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App. 1941). See MPEP § 715.08 regarding review of questions of propriety of 37 CFR 1.131(a) affidavits and declarations.
715.10 Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Any affidavits or declarations submitted under 37 CFR 1.131(a) and the accompanying evidence must be reviewed carefully by the examiner in order to determine whether they show that the claimed invention was “in public use” or “on sale” in this country more than one year prior to the effective filing date of the application, which acts constitute a statutory bar under pre-AIA 35 U.S.C. 102(b). Although the rejection based on the reference(s) or activity sought to be antedated may actually be overcome by such an affidavit or declaration, the effect of the applicant’s prior “public use” or “on sale” activities may not be overcome under 37 CFR 1.131(a). See MPEP § 2133.03 regarding rejections based on “public use” and “on sale” statutory bars under pre-AIA 35 U.S.C. 102.
Where the 37 CFR 1.131(a) evidence relies on an embodiment of the invention not disclosed in the application, the question of whether the application includes the “best mode” must be considered. However, a “best mode” rejection should not be
made unless the record, taken as a whole, establishes by a preponderance of the evidence that applicant’s specification has not set forth the best mode contemplated by the inventor of carrying out the invention. See MPEP §§ 2165 - § 2165.04 regarding the best mode requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
716 Affidavits or Declarations Traversing Rejections, 37 CFR 1.132 [R-11.2013]
37 CFR 1.132 Affidavits or declarations traversing rejections or objections.
When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.
It is the responsibility of the primary examiner to personally review and decide whether affidavits or declarations submitted under 37 CFR 1.132 for the purpose of traversing grounds of rejection are responsive to the rejection and present sufficient facts to overcome the rejection.
This rule sets forth the general policy of the Office consistently followed for a long period of time of receiving affidavit evidence traversing rejections or objections. All affidavits or declarations presented which do not fall within or under other specific rules are to be treated or considered as falling under this rule.
Form paragraph 7.65 or 7.66 and any of form paragraphs 7.66.01 through 7.66.05, as appropriate, should be used to comment on a 37 CFR 1.132 affidavit or declaration.
¶ 7.65 Affidavit or Declaration Under 37 CFR 1.132: Effective To Withdraw Rejection
The [1] under 37 CFR 1.132 filed [2] is sufficient to overcome the rejection of claim [3] based upon [4].
Examiner Note:
1. In bracket 1, insert either --affidavit-- or --declaration--.
2. In bracket 2, insert the filing date of the affidavit or declaration.
3. In bracket 3, insert the affected claim or claims.
4. In bracket 4, indicate the rejection that has been overcome, including the statutory grounds, e.g.: insufficiency of disclosure
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§ 716EXAMINATION OF APPLICATIONS
under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; lack of utility under 35 U.S.C. 101; inoperativeness under 35 U.S.C. 101; a specific reference applied under 35 U.S.C. 103; etc. See MPEP § 716.
¶ 7.66 Affidavit or Declaration Under 37 CFR 1.132: Insufficient
The [1] under 37 CFR 1.132 filed [2] is insufficient to overcome the rejection of claim [3] based upon [4] as set forth in the last Office action because:
Examiner Note:
1. In bracket 1, insert either --affidavit-- or --declaration--.
2. In bracket 2, insert the filing date of the affidavit or declaration.
3. In bracket 3, insert the claim or claims affected.
4. In bracket 4, indicate the rejection that has not been overcome, including the statutory grounds, i.e.: insufficiency of disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; lack of utility and/or inoperativeness under 35 U.S.C. 101; a specific reference applied under 35 U.S.C. 103; etc. See MPEP § 716.
5. Following this form paragraph, set forth the reasons for the insufficiency; e.g., categories include: --untimely--; --fails to set forth facts--; --facts presented are not germane to the rejection at issue--;--showing is not commensurate in scope with the claims--; etc. See MPEP § 716. Also include a detailed explanation of the reasons why the affidavit or declaration is insufficient. Any of form paragraphs 7.66.01 - 7.66.05 may be used, as appropriate.
¶ 7.66.01 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient:Affiant Has Never Seen Invention Before
It includes statements which amount to an affirmation that the affiant has never seen the claimed subject matter before. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.66.
2. A full explanation must be provided, if appropriate.
¶ 7.66.02 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Invention Works as Intended
It includes statements which amount to an affirmation that the claimed subject matter functions as it was intended to function. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.66.
2. A full explanation must be provided, if appropriate.
¶ 7.66.03 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Refers Only to Invention, Not to Claims
It refers only to the system described in the above referenced application and not to the individual claims of the application. As such the declaration does not show that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.66.
2. A full explanation must be provided, if appropriate.
¶ 7.66.04 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: No Evidence of Long-Felt Need
It states that the claimed subject matter solved a problem that was long standing in the art. However, there is no showing that others of ordinary skill in the art were working on the problem and if so, for how long. In addition, there is no evidence that if persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem. See MPEP § 716.04.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.66.
2. A full explanation must be provided, if appropriate.
¶ 7.66.05 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Conclusion
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Examiner Note:
This form paragraph should be presented as a conclusion to your explanation of why the affidavit or declaration under 37 CFR 1.132 is insufficient, and it must be preceded by form paragraph 7.66.
716.01 Generally Applicable Criteria [R-08.2012]
The following criteria are applicable to all evidence traversing rejections submitted by applicants,
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including affidavits or declarations submitted under 37 CFR 1.132:
(A) Timeliness.
Evidence traversing rejections must be timely or seasonably filed to be entered and entitled to consideration. In re Rothermel, 276 F.2d 393, 125 USPQ 328 (CCPA 1960).
Affidavits and declarations submitted under 37 CFR 1.132 and other evidence traversing rejections are considered timely if submitted:
(1) prior to a final rejection,
(2) before appeal in an application not having a final rejection,
(3) after final rejection , but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e); or
(4) after the prosecution is closed (e.g., after a final rejection, after appeal, or after allowance) if applicant files the affidavit or other evidence with a request for continued examination (RCE) under 37 CFR 1.114 in a utility or plant application filed on or after June 8, 1995; or a continued prosecution application (CPA) under 37 CFR 1.53(d) in a design application. For affidavits or declarations under 37 CFR 1.132 filed after appeal, see 37 CFR 41.33(d) and MPEP § 1206 and § 1211.03.
(B) Consideration of evidence.
Evidence traversing rejections, when timely presented, must be considered by the examiner whenever present. All entered affidavits, declarations, and other evidence traversing rejections are acknowledged and commented upon by the examiner in the next succeeding action. The extent of the commentary depends on the action taken by the examiner. Where an examiner holds that the evidence is sufficient to overcome the prima facie case, the comments should be consistent with the guidelines for statements of reasons for allowance. See MPEP § 1302.14. Where the evidence is insufficient to overcome the rejection, the examiner must specifically explain why the evidence is insufficient. General statements such as “the declaration lacks technical validity” or “the evidence is not commensurate with the scope of the claims”
without an explanation supporting such findings are insufficient.
716.01(a) Objective Evidence of Nonobviousness [R-08.2012]
OBJECTIVE EVIDENCE MUST BE CONSIDERED WHEN TIMELY PRESENT
Affidavits or declarations, when timely presented, containing evidence of criticality or unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc., must be considered by the examiner in determining the issue of obviousness of claims for patentability under 35 U.S.C. 103. The Court of Appeals for the Federal Circuit stated in Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538, 218 USPQ 871, 879 (Fed. Cir. 1983) that “evidence rising out of the so-called ‘secondary considerations’ must always when present be considered en route to a determination of obviousness.” Such evidence might give light to circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or unobviousness, such evidence may have relevancy. Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); In re Palmer, 451 F.2d 1100, 172 USPQ 126 (CCPA 1971); In re Fielder, 471 F.2d 640, 176 USPQ 300 (CCPA 1973). The Graham v. John Deere pronouncements on the relevance of commercial success, etc. to a determination of obviousness were not negated in Sakraida v. Ag Pro, 425 U.S. 273, 189 USPQ 449 (1979) or Anderson’s-Black Rock Inc. v. Pavement Salvage Co., 396 U.S. 57, 163 USPQ 673 (1969), where reliance was placed upon A&P Tea Co. v. Supermarket Corp., 340 U.S. 147,
87 USPQ 303 (1950). See Dann v. Johnston, 425 U.S. 219, 226 n.4, 189 USPQ 257, 261 n. 4 (1976).
Examiners must consider comparative data in the specification which is intended to illustrate the claimed invention in reaching a conclusion with regard to the obviousness of the claims. In re Margolis, 785 F.2d 1029, 228 USPQ 940 (Fed. Cir. 1986). The lack of objective evidence of nonobviousness does not weigh in favor of obviousness. Miles Labs. Inc. v. Shandon Inc., 997 F.2d 870, 878, 27 USPQ2d 1123, 1129 (Fed. Cir.
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1993), cert. denied,127 L. Ed. 232 (1994). However, where a prima facie case of obviousness is established, the failure to provide rebuttal evidence is dispositive.
716.01(b) Nexus Requirement and Evidence of Nonobviousness [R-08.2012]
TO BE OF PROBATIVE VALUE, ANY SECONDARY EVIDENCE MUST BE RELATED TO THE CLAIMED INVENTION (NEXUS REQUIRED)
The weight attached to evidence of secondary considerations by the examiner will depend upon its relevance to the issue of obviousness and the amount and nature of the evidence. Note the great reliance apparently placed on this type of evidence by the Supreme Court in upholding the patent in United States v. Adams, 383 U.S. 39,148 USPQ 479 (1966).
To be given substantial weight in the determination of obviousness or nonobviousness, evidence of secondary considerations must be relevant to the subject matter as claimed, and therefore the examiner must determine whether there is a nexus between the merits of the claimed invention and the evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42, 227 USPQ 657, 673-674 n. 42 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986). The term “nexus” designates a factually and legally sufficient connection between the objective evidence of nonobviousness and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), cert. denied, 488 U.S. 956 (1988).
716.01(c) Probative Value of Objective Evidence [R-08.2012]
I. TO BE OF PROBATIVE VALUE, ANY OBJECTIVE EVIDENCE SHOULD BE SUPPORTED BY ACTUAL PROOF
Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of
unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) (“It is well settled that unexpected results must be established by factual evidence.” “[A]ppellants have not presented any experimental data showing that prior heat-shrinkable articles split. Due to the absence of tests comparing appellant’s heat shrinkable articles with those of the closest prior art, we conclude that appellant’s assertions of unexpected results constitute mere argument.”). See also In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991).
II. ATTORNEY ARGUMENTS CANNOT TAKE THE PLACE OF EVIDENCE
The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant.
See MPEP § 2145 generally for case law pertinent to the consideration of applicant’s rebuttal arguments.
III. OPINION EVIDENCE
Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application meets the requirements of 35 U.S.C. 112 is not entitled to any weight; however, facts
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supporting a basis for deciding that the specification complies with 35 U.S.C. 112 are entitled to some weight); In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in the case, “some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him.” 385 F.2d at 456, 155 USPQ at 524 (emphasis in original)).
In assessing the probative value of an expert opinion, the examiner must consider the nature of the matter sought to be established, the strength of any opposing evidence, the interest of the expert in the outcome of the case, and the presence or absence of factual support for the expert’s opinion. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). See also In re Oelrich, 579 F.2d 86, 198 USPQ 210 (CCPA 1978) (factually based expert opinions on the level of ordinary skill in the art were sufficient to rebut the prima facie case of obviousness); Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989) (statement in publication dismissing the “preliminary identification of a human b-NGF-like molecule” in the prior art, even if considered to be an expert opinion, was inadequate to overcome the rejection based on that prior art because there was no factual evidence supporting the statement); In re Carroll, 601 F.2d 1184, 202 USPQ 571 (CCPA 1979) (expert opinion on what the prior art taught, supported by documentary evidence and formulated prior to the making of the claimed invention, received considerable deference); In re Beattie, 974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992) (declarations of seven persons skilled in the art offering opinion evidence praising the merits of the claimed invention were found to have little value because of a lack of factual support); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991) (conclusory statements that results were “unexpected,” unsupported by objective factual evidence, were considered but were not found to be of substantial evidentiary value).
Although an affidavit or declaration which states only conclusions may have some probative value, such an affidavit or declaration may have little weight when considered in light of all the evidence
of record in the application. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973).
An affidavit of an applicant as to the advantages of his or her claimed invention, while less persuasive than that of a disinterested person, cannot be disregarded for this reason alone. Ex parte Keyes, 214 USPQ 579 (Bd. App. 1982); In re McKenna, 203 F.2d 717, 97 USPQ 348 (CCPA 1953).
716.01(d) Weighing Objective Evidence [R-08.2012]
IN MAKING A FINAL DETERMINATION OF PATENTABILITY, EVIDENCE SUPPORTING PATENTABILITY MUST BE WEIGHED AGAINST EVIDENCE SUPPORTING PRIMA FACIE CASE
When an applicant timely submits evidence traversing a rejection, the examiner must reconsider the patentability of the claimed invention. The ultimate determination of patentability must be based on consideration of the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The submission of objective evidence of patentability does not mandate a conclusion of patentability in and of itself. In re Chupp, 816 F.2d 643, 2 USPQ2d 1437 (Fed.
Cir. 1987). Facts established by rebuttal evidence must be evaluated along with the facts on which the conclusion of a prima facie case was reached, not against the conclusion itself. In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). In other words, each piece of rebuttal evidence should not be evaluated for its ability to knockdown the prima facie case. All of the competent rebuttal evidence taken as a whole should be weighed against the evidence supporting the prima facie case. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988), cert. denied, 493 U.S. 814 (1989); Richardson-Vicks, Inc., v. The
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Upjohn Co., 122 F.3d 1476, 1484, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997) (showing of unexpected results and commercial success of claimed ibuprofen and pseudoephedrine combination in single tablet form, while supported by substantial evidence, held not to overcome strong prima facie case of obviousness). See In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984) for a detailed discussion of the proper roles of the examiner’s prima facie case and applicant’s rebuttal evidence in the final determination of obviousness.
If, after evaluating the evidence, the examiner is still not convinced that the claimed invention is patentable, the next Office action should include a statement to that effect and identify the reason(s) (e.g., evidence of commercial success not convincing, the commercial success not related to the technology, etc.). See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), cert. denied, 488 U.S. 956 (1988). See also MPEP § 716.01. See MPEP § 2145 for guidance in determining whether rebuttal evidence is sufficient to overcome a prima facie case of obviousness.
716.02 Allegations of Unexpected Results [R-08.2012]
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA 1974), the court held that unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of “a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree.” Compare In re Wagner, 371 F.2d 877, 884, 152 USPQ 552, 560 (CCPA 1967) (differences in properties cannot be disregarded on the ground they are differences in degree rather than in kind); Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter.
1992) (“we generally consider a discussion of results in terms of ‘differences in degree’ as compared to ‘differences in kind’ . . . to have very little meaning in a relevant legal sense”).
716.02(a) Evidence Must Show Unexpected Results [R-08.2012]
I. GREATER THAN EXPECTED RESULTS ARE EVIDENCE OF NONOBVIOUSNESS
“A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness ... of the claims at issue.” In re Corkill, 711 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985). In Corkhill, the claimed combination showed an additive result when a diminished result would have been expected. This result was persuasive of nonobviousness even though the result was equal to that of one component alone. Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the sum of each of the effects taken separately (i.e., demonstrating “synergism”). Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). However, a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) (Evidence showing greater than additive sweetness resulting from the claimed mixture of saccharin and L-aspartyl-L-phenylalanine was not sufficient to outweigh the evidence of obviousness because the teachings of the prior art lead to a general expectation of greater than additive sweetening effects when using mixtures of synthetic sweeteners.).
II. SUPERIORITY OF A PROPERTY SHARED WITH THE PRIOR ART IS EVIDENCE OF NONOBVIOUSNESS
Evidence of unobvious or unexpected advantageous properties, such as superiority in a property the
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claimed compound shares with the prior art, can rebut prima facie obviousness. “Evidence that a compound is unexpectedly superior in one of a spectrum of common properties . . . can be enough to rebut a prima facie case of obviousness.” No set number of examples of superiority is required. In re Chupp, 816 F.2d 643, 646, 2 USPQ2d 1437, 1439 (Fed. Cir. 1987) (Evidence showing that the claimed herbicidal compound was more effective than the closest prior art compound in controlling quackgrass and yellow nutsedge weeds in corn and soybean crops was sufficient to overcome the rejection under 35 U.S.C. 103, even though the specification indicated the claimed compound was an average performer on crops other than corn and soybean.). See also Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (unexpected superior therapeutic activity of claimed compound against anaerobic bacteria was sufficient to rebut prima facie obviousness even though there was no evidence that the compound was effective against all bacteria).
III. PRESENCE OFAN UNEXPECTED PROPERTY IS EVIDENCE OF NONOBVIOUSNESS
Presence of a property not possessed by the prior art is evidence of nonobviousness. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (rejection of claims to compound structurally similar to the prior art compound was reversed because claimed compound unexpectedly possessed anti-inflammatory properties not possessed by the prior art compound); Ex parte Thumm, 132 USPQ 66 (Bd. App. 1961) (Appellant showed that the claimed range of ethylene diamine was effective for the purpose of producing “‘regenerated cellulose consisting substantially entirely of skin’” whereas the prior art warned “this compound has ‘practically no effect.’ ”). The submission of evidence that a new product possesses unexpected properties does not necessarily require a conclusion that the claimed invention is nonobvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979). See the discussion of latent properties and additional advantages in MPEP § 2145.
IV. ABSENCE OF AN EXPECTED PROPERTY IS EVIDENCE OF NONOBVIOUSNESS
Absence of property which a claimed invention would have been expected to possess based on the teachings of the prior art is evidence of unobviousness. Ex parte Mead Johnson & Co., 227 USPQ 78 (Bd. Pat. App. & Inter. 1985) (Based on prior art disclosures, claimed compounds would have been expected to possess beta-andrenergic blocking activity; the fact that claimed compounds did not possess such activity was an unexpected result sufficient to establish unobviousness within the meaning of 35 U.S.C. 103.).
716.02(b) Burden on Applicant [R-08.2012]
I. BURDEN ON APPLICANT TO ESTABLISH RESULTSARE UNEXPECTEDAND SIGNIFICANT
The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength “are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration.”); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP § 716.02(c).
II. APPLICANTS HAVE BURDEN OF EXPLAINING PROFFERED DATA
“[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness.” Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
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III. DIRECT AND INDIRECT COMPARATIVE TESTS ARE PROBATIVE OF NONOBVIOUSNESS
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e). See In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 1974) and In re Fouche, 439 F.2d 1237, 1241-42, 169 USPQ 429, 433 (CCPA 1971) for examples of cases where indirect comparative testing was found sufficient to rebut a prima facie case of obviousness.
The patentability of an intermediate may be established by unexpected properties of an end product “when one of ordinary skill in the art would reasonably ascribe to a claimed intermediate the ‘contributing cause’ for such an unexpectedly superior activity or property.” In re Magerlein, 602 F.2d 366, 373, 202 USPQ 473, 479 (CCPA 1979). “In order to establish that the claimed intermediate is a ‘contributing cause’of the unexpectedly superior activity or property of an end product, an applicant must identify the cause of the unexpectedly superior activity or property (compared to the prior art) in the end product and establish a nexus for that cause between the intermediate and the end product.” Id. at 479.
716.02(c) Weighing Evidence of Expected and Unexpected Results [R-08.2012]
I. EVIDENCE OF UNEXPECTEDAND EXPECTED PROPERTIES MUST BE WEIGHED
Evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (Claims directed to a method of effecting analgesia without producing physical dependence by administering the levo isomer of a compound having a certain chemical structure were rejected as obvious over the prior art. Evidence that the compound was unexpectedly nonaddictive was sufficient to overcome the obviousness rejection. Although the compound also
had the expected result of potent analgesia, there was evidence of record showing that the goal of research in this area was to produce an analgesic compound which was nonaddictive, enhancing the evidentiary value of the showing of nonaddictiveness as an indicia of nonobviousness.). See MPEP § 716.01(d) for guidance on weighing evidence submitted to traverse a rejection.
Where the unexpected properties of a claimed invention are not shown to have a significance equal to or greater than the expected properties, the evidence of unexpected properties may not be sufficient to rebut the evidence of obviousness. In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) (Claims were directed to a display/memory device which was prima facie obvious over the prior art. The court found that a higher memory margin and lower operating voltage would have been expected properties of the claimed device, and that a higher memory margin appears to be the most significant improvement for a memory device. Although applicant presented evidence of unexpected properties with regard to lower peak discharge current and higher luminous efficiency, these properties were not shown to have a significance equal to or greater than that of the expected higher memory margin and lower operating voltage. The court held the evidence of nonobviousness was not sufficient to rebut the evidence of obviousness.); In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (Evidence of improved feed efficiency in steers was not sufficient to rebut prima facie case of obviousness based on prior art which specifically taught the use of compound X537A to enhance weight gain in animals because the evidence did not show that a significant aspect of the claimed invention would have been unexpected.).
II. EXPECTED BENEFICIAL RESULTS ARE EVIDENCE OF OBVIOUSNESS
“Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.” In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967) (resultant decrease of dental enamel solubility accomplished by adding an acidic buffering agent to a fluoride containing
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dentifrice was expected based on the teaching of the prior art); Ex parte Blanc, 13 USPQ2d 1383 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a process of sterilizing a polyolefinic composition which contains an antioxidant with high-energy radiation. Although evidence was presented in appellant’s specification showing that particular antioxidants are effective, the Board concluded that these beneficial results would have been expected because one of the references taught a claimed antioxidant is very efficient and provides better results compared with other prior art antioxidants.).
716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012]
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at “elevated temperatures” using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term “elevated temperatures” encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments
limited to sodium were not commensurate in scope with the claims.).
I. NONOBVIOUSNESS OFA GENUS OR CLAIMED RANGE MAY BE SUPPORTED BY DATA SHOWING UNEXPECTED RESULTS OF A SPECIES OR NARROWER RANGE UNDER CERTAIN CIRCUMSTANCES
The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (Claims directed to mixtures of an herbicide known as “FENAC” with a diphenyl ether herbicide in certain relative proportions were rejected as prima facie obvious. Applicant presented evidence alleging unexpected results testing three species of diphenyl ether herbicides over limited relative proportion ranges. The court held that the limited number of species exemplified did not provide an adequate basis for concluding that similar results would be obtained for the other diphenyl ether herbicides within the scope of the generic claims. Claims 6-8 recited a FENAC:diphenyl ether ratio of 1:1 to 4:1 for the three specific ethers tested. For two of the claimed ethers, unexpected results were demonstrated over a ratio of 16:1 to 2:1, and the effectiveness increased as the ratio approached the untested region of the claimed range. The court held these tests were commensurate in scope with the claims and supported the nonobviousness thereof. However, for a third ether, data was only provided over the range of 1:1 to 2:1 where the effectiveness decreased to the “expected level” as it approached the untested region. This evidence was not sufficient to overcome the obviousness rejection.); In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was “no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.”).
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II. DEMONSTRATING CRITICALITY OF A CLAIMED RANGE
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
716.02(e) Comparison With Closest Prior Art [R-08.2012]
An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). “A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference.” In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (deviations from example were inconsequential).
I. THE CLAIMED INVENTION MAY BE COMPARED WITH PRIORART THAT IS CLOSER THAN THAT APPLIED BY THE EXAMINER
Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the examiner. In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 1961) (Claims to a 13-chloro substituted compound were rejected as obvious over nonchlorinated analogs of the claimed compound. Evidence showing unexpected results for the claimed compound as compared with the 9-, 12-, and 14- chloro derivatives of the compound rebutted the prima facie case of obviousness because the compounds compared
against were closer to the claimed invention than the prior art relied upon.).
II. COMPARISONS WHEN THERE ARE TWO EQUALLY CLOSE PRIOR ART REFERENCES
Showing unexpected results over one of two equally close prior art references will not rebut prima facie obviousness unless the teachings of the prior art references are sufficiently similar to each other that the testing of one showing unexpected results would provide the same information as to the other. In re Johnson, 747 F.2d 1456, 1461, 223 USPQ 1260, 1264 (Fed. Cir. 1984) (Claimed compounds differed from the prior art either by the presence of a trifluoromethyl group instead of a chloride radical, or by the presence of an unsaturated ester group instead of a saturated ester group. Although applicant compared the claimed invention with the prior art compound containing a chloride radical, the court found this evidence insufficient to rebut the prima facie case of obviousness because the evidence did not show relative effectiveness over all compounds of the closest prior art. An applicant does not have to test all the compounds taught by each reference, “[h]owever, where an applicant tests less than all cited compounds, the test must be sufficient to permit a conclusion respecting the relative effectiveness of applicant’s claimed compounds and the compounds of the closest prior art.” Id. (quoting In re Payne, 606 F.2d 303, 316, 203 USPQ 245,
256 (CCPA 1979)) (emphasis in original).).
III. THE CLAIMED INVENTION MAY BE COMPARED WITH THE CLOSEST SUBJECT MATTER THAT EXISTS IN THE PRIOR ART
Although evidence of unexpected results must compare the claimed invention with the closest prior art, applicant is not required to compare the claimed invention with subject matter that does not exist in the prior art. In re Geiger, 815 F.2d 686, 689, 2 USPQ2d 1276, 1279 (Fed. Cir. 1987) (Newman, J., concurring) (Evidence rebutted prima facie case by comparing claimed invention with the most relevant prior art. Note that the majority held the Office failed to establish a prima facie case of obviousness.); In re Chapman, 357 F.2d 418, 148 USPQ 711 (CCPA 1966) (Requiring applicant to compare claimed invention with polymer suggested by the
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combination of references relied upon in the rejection of the claimed invention under 35 U.S.C. 103 “would be requiring comparison of the results of the invention with the results of the invention.” 357 F.2d at 422, 148 USPQ at 714.).
716.02(f) Advantages Disclosed or Inherent [R-08.2012]
The totality of the record must be considered when determining whether a claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made. Therefore, evidence and arguments directed to advantages not disclosed in the specification cannot be disregarded. In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995) (Although the purported advantage of placement of a selective catalytic reduction catalyst in the bag retainer of an apparatus for controlling emissions was not disclosed in the specification, evidence and arguments rebutting the conclusion that such placement was a matter of “design choice” should have been considered as part of the totality of the record. “We have found no cases supporting the position that a patent applicant’s evidence or arguments traversing a § 103 rejection must be contained within the specification. There is no logical support for such a proposition as well, given that obviousness is determined by the totality of the record including, in some instances most significantly, the evidence and arguments proffered during the give-and-take of ex parte patent prosecution.” 66 F.3d at 299, 36 USPQ2d at 1095.). See also In re Zenitz, 333 F.2d 924, 928, 142 USPQ 158, 161 (CCPA 1964) (evidence that claimed compound minimized side effects of hypotensive activity must be considered because this undisclosed property would inherently flow from disclosed use as tranquilizer); Ex parte Sasajima, 212 USPQ 103, 104 - 05 (Bd. App. 1981) (evidence relating to initially undisclosed relative toxicity of claimed pharmaceutical compound must be considered).
The specification need not disclose proportions or values as critical for applicants to present evidence showing the proportions or values to be critical. In
re Saunders, 444 F.2d 599, 607, 170 USPQ 213, 220 (CCPA 1971).
716.02(g) Declaration or Affidavit Form [R-08.2012]
“The reason for requiring evidence in declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 25 and 18 U.S.C. 1001.” Permitting a publication to substitute for expert testimony would circumvent the guarantees built into the statute. Ex parte Gray, 10 USPQ2d 1922, 1928 (Bd. Pat. App. & Inter. 1989). Publications may, however, be evidence of the facts in issue and should be considered to the extent that they are probative.
716.03 Commercial Success [R-08.2012]
I. NEXUS BETWEEN CLAIMED INVENTIONAND EVIDENCE OF COMMERCIAL SUCCESS REQUIRED
An applicant who is asserting commercial success to support its contention of nonobviousness bears the burden of proof of establishing a nexus between the claimed invention and evidence of commercial success.
The Federal Circuit has acknowledged that applicant bears the burden of establishing nexus, stating:
In the ex parte process of examining a patent application, however, the PTO lacks the means or resources to gather evidence which supports or refutes the applicant’s assertion that the sale constitute commercial success. C.f. Ex parte Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. & Int. 1990)(evidentiary routine of shifting burdens in civil proceedings inappropriate in ex parte prosecution proceedings because examiner has no available means for adducing evidence). Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success.
In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996). See also In re GPAC,
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57 F.3d 1573, 1580, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995); In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994) (Evidence of commercial success of articles not covered by the claims subject to the 35 U.S.C. 103 rejection was not probative of nonobviousness).
The term “nexus” designates a factually and legally sufficient connection between the evidence of commercial success and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988).
II. COMMERCIAL SUCCESS ABROAD IS RELEVANT
Commercial success abroad, as well as in the United States, is relevant in resolving the issue of nonobviousness. Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 221 USPQ 481 (Fed. Cir. 1984).
716.03(a) Commercial Success Commensurate in Scope With Claimed Invention [R-08.2012]
I. EVIDENCE OF COMMERCIAL SUCCESS MUST BE COMMENSURATE IN SCOPE WITH THE CLAIMS
Objective evidence of nonobviousness including commercial success must be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791, 171 USPQ 294 (CCPA 1971) (evidence showing commercial success of thermoplastic foam “cups” used in vending machines was not commensurate in scope with claims directed to thermoplastic foam “containers” broadly). In order to be commensurate in scope with the claims, the commercial success must be due to claimed features, and not due to unclaimed features. Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229, 17 USPQ2d 1257, 1260 (D.D.C. 1990), aff’d, 959 F.2d 226, 228, 22 USPQ2d 1153, 1156 (Fed. Cir. 1992) (Features responsible for commercial success were recited only in allowed dependent claims, and therefore the evidence of commercial success was not
commensurate in scope with the broad claims at issue.).
An affidavit or declaration attributing commercial success to a product or process “constructed according to the disclosure and claims of [the] patent application” or other equivalent language does not establish a nexus between the claimed invention and the commercial success because there is no evidence that the product or process which has been sold corresponds to the claimed invention, or that whatever commercial success may have occurred is attributable to the product or process defined by the claims. Ex parte Standish, 10 USPQ2d 1454, 1458 (Bd. Pat. App. & Inter. 1988).
II. REQUIREMENTS WHEN CLAIMED INVENTION IS NOT COEXTENSIVE WITH COMMERCIAL PRODUCT OR PROCESS
If a particular range is claimed, applicant does not need to show commercial success at every point in the range. “Where, as here, the claims are directed to a combination of ranges and procedures not shown by the prior art, and where substantial commercial success is achieved at an apparently typical point within those ranges, and the affidavits definitely indicate that operation throughout the claimed ranges approximates that at the particular points involved in the commercial operation, we think the evidence as to commercial success is persuasive.” In re Hollingsworth, 253 F.2d 238, 240, 117 USPQ 182, 184 (CCPA 1958). See also Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988) (where the commercially successful product or process is not coextensive with the claimed invention, applicant must show a legally sufficient relationship between the claimed feature and the commercial product or process).
716.03(b) Commercial Success Derived From Claimed Invention [R-8.2012]
I. COMMERCIAL SUCCESS MUST BE DERIVED FROM THE CLAIMED INVENTION
In considering evidence of commercial success, care should be taken to determine that the commercial success alleged is directly derived from the invention
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claimed, in a marketplace where the consumer is free to choose on the basis of objective principles, and that such success is not the result of heavy promotion or advertising, shift in advertising, consumption by purchasers normally tied to applicant or assignee, or other business events extraneous to the merits of the claimed invention, etc. In re Mageli, 470 F.2d 1380, 176 USPQ 305 (CCPA 1973) (conclusory statements or opinions that increased sales were due to the merits of the invention are entitled to little weight); In re Noznick, 478 F.2d 1260, 178 USPQ 43 (CCPA 1973).
In ex parte proceedings before the Patent and Trademark Office, an applicant must show that the claimed features were responsible for the commercial success of an article if the evidence of nonobviousness is to be accorded substantial weight. See In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1690 (Fed. Cir. 1996) (Inventor’s opinion as to the purchaser’s reason for buying the product is insufficient to demonstrate a nexus between the sales and the claimed invention.). Merely showing that there was commercial success of an article which embodied the invention is not sufficient. Ex parte Remark, 15 USPQ2d 1498, 1502-02 (Bd. Pat. App. & Inter. 1990). Compare Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988) (In civil litigation, a patentee does not have to prove that the commercial success is not due to other factors. “A requirement for proof of the negative of all imaginable contributing factors would be unfairly burdensome, and contrary to the ordinary rules of evidence.”).
See also Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985) (commercial success may have been attributable to extensive advertising and position as a market leader before the introduction of the patented product); In re Fielder, 471 F.2d 690, 176 USPQ 300 (CCPA 1973) (success of invention could be due to recent changes in related technology or consumer demand; here success of claimed voting ballot could be due to the contemporary drive toward greater use of automated data processing techniques); EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 1985) (evidence of licensing is a secondary consideration which must be carefully appraised as to its evidentiary value because
licensing programs may succeed for reasons unrelated to the unobviousness of the product or process, e.g., license is mutually beneficial or less expensive than defending infringement suits); Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986) (Evidence of commercial success supported a conclusion of nonobviousness of claims to an immunometric “sandwich” assay with monoclonal antibodies. Patentee’s assays became a market leader with 25% of the market within a few years. Evidence of advertising did not show absence of a nexus between commercial success and the merits of the claimed invention because spending 25-35% of sales on marketing was not inordinate (mature companies spent 17-32% of sales in this market), and advertising served primarily to make industry aware of the product because this is not kind of merchandise that can be sold by advertising hyperbole.).
II. COMMERCIAL SUCCESS MUST FLOW FROM THE FUNCTIONS AND ADVANTAGES DISCLOSED OR INHERENT IN THE SPECIFICATION DESCRIPTION
To be pertinent to the issue of nonobviousness, the commercial success of devices falling within the claims of the patent must flow from the functions and advantages disclosed or inherent in the description in the specification. Furthermore, the success of an embodiment within the claims may not be attributable to improvements or modifications made by others. In re Vamco Machine & Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed. Cir. 1985).
III. IN DESIGN CASES, ESTABLISHMENT OF NEXUS IS ESPECIALLY DIFFICULT
Establishing a nexus between commercial success and the claimed invention is especially difficult in design cases. Evidence of commercial success must be clearly attributable to the design to be of probative value, and not to brand name recognition, improved performance, or some other factor. Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1984) (showing of commercial success was not accompanied by evidence attributing commercial success of Litton microwave oven to the design thereof).
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IV. SALES FIGURES MUST BE ADEQUATELY DEFINED
Gross sales figures do not show commercial success absent evidence as to market share, Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985), or as to the time period during which the product was sold, or as to what sales would normally be expected in the market, Ex parte Standish, 10 USPQ2d 1454 (Bd. Pat. App. & Inter. 1988).
716.04 Long-Felt Need and Failure of Others [R-08.2012]
I. THE CLAIMED INVENTION MUST SATISFY A LONG-FELT NEED WHICH WAS RECOGNIZED, PERSISTENT, AND NOT SOLVED BY OTHERS
Establishing long-felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without solution. The relevance of long-felt need and the failure of others to the issue of obviousness depends on several factors. First, the need must have been a persistent one that was recognized by those of ordinary skill in the art. In re Gershon, 372 F.2d 535, 539, 152 USPQ 602, 605 (CCPA 1967) (“Since the alleged problem in this case was first recognized by appellants, and others apparently have not yet become aware of its existence, it goes without saying that there could not possibly be any evidence of either a long felt need in the . . . art for a solution to a problem of dubious existence or failure of others skilled in the art who unsuccessfully attempted to solve a problem of which they were not aware.”); Orthopedic Equipment Co., Inc. v. All Orthopedic
Appliances, Inc., 707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983) (Although the claimed invention achieved the desirable result of reducing inventories, there was no evidence of any prior unsuccessful attempts to do so.).
Second, the long-felt need must not have been satisfied by another before the invention by applicant. Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988) (Although at one time there was a long-felt need for a “do-it-yourself” window shade material
which was adjustable without the use of tools, a prior art product fulfilled the need by using a scored plastic material which could be torn. “[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved”.)
Third, the invention must in fact satisfy the long-felt need. In re Cavanagh, 436 F.2d 491, 168 USPQ 466 (CCPA 1971).
II. LONG-FELT NEED IS MEASURED FROM THE DATE A PROBLEM IS IDENTIFIED AND EFFORTS ARE MADE TO SOLVE IT
Long-felt need is analyzed as of the date the problem is identified and articulated, and there is evidence of efforts to solve that problem, not as of the date of the most pertinent prior art references. Texas Instruments Inc. v. Int’l Trade Comm’n, 988 F.2d 1165, 1179, 26 USPQ2d 1018, 1029 (Fed. Cir. 1993).
III. OTHER FACTORS CONTRIBUTING TO THE PRESENCE OF A LONG-FELT NEED MUST BE CONSIDERED
The failure to solve a long-felt need may be due to factors such as lack of interest or lack of appreciation of an invention’s potential or marketability rather than want of technical know-how. Scully Signal Co. v. Electronics Corp. of America, 570 F.2d 355, 196 USPQ 657 (1st. Cir. 1977).
See also Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 698, 218 USPQ 865, 869 (Fed. Cir. 1983) (presence of legislative regulations for controlling sulfur dioxide emissions did not militate against existence of long-felt need to reduce the sulfur content in the air); In re Tiffin, 443 F.2d 344, 170 USPQ 88 (CCPA 1971) (fact that affidavit supporting contention of fulfillment of a long-felt need was sworn by a licensee adds to the weight to be accorded the affidavit, as long as there is a bona fide licensing agreement entered into at arm’s length).
716.05 Skepticism of Experts [R-08.2012]
“Expressions of disbelief by experts constitute strong evidence of nonobviousness.” Environmental
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Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 698, 218 USPQ 865, 869 (Fed. Cir. 1983) (citing United States v. Adams, 383 U.S. 39, 52, 148 USPQ 479, 483-484 (1966)) (The patented process converted all the sulfur compounds in a certain effluent gas stream to hydrogen sulfide, and thereafter treated the resulting effluent for removal of hydrogen sulfide. Before learning of the patented process, chemical experts, aware of earlier failed efforts to reduce the sulfur content of effluent gas streams, were of the opinion that reducing sulfur compounds to hydrogen sulfide would not adequately solve the problem.).
“The skepticism of an expert, expressed before these inventors proved him wrong, is entitled to fair evidentiary weight, . . . as are the five to six years of research that preceded the claimed invention.” In re Dow Chemical Co., 837 F.2d 469, 5 USPQ2d 1529 (Fed. Cir. 1988); Burlington Industries Inc. v. Quigg, 822 F.2d 1581, 3 USPQ2d 1436 (Fed. Cir. 1987) (testimony that the invention met with initial incredulity and skepticism of experts was sufficient to rebut the prima facie case of obviousness based on the prior art).
716.06 Copying [R-08.2012]
Another form of secondary evidence which may be presented by applicants during prosecution of an application, but which is more often presented during litigation, is evidence that competitors in the marketplace are copying the invention instead of using the prior art. However, more than the mere fact of copying is necessary to make that action significant because copying may be attributable to other factors such as a lack of concern for patent property or contempt for the patentee’s ability to enforce the patent. Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985). Evidence of copying was persuasive of nonobviousness when an alleged infringer tried for a substantial length of time to design a product or process similar to the claimed invention, but failed and then copied the claimed invention instead. Dow Chem. Co. v. American Cyanamid Co., 816 F.2d 617, 2 USPQ2d 1350 (Fed. Cir. 1987). Alleged copying is not persuasive of nonobviousness when the copy is not identical to the claimed product, and the other manufacturer had not expended great effort
to develop its own solution. Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985). See also Vandenberg v. Dairy Equipment Co., 740 F.2d 1560, 1568, 224 USPQ 195, 199 (Fed. Cir. 1984) (evidence of copying not found persuasive of nonobviousness) and Panduit Corp. v. Dennison Manufacturing Co., 774 F.2d 1082, 1098-99, 227 USPQ 337, 348, 349 (Fed. Cir. 1985), vacated on other grounds, 475 U.S. 809, 229 USPQ 478 (1986), on remand, 810 F.2d 1561, 1 USPQ2d 1593 (Fed.
Cir. 1987) (evidence of copying found persuasive of nonobviousness where admitted infringer failed to satisfactorily produce a solution after 10 years of effort and expense).
716.07 Inoperability of References [R-08.2012]
Since every patent is presumed valid (35 U.S.C. 282), and since that presumption includes the presumption of operability (Metropolitan Eng. Co. v. Coe, 78 F.2d 199, 25 USPQ 216 (D.C. Cir. 1935), examiners should not express any opinion on the operability of a patent. Affidavits or declarations attacking the operability of a patent cited as a reference must rebut the presumption of operability by a preponderance of the evidence. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980).
Further, since in a patent it is presumed that a process if used by one skilled in the art will produce the product or result described therein, such presumption is not overcome by a mere showing that it is possible to operate within the disclosure without obtaining the alleged product. In re Weber, 405 F.2d 1403, 160 USPQ 549 (CCPA 1969). It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker. The failures of experimenters who have no interest in succeeding should not be accorded great weight. In re Michalek, 162 F.2d 229, 74 USPQ 107 (CCPA 1947); In re Reid, 179 F.2d 998, 84 USPQ 478 (CCPA 1950).
Where the affidavit or declaration presented asserts inoperability in features of the reference which are not relied upon, the reference is still effective as to other features which are operative. In re Shepherd, 172 F.2d 560, 80 USPQ 495 (CCPA 1949).
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Where the affidavit or declaration presented asserts that the reference relied upon is inoperative, the claims represented by applicant must distinguish from the alleged inoperative reference disclosure. In re Crosby, 157 F.2d 198, 71 USPQ 73 (CCPA
1946). See also In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (lack of diagrams, flow charts, and other details in the prior art references did not render them nonenabling in view of the fact that applicant’s own specification failed to provide such detailed information, and that one skilled in the art would have known how to implement the features of the references).
If a patent teaches or suggests the claimed invention, an affidavit or declaration by patentee that he or she did not intend the disclosed invention to be used as claimed by applicant is immaterial. In re Pio, 217 F.2d 956, 104 USPQ 177 (CCPA 1954). Compare In re Yale, 434 F.2d 66, 168 USPQ 46 (CCPA 1970) (Correspondence from a co-author of a literature article confirming that the article misidentified a compound through a typographical error that would have been obvious to one of ordinary skill in the art was persuasive evidence that the erroneously typed compound was not put in the possession of the public.).
716.08 Utility and Operability of Applicant’s Disclosure [R-08.2012]
See MPEP § 2107.02, for guidance on when it is proper to require evidence of utility or operativeness, and how to evaluate any evidence which is submitted to overcome a rejection under 35 U.S.C. 101 for lack of utility. See MPEP § 2107 - § 2107.03 generally for utility examination guidelines and an overview of legal precedent relevant to the utility requirement of 35 U.S.C. 101.
716.09 Sufficiency of Disclosure [R-11.2013]
See MPEP § 2164 - § 2164.08(c) for guidance in determining whether the specification provides an enabling disclosure in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
Once the examiner has established a prima facie case of lack of enablement, the burden falls on the
applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would have been able to make and use the claimed invention using the disclosure as a guide. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286
(CCPA 1973). Evidence to supplement a specification which on its face appears deficient under 35 U.S.C. 112 must establish that the information which must be read into the specification to make it complete would have been known to those of ordinary skill in the art. In re Howarth, 654 F.2d 103, 210 USPQ 689 (CCPA 1981) (copies of patent specifications which had been opened for inspection in Rhodesia, Panama, and Luxembourg prior to the U.S. filing date of the applicant were not sufficient to overcome a rejection for lack of enablement under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph).
Affidavits or declarations presented to show that the disclosure of an application is sufficient to one skilled in the art are not acceptable to establish facts which the specification itself should recite. In re Buchner, 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991) (Expert described how he would construct elements necessary to the claimed invention whose construction was not described in the application or the prior art; this was not sufficient to demonstrate that such construction was well-known to those of ordinary skill in the art.); In re Smyth, 189 F.2d 982, 90 USPQ 106 (CCPA 1951).
Affidavits or declarations purporting to explain the disclosure or to interpret the disclosure of a pending application are usually not considered. In re Oppenauer, 143 F.2d 974, 62 USPQ 297 (CCPA 1944). But see Glaser v. Strickland, 220 USPQ 446 (Bd. Pat. Int. 1983) which reexamines the rationale on which In re Oppenauer was based in light of the Federal Rules of Evidence. The Board stated as a general proposition “Opinion testimony which merely purports to state that a claim or count, is ‘disclosed’ in an application involved in an interference . . . should not be given any weight. Opinion testimony which purports to state that a particular feature or limitation of a claim or count is disclosed in an application involved in an interference and which explains the underlying factual basis for the opinion may be helpful and can be admitted. The weight to which the latter testimony
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may be entitled must be evaluated strictly on a case-by-case basis.”
716.10 Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103 [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717]
Under certain circumstances an affidavit or declaration may be submitted which attempts to attribute an activity, a reference or part of a reference to the applicant to overcome a rejection based on pre-AIA 35 U.S.C. 102 prior art. If successful, the activity or the reference is no longer applicable. When subject matter, disclosed in a patent or patent application filed jointly by S and another is claimed in a later application filed by S, the joint patent or joint patent application publication is a valid reference available as prior art under pre-AIA 35 U.S.C. 102(a), (e), or (f) unless overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132. An unequivocal declaration under 37 CFR 1.132 by S that he/she conceived or invented the subject matter that was disclosed but not claimed in the patent or patent application publication and relied on in the rejection would be sufficient to overcome the rejection. In re DeBaun , 687 F.2d 459, 214 USPQ 933 (CCPA 1982). Where the reference is a U.S. patent or patent application publication which includes a claim reciting the subject matter relied upon in a rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination, a declaration under 37 CFR 1.132 must also explain the presence of the additional inventor in the reference (e.g., the disclosure in claim 1 of the reference is relied upon to reject the claims; the affidavit or declaration explains that S is the sole inventor of claim 1, and the additional inventor and S are joint inventors of
claim 2 of the reference). Disclaimer by the other patentee or other applicant of the published application should not be required but, if submitted, may be accepted by the examiner.
Note that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming another inventor which claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05.
For applications subject to current 35 U.S.C. 102, see MPEP §§ 717, 2153 and 2154.
Where there is a published article identifying the authorship (MPEP § 715.01(c)) or a patent or an application publication identifying the inventorship (MPEP § 715.01(a)) that discloses subject matter being claimed in an application undergoing examination, the designation of authorship or inventorship does not raise a presumption of inventorship with respect to the subject matter disclosed in the article or with respect to the subject matter disclosed but not claimed in the patent or published application so as to justify a rejection under pre-AIA 35 U.S.C. 102(f).
However, it is incumbent upon the inventors named in the application, in response to an inquiry regarding the appropriate inventorship under pre-AIA 35 U.S.C. 102(f) or to rebut a rejection under pre-AIA 35 U.S.C. 102(a) or (e), to provide a satisfactory showing by way of affidavit under 37 CFR 1.132 that the inventorship of the application is correct in that the reference discloses subject matter derived from the applicant rather than invented by the author, patentee, or applicant of the published application notwithstanding the authorship of the article or the inventorship of the patent or published application. In re Katz, 687 F.2d 450, 455, 215 USPQ 14,
18 (CCPA 1982) (inquiry is appropriate to clarify any ambiguity created by an article regarding inventorship and it is then incumbent upon the applicant to provide “a satisfactory showing that would lead to a reasonable conclusion that [applicant] is the ... inventor” of the subject matter disclosed in the article and claimed in the application).
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An uncontradicted “unequivocal statement” from the applicant regarding the subject matter disclosed in an article, patent, or published application will be accepted as establishing inventorship. In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982). However, a statement by the applicants regarding their inventorship in view of an article, patent, or published application may not be sufficient where there is evidence to the contrary. Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (a rejection under pre-AIA 35 U.S.C. 102(f) was affirmed notwithstanding declarations by the alleged actual inventors as to their inventorship in view of a nonapplicant author submitting a letter declaring the author’s inventorship); In re Carreira, 532 F.2d 1356, 189 USPQ 461 (CCPA 1976) (disclaiming declarations from patentees were directed at the generic invention and not at the claimed species, hence no need to consider derivation of the subject matter).
A successful 37 CFR 1.132 affidavit or declaration establishing derivation by the author, patentee, or applicant of the published application of a first reference does not enable an applicant to step into the shoes of that author, patentee, or applicant of the published application in regard to its date of publication so as to defeat a later second reference. In re Costello, 717 F.2d 1346, 1350, 219 USPQ
389, 392 (Fed. Cir. 1983).
Affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102 are affidavits or declarations under 37 CFR 1.132 because these are not otherwise provided for in the rules of practice. The Office will treat affidavits or declarations of attribution for applications subject to the current 35 U.S.C. 102 as affidavits or declarations under 37 CFR 1.130, and affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102 as affidavits or declarations under 37 CFR 1.132, regardless of whether the affidavit or declaration is designated as an affidavit or declaration under 37 CFR 1.130, 1.131, or 37 CFR 1.132.
EXAMPLES
The following examples demonstrate the application of an attribution affidavit or declaration.
Example 1
During the search the examiner finds a reference fully describing the claimed invention. The applicant is the author or patentee and it was published or patented less than one year prior to the filing date of the application. The reference cannot be used against applicant since it does not satisfy the 1-year time requirement of pre-AIA 35 U.S.C. 102(b).
Example 2
Same facts as above, but the author or patentee is an entity different from applicant. Since the entities are different, the reference is prior art under pre-AIA 35 U.S.C. 102(a) or (e).
In the situation described in Example 2, an affidavit under 37 CFR 1.132 may be submitted to show that the relevant portions of the reference originated with or were obtained from applicant. Thus the affidavit attempts to convert the fact situation from that described in Example 2 to the situation described in Example 1.
717 Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 715 et seq. for affidavits or declarations under 37 CFR 1.131(a), MPEP § 718 for affidavits or declarations under 37 CFR 1.131(c), and MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
35 U.S.C. 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) with respect to the claimed invention if: (1) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
35 U.S.C. 102(b)(2)(A) and (B) provide that a disclosure shall not be prior art to a claimed
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invention under 35 U.S.C. 102(a)(2) if: (1) The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
The Office has provided a mechanism in 37 CFR 1.130 for filing an affidavit or declaration to establish that a disclosure made no earlier than one year before the effective filing date of the claimed invention is not prior art under 35 U.S.C. 102(a) due to an exception in 35 U.S.C. 102(b). See MPEP § 717.01 et seq. for more information on declarations filed under 37 CFR 1.130.
Additionally, 35 U.S.C. 102(b)(2)(C) provides that a disclosure made in a U.S. patent, U.S. patent application publication, or WIPO published application shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person. This provision replaces the exception in pre-AIA 35 U.S.C. 103(c) that applied only in the context of an obviousness analysis under 35 U.S.C. 103 to prior art that was commonly owned at the time the claimed invention was made, and which qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g). Thus, the AIA provides that certain prior patents and published patent applications of co-workers and collaborators are not prior art either for purposes of determining novelty (35 U.S.C. 102) or nonobviousness (35 U.S.C. 103). See MPEP § 717.02 et seq. for more information on the prior art exclusion under 35 U.S.C. 102(b)(2)(C).
The AIA does not define the term “disclosure,” and 35 U.S.C. 102(a) does not use the term “disclosure.” 35 U.S.C. 102(b)(1) and 102(b)(2), however, each state conditions under which a “disclosure” that otherwise falls within 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under 35 U.S.C. 102(a)(1) or 102(a)(2). Thus, the Office is treating the term “disclosure” as a generic expression intended to
encompass the documents and activities enumerated in 35 U.S.C. 102(a) (i.e., being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application).
For more information on the provisions of 35 U.S.C. 102 in general, see MPEP § 2150 et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(1), see MPEP § 2153 et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(2), see MPEP § 2154.02 et seq.
717.01 Affidavit or Declaration Under 37 CFR 1.130 [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 715 et seq. for affidavits or declarations under 37 CFR 1.131(a), MPEP § 718 for affidavits or declarations under 37 CFR 1.131(c), and MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
37 CFR 1.130 Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act.
(a) Affidavit or declaration of attribution. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
(b) Affidavit or declaration of prior public disclosure. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. An affidavit or declaration under this paragraph must identify the subject matter publicly disclosed and provide the date such subject matter was publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
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(1) If the subject matter publicly disclosed on that date was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication.
(2) If the subject matter publicly disclosed on that date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on that date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(c) When this section is not available . The provisions of this section are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. The provisions of this section may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or a patent owner may file a petition for a derivation proceeding pursuant to § 42.401 et seq. of this title
(d) Applications and patents to which this section is applicable. The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
(1) A claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013.
*****
37 CFR 1.130 provides a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art in accordance with 35 U.S.C. 102(b). In other words, 37 CFR 1.130, like 37 CFR 1.131 and 37 CFR 1.132, provides a mechanism for the submission of evidence to disqualify a disclosure as prior art or otherwise traverse a rejection. An applicant’s or patent owner’s compliance with 37 CFR 1.130 means that the applicant or patent owner is entitled to have the evidence considered in determining the patentability of the claim(s) at issue. It does not mean that the applicant or patent owner is entitled as a matter of right to have the rejection of, or objection to, the claim(s) withdrawn. See Changes To Implement the Patent Business Goals,
65 FR 54604, 54640 (Sept. 8, 2000) (discussing procedural nature of 37 CFR 1.131 and 37 CFR 1.132).
37 CFR 1.130(a) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(a) pertains to the provisions of subparagraph (A) of 35 U.S.C. 102(b)(1) and 102(b)(2).
37 CFR 1.130(b) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(b) pertains to the provisions of subparagraph (B) of 35 U.S.C. 102(b)(1) and 102(b)(2).
37 CFR 1.130(c) provides that the provisions of 37 CFR 1.130 are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. A disclosure made more than one year before the effective filing date of the claimed invention is prior art under 35 U.S.C. 102(a)(1), and may not be disqualified under 35 U.S.C. 102(b)(1).
37 CFR 1.130(d) provides that the provisions of 37 CFR 1.130 apply to any application for patent, and to any patent issuing thereon, that is subject to 35 U.S.C. 102 and 103.
I. SITUATIONS WHERE 37 CFR 1.130 AFFIDAVITS OR DECLARATIONS CAN BE USED
Affidavits or declarations under 37 CFR 1.130 may be used, for example:
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(A) When a claim is under a prior art rejection, to disqualify a disclosure (e.g., reference, activity, or portion thereof) that is relied upon as prior art under 35 U.S.C. 102(a)(1) or (2) by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor, subject to certain restrictions, as discussed below in subsection II.
(B) When a claim is under a prior art rejection, to disqualify a disclosure (e.g., reference, activity, or portion thereof) that is relied upon as prior art under 35 U.S.C. 102(a)(1) or (2) by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, subject to certain restrictions, as discussed below in subsection II.
If effective, the disqualification of the disclosure as prior art under 35 U.S.C. 102(a) will make the disclosure unavailable to be applied in a rejection under either 35 U.S.C. 102(a) or 35 U.S.C. 103. For example, an applicant or patent owner may overcome a 35 U.S.C. 103 rejection based on a combination of references by disqualifying only one of the references (or portion thereof) applied in the rejection. The U.S. patents or U.S. patent application publications may continue to be applied under the judicially created doctrine of nonstatutory double patenting, statutory double patenting and may serve as evidence of the level of ordinary skill or evidence relevant to an enablement inquiry.
II. SITUATIONS WHERE 37 CFR 1.130 AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE
An affidavit or declaration under 37 CFR 1.130 is not appropriate in the following situations:
(A) When the disclosure that is applied in a rejection is:
(1) a U.S. patent or U.S. patent application publication that
(a) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and
(b) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent under examination. In this case, an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401 et seq.
The provisions of 37 CFR 1.130, however, would be available if:
(1) The rejection is based upon a disclosure other than a U.S. patent or U.S. patent application publication (such as non-patent literature or a foreign patent document);
(2) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application did not claim an invention that is the same or substantially the same as the applicant’s claimed invention; or
(3) the rejection is based upon a U.S. patent or U.S. patent application and while the patent or pending application does claim an invention that is the same or substantially the same as the applicant’s claimed invention, the affidavit or declaration under 37 CFR 1.130 does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent under examination (e.g., an affidavit or declaration under 37 CFR 1.130 would be available if instead of alleging derivation, the affidavit or declaration under 37 CFR 1.130 contends that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor).
(B) If the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. A disclosure made more than one year before the effective filing date of the claimed invention is prior art under 35 U.S.C. 102(a)(1), and may not be disqualified under 35 U.S.C. 102(b)(1). Note that the provisions of 37
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CFR 1.130 are available to overcome a rejection under 35 U.S.C. 102(a)(2) which is based on subject matter in an application or patent that was effectively filed, but not published or made publicly available, more than one year before the effective filing date of the claimed invention under examination, where the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. See also, MPEP § 2155.06.
III. SITUATIONS WHERE 37 CFR 1.130(a) AFFIDAVITS OR DECLARATIONS ARE NOT REQUIRED
(A) A declaration under 37 CFR 1.130(a) is not required when a public disclosure, subject to the exceptions of 35 U.S.C. 102(b)(1)(A), is by one or more joint inventor(s) or the entire inventive entity of the application under examination and does not name anyone else. For example, if an application names A, B, and C as the inventive entity, a journal publication names as authors A and B, and the publication date is one year or less before the effective filing date of the claimed invention, then the publication should not be applied in a prior art rejection because it is apparent that the disclosure is a grace period disclosure. Where a disclosure involves a patent document, a declaration under 37 CFR 1.130(a) is not required where the inventive entity of the patent document, subject to the exceptions of 35 U.S.C. 102(b)(1)(A), only includes one or more joint inventor(s) or the entire inventive entity of the application under examination. For example, if the application names A, B, and C as the inventive entity, the patent document names A and B as the inventive entity, and the public availability date of the patent document is one year or less before the effective filing date of the claimed invention under examination, then the patent document should not be applied in a prior art rejection under 35 U.S.C. 102(a)(1) because it is apparent that the patent document disclosure is a grace period disclosure.
(B) A declaration under 37 CFR 1.130(a) is not required when the inventive entity of a U.S. patent, U.S. patent application publication or a WIPO publication that designates the United States, subject to the exceptions of 35 U.S.C. 102(b)(2)(A), only includes one or more joint inventor(s), but not the entire inventive entity, of the application under examination. For example, if the application under examination names as the inventive entity A, B, and
C, and the 35 U.S.C. 102(a)(2) reference names A and B as the inventive entity, then the reference should not be applied in a prior art rejection because it is apparent that the subject matter disclosed was obtained from one or more members of the inventive entity, either directly or indirectly. The exceptions under 35 U.S.C. 102(b)(1)(A) and 35 U.S.C. 102(b)(2)(A) both have to do with disclosures of material that originated with the inventor or a joint inventor. However, the 35 U.S.C. 102(b)(2)(A) exception is not limited to the grace period.
(C) A declaration under 37 CFR 1.130(a) is not required if the specification of the application under examination identifies the disclosure or the subject matter disclosed, that is subject to the exceptions of 35 U.S.C. 102(b)(1)(A) or 35 U.S.C. 102(b)(2)(A) as having been made by or having originated from one or more members of the inventive entity of the application under examination. See 37 CFR 1.77(b)(6) and MPEP § 2153.01(a).
IV. PRIOR ART DATE OF THE DISCLOSURE UNDER AIA 35 U.S.C. 102(a)
For determining the prior art date of a disclosure under AIA 35 U.S.C. 102(a)(1), see MPEP § 2152.02(a) et seq.
For determining the prior art date of a disclosure under AIA 35 U.S.C. 102(a)(2), see MPEP § 2154.01 et seq.
V. FORM PARAGRAPHS
¶ 7.67.aia Affidavit or Declaration Under 37 CFR 1.130: Effective to Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)
The [1] under 37 CFR 1.130 [2] filed on [3] is sufficient to overcome the rejection of claim [4] based on [5]. [6]
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. In bracket 1, insert either --affidavit-- or --declaration--.
3. In bracket 2, insert either --(a)-- or --(b)--.
4. In bracket 3, insert the filing date of the affidavit or declaration
5. In bracket 4, insert the affected claim or claims.
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6. In bracket 5, insert the specific reference applied under 35 U.S.C. 102 or 103 that the affidavit or declaration has disqualified as prior art.
7. In bracket 6, insert the explanation of how the affidavit/declaration provides evidence of reliance on one of the exception provisions of 35 U.S.C. 102(b)(1) or 102(b)(2).
¶ 7.68.aia Affidavit or Declaration Under 37 CFR 1.130: Ineffective to Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)
The [1] under 37 CFR 1.130 [2] filed [3] is insufficient to overcome the rejection of claim [4] based upon [5] as set forth in the last Office action because [6]:
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia .
2. In bracket 1, insert either --affidavit-- or --declaration--.
3. In bracket 2, insert either --(a)-- or --(b)--.
4. In bracket 3, insert the filing date of the affidavit or declaration.
5. In bracket 4, insert the affected claim or claims.
6. In bracket 5, insert the rejection that has not been overcome, including statutory grounds.
7. In bracket 6, insert the explanation of how the affidavit or declaration fails to provide evidence of reliance on one of the exception provisions of 35 U.S.C. 102(b)(1) or 102(b)(2).
717.01(a) Declarations or Affidavits under 37 CFR 1.130(a) – Attribution [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
37 CFR 1.130(a) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(a) pertains to the
provisions of subparagraph (A) of 35 U.S.C. 102(b)(1)) and 102(b)(2). 35 U.S.C. 102(b)(1)(A) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under 35 U.S.C. 102(a)(1) if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, and 35 U.S.C. 102(b)(2)(A) provides that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
717.01(a)(1) Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
In making a submission under 37 CFR 1.130(a), the applicant or patent owner is attempting to show that: (1) the disclosure was made by the inventor or a joint inventor; or (2) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. In other words, the affidavits or declarations are seeking to attribute an activity, a reference, or part of a reference to the inventor(s) to show that the disclosure is not available as prior art under 35 U.S.C. 102(a). Such declarations or affidavits will be similar to affidavits or declarations under 37 CFR 1.132 for application subject to pre-AIA 35 U.S.C. 102(a) or 102(e). See MPEP § 716.10 and In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982). Affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102 remain as affidavits or declarations under 37 CFR 1.32. Thus, the Office will treat affidavits or declarations of attribution for applications subject to the current 35 U.S.C. 102 as affidavits or declarations under 37 CFR 1.130, and affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102 as affidavits or declarations under 37 CFR 1.132,
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regardless of whether the affidavit or declaration is designated as an affidavit or declaration under 37 CFR 1.130, 1.131, or 1.132.
In evaluating whether a declaration under 37 CFR 1.130(a) is effective, Office personnel will consider the following criteria:
(A) Whether the disclosure, which was applied in the rejection and is addressed in the affidavit or declaration, is subject to the exceptions of 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A). The provision of 37 CFR 1.130(a) is not available:
(1) If the disclosure was made (e.g., patented, described in a printed publication, or in public use, on sale, or otherwise available to the public) more than one year before the effective filing date of the claimed invention. See MPEP § 2152.01 to determine the effective filing date. For example, if a public disclosure by the inventor or which originated with the inventor is not within the grace period of 35 U.S.C. 102(b)(1), it would qualify as prior art under 35 U.S.C. 102(a)(1), and could not be disqualified under 35 U.S.C. 102(b)(1).
(2) When the disclosure that is applied in a rejection is
(a) a U.S. patent or U.S. patent application publication that
(b) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and
(c) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent.
See MPEP § 717.01, subsection II., for more information on when declarations or affidavits pursuant to 37 CFR 1.130(a) are not available.
(B) Whether the affidavit or declaration shows sufficient facts, in weight and character, to establish that
(1) the disclosure was made by the inventor or a joint inventor, or
(2) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
Some factors to consider are the following:
(1) Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an “unequivocal” statement from the inventor or a joint inventor that he/she (or some specific combination of named joint inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982).
(2) A mere statement from the inventor or a joint inventor, without any accompanying reasonable explanation, may not be sufficient where there is evidence to the contrary, such as a contrary statement from another named author that was filed in another application on behalf of another party. See Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (affirming rejection notwithstanding declarations by the alleged actual inventors as to their inventorship in view of a non-applicant author submitting a letter declaring the non-applicant author’s inventorship).
(C) Whether the formal requirements of a declaration or affidavit are met. See MPEP § 717.01(c)
(D) Whether the affidavit or declaration is timely presented. See MPEP § 717.01(f) .
There is no requirement that the affidavit or declaration demonstrate that the disclosure by the inventor, a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from an inventor or a joint inventor was an “enabling” disclosure of the subject matter within the meaning of 35 U.S.C. 112(a). See MPEP § 2155.04.
The evidence necessary to show that the disclosure is by the inventor or a joint inventor or another who obtained the subject matter disclosed from the inventor or a joint inventor requires case-by-case analysis, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is an inventor originated disclosure. See MPEP §§ 2155.01 and 2155.03 for more information. This determination is similar to the current process for disqualifying a publication as not being by “others” discussed in
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MPEP § 2132.01, except that 35 U.S.C. 102(b)(1)(A) requires only that the disclosure originated from an inventor or a joint inventor.
37 CFR 1.130 does not contain a provision that “[o]riginal exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained” in contrast to the requirement for such exhibits in 37 CFR 1.131(b), because in some situations an affidavit or declaration under 37 CFR 1.130 does not necessarily need to be accompanied by such exhibits (e.g., a statement by the inventor or a joint inventor may be sufficient). However, in situations where additional evidence is required, such exhibits must accompany an affidavit or declaration under 37 CFR 1.130. In addition, an affidavit or declaration under 37 CFR 1.130 must be accompanied by any exhibits that the applicant or patent owner wishes to rely upon. See MPEP § 717.01(c) for more information on the formal requirements for a declaration or affidavit and any attached exhibits.
717.01(b) Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
37 CFR 1.130(b) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(b) pertains to the provisions of subparagraph (B) of 35 U.S.C. 102(b)(1) and 102(b)(2). 35 U.S.C. 102(b)(1)(B) provides that a disclosure made one
year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under 35 U.S.C. 102(a)(1) if the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. 102(b)(2)(B) provides that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if the subject matter disclosed had, before such subject matter was effectively filed under 35 U.S.C. 102(a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
717.01(b)(1) Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
In making a submission under 37 CFR 1.130(b), the applicant or patent owner is attempting to show that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by: (1) the inventor or a joint inventor; or (2) another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
In evaluating whether a declaration under 37 CFR 1.130(b) is effective to disqualify a disclosure on which the rejection is based, Office personnel will consider the following criteria:
(A) Whether the disclosure, which was applied in the rejection and is addressed in the affidavit or declaration, is subject to the exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B). The provision of 37 CFR 1.130(b) is not available:
(1) If the disclosure was made (e.g., patented, described in a printed publication, or in public use, on sale, or otherwise available to the public) more
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than one year before the effective filing date of the claimed invention. See MPEP § 2152.01 to determine the effective filing date.
(2) When the disclosure that is applied in a rejection is (1) a U.S. patent or U.S. patent application publication that (2) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and (3) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent.
See MPEP § 717.01, subsection II., for more information on when the exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) are not available.
In the situation where the previous public disclosure by the inventor (or which originated with the inventor) was not within the grace period but was effective to disqualify an intervening disclosure as prior art by invoking the exception of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B), the previous public disclosure by, or originating with, the inventor would qualify as prior art under 35 U.S.C. 102(a)(1) and could not be disqualified under 35 U.S.C. 102(b)(1)(A).
(B) Whether the affidavit or declaration shows sufficient facts, in weight and character, to establish that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by: (1) the inventor or a joint inventor; or (2) another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Some factors to consider are the following:
(1) The declaration or affidavit must identify the subject matter publicly disclosed and provide the date of the public disclosure of such subject matter by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) If the subject matter publicly disclosed on the earlier date by the inventor or a joint inventor, or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication. See 37 CFR
1.130(b)(1). The Office requires a copy to determine not only whether the inventor is entitled to disqualify the disclosure under 35 U.S.C. 102(b), but also because if the rejection is based on a U.S. patent application publication or WIPO publication of an international application to another and such application is also pending before the Office, this prior disclosure may be prior art under 35 U.S.C. 102(a) to the other earlier filed application, and this information may be useful in examination of both applications.
(3) If the subject matter publicly disclosed on the earlier date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on the earlier date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(4) If the subject matter publicly disclosed on the earlier date is the same as the subject matter in the disclosure applied in a prior art rejection. See MPEP § 717.01(b)(2).
(C) Whether the formal requirements of a declaration or affidavit are met. See MPEP § 717.01(c).
(D) Whether the affidavit or declaration is timely presented. See MPEP § 717.01(f).
There is no requirement under 35 U.S.C. 102(b)(1)(B) that the mode of disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor (e.g., patenting, publication, public use, sale activity) be the same as the mode of disclosure of the intervening grace period disclosure.
There is also no requirement that the disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening grace period disclosure. See In re Kao, 639 F.3d 1057, 1066, 98 UQPQ2d 1799, 1806 (Fed. Cir. 2011) (subject matter does not change as a function of how one chooses to describe it).
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There is no requirement that the affidavit or declaration demonstrate that the disclosure by the inventor, a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from an inventor or a joint inventor was an enabling disclosure of the subject matter within the meaning of 35 U.S.C. 112(a). See MPEP § 2155.04.
Any remaining portion of an intervening grace period disclosure that was not previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor is available as prior art under 35 U.S.C. 102(a)(1). For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening grace period disclosure discloses elements A, B, C, and D, then only element D of the intervening grace period disclosure is available as prior art under 35 U.S.C. 102(a)(1).
The evidence necessary to show that the subject matter of a disclosure was previously disclosed by, or originated with, an inventor or a joint inventor requires case-by-case analysis.
37 CFR 1.130 does not contain a provision that “[o]riginal exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained” in contrast to the requirement for such exhibits in 37 CFR 1.131(b), because in some situations an affidavit or declaration under 37 CFR 1.130 does not necessarily need to be accompanied by such exhibits (e.g., a statement by the inventor or a joint inventor may be sufficient). However, in situations where additional evidence is required, such exhibits must accompany an affidavit or declaration under 37 CFR 1.130. In addition, an affidavit or declaration under 37 CFR 1.130 must be accompanied by any exhibits that the applicant or patent owner wishes to rely upon. See MPEP § 717.01(d) for more information on the formal requirements for a declaration or affidavit and any attached exhibits.
Finally, neither 35 U.S.C. 102(b)(1)(B) nor 102(b)(2)(B) discusses " the claimed invention" with respect to either the subject matter of the previous inventor-originated disclosure or the subject matter
of the subsequent intervening disclosure.Any inquiry with respect to the claimed invention is whether or not the subject matter in the prior art disclosure being relied upon anticipates or renders obvious the claimed invention. A determination of whether the exception in 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) is applicable to subject matter in an intervening disclosure does not involve a comparison of the subject matter of the claimed invention to either the subject matter of the previous inventor-originated disclosure or to the subject matter of the subsequent intervening disclosure.
717.01(b)(2) Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated Prior Public Disclosure [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
I. “SAME” IS NOT “OBVIOUS”
The exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) are only applicable when the subject matter of the intervening disclosure is the same as the subject matter of the earlier inventor-originated prior public disclosure (e.g., a disclosure by an inventor or joint inventor, or another who obtained directly or indirectly from the inventor or a joint inventor). In other words, even if an intervening disclosure by a third party is obvious over an inventor-originated prior public disclosure, it would NOT be a disclosure of the same subject matter and the exceptions under 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) do not apply. Any showing that the intervening disclosure is the same subject matter as earlier disclosed by the inventor, joint inventor, of another who obtained directly or indirectly from the inventor(s) must be sufficient, in character and weight, to establish that the two disclosures are to the same subject matter.
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II. ONLY A PORTION MAY BE DISQUALIFIED AS PRIOR ART
Only the portion of the third party’s intervening disclosure that was previously in an inventor-originated disclosure (i.e., the same subject matter ) is disqualified as prior art under 35 U.S.C. 102(a). In other words, any portion of the third party’s intervening disclosure that was not part of the previous inventor-originated disclosure is still available for use in a prior art rejection. Therefore, examiners should be aware that a declaration under 37 CFR 1.130(b) may only disqualify a portion of a disclosure that was applied in a rejection in an Office action, and that other portions of the disclosure may still be available as prior art. For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses elements A, B, C, and D, then element D of the intervening U.S. patent, U.S. patent application publication, or WIPO published application is still available as prior art under 35 U.S.C. 102(a)(2).
III. MANNER OR MODES OF DISCLOSURESARE NOT RELEVANT
The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b) is not critical. Just as the prior art provision of 35 U.S.C. 102(a)(2) encompasses any disclosure that renders a claimed invention available to the public, any manner of disclosure may be evidenced in an affidavit or declaration under 37 CFR 1.130(b). That is, when using an affidavit or declaration under 37 CFR 1.130(b) to disqualify an intervening disclosure as prior art based on a prior public disclosure by an inventor or a joint inventor, it is not necessary for the subject matter to have been disclosed in the same manner or using the same words. In other words, there is no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply.
There is also no requirement that the mode (e.g., patenting, publication, public use, sale activity) of
disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure. For example, the inventor or a joint inventor may have publicly disclosed the subject matter in question via a slide presentation at a scientific meeting, while the intervening disclosure of the subject matter may have been made in a journal article.
A difference in the mode of disclosure or differences in the words used to describe the subject matter will not preclude the inventor from submitting an affidavit or declaration under 37 CFR 1.130(b) to disqualify the intervening disclosure as prior art.
IV. SPECIES/GENUS, GENUS/SPECIES, AND SPECIES/SPECIES DISCLOSURES
The exception to 35 U.S.C. 102(a)(2) applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Specifically, if subject matter of an intervening U.S. patent, U.S. patent application publication, or WIPO published application is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, the exception in 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening U.S. patent, U.S. patent application publication, or WIPO published application disclosure. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent, U.S. patent application publication, or WIPO published application is not available as prior art under 35 U.S.C. 102(a)(2). Conversely, the exception may not apply to subject matter of the intervening disclosure that is more specific than the subject matter previously publicly disclosed by the inventor or a joint inventor or that is directed to a different species. For example, if the inventor or a joint
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inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses a species, the disclosure of the species in the subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application would be available as prior art under 35 U.S.C. 102(a)(2). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening U.S. patent, U.S. patent application publication, or WIPO published application would be available as prior art under 35 U.S.C. 102(a)(2).
717.01(c) Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
I. WHO MAY MAKE AFFIDAVIT OR DECLARATION
Anyone who has knowledge of the facts discussed in the declaration may sign a declaration under 37 CFR 1.130. In accordance with 37 CFR 1.130, however, it is the applicant or patent owner who may submit (i.e., file) an affidavit or declaration. When an assignee, obligated assignee, or person showing sufficient proprietary interest is the applicant under 35 U.S.C. 118 rather than the inventor, the inventor may sign an affidavit or declaration under 37 CFR 1.130 to disqualify a disclosure of the invention as prior art, but the declaration must be filed by a party having authority to take action in the application. Authority to file papers in an application generally does not lie with the inventor if the inventor is not the applicant.
II. FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS AND ATTACHED EXHIBITS
An affidavit is a statement in writing made under oath before a notary public, magistrate, or officer authorized to administer oaths. See MPEP § 602 et seq. for additional information regarding formal requirements of affidavits.
37 CFR 1.68 permits a declaration to be used instead of an affidavit. The declaration must include an acknowledgment by the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.
Exhibits, such as those filed as part of an affidavit or declaration under 37 CFR 1.130, must comply with the requirements of 37 CFR 1.91 to be entered into an application file. Exhibits that do not comply with the requirements of 37 CFR 1.91 will be disposed of or returned to applicant at the discretion of the Office. See also MPEP § 608.03(a).
717.01(d) U.S. Patent or Application Publication Claiming Same Invention [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
When a rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application
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publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401 et seq . of this title. See 37 CFR 1.130(c). Permitting two different applicants to each aver or declare that an inventor named in the other application derived the claimed invention without a derivation proceeding to resolve who the true inventor is could result in the Office issuing two patents containing patentably indistinct claims to two different parties. Thus, the provisions of 37 CFR 1.130 are not available in certain situations to avoid the issuance of two patents containing patentably indistinct claims to two different parties. See In re Deckler, 977 F.2d 1449, 1451–52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) (35 U.S.C. 102, 103, and 135 “clearly contemplate—where different inventive entities are concerned—that only one patent should issue for inventions which are either identical to or not patentably distinct from each other”) (quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486,
490 (CCPA 1977)). See the Trial Practice Guide for information on derivation proceedings.
The provisions of 37 CFR 1.130, however, would be available if: (1) The rejection is based upon a disclosure other than a U.S. patent or U.S. patent application publication (such as non-patent literature or a foreign patent document); (2) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application did not claim an invention that is the same or substantially the same as the applicant’s claimed invention; or (3) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application that does claim an invention that is the same or substantially the same as the applicant’s claimed invention, but the affidavit or declaration under 37 CFR 1.130 does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent (e.g., an affidavit or declaration under 37 CFR 1.130 would be available if instead of alleging derivation the affidavit or declaration under 37 CFR 1.130 contends that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor).
717.01(e) Passed Upon (or Decided by) by Primary Examiner [R-11.2013]
The question of sufficiency of affidavits or declarations under 37 CFR 1.130 should be reviewed and decided by a primary examiner.
Review of questions of formal sufficiency and propriety are by petition filed under 37 CFR 1.181. Such petitions are answered by the Technology Center Directors (MPEP § 1002.02(c)).
Review on the merits of a 37 CFR 1.130 affidavit or declaration is by appeal to the Patent Trial and Appeal Board. See MPEP §1201.
717.01(f) Seasonable (or Timely) Presentation [R-11.2013]
Affidavits or declarations under 37 CFR 1.130 must be timely presented in order to be admitted. Affidavits and declarations submitted under 37 CFR 1.130 and other evidence traversing rejections are considered timely if submitted:
(A) prior to a final rejection;
(B) before appeal in an application not having a final rejection;
(C) after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e); or
(D) after the prosecution is closed (e.g., after a final rejection, after appeal, or after allowance) if applicant files the affidavit or other evidence with a request for continued examination (RCE) under 37 CFR 1.114 in a utility or plant application filed on or after June 8, 1995; or a continued prosecution application (CPA) under 37 CFR 1.53(d) in a design application.
All admitted affidavits and declarations are acknowledged and commented upon by the examiner in his or her next succeeding action.
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For affidavits or declarations under 37 CFR 1.130 filed after appeal, see 37 CFR 41.33(d) and MPEP § 1206 and § 1211.03.
Review of an examiner’s refusal to enter an affidavit as untimely is by petition and not by appeal to the Patent Trial and Appeal Board. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App. 1941).
717.02 Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(l) et seq. for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
35 U.S.C. 102(b)(2)(C) provides that disclosures shall not be prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. If the prior art exception under 35 U.S.C. 102(b)(2)(C) is properly invoked, the commonly owned or joint research agreement reference is not available as prior art under 35 U.S.C. 102(a)(2) for both anticipation and obviousness rejections. See MPEP § 717.02(a) for more information on invoking this prior art exception and MPEP § 717.02(b) for more information on evaluating when the exception applies and is properly invoked.
35 U.S.C. 102(c) provides that a joint research agreement can establish common ownership if the following three conditions are satisfied in order to apply the provisions of 35 U.S.C. 102(b)(2)(C):
A. The subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or
before the effective filing date of the claimed invention. See 35 U.S.C. 102(c)(1). The AIA defines the term “joint research agreement” as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. See 35 U.S.C. 100(h).
B. The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement. See 35 U.S.C. 102(c)(2).
C. The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement. See 35 U.S.C. 102(c)(3).
Joint research agreement subject matter under 35 U.S.C. 102(c) is treated under 37 CFR 1.104(c)(4)(ii), and joint research agreement subject matter under pre-AIA 35 U.S.C. 103(c) is treated under 37 CFR 1.104(c)(5)(ii).
The provisions of 35 U.S.C. 102(c) generally track those of the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). See MPEP § 706.02(l)(1). The major differences between 35 U.S.C. 102(c)) and the CREATE Act are the following:
A. The new provision (35 U.S.C. 102(c)) is keyed to the effective filing date of the claimed invention, while the CREATE Act (pre-AIA 35 U.S.C. 103(c)) focused on the date that the claimed invention was made; and
B. The CREATE Act provisions (pre-AIA 35 U.S.C. 103(c)) only applied to obviousness rejections and not to anticipation rejections.
717.02(a) Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(l) et seq. for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
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§ 717.02(a)EXAMINATION OF APPLICATIONS
I. COMMON OWNERSHIP
In order to invoke common ownership to disqualify a disclosure as prior art, the applicant (or the patent owner) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b).
A. Definition of Common Ownership
The term “commonly owned” is intended to mean that the subject matter which would otherwise be prior art to the claimed invention and the claimed invention are entirely or wholly owned by, or under an obligation to assign to, the same person(s) or organization(s)/business entity(ies). If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person(s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention.
Specifically, if an invention claimed in an application is owned by more than one entity and those entities seek to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), then the disclosure to which the exception applies must be owned by, or subject to an obligation of assignment to, the same entities that owned the application not later than the effective filing date of the claimed invention. For example, assume Company A owns twenty percent of patent Application X and Company B owns eighty percent of patent Application X at the time of the effective filing date of the claimed invention in Application X. In addition, assume that Companies A and B seek to invoke the prior art exception for a disclosure in Patent Z under 35 U.S.C. 102(b)(2)(C). The relevant disclosure in Patent Z must have been co-owned, or have been under an obligation of assignment to both companies, not later than the effective filing date of
the claimed invention in Application X in order for the prior art exception to be properly invoked. A statement such as “Application X and Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B” would be sufficient to establish common ownership.
There is no requirement that the entire disclosure in the 35 U.S.C. 102(a)(2) reference be commonly owned. If subject matter disclosed that was relied upon as the basis for the rejection(s) was commonly owned, then it may be proper to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). For example, if the rejections in an Office action are only based upon the disclosure for the first embodiment, then only the first embodiment of the 35 U.S.C. 102(a)(2) reference needs to be commonly owned. Therefore, using the facts from the example in the above paragraph, the statement establishing common ownership could state, “Application X and the first embodiment of Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B.” This statement would be sufficient to establish common ownership of Application X and the first embodiment of Patent Z. In this case, the examiner may still apply Patent Z’s disclosure that is not applicable to the first embodiment (e.g., disclosure unique to another embodiment) as prior art under 35 U.S.C. 102(a)(2).
For applications owned by a joint venture of two or more entities, both the application and the disclosure to which the exception applies must have been owned by, or subject to an obligation of assignment to, the joint venture not later than the effective filing date of the claimed invention in the application. For example, if Company A and Company B formed a joint venture, Company C, both Application X and the relevant disclosure in Patent Z must have been owned by, or subject to an obligation of assignment to, Company C not later than the effective filing date of the claimed invention in Application X in order for the relevant disclosure in Patent Z to be properly disqualified as prior art under 35 U.S.C. 102(b)(2)(C). If Company A by itself always owned the relevant disclosure in Patent Z and Company C by itself always owned Application X, then the 35
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U.S.C. 102(b)(2)(C) exception would not apply to the relevant disclosure in Patent Z.
As long as principal ownership rights to either the disclosed subject matter or the claimed invention under examination reside in different persons or organizations, common ownership does not exist. A license of the claimed invention under examination to another by the owner where basic ownership rights are retained would not defeat ownership.
B. Evidence Required to Establish Common Ownership
The requirement for common ownership not later than the effective filing date of the claimed invention is intended to preclude obtaining ownership of the disclosed subject matter after the effective filing date of the claimed invention in order to disqualify that subject matter as prior art by invoking a prior art exception. A statement of present common ownership is not sufficient.
The question of whether common ownership exists not later than the effective filing date of the claimed invention is to be determined on the facts of the particular case in question. Actual ownership of the disclosed subject matter and the claimed invention by the same individual(s) or organization(s) or a legal obligation to assign both the disclosed subject matter and the claimed invention to the same individual(s) or organization(s)/business entity(ies) must be in existence not later than the effective filing date of the claimed invention in order for the 35 U.S.C. 102(b)(2)(C) exception to apply to the disclosed subject matter. A moral or unenforceable obligation would not evidence common ownership.
Applications and references (whether patents, patent applications, or patent application publications) will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, not later than the effective filing date of the claimed invention, if the applicant(s) or patent owner(s) make(s) a statement to the effect that the application and the disclosed subject matter were, not later than the effective filing date for the claimed invention, owned by, or subject to an obligation of assignment to, the same person. Such a statement is sufficient to establish common ownership of, or an obligation for assignment to, the same person(s) or
organizations(s) for purposes of 35 U.S.C. 102(b)(2)(C). The applicant(s), patent owner(s), or the representative(s) of record have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient because of their paramount obligation of candor and good faith to the USPTO.
The statement concerning common ownership should be clear and conspicuous (e.g., on a separate paper) to ensure the examiner notices the statement. For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected based upon subject matter disclosed in Patent A (either alone or in combination with other references) wherein Patent A is only available as prior art under 35 U.S.C. 102(a)(2). In her response to the Office action, the attorney or agent of record for Application X states, in a clear and conspicuous manner, that:
“Application X and Patent A were, not later than the effective filing date of the claimed invention inApplication X, owned by Company Z.”
This statement alone is sufficient to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). Once common ownership is established, the subject matter disclosed in Patent A may not be used in a rejection under 35 U.S.C. 102 or 35 U.S.C. 103 against the claims of Application X. Patent A, however, could still be used as the basis for a double patenting rejection, if appropriate. See MPEP § 804 for more information on double patenting rejections.
The applicant may, but is not required to, present evidence (e.g., assignment records, affidavits or declarations by the common owner, or court decisions) supporting the existence of the common ownership, in addition to the above-mentioned statement concerning common ownership.
In rare instances, the examiner may have independent evidence that raises a material doubt as to the accuracy of applicant’s or patent owner’s representation. For example, the independent evidence may show the lack of common ownership of (or the existence of an obligation to commonly
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assign) the application being examined and the applied subject matter in the U.S. patent, U.S. patent application publication reference, or international patent application publication under the Patent Cooperation Treaty (PCT). In such cases, the examiner should explain why the accuracy of the representation is doubted. In addition, the examiner may require objective evidence of common ownership of (or the existence of an obligation to assign) the application being examined and the applied subject matter not later than the effective filing date of the claimed invention in the application being examined. Examiners should note that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention.
Applicant(s) or patent owner(s) may submit, in addition to the statement regarding common ownership, the following objective evidence:
(A) Reference to assignments, which are recorded in the U.S. Patent and Trademark Office in accordance with 37 CFR Part 3, and which convey the entire rights in the applications or patents to the same person(s) or organization(s);
(B) Copies of unrecorded assignments, which convey the entire rights in the applications or patents to the same person(s) or organization(s), and which are filed in each of the applications;
(C) An affidavit or declaration by the common owner, which is filed in the application or patent, and which states that there is common ownership, states facts which explain why the affiant or declarant believes there is common ownership, and is properly signed (i.e., affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization); and
(D) Other evidence, which is submitted in the application or patent, and which establishes common ownership.
II. JOINT RESEARCH AGREEMENT
In order to invoke a joint research agreement to establish that the 35 U.S.C. 102(b)(2)(C) exception applies to a disclosure, the applicant (or patent owner) must provide a statement that the disclosure
of the subject matter on which the rejection is based and the claimed invention were made by or on behalf of parties to a joint research agreement under 35 U.S.C. 102(c). The statement must also assert that the agreement was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b).
If the names of the parties to the joint research agreement are not already stated in the application, it is necessary to amend the application to include the names of the parties to the joint research agreement in accordance with 37 CFR 1.71(g).
Specifically, 37 CFR 1.71(g)(1) provides that the specification may disclose or be amended to disclose the name of each party to the joint research agreement as required by 35 U.S.C. 102(c).
37 CFR1.71(g)(2) provides that an amendment under 37 CFR1.71(g)(1) must be accompanied by the processing fee set forth in 37 CFR 1.17(i) if it is not filed within one of the following time periods: (1) within three months of the filing date of a national application; (2) within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 in an international application; (3) before the mailing of a first Office action on the merits; or (4) before the mailing of a first Office action after the filing of a request for continued examination under 37 CFR 1.114.
37 CFR 1.71(g)(3) provides that if an amendment under 37 CFR 1.71(g)(1) is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. 37 CFR 1.71(g)(3) also provides that if the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 for the amendment to be effective. The requirements of 37 CFR 1.71(g)(3) (correction of the patent by a certificate
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of correction under 35 U.S.C. 255 and 37 CFR 1.323) also apply in the situation in which such an amendment is not filed until after the date the patent was granted. It is unnecessary to file a reissue application or request for reexamination of the patent to submit the amendment and other information necessary to establish that the prior art exception under 35 U.S.C. 102(b)(2)(C) applies in view of a joint research agreement.
The submission of such an amendment remains subject to the rules of practice: e.g., 37 CFR 1.116, 1.121, and 1.312. For example, if an amendment under 37 CFR 1.71(g) is submitted in an application under final rejection to overcome a rejection based upon a U.S. patent which qualifies as prior art only under 35 U.S.C. 102(a)(2), the examiner may refuse to enter the amendment under 37 CFR 1.71(g) if it is not accompanied by an appropriate terminal disclaimer (37 CFR 1.321(d)). This is because such an amendment may necessitate the reopening of prosecution (e.g., for entry of a double patenting rejection).
If an amendment under 37 CFR 1.71(g) is submitted to overcome a rejection based upon a U.S. patent, U.S. patent application publication, or international patent application publication under the PCT, which qualifies as prior art only under 35 U.S.C. 102(a)(2), and the examiner withdraws the rejection, the examiner may need to issue an Office action containing a new double patenting rejection based upon the disqualified patent or patent application publication. In these situations, such Office action can be made final, provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant. This is the case regardless of whether the claims themselves have been amended.
In addition to amending the specification to disclose the names of the parties to the joint research agreement, applicant must submit the required statement to invoke the prior art exception under 35
U.S.C. 102(b)(2)(C). 37 CFR 1.104(c)(4) sets forth the requirement for the statement, which includes a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of 35 U.S.C. 102(c), which was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b). As is the case with establishing common ownership, the applicant or patent owner may, but is not required to, present evidence supporting the existence of the joint research agreement.
If the applicant disqualifies the subject matter relied upon by the examiner by invoking the exception under 35 U.S.C. 102(b)(2)(C) and by following the procedures set forth in the rules, the examiner will treat the application under examination and the disqualified subject matter in the 35 U.S.C. 102(a)(2) reference as if they are “owned by the same person or subject to an obligation of assignment to the same person” for purposes of 35 U.S.C. 102(b)(2)(C).
The following examples are provided for illustration only:
Example 1
Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’, which is owned by Company A. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of the claimed invention in Company A’s application is December 12, 2014. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 102(c) to disqualify the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) and complying with the requirements of 37 CFR 1.71(g).
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Example 2
Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. Company A and University B have a joint research agreement (JRA), which goes into effect on January 2, 2015. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to disqualify the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because the JRA was not in effect until January 2, 2015, which is after the effective filing date of Company A’s invention (December 12, 2014).
Example 3
Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’. The JRA is limited to activities for invention Y and invention X’ was not made as a result of activities undertaken within the scope of the JRA. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to disqualify University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because claimed invention X’was not made as a result of the activities undertaken within the scope of the JRA.
For invoking the joint research agreement provisions in pre-AIA applications, see MPEP § 706.02(l) et seq.
717.02(b) Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(l) et seq. for the examination of applications not subject to the first inventor to file
provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
37 CFR 1.104 Nature of examination. *****
(c) Rejection of claims.
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(4)(i) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(ii) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if:
(A) The applicant or patent owner provides a statement to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
*****
37 CFR 1.104(c)(4) includes the provisions that pertain to commonly owned or joint research agreement subject matter for applications and patents subject to 35 U.S.C. 102 and 35 U.S.C. 103. Specifically, 37 CFR 1.104(c)(4) implements the provisions of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) in the AIA. Thus, 37 CFR 1.104(c)(4) is applicable to applications and patents that are subject to 35 U.S.C. 102 and 35 U.S.C. 103.
37 CFR 1.104(c)(4)(i) provides that subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were
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owned by the same person or subject to an obligation of assignment to the same person.
37 CFR 1.104(c)(4)(ii) addresses joint research agreements and provides that subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if: (1) The applicant or patent owner provides a statement to the effect that the subject matter was developed and the claimed invention was made by, or on behalf of, one or more parties to a joint research agreement (within the meaning of 35 U.S.C. 100(h) and 37 CFR 1.9(e)) that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (2) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
I. WHEN THE EXCEPTION CAN BE USED
It is important to recognize that the 35 U.S.C. 102(b)(2)(C) exception can only be invoked in regard to a disclosure that is applied in a rejection as prior art under 35 U.S.C. 102(a)(2) (disclosures in a U.S. patent, U.S. patent application, or WIPO published international application effectively filed before the effective filing date of the claimed invention). It is also important to recognize that the 35 U.S.C. 102(b)(2)(C) exception applies when the rejection is under 35 U.S.C. 102(a)(2) (anticipation) or 35 U.S.C. 103 (obviousness). In other words, the AIA expanded the previous commonly owned prior art exception under the CREATE Act to now apply to anticipation rejections and not just obviousness rejections.
II. WHEN THE EXCEPTION DOES NOT APPLY
The 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under 35 U.S.C. 102(a)(1) (disclosures publicly made before the effective filing date of the claimed invention). In other words, the prior art exception under 35 U.S.C. 102(b)(2)(C) only disqualifies the disclosure
as prior art under 35 U.S.C. 102(a)(2). Thus, if the issue date of a U.S. patent or publication date of a U.S. patent application publication or WIPO published international application is before the effective filing date of the claimed invention, it may be prior art under 35 U.S.C. 102(a)(1), regardless of the fact that the subject matter disclosed and the claimed invention are commonly owned or resulted from a joint research agreement.
The 35 U.S.C. 102(b)(2)(C) exception is not effective to remove a disclosure applied as a basis for a double patenting rejection. In other words, disclosures disqualified as prior art under 35 U.S.C. 102(b)(2)(C) could be the basis for statutory double patenting or nonstatutory (sometimes referred to as obviousness-type) double patenting rejections. See MPEP § 717.02(c), subsection III.
In addition, the prior art exception under 35 U.S.C. 102(b)(2)(C) is not effective to remove a disclosure as evidence of enablement or inherency. See MPEP § 2131.01.
III. EVIDENCE REQUIRED TO ESTABLISH COMMON OWNERSHIP
It is important to recognize what constitutes sufficient evidence to establish common ownership. The common ownership must be shown to exist not later than the effective filing date of the claimed invention.A statement of present common ownership is not sufficient (unless such statement was filed on the effective filing date of the claimed invention). In re Onda, 229 USPQ 235 (Comm’r Pat. 1985).
The following statement is sufficient evidence to establish common ownership of, or an obligation for assignment to, the same person(s) or organizations(s):
Application [the application serial number] and reference(s) [the patent identifier of the commonly owned applied art] (whether U.S. patents, U.S. patent applications, U.S. patent application publications, or WIPO patent publication were, at the time the invention was effectively filed, owned by [the name of the person(s), organization(s), and/or business
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entity(ies) that own the application and the commonly owned applied art].
The applicant(s) or the representative(s) of record have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient evidence because of their paramount obligation of candor and good faith to the USPTO.
The statement concerning common ownership should be clear and conspicuous (e.g., on a separate piece of paper or in a separately labeled section) in order to ensure that the examiner quickly notices the statement. Applicants may, but are not required to, submit further evidence, such as assignment records, affidavits or declarations by the common owner, or court decisions, in addition to the above-mentioned statement concerning common ownership.
For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected under 35 U.S.C. 103 using Patent A in view of Patent B wherein Patent A is only available as prior art under 35 U.S.C. 102(a)(2). In her response to the Office action, the attorney or agent of record for Application X states, in a clear and conspicuous manner, that:
Application X and Patent A were, at the time the invention of Application X was effectively filed, owned by Company Z.
This statement alone is sufficient evidence to disqualify Patent A from being used in a rejection under 35 U.S.C. 103 against the claims of Application X. Note that such a statement would also be effective to disqualify Patent A from being used in an anticipation rejection under 35 U.S.C. 102(a)(2). It would not, however, be effective to disqualify Patent A from being used in either an anticipation or obviousness rejection if Patent A was prior art under 35 U.S.C. 102(a)(1) (e.g., the patent issued before the effective filing date of the claimed invention and is not subject to any exception in 35 U.S.C. 102(b)(1)).
In rare instances, the examiner may have independent evidence that raises a material doubt as
to the accuracy of applicant’s representation of either (1) the common ownership of, or (2) the existence of an obligation to commonly assign, the application being examined and the applied U.S. patent, U.S. patent application publication, or WIPO publication reference. In such cases, the examiner may explain why the accuracy of the representation is doubted, and require objective evidence of common ownership of, or the existence of an obligation to assign, the application being examined and the applied reference as of the effective filing date of the application being examined. As mentioned above, applicant(s) may submit, in addition to the above-mentioned statement regarding common ownership, the following objective evidence:
(A) Reference to assignments recorded in the U.S. Patent and Trademark Office in accordance with 37 CFR Part 3 which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s);
(B) Copies of unrecorded assignments which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s) are filed in each of the applications;
(C) An affidavit or declaration by the common owner which states that there is common ownership and states facts which explain why the affiant or declarant believes there is common ownership, which affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization; and
(D) Other evidence which establishes common ownership of the application and the commonly owned applied art.
IV. EVIDENCE REQUIRED TO ESTABLISH A JOINT RESEARCH AGREEMENT
Once an examiner has established a prima facie case of unpatentability under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103, the burden of overcoming the rejection by invoking the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) is on the applicant or the patentee.
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To overcome a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 based upon subject matter (whether a U.S. patent document or publication or WIPO publication) which qualifies as prior art under only 35 U.S.C. 102(a)(2), the applicant must amend the specification of the application under examination to disclose the names of the parties to the joint research agreement, if not already disclosed, in accordance with 37 CFR 1.71(g). The requirements of 37 CFR 1.71(g) are further discussed below. In addition to amending the specification to disclose the names of the parties to the joint research agreement, the applicant must submit the required statement to invoke the prior art disqualification of 35 U.S.C. 3(b)(2)(C) and 35 U.S.C. 102(c). 37 CFR 1.104(c)(4) sets forth the requirements for the statement, which includes a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h), which was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b).
Like the common ownership or assignment provision, the joint research agreement must be shown to be in effect on or before the effective filing date of the claimed invention. The joint research agreement is NOT required to be in effect on or before the prior art date of the reference that is sought to be disqualified. As is the case with establishing common ownership, the applicant or patent owner may, but is not required to, present evidence supporting the existence of the joint research agreement. Furthermore, the Office will not request corroborating evidence in the absence of independent evidence which raises doubt as to the existence of the joint research agreement.
37 CFR 1.71 Detailed description and specification of the invention.
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(g)(1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement as defined in § 1.9(e).
(2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth § 1.17(i) if not filed within one of the following time periods:
(i) Within three months of the filing date of a national application;
(ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
(iii) Before the mailing of a first Office action on the merits; or
(iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.
(g)(3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.
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37 CFR 1.71(g) provides for the situation in which an application discloses or is amended to disclose the names of the parties to a joint research agreement to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c). 37 CFR 1.71(g)(1) specifically provides that the specification may disclose or be amended to disclose the name of each party to the joint research agreement because this information is required by 35 U.S.C. 102(c)(3).
37 CFR 1.71(g)(2) provides that an amendment under 37 CFR 1.71(g)(1) must be accompanied by the processing fee set forth in 37 CFR 1.17(i) if it is not filed within one of the following time periods: (1) within three months of the filing date of a national application; (2) within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 in an international application; (3) before the mailing of a first Office action on the merits; or (4) before the mailing of a first Office action after the filing of a request for continued examination under 37 CFR 1.114.
37 CFR 1.71(g)(3) provides that if an amendment under 37 CFR 1.71(g)(1) is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. 37 CFR 1.71(g)(3) also
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provides that if the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 for the amendment to be effective. The requirements of 37 CFR 1.71(g)(3) (correction of the patent by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323) also apply in the situation in which such an amendment is not filed until after the date the patent was granted. It is unnecessary to file a reissue application or request for reexamination of the patent to submit the amendment and other information necessary to take advantage of 35 U.S.C. 102(c).
The submission of such an amendment remains subject to the rules of practice (e.g., 37 CFR 1.116, 1.121, and 1.312). For example, if an amendment under 37 CFR 1.71(g) is submitted in an application under final rejection to overcome a prior art rejection based upon a U.S. patent which qualifies as prior art only under 35 U.S.C. 102(a)(2), the examiner may refuse to enter the amendment under 37 CFR 1.71(g) if it is not accompanied by an appropriate terminal disclaimer (37 CFR 1.321(d)). This is because such an amendment may necessitate the reopening of prosecution (e.g., for entry of a double patenting rejection).
If an amendment under 37 CFR 1.71(g) is submitted to overcome a prior art rejection based upon a U.S. patent, U.S. patent application publication, or WIPO publication which qualifies as prior art only under 35 U.S.C. 102(a)(2), and the examiner withdraws the prior art rejection, the examiner may need to issue an Office action containing a new double patenting rejection based upon the disqualified patent or patent application publication. In these situations, such Office action can be made final, provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant. This is the case regardless of whether the claims themselves have been amended.
If the applicant disqualifies the subject matter relied upon by the examiner in accordance with 35 U.S.C. 102(b)(2)(C) and 102(c) and the procedures set forth in the rules, the examiner will treat the application under examination and the disclosure applied in the prior art rejection as if they are commonly owned for purposes of 35 U.S.C. 102(b)(2)(C).
The following examples are provided for illustration only:
Example 1
Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of invention X’. Professor BB from University B communicates invention X to Company A. On November 12, 2012, University B filed a U.S. patent application on invention X. On April 13, 2013, Company A filed a U.S. patent application disclosing and claiming invention X’, which is an obvious variant of invention X. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C) and 102(c) to disqualify University B’s application as prior art in a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103.
Example 2
Professor BB from University B communicates invention X to Company A. On November 12, 2012, University B filed a U.S. patent application on invention X. On April 13, 2013, Company A filed a U.S. patent application disclosing and claiming invention X’, which is an obvious variant of invention X. Company A and University B have a joint research agreement (JRA), which goes into effect on May 1, 2013. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C) and 102(c) to disqualify University B’s application as prior art in a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 because the JRA was not in effect until after the claimed invention was effectively filed.
Example 3
Professor BB from University B communicates invention X to Company A. On November 12, 2012, University B filed a U.S. patent application on invention X. On April 13, 2013, Company A filed a provisional U.S. patent application disclosing invention X’. On June 13, 2013, Company A filed a U.S. patent application claiming the benefit of the prior provisional application and also disclosing and claiming invention X’, which is an obvious variant of invention X. Company A and University B have a joint research agreement (JRA), which goes into effect on May 1, 2013. University B retains ownership of invention X and Company A retains ownership of invention X’, without any
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obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C) and 102(c) to disqualify University B’s application as prior art in a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 because the JRA was not in effect until after the claimed invention was effectively filed as the relied upon provisional application which was filed before the JRA fully supported the invention X’ and therefore the invention was effectively filed before the JRA.
Example 4
Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of invention X’ but the JRA is limited to activities for invention Y, which is distinct from invention X. Professor BB from University B communicates invention X to Company A. On November 12, 2012, University B filed a U.S. patent application on invention X. On April 13, 2013, Company A filed a U.S. patent application disclosing and claiming invention X’, which is an obvious variant of invention X. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions 35 U.S.C. 102(b)(2)(C) and 102(c) to disqualify University B’s application as prior art in a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 because the claimed invention was not made as a result of the activities undertaken within the scope of the JRA.
717.02(c) Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(l) et seq. for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
Examiners are reminded that a disclosure that is prior art under 35 U.S.C. 102(a)(1) is not disqualified as prior art even if evidence is provided to show that the reference is disqualified under 35 U.S.C. 102(b)(2)(C).
Generally, a U.S. patent, U.S. patent application publication, or WIPO publication reference that is prior art under 35 U.S.C. 102(a)(2) is only disqualified when:
(A) proper evidence is filed (see MPEP § 717.02(b) for more information) establishing:
(1) Common ownership. Proper evidence may be a clear and conspicuous a statement to the effect that the claimed invention and the subject matter disclosed were, not later than the effective filing date of the claimed invention, owned by, or subject to an obligation of assignment to, the same person; or
(2) A joint research agreement. Proper evidence may be (a) amendment to the specification of the application under examination to disclose the names of the parties to the joint research agreement, if not already disclosed, in accordance with )37 CFR 1.71(g), and (b) a clear and conspicuous statement to the effect that subject matter disclosed in the prior art was developed and the claimed invention was made by or on the behalf of one or more parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h), which was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement;
(B) the reference only qualifies as prior art under 35 U.S.C. 102(a)(2) (e.g., not under 35 U.S.C. 102(a)(1)); and
(C) the reference was used in an anticipation rejection under 35 U.S.C. 102(a)(2) or obviousness rejection under 35 U.S.C. 103 (e.g., not a double patenting rejection).
See MPEP § 717.02(b) for additional information pertaining to establishing common ownership or a joint research agreement.
I. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP ORA JOINT RESEARCH AGREEMENT HAS NOT BEEN ESTABLISHED
If the application file being examined has not established that the reference is disqualified as prior art under 35 U.S.C. 102(b)(2)(C), the examiner will:
(A) assume the reference is not disqualified under 35 U.S.C. 102(b)(2)(C);
(B) examine the application on all grounds other than any possible disqualification of the reference patent(s) or application(s) arising from a possible prior art rejection based on prior art under 35 U.S.C. 102(a)(2);
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(C) consider the applicability of any references under either 35 U.S.C. 102(a)(2) or 103 based on prior art under 35 U.S.C. 102(a)(2), including provisional rejections under 35 U.S.C. 102(a)(2) and under 35 U.S.C. 103 based on provisional prior art under 35 U.S.C. 102(a)(2); and
(D) apply the best references against the claimed invention by rejections under 35 U.S.C. 102 and 35 U.S.C. 103, including any rejections based on prior art under 35 U.S.C. 102(a)(2), until such time that the reference is disqualified under 35 U.S.C. 102(b)(2)(C). When applying any disclosures that only qualify as prior art under 35 U.S.C. 102(a)(2) in a prior art rejection against the claims, the examiner should anticipate that the reference may be disqualified under 35 U.S.C. 102(b)(2)(C) and consider whether other rejections based on alternative prior art should be made in case the reference is disqualified. See MPEP § 717.02(b) . If the disclosure applied in the rejection is properly disqualified as prior art under 35 U.S.C. 102(a)(2) and the claims are not amended, the examiner may not make the next Office action final if a new rejection is made, except as provided in MPEP § 706.07(a) and this section. If the reference is disqualified under the joint research agreement provision of 35 U.S.C. 102(c)and a new subsequent double patenting rejection based upon the disqualified reference is applied, the next Office action, which contains the new double patenting rejection, may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant.
II. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP ORA JOINT RESEARCH AGREEMENT HAS BEEN ESTABLISHED
If the application being examined has established that the disclosure is disqualified as prior art under 35 U.S.C. 102(b)(2)(C) the examiner will:
(A) examine the applications as to all grounds, except the disclosure that is disqualified as prior art under 35 U.S.C. 102(a)(2);
(B) examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection, if appropriate in view of the disqualified reference; and
(C) invite the applicant to file a terminal disclaimer to overcome any provisional or actual nonstatutory double patenting rejection, if appropriate (see 37 CFR 1.321).
III. DOUBLE PATENTING REJECTIONS
Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier application, subject to the conditions discussed in MPEP § 804 et seq. In addition, double patenting rejection may arise as a result of the joint research agreement exception. Congress recognized that deeming a joint research agreement as common ownership would result in situations in which there would be double patenting rejections between applications not owned by the same party (see H.R. Rep. No. 108-425, at 5-6 (2003)). For purposes of double patenting analysis, the U.S. application or patent and the subject matter disqualified under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) will be treated as if commonly owned.
A rejection based on a pending U.S. application would be a provisional double patenting rejection. The practice of rejecting claims on the ground of double patenting in commonly owned applications of different inventive entities is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See MPEP § 804 for guidance on double patenting issues. In accordance with established patent law doctrines, double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the existing provisions of 37 CFR 1.321, the terminal portion of the term of the reference patent and including in the disclaimer a provision that the patent shall be enforceable only for and during the period the patent is commonly owned with the application or patent which formed the basis
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for the rejection, thereby eliminating the problem of extending patent term. For a double patenting rejection based on a non-commonly owned U.S. patent (treated as if commonly owned, which is similar to treatment under the CREATE Act), the nonstatutory double patenting rejection may be obviated by filing a terminal disclaimer in accordance with 37 CFR 1.321(d). See MPEP §§ 804 and 804.02.
717.02(d) Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(l) et seq. for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
The following form paragraphs should be used in addressing the prior art exception under 35 U.S.C. 102(b)(2)(C):
¶ 7.20.01.aia 103 Rejection Using Prior Art Excepted Under 102(b)(2)(C) Because Reference is Prior Art Under 102(a)(1)
Applicant has provided evidence in this file showing that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement not later than the effective filing date of the claimed invention. However, although reference [2] has been disqualified as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be disqualified under 35 U.S.C. 102(b)(2)(C).
Applicant may overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art as set forth in 35 U.S.C. 102(b)(1)(A). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be included following form paragraph 7.20.aia or 7.15.aia where the 103 rejection is based on a reference that has since been disqualified under 102(b)(2)(C), but still qualifies as prior art under 35 U.S.C. 102(a)(1).
3. In bracket 1, identify the common assignee.
4. In bracket 2, identify the reference which has been disqualified.
¶ 7.20.02.aia Joint Inventors, Common Ownership Presumed
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were effectively filed absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).
¶ 7.20.04.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Disqualified Under 35 U.S.C. 102(b)(2)(C) Using the Common Ownership or Assignment Provision
Applicant has attempted to disqualify reference [1] under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time the claimed invention was effectively filed. However, applicant has failed to provide a statement that the claimed invention and the subject matter disclosed were owned by, or subject to an obligation of assignment to, the same person no later than the effective filing date of the claimed invention in a conspicuous manner, and therefore, the reference is not disqualified as prior art under 35 U.S.C. 102(a)(2). Applicant must file the required evidence in order to properly disqualify the reference under 35 U.S.C. 102(b)(2)(C). See generally MPEP § 706.02(l).
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§ 717.02(d)EXAMINATION OF APPLICATIONS
In addition, applicant may rely upon the exception under 35 U.S.C. 102(b)(2)(A)to overcome the rejection under 35 U.S.C. 102(a)(2) either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph should be included in all actions containing rejections using 35 U.S.C. 102(a)(2) prior art, whether anticipation or obviousness rejections, where an attempt has been made to disqualify the reference under 35 U.S.C. 102(b)(2)(C), but where the applicant has not provided a proper statement indicating common ownership or assignment not later than the effective filing date of the claimed invention.
3. In bracket 1, identify the commonly owned applied art (e.g., patent or co-pending application).
4. In bracket 2, identify the common assignee.
¶ 7.20.05.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Disqualified Under 35 U.S.C. 102(b)(2)(C) Using the Joint Research Agreement Provisions of 35 U.S.C. 102(c)
Applicant has attempted to disqualify reference [1] under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was subject to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly disqualify the reference under 35 U.S.C. 102(b)(2)(C). See 37 CFR 1.71(g)(1) and1.104(c)(4)(ii).
In addition, applicant may overcome the rejection either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained, either directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be included in all actions containing obviousness or anticipation rejections where an
attempt has been made to disqualify the 35 U.S.C. 102(a)(2) prior art reference under 35 U.S.C. 102(b)(2)(C) using the joint research agreement provisions but the disqualification attempt is ineffective.
3. In bracket 1, identify the reference which is sought to be disqualified via 35 U.S.C. 102(b)(2)(C).
4. In bracket 2, identify the reason(s) why the disqualification attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of 35 U.S.C. 102(b)(2)(C) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii).
Use form paragraph 7.38.01 or 7.38.02 where the submission is persuasive. See MPEP § 707.07(f).
718 Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c) [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159.]
37 CFR 1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.
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(c) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.
(d) The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
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(1) A claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013.
(e) In an application for patent to which the provisions of § 1.130 apply, and to any patent issuing thereon, the provisions of this section are applicable only with respect to a rejection under 35 U.S.C. 102(g) as in effect on March 15, 2013.
See MPEP § 804.03 and § 706.02(l) through § 706.02(l)(3) for subject matter disqualified as prior art under pre-AIA 35 U.S.C. 103(c) where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.
37 CFR 1.131(c) addresses those situations in which the rejection in an application or patent under reexamination to be overcome is a rejection under 35 U.S.C. 103 (based on prior art under pre-AIA 35 U.S.C. 102) in view of a U.S. patent or U.S. patent application publication which is not prior art under pre-AIA 35 U.S.C. 102(b) due to the requirement in 37 CFR 1.131(a) that any U.S. patent or U.S. patent application publication to be antedated not claim interfering subject matter (as defined in 37 CFR 41.203(a)) as the application or patent under reexamination. The applicant or patent owner is also prevented from proceeding in an interference due to the provision in 37 CFR 41.206 that an interference will not normally be declared or continued between applications that are commonly owned, or an application and an unexpired patent that are commonly owned.
As 37 CFR 1.131(c) addresses those situations in which the inventions defined by the claims in the application or patent under reexamination and by the claims in the U.S. patent or patent application publication are not patentably distinct, 37 CFR 1.131(c)(1) requires a terminal disclaimer in accordance with 37 CFR 1.321(c), and 37 CFR 1.131(c)(2) requires an oath or declaration stating, inter alia, that the inventor named in the application or patent under reexamination is the prior inventor under pre-AIA 35 U.S.C. 104. The inventor named in the application or patent under reexamination must
have invented the claimed subject matter before the actual date of invention of the subject matter of the reference claims. The affidavit or declaration may be signed by the inventor(s), the attorney or agent of record, or assignee(s) of the entire interest. It is noted that a terminal disclaimer is only effective in overcoming a nonstatutory double patenting rejection and cannot be used to overcome statutory double patenting. See MPEP § 804, subsection I.B.2.
The phrase “prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013” requires that the inventor named in the application or patent be the prior inventor within the meaning of pre-AIA 35 U.S.C. 104, in that an applicant or patent owner may not:
(A) establish a date of invention in a foreign country other than a NAFTA or WTO member country;
(B) establish a date of invention in a WTO member country other than a NAFTA country earlier than January 1, 1996; or
(C) establish a date of invention in a NAFTA country other than the U.S. earlier than December 8, 1993.
A U.S. patent or U.S. patent application publication that anticipates the claimed subject matter cannot be disqualified as prior art under pre-AIA 35 U.S.C. 103(c) or 37 CFR 1.131(c).
719 File Wrapper [R-07.2015]
The electronic file record in which the U.S. Patent and Trademark Office maintains the application papers is referred to as an image file wrapper. The electronic file record is the official record of the application.
See MPEP § 202 for appropriate notations to be made in the file history with regard to claims for
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§ 719EXAMINATION OF APPLICATIONS
priority to, or the benefit of, earlier filed applications under 35 U.S.C. 119, 120, 121, 365, and 386.
719.01 Papers in Image File Wrapper [R-11.2013]
Papers that do not become a permanent part of the record should not be entered as a paper in the image file wrapper. No paper legally entered in the image file wrapper should ever be withdrawn or expunged from the application file, especially a part of the original disclosure of the application, without special authority of the Director. However, 37 CFR 1.59 provides that certain documents may be expunged if they were unintentionally submitted or contain proprietary information which has not been made public and is not important to a decision of patentability. See MPEP § 724. Form paragraph 7.214 may be used to notify applicant that papers in an application that has received a filing date ordinarily will not be returned.
¶ 7.214 Papers Not Returned, Pro Se
Papers in an application that has received a filing date pursuant to 37 CFR 1.53 ordinarily will not be returned. If applicant has not preserved copies of the papers, the Office will furnish copies at applicant’s expense. See 37 CFR 1.19 for a list of the current fees. See MPEP § 724.05 for information pertaining to petitions to expunge information.
719.02 Residence of Inventor Changed [R-07.2015]
The distinction between “residence” and mailing address should not be lost sight of. See MPEP § 602.08(a).
Unless specifically requested by applicant, the residence(s) associated with the inventor(s) will not be changed. For example, if a new oath gives a different residence from the original, the file will not be changed.
For a patent application publication to be published with residence information that differs from that originally filed, the revised information must be entered into the Office electronic records at least nine weeks before the publication date of the application. For patent applications filed on or after September 16, 2012, in order for a patent to issue
with the new residence, applicants must file a corrected Application Data Sheet (37 CFR 1.76(c)) showing the new residence information with underlining for insertions and strike-through or brackets for text removed. See MPEP § 601.05(a). For applications filed prior to September 16, 2012, applicants are strongly encouraged to file a Supplemental Application Data Sheet showing the new residence information preferably with underlining for insertions and strike-through or brackets for text removed. See MPEP § 601.05(b).
719.03 Classification During Examination [R-08.2012]
When a new application is received in a Technology Center, the classification of the application and the initials or name of the examiner who will examine it or other assigned docket designation are noted in the application file. See also MPEP § 903.08(b).
719.04 Index of Claims [R-11.2013]
The “Index of Claims” found in the image file wrapper of an application is frequently referenced. It should be updated with each Office action to maintain a reliable index of all claims in the application.
The claim numbers appearing on the Index of Claims refer to the claim numbers during prosecution while the adjacent columns refer to the status of each of the claims and the final column refers to the final numbering of the allowed claims (if applicable).
A space is provided above each adjacent column for completion by the examiner to indicate the date of each Office action together with the resulting status of each claim. At the time of allowance, the examiner places the final patent claim numbers in the column marked “Final.”
719.05 Field of Search [R-07.2015]
In the first action on the merits of an application, the examiner must record in the appropriate sections of the OACS “Search Notes” page the areas in which the search for prior art was made. The examiner must also indicate the date(s) on which the search was
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conducted and provide his/her initials. In subsequent actions, where the search is brought up to date and/or where a further search is made, the examiner must indicate that the search has been updated and/or identify the additional field of search and include the date and the examiner’s initials in the appropriate sections of the OACS “Search Notes” page. Any search updates should include the appropriate databases and the search queries and classifications employed in the original search. See MPEP § 904. Great care should be taken so as to clearly indicate the places searched and the date(s) on which the search was conducted and/or updated.
In order to provide a complete, accurate, and uniform record of what has been searched and considered by the examiner for each application, the U.S. Patent and Trademark Office has established procedures for recording search data in the application file. Such a record is of importance to anyone evaluating the strength and validity of a patent, particularly if the patent is involved in litigation.
Searches are listed in the “SEARCHED” boxes and/or “SEARCH NOTES” box of the OACS “Search Notes” page.
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I. “SEARCHED” BOXES ENTRIES
The OACS Search Notes Page includes three “SEARCHED” boxes for recording searches in Cooperative Patent Classification (CPC), CPC Combination Sets and U.S. Patent Classification (USPC). When documenting a classification search, as described below, the examiner should ensure the proper box(es) is/are used.
A classification search is defined as a search of the documents in a particular classification location, whether classified by CPC or USPC, and may be limited by a text query, filters or other means. When a classification search is performed, the classification symbol must be recorded in the appropriate “SEARCHED” box section of the OACS “Search Notes” page along with the date that the search was performed (or updated) and the examiner’s initials. The examiner must identify the manner in which the search was limited in the “Search Notes,” by providing an appropriate annotation, as illustrated in the examples below. Unless a search of all the documents for a particular classification location was performed, it would be improper to merely record the classification symbol in the “SEARCHED” box without any indication that the search was limited in the "Search Notes" box.
Examples of classification searches where all documents were searched:
CPC-SEARCHED ExaminerDateSymbol [INITIALS]MM/DD/YYA01B 01/02 [INITIALS]MM/DD/YYG01F 1/84, 8409, 845,
8459
CPC COMBINATION SETS - SEARCHED
ExaminerDateSymbol [INITIALS]MM/DD/YYC07C 1/20 rank 1/2,
C07C 11/04 rank 2/2
Examples of a classification search limited by a text query, filters, or other means, requiring entry into both the "SEARCHED" and "SEARCH NOTES" boxes:
CPC-SEARCHED ExaminerDateSymbol
CPC-SEARCHED [INITIALS]MM/DD/YYD03D 1/0005 [INITIALS]MM/DD/YYB02C 19/0081 [INITIALS]MM/DD/YYG01F 1/84 [INITIALS]MM/DD/YYH02H 3/20 to H02H
3/22 [INITIALS]MM/DD/YYA61K 9/20
SEARCH NOTES ExaminerDateSearch Notes [INITIALS]MM/DD/YYD03D 1/0005 (See
search history printout) [INITIALS]MM/DD/YYB02C 19/0081 (See
search history printout(s))
[INITIALS]MM/DD/YYG01F 1/84 (See search history printout(s))
[INITIALS]MM/DD/YYH02H 3/20 to H02H 3/22 (See search history printout)
[INITIALS]MM/DD/YYA61K 9/20 (Family ID-based filtering on)
II. “SEARCH NOTES” BOX ENTRIES
Entries made in the “SEARCH NOTES” box are of equal importance to those placed in the “SEARCHED” box. They are intended to complete the application file record of areas and/or documents considered by the examiner in his or her search.
A. Format of Entries in the "SEARCH NOTES" Section
The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
(A) Annotations associated with classification searches, as shown in the examples in subsection I above.
(B) Text search performed in a particular database where no classification search was performed. If a text search was performed in a particular database and no classification search was performed, the following entry or its equivalent must be recorded in the “SEARCH NOTES” section of the OACS “Search Notes” page: “See search history
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printout(s)” along with the date or dates that the search was performed (or updated) and the examiner’s initials. A search history printout must also be included in the file. See subsection II.B below.
(C) Searches made within the International Patent Classification System (IPC).
(D) Searches performed by the Scientific and Technical Information Center (STIC).
The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL Web page. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the “SEARCH NOTES” box section of the OACS “Search Notes” page: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.
(E) A consultation with other examiners to determine if relevant search fields exist in their areas of expertise. If the subclass is not searched, record the class and subclass, if any, discussed, followed by “(consulted).” This entry may also include the name of the examiner consulted and the art unit.
Examples
F16B fasteners (consulted)
F16B fasteners (consulted J. Doe A.U. 3501)
F16B 2/00 (consulted)
(F) Searches performed in electronic journals and electronic books available to examiners on their desktop through the STIC NPL website. Examiners should contact their EIC if they need assistance using these tools and creating a search history printout.
(G) Searches performed in other media collections or databases (e.g., CD-ROM databases, specialized databases, etc.), record data as necessary to provide unique identification of material searched and sufficient information as to the search query or request so that the search can be updated. The record should also document the location of the database and its form (CD-ROM, etc.).
Example: Citing a biotech CD-ROM database
Entrez: Sequences, National Center for Biotechnology Information, Version 7.19.91b (CD-ROM, TC 1600) Searched HIV and vaccine; neighbored Galloway article dated 6/5/91 on April 1, 1990.
Example: Citing a nonbiotech CD-ROM database
Computer Select, (November, 1991), Ziff Davis Communications Co., (CD-ROM, STIC), Searched Unix and emulation on December 1, 1991.
(H) Searches performed on the Internet.
For Internet search engines, such as
Google®, Yahoo®, and Bing®, print out the first page and any of the following pages that include names of any Web pages reviewed during the search. Use the print icon on the Microsoft Internet
Explorer® toolbar or use the file-print command. Review the printout to determine if the Internet search engine name, the search logic, and the date of the search are present. If any of these are missing, write the missing information on the printout. Indicate all Web pages reviewed.
(I) Nonelectronic searches of publications in paper form, e.g., searches of the print books or journals in an EIC. Record according to the following for each type of literature search:
(1) Abstracting publications, such as Chemical Abstracts, record name of publications, list terms consulted in index, and indicate period covered.
Examples
Chem. Abs, Palladium hydride Jan.-June 1975
Eng. Index, Data Conversion Analog to Digital 1975
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(2) Periodicals — list by title, volume, issue, pages and date, as appropriate.
Examples
Popular Mechanics, June-Dec. 1974
Lubrication Engineering, vols. 20-24
(3) Books — list by title, author, edition or date, pages, as appropriate.
Example
Introduction to Hydraulic Fluids, Roger E. Hatton, 1962
(4) Other types of literature not specifically mentioned herein (i.e., catalogs, manufacturer’s literature, private collections, etc.).
Record data as necessary to provide unique identification of material searched.
Example
Sears Roebuck catalog, Spring-Summer, 1973.
A cursory or browsing search through a number of materials that are not found to be of significant relevance may be indicated in a collective manner, e.g., “Browsed STIC shelves under QA 76.5” or “Browsed text books in STIC relating to......................” More detailed reviews or searches through books and periodicals or any search of terms in abstracting publications should be specifically recorded, however.
(J) A review of art cited in a parent application or an original patent, as required for all continuation and continuation-in-part applications, divisional applications, reissue applications and reexamination proceedings, or a review of art cited in related applications.
Record the application number of a parent application that is still pending or abandoned, followed by “refs. checked” or “refs. ck’ed.” If for any reason not all of the references have been checked because they are not available or clearly not relevant, such exceptions should be noted.
Examples
S. N. XX/495,123 refs. checked
S. N. XX/490,000 refs. checked
S. N. XX/480,111 refs. checked except for Greek patent to Kam
S. N. XX/410,113 refs. not checked since the file was not available
Record the patent number of a parent or related application that is now patented or of an original patent now being reissued with “refs. checked” or “refs. ck’ed.”
Examples
Pat. 3,900,000 refs. checked
Pat. 3,911,111 refs. ck’ed
B. Search History Printouts
Any time that an electronic search was performed (e.g., limited classified search or text search), a complete search history in the form of a printout must be included in the application file. The search history must include the following minimum information:
(A) all the search logic or chemical structure or sequence(s) used as a database query;
(B) all the name(s) of the file(s) searched and the database service;
(C) the date the search was made or updated; and
(D) an indication of the examiner who performed the search (e.g. a user ID or the examiner’s initials).
It would be improper to merely list the tool/database, e.g., “EAST” or identify the search queries in the “SEARCH NOTES” box section of the OACS “Search Notes” page. A search history printout should be devoid of result printouts to limit the “bulk search printouts.”
Regarding nucleotide and peptide sequence searches, these searches must be documented by printout(s). A copy of a printout for each database source searched must be included in the application file. Each printout must include all the information up to the “ALIGNMENTS” section.
Most of the database services accessed in application searches provide a command to display or print the
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search history which includes most, if not all, of the minimum required information for documenting database searches. Table 1 below lists the history command for each database service and the required minimum documentation elements included when the history command is entered. Any missing elements may be documented by writing them on
the printout of the search history or by supplying further portions of the search transcript which do include the missing elements.
If there are several search statements in the history, the statement or statements of which the results were reviewed should be indicated.
TABLE 1 History Commands and Included Elements by Database Service (“Yes” below indicates the element is present)
Date of SearchName of File(s) Searched
Search LogicName of Database Service
History Command
Database Service
YesYesYesYesClick on Export All Searches
ProQuest Dialog
YesYesYesYesD his fullSTN YesYesYesYesSelect History
from the Saved SciFinder
Searches drop-down menu, Print to PDF or Export to Microsoft Word
YesYesYesYesClick Search History from the My session menu
Questel-Orbit
YesYesYesYesClick History; print page
Lexis/Nexis
YesYesYesYesNoneABSS System YesYesYesYesView, Search
History EAST*
YesYesYesYesYesWEST* YesYesYesYesOption 1: Print out
search results page IEEE Xplore
Option 2: Sign In (personal account available as part of USPTO subscription), click Search History
YesYesYesYesPrint out search results page
Knovel
YesYesYesYesClick Search History, then Print Search History
EBSCOHost
YesYesYesYesPrint out search results page
IP.com
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YesYesYesYesPrint out search results page
ACM Digital Library
YesYesYesYesClick on Export All Searches
INSPEC (ProQuest Dialog)
YesYesYesYesPrint out search results page
SPIE Digital Library
YesYesYesYesPrint out search results page
Research Disclosure
*Examiners may acquire user’s manuals for EAST and WEST through the Office of Patent Automation website. Assistance for other electronic database searches may be acquired from the staff of the STIC-Electronic Information Centers (EIC).
Explanation of Table Terminology
History Command - Generally, a display of what the user has asked the search software to do will display the search logic entered by the user. Some histories are limited to display of the searches done only in the current file while others deliver a complete record of what file or files were accessed and all searches done since sign on.
Name of Database Service - This is the name of the database service (i.e., EAST, IEEE Xplore) used to perform the search.
Search Logic - Generally, a display of the search commands executed by the search software. For a structure or sequence search, this can be a printout of the structure or sequence used to query the system.
Name of File(s) Searched - The name of the collection(s) of data accessed.
Date of Search - Dialog and Questel-Orbit do not display the date of search as part of the history command. Dialog and Questel-Orbit supply the date of search during log off. For WEST examiners should use the eRF search history options.
III. INTERFERENCE SEARCH HISTORY
When an application is in condition for allowance, an interference search must be made by performing a text search of the “US-PGPUB” database in EAST or WEST directed to the comprehensive inventive features in the broadest claim. If the application
contains a claim directed to a nucleotide or peptide sequence, the examiner must submit a request to STIC to perform an interference search of the sequence.
Completion of the interference search should be recorded in the “INTERFERENCE SEARCH” section of the OACS “Search Notes” page with an identification of the manner in which the interference search was limited (if any) in the “Search Notes” by providing an appropriate annotation.
A printout of only the database(s) searched, the query(ies) used in the interference search, and the date the interference search was performed must be made of record in the application file. The result printouts of the interference search must not be placed in the application file.
IV. INFORMATION NOT RECORDED IN THE APPLICATION FILE
For an indication of consideration or nonconsideration of prior art citations submitted by applicant in Information Disclosure Statements (37 CFR 1.97 and 1.98), see MPEP § 609 et seq.
720 Public Use Proceedings [R-07.2015]
Effective September 16, 2012, former 37 CFR. 1.292 authorizing petitions seeking institution of public use proceedings was removed from title 37. For information necessary regarding the former process, the August 2012 revision of the MPEP
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(www.uspto.gov/web/offices/pac/mpep/old/mpep_E8R9.htm) may be consulted.
721-723 [Reserved]
724 Trade Secret, Proprietary, and Protective Order Materials [R-08.2012]
Situations arise in which it becomes necessary, or desirable, for parties to proceedings in the Patent and Trademark Office relating to pending patent applications or reexamination proceedings to submit to the Office trade secret, proprietary, and/or protective order materials. Such materials may include those which are subject to a protective or secrecy order issued by a court or by the International Trade Commission (ITC). While one submitting materials to the Office in relation to a pending patent application or reexamination proceeding must generally assume that such materials will be made of record in the file and be made public, the Office is not unmindful of the difficulties this sometimes imposes. The Office is also cognizant of the sentiment expressed by the court in In re Sarkar, 575 F.2d 870, 872, 197 USPQ 788, 791 (CCPA 1978), which stated:
[T]hat wherever possible, trade secret law and patent laws should be administered in such manner that the former will not deter an inventor from seeking the benefit of the latter, because, the public is most benefited by the early disclosure of the invention in consideration of the patent grant. If a patent applicant is unwilling to pursue his right to a patent at the risk of certain loss of trade secret protection, the two systems will conflict, the public will be deprived of knowledge of the invention in many cases, and inventors will be reluctant to bring unsettled legal questions of significant current interest . . . for resolution.
Parties bringing information to the attention of the Office for use in the examination of applications and reexaminations are frequently faced with the prospect of having legitimate trade secret, proprietary, or protective order material disclosed to the public.
Inventors and others covered by 37 CFR 1.56(c) and 1.555 have a duty to disclose to the Office information they are aware of which is material to patentability. 37 CFR 1.56(b) states that
information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability. A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
It is incumbent upon patent applicants, therefore, to bring “material” information to the attention of the Office. It matters not whether the “material” information can be classified as a trade secret, or as proprietary material, or whether it is subject to a protective order. The obligation is the same; it must be disclosed if “material to patentability” as defined in 37 CFR 1.56(b). The same duty rests upon a patent owner under 37 CFR 1.555 whose patent is undergoing reexamination.
Somewhat the same problem faces a protestor under 37 CFR 1.291(a) who believes that trade secret, proprietary, or protective order material should be considered by the Office during the examination of an application.
In some circumstances, it may be possible to submit the information in such a manner that legitimate trade secrets, etc., will not be disclosed, e.g., by appropriate deletions of nonmaterial portions of the
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information. This should be done only where there will be no loss of information material to patentability under 37 CFR 1.56 or 1.555.
The provisions of this section do not relate to material appearing in the description of the patent application.
724.01 Completeness of the Patent File Wrapper [R-08.2012]
It is the intent of the Office that the patent file wrapper be as complete as possible insofar as “material” information is concerned. The Office attempts to minimize the potential conflict between full disclosure of “material” information as required by 37 CFR 1.56 and protection of trade secret, proprietary, and protective order material to the extent possible.
The procedures set forth in the following sections are designed to enable the Office to ensure as complete a patent file wrapper as possible while preventing unnecessary public disclosure of trade secrets, proprietary material, and protective order material.
724.02 Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials [R-11.2013]
Information which is considered by the party submitting the same to be either trade secret material or proprietary material, and any material subject to a protective order, must be clearly labeled as such and be filed in a sealed, clearly labeled, envelope or container. Each document or item must be clearly labeled as a “Trade Secret” document or item, a “Proprietary” document or item, or as an item or document “Subject To Protective Order.” It is essential that the terms “Confidential,” “Secret,” and “Restricted” or “Restricted Data” not be used when marking these documents or items in order to avoid confusion with national security information documents which are marked with these terms (note also MPEP § 121). If the item or document is “Subject to Protective Order” the proceeding, including the tribunal, must be set forth on each document or item. Of course, the envelope or
container, as well as each of the documents or items, must be labeled with complete identifying information for the file to which it is directed, including the Office or area to which the envelope or container is directed.
Examples of appropriate labels for such an envelope or container addressed to an application are as follows: (Appropriate changes would be made for papers filed in a reexamination file.)
A. “TRADE SECRET MATERIAL NOT OPEN TO PUBLIC. TO BE OPENED ONLY BY EXAMINER OR OTHER AUTHORIZED U.S. PATENT AND TRADEMARK OFFICE EMPLOYEE.
DO NOT SCAN
In re Application of
Application No.
Filed:
For: (Title of Invention)
TC Art Unit:
Examiner:
B. “PROPRIETARY MATERIAL NOT OPEN TO PUBLIC. TO BE OPENED ONLY BY EXAMINER OR OTHER AUTHORIZED U.S. PATENT AND TRADEMARK OFFICE EMPLOYEE.
DO NOT SCAN
In re Application of
Application No.
Filed:
For: (Title of Invention)
TC Art Unit:
Examiner:
C. “MATERIAL SUBJECT TO PROTECTIVE ORDER — NOT OPEN TO PUBLIC. TO BE OPENED ONLY BY EXAMINER OR OTHER AUTHORIZED U.S. PATENT AND TRADEMARK OFFICE EMPLOYEE.
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DO NOT SCAN
Tribunal Issuing Protective Order:
Civil Action or Other Identification No.:
Date of Order:
Current Status of Proceeding: (Pending, Stayed, etc.)
In re application of:
Application No.
Filed:
For: (Title of Invention)
TC Art Unit:
Examiner:
The envelope or container must be accompanied by a transmittal letter which also contains the same identifying information as the envelope or container. The transmittal letter must also state that the materials in the envelope or container are considered trade secrets or proprietary, or are subject to a protective order, and are being submitted for consideration under MPEP § 724. A petition under 37 CFR 1.59 and fee therefor (37 CFR 1.17(g)) to expunge the information, if found not to be material to patentability, should accompany the envelope or container.
In order to ensure that such an envelope or container is not mishandled, either prior to reaching the Office, or in the Office, the envelope or container should be hand-carried to the Customer Window located at:
U.S. Patent and Trademark Office Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314
The envelope or container may also be mailed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
Upon receipt of the envelope or container, the Office will place the envelope or container in an Artifact folder.
724.03 Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02 [R-11.2013]
The types of materials or information contemplated for submission under MPEP § 724.02 include information “material to patentability” but does not include information favorable to patentability. Thus, any trade secret, proprietary, and/or protective order materials which are required to be submitted on behalf of a patent applicant under 37 CFR 1.56 or patent owner under 37 CFR 1.555 can be submitted in accordance with MPEP § 724.02. Neither 37 CFR 1.56 nor 1.555 require the disclosure of information favorable to patentability, e.g., evidence of commercial success of the invention (see 42 FR 5590). Such information should not be submitted in accordance with MPEP § 724.02. If any trade secret, proprietary, and/or protective order materials are submitted in amendments, arguments in favor of patentability, or affidavits under 37 CFR 1.130, 1.131 or 1.132, they will be made of record in the file and will not be given any special status.
Insofar as protestors under 37 CFR 1.291(a) are concerned, submissions can be made in accordance with MPEP § 724.02 before the patent application is published, if protestor or petitioner has access to the application involved. After the patent application has been published under 35 U.S.C. 122(b)(1), no protest may be filed without the express consent of the applicant. Any submission filed by a protestor must follow the requirements for service. The Office cannot ensure that the party or parties served will maintain the information secret. If the party or parties served find it necessary or desirable to comment on material submitted under MPEP § 724 before it is, or without its being, found “material to patentability,” such comments should either (A) not
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disclose the details of the material or (B) be submitted in a separate paper under MPEP § 724.02.
724.04 Office Treatment and Handling of Materials Submitted Under MPEP § 724.02 [R-07.2015]
The exact methods of treating and handling materials submitted under MPEP § 724.02 will differ slightly depending upon whether the materials are submitted in an original application subject to the requirements of 35 U.S.C. 122 or whether the submission is made in a reissue application or reexamination file open to the public under 37 CFR 1.11(b) or (d). Prior to publication, an original application is not open to the public under 35 U.S.C. 122(a). After the application has been published under 35 U.S.C. 122(b)(1), copies of the file wrapper of the pending application are available to any member of the public who has filed a request under 37 CFR 1.14(a)(1)(ii) or (a)(1)(iii). See MPEP § 103.
If the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14, any materials submitted under MPEP § 724.02 will only be released to the public with any other application papers if no petition to expunge (37 CFR 1.59) was filed prior to the mailing of a notice of allowability or notice of abandonment, or if a petition to expunge was filed and the petition was denied. Prior to the mailing of the notice of allowability or notice of abandonment, the examiner will review the patent application file and determine if a petition to expunge is in the application file but not acted upon. If the application is being allowed, if the materials submitted under MPEP § 724.02 are found not to be material to patentability, the petition to expunge will be granted and the materials will be expunged. If the materials are found to be material to patentability, the petition to expunge will be denied and the materials will become part of the application record and will be available to the public upon issuance of the application as a patent. With the mailing of the notice of abandonment, if a petition to expunge has been filed, irrespective of whether the materials are found to be material to patentability, the petition to expunge will be granted and the materials expunged.
Upon receipt of the submission, the transmittal letter and the envelope or container will be date stamped
and brought to the attention of the examiner or other Office employee responsible for evaluating the submission. The receipt of the transmittal letter and envelope or container will be noted on the “Contents” of the application or reexamination file. In addition, the face of the application or reexamination file will have the notation placed thereon to indicate that trade secret, proprietary, or protective order material has been filed. The location of the material will also be specified. The words “TRADE SECRET MATERIALS FILED WHICH ARE NOT OPEN TO PUBLIC” on the face of the file are sufficient to indicate the presence of trade secret material. Similar notations will be made for either proprietary or protective order materials.
724.04(a) Materials Submitted in an Application Covered by 35 U.S.C. 122 [R-08.2012]
Any materials submitted under MPEP § 724.02 in an application covered by 35 U.S.C. 122 will be treated in the following manner:
(A) The submitted material will be maintained in the original envelope or container (clearly marked “Not Open To The Public”) and will not be publicly available until a determination has been made as to whether or not the information is material to patentability. Prior to publication, an original application is not available to the public under 35 U.S.C. 122(a). After publication of the application under 35 U.S.C. 122(b)(1), where the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14, any materials submitted under MPEP § 724.02 will only be released to the public with any other application papers if no petition to expunge (37 CFR 1.59) was filed prior to the mailing of a notice of allowability or notice of abandonment, or if a petition to expunge was filed and the petition was denied.
(B) If the application is to be abandoned, prior to the mailing of a notice of abandonment, the examiner will review the patent application file and determine if a petition to expunge is in the application file but not acted upon. If a petition to expunge has been filed, irrespective of whether the materials are found to be material to patentability, the petition to expunge will be granted and the materials expunged. If no petition to expunge has
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§ 724.04(a)EXAMINATION OF APPLICATIONS
been filed, the materials will be available to the public under 37 CFR 1.14(a)(1)(ii) or (a)(1)(iv).
(C) If the application is being allowed, prior to the mailing of a notice of allowability, the examiner will review the patent application file and determine if a petition to expunge is in the application file but not acted upon. The examiner, or other appropriate Office official who is responsible for considering the information, will make a determination as to whether or not any portion or all of the information submitted is material to patentability.
(D) If any portion or all of the submitted information is found to be material to patentability, the petition to expunge will be denied and the information will become a part of the file history (and scanned, if the application is an Image File Wrapper (IFW) application), which upon issuance of the application as a patent would become available to the public.
(E) If any portion or all of the submitted information is found not to be material to patentability, the petition to expunge will be granted and the information expunged.
(F) If a petition to expunge is not filed prior to the mailing of the notice of allowability, the materials submitted under MPEP § 724.02 will be released to the public upon the issuance of the application as a patent and upon the filing of a request and the appropriate fee (37 CFR 1.14).
(G) Any petition to expunge the submitted information or any portion thereof under 37 CFR 1.59(b) will be treated in accordance with MPEP § 724.05.
724.04(b) Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b) [R-08.2012]
Any materials submitted under MPEP § 724.02 in a reissue application open to the public under 37 CFR 1.11(b) will be treated in the following manner:
(A) Materials submitted under MPEP § 724.02 will only be released to the public with any other application papers if no petition to expunge (37 CFR 1.59) was filed prior to the mailing of a notice of allowability or notice of abandonment, or if a petition to expunge was filed and the petition was denied. The submitted information will be maintained
separate from the reissue application file and will not be publicly available until a determination has been made as to whether or not the information is material to patentability.
(B) If the reissue application is to be abandoned, prior to the mailing of a notice of abandonment, the examiner will review the reissue application file and determine if a petition to expunge is in the reissue application file but not acted upon. If a petition to expunge has been filed, irrespective of whether the materials are found to be material to patentability, the petition to expunge will be granted and the materials expunged. If no petition to expunge has been filed, the materials will be available to the public under 37 CFR 1.11(b).
(C) If the reissue application is being allowed, prior to the mailing of a notice of allowability, the examiner will review the reissue application file and determine if a petition to expunge is in the reissue application file but not acted upon. The examiner, or other appropriate Office official who is responsible for considering the information, will make a determination as to whether or not any portion or all of the information submitted is material to patentability.
(D) If any portion or all of the submitted information is found to be material to patentability, the petition to expunge will be denied and the information will thereafter become a permanent part of the reissue application file and open to the public. Where a submission containing protected material is found to be material to patentability, it still may be possible to redact the submission to eliminate the protected material while retaining the important material (e.g., where a confidential identifying number, such as a serial number or social security number, is included, which is not needed for the context of the submission). If so, the redacted version may be submitted to the Office along with a petition under 37 CFR 1.182 requesting that the unredacted version be sealed and be replaced with the redacted version.
(E) If any portion or all of the submitted information is found not to be material to patentability, the petition to expunge will be granted and the information expunged.
(F) If a petition to expunge is not filed prior to the mailing of the notice of allowability, the materials submitted under MPEP § 724.02 will
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become a permanent part of the reissue application file and open to the public under 37 CFR 1.11(b).
(G) Any petition to expunge a portion or all of the submitted information will be treated in accordance with MPEP § 724.05.
724.04(c) Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d) [R-08.2012]
Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner:
(A) Any materials, i.e., information, properly submitted under MPEP § 724.02 in a reexamination proceeding will be sealed from public view. The submitted information will be maintained separate from the reexamination file and will not be publicly available until a determination has been made as to whether or not the information is material to patentability. A petition to expunge (37 CFR 1.59) should accompany the submission of proprietary materials, and in any event, must be filed prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process), the mailing of a Notice of Intent to Issue Reexamination Certificate (NIRC). If the petition to expunge is not filed in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process, or the petition is filed, and denied/dismissed, then the materials submitted under MPEP § 724.02 will be released to the public with any other papers in the reexamination file.
(B) Prior to the mailing of a NIRC, the examiner will review the reexamination file and determine if a petition to expunge is in the reexamination file but not acted upon. The examiner, or other appropriate Office official who is responsible for considering the information, will make a determination as to whether or not any portion or all of the information submitted is material to patentability.
(C) If any portion or all of the submitted information is found to be material to patentability, the petition to expunge will be denied and the information will thereafter become a permanent part of the reexamination file and open to the public. Where a submission containing protected material
is found to be material to patentability, it still may be possible to redact the submission to eliminate the protected material while retaining the important material (e.g., where a confidential identifying number, such as a serial number or social security number, is included, which is not needed for the context of the submission). If so, the redacted version may be submitted to the Office along with a petition under 37 CFR 1.182 requesting that the unredacted version be sealed and be replaced with the redacted version.
(D) If all of the submitted information is found not to be material to patentability, the petition to expunge will be granted and the information expunged. If a portion of the submitted information is found not to be material to patentability, and a portion is found to be material to patentability, the petition to expunge will be dismissed, and patent owner (or the requester, in limited instances where appropriate) provided with an opportunity to separate the material and non-material information, such that the non-material information can be expunged. See item (C) above.
(E) If a petition to expunge is not filed prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process), the mailing of the NIRC, the materials submitted under MPEP § 724.02 will become a permanent part of the reexamination file and open to the public under 37 CFR 1.11(d). In the event materials have already been made of record by a party, and it is subsequently determined that the materials are protected, the proper petition to submit would be a petition to seal the protected material under 37 CFR 1.182, with the requisite fee.
(F) Any petition to expunge a portion or all of the submitted information under 37 CFR 1.59(b) will be treated in accordance with MPEP § 724.05.
724.05 Petition To Expunge Information or Copy of Papers in Application File [R-07.2015]
I. INFORMATION SUBMITTED UNDER MPEP § 724.02
A petition under 37 CFR 1.59(b) to expunge information submitted under MPEP § 724.02, or that
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should have been submitted under MPEP § 724.02 (as where proprietary information is submitted in an information disclosure statement but inadvertently not submitted in a sealed envelope as discussed in MPEP § 724.02) will be entertained only if the petition fee (37 CFR 1.17(g)) is filed and the information has been found not to be material to patentability. If the information is found to be material to patentability, any petition to expunge the information will be denied. Any such petition to expunge information submitted under MPEP § 724.02 should be submitted at the time of filing the information under MPEP § 724.02 and directed to the Technology Center (TC) to which the application is assigned. Such petition must contain:
(A) a clear identification of the information to be expunged without disclosure of the details thereof;
(B) a clear statement that the information to be expunged is trade secret material, proprietary material, and/or subject to a protective order, and that the information has not been otherwise made public;
(C) a commitment on the part of the petitioner to retain such information for the period of enforceability of any patent with regard to which such information is submitted;
(D) a statement that the petition to expunge is being submitted by, or on behalf of, the party in interest who originally submitted the information;
(E) the fee as set forth in 37 CFR 1.17(g) for a petition under 37 CFR 1.59(b).
Any such petition to expunge should accompany the submission of the information and, in any event, must be submitted in sufficient time that it can be acted on prior to the mailing of a notice of allowability or a notice of abandonment for original and reissue applications, or prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process), the mailing of a Notice of Intent to Issue Reexamination Certificate (NIRC) for reexamination proceedings. Timely submission of the petition is, accordingly, extremely important. If the petition does not accompany the information when it is initially submitted, the petition should be submitted while the application or reexamination is pending in the Technology Center (TC) and before
it is transmitted to the Publishing Division. If a petition to expunge is not filed prior to the mailing of a notice of allowability or a notice of abandonment for original and reissue applications, or prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process), the mailing of a NIRC for reexamination proceedings, any material then in the file will remain therein and be open to the public in accordance with 37 CFR 1.14. Accordingly, it is important that both the submission of any material under MPEP § 724.02 and the submission of any petition to expunge occur as early as possible during the examination process. The decision will be held in abeyance and be decided upon the close of prosecution on the merits.
II. INFORMATION UNINTENTIONALLY SUBMITTED IN APPLICATION
A petition to expunge information unintentionally submitted in an application (other than information forming part of the original disclosure) may be filed under 37 CFR 1.59(b), provided that:
(A) the Office can effect such return prior to the issuance of any patent on the application in issue;
(B) it is stated that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted;
(C) the information has not otherwise been made public;
(D) there is a commitment on the part of the petitioner to retain such information for the period of any patent with regard to which such information is submitted;
(E) it is established to the satisfaction of the Director that the information to be returned is not material information under 37 CFR 1.56; and
(F) the petition fee as set forth in 37 CFR 1.17(g) is included.
A request to expunge information that has not been clearly identified as information that may be later subject to such a request by marking and placement in a separate sealed envelope or container shall be
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treated on a case-by-case basis. Applicants should note that unidentified information that is a trade secret, proprietary, or subject to a protective order that is submitted in an Information Disclosure Statement may inadvertently be placed in an Office prior art search file by the examiner due to the lack of such identification and may not be retrievable.
III. INFORMATION SUBMITTED IN INCORRECT APPLICATION
37 CFR 1.59(b) also covers the situation where an unintended heading has been placed on papers so that they are present in an incorrect application file. In such a situation, a petition should request that the papers be expunged rather than transferred to the correct application file. The grant of such a petition will be governed by the factors enumerated in paragraph II of this section in regard to the unintentional submission of information. Where the Office can determine the correct application file that the papers were actually intended for, based on identifying information in the heading of the papers (e.g., application number, filing date, title of invention and inventor(s) name(s)), the Office will transfer the papers to the correct application file for which they were intended without the need of a petition. However, if the papers are correctly matched with the application serial number given in an electronic filing via EFS-WEB, the information is not considered to have been submitted in the incorrect application even if the identifying information in the heading of the papers is directed toward a different application.
IV. INFORMATION FORMING PART OF THE ORIGINAL DISCLOSURE
A petition to expunge a part of the original disclosure must be filed under 37 CFR 1.183, since such a request requires a waiver of the requirements of 37 CFR 1.59(a). Petitions under 37 CFR 1.183 should be directed to the Office of Petitions. The petition must explain why justice requires waiver of the rules to permit the requested material to be expunged. It should be noted that petitions to expunge information which is a part of the original disclosure, such as the specification and drawings, will ordinarily not be favorably entertained. The original disclosures of applications are scanned for
record keeping purposes. Accordingly, the grant of a petition to expunge information which is part of the original disclosure would require that the USPTO record of the originally filed application be changed, which may not be possible.
724.06 Handling of Petitions To Expunge Information or Copy of Papers inApplication File [R-07.2015]
37 CFR 1.59 Expungement of information or copy of papers in application file.
(a)
(1) Information in an application will not be expunged, except as provided in paragraph (b) of this section or § 41.7(a) or § 42.7(a) of this title.
(2) Information forming part of the original disclosure ( i.e., written specification including the claims, drawings, and any preliminary amendment present on the filing date of the application) will not be expunged from the application file.
(b) An applicant may request that the Office expunge information, other than what is excluded by paragraph (a)(2) of this section, by filing a petition under this paragraph. Any petition to expunge information from an application must include the fee set forth in § 1.17(g) and establish to the satisfaction of the Director that the expungement of the information is appropriate in which case a notice granting the petition for expungement will be provided.
(c) Upon request by an applicant and payment of the fee specified in § 1.19(b), the Office will furnish copies of an application, unless the application has been disposed of (see §§ 1.53(e), (f) and (g)). The Office cannot provide or certify copies of an application that has been disposed of.
37 CFR 1.59 provides that information, other than the original disclosure of the application, may be expunged from the file wrapper provided a petition to expunge under 37 CFR 1.59(b) and the required fee set forth in 37 CFR 1.17(g) are filed, and further that petitioner has established to the satisfaction of the Director that the return of the information is appropriate. Expungement of information that was originally submitted to the Office under MPEP § 724.02, or that should have been submitted in a sealed envelope as discussed in MPEP § 724.02, is appropriate when the petitioner complies with items (A)-(E) set forth in MPEP § 724.05, paragraph I, and the examiner or other appropriate Office official who is responsible for considering the information has determined that the information is not material to patentability. Expungement of information that was inadvertently submitted to the Office is
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appropriate provided that items (A)-(F) set forth in MPEP § 724.05, paragraph II, are satisfied. See also MPEP § 724.
Where the information to be expunged was not submitted pursuant to MPEP § 724.02 or as part of an Information Disclosure Statement, the petition should be sent to the Office of Petitions for decision.
The decision on the petition to expunge should be held in abeyance until the application is allowed or an Ex parte Quayle action, or a Notice of Abandonment is mailed, at which time the petition will be decided. However, where it is clear that the information was submitted in the wrong application, then the decision on the petition should not be held in abeyance. See MPEP § 724.05, paragraph III. In a pending application that has not been allowed or in which an Ex parte Quayle action has not been mailed, the examiner may not have finally considered what is material to a decision of patentability of the claims. Petitioner may be notified that the decision on the petition under 37 CFR 1.59(b) to expunge information in an application will be held in abeyance and be decided upon allowance of the application, or the mailing of an Ex parte Quayle action or a Notice of Abandonment using form paragraph 7.204.
¶ 7.204 Petition Under 37 CFR 1.59(b) To Expunge Information: Decision Held in Abeyance
In re Application of [1]: Appl. No.: [2]: RESPONSE TO PETITION Filed: [3] : UNDER 37 CFR 1.59 For: [4]:
This is a response to the petition under 37 CFR 1.59(b), filed [5], to expunge information from the above identified application.
The decision on the petition will be held in abeyance until allowance of the application or mailing of an Ex parte Quayle action or a Notice of Abandonment, at which time the petition will be decided.
Petitioner requests that a document entitled [6], filed [7], be expunged from the record. Petitioner states either: (A) that the information contains trade secret material, proprietary material and/or material that is subject to a protective order which has not been made public; or (B) that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted, and the information has not otherwise been made public. The petition fee set forth in 37 CFR 1.17(g) has been paid.
The decision on the petition is held in abeyance because prosecution on the merits is not closed. Accordingly, it is not appropriate to make a final determination of whether or not the material requested to be expunged is “material,” with “materiality” being defined as any information which the examiner considers as being important to a determination of patentability of the claims. Thus, the decision on the petition to expunge must be held in abeyance at this time.
During prosecution on the merits, the examiner will determine whether or not the identified document is considered to be “material.” If the information is not considered by the examiner to be material, the information will be removed from the official file.
Examiner Note:
1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement.
2. The petition should be sent to the Office of Petitions for decision if:
(a) the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment present on the filing date of the application) cannot be expunged under 37 CFR 1.59. Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or
(b) the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).
3. This decision is printed with the USPTO letterhead.
4. In bracket 6, clearly identify the document which petitioner requests to expunge. For example, refer to the author and title of the document.
5. Mail with PTO-90C cover sheet.
When an application has been allowed, an Ex parte Quayle action has been mailed, or an application is abandoned, a petition to expunge should be decided by a TC Director (see MPEP § 1002.02(c)). At this time a determination must be made as to whether the information in question is material. Form paragraph 7.205 should be used to grant a petition to expunge, whereas form paragraphs 7.206 - 7.213 should be used to dismiss such a petition.
¶ 7.205 Petition Under 37 CFR 1.59(b) To Expunge Information Granted
In re Application of [1]: Appl. No.: [2]: DECISION ON PETITION Filed: [3]: UNDER 37 CFR 1.59 For: [4]:
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This is a decision on the petition under 37 CFR 1.59(b), filed [5], to expunge information from the above identified application.
The petition is granted.
Petitioner requests that a document entitled [6], filed [7], be expunged from the record. Petitioner states that either (A) that the information contains trade secret material, proprietary material and/or material that is subject to a protective order which has not been made public; or (B) that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted, and the information has not otherwise been made public. The petition fee set forth in 37 CFR 1.17(g) has been paid.
The information in question has been determined by the undersigned to not be material to the examination of the instant application.
Applicant is required to retain the expunged material(s) for the life of any patent which issues on the above-identified application.
The expunged material has been removed from the official file.
Enclosure: [8]
Examiner Note:
1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Furthermore, a petition to expunge may not be granted unless the application has been allowed or is abandoned, or an Ex Parte Quayle action has been mailed.
2. The petition should be sent to the Office of Petitions for decision if:
(a) the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment present on the filing date of the application) cannot be expunged under 37 CFR 1.59. Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or
(b) the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).
3. This decision is printed with the USPTO letterhead.
4. In brackets 6 and 8, clearly identify the expunged document. For example, refer to the author and title of the document.
5. Mail with PTO-90C cover sheet.
¶ 7.206 Petition Under 37 CFR 1.59(b) To Expunge Information Dismissed
In re Application of [1]: Appl. No.: [2]: DECISION ON PETITION Filed: [3]: UNDER 37 CFR 1.59 For: [4]:
This is a decision on the petition under 37 CFR 1.59(b), filed [5], to expunge information from the above identified application.
The petition is dismissed.
Petitioner requests that a document entitled [6], filed [7], be expunged from the record.
“Materiality” is defined as any information which the examiner considers as being important to a determination of patentability of the claims.
The petition is deficient because: [8]
Examiner Note:
1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. However, the petition should not be granted until the application has been allowed or abandoned, or an Ex parte Quayle action has been mailed.
2. The petition should be sent to the Office of Petitions for decision if:
(a) the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment present on the filing date of the application) cannot be expunged under 37 CFR 1.59. Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or
(b) the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).
3. This decision is printed with the USPTO letterhead.
4. In bracket 6, clearly identify the document which petitioner requests to expunge. For example, refer to the author and title of the document.
5. This form paragraph must be followed with one or more of form paragraphs 7.207 through 7.213.
¶ 7.207 Petition To Expunge, Conclusion, Lacks Fee
the petition was not accompanied by the required fee under 37 CFR1.17(g).
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¶ 7.208 Petition to Expunge, Conclusion, Material to Determination of Patentability
the information that petitioner requests to expunge is considered to be material to the determination of patentability because [1].
Examiner Note:
In bracket 1, provide an explanation of basis for conclusion that information is material to the determination of patentability.
¶ 7.209 Petition To Expunge, Conclusion, Information Made Public
the information has been made public. [1]
Examiner Note:
In bracket 1, provide explanation of basis for conclusion that information has been made public.
¶ 7.210 Petition to Expunge, Conclusion, No Commitment to Retain Information
the petition does not contain a commitment on the part of petitioner to retain the information to be expunged for the period of any patent with regard to which such information is submitted.
¶ 7.211 Petition to Expunge, Conclusion, No Clear Statement That Information is Trade Secret, Proprietary, and/or Subject to Protective Order, or that Submission Was Unintentional
the petition does not contain a clear statement that the information requested to be expunged is either: (1) a trade secret, proprietary, and/or subject to a protective order; or (2) was unintentionally submitted and failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted. [1]
Examiner Note:
In bracket 1, indicate whether any such statement was provided and, if so, explain why such statement is not clear.
¶ 7.212 Petition to Expunge, Conclusion, No Clear Identification of Information to be Expunged
the petition does not clearly identify the information requested to be expunged. [1]
Examiner Note:
In bracket 1, explain why the identification of the information requested to be expunged is not clear.
¶ 7.213 Petition to Expunge, Conclusion, No Statement That Petition Is Submitted By, or on Behalf of, Party in Interest Who Originally Submitted the Information
the petition does not contain a statement that the petition is being submitted by, or on behalf of, the party in interest who originally submitted the information.
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Chapter 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
Introduction801 Basis for Restriction Practice in Statute and Rules
802
Meaning of “Independent” and “Distinct”
802.01
Definition of Restriction802.02 Restriction — When Proper803
Review by Examiner with at Least Partial Signatory Authority
803.01
Markush Claims803.02 Transitional Applications803.03
Transitional Application — Linking Claim Allowable
803.03(a)
Transitional Application — Generic Claim Allowable
803.03(b)
Nucleotide Sequences803.04 Reissue Application Practice803.05
Definition of Double Patenting804 Prohibition of Nonstatutory Double Patenting Rejections Under 35 U.S.C. 121
804.01
Avoiding a Double Patenting Rejection
804.02
Commonly Owned Inventions of Different Inventive Entities;
804.03
Non-Commonly Owned Inventions Subject to a Joint Research Agreement Submission to Technology Center Director
804.04
Effect of Improper Joinder in Patent805 Determination of Distinctness or Independence of Claimed Inventions
806
Compare Claimed Subject Matter806.01 [Reserved]806.02 Single Embodiment, Claims Defining Same Essential Features
806.03
Genus and/or Species Inventions806.04 [Reserved]806.04(a) Species May Be Independent or Related Inventions
806.04(b)
[Reserved]806.04(c) Definition of a Generic Claim806.04(d) Claims Limited to Species806.04(e) Restriction Between Mutually Exclusive Species
806.04(f)
[Reserved]806.04(g) Species Must Be Patentably Distinct From Each Other
806.04(h)
Generic Claims Presented In a Separate Application After Issuance of Species Claims
806.04(i)
Related Inventions806.05 Combination and Subcombination806.05(a) [Reserved]806.05(b) Criteria of Distinctness Between Combination and Subcombination
806.05(c)
Subcombinations Usable Together
806.05(d)
Process and Apparatus for Its Practice
806.05(e)
Process of Making and Product Made
806.05(f)
Apparatus and Product Made806.05(g) Product and Process of Using806.05(h) Product, Process of Making, and Process of Using
806.05(i)
Related Products; Related Processes
806.05(j)
Independent Inventions806.06 Patentability Report Practice Has No Effect on Restriction Practice
807
Reasons for Insisting Upon Restriction808 Reasons for Holding of Independence or Distinctness
808.01
Species808.01(a) Establishing Burden808.02
Linking Claims809 [Reserved]809.01 [Reserved]809.02
Election of Species Required809.02(a) Restriction Between Linked Inventions
809.03
Action on the Merits810 Time for Making Requirement811
[Reserved]811.01 New Requirement After Compliance With Preceding Requirement
811.02
Repeating After Withdrawal Proper811.03 Proper Even Though Grouped Together in Parent Application
811.04
Who Should Make the Requirement812 Telephone Restriction Practice812.01
[Reserved]813 Indicate Exactly How Application Is To Be Restricted
814
Make Requirement Complete815 [Reserved]816
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817
Election and Reply818 Election in Reply to a Restriction Requirement: Express
818.01
Reply Must be Complete818.01(a) Election is Required, Even When Requirement Is Traversed
818.01(b)
Traverse is Required To Preserve Right of Petition
818.01(c)
Traverse of Restriction Requirement With Linking Claims
818.01(d)
Election Other Than Express818.02 Election By Originally Presented Claims
818.02(a)
Generic Claims Only — No Election of Species; Linking
818.02(b)
Claims Only – No Election of Invention Election By Optional Cancellation of Claims
818.02(c)
Election By Cancellation of Claims, Lacking Express Election Statement
818.02(d)
Office Generally Does Not Permit Shift819 [Reserved]820 Treatment of Claims Held To Be Drawn to Nonelected Inventions
821
After Election With Traverse821.01 After Election Without Traverse821.02 Claims for Different Invention Added After an Office Action
821.03
Rejoinder821.04 Rejoinder Between Product Inventions; Rejoinder Between Process Inventions
821.04(a)
Rejoinder of Process Requiring an Allowable Product
821.04(b)
Claims to Inventions That Are Not Patentably Distinct in Plural
822
Applications of Same Applicant or Assignee
Unity of Invention Under the Patent Cooperation Treaty
823
801 Introduction [R-07.2015]
This chapter is limited to a discussion of the subjects of restriction and double patenting under Title 35 of the United States Code and Title 37 of the Code of Federal Regulations as it relates to national applications filed under 35 U.S.C. 111(a). The discussion of unity of invention under the Patent Cooperation Treaty Articles and Rules as it is applied as an International Searching Authority, International Preliminary Examining Authority, and in applications entering the National Stage under 35 U.S.C. 371 as a Designated or Elected Office in the U.S. Patent and Trademark Office is covered in MPEP Chapter 1800.
See MPEP § 823 for a summary of the guidance set forth in this chapter with regard to other substantive and procedural matters that generally apply to national stage applications submitted under 35 U.S.C. 371.
The general principles set forth in this chapter apply to design applications, except as identified in MPEP § 1504.05 and § 1504.06. The general principles set forth in this chapter apply to reissue applications, however see MPEP § 803.05 and § 1450 for a discussion of the prerequisites to making a restriction requirement in reissue applications. With regard to reexamination proceedings, restriction is not permitted. Basic principles of double patenting apply to reexamination proceedings, as explained in this chapter and in MPEP Chapters 2200 and 2600 (see especially MPEP § 2258).
802 Basis for Restriction Practice in Statute and Rules [R-07.2015]
The basis for restriction practice is found in the following statute and rules:
35 U.S.C. 121 Divisional applications.
[ Editor Note: Applicable to any patent application filed on or after September 16, 2012. See pre-AIA 35 U.S.C. 121 for the law otherwise applicable.]
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If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
pre-AIA 35 U.S.C. 121 Divisional applications.
[ Editor Note: Not applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 121 for the law otherwise applicable.]
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. If a divisional application is directed solely to subject matter described and claimed in the original application as filed, the Director may dispense with signing and execution by the inventor. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
37 CFR 1.141 Different inventions in one national application.
(a) Two or more independent and distinct inventions may not be claimed in one national application, except that more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided the application also includes an allowable claim generic to all the claimed species and all the claims to species in excess of one are written in dependent form (§ 1.75) or otherwise include all the limitations of the generic claim.
(b) Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the
product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made.
37 CFR 1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action will require the applicant in the reply to that action to elect an invention to which the claims will be restricted, this official action being called a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action.
(b) Claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the examiner by the election, subject however to reinstatement in the event the requirement for restriction is withdrawn or overruled.
The pertinent Patent Cooperation Treaty (PCT) Articles and Rules are cited and discussed in MPEP Chapter 1800. Sections 1850, 1875, and 1893.03(d) should be consulted for discussions on unity of invention:
(A) before the International Searching Authority;
(B) before the International Preliminary Examining Authority; and
(C) in the National Stage under 35 U.S.C. 371.
802.01 Meaning of “Independent” and “Distinct” [R-08.2012]
35 U.S.C. 121 quoted in the preceding section states that the Director may require restriction if two or more “independent and distinct” inventions are claimed in one application. In 37 CFR 1.141, the statement is made that two or more “independent and distinct inventions” may not be claimed in one application.
This raises the question of the inventions as between which the Director may require restriction. This, in turn, depends on the construction of the expression “independent and distinct” inventions.
“Independent”, of course, means not dependent, or unrelated. If “distinct” means the same thing, then its use in the statute and in the rule is redundant. If “distinct” means something different, then the question arises as to what the difference in meaning between these two words may be. The hearings
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before the committees of Congress considering the codification of the patent laws indicate that 35 U.S.C. 121: “enacts as law existing practice with respect to division, at the same time introducing a number of changes.”
The report on the hearings does not mention as a change that is introduced, the inventions between which the Director may properly require division.
The term “independent” as already pointed out, means not dependent, or unrelated. A large number of inventions between which, prior to the 1952 Act, division had been proper, are dependent inventions, such as, for example, combination and a subcombination thereof; as process and apparatus used in the practice of the process; as composition and the process in which the composition is used; as process and the product made by such process, etc. If section 121 of the 1952 Act were intended to direct the Director never to approve division between dependent inventions, the word “independent” would clearly have been used alone. If the Director has authority or discretion to restrict independent inventions only, then restriction would be improper as between dependent inventions, e.g., the examples used for purpose of illustration above. Such was clearly not the intent of Congress. Nothing in the language of the statute and nothing in the hearings of the committees indicate any intent to change the substantive law on this subject. On the contrary, joinder of the term “distinct” with the term “independent”, indicates lack of such intent. The law has long been established that dependent inventions (frequently termed related inventions) such as used for illustration above may be properly divided if they are, in fact, “distinct” inventions, even though dependent.
I. INDEPENDENT
The term “independent” (i.e., unrelated) means that there is no disclosed relationship between the two or more inventions claimed, that is, they are unconnected in design, operation, and effect. For example, a process and an apparatus incapable of being used in practicing the process are independent inventions. See also MPEP § 806.06 and § 808.01.
II. RELATED BUT DISTINCT
Two or more inventions are related (i.e., not independent) if they are disclosed as connected in at least one of design (e.g., structure or method of manufacture), operation (e.g., function or method of use), or effect. Examples of related inventions include combination and part (subcombination) thereof, process and apparatus for its practice, process and product made, etc. In this definition the term related is used as an alternative for dependent in referring to inventions other than independent inventions.
Related inventions are distinct if the inventions as claimed are not connected in at least one of design, operation, or effect (e.g., can be made by, or used in, a materially different process) and wherein at least one invention is PATENTABLE (novel and nonobvious) OVER THE OTHER (though they may each be unpatentable over the prior art). See MPEP § 806.05(c) (combination and subcombination) and § 806.05(j) (related products or related processes) for examples of when a two-way test is required for distinctness.
It is further noted that the terms “independent” and “distinct” are used in decisions with varying meanings. All decisions should be read carefully to determine the meaning intended.
802.02 Definition of Restriction [R-08.2012]
Restriction is the practice of requiring an applicant to elect a single claimed invention (e.g., a combination or subcombination invention, a product or process invention, a species within a genus) for examination when two or more independent inventions and/or two or more distinct inventions are claimed in an application.
803 Restriction — When Proper [R-08.2012]
Under the statute, the claims of an application may properly be required to be restricted to one of two or more claimed inventions only if they are able to support separate patents and they are either independent (MPEP § 802.01, § 806.06, and § 808.01) or distinct (MPEP § 806.05 - § 806.05(j)).
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If the search and examination of all the claims in an application can be made without serious burden, the examiner must examine them on the merits, even though they include claims to independent or distinct inventions.
I. CRITERIA FOR RESTRICTION BETWEEN PATENTABLY DISTINCT INVENTIONS
There are two criteria for a proper requirement for restriction between patentably distinct inventions:
(A) The inventions must be independent (see MPEP § 802.01, § 806.06, § 808.01) or distinct as claimed (see MPEP § 806.05 - § 806.05(j)); and
(B) There would be a serious burden on the examiner if restriction is not required (see MPEP § 803.02, § 808, and § 808.02).
II. GUIDELINES
Examiners must provide reasons and/or examples to support conclusions, but need not cite documents to support the restriction requirement in most cases.
Where plural inventions are capable of being viewed as related in two ways, both applicable criteria for distinctness must be demonstrated to support a restriction requirement.
If there is an express admission that the claimed inventions would have been obvious over each other within the meaning of 35 U.S.C. 103, restriction should not be required. In re Lee, 199 USPQ 108 (Comm’r Pat. 1978).
For purposes of the initial requirement, a serious burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search as defined in MPEP § 808.02. That prima facie showing may be rebutted by appropriate showings or evidence by the applicant. Insofar as the criteria for restriction practice relating to Markush-type claims is concerned, the criteria is set forth in MPEP § 803.02. Insofar as the criteria for restriction or election practice relating to claims to
genus-species, see MPEP § 806.04 - § 806.04(i) and § 808.01(a).
803.01 Review by Examiner with at Least Partial Signatory Authority [R-07.2015]
Since requirements for restriction under 35 U.S.C. 121 are discretionary with the Director, it becomes very important that the practice under this section be carefully administered. Notwithstanding the fact that this section of the statute apparently protects the applicant against the dangers that previously might have resulted from compliance with an improper requirement for restriction, IT STILL REMAINS IMPORTANT FROM THE STANDPOINT OF THE PUBLIC INTEREST THAT NO REQUIREMENT BE MADE WHICH MIGHT RESULT IN THE ISSUANCE OF TWO PATENTS FOR THE SAME INVENTION. See MPEP § 804.01. Therefore, to guard against this possibility, only an examiner with permanent full signatory authority or temporary full signatory authority may sign final Office actions containing a final requirement for restriction. An examiner with permanent partial signatory authority or temporary partial signatory authority may sign non-final Office actions containing a final requirement for restriction.
803.02 Markush Claims [R-08.2012]
A Markush-type claim recites alternatives in a format such as “selected from the group consisting of A, B and C.” See Ex parte Markush, 1925 C.D. 126 (Comm’r Pat. 1925). The members of the Markush group (A, B, and C in the example above) ordinarily must belong to a recognized physical or chemical class or to an art-recognized class. However, when the Markush group occurs in a claim reciting a process or a combination (not a single compound), it is sufficient if the members of the group are disclosed in the specification to possess at least one property in common which is mainly responsible for their function in the claimed relationship, and it is clear from their very nature or from the prior art that all of them possess this property. Inventions in metallurgy, refractories, ceramics, pharmacy, pharmacology and biology are most frequently claimed under the Markush formula but purely mechanical features or process steps may also be
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claimed by using the Markush style of claiming. See MPEP § 2173.05(h).
If the members of the Markush group are sufficiently few in number or so closely related that a search and examination of the entire claim can be made without serious burden, the examiner must examine all the members of the Markush group in the claim on the merits, even though they may be directed to independent and distinct inventions. In such a case, the examiner will not follow the procedure described below and will not require provisional election of a single species. See MPEP § 808.02.
Since the decisions in In re Weber, 580 F.2d 455, 198 USPQ 328 (CCPA 1978) and In re Haas, 580 F.2d 461, 198 USPQ 334 (CCPA 1978), it is improper for the Office to refuse to examine that which applicants regard as their invention, unless the subject matter in a claim lacks unity of invention. In re Harnisch, 631 F.2d 716, 206 USPQ 300
(CCPA 1980); and Ex parte Hozumi, 3 USPQ2d 1059 (Bd. Pat. App. & Int. 1984). Broadly, unity of invention exists where compounds included within a Markush group (1) share a common utility, and (2) share a substantial structural feature essential to that utility.
This subsection deals with Markush-type generic claims which recite a plurality of alternatively usable substances or members. In most cases, a recitation by enumeration is used because there is no appropriate or true generic language. A Markush-type claim may include independent and distinct inventions. This is true where two or more of the members are so unrelated and diverse that a prior art reference anticipating the claim with respect to one of the members would not render the claim obvious under 35 U.S.C. 103 with respect to the other member(s). In applications containing a Markush-type claim that encompasses at least two independent or distinct inventions, the examiner may require a provisional election of a single species prior to examination on the merits. An examiner should set forth a requirement for election of a single disclosed species in a Markush-type claim using form paragraph 8.01 when claims limited to species are present or using form paragraph 8.02 when no species claims are present. See MPEP § 808.01(a) and § 809.02(a). Following election, the
Markush-type claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability. If the Markush-type claim is not allowable, the provisional election will be given effect and examination will be limited to the Markush-type claim and claims to the elected species, with claims drawn to species patentably distinct from the elected species held withdrawn from further consideration.
As an example, in the case of an application with a Markush-type claim drawn to the compound X-R, wherein R is a radical selected from the group consisting of A, B, C, D, and E, the examiner may require a provisional election of a single species, XA, XB, XC, XD, or XE. The Markush-type claim would then be examined fully with respect to the elected species and any species considered to be clearly unpatentable over the elected species. If on examination the elected species is found to be anticipated or rendered obvious by prior art, the Markush-type claim and claims to the elected species shall be rejected, and claims to the nonelected species would be held withdrawn from further consideration. A second action on the rejected claims can be made final unless the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
On the other hand, should the examiner determine that the elected species is allowable, the examination of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the Markush-type claim with respect to a nonelected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration. The prior art search, however, will not be extended unnecessarily to cover all nonelected species. Should applicant, in response to this rejection of the Markush-type claim, overcome the rejection, as by amending the Markush-type claim to exclude the species anticipated or rendered obvious by the prior art, the amended Markush-type claim will be reexamined. The examination will be extended to the extent necessary to determine patentability of the
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Markush-type claim. In the event prior art is found during the reexamination that anticipates or renders obvious the amended Markush-type claim, the claim will be rejected and the action can be made final unless the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a). Amendments submitted after the final rejection further restricting the scope of the claim may be denied entry if they do not comply with the requirements of 37 CFR 1.116. See MPEP § 714.13.
If a Markush claim depends from or otherwise requires all the limitations of another generic or linking claim, see MPEP § 809.
803.03 Transitional Applications [R-08.2012]
PRACTICE RE TRANSITIONAL APPLICATION
37 CFR 1.129 Transitional procedures for limited examination after final rejection and restriction practice.
*****
(b)(1) In an application, other than for reissue or a design patent, that has been pending for at least three years as of June 8, 1995, taking into account any reference made in the application to any earlier filed application under 35 U.S.C. 120, 121 and 365(c), no requirement for restriction or for the filing of divisional applications shall be made or maintained in the application after June 8, 1995, except where:
(i) The requirement was first made in the application or any earlier filed application under 35 U.S.C. 120, 121 and 365(c) prior to April 8, 1995;
(ii) The examiner has not made a requirement for restriction in the present or parent application prior to April 8, 1995, due to actions by the applicant; or
(iii) The required fee for examination of each additional invention was not paid.
(2) If the application contains more than one independent and distinct invention and a requirement for restriction or for the filing of divisional applications cannot be made or maintained pursuant to this paragraph, applicant will be so notified and given a time period to:
(i) Elect the invention or inventions to be searched and examined, if no election has been made prior to the notice, and pay the fee set forth in 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects;
(ii) Confirm an election made prior to the notice and pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in addition to the one invention which applicant previously elected; or
(iii) File a petition under this section traversing the requirement. If the required petition is filed in a timely manner, the original time period for electing and paying the fee set forth in § 1.17(s) will be deferred and any decision on the petition affirming or modifying the requirement will set a new time period to elect the invention or inventions to be searched and examined and to pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects.
(3) The additional inventions for which the required fee has not been paid will be withdrawn from consideration under § 1.142(b). An applicant who desires examination of an invention so withdrawn from consideration can file a divisional application under 35 U.S.C. 121.
(c) The provisions of this section shall not be applicable to any application filed after June 8, 1995.
“Restriction” under 37 CFR 1.129(b) applies to both restriction requirements under 37 CFR 1.142 and election of species requirements under 37 CFR 1.146.
37 CFR 1.129(b)(1) provides for examination of more than one independent and distinct invention in certain applications pending for 3 years or longer as of June 8, 1995, taking into account any reference to any earlier application under 35 U.S.C. 120, 121, or 365(c). Applicant will not be permitted to have such additional invention(s) examined in an application if:
(A) the requirement was made in the application or in an earlier application relied on under 35 U.S.C. 120, 121, or 365(c) prior to April 8, 1995;
(B) no restriction requirement was made with respect to the invention(s) in the application or earlier application prior to April 8, 1995, due to actions by the applicant; or
(C) the required fee for examination of each additional invention was not paid.
Only if one of these exceptions applies is a normal restriction requirement appropriate and telephone restriction practice may be used.
Examples of what constitute “actions by the applicant” in 37 CFR 1.129(b)(1) are:
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(A) applicant abandoned the application and continued to refile the application such that no Office action could be issued in the application,
(B) applicant requested suspension of prosecution under 37 CFR 1.103(a) such that no Office action could be issued in the application,
(C) applicant disclosed a plurality of independent and distinct inventions in the present or parent application, but delayed presenting claims to more than one of the disclosed independent and distinct inventions in the present or parent application such that no restriction requirement could be made prior to April 8, 1995, and
(D) applicant combined several applications, each of which claimed a different independent and distinct invention, into one large “continuing” application, but delayed filing the continuing application first claiming more than one independent and distinct invention such that no restriction requirement could be made prior to April 8, 1995.
In examples (A) and (B), the fact that the present or parent application claiming independent and distinct inventions was on an examiner’s docket for at least 3 months prior to abandonment or suspension, or in examples (C) and (D), the fact that the amendment claiming independent and distinct inventions was first filed, or the continuing application first claiming the additional independent and distinct inventions was on an examiner’s docket, at least 3 months prior to April 8, 1995, is prima facie evidence that applicant’s actions did not prevent the Office from making a requirement for restriction with respect to those independent and distinct inventions prior to April 8, 1995. Furthermore, an extension of time under 37 CFR 1.136(a) does not constitute such “actions by the applicant” under 37 CFR 1.129(b)(1).
NOTE: If an examiner believes an application falls under the exception that no restriction could be made prior to April 8, 1995, due to applicant’s action, the application must be brought to the attention of the Technology Center (TC) Special Program Examiner for review.
Under 37 CFR 1.129(b)(2), if the application contains claims to more than one independent and distinct invention, and no requirement for restriction or for the filing of divisional applications can be
made or maintained, applicant will be notified and given a time period to:
(A) elect the invention or inventions to be searched and examined, if no election has been made prior to the notice, and pay the fee set forth in 37 CFR 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects,
(B) in situations where an election was made in reply to a requirement for restriction that cannot be maintained, confirm the election made prior to the notice and pay the fee set forth in 37 CFR 1.17(s) for each independent and distinct invention claimed in the application in addition to the one invention which applicant previously elected, or
(C) file a petition under 37 CFR 1.129(b)(2) traversing the requirement without regard to whether the requirement has been made final. No petition fee is required.
37 CFR 1.129(b)(2) also provides that if the petition is filed in a timely manner, the original time period for electing and paying the fee set forth in 37 CFR 1.17(s) will be deferred and any decision on the petition affirming or modifying the requirement will set a new time period to elect the invention or inventions to be searched and examined and to pay the fee set forth in 37 CFR 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects.
Under 37 CFR 1.129(b)(3), each additional invention for which the required fee set forth in 37 CFR 1.17(s) has not been paid will be withdrawn from consideration under 37 CFR 1.142(b). An applicant who desires examination of an invention so withdrawn from consideration can file a divisional application under 35 U.S.C. 121.
37 CFR 1.129(c) clarifies that the provisions of 37 CFR 1.129(a) and (b) are not applicable to any application filed after June 8, 1995. However, any application filed on June 8, 1995, would be subject to a 20-year patent term.
Form paragraph 8.41 may be used to notify applicant that the application is a transitional application and is entitled to consideration of additional inventions upon payment of the required fee.
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¶ 8.41 Transitional Restriction or Election of Species Requirement – pre-GATT Filing
This application is subject to the transitional restriction provisions of Public Law 103-465, which became effective on June 8, 1995, because:
1. the application was filed on or before June 8, 1995, and has an effective U.S. filing date of June 8, 1992, or earlier;
2. a requirement for restriction was not made in the present or a parent application prior to April 8, 1995; and
3. the examiner was not prevented from making a requirement for restriction in the present or a parent application prior to April 8, 1995, due to actions by the applicant.
The transitional restriction provisions permit applicant to have more than one independent and distinct invention examined in the same application by paying a fee for each invention in excess of one.
Final rules concerning the transition restriction provisions were published in the Federal Register at 60 FR 20195 (April 25, 1995) and in the Official Gazette at 1174 OG 15 (May 2, 1995). The final rules at 37 CFR 1.17(s) include the fee amount required to be paid for each additional invention as set forth in the following requirement for restriction. See the current fee schedule for the proper amount of the fee.
Applicant must either: (1) elect the invention or inventions to be searched and examined and pay the fee set forth in 37 CFR 1.17(s) for each independent and distinct invention in excess of one which applicant elects; or (2) file a petition under 37 CFR 1.129(b) traversing the requirement.
Examiner Note:
1. This form paragraph should be used in all restriction or election of species requirements made in applications subject
to the transition restriction provisions set forth in 37 CFR 1.129(b). The procedure is NOT applicable to any design or reissue application.
803.03(a) Transitional Application — Linking Claim Allowable [R-08.2012]
Whenever divided inventions in a transitional application are rejoined because a linking claim is allowable (MPEP § 809, § 821.04, and § 821.04(a)) and applicant paid the fee set forth in 37 CFR 1.17(s) for the additional invention, applicant should be notified that he or she may request a refund of the fee paid for that additional invention.
803.03(b) Transitional Application — Generic Claim Allowable [R-08.2012]
Whenever claims drawn to an additional species in a transitional application for which applicant paid the fee set forth in 37 CFR 1.17(s) are no longer withdrawn from consideration because they are fully embraced by an allowable generic claim, applicant should be notified that he or she may request a refund of the fee paid for that additional species.
The determination of when claims to a nonelected species would no longer be withdrawn from consideration should be made as indicated in MPEP § 806.04(d), § 821.04, and § 821.04(a).
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803.04 Nucleotide Sequences [R-07.2015] Polynucleotide molecules defined by their nucleic acid sequence (hereinafter “nucleotide sequences”) that encode different proteins are structurally distinct
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chemical compounds. These sequences are thus deemed to normally constitute independent and distinct inventions within the meaning of 35 U.S.C. 121. Absent evidence to the contrary, each such nucleotide sequence is presumed to represent an independent and distinct invention, subject to a restriction requirement pursuant to 35 U.S.C. 121 and 37 CFR 1.141 et seq.
In 1996, the Commissioner of Patents and Trademarks decided sua sponte to partially waive the requirements of 37 CFR 1.141 et seq. and permit a reasonable number of such nucleotide sequences to be claimed in a single application. See Examination of Patent Applications Containing
Nucleotide Sequences, 1192 OG 68 (November 19, 1996).
In 2007, the Commissioner for Patents rescinded the waiver. See Examination of Patent Applications Containing Nucleotide Sequences, 1316 OG 123 (March 27, 2007). All pending applications are subject to the 2007 OG notice. Note, however, that supplemental restriction requirements will not be advanced in applications that have already received an action on their merits for multiple nucleotide sequences in the absence of extenuating circumstances. For national applications filed under 35 U.S.C. 111(a), polynucleotide inventions will be considered for restriction, rejoinder, and examination practice in accordance with the standards set forth in MPEP Chapter 800. Claims to polynucleotide molecules will be considered for independence, relatedness, distinction and burden in the same manner as claims to any other type of molecule.
See MPEP § 1850 for treatment of claims containing independent and distinct nucleotide sequences in international applications filed under the Patent Cooperation Treaty (PCT) and national stage applications filed under 35 U.S.C. 371.
803.05 Reissue Application Practice [R-07.2015]
37 CFR 1.176 Examination of reissue. *****
(b) Restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent
claims will not be required). If restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.
Restriction practice relating to reissue applications is governed by 37 CFR 1.176(b) which specifies that restriction may only be required between the invention(s) of the original patent claims and previously unclaimed invention(s) set forth in new claims added in the reissue application. The claims of the original patent must not be restricted as being directed to two or more independent and distinct inventions and must be examined together. Where restriction is required by the examiner, the invention(s) set forth by the original patent claims and any newly added claims that are directed to the same invention(s) will be held as constructively elected. Any new claim that is directed to an invention that is independent and distinct from the invention(s) of the original patent claims will be withdrawn from consideration. See MPEP § 1450 for a detailed explanation of this practice. Note that applicant may initiate a division of the claims by filing more than one reissue application in accordance with 37 CFR 1.177. See MPEP § 1451 for a detailed explanation of this practice.
Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. Once an applicant acquiesces to a restriction (or an election of species) requirement, any invention distinct from that elected and prosecuted to allowance—whether originally claimed or not—can only be pursued in a timely-filed divisional application. A reissue applicant’s failure to timely file a divisional application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251. In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790
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F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986). See MPEP § 1412.01.
804 Definition of Double Patenting [R-07.2015]
35 U.S.C. 101 Inventions Patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 121 Divisional Applications.
[ Editor Note: Applicable to any patent application filed on or after September 16, 2012. See pre-AIA 35 U.S.C. 121 for the law otherwise applicable.]
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
pre-AIA 35 U.S.C. 121 Divisional Applications.
[ Editor Note: Not applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 121 for the law otherwise applicable.]
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. If a divisional application is directed solely to subject matter described and claimed in the original application as filed, the Director may dispense with signing and execution by the inventor. The validity of a patent
shall not be questioned for failure of the Director to require the application to be restricted to one invention.
The doctrine of double patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of a patent. The public policy behind this doctrine is that:
The public should . . . be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also modifications or variants which would have been obvious to those of ordinary skill in the art at the time the invention was made, taking into account the skill in the art and prior art other than the invention claimed in the issued patent.
In re Zickendraht, 319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963) (Rich, J., concurring). Double patenting results when the right to exclude granted by a first patent is unjustly extended by the grant of a later issued patent or patents. In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982). Note that in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 110 USPQ2d 1551 (Fed. Cir. 2014), the court found an earlier-expiring patent, which was issued after the later-expiring patent, may be used to invalidate the later-expiring patent.
Before consideration can be given to the issue of double patenting, two or more patents or applications must have at least one common inventor, common applicant, and/or be commonly assigned/owned or non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 102(c) or in pre-AIA 35 U.S.C. 103(c)(2) and (3). For purposes of a double patenting analysis, the application or patent and the subject matter disqualified under 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) will be treated as if commonly owned. SeeMPEP § 804.03. Since the doctrine of double patenting seeks to avoid unjustly extending patent rights at the expense of the public, the focus of any double patenting analysis necessarily is on the claims in the multiple patents or patent applications involved in the analysis.
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There are generally two types of double patenting rejections. One is the “same invention” type double patenting rejection based on 35 U.S.C. 101 which states in the singular that an inventor “may obtain a patent.” The second is the “nonstatutory-type” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent.
The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). The submission of a terminal disclaimer in compliance with 37 CFR 1.321(b) to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all those patents or sells them as a group. Van Ornum, 686 F.2d at 944-45, 214 USPQ at 767.
Nonstatutory double patenting includes rejections based on anticipation, a one-way determination of “obviousness,” or a two-way determination of “obviousness.” It is important to note that the “obviousness” analysis for “obviousness-type” double-patenting is “similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103.” In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d
1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed. Cir. 2003). In addition, nonstatutory double patenting also includes rejections based on the equitable principle against permitting an unjustified timewise extension of patent rights. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also subsection II.B.3, below.
The charts below are an overview of the treatment of applications having conflicting claims (e.g., where a claim in an application is not patentably distinct from a claim in a patent or another application). Specifically, the charts cover when two applications have claims to the same invention (Charts I-A) or
to patently indistinct inventions (Charts I-B) and when an application and a patent have claims to the same invention (Charts II-A) or to patently indistinct inventions (Charts II-B). The charts also include first to invent (FTI) versions (i.e., Charts I-A_FTI, I-B_FTI, II-A_FTI, and II-B_FTI) for use when examining an application that is subject to 35 U.S.C. 102 and 103 in effect on March 15, 2013 (e.g., pre-AIA 35 U.S.C. 102 and 103) and America Invents Act (AIA) versions (i.e., Charts I-A_AIA, I-B_AIA, II-A_AIA, and II-B_AIA) for use when examining an application that is subject to 35 U.S.C. 102 and 103 in effect on March 16, 2013 (AIA 35 U.S.C. 102 and 103). Therefore, in certain situations, examiners may have to use the FTI versions of the charts for an earlier-filed application that is subject to pre-AIA 35 U.S.C. 102 and 103 and the AIA versions of the charts for the later-filed application that is subject to AIA 35 U.S.C. 102 and 103 or vice versa. The charts show possible rejections based upon an earlier-filed application or patent that may be applicable if the record supports such rejections. For example, examiners should determine if an earlier-filed application or patent is prior art under pre-AIA 35 U.S.C. 102(e) or 35 U.S.C. 102(a)(2) before making an anticipation or obviousness rejection based upon the earlier-filed application or patent.
The AIA versions of the charts provide that a (provisional) rejection under 35 U.S.C. 102(a)(2) should not be applied if the earlier-filed application or patent is not prior art in view of 35 U.S.C. 102(b)(2)(A) or (B). The evidence necessary to show that the disclosure is by the inventor or a joint inventor or another who obtained the subject matter disclosed from the inventor or a joint inventor requires a case-by-case analysis, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is an inventor-originated disclosure. In the situation where the previous public disclosure by the inventor (or which originated with the inventor) was not within the grace period but was effective to disqualify an intervening disclosure as prior art by invoking the exception of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B), the previous public disclosure by, or originating with, the inventor would qualify as prior art under 35 U.S.C. 102(a)(1) and could not be disqualified under 35 U.S.C.
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102(b)(1)(A). See MPEP §§ 717 et seq. and 2155 et seq. for more information about the prior art exceptions under 35 U.S.C. 102(b)(2).
The AIA versions of the charts do not address the transition cases in which pre-AIA 35 U.S.C. 102(g) applies to applications subject to AIA 35 U.S.C. 102 and 103. See MPEP § 2159.03 to determine if an application is a transition application. Examiners should consult with a Technology Center Practice Specialist if an application is a transition application and the examiner finds potential pre-AIA 35 U.S.C. 102(g) issues.
Finally, the AIA versions of the charts also do not address rejections under 35 U.S.C. 101 and 115 for
improper naming of inventor. Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent laws still require the naming of the actual inventor or joint inventors of the claimed subject matter. See 35 U.S.C. 115(a). In the rare situation where there is evidence on the record that the application does not name the correct inventorship, examiners should consult MPEP § 706.03(a), subsection IV., to determine if a rejection under 35 U.S.C. 101 and 115 should be made.
See MPEP § 2258 for information pertaining to double patenting rejections in reexamination proceedings.
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I. INSTANCES WHERE DOUBLE PATENTING ISSUE CAN BE RAISED
A double patenting issue may arise between two or more pending applications, or between one or more pending applications and a patent. A double patenting issue may likewise arise in a reexamination proceeding between the patent claims being reexamined and the claims of one or more applications and/or patents. Double patenting does not relate to international applications which have not yet entered the national stage in the United States.
A. Between Issued Patent and One or More Applications
Double patenting may exist between an issued patent and an application filed by the same inventive entity, a different inventive entity having a common inventor, a common applicant, and/or a common owner/assignee. See In re Hubbell, 709 F.3d 1140, 1146-47, 106 USPQ2d 1032, 1037-38 (Fed. Cir. 2013)(in the context of an application and a patent that had two inventors in common, but different inventive entities and no common owners or assignees, the court held that complete identity of ownership or inventive entities is not a prerequisite to a nonstatutory double patenting rejection). Double patenting may also exist where the inventions claimed in a patent and an application were made as a result of activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3). Since the inventor/applicant/patent owner has already secured the issuance of a first patent, the examiner must determine whether the grant of a second patent would give rise to an unjustified extension of the rights granted in the first patent.
B. Between Copending Applications—Provisional Rejections
Occasionally, the examiner becomes aware of two copending applications that were filed by the same inventive entity, a different inventive entities having a common inventor, a common applicant, and/or a common owner/assignee, or that claim an invention resulting from activities undertaken within the scope
of a joint research agreement as defined in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3), that would raise an issue of double patenting if one of the applications became a patent. Where this issue can be addressed without violating the confidential status of applications (35 U.S.C. 122), the courts have sanctioned the practice of making applicant aware of the potential double patenting problem if one of the applications became a patent by permitting the examiner to make a “provisional” rejection on the ground of double patenting. In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976); In re Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966). The merits of such a provisional rejection can be addressed by both the applicant and the examiner without waiting for the first patent to issue.
The “provisional” double patenting rejection should continue to be made by the examiner in each application as long as there are conflicting claims in more than one application except as noted below.
1. Provisional Nonstatutory Double Patenting Rejections
A complete response to a nonstatutory double patenting rejection (also called an “obviousness-type” or ODP rejection) is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
If a “provisional” nonstatutory double patenting rejection is the only rejection remaining in an application having the earliest effective U.S. filing date (including any benefit claimed under 35 U.S.C. 120, 121, 365(c), or 386(c)) compared to the reference application(s), the examiner should withdraw the rejection in the application having the earliest effective U.S. filing date and permit that application to issue as a patent, thereby converting the “provisional” nonstatutory double patenting rejection in the other application(s) into a nonstatutory double patenting rejection when the
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application with the earliest U.S. effective filing date issues as a patent.
Where there are two applications with conflicting claims, a terminal disclaimer need not be filed in the application with the earliest effective U.S. filing date, i.e., the "earlier-filed application," which is identified as follows:
(A) Where there is no benefit claim in the two applications, the earlier-filed application is the one having the earlier actual filing date;
(B)(1) Where at least one of the two applications is entitled to the benefit of a U.S. nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the earlier-filed application is the one having the earliest date to which it is entitled benefit under 35 U.S.C. 120, 121, 365(c), and/or 386(c).
(2) Where two applications are entitled to the benefit of the same U.S. nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), if all the conflicting claims of one of the applications are not appropriately supported in the parent application (and therefore, not entitled to the benefit of the filing date of the parent application), while the conflicting claims of the other application are appropriately supported in the parent application (and therefore, entitled to the benefit of the filing date of the parent application), then the other application is the earlier-filed application. If none of the conflicting claims of either application are appropriately supported in the parent application, then the actual filing dates of the two applications govern.
(C) A 35 U.S.C. 119(e) benefit claim is NOT taken into account in determining which is the earlier-filed application.
(D) A foreign priority claim under 35 U.S.C. 119(a) is NOT taken into account in determining which is the earlier-filed application.
For items (C) and (D), it is to be noted that the patent term does not begin from the date of the 35 U.S.C. 119 filing. Thus, if patent # 1 has a 35 U.S.C. 119 filing date prior to patent # 2, but has a U.S. application filing date after patent # 2, then patent # 1 will expire later than patent # 2, and patent # 2
will be determined to be the “earlier-filed” application. See 35 U.S.C. 154(a)(2) and (a)(3).
If a “provisional” nonstatutory double patenting rejection is the only rejection remaining in an application, and that application has an effective U.S. filing date (including any benefit claimed under 35 U.S.C. 120, 121, 365(c), or 386(c)) that is later than, or the same as, the effective U.S. filing date of at least one of the reference application(s), the rejection should be maintained until applicant overcomes the rejection. In accordance with 37 CFR 1.111(b), applicant’s reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. Alternatively, a reply that includes the filing of a compliant terminal disclaimer in the later-filed application under 37 CFR 1.321 will overcome a nonstatutory double patenting rejection and is a sufficient reply pursuant to 37 CFR 1.111(b). Upon the filing of a compliant terminal disclaimer in a pending application, the nonstatutory double patenting rejection will be withdrawn in that application.
If both applications are filed on the same day, the provisional nonstatutory double patenting rejection made in each of the applications should be maintained until applicant overcomes the rejections by either filing a reply showing that the claims subject to the provisional nonstatutory double patenting rejections are patentably distinct or filing a terminal disclaimer in each of the pending applications.
If both applications are entitled to the benefit of the same U.S. nonprovisional application under 35 U.S.C. 120, 121, or 365(c), and (B)(2) above does not apply, then the provisional nonstatutory double patenting rejection made in each of the applications should be maintained until applicant overcomes the rejections by either filing a reply showing that the claims subject to the provisional nonstatutory double patenting rejections are patentably distinct or filing a terminal disclaimer in each of the pending applications.
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably
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distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Therefore, an application must not be allowed unless the required compliant terminal disclaimer(s) is/are filed and/or the withdrawal of the nonstatutory double patenting rejection(s) is made of record by the examiner. See MPEP § 804.02, subsection VI., for filing terminal disclaimers required to overcome nonstatutory double patenting rejections in applications filed on or after June 8, 1995.
2. Provisional Statutory Double Patenting Rejections (35 U.S.C. 101)
A terminal disclaimer cannot be filed to obviate a statutory double patenting rejection. A statutory double patenting rejection can be overcome by canceling or amending the conflicting claims so they are no longer coextensive in scope. A complete response to a statutory double patenting rejection is either a reply by applicant showing that the claims subject to the rejection are not the same as the reference claims or by amending or canceling the conflicting claims. Such a response is required even when the statutory double patenting rejection is provisional.
If a “provisional” statutory double patenting rejection is the only rejection remaining in an application having the earliest effective U.S. filing date (including any benefit claimed under 35 U.S.C. 120, 121, 365(c), or 386(c)) than the reference application(s), the examiner should withdraw the rejection in the application having the earliest effective U.S. filing date and permit that application to issue as a patent, thereby converting the “provisional” statutory double patenting rejection in the other application(s) into a statutory double patenting rejection when the application with the earliest U.S. effective filing date issues as a patent.
If a “provisional” statutory double patenting rejection is the only rejection remaining in an application, and that application has an effective U.S. filing date (including any benefit claimed under 35 U.S.C. 120,
121, 365(c), or 386(c)) that is later than, or the same as, the effective U.S. filing date of at least one of the reference application(s), the rejection should be maintained until applicant overcomes the rejection. In accordance with 37 CFR 1.111(b), applicant’s reply must present arguments pointing out the specific distinctions believed to render the claims, including any amended or newly presented claims, patentable over any applied references.
C. Between One or More Applications and a Published Application - Provisional Rejections
Double patenting may exist where a published patent application and an application are filed by the same inventive entity, different inventive entities having a common inventor, a common applicant, and/or a common owner/assignee. Double patenting may also exist where a published application and an application claim inventions resulting from activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3). If the published application has not yet issued as a patent, the examiner is permitted to make a “provisional” rejection on the ground of double patenting when the published application has not been abandoned and claims pending therein conflict with claims of the application being examined. See the discussion regarding “provisional” double patenting rejections in subsection B. above.
D. Reexamination Proceedings
A double patenting issue may raise a substantial new question of patentability of a claim of a patent, and thus can be addressed in a reexamination proceeding. In re Lonardo, 119 F.3d 960, 966, 43 USPQ2d 1262, 1266 (Fed. Cir. 1997) (In giving the Director authority under 35 U.S.C. 303(a) in determining the presence of a substantial new question of patentability, “Congress intended that the phrases ‘patents and publications’ and ‘other patents or publications’ in section 303(a) not be limited to prior art patents or printed publications.”) (emphasis added). Accordingly, if the same issue of double patenting was not addressed during original prosecution, it may be considered during reexamination.
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Double patenting may exist where a reference patent or application and the patent under reexamination are filed by inventive entities that have at least one inventor in common, by a common applicant, and/or by a common owner/assignee. Where the patent under reexamination was granted on or after December 10, 2004, double patenting may also exist where the inventions claimed in the reference and reexamination proceeding resulted from activities undertaken within the scope of a joint research agreement pursuant to 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3), as applicable, and if evidence of the joint research agreement has been made of record in the patent being reexamined or in the reexamination proceeding. A double patenting rejection may NOT be made on this basis if the patent under reexamination issued before December 10, 2004. See MPEP § 804.04. The prior art exclusion under 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) cannot be used to overcome a double patenting rejection, whether statutory or nonstatutory. See MPEP §§ 717.02 et seq. and 2154.02(c) for more information on 35 U.S.C. 102(b)(2)(C) and MPEP § 706.02(l) for more information on pre-AIA 35 U.S.C. 103(c). See MPEP § 2258 for more information on making double patenting rejections in reexamination proceedings. Subsection II., below, describes situations wherein a double patenting rejection would be appropriate. In particular, see paragraph II.B. for the analysis required to determine the propriety of a nonstatutory double patenting rejection.
II. REQUIREMENTS OF A DOUBLE PATENTING REJECTION (INCLUDING PROVISIONAL REJECTIONS)
When a double patenting rejection is appropriate, it must be based either on statutory grounds or nonstatutory grounds. The ground of rejection employed depends upon the relationship of the inventions being claimed. Generally, a double patenting rejection is not permitted where the claimed subject matter is presented in a divisional application as a result of a restriction requirement made in a parent application under 35 U.S.C. 121.
Where the claims of an application are the same as those of a first patent, they are barred under 35 U.S.C. 101 - the statutory basis for a double
patenting rejection. A rejection based on double patenting of the “same invention” finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process ... may obtain a patent therefor ...” (emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
Where the claims of an application are not the “same” as those of a first patent, but the grant of a patent with the claims in the application would unjustly extend the rights granted by the first patent, a double patenting rejection under nonstatutory grounds is proper.
In determining whether a proper basis exists to enter a double patenting rejection, the examiner must determine the following:
(A) Whether a statutory basis exists;
(B) Whether a nonstatutory basis exists; and
(C) Whether a nonstatutory double patenting rejection is prohibited by the third sentence of 35 U.S.C. 121 (see MPEP § 804.01; if such a prohibition applies, a nonstatutory double patenting rejection cannot be made).
Each determination must be made on the basis of all the facts in the application before the examiner. The charts in MPEP § 804 illustrate the methodology of making such a determination.
Domination and double patenting should not be confused. They are two separate issues. One patent or application “dominates” a second patent or application when the first patent or application has a broad or generic claim which fully encompasses or reads on an invention defined in a narrower or more specific claim in another patent or application. Domination by itself, i.e., in the absence of statutory or nonstatutory double patenting grounds, cannot support a double patenting rejection. In re Kaplan, 789 F.2d 1574, 1577-78, 229 USPQ 678, 681 (Fed. Cir. 1986); In re Sarett, 327 F.2d 1005, 1014-15, 140 USPQ 474, 482 (CCPA 1964). However, the presence of domination does not preclude a double
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patenting rejection. See, e.g., In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also AbbVie Inc. v. Kennedy Institute of Rheumatology
Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014).
A. Statutory Double Patenting — 35 U.S.C. 101
In determining whether a statutory basis for a double patenting rejection exists, the question to be asked is: Is the same invention being claimed twice? 35 U.S.C. 101 prevents two patents from issuing on the same invention. “Same invention” means identical subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186 (1984); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A reliable test for double patenting under 35 U.S.C. 101 is whether a claim in the application could be literally infringed without literally infringing a corresponding claim in the patent. In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970). Is there an embodiment of the invention that falls within the scope of one claim, but not the other? If there is such an embodiment, then identical subject matter is not defined by both claims and statutory double patenting would not exist. For example, the invention defined by a claim reciting a compound having a “halogen” substituent is not identical to or substantively the same as a claim reciting the same compound except having a “chlorine” substituent in place of the halogen because “halogen” is broader than “chlorine.” On the other hand, claims may be differently worded and still define the same invention. Thus, a claim reciting a widget having a length of “36 inches” defines the same invention as a claim reciting the same widget having a length of “3 feet.”
If it is determined that the same invention is being claimed twice, 35 U.S.C. 101 precludes the grant of the second patent regardless of the presence or absence of a terminal disclaimer. Id.
Form paragraphs 8.30 and 8.31 (between an issued patent and one or more applications) or 8.32 (provisional rejections) may be used to make statutory double patenting rejections.
¶ 8.30 35 U.S.C. 101, Statutory Basis for Double Patenting “Heading” Only
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Examiner Note:
The above form paragraph must be used as a heading for all subsequent double patenting rejections of the statutory (same invention) type using either of form paragraphs 8.31 or 8.32.
¶ 8.31 Rejection, 35 U.S.C. 101, Double Patenting
Claim [1] is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of prior U.S. Patent No. [3]. This is a statutory double patenting rejection.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 8.30 and is used only for double patenting rejections of the same invention claimed in an earlier patent; that is, the “scope” of the inventions claimed is identical.
2. If the claims directed to the same invention are in another copending application, do not use this form paragraph. A provisional double patenting rejection should be made using form paragraph 8.32.
3. Do not use this form paragraph for nonstatutory-type double patenting rejections. If nonstatutory type, use appropriate form paragraphs 8.33 to 8.39.
4. This form paragraph may be used where the patent and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but name at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) for applications examined under pre-AIA (first to invent) law, or
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f. claim patentably indistinct inventions and the claimed invention and the patent were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
5. In bracket 3, insert the number of the patent.
6. For applications being examined under pre-AIA (first to invent) law: If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.
7. If evidence is of record to indicate that the patent is prior art under either pre-AIA 35 U.S.C. 102(f) or (g), a rejection should also be made using form paragraphs 7.15.fti and/or 7.19.fti, if applicable, in addition to this double patenting rejection.
8. For applications being examined under pre-AIA (first to invent) law: If the patent is to a different inventive entity from the application and the effective U.S. filing date of the patent antedates the effective filing date of the application, a rejection under pre-AIA 35 U.S.C. 102(e) should additionally be made using form paragraph 7.15.02.fti.
9. For applications being examined under the first inventor to file (FITF) provisions of the AIA: If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the application no longer contains claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) should also be made if appropriate.
¶ 8.32 Provisional Rejection, 35 U.S.C. 101, Double Patenting
Claim [1] provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of copending Application No. [3] (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 8.30 and is used only for double patenting rejections of the same invention claimed in another copending application; that is, the scope of the claimed inventions is identical.
2. If the claims directed to the same invention are in an issued patent, do not use this paragraph. See form paragraph 8.31.
3. Do not use this paragraph for nonstatutory-type double patenting rejections. See form paragraphs 8.33 to 8.39.
4. This form paragraph may be used where the reference application and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but name at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), for applications examined under pre-AIA (first to invent) law, or
f. claim patentably indistinct inventions and the claimed invention and the reference application were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
5. Form paragraph 8.28.fti or 8.28.aia, as appropriate, should also be used.
6. In bracket 3, insert the number of the reference application.
7. A provisional double patenting rejection should also be made in the reference application.
8. For applications being examined under pre-AIA (first to invent) law: If the reference application is by a different inventive entity and is commonly assigned, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.
9. If evidence is also of record to show that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection should also be made in the reference application using form paragraphs 7.15.fti and/or 7.19.fti, if applicable, in addition to this provisional double patenting rejection.
10. For applications being examined under pre-AIA (first to invent) law: If the applications do not have the same inventive entity and effective U.S. filing date, a provisional pre-AIA 35 U.S.C. 102(e) rejection should additionally be made in the later-filed application using form paragraph 7.15.01.fti. If the earlier-filed application has been published, use form paragraph 7.15.02.fti instead.
11. For applications being examined under first inventor to file (FITF) provisions of the AIA: If the reference application is to a different inventive entity and is commonly assigned with the instant application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the applications no longer contain claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) should also be made if appropriate.
If the “same invention” is not being claimed twice, an analysis must be made to determine whether a nonstatutory basis for double patenting exists.
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B. Nonstatutory Double Patenting
A rejection based on nonstatutory double patenting is based on a judicially created doctrine grounded in public policy so as to prevent the unjustified or improper timewise extension of the right to exclude granted by a patent. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969); In re White, 405 F.2d 904, 160 USPQ 417 (CCPA 1969); In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); In re Sarett, 327 F.2d 1005, 140 USPQ 474 (CCPA 1964). A double patenting rejection also serves public policy interests by preventing the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982).
A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985). In determining whether a nonstatutory basis exists for a double patenting rejection, the first question to be asked is: is any invention claimed in the application anticipated by, or an obvious variation of, an invention claimed in the patent? If the answer is yes, then a nonstatutory double patenting rejection may be appropriate. Nonstatutory double patenting requires rejection of an application claim when the claimed subject matter is not patentably distinct from the subject matter claimed in a commonly owned patent, or a non-commonly owned patent but subject to a joint research agreement as set forth in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3), when the issuance of a second patent would provide unjustified extension of the term of the right to exclude granted
by a patent. See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 58 USPQ2d 1869 (Fed. Cir. 2001); Ex parte Davis, 56 USPQ2d 1434, 1435-36 (Bd.
Pat. App. & Inter. 2000).
1. Anticipation Analysis
A nonstatutory double patenting rejection is appropriate where a claim in an application under examination claims subject matter that is different, but not patentably distinct, from the subject matter claimed in a prior patent or a copending application. The claim under examination is not patentably distinct from the reference claim(s) if the claim under examination is anticipated by the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 1052, 29 USPQ2d 2010, 2015-16 (Fed. Cir. 1993). This type of nonstatutory double patenting situation arises when the claim being examined is, for example, generic to a species or sub-genus claimed in a conflicting patent or application, i.e., the entire scope of the reference claim falls within the scope of the examined claim. In such a situation, a later patent to a genus would, necessarily, extend the right to exclude granted by an earlier patent directed to a species or sub-genus. In this type of nonstatutory double patenting situation, an obviousness analysis is not required for the nonstatutory double patenting rejection. The nonstatutory double patenting rejection in this case should explain the fact that the species or sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus.
The analysis required is different in situations where the claim in the application being examined (1) is directed to a species or sub-genus covered by a generic claim in a potentially conflicting patent or application, or (2) overlaps in scope with a claim in a potentially conflicting patent or application but the potentially conflicting claims cannot be said to anticipate the examined claims. Both of these situations require an obviousness analysis unless one of ordinary skill in the art would, on reading the potentially conflicting patent or application, at once
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envisage the invention claimed in the examined application. See AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014). For example, in the genus-species situation, the examiner typically should explain why it would have been obvious to select the claimed species or sub-genus given the genus claimed in the potentially conflicting patent or application. See MPEP § 2131.02 and MPEP § 2144.08 for discussions of genus-species situations with respect to anticipation and obviousness, respectively. Note that the genus-species and overlapping subject matter scenarios discussed in this paragraph may result in nonstatutory double-patenting rejections based on the principle against unjustified timewise extension of patent rights, discussed below in paragraph II.B.3.
2. Obviousness Analysis
A nonstatutory double patenting rejection, if not based on an anticipation rationale or an “unjustified timewise extension” rationale, is “analogous to [a failure to meet] the nonobviousness requirement of 35 U.S.C. 103” except that the patent disclosure principally underlying the double patenting rejection is not considered prior art. In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967). Even though the specification of the applied patent or copending application is not technically considered to be prior art, it may still be used to interpret the applied claims. See paragraph II.B.2.a, below. The analysis employed with regard to nonstatutory double patenting is “similar to, but not necessarily the same as that undertaken under 35 USC § 103.” In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); see also Geneva Pharmaceuticals, 349 F.3d at 1378 n.1, 68 USPQ2d at 1869 n.1 (Fed. Cir. 2003); In re Basell Poliolefine, 547 F.3d 1371, 1379, 89
USPQ2d 1030, 1036 (Fed. Cir. 2008).
In view of the similarities, the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 should typically be considered when making a nonstatutory double patenting analysis based on “obviousness.” See MPEP § 2141 for
guidelines for determining obviousness. These factual inquiries are summarized as follows:
(A) Determine the scope and content of a patent claim relative to a claim in the application at issue;
(B) Determine the differences between the scope and content of the patent claim as determined in (A) and the claim in the application at issue;
(C) Determine the level of ordinary skill in the pertinent art; and
(D) Evaluate any objective indicia of nonobviousness.
Any nonstatutory double patenting rejection made under the obviousness analysis should make clear:
(A) The differences between the inventions defined by the conflicting claims — a claim in the patent compared to a claim in the application; and
(B) The reasons why a person of ordinary skill in the art would conclude that the invention defined in the claim at issue would have been an obvious variation of the invention defined in a claim in the patent.
(a) Construing the Claim Using the Reference Patent or Application Disclosure
When considering whether the invention defined in a claim of an application would have been an obvious variation of the invention defined in the claim of a patent or copending application, the disclosure of the patent may not be used as prior art. General Foods Corp. v. Studiengesellschaft Kohle
mbH, 972 F.2d 1272, 1279, 23 USPQ2d 1839, 1846 (Fed. Cir. 1992). This does not mean that one is precluded from all use of the reference patent or application disclosure.
The specification can be used as a dictionary to learn the meaning of a term in the claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999)(“[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning.”); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) (“Where there are several common meanings for a claim term, the
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patent disclosure serves to point away from the improper meanings and toward the proper meanings.”). “The Patent and Trademark Office (‘PTO’) determines the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ ” Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); see also MPEP § 2111.01. Further, those portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application (as distinguished from an obvious variation of the subject matter disclosed in the reference patent or application). In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized “that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,” but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent or application which provides support for the claim. According to the court, one must first “determine how much of the patent disclosure pertains to the invention claimed in the patent” because only “[t]his portion of the specification supports the patent claims and may be considered.” The court pointed out that “this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined.” In AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014), the court explained that it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003).
To avoid improper reliance on the disclosure of a reference patent or copending application as prior art in the context of a nonstatutory double patenting analysis, the examiner must properly construe the scope of the reference claims. The portion of the reference disclosure that describes subject matter that falls within the scope of a reference claim may be relied upon to properly construe the scope of that claim. However, subject matter disclosed in the reference patent or application that does not fall within the scope of a reference claim cannot be used to construe the claim in the context of a nonstatutory double patenting analysis as this would effectively be treating the disclosure as prior art.
Relying on the disclosure to construe the reference claims does not complete the nonstatutory double patenting analysis. It merely provides a determination as to how the earlier issued claim should be construed in making a nonstatutory double patenting rejection. To do a full analysis to determine whether a nonstatutory double patenting rejection should be made, one must go through the “anticipation analysis” and “obviousness analysis” noted above, and consider the “nonstatutory double patenting rejection based on equitable principles” discussed in subsection II.B.3 below.
In analyzing the disclosure of the reference patent or application, a determination is made as to whether a portion of the disclosure is directed to subject matter that is encompassed by the scope of a reference claim. For example, assume that the claim in a reference patent is directed to a genus of compounds, and the application being examined is directed to a species within the reference patent genus. If the reference patent includes a disclosure of several species within the scope of the reference genus claim, that portion of the disclosure should be analyzed to determine whether the reference patent claim, as properly construed in light of that disclosure, anticipates or renders obvious the claim in the application being examined. Because that portion of the disclosure of the reference patent is an embodiment of the reference patent claim, it may be helpful in determining obvious variations of the reference patent claim. As an alternative example, assume that the claim in the reference patent is directed to a genus of compounds, and the application being examined is directed to a method
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of making compounds within the genus. Further assume that the reference patent discloses a nearly identical method of making compounds within the genus. Here, the disclosed method of making the compounds in the reference patent does not fall within the scope of the genus of compounds claimed in the reference. Thus the reference disclosure directed to the method of making the compounds cannot be used to construe the claim to the genus of compounds in the context of a nonstatutory double patenting analysis. This would effectively result in treating the reference disclosure as prior art. Nevertheless, there may be cases in which permitting claims to a method of making a compound could essentially result in an unjustified timewise extension of the period of exclusivity for the compound itself. In such cases, the “Nonstatutory Double Patenting Rejection Based on Equitable Principles” discussed in paragraph II.B.3 below should be considered. Cf. Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003) (rejecting claims to methods of use over claims to compound based on unjustified timewise extension rationale).
The result in In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968) is consistent with the analysis set forth above. In Schneller, the examined claims were directed to a clip comprising ABCY and a clip comprising ABCXY; the reference patent claimed a clip comprising ABCX and disclosed an embodiment of a clip having ABCXY. The ABCXY clip disclosed in the reference patent falls within the scope of the reference patent claim to a clip “comprising ABCX.” Thus the disclosed embodiment of ABCXY may be relied upon to properly construe the scope of the reference claim and determine the propriety of a nonstatutory double patenting rejection against the examined claim. However, nonstatutory double patenting rejections based on Schneller will be rare. The Technology Center (TC) Director must approve any nonstatutory double patenting rejections based on Schneller. If an examiner determines that a double patenting rejection based on Schneller is appropriate in his or her application, the examiner should first consult with his or her supervisory patent examiner (SPE). If the SPE agrees with the examiner then approval of the TC Director must be obtained before such a nonstatutory double patenting rejection can be made.
See subsection II.B.3. below for a more detailed discussion.
Each nonstatutory double patenting situation must be decided on its own facts.
(b) One-Way Test for Distinctness
If the application under examination is the later-filed application, or both applications are filed on the same day, only a one-way determination of distinctness is needed in resolving the issue of double patenting, i.e., whether the invention claimed in the application would have been anticipated by, or an obvious variation of, the invention claimed in the patent. See, e.g., In re Berg, 140 F.3d 1438, 46 USPQ2d 1226 (Fed. Cir. 1998) (the court applied a one-way test where both applications were filed the same day). If a claimed invention in the application would have been obvious over a claimed invention in the patent, there would be an unjustified timewise extension of the patent and a nonstatutory double patenting rejection is proper. See MPEP § 804, subsection II.B.2.(a) above.
Similarly, even if the application under examination is the earlier-filed application, only a one-way determination of distinctness is needed to support a double patenting rejection in the absence of a finding: (A) that "the PTO is solely responsible for any delays" in prosecution of the earlier-filed application ( In re Hubbell, 709 F.3d 1140, 1150, 106 USPQ2d 1032, 1039 (Fed. Cir. 2013); and (B) that the applicant could not have filed the conflicting claims in a single (i.e., the earlier-filed) application ( In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986)). In Kaplan, a generic invention (use of solvents) was invented by Kaplan, and a species thereof (i.e., use of a specific combination of solvents) was invented by Kaplan and Walker. Multiple applications were necessary to claim both the broad and narrow inventions because at the time the applications were filed, 35 U.S.C. 116 did not expressly authorize filing a patent application in the name of joint inventors who did not make a contribution to the invention defined in each claim in the patent.). Compare In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998), wherein the genus and species claims could have been filed in the same application.
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Form paragraph 8.33 and the appropriate one of form paragraphs 8.34 - 8.37 may be used to make nonstatutory double patenting rejections based on anticipation or obviousness analyses. See subsection II.B.3, below, and form paragraphs 8.38 and 8.39 if the basis for the nonstatutory double patenting rejection is equitable principles.
¶ 8.33 Basis for Nonstatutory Double Patenting, “Heading” Only
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/ patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal D i s c l a i m e r s , r e f e r t o www.uspto.gov/patents/process/file/efs/guidance/ eTD-info-I.jsp.
Examiner Note:
This form paragraph is to be used as a heading before a nonstatutory double patenting rejection using any of form
paragraphs 8.34 - 8.39. Although nonstatutory double patenting is sometimes called obviousness-type double patenting (“ODP”), an obviousness analysis is required only if the examined application claim(s) is not anticipated by the reference claim(s).
¶ 8.34 Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)
Claim [1] rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of U.S. Patent No. [3]. Although the claims at issue are not identical, they are not patentably distinct from each other because [4].
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
2. This form paragraph is used for nonstatutory double patenting rejections based upon a patent.
3. If the nonstatutory double patenting rejection is based upon another application, do not use this form paragraph. A provisional double patenting rejection should be made using form paragraph 8.33 and either form paragraph 8.35 or 8.37.
4. This form paragraph may be used where the patent and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but name at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103, for applications examined under pre-AIA (first to invent) law, or
f. claim patentably indistinct inventions and the claimed invention and the patent were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
5. In bracket 3, insert the number of the patent.
6. In bracket 4, provide appropriate explanation for anticipation or rationale for obviousness of the claims being rejected over the claims of the cited patent.
7. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the patent is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
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b. the patent has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
8. For applications being examined under pre-AIA (first to invent) law: If the patent is to a different inventive entity and has an earlier effective U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
9. For applications being examined under the first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
¶ 8.35 Provisional Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)
Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because [4].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
2. This form paragraph should be used when the patentably indistinct claims are in another copending application.
3. If the patentably indistinct claims are in a patent, do not use this form paragraph. Use form paragraphs 8.33 and 8.34.
4. This form paragraph may be used where the reference application and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but name at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), for applications examined under pre-AIA (first to invent) law, or
f. claim patentably indistinct inventions and the claimed invention and the reference application were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications
examined under the first inventor to file (FITF) provisions of the AIA.
5. If the reference application is currently commonly assigned but the file does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).
6. In bracket 3, insert the number of the reference application.
7. A provisional nonstatutory double patenting rejection should also be made in the reference application.
8. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the reference application is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
b. the reference application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
9. For applications being examined under pre-AIA (first to invent) law: If the applications have different inventive entities and different U.S. filing dates, and the disclosure of the earlier-filed application may be used to support a rejection of the later-filed application, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) in the later-filed application. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
10. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.
11. For applications being examined under the first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
12. In bracket 4, provide appropriate explanation for anticipation or rationale for obviousness of the claims being rejected over the claims of the cited application.
¶ 8.36 Rejection, Nonstatutory Double Patenting - With Secondary Reference(s)
Claim [1] rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim [2] of U.S. Patent No. [3] in view of [4]. [5]
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
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2. This form paragraph is used for nonstatutory double patenting rejections where the primary reference is a patent that includes claims patentably indistinct from those in the application under examination.
3. If the nonstatutory double patenting rejection is based on another application, do not use this form paragraph. A provisional nonstatutory double patenting rejection should be made using form paragraphs 8.33 and either 8.35 or 8.37.
4. This form paragraph may be used where the patentably indistinct invention is claimed in a patent where the patent and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but have at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), for applications examined under pre-AIA (first to invent) law, or
f. claim patentably indistinct inventions and the claimed invention and the patent were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
5. In bracket 3, insert the number of the primary reference patent.
6. In bracket 4, insert the secondary reference.
7. In bracket 5, insert an explanation of the obviousness analysis.
8. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the primary reference patent is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
b. the primary reference patent has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
9. For applications being examined under pre-AIA (first to invent) law: If the primary reference patent issued to a different inventive entity and has an earlier effective U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
10. For applications being examined under first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
¶ 8.37 Provisional Rejection, Nonstatutory Double Patenting - With Secondary Reference(s)
Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] in view of [4]. [5]
This is a provisional nonstatutory double patenting rejection.
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
2. This form paragraph is used for nonstatutory double patenting rejections requiring an obviousness analysis where the primary reference is a copending application.
3. If the patentably indistinct claims are in a patent, do not use this form paragraph, use form paragraph 8.36.
4. This form paragraph may be used where the patentably indistinct claims are in a copending application where the copending application and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but name at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), for applications examined under pre-AIA (first to invent) law, or
f. claim patentably indistinct inventions and the claimed invention and the primary reference application were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
5. If the application under examination and primary reference application are currently commonly assigned but the application under examination does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to also resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).
6. For applications being examined under first inventor to file (FITF) provisions of the AIA: If the primary reference application is to a different inventive entity and is commonly assigned with the application under examination, form paragraph
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8.28.aia should additionally be used if there is no evidence of common ownership as of the effective filing date of the invention claimed in the examined application. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
7. In bracket 3, insert the number of the primary reference application.
8. In bracket 4, insert the secondary reference.
9. In bracket 5, insert an explanation of the obviousness analysis.
10. A provisional nonstatutory double patenting rejection should also be made in the primary reference application.
11. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the primary reference application is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti) ; and
b. the primary reference application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
12. For applications being examined under pre-AIA (first to invent) law: If the disclosure of one application may be used to support a rejection of the other and the applications have different inventive entities and different U.S. filing dates, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) in the application with the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the primary reference application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
13. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.
(c) Two-Way Test for Distinctness
If the patent is the later-filed application, the question of whether the timewise extension of the right to exclude granted by a patent is justified or unjustified must be addressed. A two-way test is to be applied only when the applicant could not have filed the claims in a single application and the Office is solely responsible for any delays. In re Berg, 46 USPQ2d 1226 (Fed. Cir. 1998) (“The two-way exception can only apply when the applicant could not avoid separate filings, and even then, only if the PTO controlled the rates of prosecution to cause the later filed species claims to issue before the claims
for a genus in an earlier application . . . In Berg’s case, the two applications could have been filed as one, so it is irrelevant to our disposition who actually controlled the respective rates of prosecution.”); In re Hubbell, 709 F.3d 1140, 106 USPQ2d 1032 (Fed. Cir. 2013)("[P]rosecution choices resulted in the foreseeable consequence that the 685 patent issued before the application claims on appeal. Given these circumstances, and because it is undisputed that the PTO was not solely responsible for the delay, Hubbell is not entitled to a two-way obviousness analysis." 709 F.3d at 1150, 106 USPQ2d at 1039.); see also In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993) (applicant’s voluntary decision to obtain early issuance of claims directed to a species and to pursue prosecution of previously rejected genus claims in a continuation is a considered election to postpone by the applicant and not administrative delay). Unless the record clearly shows administrative delay caused solely by the Office and that applicant could not have avoided filing separate applications, the examiner may use the one-way distinctness determination and shift the burden to applicant to show why a two-way distinctness determination is required.
When making a two-way distinctness determination, where appropriate, it is necessary to apply the obviousness analysis twice, first analyzing the obviousness of the application claims in view of the patent claims, and then analyzing the obviousness of the patent claims in view of the application claims. Where a two-way distinctness determination is required, a nonstatutory double patenting rejection based on obviousness is appropriate only where each analysis leads to a conclusion that the claimed invention is an obvious variation of the invention claimed in the other application/patent. If either analysis does not lead to a conclusion of obviousness, no double patenting rejection of the obviousness-type is made, but this does not necessarily preclude a nonstatutory double patenting rejection based on equitable principles. In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).
Although a delay in the processing of applications before the Office that causes patents to issue in an order different from the order in which the applications were filed is a factor to be considered
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in determining whether a one-way or two-way distinctness determination is necessary to support a double patenting rejection, it may be very difficult to assess whether the administrative process is solely responsible for a delay in the issuance of a patent. On the one hand, it is applicant who presents claims for examination and pays the issue fee. On the other hand, the resolution of legitimate differences of opinion that must be resolved in an appeal process or the time spent in an interference proceeding can significantly delay the issuance of a patent. Nevertheless, the reasons for the delay in issuing a patent have been considered in assessing the propriety of a double patenting rejection. Thus, in Pierce v. Allen B. DuMont Laboratories, Inc., 297 F.2d 323, 131 USPQ 340 (3d. Cir. 1961), the court found that administrative delay may justify the extension of patent rights beyond 17 years but “a considered election to postpone acquisition of the broader [patent after the issuance of the later filed application] should not be tolerated.” In Pierce, the patentee elected to participate in an interference proceeding [after all claims in the application had been determined to be patentable] whereby the issuance of the broader patent was delayed by more than 7 years after the issuance of the narrower patent. The court determined that the second issued patent was invalid on the ground of double patenting. Similarly, in In re Emert, 124 F.3d 1458, 44 USPQ2d 1149 (Fed. Cir. 1997), the court found that the one-way test is appropriate where applicants, rather than the Office, had significant control over the rate of prosecution of the application at issue. In support of its finding that the applicants were responsible for delaying prosecution of the application during the critical period, the court noted that the applicants had requested and received numerous time extensions in various filings. More importantly, the court noted, after initially receiving an obviousness rejection of all claims, applicants had waited the maximum period to reply (6 months), then abandoned the application in favor of a substantially identical continuation application, then received another obviousness rejection of all claims, again waited the maximum period to reply, and then again abandoned the application in favor of a second continuation application substantially identical to the original filing. On the other hand, in General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 23 USPQ2d 1839 (Fed. Cir. 1992), the
court did not hold the patentee accountable for a delay in issuing the first-filed application until after the second-filed application issued as a patent, even where the patentee had intentionally refiled the first-filed application as a continuation-in-part after receiving a Notice of Allowance indicating that all claims presented were patentable. Where, through no fault of the applicant, the claims in a later-filed application issue first, an obvious-type double patenting rejection is improper, in the absence of a two-way distinctness determination, because the applicant does not have complete control over the rate of progress of a patent application through the Office. In re Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 1991). While acknowledging that allowance of the claims in the earlier-filed application would result in the timewise extension of an invention claimed in the patent, the court in
Braat was of the view that the extension was justified under the circumstances, indicating that a double patenting rejection would be proper only if the claimed inventions were obvious over each other — a two-way distinctness determination.
See, however, In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998), wherein the claims at issue could have been filed in the same application. The Berg court explained, “Braat was an unusual case; moreover, its factual situation is not likely to be repeated since the 1984 Act [amending 35 U.S.C. 116, and permitting joint inventorship even though not all inventors contributed to each claim] went into effect.” 140 F.3d at 1433-34, 46 USPQ2d at 1230.
Form paragraph 8.33 and the appropriate one of form paragraphs 8.34-8.37 may be used to make nonstatutory double patenting rejections based on anticipation or obviousness analyses. See MPEP § 804, paragraph II.B.2.(b), above. See paragraph II.B.3, below, and form paragraphs 8.38 and 8.39 if the basis for the nonstatutory double patenting rejection is equitable principles.
3. Nonstatutory Double Patenting Rejection Based on Equitable Principles
In some circumstances a nonstatutory double patenting rejection is applicable based on equitable principles. Occasionally the fundamental reason for
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nonstatutory double patenting – to prevent unjustified timewise extension of patent rights – is itself enforceable no matter how the extension is brought about. Examples of this occurred in In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); and Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003).
In In re Schneller, 397 F.2d 350, 158 USPQ 210, 216 (CCPA 1968), the court affirmed a double patenting rejection after summing up the situation as follows:
[I]n appellant’s own terms: The combination ABC was old. He made two improvements on it, (1) adding X and (2) addingY, the result still being a unitary clip of enhanced utility. While his invention can be practiced in the forms ABCX or ABCY, the greatest advantage and best mode of practicing the invention as disclosed is obtained by using both inventions in the combination ABCXY. His first application disclosed ABCXY and other matters. He obtained a patent claiming [a clip comprising] BCX and ABCX, . . . so claiming these combinations as to cover them no matter what other feature is incorporated in them, thus covering effectively ABCXY. He now, many
years later, seeks more claims directed to ABCY and ABCXY. Thus, protection he already had would be extended, albeit in somewhat different form, for several years beyond the expiration of his patent, were we to reverse.
397 F.2d at 355-56, 158 USPQ at 216 (emphasis in original).
The court recognized that “there is no double patenting in the sense of claiming the same invention because ABCX and ABCY are, in the technical patent law sense, different inventions. The rule against ‘double patenting,’ however, is not so circumscribed. The fundamental reason for the rule is to prevent unjustified timewise extension of the right to exclude granted by a patent no matter how the extension is brought about. To . . . prevail here,
appellant has the burden of establishing that the invention claimed in his patent is ‘independent and distinct’ from the invention of the appealed claims…. [A]ppellant has clearly not established the independent and distinct character of the inventions of the appealed claims.” 397 F.2d at 354-55, 158 USPQ at 214-15 (emphasis in original). The court observed:
The controlling fact is that patent protection for the clips, fully disclosed in and covered by the claims of the patent, would be extended by allowance of the appealed claims. Under the circumstance of the instant case, wherein we find no valid excuse or mitigating circumstances making it either reasonable or equitable to make an exception, and wherein there is no terminal disclaimer, the rule against “double patenting” must be applied.
397 F.2d at 355, 158 USPQ at 215.
The decision in In re Schneller did not establish a rule of general application and thus is limited to the particular set of facts set forth in that decision. The court in Schneller cautioned “against the tendency to freeze into rules of general application what, at best, are statements applicable to particular fact situations.” Schneller, 397 F.2d at 355, 158 USPQ at 215. Nonstatutory double patenting rejections based on Schneller will be rare. The Technology Center (TC) Director must approve any nonstatutory double patenting rejections based on Schneller. If an examiner determines that a double patenting rejection based on Schneller is appropriate in his or her application, the examiner should first consult with his or her supervisory patent examiner (SPE). If the SPE agrees with the examiner then approval of the TC Director must be obtained before such a nonstatutory double patenting rejection can be made.
A fact situation similar to that in Schneller was presented to a Federal Circuit panel in In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986). Kaplan had been issued a patent on a process of making chemicals in the presence of an organic solvent. Among the organic solvents disclosed and claimed as being useful were tetraglyme and sulfolane. One unclaimed example in the patent was
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specifically directed to a mixture of these two solvents. The claims in the application to Kaplan and Walker, the application before the Office, were directed to essentially the same chemical process, but requiring the use of the solvent mixture of tetraglyme and sulfolane. In reversing the double patenting rejection, the court stated that the mere fact that the broad process claim of the patent requiring an organic solvent reads on or “dominates” the narrower claim directed to basically the same process using a specific solvent mixture does not, per se, justify a double patenting rejection. The court also pointed out that the double patenting rejection improperly used the disclosure of the joint invention (solvent mixture) in the Kaplan patent specification as though it were prior art.
A significant factor in the Kaplan case was that the broad invention was invented by Kaplan, and the narrow invention (i.e., using a specific combination of solvents) was invented by Kaplan and Walker. Since these applications (as the applications in
Braat) were filed before the Patent Law Amendments Act of 1984 (Public Law 98-622, November 8, 1984) amending 35 U.S.C. 116 to expressly authorize filing a patent application in the names of joint inventors who did not necessarily make a contribution to the invention defined in each claim in the patent, it was necessary to file multiple applications to claim both the broad and narrow inventions. Accordingly, there was a valid reason, driven by statute, why the claims to the specific solvent mixture were not presented for examination in the Kaplan patent application.
More recently, in Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003), the court applied nonstatutory double patenting to invalidate a claim without analyzing anticipation or obviousness. In this case, the earlier patent claimed a compound and the written description disclosed a single utility of that compound as administration to a human in amounts effective for inhibiting ß-lactamase. The later patent claimed nothing more than the earlier patent’s disclosed utility as a method of using the compound. Thus, the court found that the claims of the later patent and the claims of the earlier patent were not patentably distinct. The Geneva court relied on equitable principles, not an
obviousness-type analysis, in reaching its conclusion. Id. at 1386, 68 USPQ2d at 1875 (quoting In re
Byck, 48 F.2d 665, 666 (CCPA 1931)).
Each double patenting situation must be decided on its own facts.
Form paragraph 8.38 (between an issued patent and one or more applications) or 8.39 (provisional rejection) may be used to make this type of nonstatutory double patenting rejection.
¶ 8.38 Double Patenting - Nonstatutory (Based Solely on Improper Timewise Extension of Patent Rights) With a Patent
Claim [1] rejected on the ground of nonstatutory double patenting over claim [2] of U.S. Patent No. [3] since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: [4]
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
2. This form paragraph should only be used where approval from the TC Director to make a nonstatutory double patenting rejection based on In re Schneller has been obtained.
3. Use this form paragraph only when the subject matter of the claim(s) is fully disclosed in, and covered by at least one claim of, an issued U.S. Patent which is commonly owned or where there is at least one joint inventor in common or a common applicant (35 U.S.C. 118).
4. In bracket 3, insert the number of the patent.
5. In bracket 4, insert a description of the subject matter being claimed which is covered in the patent.
6. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the patent is also prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
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b. the patent has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
7. For applications being examined under pre-AIA (first to invent) law: If the patent is to another inventive entity and has an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
8. For applications being examined under first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
¶ 8.39 Double Patenting - Nonstatutory (Based Solely on Improper Timewise Extension of Patent Rights) With Another Application
Claim [1] provisionally rejected on the ground of nonstatutory double patenting over claim [2] of copending Application No. [3]. This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.
The subject matter claimed in the instant application is fully disclosed in the referenced copending application and would be covered by any patent granted on that copending application since the referenced copending application and the instant application are claiming common subject matter, as follows: [4]
Furthermore, there is no apparent reason why applicant would be prevented from presenting claims corresponding to those of the instant application in the other copending application. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).
See also MPEP § 804.
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
2. This form paragraph should only be used where approval from the TC Director to make a nonstatutory double patenting rejection based on In re Schneller has been obtained.
3. Use this form paragraph only when the subject matter of the claim(s) is fully disclosed in, and covered by at least one claim of, another copending application (reference application) which is commonly owned, or where there is at least one joint inventor in common or a common applicant (35 U.S.C. 118).
4. In bracket 3, insert the number of the reference application.
5. In bracket 4, insert a description of the subject matter being claimed which is covered in the reference application.
6. If the reference application is currently commonly assigned but the prosecution file of the application under examination does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph
to resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).
7. For applications being examined under first inventor to file (FITF) provisions of the AIA: If the reference application is to a different inventive entity and is commonly assigned with the application under examination, form paragraph 8.28.aia should additionally be used if there is no evidence of common ownership as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
8. A provisional double patenting rejection should also be made in the reference application.
9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the reference application is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
b. the reference application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
10. For applications being examined under pre-AIA (first to invent) law: If the disclosure of one application may be used to support a rejection of the other and the applications have different inventive entities and different U.S. filing dates, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) in the application with the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the reference application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
11. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.
4. Design/Plant — Utility Situations
Double patenting issues may be raised where an applicant has filed both a utility patent application (35 U.S.C. 111) and either an application for a plant patent (35 U.S.C. 161) or an application for a design patent (35 U.S.C. 171). In general, the same double patenting principles and criteria that are applied in utility-utility situations are applied to utility-plant or utility-design situations. Double patenting rejections in utility-plant situations may be made in appropriate circumstances.
Although double patenting is rare in the context of utility versus design patents, a double patenting
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rejection of a pending design or utility application can be made on the basis of a previously issued utility or design patent, respectively. Carman Indus. Inc. v. Wahl, 724 F.2d 932, 220 USPQ 481 (Fed. Cir. 1983). The rejection is based on the public policy preventing the extension of the term of a patent. Double patenting may be found in a design-utility situation irrespective of whether the claims in the reference patent/application and the claims in the application under examination are directed to the same invention, or whether they are directed to inventions which are obvious variations of one another. In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
In Carman Indus., the court held that no double patenting existed between a design and utility patent since the claims in the utility patent, drawn to the interior construction of a flow promoter, were not directed to the same invention or an obvious variation of the invention claimed in a design patent directed to the visible external surface configuration of a storage bin flow promoter. The majority opinion in this decision appears to indicate that a two-way distinctness determination is necessary in design-utility cases. 724 F.2d at 940-41, 220 USPQ at 487-88.
In Thorington, the court affirmed a double patenting rejection of claims for a fluorescent light bulb in a utility patent application in view of a previously issued design patent for the same bulb. In another case, a double patenting rejection of utility claims for a finger ring was affirmed in view of an earlier issued design patent, where the drawing in both the design patent and the utility application illustrated the same article. In re Phelan, 205 F.2d 183, 98 USPQ 156 (CCPA 1953). A double patenting rejection of a design claim for a flashlight cap and hanger ring was affirmed over an earlier issued utility patent. In re Barber, 81 F.2d 231, 28 USPQ 187 (CCPA 1936). A double patenting rejection of claims in a utility patent application directed to a balloon tire construction was affirmed over an earlier issued design patent. In re Hargraves, 53 F.2d 900, 11 USPQ 240 (CCPA 1931).
III. CONTRAST BETWEEN DOUBLE PATENTING REJECTION AND REJECTIONS BASED ON PRIOR ART
Rejections over a patent or another copending application based on double patenting or under 35 U.S.C. 102 or 103 are similar in the sense that both require comparison of the claimed subject matter with at least part of the content of another patent or application, and both may require that an anticipation or obviousness analysis be made. However, there are significant differences between a rejection based on double patenting and one based on prior art under 35 U.S.C. 102 or 103. “[O]bvious-type double patenting and [pre-AIA] §102(e)/§103 rejections may be analogous in the sense that an obviousness analysis is performed in both cases, but they are not analogous in terms of what is analyzed.” In re Bartfeld, 925 F.2d 1450, 1453, 17 USPQ2d 1885, 1888 (Fed. Cir. 1991).
One significant difference is that a double patenting rejection must rely on a comparison with the claims in an issued patent or pending application, whereas an anticipation or obviousness rejection based on the same patent or application under 35 U.S.C. 102 or 103 relies on a comparison with what is disclosed (whether or not claimed) in the same issued patent or pending application. In a 35 U.S.C. 102 or 103 rejection over a prior art patent, the reference patent is available for all that it fairly discloses to one of ordinary skill in the art, regardless of what is claimed. In re Heck, 699 F.2d 1331, 216 USPQ 1038 (Fed. Cir. 1983).
A second significant difference is that a terminal disclaimer cannot be used to obviate a rejection based on prior art under 35 U.S.C. 102 or 103 prior art, even though it may overcome a nonstatutory double patenting rejection. In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). The purpose of a terminal disclaimer is to obviate a nonstatutory double patenting rejection by removing the potential harm to the public by issuing a second patent, and not to remove a patent as prior art. See, for example, Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344, 86 USPQ2d 1110, 1115 (Fed. Cir. 2008).
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IV. DOUBLE PATENTING REJECTIONS AND PRIOR ART EXCLUSION UNDER PRE-AIA 35 U.S.C. 103(c)
For pre-AIA applications filed on or after November 29, 1999 and for pre-AIA applications pending on or after December 10, 2004, a commonly assigned/owned patent or application may be disqualified as pre-AIA 35 U.S.C. 102(e) prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See pre-AIA 35 U.S.C. 103(c)(1). For pre-AIA applications pending on or after December 10, 2004, a patent or application may be disqualified as pre-AIA 35 U.S.C. 102(e) prior art in a pre-AIA 35 U.S.C. 103(a) rejection if evidence of a joint research agreement pursuant to pre-AIA 35 U.S.C. 103(c)(2) and (3) is made of record in the application (or patent) being examined (or reexamined), and the conflicting claims resulted from a joint research agreement that was in effect on or before the date the later claimed invention was made. See MPEP § 706.02(l) et seq. for more information. The prior art exclusion under pre-AIA 35 U.S.C. 103(c) may also be applicable in post-grant Office proceedings if the application, which matured into the patent under reexamination or review, meets the above-mentioned conditions.
An examiner should make both a pre-AIA 35 U.S.C. 102(e)/103(a) rejection and a double patenting rejection over the same reference when the facts support both rejections. See the charts in MPEP § 804 for an overview of possible rejections based on prior art as well as double patenting. Note that even if an earlier patent or application to another is disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection based on common ownership or a joint research agreement as discussed above, that patent or application is available as prior art under pre-AIA 35 U.S.C. 102(e) and may form the basis of an anticipation rejection. If the examiner makes only one of these rejections when each is separately applicable, and if the next Office action includes the previously omitted rejection, then the next Office action cannot be made final. A prior art reference that anticipates or renders claimed subject matter obvious under pre-AIA 35 U.S.C. 102(e)/103(a) does not support a double patenting rejection where that subject matter is not claimed in the reference patent or application. For pre-AIA applications pending on
or after December 10, 2004, rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(1) for information regarding when prior art is disqualified under pre-AIA 35 U.S.C. 103(c) based on common ownership or as a result of activities undertaken within the scope of a joint research agreement.
As an alternative to invoking the prior art exclusion under pre-AIA 35 U.S.C. 103(c)(1), the assignee could have taken some preemptive measures to avoid having a commonly assigned/owned copending application become prior art under pre-AIA 35 U.S.C. 102(e). The applications could have been filed on the same day, or copending applications could have been merged into a single continuation-in-part application and the parent applications abandoned. If these steps are undesirable or the first patent has issued, the prior art effect of the first patent may be avoided by a showing under 37 CFR 1.132 that any unclaimed invention disclosed in the first patent was derived from the inventor of the application before the examiner in which the pre-AIA 35 U.S.C. 102(e)/103(a) rejection was made. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). See also MPEP § 716.10. It may also be possible for applicant to respond to a pre-AIA 35 U.S.C. 102(e)/103(a) rejection by showing, under 37 CFR 1.131(a), that the date of invention of the claimed subject matter was prior to the effective filing date of the reference patent which has been relied upon for its unclaimed disclosure. See MPEP § 715. See also 37 CFR 1.131(c) and MPEP § 718 for affidavits or declarations to disqualify a commonly owned patent as prior art under pre-AIA 35 U.S.C. 103(c).
V. DOUBLE PATENTING REJECTIONS AND PRIOR ART EXCEPTION UNDER 35 U.S.C. 102(b)(2)(C) and 102(c)
For AIA applications, a commonly assigned/owned patent or application may be excepted as prior art under 35 U.S.C. 102(a)(2). See 35 U.S.C. 102(b)(2)(C). Also, if the requirements of 35 U.S.C. 102(c) are met, common ownership can be established by a joint research agreement. This prior
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art exception also applies in post-grant Office proceedings of patents if the patent under reexamination or review is subject to AIA 35 U.S.C. 102 and 103. See, e.g., MPEP § 2258, subsection I, for more information about which prior art regime applies in an ex parte reexamination. See also MPEP § 717.02 et seq. for more information on the prior art exception for commonly owned or joint research agreement subject matter.
An examiner should make both a prior art rejection under either 35 U.S.C. 102(a)(2) or 103 and a double patenting rejection over the same reference when the facts support both rejections. See the charts in MPEP § 804 for an overview of possible rejections based on prior art as well as double patenting. A prior art reference that anticipates or renders claimed subject matter obvious under 35 U.S.C. 102(a)(2) or 103 does not support a double patenting rejection where that subject matter is not claimed in the reference patent or application. Rejections under 35 U.S.C. 102(a)(2) or 103 should not be made or maintained if the reference is not prior art because of the exception under 35 U.S.C. 102(b)(2)(C). See MPEP § 717.02 et seq. for information regarding when prior art meets the exception under 35 U.S.C. 102(b)(2)(C) and 102(c) based on common ownership or a joint research agreement.
VI. DOUBLE PATENTING REJECTIONS ONCE A JOINT RESEARCH AGREEMENT IS ESTABLISHED
Under both pre-AIA and AIA law, until applicant establishes the existence of a joint research agreement, the examiner cannot apply a double patenting rejection based upon a reference that was made by or on behalf of parties to the joint research agreement. If in reply to an Office action applying a prior art rejection, applicant disqualifies the relied upon reference as prior art under the joint research agreement provision of 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c) and a subsequent nonstatutory double patenting rejection based upon the disqualified reference is applied, the next Office action may be made final even if applicant did not amend the claims (provided the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set
forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new nonstatutory double patenting rejection was necessitated by the applicant’s amendment of the application.
804.01 Prohibition of Nonstatutory Double Patenting Rejections Under 35 U.S.C. 121 [R-07.2015]
35 U.S.C. 121 authorizes the Director to restrict the claims in a patent application to a single invention when independent and distinct inventions are presented for examination. The third sentence of 35 U.S.C. 121 prohibits the use of a patent issuing on an application in which a requirement for restriction has been made, or on an application filed as a result of such a requirement, as a reference against any divisional application in a nonstatutory double patenting rejection, if the divisional application is filed before the issuance of the patent. The 35 U.S.C. 121 prohibition applies only where the Office has made a requirement for restriction. The prohibition does not apply where the divisional application was voluntarily filed by the applicant and not in response to an Office requirement for restriction. The U.S. Court of Appeals for the Federal Circuit has concluded that the protection of 35 U.S.C. 121 does not extend to all types of continuing applications, stating that “the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.” Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-1008 (Fed. Cir. 2008).
This apparent nullification of nonstatutory double patenting as a ground of rejection or invalidity in divisional applications imposes a heavy burden on the Office to guard against erroneous requirements for restrictions where the claims define essentially the same invention in different language and where acquiescence to the restriction requirement might result in the issuance of several patents for the same invention. “[I]f an examiner issues a restriction requirement between patentably indistinct claims, two patents may issue and prolong patent protection beyond the statutory term on obvious variants of the same invention. This prolongation would occur because § 121 would immunize the restricted
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application against nonstatutory double patenting rejections.” Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1379, 68 USPQ2d 1865, 1869 (Fed. Cir. 2003). “[W]hen the existence of multiple patents is due to the administrative requirements imposed by the Patent and Trademark Office, 35 U.S.C. Section 121 provides that the inventor shall not be prejudiced by having complied with those requirements. Thus when two or more patents result from a PTO restriction requirement, whereby aspects of the original application must be divided into separate applications, Section 121 insulates the ensuing patents from the charge of double patenting.” Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 1568, 40 USPQ2d 1481, 1484 (Fed. Cir. 1996) (citing Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 784 F.2d 351, 354, 228 USPQ 837, 840 (Fed. Cir. 1986)).
The prohibition against holdings of nonstatutory double patenting applies to requirements for restriction between independent or distinct inventions, such as the related subject matter treated in MPEP § 806.04 through § 806.05(j), namely, between a combination and a subcombination thereof, between subcombinations disclosed as usable together, between a process and an apparatus for its practice, between a process and a product made by such process and between an apparatus and a product made by such apparatus, etc., so long as the claims in each application are filed as a result of such requirement.
The following are situations where the prohibition against nonstatutory double patenting rejections under 35 U.S.C. 121 does not apply:
(A) The applicant voluntarily files two or more applications without a restriction requirement by the examiner. In order to obtain the benefit of 35 U.S.C. 121, claims must be formally entered, restricted in, and removed from an earlier application before they are filed in a divisional application . Geneva Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1379, 68 USPQ2d 1865, 1870 (Fed. Cir. 2003) (For claims that were not in the original application and are first formally entered in a later divisional application, 35 U.S.C. 121 “does not suggest that the original application merely needs to provide some support for claims that are first entered
formally in the later divisional application.” Id.); In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).
(B) The claims of the application under examination and claims of the other application/patent are not consonant with the restriction requirement made by the examiner, since the claims have been changed in material respects from the claims at the time the requirement was made. For example, the divisional application filed includes additional claims not consonant in scope with the original claims subject to restriction in the parent. Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991); Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683, 16 USPQ2d 1436 (Fed. Cir. 1990). In order for consonance to exist, the line of demarcation between the independent and distinct inventions identified by the examiner in the requirement for restriction must be maintained. 916 F.2d at 688, 16 USPQ2d at 1440.
(C) The restriction requirement was withdrawn because the requirement was written in a manner which made it clear to applicant that the requirement was made subject to the nonallowance of generic or other linking claims and such generic or linking claims are subsequently allowed.
(D) The requirement for restriction (holding of lack of unity of invention) was only made in an international application by the International Searching Authority or the International Preliminary Examining Authority. However, the prohibition against nonstatutory double patenting rejections does apply to requirements for restriction (lack of unity of invention holdings) made in national stage applications submitted under 35 U.S.C. 371.
(E) The requirement for restriction was withdrawn, in its entirety or in part, by the examiner before the patent issues. With the withdrawal of the restriction requirement, the non-elected claims that are no longer withdrawn from consideration become subject to examination. “The restriction requirement disappears; it is as though it had not been made. With the disappearance of the restriction requirement, the need for a divisional application and the need for the [double patenting] prohibition also disappear.” In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 132 (CCPA 1971). Note that a restriction requirement in an earlier-filed application does not
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carry over to claims of a continuation application in which the examiner does not reinstate or refer to the restriction requirement in the parent application. Reliance on a patent issued from such a continuation application to reject claims in a later-filed divisional application is not prohibited under 35 U.S.C. 121. Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004).
(F) The claims of the second application are drawn to the “same invention” as the first application or patent. Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 784 F.2d 351, 228 USPQ 837 (Fed. Cir. 1986). A statutory double patenting rejection under 35 U.S.C. 101 should be made, thus it is not necessary to determine whether the 35 U.S.C. 121 prohibition against making double patenting rejections is applicable. “Same invention” means identical subject matter. See, e.g., Miller v. Eagle Mfg. Co., 151 U.S. 186 (1984); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). The 35 U.S.C. 121 prohibition against certain nonstatutory double patenting rejections does not apply to statutory double patenting rejections under 35 U.S.C. 101 of claims to the “same invention.”
(G) Where a requirement for restriction between a product, a process of making the product, and a process of using the product was made subject to the non-allowance of the product and the product is subsequently allowed. In this situation if any process claims are rejoined, the restriction requirement between the elected product and any rejoined process should be withdrawn in accordance with 37 CFR 1.141(b) and MPEP § 821.04 .
(H) The second application is a continuation-in-part (CIP) application that includes claims restricted from the original application. A CIP, by definition, is an application filed during the lifetime of an earlier application by at least one common inventor that repeats some substantial portion or all of the earlier application and adds matter not disclosed in the earlier application, i.e., the application in which the restriction requirement was originally made. 35 U.S.C. 121 refers specifically and only to divisional and original applications, and does not afford protection to CIP applications. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-08 (Fed. Cir. 2008).
35 U.S.C. 121 does not prevent a double patenting rejection when the identical invention is claimed in the divisional application and the application/patent in which a restriction requirement was made. While identical claims should not arise if appropriate care is exercised in defining the independent and distinct inventions in a restriction requirement, if they do, the Office will make the statutory (35 U.S.C. 101) double patenting rejection because the patentee is entitled only to a single patent for an invention. As expressed in Studiengesellschaft Kohle, 784 F.2d at 361, 228 USPQ at 844, (J. Newman, concurring), “35 U.S.C. 121 of course does not provide that multiple patents may be granted on the identical invention.”
804.02 Avoiding a Double Patenting Rejection [R-07.2015]
I. STATUTORY
A rejection based on the statutory type of double patenting can be avoided by amending the conflicting claims so that they are not coextensive in scope. Where the conflicting claims are in one or more pending applications and a patent, a rejection based on statutory type double patenting can also be avoided by canceling the conflicting claims in all the pending applications. Where the conflicting claims are in two or more pending applications, a provisional rejection based on statutory type double patenting can also be avoided by canceling the conflicting claims in all but one of the pending applications. A terminal disclaimer is not effective in overcoming a statutory double patenting rejection.
The use of a 37 CFR 1.131(a) affidavit in overcoming a statutory double patenting rejection is inappropriate. In re Dunn, 349 F.2d 433, 146 USPQ 479 (CCPA 1965). Knell v. Muller, 174 USPQ 460 (Comm’r. Pat. 1971) (citing the CCPA decisions in In re Ward, 236 F.2d 428, 111 USPQ 101 (CCPA 1956); In re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958); and In re Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962)).
II. NONSTATUTORY
A rejection based on a nonstatutory type of double patenting can be avoided by filing a terminal
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disclaimer in the application or proceeding in which the rejection is made. In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Knohl, 386 F.2d 476, 155 USPQ 586 (CCPA 1967); and In re Griswold, 365 F.2d 834, 150 USPQ 804 (CCPA 1966). The use of a terminal disclaimer in overcoming a nonstatutory double patenting rejection is in the public interest because it encourages the disclosure of additional developments, the earlier filing of applications, and the earlier expiration of patents whereby the inventions covered become freely available to the public. In re Jentoft, 392 F.2d 633, 157 USPQ 363 (CCPA 1968); In re Eckel, 393 F.2d 848, 157 USPQ 415 (CCPA 1968); In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).
The use of a 37 CFR 1.131(a) affidavit in overcoming a double patenting rejection is inappropriate because the claim or claims in the application are being rejected over a patent which claims the rejected invention. In re Dunn, 349 F.2d 433, 146 USPQ 479 (CCPA 1965). 37 CFR 1.131(a) is inapplicable if the claims of the application and the patent are “directed to substantially the same invention.” It is also inapplicable if there is a lack of “patentable distinctness” between the claimed subject matter. Knell v. Muller, 174 USPQ 460 (Comm’r. Pat. 1971) (citing the court decisions in In re Ward, 236 F.2d 428, 111 USPQ 101 (CCPA
1956); In re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958); and In re Hidy, 303 F.2d 954, 133 USPQ 65 (CCPA 1962)).
A patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term of a patent. 35 U.S.C. 253. The statute does not provide for a terminal disclaimer of only a specified claim or claims. The terminal disclaimer must operate with respect to all claims in the patent.
The filing of a terminal disclaimer to obviate a rejection based on nonstatutory double patenting is not an admission of the propriety of the rejection. Quad Environmental Technologies Corp. v. Union
Sanitary District, 946 F.2d 870, 20 USPQ2d 1392 (Fed. Cir. 1991). In Quad Environmental Technologies, The court indicated that the “filing of a terminal disclaimer simply serves the statutory function of removing the rejection of double
patenting, and raises neither a presumption nor estoppel on the merits of the rejection.”
A terminal disclaimer filed to obviate a nonstatutory double patenting rejection is effective only with respect to the application identified in the disclaimer, unless by its terms it extends to continuing applications. If an appropriate “provisional” nonstatutory double patenting rejection is made in each of two or more pending applications, the examiner should follow the practice set forth in MPEP § 804, subsection I.B.1. and subsection VI. below.
35 U.S.C. 101 prevents two patents from issuing on the same invention. “Same invention” means identical subject matter. See, e.g., Miller v. Eagle Mfg. Co., 151 U.S. 186 (1984); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). Claims that differ from each other (aside from minor differences in language, punctuation, etc.), whether or not the difference would have been obvious, are not considered to be drawn to the same invention for double patenting purposes under 35 U.S.C. 101. In cases where the difference in claims would have been obvious, terminal disclaimers are effective to overcome nonstatutory double patenting rejections. Such terminal disclaimers must include a provision that the patent shall be unenforceable if it ceases to be commonly owned or enforced with the other application or patent. Note 37 CFR 1.321(c) and (d). 37 CFR 1.321(d) sets forth the requirements for a terminal disclaimer where the claimed invention resulted from activities undertaken within the scope of a joint research agreement. It should be emphasized that a terminal disclaimer cannot be used to overcome a prior art rejection under 35 U.S.C. 102 or 103.
A nonstatutory double patenting rejection may also be avoided if consonance between the originally restricted inventions is maintained in a divisional application. “Section 121 shields claims against a double patenting challenge if consonance exists between the divided groups of claims and an earlier restriction requirement.” Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1871 (Fed. Cir. 2003). “Consonance requires that the line of demarcation
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between the ‘independent and distinct inventions’ that prompted the restriction requirement be maintained ... Where that line is crossed the prohibition of the third sentence of Section 121 does not apply.” Symbol Techs, Inc. v. Opticon, Inc., 935 F.2d 1569, 1579, 19 USPQ2d 1241, 1249 (Fed. Cir. 1991) (quoting Gerber Garment Technology Inc. v. Lectra Systems Inc., 916 F.2d 683, 688, 16 USPQ2d 1436, 1440 (Fed. Cir. 1990)). “However, even if such consonance is lost, double patenting does not follow if the requirements of Section 121 are met or if the claims are in fact patentably distinct … The purpose of Section 121 is to accommodate administrative convenience and to protect the patentee from technical flaws based on this unappealable examination practice.” Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 1568, 40 USPQ2d 1481, 1484 (Fed. Cir. 1996).
III. TERMINAL DISCLAIMER REQUIRED DESPITE REQUEST TO ISSUE ON COMMON ISSUE DATE
Applicants are cautioned that reliance upon a common issue date cannot effectively substitute for the filing of one or more terminal disclaimers in order to overcome a proper nonstatutory double patenting rejection, particularly since a common issue date alone does not avoid the potential problems of dual ownership by a common assignee, or by parties to a joint research agreement, of patents to patentably indistinct inventions. In any event, the Office cannot ensure that two or more applications will have a common issue date.
IV. DISCLAIMING MULTIPLE DOUBLE PATENTING REFERENCES
If multiple conflicting patents and/or pending applications are applied in nonstatutory double patenting rejections made in a single application, then prior to issuance of that application, it is necessary to disclaim the terminal part of any patent granted on the application which would extend beyond the expiration date of each one of the conflicting patents and/or applications. A terminal disclaimer fee is required for each terminal disclaimer filed. To avoid paying multiple terminal disclaimer fees, a single terminal disclaimer based
on common ownership may be filed, for example, in which the term disclaimed is based on all the conflicting, commonly owned nonstatutory double patenting references. Similarly, a single terminal disclaimer based on a joint research agreement may be filed, in which the term disclaimed is based on all the conflicting nonstatutory double patenting references.
Each one of the commonly owned conflicting nonstatutory double patenting references must be included in the terminal disclaimer to avoid the problem of dual ownership of patents to patentably indistinct inventions in the event that the patent issuing from the application being examined ceases to be commonly owned with any one of the double patenting references that have issued or may issue as a patent. Note that 37 CFR 1.321(c)(3) requires that a terminal disclaimer for commonly owned conflicting claims “[i]nclude a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting.”
Filing a terminal disclaimer including each one of the conflicting nonstatutory double patenting references is also necessary to avoid the problem of separate enforcement of patents to patentably indistinct inventions by parties to a joint research agreement. 37 CFR 1.321(d) sets forth the requirements for a terminal disclaimer where the claimed invention resulted from activities undertaken within the scope of a joint research agreement.
V. REQUIREMENTS OF A TERMINAL DISCLAIMER
A terminal disclaimer is a statement filed by an owner (in whole or in part) of a patent or a patent to be granted that is used to disclaim or dedicate a portion of the entire term of all the claims of a patent. The requirements for a terminal disclaimer are set forth in 37 CFR 1.321. Sample forms of a terminal disclaimer, and guidance as to the filing and treatment of a terminal disclaimer, are provided in MPEP § 1490.
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VI. TERMINAL DISCLAIMERS REQUIRED TO OVERCOME NONSTATUTORY DOUBLE PATENTING REJECTIONS IN APPLICATIONS FILED ON OR AFTER JUNE 8, 1995
Public Law 103-465 (1994) amended 35 U.S.C. 154(a)(2) to provide that any patent issuing on a utility or plant application filed on or after June 8, 1995 will expire 20 years from its filing date, or, if the application claims the benefit of an earlier filed application under 35 U.S.C. 120, 121, 365(c), or 386(c), 20 years from the earliest filing date for which a benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) is claimed. Therefore, any patent issuing on a continuing utility or plant application filed on or after June 8, 1995 will expire 20 years from the earliest filing date for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c), subject to the provisions of 35 U.S.C. 154(b) and 156 (providing for certain patent term adjustments and extensions). Thus, situations will often arise in which two copending applications subject to a provisional double patenting rejection will have the same effective filing date, and thus, potentially will have the same patent term.
There are at least two reasons for insisting upon a terminal disclaimer to overcome a nonstatutory double patenting rejection in an application subject to a 20-year term under 35 U.S.C. 154(a)(2). First, 35 U.S.C. 154(b) includes provisions for patent term adjustment based upon prosecution delays during the application process. Thus, 35 U.S.C. 154 does not ensure that any patent issuing on a continuing utility or plant application filed on or after June 8, 1995 will necessarily expire 20 years from the earliest filing date for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c) , or 386(c). However, 35 U.S.C. 154(b)(2)(B) states that no patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer. As the presence of a terminal disclaimer affects whether the patent is granted an adjustment, it is necessary that the terminal disclaimer be filed in the application in order to accurately determine whether the patent is entitled to a term adjustment. Second, 37 CFR 1.321(c)(3) requires that a terminal disclaimer filed to obviate a nonstatutory double patenting rejection based on commonly owned
conflicting claims include a provision that any patent granted on that application be enforceable only for and during the period that the patent is commonly owned with the application or patent which formed the basis for the rejection. 37 CFR 1.321(d) sets forth the requirements for a terminal disclaimer where the claimed invention resulted from activities undertaken within the scope of a joint research agreement and limits enforcement of the patent to only when the patent and the reference application or patent are not separately enforced. These requirements serve to avoid the potential for harassment of an accused infringer by multiple parties with patents covering the same patentable invention. See, e.g., In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). Not insisting upon a terminal disclaimer to overcome a nonstatutory double patenting rejection in an application subject to a 20-year term under 35 U.S.C. 154(a)(2) would result in the potential for the problem that 37 CFR 1.321(c)(3) was promulgated to avoid. Further, as a terminal disclaimer is only effective in the application in which it is filed, it is necessary to require that the terminal disclaimer be filed in each application and/or patent that is subject to the common ownership requirement in order to provide complete notice to the public of this obligation.
Accordingly, a terminal disclaimer under 37 CFR 1.321 is required in an application to overcome a nonstatutory double patenting rejection, even if the application was filed on or after June 8, 1995 and even if the application claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of the filing date of the patent or application which forms the basis for the rejection. Examiners should respond to arguments that a terminal disclaimer under 37 CFR 1.321 should not be required in a continuing application filed on or after June 8, 1995 to overcome a nonstatutory double patenting rejection due to the change to 35 U.S.C. 154 by citing to this section of the MPEP. See Terminal Disclaimers Required to Overcome Judicially-Created Double Patenting Rejections in Utility and Plant Applications Filed on or After June 8, 1995,1202 OG 112 (September 30, 1997). See also AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014).
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If a terminal disclaimer is filed in an application in which the claims are then canceled or otherwise shown to be patentably distinct from the reference claims, the terminal disclaimer may be withdrawn before issuance of the patent by filing a petition under 37 CFR 1.182 requesting withdrawal of the recorded terminal disclaimer. A terminal disclaimer may not be withdrawn after issuance of the patent. See MPEP § 1490, subsection VII., for a complete discussion of withdrawal of a terminal disclaimer.
804.03 Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement [R-07.2015]
35 U.S.C. 102 Conditions for patentability; novelty.
[ Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See pre AIA 35 U.S.C. 102 for the law otherwise applicable.]
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(b) Exceptions.-
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(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
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(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
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Pre-AIA 35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
[ Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 103 for the law otherwise applicable.]
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(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
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(g) Applications or patents under reexamination naming different inventors and containing patentably indistinct claims. If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain patentably indistinct claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the Office may require the applicant or assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on such date, and if not, indicate which named inventor is the prior inventor, as applicable. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the patentably indistinct claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.
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37 CFR 1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.
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(c) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.
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I. DOUBLE PATENTING
Claims in commonly owned applications of different inventive entities may be rejected on the ground of double patenting. This is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963) (the doctrine is well established that claims in different applications need be more than merely different in form or content and that patentable distinction must exist to entitle applicants to a second patent); see also In re Christensen, 330 F.2d 652, 141 USPQ 295 (CCPA 1964).
Claims may also be rejected on the grounds of nonstatutory double patenting in certain non-commonly owned applications that claim inventions resulting from activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2). This prevents the parties to the joint research agreement from obtaining two or more patents with different expiration dates covering nearly identical subject matter.
Nonstatutory double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the provisions of 37 CFR 1.321(c), the terminal portion of the term of the later patent and including in the disclaimer a provision that the patent shall be enforceable only for and during the period the patent is commonly owned with the application or patent which formed the basis for the rejection, thereby eliminating the problem of extending patent life. Nonstatutory double patenting rejections can also be overcome in cases subject to a joint research agreement, under certain circumstances, by disclaiming the terminal portion of the term of the later patent and including in the disclaimer the provisions of 37 CFR 1.321(d).
See MPEP § 717.02 et seq. for information pertaining to establishment of common ownership and the existence of a joint research agreement pursuant to 35 U.S.C. 102(c), as well as examination practice relating to 35 U.S.C. 102(b)(2)(C). See MPEP § 706.02(l) - § 706.02(l)(3) for information pertaining to establishment of common ownership and the existence of a joint research agreement pursuant to pre-AIA 35 U.S.C. 103(c), as well as examination practice relating to pre-AIA 35 U.S.C. 103(c).
II. IDENTIFYING COMMONLY OWNED AND NON-COMMONLY OWNED INVENTIONS SUBJECT TOA JOINT RESEARCHAGREEMENT
A. Common Ownership by the Same Person(s) or Organization(s)
Applications or patents are “commonly owned” pursuant to 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c)(1) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies), at the time the claimed invention was filed or made, respectively. If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person(s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed
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invention. See MPEP § 717.02(a), subsection I, and MPEP § 706.02(l)(2) for a detailed definition of common ownership. 35 U.S.C. 102(b)(2)(C) provides that disclosures shall not be prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. If the prior art exception under 35 U.S.C. 102(b)(2)(C) is properly invoked, the commonly owned or joint research agreement reference is not available as prior art under 35 U.S.C. 102(a)(2) for both anticipation and obviousness rejections. See MPEP § 717.02(a) for more information on invoking this prior art exception and MPEP § 717.02(b) for more information on evaluating when the exception applies and is properly invoked.
Under pre-AIA 35 U.S.C. 103(c)(1), two inventions of different inventive entities come within the common ownership provisions when:
(A) the later invention is not anticipated by the earlier invention under 35 U.S.C. 102;
(B) the earlier invention qualifies as prior art for purposes of obviousness under 35 U.S.C. 103 against the later invention only under subsections (f) or (g) of 35 U.S.C. 102, or under 35 U.S.C. 102(e) for applications pending on or after December 10, 2004, for reexamination proceedings in which the patent under reexamination was granted on or after December 10, 2004, and for reexamination proceedings in which the patent under reexamination was filed on or after November 29, 1999; and
(C) the inventions were, at the time the later invention was made, owned by the same person or subject to an obligation of assignment to the same person.
B. Non-Commonly Owned Inventions Subject to a Joint Research Agreement
The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) (Public Law 108-453; 118 Stat. 3596 (2004)), which amended pre-AIA 35 U.S.C. 103(c), was enacted on December 10, 2004. The CREATE Act permits an applicant or patentee, who is a party to a joint research agreement, to disqualify prior art that is
applied in a rejection under pre-AIA 35 U.S.C. 103(a) and that is otherwise available as prior art only under pre-AIA 35 U.S.C. 102(e), (f) or (g). Congress recognized that this amendment to pre-AIA 35 U.S.C. 103(c) would result in situations in which there would be double patenting between patents or applications not owned by the same party. See H.R. Rep. No. 108-425, at 5-6 (2003).
Pursuant to the CREATEAct, non-commonly owned applications or patents that are subject to a joint research agreement may be treated as if they are “commonly owned,” i.e., owned or subject to assignment by the same person, for the purposes of determining obviousness if certain conditions are met. See pre-AIA 35 U.S.C. 103(c)(2). The term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. See pre-AIA 35 U.S.C. 103(c)(3). See also MPEP § 706.02(l)(2).
Two inventions come within the provisions of pre-AIA 35 U.S.C. 103(c)(2), for pre-AIA applications pending on or after December 10, 2004, and for reexamination proceedings in which the patent under reexamination issued after December 10, 2004 and is subject to pre-AIA law, when:
(A) the later invention is not anticipated by the earlier invention under 35 U.S.C. 102;
(B) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(C) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(D) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
The current joint research agreement provisions of 35 U.S.C. 102(c) generally track those of the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). See MPEP § 706.02(l)(1). The major differences between 35
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U.S.C. 102(c) and the CREATE Act are the following:
A. The new provision (35 U.S.C. 102(c)) is keyed to the effective filing date of the claimed invention, while the CREATE Act (pre-AIA 35 U.S.C. 103(c)) focused on the date that the claimed invention was made; and
B. The CREATE Act provisions (pre-AIA 35 U.S.C. 103(c)) only applied to obviousness rejections and not to anticipation rejections.
C. Timing of Double Patenting Rejections
The examiner should make both a double patenting rejection based on common ownership and a rejection based on prior art when the facts support both rejections. Until applicant has established that a reference is disqualified as prior art under the joint research agreement defined in 35 U.S.C. 102(c) and pre-AIA 35 U.S.C. 103(c)(2) and (3), the examiner should NOT apply a double patenting rejection based on a joint research agreement. See MPEP §§ 706.07(a), 717.02(c), and 804, subsection VI., for information regarding when an Office action that includes a new subsequent double patenting rejection based upon a reference subject to a joint research agreement defined in 35 U.S.C. 102(c) and pre-AIA 35 U.S.C. 103(c)(2) and (3) may be made final.
III. DETERMINING INVENTION PRIORITY
A determination of priority is not required when two inventions are commonly owned as set forth in 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c)(1).
Pursuant to 37 CFR 1.78(g), where an application or a patent under reexamination and at least one other application by different inventive entities are owned by the same party and contain conflicting claims, the examiner may require the assignee to state whether the claimed inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed on the effective filing date) or pre-AIA 35 U.S.C. 103(c) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed at the time the later invention was made). For example, if the assignee states that the provisions of
pre-AIA 35 U.S.C. 103(c) do not apply to the conflicting claimed inventions, the assignee is required to indicate which named inventor is the prior inventor. Form paragraphs 8.27.aia, 8.27.fti, 8.28.aia, 8.28.fti, 8.28.01.aia and 8.28.01.fti may be used to require the applicant to identify the prior inventor under 37 CFR 1.78(g) or to take certain actions. In order to avoid abandonment, the assignee must comply with the requirements under 37 CFR 1.78(g) unless the conflicting claims are eliminated in all but one application. If, however, the two inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c), it is not necessary to determine priority of invention since the earlier invention is disqualified as prior art against the later invention and since double patenting rejections can be used to ensure that the patent terms expire together. Accordingly, a response to a requirement under 37 CFR 1.78(g) which states that the inventions of different inventive entities come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) is complete.
Before making a requirement to identify the prior inventor in an application subject to pre-AIA 35 U.S.C. 102(f) or (g), and threatening to hold the application abandoned if the statement is not made by the assignee, the examiner must make sure that claims in the application under examination or patent under reexamination and the claims in the other application(s) are conflicting as defined in MPEP § 804. See In re Rekers, 203 USPQ 1034 (Comm’r Pat. 1979).
In some situations the prosecution file histories may reflect which invention is the prior invention, e.g., by reciting that one invention is an improvement of the other invention. See Margolis v. Banner, 599 F.2d 435, 202 USPQ 365 (CCPA 1979) (Court refused to uphold a holding of abandonment for failure to name the prior inventor since the record showed what was invented by the different inventive entities and who was the prior inventor.).
An application in which a requirement to name the prior inventor has been made will not be held abandoned where a timely response indicates that the other application is abandoned or will be permitted to become abandoned and will not be filed as a continuing application. Such a response will be
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considered sufficient since it renders the requirement to identify the prior inventor moot because the existence of conflicting claims is eliminated. Also, any conflict between two or more pending applications can be avoided by abandoning the applications and filing a continuation-in-part application merging the conflicting inventions into a single application.
IV. REJECTIONS UNDER 35 U.S.C. 102 AND 103 AND DOUBLE PATENTING
Form paragraphs 8.27.aia, 8.27.fti, 8.28.aia, 8.28.fti, 8.28.01.aia, and 8.28.01.fti may be used to require the applicant to resolve issues that may arise in applications that have different inventors but a common assignee and claim the same or patentably indistinct inventions.
¶ 8.27.aia Different Inventors, Common Assignee, Same Invention, Examined under First Inventor To File (FITF) Provisions of the AIA
Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. Under 35 U.S.C. 101, more than one patent may not be issued on the same invention.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). The applicant should amend or cancel claims such that the applications no longer contain claims directed to the same invention.
Examiner Note:
1. Form paragraph 7.03.aia must be included in any Office action that contains this paragraph.
2. In bracket 3, insert the U.S. patent number or the copending application number.
3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.aia.
4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.
5. If the commonly assigned application or patent has an earlier effective filing date in accordance with 35 U.S.C. 100(i), a rejection under 35 U.S.C. 102(a)(2) may also be made using form paragraph 7.15.01.aia or 7.15.02.aia.
¶ 8.27.fti Different Inventors, Common Assignee, Same Invention, Examined Under Pre-AIA (First to Invent) Provisions
Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. The issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) of this single invention must be resolved.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application having common ownership (see MPEP Chapter 2300). Either the applicant must amend or cancel the claims directed to the same invention, or the assignee must state which entity is the prior inventor of the commonly claimed subject matter. A terminal disclaimer has no effect in this situation since the basis for refusing more than one patent is priority of invention under pre-AIA 35 U.S.C. 102(f) or (g) and not an extension of monopoly.
Failure to comply with this requirement will result in a holding of abandonment of this application.
Examiner Note:
1. Form paragraph 7.03.fti must be included in any Office action that contains this paragraph.
2. In bracket 3, insert the U.S. patent number or the copending application number.
3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.fti.
4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.
5. If the commonly assigned application or patent has an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) may also be made using form paragraph 7.15.01.fti or 7.15.02.fti.
¶ 8.28.aia Different Inventors, CommonAssignee, Inventions Not Patentably Distinct, No Evidence of Common Ownership as of the Effective Filing Date of the Claimed Invention, Examined Under First Inventor to File (FITF) Provisions of the AIA
Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].
Examiner Note:
1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but it has not been established that they were commonly owned or deemed to have been commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention. See 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c).
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2. A rejection under 35 U.S.C. 102(a)(2)/103 using form paragraph 7.21.aia, 7.21.01.aia or 7.21.02.aia also should be made, as appropriate.
3. In bracket 3, insert the number of the patent or application that includes claims patentably indistinct from those in the present application.
4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37.
5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.
6. Form paragraph 8.28.01.aia MUST follow this paragraph.
¶ 8.28.fti Different Inventors, Common Assignee, Inventions Not Patentably Distinct, No Evidence of Common Ownership at Time of Invention, Examined Under Pre-AIA (First To Invent) Provisions
Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].
Examiner Note:
1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but there is no indication that they were commonly assigned at the time the invention was made.
2. A rejection under pre-AIA 35 U.S.C. 102(e)/103(a) using form paragraph 7.21.fti, 7.21.01.fti or 7.21.02.fti also should be made, as appropriate. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
3. In bracket 3, insert the number of the reference patent or application.
4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37.
5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.
6. Form paragraph 8.28.01.fti MUST follow this paragraph.
¶ 8.28.01.aia Advisory Information Relating to Form Paragraph 8.28.aia
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned [1], discussed above, would be prior art to the noted claims under 35 U.S.C. 102(a)(2) if the patentably indistinct inventions were not commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Examiner Note:
This form paragraph should follow form paragraph 8.28.aia and should only be used ONCE in an Office action.
¶ 8.28.01.fti Advisory Information Relating to Form Paragraph 8.28.fti
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP Chapter 2300). Commonly assigned [1], discussed above, may form the basis for a rejection of the noted claims under pre-AIA 35 U.S.C. 102 or 103(a) if the commonly assigned case qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) and the patentably indistinct inventions were not commonly owned at the time the claimed invention in this application was made. In order for the examiner to resolve this issue the assignee can, under pre-AIA 35 U.S.C. 103(c) and 37 CFR 1.78(g), either show that the patentably indistinct inventions were commonly owned at the time the claimed invention in this application was made, or name the prior inventor of the subject matter at issue.
A showing that the inventions were commonly owned at the time the claimed invention in this application was made will preclude a rejection under pre-AIA 35 U.S.C. 103(a) based upon the commonly assigned application that qualifies as a reference under pre-AIA 35 U.S.C. 102(e), (f) or (g). Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
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Examiner Note:
This form paragraph should follow form paragraph 8.28.fti and should only be used ONCE in an Office action.
If the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c)(1) apply to the commonly owned conflicting inventions of different inventive entities or if the provisions of 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) apply to non-commonly owned inventions subject to a joint research agreement and thereby obviate the rejection(s), double patenting rejection(s) should be made (or maintained) as appropriate. If, however, it is determined that the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) do NOT apply because the inventions were not commonly owned or subject to an obligation of assignment to the same person at the time the later invention was filed or made, or because the claimed invention did NOT result from activities undertaken within the scope of a joint research agreement as required by 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3), and there is evidence of record to indicate that a patent or application is prior art against the application being examined, the examiner should make (A) any appropriate double patenting rejection(s), and (B) the appropriate prior art rejection(s) under 35 U.S.C. 102 and/or 35 U.S.C. 103 in the application being examined. See the charts in MPEP § 804. Rejections under 35 U.S.C. 102 or 35 U.S.C. 103 cannot be obviated solely by filing a terminal disclaimer.
¶ 7.15.aia Rejection, 35 U.S.C. 102(a)(1)/102(a)(2)
Claim(s) [1] is/are rejected under 35 U.S.C. 102 [2] as being [3] by [4].
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. In bracket 1, insert the claim numbers which are under rejection.
3. In bracket 2, insert either “(a)(1)” or “(a)(2)” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia, 7.15.02.aia or 7.15.03.aia where applicable.
4. In bracket 3, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
5. In bracket 4, insert the prior art relied upon.
6. This rejection must be preceded either by form paragraph 7.07.aia and form paragraphs 7.08.aia, and 7.12.aia as appropriate, or by form paragraph 7.103.
7. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.fti Rejection, Pre-AIA 35 U.S.C. 102(a), (b) Patent or Publication, and (g)
Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102 [2] as being [3] by [4].
Examiner Note:
1. In bracket 2, insert the appropriate paragraph letter or letters of pre-AIA 35 U.S.C. 102 in parentheses. If paragraph (e) of pre-AIA 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.
2. In bracket 3, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
3. In bracket 4, insert the prior art relied upon.
4. This rejection must be preceded either by form paragraph 7.07.fti and form paragraphs 7.08.fti, 7.09.fti, and 7.14.fti as appropriate, or by form paragraph 7.103.
5. If pre-AIA 35 U.S.C. 102(e) is also being applied, this form paragraph must be followed by either form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.
6. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.19.fti Rejection, pre-AIA 35 U.S.C. 102(f), Applicant Not the Inventor
Claim [1] is/are rejected under pre-AIA 35 U.S.C. 102(f) because the applicant did not invent the claimed subject matter. [2]
Examiner Note:
1. This paragraph must be preceded either by paragraphs 7.07.fti and 7.13.fti or by paragraph 7.103.
2. In bracket 2, insert an explanation of the supporting evidence establishing that applicant was not the inventor. See MPEP § 2137.
¶ 7.21.aia Rejection, 35 U.S.C. 103
Claim [1] is/are rejected under 35 U.S.C. 103 as being unpatentable over [2].
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the
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Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be preceded by either form paragraph 7.20.aia or form paragraph 7.103.
3. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
4. If this rejection is a provisional 35 U.S.C. 103 rejection based upon a copending application that would constitute prior art under 35 U.S.C. 102(a)(2) if patented or published, use form paragraph 7.21.01.aia instead of this paragraph.
5. In bracket 1, insert the claim numbers which are under rejection.
6. In bracket 2, insert the prior art relied upon.
7. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.21.fti Rejection, Pre-AIA 35 U.S.C. 103(a)
Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2].
Examiner Note:
1. This paragraph must be preceded by either form paragraph 7.20.fti or form paragraph 7.103.
2. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
4. If the applicability of this rejection (e.g., the availability of the prior art as a reference under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b)) prevents the reference from being disqualified under pre-AIA 35 U.S.C. 103(c), form paragraph 7.20.01.fti must follow this form paragraph.
5. If this rejection is a provisional pre-AIA 35 U.S.C. 103(a) rejection based upon a copending application that would comprise prior art under pre-AIA 35 U.S.C. 102(e) if patented or published, use form paragraph 7.21.01.fti instead of this paragraph.
6. In bracket 1, insert the claim numbers which are under rejection.
7. In bracket 2, insert the prior art relied upon.
Further, if the conflicting applications have different effective U.S. filing dates, the examiner should consider making a provisional rejection in the later filed application, based on the earlier filed application, under 35 U.S.C. 102(a)(2), using form paragraph 7.15.01.aia, under 35 U.S.C. 103 using form paragraph 7.21.01.aia, or under pre-AIA 35 U.S.C. 102(e) or 102(e)/103(a), using form paragraph 7.15.01.fti or 7.21.01.fti. Rejections under 35 U.S.C. 102 or 103 cannot be obviated solely by the filing of a terminal disclaimer.
¶ 7.15.01.aia Provisional Rejection, 35 U.S.C. 102(a)(2) - Common Assignee, Common Applicant, or At Least One Common Joint Inventor
Claim(s) [1] is/are provisionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.
Based upon the earlier effective filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(a)(2), if published under 35 U.S.C. 122(b) or patented under 35 U.S.C. 151. This provisional rejection under 35 U.S.C. 102(a)(2) is based upon a presumption of future publication or patenting of the copending application. [4].
This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph is used to provisionally reject over a copending application with an earlier effective filing date that discloses the claimed invention and has not been published under
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35 U.S.C. 122. The copending application must have either a common assignee, common applicant (35 U.S.C. 118) or at least one common joint inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
a. a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the application;
b. a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the application; or
c. a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the application. If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) issued or was published before the effective filing date of the application under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
4. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.aia.
5. In bracket 1, insert claim number(s) under rejection.
6. In bracket 2, insert the application number.
7. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
8. In bracket 4, provide an appropriate explanation of the examiner’s position on anticipation.
9. If the claims of the copending application are directed to the same invention as the claims of the instant application, a provisional double patenting rejection should also be made using form paragraphs 8.30 and 8.32.
10. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.21.01.aia Provisional Rejection, 35 U.S.C. 103, Common Assignee, Common Applicant, or at Least One Common Joint Inventor
Claim [1] is/are provisionally rejected under 35 U.S.C. 103 as being obvious over copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effectively filed date of the copending application, it would constitute prior art under 35 U.S.C. 102(a)(2) if published or patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption of future publication or patenting of the copending application. [4]
This provisional rejection might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a
showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention either were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier effectively filed date and also having either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor.
3. If the claimed invention is fully disclosed in the copending application, use form paragraph 7.15.01.aia.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the application number.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional nonstatutory double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.
¶ 7.15.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 102(e) - Common Assignee, Common Applicant, or At Least One Common Joint Inventor
Claim(s) [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.
Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e), if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future publication or patenting of the copending application. [4].
This provisional rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention “by another,” or by an appropriate showing under 37 CFR 1.131(a).
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This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph is used to provisionally reject over a copending application with an earlier filing date that discloses the claimed invention which has not been published under 35 U.S.C. 122. The copending application must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor.
2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) to determine the copending application’s prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti). See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
3. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.fti.
4. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
5. In bracket 4, an appropriate explanation may be provided in support of the examiner’s position on anticipation, if necessary.
6. If the claims of the copending application are directed to the same invention as the claims of the instant application, a provisional double patenting rejection should also be made using form paragraphs 8.30 and 8.32.
7. If evidence is additionally of record to show that either invention is prior art to the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection using form paragraphs 7.13.fti and/or 7.14.fti should also be made.
8. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.21.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common Joint Inventor
Claim [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the copending
application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future publication or patenting of the copending application. [4]
This provisional rejection might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the copending application under 37 CFR 1.131(a). This rejection might also be overcome by showing that the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a rejection under pre-AIA 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Examiner Note:
1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier U.S. filing date and also having either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor. This form paragraph should not be used when the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(3).
2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) to determine the copending application's prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) to determine the copending application’s prior art date. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
3. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01.fti.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the application number.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.
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9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the copending application is also prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
b. the copending application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
¶ 7.15.02.aia Rejection, 35 U.S.C. 102(a)(2), Common Assignee, Applicant, or Joint Inventor(s)
Claim(s) [1] is/are rejected under 35 U.S.C. 102(a)(2) as being [2] by [3].
The applied reference has a common [4] with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph is used to reject claims under 35 U.S.C. 102(a)(2) over a U.S. patent, U.S. patent application publication, or WIPO publication with an earlier effectively filed date. These references must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
a. a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the effective filing date of the claimed invention;
b. a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
c. a WIPO publication of an international application (PCT) or international design application that designates the United
States where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.
If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
4. In bracket 1, insert the claim numbers which are under rejection.
5. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
6. In bracket 3, insert the prior art relied upon.
7. In bracket 4, insert --assignee--, --applicant--, or --joint inventor--.
8. This form paragraph must be preceded by form paragraph 7.12.aia.
9. If the claims of the copending application are directed to the same invention as the claims of the instant application, a provisional double patenting rejection should also be made using form paragraphs 8.30 and 8.32, and applicant should be required to amend or cancel patentably indistinct claims using form paragraph 8.27.aia.
10. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.02.fti Rejection, Pre-AIA 35 U.S.C. 102(e), Common Assignee, Applicant, or Joint Inventor
Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by [2].
The applied reference has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e). This rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or if the same invention is not being claimed, by an appropriate showing under 37 CFR 1.131(a).
Examiner Note:
1. This form paragraph is used to reject over a patent or patent application publication with an earlier effective filing date. The patent or patent application publication must have either a common assignee, a common applicant (35 U.S.C. 118), or a common joint inventor.
2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) must be applied if the reference is by another and is one of the following:
a. a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
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b. a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
c. a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.
3. Pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) - (d), 365(a) or (b), or 386(a) or (b).
5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO PCT publication, that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. This form paragraph must be preceded by either of form paragraphs 7.12.fti or 7.12.01.fti.
8. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12.fti.
9. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
10. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the
reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) using form paragraphs 8.30 - 8.32. Additionally, the applicant should be required to resolve any issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) using form paragraph 8.27.fti. See MPEP § 804, subsection II.A.
¶ 7.21.01.aia Provisional Rejection, 35 U.S.C. 103, Common Assignee, Common Applicant, or at Least One Common Joint Inventor
Claim [1] is/are provisionally rejected under 35 U.S.C. 103 as being obvious over copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effectively filed date of the copending application, it would constitute prior art under 35 U.S.C. 102(a)(2) if published or patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption of future publication or patenting of the copending application. [4]
This provisional rejection might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention either were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier effectively filed date and also having either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor.
3. If the claimed invention is fully disclosed in the copending application, use form paragraph 7.15.01.aia.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the application number.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional
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nonstatutory double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.
¶ 7.21.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common Joint Inventor
Claim [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future publication or patenting of the copending application. [4]
This provisional rejection might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the copending application under 37 CFR 1.131(a). This rejection might also be overcome by showing that the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a rejection under pre-AIA 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Examiner Note:
1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier U.S. filing date and also having either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor. This form paragraph should not be used when the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(3).
2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) to determine the copending application's prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) to determine the copending application’s prior art date. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
3. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01.fti.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the application number.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.
9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the copending application is also prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
b. the copending application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
¶ 7.21.02.aia Rejection, 35 U.S.C. 103, Common Assignee, CommonApplicant, or at Least One Common Joint Inventor
Claim [1] is/are rejected under 35 U.S.C. 103 as being obvious over [2].
The applied reference has a common [3] with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). [4]
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This paragraph is used to reject over a reference (patent or published application) with an earlier effectively filed date that discloses the claimed invention, and that ONLY qualifies as prior art under 35 U.S.C. 102(a)(2). If the reference qualifies as prior art under 35 U.S.C. 102(a)(1), then this form paragraph should not be used (form paragraph 7.21.aia should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118 ), or at least one common joint inventor. This form paragraph should not be used in
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applications when the reference is not prior art in view of the 35 U.S.C. 102(b)(2)(C) exception.
3. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
4. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
¶ 7.22.aia Rejection, 35 U.S.C. 103, Further in View Of
Claim [1] is/are rejected under 35 U.S.C. 103 as being unpatentable over [2] as applied to claim [3] above, and further in view of [4].
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be preceded by form paragraph 7.21.aia.
3. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
¶ 7.21.02.fti Rejection, pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common Joint Inventor
Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over [2].
The applied reference has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e). This rejection under pre-AIA 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a); or (3) an oath or declaration under 37 CFR 1.131(c) stating that the application and reference are currently owned by the same party and that the inventor or joint inventors (i.e., the inventive entity) named in the application is the prior inventor under pre-AIA 35 U.S.C. 104 as in effect on March 15, 2013, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a rejection under pre-AIA 35 U.S.C. 103(a). See MPEP §§ 706.02(l)(1) and 706.02(l)(2). [4]
Examiner Note:
1. This paragraph is used to reject over a reference (patent or published application) with an earlier filing date that discloses the claimed invention, and that only qualifies as prior art under pre-AIA 35 U.S.C. 102(e). If the reference qualifies as prior art
under pre-AIA 35 U.S.C. 102(a) or (b), then this form paragraph should not be used (form paragraph 7.21.fti should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor. This form paragraph should not be used in applications when the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(3).
2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) must be applied if the reference is by another and is one of the following:
a. a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
b. a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
c. a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.
3. Pre-AIPA 35 U.S.C. 102(e) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the prior art reference(s) relied upon for the obviousness rejection.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
804.04 Submission to Technology Center Director [R-07.2015]
In order to promote uniform practice, every Office action containing a rejection on the ground of nonstatutory double patenting which relies on the parent application to reject the claims in a divisional application where the divisional application was filed because of a requirement to restrict made by the examiner under 35 U.S.C. 121, including a requirement to elect species, must be submitted to the Technology Center Director for approval prior to mailing. If the rejection on the ground of double patenting is disapproved, it shall not be mailed but
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other appropriate action shall be taken. Note MPEP § 1003.
When a claimed invention that was the subject of a restriction requirement in one application is presented in a divisional application, a nonstatutory double patenting rejection cannot be applied to that claimed invention unless the restriction requirement was withdrawn. A nonstatutory double patenting rejection may be appropriate in situations in which the invention presented in the divisional is not the same invention that was the subject of the restriction requirement. “When the PTO requires an applicant to withdraw claims to a patentably distinct invention (a restriction requirement), § 121 shields those withdrawn claims in a later divisional application against rejection over a patent that issues from the original application…. [I]f an examiner issues a restriction requirement between patentably indistinct claims, two patents may issue and prolong patent protection beyond the statutory term on obvious variants of the same invention. This prolongation would occur because section 121 would immunize the restricted application against nonstatutory double patenting rejections.” Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1869 (Fed. Cir. 2003).
“[W]hen the existence of multiple patents is due to the administrative requirements imposed by the Patent and Trademark Office, 35 U.S.C. Section 121 provides that the inventor shall not be prejudiced by having complied with those requirements. Thus when two or more patents result from a PTO restriction requirement, whereby aspects of the original application must be divided into separate applications, Section 121 insulates the ensuing patents from the charge of double patenting.” Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 1568, 40 USPQ2d 1481, 1484 (Fed. Cir. 1996) (citing Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 784 F.2d 351, 354, 228 USPQ 837, 840 (Fed. Cir. 1986)).
“Section 121 shields claims against a double patenting challenge if consonance exists between the divided groups of claims and an earlier restriction requirement. If a restriction requirement does not clearly set forth the line of demarcation, then challenged claims could not satisfy the consonance
requirement.” Geneva Pharm, 349 F.3d at 1381, 68 USPQ2d at 1871.
“Consonance requires that the line of demarcation between the ‘independent and distinct inventions’ that prompted the restriction requirement be maintained ... Where that line is crossed the prohibition -[against double patenting in] the third sentence of Section 121 does not apply.” Symbol Techs, Inc. v. Opticon, Inc., 935 F.2d 1569, 1579, 19 USPQ2d 1241, 1249 (Fed. Cir. 1991) (quoting Gerber Garment Technology Inc. v. Lectra Systems Inc., 916 F.2d 683, 688, 16 USPQ2d 1436, 1440 (Fed. Cir. 1990)); see also MPEP § 804.01. “ However, even if such consonance is lost, double patenting does not follow if the requirements of Section 121 are met or if the claims are in fact patentably distinct.… The purpose of Section 121 is to accommodate administrative convenience and to protect the patentee from technical flaws based on this unappealable examination practice.” Applied Materials, 98 F.3d at 1568, 40 USPQ at 1484.
805 Effect of Improper Joinder in Patent [R-07.2015]
35 U.S.C. 121, last sentence, provides “the validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.” In other words, under this statute, no patent can be held invalid for improper joinder of inventions claimed therein.
806 Determination of Distinctness or Independence of Claimed Inventions [R-08.2012]
The general principles relating to distinctness or independence may be summarized as follows:
(A) Where inventions are independent (i.e., no disclosed relation therebetween), restriction to one thereof is ordinarily proper, MPEP § 806.06.
(B) Where inventions are related as disclosed but are distinct as claimed, restriction may be proper.
(C) Where inventions are related as disclosed but are not distinct as claimed, restriction is never proper.
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(D) A reasonable number of species may be claimed when there is an allowable claim generic thereto. 37 CFR 1.141, MPEP § 806.04.
Where restriction is required by the Office double patenting cannot be held, and thus, it is imperative the requirement should never be made where related inventions as claimed are not distinct. For (B) and (C) see MPEP § 806.05 - § 806.05(j) and § 809.03. See MPEP § 802.01 for criteria for patentably distinct inventions.
806.01 Compare Claimed Subject Matter [R-08.2012]
In passing upon questions of double patenting and restriction, it is the claimed subject matter that is considered and such claimed subject matter must be compared in order to determine the question of distinctness or independence. However, a provisional election of a single species may be required where only generic claims are presented and the generic claims recite such a multiplicity of species that an unduly extensive and burdensome search is necessary. See MPEP § 803.02 and § 808.01(a).
806.02 [Reserved]
806.03 Single Embodiment, Claims Defining Same Essential Features [R-08.2012]
Where the claims of an application define the same essential characteristics of a single disclosed embodiment of an invention, restriction therebetween should never be required. This is because the claims are not directed to distinct inventions; rather they are different definitions of the same disclosed subject matter, varying in breadth or scope of definition.
Where such claims are voluntarily presented in different applications having at least one common inventor or a common assignee (i.e., no restriction
requirement was made by the Office), disclosing the same embodiments, see MPEP § 804 - § 804.02.
806.04 Genus and/or Species Inventions [R-08.2012]
Where an application includes claims directed to different embodiments or species that could fall within the scope of a generic claim, restriction between the species may be proper if the species are independent or distinct. However, 37 CFR 1.141 provides that an allowable generic claim may link a reasonable number of species embraced thereby. The practice is set forth in 37 CFR 1.146.
37 CFR 1.146 Election of species.
In the first action on an application containing a generic claim to a generic invention (genus) and claims to more than one patentably distinct species embraced thereby, the examiner may require the applicant in the reply to that action to elect a species of his or her invention to which his or her claim will be restricted if no claim to the genus is found to be allowable. However, if such application contains claims directed to more than a reasonable number of species, the examiner may require restriction of the claims to not more than a reasonable number of species before taking further action in the application.
See MPEP § 806.04(d) for the definition of a generic claim, and MPEP § 806.04(e) for a discussion of claims that include one or more species.
806.04(a) [Reserved]
806.04(b) Species May Be Independent or Related Inventions [R-08.2012]
Species may be either independent or related under the particular disclosure. Where species under a claimed genus are not connected in any of design, operation, or effect under the disclosure, the species are independent inventions. See MPEP § 802.01 and § 806.06. Where inventions as disclosed and claimed are both (A) species under a claimed genus and (B) related, then the question of restriction must be determined by both the practice applicable to election of species and the practice applicable to other types of restrictions such as those covered in MPEP § 806.05 - § 806.05(j). If restriction is improper under either practice, it should not be required.
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For example, two different subcombinations usable with each other may each be a species of some common generic invention. If so, restriction practice under election of species and the practice applicable to restriction between combination and subcombinations must be addressed.
As a further example, species of carbon compounds may be related to each other as intermediate and final product. Thus, these species are not independent and in order to sustain a restriction requirement, distinctness must be shown. Distinctness is proven if the intermediate and final products do not overlap in scope and are not obvious variants and it can be shown that the intermediate product is useful other than to make the final product. Otherwise, the disclosed relationship would preclude their being issued in separate patents. See MPEP § 806.05(j) for restriction practice pertaining to related products, including intermediate-final product relationships.
806.04(c) [Reserved]
806.04(d) Definition of a Generic Claim [R-08.2012]
In an application presenting three species illustrated, for example, in Figures 1, 2, and 3, respectively, a generic claim should read on each of these views; but the fact that a claim does so read is not conclusive that it is generic. It may define only an element or subcombination common to the several species.
In general, a generic claim should require no material element additional to those required by the species claims, and each of the species claims must require all the limitations of the generic claim.
Once a generic claim is allowable, all of the claims drawn to species in addition to the elected species which require all the limitations of the generic claim will ordinarily be allowable over the prior art in view of the allowability of the generic claim, since the additional species will depend thereon or otherwise require all of the limitations thereof. When all or some of the claims directed to one of the species in addition to the elected species do not require all the
limitations of the generic claim, see MPEP § 821.04(a).
806.04(e) Claims Limited to Species [R-08.2012]
Claims are definitions or descriptions of inventions. Claims themselves are never species. The scope of a claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim). Alternatively, a claim may encompass two or more of the disclosed embodiments (and thus be designated a generic or genus claim).
Species always refer to the different embodiments of the invention.
Species may be either independent or related as disclosed (see MPEP § 806.04 and § 806.04(b)).
806.04(f) Restriction Between Mutually Exclusive Species [R-08.2012]
Where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive. Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. This may also be expressed by saying that to require restriction between claims limited to species, the claims must not overlap in scope.
806.04(g) [Reserved]
806.04(h) Species Must Be Patentably Distinct From Each Other [R-08.2012]
In making a requirement for restriction in an application claiming plural species, the examiner should group together species considered clearly unpatentable over each other.
Where generic claims are allowable, applicant may claim in the same application additional species as provided by 37 CFR 1.141. See MPEP § 806.04.
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Where an applicant files a divisional application claiming a species previously claimed but nonelected in the parent case pursuant to and consonant with a requirement to restrict a double patenting rejection of the species claim(s) would be prohibited under 35 U.S.C. 121. See MPEP § 821.04(a) for rejoinder of species claims when a generic claim is allowable.
Where, however, claims to a different species, or a species disclosed but not claimed in a parent case as filed and first acted upon by the examiner, are voluntarily presented in a different application having at least one common inventor or a common assignee (i.e., no requirement for election pertaining to said species was made by the Office) there should be close investigation to determine whether a double patenting rejection would be appropriate. See MPEP § 804.01 and § 804.02.
806.04(i) Generic Claims Presented In a Separate Application After Issuance of Species Claims [R-07.2015]
If a generic claim is presented in a separate application after the issuance of a patent claiming one or more species within the scope of the generic claim, the Office may reject the generic claim on the grounds of nonstatutory double patenting when the patent and application have at least one common inventor and/or are either (1) commonly assigned/owned or (2) non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3). See MPEP § 804. Applicant may overcome such a rejection by filing a terminal disclaimer. See In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993); In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).
806.05 Related Inventions [R-08.2012]
Where two or more related inventions are claimed, the principal question to be determined in connection with a requirement to restrict or a rejection on the ground of double patenting is whether or not the inventions as claimed are distinct. If they are distinct, restriction may be proper. If they are not distinct, restriction is never proper. If nondistinct inventions
are claimed in separate applications or patents, double patenting must be held, except where the additional applications were filed consonant with a requirement to restrict.
Various pairs of related inventions are noted in the following sections. In applications claiming inventions in different statutory categories, only one-way distinctness is generally needed to support a restriction requirement. See MPEP § 806.05(c) (combination and subcombination) and § 806.05(j) (related products or related processes) for examples of when a two-way test is required for distinctness. Related inventions in the same statutory class are considered mutually exclusive, or not overlapping in scope, if a first invention would not infringe a second invention, and the second invention would not infringe the first invention
806.05(a) Combination and Subcombination [R-08.2012]
A combination is an organization of which a subcombination or element is a part.
806.05(b) [Reserved]
806.05(c) Criteria of Distinctness Between Combination and Subcombination [R-08.2012]
To support a requirement for restriction between combination and subcombination inventions, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., there would be a serious search burden if restriction were not required as evidenced by separate classification, status, or field of search. See MPEP § 808.02.
The inventions are distinct if it can be shown that a combination as claimed:
(A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and
(B) the subcombination can be shown to have utility either by itself or in another materially different combination.
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When these factors cannot be shown, such inventions are not distinct.
The following examples are included for general guidance.
I. SUBCOMBINATION ESSENTIAL TO COMBINATION
ABsp/Bsp No Restriction
Where a combination as claimed requires the details of a subcombination as separately claimed, there is usually no evidence that combination ABsp is
patentable without the details of Bsp. The inventions
are not distinct and a requirement for restriction must not be made or maintained, even if the subcombination has separate utility. This situation can be diagrammed as combination ABsp (“sp” is
an abbreviation for “specific”), and subcombination Bsp. Thus the specific characteristics required by
the subcombination claim Bsp are also required by
the combination claim. See MPEP § 806.05(d) for situations where two or more subcombinations are separately claimed.
II. SUBCOMBINATION NOT ESSENTIAL TO COMBINATION
A. ABbr/Bsp Restriction Proper
Where a combination as claimed does not require the details of the subcombination as separately claimed and the subcombination has separate utility, the inventions are distinct and restriction is proper if reasons exist for insisting upon the restriction, i.e., there would be a serious search burden if restriction were not required as evidenced by separate classification, status, or field of search.
This situation can be diagramed as combination ABbr (“br” is an abbreviation for “broad”), and
subcombination Bsp (“sp” is an abbreviation for
“specific”). Bbr indicates that in the combination
the subcombination is broadly recited and that the specific characteristics required by the
subcombination claim Bsp are not required by the
combination claim.
Since claims to both the subcombination and combination are presented, the omission of details of the claimed subcombination Bsp in the
combination claim ABbr is evidence that the
combination does not rely upon the specific limitations of the subcombination for its patentability. If subcombination Bsp has separate
utility, the inventions are distinct and restriction is proper if reasons exist for insisting upon the restriction.
In applications claiming plural inventions capable of being viewed as related in two ways, for example, as both combination-subcombination and also as species under a claimed genus, both applicable criteria for distinctness must be demonstrated to support a restriction requirement. See also MPEP § 806.04(b).
Form paragraph 8.15 may be used in combination-subcombination restriction requirements.
¶ 8.15 Combination-Subcombination
Inventions [1] and [2] are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because [3]. The subcombination has separate utility such as [4].
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
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§ 806.05(c)RESTRICTION IN APPLICATIONS FILED UNDER 35 U.S.C. 111; DOUBLE PATENTING
Examiner Note:
1. This form paragraph is to be used when claims are presented to both combination(s) and subcombination(s) (MPEP § 806.05(c)).
2. In bracket 3, specify the limitations of the claimed subcombination that are not required by the claimed combination, or the evidence that supports the conclusion that the combination does not rely upon the specific details of the subcombination for patentability. See MPEP § 806.05(c), subsection II and § 806.05(d).
3. In bracket 4, suggest utility other than used in the combination.
4. Conclude restriction requirement with form paragraph 8.21.
The burden is on the examiner to suggest an example of separate utility. If applicant proves or provides an argument, supported by facts, that the utility suggested by the examiner cannot be accomplished, the burden shifts to the examiner to document a viable separate utility or withdraw the requirement.
B. ABsp/ABbr/Bsp Restriction Proper
The presence of a claim to combination ABsp does
not alter the propriety of a restriction requirement properly made between combination ABbr and
subcombination Bsp. Claim ABbr is an evidence
claim which indicates that the combination does not rely upon the specific details of the subcombination for its patentability. If a restriction requirement can be properly made between combination ABbr and
subcombination Bsp, any claim to combinationABsp would be grouped with combination ABbr.
If the combination claims are amended after a restriction requirement such that each combination, as claimed, requires all the limitations of the subcombination as claimed, i.e., if the evidence claim ABbr is deleted or amended to require Bsp, the
restriction requirement between the combination and subcombination should not be maintained.
If a claim to Bsp is determined to be allowable, any
claims requiring Bsp, including any combination
claims of the format ABsp, must be considered for
rejoinder. See MPEP § 821.04.
III. PLURAL COMBINATIONS REQUIRING A SUBCOMBINATION COMMON TO EACH COMBINATION
When an application includes a claim to a single subcombination, and that subcombination is required by plural claimed combinations that are properly restrictable, the subcombination claim is a linking claim and will be examined with the elected combination (see MPEP § 809.03). The subcombination claim links the otherwise restrictable combination inventions and should be listed in form paragraph 8.12. The claimed plural combinations are evidence that the subcombination has utility in more than one combination. Restriction between plural combinations may be made using form paragraph 8.14.01. See MPEP § 806.05(j).
806.05(d) Subcombinations Usable Together [R-08.2012]
Two or more claimed subcombinations, disclosed as usable together in a single combination, and which can be shown to be separately usable, are usually restrictable when the subcombinations do not overlap in scope and are not obvious variants.
To support a restriction requirement where applicant separately claims plural subcombinations usable together in a single combination and claims a combination that requires the particulars of at least one of said subcombinations, both two-way distinctness and reasons for insisting on restriction are necessary. Each subcombination is distinct from the combination as claimed if:
(A) the combination does not require the particulars of the subcombination as claimed for patentability (e.g., to show novelty and unobviousness), and
(B) the subcombination can be shown to have utility either by itself or in another materially different combination.
See MPEP § 806.05(c). Furthermore, restriction is only proper when there would be a serious burden if restriction were not required, as evidenced by separate classification, status, or field of search.
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Where claims to two or more subcombinations are presented along with a claim to a combination that includes the particulars of at least two subcombinations, the presence of the claim to the second subcombination is evidence that the details of the first subcombination are not required for patentability (and vice versa). For example, if an application claims ABC/B/C wherein ABC is a combination claim and B and C are each subcombinations that are properly restrictable from each other, the presence of a claim to C provides evidence that the details of B are not required for the patentability of combination ABC.
Upon determining that all claims directed to an elected combination invention are allowable, the examiner must reconsider the propriety of the restriction requirement. Where the combination is allowable in view of the patentability of at least one of the subcombinations, the restriction requirement between the elected combination and patentable subcombination(s) will be withdrawn; furthermore, any subcombinations that were searched and determined to be allowable must also be rejoined. If a subcombination is elected and determined to be allowable, nonelected claims requiring all the limitations of the allowable claim will be rejoined in accordance with MPEP § 821.04.
Form paragraph 8.16 may be used in restriction requirements between subcombinations.
¶ 8.16 Subcombinations, Usable Together
Inventions [1] and [2] are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case subcombination [3] has separate utility such as [4]. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Examiner Note:
1. This form paragraph is to be used when claims are presented to subcombinations usable together (MPEP § 806.05(d)).
2. In bracket 3, insert the appropriate group number or identify the subcombination.
3. In bracket 4, suggest utility other than with the other subcombination.
4. Conclude restriction requirement with form paragraph 8.21.
The examiner must show, by way of example, that one of the subcombinations has utility other than in the disclosed combination.
Care must be taken to determine if the subcombinations are generically claimed.
Where subcombinations as disclosed and claimed are both (a) species under a claimed genus and (b) related, then the question of restriction must be determined by both the practice applicable to election of species and the practice applicable to related inventions. If restriction is improper under either practice, it should not be required (MPEP § 806.04(b)).
If applicant proves or provides an argument, supported by facts, that the other use, suggested by the examiner, cannot be accomplished or is not reasonable, the burden is on the examiner to document a viable alternative use or withdraw the requirement.
806.05(e) Process and Apparatus for Its Practice [R-08.2012]
Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process as claimed can be practiced by another materially different apparatus or by hand; or (B) that the apparatus as claimed can be used to practice another materially different process.
Form paragraph 8.17 may be used to make restriction requirements between process and apparatus.
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§ 806.05(e)RESTRICTION IN APPLICATIONS FILED UNDER 35 U.S.C. 111; DOUBLE PATENTING
¶ 8.17 Process and Apparatus
Inventions [1] and [2] are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another materially different process. (MPEP § 806.05(e)). In this case [3].
Examiner Note:
1. This form paragraph is to be used when claims are presented to both a process and apparatus for its practice (MPEP § 806.05(e)).
2. In bracket 3, use one or more of the following reasons:
(a) --the process as claimed can be practiced by another materially different apparatus such as......--,
(b) --the process as claimed can be practiced by hand--,
(c) --the apparatus as claimed can be used to practice another materially different process such as......--.
3. A process can be practiced by hand if it can be performed without using any apparatus.
4. Conclude restriction requirement with form paragraph 8.21.
5. All restriction requirements between a process and an apparatus (or product) for practicing the process should be followed by form paragraph 8.21.04 to notify the applicant that if an apparatus claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable apparatus may be rejoined.
The burden is on the examiner to provide reasonable examples that recite material differences.
If applicant proves or provides convincing argument that there is no material difference or that a process cannot be performed by hand (if examiner so argued), the burden is on the examiner to document another materially different process or apparatus or withdraw the requirement.
806.05(f) Process of Making and Product Made [R-08.2012]
A process of making and a product made by the process can be shown to be distinct inventions if either or both of the following can be shown: (A) that the process as claimed is not an obvious process of making the product and the process as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different process.
Allegations of different processes or products need not be documented.
A product defined by the process by which it can be made is still a product claim ( In re Bridgeford, 357 F.2d 679, 149 USPQ 55 (CCPA 1966)) and can be restricted from the process if the examiner can demonstrate that the product as claimed can be made by another materially different process; defining the product in terms of a process by which it is made is nothing more than a permissible technique that applicant may use to define the invention.
If applicant convincingly traverses the requirement, the burden shifts to the examiner to document a viable alternative process or product, or withdraw the requirement.
Form paragraphs 8.18 and 8.21.04 should be used in restriction requirements between product and process of making.
¶ 8.18 Product and Process of Making
Inventions [1] and [2] are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another materially different product or (2) that the product as claimed can be made by another materially different process (MPEP § 806.05(f)). In the instant case [3].
Examiner Note:
1. This form paragraph is to be used when claims are presented to both a product and the process of making the product (MPEP § 806.05(f)).
2. In bracket 3, use one or more of the following reasons:
(a) --the process as claimed can be used to make a materially different product such as......--,
(b) --the product as claimed can be made by a materially different process such as......--.
3. Conclude the basis for the restriction requirement with form paragraph 8.21.
4. All restriction requirements between a product and a process of making the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable product may be rejoined.
¶ 8.21.04 Notice of Potential Rejoinder of Process Claims
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the
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product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Examiner Note:
This form paragraph should appear at the end of any requirement for restriction between a process and a product/apparatus for practicing the process (see form paragraph 8.17), a product/apparatus and a process of making the product/apparatus (see form paragraph 8.18) or between a product/apparatus and a process of using the product/apparatus (see form paragraph 8.20). See MPEP § 821.04 for rejoinder practice.
806.05(g) Apparatus and Product Made [R-08.2012]
An apparatus and a product made by the apparatus can be shown to be distinct inventions if either or both of the following can be shown: (A) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different apparatus.
Form paragraph 8.19 may be used for restriction requirements between apparatus and product made.
¶ 8.19 Apparatus and Product Made
Inventions [1] and [2] are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another materially different apparatus (MPEP § 806.05(g)). In this case [3].
Examiner Note:
1. This form paragraph is to be used when claims are presented to both the apparatus and product made (MPEP § 806.05(g)).
2. In bracket 3, use one or more of the following reasons:
(a) --the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make a different product such as......--,
(b) --the product can be made by a materially different apparatus such as......--.
3. Conclude restriction requirement with form paragraph 8.21.
The examiner must show by way of example either (A) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product or (B) that the product as claimed can be made by another materially different apparatus.
The burden is on the examiner to provide an example, but the example need not be documented.
If applicant either proves or provides convincing argument that the alternative example suggested by the examiner is not workable, the burden is on the examiner to suggest another viable example or withdraw the restriction requirement.
806.05(h) Product and Process of Using [R-08.2012]
A product and a process of using the product can be shown to be distinct inventions if either or both of the following can be shown: (A) the process of using as claimed can be practiced with another materially different product; or (B) the product as claimed can be used in a materially different process.
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§ 806.05(h)RESTRICTION IN APPLICATIONS FILED UNDER 35 U.S.C. 111; DOUBLE PATENTING
The burden is on the examiner to provide an example, but the example need not be documented.
If the applicant either proves or provides a convincing argument that the alternative use suggested by the examiner cannot be accomplished, the burden is on the examiner to support a viable alternative use or withdraw the requirement.
Form paragraphs 8.20 and 8.21.04 should be used in restriction requirements between the product and method of using.
¶ 8.20 Product and Process of Using
Inventions [1] and [2] are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case [3].
Examiner Note:
1. This form paragraph is to be used when claims are presented to both the product and process of using the product (MPEP § 806.05(h). If claims to a process specially adapted for (i.e., not patentably distinct from) making the product are also presented such process of making claims should be grouped with the product invention. See MPEP § 806.05(i).
2. In bracket 3, use one or more of the following reasons:
(a) --the process as claimed can be practiced with another materially different product such as......--,
(b) --the product as claimed can be used in a materially different process such as......--.
3. Conclude the basis for the restriction requirement with form paragraph 8.21.
4. All restriction requirements between a product and a process of using the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable product may be rejoined.
¶ 8.21.04 Notice of Potential Rejoinder of Process Claims
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Examiner Note:
This form paragraph should appear at the end of any requirement for restriction between a process and a product/apparatus for practicing the process (see form paragraph 8.17), a product/apparatus and a process of making the product/apparatus (see form paragraph 8.18) or between a product/apparatus and a process of using the product/apparatus (see form paragraph 8.20). See MPEP § 821.04 for rejoinder practice.
806.05(i) Product, Process of Making, and Process of Using [R-08.2012]
37 CFR 1.141 Different inventions in one national application.
*****
(b) Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made.
Where an application contains claims to a product, claims to a process specially adapted for (i.e., not patentably distinct from, as defined in MPEP § 806.05(f)) making the product, and claims to a process of using the product, applicant may be required to elect either (A) the product and process of making it; or (B) the process of using. If the examiner cannot make a showing of distinctness between the process of using and the product (MPEP § 806.05(h)), restriction cannot be required.
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Form paragraph 8.20 (See MPEP § 806.05(h)) may be used in product, process of making and process of using situations where the product cannot be restricted from the process of making the product.
See MPEP § 821.04(b) for rejoinder practice pertaining to product and process inventions.
806.05(j) Related Products; Related Processes [R-08.2012]
To support a requirement for restriction between two or more related product inventions, or between two or more related process inventions, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., separate classification, status in the art, or field of search. See MPEP § 808.02. See MPEP § 806.05(c) for an explanation of the requirements to establish two-way distinctness as it a p p l i e s t o i n v e n t i o n s i n a combination/subcombination relationship. For other related product inventions, or related process inventions, the inventions are distinct if
(A) the inventions as claimed do not overlap in scope, i.e., are mutually exclusive;
(B) the inventions as claimed are not obvious variants; and
(C) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect. See MPEP § 802.01.
The burden is on the examiner to provide an example to support the determination that the inventions are distinct, but the example need not be documented. If applicant either proves or provides convincing evidence that the example suggested by the examiner is not workable, the burden is on the examiner to suggest another viable example or withdraw the restriction requirement.
As an example, an intermediate product and a final product can be shown to be distinct inventions if the intermediate and final products are mutually exclusive inventions (not overlapping in scope) that are not obvious variants, and the intermediate product as claimed is useful to make other than the final product as claimed. Typically, the intermediate
loses its identity in the final product. See also MPEP § 806.05(d) for restricting between combinations disclosed as usable together. See MPEP § 809 - § 809.03 if a generic claim or claim linking multiple products or multiple processes is present.
Form paragraph 8.14.01 may be used to restrict between related products or related processes; form paragraph 8.14 may be used in intermediate-final product restriction requirements; form paragraph 8.16 may be used to restrict between subcombinations.
¶ 8.14.01 Distinct Products or Distinct Processes
Inventions [1] and [2] are directed to related [3]. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed [4]. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Examiner Note:
1. This form paragraph may be used when claims are presented to two or more related product inventions, or two or more related process inventions, wherein the inventions as claimed are mutually exclusive, i.e., there is no product (or process) that would infringe both of the identified inventions. Use form paragraph 8.15 to restrict between combination(s) and subcombination(s).
2. If a generic claim or claim linking multiple product inventions or multiple process inventions is present, see MPEP § 809 - § 809.03.
3. In bracket 3, insert --products -- or --processes--.
4. In bracket 4, explain why the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect.
5. Conclude restriction requirement with form paragraph 8.21.
¶ 8.14 Intermediate-Final Product
Inventions [1] and [2] are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as [3] and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
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§ 806.05(j)RESTRICTION IN APPLICATIONS FILED UNDER 35 U.S.C. 111; DOUBLE PATENTING
Examiner Note:
1. This form paragraph is to be used when claims are presented to both an intermediate and final product (MPEP § 806.05(j)).
2. Conclude restriction requirement with form paragraph 8.21.
¶ 8.16 Subcombinations, Usable Together
Inventions [1] and [2] are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case subcombination [3] has separate utility such as [4]. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Examiner Note:
1. This form paragraph is to be used when claims are presented to subcombinations usable together (MPEP § 806.05(d)).
2. In bracket 3, insert the appropriate group number or identify the subcombination.
3. In bracket 4, suggest utility other than with the other subcombination.
4. Conclude restriction requirement with form paragraph 8.21.
806.06 Independent Inventions [R-08.2012]
Inventions as claimed are independent if there is no disclosed relationship between the inventions, that is, they are unconnected in design, operation, and effect. If it can be shown that two or more inventions are independent, and if there would be a serious burden on the examiner if restriction is not required, applicant should be required to restrict the claims presented to one of such independent inventions. For example:
(A) Two different combinations, not disclosed as capable of use together, having different modes of operation, different functions and different effects are independent. An article of apparel and a locomotive bearing would be an example. A process
of painting a house and a process of boring a well would be a second example.
(B) Where the two inventions are process and apparatus, and the apparatus cannot be used to practice the process or any part thereof, they are independent. A specific process of molding is independent from a molding apparatus that cannot be used to practice the specific process.
Form paragraph 8.20.02 may be used to restrict between independent, unrelated inventions. Form paragraph 8.20.03 may be used to restrict between an unrelated product and process.
¶ 8.20.02 Unrelated Inventions
Inventions [1] and [2] are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together, and they have different designs, modes of operation, and effects. (MPEP § 802.01 and MPEP § 806.06). In the instant case, the different inventions [3] .
Examiner Note:
1. This form paragraph is to be used only when claims are presented to unrelated inventions, e. g., a necktie and a locomotive bearing not disclosed as capable of use together.
2. In bracket 3, insert reasons for concluding that the inventions are unrelated.
3. This form paragraph must be followed by form paragraph 8.21.
¶ 8.20.03 Unrelated Product and Process Inventions
Inventions [1] and [2] are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06. In the instant case, [3] .
Examiner Note:
1. In bracket 3, insert reasons for concluding that the inventions are unrelated.
2. This form paragraph must be followed by form paragraph 8.21.
807 Patentability Report Practice Has No Effect on Restriction Practice [R-08.2012]
Patentability report practice (MPEP § 705), has no effect upon, and does not modify in any way, the practice of restriction, being designed merely to
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facilitate the handling of cases in which restriction cannot properly be required.
808 Reasons for Insisting Upon Restriction [R-08.2012]
Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction is not required, i.e., the reasons for insisting upon restriction therebetween as set forth in the following sections.
808.01 Reasons for Holding of Independence or Distinctness [R-08.2012]
The particular reasons relied on by the examiner for holding that the inventions as claimed are either independent or distinct should be concisely stated. A mere statement of conclusion is inadequate. The reasons upon which the conclusion is based should be given.
For example, relative to a combination and a subcombination thereof, the examiner should point out the reasons why he or she considers the subcombination to have utility by itself or in other combinations, and why he or she considers that the combination as claimed does not require the particulars of the subcombination as claimed.
Each relationship of claimed inventions should be similarly treated and the reasons for the conclusions of distinctness or independence set forth. Form paragraphs 8.01, 8.02, and 8.14 - 8.20.02 may be used as appropriate to explain why the inventions as claimed are independent or distinct. See MPEP § 806.05 - § 806.06.
808.01(a) Species [R-08.2012]
Where there is no disclosure of a relationship between species (see MPEP § 806.04(b)), they are independent inventions. A requirement for restriction is permissible if there is a patentable difference between the species as claimed and there would be
a serious burden on the examiner if restriction is not required. See MPEP § 803 and § 808.02.
Where there is a relationship disclosed between species, such disclosed relation must be discussed and reasons advanced leading to the conclusion that the disclosed relation does not prevent restriction, in order to establish the propriety of restriction.
When a requirement for restriction between either independent or distinct species is made, applicant must elect a single disclosed species even if applicant disagrees with the examiner’s restriction requirement.
Election of species should not be required between claimed species that are considered clearly unpatentable (obvious) over each other. In making a requirement for restriction in an application claiming plural species, the examiner should group together species considered clearly unpatentable over each other.
Election of species may be required prior to a search on the merits (A) in applications containing claims to a plurality of species with no generic claims, and (B) in applications containing both species claims and generic or Markush claims.
In applications where only generic claims are presented, restriction cannot be required unless the generic claims recite or encompass such a multiplicity of species that an unduly extensive and burdensome search would be necessary to search the entire scope of the claim. See MPEP § 803.02 and § 809.02(a). If applicant presents species claims to more than one patentably distinct species of the invention after an Office action on only generic claims, with no restriction requirement, the Office may require the applicant to elect a single species for examination.
In all applications where a generic claim is found allowable, the application should be treated as indicated in MPEP § 809 and § 821.04(a). See MPEP
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§ 803.02 and § 809.02(a) for guidance regarding how to require restriction between species.
808.02 Establishing Burden [R-08.2012]
Where, as disclosed in the application, the several inventions claimed are related, and such related inventions are not patentably distinct as claimed, restriction under 35 U.S.C. 121 is never proper (MPEP § 806.05). If applicant voluntarily files claims to such related inventions in different applications, double patenting may be held.
Where the inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) - § 806.06, the examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious burden on the examiner if restriction is not required. Thus the examiner must show by appropriate explanation one of the following:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Where, however, the classification is the same and the field of search is the same and there is no clear
indication of separate future classification and field of search, no reasons exist for dividing among independent or related inventions.
809 Linking Claims [R-08.2012]
There are a number of situations which arise in which an application has claims to two or more properly divisible inventions, so that a requirement to restrict the claims of the application to one would be proper, but presented in the same case are one or more claims (generally called “linking” claims) which, if allowable, would require rejoinder of the otherwise divisible inventions. See MPEP § 821.04 for information pertaining to rejoinder practice.
Linking claims and the inventions they link together are usually either all directed to products or all directed to processes (i.e., a product claim linking properly divisible product inventions, or a process claim linking properly divisible process inventions). The most common types of linking claims which, if allowable, act to prevent restriction between inventions that can otherwise be shown to be divisible, are
(A) genus claims linking species claims; and
(B) subcombination claims linking plural combinations.
Where an application includes claims to distinct inventions as well as linking claims, restriction can nevertheless be required.
The linking claims must be examined with, and thus are considered part of, the invention elected. When all claims directed to the elected invention are allowable, should any linking claim be allowable, the restriction requirement between the linked inventions must be withdrawn. Any claim(s) directed to the nonelected invention(s), previously withdrawn from consideration, which depends from or requires all the limitations of the allowable linking claim must be rejoined and will be fully examined for patentability. Where the requirement for restriction in an application is predicated upon the nonallowability of generic or other type of linking claims, applicant is entitled to retain in the application claims to the nonelected invention or inventions. Where such withdrawn claims have been
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canceled by applicant pursuant to the restriction requirement, upon the allowance of the linking claim(s), the examiner must notify applicant that any canceled, nonelected claim(s) which depends from or requires all the limitations of the allowable linking claim may be reinstated by submitting the claim(s) in an amendment. Upon entry of the amendment, the amended claim(s) will be fully examined for patentability. See MPEP § 821.04 for additional information regarding rejoinder.
809.01 [Reserved]
809.02 [Reserved]
809.02(a) Election of Species Required [R-08.2012]
Where restriction between species is appropriate (see MPEP § 808.01(a)) the examiner should send a letter including only a restriction requirement or place a telephone requirement to restrict (the latter being encouraged). See MPEP § 812.01 for telephone practice in restriction requirements.
Action as follows should be taken:
(A) Identify generic claims or indicate that no generic claims are present. See MPEP § 806.04(d) for definition of a generic claim.
(B) Clearly identify each (or in aggravated cases at least exemplary ones) of the disclosed species, to which claims are to be restricted. The species are preferably identified as the species of figures 1, 2, and 3 or the species of examples I, II, and III, respectively. In the absence of distinct figures or examples to identify the several species, the mechanical means, the particular material, or other distinguishing characteristic of the species should be stated for each species identified. If the species cannot be conveniently identified, the claims may be grouped in accordance with the species to which they are restricted. Provide reasons why the species are independent or distinct.
(C) Applicant should then be required to elect a single disclosed species under 35 U.S.C. 121, and
advised as to the requisites of a complete reply and his or her rights under 37 CFR 1.141.
To be complete, a reply to a requirement made according to this section should include a proper election along with a listing of all claims readable thereon, including any claims subsequently added.
In those applications wherein a requirement for restriction is accompanied by an action on the elected claims, such action will be considered to be an action on the merits and the next action may be made final where appropriate in accordance with MPEP § 706.07(a).
For treatment of claims held to be drawn to nonelected inventions, see MPEP § 821 et seq.
¶ 8.01 Election of Species; Species Claim(s) Present
This application contains claims directed to the following patentably distinct species [1]. The species are independent or distinct because [2].
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, [3] generic.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4].
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them
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to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Examiner Note:
1. In bracket 1, identify the species and/or grouping(s) of patentably indistinct species from which an election is to be made. The species may be identified as the species of figures 1, 2, and 3, for example, or the species of examples I, II, and III, respectively. Where the election requirement identifies a grouping of patentably indistinct species, applicant should not be required to elect a specific species within that grouping.
2. In bracket 2 insert the reason(s) why the species or grouping(s) of species are independent or distinct. See MPEP § 806.04(b), § 806.04(f) and § 806.04(h). For example, insert --the claims to the different species recite the mutually exclusive characteristics of such species--, and provide a description of the mutually exclusive characteristics of each species or grouping of species.
3. In bracket 3 insert the appropriate generic claim information.
4. In bracket 4 insert the applicable reason(s) why there is a search and/or examination burden:
--the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification
--the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter
--the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
5. This form paragraph does not need to be followed by form paragraph 8.21.
¶ 8.02 Requiring an Election of Species; No Species Claim Present
Claim(s) [1] is/are generic to the following disclosed patentably distinct species: [2]. The species are independent or distinct because [3]. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4]
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Examiner Note:
1. This form paragraph should be used for the election of species requirement described in MPEP § 803.02 (Markush group) and MPEP § 808.01(a) where only generic claims are presented.
2. In bracket 1, insert the claim number(s).
3. In bracket 2, clearly identify the species and/or grouping(s) of patentably indistinct species from which an election is to be made. The species may be identified as the species of figures 1, 2, and 3, for example, or the species of examples I, II, and III, respectively. Where the election requirement identifies a grouping of patentably indistinct species, applicant should not be required to elect a specific species within that grouping.
4. In bracket 3 insert the reason(s) why the species or groupings of species as disclosed are independent or distinct. See MPEP § 806.04(b), § 806.04(f) and MPEP § 806.04(h). For example, insert --as disclosed the different species have mutually exclusive characteristics for each identified species--, and
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provide a description of the mutually exclusive characteristics of each species or grouping of species.
5. In bracket 4 insert the applicable reason(s) why there is a search and/or examination burden:
--the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification
--the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter
--the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
6. This form paragraph does not need to be followed by form paragraph 8.21.
809.03 Restriction Between Linked Inventions [R-07.2015]
Where an application includes two or more otherwise properly divisible inventions that are linked by a claim which, if allowable, would require rejoinder (See MPEP § 809 and § 821.04), the examiner should require restriction, either by a written Office action that includes only a restriction requirement or by a telephoned requirement to restrict (the latter being encouraged). Examiners should use form paragraph 8.12 to make restrictions involving linking claims when the linking claim is other than a genus claim linking species inventions. When the linking claim is a genus claim linking species inventions, examiners should use form paragraph 8.01 or 8.02 (see MPEP § 809.02(a)).
¶ 8.12 Restriction, Linking Claims
Claim [1] link(s) inventions [2] and [3]. The restriction requirement [4] the linked inventions is subject to the nonallowance of the linking claim(s), claim [5]. Upon the indication of allowability of the linking claim(s), the restriction requirement as to the linked inventions shall be withdrawn and any claim(s) depending from or otherwise requiring all the limitations of the allowable linking claim(s) will be rejoined and fully examined for patentability in accordance with 37 CFR 1.104. Claims that require all the limitations of an allowable linking claim will be entered as a matter of right if the amendment is presented prior to final rejection or allowance, whichever is earlier. Amendments submitted after final rejection are governed by 37 CFR 1.116; amendments submitted after allowance are governed by 37 CFR 1.312.
Applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or
includes all the limitations of, the allowable linking claim, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. This form paragraph must be included in any restriction requirement with at least one linking claim present.
2. In bracket 4, insert either --between-- or --among--.
3. In bracket 5, insert the claim number(s) of the linking claims.
4. See related form paragraphs 8.45, 8.46 and 8.47.
Where the requirement for restriction in an application is predicated upon the nonallowability of generic or other type of linking claims, applicant is entitled to retain in the application claims to the nonelected invention or inventions.
For traverse of a restriction requirement with linking claims, see MPEP § 818.01(d).
For treatment of claims held to be drawn to nonelected inventions, see MPEP § 821 et seq.
810 Action on the Merits [R-07.2015]
In general, in an application when only a nonfinal written requirement to restrict is made, no action on the merits is given. A 2-month shortened statutory period will be set for reply when a written restriction requirement is made without an action on the merits. This period may be extended under the provisions of 37 CFR 1.136(a). The Office action making the restriction requirement final also ordinarily includes an action on the merits of the claims of the elected invention. See 37 CFR 1.143. In those applications wherein a requirement for restriction is made via telephone and applicant makes an oral election of a single invention, the written record of the restriction requirement will be accompanied by a complete action on the merits of the elected claims. See MPEP § 812.01. The restriction requirement, should be made final as soon as reasonably possible. If the election is made with traverse, it is proper to make
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the restriction requirement final after consideration of the reasons for traversal. See MPEP § 821.01.
811 Time for Making Requirement [R-07.2015]
37 CFR 1.142(a), second sentence, indicates that a restriction requirement “will normally be made before any action upon the merits; however, it may be made at any time before final action.” This means the examiner should make a proper requirement as early as possible in the prosecution, in the first action if possible, otherwise, as soon as the need for a proper requirement develops.
Before requiring restriction of claims previously examined on the merits, the examiner must consider whether there will be a serious burden if restriction is not required.
811.01 [Reserved]
811.02 New Requirement After Compliance With Preceding Requirement [R-08.2012]
Since 37 CFR 1.142(a) provides that restriction is proper at any stage of prosecution up to final action, a second requirement may be made when it becomes proper, even though there was a prior requirement with which applicant complied. Ex parte Benke, 1904 C.D. 63, 108 OG 1588 (Comm’r Pat. 1904).
811.03 Repeating After Withdrawal Proper [R-08.2012]
Where a requirement to restrict is made and thereafter withdrawn as improper, if restriction becomes proper at a later stage in the prosecution, restriction may again be required.
811.04 Proper Even Though Grouped Together in Parent Application [R-08.2012]
Even though inventions are grouped together in a requirement in a parent application, restriction or
election among the inventions may be required in the divisional applications, if proper.
812 Who Should Make the Requirement [R-08.2012]
The requirement should be made by an examiner who would examine at least one of the inventions.
An examiner should not require restriction in an application if none of the claimed inventions is classifiable in his or her Technology Center. Such an application should be transferred to a Technology Center wherein at least one of the claimed inventions would be examined.
812.01 Telephone Restriction Practice [R-07.2015]
If an examiner determines that a requirement for restriction should be made in an application, the examiner should formulate a draft of such restriction requirement including an indication of those claims considered to be linking and/or generic. Thereupon, the examiner should telephone the attorney or agent of record and request an oral election, with or without traverse. The examiner should arrange for a second telephone call within a reasonable time, generally within 3 working days, to provide time for the attorney or agent to consider the requirement. If the attorney or agent objects to making an oral election, or fails to respond, a restriction requirement will be mailed, and should contain reference to the unsuccessful telephone call. When an oral election is made, the examiner will then proceed to incorporate into the next Office action a formal restriction requirement including the date of the election, the attorney’s or agent’s name, and a complete record of the telephone interview, followed by a complete action on the elected invention as claimed, including linking and/or generic claims if present. However, no telephone communication need be made where the requirement for restriction is complex, the application is being prosecuted by the applicant pro se, or the examiner knows from past experience that an election will not be made by telephone.
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Form paragraphs 8.23 or 8.23.01 should be used to make a telephone election of record.
¶ 8.23 Requirement, When Elected by Telephone
During a telephone conversation with [1] on [2] a provisional election was made [3] traverse to prosecute the invention of [4], claim [5]. Affirmation of this election must be made by applicant in replying to this Office action. Claim [6] withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Examiner Note:
1. In bracket 3, insert --with-- or --without--, whichever is applicable.
2. In bracket 4, insert either the elected group or species.
3. An action on the merits of the claims to the elected invention should follow.
¶ 8.23.01 Requirement, No Election by Telephone
A telephone call was made to [1] on [2] to request an oral election to the above restriction requirement, but did not result in an election being made.
Examiner Note:
1. In bracket 1, insert the name of the applicant or attorney or agent contacted.
2. In bracket 2, insert the date(s) of the telephone contact(s).
3. This form paragraph should be used in all instances where a telephone election was attempted and the applicant’s representative did not or would not make an election.
4. This form paragraph should not be used if no contact was made with applicant or applicant’s representative.
If, on examination, the examiner finds the claims to an invention elected without traverse to be allowable and no nonelected invention is eligible for rejoinder (see MPEP § 821.04), the restriction requirement should be attached to the Notice of Allowability form PTOL-37 and should include cancellation of the nonelected claims, a statement that the prosecution is closed, and that a notice of allowance will be sent in due course. Correction of formal matters in the above-noted situation which cannot be handled by a telephone call and thus requires action by the applicant should be handled under the
Ex parte Quayle practice, using Office Action Summary form PTOL-326.
Should the elected invention as claimed be found allowable in the first action, and an oral traverse was noted, the examiner should include in his or her
action a statement under MPEP § 821.01, making the restriction requirement final and giving applicant two months to either cancel the claims drawn to the nonelected invention or take other appropriate action. (37 CFR 1.144). Failure to take action will be treated as an authorization to cancel the nonelected claims by an examiner’s amendment and pass the application to issue. Prosecution of the application is otherwise closed.
In either situation (traverse or no traverse), caution should be exercised to determine if any of the allowable claims are linking and/or generic claims, or if any nonelected inventions are eligible for rejoinder (see MPEP § 821.04), before canceling claims drawn to the nonelected invention.
Where the respective inventions would be examined in different Technology Centers (TCs), the requirement for restriction should be made only after consultation with and approval by all TCs involved. If an oral election would cause the application to be examined in another TC, the initiating TC should transfer the application with appropriate documentation of the restriction requirement and a record of the interview. The receiving TC will incorporate the substance of this documentation in the next Office action as indicated above. Differences as to restriction should be settled by the existing chain of command, e.g., supervisory patent examiner or TC director.
This practice is limited to use by examiners who have at least negotiation authority. Other examiners must have the prior approval of their supervisory patent examiner.
813 [Reserved]
814 Indicate Exactly How Application Is To Be Restricted [R-07.2015]
The examiner must provide a clear and detailed record of the restriction requirement to provide a clear demarcation between restricted inventions so that it can be determined whether inventions claimed in a continuing application are consonant with the restriction requirement and therefore subject to the
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prohibition against double patenting rejections under 35 U.S.C. 121. Geneva Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1871 (Fed. Cir. 2003). See also MPEP § 804.01.
I. SPECIES
The mode of indicating how to require restriction between species is set forth in MPEP § 809.02(a).
The particular limitations in the claims and the reasons why such limitations are considered to support restriction of the claims to a particular disclosed species should be mentioned if necessary to make the requirement clear. Form paragraph 8.01 or 8.02 may be used to require an election of species.
II. INVENTIONS OTHER THAN SPECIES
It is necessary to read all of the claims to determine what the claims cover. When doing this, the claims directed to each separate invention should be noted along with a statement of the invention to which they are drawn.
In setting forth the restriction requirement, separate inventions should be identified by a grouping of the claims with a short description of the total extent of the invention claimed in each group, specifying the type or relationship of each group as by stating the group is drawn to a process, or to a subcombination, or to a product, etc., and should indicate the classification or separate status of each group, as for example, by class and subclass. See MPEP § 817 for additional guidance.
While every claim should be accounted for, the omission to group a claim, or placing a claim in the wrong group will not affect the propriety of a final requirement where the requirement is otherwise proper and the correct disposition of the omitted or erroneously grouped claim is clear.
III. LINKING CLAIMS
The generic or other linking claims should not be associated with any one of the linked inventions
since such claims must be examined with the elected linked invention. See MPEP § 809.
815 Make Requirement Complete [R-08.2012]
When making a restriction requirement every effort should be made to have the requirement complete. If some of the claimed inventions are classifiable in another art unit and the examiner has any doubt as to the proper line among the same, the application should be referred to the examiner of the other art unit for information on that point and such examiner should render the necessary assistance.
816 [Reserved]
817 Outline of Letter for Restriction Requirement [R-07.2015]
The following outline should be used to set forth a requirement to restrict.
OUTLINE OF RESTRICTION REQUIREMENT
(A) Statement of the requirement to restrict and that it is being made under 35 U.S.C. 121.
(1) Identify each group by Roman numeral.
(2) List claims in each group. Check accuracy of numbering of the claims; look for same claims in two groups; and look for omitted claims.
(3) Give short description of total extent of the subject matter claimed in each group, pointing out critical claims of different scope and identifying whether the claims are directed to a combination, subcombination, process, apparatus, or product.
(4) Classify each group.
Form paragraphs 8.08-8.11 should be used to group inventions.
¶ 8.08 Restriction, Two Groupings
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claim [1], drawn to [2], classified in [3].
II. Claim [4], drawn to [5], classified [6].
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Examiner Note:
In brackets 3 and 6, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.
¶ 8.09 Restriction, 3rd Grouping
III. Claim [1], drawn to [2], classified in [3].
Examiner Note:
In bracket 3, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.
¶ 8.10 Restriction, 4th Grouping
IV. Claim [1], drawn to [2], classified in [3].
Examiner Note:
In bracket 3, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.
¶ 8.11 Restriction, Additional Groupings
[1]. Claim [2], drawn to [3], classified in [4].
Examiner Note:
1. In bracket 1, insert the appropriate roman numeral, e.g., --V--, --VI--, etc.
2. In bracket 4, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.
If restriction is required between species, form paragraph 8.01 or 8.02 should be used to set forth the species from which applicant is required to elect and the reasons for holding the species to be independent or distinct. See MPEP § 809.02(a).
(B) Take into account claims not grouped, indicating their disposition.
(1) Linking claims
(i) Identify
(ii) Statement of groups to which linking claims may be assigned for examination
(2) Other ungrouped claims
(3) Indicate disposition, e.g., improperly dependent, canceled, etc.
(C) Allegation of independence or distinctness
(1) Point out facts which show independence or distinctness
(2) Treat the inventions as claimed, don’t merely state the conclusion that inventions in fact are independent or distinct, e.g.,
(i) Subcombination - Subcombination disclosed as usable together
Each usable alone or in other identified combination
Demonstrate by examiner’s suggestion
(ii) Combination - Subcombination
Combination as claimed does not require subcombinationAND subcombination usable alone or in other combination
(iii) Process - Apparatus
Process can be carried out by hand or by other apparatus
Demonstrate by examiner’s suggestion OR Demonstrate apparatus can be used in other process (rare)
(iv) Process of making and/or Apparatus for making - Product made
Claimed product can be made by other process (or apparatus)
Demonstrate by examiner’s suggestion OR Demonstrate process of making (or apparatus for making) can produce other product (rare)
(v) Process of making - Process of using
Product used in claimed process can be made by process materially different from that claimed
Demonstrate by examiner’s suggestion
OR
Product made by claimed process of making can be used in a process materially different from that claimed
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§ 817RESTRICTION IN APPLICATIONS FILED UNDER 35 U.S.C. 111; DOUBLE PATENTING
Demonstrate by examiner’s suggestion.
(D) Provide reasons for insisting upon restriction
(1) Separate status in the art
(2) Different classification
(3) Same classification but recognition of divergent subject matter
(4) Divergent fields of search, or
(5) Search required for one group not required for the other
(E) Summary statement
(1) Summarize (i) independence or distinctness and (ii) reasons for insisting upon restriction
(2) Include paragraph advising as to reply required
(3) Indicate effect of allowance of linking claims, if any present
(4) Indicate effect of cancellation of evidence claims (see MPEP § 806.05(c))
(5) Indicate effect of allowance of product claims if restriction was required between a product and a process of making and/or using the product.
Form paragraphs 8.14-8.20.02 may be used as appropriate to set forth the reasons for the holding of independence or distinctness. Form paragraph 8.13 may be used as a heading.
¶ 8.13 Distinctness (Heading)
The inventions are independent or distinct, each from the other because:
Examiner Note:
This form paragraph should be followed by one of form paragraphs 8.14-8.20.02 to show independence or distinctness.
Form paragraph 8.21 must be used at the conclusion of all restriction requirements other than those containing only election of species, with or without an action on the merits.
¶ 8.21 To Establish Burden AND Requirement for Election and Means for Traversal for all Restrictions, other than an Election of Species
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
[1].
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Examiner Note:
1. THIS FORM PARAGRAPH MUST BE ADDED TO ALL RESTRICTION REQUIREMENTS other than those containing only election of species, with or without an action on the merits. This form paragraph only needs to be used once, after all restriction requirements are set out.
2. In bracket 1 insert the applicable reason(s) why there is a search and/or examination burden:
--the inventions have acquired a separate status in the art in view of their different classification
--the inventions have acquired a separate status in the art due to their recognized divergent subject matter
--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
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¶ 8.27.aia Different Inventors, Common Assignee, Same Invention, Examined under First Inventor To File (FITF) Provisions of the AIA
Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. Under 35 U.S.C. 101, more than one patent may not be issued on the same invention.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). The applicant should amend or cancel claims such that the applications no longer contain claims directed to the same invention.
Examiner Note:
1. Form paragraph 7.03.aia must be included in any Office action that contains this paragraph.
2. In bracket 3, insert the U.S. patent number or the copending application number.
3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.aia.
4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.
5. If the commonly assigned application or patent has an earlier effective filing date in accordance with 35 U.S.C. 100(i), a rejection under 35 U.S.C. 102(a)(2) may also be made using form paragraph 7.15.01.aia or 7.15.02.aia.
¶ 8.28.aia Different Inventors, CommonAssignee, Inventions Not Patentably Distinct, No Evidence of Common Ownership as of the Effective Filing Date of the Claimed Invention, Examined Under First Inventor to File (FITF) Provisions of the AIA
Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].
Examiner Note:
1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but it has not been established that they were commonly owned or deemed to have been commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention. See 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c).
2. A rejection under 35 U.S.C. 102(a)(2)/103 using form paragraph 7.21.aia, 7.21.01.aia or 7.21.02.aia also should be made, as appropriate.
3. In bracket 3, insert the number of the patent or application that includes claims patentably indistinct from those in the present application.
4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37.
5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.
6. Form paragraph 8.28.01.aia MUST follow this paragraph.
Form paragraph 8.23.02 must be included in all restriction requirements for applications having joint inventors.
¶ 8.23.02 Joint Inventors, Correction of Inventorship
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Examiner Note:
This form paragraph must be included in all restriction requirements for applications having joint inventors.
818 Election and Reply [R-07.2015]
Election is the designation by applicant of the one of two or more disclosed inventions that will be prosecuted in the application.
When two or more independent and distinct inventions are presented for examination, the examiner may make a restriction requirement if a serious burden exists. In the reply to the restriction requirement, applicant must elect one invention for examination. If applicant wishes to traverse the restriction requirement, the reply must also include a traversal with specific reasons why applicant believes the restriction requirement is in error. See 37 CFR 1.111 and MPEP § 818.01. Applicant must make his or her own election; the examiner will not make the election for the applicant.
Election becomes fixed when the claims in an application have received an action on their merits by the Office. If, after receiving an action on the merits of an invention, one or more properly divisible additional inventions are subsequently presented for examination, the examiner may deem the examined
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§ 818RESTRICTION IN APPLICATIONS FILED UNDER 35 U.S.C. 111; DOUBLE PATENTING
invention to be the invention elected by original presentation. See MPEP § 818.02(a).
818.01 Election in Reply to a Restriction Requirement: Express [R-07.2015]
37 CFR 1.143 Reconsideration of requirement.
If the applicant disagrees with the requirement for restriction, he may request reconsideration and withdrawal or modification of the requirement, giving the reasons therefor. (See § 1.111). In requesting reconsideration the applicant must indicate a provisional election of one invention for prosecution, which invention shall be the one elected in the event the requirement becomes final. The requirement for restriction will be reconsidered on such a request. If the requirement is repeated and made final, the examiner will at the same time act on the claims to the invention elected.
Election in reply to a requirement for restriction may be made either with or without an accompanying traverse of the requirement. A complete reply to a restriction requirement must include an election even if applicant traverses the requirement.
A traverse is a request for reconsideration of a requirement to restrict that must include a written statement of the reasons for traverse, distinctly and specifically pointing out the supposed errors upon which the applicant relies for his or her conclusion that the requirement is in error. The absence of any statement indicating whether the requirement to restrict is traversed or the failure to provide reasons for traverse will be treated as an election without traverse.
Where a rejection or objection is included with a restriction requirement, applicant, besides making a proper election, must also distinctly and specifically point out the supposed errors in the examiner’s rejection or objection, or amend and argue that as amended the objection or rejection is moot. See 37 CFR 1.111.
Applicant must make his or her own election; the examiner will not make the election for the applicant. See 37 CFR 1.142 and 37 CFR 1.143.
818.01(a) Reply Must be Complete [R-07.2015]
As indicated in the first sentence of 37 CFR 1.143, the traverse to a requirement for restriction must be complete as required by 37 CFR 1.111(b). Under this rule, the applicant is required to specifically point out the reason(s) on which he or she bases his or her conclusion(s) that a requirement to restrict is in error. A mere broad allegation that the requirement is in error does not comply with the requirement of 37 CFR 1.111. Thus the required provisional election (see MPEP § 818.01(b)) becomes an election without traverse if accompanied by an incomplete traversal of the requirement for restriction.
818.01(b) Election is Required, Even When Requirement Is Traversed [R-07.2015]
As noted in the second sentence of 37 CFR 1.143, a provisional election must be made even if the requirement is traversed.
All requirements for restriction, other than those containing only an election of species, should include form paragraph 8.21. For election of species, form paragraph 8.01 or 8.02 should be used. These form paragraphs include the above notice.
818.01(c) Traverse is Required To Preserve Right of Petition [R-07.2015]
37 CFR 1.144 Petition from requirement for restriction.
After a final requirement for restriction, the applicant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested (see § 1.181).
To preserve the right to petition from the requirement for restriction, all errors to be relied upon in the petition must be distinctly and specifically pointed out in a timely filed traverse by the applicant. The petition may be deferred until after final action on
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or allowance of the claims to the elected invention. In any event, the petition must not be filed later than the filing date of the notice of appeal. If applicant does not distinctly and specifically point out supposed errors in the restriction requirement, the election should be treated as an election without traverse and be so indicated to the applicant by use of form paragraph 8.25.02.
¶ 8.25.02 Election Without Traverse Based on Incomplete Reply
Applicant’s election of [1] in the reply filed on [2] is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
818.01(d) Traverse of Restriction Requirement With Linking Claims [R-07.2015]
Regardless of the presence of a linking claim, a proper traverse must include a written statement of the reasons for traverse, distinctly and specifically pointing out the supposed errors upon which the applicant relies for his or her conclusion that the requirement is in error. If restriction is made final following consideration of a traverse, the right to petition is preserved even if all linking claims are canceled. When a final restriction requirement is contingent on the nonallowability of the linking claims, applicant may petition from the requirement under 37 CFR 1.144 without waiting for a final action on the merits of the linking claims or applicant may defer his or her petition until the linking claims have been finally rejected, but not later than the notice of appeal. See 37 CFR 1.144 and MPEP § 818.01(c).
An election combined with an argument that the linking claim is allowable is not a traversal of the restriction requirement. The Office considers such a response to be a concession that restriction is proper if the linking claim is not allowable. If the linking claim is allowable, the restriction is improper and should be withdrawn. If the Office allows the linking claim, the restriction requirement must be withdrawn and claims to all linked inventions that
depend from or otherwise include all the limitations of the allowable linking claim must be acted upon.
818.02 Election Other Than Express [R-07.2015]
Election may be made in ways other than by explicitly or expressly identifying the elected invention or in reply to a requirement as set forth in MPEP § 818.02(a) and § 818.02(d).
818.02(a) Election By Originally Presented Claims [R-07.2015]
Where claims to another invention are properly added and entered in the application before the earlier of the mailing of a first restriction requirement or the mailing of a first Office action on the merits, those claims, along with the ones presented upon filing the application, will be considered originally presented claims for purposes of restriction only.
The claims originally presented and acted upon by the Office on their merits determine the invention elected by an applicant in the application, and in any request for continued examination (RCE) filed for the application. Subsequently presented claims to an invention other than that acted upon should be treated as provided in MPEP § 821.03.
For reissue practice, see MPEP Chapter 1400.
818.02(b) Generic Claims Only — No Election of Species; Linking Claims Only – No Election of Invention [R-07.2015]
Where only generic claims are first presented and prosecuted in an application in which no election of a single species of that genus has been required, and applicant later presents species claims to two or more independent or distinct species of the invention, the examiner may require applicant to elect a single species. The practice of requiring election of species in cases with only generic claims is discussed in MPEP § 808.01(a). Where only linking claims are first presented and prosecuted in an application in which no election of a single linked invention has been made, and applicant later presents claims to two or more linked, independent or distinct
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§ 818.02(b)RESTRICTION IN APPLICATIONS FILED UNDER 35 U.S.C. 111; DOUBLE PATENTING
inventions, the examiner may require applicant to elect a single invention.
818.02(c) Election By Optional Cancellation of Claims [R-07.2015]
Where applicant claims two or more independent or distinct inventions and as a result of amendment to the claims, he or she cancels the claims to one or more of such inventions, leaving claims to one invention, and such claims are acted upon by the examiner, the claimed invention thus acted upon is elected.
818.02(d) Election By Cancellation of Claims, Lacking Express Election Statement [R-07.2015]
If applicant’s reply to a requirement for restriction does not expressly state the invention elected, but cancels claims to all but one of the inventions, the remaining invention will be deemed to be the elected invention.
819 Office Generally Does Not Permit Shift [R-07.2015]
The general policy of the Office is that applicants are not permitted to shift to claim another invention after an election is made and an Office action on the merits is made on the elected invention. The applicant cannot, as a matter of right, file a request for continued examination (RCE) on claims that are independent and distinct from the claims previously claimed and examined (i.e., applicant cannot switch inventions by way of an RCE as a matter of right). See MPEP § 706.07(h), subsection VI.(B). When claims are presented which the examiner finds are drawn to an invention other than the one elected, he or she should treat the claims as outlined in MPEP § 821.03.
A restriction requirement (and election thereto) made in a parent application does not carry over to a continuation, CIP, or divisional application. See Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004)(An original restriction requirement in an earlier filed application does not carry over to claims
of a continuation application in which the examiner does not reinstate or refer to the restriction requirement in the parent application.). In design applications, but not international design applications, where a continued prosecution application (CPA) filed under 37 CFR 1.53(d) is a continuation of its parent application and not a divisional, an express election made in the prior (parent) application in reply to a restriction requirement does carry over to the CPA unless otherwise indicated by applicant.
While applicant, as a matter of right, may not shift from claiming one invention to claiming another, the examiner is not precluded from permitting a shift. The examiner is most likely to do so where the shift results in no additional burden, and particularly where the shift reduces work by simplifying the issues.
820 [Reserved]
821 Treatment of Claims Held To Be Drawn to Nonelected Inventions [R-07.2015]
Claims found to be drawn to nonelected inventions, including claims drawn to nonelected species or inventions that may be eligible for rejoinder, are treated as indicated in MPEP § 821.01 through § 821.04.
All claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP § 821.01 through § 821.04. The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement if the applicant made a timely
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traversal. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971).
821.01 After Election With Traverse [R-07.2015]
Where the initial requirement is traversed, the examiner should reconsider it. If, upon reconsideration, the examiner is still of the opinion that restriction is proper, the examiner should maintain the restriction requirement and make it final in the next Office action. See MPEP § 803.01. In doing so, the examiner should reply to the reasons or arguments advanced by applicant in the traverse. Form paragraph 8.25 should be used to make a restriction requirement final.
¶ 8.25 Answer to Arguments With Traverse
Applicant’s election with traverse of [1] in the reply filed on [2] is acknowledged. The traversal is on the ground(s) that [3]. This is not found persuasive because [4].
The requirement is still deemed proper and is therefore made FINAL.
Examiner Note:
1. In bracket 1, insert the invention elected.
2. In bracket 3, insert in summary form, the ground(s) on which traversal is based.
3. In bracket 4, insert the reasons why the traversal was not found to be persuasive.
If the requirement is made final, the claims to the nonelected invention should be clearly indicated as being withdrawn from consideration. In this situation, the examiner should use form paragraph 8.05.
¶ 8.05 Claims Stand Withdrawn With Traverse
Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected [2], there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on [3].
Examiner Note:
In bracket 2, insert --invention-- or --species--.
This form paragraph will show that applicant has retained the right to petition from the requirement under 37 CFR 1.144. See MPEP § 818.01(c).
If the examiner, upon reconsideration, is of the opinion that the requirement for restriction is improper in whole or in part, he or she should clearly state in the next Office action that the requirement for restriction is withdrawn in whole or in part, specify which groups have been reinstated, and give an action on the merits of all the claims directed to the elected invention and any invention reinstated with the elected invention.
When the application is otherwise in condition for allowance, the examiner should contact applicant and advise him or her of his or her options with regard to any pending claims withdrawn from consideration. Alternatively, applicant may be notified using form paragraph 8.03.
¶ 8.03 In Condition for Allowance, Non-elected Claims Withdrawn with Traverse
This application is in condition for allowance except for the presence of claim [1] directed to an invention non-elected with traverse in the reply filed on [2]. Applicant is given TWO MONTHS from the date of this letter to cancel the noted claims or take other appropriate action (37 CFR 1.144). Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner’s Amendment and pass the case to issue. Extensions of time under 37 CFR 1.136(a) will not be permitted since this application will be passed to issue.
The prosecution of this case is closed except for consideration of the above matter.
See also MPEP § 821.04 for rejoinder of certain nonelected inventions when the claims to the elected invention are allowable.
When preparing a final action in an application where there has been a traversal of a requirement for restriction, the examiner should indicate in the Office action which claims, if any, remain withdrawn from consideration.
Note that the petition under 37 CFR 1.144 must be filed not later than appeal. This is construed to mean on or before the date the notice of appeal is filed. See MPEP § 1204. If the application is ready for allowance on or after the date of the notice of appeal and no petition has been filed, the examiner should simply cancel nonelected claims that are not eligible
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§ 821.01RESTRICTION IN APPLICATIONS FILED UNDER 35 U.S.C. 111; DOUBLE PATENTING
for rejoinder by examiner’s amendment, calling attention to the provisions of 37 CFR 1.144.
821.02 After Election Without Traverse [R-07.2015]
Where the initial requirement is not traversed (either expressly or by virtue of an incomplete reply), the examiner should take appropriate action on the elected claims including determining whether the restriction requirement should be withdrawn in whole or in part. See MPEP § 821.04. Form paragraphs 8.25.01 or 8.25.02 should be used by the examiner to acknowledge the election without traverse.
¶ 8.25.01 Election Without Traverse
Applicant’s election without traverse of [1] in the reply filed on [2] is acknowledged.
¶ 8.25.02 Election Without Traverse Based on Incomplete Reply
Applicant’s election of [1] in the reply filed on [2] is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims to the nonelected invention should be treated by using form paragraph 8.06.
¶ 8.06 Claims Stand Withdrawn Without Traverse
Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected [2], there being no allowable generic or linking claim. Election was made without traverse in the reply filed on [3].
Examiner Note:
In bracket 2, insert --invention--, or --species--.
This form paragraph will show that applicant has not retained the right to petition from the requirement under 37 CFR 1.144.
When applicant has not retained the right to petition the restriction requirement and the application is otherwise ready for allowance, the claims to the nonelected invention, except for claims directed to nonelected species and nonelected inventions eligible
for rejoinder, may be canceled by an examiner’s amendment, and the application passed to issue.
The examiner should use form paragraph 8.07 in this situation.
See also MPEP § 821.01 and § 821.04 et seq.
¶ 8.07 Ready for Allowance, Non-elected Claims Withdrawn Without Traverse
This application is in condition for allowance except for the presence of claim [1] directed to [2] nonelected without traverse. Accordingly, claim [3] been canceled.
Examiner Note:
In bracket 2, insert --an invention--, --inventions--, --a species--, or --species--.
Note that even if an election was made without traverse, claims directed to nonelected species and nonelected inventions that are eligible for rejoinder should be rejoined; if not rejoined, such claims may only be cancelled by examiner’s amendment when the cancellation is expressly authorized by applicant.
821.03 Claims for Different Invention Added After an Office Action [R-07.2015]
Claims added by amendment following action by the examiner, as explained in MPEP § 818.02(a), and drawn to an invention other than the one previously claimed, should be treated as indicated in 37 CFR 1.145.
37 CFR 1.145 Subsequent presentation of claims for different invention.
If, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144
The action should include form paragraph 8.04.
¶ 8.04 Election by Original Presentation
Newly submitted claim [1] directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: [2]
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Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
A complete action on all claims to the elected invention should be given.
An amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the nonelected invention should not be entered. Such an amendment is nonresponsive. Applicant should be notified by using form paragraph 8.26.
¶ 8.26 Canceled Elected Claims, Non-Responsive
The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive (MPEP § 821.03). The remaining claims are not readable on the elected invention because [2].
Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a TIME PERIOD of TWO MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD UNDER 37 CFR 1.136(a) ARE AVAILABLE.
Examiner Note:
This form paragraph should not be used for an application filed on or after August 25, 2006 that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d). Form paragraph 8.26.AE should be used instead. See MPEP § 708.02, subsection IX.
The practice set forth in this section is not applicable where a provisional election of a single species was made in accordance with MPEP § 803.02 and applicant amends the claims such that the elected species is cancelled, or where applicant presents claims that could not have been restricted from the claims drawn to the elected invention had they been presented earlier.
821.04 Rejoinder [R-08.2012]
The propriety of a restriction requirement should be reconsidered when all the claims directed to the elected invention are in condition for allowance, and the nonelected invention(s) should be considered for rejoinder. Rejoinder involves withdrawal of a
restriction requirement between an allowable elected invention and a nonelected invention and examination of the formerly nonelected invention on the merits.
In order to be eligible for rejoinder, a claim to a nonelected invention must depend from or otherwise require all the limitations of an allowable claim. A withdrawn claim that does not require all the limitations of an allowable claim will not be rejoined. Furthermore, where restriction was required between a product and a process of making and/or using the product, and the product invention was elected and subsequently found allowable, all claims to a nonelected process invention must depend from or otherwise require all the limitations of an allowable claim for the claims directed to that process invention to be eligible for rejoinder. See MPEP § 821.04(b). In order to retain the right to rejoinder, applicant is advised that the claims to the nonelected invention(s) should be amended during prosecution to require the limitations of the elected invention. Failure to do so may result in a loss of the right to rejoinder.
Rejoined claims must be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112.
The requirement for restriction between the rejoined inventions must be withdrawn. Any claim(s) presented in a continuation or divisional application that are anticipated by, or rendered obvious over, the claims of the parent application may be subject to a double patenting rejection when the restriction requirement is withdrawn in the parent application. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
The provisions of MPEP § 706.07 govern the propriety of making an Office action final in rejoinder situations. If rejoinder occurs after the first Office action on the merits, and if any of the rejoined claims are unpatentable, e.g., if a rejection under 35 U.S.C. 112, first paragraph is made, then the next Office action may be made final where the new ground of rejection was necessitated by applicant’s amendment (or based on information submitted in
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an IDS filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). See MPEP § 706.07(a).
If restriction is required between product and process claims, for example, and all the product claims would be allowable in the first Office action on the merits, upon rejoinder of the process claims, it would not be proper to make the first Office action on the merits final if the rejoined process claim did not comply with the requirements of 35 U.S.C. 112, first paragraph. This is because the rejoinder did not occur after the first Office action on the merits. Note that the provisions of MPEP § 706.07(b) govern the propriety of making a first Office action on the merits final.
Amendments submitted after final rejection are governed by 37 CFR 1.116.
Where applicant voluntarily presents claims to the product and process, for example, in separate applications (i.e., no restriction requirement was made by the Office), and one of the applications issues as a patent, the remaining application may be rejected under the doctrine of obviousness-type double patenting, where appropriate (see MPEP § 804 - § 804.03), and applicant may overcome the rejection by the filing of a terminal disclaimer under 37 CFR 1.321(c) where appropriate. Similarly, if copending applications separately present product and process claims, provisional obviousness-type double patenting rejections should be made where appropriate. However, once a determination as to the patentability of the product has been reached any process claim directed to making or using an allowable product should not be rejected over prior art without consultation with a Technology Center Director.
See MPEP § 706.02(n) for the applicability of 35 U.S.C. 103(b) to biotechnological processes and compositions of matter.
See MPEP § 2116.01 for guidance on the treatment of process claims which make or use a novel, nonobvious product.
821.04(a) Rejoinder Between Product Inventions; Rejoinder Between Process Inventions [R-07.2015]
Where restriction was required between independent or distinct products, or between independent or distinct processes, and all claims directed to an elected invention are allowable, any restriction requirement between the elected invention and any nonelected invention that depends from or otherwise requires all the limitations of an allowable claim should be withdrawn. For example, a requirement for restriction should be withdrawn when a generic claim, linking claim, or subcombination claim is allowable and any previously withdrawn claim depends from or otherwise requires all the limitations thereof. Claims that require all the limitations of an allowable claim will be rejoined and fully examined for patentability in accordance with 37 CFR 1.104. Claims that do not require all the limitations of an allowable claim remain withdrawn from consideration. However, in view of the withdrawal of the restriction requirement, if any claim presented in a continuing application includes all the limitations of a claim that is allowable in the parent application, such claim may be subject to a double patenting rejection over the claims of the parent application. Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
An amendment presenting additional claims that depend from or otherwise require all the limitations of an allowable claim will be entered as a matter of right if the amendment is presented prior to final rejection or allowance, whichever is earlier. Amendments submitted after final rejection are governed by 37 CFR 1.116; amendments submitted after allowance are governed by 37 CFR 1.312.
When all claims to the nonelected invention(s) depend from or otherwise require all the limitations of an allowable claim, applicant must be advised that claims drawn to the nonelected invention have
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been rejoined and the restriction requirement has been withdrawn. Form paragraph 8.45 may be used.
¶ 8.45 Elected Invention Allowable, Rejoinder of All Previously Withdrawn Claims
Claim [1] allowable. Claim [2 ], previously withdrawn from consideration as a result of a restriction requirement, [3] all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement [4] inventions [5], as set forth in the Office action mailed on [6], is hereby withdrawn and claim [7] hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. Where the elected invention is directed to a product and previously nonelected process claims are rejoined, form paragraph 8.43 should be used instead of this paragraph.
2. This form paragraph should be used whenever ALL previously withdrawn claims depend from or otherwise require all the limitations of an allowable claim (e.g., a generic claim, linking claim, or subcombination claim) and wherein the non-elected claims have NOT been canceled. Use form paragraph 8.46, 8.47, or 8.47.01 as appropriate where the nonelected claims HAVE BEEN canceled. Use form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.
3. In bracket 2, insert the number(s) of the rejoined claim(s) followed by either -- is-- or -- are--.
4. In bracket 3 insert-- requires-- or -- require--.
5. In bracket 4, insert either --between-- or --among--.
6. In bracket 5, insert the group(s), species, or subject matter of the invention(s) being rejoined.
7. In bracket 7, insert the number(s) of the rejoined claim(s) followed by either --is-- or --are--.
When no claims directed to the nonelected invention(s) depend from or otherwise require all the limitations of an allowable claim, form paragraph 8.49 should be used to explain why all nonelected claims are withdrawn from further consideration.
¶ 8.49 Elected Invention Allowable, Claims Stand Withdrawn as Not In Required Form
Claim [1] allowable. The restriction requirement [2], as set forth in the Office action mailed on [3], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [4] is [5]. Claim [6], directed to [7] withdrawn from further consideration because [8] require all the limitations of an allowable generic linking claim as required by 37 CFR 1.141.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a).
2. This form paragraph (or form paragraph 8.50) should be used upon the allowance of a linking claim, generic claim, or subcombination claim when none of the nonelected claims require all the limitations of an allowable claim.
3. In bracket 2, insert -- between-- or --among-- followed by identification of the inventions (i.e., groups or species) restricted.
4. In bracket 4, insert the date of the restriction requirement being fully or partially withdrawn.
5. In bracket 5, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
6. In bracket 7, insert the subject matter of the claimed invention or species not being rejoined followed by -- remains-- or --remain--.
7. In bracket 8, insert --it does not-- or --they do not all--.
Note that each additional invention is considered separately. When claims to one nonelected invention depend from or otherwise require all the limitations of an allowable claim, and claims to another nonelected invention do not, applicant must be advised as to which claims have been rejoined and
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which claims remain withdrawn from further consideration. Form paragraph 8.50 may be used.
¶ 8.50 Elected Invention Allowable, Some Claims No Longer Considered Withdrawn
Claim [1] allowable. The restriction requirement [2], as set forth in the Office action mailed on [3], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [4] is [5]. Claim [6], directed to [7] no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim. However, claim [8], directed to [9] withdrawn from consideration because [10] require all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a).
2. This form paragraph should be used upon the allowance of a linking claim, generic claim, or subcombination claim when, some, but not all, of the nonelected claims require all the limitations of an allowable claim.
3. In bracket 2, insert -- between-- or --among-- followed by identification of the inventions (i.e., groups or species) restricted.
4. In bracket 4, insert the date of the restriction requirement being fully or partially withdrawn.
5. In bracket 5, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
6. In bracket 7, insert the subject matter of the claimed invention or species being rejoined followed by either -- is-- or -- are--.
7. In bracket 9, insert the subject matter of the claimed invention or species not being rejoined followed by -- remains-- or --remain--.
8. In bracket 10, insert --it does not-- or --they do not all--.
9. If all of the claims are in proper form, i.e., they include all the limitations of an allowable claim, one of form paragraphs 8.45, 8.46 or 8.47must be used.
Where the application claims an allowable invention and discloses but does not claim an additional invention that depends on or otherwise requires all the limitations of the allowable claim, applicant may add claims directed to such additional invention by way of amendment pursuant to 37 CFR 1.121. Amendments submitted after allowance are governed by 37 CFR 1.312; amendments submitted after final rejection are governed by 37 CFR 1.116.
Form paragraph 8.46 (or form paragraph 8.47 or 8.47.01 if appropriate) must be used to notify applicant when nonelected claim(s) which depended from or required all the limitations of an allowable claim were canceled by applicant and may be reinstated by submitting the claim(s) in an amendment.
¶ 8.46 Elected Invention Allowable, Non-elected Claims Canceled, Other Issues Remain Outstanding
Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. Claim [7], which required all the limitations of an allowable claim, previously withdrawn from consideration as a result of the restriction requirement, [8] canceled by applicant in the reply filed on [9]. The canceled, nonelected claim(s) may be reinstated by applicant if submitted in a timely filed amendment in reply to this action. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104.
In view of the withdrawal of the restriction requirement as set forth above, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. This form paragraph is applicable where a restriction requirement was made between related product inventions or
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between related process inventions. See MPEP §§ 806.05(j) and 821.04(a).
2. This form paragraph (or form paragraph 8.47 or 8.47.01) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.
3. If no issues remain outstanding and application is otherwise ready for allowance, use form paragraph 8.47 or 8.47.01 instead of this form paragraph.
4. In bracket 2, insert either --between-- or --among--.
5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.
6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.
7. In bracket 6, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
8. In bracket 7, insert the number of each claim that required all the limitations of an allowable claim but was canceled as a result of the restriction requirement.
9. In bracket 8, insert either --was-- or --were--.
¶ 8.47 Elected Invention Allowable, Non-elected Claims Canceled, Before Final Rejection, No Outstanding Issues Remaining
Claim [1] allowable. The restriction requirement [2] inventions [3] , as set forth in the Office action mailed on [4] , has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. Claim [7], which required all the limitations of an allowable claim, previously withdrawn from consideration as a result of the restriction requirement, [8] canceled by applicant in the reply filed on [9]. The canceled, nonelected claim(s) may be reinstated by applicant if submitted in an amendment, limited to the addition of such claim(s), filed within a time period of TWO MONTHS from the mailing date of this letter. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104. If NO such amendment is submitted within the set time period, the application will be passed to issue. PROSECUTION ON THE MERITS IS OTHERWISE CLOSED.
In view of the withdrawal of the restriction requirement as to the linked inventions, applicant(s) are advised that if any claim presented in a continuation or divisional application is
anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions and the application has not been finally rejected. See MPEP §§ 806.05(j) and 821.04(a). After final rejection, use form paragraph 8.47.01 instead of this form paragraph.
2. This form paragraph (or form paragraph 8.46 or 8.47.01) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.
3. This form paragraph should be used only when there are no outstanding issues remaining and is to be used with only a PTO-90C cover sheet.
4. In bracket 2, insert either --between-- or --among--.
5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.
6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.
7. In bracket 6, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
8. In bracket 7, insert the number of each claim that required all the limitations of an allowable claim but was canceled as a result of the restriction requirement.
9. In bracket 8, insert either --was-- or --were--.
¶ 8.47.01 Elected Invention Allowable, Non-elected Claims Canceled, After Final Rejection, No Outstanding Issues Remaining
Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim.
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Specifically, the restriction requirement of [5] is [6]. In view of the withdrawal of the restriction requirement as set forth above, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions and the application has been finally rejected. See MPEP §§ 806.05(j) and 821.04(a). Before final rejection, use form paragraph 8.47 instead of this form paragraph.
2. This form paragraph (or form paragraph 8.46) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.
3. This form paragraph should be used only when there are no outstanding issues remaining and is to be used with only a PTO-90C cover sheet.
4. In bracket 2, insert either --between-- or --among--.
5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.
6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.
7. In bracket 6, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
If the election is traversed, an additional paragraph worded as form paragraph 8.03 should be added to the holding.
¶ 8.03 In Condition for Allowance, Non-elected Claims Withdrawn with Traverse
This application is in condition for allowance except for the presence of claim [1] directed to an invention non-elected with traverse in the reply filed on [2]. Applicant is given TWO
MONTHS from the date of this letter to cancel the noted claims or take other appropriate action (37 CFR 1.144). Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner’s Amendment and pass the case to issue. Extensions of time under 37 CFR 1.136(a) will not be permitted since this application will be passed to issue.
The prosecution of this case is closed except for consideration of the above matter.
821.04(b) Rejoinder of Process Requiring an Allowable Product [R-08.2012]
Where claims directed to a product and to a process of making and/or using the product are presented in the same application, applicant may be called upon under 35 U.S.C. 121 to elect claims to either the product or a process. See MPEP § 806.05(f) and § 806.05(h). The claims to the nonelected invention will be withdrawn from further consideration under 37 CFR 1.142. See MPEP § 821 through § 821.03. However, if applicant elects a claim(s) directed to a product which is subsequently found allowable, withdrawn process claims which depend from or otherwise require all the limitations of an allowable product claim will be considered for rejoinder. All claims directed to a nonelected process invention must depend from or otherwise require all the limitations of an allowable product claim for that process invention to be rejoined. Upon rejoinder of claims directed to a previously nonelected process invention, the restriction requirement between the elected product and rejoined process(es) will be withdrawn.
If applicant cancels all the claims directed to a nonelected process invention before rejoinder occurs, the examiner should not withdraw the restriction requirement. This will preserve applicant’s rights under 35 U.S.C. 121.
Where the application as originally filed discloses the product and the process for making and/or using the product, and only claims directed to the product are presented for examination, applicant may present claims directed to the process of making and/or using the allowable product by way of amendment pursuant to 37 CFR 1.121. In view of the rejoinder procedure, and in order to expedite prosecution, applicants are encouraged to present such process claims, preferably as dependent claims, in the
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application at an early stage of prosecution. Process claims which depend from or otherwise require all the limitations of the patentable product will be entered as a matter of right if the amendment is presented prior to final rejection or allowance, whichever is earlier. However, if applicant files an amendment adding claims to a process invention, and the amendment includes process claims which do not depend from or otherwise require all the limitations of an allowable product, all claims directed to that newly added invention may be withdrawn from consideration, via an election by original presentation (see MPEP § 821.03).
Amendments submitted after allowance are governed by 37 CFR 1.312. Amendments to add only process claims which depend from or otherwise require all the limitations of an allowed product claim and which meet the requirements of 35 U.S.C. 101, 102, 103, and 112 may be entered.
Amendments submitted after final rejection are governed by 37 CFR 1.116. When all claims to the elected product are in condition for allowance, all process claims eligible for rejoinder (see MPEP § 821.04) must be considered for patentability.
If an amendment after final rejection that otherwise complies with the requirements of 37 CFR 1.116 would place all the elected product claim(s) in condition for allowance and thereby require rejoinder of process claims that raise new issues requiring further consideration (e.g., issues under 35 U.S.C. 101 or 35 U.S.C. 112, first paragraph), the amendment could be denied entry. For example, if pending nonelected process claims depend from a finally rejected product claim, and the amendment (or affidavit or other evidence that could have been submitted earlier) submitted after final rejection, if entered, would put the product claim(s) in condition for allowance, entry of the amendment (or evidence submission) would not be required if it would raise new issues that would require further consideration, such as issues under 35 U.S.C. 101 or 35 U.S.C. 112, first paragraph necessitated by rejoinder of previously nonelected process claims.
Before mailing an advisory action in the above situation, it is recommended that applicant be called and given the opportunity to cancel the process
claims to place the application in condition for allowance with the allowable product claims, or to file an RCE to continue prosecution of the process claims in the same application as the product claims.
In after final situations when no amendment or evidence is submitted, but applicant submits arguments that persuade the examiner that all the product claims are allowable, in effect the final rejection of the product claims is not sustainable, and any rejection of the rejoined process claims must be done in a new Office action. If the process claims would be rejected, applicant may be called before mailing a new Office action and given the opportunity to cancel the process claims and to place the application in condition for allowance with the allowable product claims. If a new Office action is prepared indicating the allowability of the product claim and including a new rejection of the process claims, the provisions of MPEP § 706.07 govern the propriety of making the Office action final.
Form paragraph 8.21.04 should be included in any requirement for restriction between a product and a process of making or process of using the product. See MPEP § 806.05(f) and § 806.05(h).
Form paragraph 8.42 or 8.43 should be used to notify applicant of the rejoinder of process inventions which depend from or otherwise require all the limitations of an allowable product claim.
¶ 8.42 Allowable Product, Rejoinder of at Least One Process Claim, Less Than All Claims
Claim [1] directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b), claim [2], directed to the process of making or using the allowable product, previously withdrawn from consideration as a result of a restriction requirement, [3] hereby rejoined and fully examined for patentability under 37 CFR 1.104. Claim [4], directed to the invention(s) of [5] require all the limitations of an allowable product claim, and [6] NOT been rejoined.
Because a claimed invention previously withdrawn from consideration under 37 CFR 1.142 has been rejoined, the restriction requirement [7] groups [8] as set forth in the Office action mailed on [9] is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional
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statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. If ALL previously withdrawn process claims are being rejoined, then form paragraph 8.43 should be used instead of this form paragraph. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined. See MPEP § 821.04(b).
2. In bracket 1, insert the claim number(s) of the allowable product claims followed by either -- is-- or -- are--.
3. In bracket 2, insert the claim number(s) of ALL the rejoined process claims.
4. In bracket 3, insert either --is-- or --are--.
5. In bracket 4, insert the number(s) of the claims NOT being rejoined followed by either -- is-- or -- are--.
6. In bracket 5, insert the group(s) or subject matter of the invention(s) to which the claims NOT being rejoined are directed, followed by either --, do not all-- or --, does not--.
7. In bracket 6, insert --has-- or --have--.
8. In bracket 7, insert either -- among -- or -- between--.
9. In bracket 8, insert group numbers of the elected product and rejoined process.
¶ 8.43 Allowable Product, Rejoinder of All Previously Withdrawn Process Claims
Claim [1] directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b), claim [2] , directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, [3] hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on [4] is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. If LESS THAN ALL previously withdrawn claims are being rejoined, then form paragraph 8.42 should be used instead of this form paragraph. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined. See MPEP § 821.04(b).
2. In bracket 1, insert the claim number(s) of the allowable product claim(s) followed by either -- is-- or -- are--.
3. In bracket 2, insert the claim number(s) of the process claim(s) previously withdrawn from consideration.
4. In bracket 3, insert either --is-- or --are--.
5. If rejoinder occurs after the first Office action on the merits and if any of the rejoined claims are unpatentable, e.g., if a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph is made, then the next Office action may be made final if proper under MPEP § 706.07(a).
822 Claims to Inventions That Are Not Patentably Distinct in Plural Applications of Same Applicant or Assignee [R-07.2015]
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
*****
(f) Applications containing patentably indistinct claims. Where two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
*****
Where claims in two or more applications filed by the same applicant or assignee are patentably indistinct, a complete examination should be made of the claims of each application and all appropriate rejections should be entered in each application, including rejections based upon prior art. The claims of each application may also be rejected on the grounds of “provisional” double patenting based on the claims of the other application whether or not any claims avoid the prior art. Where appropriate, the same prior art may be relied upon in each of the applications. See also MPEP § 804.01 and § 822.
The “provisional” double patenting rejection should continue to be made by the examiner in each application as long as there are patentably indistinct claims in more than one application unless that “provisional” double patenting rejection is the only rejection remaining in one of the applications. See
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MANUAL OF PATENT EXAMINING PROCEDURE§ 822
MPEP § 1490 when the “provisional” double patenting rejection is the only rejection remaining in at least one application.
See MPEP § 804.03 for conflicting subject matter, different inventors, common ownership.
See MPEP § 706.03(k) for rejection of one claim over another in the same application.
See MPEP § 706.03(w) and § 706.07(b) for res judicata.
See MPEP § 709.01 for one application in interference.
See MPEP § 806.04(h) to § 806.04(i) for species and genus in separate applications.
Wherever appropriate, such conflicting applications should be joined. This is particularly true where the two or more applications are due to, and consonant with, a requirement to restrict which the examiner now considers to be improper.
Form paragraph 8.29 should be used when the conflicting claims are identical or conceded by applicant to be not patentably distinct.
¶ 8.29 Patentably Indistinct Claims, CopendingApplications
Claim [1] of this application is patentably indistinct from claim [2] of Application No. [3]. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
823 Unity of Invention Under the Patent Cooperation Treaty [R-07.2015]
The analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis). See MPEP Chapter 1800, in particular MPEP § 1850, § 1875,
and § 1893.03(d), for a detailed discussion of unity of invention under the Patent Cooperation Treaty (PCT). However, the guidance set forth in this chapter with regard to other substantive and procedural matters (e.g., double patenting rejections (MPEP § 804), election and reply by applicant (MPEP § 818), and rejoinder of nonelected inventions (MPEP § 821.04) generally applies to national stage applications submitted under 35 U.S.C. 371.
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§ 823RESTRICTION IN APPLICATIONS FILED UNDER 35 U.S.C. 111; DOUBLE PATENTING
Chapter 900 Prior Art, Classification, and Search
Prior Art901 Canceled Matter in U.S. Patent Files901.01
Ordering of Patented and Abandoned Provisional and Nonprovisional Application Files
901.01(a)
Abandoned Applications901.02 Pending Applications901.03 U.S. Patents901.04
Kind Codes901.04(a) Foreign Patent Documents901.05
Citation Data901.05(a) Other Significant Data901.05(b) Obtaining Copies901.05(c) Translation901.05(d)
Nonpatent Publications901.06 Scientific and Technical Information Center (STIC)
901.06(a)
Borrowed Publications901.06(b) Alien Property Custodian Publications
901.06(c)
Abstracts, Abbreviatures, and Defensive Publications
901.06(d)
Patent Family Information901.07 [Reserved]901.08
Search Tools and Classification Information
902
Classification Manual for the U.S. Patent Classification System
902.01
Index to the U.S. Patent Classification System
902.01(a)
Class and Subclass Definitions in USPC
902.02
Definition Notes in USPC902.02(a) [Reserved]902.02(b)
Classification Information902.03 Patent Classification Home Page on the Internet
902.03(a)
Patent Classification Home Page on the USPTO Intranet
902.03(b)
[Reserved]902.03(c) [Reserved]902.03(d) Automated Search Tools: EAST and WEST
902.03(e)
Classification in USPC903 Statutory Authority903.01 Basis and Principles of Classification903.02
[Reserved]903.02(a) Scope of a Class in the USPC903.02(b)
Availability of Foreign Patents903.03
Classifying Applications for Publication as a Patent Application Publication in USPC
903.04
Addition, Deletion, or Transfer of U.S. Patents and U.S. Patent Application Publications
903.05
Harmonized Subclasses903.06 Classifying and Cross-Referencing at Allowance
903.07
Cross-Referencing — Keep Systematic Notes During Prosecution
903.07(a)
Applications: Assignment and Transfer
903.08
New Applications903.08(a) Classification and Assignment to Examiner
903.08(b)
Immediate Inspection of Amendments
903.08(c)
Transfer Procedure903.08(d) General Guidelines Governing the Assignment of
903.08(e)
Nonprovisional Applications for Examination
[Reserved]903.09 [Reserved]903.09(a)
How to Search904 Analysis of Claims904.01
Variant Embodiments Within Scope of Claim
904.01(a)
Equivalents904.01(b) Analogous Arts904.01(c)
General Search Guidelines904.02 Classified Search904.02(a) Search Tool Selection904.02(b) Internet Searching904.02(c)
Conducting the Search904.03 Cooperative Patent Classification905
Classification Scheme for CPC905.01 CPC Titles905.01(a)
References within CPC Titles905.01(a)(1) Notes Found in CPC schemes905.01(a)(2) Warnings Found in CPC schemes
905.01(a)(3)
Guidance Headings Found in CPC Schemes
905.01(a)(4)
CPC Definitions905.02 Classifying in CPC905.03
The CPC Database905.03(a) Approach to classification in CPC905.03(b) Combination Sets905.03(c)
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International Classification of Patents for Inventions
906
Locarno Classification Designations907
901 Prior Art [R-08.2012]
Note 37 CFR 1.104(a)(1) in MPEP § 707. See also MPEP § 2121- § 2129.
901.01 Canceled Matter in U.S. Patent Files [R-07.2015]
Canceled matter in the application file of a U.S. patent or U.S. application publication is not a proper reference as of the filing date under pre-AIA 35 U.S.C. 102(e). See Ex parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966). However, matter canceled from the application file wrapper of a U.S. patent or U.S. application publication may be used as prior art as of the patent or publication date, respectively, in that it then constitutes prior public knowledge or prior public availability under pre-AIA 35 U.S.C. 102(a) or 35 U.S.C. 102(a)(1). See, e.g., In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967). See also MPEP § 2127 and § 2136.02.
901.01(a) Ordering of Patented and Abandoned Provisional and Nonprovisional Application Files [R-07.2015]
In the examination of an application, it is sometimes necessary to inspect the application papers of some previously abandoned application (provisional or nonprovisional) or granted patent. This is always true in the case of a reissue application and reexamination proceeding.
If the patented or abandoned file is an Image File Wrapper (IFW) file, examiners can view the application papers from their desktop via the Patent Examiner’s Toolkit. Patented and abandoned files that are not available in IFW are stored at the Files Repository. Older files are housed in remote warehouses located in Maryland and Virginia.
Patented and abandoned files that are stored in paper are ordered by means of a PALM video display or PALM intranet site transaction. To place such an order, the examiner is required to input his/her
PALM location code, employee number, and patent number(s) and/or application number(s) of the file(s) that are needed. After transmission of the request transaction by the examiner, a “response” screen appears which informs the examiner of the status of the request for each file. The examiner is informed that the request:
(A) is accepted;
(B) is accepted, but the file is located at a remote warehouse (in which case delivery time is increased);
(C) is not accepted because the file is not located at the repository or warehouse;
(D) is not accepted because a previous request for the file has not yet been filled; or
(E) is not accepted because the patent or application number inputted is not valid.
Personnel at the Files Repository periodically retrieve the requested files and deliveries of files are made to the requesters’ interoffice mailing address. Upon delivery of files at the various locations, Files Repository personnel also retrieve files that are ready to be returned to the repository.
901.02 Abandoned Applications [R-07.2015]
If an abandoned application was previously published under 35 U.S.C. 122(b), that patent application publication is available as prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of its patent application publication date because the patent application publication is considered to be a “printed” publication within the meaning of pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1), even though the patent application publication is disseminated by the U.S. Patent and Trademark Office (Office) using only electronic media. See MPEP § 2128. Additionally, as described in MPEP § 901.03, a patent application publication published under 35 U.S.C. 122(b) of an application that has become abandoned may be available as prior art under pre-AIA 35 U.S.C. 102(e) as of the earliest effective U.S. filing date of the published application and may be available under 35 U.S.C. 102(a)(2) as of the date it was effectively filed. As provided in 37 CFR 1.11(a), unless a redacted copy of the application was used for the patent application publication, the specification,
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drawings, and all papers relating to the file of an abandoned published application are open to inspection by the public, and copies may be obtained from the Office. The information that is available to the public under 37 CFR 1.11(a) may be used as prior art under pre-AIA 35 U.S.C. 102(a) or 102(b) or 35 U.S.C. 102(a)(1) as of the date the information became publicly available.
Where an unpublished abandoned application is identified or whose benefit is claimed in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication of an international application that was published in accordance with PCT Article 21(2), the file contents of the unpublished abandoned application may be made available to the public. See 37 CFR 1.14(a)(1)(iv). Subject matter from abandoned applications which is available to the public under 37 CFR 1.14 may be used as prior art against a pending U.S. application under pre-AIA 35 U.S.C. 102(a) or 102(b) or 35 U.S.C. 102(a)(1) as of the date the subject matter became publicly available.
In re Heritage,182 F.2d 639, 86 USPQ 160 (CCPA 1950), holds that where a patent refers to and relies on the disclosure of a previously copending but subsequently abandoned application, such disclosure is available as a reference. See also In re Lund,376 F.2d 982, 153 USPQ 625 (CCPA 1967).
It has also been held that where the reference patent refers to a previously copending but subsequently abandoned application which discloses subject matter in common with the patent, the effective date of the reference as to the common subject matter is the filing date of the abandoned application. See In re Switzer, 166 F.2d 827, 77 USPQ 156 (CCPA 1948); Ex parte Peterson, 63 USPQ 99 (Bd. App. 1944);
and Ex parte Clifford, 49 USPQ 152 (Bd. App. 1940). See MPEP § 2127, subsection I.
Published abstracts, abbreviatures, defensive publications (MPEP § 901.06(d)), and statutory
invention registrations (MPEP Chapter 1100) are references.
901.03 Pending Applications [R-07.2015]
Except as provided in 37 CFR 1.11(b), 37 CFR 1.14(a)(1)(v) and 37 CFR 1.14(a)(1)(vi), pending U.S. applications which have not been published are generally preserved in confidence (37 CFR 1.14(a)) and are not available as references. However, claims in one nonprovisional application may be rejected on the claimed subject matter of a copending nonprovisional application of the same inventive entity. See MPEP § 804. For applications having a common assignee or applicant and different inventive entities claiming a single inventive concept, see MPEP § 804.03. See also MPEP § 2127, subsection IV.
The American Inventors Protection Act of 1999 (AIPA) was enacted into law on November 29, 1999. The AIPA amended 35 U.S.C. 122 to provide that, with certain exceptions, applications for patent filed on or after November 29, 2000 shall be published promptly after the expiration of a period of eighteen (18) months from the earliest filing date for which a benefit is sought under title 35, United States Code, and that an application may be published earlier at the request of the applicant. See 35 U.S.C. 122(b) and 37 CFR 1.215 and 1.219. In addition, applications filed prior to November 29, 2000, but pending on November 29, 2000, may be published if a request for voluntary publication is filed. See 37 CFR 1.221. Patent applications filed on or after November 29, 2000, and those including a request for voluntary publication shall be published except for the following enumerated exceptions.
First, an application shall not be published if it is:
(A) no longer pending;
(B) subject to a secrecy order under 35 U.S.C. 181, that is, publication or disclosure of the application would be detrimental to national security;
(C) a provisional application filed under 35 U.S.C. 111(b);
(D) an application for a design patent filed under 35 U.S.C. 171;
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§ 901.03PRIOR ART, CLASSIFICATION, AND SEARCH
(E) an application for an International design application filed under 35 U.S.C. 382; or
(F) a reissue application filed under 35 U.S.C. 251.
Second, an application shall not be published if an applicant submits at the time of filing of the application a request for nonpublication. See MPEP § 1122.
U.S. patent application publications are prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of the publication date. Under pre-AIA 35 U.S.C. 102(e)(1) and 35 U.S.C. 102(a)(2), a U.S. patent application publication under 35 U.S.C. 122(b) is considered to be prior art as of the earliest effective U.S. filing date of the published application. Additionally, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under pre-AIA 35 U.S.C. 102(e) as of the international filing date, or an earlier effective U.S. filing date, only if the international application was filed on or after November 29, 2000, designated the United States, and was published under PCT Article 21(2) in English. Similarly, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under 35 U.S.C. 102(a)(2) as of the international filing date, or an earlier effective U.S. filing date.
901.04 U.S. Patents [R-07.2015]
The following different series of U.S. patents are being or in the past have been issued. The date of patenting given on the face of each copy is the publication date and is the one usually cited. The filing date, in most instances also given on the face of the patent, is ordinarily the effective date as a reference. See MPEP §§ 706.02(f)(1), 2127, subsection II, and 2154. The pre-AIA 35 U.S.C. 102(e) date of a U.S. patent can be an earlier effective U.S. filing date. For example, the pre-AIA 35 U.S.C. 102(e) prior art date of a U.S. patent issued from a nonprovisional application claiming the benefit of a prior provisional application (35 U.S.C. 111(b)) is the filing date of the provisional
application for subject matter that is disclosed in the provisional application.
X-Series. These are the approximately 10,000 patents issued between 1790 and July 4, 1836. They were not originally numbered, but have since been assigned numbers in the sequence in which they were issued. The number should not be cited. When copies are ordered, the patentee’s name and date of issue suffice for identification.
1836 Series. The mechanical, electrical, and chemical patents issued since 1836 and frequently designated as “utility” patents are included in this series. A citation by number only is understood to refer to this series. This series comprises the bulk of all U.S. patents issued. Some U.S. patents issued in 1861 bear two numbers but only the larger number should be cited.
Reissue Series. Reissue patents (see MPEP § 1401) have been given a separate series of numbers preceded by “Re.” In citing, the letters and the number must be given, e.g., Re. 1776. The date that it is effective as a reference is the effective date of the original patent application, not the filing date of the reissue application.
Design reissue patents are numbered with the same number series as “utility” reissue patents. The letter prefix does, however, indicate them to be design reissues.
A.I. Series. From 1838 to 1861, patents covering an inventor’s improvement on his or her own patented device were given a separate series of numbers preceded by “A.I.” to indicate Additional Improvement. In citing, the letters and the number must be given, e.g., A.I. 113. About 300 such patents were issued.
Plant Patent Series. When the statutes were amended to provide for patenting certain types of plants (see MPEP Chapter 1600) these patents were given a separate series of numbers. In citing, the letters “P.P.” and the number must be given, e.g., P.P. 13.
Design Patents. Patents for designs (see MPEP Chapter 1500) are issued under a separate series of
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MANUAL OF PATENT EXAMINING PROCEDURE§ 901.04
numbers preceded by “D.” In citing, the letter “D” and the number must be given, e.g., D. 140,000.
NUMBERS FOR IDENTIFICATION OF BIBLIOGRAPHIC DATA ON THE FIRST PAGE OF PATENT AND LIKE DOCUMENTS (INID NUMBERS)
The purpose of INID Codes (“INID” is an acronym for “Internationally agreed Numbers for the Identification of (bibliographic) Data”) is to provide a means whereby the various data appearing on the first page of patent and like documents can be identified without knowledge of the language used and the laws applied. They are now used by most patent offices and have been applied to U.S. patents since August 4, 1970. Some of the codes are not pertinent to the documents of a particular country and some which are may, in fact, not be used. For a list of INID Codes, see MPEP § 901.05(b).
901.04(a) Kind Codes [R-08.2012]
On January 2, 2001, the United States Patent and Trademark Office (USPTO) began printing the World Intellectual Property Organization (WIPO) Standard ST.16 code on each of its published patent documents. WIPO Standard ST.16 codes (kind codes) include a letter, and in many cases a number, used to distinguish the kind of patent document (e.g., publication of an application for a utility patent (patent application publication), utility patent, plant patent application publication, plant patent, or design
patent) and the level of publication (e.g., first publication, second publication, or corrected publication). Detailed information on Standard ST.16 and the use of kind codes by patent offices throughout the world is available on the WIPO website at www.wipo.int/scit/en under the links for WIPO standards and other documentation.
In addition, some kind codes assigned to existing USPTO patent documents were changed because, beginning on March 15, 2001, patent application publications began to be published weekly on Thursdays.
The tables below give a summary of the kind codes which are no longer being used on certain published patent documents as well as a summary of the kind codes which will be used on published patent documents after January 2, 2001. It is recommended that USPTO documents be identified by the following three elements: (A) the two-character country code (US for United States of America); (B) the patent or publication number; and (C) the WIPO ST.16 kind code. For example, “US 7,654,321 B1” for U.S. Patent No. 7,654,321 where there was no previously published patent application publication, and “US 2003/1234567 A1” for U.S. Patent Application Publication No. 2003/1234567, in 2003. Each year the numbering of published patent applications will begin again with the new four-digit year and the number 0000001, so the number of a patent application publication must include an associated year.
Summary of USPTO Kind Codes No Longer Used as of January 2, 2001* CommentsKind of documentWIPO ST.16
Kind Codes Kind code replaced by B1 or B2PatentA Kind code replaced by P2 or P3Plant PatentP Kind code replaced by C1, C2, C3...Reexamination CertificateB1, B2, B3...
*See the table below for the new uses for codes B1 and B2 beginning January 2, 2001.
Summary of USPTO Kind Codes Used on Documents Published Beginning January 2, 2001 CommentsKind of documentWIPO ST.16
Kind Codes Pre-grant publication available March 2001Patent Application PublicationA1
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§ 901.04(a)PRIOR ART, CLASSIFICATION, AND SEARCH
Summary of USPTO Kind Codes Used on Documents Published Beginning January 2, 2001 CommentsKind of documentWIPO ST.16
Kind Codes Pre-grant publication available March 2001Patent Application Publication
(Republication) A2
Pre-grant publication available March 2001Patent Application Publication (Corrected Publication)
A9
No previously published pre-grant publicationPatentB1 Having a previously published pre-grant publication and available March 2001
PatentB2
Previously used codes B1 and B2 are now used for granted Patents
Reexamination CertificateC1, C2, C3, ...
No changeReissue PatentE No changeStatutory Invention Registration (SIR)H Pre-grant publication available March 2001Plant Patent Publication ApplicationP1 No previously published pre-grant publicationPlant PatentP2 Having a previously published pre-grant publication and available March 2001
Plant PatentP3
Pre-grant publication available after March 2001Plant Patent Application Publication (Republication)
P4
Pre-grant publication available March 2001Plant Patent Application Publication (Corrected Publication)
P9
No changeDesign PatentS
901.05 Foreign Patent Documents [R-07.2015]
All foreign patents, published applications, and any other published derivative material containing portions or summaries of the contents of published or unpublished patents (e.g., abstracts) which have been disseminated to the public are available to U.S. examiners. See MPEP § 901.06(a), paragraphs I.C. and IV.C. In general, a foreign patent, the contents of its application, or segments of its content should not be cited as a reference until its date of patenting or its public availability date (e.g., publication date) can be confirmed by an examiner’s review of a copy of the document. Examiners should remember that in some countries, there is a delay between the date of the patent grant and the date of publication.
Information pertaining to those countries from which the most patent publications are received is given in the following sections and in MPEP § 901.05(a). Additional information can be obtained from the Scientific and Technical Information Center (STIC).
See MPEP § 707.05(e) for data used in citing foreign references.
I. OVERVIEW OF FOREIGN PATENT LAWS
This section includes some general information on foreign patent laws and summarizes particular features and their terminology. Some additional details on the most commonly cited foreign patent publications may be found under the individual country in paragraph V., below. Examiners should recall that, in contrast to the practice in many other countries, under U.S. patent law a number of different events all occur on the issue date of a U.S. patent. These events include the following:
(A) a patent document, the “letters patent'' which grants and thereby creates the legal rights conferred by a patent, is executed and sent to the applicant;
(B) the patent rights come into existence;
(C) the patent rights can be exercised;
(D) the specification of the patent becomes available to the public;
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(E) the patented file becomes available to the public;
(F) the specification is published in printed form; and
(G) an issue of an official journal, the Official Gazette, containing an announcement of the patent and a claim, is published.
In most foreign countries, various ones of these events occur on different days and some of them may never occur at all.
The following list catalogs some of the most significant foreign variations from U.S. practices:
A. Applicant
In most countries, the owner of the prospective rights, derived from the inventor, may also apply for a patent in the owner’s name as applicant; in a few, other persons may apply as well or be joined as coapplicants. Hence, applicant is not synonymous with inventor, and the applicant may be a company. Some countries require the inventors’ names to be given and regularly print them on the published copies. Other countries may sometimes print the inventors’ names only when available or when requested to do so.
B. Application
The word “application” is commonly used in the U.S. to refer to the entire set of papers filed when seeking a patent. However, in many countries and in PCT cases, the word application refers only to the paper, usually a printed form, which is to be “accompanied by” or have “attached” to it certain other papers, namely a specification, drawings when necessary, claims, and perhaps other papers. Unless it is otherwise noted in the following portions of this section, the term “application” refers to the entire set of papers filed.
C. Publication of Contents of Pending Applications
In general, pending applications are confidential until a certain stage in the proceedings (e.g., upon patent grant), or until a certain date (e.g., 18 months after filing), as may be specified in a particular law.
Many countries have adopted the practice of publishing the specification, drawing, or claims of pending applications. In these countries, the publication of the contents of the application occurs at a certain time, usually 18 months after filing. The applicant is given certain provisional rights upon publication even though examination has not been completed or in some cases has not even begun at the time of publication.
This publication may take either of two forms. In the first form, some countries publish a notice giving certain particulars in their official journal, and thereafter, any one may see the papers at the patent office or order copies. This procedure is referred to as “laying open for public inspection.” There is no printed publication of the specification, although an abstract may be published in printed form. If anyone can inspect or obtain copies of the laid open application, then it is sufficiently accessible to the public to constitute a “publication” within the meaning of pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1). The full application is thus available as prior art as of either the date of publication of its notice or its laying open to public inspection if this is a later date. See In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981). See MPEP § 2127, paragraph III.
In the second form, several other countries publish the specifications of pending applications in printed form at a specified time, usually 18 months after filing. These documents, of course, constitute references as printed publications.
D. Administrative Systems
Patent law administration varies from country to country. In some countries, all that is undertaken is an inspection of the papers to determine if they are in proper form. Other countries perform an examination of the merits on the basis of an extensive search of the prior art, as is done in the U.S. The former are referred to as nonexamining or registration countries, although some systems allow for a rejection on matters apparent on the face of the papers, such as matters of form or statutory subject matter.
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Of the examining countries, the extent of the material searched prior to issue varies greatly. Only a few countries include both their own patents and a substantial amount of foreign patent material and nonpatent publications in their search files. Some countries specifically limit the search by rule, or lack of facilities, to their own patents with very little or no additional material. An increasing number of countries are requiring applicants to give information concerning references cited in corresponding applications filed in other countries.
E. Opposition
Some examining countries consider participation by the public an inherent feature of their examining system. When an application is found to be allowable by the examiner, it is “published” for opposition. Then there is a period, usually 3 or 4 months, within which members of the public can oppose the grant of the patent. In some countries, the opposing party can be any person or company. In other countries, only those parties who are affected by the outcome can participate in the opposition. The opposition is an inter partes proceeding and the opposing party can ordinarily raise any ground on the basis of which a patent would be refused or held invalid, including any applicable references.
The publication for opposition may take the form of a laying open of the application by the publication of a notice in the official journal with the application being then open to public inspection and the obtaining of copies. Otherwise, publication occurs by the issue of the applications in printed form. Either way, these published documents constitute printed publications which are available as references under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1).
F. The Patent
Practices and terminology vary worldwide regarding patents. In some countries, there is no “letters patent” document which creates and grants the rights. In other countries, the examiner grants the patent by signing the required paper. In a few countries, the patent is granted by operation of law after certain events have occurred. The term “granting the patent” is used here for convenience, but it should be noted
that 35 U.S.C. 102(a) and 102(b) or 35 U.S.C. 102(a)(1) do not use this terminology.
A list of granted patents is ordinarily published in each country’s official journal and some of these countries also print an abstract or claims at or after the granting date. Not all countries publish the granted patent. Where the specifications of granted patents are issued in printed form, publication seldom occurs simultaneously with the day of grant; instead, publication occurs a short time thereafter. There also are a few countries in which publication does not take place until several years after the grant.
The length of time for which the patent is enforceable (the patent term) varies from country to country. The term of the patent may start as of the grant of the patent, or as of the filing date of the application.
Most countries require the payment of periodic fees to maintain a patent in force. These fees often start a few years after filing and increase progressively during the term of the patent. If these fees are not paid within the time allowed, the patent lapses and is no longer in force. This lapsing does not affect the use of the patent as a reference.
G. Patents of Addition
Some countries issue patents of addition, which should be identified as such, and when separately numbered as in France, the number of the addition patent should be cited. “Patents of addition” generally cover improvements of a patented parent invention and can be obtained by the owner of the parent invention. Inventiveness in relation to the parent invention need not be demonstrated and the term is governed by the term of the parent patent.
II. CORRESPONDING SPECIFICATIONS IN A FAMILY OF PATENTS
Since a separate patent must be obtained in each country in which patent rights are desired (except for EP, the European Patent Convention, AP, the African Regional Industrial Property Organization, OA, African Intellectual Property Organization, GC, Patent Office of the Cooperation Council for the Arab States of the Gulf, and EA, Eurasian Patent
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Office, whose members issue a common patent), there may be a large number of patents issued in different countries for the same invention. This group of patents is referred to as a family of patents.
All of the countries listed in paragraph V. below are parties to the Paris Convention for the Protection of Industrial Property and provide for the right of priority. If an application is filed in one of these countries, an application for the same invention thereafter filed in another country, within 1 year of the filing of the first application, will be entitled to the benefit of the filing date of the first application on fulfilling various conditions. See MPEP § 213. The patents or published specifications of the countries of later filing are required to specify that priority has been claimed and to give the country, date, and number of the priority application. This data serves the purpose, among others, of enabling any patent based on the priority application to be easily located.
In general, the specification of the second application is identical in substance to the specification of the first. In many instances, the second, if in another language, is simply a translation of the first with perhaps some variation in purely formal parts. But in a minority of cases, the two may not be identical. For instance, sometimes two applications filed in one country are combined into one second application which is filed in another country. Alternatively, a second application could be filed for only part of the disclosure of the priority application. The second application may have the relationship to the first which we refer to as a continuation-in-part (e.g., the second application includes additional subject matter discovered after the first was filed). In some instances, the second application could have its disclosure diminished or increased, to meet the requirements or practices of the second country.
Duplicate or substantially duplicate versions of a foreign language specification, in English or some other language known to the examiner, can sometimes be found. It is possible to cite a foreign language specification as a reference, while at the same time citing an English language version of the specification with a later date as a convenient translation if the latter is in fact a translation.
Questions as to content in such cases must be settled based on the specification which was used as the reference.
If a U.S. patent being considered as a reference claims the priority of a previously filed foreign application, it may be desirable to determine if the foreign application has issued or has been published, to see if there is an earlier date. For example, it has occurred that an examiner rejected claims on the basis of a U.S. patent and the applicant filed affidavits to overcome the filing date of the reference; the affidavits were controversial and the case went to appeal, with an extensive brief and an examiner’s answer having been filed. After all this work, somebody noticed that the U.S. patent reference claimed the priority of a foreign application filed in a country in which patents were issued fairly soon, checked the foreign application, and discovered that the foreign patent had not only been issued, but also published in printed form, more than 1 year prior to the filing date of the application on appeal.
If a foreign patent or specification claims the priority of a U.S. application, it can be determined whether the latter is abandoned, still pending, or patented. Even if the U.S. case is or becomes patented, however, the foreign documents may still be useful as supplying an earlier printed publication date.
If a foreign patent or specification claims the priority of an application in another foreign country, it may sometimes be desirable to check the latter to determine if the subject matter was patented or published at an earlier date. As an example, if a British specification being considered as a reference claims the priority of an application filed in Belgium, it is known at once that a considerably earlier effective date can be established, if needed, because Belgian patents issue soon after filing. In addition, if the application referred to was filed in one of the countries which publish applications in printed form 18 months after filing, the subject matter of the application will be available as a printed publication as of the 18 month publishing date. These remarks obviously also apply to a U.S. patent claiming a foreign priority.
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§ 901.05PRIOR ART, CLASSIFICATION, AND SEARCH
The determination of whether a foreign patent has been issued or the application published is a comparatively simple matter for some countries, but for some it is quite laborious and time-consuming . Sources for this data which are not maintained by the Office do exist and can be utilized for locating corresponding patents. Two possible sources are the Derwent World Patents Index (DWPI) produced by Thomson Reuters, and the International Patent Documentation Center (INPADOC), which is produced by the European Patent Office. Additionally, Chemical Abstracts Service (CAS) publishes abstracts of patents in the chemical arts from a large number of countries. Only one patent or published specification from a family is abstracted in full and any related family members issued or published are cross-referenced. Chemical Abstracts are available online via commercial databases or via Microfilm/CD-ROM in the Main Scientific and Technical Information Center (STIC). To get access to Chemical Abstracts online, examiners should contact their SPE for approval and email the STIC-ERC mailbox. The microfilm collection is available from 1907-1987; and the CD-ROM collection is available from 1987-2011. The coverage is for approximately 83 journals, with the oldest content dating from 1859.
When an application is filed outside the Paris Convention year from an earlier application, the later application may not refer to the first application. It is hence possible that there will be duplicate specifications published without any indication revealing the fact. These may be detected when the two copies come together in the same subclass. Because the later application is filed outside the convention year, the earlier application may be prior art to the latter if it has been published or issued.
III. VALIDITY OF DATES DISPLAYED ON FACE OF FOREIGN PATENT DOCUMENTS
The examiner is not required to prove either the date or the occurrence of events specified on specifications of patents or applications, or in official journals, of foreign patent offices which the Office has in its possession. In a court action, certified copies of the Office copies of these documents constitute prima facie evidence in view of 28 U.S.C. 1745. An applicant is entitled to show the contrary
by competent evidence, but this question seldom arises.
The date of receipt of copies by the Office, as shown by Office records or stamped on the copies, need only to be stated by the examiner, when necessary.
IV. NOTES ON INDIVIDUAL COUNTRIES
The following table gives some data concerning the published patent material of a number of countries to assist in their use and citation as references. This table reflects only the most current patent office practice for each foreign country specified and is not applicable for many older foreign patent documents. The STIC staff can help examiners obtain data related to any documents not covered by this table. The citation dates listed in the following table are not necessarily the oldest possible dates. Sometimes an earlier effective date, which is not readily apparent from the face of the document, is available. If an earlier date is important to a rejection, the examiner should consult STIC staff, who will attempt to obtain further information regarding the earliest possible effective date.
How To Use Table
Each horizontal row of boxes contains information on one or more distinct patent documents from a specified country available as a reference under pre-AIA 35 U.S.C. 102(a) and 102(b) or 35 U.S.C. 102(a)(1). If several distinct patent documents are included within a common box of a row, these documents are related to each other and are merely separate documents published at different stages of the same invention’s patenting process. Usually, this related group of documents includes a published application which ripens into an issued patent. Within each box of the second column of each row, the top listed document of a related group is the one that is “published” first (e.g., made available for public inspection by laying open application, or application printed and disseminated to the public). Once an examiner determines the country or organization publishing the documents, the name of the document can be located in the second column of the table and the examiner can determine if a document from the related group containing the same or similar disclosure having an earlier date is
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available as a reference. Usually, the documents within a related group have identical disclosures; sometimes, however, there are differences in the claims or minor differences in the specification. Therefore, examiners should always verify that the
earlier related document also includes the subject matter necessary for the rejection. Some countries issue more than one type of patent and for clarity, in these situations, separate rows are provided for each type.
GENERAL COMMENTSFOREIGN LANGUAGE NAME DESIGNATING THE DATE USED FOR CITATION PURPOSES (TYPE OF DATE)
DOCUMENT NAME IN LANGUAGE OF ISSUING COUNTRY (TYPE OF DOCUMENT)
ISSUING/ PUBLISHING COUNTRY OR ORGANIZATION
EP Printing of application occurs 18 months after priority date.
Date application made available to public
European patent applicationEuropean Patent Office
EP dates are in day/month/year order.
Date publishedEuropean patent specification
Date publishedNew European patent specification (above specification amended)
FR Date of laying open the application is the earliest
Disposition du public de la demande (date of laying
Demande de brevet d’invention (patent application)
France
possible date. This usuallyopen application)/date published occurs 18 months after the
filing or priority date but canDisposition du public du brevet d’invention (date of
Brevet d’invention (patent) occur earlier at applicant’s request. The application ispublication of the notice of
patent grant) printed a short time after being laid open. FR dates are in day/month/year order
FR Disposition du public de la demande (date published)
Demande de certificat d’utilite (utility certificate application 1st level publication)
France
Disposition du public du certificat d’utilite (date published)
Certificat d’utilite (utility certificate, 2nd publication)
Patentschrift are printed (up to four different times) after
Offenlegungstag (date application printed)
Offenlegungschrift (unexamined patent application)
DE Germany
examination and at various stages of opposition. DE dates are in day/month/year order
Veræfentlichungstag der patenterteilung (date printed)
Patentschrift (examined patent)
DE
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§ 901.05PRIOR ART, CLASSIFICATION, AND SEARCH
GENERAL COMMENTSFOREIGN LANGUAGE NAME DESIGNATING THE DATE USED FOR CITATION PURPOSES (TYPE OF DATE)
DOCUMENT NAME IN LANGUAGE OF ISSUING COUNTRY (TYPE OF DOCUMENT)
ISSUING/ PUBLISHING COUNTRY OR ORGANIZATION
Several more printings (up to four) occur as
First printing coded “DD” (date of first publication
Patentschrift (Ausschließungspatent)
Germany
examination proceeds andbefore examination as to novelty)
(exclusive type patent based on former East German application patent is granted. Separate and published in accordance with E. German laws)
DD numbering series is used.
DE Another printing occurs after examination. Separate
First printing coded “DD” (date of first printing before examination as to novelty)
Patentschrift (Wirtschaft-patent) (economic type patent published in accordance with East German laws)
Germany
DD numbering series is used.
DE Copy is supplied only on request.
Eintragungstag (date laid open after registration as a patent)
Gebrauchsmuster (utility model or petty patent)
Germany
Published from No. DE-GM 1 186 500J.
Bekanntmachung im patentblatt (date published for public)
INID codes (41)-(47) include first date listed in
Upper right corner beneath number (date laid open and printed)
Kôkai Tokkyo kôhô (unexamined patent application) Kôhyo Tokkyo kôhô
JP Japan
terms of the year of the (unexamined patent application Emperor. To convert yrs. based on international application)
prior 1989, add 1925. To convert yrs. after 1988, add 1988. Newer documents also include second date
Upper right corner beneath number (date laid open and
Tokkyo kôhô (examined patent application)
following the first given inprinted; 1st publication OUR Gregorian Calendar inwhen Kôkai Tokkyo kôhô year/month/day sequence inor Kôhyo Tokkyo kôhô not
published) Arabic numerals intermixed with their equivalent JP characters.
Upper right corner beneath number (date laid open and printed)
Tokkyo shinpan seikyû kôkoku (corrected patent specification)
JP Japan
Upper right corner beneath number (date laid open and printed)
Kôkai jitsuyô shin-an kôhô (unexamined utility model application) or Kôhyo jitsuyô
JP Japan
shin-an kôhô (unexamined utility model application based on international)
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GENERAL COMMENTSFOREIGN LANGUAGE NAME DESIGNATING THE DATE USED FOR CITATION PURPOSES (TYPE OF DATE)
DOCUMENT NAME IN LANGUAGE OF ISSUING COUNTRY (TYPE OF DOCUMENT)
ISSUING/ PUBLISHING COUNTRY OR ORGANIZATION
Upper right corner beneath number (date laid open and
Jitsuyô shin-an kôhô (examined utility model application)
printed; 1st publication when Kôkai or Kôhyo not published)
Tôroku jitsuyô shin-an shinpan seikyû kôkoku (corrected registered utility model)
JP Japan
Isyô kôhô (registered design application)
JP Japan
Date application printed (1st publication) Date printed
Zayavka Na Izobretenie (unexamined application for
RU Russian Federation
(normally 2nd publication,invention) Patent Na Izobreteniye (Patent) but 1st publication when
application not published) Supplied upon request onlySvidetelstvo Na Poleznuyu
Model (utility model) RU Russian Federation
Supplied upon request onlyPatent Na Promishlenniy Obrazec (design patent)
RU Russian Federation
(date of printing the application) (date of printing)
Published patent application (searched, but unexamined) Patent Specification (granted examined patent)
GB United Kingdom
GB (date of printing)Amended or Corrected Patent
Specification (amended granted patent)
United Kingdom
WO (date of printing the application)
International application (PCT patent application)
World Intellectual Property Organization
901.05(a) Citation Data [R-07.2015]
Foreign patent publications that use Arabic and Roman numerals in lieu of names to indicate the date show in order the day, month, and year, or alternatively, the year, month, and day. Roman numerals always refer to the month.
Japanese patent application publications show the date in Arabic numerals by indicating in order the year of the reign of the Emperor, the month, and the day. To convert the Japanese year of the Emperor
to the Western calendar year, for years prior to 1989, add 1925 to the JAPANESE YEAR. For example: 40.3.6 = March 6, 1965. For years after 1988, add 1988 to the JAPANESE YEAR.
901.05(b) Other Significant Data [R-08.2012]
I. NUMBERS FOR IDENTIFICATION OF BIBLIOGRAPHIC DATA ON THE FIRST PAGE OF PATENT AND LIKE DOCUMENTS
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§ 901.05(b)PRIOR ART, CLASSIFICATION, AND SEARCH
INCLUDING INDUSTRIAL DESIGNS (INID NUMBERS)
The purpose of INID Codes (“INID” is an acronym for “Internationally agreed Numbers for the Identification of (bibliographic) Data”) is to provide a means whereby the various data appearing on the first page of patent and like documents or in patent gazettes can be identified without knowledge of the language used and the laws applied. They are now used by most patent offices and have been applied to U.S. patents since August 4, 1970. Some of the codes are not pertinent to the documents of a particular country and some which are pertinent may, in fact, not be used. INID codes for industrial designs are similar to, but not identical to, those used for patents and like documents. INID codes for industrial designs are provided separately below.
INID Codes and Minimum Required for the Identification of Bibliographic Data for Patent and Like Documents (based on WIPO Standard ST.9)
(10) Identification of the patent, SPC or patent document °(11) Number of the patent, SPC or patent document °(12) Plain language designation of the kind of document °(13) Kind of document code according to WIPO Standard ST.16 °(15) Patent correction information °°(19) WIPO Standard ST.3 code, or other identification, of the office or organization publishing the document Notes: (i) For an SPC, data regarding the basic patent should be coded by using code (68). (ii) °° Minimum data element for patent documents only. (iii) With the proviso that when data coded (11) and (13), or (19), (11) and (13), are used together and on a single line, category (10) can be used, if so desired. (20) Data concerning the application for a patent or SPC °(21) Number(s) assigned to the application(s), e.g., “Numéro d’enregistrement national,” “Aktenzeichen” °(22) Date(s) of filing the application(s)
°(23) Other date(s), including date of filing complete specification following provisional specification and date of exhibition (24) Date from which industrial property rights may have effect (25) Language in which the published application was originally filed (26) Language in which the application is published Notes: (i) Attention is drawn to the Appendix 3 of WIPO Standard ST. 9 which contains information on the term of protection and on the date from which industrial property rights referred to under code (24) may have effect. (ii) The language under code (25) and (26) should be indicated by using the two-letter language symbol according to International Standard ISO 639:1988. (30) Data relating to priority under the Paris Convention and other agreement not specifically provided for elsewhere °(31) Number(s) assigned to priority application(s) °(32) Date(s) of filing of priority application(s) °(33) WIPO Standard ST.3 code identifying the national industrial property office allotting the priority application number or the organization allotting the regional priority application number; for international applications filed under the PCT, the code “WO” is to be used (34) For priority filings under regional or international arrangements, the WIPO Standard ST.3 code identifying at least one country party to the Paris Convention for which the regional or international application was made Notes: (i) With the proviso that when data coded (31), (32), and (33) are presented together, category (30) can be used, if so desired. If an ST.3 code identifying a country for which a regional or international application was made is published, it should be identified as such using INID Code (34) and should be presented separately from elements coded (31), (32) and (33) or (30). (ii) The presentation of priority application numbers should be as recommended in WIPO Standards ST.10/C and in ST.34. (40) Date(s) of making available to the public
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°°(41) Date of making available to the public by viewing, or copying on request, an unexamined patent document, on which no grant has taken place on or before the said date °°(42) Date of making available to the public by viewing, or copying on request, an examined patent document, on which no grant has taken place on or before the said date °°(43) Date of making available to the public by printing or similar process of an unexamined patent document, on which no grant has taken place on or before the said date °°(44) Date of making available to the public by printing or similar process of an examined patent document, on which no grant or only a provisional grant has taken place on or before the said date °°(45) Date of making available to the public by printing or similar process of a patent document on which grant has taken place on or before the said date (46) Date of making available to the public the claim(s) only of a patent document °°(47) Date of making available to the public by viewing, or copying on request, a patent document on which grant has taken place on or before the said date °(48) Date of issuance of a corrected patent document Note: °°Minimum data element for patent documents only, the minimum data requirement being met by indicating the date of making available to the public the patent document concerned. (50) Technical information °(51) International Patent Classification or, in the case of a design patent, as referred to in subparagraph 4(c) of WIPO Standard ST.9, International Classification for Industrial Designs (52) Domestic or national classification °(54) Title of the invention (56) List of prior art documents, if separate from descriptive text (57) Abstract or claim (58) Field of search Notes: (i) The presentation of the classification symbols of the International Classification for Industrial Designs should be made in
accordance with paragraph 4 of WIPO Standard ST.10/C. (ii) With regard to code (56) attention is drawn to WIPO Standard ST.14 in connection with the citation of references on the front page of patent documents and in search reports attached to patent documents. (60) References to other legally or procedurally related domestic or previously domestic patent documents including unpublished applications therefor °(61) Number and, if possible, filing date of the earlier application, or number of the earlier publication, or number of earlier granted patent, inventor's certificate, utility model or the like to which the present document is an addition °(62) Number and, if possible, filing date of the earlier application from which the present patent document has been divided up °(63) Number and filing date of the earlier application of which the present patent document is a continuation °(64) Number of the earlier publication which is “reissued” (65) Number of a previously published patent document concerning the same application (66) Number and filing date of the earlier application of which the present patent document is a substitute, i.e., a later application filed after the abandonment of an earlier application for the same invention (67) Number and filing date of a patent application, or number of a granted patent, on which the present utility model application or registration (or a similar industrial property right, such as a utility certificate or utility innovation) is based (68) For an SPC, number of the basic patent and/or, where appropriate, the publication number of the patent document Notes: (i) Priority data should be coded in category (30). (ii) Code (65) is intended primarily for use by countries in which the national laws require that republication occur at various procedural stages under different publication numbers and these numbers differ from the basic application numbers.
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§ 901.05(b)PRIOR ART, CLASSIFICATION, AND SEARCH
(iii) Category code (60) should be used by countries which were previously part of another entity for identifying bibliographic data elements relating to applications or grants of patents which data had initially been announced by the industrial property office of that entity. (70) Identification of parties concerned with the patent or SPC °°(71) Name(s) of applicant(s) (72) Name(s) of inventor(s) if known to be such °°(73) Name(s) of grantee(s), holder(s), assignee(s) or owner(s) (74) Name(s) of attorney(s) or agent(s) °°(75) Name(s) of inventor(s) who is (are) also applicant(s) °°(76) Names(s) of inventor(s) who is (are) also applicant(s) and grantee(s) Notes: (i) °°For patent documents for which grant has taken place on or before the date of making available to the public, and gazette entries relating thereto, the minimum data requirement is met by indicating the grantee, and for other documents by indication of the applicant. (ii) (75) and (76) are intended primarily for use by countries in which the national laws require that the inventor and applicant be normally the same. In other cases (71) or (72) or (71), (72) and (73) should generally be used. (80) Identification of data related to International Conventions other than the Paris Convention and to legislation (90) with respect to SPC’s (81) Designated State(s) according to the PCT (83) Information concerning the deposit of microorganisms, e.g., under the Budapest Treaty (84) Designated Contracting States under regional patent conventions (85) Date of commencement of the national phase pursuant to PCT Article 23(l) or 40(l) (86) Filing data of the PCT international application, i.e., international filing date, international application number, and, optionally, the language in which the published international application was originally filed (87) Publication data of the PCT international application, i.e., international publication date, international publication number, and,
optionally, the language in which the application is published (88) Date of deferred publication of the search report (91) Date on which an international application filed under the PCT no longer has an effect in one or several designated or elected States due to failure to enter the national or regional phase or the date on which it has been determined that it had failed to enter the national or regional phase (92) For an SPC, number and date of the first national authorization to place the product on the market as a medicinal product (93) For an SPC, number, date and, where applicable, country of origin, of the first authorization to place the product on the market as a medicinal product within a regional economic community (94) Calculated date of expiry of the SPC or the duration of the SPC (95) Name of the product protected by the basic patent and in respect of which the SPC has been applied for or granted (96) Filing date of the regional application, i.e., application filing date, application number, and, optionally, the language in which the published application was originally filed (97) Publication data of the regional application (or of the regional patent, if already granted), i.e., publication date, publication number, and, optionally, the language in which the application (or, where applicable, the patent) is published Notes: (i) The codes (86), (87), (96), and (97) are intended to be used: • on national documents when identifying one or more of the relevant filing data or publication data of a PCT international application, or of the regional application (or of the regional patent, if already granted), or • on regional documents when identifying one or more of the relevant filing data or publication data of the PCT international application or of another regional application (or the regional patent, if already granted). (ii) All data in code (86), (87), (96), or (97) should be presented together and preferably on a single line. The application number or
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publication number should comprise the three basic elements as shown in the example in paragraph 17 of WIPO Standard ST.10/B, i.e., the two letter code identifying the republishing office, the document number, and the kind of document code. (iii) When data to be referenced by INID Codes (86) or (87) refer to two or more regional and/or PCT applications, each set of relevant filing or publication data of each such application should be displayed so as to be clearly distinguishable from other sets of relevant data, e.g., by presenting each set on a single line or by presenting the data of each set grouped together on adjacent lines in a column with a blank line between each set. When data to be referenced by codes (86), (87), (96), or (97) refer to two or more PCT international applications and/or regional applications (or regional patents, if already granted), each set of relevant filing or publication data of each such application (or granted patent) should be displayed so as to be clearly distinguishable from other sets of relevant data, e.g., by presenting each set on a single line or by presenting the data of each set grouped together on adjacent lines in a column with a blank line between each set. (iv) The languages under codes (86), (87), (96), and (97) should be indicated by using the two-letter language symbols according to International Standard ISO 639:1988. (v) The country of origin in code (93), if mentioned, should be indicated by using the two letter code according to WIPO Standard ST.3. (vi) Attention is drawn to the Appendix which contains information on the term of protection and on the date from which SPCs referred to under code (94) may have effect.
II. NUMBERS FOR IDENTIFICATION OF BIBLIOGRAPHIC DATA ON THE FIRST PAGE OF INDUSTRIAL DESIGNS (INID NUMBERS)
INID codes for industrial designs are similar to, but not identical to, those used for patents and like documents. INID codes for industrial designs may be of most interest to design patent examiners.
INID Codes and Minimum Required for the Identification of Bibliographic Data for Industrial Designs (based on WIPO Standard ST.80)
(10) Data concerning the registration/renewal °(11) Serial number of the registration and/or number of the design document °°(12) Plain language designation of the kind of published document °(14) Serial number of the renewal where different from initial registration number °(15) Date of the registration/Date of the renewal (17) Expected duration of the registration/renewal (18) Expected expiration date of the registration/renewal °°(19) Identification, using the two-letter code according to WIPO Standard ST.3, of the authority publishing or registering the industrial design. Note: °°Minimum data element for design documents only (20) Data concerning the application °(21) Serial number of the application °(22) Date of filing of the application °(23) Name and place of exhibition, and date on which the industrial design was first exhibited there (exhibition priority data) (24) Date from which the industrial design right has effect (27) Kind of application or deposit (open/sealed) (28) Number of industrial designs included in the application (29) Indication of the form in which the industrial design is filed, e.g., as a reproduction of the industrial design or as a specimen thereof (30) Data relating to priority under the Paris Convention °(31) Serial number assigned to the priority application °(32) Date of filing of the priority application (33) Two-letter code, according to WIPO Standard ST.3, identifying the authority with which the priority application was made Notes:
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(i) With the proviso that when data coded (31), (32) and (33) are presented together, category code (30) can be used, if so desired. (ii) For international deposits made under the Hague Agreement, the two-letter code “WO” is to be used. (40) Date(s) of making information available to the public (43) Date of publication of the industrial design before examination by printing or similar process, or making it available to the public by any other means (44) Date of publication of the industrial design after examination, but before registration, by printing or similar process, or making it available to the public by any other means (45) Date of publication of the registered industrial design by printing or similar process, or making it available to the public by any other means (46) Date of expiration of deferment (50) Miscellaneous Information °(51) International Classification for Industrial Designs (class and subclass of the Locarno Classification) (52) National classification (53) Identification of the industrial design(s) comprised in a multiple application or registration which is (are) affected by a particular transaction when not all are so affected °(54) Designation of article ( ) or product ( ) covered by the industrial design or title of the industrial design °°(55) Reproduction of the industrial design (e.g., drawing, photograph) and explanations relating to the reproduction (56) List of prior art document, if separate from descriptive text (57) Description of characteristic features of the industrial design including indication of colors (58) Date of recording of any kind of amendment in the Register (e.g., change in ownership, change in name or address, renunciation to an international deposit, termination of protection) Notes: (i) Code (52) should be preceded by the two-letter code, according to WIPO Standard
ST.3, identifying the country whose national classification is used (the two-letter code should be indicated within parentheses). (ii) °°Minimum data element for design documents only. (60) References to other legally related application(s) and registration(s) (62) Serial number(s) and, if available, filing date(s) of application(s), registration(s) or document(s) related by division (66) Serial number(s) of the application, or the registration, of the design(s) which is (are) a variant(s) of the present one Note: Category code (60) should be used by countries which were previously part of another entity for identifying bibliographic data elements relating to applications or registrations of industrial designs, which data had initially been announced by the industrial property office of that entity. (70) Identification of parties concerned with the application or registration °°(71) Name(s) and address(es) of the applicant(s) (72) Name(s) of the creator(s) if known to be such °°(73) Name(s) and address(es) of the owner(s) (74) Name(s) and address(es) of the representative(s) (78) Name(s) and address(es) of the new owner(s) in case of change in ownership Note: °°If registration has taken place on or before the date of making the industrial design available to the public, the minimum data requirement is met by indicating the owner(s); in other cases, by indicating the applicant(s). (80) Identification of certain data related to the international deposit of industrial designs under the Hague Agreement Concerning the International Deposit of Industrial Designs and data related to other international conventions. Designated State(s)/State(s) concerned: (81) Designated State(s) according to the 1960 Act (82) State(s) concerned according to the 1934 Act (84) Designated Contracting State(s) under regional convention.
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Information regarding the owner(s): (86) Nationality of the owner(s) (87) Residence or headquarters of the owner(s) (88) State in which the owner(s) has (have) a real and effective industrial or commercial establishment Note: The data to be referenced by INID codes (81) to (88) should be indicated by using the two-letter code according to WIPO Standard ST.3.
901.05(c) Obtaining Copies [R-07.2015]
Until October 1, 1995, the U.S. Patent and Trademark Office (Office) received copies of the published specifications of patents and patent applications from nearly all the countries which issue them in printed form. The Office now receives most foreign patents in the form of CD-ROM and other electronic media. The foreign patents so obtained are available to examiners from the USPTO’s automated search tools such as the Examiner’s Automated Search Tool (EAST), the Web-based Examiner's Search Tool (WEST), the Foreign Patent Access System (FPAS), and from the Foreign Patents Service Center in STIC.
Until October 1995, it was the practice in the Office to classify and place only a single patent family member for each invention in the examiner search files. In addition, all non-English language patent documents placed in the examiner files were accompanied, to the extent possible, by an English language abstract. For countries where the specification is printed twice, once during the application stage and again after the patent has been granted, only the first printing was, in general, placed in the search files, since the second printing ordinarily does not vary from the first as to disclosure. The Derwent World Patents index is available on the EAST and WEST systems and provides patent family information and Derwent titles and abstracts in English of foreign patent documents.
Copies of various specifications not included in the search files, whether non-English-language patent documents or documents not printed or available for
exchange, may come to the examiner’s attention. For example, they may be cited in a motion to dissolve an interference, be cited by applicants, or turn up in an online search. Upon request, STIC will obtain a copy from its extensive collection, or if necessary, from the patent office of the particular country. In the case of unprinted patent documents, STIC will request that the date of granting and the date the specification was made available to the public be indicated on the copies provided by the country of origin.
Examiners can request copies of any foreign patent documents by submitting an online request using the Foreign Patent Request Form available through STIC’s NPL website on the USPTO intranet. Examiners may also request copies directly from the Foreign Patents Service Center of STIC. If examiners so choose, they can make copies themselves. The most current patent documents are accessible through the USPTO’s automated search systems, which allow public and USPTO users to look up, view, and print foreign documents. Older documents can be found on microfilm or print copies in the Main Service Center of the STIC. See MPEP § 903.03. The STIC Foreign Patents Service Center and the Electronic Information Centers (EICs) will assist examiners with accessing patent data from foreign countries. If examiners prefer self-service, EAST, WEST and other foreign patent websites are available for foreign patent retrieval. Additionally, STIC translation staff is able to retrieve foreign patent information for examiners.
901.05(d) Translation [R-07.2015]
Examiners may consult the translators in the Translations Service Center of the Scientific and Technical Information Center (STIC) for oral assistance in translating foreign patents or literature that are possible references for an application being examined. Examiners may also request human (written) translations of pertinent portions of references being considered for citation or already cited in applications. See MPEP § 901.06(a), STIC Services - Translations, and MPEP § 903.03, Availability of Foreign Patents.
Examiners may request human (written) translations at any point in the examination process, at the
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discretion of the individual examiner, but are encouraged to use oral assistance, language reference resources, and machine translations where possible in the early phases of examination. See MPEP § 706.02. Examiners can request human (written) translations, or machine translations, by submitting an online request using the Translations Request Form available through STIC’s NPL website on the USPTO intranet. Examiners should check the box for either a human (written) translation or machine translation. The Translations Service Center uses email as the sole delivery method for human (written) translations. The STIC maintains a listing of available machine translations tools on its website h t t p : / / w - p a t t r - 0 5 / s t i c / n p l / index.cfm?type=ResList&var1=MachineTranslations.
Examiners may also contact in-house translators directly via phone or email. To obtain immediate oral and partial human (written) translations, Examiners may walk-in to the Translations Service Center and meet directly with a Translator.
Equivalent versions of foreign specifications, that is, members of the same patent family, are often available in English or other languages known to the examiner. In addition, copies of previously translated documents are stored in the Translations Service Center. Before any translation request is processed, the staff of the Translations Service Center checks for equivalents or previous translations. The staff of STIC’s Foreign Patent and Scientific Literature Service Center or the Translations Service Center can assist examiners in locating equivalents or abstracts. See MPEP § 901.06(a), STIC Services - Foreign Patent Services.
901.06 Nonpatent Publications [R-08.2012]
All printed publications may be used as references, the date to be cited being the publication date. See MPEP § 2128 - § 2128.02.
The Scientific and Technical Information Center (STIC) maintains an Electronic Information Center (EIC) or Library in each Technology Center. Copies of non-patent literature can be requested from these
facilities. See MPEP § 707.05(e) for information on how to cite such publications.
901.06(a) Scientific and Technical Information Center (STIC) [R-07.2015]
The main Scientific and Technical Information Center (STIC) is located at the Remsen Building, Room 1D58, 400 Dulany Street, Alexandria, VA 22314. STIC maintains Electronic Information Centers (EICs) in each Technology Center (TC) whose mission is to assist patent examiners in the patent process by providing fast, accurate, prior art searches, document deliver services, the provision of foreign patent copies, translations of foreign documents, and access to non-patent literature in electronic format and in print.
35 U.S.C. 7 Library.
The Director shall maintain a library of scientific and other works and periodicals, both foreign and domestic, in the Patent and Trademark Office to aid the officers in the discharge of their duties.
Technical literature, foreign patent documents, and reference and online search services available in STIC are all important resources for the patent examiner to utilize. These resources provide material which must be known or searched to determine whether claims of applications are directly anticipated and, therefore, unpatentable under the provisions of 35 U.S.C. 102. STIC handbooks, textbooks, periodicals, reports, and other materials assist examiners in deciding the question of patentable invention in cases in which the primary search indicates that there is some novelty as compared to any single reference in the art (35 U.S.C. 103). These resources enable the examiner to determine whether the features novel in the particular combination searched would be obvious to a person skilled in the art from the general state of knowledge as reflected in the technical literature.
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I. STIC COLLECTIONS
A. Books (Electronic and Print)
Based on recommendations by patent examiners and subject area experts, STIC reviews, selects and purchases primarily English-language publications in all fields of applied technology. Collections of e-books, books in print, and trade catalogs are also purchased by STIC for permanent location in specific Technology Centers (TCs). For instance, the Design Patent Art Units have a great many manufacturers’ catalogs. Books in print, and e-books may be ordered by examiners by contacting the STIC EIC in each TC. A request for a publication can be submitted by using the NPL Purchase Request Form which is available on the STIC NPL website. The physical location or database resource of all acquired publications are recorded in the STIC Online Catalog so that users will know where to look for a particular publication, be it on the shelf in the EIC or in particular electronic resource or database. All publications, regardless of location, are processed in STIC’s Collection Management Service Center.
Reference works including encyclopedias, dictionaries, handbooks, and abstracting and indexing services are also available in print in the EIC. Many are available in electronic form and can be accessed via an electronic resource or database. EIC staff can assist examiners in finding information pertinent to the subject matter of a patent application. STIC does not circulate reference materials. Books in the reference collection are so labeled.
Requests for the purchase of books in print or electronic books are accepted at any time throughout the year, with subsequent purchase dependent on demonstrated need and availability of funds. If an electronic copy of a book in print exists STIC will purchase the electronic copy first.
B. Periodicals
STIC provides access to a large collection of print and electronic resources. Incorporated into the collection are a number of titles pertinent to the examination of design patent applications and titles
of interest to nonexamining areas of the U.S. Patent and Trademark Office (USPTO).
Requests for the purchase of new subscription titles are accepted at any time throughout the year, with subsequent purchase dependent on demonstrated need and availability of funds.
Most periodicals are available electronically via the STIC NPL website. Current issues of select periodicals in print are arranged alphabetically and located on shelves near the reference collection in EICs and in Main STIC. Bound periodicals are interfiled with the book collection. Periodicals on microfilm and CD-ROM are housed in cabinets.
C. Foreign Patent Documents
The USPTO receives foreign patent documents through exchange agreements with almost all countries that print or otherwise publish their patent documents. This makes STIC’s collection of foreign patent documents the most comprehensive in the United States.
The collection is located in Main STIC. The most current part of the collection is made available to examiners and the public through the USPTO’s automated search tools which allow users to look up, view, and print documents. The earliest patent documents, as far back as 1617, and documents from smaller countries are found in the paper collection in the stacks or at remote sites.
Most foreign countries issue official patent and trademark journals corresponding to the Official Gazette of the United States Patent and Trademark Office. These journals are shelved under country name. Most countries issue name indexes; some also issue classified indexes. Indexes are shelved with the journals.
The official journals of a few countries include abstracts of the disclosures of the patents announced or applications published.
D. Special Collections
Although STIC still houses substantial print collections, the majority of the collections are now
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in the form of electronic books, journals, and foreign patents. Many rare and historical book collections have been digitized in order to provide electronic access and preserve the materials. The electronic books and journals are accessible via the STIC NPL website. To locate the NPL Services for Examiners on the USPTO Intranet site, go to the Patent Examiner’s Toolkit and click on Non-Patent Literature. Collections are arranged by TC and are also accessible by title via the STIC Online Catalog.
Each Electronic Information Center has a small print collection tailored to the art areas covered by the TC.
II. HOW TO LOCATE MATERIALS IN STIC
The STIC Online Catalog
The primary vehicle for locating e-books, e-journals, database and subscription resources, books in print and other materials is the STIC online catalog. The online catalog contains a record of all materials held by the STIC collections, including location, call number, and availability. Examiners can access the online catalog from their desktops via the Patent Examiner’s Toolkit or via the STIC NPL website.
Print and electronic materials acquired by STIC are classified according to the Library of Congress classification system. Print materials including books and bound periodicals are intershelved in the stacks according to this classification system. New unbound periodical issues are shelved in a separate area of each EIC, in alphabetical order by title.
III. LOAN POLICY
All STIC materials in print except non-circulating items may be checked out at the Reference Desk in the EIC or Main STIC. Non-circulating material includes reference publications, journals in print, foreign patent documents, and microfilm. Examiners may use the Department of Commerce Libraries as well as other Federal Government libraries in the area. STIC’s staff can answer questions regarding the accessibility and lending practices of other libraries. If books in print are needed from another library for official use, a request can be submitted
using the Reference Delivery Request Form available via the STIC NPL website. The Reference Delivery Service Center will process the request on behalf of examiners and deliver the reference upon receipt.
IV. STIC SERVICES
A. Reference Services
STIC’s Reference Desk staff assists examiners in the use of the STIC services and its resources. Upon request, they provide guidance on finding information in the electronic and print collections, and updates on the status of service requests. If any problems are encountered in locating materials or finding answers to informational needs, please check with the staff. They are ready and willing to assist. Queries may be made in person or by using STIC Reference Desk contact resources by phone, email, instant message or simply using the Ask-STIC chat-room.
B. Online Text/Prior Art and Bibliographic Searches
STIC staff located in the EICs in each TC perform prior art and bibliographic searches for examiners using commercial databases (CDBs) and subscription resources STIC staff access many CDBs such as ProQuest Dialog, Scientific and Technical Network (STN), Questel-Orbit, IP.com and others. When they are identified as meeting the needs and requirements of the Office, new database vendors are added. A list of the databases offered by each vendor is available on the vendors' websites.
CDBs extensively cover the fields of knowledge examined by USPTO, and make it possible for expert search staff to retrieve bibliographic information e.g. title, author, publication date, source, language etc., and may also include abstracts, chemical structures, and DNA sequences. Often the full text of the articles, depending on the database can be provided in PDF or other electronic formats.
CDBs and other subscription resources provide access to non-patent literature that is typically not available on the Internet, and require expert knowledge in order to use special indexing, perform complex chemical substance and structure searches,
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and classification search systems that improve retrieval. Examiners can submit a request for a prior art/text search by using the Text/Regular Form on the STIC NPL website. For bibliographic searches, examiners may submit a request for a legal/litigation search by using the Legal/Litigation Form. Patent Family searches may be requested by using the Text/Regular Form or contacting the Reference Desk staff in the EIC. Completed searches are emailed to the examiners.
Online searching of nucleic and amino acid sequences is conducted by the staff of the STIC EIC for TC1600 through the use of an in-house computer system developed for this purpose. On an as-needed basis, introductory classes are conducted by STIC staff to assist examiners in understanding the sequence search results. Examiners can also conduct this search on their own via the in-house ABSS search system.
Examiners may also conduct searches of online commercial databases independently of STIC staff. Once approval for a commercial database login and password from the supervisory patent examiner (SPE) has been obtained, training by the vendor is provided through STIC’s Digital Resources Division. Individual assistance in searching these databases is also available from the Electronic Information Centers (EIC) staff, especially for searching chemical structures and DNA sequences.
C. Foreign Patent Services
The staff of the Foreign Patents Service Center of the STIC is available to assist with any problem or informational need regarding foreign patent document retrieval or foreign patent documents. These services are also available to examiners in the Electronic Information Centers.
Online patent family searches are performed for patent examiners by the Foreign Patents Service Center. The services provided include: identification of English-language or preferred-language equivalents; determination of priority dates and publication dates; searches by inventor name or abstract number; other patent family and bibliographic document retrieval searches; and foreign classification information.
Examiners who choose to perform their own foreign patent searches after receiving appropriate training through the Office of Patent Training can consult foreign patent experts for difficult document retrieval searches.
The staff of the Foreign Patents Service Center can supplement the online document retrieval searching effort with manual searches of foreign patent journals, including Official Gazette(s), patent concordances, and/or indexes. The staff also provides training in the use of the Foreign Patents Access System (FPAS) in EAST/WEST and the use of the foreign patent collections.
SPECIAL NOTE: Members of the public can order copies of foreign patent documents from the Foreign Patents Service Center.
D. Translations
Examiners may consult the translators in the Translations Service Center of STIC for oral assistance in translating foreign language patents and foreign document sources that may be possible references for applications being examined. Oral translations are performed for the major European languages and for Japanese. Examiners may also request written translations of pertinent portions of references being considered for citation or already cited in applications. Full translations are also made upon request. Written translations can be made from virtually all foreign languages into English. See also MPEP § 901.05(d).
The Translations Service Center maintains a database of all previously completed document translations. Patent translations are indexed by country and patent number; articles are indexed by language and author or title. Any copies of translations coming to examiners from outside the Office should be furnished to the Translations Service Center so that it may make copies for its files.
E. Interlibrary Loans
When needed for official business purposes, STIC will borrow from other libraries materials not available in-house. Requests can be submitted to the STIC facility in an examiner’s TC or via the
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electronic form on the STIC NPL website. STIC has borrowing agreements with libraries throughout the U.S.
F. On-Site Photocopying
For the convenience of the Examining Corps, photocopy machines are available for employee use in STIC. These are to be used for photocopying STIC materials which do not circulate, or for materials which examiners do not wish to checkout.
G. Obtaining Publication Dates
Requests pertaining to the earliest date of publication or first distribution to the public of publications should be made to the STIC EIC facility in the examiner’s TC. For U.S. publications, the staff can obtain the day and month of publication claimed by the copyright owner. The same information can be obtained for foreign publications through correspondence although it will take a little longer.
H. Tours
Special tours of the STIC and its service centers can be arranged for examiners or for outside groups by contacting the STIC EIC facility in the examiner’s TC.
901.06(b) Borrowed Publications [R-07.2015]
See MPEP § 901.06(a), STIC Services - Interlibrary Loans.
901.06(c) Alien Property Custodian Publications [R-07.2015]
Applications vested in the Alien Property Custodian during World War II were published in 1943 even though they had not become patents.
Care must be taken not to refer to these publications as patents; they should be designated as A.P.C. published applications.
An A.P.C. published application may be used by the examiner as a basis for rejection only as a printed
publication effective from the date of publication, which is printed on each copy.
The manner of citing one of these publications is as follows: A.P.C. Application of ............, Ser. No. ............, Published ............
The Patent Search Room contains a complete set of A.P.C. published applications arranged numerically in bound volumes. The U.S. A.P.C. bib data is located on the following database (2964 totan( � http://db.library.queensu.ca/apcdocuments/.
901.06(d) Abstracts, Abbreviatures, and Defensive Publications [R-07.2015]
Abstracts and Abbreviatures are U.S. Patent and Trademark Office publications of abandoned applications. Defensive Publications (the O.G. defensive publication and search copy) are U.S. Patent and Trademark Office publications of provisionally abandoned applications wherein the applicant retains his or her rights to an interference for a limited time period of 5 years from the earliest effective U.S. filing date. On May 8, 1985, the U.S. Patent and Trademark Office stopped accepting Defensive Publication requests and began accepting applications for Statutory Invention Registrations (SIRs), although there was an overlap period where both Defensive Publications and Statutory Invention Registrations were processed; see MPEP § 711.06 and § 711.06(a). Statutory Invention Registrations have now replaced the Defensive Publication program. However, requests for a statutory invention registration filed on or after March 16, 2013 will not be processed, as the provisions of pre-AIA 35 U.S.C. 157 governing Statutory Invention Registrations were repealed. See MPEP § 1101. Statutory Invention Registrations are numbered with document category “H,” beginning with “H1.” Defensive Publications and Statutory Invention Registrations are included in subclass lists and subscription orders.
Distinct numbers are assigned to all Defensive Publications published December 16, 1969 through October 1980.
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For Defensive Publications published on and after November 4, 1980, a different numbering system is used.
A conversion table from the application serial number to the distinct number for all Defensive Publications published before December 16, 1969 appears at 869 O.G. 687. The distinct numbers are used for all official reference and document copy requirements.
901.07 Patent Family Information [R-07.2015]
Patent family information is available at the U.S. Patent and Trademark Office (Office) primarily through commercial databases. See MPEP § 901.05 regarding patent family. Examiners have access to this information either directly through the automated search tools such as the Examiner’s Automated Search Tool (EAST) and the Web-based Examiner Search Tool (WEST) or indirectly through the search services of the Scientific and Technical Information Center (STIC). Additionally, Examiners may utilize the Common Citation Document website accessible through the Examiner’s Toolkit to obtain patent family information.
I. AVAILABLE DATABASES
Derwent’s World Patents Index (WPI) and International Patent Documentation Center (INPADOC) are two databases used for retrieving foreign patent information.
The WPI database is loaded in-house at the Office and is integrated with the Office’s automated search system. WPI in-house is used whenever abstracts are needed or when searches in addition to publication date or patent family are required, such as searches on inventor name or IPC (International Patent Classification). WPI in-house is also the first choice for searches for publication dates or patent families because of its ease of use and low cost.
INPADOC is used for quick searches for publication dates or patent families. The Office enjoys cost effective rates for INPADOC due to an agreement between the Office and the International Patent Documentation Center (now part of the European Patent Office) negotiated several years ago. The agreement applies only to INPADOC as accessed directly on the INPADOC computer in Austria, not to INPADOC as available on other commercial database systems such as ORBIT, DIALOG, or STN.
II. ACCESS TO FOREIGN PATENT INFORMATION
Patent examiners may directly search WPI in-house or INPADOC or both.
Examiners may also request foreign patent searches through STIC. For STIC services, see MPEP § 901.06(a), paragraph IV.
901.08 [Reserved]
902 Search Tools and Classification Information [R-07.2015]
There are multiple classification systems used throughout the international patent system. These include the Cooperative Patent Classification System (CPC), U.S. Patent Classification System (USPC), the International Patent Classification System (IPC), and the Locarno International Classification
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(Locarno). All U.S. patents and U.S. Patent Application Publications published after December 31, 2014 will no longer receive classifications within the USPC. The USPC will, at that time, become a static searchable database.
902.01 Classification Manual for the U.S. Patent Classification System [R-07.2015]
The United States Patent Office (the Office) maintains an electronic classification manual for the U.S. Patent Classification System (USPC). The complete manual is available to USPTO personnel from the Classification Home Page (http://ptoweb:8081/), which is accessible from the desktop via the Patent Examiner’s Toolkit. The Manual of Classification is also available via the Internet at www.uspto.gov/web/ patents/classification, however it will no longer be updated after December 31, 2014. See MPEP § 905 et seq. for information regarding the Cooperative Patent Classification System.
Each class has a title descriptive of its subject matter, is identified by a class number, and is subdivided into a number of subclasses. Each subclass also has a descriptive title, is identified by a subclass number, and the subclass number is an integral number that may contain a decimal portion and/or alpha characters. A complete identification of a subclass requires both the class and subclass number and any alpha or decimal designations; e.g., 417/161.1A identifies Class 417, Subclass 161.1A.
The Manual of Classification for the USPC system contains ordered arrangements of all class and subclass titles, the ordered arrangements are referred to as class schedules. The class and subclass titles are brief and are as suggestive as possible of the subject matter included. Therefore, it is best not to depend exclusively upon titles to explain the subject matter encompassed by a class and subclass but to refer also to the respective definitions and notes. If a search is to be expeditious, accurate, and complete, the Manual of Classification should be used only as a key to the class or subclass definition and appended notes.
The Manual of Classification for the USPC system has the following parts:
(A) Overview of the U.S. Patent Classification System.
(B) Classes Within the U.S. Classification System Arranged by Related Subject Matter: A hierarchical arrangement of class titles organized into four main groups by related subject matter. Only as a last resort should this hierarchical arrangement of class titles, be used to determine document placement, i.e., when none of the other classification criteria, such as comprehensiveness, etc., allow placement. This part also includes an exact hierarchical listing of the synthetic resin and chemical compound classes.
(C) Classes Arranged by Art Unit (CAAU): A list, in numerical order, by art unit indicating the classification(s) assigned to each.
(D) Classes Arranged Numerically With Art Unit and Search Room Locations (CAN): A list of classifications in numerical order by class number giving the class title, the art unit to which the art is assigned, and the examiner search room in which the art can be found.
(E) Classes Arranged in Alphabetical Order (CAA): A list of classes in alphabetical order by class title with associated class numbers.
(F) Class Schedules: Class schedules for utility patent, design, and plant classes.
902.01(a) Index to the U.S. Patent Classification System [R-08.2012]
The Index to the U.S. Patent Classification System (USPC) is an alphabetic listing of technical and common terms referring to specific classes and subclasses of the USPC. The index is used as an initial entry into the system and should not be considered exhaustive. All appropriate class schedules should be scanned for specifically related subclasses, and the definitions and associated notes of the pertinent classifications should also be reviewed, even when the citation found in the Index appears to be restricted to a specific subject matter area.
The Index is regularly updated. Suggestions or changes to the Index are encouraged and should be directed to the Technology Center (TC) classification contact in the TCs.
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The Index is available online to USPTO personnel from the Classification Home Page – USPC Index. The Classification Home Page (http://ptoweb:8081/) is accessible from the desktop via the Patent Examiner’s Toolkit.
902.02 Class and Subclass Definitions in USPC [R-07.2015]
All of the utility classes (i.e., classes devoted to technology), and the plant class have definitions. All design classes will eventually have definitions.
Definitions state the subject matter of the classes and subclasses in much more detail than it is possible to state in the brief class and subclass titles. A study of the definitions is essential to determine the proper classification of subject matter within the U.S. Patent Classification System (USPC).
All classes and subclasses (class definitions) in the USPC are available online to USPTO personnel from the Classification Home Page under the heading Search Classification Data. The Classification Home Page (http://ptoweb:8081/) is accessible from the desktop via the Patent Examiner’s Toolkit. The class definitions are archived in portable document formats (PDFs) to CD-ROM every June and December.
It should be noted that classification orders frequently affect existing definitions. Personal sets of definitions used by examiners should be periodically revised to reflect these changes. Classification Orders are available online to USPTO personnel from the Classification Home Page under the heading Classification Reports. The Classification Home Page is accessible from the desktop via the Patent Examiner’s Toolkit.
902.02(a) Definition Notes in USPC [R-07.2015]
Many of the definitions have accompanying notes. These notes are of two types: (A) notes that supplement definitions by explaining terms or giving examples, and (B) notes referring to related disclosures located in other classes or subclasses.
The latter notes are termed “See or Search” notes and are helpful in explaining the limits of a class or subclass. They generally state the relationship to, and difference from, other identified subject matter collections. Each “See or Search” note helps a user reach a decision either to include or exclude an area containing relevant subject matter.
Search notes are not exhaustive and do not limit the search but suggest additional fields of search. Additionally, since a search note that applies to a particular subclass is rarely repeated for subclasses indented thereunder, it is advisable to review the search notes of all parent subclasses.
902.02(b) [Reserved]
902.03 Classification Information [R-07.2015]
The majority of U.S. Patents and U.S. Patent Application Publications published after December 31, 2014, will no longer receive a designated U.S. patent classification. Current classification information for U.S. patents is available from the sources indicated below.
902.03(a) Patent Classification Home Page on the Internet [R-08.2012]
The Office of Patent Classification Home Page address on the Internet is www.uspto.gov/web/ offices/opc/. The site is the clearinghouse for classification information published in hyper-text mark-up language (HTML) and Adobe Acrobat portable document format (PDF) by the U.S. Patent and Trademark Office (USPTO). The site includes the following in HTML and PDF: (A) the Index to the U.S. Patent Classification system (USPC) (linked from “Classification Index, Patents”); (B) class definitions (linked from “Classification Definitions, Patents”); and (C) class schedules (linked from “Classification Manual, Patents”). The site integrates with the USPTO Patent Full-Text and Image Database site by allowing a search of a subclass by clicking on a patent icon in the classification schedules and definitions which generates a search result in the USPTO Patent Full-Text and Image
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Database. The USPTO Patent Full-Text and Image Database provides full-text of all US patents issued since January 1, 1976, and full-page images of each page of every US patent issued since 1790. Therefore, it is possible to see every patent in a subclass by browsing the classification schedules using the Classification Home Page in combination with the USPTO Patent Full-Text and Image Database.
902.03(b) Patent Classification Home Page on the USPTO Intranet [R-07.2015]
The address for the Patent Classification Home Page on the USPTO Intranet is http://ptoweb:8081/. The Classification Home Page is also accessible from the desktop via the Patent Examiner’s Toolkit. The site is the clearinghouse for classification information published in hyper-text mark-up language (HTML) and Adobe Acrobat portable document format (PDF) by the U.S. Patent and Trademark Office (USPTO). Examiners and the public are provided with access to identical information for the Index, schedules, and definitions.
The Intranet Classification Home Page site also includes links to international information such as IPC Concordance, IPC Schedules, IPC Catchword Index, WIPO Handbook on Industrial Property Information and Documentation, and to national (U.S.) information such as Overview of the Classification System, Classification Guides and Bulletins, and the Patent Classification Search Page.
The Patent Classification Retrieval System (PCRS) provides Original (OR) and Cross-Reference (XR) classification information for individual patents and listings of patents contained in subclasses. This data
is updated bimonthly with new issues, withdrawn patents and reclassifications.
902.03(c) [Reserved]
902.03(d) [Reserved]
902.03(e) Automated Search Tools: EAST and WEST [R-08.2012]
The automated search tools on examiners’ desktop computers include the Examiner’sAutomated Search Tool (EAST), the Web-Based Examiner Search Tool (WEST), and the Foreign Patent Access System (FPAS). EAST and WEST provide examiners with access to the: (A) full text of U.S. published applications since 2001; (B) full text of U.S. patents granted since 1970; and (C) optically scanned full text of U.S. patents granted 1920-1970. Additionally, EAST and WEST each provide current classification information and images for all U.S. published applications and patents. Images are available for foreign patent documents, and English language abstracts are available for many foreign patent documents published since 1978 using the automated search tools. Specific instructions for gaining access to the various documents available using the automated search tools can be found in the “Patent Automation” folder in Microsoft Outlook and on the EAST, WEST, and BRS Search Strategy webpages on the Intranet, available on the examiners’ desktop computers.
The EAST and WEST products are also available to users in the Patent Search Room at the USPTO.
903 Classification in USPC [R-07.2015]
903.01 Statutory Authority [R-08.2012]
The statutory authority for establishing and maintaining a classification system is given in the following statute, which states:
35 U.S.C. 8 Classification of patents.
The Director may revise and maintain the classification by subject matter of United States letters patent, and such other
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patents and printed publications as may be necessary or practicable, for the purpose of determining with readiness and accuracy the novelty of inventions for which applications for patent are filed.
903.02 Basis and Principles of Classification [R-08.2012]
Many of the principles that form the basis of classification used in the U.S. Patent and Trademark Office are set forth in the “Examiner Handbook to the U.S. Patent Classification System” which can be accessed from either the Intranet on the Classification Home Page (http://ptoweb:8081/) or the Internet on the Office of Patent Classification home page (www.uspto.gov/web/offices/opc/). Any questions not covered in this handbook can be directed to the Office of Patent Classification.
903.02(a) [Reserved]
903.02(b) Scope of a Class in the USPC [R-07.2015]
In using any classification system, it is necessary to analyze the organization of the class or classes to be included in the search.
The initial analysis should determine which one or ones of the several types of subject matter (manufacture, art, apparatus, or stock material) are contained in the class being considered.
Further, relative to each type of subject matter, it is necessary to consider each of the various combinations and subcombinations set out below:
Basic Subject Matter Combined with Feature for Some Additional Purpose. The added purpose is in excess of the scope of the subject matter for the class, as defined in the class definition; e.g., adding a sifter to a stone crusher which gives the added function of separating the crushed stone.
Basic Subject Matter Combined with Perfecting Feature. Features may be added to the basic subject matter which do not change the character thereof,
but do perfect it for its intended purpose; e.g., an overload release means tends to perfect a stonecrusher by providing means to stop it on overload and thus prevent ruining the machine. However, this perfecting combined feature adds nothing to the basic character of the machine.
Basic Subject Matter. The combination of features necessary and essential to the fundamental character of the subject matter treated; e.g., a stonecrusher requires a minimum number of features as essential before it can function as such.
Subcombinations Specialized to Basic Subject Matter. Each type of basic subject matter may have subcombinations specialized to use therewith; e.g., the crushing element of a stonecrusher.
Subcombinations of General Utility. Each type of basic subject matter may have subcombinations which have utility with other and different types of subject matter; e.g., the machine elements of a stonecrusher. Subcombinations of this character usually are provided for in some general class so that the examiner should determine in each instance where they are classified.
903.03 Availability of Foreign Patents [R-07.2015]
Many foreign patent documents received in the Office before October 1, 1995 were placed in the shoes in the Technology Center (TCs), according to either the United States Patent Classification System (USPC) or, in relatively few instances, the International Patent Classification (IPC) system. Foreign patents received by the Office after October 1, 1995 are available on the USPTO’s automated search systems, the Foreign Patent Access System (FPAS), Internet sites, and the Scientific and Technical Information Center (STIC) collections.
If the examiner desires to update the classification of a foreign patent by changing, canceling, or adding copies, he or she should forward the patent (or bibliographic information) to his or her supervisory patent classifier with a request for the desired transaction attached.
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The Foreign Patents Service Center manages Main STIC. STIC’s collections are international in scope and include foreign patents, non-patent literature, designs, trademarks, and legal information. There is an assortment of resources which reflect the information needs of examiners and researchers working in various fields of science and technology. The staff is experienced in foreign patent data retrieval, patent family searches, and document retrieval services for non-patent literature in the STIC collections.
Examiners confronted with language problems in classifying foreign-language patents may call upon the Translations Service Center of STIC for assistance (see MPEP § 901.06(a)). In addition, the Translations Service Center retains copies of translated foreign patents in the database.
903.04 Classifying Applications for Publication as a Patent Application Publication in USPC [R-07.2015]
Patent applications filed on or after November 29, 2000, are published as a patent application publication pursuant to 35 U.S.C. 122(b), unless certain exceptions apply. See MPEP § 1120.
Patent application publications are given a primary classification (equivalent to an original classification), and may also be given a secondary classification (equivalent to a cross reference). While there may be only one primary classification for a single patent application publication, there may be any number of secondary classifications. The selection of a primary classification of a patent application publication is based on the application’s main inventive concept using the claims as a guide. A primary classification could be any U.S. class/subclass (except cross reference art collections, digests and foreign art collection subclasses). A secondary classification is based on other inventive concepts (mandatory) or valuable disclosure (discretionary), and may be any U.S. class/subclass (including cross reference collections and digests, but excluding foreign art collection subclasses). The classification of a patent application publication is printed on the front page of the publication.
At least 9 weeks prior to the projected publication date, applications are classified using programs designed to enable entry of certain data required for publication of patent applications. Applications are classified by giving each application at least a primary classification and an international classification. The suggested international classification(s) corresponding to each assigned U.S. classification is provided. In addition, if a figure is to be published, the figure is selected at the time of classification.
903.05 Addition, Deletion, or Transfer of U.S. Patents and U.S. Patent Application Publications [R-08.2012]
Requests for addition, deletion, or transfer of official copies of U.S. patents and U.S. patent application publications may be carried out by using the Patent Post Publication Classification Manager and the PGPub Post Publication Classification Manager, which are available online from the Classification Home Page under the heading Patents, their Classifications and Locations. The Classification Home Page is accessible from the desktop via the Patent Examiner’s Toolkit.
Using these tools, examiners can request the following transactions:
(A) Add any classification(s) from the U.S. Patent Classification system as a cross-reference (XR) classification to a patent or a secondary classification to a patent application publication.
(B) Delete XR classification(s) or secondary classification assigned to the Technology Center (TC) of the person requesting the deletion.
(C) Change original classifications (ORs) or primary patent application publication classification to a classification in the TC of the person requesting the change.
(D) Add or delete any International Patent Classification system (IPC) classification to a patent.
903.06 Harmonized Subclasses [R-07.2015]
The U.S. Patent Classification System (USPC) includes subclasses that have been harmonized with subclasses from the European Patent Office (EPO)
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and the Japan Patent Office (JPO). Subclasses that have been harmonized have a designation of “EPO,” “JPO,” or “EPO/JPO” in parentheses following the subclass title to indicate if the subclass has been harmonized with the EPO or JPO or with both systems.
903.07 Classifying and Cross-Referencing at Allowance [R-07.2015]
When an application is passed to issue, it is the duty of each primary examiner to personally review the original classification and cross-referencing made by his or her assistants in the issuing classification boxes on the Image File Wrapper (IFW) issue classification form in the Office Action Correspondence Subsystem (OACS). This form provides space for the full name of the “Primary Examiner” to show that the review has been made. An examiner with full signatory authority who acts personally on an application and sends it to issue should stamp and sign his or her name on the IFW issue classification form ONLY in the “Primary Examiner” space.
An application, properly classified at the start of examination, may be classified differently when it is ready for allowance. The allowed claims should be reviewed in order to determine the subject matter covered thereby. It is the disclosed subject matter covered by the allowed claims that determines the original and any mandatory cross-reference classification of U.S. patents.
The procedure for determining the classification of an issuing application is as follows: every claim, whether independent or dependent, must be considered separately for classification. A separate mandatory classification is required for each claim which is classifiable in a different class or subclass; some claims, particularly in chemical areas, may require plural classifications. After all mandatory classifications have been determined, the classification to be designated as the original (OR) is determined. If all mandatory classifications are in the same class, the original classification is the mandatory classification that, looking at the schedule from the top down, is the most indented subclass array in which any classifications are assigned, in certain circumstances (e.g., the genus-species array),
however, modifications of this rule may apply. See the “Examiner Handbook to the U.S. Patent Classification System” for an explanation of genus-species classification.
If the mandatory classifications are in different classes, the original classification is determined by considering, in turn, the following criteria:
(A) selection based on the most comprehensive claim,
(B) selection based on priority of statutory category of invention,
(C) selection based on superiority of types of subject matter, and
(D) selection among classes in the “related subject” listing at the front of the manual of classification.
It should be noted that the criteria, supra, may be superseded by
(A) special circumstances, e.g., superconductor technology and biotechnology are superior to all other subject matter,
(B) prior placement of patents for a particular body of art, or
(C) particular class lines and class notes.
Once the controlling class is determined, the original classification, looking at the schedule from the top down, is the mandatory classification that is the most indented subclass of the first subclass array in which any classifications are assigned.
For a more complete discussion of this subject, see the “Examiner Handbook to Classification” which is available online to USPTO personnel from the Classification Home Page under the heading Classification Guides and Bulletins. The Classification Home Page (http://ptoweb:8081/) is accessible from the desktop via the Patent Examiner’s Toolkit.
Once the original classification is determined, all remaining mandatory classifications are designated as cross-references, as are any additional discretionary classifications that the examiner wishes to apply to the patent.
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§ 903.07PRIOR ART, CLASSIFICATION, AND SEARCH
The examiner must complete the IFW issue classification form to indicate the class and subclass in which the patent should be classified as an original and also the classifications in which it should appear as a cross-reference. The examiner should be certain that all subclasses into which cross-references are placed are still valid.
All examiners must include alpha subclass designators in the issuing classification boxes on the IFW issue classification form at the time of issue when appropriate. This applies to both the original classification and the cross-reference classification. Any time that a patent is being issued in or cross-referenced to a subclass containing alpha subclasses, the alpha designation for the proper alpha subclass must be included. No other designation is permissible. Inclusion of only the numeric designation of a subclass which includes an alpha subclass designation is an incomplete and improper entry. A numeric subclass from which alpha subclasses have been created is designated with an “R” (denoting residual), and if the patent does not fit an indented alpha subclass, the “R” designation must be included. It is permissible to place multiple copies of a patent into a single set of alpha subclasses.
Digests and cross-reference art collections should also be included in the issuing classification boxes on the IFW issue classification form, but the original classification must never be a digest or cross-reference art collection. The indication for a copy of a patent in a digest or cross-reference art collection must be in the cross-reference area of the issuing classification boxes. A digest must be identified by class number, alpha characters DIG, and appropriate digest number.
U.S. patents cannot be classified in subclasses beginning with “FOR,” since these are exclusively for foreign patents.
APPLICATIONS IN ISSUE
Where an official classification order affects an application already passed to issue, the Office of Patent Classification oversees any necessary changes. Patents issuing from applications which
already have been sent to the printer will be reclassified.
903.07(a) Cross-Referencing — Keep Systematic Notes During Prosecution [R-08.2012]
Throughout the examination of an application, systematic notes should be kept as to cross-references needed either due to claimed or unclaimed disclosure. Examiners handling related subject matter should be consulted during prosecution (whether they handle larger unclaimed combinations or claimed or unclaimed, but disclosed, subcombinations), and asked if cross-references are needed.
Each consultation involving a question of the propriety of the classification of subject matter and/or the need for a cross-reference must be recorded in the SEARCH NOTES box on the file wrapper and must include: the name of each examiner consulted, the date that the consultation took place, and the results of the consultation including the consulted examiners’ or examiner’s indication of where claimed subject matter is properly classified and where subject matter disclosed but unclaimed is properly classified and whether or not a cross-reference is needed.
A cross-reference MUST be provided for all CLAIMED disclosure where possible and inserted in the issuing classification boxes at time of issue.
903.08 Applications: Assignment and Transfer [R-07.2015]
The titles “supervisory patent examiner” and “primary examiner,” as used in this Chapter 900, include in their definition any person designated by them to act on their behalf. It is recognized that authority to accept or refuse the transfer of an application may be delegated when such authority is deserved.
The Technology Center (TC) to which an application is assigned is responsible for its examination until such time as the application is officially transferred to another TC.
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The primary examiners have full authority to accept any application submitted to them that they believe is properly classifiable in a class in their art unit.
903.08(a) New Applications [R-07.2015]
New nonprovisional applications are assigned to the various Technology Centers (TCs) in the first instance by the Office of Patent Application Processing (OPAP).
When a new application is received which, in the opinion of the primary examiner, does not belong to his or her TC, he or she may request transfer of it to another TC. See MPEP § 903.08(d).
If the search in connection with the first action develops art showing proper classification elsewhere, the transfer is usually initiated before the first action is prepared and mailed.
903.08(b) Classification and Assignment to Examiner [R-07.2015]
Every nonprovisional application, new or amended, and including the drawings, if any, when first assigned to a Technology Center (TC) must be classified and assigned to an examiner for examination. The supervisory patent examiner normally assigns the application to an examiner. Provisional applications are not classified or assigned since they are not examined.
If an examiner other than the supervisory patent examiner is given the responsibility of assigning applications, time so spent may, at the TC Director’s discretion, be charged to “Assisting SPE.”
903.08(c) Immediate Inspection of Amendments [R-08.2012]
Upon the receipt of an amendment which makes a transfer proper, steps should be taken promptly in
accordance with the transfer procedure outlined in MPEP § 903.08(d).
903.08(d) Transfer Procedure [R-07.2015]
I. TRANSFER BETWEEN ART UNITS WITHIN THE SAME TECHNOLOGY CENTER
Each Technology Center (TC) has developed internal procedures for transferring application between art units and resolving application assignment disputes.
II. TRANSFERS BETWEEN DIFFERENT TECHNOLOGY CENTERS
Where a supervisory patent examiner (SPE) believes an application, either new or amended, does not belong in his or her art unit, he or she may request transfer of the application from his or her art unit (the “originating” art unit) to another art unit of a different TC (the “receiving” art unit).
The decision as to the classification resolution and assignment of an application is made by agreement between the SPEs involved in the transfer. If no agreement can be reached between the SPEs, the application may be forwarded to the classification dispute TC representative panel of the TC where the application was originally assigned for a final decision. The classification dispute TC representative panel consists of designated representatives from each TC.
Before an application is sent to a receiving art unit of a different TC, the application must be fully reviewed to ensure that all appropriate areas in the originating TC have been considered with respect to the classification of the application. In all cases when a transfer is initiated, the application must be sent on transfer inquiry to a receiving art unit. Even if the application is confusing or contains unfamiliar subject matter, the SPE of the originating art unit must make his or her best judgment as to where the application should be classified and attempt to transfer it there.
Where an application’s claims include a combination of limitations for plural disciplines (chemical, electrical, or mechanical), an SPE or primary examiner may request transfer to another discipline,
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§ 903.08(d)PRIOR ART, CLASSIFICATION, AND SEARCH
notwithstanding the fact that the controlling claims are properly classified in his or her art unit, on the ground that the application is “best examinable” in the other discipline. In this instance, the SPE or primary examiner requesting transfer should cite art showing the limitations classifiable in his or her discipline. For discussion of the situations in which assignment of an application on a “best examinable” basis may be proper, see MPEP § 903.08(e).
III. PROCESS FOR TRANSFER
When the SPE or primary examiner of the originating art unit determines that a transfer is appropriate, he or she must complete the Application Transfer Request form in Patent File Wrapper (PFW) and provide a full explanation of the reasons for classification in the receiving art unit. At least one of the following should be included in the form in the space provided:
(A) Identification of the controlling claim;
(B) Identification of any existing informal transfer agreement; or
(C) Other reasons – with full explanation.
If the SPE or examiner of the originating art unit believes an application has been improperly assigned to their art unit, but is unable to determine an appropriate place to send the application, a “gatekeeper” or search assistant should be consulted. A listing of examiners who function in this role may be found at http://ptoweb/patents/tsa/. It is noted that “gatekeepers” or search assistants exist in all of the TCs except the TC that examines design applications (TC 2900).
If the receiving SPE or primary examiner agrees to accept the application, he or she classifies and assigns the application. The transfer is effected by accepting the application in PFW.
If the receiving SPE or primary examiner refuses to accept the application, the reasons for refusal must be entered in PFW. The refusal must be recorded in PFW. Where the application is an application (other than a PCT application) that has not been docketed to an examiner, the originating art unit may then either accept the application for examination or send the disputed transfer application to the classification
dispute TC representative panel for final resolution. The panel considers the statements and evidence of both the originating and receiving art units and assigns the application to the art unit that has jurisdiction over the art in which the controlling claims of the application are properly classified.
Under certain circumstances, the classification dispute TC representative panel, contrary to controlling classification rules, may assign an application to a class or art unit which the panel deems is better equipped to examine the application. See MPEP § 903.08(e).
Every application, no matter how peculiar or confusing, must be assigned somewhere for examination. Thus, in contesting the assignment of an application, the SPE or primary examiner should indicate another class that is a better class in which to classify the application, rather than simply arguing that the application does not fit the examiner’s class.
If an application contains both classification issues and issues unrelated to classification, e.g., a dispute both as to the classification of claims and the propriety of restriction, the issues unrelated to classification should be resolved first. If, thereafter, classification issues still need to be addressed, application transfer may be appropriate. For the procedure in the classification groups for applications which contain examining corps issues, see MPEP § 903.08(e).
The question of need for a restriction requirement does not influence the determination of transfer.
If an application has been assigned a class/subclass by the Office of Patent Application Processing (OPAP) and the application is routed to an art unit that does not examine applications assigned to that class/subclass, an eDAN message to
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“OIPEClass/GAUMismatch” IFW mailbox should be sent.
903.08(e) General Guidelines Governing the Assignment of Nonprovisional Applications for Examination [R-07.2015]
This section applies only to nonprovisional applications. It does not apply to provisional applications since such applications are not examined.
The following are only general guides, and exceptions frequently arise because of some unusual condition. Patent examiners are confronted with an already existing classification made up of newly revised classes, those revised years ago and which have somewhat outgrown their definitions and limits, and still others made a generation ago and never changed. Also, these classes are based on different theories and plans, some on art, some on structure, some on functions, and some on the material worked upon. The patent examiners cannot change this existing condition as each application comes up for assignment, but must seek to place the cases where they are appropriately assigned. An application will be assigned as follows:
(A) The assignment of nonprovisional applications follows, as far as possible, the rules or principles governing the classification of patents. Applications are generally assigned on the basis of where the application would have an original classification, if the claims it contains were in a patent.
(B) The criteria by which the original classification is determined are set forth in MPEP § 903.07.
(C) The claims and statement of invention are generally taken as they read; however, claims must be read in light of the disclosure (claimed disclosure). Any attempt to go behind the record and decide the case upon what is deemed the “real invention” would, it is believed, introduce more errors than such action would cure. Supervisory patent examiners (SPEs) cannot possess the specific knowledge of the state of the art in all the classes that the patent examiners collectively possess. Further, such questions are matters of merit for the
examiners to determine and are often open to argument and are subject for appeal.
(D) Within a class, looking down from the top of the schedule, the OR subclass is chosen from among the classifications of the claimed disclosure according to whichever one is the most indented subclass of the first subclass array.
(E) As stated in MPEP § 903.07, the location of the United States patents constituting the prior art is generally controlling over all else. (Note: Where time permits, obvious misplacements of the patents constituting the prior art are corrected, but to straighten all lines as the cases come up for assignment would require the time of several people.)
(F) Ordinarily, an application cannot be assigned to a class which includes one element or part only of several claimed in combination. The claim is treated in its entirety.
(G) The classification dispute TC representative panel is authorized in all cases, where they evaluate the facts as warranting it, to assign applications for examination to the TC best able to examine the same. Since assignment for examination on this basis will at times be contrary to classification of patents containing the same character of claims, the classification dispute TC representative panel will indicate the proper classification of the patent, if such claims are allowed.
Thus, in cases where there is a claim drawn to hybrid or mixed subject matter and the SPE in one discipline determines that the application requires consideration by, or may be best examined by, a TC in one of the other technical disciplines, chemical, electrical, or mechanical, he or she may request a transfer of the application on a “best examinable” basis, in accordance with this subsection.
Some examples of applications which may be thus submitted include the following:
(1) An application containing a hybrid claim wherein, for instance, a product is defined merely in terms of the process for producing it. See MPEP § 705.01(e), situation (A).
(2) Where an application properly assigned to a mechanical or electrical class contains at least one claim to mixed subject matter, a part of which is chemical, the application may be assigned to the
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appropriate chemical art unit for examination; or where the application is properly assigned to a mechanical class and a claim therein contains electrical subject matter, the application may be assigned to the appropriate electrical art unit for examination. As indicated earlier, when an application which had been assigned for examination in accordance with this subsection ultimately is allowed, it will be classified according to the controlling claim. In effect, assignment for examination may be on a “best examinable” basis, but the patent will issue and be classified according to the rules of superiority in classification; thus, the search file will have a constant set of rules governing placement of patents therein.
Where an application is being reassigned from one examining discipline to another, under the provisions of the “best examinable” practice, the person requesting the transfer is ordinarily required to cite references pertinent to the claimed features falling under the jurisdiction of the art within his or her discipline. In those cases wherein the application of the reference(s) is not evident or clear, the transferring examiner should include a brief statement explaining the relation and possible application of the reference(s) to the claim(s); in case of dispute as to the necessity of this procedure, the classification dispute TC representative panel has power to require the statement.
(H) When an application has been taken up by an examiner for action and a requirement to restrict is found necessary, a part of the claims being directed to matter classifiable in the TC where the case is being examined, an action requiring restriction should be made without seeking a transfer of the case to another TC. The action of the applicant in reply to the requirement for restriction may result in making a transfer of the application unnecessary.
(I) Ordinarily, where all the claims of an application are for an article made of a specific composition or alloy with no other structure of the article recited, the application will be assigned to the composition or alloy class.
(J) A class of cases exists in which either no art or a divided art is found and in which no rule or principle is involved. Such cases are placed where, in the judgment of the classification TC
representative panel, they will be best searched and adjudicated. It is often impossible to so explain a decision in this class of cases as to satisfy, or in any way aid, the examiners interested. Indeed, the reasons for or against sending such cases one place or another may be so evenly balanced that no reason of any value can be given.
(K) An examiner seeking the transfer of a case may make a search, both of his or her own class and the class to which he or she thinks the case should be transferred, and the examiner in charge of the art unit should ensure the record includes the result of the search.
(L) When an application is received by the classification dispute TC representative panel in which there is a matter under dispute which is not related to the classification of a claim but which is in the purview of the TCs, e.g., propriety of a restriction requirement, timeliness of submission for transfer, etc., as well as a dispute over the classification of claims, the application will be returned to the originating TC for resolution on the issues unrelated to the classification.
It is important that newly received applications be immediately screened for these situations so that, if necessary, the applications may be promptly returned to the originating TC.
If after resolution of the issues unrelated to the classification, there is still a dispute as to which TC should examine the application, the originating application may be returned to the classification dispute TC representative panel for assignment.
I. ROUTING OF APPLICATIONS TRANSFERRED BETWEEN TCs
The flowchart below shows the routing of an application between TCs. (For routing of applications between art units within the same TC, see MPEP § 903.08(d).) The application should be considered by the receiving art unit in the TC (TC1), which will accept the application and assign it to an examiner, or forward it to an art unit in another TC (TC2) for consideration. An art unit in TC2 will classify and assign the application to an examiner, return the application to the SPE of the originating art unit, or forward it to an art unit in another TC (TC3). If the art unit in TC2 is not aware of any other likely
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classification, the application may be returned directly to the SPE of the originating art unit in TC1. In any of these scenarios, the decisions concerning the transfer must be recorded in Patent File Wrapper (PFW).
Where the application is forwarded to an art unit in TC3 and the art unit in TC3 declines to accept the application, the application should be returned to the SPE of the originating art unit in TC1.
If an art unit in TC2 or TC3 declines to accept the application and the application is returned to the SPE of the originating art unit in TC1, the SPE of the art
unit in TC1 may forward the application to a classification dispute TC representative panel for resolution. The SPE of the art unit in TC1 may contact a TC classification panel representative within his or her TC. The application will be given to the TC classification panel representative and the representative will contact either the TC2 or TC3 representative (forming a classification dispute TC representative panel) to set up a conference. The classification dispute TC representative panel will evaluate any evidence presented by the disputing TCs, and make a decision on the proper classification and assignment of the application. The decision of the classification dispute TC representative panel will be final and binding.
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§ 903.08(e)PRIOR ART, CLASSIFICATION, AND SEARCH
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II. PATENT FILE WRAPPER
SPEs and examiners must use the Patent File Wrapper (PFW) Transfer Inquiry function, which creates a record of the transfer inquiry history of each application and facilitates tracking of applications.
903.09 [Reserved]
903.09(a) [Reserved]
904 How to Search [R-07.2015]
The examiner, after having obtained a thorough understanding of the invention disclosed and claimed in the nonprovisional application, then searches the prior art as disclosed in patents and other published documents, i.e., nonpatent literature (NPL). Any document used in the rejection of a claim is called a reference.An inventor name search should be made to identify other applications and/or patents which may be applicable as references for double patenting rejections. See MPEP § 804.
In all continuing applications, the parent applications should be reviewed by the examiner for pertinent prior art. Where the cited prior art of a parent application has been reviewed, this fact should be made of record in accordance with the procedure set forth at paragraph (J) of MPEP § 719.05, subsection II.A. For national stage applications filed under 35 U.S.C. 371, the examiner will consider the documents cited in an international search report when the Form PCT/DO/EO/903 indicates that both the international search report and the copies of the documents are present in the national stage application file. See MPEP § 609.03. The first search should cover the invention as described and claimed, including the inventive concepts toward which the claims appear to be directed. It should not be extended merely to add immaterial variants. The examiner’s first Office action on the merits of an application relies on references identified in this initial search.
Following the first Office action, the examiner need not ordinarily make a second search of the prior art, unless necessitated by amendments to the claims by the applicant in a reply to the first Office action, except to check to determine whether any reference which would appear to be substantially more pertinent than the prior art cited in the first Office action has become available subsequent to the initial prior art search.
In the first action on the merits of an application, the examiner must complete the Image File Wrapper (IFW) search notes form in the Office Action Correspondence Subsystem (OACS) to include the classification locations of domestic and foreign patents, abstract collections, and publications in which the search for prior art was made. Other information collections and sources in which the search for prior art was made must also be identified by the examiner. The examiner must also indicate the date(s) on which the search was conducted. Note MPEP § 719.05.
In subsequent actions, where the search is brought up-to-date and/or where a further search is made, the examiner must indicate on the IFW search notes form that the search has been updated and/or identify the additional field(s) of search. See MPEP § 719.05. Any search updates should include all of the relevant or pertinent databases and the search queries and classifications employed in the original search.
904.01 Analysis of Claims [R-08.2012]
The breadth of the claims in the application should always be carefully noted; that is, the examiner should be fully aware of what the claims do not call for, as well as what they do require. During patent examination and reexamination, the claims are given the broadest reasonable interpretation consistent with the specification. See In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) and In re NTP Inc., 654 F3d 1279, 99 USPQ 1481 (Fed. Cir. 2011).
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§ 904.01PRIOR ART, CLASSIFICATION, AND SEARCH
See MPEP § 2111 - § 2116.01 for case law pertinent to claim analysis.
904.01(a) Variant Embodiments Within Scope of Claim [R-08.2012]
Frequently, a claim includes within its breadth or scope one or more variant embodiments that are not disclosed in the application, but which would anticipate the claimed invention if found in a reference. The claim must be so analyzed and any such variant encountered during the search should be recognized.
For any claim capable of such treatment (e.g., a machine or other apparatus), the subject matter as defined by the claim may be sketched or diagrammed in order to clearly delineate the limitations of the claim. Two or more sketches, each of which is as divergent from the disclosure as is permitted by the claim, will assist the examiner in determining the claim’s actual breadth or scope. However, an applicant will not be required to submit such sketches of claim structure. In re Application filed November 16, 1945, 89 USPQ 280, 1951 C.D. 1, 646 O.G. 5 (Comm’r Pat. 1951).
904.01(b) Equivalents [R-08.2012]
All subject matter that is the equivalent of the subject matter as defined in the claim, even though different from the definition in the claim, must be considered unless expressly excluded by the claimed subject matter. See MPEP § 2181 - § 2184 for a discussion of equivalents when a claim employs means or step plus function terminology.
904.01(c) Analogous Arts [R-08.2012]
Not only must the art be searched within which the invention claimed is classifiable, but also all analogous arts must be searched regardless of where the claimed invention is classified.
The determination of what arts are analogous to a particular claimed invention is at times difficult. It depends upon the necessary essential function or utility of the subject matter covered by the claims, and not upon what it is called by the applicant.
For example, for search purposes, a tea mixer and a concrete mixer may both be regarded as relating to the mixing art, this being the necessary function of each. Similarly a brick-cutting machine and a biscuit cutting machine may be considered as having the same necessary function. See MPEP § 2141.01(a) for a discussion of analogous and nonanalogous art in the context of establishing a prima facie case of obviousness under 35 U.S.C. 103. See MPEP § 2131.05 for a discussion of analogous and nonanalogous art in the context of 35 U.S.C. 102.
904.02 General Search Guidelines [R-07.2015]
In the examination of an application for patent, an examiner must conduct a thorough search of the prior art. Planning a thorough search of the prior art requires three distinct steps by the examiner: (A) identifying the field of search; (B) selecting the proper tool(s) to perform the search; and (C) determining the appropriate search strategy for each search tool selected. Each step is critical for a complete and thorough search.
When determining the field of search, three reference sources must be considered - domestic patents (including patent application publications), foreign patent documents, and nonpatent literature (NPL). None of these sources can be eliminated from the search unless the examiner has and can justify a reasonable certainty that no references, more pertinent than those already identified, are likely to be found in the source(s) eliminated. The search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed. The field of search should be prioritized, starting with the area(s) where the invention would most likely be found in the prior art.
Having determined the field of search, the examiner should then determine what search tools should be employed in conducting the search. Examiners are provided access to a wide variety of both manual and automated search tools. Choice of search tools is a key factor in ensuring that the most relevant prior art is found during the search. The choice of search tools to be used is based on the examiner’s knowledge of the coverage, strengths and
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weaknesses of the available search tools that are appropriate for use in an examiner’s assigned art. For example, a search tool may cover foreign patent documents; but, if that coverage does not meet the examiner’s current search needs, this should be taken into consideration by the examiner who may choose to employ other search tools in order to remedy the deficiency.
Search tool knowledge is particularly important for examiners in arts (e.g., very active, high technology) where patent documents may seriously lag behind invention and, consequently, represent a reference source of limited value. These examiners must take special care to ensure that their searches include consideration of NPL and employ the effective use of tools specialized to cover NPL pertinent to their search needs.
Search needs in some technologies, e.g., chemical structures, DNA sequences, are very specialized and can only be met through additional use of specific search tools specially constructed and maintained to respond to those needs. These tools cover all three reference sources - domestic patents (including patent application publications), foreign patent documents, and NPL.
In recognition that there are many available NPL search tools and their use is often complex, examiners have been provided and are encouraged to use the services of trained professional on-line search personnel located in the Technology Centers’ EICs for NPL searching. See MPEP § 901.06(a) for services available in STIC.
In crowded, highly developed arts where most claimed inventions are directed to improvements, patent documents, including patent application publications, may serve as the primary reference source. Search tool selection in such arts may focus heavily on those providing patent document coverage.
Automated search tools covering patent documents usually provide both a classified and text search capability. Text search can be powerful, especially where the art includes well-established terminology and the search need can be expressed with reasonable accuracy in textual terms. However, it is rare that a
text search alone will constitute a thorough search of patent documents. Some combination of text search with other search criteria (e.g., classification, chemical structure, or molecular sequence) would be a normal expectation in most technologies.
Examiners will recognize that it is sometimes difficult to express search needs accurately in textual terms. This occurs often, though not exclusively, in mechanical arts where, for example, spatial relationships or shapes of mechanical components constitute important aspects of the claimed invention. In such situations, text searching can still be useful by employing broader text terms, with or without classification parameters. The traditional method of browsing all patent documents in one or more classifications will continue to be an important part of the search strategy when it is difficult to express search needs in textual terms.
Having determined what search tool(s) should be used to conduct the search, the examiner should then determine the appropriate search strategy for each search tool selected. The appropriate search strategy should be determined by the examiner on a case-by-case basis along with consultation with other examiners, supervisory patent examiners, and/or trained professional on-line search personnel, where appropriate.
In order for examiners to acquire specialized skills needed to determine an appropriate field of search in their specific arts, each Technology Center may develop specific supplemental guidance and training for its examiners. This training will augment general training and information on search tools that is normally provided through the Office of Patent Training and Search and Information Resources Administration.
904.02(a) Classified Search [R-07.2015]
A proper field of search normally includes the classification locations in which the claimed subject matter of an application would be properly classified. However, if the proper classification does not correspond to the subject matter found in the claims, it is not necessary to search areas in which it could reasonably have been determined that there was a low probability of finding the best reference(s).
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§ 904.02(a)PRIOR ART, CLASSIFICATION, AND SEARCH
In outlining a field of search, the examiner should note every classification location (i.e. group/subgroup of the Cooperative Patent Classification or class/subclass of the U.S. Patent Classification) under the utilized classification system and other organized systems of literature that may have material pertinent to the subject matter as claimed, including those which have been assigned by a foreign Office, another USPTO examiner, or by the classification contractor. Every subclass, digest, and cross-reference art collection pertinent to each type of invention claimed should be included, from the largest combination through the various subcombinations to the most elementary part. The field of search should extend to all probable areas relevant to the claimed subject matter and should cover the disclosed features which might reasonably be expected to be claimed. The examiner should consult with other examiners and/or supervisory
patent examiners, especially with regard to applications covering subject matter unfamiliar to the examiner.
The areas to be searched should be prioritized so that the most likely areas of finding relevant prior art are searched first. For documenting the field of search see MPEP § 719.05. See MPEP § 1302.10 for search information printed on the face of a patent.
904.02(b) Search Tool Selection [R-07.2015]
Detailed guidance on the choice and use of specific search tools can be established only within the context of the special requirements of each Technology Center (TC). However, a general methodology following a “decision tree” process, set forth below, for making broad decisions in search tool selection is suggested.
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§ 904.02(b)PRIOR ART, CLASSIFICATION, AND SEARCH
904.02(c) Internet Searching [R-07.2015]
The Internet is an Office-approved search tool that may be considered when planning and conducting a search for an application. The Internet provides the Office the opportunity to enhance operations by enabling patent examiners to efficiently locate and retrieve additional sources of information relating to a patent application.
The Office published a Patent Internet Usage Policy to establish a policy for use of the Internet by the patent examining corps and other organizations within the USPTO. See Internet Usage Policy, 64 F.R. 33056 (June 21, 1999). Articles 9 and 10 of the Patent Internet Usage Policy, which are pertinent to Internet searching and documenting search strategies, are reproduced below. Article 9 primarily addresses using the Internet for unpublished application searches. As mentioned therein, it is necessary that Internet searches related to unpublished applications MUST be limited to the general state of the art and formulated in such a way that protects the confidential proprietary intellectual property.
USPTO personnel may also use the Internet to search, browse, or retrieve information relating to the claimed invention(s) of a published application or proceeding including an application published pursuant to 35 U.S.C. 122(b), a reissue application, or a reexamination proceeding. These applications need not be kept in confidence; therefore, the restriction on the search queries used when performing an Internet search referenced in Article 9 below would not apply to these applications and proceedings. Any search query may include terminology related to the general state of the relevant technology, disclosed features from applicant’s disclosure and claim terminology. See MPEP § 707.05(e) for information pertaining to the citation of electronic documents, MPEP § 719.05, subsection II for documenting an Internet search, and MPEP § 502.03 for information pertaining to communications via electronic mail.
The Internet is generally a public forum and most communications made over the Internet are neither confidential nor secure. All use of the Internet by examiners must be conducted in a manner that ensures compliance with confidentiality requirements
in the statutes, including 35 U.S.C. § 122, and regulations. Additionally, any Internet searching that is conducted is to be limited to searching for the information necessary for examination of the application or proceeding, such as the state of the art or the presence or absence of technical features in the prior art.
INTERNET SEARCHING (ARTICLE 9)
The ultimate responsibility for formulating individual search strategies lies with individual Patent Examiners, Scientific and Technical Information Center (STIC) staff, and anyone charged with protecting proprietary application data. When the Internet is used to search, browse, or retrieve information relating to a patent application which has not been published, other than a reissue application or reexamination proceeding, Patent Organization users MUST restrict search queries to the general state of the art unless the Office has established a secure link over the Internet with a specific vendor to maintain the confidentiality of the unpublished patent application. Non-secure Internet search, browse, or retrieval activities that could disclose proprietary information directed to a specific application which has not been published, other than a reissue application or reexamination proceeding, are NOT permitted.
This policy also applies to use of the Internet as a communications medium for connecting to commercial database providers.
DOCUMENTING SEARCH STRATEGIES (ARTICLE 10)
All Patent Organization users of the Internet for patent application searches must document their search strategies in accordance with established practices and procedures as set forth in MPEP § 719.05 II.
904.03 Conducting the Search [R-07.2015]
It is a prerequisite to a speedy and just determination of the issues involved in the examination of an application that a careful and comprehensive search, commensurate with the limitations appearing in the most detailed claims in the case, be made in
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preparing the first action on the merits so that the second action on the merits can be made final or the application allowed with no further searching other than to update the original search. It is normally not enough that references be selected to meet only the terms of the claims alone, especially if only broad claims are presented; but the search should, insofar as possible, also cover all subject matter which the examiner reasonably anticipates might be incorporated into applicant’s amendment.Applicants can facilitate a complete search by including, at the time of filing, claims varying from the broadest to which they believe they are entitled to the most detailed that they would be willing to accept.
In doing a complete search, the examiner should find and cite references that, while not needed for rejecting the claims, would be useful for forestalling the presentation of claims to other disclosed subject matter regarded by applicant as his or her invention, by showing that this other subject matter is old or obvious.
In selecting the references to be used in rejecting the claims, the examiner should carefully compare the references with one another and with the applicant’s disclosure to avoid an unnecessary number of rejections over similar references. The examiner is not called upon to cite all references that may be available, but only the “best.” (See 37 CFR 1.104(c).) Multiplying references, any one of which is as good as, but no better than, the others, adds to the burden and cost of prosecution and should therefore be avoided. The examiner must fully consider all the prior art references cited in the application, including those cited by the applicant in a properly submitted Information Disclosure Statement.
The best reference should always be the one used in rejecting the claims. Sometimes the best reference will have a publication date less than a year prior to the application filing date, hence it will be open to being overcome under 37 CFR 1.130 or 1.131. In such circumstances, if a second reference exists which cannot be so overcome and which, though inferior, is an adequate basis for rejection, the claims should be additionally rejected thereon.
In all references considered, including NPL, foreign patents, and domestic patents, the examiner should study the specification or description sufficiently to determine the full value of the reference disclosure relative to the claimed or claimable subject matter.
905 Cooperative Patent Classification [R-07.2015]
Cooperative Patent Classification (CPC) is a bilateral classification system jointly developed by the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). CPC is jointly managed and maintained by both offices and is available for public search for classification.
905.01 Classification Scheme for CPC [R-07.2015]
The CPC classification system arranges subject matter into hierarchical arrays.
(A) The highest array or level is the Section.
(B) Each section is subdivided into Classes.
(C) Each class is subdivided into one or more subclasses.
(D) Each subclass is broken down into Groups (main groups and subgroups).
Each part of this hierarchical structure is identified by classification symbols. Specifics about each element of the classification symbol are described below.
(A) Section Symbol – Each section is designated by one of the capital letters A through H and has an associated section title. There are nine sections, eight of which correlate to the sections of the International Patent Classification (IPC). The ninth section is used for classifying documents covering subject matter pertaining to a plurality of the sections. The table below shows the sections with their associated CPC and IPC section titles.
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§ 905.01PRIOR ART, CLASSIFICATION, AND SEARCH
IPC SectionCPC SectionLetter Designation
Human Necessities
Human NecessitiesA
Performing Operations; Transporting
Performing Operations; Transporting
B
Chemistry; Metallurgy
Chemistry; MetallurgyC
Textiles; PaperTextiles; PaperD Fixed Construction
Fixed ConstructionE
Mechanical Engineering;
Mechanical Engineering; Lighting;
F
Lighting;Heating; Weapons; Heating;Blasting Engines or
Pumps Weapons; Blasting Engines or Pumps PhysicsPhysicsG ElectricityElectricityH
General Tagging of New Technological
Y
Developments; General Tagging of Cross-over technologies spanning over several sections of the IPC; technical subjects covered by former USPC cross reference art collections and digest
(B) Class Symbol – Each class symbol consists of the section symbol followed by a 2 digit number (e.g., C07). Each class symbol is associated with a title.
(C) Subclass Symbol – Each subclass symbol consists of the class symbol followed by a letter (e.g., C07D). Each subclass symbol is associated with a title.
(D) Main Group Symbol – Each main group symbol consists of the subclass symbol followed by a one- to four- digit number, the oblique stroke, and the number 00 (e.g. C07D 203/00). Each main group number is associated with a main group title which precisely defines a field of subject matter within the scope of its subclass and a definition.
(E) Subgroup Symbol – Each subgroup symbol consists of the main group symbol, but the number “00” in the main group symbol is replaced with an alternative number of up to six digits (e.g. C07D 203/02). Each subgroup symbol is associated with a title and definition.
Example:
CPC Symbols C07D 203/00 or C07D 203/02
905.01(a) CPC Titles [R-07.2015]
The title associated with a CPC symbol defines the scope of the subject matter covered by that symbol. In general, the title of every CPC organizational division is read as including the titles of all its superior organizational units. For example, the title of a CPC subgroup is interpreted as including the title of its parent group and that parent’s group title all the way up to, and including, the section title.
Titles in the CPC system are generally in the form of single part or multipart titles which are described below.
(A) Single part title -- Defines or represents the subject matter of a single concept or information.
Example:
A47C 1/00 Chairs adapted for special purposes
(B) Multipart title (separated by semicolons) -- A semicolon in a CPC title delineates coverage of
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two distinct and separate information entities that should be considered stand-alone things for purposes of coverage.
Example:
F25D REFRIGERATORS; COLD ROOMS; ICE-BOXES; COOLING OR FREEZING APPARATUS NOT COVERED BY ANY OTHER SUBCLASS
The three semicolons in the above example inform us that the subclass covers four distinct and separate entities: 1) refrigerators, 2) cold rooms, 3) ice boxes, and 4) other types of cooling or freezing apparatus not covered by any other subclass, therefore it is a residual to all cooling and freezing apparatus not elsewhere classified in CPC.
905.01(a)(1) References within CPC Titles [R-07.2015]
References are statements enclosed within parentheses in titles. The references point to other classification places that may be of interest. References apply to the classification place they appear and to all hierarchically lower classification places, unless stated otherwise.
Examples of References:
Example:
B64CAEROPLANES; HELICOPTERS (air-cushion vehicles B60V)
(A) Limiting references
A limiting reference is found in the group titles of the scheme and exclude specific subject matter from the scope of the classification place, when this subject matter would otherwise fulfill all the
requirements of the classification place (or would be covered by that place). Limiting references are pertinent for classification purposes. Limiting references limit the scope of a place, thereby avoiding overlap.
Example:
A01F 7/02 . With rotating tools (threshing cylinders or concaves A01F 12/18)
(B) Precedence references
A precedence reference is a special example of a limiting reference that always refers to another group or groups taking “precedence” within the same subclass. The purpose of a precedence reference is to remove overlap between two similar groups.
Example:
G02B 1/00 Optic elements
1/04 . made of organic materials (1/08 takes precedence)
905.01(a)(2) Notes Found in CPC schemes [R-07.2015]
Notes are supplementary statements that follow a CPC class, subclass, main group, or subgroup title. Instruction in a “Note” is applied only to the CPC place where it appears, including all its hierarchically lower places. For example, a note after a class title applies to the entire class. A note after a subclass title applies only to the subclass, a note after a main group applies only to the main group, etc. Notes may be used to explain the scope, define terminology, or indicate specific classification rules.
905.01(a)(3) Warnings Found in CPC schemes [R-07.2015]
A warning is used in CPC schemes for signaling deviations from IPC or incomplete classification. A warning may include a listing of IPC groups not included within CPC and the CPC group which covers the relevant subject matter. A warning also
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may be used to indicate the deletion or transferring of CPC groups and reclassification notices.
905.01(a)(4) Guidance Headings Found in CPC Schemes [R-07.2015]
Guidance headings may be provided as follows:
(A) When a large part of a subclass relates to a common subject matter, a guidance heading indicating that subject matter may be provided at the beginning of that part.
(B) As a title, without any associated symbol, of subject matter preceding several main groups.
(C) To describe common subject matter of several main groups.
905.02 CPC Definitions [R-07.2015]
Each CPC definition, whether it is a subclass, main group, or subgroup definition, must adhere to the same definition template which defines the permissible elements and formatting. Most CPC schemes will include supplementary definitions to clarify the scope of classification places as well as to inform the user of special classification rules in that area. Definitions are provided for CPC subclasses, main groups or subgroups, but not for CPC sections or classes. Not all CPC subclasses or groups have definitions. When a title is sufficiently clear to describe the scope of the classification place, a definition statement is not necessary.
A definition may include the following:
(A) Definition title – The definition title always reflects the title of the classification place being defined. For example, a subclass definition will have the same title as the title of the subclass; a group definition will have the same title as the title of the group.
(B) Definition Statement - The scope of the definition statement should essentially be the same as the scope of the title. The definition statement should clearly elaborate the meaning of the classification place rather than merely restating its title. The definition statement should provide a positive description of the subject matter appropriate
for the classification place, rather than a negative description of the subject matter excluded from the classification place. The appropriate classification places for the excluded subject matter are found under “Limiting References”.
(C) References relevant to classification in a subclass/group
(1) Limiting and precedence references – See MPEP § 905.01(a)(1).
(2) Specially adapted references – Specially adapted references are references from function-oriented (general) to application-oriented places. The subject matter indicated by a specially adapted reference could be classified in the instant classification place, and in the classification place where the reference points to, or both.
(3) Residual references – Residual references from residual subclasses (defined as such in the title of the subclass or the definition statement) to non-residual places should appear in this section.
(4) Informative references -- Informative references are references that indicate the location of subject matter that could be of interest for searching, but are not within the scope of the classification place where the reference occurs. References from application-oriented places to function-oriented places are informative.
(D) Special rules of classification within the subclass/group -- This section contains special classification rules, which apply only within the subclass/group and not between subclasses/groups. Examples of such classification rules are the first place or the last place priority rules.
(1) First place priority rule: When a document is classifiable in more than one group in a scheme, the one highest in the scheme is allocated to the document.
(2) Last place priority rule: When a document is classifiable in more than one group in a scheme, the one lowest in the scheme is allocated to the document.
(3) Common rule: When a document is classifiable in more than one group in a scheme, the classification symbol that most completely covers the invention is allocated to the document.
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In CPC, as with IPC, in the absence of any classification rule, common rule, defined in (D)(3) above, is the governing classification rule.
(E) Glossary of terms -- This section consists of definitions for significant words or phrases found in the titles or definition statements. Terms found exclusively in patent documents or in technical literature, but not in the scheme or the definition statement, will normally appear in the synonyms and keywords section.
(F) Synonyms and Keywords - This is an optional section establishing synonyms, keywords, abbreviations and acronyms from terms used in the patent documents themselves or in technical literature. This section aids in formulating search queries in electronic searching in the technical field. This section may include definitions of such terms when they do not appear in the scheme or the definition statement.
905.03 Classifying in CPC [R-07.2015]
The primary purpose of classification is to facilitate the retrieval of technical subject matter. In order to reliably retrieve technical subject matter using the CPC classification system it is important for all technical subject matter to be consistently classified.
CPC has its own classification rules which appear in the scheme, definitions, or both. See MPEP § 905.02. In the absence of any specified classification rules in the scheme and definitions, classification practice follows the rules used in the IPC, as set forth in the IPC Guide. The IPC Guide is available at w w w . w i p o . i n t / e x p o r t / s i t e s / w w w / classifications/ipc/en/guide/guide_ipc.pdf.
905.03(a) The CPC Database [R-07.2015]
The CPC database maintains technical information regarding the patent family documents for each patent document included. Patent documents contain two types of technical information to classify. These are invention information and additional information.
I. PATENT FAMILY
A patent family is a group of documents related to each other by common priorities. Examples include
a pre-grant publication (PGPub) of an application and any patent issued from the same application. A parent and divisional application also are considered as being in the same family.
In the CPC database, CPC symbols are associated with patent families. When a document is classified in CPC, the symbol associated with the document is stored in the CPC database as an association between the symbol and patent family in which the document is a member. This means that whenever a CPC symbol is allocated to a document all the documents in the family receive the same symbol.
In the CPC database, a document cannot be classified independently of the other documents belonging to the same patent family. Every classification symbol associated with a document, i.e., allocated to the document, is associated with every patent document in the family. Each allocation of a symbol to a patent family has additional attributes stored in the CPC database. These include the following:
Classification symbol Type (Invention/other additional information) Position (First/later classification)
II. INVENTION INFORMATION (OBLIGATORY/MANDATORY)
All disclosed invention information in a patent document must be classified in CPC in order for a user to retrieve the invention information from the system. Therefore, it is mandatory to classify all the invention information disclosed in each family to be classified.
Invention information is technical information in the total disclosure of a patent document (for example, description, drawings, claims) that represents an addition to the state of the art. The invention information is determined in the context of the state of the art, using guidance provided by the claims of the patent document, with due regard given to the description and the drawings. “Addition to the state of the art” means all novel and unobvious subject matter specifically disclosed in a patent document, which advances the state of the art, i.e., the technical
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subject matter disclosed that is not already in the public domain.
Patent documents should not be classified as a single entity. Rather, all different inventive entities, claimed or disclosed within the patent document, should be identified and separately classified. Such different inventive entities are represented by different claims, alternative variants or different categories of subject matter (for example, a product and a method of its production).
III. ADDITIONAL INFORMATION (DISCRETIONARY)
Additional information is non-trivial technical information which does not in itself represent an addition to the state of the art but might constitute useful information for the searcher. The additional information complements the invention information by identifying the constituents of a composition or mixture; elements or components of a process or structure; or use or applications of classified technical subjects.
Unlike invention information which must be classified, any additional non-trivial technical information that would be useful for search is classified on a discretionary basis.
A. Type Attributes
Every classification allocation has a “type” attribute. There are two values that this attribute may have:
(A) Invention Information
When allocating CPC symbols to a document based on disclosed invention information, the type attribute is set to “invention.” This is typically done by putting the symbol being allocated in the “mandatory” section of the classification form.
(B) Additional information
When allocating CPC symbols to a document based on disclosed information that is not inventive, the type attribute is set to “additional”. This is typically done by putting the symbol being allocated in the “discretionary” section of the classification form.
(C) Position Attribute
First - Each patent family will possess a first-listed CPC classification symbol which is selected from the required classifications for the inventive subject matter of the patent family. This “first” CPC classification is the inventive classification symbol which most adequately represents the invention as a whole for the patent family. In situations where a later-published family member possesses a different first-listed CPC classification, this will override the previous first-listed classification (which will be retained for the patent family as an inventive classification symbol). There is one and only one “first” position attribute per patent family. The first attribute is associated with the invention symbol that most completely covers the technical subject matter of the disclosed invention. The first position symbol is identified as the first mandatory symbol listed on the classification form.
Later - If a symbol allocation is not the “first” position symbol, its position attribute is “later”. All invention allocations that are not “first” position, as well as all “additional” type symbols have the position attribute “later”. All symbols listed on the classification form other than the first listed invention symbol receive the position attribute “later”.
905.03(b) Approach to classification in CPC [R-07.2015]
The first step to classifying a document in CPC is to identify the subject matter that will be classified. The second step is to identify appropriate groups in CPC covering the subject matter to be classified.
The general rules for identifying the subject matter to classify in CPC are as follows:
(A) All subject matter covered by the claims of a patent document must be classified as invention information along with any novel and unobvious constituents or components (subcombinations) of the claimed subject matter. Classification should be based on the subject matter of each claim as a whole and on each inventive embodiment within a claim.
(B) Any unclaimed subject matter in the disclosure that is novel and unobvious must also be classified as invention information.
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(C) It is desirable to classify or index any additional information complementing the invention information, mentioned in the claims or in the unclaimed disclosure, if it is useful for search purposes.
(D) A subcombination of the subject of the invention if the subcombination is itself novel and non-obvious.
The scheme or definitions in particular areas should be consulted to determine if additional classification or index codes are required. For example, places in CPC where multi-aspect classification is especially desirable are indicated by a note. See MPEP § 905.02. Depending on the nature of the subject matter concerned, such a note prescribes obligatory classification of the subject matter according to the indicated aspects, or contains a recommendation for multi-aspect classification if it is desirable for increasing the efficiency of the patent search.
The general procedure for identifying the appropriate groups for covering the subject matter to be classified is as follows:
(A) Identify the appropriate subclasses covering the subject matter to be classified.
(1) The scope of a subclass is defined by its title and definition. In order to determine a candidate subclass for classification one must review the titles of available subclasses for scope coverage.
(2) After a candidate subclass has been identified, the subclass notes, references and definition should be consulted to verify that the scope of the subclass covers the subject matter to be classified.
(3) The preceding steps should be repeated until a candidate subclass is verified to cover the subject matter to be classified.
(B) Identify the appropriate group(s) covering the subject matter to be classified.
(1) Identify candidate main groups that cover the subject matter to be classified.
(2) Verify that the notes, references, and definitions do not exclude the subject matter to be classified, and that the group is in active use (not under reclassification). The technical subject matter of many inventions is completely covered by only one group in the
subclass. In this situation, classification is made in the one group covering the technical subject matter of the invention.
When multiple groups cover the technical subject matter of a single invention, classification is generally made in the group which most completely covers the invention. Within a group array, a group that covers the technical subject matter of the invention to be classified generally covers the subject matter more completely than the parent of that group.
When multiple groups cover the invention equally well, groups are selected according to the following rules:
(a) In the case where the Last Place Priority Rule (LPPR) is applicable to the groups under consideration, then the group lowest in the scheme is selected for classification.
(b) In the case where the First Place Priority Rule (FPPR) is applicable to the groups under consideration, then the group highest in the scheme is selected for classification.
(c) In the case where neither LPPR nor FPPR are applicable to the groups under consideration, then classification is made in each group.
(3) Whenever classifying into a group, the scheme notes and definitions should be consulted for guidance regarding special rules of classification applicable to the CPC groups at issue, such as the requirement for Multiple Aspect classification or Indexing.
(4) Whenever classifying into a group, the scheme should always be consulted for precedence notes and references that indicate a preference for classification in another group. Precedence notes and limiting reference should always be followed when applicable.
(5) Identify application/functional classification places. Occasionally, two or more subclasses/groups are identified that cover the disclosed invention information from different aspects. For example, one classification place might cover specific uses of the invention, whereas the second classification place may cover the generic uses of the invention. These types of coverage are respectively referred to as application and functional classification places. In general, classification is
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made in the application classification place when application specific adaptations are disclosed. For example, a pump specially adapted to replace a heart is classified in A61M 1/10, whereas pumps, in general, without any disclosed special adaptation are classified in F04B, F04C, F04D, or F04F depending on the specific structure of the pump. When uses of inventions are nominally disclosed, classification is generally made in functional classification places.
(6) Identify genus/species classification places.
(a) In the case where an invention is generically disclosed classification is made to the classification place covering the generic invention. Even in cases where species are nominally disclosed, such as by name only, classification is still made to the generic classification place.
(b) In the case where fully enabled species are disclosed, classification is required in the classification places covering the individual species.
(7) Identify residual classification places
In the event a classification place that explicitly covers the technical features of the invention to be classified cannot be identified, then classification should be made to a “residual” classification place. Residual classification places can be found at both subclass and group levels. Residual classification places are identifiable by their titles, which typically indicate they cover subject matter not elsewhere covered.
905.03(c) Combination Sets [R-07.2015]
In certain CPC fields, the examiner has the ability to create and search on combinations of CPC symbols (provided as groupings of symbols), each symbol in a grouping has a defined relationship to the other symbols in its grouping. These groupings are termed combination sets, and provide an enhanced mechanism for storing and retrieving classification information from patent documents. While the usage of CPC combination sets is confined mostly to the chemical fields, there are numerous instances where combination sets are used in mechanical and electrical fields.
The first symbol in a combination set is termed the base classification symbol, and determines the authorization for creation or deletion of combination sets within the field of the base symbol. The other members of a combination set possess the same Invention or Additional information, i.e. INV/ADD attribute as the base symbol, with an ordered ranking to denote their positioning within the combination set.
Guidance on the creation of combination sets is detailed in the CPC classification definitions. For example, the combination sets in a given field may denote the sequence of operations in a multi-step process, while in another field, the combination sets may denote the product and its method of manufacture. It is even possible to have the same CPC symbol appear more than once in a given combination set, with the ordering thereof to reflect the occurrence of multiple steps provided for by the repeated CPC symbol.
906 International Classification of Patents for Inventions [R-07.2015]
In accordance with the Strasbourg Agreement Concerning the International Patent Classification, the United States is required to indicate on its issuing documents the classification symbols of the International Patent Classification 2006 (Eighth Edition), hereinafter referred to as “Int. Cl.”
The complete Int. Cl. symbols must be placed in the indicated space on the Image File Wrapper (IFW) issue classification form when an application is issued.
I. INT. Cl. LAYOUT
The layout of the Int.Cl. is explained below with reference to the sample page.
A. Section
The Classification represents the whole body of knowledge which may be regarded as proper to the field of patents for invention, divided into eight sections.
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Section Symbol — Each section is designated by one of the capital letters A through H.
Section Title — The section title is to be considered as a very broad indication of the contents of the section. The eight sections are entitled as follows:
A. Human Necessities
B. Performing Operations; Transporting
C. Chemistry; Metallurgy
D. Textiles; Paper
E. Fixed Constructions
F. Mechanical Engineering; Lighting; Heating; Weapons; Blasting
G. Physics
H. Electricity
Contents of Section — Each section title is followed by a summary of the titles of its main subdivisions.
Subsection — Within sections, informative headings form subsections, which are titles without classification symbols.
Example: Agriculture
B. Class
Each section is subdivided into classes.
Class Symbol — Each class symbol consists of the section symbol followed by a two-digit number.
Example: A 01
Class Title — The class title gives an indication of the content of the class.
Example: A 01 Agriculture; Forestry; Animal Husbandry; Hunting; Trapping; Fishing
C. Subclass
Each class comprises one or more subclasses.
Subclass Symbol — Each subclass symbol consists of the class symbol followed by a capital letter.
Example: A 01 B
Subclass Title — The subclass title indicates as precisely as possible the content of the subclass.
Example: A 01 B Soil Working in Agriculture or Forestry; Parts, Details, or Accessories of Agricultural Machines or Implements, in General
Subclass Index — Some subclasses have an index which is merely an informative summary giving a broad survey of the content of the subclass.
D. Group
Each subclass is broken down into subdivisions referred to as “groups,” which are either main groups or subgroups.
Group Symbol — Each group symbol consists of the subclass symbol followed by two numbers separated by an oblique stroke.
Main Group Symbol — Each main group symbol consists of the subclass symbol followed by a one- to three-digit number, the oblique stroke, and the number 00.
Example: A 01 B 1/00
Main Group Title — The main group title defines a field of subject matter considered to be useful in searching for inventions.
Example: A 01 B 1/00 Hand tools
Subgroup Symbol — Subgroups form subdivisions under the main groups. Each subgroup symbol consists of the subclass symbol followed by the one- to three-digit number of its main group, the oblique stroke, and a number of at least two digits other than 00.
Example: A 01 B 1/02
Any third or fourth digit after the oblique stroke is to be read as a decimal subdivision of the second or third digit, respectively; e.g. 3/426 is to be read as “three slash forty-two point six”, not three slash four
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hundred and twenty six and is to be found after 3/42 and before 3/43, and 5/1185 is to be read as “five slash eleven point eight five,” and is to be found after 5/118 and before 5/119.
Subgroup Title — The subgroup title defines a field of subject matter within the scope of its main group considered to be useful in searching for inventions. The title is preceded by one or more dots indicating the hierarchical position of the subgroup, i.e., indicating that each subgroup forms a subdivision of the nearest group above it having one dot less. The subgroup title is often a complete expression, in which case it begins with a capital letter. A subgroup title begins with a lower case letter if it reads as a continuation of the title of the next higher, less-indented group, i.e., having one dot less. In all cases, the subgroup title must be read as being dependent upon, and restricted by, the title of the group under which it is indented.
Examples
A 01 B 1/00 1/24 Hand tools for treating meadows or lawns (The title of 1/24 is to be read as:
Hand tools for treating meadows or lawns.)
A 01 B 1/00 1/16 Hand tools Tools for uprooting weeds (The title of 1/16 is a complete expression, but owing to its hierarchical position, the tools for uprooting weeds are restricted to hand tools.)
E. Complete Classification Symbol
A complete classification symbol comprises the combined symbols representing the section, class, subclass, and main group or subgroup.
Guide Headings
The main groups in each subclass are arranged in a sequence intended to assist the user. It has not, however, been found practicable to standardize the sequence. Where several successive main groups relate to common subject matter, it is usual to provide before the first of such main groups a “guide heading” which is underlined, indicating this subject matter (see, for example, the guide heading “Ploughs” before group A 01 B 3/00). The series of groups covered by such a heading extends to the next guide heading or to a line in heavy type extending across the column, which is used when the following group or groups relate to different subject matter for which no guide heading is provided. (See, for example, the line after A 01 B 75/00.)
II. CLASSIFYING IN THE INT. Cl. SYSTEM
A. Selecting Subclasses Corresponding to U.S. Classes
The effective scope of a subclass is defined by the following, taken together:
The subclass title which describes, as precisely as is possible in a small number of words, the main characteristic of a portion of the whole body of knowledge covered by the Classification, this portion being the field of the subclass to which all its groups relate;
Any references which follow the subclass title or the hierarchically higher class title. These references often indicate certain parts of the field described by the title which are covered by other subclasses and are, therefore, excluded. These parts may constitute a substantial part of the field described by the title and, thus, the references are in some respects as important as the title itself. For example, in subclass A 47 D — FURNITURE SPECIALLY ADAPTED FOR CHILDREN — a considerable part, namely school benches or desks, of the subject matter covered by the title is excluded in view of a reference to particular groups of subclass A 47 B, thus considerably altering the scope of subclass A 47 D;
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Any references which appear in groups or guide headings of a subclass and which refer subject matter to another class or subclass may also affect the scope of the subclass in question. For example, in subclass B 43 K — INSTRUMENTS FOR WRITING; DRAWING-PENS — writing points for indicating or recording apparatus are referred out of group 1/00 to group 15/16 of subclass G 01 D, thereby reducing the scope of the subject matter covered by the title of subclass B 43 K;
Any notes or definitions appearing under the subclass title or its class, subsection, or section title. Such notes or definitions may define terms or expressions used in the title, or elsewhere, or clarify the relation between the subclass and other places. Examples are
(1) Note (1) appearing under the title of the subsection “ENGINES OR PUMPS,” embracing classes F 01 to F 04, which notes define the terms used throughout the subsection,
(2) the notes appearing under the title of subclass F 01 B, which define its scope in relation to subclasses F 01 C to F 01 P, and
(3) the note following the title of section C which defines groups of elements.
B. Selecting Main Groups Corresponding to U.S. Mainline Subclasses
The scope of a main group is to be interpreted only within the effective scope of its subclass (as
indicated above). Subject to this, the effective scope of a main group is determined by its title as modified by any relevant references or notes associated with the main group or with any guide heading covering it. For example, a group for “bearings” in a subclass whose title is limited to a particular apparatus must be read as covering only features of bearings peculiar to that apparatus, e.g., the arrangement of bearings in the apparatus. Guide headings are intended to be only informative and, as a rule, do not modify the scope of the groups covered by them, except where it is, otherwise, clear from the context. By contrast, references in the guide headings modify the scope of the associated groups.
C. Selecting Subgroups Corresponding to U.S. Indented Subclasses
The scope of a subgroup is likewise to be interpreted only within the effective scope of its main group and of any subgroup under which it is indented. Subject to this, the scope of a subgroup is determined by its title as modified by any relevant references or notes associated therewith.
See volume 9 of the International Patent Classification, entitled “Guide, Survey of Classes and Summary of Main Groups” for detailed procedures for classifying into and searching Int. Cl.
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III. U.S. INT. Cl. CONCORDANCE
The Office of Patent Classification has prepared a revised Concordance between the U.S. classes and subclasses and the Int. Cl. In many areas, the two systems are conceptually different. With this in mind,
it will be seen that a complete one-to-one correspondence between the two systems cannot be attained. An indication in the Concordance may refer to only one relevant group and not necessarily the only group in which the patent can or should be classified. For some inventions, the Concordance
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may not indicate any truly relevant group. Accordingly, the Concordance must be recognized as a guide to be used in conjunction with the Int. Cl., and not as a translation list.
907 Locarno Classification Designations [R-07.2015]
U.S. design patents prepared for issue after June 30, 1996 and international design applications include a Locarno International Classification designation as part of the bibliographic data. The purpose of the international design classification designation is to enhance accessibility of design patents in foreign design search files as well as commercial databases.
The Locarno International Classification system was developed by members of the Paris Convention for the Protection of Industrial Property and is administered by the International Bureau of the World Intellectual Property Office (WIPO).
A Locarno International Classification designation consists of two pairs of numbers separated by a hyphen. The first pair of numbers designates a design class; the second pair of numbers indicates a particular subclass within the design class. The Locarno Classification manual, available from WIPO, delineates the individual classes and subclasses and includes: (1) a general list of classes of industrial designs divided into broad subclasses; and (2) an alphabetical list of specific industrial designs with an indication of the classes and subclasses into which they should be classified.
The Locarno designation included with design patent bibliographic data indicates the original classification of the patented design only. There is no provision for cross-reference designations within the Locarno system.
Locarno International Classifications are periodically revised by the Committee of Experts of the World Intellectual Property Organization.
The Image File Wrapper (IFW) issue classification form includes an area with the heading “International Classification”. A Locarno International Classification designation must be included on the
issue slip when a design application is prepared for issue. The Locarno designation is printed on the design patent preceded by INID code [51] in compliance with ST.9 of the International Bureau. The abbreviation “LOC (7) CL.” follows INID code [51] and complies with the recommended abbreviation by the International Bureau.
An example Locarno designation as it appears on a U.S. Design Patent is as follows:
[51] LOC (7) CL. 02-02
The Office of Patent Classification has prepared a Concordance between the U.S. Design Classification classes and subclasses and the Locarno International Classification. In many areas of design subject matter, the U.S. Design Classification and Locarno Classification systems are parallel. In others, the two systems are conceptually different. For example, there is no specific provision within the Locarno system for designs which are simulative of other objects. The International Classification is generally based on the nature of the design rather than ornamental appearance. Accordingly, a one-to-one relationship between the two classification systems is not always possible.
Each suggested designation in the Concordance refers to a single Locarno International class and subclass. This designation, however, is not necessarily the only pertinent class and subclass in which the design could be properly classified since for some U.S. Design Classification designations, there is no direct parallel within the Locarno system.
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Chapter 1000 Matters Decided by Various U.S. Patent and Trademark Office Officials
Statutory Authority of Director of the USPTO
1001
Modes of Exercising Authority1001.01 Petitions to the Director of the USPTO1002
Procedure1002.01 Delegation of Authority To Decide Petitions
1002.02
[Reserved]1002.02(a) Petitions and Requests Decided by the Office of the Deputy
1002.02(b)
Commissioner for Patent Examination Policy Petitions and Requests Decided by the Technology Center Directors
1002.02(c)
Petitions Decided by the Director of Technology Center 3640
1002.02(c)(1)
Petitions and Matters Decided by the Director of Technology Center 1600
1002.02(c)(2)
Petitions and Requests Decided by the Director of Technology Center 2900
1002.02(c)(3)
Petitions Decided by the Director of the Central Reexamination Unit
1002.02(c)(4)
Petitions and Matters Decided by Supervisory Patent Examiners
1002.02(d)
[Reserved]1002.02(e) Petitions and Matters Decided by the Chief Administrative Patent
1002.02(f)
Judge of the Patent Trial and Appeal Board Petitions Decided by the Administrative Patent Judges
1002.02(g)
[Reserved]1002.02(h) Petitions Decided by the Commissioner for Trademarks
1002.02(i)
Petitions Decided by the Patent Trial and Appeal Board
1002.02(j)
[Reserved]1002.02(k) Petitions and Matters Decided by the General Counsel
1002.02(k)(1)
Requests Decided by the Office of General Law
1002.02(k)(2)
Petitions Decided by the Solicitor
1002.02(k)(3)
Requests Decided by the Certificates of Correction Branch
1002.02(l)
Petitions Decided by the Director of the Office of Enrollment and Discipline
1002.02(m)
[Reserved]1002.02(n) Petitions and Other Matters Decided by the Deputy Director of the USPTO
1002.02(o)
Petitions and Matters Decided by the Director of International Patent Legal Administration
1002.02(p)
Petitions and Requests Decided by the Director of Office of
1002.02(q)
Patent Application Processing (OPAP) Petitions Decided by the Director of Office of Data Management
1002.02(r)
Petitions and Matters Decided in the Technology Centers
1002.02(s)
Matters Submitted to Technology Center Directors
1003
Actions Which Require the Attention of a Primary Examiner
1004
Exceptions to Partial Signatory Authority
1005
1001 Statutory Authority of Director of the USPTO [R-07.2015]
35 U.S.C. 2 Powers and duties.
(a) IN GENERAL.— The United States Patent and Trademark Office, subject to the policy direction of the Secretary of Commerce—
(1) shall be responsible for the granting and issuing of patents and the registration of trademarks; and
(2) shall be responsible for disseminating to the public information with respect to patents and trademarks.
(b) SPECIFIC POWERS.— The Office—
(1) shall adopt and use a seal of the Office, which shall be judicially noticed and with which letters patent, certificates of trademark registrations, and papers issued by the Office shall be authenticated;
(2) may establish regulations, not inconsistent with law, which—
(A) shall govern the conduct of proceedings in the Office;
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(B) shall be made in accordance with section 553 of title 5;
(C) shall facilitate and expedite the processing of patent applications, particularly those which can be filed, stored, processed, searched, and retrieved electronically, subject to the provisions of section 122 relating to the confidential status of applications;
(D) may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office;
(E) shall recognize the public interest in continuing to safeguard broad access to the United States patent system through the reduced fee structure for small entities under section 41(h)(1);
(F) provide for the development of a performance-based process that includes quantitative and qualitative measures and standards for evaluating cost-effectiveness and is consistent with the principles of impartiality and competitiveness; and
(G) may, subject to any conditions prescribed by the Director and at the request of the patent applicant, provide for prioritization of examination of applications for products, processes, or technologies that are important to the national economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization, notwithstanding section 41 or any other provision of law;
(3) may acquire, construct, purchase, lease, hold, manage, operate, improve, alter, and renovate any real, personal, or mixed property, or any interest therein, as it considers necessary to carry out its functions;
(4)(A) may make such purchases, contracts for the construction, maintenance, or management and operation of facilities, and contracts for supplies or services, without regard to the provisions of subtitle I and chapter 33 of title 40, division C (except sections 3302, 3501(b), 3509, 3906, 4710, and 4711) of subtitle I of title 41, and the McKinney-Vento Homeless Assistance Act (42 U.S.C. 11301 et seq.); and
(B) may enter into and perform such purchases and contracts for printing services, including the process of composition, platemaking, presswork, silk screen processes, binding, microform, and the products of such processes, as it considers necessary to carry out the functions of the Office, without regard to sections 501 through 517 and 1101 through 1123 of title 44;
(5) may use, with their consent, services, equipment, personnel, and facilities of other departments, agencies, and instrumentalities of the Federal Government, on a reimbursable basis, and cooperate with such other departments, agencies, and
instrumentalities in the establishment and use of services, equipment, and facilities of the Office;
(6) may, when the Director determines that it is practicable, efficient, and cost-effective to do so, use, with the consent of the United States and the agency, instrumentality, Patent and Trademark Office, or international organization concerned, the services, records, facilities, or personnel of any State or local government agency or instrumentality or foreign patent and trademark office or international organization to perform functions on its behalf;
(7) may retain and use all of its revenues and receipts, including revenues from the sale, lease, or disposal of any real, personal, or mixed property, or any interest therein, of the Office;
(8) shall advise the President, through the Secretary of Commerce, on national and certain international intellectual property policy issues;
(9) shall advise Federal departments and agencies on matters of intellectual property policy in the United States and intellectual property protection in other countries;
(10) shall provide guidance, as appropriate, with respect to proposals by agencies to assist foreign governments and international intergovernmental organizations on matters of intellectual property protection;
(11) may conduct programs, studies, or exchanges of items or services regarding domestic and international intellectual property law and the effectiveness of intellectual property protection domestically and throughout the world, and the Office is authorized to expend funds to cover the subsistence expenses and travel-related expenses, including per diem, lodging costs, and transportation costs, of persons attending such programs who are not Federal employees;
(12)
(A) shall advise the Secretary of Commerce on programs and studies relating to intellectual property policy that are conducted, or authorized to be conducted, cooperatively with foreign intellectual property offices and international intergovernmental organizations; and
(B) may conduct programs and studies described in subparagraph (A); and
(13)
(A) in coordination with the Department of State, may conduct programs and studies cooperatively with foreign intellectual property offices and international intergovernmental organizations; and
(B) with the concurrence of the Secretary of State, may authorize the transfer of not to exceed $100,000 in any year to the Department of State for the purpose of making special payments to international intergovernmental organizations for studies and programs for advancing international cooperation concerning patents, trademarks, and other matters.
(c) CLARIFICATION OF SPECIFIC POWERS.—
(1) The special payments under subsection (b)(13)(B) shall be in addition to any other payments or contributions to
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international organizations described in subsection (b)(13)(B) and shall not be subject to any limitations imposed by law on the amounts of such other payments or contributions by the United States Government.
(2) Nothing in subsection (b) shall derogate from the duties of the Secretary of State or from the duties of the United States Trade Representative as set forth in section 141 of the Trade Act of 1974 (19 U.S.C. 2171).
(3) Nothing in subsection (b) shall derogate from the duties and functions of the Register of Copyrights or otherwise alter current authorities relating to copyright matters.
(4) In exercising the Director’s powers under paragraphs (3) and (4)(A) of subsection (b), the Director shall consult with the Administrator of General Services.
(5) In exercising the Director’s powers and duties under this section, the Director shall consult with the Register of Copyrights on all copyright and related matters.
(d) CONSTRUCTION.— Nothing in this section shall be construed to nullify, void, cancel, or interrupt any pending request-for-proposal let or contract issued by the General Services Administration for the specific purpose of relocating or leasing space to the United States Patent and Trademark Office.
35 U.S.C. 3 Officers and employees.
(a) UNDER SECRETARY AND DIRECTOR.—
(1) IN GENERAL.— The powers and duties of the United States Patent and Trademark Office shall be vested in an Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (in this title referred to as the “Director”), who shall be a citizen of the United States and who shall be appointed by the President, by and with the advice and consent of the Senate. The Director shall be a person who has a professional background and experience in patent or trademark law.
(2) DUTIES.—
(A) IN GENERAL.— The Director shall be responsible for providing policy direction and management supervision for the Office and for the issuance of patents and the registration of trademarks. The Director shall perform these duties in a fair, impartial, and equitable manner.
(B) CONSULTING WITH THE PUBLIC ADVISORY COMMITTEES.— The Director shall consult with the Patent Public Advisory Committee established in section 5 on a regular basis on matters relating to the patent operations of the Office, shall consult with the Trademark Public Advisory Committee established in section 5 on a regular basis on matters relating to the trademark operations of the Office, and shall consult with the respective Public Advisory Committee before submitting budgetary proposals to the Office of Management and Budget or changing or proposing to change patent or trademark user fees or patent or trademark regulations which are subject to the requirement to provide notice and opportunity for public comment under section 553 of title 5, as the case may be.
(3) OATH.— The Director shall, before taking office, take an oath to discharge faithfully the duties of the Office.
(4) REMOVAL.— The Director may be removed from office by the President. The President shall provide notification of any such removal to both Houses of Congress.
(b) OFFICERS AND EMPLOYEES OF THE OFFICE.—
(1) DEPUTY UNDER SECRETARY AND DEPUTY DIRECTOR.— The Secretary of Commerce, upon nomination by the Director, shall appoint a Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office who shall be vested with the authority to act in the capacity of the Director in the event of the absence or incapacity of the Director. The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law.
(2) COMMISSIONERS.—
(A) APPOINTMENT AND DUTIES.— The Secretary of Commerce shall appoint a Commissioner for Patents and a Commissioner for Trademarks, without regard to chapter 33, 51, or 53 of title 5. The Commissioner for Patents shall be a citizen of the United States with demonstrated management ability and professional background and experience in patent law and serve for a term of 5 years. The Commissioner for Trademarks shall be a citizen of the United States with demonstrated management ability and professional background and experience in trademark law and serve for a term of 5 years. The Commissioner for Patents and the Commissioner for Trademarks shall serve as the chief operating officers for the operations of the Office relating to patents and trademarks, respectively, and shall be responsible for the management and direction of all aspects of the activities of the Office that affect the administration of patent and trademark operations, respectively. The Secretary may reappoint a Commissioner to subsequent terms of 5 years as long as the performance of the Commissioner as set forth in the performance agreement in subparagraph (B) is satisfactory.
(B) SALARY AND PERFORMANCE AGREEMENT.— The Commissioners shall be paid an annual rate of basic pay not to exceed the maximum rate of basic pay for the Senior Executive Service established under section 5382 of title 5, including any applicable locality-based comparability payment that may be authorized under section 5304(h)(2)(C) of title 5. The compensation of the Commissioners shall be considered, for purposes of section 207(c)(2)(A) of title 18, to be the equivalent of that described under clause (ii) of section 207(c)(2)(A) of title 18. In addition, the Commissioners may receive a bonus in an amount of up to, but not in excess of, 50 percent of the Commissioners’ annual rate of basic pay, based upon an evaluation by the Secretary of Commerce, acting through the Director, of the Commissioners’ performance as defined in an annual performance agreement between the Commissioners and the Secretary. The annual performance agreements shall incorporate measurable organization and individual goals in key operational areas as delineated in an annual performance plan agreed to by the Commissioners and the Secretary. Payment of a bonus under this subparagraph may
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be made to the Commissioners only to the extent that such payment does not cause the Commissioners’ total aggregate compensation in a calendar year to equal or exceed the amount of the salary of the Vice President under section 104 of title 3.
(C) REMOVAL.— The Commissioners may be removed from office by the Secretary for misconduct or nonsatisfactory performance under the performance agreement described in subparagraph (B), without regard to the provisions of title 5. The Secretary shall provide notification of any such removal to both Houses of Congress.
(3) OTHER OFFICERS AND EMPLOYEES.— The Director shall—
(A) appoint such officers, employees (including attorneys), and agents of the Office as the Director considers necessary to carry out the functions of the Office; and
(B) define the title, authority, and duties of such officers and employees and delegate to them such of the powers vested in the Office as the Director may determine.
The Office shall not be subject to any administratively or statutorily imposed limitation on positions or personnel, and no positions or personnel of the Office shall be taken into account for purposes of applying any such limitation
(4) TRAINING OF EXAMINERS.— The Office shall submit to the Congress a proposal to provide an incentive program to retain as employees patent and trademark examiners of the primary examiner grade or higher who are eligible for retirement, for the sole purpose of training patent and trademark examiners.
(5) NATIONAL SECURITY POSITIONS.— The Director, in consultation with the Director of the Office of Personnel Management, shall maintain a program for identifying national security positions and providing for appropriate security clearances, in order to maintain the secrecy of certain inventions, as described in section 181, and to prevent disclosure of sensitive and strategic information in the interest of national security.
(6) ADMINISTRATIVE PATENT JUDGES AND ADMINISTRATIVE TRADEMARK JUDGES.—The Director may fix the rate of basic pay for the administrative patent judges appointed pursuant to section 6 and the administrative trademark judges appointed pursuant to section 17 of the Trademark Act of 1946 (15 U.S.C. 1067) at not greater than the rate of basic pay payable for level III of the Executive Schedule under section 5314 of title 5. The payment of a rate of basic pay under this paragraph shall not be subject to the pay limitation under section 5306(e) or 5373 of title 5.
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1001.01 Modes of Exercising Authority [R-07.2015]
The authority of the Director of the USPTO to review and supervise the work of the Office is
exercised by the promulgation of the Rules of Practice; issuance of orders, notices and memoranda stating Office policies and modes for effectuating these policies; decisions on petitions by applicants; and by the designation of particular cases which must be submitted to the Director of the USPTO or other officials authorized by the Director of the USPTO. The present Chapter deals with the latter two items. The line of demarcation between appealable matters for the Patent Trial and Appeal Board (Board) and petitionable matters for the Director of the U.S. Patent and Trademark Office (Director) should be carefully observed. The Board will not ordinarily hear a question that should be decided by the Director on petition, and the Director will not ordinarily entertain a petition where the question presented is a matter appealable to the Board. See MPEP Chapter 1200 for more information on appealable matters.
37 CFR 1.181(g) states, “The Director may delegate to appropriate Patent and Trademark Office officials the determination of petitions.”
The various delegations to various Office officials are set forth in this Chapter.
The delegations set forth in this Chapter do not confer a right to have a matter decided by a specific Office official, rather, such delegations aid in the efficient treatment of petitions by the Office. A delegation of supervisory or higher level review authority over a matter carries with it the authority to decide the matter ab initio.
1002 Petitions to the Director of the USPTO [R-07.2015]
37 CFR 1.4 Nature of correspondence and signature requirements.
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(c) Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects. Subjects provided for on a single Office or World Intellectual Property Organization form may be contained in a single paper.
*****
37 CFR 1.181 Petition to the Director.
(a) Petition may be taken to the Director:
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(1) From any action or requirement of any examiner in the ex parte prosecution of an application, or in ex parte or inter partes prosecution of a reexamination proceeding which is not subject to appeal to the Patent Trial and Appeal Board or to the court;
(2) In cases in which a statute or the rules specify that the matter is to be determined directly by or reviewed by the Director; and
(3) To invoke the supervisory authority of the Director in appropriate circumstances. For petitions involving action of the Patent Trial and Appeal Board, see § 41.3 of this title.
(b) Any such petition must contain a statement of the facts involved and the point or points to be reviewed and the action requested. Briefs or memoranda, if any, in support thereof should accompany or be embodied in the petition; and where facts are to be proven, the proof in the form of affidavits or declarations (and exhibits, if any) must accompany the petition.
(c) When a petition is taken from an action or requirement of an examiner in the ex parte prosecution of an application, or in the ex parte or inter partes prosecution of a reexamination proceeding, it may be required that there have been a proper request for reconsideration (§ 1.111) and a repeated action by the examiner. The examiner may be directed by the Director to furnish a written statement, within a specified time, setting forth the reasons for his or her decision upon the matters averred in the petition, supplying a copy to the petitioner.
(d) Where a fee is required for a petition to the Director the appropriate section of this part will so indicate. If any required fee does not accompany the petition, the petition will be dismissed.
(e) Oral hearing will not be granted except when considered necessary by the Director.
(f) The mere filing of a petition will not stay any period for reply that may be running against the application, nor act as a stay of other proceedings. Any petition under this part not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely, except as otherwise provided. This two-month period is not extendable.
(g) The Director may delegate to appropriate Patent and Trademark Office officials the determination of petitions.
37 CFR 1.182 Questions not specifically provided for.
All situations not specifically provided for in the regulations of this part will be decided in accordance with the merits of each situation by or under the authority of the Director, subject to such other requirements as may be imposed, and such decision will be communicated to the interested parties in writing. Any petition seeking a decision under this section must be accompanied by the petition fee set forth in § 1.17(f).
37 CFR 1.183 Suspension of rules.
In an extraordinary situation, when justice requires, any requirement of the regulations in this part which is not a requirement of the statutes may be suspended or waived by the Director or the Director’s designee, sua sponte , or on petition
of the interested party, subject to such other requirements as may be imposed. Any petition under this section must be accompanied by the petition fee set forth in § 1.17(f).
Petitions on appealable matters ordinarily are not entertained. See MPEP § 1201.
A petition should include:
1. A statement of the type of relief requested and the authorizing provision of statute or rules, if applicable;
2. A statement of the relevant facts;
3. An identification of the points that are to be reviewed; and
4. The fee, where required.
37 CFR 1.4(c) requires a separate petition for each distinct subject, inquiry or order to avoid confusion and delay in answering the petition. Therefore, each petition should ordinarily only be filed under a single authorizing provision (e.g., 37 CFR 1.181).Although concurrent petitions seeking relief from the same action may be filed, many prior petitioners have benefitted by delaying the filing of petitions under 37 CFR 1.182 or 1.183 until after they receive a decision on a petition seeking supervisory review under 37 CFR 1.181.
The mere filing of a petition will not stay the period for replying to an examiner’s action which may be running against an application, nor act as a stay of other proceedings (37 CFR 1.181(f)). For example, if a petition to vacate a final rejection as premature is filed within 2 months from the date of the final rejection, the period for reply to the final rejection is not extended even if the petition is not reached for decision within that period. However, if the petition is granted and the applicant has filed an otherwise full reply to the rejection within the period for reply, the case is not abandoned.
37 CFR 1.181(f) provides that any petition under that rule which is not filed “within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely.” Often, the “action or notice from which relief is requested,” for example, a requirement for a new drawing, is included in the same letter as an action on the merits of the claims, the latter having a
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3-month period for reply. Under such circumstances, if applicant requests reconsideration, under 37 CFR 1.111(b), of the requirement for a new drawing, the examiner’s action on this request, if adverse, establishes the beginning of the 2-month period for filing the petition. The petition must be filed within this period even though the period for reply to the rejection of the claims may extend beyond the 2-month period. The 2-month period for filing timely petitions set forth in 37 CFR 1.181(f) applies to any petition under 37 CFR part 1, except as otherwise provided. A number of sections (e.g., 37 CFR 1.377, 1.378, and 1.740) specify the time period within which a petition must be filed (or may be dismissed as untimely). The 2-month time period in 37 CFR 1.181(f) applies to a petition under any section (e.g., 37 CFR 1.182 and 37 CFR 1.183) that does not specify the time period within which a petition must be filed. The 2-month period is not extendible under 37 CFR 1.136(a) since the time is within the discretion of the Director of the USPTO.
Form paragraph 10.20 may be used where an insufficient fee was filed with a petition or a request.
¶ 10.20 Petition or Request Dismissed, Proper Fee Not Submitted
Applicant’s petition or request under 37 CFR [1] filed [2] is DISMISSED because the proper petition or processing fee of [3] required under 37 CFR 1.17 has not been submitted.
Examiner Note:
1. Requests under 37 CFR 1.48 for correcting inventorship require a fee as set forth in 37 CFR 1.17(i).
2. Petitions to suspend action under 37 CFR 1.103(a) require a fee as set forth in 37 CFR 1.17(g).
3. Petitions to withdraw an application from issue under 37 CFR 1.313 require a fee as set forth in 37 CFR 1.17(h).
4. Petitions for an extension of time under 37 CFR 1.136(a) require varying fees. See 37 CFR 1.17(a)(1)-(5).
5. Requests to suspend action under 37 CFR 1.103(b) or (c) require a fee set forth in 37 CFR 1.17(i).
6. Requests to defer examination under 37 CFR 1.103(d) require a fee set forth in 37 CFR 1.17(i) and publication fee set forth in 37 CFR 1.18(d).
Form paragraph 10.30 may be used to generate the header information for a petition decision.
¶ 10.30 Petition Header Information
In re Application of: [1] : Appl. No.: [2] : DECISION ON PETITION Filed: [3] : [5] For: [4] :
1002.01 Procedure [R-07.2015]
Petitions, together with the respective application files, are sent to the official having the delegated authority to decide the petition. The petition may be referred to the examiner for a formal statement under 37 CFR 1.181(c) or for an informal memorandum. See MPEP § 711.03(d).
Where a formal statement under 37 CFR 1.181(c) is made, a copy thereof is mailed to the petitioner by the examiner unless the examiner is otherwise directed, and the application file and petition, accompanied by the original copy of his or her statement, are returned to the official handling the petition. If an informal memorandum is requested, no copy thereof is mailed to the petitioner by the examiner.
1002.02 Delegation of Authority To Decide Petitions [R-07.2015]
Petitions to the Director of the USPTO are decided in accordance with the following delegation of authority.
In any case in which the authority to decide the petition has been delegated as indicated in MPEP §§ 1002.02(b), 1002.02(f), 1002.02(g), 1002.02(j), 1002.02(o), and 1002.02(p), a denial of a petition is a final agency decision. A dismissal of a petition, a denial of a petition without prejudice, and other interlocutory orders are not final agency decisions.
In accordance with 37 CFR 1.181(g), the authority to decide petitions to the Director of the USPTO not otherwise delegated, has been delegated to various Office officials. Generally, these officials will decide petitions as specified in the following sections for the effective operation of the Office. Also listed are certain petitions which are not, strictly speaking, to the Director of the USPTO but have been committed by statute or rule to the designated officials.
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The delegation of specific petitions and/or matters to the Technology Center (TC) Directors is identified in the sections below. Unless specifically provided for in the letter of delegation of authority, further delegations are not permitted. Any petitions and/or matters so delegated by the TC Directors may be decided by the TC Directors.
Authority not herein delegated has been reserved to the Director of the USPTO and may be delegated to appropriate officials on an ad hoc basis.
1002.02(a) [Reserved]
1002.02(b) Petitions and Requests Decided by the Office of the Deputy Commissioner for Patent Examination Policy [R-07.2015]
All petitions decided by the Office of the Deputy Commissioner for Patent Examination Policy should be directed to “Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450,” except as otherwise provided. For example, applications for patent term extension under 35 U.S.C. 156 should be directed to Mail Stop Hatch-Waxman PTE and petitions for retroactive foreign filing license under 37 CFR 5.25 should be directed to Mail Stop L&R.
1. Petitions to revive an abandoned national, nonprovisional or provisional patent application on the basis of unintentional delay, 37 CFR 1.137 and MPEP § 711.03(c).
2. Petitions under 37 CFR 1.183 for waiver or suspension of rules not otherwise provided for.
3. Petitions to invoke the supervisory authority of the Director of the USPTO under 37 CFR 1.181 in matters not otherwise provided for.
4. For utility and plant applications filed on or after November 29, 2000, petitions for an unintentionally delayed foreign priority claim, 37 CFR 1.55(e) and MPEP § 214.02.
5. Petitions to restore the right of priority under 37 CFR 1.55(c).
6. Petitions for late filing of priority papers under 37 CFR 1.55(f).
7. For utility and plant applications filed on or after November 29, 2000, petitions for an unintentionally delayed domestic benefit claim, 37 CFR 1.78(c) and (e) and MPEP § 211.04.
8. Petitions to restore a domestic benefit claim under 37 CFR 1.78(b) or (e).
9. Petitions to defer issuance of patents, 37 CFR 1.314 and MPEP § 1306.01.
10. Petitions for express abandonment of patent applications after payment of the issue fee, MPEP § 711.01, subsection I and MPEP § 1308.
11. Petitions relating to issuance of patents not otherwise provided for, for example, issuance of a patent in the name of an assignee under 37 CFR 3.81.
12. Petitions for the withdrawal of attorney or agent of record under 37 CFR 1.36 in patent applications involved in proceedings before the Office of the Deputy Commissioner for Patent Examination Policy and in applications pending in a Technology Center.
13. Petitions under 37 CFR 1.182 in matters not otherwise provided for.
14. Requests from the examiner for the rehearing of a decision of the Patent Trial and Appeal Board, MPEP § 1214.04.
15. Petitions to review refusal to accept and record maintenance fee payment filed prior to the expiration of a patent, 37 CFR 1.377 and MPEP § 2580.
16. Petitions to accept an unintentionally delayed payment of maintenance fee in an expired patent, 37 CFR 1.378 and MPEP § 2590.
17. Petitions to review a decision of Technology Center Director or Central Reexamination Unit Director, 37 CFR 1.181.
18. Petitions to withdraw a holding of abandonment not otherwise delegated, 37 CFR 1.181.
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19. Requests to order a Director initiated reexamination proceeding, 37 CFR 1.520.
20. Petitions to accept late papers in a reexamination proceeding based upon unintentional delay, 35 U.S.C. 41(a)(7).
21. Petitions for access to patent applications under 37 CFR 1.14 (or pre-AIA 37 CFR 1.14) with the exception of applications involved in or related to a proceeding before the Patent Trial andAppeal Board, MPEP §§ 103, 104, and 1901.05.
22. Petitions relating to reexamination proceedings and/or reissue proceedings under 37 CFR 1.182 and 1.183.
23. Petitions relating to merger of reexamination and reissue proceedings.
24. Applications relating to Hatch-Waxman patent term extension, 37 CFR 1.710 - 1.791 and petitions relating to Hatch-Waxman patent term extension, 37 CFR 1.182 or 1.183.
25. Petitions under 37 CFR 1.181 to review a determination of the length of the patent term extension under 37 CFR 1.701 for original applications, other than designs, filed on or after June 8, 1995 and before May 29, 2000, MPEP § 2720.
26. Requests for reconsideration of the patent term adjustment indicated in the notice of allowance or in the patent, under 37 CFR 1.705, MPEP § 2734, subsection I.
27. Requests for reinstatement of the period of patent term adjustment reduced pursuant to 37 CFR 1.704(b) under 37 CFR 1.705(c), MPEP § 2734, subsection II.
28. Petitions relating to the filing date of patent applications under 37 CFR 1.53, MPEP § 506.02.
29. Petitions to convert a nonprovisional application filed under 37 CFR 1.53(b) to a provisional application under 37 CFR 1.53(c) where the nonprovisional application is before the Office of
Petitions or the Office of Patent Legal Administration.
30. Requests to convert a provisional application filed under 37 CFR 1.53(c) to a nonprovisional application under 37 CFR 1.53(b) where the provisional application is before the Office of Petitions or the Office of Patent Legal Administration.
31. Petitions for extensions of time under 37 CFR 1.136(b) in applications before the Office of Petitions or the Office of Patent Legal Administration.
32. Petitions, or requests at the initiative of the USPTO by someone other than a Technology Center Director, to withdraw patent applications from issue under 37 CFR 1.313(a) before payment of the issue fee.
33. Petitions, or requests at the initiative of the USPTO by someone other than a Technology Center Director, to withdraw patent applications from issue after payment of the issue fee under 37 CFR 1.313(b), MPEP § 1308, subsection II.
34. Petitions to withdraw patent applications from issue after payment of the issue fee under 37 CFR 1.313(c), MPEP § 1308, subsection I.B.
35. Petitions to expunge papers or assignment information from patent applications or patent files under 37 CFR 1.59 which were not submitted under MPEP § 724.02 or as part of an information disclosure statement (IDS).
36. Petitions to expunge recorded assignment information, 37 CFR 1.182 and MPEP § 323.01(d).
37. Petitions to Make Special based on inventor’s health, 37 CFR 1.102(c)(1) and MPEP § 708.02, subsection I.
38. Petitions to Make Special based on inventor’s age, 37 CFR 1.102(c)(1) and MPEP § 708.02, subsection II.
39. Requests for prioritized examination under 37 CFR 1.102(e), MPEP § 708.02(b).
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40. Requests for participation in a Patent Prosecution Highway program (www.uspto.gov/ patents/init_events/pph/index.jsp).
41. Requests for participation in the Law School Pilot Program.
42. Petitions for retroactive foreign filing license under 37 CFR 5.25, MPEP § 140, subsection II.
43. Petitions to show proprietary interest sufficient to make application on behalf of and as agent for the inventor under 37 CFR 1.46 (applicable in applications filed on or after September 16, 2012), MPEP § 409.05, subsection II.
44. Petitions to accept an oath or declaration without a joint inventor’s signature, pre-AIA 37 CFR 1.47(a) (applicable in applications filed before September 16, 2012), MPEP § 409.03(a).
45. Petitions to accept an oath or declaration from a person to whom an inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, pre-AIA 37 CFR 1.47(b) (applicable in applications filed before September 16, 2012 where none of the inventors are available to sign), MPEP § 409.03(b).
46. Requests for Corrected Patent Application Publication under 37 CFR 1.221(b), MPEP § 1130, subsection II.
47. Petitions to change entity status, including the payment of additional fees, 37 CFR 1.28.
48. Return of papers containing discourteous remarks. See MPEP §§ 714.19 and 714.25.
1002.02(c) Petitions and Requests Decided by the Technology Center Directors [R-07.2015]
1. Petitions or requests to reopen prosecution of patent applications or to reinstate a rejection after decision by the Patent Trial and Appeal Board under 37 CFR 1.198, where no court action has been filed, MPEP §§ 1214.04 and 1214.07.
2. Petitions from a final decision of examiner requiring restriction in patent applications under 37 CFR 1.144 and MPEP § 818.01(c), or protests following a holding of lack of unity of invention by the USPTO in its capacity as International Searching Authority (37 CFR 1.477 and MPEP § 1850) or International Preliminary Examining Authority (37 CFR 1.489 and MPEP § 1875.02).
3. Petitions invoking the supervisory authority of the Director of the USPTO under 37 CFR 1.181 involving any ex parte action or requirement in a patent application by the examiner which is not subject to appeal (37 CFR 1.191) and not otherwise provided for, as for example:
a. prematureness of final rejection, MPEP § 706.07(c);
b. requirement to cancel “new matter” from specification, MPEP § 608.04(c);
c. relative to formal sufficiency and propriety of affidavits under 37 CFR 1.131(a) (MPEP § 715.08) or 37 CFR 1.132 (MPEP § 716);
d. refusal to enter an amendment under 37 CFR 1.312, MPEP § 714.16(d);
e. refusal to enter an amendment, 37 CFR 1.127, MPEP § 714.19;
f. refusal to enter an amendment under 37 CFR 1.111 or 1.115, MPEP §§ 714.01(e) and 714.03(a);
g. resetting period for reply, MPEP § 710.06; and
h. requirement for information under 37 CFR 1.105, MPEP § 704.14(c).
4. Petitions under 37 CFR 1.113 relating to objections or requirements made by the examiners.
5. Requests for extensions of a set shortened statutory period under 37 CFR 1.136(b) in applications pending in the Technology Center, MPEP § 710.02(e).
6. Petitions under 37 CFR 41.40 to request review of the primary examiner’s failure to designate a rejection in the examiner’s answer as a new ground of rejection, MPEP § 1207.03(b).
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7. Petitions concerning appealed patent applications or ex parte reexamination proceedings before transfer of jurisdiction to the Patent Trial and Appeal Board (e.g., extension of time under 37 CFR 1.136(b) or 1.550(c) for filing an appeal brief), MPEP § 1205.01.
8. Petitions from refusal to issue a Certificate of Correction for a patent not involved in an interference, 37 CFR 1.181, MPEP §§ 1480 - 1485.
9. Petitions to reinstate appeals dismissed in the Technology Center. See MPEP § 1205.01.
10. Petitions from the denial of a request for reexamination, 37 CFR 1.515(c), MPEP § 2248.
11. Requests for extension of time in ex parte reexamination proceedings, 37 CFR 1.550(c).
12. Petitions under 37 CFR 1.129(b)(2) traversing a restriction requirement made in an application which is subject to the transitional restriction provisions, MPEP § 803.03.
13. Petitions to convert a nonprovisional application filed under 37 CFR 1.53(b) to a provisional application under 37 CFR 1.53(c) where the nonprovisional application is before the Technology Center.
14. Requests for interviews with examiner after a patent application has been sent to issue (Notice of Allowability mailed), MPEP § 713.10, or after transfer of jurisdiction to the Patent Trial and Appeal Board, MPEP § 1204.03.
15. Petitions to expunge papers from patent applications or patent files under 37 CFR 1.59 which were submitted under MPEP § 724.02 or as part of an information disclosure statement.
16. Petitions, or requests at the initiative of the USPTO, to withdraw patent applications from issue before payment of the issue fee, 37 CFR 1.313(a), where the application is before the Technology Center.
17. Requests at the initiative of the USPTO to withdraw patent applications from issue after payment of the issue fee under 37 CFR 1.313(b), MPEP § 1308, subsection II.
18. Petitions under 37 CFR 1.91 to admit a model or exhibit as part of the record of an application, MPEP § 608.03.
19. Requests for the return of models, exhibits, or specimen under 37 CFR 1.94, MPEP § 608.03(a).
1002.02(c)(1) Petitions Decided by the Director of Technology Center 3640 [R-07.2015]
In addition to the items delegated to all Technology Center Directors under MPEP § 1002.02(c), authority to decide the following is delegated to the Director of Technology Center 3640:
1. All petitions filed under 35 U.S.C. 267 to extend the time for taking action in United States-owned applications wherein the invention is important to the armament or defense of the United States, MPEP § 710.
2. All petitions under 37 CFR 1.103(f) to suspend action in United States-owned applications wherein the publication of the invention might be detrimental to the public safety or defense, MPEP § 709, subsection II.
3. Petitions under 37 CFR 5.12(b) for foreign license to file patent applications in foreign countries, MPEP § 140.
4. Petitions for rescission of secrecy order, 37 CFR 5.4, MPEP § 120.
5. Petitions to permit disclosure of subject matter under a secrecy order, 37 CFR 5.5(b), MPEP § 120.
6. Petitions for modification of secrecy order, 37 CFR 5.5(c), MPEP § 120.
7. Petitions relating to refusal of request for publication of a Statutory Invention Registration, 37 CFR 1.295 as in effect on March 15, 2013.
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8. Petitions relating to request for withdrawal of request for publication of a Statutory Invention Registration, 37 CFR 1.296 as in effect on March 15, 2013.
9. Petitions relating to DOE property rights statements under 42 U.S.C. 2182, MPEP § 150.
10. Petitions relating to NASA property rights statements under 42 U.S.C. 2457, MPEP § 150.
11. Petitions relating to foreign filing licenses under 35 U.S.C. 184, MPEP § 140.
12. Petitions concerning review of security or government interest matters not otherwise provided for.
13. Petitions relating to any application under a secrecy order pursuant to 35 U.S.C. 181, including petitions to expunge subject matter from the application to overcome the secrecy order.
1002.02(c)(2) Petitions and Matters Decided by the Director of Technology Center 1600 [R-07.2015]
In addition to the items delegated to all Technology Center Directors under MPEP § 1002.02(c), authority to decide the following is delegated to the Director of Technology Center 1600:
1. Petitions regarding sequence rules, 37 CFR 1.821 - 1.825.
2. Request for a certificate of statement of availability of deposit, MPEP § 2410.02.
1002.02(c)(3) Petitions and Requests Decided by the Director of Technology Center 2900 [R-07.2015]
In addition to the items delegated to all Technology Center Directors under MPEP § 1002.02(c), authority to decide the following requests filed in design applications is delegated to the Director of Technology Center 2900:
Requests for expedited examination of design applications under 37 CFR 1.155, MPEP § 1504.30.
1002.02(c)(4) Petitions Decided by the Director of the Central Reexamination Unit
In addition to the items delegated to Technology Center Directors under MPEP § 1002.02(c), authority to decide the following is delegated to the Director of the Central Reexamination Unit (CRU), who has further delegated the authority to CRU Supervisory Patent Reexamination Specialists (SPRS) as noted below:
1. Petitions under 37 CFR 1.181(a)(1) from any action or requirement of any examiner in ex parte and inter partes reexamination proceedings including any request for reconsideration of a decision on such a petition. See MPEP § 1002.02(c), item 3, for petitions seeking supervisory review of prior decisions of petitions under 37 CFR 1.181(a)(1).
2. Petitions under 37 CFR 1.550(c) for an extension of time in ex parte reexamination proceedings (currently delegated to SPRS).
3. Petitions under 37 CFR 1.956 for an extension of time in inter partes reexamination proceedings (currently delegated to SPRS).
4. Petitions under 37 CFR 1.59 to expunge papers (currently delegated to SPRS).
Petitions in ex parte and inter partes reexamination proceedings for actions occurring after jurisdiction has transferred to the Patent Trial and Appeal Board (Board) or for petitions that have been expressly delegated to be decided by the Board are appropriately filed under 37 CFR 41.3. See MPEP §§ 1002.02(f) and 1002.02(j) for more information on petitions and other matters decided by the Board.
1002.02(d) Petitions and Matters Decided by Supervisory Patent Examiners [R-07.2015]
1. Entry of amendments under 37 CFR 1.312 which embody more than merely the correction of formal matters without changing the scope of any claim, MPEP §§ 714.16 and 714.16(d).
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2. Approval of reopening prosecution after the filing of an appeal brief in order to incorporate any new ground of rejection, MPEP § 1207.04.
3. Requests for a Certificate of Correction submitted under 37 CFR 1.322 or 1.323 unless the error is clearly minor, clerical or typographical, in which case it is handled by the Certificate of Correction Branch.
4. Requests for a Certificate of Correction to correct a claim even if the request is submitted under 37 CFR 1.322, MPEP § 1480.
5. Petitions under 37 CFR 1.324 to correct errors in joining inventors in a patent that is not involved in an interference, MPEP § 1481.02.
6. Disapproval of preliminary amendments under 37 CFR 1.115 or second (or subsequent)
supplemental amendments (3rd reply) under 37 CFR 1.111, MPEP §§ 714.01(e) and 714.03(a).
7. Letters to an applicant suggesting claims for purposes of interference, or the submission of Form PTO-850, where one or more claims of one application would differ from corresponding claims of another application. See 37 CFR 41.202 and MPEP § 2304.04 et seq.
8. Amendments presented after decision in an appeal by the Patent Trial and Appeal Board as to which the primary examiner recommends entry as placing the application in condition for allowance. See MPEP § 1214.07.
9. Petitions under 37 CFR 1.84 to accept photographs or color drawings in patent applications, MPEP § 608.02, subsection VIII.
10. Withdrawal from appeal of an application remanded by the Patent Trial and Appeal Board. See MPEP § 1211.01.
11. Requests for deferral of examination under 37 CFR 1.103(d), MPEP § 709.
1002.02(e) [Reserved]
1002.02(f) Petitions and Matters Decided by the Chief Administrative Patent Judge of the Patent Trial and Appeal Board [R-07.2015]
The Chief Administrative Patent Judge is authorized to re-delegate authority to decide any of these petitions or matters to the Deputy Chief Administrative Patent Judge, to a Vice Chief Administrative Patent Judge, a Lead Administrative Patent Judge, or to an Administrative Patent Judge of the Patent Trial and Appeal Board.
1. If raised properly during ex parte reexamination and in a subsequent appeal, issues relating to an examiner’s determination that a reference raises a substantial new question of patentability. See 75 FR 36357 (June 25, 2010). This authority may be re-delegated to the panel of the Patent Trial and Appeal Board deciding the appeal in the reexamination.
2. Ordering, in the interests-of-justice, an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. 37 CFR 42.200(d).
3. Designation of members of the Patent Trial and Appeal Board to, on written appeal, review adverse decisions of examiners upon applications for patents, review appeals of ex parte reexaminations, conduct derivation proceedings, conduct inter partes reviews and post-grant reviews, initially and on request for reconsideration. 35 U.S.C. 6.
4. Designation of members of the Patent Trial and Appeal Board to conduct proceedings in an interference including the determination of priority and patentability of invention. Pre-AIA 35 U.S.C. 6.
5. Designation of members of the Patent Trial and Appeal Board to review appeals of inter partes reexaminations.
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6. Requests related to superintending the functions of the Patent Trial and Appeal Board, including:
a. Requests for decision on a question of policy certified by a panel or an administrative patent judge of the Patent Trial and Appeal Board. 37 CFR 41.3(a).
b. Petitions to review a determination of a non-compliant brief. 37 CFR 41.37(d), 41.68(c), and 41.71(e).
c. Certification of a decision by a panel of the Patent Trial and Appeal Board to disqualify counsel for cause in a trial proceeding. 37 CFR 42.10(d).
d. Extensions of pendency for a period of up to six months in an inter partes or a post-grant review proceeding. 37 CFR 42.100(c), 42.200(c), and 42.300(c).
e. Petitions under 37 CFR 1.181, 1.182, and 1.183 from actions of the Patent Trial and Appeal Board.
f. Petitions for an extension of time for seeking rehearing in an ex parte appeal before the Patent Trial and Appeal Board.
g. Petitions to revive an application abandoned for, or an ex parte or inter partes reexamination terminated for, failure to file a timely corrected brief in reply to a Notification of Defective or Non-Compliant Brief. 37 CFR 1.137, 41.37, and 41.67.
h. Petitions to revive an inter partes reexamination terminated for failure to file a timely corrected Request to Reopen Prosecution in reply to an Order by the Patent Trial and Appeal Board denying a request to reopen prosecution pursuant to 37 CFR 41.77(b)(1).
7. Petitions under pre-AIA 35 U.S.C. 135(c):
a. Petitions under pre-AIA 35 U.S.C. 135(c) and 37 CFR 41.205(b) to permit the filing of an agreement or understanding during the 6-month period subsequent to termination of an interference.
b. Petitions under 37 CFR 41.205(d) for access to copies of an interference agreement or understanding filed under pre-AIA 35 U.S.C. 135(c).
1002.02(g) Petitions Decided by the Administrative Patent Judges [R-07.2015]
1. Certification of a question of policy to the Chief Administrative Patent Judge for decision. 37 CFR 41.3(a).
2. Motion to waive or suspend any rule in Subpart D of part 41 of title 37 CFR. See 37 CFR 41.104(b).
3. Declarations and re-declarations of interferences. 37 CFR 41.203.
4. Institutions and reinstitutions of derivation proceedings. 37 CFR 42.408(a).
5. Motion to suspend an interference involving a patent under ex parte or inter partes reexamination. 37 CFR 1.565(e) and 1.993.
1002.02(h) [Reserved]
1002.02(i) Petitions Decided by the Commissioner for Trademarks [R-08.2012]
Petitions relating to Trademarks are covered in Chapter 1700 of the Trademark Manual of Examining Procedure.
1002.02(j) Petitions Decided by the Patent Trial and Appeal Board [R-07.2015]
1. Requests in a reply brief to consider a new argument not previously raised in an appeal brief or not responsive to an argument raised by the examiner. 37 CFR 41.41(b)(2).
2. Requests in an oral hearing to rely on a new argument based upon a recent relevant decision of the Patent Trial and Appeal Board or a Federal Court. 37 CFR 41.47(e)(2).
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3. Requests made in a request for rehearing to review a panel’s failure to designate a new ground of rejection in its decision. 37 CFR 41.50(c).
4. Petitions to institute a trial. 37 CFR 42.4(a), 42.108, 42.208, 42.300, and 42.408.
5. Determination of the proper course of conduct in an interference or trial proceeding. 37 CFR 41.104, 42.5.
6. Authorizations to file a motion other than a petition requesting the institution of a trial. 37 CFR 41.121 and 42.20 – 42.25.
7. Motions including, but not limited to:
a. Requests for oral argument on an issue raised in a paper. 37 CFR 41.124(a) and 42.70.
b. Requests to authorize binding arbitration to determine any issue. 37 CFR 41.126(a).
c. Imposition of a sanction against a party for misconduct. 37 CFR 41.128(a) and 42.12(a).
d. Requests for additional discovery. 37 CFR 41.150(c) and 42.51(b)(2).
e. Motions to exclude evidence. 37 CFR 41.155(c) and 42.64(c).
f. Motions in limine for a ruling on the admissibility of evidence. 37 CFR 41.155(d) and 42.64.
g. Motions to compel testimony or production of documents or things. 37 CFR 41.156 and 42.52(a).
h. Motions related to the taking of testimony, including motions to quash. 37 CFR 41.157 and 42.53.
i. Admissibility of expert testimony. 37 CFR 41.158 and 42.65.
j. Requests for recognition of counsel pro hac vice in an interference or trial proceeding. 37 CFR 41.5(a) and 42.10(c).
k. Disqualification of counsel for cause, subject to certification by the Chief Administrative Patent Judge, in an interference or trial proceeding. 37 CFR 41.5(b) and 42.10(d).
l. Requests for withdrawal of counsel in an interference or trial proceeding. 37 CFR 41.5(c) and 42.10(e).
m. Motions to seal a document or thing in a trial proceeding. 37 CFR 42.14, 42.54, and 42.55.
n. Motions to expunge confidential information. 37 CFR 42.56.
o. Requests to treat a settlement agreement as business confidential information. 37 CFR 42.74(c).
p. Motions by patent owners to amend a patent in an inter partes review or post-grant review proceeding. 37 CFR 42.121(a), 42.221(a).
q. Motions to submit supplemental information. 37 CFR 42.123(a), 42.223(a).
r. Motions to correct a clerical or typographical errors in a petition for inter partes or post-grant review. 37 CFR 42.104(c), 42.204(c), 42.304(c).
s. Requests for joinder. 37 CFR 42.122(b), 42.222(b).
t. Requests to make a settlement agreement available to a Government agency or other person. 37 CFR 42.74(c).
1002.02(k) [Reserved]
1002.02(k)(1) Petitions and Matters Decided by the General Counsel [R-07.2015]
1. Requests for confidentiality waiver under 35 U.S.C. 122.
2. Petitions (under 37 CFR 90.3(c) or 37 CFR 2.145(e)) seeking to extend the time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action seeking judicial review of a decision of the Patent Trial and Appeal Board or the Trademark Trial and Appeal Board.
3. Petitions under 37 CFR 11.2(d) from a final decision of the Director of the Office of Enrollment and Discipline, regarding enrollment or recognition.
4. Petitions under 37 CFR 11.2(e) from a final decision of the Director of the Office of Enrollment and Discipline, regarding disciplinary matters.
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5. Appeals under 37 CFR 11.55 of initial decisions of hearing officers and requests for reconsideration under 37 CFR 11.56(c) in proceedings under 35 U.S.C. 32 in which the Director of the Office of Enrollment and Discipline seeks to exclude or suspend a practitioner from practice before the United States Patent and Trademark Office.
6. All contested decisions involving the Office of Enrollment and Discipline.
1002.02(k)(2) Requests Decided by the Office of General Law [R-07.2015]
1. Requests filed under the Freedom of Information Act (FOIA).
2. Administrative appeals of the FOIA Officer’s decision.
3. Certain uncontested decisions involving the Office of Enrollment and Discipline.
1002.02(k)(3) Petitions Decided by the Solicitor [R-08.2012]
1. Petitions for extension of time in court matters 35 U.S.C. 142, 145, and 146.
2. Petitions relating to ex parte questions in cases before the Court of Appeals for the Federal Circuit.
The Office of the Solicitor is available to render legal advice to any deciding official in connection with any petition.
1002.02(l) Requests Decided by the Certificates of Correction Branch [R-07.2015]
1. Requests for Certificates of Correction under 37 CFR 1.322 or 1.323 except for denials on grounds requiring consideration by the Chief Administrative Patent Judge or the supervisory patent examiners otherwise provided for, MPEP §§ 1480, 1481 and 1485.
2. Petitions to issue a corrected patent, 37 CFR 1.322(b).
3. Request to change inventorship pursuant to court order, 37 CFR 1.324, MPEP § 1481.02.
1002.02(m) Petitions Decided by the Director of the Office of Enrollment and Discipline [R-07.2015]
1. Petitions regarding enrollment or recognition under 37 CFR 11.2(c).
2. Requests for limited recognition under 37 CFR 11.9.
3. Petitions for reinstatement under 37 CFR 11.60.
4. Petitions to suspend the rules under 37 CFR 11.3.
5. Petition to withdraw a Rule to Show Cause under 37 CFR 11.11(b).
1002.02(n) [Reserved]
1002.02(o) Petitions and Other Matters Decided by the Deputy Director of the USPTO [R-07.2015]
The Deputy Director of the USPTO has been delegated the authority to decide petitions to the Director of the USPTO from actions taken by the Patent Trial and Appeal Board for matters not otherwise delegated to the Chief Administrative Patent Judge, the Deputy ChiefAdministrative Patent Judge, a Vice Chief Administrative Patent Judge, or administrative patent judge(s). If there is a vacancy in the position of Deputy Director of the USPTO, decisions on these petitions will be signed by the Director of the USPTO.
Upon receipt of a petition, the entire file is to be forwarded to the Office of the Solicitor. The Solicitor is directed to promptly cause a review to be made of the petition and to prepare a draft decision for the Deputy Director or Director of the USPTO as may be appropriate. The Solicitor is authorized to take any interlocutory action, i.e., extending times for filing oppositions and seeking judicial review, obtaining agreement on facts from the parties, etc.,
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§ 1002.02(o)MATTERS DECIDED BY VARIOUS U.S. PATENT AND TRADEMARK OFFICE OFFICIALS
as may be necessary to promptly dispose of the petition.
1002.02(p) Petitions and Matters Decided by the Director of International Patent Legal Administration [R-07.2015]
1. Petitions to withdraw the Notice of Acceptance and/or filing receipt and indication of the steps necessary for completion of the national stage in a national application requesting treatment under 35 U.S.C. 371.
2. Petitions for the withdrawal of attorney or agent of record in proceedings before PCT Operations and/or International Patent Legal Administration, 37 CFR 1.36, MPEP § 402.06.
3. Petitions for access to an international application or a national application (i.e., a national stage application or a national application which is continuing from an international application) pending in PCT Operations and/or International Patent Legal Administration.
4. Requests under 37 CFR 1.26 or 1.446 for refund of fees paid in an international application or in a national application (i.e., a national stage application or a national application which is continuing from an international application) before PCT Operations and/or International Patent Legal Administration.
5. Petitions under 37 CFR 1.182 to convert a national application which was filed under 35 U.S.C. 371 to an application filed under 35 U.S.C. 111(a) or to convert a national application which was filed under 35 U.S.C. 111(a) to an application filed under 35 U.S.C. 371.
6. Petitions under 37 CFR 1.181 to withdraw the holding of abandonment where the holding was made in PCT Operations or in International Patent Legal Administration.
7. Petitions under 37 CFR 1.181 to invoke the supervisory authority of the Director of the USPTO in circumstances arising in PCT Operations and/or International Patent Legal Administration other than the circumstances set forth in paragraph 6, above.
8. Petitions under 37 CFR 1.137 (unintentional delay) to revive an application filed under the Patent Cooperation Treaty (PCT).
9. Petitions under pre-AIA 37 CFR 1.47 or a submission under pre-AIA 37 CFR 1.42 to accept the signature in a national stage application on behalf of an applicant.
10. Requests under 37 CFR 1.48 or a submission under 37 CFR 1.28 (change of inventorship and small entity status, respectively) in a national stage application prior to entry into the national stage.
11. Petitions under 37 CFR 1.182 or 1.183 filed in an international application relating to filing date matters, drawing problems, priority claim issues,
Priority Mail Express® problems, Chapter II Demand problems, issues relating to obvious mistakes and issues relating to withdrawal.
12. Petitions under 37 CFR 1.182 or 1.183 dealing with circumstances other than those set forth in paragraph 11, but relating to issues under the PCT.
13. Decisions withdrawing an examiner’s office action in an application where the application is not in compliance with the provisions of the PCT, U.S. Law or the Regulations.
14. Requests under PCT Rule 26 bis.3, 37 CFR 1.55, or 37 CFR 1.78 to restore the right of priority or domestic benefit in an international application filed under the PCT, a national stage application under 35 U.S.C. 371, or in an application which claims the benefit of or priority to an international application filed under the PCT.
15. Petitions for the acceptance of a delayed priority claim under 37 CFR 1.55 filed in a national stage application under 35 U.S.C. 371 or in an application which claims the benefit of or priority to an international application filed under the PCT.
16. Petitions for the acceptance of a delayed domestic benefit claim under 37 CFR 1.78 filed in a national stage application under 35 U.S.C. 371 or in an application which claims the benefit of or
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priority to an international application filed under the PCT.
17. Petitions dealing with PCT related issues in an application filed under 35 U.S.C. 111(a) (such as applications where there is a potential claim for benefit under 35 U.S.C. 365).
18. Petitions for extensions of time under 37 CFR 1.136(b) in applications before the International Patent Legal Administration.
19. Petitions relating to international applications filed under the Patent Cooperation Treaty not otherwise provided for.
20. Requests for participation in a Patent Prosecution Highway program (www.uspto.gov/ patents/init_events/pph/index.jsp).
21. Petitions to Make Special in accordance with international agreements with foreign patent offices.
1002.02(q) Petitions and Requests Decided by the Director of Office of Patent Application Processing (OPAP) [R-07.2015]
1. Requests under 37 CFR 1.48 filed on or after September 16, 2012 to correct inventorship in a nonprovisional application.
2. Requests under 37 CFR 1.48(d) to add the name of an inventor in a provisional application.
3. Requests under 37 CFR 1.48(e) to delete the name of the person erroneously named as an inventor in a provisional application.
4. Petitions to convert a nonprovisional application filed under 37 CFR 1.53(b) to a provisional application under 37 CFR 1.53(c) where the nonprovisional application is before the Office of Initial Patent Examination or where the nonprovisional application is before the Office of Patent Application Processing.
5. Requests to convert a provisional application filed under 37 CFR 1.53(c) to a nonprovisional application under 37 CFR 1.53(b) where the provisional
application is before the Office of Patent Application Processing.
6. Petitions under 37 CFR 1.182 to accept omitted page(s) or drawing(s) and be accorded a filing date as of the date of such submission, or to accept drawings for purposes of a patent application publication.
7. Petitions for extension of time under 37 CFR 1.136(b) in applications before the Office of Patent Application Processing.
8. Petitions for the withdrawal of attorney or agent of record under 37 CFR 1.36 in patent applications involved in proceedings before the Office of Patent Application Processing.
1002.02(r) Petitions Decided by the Director of Office of Data Management [R-07.2015]
1. Petitions to withdraw holding of abandonment where a notice of abandonment has been, or could have been properly mailed by the Office of Data Management.
2. Petitions for express abandonment to avoid publication of the application (should be directed to Mail Stop Express Abandonment), 37 CFR 1.138(c), MPEP § 711.01.
3. Requests for republication of an application, 37 CFR 1.221(a), MPEP § 1130.
1002.02(s) Petitions and Matters Decided in the Technology Centers [R-07.2015]
The following petitions to make patent applications special under the accelerated examination program set forth in MPEP § 708.02(a) are decided in the Technology Centers:
a. petitions filed with payment of fee under 37 CFR 1.17(h);
b. petitions filed with a statement that the invention will materially enhance the quality of the environment (37 CFR 1.102(c)(2)(i) and MPEP § 708.02, subsection III);
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c. petitions filed with a statement that the invention will materially contribute to the development or conservation of energy resources (37 CFR 1.102(c)(2)(ii) and MPEP § 708.02, subsection IV);
d. petitions filed with a statement that the invention will materially contribute to countering terrorism (37 CFR 1.102(c)(2)(iii) and MPEP § 708.02, subsection V); or
e. petitions filed for reasons not otherwise provided for.
1003 Matters Submitted to Technology Center Directors [R-07.2015]
The following is a list of matters which are submitted to the appropriate Technology Center Director, together with a reference to any section of this manual where such matters are more fully treated.
1. Requests for a Certificate of Correction in which the:
a. request raises a novel issue or about which there is some question;
b. request is for a patent known to be in litigation; or
c. request deals with a legal matter (e.g., the insertion of foreign priority data or cross referencing to prior U.S. patent applications) unless the file reflects that the examiner has already ruled on the matter and that failure to print the material was clearly an Office error, in which case it will be handled by the Certificate of Corrections Branch.
2. Return of papers entered in the file wrapper. See MPEP § 719.01.
3. Certain rejections on double patenting of divisional (or parent) case when restriction or election of species has previously been required, MPEP § 804.04.
4. Request for patentability report, MPEP § 705.01(e).
5. Actions which hold claims unpatentable on grounds of rejection that would also be applicable to corresponding claims in a patent.
6. Interferences between applications neither of which is in condition for allowance.
7. Letters requesting jurisdiction from the Patent Trial and Appeal Board of applications involved in appeal or interference.
8. Letters to an applicant suggesting claims for purposes of interference, the adoption of which by the applicant would result in the withdrawal of an application from issue, MPEP § 2304.02.
9. Examiner’s answers containing a new interpretation of law. See MPEP § 1207.02.
10. Proposed interferences between applications whose effective filing dates differ by more than 6 months. See MPEP § 2302.
11. Protests filed against issuance of a patent. See MPEP § 1901.06.
12. Letters suggesting claims to an application in issue for purposes of interference with a patent. See MPEP § 2304.04.
13. Requests by the examiner to the Patent Trial and Appeal Board for reconsideration of a decision before forwarding to the Office of the Deputy Commissioner for Patent Examination Policy, MPEP § 1214.04.
14. Second or subsequent suspension of action in patent application under 37 CFR 1.103 on examiner’s initiative. MPEP § 709.
15. Request by the examiner to withdraw an application from issue, MPEP § 1308.01.
16. An unusual fact situation in a patent that establishes:
a. there is a “compelling reason” to order reexamination, and
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b. at least one claim in the patent is prima facie unpatentable over prior patents and/or printed publications. See 37 CFR 1.520, MPEP § 2239.
17. Applications containing examiner’s answers lacking the appropriate indication that an appeal conference was held. See MPEP § 1207.01.
All unusual questions of practice may be referred to the Technology Center Directors.
1004 Actions Which Require the Attention of a Primary Examiner [R-07.2015]
Existing practice requires the primary examiner to be personally responsible for the following actions:
1. Allowances (MPEP § 1302.13).
2. Examiner’s amendments (MPEP § 1302.04).
3. Quayle actions (MPEP § 714.14).
4. Final rejections (MPEP § 706.07).
5. Final Office actions containing a final requirement for restriction (MPEP § 803.01).
6. Withdrawal of final rejection (MPEP §§ 706.07(d) and 706.07(e)).
7. Actions on amendments submitted after final rejection (MPEP § 714.12).
8. All examiner’s answers on appeal (MPEP § 1207).
9.Actions reopening prosecution (MPEP § 1214.07).
10. Entry of amendments under 37 CFR 1.312 that are directed merely to formal matters or the cancellation of claims (MPEP § 714.16).
11. Rejection of a previously allowed claim (MPEP § 706.04).
12. Holding of abandonment for insufficient reply (MPEP § 711.03(a)).
13. Decision on affidavits or declarations (for example, under 37 CFR 1.130(a) (MPEP § 717.01(a) et seq. ), 37 CFR 1.130(b) (MPEP § 717.01(b) et
seq. ), 37 CFR 1.131(a) (MPEP § 715.08), 37 CFR 1.131(c) (MPEP § 718), or 37 CFR 1.132 (MPEP § 716)).
14. First request for suspension of examiner’s action (MPEP § 709).
15. Decision on reissue oath or declaration (MPEP § 1414).
16. International Preliminary Examination Reports (MPEP § 1879).
17. Classification of allowed cases (MPEP § 903.07).
18. Treatment of newly filed application which obviously fails to comply with 35 U.S.C. 112 (MPEP § 702.01).
19. Consideration of the advisability of a patentability report (MPEP § 705.01(a)).
20. Requests filed prior to September 16, 2012 under 37 CFR 1.48 for correction of inventorship or to accept amendments, statements, or oaths or declarations under 37 CFR 1.48 (MPEP § 602.01(c)(3)).
21. Actions suggesting claims for interference purposes (MPEP §§ 2304.04, 2304.04(b)). Note that the examiner should consult with a Technology Center Practice Specialist (TCPS), MPEP § 2304.04.
22. Actions involving copied patent claims (MPEP § 2304.04(b).
23. Suggesting an interference (MPEP § 2304.04).
24. Calling Administrative Patent Judge’s attention to a discovered reference which makes a claim corresponding to a count unpatentable.
For matters decided by supervisory patent examiners, see MPEP § 1002.02(d).
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§ 1004MATTERS DECIDED BY VARIOUS U.S. PATENT AND TRADEMARK OFFICE OFFICIALS
For a list of actions that are to be submitted to the Technology Center Directors, see MPEP §§ 1002.02(c) and 1003.
1005 Exceptions to Partial Signatory Authority [R-07.2015]
Examiners who are delegated partial signatory authority are expected to sign their own actions with the exception of the following actions which require the signature of a primary examiner, Technology Center Director, or practice specialist:
1. Allowances (MPEP § 1302.13).
2. Examiner's amendments (MPEP § 1302.04).
3. Quayle actions (MPEP § 714.14).
4. Final rejections (MPEP §§ 706.07 and 803.01).
5. Withdrawal of final rejection (MPEP §§ 706.07(d) and 706.07(e)).
6. Actions on amendments submitted after final rejection (MPEP § 714.12).
7. Examiner’s answers on appeal (MPEP § 1207).
8.Actions reopening prosecution (MPEP § 1214.07).
9. Requests for withdrawal from issue (MPEP § 1308).
10. 37 CFR 1.312 amendments (MPEP § 714.16).
11. Rejection of previously allowed claim (MPEP § 706.04).
12. Final holding of abandonment for insufficient reply (MPEP § 711.03(a)).
13. Actions based on affidavit or declaration evidence (for example, under 37 CFR 1.130(a) (MPEP § 717.01(a) et seq. ), 37 CFR 1.130(b) (MPEP § 717.01(b) et seq. ), 37 CFR 1.131(a) (MPEP § 715.08), 37 CFR 1.131(c) (MPEP § 718), or 37 CFR 1.132 (MPEP § 716)).
14. Suspension of examiner’s action (MPEP § 709).
15. Reissue applications (e.g., decisions on reissue oath or declaration, MPEP § 1444).
16. Requests for an extension of time under 37 CFR 1.136(b), (MPEP § 710.02(e)).
17. Reexamination proceedings (MPEP § 2236).
18. International Preliminary Examination Reports (MPEP § 1879).
19. Actions suggesting claims for interference purposes (MPEP §§ 2304.04, 2304.04(b)).
20. Suggesting an interference (MPEP § 2302).
21. Actions involving copied patent claims (MPEP § 2304.04(b).
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1005
Chapter 1100 Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions
Request for Statutory Invention Registration (SIR)
1101
[Reserved]1102 -1110
SIR Publication and Effect1111 [Reserved]1112
-1119 Eighteen-Month Publication of Patent Applications
1120
Content of a Patent Application Publication
1121
Requests for Nonpublication1122 Rescission of a Nonpublication Request1123 Notice of Foreign Filing1124 Express Abandonment to Avoid Publication
1125
Publication Fees1126 Notice of Publication1127 Availability of Published Applications1128 Request for Early Publication1129 Republication and Correction of Patent Application Publications
1130
[Reserved]1131 Requests for Redacted Publication1132 Voluntary Publication1133 Third Party Inquiries and Correspondence in a Published Application
1134
Third Party Submissions Under 37 CFR 1.290
1134.01
PGPub Forms1135
1101 Request for Statutory Invention Registration (SIR) [R-11.2013]
Only requests for a statutory invention registration filed prior to March 16, 2013 are timely. Requests for a statutory invention registration filed on or after March 16, 2013 will not be treated as the provisions of pre-AIA 35 U.S.C. 157 were repealed on March 16, 2013, effective for any request filed on or after that date. See §3(e) of the America Invents Act. Guidance on requests filed before March 16, 2013 may be found in the ninth revision of the Eighth Edition of the MPEP published August 2012. The
material in former MPEP §§ 1103-1109 is not repeated in this edition of the MPEP.
1102 -1110 [Reserved]
1111 SIR Publication and Effect [R-11.2013]
(pre-2013-03-16) 37 CFR 1.297 Publication of statutory invention registration.
(a) If the request for a statutory invention registration is approved the statutory invention registration will be published. The statutory invention registration will be mailed to the requester at the correspondence address as provided for in § 1.33(a). A notice of the publication of each statutory invention registration will be published in the Official Gazette.
(b) Each statutory invention registration published will include a statement relating to the attributes of a statutory invention registration. The statement will read as follows:
A statutory invention registration is not a patent. It has the defensive attributes of a patent but does not have the enforceable attributes of a patent. No article or advertisement or the like may use the term patent, or any term suggestive of a patent, when referring to a statutory invention registration. For more specific information on the rights associated with a statutory invention registration see 35 U.S.C. 157.
Published SIRs are sequentially numbered in a separate “H” series, starting with number “H1”. For a description of the “kind codes” used on other documents published by the U.S. Patent and Trademark Office, see MPEP § 901.04(a).
In accordance with pre-AIA 35 U.S.C. 157(c) , a published SIR will be treated the same as a U.S. patent for all defensive purposes, usable as a reference as of its filing date in the same manner as a patent. A SIR is a “constructive reduction to practice” under pre-AIA 35 U.S.C. 102(g) and “prior art” under all applicable sections of 35 U.S.C. 102 including 35 U.S.C. 102(a)(2) and pre-AIA 35 U.S.C. 102(e). SIRs are classified, cross-referenced, and placed in the search files, disseminated to foreign patent offices, stored in U.S. Patent and Trademark Office computer data bases, made available in commercial data bases, and announced in the Official Gazette.
Rev. 07.2015, October 20151100-1
The waiver of patent rights to the subject matter claimed in a statutory invention registration takes effect on publication ( pre-AIA 37 CFR 1.293(c)) and may affect the patentability of claims in related applications without SIR requests, such as divisional or other continuing applications, since the waiver of patent rights is effective for all inventions claimed in the SIR and would effectively waive the right of the inventor to obtain a patent on the invention claimed in the same application or on the same invention claimed in any other application not issued before the publication date of the SIR. If an application containing generic claims is published as a SIR, the waiver in that application applies to any other related applications to the extent that the same invention claimed in the SIR is claimed in the other application. Examiners should apply standards similar to those applied in making “same invention” double patenting determinations to determine whether a waiver by an inventor to claims in a SIR precludes patenting by the same inventor to subject matter in any related application. If the same subject matter is claimed in an application and in a published statutory invention registration naming a common inventor, the claims in the application should be rejected as being precluded by the waiver in the statutory invention registration. A rejection as being precluded by a waiver in a SIR cannot be overcome by a terminal disclaimer.
The holder of a SIR will not be able to file a reissue application to recapture the rights, including the right to exclude others from making, using, selling, offering to sell, or importing the invention, that were waived by the initial publication of the SIR.
1112 -1119 [Reserved]
1120 Eighteen-Month Publication of Patent Applications [R-07.2015]
35 U.S.C. 122 Confidential status of applications; publication of patent applications.
*****
(b) PUBLICATION.—
(1) IN GENERAL.—
(A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures
determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.
(B) No information concerning published patent applications shall be made available to the public except as the Director determines.
(C) Notwithstanding any other provision of law, a determination by the Director to release or not to release information concerning a published patent application shall be final and nonreviewable.
(2) EXCEPTIONS.—
(A) An application shall not be published if that application is—
(i) no longer pending;
(ii) subject to a secrecy order under section 181 ;
(iii) a provisional application filed under section 111(b); or
(iv) an application for a design patent filed under chapter 16.
*****
37 CFR 1.211 Publication of applications.
(a) Each U.S. national application for patent filed in the Office under 35 U.S.C. 111(a) and each international application in compliance with 35 U.S.C. 371 will be published promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under title 35, United States Code, unless:
(1) The application is recognized by the Office as no longer pending;
(2) The application is national security classified (see § 5.2), subject to a secrecy order under 35 U.S.C. 181, or under national security review;
(3) The application has issued as a patent in sufficient time to be removed from the publication process; or
(4) The application was filed with a nonpublication request in compliance with § 1.213(a).
(b) Provisional applications under 35 U.S.C. 111(b)shall not be published, and design applications under 35 U.S.C. chapter 16, international design applications under 35 U.S.C. chapter 38, and reissue applications under 35 U.S.C. chapter 25 shall not be published under this section.
(c) An application filed under 35 U.S.C. 111(a) will not be published until it includes the basic filing fee (§ 1.16(a) or § 1.16(c)) and any English translation required by § 1.52(d). The Office may delay publishing any application until it includes any application size fee required by the Office under § 1.16(s) or § 1.492(j), a specification having papers in compliance with
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1112 -1119
§ 1.52 and an abstract ( § 1.72(b)), drawings in compliance with § 1.84, a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), and the inventor's oath or declaration or application data sheet containing the information specified in § 1.63(b).
(d) The Office may refuse to publish an application, or to include a portion of an application in the patent application publication (§ 1.215), if publication of the application or portion thereof would violate Federal or state law, or if the application or portion thereof contains offensive or disparaging material.
(e) The publication fee set forth in § 1.18(d) must be paid in each application published under this section before the patent will be granted. If an application is subject to publication under this section, the sum specified in the notice of allowance under § 1.311 will also include the publication fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable. If the application is not published under this section, the publication fee (if paid) will be refunded.
Pre-AIA 37 CFR 1.211 Publication of applications
(a) Each U.S. national application for patent filed in the Office under 35 U.S.C. 111(a) and each international application in compliance with 35 U.S.C. 371 will be published promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under title 35, United States Code, unless:
(1) The application is recognized by the Office as no longer pending;
(2) The application is national security classified (see § 5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under national security review;
(3) The application has issued as a patent in sufficient time to be removed from the publication process; or
(4) The application was filed with a nonpublication request in compliance with § 1.213(a).
(b) Provisional applications under 35 U.S.C. 111(b)shall not be published, and design applications under 35 U.S.C. chapter 16 and reissue applications under 35 U.S.C. chapter 25 shall not be published under this section.
(c) An application filed under 35 U.S.C. 111(a) will not be published until it includes the basic filing fee (§ 1.16(a) or 1.16(c)), any English translation required by § 1.52(d), and an executed oath or declaration under § 1.63. The Office may delay publishing any application until it includes any application size fee required by the Office under § 1.16(s) or § 1.492(j), a specification having papers in compliance with § 1.52 and an abstract (§ 1.72(b)), drawings in compliance with § 1.84, and a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), and until any petition under § 1.47 is granted.
(d) The Office may refuse to publish an application, or to include a portion of an application in the patent application publication (§ 1.215), if publication of the application or portion thereof would violate Federal or state law, or if the application or portion thereof contains offensive or disparaging material.
(e) The publication fee set forth in § 1.18(d) must be paid in each application published under this section before the patent will be granted. If an application is subject to publication under this section, the sum specified in the notice of allowance under § 1.311 will also include the publication fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable. If the application is not published under this section, the publication fee (if paid) will be refunded.
For applications filed on or after September 16, 2012, 37 CFR 1.211(c) does not require an executed oath or declaration for publication of the application since applicants may postpone filing the inventor’s oath or declaration until payment of the issue fee. The Office may delay publishing any application until it includes the inventor’s oath or declaration or application data sheet containing the information specified in 37 CFR 1.63(b).
I. IN GENERAL
With certain exceptions, nonprovisional utility and plant applications for patent filed on or after November 29, 2000 are published promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under title 35, United States Code (eighteen-month publication or pre-grant publication (PGPub)). See 35 U.S.C. 122(b). The Office will generally publish:
(A) utility and plant applications filed under 35 U.S.C. 111(a) on or after November 29, 2000; and
(B) nonprovisional applications which entered the national stage after compliance with 35 U.S.C. 371 from an international application under 35 U.S.C. 363 filed on or after November 29, 2000 (regardless of whether the international application has been published by the International Bureau (IB) under PCT Article 21 in English).
The Office will not publish the following applications under 35 U.S.C. 122(b):
(A) Provisional applications filed under 35 U.S.C. 111(b)(for more information see subsection II. EXCEPTIONS below);
(B) Design applications filed under 35 U.S.C. 171;
(C) International design applications filed under 35 U.S.C. 385 ; and
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§ 1120STATUTORY INVENTION REGISTRATION (SIR); PRE-GRANT PUBLICATION (PGPUB) AND PREISSUANCE SUBMISSIONS
(D) Reissue applications filed under 35 U.S.C. 251 (because reissue applications are not kept confidential under 35 U.S.C. 122(a)).
Applications will be published after the expiration of a period of eighteen months from the earliest of: (1) the U.S. filing date; (2) the international filing date; or (3) the filing date of an earlier application for which a benefit is sought under 35 U.S.C. 119, 120, 121, or 365. Applicants are encouraged to timely submit any desired priority and benefit claims to ensure that their applications will be published on time and to avoid the need to file a petition to accept unintentionally delayed priority or benefit claims under 37 CFR 1.55 or 1.78 and the surcharge set forth in 37 CFR 1.17(t). See MPEP § 211.04 and 214.02. Applications are normally published based on the application as filed and certain amendments. See MPEP § 1121. A proper continued prosecution application (CPA) for utility or plant patent filed on or after November 29, 2000 will be published based upon the application papers deposited on the filing date of the first prior application. (Note: CPA practice has been eliminated as to utility and plant applications effective July 14, 2003. See MPEP § 201.06(d). Since a request for continued examination (RCE) under 37 CFR 1.114 is not the filing of a new application, filing an RCE will not cause an application filed before November 29, 2000 to be published. The Office will not mail a paper copy of the patent application publication to the applicant, but will mail a notice to the applicant indicating that the application has been published. See MPEP § 1127. Patent application publications are available on the USPTO website (www.uspto.gov).
II. EXCEPTIONS
An application will not be published if one of the following exceptions as set forth in 37 CFR 1.211 applies:
(A) The application is recognized by the Office as no longer pending; for information on express abandonment to avoid publication see 37 CFR 1.138(c) and MPEP § 1125;
(B) The application is national security classified (see 37 CFR 5.2(c), subject to a secrecy order under 35 U.S.C. 181, or under national security review;
(C) The application has issued as a patent in sufficient time to be removed from the publication process; or
(D) The application was filed with a nonpublication request in compliance with 37 CFR 1.213(a). See MPEP § 1122-1124.
The Office will not publish applications that are recognized as no longer pending. See 37 CFR 1.211(a)(1). An application is not “recognized by the Office as no longer pending” when the period for reply (either the shortened statutory period for reply or the maximum extendable period for reply) to an Office action has expired, but the Office has not yet entered the change of status (to abandoned) of the application in the Office’s Patent Application Locating and Monitoring (PALM) system and mailed a notice of abandonment. An application will remain in the publication process until the PALM system indicates that the application is abandoned. Once the PALM system indicates that an application is abandoned, the Office will attempt to remove the application from the publication process and avoid dissemination of the application information.
Unless an applicant has received a notice of abandonment at least 4 weeks prior to the projected publication date, an applicant who wants to abandon the application to avoid publication must file a petition under 37 CFR 1.138(c) to expressly abandon the application and avoid publication. See MPEP § 1125. An applicant who seeks to avoid publication by permitting an application to become abandoned (for failure to reply to an Office action) and passively waiting for the Office to recognize that the application has become abandoned bears the risk that the Office will not recognize that the application has become abandoned and change the status of the application in the PALM system in sufficient time to avoid publication.
The Office will not publish applications that have issued as patents in sufficient time to be removed from the publication process. See 37 CFR 1.211(a)(3). If the pre-grant publication process coincides with the patent issue process, the Office will continue with the pre-grant publication process until a patent actually issues. This is because there are many instances in which the Office mails a notice of allowance in an application but the application
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1120
does not issue as a patent in regular course (e.g., abandonment due to failure to pay the issue fee, or withdrawal from issue). Therefore, the Office will not discontinue the pre-grant publication process until a patent has actually issued. Since the Office cannot discontinue the pre-grant publication process during the last two to four weeks of the publication process, this will result in a few applications being issued as patents and subsequently being published as patent application publications.
The Office may refuse to publish an application, or to include a portion of an application in the publication, if publication of the application or portion thereof would violate Federal or state law, or if the application or portion thereof contains offensive or disparaging material. See 37 CFR 1.211(d). The Office may require a substitute specification to delete the portion of the application that would violate Federal or state law, or that contains offensive or disparaging material.
Converting a nonprovisional application to a provisional application will not avoid the publication of the nonprovisional application unless the request to convert is recognized in sufficient time to permit the appropriate officials to remove the nonprovisional application from the publication process. The Office cannot ensure that it can remove an application from the publication process or avoid publication of application information any time after the publication process for the application has been initiated. Technical preparations for publication of an application generally begin four months prior to the projected publication date. The projected publication date is indicated on the filing receipt for the patent application.
III. APPLICATION MUST BE COMPLETE
In accordance with 37 CFR 1.211(c), publication will not occur or will be delayed in certain circumstances. The Office will not publish an application until the application includes:
(A) the basic filing fee; and
(B) an English translation if the application is in a language other than English.
The Office may delay publication until the application includes:
(A) any application size fee required by the Office under 37 CFR 1.16(s) or 37 CFR 1.492(j);
(B) a specification in compliance with 37 CFR 1.52;
(C) an abstract in compliance with 37 CFR 1.72(b);
(D) drawings (if any) in compliance with 37 CFR 1.84;
(E) a sequence listing in compliance with 37 CFR 1.821 through 1.825 (if applicable); and.
(F) an executed oath or declaration under 37 CFR 1.63 and/or an application data sheet for application filed on or after September 16, 2012.
The Office may also delay publication until any petition under 37 CFR 1.47 is granted for applications filed prior to September 16, 2012.
If an application does not contain the content specified in 37 CFR 1.211(c) and papers or drawings of sufficient quality to create a patent application publication by eighteen months from the earliest filing date for which benefit is claimed, the Office will publish the application as soon as practical after these deficiencies are corrected. For example, publication of the patent application publication may be delayed if the application papers submitted on the filing date of the application do not include the content needed (e.g., an abstract, or an executed oath or declaration, and/or an application data sheet for applications filed on or after September 16, 2012) or the specification (including claims) or drawings are not of sufficient quality to be used to create a patent application publication. In such a situation, the Office will issue a preexamination notice requiring a substitute specification or replacement drawings. The applicant’s reply (e.g., substitute specification or replacement drawings) to the notice will be used for creating the patent application publication. If the application on filing includes papers that are of sufficient quality to create the publication, the Office will publish the application using the originally filed application papers.
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§ 1120STATUTORY INVENTION REGISTRATION (SIR); PRE-GRANT PUBLICATION (PGPUB) AND PREISSUANCE SUBMISSIONS
Applicants who attempt to delay publication by intentionally delaying the submission of the application content necessary for publication may encounter a reduction in any patent term adjustment under 35 U.S.C. 154(b). See 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b).
IV. PROJECTED PUBLICATION DATE
Once the application is complete, the Office will provide applicants the projected publication date of the application on a filing receipt. The projected publication date normally will be the later of: (1) eighteen months from the earliest filing date claimed; or (2) fourteen weeks from the mailing date of the filing receipt. The publication process takes about fourteen weeks. Publication occurs on Thursday of each week.
Applicants should carefully and promptly review their filing receipts. Applicants should promptly file a request for corrected filing receipt if the information on the filing receipt needs to be corrected. In addition, applicants should contact the Office of Data Management – Patent Publication Branch (see MPEP § 1730) if the projected publication date is incorrect or if a projected publication date has been assigned to an application that should not be published. Applicants should also promptly check any priority or benefit claims provided on the filing receipt and timely file or correct any priority or benefit claims if the filing receipt does not include the desired claims or includes incorrect claims. If the information is incorrect, Applicants should promptly file a request for corrected filing receipt to assist the Office in quickly processing the change prior to export of the application to the publisher. This will avoid the need to file a petition under 37 CFR 1.55 or 1.78 to accept unintentionally delayed claims and the surcharge under 37 CFR 1.17(t). See MPEP § 211.04 and 214.02. Furthermore, if the corrections are not recognized by the Office of Data Management – Patent Publication Branch before the technical preparation for publication has begun, the Office
cannot change the projected publication date and include the corrections in the publication.
1121 Content of a Patent Application Publication [R-07.2015]
37 CFR 1.215 Patent Application Publication
(a) The publication of an application under 35 U.S.C. 122(b) shall include a patent application publication. The date of publication shall be indicated on the patent application publication. The patent application publication will be based upon the specification and drawings deposited on the filing date of the application, as well as the application data sheet and/or the inventor's oath or declaration. The patent application publication may also be based upon amendments to the specification (other than the abstract or the claims) that are reflected in a substitute specification under § 1.125(b), amendments to the abstract under § 1.121(b), amendments to the claims that are reflected in a complete claim listing under § 1.121(c), and amendments to the drawings under § 1.121(d), provided that such substitute specification or amendment is submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun. Technical preparations for publication of an application generally begin four months prior to the projected date of publication. The patent application publication of an application that has entered the national stage under 35 U.S.C. 371 may also include amendments made during the international stage. See paragraph (c) of this section for publication of an application based upon a copy of the application submitted via the Office electronic filing system.
(b) The patent application publication will include the name of the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter if that information is provided in the application data sheet in an application filed under § 1.46. Assignee information may be included on the patent application publication in other applications if the assignee information is provided in an application data sheet submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun. Providing assignee information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
(c) At applicant's option, the patent application publication will be based upon the copy of the application (specification, drawings, and the application data sheet and/or the inventor's oath or declaration) as amended, provided that applicant supplies such a copy in compliance with the Office electronic filing system requirements within one month of the mailing date of the first Office communication that includes a confirmation number for the application, or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later.
(d) If the copy of the application submitted pursuant to paragraph (c) of this section does not comply with the Office electronic filing system requirements, the Office will publish
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1121
the application as provided in paragraph (a) of this section. If, however, the Office has not started the publication process, the Office may use an untimely filed copy of the application supplied by the applicant under paragraph (c) of this section in creating the patent application publication.
Pre-AIA 37 CFR 1.215 Patent application publication
(a) The publication of an application under 35 U.S.C. 122(b) shall include a patent application publication. The date of publication shall be indicated on the patent application publication. The patent application publication will be based upon the specification and drawings deposited on the filing date of the application, as well as the executed oath or declaration submitted to complete the application. The patent application publication may also be based upon amendments to the specification (other than the abstract or the claims) that are reflected in a substitute specification under 37 CFR 1.125(b), amendments to the abstract under 37 CFR 1.121(b), amendments to the claims that are reflected in a complete claim listing under § 1.121(c), and amendments to the drawings under 37 CFR 1.121(d), provided that such substitute specification or amendment is submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun. Technical preparations for publication of an application generally begin four months prior to the projected date of publication. The patent application publication of an application that has entered the national stage under 35 U.S.C. 371 may also include amendments made during the international stage. See paragraph (c) of this section for publication of an application based upon a copy of the application submitted via the Office electronic filing system.
(b) If applicant wants the patent application publication to include assignee information, the applicant must include the assignee information on the application transmittal sheet or the application data sheet (§ 1.76). Assignee information may not be included on the patent application publication unless this information is provided on the application transmittal sheet or application data sheet included with the application on filing. Providing this information on the application transmittal sheet or the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
(c) At applicant’s option, the patent application publication will be based upon the copy of the application (specification, drawings, and oath or declaration) as amended, provided that applicant supplies such a copy in compliance with the Office electronic filing system requirements within one month of the mailing date of the first Office communication that includes a confirmation number for the application, or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later.
(d) If the copy of the application submitted pursuant to paragraph (c) of this section does not comply with the Office electronic filing system requirements, the Office will publish the application as provided in paragraph (a) of this section. If, however, the Office has not started the publication process, the Office may use an untimely filed copy of the application supplied by the applicant under paragraph (c) of this section in creating the patent application publication.
A patent application publication includes a front page containing information similar to that contained on the front page of a patent, the drawings (if any), and the specification (including claims). The patent application publication will generally be based upon the following:
(A) The patent application papers and drawings deposited on the filing date of the application;
(B) The executed oath or declaration submitted to complete the application and/or application data sheet for applications filed on or after September 16, 2012; and
(C) Any subsequently filed application papers and drawings submitted in reply to a preexamination notice requiring a title and abstract in compliance with 37 CFR 1.72, application papers in compliance with 37 CFR 1.52, drawings in compliance with 37 CFR 1.84, or a sequence listing in compliance with 37 CFR 1.821 through 1.825; and
I. AMENDMENTS
The patent application publication may also be based upon amendments that expedite the publication process, provided that such amendments are submitted in sufficient time to be entered into the application file before technical preparations for publication of the application have begun (generally four months prior to the projected publication date). While the Office will attempt to use the amendments submitted by applicants, applicants are not entitled to have the amendments used in the publication. For example, the patent application publication may also be based upon the following amendments because they are in formats useable for publication:
(A) Amendments to the specification that are reflected in a substitute specification under 37 CFR 1.125(b);
(B) An amendment to the abstract under 37 CFR 1.121(b);
(C) Amendments to the claims that are reflected in a complete claim listing under 37 CFR 1.121(c); and
(D) Amendments to drawings under 37 CFR 1.121(d).
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§ 1121STATUTORY INVENTION REGISTRATION (SIR); PRE-GRANT PUBLICATION (PGPUB) AND PREISSUANCE SUBMISSIONS
The patent application publication of an application that has entered the national stage under 35 U.S.C. 371 may also include amendments made during the international stage, such as: amendments under Article 34 and 19; rectifications; corrections of physical defects under PCT Rule 26; and an abstract rewritten by the International Searching Authority.
If an applicant wants the publication to include drawings other than those submitted with the application as filed (e.g., better quality or amended drawings), applicant may file the replacement drawings in sufficient time to be entered into the application file before four months prior to the projected publication date. The Office cannot guarantee that the latest amendment or any particular amendment will be included in the patent application publication. If applicant wishes to have the patent application publication be based upon a copy of the application (specification, drawings and oath or declaration) as amended, applicant must supply such a copy via the electronic filing system (EFS), e.g., set forth in the EFS-Web Legal Framework within one month of the mailing date of the first Office correspondence (e.g., filing receipt) including a confirmation number for the application or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later (see 37 CFR 1.215(c) and Assignment of Confirmation Number and Time Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication Purposes, 1241 Off. Gaz. Pat. Office 97 (December 12, 2000)). See also III. AMENDED APPLICATION FILED VIA EFS, below. The Office will use the electronic copy provided by the applicant to create the publication. A proper continued prosecution application (CPA) filed on or after November 29, 2000 (but before July 14, 2003) will be published based upon the application papers deposited on the filing date of the first prior application.
Applicants may review the bibliographic information contained in the Office’s database, and application papers that have been scanned into the Image File Wrapper system, via the Office’s Patent Application Information Retrieval (PAIR) system. Applicants should bring any errors to the Office’s attention before technical preparations for publication of the
application have begun (generally four months prior to the projected publication date).
Long nucleotide and/or amino acid sequences or large numbers of such sequences are very difficult for the Office to publish as part of patent application publications. Therefore, long sequence listings will only be published in electronic form on the USPTO sequence homepage (http://seqdata.uspto.gov) as an ASCII text file. The patent application publication will include a statement that the application contains a lengthy sequence listing section and a hyperlink to the Web page containing the sequence listing. See Notice of Change in Publishing of Patents and
Patent Application Publications With Sequence Listings, 1250 Off. Gaz. Pat. Office 70 (September 11, 2001).
A. Avoid Filing Preliminary Amendments
Applicants should not file any preliminary amendment with the application. Submitting applications without any accompanying preliminary amendment reduces the processing required of the Office, and will help to ensure that patent application publications are printed correctly.
A preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application under 37 CFR 1.115(a)(1). The Office will include such a preliminary amendment that is present on the filing date of the application in the patent application publication. If the preliminary amendment that is present on the filing date of the application is not in a format that is useable for publication, the Office will issue a notice requiring the applicant to submit the amendment in a format useable for publication. Generally, a substitute specification (excluding claims) is required for any preliminary amendments to the specification (other than the claims) that are present on the filing date of the application. Even though a substitute specification is a useable format for publication, applicant should not file a substitute specification with the application because the application size fee will be calculated based on the application papers including the clean version and marked-up version of the substitute specification.
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To avoid submitting preliminary amendments, applicants should incorporate any desired amendments into the text of the specification including a new set of claims, even where the application is a continuation or divisional application of a previously-filed patent application. In such a continuation or divisional application, a new specification (e.g., reflecting amendments made in the parent application) may be submitted together with a copy of the oath or declaration from the previously filed application so long as no new matter is included in the specification. See 37 CFR 1.63(d)(1)(iii). The specific reference to the prior application required by 35 U.S.C. 119(e) or 120 and 37 CFR 1.78(a) in applications filed before September 16, 2012 can be submitted in an application data sheet (ADS) rather than in a preliminary amendment to the first sentence(s) of the specification. Such references in applications filed on or after September 16, 2012 may only be made in an ADS. If the specific reference is submitted in a preliminary amendment, however, a substitute specification will not be required if the preliminary amendment only adds or amends a benefit claim.
B. Requests for Republication to Correct Errors
Applications with poor quality text, which may be acceptable for scanning and examination purposes, may lead to errors in the patent application publication. Correction of these errors and inclusion of any desired amendments into the text of the originally-filed specification and drawings will only occur if applicant files a request for republication under 37 CFR 1.221(a). They will not be corrected by the Office in a corrected publication under 37 CFR 1.221(b). See MPEP § 1130.
II. APPENDICES
Appendices, other than those containing sequence listings or certain tables, are not printed if they are contained on pages located after the claims. If the application includes multiple claim sets in the specification, the Office may treat pages located after the first set of claims as appendices. Note that computer program listings may be printed if they are included in the specification before the claims, but that computer program listings that are provided
on compact disc in accordance with 37 CFR 1.96(c) and 37 CFR 1.52(e) are not printed as part of the patent or patent application publication.
III. AMENDED APPLICATION FILED VIA EFS
At applicant’s option, a patent application publication may be based upon a copy of the application (specification, drawings and oath or declaration) as amended, provided that applicant supplies such a copy in compliance with the Office electronic filing system (EFS) requirements, e.g. set forth in the EFS-Web Legal Framework within one month of the mailing date of the first Office communication that includes a confirmation number for the application, or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later. 37 CFR 1.215(c). If the copy of the application submitted under 37 CFR 1.215(c) does not comply with the Office EFS requirements, the Office will publish the application as provided in 37 CFR 1.215(a). If the copy of the application submitted under 37 CFR 1.215(c) was untimely, the Office may use the untimely filed copy of the application supplied by the applicant under 37 CFR 1.215(c) in creating the patent application publication so long as the copy was received before the Office has started the publication process. For further information about EFS, see the Electronic Business Center on the USPTO website (www.uspto.gov).
IV. APPLICANT INFORMATION
If a patent application is filed pursuant to 37 CFR 1.46, the patent application publication will include the name of the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. The information must be provided on the application data sheet (ADS) filed with the application. If the applicant information is corrected or updated in accordance with 37 CFR 1.46(c) after filing the application, the corrected or updated information may be used, if the information is recognized by the Office of Data Management – Patent Publication Branch before the technical preparation for the publication has begun.
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Errors in applicant information printed on the publication are not considered material mistakes by the Office under 37 CFR 1.211(b) (e.g., errors in the assignee’s name). See MPEP § 1130. Thus, these errors may only be corrected if applicant files a request for republication under 37 CFR 1.211(a).
V. ASSIGNEE INFORMATION
For applications filed on or after September 16, 2012, if the applicant would like the assignee data to be published, the assignee data must be submitted on the application data sheet (ADS). For applications filed before September 16, 2012, if the applicant would like the assignee data to be published, the information must be provided on the application transmittal letter or the application data sheet (ADS) filed with the application. Providing this information on the application transmittal letter or the application data sheet does not substitute for compliance with any requirement of 37 CFR Part 3 to have an assignment recorded by the Office. If the assignee data is recorded with the Assignment Division only, the information will not be published as part of the patent application publication.
Errors in assignee information printed on the publication are not considered material mistakes by the Office under 37 CFR 1.221(b) (e.g., errors in the assignee’s name). See MPEP § 1130. Thus, these assignment errors and applicant’s failure to include assignment data may only be corrected if applicant files a request for republication under 37 CFR 1.221(a).
1122 Requests for Nonpublication [R-07.2015]
35 U.S.C. 122 Confidential status of applications; publication of patent applications.
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(b) PUBLICATION.—
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(2) EXCEPTIONS.—
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(B)(i) If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in
another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, the application shall not be published as provided in paragraph (1).
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37 CFR 1.213 Nonpublication request.
(a) If the invention disclosed in an application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the application will not be published under 35 U.S.C. 122(b) and § 1.211 provided:
(1) A request (nonpublication request) is submitted with the application upon filing;
(2) The request states in a conspicuous manner that the application is not to be published under 35 U.S.C. 122(b);
(3) The request contains a certification that the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication at eighteen months after filing; and
(4) The request is signed in compliance with § 1.33(b).
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If the invention disclosed in an application filed under 35 U.S.C. 111(a) has not been and will not be the subject of a foreign or international application filed in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing (e.g., a counterpart PCT application), applicants may request that the application filed under 35 U.S.C. 111(a) not be published by filing a nonpublication request under 37 CFR 1.213(a). The Office will not publish an application filed under 35 U.S.C. 111(a) with a nonpublication request in compliance with the following:
(A) The request for nonpublication under 37 CFR 1.213(a) must be submitted with the application upon filing (this is a statutory requirement and cannot be waived);
(B) The request for nonpublication must state in a conspicuous manner that the application is not to be published under 35 U.S.C. 122(b) (see Form PTO/SB/35 in MPEP § 1135);
(C) The request must contain a certification that the invention disclosed in the application has not been and will not be the subject of an application
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filed in another country, or under a multilateral international agreement, that requires eighteen-month publication. Before making the certification, the person who signs the certification must make an actual inquiry to determine whether the certification under 35 U.S.C. 122(b)(2)(B)(i) and 37 CFR 1.213(a)(3) can be appropriately made (see I. REQUIREMENTS PRIOR TO FILING A NONPUBLICATION REQUEST, below); and
(D) The request is signed in compliance with 37 CFR 1.33(b).
If applicant filed a nonpublication request and later decides to file a counterpart foreign or international application in another country, or under a multilateral agreement, that requires eighteen-month publication, applicant must either: (1) rescind the nonpublication request before filing such foreign or international application; or (2) notify the Office of such filing no later than 45 days after the filing date of the counterpart foreign or international application. See MPEP §§ 1123 and 1124.
I. REQUIREMENTS PRIOR TO FILING A NONPUBLICATION REQUEST
A nonpublication request is not appropriate unless the person who is signing the nonpublication request has made an actual inquiry consistent with the requirements of 37 CFR 11.18(b) to determine that:
(A) The application under 35 U.S.C. 111(a) has not been the subject of a foreign or international application filed in another country, or under a multilateral international agreement, that requires publication of applications at eighteen months after filing ( e.g., a counterpart PCT application); and
(B) The applicant’s intent at the time the nonpublication request is being filed is that the application under 35 U.S.C. 111(a) will not be the subject of a foreign or international application filed in another country, or under a multilateral international agreement, that requires publication of applications at eighteen months after filing.
Only when both conditions are satisfied, can applicants file a nonpublication request under 37 CFR 1.213(a). A nonpublication request is not appropriate if applicants have already filed a counterpart foreign or international application in another country, or under a multilateral international
agreement, that requires publication of applications at eighteen months after filing. A nonpublication request is not proper even if the foreign or international application is abandoned before the foreign or international application is published.
A nonpublication request also is not appropriate if the applicant has not yet made a decision whether to file a counterpart application in a foreign country, or under a multilateral international agreement, that requires publication of applications at eighteen months after filing. A certification under 37 CFR 1.213(a)(3) cannot be made based on a lack of knowledge of the applicant’s plans concerning the filing of any counterpart application that would be subject to eighteen-month publication or the applicant’s past practices or tendencies with respect to the filing of foreign counterpart applications. The fact that a particular applicant has a tendency to file counterpart applications for fewer than fifty percent of its U.S. applications is not alone an adequate basis for filing all or any of the U.S. applications with a nonpublication request. The applicant must have an affirmative intent not to file a counterpart application, and not just the absence of any intent or plan concerning the filing of any counterpart application that would be subject to eighteen-month publication. A nonpublication request is only appropriate if the applicant’s intent at the time the nonpublication request is being filed is not to file a counterpart foreign or international application that would be subject to eighteen-month publication.
II. FILING A NONPUBLICATION REQUEST
Applicants should use the format set forth in form PTO/SB/35, Nonpublication Request under 35 U.S.C. 122(b)(2)(B)(i), to ensure that the certification includes the proper language required by the statute and the request is stated in a conspicuous manner. Form PTO/SB/35 is available from the USPTO website (www.uspto.gov), and is reproduced in MPEP § 1135. A nonpublication request that does not include the language required by 35 U.S.C. 122(b)(2)(B)(i) (i.e., certifying that the “invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing”) will not be accepted. A
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request for nonpublication may not be recognized unless it is conspicuous. See 37 CFR 1.213(a)(2). Providing text as one paragraph among numerous other paragraphs with no highlighting of the request for nonpublication is not conspicuous, and thus the Office’s assignment of a publication date would be appropriate.
A nonpublication request must be filed upon the filing of the application. This is a statutory requirement and cannot be waived. For example, a nonpublication request filed with a request under 37 CFR 1.53(c)(3) to convert a provisional application to a nonprovisional application will not be accepted as timely filed because the nonprovisional application would be accorded the original filing date of the provisional application if the request to convert is granted. The nonpublication request must also be included with the application papers. The nonpublication request cannot be filed separately on the same date as the filing date of the application (e.g., the nonpublication request is filed in a different
Priority Mail Express® package than the package that contains the application). If the Office mistakenly accepts an improper nonpublication request, applicants should notify the Office of Data Management – Patent Publication Branch and rescind the request immediately. See MPEP § 1730 for contact information.
When the Office recognizes the nonpublication request, the filing receipt will not include a projected publication date. If applicant includes a nonpublication request as specified by 35 U.S.C. 122(b)(2)(B)(i) and the filing receipt reflects a projected publication date, applicant should promptly contact the Office and determine whether the nonpublication request was overlooked.
III. INAPPROPRIATE NONPUBLICATION REQUEST
If prior to filing a U.S. application under 35 U.S.C. 111(a), applicants have filed a counterpart foreign or international application in a foreign country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, a nonpublication request would not be appropriate in the U.S. application. If applicants filed a nonpublication request in a U.S. application that
claims the benefit to an earlier foreign or international application, the Office will not accept the nonpublication request and will assign a projected publication date. The applicant will be notified that the certification is inconsistent with the priority claim. The notice will provide a non-extendable time period of 30 days from the mail date of the notice for applicant to provide a satisfactory explanation as to how the certification submitted is valid in light of the priority claim. If applicants fail to provide a satisfactory explanation, the Office will publish the U.S. application.
If an applicant files a PCT application, abandons the PCT application before the International Bureau publishes the PCT application, and thereafter files a corresponding U.S. application under 35 U.S.C. 111(a) with a non-publication request under 37 CFR 1.213, the nonpublication request is improper. The mere filing of the PCT application precludes the proper use of a nonpublication request, since the invention disclosed in the U.S. application was the subject of an application that was filed under an international agreement requiring publication at 18 months (the PCT application). 35 U.S.C. 122(b)(2)(B)(i) states that an application will not be published “[i]f an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, . . . .” The trigger in the statute is not whether the other application will be published, but rather the trigger is the act of filing where eighteen-month publication of patent applications is required. Abandonment of the foreign application, or the application under a multilateral international agreement, prior to foreign publication at 18-months has no bearing on the propriety of requesting nonpublication of the U.S. application.
Where a foreign or PCT application is filed first, and a U.S. application is filed thereafter with an (improper) nonpublication request, the Office will not consider the U.S. application as abandoned for having made the nonpublication request. This is because the statute only provides for an application to be regarded as abandoned when the applicant fails to notify the Office within 45 days of a subsequently
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filed application that is directed to the same subject as the invention of the U.S. application in another country, or under a multilateral international agreement, that requires eighteen-month publication of applications. 35 U.S.C. 122(b)(2)(B)(iii) does not apply to the situation where the applicant has made an improper certification subsequent to the foreign filing. A petition to revive under 37 CFR 1.137(a)/(f) is inappropriate and not necessary in the above-noted situation because the U.S. application is pending (unless the application is abandoned for other reasons). If a petition to revive under 37 CFR 1.137(a)/(f) is filed, the Office will dismiss the petition as inappropriate but retain the petition fee because the Office was required to evaluate the merits of the petition before being able to determine that the petition was not appropriate.
Applicants and their representatives should make sure that the certification is proper before signing and filing it with the Office. While applicants should rescind any improper nonpublication request as soon as possible, 35 U.S.C. 122(b)(2)(B)(i)-(iv) does not include any provision for “correction” of an improper certification. Any applicant or applicant’s representative who makes a false statement (e.g., an improper certification) may be in violation of 37 CFR 11.18(b) . In addition, false statements by registered patent practitioners may also violate other Disciplinary Rules (see 37 CFR Part 11).
While applicant cannot undo the fact that an improper certification was made, any applicant who has made such a mistake should promptly file a rescission of the nonpublication request and note that the original certification was improper.
1123 Rescission of a Nonpublication Request [R-07.2015]
35 U.S.C. 122 Confidential status of applications; publication of patent applications
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(b) PUBLICATION.—
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(2) EXCEPTIONS.—
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(B)(i) If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, the application shall not be published as provided in paragraph (1).
(ii) An applicant may rescind a request made under clause (i) at any time.
(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned.
(iv) If an applicant rescinds a request made under clause (i) or notifies the Director that an application was filed in a foreign country or under a multilateral international agreement specified in clause (i), the application shall be published in accordance with the provisions of paragraph (1) on or as soon as is practical after the date that is specified in clause (i).
(v) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign filed applications corresponding to an application filed in the Patent and Trademark Office or the description of the invention in such foreign filed applications is less extensive than the application or description of the invention in the application filed in the Patent and Trademark Office, the applicant may submit a redacted copy of the application filed in the Patent and Trademark Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding applications filed in a foreign country. The Director may only publish the redacted copy of the application unless the redacted copy of the application is not received within 16 months after the earliest effective filing date for which a benefit is sought under this title. The provisions of section 154(d) shall not apply to a claim if the description of the invention published in the redacted application filed under this clause with respect to the claim does not enable a person skilled in the art to make and use the subject matter of the claim.
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37 CFR 1.213 Nonpublication request. *****
(b) The applicant may rescind a nonpublication request at any time. A request to rescind a nonpublication request under paragraph (a) of this section must:
(1) Identify the application to which it is directed;
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(2) State in a conspicuous manner that the request that the application is not to be published under 35 U.S.C. 122(b) is rescinded; and
(3) Be signed in compliance with § 1.33(b).
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An applicant may rescind a previously-filed nonpublication request at any time. See 35 U.S.C. 122(b)(2)(B)(ii). Form PTO/SB/36 (revision April 2001 or later) may be used to both rescind a nonpublication request and provide notice of foreign filing. The form is reproduced in MPEP § 1135. If applicant makes a nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) and then rescinds the nonpublication request before or on the date a foreign or international application (hereinafter “foreign filing” or “counterpart application”) directed to the invention disclosed in the U.S. application filed under 37 CFR 1.111(a)) in the USPTO is filed in a foreign country, or under a multilateral international agreement, that requires eighteen-month publication, the nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) will be treated as annulled and the application will be treated as if the nonpublication request was never made. Thus, if applicant filed a nonpublication request and then decided to file a counterpart application, applicant must file either: (1) a request to rescind the nonpublication request before filing the counterpart application; or (2) a notice of foreign filing no later than 45 days after the filing date of the counterpart application, to avoid abandonment of the application (35 U.S.C. 122(b)(2)(B)(iii) and 37 CFR 1.213(c)).
The mere filing of a request under 37 CFR 1.213(b) to rescind the previously filed nonpublication request does not comply with the notice of foreign filing requirement of 35 U.S.C. 122(b)(2)(B)(iii) and 37 CFR 1.213(c) (for applicants who submitted a nonpublication request but before filing the request to rescind, also filed a counterpart application in another country, or under a multilateral international agreement, that requires eighteen-month publication of applications). Applicants are strongly encouraged to provide a notice of foreign filing whenever rescinding a nonpublication request in anticipation of filing a counterpart application in an eighteen-month publication country. Form PTO/SB/36 (revision April 2001 or later) provides both a rescission and notice of foreign filing. See
MPEP § 1135. No benefit can be given to a certificate of mailing or transmission under 37 CFR 1.8 on a request to rescind a nonpublication request in determining whether there has been a rescission of a nonpublication request before or on the date a counterpart application is filed in an eighteen-month publication country. A rescission of a nonpublication request is not a paper required to be filed in the USPTO as provided for in 37 CFR 1.8(a). Thus, the provisions of 37 CFR 1.8 by their terms do not apply in this situation, and the USPTO must use the actual date of receipt in the USPTO as defined in 37 CFR 1.6 as the date of the rescission to determine whether the nonpublication request has been rescinded before or on the date of the filing of a counterpart application such that the application may be considered an application in which no nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) was made. Since a notice of foreign filing is required by the statute and 37 CFR 1.215(c), the benefit of a certificate of mailing or transmission under 37 CFR 1.8 will be given to a notice of foreign filing.
After either a rescission of a nonpublication request or a notice of foreign filing is received by the Office, the Office will enter the rescission or notice of foreign filing into the Office Pre-Examination System to schedule the application for publication. A notice (e.g., a “Notice Regarding Rescission Of Nonpublication Request and Notice of Foreign Filing”) should be sent to inform the applicant of the projected publication date. The application will be published promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under title 35, United States Code, or as soon as practicable after mailing this notice. See 35 U.S.C. 122(b)(2)(B)(iv).
An applicant should not rescind a nonpublication request or provide a notice of foreign filing unless a nonpublication request was actually made, because filing a rescission when one is not needed leads to a waste of Office resources and may delay prosecution in the application. Furthermore, filing a rescission of a nonpublication request where a nonpublication request was not originally made may
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result in a reduction to any patent term adjustment under 35 U.S.C. 154(b).
1124 Notice of Foreign Filing [R-07.2015]
35 U.S.C. 122 Confidential status of applications; publication of patent applications.
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(b) PUBLICATION.—
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(2) EXCEPTIONS.—
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(B) *****
(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned.
(iv) If an applicant rescinds a request made under clause (i) or notifies the Director that an application was filed in a foreign country or under a multilateral international agreement specified in clause (i), the application shall be published in accordance with the provisions of paragraph (1) on or as soon as is practical after the date that is specified in clause (i).
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37 CFR 1.213 Nonpublication request. *****
(c) If an applicant who has submitted a nonpublication request under paragraph (a) of this section subsequently files an application directed to the invention disclosed in the application in which the nonpublication request was submitted in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the applicant must notify the Office of such filing within forty-five days after the date of the filing of such foreign or international application. The failure to timely notify the Office of the filing of such foreign or international application shall result in abandonment of the application in which the nonpublication request was submitted (35 U.S.C. 122(b)(2)(B)(iii)).
Applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application if:
(A) applicant filed a nonpublication request in the U.S. application filed under 35 U.S.C. 111(a) (see MPEP § 1122);
(B) applicant subsequently filed a foreign or international application directed to the invention disclosed in the U.S. application in a foreign country, or under a multilateral international agreement, that requires publication of applications 18 months after filing (foreign filing or counterpart application); and
(C) applicant did not rescind the nonpublication request before filing the foreign or international application (see MPEP § 1123).
I. NOTICE OF FOREIGN FILING REQUIRED WITHIN 45 DAYS
The notice of foreign filing must be filed not later than 45 days after the filing date of the counterpart application. The requirement for notice of foreign filing is set forth in 35 U.S.C. 122(b)(2)(B)(iii) which provides that an applicant who has made a nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) in a U.S. application filed under 35 U.S.C. 111(a) , but who subsequently files an application in a foreign country or under a multilateral international agreement that requires eighteen-month publication, must notify the USPTO of the foreign filing not later than forty-five days after the date of such foreign filing. Form PTO/SB/36 (revision April 2001 or later) may be used to both rescind a nonpublication request and provide notice of foreign filing. The form is reproduced in MPEP § 1135. 35 U.S.C. 122(b)(2)(B)(iii) further provides that failure of the applicant to provide the required notice within this forty-five (45) day period shall result in abandonment of the application. Accordingly, if at the time the foreign filing is made, the applicant still has an operative nonpublication request ( i.e., the applicant has not rescinded the nonpublication request), a notice of foreign filing must be made within 45 days of the foreign filing or the U.S. application with the nonpublication request will become abandoned.
Since the notice of foreign filing is required by the statute, the benefit of a certificate of mailing or transmission under 37 CFR 1.8 will be given to a notice of foreign filing. See 37 CFR 1.8(a). Form PTO/SB/36 includes a certificate of mailing. If the
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end of the 45 day period falls on a Saturday, Sunday or Federal holiday within the District of Columbia, a notice of foreign filing filed on the next succeeding secular or business day is timely. See 35 U.S.C. 21(b).
After either a rescission of a nonpublication request or a notice of foreign filing is received by the Office, the Office will enter the rescission or notice of foreign filing into the Office Pre-Examination System to schedule the application for publication. A notice (e.g., a “Notice Regarding Rescission Of Nonpublication Request and Notice of Foreign Filing”) should be sent to inform the applicant of the projected publication date. The application will be published promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under title 35, United States Code, or as soon as practicable after mailing this notice. See 35 U.S.C. 122(b)(2)(B)(iv).
II. ABANDONMENT FOR FAILURE TO PROVIDE TIMELY NOTICE
37 CFR 1.137 Revival of abandoned application, terminated reexamination proceeding, or lapsed patent
(a) Revival on the basis of unintentional delay. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this section to revive an abandoned application or a reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited under § 1.957(c).
(b) Petition requirements. A grantable petition pursuant to this section must be accompanied by:
(1) The reply required to the outstanding Office action or notice, unless previously filed;
(2) The petition fee as set forth in § 1.17(m);
(3) Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section; and
(4) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(c) Reply. In an application abandoned under § 1.57(a), the reply must include a copy of the specification and any drawings of the previously filed application. In an application or patent abandoned for failure to pay the issue fee or any portion thereof, the required reply must include payment of the issue fee or any outstanding balance. In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In a nonprovisional
utility or plant application filed on or after June 8, 1995, abandoned after the close of prosecution as defined in § 1.114(b), the required reply may also be met by the filing of a request for continued examination in compliance with § 1.114.
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(f) Abandonment for failure to notify the Office of a foreign filing: A nonprovisional application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the filing of an application in a foreign country or under a multinational treaty that requires publication of applications eighteen months after filing, may be revived only pursuant to this section. The reply requirement of paragraph (c) of this section is met by the notification of such filing in a foreign country or under a multinational treaty, but the filing of a petition under this section will not operate to stay any period for reply that may be running against the application.
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35 U.S.C. 122(b)(2)(B)(iii) provides that failure of the applicant to provide the required notice of foreign filing within 45 days of the subsequent filing of a counterpart application shall result in abandonment of the application. When an application is abandoned by the operation of 35 U.S.C. 122(b)(2)(B)(iii), applicant’s sole remedy to restore the application to pending status is by filing a petition under 37 CFR 1.137 to revive the abandoned application on the basis of unintentional delay. See 37 CFR 1.137(f). By statute, such a petition to revive requires payment of the petition fee specified in 37 CFR 1.17(m) (35 U.S.C. 41(a)(7)), and that the delay in submitting the notice of foreign filing was unintentional. Form PTO/SB/64a may be used for such a petition to revive. See also MPEP § 711.03(c). In addition, if, after filing a counterpart application, an applicant merely rescinds a nonpublication request but does not file a notice of foreign filing within forty-five days of the subsequent filing of a counterpart application, applicant must file a petition under 37 CFR 1.137 to revive the abandoned U.S. application (37 CFR 1.137(f)).
Abandonment occurs by operation of the statute, and the Office is unlikely to recognize when applicant has filed a counterpart application in a foreign country or under a multilateral agreement contrary to their certification to the Office. The Office would not be able to change the status of the application from pending to abandoned in the PALM system and send applicant a notice of abandonment. As a result, if applicant failed to file a notice of foreign filing when it was required, prosecution of the
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application will continue and the application may issue as a patent, even though the application has become abandoned by operation of the statute. Applicants who determine that a required notice of foreign filing was not timely provided should promptly file a petition to revive under 37 CFR 1.137. See 37 CFR 1.137(f). The reply requirement of 37 CFR 1.137(c) is met by the notification of the filing in a foreign country or under a multinational treaty, but the filing of a petition to revive will not operate to stay any period for reply that may be running against the application.
1125 Express Abandonment to Avoid Publication [R-11.2013]
37 CFR 1.138 Express abandonment *****
(c) An applicant seeking to abandon an application to avoid publication of the application (37 CFR 1.211(a)(1)) must submit a declaration of express abandonment by way of a petition under this paragraph including the fee set forth in § 1.17(h) in sufficient time to permit the appropriate officials to recognize the abandonment and remove the application from the publication process. Applicants should expect that the petition will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication.
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Applicants seeking to abandon an application to avoid publication of the application are urged to do so by filing a petition under 37 CFR 1.138(c) and submitting a declaration of express abandonment and the fee set forth in 37 CFR 1.17(h) in sufficient time to permit the appropriate officials (Office of Data Management – Patent Publication Branch) to recognize the abandonment and remove the application from the publication process. Applicants may use form PTO/AIA/24A for applications filed on or after September 16, 2012 or form PTO/SB/24A for applications filed before September 16, 2012 for filing a petition for express abandonment to avoid publication under 37 CFR 1.138(c).(see MPEP § 1135) and file the petition electronically using EFS-Web, or mail the petition to Mail Stop Express Abandonment, or transmit the petition via facsimile to the Office at (571) 273 8300 (see MPEP § 1730). Filing the petition via EFS-Web will increase the chances of such petition being received by the
appropriate officials in sufficient time to avoid publication of an application.
Any applicant seeking to abandon the application for the purpose of avoiding publication must take appropriate action well prior to the projected publication date. If the application is not recognized as abandoned at least four weeks prior to the projected publication date, the Office will not be able to avoid publication of the application. This does not imply that a request to expressly abandon an application to avoid publication filed prior to this four-week time frame will ensure that the Office will be able to remove an application from publication. The Office simply cannot ensure that it can remove an application from publication or avoid publication of application information any time after the publication process for the application is initiated (about 4 months prior to the projected publication date).
The petition for express abandonment to avoid publication will be granted when it is recognized in sufficient time to avoid publication and will be denied when it is not recognized in sufficient time to avoid publication of the application. This will avert the situation in which an applicant files a letter of express abandonment to avoid publication, the letter of express abandonment is not recognized in sufficient time to avoid publication, upon publication the applicant wishes to rescind the letter of express abandonment, and the Office cannot revive the application (once the letter of express abandonment is recognized) because the application was expressly and intentionally abandoned by the applicant.
1126 Publication Fees [R-11.2013]
37 CFR 1.211 Publication of applications.
(e) The publication fee set forth in § 1.18(d) must be paid in each application published under this section before the patent will be granted. If an application is subject to publication under this section, the sum specified in the notice of allowance under § 1.311 will also include the publication fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable. If the application is not published under this section, the publication fee (if paid) will be refunded.
The publication fee set forth in 37 CFR 1.18(d) must be paid in each application published (or scheduled
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to be published) under 35 U.S.C. 122(b) before a patent will be granted on the application. The publication fee will be required with the Notice of Allowance and Fee(s) Due, unless the publication fee was previously paid. If an application becomes abandoned without being allowed, no publication fee is required. The small entity discount is not available for the publication fee. The sum specified in the Notice of Allowance and Fee(s) Due will also include the publication fee which must be paid within three months from the date of mailing of the Notice of Allowance and Fee(s) Due to avoid abandonment of the application. This three-month period is not extendable.
Applicant is required to pay the publication fee to avoid abandonment of the application even if the application has not yet been published at the time when the publication fee is due. The Office will continue with the pre-grant publication process until a patent actually issues. This is because there are many instances in which the Office mails a notice of allowance in an application but the application does not issue as a patent in regular course. Therefore, the Office will not discontinue the pre-grant publication process until a patent has actually issued. Since the Office cannot discontinue the pre-grant publication process during the last two to four weeks of the publication process, this will result in a few applications being issued as patents and subsequently being published as patent application publications. The Office will refund the publication fee (if paid) if the application is not published as a patent application publication, but will not refund the publication fee if the application is published as a patent application publication, even if it is published after the patent issues. Effective January 1, 2014, the publication fee set forth in 37 CFR 1.18(d) is $0.00.
Accordingly, applicant may file a request for a refund of the publication fee after 4 weeks from the issue date of the patent if the application did not publish. A request for refund filed before 4 weeks from the issue date is premature and will be disregarded. Requests for a refund of the publication fee should be directed to the Office of Data Management – Patent Publication Branch at Mail Stop PGPUB.
If applicant files a request for continued examination (RCE) under 37 CFR 1.114 after a Notice of Allowance and Fee(s) Due is mailed (but before the expiration of the three-month time period set forth in the Notice of Allowance and Fee(s) Due), the Office will suspend the due date for the publication fee until three months from the mail date of the new Notice of Allowance and Fee(s) Due for the application (if and when a new Notice is mailed). See Time Period for Paying Publication Fee if a Request for Continued Examination is Filed After a Notice of Allowance is Mailed, 1249 Off. Gaz. Pat. Office 81 (Aug. 21, 2001). For more information on RCE practice, see MPEP § 706.07(h).
1127 Notice of Publication [R-08.2012]
Applicants will be informed of the projected publication date assigned to the application on the filing receipt. The Office will not mail a paper copy of the patent application publication to the applicant, but will mail a “Notice of Publication” to the applicant indicating that the application has been published when the application is published. Copies of patent application publications are available on the USPTO website (www.uspto.gov).
A “Notice of New or Revised Publication Date” may be mailed if the publication date changes by more than six weeks due to processing delays, if a secrecy order is removed, or subsequent to the revival of an abandoned application. If applicant timely adds or deletes a benefit or priority claim and the Office recognizes the correction and changes the projected publication date before the technical preparations of the application have begun, the Office will mail a notice (e.g., a corrected filing receipt), informing applicant of the newly assigned projected publication date.
1128 Availability of Published Applications [R-07.2015]
37 CFR 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
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(1) Records associated with patent applications (see paragraph (g) for international applications and paragraph (j) for international design applications) may be available in the following situations:
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(ii) Published abandoned applications. The file of an abandoned published application is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published application may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b).
(iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (i) of this section.
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(b) Electronic access to an application. Where a copy of the application file or access to the application may be made available pursuant to this section, the Office may at its discretion provide access to only an electronic copy of the specification, drawings, and file contents of the application.
I. ELECTRONIC ACCESS
Patent application publications are available electronically on the USPTO website (www.uspto.gov). Any member of the public may obtain status information concerning any published application via the Office’s Patent Application Information Retrieval (PAIR) system. See MPEP § 1730. Published applications that have been scanned into the Image File Wrapper (IFW) system may be available electronically via PAIR. See 37 CFR 1.14(b). Note that if a published patent application is pending and it is not maintained in the IFW system, the paper application file itself will not be available to the public for inspection. Only copies of the application file may be obtained pursuant to 37 CFR 1.14(a)(1)(iii). See MPEP § 103 for additional information pertaining to access to patent application files.
II. COPIES OF PUBLISHED APPLICATIONS
Any member of the public may submit a request under 37 CFR 1.14(a)(1)(ii) or (iii) and the fee set forth in 37 CFR 1.19(b) to the Office of Public Records or electronically on the USPTO website (www.uspto.gov) for:
(A) a copy of the complete file wrapper and contents of, or a copy of a specific paper in, any published application, provided that no redacted copy was timely submitted for publication; or
(B) an appropriately redacted copy of the file wrapper and contents of, or a copy of a specific paper in, any published application for which a redacted copy was timely submitted for publication.
III. STATUS INFORMATION
Any member of the public may obtain status information concerning any published application via the Office’s PAIR system or contact the File Information Unit (FIU). See MPEP § 1730. Status information is defined to include identification of whether the application has been published under 35 U.S.C. 122(b), as well as whether the application is pending, abandoned, or patented, and the application number. Status information may also be provided when the application is referred to by its application number in a U.S. patent application publication as well as a U.S. patent, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The public may obtain continuity data for applications that have been published as a U.S. patent application publication or as a U.S. patent. See also MPEP § 102.
1129 Request for Early Publication [R-11.2013]
37 CFR 1.219 Early publication.
Applications that will be published under § 1.211 may be published earlier than as set forth in § 1.211(a) at the request of the applicant. Any request for early publication must be accompanied by the publication fee set forth in § 1.18(d). If the applicant does not submit a copy of the application in compliance with the Office electronic filing system requirements pursuant to § 1.215(c), the Office will publish the application
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as provided in § 1.215(a). No consideration will be given to requests for publication on a certain date, and such requests will be treated as a request for publication as soon as possible.
If an applicant wishes to have an application published earlier than the date that is eighteen months after the earliest filing date for which benefit is claimed, applicant may submit a request in compliance with 37 CFR 1.219 and the publication fee set forth in 37 CFR 1.18(d). The Office will publish the application as soon as possible if the application is otherwise ready for publication. The publication process takes approximately 14 weeks and does not begin until the application is complete and ready for publication (e.g., an executed oath or declaration has been filed and the filing fee has been paid). See MPEP § 1120. The Office will not give any consideration to requests for publication on a certain date. Note that if early publication is requested, and the publication fee paid, applicant will not be required to pay the publication fee at allowance.
1130 Republication and Correction of Patent Application Publications [R-07.2015]
37 CFR 1.221 Voluntary publication or republication of patent application publication
(a) Any request for publication of an application filed before, but pending on, November 29, 2000, and any request for republication of an application previously published under § 1.211, must include a copy of the application in compliance with the Office electronic filing system requirements and be accompanied by the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i). If the request does not comply with the requirements of this paragraph or the copy of the application does not comply with the Office electronic filing system requirements, the Office will not publish the application and will refund the publication fee.
(b) The Office will grant a request for a corrected or revised patent application publication other than as provided in paragraph (a) of this section only when the Office makes a material mistake which is apparent from Office records. Any request for a corrected or revised patent application publication other than as provided in paragraph (a) of this section must be filed within two months from the date of the patent application publication. This period is not extendable.
I. REQUEST FOR REPUBLICATION
If an applicant wishes to correct errors in a patent application publication, or republish the application with an amended specification (including amended claims) and/or replacement drawings, applicant may
file a request for republication pursuant to37 CFR 1.221(a). The request for republication must include:
(A) a copy of the application in compliance with the Office Electronic Filing System (EFS) requirements, e.g., set forth in the EFS-Web Legal Framework (for more information on EFS see MPEP § 1730 and the USPTO website, www.uspto.gov);
(B) the publication fee set forth in 37 CFR 1.18(d); and
(C) the processing fee set forth in 37 CFR 1.17(i).
If the applicant submits a request that does not meet the EFS requirements, the request will be dismissed. If the fees are not paid, the USPTO will send the applicant a letter requiring the fees and republication of the application will be delayed. While there is no set time limit for requesting republication, the application must still be pending.
If the application is recognized by the Office as abandoned, or has issued as a patent, the application may be removed from the publication process and not republished, even if the Office accepted the request.
II. REQUEST FOR CORRECTED PUBLICATION - MATERIAL MISTAKE MADE BY THE OFFICE
If the Office made a material mistake in a patent application publication that is apparent from the Office records and applicant wishes to correct the material mistake, applicant may file a request for corrected publication pursuant to 37 CFR 1.221(b). Prior to submitting a request for a corrected publication under 37 CFR 1.221(b), applicant must check applicant’s records (or PAIR) to determine that the application papers submitted to the Office did not contain the alleged material error made by the Office. If applicant submitted a specification that includes illegible text, the Office will not grant a request for corrected publication under 37 CFR 1.221(b) based on errors arising from misinterpretation of such text.
The request for a corrected publication under 37 CFR 1.221(b) must:
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(A) be filed within two months from the date of the patent application publication; and
(B) identify the Office’s material mistake in the publication.
The two-month time period is not extendable. A request for corrected publication should include a listing of the alleged material errors made by the Office, marked up copies of the relevant pages of the publication and an indication of where in the specification as filed the relevant text appears. If the period has expired or the mistake is caused by the applicants, applicants may correct the mistakes by filing a request for republication under 37 CFR 1.221(a), and should not file a request for corrected publication under 37 CFR 1.221(b).
A. Material Mistake
The Office will grant a request for a corrected publication under 37 CFR 1.221(b) only when the Office makes a material mistake which is apparent from Office records. A material mistake means a mistake that affects the public’s ability to appreciate the technical disclosure of the patent application publication or determine the scope of the provisional rights that an applicant may seek to enforce upon issuance of a patent. An error in the claims, the (effective) filing date of the application, or a serious error in the written description or drawings that is necessary to support the claims may be a material error. The following are examples of material mistake:
(A) The publication did not include claims that were included in the originally-filed specification and not canceled by a preliminary amendment.
(B) The publication did not include a part of the specification that provides support for the published claims.
(C) The publication did not include any of the drawings originally filed.
(D) For applications filed on or after September 16, 2012, the publication did not include the benefit claim to a prior-filed nonprovisional application where the specific reference was timely submitted in an application data sheet (ADS). For applications filed before September 16, 2012, the publication did not include the benefit claim to a prior-filed nonprovisional application where the specific
reference was timely submitted in the first sentences of the specification or ADS.
B. Non-Material Mistake
Applicants should not file requests for corrected publication that include no material error made by the Office. Errors in the correspondence address, the assignment information or missing assignment information, minor typographical errors or missing section headings are not material mistakes. A failure to include an amendment is not an Office error. See MPEP § 1121. For example, applicants should not file a request for a corrected publication under 37 CFR 1.221(b) for the following situations:
(A) The publication did not include assignment information.
(B) The publication shows the wrong assignee or the name of the assignee is misspelled.
(C) The publication did not include a benefit or priority claim to a prior application. For example, where either the claim was not timely filed or the reference to the prior application under 37 CFR 1.78 was not properly submitted in the first sentence of the specification or in an application data sheet (ADS) (for applications filed on or after September 16, 2012) or the reference to the prior application under 37 CFR 1.78 was not properly submitted in the first sentences of the specification or in an application data sheet (ADS) (for applications filed before September 16, 2012). See MPEP §§ 211 et seq.
(D) The publication did not include claims or changes submitted in an amendment.
(E) The publication includes typographical errors that do not affect the interpretation of the published claims.
A request for corrected publication under 37 CFR 1.221(b) may result in a patent term adjustment
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reduction where the Office made only non-material errors (especially those listed above).
1131 [Reserved]
1132 Requests for Redacted Publication [R-08.2012]
35 U.S.C. 122 Confidential status of applications; publication of patent applications.
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(b) PUBLICATION.—
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(2) EXCEPTIONS.—
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(B) *****
(v) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign filed applications corresponding to an application filed in the Patent and Trademark Office or the description of the invention in such foreign filed applications is less extensive than the application or description of the invention in the application filed in the Patent and Trademark Office, the applicant may submit a redacted copy of the application filed in the Patent and Trademark Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding applications filed in a foreign country. The Director may only publish the redacted copy of the application unless the redacted copy of the application is not received within 16 months after the earliest effective filing date for which a benefit is sought under this title. The provisions of section 154(d) shall not apply to a claim if the description of the invention published in the redacted application filed under this clause with respect to the claim does not enable a person skilled in the art to make and use the subject matter of the claim.
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37 CFR 1.217 Publication of a redacted copy of an application
(a) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign-filed applications or the description of the invention in such foreign-filed applications is less extensive than the application or description of the invention in the application filed in the Office, the applicant may submit a redacted copy of the application filed in the Office for publication, eliminating any part or description of the invention that is not also contained in any of the corresponding applications filed in a foreign country. The Office will publish the application as provided in § 1.215(a) unless the applicant files a redacted copy of the application in compliance with this
section within sixteen months after the earliest filing date for which a benefit is sought under title 35, United States Code.
(b) The redacted copy of the application must be submitted in compliance with the Office electronic filing system requirements. The title of the invention in the redacted copy of the application must correspond to the title of the application at the time the redacted copy of the application is submitted to the Office. If the redacted copy of the application does not comply with the Office electronic filing system requirements, the Office will publish the application as provided in § 1.215(a).
(c) The applicant must also concurrently submit in paper (§ 1.52(a)) to be filed in the application:
(1) A certified copy of each foreign-filed application that corresponds to the application for which a redacted copy is submitted;
(2) A translation of each such foreign-filed application that is in a language other than English, and a statement that the translation is accurate;
(3) A marked-up copy of the application showing the redactions in brackets; and
(4) A certification that the redacted copy of the application eliminates only the part or description of the invention that is not contained in any application filed in a foreign country, directly or through a multilateral international agreement, that corresponds to the application filed in the Office.
(d) The Office will provide a copy of the complete file wrapper and contents of an application for which a redacted copy was submitted under this section to any person upon written request pursuant to § 1.14(c)(2), unless applicant complies with the requirements of paragraphs (d)(1), (d)(2), and (d)(3) of this section.
(1) Applicant must accompany the submission required by paragraph (c) of this section with the following:
(i) A copy of any Office correspondence previously received by applicant including any desired redactions, and a second copy of all Office correspondence previously received by applicant showing the redacted material in brackets; and
(ii) A copy of each submission previously filed by the applicant including any desired redactions, and a second copy of each submission previously filed by the applicant showing the redacted material in brackets.
(2) In addition to providing the submission required by paragraphs (c) and (d)(1) of this section, applicant must:
(i) Within one month of the date of mailing of any correspondence from the Office, file a copy of such Office correspondence including any desired redactions, and a second copy of such Office correspondence showing the redacted material in brackets; and
(ii) With each submission by the applicant, include a copy of such submission including any desired redactions, and a second copy of such submission showing the redacted material in brackets.
(3) Each submission under paragraph (d)(1) or (d)(2) of this paragraph must also be accompanied by the processing
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fee set forth in § 1.17(i) and a certification that the redactions are limited to the elimination of material that is relevant only to the part or description of the invention that was not contained in the redacted copy of the application submitted for publication.
(e) The provisions of § 1.8 do not apply to the time periods set forth in this section.
If an application filed in the USPTO and subject to publication under 35 U.S.C. 122(b) includes description that is more extensive than any previously filed corresponding foreign applications, applicant may request for redacted publication under 37 CFR 1.217, eliminating any part or description of the invention that is not also contained in any of the corresponding applications filed in a foreign country. The Office will publish the redacted (less extensive) copy of the application instead of the full description of the invention disclosed in the U.S. application (as provided in 37 CFR 1.215(a)) if applicant timely files a request for redacted publication in compliance with 37 CFR 1.217 which requires the following:
(A) A redacted copy of the application in compliance with the Office electronic filing system (EFS) requirements, e.g., set forth in the EFS-Web Legal Framework within sixteen (16) months after the earliest filing date for which a benefit is sought under title 35, United States Code;
(B) A certified copy of each foreign-filed application that corresponds to the U.S. application for which a redacted copy is submitted;
(C) A translation of each such foreign-filed application that is in a language other than English, and a statement that the translation is accurate;
(D) A marked-up copy of the application showing the redactions in brackets; and
(E) A certification that the redacted copy of the application eliminates only the part or description of the invention that is not contained in any application filed in a foreign country, directly or through a multilateral international agreement, that corresponds to the application filed in the Office.
Items (B) – (E) above must be submitted in paper (which includes submitting via EFS-Web) concurrently with the EFS submission of the redacted copy of the application.
The 16-month period is provided by statute (35 U.S.C. 122(b)(2)(B)(v)), and as such, requests for waiver of this 16-month period will be denied. The title of the invention in the redacted copy of the application must correspond to the title of the application at the time the redacted copy of the application is submitted to the Office. If the redacted copy of the application does not comply with the Office electronic filing system requirements, the Office will publish the full description of the invention disclosed in the U.S. application as provided in 37 CFR 1.215(a).
Once an application has been published, a member of the public may request a copy of the complete file wrapper and contents of, or a copy of a specific paper in, the published application, provided that no redacted copy was timely submitted for publication. If a redacted copy of the application was used for publication, the copy of the specification, drawings, and papers may be limited to a redacted copy, provided that the applicant submits the following:
(A) A copy of any Office correspondence previously received by applicant including any desired redactions, and a second copy of all Office correspondence previously received by applicant showing the redacted material in brackets, at the time of filing the request for redacted publication;
(B) A copy of each submission previously filed by the applicant including any desired redactions, and a second copy of each submission previously filed by the applicant showing the redacted material in brackets, at the time of filing the request for redacted publication;
(C) Within one month of the date of mailing of any correspondence from the Office, a copy of such Office correspondence including any desired redactions, and a second copy of such Office correspondence showing the redacted material in brackets;
(D) With each submission by the applicant, a copy of such submission including any desired redactions, and a second copy of such submission showing the redacted material in brackets; and
(E) The processing fee set forth in 37 CFR 1.17(i), and a certification that the redactions are limited to the elimination of material that is relevant only to the part or description of the invention that
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was not contained in the redacted copy of the application submitted for publication for each submission in (A)-(D).
Papers submitted for redaction are not entitled to the benefit of the certificate of mailing practice under 37 CFR 1.8. If applicant fails to provide the required redacted and marked up copies of the correspondence in compliance with 37 CFR 1.217(d), the Office will provide a copy of the complete file wrapper and contents of the application to any person upon written request pursuant to 37 CFR 1.14.
1133 Voluntary Publication [R-08.2012]
37 CFR 1.221 Voluntary publication or republication of patent application publication.
(a) Any request for publication of an application filed before, but pending on, November 29, 2000, and any request for republication of an application previously published under § 1.211, must include a copy of the application in compliance with the Office electronic filing system requirements and be accompanied by the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i). If the request does not comply with the requirements of this paragraph or the copy of the application does not comply with the Office electronic filing system requirements, the Office will not publish the application and will refund the publication fee.
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Utility and plant applications filed before November 29, 2000 will not be published under 35 U.S.C. 122(b). If an applicant wishes the Office to publish a utility or plant application filed before November 29, 2000 under 35 U.S.C. 122(b), applicant may file a request for voluntary publication under 37 CFR 1.221. The application must be pending and the request for voluntary publication must include:
(A) a copy of the application in compliance with the Office Electronic Filing System (EFS) requirements, e.g., set forth in the EFS-Web Legal Framework;
(B) the publication fee set forth in 37 CFR 1.18(d); and
(C) the processing fee set forth in 37 CFR 1.17(i).
If the applicant submits a request that does not meet the EFS requirements, the request will be dismissed. Since the Office does not intend to publish abandoned applications, applications that are recognized by the Office as abandoned will not be
published. Thus, if applicant submits a request for a voluntary publication of an application, but the application is later abandoned before the application publishes, the application may not be published even if the Office has accepted the request.
1134 Third Party Inquiries and Correspondence in a Published Application [R-11.2013]
35 U.S.C. 122 Confidential status of applications; publication of patent applications.
*****
(c) PROTEST AND PRE-ISSUANCE OPPOSITION.— The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.
(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—
(1)_ IN GENERAL.— Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—
(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
(B) the later of—
(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or
(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.
(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—
(A) set forth a concise description of the asserted relevance of each submitted document;
(B) be accompanied by such fee as the Director may prescribe; and
(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.
*****
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35 U.S.C. 122 includes two provisions regarding submissions by third parties in patent applications. Pursuant to 35 U.S.C. 122(c), no protest or other form or pre-issuance opposition may be initiated after publication of an application without the express written consent of the applicant. 35 U.S.C. 122(c) is implemented by 37 CFR 1.291. For information on protests see MPEP § 1901. 35 U.S.C. 122(e), on the other hand, provides a mechanism for third parties to submit printed publications in another party’s patent application. Under 35 U.S.C. 122(e), any third party may submit printed publications of potential relevance to the examination of an application for consideration and inclusion in the record of the application. Such submissions must be timely made in writing and include a concise description of the asserted relevance of each publication submitted, any fee prescribed by the Director, and a statement of compliance with 35 U.S.C. 122(e). 35 U.S.C. 122(e) is implemented by 37 CFR 1.290, which replaces 37 CFR 1.99. See Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 Fed. Reg. 42150 (July 17, 2012) (final rule). Third-party submissions under 37 CFR 1.99 were eliminated as of September 16, 2012.
In contrast to protests under 37 CFR 1.291, third-party submissions under 37 CFR 1.290 may be made in published patent applications where the timing provisions set forth in 37 CFR 1.290(b) are satisfied. Additionally, third-party submissions have different content requirements than protests. While 37 CFR 1.290 limits third-party submissions to printed publications, 37 CFR 1.291 provides for the submission of information in a protest other than publications, including any facts or information adverse to patentability, and arguments to that effect. See MPEP §§ 1901, 1901.02 and 1901.06subsection VII. Moreover, 37 CFR 1.291(c)(2) requires a protest to include a “concise explanation of the relevance” of each item of information submitted. This is distinct from the concise description of relevance required by 37 CFR 1.290(d)(3) for third-party submissions. Unlike the concise description of relevance for a third-party submission under 37 CFR 1.290, which is limited to a description of a document’s relevance, the concise explanation for a protest under 37 CFR 1.291 allows for arguments against patentability.
Despite the provisions of 35 U.S.C. 122(c) and (e), the Office occasionally receives third-party inquiries or submissions (other than under 37 CFR 1.290 and 37 CFR 1.291) regarding patent applications. For example, third parties have inquired into the timing of future actions on an application, inventorship in an application, and some third parties have insisted that the Office withdraw an application from issue under 37 CFR 1.313 on the basis of unpatentability of a claim. The Office considers inappropriate any third-party inquiry, or submission in an application that is not provided for in 37 CFR 1.290 or 37 CFR 1.291. Any submission filed by a third party in an application that does not comply with the requirements of 37 CFR 1.290 or 37 CFR 1.291 will not be entered into the application file and will be discarded.
Office personnel (including the Patent Examining Corps) are instructed to: (1) not reply to or act upon any third-party inquiry or other submission in an application, except those in compliance with 37 CFR 1.290 or 37 CFR 1.291; and (2) decline to accept oral or telephone comments or submissions about applications from third parties. When refusing third-party telephone or oral discussions, examiners may call the party’s attention to the statutory prohibition on initiating protests, or 37 CFR 1.2 (all Office business should be transacted in writing), as appropriate. See Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application, 1269 Off. Gaz. Pat. Office 179 (April 22, 2003). The Office may also refer third-party inquiries, or submissions not provided for in 37 CFR 1.290 or 37 CFR 1.291, by registered practitioners in applications to the Office of Enrollment and Discipline for appropriate action.
The provisions of 35 U.S.C. 122(c) and (e) limit a third party’s ability to protest, oppose the grant of, or have information entered and considered in an application pending before the Office. However, these provisions do not limit the Office’s authority to independently re-open the prosecution of a pending application on the Office’s own initiative and consider information deemed relevant to the patentability of any claim in the application. See
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Blacklight Power, Inc. v. Rogan, 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002).
1134.01 Third Party Submissions Under 37 CFR 1.290 [R-07.2015]
37 CFR 1.290 Submissions by third parties in applications.
(a) A third party may submit, for consideration and entry in the record of a patent application, any patents, published patent applications, or other printed publications of potential relevance to the examination of the application if the submission is made in accordance with 35 U.S.C. 122(e) and this section. A third-party submission may not be entered or considered by the Office if any part of the submission is not in compliance with 35 U.S.C. 122(e) and this section.
(b) Any third-party submission under this section must be filed prior to the earlier of:
(1) The date a notice of allowance under § 1.311 is given or mailed in the application; or
(2) The later of:
(i) Six months after the date on which the application is first published by the Office under 35 U.S.C. 122(b) and § 1.211, or
(ii) The date the first rejection under § 1.104 of any claim by the examiner is given or mailed during the examination of the application.
(c) Any third-party submission under this section must be made in writing.
(d) Any third-party submission under this section must include:
(1) A document list identifying the documents, or portions of documents, being submitted in accordance with paragraph (e) of this section;
(2) A concise description of the asserted relevance of each item identified in the document list;
(3) A legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;
(4) An English language translation of any non-English language item identified in the document list; and
(5) A statement by the party making the submission that:
(i) The party is not an individual who has a duty to disclose information with respect to the application under § 1.56; and
(ii) The submission complies with the requirements of 35 U.S.C. 122(e) and this section.
(e) The document list required by paragraph (d)(1) of this section must include a heading that identifies the list as a third-party submission under § 1.290, identify on each page of the list the application number of the application in which the submission is being filed, list U.S. patents and U.S. patent application publications in a separate section from other items, and identify each:
(1) U.S. patent by patent number, first named inventor, and issue date;
(2) U.S. patent application publication by patent application publication number, first named inventor, and publication date;
(3) Foreign patent or published foreign patent application by the country or patent office that issued the patent or published the application; the applicant, patentee, or first named inventor; an appropriate document number; and the publication date indicated on the patent or published application; and
(4) Non-patent publication by author (if any), title, pages being submitted, publication date, and, where available, publisher and place of publication. If no publication date is known, the third party must provide evidence of publication.
(f) Any third-party submission under this section must be accompanied by the fee set forth in § 1.17(o) for every ten items or fraction thereof identified in the document list.
(g) The fee otherwise required by paragraph (f) of this section is not required for a submission listing three or fewer total items that is accompanied by a statement by the party making the submission that, to the knowledge of the person signing the statement after making reasonable inquiry, the submission is the first and only submission under 35 U.S.C. 122(e) filed in the application by the party or a party in privity with the party.
(h) In the absence of a request by the Office, an applicant need not reply to a submission under this section.
(i) The provisions of § 1.8 do not apply to the time periods set forth in this section.
Section 8 of the America Invents Act (AIA) amends 35 U.S.C. 122 by adding 35 U.S.C. 122(e), which provides a mechanism for third parties to submit printed publications in another party’s patent application. 35 U.S.C. 122(e) is implemented by 37 CFR 1.290, which replaces 37 CFR 1.99. See Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 Fed. Reg. 42150 (July 17, 2012) (final rule). Third-party submissions under 37 CFR 1.99 were eliminated as of September 16, 2012.
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I. TIMELINESS REQUIREMENT
37 CFR 1.290(b) sets forth the time periods in which a third party may file a third-party submission. While there is no limit on the number of submissions that one third party may make in an application, a third-party submission must be filed prior to the earlier of:
(1) The date a notice of allowance under 37 CFR 1.311 is given or mailed in the application; or
(2) The later of:
(i) Six months after the date on which the application is first published by the Office under 35 U.S.C. 122(b) and 37 CFR 1.211, or
(ii) The date the first rejection under 37 CFR 1.104 of any claim by the examiner is given or mailed during the examination of the application.
Thus, a third-party submission cannot be filed in an application where a notice of allowance has been issued in the application, regardless of whether that notice of allowance is subsequently withdrawn. If a notice of allowance has not been issued in an application, a third-party submission may be filed prior to the date that is six months after the date of publication by the Office or prior to the date of the first rejection of any claim by the examiner, whichever is later.
The 37 CFR 1.290(b)(2)(i) time period will be initiated only by publications “by the Office” under 35 U.S.C. 122 and 37 CFR 1.211, and will not be initiated by a publication by the World Intellectual Property Organization (WIPO). Thus, an earlier publication by WIPO of an international application designating the United States will not be considered a publication that will initiate the 37 CFR 1.290(b)(2)(i) time period for an application which entered the national stage from the international application after compliance with 35 U.S.C. 371. Additionally, the first publication of the application by the Office will trigger the 37 CFR 1.290(b)(2)(i) time period where appropriate. The republication of an application under 37 CFR 1.221(b) is not the “first” publication by the Office under 35 U.S.C.122(b) for purposes of 35 U.S.C. 122(e). Where the Office does not publish an application, the date that is six months after the publication date would not occur and, therefore, by default would be
considered later than both the date of a first rejection of any claim and the date the notice of allowance is given or mailed in the application. Accordingly, the date that a notice of allowance is given or mailed in the application would control the timing of a third-party submission in an application which has not been published, not the date of the first rejection of any claim.
The 37 CFR 1.290(b)(2)(ii) time period will be initiated by the date the first rejection under 37 CFR 1.104 of any claim by the examiner is given or mailed during the examination of the application. “Given” refers to the electronic notification of an Office action that replaces postal mailing of an Office action for applicants participating in the Electronic Office Action Notification (e-Office Action) program. The 37 CFR 1.290(b)(2)(ii) time period will not be initiated, for example, by a first Office action that only contains a restriction requirement or where the first Office action is an action under Ex parte Quayle, 1935 Dec. Comm’r Pat. 11 (1935).
The filing of an RCE does not reset the 37 CFR (b)(2)(ii) time period for filing a third-party submission. Additionally, the filing of an RCE in an application does not preclude a third party from making a third-party submission in the application, if the third-party submission is made within the time periods set forth in 37 CFR 1.290(b)(2).
All third-party submissions must be filed prior to, not on, the dates identified in 37 CFR 1.290(b)(1) and (b)(2). For example, assuming no notice of allowance has been issued in an application, if a third-party submission is filed on the same date the first rejection is mailed and the application has been published for more than six months, the submission would not be timely and would not be entered. In another example, assuming no notice of allowance has been issued in an application, if a third-party submission is filed on the date that is six months after the date the Office published the application and a first rejection has already been mailed, the submission would not be timely and would not be entered (i.e., if the Office published the application on May 21, a third-party submission filed on November 21, which is the date that is six months after the date the Office published the application,
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would not be timely as, according to the rule, the submission would need to have been made on November 20 or earlier).
A. Time Periods Are Statutory and Cannot Be Waived
The time periods provided for in 37 CFR 1.290(b) are statutory and cannot be waived. See 35 U.S.C. 122(e)(1). Thus, the Office cannot grant any request for extension of the 37 CFR 1.290(b) time periods. Third-party submissions that are not timely filed will not be entered or considered and will be discarded.
The statutory time period for making a third-party submission will not be tolled by a non-compliant submission. Accordingly, making a third-party submission at the earliest opportunity increases the likelihood there will be sufficient time to make a resubmission should the initial submission be found non-compliant. A third party who previously filed a non-compliant submission may file another complete submission, provided the statutory time period for filing a third-party submission has not closed.
The abandonment of an application will not toll the statutory time period for making a third-party submission. For example, if prior to publication an application goes abandoned because the applicant fails to timely respond to a first rejection of any claim, and the application is later revived, a third-party submission would be timely if made prior to the earlier of: the date a notice of allowance is given or mailed or the date that is six months after the date the application is published by the Office.
B. A Third-Party Submission Is Filed On Its Date of Receipt in the Office
A third-party submission under 37 CFR 1.290 is filed on its date of receipt in the Office as set forth in 37 CFR 1.6. The holiday/weekend rule set forth in 37 CFR 1.7(a) applies to a third-party submission under 37 CFR 1.290. For example, if the day prior to the date that is six months after publication of an application which has not been allowed but which application was subject to a first Office action including a rejection of at least one claim more than six month previously is a Saturday, the submission may be timely filed on the next business day, e.g.,
the following Monday via Priority Mail Express®
service pursuant to 37 CFR 1.10, hand delivery or preferably via the Office’s dedicated Web-based interface for preissuance submissions. See also Subsection IV.D. below (providing that the certificate of mailing and transmission provisions of 37 CFR 1.8 do not apply, but the United States
Postal Service (USPS) Priority Mail Express®
service provisions of 37 CFR 1.10 do apply to a third-party submission under 37 CFR 1.290.
II. CONTENT REQUIREMENTS FOR A THIRD-PARTY SUBMISSION
37 CFR 1.290(d) identifies the required content of a third-party submission as follows:
(A) a document list, identifying the publications, or portions of publications, submitted (form PTO/SB/429 or an equivalent document list for paper submissions only; a completed form PTO/SB/429 is automatically generated for electronic submissions);
(B) a concise description of the asserted relevance of each item identified in the document list;
(C) a legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;
(D) an English language translation of any non-English language item identified in the document list;
(E) statements by the party making the submission that:
a) the party is not an individual who has a duty to disclose information with respect to the application under 37 CFR 1.56; and
b) the submission complies with the requirements of 35 U.S.C. 122(e) and 37 CFR 1.290; and
(F) any required fee or the 37 CFR 1.290(g) statement that the fee exemption applies to the submission.
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A. Document List
37 CFR 1.290(d)(1) provides that any third-party submission under 37 CFR 1.290 must include a document list identifying the documents, or portions of documents, being submitted in accordance with 37 CFR 1.290(e). 37 CFR 1.290(e) sets forth the requirements for identifying the items in the 37 CFR 1.290(d)(1) document list. Because 37 CFR 1.290(d)(1) provides for an item identified in the document list to be either an entire document or a portion of a document, in the case where a lengthy document contains both information of potential relevance to the examination of the application and other information that is not of potential relevance, a third party may choose to identify only the relevant portion of the document (e.g., one chapter of a textbook) in lieu of the entire document where it is practical to do so. Otherwise, the third party should identify the entire document.
1. Form PTO/SB/429
When filing in paper, third parties may use form PTO/SB/429 (or equivalent) to prepare the document
list in accordance with 37 CFR 1.290(d)(1) and 37 CFR 1.290(e). Electronic filing via the Office’s dedicated Web-based interface for preissuance submissions in EFS-Web is an alternative to paper filing using form PTO/SB/429 (or equivalent). Use of this form will not be necessary for third-party submissions filed electronically via the Office’s dedicated Web-based interface for preissuance submissions, as this interface will prompt the third party to complete the fields that are provided on the form and will automatically format the entered information into an electronic version of the form PTO/SB/429 for electronic submission. While use of form PTO/SB/429 is not required for paper submissions, form PTO/SB/429 is designed to help ensure that important requirements are not overlooked, such as the document listing requirements pursuant to 37 CFR 1.290(e) and the required statements pursuant to 37 CFR 1.290(d)(5). The form PTO/SB/429 also enables the third party to indicate whether a fee is due or to select the “first and only” statement pursuant to 37 CFR 1.290(g) where the fee exemption applies. Form PTO/SB/429 and instructions for completion are available on the USPTO website at www.uspto.gov/forms.
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2. Listing Requirements
37 CFR 1.290(e) sets forth the requirements for identifying the items in the document list pursuant to 37 CFR 1.290(d)(1). Section 1.290(e) requires the document list include a heading that identifies the list as a third-party submission under 37 CFR 1.290. 37 CFR 1.290(e) also requires that the document list identify on each page of the list, the application number (i.e., the series code and serial number) of the application in which the submission is being filed. This requirement is consistent with the requirement set forth in 37 CFR 1.98(a)(1)(i) for applicant information disclosure statement listings. 37 CFR 1.290(e) further requires that U.S. patents and U.S. patent application publications be listed in a separate section from other items in the document list. Separating the listing of U.S. patents and U.S. patent application publications from the listing of other items in the document list will facilitate printing the U.S. patents and U.S. patent application publications considered by the examiner in a third-party submission on the face of the patent. The dedicated Web-based interface for electronically filing preissuance submissions will automatically generate a document list in accordance with these requirements of 37 CFR 1.290(e).
Sections 1.290(e)(1) through (e)(4) set forth the requirements for identifying the items in the 37 CFR 1.290(d)(1) document list.
(a) U.S. Patents and U.S. Patent Application Publications
37 CFR 1.290(e)(1) requires that each U.S. patent be identified by patent number, first named inventor, and issue date. 37 CFR 1.290(e)(2) requires that each U.S. patent application publication be identified by patent application publication number, first named inventor, and publication date.
(b) Foreign Patents and Published Foreign Patent Applications
37 CFR 1.290(e)(3) requires that each foreign patent or published foreign patent application be identified by the country or patent office that issued the patent or published the application; the applicant, patentee, or first named inventor; an appropriate document
number; and the publication date indicated on the patent or published application. The requirement for U.S. patents and patent application publications to be identified by first named inventor, and for foreign patents and published patent applications to be identified by the applicant, patentee, or first named inventor, is intended to aid in identifying the items in the document list in the event the application number, publication number, or other appropriate document number data is in error, for example, inadvertently transposed. Further, 37 CFR 1.290(e)(3) offers flexibility in permitting identification of foreign patents and published foreign patent applications by expanding the identification to also include the applicant or patentee, in addition to the first named inventor.
(c) Non-Patent Publications
All non-patent publications, such as Office actions, journal articles, communications from foreign patent offices, court documents, etc. that qualify as publications should be listed under the “Non-Patent Publications” section of the form PTO/SB/429 (or equivalent) or entered in the “Non-Patent Publications” section of the Office’s dedicated Web-based interface for preissuance submissions when filing electronically.
37 CFR 1.290(e)(4) requires that each non-patent publication be identified by author (if any), title, pages being submitted, publication date, and where available, publisher and place of publication. However, 37 CFR 1.290(e)(4) does not preclude a third party from providing additional information not specified in 37 CFR 1.290(e)(4) (e.g., journal title and volume/issue information for a journal article). Because publisher and place of publication information may not be available in some instances, 37 CFR 1.290(e)(4) emphasizes that such information need only be provided where it is available. For publications obtained from the Internet, the uniform resource locator (URL) of the Web page that is the source of the publication must be provided for the place of publication ( e.g., “www.uspto.gov”). Further, for an Internet publication obtained from a website that archives Web pages, both the URL of the archived Web page submitted for consideration and the URL of the website from which the archived copy of the Web
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page was obtained should be provided on the document listing (e.g., “Hand Tools,” Web page <http://www.farmshopstore.com/handtools.html>, 1 page, August 18, 2009, retrieved from Internet A r c h i v e Wa y b a c k M a c h i n e <http://web.archive.org/web/20090818144217/ http://www.farmshopstore.com/handtools.html> on December 20, 2012).
37 CFR 1.290(e)(4) further requires that, if no publication date is known, the third party must provide evidence of publication. This requirement recognizes that some documents may not indicate a date of publication. Where the actual publication date of a non-patent document is not known, a third party must, at a minimum, provide a date of retrieval (e.g., the date a Web page was retrieved) or a time frame (e.g., a year, a month and year, a certain period of time) when the document was available as a publication for purposes of identifying the document by publication date pursuant to 37 CFR 1.290(e)(4), in addition to including evidence that establishes the document as a publication. See Subsection III.A. below for additional discussion regarding evidence of publication.
B. Concise description of relevance
37 CFR 1.290(d)(2) requires a concise description of the asserted relevance of each item identified in the document list in view of the statutory requirement of 35 U.S.C. 122(e)(2)(A) that each third-party preissuance submission be accompanied by a “concise description of the asserted relevance of each submitted document.” A concise description of relevance for an item is a statement of facts regarding the submitted evidence ( i.e., the patent, published patent application, or other publication) and will not, itself, be treated as evidence. The concise description should set forth facts, explaining how an item listed is of potential relevance to the examination of the application in which the third-party submission has been filed.
1. Format
The concise description of relevance for a listed publication can be presented in any format that would best explain to the examiner the relevance of the accompanying document, such as in a narrative
description or a claim chart. A concise description of relevance is most effective when it draws the examiner’s attention to the potential relevance of a submitted document to the examination of an application. A concise description that points out the relevant pages or lines of the respective document may be an effective way to draw the examiner’s attention to the potential relevance of the document, particularly where the document is lengthy and complex and the third party can identify a highly relevant section, such as a particular figure or paragraph.
A third party using the Office’s dedicated Web-based interface to electronically file a third-party submission may fill in the concise description of relevance field for an item or upload a separate paper with the concise description for the item in lieu of entering the concise description in the field. See Subsection IV.E. below for more information regarding electronic filing. When filing in paper, a third party should provide the concise description of relevance for an item as a separate paper (as opposed to combining the concise descriptions of relevance for all items into a single paper). Providing, for each concise description of relevance, a separate paper that prominently identifies the item in the document list to which the concise description pertains will help ensure that the screener and the examiner can readily identify it. See Subsection IV.F below for more information regarding paper filing.
2. Content
At a minimum, a concise description of relevance must be more than a bare statement that the document is relevant because such a statement does not amount to a meaningful concise description. For example, the following statements, presented alone, would not be considered anything more than bare statements of relevance that do not rise to the level of meaningful concise descriptions: “Document 1 is relevant,” “See Document 1,” “Document 1 discloses/may disclose the invention,” and “Document 1 teaches the invention in Claim 1.” Additionally, a copy of the listed document that is merely annotated or highlighted will not be deemed a proper concise description of relevance. Further, concise descriptions of relevance that appear to be
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mere form paragraphs/letters in opposition to a general class of invention or technology will not be deemed proper concise descriptions of relevance.
While there is no page limit on a concise description of relevance, third parties should refrain from submitting a verbose description of relevance, not only because the statute calls for a “concise” description, but also because a focused description is more effective in drawing the examiner’s attention to the relevant issues. For example, a description that includes an introductory paragraph describing the field of technology of a document and a claim chart that maps portions of the document to different claim elements would likely be considered “concise.” On the other hand, descriptions that merely repeat in narrative format the same information that is also depicted in a claim chart or that approach the length of the documents themselves will not likely be considered “concise.”
Third-party submissions that include unpublished materials as attachments to or inserted into the text of a concise description of relevance of a listed publication will be found to be non-compliant. For example, where a third party submits a publication for consideration, describes how a feature shown in an image from the publication is relevant, and inserts an image from a different source into the concise description to show details that are not visible or otherwise apparent in the published image, such submission would be deemed non-compliant unless the image from the different source was also published and separately listed for consideration.
3. Not an invitation to participate in the prosecution of the application
The statutory requirement for a concise description of relevance should not be interpreted as permitting a third party to participate in the prosecution of an application, as 35 U.S.C. 122(c) prohibits the initiation of a protest or other form of pre-issuance opposition for published applications without the consent of the applicant. Therefore, while a concise description of relevance may include claim charts (i.e., mapping various portions of a submitted document to different claim elements), the concise description of relevance is not an invitation to a third party to propose rejections of the claims or set forth
arguments relating to an Office action in the application or to an applicant’s reply to an Office action in the application. Unlike the concise explanation for a protest under 37 CFR 1.291, which allows for arguments against patentability, the concise description of relevance required by 35 U.S.C. 122(e) is limited to a factual description of a document’s relevance. The concise description of relevance, therefore, does not permit third parties to submit arguments against patentability or set forth conclusions regarding whether one or more claims are patentable. In other words, the concise description of relevance must not rise to the level of a protest under 37 CFR 1.291.
Examples of compliant concise descriptions formatted as a narrative:
“Claim 1 recites a refrigeration system comprising elements A, B, and C. Publication X discloses the refrigeration system recited in claim 1, except that the refrigeration system disclosed in publication X uses element D instead of element C. See Figure 1 on page 2 of publication X. Publication Y discloses the specific element C recited in claim 1, but not in the context of refrigeration systems. See pages 1-3 of publication Y. Publication Z teaches that element C is frequently used in refrigeration systems. See lines 2-10 on page 6 of publication Z.”
“Claim 1 recites a chemical composition comprising chemicals A, B, C, and D. Patent publication X teaches a chemical composition comprising chemicals A, B, C, and E. See claim 4 of patent publication X. Publication Y teaches chemical D and discusses why chemical D is an art-recognized equivalent of chemical E. See page 4 of publication Y.”
Examples of non-compliant concise descriptions formatted as a narrative (the non-compliant portion is shown in bold):
“Claim 1 recites a refrigeration system comprising elements A, B, and C. Publication X discloses the refrigeration system recited in claim 1, except that the refrigeration system disclosed in publication X uses element D instead of element C. See Figure 1 on page 2 of publication X. Publication Y discloses the specific element C recited in claim 1, but not in
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the context of refrigeration systems. See pages 1-3 of publication Y. Publication Z teaches that element C is frequently used in refrigeration systems. See lines 2-10 on page 6 of publication Z. It would have been obvious to one of ordinary skill in the art to combine the teachings of publication X and publication Y to obtain the refrigeration system recited in claim 1.”
“Claim 1 recites a chemical composition comprising chemicals A, B, C, and D. Patent publication X teaches a chemical composition comprising
chemicals A, B, C, and E. See claim 4 of patent publication X. Publication Y teaches chemical D and discusses why chemical D is an art-recognized equivalent of chemical E. See pages 3-4 of publication Y. The composition of claim 1 is unpatentable in view of publication X and publication Y.”
Examples of compliant concise descriptions formatted as a claim chart for a claim having only two elements:
Publication XClaim 1 As discussed on page 1, publication X discloses a machine that performs the same function as the
Preamble
machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of
Element A
publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X. The first embodiment also includes element B of claim 1. See lines 1-3 on page 6 of publication X.
Element B
Publication YPublication XClaim 1 Publication Y discloses a machine that performs the same function as the machine recited in claim 1.
Publication X discloses a machine that performs the same function as the machine recited in claim 1. The
Preamble
machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2
Element A
and discussed on page 5, the machine of publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X.
Publication Y teaches a machine having element B of claim 1. See
Element B
lines 1-3 on page 6 of publication Y. Publication Y teaches the benefits of using element B in this type of a machine.
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Examples of non-compliant concise descriptions formatted as a claim chart for a claim having only
two elements (the non-compliant portion is shown in bold):
Publication XClaim 1 As discussed on page 1, publication X discloses a machine that performs the same function as the
Preamble
machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of
Element A
publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X. The first embodiment also includes element B of claim 1. See lines 1-3 on page 6 of publication X. Thus,
Element B
publication X anticipates claim 1 because it teaches all of the elements of claim 1.
Publication YPublication XClaim 1 Publication Y discloses a machine that performs the same function as the machine recited in claim 1.
Publication X discloses a machine that performs the same function as the machine recited in claim 1. The
Preamble
machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2
Element A
and discussed on page 5, the machine of publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X. Publication Y teaches a machine having element B of claim 1. See
Element B
lines 1-3 on page 6 of publication Y. Publication Y teaches the benefits of using element B in this type of a machine. Accordingly, claim 1 is unpatentable in view of the combination of publication X and publication Y.
A concise description of relevance for a submitted document is not considered evidence but, rather, a statement of facts regarding the submitted evidence. Accordingly, the Office will not consider a declaration as evidence, where such declaration is submitted as a concise description of relevance for
a document. Where a third party submits a declaration for the concise description of relevance, the concise description of relevance must not amount to an attempt at third-party participation in the examination of the application.
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C. Copies
37 CFR 1.290(d)(3) requires submission of a legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications. See 37 CFR 1.98(a)(2)(ii) and MPEP § 609.04(a). Any copies of documents that are submitted in color will be scanned into black and white prior to entry of a compliant submission in the record of an application. There is no provision for the submission of copies of documents via compact disc or other electronic data storage medium. However, a third party may upload electronic copies of documents when using the Office’s dedicated Web-based interface to electronically file a third-party submission. See Subsection IV.E. below.
37 CFR 1.290(d)(1) provides for the listing of either entire documents or portions of documents. Thus, where only a portion of a document is listed as an item in the document list, a copy of that portion and not a copy of the entire document (e.g., where a particular chapter of a book is listed and not the entire book) must be submitted. Further, when a copy of only a portion of a document is submitted, copies of pages of the document that provide identifying information (e.g., a copy of the cover, the title page, the copyright information page, etc.) should also be submitted. Under 37 CFR 1.290(d)(3), copies of U.S. patents and U.S. patent application publications need not be submitted because such documents are readily accessible to examiners.
Whether filing a third-party submission under 37 CFR 1.290 in paper or electronically, it would be a best practice for third parties to include an identifying label for each item in the document list and place the identifying label on the accompanying concise description of relevance for the item, on the copy of the item (if submitted), and on the translation of the item (if submitted) so that screeners and examiners can more quickly identify the descriptions of relevance, copies, and translations that correspond to each item in the document list.
Images of non-patent literature (NPL) cited in a compliant third-party submission will not be available for either viewing or downloading through Public PAIR. However, when entering a compliant third-party submission into an application file, the
Office will separate the document list from the copies of the documents so that the identifying bibliographical information for the documents cited in the third-party submission will be visible in Public PAIR. The Office currently employs such a practice when entering IDS submissions under 37 CFR 1.98.
D. Translations
37 CFR 1.290(d)(4) requires an English language translation of any non-English language item identified in the document list. A translation submitted pursuant to 37 CFR 1.290(d)(4) may be a reliable machine translation and need not be certified. 37 CFR 1.290(d)(1) provides for the listing of either entire documents or portions of documents. Thus, where only a portion of a non-English language document is listed, a translation of the entire non-English language document must not be submitted. Rather, a copy of the listed portion of the non-English language document and a translation of only this portion must be submitted.
E. Statements
37 CFR 1.290(d)(5)(i) requires a statement by the party making the submission that the party is not an individual who has a duty to disclose information with respect to the application (i.e., each individual associated with the filing and prosecution of the patent application) under 37 CFR 1.56. Such statement is intended to avoid potential misuse of third-party submissions by applicants (e.g., by employing a third-party “straw man”) to attempt to circumvent the IDS rules. 37 CFR 1.290(d)(5)(ii) requires a statement by the party making the submission that the submission complies with the requirements of 35 U.S.C. 122(e) and 37 CFR 1.290. Additionally, to take advantage of the fee exemption, a third-party submission must be accompanied by the statement under 37 CFR 1.290(g). See Subsection IV.F. below for more information regarding the fee exemption.
To facilitate compliance by third parties, form PTO/SB/429 and the dedicated Web-based interface for preissuance submissions include the statements required by 37 CFR 1.290(d)(5)(i) and (ii), as well as the statement under 37 CFR 1.290(g) (which can be selected if applicable). The Office will not
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entertain challenges to the accuracy of such statements because, pursuant to 37 CFR 11.18(b), whoever knowingly and willfully makes any false, fictitious, or fraudulent statements or representations to the Office shall be subject to the penalties set forth under 18 U.S.C. 1001. 37 CFR 11.18(b) applies to any paper presented to the Office, whether by a practitioner or non-practitioner.
The Office cannot permit a third-party submission to be presented unsigned by the submitter in view of the signature requirement set forth in 37 CFR 1.4 for papers filed in a patent application, which require a person’s signature. Third-party submissions are required to be signed because 37 CFR 1.290(d)(5) and 37 CFR 1.290(g) (if applicable) require statements by the party making the submission. Thus, a third-party submission must be signed by the submitter, but there is no requirement to identify a real party in interest. A real party in interest can remain anonymous by having someone else make the third-party submission for them, but the submitter cannot remain anonymous.
F. Fee (if necessary)
37 CFR 1.290(f) requires payment of the fee set forth in 37 CFR 1.17(o) for every ten items or fraction thereof listed in the document list, except where the submission is accompanied by the statement set forth in 37 CFR 1.290(g). The Office will determine the item count based on the 37 CFR 1.290(d)(1) document list. Thus, if a U.S. patent or a U.S. patent application publication is identified in the document list, but a copy of the item is not submitted (i.e., because a copy is not required), the listed U.S. patent or U.S. patent application publication will be counted toward the document count. If a copy of an item is submitted but the item is not identified in the document list, the item will not be counted or considered and will be discarded. Additionally, if a third party identifies an item in the 37 CFR 1.290(d)(1) document list that is only a portion of a publication, the portion of the publication will be counted as one item. Further, while a third party is permitted to cite different publications that are all available from the same electronic source, such as a website, each such publication listed will be counted as a separate item. See Changes To Implement the Preissuance Submissions by Third
Parties Provision of the Leahy-Smith America Invents Act, 77 Fed. Reg. 42150, 42163 (July 17, 2012) (final rule) for guidance on what constitutes a separate document on a website.
When filing electronically, payment may be made by credit card, USPTO deposit account, or electronic funds transfer and the fee must accompany the submission at the time of filing. Credit card information for electronic credit card payments should be entered exclusively on the USPTO website providing electronic payment capability. When filing in paper, payment may be made by check, money order, credit card, or deposit account. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. Credit Card Payment Form (PTO-2038) is available for making payment by credit card for paper submission. See www.uspto.gov/forms. To protect credit card information, form PTO-2038 must not be submitted electronically through EFS-Web.
1. Fee exemption
37 CFR 1.290(g) provides an exemption from the 37 CFR 1.290(f) fee requirement where a third-party submission listing three or fewer total items is the first third-party submission by a third party, or a party in privity with the third party, in a given application. Where one third party takes advantage of the fee exemption in an application, another third party is not precluded from also taking advantage of the fee exemption in the same application as long as the third parties are not in privity with each other.
Third parties are not required to avail themselves of the fee exemption. Thus, a third party can make a first submission of three or fewer documents in an application and choose to pay the fee instead of making the statement under 37 CFR 1.290(g) (e.g., where a third party is uncertain whether it is appropriate to make the “privity” statement pursuant to 37 CFR 1.290(g).)
To implement the fee exemption in 37 CFR 1.290(g) and avoid potential misuse of such exemption, exemption-eligible third-party submissions must be accompanied by a statement of the third party (i.e., “the party making the submission”) that, to the knowledge of the person signing the statement after
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making reasonable inquiry, the submission is the first and only third-party submission in the application by the third party or a party in privity with the third party. To preclude a third party from making multiple third-party submissions in the same application on the same day and asserting that each such submission is the first third-party submission in the application by the third party, the 37 CFR 1.290(g) statement requires that the submission be the “first and only” third-party submission. This statement will not, however, preclude the third party from making more than one third-party submission in an application, where the need for the subsequent submissions was not known at the time the third party filed the earlier submission that included the 37 CFR 1.290(g) statement. The third party would not be required to state in any such subsequent submission that the need for the subsequent submission was not known at the time the third party filed the earlier submission that included the 37 CFR 1.290(g) statement. Any such subsequent submission, however, would not be exempt from the 37 CFR 1.290(f) fee requirement.
2. Fee is required for a resubmission after a finding of non-compliance
Where a third party receives a notification of non-compliance for a third-party submission, the third party may make necessary revisions to its submission, limited to addressing the non-compliance, and resubmit the now corrected submission provided the statutory time period for filing a third-party submission has not closed. The resubmission must be another complete submission, as the Office will not accept amendments to the non-compliant submission. See Subsection II. for content requirements for a third-party submission. To be complete, the appropriate fee for the number of documents being submitted (e.g., $180 for 1-10 documents) must accompany any resubmission made in response to a notification of non-compliance. However, to satisfy the fee requirement for a resubmission after a finding of non-compliance where the proper fee set forth in 37 CFR 1.290(f) accompanied the non-compliant submission, the third party may request that the Office apply the previously-paid fee to the resubmission. Similarly, to satisfy the fee requirement for a resubmission after a finding of non-compliance where the third
party’s non-compliant submission of three or fewer documents was accompanied by the fee exemption statement set forth in 37 CFR 1.290(g), the third party may state that the fee exemption applies to the resubmission. The determination of whether the fee requirement for a resubmission is satisfied will be made at the sole discretion of the Office.
3. Small entity discount
A small entity discount is available for third-party submissions where applicable. To assert small entity status when filing in paper, a third party should select the “small entity” box on form PTO/SB/429 and pay the applicable small entity fee. By selecting the “small entity” box on form PTO/SB/429 (or equivalent) or the “small entity” link on the EFS-Web payment screen and paying the applicable small entity fee, the party making the submission asserts that the party qualifies as a small entity. A micro entity discount is not available for third-party submissions because a third party is not eligible for the micro entity discount.
4. Fee Examples
The following are examples of when a fee may or may not be required for a third-party submission.
If the regular undiscounted and small entity fees are $180.00 and $90.00, respectively, then for the first third-party submission in an application by a third party:
(1) no fee would be required where the first submission contains three or fewer total items and is accompanied by the 37 CFR 1.290(g) fee exemption statement;
(2) a $180/$90 fee would be required where the first submission contains three or fewer total items and is not accompanied by the 37 CFR 1.290(g) fee exemption statement;
(3) a $180/$90 fee would be required where the first submission contains more than three, but ten or fewer total items; and
(4) a $360/$180 fee would be required where the first submission contains more than ten, but twenty or fewer total items, and so on (e.g., where the first submission contains twelve documents and
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the third party does not qualify for the small entity discount, a fee of $180 would be required for the first ten documents and a fee of $180 would be required for the remaining two documents, for a total fee of $360).
For a second or subsequent third-party submission by the same third party:
(1) a $180/$90 fee would be required where the second or subsequent submission contains ten or fewer total items; and
(2) a $360/$180 fee would be required where the second or subsequent submission contains more than ten, but twenty or fewer total items, and so on.
III. “PRINTED PUBLICATIONS”
35 U.S.C. 122(e)(1) and 37 CFR 1.290(a) limit the type of information that may be submitted in a third-party submission to patents, published patent applications, and other printed publications of potential relevance to the examination of a patent application. See MPEP § 2128 for guidance regarding printed publications. For example, a third-party submission may include U.S. patents and patent application publications, foreign patents and published foreign patent applications, as well as non-patent documents that qualify as publications, such as published articles, Office actions issued in published U.S. patent applications, and communications from foreign patent offices issued in published foreign patent applications. Documents that do not qualify as publications, such as materials that are subject to a court-imposed protective or secrecy order, trade secret information, unpublished internal documents of a corporation intended to be confidential, email correspondence not widely disseminated to the public, etc., must not be submitted for consideration under 37 CFR 1.290. Accordingly, third-party submissions cannot be submitted under MPEP § 724.02.
Pursuant to 35 USC 122(e)(1) and 37 CFR 1.290(c), a third-party submission is required to be made in writing. Thus, published information, such as a the visual output of a software program or a video, may be submitted only if reduced to writing, such as in the form of screen shots, and evidence of publication provided if the date of publication is not known. Additionally, physical samples must not be submitted
for consideration. Any physical samples submitted with a third-party submission will not be entered and will be discarded.
Submissions filed pursuant to 37 CFR 1.290 will be reviewed for compliance before being forwarded to an examiner for consideration. During this review, the Office will determine if the documents submitted for consideration appear on their faces to be publications. If any of the submitted documents are found not to be a publication, the entire submission will be found non-compliant. In such a situation, the submission will not be entered into the patent application file or considered by the examiner and will be discarded. If a submission is determined to be compliant, the publications will be considered by the examiner and entered into the file as required by 35 U.S.C. 122(e). If the patent applicant, however, has evidence that a document filed by a third party is, in fact, not a publication, then the applicant can challenge the determination by the Office that the document is a publication, for example, in response to a rejection applying the document in question.
A. Evidence of Publication
In order for a submission to be compliant under 35 U.S.C. 122(e) and 37 CFR 1.290, each item submitted for consideration and inclusion into the file of a patent application must be a publication. Thus, 37 CFR 1.290(e)(4) requires that, if no publication date is known, the third party must provide evidence of publication. As a result, a third-party submission must either include items that are prima facie publications, or evidence that establishes that they are publications. In such situations, the third party may submit evidence in the form of affidavits, declarations, or any other appropriate format. Each item of evidence submitted will be evaluated with respect to both its authenticity and its persuasiveness. Evidence of publication must be specific to the document(s) submitted for consideration.
Any affidavits or declarations submitted as evidence of publication must comply with the Office’s formal requirements. See MPEP § 715.04(II) (providing that “[a]n affidavit is a statement in writing made under oath before a notary public, magistrate, or officer authorized to administer oaths” and that a
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declaration “must include an acknowledgment by the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001 and must also “set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.” [Note that a third party need not state “may jeopardize the validity of the application or any patent issuing therefrom.”]). Affidavits and declarations submitted as evidence of publication should explain how the affiant/declarant has personal knowledge of the facts described therein. Further, affidavits and declarations submitted as evidence of publication must be limited to facts establishing why a submitted document qualifies as a publication and must not to be used as a mechanism to place information that is not pertinent to establishing the document as a publication before the examiner.
For example, a third party might submit a company’s undated marketing brochure for consideration with a declaration from an employee of the company stating that the employee attended a trade show on a particular date and distributed copies of the brochure being submitted for consideration to trade show attendees. In another example, if the third party had emailed the company’s undated marketing brochure to the members of a trade organization without restriction, a copy of the email might be submitted as evidence of publication. In a further example, a third party might submit as evidence of publication a printout from a website showing that the content of the website was publicly available at least as of the date retrieved shown on the printout, or screenshots from a website that establish the content of the website on a particular date. See Subsection II.A.2.c. for information on listing a document obtained from a website that archives Web pages.
Such evidence will not be counted toward the item count for fee purposes, unless the evidence is in the form of a patent document or other printed publication and the evidence, itself, is listed and submitted for consideration by the examiner. In some instances, the copy of the document provided pursuant to 37 CFR 1.290(d)(3) may itself be the evidence, such as where a printout from the website
showing the date the document was retrieved is provided to satisfy the copy requirement. See Subsection II.A.2.c. for information on listing a document where the actual publication date of the submitted document is not known.
B. Need Not Be Prior Art
There is no requirement in 37 CFR 1.290(a) that the information submitted be prior art documents in order to be considered by the examiner. Further, 37 CFR 1.290(a) does not require a third party to indicate whether a listed document is or is not asserted to be prior art. For those documents where the date of publication is not apparent from a review of the document, the third party may provide information regarding the publication date of the document in its accompanying concise description of relevance.
C. Cumulative Information/Information Already of Record
37 CFR 1.290(a) does not prohibit third-party submissions that include patents, published patent applications, or other printed publications that are already of record in an application, where the submission is otherwise compliant. While it would be a best practice for third parties not to submit documents that are cumulative of each other or that are cumulative of information already under consideration by the Office, 37 CFR 1.290(a) does not explicitly prohibit cumulative submissions because it has been the Office’s experience that identifying purely cumulative submissions is difficult where a submission includes both a publication and a description of the publication’s relevance.
A document submitted may appear on its face to be cumulative of information already of record, but its accompanying concise description of relevance may provide additional information with respect to the document, such that the submission of the document, together with the concise description of relevance of the document, is not cumulative of information already of record. For example, a submission would not be considered cumulative where it includes a document previously submitted by the applicant in an information disclosure statement and describes the document’s relevance to the examination of the
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application. In another example, a submission that includes documents cited in the background section of an application would not be considered cumulative if accompanied by concise descriptions of relevance that provide additional information regarding the documents.
D. Of “Potential Relevance to the Examination of the Application”
The standard under 37 CFR 1.290(a) for the documents submitted to be of “potential relevance to the examination of the application” is imposed by 35 U.S.C. 122(e)(1). This standard requires the submitter to believe the documents being submitted are relevant to the extent that the submitter can provide the concise description of the asserted relevance of each document submitted as required by 35 U.S.C. 122(e) and 37 CFR 1.290(d)(2).
IV. FILING A THIRD-PARTY SUBMISSION
A. For Consideration and Inclusion in a “Patent Application”
35 U.S.C. 122(e) provides that any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application. A third-party submission may be directed to any non-provisional utility application, design application, or plant application filed before, on, or after September 16, 2012. Any continuations, divisionals, and continuations-in-part of such applications (as applicable) are also eligible to receive third-party submissions.
1. Applies to Abandoned and Unpublished Applications
35 U.S.C. 122(e) and 37 CFR 1.290 do not require that the application to which a third-party submission is directed be pending or published. A third-party submission made within the statutory time period, and otherwise compliant, will be entered even if the application to which the submission is directed has been abandoned. An examiner will not consider such third-party submission unless the application resumes
a pending status (e.g., the application is revived, the notice of abandonment is withdrawn, etc.). Additionally, a third-party submission made within the statutory time period, and otherwise compliant, will be entered even if the application to which the submission is directed has not been published, for example, due to a nonpublication request filed under 35 U.S.C. 122(b)(2)(B)(i) and 37 CFR 1.213.
2. Cannot Be Filed In Provisional Applications or Post-Issuance Proceedings
35 U.S.C. 122(e) provides for consideration and inclusion of third-party submissions in the record of a patent application, and limits such submissions to publications that are of potential relevance to the examination of the application. Thus, third-party submissions may not be directed to: (1) provisional applications, (2) issued patents, (3) reissue applications, and (4) reexamination proceedings. The Office will not accept third-party submissions in provisional applications as provisional applications are not examined by the Office. Additionally, the Office will not accept third-party submissions in issued patents. The provisions of 35 U.S.C. 301 and 37 CFR 1.501 provide an avenue for third parties who have a need to submit information in an issued patent.
Further, third-party submissions are not permitted in post-issuance proceedings, including reexamination proceedings and reissue applications. See 35 U.S.C. 302 and 35 U.S.C. 311 and MPEP § 1441.01 (“a reissue application is a post-issuance proceeding”). The protest provisions of 37 CFR 1.291 provide an avenue for third parties who have a need to submit information in a reissue application. See MPEP § 1441.01 (“the prohibition against the filing of a protest after publication of an application under 35 U.S.C. 122(c) is not applicable to a reissue application”). Further, where a third-party submission is directed to a reissue application and would otherwise be compliant under 37 CFR 1.290, the Office will enter the submission into the record of a reissue application as a protest under 37 CFR 1.291.
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B. “Any Third Party”
35 U.S.C. 122(e)(1) provides for “[a]ny third party” to file a preissuance submission. Thus, a third-party submission may be filed by any member of the public, including, for example, private persons and corporate entities. However, the third party must not be the applicant or any individual who has a duty to disclose information with respect to the application under 37 CFR 1.56. See 37 CFR 1.290(d)(5)(i).
A third party does not need to be a registered practitioner to file a third-party submission. However, a registered practitioner may file a third-party submission on behalf of an unnamed real party in interest. If a third party wishes to remain anonymous, an attorney or other representative may submit a third-party submission on the third party’s behalf, but the submitter will need to be identified. See Subsection II.E above.
C. No Service on Applicant Required
Third parties are not required to serve the applicant with a copy of the third-party submission. By not requiring service of third-party submissions on the applicant, the Office is underscoring that such third-party submissions will not create a requirement on the part of the applicant to independently file the submitted documents with the Office in an information disclosure statement (IDS).Additionally, not requiring service of third-party submissions on the applicants will prevent challenges regarding whether service of a third-party submission was proper from negatively impacting the pendency of an application.
D. Certificate of Mailing/Transmission Does Not Apply
37 CFR 1.290(i) provides that the provisions of 37 CFR 1.8 do not apply to the time periods set forth in 37 CFR 1.290. See also 37 CFR 1.8(a)(2)(i)(A). Thus, third parties may not use a certificate of mailing or transmission in filing a third-party submission under 37 CFR 1.290. By not according a third-party submission filed by first class mail the benefit of its date of deposit with the USPS pursuant to a 37 CFR 1.8 certificate of mailing, the Office reduces the potential for papers crossing in the mail. That is, the requirement of 37 CFR 1.290(i) reduces
the risk that a third-party submission, if it was permitted to rely on a certificate of mailing to be timely, would not be identified and entered until after an Office action is mailed. The requirement of 37 CFR 1.290(i) also encourages third parties to file third-party submissions at their earliest opportunity.
The United States Postal Service (USPS) Priority
Mail Express® service provisions of 37 CFR 1.10 do apply to a third-party submission under 37 CFR 1.290. See MPEP § 513 for guidance on the Priority
Mail Express® service provisions of 37 CFR 1.10.
E. Electronic Filing
The Office has developed a dedicated Web-based interface to permit third-party submissions under 37 CFR 1.290 to be filed electronically. Third parties can access the Web-based interface by using the Office's electronic filing system (EFS-Web) ava i l a b l e a t w w w. u s p t o . g o v / learning-and-resources/portal-applications. Registered and unregistered eFilers are able to select the “Third-Party Preissuance Submission under 37 CFR 1.290” option upon clicking the "Existing application/patent" radio button. See also the EFS-Web quick start guide for third party preissuance submissions (available at w w w . u s p t o . g o v / s i t e s / default/files/QSG_Third_Party_Preissuance.pdf) for detailed instructions on filing third-party submissions electronically. Filing via EFS-Web is an electronic alternative to paper filing using form PTO/SB/429 (or equivalent). Instead of uploading the form, EFS-Web will automatically generate and complete the form after a third party enters all of the necessary information.
Filing via the dedicated Web-based interface is the most efficient means of making compliant third-party submissions available to an examiner for consideration. Additionally, the Web-based interface will warn a third party if a submission appears to be untimely, as well as verify some of the content of a submission (e.g., U.S. patent data). Also, when filing a third-party submission electronically, a third party will receive immediate, electronic acknowledgment of the Office’s receipt of the submission. The electronic acknowledgment is not an indication that
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the third-party submission is compliant or has been entered; rather, it merely shows Office receipt of the submission. Note that a third party cannot electronically file a third-party submission without a Confirmation Number for the application, which can be obtained by looking up the application number in the Public Patent Application Information Retrieval (PAIR) System located at http://portal.uspto.gov/pair/PublicPair and viewing the Bibliographic Data. If the Confirmation Number is not available or not known, the third-party submission cannot be filed electronically and instead must be filed in paper.
The EFS-Web Legal Framework prohibited third-party submissions under former 37 CFR 1.99 from being filed electronically in patent applications because documents filed electronically via EFS-Web were instantly loaded into the Image File Wrapper (IFW). See Legal Framework for Electronic Filing System—Web (EFS-Web), 74 FR 55200, 55202, 55206-7 (October 27, 2009). Third-party submissions under 37 CFR 1.290 that are filed electronically via the dedicated Web-based interface for preissuance submissions in EFS-Web, however, will not be instantly loaded into the IFW. Thus, third-party submissions under 37 CFR 1.290 are permitted to be filed electronically via the dedicated Web-based interface for preissuance submissions because such submissions will be screened for compliance with the requirements of 35 U.S.C. 122(e) and 37 CFR 1.290 before being entered into the IFW of an application. Note that protests under 37 CFR 1.291 are still prohibited from being filed electronically in patent applications.
Electronically-filed third-party submissions not made via the dedicated Web-based interface for preissuance submissions are prohibited and will be discarded ( i.e., a third party must select the “Third-Party Preissuance Submission under 37 CFR 1.290” option in EFS-Web when filing electronically and not the “Document/Fees for an existing application/proceeding” option, which is only available for the applicant or applicant’s representative). Further, applicants must not file follow-on papers in their applications via the dedicated option for third-party submissions.
F. Paper Filing
Additionally, third-party submissions may be filed in paper via first-class mail, United States Postal
Service (USPS) Priority Mail Express® service pursuant to 37 CFR 1.10, or delivery by hand. Instructions for filing a third-party submission in paper using form PTO/SB/429 (or equivalent) are located at www.uspto.gov/sites/ default/files/documents/3prsubmission_instructions.pdf.
Pursuant to 37 CFR 1.6(d)(3), third-party submissions may not be filed by facsimile. Facsimile transmissions, although not subject to the delay associated with first class mail, are often received in poor quality, which may result in illegible content and cause the submission to be found non-compliant. Because facsimile transmission of third-party submissions under 37 CFR 1.290 is not permitted, the use of a certificate of transmission pursuant to 37 CFR 1.8 is not applicable to third-party submissions.
When filing a third-party submission in paper, a third party may include a self-addressed postcard with the submission to receive an acknowledgment by return receipt postcard that a third-party submission has been received. The return receipt postcard is not an indication that the third-party submission is compliant or has been entered; rather, it merely shows Office receipt of the submission. Where a third-party submission is filed in an unpublished application, a returned postcard acknowledging receipt will not indicate whether such application in fact exists or the status of any such application because, pursuant to 35 U.S.C. 122, original applications are kept in confidence unless published under 35 U.S.C. 122(b) or available to the public pursuant to 37 CFR 1.14(a)(1)(iv), (v), or (vi). Thus, unless a third party has been granted access to an original application, the third party is not entitled to obtain from the Office any information concerning the same, including the mere fact that such an application exists.
Electronic filing via the dedicated Web-based interface is the most efficient means of making compliant third-party submissions available to an examiner for consideration, as compliant third-party submissions filed in paper will experience a delay
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in entry due to the additional processing required for scanning and indexing of paper submissions into electronic form. Additionally, third parties filing third-party submissions electronically via the dedicated Web-based interface will receive immediate, electronic acknowledgment of the Office’s receipt of the submission, instead of waiting for the Office to mail a return receipt postcard when provided with a paper submission.
V. NO THIRD-PARTY PARTICIPATION
The involvement of a third party in filing a submission under 37 CFR 1.290 ends with the filing of the submission. The third party filing the submission will not receive any communications from the Office relating to the submission other than the electronic acknowledgement receipt ( see Subsection IV.E.), the return of the self-addressed postcard ( see Subsection IV.F.), or a notification to the third party regarding its third-party submission ( see Subsection VI.A.1.). A third party is not permitted to contact the examiner. Questions regarding a third-party submission may be directed to the AIA help telephone (1-855-HELPAIA) or AIA email (HelpAIA@uspto.gov), or to the point of contact listed on a notification to the third party regarding its third-party submission. Further, because the prosecution of a patent application is an ex parte proceeding, a third party is not permitted to respond to an examiner’s treatment of the third-party submission in the application ( see Subsection VI.B.).
VI. TREATMENT OF A THIRD-PARTY SUBMISSION
A. Submissions Screened for Compliance Prior to Entry in an Application
Third-party submissions, whether submitted in paper or electronically via the dedicated Web-based interface, will not be automatically entered into the electronic image file wrapper (IFW) of an application, i.e., will not be made of record in the application. Instead, third-party submissions submitted by third parties will be reviewed by the Office to determine compliance with 35 U.S.C. 122(e) and 37 CFR 1.290 before being entered into
the IFW. The Office has established procedures to complete its compliance determination, for both paper and electronic submissions, promptly following receipt of the submission so that compliant third-party submissions will be quickly entered into the IFW and made available to the examiner for consideration. Third-party submissions filed in paper, however, will incur more processing delay than submissions filed electronically via the dedicated Web-based interface for preissuance submissions due to the scanning and indexing process. Each Technology Center (TC) has designated points of contact for screening third-party submissions made in applications docketed to the respective TCs.
37 CFR 1.290(a) provides that a third-party submission may not be entered or considered by the Office if any part of the submission is not in compliance with 35 U.S.C. 122(e) and 37 CFR 1.290. The Office will enter a third-party submission that is compliant with both 35 U.S.C. 122(e) and 37 CFR 1.290; however, any part of a third-party submission that is non-compliant with respect to the requirements of 35 U.S.C. 122(e), whether or not the third-party submission is otherwise compliant with 37 CFR 1.290, will prevent entry of the entire third-party submission into the record. By contrast, a third-party submission that is compliant with 35 U.S.C. 122(e), but non-compliant with some requirement of 37 CFR 1.290, may be entered into the record if the error is of such a minor character that, in the opinion of the Office, it does not raise an ambiguity as to the content of the submission. For example, if an error with respect to a requirement of 37 CFR 1.290 is of such a nature that the content of the third-party submission can still be readily ascertained (e.g., a U.S. patent is identified by the correct patent number and issue date but the name of the first named inventor is clearly misspelled), the Office may have enough information to be able to enter the third-party submission into the record despite the error. However, the determination of whether to enter or not to enter a submission that partially complies with a requirement of 37 CFR 1.290 will be made on a case-by-case basis and at the sole discretion of the Office ( e.g., the Office may decline to enter a third-party submission listing a U.S. patent whose patent number does not match Office records with respect to that patent number’s issue date and/or first named inventor). In any event,
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the Office will either enter or not enter the entire submission and will not attempt to enter portions of partially compliant submissions.
Non-compliant third-party submissions, except those submissions having a non-compliance of minor character noted above, will not be entered into the IFW of an application or considered, and will be discarded. Also, the Office will not refund the required fees in the event a third-party submission is determined to be non-compliant. The statutory time period for making a third-party submission will not be tolled by an initial non-compliant submission. The Office will not set a time period for a third party to file a corrected third-party submission. Additionally, the Office will not accept amendments to a non-compliant submission that was previously filed. Instead, a third party who previously filed a non-compliant submission may file another complete submission, provided the statutory time period for filing a submission has not closed. See also Subsection II.F.2. (fee is required for a resubmission after a finding of non-compliance).
1. Notification to Third Party Regarding Third-Party Submission
A third-party may request a courtesy electronic mail message (email) notification in the event their third-party submission is found to be compliant or non-compliant. Such request may be made when filing electronically by selecting the appropriate check box and entering an email address to which the notification should be directed in the “Request for Notification Regarding Third-Party Preissuance Submission” section of the Office’s dedicated Web-based interface for preissuance submissions. Such request may be made when filing in paper by including a separate paper with the third-party submission clearly titled “REQUEST FOR NOTIFICATION REGARDING THIRD-PARTY PREISSUANCE SUBMISSION” and clearly indicating the email address to which the notification should be directed.
A notification of non-compliance will include the reason(s) for non-compliance ( e.g., no concise description of relevance was provided for a listed document, the concise description of relevance for a listed document was improper, the submission was
not timely, etc.). The non-compliant third-party submission will not be made of record in the application.
No notification will be issued where a third party does not provide an email address with the submission. Further, no notification will be issued where the third-party submission is directed to an unpublished application. See Subsection IV.F. (unpublished patent applications preserved in confidence).
The notification to the third party will not be made of record in the application. Further, the Office does not intend to enter the email address provided for notification into the record of the patent application.
2. Notification to Applicant of Compliant Third-Party Submission
An applicant will be notified upon entry of a compliant third-party submission in their application file where the applicant participates in the Office’s e-Office Action program, and the contents of a compliant third-party submission will be made available to the applicant after it has been entered in the IFW of the application. An applicant may view non-patent documents identified in a third-party submission document list via the Office’s private Patent Application Information Retrieval (PAIR) system. The applicant will not be notified of a non-compliant submission.
3. Applicant Need Not Reply To a Third-Party Submission
37 CFR 1.290(h) provides that in the absence of a request by the Office, an applicant need not reply to a third-party submission under 37 CFR 1.290. Where the Office believes information from applicant is needed, the Office may issue a requirement for information pursuant to37 CFR 1.105.
B. Examiner Consideration of Third-Party Submissions
Once a third-party submission has been screened and found compliant, the submission will be entered into the IFW for examiner consideration. The examiner should consider the listed publications and accompanying concise descriptions in the third-party
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submission in the same manner as information in an information disclosure statement (IDS), generally before issuing the next Office action. Entry of a third-party submission does not expedite the application.
During examination, the examiner should sign form PTO/SB/429 (or equivalent) in the same manner as an IDS to indicate all the items and their concise descriptions have been considered. The examiner’s signature does not indicate the examiner agrees with the third party’s position regarding the publication, but only that the examiner considered the submission. Further, the examiner should clear the submission’s IDS flag in PALM and provide a signed copy of the PTO/SB/429 with the next Office action. There is no need for the examiner to comment on the submitted documents or the concise descriptions of relevance in the Office action. However, the examiner should apply the information as deemed necessary (i.e., in a rejection of a claim). Also, the applicant need not respond to the third-party submission in the absence of a request by the Office to do so. See 37 CFR 1.290(h). Where the examiner believes information from the applicant is needed, the examiner may issue a requirement for information pursuant to 37 CFR 1.105. In no circumstance may an examiner direct a requirement for information to the third party that submitted the paper under 37 CFR 1.290. Further, because the prosecution of a patent application is an ex parte proceeding, no response from a third party with respect to an examiner’s treatment of the third-party submission will be permitted or considered.
Documents from a third-party submission that were considered by the examiner will be printed on the patent, similar to the way documents from an IDS that were considered by the examiner are printed on the patent. Documents cited by third-parties under 37 CFR 1.290 will be distinguished on an issued patent from documents cited by the applicant and by the examiner.
In the unlikely event an examiner believes a submission is non-compliant ( e.g., the examiner believes a submitted document is not a publication), the examiner should immediately consult the
screener or other appropriate TC point of contact. If as a result of such consultation it is determined that the examiner should not consider a listed document, the examiner should strike through the document to indicate that the examiner did not consider either the document or its accompanying concise description. In some instances, the stricken document may be cited by the examiner on a form PTO-892
1135 PGPub Forms [R-11.2013]
The following PGPub forms are available on the USPTO website (www.uspto.gov) and are reproduced at the end of this section:
Form PTO/AIA/24A, “Petition for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c),” may be used by applicant in an application filed on or after September 16, 2012 for filing a petition for express abandonment to avoid publication under 37 CFR 1.138(c). Form PTO/SB/24A, “Petition for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c),” may be used by applicant in an application filed before September 16, 2012 for filing a petition for express abandonment to avoid publication under 37 CFR 1.138(c). See MPEP § 1125. Form PTO/SB/35, “Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i),” may be used by applicant for filing a request for nonpublication and the certification under 35 U.S.C. 122(b)(2)(B)(i) upon the filing of an application. See MPEP § 1122. Form PTO/SB/36 (revision April 2001 or later), “Rescission of Previous Nonpublication Request (35 U.S.C. 122(b)(2)(B)(ii))) and, if Applicable, Notice of Foreign Filing (35 U.S.C. 122(b)(2)(B)(iii)),” may be used by applicant for filing a request for rescinding a previously filed nonpublication request and/or for filing a notice of foreign filing. The certificate of mailing or transmission only applies when applicant is filing a notice of foreign filing. See MPEP §§ 1123 and 1124. Form PTO/SB/64a, “Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f),” may be used by applicant for filing a petition to revive an application abandoned for failure to notify the Office of a foreign filing. See MPEP § 1124.
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Chapter 1200 Appeal
Introduction1201 Composition of Board1202 Administrative Handling1203 Notice of Appeal1204
Reinstatement of Appeal1204.01 Pre-Appeal Brief Review Request and Conference Pilot Program
1204.02
Interviews After Notice of Appeal1204.03 Official Record on Appeal1204.04
Appeal Brief1205 Time for Filing Appeal Brief1205.01 Appeal Brief Content1205.02 Non-Compliant Appeal Brief and Amended Brief
1205.03
Amendments and Affidavits or Other Evidence Filed With or After Appeal
1206
Examiner’s Answer1207 Appeal Conference1207.01 Contents of Examiner’s Answer1207.02 New Ground of Rejection in Examiner’s Answer
1207.03
Determining Whether a Ground of Rejection is New
1207.03(a)
Petition to Designate a New Ground of Rejection and to Reopen Prosecution
1207.03(b)
Appellant's Reply to New Grounds of Rejection
1207.03(c)
Reopening of Prosecution After Appeal
1207.04
Substitute Examiner’s Answer1207.05 Reply Briefs and Fee for Forwarding Appeal
1208
Fee for Forwarding an Appeal to the Board
1208.01
Oral Hearing1209 Actions Subsequent to Examiner’s Answer but Before Board’s Decision
1210
Remand by Director or Board1211 Remand by Board for Further Consideration of Rejection
1211.01
Remand To Consider Amendment1211.02 Remand To Consider Affidavits or Declarations
1211.03
Remand by Board for Further Search1211.04 Board Requires Appellant to Address Matter
1212
Decision by Board1213 [Reserved]1213.01 New Grounds of Rejection by Board1213.02
Publication of and Public Access to Board Decision
1213.03
Procedure Following Decision by Board1214 Procedure Following New Ground of Rejection by Board
1214.01
[Reserved]1214.02 Rehearing1214.03 Examiner Reversed1214.04 Cancellation of Claims Not Appealed1214.05 Examiner Sustained in Whole or in Part
1214.06
Reopening of Prosecution1214.07 Withdrawal or Dismissal of Appeal1215
Withdrawal of Appeal1215.01 Claims Standing Allowed1215.02 Partial Withdrawal1215.03 Dismissal of Appeal1215.04
Judicial Review1216 Appeals to the U.S. Court of Appeals for the Federal Circuit
1216.01
Civil Suits Under 35 U.S.C. 145 and 146
1216.02
[Editor Note, October 2015: This chapter was not substantively revised in the Ninth Edition, Revision 07.2015 of the MPEP. However, as a result of the publication process, the form paragraphs reproduced herein have been updated and may include substantive changes. A future revision will revise sections of this chapter as necessary for consistency with the form paragraph changes. In addition, in MPEP § 1202, "September 16, 2102" was corrected to "September 16, 2012" following the reproduction of 35 U.S.C. 6, and in MPEP § 1214.06, the spelling of "Notice of Abandonment" was corrected. Previous editions and revisions of the MPEP are available on the MPEP Archives page ( w w w . u s p t o . g o v / w e b / o f fi c e s / pac/mpep/old/index.htm).]
1201 Introduction [R-11.2013]
The United States Patent and Trademark Office (Office) in administering the Patent Laws makes many decisions of a substantive nature which the applicant may feel deny him or her the patent protection to which he or she is entitled. The differences of opinion on such matters can be justly resolved only by prescribing and following judicial procedures. Where the differences of opinion
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concern the denial of patent claims because of prior art or other patentability issues, the questions thereby raised are said to relate to the merits, and appeal procedure within the Office and to the courts has long been provided by statute (35 U.S.C. 134).
Throughout this chapter, "Board" is used to refer the Patent Trial and Appeal Board and its predecessor organizations, the Board of Patent Appeals and Interferences and the separate Board of Appeals and Board of Interferences.
The processing of ex parte appeals to the Board was significantly changed by Pub. L. 112-29 (September 16, 2011)(known as the Leahy-Smith America Invents Act or the AIA) and by the final rule “Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, 76 Fed. Reg. 72270 (November 22, 2011). Unless otherwise noted, the discussion of the ex parte appeal practice before the Board in this chapter is primarily directed to appeals wherein the notice of appeal was filed on or after January 23, 2012, or to proceedings commenced on or after September 16, 2012.
For information pertaining to the Board’s ex parte appeal practice and procedure in effect prior to September 16, 2012, see Chapter 1200 in the MPEP 8th Edition, Rev. 9 (August 2012)(available on the U S P T O w e b s i t e a t www.uspto.gov/web/offices/pac/mpep/mpep.htm.
The line of demarcation between appealable matters for the Board and petitionable matters for the Director of the U.S. Patent and Trademark Office (Director) should be carefully observed. The Board will not ordinarily hear a question that should be decided by the Director on petition, and the Director will not ordinarily entertain a petition where the question presented is a matter appealable to the Board. However, because 37 CFR 1.181(f) states that any petition not filed within 2 months from the action complained of may be dismissed as untimely and since 37 CFR 1.144 states that petitions from restriction requirements must be filed no later than appeal, petitionable matters will rarely be present in a case by the time it is before the Board for a decision. In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990).
This chapter is primarily directed to ex parte appeals. For appeals in inter partes reexamination proceedings, see 37 CFR 41.60 to 41.81 and MPEP § 2674 to § 2683.
1202 Composition of Board [R-11.2013]
35 U.S.C. 6 provides for a Patent Trial and Appeal Board as follows:
35 U.S.C. 6 Patent Trial and Appeal Board.
(a) ESTABLISHMENT AND COMPOSITION.— There shall be in the Office a Patent Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Secretary, in consultation with the Director. Any reference in any Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to the Board of Patent Appeals and Interferences is deemed to refer to the Patent Trial and Appeal Board.
(b) DUTIES.— The Patent Trial and Appeal Board shall—
(1) on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a);
(2) review appeals of reexaminations pursuant to section 134(b);
(3) conduct derivation proceedings pursuant to section 135; and
(4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32.
(c) 3-MEMBER PANELS.— Each appeal, derivation proceeding, post-grant review, and inter partes review shall be heard by at least three members of the Board, who shall be designated by the Director. Only the Patent Trial and Appeal Board may grant rehearings.
(d) TREATMENT OF PRIOR APPOINTMENTS.—The Secretary of Commerce may, in the Secretary’s discretion, deem the appointment of an administrative patent judge who, before the date of the enactment of this subsection, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administrative patent judge. It shall be a defense to a challenge to the appointment of an administrative patent judge on the basis of the judge’s having been originally appointed by the Director that the administrative patent judge so appointed was acting as a de facto officer.
35 U.S.C. 6 was amended in Pub. L. 112-29, sec. 7. In addition to changing the duties of the Board and clarifying its membership, the name of the Board
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was changed from the Board of Patent Appeals and Interferences (BPAI) to the Patent Trial and Appeal Board (PTAB), effective September 16, 2012. Consistent with 35 U.S.C. 6(a), examiners should treat any reference to the BPAI (or its predecessors, the separate Board of Appeals and Board of Interferences) as a reference to the PTAB. In a citation to a decision of the Board (e.g., in an Office action or Appeal Brief), decisions mailed prior to September 16, should continue to be cited as decisions of the BPAI or its predecessor organizations.
As provided by 37 CFR 41.2, “Board” means the Patent Trial and Appeal Board and includes:
(A) For a final Board action:
(1) In an appeal or contested case, a panel of the Board;
(2) In a proceeding under 37 CFR 41.3, the Chief Administrative Patent Judge or another official acting under an express delegation from the Chief Administrative Patent Judge.
(B) For non-final actions, a Board member or employee acting with the authority of the Board.
“Board member” means the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges.
1203 Administrative Handling [R-11.2013]
Ex parte appeals to the Board, and documents relating thereto filed prior to a docketing notice from the Board, are reviewed to determine the business unit of the Office responsible for their processing. Appeal documents, such as the notice of appeal, pre-appeal brief request for review (See MPEP § 1204.02), and request for extension of time to file the brief, are processed by the Patent Appeal Center.
Appeal Briefs are processed by the Board. See 75 FR 15689, "Streamlined Procedure for Appeal Brief Review," March 30, 2010 and 75 FR 29321,
"Streamlined Procedure for Appeal Brief Review in Ex Parte Reexamination Proceedings," May 25, 2010.
The Board's responsibility for determining whether an appeal brief is compliant is not considered a transfer of jurisdiction when an appeal brief is filed, but rather is only a transfer of the specific responsibility of notifying appellant under 37 CFR 41.37(d) of the reasons for non-compliance. The Patent Examining Corps retains jurisdiction over the application to consider the appeal brief, conduct an appeal conference, draft an examiner's answer, and decide the entry of amendments, evidence, and information disclosure statements filed after final or after notice of appeal.
Therefore, examiners should not identify notices of appeal, appeal briefs or reply briefs as defective or noncompliant for failure to comply with the rules. In the rare situation where a substantial defect in an appeal document is identified after these reviews, the examiner should contact the Patent Appeal Center to determine whether corrective action should be taken.
The Patent Appeal Center may return the application to the examiner for corrections to the examiner's answer or other outgoing documents when appropriate.
If the brief is not filed within the time designated by 37 CFR 41.37, the applicant will be notified that the appeal stands dismissed. See MPEP § 1215.
I. DOCKETING PROCEDURE
The Board’s docketing procedure is designed to provide notification to the appellant within one month of receipt of an appealed application at the Board that (A) the appeal has been received at the Board and docketed, or (B) the appeal is being remanded to the examiner for attention to unresolved matters.
If the appeal is ready for docketing three events will occur:
(A) an appeal number will be assigned;
(B) the Board will issue a docketing notice; and
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(C) the appeal will be assigned either to a master docket for subsequent reassignment to a panel or directly to a panel of at least three Board members.
If the appeal cannot be docketed due to matters requiring further attention in the patent examining corps, the appeal will be remanded to the patent examining corps with an order indicating why the appeal cannot be docketed. Notification of the remand, in the form of a copy of the order, will be mailed to the appellant.
The docketing notice or order indicating why the appeal cannot be docketed will provide the appellant and the examiner with notification that (A) the appeal is under the jurisdiction of the Board; or (B) that the appeal is being returned to the patent examining corps to resolve matters requiring attention prior to decision of the appeal. Thus, the appellant will know to which organization to look for the next communication in the appealed application.
II. “SPECIAL CASE”
Subject alone to diligent prosecution by the applicant, an application for patent that once has been made special and advanced out of turn by the United States Patent and Trademark Office (Office) for examination will continue to be special throughout its entire course of prosecution in the Office, including appeal, if any, to the Board. See MPEP § 708.01.
A petition to make an application special after the appeal has been forwarded to the Board may be addressed to the Board. However, no such petition will be granted unless the brief has been filed and applicant has made the same type of showing required by the Director under 37 CFR 1.102. Therefore, diligent prosecution is essential to a favorable decision on a petition to make special.
1204 Notice of Appeal [R-11.2013]
35 U.S.C. 134 Appeal to the Patent Trial and Appeal Board.
(a) PATENT APPLICANT.— An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.
(b) PATENT OWNER.— A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.
35 U.S.C. 41 Patent fees; patent and trademark search systems
(a) GENERAL FEES. — The Director shall charge the following fees:
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(6) APPEAL FEES. —
(A) On filing an appeal from the examiner to the Patent Trial and Appeal Board, $540.
(B) In addition, on filing a brief in support of the appeal, $540, and on requesting an oral hearing in the appeal before the Patent Trial and Appeal Board, $1,080.
An additional fee for forwarding an appeal to the Board after Examiner's Answer is set at 37 CFR 41.20(b)(4).
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37 CFR 41.31 Appeal to Board.
(a) Who may appeal and how to file an appeal An appeal is taken to the Board by filing a notice of appeal.
(1) Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
(2) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title before November 29, 1999, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
(3) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title on or after November 29, 1999, any of whose claims has been finally (§ 1.113 of this title) rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
(b) The signature requirements of §§ 1.33 and 11.18(a) of this title do not apply to a notice of appeal filed under this section.
(c) An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal can be considered.
(d) The time periods set forth in paragraphs (a)(1) through (a)(3) of this section are extendable under the provisions of §
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1.136 of this title for patent applications and § 1.550(c) of this title for ex parte reexamination proceedings.
I. APPEAL FEES
Public Law 112-29, sec. 10 authorizes the Director to set or adjust fees “established, authorized, or charged under title 35.” The fees for appeal as set forth in 35 U.S.C. 41(a)(6) have been adjusted by rule at 37 CFR 41.20(b). See 37 CFR 41.20(b)(1) for the fee for the filing of a notice of appeal, 37 CFR 41.20(b)(2)(i) for filing an appeal brief in an application or ex parte reexamination proceeding, and 37 CFR 41.20(b)(3) for a request for oral hearing.
Effective March 19, 2013, the fee for filing an appeal brief in an application or ex parte reexamination (37 CFR 41.20(b)(2)(i)) was reduced to $0, and a new fee for forwarding an appeal in an application or ex parte reexamination proceeding to the Board after the mailing of an examiner's answer was added at 37 CFR 41.20(b)(4). See 37 CFR 41.45 and MPEP § 1208.01 for additional information pertaining to the forwarding fee.
II. APPEAL BY PATENT APPLICANT
Under 37 CFR 41.31(a)(1), an applicant for a patent dissatisfied with the primary examiner’s decision in the second or subsequent rejection of his or her claims may appeal to the Board for review of the examiner’s rejection by filing a notice of appeal and the required fee set forth in 37 CFR 41.20(b)(1) within the time period provided under 37 CFR 1.134 and 1.136. A notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim(s) has/have been finally rejected. The limitation of “twice rejected” does not have to be related to a particular application. See Ex Parte Lemoine, 46 USPQ2d 1420, 1423 (Bd. Pat. App. & Inter. 1994) (“so long as the applicant has twice been denied a patent, an appeal may be filed”). For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant can choose to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application. Applicant cannot file an appeal in a continuing application, or after filing a request for continued examination (RCE) under 37 CFR 1.114,
until the application is under a rejection. Accordingly, applicant cannot file a notice of appeal with an RCE regardless of whether the application has been twice rejected prior to the filing of the RCE.
If appellant files an amendment, a notice of appeal and an appeal brief on the same date after the mailing of a final action, 37 CFR 1.116 applies. Such an amendment filed after a final action is not entered as a matter of right. It may be admitted if it cancels claims or complies with any requirement of form expressly set forth in a previous Office action; presents rejected claims in better form for consideration on appeal; or amends the specification, including claims, upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
If applicant files a reply under 37 CFR 1.111 in response to a second non-final rejection and thereafter files a notice of appeal before the Office considers the reply, the notice of appeal is defective and the Office will answer the reply under 37 CFR 1.111 in due course. Ordinarily, a notice of appeal would have been proper when at least one claim has been twice rejected. In this instance, however, since applicant has elected to request reconsideration of the rejection (or further examination) by filing a reply under 37 CFR 1.111 rather than directly appealing from the second non-final rejection, the notice of appeal is premature. The Office has not had the opportunity to consider the reply under 37 CFR 1.111 and issue an Office action in view of the reply (note that this is different than after-final situations where a reply under 37 CFR 1.116 is not entered as matter of right and applicant is appealing from the final rejection). Applicant must wait to file any appeal until the examiner considers the reply and the claims are rejected again. Once the Office action is mailed in response to the reply applicant may file another notice of appeal under 37 CFR 41.31.
Under 37 CFR 41.31(c), an appeal is presumed to be taken from the rejection of all claims under rejection in a particular application unless cancelled by an amendment filed by the applicant and entered by the Office. Thus, an appeal is presumed to be taken from the rejection of all pending claims under rejection in the application regardless of whether the
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notice of appeal identifies fewer or more than all pending claims under rejection. If an appellant does not file an amendment cancelling claims that the appellant does not wish to appeal, but then also fails to provide any argument in the appeal brief directed to those claims, any challenge to that ground of rejection has been waived, and the Board has discretion to simply affirm any rejections against such claims. See e.g. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008). See also MPEP § 1205.02.
Although the rules do not require that the notice of appeal be signed, applicants may file notices of appeal which are signed. It should be noted that the elimination of the requirement to sign a notice of appeal does not affect the requirements for other papers (such as an amendment under 37 CFR 1.116) submitted with the notice, or for other actions contained within the notice, e.g., an authorization to charge fees to a deposit account or to a credit card, to be signed. See MPEP § 509. Thus, failure to sign the notice of appeal may have unintended adverse consequences; for example, if an unsigned notice of appeal contains an (unsigned) authorization to charge the notice of appeal fee to a deposit account, the notice of appeal will be unacceptable because the notice of appeal fee is lacking.
The notice of appeal must be filed within the period for reply set in the last Office action, which is normally 3 months for applications. See MPEP § 714.13. For example, failure to remove all grounds of rejection and otherwise place an application in condition for allowance or to file an appeal after final rejection will result in the application becoming abandoned, even if one or more claims have been allowed. The notice of appeal and appropriate fee may be filed up to 6 months from the date of the Office action (e.g., a final rejection) from which the appeal was taken, so long as an appropriate petition and fee for an extension of time under 37 CFR 1.136(a) is filed either prior to or with the notice of appeal.
The use of a separate letter containing the notice of appeal is strongly recommended. Form PTO/SB/31 may be used for filing a notice of appeal. Appellant must file an appeal brief in compliance with 37 CFR
41.37 accompanied by the fee set forth in 37 CFR 41.20(b)(2) within two months from the date of filing the notice of appeal. See MPEP § 1205. Effective March 19, 2013, the fee for filing an appeal brief in an application or ex parte reexamination was set at $0. For as long as this fee remains at $0, appeal briefs will not be held defective for failure to pay this fee or make any statement about this fee.
III. APPEAL BY PATENT OWNER
37 CFR 41.31(a)(2) and (a)(3) provide for appeal to the Board by the patent owner from any decision in an ex parte reexamination proceeding adverse to patentability, in accordance with 35 U.S.C. 306 and 35 U.S.C. 134. See also MPEP § 2273.
In an ex parte reexamination filed before November 29, 1999, the patent owner may appeal to the Board after the second rejection of the claims.
In an ex parte reexamination filed on or after November 29, 1999, the patent owner may appeal to the Board only after the final rejection of one or more claims in the particular reexamination proceeding for which appeal is sought.
The fee for filing the notice of appeal by a patent owner is set forth in 37 CFR 41.20(b)(1), and the time period to pay the fee is determined as provided in 37 CFR 1.134 and 37 CFR 1.550(c).
Failure to file an appeal in an ex parte reexamination proceeding will result in issuance of the reexamination certificate under 37 CFR 1.570.
Appeals to the Board in inter partes reexamination proceedings filed under 35 U.S.C. 311 are governed by 37 CFR 41.60 through 41.81. 37 CFR 41.30 through 41.54 are not applicable to appeals in inter partes reexamination proceedings. See MPEP § 2674 to § 2683 for appeals in inter partes reexamination proceedings.
The use of a separate letter containing the notice of appeal is strongly recommended. Form PTO/SB/31 or Form PTO/AIA/31 may be used for filing a notice of appeal.
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IV. ACKNOWLEDGEMENT
Appellant may check the status of the application and the receipt date of the notice of appeal on the Office’s Patent Application Information Retrieval (PAIR) system via the Internet.
Where the notice of appeal is filed by mail, the Office does not acknowledge receipt of a notice of appeal by separate letter. However, if a self-addressed postcard is included with the notice of appeal, it will be date stamped and mailed.
V. DEFECTIVE NOTICE OF APPEAL
Notices of appeal are reviewed by the Patent Appeal Center. If a notice of appeal is defective, the Office will notify the applicant of the non-compliance. A notice of appeal is not a proper reply to the last Office action if none of applicant's claims have been twice rejected. A notice of appeal is defective if it was not timely filed within the time period set forth in the last Office action, or the notice of appeal fee set forth in 37 CFR 41.20(b)(1) was not timely filed.
Form PTOL-461 (Rev. 9-04 or later), Communication Re: Appeal, should be used to indicate defects in a notice of appeal. This communication is done by the Patent Appeal Center rather than by the examiner. In the rare event that these defects are identified after the notice of appeal is entered, the examiner should contact the Patent Appeal Center to determine the appropriate action to take.
When appellant files an appeal brief without first filing a notice of appeal, the Office treats the appeal brief as a notice of appeal and an appeal brief. For this situation, appellant must file the brief within the time period for reply set forth in the last Office action and the brief must be accompanied by the fees under 37 CFR 41.20(b)(1) and (b)(2) for filing a notice of appeal and an appeal brief in compliance with 37 CFR 41.31 and 41.37. Effective March 19, 2013, the fee for filing an appeal brief in an application or ex parte reexamination was set at $0. For as long as this fee remains at $0, appeal briefs will not be held defective for failure to pay this fee or make any statement about this fee.
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1204.01 Reinstatement ofAppeal [R-11.2013]
If an appellant wishes to reinstate an appeal after prosecution is reopened, appellant must file a new notice of appeal in compliance with 37 CFR 41.31 and a complete new appeal brief in compliance with 37 CFR 41.37. Any previously paid appeal fees set forth in 37 CFR 41.20 for filing a notice of appeal, filing an appeal brief (if applicable), requesting an oral hearing (if applicable) and forwarding the appeal to the Board (if applicable) will be applied to the new appeal on the same application as long as a final Board decision has not been made on the prior appeal. If, however, the appeal fees have increased since they were previously paid, then appellant must pay the difference between the current fee(s) and the amount previously paid. Appellant must file a complete new appeal brief in compliance with the format and content requirements of 37 CFR 41.37(c) within two months from the date of filing the new notice of appeal. See MPEP § 1205.
1204.02 Pre-Appeal Brief Review Request and Conference Pilot Program [R-11.2013]
When a notice of appeal is filed in an application, appellants may also request a pre-appeal brief review. See “Pre-Appeal Brief Conference Pilot Program,” 1296 OG 67 (July 12, 2005) and “Extension of the Pilot Pre-Appeal Brief Conference Program,” 1303 OG 21 (February 7, 2006). This program does not apply to reexamination proceedings. Presenting a request for pre-appeal brief review does not change the fee required to file a notice of appeal and does not require a separate fee. No extensions of time to file the request for review later than the notice of appeal are available.
Upon receipt of a properly filed request, a supervisor will designate a panel of appropriate examiners to review the appellant's remarks and the examiner's rejections. Those reviewers will include at least a supervisor and the examiner of record and will have the authority to reopen prosecution if appropriate. The appellant will not be permitted to attend the review and no interviews will be granted prior to issuance of the pre-appeal brief review decision.
For as long as this pilot program remains in effect, submission of a pre-appeal review request may
extend the period for filing an appeal brief until a decision is made on the request or the request is otherwise dismissed.
1204.03 Interviews After Notice of Appeal [R-11.2013]
As indicated in MPEP § 713.09, one interview after final rejection is normally permitted. Where a notice of appeal is filed in an application or ex parte reexamination, the phrase "after final rejection" includes only the time from the mailing of the final rejection through the filing of an appeal brief. However, as indicated in the notice "Pre-Appeal Brief Conference Pilot Program," 1296 OG 76 (July 12, 2005), no interviews will be granted from the filing of a request for pre-appeal review through issuance of a decision on the request. See MPEP § 1204.02.
Except in unusual situations, no interview is permitted after the appeal brief is filed. See MPEP § 713.05. Where an appeal brief is filed in an application or ex parte reexamination, the phrase "after the appeal brief is filed" includes the time from filing of the appeal brief through the first of a decision by the Board, the mailing by the examiner of a rejection or other paper with a response period, the mailing of a notice of defective appeal brief, or the mailing of a notice of allowance.
Effective March 19, 2013, 37 CFR 41.20(b)(4) sets a fee to forward an appeal to the Board after the mailing of an examiner’s answer. While appellants may desire an interview after mailing of an examiner’s answer and prior to payment of this fee, interviews during this time period are likely to confuse the record on appeal and are not permitted except in unusual situations. These unusual circumstances may include situations where appellant wishes to cancel all appealed claims and proceed to issue with claims previously indicated as allowable, or where the examiner is convinced that some but not all of the previously rejected claims are in condition for allowance.
After the time specified in 37 CFR 41.35(a), the application or ex parte reexamination is no longer under the jurisdiction of the examiner. While the examiner has no jurisdiction over a proceeding after
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the time set in 37 CFR 41.35(a), the Director of the USPTO or appropriate delegate has the authority to remand the proceeding to the examiner under 37 CFR 41.35(c). Requests for interviews on cases under the jurisdiction of the Board should be granted only with specific approval of the Technology Center Director upon a showing in writing of extraordinary circumstances that justify a remand from the Board to the examiner in order to conduct an interview.
1204.04 Official Record on Appeal [R-11.2013]
37 CFR 41.30 Definitions. *****
Evidence means something (including testimony, documents and tangible objects) that tends to prove or disprove the existence of an alleged fact, except that for the purpose of this subpart Evidence does not include dictionaries, which may be cited
before the Board.
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Record means the items listed in the content listing of the Image File Wrapper of the official file of the application or reexamination proceeding on appeal or the official file of the Office if other than the Image File Wrapper, excluding amendments, Evidence, and other documents that were not entered. In the case of an issued patent being reissued or reexamined, the Record further includes the Record of the patent being reissued or reexamined.
The official record on appeal contains the items listed in the content listing of the Image File Wrapper or the official file of the Office if other than the Image File Wrapper, excluding any amendments, evidence, or other documents that were not entered. Because an examiner’s refusal to enter an amendment, evidence, or other document is a petitionable matter that is not subject to review by the Board, the exclusion of such non-entered documents from the definition of "Record" reflects the fact that the Board’s review of patentability determinations is properly based on the record of all entered documents in the file.
An information disclosure statement or petition that is held in abeyance while the Board possesses jurisdiction over the proceeding is not an entered document and therefore is excluded from the definition of ‘‘Record’’ until such time as it is entered.
The definition of ‘‘Record’’ includes the items listed in the content listing of the Image File Wrapper because, in some cases, physical items that form part of the official file are not able to be scanned into the Image File Wrapper and are maintained elsewhere, such as in an artifact file. Some examples of such items include original drawings in design patent applications and sequence listings. In such cases, the Image File Wrapper will include an entry in the content listing that points to this artifact file or other record.
In the case of an issued patent being reissued or reexamined, the Record further includes the Record of the patent being reissued or reexamined.
All references listed on an Information Disclosure Statement (i.e., Form PTO/SB/08a or 08b), which have been indicated as having been considered by the examiner, or listed on a form PTO-892 are included in the definition of Record even if each of the so listed references does not separately appear in the content listing of the Image File Wrapper.
For the purposes of appeal, ‘‘Evidence’’ does not encompass dictionaries. Excluding dictionaries from the definition of ‘‘Evidence’’ thus allows appellants to refer to dictionaries in their briefs, which would otherwise be precluded under 37 CFR 41.33(d)(2) (absent existence of one of the enumerated exceptions). It further allows examiners to refer to dictionaries in the examiner’s answers without automatically rendering a rejection a new ground under 37 CFR 41.39(a)(2). Treating dictionaries in this manner is consistent with Supreme Court and Federal Circuit precedent, which contemplate that such materials may be consulted by tribunals ‘‘at any time.’’ See, e.g., Nix v. Hedden, 149 U.S. 304, 307 (1893) (citations omitted) (admitting dictionaries to understand the ordinary meaning of terms ‘‘not as evidence, but only as aids to the memory and understanding of the court’’); Phillips v. AWH Corp., 415 F.3d 1303, 1322–23 (Fed. Cir. 2005) (en banc) (‘‘[J]udges are free to consult dictionaries and technical treatises at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.’’) (citation
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omitted); In re Boon, 439 F.2d 724, 727–28 (CCPA 1971) (holding citation to dictionary was not tantamount to the assertion of a new ground of rejection ‘‘where such a reference is a standard work, cited only to support a fact judicially noticed and, as here, the fact so noticed plays a minor role, serving only to fill in the gaps which might exist in the evidentiary showing made by the Examiner to support a particular ground for rejection.’’ (emphasis and internal quotations omitted)). Thus, 37 CFR 41.30 permits both the applicant and examiner to submit them to the Board during the briefing stage.
1205 Appeal Brief [R-11.2013]
37 CFR 41.37 Appeal brief.
(a) Timing. Appellant must file a brief under this section within two months from the date of filing the notice of appeal under § 41.31. The appeal brief fee in an application or ex parte reexamination proceeding is $0.00, but if the appeal results in an examiner's answer, the appeal forwarding fee set forth in § 37 CFR 41.20(b)(4) must be paid within the time period specified in § 41.45 to avoid dismissal of an appeal.
(b) Failure to file a brief. On failure to file the brief within the period specified in paragraph (a) of this section, the appeal will stand dismissed.
(c) Content of appeal brief.
(1) Except as otherwise provided in this paragraph, the brief shall contain the following items under appropriate headings and in the order indicated in paragraphs (c)(1)(i) through (v) of this section, except that a brief filed by an appellant who is not represented by a registered practitioner need only substantially comply with paragraphs (c)(1)(i), (c)(1)(ii), (c)(1)(iv), and (c)(1)(v) of this section:
(i) Real party in interest. A statement identifying by name the real party in interest at the time the appeal brief is filed, except that such statement is not required if the named inventor or inventors are themselves the real party in interest. If an appeal brief does not contain a statement of the real party in interest, the Office may assume that the named inventor or inventors are the real party in interest.
(ii) Related appeals, interferences, and trials. A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences, trials before the Board, or judicial proceedings (collectively, "related cases") which satisfy all of the following conditions: involve an application or patent owned by the appellant or assignee, are known to appellant, the appellant’s legal representative, or assignee, and may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal, except that such statement is not required if there are no such related cases. If an appeal brief does not contain a statement of related cases, the Office may assume that there are no such related cases.
(iii) Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the rejected independent claims, which shall refer to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters. For each rejected independent claim, and for each dependent claim argued separately under the provisions of paragraph (c)(1)(iv) of this section, if the claim contains a means plus function or step plus function recitation as permitted by 35 U.S.C. 112(f), then the concise explanation must identify the structure, material, or acts described in the specification in the Record as corresponding to each claimed function with reference to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters. Reference to the patent application publication does not satisfy the requirements of this paragraph.
(iv) Argument. The arguments of appellant with respect to each ground of rejection, and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the Record relied on. The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant. Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal. Each ground of rejection contested by appellant must be argued under a separate heading, and each heading shall reasonably identify the ground of rejection being contested ( e.g., by claim number, statutory basis, and applied reference, if any). For each ground of rejection applying to two or more claims, the claims may be argued separately (claims are considered by appellant as separately patentable), as a group (all claims subject to the ground of rejection stand or fall together), or as a subgroup (a subset of the claims subject to the ground of rejection stand or fall together). When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. Under each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claim(s) by number. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.
(v) Claims appendix. An appendix containing a copy of the claims involved in the appeal.
(2) A brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 37 CFR 1.116 of this title for treatment of amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.33 for treatment of amendments, affidavits or other Evidence filed after the date of filing the appeal. Review of an examiner's
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refusal to admit an amendment or Evidence is by petition to the Director. See § 1.181 of this title.
(d) Notice of non-compliance. If a brief is filed which does not comply with all the requirements of paragraph (c) of this section, appellant will be notified of the reasons for non-compliance and given a time period within which to file an amended brief. If appellant does not, within the set time period, file an amended brief that overcomes all the reasons for non-compliance stated in the notification, the appeal will stand dismissed. Review of a determination of non-compliance is by petition to the Chief Administrative Patent Judge. See § 41.3.
(e) Extensions of time. The time periods set forth in this section are extendable under the provisions of § 1.136 of this title for patent applications and § 1.550(c) of this title for ex parte reexamination proceedings.
1205.01 Time for Filing Appeal Brief [R-11.2013]
37 CFR 41.37(a) provides 2 months from the date of the notice of appeal for the appellant to file an appeal brief and the appeal brief fee set forth in 37 CFR 41.20(b)(2). Any brief in an application or an ex parte reeexamination proceeding filed on or after March 19, 2013 need not be accompanied by an appeal brief fee as the 37 CFR 41.20(b)(2) fee amount on or after that date is set at $0.
The usual period of time in which appellant must file his or her brief is 2 months from the date of appeal. The Office date of receipt of the notice of appeal (and not the date indicated on any Certificate of Mailing under 37 CFR 1.8) is the date from which this 2-month time period is measured. See MPEP § 512. If the notice of appeal is filed in accordance with 37 CFR 1.10 using the “Express Mail Post Office to Addressee” (now "Priority Mail Express") service of the United States Postal Service (USPS), the date of deposit with the USPS is the date from which this 2-month time period is measured because the date of deposit shown by the “date in” on the “Express Mail” label or other official USPS notation is considered to be the date of receipt. See MPEP § 513.
37 CFR 41.37(a) does not permit the brief to be filed within the time allowed for reply to the action from which the appeal was taken even if such time is later. Once appellant timely files a notice of appeal in compliance with 37 CFR 41.31, the time period for reply set forth in the last Office action is tolled and
is no longer relevant for the time period for filing an appeal brief. For example, if appellant filed a notice of appeal within one month from the mailing of a final Office action which sets forth a 3-month shortened statutory period for reply, and then the appellant filed an appeal brief after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, a petition for an extension of time for one month would be required. Similarly, if the appellant files a request for continued examination (RCE) under 37 CFR 1.114, instead of an appeal brief, after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, the petition for an extension of time would be required.
This 2-month time period for a patent application may be extended under 37 CFR 1.136(a), and if 37 CFR 1.136(a) is not available, under 37 CFR 1.136(b) for extraordinary circumstances. In an ex parte reexamination proceeding, the time period can be extended only under the provisions of 37 CFR 1.550(c). See also MPEP § 2274.
In the event that the appellant finds that he or she is unable to file a brief within the time period allotted by the rule, he or she may file a petition for extension of time under 37 CFR 1.136(a) with the appropriate fee. Additional time in excess of 5 months will not be granted unless extraordinary circumstances are involved under 37 CFR 1.136(b). The time extended is added to the calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Saturday, Sunday, or Federal holiday.
¶ 12.210 Extension To File Brief - Granted
The request for an extension of time under 37 CFR 1.136(b) for filing the appeal brief under 37 CFR 41.37 filed on [1] has been approved for [2].
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 2, insert the amount of time the extension of time has been approved for.
3. This form paragraph should only be used when 37 CFR 1.136(a) is not available or has been exhausted, such as in litigation reissues or when appellant requests to reopen prosecution or file a reply brief as set forth in 37 CFR 41.39(b) and 37 CFR 41.50(a)(2).
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¶ 12.211 Extension To File Brief - Denied
The request for an extension of time under 37 CFR 1.136(b) for filing the appeal brief under 37 CFR 41.37 filed on [1] has been disapproved because no sufficient cause for the extension has been shown.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. This form paragraph should only be used when 37 CFR 1.136(a) is not available or has been exhausted, such as in litigation reissues or when appellant requests to reopen prosecution or file a reply brief as set forth in 37 CFR 41.39(b) and 37 CFR 41.50(a)(2) .
When an application is revived after abandonment for failure on the part of the appellant to take appropriate action after final rejection, and the petition to revive was accompanied by a notice of appeal, appellant has 2 months, from the mailing date of the Director’s affirmative decision on the petition, in which to file the appeal brief. The time period for filing the appeal brief may be extended under 37 CFR 1.136.
FAILURE TO TIMELY FILE AN APPEAL BRIEF
The appeal ordinarily will be dismissed if the brief is not filed within the period provided by 37 CFR 41.37(a) or within such additional time as may be properly extended. Effective March 19, 2013, the statutory fee for filing an appeal brief was adjusted to $0. For so long as the fee under 37 CFR 41.20(b)(2) remains $0, the appeal will not be dismissed for failure to pay the fee.
A brief must be filed to preserve appellant’s right to the appealed claims, notwithstanding circumstances such as:
(A) the filing of a petition to invoke the supervisory authority of the Director under 37 CFR 1.181;
(B) the filing of an amendment, even if it is one which the examiner previously has indicated may place one or more claims in condition for allowance, unless the examiner, in acting on the amendment, disposes of all issues on appeal;
(C) the receipt of a letter from the examiner stating that prosecution is suspended, without the
examiner withdrawing the final rejection from which appeal has been taken.
Although failure to file the brief within the permissible time will result in dismissal of the appeal, if any claims stand allowed the application does not become abandoned by the dismissal, but is returned to the examiner for action on the allowed claims. See MPEP § 1215.04. If there are no allowed claims, the application is abandoned as of the date the brief was due. Claims which have been objected to as dependent from a rejected claim do not stand allowed. In an ex parte reexamination proceeding, failure to file the brief will result in the issuance of the certificate under 37 CFR 1.570.
¶ 12.209 Appeal Dismissed - Allowed Claims, Formal Matters Remaining
In view of applicant’s failure to file a brief within the time prescribed by 37 CFR 41.37(a), the appeal stands dismissed and the proceedings as to the rejected claims are considered terminated. See 37 CFR 1.197(b).
This application will be passed to issue on allowed claim [1] provided the following formal matters are corrected. Prosecution is otherwise closed.
[2]
Applicant is required to make the necessary corrections within a shortened statutory period set to expire TWO MONTHS from the mailing date of this letter to avoid ABANDONMENT of the application. Extensions of time may be granted under 37 CFR 1.136.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. This form paragraph should only be used if the formal matters cannot be handled by examiner’s amendment. See MPEP § 1215.04.
3. In bracket 2, insert a description of the formal matters to be corrected.
4. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected. See MPEP § 1215.04.
If the time for filing a brief has passed and the application has consequently become abandoned, the applicant may petition to revive the application under 37 CFR 1.137, as in other cases of abandonment. See MPEP § 711.03(c). If the appeal is dismissed, but the application is not abandoned
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because there is at least one allowed claim, the applicant may file a petition to reinstate the claims and the appeal, but a showing equivalent to that in a petition to revive under 37 CFR 1.137 is required. See MPEP § 711.03(c). In addition to the petition and petition fee, appellant must file:
(A) A request for continued examination (RCE) under 37 CFR 1.114 accompanied by a submission (i.e., a reply under 37 CFR 1.111) and the fee as set forth in 37 CFR 1.17(e) if the application is a utility or plant application filed on or after June 8, 1995, or a continuing application under 37 CFR 1.53(b) (or a CPA under 37 CFR 1.53(d) if the application is a design application); or
(B) An appeal brief and the appeal brief fee to reinstate the appeal. Effective March 19, 2013, the statutory fee for filing an appeal brief in an application or ex parte reexamination proceeding was adjusted to $0. For so long as the fee under 37 CFR 41.20(b)(2) remains $0, the appeal will not be dismissed for failure to pay the fee. A proper brief must be filed before the petition will be considered on its merits.
Where the dismissal of the appeal is believed to be in error, filing a petition, pointing out the error, may be sufficient.
1205.02 Appeal Brief Content [R-11.2013]
Only one copy of the appeal brief is required. Any brief for which the notice of appeal was filed on or after January 23, 2012 must comply with the requirements set forth in current 37 CFR 41.37. For information pertaining to the Board’s ex parte appeal practice and procedure that is applicable if the notice of appeal was filed before January 23, 2012 (or if proceedings were commenced before September 16, 2012), see Chapter 1200 in the MPEP 8th Edition, Rev. 9 (August 2012)(available on the U S P T O w e b s i t e a t www.uspto.gov/web/offices/pac/mpep/mpep.htm).
Appellant must file a brief under 37 CFR 41.37 within two months from the date of filing the notice of appeal under 37 CFR 41.31. The appeal brief fee in an application or ex parte reexamination proceeding is $0.00.For so long as the adjusted fee for filing an appeal brief remains at $0, the brief
need not be accompanied by an attempt to pay the fee under 37 CFR 41.20(b)(2). A brief that is filed on or after January 23, 2012 that fails to comply with the requirements set forth in 37 CFR 41.37(c) shall be held to be non-compliant under 37 CFR 41.37(d). The brief, as well as every other document relating to an appeal, should indicate the number of the Technology Center (TC) to which the application or patent under reexamination is assigned and the application or reexamination control number. Oral argument at a hearing will not remedy deficiencies in a brief. The following discussion of the contents of an appeal brief pertains to briefs filed pursuant to the requirements set forth in 37 CFR 41.37.
An appellant’s brief must present arguments responsive to every ground of rejection stated by the examiner in the Office action from which the appeal has been taken (as modified by any advisory action and/or pre-appeal brief conference decision). See 37 CFR 41.31(c) and 37 CFR 41.37(c)(1)(iv). If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer. See 37 CFR 41.39(a)(1). The fact that appellant may consider a ground to be clearly improper does not justify failure to point out to the Board the reasons for that belief, including an explanation of why the examiner erred as to the ground of rejection.
The mere filing of a document entitled as a brief will not necessarily be considered to be in compliance with 37 CFR 41.37(c). The rule requires that the brief must set forth arguments and the basis therefor, with citations of the statutes, regulations, authorities and parts of the record relied upon. It is essential that the Board be provided with a brief fully stating the position of the appellant with respect to each ground of rejection presented for review in the appeal so that no search of the Record is required in order to determine that position. Thus, the brief should not incorporate or reference previous responses. 37 CFR 41.37(c)(1) requires that the brief contain specific items, as discussed below. The brief must have all of the required items under appropriate headings in the order indicated in 37 CFR 41.37(c)(1). 37 CFR 41.37(c)(1) provides that in
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certain circumstances, the items listed in paragraphs (c)(1)(i) and (c)(1)(ii) may be omitted from an appeal brief and further provides that the Office may assume certain information about the appeal should these items be omitted from the appeal brief. As such, the headings are not required to be included in the appeal brief in the event that an item is not applicable (i.e., the real party in interest is the inventor(s), or there are no related appeals). To assist appellants in complying with 37 CFR 41.37, the Board has posted checklists for notices of appeal and appeal briefs on t h e U S P T O W e b s i t e a t http://www.uspto.gov/ip/boards/bpai/index.jsp .
An exception to the requirement that all the items specified in 37 CFR 41.37(c)(1) be included in the brief is made if the application or reexamination proceeding is being prosecuted by the appellant pro se, i.e., there is no attorney or agent of record, and the brief was neither prepared nor signed by a registered attorney or agent. The brief of a pro se appellant which does not contain all of the items specified in 37 CFR 41.37(c)(1) will be accepted as long as it substantially complies with the requirements of subparagraphs (i), (ii), (iv) and (v).
While it is no longer a requirement to include an evidence appendix, the Office strongly encourages and appreciates receiving copies of the evidence relied upon (e.g., copies of declarations and affidavits, evidence of secondary considerations, etc.). This ensures that the Board is considering the proper evidence and avoids any confusion as to the particular evidence referenced in the appeal brief. In the alternative, the Board recommends that appellants clearly identify in the appeal brief the evidence relied upon using a clear description of the evidence along with the date of entry of such evidence into the Image File Wrapper.
An amendment or other evidence submitted under 37 CFR 1.116 or 37 CFR 41.33 will not be entered as part of the record for the appeal unless entered by the examiner.
The specific items required by 37 CFR 41.37(c)(1) are:
(i) Real party in interest. A statement identifying by name the real party in interest at the time the
appeal brief is filed, except that such statement is not required if the named inventor or inventors are themselves the real party in interest. If an appeal brief does not contain a statement of the real party in interest, the Office may assume that the named inventor or inventors are the real party in interest.
The identification of the real party in interest allows members of the Board to comply with ethics regulations associated with working in matters in which the member has a financial interest to avoid any potential conflict of interest. When an application is assigned to a subsidiary corporation, the real party in interest is both the assignee and either the parent corporation or corporations, in the case of joint ventures. One example of a statement identifying the real party in interest is: The real party in interest is XXXX corporation, the assignee of record, which is a subsidiary of a joint venture betweenYYYY corporation and ZZZZ corporation.
(ii) Related appeals, interferences, and trials. A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences, trials before the Board, or judicial proceedings (collectively, "related cases") which satisfy all of the following conditions: Involve an application or patent owned by the appellant or assignee; are known to appellant, the appellant’s legal representative, or assignee; and may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal. If there are no such related cases, the appellant is not required to include the statement, and if the appellant has not included the statement, then the Office may assume that there are no such related cases.
The rule does not require Appellant to provide copies of decisions in related cases.
(iii) Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the rejected independent claims, which shall refer to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters. For each rejected independent claim, and for each dependent claim argued separately under the provisions of paragraph (c)(1)(iv) of this section, if the claim contains a
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means plus function or step plus function recitation as permitted by 35 U.S.C. 112(f), then the concise explanation must identify the structure, material, or acts described in the specification in the Record as corresponding to each claimed function with reference to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters. Reference to the patent application publication does not satisfy the requirements of this paragraph.
(iv) Argument. The arguments of appellant with respect to each ground of rejection and the basis therefor, including citations of statutes, regulations, authorities and parts of the Record relied on, should be presented in this section. The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (per curiam) (precedential) and In re Jung, 637 F.3d 1356, 98 USPQ2d 1174 (Fed. Cir. 2011). A statement which merely points out what a claim recites will not be considered an argument for patentability of the claim.
37 CFR 41.37(c)(1)(iv) contains the following sentence:
Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.
This sentence emphasizes that all arguments and authorities which an appellant wishes the Board to consider for purposes of the present appeal should be included in the appeal brief. It should be noted that arguments not presented in the briefs and made for the first time at the oral hearing are not normally entitled to consideration except as provided for in 37 CFR 41.47. In re Chiddix, 209 USPQ 78 (Comm’r Pat. 1980); Rosenblum v. Hiroshima, 220 USPQ 383 (Comm’r Pat. 1983).
This sentence is not intended to preclude the filing of a supplemental brief or document if new authority should become available or relevant after the brief or reply brief was filed. An example of such
circumstances would be where a pertinent decision of a court or other tribunal was not published until after the brief or reply brief was filed.
This sentence is also limited to “the present appeal” and is not intended to extend the Board’s refusal to consider other arguments or authorities to subsequent appeals in the same application or to appeals in other applications.
Each ground of rejection must be argued under a separate heading, which clearly identifies the ground of rejection being contested. For each ground of rejection applying to two or more claims, the claims may be argued separately (claims are considered by appellants as separately patentable), as a group (all claims subject to the ground of rejection stand or fall together), or as a subgroup (a subset of the claims subject to the ground of rejection stand or fall together). When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group of claims and may decide the appeal as to the ground of rejection with respect to the group or subgroup of claims as to the ground of rejection on the basis of the selected claim alone. The failure of appellant to separately argue claims which appellant has grouped together constitutes a waiver of any argument that the Board must consider the patentability of any grouped claim separately. See In re McDaniel, 293 F.3d 1379, 1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 2002). Under each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be placed under a separate subheading that identifies the claim(s) by number.
For example, if Claims 1 to 5 stand rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Y and appellant is arguing only the limitations of independent claim 1, and thereby grouping dependent claims 2 to 5 to stand or fall with independent claim 1, then one possible heading as required by this subsection could be “Rejection under 35 U.S.C. 102(b) over U.S. Patent No.Y” and an optional subheading would be “Claims 1 to 5.” Another example is where claims 1 to 3 stand rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Z and appellant wishes to argue separately the patentability of each
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claim, a possible heading as required by this subsection could be “Rejection under 35 U.S.C. 102 (b) over U.S. Patent No. Z,” and the required subheadings would be “Claim 1,” “Claim 2” and “Claim 3.” Under each subheading the appellant would present the argument for patentability of that claim. Another example is where claims 1-10 stand rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated over U.S. Patent No. X and appellant wishes to argue claims 1-3 as a first subgroup, claim 4 separately, and claims 5-10 as another subgroup. A possible heading as required by this subsection could be “Rejection under 35 U.S.C. 102(b) over U.S. Patent No. X,” and the required subheadings would be “Claims 1-3,” “Claim 4,” and “Claims 5-10.” To make certain that an argument for separate consideration of a claim or subgroup of claims is not overlooked by the examiner or by the Board, the rule requires appellant to use a subheading for each claim for which separate consideration by the Board is desired.
(v) Claims appendix.An appendix containing a copy of the claims involved in the appeal.
The copy of the claims should be a clean copy and should not include any markings such as brackets or underlining except for claims in a reissue application and a reexamination proceeding. See MPEP § 1454 for the presentation of the copy of the claims in a reissue application. See 37 CFR 1.530(d) and (f) for reexamination proceedings, see also MPEP § 2274 for ex parte reexamination and MPEP § 2675 for inter partes reexamination.
The copy of the claims should be double-spaced and the appendix should start on a new page. 37 CFR 41.37(c)(1) merely specifies the minimum requirements for a brief. An appellant may include in the brief a list of references, table of contents, table of cases, copies of evidence entered by the examiner and relied upon in the brief, etc. A brief is in compliance with 37 CFR 41.37(c)(1) as long as it includes items (i) to (v) in the order set forth.
37 CFR 41.37(c)(2) prohibits the inclusion in a brief of any new or non-admitted amendment, affidavit or other evidence. If an appellant wishes to seek review of an examiner’s refusal to admit an amendment, affidavit or evidence, such review is by
petition to the Director under 37 CFR 1.181. The time for filing this petition, described in 37 CFR 1.181(f), is based on the date the examiner refused to enter the amendment, affidavit or evidence and not the date the brief is filed.
An example of a format and content for an appeal brief for a patent application is a brief containing the following items, with each item starting on a separate page:
(A) Identification page setting forth the applicant’s name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (i.e., Appeal Brief);
(B) Table of Contents page(s);
(C) Real party in interest page(s);
(D) Related appeals, interferences, and trials page(s);
(E) Summary of claimed subject matter page(s);
(F) Argument page(s);
(G) Claims appendix page(s);
In accordance with the above, the brief must be directed to the claims and to the record of the case as they appeared at the time of the appeal. If an appellant wishes to remove claims from consideration on appeal, the appellant must submit an amendment to cancel the claims from the application. See 37 CFR 41.31(c) and 37 CFR 41.33. An appellant may, of course, choose not to present arguments or rely upon particular evidence as to certain claim rejections; however, such arguments and evidence are waived for purposes of the appeal and the Board may summarily sustain any grounds of rejections not argued. Examiners should no longer follow the practice described in Ex parte Ghuman, 88 USPQ2d 1478, 2008 WL 2109842 (BPAI 2008) (precedential, but superceeded by rule). 37 CFR 41.31(c) supercedes the Office’s procedure under Ghuman and also simplifies practice for examiners by no longer requiring examiners to cancel non-appealed claims.
A timely filed brief will be referred to the Patent Appeal Center and the Board for consideration of
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its compliance with the applicable rules. If the brief is proper it will be forwarded to the examiner for preparation of an examiner’s answer if the application is not allowable. The examiner’s answer may withdraw the rejection of claims, if appropriate. The examiner, with supervisory approval, may also determine that it is necessary to reopen prosecution to enter a new ground of rejection. See MPEP § 1207.04.
1205.03 Non-Compliant Appeal Brief and Amended Brief [R-11.2013]
The Board has the responsibility for determining whether appeal briefs filed in patent applications comply with 37 CFR 41.37, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The determination should be completed within approximately one month from the filing of the appeal brief. If the appeal brief is determined to be compliant with the rules or it contains only minor informalities that do not affect the Board panel’s ability to render a decision, the Board will accept the appeal brief and forward it to the examiner for consideration. If the Board determines that the appeal brief is non-compliant with 37 CFR 41.37 and sends appellant a notice of non-compliant brief requiring a corrected brief, appellant will be required to file a corrected brief within the time period set forth in the notice to avoid the dismissal of the appeal. The Board will also have the responsibility for determining whether corrected briefs comply with 37 CFR 41.37.
If appellant disagrees with the holding of noncompliance, a petition under 37 CFR 41.3 may be filed. Filing a petition will not toll the time period for reply set in the notice. Appellant must timely reply to the notice or the Office communication that requires an amended brief.
Once an appeal brief is accepted by the Board as in compliance with 37 CFR 41.37, the appeal brief will not later be held as defective by the Patent Appeal Center or the examiner. The Board will not return or remand the application to the examiner for issues related to a non-compliant appeal brief. Furthermore, examiners are not required to review appeal briefs for the purposes of determining whether the appeal
briefs comply with 37 CFR 41.37. Accordingly, the Notification of Non-Compliant Appeal Brief (PTOL-462) and form paragraphs for holding an appeal brief defective are no longer available in OACS for the examiner to use.
Furthermore, the Board will correspond directly with the appellant on non-compliant brief issues. Examiners may use form paragraphs 12.150.01 – 12.156.01 to draft examiner’s answers to respond to appeal briefs filed in any format. In those rare situation where an appeal brief contains serious defects that will prevent the examiner from drafting an examiner’s answer, the primary examiner should report the issue to the Patent Appeal Center who will communicate with the Board regarding the issue.
The responsibility of the Board for determining whether appeal briefs comply with 37 CFR 41.37 is not considered a transfer of jurisdiction when an appeal brief is filed, but rather is only a transfer of the specific responsibility of notifying appellants under 37 CFR 41.37(d) of the reasons for non-compliance. The patent examining corps retains the jurisdiction over the application to consider the appeal brief, conduct an appeal conference, decide the entry of amendments, evidence, and information disclosure statements filed after final or after the filing of a notice of appeal, and draft an examiner’s answer until jurisdiction passes to the Board pursuant to 37 CFR 41.35(a). Furthermore, petitions concerning the refusal to enter amendments and/or evidence remain delegated according to MPEP §§ 1002.02(b) and 1002.02(c).
1206 Amendments and Affidavits or Other Evidence Filed With or After Appeal [R-11.2013]
37 CFR 41.33 Amendments and affidavits or other evidence after appeal.
(a) Amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date a brief is filed pursuant to § 41.37 may be admitted as provided in § 1.116 of this title.
(b) Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted:
(1) To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or
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(2) To rewrite dependent claims into independent form.
(c) All other amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1).
(d)(1) An affidavit or other Evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date of filing a brief pursuant to § 41.37 may be admitted if the examiner determines that the affidavit or other Evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other Evidence is necessary and was not earlier presented has been made.
(2) All other affidavits or other Evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1).
I. AMENDMENTS
A new amendment must be submitted in a separate paper. Entry of a new amendment in an application on appeal is not a matter of right. The entry of an amendment (which may not include a new affidavit, declaration, exhibit or other evidence) submitted in an application on appeal is governed by 37 CFR 41.33, not 37 CFR 1.116.
Amendments filed after the filing of a notice of appeal, but prior to the date of filing a brief, may be admitted only to:
(A) cancel claims;
(B) comply with any requirement of form expressly set forth in a previous action;
(C) present rejected claims in better form for consideration on appeal; or
(D) amend the specification or claims upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented. See 37 CFR 41.33(a).
If the examiner denies the entry of such an amendment, the examiner should use form PTOL-303, “Advisory Action Before the Filing of an Appeal Brief,” to notify the applicant of the non-entry and the reason for non-entry.
Amendments filed on or after the date of filing a brief pursuant to 37 CFR 41.37 may be admitted only to:
(A) cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding; or
(B) rewrite dependent claims into independent form.
37 CFR 41.37(c)(2) provides that a brief shall not include any non-admitted amendment. Thus, appellants may not include an amendment under 37 CFR 41.33(b) in the appeal brief. Should appellants wish to file an amendment at the same time as a brief, appellants must submit such an amendment in a paper separate from the appeal brief.
Rewriting dependent claims into independent form as permitted under 37 CFR 41.33(b)(2) includes the following situations:
(A) rewriting a dependent claim in independent form by adding thereto the limitations of the parent claim(s); and
(B) rewriting an independent claim to incorporate therein all the subject matter of a dependent claim, canceling the dependent claim and in conjunction therewith changing the dependency of claims which had depended from the dependent claim being canceled to the amended independent claim that incorporates therein all the subject matter of the now canceled dependent claim.
If the examiner denies entry of an amendment filed on or after the date of filing a brief, the examiner should use form PTOL-304, “Advisory Action After the Filing of an Appeal Brief,” to notify the applicant of the non-entry and the reason for non-entry.
Examiners must respond to all amendments filed after an appeal has been taken and prior to transfer of jurisdiction to the Board under 37 CFR 41.35(a). If the examiner indicates (in the advisory action) that an amendment would be entered, it is imperative for the examiner to also state (in the same advisory action) how the individual rejection(s) set forth in the final Office action will be impacted by the entry of the amendment except where an amendment merely cancels claims. If the examiner determines that an amendment clearly places the application in condition for allowance, the examiner may enter the amendment and allow the application. Except for amendments that meet the conditions set forth above,
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all other amendments submitted after the date of filing a notice of appeal will not be entered except as permitted by 37 CFR 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).
See MPEP §§ 714.02, 714.12 and 714.13 for the treatment of amendments, affidavits and other evidence submitted after the mailing of a final rejection or a non-final rejection, but prior to the filing of a notice of appeal under 37 CFR 41.31(a). Any amendment, affidavit or other evidence filed after the mailing date of a final Office action and on or before the date of the notice of appeal will be treated by the Office as being filed prior to the notice of appeal and treated under 37 CFR 1.116. Any amendment, affidavit or other evidence filed after the mailing date of a non-final Office action and on or before the date of notice of appeal will be treated by the Office as being filed prior to the notice of appeal and treated under 37 CFR 1.111.
An amendment, affidavit or other evidence received after jurisdiction has passed to the Board should not be considered by the examiner unless remanded for that purpose. See MPEP §§ 1210 and 1211.02.
II. AFFIDAVITS OR OTHER EVIDENCE
Affidavits or other evidence (e.g., declarations or exhibits) submitted after the date of filing a notice of appeal, but prior to the date of filing a brief pursuant to 37 CFR 41.37, may be admitted if the examiner determines that:
(A) the affidavits or other evidence overcomes all rejections under appeal; and
(B) a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented has been made.
If the examiner denies the entry of such an affidavit or other evidence, the examiner should use form PTOL-303, “Advisory Action Before the Filing of an Appeal Brief,” to notify the applicant of the non-entry and the reason for non-entry.
If the examiner determines that an affidavit or other evidence clearly places the application in condition for allowance, the examiner may enter the affidavit or other evidence and allow the application. Except as noted above, all other affidavits or other evidence filed after the date of filing a notice of appeal pursuant to 37 CFR 41.31(a)(1) - (a)(3) will not be admitted except as permitted by 37 CFR 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).
An amendment, affidavit or other evidence received after jurisdiction has passed to the Board should not be considered by the examiner unless remanded or returned by the Board for such purpose. See MPEP §§ 1210 and 1211.02.
Information Disclosure Statements submitted after the date of a notice of appeal are normally held in abeyance pending a decision on the appeal. Consideration of Information Disclosure Statements is based on MPEP § 609 and 37 CFR 1.97 and 1.98 and not on 37 CFR 41.33.
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1207 Examiner’s Answer [R-11.2013]
37 CFR 41.39 Examiner’s answer.
(a) Content of examiner's answer. The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief.
(1) An examiner's answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision), unless the examiner's answer expressly indicates that a ground of rejection has been withdrawn.
(2) An examiner's answer may include a new ground of rejection. For purposes of the examiner's answer, any rejection that relies upon any Evidence not relied upon in the Office action from which the appeal is taken (as modified by any advisory action) shall be designated by the primary examiner as a new ground of rejection. The examiner must obtain the approval of the Director to furnish an answer that includes a new ground of rejection.
(b) Appellant's response to new ground of rejection. If an examiner’s answer contains a rejection designated as a new ground of rejection, appellant must within two months from the date of the examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:
(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in § 41.41. Such a reply brief must address as set forth in § 41.37(c)(1)(iv) each new ground of rejection and should follow the other requirements of a brief as set forth in § 41.37(c). A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.
(c) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
After an appeal brief under 37 CFR 41.37 has been filed and the examiner has considered the issues on appeal, the examiner may:
(A) reopen prosecution to enter a new ground of rejection with approval from the supervisory patent examiner (see MPEP § 1207.04);
(B) allow the application if the examiner determines that the rejections have been overcome and no new ground of rejection is appropriate; or
(C) maintain the appeal by conducting an appeal conference (MPEP § 1207.01) and drafting an examiner’s answer (MPEP § 1207.02).
1207.01 Appeal Conference [R-11.2013]
An appeal conference is mandatory in all cases in which an acceptable brief (MPEP § 1205) has been filed. However, if the examiner charged with the responsibility of preparing the examiner’s answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary. In this case, the examiner may reopen prosecution and issue another Office action or may prepare a notice of allowability if appropriate. See MPEP § 1207.04.
The participants of the appeal conference should include (1) the examiner charged with preparation of the examiner’s answer, (2) a supervisory patent examiner (SPE), and (3) another examiner, known as a conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal. During the appeal conference, consideration should be given to the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value.
The examiner responsible for preparing the examiner’s answer should weigh the arguments of the other examiners presented during the appeal conference. If it is determined that the rejection(s) should be maintained, the examiner responsible for preparing the examiner’s answer will prepare the examiner’s answer.
On the examiner’s answer, below the primary examiner’s signature, the word “Conferees:” should be included, followed by the typed or printed names
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of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held. If the examiner’s answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the Director - i.e., the Director of the USPTO. This authority has been delegated to the Tecnology Center (TC) Directors or their designee(s). The answer must also include the signature of a Technology Center (TC) Director or designee to indicate that he or she approves the new ground of rejection. See MPEP § 1207.03 and form paragraph 12.279.01.
The Patent Appeal Center will review the examiner’s answer to determine whether there is an indication that an appeal conference has been held. If the examiner’s answer does not contain the appropriate indication that an appeal conference has been held (i.e., including the names of the conferees and identifying themselves as the conferees along with their initials), the Patent Appeal Center may return the application to the examiner for corrective action.
1207.02 Contents of Examiner’s Answer [R-11.2013]
Examiner’s answers may be returned for correction by the Patent Appeal Center if they do not comply with the guidelines set forth below.
(A) The examiner’s answer should include, under appropriate headings, in the order indicated, the following items:
(1) Grounds of Rejection to be Reviewed on Appeal.
A statement that every ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision) is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.”
The examiner must treat all pending, rejected claims as being on appeal, and must maintain all of the rejections set forth in the Office action from which
the appeal is taken, unless appellant has overcome the rejection (e.g., by submitting persuasive arguments, an acceptable terminal disclaimer, or evidence). In situations where the appellant makes a request to hold a rejection in abeyance or did not present any argument on a rejection in the appeal brief, the examiner should maintain the rejection in the examiner’s answer.
Withdrawn Rejections – Under the subheading “WITHDRAWN REJECTIONS,” the examiner should list any grounds of rejection that are being withdrawn (e.g., those that have been overcome by appellant.)
New Grounds of Rejection – Under the subheading “NEW GROUNDS OF REJECTION,” the examiner must set forth any new grounds of rejection. An examiner’s answer that contains a new ground of rejection must be approved and signed by the Director (or his/her designee). For each new ground of rejection, a complete explanation supporting the rejection must be provided with a proper reference to the applicable statute, prior art references relied upon, and the claim numbers of the claims that are subject to the rejection in the examiner’s answer.
(2) Response to Argument. A statement of whether the examiner disagrees with each of the arguments of appellant in the brief with respect to the issues presented and an explanation of the reasons for disagreement with any such argument. The examiner must use headings and subheadings paralleling the headings and subheadings utilized in the appellant’s brief.
The examiner should furnish the appellant with a written statement in answer to the appellant’s brief within 2 months after the receipt of the brief by the examiner. While 37 CFR 41.39(a) states the examiner “may” furnish a written answer, current procedures do not permit an appeal to proceed to the Board without an examiner's answer. The mailing date of the examiner's answer begins the period for filing a reply brief, which in turn transfers jurisdiction to the Board as described in 37 CFR 41.35(a). In addition, the mailing date of the examiner's answer begins the time for appellants to request for an oral hearing as described in 37 CFR 41.47(b). In the event that the final rejection fully addresses the arguments in the appeal brief, the
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examiner should complete an examiner's answer with a typical “Grounds of Rejection to be Reviewed on Appeal” section and a simplified “Response to Arguments” section that simply refers to the appropriate portion of the final rejection.
Before preparing the answer, the examiner should make certain that each after-final amendment or evidence has been indicated as being entered or not-entered and an advisory action has been entered for each after-final amendment or evidence to notify the appellant of the entry or non-entry. The Board may remand to the examiner any application in which an after-final amendment or evidence has not been indicated as entered or not-entered and acted upon in an advisory action.
The examiner should treat affidavits, declarations, or exhibits filed with the notice of appeal in accordance with 37 CFR 1.116. If an affidavit, declaration, or exhibit was refused entry in the Record under 37 CFR 1.116 or prohibited by 37 CFR 41.33, the examiner should not comment on it in the examiner’s answer. Likewise, it would be improper for appellant to rely on an affidavit, declaration, or exhibit, which was not entered, in an appeal brief. If appellant has grounds for challenging the non-entry of an affidavit, declaration, or exhibit, he or she should file a timely petition under 37 CFR 1.181 seeking supervisory review of the non-entry. Any affidavits or declarations in the file swearing behind a reference should be clearly identified by the examiner as being considered under 37 CFR 1.131.
If a document being relied upon by the examiner in support of a rejection is in a language other than English, a translation must be obtained so that the record is clear as to the precise facts the examiner is relying upon in support of the rejection. The translation may be a machine translation or an English equivalent of the non-English document. See MPEP § 706.02 for reliance upon abstracts and foreign language documents in support of a rejection.
Examiners are not required to make any determination whether fewer than all of the rejected claims are identified by the appellant as being appealed. The Board will presume that all of the rejected claims are on appeal except for any claims
subsequently canceled by an amendment filed by appellant. Therefore, the examiner will treat all pending, rejected claims as being on appeal, and maintain all of the rejections set forth in the Office action from which the appeal is taken, unless appellant has overcome the rejection (e.g., by submitting persuasive arguments, an acceptable terminal disclaimer, or evidence). In situations where the appellant makes a request to hold a rejection in abeyance or did not present any argument on a rejection in the appeal brief, the examiner should maintain the rejection in the examiner’s answer and should identify that the appellant has not argued the rejection in the appeal brief.
Because of the practice of the Office in entering amendments after final action under justifiable circumstances for purposes of appeal, many cases coming before the Board for consideration contain claims which are not the claims treated in the examiner’s final rejection. They are either entirely new claims or amended versions of the finally rejected claims or both. Where an amendment under 37 CFR 1.116 or 41.33 would be entered for appeal purposes, the examiner must identify (in an advisory action) how one or more individual rejections set forth in the final rejection would be used to reject the added or amended claim(s).
The examiner should reevaluate his or her position in the light of the arguments presented in the brief, and should expressly withdraw any rejections not adhered to in the “WITHDRAWN REJECTIONS” subsection of the examiner’s answer.
A new ground of rejection is permitted in an examiner’s answer. See MPEP § 1207.03. If reopening of prosecution is necessary, the examiner must obtain approval from the supervisory patent examiner prior to reopening prosecution after an appeal. See MPEP § 1002.02(d) and § 1207.04.
All correspondence with the Board, whether by the examiner or the appellant, must be on the record. No unpublished decisions which are unavailable to the general public by reason of 35 U.S.C. 122(a) can be cited by the examiner or the appellant except that either the examiner or the appellant may cite an unpublished decision in an application having common ownership with the application on appeal.
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If an examiner’s answer is believed to contain a new interpretation or application of the existing patent law, the examiner’s answer, application file, and an explanatory memorandum should be forwarded to the TC Director for consideration. See MPEP § 1003. If approved by the TC Director, the examiner’s answer should be forwarded to the Office of the Associate Commissioner for Patent Examination Policy for final approval.
(B) FORM PARAGRAPHS. A form suitable for the examiner’s answer is as follows: ¶ 12.249 Examiner’s Answer Cover Sheet
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Application Number: [1]
Filing Date: [2]
Appellant(s): [3]
__________________
[4]
For Appellant
EXAMINER’S ANSWER
This is in response to the appeal brief filed [5].
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. This form paragraph is printed with the USPTO letterhead.
3. In bracket 1, insert the application number of the appealed application.
4. In bracket 2, insert the filing date of the appealed application.
5. In bracket 3, insert the name(s) of the appellant.
6. In bracket 4, insert the name of the registered representative of the appellant.
7. In bracket 5, indicate the date on which the brief was filed.
¶ 12.254 Grounds of Rejection to be Reviewed on Appeal
(1) Grounds of Rejection to be Reviewed on Appeal
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. Follow this form paragraph with form paragraph 12.254.01 or 12.254.02.
¶ 12.254.01 Statement of Grounds of Rejection, not modified
Every ground of rejection set forth in the Office action dated [1] from which the appeal is taken is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.” New grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF REJECTION.”
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the mailing date of the Office action from which the appeal is being taken.
3. Use form paragraph 12.255 to restate the grounds of rejection and supporting rationale for each rejection involved in the appeal, when needed.
4. Use form paragraph 12.256 to introduce any new grounds of rejection.
5. Use form paragraph 12.257 to withdraw a ground of rejection previously made in the final Office action or last Office action.
6. Use this form paragraph when there was no modification made to the grounds of rejection in an advisory action or pre-appeal conference decision.
¶ 12.254.02 Statement of Grounds of Rejection, modified
The ground(s) of rejection set forth in the Office action dated [1] from which the appeal is taken have been modified by the [2] dated [3]. A list of rejections withdrawn by the examiner (if any) is included under the subheading “WITHDRAWN REJECTIONS.” New grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF REJECTION.”
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the mailing date of the Office action from which the appeal is being taken.
3. In bracket 2, insert --advisory action-- and/or --pre-appeal brief conference decision--.
4. In bracket 3, insert the mailing date of the advisory action and/or pre-appeal brief conference decision--.
5. Use form paragraph 12.255 to restate the grounds of rejection and supporting rationale for each rejection involved in the appeal, when needed.
6. Use form paragraph 12.256 to introduce any new grounds of rejection.
7. Use form paragraph 12.257 to withdraw a ground of rejection previously made in the final Office action or last Office action.
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8. Use this form paragraph when the grounds of rejection were modified in an advisory action or pre-appeal brief conference decision.
¶ 12.255 Restatement of Rejection
The following ground(s) of rejection are applicable to the appealed claims.
[1]
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. Precede this form paragraph with either 12.254.01 or 12.254.02.
3. Use this form paragraph to optionally include a statement of rejection and/or supporting rationale for every ground of rejection involved in the appeal.
4. Only use this form paragraph when the restatement of the rejection does not include any new ground(s) of rejection.
5. In bracket 1, explain each ground of rejection maintained by the examiner.
¶ 12.256 New Grounds of Rejection - Heading
NEW GROUNDS OF REJECTION
[1]
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. Any new ground(s) of rejection in the examiner’s answer must be prominently identified (e.g., using this form paragraph).
3. Provide a concise statement of each new ground of rejection presented for review in bracket 1; and
4. Conclude an examiner’s answer raising new grounds of rejection with form paragraph 12.279.01: (1) to notify applicant of the reply period and options following the new grounds of rejection; and (2) to include the required approval of the TC Director or his/her designee.
¶ 12.257 Withdrawn Rejections
WITHDRAWN REJECTIONS
The following grounds of rejection are not presented for review on appeal because they have been withdrawn by the examiner. [1].
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the grounds of rejection that have been withdrawn.
¶ 12.261 Response to Argument
(2) Response to Argument
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. If an issue raised by appellant was fully responded to under the “Grounds of Rejection to be Reviewed on Appeal” portion, no additional response is required here.
3. If an issue has been raised by appellant that was not fully responded to under “Grounds of Rejection to be Reviewed on Appeal,” a full response must be provided after this form paragraph.
¶ 12.279 Conclusion to Examiner’s Answer, No New Grounds of Rejection
For the above reasons, it is believed that the rejections should be sustained.
Respectfully submitted,
[1]
Conferees:
[2]
[3]
Requirement to pay appeal forwarding fee. In order to avoid dismissal of the instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment of an appeal forwarding fee within the time permitted by 37 CFR 41.45(a), unless appellant had timely paid the fee for filing a brief required by 37 CFR 41.20(b) in effect on March 18, 2013.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert initials of the examiner and the date.
3. In bracket 2, insert names of the conferees. The conferees must also place their initials next to their names.
4. In bracket 3, insert correspondence address of record.
5. If the examiner’s answer includes a new ground of rejection, use form paragraph 12.279.01 instead of this form paragraph.
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¶ 12.279.01 Conclusion to Examiner’s Answer Raising New Grounds of Rejection
For the above reasons, it is believed that the rejections should be sustained.
This examiner’s answer contains a new ground of rejection set forth in section (1) above. Accordingly, appellant must within TWO MONTHS from the date of this answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:
(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit or other evidence. Any amendment, affidavit or other evidence must be relevant to the new grounds of rejection. A request that complies with 37 CFR 41.39(b)(1) will be entered and considered. Any request that prosecution be reopened will be treated as a request to withdraw the appeal.
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41. Such a reply brief must address each new ground of rejection as set forth in 37 CFR 41.37(c)(1) and should be in compliance with the other requirements of 37 CFR 41.37(c). If a reply brief filed pursuant to 37 CFR 41.39(b)(2) is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under 37 CFR 41.39(b)(1).
Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.
Respectfully submitted,
[1]
A Technology Center Director or designee must personally approve the new ground(s) of rejection set forth in section (1) above by signing below:
[2]
Conferees:
[3]
[4]
Requirement to pay appeal forwarding fee. In order to avoid dismissal of the instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment of an appeal forwarding fee within the time permitted by 37 CFR 41.45(a), unless appellant had timely paid the fee for filing a brief required by 37 CFR 41.20(b) in effect on March 18, 2013.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert initials of the examiner and the date.
3. In bracket 2, insert TC Director’s or designee’s signature. All new grounds of rejection must be approved by a TC Director or designee.
4. In bracket 3, insert names of the conferees. The conferees must also place their initials next to their names.
5. In bracket 4, insert correspondence address of record.
¶ 12.279.02 Dismissal Following New Ground(s) of Rejection in Examiner’s Answer
Appellant failed to timely respond to the examiner’s answer mailed on [1] that included a new ground of rejection. Under 37 CFR 41.39(b) , if an examiner’s answer contains a rejection designated as a new ground of rejection, appellant must, within two months from the date of the examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, addressing each new ground of rejection, to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. In view of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.39, the appeal as to claims [2] is dismissed, and these claims are canceled.
Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the mailing date of the examiner’s answer.
3. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
4. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.
1207.03 New Ground of Rejection in Examiner’s Answer [R-11.2013]
37 CFR 41.39(a)(2) permits the entry of a new ground of rejection in an examiner’s answer. At the time of preparing the answer to an appeal brief, the examiner may decide that he or she should apply a new ground of rejection against some or all of the
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pending claims. In such an instance where a new ground of rejection is necessary, the examiner should either reopen prosecution or set forth the new ground of rejection in the answer. The examiner must obtain supervisory approval in order to reopen prosecution after an appeal. See MPEP §§ 1002.02(d) and 1207.04.
I. REQUIREMENTS FOR A NEW GROUND OF REJECTION
Any new ground of rejection made by an examiner in an answer must be:
(A) approved by a Technology Center (TC) Director or designee; and
(B) prominently identified in the “Grounds of Rejection to be Reviewed on Appeal” section under the subheading “New Grounds of Rejection” of the answer (see MPEP § 1207.02). The examiner may use form paragraph 12.256.
The examiner’s answer must provide appellant a two-month time period for reply. The examiner may use form paragraph 12.279.01 to notify appellant of the period for reply and to include the approval of the TC Director or designee. In response to an examiner’s answer that contains a new ground of rejection, appellant must either file:
(A) a reply in compliance with 37 CFR 1.111 to request that prosecution be reopened; or
(B) a reply brief that addresses each new ground of rejection in compliance with 37 CFR 41.37(c)(1)(iv) to maintain the appeal.
Appellant must file the reply or reply brief within two months from the date of the examiner’s answer to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. See 37 CFR 41.39(b) and subsection “V. APPELLANT’S REPLY TO NEW GROUNDS OF REJECTION” below.
II. SITUATIONS WHERE NEW GROUNDS OF REJECTION ARE NOT PERMISSIBLE
A new ground of rejection would not be permitted to reject a previously allowed or objected to claim even if the new ground of rejection would rely upon evidence already of Record. In this instance, rather
than making a new ground of rejection in an examiner’s answer, if the basis for the new ground of rejection was approved by a supervisory patent examiner as currently set forth in MPEP § 1207.04, the examiner would reopen prosecution.
III. DESIGNATION AS A NEW GROUND OF REJECTION IN AN EXAMINER'S ANSWER
The following discussion is for the limited “purposes of the examiner’s answer,” as per 37 CFR 41.39(a)(2). This discussion does not apply to new grounds of rejection made in final rejections under 37 CFR 1.113. The reason for this distinction is that 37 CFR 1.116 affords applicants the opportunity to submit rebuttal evidence after a final rejection but on or before the date of filing a notice of appeal. An appellant’s ability to introduce new evidence after the filing of an appeal is more limited under 37 CFR 41.33(d) than it is prior to the appeal. Thus, applicants are able to present rebuttal evidence in response to a final rejection, while they are not permitted to do so in response to an examiner’s answer on appeal, unless an answer is designated as containing a new ground of rejection.
If Evidence (such as a new prior art reference, but not including a newly relied upon dictionary definition) is applied or cited for the first time in an examiner’s answer, then 37 CFR 41.39(a)(2) requires that the rejection be designated as a new ground of rejection. If the citation of a new prior art reference is necessary to support a rejection, it must be included in the statement of rejection, which would be considered to introduce a new ground of rejection. Even if the prior art reference is cited to support the rejection in a minor capacity, it should be positively included in the statement of rejection and be designated as a new ground of rejection. In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).
See 37 CFR 41.30 and MPEP § 1204.04 for a detailed discussion of what constitutes "evidence" for the purposes of appeal.
A position or rationale that changes the “basic thrust of the rejection” will also give rise to a new ground of rejection. In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976). However, the examiner need not use identical language in both the examiner’s answer
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and the Office action from which the appeal is taken to avoid triggering a new ground of rejection. It is not a new ground of rejection, for example, if the examiner’s answer responds to appellant’s arguments using different language, or restates the reasoning of the rejection in a different way, so long as the “basic thrust of the rejection” is the same. In re Kronig, 539 F.2d at 1303; see also In re Jung, 637 F.3d 1356, 1364–65 (Fed. Cir. 2001) (additional explanation responding to arguments offered for the first time “did not change the rejection” and appellant had fair opportunity to respond); In re Noznick, 391 F.2d 946, 949 (CCPA 1968) (no new ground of rejection made when “explaining to appellants why their arguments were ineffective to overcome the rejection made by the examiner”); In re Krammes, 314 F.2d 813, 817 (CCPA 1963) (“It is well established that mere difference in form of expression of the reasons for finding claims unpatentable or unobvious over the references does not amount to reliance on a different ground of rejection.” (citations omitted)); In re Cowles, 156 F.2d 551, 1241 (CCPA 1946) (holding that the use of “different language” does not necessarily trigger a new ground of rejection).
1207.03(a) Determining Whether a Ground of Rejection is New [R-11.2013]
I. SITUATIONS WHERE A GROUND OF REJECTION IS NEW
The following examples are intended to provide guidance as to what constitutes a new ground of rejection in an examiner’s answer. What constitutes a “new ground of rejection” is a highly fact-specific question. See, e.g., Kronig, 539 F.2d at 1303 (finding new ground entered based upon “facts of this case” and declining to find other cases controlling given “the distinctive facts at bar”); In re Ahlert, 424 F.2d 1088, 1092 (CCPA 1970) (“[l]ooking at the facts of this case, we are constrained to hold” that a new ground was entered). If a situation arises that does not fall neatly within any of the following examples, it is recommended that the examiner identify the example below that is most analogous to the situation at hand, keeping in mind that “the ultimate criterion of whether a rejection is considered ‘new’ * * * is whether
appellants have had fair opportunity to react to the thrust of the rejection.” Kronig, 539 F.2d at 1302.
Factual Situations That Constitute a New Ground of Rejection
1. Changing the statutory basis of rejection from 35 U.S.C. 102 to 35 U.S.C. 103.
If the examiner’s answer changes the statutory basis of the rejection from 35 U.S.C. 102 to 35 U.S.C. 103, then the rejection should be designated as a new ground of rejection. For example, in In re Hughes, 345 F.2d 184 (CCPA 1965), the Board affirmed an examiner’s rejection under 35 U.S.C. 102 over a single reference. On appeal, the Solicitor argued that the Board’s decision should be sustained under 35 U.S.C. 103 over that same reference. The court declined to sustain the rejection under 35 U.S.C. 103, holding that a change in the statutory basis of rejection would constitute a new ground of rejection, and observed that “the issues arising under the two sections [35 U.S.C. 102 and 103] may be vastly different, and may call for the production and introduction of quite different types of evidence.” Hughes, 345 F.2d at 186–87.
2. Changing the statutory basis of rejection from 35 U.S.C. 103 to 35 U.S.C. 102, based on a different teaching.
If the examiner’s answer changes the statutory basis of the rejection from 35 U.S.C. 103 to 35 U.S.C. 102, and relies on a different portion of a reference which goes beyond the scope of the portion that was previously relied upon, then the rejection should be designated as a new ground of rejection. For example, in In re Echerd, 471 F.2d 632 (CCPA 1973), the examiner rejected the claims under 35 U.S.C. 103 over a combination of two references. The Board then changed the ground of rejection to 35 U.S.C. 102 over one of those references, relying on a different portion of that reference for some claim limitations, and asserted that the remaining claim limitations were inherently present in that reference. The court held that the Board’s affirmance constituted a new ground of rejection. Echerd, 471 F.2d at 635 (“[A]ppellants should have been accorded an opportunity to present rebuttal evidence as to the new assumptions of inherent characteristics. * * *” (citation omitted)).
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3. Citing new calculations in support of overlapping ranges.
If a claim reciting a range is rejected as anticipated or obvious based on prior art that falls within or overlaps with the claimed range (see MPEP §§ 2131.03 and 2144.05), and the rejection is based upon range values calculated for the first time in the examiner’s answer, then the rejection should be designated as a new ground of rejection. For example, in In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005), the examiner rejected the claims under 35 U.S.C. 103 based on overlapping ranges of particle sizes and size distributions. The Board affirmed the rejection, but included in its decision an appendix containing calculations to support the prima facie case of obviousness. The court held the Board’s reliance upon those values to constitute a new ground of rejection, stating that “the Board found facts not found by the examiner regarding the differences between the prior art and the claimed invention, which in fairness required an opportunity for response.” Kumar, 418 F.3d at 1368 (citation omitted).
4. Citing new structure in support of structural obviousness.
If, in support of an obviousness rejection based on close structural similarity (see MPEP § 2144.09), the examiner’s answer relies on a different structure than the one on which the examiner previously relied, then the rejection should be designated as a new ground of rejection. For example, in In re Wiechert, 370 F.2d 927, 152 USPQ 247 (CCPA 1967), the examiner rejected claims to a chemical composition under 35 U.S.C. 103 based on the composition’s structural similarity to a prior art compound disclosed in a reference. The Board affirmed the rejection under 35 U.S.C. 103 over that same reference, but did so based on a different compound than the one the examiner cited. The court held that the Board’s decision constituted a new ground of rejection, stating, “Under such circumstances, we conclude that when a rejection is factually based on an entirely different portion of an existing reference the appellant should be afforded an opportunity to make a showing of unobviousness vis-a-vis such portion of the reference.” Wiechert, 370 F.2d at 933, 152 USPQ at 252.
5. Pointing to a different portion of the claim to maintain a “new matter” rejection.
If, in support of a claim rejection under 35 U.S.C. 112 based on new matter (see MPEP § 2163.06), a different feature or aspect of the rejected claim is believed to constitute new matter, then the rejection should be designated as a new ground of rejection. For example, in In re Waymouth, 486 F.2d 1058, 179 USPQ 627 (CCPA 1973), the claims included the limitation “said sodium iodide * * * present in amount of at least 0.17 mg./cc. of said arc tube volume.” The examiner’s rejection stated that the claimed “sodium iodide” constituted new matter because the specification was alleged only to disclose “sodium.” The Board affirmed the rejection, but did so on a “wholly different basis,” namely, that the specification failed to disclose the claimed “0.17 mg./cc.” volume limitation. Waymouth, 486 F.2d at 1060, 179 USPQ at 629. The court held that the Board’s rationale constituted a new ground of rejection, “necessitating different responses by appellants.” Id. at 1061.
II. SITUATIONS THAT ARE NOT CONSIDERED NEW GROUNDS OF REJECTION
There is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection. See In re Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA 1976). Where the statutory basis for the rejection remains the same, and the evidence relied upon in support of the rejection remains the same, a change in the discussion of, or rationale in support of, the rejection does not necessarily constitute a new ground of rejection. Id. at 1303, 190 USPQ at 427 (reliance upon fewer references in affirming a rejection under 35 U.S.C. 103 does not constitute a new ground of rejection).
In addition, if:
(A) an amendment under 37 CFR 1.116 [or 41.33] proposes to add or amend one or more claims;
(B) appellant was advised (through an advisory action) that the amendment would be entered for purposes of appeal; and
(C) the advisory action indicates which individual rejection(s) set forth in the action from
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which appeal has been taken would be used to reject the added or amended claims, then
(1) the appeal brief must address the rejection(s) of the added or amended claim(s) and
(2) the examiner’s answer may include the rejection(s) of the added or amended claims. Such rejection(s) made in the examiner’s answer would not be considered as a new ground of rejection.
The filing of such an amendment represents appellant’s consent to proceed with the appeal process. For example, when an amendment under 37 CFR 1.116 or 41.33 cancels a claim (the “canceled claim”) and incorporates its limitations into the claim upon which it depends or rewrites the claim as a new independent claim (the “appealed claim”), the appealed claim contains the limitations of the canceled claim (i.e., the only difference between the appealed claim and the canceled claim is the claim number). In such situations, the appellant has been given a fair opportunity to react to the ground of rejection (albeit to a claim having a different claim number). Thus, such a rejection does not constitute a “new ground of rejection” within the meaning of 37 CFR 41.39 .
The phrase “individual rejections” addresses situations such as the following: the action contains a rejection of claim 1 under 35 U.S.C. 102 on the basis of Reference A, a rejection of claim 2 (which depends upon claim 1) under 35 U.S.C. 103 on the basis of Reference A in view of Reference B and a rejection of claim 3 (which depends upon claim 1) under 35 U.S.C. 103 on the basis of Reference A in view of Reference C. In this situation, the action contains the following “individual rejections”: (1) 35 U.S.C. 102 on the basis of Reference A; (2) 35 U.S.C. 103 on the basis of Reference A in view of Reference B; and (3) 35 U.S.C. 103 on the basis of Reference A in view of Reference C. The action, however, does not contain any rejection on the basis of A in view of B and C. If an amendment under 37 CFR 1.116 or 41.33 proposes to combine the limitations of claims 1 and 2 together into amended claim 1 and cancels claim 2, a rejection of amended claim 1 under 35 U.S.C. 103 on the basis of Reference A in view of Reference B would be appropriate and would not be considered a new ground of rejection within the meaning of 37 CFR 41.39, provided the applicant was advised that this
rejection would be applied to amended claim 1 in an advisory action. Furthermore, since claim 3 (which depends upon claim 1) would include the limitations of the original claims 1, 2, and 3, a rejection of amended claim 3 (amended by the amendment to original claim 1) under 35 U.S.C. 103 on the basis of Reference A in view of Reference B and Reference C may be appropriate and would not be considered a new ground of rejection within the meaning of 37 CFR 41.39, provided applicant was advised that this rejection would be applied to amended claim 3 in the advisory action. Of course, as amended claim 3 includes the limitations of the original claims 1, 2, and 3, amended claim 3 is a newly proposed claim in the application raising a new issue (i.e., a new ground of rejection), and such an amendment under 37 CFR 1.116 or 41.33 may properly be refused entry as raising a new issue.
It must be emphasized that 37 CFR 41.39(a)(2) does not change the existing practice with respect to amendment after final rejection practice (37 CFR 1.116). The fact that 37 CFR 41.39(a)(2) would authorize the rejection in an examiner’s answer of a claim sought to be added or amended in an amendment under 37 CFR 1.116 or 41.33 has no effect on whether the amendment under 37 CFR 1.116 or 41.33 is entitled to entry. The provisions of 37 CFR 1.116 or 41.33 control whether an amendment under 37 CFR 1.116 or 41.33 is entitled to entry; the provisions of 37 CFR 41.39(a)(2) permits a new ground of rejection to be included in an answer against a claim added or amended in an amendment under 37 CFR 1.116 or 41.33.
Where a newly cited reference is added merely as evidence of the prior statement made by the examiner as to what is “well-known” in the art which was challenged for the first time in the appeal brief, the citation of the reference in the examiner’s answer would not ordinarily constitute a new ground of rejection within the meaning of 37 CFR 41.39(a)(2). See also MPEP § 2144.03.
Factual Situations That Do Not Constitute a New Ground of Rejection
1. Citing a different portion of a reference to elaborate upon that which has been cited previously.
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If the examiner’s answer cites a different portion of an applied reference which goes no farther than, and merely elaborates upon, what is taught in the previously cited portion of that reference, then the rejection does not constitute a new ground of rejection. For example, in In re DBC, 545 F.3d 1373 (Fed. Cir. 2008), the examiner rejected the claims under 35 U.S.C. 103 over a combination of references, including the English translation of the abstract for a Japanese patent. The examiner cited the English abstract for two claim limitations: (1) Mangosteen rind, and (2) fruit or vegetable juice. The Board affirmed the rejection under 35 U.S.C. 103 over the same references, but instead of citing the abstract, the Board cited an Example on page 16 of the English translation of the Japanese reference, which was not before the examiner. DBC, 545 F.3d at 1381. Importantly, the Board cited the Example for the same two claim limitations taught in the abstract, and the Example merely elaborated upon the medicinal qualities of the mangosteen rind (which medicinal qualities were not claimed) and taught orange juice as the preferred fruit juice (while the claim merely recited fruit or vegetable juice). Hence, the Example merely provided a more specific disclosure of the same two generic limitations that were fully taught by the abstract. The court held that this did not constitute a new ground of rejection because “the example in the translation goes no farther than, and merely elaborates upon, what is taught by the abstract.” DBC, 545 F.3d at 1382 n.5.
2. Changing the statutory basis of rejection from 35 U.S.C. 103 to 35 U.S.C. 102, but relying on the same teachings.
If the examiner’s answer changes the statutory basis of the rejection from 35 U.S.C. 103 to 35 U.S.C. 102, and relies on the same teachings of the remaining reference to support the 35 U.S.C. 102 rejection, then the rejection does not constitute a new ground of rejection. For example, in In re May, 574 F.2d 1082 (CCPA 1978), a claim directed to a genus of chemical compounds was rejected under 35 U.S.C. 103 over a combination of references. The primary reference disclosed a species that fell within the claimed genus. Both the examiner and the Board cited the species to reject the claim under 35 U.S.C. 103. The court affirmed the rejection, but did so under 35 U.S.C. 102, stating that “lack of novelty is
the epitome of obviousness.” May, 574 F.2d at 1089 (citing In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974)). Because the court relied on the same prior art species as both the examiner and Board, the court held that this did not constitute a new ground of rejection. May, 574 F.2d at 1089.
3. Relying on fewer than all references in support of a 35 U.S.C. 103 rejection, but relying on the same teachings.
If the examiner’s answer removes one or more references from the statement of rejection under 35 U.S.C. 103, and relies on the same teachings of the remaining references to support the 35 U.S.C. 103 rejection, then the rejection does not constitute a new ground of rejection. For example, in In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976), the examiner rejected the claims under 35 U.S.C. 103 over four references. The Board affirmed the rejection under 35 U.S.C. 103, but limited its discussion to three of the references applied by the examiner. Id. The Board relied upon the references for the same teachings as did the examiner. The court held that this did not constitute a new ground of rejection. Kronig, 539 F.2d at 1303 (“Having compared the rationale of the rejection advanced by the examiner and the board on this record, we are convinced that the basic thrust of the rejection at the examiner and board level was the same.”). See also In re Bush, 296 F.2d 491, 495–96 (CCPA 1961) (Examiner rejected claims 28 and 29 under 35 U.S.C. 103 based upon “Whitney in view of Harth;” Board did not enter new ground of rejection by relying only on Whitney).
4. Changing the order of references in the statement of rejection, but relying on the same teachings of those references.
If the examiner’s answer changes the order of references in the statement of rejection under 35 U.S.C. 103, and relies on the same teachings of those references to support the 35 U.S.C. 103 rejection, then the rejection does not constitute a new ground of rejection. For example, in In re Cowles, 156 F.2d 551, 552 (CCPA 1946), the examiner rejected the claims under 35 U.S.C. 103 over “Foret in view of either Preleuthner or Seyfried.” The Board affirmed the rejection under 35 U.S.C. 103, but styled the statement of rejection as to some of the rejected claims as “Seyfried in view of Foret,” but relied on
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the same teachings of Seyfried and Foret on which the examiner relied. The court held that this did not constitute a new ground of rejection. Cowles, 156 F.2d at 554. See also In re Krammes, 314 F.2d 813, 816– 17 (CCPA 1963) (holding that a different “order of combining the references” did not constitute a new ground of rejection because each reference was cited for the “same teaching” previously cited).
5. Considering, in order to respond to applicant’s arguments, other portions of a reference submitted by the applicant.
If an applicant submits a new reference to argue, for example, that the prior art “teaches away” from the claimed invention (see MPEP § 2145), and the examiner’s answer points to portions of that same reference to counter the argument, then the rejection does not constitute a new ground of rejection. In In re Hedges, 783 F.2d 1038 (Fed. Cir. 1986), the claimed invention was directed to a process for sulfonating diphenyl sulfone at a temperature above 127° C. Id. at 1039. The examiner rejected the claims under 35 U.S.C. 103 over a single reference. The applicant submitted three additional references as evidence that the prior art teaches away from performing sulfonation above 127° C, citing portions of those references which taught lower temperature reactions. The Board affirmed the rejection, finding the applicant’s evidence unpersuasive. On appeal, the Solicitor responded to the applicant’s “teaching away” argument by pointing to other portions of those same references which, contrary to applicant’s argument, disclosed reactions occurring above 127° C. The court held that this did not constitute a new ground of rejection because “[t]he Solicitor has done no more than search the references of record for disclosures pertinent to the same arguments for which [applicant] cited the references.” Hedges, 783 F.2d at 1039–40.
1207.03(b) Petition to Designate a New Ground of Rejection and to Reopen Prosecution [R-11.2013]
37 CFR 41.40 Tolling of time period to file a reply brief.
(a) Timing. Any request to seek review of the primary examiner's failure to designate a rejection as a new ground of rejection in an examiner's answer must be by way of a petition to the Director under § 1.181 of this title filed within two months from the entry of the examiner's answer and before the filing of
any reply brief. Failure of appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection.
(b) Petition granted and prosecution reopened. A decision granting a petition under § 1.181 to designate a new ground of rejection in an examiner's answer will provide a two-month time period in which appellant must file a reply under § 1.111 of this title to reopen the prosecution before the primary examiner. On failure to timely file a reply under § 1.111, the appeal will stand dismissed.
(c) Petition not granted and appeal maintained. A decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer will provide a two-month time period in which appellant may file only a single reply brief under § 41.41.
(d) Withdrawal of petition and appeal maintained. If a reply brief under § 41.41 is filed within two months from the date of the examiner's answer and on or after the filing of a petition under § 1.181 to designate a new ground of rejection in an examiner's answer, but before a decision on the petition, the reply brief will be treated as a request to withdraw the petition and to maintain the appeal.
(e) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
Appellant cannot request to reopen prosecution pursuant to 37 CFR 41.39(b) if the examiner’s answer does not have a rejection that is designated as a new ground of rejection.
37 CFR 41.40 sets forth the exclusive procedure for an appellant to request review of the primary examiner’s failure to designate a rejection as a new ground of rejection via a petition to the Director under 37 CFR 1.181. This procedure should be used if an appellant feels an answer includes a new ground of rejection that has not been designated as such and wishes to reopen prosecution so that new amendments or evidence may be submitted in response to the rejection. However, if appellant wishes to submit only arguments, the filing of a petition under 37 CFR 1.181 would not be necessary because appellant may submit the arguments in a reply brief. Any such petition under 37 CFR 1.181 must be filed within two months from the entry of the examiner’s answer and prior to the filing of a reply brief.
The authority to decide petitions under 37 CFR 41.40 is delegated to the TC Director or designee. A
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decision granting a petition under 37 CFR 41.40 will provide a two-month time period in which appellant must file a reply under 37 CFR 1.111 to avoid the dismissal of the appeal. No corrected examiner’s answer will be provided.
If the petition is granted, appellant may present amendment, evidence, and/or arguments in the reply under 37 CFR 1.111 that are directed to other rejections that are not new grounds of rejection. An after-final amendment or evidence that was previously refused entry is not automatically entered. Appellant may include such amendment or evidence in the reply. Upon filing of the reply, the prosecution will be reopened and the examiner will consider the reply. The examiner may make the next Office action final (if appropriate). See MPEP § 706.07(a).
On the other hand, if the Office refuses to grant a petition under 37 CFR 1.181 requesting designation as a new ground of rejection under 37 CFR 41.40, the appeal will be maintained. A decision refusing to grant a petition will provide a two-month time period in which appellant may file only a single reply brief under 37 CFR 41.40. The jurisdiction will pass to the Board upon the filing of a reply brief or the expiration of the two-month time period, whichever is earlier. See 37 CFR 41.35(a).
Any reply brief that is filed within two months from the date of the examiner’s answer, but before a decision on the petition, will be treated as a request to withdraw the petition and to maintain the appeal. No decision on the petition will be provided. Jurisdiction will pass to the Board upon the filing of the reply brief. See 37 CFR 41.35(a).
The time periods set forth in 37 CFR 41.40 are not extendable under 37 CFR 1.136(a), but are extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings. See 37 CFR 41.40(e).
1207.03(c) Appellant's Reply to New Grounds of Rejection [R-11.2013]
37 CFR 41.39 Examiner’s answer. *****
(b) Appellant's response to new ground of rejection. If an examiner’s answer contains a rejection designated as a new
ground of rejection, appellant must within two months from the date of the examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:
(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in § 41.41. Such a reply brief must address as set forth in § 41.37(c)(1)(iv) each new ground of rejection and should follow the other requirements of a brief as set forth in § 41.37(c). A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.
*****
The provisions of 37 CFR 41.39(b) apply only to rejections that are designated as new grounds of rejection in the examiner's answer. If appellant believes there is an undesignated new ground of rejection, review is by way of the procedure established in 37 CFR 41.40.
The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings. See 37 CFR 41.39(c).
I. REQUEST THAT PROSECUTION BE REOPENED BY FILING A REPLY
If appellant requests that prosecution be reopened, the appellant must file a reply that addresses each new ground of rejection set forth in the examiner’s answer in compliance with 37 CFR 1.111 within two months from the mailing of the examiner’s answer. The reply may also include amendments, evidence, and/or arguments directed to claims not subject to the new ground of rejection or other rejections. If there is an after-final amendment (or affidavit or other evidence) that was not entered, appellant may
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include such amendment (or affidavit or other evidence) in the reply to the examiner’s answer.
If the reply is not fully responsive to the new ground of rejection, but the reply is bona fide, the examiner should provide a time period for appellant to complete the reply pursuant to 37 CFR 1.135(c). See MPEP § 714.03. If the reply is not bona fide (e.g., does not address the new ground of rejection) and the two-month time period has expired, examiner must sua sponte dismiss the appeal. See subsection “III. Failure to Reply to a New Ground of Rejection” below.
Once appellant files a reply in compliance with 37 CFR 1.111 in response to an examiner’s answer that contains a new ground of rejection, the examiner must reopen prosecution by entering and considering the reply. The examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
II. REQUEST THAT THE APPEAL BE MAINTAINED BY FILING A REPLY BRIEF
If appellant requests that the appeal be maintained, the appellant must file a reply brief that addresses each new ground of rejection set forth in the answer in compliance with 37 CFR 41.37(c)(1)(vii) within two months from the mailing of the answer. The reply brief should include the following items, with each item starting on a separate page, so as to follow the other requirements of a brief as set forth in 37 CFR 41.37(c):
(1) Identification page setting forth the appellant’s name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (i.e., Reply Brief);
(2) Argument page(s).
The reply brief must also be in compliance with requirements set forth in 37 CFR 41.41, e.g., it
cannot include any new amendment or affidavit. If the reply brief is accompanied by any amendment or evidence, it will be treated as a request that prosecution be reopened under 37 CFR 41.39(b)(1) assuming the answer contained a rejection designated as a new ground.
The reply brief may include new arguments responsive to the designated new grounds of rejection. Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the appeal, unless good cause is shown.
Unless the Board remands the appeal under 37 CFR 41.50(a)(1) for further action by the examiner, the examiner may not answer the reply brief. Jursidiction passes to the Board immediately on filing of a reply brief or expiration of the period to do so.
III. FAILURE TO REPLY TO A NEW GROUND OF REJECTION
As specified in 37 CFR 41.35, jusridiction over the proceeding passes to the Board on filing of a reply brief or the expiration of time to file a reply brief. Therefore, examiners will not normally make determinations as to the sufficiency of a reply to a new ground of rejection.
If appellant fails to timely file a reply under 37 CFR 1.111 or a reply brief in response to an examiner’s answer that contains a new ground of rejection, the appeal will be sua sponte dismissed as to the claims subject to the new ground of rejection. If all of the claims under appeal are subject to the new ground of rejection, the entire appeal will be dismissed.
If the appeal is dismissed by the Board, the examiner should follow the procedure set forth in MPEP § 1215.
1207.04 Reopening of Prosecution After Appeal [R-11.2013]
The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to
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appellant’s brief. A new ground as used in this subsection includes both a new ground that would not be proper in an examiner's answer as described in MPEP § 1207.03, subsection II and a new ground that would be proper (with appropriate supervisory approval) as described in MPEP § 1207.03, subsection III. In deciding whether to reopen prosecution or to add a new ground of rejection to an examiner's answer where proper under MPEP § 1207.03 et seq., examiners and their supervisors should consider the degree to which the rejection previously of record is being changed, any previous reopenings after appeal brief, and the overall pendency of the application. The Office action containing a new ground of rejection may be made final if the new ground of rejection was (A) necessitated by amendment, or (B) based on information presented in an information disclosure statement under 37 CFR 1.97(c) where no statement under 37 CFR 1.97(e) was filed. See MPEP § 706.07(a). Ordinarily any after final amendment or affidavit or other evidence that was not entered before must be entered and considered on the merits as part of the action reopening prosecution. Where more than one after final amendments that conflict with each other were filed, e.g., the same claim is replaced by more than one amendment with new proposed claims of differing scope, than the first amendment should be entered and the subsequent amendments should not be entered.
Form paragraph 12.239 may be used when reopening prosecution:
¶ 12.239 Reopening of Prosecution After Appeal Brief
In view of the [1] filed on [2], PROSECUTION IS HEREBY REOPENED. [3] set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is finan( � or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
[4]
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert --appeal brief-- or --amended appeal brief--.
3. In bracket 2, insert the date on which the brief was filed.
4. In bracket 3, insert --A new ground of rejection is-- or --New grounds of rejection are--.
5. In bracket 4, insert the SPE’s signature. Approval of the SPE is required to reopen prosecution after an appeal. See MPEP §§ 1002.02(d) and 1207.04.
6. Use this form paragraph to reopen prosecution in order to make a new ground of rejection of claims. The Office action following a reopening of prosecution may be made final if all new grounds of rejection were either (A) necessitated by amendment or (B) based on information presented in an information disclosure statement under 37 CFR 1.97(c) where no statement under 37 CFR 1.97(e) was filed. See MPEP § 706.07(a).
After reopening of prosecution, appellant must exercise one of the following options to avoid abandonment of the application:
(A) file a reply under 37 CFR 1.111, if the Office action is non-final;
(B) file a reply under 37 CFR 1.113, if the Office action is final; or
(C) initiate a new appeal by filing a new notice of appeal under 37 CFR 41.31.
If appellant elects to continue prosecution and prosecution was reopened prior to a decision on the merits by the Board, the fee paid for the notice of appeal, appeal brief (if applicable), forwarding an appeal to the Board (if applicable) and request for oral hearing (if applicable) will be applied to a later appeal on the same application. If, however, the appeal fees set forth in 37 CFR 41.20 have increased since they were previously paid, applicant must pay the difference between the increased fees and the amount previously paid. If appellant elects to initiate a new appeal by filing a notice of appeal, appellant must file a complete new brief in compliance with 37 CFR 41.37 within two months from the filing of
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the new notice of appeal. See MPEP § 1204.01 for more information on reinstatement of an appeal.
1207.05 Substitute Examiner’s Answer [R-11.2013]
After receipt of a reply brief in compliance with 37 CFR 41.41, jurisdiction over the appeal passes to the Board. Normally, the examiner does not need to acknowledge the reply brief and will not have an opportunity for further comment prior to a decision by the Board. However, the Board may remand the appeal to the examiner to furnish a substitute examiner’s answer responsive to the remand.
37 CFR 41.50 Decisions and other actions by the Board.
(a)(1) Affirmance and reversal. The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed. The Board may also remand an application to the examiner.
(2) If a substitute examiner's answer is written in response to a remand by the Board for further consideration of a rejection pursuant to paragraph (a)(1) of this section, the appellant must within two months from the date of the substitute examiner's answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:
(i) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner's answer. A request that complies with this paragraph (a) will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.
(ii) Maintain appeal. Request that the appeal be maintained by filing a reply brief as provided in § 41.41. If such a reply brief is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the examiner under paragraph (a)(2)(i) of this section.
*****
The examiner may only furnish a substitute examiner’s answer in response to a remand.
In response to a substitute examiner’s answer that is written in response to a remand by the Board for further consideration of a rejection, appellant must either file: (1) a reply under 37 CFR 1.111 to request that prosecution be reopened; or (2) a reply brief to request that the appeal be maintained, within two months from the mailing of the substitute examiner’s answer, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. Examiner may include a new ground of rejection in the substitute examiner’s answer responding to a remand by the Board for further consideration of a rejection. See MPEP § 1207.03.
I. SUBSTITUTE EXAMINER’S ANSWER RESPONDING TO A REMAND FOR FURTHER CONSIDERATION OF REJECTION
The examiner may provide a substitute examiner’s answer in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a). Appellant must respond to such substitute examiner’s answer and has the option to request that prosecution be reopened. A substitute examiner’s answer written in response to a remand by the Board for further consideration of a rejection pursuant to 37 CFR 41.50(a)(2) may set forth a new ground of rejection. Any new ground of rejection made in such a substitute examiner’s answer must comply with the requirements set forth in MPEP § 1207.03. The examiner may use form paragraph 12.285 in preparing the substitute examiner’s answer responding a remand by the Board for further consideration of a rejection.
¶ 12.285 Substitute Examiner’s Answer - On Remand FOR FURTHER CONSIDERATION OF A REJECTION
Pursuant to the remand under 37 CFR 41.50(a)(1) by the Patent Trial and Appeal Board on [1] for further consideration of a rejection, a substitute Examiner’s Answer under 37 CFR 41.50(a)(2) is set forth below: [2].
The appellant must within TWO MONTHS from the date of the substitute examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:
(1) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit, or other evidence. Any amendment, affidavit, or other evidence must be relevant to the
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issues set forth in the remand or raised in the substitute examiner’s answer. Any request that prosecution be reopened will be treated as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i).
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened under 37 CFR 41.50(a)(2)(i). See 37 CFR 41.50(a)(2)(ii) .
Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.
A Technology Center Director or designee has approved this substitute examiner’s answer by signing below:
[3]
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the date of the remand.
3. In bracket 2, provide reasons supporting the rejections set forth in the substitute Examiner’s Answer.
4. In bracket 3, insert the TC Director’s or designee’s signature. A TC Director or designee must approve every substitute examiner’s answer.
A. Appellant’s Reply
If a substitute examiner’s answer is written in response to a remand by the Board for further consideration of a rejection pursuant to 37 CFR 41.50(a)(2), the appellant must, within two months of the date of the substitute examiner's answer, exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims
subject to the rejection for which the Board has remanded the proceeding:
(i) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment or submission of affidavits (37 CFR 1.130, 1.131 or 1.132) or other evidence. Any amendment or submission of affidavits or other evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner’s answer. A request that complies with 37 CFR
41.50(a)(2)(i) will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of 37 CFR 1.112. Any request that prosecution be reopened under 37 CFR 41.50(a)(2)(i) will be treated as a request to withdraw the appeal.
(ii) Maintain appeal. Request that the appeal be maintained by filing a reply brief as provided in 37 CFR 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the examiner under 37 CFR 41.50(a)(2)(i).
The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings.
1. Request That Prosecution Be Reopened by Filing a Reply
If appellant requests that prosecution be reopened, the appellant must file a reply that addresses each ground of rejection set forth in the substitute examiner’s answer in compliance with 37 CFR 1.111 within two months from the mailing of the substitute examiner’s answer. The reply may also include amendments, evidence, and/or arguments directed to claims not subject to the ground of rejection set forth in the substitute examiner's answer or other rejections. If there is after-final amendment (or affidavit or other evidence) that was not entered, appellant may include such amendment in the reply to the substitute examiner’s answer.
If the reply is not fully responsive to the ground of rejection set forth in the substitute examiner’s answer, but the reply is bona fide, the examiner should provide a time period for appellant to complete the reply pursuant to 37 CFR 1.135(c). If the reply is not bona fide (e.g., does not address the ground of rejection) and the two-month time period has expired, the examiner must sua sponte dismiss the appeal as to the claims subject to the rejection for which the Board has remanded the case.
Once appellant files a reply in compliance with 37 CFR 1.111 in response to a substitute examiner’s
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answer responding to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a), the examiner must reopen prosecution by entering and considering the reply. Examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
2. Request That the Appeal Be Maintained by Filing a Reply Brief
If appellant requests that the appeal be maintained, the appellant must file a reply brief to address each grounds of rejection set forth in the substitute examiner’s answer in compliance with 37 CFR 41.37(c)(1)(iv) within two months from the mailing of the substitute examiner's answer. The reply brief must also be in compliance with requirements set forth in 37 CFR 41.41 (e.g., it cannot include any new amendment or affidavit). If the reply brief is accompanied by an amendment, affidavit or other evidence, it will be treated as a request that prosecution be reopened before the examiner.
B. Failure To Reply to a Substitute Examiner’s Answer Under 37 CFR 41.50(a)
If appellant fails to timely file a reply under 37 CFR 1.111 or a reply brief in response to a substitute examiner’s answer that was written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a), the appeal will be sua sponte dismissed as to the claims subject to the rejection for which the Board has remanded the proceeding. As jurisdiction passes to the Board at the expiration of time to file a reply brief, the Board will prepare and mail the dismissal. If all of the claims under appeal are subject to the rejection, the entire appeal will be dismissed. The examiner should follow the procedure set forth in MPEP § 1215 after the appeal is dismissed. For example, if there is no allowed claim in the application, the application would be abandoned when the two-month time period has expired.
If only some of the claims under appeal are subject to the rejection, the dismissal of the appeal as to those claims operates as an authorization to cancel those claims and the appeal continues as to the remaining claims. The Board will render a decision in due course.
II. SUBSTITUTE EXAMINER’S ANSWER RESPONDING TO A REMAND THAT IS NOT FOR FURTHER CONSIDERATION OF REJECTION
The Director of the USPTO may remand an appeal to the examiner. See 37 CFR 41.35(c). The Board may remand an application to the examiner for a reason that is not for further consideration of a rejection, such as to consider an information disclosure statement filed before jurisdiction over the appeal transerred to the Board under 37 CFR 41.35(d), a reply brief that raised new issues that were not considered by the examiner, an amendment, or an affidavit. See MPEP § 1211. Consideration of any Information Disclosure Statement or petition filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board’s jurisdiction ends. The examiner may provide a substitute examiner’s answer in response to the remand. Appellant may respond by filing a reply brief within two months from the mailing of the substitute answer. Appellant does not have the option to request that prosecution be reopened pursuant to 37 CFR 41.50(a) unless the remand by the Board is for further consideration of a rejection under 37 CFR 41.50(a).
1208 Reply Briefs and Fee for Forwarding Appeal [R-11.2013]
37 CFR 41.40 Tolling of time period to file a reply brief.
(a) Timing. Any request to seek review of the primary examiner’s failure to designate a rejection as a new ground of rejection in an examiner’s answer must be by way of a petition to the Director under § 1.181 of this title filed within two months from the entry of the examiner’s answer and before the filing of any reply brief. Failure of appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection.
(b) Petition granted and prosecution reopened. A decision granting a petition under § 1.181 to designate a new ground of rejection in an examiner’s answer will provide a two-month time period in which appellant must file a reply under § 1.111 of this title to reopen the prosecution before the primary examiner. On failure to timely file a reply under § 1.111, the appeal will stand dismissed.
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(c) Petition not granted and appeal maintained. A decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner’s answer will provide a two-month time period in which appellant may file only a single reply brief under § 41.41.
(d) Withdrawal of petition and appeal maintained. If a reply brief under § 41.41 is filed within two months from the date of the examiner’s answer and on or after the filing of a petition under § 1.181 to designate a new ground of rejection in an examiner’s answer, but before a decision on the petition, the reply brief will be treated as a request to withdraw the petition and to maintain the appeal.
(e) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
37 CFR 41.41 Reply brief.
(a) Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer.
(b) Content.
(1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 37 CFR 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.33 for amendments, affidavits or other Evidence filed after the date of filing the appeal.
(2) Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.
(c) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
I. REPLY BRIEF
Under 37 CFR 41.41(a)(1), appellant may file a single reply brief as a matter of right within the later of two months from the date of either the examiner’s answer, or a decision refusing to grant a petition under 37 CFR 1.181 to designate a new ground of rejection in an examiner’s answer. Extensions of time to file the reply brief may be granted pursuant to 37 CFR 1.136(b) (for patent applications) or 1.550(c) (for ex parte reexamination proceedings).
Extensions of time under 37 CFR 1.136(a) are not permitted. Normally, appellant is not required to file a reply brief to respond to an examiner’s answer, and if appellant does not file a reply brief within the two month period of time, the application will be forwarded to the Board for decision on the appeal. In response to the following, however, appellant is required to file either a reply brief to maintain the appeal or a reply under 37 CFR 1.111 to reopen prosecution:
(A) An examiner’s answer that designates a new ground of rejection pursuant to 37 CFR 41.39 (see MPEP § 1207.03); or
(B) A substitute examiner’s answer responding to a remand by the Board for further consideration of a rejection pursuant to 37 CFR 41.50(a) (see MPEP § 1207.05). Such a substitute examiner’s answer may contain a new ground of rejection (also see MPEP § 1207.03).
If appellant requests that the appeal be maintained in response to a new ground of rejection made in an examiner’s answer or a substitute examiner’s answer, the appellant must file a reply brief to address each new ground of rejection set forth in the answer in compliance with 37 CFR 41.37(c)(1)(iv) within two months from the mailing of the answer. The reply brief should include the following items, with each item starting on a separate page, so as to follow the other requirements of a brief as set forth in 37 CFR 41.37(c):
(A) Identification page setting forth the appellant’s name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (i.e., Reply Brief);
(B) Argument page(s).
New or non-admitted affidavits, and/or other evidence are not permitted in a reply brief. Any new amendment must be submitted in papers separate from the reply brief, and the entry of such papers is subject to the provisions of 37 CFR 41.33. A paper that contains an amendment is not a reply brief within the meaning of 37 CFR 41.41. Such a paper will not be entitled to entry simply because it is characterized as a reply brief.
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If a reply brief is filed in response to a substitute examiner’s answer under 37 CFR 41.50(a) that was written in response to a remand by the Board for further consideration of a rejection, any reply brief accompanied by an amendment, affidavit or other evidence will be treated as a request that prosecution be reopened before the examiner. If appellant fails to file a reply brief or a reply under 37 CFR 1.111 within two months from the mailing of the examiner’s answer that contains a new ground of rejection, or a substitute examiner’s answer under 37 CFR 41.50(a), the appeal may be dismissed. See MPEP § 1207.03 and § 1207.05.
II. EXAMINER’S RESPONSE TO A REPLY BRIEF
After receipt of a reply brief under 37 CFR 41.41, jurisdiction over the appeal passes to the Board. Normally, the examiner does not need to acknowledge the reply brief and will not have an opportunity for further argument prior to a decision by the Board. However, the Board may remand the appeal to the examiner to furnish a substitute examiner’s answer responsive to the remand.
1208.01 Fee for Forwarding an Appeal to the Board [R-11.2013]
37 CFR 41.45 Appeal forwarding fee
(a) Timing. Appellant in an application or ex parte reexamination proceeding must pay the fee set forth in § 37 CFR 41.20(b)(4) within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this chapter to designate a new ground of rejection in an examiner's answer.
(b) Failure to pay appeal forwarding fee. On failure to pay the fee set forth in § 37 CFR 41.20(b)(4) within the period specified in paragraph (a) of this section, the appeal will stand dismissed.
(c) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
The examiner's answer should provide notice that the appeal forwarding fee must be paid within the requisite time period or the appeal will stand dismissed. See form paragraphs 12.279 and 12.279.01. It is preferable that appellants pay this fee at the same time any reply brief is filed.
Effective March 19, 2013, the fee for filing an appeal brief in an application or ex parte reexamination was reduced to $0 and a new fee was added for forwarding the appeal to the Board after the mailing of an examiner's answer. Failure to pay this appeal forwarding fee results in the dismissal of the appeal. In the event that appellant fails to timely pay the fee, the appeal is dismissed by rule and the examiner should proceed as indicated in MPEP § 1215 regardless of whether a separate paper is mailed dismissing the appeal. The requirement to pay the appeal forwarding fee is waived when the appeal brief fee was paid before March 19, 2013. As long as the waiver is in effect, applicants having paid the appeal brief fee before March 19, 2013 will not be required to pay the appeal forwarding fee.
The appeal forwarding fee does not apply to inter partes reexamination appeals.
1209 Oral Hearing [R-11.2013]
37 CFR 41.47 Oral hearing.
(a) An oral hearing should be requested only in those circumstances in which appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing.
(b) If appellant desires an oral hearing, appellant must file, as a separate paper captioned "REQUEST FOR ORAL HEARING," a written request for such hearing accompanied by the fee set forth in § 41.20(b)(3) within two months from the date of the examiner's answer or on the date of filing of a reply brief, whichever is earlier.
(c) If no request and fee for oral hearing have been timely filed by appellant as required by paragraph (b) of this section, the appeal will be assigned for consideration and decision on the briefs without an oral hearing.
(d) If appellant has complied with all the requirements of paragraph (b) of this section, a date for the oral hearing will be set, and due notice thereof given to appellant. If an oral hearing is held, an oral argument may be presented by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board. A hearing will be held as stated in the notice, and oral argument will ordinarily be limited to twenty minutes for appellant and fifteen minutes for the primary examiner unless otherwise ordered.
(e)(1) Appellant will argue first and may reserve time for rebuttal. At the oral hearing, appellant may only rely on Evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the brief or reply brief except as permitted by paragraph (e)(2) of this section. The primary examiner may only rely on
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argument and Evidence relied upon in an answer except as permitted by paragraph (e)(2) of this section.
(2) Upon a showing of good cause, appellant and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.
(f) Notwithstanding the submission of a request for oral hearing complying with this rule, if the Board decides that a hearing is not necessary, the Board will so notify appellant.
(g) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
37 CFR 41.47(b) provides that an appellant who desires an oral hearing before the Board must request the hearing by filing, in a separate paper captioned “REQUEST FOR ORAL HEARING,” a written request therefor, accompanied by the appropriate fee set forth in 37 CFR 41.20(b)(3), within 2 months after the date of the examiner’s answer or the date of filing of a reply brief, whichever is earlier. This time period ensures that any request for oral hearing is received not later than when jurisdiction over the proceeding passes to the Board (37 CFR 41.35(a)). Form PTO/SB/32 may be used to request an oral hearing. This time period may only be extended by filing a request under either 37 CFR 1.136(b) or, if the appeal involves an ex parte reexamination proceeding, under 37 CFR 1.550(c).
If the written request for an oral hearing is not filed in a separate paper captioned “REQUEST FOR ORAL HEARING,” the request is improper and the appeal will be assigned for consideration and decision on the briefs without an oral hearing. Likewise, if the request is not timely filed or accompanied by the appropriate fee, the request is improper and the appeal will be assigned for consideration and decision on the briefs without an oral hearing.
A notice of hearing, stating the date, the time, and the docket, is forwarded to the appellant in due course. If appellant fails to confirm the hearing within the time required in the notice of hearing or the appellant waives the hearing, the appeal will be removed from the hearing docket and assigned on brief in due course. No refund of the fee for requesting an oral hearing will be made. Similarly,
after confirmation, if no appearance is made at the scheduled hearing, the appeal will be decided on brief. Since failure to notify the Board of waiver of hearing in advance of the assigned date results in a waste of the Board’s resources, appellant should inform the Board of a change in plans at the earliest possible opportunity. If the Director or the Board determines that a hearing is not necessary (e.g., a Director-ordered remand to the examiner is necessary or it is clear that the rejection(s) cannot be sustained), appellant will be notified.
If appellant has any special request, such as for a particular date, day of the week, or afternoon vs. morning hearing session, this will be taken into consideration in setting the hearing, if made known to the Board in advance, as long as such request does not unduly delay a decision in the case and does not place an undue administrative burden on the Board.
The appellant may also file a request, in a separate paper addressed to the Clerk of the Board, to present his/her arguments via telephone or an audio-video connection. The appellant making the request will be required to bear the cost of the telephone call or the audio-video connection. Prior to the hearing date, the Board’s IT specialist may contact the appellant making an audio-video request to confirm software compatibility.
The appellant may file a request, in a separate paper addressed to the Clerk of the Board, to use a projector while presenting his/her arguments (e.g., for a PowerPoint® presentation). The Office may provide a projector for the appellant’s use subject to availability. The appellant making the request is responsible for providing his or her own laptop or mobile computer.
If the time set in the notice of hearing conflicts with prior commitments or if subsequent events make appearance impossible, the hearing may be rescheduled on written request, in a separate paper addressed to the Clerk of the Board. However, in view of the administrative burden involved in rescheduling hearings and the potential delay which may result in the issuance of any patent based on the application on appeal, postponements are discouraged and will not be granted in the absence
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of convincing reasons in support of the requested change.
Normally, 20 minutes are allowed for appellant to explain his or her position. If appellant believes that additional time will be necessary, the appellant should file a request in a separate paper addressed to the Clerk of the Board well in advance of the hearing. The request for such time will be taken into consideration in assigning the hearing date. The final decision on whether additional time is to be granted rests within the discretion of the senior member of the panel hearing the case.
At the oral hearing, appellant may only rely on evidence that has been previously entered and considered by the primary examiner and present arguments that have been relied upon in the brief or reply brief. Upon a showing of good cause, appellant and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.
The Board's current procedure permits members of the public to attend oral hearings in appeals of reexamination proceedings, reissues, and published applications. Members of the public are not permitted to attend appeals of non-published applications. More information is available at http://uspto.gov/ip/boards/public_hearing_info.jsp. All parties, including USPTO employees, attending oral hearings should be particularly mindful of the published Hearing Room Protocol/Decorum. Appropriate attire is clothing that would be worn for an important business meeting.
37 CFR 41.47(f) provides that notwithstanding the submission of a request for oral hearing, if the Board decides that a hearing is not necessary, the Board will so notify appellant. Examples as to when it would be appropriate for the Board to decide that an oral hearing is not necessary include those where the Board has become convinced, prior to hearing, that the examiner’s position cannot be sustained or where the Director determines that the proceeding must be remanded to the examiner under 37 CFR 41.35(c).
PARTICIPATION BY EXAMINER
If the appellant has requested an oral hearing and the primary examiner wishes to appear and present an oral argument before the Board, a request to present oral argument must be set forth in a separate letter on a form PTOL-90 using form paragraph 12.279.03.
¶ 12.279.03 Request to Present Oral Arguments
The examiner requests the opportunity to present arguments at the oral hearing.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. Use this form paragraph only if an oral hearing has been requested by appellant and the primary examiner intends to present an oral argument.
3. This form paragraph must be included as a separate letter on a form PTOL-90.
In those appeals in which an oral hearing has been confirmed by the appellant and the primary examiner has indicated a desire to participate in the oral argument, oral argument will generally only be held if the appellant actually appears for oral argument. If the appellant fails to make an appearance for oral argument, the hearing typically will be waived, and the primary examiner will not be given an opportunity to participate unless the panel hearing the case deems that a presentation by the primary examiner would be useful.
After the oral hearing has been confirmed and the date set as provided in 37 CFR 41.47(d), the primary examiner and the examiner’s supervisor should be notified of the date and time of the hearing. In those cases where the Board requests the presentation of an oral argument by or on behalf of the primary examiner, the Board’s request may, where appropriate, indicate specific points or questions to which the argument should be particularly directed.
On the day of the hearing, examiners associated with the appeal should notify the usher at the Board that they are associated with the appeal and that they are attending the hearing. In addition, the primary examiner associated with the appeal should indicate
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whether they plan to participate in the oral hearing. At the hearing, after the appellant has made his or her presentation, the examiner will be allowed 15 minutes to reply as well as to present a statement which clearly sets forth his or her position with respect to the issues and rejections of record. Generally, the primary examiner may rely on only argument and evidence relied upon in the examiner’s answer. The primary examiner may, however, rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court. Appellant may utilize any allotted time not used in the initial presentation for rebuttal.
1210 Actions Subsequent to Examiner’s Answer but Before Board’s Decision [R-11.2013]
I. JURISDICTION OF BOARD
37 CFR 41.35 Jurisdiction over appeal.
(a) Beginning of jurisdiction. Jurisdiction over the proceeding passes to the Board upon the filing of a reply brief under § 41.41 or the expiration of the time in which to file such a reply brief, whichever is earlier.
(b) End of jurisdiction. The jurisdiction of the Board ends when:
(1) The Director or the Board enters a remand order (see §§ 41.35(c), 41.35(e), and 41.50(a)(1)),
(2) The Board enters a final decision (see § 41.2) and judicial review is sought or the time for seeking judicial review has expired,
(3) An express abandonment which complies with § 1.138 of this title is recognized,
(4) A request for continued examination is filed which complies with § 1.114 of this title,
(5) Appellant fails to take any required action under §§ 41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d), and the Board enters an order of dismissal, or
(6) Appellant reopens prosecution pursuant to § 41.40(b) or in response to a new ground of rejection entered in a decision of the Board (see § 41.50(b)(1)).
(c) Remand ordered by the Director. Prior to the entry of a decision on the appeal by the Board (see § 41.50), the Director may sua sponte order the proceeding remanded to the examiner.
(d) Documents filed during Board's jurisdiction. Except for petitions authorized by this part, consideration of any information disclosure statement or petition filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board's jurisdiction ends.
(e) Administrative remands ordered by the Board. If, after receipt and review of the proceeding, the Board determines that
the file is not complete or is not in compliance with the requirements of this subpart, the Board may relinquish jurisdiction to the examiner or take other appropriate action to permit completion of the file.
Jurisdiction over the application passes from the Technology Centers to the Board at the time specified in 37 CFR 41.35(b).
Any amendment or other paper relating to the appeal filed thereafter, but prior to the decision of the Board, may be considered by the examiner only in the event the case is remanded for that purpose.
II. ABANDONMENT OF APPEAL: APPLICATION REFILED OR ABANDONED
To avoid the rendering of decisions by the Board in applications which appellants have decided to abandon or to refile as continuations, appellants should promptly inform the Clerk of the Board in writing as soon as they have positively decided to refile or to abandon an application containing an appeal awaiting a decision. Failure to exercise appropriate diligence in this matter may result in the Board’s refusing an otherwise proper request to vacate its decision.
See MPEP § 1215.01 - § 1215.03 concerning the withdrawal of appeals.
1211 Remand by Director or Board [R-11.2013]
Both the Director and the Board have the authority to remand a case to the examiner when necessary. See 37 CFR 41.35(c), (e) and 37 CFR 41.40(a). As specified by 37 CFR 41.50(e), a remand by the Board is not appealable (i.e. not final for purposes of juducial review). In any remand, jurisdiction over the appeal is transferred from the Board back to the examiner. Following the remand, the examiner should take action consistent with the remand order. In the absence of other guidance in the remand order, the examiner should take an action described in MPEP § 1207.
For example, the Director may remand a case for consideration of a new ground of rejection pursuant to 37 CFR 41.35(c) where there has been a change in the law that calls for a new ground of rejection to
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be entered. Such a remand may require the examiner to prepare a substitute examiner’s answer to enter the new ground of rejection.
1211.01 Remand by Board for Further Consideration of Rejection [R-11.2013]
A substitute examiner’s answer written in response to a remand by the Board for consideration of a rejection pursuant to 37 CFR 41.50(a)(1) may set forth a new ground of rejection. See MPEP § 1207.03.
If a substitute examiner’s answer is written in response to a remand by the Board for consideration of a rejection pursuant to 37 CFR 41.50(a)(1) (even when there is no new ground of rejection made in the substitute examiner’s answer), the appellant must exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims
subject to the rejection for which the Board has remanded the proceeding:
(A) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment or submission of affidavits (37 CFR 1.131(a), 37 CFR 1.131(c) or 1.132) or other evidence. Any amendment or submission of affidavits or other evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner’s answer. A request that complies with 37 CFR 41.50(a)(2)(i) will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of 37 CFR 1.112. Any request that prosecution be reopened under 37 CFR 41.50(a)(2)(i) will be treated as a request to withdraw the appeal.
(B) Maintain appeal. Request that the appeal be maintained by filing a reply brief as provided in 37 CFR 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the examiner under 37 CFR 41.50(a)(2)(i).
SeeMPEP § 1207.03 for information on new grounds of rejection.
See MPEP § 1207.05 for information on substitute examiner’s answer and appellant’s response to a substitute examiner’s answer.
See MPEP § 1208 for information on reply briefs.
The following are two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection:
(A) A remand to consider an Information Disclosure Statement; and
(B) A remand for the examiner to consider a reply brief.
37 CFR 41.50(a)(2) does not apply when the remand by the Board is not for further consideration of a rejection. The Board will normally indicate in the remand whether 37 CFR 41.50(a)(2)(i) applies. Appellant cannot request that prosecution be reopened under 37 CFR 41.50(a)(2)(i) and is not required to reply to a substitute examiner’s answer that is written in response to a remand that is not for further consideration of a rejection.
The following form paragraph may be used in preparing the substitute examiner’s answer after a remand from the Board:
¶ 12.285 Substitute Examiner’s Answer - On Remand FOR FURTHER CONSIDERATION OF A REJECTION
Pursuant to the remand under 37 CFR 41.50(a)(1) by the Patent Trial and Appeal Board on [1] for further consideration of a rejection, a substitute Examiner’s Answer under 37 CFR 41.50(a)(2) is set forth below: [2].
The appellant must within TWO MONTHS from the date of the substitute examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:
(1) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit, or other evidence. Any amendment, affidavit, or other evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner’s answer. Any request that prosecution be reopened will be treated as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i).
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41. If such a reply
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brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened under 37 CFR 41.50(a)(2)(i). See 37 CFR 41.50(a)(2)(ii) .
Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.
A Technology Center Director or designee has approved this substitute examiner’s answer by signing below:
[3]
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the date of the remand.
3. In bracket 2, provide reasons supporting the rejections set forth in the substitute Examiner’s Answer.
4. In bracket 3, insert the TC Director’s or designee’s signature. A TC Director or designee must approve every substitute examiner’s answer.
The supervisory patent examiner must approve any action in which a remanded application is withdrawn from appeal. See MPEP §§ 706.07(e) and 1002.02(d). If the examiner decides to withdraw the final rejection and reopen prosecution to enter a new ground of rejection, approval from the supervisory patent examiner is required. See MPEP § 1207.04.
1211.02 Remand To Consider Amendment [R-11.2013]
There is no obligation resting on the Board to consider new or amended claims submitted while it has jurisdiction of the appeal. In re Sweet, 136 F.2d 722, 58 USPQ 327 (CCPA 1943). However, a proposed amendment filed after the date of filing of a brief to either cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or to rewrite dependent claims into independent form may be remanded for consideration by the examiner. See MPEP § 1206.
If the proposed amendment is in effect an abandonment of the appeal, the appeal will normally be dismissed by the Board.
1211.03 Remand To Consider Affidavits or Declarations [R-11.2013]
Affidavits or declarations filed with the filing of a notice of appeal but before jurisdiction passes to the Board (see MPEP § 1206) will be considered for entry only if the appellant makes the necessary showing under 37 CFR 1.116(e) as to why they are necessary and were not earlier presented. Authority from the Board is not necessary to consider such affidavits or declarations. Affidavits or declarations filed after a final rejection and prior to a notice of appeal are handled as provided in MPEP §§ 715.09, 716, and 716.01. If such evidence has not been treated by the examiner, the Board or the Director may remand the proceeding to permit the examiner to consider such evidence.
In the case of affidavits or declarations filed after the filing of a notice of appeal, but before a jurisdiction passes to the Board under 37 CFR 41.35, the examiner is without authority to consider the same unless the examiner determines that the affidavit or other evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented have been made. See MPEP § 1206.
It is not the custom of the Board to remand affidavits or declarations offered in connection with a request for rehearing of its decision where no rejection has been made under 37 CFR 41.50(b). Affidavits or declarations submitted for this purpose, not remanded to the examiner, are considered only as arguments. In re Martin, 154 F.2d 126, 69 USPQ 75 (CCPA 1946).
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For remand to the examiner to consider appellant’s response relating to a 37 CFR 41.50(b) rejection, see MPEP § 1214.01.
1211.04 Remand by Board for Further Search [R-08.2012]
It should be extremely rare for the Board to remand a case to the examiner for further search. A remand to the examiner extends the total pendency of an application and may necessitate an extension of the patent term under 35 U.S.C. 154(b). See MPEP § 2710. When such a remand is necessary, the Board should conduct a search (on-line or otherwise) of at least one subclass and cite art from that subclass to demonstrate the basis on which it concludes that a search of this area would be material.The art cited need not be art upon which a rejection can be made.
1212 Board Requires Appellant to Address Matter [R-11.2013]
37 CFR 41.50 Decisions and other actions by the Board. *****
(d) Request for briefing and information. The Board may order appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal. Appellant will be given a time period within which to respond to such an order. Failure to timely comply with the order may result in the sua sponte dismissal of the appeal.
*****
37 CFR 41.50(d) authorizes the Board to require appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal. This may include, for example: (A) the applicability of particular case law that has not been previously identified as relevant to an issue in the appeal; or (B) the applicability of prior art that has not been made of record. However, consideration of information disclosure statements filed while the Board possesses jurisdiction over the appeal will be held in abeyance until the Board's jurusdiction ends. See 37 CFR 41.35(d).
The rule further provides that the appellant will be given a time period within which to respond to the requirement. Extensions of time are only available under 37 CFR 1.136(b). Failure to respond within
the time period set by the Board may result in dismissal of the appeal.
The making of a requirement under 37 CFR 41.50(d) is discretionary with the Board. The authority granted in 37 CFR 41.50(d) does not affect the Board’s authority to remand a case to the examiner in a situation where the Board considers action by the examiner in the first instance to be necessary or desirable. See MPEP § 1211. Also, after an appellant has replied to a requirement under 37 CFR 41.50(d), a remand by the Board to the examiner may be appropriate to permit the examiner to respond to the appellant’s response to the Board’s order.
1213 Decision by Board [R-11.2013]
37 CFR 41.50 Decisions and other actions by the Board.
(a)(1) Affirmance and reversal. The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed. The Board may also remand an application to the examiner.
(2) If a substitute examiner's answer is written in response to a remand by the Board for further consideration of a rejection pursuant to paragraph (a)(1) of this section, the appellant must within two months from the date of the substitute examiner's answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:
(i) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner's answer. A request that complies with this paragraph (a) will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.
(ii) Maintain appeal. Request that the appeal be maintained by filing a reply brief as provided in § 41.41. If such a reply brief is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the examiner under paragraph (a)(2)(i) of this section.
(b) New ground of rejection. Should the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in its opinion a
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statement to that effect with its reasons for so holding, and designate such a statement as a new ground of rejection of the claim. A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.
(c) Review of undesignated new ground of rejection. Any request to seek review of a panel's failure to designate a new ground of rejection in its decision must be raised by filing a request for rehearing as set forth in § 41.52. Failure of appellant to timely file such a request for rehearing will constitute a waiver of any arguments that a decision contains an undesignated new ground of rejection.
(d) Request for briefing and information. The Board may order appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal. Appellant will be given a time period within which to respond to such an order. Failure to timely comply with the order may result in the sua sponte dismissal of the appeal.
(e) Remand not final action. Whenever a decision of the Board includes a remand, that decision shall not be considered final for judicial review. When appropriate, upon conclusion of proceedings on remand before the examiner, the Board may enter an order otherwise making its decision final for judicial review.
(f) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
After consideration of the Record including appellant’s briefs and the examiner’s answers, the Board writes its decision, affirming the examiner in whole or in part, or reversing the examiner’s
decision, sometimes also setting forth a new ground of rejection.
37 CFR 41.50(e) provides that a decision of the Board which includes a remand will not be considered final for judicial review. The Board, following conclusion of the proceedings before the examiner, will either adopt its earlier decision as final for judicial review or will render a new decision based on all appealed claims, as it considers appropriate. In either case, final action by the Board will give rise to the alternatives available to an appellant following a decision by the Board.
On occasion, the Board has refused to consider an appeal until after the conclusion of a pending civil action or appeal to the Court of Appeals for the Federal Circuit involving issues identical with and/or similar to those presented in the later appeal. Such suspension of action, postponing consideration of the appeal until the Board has the benefit of a court decision which may be determinative of the issues involved, has been recognized as sound practice. An appellant is not entitled, after obtaining a final decision by the U.S. Patent and Trademark Office on an issue in a case, to utilize the prolonged pendency of a court proceeding as a means for avoiding res judicata while relitigating the same or substantially the same issue in another application.
An appellant may petition that the decision be withheld to permit the refiling of the application at any time prior to the mailing of the decision. Up to 30 days may be granted, although the time is usually limited as much as possible. The Board will be more prone to entertain the appellant’s petition where the petition is filed early, obviating the necessity for an oral hearing or even for the setting of the oral hearing date. If the case has already been set for oral hearing, the petition should include a request to vacate the hearing date, not to postpone it.
In a situation where a withdrawal of the appeal is filed on the same day that the decision is mailed, a petition to vacate the decision will be denied.
See MPEP § 1214.01 concerning the procedure following a new ground of rejection by the Board under 37 CFR 41.50(b).
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§ 1213APPEAL
A remark by the Board that a certain feature does not appear in a claim is not to be taken as a statement that the claim may be allowed if the feature is supplied by amendment. Ex parte Norlund, 1913 C.D. 161, 192 O.G. 989 (Comm’r Pat. 1913). A remark by the Board shall not be construed by appellant to give appellant authority to amend the claim.
1213.01 [Reserved]
1213.02 New Grounds of Rejection by Board [R-11.2013]
37 CFR 41.50 Decisions and other actions by the Board. *****
(b) New ground of rejection. Should the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, and designate such a statement as a new ground of rejection of the claim. A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.
*****
(f) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
Under 37 CFR 41.50(b), the Board may, in its decision, make a new rejection of one or more of any of the claims pending in the case, including claims which have been allowed by the examiner. When the Board exercises its authority to make a new ground of rejection it must also designate that rejection as a new ground of rejection.
The Board’s reversal of a rejection should not be interpreted as an instruction to the Examiner to allow the claims so rejected. See MPEP § 1214.04 for further discussion of the procedure following a reversal of the examiner’s decision. The Board’s primary role is to review the adverse decision as presented by the Examiner, and not to conduct its own separate examination of the claims. Further, since the exercise of authority under 37 CFR 41.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion.
While the Board is authorized to reject allowed claims, this authorization is not intended as an instruction to the Board to examine every allowed claim in every appealed application. It is, rather, intended to give the Board express authority to act when it becomes apparent, during the consideration of rejected claims, that one or more allowed claims may be subject to rejection on either the same or on different grounds from those applied against the rejected claims.
See MPEP § 1214.01 for the procedure following a new ground of rejection under 37 CFR 41.50(b).
1213.03 Publication of and Public Access to Board Decision [R-11.2013]
37 CFR 41.6 Public availability of Board records.
(a) Publication.
(1) Generally. Any Board action is available for public inspection without a party’s permission if rendered in a file open to the public pursuant to § 1.11 of this title or in an application that has been published in accordance with §§ 1.211 to 1.221 of this title. The Office may independently publish any Board action that is available for public inspection.
(2) Determination of special circumstances.Any Board action not publishable under paragraph (a)(1) of this section may be published or made available for public inspection if the Director believes that special circumstances warrant publication and a party does not, within two months after being notified of the intention to make the action public, object in writing on the
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ground that the action discloses the objecting party’s trade secret or other confidential information and states with specificity that such information is not otherwise publicly available. If the action discloses such information, the party shall identify the deletions in the text of the action considered necessary to protect the information. If the affected party considers that the entire action must be withheld from the public to protect such information, the party must explain why. The party will be given time, not less than twenty days, to request reconsideration and seek court review before any contested portion of the action is made public over its objection.
(b) Record of proceeding.
(1) The record of a Board proceeding is available to the public unless a patent application not otherwise available to the public is involved.
(2) Notwithstanding paragraph (b)(1) of this section, after a final Board action in or judgment in a Board proceeding, the record of the Board proceeding will be made available to the public if any involved file is or becomes open to the public under § 1.11 of this title or an involved application is or becomes published under §§ 1.211 to 1.221 of this title.
Any Board decision is available for public inspection without a party’s permission if rendered in a file open to the public pursuant to 37 CFR 1.11 or in an application that has been published in accordance with 37 CFR 1.211 through 1.221. The Office may independently publish any Board action that is available for public inspection.
Decisions of the Board which are open to the public are available in electronic form on the USPTO Web site (http://www.uspto.gov) in the FOIA reading room.
Any Board decision rendered in a file not open to the public pursuant to 37 CFR 1.11 or in an application that has not been published in accordance with 37 CFR 1.211 through 1.221 may be published or made available for public inspection under 37 CFR 41.6(a)(2) if the Director believes that special circumstances warrant publication.
1214 Procedure Following Decision by Board [R-11.2013]
37 CFR 41.54 Action following decision.
After decision by the Board, jurisdiction over an application or patent under ex parte reexamination proceeding passes to the examiner, subject to appellant's right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the application or patent under ex parte
reexamination proceeding may require, to carry into effect the decision.
After an appeal to the Board has been decided, a copy of the decision is provided to appellant and placed in IFW. The 63-day time period for filing an appeal or commencing a civil action under 37 CFR 90.3, or the two month period for filing a request for rehearing under 37 CFR 41.52, begins to run from the “MAIL DATE” if the decision is provided by paper delivery, or the “NOTIFICATION DATE” if the decision is provided by electronic delivery, as shown on the FORM PTOL-90A attached to the decision. The application is returned to the Technology Center electronically via a change in the PALM status code reflecting the decision of the Board. If the Board decision affirms or affirms in part the decision of the examiner, the examiner must await the expiration of this two month period before taking any further action.
1214.01 Procedure Following New Ground of Rejection by Board [R-11.2013]
When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant, as to each claim so rejected, has the option of:
(A) reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence (37 CFR 41.50(b)(1)); or
(B) requesting rehearing before the Board (37 CFR 41.50(b)(2)).
This procedure only applies where the Board designates a rejection as a new ground of rejection under 37 CFR 41.50(b). If an appellant believes that a Board decision that appears to be an affirmance is actually a new ground of rejection, review of any undesignated new ground of rejection is by way of 37 CFR 41.50(c) and 37 CFR 41.52 and not through the procedure described here.
Where a decision designates a new ground of rejection under 37 CFR 41.50(b), the Board retains jurisdiction over the appeal until:
(a) the time for response expires and the Board enters an order of dismissal (37 CFR 41.35(b)(5)), or
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§ 1214.01APPEAL
(b) appellant reopens prosecution in response to the new grounds of rejection (37 CFR 41.35(b)(6)).
The amendment and/or new evidence under 37 CFR 41.50(b)(1), or the request for rehearing under 37 CFR 41.50(b)(2), must be filed within 2 months from the date of the Board’s decision. In accordance with 37 CFR 41.50(f), this 2-month time period may not be extended by the filing of a petition and fee under 37 CFR 1.136(a), but only under the provisions of 37 CFR 1.136(b), or under 37 CFR 1.550(c) if the appeal involves an ex parte reexamination proceeding.
If an appellant files an appropriate amendment or new evidence (see paragraph I below) as to less than all of the claims rejected by the Board under 37 CFR 41.50(b), and a request for rehearing (see paragraph II below) as to the remainder of the claims so rejected, the examiner will not consider the claims for which rehearing was requested. The request for rehearing will be considered by the Board after prosecution before the examiner with respect to the first group of claims is terminated. Argument as to any of the claims rejected by the Board which is not accompanied by an appropriate amendment or new evidence as to those claims will be treated as a request for rehearing as to those claims.
I. SUBMISSION OF AMENDMENT OR NEW EVIDENCE
37 CFR 41.50(b)(1) provides that the application will be remanded to the examiner for reconsideration if the appellant submits “an appropriate amendment” of the claims rejected by the Board, “or new evidence relating to the claims so rejected, or both.” An amendment is “appropriate” under the rule if it amends one or more of the claims rejected, or substitutes new claims to avoid the art or reasons adduced by the Board. Ex parte Burrowes, 110 O.G. 599, 1904 C.D. 155 (Comm’r Pat. 1904). Such amended or new claims must be directed to the same subject matter as the appealed claims. Ex parte Comstock, 317 O.G. 4,1923 C.D. 82 (Comm’r Pat. 1923). An amendment which adds new claims without either amending the rejected claims, or substituting new claims for the rejected claims, is not appropriate. The new claims will not be entered, and the examiner should consult a supervisor to have the entry in the file changed to a request for
rehearing under 37 CFR 41.50(b)(2), if it contains any argument concerning the Board’s rejection. The “new evidence” under the rule may be a showing under 37 CFR 1.130, 1.131 or 1.132, as may be appropriate.
If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing under 37 CFR 41.50(b)(2).
The new ground of rejection raised by the Board does not reopen prosecution except as to that subject matter to which the new rejection was applied. If the Board’s decision in which the rejection under 37 CFR 41.50(b) was made includes an affirmance of the examiner’s rejection, the basis of the affirmed rejection is not open to further prosecution. If the appellant elects to proceed before the examiner with regard to the new rejection, the Board’s affirmance of the examiner’s rejection will be treated as nonfinal for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time. Prosecution before the examiner of the 37 CFR 41.50(b) rejection can incidentally result in overcoming the affirmed rejection even though the affirmed rejection is not open to further prosecution. Therefore, it is possible for the application to be allowed as a result of the limited prosecution before the examiner of the 37 CFR 41.50(b) rejection. If the application becomes allowed, the application should not be returned to the Board. Likewise, if the application is abandoned for any reason, the application should not be returned to the Board. If the rejection under 37 CFR 41.50(b) is not overcome, the applicant can file a second appeal (as discussed below). Such appeal must be limited to the 37 CFR 41.50(b) rejection and may not include the affirmed rejection. If the application does not become allowed or abandoned as discussed above, once prosecution of the claims which were rejected under 37 CFR 41.50(b) is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered.
The time for filing a request for rehearing on the affirmance or seeking court review runs from the date of the decision by the Board making the original
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affirmance final. See MPEP §§ 1214.03 and 1216. The date of the decision is the "mailing date" or "notification date" indicated on form PTOL-90 accompanying the Board decision. See In re McNeil-PPC, 574 F.3d 1393, 91 USPQ2d 1576 (Fed. Cir. 2009).
If the examiner does not consider that the amendment and/or new evidence overcomes the rejection, he or she will again reject the claims. If appropriate, the rejection will be made final.
An applicant in whose application such a final rejection has been made by the examiner may mistakenly believe that he or she is entitled to review by the Board of the rejection by virtue of the previous appeal, but under the provisions of 37 CFR 41.50(b)(1), after such a final rejection, an applicant who desires further review of the matter must file a new appeal to the Board. Such an appeal from the subsequent rejection by the examiner will be an entirely new appeal involving a different ground and will require a new notice of appeal, appeal brief, and the payment of the appropriate fees.
II. REQUEST FOR REHEARING
Instead of filing an amendment and/or new evidence under 37 CFR 41.50(b)(1), an appellant may elect to proceed under 37 CFR 41.50(b)(2) and file a request for rehearing of the Board’s new rejection. The rule requires that the request for rehearing “must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in rendering the decision and also state all other grounds upon which rehearing is sought.” By proceeding in this manner, the appellant waives his or her right to further prosecution before the examiner. In re Greenfield, 40 F.2d 775, 5 USPQ 474 (CCPA 1930). A request for rehearing accompanied by an appropriate amendment of the claims rejected by the Board, and/or by new evidence, does not constitute a proper request for rehearing under 37 CFR 41.50(b)(2), and will be treated as a submission under 37 CFR 41.50(b)(1).
If the Board’s decision also includes an affirmance of the examiner’s rejection, a request for rehearing of the affirmance (see MPEP §§ 1214.03 and
1214.06, subsection IV.) should be filed in a separate paper to facilitate consideration.
1214.02 [Reserved]
1214.03 Rehearing [R-11.2013]
37 CFR 41.52 Rehearing.
(a)(1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section. When a request for rehearing is made, the Board shall render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing, and is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing.
(2) Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection designated pursuant to § 41.50(b) are permitted.
(4) New arguments that the Board's decision contains an undesignated new ground of rejection are permitted.
(b) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
The term “rehearing” is used in 37 CFR 41.52 for consistency with the language of 35 U.S.C. 6(b). It should not be interpreted as meaning that an appellant is entitled to an oral hearing on the request for rehearing, but only to a rehearing on the written record. It is not the normal practice of the Board to grant rehearings in the sense of another oral hearing. Ex parte Argoudelis, 157 USPQ 437, 441 (Bd. App. 1967), rev’d. on other grounds, 434 F.2d 1390, 168 USPQ 99 (CCPA 1970).
37 CFR 41.52 provides that any request for rehearing must specifically state the points believed to have
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been misapprehended or overlooked in the Board’s decision. Experience has shown that many requests for rehearing are nothing more than reargument of appellant’s position on appeal. In response, the rule was revised to limit requests to the points of law or fact which appellant feels were overlooked or misapprehended by the Board. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except appellant may present (A) new argument(s) based upon a recent relevant decision of either the Board or a Federal Court, (B) new argument(s) responding to a new ground of rejection made pursuant to 37 CFR 41.50(b), and (C) new argument(s) that the Board’s decision contains an undesignated new ground of rejection. If appellant relies upon a recent relevant decision of either the Board or a Federal Court, a remand by the Board to the examiner to respond to that new argument may be appropriate.
The 2-month period provided by 37 CFR 41.52(a) for filing a request for rehearing can only be extended under the provisions of 37 CFR 1.136(b) or under 37 CFR 1.550(c) if the appeal involves an ex parte reexamination proceeding.
For extension of time to appeal to the Court of Appeals for the Federal Circuit or commence a civil action under 37 CFR 90.3(c), see MPEP § 1216 and § 1002.02(o).
For requests for reconsideration by the examiner, see MPEP § 1214.04.
Should an Administrative Patent Judge (APJ) retire or otherwise become unavailable to reconsider a decision, normally another APJ will be designated as a substitute for the unavailable APJ.
1214.04 Examiner Reversed [R-11.2013]
A complete reversal of the examiner’s rejection brings the case up for immediate action by the examiner. If the reversal does not place an application in condition for immediate allowance (e.g., the Board has entered a new ground of rejection under 37 CFR 41.50(b)), the examiner
should refer to the situations outlined in MPEP § 1214.06 for appropriate guidance.
The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references. This is particularly so where the application or ex parte reexamination proceeding has meanwhile been transferred or assigned to an examiner other than the one who rejected the claims leading to the appeal. The second examiner should give full faith and credit to the prior examiner’s search.
If the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims as to which the examiner was reversed, he or she should submit the matter to the Technology Center (TC) Director for authorization to reopen prosecution under 37 CFR 1.198 for the purpose of entering the new rejection. See MPEP § 1002.02(c) and MPEP § 1214.07. The TC Director’s approval is placed on the action reopening prosecution.
The examiner may request rehearing of the Board decision. Such a request should normally be made within 2 months of the return of the application to the TC.
All requests by the examiner to the Board for rehearing of a decision must be approved by the TC Director and must also be forwarded to the Office of the Deputy Commissioner for Patent Examination Policy for approval before mailing.
The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the answers before the Board and evidence not previously relied upon in the answers are not permitted in the request for rehearing except that the examiner may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.
The request should set a period of 2 months for the appellant to file a reply.
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If the request for rehearing is approved by the Office of the Deputy Commissioner for Patent Examination Policy, the TC will enter the the request for rehearing in the electronic file and a copy will be mailed or given to the appellant.
1214.05 Cancellation of Claims NotAppealed [R-11.2013]
Pursuant to 37 CFR 41.31(c), an appeal is presumed to be taken from the rejection of all claims. Where, in an appeal brief filed before January 23, 2012, an appellant withdraws some of the appealed claims (i.e., claims subject to a ground of rejection that the appellant did not present for review in the brief), and the Board reverses the examiner on the remaining appealed claims, the withdrawal is treated as an authorization to cancel the withdrawn claims. It is necessary for the examiner to notify the appellant of the cancellation of the withdrawn claims. See MPEP § 1205.02.
1214.06 Examiner Sustained in Whole or in Part [R-11.2013]
37 CFR 41.35 Jurisdiction over appeal. *****
(b) End of jurisdiction. The jurisdiction of the Board ends when:
*****
(2) The Board enters a final decision (see § 41.2) and judicial review is sought or the time for seeking judicial review has expired,
*****
37 CFR 1.197 Termination of proceedings.
(a) [Reserved]
(b) Termination of proceedings.
(1) Proceedings on an application are considered terminated by the dismissal of an appeal or the failure to timely file an appeal to the court or a civil action (§ 1.304) except:
(i) Where claims stand allowed in an application; or
(ii) Where the nature of the decision requires further action by the examiner.
(2) The date of termination of proceedings on an application is the date on which the appeal is dismissed or the date on which the time for appeal to the U.S. Court of Appeals for the Federal Circuit or review by civil action (§ 1.304) expires in the absence of further appeal or review. If an appeal to the
U.S. Court of Appeals for the Federal Circuit or a civil action has been filed, proceedings on an application are considered terminated when the appeal or civil action is terminated. A civil action is terminated when the time to appeal the judgment expires. An appeal to the U.S. Court of Appeals for the Federal Circuit, whether from a decision of the Board or a judgment in a civil action, is terminated when the mandate is issued by the Court.
The practice under the situations identified in subsections I-III below is similar to the practice after a decision of the court outlined in MPEP § 1216.01. Examiners must be very careful that applications and ex parte reexamination proceedings that leave the jurisdiction of the Board are not overlooked because every case is up for action by the examiner in the event no court review has been sought. See MPEP §§ 1216.01 and 1216.02 for procedure where court review is sought.
As provided by 37 CFR 90.3, the time for seeking review of a decision of the Board by the Court of Appeals for the Federal Circuit or the U.S. District Court for the Eastern District of Virginia is the same for both tribunals, that is, 63 days plus any additional time requested and granted under 37 CFR 90.3(c). In the event a request for rehearing is timely filed before the Board, or as extended by the Director. See MPEP § 1216. When the time for seeking court review has passed without such review being sought, the examiner must take up the application or ex parte reexamination for consideration. The situations which can arise will involve one or more of the following circumstances:
I. NO CLAIMS STAND ALLOWED
The proceedings in an application or ex parte reexamination proceeding are terminated as of the date of the expiration of the time for filing court action. The application is no longer considered as pending. In an application, a Notice of Abandonment should be prepared and mailed. In an ex parte reexamination proceeding, a reexamination certificate should be issued under 37 CFR 1.570.
Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated as if they were rejected. The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
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(A) If claims 1-2 are pending, and the Board affirms a rejection of claim 1 and claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1, the examiner should hold the application abandoned.
(B) If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, after expiration of the period for further appeal, the examiner should proceed in one of two ways:
(1) Convert the dependent claim into independent form by examiner’s amendment, cancel all claims in which the rejection was affirmed, and issue the application; or
(2) Set a 1-month time limit in which appellant may rewrite the dependent claim(s) in independent form. Extensions of time under 37 CFR 1.136(a) will not be permitted. If no timely reply is received, the application is abandoned since no claims stand allowed.
The following form paragraph may be used where appropriate:
¶ 12.291 Examiner Sustained in Part - Requirement of Rewriting Dependent Claims (No Allowed Claim)
The Patent Trial Appeal Board affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. There are no allowed claims in the application. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06. Applicant is given a TWO MONTH TIME PERIOD from the mailing date of this letter in which to present the dependent claim(s) in independent form to avoidABANDONMENT of the application. EXTENSIONS OF TIME UNDER 37 CFR 1.136(a) ARE AVAILABLE. Prosecution is otherwise closed.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, enter the independent claim number(s) for which the Board affirmed the rejection(s).
3. In bracket 2, enter the dependent claim number(s) for which the Board reversed the rejection(s).
II. CLAIMS STAND ALLOWED
The appellant is not required to file a reply. The examiner issues the application or ex parte reexamination certificate on the claims which stand allowed. It is not necessary for the applicant or patent
owner to cancel the rejected claims, since they may be canceled by the examiner in an examiner’s amendment.
If the Board affirms a rejection of claim 1, claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1 and independent claim 3 is allowed, the examiner should cancel claims 1 and 2 and issue the application or ex parte reexamination certificate with claim 3 only.
If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, the examiner should either:
(A) Convert dependent claim 2 into independent form by examiner’s amendment, cancel claim 1 in which the rejection was affirmed, and issue the application or ex parte reexamination certificate with claims 2 and 3; or
(B) Set a time limit in which appellant may rewrite dependent claim 2 in independent form. Extensions of time under 37 CFR 1.136(a) will not be permitted. If no timely reply is received, the examiner will cancel claims 1 and 2 and issue the application with allowed claim 3 only.
The following form paragraphs may be used where appropriate: ¶ 12.292 Examiner Sustained in Part - Requirement of Rewriting Dependent Claims (At Least OneAllowed Claim)
The Patent Trial and Appeal Board affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06. Applicant is given a ONE MONTH TIME PERIOD from the mailing date of this letter in which to present the dependent claim(s) in independent form. NO EXTENSIONS OF TIME UNDER 37 CFR 1.136 WILL BE GRANTED. Failure to comply will result in cancellation of the dependent claims and the application will be allowed with claim(s) [3]. Prosecution is otherwise closed.
Examiner Note:
1 For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, enter the independent claim number(s) for which the Board affirmed the rejection(s).
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3. In bracket 2, enter the dependent claim number(s) for which the Board reversed the rejection(s).
4. In bracket 3, enter the claim number(s) of the allowed claims.
If uncorrected matters of form which cannot be handled without written correspondence remain in the application, the examiner should take appropriate action but prosecution is otherwise closed. A letter such as that set forth in form paragraph 12.297 is suggested:
¶ 12.297 Period For Seeking Court Review Has Lapsed
The period under 37 CFR 90.3 for seeking court review of the decision by the Patent Trial and Appeal Board rendered [1] has expired and no further action has been taken by appellant. The proceedings as to the rejected claims are considered terminated; see 37 CFR 1.197(b).
The application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed.
Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire TWO MONTHS from the mailing date of this letter to avoid ABANDONMENT of the application. Extensions of time may be granted under 37 CFR 1.136.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, enter the mailing date of the decision (or notification date of the decision if electronic mail notification was sent to the appellant under the e-Office Action program).
3. In bracket 2, identify the allowed claims.
4. In bracket 3, identify the formal matters that need correction.
III. CLAIMS REQUIRE ACTION
If the decision of the Board is an affirmance in part and includes a reversal of a rejection that brings certain claims up for action on the merits, such as a decision reversing the rejection of generic claims in an application or ex parte reexamination proceeding containing claims to nonelected species not previously acted upon, the examiner will take up the application or reexamination proceeding for appropriate action on the matters thus brought up. However, the application or reexamination
proceeding is not considered open to further prosecution except as to such matters.
IV. 37 CFR 41.50(b) REJECTION
Where the Board makes a new rejection under 37 CFR 41.50(b) and no action is taken with reference thereto by appellant within 2 months, the examiner should proceed in the manner indicated in paragraphs I-III of this section as appropriate. See MPEP § 1214.01.
If the Board affirms the examiner’s rejection, but also enters a new ground of rejection under 37 CFR 41.50(b), the subsequent procedure depends upon the action taken by the appellant with respect to the 37 CFR 41.50(b) rejection.
(A) If the appellant elects to proceed before the examiner with regard to the new rejection (see MPEP § 1214.01, subsection I., the Board’s affirmance will be treated as nonfinal, and no request for rehearing of the affirmance need be filed at that time. In order to proceed before the examiner, applicant must amend the newly rejected claims or submit new Evidence, or both. If applicant presents arguments against the new grounds of rejection without amendment or Evidence, jurisdiction over the appeal should remain with the Board. The Board, having made the new ground of rejection and thus having the most complete understanding of the logic and analysis that led to the new ground, is in the best position to evaluate appellant’s rebuttal arguments in a request for rehearing. It is only in the instance where appellant chooses to amend the claims or submit new evidence that prosecution must be reopened and the case returned to the examiner to consider the amendment and/or new evidence in the first instance. Should an examiner discover that a reply containing only arguments against a new ground of rejection has been returned to the examining corps, the appeal should be returned to the Board for appropriate handling.
Prosecution before the examiner of the 37 CFR 41.50(b) rejection can incidentally result in overcoming the affirmed rejection even though the affirmed rejection is not open to further prosecution. Therefore, it is possible for the application to be allowed as a result of the limited prosecution before the examiner of the 37 CFR 41.50(b) rejection. If an
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application becomes allowed, it should not be returned to the Board. Likewise, if an application is abandoned for any reason, it should not be returned to the Board. If the rejection under 37 CFR 41.50(b) is not overcome, the applicant (or patent owner in an ex parte reexamination proceeding) can file a second appeal (as discussed below). Such appeal must be limited to the 37 CFR 41.50(b) rejection and may not include the affirmed rejection. If an application does not become allowed or abandoned as discussed above, once prosecution of the claims which were rejected under 37 CFR 41.50(b) is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered. Similarly, the file of any ex parte reexamination proceeding including rejections affirmed by the Board but made nonfinal for purposes of judicial review must be returned to the Board so that the affirmance can be made final by the Board. The time for filing a request for rehearing on the affirmance or seeking court review runs from the date of the decision by the Board making the original affirmance final. See MPEP §§ 1214.03 and 1216.
(B) If the appellant elects to request rehearing of the new rejection (see MPEP § 1214.01, paragraph II), the request for rehearing of the new rejection and of the affirmance must be filed within 2 months from the date of the Board’s decision.
1214.07 Reopening of Prosecution [R-11.2013]
37 CFR 1.198 Reopening after a final decision of the Patent Trial and Appeal Board.
When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner except under the provisions of § 1.114 or § 41.50 of this title without the written authority of the Director,and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
Sometimes an amendment is filed after the Board’s decision which presents a new or amended claim or claims. In view of the fact that prosecution is closed, the appellant is not entitled to have such amendment entered as a matter of right. However, if the amendment is submitted with a request for continued examination (RCE) under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e), prosecution of the application will be reopened and the amendment
will be entered. See MPEP § 706.07(h), subsection XI. Note that the RCE practice under 37 CFR 1.114 does not apply to utility or plant patent applications filed before June 8, 1995 or to design applications. See 37 CFR 1.114(d) and MPEP § 706.07(h), subsection I. If the amendment obviously places an application in condition for allowance, regardless of whether the amendment is filed with an RCE, the primary examiner should recommend that the amendment be entered, and with the concurrence of the supervisory patent examiner, the amendment will be entered. Note MPEP § 1002.02(d).
Where the amendment cannot be entered, the examiner should write to the appellant indicating that the amendment cannot be entered and stating the reason why. The refusal may not be arbitrary or capricious.
Form paragraph 12.298 should be used:
¶ 12.298 Amendment After Board Decision, Entry Refused
The amendment filed [1] after a decision by the Patent Trial and Appeal Board is not entered because prosecution is closed. As provided in 37 CFR 1.198, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner after a final decision of the Board except under the provisions of 37 CFR 1.114 (request for continued examination) or 37 CFR 41.50 without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the date the amendment was filed.
3. This form paragraph is not to be used where a 37 CFR 41.50(b) rejection has been made by the Board.
In the event that claims stand allowed in the application under the conditions set forth in MPEP § 1214.06, paragraph II, the application should be passed to issue.
Petitions under 37 CFR 1.198 to reopen or reconsider prosecution of a case after decision by the Board, where no court action has been filed, are decided by the Technology Center Director, MPEP § 1002.02(c).
The Director of the USPTO also entertains petitions under 37 CFR 1.198 to reopen certain cases in which
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an appellant has sought review under 35 U.S.C. 141 or 145. This procedure is restricted to cases which have been decided by the Board and which are amenable to settlement without the need for going forward with the court proceeding. Such petitions will ordinarily be granted only in the following categories of cases:
(A) When the decision of the Board asserts that the rejection of the claims is proper because the claims do not include a disclosed limitation or because they suffer from some other curable defect, and the decision reasonably is suggestive that claims including the limitation or devoid of the defect will be allowable;
(B) When the decision of the Board asserts that the rejection of the claims is proper because the record does not include evidence of a specified character, and is reasonably suggestive that if such evidence were presented, the appealed claims would be allowable, and it is demonstrated that such evidence presently exists and can be offered; or
(C) When the decision of the Board is based on a practice, rule, law, or judicial precedent which, since the Board’s decision, has been rescinded, repealed, or overruled.
Such petitions will not be ordinarily entertained after the filing of the Director’s brief in cases in which review has been sought under 35 U.S.C. 141, or after trial in a 35 U.S.C. 145 case.
In the case of an appeal under 35 U.S.C. 141, if the petition is granted, steps will be taken to request the court to remand the case to the U. S. Patent and Trademark Office. If so remanded, the proposed amendments, evidence, and arguments will be entered of record in the application file for consideration, and further action will be taken by the Board in the first instance or by the examiner as may be appropriate. In the case of civil action under 35 U.S.C. 145, steps will be taken for obtaining
dismissal of the action without prejudice to consideration of the proposals.
1215 Withdrawal or Dismissal of Appeal [R-11.2013]
1215.01 Withdrawal of Appeal [R-11.2013]
Where, after an appeal has been filed and before decision by the Board, an applicant withdraws the appeal after the period for reply to the final rejection has expired, the application is to be considered abandoned as of the date on which the appeal was withdrawn unless there are allowed claims in the case.
Where a letter abandoning the application is filed in accordance with 37 CFR 1.138, the effective date of abandonment is the date of recognition of the letter by an appropriate official of the Office or a different date, if so specified in the letter itself. See MPEP § 711.01.
If a brief has been filed within the time permitted by 37 CFR 41.37 (or any extension thereof) and an answer mailed and appellant withdraws the appeal prior to transfer of jurisdiction to the Board under 37 CFR 41.35(a), the application is returned to the examiner. If appellant withdraws the appeal after jurisdiction has been transferred to the Board, dismissal of the appeal will be handled by the Board.
Prior to a decision by the Board, if an applicant wishes to withdraw an application from appeal and to reopen prosecution of the application, applicant can file a request for continued examination (RCE) under 37 CFR 1.114, accompanied by a submission (i.e., a reply responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action) and the RCE fee set forth under 37 CFR 1.17(e). Note that the RCE practice under 37 CFR 1.114 does not apply to utility or plant patent applications filed before June 8, 1995, design applications, or reexamination proceedings. See 37 CFR 1.114(d) and MPEP § 706.07(h), subsection X., for more details. An appeal brief or reply brief (or related papers) is not a submission under 37 CFR 1.114, unless the transmittal letter of the RCE contains a statement that incorporates by reference the
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arguments in a previously filed appeal brief or reply brief. See MPEP § 706.07(h), subsection II. The filing of an RCE will be treated as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission. Therefore, when an RCE is filed without the appropriate fee or a submission in an application that has no allowed claims, the application will be considered abandoned. To avoid abandonment, the RCE should be filed in compliance with 37 CFR 1.114. See MPEP § 706.07(h), subsections I-II.
Once appellant has filed a notice of appeal, appellant also may request that prosecution be reopened for the following situations:
(A) In response to a new ground of rejection made in an examiner’s answer, appellant may file a reply in compliance with 37 CFR 1.111 that addresses the new ground of rejection within two months from the mailing of the examiner’s answer (see MPEP § 1207.03).
(B) In response to a substitute examiner’s answer that is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a), appellant may file a reply in compliance with 37 CFR 1.111 that addresses the rejection in the substitute answer within two months from the mailing of the substitute answer (see MPEP § 1207.05).
To avoid the rendering of decisions by the Board in applications which have already been refiled as continuations, applicants should promptly inform the Clerk of the Board in writing as soon as they have positively decided to refile or to abandon an application containing an appeal awaiting a decision. Applicants also should advise the Board when an RCE is filed in an application containing an appeal awaiting decision. Failure to exercise appropriate diligence in this matter may result in the Board refusing an otherwise proper request to vacate its decision.
Upon the withdrawal of an appeal, an application having no allowed claims is abandoned, and a notice of abandonment should be mailed. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. The following examples illustrate the appropriate
approach to be taken by the examiner in various situations:
(A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the application with claim 1 only.
(B) Claims 1 - 3 are rejected. The examiner should hold the application abandoned.
(C) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1. The examiner should hold the application abandoned.
(D) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1; independent claim 3 is allowed. The examiner should cancel claims 1 and 2 and issue the application or ex parte reexamination certificate with claim 3 only.
In an ex parte reexamination proceeding, an ex parte reexamination certificate should be issued under 37 CFR 1.570.
1215.02 Claims Standing Allowed [R-08.2012]
If an application contains allowed claims, as well as claims on appeal, the withdrawal of the appeal does not operate as an abandonment of the application, but is considered a withdrawal of the appeal as to those claims and authority to the examiner to cancel the same. An amendment canceling the appealed claims is equivalent to a withdrawal of the appeal.
1215.03 Partial Withdrawal [R-11.2013]
If an appellant wishes to remove claims from consideration on appeal, the appellant must submit an amendment to cancel the claims from the application. See 37 CFR 41.31(c) and 41.33. An appellant may, of course, choose not to present arguments or rely upon particular evidence as to certain claim rejections; however, such arguments and evidence are waived for purposes of the appeal and the Board may summarily sustain any grounds of rejections not argued. See MPEP §§ 1205.02 and 1214.05.
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If appellant fails to respond to a new ground of rejection made in an examiner’s answer by either filing a reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing of the examiner’s answer, the appeal will be sua sponte dismissed by the Board as to the claims subject to the new ground of rejection.
Similarly, if appellant fails to respond to a substitute examiner’s answer that is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a) by either filing a reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing of the substitute examiner's answer, the appeal will sua sponte dismissed by the Board as to the claims subject to the rejection for which the Board has remanded the proceeding. Such substitute examiner’s answer may also include a new ground of rejection.
1215.04 Dismissal of Appeal [R-11.2013]
If no brief is filed within the time prescribed by 37 CFR 41.37, the appeal stands dismissed by operation of the rule. Unless appellant specifically withdraws the appeal as to rejected claims, the appeal should not be dismissed until the extended period (5 months of extension are available under 37 CFR 1.136(a)) to file the brief has expired.
Applications having no allowed claims will be abandoned. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
(A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the application with claim 1 only.
(B) Claims 1 - 3 are rejected. The examiner should hold the application abandoned.
(C) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1. The examiner should hold the application abandoned.
(D) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1; independent claim 3 is allowed. The
examiner should cancel claims 1 and 2 and issue the application or ex parte reexamination certificate with claim 3 only.
However, if formal matters remain to be attended to, the examiner should take appropriate action on such matters. For example (1) the examiner may handle the formal matters by examiner’s amendment (see MPEP § 1302.04) or (2) the examiner may use form paragraph 12.209 to describe the formal matters that applicant is required to correct and set a shortened period for reply. Note that further prosecution on the application or reexamination proceeding is closed except as to such formal matters.
¶ 12.209 Appeal Dismissed - Allowed Claims, Formal Matters Remaining
In view of applicant’s failure to file a brief within the time prescribed by 37 CFR 41.37(a), the appeal stands dismissed and the proceedings as to the rejected claims are considered terminated. See 37 CFR 1.197(b).
This application will be passed to issue on allowed claim [1] provided the following formal matters are corrected. Prosecution is otherwise closed.
[2]
Applicant is required to make the necessary corrections within a shortened statutory period set to expire TWO MONTHS from the mailing date of this letter to avoid ABANDONMENT of the application. Extensions of time may be granted under 37 CFR 1.136.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. This form paragraph should only be used if the formal matters cannot be handled by examiner’s amendment. See MPEP § 1215.04.
3. In bracket 2, insert a description of the formal matters to be corrected.
4. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected. See MPEP § 1215.04.
An appeal will also be dismissed if an applicant fails to timely and fully reply to a notice of noncompliance with 37 CFR 41.37(d). See MPEP § 1205.03 and 37 CFR 41.37(d). As in examples (B) - (C) above, if no allowed claims remain in an application, the application is abandoned as of the
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date the reply to the notice was due. The applicant may petition to revive the application as in other cases of abandonment, and to reinstate the appeal. If the appeal is dismissed, but allowed claims remain in the application, as in examples (A) and (D) above, the application is not abandoned; to reinstate the claims cancelled by the examiner because of the dismissal, the applicant must petition to reinstate the claims and the appeal, but a showing equivalent to a petition to revive under 37 CFR 1.137 is required. In either event, a proper reply to the notice of noncompliance must be filed before the petition will be considered on its merits.
1216 Judicial Review [R-11.2013]
35 U.S.C. 141 Appeal to Court of Appeals for the Federal Circuit.
(a) EXAMINATIONS.—An applicant who is dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134(a) may appeal the Board’s decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal, the applicant waives his or her right to proceed under section 145.
(b) REEXAMINATIONS.—A patent owner who is dissatisfied with the final decision in an appeal of a reexamination to the Patent Trial and Appeal Board under section 134(a) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit.
(c) POST-GRANTAND INTER PARTES REVIEWS.—A party to an inter partes review or a post-grant review who is dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) or 328(a) (as the case may be) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit.
(d) DERIVATION PROCEEDINGS.—A party to a derivation proceeding who is dissatisfied with the final decision of the Patent Trial and Appeal Board in the proceeding may appeal the decision to the United States Court of Appeals for the Federal Circuit, but such appeal shall be dismissed if any adverse party to such derivation proceeding, within 20 days after the appellant has filed notice of appeal in accordance with section 142, files notice with the Director that the party elects to have all further proceedings conducted as provided in section 146. If the appellant does not, within 30 days after the filing of such notice by the adverse party, file a civil action under section 146, the Board’s decision shall govern the further proceedings in the case.
35 U.S.C. 145 Civil action to obtain patent.
An applicant dissatisfied with the decision of the Patent Trial and Appeal Board in an appeal under section 134(a) may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern
District of Virginia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Patent Trial and Appeal Board, as the facts in the case may appear, and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.
35 U.S.C. 306 Appeal.
The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134, and may seek court review under the provisions of sections 141 to 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.
37 CFR 90.1 Scope.
The provisions herein govern judicial review for Patent Trial and Appeal Board decisions under chapter 13 of title 35, United States Code. Judicial review of decisions arising out of inter partes reexamination proceedings that are requested under 35 U.S.C. 311, and where available, judicial review of decisions arising out of interferences declared pursuant to 35 U.S.C. 135 continue to be governed by the pertinent regulations in effect on July 1, 2012.
37 CFR 90.2 Notice; service.
(a) For an appeal under 35 U.S.C. 141.
(1) In all appeals, the notice of appeal required by 35 U.S.C. 142 must be filed with the Director of the United States Patent and Trademark Office as provided in § 104.2 of this title. A copy of the notice of appeal must also be filed with the Patent Trial and Appeal Board in the appropriate manner provided in § 41.10(a), 41.10(b), or 42.6(b).
(2) In all appeals, the party initiating the appeal must comply with the requirements of the Federal Rules of Appellate Procedure and Rules for the United States Court of Appeals for the Federal Circuit, including:
(i) Serving the requisite number of copies on the Court; and
(ii) Paying the requisite fee for the appeal.
(3) Additional requirements.
(i) In appeals arising out of an ex parte reexamination proceeding ordered pursuant to § 1.525, notice of the appeal must be served as provided in § 1.550(f) of this title.
(ii) In appeals arising out of an inter partes review, a post-grant review, a covered business method patent review, or a derivation proceeding, notice of the appeal must provide sufficient information to allow the Director to determine whether to exercise the right to intervene in the appeal pursuant to 35 U.S.C. 143, and it must be served as provided in § 42.6(e) of this title.
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(b) For a notice of election under 35 U.S.C. 141(d) to proceed under 35 U.S.C. 146.
(1) Pursuant to 35 U.S.C. 141(d), if an adverse party elects to have all further review proceedings conducted under 35 U.S.C. 146 instead of under 35 U.S.C. 141, that party must file a notice of election with the United States Patent and Trademark Office as provided in § 104.2.
(2) A copy of the notice of election must also be filed with the Patent Trial and Appeal Board in the manner provided in § 42.6(b).
(3) A copy of the notice of election must also be served where necessary pursuant to § 42.6(e).
(c) For a civil action under 35 U.S.C. 146. The party initiating an action under 35 U.S.C. 146 must file a copy of the complaint no later than five business days after filing the complaint in district court with the Patent Trial and Appeal Board in the manner provided in § 42.6(b), and the Office of the Solicitor pursuant to § 104.2. Failure to comply with this requirement can result in further action within the United States Patent and Trademark Office consistent with the final Board decision.
37 CFR 90.3 Time for appeal or civil action.
(a) Filing deadline.
(1) For an appeal under 35 U.S.C. 141. The notice of appeal filed pursuant to 35 U.S.C. 142 must be filed with the Director of the United States Patent and Trademark Office no later than sixty-three (63) days after the date of the final Board decision.Any notice of cross-appeal is controlled by Rule 4(a)(3) of the Federal Rules of Appellate Procedure, and any other requirement imposed by the Rules of the United States Court of Appeals for the Federal Circuit.
(2) For a notice of election under 35 U.S.C. 141(d). The time for filing a notice of election under 35 U.S.C. 141(d) is governed by 35 U.S.C. 141(d).
(3) For a civil action under 35 U.S.C. 145 or 146.
(i) A civil action must be commenced no later than sixty-three (63) days after the date of the final Board decision.
(ii) The time for commencing a civil action pursuant to a notice of election under 35 U.S.C. 141(d) is governed by 35 U.S.C. 141(d).
(b) Time computation.
(1) Rehearing. A timely request for rehearing will reset the time for appeal or civil action to no later than sixty-three (63) days after action on the request. Any subsequent request for rehearing from the same party in the same proceeding will not reset the time for seeking judicial review, unless the additional request is permitted by order of the Board.
(2) Holidays. If the last day for filing an appeal or civil action falls on a Federal holiday in the District of Columbia, the time is extended pursuant to 35 U.S.C. 21(b).
(c) Extension of time.
(1) The Director, or his designee, may extend the time for filing an appeal, or commencing a civil action, upon written request if:
(i) Requested before the expiration of the period for filing an appeal or commencing a civil action, and upon a showing of good cause; or
(ii) Requested after the expiration of the period for filing an appeal of commencing a civil action, and upon a showing that the failure to act was the result of excusable neglect.
(2) The request must be filed as provided in § 104.2 of this title.
I. JUDICIAL REVIEW OF PATENT APPLICATIONS
An applicant for a patent who is dissatisfied with a final written decision of the Board (other than a decision of the Board in a derivation proceeding) may seek judicial review either by an appeal to the U.S. Court of Appeals for the Federal Circuit (35 U.S.C. 141) or by a civil action in the U.S. District Court for the Eastern District of Virginia (35 U.S.C. 145). By filing an appeal to the U.S. Court of Appeals for the Federal Circuit, the applicant waives the right to seek judicial review by a civil action under 35 U.S.C. 145. See 35 U.S.C. 141.
II. JUDICIAL REVIEW OF REEXAMINATION PROCEEDINGS
A patent owner who is not satisfied with the final written decision of the Board in an ex parte reexamination may seek judicial review of the Board's decision only by appealling the decision of the Board to the U.S. Court of Appeals for the Federal Circuit pursuant to 35 U.S.C. 141. 35 U.S.C. 306.
Because inter partes reexamination procedures are found in Chapter 31 (and not in Chapter 30) of Title 35 of the United States Code, 35 U.S.C. 306 does not apply to an inter partes reexamination proceeding. Instead, pre-AIA 35 U.S.C. 315 continues to apply to inter partes reexamination proceedings. See Leahy-Smith America Invents Act, Pub. L. No. 112-29 § 6(c)(3)(C) and 37 CFR 90.1. Accordingly, the regulations in effect on July 1, 2012 govern judicial review of such proceedings, and this MPEP section does not apply to them. See MPEP §
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2683 for further information regarding judicial review of inter partes reexamination proceedings.
III. JUDICIAL REVIEW OF INTER PARTES REVIEW, POST-GRANT REVIEW, COVERED BUSINESS METHOD REVIEW,AND DERIVATION PROCEEDINGS
A party dissatisfied with the final written decision of the Board in an inter partes review, post-grant review, or covered business method review proceeding may seek judicial review only by appealing the decision to the United States Court of Appeals for the Federal Circuit pursuant to 35 U.S.C. 141. See 35 U.S.C. 319 and 35 U.S.C. 329.
A party dissatisfied with the final written decision of the Board in a derivation proceeding may seek judicial review either by appealing the decision to the United States Court of Appeals for the Federal Circuit pursuant to 35 U.S.C. 141 or filing a civil action pursuant to 35 U.S.C. 146. An adverse party in a derivation proceeding appealed to the Federal Circuit may elect to have further judicial review proceedings conducted under 35 U.S.C. 146 instead.
Any notice of appeal filed in an inter partes review, post-grant review, covered business method review, or derivation proceeding must provide sufficient information to allow the Director to determine whether to exercise the right to intervene in the appeal pursuant to 35 U.S.C. 143. See 37 CFR 90.2(a)(3)(ii).
IV. TIME FOR FILING NOTICE OF APPEAL OR COMMENCING CIVIL ACTION
The time for filing a notice of a 35 U.S.C. 141 appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action under 35 U.S.C. 145 is within 63 days of the Board’s decision. 37 CFR 90.3(a). The time for filing a notice of election, and for commencing a civil action pursuant to a notice of election, in an appeal from a derivation proceeding is governed by 35 U.S.C. 141(d). See 37 CFR 90.2(a)(2). However, if a timely request for rehearing of the Board’s decision is filed, the time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action expires 63 days after a decision on a
request for rehearing or reconsideration (37 CFR 90.3(b)(1)).
The times specified in 37 CFR 90.3 are calendar days. If the last day of the time specified for appeal or commencing a civil action falls on a Federal holiday in the District of Columbia, the time is extended to the next day which is neither a Saturday, Sunday, nor a Federal holiday (37 CFR 90.3(b)(2)).
V. TIME FOR FILING CROSS-APPEAL OR CROSS-ACTION
Any notice of cross-appeal is controlled by Rule 4(a)(3) of the Federal Rules of Appellate Procedure, and any other requirement imposed by the Rules of the U.S. Court of Appeals for the Federal Circuit. See 37 CFR 90.3(a)(1).
VI. EXTENSION OF TIME TO SEEK JUDICIAL REVIEW
In 37 CFR 90.3(c), the Office has adopted a standard which is similar to the standard used in the Federal courts for granting extensions. Under the rule, the Director may extend the time (A) for good cause if requested before the expiration of the time provided for initiating judicial review or (B) upon a showing of excusable neglect in failing to initiate judicial review if requested after the expiration of the time period. This standard is applicable once the “last” decision has been entered, i.e., either the decision (in circumstances where no timely rehearing is sought) or the decision on rehearing of the Board in an ex parte appeal. Extensions of time under 37 CFR 1.136(b) and 37 CFR 1.550(c) and fee extensions under 37 CFR 1.136(a) are not available to extend the time for the purpose of seeking judicial review once a decision or a decision on rehearing has been entered.
Requests for extension of time to seek judicial review under 37 CFR 90.3(c) should be addressed or served as provided in 37 CFR 104.2. In addition, to expedite the handling of such a request, a copy of the request may be provided to the Office of the Solicitor as follows:
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Mail Stop 8 Office of the Solicitor United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
A copy of the request may also be hand-carried to the Office of the Solicitor.
VII. APPLICATION UNDER JUDICIAL REVIEW
The administrative file of an application under judicial review will not be opened to the public by the U.S. Patent and Trademark Office, unless it is otherwise available to the public under 37 CFR 1.11.
During judicial review, the involved application or reexamination is not under the jurisdiction of the examiner or the Board, unless remanded to the U.S. Patent and Trademark Office by the court. Any amendment can be admitted only under the provisions of 37 CFR 1.198. See MPEP § 1214.07.
VIII. SERVICE OF COURT PAPERS ON THE DIRECTOR
See MPEP § 1216.01 for the proper way to effect service on the Director of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit. See MPEP § 1216.02 for the proper way to effect service on the Director of a complaint in a civil action.
Rule 5(b) of the Federal Rules of Civil Procedure provides that if a party is represented by an attorney, service under this rule must be made on the attorney unless the court orders service on the party. The rule sets forth proper ways to serve papers, including delivering papers to the person or the person's office, or mailing papers to the person's last known address.
Similarly, Rule 25(b) of the Federal Rules of Appellate Procedure provides that “[s]ervice on a party represented by counsel must be made on the party’s counsel.”
Accordingly, all service copies of papers filed in court proceedings in which the Director is a party must be served on the Office of the Solicitor. Service on the Office of the Solicitor may be effected in either of the following ways:
(A) By hand between 8:30 A.M. and 5:00 P.M. EST to the Office of the Solicitor at 600 Dulany Street, Madison West Building, Room 8C43, Alexandria, VA 22314.
(B) By mail in an envelope addressed as follows: Mail Stop 8 Office of the Solicitor United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
While the above mail service address may be supplemented to include the name of the particular attorney assigned to the court case, it must not be supplemented to refer to either the Director or the U.S. Patent and Trademark Office.
Any court papers submitted to the U.S. Patent and Trademark other than by mail to the above mail service address or delivered by hand to the Office of the Solicitor are deemed to have been served on the Director when actually received in the Office of the Solicitor.
The above mail service address should not be used for noncourt papers, i.e., papers which are intended to be filed in the U.S. Patent and Trademark Office in connection with an application or other proceeding pending in the U.S. Patent and Trademark Office. ANY NONCOURT PAPERS WHICH ARE MAILED TO THE ABOVE MAIL SERVICE ADDRESS WILL BE RETURNED TO THE SENDER. NO EXCEPTIONS WILL BE MADE TO THIS POLICY.
1216.01 Appeals to the U.S. Court of Appeals for the Federal Circuit [R-11.2013]
35 U.S.C. 142 Notice of appeal.
When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the Patent and Trademark Office a written notice of appeal directed to the Director, within such time after the date of the decision from which the appeal is taken as the Director prescribes, but in no case less than 60 days after that date.
35 U.S.C. 143 Proceedings on appeal.
With respect to an appeal described in section 142, the Director shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the Patent and Trademark Office. The court may
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request that the Director forward the original or certified copies of such documents during the pendency of the appeal. In an ex parte case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all of the issues raised in the appeal. The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32.
35 U.S.C. 144 Decision on appeal.
The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Director its mandate and opinion, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case.
Filing an appeal to the U.S. Court of Appeals for the Federal Circuit requires that the applicant (A) file in the U.S. Patent and Trademark Office a written notice of appeal (35 U.S.C. 142) directed to the Director; (B) file a copy of the notice of appeal with the Board in the manner provided in 37 CFR 41.10(a), 41.10(b), or 42.6(b), as appropriate; and (C) file with the Clerk of the Federal Circuit a copy of the notice of appeal and pay the docket fee for the appeal, as provided by Federal Circuit Rule 52. 37 CFR 90.2(a).
Additionally, the owner of a patent involved in an ex parte reexamination proceeding must comply
with these requirements, and additionally must also serve the notice of appeal as provided in 37 CFR 1.550(f). 37 CFR 90.2(a)(3)(i). A party appealing the Board’s decision in an inter partes review, post-grant review, covered business method patent review, or derivation proceeding must include sufficient information in the notice of appeal to allow the Director to determine whether to exercise the right to intervene in the appeal pursuant to 35 U.S.C. 143, and must serve the notice of appeal as provided in 37 CFR 42.6(e).
An adverse party in a derivation proceeding appealed to the U.S. Court of Appeals for the Federal Circuit electing to have further judicial review proceedings conducted under 35 U.S.C. 146 must file a notice of election under 35 U.S.C. 141(d) with the Office as provided in 37 CFR 104.2. Such a party must also file a copy of the notice of election with the Board in the manner provided in 37 CFR 42.6(b), and,
where necessary, must serve a copy of the notice of election pursuant to 37 CFR 42.6(e).
For a notice of appeal to be considered timely filed in the U.S. Patent and Trademark Office, it must: (A) actually reach the U.S. Patent and Trademark Office within the time specified in 37 CFR 90.3 (including any extensions) or (B) be mailed within the time specified in 37 CFR 90.3 (including any extensions) by “Express Mail” (now "Priority Mail Express") in accordance with 37 CFR 1.10.
A Notice of Appeal to the U.S. Court of Appeals for the Federal Circuit should not be mailed to the Director, the Board or the examiner. Nor should it be mailed to the Office of the Solicitor’s mail service address for court papers given in MPEP § 1216. Instead, it should be filed in the U.S. Patent and Trademark Office in any one of the following ways:
(A) By mail addressed to the mailing address provided in 37 CFR 104.2(a), in which case the notice of appeal must actually reach the U.S. Patent and Trademark Office by the due date.
(B) By “Express Mail” (now "Priority Mail Express") under 37 CFR 1.10 addressed to the mailing address provided in 37 CFR 104.2(a), in which case the notice of appeal is deemed filed on the “date-in” on the “Express Mail” mailing label.
(C) By hand as provided in 37 CFR 104.2(b).
A copy of the notice of appeal and the docket fee should be filed with the Clerk of the U.S. Court of Appeals for the Federal Circuit, whose mailing and actual address is:
U.S. Court of Appeals for the Federal Circuit 717 Madison Place, N.W. Washington, DC 20439
The Solicitor, prior to a decision by the U.S. Court of Appeals for the Federal Circuit, may request that the case be remanded to the U.S. Patent and Trademark Office and prosecution reopened. See MPEP § 1214.07.
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I. OFFICE PROCEDURE FOLLOWING DECISION BY THE U.S. COURT OF APPEALS FOR THE FEDERAL CIRCUIT
After the U.S. Court of Appeals for the Federal Circuit has heard and decided the appeal, the Clerk of the U.S. Court of Appeals for the Federal Circuit forwards to the U.S. Patent and Trademark Office a certified copy of the court’s decision. This certified copy is known as the “mandate.” The mandate is entered in the file of the application, reexamination or interference which was the subject of the appeal. The date the mandate was issued by the Federal Circuit marks the conclusion of the appeal, i.e., the termination of proceedings as that term is used in 35 U.S.C. 120. See 37 CFR 1.197.
The U.S. Court of Appeals for the Federal Circuit’s opinion may or may not be precedential. Whether or not the opinion is precedential, the U.S. Patent and Trademark Office will not give the public access to the administrative record of an involved application unless it is otherwise available to the public under 37 CFR 1.11. However, since the court record in a 35 U.S.C. 141 appeal generally includes a copy of at least part of the application, the application may be inspected at the Federal Circuit. In re Mosher, 248 F.2d 956, 115 USPQ 140 (CCPA 1957).
A. All Claims Rejected
If all claims in the case stand rejected, proceedings in the case are considered terminated on the issue date of the U.S. Court of Appeals for the Federal Circuit’s mandate. Because the case is no longer considered pending, it is ordinarily not open to subsequent amendment and prosecution by the applicant. Continental Can Company v. Schuyler, 326 F. Supp. 283, 168 USPQ 625 (D.D.C. 1970). However, exceptions may occur where the mandate clearly indicates that further action in the U.S. Patent and Trademark Office is to be taken in accordance with the U.S. Court of Appeals for the Federal Circuit’s opinion.
B. Some Claims Allowed
Where the case includes one or more allowed claims, including claims allowed by the examiner prior to
appeal and claims whose rejections were reversed by either the Board or the court, the proceedings are considered terminated only as to any claims which still stand rejected. It is not necessary for the applicant or patent owner to cancel the rejected claims, since they may be canceled by the examiner in an examiner’s amendment. Thus, if no formal matters remain to be attended to, the examiner will pass the application to issue forthwith on the allowed claims or, in the case of a reexamination, will issue a “Notice of Intent to Issue a Reexamination Certificate.” See MPEP § 2287. The examiner should set forth the reasons for allowance, referring to and incorporating a copy of the appellate brief and the court decision. See MPEP § 1302.14.
If formal matters remain to be attended to, the examiner promptly should take appropriate action on such matters, such as by an examiner’s amendment or by an Office action setting a 1-month (but not less than 30-day) shortened statutory period for reply. However, the application or reexamination proceeding is considered closed to further prosecution except as to such matters.
C. Remand
Where the decision of the court brings up for action on the merits claims which were not previously considered on the merits (such as a decision reversing a rejection of generic claims in an application containing claims to nonelected species), the examiner will take the case up for appropriate action on the matters thus brought up.
D. Reopening of Prosecution
In some situations it may be necessary to reopen prosecution of an application after a court decision. Any Office action proposing to reopen prosecution after a court decision must be forwarded to the Office of the Deputy Commissioner for Patent Examination Policy for written approval, which will be indicated on the Office action.
II. DISMISSAL OF APPEAL
After an appeal is docketed in the U.S. Court of Appeals for the Federal Circuit, failure to prosecute the appeal, such as by appellant’s failure to file a
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brief, may result in dismissal of the appeal by the court. Under particular circumstances, the appeal also may be dismissed by the court on motion of the appellant and/or the Director.
The court proceedings are considered terminated as of the date of the mandate. After dismissal, the action taken by the examiner will be the same as set forth above under the heading “Office Procedure Following Decision by the U.S. Court of Appeals for the Federal Circuit.”
In the event of a dismissal for a reason other than failure to prosecute the appeal, the status of the application or reexamination proceeding must be determined according to the circumstances leading to the dismissal.
1216.02 Civil Suits Under 35 U.S.C. 145 and 146 [R-11.2013]
A civil action under 35 U.S.C. 145 or 146 is commenced by filing a complaint in the U.S. District Court for the Eastern District of Virginia within the time specified in 37 CFR 90.3(a)(3)(i) (see MPEP § 1216). Furthermore, copies of the complaint and summons must be served in a timely manner on the Director, the U.S. Attorney for the District of Columbia, and the Attorney General in the manner set forth in Rule 4(i) of the Federal Rules of Civil Procedure. All the expenses of the proceedings shall be paid by the applicant (see 35 U.S.C. 145).
The party initiating an action under 35 U.S.C. 146 must also file a copy of the complaint with the Board in the manner provided in 37 CFR 42.6(b) no later than five days after filing the complaint in district court. 37 CFR 90.2(c). Failure to comply with this requirement can result in further action within the Office consistent with the final Board decision.
In an action under 35 U.S.C. 145, the plaintiff may introduce evidence not previously presented to the U.S. Patent and Trademark Office. However, plaintiff will be precluded from presenting new issues. Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010) (en banc), aff’d, 132 S. Ct. 1690 (2012); DeSeversky v. Brenner, 424 F.2d 857, 858, 164
USPQ 495, 496 (D.C. Cir. 1970).
Upon termination of the civil action, a statement of the court’s final disposition of the case is placed in the electronic file, which is then returned to the examiner for action in accordance with the same procedures as follow termination of a 35 U.S.C. 141 appeal. See MPEP § 1216.01. 37 CFR 1.197(b) provides that a civil action is terminated when the time to appeal the judgment expires. Where the exact date when the civil action was terminated is material, the date may be ascertained from the Office of the Solicitor.
The procedures to be followed in the U.S. Patent and Trademark Office after a decision, remand, or dismissal of the case by the district court are the same as the procedures followed with respect to 35 U.S.C. 141 appeals. See MPEP § 1216.01.
Any subpoena by the district court for an application or reexamination file should be hand-carried to the Office of the Solicitor.
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Chapter 1300 Allowance and Issue
Substantially Allowable Application, Special
1301
[Reserved]1302 General Review of Disclosure1302.01 Requirement for a Rewritten Specification
1302.02
Notice of Allowability1302.03 Examiner’s Amendments and Changes
1302.04
Title of Invention1302.04(a) [Reserved]1302.04(b) Cancellation of Claims to Nonelected Invention
1302.04(c)
Cancellation of Claim Lost in Interference
1302.04(d)
Cancellation of Rejected Claims Following Appeal
1302.04(e)
[Reserved]1302.04(f) Identification of Claims1302.04(g) Rejoinder of Claims1302.04(h)
Correction of Drawing1302.05 Prior Foreign Application1302.06 [Reserved]1302.07 Interference Search1302.08 Classification, Print Figure, and Other Notations
1302.09
Issue Classification Notations1302.10 [Reserved]1302.11 Listing of References1302.12 Signing1302.13 Reasons for Allowance1302.14
Notice of Allowance1303 Amendment Received After Allowance
1303.01
Undelivered1303.02 Not Withheld Due to Death of Inventor
1303.03
Amendments After D-10 Notice1304 Withholding From Issue of “Secrecy Order” Applications
1304.01
Jurisdiction1305 Issue Fee1306
Deferring Issuance of a Patent1306.01 Simultaneous Issuance of Patents1306.02 Practice After Payment of Issue Fee; Receipt of Issue Notification
1306.03
Change in Classification of Cases Which Are in Issue
1307
Withdrawal From Issue1308 Rejection After Allowance1308.01
For Interference or Derivation Purposes
1308.02
Quality Review Program for Examined Patent Applications
1308.03
Issue of Patent1309 [Reserved]1309.01 “Printer Rush” Cases1309.02
1301 Substantially Allowable Application, Special [R-08.2012]
When an application is in condition for allowance, except as to matters of form, the application will be considered special and prompt action taken to require correction of formal matters. See MPEP § 710.02(b).
1302 [Reserved]
1302.01 General Review of Disclosure [R-07.2015]
When an application is apparently ready for allowance, it should be reviewed by the examiner to make certain that the whole application meets all formal and substantive (i.e., statutory) requirements and that the language of the claims is enabled by, and finds adequate descriptive support in, the application disclosure as originally filed. Neglect to give due attention to these matters may lead to confusion as to the scope of the patent.
There should be clear support or antecedent basis in the specification for the terminology used in the claims. Usually, the original claims follow the nomenclature of the specification; but sometimes in amending the claims or in adding new claims, applicant employs terms that do not appear in the specification. This may result in uncertainty as to the interpretation to be given such terms. See MPEP § 608.01(o). It should be noted, however, that exact terms need not be used in haec verba to satisfy the written description requirement of 35 U.S.C. 112(a). Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995); In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976). See also 37 CFR 1.121(e) which merely requires substantial correspondence between the language
of the claims and the language of the specification.
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The claims should be renumbered as required by 37 CFR 1.126, and particular attention should be given to claims dependent on previous claims to see that the numbering is consistent. See MPEP § 608.01(j) and § 608.01(n).
The abstract should be checked for an adequate and clear statement of the disclosed invention. See MPEP § 608.01(b). The length of the abstract should be limited to 150 words. For changes to the abstract by examiner’s amendment, see MPEP § 1302.04.
The title should also be checked. The title may not exceed 500 characters in length and must be as short and specific as possible. See 37 CFR 1.72. The title should be descriptive of the invention claimed, even though a longer title may result. If a satisfactory title is not supplied by the applicant, the examiner may change the title on or after allowance. See MPEP § 606 and § 606.01.
All amendments should be reviewed to assure that they were timely filed.
1302.02 Requirement for a Rewritten Specification [R-08.2012]
Whenever interlineations or cancellations have been made in the specification or amendments which would lead to confusion and mistake, the examiner should require the entire portion of specification affected to be rewritten before passing the
application to issue. See 37 CFR 1.125 and MPEP § 608.01(q).
Form paragraph 13.01 should be used when making such a requirement.
¶ 13.01 Requirement for Rewritten Specification
The interlineations or cancellations made in the specification or amendments to the claims could lead to confusion and mistake during the issue and printing processes. Accordingly, the portion of the specification or claims as identified below is required to be rewritten before passing the case to issue. See 37 CFR 1.125 and MPEP § 608.01(q).
Examiner Note:
1. Specific discussion of the sections of the specification or claims required to be rewritten must be set forth.
2. See form paragraph 6.28.01 for a substitute specification.
1302.03 Notice of Allowability [R-07.2015]
A Notice of Allowability form PTOL-37 is used whenever an application has been placed in condition for allowance. The date of any communication and/or interview which resulted in the allowance should be included in the notice.
In all instances, both before and after final rejection, in which an application is placed in condition for allowance, applicant should be notified promptly of allowability of the claims by a Notice of Allowability PTOL-37. Prompt notice to applicant is important because it may avoid an unnecessary appeal and act as a safeguard against a holding of abandonment.
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1302.04 Examiner’s Amendments and Changes [R-07.2015]
With the exception of the following no corrections or interlineations may be made by the examiner in the body of written portions of the specification or any other paper filed in the application for patent, except by examiner’s amendment approved by applicant and as described hereinafter. (See 37 CFR 1.121.):
(A) Renumber the claims in accordance with 37 CFR 1.126;
(B) Correct erroneous citations on an Information Disclosure Statement (see MPEP § 707.05(g));
(C) Correct an amendment filed under 37 CFR 1.312 that is non-compliant under 37 CFR 1.121 whose entry would otherwise be recommended (see MPEP § 714.16);
(D) Cancel claims directed to a non-elected invention, where the election was made without traverse and the claims are not eligible for rejoinder (see MPEP § 821.02); and
(E) Amendment and/or cancellation of claims following a decision by the Patent Trial and Appeal Board as described in MPEP §§ 1214, 1214.05, and 1214.06.
The prior practice of informal examiner’s amendments are not permitted in Image File Wrapper (IFW) applications. Any amendment of an IFW application must be by way of an examiner’s amendment, as described below, or be an amendment made by the applicant.
For continuing applications filed under 37 CFR 1.53(b), a reference to a parent application in the first sentence(s) of the specification is no longer required when the reference appears in an Application Data Sheet. If a reference to the parent application has not been included in the first sentence(s) of the specification an examiner should not add a reference to the prior application without the approval of the applicant and an examiner’s amendment. If applicant has included a reference to the parent application, the examiner should review the statement and the application data sheet for accuracy. Applicant may decide to delete the benefit
claim in the application filed under 37 CFR 1.53(b). Furthermore, a petition under 37 CFR 1.78 to accept an unintentionally delayed benefit claim may be required if the application is a utility or plant application filed on or after November 29, 2000. See MPEP § 211.04.
An examiner’s amendment may be used to correct informalities in the body of the written portions of the specification as well as all errors and omissions in the claims. The examiner’s amendment must be signed by the primary examiner, entered into the file and a copy sent to applicant. The changes specified in the amendment are entered by the technical support staff in the regular way. An examiner’s amendment should include form paragraph 13.02 and form paragraph 13.02.01. Form paragraph 13.02.02 should be used if an extension of time is required.
¶ 13.02 Examiner’s Amendment
An examiner’s amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
Examiner Note:
This form paragraph is NOT to be used in a reexamination proceeding (use form paragraph 22.06 instead).
¶ 13.02.01 Examiner’s Amendment Authorized
Authorization for this examiner's amendment was given in an interview with [1] on [2].
¶ 13.02.02 Extension of Time and Examiner’s Amendment Authorized
An extension of time under 37 CFR 1.136(a) is required in order to make an examiner’s amendment which places this application in condition for allowance. During a conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension and authorized the following examiner’s amendment. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
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Examiner Note:
See MPEP § 706.07(f) which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance.
Although 37 CFR 1.121 has been amended to require amendments to the specification/claims to be made in compliance with 37 CFR 1.121(b)(1), (b)(2), or (c), where appropriate, 37 CFR 1.121(g) permits the Office to make amendments to the specification, including the claims, by examiner’s amendments without the need to comply with the requirements of 37 CFR 1.121(b)(1), (b)(2), or (c) in the interest of expediting prosecution and reducing cycle time. Examiners may continue to make additions or deletions of subject matter in the specification, including the claims, in examiner’s amendments by instructions to make the change at a precise location in the specification and/or the claims. Examiners may use an examiner’s amendment to correct a non-compliant amendment filed by the applicant if the amendment would otherwise place the application in condition for allowance (e.g., a reply to a non-final Office action or an after-final amendment includes an incorrect status identifier). See MPEP § 714, subsection II.E, Examiner’s Amendments.
As an alternative, the examiner’s amendment utilizing paragraph/claim replacement can be created by the examiner with authorization from the applicant. The examiner’s amendment can also be created from a facsimile transmission or e-mailed amendment received by the examiner and referenced in the examiner’s amendment and attached thereto. Any subject matter, in clean version form (containing no brackets or underlining), to be added to the specification/claims should be set forth separately by applicant in the e-mail or facsimile submission apart from the remainder of the submission. A clean version of a paragraph/claim, or portion of a paragraph/claim, submitted by applicant in a fax or e-mail, should be printed and attached to the examiner’s amendment and may be relied on as part of the examiner’s amendment. The examiner should mark “requested” on the entire attachment to indicate that the fax or e-mail was requested by the examiner, so as to not lead to a reduction in patent term adjustment (37 CFR 1.704(c)(8)). As the attachment is made part of the examiner’s amendment, it does
not get a separate PALM code and will not trigger any reduction in patent term adjustment. A paper copy of the entire e-mail or facsimile submission should be entered in the application file. Examiners are not required to electronically save any e-mails once any e-mails or attachments thereto are printed and become part of an application file record. The e-mail practice that is an exception for examiner’s amendments is restricted to e-mails to the examiner from the applicant and should not be generated by the examiner to the applicant unless such e-mails are in compliance with all of the requirements set out in MPEP § 502.03.
The amendment or cancellation of claims by examiner’s amendment is permitted when passing an application to issue where these changes have been authorized by applicant (or his/her attorney or agent) in an interview. The examiner’s amendment should indicate that the changes were authorized, the date and type of interview, and with whom it was held.
The examiner’s amendment practice may be used to make charges against deposit accounts or credit cards under special conditions.
An examiner’s amendment can be used to make a charge against a deposit account, provided prior approval is obtained from the applicant, attorney or agent, in order to expedite the issuance of a patent on an application otherwise ready for allowance. When such an examiner’s amendment is prepared, the prior approval is indicated by identification of the name of the authorizing party, the date and type (personal or telephone) of authorization, the purpose for which the charge is made (additional claims, etc.), and the deposit account number.
Charges can also be made against a credit card in an examiner’s amendment. Once the examiner has informed applicant of the required charges, applicant must submit by facsimile, a properly completed and signed PTO-2038, authorizing the necessary charges. After completion of processing in the Office of Finance, form PTO-2038 will be removed from the record. Office employees may not accept oral (telephonic) instructions to complete the Credit Card Payment Form or otherwise charge a patent process or trademark process fee (as opposed to information
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§ 1302.04ALLOWANCE AND ISSUE
product or service fees) to a credit card. Further identifying data, if deemed necessary and requested by the applicant, should also be included in the examiner’s amendment.
Form paragraph 13.06 may be used to charge an extension of time fee in an examiner’s amendment.
¶ 13.06 Extension of Time by Examiner’s Amendment
An extension of time under 37 CFR 1.136(a) is required to place this application in condition for allowance. During a telephone conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension.
Examiner Note:
1. See MPEP § 706.07(f), item J which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance.
2. When an examiner’s amendment is also authorized, use form paragraph 13.02.02 instead.
At the time of allowance, substantive changes made by the examiner to the abstract must be done by an examiner’s amendment after first obtaining approval from the applicant. As noted by the court the abstract may be used to determine the meaning of claims. See Pandrol USA, LP v. Airboss Railway Products, Inc., 320 F.3d 1354, 1363 n.1, 65 USPQ2d 1985, 1996 n.1 (Fed. Cir. 2003), Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.1, 54 USPQ2d 1437, 1443 n.1 (Fed. Cir. 2000). Since the abstract may be relied upon to determine the scope of the claimed invention, examiners should review the abstract for compliance with 37 CFR 1.72(b) and point out defects noted to the applicant in the first Office action, or at the earliest point in the prosecution that the defect is noted, so that applicant may make the necessary changes to the abstract.
No examiner’s amendment may make substantive changes to the written portions of the specification, including the abstract, without first obtaining applicant’s approval.
For applications filed prior to September 16, 2012 a reference to a prior filed application, for which benefit is claimed, is required in either the first sentence(s) of the specification or in an Application Data Sheet. For applications filed after September
16, 2012 a reference to a prior filed application, for which benefit is claimed, is required in the Application Data Sheet. If the application data sheet fails to include a required reference applicant should be contacted to supply a Supplemental or Corrected Application Data Sheet, in compliance with 37 CFR 1.76(c). See MPEP § 601.05(a) and (b). To minimize the possibility of the claim for the benefit to an earlier filing date under 35 U.S.C. 119(e), 35 U.S.C. 120, 121, 365(c), or 386(c) being overlooked it is recommended that the statement, “This is a division (continuation, continuation-in-part) of Application Number -/---, filed ---” appear as the first sentence(s) of the specification. For design applications see MPEP § 1504.20. In the case of an application filed under 37 CFR 1.53(b) as a division, continuation or continuation-in-part of a CPA, there would be only one reference to the series of applications assigned the same application number with the filing date cited being that of the original non-continued application. In applications claiming the benefit under 35 U.S.C. 119(e), a statement such as “This application claims the benefit of U.S. Provisional Application No. 60/ - --, filed - --” should appear as the first sentence(s) of the specification. In addition, for an application which is claiming the benefit under 35 U.S.C. 120 of a prior application which in turn claims the benefit of a provisional application under 35 U.S.C. 119(e), a suitable reference would read, “This application is a continuation of U.S. Application No. 08/ - --, filed - --, now abandoned, which claims the benefit of U.S. Provisional Application No. 60/ - --, filed - --.” Any such statements appearing elsewhere in the specification should be relocated.
References cited as being of interest by examiners when passing an application to issue will not be supplied to applicant, but foreign patent documents and non-patent literature will be scanned and added to the IFW for viewing and downloading by the applicant, if desired. The references will be cited as usual on form PTO-892, a copy of which will be attached to the Notice of Allowability, form PTOL-37.
Where an application is ready for issue except for a slight defect in the drawing not involving a change in structure, the examiner will prepare a letter indicating the change to be made and, if necessary,
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including a marked-up copy of the drawing showing the addition or alteration to be made. See MPEP § 608.02(w).
No other changes may be made by any person in any record of the U.S. Patent and Trademark office without the written approval of the Director of the United States Patent and Trademark Office.
In reviewing the application, all errors should be carefully noted. It is not necessary that the language be the best; it is, however, essential that it be clear in meaning, and free from errors in syntax. Any necessary examiner’s amendment is usually made at the time an application is being prepared for issue by the examiner and a copy of any examiner’s amendment is sent to the applicant as an attachment to the Notice of Allowability, PTOL-37.
Examiners will not cancel claims on the basis of an amendment which argues for certain claims and, alternatively, purports to authorize their cancellation by the examiner if other claims are allowed . See generally In re Willingham, 282 F.2d 353, 356, 127 USPQ 211, 215 (CCPA 1960).
In all instances, both before and after final rejection, in which an application is placed in condition for allowance as by an interview or amendment, applicant should be notified promptly of this fact by means of a Notice of Allowability (PTOL-37). See MPEP § 714.13 and § 1302.03.
If after reviewing, screening, or surveying an allowed application the Office of Patent Quality Assurance discovers any informality in the application suitable for correction by examiner’s amendment or in an informality in an examiner’s amendment, the Review Quality Assurance Specialist will return the application to the Technology Center (TC) personnel via the TC Director suggesting, as appropriate, specific changes for approval and correction by the
examiner through the use of an examiner’s amendment.
1302.04(a) Title of Invention [R-08.2012]
Where the title of the invention is not specific to the invention as claimed, see MPEP § 606.01.
1302.04(b) [Reserved]
1302.04(c) Cancellation of Claims to Nonelected Invention [R-08.2012]
See MPEP § 821.01 and § 821.02.
1302.04(d) Cancellation of Claim Lost in Interference [R-08.2012]
See MPEP Chapter 2300 .
1302.04(e) Cancellation of Rejected Claims Following Appeal [R-08.2012]
See MPEP § 1214.06, § 1215.03, and § 1215.04.
1302.04(f) [Reserved]
1302.04(g) Identification of Claims [R-07.2015]
To identify a claim, an examiner’s amendment should refer to it by the original number and, if renumbered in the allowed application, also by the new number.
1302.04(h) Rejoinder of Claims [R-08.2012]
Any previously withdrawn claims that are being rejoined and allowed must be listed in the index of claims and on the Notice of Allowability to avoid a
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§ 1302.04(h)ALLOWANCE AND ISSUE
printer query. The examiner should notify the applicant of the rejoinder. See MPEP § 821.04.
1302.05 Correction of Drawing [R-07.2015]
Where an application otherwise ready for issue requires correction of the drawing, the application is processed for allowance in the Technology Center and then forwarded to the Office of Data Management. Any papers subsequently filed by the applicant, including replacement drawings, are matched with the application file. If the drawings that are received are still not acceptable for publishing, the Office will mail a “Notice to File Corrected Application Papers,” giving the applicant a time period in which to file the corrected drawings.
1302.06 Prior Foreign Application [R-07.2015]
See MPEP § 202 and § 214.
1302.07 [Reserved]
1302.08 Interference Search [R-08.2012]
When an application is in condition for allowance, an interference search must be made by performing a text search of the “US-PGPUB” database in EAST or WEST directed to the comprehensive inventive features in the broadest claim. If the application contains a claim directed to a nucleotide or peptide sequence, the examiner must submit a request to STIC to perform an interference search of the
sequence. The text search may make use of the “.CLM.” search symbol in order to limit the text search to the claims of the database references. If the search results identify any potential interfering subject matter, the examiner will review the application(s) with the potential interfering subject matter to determine whether interfering subject matter exists. If interfering subject matter does exist, the examiner will follow the guidance set forth in MPEP Chapter 2300. If there is no interfering subject matter then the examiner should prepare the application for issuance. A printout of only the database(s) searched, the query(ies) used in the interference search, and the date the interference search was performed must be made of record in the application file. The results of the interference search must not be placed in the application file. Completion of the interference search should be recorded in the “Interference Searched” section of the OACS “Search Notes” page with notation such as “PGPUB text search – March 1, 2005, see interference search printout” coupled with the examiner’s initials.
An interference search may be required in TC Working Group 3640. Inspection of pertinent prints, drawings, brief cards, and applications in TC Working Group 3640 will be done on request by an examiner in TC Working Group 3640.
1302.09 Classification, Print Figure, and Other Notations [R-07.2015]
The examiner preparing the application for issue completes the Issue Classification sheet.
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§ 1302.09ALLOWANCE AND ISSUE
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Examiners must review the data regarding prior U.S. applications to make sure that the information is correct when preparing the application for issue. If
any claim to domestic benefit under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) is added, deleted, and/or modified during prosecution of the application
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§ 1302.09ALLOWANCE AND ISSUE
and such addition, deletion, and/or modification has been approved, the examiner must make sure that the information in the PALM database is current and up to date. If the PALM system has not been updated, the application must be forwarded to the Technology Center (TC) Legal Instrument Examiner, with an explanation of the correction to be made. Examiners should also review the data regarding prior provisional and foreign applications for accuracy.
See MPEP § 202 for notations to be placed in the file history as to parent or prior U.S. applications, including provisional applications, and foreign patent applications.
See MPEP § 1302.13 for name of examiner.
Examiners, when preparing an application for issue, are to record the number of the claim selected for printing in the Official Gazette in the box labeled “PRINT CLAIM” on the Issue Classification Sheet.
The claim or claims should be selected in accordance with the following instructions:
(A) The broadest claim should be selected.
(B) Examiners should ordinarily designate but one claim on each invention, although when a plurality of inventions are claimed in an application, additional claims up to a maximum of five may be designated for publication.
(C) A dependent claim should not be selected unless the independent claim on which it depends is also printed. In the case where a multiple dependent claim is selected, the entire chain of claims for one embodiment should be listed.
(D) In reissue applications, the broadest claim with changes or the broadest additional reissue claim should be selected for printing.
When recording this information in the box provided, the following items should be kept in mind:
(A) If multiple claims are selected, the claim numbers should be separated by commas.
(B) The claim designated must be referred to by using the renumbered patent claim number rather than the original application claim number
Examiners, when preparing an application for issue, are to record the figure selected for printing in the Official Gazette in the box labeled “Print Fig.” on
the Issue Classification sheet.
Ordinarily a single figure is selected for printing. This figure should be consistent with the claim to be printed in the Official Gazette. The figure to be printed in the Official Gazette must not be one that is labeled “prior art.” If there is no figure illustrative of or helpful in understanding the claimed invention, no figure need be selected. “None” may be written in the box labeled “Print Fig.”on the Issue Classification Sheet.
1302.10 Issue Classification Notations [R-07.2015]
See MPEP §§ 903.07 and 905 through 907 for notations to be applied on the Issue Classification sheet. The Office Action Correspondence System (OACS) automatically populates the Issue Classification sheet with the Cooperative Patent Classification symbols applied to a family of documents (continuations, divisionals, and/or foreign documents in the family). These symbols are based on the inventive concepts in the disclosure, rather than solely based on the claimed subject matter. As such, it is possible that an issue classification will include classification group/subgroup symbols that were not searched by the examiner.
In all reissue applications, the number of the original patent which is being reissued should be placed in the box provided therefor below the box for the applicant’s name.
1302.11 [Reserved]
1302.12 Listing of References [R-07.2015]
All references which have been cited by the examiner during the prosecution, including those appearing in Patent Trial and Appeal Board decisions or listed in the reissue oath, must be listed on either a form PTO-892 or on an Information Disclosure Statement (PTO/SB/08 ) and initialed. All such reference citations will be printed in the patent.
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References listed by a patent examiner on a “Notice of References Cited,” form PTO-892, will be indicated with an asterisk in the “References Cited” section of the front page of a patent document. An example of how the “References Cited” section of the patent will appear is as follows:
[56] References Cited
U.S. PATENT DOCUMENTS
2,234,192 * 7/1955 Greene.............................. 75/507
4,991,048 8/1990 Larkin................................206/207
5,000,186 12/1991Amis.................................267/340
5,000,993 * 12/1991 Thomas et al....................75/507
FOREIGN PATENT DOCUMENTS
9500000 * 6/1995 Belgium..........................…75/507
200000 * 6/1990 Japan ………………………. 75/507
9400000 9/1994 United Kingdom.
OTHER PUBLICATIONS
Hill, “Ferrous Precipitation,” Journal of the American Defenestration Association, Jan. 1989, Pages 34– 46.* Clymerhill-Irons, “FerrousAscension for the Eighties,” Proceedings of the International Ferrous Ascension Society, Jan.– Mar. 1979, Pages 1111– 1163.
* cited by examiner
Indication of whether a reference was listed by the examiner will be helpful in compiling statistical data related to prior art submissions so that the USPTO can better consider whether changes are required to the rules governing prior art statements.
Indication of a reference with an asterisk should not be considered to reflect any significance other than that the reference was listed on a “Notice of References Cited,” form PTO-892. When an
examiner lists references on a form PTO-892, the examiner lists references that are relied upon in a prior art rejection or mentioned as pertinent. See MPEP § 707.05(c). The examiner does not list references which were previously cited by the applicant (and initialed by an examiner) on an Information Disclosure Statement, for example, on a PTO/SB/08. See MPEP § 609 and § 707.05(b), (c) and (d). No distinction will be made in the “References Cited” section for other sources of references. Thus, references cited in a protest, by an attorney or agent not acting in a representative capacity but on behalf of a single inventor, and by the applicant will not be distinguished.
At time of allowance, the examiner may cite pertinent art in an examiner’s amendment or statement of reasons for allowance. Such pertinent art should be listed as usual on form PTO-892, a copy of which is attached to the Notice of Allowability form PTOL-37. Such pertinent art is not sent to the applicant, but foreign patent documents and non-patent literature will be scanned and added to the Image File Wrapper (IFW) for viewing and downloading by the applicant, if desired. Such citation of art is important in the case of continuing applications where significant prior art is often of record in the parent case. In the rare instance where no art is cited in a continuation application, all the references cited during the prosecution of the parent application will be listed at allowance for printing in the patent. See MPEP § 707.05 and § 707.05(a).
When preparing an application for allowance, the technical support staff will verify that there is at least one list of references (PTO-892 or PTO/SB/08 ) in the application. The technical support staff will also verify that each reference on the Information Disclosure Statement has either been initialed by the examiner or lined-through by the examiner. All lists of references are maintained in the application file.
In the first action after termination of an interference or derivation, the examiner should make of record in each application all references not already of record which were pertinent to any preliminary motions and which were discussed in the decision on motion.
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§ 1302.12ALLOWANCE AND ISSUE
In any application, otherwise ready for issue, in which an erroneous citation has not been formally corrected in an official paper, the examiner is directed to correct the citation by an examiner’s amendment. See MPEP § 707.05(g).
Any new reference cited when the application is in issue, under the practice of MPEP § 1308.01, should be added by way of a PTO-892 or PTO/SB/08.
1302.13 Signing [R-07.2015]
The primary examiner and the assistant examiner involved in the allowance of an application will apply E-Signatures on the Issue Classification sheet. A primary examiner who prepares an application for issue signs the file wrapper only in the “Primary Examiner” box on the Issue Classification sheet.
Only the names of the primary examiner and the assistant examiner appearing on the Issue Classification Sheet will be listed in the printed patent.
1302.14 Reasons for Allowance [R-07.2015]
37 CFR 1.104 Nature of examination. *****
(e) Reasons for allowance. If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication.
I. REASONS FOR ALLOWANCE
One of the primary purposes of 37 CFR 1.104(e) is to improve the quality and reliability of issued patents by providing a complete file history which should clearly reflect, as much as is reasonably possible, the reasons why the application was allowed. Such information facilitates evaluation of the scope and strength of a patent by the patentee and the public and may help avoid or simplify litigation of a patent.
It should be noted that the setting forth of reasons for allowance is not mandatory on the examiner’s part. However, in meeting the need for the application file history to speak for itself, it is incumbent upon the examiner in exercising his or her responsibility to the public, to see that the file history is as complete as is reasonably possible.
When an application is finally acted upon and allowed, the examiner is expected to determine, at the same time, whether the reasons why the application is being allowed are evident from the record.
Prior to allowance, the examiner may also specify allowable subject matter and provide reasons for indicating such allowable subject matter in an Office communication.
In determining whether reasons for allowance should be recorded, the primary consideration lies in the first sentence of 37 CFR 1.104(e) which states:
If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. (Emphasis added).
In most cases, the examiner’s actions and the applicant’s replies make evident the reasons for allowance, satisfying the “record as a whole” proviso of the rule. This is particularly true when applicant fully complies with 37 CFR 1.111(b) and (c) and 37 CFR 1.133(b). Thus, where the examiner’s actions clearly point out the reasons for rejection and the applicant’s reply explicitly presents reasons why claims are patentable over the reference, the reasons for allowance are in all probability evident from the record and no statement should be necessary. Conversely, where the record is not explicit as to reasons, but allowance is in order, then a logical extension of 37 CFR 1.111 and 1.133 would dictate that the examiner should make reasons of record and such reasons should be specific.
Where specific reasons are recorded by the examiner, care must be taken to ensure that statements of reasons for allowance (or indication of allowable
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subject matter) are accurate, precise, and do not place unwarranted interpretations, whether broad or narrow, upon the claims. The examiner should keep in mind the possible misinterpretations of his or her statement that may be made and its possible effects. Each statement should include at least (1) the major difference in the claims not found in the prior art of record, and (2) the reasons why that difference is considered to define patentably over the prior art if either of these reasons for allowance is not clear in the record. The statement is not intended to necessarily state all the reasons for allowance or all the details why claims are allowed and should not be written to specifically or impliedly state that all the reasons for allowance are set forth. Where the examiner has a large number of reasons for allowing a claim, it may suffice to state only the major or important reasons, being careful to so couch the statement. For example, a statement might start: “The primary reason for the allowance of the claims is the inclusion of the limitation in all the claims which is not found in the prior art references,” with further amplification as necessary.
Stock paragraphs with meaningless or uninformative statements of the reasons for the allowance should not be used. It is improper to use a statement of reasons for allowance to attempt to narrow a claim by providing a special definition to a claim limitation which is argued by applicant, but not supported by a special definition in the description in cases where the ordinary meaning of the term in the prior art demonstrates that the claim remains unpatentable for the reasons of record, and where such claim narrowing is only tangential to patentability. Cf. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., 535 U.S. 722, 741, 62 USPQ2d 1705, 1714 (2002). The statement of reasons for allowance by the examiner is intended to provide information equivalent to that contained in a file in which the examiner’s Office actions and the applicant’s replies make evident the examiner’s reasons for allowing claims.
Examiners are urged to carefully carry out their responsibilities to see that the application file contains a complete and accurate picture of the Office’s consideration of the patentability of the application.
Under the rule, the examiner must make a judgment of the individual record to determine whether or not reasons for allowance should be set out in that record. These guidelines, then, are intended to aid the examiner in making that judgment. They comprise illustrative examples as to applicability and appropriate content. They are not intended to be exhaustive.
II. EXAMPLES OF WHEN IT IS LIKELY THAT A STATEMENT SHOULD BE ADDED TO THE RECORD
(A) Claims are allowed on the basis of one (or some) of a number of arguments and/or affidavits presented, and a statement is necessary to identify which of these were persuasive, for example:
(1) When the arguments are presented in an appeal brief.
(2) When the arguments are presented in an ordinary reply, with or without amendment of claims.
(3) When both an affidavit under 37 CFR 1.131 and arguments concerning rejections under 35 U.S.C. 102 and/or 103 are presented.
(B) First action issue:
(1) Of a noncontinuing application, wherein the claims are very close to the cited prior art and the differences have not been discussed elsewhere.
(2) Of a continuing application, wherein reasons for allowance are not apparent from the record in the parent case or clear from preliminary filed matters.
(C) Withdrawal of a rejection for reasons not suggested by applicant, for example:
(1) As a result of an appeal conference.
(2) When applicant’s arguments have been misdirected or are not persuasive alone and the examiner comes to realize that a more cogent argument is available.
(3) When claims are amended to avoid a rejection under 35 U.S.C. 102, but arguments (if any) fail to address the question of obviousness.
(D) Allowance after remand from the Patent Trial and Appeal Board.
(E) Allowance coincident with the citation of newly found references that are very close to the
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claims, but claims are considered patentable thereover:
(1) When reference is found and cited (but not argued) by applicant.
(2) When reference is found and cited by examiner.
(F) Where the reasons for allowance are of record but, in the examiner’s judgment, are unclear (e.g., spread throughout the file history) so that an unreasonable effort would be required to collect them.
(G) Allowance based on a claim interpretation which might not be readily apparent, for example:
(1) Article claims in which method limitations impart patentability.
(2) Method claims in which article limitations impart patentability.
(3) Claim is so drafted that “nonanalogous” art is not applicable.
(4) Preamble or functional language “breathes life” into claim.
(H) Allowance following decision by the United States Court of Appeals for the Federal Circuit or District Court of the District of Columbia. The reasons for allowance should refer to and incorporate the briefs and the court decision.
(I) Where the claims are considered patentable over the X and/or Y references cited in a search report of a corresponding PCT application and the reasons for allowance are not apparent from the record.
III. EXAMPLES OF STATEMENTS OF SUITABLE CONTENT
(A) The primary reason for allowance of the claims is the inclusion of .03 to .05 percent nickel in all of the claims. Applicant’s second affidavit in example 5 shows unexpected results from this restricted range.
(B) During two telephonic interviews with applicant’s attorney, Mr............. on 5/6 and 5/09/2014, the examiner stated that applicant’s remarks about the placement of the primary teaching’s grid member were persuasive, but he pointed out that applicant did not claim the member
as being within the reactor. Thus, an amendment doing such was agreed to.
(C) The claims in the application are deemed to be directed to an nonobvious improvement over the invention patented in Pat. No. 3,953,224. The claims comprise baffle means 12 whose effective length in the extraction tower may be varied so as to optimize and to control the extraction process.
(D) Upon reconsideration, this application has been awarded the effective filing date of application number -/---. Thus the rejection under pre-AIA 35 U.S.C. 102(d) and 103 over Belgium Patent No. 757,246 is withdrawn.
(E) The specific limitation as to the pressure used during compression was agreed to during the telephone interview with applicants’attorney. During said interview, it was noted that applicants contended in their amendment that a process of the combined applied teachings could not result in a successful article within a particular pressure range (see page 3, bottom, of applicant’s amendment). The examiner agreed and allowed the application after incorporating the pressure range into the claim.
(F) In the examiner’s opinion, it would not have been obvious to a person of ordinary skill in the art first to eliminate one of top members 4, second to eliminate plate 3, third to attach remaining member 4 directly to tube 2 and finally to substitute this modified handle for the handle 20 of Nania (see Fig. 1) especially in view of applicant’s use of term “consisting.”
(G) The application is allowable for the reasons set forth on page -- of the decision of the Court of Appeals for the Federal Circuit, which is hereby incorporated by reference. As noted therein, and as argued on page -- of Appellant’s brief, the claimed invention requires a one piece tubular member whereas the closest prior art requires a multiple piece assembly which does not teach or suggest the claimed invention.
IV. EXAMPLES OF STATEMENTS THAT ARE NOT SUITABLE AS TO CONTENT
(A) The 3-roll press couple has an upper roll 36 which is swingably adjustable to vary the pressure selectively against either of the two lower rolls. (NOTE: The significance of this statement may not be clear if no further explanation is given.)
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(B) The main reasons for allowance of these claims are applicant’s remarks in the appeal brief and an agreement reached in the appeal conference.
(C) The instant composition is a precursor in the manufacture of melamine resins. A thorough search of the prior art did not bring forth any composition which corresponds to the instant composition. The examiner in the art also did not know of any art which could be used against the instant composition.
(D) Claims 1-6 have been allowed because they are believed to be both novel and nonobvious.
(E) The examiner should not include in his or her statement any matter which does not relate directly to the reasons for allowance. For example:
(1) Claims 1 and 2 are allowed because they are patentable over the prior art. If applicants are aware of better art than that which has been cited, they are required to call such to the attention of the examiner.
(2) The reference Jones discloses and claims an invention similar to applicant’s. However, a comparison of the claims, as set forth below, demonstrates the conclusion that the inventions are noninterfering.
Most instances when the examiner finds a need to place in the file a statement of the reasons for allowing a claim or claims will come at the time of allowance. In such cases, the examiner should (a) check the appropriate box on the form PTOL-37 and (b) attach thereto a paper containing the examiner's statement of reasons for allowance. The paper should identify the application number and be clearly labeled “Statement of Reasons for Allowance.” It should also specify that comments may be filed by the applicant on the statement and should preferably be submitted with the payment of the issue fee so as not to delay processing of the application and in any event no later than payment of the issue fee.
Form paragraph 13.03 may be used for this purpose.
¶ 13.03 Reasons for Allowance
The following is an examiner’s statement of reasons for allowance: [1]
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee.
Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Examiner Note:
1. Do not use this form paragraph in reexamination proceedings, see form paragraph 22.16.
2. In bracket 1, provide a detailed statement of the reason(s) certain claim(s) have been indicated as being allowable or as containing allowable subject matter.
A statement may be sent to applicant with other communications, where appropriate, but should be clearly labeled as a “Statement of Reasons for Allowance” and contain the data indicated above.
Form paragraph 13.13.01 may be used to specify the reasons for indicating allowable subject matter in a communication prior to allowance.
¶ 13.03.01 Reasons for Indication of Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: [1]
Examiner Note:
1. This form paragraph is for use in an Office action prior to allowance of the application. Use form paragraph 13.03 in the Notice of Allowability.
2. In bracket 1, provide a detailed statement of the reason(s) certain claim(s) have been indicated as being allowable or as containing allowable subject matter.
V. APPLICANT’S COMMENTS ON THE REASONS FOR ALLOWANCE
The examiner’s statement of reasons for allowance is an important source of prosecution file history. See Zenith Labs., Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 30 USPQ2d 1285 (Fed. Cir. 1996). The examiner’s statement of reasons for allowance is the personal opinion of the examiner as to why the claims are allowable. The examiner’s statement should not create an estoppel. Only applicant’s statements should create an estoppel. The failure of applicant to comment on the examiner’s statement of reasons for allowance should not be treated as acquiescence to the examiner’s statement. See Salazar v. Procter & Gamble Co., 414 F.3d 1342,
1347, 75 USPQ2d 1369, 1373 (Fed. Cir. 2005). Any inferences or presumption are to be determined on a case-by-case basis by a court reviewing the patent, the USPTO examining the patent in a reissue
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application or a reexamination proceeding, the Patent Trial and Appeal Board reviewing the patent in an interference or derivation proceeding, etc. Applicant may set forth his or her position if he or she disagrees with the examiner’s reasons for allowance.
Comments filed by the applicant on the examiner’s statement of reasons for allowance, should preferably be submitted no later than the payment of the issue fee, to avoid processing delays. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.” Comments will be entered in the application file by the Office of Data Management with an appropriate document code in the file wrapper.
The application file generally will not be returned to the examiner after the entry of such comments made by applicant on the examiner’s statement of reasons for allowance. Therefore, the absence of an examiner’s response to applicant's comments does not mean that the examiner agrees with or acquiesces in the reasoning of such comments. See 37 CFR 1.104(e). While the examiner may review and comment upon such a submission, the examiner has no obligation to do so.
1303 Notice of Allowance [R-07.2015]
37 CFR 1.311 Notice of Allowance.
(a) If, on examination, it appears that the applicant is entitled to a patent under the law, a notice of allowance will be sent to the applicant at the correspondence address indicated in § 1.33. The notice of allowance shall specify a sum constituting the issue fee and any required publication fee (§ 1.211(e)) which issue fee and any required publication fee must both be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable.
(b) An authorization to charge the issue fee or other post-allowance fees set forth in § 1.18 to a deposit account may be filed in an individual application only after mailing of the notice of allowance. The submission of either of the following after the mailing of a notice of allowance will operate as a request to charge the correct issue fee or any publication fee due to any deposit account identified in a previously filed authorization to charge such fees:
(1) An incorrect issue fee or publication fee; or
(2) A fee transmittal form (or letter) for payment of issue fee or publication fee.
A Notice of Allowance is prepared and mailed, and the mailing date appearing thereon is recorded in the image file wrapper table of contents.
If an application is subject to publication under 37 CFR 1.211, the Notice of Allowance will require both the issue fee and the publication fee. See 37 CFR 1.211(e). It is noted that the publication fee was reset to $0.00 effective January 1, 2014. See Setting and Adjusting Patent Fees (78 FR 4212, Jan. 18,2013). A “Notice of Allowance and Fee(s) Due.” (PTOL-85) will be mailed to the correspondence address of record. The form includes the amount of any required publication fee, as provided in 37 CFR 1.211(e) and 1.311. The form includes an indication that the publication fee is due, if the application was subject to publication and the publication fee has not already been paid. Part B of the form (PTOL-85B) must be returned to the Office with the payment of the issue fee. Applicants are reminded to transmit an extra copy of the PTOL-85B when payment of the issue fee is by way of authorization to debit a Deposit Account. See MPEP § 509.01.
For more information about eighteen month publication and publication fees, visit the USPTO Internet web site at www.uspto.gov.
For applications filed on or after September 16, 2012, if an application is in condition for allowance but does not include an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, the Office will issue a “Notice of Allowance and Fee(s) Due” (PTOL-85) together with a “Notice of Allowability” (PTOL-37) including a “Notice Requiring Inventor’s Oath or Declaration” (PTOL-2306) requiring the applicant to file an oath or declaration in compliance with 37 CFR 1.63, or substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, no later than the date of payment of the issue fee to avoid abandonment. If applicant receives a “Notice Requiring Inventor’s Oath or Declaration” and fails to file a proper reply to the notice before or with the payment of the issue fee, the application will be regarded as abandoned. See 37 CFR 1.53(f)(3) (ii).
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1303.01 Amendment Received After Allowance [R-07.2015]
If the amendment is filed under 37 CFR 1.312, see MPEP § 714.15 to § 714.16(e). If the amendment contains claims copied from a patent to provoke an
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interference, see MPEP Chapter 2300. Any submissions of replacement drawings filed after allowance should be forwarded to the Office of Data Management.
Reference to an Issue Batch Number is no longer necessary because the Office no longer stores and tracks applications according to issue batches.
Any paper filed after receiving the Issue Notification should include the indicated patent number, unless the application has been withdrawn from issue.
1303.02 Undelivered [R-07.2015]
In case a Notice of Allowance is returned, and a new notice is sent (see MPEP § 707.13), the date of sending the notice must be changed in the file to agree with the date of such remailing. The original document, a copy of the returned document with any markings, and the remailed document should be retained in the application so that the file history is clear.
1303.03 Not Withheld Due to Death of Inventor [R-07.2015]
The Notice of Allowance will not be withheld due to death of the inventor if the executor or administrator has not intervened. See MPEP § 409.01(a) for applications filed on or after September 16, 2012 or MPEP § 409.01(b) for applications filed before September 16, 2012.
1304 Amendments After D-10 Notice [R-08.2012]
For amendments received after D-10 Notice, see MPEP § 130.
1304.01 Withholding From Issue of “Secrecy Order” Applications [R-08.2012]
“Secrecy Order” applications are not sent to issue even when all of the claims have been allowed. Instead of mailing a Notice of Allowance, a D-10 Notice is sent. See MPEP § 130.
If the “Secrecy Order” in an application is withdrawn after the D-10 notice is mailed, the application should then be treated like an ordinary application in condition for allowance.
1305 Jurisdiction [R-07.2015]
Jurisdiction of the application remains with the primary examiner until the Notice of Allowance is mailed. However, the examiner may permit amendments under 37 CFR 1.312 which are confined to matters of form in the specification or claims, or to the cancellation of a claim or claims. The examiner’s action on other amendments under 37 CFR 1.312 consists of a recommendation to the Director.
To regain jurisdiction over the application, the examiner must write a letter to the Director requesting it. See MPEP § 1308 and § 1308.02.
Once the patent has been granted, the U.S. Patent and Trademark Office can take no action concerning it, except as provided in 35 U.S.C. 135, 35 U.S.C. 251 through 256, 35 U.S.C. 302 through 307, 35 U.S.C. 311 through 319 and 35 U.S.C. 321 through 329.
1306 Issue Fee [R-07.2015]
The issue fee and any required publication fee are due 3 months from the date of the Notice of Allowance. The amount of the issue fee and any required publication fee are shown on the Notice of Allowance. The Notice ofAllowance will also reflect any issue fee previously paid in the application. The issue fee due does not reflect a credit for any previously paid issue fee in the application. If an issue fee has previously been paid in the application as reflected in the Notice of Allowance, the return of Part B (Fee(s) Transmittal form) will be considered a request to reapply the previously paid issue fee toward the issue fee that is now due. For example, if the application was allowed and the issue fee paid, but applicant withdrew the application from issue and filed a Request for Continued Examination (RCE) and the application was later allowed, the Notice of Allowance will reflect an issue fee amount that is due and the issue fee that was previously paid. Under the changes to 35 U.S.C. 151 in the Patent
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Law Treaties Implementation Act (PLTIA) (Public Law 112-211), the sum specified in the notice of allowance will constitute the issue fee and any required publication fee, and the Office will proceed to issue a patent when the applicant pays the sum specified in the notice of allowance, regardless of the issue fee and/or publication fee in effect on the date the sum specified in the notice of allowance is paid. Accordingly, applicants are no longer required to pay any balance of the issue fee when there is a fee increase. The amounts due under 35 U.S.C. 41(a) (i.e., the issue fee, but not the publication fee) are reduced by 50 per centum for small entities and 75 per centum for micro entities.
Applicants and their attorneys or agents are urged to use the Fee(s) Transmittal form (PTOL-85B) provided with the Notice of Allowance when submitting their payments. Unless otherwise directed, all post allowance correspondence should be addressed “Mail Stop Issue Fee.”
Where it is clear that an applicant actually intends to pay the issue fee and required publication fee, but the proper fee payment is not made, for example, an incorrect issue fee amount is supplied, or a PTOL-85B Fee(s) Transmittal form is filed without payment of the issue fee, a general authorization to pay fees or a specific authorization to pay the issue fee, submitted prior to the mailing of a notice of allowance, will be allowed to act as payment of the correct issue fee. 37 CFR 1.311(b). In addition, where the deposit account information is added to the Fee(s) Transmittal form (PTOL-85B), but the check box authorizing that the deposit account be charged the issue fee is not checked, the deposit account will still be charged the required issue fee and any required publication fee.
Technology Center personnel should forward all post allowance correspondence to the Office of Patent Application Processing (OPAP). The papers received by the OPAP will be scanned and matched with the appropriate application and the entire application will be forwarded to the appropriate Technology Center for processing.
The payment of the issue fee due may be simplified by using a U.S. Patent and Trademark Office Deposit Account or a credit card payment with form
PTO-2038 for such a fee. See MPEP § 509. However, any such payment must be specifically authorized by reference to the “issue fee” or “fees due under 37 CFR 1.18.”
The fee(s) due will be accepted from the applicant, assignee, or a registered attorney or agent, either of record or under 37 CFR 1.34.
The Director has no authority to extend the time for paying the issue fee. Intentional failure to pay the issue fee within the 3 months permitted by 35 U.S.C. 151 does not amount to unintentional delay in making payment.
1306.01 Deferring Issuance of a Patent [R-07.2015]
37 CFR 1.314 Issuance of patent.
If applicant timely pays the issue fee, the Office will issue the patent in regular course unless the application is withdrawn from issue (§ 1.313) or the Office defers issuance of the patent. To request that the Office defer issuance of a patent, applicant must file a petition under this section including the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why it is necessary to defer issuance of the patent.
There is a public policy that the patent will issue in regular course once the issue fee is timely paid. 37 CFR 1.314. It has been the policy of the U.S. Patent and Trademark Office to defer issuance of a patent, upon request, for a period of up to 1 month only, in the absence of extraordinary circumstances or requirement of the regulations (e.g., 37 CFR 1.177) which would dictate a longer period. Situations like negotiation of licenses, time for filing in foreign countries, collection of data for filing a continuation-in-part application, or a desire for simultaneous issuance of related applications are not considered to amount to extraordinary circumstances.
A petition to defer issuance of a patent is not appropriate until the issue fee is paid. Issuance of a patent cannot be deferred after an allowed application receives a patent number and issue date unless the application is withdrawn from issue under 37 CFR 1.313(b) or (c). The petition to defer is considered at the time the petition is correlated with the application file before the appropriate deciding official (MPEP § 1002.02(b)). In order to facilitate consideration of a petition for deferment of issue,
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the petition should be filed with the Fee(s) Transmittal form (PTOL-85B) and clearly labeled as a Petition to Defer Issue; Attention: Office of Petitions.
1306.02 Simultaneous Issuance of Patents [R-08.2012]
Where applications have been allowed and a Notice of Allowance and Fee(s) Due (PTOL-85) has been mailed in each application, a request for simultaneous issuance will be granted. Unless all the applications have reached this stage of processing, or a specific requirement of the regulations is involved (e.g., 37 CFR 1.177), a request for simultaneous issuance generally will not be granted.
Applicants and their attorneys who desire the simultaneous issue of allowed applications must submit the request to: Mail Stop Issue Fee, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, Attention: Office of Patent Publication.
The request must contain the following information about each allowed application for which simultaneous issue is requested:
(A) Application number,
(B) Filing date,
(C) Name(s) of inventor(s),
(D) Title of invention, and
(E) Date of allowance.
Separate copies of the request must accompany each Fee(s) Transmittal (PTOL-85B).
1306.03 Practice After Payment of Issue Fee; Receipt of Issue Notification [R-07.2015]
Under the current publication process, utility and reissue patents are issued within about four weeks after the issue fee and any required publication fee are received in the Office. A patent number and issue date will be assigned to an application and an Issue Notification will be mailed after the issue fee has been paid and processed by the USPTO. Because
the Issue Notification may be mailed less than two weeks before the application is expected to issue as a patent, applicants are advised to file any continuing application before receiving the Issue Notification to avoid loss of copendency.
Since the Office cannot ensure that any paper filed after payment of the issue fee will reach the appropriate USPTO official before the date the application issues as a patent, applicants are also encouraged to file any necessary amendments, assignments, petitions, information disclosure statements, or other papers prior to the date of issue fee payment, preferably within one month after the Notice of Allowance has been mailed. See MPEP § 502 for post allowance correspondence.
In order to minimize disruptions and delays in the printing process, the application is not available after the Notice of Allowance has been mailed unless necessary for “Query Printer Waiting”, amendments submitted under 37 CFR 1.312, information disclosure statements, and petitions. Corrected filing receipts will not be mailed after the date of mailing of the Notice of Allowance unless special circumstances exist. Duplicate filing of papers is not recommended (and may be treated as a failure to engage in reasonable efforts to conclude prosecution pursuant to 37 CFR 1.704(c)(10)). The same correspondence should not be mailed and faxed to the Office unless the duplication has been specifically required by the Office. See MPEP § 719.01(a).
1307 Change in Classification of Cases Which Are in Issue [R-07.2015]
See MPEP § 903.07.
1308 Withdrawal From Issue [R-07.2015]
37 CFR 1.313 Withdrawal from issue.
(a) Applications may be withdrawn from issue for further action at the initiative of the Office or upon petition by the applicant. To request that the Office withdraw an application from issue, applicant must file a petition under this section including the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why withdrawal of the application from issue is necessary. A petition under this section is not required if a request for continued examination under § 1.114 is filed prior to payment of the issue fee. If the Office withdraws the
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application from issue, the Office will issue a new notice of allowance if the Office again allows the application.
(b) Once the issue fee has been paid, the Office will not withdraw the application from issue at its own initiative for any reason except:
(1) A mistake on the part of the Office;
(2) A violation of § 1.56 or illegality in the application;
(3) Unpatentability of one or more claims; or
(4) For interference or derivation proceeding.
(c) Once the issue fee has been paid, the application will not be withdrawn from issue upon petition by the applicant for any reason except:
(1) Unpatentability of one of more claims, which petition must be accompanied by an unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable;
(2) Consideration of a request for continued examination in compliance with § 1.114; or
(3) Express abandonment of the application. Such express abandonment may be in favor of a continuing application.
(d) A petition under this section will not be effective to withdraw the application from issue unless it is actually received and granted by the appropriate officials before the date of issue. Withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of application information.
I. WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE APPLICANT
A. Prior to the Payment of Issue Fee
If the applicant wishes to have an application withdrawn from issue, he or she must petition the Director under 37 CFR 1.313(a) or file a request for continued examination (RCE) under 37 CFR 1.114 with a submission and the fee set forth in 37 CFR 1.17(e). A submission may be an information disclosure statement (37 CFR 1.97 and 1.98) or an amendment. The RCE practice does not apply to utility or plant applications filed before June 8, 1995 and design applications. See MPEP § 706.07(h), subsections I, II and IX. If an applicant files a RCE (with the fee and a submission), the applicant need not pay the issue fee to avoid abandonment of the application. Applicants are cautioned against filing a RCE prior to payment of the issue fee and subsequently paying the issue fee (before the Office
acts on the RCE) because doing so may result in issuance of a patent without consideration of the RCE (if the RCE is not matched with the application before the application is processed into a patent).
Petitions under 37 CFR 1.313(a) to have an application withdrawn from issue should be directed to the Technology Center (TC) Director to which the application is assigned (see MPEP § 1002.02(c)). Unless applicant receives a written communication from the Office that the application has been withdrawn from issue, the issue fee must be timely submitted to avoid abandonment.
Applicant may also file a continuing application on or before the day the issue fee is due and permit the parent application to become abandoned for failure to pay the issue fee (35 U.S.C. 151).
B. After the Payment of Issue Fee
Once the issue fee is paid, withdrawal is permitted only for the reasons stated in 37 CFR 1.313(c). The status of the application at the time the petition is filed is determinative of whether the petition is considered under 37 CFR 1.313(a) or 37 CFR 1.313(c). Petitions under 37 CFR 1.313(c) to have an application withdrawn after payment of the issue fee should be directed to the Office of Petitions (see MPEP § 1002.02(b)).
In addition to the specific reasons identified in 37 CFR 1.313(c)(1)-(3) applicant should identify some specific and significant defect in the allowed application before the application will be withdrawn from issue. A petition under 37 CFR 1.313(c) based on the reason specified in 37 CFR 1.313(c)(2) can only be filed in utility or plant applications filed on or after June 8, 1995 because the request for continued examination (RCE) practice does not apply to these types of applications filed before June 8, 1995 and design applications. See MPEP § 706.07(h), subsections I and IX. Such a petition under 37 CFR 1.313(c)(2) along with the petition fee set forth in 37 CFR 1.17(h) must include a request for continued examination in compliance with 37 CFR 1.114 (e.g., a submission and the fee set forth in 37 CFR 1.17(e)). The continued prosecution application (CPA) practice under 37 CFR 1.53(d) only applies to design applications. See
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MPEP § 201.06(d). To withdraw from issue a utility or plant application, an applicant may wish to file a petition under 37 CFR 1.313(c)(2) with a RCE or under 37 CFR 1.313(c)(3) for the express abandonment of the application in favor of a continuing application under 37 CFR 1.53(b).
Any petition filed under 37 CFR 1.313(c) to withdraw an application from issue after payment of the issue fee should be clearly marked “Petition under 37 CFR 1.313(c).” Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be:
(A) mailed to “Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450”;
(B) transmitted by facsimile to (571) 273-0025;
(C) hand-carried to the Office of Petitions (see MPEP § 1730 for the location); or
(D) filed via EFS-Web as an ePetition.
Applicants are strongly advised to use EFS-Web, transmit by facsimile or hand-carry the petition to the Office of Petitions to allow sufficient time to process the petition and if the petition can be granted, withdraw the application from issue. While a petition to withdraw an application from issue may be granted as late as one day prior to the patent issue date, to avoid publication and dissemination, the petition decision must be granted at least 3 weeks prior to the issue date.
The Office cannot ensure that any petition under 37 CFR 1.313(c) will be acted upon prior to the date of patent grant. See Filing of Continuing Applications, Amendments, or Petitions after Payment of Issue Fee, Notice, 1221 Off. Gaz. Pat. Office 14 (April 6, 1999). Since a RCE (unlike a CPA under 37 CFR 1.53(d)) is not any type of new application filing, the Office cannot grant a petition to convert an untimely RCE to a continuing application under 37 CFR 1.53(b). Therefore, applicants are strongly cautioned to file any desired RCE prior to payment of issue fee. In addition, applicants considering filing a RCE after payment of the issue fee are strongly cautioned to call the Office of Petitions to determine whether sufficient time remains before the patent issue date to consider (and grant) a petition under
37 CFR 1.313(c) and what steps are needed to ensure that a grantable petition under 37 CFR 1.313(c) is before an appropriate official in the Office of Petitions in sufficient time to grant the petition before the patent is issued.
Once a petition under 37 CFR 1.313(c)(1) or (c)(2) has been granted, the application will be withdrawn from issue, the applicant’s submission(s) will be entered, and the application forwarded to the examiner for consideration of the submission and further action. If an application has been withdrawn from issue after the payment of the issue fee and the application is again found allowable, see MPEP § 1306 regarding request to reapply a previously paid issue fee toward the issue fee that is now due in the same application.
II. WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE
The Director may withdraw an application from issue under 37 CFR 1.313 on his or her own initiative. See BlackLight Power Inc. v. Rogan, 295 F.3d 1269, 1273, 63 USPQ2d 1534, 1537 (Fed. Cir. 2002) (USPTO may withdraw a patent application from issuance after the issue fee has been paid.) and Harley v. Lehman, 981 F. Supp. 9, 12, 44 USPQ2d 1699, 1702 (D.D.C. 1997) (adoption of 37 CFR 1.313(b) permitting applications to be withdrawn from issue under certain narrow circumstances not directly covered by the statute was not unreasonable). 35 U.S.C. 151 provides that upon payment of the issue fee, “the patent shall issue.” Thus, an application cannot be withdrawn from issue after payment of the issue fee consistent with 35 U.S.C. 151 unless there has been a determination that at least one of the conditions specified at 37 CFR 1.313(b)(1) through (4) exist such that the applicant is no longer “entitled to a patent under the law” as provided in 35 U.S.C. 151. See BlackLight Power Inc. v. Rogan, 295 F.3d at 1273, 63 USPQ2d at 1537 (Fed. Cir. 2002) (USPTO is not required to make final determination of unpatentability before withdrawing an application from issue pursuant to 37 CFR 1.313(b)(3), which permits the Office to withdraw an application after payment of the issue fee on ground of “unpatentability of one or more claims.”); Harley v. Lehman, 981 F. Supp. at 11-12, 44 USPQ2d at 1701-02 (D.D.C. 1997)
Rev. 07.2015, October 20151300-27
§ 1308ALLOWANCE AND ISSUE
(Commissioner may adopt rules permitting applications to be withdrawn from issue after payment of the issue fee in situations in which the applicant is not entitled to a patent under the law); and see Sampson v. Dann, 466 F. Supp. 965, 973-74, 201 USPQ 15, 22 (D.D.C. 1978)(Commissioner not authorized to withdraw an application from issue after payment of the issue fee on an ad hoc basis, but only in situations which meet the conditions of 37 CFR 1.313(b)).
The authority to withdraw an application from issue at the initiative of the USPTO after payment of the issue fee under 37 CFR 1.313(b) has been delegated to TC Directors (see MPEP § 1002.02(c)). The Office of Petitions has also been delegated the authority to withdraw an application from issue after payment of the issue fee in those situations in which the request for withdrawal from issue is at the initiative of the USPTO by someone other than a TC Director (see MPEP § 1002.02(b)).
35 U.S.C. 151 and 37 CFR 1.313(b) do not authorize the USPTO to withdraw an application from issue after payment of the issue fee for any reason except:
(1) a mistake on the part of the Office:
(2) a violation of 37 CFR 1.56 or illegality in the application;
(3) unpatentability of one or more claims; or
(4) for interference or derivation.
See 37 CFR 1.313(b).
Examples of reasons that do not warrant withdrawing an application from issue after payment of the issue fee at the initiative of the Office are:
(A) to permit the examiner to consider an information disclosure statement;
(B) to permit the examiner to consider whether one or more claims are unpatentable; or
(C) to permit the applicant to file a continuing application (including a CPA).
An application may be removed from the Office of Data Management, without it being withdrawn from issue under 37 CFR 1.313(b), to permit the examiner to consider an information disclosure statement or
whether one or more claims are unpatentable, see MPEP § 1309.02. Only if such consideration results in a determination that one or more claims are unpatentable does 37 CFR 1.313(b) authorize the application to be withdrawn from issue. If uncertainty exists as to whether prosecution will in fact be re-opened, the uncertainty must be resolved before the application is withdrawn from issue. If there is a question whether an application must be withdrawn from issue and no TC Director is available to decide whether withdrawal from issue is appropriate and to sign the withdrawal Notice, the application should be sent to the Office of Petitions for decision on whether withdrawal from issue is appropriate and to effect the withdrawal.
Any notice withdrawing an application from issue after payment of the issue fee must specify which of the conditions set forth in 37 CFR 1.313(b)(1) through (4) exists and thus warrants withdrawal of the application from issue. Any petition under 37 CFR 1.181 to review the decision of a TC Director to withdraw an application from issue after payment of the issue fee will be decided by the Deputy Commissioner for Patent Examination Policy.
If an application has been withdrawn from issue after the payment of the issue fee and the application is again found allowable, see MPEP § 1306 regarding request to reapply a previously paid issue fee toward the issue fee that is now due in the same application.
Procedure to be followed when an application is withdrawn from issue
The procedure set forth below is to be followed when a TC Director withdraws an application from issue. This processing is to be done in the Technology Center without the need to send the application to the Office of Data Management.
First, determine (via PALM) whether the issue fee has been paid, and whether the application has been assigned a patent number and issue date.
A. Withdrawal From Issue Before Payment of Issue Fee
If the issue fee has not been paid and the deadline for payment has not expired:
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(A) Prepare and mail a “Withdrawal from Issue” letter signed by the TC Director to the applicant to effectuate the withdrawal from issue, using form paragraph 10.01. This action will change the status of the application to status code 066 (Previous Action Withdrawn - Awaiting Further Action) and enter the Withdrawal from Issue letter in the application file and make it of record on the application file contents and forward the application to the examiner for prompt appropriate action ( e.g., reopen prosecution, initiate interference proceedings). ¶ 10.01 Withdrawal From Issue, Fee Not Paid
In re Application of [1]: Appl. No.: [2]:: WITHDRAWAL FROM ISSUE Filed: [3]: 37 CFR 1.313 For: [4]:
The purpose of this communication is to inform you that the above identified application is being withdrawn from issue pursuant to 37 CFR 1.313.
The application is being withdrawn to permit reopening of prosecution. The reasons therefor will be communicated to you by the examiner.
U.S. Patent and Trademark Office records reveal that the issue fee and the publication fee have not been paid. If the issue fee and the publication fee have been submitted, the applicant may request a refund, or may request that the fee be credited to a deposit account. However, applicant may wait until the application is either again found allowable or held abandoned. If the application is allowed, upon receipt of a new Notice of Allowance and Fee(s) Due, applicant may request that the previously submitted issue fee and publication fee be applied toward payment of the issue fee and publication fee in the amount identified on the new Notice of Allowance and Fee(s) Due. If the application is abandoned, applicant may request either a refund or a credit to a specified Deposit Account.
The application is being forwarded to the examiner for action.
______________________
[5]
Director,
Technology Center [6]
[7]
Examiner Note:
1. This letter is printed with the USPTO letterhead and must be signed by the TC Director.
2. DO NOT use this form letter if the issue fee and publication fee have been paid.
3. In bracket 7, insert the correspondence address of record.
B. Withdrawal From Issue After Payment of Issue Fee
If the issue fee has been paid:
(A) Prepare a “Notice of Withdrawal From Issue under 37 CFR 1.313(b)” indicating that the application has been withdrawn from issue.
(B) If the application has been assigned a patent number and issue date:
(1) E-mail the memorandum to the Director of the Office of Data Management and the persons copied on the memorandum to inform them that the application has been withdrawn from issue.
(2) The “Notice of Withdrawal From Issue under 37 CFR 1.313(b)” letter to applicant must be signed, date stamped, and mailed no later than the Monday before the issue date to be effective to withdraw the application from issue.
(3) The Office of Data Management updates the PALM status to remove the patent issue data and place the application in status 95.
(C) Mail and enter the “Notice of Withdrawal From Issue under 37 CFR 1.313(b)” and the “Withdrawal from Issue of” memorandum, if applicable, in the application file and make it of record on the application file contents, which will update the PALM status code to change the status of the application to status code 066 (Previous Action Withdrawn - Awaiting Further Action) by using PALM transaction code 1040.
(D) Forward the application to the examiner for prompt appropriate action ( e.g., reopen prosecution, initiate interference proceedings).
III. HANDLING OF APPLICATIONS THAT CONTAIN AN EXAMINER'S AMENDMENT
When an application is withdrawn from issue, either at the initiative of the applicant or by the Office, and the application contains an examiner’s amendment, the claims as amended by the examiner’s amendment are the claims subject to further examination.
1308.01 Rejection After Allowance [R-07.2015]
A claim noted as allowable shall thereafter be rejected only with the approval of the primary
Rev. 07.2015, October 20151300-29
§ 1308.01ALLOWANCE AND ISSUE
examiner. Great care should be exercised in authorizing such rejection. See MPEP § 706.04.
When a new rejection is discovered, which obviously is applicable to one or more of the allowed claims in an application in issue, a memorandum is addressed to the Technology Center (TC) Director, requesting that the application be withdrawn from issue for the purpose of applying the new grounds of rejection. This memorandum should cite the rationale for the new rejection, including any new reference(s), and, if need be, briefly state its application. If the examiner’s proposed action is not approved, the memorandum requesting withdrawal from issue should not be placed in the file.
If the request to withdraw from issue is approved, the TC Director should withdraw the application from issue as explained in MPEP § 1308. After the TC Director has withdrawn the application from issue, the examiner will prepare an Office action stating that the application has been withdrawn from issue, citing any new reference(s), and rejecting the claims based upon the approved new grounds of rejection.
If the issue fee has already been paid and prosecution is reopened, the applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied (the Notice of Allowance will reflect an issue fee amount that is due and the issue fee that was previously paid). See MPEP § 1306 regarding request to reapply a previously paid issue fee toward the issue fee that is now due in the same application. If abandoned, applicant may request refund or credit to a deposit account.
1308.02 For Interference or Derivation Purposes [R-07.2015]
It may be necessary to withdraw a case from issue for reasons connected with an interference or
derivation. For the procedure to be followed, see MPEP Chapter 2300.
1308.03 Quality Review Program for Examined Patent Applications [R-07.2015]
The Office of Patent Quality Assurance administers a program for reviewing the quality of the examination of patent applications. The general purpose of the program is to improve patent quality and increase the likelihood of patents being found to be valid.
The quality review is conducted by Review Quality Assurance Specialists on a randomly selected sample of allowed applications from each examiner. The sample is computer generated under the office-wide computer system (PALM), which selects a predetermined number of allowed applications from each examiner per year for review . A subsample of the selected allowed applications are both reviewed and independently searched by the reviewers. The only applications excluded from the sample are those in which there has been a decision by the Patent Trial and Appeal Board, or by a court.
The Review Quality Assurance Specialist independently reviews each sampled application assigned to his or her docket to determine whether any claims may be unpatentable. The Review Quality Assurance Specialist may consult with, discuss, or review an application with any other reviewer or professional in the examining corps, except the professional who acted on the application. The review will, with or without additional search, provide the examining corps personnel with information which will assist in improving the quality of issued applications. The program shall be used as an educational tool to aid in identifying problem areas in the examining Technology Centers (TCs).
Reviewed applications may be returned to the examining TCs for consideration of the reviewer’s question(s) as to adequacy of the search and/or patentability of a claim(s).
If, during the quality review process, it is determined that one or more claims of a reviewed application are unpatentable, the prosecution of the application
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1308.02
will be reopened. The Office action should contain, as an opening, form paragraph 13.04.
¶ 13.04 Reopen Prosecution - After Notice of Allowance
Prosecution on the merits of this application is reopened on claim [1] considered unpatentable for the reasons indicated below:
[2]
Examiner Note:
1. This paragraph should be used when a rejection is made on any previously allowed claim(s) which for one reason or another is considered unpatentable after the Notice of Allowance (PTOL-85) has been mailed.
2. Make appropriate rejection(s) as in any other action.
3. In bracket 1, identify claim(s) that are considered unpatentable.
4. In bracket 2, state all appropriate rejections for each claim considered unpatentable.
If the issue fee has already been paid in the application, the application must be withdrawn from issue by the Office of Data Management, and the action should contain not only the above quoted paragraph, but also form paragraph 13.05.
¶ 13.05 Reopen Prosecution - Vacate Notice of Allowance
Applicant is advised that the Notice of Allowance mailed [1] is vacated. If the issue fee has already been paid, applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied. If abandoned, applicant may request refund or credit to a specified Deposit Account.
Examiner Note:
1. This form paragraph must be used when the prosecution is reopened after the mailing of the Notice of Allowance.
2. In bracket 1, insert date of the Notice of Allowance.
Quality Assurance forms and papers are not to be included with Office actions, nor should such forms or papers be retained in the file of any reviewed application whether or not prosecution is to be reopened. The application record should not indicate that a review has been conducted by Quality Assurance.
Whenever an application has been returned to the TC under the Quality Assurance Program, the TC should promptly decide what action is to be taken in the application and inform the Office of Patent Quality Assurance of the nature of that action by use of the appropriate form. If prosecution is to be reopened or other corrective action taken, only the forms should be returned to the Office of Patent Quality Assurance initially, with the application being returned to the Office of Patent Quality Assurance when action is completed. In all other instances, both the application and the forms should be returned to the Office of Patent Quality Assurance.
1309 Issue of Patent [R-07.2015]
Under the current publication process, electronic capture of most of the information to be printed in a patent will begin as soon as an electronic message concerning the allowed application is received in the Office of Data Management, immediately after the Notice of Allowance has been mailed. The application is then electronically exported to Initial Data Capture (IDC) for electronic capture of the patent filed. This process takes approximately 6 weeks. Upon IDC completion, an electronic message is then sent to the File Maintenance Facility to ensure that all post allowance correspondence, fees and drawings have been updated. The application may stay in FMF for 1-2 weeks or until all post-allowance requirements are met.
When the issue fee is paid and all other requirements have been met (e.g., drawings) for issuance as a patent, the application is then electronically exported to the Final Data Capture (FDC) stage. The FDC makes any updates necessary to the electronic file and places the allowed patent application in an issue. The average time that an allowed application is in the FDC process is 5 weeks (2 weeks of processing time for assignment of issue date). The "Issue Notification" is mailed approximately 3 weeks prior to the issue date of the patent.
A bond paper copy of the patent grant is ribboned, sealed, and mailed by the Office of Data Management.
Rev. 07.2015, October 20151300-31
§ 1309ALLOWANCE AND ISSUE
All allowed applications ready for printing will be selected by chronological sequence based on the date the issue fee was paid. Special handling will be given to the following applications in these categories:
(A) Allowed cases which were made special by the Director.
(B) Allowed cases that have a U.S. effective filing date more than 5 years old.
(C) Allowed reissue applications.
(D) Allowed applications having an effective filing date earlier than that required for declaring an interference with a copending application claiming the same subject matter.
(E) Allowed application of a party involved in a terminated interference.
35 U.S.C. 2 Powers and duties.
*****
(b) SPECIFIC POWERS.— The Office—
(1) shall adopt and use a seal of the Office, which shall be judicially noticed and with which letters patent, certificates of trademark registrations, and papers issued by the Office shall be authenticated;
*****
35 U.S.C. 153 How issued.
Patents shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon and shall be recorded in the Patent and Trademark Office.
I. PRINTING NAMES OF PRACTITIONERS AND FIRM ON PATENTS
The Fee(s) Transmittal form (PTOL-85B) provides a space (item 2) for the person submitting the base issue fee to indicate, for printing, (1) the names of up to three registered patent attorneys or agents or, alternatively, (2) the name of a single firm, which has as a member at least one registered patent attorney or agent, and the names of up to two registered patent attorneys or agents. If the person submitting the issue fee desires that no name of practitioner or firm be printed on the patent, the space on the Fee(s) Transmittal form should be left
blank. If no name is listed on the form, no name will be printed on the patent.
II. ASSIGNMENT PRINTED ON PATENT
The Fee(s) Transmittal form (PTOL -85B) provides a space (item 3) for assignment data which should be completed in order to comply with 37 CFR 3.81. Unless an assignee’s name and address are identified in item 3 of the Fee(s) Transmittal form PTOL-85B, the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied. See MPEP § 307. Recording of the assignment, or submission of the assignment for recordation as set forth in 37 CFR 3.11 is required for a Patent to issue to an assignee. See 37 CFR 3.81(a).
III. ASSIGNEE NAMES
Only the first appearing name of an assignee will be printed on the patent where multiple names for the same party are identified on the Fee(s) Transmittal
form, PTOL-85B. Such multiple names may occur when both a legal name and an “also known as” or “doing business as” name is also included. This printing practice will not, however, affect the practice of recording assignments with the Office in theAssignment Division. The assignee entry on form PTOL-85B should still be completed to indicate the assignment data as recorded in the Office. For example, the assignment filed in the Office and therefore the PTOL-85B assignee entry might read “Smith Company doing business as (d.b.a.) Jones Company.” The assignee entry on the printed patent will read “Smith Company.”
1309.01 [Reserved]
1309.02 “Printer Rush” Cases [R-07.2015]
When the printer finds an apparent error in an application or other issue which prevents publication, the file is returned to the examiner, a "Printer Rush" form is included in the Image File Wrapper (IFW) and is indicated with a "RUSH" document code, noting the supposed error or issue. Additional issues which may prevent publication until they are resolved include but are not limited to: amendments
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1309.01
under 37 CFR 1.312, a Request for Correction of Inventorship under 37 CFR 1.48 and Information Disclosure Statements which have not been initialed by the examiner.
These applications are placed on the examiner's "expedited" tab in eDan and should be taken up for immediate action. The examiner annotates the "RUSH" document in Adobe to indicate the course of action taken to correct the error or an indication as to why the application is considered to be correct as it stands. If correction requires the mailing of an Office Action, such as an examiner's amendment or Supplemental Notice of Allowance, the annotated "RUSH" document is included in the eRedFolder (ERF) of the Office Action. If correction does not require mailing of an Office Action, the examiner creates an action entitled "Printer Rush - No mailing" and imports the "RUSH" document along with any other required forms into the action. The annotated "RUSH" form is scanned into the IFW and will not be mailed to the applicant in either circumstance.
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§ 1309.02ALLOWANCE AND ISSUE
Chapter 1400 Correction of Patents
Introduction1400.01 Reissue1401 Grounds for Filing1402 Diligence in Filing1403 Submission of Papers Where Reissue Patent Is in Litigation
1404
Reissue and Patent Term1405 Citation and Consideration of References Cited in Original Patent
1406
[Reserved]1407 -1409
Content of Reissue Application1410 ReissueApplicant and Inventor's Oath or Declaration
1410.01
Assignee Consent to the Reissue1410.02 Form of Specification1411
Certificate of Correction or Disclaimer in Original Patent
1411.01
New Matter1411.02 Content of Claims1412
Reissue Claims Must Be for Same General Invention
1412.01
Recapture of Canceled Subject Matter1412.02 Broadening Reissue Claims1412.03 Correction of Inventorship By Reissue1412.04 Correction of Inventorship in a Broadening Reissue Application
1412.05
Drawings1413 Content of Reissue Oath/Declaration1414
Reissue Oath or Declaration in Reissue Application Filed On or After September 16, 2012
1414.01
Reissue Oath or Declaration in Reissue Application Filed Before September 16, 2012
1414.02
Supplemental Reissue Oath/Declaration
1414.03
Reissue Application and Issue Fees1415 Maintenance Fees on the Original Patent
1415.01
No Physical Surrender of Original Patent
1416
Claim for Priority Under 35 U.S.C. 119(a)-(d)
1417
Notification of Prior/Concurrent Proceedings and Decisions Thereon,
1418
and of Information Known To Be Material to Patentability [Reserved]1419
-1429
Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette
1430
[Reserved]1431 -1439
Examination of Reissue Application1440 Two-Month Delay Period1441
Protest and Preissuance Submission in Reissue Applications
1441.01
Special Status1442 Litigation-Related Reissues1442.01 Concurrent Litigation1442.02 Litigation Stayed1442.03 Litigation Involving Patent1442.04 Court Ordered Filing of Reissue Application
1442.05
Initial Examiner Review1443 Review of Reissue Oath/Declaration1444 ReissueApplication Examined in Same Manner as Original Application
1445
[Reserved]1446 -1447
Fraud, Inequitable Conduct, or Duty of Disclosure Issues
1448
Protest Filed in Reissue Where Patent Is in Interference or Contested Case
1449
Concurrent Office Proceedings1449.01 Interference in Reissue1449.02 Reissue Application in Derivation Proceeding
1449.03
Restriction and Election of Species Made in Reissue Application
1450
Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending
1451
Request for Continued Examination of Reissue Application
1452
Amendments to Reissue Applications1453 Appeal Brief1454 Allowance and Issue1455 Reissue Review1456 Design Reissue Applications and Patents
1457
[Reserved]1458 -1459
Effect of Reissue1460 [Reserved]1461
-1469 Public Access of Reissue Applications1470 [Reserved]1471
-1479
Rev. 07.2015, October 20151400-1
Certificates of Correction — Office Mistake
1480
Expedited Issuance of Certificates of Correction - Error Attributable to Office
1480.01
Certificates of Correction - Applicant’s Mistake
1481
Correction of Assignees’ Names1481.01 Correction of Named Inventor1481.02 Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits
1481.03
[Reserved]1482 -1484
Handling of Request for Certificates of Correction
1485
[Reserved]1486 -1489
Disclaimers1490
[Editor Note, October 2015: This chapter was not substantively revised in the Ninth Edition, Revision 07.2015 of the MPEP. However, as a result of the publication process, the form paragraphs reproduced herein have been updated and may include substantive changes. A future revision will revise sections of this chapter as necessary for consistency with the form paragraph changes. In addition, in MPEP § 1401, inadvertently omitted form paragraph 14.01 has been inserted, in MPEP §§ 1414.02, 1481.02, subsection II, and 1481.03, subsection II.C, added missing title text to prior versions of 37 CFR 1.175, 1.324, and 1.78, respectively, and in MPEP § 1490 deleted form paragraph 14.29.01. Previous editions and revisions of the MPEP are available on the MPEP Archives page (www.uspto.gov/web/offices/pac/mpep/old/ index.htm).]
1400.01 Introduction [R-11.2013]
A patent may be corrected or amended in seven ways, namely by:
(1) reissue,
(2) the issuance of a certificate of correction which becomes a part of the patent,
(3) disclaimer,
(4) reexamination,
(5) inter partes review,
(6) post grant review, and
(7) covered business method review.
The first three ways are discussed in this chapter. The fourth way (reexamination) is discussed in MPEP Chapter 2200 for ex parte reexamination: see MPEP Chapter 2600 for inter partes reexamination requests (as of September 16, 2012 no new requests may be filed). The fifth, sixth, and seventh ways (inter partes review, post grant review, and covered business method review) are discussed in the Office Patent Trial Practice Guide available at http://www. uspto.gov/ip/boards/ bpai/board_trial_rules_and_practice_guide. jsp.
1401 Reissue [R-11.2013]
35 U.S.C. 251 Reissue of defective patents
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
35 U.S.C. 251 (pre-AIA) Reissue of defective patents.
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1400.01
unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.
No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
In this chapter, for reissue applications filed before September 16, 2012, all references to pre-AIA 35 U.S.C. 251 and 253 and pre-AIA 37 CFR 1.172, 1.175, 1.321, and 3.73 are to the law and rules in effect on September 15, 2012.
35 U.S.C. 251 and pre-AIA 35 U.S.C. 251 permit the reissue of a patent to correct an error in the patent and provide criteria for the reissue. Pre-AIA 35 U.S.C. 251 requires that any error to be corrected must have been made “without deceptive intention.” Effective September 16, 2012, Public Law 112-29, sec. 20, 125 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended 35 U.S.C. 251 to eliminate the “without deceptive intention” clause. This law as amended applies to reissue applications filed on or after September 16, 2012. 37 CFR 1.171 through 1.178 are rules directed to reissue.
An Office action in a reissue application must include form paragraph 14.01.
¶ 14.01 Reissue Application, Applicable Laws and Rules Heading
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Examiner Note:
This paragraph must be used as a heading in all Office actions in reissue applications.
1402 Grounds for Filing [R-11.2013]
A reissue application is filed to correct an error in the patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. An error in the patent arises out of an error in conduct which was made in the preparation and/or prosecution of the application which became the patent.
There must be at least one error in the patent to provide grounds for reissue of the patent. If there is no error in the patent, the patent will not be reissued. The present section provides a discussion of what may be considered an error in the patent upon which to base a reissue application.
In accordance with 35 U.S.C. 251, the error upon which a reissue is based must be one which causes the patent to be “deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.” Thus, an error under 35 U.S.C. 251 has not been presented where the correction to the patent is one of spelling, or grammar, or a typographical, editorial or clerical error which does not cause the patent to be deemed wholly or partly inoperative or invalid for the reasons specified in 35 U.S.C. 251. These corrections to a patent do not provide a basis for reissue (although these corrections may also be included in a reissue application, where a 35 U.S.C. 251 error is already present), and may be made via a certificate of correction; see MPEP § 1481.
The most common bases for filing a reissue application are:
(A) the claims are too narrow or too broad;
(B) the disclosure contains inaccuracies;
(C) applicant failed to or incorrectly claimed foreign priority; and
(D) applicant failed to make reference to or incorrectly made reference to prior copending applications.
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I. ERROR BASED ON SCOPE OF CLAIMS
The reissue error may be directed solely to the failure to previously present narrower claims, which are being added by reissue. In re Tanaka, 640 F.3d 1246, 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011) provides that “the omission of a narrower claim from a patent can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law.” This permits submission of additional claims that are narrower in scope than the preexisting patent claims, without any narrowing of the preexisting patent claims. For example, a reissue applicant can retain the broad independent claims of the patent while adding only new dependent claims.
A reissue applicant’s failure to timely file a divisional application covering the non-elected invention(s) following a restriction requirement is not considered to be error causing a patent granted on elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Thus, such applicant’s error is not correctable by reissue of the original patent under 35 U.S.C. 251. See MPEP § 1412.01.
An attorney’s failure to appreciate the full scope of the invention was held to be an error correctable through reissue in the decision of In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). In Medrad, Inc. v. Tyco Healthcare Group LP, 466
F.3d 1047, 80 USPQ2d 1526 (Fed. Cir. 2006), the court rejected an argument that a 35 U.S.C. 251 error was limited to defects in the specification, drawings, and claims. Instead, the court explained that the correctable error could be “any error that causes a patentee to claim more or less than he had a right to claim.” 466 F.3d at 1052, 80 USPQ2d at 1529. In Medrad, the specific error was the failure to submit a supplemental reissue declaration during prosecution of a prior reissue patent.
II. INVENTORSHIP ERROR
The correction of misjoinder of inventors in divisional reissues has been held to be a ground for reissue. See Ex parte Scudder, 169 USPQ 814 (Bd. App. 1971). The Board of Appeals held in Ex parte Scudder, 169 USPQ at 815, that 35 U.S.C. 251
authorizes reissue applications to correct misjoinder of inventors where 35 U.S.C. 256 is inadequate.
If the only change being made in the patent is correction of the inventorship, this can be accomplished by filing a request for a certificate of correction under the provisions of 35 U.S.C. 256 and 37 CFR 1.324. See MPEP § 1412.04 and § 1481. A Certificate of Correction will be issued if all parties are in agreement and the inventorship issue is not contested. However, if applicant chooses to file a reissue application to correct the inventorship (as opposed to choosing the Certificate of Correction route), applicant may do so because misjoinder of inventors is an error that is correctable by reissue under 35 U.S.C. 251.
III. ERROR RELATED TO PRIORITY TO FOREIGN APPLICATION
A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the patent was granted.
In Brenner , the claim for priority had been made in the prosecution of the original patent, and it was only necessary to submit a certified copy of the priority document in the reissue application to perfect priority. Reissue is also available to convert the “error” in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the patent was granted. See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975) (“a patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application”). In a situation where it is necessary to submit for the first time both the claim for priority and the certified copy of the priority document in the reissue application, and the patent to be reissued resulted from a utility or plant application which became the patent to be reissued was filed on or after November 29, 2000, the reissue applicant must (where it is necessary to submit for the first time the claim for priority) also file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(c) (for applications filed
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on or after November 29, 2000 and before March 16, 2013) or under 37 CFR 1.55(e) (for applications filed on or after March 16, 2013) in addition to filing a reissue application. See MPEP § 214 et. seq.
IV. ERROR IN BENEFIT CLAIM TO DOMESTIC APPLICATION
The courts have not addressed the question of correction of the failure to adequately claim benefit under 35 U.S.C. 119(e) in the application (which became the patent to be reissued) via reissue. If the application which became the patent to be reissued was filed before November 29, 2000, correction as to benefit under 35 U.S.C. 119(e) would be permitted in a manner somewhat analogous to that of the priority correction discussed above. Where the application, which became the patent to be reissued, was filed on or after November 29, 2000, reissue may be employed to correct an applicant’s mistake by adding or correcting a benefit claim under 35 U.S.C. 119(e). A petition under 37 CFR 1.78(a)(6) for an unintentionally delayed claim under 35 U.S.C. 119(e) would not be required in addition to filing a reissue application.
35 U.S.C. 119(e)(1) to states in part that:
No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section during the pendency of the application . (Emphasis added.)
As discussed in subsection III above, the court in Fontijn held that 35 U.S.C. 251 was sufficiently
broad to correct a patent where the applicant failed to assert or failed to perfect a claim for foreign priority during the prosecution of the original
application even though 35 U.S.C. 119(b) at that time required a claim and a certified copy of the foreign application to be filed before the patent is granted. Similarly, the Office may grant a reissue for adding or correcting a benefit claim under 35 U.S.C. 119(e) that requires the benefit claim to a provisional application be submitted during the pendency of the application.
Correction of failure to adequately claim benefit under 35 U.S.C. 120 in an earlier filed copending U.S. patent application was held a proper ground for reissue. Sampson v. Comm’r Pat., 195 USPQ 136, 137 (D.D.C. 1976). If the utility or plant application which became the patent to be reissued was filed on or after November 29, 2000, the reissue applicant must file a petition for an unintentionally delayed priority claim under pre-AIA 37 CFR 1.78(a)(3) (for applications filed on or after November 29, 2000 and before March 16, 2013) or under 37 CFR 1.78(d) (for applications filed on or after March 16, 2013) in addition to filing a reissue application. See MPEP § 211.04 For treatment of an error involving disclaimer of a benefit claim under 35 U.S.C. 120, see MPEP § 1405.
If the utility or plant application which became the patent to be reissued was filed before November 29, 2000 and therefore, not subject to eighteen-month publication, a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(a)(3) would not be required to add/correct the benefit claim in the reissue application. This is so, even if the reissue application was filed on or after November 29, 2000. On the other hand, if applicant fails to file an amendment to add a claim for benefit of a utility or plant reissue application filed on or after November 29, 2000 in a later-filed reissue application within the time period set forth in 37 CFR 1.78, then a petition for an unintentionally delayed benefit claim under pre-AIA 37 CFR 1.78(a)(3) (for applications filed on or after November 29, 2000 and before March 16, 2013) or under 37 CFR 1.78(d) (for applications filed on or after March 16, 2013) along with the surcharge set forth in 37 CFR 1.17(t) would be required. This is so even if the original application which became the original patent was filed before November 29, 2000. This is because the benefit claim is between the later-filed reissue application and the prior-filed reissue application and the benefit
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claim is not being added to make a correction as to a benefit of the original patent.
V. ERROR IN DRAWING
A reissue may be based on a drawing correction that is substantive in nature, because such a correction qualifies as correcting an “error” under 35 U.S.C. 251 that may properly be deemed to render the patent wholly or partly inoperative. A reissue application cannot be based on a non-substantive drawing change, such as a reference numeral correction or addition, the addition of shading, or even the addition of an additional figure merely to “clarify” the disclosure. Non-substantive drawing changes may, however, be included in a reissue application that corrects at least one substantive “error ” under 35 U.S.C. 251.
1403 Diligence in Filing [R-11.2013]
When a reissue application is filed within 2 years from the date of the original patent, a rejection on the grounds of lack of diligence or delay in filing the reissue should not normally be made. Ex parte Lafferty, 190 USPQ 202 (Bd. App. 1975); but see Rohm & Haas Co. v. Roberts Chemical Inc., 142
F. Supp. 499, 110 USPQ 93 (S.W. Va. 1956), rev’d on other grounds, 245 F.2d 693, 113 USPQ 423 (4th Cir. 1957).
35 U.S.C. 251 Reissue of defective patents
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
35 U.S.C. 251(d) corresponds to the provisions of pre-AIA 35 U.S.C. 251, fourth paragraph
Where any broadening reissue application is filed within two years from the date of the original patent, 35 U.S.C. 251 presumes diligence, and the examiner should not inquire why applicant failed to file the reissue application earlier within the two year period.
See MPEP § 1412.03 for broadening reissue practice. See also In re Graff, 111 F.3rd 874, 42 USPQ2d 1471 (Fed. Cir. 1997); In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985); In re
Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985).
A reissue application that is filed on the 2-year anniversary date of the patent grant is considered as being filed within 2 years. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) (a similar rule in interferences).
A reissue application can be granted a filing date without an oath or declaration, or without the basic filing fee, search fee, or examination fee being present. See 37 CFR 1.53(f). Applicant will be given a period of time to provide the missing parts and to pay the surcharge under 37 CFR 1.16(f). See MPEP § 1410.01.
1404 Submission of Papers Where Reissue Patent Is in Litigation [R-11.2013]
Marking of envelope: Applicants and protestors (see MPEP § 1901.03) submitting papers for entry in reissue applications of patents involved in litigation are requested to mark the outside envelope and the top right-hand portion of the papers with the words “REISSUE LITIGATION” and with the art unit or other area of the United States Patent and Trademark Office in which the reissue application is located, e.g., Commissioner for Patents, Patent Trial and Appeal Board, Office of Patent Legal Administration, Technology Center, Office of Data Management, etc.
Marking of papers: Any “Reissue Litigation” documents submitted to the Office should be clearly marked as such. Papers marked “REISSUE LITIGATION” will be given special attention and expedited handling. See MPEP § 1442.01 through § 1442.04 for examination of litigation-related reissue applications. Protestor’s participation, including the submission of papers, is limited in accordance with 37 CFR 1.291(c).
1405 Reissue and Patent Term [R-11.2013]
35 U.S.C. 251 prescribes the effect of reissue on the patent term by stating that “the Director shall… reissue the patent… for the unexpired term of the original patent.”
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The maximum term of the original patent is fixed at the time the patent is granted. While the term may be subsequently shortened, e.g., through the filing of a terminal disclaimer, it cannot be extended through the filing of a reissue. Accordingly, a deletion in a reissue application of an earlier-obtained benefit claim under 35 U.S.C. 120 will not operate to lengthen the term of the patent to be reissued.
When a reissue application has been filed in an attempt to delete an earlier-obtained benefit claim under 35 U.S.C. 120, it should be treated as follows:
(A) More than one “error” (as defined by 35 U.S.C. 251) is described in a reissue declaration, and one of the errors identified is the failure to delete a 35 U.S.C. 120 benefit claim in the original patent, or the erroneous making of a claim for 35 U.S.C. 120 benefit.If one of the errors identified is the presence of the claim for 35 U.S.C. 120 benefit in the patent, and patentee (1) states a belief that this error renders the original patent wholly or partly inoperative or invalid, and (2) is seeking to eliminate this error via the reissue proceeding, the Office will permit deletion of the benefit claim in the continuity data and will not object to or reject the reissue declaration on these grounds. For applications filed on or after September 16, 2012, applicant may do so by filing a corrected application data sheet in compliance with 37 CFR 1.76(c) deleting the reference to the prior-filed application. For applications filed prior to September 16, 2012, applicant may do so by amending the specification (if the benefit claim is in the specification) or by submitting a supplemental new application data sheet in compliance with pre-AIA 37 CFR 1.76(c)(no supplemental declaration is necessary) to delete any references to prior applications.Assuming the reissue declaration appropriately identifies or describes at least one other error being corrected, the reissue declaration would not be objected to for failure to comply with the requirements of 37 CFR 1.175.
Where the reissue declaration states that the patentee is making this correction in order to extend the term of the original patent, the examiner’s Office action will merely refer to the statement in the declaration and then point out with respect to such statement that 35 U.S.C. 251 only permits reissue “... for the unexpired part of the term of the original patent.”
(B) Only one “error” (as defined by 35 U.S.C. 251) is described in a reissue declaration, and that error is the failure to delete a 35 U.S.C. 120 benefit claim in the original patent, or the erroneous making of a claim for 35 U.S.C. 120 benefit.
(1) If the only error identified in the reissue declaration is stated to be the correction or adjustment of the patent term by deleting the 35 U.S.C. 120 benefit claim, a rejection under 35 U.S.C. 251 should be made, based on the lack of an appropriate error for reissue and failure to comply with 37 CFR 1.175.
(2) If the only error identified in the reissue declaration is the need to delete a 35 U.S.C. 120 benefit claim, which the patentee seeks to now delete in the reissue application, (and no reference is made as to increasing the term of the patent), the examiner should not make a rejection under 35 U.S.C. 251 based on lack of an appropriate error for reissue and failure to comply with 37 CFR 1.175. The examiner should examine the reissue application in accordance with 37 CFR 1.176 (MPEP § 1440). A statement should, however, be made in an Office action pointing out the lack of effect (of the change in the patent) on the patent term because 35 U.S.C. 251 only permits reissue “... for the unexpired part of the term of the original patent.”
1406 Citation and Consideration of References Cited in Original Patent [R-08.2012]
In a reissue application, the examiner should consider all references that have been cited during the original prosecution of the patent, and list on a PTO-892 form any reference again cited/applied in the reissue application. See MPEP § 1455. It is noted that a referencecited in the original patent may no longer be relevant, e.g., in view of a narrowing of the claim scope in the reissue application, and therefore may not need to be listed on the PTO-892 form.
Should applicants wish to ensure that all of the references which were cited in the original patent are considered and cited in the reissue application, an information disclosure statement (IDS) in compliance with 37 CFR 1.97 and 1.98 should be filed in the reissue application. See MPEP § 609. The requirement for a copy of each U.S. patent or
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U.S. patent application publication listed in an IDS has been eliminated, unless required by the Office. 37 CFR 1.98(a)(2) requires a legible copy of:
(A) each foreign patent;
(B) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
(C) for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion; and
(D) all other information or that portion which caused it to be listed.
See MPEP § 609.04(a). The Office imposes no responsibility on a reissue applicant to resubmit, in a reissue application, all the “References Cited” in the patent for which reissue is sought. Rather, applicant has a continuing duty under 37 CFR 1.56 to timely apprise the Office of any information which is material to the patentability of the claims under consideration in the reissue application. See MPEP §1418.
Where a copy of a reference other than a U.S. patent or U.S. patent application publication that was cited in the original patent is not available and cannot be obtained through any source other than the reissue applicant (who has not submitted the copy), the examiner will not consider that reference and therefore, will not list that reference on the PTO-892 form. If that reference was listed by the reissue applicant on a PTO/SB/08 form but a copy has not been provided, the examiner will line-through the reference to indicate that the reference has not been considered.
1407 -1409 [Reserved]
1410 Content of Reissue Application [R-11.2013]
37 CFR 1.171 Application for reissue.
An application for reissue must contain the same parts required for an application for an original patent, complying with all the rules relating thereto except as otherwise provided, and in addition, must comply with the requirements of the rules relating to reissue applications.
37 CFR 1.173 Reissue specification, drawings, and amendments.
(a) Contents of a reissue application. An application for reissue must contain the entire specification, including the claims, and the drawings of the patent. No new matter shall be introduced into the application. No reissue patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent, pursuant to 35 U.S.C. 251.
(1) Specification, including claims. The entire specification, including the claims, of the patent for which reissue is requested must be furnished in the form of a copy of the printed patent, in double column format, each page on only one side of a single sheet of paper. If an amendment of the reissue application is to be included, it must be made pursuant to paragraph (b) of this section. The formal requirements for papers making up the reissue application other than those set forth in this section are set out in § 1.52. Additionally, a copy of any disclaimer (§ 1.321), certificate of correction (§§ 1.322 through 1.324), or reexamination certificate (§ 1.570) issued in the patent must be included. (See also § 1.178).
(2) Drawings. Applicant must submit a clean copy of each drawing sheet of the printed patent at the time the reissue application is filed. If such copy complies with § 1.84, no further drawings will be required. Where a drawing of the reissue application is to include any changes relative to the patent being reissued, the changes to the drawing must be made in accordance with paragraph (b)(3) of this section. The Office will not transfer the drawings from the patent file to the reissue application.
*****
The specification (including the claims and any drawings) of the reissue application is the copy of the printed patent for which reissue is requested that is submitted by applicant as part of the initial application papers. The copy of the printed patent must be submitted in double column format, each page of double column format being on only one side of the piece of paper. It should be noted that a re-typed specification is not acceptable in a reissue application; the full copy of the printed patent must be used. In addition, an applicant for reissue is required to file a reissue oath or declaration which, in addition to complying with 37 CFR 1.63, must comply with 37 CFR 1.175. Where the patent has been assigned, the reissue applicant must also provide a consent of assignee to the reissue and evidence of ownership. Where the patent has not been assigned, the reissue applicant
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should affirmatively state that the patent is not assigned.
An amendment may be submitted at the time of filing of a reissue application. The amendment may be made either by:
(A) physically incorporating the changes within the specification by cutting the column of the printed patent and inserting the added material and rejoining the remainder of the column and then joining the resulting modified column to the other column of the printed patent. Markings pursuant to 37 CFR 1.173(d) must be used to show the changes. The columnar structure of the printed patent must be preserved, and the physically modified page must comply with 37 CFR 1.52(a)(1). As to compliance with 37 CFR 1.52(a)(1)(iv), the “written either by a typewriter or machine printer in permanent dark ink or its equivalent” requirement is deemed to be satisfied where a caret and line are drawn from a position within the text to a newly added phrase, clause, sentence, etc. typed legibly in the margin; or
(B) providing a separate amendment paper with the reissue application.
In either case, the amendment must be made pursuant to 37 CFR 1.173(b) and must comply with all the provisions of 37 CFR 1.173(b)– (e) and (g).
If the changes to be made to the patent are so extensive that reading and understanding the specification is extremely difficult and error-prone, a clean, typed copy of the specification may be submitted if accompanied by a grantable petition under 37 CFR 1.183 for waiver of 37 CFR 1.125(d) and 37 CFR 1.173(a)(1).
Pursuant to 37 CFR 1.173(a)(1), applicant is required to include a copy of any disclaimer (37 CFR 1.321), certificate of correction (37 CFR 1.322 – 1.324), or reexamination certificate (37 CFR 1.520) issued in the patent for which reissue is requested. It should also be noted that 37 CFR 1.178(b) requires reissue applicants to call to the attention of the Office any prior or concurrent proceedings in which the patent (for which reissue is requested) is or was involved, such as interferences, reissues, reexaminations, or litigation (litigation covers any papers filed in the court or issued by the court, such as, for example,
motions, pleadings, and court decisions including court orders) and the results of such proceedings. This duty is a continuing duty, and runs from the time the reissue application is filed until the reissue application is abandoned or issues as a reissue patent.
It is no longer required that the reissue applicant physically surrender the original patent, see MPEP § 1416.
Where appropriate, the reissue applicant may provide a claim for priority/benefit under 35 U.S.C. 119 or 120, and may also file an Information Disclosure Statement. For any reissue filed on or after September 16, 2012, the priority/benefit information must be in an application data sheet (ADS) under 37 CFR 1.76. An ADS is also required if an application under 35 U.S.C. 111(a) is made by a person other than the inventor under 37 CFR 1.46(a) or if the oath or declaration does not identify the entire inventive entity.
The initial contents of a reissue application are discussed in detail in MPEP § 1410.01 through § 1418.
For expedited processing, new and continuing reissue application filings under 37 CFR 1.53(b) may be addressed to: Mail Stop REISSUE, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. Mail Stop REISSUE should only be used for the initial filing of reissue applications, and should not be used for any subsequently filed correspondence in reissue applications. Effective July 9, 2007, the Office began accepting reissue applications and “follow-on” papers (i.e., subsequent correspondence in reissue applications) submitted via the Office’s Web-based electronic filing system (EFS-Web). See the “Legal Framework for EFS-Web” which may be accessed at: www. u s p t o . g o v / p a t e n t s / p r o c e s s / fi l e / e f s / guidance/New_legal_framework. jsp. When filing a reissue application electronically, an applicant should choose the “reissue” radio button. Regardless of the manner of filing, all new reissue filings should include a copy of a completed Reissue Patent Application Transmittal Form (PTO/AIA/50) to ensure that the filing of the new application will be recognized as a reissue application.
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The oath or declaration, any matters ancillary thereto (such as the consent of assignee), and the basic filing fee, search fee, and examination fee may be submitted after the filing date pursuant to 37 CFR 1.53(f).
The assignee entity is established by a statement on behalf of all the assignees under 37 CFR 1.172(a) and 37 CFR 3.73. See MPEP § 1410.01.
Form PTO/AIA/50, Reissue Patent Application Transmittal, which may be used for filing reissue applications, is reproduced below.
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1410.01 Reissue Applicant and Inventor's Oath or Declaration [R-11.2013]
I. REISSUE APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012
[Editor Note: See subsection II., below, for reissue applications filed before September 16, 2012.]
35 U.S.C. 251 Reissue of defective patents.
*****
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
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37 CFR 1.172 Reissue Applicant.
(a) The reissue applicant is the original patentee, or the current patent owner if there has been an assignment. A reissue application must be accompanied by the written consent of all assignees, if any, currently owning an undivided interest in the patent. All assignees consenting to the reissue must establish their ownership in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(c).
(b) A reissue will be granted to the original patentee, his legal representatives or assigns as the interest may appear.
37 CFR 1.175 Reissue oath or declaration.
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(c) The inventor, or each individual who is a joint inventor of a claimed invention, in a reissue application must execute an oath or declaration for the reissue application, except as provided for in § 1.64, and except that the inventor's oath or declaration for a reissue application may be signed by the assignee of the entire interest if:
(1) The application does not seek to enlarge the scope of the claims of the original patent; or
(2) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.
*****
For reissue applications filed on or after September 16, 2012, the reissue applicant is the original patentee, or the current patent owner, if there has been an assignment. However the inventor, or each individual inventor who is a joint inventor of a claimed invention, must execute an oath or
declaration for the reissue application, except as otherwise provided in 37 CFR 1.175(c). A reissue applicant may file a supplemental statement in lieu of the inventor’s oath or declaration as provided for in 37 CFR 1.64 (see MPEP § 604). In addition, the inventor’s oath or declaration may be signed by the assignee of the entire interest if (a) the reissue application does not seek to enlarge the scope of the claims of the original patent (37 CFR 1.175(c)(1)), or (b) the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest (37 CFR 1.175(c)(2)).
For continuation or divisional reissue applications, a copy of the inventor’s oath or declaration from the earlier-filed reissue application may be used, provided that: (1) the inventor, or each joint inventor of a claimed invention, in the reissue application executed an inventor’s oath or declaration for the earlier-filed reissue application, except as provided in 37 CFR 1.64; (2) the continuing reissue application does not seek to enlarge the scope of the claims of the original patent; or (3) the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest. Depending on the circumstances, either Form PTO/AIA/05, Reissue Application Declaration by the Inventor, or Form PTO/AIA/06, Reissue Application Declaration by the Assignee, may be used to prepare a declaration in a reissue application. These forms are reproduced in MPEP § 1414, which includes addition information pertaining to reissue oaths or declarations.
II. REISSUE APPLICATION FILED BEFORE SEPTEMBER 16, 2012
[Editor Note: See subsection I., above, for reissue applications filed on or after September 16, 2012.]
35 U.S.C. 251 (pre-AIA) Reissue of defective patents.
The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.
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Pre-AIA 37 CFR 1.172 Applicants, assignees.
(a) A reissue oath must be signed and sworn to or declaration made by the inventor or inventors except as
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otherwise provided (see §§ 1.42, 1.43, 1.47), and must be accompanied by the written consent of all assignees, if any, owning an undivided interest in the patent, but a reissue oath may be made and sworn to or declaration made by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent. All assignees consenting to the reissue must establish their ownership interest in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(b) of this chapter.
(b) A reissue will be granted to the original patentee, his legal representatives or assigns as the interest may appear.
For reissue applications filed before September 16, 2012, the reissue application must be made by the inventor or the person(s) applying for a patent in place of the inventor as provided in pre-AIA 37 CFR 1.42, 1.43, and 1.47 (see MPEP §§ 409.01(b) and 409.03 et seq.), except that the application for reissue may be made by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent. See pre-AIA 35 U.S.C. 251, third paragraph.
The reissue oath must be signed and sworn to by all the inventors, or declaration made by all the inventors, except as otherwise provided in pre-AIA 37 CFR 1.42, 1.43, and 1.47. Alternatively, pursuant to pre-AIA 37 CFR 1.172, where the reissue application does not seek to enlarge the scope of any of the claims of the original patent, the reissue oath may be made and sworn to, or declaration made, by the assignee of the entire interest. Depending on the circumstances, either Form PTO/SB/51, Reissue Application Declaration by the Inventor, or Form PTO/SB/52, Reissue Application Declaration by the Assignee, may be used to prepare a declaration in a reissue application. These forms are reproduced in MPEP § 1414, which includes additional information pertaining to reissue oaths or declarations.
If an inventor is to be added in a reissue application, a proper reissue oath or declaration including the signatures of all of the inventors is required, except where the assignee of the entire interest can properly sign the reissue oath or declaration. If one or more inventors are being deleted in a reissue application, an oath or declaration must be supplied over the signatures of the remaining inventors, except where the assignee of the entire interest can properly sign the reissue oath or declaration. Note that although an inventor being deleted in a reissue application need not sign the oath or declaration, if that inventor
to be deleted has any ownership interest in the patent (e.g., that inventor did not assign away his/her rights to the patent), the signature of that inventor must be supplied in aconsent to to the filing of the reissue application. See MPEP § 1410.02 as to consent of assignee and § 1412.04 as to correction of inventorship via reissue.
1410.02 Assignee Consent to the Reissue [R-11.2013]
I. WRITTEN CONSENT
A reissue application, whether filed before, on, or after September 16, 2012, must be accompanied by the written consent of all assignees, if any, currently owning an undivided interest in the patent. In addition, all assignees consenting to the reissue must establish their ownership in the patent by filing in the reissue application a submission in accordance with the provisions of 37 CFR 3.73.
Where no assignee exists, applicant should affirmatively state that fact. This can be done by simply checking the “NO” box of item 8 of Form PTO/AIA/50 (for applications filed on or after September 16, 2012) or item 7 of Form PTO/SB/50 (for applications filed before September 16, 2012), which form may be signed by the inventors, or by a registered practitioner). If the file record is silent as to the existence of an assignee, it will be presumed that an assignee does exist. This presumption should be set forth by the examiner in the first Office action alerting applicant to the requirement. It should be noted that the mere filing of a written assertion of small entity status (see MPEP § 509.03) or a certification of micro entity status (see MPEP § 509.04) in no way relieves applicant of the requirement to affirmatively state that no assignee exists.
Where a written assertion of small entity status, a certification of micro entity status, or other paper in file indicates that the application/patent is assigned, and there is no consent by the assignee named in the written assertion of small entity status or the certification of micro entity status, the examiner should make inquiry into the matter in an Office action, even if the record otherwise indicates that the application/patent is not assigned.
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The reissue oath or declaration must be accompanied by a written consent of all assignees. 35 U.S.C. 111(a) and 37 CFR 1.53(b) provide, however, for according an application a filing date if filed with a specification, including claim(s), and any required drawings. Thus, where an application is filed without an oath or declaration, or without the consent of all assignees, if the application otherwise complies with 37 CFR 1.53(b) and the reissue rules, the Office of Patent Application Processing (OPAP) will accord a filing date and send out a notice of missing parts setting a period of time for filing the missing part and for payment of any surcharge required under 37 CFR 1.53(f) and 37 CFR 1.16(f). If the reissue oath or declaration is filed but the assignee consent is lacking, the surcharge is required because, until the consent is filed, the reissue oath or declaration is defective, since it is not apparent that the signatures thereon are proper absent an indication that the assignees have consented to the filing.
The consent of assignee must be signed by a party authorized to act on behalf of the assignee. For a discussion of parties authorized to act on behalf of the assignee. See MPEP § 324 (for applications filed before September 16, 2012) and § 325 (for applications filed on or after September 16, 2012). The consent to the reissue application may use language such as:
The XYZ Corporation, assignee of U.S. Patent No. 9,999,999, consents to the filing of reissue application No. 99/999,999 (or the present application, if filed with the initial application papers) for the reissue of U.S. Patent No. 9,999,999. _______________ Jane Doe Vice President, XYZ Corporation
Where the written consent of all the assignees to the filing of the reissue application cannot be obtained, applicant may under appropriate circumstances petition to the Office of Petitions (MPEP § 1002.02(b)) for a waiver under 37 CFR 1.183 of the requirement of 37 CFR 1.172, to permit the acceptance of the filing of the reissue application. The petition fee under 37 CFR 1.17(f) must be included with the petition.
The reissue application can then be examined, but will not be allowed or issued without the consent of all the assignees as required by 37 CFR 1.172. See Baker Hughes Inc. v. Kirk, 921 F.Supp. 801, 809,
38 USPQ2d 1885, 1892 (D.D.C. 1995), N. B. Fassett, 1877 C.D. 32, 11 O.G. 420 (Comm’r Pat. 1877); James D. Wright, 1876 C.D. 217, 10 O.G. 587 (Comm’r Pat. 1876).
Where a continuation reissue application is filed with a copy of the assignee consent from the parent reissue application, and the parent reissue application is not to be abandoned, the copy of the consent should not be accepted. Other than the exception noted below, where a divisional reissue application is filed with a copy of the assignee consent from the parent reissue application, regardless of whether or not the parent reissue application is to be abandoned, the copy of the consent should not be accepted. The copy of the consent from the parent does not indicate that the assignee has consented to the addition of the new invention of the divisional reissue application to the original patent, or to the addition of the new error correction of the continuation reissue application. (Presumably, a new correction has been added via the continuation, because the parent is still pending.) As noted above, OPAP will accord a filing date and send out a notice of missing parts stating that there is no proper consent and setting a period of time for filing the missing part and for payment of any surcharge required under 37 CFR 1.53(f) and 37 CFR 1.16(f). If, however, a divisional reissue application is being filed in response to a restriction requirement made in the parent reissue application, the assignee need not file a consent to the divided out invention now being submitted in the divisional application because consent has already been provided in the parent reissue application. See MPEP § 1451, Subsection I.
Where a continuation reissue application is filed with a copy of the assignee consent from the parent reissue application, and the parent reissue application is, or will be abandoned, the copy of the consent should be accepted by the Office.
Form paragraph 14.15 may be used to indicate that the consent of the assignee is lacking.
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¶ 14.15 Consent of Assignee to Reissue Lacking
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
Examiner Note:
1. This form paragraph may be used in an Office action which rejects any of the claims on other grounds.
2. If a consent document/statement has been submitted but is insufficient (e.g., not by all the assignees) or is otherwise ineffective (e.g., a conditional consent, or a copy of the consent from the parent reissue application was filed in this continuation reissue application and the parent reissue application is not being abandoned), an explanation of such is to be included following this form paragraph.
3. If the case is otherwise ready for allowance, this form paragraph should be followed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 of form paragraph 7.51).
II. PROOF OF OWNERSHIP OF ASSIGNEE
The assignee that consents to the filing of the reissue application (as discussed above) must also establish that it is the assignee, i.e. , the owner, of the patent. See 37 CFR 1.172. Accordingly, a 37 CFR 3.73 paper establishing the ownership of the assignee should be submitted at the time of filing the reissue application, in order to support the consent of the assignee. The assignee must establish its ownership in accordance with 37 CFR 3.73 by:
(A) filing in the reissue application documentary evidence of a chain of title from the original owner to the assignee; or
(B) specifying in the record of the reissue application where such evidence is recorded in the Office (e.g., reel and frame number, etc.).
Compliance with 37 CFR 3.73 may be provided as part of the same paper in which the consent by assignee is provided.
In connection with option (A) above, the submission of the documentary evidence to establish ownership must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owners to the assignee was, or concurrently is, submitted for recordation pursuant
to 37 CFR 3.11. Thus, when filing a 37 CFR 3.73 statement to establish ownership, an applicant or patent owner must also submit the relied-upon assignment document(s) to the Office for recordation, unless such a submission has already been previously made. If the 37 CFR 3.73 statement is not accompanied by a statement affirming that the documentary evidence was, or concurrently is, submitted for recordation pursuant to 37 CFR 3.11, then the 37 CFR 3.73 statement will not be accepted, and the assignee(s) will not have established the right to take action in the patent application or the patent for which the 37 CFR 3.73 statement was submitted. This could result, for example, in an incomplete response, where a party stated to be the “assignee” signs a consent to the reissue to obviate a requirement for submission of assignee consent made in an Office action.
Upon initial receipt of a reissue application, the examiner should inspect the application to determine whether the submission under 37 CFR 1.172 and 37 CFR 3.73 establishing the ownership of the assignee is present and sufficient.
If an assignment document is attached with the 37 CFR 3.73 submission, the assignment should be reviewed to ensure that the named assignee is the same for the assignment document and the 37 CFR 3.73 statement, and that the assignment document is an assignment of the patent to be reissued to the assignee. If an assignment document is not attached with the 37 CFR 3.73 statement, but rather the reel and frame number where the assignment document is recorded in the USPTO is referenced in the 37 CFR 3.73 statement, it will be presumed that the assignment recorded in the USPTO supports the statement identifying the assignee. It will not be necessary for the examiner to obtain a copy of the recorded assignment document. If the submission under 37 CFR 1.172 and 37 CFR 3.73 is not present, form paragraph 14.16 may be used to indicate that the assignee has not provided evidence of ownership.
¶ 14.16 Failure of Assignee To Establish Ownership
This application is objected to under 37 CFR 1.172(a) as the assignee has not established its ownership interest in the patent for which reissue is being requested. An assignee must establish its ownership interest in order to support the consent to a reissue application required by 37 CFR 1.172(a) . The assignee’s ownership interest is established by:
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(a) filing in the reissue application evidence of a chain of title from the original owner to the assignee, or
(b) specifying in the record of the reissue application where such evidence is recorded in the Office (e.g., reel and frame number, etc.).
The submission with respect to (a) and (b) to establish ownership must be signed by a party authorized to act on behalf of the assignee. See MPEP § 1410.01.
An appropriate paper satisfying the requirements of 37 CFR 3.73 must be submitted in reply to this Office action.
Examiner Note:
1. This form paragraph may be used in an Office action which rejects any of the claims on other grounds.
2. If otherwise ready for allowance, this form paragraph should be followed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 of form paragraph 7.51).
Just as the consent of assignee must be signed by a party authorized to act on behalf of the assignee, the submission with respect to 37 CFR 3.73(b) to establish ownership must be signed by a party authorized to act on behalf of the assignee. . For applications filed on or after September 16, 2012, a patent practitioner of record may sign the statement (see 37 CFR 3.73(d)(3)). For applications filed before September 16, 2012, the signature of an attorney or agent registered to practice before the Office is not sufficient, unless that attorney or agent is authorized to act on behalf of the assignee.
If the submission under 37 CFR 3.73(b) to establish ownership is not signed by a party authorized tosign pursuant to 37 CFR 3.73, the appropriate paragraphs of form paragraphs 14.16.01 through 14.16.06 may be used.
¶ 14.16.01 Establishment of Ownership Not Signed by Appropriate Party
This application is objected to under 37 CFR 1.172(a) as the assignee has not established its ownership interest in the patent for which reissue is being requested. An assignee must establish its ownership interest in order to support the consent to a reissue application required by 37 CFR 1.172(a). The submission establishing the ownership interest of the assignee is informal. There is no indication of record that the party who signed the submission is an appropriate party to sign on behalf of the assignee. See 37 CFR 3.73.
A proper submission establishing ownership interest in the patent, pursuant to 37 CFR 1.172(a), is required in response to this action.
Examiner Note:
1. This form paragraph should be followed: by one of form paragraphs 14.16.02 through 14.16.04.fti, and then optionally by form paragraph 14.16.06.
2. See MPEP § 1410.02.
¶ 14.16.02 Failure To State Capacity To Sign
The person who signed the submission establishing ownership interest has failed to state his/her capacity to sign for the corporation or other business entity, and he/she has not been established as being authorized to act on behalf of the assignee. For reissue applications filed on or after September 16, 2012, the submission establishing ownership may be signed by a patent practitioner of record. See 37 CFR 3.73; MPEP § 325.
Examiner Note:
1. This form paragraph is to be used when the person signing the submission establishing ownership interest does not state his/her capacity (e.g., as a recognized officer) to sign for the assignee, and is not established as being authorized to act on behalf of the assignee. For reissue applications filed on or after September 16, 2012, the submission establishing ownership may be signed by a patent practitioner of record (i.e., who has been given power in a power of attorney document in the file).
2. Use form paragraph 14.16.06 to explain how an official, other than a recognized officer, may properly sign a submission establishing ownership interest.
¶ 14.16.03 Lack of Capacity To Sign
The person who signed the submission establishing ownership interest is not recognized as an officer of the assignee, and he/she has not been established as being authorized to act on behalf of the assignee. See MPEP § 324 (for applications filed before September 16, 2012) and § 325 (for applications filed on or after September 16, 2012).
¶ 14.16.04.fti Attorney/Agent of Record Signs - Application Filed Before Sept. 16, 2012
The submission establishing ownership interest was signed by applicant’s [1]. For reissue applications filed before September 16, 2012, an attorney or agent of record is not authorized to sign a submission establishing ownership interest, unless he/she has been established as being authorized to act on behalf of the assignee. See MPEP § 324.
Examiner Note:
1. This form paragraph is to be used in reissue applications filed before September 16, 2012, when the person signing the submission establishing ownership interest is an attorney or agent of record who is not an authorized officer as defined in MPEP § 324 and has not been established as being authorized to act on behalf of the assignee. For reissue applications filed
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on or after September 16, 2012, the submission may be signed by a patent practitioner of record. See 37 CFR 3.73(d)(3).
2. Use form paragraph 14.16.06 to explain how an official, other than a recognized officer, may properly sign a submission establishing ownership interest.
3. In bracket 1, insert either --attorney-- or --agent--.
¶ 14.16.06 Criteria To Accept When Signed by a Non-Recognized Officer
It would be acceptable for a person, other than a recognized officer, to sign a submission establishing ownership interest, provided the record for the application includes a duly signed statement that the person is empowered to sign a submission establishing ownership interest and/or act on behalf of the assignee.
Accordingly, a new submission establishing ownership interest which includes such a statement above, will be considered to be signed by an appropriate official of the assignee. A separately filed paper referencing the previously filed submission establishing ownership interest and containing a proper empowerment statement would also be acceptable.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraphs 14.16.02, 14.16.03 or 14.16.04.fti.
2. When one of form paragraphs 14.16.02, 14.16.03 or 14.16.04.fti is used to indicate that a submission establishing ownership interest is not proper because it was not signed by a recognized officer, this form paragraph should be used to point out one way to correct the problem.
3. While an indication of the person’s title is desirable, its inclusion is not mandatory when this option is employed.
Where the submission establishes the assignee’s ownership as to the patent, the assignee’s ownership as to the reissue application will be presumed. Accordingly, a submission as to the ownership of the patent will be construed to satisfy the 37 CFR 1.172 (and 37 CFR 3.73) requirements for establishing ownership of the application. Thus, a terminal disclaimer can be filed in a reissue application where ownership of the patent has been established, without the need for a separate submission under 37 CFR 3.73 showing ownership of the reissue application. However, if there is a submission under 37 CFR 3.73 present in the patent file, but there is no copy in the reissue application file, a copy of the submission under 37 CFR 3.73 for the patent must be submitted in the reissue file.
Even if the submission states that it is establishing ownership of the reissue application (rather than the
patent), the submission should be accepted by the examiner as also establishing ownership in the patent. The documentation in the submission establishing ownership of the reissue application must, of necessity, include chain of title as to the patent.
III. COMPARISON OF ASSIGNEE THAT CONSENTS TO ASSIGNEE SET FORTH IN SUBMISSION ESTABLISHING OWNERSHIP INTEREST
The examiner must inspect both the consent and documentary evidence of ownership to determine whether the requirements of 37 CFR 1.172 have been met. The assignee identified by the documentary evidence must be the same assignee which signed the consent. Also, the person who signs the consent for the assignee and the person who signs the submission of evidence of ownership for the assignee must both be persons having authority to do so. See also MPEP §§ 324 and 325.
The reissue patent will be granted to the original patentee, his or her legal representatives or assigns as the interest may appear.
1411 Form of Specification [R-11.2013]
37 CFR 1.173 Reissue specification, drawings, and amendments.
(a) Contents of a reissue application. An application for reissue must contain the entire specification, including the claims, and the drawings of the patent. No new matter shall be introduced into the application. No reissue patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent, pursuant to 35 U.S.C. 251.
(1) Specification, including claims. The entire specification, including the claims, of the patent for which reissue is requested must be furnished in the form of a copy of the printed patent, in double column format, each page on only one side of a single sheet of paper. If an amendment of the reissue application is to be included, it must be made pursuant to paragraph (b) of this section. The formal requirements for papers making up the reissue application other than those set forth in this section are set out in § 1.52. Additionally, a copy of any disclaimer (§ 1.321), certificate of correction (§§ 1.322 through 1.324), or reexamination certificate (§ 1.570) issued in the patent must be included. (See also § 1.178).
(2) Drawings . Applicant must submit a clean copy of each drawing sheet of the printed patent at the time the reissue application is filed. If such copy complies with § 1.84, no further drawings will be required. Where a drawing of the reissue
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application is to include any changes relative to the patent being reissued, the changes to the drawing must be made in accordance with paragraph (b)(3) of this section. The Office will not transfer the drawings from the patent file to the reissue application.
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Pursuant to 37 CFR 1.173(a)(1) the application specification, including the claims, must be furnished in the form of a copy of the printed patent in double column format (so that the patent can be simply copied without cutting). Applicants are required to submit a clean copy of each drawing sheet of the printed patent at the time the reissue application is filed (37 CFR 1.173(a)(2)). Any changes to the drawings must be made in accordance with 37 CFR 1.173(b)(3). Thus, a full copy of the printed patent (including the front page) is used to provide the abstract, drawings, specification, and claims of the patent for the reissue application. Each page of the patent must appear on only one side of each individual page of the specification of the reissue application; a two-sided copy of the patent is not proper. It should be noted that a re-typed specification is not acceptable in a reissue application; the full copy of the printed patent must be used. If, however, the changes to be made to the patent are so extensive/numerous that reading and understanding the specification is extremely difficult and error-prone, a clean copy of the specification may be submitted if accompanied by a grantable petition under 37 CFR 1.183 for waiver of 37 CFR 1.125(d) and 37 CFR 1.173(a)(1).
Pursuant to 37 CFR 1.173(b), amendments may be made at the time of filing of a reissue application. The amendment may be made either by:
(A) physically incorporating the changes within the specification by cutting the column of the printed patent and inserting the added material and rejoining the remainder of the column and then joining the resulting modified column to the other column of the printed patent. Markings pursuant to 37 CFR 1.173(d) must be used to show the changes. The columnar structure of the printed patent must be preserved, and the physically modified page must comply with 37 CFR 1.52(a)(1). As to compliance with 37 CFR 1.52(a)(1)(iv), the “written either by a typewriter or machine printer in permanent dark ink or its equivalent” requirement is deemed to be satisfied where a caret and line are drawn from a
position within the text to a newly added phrase, clause, sentence, etc. typed legibly in the margin; or
(B) providing a preliminary amendment (a separate amendment paper) directing that specified changes be made to the copy of the printed patent.
The presentation of the insertions or deletions as part of the original reissue specification is an amendment under 37 CFR 1.173(b). An amendment of the reissue application made at the time of filing of the reissue application must be made in accordance with 37 CFR 1.173(b)-(e) and (g); see MPEP § 1453. Thus, as required by 37 CFR 1.173(c), an amendment of the claims made at the time of filing of a reissue application must include a separate paper setting forth the status of all claims (i.e., pending or canceled), and an explanation of the support in the disclosure of the patent for the changes made to the claims.
If a chart, table, or chemical formula is amended and it spans two columns of the patent, it should not be split. Rather, the chart, table, or chemical formula should be provided in its entirety as part of the column of the patent to which it pertains, in order to provide a continuity of the description. When doing so, the chart, table, or chemical formula may extend beyond the width of the column. Change in only a part of a word or chemical formula is not permitted. Entire words or chemical formulas must be shown as being changed. Deletion of a chemical formula should be shown by brackets which are substantially larger and darker than any in the formula.
Where a terminal disclaimer was filed in the application for the patent to be reissued, a copy of that terminal disclaimer is not needed in the reissue application file. To identify this information, an internal review form will be filled out at the appropriate point and placed into the file for the reissue application.
Twice reissued patent:
Examples of the form for a twice-reissued patent are found in Re. 23,558 and Re. 28,488. Double underlining and double bracketing are used in the second reissue application, while bold-faced type and double bracketing appear in the printed patent
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(the second reissue patent) to indicate further insertions and deletions, respectively, in the second reissue patent.
When a copy of a first reissue patent is used as the specification of a second reissue application (filed as a reissue of a reissue), additions made by the first reissue will already be printed in italics, and should remain in such format. Thus, applicants need only present additions to the specification/claims in the second reissue application as double underlined text. Subject matter to be deleted from the first reissue patent should be presented in the second reissue application within sets of double brackets.
1411.01 Certificate of Correction or Disclaimer in Original Patent [R-08.2012]
The applicant should include any changes, additions, or deletions that were made by a Certificate of Correction to the original patent grant in the reissue application without underlining or bracketing. This includes changes made by a Certification of Correction dated before the filing of the reissue application or dated during the pendency of the reissue application. The examiner should make certain that all Certificate of Correction changes in the patent have been properly incorporated into the reissue application.
Certificate of Correction changes and disclaimer of claim(s) under 37 CFR 1.321(a) should be made without using underlining or brackets. Because these are retroactively a part of the original patent and are made before the reissue application will issue as a patent, they must show up in the printed reissue patent document as part of the original patent, i.e., not in italics or bracketed. If the changes are submitted improperly with underlining and brackets, the examiner will require correction by the applicant in the form of a replacement paragraph (or paragraphs) without such markings. If the changes are extensive, a clean copy of the specification with the Certificate of Correction changes in it may be required by the examiner after consulting with his/her supervisor. For the clean copy of the specification to be entered as a substitute specification, the reissue applicant must file a grantable petition under 37 CFR 1.183 for waiver of 37 CFR 1.125(d) and 37 CFR 1.173(a)(1). The
examiner’s requirement for the clean copy will generally serve as sufficient basis for granting the petition.
1411.02 New Matter [R-11.2013]
New matter, that is, matter not present in the patent sought to be reissued, is excluded from a reissue application in accordance with 35 U.S.C. 251.
The claims in the reissue application must be for subject matter which the applicant had the right to claim in the original patent. Any change in the patent made via the reissue application should be checked to ensure that it does not introduce new matter. Note that new matter may exist by virtue of the omission of a feature or of a step in a method. See United States Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668, 53 USPQ 6 (1942).
Form paragraph 14.22.01 may be used where new matter has been added anywhere in “the application for reissue” as prohibited by 35 U.S.C. 251.
¶ 14.22.01 Rejection, 35 U.S.C. 251, New Matter
Claim [1] rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows: [2]
Examiner Note:
1. In bracket 2, fill in the applicable page and line numbers and provide an explanation of your position, as appropriate.
2. A rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, should also be made if the new matter is added to the claims or is added to the specification and affects the claims. If new matter is added to the specification and does
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not affect the claims, an objection should be made based upon 35 U.S.C. 132 using form paragraph 7.28.
1412 Content of Claims [R-08.2012]
The content of claims in a reissue application is somewhat limited, as is indicated in MPEP § 1412.01 through MPEP § 1412.03.
1412.01 Reissue Claims Must Be for Same General Invention [R-08.2012]
The reissue claims must be for the same invention as that disclosed as being the invention in the original patent, as required by 35 U.S.C. 251. The entire disclosure, not just the claim(s), is considered in determining what the patentee objectively intended as his or her invention. The proper test as to whether reissue claims are for the same invention as that disclosed as being the invention in the original patent is “an essentially factual inquiry confined to the objective intent manifested by the original patent.” In re Amos, 953 F.2d 613, 618, 21 USPQ2d 1271, 1274 (Fed. Cir. 1991) (quoting In re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 489 (CCPA 1975)) (emphasis added); See also In re Mead, 581 F.2d 257, 198 USPQ 412 (CCPA 1978). The “original patent” requirement of 35 U.S.C. 251 must be understood in light of In re Amos, supra, where the Court of Appeals for the Federal Circuit stated:
We conclude that, under both Mead and Rowand, a claim submitted in reissue may be
rejected under the “original patent” clause if the original specification demonstrates, to one skilled in the art, an absence of disclosure sufficient to indicate that a patentee could have claimed the subject matter. Merely finding that the subject matter was “not originally claimed, not an object of the original patent, and not depicted in the drawing,” does not answer the essential inquiry under the “original patent” clause of § 251, which is whether one skilled in the art, reading the specification, would identify the subject matter of the new claims as invented and disclosed by the patentees. In short, the absence of an “intent,” even if objectively evident from the earlier claims, the drawings, or the original objects of the
invention is simply not enough to establish that the new claims are not drawn to the invention disclosed in the original patent.
953 F.2d at 618-19, 21 USPQ2d at 1275. Claims presented in a reissue application are considered to satisfy the requirement of 35 U.S.C. 251 that the claims be “for the invention disclosed in the original patent” where:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied; and
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application.
The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention.
The original patent specification would indicate an intent not to claim the subject matter of the claims presented in the reissue application in a situation analogous to the following:
The original patent specification discloses that composition X is not suitable (or not satisfactory) for molding an item because composition X fails to provide quick drying. The patent issues with claims directed only to composition Y. After the patent issues, it is found that composition X would be desirable for the molding in spite of the failure to provide quick drying, because of some other newly recognized benefit from composition X. The addition of a claim to composition X or a method of use thereof would not be permitted in a reissue application, because the original patent specification contained an explicit statement of intent not to claim composition X or a method of use thereof. One should understand, however, that the mere failure to claim a disclosed embodiment in the original patent (absent an explicit statement in the original patent specification of unsuitability of the embodiment) would not be grounds for prohibiting a claim to that embodiment in the reissue.
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§ 1412.01CORRECTION OF PATENTS
I. FAILURE TO TIMELY FILE A DIVISIONAL APPLICATION PRIOR TO ISSUANCE OF ORIGINAL PATENT
Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s), the non-elected invention(s) cannot be recovered by filing a reissue application. A reissue applicant’s failure to timely file a divisional application covering the non-elected invention(s) in response to a restriction (or an election of species) requirement is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251. In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); See also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). In this situation, the reissue claims should be rejected under 35 U.S.C. 251 for lack of defect in the original patent and lack of error in obtaining the original patent. Compare with In re Doyle, 293 F.3d 1355, 63 USPQ2d 1161 (Fed. Cir. 2002) where the court permitted the patentee to file a reissue application to present a so-called linking claim, a claim broad enough to read on or link the invention elected (and patented) together with the invention not elected. The non-elected invention(s) were inadvertently not filed as a divisional application.
1412.02 Recapture of Canceled Subject Matter [R-11.2013]
A reissue will not be granted to “recapture” claimed subject matter which was surrendered in an application to obtain the original patent. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011);
North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement,
131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436,
221 USPQ 289, 295 (Fed. Cir. 1984); In re Wadlinger, 496 F.2d 1200, 181 USPQ 826 (CCPA 1974); In re Richman, 409 F.2d 269, 276, 161 USPQ 359, 363-364 (CCPA 1969); In re Willingham, 282 F.2d 353, 127 USPQ 211 (CCPA 1960). The question as to whether a reissue patent violates the rule against recapture of subject matter surrendered during original prosecution is a question of law. Mostafazadeh, 643 F.3d at 1358, 98 USPQ2d at
1642.
I. THREE STEP TEST FOR RECAPTURE:
In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75
USPQ2d at 1556, the court restated this test as follows:
We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
In North American Container, the court cited Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600; Hester, 142 F.3d at 1482-83, 46 USPQ2d at
1649-50; and Clement, 131 F.3d at 1468, 45 USPQ2d at 1164-65 as cases that lead to, and explain the language in, the North American Container recapture test.
A. The First Step - Was There Broadening?
In every reissue application, the examiner must first review each claim for the presence of broadening, as compared with the scope of the claims of the
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patent to be reissued. A reissue claim is broadened where some limitation of the patent claims is no longer required in the reissue claim; see MPEP § 1412.03 for guidance as to the nature of a “broadening claim.” If the reissue claim is not broadened in any respect as compared to the patent claims, the analysis ends; there is no recapture.
B. The Second Step - Does Any Broadening Aspect of the Reissued Claim Relate to Surrendered Subject Matter?
Where a claim in a reissue application is broadened in some respect as compared to the patent claims, the examiner must next determine whether the broadening aspect(s) of that reissue claim relate(s) to subject matter that applicant previously surrendered during the prosecution of the original application (which became the patent to be reissued). The “original application” includes the patent family’s entire prosecution history. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 94 USPQ2d 1598 (Fed. Cir. 2010). Each limitation of the patent claims, which is omitted or broadened in the reissue claim, must be reviewed for this determination. This involves two sub-steps:
1. The Two Sub-Steps:
(A) One must first determine whether applicant surrendered any subject matter in the prosecution of the original application that became the patent to be reissued.
If an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by applicant in the original application to make the claims allowable over the art, the omitted limitation relates to subject matter previously surrendered by applicant. The reliance by applicant to define the original patent claims over the art can be by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art. To determine whether such reliance occurred, the examiner must review the prosecution history of the original application file (of the patent to be reissued) for surrender of claimed subject matter which may result in recapture. The prosecution history includes
the rejections and applicant’s arguments made therein.
With respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, “[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.” Id.
If applicant did not surrender any subject matter in the prosecution of the original application, the analysis ends and there is no recapture.
(B) If applicant did surrender subject matter in the original application prosecution, the examiner must then determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
With respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to thepreviously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.
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But the focus in the analysis of the second step must be on the subject matter that was surrendered during the original application prosecution in the context of the then-existing claims, not separate inventions/embodiments/species, which do not even trigger a recapture analysis.
In the decision of In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012), the Federal Circuit explained:
Whereas the recapture rule applies when surrendered subject matter is being reclaimed, overlooked aspects by definition were never claimed and thus never surrendered. See Mostafazadeh, 643 F.3d at 1360 [98 USPQ2d at 1644]. Rather, as we explained in Mostafazadeh, "overlooked aspects" is a separate inquiry under reissue that is independent of whether or not the recapture rule applies.
679 F.3d at 1347, 102 USPQ2d at 1870.
Note the following examples illustrating the above:
Assume that, in the original prosecution of the patent, applicant claimed a method of making a glass lens, where the ion implantation step used a molten bath to diffuse ions into the lens, and that step was amended to recite a pressure of 50-60 PSI and temperature between 150-200 degrees C - to define over the art. That pressure and temperature range-set is “frozen” in place for any molten bath ion implantation claim, and it cannot be deleted or broadened by reissue. However, if in the original application, applicant had failed to claim a disclosed embodiment to plasma ion implantation (i.e., using a plasma stream rather than a molten bath to provide the ions), that is a proper 35 U.S.C. 251 error, which can be corrected by reissue. Applicant can, in a reissue application, add a set of claims to plasma ion implantation, without including the “50-60 PSI and temperature between 150-200 degrees C” limitation. The “50-60 PSI - 150-200 degrees C limitation” is totally irrelevant to plasma implantation. Also, if in the original
application, applicant failed to claim the method of placing two lenses made by the invention in a specified series to modulate a laser for cutting chocolate, that too is a proper 35 U.S.C. 251 error, which can be corrected by reissue. In this lens placement method, it does not matter how the specific lens having the implanted ion gradient was made, and the “50-60 PSI and temperature between 150-200 degrees C” limitation is again not relevant. Hester Industries, Inc. v. Stein, Inc., supra, addressed this concept of overlooked aspects, stating:
[T]his principle [i.e., avoidance of the recapture rule], in appropriate cases, may operate to overcome the recapture rule when the reissue claims are materially narrower in other overlooked aspects of the invention. The purpose of this exception to the recapture rule is to allow the patentee to obtain through reissue a scope of protection to which he is rightfully entitled for such overlooked aspects.
142 F.3d at 1482-83, 46 USPQ2d at 1649-50. (Emphasis added)
See also B.E. Meyers & Co. v. United States, 47 Fed.Cl. 200, 56 USPQ2d 1110 (Fed. Cl. 2000), where the Court of Federal Claims permitted the complete removal of a limitation that was added to obtain the patent, where the replacement limitation provided a separate invention.
2. Examples of the Second Step Analysis:
(A) Example (1) - Argument without amendment:
In Hester, supra, the Federal Circuit held that the surrender that forms the basis for impermissible recapture “can occur through arguments alone”. 142 F.3d at 1482, 46 USPQ2d at 1649. For example, assume that limitation A of the patent claims is omitted in the reissue claims. This omission provides a broadening aspect in the reissue claims, as compared to the claims of the patent. If the omitted limitation A was argued in the original application to make the application claims allowable over the art in the application, then the omitted limitation
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relates to subject matter previously surrendered in the original application, and recapture will exist. Accordingly, where claims are broadened in a reissue application, the examiner should review the prosecution history of the original patent file for recapture, even where the claims were never amended during the prosecution of the application which resulted in the patent. Note: The argument that the claim limitation defined over the rejection must have been specific as to the limitation relied upon, rather than a general statement regarding the claims as a whole. A general “boiler plate” sentence in the original application will not, by itself, be sufficient to establish surrender and recapture.
An example of a general “boiler plate” sentence of argument is:
In closing, it is argued that the limitations of claims 1-7 distinguish the claims from the teachings of the prior art, and claims 1-7 are thus patentable.
An argument that merely states that all the limitations of the claims define over the prior art will also not, by itself, be sufficient to establish surrender and recapture. An example is:
Claims 1-5 set forth a power-train apparatus which comprises the combination of A+B+C+D+E. The prior art of record does not disclose or otherwise teach, providing a material-transfer apparatus as defined by the limitations of claim 1, including an A member and a B member, both connected to a C member, with all three being aligned with the D and E members.
This statement is simply a restatement of the entirety of claim 1 as allowed. No measure of surrender could be gleaned from such a statement of reasons for allowance. See Ex parte Yamaguchi, 61 USPQ2d 1043 (Bd. Pat. App. & Inter. 2001)(reported but unpublished, precedential).
In both of the above examples, the argument does not provide an indication of what specific limitations, e.g., specific element or step of the claims, cooperative effect, or other aspect of the claims, are
being relied upon for patentability. Thus, applicant has not surrendered anything.
(B) Example (2) - Amendment of the claims without argument:
The limitation omitted in the reissue claim(s) was added in the original application claims for the purpose of making the application claims allowable over a rejection or objection made in the application. Even though applicant made no argument on the record that the limitation was added to obviate the rejection, the nature of the addition to the claim can show that the limitation was added in direct reply to the rejection. This too will establish the omitted limitation as relating to subject matter previously surrendered. To illustrate this, note the following example:
The original application claims recite limitations A+B+C, and the Office action rejection combines two references to show A+B+C. In the amendment replying to the Office action, applicant adds limitation D to A+B+C in the claims, but makes no argument as to that addition. The examiner then allows the claims. Even though there is no argument as to the addition of limitation D, it must be presumed that the D limitation was added to obviate the rejection. The subsequent deletion of (omission of) limitation D in the reissue claims would be presumed to be a broadening in an aspect of the reissue claims related to surrendered subject matter. Accordingly, the reissued claims would be barred by the recapture doctrine. The above result would be the same whether the addition of limitation D in the original application was by way of applicant’s amendment or by way of an examiner’s amendment with authorization by applicant.
(C) Example (3) - Who can make the surrendering argument?
Assume that the limitation A omitted in the reissue claims was present in the claims of the original application. The examiner’s reasons for allowance in the original application stated that it was that limitation A which distinguished over a potential combination of references X and Y. Applicant did
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not present on the record a counter statement or comment as to the examiner’s reasons for allowance, and permitted the claims to issue.
Ex parte Yamaguchi, supra, held that a surrender of claimed subject matter cannot be based solely upon an applicant’s failure to respond to, or failure to challenge, an examiner’s statement made during the prosecution of an application. Applicant is bound only by applicant’s revision of the application claims or a positive argument/statement by applicant. An applicant’s failure to present on the record a counter statement or comment as to an examiner’s reasons for allowance does not give rise to any implication that applicant agreed with or acquiesced in the examiner’s reasoning for allowance. Thus, the failure to present a counter statement or comment as to the examiner’s statement of reasons for allowance does not give rise to any finding of surrender. The examiner’s statement of reasons for allowance in the original application cannot, by itself, provide the basis for establishing surrender and recapture.
It is only in the situation where applicant does file comments on the statement of reasons for allowance, that surrender may have occurred. Note the following two scenarios in which an applicant files comments:
Scenario 1- There is Surrender: The examiner’s statement of reasons for allowance in the original application stated that it was limitation C (of the combination of ABC) which distinguished over a potential combining of references X and Y, in that limitation C provided increased speed to the process. Applicant filed comments on the examiner’s statement of reasons for allowance essentially supporting the examiner’ s reasons. The limitation C is thus established as relating to subject matter previously surrendered.
Scenario 2- There is No Surrender: On the other hand, if applicant’s comments on the examiner’s statement of reasons for allowance contain a counter statement that it is limitation B (of the combination of ABC), rather than C, which distinguishes the claims over the art, then limitation B would constitute surrendered
subject matter, and limitation C has not been surrendered.
C. The Third Step -Were the reissued claims materially narrowed in other respects, and hence avoid the recapture rule?
As pointed out above, the third prong of the recapture determination set forth in North American Container considers the significance of the claim limitations that were added and deleted, during prosecution of the patent (to be reissued) to determine whether the reissue claims should be barred as recapture.
The following discussion addresses analyzing the reissue claims, and which claims are to be compared to the reissue claims in determining the issue of surrender (for reissue recapture).
When analyzing a reissue claim for the possibility of impermissible recapture, there are two different types of analysis that must be performed. If the reissue claim “fails” either analysis, recapture exists.
First, the reissue claim must be compared to any claims canceled or amended during prosecution of the original application. It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.
Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. In any broadening reissue application, the examiner will determine, on a claim-by-claim basis, whether the broadening in the reissue application claim(s) relates to subject matter that was surrendered during the examination of the patent for which reissue is requested) by an amendment
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narrowing claim scope in order to overcome a rejection and/or argument relying on a claim limitation in order to overcome a rejection.
A) If surrendered subject matter has been entirely eliminated from a claim present in the reissue application, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim. Stated another way, if a claim limitation present in the original patent that was added to overcome a rejection or that was argued by applicant to distinguish over the prior art is entirely eliminated from a claim in the reissue application, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim.
B) If the surrendered subject matter has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows:
It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture. See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("’original claims’ are defined as ’the claims before surrender’"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. On the other hand, if the retained portion of the modified limitation is “well known in the prior art,” impermissible recapture has not been avoided. See Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at
1644. It is to be noted that if the portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Id.
Even “[i]f the modified limitation does not materially narrow (or, in other cases, the limitation is eliminated),” it may be that “the reissued claims were materially narrowed in other respects so that the claims have not been enlarged, and hence avoid the recapture rule.” Youman, 679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified limitation does not materially narrow, the reissue applicant may have added a new limitation that still relates to surrendered subject matter. The material narrowing must relate to what was argued by applicant in the original application, to define the claim over the art. Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). If the reissue applicant believes that “the reissued claims were materially narrowed in other respects,” the reissue applicant should point out explicitly what limitation has been added to the claims to materially narrow and how it materially narrows the claims.
The following discussion is provided for analyzing the reissue claims.
1. Comparing Reissue Claims Narrowed/Broadened Vis-à-vis the Canceled Claims
DEFINITIONS:
“Canceled claims,” in the context of recapture case law, are claims canceled from the original application to obtain the patent for which reissue is now being sought. The claims
(A) can simply be canceled and not replaced by others, or
(B) can be canceled and replaced by other claims which are more specific than the canceled claims in at least one aspect (to thereby define over the art of record). The “replacement claims” can be new claims which are narrower than the canceled claims, or can be the same claims amended to be narrower than the canceled version of the claims.
“Surrender-generating limitation” – The “limitation” presented, argued, or stated to make the claims patentable over the art (in the application) “generates” the surrender of claimed subject matter. For the sake of simplification, this limitation will be
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referred to throughout this section as the surrender-generating limitation.
(a) Reissue Claims Are Same or Broader in Scope Than Canceled Claims in All Aspects:
The recapture rule bars the patentee from acquiring, through reissue, claims that are in all aspects (A) of the same scope as, or (B) broader in scope than, those claims canceled from the original application to obtain a patent. Ball Corp. v. United States, 729 F.2d at 1436, 221 USPQ at 295.
(b) Reissue Claims are Narrower in Scope Than Canceled Claims in at Least One Aspect:
If the reissue claims are equal in scope to, or narrower than, the claims of the original patent (as opposed to the claims “canceled from the application”) in all aspects, then there can never be recapture. The discussion that follows is not directed to that situation. It is rather directed to the situation where the reissue claims are narrower than the claims 'canceled' from the application in some aspect, but are broader than the claims of the original patent in some other aspect.
If the reissue claims are narrower in scope than the claims canceled from the original application by inclusion of the entirety of the limitation added to define the original application claims over the art, there will be no recapture, even if the reissue claims are broader than the canceled claims in some other aspect (i.e., an aspect not related to the surrender made in the original application).
Assume combination AB was originally presented in the application, and was amended in response to an art rejection to add element C and thus provide ABC (after which the patent issued). The reissue claims are then directed to combination ABbroadenedC. The ABbroadenedC claims are
narrower in scope when compared with the canceled claim subject matter AB with respect to the addition of C (which was added in the application to overcome the art), and they retain surrender-generating limitation C; thus, there is no recapture.
As another example, assume combination ABZ was originally presented in the application, and was amended in response to an art rejection to add element C and thus provide ABZC (after which the patent issued). The reissue claims are then directed to combination ABC (i.e., element Z is deleted from the canceled claims, while element C remains present). The ABC claims of the reissue are
narrower in scope as compared to the canceled-from-the-original-application claim subject matter ABZ with respect to the addition of C (which was added in the application to overcome the art), and they retain surrender-generating limitation C; thus, there is no recapture.
2. Comparing Reissue Claims Narrowed/Broadened Vis-à-vis the Patent Claims
The “patent claims,” in the context of recapture case law, are claims that issued in the original patent for which reissue is now being sought. As pointed out above, where the reissue claims are narrower than the claims of the original patent in all aspects, then there can never be recapture. If reissue claims are equal in scope to the patent claims, there is no recapture as to those reissue claims. Where, however, reissue claims are both broadened and narrowed as compared with the original patent claims, the nature of the broadening and narrowing must be examined to determine whether the reissue claims are barred as being recapture of surrendered subject matter. If the claims are “broader than they are narrower in a manner directly pertinent to the subject matter... surrendered during prosecution” ( Clement, 131 F.3d at 1471, 45 USPQ2d at 1166), then recapture will bar the claims. This narrowing/broadening vis-à-vis the patent is broken down into four possibilities that will now be addressed.
If a claim is presented in a reissue application that omits, in its entirety, the surrender-generating limitation, that claim impermissibly recaptures what was previously surrendered, and that claim is barred under 35 U.S.C. 251. Note, however, subsection V., below, “REBUTTAL BY THE REISSUE APPLICANT,” which points out how the recapture finding of the Office can be rebutted by applicant, in some limited instances, by showing that material narrowing is present in the claims.
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(a) Reissue Claims are Narrower in Scope Than Patent Claims, in Area Not Directed to Amendment/Argument Made to Overcome Art Rejection in Original Prosecution; are Broader in Scope by Omitting Limitation(s) Added/Argued To Overcome Art Rejection in Original Prosecution:
In this case, there is recapture.
This situation is where the patent claims are directed to combination ABC and the reissue claims are directed to ABD. Element C was either a limitation added to AB to obtain allowance of the original patent, or was argued by applicant to define over the art (or both). Thus, addition of C (and/or argument as to C) has resulted in the surrender of any combination of A & B that does not include C; this is the surrendered subject matter. Element D, on the other hand, is not related to the surrendered subject matter. Thus, the reissue claim, which no longer contains C, is broadened in an area related to the surrender, and the narrowing by the addition of D does not save the claim from recapture because D is not related to the surrendered subject matter.
Reissue claims that are broader than the original patent claims by not including the surrender-generating limitation (element C, in the example given) will be barred by the recapture rule even though there is narrowing of the claims not related to the surrender-generating limitation. As stated in the decision of In re Clement, 131 F.3d at 1470, 45 USPQ2d at 1165, if the reissue claim is broader in an aspect germane to a prior art rejection, but narrower in another aspect completely unrelated to the rejection, the recapture rule bars the claim. Pannu, 258 F.3d 1366, 59 USPQ2d 1597, provides a fact situation in which this scenario was held to be recapture.
(b) Reissue Claims are Narrower or Equal in Scope, in Area Directed to Amendment/Argument Made to Overcome Art Rejection in Original Prosecution; are Broader in Scope in Area Not Directed to Amendment/Argument:
In this case, there is no recapture.
This situation is where the patent claims are directed to combination ABCDE and the reissue claims are directed to ABDE (element C is omitted). Assume
that the combination of ABCD was present in the original application as it was filed, and element E was later added to define over that art. No argument was ever presented as to elements A-C defining over the art.
In this situation, the ABCDE combination of the patent can be broadened (in the reissue application) to omit element C, and thereby claim the combination of ABDE, where element E (the surrender generating limitation) is not omitted. There would be no recapture in this instance. (If an argument had been presented as to element C defining over the art, in addition to the addition of element E, then the ABCDE combination could not be broadened to omit element C and thereby claim combination of ABDE. This would be recapture; see the above discussion as to surrender and recapture based upon argument.)
Additionally, the reissue claims are certainly permitted to recite combination ABDEspecific (where surrender-generating element E is narrowed). The patent claims have been broadened in an area not directed to the surrender (by omitting element C) and narrowed in the area of surrender (by narrowing element E to Especific). This is clearly
permitted.
As another example, assume limitation C was added to application claims AB to obtain the patent to ABC, and now the reissue application presents claims to AC or ABbroadC. Such reissue claims
avoid the effect of the recapture rule because they are broader in a way that does not attempt to reclaim what was surrendered earlier. Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 994, 27 USPQ2d 1521, 1525 (Fed. Cir. 1993). Such claims are considered to be broader in an aspect not “germane to a prior art rejection,” and thus are not barred by recapture. Note In re Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.
Reissue claims that are broader than the original patent claims by deletion of a limitation or claim requirement other than the “surrender-generating limitation” will avoid the effect of the recapture rule, regardless of the nature of the narrowing in the
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claims, and even if the claims are not narrowed at all from the scope of the patent claims.
(c) Reissue Claims are Narrower in Scope in Area Not Directed toAmendment/Argument Made to Overcome Art Rejection in Original Prosecution; are Broader in Scope in Area Not Directed to the Amendment/Argument:
In this instance, there is clearly no recapture. In the reissue application, there has been no change in the claims related to the matter surrendered in the original application for the patent.
In this instance, element C was added to the AB combination to provide ABC and define over the art, and the patent was issued. The reissue omits element B and adds element Z, to thus claim ACZ. There is no recapture because the surrender generating element C has not been modified in any way. (Note, however, that if, when element C was added to AB, applicant argued that the association of newly added C with B provides a synergistic (unexpected) result to thus define over the art, then neither element B nor element C could be omitted in the reissue application.)
(d) Reissue Claims Broader in Scope in Area Directed to Amendment/Argument Made to Overcome Art Rejection in Original Prosecution; but Reissue Claims Retain, in Broadened Form, the Limitation(s) Argued/Added to Overcome Art Rejection in Original Prosecution:
In this case, there may be recapture.
Assume the combinationAB was originally claimed in the application, and was amended in reply to an art rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABCbroadened. The ABCbroadened claims are
narrowed in scope when compared with the canceled claim subject matter AB, because of the addition of Cbroadened. Thus, the claims retain, in broadened
form, the limitation argued/added to overcome art rejection in original prosecution. In this instance, a recapture rejection can be made even though ABCbroadened is narrower than canceled claim
subject matter AB , but only if Cbroadened was
“well known in the prior art”. See In re Mostafazadeh, 643 F.3d 1353, 1361, 98 USPQ2d 1639, 1644 (Fed. Cir. 2011). On the other hand, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al, 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Any recapture of surrendered subject matter that was in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.
II. REISSUE TO TAKE ADVANTAGE OF pre-AIA 35 U.S.C. 103(b):
For patents issued on an application subject to the pre-AIA prior art regime (pre-AIA patents), a patentee may file a reissue application to permit consideration of process claims which qualify for pre-AIA 35 U.S.C. 103(b) treatment if a patent is granted on an application entitled to the benefit of pre-AIA 35 U.S.C. 103(b), without an election having been made as a result of error without deceptive intent. See MPEP § 706.02(n). This is not to be considered a recapture. The addition of process claims, however, will generally be considered to be a broadening of the invention ( Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such addition must be applied for within two years of the grant of the original patent, or in an appropriate continuing broadening reissue application claiming the benefit of a prior filed broadening reissue application filed within two years of the grant of the original patent. See also MPEP § 1412.03 as to broadened claims.
III. REISSUE FOR ARTICLE CLAIMS WHICH ARE FUNCTIONAL DESCRIPTIVE MATERIAL STORED ON A COMPUTER-READABLE MEDIUM:
A patentee may file a reissue application to permit consideration of article of manufacture claims (not presented in the patent to be reissued) which are functional descriptive material stored on a computer-readable medium, where these article claims correspond to the process or machine claims
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which have been patented. The addition of these “article” claims will generally be considered to be a broadening of the invention ( Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such addition must be applied for within two years of the grant of the original patent. See also MPEP § 1412.03 as to broadened claims.
IV. REJECTION BASED UPON RECAPTURE:
Reissue claims which recapture surrendered subject matter should be rejected using form paragraph 14.17.
¶ 14.17 Rejection, 35 U.S.C. 251, Recapture
Claim[1] rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
[2]
Examiner Note:
In bracket 2, the examiner should explain the specifics of why recapture exists, including an identification of the omitted/broadened claim limitations in the reissue which provide the “broadening aspect” to the claim(s), and where in the original application the narrowed claim scope was presented/argued to obviate a rejection/objection. See MPEP § 1412.02.
V. REBUTTAL BY THE REISSUE APPLICANT
The reissue applicant may rebut a recapture rejection by demonstrating that a claim rejected for recapture includes one or more claim limitations that “materially narrow” the reissue claims in a way that relates to the subject matter surrendered during original prosecution.
Examples of reissue application claims that are to be rejected for recapture under 35 U.S.C. 251 include:
Assume that the original application claim ABCD was amended during prosecution and results in a patent claim ABCDE.
1. ABCD Eliminates E, the surrender generating limitation (SGL).
2. ABCDF Eliminates E, the SGL; adds narrowing limitation F.
3. ABCDE BROADER Broadens E, the SGL; EBROADER is well known in the art.
4. ABCDE BROADER F Broadens E; EBROADER is well known in the art; adds
narrowing limitation F.
In these four examples, a recapture rejection would be made. For examples 2 and 4, applicant may try to rebut the recapture rejections by showing that limitation F “materially narrows” the reissue claims in a way that relates to the subject matter surrendered during original prosecution. If such is the case, the reissue applicant should point out explicitly what limitation has been added to the claims (in this case, limitation F) and how it materially narrows the claims.
VI. FLOWCHART
See the recapture-analysis flow chart which follows for assistance in determining whether recapture is present, consistent with the case law discussed above.
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1412.03 Broadening Reissue Claims [R-11.2013]
35 U.S.C. 251 Reissue of defective patents
*****
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
35 U.S.C. 251(d) and the corresponding final paragraph of pre-AIA 35 U.S.C. 251 prescribe a 2-year limit for filing applications for broadening reissues.
I. MEANING OF “BROADENED REISSUE CLAIM”
A broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent. If a disclaimer is filed in the patent prior to the filing of a reissue application, the disclaimed claims are not part of the “original patent” under 35 U.S.C. 251. The Court in Vectra Fitness Inc. v. TNWK Corp., 162 F.3d 1379, 1383, 49 USPQ2d 1144, 1147 (Fed. Cir. 1998) held that a reissue application violated the statutory prohibition under 35 U.S.C. 251 against broadening the scope of the patent more than 2 years after its grant because the reissue claims are broader than the claims that remain after the disclaimer, even though the reissue claims are narrower than the claims that were disclaimed by the patentee before reissue. The reissue application was bounded by the claims remaining in the patent after a disclaimer is filed. A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects. See, e.g., 37 CFR 1.175(b). A claim in the reissue application which includes subject matter not covered by the patent claims enlarges the scope of the patent claims. For example, if any amended or newly added claim in the reissue contains within its scope any conceivable product or process which would not have infringed the patent, then that reissue claim would be broader than the patent claims. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2, 4 USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re Ruth, 278 F.2d 729, 730, 126 USPQ 155, 156 (CCPA 1960); In re Rogoff, 261 F.2d 601, 603, 120
USPQ 185, 186 (CCPA 1958). A claim which covers something that the original claims do not is a broadened claim. A claim would be considered a broadening claim if the patent owner would be able to sue any party for infringement who previously could not have been sued for infringement. Thus, where the original patent claims only the process, and the reissue application newly adds product claims, the scope of the claims has been broadened because a party could not necessarily be sued for infringement of the product based on the claims of the original patent (if it were made by a different process).
The addition of combination claims in a reissue application where only subcombination claims were present in the original patent could be a broadening of the invention. The question which must be resolved in this case is whether the combination claims added in the reissue would be for “the invention as claimed” in the original patent. See Ex parte Wikdahl, 10 USPQ2d at 1549. The newly added combination claims should be analyzed to determine whether they contain every limitation of the subcombination of any claim of the original patent. If the combination claims (added in the reissue) contain every limitation of the subcombination (which was claimed in the original application), then infringement of the combination must also result in infringement of the subcombination. Accordingly, the patent owner could not, if a reissue patent issues with the combination claims, sue any new party for infringement who could not have been sued for infringement of the original patent. Therefore, broadening does not exist, in spite of the addition of the combination. However, filing a reissue application to merely add combination claim(s) that require all the limitations of a subcombination claim, which subcombination claim was present in the original patent, would not provide an error that is correctable by reissue as defined by 35 U.S.C. 251; see the discussion in MPEP § 1402.
II. SCOPE OF DEPENDENT CLAIM ENLARGED - NOT BROADENING
As pointed out above, a claim will be considered a broadened reissue claim when it is greater in scope
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than each and every claim of the patent to be reissued. A corollary of this is that a claim which has been broadened in a reissue as compared to its scope in the patent is not a broadened reissue claim if it is narrower than, or equal in scope to, any other claim which appears in the patent. A common example of this is where dependent claim 2 is broadened via the reissue (other than the addition of a process step to convert an intermediate to a final product), but independent claim 1 on which it is based is not broadened. Because a dependent claim is construed to contain all the limitations of the claim upon which it depends, claim 2 must be at least as narrow as claim 1 and is thus not a broadened reissue claim.
III. NEW CATEGORY OF INVENTION ADDED IN REISSUE - GENERALLY IS BROADENING
The addition of process claims as a new category of invention to be claimed in the patent ( i.e., where there were no method claims present in the original patent) is generally considered as being a broadening of the invention. See Ex parte Wikdahl, 10 USPQ2d 1546 1549 (Bd. Pat. App. & Inter. 1989). A situation may arise, however, where the reissue application adds a limitation (or limitations) to process A of making the product A claimed in the original patent claims. For example:
(1) a process of using the product A (made by the process of the original patent) to make a product B, disclosed but not claimed in the original patent; or
(2) a process of using the product A to carry out a process B disclosed but not claimed in the original patent.
Although this amendment of the claims adds a method of making product B or adds a method of using product A, this is not broadening (i.e., this is not an enlargement of the scope of the original patent) because the “newly claimed invention” contains all the limitations of the original patent claim(s).
IV. WHEN A BROADENED CLAIM CAN BE PRESENTED
A broadened claim can be presented within two years from the grant of the original patent in a reissue application. In addition, a broadened claim can be presented after two years from the grant of the original patent in a broadening reissue application which was filed within two years from the grant. Where any intent to broaden is unequivocally indicated in the reissue application within the two years from the patent grant, a broadened claim can subsequently be presented in the reissue after the two year period. (Note: A statement that “the patent is wholly or partly inoperative by reason of claiming more or less than applicant had a right to claim” is NOT an unequivocal statement of an intent to broaden.) Thus, a broadened claim may be presented in a reissue application after the two years, even though the broadened claim presented after the two years is different than the broadened claim presented within the two years. Finally, if intent to broaden is indicated in a parent reissue application within the two years, a broadened claim can be presented in a continuing (continuation or divisional) reissue application after the two year period. See In re Staats, 671 F.3d 1350, 101 USPQ2d 1930 (Fed. Cir. 2012) which dealt with a continuation of a first reissue application in which the first reissue application was filed within two years of the patent grant. The broadened claims in the continuation reissue application were to an embodiment “alternative” to, and “unrelated” to, the broadened claims of the first reissue application that were filed within the 2-year limit. Notice of broadening was found to be sufficient in this instance, with the court holding that there is no basis for requiring the later broadened claims in the continuation reissue application to be related to, or directed to the same embodiment as in the first reissue application. Id. at 1355, 101 USPQ2d at 1934. “[A]fter a broadening reissue application has been filed within the two year statutory period, an applicant is ‘not barred from making further broadening changes’ after the two year period” regardless of whether the further broadening changes are unrelated to the prior broadening reissue application. Id. A reissue application filed on the 2-year anniversary date from the patent grant is considered to be filed within 2 years of the patent grant. See Switzer v. Sockman,
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333 F.2d 935, 142 USPQ 226 (CCPA 1964) for a similar rule in interferences.
See also the following cases which pertain to broadened reissues:
In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997) (Broadened claims in a continuing reissue application were properly rejected under 35 U.S.C. 251 because the proposal for broadened claims was not made (in the parent reissue application) within two years from the grant of the original patent and the public was not notified that broadened claims were being sought until after the two-year period elapsed.);
In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985), cert. denied, 476 U.S. 1183 (1986) (The failure by an applicant to include an oath or declaration indicating a desire to seek broadened claims within two years of the patent grant will bar a subsequent attempt to broaden the claims after the two year limit.
In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985) (en banc) (A reissue application with broadened claims was filed within two years of the patent grant; however, the declaration was executed by the assignee rather than the inventor. The Federal Circuit permitted correction of the improperly executed declaration to be made more than two years after the patent grant.);
In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220 (CCPA 1970) (If the reissue application is timely filed within two years of the original patent grant and the applicant indicates in the oath or declaration that the claims will be broadened, then applicant may subsequently broaden the claims in the pending reissue prosecution even if the additional broadening occurs beyond the two year limit.).
Form paragraphs 14.12 and 14.13 may be used in rejections based on improper broadened reissue claims.
¶ 14.12 Rejection, 35 U.S.C. 251, Broadened Claims After Two Years
Claim [1] rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. [2] A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Examiner Note:
The claim limitations that broaden the scope should be identified and explained in bracket 2. See MPEP §§ 706.03(x) and 1412.03.
¶ 14.13 Rejection, 35 U.S.C. 251, Broadened Claims Filed by Assignee
Claim [1] rejected under 35 U.S.C. 251 as being improperly broadened in a reissue application made and sworn to by the assignee. The application for reissue may be made and sworn to by the assignee of the entire interest only if the application does not seek to enlarge the scope of the claims of the original patent or, for reissue applications filed on or after September 16, 2012, the application for the original patent was filed by the assignee of the entire interest under 37 CFR 1.46.
[2] A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Examiner Note:
The claim limitations that broaden the scope should be identified and explained in bracket 2. See MPEP §§ 706.03(x) and 1412.03.
V. BROADENING REISSUE - OATH/DECLARATION REQUIREMENTS
A. Reissue Application Filed On or After September 16, 2012
A broadening reissue application filed on or after September 16, 2012 must be applied for by all of the inventors (patentees), that is, the original reissue oath or declaration must be signed by all of the inventors, unless the application for the patent (for which reissue is requested) was filed under 37 CFR 1.46 by the assignee of the entire interest (see 37 CFR 1.175(c)(2)). See also MPEP § 1414. A supplemental oath or declaration to account for errors corrected subsequent to the original oath or declaration is not needed for the application;
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however, a replacement oath or declaration would still be required where there is a failure to identify any error, or a failure to identify at least one error of the type that would support a reissue. Such a replacement oath or declaration must be signed by all of the inventors, unless the application for the patent (for which reissue is requested) was filed under 37 CFR 1.46 by the assignee of the entire interest.
For any reissue application filed on or after September 16, 2012, the inventor’s oath or declaration must identify a specific claim that the application seeks to broaden. See 37 CFR 1.175(b). A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement.
B. Reissue Application Filed Before September 16, 2012
A broadening reissue application filed before September 16, 2012 must be applied for by all of the inventors (patentees), that is, the original reissue oath or declaration must be signed by all of the inventors. See also MPEP § 1414. The error in not presenting broader claims must have been made without deceptive intent. If a supplemental oath or declaration in a broadening reissue application is needed in the application in order to fulfill the requirements of 37 CFR 1.175, the supplemental reissue oath or declaration must be signed by all of the inventors. See In re Hayes, 53 USPQ2d 1222 (Comm’r Pat. 1999) and MPEP § 1414.03.
1412.04 Correction of Inventorship By Reissue [R-11.2013]
The correction of misjoinder of inventors has been held to be a ground for reissue. See Ex parte Scudder, 169 USPQ 814, 815 (Bd. App. 1971) wherein the Board held that 35 U.S.C. 251 authorizes reissue applications to correct misjoinder of inventors where 35 U.S.C. 256 is inadequate. See also A.F. Stoddard & Co. v. Dann, 564 F.2d 556, 567 n.16, 195 USPQ 97, 106 n.16 (D.C. Cir. 1977) wherein correction of inventorship from sole inventor A to sole inventor B was permitted in a reissue application. The court noted that reissue by
itself is a vehicle for correcting inventorship in a patent.
See MPEP §§ 602.01(c) et seq. for correction of inventorship in an application other than a reissue application.
I. CERTIFICATE OF CORRECTION AS A VEHICLE FOR CORRECTING INVENTORSHIP
While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be effected under the provisions of 35 U.S.C. 256 and 37 CFR 1.324 by filing a request for a Certificate of Correction if:
(A) the only change being made in the patent is to correct the inventorship; and
(B) all parties are in agreement and the inventorship issue is not contested.
See MPEP § 1481.02 for the procedure to be followed to obtain a Certificate of Correction for correction of inventorship.
II. REISSUE AS A VEHICLE FOR CORRECTING INVENTORSHIP
Where the provisions of 35 U.S.C. 256 and 37 CFR 1.324 do not apply, a reissue application is the appropriate vehicle to correct inventorship. The failure to name the correct inventive entity is an error in the patent which is correctable under 35 U.S.C. 251. The reissue oath or declaration pursuant to 37 CFR 1.175 must state that the applicant believes the original patent to be wholly or partly inoperative or invalid through error of a person being incorrectly named in an issued patent as the inventor, or through error of an inventor incorrectly not named in an issued patent, and, for applications filed before September 16, 2012, must also state that such error arose without any deceptive intention on the part of the applicant. The reissue oath or declaration must, as stated in 37 CFR 1.175, also comply with one of 37 CFR 1.63, 1.64, or 1.67 if the reissue application is filed on or after September 16, 2012, or comply with pre-AIA 37 CFR 1.63 if filed before September 16, 2012.
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The reissue application with its reissue oath or declaration under 37 CFR 1.175 provides a complete mechanism to correct inventorship. See A.F. Stoddard & Co. v. Dann, 564 F.2d at 567, 195 USPQ at 106. A request under 37 CFR 1.48 or a petition under 37 CFR 1.324 cannot be used to correct the inventorship of a reissue application. If a request under 37 CFR 1.48 or a petition under 37 CFR 1.324 is filed in a reissue application, the request or petition should be dismissed and the processing or petition fee refunded. The material submitted with the request or petition should then be considered to determine if it complies with 37 CFR 1.175. If the material submitted with the request or petition does comply with the requirements of 37 CFR 1.175 (and the reissue application is otherwise in order), the correction of inventorship will be permitted as a correction of an error in the patent under 35 U.S.C. 251.
The correction of inventorship does not enlarge the scope of the patent claims. Where a reissue application does not seek to enlarge the scope of the claims of the original patent, the reissue oath may be made and sworn to, or the declaration made, by the assignee of the entire interest under 37 CFR 1.172. An assignee of part interest may not file a reissue application to correct inventorship where the other co-owner did not join in the reissue application and has not consented to the reissue proceeding. See Baker Hughes Inc. v. Kirk, 921 F.Supp. 801, 809, 38 USPQ2d 1885, 1892 (D.D.C. 1995). See 35 U.S.C. 251. On the other hand, an assignee of the entire interest can consent to and sign the reissue oath/declarationthat adds or deletes the name of an inventor by reissue (e.g. , correct inventorship from inventor A to inventors A and B) without the original inventor’s consent. Thus, the assignee of the entire interest can file a reissue to change the inventorship to one which the assignee believes to be correct, even though an inventor might disagree. The protection of the assignee’s property rights in the application and patent are statutorily based in 35 U.S.C. 118. For additional information pertaining to the right of an assignee to take action, see MPEP § 324 (for applications filed before September 16, 2012) and § 325 (for applications filed on or after September 16, 2012). Where the name of an inventor X is to be deleted in a reissue application to correct inventorship in a patent, and inventor X has not
assigned his/her rights to the patent, inventor X has an ownership interest in the patent. Inventor X must consent to the reissue (37 CFR 1.172(a)), even though inventor X’s name is being deleted as an inventor. If X’s name is being deleted as an inventor, X consents to the reissue application, and the remaining inventors sign the reissue oath or declaration, X need not sign. If, however, an assignee signs the reissue oath or declaration, inventor X’s signature must also be included in the reissue oath or declaration as an assignee.
1412.05 Correction of Inventorship in a Broadening Reissue Application [R-11.2013]
I. Reissue Application Filed On or After September 16, 2012
[Editor Note: See subsection II., below, for reissue applications filed before September 16, 2012.]
Where a reissue application to correct inventorship is filed on or after September 16, 2012, and the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest, the assignee may sign the inventor’s oath or declaration even where the application also seeks to enlarge the scope of the claims of the original patent. If the application for the original patent was not filed under 37 CFR 1.46 by the assignee of the entire interest, then the signature of all of the inventors is needed on the oath or declaration except as provided for in 37 CFR 1.64. Note that under 37 CFR 1.64, the assignee of the entire interest may sign a substitute statement where the inventor is deceased, legally incapacitated, refuses to execute the reissue oath or declaration, or cannot be found or reached after diligent effort. See MPEP § 604.
In situations where a reissue application seeks to correct inventorship in the patent and the inventors sign the reissue oath or declaration for a broadening reissue application, the correct inventive entity must sign the reissue oath or declaration. . If an inventor is being deleted in a reissue application to correct inventorship in a patent and the inventors are required to sign the oath or declaration, the inventor being deleted need not sign the reissue oath or declaration. For example, a reissue application is
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filed to correct inventorship from inventors A, B, and C (listed as inventors on the patent) to inventors A and B. Inventor C is being deleted as a named inventor. In such a case, A and B are the correct inventors, and accordingly, (in situations where the assignee is not permitted to sign) inventors A and B must sign the reissue oath or declaration but inventor C need not sign the reissue oath or declaration.
If an inventor is being deleted in a reissue application to correct inventorship in a patent and the inventors are required to sign the oath or declaration, the inventor being deleted need not sign the reissue oath or declaration. For example, a reissue application is filed to correct inventorship from inventors A, B, and C (listed as inventors on the patent) to inventors A and B. Inventor C is being deleted as a named inventor. In such a case, A and B are the correct inventors, and accordingly, (in situations where the assignee is not permitted to sign) inventors A and B must sign the reissue oath or declaration but inventor C need not sign the reissue oath or declaration.
If an inventor is being added in a reissue application to correct inventorship in a patent, the inventor being added must sign the reissue oath or declaration together with the inventors previously designated on the patent. For example, a reissue application is filed to correct the inventorship from inventors A and B (listed as inventors on the patent) to inventors A, B, and C. Inventor C is the inventor being added. In such a case, A, B, and C are the correct inventors, and accordingly, each of A, B, and C must sign the reissue oath or declaration. If inventor C refuses to sign, the assignee of the entire interest may sign a substitute statement under 37 CFR 1.64. Thus, even where an application changes the claims to enlarge the scope of the patent claims in addition to the inventorship change, and the application for the original patent was not filed under 37 CFR 1.46 by the assignee of the entire interest, the assignee can add an inventor who refuses to sign by making use of 37 CFR 1.64.
II. Reissue Application Filed Before September 16, 2012
[Editor Note: See subsection I., above, for reissue applications filed on or after September 16, 2012.]
Where a reissue application to correct inventorship is filed before September 16, 2012, and that application also changes the claims to enlarge the scope of the patent claims, the signature of all the inventors is needed . However, if an inventor refuses to sign the reissue oath or declaration because he or she believes the change in inventorship (to be effected) is not correct, the reissue application can still be filed with a petition under pre-AIA 37 CFR 1.47 without that inventor’s signature, provided the written consent of all owners/assignees as required by pre-AIA 37 CFR 1.172(a) is also submitted. Compare, however, the situation where a patent to inventors X and Y has no assignee, a reissue application is filed by inventor Y to delete the name of inventor X as an inventor and to broaden the patent. Inventor X refuses to sign the reissue oath or declaration and refuses to provide the consent as required by pre-AIA 37 CFR 1.172(a). In this instance, a pre-AIA 37 CFR 1.47 petition would not be appropriate to permit the filing of the reissue application because the consent requirement of pre-AIA 37 CFR 1.172(a) for each owner/assignee is not met. Resort to the courts would be required to delete the name of inventor X as an inventor where X will not consent to the filing of a reissue application. As stated in the second paragraph of pre-AIA 35 U.S.C. 256, “[t]he court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.”
1413 Drawings [R-11.2013]
37 CFR 1.173 Reissue specification, drawings, and amendments.
*****
(a)(2) Drawings . Applicant must submit a clean copy of each drawing sheet of the printed patent at the time the reissue application is filed. If such copy complies with § 1.84, no further drawings will be required. Where a drawing of the reissue application is to include any changes relative to the patent being reissued, the changes to the drawing must be made in accordance with paragraph (b)(3) of this section. The Office will not transfer the drawings from the patent file to the reissue application.
*****
A clean copy (e.g., good quality photocopies free of any extraneous markings) of each drawing sheet of the printed patent must be supplied by the applicant
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at the time of filing of the reissue application. If the copies meet the requirements of 37 CFR 1.84, no further formal drawings will be required. New drawing sheets are not to be submitted, unless some change is made in the original patent drawings. Such changes must be made in accordance with 37 CFR 1.173(b)(3).
AMENDMENT OF DRAWINGS
37 CFR 1.173 Reissue specification, drawings, and amendments.
*****
(b)(3) Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event that a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.” All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
*****
The provisions of 37 CFR 1.173(b)(3) govern the manner of making amendments (changes) to the drawings in a reissue application. The following guidance is provided as to the procedure for amending drawings:
(A) Amending the original or printed patent drawing sheets by physically changing or altering them is not permitted. Any request to do so should be denied.
(B) Where a change to the drawings is desired, applicant must submit a replacement sheet for each sheet of drawings containing a Figure to be revised. Any replacement sheet must comply with 37 CFR 1.84 and include all of the figures appearing on the original version of the sheet, even if only one figure is being amended. Each figure that is amended must be identified by placing the word “Amended” at the bottom of that figure. Any added figure must be identified as “New.” In the event that a figure is canceled, the figure must be identified as “Canceled” and also surrounded by brackets. All changes to the figure(s) must be explained, in detail, beginning on
a separate sheet which accompanies the papers including the amendment to the drawings.
(C) If desired, applicant may include a marked-up copy of any amended drawing figure, including annotations indicating the changes made. Such a marked-up copy must be clearly labeled as “Annotated Marked-up Drawings”, and it must be presented in the amendment or remarks section that explains the change to the drawings.
In addition, the examiner may desire a marked-up copy of any amended drawing figure, and so state in an Office action. A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
(D) If any drawing change is not approved, or if any submitted sheet of drawings is not entered, the examiner will so inform the reissue applicant in the next Office action, and the examiner will set forth the reasons for same.
1414 Content of Reissue Oath/Declaration [R-11.2013]
The reissue oath/declaration as required by 37 CFR 1.175 is an essential part of a reissue application and must be filed with the application, or within the time period set under 37 CFR 1.53(f) along with the required surcharge as set forth in 37 CFR 1.16(f) in order to avoid abandonment. The question of the sufficiency of the reissue oath/declaration filed under 37 CFR 1.175 must in each case be reviewed and decided personally by the primary examiner.
Much of the required content of a reissue oath or declaration will differ based on the filing date of the reissue application. However, all reissue oaths or declarations must contain the following:
(A) A statement that the applicant believes the original patent to be wholly or partly inoperative or invalid—
(1) by reason of a defective specification or drawing, or
(2) by reason of the patentee claiming more or less than patentee had the right to claim in the patent; and
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(B) A statement of at least one error which is relied upon to support the reissue application, i.e., as the basis for the reissue;
Subsections I and II below describe the requirements for each of the aforementioned statements. See MPEP § 1414.01 for the remaining requirements for the reissue oath or declaration in a reissue application filed on or after September 16, 2012; § 1414.02 for the remaining requirements of a reissue oath or declaration in a reissue application filed before September 16, 2012; and § 1414.03 for supplemental reissue oaths or declarations in reissue applications filed before September 16, 2012.
I. A STATEMENT THAT THE APPLICANT BELIEVES THE ORIGINAL PATENT TO BE WHOLLY OR PARTLY INOPERATIVE OR INVALID BY REASON OF A DEFECTIVE SPECIFICATION OR DRAWING, OR BY REASON OF THE PATENTEE CLAIMING MORE OR LESS THAN PATENTEE HAD THE RIGHT TO CLAIM IN THE PATENT
In order to satisfy this requirement, a declaration can state for example:
1. “Applicant believes the original patent to be partly inoperative or invalid by reason of a defective specification or drawing.”
2. “Applicant believes the original patent to be partly inoperative or invalid by reason of the patentee claiming more than patentee had a right to claim in the patent.”
3. “Applicant believes the original patent to be partly inoperative or invalid by reason of the patentee claiming less than patentee had a right to claim in the patent.”
It should be noted that the reissue oath/declaration must also satisfy the requirement for a statement of at least one error being relied upon as the basis for reissue, in the manner set forth in subsection II. below.
Even though only one error upon which reissue is based needs to be described in the reissue oath/declaration, if PTO/SB/51 or PTO/SB/52 form is used (or PTO/AIA/05 or PTO/AIA/06, for applications filed on or after September 16, 2012), applicant needs to check the appropriate box(es) on
the form identifying each of the reasons why the patent is wholly or partly inoperative or invalid. Even if a PTO form is not used, applicant needs to state all the reasons why the patent is wholly or partly inoperative or invalid in the reissue oath/declaration.
Form paragraph 14.01.05 may be used where the reissue oath/declaration does not provide the required statement as to applicant’s belief that the original patent is wholly or partly inoperative or invalid.
¶ 14.01.05 Defective Reissue Oath/Declaration, 37 CFR 1.175 - No Statement of Defect in the Patent
The reissue oath/declaration filed with this application is defective because it fails to contain the statement(s) required under 37 CFR 1.175 as to applicant’s belief that the original patent is wholly or partly inoperative or invalid. [1]
Examiner Note:
1. Use this form paragraph when applicant: (a) fails to allege that the original patent is inoperative or invalid and/or (b) fails to state the reason of a defective specification or drawing, or of patentee claiming more or less than patentee had the right to claim in the patent. In bracket 1, point out the specific defect to applicant by using the language of (a) and/or (b), as it is appropriate.
2. Form paragraph 14.14 must follow this form paragraph.
II. A STATEMENT OF AT LEAST ONE ERROR WHICH IS RELIED UPON TO SUPPORT THE REISSUE APPLICATION (I.E., THE BASIS FOR THE REISSUE)
(A) A reissue applicant must acknowledge the existence of an error in the specification, drawings, or claims, which error causes the original patent to be defective. In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). A change or departure from the original specification or claims represents an “error” in the original patent under 35 U.S.C. 251. See MPEP § 1402 for a discussion of grounds for filing a reissue that may constitute the “error” required by 35 U.S.C. 251. Not all changes with respect to the patent constitute the “error” required by 35 U.S.C. 251. It is noted that an error to be corrected under 35 U.S.C. 251 may be the addition of a claim or claims that is/are narrower in scope than the existing patent claims, without any narrowing of the existing patent claims. See In re Tanaka, 640 F.3d 1246, 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011).
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(B) Applicant need only specify in the reissue oath/declaration one of the errors upon which reissue is based. Where applicant specifies one such error, this requirement of a reissue oath/declaration is satisfied. Applicant may specify more than one error.
Where more than one error is specified in the oath/declaration and some of the designated “errors” are found to not be “errors” under 35 U.S.C. 251, any remaining error which is an error under 35 U.S.C. 251 will still support the reissue.
The “at least one error” which is relied upon to support the reissue application must be set forth in the oath/declaration. It is not necessary, however, to point out how (or when) the error arose or occurred. Further, it is not necessary to point out how (or when) the error was discovered. If an applicant chooses to point out these matters, the statements directed to these matters will not be reviewed by the examiner, and the applicant should be so informed in the next Office action. What is needed for the oath/declaration statement as to error is the identification of “at least one error” relied upon. For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In identifying the error, it is sufficient that the reissue oath/declaration identify a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. The corresponding corrective action which has been taken to correct the original patent need not be identified in the oath/declaration. If the initial reissue oath/declaration “states at least one error” in the original patent, and, in addition, recites the specific corrective action taken in the reissue application, the oath/declaration would be considered acceptable, even though the corrective action statement is not required.
(C) It is not sufficient for an oath/declaration to merely state “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.” Rather, the oath/declaration must specifically identify an error. In addition, it is not sufficient to merely reproduce
the claims with brackets and underlining and state that such will identify the error. See In re Constant, 827 F.2d 728, 729, 3 USPQ2d 1479 (Fed. Cir.), cert. denied, 484 U.S. 894 (1987). Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
A statement in the oath/declaration of “…failure to include a claim directed to…” and then reciting all the limitations of a newly added claim, would not be considered a sufficient “error” statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa. Such a statement would be no better than saying in the reissue oath or declaration that “this application is being filed to correct errors in the patent which may be noted from the change made by adding new claim 10.” In both cases, the error has not been identified.
Likewise, a statement of the error as “…the inclusion of claims 3-5 which were unduly broad…” and then canceling claims 3-5, would not be considered a sufficient “error” statement because applicant has not pointed out what the canceled claims lacked that the remaining claims contain. The statement of what the remaining claims contain need not identify specific limitations, but rather may provide a general identification, such as “Claims 3-5 did not provide for any of the tracking mechanisms of claims 6-12, nor did they provide an attachment mechanism such as those in claims 1-2 and 9-16.”
(D) Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is not to be abandoned, the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP) without further evaluation, because it is an oath/declaration, albeit improper under 35 U.S.C. 251. The examiner should, however, reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration. See 37 CFR 1.175(f)(2) for reissue applications filed on or after September 16, 2012, and pre-AIA 37 CFR 1.175(e) for reissue applications filed before September 16, 2012. One
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of form paragraphs 14.01.01 through 14.01.03 may be used. If the same error corrected in the parent is also being corrected in the continuation reissue application, but the error is being corrected in a different way, a petition under 37 CFR 1. 183 will be needed to waive pre-AIA 37 CFR 1.175(e) for a reissue application filed before September 16, 2012. If the reissue application was filed on or after September 16, 2012, a petition under 37 CFR 1. 183 is no longer needed; however, a statement is needed to explain compliance with 37 CFR 1.175(f)(2). Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is, or will be abandoned, the copy of the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP), and the examiner should check to ensure that the oath/declaration identifies an error which is still being corrected in the continuation application. For reissue applications filed before September 16, 2012, pursuant to pre-AIA 37 CFR 1.175(b)(1), for any error corrected via the preliminary amendment which is not covered by the oath or declaration submitted in the parent reissue application, applicant must submit a supplemental oath/declaration stating that such error arose without any deceptive intention on the part of the applicant. See MPEP § 1414.03. Where a divisional reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, the reissue oath/declaration should be accepted by OPAP, because it is an oath/declaration, though it may be improper under 35 U.S.C. 251. The examiner should check the copy of the oath/declaration to ensure that it identifies an error being corrected by the divisional reissue application. The copy of the oath/declaration from the parent reissue application may or may not cover an error being corrected by the divisional reissue application because the divisional reissue application is (by definition) directed to a new invention. If the copy of the oath/declaration does not cover an error being corrected by the divisional reissue application, the examiner should reject the claims of the divisional reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the divisional reissue application, and require a new oath/declaration. Even where the divisional reissue application was filed on or after September 16, 2012, a new reissue oath/declaration will be required,
because the divisional reissue application is a new application, and a new application requires the error to be set forth in the oath/declaration. If the copy of the reissue oath/declaration from the parent reissue application does in fact cover an error being corrected in the divisional reissue application, no such rejection should be made. See MPEP § 1414.01. Form paragraph 14.01.01 may be used where the reissue oath/declaration does not identify an error. ¶ 14.01.01 Defective Reissue Oath/Declaration, 37 CFR 1.175 - No Statement of a Specific Error
The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
Examiner Note:
1. Use this form paragraph when the reissue oath or declaration does not contain any statement of an error which is relied upon to support the reissue application.
2. This form paragraph can be used where the reissue oath or declaration does not even mention error. It can also be used where the reissue oath or declaration contains some discussion of the concept of error but never in fact identifies a specific error to be relied upon. For example, it is not sufficient for an oath or declaration to merely state “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.”
3. Form paragraph 14.14 must follow this form paragraph.
Where the reissue oath/declaration does identify an error or errors, the oath/declaration must be checked carefully to ensure that at least one of the errors identified is indeed an “error” which will support the filing of a reissue, i.e., an “error” that will provide grounds for reissue of the patent. See MPEP § 1402. If the error identified in the oath/declaration is not an appropriate error upon which a reissue can be based, then the oath/declaration must be indicated to be defective in the examiner’s Office action.
Form paragraphs 14.01.02 and 14.01.03 may be used where the reissue oath/declaration fails to provide at least one error upon which a reissue can be based.
¶ 14.01.02 Defective Reissue Oath/Declaration, 37 CFR 1.175 - The Identified “Error” Is Not Appropriate Error
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.
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Examiner Note:
1. Use this form paragraph when the reissue oath/declaration identifies only one error which is relied upon to support the reissue application, and that one error is not an appropriate error upon which a reissue can be based.
2. Form paragraph 14.14 must follow this form paragraph.
¶ 14.01.03 Defective Reissue Oath/Declaration, 37 CFR 1.175 - Multiple Identified “Errors” Not Appropriate Errors
The reissue oath/declaration filed with this application is defective because none of the errors which are relied upon to support the reissue application are errors upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.
Examiner Note:
1. Use this form paragraph when the reissue oath/declaration identifies more than one error relied upon to support the reissue application, and none of the errors are appropriate errors upon which a reissue can be based.
2. Note that if the reissue oath/declaration identifies more than one error relied upon, and at least one of the errors is an error upon which reissue can be based, this form paragraph should not be used, despite the additional reliance by applicant on “errors” which do not support the reissue. Only one appropriate error is needed to support a reissue.
3. Form paragraph 14.14 must follow this form paragraph.
¶ 14.01.06 Defective Reissue Oath/Declaration, 37 CFR 1.175 - General
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
Examiner Note:
1. Use this form paragraph when the reissue oath/declaration does not comply with 37 CFR 1.175, and none of form paragraphs 14.01.01 - 14.01.05 or 14.05.02 apply.
2. This form paragraph must be followed by an explanation of why the reissue oath/declaration is defective.
3. Form paragraph 14.14 must follow the explanation of the defect.
¶ 14.14 Rejection, Defective Reissue Oath or Declaration
Claim [1] rejected as being based upon a defective reissue [2] under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the [3] is set forth in the discussion above in this Office action.
Examiner Note:
1. In bracket 1, list all claims in the reissue application. See MPEP § 706.03(x).
2. This paragraph must be preceded by form paragraph 14.01 and should be preceded by form paragraphs 14.01.01 to 14.01.06 as appropriate
3. In brackets 2 and 3, insert either --oath-- or --declaration--.
1414.01 Reissue Oath or Declaration in Reissue Application Filed On or After September 16, 2012 [R-11.2013]
[Editor Note: See MPEP § 1414.02 for reissue applications filed before September 16, 2012.]
37 CFR 1.175 Inventor's oath or declaration for a reissue application.
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor’s oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
(c) The inventor, or each individual who is a joint inventor of a claimed invention, in a reissue application must execute an oath or declaration for the reissue application, except as provided for in § 1.64, and except that the inventor’s oath or declaration for a reissue application may be signed by the assignee of the entire interest if:
(1) The application does not seek to enlarge the scope of the claims of the original patent; or
(2) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.
(d) If errors previously identified in the inventor’s oath or declaration for a reissue application pursuant to paragraph (a) of this section are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.
(e) The inventor’s oath or declaration for a reissue application required by paragraph (a) of this section may be submitted under the provisions of § 1.53(f), except that the provisions of § 1.53(f)(3) do not apply to a reissue application.
(f)(1) The requirement for the inventor’s oath or declaration for a continuing reissue application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) in compliance with § 1.78 of an earlier-filed reissue application may be satisfied by
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a copy of the inventor’s oath or declaration from the earlier-filed reissue application, provided that:
(i) The inventor, or each individual who is a joint inventor of a claimed invention, in the reissue application executed an inventor’s oath or declaration for the earlier-filed reissue application, except as provided for in § 1.64;
(ii) The continuing reissue application does not seek to enlarge the scope of the claims of the original patent; or
(iii) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.
(2) If all errors identified in the inventor’s oath or declaration from the earlier-filed reissue application are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.
(g) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1), will be placed in the file record of the reissue application, but may not necessarily be reviewed by the Office.
The inventor’s oath or declaration for a reissue application must comply with the requirements of 37 CFR 1.63, 1.64, or 1.67. Therefore, in addition to identifying the inventor or joint inventor and the application to which it is directed, the reissue oath/declaration must
(A) include a statement that the person executing the oath or declaration believes the
named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application; and (B) state that the application was made or was authorized to be made by the person executing the oath or declaration.
In accordance with 37 CFR 1.63(c), a person may not execute an oath or declaration for an application unless that person has reviewed and understand the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to the patentability as defined in 37 CFR 1.56. See also the discussion regarding the requirements of an oath/declaration beginning at MPEP § 602. See also MPEP § 604 for the requirements of a substitute statement under 37 CFR 1.64.
Depending on the circumstances, either form PTO/AIA/05, Reissue Application Declaration By The Inventor, or form PTO/AIA/06, Reissue Application Declaration By The Assignee, may be used to prepare a declaration in a reissue application.
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1414.02 Reissue Oath or Declaration in Reissue Application Filed Before September 16, 2012 [R-11.2013]
[Editor Note: See MPEP § 1414.01 for reissue applications filed on or after September 16, 2012.]
Pre-AIA 37 CFR 1.175 Reissue oath or declaration.
(a) The reissue oath or declaration in addition to complying with the requirements of § 1.63, must also state that:
(1) The applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent, stating at least one error being relied upon as the basis for reissue; and
(2) All errors being corrected in the reissue application up to the time of filing of the oath or declaration under this paragraph arose without any deceptive intention on the part of the applicant.
(b)(1) For any error corrected, which is not covered by the oath or declaration submitted under paragraph (a) of this section, applicant must submit a supplemental oath or declaration stating that every such error arose without any deceptive intention on the part of the applicant. Any supplemental oath or declaration required by this paragraph must be submitted before allowance and may be submitted:
(i) With any amendment prior to allowance; or
(ii) In order to overcome a rejection under 35 U.S.C. 251 made by the examiner where it is indicated that the submission of a supplemental oath or declaration as required by this paragraph will overcome the rejection.
(2) For any error sought to be corrected after allowance, a supplemental oath or declaration must accompany the requested correction stating that the error(s) to be corrected arose without any deceptive intention on the part of the applicant.
(c) Having once stated an error upon which the reissue is based, as set forth in paragraph (a)(1), unless all errors previously stated in the oath or declaration are no longer being corrected, a subsequent oath or declaration under paragraph (b) of this section need not specifically identify any other error or errors being corrected.
(d) The oath or declaration required by paragraph (a) of this section may be submitted under the provisions of § 1.53(f).
(e) The filing of any continuing reissue application which does not replace its parent reissue application must include an oath or declaration which, pursuant to paragraph (a)(1) of this section, identifies at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application. All other requirements relating to oaths or declarations must also be met.
I. ERROR WITHOUT DECEPTIVE INTENT
A statement in the reissue oath or declaration that all errors being corrected in the reissue application arose without any deceptive intention on the part of the applicant is required for a reissue application filed before September 16, 2012. In order to satisfy this requirement, the following statement may be included:
“All errors corrected in the present reissue application up to the time of signing of this oath/declaration, or errors which are being corrected by a paper filed concurrently with this oath/declaration which correction of errors I/we have reviewed, arose without any deceptive intention on the part of the applicant.”
Nothing more is required. The examiner will determine only whether the reissue oath/declaration contains the required averment; the examiner will not make any comment as to whether it appears that there was in fact deceptive intention (see MPEP § 2022.05). It is noted that a reissue oath/declaration will not be effective for any errors which are corrected by a filing made after the execution of the reissue oath/declaration, unless it is clear from the record that the parties executing the document were aware of the nature of the correction when they executed the document. Further, a reissue oath/declaration with an early date of execution cannot be filed after a correction made later in time, to cover the correction made after the execution date. This is so, even if the reissue oath/declaration states that all errors up to the filing of the oath/declaration arose without any deceptive intention on the part of the applicant.
Form paragraph 14.01.04 may be used where the reissue oath/declaration does not provide the required statement as to “without any deceptive intention on the part of the applicant.”
¶ 14.01.04.fti Defective Reissue Oath/Declaration in Application Filed Before Sept. 16, 2012, 37 CFR 1.175- Lack of Statement of “Without Any Deceptive Intention”
The reissue oath/declaration filed with this application, which has a filing date before September 16, 2012, is defective because it fails to contain a statement that all errors which are being corrected in the reissue application up to the time of filing of
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the oath/declaration arose without any deceptive intention on the part of the applicant. See pre-AIA 37 CFR 1.175 and MPEP § 1414.
Examiner Note:
1. For reissue applications filed before September 16, 2012, use this form paragraph when the reissue oath/declaration does not contain the statement required by pre-AIA 37 CFR 1.175 that all errors being corrected in the reissue application arose without any deceptive intention on the part of the applicant.
2. This form paragraph is appropriate to use for a failure by applicant to comply with the requirement, as to any of pre-AIA 37 CFR 1.175(a)(2), 37 CFR 1.175(b)(1), or 37 CFR 1.175(b)(2).
3. Form paragraph 14.14 must follow.
II. THE REISSUE OATH/DECLARATION MUST COMPLY WITH PRE-AIA 37 CFR 1.63
The Office of Patent Application Processing (OPAP) should review the reissue oath/declaration for compliance with pre-AIA 37 CFR 1.63; thus, the examiner is not required to do such review.
The reissue oath/declaration must include the averments required by 37 CFR 1.63(a) and (b), e.g., that applicants for reissue
(A) have reviewed and understand the contents of the specification, including the claims, as amended by any amendment specifically referred to in the oath/declaration; (B) believe the named inventor or inventors to be the original and the first inventor or inventors of the subject matter which is claimed and for which a patent is sought; and (C) acknowledge the duty to disclose to the Office all information known to the person to be material to patentability as defined in 37 CFR 1.56. See also the discussion regarding the requirements of an oath/declaration beginning at MPEP § 602.
See MPEP § 1414.03 for a discussion of the requirements for a supplemental reissue oath/declaration.
Depending on the circumstances, either form PTO/SB/51, Reissue Application Declaration By The Inventor, or form PTO/SB/52, Reissue Application Declaration By The Assignee, may be used to prepare a declaration in a reissue application.
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1414.03 Supplemental Reissue Oath/Declaration [R-11.2013]
I. REISSUE APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012
[Editor Note: See subsection II., below, for reissue applications filed before September 16, 2012.]
Pursuant to 37 CFR 1.67(a), the applicant may submit an inventor's oath or declaration meeting the requirements of 37 CFR 1.63, 1.64, or 1.162 to correct any deficiencies or inaccuracies present in an earlier-filed inventor's oath or declaration.
For applications filed on or after September 16, 2012, if additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, a supplemental reissue oath or declaration is not required. However, where all errors previously identified in the reissue oath/declaration are no longer being replied upon as the basis for reissue, the applicant must explicitly identify on the record an error being relied upon as the basis for reissue (e.g., in the remarks accompanying an amendment). See 37 CFR 1.175(d). Identification of the error must be conspicuous and clear, and must comply with 35 U.S.C. 251.
II. REISSUE APPLICATION FILED BEFORE SEPTEMBER 16, 2012
[Editor Note: See subsection I., above, for reissue applications filed on or after September 16, 2012.]
For applications filed before September 16, 2012, if additional defects or errors are corrected in the reissue after the filing of the application and the original reissue oath or declaration, a supplemental reissue oath/declaration must be filed, unless all additional errors corrected are spelling, grammar, typographical, editorial or clerical errors which are not errors under 35 U.S.C. 251 (see MPEP § 1402). In other words, a supplemental oath/declaration is required where any “error” under 35 U.S.C. 251 has been previously corrected, or is being corrected at the time the supplemental reissue oath/declaration is submitted, and the error was not identified in a previously filed reissue oath/declaration.
The supplemental reissue oath/declaration must state that every error which was corrected in the reissue application not covered by the prior oath(s)/declaration(s) submitted in the application arose without any deceptive intention on the part of the applicant
An example of acceptable language is as follows:
“Every error in the patent which was corrected in the present reissue application, and is not covered by the prior declaration submitted in this application, arose without any deceptive intention on the part of the applicant.”
A supplemental reissue oath/declaration will not be effective for any errors which are corrected by a filing made after the execution of the supplemental reissue oath/declaration, unless it is clear from the record that the parties executing the document were aware of the nature of the correction when they executed the document. Further, a supplemental reissue oath/declaration with an early date of execution cannot be filed after a correction made later in time, to cover the correction made after the execution date. This is so, even if the supplemental reissue oath/declaration states that all errors up to the filing of the supplemental reissue oath/declaration oath or declaration arose without any deceptive intention on the part of the applicant.
Form PTO/SB/51S, “Supplemental Declaration For Reissue Patent Application To Correct ‘Errors’ Statement (37 CFR 1.175),” may be used to prepare a supplemental reissue declaration. Form PTO/SB/51S serves to indicate that every error in the patent that was corrected in the reissue application, but was not covered by a prior reissue oath/declaration submitted in the reissue application, arose without any deceptive intention on the part of the applicant.
In the event that the applicant for a reissue applicant is required to file a supplemental reissue oath/declaration that also includes a specific statement of the error being corrected by reissue in accordance with pre-AIA 37 CFR 1.175(c), as discussed in subsection A. below, applicant must also include in the supplemental declaration language
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equivalent to the “Every error …” language in the example of acceptable language set forth above. Therefore, if either form PTO/SB/51, “Reissue Application Declaration By The Inventor,” or form PTO/SB/52, “Declaration By The Assignee” (see MPEP § 1414) is used for the purpose of filing such supplemental reissue oath/declaration, the form must be completed so that it is clear that the supplemental reissue oath/declaration addresses all errors corrected subsequent to the date upon which the last previous reissue oath/declaration (whether original or supplemental) was filed. For example, the form could be completed by specifying the date upon which the reissue application was originally filed, the reissue application number, and the date(s) of every amendment filed subsequent to the date upon which the last reissue oath/declaration (whether original or supplemental) was filed. Any manner of completing the form so that affiant/declarant unambiguously states that every error corrected subsequent to the filing of the last filed reissue oath/declaration (whether original or supplemental) arose without deceptive intent will be acceptable. It will not be acceptable for a newly filed supplemental oath/declaration to simply refer to the reissue application as filed, even though the new oath/declaration may be submitted after an amendment.
A. When An Error Must Be Specifically Identified In The Supplemental Oath/Declaration
In the supplemental reissue oath/declaration, there is no need to specifically identify any additional error which is relied upon to support the reissue application if:
(A) an error to support a reissue has been previously and properly stated in a reissue oath/declaration in the publication; and
(B) that error is still being corrected in the reissue application.
If applicant chooses to state any further error at this point (even though such is not needed), the examiner should not review the statement of the further error.
The supplemental reissue oath/declaration must specifically identify an error which is relied upon to
support the reissue application only where one of the following is true:
(A) the prior reissue oath/declaration failed to state an error;
(B) the prior reissue oath/declaration attempted to state an error but did not do so properly; or
(C) all errors under 35 U.S.C. 251 stated in the prior reissue oath(s)/declaration(s) are no longer being corrected in the reissue application.
B. Supplemental Oath/Declaration Must Be Submitted Before Allowance
The supplemental oath/declaration in accordance with pre-AIA 37 CFR 1.175(b)(1) must be submitted before allowance. See MPEP § 1444 for a discussion of the action to be taken by the examiner to obtain the supplemental oath/declaration in accordance with pre-AIA 37 CFR 1.175(b)(1), where such is needed.
Where applicant seeks to correct an error after allowance of the reissue application, a supplemental reissue oath/declaration must accompany the requested correction stating that the error(s) to be corrected arose without any deceptive intention on the part of the applicant. The supplemental reissue oath/declaration submitted after allowance will be directed to the error applicant seeks to correct after allowance. This supplemental oath/declaration need not cover any earlier errors, because all earlier errors should have been covered by a reissue oath/declaration submitted before allowance.
C. Supplemental Oath/Declaration In Broadening Reissue
A broadening reissue application must be applied for by all of the inventors (patentees), that is, the original reissue oath/declaration must be signed by all of the inventors. See MPEP § 1414. If a supplemental oath/declaration in a broadening reissue application is subsequently needed in the application in order to fulfill the requirements of 37 CFR 1.175, the supplemental reissue oath/declaration must be signed by all of the inventors. In re Hayes, 53 USPQ2d 1222, 1224 (Comm’r Pat. 1999) (“37 CFR 1.175(b)(1), taken in conjunction with Section 1.172, requires a supplemental declaration be signed by all of the inventors. This is because all oaths or
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declarations necessary to fulfill the rule requirements in a reissue application are taken together collectively as a single oath or declaration. Thus, each oath and declaration must bear the appropriate signatures of all the inventors.”).
If a joint inventor refuses or cannot be found or reached to sign a supplemental oath/declaration, a supplemental oath/declaration listing all the inventors, and signed by all the available inventors may be filed provided it is accompanied by a petition under 37 CFR 1.183 along with the petition fee, requesting waiver of the signature requirement of the nonsigning inventor.
1415 Reissue Application and Issue Fees [R-11.2013]
I. BASIC REISSUE APPLICATION FILING, SEARCH, AND EXAMINATION FEES
For reissue applications, the following fees are required: basic filing fee as set forth in 37 CFR 1.16(e); search fee as set forth in 37 CFR 1.16(n); examination fee as set forth in 37 CFR 1.16(r); application size fee, if applicable (see subsection II. below); and excess claims fees, if applicable (see subsection III. below).
The basic filing, search and examination fees are due on filing of the reissue application. These fees may be paid on a date later than the filing date of the reissue application provided they are paid within the time period set forth in 37 CFR 1.53(f) and include the surcharge set forth in 37 CFR 1.16(f).
For reissue applications in which a petition under 37 CFR 1.138(d) to expressly abandon the application was filed applicant may file a request for refund of the search fee and excess claims fee paid in the application. See MPEP § 711.01.
II. APPLICATION SIZE FEE
37 CFR 1.16(s) sets forth the application size fee the specification and drawings of which, excluding a sequence listing or computer program listing filed in an electronic medium in compliance with the rules (see 37 CFR 1.52(f)), exceed 100 sheets of paper. The application size fee applies for each additional
50 sheets or fraction thereof over 100 sheets of paper. Any sequence listing in an electronic medium in compliance with 37 CFR 1.52(e) and 37 CFR 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with 37 CFR 1.52(e) and 1.96, will be excluded when determining the application size fee required by 37 CFR 1.16(s). See also MPEP § 607.
III. EXCESS CLAIMS FEES
37 CFR 1.16(h) sets forth the excess claims fee for each independent claim in excess of three. 37 CFR 1.16(i) sets forth the excess claims fee for each claim (whether independent or dependent) in excess of twenty. For reissue applications filed on or after December 8, 2004, in which a petition under 37 CFR 1.138(d) to expressly abandon the application was filed on or after March 10, 2006, applicant may file a request for refund of the search fee and excess claims fee paid in the application. See MPEP § 711.01.
Under 37 CFR 1.16(h) and (i), the number of claims in the original patent is not relevant in determining the excess claims fee for a reissue application.
Example:
Applicant filed a reissue application with the same number of claims as in the patent. The patent has 4 independent claims and
21 total claims. Excess claims fees for the 4th independent claim (one additional independent claim per the fee set forth in 37
CFR 1.16(h)) and the 21st claim (one additional total claim per the fee set forth in 37 CFR 1.16(i)) are required. Under 37 CFR 1.16(h) and (i) , the number of claims in the original patent is not relevant in determining the excess claims fees for a reissue application.
The excess claims fees, if any, due with an amendment are required before any consideration of the amendment by the examiner. Upon submission of an amendment (whether entered or not) affecting the claims, payment of fees for those claims in excess of the number previously paid for is required. The additional fees, if any, due with an amendment are calculated on the basis of the claims (total and independent) which would be present, if the amendment were entered. If an amendment is limited to revising the existing claims and it does not result in the addition of any new claim, there is no excess
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claim fee. Excess claims fees apply only to the addition of claims. It is to be noted that where excess claims fees have been previously paid, a later amendment affecting the claims cannot serve as the basis for granting any refund. See 37 CFR 1.26(a).
Amendments filed before a first Office action, or otherwise not filed in reply to an Office action, presenting additional claims in excess of the number already paid for, not accompanied by the full additional claims fee due, will not be entered in whole or in part and applicant will be so notified. Such amendments filed in reply to an Office action will be regarded as being non-responsive to the Office action and the practice set forth in MPEP § 714.03 will be followed.
An amendment canceling claims accompanying the papers constituting the reissue application will be effective to diminish the number of claims to be considered in calculating the filing fees to be paid. A preliminary amendment filed concurrently with a reply to a Notice To File Missing Parts of Application that required the filing fees, which preliminary amendment cancels or adds claims, will be taken into account in determining the appropriate filing fees due in response to the Notice To File Missing Parts of Application. However, no refund will be made for claims being canceled in the reply that have already been paid for. After a requirement for restriction, non-elected claims will be included in determining the fees due in connection with a subsequent amendment unless such claims are canceled.
IV. ISSUE FEE
The issue fee for issuing each reissue patent is set forth in 37 CFR 1.18(a).
V. REISSUE APPLICATION FEE TRANSMITTAL FORM
The Office has prepared Form PTO/SB/56, Reissue Application Fee Transmittal Forms which are designed to assist in the correct calculation of reissue filing fees. For reissue applications filed on or after September 16, 2012, use Form PTO/AIA/50; for reissue applications filed before September 16, 2012,
use Form PTO/SB/56. These forms are available at http://www.uspto.gov/forms/index.jsp.
1415.01 Maintenance Fees on the Original Patent [R-11.2013]
The filing of a reissue application does not alter the schedule of payments of maintenance fees on the original patent. If maintenance fees have not been paid on the original patent as required by 35 U.S.C. 41(b) and 37 CFR 1.20, and the patent has expired, no reissue patent can be granted. 35 U.S.C. 251, only authorizes the granting of a reissue patent for the unexpired term of the original patent. Once a patent has expired, the Director of the USPTO no longer has the authority under 35 U.S.C. 251 to reissue the patent. See In re Morgan, 990 F.2d 1230, 26 USPQ2d 1392 (Fed. Cir. 1993).
The examiner should determine whether all required maintenance fees have been paid before conducting an examination of a reissue application. In addition, during the process of preparing the reissue application for issue, the examiner should again determine whether all maintenance fees required to date have been paid.
The history of maintenance fees is determined by the following, all of which should be used (to provide a check on the search made):
(A) Go to the USPTO Intranet and select the PALM screen, then the “General Information” screen, type in the patent number and then select the “Fees” screen.
(B) Go to the USPTO Intranet and then the “Revenue Accounting and Management” screen, then the “Fee History” screen. Then type in the patent number.
(C) Go to the USPTO Internet Site at http://www.uspto.gov/patents/process/status/, select Public PAIR, type in the patent number and select the "Fees" screen.If the window for the maintenance fee due has closed (maintenance fees are due by the day of the 4th, 8th and 12th year anniversary of the grant of the patent), but the maintenance fee has not been paid, the Office of Patent Legal Administration (OPLA) should be contacted by the Technology Center (TC) Special Program Examiner (SPRE) or
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appropriate Quality Assurance Specialist (TC QAS) for instructions as to what appropriate action to take.
I. PAYMENT OF MAINTENANCE FEES WHERE THE PATENT HAS BEEN REISSUED
Pursuant to 37 CFR 1.362(b), maintenance fees are not required for a reissue patent if the original patent that was reissued did not require maintenance fees. Design and plant patents do not require the payment of maintenance fees. See 37 CFR 1.362(b).
Where the original patent that was reissued did require maintenance fees, the schedule of payments of maintenance fees on the original patent will continue for the reissue patent. 37 CFR 1.362(h). Once an original patent reissues, maintenance fees are no longer due in the original patent, but rather the maintenance fees are due in the reissue patent. This is because upon the issuance of the reissue patent, the original patent is surrendered and ceases to exist.
In some instances, more than one reissue patent will be granted to replace a single original patent. The issuance of more than one reissue patent does not alter the schedule of payments of maintenance fees on the original patent. The existence of multiple reissue patents for one original patent can arise where multiple divisional reissue applications are filed for the same patent, and the multiple applications issue as reissue patents (all to replace the same original patent). In addition, a divisional application or continuation application of an existing reissue application may be filed, and both may then issue as reissue patents. A single maintenance fee is required for all reissue patents that replace the single original patent. The maintenance fee must be directed to the latest reissue patent that has issued, i.e., the reissue patent with the highest reissue patent number.
See MPEP Chapter 2500 for additional information pertaining to maintenance fees.
1416 No Physical Surrender of Original Patent [R-11.2013]
37 CFR 1.178 Original patent; continuing duty of applicant.
(a) The application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender shall take
effect upon reissue of the patent. Until a reissue application is granted, the original patent shall remain in effect.
*****
Pursuant to 37 CFR 1.178(a), surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required. Prior to October 21, 2004, a reissue applicant was required to physically surrender the letters patent (i.e., the “ribbon copy” of the patent for which reissue was requested) before the reissue application would be granted. Where the patentee has submitted the original letters patent in a reissue application the Office may, in response to a timely request, return the original letters patent, when it can be readily retrieved from where it is stored, namely, the paper application file, or the artifact storage area for an Image File Wrapper (IFW) file. Any request for return of the letters patent which is submitted after the issue fee has been paid will require a petition pursuant to 37 CFR 1.59(b) to expunge from the file and return the original letters patent. Where the original letters patent cannot be readily retrieved, or in the rare instance that it has been subsequently misplaced, the Office will not be able to return the original letters patent and will not create a new one.
1417 Claim for Priority Under 35 U.S.C. 119(a)-(d) [R-11.2013]
I. PRIORITY UNDER 35 U.S.C. 119(a)-(d) WAS PERFECTED IN THE ORIGINAL PATENT
A claim for priority to an earlier filing date in a foreign country under 35 U.S.C. 119(a)-(d) must be made in a reissue application, even though such a claim was previously made in the application for the original patent to be reissued. However, no additional certified copy of the foreign application is necessary. See MPEP § 215 For reissue applications filed on or after September 16, 2012, the foreign priority information for the priority claim must be presented in an application data sheet (ADS) under 37 CFR 1.76. For applications filed prior to September 16, 2012, unless provided in an application data sheet, pre-AIA 37 CFR 1.63 requires that the oath or declaration must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the
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application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing. See MPEP § 214.01.
The examiner should note that the heading on printed copies of the patent will not be carried forward to the reissue from the original patent. Therefore, it is important that the PALM bibliographic data sheet accurately list the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. Should there be an error, the examiner should make the appropriate corrections on the PALM bib-data sheet by crossing out incorrect information with the Strike-Out Line tool in Adobe Acrobat and using the Typewriter tool to insert corrections. The examiner must also indicate on the Office action and on the PALM bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.
II. PRIORITY UNDER 35 U.S.C. 119(a)-(d) IS NEWLY PERFECTED IN THE REISSUE APPLICATION
A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the patent was granted. In Brenner, the claim for priority had been made in the prosecution of the original patent, and it was only necessary to submit a certified copy of the priority document in the reissue application to perfect priority (the claim for priority must be repeated in the reissue application). Reissue is also available to correct the “error” in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the original patent was granted. See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975) (“a patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application”) In a situation where it is necessary to submit for the first time both the claim for priority and the certified copy of the priority document in the reissue application and the patent to be reissued resulted from a utility or plant application filed on or after November 29,
2000, the reissue applicant will have to file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) (for reissue applications filed on or after March 16, 2013) or pre-AIA 37 CFR 1.55(c) (for reissue applications filed before March 16, 2013) in addition to filing a reissue application. See MPEP § 214.02. See MPEP § 1481.03 for correction of a benefit claim via a Certificate of Correction.
1418 Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known To Be Material to Patentability [R-11.2013]
37 CFR 1.178 Original patent; continuing duty of applicant. *****
(b) In any reissue application before the Office, the applicant must call to the attention of the Office any prior or concurrent proceedings in which the patent (for which reissue is requested) is or was involved, such as interferences, reissues, reexaminations, or litigations and the results of such proceedings (see also § 1.173(a)(1)).
37 CFR 1.178(b) requires reissue applicants to call to the attention of the Office any prior or concurrent proceeding in which the patent (for which reissue is requested) is or was involved and the results of such proceedings. These proceedings would include interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, and litigations. Litigation would encompass any papers filed in the court or issued by the court, which may include, for example, motions, pleadings, and court decisions. This duty to submit information is continuing, and runs from the time the reissue application is filed until the reissue application is abandoned or issues as a reissue patent.
In addition, a reissue application is subject to the same duty of disclosure requirements as is any other nonprovisional application. A person may not execute an oath or declaration unless that person is “aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.” 37 CFR 1.63. For reissue applications filed before September 16, 2012, the provisions of pre-AIA 37 CFR 1.63 require acknowledgment of this duty of disclosure in the reissue oath or declaration. Note that the Office imposes no responsibility on a reissue applicant to resubmit, in a reissue application, all the “References
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Cited” in the patent for which reissue is sought. Rather, applicant has a continuing duty under 37 CFR 1.56 to timely apprise the Office of any information which is material to the patentability of the claims under consideration in the reissue application.
37 CFR 1.97 and 37 CFR 1.98 provide a mechanism to submit information known to applicants to be material to patentability. Information submitted in compliance with 37 CFR 1.97 and 37 CFR 1.98 will be considered by the Office. See MPEP § 609. Although a reissue applicant may utilize 37 CFR 1.97 and 37 CFR 1.98 to comply with the duty of disclosure required by 37 CFR 1.56, this does not relieve applicant of the duties under 37 CFR 1.175 of, for example, stating “at least one error being relied upon.”
While 37 CFR 1.97(b) provides for the filing of an information disclosure statement within 3 months of the filing of an application or before the mailing date of a first Office action, reissue applicants are encouraged to file information disclosure statements at the time of filing of the reissue application so that such statements will be available to the public during the 2-month period provided in MPEP § 1441. Form paragraph 14.11.01 may be used to remind applicant of the duties to timely make the Office aware of (A) any prior or concurrent proceeding (e.g., litigation or Office proceedings) in which the patent to be reissued is or was involved, and (B) any information which is material to patentability of the claims in the reissue application.
¶ 14.11.01 Reminder of Duties Imposed by 37 CFR 1.178(b) and 37 CFR 1.56
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. [1] is or was involved. These proceedings would include any trial at the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Examiner Note:
1. This form paragraph is to be used in the first action in a reissue application.
2. In bracket 1, insert the patent number of the original patent for which reissue is requested.
1419 -1429 [Reserved]
1430 Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette [R-11.2013]
37 CFR 1.11 Files open to the public. *****
(b) All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor. The filing of reissue applications, other than continued prosecution applications under § 1.53(d) of reissue applications, will be announced in the Official Gazette. The announcement shall include at least the filing date, reissue application and original patent numbers, title, class and subclass, name of the inventor, name of the owner of record, name of the attorney or agent of record, and examining group to which the reissue application is assigned.
*****
Under 37 CFR 1.11(b) all reissue applications filed are open to inspection by the general public, and copies may be furnished upon paying the fee therefor. The filing of reissue applications (except for continued prosecution applications (CPA’s) filed under 37 CFR 1.53(d)) will be announced in the Official Gazette. The announcement gives interested members of the public an opportunity to submit to the examiner information pertinent to the patentability of the reissue application. The announcement includes the filing date, reissue application and original patent numbers, title, class and subclass, name of the inventor(s), name of the owner of record, name of the attorney or agent of record, and the Technology Center (TC) to which the reissue application is initially assigned. Where a reissue application seeks to change the inventorship of a patent, the names of the inventors of record of the patent file are set forth in the announcement, not the filing receipt, which sets forth the names of the inventors that the reissue application is seeking to make of record upon reissue of the patent.
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IFW reissue application files are open to inspection by the general public by way of Public PAIR via the USPTO Internet site. In viewing the images of the files, members of the public will be able to view the entire content of the reissue application file history. To access Public PAIR, a member of the public would go to the USPTO Web site at www.uspto.gov/patents/process/status/ , and click on "Public PAIR."
Where a “Notice to File Missing Parts of Reissue Application – Filing Date Granted” has been mailed by the Office for a reissue application, the reissue application will not necessarily be announced in the Official Gazette until all elements of the Notice to File Missing Parts have been complied with. This is because the information required by 37 CFR 1.11(b) for the Official Gazette announcement may be missing as indicated in the Notice to File Missing Parts. A notice of a reissue application in the Official Gazette should be published before any examination of the application. If an inadvertent failure to publish notice of the filing of the reissue application in the
Official Gazette is recognized later in the examination, action should be taken to have the notice published as quickly as possible, and action on the application may be delayed until two months after the publication, allowing for any protests to be filed. For a discussion of protests, see MPEP Chapter 1900.
The filing of a continued prosecution application (CPA) of a design reissue application under 37 CFR 1.53(d) (effective July 14, 2003, CPA practice was eliminated as to utility and plant applications) will not be announced in the Official Gazette. Although the filing of a CPA of a design reissue application constitutes the filing of a reissue application, the announcement of the filing of such CPA would be redundant in view of the announcement of the filing of the prior reissue application in the Official Gazette and the fact that the same application number and file will continue to be used for the CPA.
If applicant files a Request for Continued Examination (RCE) of the reissue application under 37 CFR 1.114 (which can be filed on or after May 29, 2000 for a reissue application filed on or after June 8, 1995), such filing will not be announced in the Official Gazette. An RCE continues prosecution
of the existing reissue application and is not a filing of a new application.
The filing of all reissue applications, except for design reissue CPAs filed under 37 CFR 1.53(d), (note that effective July 14, 2003, CPA practice has been eliminated as to utility and plant application) will be announced in the Official Gazette and will include certain identifying data as specified in 37 CFR 1.11(b).
1431 -1439 [Reserved]
1440 Examination of Reissue Application [R-11.2013]
37 CFR 1.176 Examination of reissue.
(a) A reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications. Applications for reissue will be acted on by the examiner in advance of other applications.
(b) Restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required). If restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.
37 CFR 1.176 provides that an original claim, if re-presented in a reissue application, will be fully examined in the same manner, and subject to the same rules as if being presented for the first time in an original non-reissue, nonprovisional application, except that division will not be required by the examiner. See MPEP § 1450 and § 1451. As discussed below, however, the prior art available during the examination of the reissue application may differ from that available during the examination of the patent for which reissue is requested depending on the effective filing date of the claims in the reissue application. In addition, the application will be examined with respect to compliance with 37 CFR 1.171-1.178 relating specifically to reissue applications, for example, the reissue oath or declaration will be carefully reviewed for compliance with 37 CFR 1.175. See MPEP § 1444 for handling applications in which the oath or
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declaration lacks compliance with 37 CFR 1.175. Reissue applications with related litigation will be acted on by the examiner before any other special applications, and will be acted on immediately by the examiner, subject only to a 2-month delay after publication for examining reissue applications; see MPEP § 1441.
The original patent file wrapper/file history should always be reviewed when examining a reissue application thereof.
I. DETERMINING PATENTABILITY OVER THE PRIOR ART
The Leahy-SmithAmerica InventsAct (AIA) revised 35 U.S.C. 102 and thereby, the standard to determine what prior art is available during examination of an application. See Public Law 112-29, 125 Stat. 284 (2011). The changes to 35 U.S.C. 102 and 103 in the AIA (first inventor to file provisions) do not apply to any application filed before March 16, 2013. Thus, any application filed before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103. AIA 35 U.S.C. 102 and 103 apply to any patent application that contains or contained at any time a claim to a claimed invention that has an effective filing date that is on or after March 16, 2013. See MPEP §§ 2159 et seq. to determine whether an application is subject to examination under the AIA first inventor to file provisions, and MPEP §§ 2150 et seq. for examination of applications subject to those provisions.
The available prior art that can be applied during the examination of a reissue application is generally the same as that under which the original application was examined. In some cases, however, the reissue is subject to different available prior art than was the original application.
For example, a situation may arise where an application filed April 1, 2013, has a benefit claim to a prior application having a filing date of December 12, 2012, and all claims are fully supported by the 2012 application. In this situation, the 2013 application would be examined with respect to the prior art available under pre-AIA35 U.S.C. 102 and 103. If a reissue application is filed on the subsequent patent in which a claim presented must
rely on the April 1, 2013 disclosure for 35 U.S.C. 112 support (i.e., cannot rely solely on the parent application), that newly presented claim has an effective filing date of April 1, 2013. In this situation, the ENTIRE reissue application is now subject to the prior art available under AIA first inventor to file provisions. See MPEP §§ 2151-2156 for a discussion of the prior art available under the first inventor to file provisions of the AIA. In addition, this reissue application would be subject to pre-AIA 35 U.S.C. 102(g), because pre-AIA 35 U.S.C. 102(g) applies to each claim of an application for patent, and any patent issued thereon, if such application or patent contains, or contained at any time: (1) A claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains, or contained at any time, such a claim. See MPEP § 2159.03.
Another situation may arise in which a benefit claim to an application filed before March 16, 2013, is added in a reissue application based on an AIA patent. If all the claims ever presented in the reissue application and underlying patent are fully supported by the prior application filed before March 16, 2013, then the reissue application would be examined only under pre-AIA 35 U.S.C. 102 and 103 because the application was entitled to the benefit of the earlier filed application as evidenced by appropriate benefit claim to the filing date of the prior filed application.
1441 Two-Month Delay Period [R-08.2012]
37 CFR 1.176 provides that reissue applications will be acted on by the examiner in advance of other applications, i.e., “special.” Generally, a reissue application will not be acted on sooner than 2 months after announcement of the filing of the reissue has appeared in the Official Gazette . The 2-month delay is provided in order that members of the public may have time to review the reissue application and submit pertinent information to the Office before the examiner’s action. The pertinent information is submitted in the form of a protest under 37 CFR 1.291(a). For a discussion as to protests under 37 CFR 1.291(a) in reissue applications, see MPEP § 1441.01. As set forth in MPEP § 1901.04, the public should be aware that such submissions should be
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made as early as possible, because under certain circumstances, the 2-month delay period will not be employed. For example, the Office may act on a continuation or a divisional reissue application before the expiration of the 2-month period after announcement.Additionally, the Office will entertain a petition under 37 CFR 1.182 which is accompanied by the required petition fee (37 CFR 1.17(f)) to act on a reissue application without delaying for 2 months. Accordingly, protestors to reissue applications (see MPEP § 1441.01) cannot automatically assume that a full 2-month delay period will always be available. Appropriate reasons for requesting that the 2-month delay period not be employed include that litigation involving a patent has been stayed to permit the filing of an application for the reissue of the patent. Where the basis for the petition is ongoing litigation, the petition must clearly identify the litigation, and detail the specifics of the litigation that call for prompt action on the reissue application before the expiration of the 2-month delay period. Such petitions are decided by the Office of Patent Legal Administration.
1441.01 Protest and Preissuance Submission in Reissue Applications [R-11.2013]
I. PROTESTS, BUT NOT PREISSUANCE SUBMISSIONS, ARE PERMITTED IN REISSUE APPLICATIONS
A protest pursuant to 37 CFR 1.291 may be filed throughout the pendency of a reissue application, before the date of mailing of a notice of allowance, subject to the timing constraints of the examination, as set forth in MPEP § 1901.04. While a reissue application is not published under 37 CFR 1.211, the reissue application is published pursuant to 35 U.S.C. 122(b)(1)(A) via an announcement in the Official Gazette (and public availability of the file content) per 37 CFR 1.11(b). Such a publication does not preclude the filing of a protest. 35 U.S.C. 122(c) states:
(c) PROTEST AND PRE-ISSUANCE OPPOSITION- The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication
of the application without the express written consent of the applicant.[Emphasis added.]
A protest is precluded after publication for an application for an original patent, as a “form of pre-issuance opposition.” A reissue application is a post-issuance proceeding. A protest filed in a reissue application is not a “form of pre-issuance opposition to the grant of a patent” because the patent to be reissued has already been granted. Thus, the prohibition against the filing of a protest after publication of an application under 35 U.S.C. 122(c) is not applicable to a reissue application and a protest is permitted after publication of the reissue application.
Because a reissue application is a post-issuance proceeding, a preissuance submission under 35 U.S.C. 122(e) is not permitted to be filed in a reissue application; 35 U.S.C. 122(e) is limited to preissuance submissions by third parties in patent applications. Third parties who have a need to submit information in a reissue application are advised to avail themselves of the protest provisions of 37 CFR 1.291. In an instance when a preissuance submission under 35 U.S.C. 122(e) is filed in a reissue application, the preissuance submission will be treated by the Office as a protest, if the preissuance submission complies with the provisions of 37 CFR 1.291.
II. TIME PERIOD FOR FILING PROTEST
A protest with regard to a reissue application should be filed within the 2-month period following the announcement of the filing of the reissue application in the Official Gazette. A potential protestor should be aware that reissue applications are taken up “special” and a protest filed outside the 2-month delay period may be received after action by the examiner. Further, if a protest is filed after a final rejection has been issued or prosecution on the merits has been otherwise closed for the reissue application, a petition for entry of the protest under 37 CFR 1.182 is required. The petition must include an explanation as to why the additional time was necessary and the nature of the protest intended. A copy of the petition must be served upon the applicant in accordance with 37 CFR 1.248. The petition should be directed to the Office of Petitions. A protest not filed prior
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to the date a notice of allowance under 37 CFR 1.311 is given or mailed will not be entered.
If the protest of a reissue application cannot be filed within the 2-month delay period, the protestor may petition to request (A) an extension of the 2-month period following the announcement in the Official Gazette , and (B) a delay of the examination until the extended period expires. Such a request will be considered only if filed in the form of a petition under 37 CFR 1.182 and accompanied by the petition fee set forth in 37 CFR 1.17(f). The petition under 37 CFR 1.182 and the petition fee must be filed before the expiration of the 2-month period following the announcement of the filing of the reissue application in the Official Gazette. The petition must explain why the additional time is necessary and the nature of the protest intended. A copy of the petition must be served upon applicant in accordance with 37 CFR 1.248. The petition should be directed to the appropriate Technology Center (TC) which will forward the petition to the Office of Patent Legal Administration.
If the protest is a “REISSUE LITIGATION” protest, it is particularly important that it be filed early if protestor wishes it considered at the time the Office first acts on the reissue application. Protestors should be aware that the Office will entertain petitions from the reissue applicants under 37 CFR 1.182 to waive the 2-month delay period in appropriate circumstances. Accordingly, protestors to reissue applications cannot automatically assume that the full 2-month delay period will always be available.
The Technology Center (TC) to which the reissue application is assigned is listed in the Official Gazette notice of filing of the reissue application. Accordingly, the indicated TC should retain jurisdiction over the reissue application file for 2 months after the date of the Official Gazette notice before transferring the reissue application under the procedure set forth in MPEP § 903.08(d).
The publication of a notice of a reissue application in the Official Gazette should be done before to any examination of the reissue application. If an inadvertent failure to publish notice of the filing of the reissue application in the Official Gazette is recognized later in the examination, action should
be taken to have the notice published as quickly as possible, and action on the reissue application may be delayed until 2 months after the publication, allowing for any protests to be filed.
See MPEP § 1901.06 for general procedures on examiner treatment of protests in reissue applications.
1442 Special Status [R-08.2012]
All reissue applications are taken up “special,” and remain “special” even if applicant does not respond promptly.
All reissue applications, except those under suspension because of litigation, will be taken up for action ahead of other “special” applications; this means that all issues not deferred will be treated and responded to immediately. Furthermore, reissue applications involved in litigation will be taken up for action in advance of other reissue applications.
1442.01 Litigation-Related Reissues [R-11.2013]
During initial review, the examiner should determine whether the patent for which the reissue has been filed is involved in litigation, and if so, the status of that litigation. If the examiner becomes aware of litigation involving the patent sought to be reissued during examination of the reissue application, the examiner should first check MPEP § 1442.02 to determine whether prosecution in the reissue application should be suspended. If prosecution will not be suspended, and applicant has not made the details regarding that litigation of record in the reissue application, the examiner, in the next Office action, will inquire regarding the specific details of the litigation.
Form paragraph 14.06 may be used for such an inquiry.
¶ 14.06 Litigation-Related Reissue
The patent sought to be reissued by this application [1] involved in litigation. Any documents and/or materials which would be material to patentability of this reissue application are required to be made of record in response to this action.
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§ 1442.01CORRECTION OF PATENTS
Due to the related litigation status of this application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED DURING THE PROSECUTION OF THIS APPLICATION.
Examiner Note:
In bracket 1, insert either —is— or —has been—.
If additional details of the litigation appear to be material to examination of the reissue application, the examiner may make such additional inquiries as necessary and appropriate.
For reissue application files that are maintained in the Image File Wrapper (IFW) system, if the existence of litigation has not already been noted, the examiner should annotate the printed bibliographic data sheet such that adequate notice is provided of the existence of the litigation.
Applicants will normally be given 1 month to reply to Office actions in all reissue applications that are being examined during litigation, or after litigation had been stayed, dismissed, etc., to allow for consideration of the reissue by the Office. This 1-month period may be extended only upon a showing of clear justification under 37 CFR 1.136(b). The Office action will inform applicant that the provisions of 37 CFR 1.136(a) are not available. Of course, up to 3 months may be initially set for reply if the examiner, consultating with his/her supervisor, determines such a period is clearly justified.
1442.02 Concurrent Litigation [R-11.2013]
To avoid duplicating effort, action in reissue applications in which there is an indication of concurrent litigation will be suspended sua sponte unless and until it is evident to the examiner, or the applicant indicates, that any one of the following applies:
(A) a stay of the litigation is in effect;
(B) the litigation has been terminated;
(C) there are no significant overlapping issues between the application and the litigation; or
(D) it is applicant’s desire that the application be examined at that time.
Where any of (A) - (D) above apply, form paragraphs 14.08-14.10 may be used to deny a suspension of action in the reissue, i.e., to deny a stay of the reissue proceeding.
¶ 14.08 Action in Reissue Not Stayed — Related Litigation Terminated
Since the litigation related to this reissue application is terminated and final, action in this reissue application will NOT be stayed. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
¶ 14.09 Action in Reissue Not Stayed — Related Litigation Not Overlapping
While there is concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed because there are no significant overlapping issues between the application and that litigation. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
¶ 14.10 Action in Reissue Not Stayed — Applicant’s Request
While there is concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed because of applicant’s request that the application be examined at this time. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
Where none of (A) through (D) above apply, action in the reissue application in which there is an indication of concurrent litigation will be suspended by the examiner. The examiner should consult with the Technology Center Training Quality Assurance Specialist (TQAS)before suspending action in the reissue application. Form paragraph 14.11 may be used to suspend action, i.e., stay action, in a reissue application with concurrent litigation.
¶ 14.11 Action in Reissue Stayed - Related Litigation
In view of concurrent litigation, and in order to avoid duplication of effort between the two proceedings, action in this reissue application is STAYED until such time as it is evident to the examiner that (1) a stay of the litigation is in effect, (2) the litigation has been terminated, (3) there are no significant overlapping issues between the application and the litigation, or (4) applicant requests that the application be examined.
An ex parte reexamination proceeding will not be stayed where there is litigation. See Ethicon v.
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Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988). Thus, where a reissue application has been merged with an ex parte reexamination proceeding, the merged proceeding will not be stayed where there is litigation. In a merged ex parte reexamination/reissue proceeding, the ex parte reexamination will control because of the statutory (35 U.S.C. 305) requirement that ex parte reexamination proceedings be conducted with special dispatch. See MPEP § 2285 and § 2286. As to a stay or suspension where reissue proceedings are merged with inter partes reexamination proceedings, see 37 CFR 1.937 and MPEP § 2686.
1442.03 Litigation Stayed [R-11.2013]
All reissue applications, except those under suspension because of litigation, will be taken up for action ahead of other “special” applications; this means that all issues not deferred will be treated and responded to immediately. Furthermore, reissue applications involved in “stayed litigation” will be taken up for action in advance of other reissue applications. Great emphasis is placed on the expedited processing of such reissue applications. The courts are especially interested in expedited processing in the Office where litigation is stayed.
In reissue applications with “stayed litigation,” the Office will entertain petitions under 37 CFR 1.182, which are accompanied by the fee under 37 CFR 1.17(f), to not apply the 2-month delay period stated in MPEP § 1441. Such petitions are decided by the Office of Patent Legal Administration.
Time-monitoring systems have been put into effect which will closely monitor the time used by applicants, protestors, and examiners in processing reissue applications of patents involved in litigation in which the court has stayed further action. Monthly reports on the status of reissue applications with related litigation are required from each Technology Center (TC). Delays in reissue processing are to be followed up. The TC Training Quality Assurance Specialist (TQAS) is responsible for oversight of reissue applications with related litigation.
The purpose of these procedures and those deferring consideration of certain issues, until all other issues are resolved or the application is otherwise ready
for consideration by the P (note MPEP § 1448), is to reduce the time between filing of the reissue application and final action thereon, while still giving all parties sufficient time to be heard.
Requests for stays or suspension of action in reissues where litigation has been stayed may be answered with form paragraph 14.07.
¶ 14.07 Action in Reissue Not Stayed or Suspended — Related Litigation Stayed
While there is a stay of the concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed or suspended because a stay of that litigation is in effect for the purpose of awaiting the outcome of these reissue proceedings. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
If concurrently a reissue application and an inter partes review, post grant review proceeding, or covered business method review ("PTAB Review Proceeding") are copending, the Director may determine the manner in which the PTAB Review Proceeding and the other proceeding or matter ( e.g., the reissue application) may proceed, including a stay, transfer, consolidation or termination of such matter or proceeding. See 35 U.S.C. 315(d) and 35 U.S.C. 325(d) and 37 CFR 42.122 and 37 CFR 42.222.
1442.04 Litigation Involving Patent [R-11.2013]
37 CFR 1.178 Original patent; continuing duty of applicant. *****
(b) In any reissue application before the Office, the applicant must call to the attention of the Office any prior or concurrent proceedings in which the patent (for which reissue is requested) is or was involved, such as interferences, reissues, reexaminations, or litigations and the results of such proceedings (see also § 1.173(a)(1)).
Where the patent for which reissue is being sought is, or has been, involved in litigation, the applicant should bring the existence of such litigation to the attention of the Office. 37 CFR 1.178(b). This should be done at the time of, or shortly after, the applicant files the application, either in the reissue oath or declaration, or in a separate paper, preferably accompanying the application as filed. Litigation
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§ 1442.04CORRECTION OF PATENTS
begun after filing of the reissue application also should be promptly brought to the attention of the Office. Additional proceedings that should be called to the attention of the Office include derivation, post-grant review, inter partes review, and covered business method proceedings.
Litigation encompasses any papers filed in the court or issued by the court. This may include, for example, motions, pleadings, and court decisions, as well as the results of such proceedings. When applicant notifies the Office of the existence of the litigation, enough information should be submitted so that the Office can reasonably evaluate the need for asking for further materials in the litigation. Note that the existence of supporting materials which may substantiate allegations of invalidity should, at least, be fully described, and preferably submitted. The Office is not interested in receiving voluminous litigation materials which are not relevant to the Office’s consideration of the reissue application. The status of the litigation should be updated in the reissue application as soon as significant events happen in the litigation. When a reissue application is filed, the examiner should determine whether the original patent has been adjudicated by a court. The decision(s) of the court, and also other papers in the suit, may provide information essential to the examination of the reissue. Examiners should inform the applicant of the duty to supply information as to litigation involving the patent. Form paragraph 14.11.01 may be used for this purpose. See MPEP § 1418.
Additionally, the patented file will contain notices of the filing and termination of infringement suits on the patent. Such notices are required by law to be filed by the clerks of the Federal District Courts. These notices do not indicate if there was an opinion by the court, nor whether a decision was published. Shepard’s Federal Citations and the cumulative
digests of the United States Patents Quarterly, contain tables of patent numbers giving the citation of published decisions concerning the patent.
A litigation computer search by the Scientific and Technical Information Center (STIC) should be requested by the examiner to determine whether the patent has been, or is, involved in litigation. For IFW reissue application files, the “Search Notes” box on
the OACS “Search Notes” page is annotated to indicate that the review was conducted, and the OACS “Search Notes” page is then scanned into the reissue application file history.
Additional information or guidance as to making a litigation search may be obtained from the library of the Office of the Solicitor. Where papers are not otherwise conveniently obtainable, the applicant may be requested to supply copies of papers and records in suits, or the Office of the Solicitor may be requested to obtain them from the court. The information thus obtained should be carefully considered for its bearing on the proposed claims of the reissue, particularly when the reissue application was filed in view of the holding of a court.
If the examiner becomes aware of litigation involving the patent sought to be reissued during examination of the reissue application, and applicant has not made the details regarding that litigation of record in the reissue application, the examiner, in the next Office action, should inquire regarding the same. Form paragraph 14.06 may be used for such an inquiry. See MPEP § 1442.01.
If the additional details of the litigation appear to be material to patentability of the reissue application, the examiner may make such additional inquiries as necessary and appropriate.
1442.05 Court Ordered Filing of Reissue Application [R-08.2012]
In most instances, the reissue-examination procedure is instituted by a patent owner who voluntarily files a reissue application as a consequence of related patent litigation. Some Federal district courts in earlier decisions have required a patentee-litigant to file a reissue application as a consequence of the patent litigation. However, the Court of Appeals for the Federal Circuit held in Green v. The Rich Iron Co., 944 F.2d 852, 853, 20 USPQ2d 1075, 1076 (Fed. Cir. 1991) that a Federal district court in an infringement case could not compel a patentee to seek reissue by the USPTO.
It is to be noted that only a patentee or his or her assignee may file a reissue patent application. An
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order by a court for a different party to file a reissue will not be binding on the Office.
1443 Initial Examiner Review [R-11.2013]
As part of an examiner’s preparation for the examination of a reissue application, the Examiner Reissue Guide and Checklist should be consulted for basic guidance and suggestions for handling the prosecution. The Technology Center (TC) Training QualityAssurance Specialists (TQASs) should make the Guide and Checklist available at the time a reissue application is docketed to an examiner.
On initial receipt of a reissue application, the examiner should inspect the submission under 37 CFR 1.172 as to documentary evidence of a chain of title from the original owner to the assignee to determine whether the consent requirement of 37 CFR 1.172 has been met. The examiner will compare the consent and documentary evidence of ownership; the assignee indicated by the documentary evidence must be the same assignee which signed the consent. Also, the person who signs the consent for the assignee and the person who signs the submission of evidence of ownership for the assignee must both be persons having authority to do so. See also MPEP § 324 and 325.
Where the application is assigned, and there is no submission under 37 CFR 1.172 as to documentary evidence in the application, the examiner should require the submission using form paragraph 14.16. Once the submission under 37 CFR 1.172 as to documentary evidence is received, it must be compared with the consent to determine whether the assignee indicated by the documentary evidence is the same assignee which signed the consent. See MPEP § 1410.01 for further discussion as to the required consent and documentary evidence.
Where there is a statement of record that the application is not assigned, there should be no submission under 37 CFR 1.172 as to documentary evidence of ownership in the application, and none should be required by the examiner.
The filing of all reissue applications, except for continued prosecution applications (CPAs) (only available for design applications) filed under 37 CFR
1.53(d), must be announced in the Official Gazette. Accordingly, for any reissue application other than a CPA, the examiner should determine if the filing of the reissue application has been announced in the Official Gazette as provided in 37 CFR 1.11(b). The contents entry on the PALM Intranet Contents screen should be checked for the presence of “NRE” and “NOTICE OF REISSUE PUBLISHED IN OFFICIAL GAZETTE” entries in the contents, and the date of publication. If the filing of the reissue application has not been announced in the Official Gazette, jurisdiction over the reissue application should be returned to the Office of Patent Application Processing (Special Processing) to handle the announcement. The examiner should not further act on the reissue until 2 months after announcement of the filing of the reissue has appeared in the Official Gazette. See MPEP § 1440.
The examiner should determine if there is concurrent litigation, and if so, the status thereof (MPEP § 1442.01), and whether the reissue file history has been appropriately marked. Note MPEP § 1404.
The examiner should determine if a protest has been filed, and if so, it should be handled as set forth in MPEP § 1901.06. For a discussion of protests under 37 CFR 1.291 in reissue applications, see MPEP § 1441.01.
The examiner should determine whether the patent is involved in an interference, and if so, should refer to MPEP § 1449.01 before taking any action on the reissue application.
The examiner should verify that all Certificate of Correction changes have been properly incorporated into the reissue application. See MPEP § 1411.01.
The examiner should verify that the patent on which the reissue application is based has not expired, either because its term has run or because required maintenance fees have not been paid. Once a patent has expired, the Director of the USPTO no longer has the authority under 35 U.S.C. 251 to reissue the patent. See In re Morgan, 990 F.2d 1230, 26
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USPQ2d 1392 (Fed. Cir. 1992). See also MPEP § 1415.01.
1444 Review of Reissue Oath/Declaration [R-11.2013]
I. REQUIREMENTS OF REISSUE OATH OR DECLARATION
The question of the sufficiency of the reissue oath/declaration filed under 37 CFR 1.175 must in each case be reviewed and decided personally by the primary examiner.
Much of the required content of a reissue oath or declaration will differ based on the filing date of the reissue application. However, all reissue oaths or declarations must contain the following:
(A) A statement that the applicant believes the original patent to be wholly or partly inoperative or invalid—
(1) by reason of a defective specification or drawing, or
(2) by reason of the patentee claiming more or less than patentee had the right to claim in the patent; and
(B) A statement of at least one error which is relied upon to support the reissue application, i.e., as the basis for the reissue.
MPEP § 1414 describes the requirements for each of the aforementioned statements. See MPEP § 1414.01 for the remaining requirements for the reissue oath or declaration in a reissue application filed on or after September 16, 2012; § 1414.02 for the remaining requirements of a reissue oath or declaration in a reissue application filed before September 16, 2012; and § 1414.03 for supplemental reissue oaths or declarations in reissue applications.
II. REVIEW OF REISSUE OATH OR DECLARATION
An initial reissue oath/declaration is submitted with the reissue application (or within the time period set for filing the oath/declaration in a Notice To File Missing Parts under 37 CFR 1.53(f)). Where
the reissue oath/declaration fails to comply with 37 CFR 1.175(a), the examiner will so notify the applicant in an Office action, rejecting the claims under 35 U.S.C. 251. In reply to the Office action, a replacement reissue oath/declaration should be submitted dealing with the noted defects in the reissue oath/declaration.
The examiner should carefully review the reissue oath/declaration in conjunction with the discussion in MPEP §§ 1414 et seq. in order to ensure that each element is provided in the oath/declaration. If the examiner’s review of the oath/declaration reveals a lack of compliance with any of the requirements of 37 CFR 1.175, a rejection of all the claims under 35 U.S.C. 251 should be made on the basis that the reissue oath/declaration is insufficient.
In preparing an Office action, the examiner should use form paragraphs 14.01 through 14.01.04 to state the objection(s) to the oath/declaration, i.e., the defects in the oath/declaration. These form paragraphs are reproduced in MPEP § 1414. The examiner should then use form paragraph 14.14 to reject the claims under 35 U.S.C. 251, based upon the improper oath/declaration.
¶ 14.14 Rejection, Defective Reissue Oath or Declaration
Claim [1] rejected as being based upon a defective reissue [2] under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the [3] is set forth in the discussion above in this Office action.
Examiner Note:
1. In bracket 1, list all claims in the reissue application. See MPEP § 706.03(x).
2. This paragraph must be preceded by form paragraph 14.01 and should be preceded by form paragraphs 14.01.01 to 14.01.06 as appropriate
3. In brackets 2 and 3, insert either --oath-- or --declaration--.
A lack of the inventor's signature on a reissue oath/declaration (except as otherwise provided in 37 CFR 1.64 and 1.175(c) for applications filed on or after September 16, 2012, and pre-AIA 37 CFR 1.42, 1.43, and 1.47 and in 37 CFR 1.172 for applications filed before September 16, 2012) would be considered a lack of compliance with 37 CFR 1.175(a) and result in a rejection, including final rejection, of all the claims on the basis that the
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reissue oath/declaration is insufficient. If the unsigned reissue oath/declaration is submitted as part of a reply which is otherwise properly signed and responsive to the outstanding Office action, the reply should be accepted by the examiner as proper and responsive, and the oath/declaration considered fully in the next Office action. The reply should not be treated as an unsigned or improperly signed amendment (see MPEP § 714.01(a)), nor do the holdings of Ex parte Quayle apply in this situation. The lack of signature, along with any other oath/declaration deficiencies, should be noted in the next Office action rejecting the claims as being based upon an insufficient reissue oath/declaration.
III. ERRORS PREVIOUSLY IDENTIFIED NO LONGER RELIED UPON AS THE BASIS FOR REISSUE
A different situation may arise where the initial reissue oath/declaration does properly identify one or more errors under 35 U.S.C. 251 as being the basis for reissue, however, because of changes or amendments made during prosecution, none of the identified errors are relied upon any more. The required action will differ based on the filing date of the reissue application.
A. Application filed on or after September 16, 2012
For reissue applications filed on or after September 16, 2012 a supplemental reissue oath or declaration is not required where all errors previously identified in the reissue oath/declaration are no longer being relied upon as the basis for reissue. However, the applicant must explicitly identify an error being relied upon as the basis for reissue (e.g., in the remarks accompanying an amendment). See 37 CFR 1.175(f)(2). Identification of the error must be conspicuous and clear and must comply with 35 U.S.C. 251. Additionally, since applicant is not required to identify the new error in a reissue oath/declaration, identification of the error may not be deferred until the application is otherwise in condition for allowance.
B. Application filed before September 16, 2012
For reissue applications filed before September 16, 2012, where all errors previously identified in the
reissue oath/declaration are no longer being replied upon as the basis for reissue, a supplemental oath/declaration will be needed to identify at least one error now being relied upon as the basis for reissue, even if a prior oath/declaration was earlier found proper by the examiner. The supplemental oath/declaration is not required to indicate that the error(s) identified in the prior oath(s)/declaration(s) is/are no longer being corrected. In this instance, applicant’s submission of the supplemental reissue oath/declaration to obviate the rejection under 35 U.S.C. 251 may, at applicant’s option, be deferred until the application is otherwise in condition for allowance. The submission can be deferred because a proper statement of error was provided in the initial reissue oath/declaration, and therefore applicant does not need to supply a supplemental reissue oath/declaration each time the error being corrected is changed. Applicant need only conspicuously and clearly identify the new error in the remarks section of the reply and request that submission of the supplemental reissue oath/declaration be deferred until allowance. Such a request will be considered a complete reply to the rejection.
IV. SUPPLEMENTAL REISSUE OATH/DECLARATION UNDER PRE-AIA 37 CFR 1.175(b)(1):
[Editor Note: This subsection only applies to reissue applications filed before September 16, 2012.]
For applications filed before September 16, 2012, pre-AIA 37 CFR 1.175(b)(1) requires that for any error corrected which is not covered by a previously submitted compliant reissue oath or declaration, applicant must submit a supplemental oath or declaration stating that every such error arose without any deceptive intention on the part of the applicant.
Once the reissue oath/declaration is found to comply with pre-AIA 37 CFR 1.175(a), it is not required, nor is it suggested, that a new reissue oath/declaration be submitted together with each new amendment and correction of error in the patent. During the prosecution of a reissue application, amendments are often made and additional errors in the patent are corrected. The Office suggests that the reissue applicant wait until the case is in
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condition for allowance, and then submit a cumulative supplemental reissue oath/declaration pursuant to pre-AIA 37 CFR 1.175(b)(1).
See MPEP § 1414.03 for a discussion of the required content of a supplemental reissue oath/declaration under pre-AIA 37 CFR 1.175(b)(1).
A supplemental oath/declaration under pre-AIA 37 CFR 1.175(b)(1) must be submitted before allowance. It may be submitted with any reply before allowance. It may be submitted to overcome a rejection under 35 U.S.C. 251 made by the examiner, where it is indicated that the submission of the supplemental oath/declaration will overcome the rejection.
A supplemental oath/declaration under pre-AIA 37 CFR 1.175(b)(1) will be required where:
(A) the application is otherwise (other than the need for this supplemental oath/declaration) in condition for allowance;
(B) amendments or other corrections of errors in the patent have been made subsequent to the last oath/declaration filed in the application; and
(C) at least one of the amendments or other corrections corrects an error under 35 U.S.C. 251.
When a supplemental oath/declaration under pre-AIA 37 CFR 1.175(b)(1) directed to the amendments or other corrections of error is required, the examiner is encouraged to telephone the applicant and request the submission of the supplemental oath/declaration by EFS-Web or fax. If the circumstances do not permit making a telephone call, or if applicant declines or is unable to promptly submit the oath/declaration, the examiner should issue a final Office action (final rejection) and use form paragraph 14.05.02 where the action issued is a second or subsequent action on the merits.
¶ 14.05.02.fti Supplemental Oath or Declaration Required Prior to Allowance - Application Filed Before Sept. 16, 2012
In accordance with pre-AIA 37 CFR 1.175(b)(1), for applications filed before September 16, 2012, a supplemental reissue oath/declaration must be received before this reissue application can be allowed.
Claim [1] rejected as being based upon a defective reissue [2] under 35 U.S.C. 251. See 37 CFR 1.175. The nature of the defect is set forth above.
Receipt of an appropriate supplemental oath/declaration will overcome this rejection. An example of acceptable language to be used in the supplemental oath/declaration is as follows:
“Every error in the patent which was corrected in the present reissue application, and is not covered by a prior oath/declaration submitted in this application, arose without any deceptive intention on the part of the applicant.”
See MPEP § 1414.01.
Examiner Note:
1. In bracket 1, list all claims in the reissue application.
2. In bracket 2, insert either --oath-- or --declaration--.
3. This form paragraph is used in an Office action to: (a) remind applicant of the requirement for submission of the supplemental reissue oath/declaration under pre-AIA 37 CFR 1.175(b)(1) before allowance and (b) at the same time, reject all the claims since the reissue application is defective until the supplemental oath/declaration is submitted.
4. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.
5. Do not use this form paragraph if no amendments (or other corrections of the patent) have been made subsequent to the last oath/declaration filed in the case; instead allow the case.
6. This form paragraph cannot be used in an Ex parte Quayle action to require the supplemental oath/declaration, because the rejection under 35 U.S.C. 251 is more than a matter of form.
7. Do not use this form paragraph in an examiner’s amendment. The supplemental oath/declaration must be filed prior to mailing of the Notice of Allowability.
As noted above, the examiner will issue a final Office action where the application is otherwise in condition for allowance, and amendments or other corrections of error in the patent have been made subsequent to the last oath/declaration filed in the application. The examiner will be introducing (via form paragraph 14.05.02) a rejection into the case for the first time in the prosecution, when the claims have been determined to be otherwise allowable. This introduction of a new ground of rejection under 35 U.S.C. 251 will not prevent the action from being made final on a second or subsequent action because of the following factors:
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(A) The finding of the case in condition for allowance is the first opportunity that the examiner has to make the rejection;
(B) The rejection is being made in reply to, i.e., was caused by, an amendment of the application (to correct errors in the patent);
(C) All applicants are on notice that this rejection will be made upon finding of the case otherwise in condition for allowance where errors have been corrected subsequent to the last oath/declaration filed in the case, so that the rejection should have been expected by applicant; and
(D) The rejection will not prevent applicant from exercising any rights to cure the rejection, because applicant need only submit a supplemental oath/declaration with the above-described language, and it will be entered to cure the rejection.
Where the application is in condition for allowance and no amendments or other corrections of error in the patent have been made subsequent to the last oath/declaration filed in the application, a supplemental reissue oath/declaration under pre-AIA 37 CFR 1.175(b)(1) should not be required by the examiner. Instead, the examiner should issue a Notice of Allowability indicating allowance of the claims.
V. AFTER ALLOWANCE
Where applicant seeks to correct an error after allowance of the application, any amendment of the patent correcting the error must be submitted in accordance with 37 CFR 1.312. As set forth in 37 CFR 1.312, no amendment may be made as a matter of right in an application after the mailing of the notice of allowance. An amendment filed under 37 CFR 1.312 must be filed before or with the payment of the issue fee and may be entered on the recommendation of the primary examiner, and approved by the supervisory patent examiner, without withdrawing the case from issue.
Because the amendment seeks to correct an error in the patent, the amendment will affect the disclosure, the scope of a claim, or add a claim. Thus, in accordance with MPEP § 714.16, the remarks accompanying the amendment must fully and clearly state:
(A) why the amendment is needed;
(B) why the proposed amended or new claims require no additional search or examination;
(C) why the claims are patentable; and
(D) why they were not presented earlier.
For reissue applications field before September 16, 2012, a supplemental reissue oath/declaration must accompany the amendment. The supplemental reissue oath/declaration must state that the error(s) to be corrected arose without any deceptive intention on the part of the applicant. The supplemental reissue oath/declaration submitted after allowance must be directed to the error(s) applicant seeks to correct after allowance. This oath/declaration need not cover any earlier errors, because all earlier errors should have been covered by a reissue oath/declaration submitted before allowance.
Occasionally, correcting an error after allowance does not include an amendment of the specification or claims of the patent. For example, the correction of the error could be the filing of a certified copy of the original foreign application (before the payment of the issue fee. See 37 CFR 1.55(g)(1)(for applications filed on or after March 16, 2013) and pre-AIA 37 CFR 1.55(a)(2) (for applications filed before March 16, 2013) to obtain the right of foreign priority under 35 U.S.C. 119 also see Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968) (the claim for foreign priority had been timely made in the application for the original patent). In such a case, the requirements of 37 CFR 1.312 must still be met. This is so, because the correction of the patent is an amendment of the patent, even though no amendment is physically entered into the case. Thus, for a reissue oath/declaration submitted after allowance to correct an additional error (or errors), the reissue applicant must comply with 37 CFR 1.312 in the manner discussed above.
1445 Reissue Application Examined in Same Manner as Original Application [R-11.2013]
As stated in 37 CFR 1.176, a reissue application, including all the claims therein, is subject to “be examined in the same manner as a non-reissue, non-provisional application.” Even in rare cases
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where, because of an amendment to the claims, the prior art available under 35 U.S.C. 102 and 103 during examination of the reissue application differs from that applied to the original application (see discussion in MPEP § 1440), the overall examination of the reissue application is conducted in the same manner as was the parent. Accordingly, the claims in a reissue application are subject to any and all rejections which the examiner deems appropriate. It does not matter whether the claims are identical to those of the patent or changed from those in the patent. It also does not matter that a rejection was not made in the prosecution of the patent, or could have been made, or was in fact made and dropped during prosecution of the patent; the prior action in the prosecution of the patent does not prevent that rejection from being made in the reissue application. Claims in a reissue application enjoy no “presumption of validity.” In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233 (CCPA 1973); In re Sneed, 710 F.2d 1544, 1550 n.4, 218 USPQ
385, 389 n.4 (Fed. Cir. 1983). Likewise, the fact that during prosecution of the patent the examiner considered, may have considered, or should have considered information such as, for example, a specific prior art document, does not have any bearing on, or prevent, its use as prior art during prosecution of the reissue application.
1446 -1447 [Reserved]
1448 Fraud, Inequitable Conduct, or Duty of Disclosure Issues [R-11.2013]
The Office does not investigate or reject reissue applications under 37 CFR 1.56. The Office will not comment upon duty of disclosure issues which are brought to the attention of the Office in reissue applications except to note in the application, in appropriate circumstances, that such issues are no longer considered by the Office during its examination of patent applications. Examination as to the lack of deceptive intent requirement in reissue applications filed before September 16, 2012 will continue but without any investigation of fraud, inequitable conduct, or duty of disclosure issues. Applicant’s statement in the reissue oath or declaration of lack of deceptive intent will be
accepted as dispositive except in special circumstances such as an admission or judicial determination of fraud, inequitable conduct, or violation of the duty of disclosure.
I. ADMISSION OR JUDICIAL DETERMINATION
[Editor Note: This subsection is only applicable to reissue applications filed before September 16, 2012.]
An admission or judicial determination of fraud, inequitable conduct, or violation of the duty of disclosure is a special circumstance, because no investigation need be made. Accordingly, for a reissue application filed before September 16, 2012, after consulting with the Technology Center (TC) Training Quality Assurance Specialist (TQAS), a rejection should be made using the appropriate one of form paragraphs 14.21.09.fti or 14.22 as reproduced below.
Any admission of fraud, inequitable conduct or violation of the duty of disclosure must be explicit, unequivocal, and not subject to other interpretation. Where a rejection is made based upon such an admission (see form paragraph 14.22.fti below) and applicant responds with any reasonable interpretation of the facts that would not lead to a conclusion of fraud, inequitable conduct or violation of the duty of disclosure, the rejection should be withdrawn. Alternatively, if applicant argues that the admission noted by the examiner was not in fact an admission, the rejection should also be withdrawn.
Form paragraph 14.21.09.fti should be used for applications filed before September 16, 2012, where the examiner becomes aware of a judicial determination of fraud, inequitable conduct or violation of the duty of disclosure on the part of the applicant independently of the record of the case, i.e. the examiner has external knowledge of the judicial determination.
Form paragraph 14.22.fti should be used for applications filed before September 16, 2012, where, in the application record, there is (a) an explicit, unequivocal admission by applicant of fraud, inequitable conduct or violation of the duty of disclosure which is not subject to other
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interpretation, or (b) information as to a judicial determination of fraud, inequitable conduct or violation of the duty of disclosure on the part of the applicant. External information which the examiner believes to be an admission by applicant should never be used by the examiner, and such external information should never be made of record in the reissue application.
¶ 14.21.09.fti Rejection, Pre-AIA 35 U.S.C. 251, No Error Without Deceptive Intention - Application filed Before Sept. 16, 2012, External Knowledge
Claims [1] rejected under pre-AIA 35 U.S.C. 251 because this application was filed before September 16, 2012 and error “without any deceptive intention” has not been established. In view of the judicial determination in [2] of [3] on the part of applicant, a conclusion that any error was “without deceptive intention” cannot be supported. [4]
Examiner Note:
1. In bracket 1, list all claims in the reissue application.
2. In bracket 2, list the Court or administrative body which made the determination of fraud or inequitable conduct on the part of applicant.
3. In bracket 3, insert --fraud--, --inequitable conduct-- and/or --violation of duty of disclosure--.
4. In bracket 4, point out where in the opinion (or holding) of the Court or administrative body the determination of fraud, inequitable conduct or violation of duty of disclosure is set forth. Page number, column number, and paragraph information should be given as to the opinion (or holding) of the Court or administrative body. The examiner may add explanatory comments.
5. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.
¶ 14.22.fti Rejection, Pre-AIA 35 U.S.C. 251, No Error Without Deceptive Intention — Application filed Before Sept. 16, 2012, Evidence in the Application
Claims [1] rejected under pre-AIA 35 U.S.C. 251 because this application was filed before September 16, 2012 and error “without any deceptive intention” has not been established. In view of the reply filed on [2], a conclusion that any error was “without deceptive intention” cannot be supported. [3]
Examiner Note:
1. In bracket 1, list all claims in the reissue application.
2. In bracket 2, insert the filing date of the reply which provides an admission of fraud, inequitable conduct or violation of duty of disclosure, or that there was a judicial determination of same.
3. In bracket 3, insert a statement that there has been an admission or a judicial determination of fraud, inequitable conduct or violation of duty of disclosure which provide
circumstances why applicant’s statement in the oath or declaration of lack of deceptive intent should not be taken as dispositive. Any admission of fraud, inequitable conduct or violation of duty of disclosure must be explicit, unequivocal, and not subject to other interpretation.
4. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.
See MPEP § 2012 for additional discussion as to fraud, inequitable conduct or violation of duty of disclosure in a reissue application.
1449 Protest Filed in Reissue Where Patent Is in Interference or Contested Case [R-11.2013]
If a protest (see MPEP Chapter 1900) is filed in a reissue application related to a patent involved in a pending interference proceeding or contested case before the Patent Trial and Appeal Board (PTAB), the reissue application should be referred to the PTAB before considering the protest and taking any action on the reissue application.
In consultation with the examiner and the PTAB, a TC TQAS will check to see that:
(A) all parties to the interference or contested case are aware of the filing of the reissue; and
(B) the Office does not allow claims in the reissue which are unpatentable over the pending interference count(s), or found unpatentable in the interference proceeding or contested case. After the reissue application has been reviewed by the PTAB, the reissue application with the protest will be returned to the examiner. See MPEP § 1441.01 for a discussion as to protests under 37 CFR 1.291 in reissue applications.
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It is particularly important that the reissue application not be allowed without the administrative patent judge’s approval.
1449.01 Concurrent Office Proceedings [R-11.2013]
I. CONCURRENT REEXAMINATION PROCEEDINGS
37 CFR 1.565(d) provides that if “a reissue application and an ex parte reexamination proceeding on which an order pursuant to 37 CFR 1.525 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings.” 37 CFR 1.991 provides that if “a reissue application and an inter partes reexamination proceeding on which an order pursuant to 37 CFR 1.931 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings.” If an examiner becomes aware that a reissue application and an ex parte or inter partes reexamination proceeding are both pending for the same patent, he or she should immediately inform his or her Technology Center (TC) Training Quality Assurance Specialist (TQAS).
Under 37 CFR 1.177, a patent owner may file more than one reissue application for the same patent. If an examiner becomes aware that multiple reissue applications are pending for the same patent, and an ex parte or inter partes reexamination proceeding
is pending for the same patent, he or she should immediately inform his or her TC TQAS.
Where a reissue application and a reexamination proceeding are pending concurrently on a patent, and an order granting reexamination has been
issued for the reexamination proceeding, the Office of Patent Legal Administration (OPLA) must be notified (by e-mail to a lead Senior Legal Advisor responsible for reexamination) that the proceedings are ready for a decision as to whether to merge the reissue and the reexamination, or stay one of the two. See MPEP § 2285 for the procedure of notifying OPLA and general guidance, if a reissue application and an ex parte reexamination proceeding are both pending for the same patent, and an inter partes
reexamination proceeding is not involved. See MPEP § 2686.03 where a reissue application and an inter partes reexamination proceeding are both pending for the same patent, regardless of whether an ex parte reexamination proceeding is also pending.
Where a reissue application and a reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of the concurrent proceeding. 37 CFR 1.178(b), 37 CFR 1.565(a), and 37 CFR 1.985(a). The patent owner should file in the reissue application, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.178(b) in order to alert the Office of the existence of the reexamination proceeding on the same patent. See MPEP § 1418. In addition, the patent owner should file in the reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.565(a) or 1.985(a) (for an ex parte reexamination proceeding or an inter partes reexamination proceeding, respectively) to provide a notification to the Office in the reexamination proceeding of the existence of the two concurrent proceedings.
The patent owner may file a petition under 37 CFR 1.182 in a reissue application to merge the reissue application with the reexamination proceeding, or to stay one of the proceedings because of the other. This petition must be filed after the order to reexamine is issued (37 CFR 1.525, 37 CFR 1.931) in the reexamination proceeding. If the petition is filed before the reexamination order, it will not be considered, and will not be entered into the Image File Wrapper (IFW) or will be expunged from the record, if entered into the Image File Wrapper (IFW) before discovery that the petition is an improper paper. If the petition is filed after the order to reexamine is issued, the petition and any other materials for the files for the reissue application and the reexamination proceeding will be forwarded/referred to OPLA for decision. An e-mail will be sent to one of the lead Senior Legal Advisors of OPLA responsible for reexamination, providing notification that the petition is ready to be addressed.
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A. Reexamination Certificate Is To Be Issued for a Patent, While a Reissue Application for the Patent Is Pending
The following provides guidance to address the situation where a reexamination certificate is to be issued for a patent, while a reissue application for the patent is pending and will not be merged with the reexamination. This can occur, for example, where a reissue application prosecution is stayed or suspended, and the prosecution of a reexamination proceeding for the patent (for which reissue is requested) is permitted to proceed. It can also occur where a reissue application is filed after the reexamination proceeding has entered the publication process, such that it is too late to consider the question of stay or merger.
(A) The examiner will not act on the reissue application until the reexamination certificate issues and publishes.
(B) After the reexamination certificate issues and publishes--
At the time that the reexamination certificate is issued and published, the Office will resume examination of the reissue application--
(1) An Office action will be issued giving the patent owner (applicant) one month to submit an amendment of the reissue application claims, based upon the results of the concluded reexamination proceeding.
(2) The reissue application will then be examined. Any claim canceled by the reexamination certificate will be treated the same way as a claim lost in litigation, and stated in the next action to be deemed as canceled. The remaining claims will be examined. If the reissue application is subsequently allowed, the claims that were canceled by the reexamination certificate will be formally canceled in the reissue application by examiner’s amendment (unless they have already been canceled by the applicant).
It is to be noted that the patent owner/applicant will have been advised in any decision suspending the copending reissue application to bring to the attention of the Office the issuance of the reexamination certificate, request a resumption of examination of the reissue application, and to include
an amendment of the reissue application claims at that time, if it is deemed appropriate based upon the results of the reexamination proceeding.
(3) Generally, further prosecution will be limited to claims narrower than those claims canceled as a result of the reexamination certificate (this includes any existing patent claims and any claims added in the reexamination proceeding). Any claims added thereafter, which are equal in scope to claims canceled as a result of the reexamination certificate, or are broader than the scope of the claims canceled as a result of the reexamination certificate, will generally be deemed as surrendered based on the patent owner’s failure to prosecute claims of equal scope, and to present claims of broader scope in the reexamination proceeding. Such claims will be rejected under 35 U.S.C. 251. Further, a rejection of such claims based on estoppel will be made, citing to MPEP § 2308.03 as to treatment of claims lost in a proceeding before the Office, and noting that a reexamination is a “proceeding.”
An exception to the guidance stated in part (3) above: claims that are broader than the scope of the claims canceled as a result of the reexamination certificate may be presented where:
(a) The broader claims in the reissue application can be patentable, despite the fact that the claims in the reexamination are not; and
(b) The broader claims in the reissue application could not have been presented in the reexamination proceeding.
Criterion (a) can occur if the broadened claims in the reissue application have an earlier effective date than those canceled by the reexamination certificate (as where the claims in the reissue application are supported by a parent application, and the reexamination claims are not). Criterion (a) can also occur if the subject matter of the broadened claims in the reissue application can be sworn behind, and the more specific subject matter of the reexamination claims cannot be sworn behind. Criterion (b) can occur if the claims in the reissue application are broader than all claims of the patent as it existed during reexamination (e.g., claims directed to a distinct invention).
(4) What happened in the concluded reexamination proceeding must be taken into account
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by the examiner as to any new claims presented by the reissue application. This is in addition to any other issue that may be addressed in any reissue application.
(5) If all of the patent claims were canceled by the reexamination certificate, action on the reissue application can still proceed, as will be discussed below; however, patent owner/applicant must first file a petition under 37 CFR 1.183 to waive 37 CFR 1.570 and/or 37 CFR 1.997(d), depending on whether the certificate was issued for an ex parte reexamination proceeding, an inter partes reexamination proceeding, or a merger of the two. The petition would be grantable where the patent owner/applicant shows that either:
(a) The reissue claims are narrower than those claims canceled as a result of the reexamination certificate; or
(b) Criteria (a) and (b) of part (3) above are satisfied by the claims of the reissue application. The claims satisfying this requirement may only be provided where a petition accompanies the amendment providing the claims
(C) The reissue application can still proceed even where all of the patent claims were canceled by the reexamination certificate, based on the following. Where the reexamination certificate issues and publishes to cancel all existing patent claims, the reissue application can continue in the Office to correct the 35 U.S.C. 251 “error” of presenting the existing claims, which were in-fact unpatentable. Of course, what happened in the concluded reexamination proceeding must be taken into account by the examiner, as to any new claims presented by the reissue application. See the discussion in part (B)(3)(b) above. If a reissue application is filed after a reexamination certificate issues and publishes to cancel all existing patent claims, then the matter should be forwarded to OPLA for resolution.
II. CONCURRENT INTERFERENCEAND OTHER CONTESTED CASE PROCEEDINGS
If the original patent is involved in an interference or another contested case, the examiner must consult with the TQAS before taking any action on the reissue application. It is particularly important that the reissue application not be allowed without the PTAB’s approval. See MPEP Chapter 2300.
The Leahy-Smith America Invents Act amended 35 U.S.C. 315(d) and added 35 U.S.C. 325(d) to provide that, during the pendency of an inter partes review, post grant review or covered business method review (“PTAB Review Proceeding”), if another proceeding (e.g., a reissue application) or matter involving the patent is before the Office, the Director may determine the manner in which the PTAB Review Proceeding and other proceeding or matter may proceed, including providing for stay, transfer, consolidation or termination of such matter or proceeding. Accordingly, if an examiner becomes aware of a PTAB Review Proceeding for the same patent that is being examined as a reissue application, the examiner is to consult with the TQAS who will coordinate with the PTAB before taking any action on the reissue application.
III. CONCURRENT REISSUE PROCEEDINGS
When more than one reissue application is pending concurrently on the same patent, see MPEP §§ 1450 and 1451.
1449.02 Interference in Reissue [R-11.2013]
[Editor Note: This section is only appliable to reissue applications subject to pre-AIA 35 U.S.C. 102(g). See MPEP § 2159 et seq.]
37 CFR 41.8 Mandatory notices.
(a) In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the initiation of a contested case (§ 41.101), and within 20 days of any change during the proceeding, a party must identify:
(1) Its real party-in-interest, and
(2) Each judicial or administrative proceeding that could affect, or be affected by, the Board proceeding.
(b) For contested cases, a party seeking judicial review of a Board proceeding must file a notice with the Board of the judicial review within 20 days of the filing of the complaint or the notice of appeal. The notice to the Board must include a copy of the complaint or notice of appeal. See also §§ 1.301 to 1.304 of this title.
37 CFR 41.202 Suggesting an interference.
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
(1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference,
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(2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
(3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
(4) Explain in detail why the applicant will prevail on priority,
(5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant’s specification, and
(6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter.
*****
(c) Examiner. An examiner may require an applicant to add a claim to provoke an interference. Failure to satisfy the requirement within a period (not less than one month) the examiner sets will operate as a concession of priority for the subject matter of the claim. If the interference would be with a patent, the applicant must also comply with paragraphs (a)(2) through (a)(6) of this section. The claim the examiner proposes to have added must, apart from the question of priority under 35 U.S.C. 102(g):
(1) Be patentable to the applicant, and
(2) Be drawn to patentable subject matter claimed by another applicant or patentee.
*****
In appropriate circumstances, a reissue application subject to pre-AIA (first to invent) 35 U.S.C. 102(g) may be placed into interference with a patent or pending application. A patentee may thus seek to provoke an interference with a patent or pending application by filing a reissue application, if the reissue application includes an appropriate reissue error as required by 35 U.S.C. 251. Reissue error must be based upon applicant error; a reissue cannot be based solely on the error of the Office for failing to declare an interference or to suggest copying claims for the purpose of establishing an interference. See In re Keil, 808 F.2d 830, 1 USPQ2d 1427 (Fed. Cir. 1987); In re Dien, 680 F.2d 151, 214 USPQ 10 (CCPA 1982); In re Bostwick, 102 F.2d 886, 888, 41 USPQ 279, 281 (CCPA 1939); and In re Guastavino, 83 F.2d 913, 916, 29 USPQ 532, 535 (CCPA 1936). See also Slip Track Systems, Inc. v. Metal Lite, Inc., 159 F.3d 1337, 48 USPQ2d 1055 (Fed. Cir. 1998) (Two
patents issued claiming the same patentable subject matter, and the patentee with the earlier filing date requested reexamination of the patent with the later filing date (Slip Track’s patent). A stay of litigation in a priority of invention suit under 35 U.S.C. 291, pending the outcome of the reexamination, was reversed. The suit under 35 U.S.C. 291 was the only option available to Slip Track to determine priority of invention. Slip Track could not file a reissue application solely to provoke an interference proceeding before the Office because it did not assert that there was any error as required by 35 U.S.C. 251 in the patent.). A reissue application can be employed to provoke an interference if the reissue application:
(A) adds copied claims which are not present in the original patent;
(B) amends claims to correspond to those of the patent or application with which an interference is sought; or
(C) contains at least one error (not directed to provoking an interference) appropriate for the reissue.
In the first two situations, the reissue oath/declaration must assert that applicant erred in failing to include claims of the proper scope to provoke an interference in the original patent application, and must include an identification of the claims added to provoke the interference. Furthermore, the subject matter of the copied or amended claims in the reissue application must be supported by the disclosure of the original patent under 35 U.S.C. 112, first paragraph. See In re Molins, 368 F.2d 258, 261, 151 USPQ 570, 572 (CCPA 1966) and In re Spencer, 273 F.2d 181, 124 USPQ 175 (CCPA 1959).
A reissue applicant cannot present added or amended claims to provoke an interference, if the claims were deliberately omitted from the patent in a reissue application filed before September 16, 2012. If there is evidence that the claims were not inadvertently omitted from the original patent, e.g., the subject matter was described in the original patent as being undesirable, the reissue application may lack proper basis for the reissue. See In re Bostwick, 102 F.2d at 889, 41 USPQ at 282 (CCPA 1939) (reissue lacked a proper basis because the original patent
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pointed out the disadvantages of the embodiment that provided support for the copied claims).
The issue date of the patent, or the publication date of the application publication (whichever is applicable under pre-AIA 35 U.S.C. 135(b)), with which an interference is sought must be less than 1 year before the presentation of the copied or amended claims in the reissue application. See pre-AIA 35 U.S.C. 135(b) and MPEP § 715.05 and MPEP Chapter 2300. If the reissue application includes broadened claims, the reissue application must be filed within two years from the issue date of the original patent. See 35 U.S.C. 251 and MPEP § 1412.03.
In a reissue application subject to pre-AIA 35 U.S.C. 102 and 103an examiner may, pursuant to 37 CFR 41.202(c), require a reissue applicant to add a claim to provoke an interference, unless the reissue applicant cannot present the added claim to provoke an interference based upon the provisions of the reissue statute and rules, e.g., if the claim was deliberately omitted from the patent and the reissue application was filed before September 16, 2012, or if the claim enlarges the scope of the claims of the original patent and was not “applied for within two years from the grant of the original patent.” Failure to satisfy the requirement within a time period (not less than one month) that the examiner sets will operate as a concession of priority for the subject matter of the claim. If the interference would be with a patent, the reissue applicant must also comply with 37 CFR 41.202(a)(2) through (a)(6). The claim the examiner proposes to have added must, apart from the question of priority under 35 U.S.C. 102(g), be patentable to the reissue applicant, and be drawn to patentable subject matter claimed by another applicant or patentee.
I. REISSUE APPLICATION FILED WHILE PATENT IS IN INTERFERENCE
If a reissue application is filed while the original patent is in an interference proceeding, the reissue applicant must promptly notify the Patent Trial and Appeal Board of the filing of the reissue application
within 20 days from the filing date. See 37 CFR 41.8 and MPEP Chapter 2300.
1449.03 Reissue Application in Derivation Proceeding [R-11.2013]
[Editor Note: This section is only appliable to reissue applications subject to 35 U.S.C. 102 as amended by the AIA. See MPEP § 2159 et seq.]
Effective March 16, 2013, an applicant for patent, including a reissue applicant, may file a petition to institute a derivation proceeding in the Office in applications subject to derivation proceedings. See 37 CFR 42.402.
1450 Restriction and Election of Species Made in Reissue Application [R-11.2013]
37 CFR 1.176 Examination of reissue.
(a) A reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications. Applications for reissue will be acted on by the examiner in advance of other applications.
(b) Restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required). If restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.
37 CFR 1.176(b) permits the examiner to require restriction in a reissue application between claims newly added in a reissue application and the original patent claims, where the added claims are directed to an invention which is separate and distinct from the invention(s) defined by the original patent claims. The criteria for making a restriction requirement in a reissue application between the newly added claims and the original claims are the same as that applied in a non-reissue application. See MPEP §§ 806 through 806.05(i). The authority to make a “restriction” requirement under 37 CFR 1.176(b) extends to and includes the authority to make an election of species. For reissue applications of patents issued from a U.S. national stage application submitted under 35 U.S.C. 371, the “restriction” requirement should not be made under the PCT unity of invention standard as set forth in MPEP Chapter
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1800, because a reissue application is filed under 35 U.S.C. 251, and not under 35 U.S.C. 371.
Where a restriction requirement is made by the examiner, the original patent claims will be held to be constructively elected (except for the limited situation where a disclaimer is filed as discussed in the next paragraph). Thus, the examiner will issue an Office action in the reissue application (1) providing notification of the restriction requirement, (2) holding the added claims to be constructively non-elected and withdrawn from consideration, (3) treating the original patent claims on the merits, and (4) informing applicant that if the original claims are found allowable, and a divisional application has been filed for the non-elected claims, further action in the application will be suspended, pending resolution of the divisional application.
If a disclaimer of all the original patent claims is filed in the reissue application containing newly added claims that are separate and distinct from the original patent claims, only the newly added claims will be present for examination. In this situation, the examiner’s Office action will treat the newly added claims in the reissue application on the merits. The disclaimer of all the original patent claims must be filed in the reissue application before the issuance of the examiner’s Office action containing the restriction requirement, in order for the newly added claims to be treated on the merits. Once the examiner has issued the Office action providing notification of the restriction requirement and treating the patent claims on the merits, it is too late to obtain an examination on the added claims in the reissue application by filing a disclaimer of all the original patent claims. If reissue applicant wishes to have the newly added claims be treated on the merits, a divisional reissue application must be filed to obtain examination of the added claims. Reissue applicants should carefully note that once a disclaimer of the patent claims is filed, it cannot be withdrawn. It does not matter whether the reissue application is still pending, or whether the reissue application has been abandoned or issued as a reissue patent. For all these situations, 37 CFR 1.176(b) states that the disclaimer cannot be withdrawn; the disclaimer will be given effect. Note that cancellation of all the original patent claims in the reissue application will not be effective as an alternative to disclaiming all the original patent
claims, and 37 CFR 1.176(b) will not be waived to permit the same. This is because the patent owner can subsequently file a reissue continuation presenting the original patent claims.
Claims elected pursuant to a restriction requirement will receive a complete examination on the merits, while the non-elected claims (to any added invention(s)) will be held in abeyance in a withdrawn status, and will only be examined if filed in a divisional reissue application. If the reissue application containing only original unamended claims becomes allowable first (and no “error” under 35 U.S.C. 251 exists), further action in that reissue application will be suspended to await examination in the divisional reissue application(s) containing the added claims. Multiple suspensions (usually six-month periods) may be necessary. The Office will not permit claims to issue in a reissue application which application does not correct any error in the original patent. Once a divisional reissue application containing the added claims is examined and becomes allowable, the examiner will issue a requirement under 37 CFR 1.177(c) for applicant to merge the claims of the suspended first reissue application with the allowable claims of the divisional reissue application into a single application, by placing all of the claims in one of the applications and expressly abandoning the other. The Office action making this requirement will set a two-month period for compliance with the requirement. If applicant fails to timely respond to the Office action, or otherwise refuses to comply with the requirement made, then the divisional reissue application (claiming the invention which was non-elected in the now-suspended first reissue application) will be passed to issue alone, since the claims of the divisional reissue application, by themselves, do correct an error in the original patent. Prosecution will be reopened in the suspended first reissue application, and a rejection based on a lack of error under 35 U.S.C. 251 will then be made. This rejection may be made final, because applicant is on notice of the consequences of not complying with the merger requirement.
If no divisional reissue application was filed for the non-elected claims and the original unamended (elected) claims become allowable (and no “error” under 35 U.S.C. 251 exists), further action in that
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§ 1450CORRECTION OF PATENTS
reissue application will be suspended, and a non-extendable three-month opportunity will be given (by way of a 3-month Notification) to the patent owner/applicant to file divisional reissue application(s) containing the non-elected claims. If a divisional reissue application is timely filed (i.e., within the three months), further suspensions (usually six-month periods) will be granted, as needed, to await examination in the divisional reissue application containing the added claims. If no such divisional reissue application is filed within the three-month period set in the Office communication suspending action in the reissue application, then a rejection based on a lack of error under 35 U.S.C. 251 will then be made in the sole reissue application. Because no error in the original patent is being corrected in the first reissue application, no reissue patent will issue. If a divisional reissue application is subsequently filed, it must be accompanied by a grantable petition (filed in the application having the elected claims) to waive the 37 CFR 1.103 provision that the Office will not suspend action if a reply by applicant to an Office action is outstanding.
If the divisional reissue application becomes abandoned, prosecution will be reopened in the suspended first reissue application, and a rejection based on a lack of error under 35 U.S.C. 251 will then be made in the first reissue application. Because no error in the original patent is being corrected in the first reissue application, no reissue patent will issue.
As stated in 37 CFR 1.176(b), the examiner is not permitted to require restriction among original claims of the patent (i.e., among claims that were in the patent before filing the reissue application). Even where the original patent contains claims to different inventions which the examiner considers independent or distinct, and the reissue application claims the same inventions, a restriction requirement would be improper. If such a restriction requirement is made, it must be withdrawn.
Restriction between multiple inventions recited in the newly added claims will be permitted provided the added claims are drawn to several separate and distinct inventions. In such a situation, the original patent claims would be examined in the first reissue
application, and applicant is permitted to file a divisional reissue application for each of the several separate and distinct inventions identified in the examiner’s restriction requirement.
A situation will sometimes arise where the examiner makes an election of species requirement between the species claimed in the original patent claims and a species of claims added in the reissue application. (The filing of a reissue application to only add species claims that require all the limitations of an issued generic claim would not meet the requirements of 35 U.S.C. 251 – see MPEP § 1402; however, this situation can occur where there is another change to the patent being made, which does correct a 35 U.S.C. 251 “error.”) In such a situation, if (1) the non-elected claims to the added species depend from (or otherwise include all limitations of) a generic claim which embraces all species claims, and (2) the generic claim is found allowable, then the non-elected claims of the added species must be rejoined with the elected claims of the original patent. See MPEP § 821.04(a).
1451 Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending [R-11.2013]
35 U.S.C. 251 Reissue of defective patents.
*****
(b) MULTIPLE REISSUED PATENTS - The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
*****
37 CFR 1.177 Issuance of multiple reissue patents.
(a) The Office may reissue a patent as multiple reissue patents. If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date. The Office may correct by certificate of correction under § 1.322 any reissue patent resulting from an application to which this paragraph applies that does not contain the required notice.
(b) If applicant files more than one application for the reissue of a single patent, each claim of the patent being reissued must be presented in each of the reissue applications as an amended, unamended, or canceled (shown in brackets) claim, with each such claim bearing the same number as in the patent
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being reissued. The same claim of the patent being reissued may not be presented in its original unamended form for examination in more than one of such multiple reissue applications. The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim.
(c) If any one of the several reissue applications by itself fails to correct an error in the original patent as required by 35 U.S.C. 251 but is otherwise in condition for allowance, the Office may suspend action in the allowable application until all issues are resolved as to at least one of the remaining reissue applications. The Office may also merge two or more of the multiple reissue applications into a single reissue application. No reissue application containing only unamended patent claims and not correcting an error in the original patent will be passed to issue by itself.
The court in In re Graff, 111 F.3d 874, 876-77, 42 USPQ2d 1471, 1473 (Fed. Cir. 1997) stated that “[t]he statute does not prohibit divisional or continuation reissue applications, and does not place stricter limitations on such applications when they are presented by reissue, provided of course that the statutory requirements specific to reissue applications are met.” Following the decision in Graff, the Office has adopted a policy of treating continuations and divisionals of reissue applications, to the extent possible, in the same manner as continuations and divisionals of non-reissue applications.
Nonetheless, the mere fact that the application purports to be a continuation or divisional of a parent reissue application does not make it a reissue application itself, since it is possible to file a 35 U.S.C. 111(a) continuing application of a reissue application. See In re Bauman, 683 F.2d 405, 409, 214 USPQ 585, 589 (CCPA 1982) (a patentee may file a regular continuation of a reissue application that obtains the benefit of the reissue application's filing date). There must be an identification, on filing, that the application is a continuation reissue application, as opposed to a continuation of a reissue application (i.e., a Bauman type continuation application). Likewise, there must be an identification, on filing, that the application is a divisional reissue application, as opposed to a divisional of a reissue application. Thus, the specification must be amended to state that the application is a “continuation reissue application” or “divisional reissue application” of its parent reissue application. If the specification is amended to state that the application is a “continuation” or “divisional” of its parent reissue application, the
application may very well be treated as a Bauman type continuation or divisional application. In general, an application which is a continuing application of a reissue application will be a Bauman application where there are no indicia that a continuing reissue application is being filed. Indicia that a continuing reissue application is being filed are:
1. A 37 CFR 1.175 reissue oath/declaration, which is not merely a copy of the parent’s reissue oath/declaration.
2. A specification and/or claims in proper double column reissue format per 37 CFR 1.173.
3. Amendments in proper format per 37 CFR 1.175.
4. A 37 CFR 3.73 statement of assignee ownership and consent by assignee.
5. A correct transmittal letter identifying the application as a reissue filing under 35 U.S.C. § 251. It is recommended that Form PTO/AIA/50 be used.
6. An identification of the application as being "a reissue continuation of application number [the parent reissue application]" or "a continuation and reissue of application number [the parent reissue application]" or equivalent language, rather than being "a continuation of reissue application number [the parent reissue application]."
The following are examples of acceptable identification providing the appropriate continuity language for a continuation or divisional reissue application (as opposed to a Bauman type non-reissue continuing application).
Example 1: This application is a continuation reissue of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Example 2: This application is a continuation reissue of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567, now Re 99,999.
Example 3: This application is a reissue continuation of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Example 4: This application is a reissue divisional of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
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Example 5: This is an application for reissue of U.S. Patent No. 9,234,567, and is a continuation of application no. 15/123,456, which is also an application for reissue of U.S. Patent No. 9,234,567.
Example 6: This is an application for reissue of U.S. Patent No. 9,234,567, and is a divisional of application no. 15/123,456, which is also an application for reissue of U.S. Patent No. 9,234,567.
Example 7: This is an application for reissue of U.S. Patent No. 9,234,567 and claims benefit under 35 U.S.C. 120 as a continuation of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Example 8: This is an application for reissue of U.S. Patent No. 9,234,567 and claims benefit under 35 U.S.C. 120 as a continuation of application no. 15/123,456.
Example 9: This is an application for reissue of U.S. Patent No. 9,234,567. This application claims benefit under 35 U.S.C. 120 as a continuation of application no. 15/123,456, which is an application for reissue of U.S. Patent No. 9,234,567.
Note: For applications filed on or after September 16, 2012, domestic benefit claims under 37 CFR 1.78 must be made in an application data sheet (ADS) under 37 CFR 1.76. However, it is recommended that the first line of the specification still contain language set forth in the above examples to help ensure that the Office recognizes the application as a continuation reissue application or divisional reissue application (as opposed to a Bauman type non-reissue continuing application).
Questions relating to the propriety of divisional reissue applications and continuation reissue applications should be referred via the Technology Center (TC) Training Quality Assurance Specialist (TQAS)
I. DIVISIONAL REISSUE APPLICATIONS
37 CFR 1.176(b) permits the examiner to require restriction in a reissue application between the original claims of the patent and any newly added claims which are directed to a separate and distinct invention(s). See also MPEP § 1450. As a result of such a restriction requirement, divisional reissue applications may be filed for each of the inventions identified in the restriction requirement.
In addition, applicant may initiate a division of the claims by filing more than one reissue application in accordance with 37 CFR 1.177. The multiple reissue applications which are filed may contain different groups of claims from among the original patent claims, or some of the reissue applications may contain newly added groups (not present in the original patent). There is no requirement that the claims of the multiple reissue applications be independent and distinct from one another; if they are not independent and distinct from one another, the examiner must apply the appropriate double patenting rejections.
There is no requirement that a family of divisional reissue applications issue at the same time; however, it is required that they contain a cross reference to each other in the specification. 37 CFR 1.177(a) requires that all multiple reissue applications resulting from a single patent must include as the first sentence of their respective specifications a cross reference to the other reissue application(s). Accordingly, the first sentence of each reissue specification must provide(in addition to the statement of continuity – see above) notice stating that more than one reissue application has been filed, and it must identify each of the reissue applications and their relationship within the family of reissue applications, and to the original patent. An example of the suggested language to be inserted is as follows:
Notice: More than one reissue application has been filed for the reissue of Patent No. 9,999,999. The reissue applications are application numbers 09/999,994 (the present application), 09/999,995, and 09/999,998, all of which are divisional reissues of Patent No. 9,999,999.
The examiner should object to the specification and require an appropriate amendment if applicant fails to include such a cross reference to the other reissue applications in the first sentence of the specification of each of the reissue applications.
Where one of the divisional reissue applications of the family has issued without the required cross reference to the other reissue application(s), the examiner will refer the matter to his/her Supervisory Patent Examiner (SPE). The SPE will initiate a
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certificate of correction under 37 CFR 1.322 to include the appropriate cross reference in the already issued first reissue patent before passing the pending reissue application to issue. Form paragraph 10.19 may be used for such purpose. After the SPE prepares the memorandum as per form paragraph 10.19, the patent file with the memorandum should be forwarded to the Certificates of Correction Branch for issuance of a certificate. The examiner should make a reference in the pending divisional reissue application to the fact that an actual request for a Certificate of Correction has been initiated in the first reissue patent pursuant to 37 CFR 1.177(a), e.g., by an entry in the search notes or in an examiner’s amendment.
¶ 10.19 Memorandum - Certificate of Correction (Cross-Reference to Other Reissues in Family)
DATE: [1]
TO: Certificates of Correction Branch
FROM: [2], SPE, Art Unit [3]
SUBJECT: Request for Certificate of Correction
Please issue a Certificate of Correction in U. S. Letters Patent No. [4] as specified on the attached Certificate.
______________________
[5], SPE
Art Unit [6]
UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE
Patent No. [7]
Patented: [8]
The present reissue patent issued from an application that is one of a family of divisional reissue applications resulting from Patent No. [9]. The present reissue patent has issued without the cross reference to the other reissue application(s) of the family which is required pursuant to 37 CFR 1.177(a). Accordingly, insert in the first sentence of the specification as follows:
Notice: More than one reissue application has been filed for the reissue of patent [9]. The reissue applications are [10].
_________________________
[11], Supervisory Patent Examiner
Art Unit [12]
Examiner Note:
1 In bracket 9, insert the patent number of the patent for which multiple reissue divisional applications have been filed.
2 This is an internal memo and must not be mailed to the applicant. This memo should accompany the patented file to the Certificates of Correction Branch as noted in form paragraphs 10.13 and 10.14.
3. In brackets 5 and 11, insert the name of SPE and provide the signature of the SPE above each line.
4. In brackets 6 and 12, insert the Art Unit number.
5. Two separate pages of USPTO letterhead will be printed when using this form paragraph.
6. In bracket 10, identify each of the reissue applications (including the present application) and their relationship within the family of reissue applications, and to the original patent.
In addition to the amendment to the first sentence of the specification, the reissue application cross references will also be reflected in the file. For an IFW reissue application file, a copy of the bibliographic data sheet from the IFW file history should be printed and the examiner should annotate the printed sheet such that adequate notice is provided that more than one reissue application has been filed for a single original patent. The annotated sheet should be scanned into IFW.
Pursuant to 37 CFR 1.177(b) all of the claims of the patent to be reissued must be presented in each reissue application in some form, i.e., as amended, as unamended or as canceled. Further, any added claims must be numbered beginning with the next highest number following the last patent claim. It is noted that the same claim of the patent cannot be presented for examination in more than one of the divisional reissue applications, as a pending claim, in either its original or amended versions. If a patent claim is presented in one of the divisional reissue applications of a reissue application “family,” as a pending claim, then that patent claim must be presented as a canceled claim in all the other reissue applications of that family. Once a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application. If the same claim of the patent, e.g., patent claim 1 is presented for examination in more than one of the reissue applications, in different amended versions,
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the following rejections should be made in the reissue applications with that patent claim:
A rejection under 35 U.S.C. 251, in that the reissue application is not correcting an error in the original patent, because original claim 1 would be superseded by the reissuance of claim 1 in the other reissue application.
A rejection under 35 U.S.C. 112, in that claim 1 is indefinite because the invention of claim 1 is not particularly pointed out and distinctly claimed. Claim 1 presents one coverage in divisional reissue application X and another in the present reissue application. This is inconsistent.
The reissue applicant should then be advised to follow a procedure similar to the following example:
If there are patent claims 1 – 10 in two divisional reissue applications and an applicant wishes to revise claim 1, which is directed to AB (for example) to ABC in one divisional reissue application, and to ABD in a second divisional reissue application, applicant should do the following: Claim 1 in the first divisional reissue application can be revised to recite ABC. Claim 1 in the second divisional reissue application would be canceled, and new claim 11 would be added to recite ABD. The physical cancellation of claim 1 in the second divisional reissue application will not prejudice applicant’s rights in the amended version of claim 1 because those rights are retained via the first reissue application. Claim 1 continues to exist in the first reissue application, and both the first and second reissue applications taken together make up the totality of the correction of the original patent.
If the same or similar claims are presented in more than one of the multiple reissue applications, the possibility of statutory double patenting (35 U.S.C. 101) or non-statutory (judicially created doctrine) double patenting should be considered by the examiner during examination, and the appropriate rejections made. A terminal disclaimer may be filed to overcome an obviousness type double patenting rejection. The terminal disclaimer is necessary in order to ensure common ownership of the reissue patents throughout the remainder of the unexpired term of the original patent.
Whenever a divisional reissue application is filed with a copy of the oath/declaration and assignee consent from the parent reissue application, the copy of the assignee consent from the parent reissue application should not be accepted, unless the divisional reissue application is being filed in response to a restriction requirement. The copy of the consent from the parent reissue application does not indicate that the assignee has consented to the addition of the new invention of the divisional reissue application to the original patent . The Office of PatentApplication Processing (OPAP) should accord a filing date and send out a notice of missing parts stating that there is no proper consent and setting a period of time for filing the missing part and for payment of any surcharge required under 37 CFR 1.53(f) and 1.16(f). See MPEP § 1410.01. In a divisional reissue application filed in response to a restriction requirement made in the parent reissue application, the assignee need not file a consent to the divided-out invention now being provided in the divisional reissue application, because consent has already been provided in the parent reissue application.
The copy of the reissue oath/declaration in the divisional reissue application should be accepted by OPAP, because it is an oath/declaration, even though it may be improper under 35 U.S.C. 251 or 37 CFR 1.175. The examiner should check the copy of the oath/declaration to ensure that it identifies an error being corrected by the divisional reissue application. The copy of the oath/declaration from the parent reissue application may or may not cover the error being corrected by the divisional reissue application because the divisional reissue application is (by definition) directed to a new invention. If it does not, the examiner should reject the claims of the divisional reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the divisional reissue application, and require a new oath/declaration. See MPEP § 1414. Even for applications filed on or after September 16, 2012, a new oath/declaration is required for identification of the error, as opposed to identification of the error in the remarks accompanying an amendment, because 37 CFR 1.175(f)(2) states that “[i]f all errors identified in the inventor’s oath or declaration from the earlier-filed reissue application are no longer
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being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue,” and in this instance the initial oath/declaration (the copy filed) never stated a proper “error.” If the copy of the reissue oath/declaration from the parent reissue application does in fact cover an error being corrected in the divisional reissue application, no such rejection should be made. For applications filed before September 16, 2012, even though the copy of the reissue oath/declaration from the parent covers an error being corrected, a supplemental reissue oath/declaration pursuant to pre-AIA 37 CFR 1.175 (b)(1) will be required. See MPEP § 1414.03. 37 CFR 1.175 requires that the oath/declaration of the divisional reissue application identify at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application. Thus, where a divisional reissue application corrects the same error in a different way than its parent reissue application does, different oaths/declarations must be presented in the two reissue applications.
Example: Patent Broad claim – ABC
Parent Reissue Claim to ABC canceled and replaced by ABCD to define over the art.
Divisional Reissue Claim to ABC canceled and replaced by ABCE to define over the art.
The parent reissue oath/declaration error statement would be that ABC is too broad, and it was an error not to include D for patentability. The divisional reissue oath/declaration error statement would be that ABC is too broad and it was an error not to include E for patentability.
Situations yielding divisional reissues occur infrequently and usually involve only two such files. It should be noted, however, that in rare instances in the past, there have been more than two (and as many as five) divisional reissues of a patent. For treatment of a plurality of divisional reissue applications resulting from a requirement to restrict to distinct inventions or a requirement to elect species, see MPEP § 1450.
II. CONTINUATION REISSUE APPLICATIONS
A continuation reissue application of a parent reissue application is not ordinarily filed “for distinct and
separate parts of the thing patented” as called for in the second paragraph of 35 U.S.C. 251. The decision of In re Graff, 111 F.3d 874, 42 USPQ2d 1471 (Fed. Cir. 1997) interprets 35 U.S.C. 251 to permit multiple reissue patents to issue even where the multiple reissue patents are not for “distinct and separate parts of the thing patented.” The court stated:
Section 251[2] is plainly intended as enabling, not as limiting. Section 251[2] has the effect of assuring that a different burden is not placed on divisional or continuation reissue applications, compared with divisions and continuations of original applications, by codifying the Supreme Court decision [ The Corn-Planter Patent, 90 U.S. 181, 227-28 (1874)] which recognized that more than one patent can result from a reissue proceeding. Thus § 251[2] places no greater burden on Mr. Graff’s continuation reissue application than upon a continuation of an original application; § 251[2] neither overrides, enlarges, nor limits the statement in § 251[3] that the provisions of Title 35 apply to reissues.
In re Graff, 111 F.3d at 877, 42 USPQ2d at 1473. Accordingly, prosecution of a continuation reissue application of a parent reissue application will be permitted (despite the existence of the pending parent reissue application) where the continuation reissue application complies with the rules for reissue.
The parent and the continuation reissue applications should be examined together if possible. In order that the parent-continuation relationship of the reissue applications be specifically identified and notice be provided of both reissue applications for
both the parent and the continuation reissue applications, the following is done:
(A) An appropriate amendment to the continuing data entries must be made to the first sentence of the specification, (see the discussion above under the heading “Divisional Reissue Applications”).
(B) For an IFW reissue application file, a copy of the bibliographic data sheet from the IFW file history should be printed and the examiner should annotate the printed sheet such that adequate notice is provided that more than one reissue application
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has been filed for a single original patent. The annotated sheet should be scanned into IFW.
As is true for the case of multiple divisional reissue applications, all of the claims of the patent to be reissued must be presented in both the parent reissue application and the continuation reissue application in some form, i.e., as amended, as unamended, or as canceled. The same claim of the patent cannot, however be presented for examination in both the parent reissue application and the continuation reissue application, as a pending claim, in either its original or amended versions. See the discussion in subsection I. above for treatment of this situation. Further, any added claims must be numbered beginning with the next highest number following the past original patent claims.
Where the parent reissue application issues before the examination of the continuation reissue application, the claims of the continuation reissue application should be carefully reviewed for double patenting over the claims of the parent reissue application. Where the parent and the continuation reissue applications are examined together, a provisional double patenting rejection should be made in both cases as to any overlapping claims. See MPEP § 804 - § 804.04 as to double patenting rejections. Any terminal disclaimer filed to obviate an obviousness-type double patenting rejection ensures common ownership of the reissue patents throughout the remainder of the unexpired term of the original patent.
If the parent reissue application issues without any cross reference to the continuation reissue application, amendment of the parent reissue patent to include a cross-reference to the continuation reissue application must be effected at the time of allowance of the continuation reissue application by Certificate of Correction. See the discussion above under the heading “Divisional Reissue Applications” as to how the Certificate of Correction is to be provided.
Again, the examiner should make reference in the pending continuation reissue application to the fact that an actual request for a Certificate of Correction has been generated in the first reissue patent pursuant to 37 CFR 1.177(a), e.g., by an entry in the search notes or in an examiner’s amendment.
Generally, where a continuation reissue application is filed with a copy of the oath/declaration and assignee consent from the parent reissue application, and the parent reissue application is not to be abandoned, the copy of the consent of the parent reissue application should not be accepted. The copy of the consent of the parent reissue application does not indicate that the assignee has consented to the addition of the new error correction of the continuation reissue application to the original patent. Presumably, a new correction has been added, because the parent reissue application is still pending. OPAP should accord a filing date and send out a notice of missing parts stating that there is no proper consent and setting a period of time for filing the missing part and for payment of any surcharge required under 37 CFR 1.53(f) and 1.16(f). See MPEP § 1410.01. The copy of the reissue oath/declaration should be accepted by OPAP, because it is an oath/declaration, albeit improper under 35 U.S.C. 251. The examiner should reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration. See 37 CFR 1.175. Even for applications filed on or after September 16, 2012, a new oath/declaration is required for identification of the error, as opposed to identification of the error in the remarks accompanying an amendment, because 37 CFR 1.175(f)(2) states that “[i]f all errors identified in the inventor’s oath or declaration from the earlier-filed reissue application are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue,” and in this instance the initial oath/declaration (the copy filed) never stated a proper “error.” 37 CFR 1.175(f)(2) allows for the identification of the reissuable error in the remarks only where a proper reissuable error was previously entered into the application. One of form paragraphs 14.01.01 through 14.01.03 may be used. See MPEP § 1414.
As an exception to the general practice, there may be a situation where: (a) the original declaration of a parent reissue application may identify an error X, but as a result of an amendment to the claims, error X is no longer being corrected in the parent reissue application, with a supplemental declaration being
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included to provide a new error statement, and (b) a continuation reissue application is filed to correct error X. In this situation, applicant may provide in the continuation reissue application a copy of the original declaration and consent filed in the parent reissue application. The applicant is to point out this exception to the general practice in the remarks accompanying the continuation reissue application. 37 CFR 1.175 requires that the filing of any continuing reissue application which does not replace its parent reissue application must include an oath or declaration which, pursuant to paragraph (a)(1) of this section, identifies at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application. In this instance, the continuation reissue application would identify at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application by virtue of the copy of the original declaration (whose error is different from that of the parent reissue application which now has the supplemental declaration). Two examples of this exception are provided:
Example 1
Patent Broad claim –ABC Dependent claim –ABCE Dependent claim – ABCF
Parent Reissue Broad claim – ABCD originally presented in the reissue, and then canceled during prosecution. During prosecution, dependent claims rewritten as independent claims – ABCDEQ and ABCDFQ
Continuation Reissue Broad claim – ABCD
The parent reissue application’s supplemental declaration describes the addition of Q and D to the dependent claims, which have been rewritten as independent claims. A copy of the original reissue declaration from the parent reissue application, which describes the addition of D to the original independent patent claim, was filed in the continuation reissue application. Thus, the declarations of the parent reissue application and the continuation reissue application correct different errors. Further, the copy of the original consent from the parent reissue application filed in the continuation reissue application covers the error described in the copy of the declaration filed in the
continuation reissue application. A non-statutory double patenting rejection should be considered by the examiner, with the requirement of a terminal disclaimer in each application. In re Berg, 140 F.3d 1428, 1435, 46 USPQ2d 1226, 1232 (Fed. Cir. 1998) (“The two-way exception can only apply when the applicant could not avoid separate filings, and even then, only if the PTO controlled the rates of prosecution to cause the later filed species claims to issue before the claims for a genus in an earlier application…In Berg’s case, the two applications could have been filed as one, so it is irrelevant to our disposition who actually controlled the respective rates of prosecution.”).
Example 2:
Patent Broad claim – ABC Dependent claim – ABCE Dependent claim – ABCF
Parent Reissue Broad claim – ABCD originally presented in the reissue, and then canceled during prosecution. During prosecution, dependent claims rewritten as independent claims – ABCDE and ABCDF
Continuation Reissue Broad claim – ABCD
The parent reissue application’s supplemental declaration describes the addition of D to the ABCE and ABCF combinations, correcting an error in the original dependent claims. The copy of the original reissue declaration from the parent reissue application filed in the continuation reissue application describes the addition of D to the broad claim, correcting an error in the original independent claim. This is permitted because the applicant is free to split the correction of an error as to different claims into different reissue applications, where one is a continuing application of another. See In re Graff, 111 F.3d at 877, 42 USPQ2d at 1473, where the Federal Circuit stated that 35 U.S.C. 251 places “no greater burden on Mr. Graff’s continuation reissue application than upon a continuation of an original application…” Again a non-statutory double patenting rejection should be considered by the examiner, with the requirement of a terminal disclaimer in each application. In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233. To the extent that 37 CFR 1.175 requires a waiver to accommodate this situation, it is hereby waived.
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Where a continuation reissue application is filed with a copy of the oath/declaration and assignee consent from the parent reissue application, and the parent reissue application is, or will be abandoned, the copy of the consent should be accepted by both OPAP and the examiner. The reissue oath/declaration should be accepted by OPAP, and the examiner should check to ensure that the oath/declaration identifies an error that is being corrected in the continuation reissue application. See MPEP § 1414.
For applications filed before September 16, 2012, if a preliminary amendment was filed with the continuation reissue application, the examiner should check for the need of a supplemental reissue oath/declaration. Pursuant to 37 CFR 1.175(b)(1), for any error corrected via the preliminary amendment which is not covered by the oath or declaration submitted in the parent reissue application, applicant must submit a supplemental oath/declaration stating that every such error arose without any deceptive intention on the part of the applicant. See MPEP § 1414 and § 1414.03.
1452 Request for Continued Examination of Reissue Application [R-11.2013]
A request for continued examination (RCE) under 37 CFR 1.114 is available for a reissue application for reissue of a utility or plant patent. Effective May 29, 2000, an applicant in a reissue application may file a request for continued examination of the reissue application, if the reissue application was filed on or after June 8, 1995. This applies even where the application, which resulted in the original patent, was filed before June 8, 1995.
An RCE continues the prosecution of the existing reissue application and is not a filing of a new reissue application. Thus, the filing of an RCE will not be announced in the Official Gazette. Additionally, if a reissue application is merged with a reexamination proceeding (see MPEP § 1449.01), the filing of an RCE will not dissolve the merger, because the reissue application does not become abandoned. The Office, however, may choose to dissolve the merger based on the individual facts and circumstances of
the case, e.g., to promote the statutorily mandated requirement for special dispatch in reexamination.
1453 Amendments to Reissue Applications [R-11.2013]
37 CFR 1.121 Manner of making amendments in application. *****
(i) Amendments in reissue applications. Any amendment to the description and claims in reissue applications must be made in accordance with § 1.173.
*****
37 CFR 1.173 Reissue specification, drawings, and amendments.
*****
(b) Making amendments in a reissue application.. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(1) Specification other than the claims . Changes to the specification, other than to the claims, must be made by submission of the entire text of an added or rewritten paragraph, including markings pursuant to paragraph (d) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph. The precise point in the specification must be identified where any added or rewritten paragraph is located. This paragraph applies whether the amendment is submitted on paper or compact disc (see §§ 1.52(e)(1) and 1.821(c), but not for discs submitted under § 1.821(e)).
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(3) Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event that a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.” All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet
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accompanying the papers including the amendment to the drawings.
(i) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Marked-up Drawings” and must be presented in the amendment or remarks section that explains the change to the drawings.
(ii) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status ( i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “U” and end with “/U” to properly identify the material being added.
(e) Numbering of patent claims preserved. Patent claims may not be renumbered. The numbering of any claim added in the reissue application must follow the number of the highest numbered patent claim.
(f) Amendment of disclosure may be required. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
The provisions of 37 CFR 1.173(b)-(g) and those of 37 CFR 1.121(i) apply to amendments in reissue applications.Any amendments submitted in a reissue application must comply with 37 CFR 1.173(b).
Amendments submitted in a reissue application, including preliminary amendments (i.e., amendments filed as a separate paper to accompany the filing of a reissue application), must comply with the practice
outlined below in this section; however, for examiner’s amendments to the specification and claims, 37 CFR 1.121(g) provides certain exceptions to that practice in the interest of expediting prosecution. The exceptions set forth in 37 CFR 1.121(g) also apply in reissue applications.
Pursuant to 37 CFR 1.173(a), no amendment in a reissue application may enlarge the scope of the claims, unless “applied for within two years from the grant of the original patent.” Further, the amendment may not introduce new matter. See MPEP § 1412.03 for further discussion as to the time limitation on enlarging the scope of the patent claims in a reissue application.
All amendment changes must be made relative to the patent to be reissued. Pursuant to 37 CFR 1.173(d), any such changes which are made to the specification, including the claims, must be shown by employing the following “markings:”
(A) The matter to be omitted by reissue must be enclosed in brackets; and
(B) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (pursuant to 37 CFR 1.96 for computer printouts or programs, and 37 CFR 1.825 for sequence listings). Matter added by reissue on compact discs must be preceded with “U” and end with “/U” to properly identify the material being added.
I. THE SPECIFICATION
37 CFR 1.173(b)(1) relates to the manner of making amendments to the specification other than the claims. It is not to be used for making amendments to the claims or the drawings.
All amendments which include any deletions or additions must be made by submission of the entire text of each added or rewritten paragraph with markings (as defined above), except that an entire paragraph of specification text may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph. Applicant must indicate the precise point where each amendment is made. All bracketing and underlining is made in comparison to the original patent, not in comparison
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to any prior amendment in the reissue application. Thus, all paragraphs which are newly added to the specification of the original patent must be submitted as completely underlined each time they are re-submitted in the reissue application.
II. THE CLAIMS
37 CFR 1.173(b)(2) relates to the manner of making amendments to the claims in reissue applications. It is not to be used for making amendments to the remainder of the specification or to the drawings. 37 CFR 1.173(b)(2) requires that:
(A) For each claim that is being amended by the amendment being submitted (the current amendment), the entire text of the claim must be presented with markings as defined above;
(B) For each new claim added to the reissue by the amendment being submitted (the current amendment), the entire text of the added claim must be presented completely underlined;
(C) A patent claim should be canceled by a direction to cancel that claim, there is no need to present the patent claim surrounded by brackets; and
(D) A new claim (previously added in the reissue) should be canceled by a direction to cancel that claim.
Original patent claims are never to be renumbered; see 37 CFR 1.173(e). A patent claim retains its number even if it is canceled in the reissue proceeding, and the numbering of any added claims must begin after the last original patent claim.
Pursuant to 37 CFR 1.173(c), each amendment submitted must set forth the status of all patent claims and all added claims as of the date of the submission. The status to be set forth is whether the claim is pending or canceled. The failure to submit the claim status will generally result in a notification to applicant that the amendment before final rejection is not completely responsive (see 37 CFR 1.135(c)). Such an amendment after final rejection will not be entered.
Also pursuant to 37 CFR 1.173(c), each claim amendment must be accompanied by an explanation of the support in the disclosure of the patent for the
amendment (i.e., support for all changes made in the claim(s), whether insertions or deletions). The failure to submit an explanation will generally result in a notification to applicant that the amendment before final rejection is not completely responsive (see 37 CFR 1.135(c)). Such an amendment after final rejection will not be entered.
III. THE DRAWINGS
37 CFR 1.173(a)(2) states that amendments to the original patent drawings are not permitted, and that any change to the drawings must be by way of 37 CFR 1.173(b)(3). See MPEP § 1413 for the manner of making amendments to the drawings in a reissue application.
Form paragraph 14.20.01 may be used to advise applicant of the proper manner of making amendments in a reissue application.
¶ 14.20.01 Amendments To Reissue-37 CFR 1.173(b)
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b). In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01.
Examiner Note:
This form paragraph may be used in the first Office action to advise applicant of the proper manner of making amendments, and to notify applicant of the need to file a supplemental oath/declaration before the application can be allowed.
Form paragraph 14.21.01 may be used to notify applicant that proposed amendments filed before final rejection in the reissue application do not comply with 37 CFR 1.173(b).
¶ 14.21.01 Improper Amendment To Reissue - 37 CFR 1.173(b)
The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.173(b), which sets forth the manner of making amendments in reissue applications. A supplemental paper correctly amending the reissue application is required.
A shortened statutory period for reply to this letter is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter.
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Examiner Note:
1. This form paragraph may be used for any 37 CFR 1.173(b) informality as to an amendment submitted in a reissue application prior to final rejection. After final rejection, applicant should be informed that the amendment will not be entered by way of an Advisory Office action.
2. In bracket 2, specify the proposed amendments that are not in compliance.
Note that if an informal amendment is submitted after final rejection, form paragraph 14.21.01 should not be used. Rather, an advisory Office action should be issued using Form PTO-303 indicating that the amendment was not entered because it does not comply with 37 CFR 1.173(b), which sets forth the manner of making amendments in reissue applications.
IV. ALL CHANGES ARE MADE VIS-À-VIS THE PATENT TO BE REISSUED
When a reissue patent is printed, all underlined matter is printed in italics and all brackets are printed as inserted in the application, in order to show exactly which additions and deletions have been made to the patent being reissued. Therefore, all underlining and bracketing in the reissue application should be made relative to the text of the patent, as follows. In accordance with 37 CFR 1.173(g), all amendments in the reissue application must be made relative to (i.e. vis-à-vis) the patent specification in effect as of the date of the filing of the reissue application. The patent specification includes the claims and drawings. If there was a prior change to the patent (made via a prior concluded reexamination certificate, reissue of the patent, certificate of correction, etc.), the first amendment of the subject reissue application must be made relative to the patent specification as changed by the prior proceeding or other mechanism for changing the patent. All amendments subsequent to the first amendment must also be made relative to the patent specification in effect as of the date of the filing of the reissue application, and not relative to the prior amendment.
A. The Subject Patent Already Has Underlining or Bracketing
If the original (or previously changed) patent includes a formula or equation already having
underlining or bracketing therein as part of the formula or equation, any amendment of such formula or equation should be made by bracketing the entire formula and rewriting and totally underlining the amended formula in the re-presented paragraph of the specification or rewritten claim in which the changed formula or equation appears. Amendments of segments of a formula or equation should not be made. If the original patent includes bracketing and underlining from an earlier reissue, double brackets and double underlining should be used in the subject reissue application to identify and distinguish the present changes being made. The subject reissue, when printed, would include double brackets (indicating deletions made in the subject reissue) and boldface type (indicating material added in the subject reissue). If the original patent includes bracketing and underlining from an earlier reexamination, the reissue application must be presented as if the changes made to the original patent text via the reexamination certificate are a part of the original patent. Thus, all italicized text of the reexamination certificate is presented in the amendment (made in the reissue application) without italics. Further, any text found in brackets in the reexamination certificate is omitted in the amendment (made in the reissue application). Any canceled claims resulting from the reexamination will be lined through.
V. EXAMPLES OF PROPER AMENDMENTS
A substantial number of problems arise in the Office because of improper submission of amendments in reissue applications. The following examples are provided to assist in preparation of proper amendments to reissue applications.
A. Original Patent Description or Patent Claim Amended
Example (1)
If it is desired to change the specification at column 4, line 23, to replace “is” with --are--, submit a copy of the entire paragraph of specification of the patent being amended with underlining and bracketing, and point out where the paragraph is located, e.g.,
Replace the paragraph beginning at column 4, line 23 with the following:
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§ 1453CORRECTION OF PATENTS
Scanning [is] are controlled by clocks which are, in turn, controlled from the display tube line synchronization. The signals resulting from scanning the scope of the character are delivered in parallel, then converted into serial mode through a shift register wherein the shift signal frequency is controlled by a clock that is, in turn, controlled from the display tube line synchronization.
Example (2)
For changes to the claims, one must submit a copy of the entire patent claim with the amendments shown by underlining and bracketing, e.g.,
Amend claim 6 as follows:
Claim 6 (Amended). The apparatus of claim [5] 1 wherein the [first] second piezoelectric element is parallel to the [second] third piezoelectric element.
If the dependency of any original patent claim is to be changed by amendment, it is proper to make that original patent claim dependent upon a later filed higher numbered claim.
B. Cancellation of Claim(s)
Example (3)
To cancel an original patent claim, in writing, direct cancellation of the patent claim, e.g.,
Cancel claim 6.
Example (4)
To cancel a new claim (previously added in the reissue), in writing, direct cancellation of the new claim, e.g.,
Cancel claim 15.
C. Presentation of New Claims
Example (5)
Each new claim (i.e., a claim not found in the patent, that is newly presented in the reissue application) should be presented with underlining throughout the claim, e.g.,
Add claim 7 as follows:
Claim 7 (new). The apparatus of claim 5 further comprising electrodes attaching to said opposite faces of the first and second piezoelectric elements.
Even though original claims may have been canceled, the numbering of the original claims does not change. Accordingly,
any added claims are numbered beginning with the number next higher than the number of claims in the original patent. If new claims have been added to the reissue application which are later canceled before issuance of the reissue patent, the examiner will renumber any remaining new claims in numerical order to follow the number of claims in the original patent.
D. Amendment of New Claims
An amendment of a “new claim” (i.e., a claim not found in the patent, that was previously presented in the reissue application) must be done by presenting the amended “new claim” containing the amendatory material, and completely underlining the claim. The presentation cannot contain any bracketing or other indication of what was in the previous version of the claim. This is because all changes in the reissue are made vis-à-vis the original patent, and not in comparison to the prior amendment. Although the presentation of the amended claim does not contain any indication of what is changed from the previous version of the claim, applicant must point out what is changed in the “Remarks” portion of the amendment. Also, per 37 CFR 1.173(c), each change made in the claim must be accompanied by an explanation of the support in the disclosure of the patent for the change.
E. Amendment of Original Patent Claims More Than Once
The following illustrates proper claim amendment of original patent claims in reissue applications:
A. Patent claim.
Claim 1. A cutting means having a handle portion and a blade portion.
B. Proper first amendment format.
Claim 1 (Amended). A [cutting means] knife having a bone handle portion and a notched blade portion.
C. Proper second amendment format.
Claim 1 (Twice Amended). A [cutting means] knife having a handle portion and a serrated blade portion.
Note that the second amendment must include the remaining changes previously presented in the first amendment, i.e., [cutting means] knife, as well as
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the new changes presented in the second amendment, i.e., serrated.
The word bone was presented in the first amendment and is now to be deleted in the second amendment. The word “bone” is NOT to be shown in brackets in the second amendment. Rather, the word “bone” is simply omitted from the claim, because “bone” never appeared in the patent. An explanation of the deletion should appear in the remarks.
The word notched which was presented in the first amendment is replaced by the word serrated in the second amendment. The word notched is being deleted in the second amendment and did not appear in the patent; accordingly, “notched” is not shown in any form in the claim. The word serrated is being added in the second amendment, and accordingly “serrated” is added to the claim and is underlined.
In the second amendment, the deletions of “notched” and “bone” are not changes from the original patent claim text and therefore are not shown in brackets in the second amendment. In both the first and the second amendments, the entire claim is presented only with the changes from the original patent text.
VI. ADDITIONAL EXAMPLES
(A) For a reissue application, where the patent was previously reissued: As per MPEP § 1411, double underlining and double bracketing are used in the second reissue application to show amendments made relative to the first reissued patent
(B) For a reissue application, where the patent was previously reexamined and a reexamination certificate has issued for the patent:
An amendment in the reissue application must be presented as if the changes made to the original patent text via the reexamination certificate are a part of the original patent. Thus, all italicized text of the reexamination certificate is presented in the amendment (made in the reissue application) without italics. Further, any text found in brackets in the reexamination certificate is omitted in the amendment (made in the reissue application). A claim canceled by the reexamination certificate must be deleted by a direction to strike through the claim,
i.e., the canceled claim(s) should be lined through, and not surrounded by brackets.
(C) For a reissue application, where a certificate of correction has issued for the patent:
An amendment in the reissue application must be presented as if the changes made to the original patent text via the certificate of correction are a part of the original patent. Thus, all text added by certificate of correction is presented in the amendment (made in the reissue application) without italics. Further, any text deleted by certificate of correction is entirely omitted in the amendment (made in the reissue application). A claim canceled by the certificate of correction must be deleted by a direction to strike through the claim, i.e., the canceled claim(s) should be lined through, and not surrounded by brackets.
(D) For a reissue application, where a statutory disclaimer has issued for the patent:
Any claim statutorily disclaimed is no longer in the patent, and such a claim cannot be amended. A disclaimed claim must be deleted by a direction to strike through the claim, i.e., the statutorily disclaimed claim(s) should be lined through, and not surrounded by brackets.
(E) Making amendments in an application for reissue of a previously reissued patent:
When a copy of a first reissue patent is presented as the specification of a second reissue application (filed as a reissue of a reissue), additions made by the first reissue will already be printed in italics, and should remain in such format. Thus, applicants need only present additions to the specification/claims in the second reissue application as double underlined text. Subject matter to be deleted from the first reissue patent should be presented in the second reissue application within sets of double brackets. Examples of the form for a twice-reissued patent (a reissue of a reissue) are found in Re. 23,558 and Re. 28,488. Double underlining and double bracketing are used in the second reissue application, while bold-faced type and double bracketing appear in the printed patent (the second reissue patent) to indicate
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further insertions and deletions, respectively, in the second reissue patent.
1454 Appeal Brief [R-11.2013]
The requirements for an appeal brief are set forth in 37 CFR 41.37 and MPEP § 1205, and they apply to a reissue application in the same manner that they apply to a non-reissue application. There is, however, a difference in practice as to presentation of the copy of the claims in the appeal brief for a reissue application. The claims on appeal presented in an appeal brief for a reissue application should include all underlining and bracketing necessary to reflect the changes made to the patent claims during the prosecution of the reissue application. In addition, any new claims added in the reissue application should be completely underlined.
1455 Allowance and Issue [R-11.2013]
I. ISSUE CLASSIFICATION
The examiner completes the Issue Classification information in the same manner as for a non-reissue application. In addition, a copy of an internal review form must also be completed.
II. CHANGES TO THE ORIGINAL PATENT
The specifications of reissue patents will be printed in such a manner as to show the changes over the original patent text by enclosing any material omitted by the reissue in heavy brackets [ ] and printing material added by the reissue in italics . 37 CFR 1.173 (see MPEP § 1411) requires the specification of a reissue application to be presented in a specified form, specifically designed to facilitate this different manner of printing, as well as for other reasons.
The printed reissue patent specification will carry the following heading, which will be added by the Office of Data Management:
"Matter enclosed in heavy brackets [ ] appears in the original patent but forms no part of this reissue specification; matter printed in italics indicates the additions made by reissue.”
The examiners should see that the specification is in proper form for printing. Examiners should carefully check the entry of all amendments to ensure that the changes directed by applicant will be accurately printed in any reissue patent that may ultimately issue. Matter appearing in the original patent which is omitted by reissue should be enclosed in brackets, while matter added by reissue should be underlined. Any material added by amendment in the reissue application (as underlined text) which is later canceled should be crossed through, and not bracketed. Material canceled from the original patent should be enclosed in brackets, and not lined through.
All the claims of the original patent should appear in the reissue patent, with canceled patent claims being enclosed in brackets.
III. CLAIM NUMBERING
No renumbering of the original patent claims is permitted, even if the dependency of a dependent patent claim is changed by reissue so that it is to be dependent on a subsequent higher numbered claim.
When a dependent claim in a reissue application depends upon a claim which has been canceled, and the dependent claim is not thereafter made dependent upon a pending claim, such a dependent claim must be rewritten in independent form.
New claims added during the prosecution of the reissue application should follow the number of the highest numbered patent claim and should be completely underlined to indicate they are to be printed in italics on the printed patent. Often, as a result of the prosecution and examination, some new claims are canceled while other new claims remain. When the reissue application is allowed, any claims remaining which are additional to the patent claims (i.e., claims added via the reissue application) should be renumbered in sequence starting with the number next higher than the number of the last claim in the original patent (the printed patent). Therefore, the number of claims allowed will not necessarily correspond to the number of the last claim in the reissue application, as allowed. The number of claims appearing in the “Total Claims Allowed” box
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on the Issue Classification sheet at the time of allowance should be consistent with the number of claims indicated as allowable on the Notice of Allowability (Form PTOL-37).
IV. CLAIM DESIGNATED FOR PRINTING
At least one claim of an allowable reissue application must be designated for printing in the Official Gazette. Whenever at least one claim has been amended or added in the reissue, the claim (claims) designated for printing must be (or include) a claim which has been changed or added by the reissue. A canceled claim is not to be designated as the claim for the Official Gazette.
If there is no change in the claims of the allowable reissue application (i.e., when they are the same as the claims of the original patent) or, if the only change in the claims is the cancellation of claims, then the most representative pending allowed claim is designated for printing in the Official Gazette.
V. PROVIDING PROPER FORMAT
Where a reissue application has not been prepared in the above-indicated manner, the examiner may obtain from the applicant a clean copy of the reissue specification prepared in the indicated form, or a proper submission of a previously improperly submitted amendment. However, if the deletions from the original patent are small, the reissue application can be prepared for issue by putting the bracketed inserts at the appropriate places and suitably numbering the added claims.
When applicant submits a clean copy of the reissue specification, or a proper submission of a previous improper amendment, a supplemental reissue declaration should not be provided to address this submission, because the correction of format does not correct a 35 U.S.C. 251 error in the patent.
VI. PARENT APPLICATION DATA
All parent application data on the bibliographic data sheet of the original patent file (or front face of the original patent file wrapper if the original patent is a paper file) should be present on the bibliographic data sheet of the reissue application.
It sometimes happens that the reissue is a continuation reissue application of another reissue application, and there is also original-patent parent application data. The examiner should ensure that the parent application data on the original patent is properly combined with the parent application data of the reissue, in the text of the specification (if present therein) and on the bibliographic data sheet. The combined statement as to parent application data should be checked carefully for proper bracketing and underlining.
VII. REFERENCES CITED AND PRINTED
The examiner should list on a PTO-892 form any reference that was cited during the original prosecution of the patent which is again cited/applied in the reissue application. It is noted that the Office will not print in the reissue patent “References Cited” section any reference cited in the patent but not again cited in the reissue application. Accordingly, should an applicant wish to ensure that all of the references which were cited in the original patent are cited in the reissue application, an information disclosure statement (IDS) in compliance with 37 CFR 1.97 and 1.98 should be filed in the reissue application. A patent cannot be reissued solely for the purpose of adding citations of additional prior art.
VIII. EXAMINER'S AMENDMENT AND REISSUE OATH OR DECLARATION
When it is necessary to amend the reissue application in order to place the application in condition for allowance, the examiner may:
(A) request that applicant provide the amendments (e.g., by facsimile transmission or by hand-carry); or
(B) make the amendments, with the applicant’s approval, by a formal examiner’s amendment.
If the changes are made by a formal examiner’s amendment, the entire paragraph(s) or claim(s) being amended need not be presented in rewritten form for any deletions or additions. Changes to the specification including the claims of an application made by the Office in an examiner’s amendment may be made by specific instructions to insert or delete subject matter set forth in the examiner’s
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§ 1455CORRECTION OF PATENTS
amendment by identifying the precise point in the specification or the claim(s) where the insertion or deletion is to be made. 37 CFR 1.121(g).
For applications filed on or after September 16, 2012, if additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, a supplemental reissue oath or declaration is not required. However, where all errors previously identified in the reissue oath/declaration are no longer being replied upon as the basis for reissue, the applicant must explicitly identify on the record an error being relied upon as the basis for reissue (e.g., in the remarks accompanying an amendment). See 37 CFR 1.175(d). Identification of the error must be conspicuous and clear, and must comply with 35 U.S.C. 251.
If the reissue application was filed before September 16, 2012 and the amendment corrects an “error” under 35 U.S.C. 251, then a supplemental oath or declaration will be required. See MPEP § 1414.03 MPEP § 1444. The examiner should telephone applicant and request the supplemental oath or declaration, which must be filed before the application can be counted as an allowance.
IX. FINAL REVIEW OF THE REISSUE APPLICATION BY THE EXAMINER
Before forwarding a reissue application to the Technology Center (TC) Training Quality Assurance Specialist (TQAS) for final review, the examiner should complete and initial an Examiner Reissue Checklist. A copy of the checklist should be available from the TQAS or from the Paralegal Specialist of the TC.
1456 Reissue Review [R-11.2013]
All reissue applications are monitored and reviewed in the Technology Centers (TCs) by the appropriate Training Quality Assurance Specialist (TQAS) (which includes TC TQASs, paralegals or other technical support who might be assigned as backup) at several stages during the prosecution. The review by the Office of the TC TQASs is made to check that practice and procedure unique to reissue has been carried out for the reissue application. In addition , a patentability review is made in a sample
of reissue applications by the TC TQAS in the manner previously carried out by the former Office of Patent Quality Review. In order to ensure that TQASs are aware of the reissue applications in their TCs, a pair of terminal-specific PALM flags have been created which must be set by the TQAS before certain PALM transactions can be completed. First, when a new reissue application enters the TC, a TQAS must set a PALM “flag” by entering the reissue application number in an Office-wide computer grouping before a docketing transaction will be accepted. By having to set this first flag, the TQAS is made aware of the assignment of the reissue application to the TC and can take steps, as may be appropriate, to instruct the examiner on reissue-specific procedures before the examination process begins, as well as throughout the examination of the reissue application. Second, the TQAS must remove the above-described PALM “flag” before a Notice of Allowance can be generated or the PALM transaction for an issue revision can be entered, thereby ensuring that the TQAS is made aware of when the reissue application is being allowed so that the TQAS may be able to conduct a final review of the reissue application, if appropriate.
1457 Design Reissue Applications and Patents [R-11.2013]
A reissue application can be filed for a design patent in the same manner that a reissue application is filed for a utility patent. There are, however, a few procedures specific to design reissue applications as explained below.
I. EXPEDITED EXAMINATION PROCEDURE
Design reissue applications requesting expedited examination and complying with the requirements of 37 CFR 1.155 are examined with priority and undergo expedited processing throughout the entire course of prosecution in the Office, including appeal, if any, to the Patent Trial and Appeal Board. All processing is expedited from the date the request is granted.
Design reissue applicants seeking expedited examination may file a design reissue application in the Office together with a corresponding request
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under 37 CFR 1.155 pursuant to the guidelines set forth in MPEP § 1504.30.
The design reissue application and the request are processed by the Office of Patent Application Processing (OPAP). OPAP enters the appropriate information into PALM specifying when notice of the design reissue application will be published in the Official Gazette (see MPEP § 1441). After processing in OPAP, the design reissue application and the request are forwarded to the Design TC Director’s Office. Upon a decision by the Design TC Director to grant the request for expedited examination, fees are immediately processed, and the application papers are promptly assigned an application number. The design reissue application file is then forwarded to the Office of Patent Legal Administration (OPLA) for a decision under 37 CFR 1.182 to sua sponte waive the requirement for delaying action in the application until 2 months after announcement of the design reissue application filing is published in the Official Gazette (see MPEP § 1441). Once the decision under 37 CFR 1.182 is mailed, the design reissue application file will be returned to the Design TC Director’s Office. In accordance with the waiver, the Design Group will begin expedited examination of the application under 37 CFR 1.155 promptly after the return of the design reissue application file from OPLA, rather than delay examination until after 2 months from the date the announcement is published in the Official Gazette and the applicant will be notified that examination is being expedited. The decision under 37 CFR 1.182 will require that no Notice of Allowance be mailed in the design reissue application until after 2 months from the date the announcement is published in the Official Gazette. For example, if the design reissue application is allowed on the first Office action, then jurisdiction over the reissue application will be retained in the TC, and the Notice of Allowance will not be mailed until the expiration of 2 months after publication of the filing of the design reissue application in the Official Gazette (plus time for matching any protest filed with the application). The examiner will check the PALM contents to ascertain when publication actually occurred. The delay in the mailing of the Notice of Allowance is to ensure that any potential protests complying with 37 CFR 1.291 submitted within the 2-month delay period will be considered by the Office. (see MPEP § 1441.01).
The expedited examination procedure under 37 CFR 1.155 occurs through initial examination processing and throughout the entire prosecution in the Office. Once a request for expedited examination is granted, prosecution of the design reissue application will proceed according to the procedure under 37 CFR 1.155, and there is no provision for “withdrawal” from expedited examination procedure.
II. DESIGN REISSUE FEE
The design reissue application fee is set forth for in 37 CFR 1.16(e). A search fee (37 CFR 1.16(n)) and an examination fee (37 CFR 1.16(r)) are also required. The additional fees in 37 CFR 1.16(h) and 37 CFR 1.16(i) do not apply for a design reissue application because more than one claim in not permitted in a design application pursuant to the last sentence of 37 CFR 1.153(a).
The fee for issuing a design reissue patent is set forth in 37 CFR 1.18(b).
III. MULTIPLE DESIGN REISSUEAPPLICATIONS
The design reissue application can be filed based on the “error” of failing to include a design for a patentably distinct segregable part of the design claimed in the original patent or a patentably distinct subcombination of the claimed design. A reissue design application claiming both the entire article and the patentably distinct subcombination or segregable part would be proper under 35 U.S.C. 251, if such a reissue application is filed within two years of the issuance of the design patent, because it is considered a broadening of the scope of the patent claim. Restriction will be required under 37 CFR 1.176(b) in such a reissue design application, and the added design to the segregable part or subcombination will be held to be constructively non-elected and withdrawn from consideration. See MPEP § 1450. In the Office action containing the restriction requirement, the examiner should suggest to the applicant that a divisional design reissue application directed to the constructively non-elected segregable part or subcombination subject matter may be filed. The claim to the patented design for the entire article will then be examined and, if found allowable without change from the patent, a rejection will be made under 35 U.S.C. 251 based on the fact
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that there is no “error” in the non-amended original patent claim. In the Office action making this rejection, applicant should be advised that a proper response to the rejection must include (A) a request to suspend action in this original reissue application pending completion of examination of a divisional reissue application directed to the constructively non-elected segregable part or subcombination subject matter, (B) the filing of the divisional reissue application, or a statement that one has already been filed (identifying it at least by application number), and (C) an argument that a complete response to the rejection has been made based upon the filing of the divisional reissue application and the request for suspension. Action in the original design reissue application will then be suspended, and the divisional will be examined.
If, after examination, the divisional design reissue application is also determined to be allowable, a requirement must be made in the divisional design reissue application to submit a petition under 37 CFR 1.183 requesting waiver of 37 CFR 1.153 in order to permit the rejoining of the designs to the entire article (of the original application) and the segregable part or subcombination (of the divisional) under a single claim into a single design reissue application for issuance, the single application being the first design reissue application.
It should be noted that the filing of a design reissue application would not be proper if applicant did in fact include the design for a segregable part or subcombination thereof in the original design patent application, a restriction was thus made, and then applicant failed to file a divisional reissue application for a non-elected invention that was canceled in view of a restriction requirement (before issue of the original application. See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977).
IV. CONVERSION TO UTILITY PATENT
A design patent cannot be converted to a utility patent via reissue.
35 U.S.C. 251 requires that the “patent is, through error without any deceptive intention, deemed wholly
or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent”; however, the design patent (for which the reissue application would be filed) is not wholly or partly inoperative or invalid. There is no error in the design patent. Also, converting a design patent to a utility patent will, in most instances, involve the introduction of new matter into the patent. The disclosure of a design patent is not directed to how the invention is made and used, and the introduction of new matter is required to bridge this gap and provide support for the utility patent. Accordingly, the examiner should consider rejections based on the introduction of new matter under 35 U.S.C. 251 and lack of enablement and/or description under 35 U.S.C. 112, when a reissue application is filed to convert a design patent to a utility patent.
Further, the term of a design patent may not be extended by reissue. Ex parte Lawrence, 70 USPQ 326 (Comm’r Pat. 1946). Thus, any reissue application filed to convert a design patent to a utility patent, which conversion would thereby extend the term of the patent, should be rejected as failing to comply with 35 U.S.C. 251, which permits reissue only “for the unexpired part of the term of the original patent.” The statute requires that the reissued patent shall not extend the term of the original patent.
V. CONVERSION TO A DESIGN PATENT
35 U.S.C. 251 requires that the “patent is, through error , deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent”; however, the utility patent is not wholly or partly inoperative or invalid. There is no error in the utility patent. It is also noted that conversion of a design patent would exempt the existing utility patent from maintenance fees, and there is no statutory basis for exempting an existing patent from maintenance fees. Finally, 35 U.S.C. 251 provides that “the Director shall…reissue the patent…for the unexpired part of the term of the original patent”; a conversion from utility patent to a design patent via reissue would impermissibly provide a mechanism for circumventing the 14-year statutory term of a design
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patent, in cases where the unexpired term of the original utility patent is more than 14 years.
1458 -1459 [Reserved]
1460 Effect of Reissue [R-08.2012]
35 U.S.C. 252 Effect of reissue.
The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.
A reissued patent shall not abridge or affect the right of any person or that person’s successors in business who, prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported unless the making, using, offering for sale, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent. The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, used, or imported as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made before the grant of the reissue, and the court may also provide for the continued practice of any process patented by the reissue that is practiced, or for the practice of which substantial preparation was made, before the grant of the reissue, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.
The effect of the reissue of a patent is stated in 35 U.S.C. 252. With respect to the Office treatment of the reissued patent, the reissued patent will be viewed as if the original patent had been originally granted in the amended form provided by the reissue. With respect to intervening rights resulting from the reissue of an original patent, the second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights: “Absolute”
intervening rights are available for a party that “prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent,” and “equitable” intervening rights may be provided where “substantial preparation was made before the grant of the reissue.” See BIC Leisure Prods., Inc., v. Windsurfing Int’l, Inc., 1 F.3d 1214, 1220, 27 USPQ2d 1671, 1676 (Fed. Cir. 1993).
1461 -1469 [Reserved]
1470 Public Access of Reissue Applications [R-11.2013]
37 CFR 1.11(b) opens all reissue applications to inspection by the general public. 37 CFR 1.11(b) also provides for announcement of the filings of reissue applications in the Official Gazette (except for continued prosecution applications filed under 37 CFR 1.53(d)). This announcement will give interested members of the public an opportunity to submit to the examiner information pertinent to patentability of the reissue application.
The filing of a continued prosecution application (CPA) under 37 CFR 1.53(d) of a design reissue application (effective July 14, 2003, CPAs are only available in design applications) will not be announced in the Official Gazette. Although the filing of a continued prosecution application of a reissue application constitutes the filing of a reissue application, the announcement of the filing of such continued prosecution application would be redundant in view of the announcement of the filing of the prior reissue application in the Official Gazette.
IFW reissue application files are open to inspection by the general public by way of Public PAIR via the USPTO Internet site. In viewing the images of the files, members of the public will be able to view the entire content of the reissue application file history. To access Public PAIR, a member of the public would (A) go to the USPTO Web site at
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http://www.uspto.gov/patents/process/status/ and click on Public PAIR.
1471 -1479 [Reserved]
1480 Certificates of Correction — Office Mistake [R-11.2013]
35 U.S.C. 254 Certificate of correction of Patent and Trademark Office mistake.
Whenever a mistake in a patent, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office, the Director may issue a certificate of correction stating the fact and nature of such mistake, under seal, without charge, to be recorded in the records of patents. A printed copy thereof shall be attached to each printed copy of the patent, and such certificate shall be considered as part of the original patent. Every such patent, together with such certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form. The Director may issue a corrected patent without charge in lieu of and with like effect as a certificate of correction.
37 CFR 1.322 Certificate of correction of Office mistake.
(a)(1) The Director may issue a certificate of correction pursuant to 35 U.S.C. 254 to correct a mistake in a patent, incurred through the fault of the Office, which mistake is clearly disclosed in the records of the Office:
(i) At the request of the patentee or the patentee’s assignee;
(ii) Acting sua sponte for mistakes that the Office discovers; or
(iii) Acting on information about a mistake supplied by a third party.
(2)(i) There is no obligation on the Office to act on or respond to a submission of information or request to issue a certificate of correction by a third party under paragraph (a)(1)(iii) of this section.
(ii) Papers submitted by a third party under this section will not be made of record in the file that they relate to nor be retained by the Office.
(3) If the request relates to a patent involved in an interference, the request must comply with the requirements of this section and be accompanied by a motion under § 41.121(a)(2) or § 41.121(a)(3) of this title.
(4) The Office will not issue a certificate of correction under this section without first notifying the patentee (including any assignee of record) at the correspondence address of record as specified in § 1.33(a) and affording the patentee or an assignee an opportunity to be heard.
(b) If the nature of the mistake on the part of the Office is such that a certificate of correction is deemed inappropriate in form, the Director may issue a corrected patent in lieu thereof as a more appropriate form for certificate of correction, without expense to the patentee.
Mistakes incurred through the fault of the Office may be the subject of Certificates of Correction under 37 CFR 1.322. The Office, however, has discretion under 35 U.S.C. 254 to decline to issue a Certificate of Correction even though an Office mistake exists. If Office mistakes are of such a nature that the meaning intended is obvious from the context, the Office may decline to issue a certificate and merely place the correspondence in the patented file, where it serves to call attention to the matter in case any question as to it subsequently arises. Such is the case, even where a correction is requested by the patentee or patentee’s assignee.
In order to expedite all proper requests, a Certificate of Correction should be requested only for errors of consequence. Instead of a request for a Certificate of Correction, letters making errors of record should be utilized whenever possible. Thus, where errors are of a minor typographical nature, or are readily apparent to one skilled in the art, a letter making the error(s) of record can be submitted in lieu of a request for a Certificate of Correction. There is no fee for the submission of such a letter.
It is strongly advised that the text of the correction requested be submitted on a Certificate of Correction form, PTO/SB/44 (also referred to as PTO-1050). Submission of this form in duplicate is not necessary. The location of the error in the printed patent should be identified on form PTO/SB/44 by column and line number or claim and line number. See MPEP § 1485 for a discussion of the preparation and submission of a request for a Certificate of Correction.
A request for a Certificate of Correction should be addressed to:
Commissioner for Patents Office of Data Mangagement Attention: Certificates of Correction Branch P.O. Box 1450 Alexandria, VA 22313-1450
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I. THIRD PARTY INFORMATION ON MISTAKES IN PATENT
Third parties do not have standing to demand that the Office issue, or refuse to issue, a Certificate of Correction. See Hallmark Cards, Inc. v. Lehman, 959 F. Supp. 539, 543-44, 42 USPQ2d 1134, 1138 (D.D.C. 1997). 37 CFR 1.322(a)(2) makes it clear that third parties do not have standing to demand that the Office act on, respond to, issue, or refuse to issue a Certificate of Correction. The Office is, however, cognizant of the need for the public to have correct information about published patents and may therefore accept information about mistakes in patents from third parties. 37 CFR 1.322(a)(1)(iii). Where appropriate, the Office may issue certificates of correction based on information supplied by third parties, whether or not such information is accompanied by a specific request for issuance of a Certificate of Correction. While third parties are permitted to submit information about mistakes in patents which information will be reviewed, the Office need not act on that information nor respond to accompanying request for issuance of a Certificate of Correction. Accordingly, a fee for submission of the information by a third party has not been imposed. The Office may, however, choose to issue a Certificate of Correction on its own initiative based on the information supplied by a third party, if it desires to do so. Regardless of whether the third party information is acted upon, the information will not be made of record in the file that it relates to, nor be retained by the Office. 37 CFR 1.322(a)(2)(ii).
When such third party information (about mistakes in patents) is received by the Office, the Office will not correspond with third parties about the information they submitted either (1) to inform the third parties of whether it intends to issue a Certificate of Correction, or (2) to issue a denial of any request for issuance of a Certificate of Correction that may accompany the information. The Office will confirm to the party submitting such information that the Office has in fact received the information if a stamped, self-addressed post card has been submitted. See MPEP § 503.
II. PUBLICATION IN THE OFFICIAL GAZETTE
Each issue of the Official Gazette (patents section) numerically lists all United States patents having Certificates of Correction. The list appears under the heading “Certificates of Correction for the week of (date).”
1480.01 Expedited Issuance of Certificates of Correction - Error Attributable to Office [R-11.2013]
In an effort to reduce the overall time required in processing and granting Certificate of Correction requests, the Office will expedite processing and granting of patentee requests where such requests are accompanied by evidence to show that the error is attributable solely to the Office (i.e., requests filed pursuant to 37 CFR 1.322 only).
The following requirements must be met for consideration of expedited issuance of Certificates of Correction:
The text of the correction requested should be submitted on a Certificate of Correction form, PTO/SB/44 (also referred to as PTO-1050). Submission of this form in duplicate is not necessary. The location of the error in the printed patent should be identified on form PTO/SB/44 by column and line number or claim and line number. See also MPEP § 1485.
Where the correction requested was incurred through the fault of the Office, and the matter is clearly disclosed in the records of the Office, and is accompanied by documentation that unequivocally supports the patentee’s assertion(s), a Certificate of Correction will be expeditiously issued. Such supporting documentation can consist of relevant photocopied receipts, manuscript pages, correspondence dated and received by the Office, photocopies of Examiners’ responses regarding entry of amendments, or any other validation that supports the patentee’s request so that the request can be processed without the patent file.
Where only part of a request can be approved, the appropriate modifications will be made on the form
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PTO/SB/44 and the patentee then notified by mail. Further consideration will be given to initially rejected requests upon a request for reconsideration. In this instance, however, or in the case where it is determined that the Office was not responsible for the error(s) cited by the patentee, accelerated issuance of Certificates of Correction cannot be anticipated (although the Office will make every effort to process the request expeditiously).
As in the case of a request for a Certificate of Correction, a Request for Expedited Issuance of Certificate of Correction should be addressed to:
Commissioner for Patents Office of Data Management Attention: Certificates of Correction Branch P.O. Box 1450 Alexandria, VA 22313-1450
1481 Certificates of Correction - Applicant’s Mistake [R-11.2013]
35 U.S.C. 255 Certificate of correction of applicant’s mistake.
Whenever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made that such mistake occurred in good faith, the Director may, upon payment of the required fee, issue a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require reexamination. Such patent, together with the certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form.
37 CFR 1.323 Certificate of correction of applicant’s mistake.
The Office may issue a certificate of correction under the conditions specified in 35 U.S.C. 255 at the request of the patentee or the patentee’s assignee, upon payment of the fee set forth in § 1.20(a). If the request relates to a patent involved in an interference or trial before the Patent Trial and Appeal Board, the request must comply with the requirements of this section and be accompanied by a motion under § 41.121(a)(2), § 41.121(a)(3) or § 42.20 of this title.
37 CFR 1.323 relates to the issuance of Certificates of Correction for the correction of errors which were not the fault of the Office. Mistakes in a patent which are not correctable by Certificate of Correction may be correctable via filing a reissue application (see MPEP § 1401 - § 1460). See Novo Industries, L.P. v. Micro Molds Corporation, 350 F.3d 1348,
69 USPQ2d 1128 (Fed. Cir. 2003) (The Federal Circuit stated that when Congress in 1952 defined USPTO authority to make corrections with prospective effect, it did not deny correction authority to the district courts. A court, however, can correct only if “(1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation...”).
In re Arnott, 19 USPQ2d 1049, 1052 (Comm’r Pat. 1991) specifies the criteria of 35 U.S.C. 255 (for a Certificate of Correction) as follows:
Two separate statutory requirements must be met before a Certificate of Correction for an applicant’s mistake may issue. The first statutory requirement concerns the nature, i.e., type, of the mistake for which a correction is sought. The mistake must be: (1) of a clerical nature, (2) of a typographical nature, or (3) a mistake of minor character.
The second statutory requirement concerns the nature of the proposed correction. The correction must not involve changes which would: (1) constitute new matter or (2) require reexamination.
If the above criteria are not satisfied, then a Certificate of Correction for an applicant’s mistake will not issue, and reissue must be employed as the vehicle to “correct” the patent. Usually, any mistake affecting claim scope must be corrected by reissue.
A mistake is not considered to be of the “minor” character required for the issuance of a Certificate of Correction if the requested change would materially affect the scope or meaning of the patent. See also MPEP § 1412.04 as to correction of inventorship via certificate of correction or reissue.
The fee for providing a correction of applicant’s mistake, other than inventorship, is set forth in 37 CFR 1.20(a). The fee for correction of
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inventorship in a patent is set forth in 37 CFR 1.20(b).
1481.01 Correction of Assignees’ Names [R-08.2012]
The Fee(s) Transmittal Form portion (PTOL-85B) of the Notice of Allowance provides a space (item 3) for assignment data which should be completed in order to comply with 37 CFR 3.81. Unless an assignee’s name and address are identified in the appropriate space for specifying the assignee, (i.e., item 3 of the Fee(s) Transmittal Form PTOL-85B), the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied.
Any request for the issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee must:
(A) state that the assignment was submitted for recordation as set forth in 37 CFR 3.11 before issuance of the patent;
(B) include a request for a certificate of correction under 37 CFR 1.323 along with the fee set forth in 37 CFR 1.20(a); and
(C) include the processing fee set forth in 37 CFR 1.17(i).
See 37 CFR 3.81(b).
1481.02 Correction of Named Inventor [R-11.2013]
35 U.S.C. 256 permits the Director to issue a certificate correcting the inventors named in a patent; 37 CFR 1.324 provides the criteria for requests to correct inventorship in a patent. Pre-AIA 35 U.S.C. 256 requires that any error to be corrected must have been made “without deceptive intention.” Effective September 16, 2012, Public Law 112-29, sec. 20, 125 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended 35 U.S.C. 256 to eliminate the “without deceptive intention” clause. See subsection I., below, for the requirements of a petition filed on or after September 16, 2012 to correct inventorship
in a patent, and subsection II., below, for the requirements of such a petition filed before September 16, 2012.
While a request under 37 CFR 1.48 is appropriate to correct inventorship in a nonprovisional application , a petition under 37 CFR 1.324 is the appropriate vehicle to correct inventorship in a patent. If a request under 37 CFR 1.48 is inadvertently filed in a patent, the request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set forth in subsection III., below should be used.
Similarly, if a request under 37 CFR 1.48(a), (b), or (c) is filed in a pending application but not acted upon until after the application becomes a patent, the request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set forth below should be used.
The statutory basis for correction of inventorship in a patent under 37 CFR 1.324 is 35 U.S.C. 256. It is important to recognize that 35 U.S.C. 256 is stricter than 35 U.S.C. 116, the statutory basis for corrections of inventorship in applications under 37 CFR 1.48. 35 U.S.C. 256 requires “on application of all the parties and assignees,” while 35 U.S.C. 116 does not have the same requirement. Correction of inventorship in a patent under 37 CFR 1.324 requires petition of all the parties, i.e., originally named inventors and assignees, in accordance with statute (35 U.S.C. 256) and thus the requirement cannot be waived.
I. REQUEST FILED ON OR AFTER SEPTEMBER 16, 2012, TO CORRECT NAMED INVENTOR
[Editor Note: See subsection II., below, for requests filed before September 16, 2012.]
35 U.S.C. 256 Correction of named inventor.
Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.
The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error
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occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.
37 CFR 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256.
(a) Whenever through error a person is named in an issued patent as the inventor, or an inventor is not named in an issued patent, the Director, pursuant to 35 U.S.C. 256, may, on application of all the parties and assignees, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors.
(b) Any request to correct inventorship of a patent pursuant to paragraph (a) of this section must be accompanied by:
(1) A statement from each person who is being added as an inventor and each person who is currently named as an inventor either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change;
(2) A statement from all assignees of the parties submitting a statement under paragraph (b)(1) of this section agreeing to the change of inventorship in the patent, which statement must comply with the requirements of § 3.73(c) of this chapter; and
(3) The fee set forth in § 1.20(b).
(c) For correction of inventorship in an application, see §§ 1.48.
(d) In an interference under part 41, subpart D, of this title, a request for correction of inventorship in an application must be in the form of a motion under § 41.121(a)(2) of this title. In a contested case under part 42, subpart D, of this title, a request for correction of inventorship in an application must be in the form of a motion under § 42.22 of this title. The motion under § 41.121(a)(2) or § 42.22 of this title must comply with the requirements of this section.
In requesting the Office to effectuate a court order correcting inventorship in a patent pursuant to 35 U.S.C. 256, a copy of the court order and a Certificate of Correction under 37 CFR 1.323 should be submitted to the Certificates of Corrections Branch.
A petition filed on or after September 16, 2012 to correct the inventorship in a patent must be accompanied by all of the following:
(1) A statement from each person who is being added as in inventor and each person who is currently named as an inventor. Each inventor statement must either agree to the change of inventorship or state that the inventor has no
disagreement in regard to the requested change. See 37 CFR 1.324(b)(1).
(2) A statement is required from the assignee(s) of the parties submitting a statement under 37 CFR 1.324(b)(1) agreeing to the change of inventorship in the patent, which statement must comply with the requirements of 37 CFR 3.73(c).See 37 CFR 1.324(b)(2). See MPEP § 325 as to the requirements of a statement under 37 CFR 3.73(c). A statement is required by each entity having an ownership interest in the patent.
(3) (3) The fee set forth in 37 CFR 1.20(b).
If an inventor is not available, or refuses, to submit a statement, the assignee of the patent may wish to consider filing a reissue application to correct inventorship, because the inventor’s statement is not required for a non-broadening reissue application to correct inventorship. See MPEP § 1412.04.
For correction of inventorship in an application in an interference under 37 CFR part 41, subpart D, 37 CFR 1.324(d) provides that a request for correction of inventorship must be in the form of a motion under 37 CFR 41.121(a)(2). For correction of inventorship in a contested case under 37 CFR part 42, subpart D, 37 CFR 1.324(d) provides that a request for correction of inventorship in an application must be in the form of a motion under 37 CFR 42.22. 37 CFR 1.324(d) further provides that the motion made under 37 CFR 41.121(a)(2) or 42.22 must comply with the requirements of 37 CFR 1.324.
II. REQUEST FILED BEFORE SEPTEMBER 16, 2012, TO CORRECT NAMED INVENTOR
[Editor Note: See subsection I., above, for requests filed on or after September 16, 2012.]
Pre-AIA 35 U.S.C. 256 Correction of named inventor
Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.
The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error
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occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.
Pre-AIA 37 CFR 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256.
(a) Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his or her part, the Director, pursuant to 35 U.S.C. 256, may, on application of all the parties and assignees, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors. A petition to correct inventorship of a patent involved in an interference must comply with the requirements of this section and must be accompanied by a motion under § 41.121(a)(2) or § 41.121(a)(3) of this title.
(b) Any request to correct inventorship of a patent pursuant to paragraph (a) of this section must be accompanied by:
(1) Where one or more persons are being added, a statement from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on his or her part;
(2) A statement from the current named inventors who have not submitted a statement under paragraph (b)(1) of this section either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change;
(3) A statement from all assignees of the parties submitting a statement under paragraphs (b)(1) and (b)(2) of this section agreeing to the change of inventorship in the patent, which statement must comply with the requirements of § 3.73(b) of this chapter; and
(4) The fee set forth in § 1.20(b).
(c) For correction of inventorship in an application, see §§ 1.48 and 1.497.
(d) In a contested case before the Board of Patent Appeals and Interferences under part 41, subpart D, of this title, a request for correction of a patent must be in the form of a motion under § 41.121(a)(2) or § 41.121(a)(3) of this title.
In requesting the Office to effectuate a court order correcting inventorship in a patent pursuant to 35 U.S.C. 256, a copy of the court order and a Certificate of Correction under 37 CFR 1.323 must be submitted to the Certificates of Corrections Branch. A petition filed before September 16, 2012 to correct the inventorship in a patent must comply with the requirements of pre-AIA 37 CFR 1.324, and must include the statements and fee required by pre-AIA 37 CFR 1.324(b).
Under pre-AIA 37 CFR 1.324(b)(1), a statement is required from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on their part. In order to satisfy this, a statement such as the following is sufficient:
“The inventorship error of failing to include John Smith as an inventor of the patent occurred without any deceptive intention on the part of John Smith.”
Nothing more is required. The examiner will determine only whether the statement contains the required language; the examiner will not make any comment as to whether or not it appears that there was in fact deceptive intention (see MPEP § 2022.05).
Under pre-AIA 37 CFR 1.324(b)(2), all current inventors who did not submit a statement under pre-AIA 37 CFR 1.324(b)(1) must submit a statement either agreeing to the change of inventorship, or stating that they have no disagreement with regard to the requested change. “Current inventors” include the inventor(s) being retained as such and the inventor(s) to be deleted. These current inventors need not make a statement as to whether the inventorship error occurred without deceptive intention. If an inventor is not available, or refuses, to submit a statement, the assignee of the patent may wish to consider filing a reissue application to correct inventorship, because the inventor’s statement is not required for a non-broadening reissue application to correct inventorship. See MPEP § 1412.04.
Under pre-AIA 37 CFR 1.324(b)(2), a statement is required from the assignee(s) of the patent agreeing to the change of inventorship in the patent. The assignee statement agreeing to the change of inventorship must be accompanied by a proper statement under pre-AIA 37 CFR 3.73(b) establishing ownership, unless such a proper statement is already in the file. See MPEP § 324 as to the requirements of a statement under pre-AIA 37 CFR 3.73(b).
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III. PETITION UNDER 37 CFR 1.324 BY SPE
Correction of inventorship requests under 37 CFR 1.324 should be directed to the Supervisory Patent Examiner (SPE) whose unit handles the subject matter of the patent. Form paragraphs 10.13 through 10.18 may be used.
¶ 10.13 Petition Under 37 CFR 1.324, Granted
In re Patent No. [1] : Issue Date: [2] : DECISION Appl. No.: [3] : GRANTING Filed: [4] : PETITION For: [5] : 37 CFR 1.324
This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.
The petition is granted.
The patented file is being forwarded to Certificate of Corrections Branch for issuance of a certificate naming only the actual inventor or inventors.
_______________________
[7]
Supervisory Patent Examiner,
Art Unit [8],
Technology Center [9]
[10]
Examiner Note:
1. Petitions to correct inventorship of an issued patent are decided by the Supervisory Patent Examiner, as set forth in the Commissioner’s memorandum dated June 2, 1989.
2. In bracket 10, insert the correspondence address of record.
3. This form paragraph is printed with the USPTO letterhead.
4. Prepare Certificate using form paragraph 10.15.
¶ 10.14 Treatment of Request Under 37 CFR 1.48 Petition Under 37 CFR 1.324, Petition Granted
In re Patent No. [1] : Issue Date: [2] : DECISION Appl. No.: [3] : GRANTING Filed: [4] : PETITION For: [5] : 37 CFR 1.324
This is a decision on the request under 37 CFR 1.48, filed [6]. In view of the fact that the patent has already issued, the request under 37 CFR 1.48 has been treated as a petition to correct inventorship under 37 CFR 1.324.
The petition is granted.
The patented file is being forwarded to Certificate of Corrections Branch for issuance of a certificate naming only the actual inventor or inventors.
_______________________
[7]
Supervisory Patent Examiner,
Art Unit [8],
Technology Center [9]
[10]
Examiner Note:
1. Petitions to correct inventorship of an issued patent are decided by the Supervisory Patent Examiner, as set forth in the Commissioner’s memorandum dated June 2, 1989.
2. This form paragraph is printed with the USPTO letterhead.
3. Prepare Certificate using form paragraph 10.15.
4. In bracket 10, insert the correspondence address of record.
¶ 10.15 Memorandum - Certificate of Correction (Inventorship)
DATE: [1]TO: Certificates of Correction BranchFROM: [2], SPE, Art Unit [3]SUBJECT: Request for Certificate of Correction
Please issue a Certificate of Correction in U. S. Letters Patent No. [4] as specified on the attached Certificate.
______________________
[5], SPE
Art Unit [6]
UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE Patent No. [7]Patented: [8]
On petition requesting issuance of a certificate for correction of inventorship pursuant to 35 U.S.C. 256, it has been found that the above identified patent improperly sets forth the inventorship. Accordingly, it is hereby certified that the correct inventorship of this patent is:
[9]
_________________________
[10], Supervisory Patent Examiner
Art Unit [11]
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Examiner Note:
1. In bracket 9, insert the full name and residence (City, State) of each actual inventor.
2. This is an internal memo, not to be mailed to applicant, which accompanies the patented file to Certificates of Correction Branch as noted in form paragraphs 10.13 and 10.14.
3. In brackets 5 and 10, insert name of SPE; in brackets 6 and 11 the Art Unit and sign above each line.
4. Two separate pages of USPTO letterhead will be printed when using this form paragraph.
¶ 10.16.fti Petition Under 37 CFR 1.324 filed prior to September 16, 2012, Dismissed
In re Patent No. [1] : Issue Date: [2] : DECISION Appl. No.: [3] : DISMISSING Filed: [4] : PETITION For: [5] : 37 CFR 1.324
This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.
The petition is dismissed.
A petition to correct inventorship under 37 CFR 1.324 filed before September 16, 2012, requires (1) a statement from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on their part, (2) a statement from the current named inventors (including any “inventor” being deleted) who have not submitted a statement as per “(1)” either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change, (3) a statement in compliance with 3.73(b) from all assignees of the parties submitting a statement under “(1)” and “(2)” agreeing to the change of inventorship in the patent; and (4) the fee set forth in 37 CFR 1.20(b).This petition lacks item(s) [7].
_______________________
[8]
Supervisory Patent Examiner,
Art Unit [9],
Technology Center [10]
[11]
Examiner Note:
1. If each of the four specified items has been submitted but one or more is insufficient, the petition should be denied. See form paragraph 10.17. However, if the above noted deficiency can be cured by the submission of a renewed petition, a dismissal would be appropriate.
2. If the petition includes a request for suspension of the rules (37 CFR 1.183) of one or more provisions of 37 CFR 1.324 that
are required by the statute (35 U.S.C. 256), form paragraph 10.18 should follow this form paragraph.
3. In bracket 7, pluralize as necessary and insert the item number(s) which are missing.
4. In bracket 11, insert correspondence address of record.
5. This form paragraph is printed with the USPTO letterhead.
6 This form paragraph should only be used if the petition under 37 CFR 1.324 was filed before September 16, 2012. If the petition was filed on or after September 16, 2012, use form paragraph 10.16.01.
¶ 10.16.01 Petition Under 37 CFR 1.324 filed on or after September 16, 2012, Dismissed
In re Patent No. [1] :
Issue Date: [2] : DECISION
Appl. No.: [3] : DISMISSING
Filed: [4] : PETITION
For: [5] : 37 CFR 1.324
This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.
The petition is dismissed.
A petition to correct inventorship under 37 CFR 1.324 filed on or after September 16, 2012, requires (1) a statement from each person who is being added as an inventor and each person who is currently named as an inventor (including any “inventor” being deleted) either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change, (2) a statement in compliance with 37 CFR 3.73(c) from all assignees of the parties submitting a statement under “(1)” agreeing to the change of inventorship in the patent; and (3) the fee set forth in 37 CFR 1.20(b). This petition lacks item(s) [7].
_______________________
[8]
Supervisory Patent Examiner,
Art Unit [9],
Technology Center [10]
[11]
Examiner Note:
1. If each of the three specified items has been submitted but one or more is insufficient, the petition should be denied. See form paragraph 10.17. However, if the above noted deficiency
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can be cured by the submission of a renewed petition, a dismissal would be appropriate.
2. If the petition includes a request for suspension of the rules (37 CFR 1.183) of one or more provisions of 37 CFR 1.324 that are required by the statute (35 U.S.C. 256), form paragraph 10.18 should follow this form paragraph.
3. In bracket 7, pluralize as necessary and insert the item number(s) which are missing.
4. In bracket 11, insert correspondence address of record.
5. This form paragraph is printed with the USPTO letterhead.
¶ 10.17 Petition Under 37 CFR 1.324, Denied
In re Patent No. [1]: Issue Date: [2]:DECISION DENYING PETITIONAppl. No.: [3]: 37 CFR 1.324 Filed: [4]: For: [5]:
This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.
The petition is denied.
[7]
_______________________
[8]
Supervisory Patent Examiner,
Art Unit [9],
Technology Center [10]
[11]
Examiner Note:
1. In bracket 7, a full explanation of the deficiency must be provided.
2. If the petition lacks one or more of the required parts set forth in 37 CFR 1.324, it should be dismissed using form paragraph 10.14 or 10.20, rather than being denied.
3. In bracket 11, insert correspondence address of record.
4. This form paragraph is printed with the USPTO letterhead.
¶ 10.18 Waiver of Requirements of 37 CFR 1.324 Under 37 CFR 1.183, Dismissed
Suspension of the rules under 37 CFR 1.183 may be granted for any requirement of the regulations which is not a requirement of the statutes. In this instance, 35 U.S.C. 256 requires [1]. Accordingly, the petition under 37 CFR 1.183 is dismissed.
Examiner Note:
1. This form paragraph should follow form paragraph 10.16 whenever the petition requests waiver of one or more of the
provisions of 37 CFR 1.324 that are also requirements of 35 U.S.C. 256.
2. If the petition requests waiver of requirements of 37 CFR 1.324 that are not specific requirements of the statute (i.e., the fee or the oath or declaration by all inventors), the application must be forwarded to a petitions attorney in the Office of the Deputy Commissioner for Patent Examination Policy for decision.
1481.03 Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits [R-11.2013]
I. CORRECTION TO PERFECT CLAIM FOR 35 U.S.C. 119 (a)-(d) AND (f) BENEFITS
See MPEP § 216.01 for a discussion of when 35 U.S.C. 119(a)-(d) and (f) benefits can be perfected by certificate of correction.
II. CORRECTION AS TO 35 U.S.C. 120 AND 35 U.S.C. 119(e) BENEFITS
A. For Applications Filed On or After March 16, 2013
[Editor Note: See subsection B., below, for applications filed before March 16, 2013 and on or after November 29, 2000. See subsection C., below, for applications filed before November 29, 2000.]
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
(a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. An applicant in a nonprovisional application, other than for a design patent, or an international application designating the United States of America may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.
(1) The nonprovisional application or international application designating the United States of America must be filed not later than twelve months after the date on which the provisional application was filed, or be entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of an application that was filed not later than twelve months after the date on which the provisional application was filed. This twelve-month period is subject to 35 U.S.C. 21(b) (and § 1.7(a)).
(2) Each prior-filed provisional application must name the inventor or a joint inventor named in the later— filed application as the inventor or a joint inventor. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in
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§ 1.16(d) must have been paid for such provisional application within the time period set forth in § 1.53(g).
(3) Any nonprovisional application or international application designating the United States of America that claims the benefit of one or more prior-filed provisional applications must contain, or be amended to contain, a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number). If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)).
(4) The reference required by paragraph (a)(3) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed international application or sixteen months from the filing date of the prior-filed provisional application. Except as provided in paragraph (b) of this section, failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) of the prior-filed provisional application.
(5) If the prior-filed provisional application was filed in a language other than English and both an English-language translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application, the applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application, or an application data sheet eliminating the reference under paragraph (a)(3) of this section to the prior-filed provisional application, or the nonprovisional application will be abandoned. The translation and statement may be filed in the provisional application, even if the provisional application has become abandoned
(6) If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed provisional application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably
believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(b) Delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. If the reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section is presented in a nonprovisional application after the time period provided by paragraph (a)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application may be accepted if submitted during the pendency of the later-filed application and if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application must be accompanied by:
(1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section to the prior-filed provisional application, unless previously submitted;
(2) The surcharge set forth in § 1.17(t); and
(3) A statement that the entire delay between the date the benefit claim was due under paragraph (a)(4) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(c) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or international application. An applicant in a nonprovisional application (including an international application entering the national stage under 35 U.S.C. 371) or an international application designating the United States of America may claim the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States of America under the conditions set forth in 35 U.S.C. 120, 121, or 365(c) and this section.
(1) Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed application must either be:
(i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States of America; or
(ii) A nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in § 1.53(b) or (d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application.
(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, or international application designating the United States of America, that claims the benefit of one or more prior-filed nonprovisional applications or international applications designating the United States of America must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number) or
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international application number and international filing date. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application or international application.
(3) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed international application or sixteen months from the filing date of the prior-filed application. Except as provided in paragraph (d) of this section, failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (c)(2) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to the prior-filed application. The time periods in this paragraph do not apply in a design application.
(4) The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
(5) Cross-references to other related applications may be made when appropriate (see § 1.14), but cross-references to applications for which a benefit is not claimed under title 35, United States Code, must not be included in an application data sheet (§ 1.76(b)(5)).
(6) If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a nonprovisional application or an international application designating the United States of America filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application. An applicant is not required to provide such a statement if either:
(i) The application claims the benefit of a nonprovisional application in which a statementunder § 1.55(j), paragraph (a)(6) of this section, or this paragraph that the application contains, or contained at any time, a claim to a
claimed invention that has an effective filing date on or after March 16, 2013 has been filed; or
(ii) The applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the later filed application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(d) Delayed claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional application or international application. If the reference required by 35 U.S.C. 120 and paragraph (c)(2) of this section is presented after the time period provided by paragraph (c)(3) of this section, the claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed copending nonprovisional application or international application designating the United States of America may be accepted if the reference identifying the prior-filed application by application number or international application number and international filing date was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application must be accompanied by:
(1) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of this section to the prior-filed application, unless previously submitted;
(2) The surcharge set forth in § 1.17(t); and
(3) A statement that the entire delay between the date the benefit claim was due under paragraph (c)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(e) Applications containing patentably indistinct claims. Where two or more applications filed by the same applicant contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
(f) Applications or patents under reexamination naming different inventors and containing patentably indistinct claims. If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain patentably indistinct claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the Office may require the applicant to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on such date. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the patentably indistinct claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.
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(g) Time periods not extendable. The time periods set forth in this section are not extendable.
*****
Under no circumstances can a Certificate of Correction be employed to correct an applicant’s mistake by adding or correcting a priority claim under 35 U.S.C. 119(e) for an application filed on or after November 29, 2000.
Section 4503 of the American Inventors Protection Act of 1999 (AIPA) amended 35 U.S.C. 119(e)(1) to state that:
No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section during the pendency of the application. (emphasis added)
A Certificate of Correction is NOT a valid mechanism for adding or correcting a priority claim under 35 U.S.C. 119(e) after a patent has been granted on an application filed on or after November 29, 2000.
Under certain conditions as specified below, however, a Certificate of Correction can still be used, with respect to 35 U.S.C. 120 priority, to correct:
(A) the failure to make reference to a prior copending application pursuant to 37 CFR 1.78(a)(2); or
(B) an incorrect reference to a prior copending application pursuant to 37 CFR 1.78(a)(2).
Where priority is based upon 35 U.S.C. 120 to a national application, the following conditions must be satisfied:
(A) all requirements set forth in 37 CFR 1.78(a)(1) must have been met in the application which became the patent to be corrected;
(B) it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211 et seq.); and
(C) a grantable petition to accept an unintentionally delayed claim for the benefit of a prior application must be filed, including a surcharge as set forth in 37 CFR 1.17(t), as required by 37 CFR 1.78(a)(3).
Where 35 U.S.C. 120 and 365(c) priority based on an international application is to be asserted or corrected in a patent via a Certificate of Correction, the following conditions must be satisfied:
(A) all requirements set forth in 37 CFR 1.78(a)(1) must have been met in the application which became the patent to be corrected;
(B) it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211 et seq.);
(C) the patentee must submit together with the request for the certificate, copies of documentation showing designation of states and any other information needed to make it clear from the record that the 35 U.S.C. 120 priority is appropriate (see MPEP § 213 et seq. as to the requirements for 35 U.S.C. 120 priority based on an international application; and
(D) a grantable petition to accept an unintentionally delayed claim for the benefit of a prior application must be filed, including a surcharge as set forth in 37 CFR 1.17(t), as required by 37 CFR 1.78(a)(3).
If all the above-stated conditions are satisfied, a Certificate of Correction can be used to amend the patent to make reference to a prior copending application, or to correct an incorrect reference to the prior copending application, for benefit claims under 35 U.S.C. 120 and 365(c).
If any of the above-stated conditions is not satisfied, the filing of a reissue application (see MPEP § 1401 - § 1460) may be appropriate to pursue the desired correction of the patent for benefit claims under 35 U.S.C. 120 and 365(c).
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B. For Applications Filed on or After November 29, 2000 and Before March 16, 2013
[Editor Note: See subsection A., above, for applications filed on or after March 16, 2013. See subsection C., below, for applications filed before November 29, 2000.]
Pre-AIA 37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
(a)(1) A nonprovisional application or international application designating the United States of America may claim an invention disclosed in one or more prior-filed copending nonprovisional applications or international applications designating the United States of America. In order for an application to claim the benefit of a prior-filed copending nonprovisional application or international application designating the United States of America, each prior-filed application must name as an inventor at least one inventor named in the later-filed application and disclose the named inventor’s invention claimed in at least one claim of the later-filed application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior-filed application must be:
(i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States of America; or
(ii) Entitled to a filing date as set forth in § 1.53(b) or § 1.53(d) and have paid therein the basic filing fee set forth in § 1.16 within the pendency of the application.
(2)(i) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application or international application designating the United States of America claiming the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States of America must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications. Cross references to other related applications may be made when appropriate (see § 1.14).
(ii) This reference must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed international application or sixteen months from the filing date of the prior-filed application. These time periods are not extendable. Except as provided in paragraph (a)(3) of this section, the failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (a)(2)(i) of this section is
considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such prior-filed application. The time periods in this paragraph do not apply if the later-filed application is:
(A) An application for a design patent;
(B) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
(C) A nonprovisional application which entered the national stage after compliance with 35 U.S.C. 371 from an international application filed under 35 U.S.C. 363 before November 29, 2000.
(iii) If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76), or the specification must contain or be amended to contain such reference in the first sentence(s) following the title.
(iv) The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
(3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2) of this section is presented after the time period provided by paragraph (a)(2)(ii) of this section, the claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed copending nonprovisional application or international application designating the United States of America may be accepted if the reference identifying the prior-filed application by application number or international application number and international filing date was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application must be accompanied by:
(i) The reference required by 35 U.S.C. 120 and paragraph (a)(2) of this section to the prior-filed application, unless previously submitted;
(ii) The surcharge set forth in § 1.17(t); and
(iii) A statement that the entire delay between the date the claim was due under paragraph (a)(2)(ii) of this section and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(4) A nonprovisional application, other than for a design patent, or an international application designating the United States of America may claim an invention disclosed in one or more prior-filed provisional applications. In order for an application to claim the benefit of one or more prior-filed provisional applications, each prior-filed provisional application must name as an inventor at least one inventor named in the later-filed application and disclose the named inventor’s invention claimed in at least one claim of the later-filed application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in §
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1.53(c), and the basic filing fee set forth in § 1.16(d) must be paid within the time period set forth in § 1.53(g).
(5)(i) Any nonprovisional application or international application designating the United States of America claiming the benefit of one or more prior-filed provisional applications must contain or be amended to contain a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number).
(ii) This reference must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application. If the later-filed application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed international application or sixteen months from the filing date of the prior-filed provisional application. These time periods are not extendable. Except as provided in paragraph(a)(6) of this section, the failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) to such prior-filed provisional application. The time periods in this paragraph do not apply if the later-filed application is:
(A) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
(B) A nonprovisional application which entered the national stage after compliance with 35 U.S.C. 371 from an international application filed under 35 U.S.C. 363 before November 29, 2000.
(iii) If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)), or the specification must contain or be amended to contain such reference in the first sentence(s) following the title.
(iv) If the prior-filed provisional application was filed in a language other than English and both an English language translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application, applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application, or an application data sheet eliminating the reference under this paragraph to the prior-filed provisional application, or the nonprovisional application will be abandoned.
(6) If the reference required by 35 U.S.C. 119(e) and paragraph (a)(5) of this section is presented in a nonprovisional application after the time period provided by paragraph (a)(5)(ii) of this section, the claim under 35 U.S.C. 119(e) for the benefit
of a prior filed provisional application may be accepted during the pendency of the later-filed application if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior filed provisional application must be accompanied by:
(i) The reference required by 35 U.S.C. 119(e) and paragraph (a)(5) of this section to the prior-filed provisional application, unless previously submitted;
(ii) The surcharge set forth in § 1.17(t); and
(iii) A statement that the entire delay between the date the claim was due under paragraph (a)(5)(ii) of this section and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(b) Where two or more applications filed by the same applicant contain conflicting claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
(c) If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain conflicting claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, the Office may require the assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, and if not, indicate which named inventor is the prior inventor. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person, at the time the later invention was made, the conflicting claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.
Under no circumstances can a Certificate of Correction be employed to correct an applicant’s mistake by adding or correcting a priority claim under 35 U.S.C. 119(e) for an application filed on or after November 29, 2000.
35 U.S.C. 119(e)(1) states in part that:
No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an
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amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section during the pendency of the application. (emphasis added)
A Certificate of Correction is NOT a valid mechanism for adding or correcting a priority claim under 35 U.S.C. 119(e) after a patent has been granted on an application filed on or after November 29, 2000.
Under certain conditions as specified below, however, a Certificate of Correction can still be used, with respect to 35 U.S.C. 120 priority, to correct:
(A) the failure to make reference to a prior copending application pursuant to pre-AIA 37 CFR 1.78(a)(2); or
(B) an incorrect reference to a prior copending application pursuant to pre-AIA 37 CFR 1.78(a)(2).
Where 35 U.S.C. 120 priority is based upon a national application, the following conditions must be satisfied:
(A) all requirements set forth in pre-AIA 37 CFR 1.78(a)(1) must have been met in the application which became the patent to be corrected;
(B) it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211); and
(C) a grantable petition to accept an unintentionally delayed claim for the benefit of a prior application must be filed, including a surcharge as set forth in 37 CFR 1.17(t), as required by pre-AIA 37 CFR 1.78(a)(3).
Where 35 U.S.C. 120 and 365(c) priority based on an international application is to be asserted or corrected in a patent via a Certificate of Correction, the following conditions must be satisfied:
(A) all requirements set forth in pre-AIA 37 CFR 1.78(a)(1) must have been met in the application which became the patent to be corrected;
(B) it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211);
(C) the patentee must submit together with the request for the certificate, copies of documentation showing designation of states and any other information needed to make it clear from the record that the 35 U.S.C. 120 priority is appropriate (see MPEP § 213.06 as to the requirements for 35 U.S.C. 120 priority based on an international application); and
(D) a grantable petition to accept an unintentionally delayed claim for the benefit of a prior application must be filed, including a surcharge as set forth in 37 CFR 1.17(t), as required by pre-AIA 37 CFR 1.78(a)(3). If all the above-stated conditions are satisfied, a Certificate of Correction can be used to amend the patent to make reference to a prior copending application, or to correct an incorrect reference to the prior copending application, for benefit claims under 35 U.S.C. 120 and 365(c).
If any of the above-stated conditions is not satisfied, the filing of a reissue application (see MPEP § 1402) may be appropriate to pursue the desired correction of the patent for benefit claims under 35 U.S.C. 120 and 365(c).
C. For Application Filed Before November 29, 2000
[Editor Note: See subsection A., above, for applications filed on or after March 16, 2013. See subsection B., above, for applications filed on or after November 29, 2000 and before March 16, 2013.]
For applications filed before November 29, 2000, it is the version of 37 CFR 1.78, which was in effect on November 28, 2000, that applies. The pre-November 29, 2000 version reads as follows:
Former 37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
(a)(1) A nonprovisional application may claim an invention disclosed in one or more prior filed copending nonprovisional applications or copending international applications designating the United States of America. In order for a nonprovisional application to claim the benefit of a prior filed copending nonprovisional application or copending international application designating the United States of
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America, each prior application must name as an inventor at least one inventor named in the later filed nonprovisional application and disclose the named inventor’s invention claimed in at least one claim of the later filed nonprovisional application in the manner provided by the first paragraph of . In addition, each prior application must be:
(i) An international application entitled to a filing date in accordance with and designating the United States of America; or
(ii) Complete as set forth in § 1.51(b); or
(iii) Entitled to a filing date as set forth in § 1.53(b) or § 1.53(d) and include the basic filing fee set forth in § 1.16; or
(iv) Entitled to a filing date as set forth in § 1.53(b) and have paid therein the processing and retention fee set forth in § 1.21(l) within the time period set forth in § 1.53(f).
(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application claiming the benefit of one or more prior filed copending nonprovisional applications or international applications designating the United States of America must contain a reference to each such prior application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications. Unless the reference required by this paragraph is included in an application data sheet (§ ), the specification must contain or be amended to contain such reference in the first sentence following any title. The request for a continued prosecution application under § 1.53(d) is the specific reference required by to the prior application. The identification of an application by application number under this section is the specific reference required by to every application assigned that application number. Cross-references to other related applications may be made when appropriate (see § 1.14(a)).
(3) A nonprovisional application other than for a design patent may claim an invention disclosed in one or more prior filed copending provisional applications. In order for a nonprovisional application to claim the benefit of one or more prior filed copending provisional applications, each prior provisional application must name as an inventor at least one inventor named in the later filed nonprovisional application and disclose the named inventor's invention claimed in at least one claim of the later filed nonprovisional application in the manner provided by the first paragraph of . In addition, each prior provisional application must be entitled to a filing date as set forth in § , have any required English-language translation filed therein within the time period set forth in § , and have paid therein the basic filing fee set forth in § within the time period set forth in § .
(4) Any nonprovisional application claiming the benefit of one or more prior filed copending provisional applications must contain a reference to each such prior provisional application, identifying it as a provisional application, and including the provisional application number (consisting of series code and serial number). Unless the reference required
by this paragraph is included in an application data sheet (§ ), the specification must contain or be amended to contain such reference in the first sentence following any title.
*****
Under certain conditions specified below, a Certificate of Correction can be used, with respect to 35 U.S.C. 120 and 119(e) priority, to correct:
(A) the failure to make reference to a prior copending application pursuant to 37 CFR 1.78(a)(2) and (a)(4) as set forth immediately above; or
(B) an incorrect reference to a prior copending application pursuant to 37 CFR 1.78(a)(2) and (a)(4) as set forth immediately above.
For all situations other than where priority is based upon 35 U.S.C. 365(c), the conditions are as follows:
(A) for 35 U.S.C. 120 priority, all requirements set forth in 37 CFR 1.78(a)(1) as set forth immediately above must have been met in the application which became the patent to be corrected;
(B) for 35 U.S.C. 119(e) priority, all requirements set forth in 37 CFR 1.78(a)(3) as set forth immediately above must have been met in the application which became the patent to be corrected; and
(C) it must be clear from the record of the patent and the parent application(s) that priority is appropriate. See MPEP § § 211 et seq. for requirements under 35 U.S.C. 119(e) and 120.
1482 -1484 [Reserved]
1485 Handling of Request for Certificates of Correction [R-11.2013]
A request for a Certificate of Correction should be addressed to:
Commissioner for Patents Office of Data Management Attention: Certificates of Correction Branch P.O. Box 1450 Alexandria, VA 22313-1450
Requests for Certificates of Correction will be forwarded to the Certificate of Correction Branch
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of the Office of Data Management, where they will be listed in a permanent record book.
If the patent is involved in an interference under 37 CFR part 41, subpart D, a Certificate of Correction under 37 CFR 1.324 will not be issued unless a corresponding motion under 37 CFR 41.121(a)(2) or 41.121(a)(3) has been granted by the administrative patent judge. If the patent is involved in a contested case under 37 CFR part 42, subpart D, a Certificate of Correction under 37 CFR 1.324 will not be issued unless a corresponding motion under 37 CFR 42.22 has been granted by the administrative patent judge. Otherwise, determination as to whether an error has been made, the responsibility for the error, if any, and whether the error is of such a nature as to justify the issuance of a Certificate of Correction will be made by the Certificate of Correction Branch. If a report is necessary in making such determination, the case will be forwarded to the appropriate group with a request that the report be furnished. If no certificate is to issue, the party making the request is so notified and the request, report, if any, and copy of the communication to the person making the request are entered into the file history by the Certificate of Correction Branch. If a certificate is to issue, it will be prepared and forwarded to the person making the request by the Office of Data Management. In that case, the request, the report, if any, and a copy of the letter transmitting the Certificate of Correction to the person making the request will be entered into the file history.
Applicants, or their attorneys or agents, are urged to submit the text of the correction on a special Certificate of Correction form, PTO/SB/44 (also referred to as Form PTO-1050), which can serve as the camera copy for use in direct offset printing of the Certificate of Correction.
Where only a part of a request can be approved, or where the Office discovers and includes additional corrections, the appropriate alterations are made on the form PTO/SB/44 by the Office. The patentee is notified of the changes on the Notification of Approval-in-part form PTOL-404. The certificate is issued approximately 6 weeks thereafter.
Form PTO/SB/44 should be used exclusively regardless of the length or complexity of the subject matter. Intricate chemical formulas or page of specification or drawings may be reproduced and mounted on a blank copy of PTO/SB/44. Failure to use the form has frequently delayed issuance because the text must be retyped by the Office onto a PTO/SB/44.
The exact page and line number where the errors occur in the application file should be identified on the request. However, on form PTO/SB/44, only the column and line number in the printed patent should be used.
The patent grant should be retained by the patentee. The Office does not attach the Certificate of Correction to patentee’s copy of the patent. The patent grant will be returned to the patentee if submitted.
Below is a sample form illustrating a variety of corrections and the suggested manner of setting out the format. Particular attention is directed to:
(A) Identification of the exact point of error by reference to column and line number of the printed patent for changes in the specification or to claim number and line where a claim is involved.
(B) Conservation of space on the form by typing single space, beginning two lines down from the printed message.
(C) Starting the correction to each separate column as a sentence, and using semicolons to separate corrections within the same column, where possible.
(D) Leaving a two-inch space blank at bottom of the last sheet for the signature of the attesting officer.
(E) Using quotation marks to enclose the exact subject matter to be deleted or corrected; using double hyphens (-- --) to enclose subject matter to be added, except for formulas.
(F) Where a formula is involved, setting out only that portion thereof which is to be corrected or, if necessary, pasting a photocopy onto form PTO/SB/44.
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UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE OF CORRECTION Patent No.: 9,999,999 Application No.: 10/999,999 Issue Date: May 1, 2002 Inventor(s): Eli Y. Rosenthal
It is certified that error appears in the above-identified patent and that said Letters Patent is hereby corrected as shown below:
In the drawings, Sheet 3, Fig. 3, the reference numeral 225 should be applied to the plate element attached to the support member 207:
Column 2, line 68 and column 3, lines 3, 8 and 13, for the claim reference numeral '2', each occurrence, should read -1-.
Column 7, lines 45 to 49, the left-hand formula should appear as follows:
-R3 -CHF
Column 8, Formula XVII, that portion of the formula reading -CHClCH- should read --CHFCH2 --; line 5,
chlorine should be changed to --fluorine--. Column 10, line 29, cancel the text beginning with “12. A sensor device” to and ending “active strips.” in column 11, line 10, and insert the following claim: 12. A control circuit of the character set forth in claim 4 and for an automobile having a convertible top, and including; means for moving the top between a raised and lowered retracted position; and control means responsive to a sensor relay for energizing the top moving means for moving said top from a retracted position to a raised position.
I. ELECTRONIC PUBLICATION OF CERTIFICATES OF CORRECTION WITH LATER LISTING IN THE OFFICIAL GAZETTE
Effective August 2001, the U.S. Patent and Trademark Office (USPTO) publishes on the USPTO W e b s i t e a t www.uspto.gov/patents/process/search/authority /certofcorrect. jsp a listing by patent number of the patents for which certificates of correction are being issued.
Under the automated publication process for certificates of correction, each issue of certificates of correction will be electronically published on the U S P T O W e b s i t e a t www.uspto.gov/patents/process/search/authority /certof correct.jsp, and will also subsequently be listed in the Official Gazette (and in the Official G a z e t t e N o t i c e s p o s t e d a t www.uspto.gov/news/og/index.jsp) approximately three weeks thereafter. The listing of certificates of correction in the Official Gazette will include the certificate’s date of issuance.
On the date on which the listing of certificates of correction is electronically published on the USPTO Web site: (A) the certificate of correction will be e entered into the file history and will be available to the public; (B) a printed copy of the certificate of correction will be mailed to the patentee or the patent’s assignee; and (C) an image of the printed certificate of correction will be added to the image of the patent on the patent database at patft.uspto.gov/. The date on which the USPTO makes the certificate of correction available to the public (e.g., by adding the certificate of correction to the file history aqfter signature) will be regarded as the date of issuance of the certificate of correction, not the date of the certificate of correction appearing in the Official Gazette. Certificates of correction published in the above-described manner will provide the public with prompt notice and access, and this is consistent with the legislative intent behind the American Inventors Protection Act of 1999. See 35 U.S.C. 10(a) (authorizing the USPTO to publish in electronic form).
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The listing of certificates of correction can be electronically accessed on the day of issuance at www.uspto.gov/patents/process/search/authority/certof correct. jsp. The electronic image of the printed certificate of correction can be accessed on the patent
database at patft.uspto.gov/ and the listing of the certificates of correction, as published in the Official Gazette three weeks later, will be electronically a c c e s s i b l e a t www.uspto.gov/patents/process/search/authority/certof correct. jsp.
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1486 -1489 [Reserved]
1490 Disclaimers [R-11.2013]
35 U.S.C. 253 Disclaimer.
(a) IN GENERAL.—Whenever a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing and recorded in the Patent and Trademark Office, and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.
(b) ADDITIONAL DISCLAIMER OR DEDICATION.—In the manner set forth in subsection (a), any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.
35 U.S.C. 253(a) corresponds to the provisions of pre-AIA 35 U.S.C. 253, first paragraph except that the first sentence of pre-AIA 35 U.S.C. 251 includes the phrase “, without any deceptive intention,” between “Whenever” and “a claim.” Effective September 16, 2012, Public Law 112-29, sec. 20, 125 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended 35 U.S.C. 253 to eliminate the “without any deceptive intention” clause. 35 U.S.C. 253(b) corresponds to the provisions of pre-AIA 35 U.S.C. 252, second paragraph.
A disclaimer is a statement filed by an owner (in part or in entirety) of a patent or of a patent to be granted (i.e., an application), in which said owner relinquishes certain legal rights to the patent. There are two types of disclaimers: a statutory disclaimer and a terminal disclaimer. The owner of a patent or an application is the original inventor(s) who has/have not assigned away their rights or the assignee(s) of the original inventor(s), or a combination of the two. The patent or application is assigned by one assignment or by multiple assignments which establish a chain of title from the inventor(s) to the assignee(s).
I. SIGNING AND SUPPORTING A DISCLAIMER
37 CFR 1.321 Statutory disclaimers, including terminal disclaimers.
(a) A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. The disclaimer, to be recorded in the Patent and Trademark Office, must:
(1) be signed by the patentee, or an attorney or agent of record;
(2) identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term, will be refused recordation;
(3) state the present extent of patentee’s ownership interest in the patent; and
(4) be accompanied by the fee set forth in § 1.20(d).
(b) An applicant or assignee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted. Such terminal disclaimer is binding upon the grantee and its successors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
(1) be signed:
(i) by the applicant, or
(ii) if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii) if there is an assignee of record of the entire interest, by such assignee, or
(iv) by an attorney or agent of record;
(2) specify the portion of the term of the patent being disclaimed;
(3) state the present extent of applicant’s ownership interest in the patent to be granted; and
(4) be accompanied by the fee set forth in § 1.20(d).
(c) A terminal disclaimer, when filed to obviate judicially created double patenting in a patent application or in a reexamination proceeding except as provided for in paragraph (d) of this section, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and
(3) Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting.
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(d) A terminal disclaimer, when filed in a patent application or in a reexamination proceeding to obviate double patenting based upon a patent or application that is not commonly owned but was disqualified as prior art as set forth in either § 1.104(c)(4)(ii) or (c)(5)(ii) as resulting from activities undertaken within the scope of a joint research agreement, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or be signed in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding;
(3) Include a provision waiving the right to separately enforce any patent granted on that application or any patent subject to the reexamination proceeding and the patent or any patent granted on the application which formed the basis for the double patenting, and that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent and the patent, or any patent granted on the application, which formed the basis for the double patenting are not separately enforced.
Pursuant to 37 CFR 1.321(a), a disclaimer filed in a patent or a reexamination proceeding must be signed by either (1) the patentee (the assignee, the inventor(s) if the patent is not assigned, or the assignee and the inventors if the patent is assigned-in-part), or (2) an attorney or agent of record. A registered practitioner acting in a representative capacity under 37 CFR 1.34 is not permitted to sign the disclaimer. Where the attorney or agent of record signs the disclaimer, there is no need to comply with 37 CFR 3.73.
37 CFR 1.321(b) sets forth the signature requirements for a terminal disclaimer. Note that the signature requirements for terminal disclaimers filed in a pending application differ depending on the filing date of the application. If the application filing date is on or after September 16, 2012, see subsection A., below; if the application was filed was filed before September 16, 2012, see subsection B., below.
Note that the signature on the disclaimer need not be an original signature. Pursuant to 37 CFR 1.4(d)(1)(ii), the submitted disclaimer can be a copy, such as a photocopy or facsimile transmission of an original disclaimer.
A. Disclaimer in Application Filed On or After September 16, 2012
A disclaimer filed in a pending application that was filed on or after September 16, 2012 must be signed by the applicant or an attorney or agent of record.
The word “applicant,” in this context, refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in 37 CFR 1.43, 1.45, or 1.46. Under 37 CFR 1.43, “applicant” refers to the legal representative of a deceased or legally incapacitated inventor. Under 37 CFR 1.45, “applicant” refers to the inventors; if fewer than all joint inventors are applying for a patent as provided in 37 CFR 1.45, the phrase “the applicant” means the joint inventors who are applying for the patent without the omitted inventor(s). Under 37 CFR 1.46, “applicant” refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under 37 CFR 1.46 and not the inventor.
An assignee which is not an applicant must file a request to change the applicant under 37 CFR 1.46(c), an application data sheet under 37 CFR 1.76 specifying the applicant in the application information section, and a 37 CFR 3.73(c) statement to become the 37 CFR 1.321(b)(1) applicant in order to file and sign a disclaimer.
In order to obviate a non-statutory double patenting rejection, the entirety of the ownership must sign the terminal disclaimer disclaiming with respect to the reference on which the rejection is based, or multiple terminal disclaimers so disclaiming. Thus, if a 37 CFR 1.321(b)(1) applicant who is not the owner (e.g., an inventor who assigned away the application) signs a disclaimer, the disclaimer will not be entered and the non-statutory double patenting rejection will not be withdrawn by the examiner. The same is true if a 37 CFR 1.321(b)(1) applicant representing less than the entirety of the ownership (see 37 CFR 1.42(c)) signs a disclaimer, and a disclaimer from the remainder of the ownership has not also been filed.
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The disclaimer may also be filed by an attorney or agent of record (a registered practitioner acting in a representative capacity under 37 CFR 1.34 is not permitted to sign the disclaimer). Where the attorney or agent of record signs the disclaimer, there is no need to comply with 37 CFR 3.73.
B. Disclaimer in Application Filed Before September 16, 2012
The owner of the patent or application can sign a disclaimer, and a person empowered by the owner to sign the disclaimer can also sign it. For a disclaimer to be accepted, it must be signed by the proper party as follows:
(A) A disclaimer filed in an application must be signed by
(1) the applicant where the application has not been assigned,
(2) the applicant and the assignee where each owns a part interest in the application,
(3) the assignee where assignee owns the entire interest in the application, or
(4) an attorney or agent of record.
Where the assignee signs the disclaimer, there is a requirement to comply with pre-AIA 37 CFR 3.73(b) in order to satisfy pre-AIA 37 CFR 1.321, unless an attorney or agent of record signs the disclaimer. In order to comply with pre-AIA 37 CFR 3.73(b), the assignee’s ownership interest must be established by:
(1) filing in the application or patent evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11, or
(2) specifying in the record of the application or patent where such evidence is recorded in the Office (e.g., reel and frame number, etc.). The submission with respect to pre-AIA 37 CFR 3.73(b) to establish ownership must be signed by a party authorized to act on behalf of the assignee. See also MPEP § 324 as to compliance with pre-AIA 37 CFR 3.73(b). A copy of the “Statement Under 37 CFR 3.73 (b),”
which is reproduced in MPEP § 324, may be sent by the examiner to applicant to provide an acceptable way to comply with the requirements of pre-AIA 37 CFR 3.73 (b).
A statement of assignee interest in a terminal disclaimer that “A and B are the owners of 100% of the instant application...” is sufficient to satisfy the pre-AIA 37 CFR 1.321(b)(3) requirement that a terminal disclaimer “state the present extent of applicant’s or assignee’s ownership interest in the patent to be granted.” Although the quoted statement does not identify what specific percentage is owned by A and what specific percentage is owned by B, the statement does provide consent to the terminal disclaimer by the entirety of the ownership of the application (A and B own all of the invention, regardless of the individual percentages they own).
The disclaimer may also be filed by an attorney or agent of record (a registered practitioner acting in a representative capacity under 37 CFR 1.34 is not permitted to sign the disclaimer). Where the attorney or agent of record signs the disclaimer, there is no need to comply with 37 CFR 3.73.
II. STATUTORY DISCLAIMERS
Under 37 CFR 1.321(a) the owner of a patent may disclaim a complete claim or claims of his or her patent. This may result from a lawsuit or because he or she has reason to believe that the claim or claims are too broad or otherwise invalid. If the patent is involved in an interference or contested case, see 37 CFR 41.121(a).
As noted above, a statutory disclaimer is a statement in which a patent owner relinquishes legal rights to one or more claims of a patent. A statutory disclaimer is not, however, a vehicle for adding or amending claims, because there is no provision for such in the statute (35 U.S.C. 253) nor the rules (37 CFR 1.321). Thus, claims of a patent cannot be disclaimed in favor of new claims to be added to the patent or an amendment to existing claims.
III. TERMINAL DISCLAIMERS
37 CFR 1.321(a) and (b)also provide for the filing by a patentee or applicant of a terminal disclaimer
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which disclaims or dedicates to the public the entire term or any terminal part of the term of a patent or patent to be granted.
37 CFR 1.321(c) specifically provides for the filing of a terminal disclaimer in an application or a reexamination proceeding for the purpose of overcoming a nonstatutory double patenting rejection. See MPEP § 804.02.
37 CFR 1.321(d) specifically provides for the filing of a terminal disclaimer in an application or a reexamination proceeding for the purpose of overcoming a nonstatutory double patenting rejection based on a U.S. patent or application that is not commonly owned but was disqualified pursuant to either 37 CFR 1.104(c)(4)(ii) or (c)(5)(ii) as the result of activities undertaken within the scope of a joint research agreement.
IV. PROCESSING IN CERTIFICATE OF CORRECTION BRANCH
The Certificate of Correction Branch is responsible for the processing of all statutory disclaimers filed under the first paragraph of 35 U.S.C. 253, whether the case is pending or patented, and all terminal disclaimers (filed under 35 U.S.C. 253) except for those filed in a pending application or reexamination proceeding. This processing involves:
(A) Determining the compliance of the disclaimer with 35 U.S.C. 253 and 37 CFR 1.321 and 3.73;
(B) Notifying applicant or patentee when the disclaimer is informal and thus not acceptable;
(C) Recording the disclaimers in the record of the application file; and
(D) Providing the disclaimer data for printing in the Official Gazette.
V. PROCESSING OF TERMINAL DISCLAIMER IN PENDING APPLICATION
The Office provides for the submission of eTerminal Disclaimers (eTDs) via EFS-Web.A web-based eTD may be filled out completely online using web-screens. An eTD that meets all requirements is auto-processed, approved immediately upon submission, and directly loads into the USPTO
databases which will increase accuracy and facilitate faster processing. Note that eTDs are accepted only for nonprovisional utility applications (including national stage and reissue) and design applications (including reissue). Requests for terminal disclaimers for plant patent applications, reexaminations, and terminal disclaimers based on a joint research agreement must be filed by paper or a scanned image PDF submitted via EFS-Web. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/e TD-info-I. jsp.
Where a terminal disclaimer other than an eTD is filed in an application pending in a TC, it will be processed by a Paralegal Specialist of the Patent Legal Research Center or a paralegal of the Office of the Special Program Examiner or appropriate Training Quality Assurance Specialist (TQAS) of the TC having responsibility for the application. The paralegal will:
(A) Determine compliance with 35 U.S.C. 253 and 37 CFR 1.321 and 3.73, and ensure that the appropriate terminal disclaimer fee set forth in 37 CFR 1.20(d) is/was applied;
(B) Notify the examiner having charge of the application whether the terminal disclaimer is acceptable or not by completing a Terminal Disclaimer review decision form;
(C) Where the terminal disclaimer is not acceptable, indicate the nature of the informalities so that the examiner can inform applicant in the next Office action.
The paralegal completes a Terminal Disclaimer review decision form to notify the examiner of the nature of any informalities in the terminal disclaimer. The examiner should notify the applicant of the informalities in the next Office action, or by interview with applicant if such will expedite prosecution of the application.
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VI. OTHER MATTERS DIRECTED TO TERMINAL DISCLAIMERS
A. Requirements of Terminal Disclaimers
A proper terminal disclaimer must disclaim the terminal part of the statutory term of any patent granted on the application being examined which would extend beyond the expiration date of the full statutory term, shortened by any terminal disclaimer, of the patent (or of any patent granted on the application) to which the disclaimer is directed. Note the exculpatory language in the second paragraph of the sample terminal disclaimer forms, PTO/SB/25, PTO/SB/26 and PTO/AIA/25 and PTO/AIA/26, provided at the end of this Chapter. That language (“In making the above disclaimer, the owner does not disclaim...”) is permissible in a terminal disclaimer.
A terminal disclaimer filed to obviate a nonstatutory double patenting rejection based on a commonly owned patent or application must comply with the requirements of 37 CFR 1.321(c). The terminal disclaimer must state that any patent granted on the application being examined will be enforceable only for and during the period that it and the patent to which the disclaimer is directed or the patent granted on the application to which the disclaimer is directed are commonly owned. See MPEP § 706.02(1)(2) for examples of common ownership, or lack thereof.
A terminal disclaimer filed to obviate a nonstatutory double patenting rejection based on a non-commonly owned patent or application disqualified under 35 U.S.C. 102(b)(2)(C) or under pre-AIA 35 U.S.C. 103(c) as a result of activities undertaken within the scope of a joint research agreement under 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3) must comply with 37 CFR 1.321(d), which sets forth signature, waiver rights and enforceability requirements.
The terminal disclaimer must include a provision:
(1) waiving the right to separately enforce (a) any patent granted on that application or the patent being reexamined and (b) the reference patent, or any patent granted on the reference application which formed the basis for the double patenting; and
(2) agreeing that any patent granted on that application or patent being reexamined shall be enforceable only for and during such period that said patent and the reference patent, or any patent granted on the reference application, which formed the basis for the double patenting are not separately enforced.
A terminal disclaimer must state that the agreement is to run with any patent granted on the application being examined and is to be binding upon the grantee, its successors, or assigns.
The appropriate one of form paragraphs 14.27.04 to 14.27.08 (reproduced below) may be used to provide applicant or patent owner with an example of acceptable terminal disclaimer language. Additionally, copies of forms PTO/SB/25, PTO/SB/26, PTO/AIA/25 and PTO/AIA/26 (provided at the end of this Chapter) may be attached to the Office action to provide sample terminal disclaimers.
Pursuant to the last sentence of 35 U.S.C. 253, “any patentee or applicant may disclaim or dedicate to the public... any terminal part of the term, of the patent granted or to be granted”. Accordingly, the disclaimer must be of a terminal portion of the term of the entire patent to be granted. A disclaimer of a terminal portion of the term of an individual claim, or individual claims will not be accepted. A disclaimer of the term of individual claims would not be appropriate because the claims of a pending application or proceeding are subject to cancellation, amendment, or renumbering. It is further noted that the statute does not provide for conditional disclaimers (whether they are terminal disclaimers or statutory disclaimers) and accordingly, a proposed disclaimer that is made contingent on the allowance of certain claims or the granting of a petition, is improper and cannot be accepted. The disclaimer should identify the disclaimant and his or her interest in the application and should specify the date when the disclaimer is to become effective.
B. Effect of Disclaimers in Continuing Applications and in Reissues
A terminal disclaimer filed to obviate a nonstatutory double patenting rejection is effective only with respect to the application identified in the disclaimer unless by its terms it extends to continuing
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applications (in which case, applicant must file a copy of the disclaimer in the continuing application, to obviate any nonstatutory double patenting rejection to which the disclaimer is directed). See President and Fellows of Harvard College v. Rea, 2013 WL 2152635 (E.D.Va. May 15, 2013) (NO. 1:12-CV-1034). For example, a terminal disclaimer filed in a parent application normally has no effect on a continuing application claiming filing date benefits of the parent application under 35 U.S.C. 120. A terminal disclaimer filed in a parent application to obviate a nonstatutory double patenting rejection does, however, carry over to a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (effective July 14, 2003, CPAs are only available in design applications). The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed. If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182, along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA; see below “Withdrawing a Terminal Disclaimer” (paragraph “A. Before Issuance of Patent”). If applicant files a Request for Continued Examination (RCE) of an application under 37 CFR 1.114 (which can be filed on or after May 29, 2000 for an application filed on or after June 8, 1995), any terminal disclaimer present will continue to operate, because a new application has not been filed, but rather prosecution has been continued in the existing application. A petition under 37 CFR 1.182, along with the required petition fee, may be filed, if withdrawal of the terminal disclaimer is to be requested. Reissue applications: Where a terminal disclaimer was filed in an original application, a copy of that terminal disclaimer is not required to be filed by applicant in the reissue.
An internal review form will be filled out to indicate that a terminal disclaimer has been filed for the patent (and will be effective for the patent as it will be reissued). Further, a copy of the terminal disclaimer should be placed into the reissue application file history by the Technology Center.
C. Disclaimer Identifies the Wrong Target Application or Patent
In some instances a terminal disclaimer filed to obviate a nonstatutory double patenting rejection will identify the wrong target application or patent (i.e., an application or patent which is not the basis for the double patenting rejection). In these instances, a replacement terminal disclaimer identifying the correct target application or patent would be required by the examiner. Once a correct replacement terminal disclaimer is received, the next Office action should make it clear that “the second terminal disclaimer replaces the first terminal disclaimer, and the first terminal disclaimer is thus void.” A second terminal disclaimer fee should not be assessed/charged, because the first fee is applied to the second terminal disclaimer.
D. Two or More Copending Applications
If two (or more) pending applications are filed, in each of which a rejection of one claimed invention over the other on the ground of provisional nonstatutory double patenting (ODP) is proper, the provisional ODP rejection will be made in each application. If the provisional ODP rejection is the only rejection remaining in the earlier-filed of the two pending applications, (but the later-filed application is rejectable on other grounds), the examiner should then withdraw the provisional ODP rejection and permit the earlier-filed application to issue as a patent without a terminal disclaimer. If the provisional ODP rejection is the only rejection remaining in the later-filed application, (while the earlier-filed application is rejectable on other grounds), a terminal disclaimer must be required in the later-filed application, before the provisional ODP rejection can be withdrawn.
If the provisional ODP rejections in both applications are the only rejections remaining in those applications, the examiner should then withdraw the provisional ODP rejection in the earlier-filed application thereby permitting that application to issue without need of a terminal disclaimer. A terminal disclaimer must be required in the later-filed application before the provisional ODP rejection can be withdrawn and the application be permitted to issue.
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The phrase “earlier-filed” for determining in which application the terminal disclaimer need not be filed, is to be interpreted as follows:
(A) Where there is no benefit claim in the two applications, the “earlier-filed” application is the one having the earlier actual filing date;
(B)(1) Where at least one of the two applications is entitled to the benefit of a U.S. nonprovisional application under 35 U.S.C. 120, 121, or 365(c), the “earlier-filed” application is the one having the earliest date to which it is entitled benefit under 35 U.S.C. 120, 121, and/or 365(c).
(B)(2) Where two applications are entitled to the benefit of the same U.S. nonprovisional application under 35 U.S.C. 120, 121, or 365(c), if all the conflicting claims of one of the applications are not appropriately supported in the parent application (and therefore, not entitled to the benefit of the filing date of the parent application), while the conflicting claims of the other application are appropriately supported in the parent application (and therefore, entitled to the benefit of the filing date of the parent application), then the other application is the earlier-filed application. If none of the conflicting claims of either application are appropriately supported in the parent application, then the actual filing dates of the two applications govern.
(C) A 35 U.S.C. 119(e) benefit is NOT taken into account in determining which is the “earlier-filed” application.
(D) A foreign priority claim under 35 U.S.C. 119(a) is NOT taken into account in determining which is the “earlier-filed” application.
For items (C) and (D), it is to be noted that patent term does not begin from the date of the 35 U.S.C. 119 filing. Thus, if a patent # 1 has a 35 U.S.C. 119 filing date prior to patent # 2, but has a U.S. application filing date after patent # 2, then patent # 1 will expire later than patent # 2, and patent # 2 will be determined to be the “earlier-filed” application. See 35 U.S.C. 154(a)(2) and (a)(3).
If both applications are filed on the same day, the provisional ODP rejection made in each of the applications should be maintained until applicant overcomes the rejections by either filing a reply
showing that the claims subject to the provisional ODP rejections are patentably distinct or filing a terminal disclaimer in each of the pending applications.
If both applications are entitled to the benefit of the same U.S. nonprovisional application under 35 U.S.C. 120, 121, or 365(c) , and (B)(2) above does not apply, then the provisional ODP rejection made in each of the applications should be maintained until applicant overcomes the rejections by either filing a reply showing that the claims subject to the provisional ODP rejections are patentably distinct or filing a terminal disclaimer in each of the pending applications.
Where there are three applications containing claims that conflict such that a provisional ODP rejection is made in each application based upon the other two, it is not sufficient to file a terminal disclaimer in only one of the applications addressing the other two applications. Rather, an appropriate terminal disclaimer must be filed in at least two of the applications to link all three together. This is because a terminal disclaimer filed to obviate a nonstatutory double patenting rejection is effective only with respect to the application in which the terminal disclaimer is filed; it is not effective to link the other two applications to each other.
VII. FORM PARAGRAPHS
The following form paragraphs may be used to inform the applicant (or patent owner) of the status of a submitted terminal disclaimer.
¶ 14.23 Terminal Disclaimer Proper
The terminal disclaimer filed on [1] disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of [2] has been reviewed and is accepted. The terminal disclaimer has been recorded.
Examiner Note:
1. In bracket 1, insert the date the terminal disclaimer was filed.
2. In bracket 2, list the Patent Number and/or Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
3. See MPEP § 1490 for discussion of requirements for a proper terminal disclaimer.
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4. Use form paragraph 14.23.01 for reexamination proceedings.
5. For improper terminal disclaimers, see form paragraphs 14.24 et seq.
¶ 14.23.01 Terminal Disclaimer Proper (Reexamination Only)
The terminal disclaimer filed on [1] disclaiming the terminal portion of the patent being reexamined which would extend beyond the expiration date of [2] has been reviewed and is accepted. The terminal disclaimer has been recorded.
Examiner Note:
1. In bracket 1, insert the date the terminal disclaimer was filed.
2. In bracket 2, list the Patent Number and/or Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
3. See MPEP § 1490 for discussion of requirements for a proper terminal disclaimer.
4. For improper terminal disclaimers, see the form paragraphs which follow.
¶ 14.24 Terminal Disclaimer Not Proper - Introductory Paragraph
The terminal disclaimer filed on [1] disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of [2] has been reviewed and is NOT accepted.
Examiner Note:
1. In bracket 1, insert the date the terminal disclaimer was filed.
2. In bracket 2, list the Patent Number and/or Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
3. One or more of the appropriate form paragraphs 14.26 to 14.32 MUST follow this form paragraph to indicate why the terminal disclaimer is not accepted.
4. Form paragraph 14.35 may be used to inform applicant that an additional disclaimer fee will not be required for the submission of a replacement or supplemental terminal disclaimer.
5. Do not use in reexamination proceedings, use form paragraph 14.25 instead.
¶ 14.25 Terminal Disclaimer Not Proper - Introductory Paragraph (Reexamination Only)
The terminal disclaimer filed on [1] disclaiming the terminal portion of the patent being reexamined which would extend
beyond the expiration date of [2] has been reviewed and is NOT accepted.
Examiner Note:
1. In bracket 1, insert the date the terminal disclaimer was filed.
2. In bracket 2, list the Patent Number and/or the Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
3. One or more of the appropriate form paragraphs 14.26 to 14.32 MUST follow this form paragraph to indicate why the terminal disclaimer is not accepted.
4. Form paragraph 14.35 may be used to inform applicant that an additional disclaimer fee will not be required for the submission of a replacement or supplemental terminal disclaimer.
¶ 14.26 Does Not Comply With 37 CFR 1.321 “Sub-Heading” Only
The terminal disclaimer does not comply with 37 CFR 1.321 because:
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 and followed by one or more of the appropriate form paragraphs 14.26.01 to 14.27.03.
¶ 14.26.01 Extent of Interest Not Stated
The person who has signed the disclaimer has not stated the extent of his/her interest, or the business entity’s interest, in the application/patent. See 37 CFR 1.321(b)(3).
Examiner Note:
This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
¶ 14.26.02 Directed to Particular Claim(s)
It is directed to a particular claim or claims, which is not acceptable, since “the disclaimer must be of a terminal portion of the term of the entire [patent or] patent to be granted.” See MPEP § 1490.
Examiner Note:
This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
¶ 14.26.03 Not Signed
The terminal disclaimer was not signed.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
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¶ 14.26.04 Application/Patent Not Identified
The application/patent being disclaimed has not been identified.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
¶ 14.26.05 Application/Patent Improperly Identified
The application/patent being disclaimed has been improperly identified since the number used to identify the [1] being disclaimed is incorrect. The correct number is [2].
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. In bracket 1, insert --application-- or --patent--.
3. In bracket 2, insert the correct Application Number (including series code and serial no.) or the correct Patent Number being disclaimed.
4. A terminal disclaimer is acceptable if it includes the correct Patent Number or the correct Application Number or the serial number together with the proper filing date or the proper series code.
¶ 14.26.06.fti Not Signed by All Owners - Application Filed Before Sept. 16, 2012
This application was filed before September 16, 2012. The terminal disclaimer was not signed by all owners and, therefore, supplemental terminal disclaimers are required from the remaining owners.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed on or after September 16, 2012.
¶ 14.26.07 No Disclaimer Fee Submitted
The disclaimer fee of $ [1] in accordance with 37 CFR 1.20(d) has not been submitted, nor is there any authorization in the application file to charge a specified Deposit Account or credit card.
Examiner Note:
1. In bracket 1, insert the fee for a disclaimer.
2. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26. If the disclaimer fee was paid for a terminal disclaimer which was not accepted, applicant does not have to pay another disclaimer fee when submitting a replacement or supplemental terminal disclaimer, and this form paragraph should not be used.
¶ 14.26.08 Terminal Disclaimer Not Properly Signed - Application Filed On or After Sept. 16, 2012
This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b).
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed before September 16, 2012.
¶ 14.26.09 Failure To State Capacity To Sign - Application Filed On or After Sept. 16, 2012
This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer has failed to state his/her capacity to sign for the juristic entity, and he/she has not been established as being authorized to act on behalf of the applicant.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed before September 16, 2012.
¶ 14.26.10 Terminal Disclaimer Identifies Party Who Is Not The Applicant - Application Filed On or After Sept. 16, 2012
This application was filed on or after September 16, 2012. The party identified in the terminal disclaimer is not the applicant of record. A request to change the applicant under 37 CFR 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR 1.46(c).
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed before September 16, 2012.
¶ 14.27.01 Lacks Clause of Enforceable Only During Period of Common Ownership
It does not include a recitation that any patent granted shall be enforceable only for and during such period that said patent is commonly owned with the application(s) or patent(s) which formed the basis for the double patenting rejection. See 37 CFR 1.321(c)(3) .
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Examiner Note:
This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND 14.26.
¶ 14.27.011 Lacks 37 CFR 1.321(d) statement for joint research agreement under 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2)&(3)
It does not include the waiver and enforceability provisions of 37 CFR 1.321(d). The terminal disclaimer must include a provision:
(1) waiving the right to separately enforce (a) any patent granted on that application or the patent being reexamined and (b) the reference patent, or any patent granted on the reference application which formed the basis for the double patenting rejection; and
(2) agreeing that any patent granted on that application or patent being reexamined shall be enforceable only for and during such period that said patent and the reference patent, or any patent granted on the reference application, which formed the basis for the double patenting are not separately enforced.
See 37 CFR 1.321(d)(3).
Examiner Note:
1. For applications filed before September 16, 2012, this form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26, and should be followed by either form paragraph 14.27.07.fti or form paragraph 14.27.08.
2. For applications filed on or after September 16, 2012, this form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26, and should be followed by either form paragraph 14.27.07.1 or form paragraph 14.27.08.
¶ 14.27.02 Fails To Disclaim Terminal Portion of Any Patent Granted On Subject Application
It fails to disclaim the terminal portion of any patent granted on the subject application.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Use this form paragraph when the period disclaimed is not the correct period or when no period is specified at all.
3. When using this form paragraph, give an example of proper terminal disclaimer language using form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012) following this or the series of statements concerning the defective terminal disclaimer.
¶ 14.27.03 Fails To Disclaim Terminal Portion of Subject Patent
It fails to disclaim the terminal portion of the subject patent.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Use this form paragraph in a reissue application or reexamination proceeding when the period disclaimed is not the correct period or when no period is specified at all.
¶ 14.27.04.fti Examples of Acceptable Terminal Disclaimer Language in Patent To Be Granted -Application Filed Before Sept. 16, 2012
This application was filed before September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:
I. If a Provisional Obviousness-Type Double Patenting Rejection Over A Pending Application was made, use:
The owner, _________________, of _____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number ________________, filed on _____________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and any patent granted on the reference application are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
II. If an Obviousness-Type Double Patenting Rejection Over A Prior Patent was made, use:
The owner, _________________, of _____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of prior patent No. ________________ as the term of said prior patent is presently shortened by any terminal disclaimer. The owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and the prior patent are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
Alternatively, Form PTO/SB/25 may be used for situation I, and Form PTO/SB/26 may be used for situation II.
Examiner Note:
1. This form paragraph may be used in an application filed before September 16, 2012.
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2. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation), other than for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.06.
3. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.07.fti for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.08 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).
¶ 14.27.04.1 Examples of Acceptable Terminal Disclaimer Language in Patent To Be Granted – Application Filed On or After Sept. 16, 2012
This application was filed on or after September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:
I. If a Provisional Obviousness-Type Double Patenting Rejection Over A Pending Application was made, use:
The applicant, ________________, owner of ____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number ______________, filed on ____________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The applicant hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and any patent granted on the reference application are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
II. If an Obviousness-Type Double Patenting Rejection Over A Prior Patent was made, use:
The applicant, ________________, owner of ____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of prior patent No. ________________ as the term of said prior patent is presently shortened by any terminal disclaimer. The applicant hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and the prior patent are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
Alternatively, Form PTO/AIA/25 may be used for situation I, and Form PTO/AIA/26 may be used for situation II.
Examiner Note:
1. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation), other than for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.06.
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.07.1 for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.08 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).
¶ 14.27.06 Examples of Acceptable Terminal Disclaimer Language in Patent (Reexamination Situation)
Examples of acceptable language for making the disclaimer of the terminal portion of the patent being reexamined (or otherwise for an existing patent) follow:
I. If a Provisional Obviousness-Type Double Patenting Rejection Over A Pending Application was made, or is otherwise believed to be applicable to the patent, use:
The patentee, ___________, owner of __________ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application No. ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The patentee hereby agrees that the instant patent shall be enforceable only for and during such period that the instant patent and any patent granted on the reference application are commonly owned. This agreement is binding upon the patentee, its successors, or assigns.
II. If an Obviousness-Type Double Patenting Rejection Over A Reference Patent was made, or is otherwise believed to be applicable to the instant patent, use:
The patentee, ___________, owner of ________ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of reference patent No. ______________ as the term of said reference patent is presently shortened by any terminal disclaimer. The patentee hereby agrees that the instant patent shall be enforceable only for and during such period that the instant patent and the reference
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patent are commonly owned. This agreement is binding upon the patentee, its successors, or assigns.
Alternatively, Form PTO/AIA/25a may be used for situation I, and Form PTO/AIA/26a may be used for situation II.
Examiner Note:
1. To provide examples of acceptable terminal disclaimer language in a patent to be granted on an application (generally, an application being examined), other than for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012).
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.07.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012) for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.08 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).
¶ 14.27.07.fti Examples of Acceptable Terminal Disclaimer Language – Application Filed Before Sept. 16, 2012, Activities Undertaken Within the Scope of a Joint Research Agreement
This application was filed before September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:
I. If a Provisional Obviousness-Type Double Patenting Rejection Over A Pending Application was made, use:
The owner, __________________, of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application.
The owner of the instant application waives the right to separately enforce any patent granted on the instant application and any patent granted on the reference application. The owner of the instant application hereby agrees that any patent granted on the instant application and any patent granted on the reference application shall be enforceable only for and during such period that any patent granted on the instant application and any patent granted on the reference application are not separately
enforced. The waiver, and this agreement, run with any patent granted on the instant application and any patent granted on the reference application, and are binding upon the owner of the instant application, its successors, or assigns.
II. If an Obviousness-Type Double Patenting Rejection Over A Prior Patent was made, use:
The owner, __________________, of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of prior patent No. _________________, as the term of said prior patent is presently shortened by any terminal disclaimer.
The owner of the instant application waives the right to separately enforce the prior patent and any patent granted on the instant application. The owner of the instant application hereby agrees that the prior patent and any patent granted on the instant application shall be enforceable only for and during such period that the prior patent and any patent granted on the instant application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and are binding upon the owner of the instant application, its successors, or assigns.
Examiner Note:
1. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation) for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.08.
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer in a situation other than one based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.04.fti for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.06 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).
¶ 14.27.07.1 Examples of Acceptable Terminal Disclaimer Language – Application Filed On or After Sept. 16, 2012, Activities Undertaken Within the Scope of a Joint Research Agreement
This application was filed on or after September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:
I. If a Provisional Obviousness-Type Double Patenting Rejection Over A Pending Application was made, use:
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The applicant, __________________, owner of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application.
The applicant of the instant application waives the right to separately enforce any patent granted on the instant application and any patent granted on the reference application. The applicant of the instant application hereby agrees that any patent granted on the instant application and any patent granted on the reference application shall be enforceable only for and during such period that any patent granted on the instant application and any patent granted on the reference application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and any patent granted on the reference application, and are binding upon the applicant of the instant application, its successors, or assigns.
II. If an Obviousness-Type Double Patenting Rejection Over A Prior Patent was made, use:
The applicant, __________________, owner of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of prior patent No. _________________, as the term of said prior patent is presently shortened by any terminal disclaimer.
The applicant of the instant application waives the right to separately enforce the prior patent and any patent granted on the instant application. The applicant of the instant application hereby agrees that the prior patent and any patent granted on the instant application shall be enforceable only for and during such period that the prior patent and any patent granted on the instant application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and are binding upon the applicant of the instant application, its successors, or assigns.
Examiner Note:
1. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation) for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.08.
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer in a situation other than one based on activities undertaken within the scope of a joint
research agreement, (a) use form paragraph 14.27.04.1 for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.06 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).
¶ 14.27.08 Examples of Acceptable Terminal Disclaimer Language in Patent (Reexamination Situation; activities undertaken within the scope of a joint research agreement)
Examples of acceptable language for making the disclaimer of the terminal portion of the patent being reexamined (or otherwise for an existing patent) follow:
I. If a provisional obviousness-type double patenting rejection over a Pending Application was made, or is otherwise believed to be applicable to the patent, use:
The patentee, ______________, owner of _______ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application.
The patentee waives the right to separately enforce the instant patent and any patent granted on the pending reference application. The patentee agrees that the instant patent and any patent granted on the pending reference application shall be enforceable only for and during such period that the instant patent and the patent granted on the pending reference application are not separately enforced. The waiver, and this agreement, run with any patent granted on the pending reference application, and are binding upon the patentee, its successors, or assigns.
II. If an obviousness-type double patenting rejection over a Reference Patent was made, or is otherwise believed to be applicable to the instant patent, use:
The patentee, owner of _______ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of reference patent No. _________________, as the term of said reference patent is presently shortened by any terminal disclaimer.
The patentee waives the right to separately enforce the instant patent and the reference patent. The patentee agrees that the instant patent and the reference patent shall be enforceable only for and during such period that the instant patent and the reference patent are not separately enforced. The waiver, and this agreement, are binding upon the patentee, its successors, or assigns.
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Examiner Note:
1. To provide examples of acceptable terminal disclaimer language in a patent to be granted on an application (generally, an application being examined) for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.07.fti (for applications filed before September 16, 2012) or form paragraph 14.27.07.1 (for applications filed on or after September 16, 2012).
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer in a situation other than one based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012) for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.06 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).
¶ 14.28.fti Failure To State Capacity To Sign – Application Filed Before Sept. 16, 2012
This application was filed before September 16, 2012. The person who signed the terminal disclaimer has failed to state his/her capacity to sign for the corporation, or other business entity or organization, and he/she has not been established as being authorized to act on behalf of the assignee.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed on or after September 16, 2012.
¶ 14.29.fti Not Recognized as Officer of Assignee – Application Filed Before Sept. 16, 2012, “Sub-Heading” Only
This application was filed before September 16, 2012. The person who signed the terminal disclaimer is not an attorney or agent of record, is not recognized as an officer of the assignee, and has not been established as being authorized to act on behalf of the assignee. See MPEP § 324.
Examiner Note:
1. This form paragraph is to be used ONLY in applications filed before September 16, 2012 when the person signing the terminal disclaimer is not an authorized officer as defined in MPEP § 324 or is an attorney or agent not of record (e.g., acting in a representative capacity under 37 CFR 1.34).
2. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 and followed by form paragraph 14.29.02.fti when appropriate. An attorney or agent of record is always authorized to sign the terminal disclaimer, even though there is no indication that he or she is an officer of the assignee.
3. Use form paragraph 14.29.02.fti to explain how an official, other than a recognized officer, may properly sign a terminal disclaimer.
¶ 14.29.02.fti Criteria To Accept Terminal Disclaimer When Signed by a Non-Recognized Officer – Application Filed Before September 16, 2012
This application was filed before September 16, 2012. It would be acceptable for a person, other than a recognized officer, to sign a terminal disclaimer, provided the record for the application includes a statement that the person is empowered to sign terminal disclaimers and/or act on behalf of the assignee.
Accordingly, a new terminal disclaimer which includes the above empowerment statement will be considered to be signed by an appropriate official of the assignee. A separately filed paper referencing the previously filed terminal disclaimer and containing a proper empowerment statement would also be acceptable, if filed with another copy of the previously filed terminal disclaimer.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.29.fti.
2. When form paragraph 14.29.fti is used to indicate that a terminal disclaimer is denied because it was not signed by a recognized officer nor by an attorney or agent of record, this form paragraph should be used to point out one way to correct the problem.
3. While an indication of the person’s title is desirable, its inclusion is not mandatory when this option is employed.
4. A sample terminal disclaimer should be sent with the Office action.
¶ 14.30.fti No Evidence of Chain of Title to Assignee - Application Filed Before Sept. 16, 2012
This application was filed before September 16, 2012. The assignee has not established its ownership interest in the application, in order to support the terminal disclaimer. There is no submission in the record establishing the ownership interest by either (a) providing documentary evidence of a chain of title from the original inventor(s) to the assignee and a statement affirming that the documentary evidence of the chain of title form the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11, or (b) specifying (by reel and frame number) where such documentary evidence is recorded in the Office (37 CFR 3.73).
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25.
2. Where an attorney or agent of record signs a terminal disclaimer, there is no need to provide a statement under 37 CFR 3.73. Thus, this form paragraph should not be used.
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3. It should be noted that the documentary evidence or the specifying of reel and frame number may be found in the terminal disclaimer itself or in a separate paper.
¶ 14.30.01 No Evidence of Chain of Title to Assignee (Reexamination Situations)
The assignee has not established its ownership interest in the patent, in order to support the terminal disclaimer. There is no submission in the record establishing the ownership interest by either: (a) providing documentary evidence of a chain of title from the original inventor(s) to the assignee and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11; or (b) specifying (by reel and frame number) where such documentary evidence is recorded in the Office (37 CFR 3.73).
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph or 14.25.
2. Where an attorney or agent of record signs a terminal disclaimer, there is no need to provide a statement under 37 CFR 3.73. Thus, this form paragraph should not be used.
3. It should be noted that the documentary evidence or the specifying of reel and frame number may be found in the terminal disclaimer itself or in a separate paper in the application.
¶ 14.30.02.fti Evidence of Chain of Title to Assignee - Submission Not Signed by Appropriate Party – Application Filed Before Sept. 16, 2012, Terminal Disclaimer Is Thus Not Entered
This application was filed before September 16, 2012. The submission establishing the ownership interest of the assignee is informal. There is no indication of record that the party who signed the submission establishing the ownership interest is authorized to sign the submission (37 CFR 3.73).
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25.
2. Where an attorney or agent of record signs a terminal disclaimer, there is no need to provide any statement under 37 CFR 3.73. Thus, this form paragraph should not be used.
3. This form paragraph should be followed by one of form paragraphs 14.16.02 or 14.16.03. In rare situations where BOTH form paragraphs 14.16.02 and 14.16.03 do not apply and thus cannot be used, the examiner should instead follow this form paragraph with a detailed statement of why there is no authorization to sign.
4. Use form paragraph 14.16.06 to point out one way to correct the problem.
5. Do not use this form paragraph in an application filed on or after September 16, 2012.
¶ 14.32 Application/Patent Which Forms Basis for Rejection Not Identified
The application/patent which forms the basis for the double patenting rejection is not identified in the terminal disclaimer.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25.
2. Use this form paragraph when no information is presented. If incorrect information is contained in the terminal disclaimer, use form paragraphs 14.26 and 14.26.05.
¶ 14.33 37 CFR 3.73 - Establishing Right of Assignee To Take Action
The following is a statement of 37 CFR 3.73 as applicable to applications filed on or after September 16, 2012:
37 CFR 3.73 Establishing right of assignee to take action.
(a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(1) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or
(2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
(c)
(1) In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting a signed statement identifying the assignee, accompanied by either:
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(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
(2) If the submission is by an assignee of less than the entire right, title and interest (e.g., more than one assignee exists) the Office may refuse to accept the submission as an establishment of ownership unless:
(i) Each assignee establishes the extent (by percentage) of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties including inventors; or
(ii) Each assignee submits a statement identifying the parties including inventors who together own the entire right, title and interest and stating that all the identified parties owns the entire right, title and interest.
(3) If two or more purported assignees file conflicting statements under paragraph (c)(1) of this section, the Director will determine while, if any, purported assignees will be permitted to control prosecution of the application.
(d) The submission establishing ownership under paragraph (b) or (c) of this section must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(1) Including a statement that the person is authorized to act on behalf of the assignee;
(2) Being signed by a person having apparent authority to sign on behalf of the assignee; or
(3) For patent matters only, being signed by a practitioner of record.
The following is a statement of pre-AIA 37 CFR 3.73 as applicable to applications filed before September 16, 2012:
Pre-AIA 37 CFR 3.73 Establishing right of assignee to take action.
(a) The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b)
(1) In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g. , copy of an executed assignment). For trademark matters only, the documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office. For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office ( e.g., reel and frame number).
(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
(c) For patent matters only:
(1) Establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.
(2) If the submission under this section is by an assignee of less than the entire right, title and interest, such assignee must indicate the extent (by percentage) of its ownership interest, or the Office may refuse to accept the submission as an establishment of ownership.
¶ 14.34 Requirement for Statement To Record Assignment Submitted With Terminal Disclaimer
The assignment document filed on [1] is not acceptable as the documentary evidence required by 37 CFR 3.73. The submission of the documentary evidence was not accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or
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concurrently is being, submitted for recordation pursuant to 37 CFR 3.11. See 37 CFR 3.11 and MPEP § 302.
Examiner Note:
1. In bracket 1, insert the date the assignment document was filed.
2. This form paragraph should be used when an assignment document (an original, facsimile, or copy) is submitted to satisfy 37 CFR 3.73 was not accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation, and the documentary evidence has not been recorded among the assignment records of the Office.
¶ 14.35 Disclaimer Fee Not Required Twice - Applicant
It should be noted that applicant is not required to pay another disclaimer fee as set forth in 37 CFR 1.20(d) when submitting a replacement or supplemental terminal disclaimer.
Examiner Note:
1. This form paragraph can be used to notify an applicant that another disclaimer fee will not be required when a replacement or supplemental terminal disclaimer is submitted.
2. Use form paragraph 14.35.01 for providing notification to patent owner, rather than an applicant.
¶ 14.35.01 Disclaimer Fee Not Required Twice - Patent Owner
It should be noted that patent owner is not required to pay another disclaimer fee as set forth in 37 CFR 1.20(d) when submitting a replacement or supplemental terminal disclaimer.
Examiner Note:
This form paragraph can be used to notify a patent owner that another disclaimer fee will not be required when a replacement or supplemental terminal disclaimer is submitted.
¶ 14.36 Suggestion That “Applicant” Request a Refund
Since the required fee for the terminal disclaimer was previously paid, applicant’s payment of an additional terminal disclaimer fee is not required. Applicant may request a refund of this additional terminal disclaimer fee by submitting a written request for a refund and a copy of this Office action to: Mail Stop 16, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Examiner Note:
1. This form paragraph should be used to notify applicant that a refund can be obtained if another terminal disclaimer fee was paid when a replacement or supplemental terminal disclaimer was submitted.
2. Note - If applicant has authorized or requested a fee refund to be credited to a specific Deposit Account or credit card, then an appropriate credit should be made to that Deposit Account or credit card and this paragraph should NOT be used.
3. Use form paragraph 14.36.01 for providing notification to patent owner, rather than an applicant.
¶ 14.36.01 Suggestion That “Patent Owner” Request a Refund
Since the required fee for the terminal disclaimer was previously paid, patent owner’s payment of an additional terminal disclaimer fee is not required. Patent owner may request a refund of this additional terminal disclaimer fee by submitting a written request for a refund and a copy of this Office action to: Mail Stop 16, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Examiner Note:
1. This form paragraph should be used to notify patent owner that a refund can be obtained if another terminal disclaimer fee was paid when a replacement or supplemental terminal disclaimer was submitted.
2. Note - If patent owner has authorized or requested a fee refund to be credited to a specific Deposit Account or credit card, then an appropriate credit should be made to that Deposit Account or credit card and this form paragraph should NOT be used.
¶ 14.37 Information about a Terminal Disclaimer Over a Pending Application
A terminal disclaimer may be effective to overcome a provisional obviousness-type double patenting rejection over a pending application (37 CFR 1.321(b) and (c)).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e T e r m i n a l D i s c l a i m e r s , r e f e r t o www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Examiner Note:
This form paragraph can be used to provide applicant information regarding the terminal disclaimer forms available on the USPTO web site that may be used to overcome a provisional obviousness-type double patenting rejection over a pending application.
¶ 14.38 Information about a Terminal Disclaimer Over a Prior Patent
A terminal disclaimer may be effective to overcome an obviousness-type double patenting rejection over a prior patent (37 CFR 1.321(b) and (c)).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application will determine what form should
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be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e T e r m i n a l D i s c l a i m e r s , r e f e r t o www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Examiner Note:
This form paragraph can be used to provide applicant information regarding the terminal disclaimer forms available on the USPTO web site that may be used to overcome an obviousness-type double patenting rejection over a prior patent.
VIII. WITHDRAWING A RECORDED TERMINAL DISCLAIMER
If timely requested, a recorded terminal disclaimer may be withdrawn before the application in which it is filed issues as a patent, or in a reexamination proceeding, before the reexamination certificate issues. After a patent or reexamination certificate issues, it is unlikely that a recorded terminal disclaimer will be nullified.
A. Before Issuance Of Patent
While the filing and recordation of an unnecessary terminal disclaimer has been characterized as an “unhappy circumstance” in In re Jentoft, 392 F.2d 633, 157 USPQ 363 (CCPA 1968), there is no statutory prohibition against nullifying or otherwise canceling the effect of a recorded terminal disclaimer which was erroneously filed before the patent issues. Because the terminal disclaimer would not take effect until the patent is granted, and the public has not had the opportunity to rely on the terminal disclaimer, relief from this unhappy circumstance may be available by way of petition or by refiling the application (other than by refiling it as a CPA).
Under appropriate circumstances, consistent with the orderly administration of the examination process, the nullification of a recorded terminal disclaimer may be addressed by filing a petition under 37 CFR 1.182 requesting withdrawal of the recorded terminal disclaimer. Petitions seeking to reopen the question of the propriety of the double patenting rejection that prompted the filing of the terminal disclaimer have not been favorably considered. The filing of a continuing application other than a CPA, while abandoning the application
in which the terminal disclaimer has been filed, will typically nullify the effect of a terminal disclaimer. The filing of a Request for Continued Examination (RCE) of an application under 37 CFR 1.114 will not nullify the effect of a terminal disclaimer, because a new application has not been filed, but rather prosecution has been continued in the existing application.
B. After Issuance Of Patent
The mechanisms to correct a patent — Certificate of Correction (35 U.S.C. 255), reissue (35 U.S.C. 251), reexamination (35 U.S.C. 305 and pre-AIA 35 U.S.C. 314), inter partes review (35 U.S.C. 316), post grant review (35 U.S.C. 326), and covered business method review — are not available to withdraw or otherwise nullify the effect of a recorded terminal disclaimer. As a general principle, public policy does not favor the restoration to the patent owner of something that has been freely dedicated to the public, particularly where the public interest is not protected in some manner — e.g., intervening rights in the case of a reissue patent. See, e.g., Altoona Publix Theatres v. American Tri-Ergon
Corp., 294 U.S. 477, 24 USPQ 308 (1935).
Certificates of Correction (35 U.S.C. 255) are available for the correction of an applicant’s mistake. The scope of this remedial provision is limited in two ways — by the nature of the mistake for which correction is sought and the nature of the proposed correction. In re Arnott, 19 USPQ2d 1049 (Comm’r Pat. 1991). The nature of the mistake for which correction is sought is limited to those mistakes that are:
(A) of a clerical nature;
(B) of a typographical nature; or
(C) of a minor character.
The nature of the proposed correction is limited to those situations where the correction does not involve changes which would:
(A) constitute new matter, or (B) require reexamination.
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A mistake in filing a terminal disclaimer does not fall within any of the categories of mistake for which a certificate of correction of applicant’s mistake is permissible, and any attempt to remove or nullify the effect of the terminal disclaimer would typically require reconsideration of the circumstances under which it was filed.
Although the remedial nature of reissue (35 U.S.C. 251) is well recognized, reissue is not available to correct all errors.Reissue is not available to withdraw or otherwise nullify the effect of a terminal disclaimer recorded in an issued patent. First, the reissue statute only authorizes the Director of the USPTO to reissue a patent “for the unexpired part of the term of the original patent.” Because the granting of a reissue patent without the effect of a recorded terminal disclaimer would result in extending the term of the original patent, reissue under these circumstances would be contrary to the statute. In In re Yamazaki, 702 F.3d 1327, 1332, 104 USPQ2d 2024, 2028 (Fed. Cir, 2012), the Federal Circuit stated, as to a terminal disclaimer submitted for a patent, that the statutory patent term calculation begins but does not end with 35 U.S.C. 154(a). When a patent issues subject to a terminal disclaimer, the patentee has reduced the patent’s statutory term by effectively eliminating the disclaimed portion from the original patent, by operation of 35 U.S.C. 253 (which indicates that a disclaimer of patent claims “shall thereafter be considered as part of the original patent” and such applies to disclaimers of patent term). Id.
Second, the principle against recapturing previously patented subject matter that has been intentionally dedicated to the public dates back to Leggett v. Avery, 101 U.S. 256 (1879). The attempt to restore that portion of the patent term that was dedicated to the public to secure the grant of the original patent would be contrary to this recapture principle. Finally, applicants have the opportunity to challenge the need for a terminal disclaimer during the prosecution of the application that issues as a patent. “Reissue is not a substitute for Patent Office appeal procedures.” Ball Corp. v. United States, 729 F.2d 1429, 1435,
221 USPQ 289, 293 (Fed. Cir. 1984). Where applicants did not challenge the propriety of the examiner’s nonstatutory double patenting rejection, but filed a terminal disclaimer to avoid the rejection,
the filing of the terminal disclaimer did not constitute error within the meaning of 35 U.S.C. 251. Ex parte Anthony, 230 USPQ 467 (Bd. App. 1982), aff’d, No. 84-1357 (Fed. Cir. June 14, 1985).
Finally, the nullification of a recorded terminal disclaimer would not be appropriate in reexamination inter partes review, post grant review, and covered
business method review proceedings. There are statutory prohibitions in 35 U.S.C. 305 and pre-AIA 35 U.S.C. 314, 35 U.S.C. 316, and 35 U.S.C. 326 against enlarging the scope of a claim during reexamination inter partes review, post grant review, and covered business method review proceedings. As noted by the Board in
Anthony, supra, if a terminal disclaimer was nullified, “claims would be able to be sued upon for a longer period than would the claims of the original patent. Therefore, the vertical scope, as opposed to the horizontal scope (where the subject matter is enlarged), would be enlarged.” Id. at 470.
Where a terminal disclaimer was submitted to overcome a nonstatutory double patenting rejection (made during prosecution of an application which has now issued as a patent), and the numbers for the patent being disclaimed in the terminal disclaimer were inadvertently transposed (e.g., 6,444,316 written as 6,444,136), a petition under 37 CFR 1.182 may be filed to withdraw the terminal disclaimer with the incorrect (transposed) patent number (recorded in the issued patent), and replace it with a corrected terminal disclaimer having the correct patent number. In this instance, the inadvertency is clear from the record. If the transposing error resulted in an earlier patent term expiration date than provided by the corrected terminal disclaimer, a statement must be included in the corrected terminal disclaimer that the term is limited to the shorter expiration date of the orginal terminal disclaimer or the corrected terminal disclaimer. The absence of such a statement will result in the Office entering the second disclaimer and not withdrawing the original disclaimer.
IX. TERMINAL DISCLAIMER FORMS
The following are forms which may be used when filing a terminal disclaimer.
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Forms PTO/AIA/25 and PTO/AIA/26 may be used when filing a terminal disclaimer in an application where the application in which the terminal disclaimer is submitted was filed on or after September 16, 2012. Forms PTO/SB/25 and PTO/SB/26 may be used when filing a terminal
disclaimer in an application where the application in which the terminal disclaimer is submitted was filed before September 16, 2012.
Forms PTO/SB/25a and PTO/SB/26a may be used when filing a terminal disclaimer in a patent.
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Chapter 1500 Design Patents
Statutes and Rules Applicable1501 Definition of a Design1502
Distinction Between Design and Utility Patents
1502.01
Elements of a Design Patent Application Filed Under 35 U.S.C. chapter 16
1503
Specification1503.01 Drawing1503.02
Examination1504 Statutory Subject Matter for Designs1504.01
Computer-Generated Icons1504.01(a) Design Comprising Multiple Articles or Multiple Parts Embodied in a Single Article
1504.01(b)
Lack of Ornamentality1504.01(c) Simulation1504.01(d) Offensive Subject Matter1504.01(e)
Novelty1504.02 Nonobviousness1504.03 Considerations Under 35 U.S.C. 1121504.04 Restriction1504.05 Double Patenting1504.06 [Reserved]1504.07
-1504.09 Priority Under 35 U.S.C. 119(a)-(d), 386(a) and (b)
1504.10
[Reserved]1504.11 -1504.19
Benefit Under 35 U.S.C. 1201504.20 [Reserved]1504.21
-1504.29 Expedited Examination1504.30
Allowance and Term of Design Patent1505 [Reserved]1506
-1508 Reissue of a Design Patent1509 Reexamination1510 Protest1511 Relationship Between Design Patent, Copyright, and Trademark
1512
Miscellaneous1513
1501 Statutes and Rules Applicable [R-07.2015]
Design patents are provided for in 35 U.S.C. chapter 16. In addition, international design applications filed under the Hague Agreement Concerning the International Registration of Industrial Designs
(“Hague Agreement”) are provided for in 35 U.S.C. chapter 38. Certain statutory provisions in 35 U.S.C. chapter 38 provide for the applicability of the provisions of 35 U.S.C. chapter 16 to international design applications. See 35 U.S.C. 382(c), 383, and 389(b). See MPEP Chapter 2900 for additional information concerning international design applications.
The right to a patent for a design stems from:
35 U.S.C. 171 Patents for designs.
(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
(c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.
For design applications filed under 35 U.S.C. chapter 16:
37 CFR 1.151 Rules applicable.
The rules relating to applications for patents for other inventions or discoveries are also applicable to applications for patents for designs except as otherwise provided.
For international design applications designating the United States:
37 CFR 1.1061 Rules applicable.
(a) The rules relating to applications for patents for other inventions or discoveries are also applicable to international design applications designating the United States, except as otherwise provided in this chapter or required by the Articles or Regulations.
(b) The provisions of § 1.74, § 1.84, except for § 1.84(c), and §§ 1.152 through 1.154 shall not apply to international design applications.
Other rules relating only to design applications, such as 37 CFR 1.152-1.155 and those contained in 37 CFR Part 1, Subpart I, are reproduced in the sections of this chapter and in MPEP Chapter 2900, as appropriate.
It is noted that design patent applications are not included in the Patent Cooperation Treaty (PCT),
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and the procedures followed for PCT international applications are not to be followed for design patent applications.
The practices set forth in other chapters of this Manual of Patent Examining Procedure (MPEP)
are to be followed in examining applications for design patents, except as particularly pointed out in this chapter or in MPEP Chapter 2900. Also, with respect to international design applications that designate the United States, 35 U.S.C. 389(b) provides that “[a]ll questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16.” Accordingly, many of the practices set forth in this chapter, such as those pertaining to examination in MPEP § 1504, are applicable to international design applications that designate the United States. Differences in practices are noted in this chapter where applicable.
1502 Definition of a Design [R-07.2015]
In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916). “[35 U.S.C.] 171 refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).
The design for an article consists of the visual characteristics embodied in or applied to an article.
Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.
Design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite,
preconceived thing, capable of reproduction and not merely the chance result of a method.
1502.01 Distinction Between Design and Utility Patents [R-07.2015]
In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.
While utility and design patents afford legally separate protection, the utility and ornamentality of an article may not be easily separable. Articles of manufacture may possess both functional and ornamental characteristics.
Some of the more common differences between design and utility patents are summarized below:
(A) The term of a utility patent on an application filed on or after June 8, 1995 is 20 years measured from the U.S. filing date; or if the application contains a specific reference to an earlier application under 35 U.S.C. 120, 121, 365(c), or 386(c), 20 years from the earliest effective U.S. filing date, while the term of a design patent is 15 years measured from the date of grant, if the design application was filed on or after May 13, 2015 (or 14 years if filed before May 13, 2015). (See 35 U.S.C. 173 as amended under section 102 of the Patent Law Treaties Implementation Act, 126 Stat. at 1531-32).
(B) Maintenance fees are required for utility patents (see 37 CFR 1.20), while no maintenance fees are required for design patents.
(C) Design patent applications include only a single claim, while utility patent applications can have multiple claims.
(D) Restriction between plural, distinct inventions is discretionary on the part of the examiner in utility patent applications (see MPEP § 803), while it is mandatory in design patent applications (see MPEP § 1504.05).
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(E) An international application designating various countries may be filed for utility patents under the Patent Cooperation Treaty (PCT), whereas an international design application designating various countries may be filed for design protection under the Hague Agreement.
See MPEP Chapter 2900 for international design applications.
(F) Foreign priority under 35 U.S.C. 119(a)-(d) can be obtained for the filing of utility patent applications up to 1 year after the first filing in any country subscribing to the Paris Convention, while this period is only 6 months for design patent applications (see 35 U.S.C. 172).
(G) Utility patent applications may claim the benefit of a provisional application under 35 U.S.C. 119(e) whereas design patent applications may not. See 35 U.S.C. 172 and 37 CFR 1.78(a)(4) .
(H) A Request for Continued Examination (RCE) under 37 CFR 1.114 may only be filed in utility and plant applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, while RCE is not available for design applications (see 37 CFR 1.114(e)).
(I) Continued prosecution application (CPA) practice under 37 CFR 1.53(d) is only available for design applications filed under 35 U.S.C. chapter 16 (see 37 CFR 1.53(d)(1)).
(J) Utility patent applications filed on or after November 29, 2000 are subject to application publication under 35 U.S.C. 122(b)(1)(A), whereas design applications filed under 35 U.S.C. chapter 16 are not subject to application publication (see 35 U.S.C. 122(b)(2)).
Other distinctions between design and utility patent practice are detailed in this chapter and MPEP Chapter 2900 for international design applications. Unless otherwise provided, the rules for applications for utility patents are equally applicable to
applications for design patents (35 U.S.C. 171 and 37 CFR 1.151 and 1.1061).
1503 Elements of a Design Patent Application Filed Under 35 U.S.C. chapter 16 [R-07.2015]
This section sets forth the elements of a design applications filed under 35 U.S.C. chapter 16. Elements of an international design application are set forth in MPEP Chapter 2900, though reference to international design applications that designate the United States is included in this section where appropriate.
A design patent application has essentially the elements required of an application for a utility patent (see Chapter 600). The arrangement of the elements of a design patent application filed under 35 U.S.C. chapter 16 and the sections of the specification are as specified in 37 CFR 1.154.
A claim in a specific form is a necessary element of a design patent application. See MPEP § 1503.01, subsection III .
A drawing is an essential element of a design patent application. See MPEP § 1503.02 for requirements for drawings.
1503.01 Specification [R-07.2015]
37 CFR 1.153 Title, description and claim, oath or declaration (for applications filed on or after September 16, 2012).
(a) The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.
(b) The inventor's oath or declaration must comply with the requirements of § 1.63, or comply with the requirements of § 1.64 for a substitute statement.
*****
37 CFR 1.153 (pre-AIA) Title, description and claim, oath or declaration (for applications filed prior to September 16, 2012).
(a) The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the
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§ 1503.01DESIGN PATENTS
ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.
(b) The oath or declaration required of the applicant must comply with § 1.63.
*****
37 CFR 1.154 Arrangement of application elements in a design application.
(a) The elements of the design application, if applicable, should appear in the following order:
(1) Design application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings or photographs.
(6) The inventor's oath or declaration (see § 1.153(b)).
(b) The specification should include the following sections in order:
(1) Preamble, stating the name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.
(2) Cross-reference to related applications (unless included in the application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Description of the figure or figures of the drawing.
(5) Feature description.
(6) A single claim.
(c) The text of the specification sections defined in paragraph (b) of this section, if applicable, should be preceded by a section heading in uppercase letters without underlining or bold type.
¶ 15.05 Design Patent Specification Arrangement (Ch. 16 Design Application)
The following order or arrangement should be observed in framing a design patent specification:
(1) Preamble, stating name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.
(2) Cross-reference to related applications.
(3) Statement regarding federally sponsored research or development.
(4) Description of the figure or figures of the drawing.
(5) Feature description.
(6) A single claim.
Examiner Note:
Do not use this form paragraph in an international design application.
I. PREAMBLE AND TITLE
A preamble, if included, should state the name of the applicant, the title of the design, and a brief description of the nature and intended use of the article in which the design is embodied (37 CFR 1.154).
The title of the design identifies the article in which the design is embodied by the name generally known and used by the public and may contribute to defining the scope of the claim. See MPEP § 1504.04, subsection I.A. The title may be directed to the entire article embodying the design while the claimed design shown in full lines in the drawings may be directed to only a portion of the article. However, the title may not be directed to less than the claimed design shown in full lines in the drawings. A title descriptive of the actual article aids the examiner in developing a complete field of search of the prior art and further aids in the proper assignment of new applications to the appropriate class, subclass, and patent examiner, and the proper classification of the patent upon allowance of the application. It also helps the public in understanding the nature and use of the article embodying the design after the patent has been issued. For example, a broad title such as “Adapter Ring” provides little or no information as to the nature and intended use of the article embodying the design. If a broad title is used, the description of the nature and intended use of the design may be incorporated into the preamble. Absent an amendment requesting deletion of the description, it would be printed on any patent that would issue.
When a design is embodied in an article having multiple functions or comprises multiple independent parts or articles that interact with each other, the title must clearly define them as a single entity, for example, combined or combination, set, pair, unit assembly.
However, it is emphasized that, under 35 U.S.C. 112(b) , the claim defines “the subject matter which the inventor or joint inventor regards as the
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invention” (emphasis added); (or for applications filed prior to September 16, 2012, under the second paragraph of 35 U.S.C. 112 the claim defines "the subject matter which the applicant regards as his invention"), that is, the ornamental design to be embodied in or applied to an article. Thus, the examiner should afford the applicant substantial latitude in the language of the title/claim. The examiner should only require amendment of the title/claim if the language is clearly misdescriptive, inaccurate, or unclear (i.e., the language would result in a rejection of the claim under 35 U.S.C. 112(b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, second paragraph); see MPEP § 1504.04, subsection III). The use of language such as “or the like” or “or similar article” in the title when directed to the environment of the article embodying the design will not be the basis for a rejection of the claim under 35 U.S.C. 112(b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, second paragraph). Such language is indefinite when it refers to the area of articles defining the subject matter of the design. An acceptable title would be “door for cabinets, houses, or the like,” while the title “door or the like” would be unacceptable and the claim will be rejected under 35 U.S.C. 112(b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, second paragraph). Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). See also MPEP § 1504.04; subsection III.
Amendments to the title, whether directed to the article in which the design is embodied or its environment, must have antecedent basis in the original disclosure and may not introduce new matter. Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992). If an amendment to the title is directed to the environment in which the design is used and the amendment would introduce new matter, the examiner should object to the amendment under 35 U.S.C. 132. If an amendment to the title is directed to the article in which the design is embodied and the amendment would introduce new matter, in addition to the objection under 35 U.S.C. 132, the claim must be rejected under 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, the first paragraph of 35 U.S.C. 112).
Any amendment to the language of the title should also be made at each occurrence thereof throughout the application, except in the oath or declaration. If the title of the article is not present in the original figure descriptions, it is not necessary to incorporate the title into the descriptions as part of any amendment to the language of the title.
The practice set forth above regarding the title of the design is generally applicable to international design applications designating the United States. The requirement for a title in an international design application designating the United States is set forth in 37 CFR 1.1067 and corresponds to the requirement set forth in 37 CFR 1.153. See MPEP § 2920.04(a).
¶ 15.05.01 Title of Design Invention
The title of a design being claimed must correspond to the name of the article in which the design is embodied or applied to. See MPEP § 1503.01 and 37 CFR 1.153 or 37 CFR 1.1067.
¶ 15.59 Amend Title
For [1], the title [2] amended throughout the application, original oath or declaration excepted, to read: [3]
Examiner Note:
1. In bracket 1, insert reason.
2. In bracket 2, insert --should be-- or --has been--.
II. DESCRIPTION
No description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description. In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). However, while not required, such a description is not prohibited and may be incorporated, at applicant’s option, into the specification or may be provided in a separate paper. Ex parte Spiegel, 1919 C.D. 112, 268 O.G. 741 (Comm’r Pat. 1919). Descriptions of the figures are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which is more clearly descriptive of the views.
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§ 1503.01DESIGN PATENTS
(A) In addition to the figure descriptions, the following types of statements are permissible in the specification:
(1) Description of the appearance of portions of the claimed design which are not illustrated in the drawing disclosure. Such a description, if provided, must be in the design application as originally filed, and may not be added by way of amendment after the filing of the application as it would be considered new matter.
(2) Description disclaiming portions of the article not shown in the drawing as forming no part of the claimed design.
(3) Statement indicating the purpose of broken lines in the drawing, for example, environmental structure or boundaries that form no part of the design to be patented.
(4) Description denoting the nature and intended use of the claimed design, if not included in the preamble pursuant to 37 CFR 1.154 and MPEP § 1503.01, subsection I.
It is the policy of the Office to attempt to resolve questions about the nature and intended use of the claimed design prior to examination by making a telephone inquiry at the time of initial docketing of the application. This will enable the application to be properly classified and docketed to the appropriate examiner and to be searched when the application comes up for examination in its normal course without the need for a rejection under 35 U.S.C. 112 prior to a search of the prior art. Explanation of the nature and intended use of the article may be added to the specification provided it does not constitute new matter. It may alternately, at applicant’s option, be submitted in a separate paper without amendment of the specification
(5) A “characteristic features” statement describing a particular feature of the design that is considered by applicant to be a feature of novelty or nonobviousness over the prior art (37 CFR 1.71(c)).
This type of statement may not serve as a basis for determining patentability by an examiner. In determining the patentability of a design, it is the overall appearance of the claimed design which must be taken into consideration. In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982); In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977). Furthermore, the inclusion of such a statement in
the specification is at the option of applicant and will not be suggested by the examiner. ¶ 15.47 Characteristic Feature Statement
A “characteristic features” statement describing a particular feature of novelty or nonobviousness in the claimed design may be permissible in the specification. Such a statement should be in terms such as “The characteristic feature of the design resides in [1],” or if combined with one of the Figure descriptions, in terms such as “the characteristic feature of which resides in [2].” While consideration of the claim goes to the total or overall appearance, the use of a “characteristic feature” statement may serve later to limit the claim ( McGrady v. Aspenglas Corp., 487 F. Supp. 859, 208 USPQ 242 (S.D.N.Y. 1980)).
Examiner Note:
In brackets 1 and 2, insert brief but accurate description of the feature of novelty or nonobviousness of the claimed design.
¶ 15.47.01 Feature Statement Caution
The inclusion of a feature statement in the specification is noted. However, the patentability of the claimed design is not based on the specified feature but rather on a comparison of the overall appearance of the design with the prior art. In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977).
(B) The following types of statements are not permissible in the specification:
(1) A disclaimer statement directed to any portion of the claimed design that is shown in solid lines in the drawings is not permitted in the specification of an issued design patent. However, the disclaimer statement may be included in the design application as originally filed to provide antecedent basis for a future amendment. See Ex parte Remington, 114 O.G. 761, 1905 C.D. 28 (Comm’r Pat. 1905); In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967). See MPEP § 2909.02 regarding disclaimer statements in international design applications.
(2) Statements which describe or suggest other embodiments of the claimed design which are not illustrated in the drawing disclosure, except one that is a mirror image of that shown or has a shape and appearance that would be evident from the one shown, are not permitted in the specification of an issued design patent. However, such statements may be included in the design application as originally filed to provide antecedent basis for a future amendment. In addition, statements which attempt to broaden the scope of the claimed design beyond that which is shown in the drawings are not permitted.
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(3) Statements describing matters that are directed to function or are unrelated to the design. ¶ 15.41 Functional, Structural Features Not Considered
Attention is directed to the fact that design patent applications are concerned solely with the ornamental appearance of an article of manufacture. The functional and/or structural features stressed by applicant in the papers are of no concern in design cases, and are neither permitted nor required. Function and structure fall under the realm of utility patent applications.
¶ 15.46.01 Impermissible Descriptive Statement
The descriptive statement included in the specification is impermissible because [1]. See MPEP § 1503.01, subsection II. Therefore, the description should be canceled as any description of the design in the specification, other than a brief description of the drawing, is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description.
Examiner Note:
In bracket 1, insert the reason why the descriptive statement is improper.
¶ 15.60 Amend All Figure Descriptions
For [1], the figure descriptions [2] amended to read: [3]
Examiner Note:
1. In bracket 1, insert reason.
2. In bracket 2, insert --should be-- or --have been-.
3. In bracket 3, insert amended text.
¶ 15.61 Amend Selected Figure Descriptions
For [1], the description(s) of Fig(s). [2] [3] amended to read: [4]
Examiner Note:
1. In bracket 1, insert reason.
2. In bracket 2, insert selected Figure descriptions.
3. In bracket 3, insert --should be-- or --have been-.
4. In bracket 4, insert amended text.
¶ 15.61.01 Amend Specification to Add Reference to Color Drawing(s)/ Photograph(s) (Ch. 16 Design Application)
The application contains at least one color drawing or color photograph. To comply with the provisions of 37 CFR 1.84 for color drawings/photographs in design applications, the specification [1] amended to include the following language as the first paragraph of the brief description of the drawings section:
The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.
Examiner Note:
1. Do not use this form paragraph in an international design application.
2. In bracket 1, insert --must be-- or --has been--.
III. DESIGN CLAIM
The requirements for utility claims specified in 37 CFR 1.75 do not apply to design claims. Instead, the form and content of a claim in a design patent application filed under 35 U.S.C. chapter 16 is set forth in 37 CFR 1.153:
37 CFR 1.153 ... claim...
(a) ... The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.
*****
A design patent application may only include a single claim. The single claim should normally be in formal terms to “The ornamental design for (the article which embodies the design or to which it is applied) as shown.” The description of the article in the claim should be consistent in terminology with the title of the invention. See MPEP § 1503.01, subsection I.
When the specification includes a proper descriptive statement of the design (see MPEP § 1503.01, subsection II), or a proper showing of modified forms of the design or other descriptive matter has been included in the specification, the words “and described” must be added to the claim following the term “shown”; i.e., the claim must read “The ornamental design for (the article which embodies the design or to which it is applied) as shown and described.”
Full lines in the drawing show the claimed design. Broken lines are used for numerous purposes. Under some circumstances, broken lines are used to illustrate the claimed design (i.e., stitching and fold lines). Broken lines are not permitted for the purpose
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of identifying portions of the claimed design which are immaterial or unimportant. See In re Blum, 374 F.2d 904, 907, 153 USPQ 177, 180 (CCPA 1967) (there are “ no portions of a design which are ‘immaterial’or ‘not important.’A design is a unitary thing and all of its portions are material in that they contribute to the appearance which constitutes the design.”). See also MPEP § 1503.02, subsection III.
The form and content of a claim in an international design application designating the United States is set forth in 37 CFR 1.1025, which mirrors the claim requirements set forth in 37 CFR 1.153.
¶ 15.62 Amend Claim “As Shown”
For proper form (37 CFR 1.153 or 37 CFR 1.1025), the claim [1] amended to read: “[2] claim: The ornamental design for [3] as shown.”
Examiner Note:
1. In bracket 1, insert --must be-- or --has been--.
2. In bracket 2, insert --I-- or --We--.
3. In bracket 3, insert title of the article in which the design is embodied or applied.
¶ 15.63 Amend Claim “As Shown and Described”
For proper form (37 CFR 1.153 or 37 CFR 1.1025), the claim [1] amended to read: “[2] claim: The ornamental design for [3] as shown and described.”
Examiner Note:
1. In bracket 1, insert --must be-- or --has been--.
2. In bracket 2, insert --I-- or --We--.
3. In bracket 3, insert title of the article in which the design is embodied or applied.
¶ 15.64 Addition of “And Described” to Claim
Because of [1] -- and described -- [2] added to the claim after “shown.”
Examiner Note:
1. In bracket 1, insert reason.
2. In bracket 2, insert --must be-- or --has been--.
1503.02 Drawing [R-07.2015]
37 CFR 1.152 Design drawings.
The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance
of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, and that nothing regarding the design sought to be patented is left to conjecture.
When inconsistencies are found among the views, the examiner should object to the drawings and request that the views be made consistent. Ex parte Asano, 201 USPQ 315, 317 (Bd. Pat. App. & Inter. 1978); Hadco Products, Inc. v. Lighting Corp. of America Inc., 312 F. Supp. 1173, 1182, 165 USPQ 496, 503 (E.D. Pa. 1970), vacated on other grounds, 462 F.2d 1265, 174 USPQ 358 (3d Cir. 1972). When the inconsistencies are of such magnitude that the overall appearance of the design is unclear, the claim should be rejected under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite. See MPEP § 1504.04, subsection I.A.
¶ 15.05.03 Drawing/Photograph Disclosure Objected To
The drawing/photograph disclosure is objected to because [1].
Examiner Note:
In bracket 1, insert the reason for the objection.
¶ 15.05.04 Replacement Drawing Sheets Required
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as amended. If a drawing figure is to be
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canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy of the drawing sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d) . If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
¶ 15.05.05 Drawing Correction Required Prior to Appeal
Any appeal of the design claim must include the correction of the drawings approved by the examiner in accordance with Ex parte Bevan, 142 USPQ 284 (Bd. App. 1964).
Examiner Note:
This form paragraph can be used in a FINAL rejection where an outstanding requirement for a drawing correction has not been satisfied.
¶ 15.07 Avoidance of New Matter
When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Form paragraph 15.48 may be used to notify applicant of the necessity for good drawings.
¶ 15.48 Necessity for Good Drawings
The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.
In addition to the criteria set forth in 37 CFR 1.81-1.88, design drawings must also comply with 37 CFR 1.152 as follows:
I. VIEWS
The drawings or photographs should contain a sufficient number of views to disclose the complete appearance of the design claimed, which may include the front, rear, top, bottom and sides. Perspective views are suggested and may be submitted to clearly show the appearance of three dimensional designs. If a perspective view is submitted, the surfaces shown would normally not be required to be illustrated in other views if these surfaces are clearly understood and fully disclosed in the perspective.
Views that are merely duplicative of other views of the design or that are flat and include no surface ornamentation may be omitted from the drawing if the specification makes this explicitly clear. See MPEP § 1503.01, subsection II. For example, if the left and right sides of a design are identical or a mirror image, a view should be provided of one side and a statement made in the drawing description that the other side is identical or a mirror image. If the design has a flat bottom, a view of the bottom may be omitted if the specification includes a statement that the bottom is flat and devoid of surface ornamentation. The term “unornamented” should not be used to describe visible surfaces which include structure that is clearly not flat. Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 (D. Del. 1961).
Sectional views presented solely for the purpose of showing the internal construction or functional/ mechanical features are unnecessary and may lead to confusion as to the scope of the claimed design. The examiner should object to such views and require their cancellation. Ex parte Tucker, 1901 C.D. 140, 97 O.G. 187 (Comm’r Pat. 1901); Ex parte Kohler, 1905 C.D. 192, 116 O.G. 1185 (Comm’r Pat. 1905). However, where the exact contour or configuration of the exterior surface of a claimed design is not apparent from the views of the drawing, and no attempt is made to illustrate features of internal construction, a sectional view may be included to clarify the shape of said design. Ex parte Lohman, 1912 C.D. 336, 184 O.G. 287 (Comm’r Pat. 1912). When a sectional view is added during prosecution, the examiner must determine whether there is antecedent basis in the original disclosure
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§ 1503.02DESIGN PATENTS
for the material shown in hatching in the sectional view 37 CFR 1.84(h)(3) and MPEP § 608.02.
II. SURFACE SHADING
While surface shading is not required under 37 CFR 1.152, it may be necessary in particular cases to shade the figures to show clearly the character and contour of all surfaces of any 3-dimensional aspects of the design. Surface shading is also necessary to distinguish between any open and solid areas of the article. However, surface shading should not be used on unclaimed subject matter, shown in broken lines, to avoid confusion as to the scope of the claim.
Lack of appropriate surface shading in the drawing as filed may render the design nonenabling and indefinite under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs). Additionally, if the surface shape is not evident from the disclosure as filed, the addition of surface shading after filing may comprise new matter. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Oblique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror. Contrast in materials may be shown by using line shading in one area and stippling in another. By using this technique, the claim will broadly cover contrasting surfaces unlimited by colors. The claim would not be limited to specific material either, as long as the appearance of the material does not patentably depart from the visual appearance illustrated in the drawing.
III. BROKEN LINES
The two most common uses of broken lines are to disclose the environment related to the claimed design and to define the bounds of the claim. Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied or applied to that is not considered part of the claimed design. See In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Unclaimed subject matter may be shown in broken lines for the purpose of
illustrating the environment in which the article embodying the design is used. Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof. A boundary line may be shown in broken lines if it is not intended to form part of the claimed design. Applicant may choose to define the bounds of a claimed design with broken lines when the boundary does not exist in reality in the article embodying the design. It would be understood that the claimed design extends to the boundary but does not include the boundary. When a boundary line is introduced via amendment or in a continuation application, the introduction of the boundary line must comply with the written description requirement of 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph). See In re Owens, 710 F.3d 1362, 1366-67, 106 USPQ2d 1248, 1251 (Fed. Cir. 2013). For example, unclaimed boundary lines typically should satisfy the written description requirement where they make explicit a boundary that already exists, but was unclaimed in the original disclosure. See Owens, 710 F.3d at 1368-69, 106 USPQ2d at 1252. Where no boundary line is shown in a design application as originally filed, but it is clear from the design specification that the boundary of the claimed design is a straight broken line connecting the ends of existing full lines defining the claimed design, applicant may amend the drawing(s) to add a straight broken line connecting the ends of existing full lines defining the claimed subject matter where such amendment complies with the written description requirement of 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph). Additionally, any broken line boundary other than a straight broken line may constitute new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
However, broken lines are not permitted for the purpose of indicating that a portion of an article is of less importance in the design. See In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967). Broken lines may not be used to show hidden planes and surfaces which cannot be seen through opaque materials. The use of broken lines indicates that the environmental structure or the portion of the article depicted in broken lines forms no part of the design,
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and is not to indicate the relative importance of parts of a design.
In general, when broken lines are used, they should not intrude upon or cross the showing of the claimed design and should not be of heavier weight than the lines used in depicting the claimed design. When broken lines cross over the full line showing of the claimed design and are defined as showing environment, it is understood that the surface which lies beneath the broken lines is part of the claimed design. When the broken lines crossing over the design are defined as boundaries, it is understood that the area within the broken lines is not part of the claimed design. Therefore, when broken lines are used which cross over the full line showing of the design, it is critical that the description of the broken lines in the specification explicitly identifies their purpose so that the scope of the claim is clear. As it is possible that broken lines with different purposes may be included in a single application, the description must make a visual distinction between the two purposes; such as --The broken lines immediately adjacent the shaded areas represent the bounds of the claimed design while all other broken lines are directed to environment and are for illustrative purposes only; the broken lines form no part of the claimed design.-- Where a broken line showing of environmental structure must necessarily cross or intrude upon the representation of the claimed design and obscures a clear understanding of the design, such an illustration should be included as a separate figure in addition to the other figures which fully disclose the subject matter of the design. Further, surface shading should not be used on unclaimed subject matter shown in broken lines to avoid confusion as to the scope of the claim.
The following form paragraphs may be used, where appropriate, to notify applicant regarding the use of broken lines in the drawings.
¶ 15.50 Use of Broken Lines for Indicating Unimportant Features Not Permitted
The ornamental design which is being claimed must be shown in solid lines in the drawing. Broken lines for the purpose of indicating unimportant or immaterial features of the design are not permitted. There are no portions of a claimed design which are immaterial or unimportant. See In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967) and In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).
¶ 15.50.01 Use of Broken Lines in Drawing (Ch. 16 Design Application)
Environmental structure may be illustrated by broken lines in the drawing if clearly designated as environment in the specification. See 37 CFR 1.152 and MPEP § 1503.02, subsection III.
Examiner Note:
Do not use this form paragraph in an international design application.
¶ 15.50.02 Description of Broken Lines (Ch. 16 Design Application)
A statement similar to the following should be used to describe the broken lines on the drawing (MPEP § 1503.02, subsection III):
-- The broken line showing of [1] is for the purpose of illustrating [2] and forms no part of the claimed design. --
A statement similar to the one above [3] inserted in the specification preceding the claim.
Examiner Note:
1. Do not use this form paragraph in an international design application.
2. In bracket 1, insert name of structure.
3. In bracket 2, insert --portions of the “article”-- or --environmental structure--.
4. In bracket 3, insert --must be-- or --has been--.
¶ 15.50.04 Proper Drawing Disclosure With Use of Broken Lines
Where superimposed broken lines showing environmental structure obscure the full line disclosure of the claimed design, a separate figure showing the broken lines must be included in the drawing in addition to the figures showing only claimed subject matter, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
¶ 15.50.05 Description of Broken Lines as Boundary of Design (Ch. 16 Design Application)
The following statement must be used to describe the broken line boundary of a design (MPEP § 1503.02, subsection III):
--The [1] broken line(s) define the bounds of the claimed design and form no part thereof.--
Examiner Note:
1. Do not use this form paragraph in an international design application.
2. In bracket 1 insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.
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§ 1503.02DESIGN PATENTS
IV. SURFACE TREATMENT
The ornamental appearance of a design for an article includes its shape and configuration as well as any indicia, contrasting color or materials, graphic representations, or other ornamentation applied to the article (“surface treatment”). Surface treatment must be applied to or embodied in an article of manufacture. Surface treatment, per se (i.e., not applied to or embodied in a specific article of manufacture), is not proper subject matter for a design patent under 35 U.S.C. 171. Surface treatment may either be disclosed with the article to which it is applied or in which it is embodied and must be shown in full lines or in broken lines (if unclaimed) to meet the statutory requirement. See MPEP § 1504.01. The guidelines that apply for disclosing computer-generated icons apply equally to all types of surface treatment. See MPEP § 1504.01(a).
A disclosure of surface treatment in a design drawing or photograph will normally be considered as prima facie evidence that the inventor considered the surface treatment shown as an integral part of the claimed design. An amendment canceling two-dimensional surface treatment or reducing it to broken lines will be permitted if it is clear from the application that applicant had possession of the underlying configuration of the basic design without the surface treatment at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998). Applicant may remove surface treatment shown in a drawing or photograph of a design without such removal being treated as new matter, provided that the surface treatment does not obscure or override the underlying design. The removal of three-dimensional surface treatment that is an integral part of the configuration of the claimed design, for example, removal of beading, grooves, and ribs, will introduce prohibited new matter as the underlying configuration revealed by this amendment would not be apparent in the application as originally filed. See MPEP § 1504.04, subsection II.
V. PHOTOGRAPHS AND COLOR DRAWINGS
Drawings in design applications may be submitted in black and white or in color. See 37 CFR 1.84(a). Photographs, including photocopies of photographs,
are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. See 37 CFR 1.84(b). See also 37 CFR 1.81(c) and 37 CFR 1.83(c), and MPEP § 608.02.
Where color drawings and color photographs are submitted, only one set of color drawings or color photographs are required if submitted via EFS-Web. Three sets of color drawings or color photographs are required if not submitted via EFS-Web. See 37 CFR 1.84(a)(2)(ii). In addition the specification must contain, or be amended to contain, the following language as the first paragraph of the brief description of the drawings: --The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.-- See 37 CFR 1.84(a)(2)(iii) and MPEP § 608.02.
If the photographs are not of sufficient quality so that all details in the photographs are reproducible, this will form the basis of subsequent objection to the quality of the photographic disclosure. No application will be issued until objections directed to the quality of the photographic disclosure have been resolved and acceptable photographs have been submitted and approved by the examiner. If the details, appearance and shape of all the features and portions of the design are not clearly disclosed in the photographs, this would form the basis of a rejection of the claim under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite.
Photographs and drawings must not be combined in a formal submission of the visual disclosure of the claimed design in one application. The introduction of both photographs and drawings in a design application would result in a high probability of inconsistencies between corresponding elements on the drawings as compared with the photographs.
When filing informal photographs or informal drawings with the original application, a disclaimer
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included in the specification or on the photographs themselves may be used to disclaim any surface ornamentation, logos, written matter, etc. which form no part of the claimed design. See also MPEP § 1504.04, subsection II.
Color drawings are permitted in design applications when filed in accordance with the requirements of 37 CFR 1.84(a)(2). Color may also be shown in pen and ink drawings by lining the surfaces of the design for color in accordance with the symbols in MPEP § 608.02. If the drawing in an application is lined for color, the following statement should be inserted in the specification for clarity and to avoid possible confusion that the lining may be surface treatment --The drawing is lined for color.-- However, lining entire surfaces of a design to show color(s) may interfere with a clear showing of the design as required by 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph), as surface shading cannot be used simultaneously to define the contours of those surfaces.
If color photographs or color drawings are filed with the original application, color will be considered an integral part of the disclosed and claimed design. The omission of color in later filed photographs or drawings will be permitted if it is clear from the application that applicant had possession of the underlying configuration of the basic design without the color at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998) and MPEP § 1504.04, subsection II. Note also 37 CFR 1.152, which requires that photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
Form paragraph 15.05.041 may be used when color drawing(s) or photograph(s) have been submitted.
¶ 15.05.041 Color Drawing(s)/Photograph(s) Submitted
Color photographs or drawings have been submitted in this application. If replacement drawings are submitted, any showing of color in a black and white drawing is limited to the symbols used to line a surface to show color (MPEP § 608.02) and must comply with the written description requirements of 35 U.S.C. 112. Additionally, lining entire surfaces of a design to show color(s) may interfere with a clear showing of the design as
required by 35 U.S.C. 112 because surface shading cannot be used simultaneously to define the contours of those surfaces. However, a surface may be partially lined for color with a description that the color extends across the entire surface; this technique would allow for the use of shading on the rest of the surface showing the contours of the design (37 CFR 1.152). In the alternative, a separate view, properly shaded to show the contours of the design but omitting the color(s), may be submitted if identified as shown only for clarity of illustration. Photographs and ink drawings are not permitted to be combined as formal drawings in one application.
In any drawing lined for color, the following descriptive statement must be inserted in the specification (the specific colors may be identified for clarity):
--The drawing is lined for color.--
However, some designs disclosed in color photographs/drawings cannot be depicted in black and white drawings lined for color. For example, a design may include multiple shades of a single color which cannot be accurately represented by the single symbol for a specific color. Or, the color may be a shade other than a true primary or secondary color as represented by the drafting symbols and lining the drawing with one of the drafting symbols would not be an exact representation of the design as originally disclosed.
Examiner Note:
Use this form paragraph when color drawing(s) or photograph(s) have been submitted in an application.
Form paragraph 15.61.01 may be used, where appropriate, to notify applicant regarding amending the specification to add a reference to color drawings or photographs.
¶ 15.61.01 Amend Specification to Add Reference to Color Drawing(s)/ Photograph(s) (Ch. 16 Design Application)
The application contains at least one color drawing or color photograph. To comply with the provisions of 37 CFR 1.84 for color drawings/photographs in design applications, the specification [1] amended to include the following language as the first paragraph of the brief description of the drawings section:
The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.
Examiner Note:
1. Do not use this form paragraph in an international design application.
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§ 1503.02DESIGN PATENTS
2. In bracket 1, insert --must be-- or --has been--.
1504 Examination [R-07.2015]
In design patent applications, ornamentality, novelty, nonobviousness enablement and definiteness are necessary prerequisites to the grant of a patent. The inventive novelty or unobviousness resides in the ornamental shape or configuration of the article in which the design is embodied or the surface ornamentation which is applied to or embodied in the design.
Novelty and nonobviousness of a design claim must generally be determined by a search in the pertinent design classes. It is also mandatory that the search be extended to the mechanical classes encompassing inventions of the same general type. Catalogs and trade journals as well as available foreign patent databases are also to be consulted.
If the examiner determines that the claim of the design patent application does not satisfy the statutory requirements, the examiner will set forth in detail, and may additionally summarize, the basis for all rejections in an Official action. If a reply to an Office action overcomes a rejection either by way of an amendment to the claim or by providing convincing arguments that the rejection should be withdrawn, that rejection must be indicated as withdrawn in the next Office action, unless such action is a notice of allowability. Likewise, any amendment to the specification or claim, or new drawing or drawing correction submitted in reply to an objection or objections in an Office action must be acknowledged in the next Office action, unless such action is a notice of allowability. When an examiner determines that the claim in a design application is patentable under all statutory requirements, but formal matters still need to be addressed and corrected prior to allowance, an Ex parte Quayle action will be sent to applicant indicating allowability of the claim and identifying the necessary corrections.
¶ 15.19.01 Summary Statement of Rejections
The claim stands rejected under [1].
Examiner Note:
1. Use as summary statement of rejection(s) in Office action.
2. In bracket 1, insert appropriate basis for rejection, i.e., statutory provisions, etc.
¶ 15.58 Claimed Design Is Patentable (Ex parte Quayle Actions)
The claimed design is patentable over the references cited.
¶ 15.72 Quayle Action
This application is in condition for allowance except for the following formal matters: [1].
Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm'r Pat. 1935).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
If it is determined that a rejection of the claim should be given after a reply to a Quayle action, the indication of allowability set forth in the previous action must be withdrawn and prosecution reopened using the following form paragraph:
¶ 15.90 Indication of allowability withdrawn
The indication of allowability set forth in the previous action is withdrawn and prosecution is reopened in view of the following new ground of rejection.
With respect to pro se design applications, the examiner should notify applicant in the first Office action that it may be desirable for applicant to employ the services of a registered patent attorney or agent to prosecute the application. Applicant should also be notified that the U.S. Patent and Trademark Office cannot aid in the selection of an attorney or agent. See MPEP § 401. If it appears that patentable subject matter is present and the disclosure of the claimed design complies with the requirements of 35 U.S.C. 112, the examiner should include a copy of the “Guide To Filing A Design Patent Application” with the first Office action and notify applicant that it may be desirable to employ the services of a professional patent draftsperson familiar with design practice to prepare the formal drawings. Applicant should also be notified that the U.S. Patent and Trademark Office cannot aid in the selection of a draftsperson. The following form paragraph, where appropriate, may be used.
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¶ 15.66 Employ Services of Patent Attorney or Agent (Design Application Only)
As the value of a design patent is largely dependent upon the skillful preparation of the drawings and specification, applicant might consider it desirable to employ the services of a registered patent attorney or agent. The U.S. Patent and Trademark Office cannot aid in the selection of an attorney or agent.
A listing of registered patent attorneys and agents is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent attorneys and agents located in their area by writing to the Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
1504.01 Statutory Subject Matter for Designs [R-07.2015]
35 U.S.C. 171 Patents for designs.
(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
(c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.
The language “new, original and ornamental design for an article of manufacture” set forth in 35 U.S.C. 171 has been interpreted by the case law to include at least three kinds of designs:
(A) a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia);
(B) a design for the shape or configuration of an article of manufacture; and
(C) a combination of the first two categories.
See In re Schnell, 46 F.2d 203, 8 USPQ 19 (CCPA 1931); Ex parte Donaldson, 26 USPQ2d 1250 (Bd. Pat. App. & Int. 1992).
A picture standing alone is not patentable under 35 U.S.C. 171. The factor which distinguishes statutory design subject matter from mere picture or ornamentation, per se (i.e., abstract design), is the embodiment of the design in an article of manufacture. Consistent with 35 U.S.C. 171, case
law and USPTO practice, the design must be shown as applied to or embodied in an article of manufacture.
A claim to a picture, print, impression, etc. per se, that is not applied to or embodied in an article of manufacture should be rejected under 35 U.S.C. 171 as directed to nonstatutory subject matter. The following paragraphs may be used.
¶ 15.07.01 Statutory Basis, 35 U.S.C. 171
The following is a quotation of 35 U.S.C. 171:
(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
(c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.
¶ 15.09 35 U.S.C. 171 Rejection
The claim is rejected under 35 U.S.C. 171 as directed to nonstatutory subject matter because the design is not shown embodied in or applied to an article.
Examiner Note:
This rejection should be used when the claim is directed to surface treatment which is not shown with an article in either full or broken lines.
¶ 15.42 Visual Characteristics
The design for an article consists of the visual characteristics or aspect displayed by the article. It is the appearance presented by the article which creates an impression through the eye upon the mind of the observer.
¶ 15.43 Subject Matter of Design Patent
Since a design is manifested in appearance, the subject matter of a Design Patent may relate to the configuration or shape of an article, to the surface ornamentation on an article, or to both.
¶ 15.44 Design Inseparable From Article to Which Applied
Design is inseparable from the article to which it is applied, and cannot exist alone merely as a scheme of ornamentation. It must be a definite preconceived thing, capable of reproduction, and
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§ 1504.01DESIGN PATENTS
not merely the chance result of a method or of a combination of functional elements (35 U.S.C. 171; 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs). See Blisscraft of Hollywood v. United Plastics Co., 189 F. Supp.
333, 127 USPQ 452 (S.D.N.Y. 1960), 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961).
Form paragraphs 15.38 and 15.40 may be used in a second or subsequent action, where appropriate (see MPEP § 1504.02).
1504.01(a) Computer-Generated Icons [R-07.2015]
To be directed to statutory subject matter, design applications for computer-generated icons must comply with the “article of manufacture” requirement of 35 U.S.C. 171.
I. GUIDELINES FOR EXAMINATION OF DESIGN PATENT APPLICATIONS FOR COMPUTER-GENERATED ICONS
The following guidelines have been developed to assist USPTO personnel in determining whether design patent applications for computer-generated icons comply with the “article of manufacture” requirement of 35 U.S.C. 171.
A. General Principle Governing Compliance With the “Article of Manufacture” Requirement
Computer-generated icons, such as full screen displays and individual icons, are 2-dimensional images which alone are surface ornamentation. See, e.g., Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int. 1992) (computer-generated icon alone is merely surface ornamentation). The USPTO considers designs for computer-generated icons embodied in articles of manufacture to be statutory subject matter eligible for design patent protection under 35 U.S.C. 171. Thus, if an application claims a computer-generated icon shown on a computer screen, monitor, other display panel, or a portion thereof, the claim complies with the “article of manufacture” requirement of 35 U.S.C. 171. Since a patentable design is inseparable from the object to which it is applied and cannot exist alone merely as a scheme of surface ornamentation, a computer-generated icon must be embodied in a computer screen, monitor, other display panel, or
portion thereof, to satisfy 35 U.S.C. 171. See MPEP § 1502.
“We do not see that the dependence of the existence of a design on something outside itself is a reason for holding it is not a design ‘for an article of manufacture.’” See In re Hruby, 373 F.2d 997, 1001, 153 USPQ 61, 66 (CCPA 1967) (design of water fountain patentable design for an article of manufacture). The dependence of a computer-generated icon on a central processing unit and computer program for its existence itself is not a reason for holding that the design is not for an article of manufacture.
B. Procedures for Evaluating Whether Design Patent Applications Drawn to Computer-Generated Icons Comply With the “Article of Manufacture” Requirement
USPTO personnel shall adhere to the following procedures when reviewing design patent applications drawn to computer-generated icons for compliance with the “article of manufacture” requirement of 35 U.S.C. 171.
(A) Read the entire disclosure to determine what the applicant claims as the design and to determine whether the design is embodied in an article of manufacture.
Since the claim must be in formal terms to the design “as shown, or as shown and described,” the drawing provides the best description of the claim. 37 CFR 1.153 or 1.1025.
(1) Review the drawing to determine whether a computer screen, monitor, other display panel, or a portion of any of those articles, is shown.
Although a computer-generated icon may be embodied in only a portion of a computer screen, monitor, or other display panel, the drawing must contain a sufficient number of views to constitute a complete disclosure of the appearance of the article.
(2) Review the title to determine whether it clearly refers to the claimed subject matter. 37 CFR 1.153 or 1.1067.
The following titles do not adequately describe a design for an article of manufacture under 35 U.S.C. 171: “computer icon”; or “icon.” On the other hand,
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the following titles do adequately describe a design for an article of manufacture under 35 U.S.C. 171: “computer screen with an icon”; “display panel with a computer icon”; “portion of a computer screen with an icon image”; “portion of a display panel with a computer icon image”; or “portion of a monitor displayed with a computer icon image.”
(3) Review the specification to determine whether a characteristic feature statement is present. If a characteristic feature statement is present, determine whether it describes the claimed subject matter as a computer-generated icon embodied in a computer screen, monitor, other display panel, or portion thereof. See McGrady v. Aspenglas Corp., 487 F.2d 859, 208 USPQ 242 (S.D.N.Y. 1980) (descriptive statement in design patent application narrows claim scope).
(B) If the drawing does not depict a computer-generated icon embodied in a computer screen, monitor, other display panel, or a portion thereof, in either solid or broken lines, reject the claimed design under 35 U.S.C. 171 for failing to comply with the article of manufacture requirement.
(1) If the disclosure as a whole does not suggest or describe the claimed subject matter as a computer-generated icon embodied in a computer screen, monitor, other display panel, or portion thereof, indicate that:
(a) The claim is fatally defective under 35 U.S.C. 171; and
(b) Amendments to the written description, drawings and/or claim attempting to overcome the rejection will ordinarily be entered, however, any new matter will be required to be canceled from the written description, drawings and/or claims. If new matter is added, the claim should be rejected under 35 U.S.C. 112(a).
(2) If the disclosure as a whole suggests or describes the claimed subject matter as a computer-generated icon embodied in a computer screen, monitor, other display panel, or portion thereof, indicate that the drawing may be amended to overcome the rejection under 35 U.S.C. 171. Suggest amendments which would bring the claim into compliance with 35 U.S.C. 171.
(C) Indicate all objections to the disclosure for failure to comply with the requirements of the Rules of Practice in Patent Cases. See e.g. 37 CFR 1.71,
1.81-1.85, and 1.152-1.154. Suggest amendments which would bring the disclosure into compliance with the requirements of the Rules of Practice in Patent Cases.
(D) Upon reply by applicant:
(1) Enter any amendments; and
(2) Review all arguments and the entire record, including any amendments, to determine whether the drawing, title, and specification clearly disclose a computer-generated icon embodied in a computer screen, monitor, other display panel, or portion thereof.
(E) If, by a preponderance of the evidence (see In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (“After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.”)), the applicant has established that the computer-generated icon is embodied in a computer screen, monitor, other display panel, or portion thereof, withdraw the rejection under 35 U.S.C. 171.
II. EFFECT OF THE GUIDELINES ON PENDING DESIGN APPLICATIONS DRAWN TO COMPUTER-GENERATED ICONS
USPTO personnel shall follow the procedures set forth above when examining design patent applications for computer-generated icons pending in the USPTO as of April 19, 1996.
III. TREATMENT OF TYPE FONTS
Traditionally, type fonts have been generated by solid blocks from which each letter or symbol was produced. Consequently, the USPTO has historically granted design patents drawn to type fonts. USPTO personnel should not reject claims for type fonts under 35 U.S.C. 171 for failure to comply with the “article of manufacture” requirement on the basis that more modern methods of typesetting, including computer-generation, do not require solid printing blocks.
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IV. CHANGEABLE COMPUTER GENERATED ICONS
Computer generated icons including images that change in appearance during viewing may be the subject of a design claim. Such a claim may be shown in two or more views. The images are understood as viewed sequentially, no ornamental aspects are attributed to the process or period in which one image changes into another. A descriptive statement must be included in the specification describing the transitional nature of the design and making it clear that the scope of the claim does not include anything that is not shown. Examples of such a descriptive statement are as follows:
“The subject matter in this patent includes a process or period in which an image changes into another image. This process or period forms no part of the claimed design;” or
“The appearance of the transitional image sequentially transitions between the images shown in Figs. 1-8. The process or period in which one image transitions to another image forms no part of the claimed design;” or
“The appearance of the transitional image sequentially transitions between the images shown in Figs. 1-8. No ornamental aspects are associated with the process or period in which one image transitions to another image.”
1504.01(b) Design Comprising Multiple Articles or Multiple Parts Embodied in a Single Article [R-08.2012]
While the claimed design must be embodied in an article of manufacture as required by 35 U.S.C. 171, it may encompass multiple articles or multiple parts within that article. See Ex parte Gibson, 20 USPQ 249 (Bd. App. 1933). When the design involves multiple articles, the title must identify a single entity of manufacture made up by the parts (e.g., set, pair, combination, unit, assembly). A descriptive statement should be included in the specification making it clear that the claim is directed to the collective appearance of the articles shown. If the separate parts are shown in a single view, the parts must be shown embraced by a bracket “}”. The claim
may also involve multiple parts of a single article, where the article is shown in broken lines and various parts are shown in solid lines. In this case, no bracket is needed. See MPEP § 1503.01.
1504.01(c) Lack of Ornamentality [R-07.2015]
I. FUNCTIONALITY VS. ORNAMENTALITY
An ornamental feature or design has been defined as one which was “created for the purpose of ornamenting” and cannot be the result or “merely a by-product” of functional or mechanical considerations. See In re Carletti, 328 F.2d 1020, 140 USPQ 653, 654 (CCPA 1964); Blisscraft of Hollywood v. United Plastic Co., 189 F. Supp. 333, 337, 127 USPQ 452, 454 (S.D.N.Y. 1960), aff’d, 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961). It is clear that the ornamentality of the article must be the result of a conscious act by the inventor, as 35 U.S.C. 171 requires that a patent for a design be given only to “whoever invents any new, original, and ornamental design for an article of manufacture.” Therefore, for a design to be ornamental within the requirements of 35 U.S.C. 171, it must be “created for the purpose of ornamenting.” See In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964).
To be patentable, a design must be “primarily ornamental.” “In determining whether a design is primarily functional or primarily ornamental the
claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article, in determining whether the claimed design is dictated by the utilitarian purpose of the article.” See L. A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed. Cir. 1993). The court in Norco Products, Inc. v. Mecca Development, Inc., 617 F.Supp. 1079, 1080, 227 USPQ 724, 725 (D. Conn. 1985), held that a “primarily functional invention is not patentable” as a design.
A determination of ornamentality is not a quantitative analysis based on the size of the ornamental feature or features but rather a
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determination based on their ornamental contribution to the design as a whole.
While ornamentality must be based on the entire design, “[i]n determining whether a design is primarily functional, the purposes of the particular elements of the design necessarily must be considered.” See Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 240, 231 USPQ 774, 778 (Fed. Cir. 1986). See, e.g., Smith v. M & B Sales & Manufacturing, 13 USPQ2d 2002, 2004 (N. D. Cal. 1990) (if “significant decisions about how to put it [the item] together and present it in the marketplace were informed by primarily ornamental considerations”, this information may establish the ornamentality of a design.).
“However, a distinction exists between the functionality of an article or features thereof and
the functionality of the particular design of such article or features thereof that perform a function.” See Avia Group International Inc. v. L. A. Gear California Inc., 853 F.2d 1557, 1563, 7 USPQ2d 1548, 1553 (Fed. Cir. 1988). The distinction must be maintained between the ornamental design and the article in which the design is embodied. The design for the article cannot be assumed to lack ornamentality merely because the article of manufacture would seem to be primarily functional.
II. ESTABLISHING A PRIMA FACIE BASIS FOR REJECTIONS UNDER 35 U.S.C. 171
To properly reject a claimed design under 35 U.S.C. 171 on the basis of a lack of ornamentality, an examiner must make a prima facie showing that the claimed design lacks ornamentality and provide a sufficient evidentiary basis for factual assumptions relied upon in such showing. See In re Jung, 98 USPQ2d 1174, 1177 (Fed. Cir. 2011). See, e.g., In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), (“the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”).
The proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality is an evaluation of the appearance of the design itself. The examiner’s knowledge of
the art, a reply to a letter of inquiry, a brochure emphasizing the functional/mechanical features of the design, the specification of an analogous utility patent (the applicant’s or another inventor), or information provided in the specification may be used to supplement the analysis of the design. If a design is embodied in a specific mechanical article, the analysis that the design lacks ornamentality because its appearance is dictated by functional requirements should be supported by reference to utility patents or some other source of information about the function of the design. If the design is embodied in an article that has a more general use, such as a clip, the analysis and explanation as to why the design lacks ornamentality should be detailed and specific. The examiner’s contention that the specific appearance of the claimed design lacks ornamentality may be supported by In re Carletti et al., 328 F.2d 1020, 140 USPQ 653 (CCPA 1964) (a design to be patentable must be “created for the purpose of ornamenting” the article in which it is embodied.). The presence or lack of ornamentality must be made on a case by case basis.
Knowledge that the article would be hidden during its end use based on the examiner’s experience in a given art or information that may have been submitted in the application itself would not be considered prima facie evidence of the functional nature of the design. See Seiko Epson Corp v. Nu-Kote Int’l Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999). “Visibility during an article’s ‘normal use’ is not a statutory requirement of §171, but rather a guideline for courts to employ in determining whether the patented features are ‘ornamental’.” See Larson v. Classic Corp., 683 F. Supp. 1202, 7 USPQ2d 1747 (N.D. Ill. 1988). If there is sufficient evidence to show that a specific design “is clearly intended to be noticed during the process of sale and equally clearly intended to be completely hidden from view in the final use,” it is not necessary that a rejection be made under 35 U.S.C. 171. See In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990). The mere fact that an article would be hidden during its ultimate end use is not the basis for a rejection under 35 U.S.C. 171, but this information provides additional evidence to be used in support of the contention that the design lacks ornamentality. The only basis for rejecting a claim under 35 U.S.C. 171
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as lacking in ornamentality is an evaluation of the design itself in light of additional information, such as that identified above.
Examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality would be: (A) common knowledge in the art; (B) the appearance of the design itself; (C) the specification of a related utility patent; or (D) information provided in the specification.
A rejection under 35 U.S.C. 171 for lack of ornamentality must be supported by evidence and rejections should not be made in the absence of such evidence.
III. REJECTIONS MADE UNDER 35 U.S.C. 171
Rejections under 35 U.S.C. 171 for lack of ornamentality based on a proper prima facie showing fall into two categories:
(A) a design visible in its ultimate end use which is primarily functional based on the evidence of record; or
(B) a design not visible in its normal and intended use as evidence that its appearance is not a matter of concern. See In re Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949); In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990).
When the examiner has established a proper prima facie case of lack of ornamentality, “the burden of coming forward with evidence or argument shifts to the applicant.” See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A rejection under 35 U.S.C. 171 for lack of ornamentality may be overcome by providing evidence from the inventor himself or a representative of the company that commissioned the design that there was an intent to create a design for the “purpose of ornamenting.” See In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964). Attorney’s arguments are not a substitute for evidence. Once a proper prima facie case of lack of ornamentality is established by the examiner, it is incumbent upon applicant to come forth with countervailing evidence to rebut the rejection made by the examiner. See Ex parte Webb, 30 USPQ2d
1064, 1067-68 (Bd. Pat. App. & Int. 1993). Form paragraph 15.08 or 15.08.01, where appropriate, may be used to reject a claim under 35 U.S.C. 171 for lack of ornamentality.
¶ 15.08 Lack of Ornamentality (Article Visible in End Use)
The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that it lacks ornamentality. To be patentable, a design must be “created for the purpose of ornamenting” the article in which it is embodied. See In re Carletti, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964).
The following evidence establishes a prima facie case of a lack of ornamentality: [1]
Evidence that demonstrates the design is ornamental may be submitted from the applicant in the form of an affidavit or declaration under 37 CFR 1.132:
(a) stating the ornamental considerations which entered into the design of the article; and
(b) identifying what aspects of the design meet those considerations.
An affidavit or declaration under 37 CFR 1.132 may also be submitted from a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design.
Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Inter. 1993).
Examiner Note:
In bracket 1, insert source of evidence of lack of ornamentality, for example, a utility patent, a brochure, a response to a letter of inquiry, etc.
¶ 15.08.01 Lack of Ornamentality (Article Not Visible in its Normal and Intended Use)
The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that the design lacks ornamentality since it appears there is no period in the commercial life of applicant’s [1] when its ornamentality may be a matter of concern. In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990); In re Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949).
The following evidence establishes a prima facie case of lack of ornamentality: [2]
In order to overcome this rejection, two types of evidence are needed:
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(1) Evidence to demonstrate there is some period in the commercial life of the article embodying the claimed design when its ornamentality is a matter of concern. Such evidence may include a showing of a period in the life of the design when the ornamentality of the article may be a matter of concern to a purchaser during the process of sale. An example of this type of evidence is a sample of sales literature such as an advertisement or a catalog sheet which presents the appearance of the article as ornamental and not merely as a means of identification or instruction; and
(2) Evidence to demonstrate the design is ornamental. This type of evidence should demonstrate “thought of ornament” in the design and should be presented in the form of an affidavit or declaration under 37 CFR 1.132 from the applicant:
(a) stating the ornamental considerations which entered into the design of the article; and
(b) identifying what aspects of the design meet those considerations.
An affidavit or declaration under 37 CFR 1.132 may also be submitted from a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design.
Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. See Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Inter. 1993).
Examiner Note:
1. In bracket 1, insert the name of the article in which the design is embodied.
2. In bracket 2, insert source of evidence of the article’s design being of no concern, for example, an analysis of a corresponding utility patent, a brochure, a response to a letter of inquiry, etc.
IV. OVERCOMING A 35 U.S.C. 171 REJECTION BASED ON LACK OF ORNAMENTALITY
A rejection under 35 U.S.C. 171 based on lack of ornamentality may be overcome by the following:
(A) An affidavit or declaration under 37 CFR 1.132 submitted from the applicant or a representative of the company, which commissioned the design, explaining specifically and in depth, which features or area of the claimed design were created with:
(1) a concern for enhancing the saleable value or increasing the demand for the article. See Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), or
(2) a concern primarily for the esthetic appearance of the article;
(B) Advertisements which emphasize the ornamentality of the article embodying the claimed design may be submitted as evidence to rebut the rejection. See Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997);
(C) Evidence that the appearance of the design is ornamental may be shown by distinctness from the prior art as well as an attempt to develop or to maintain consumer recognition of the article embodying the design. See Seiko Epson Corp. v. Nu-Kote Int’l Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999);
(D) Evidence may be provided by a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design;
(E) When the rejection asserts that the design is purely dictated by functional considerations, evidence may be presented showing possible alternative designs which could have served the same function indicating that the appearance of the claimed design was not purely dictated by function. See L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 25 USPQ2d 1913 (Fed. Cir. 1993);
(F) When the rejection asserts no period in the commercial life of the article when its ornamentality may be a matter of concern, the applicant must establish that the “article’s design is a ‘matter of concern’ because of the nature of its visibility at some point between its manufacture or assembly and its ultimate use.” See In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990).
Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. See Ex parte Webb, 30 USPQ2d 1064, 1068 (Bd. Pat. App. & Inter. 1993).
V. EVALUATION OF EVIDENCE SUBMITTED TO OVERCOME A REJECTION UNDER 35 U.S.C. 171
In order to overcome a rejection of the claim under 35 U.S.C. 171 as lacking in ornamentality, applicant
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must provide evidence that he or she created the design claimed for the “purpose of ornamenting”. See In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964).
The mere display of the article embodying the design at trade shows or its inclusion in catalogs is insufficient to establish ornamentality. See Ex parte Webb, 30 USPQ2d 1064 (Bd. Pat. App. & Inter. 1993). There must be some clear and specific indication of the ornamentality of the design in this evidence for it to be given probative weight in overcoming the prima facie lack of ornamentality. See Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997).
The examiner must evaluate evidence submitted by the applicant in light of the design as a whole to decide if the claim is primarily ornamental. It is important to be aware that this determination is not based on the size or amount of the features identified as ornamental but rather on their influence on the overall appearance of the design.
In a rejection of a claim under 35 U.S.C. 171 in which some of the evidentiary basis for the rejection is that the design would be hidden during its end use, the applicant must establish that the “article’s design is a ‘matter of concern’ because of the nature of its visibility at some point between its manufacture or assembly and its ultimate use.” See
In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990). This concern may be shown by the submission of evidence that the appearance of the article was of concern during its period of commercial life by declarations from prospective/actual customers/users attesting that the ornamentality of the article was of concern to them. Unless applicant is directly involved with the sale of the design or works with users of the design, he or she cannot provide factual evidence as to the reasons for the purchase/selection of the article embodying the design. See MPEP § 716.03(b), citing In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
In ex parte proceedings before the Patent and Trademark Office, an applicant must show that the claimed features were responsible for the commercial success of an article if the evidence of nonobviousness is to be accorded substantial weight. See In re Huang, 100 F.3d 135, 140, 40 USPQ2d
1685, 1690 (Fed. Cir. 1996) (Inventor’s opinion as to the purchaser’s reason for buying the product is insufficient to demonstrate a nexus between the sales and the claimed invention.).
Once applicant has proven that there is a period of visibility during which the ornamentality of the design is a “matter of concern,” it is then necessary to determine whether the claimed design was primarily ornamental during that period. See Larson v. Classic Corp., 683 F. Supp. 1202, 7 USPQ2d 1747 (N. D. Ill. 1988). The fact that a design would be visible during its commercial life is not sufficient evidence that the design was “created for the purpose of ornamenting”. See In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964). Examiners should follow the standard for determining ornamentality as outlined above.
“The possibility of encasing a heretofore concealed design element in a transparent cover for no reason other than to avoid this rule cannot avoid the visibility [guideline]... , lest it become meaningless.” See Norco Products Inc. v. Mecca Development Inc., 617 F. Supp. 1079, 1081, 227 USPQ 724, 726 (D. Conn. 1985). Applicant cannot rely on mere possibilities to provide factual evidence of ornamentality for the claimed design.
The requirement that the design was created for the ‘purpose of ornamenting’ must be met with appropriate evidence concerning visibility for a rejection under 35 U.S.C. 171 to be overcome if the design would be hidden during its end use. See In re Webb, 916 F.2d 1553 (Fed. Cir. 1990).
1504.01(d) Simulation [R-08.2012]
35 U.S.C. 171 requires that a design to be patentable be “original.” Clearly, a design which simulates an existing object or person is not original as required by the statute. The Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), described a design as “the thing invented or produced, for which a patent is given.” “The arbitrary chance selection of a form of a now well known and celebrated building, to be applied to toys, inkstands, paper - weights, etc. does not, in my opinion, evince the slightest exercise of invention....”
Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159
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(Comm’r Pat. 1876). This logic was reinforced by the CCPA in In re Smith, 25 USPQ 359, 360, 1935 C.D. 565, 566 (CCPA 1935), which stated that “to take a natural form, in a natural pose, ... does not constitute invention” when affirming the rejection of a claim to a baby doll. This premise was also applied in In re Smith, 25 USPQ 360, 362, 1935 C.D. 573, 575 (CCPA 1935), which held that a “baby doll simulating the natural features...of a baby without embodying some grotesqueness or departure from the natural form” is not patentable.
Therefore, a claim directed to a design for an article which simulates a well known or naturally occurring object or person should be rejected under 35 U.S.C. 171 as nonstatutory subject matter in that the claimed design lacks originality. Form paragraph 15.08.02 should be used. However, when a claim is rejected on this basis, examiners should provide evidence, if possible, of the appearance of the object, person or naturally occurring form in question so that a comparison may be made to the claimed design. Form paragraph 15.08.03 should be used. It would also be appropriate, if the examiner has prior art which anticipates or renders the claim obvious, to reject the claim under either 35 U.S.C. 102 or 103(a) concurrently. See In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965).
¶ 15.08.02 Simulation (Entire Article)
The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that the design lacks originality. The design is merely simulating [1] which applicant himself did not invent. See In re Smith, 25 USPQ 359, 1935 C.D. 565 (CCPA 1935); In re Smith, 25 USPQ 360, 1935 C.D. 573 (CCPA 1935); and Bennage v. Phillippi, 1876 C.D. 135, 9 OG 1159.
Examiner Note:
1. In bracket 1, insert the name of the article or person being simulated, e.g., the White House, Marilyn Monroe, an animal which is not stylized or caricatured in any way, a rock or shell to be used as paperweight, etc.
2. This form paragraph should be followed by form paragraph 15.08.03 when evidence has been cited to show the article or person being simulated.
¶ 15.08.03 Explanation of evidence cited in support of simulation rejection
Applicant’s design has in no way departed from the natural appearance of [1]. This reference is not relied on in this rejection
but is supplied merely as representative of the usual or typical appearance of [2] in order that the claim may be compared to that which it is simulating.
Examiner Note:
1. In bracket 1, insert name of article or person being simulated and source (patent, publication, etc.).
2. In bracket 2, insert name of article or person being simulated.
1504.01(e) Offensive Subject Matter [R-07.2015]
Design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions, should be rejected as nonstatutory subject matter under 35 U.S.C. 171. See also MPEP § 608. Form paragraph 15.09.01 should be used.
¶ 15.09.01 Offensive Subject Matter
The disclosure, and therefore the claim in this application, is rejected as being offensive and therefore improper subject matter for design patent protection under 35 U.S.C. 171. Such subject matter does not meet the statutory requirements of 35 U.S.C. 171. Moreover, since 37 CFR 1.3 proscribes the presentation of papers which are lacking in decorum and courtesy, and this includes depictions of caricatures in the disclosure, drawings, and/or a claim which might reasonably be considered offensive, such subject matter as presented herein is deemed to be clearly contrary to 37 CFR 1.3. See MPEP § 608.
1504.02 Novelty [R-07.2015]
35 U.S.C. 102 Conditions for patentability; novelty.
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less
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before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b) or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
35 U.S.C. 102 (pre-AIA) Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless —
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
(e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or
(f) he did not himself invent the subject matter sought to be patented, or
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A claimed design may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is available as prior art. In design patent applications, the factual inquiry in determining anticipation over a prior art reference is the same as in utility patent applications. That is, the reference “‘must be identical in all material respects.’” Hupp v. Siroflex of America Inc., 122
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F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997). For anticipation to be found, the claimed design and the prior art design must be substantially the same. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d
1308, 1313, 59__ USPQ2d 1472 __, 1475__ (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)).
In International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239-40, 93 USPQ2d 1001, 1005 (Fed. Cir. 2009), the Federal Circuit held that the ordinary observer test is “the sole test for anticipation.” Under the ordinary observer test, which originated in the infringement context, “‘if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.’” Gorham, 81 U.S. at 528. An en banc panel of the Federal Circuit refined the ordinary observer test in Egyptian Goddess “by characterizing the ordinary observer as being ‘deemed to view the differences between the patented design and the accused product in the context of the prior art.’” Seaway, 589 F.3d at 1239-40, 93 USPQ2d at 1005, quoting Egyptian Goddess Inc. v. Swissa Inc., 543 F.3d 665, 676, 88 USPQ2d 1658, 1666-67 (Fed. Cir. 2008) (en banc). The court explained that “‘when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.’” Id.
The ordinary observer test requires consideration of the design as a whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008; Egyptian Goddess, 543 F.3d at 677, 88 USPQ2d __1667. In applying the ordinary observer test, “determine whether ‘the deception that arises is a result of the similarities in the overall design not of similarities in ornamental features in isolation.’” See Richardson v. Stanley Works Inc., 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 1371 [78 USPQ2d 1147, 1151] (Fed. Cir. 2006) (holding that the overall infringement test is not to be converted to an element-by-element comparison when factoring out the functional aspects of various design elements).
“The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another.” Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008. “Just as minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement, so too minor differences cannot prevent a finding of anticipation.” Id. (internal quotation marks omitted).
Anticipation does not require that the claimed design and the prior art be from analogous arts. In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956). “It is true that the use to which an article is to be put has no bearing on its patentability as a design and that if the prior art discloses any article of substantially the same appearance as that of an applicant, it is immaterial what the use of such article is. Accordingly, so far as anticipation by a single prior art disclosure is concerned, there can be no question as to nonanalogous art in design cases.” Id. (internal quotation marks omitted).
When a claim is rejected under 35 U.S.C. 102 as being unpatentable over prior art, those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. See In re Cornwall, 230 F.2d 447, 109 USPQ 57 (CCPA 1956); Jones v. Progress Ind. Inc., 119 USPQ 92 (D. R.I. 1958). Further, in a rejection of a claim under 35 U.S.C. 102, mere differences in functional considerations do not negate a finding of anticipation when determining design patentability. See Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986).
It is not necessary for the examiner to cite or apply prior art to show that functional and/or hidden features are old in the art as long as the examiner has properly relied on evidence to support the prima facie lack of ornamentality of these individual features. If applicant wishes to rely on functional or hidden features as a basis for patentability, the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).
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In evaluating a statutory bar based on pre-AIA 35 U.S.C. 102(b), the experimental use exception to a statutory bar for public use or sale (see MPEP § 2133.03(e)) does not usually apply for design patents. See In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988). However, Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1200, 31 USPQ2d 1321, 1326 (Fed. Cir. 1994) held that “experimentation directed to functional features of a product also containing an ornamental design may negate what otherwise would be considered a public use within the meaning of section 102(b).” See MPEP § 2133.03(e)(6).
Registration of a design abroad is considered to be equivalent to patenting for priority purposes under 35 U.S.C. 119(a)-(d) and for prior art purposes pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published. (See Ex parte Lancaster, 151 USPQ 713 (Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528 (Bd.App. 1966); Appeal No. 239-48, Decided April 30, 1965, 151 USPQ 711, (Bd. App. 1965); Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd. App. 1966). The basis of this
practice is that if the foreign applicant has received the protection offered in the foreign country, no matter what the protection is called (“patent,” “Design Registration,” etc.), if the United States application is timely filed, a claim for priority will vest. If, on the other hand, the U.S. application is not timely filed, a statutory bar arises under pre-AIA 35 U.S.C. 102(d) as modified by 35 U.S.C. 172. In order for the filing to be timely for priority purposes and to avoid possible statutory bars, the U.S. design patent application must be made within 6 months of the foreign filing. See also MPEP § 1504.10.
The laws of each foreign country vary in one or more respects.
The following table sets forth the dates on which design rights can be enforced in a foreign country (INID Code (24)) and thus, are also useable in a pre-AIA 35 U.S.C. 102(d) rejection as modified by 35 U.S.C. 172. It should be noted that in many countries the date of registration or grant is the filing date.
CommentDate(s) Which Can Also Be Used
for 35 U.S.C. 102(d) Purposes1
(INID Code (24))
Country or Organization
Protection starts on the date of publication of the design in the official gazette
AT-Austria
Date of registration or grant which is the filing date
AU-Australia
Date of registration or grant which is the filing date
BG-Bulgaria
Date on which corresponding application became complete and
BX-Benelux (Belgium, Luxembourg, and the Netherlands)
regular according to the criteria set by the law Date of registration or grantCA-Canada
Minimum requirements: deposit application, object, and deposit fee
Date of registration or grant which is the filing date
CH-Switzerland
Date of registration or grantCL-Chile Date of registration or grant which is the filing date
CU-Cuba
Date of registration or grant which is the filing date
CZ-Czech Republic
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CommentDate(s) Which Can Also Be Used
for 35 U.S.C. 102(d) Purposes1
(INID Code (24))
Country or Organization
The industrial design right can be enforced by a court from the date of
Date of registration or grantDE-Germany
registration although it is in force earlier (as from the date of filing—as defined by law).
Date of registration or grant which is the filing date
DK-Denmark
Date of registration or grant which is the filing date
EG-Egypt
Date of registration or grantES-Spain Date of registration or grant which is the filing date
FI-Finland
Date of registration or grant which is the filing date
FR-France
Protection arises automatically under the Design Right provision when the
Date of registration or grant which is the filing date
GB-United Kingdom
design is created. Proof of the date of the design creation needs to be kept in case the design right is challenged. The protection available to designs can be enforced in the courts following the date of grant of the Certificate of Registration as of the date of registration which stems from the date of first filing of the design in the UK or, if a priority is claimed under the Convention, as another country. With retroactive effect as from the filing date
Date of registration or grantHU-Hungary
Date of registration or grantJP-Japan Date of registration or grantKR-Republic of Korea Date of registration or grant which is the filing date
MA-Morocco
Date of prior disclosure declared on deposit
Date of registration or grant which is the filing date
MC-Monaco
Date of registration or grant which is the filing date
NO-Norway
Date of registration or grant which is the filing date
OA-African Intellectual Property Organization (OAPI) (Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Cote d`Ivoire, Gabon, Guinea, Mali, Mauritania, Niger, Senegal, and Togo)
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CommentDate(s) Which Can Also Be Used
for 35 U.S.C. 102(d) Purposes1
(INID Code (24))
Country or Organization
Date of registration or grantPT-Portugal Date of registration or grant which is the filing date
RO-Romania
Date of registration or grant which is the filing date
RU-Russian Federation
Date of registration or grantSE-Sweden Date of registration or grant which is the filing date
TN-Tunisia
Date of registration or grant which is the filing date
TT-Trinidad and Tobago
Subject to Rule 14.2 of the Regulations (on defects), the
WO-World Intellectual Property Organization (WIPO)
International Bureau enters the international deposit in the International Register on the date on which it has in its possession the application together with the items required. Reproductions, samples, or models pursuant to Rule 12, and the prescribed fees.
1Based on information taken from the “Survey of Filing Procedures and Filing Requirements, as well as of Examination Methods and Publication Procedures, Relating to Industrial Designs” as adopted by the PCIPI Executive Coordination Committee of the World Intellectual Property Organization (WIPO) at its fifteenth session on November 25, 1994.
Rejections under pre-AIA 35 U.S.C. 102(d) as modified by 35 U.S.C. 172 should only be made when the examiner knows that the application for foreign registration/patent has actually issued before the U. S. filing date based on an application filed more than six (6) months prior to filing the application in the United States. If the grant of a registration/patent based on the foreign application is not evident from the record of the U. S. application or from information found within the preceding charts, then the statement below should be included in the first action on the merits of the application:
¶ 15.03.01.fti Foreign Filing More Than 6 Months Before U.S. Filing, Application Filed Before March 16, 2013
Acknowledgment is made of the [1] application identified in the oath or declaration or application data sheet which was filed more than six months prior to the filing date of the present application. Applicant is reminded that if the [2] application matured into a form of patent protection before the filing date of the present application it would constitute a statutory bar to
the issuance of a design patent in the United States under pre-AIA 35 U.S.C. 102(d) in view of pre-AIA 35 U.S.C. 172.
Examiner Note:
In brackets 1 and 2, insert the name of country where application was filed.
Form paragraphs for use in rejections under 35 U.S.C. 102 and pre-AIA 35 U.S.C. 102 are set forth below.
¶ 15.10.aia Application Examined UnderAIA First Inventor to File Provisions
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA.
Examiner Note:
This form paragraph should be used in any application subject to the first inventor to file provisions of the AIA.
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¶ 15.10.fti Application Examined Under First Inventor to File Provisions
The present application, filed on or after March 16, 2013, is being examined under the pre-AIA first to invent provisions.
Examiner Note:
This form paragraph should be used in any application filed on or after March 16, 2013, that is subject to the pre-AIA prior art provisions.
¶ 15.10.15 Notice re prior art available under both pre-AIA and AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Examiner Note:
1. This form paragraph must be used in all Office Actions when a prior art rejection is made in an application with an actual filing date on or after March 16, 2013 that claims priority to, or the benefit of, an application filed before March 16, 2013.
2. This form paragraph should only be used ONCE in an Office action.
¶ 15.11.aia 35 U.S.C. 102(a)(1) Rejection
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by [1] because the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Examiner Note:
1. In bracket 1, identify the reference applied against the claimed design.
2. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
¶ 15.11.fti Pre-AIA 35 U.S.C. 102(a) Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by [1] because the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country before the invention thereof by the applicant for patent.
Examiner Note:
1. In bracket 1, identify the reference applied against the claimed design.
2. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application
filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.12.fti Pre-AIA 35 U.S.C. 102(b) Rejection
The claim is rejected under 35 U.S.C. 102(b) as being anticipated by [1] because the invention was patented or described in a printed publication in this or a foreign country, or in public use or on sale in this country more than one (1) year prior to the application for patent in the United States.
Examiner Note:
1. In bracket 1, identify the reference applied against the claimed design.
2. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.13.fti Pre-AIA 35 U.S.C. 102(c) Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102(c) because the invention has been abandoned.
¶ 15.14.fti Pre-AIA 35 U.S.C. 102(d)/35 U.S.C. 172 Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102(d), as modified by pre-AIA 35 U.S.C. 172, as being anticipated by [1] because the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate by the applicant, or his/her legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than six (6) months before the filing of the application in the United States.
Examiner Note:
In bracket 1, identify the reference applied against the claimed design.
¶ 15.15.aia 35 U.S.C. 102(a)(2) Rejection
The claim is rejected under 35 U.S.C. 102(a)(2) as being anticipated by [1] because the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Examiner Note:
1. In bracket 1, identify the reference applied against the claimed design.
2. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
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§ 1504.02DESIGN PATENTS
3. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the AIA.
¶ 15.15.fti Pre-AIA 135 U.S.C. 102(e) Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by [1] because the invention was described in a patented or published application for patent by another filed in the United States before the invention thereof by the applicant for patent.
Examiner Note:
1. In bracket 1, identify the reference applied against the claimed design.
2. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.16.fti Pre-AIA 35 U.S.C. 102(f) Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102 because applicant did not himself invent the subject matter sought to be patented.
¶ 15.17.aia Pre-AIA 35 U.S.C. 102(g) Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102 because, before the applicant’s invention thereof, the invention was made in this country by another who had not abandoned, suppressed or concealed it.
A rejection based on this statutory basis can be made in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013, or (2) a specific reference under 35 U.S.C. 120, 35 U.S.C. 121, or 35 U.S.C. 365(c) to any patent or application that contains or contained at any time such a claim.
Examiner Note:
For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
¶ 15.17.fti Pre-AIA 35 U.S.C. 102(g) Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102(g) because, before the applicant’s invention thereof, the invention was made in this country by another who had not abandoned, suppressed or concealed it.
Examiner Note:
For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed
before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.fti and 15.10.15.
¶ 15.09.02.aia Statement of Statutory Bases, 35 U.S.C. 171 and 35 U.S.C. 115-Improper Inventorship
The following is a quotation of 35 U.S.C. 171:
(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
(c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.
35 U.S.C. 115(a) reads as follows (in part):
An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.
The present application sets forth incorrect inventorship because [1].
The claim is rejected under 35 U.S.C. 171 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.
Examiner Note:
In bracket 1, insert the basis for concluding that the inventorship is incorrect.
¶ 15.09.03.aia Statement of Statutory Basis, 35 U.S.C. 115-Improper Inventorship
35 U.S.C. 115(a) reads as follows (in part):
An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.
The present application sets forth incorrect inventorship because [1].
The claim is rejected under 35 U.S.C. 171 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.
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Examiner Note:
1. This form paragraph is to be used ONLY when a rejection under 35 U.S.C. 171 on another basis has been made and the statutory text thereof is already present.
2. This form paragraph must be preceded by form paragraph 15.07.01 for a rejection based on improper inventorship.
3. In bracket 1, insert an explanation of the supporting evidence establishing that an improper inventor is named.
¶ 15.24.05.fti Identical Claim: Common Assignee
The claim is directed to the same invention as that of the claim of commonly assigned copending Application No. [1]. The issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) of this single invention must be resolved. Since the U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP § 2302), the assignee is required to state which entity is the prior inventor of the conflicting subject matter. A terminal disclaimer has no effect in this situation since the basis for refusing more than one patent is priority of invention under pre-AIA 35 U.S.C.102(f) or (g) and not an extension of monopoly. Failure to comply with this requirement will result in a holding of abandonment of this application.
The following form paragraph should be included after the form paragraph setting forth the rejection under 35 U.S.C. 102 (a), (b) , (d) or (e) to provide an explanation of the applied reference.
¶ 15.15.01.aia Explanation of rejection under 35 U.S.C. 102(a)(1) or 102(a)(2)
The appearance of [1] is substantially the same as that of the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
Examiner Note:
1. This paragraph should be included after paragraph 15.11.aia or 15.15.aia to explain the basis of the rejection.
2. In bracket 1, identify the reference applied against the claimed design.
¶ 15.15.01.fti Explanation of rejection under Pre-AIA 35 U.S.C. 102(a), (b), (d), or (e)
The appearance of [1] is substantially the same as that of the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
Examiner Note:
1. This paragraph should be included after paragraph 15.11.fti, 15.12.fti, 15.14.fti or 15.15.fti to explain the basis of the rejection.
2. In bracket 1, identify the reference applied against the claimed design.
3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
The following form paragraphs may be used to reject a claim under pre-AIA 35 U.S.C. 102(e) over an application or patent having an earlier effective U.S. filing date with a common inventor and/or assignee, or that discloses but does not claim the design.
¶ 15.15.02.aia 35 U.S.C. 102(a)(2) Provisional rejection - design disclosed in another application with common inventor and/or assignee
The claim is provisionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by copending Application No. [1] which has a common [2] with the instant application.
Because the copending application names another inventor and has an earlier effective filing date, it would constitute prior art under 35 U.S.C. 102(a)(2), if published under 35 U.S.C. 122(b) or patented. This provisional rejection under 35 U.S.C. 102(a)(2) is based upon a presumption of future publication or patenting of the copending application.
This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the design in the reference was obtained directly or indirectly from the inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph is used to provisionally reject over a copending application (utility or design) with an earlier filing date that discloses the claimed invention which has not been patented or published under 35 U.S.C. 122. The copending
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application must have either a common assignee or at least one common inventor.
2. In bracket 2, insert inventor or assignee.
3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
4. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the AIA.
¶ 15.15.02.fti Provisional Pre-AIA 35 U.S.C. 102(e) rejection - design disclosed but not claimed in another application with common inventor and/or assignee
The claim is provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by copending Application No. [1] which has a common [2] with the instant application.
Based upon the different inventive entity and the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e), if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future publication or patenting of the copending application.
Since the design claimed in the present application is not the same invention claimed in the [3] application, the examiner suggests overcoming this provisional rejection in one of the following ways: (A) a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “by another;” (B) a showing of a date of invention for the instant application prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a); (C) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; or (D) perfecting the benefit claim under 35 U.S.C. 120 by adding a specific reference to the prior filed application in compliance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph is used to provisionally reject over a copending application (utility or design) with an earlier filing date that discloses (but does not claim) the claimed invention which has not been patented or published under 35 U.S.C. 122.
The copending application must have either a common assignee or at least one common inventor.
2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) (form paragraph 7.12.fti) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) (form paragraph7.12.01.fti) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA or pre-AIPA 35 U.S.C. 102(e) date.
3. In bracket 2, insert inventor or assignee.
4. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.15.03.fti Pre-AIA 35 U.S.C. 102(e) provisional rejection - design claimed in an earlier-filed design patent application with common inventor and/or assignee
The claim is provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by the claim in copending Design Patent Application No. [1] which has a common [2] with the instant application.
Based upon the different inventive entity and the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e), if patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future patenting of the copending application. The rejection may be overcome by abandoning the earlier-filed copending application.
Examiner Note:
1. In bracket 2, insert inventor or assignee.
2. This form paragraph must be preceded by form paragraph 15.24.05.fti to notify the applicant that the question of patentability under pre-AIA 35 U.S.C. 102(f)/(g) also exists.
3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.15.04.aia 35 U.S.C. 102(a)(2) rejection - design disclosed in a patent
The claim is rejected under 35 U.S.C. 102(a)(2) as being anticipated by patent [1].
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Because the patent names another inventor and has an earlier effective filing date, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the disclosure in the reference was obtained directly or indirectly from the inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is disclosed in the drawings of an earlier-filed design or utility patent. When the design claimed in the application being examined is disclosed in the drawings of an earlier-filed design patent, it would most often be in the form of subcombination subject matter, (part or portion of an article), that is patentably distinct from the claim for the design embodied by the combination or whole article. It may also be unclaimed subject matter depicted in broken lines in the earlier-filed application.
2. In bracket 1, insert number of patent.
3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
¶ 15.15.04.fti Pre-AIA 35 U.S.C. 102(e) rejection - design disclosed but not claimed in a patent
The claim is rejected under pre-AIA 35 U.S.C. 102 as being anticipated by patent [1].
Based upon the different inventive entity and the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102.
Since the design claimed in the present application is not the same invention claimed in patent [2], the examiner suggests overcoming this rejection in one of the following ways: (A) a showing under 37 CFR 1.132 that the design in the reference
was derived from the designer of this application and is thus not the invention “by another;” (B) a showing of a date of invention for the instant application prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a); (C) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; or (D) perfecting the benefit claim 35 U.S.C. 120 by adding a specific reference to the prior filed application in compliance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is disclosed in the drawings of an earlier-filed design or utility patent but is not claimed therein. When the design claimed in the application being examined is disclosed in the drawings of an earlier-filed design patent, it would most often be in the form of subcombination subject matter, (part or portion of an article), that is patentably distinct from the claim for the design embodied by the combination or whole article. It may also be unclaimed subject matter depicted in broken lines in the earlier-filed application.
2. In brackets 1 and 2, insert number of patent.
3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
The following form paragraphs may be used in a second or subsequent action, where appropriate.
¶ 15.38 Rejection Maintained
The arguments presented have been carefully considered, but are not persuasive that the rejection of the claim under [1] should be withdrawn.
Examiner Note:
In bracket 1, insert basis of rejection.
¶ 15.40.01 Final Rejection Under Other Statutory Provisions
The claim is FINALLY REJECTED under [1] as [2].
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Examiner Note:
1. In bracket 1, insert statutory basis.
2. In bracket 2, insert reasons for rejection.
3. See paragraphs in MPEP Chapter 700, for “Action is Final” and “Advisory after Final” paragraphs.
1504.03 Nonobviousness [R-07.2015]
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 103 (pre-AIA) for the law otherwise applicable.]
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
It should be noted that for ease of discussion purposes, any reference to 35 U.S.C. 103 in this section refers to both AIA and pre-AIA 35 U.S.C. 103.
A claimed design that meets the test of novelty must additionally be evaluated for nonobviousness under 35 U.S.C. 103.
I. GATHERING THE FACTS
The basic factual inquiries guiding the evaluation of obviousness, as outlined by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), are applicable to the evaluation of design patentability:
(A) Determining the scope and content of the prior art;
(B) Ascertaining the differences between the claimed invention and the prior art;
(C) Resolving the level of ordinary skill in the art; and
(D) Evaluating any objective evidence of nonobviousness (i.e., so-called “secondary considerations”).
A. Scope of the Prior Art
The scope of the relevant prior art for purposes of evaluating obviousness under 35 U.S.C. 103 extends to all “analogous arts.”
While the determination of whether arts are analogous is basically the same for both design and utility inventions (see MPEP § 904.01(c) and § 2141.01(a)), In re Glavas, 230 F.2d 447, 450 109 USPQ 50, 52 (CCPA 1956) provides specific guidance for evaluating analogous arts in the design context, which should be used to supplement the general requirements for analogous art as follows:
The question in design cases is not whether the references sought to be combined are in analogous arts in the mechanical sense, but whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other. Thus, if the problem is merely one of giving an attractive appearance to a surface, it is immaterial whether the surface in question is that of wall paper, an oven door, or a piece of crockery. . . . On the other hand, when the proposed combination of references involves material modifications of the basic form of one article in view of another, the nature of the article involved is a definite factor in determining whether the proposed change involves [patentable] invention.
Therefore, where the differences between the claimed design and the prior art are limited to the application of ornamentation to the surface of an article, any prior art reference which discloses substantially the same surface ornamentation would be considered analogous art. Where the differences are in the shape or form of the article, the nature of the articles involved must also be considered.
B. Differences Between the Prior Art and the Claimed Design
In determining patentability under 35 U.S.C. 103, it is the overall appearance of the design that must be considered. See In re Leslie, 547 F.2d 116, 192
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USPQ 427 (CCPA 1977). The mere fact that there are differences between a design and the prior art is not alone sufficient to justify patentability. See In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
All differences between the claimed design and the closest prior art reference should be identified in any rejection of the design claim under 35 U.S.C. 103. If any differences are considered de minimis or inconsequential from a design viewpoint, the rejection should so state.
C. Level of Ordinary Skill in the Art
In order to be unpatentable, 35 U.S.C. 103 requires that an invention must have been obvious to a designer having “ordinary skill in the art” to which the subject matter sought to be patented pertains. The “level of ordinary skill in the art” from which obviousness of a design claim must be evaluated under 35 U.S.C. 103 has been held by the courts to be the perspective of the “designer of . . . articles of the types presented.” See In re Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 784 (CCPA 1981); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982).
D. Objective Evidence of Nonobviousness (Secondary Considerations)
Secondary considerations, such as commercial success and copying of the design by others, are relevant to the evaluation of obviousness of a design claim. Evidence of nonobviousness may be present at the time a prima facie case of obviousness is evaluated or it may be presented in rebuttal of a prior obviousness rejection. See MRC Innovations, Inc. v. Hunter Mfg., LLP, 110 USPQ2d 1235, 1242-43 (Fed. Cir. 2014); Crocs Inc. v. International Trade Commission, 93 USPQ2d 1777, 1788-89 (Fed. Cir. 2010).
II. PRIMA FACIE OBVIOUSNESS
Once the factual inquiries mandated under Graham v. John Deere Co., 383 U. S. 1, 148 USPQ 459 (1966), have been made, the examiner must determine whether they support a conclusion of prima facie obviousness. To establish prima facie
obviousness, all the claim limitations must be taught or suggested by the prior art.
In determining prima facie obviousness, the proper standard is whether the design would have been obvious to a designer of ordinary skill with the claimed type of article. See In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).
As a whole, a design must be compared with something in existence, and not something brought into existence by selecting and combining features from prior art references. See In re Jennings, 182 F.2d 207, 86 USPQ 68 (CCPA 1950). The “something in existence” referred to in Jennings has been defined as “...a reference... the design characteristics of which are basically the same as the claimed design....” See In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982) (the primary reference did “...not give the same visual impression...” as the design claimed but had a “...different overall appearance and aesthetic appeal...”.) Hence, it is clear that “design characteristics” means overall visual appearance. This definition of “design characteristics” is reinforced in the decision of In re Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993), and is supported by the earlier decisions of In re Yardley, 493 F.2d 1389, 181 USPQ 331, 334
(CCPA 1974) and In re Leslie, 547 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic
consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. See In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103 can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.
A rejection under 35 U.S.C. 103 based on a single non-analogous reference would not be proper. The reason is that under 35 U.S.C. 103, a designer of ordinary skill would not be charged with knowledge
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of prior art that is not analogous to the claimed design.
Examiners are advised that differences between the claimed design and a primary reference may be held to be minor in nature and unrelated to the overall aesthetic appearance of the design with or without the support of secondary references. See In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). If such differences are shown by secondary references, they should be applied so as to leave no doubt that those differences would have been obvious to a designer of ordinary skill in the art. In re Sapp, 324 F.2d 1021, 139 USPQ 522 (CCPA 1963).
When a claim is rejected under 35 U.S.C. 103 as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. “[A] design claim to be patentable must also be ornamental; and functional features or forms cannot be relied upon to support its patentability.” See Jones v. Progress, Ind. Inc., 119 USPQ 92, 93 (D. R.I. 1958). “It is well settled that patentability of a design cannot be based on elements which are concealed in the normal use of the device to which the design is applied.” See In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA
1961). It is not necessary that prior art be relied upon in a rejection under 35 U.S.C. 103 to show similar features to be functional and/or hidden in the art. However, examiners must provide evidence to support the prima facie functionality of such features. Furthermore, hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).
A. Combining Prior Art References
A rejection under 35 U.S.C. 103 would be appropriate if a designer of ordinary skill would have been motivated to modify a primary reference by deleting features thereof or by interchanging with
or adding features from pertinent secondary references. In order for secondary references to be considered, there must be some suggestion in the prior art to modify the basic design with features from the secondary references. See In re Borden, 90 F.3d 1570, 1572, 39 USPQ2d 1524, 1526 (Fed. Cir. 1996). The long-standing test for properly combining references has been “...whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” See In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).
The prohibition against destroying the function of the design is inherent in the logic behind combining references to render a claimed invention obvious under 35 U.S.C. 103(a). If the proposed combination of the references so alters the primary reference that its broad function can no longer be carried out, the combination of the prior art would not have been obvious to a designer of ordinary skill in the art. It is permissible to modify the primary reference to the extent that the specific function of the article may be affected while the broad function is not affected. For example, a primary reference to a cabinet design claimed as airtight could be modified to no longer be airtight so long as its function as a cabinet would not be impaired.
1. Analogous Art
When a modification to a primary reference involves a change in configuration, both the primary and secondary references must be from analogous arts. See In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).
Analogous art can be more broadly interpreted when applied to a claim that is directed to a design with a portion simulating a well known or naturally occurring object or person. The simulative nature of that portion of the design is prima facie evidence that art which simulates that portion would be within the level of ordinary skill under 35 U.S.C. 103.
2. Nonanalogous Art
When modifying the surface of a primary reference so as to provide it with an attractive appearance, it is immaterial whether the secondary reference is
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analogous art, since the modification does not involve a change in configuration or structure and would not have destroyed the characteristics (appearance and function) of the primary reference. See In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).
III. REBUTTAL OF THE PRIMA FACIE CASE
Once a prima facie case of obviousness has been established, the burden shifts to the applicant to rebut it, if possible, with objective evidence of nonobviousness. Examples of secondary considerations are commercial success, expert testimony and copying of the design by others. Any objective evidence of nonobviousness or rebuttal evidence submitted by applicant, including affidavits or declarations under 37 CFR 1.132, must be considered by examiners in determining patentability under 35 U.S.C. 103.
When evidence of commercial success is submitted, examiners must evaluate it to determine whether there is objective evidence of success, and whether the success can be attributed to the ornamental design. See Litton System, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1984); In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). An affidavit or declaration under 37 CFR 1.132 has minimal evidentiary value on the issue of commercial success if there is no nexus or connection between the sales of the article in which the design is embodied and the ornamental features of the design. See Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988).
Submission of expert testimony must establish the professional credentials of the person signing the affidavit or declaration, and should not express an opinion on the ultimate legal issue of obviousness since this conclusion is one of law. See Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988); Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985).
With regard to evidence submitted showing that competitors in the marketplace are copying the design, more than the mere fact of copying is necessary to make that action significant because
copying may be attributable to other factors such as lack of concern for patent property or indifference with regard to the patentee’s ability to enforce the patent. See Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985).
“A prima facie case of obviousness can be rebutted if the applicant...can show that the art in any material respect ‘taught away’ from the claimed invention...A reference may be said to teach away when a person of ordinary skill, upon reading the reference...would be led in a direction divergent from the path that was taken by the applicant.” See In re Haruna, 249 F.3d 1327, 58USPQ2d 1517 (Fed. Cir. 2001).
For additional information regarding the issue of objective evidence of nonobviousness, attention is directed to MPEP § 716 through § 716.06.
The following form paragraph may be used in an obviousness rejection under 35 U.S.C. 103, where appropriate.
¶ 15.18.aia 35 U.S.C. 103 Rejection (Single Reference)
The claim is rejected under 35 U.S.C. 103 as being unpatentable over [1]. Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
Examiner Note:
For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
¶ 15.18.fti Pre-AIA 35 U.S.C. 103(a) Rejection (Single Reference)
The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [1]. Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
Examiner Note:
1. In bracket 1, insert the reference citation.
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2. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.70.aia Preface, 35 U.S.C. 103 Rejection
It would have been obvious to a designer of ordinary skill not later than the effective filing date of the present claimed invention to [1].
Examiner Note:
Insert explanation of the use of the reference applied in bracket 1.
¶ 15.70.fti Preface, Pre-AIA 35 U.S.C. 103(a) Rejection
It would have been obvious to a designer of ordinary skill in the art at the time the invention was made to [1].
Examiner Note:
Insert explanation of the use of the reference applied in bracket 1.
¶ 15.67 Rationale for 35 U.S.C. 103 Rejection (Single Reference)
It is well settled that it is unobviousness in the overall appearance of the claimed design, when compared with the prior art, rather than minute details or small variations in design as appears to be the case here, that constitutes the test of design patentability. See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
¶ 15.19.aia 35 U.S.C. 103 Rejection (Multiple Reference)
The claim is rejected under 35 U.S.C. 103 as being unpatentable over [1] in view of [2].
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
Examiner Note:
For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.aia and 15.10.15.
¶ 15.19.fti Pre-AIA 35 U.S.C. 103(a) Rejection (Multiple References)
The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [1] in view of [2].
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer of ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
Examiner Note:
For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.68 Rationale for 35 U.S.C. 103 Rejection (Multiple References)
This modification of the primary reference in light of the secondary reference is proper because the applied references are so related that the appearance of features shown in one would suggest the application of those features to the other. See In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982), and In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956). Further, it is noted that case law has held that a designer skilled in the art is charged with knowledge of the related art; therefore, the combination of old elements, herein, would have been well within the level of ordinary skill. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).
The following form paragraphs may be used when making a rejection under pre-AIA 35 U.S.C. 103(a), where the reference application or patent is prior art under pre-AIA 35 U.S.C. 102(e).
¶ 15.19.02.aia Preface 35 U.S.C. 102(a)(2)/103 rejection - Different inventors, common assignee, obvious designs, no evidence of common ownership not later than effective filing date of claimed design
The claim is directed to a design not patentably distinct from the design of commonly assigned [1]. Specifically, the claimed design is different from the one in [2] in that [3]. These differences are considered obvious and do not patentably distinguish the overall appearance of the claimed design over the design in [4].
The commonly assigned [5], discussed above, names another inventor and was effectively filed before the present application. Therefore, it qualifies as prior art under 35 U.S.C. 102(a)(2) and would form the basis for a rejection of the claimed design in the present application under 35 U.S.C. 103 if the claimed design and the designed disclosed were not commonly owned not later than the effective filing date of the claimed design under examination.
This rejection under 35 U.S.C. 102(a)(2)/103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the design in the
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reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the design disclosed and the claimed design, not later than the effective filing date of the claimed design, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Examiner Note:
1. An obviousness double patenting rejection may also be included in the action.
2. In brackets 1, 2, 4 and 5, insert "patent" and number, or "copending application" and serial number.
3. In bracket 3, identify differences between design claimed in present application and that claimed in earlier-filed patent or copending application.
4. This form paragraph should only be used ONCE in an Office action.
5. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
¶ 15.19.02.fti Preface pre-AIA 35 U.S.C. 102(e)/103(a) rejection - Different inventors, common assignee, obvious designs, no evidence of common ownership at time later design was made
The claim is directed to a design not patentably distinct from the design of commonly assigned [1]. Specifically, the claimed design is different from the one in [2] in that [3]. These differences are considered obvious and do not patentably distinguish the overall appearance of the claimed design over the design in [4].
The commonly assigned [5], discussed above, has a different inventive entity from the present application. Therefore, it qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) and forms the basis for a rejection of the claim in the present application under pre-AIA 35 U.S.C. 103(a) if the conflicting design claims were not commonly owned at the time the design in this application was made. In order to resolve this issue, the applicant, assignee or attorney of record can state that the conflicting designs were commonly owned at the time the design in this application was made, or the assignee can name the prior inventor of the conflicting subject matter.
A showing that the designs were commonly owned at the time the design in this application was made will overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under pre-AIA 35 U.S.C. 102(f) or 35 U.S.C. 102(g), or pre-AIA 35 U.S.C. 102(e) for applications filed on or after November 29, 1999.
Examiner Note:
1. This form paragraph should be used when the application being examined is commonly assigned with a conflicting application or patent, but there is no indication that they were commonly assigned at the time the invention was actually made.
2. If the conflicting claim is in a patent with an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e)/35 U.S.C. 103(a) should be made.
3. If the conflicting claim is in a commonly assigned, copending application with an earlier filing date, a provisional rejection under pre-AIA 35 U.S.C. 102(e)/35 U.S.C. 103(a) should be made.
4. An obviousness double patenting rejection may also be included in the action.
5. In brackets 1, 2, 4 and 5, insert patent and number, or copending application and serial number.
6. In bracket 3, identify differences between design claimed in present application and that claimed in earlier filed patent or copending application.
7. This form paragraph should only be used ONCE in an Office action.
8. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
9. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.03.aia 35 U.S.C. 102(a)(2)/103 Provisional Rejection - design disclosed in another application with common inventor and/or assignee
The claim is provisionally rejected under 35 U.S.C. 103 as being obvious over copending Application No. [1] which has a
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common [2] with the instant application. Because the copending application names another inventor and has an earlier effective filing date, it would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122(b) or patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption of future publication or patenting of the conflicting application.
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
[3]
This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the design in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.
2. In brackets 1 and 4 insert serial number of copending application.
3. In bracket 2, insert inventor or assignee.
4. In bracket 3, provide explanation of obviousness including differences.
5. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.03.fti Provisional Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design disclosed but not claimed in another application with common inventor and/or assignee
The claim is provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over copending Application No. [1] which has a common [2] with the instant application. Based upon the different inventive entity and the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future publication or patenting of the conflicting application.
Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
[3]
Since the design claimed in the present application is not the same invention claimed in the [4] application, this provisional rejection may be overcome by a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “by another,” or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a). For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.
2. In brackets 1 and 4 insert serial number of copending application.
3. In bracket 2, insert inventor or assignee.
4. In bracket 3, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70.fti and 15.67 or 15.68.
5. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an
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international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102 only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120 , 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
6. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.04.fti Pre-AIA 35 U.S.C. 102(e)/103(a) Provisional Rejection - design claimed in an earlier-filed design patent application with common inventor and/or assignee
The claim is provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over the claim in copending Design Patent Application No. [1] which has a common [2] with the instant application. Based upon the different inventive entity and the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e) if patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future patenting of the conflicting application.
Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
[3]
Since the design claimed in the present application is not patentably distinct from the design claimed in the [4] application, this provisional rejection may be overcome by merging the two applications into a single continuation-in-part and abandoning the separate parent applications. For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in an earlier-filed copending application.
2. A provisional obviousness-type double patenting rejection must also be included in the action.
3. In brackets 1 and 4, insert serial number of copending application.
4. In bracket 2, insert inventor or assignee.
5. In bracket 3, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70.fti and 15.67 or 15.68.
6. This form paragraph must be preceded by form paragraph 15.19.02.fti.
7. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.05.aia 35 U.S.C. 102(a)(2)/103 rejection - design disclosed, no common inventors or common assignees
The claim is rejected under 35 U.S.C. 103 as being obvious over [1].
Because the upon the reference names another inventor and has an earlier effective filing date, it constitutes prior art under 35 U.S.C. 102(a)(2).
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
[2]
This rejection under 35 U.S.C. 102(a)(2)/103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) or (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B).
Examiner Note:
1. In bracket 1, insert document number that qualifies as prior art under 35 U.S.C. 102(a)(2).
2. In bracket 2, provide explanation of obviousness including differences.
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3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
¶ 15.19.05.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design disclosed but not claimed
The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over [1].
Based upon the different inventive entity and the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e).
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
[2]
Since the design claimed in the present application is not the same invention claimed in the [3] patent, this rejection may be overcome by a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “ by another,” or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a). For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP §§ 706.02(l)(1) and 706.02(l)(2).
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier filed design or utility patent, or application publication, but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.
2. In brackets 1 and 3, insert number of the U.S. patent, U.S. patent application publication, or the WIPO publication of an international application that qualifies as prior art under pre-AIA 35 U.S.C. 102(e). See note 4 below.
3. In bracket 2, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70.fti and 15.67 or 15.68.
4. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s
prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102 (e) date.
5. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.06.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design claimed in a design patent with an earlier effective filing date and common assignee
The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over the claim in design patent [1].
Based upon the different inventive entity and the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e).
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
[2]
Since the design claimed in the present application is not patentably distinct from the design claimed in the [3] patent, this rejection may be overcome by submitting an oath or declaration under 37 CFR 1.131(c) stating that this application and the reference are currently owned by the same party and that the inventor named in this application is the prior inventor of the subject matter in the reference under 35 U.S.C. 104 as in effect on March 15, 2013. In addition, a terminal disclaimer in accordance with 37 CFR 1.321(c) is also required. For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP §§ 706.02(l)(1) and 706.02(l)(2).
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in a design patent having an earlier effective date and a common assignee.
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2. An obviousness-type double patenting rejection must also be included in the action.
3. In brackets 1 and 3, insert number of patent.
4. In bracket 2, provide explanation of obviousness including differences and follow the explanation by form paragraphs 15.70.fti and 15.67 or 15.68.
5. This form paragraph must be preceded by form paragraph 15.19.02.fti.
6. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.07.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design claimed in a design patent having an earlier effective filing date and no common assignee
The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over the claim in design patent [1].
Based upon the different inventive entity and the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e).
Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
[2]
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in a design patent having an earlier effective filing date.
2. In bracket 2, provide explanation of obviousness including differences and follow explanation with form paragraphs 15.70.fti and 15.67 or 15.68.
3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
The following form paragraphs may be used in a second or subsequent action where appropriate.
¶ 15.38 Rejection Maintained
The arguments presented have been carefully considered, but are not persuasive that the rejection of the claim under [1] should be withdrawn.
Examiner Note:
In bracket 1, insert basis of rejection.
¶ 15.39.02.aia Final Rejection Under 35 U.S.C. 103 (Single Reference)
The claim is FINALLY REJECTED under 35 U.S.C. 103 over [1].
Examiner Note:
1. In bracket 1, insert reference citation.
2. See form paragraphs in MPEP Chapter 700, for “Action is Final” and “Advisory after Final” paragraphs.
¶ 15.39.02.fti Final Rejection Under pre-AIA 35 U.S.C. 103(a) (Single Reference)
The claim is FINALLY REJECTED under pre-AIA 35 U.S.C. 103(a) over [1].
Examiner Note:
See form paragraphs in MPEP Chapter 700, for “Action is Final” and “Advisory after Final” paragraphs.
¶ 15.40.aia Final Rejection Under 35 U.S.C. 103 (Multiple References)
The claim is FINALLY REJECTED under 35 U.S.C. 103 as being unpatentable over [1] in view of [2].
Examiner Note:
See form paragraphs in MPEP Chapter 700 for “Action is Final” and “Advisory after Final” paragraphs.
¶ 15.40.fti Final Rejection Under pre-AIA 35 U.S.C. 103(a) (Multiple References)
The claim is FINALLY REJECTED under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [1] in view of [2].
Examiner Note:
See form paragraphs in MPEP Chapter 700 for “Action is Final” and “Advisory after Final” paragraphs.
1504.04 Considerations Under 35 U.S.C. 112 [R-07.2015]
35 U.S.C. 112 Specification.
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
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(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
*****
The drawing in a design application is incorporated into the claim by use of the claim language “as shown.”
Additionally, the drawing disclosure can be supplemented by narrative description in the specification (see MPEP § 1503.01, subsection II). This description is incorporated into the claim by use of the language “as shown and described.” See MPEP § 1503.01, subsection III.
I. 35 U.S.C. 112(a) and (b)
A. Enablement and Scope of Protection
Any analysis for compliance with 35 U.S.C. 112 should begin with a determination of the scope of protection sought by the claims. See In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971). Therefore, before any determination can be made as to whether the disclosure meets the requirements of 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph), for enablement, a determination of whether the claims meet the requirements of 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112 , second paragraph) must be made. However, since the drawing disclosure and any narrative description in the specification are incorporated into the claim by the use of the language “as shown and described,” any determination of the scope of protection sought by the claim is also a determination of the subject matter that must be enabled by the disclosure. Hence, if the appearance and shape or configuration of the design for which protection is sought cannot be determined or understood due to an inadequate visual disclosure, then the claim, which incorporates the visual disclosure, fails to particularly point out and distinctly claim the subject matter the inventor(s) regard as their invention, in violation of the second paragraph of 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112,
second paragraph). Furthermore, such disclosure fails to enable a designer of ordinary skill in the art to make an article having the shape and appearance of the design for which protection is sought. In such case, a rejection of the claim under both 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, the first and second paragraphs of 35 U.S.C. 112) would be warranted. An evaluation of the scope of the claim under 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, second paragraph), to determine whether the disclosure of the design meets the enablement requirement of 35 U.S.C. 112, first paragraph, cannot be based on the drawings alone. The scope of a claimed design is understood to be limited to those surfaces or portions of the article shown in the drawing in full lines in combination with any additional written description in the specification. The title does not define the scope of the claimed design but merely identifies the article in which it is embodied. See MPEP § 1503.01, subsection I. It is assumed that the claim has been crafted to protect that which the applicant “regards as his invention.” See In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Therefore, when visible portions of the article embodying the design are not shown, it is because they form no part of the claim to be protected. It is prima facie evidence that the scope of the claimed design is limited to those surfaces “as shown” in the application drawing(s) in the absence of any additional written disclosure. See MPEP § 1503.01, subsection II. “[T]he adequacy of the disclosure must be determined by reference to the scope asserted.” See Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413, 418 (D. Del. 1961). However, it should be understood that when a surface or portion of an article is disclosed in full lines in the drawing it is considered part of the claimed design and its shape and appearance must be clearly and accurately depicted in order to satisfy the requirements of 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, the first and second paragraphs of 35 U.S.C. 112).
Only those surfaces of the article that are visible at the point of sale or during use must be disclosed to meet the requirement of 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs).
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“The drawing should illustrate the design as it will appear to purchasers and users, since the appearance is the only thing that lends patentability to it under the design law.” See Ex parte Kohler, 1905 C.D. 192, 192, 116 O.G. 1185, 1185 (Comm’r Pat. 1905). The lack of disclosure of those surfaces of the article which are hidden during sale or use does not violate the requirements of 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, the first and second paragraphs of 35 U.S.C. 112) because the “patented ornamental design has no use other than its visual appearance....” See In re Harvey, 12 F.3d 1061, 1064, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993). Therefore, to make the “visual appearance” of the design merely involves the reproduction of what is shown in the drawings; it is not necessary that the functionality of the article be reproduced as this is not claimed. The function of a design is “that its appearance adds attractiveness, and hence commercial value, to the article embodying it.” See Ex parte Cady, 1916 C.D. 57, 61, 232 O.G. 619, 621 (Comm’r Pat. 1916).
The undisclosed surfaces not seen during sale or use are not required to be described in the specification even though the title of the design is directed to the complete article because the design is embodied only in those surfaces which are visible. See Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm’r Pat. 1938). While it is not necessary to show in the drawing those visible surfaces that are flat and devoid of surface ornamentation, they should be described in the specification by way of a descriptive statement if they are considered part of the claimed design. See Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm’r Pat. 1938). Such descriptive statement may not be used to describe visible surfaces which include structure that is clearly not flat. See Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 (D. Del. 1961). See also MPEP § 1503.02.
Applications filed in which the title (in the claim) defines an entire article but the drawings and the specification fail to disclose portions or surfaces of the article that would be visible either during use or on sale, will not be considered to violate the requirements of 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, the first and second paragraphs of 35 U.S.C. 112).
Therefore, amendment to the title will not be required in such applications. However, examiners should include a statement in the first Office action on the merits (including a notice of allowability) indicating that the surface(s) or portion(s) of the article that would be normally visible but are not shown in the drawing or described in the specification are understood to form no part of the claimed design and therefore, the determination of patentability of the claimed design is based on the views of the article shown in the drawing and the description in the specification. Form paragraph 15.85 may be used for this purpose.
When a claim is rejected under 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite due to an insufficient drawing disclosure, examiners must specifically identify in the Office action what the deficiencies are in the drawing. A mere statement that the claim is nonenabling and indefinite due to the poor quality of the drawing is not a sufficient explanation of the deficiencies in the drawing disclosure. Examiners must specifically point out those portions of the drawing that are insufficient to permit an understanding of the shape and appearance of the design claimed, and, if possible, suggest how the rejection may be overcome. Form paragraphs 15.21 and 15.20.02 may be used.
When inconsistencies between the views of the drawings are so great that the overall appearance of the design is unclear, the claim should be rejected under 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite, and the rejection should specifically identify all of the inconsistencies between the views of the drawing. Otherwise, inconsistencies between drawing views will be objected to by the examiner and correction required by the applicant. See MPEP § 1503.02.
If the visual disclosure of the claimed design as originally filed is of such poor quality that its overall shape and appearance cannot be understood, applicant should be advised that the claim might be fatally defective by using form paragraph 15.65.
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As indicated above, a narrative description in the specification can supplement the drawing disclosure to define the scope of protection sought by the claim. Furthermore, such description is incorporated into the claim by the use of the language “and described” therein. However, if a description in the specification refers to embodiments or modified forms not shown in the drawing, or includes vague and nondescriptive words such as “variations” and “equivalents,” or a statement indicating that the claimed design is not limited to the exact shape and appearance shown in the drawing, the claim should be rejected under 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite. The reason being the description fails to enable a designer of ordinary skill in the art to make an article having the shape and appearance of those other embodiments, modified forms or “variations” and “equivalents” referred to in the description in the absence of additional drawing views. Furthermore, in the absence of additional drawing views, the description, which is incorporated into the claim, fails to particularly point out and distinctly claim the shape and appearance of those other embodiments, modified forms or “variations” and “equivalents” that applicants regard as their invention. Form paragraph 15.21 may be used to reject a claim for the above reasons.
¶ 15.85 Undisclosed visible surface(s)/portion(s) of article not forming part of the claimed design
The [1] of the article [2] not shown in the drawing or described in the specification. It is understood that the appearance of any part of the article not shown in the drawing or described in the specification forms no part of the claimed design. In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Therefore, the determination of patentability is based on the design for the article shown and described.
Examiner Note:
1. In bracket 1, insert surface or surfaces which are not shown.
2. In bracket 2, insert “is” or “are”.
¶ 15.21 Rejection, 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, First And Second Paragraphs
The claim is rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use
the same, and fails to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The claim is indefinite and nonenabling [1].
Examiner Note:
1. This form paragraph should not be used when it is appropriate to make one or more separate rejections under 35 U.S.C. 112(a) and/or (b) or pre-AIA 35 U.S.C. 112, first and/or second paragraph(s).
2. In bracket 1, a complete explanation of the basis for the rejection should be provided.
¶ 15.20.02 Suggestion To Overcome Rejection Under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, First and Second Paragraphs (Ch. 16 Design Application)
Applicant may disclaim the areas or portions of the design which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by converting them to broken lines and amend the specification to include a statement that the portions of the [1] shown in broken lines form no part of the claimed design.
Examiner Note:
1. For international design applications, use form paragraph 29.27 instead.
2. In bracket 1, insert title of the article.
¶ 15.65 Amendment May Not Be Possible
The claim might be fatally defective; that is, it might not be possible to [1] without introducing new matter (35 U.S.C. 132, 37 CFR 1.121).
Examiner Note:
In bracket 1, identify portion of the claimed design which is insufficiently disclosed.
¶ 15.73 Corrected Drawing Sheets Required
Failure to submit replacement correction sheets overcoming all of the deficiencies in the drawing disclosure set forth above, or an explanation why the drawing corrections or additional drawing views are not necessary will result in the rejection of the claim under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, being made FINAL in the next Office action.
B. New Matter
New matter is subject matter which has no antecedent basis in the original specification, drawings or claim (MPEP § 608.04). An amendment to the claim must have antecedent basis in the
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original disclosure. 35 U.S.C. 132; 37 CFR 1.121(f). Prior to final action, all amendments will be entered in the application and will be considered by the examiner. Ex parte Hanback, 231 USPQ 739 (Bd. Pat. App. & Inter. 1986). An amendment to the claim which has no antecedent basis in the specification and/or drawings as originally filed introduces new matter because that subject matter is not described in the application as originally filed. The claim must be rejected under 35 U.S.C. 112(a) (or for applications field prior to September 16, 2012, 35 U.S.C. 112, first paragraph). An amendment to the disclosure not affecting the claim (such as environment in the title or in broken lines in the drawings), which has no antecedent basis in the application as originally filed, must be objected to under 35 U.S.C. 132 as lacking support in the application as originally filed and a requirement must be made to cancel the new matter.
The scope of a design claim is defined by what is shown in full lines in the application drawings. In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988). The claim may be amended by broadening or narrowing its scope within the bounds of the disclosure as originally filed.
A change in the configuration of the claimed design is considered a departure from the original disclosure and introduces prohibited new matter (37 CFR 1.121(f)). See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). This includes the removal of three-dimensional surface treatment that is an integral part of the configuration of the claimed design, for example, beading, grooves, and ribs. The underlying configuration revealed by such an amendment would not be apparent in the application as filed and, therefore, it could not be established that applicant was in possession of this amended configuration at the time the application was filed. However, an amendment that changes the scope of a design by either reducing certain portions of the drawing to broken lines or converting broken line structure to solid lines is not a change in configuration as defined by the court in Salmon. The reason for this is because applicant was in possession of everything disclosed in the drawing at the time the application was filed and the mere reduction of certain portions to broken lines or conversion of broken line structure to solid lines is
not a departure from the original disclosure. Examiners are cautioned that if broken line structure is converted to solid lines by way of amendment, the shape and configuration of that structure must have been fully disclosed and enabling at the time the application was filed. An amendment which alters the appearance of the claimed design by removing two-dimensional, superimposed surface treatment may be permitted if it is clear from the application that applicant had possession of the underlying configuration of the design without the surface treatment at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998).
Amendments to the title must have antecedent basis in the original application to be permissible. If an amendment to the title directed to the article in which the design is embodied has no antecedent basis in the original application, the claim will be rejected under 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph), as failing to comply with the written description requirement thereof. Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992). If an amendment to the title directed to the environment in which the design is used has no antecedent basis in the original application, it will be objected to under 35 U.S.C. 132 as introducing new matter into the disclosure. See MPEP § 1503.01, subsection I.
Examples of permissible amendments filed with the original application include: (A) a preliminary amendment filed simultaneously with the application papers, that is specifically identified in the original oath/declaration as required by 37 CFR 1.63 and MPEP § 608.04(b); and (B) the inclusion of a disclaimer in the original specification or on the drawings/photographs as filed. See 37 CFR 1.152 and MPEP § 1503.01 and § 1503.02.
An example of a permissible amendment submitted after the filing of the application would be an amendment that does not involve a departure from the configuration of the original disclosure (37 CFR 1.121(f)).
An example of an impermissible amendment which introduces new matter would be an amendment to
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the claim without antecedent basis in the original disclosure which would change the configuration or surface appearance of the original design by the addition of previously undisclosed subject matter. In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981).
When an amendment affecting the claim is submitted that introduces new matter into the drawing, specification or title and a rejection under 35 U.S.C. 112(a) , (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph) is made, the examiner should specifically identify in the Office action the subject matter which is not considered to be supported by the original disclosure. A statement by the examiner that merely generalizes that the amended drawing, specification or title contains new matter is not sufficient. Examiners should specifically identify the differences or changes made to the claimed design that are considered to introduce new matter into the original disclosure, and if possible, suggest how the amended drawing, specification or title can be corrected to overcome the rejection. Form paragraph 15.51 may be used.
If an amendment that introduces new matter into the claim is the result of a rejection under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs) for lack of enablement and indefiniteness, and it is clear that the disclosure of the claimed design as originally filed cannot be corrected without the introduction of new matter, the record of the application should reflect that the claim is seen to be fatally defective. Form paragraph 15.65 may be used to set forth this position.
¶ 15.51 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, First Paragraph Rejection (New Matter)
The claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph as failing to comply with the description requirement thereof since the [1] introduces new matter not supported by the original disclosure. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the design now claimed at the time the application was filed. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
Specifically, there is no support in the original disclosure [2].
To overcome this rejection, applicant may attempt to demonstrate that the original disclosure establishes that he or she was in possession of the amended claim or [3].
Examiner Note:
1. In bracket 1, specify whether new drawing or amendment to the drawing, title or specification.
2. In bracket 2, specifically identify what is new matter so that the basis for the rejection is clear.
3. In bracket 3, insert specific suggestion how rejection may be overcome depending on the basis; such as, “the bracket in figures 3 and 4 of the new drawing may be corrected to correspond to the original drawing” or “the specification may be amended by deleting the descriptive statement.”
¶ 15.65 Amendment May Not Be Possible
The claim might be fatally defective; that is, it might not be possible to [1] without introducing new matter (35 U.S.C. 132, 37 CFR 1.121).
Examiner Note:
In bracket 1, identify portion of the claimed design which is insufficiently disclosed.
¶ 15.51.01 Amendment to Disclosure Not Affecting Claim - 35 U.S.C. 132 Objection (New Matter)
The [1] is objected to under 35 U.S.C. 132 and 37 CFR 1.121 as introducing new matter not supported by the original disclosure. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the amended subject matter at the time the application was filed. See In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
Specifically, there is no support in the original disclosure [2].
To overcome this objection, applicant may attempt to demonstrate that the original disclosure establishes that he or she was in possession of the amended subject matter or [3].
Examiner Note:
1. In bracket 1, specify whether new drawing or amendment to the drawing, title or specification.
2. In bracket 2, specifically identify what is new matter so that the basis for the objection is clear.
3. In bracket 3, insert specific suggestion how the objection may be overcome depending on the basis; such as, “the broken line showing of environmental structure in Fig. 1 of the new drawing may be omitted to correspond to the original drawing” or “the title may be amended by deleting the reference to environmental structure”.
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II. 35 U.S.C. 112(b) or pre-AIA 112, second paragraph
Defects in claim language give rise to a rejection of the claim under the second paragraph of 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, the second paragraph of 35 U.S.C. 112). The fact that claim language, including terms of degree, may not be precise, does not automatically render the claim indefinite under 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, second paragraph). “[T]he definiteness of the language employed must be analyzed – not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.” See In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). A claim may appear indefinite when read in a vacuum, but may be definite upon reviewing the application disclosure or prior art teachings. Moreover, an otherwise definite claim in a vacuum may be uncertain when reviewing the application disclosure and prior art. Moore, 439 F.2d at 1235 n.2, 169 USPQ at 238 n.2. See also MPEP § 2173.05(b).
Use of phrases in the claim such as “or similar article,” “or the like,” or equivalent terminology has been held to be indefinite. See Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). However, the use of broadening language such as “or the like,” or “or similar article” in the title when directed to the environment of the article embodying the design should not be the basis for a rejection under 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, second paragraph). See MPEP § 1503.01, subsection I.
Examiners are reminded that there is no per se rule, and that the definiteness of claim language must be evaluated on the facts and circumstances of each application. The following form paragraphs may be used.
¶ 15.22.02 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph (“Or the Like” In Claim)
The claim is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The claim is indefinite because of the use of the phrase “[1]” following the title.
Cancellation of said phrase in the claim and each occurrence of the title throughout the papers, except the oath or declaration, will overcome the rejection. See Ex parte Pappas , 23 USPQ2d 1636 (Bd. App. & Inter. 1992) and 37 CFR 1.153.
Examiner Note:
1. This rejection should be used where there is another rejection in the Office action. For issue with an examiner’s amendment, see form paragraph 15.69.01.
2. In bracket 1, insert --or the like-- or --or similar article--.
3. This form paragraph should not be used when “or the like” or “or similar article” in the title is directed to the environment of the article embodying the design.
¶ 15.69.01 Remove Indefinite Language (“Or The Like”) by Examiner’s Amendment
The phrase [1] in the claim following the title renders the claim indefinite. By authorization of [2] in a telephone interview on [3], the phrase has been cancelled from the claim and at each occurrence of the title throughout the papers, except the oath or declaration 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and 37 CFR 1.153). See Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992).
Examiner Note:
In bracket 1, insert objectionable phrase, e.g., --or the like--, --or similar article--, etc.
Rejections under 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, second paragraph), should be made when the scope of protection sought by the claim cannot be determined from the disclosure. For instance, a drawing disclosure in which the boundaries between claimed (solid lines) and unclaimed (broken lines) portions of an article are not defined or cannot be understood may be enabling under 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph), in that the shape and appearance of the article can be reproduced, but such disclosure fails to particularly point out and distinctly claim the subject matter that applicant regards as the invention. Form paragraph 15.22 may be used.
¶ 15.22 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph
The claim is rejected under 35 U.S.C. 112(b) or (pre-AIA) 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The claim is indefinite [1].
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Examiner Note:
1. Use this form paragraph when the scope of the claimed design cannot be determined.
2. In bracket 1, provide a full explanation of the basis for the rejection.
The claim should be rejected as indefinite when it cannot be determined from the designation of the design as shown in the drawing, referenced in the title and described in the specification what article of manufacture is being claimed, e.g., a design claimed as a “widget” which does not identify a known or recognizable article of manufacture. The following form paragraphs may be used.
¶ 15.22.03 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph (Title Fails to Specify a Known Article of Manufacture)
The claim is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as indefinite in that the title, as set forth in the claim, fails to identify an article of manufacture and the drawing disclosure does not inherently identify the article in which the design is embodied. Ex parte Strijland , 26 USPQ2d 1259, 1263 (Bd. Pat. App. & Int. 1992). Therefore, any attempt to clarify the title by specifying the article in which the design is embodied may introduce new matter. See 35 U.S.C. 132 and 37 CFR 1.121.
¶ 15.21.01 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, (Second Paragraph) (Additional Information Requested)
The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The title of the article in which the design is embodied or applied is too ambiguous and therefore indefinite for the examiner to make a proper examination of the claim under 37 CFR 1.104.
Applicant is therefore requested to provide a sufficient explanation of the nature and intended use of the article in which the claimed design is embodied or applied. See MPEP § 1503.01. Additional information, if available, regarding analogous fields of search, pertinent prior art, advertising brochures and the filing of copending utility applications would also prove helpful. If a utility application has been filed, please furnish its application number.
This information should be submitted in the form of a separate paper, and should not be inserted in the specification (37 CFR 1.56). See also 37 CFR 1.97 and 1.98.
Where the design claim would otherwise be patentable but for the presence of any rejection under 35 U.S.C. 112(a) and/or (b) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112), first
and/or second paragraphs, form paragraph 15.58.01 may be used.
¶ 15.58.01 Claimed Design Is Patentable (35 U.S.C. 112 Rejections)
The claimed design is patentable over the references cited. However, a final determination of patentability will be made upon resolution of the above rejection.
Form paragraphs 15.38 and 15.40.01 may be used in a second or subsequent action, where appropriate (see MPEP § 1504.02).
1504.05 Restriction [R-07.2015]
General principles of utility restriction are set forth in Chapter 800 of the MPEP. These principles are also applicable to design restriction practice with the exception of those differences set forth in this section.
Unlike a utility patent application, which can contain plural claims directed to plural inventions, a design patent application may only have a single claim. See 37 CFR 1.153(a). More than one embodiment of a design may be protected by a single claim. However, such embodiments may be presented only if they involve a single inventive concept according to the obviousness-type double patenting practice for designs. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Therefore, the examiner will require restriction in each design application which contains more than one patentably distinct design.
Restriction will be required under 35 U.S.C. 121 if a design patent application claims multiple designs that are patentably distinct from each other. The issue of whether a search and examination of an entire application can be made without serious burden to an examiner (as noted in MPEP § 803) is not applicable to design applications when determining whether a restriction requirement should be made. Clear admission on the record by the applicant that the embodiments are not patentably distinct will not overcome a requirement for restriction if the embodiments do not meet the following two requirements: (A) the embodiments must have overall appearances with basically the same design characteristics; and (B) the differences
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between the embodiments must be insufficient to patentably distinguish one design from the other. Regarding the second requirement, without evidence, such an admission is merely a conclusionary statement. If multiple designs are held to be patentably indistinct and can be covered by a single claim, any rejection of one over prior art will apply equally to all. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965).
I. INDEPENDENT INVENTIONS
Design inventions are independent if there is no apparent relationship between two or more disparate articles disclosed in the drawings; for example, a pair of eyeglasses and a door handle; a bicycle and a camera; an automobile and a bathtub. Also note examples in MPEP § 806.06. Restriction in such cases is clearly proper. This situation may be rarely presented since design patent applications are seldom filed containing disclosures of independent articles.
II. DISTINCT INVENTIONS
In determining patentable distinctness, the examiner must compare the overall appearances of the multiple designs. Each design must be considered as a whole, i.e., the elements of the design are not considered individually as they may be when establishing a prima facie case of obviousness under 35 U.S.C.
103. Designs are not distinct inventions if: (A) the multiple designs have overall appearances with basically the same design characteristics; and (B) the differences between the multiple designs are insufficient to patentably distinguish one design from the other. Differences may be considered patentably insufficient when they are de minimis or obvious to a designer of ordinary skill in the art. Therefore, in determining the question of patentable distinctness under 35 U.S.C. 121 in a design application, a search of the prior art may be necessary. Both of the above considerations are important. Differences between the designs may prove to be obvious in view of the prior art, but if the overall appearances are not basically the same, the designs remain patentably distinct. Embodiments claiming different scopes of the same design can be patentably distinct using the two-step analysis above. When an application illustrates a component, which is a subcombination of another embodiment, the subcombination often
has a distinct overall appearance and a restriction should be required. When an application illustrates only a portion of the design, which is the subject of another embodiment, that portion often has a distinct overall appearance and a restriction should be required.
A. Multiple Embodiments - Difference in Appearance
It is permissible to illustrate more than one embodiment of a design invention in a single application. However, such embodiments may be presented only if they involve a single inventive concept . Two designs involve a single inventive concept when the two designs are patentably indistinct according to the standard of obviousness-type double patenting. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct over one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The disclosure of plural embodiments does not require or justify more than a single claim, which claim must be in the formal terms stated in MPEP § 1503.01, subsection III. The specification should make clear that multiple embodiments are disclosed and should particularize the differences between the embodiments. If the disclosure of any embodiment relies on the disclosure of another embodiment for completeness to satisfy the requirements of 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph), the differences between the embodiments must be identified either in the figure descriptions or by way of a descriptive statement in the specification of the application as filed. For example, the second embodiment of a cabinet discloses a single view showing only the difference in the front door of the cabinet of the first embodiment; the figure description should state that this view “is a second embodiment of Figure 1, the only difference being the configuration of the door, it being understood that all other surfaces are the same as those of the first embodiment.” This type of statement in the description is understood to incorporate the disclosure of the first embodiment to complete the disclosure of the second embodiment. However, in the absence of such a statement in the specification of an application as
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filed, the disclosure of one embodiment will normally not be permitted to provide antecedent basis for any written or visual amendment to the disclosure of other embodiments.
The obviousness standard under 35 U.S.C. 103 must be applied in determining whether multiple embodiments may be retained in a single application. See MPEP § 1504.03. That is, it must first be determined whether the embodiments have overall appearances that are basically the same as each other. If the appearances of the embodiments are considered to be basically the same, then it must be determined whether the differences are either minor between the embodiments and not a patentable distinction, or obvious to a designer of ordinary skill in view of the analogous prior art . If embodiments meet both of the above criteria they may be retained in a single application. If embodiments do not meet either one of the above criteria, restriction must be required. It should be noted, that if the embodiments do not have overall appearances that are basically the same, restriction must be required since their appearances are patentably distinct. In such case it doesn’t matter for restriction purposes, if the differences between the appearances of the embodiments are shown to be obvious in view of analogous prior art.
Form paragraph 15.27.02 or 15.27.03, if appropriate, may be used to notify applicant that restriction is not required because the embodiments are not patentably distinct.
¶ 15.27.02 Restriction Not Required - Change In Appearance (First Action - Non Issue)
This application discloses the following embodiments:
Embodiment 1 - Figs. [1]
Embodiment 2 - Figs. [2]
[3]
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. Any rejection of one embodiment over prior art will apply equally to all other embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this action will be considered an admission of lack of patentable distinction between the above identified embodiments.
Examiner Note:
In bracket 3, add embodiments as necessary.
¶ 15.27.03 Restriction Not Required - Change In Appearance (First Action Issue)
This application discloses the following embodiments:
Embodiment 1 - Figs. [1]
Embodiment 2 - Figs. [2]
[3]
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application.
Examiner Note:
In bracket 3, add embodiments as necessary.
The following form paragraphs may be used in a restriction requirement. Examiners must include a brief explanation of the differences between the appearances of the embodiments that render them patentably distinct.
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¶ 15.27 Restriction Under 35 U.S.C. 121
This application discloses the following embodiments:
Embodiment 1 - Figs. [1]
Embodiment 2 - Figs. [2]
[3]
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The [4] create(s) patentably distinct designs.
Because of the differences identified, the embodiments are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
The above embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment [5]
Group II: Embodiment [6]
[7]
Restriction is required under 35 U.S.C. 121 to one of the above identified patentably distinct groups of designs.
A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement is traversed, 37 CFR 1.143. Any reply that does not include election of a single group will be held nonresponsive. Applicant is also requested to direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.
Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art will apply equally to all other embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered once the groups have been determined to comprise a single inventive concept.
In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).
Examiner Note:
1. In bracket 3, add embodiments as necessary.
2. In bracket 4, insert an explanation of the difference(s) between the embodiments.
3. In bracket 7, add groups as necessary.
¶ 15.27.01 Restriction Under 35 U.S.C. 121 (Obvious Variations Within Group)
This application discloses the following embodiments:
Embodiment 1 - Figs. [1]
Embodiment 2 - Figs. [2]
[3]
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
The above embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment [4]
Group II: Embodiment [5]
[6]
The embodiments disclosed within each group have overall appearances that are basically the same. Furthermore, the differences between them are considered minor and patentably indistinct, or are shown to be obvious in view analogous prior art cited. Therefore, they are considered by the examiner to be obvious variations of one another within the group. These embodiments thus comprise a single inventive concept and are grouped together. However, the [7] patentably distinguishes each group from the other(s).
Because of the differences identified, the embodiments of each Group are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of the designs.
A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement is traversed, 37 CFR 1.143. Any reply that does not include election of a single group will be held nonresponsive. Applicant
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§ 1504.05DESIGN PATENTS
is also requested to direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.
Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art will apply equally to all other groups. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered once the groups have been determined to comprise a single inventive concept.
In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).
Examiner Note:
1. In bracket 3, add embodiments as necessary.
2. In bracket 6, add groups as necessary.
3. In bracket 7, insert an explanation of the difference(s) between the groups.
¶ 15.28 Telephone Restriction Under 35 U.S.C. 121
This application discloses the following embodiments:
Embodiment 1 - Figs. [1]
Embodiment 2 - Figs. [2]
[3]
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The [4]
create(s) patentably distinct designs. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
Because of the differences identified, the embodiments of each Group are considered to either have overall appearances that are not basically the same, or, if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
The above disclosed embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment [5]
Group II: Embodiment [6]
[7]
Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.
During a telephone discussion with [8] on [9], a provisional election was made [10] traverse to prosecute the design(s) of group [11]. Affirmation of this election should be made by applicant in replying to this Office action.
Group [12] is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for a nonelected design(s).
Examiner Note:
1. In bracket 3, add embodiments as necessary.
2. In bracket 4, insert an explanation of the difference(s) between the embodiments.
3. In bracket 7, add groups as necessary.
4. In bracket 10, insert --with-- or --without--.
¶ 15.28.01 Telephone Restriction Under 35 U.S.C.121 (Obvious Variations Within Group)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1]
Embodiment 2 – Figs. [2]
[3]
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
The above embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment [4]
Group II: Embodiment [5]
[6]
The embodiments disclosed within each group have overall appearances that are basically the same. Furthermore, the differences between them are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Therefore, they are considered by the examiner to be
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obvious variations of one another within the group. These embodiments thus comprise a single inventive concept and are grouped together. However, the [7] patentably distinguishes each group from the other(s).
Because of the differences identified, the embodiments of each Group are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.
During a telephone discussion with [8] on [9], a provisional election was made [10] traverse to prosecute the design(s) of group [11]. Affirmation of this election should be made by applicant in replying to this Office action.
Group [12] is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for a nonelected design(s).
Examiner Note:
1. In bracket 3, add embodiments as necessary.
2. In bracket 6, add groups as necessary.
3. In bracket 7, insert an explanation of the differences between the groups.
4. In bracket 10, insert --with--or --without--.
¶ 15.31 Provisional Election Required (37 CFR 1.143)
Applicant is advised that the reply to be complete must include a provisional election of one of the enumerated designs, even though the requirement may be traversed (37 CFR 1.143).
B. Combination/Subcombination - Difference in Scope
A design claim covers the entire design as a whole. Furthermore, claim protection to the whole design does not extend to any individual part or portion thereof. See KeyStone Retaining Wall Systems Inc. v. Westrock Inc., 997 F.2d 1444, 27 USPQ2d 1297 (Fed. Cir. 1993). Embodiments directed to a design as a whole (combination) as well as individual parts or portions (subcombination) thereof may not be included in a single application if the appearances are patentably distinct. In such instance restriction would be required since patentably distinct combination/subcombination subject matter must be supported by separate claims. However, a design claim may cover embodiments of different scope directed to the same inventive concept within a single application if the designs are not patentably distinct. See In re Rubinfield, 270 F.2d 391, 123
USPQ 210 (CCPA 1959). The court held that the inventive concept of a design is not limited to its embodiment in a single specific article, and as long as the various embodiments are not patentably distinct, they may be protected by a single claim. See Blumcraft of Pittsburgh v. Ladd, 144 USPQ 562 (D.D.C. 1965). The determination that the design of the subcombination/element is patentably indistinct from the combination means that the designs are not patentable (novel and unobvious) over each other and may remain in the same application. If the embodiments are patentably distinct, the designs are considered to be separate inventions which require separate claims, and restriction to one or the other is necessary. See In re Kelly, 200 USPQ 560 (Comm’r Pat. 1978); Ex parte Sanford, 1914 C.D. 69, 204 O.G. 1346 (Comm’r Pat. 1914); Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960). In determining whether embodiments of different scope can be retained in a single application they must have overall appearances that are basically the same, and the difference in scope must be minor and not a patentable distinction. That is, they must, by themselves, be considered obvious over each other under 35 U.S.C. 103 without the aid of analogous prior art. The reason for this, as stated above, is because claim protection to the whole design does not extend to any individual part or portion thereof. Therefore, if the difference in scope between embodiments has an impact on the overall appearance that distinguishes one over the other, they must be restricted since the difference in scope creates patentably distinct designs that must be supported by separate claims. Form paragraph 15.27.04 or 15.27.05, if appropriate, may be used to notify applicant that restriction is not required because the embodiments required are not patentably distinct.
¶ 15.27.04 Restriction Not Required – Change In Scope (First Action – Non Issue)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1]
Embodiment 2 – Figs. [2]
[3]
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§ 1504.05DESIGN PATENTS
Designs which involve a change in scope may be included in the same design application only if they are patentably indistinct. However, design patent protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the difference in scope between embodiments is considered minor and patentably indistinct. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. Any rejection of one embodiment over prior art will apply equally to all other embodiments. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this Office action will be considered an admission of lack of patentable distinction between the embodiments.
Examiner Note:
In bracket 3, add embodiments as necessary.
¶ 15.27.05 Restriction Not Required – Change In Scope (First Action Issue)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1]
Embodiment 2 – Figs. [2]
[3]
Designs which involve a change in scope may be included in the same design application only if they are patentably indistinct. However, design patent protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the difference in scope between embodiments is considered minor and patentably indistinct. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application.
Examiner Note:
In bracket 3, add embodiments as necessary.
Form paragraph 15.29 or 15.30, if appropriate, may be used to make a restriction requirement.
¶ 15.29 Restriction Under 35 U.S.C. 121 (Segregable Parts or Combination/Subcombination)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1] drawn to a [2].
Embodiment 2 – Figs. [3] drawn to a [4].
[5]
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I – Embodiment [6]
Group II – Embodiment [7]
[8]
The designs as grouped are distinct from each other since under the law a design patent covers only the invention disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. See Ex parte Sanford, 1914 CD 69, 204 OG 1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965). It is
fu r ther no ted tha t pa ten tab ly d is t inc t combination/subcombination subject matter must be supported by separate claims, whereas only a single claim is permissible in a design patent application. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
[9]
Because the designs are distinct for the reason(s) given above, and have acquired separate status in the art, restriction for examination purposes as indicated is proper (35 U.S.C. 121).
A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement is traversed. 37 CFR 1.143. Any reply that does not include an election of a single group will be held nonresponsive. Applicant is also requested to direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.
Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over the prior art will apply equally to all other groups. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered once the groups have been determined to comprise a single inventive concept.
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In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. In bracket 8, add groups as necessary.
3. In bracket 9, add comments, if necessary.
¶ 15.30 Telephone Restriction Under 35 U.S.C. 121 (Segregable Parts or Combination/Subcombination)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1] drawn to a [2].
Embodiment 2 – Figs. [3] drawn to a [4].
[5]
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I – Embodiment [6]
Group II – Embodiment [7]
[8]
The designs as grouped are distinct from each other since under the law a design patent covers only the invention disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. See Ex parte Sanford, 1914 CD 69, 204 OG 1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965). It is
fu r ther no ted tha t pa ten tab ly d is t inc t combination/subcombination subject matter must be supported by separate claims, whereas only a single claim is permissible in a design patent application. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
[9]
During a telephone discussion with [10] on [11], a provisional election was made [12] traverse to prosecute the invention of Group [13]. Affirmation of this election should be made by applicant in replying to this Office action.
Group [14] withdrawn from further consideration by the examiner, 37 CFR 1.142(b) as being for a nonelected invention.
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. In bracket 8, add groups as necessary.
3. In bracket 9, insert additional comments, if necessary.
Form paragraph 15.27.06 or 15.27.07, if appropriate, may be used to notify applicant that restriction is not required because the designs are not patentably distinct.
¶ 15.27.06 Restriction Not Required (Change in Appearance and Scope – First Action Non Issue)
This application discloses the following embodiments:
Embodiment 1 - Figs. [1] drawn to a [2].
Embodiment 2 - Figs. [3] drawn to a [4].
[5]
Embodiments [6] involve a difference in appearance. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
Embodiment(s) [7] directed to the combination(s) in relation to Embodiment(s) [8] directed to the subcombination(s)/element(s). Designs which involve a change in scope may be included in the same design application only if they are patentably indistinct. However, design protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. Any rejection of one embodiment over prior art will apply equally to all other embodiments. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this action will be considered an admission of lack of patentable distinction between the embodiments.
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. Insert an explanation of the differences between the designs in the explanations of the embodiments; for example, Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.
3. It is possible and proper that embodiments may be listed in both explanatory paragraphs.
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§ 1504.05DESIGN PATENTS
¶ 15.27.07 Restriction Not Required (Change in Appearance and Scope – First Action Issue)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1] drawn to a [2].
Embodiment 2 – Figs. [3] drawn to a [4].
[5]
Embodiment(s) [6] involve a difference in appearance. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
Embodiment(s) [7] directed to the combination(s) in relation to Embodiment(s) [8] directed to the subcombination(s)/element(s). Designs which involve a change in scope may be included in the same design application only if they are patentably indistinct. However, design protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they were deemed to be obvious variations and are being retained and examined in the same application. Accordingly, they were deemed to comprise a single inventive concept and have been examined together.
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. Insert an explanation of the differences between the designs in the explanations of the embodiments; for example, Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.
3. It is possible and proper that embodiments may be listed in both explanatory paragraphs.
The following form paragraphs may be used in a restriction requirement.
Examiners must include a brief explanation of the differences between embodiments that render them patentably distinct.
¶ 15.27.08 Restriction with Differences in Appearance and Scope
This application discloses the following embodiments:
Embodiment 1: Figs. [1] drawn to a [2].
Embodiment 2: Figs. [3] drawn to a [4].
[5]
The above embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment [6]
Group II: Embodiment [7]
[8]
Group(s) [9] involve a difference in appearance. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The [10] creates patentably distinct designs.
Because of the differences identified, the embodiments are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
Group(s) [11] directed to the combination(s) in relation to Group(s) [12] directed to the subcombination(s)/element(s). The designs as grouped are distinct from each other since under the law a design patent covers only the design disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965). It is further noted that combination/subcombination subject matter, if patentably distinct, must be supported by separate claims, whereas only a single claim is permissible in a design patent application. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
In any groups that include multiple embodiments, the embodiments are considered by the examiner to be obvious variations of one another within the group and, therefore, patentably indistinct. These embodiments thus comprise a single inventive concept and are grouped together.
Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.
A reply to this requirement must include an election of a single group for prosecution on the merits even if this requirement is traversed. 37 CFR 1.143. Any reply that does not include an election of a single group will be held nonresponsive. Applicant is also requested to direct cancellation of all drawing figures
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and the corresponding descriptions which are directed to the nonelected groups.
Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art will apply equally to all other groups. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered once the groups have been determined to comprise a single inventive concept.
In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. In bracket 8, add embodiments as necessary.
3. Insert an explanation of the differences between the designs in the explanations of the embodiments; for example, Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.
4. It is possible and proper that embodiments may be listed in both explanatory paragraphs.
5. In bracket 10, insert an explanation of the differences between the designs.
¶ 15.28.02 Telephone Restriction with Differences in Appearance and Scope
This application discloses the following embodiments:
Embodiment 1: Figs. [1] drawn to a [2].
Embodiment 2: Figs. [3] drawn to a [4].
[5]
The above embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment [6]
Group II: Embodiment [7]
[8]
Group(s) [9] involve a difference in appearance. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155
USPQ 222 (Comm’r Pat. 1967). The [10] creates patentably distinct designs.
Because of the differences identified, the embodiments are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
Group(s) [11] directed to the combination(s) in relation to Group(s) [12] directed to the subcombination(s)/element(s). The designs as grouped are distinct from each other since under the law a design patent covers only the design disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburg v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965). It is further noted that combination/subcombination subject matter, if patentably distinct, must be supported by separate claims, whereas only a single claim is permissible in a design patent application. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
In any groups that include multiple embodiments, the embodiments are considered by the examiner to be obvious variations of one another within the group and, therefore, patentably indistinct. These embodiments thus comprise a single inventive concept and are grouped together.
Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.
During a telephone discussion with [13] on [14], a provisional election was made [15] traverse to prosecute the invention of Group [16]. Affirmation of this election should be made by applicant in replying to this Office action.
Group [17] is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for a nonelected invention.
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. In bracket 8, add groups as necessary.
3. Insert an explanation of the differences between the designs in the explanations of the embodiments; for example, Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.
4. It is possible and proper that embodiments may be listed in both explanatory paragraphs.
5. In bracket 10, insert an explanation of the differences between the designs.
6. In bracket 15, insert --with-- or --without--.
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¶ 15.33 Qualifying Statement To Be Used In Restriction When A Common Embodiment Is Included In More Than One Group
The common embodiment is included in more than a single group as it is patentably indistinct from the other embodiment(s) in those groups and to give applicant the broadest possible choices in his or her election. If the common embodiment is elected in this application, then applicant is advised that the common embodiment should not be included in any continuing application to avoid a rejection on the ground of double patenting under 35 U.S.C. 171 in the new application.
The following form paragraphs may be used to notify applicant that the nonelected invention(s) are withdrawn from consideration.
¶ 15.34 Groups Withdrawn From Consideration After Traverse
Group [1] withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for a nonelected design, the requirement having been traversed in the reply filed on [2].
¶ 15.35 Cancel Nonelected Design (Traverse)
The restriction requirement maintained in this application is or has been made final. Applicant must cancel Group [1] directed to the design(s) nonelected with traverse in the reply filed on [2], or take other timely appropriate action (37 CFR 1.144).
¶ 15.36 Groups Withdrawn From Consideration Without Traverse
Group [1] withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for the nonelected design. Election was made without traverse in the reply filed on [2].
¶ 15.37 Cancellation of Nonelected Groups, No Traverse
In view of the fact that this application is in condition for allowance except for the presence of Group [1] directed to a design or designs nonelected without traverse in the reply filed on [2], and without the right to petition, such Group(s) have been canceled.
III. TRAVERSAL OF RESTRICTION REQUIREMENT
If a response to a restriction requirement includes an election with traverse on the grounds that the groups are not patentably distinct, applicant must present evidence or identify such evidence of record showing the groups to be obvious variations of one another. Traversal of a restriction requirement alone without an explanation in support thereof will be treated as an election without traverse. See MPEP § 818.01(c) and form paragraph 8.25.02.
A traversal of a restriction requirement based on there being no serious burden to an examiner to search and examine an entire application (as noted in MPEP § 803) is not applicable to design patent applications. The fact that the embodiments may be searched together cannot preclude a requirement for restriction if their appearances are considered patentably distinct, since patentably distinct embodiments cannot be supported by a single formal design claim. Also, clear admission on the record by the applicant, on its own, that the embodiments are not patentably distinct (as noted in MPEP § 809.02(a)) will not overcome a requirement for restriction if the embodiments do not have overall appearances that are basically the same as each other.
When a traversal specifically points out the supposed errors in a restriction, examiners must reevaluate the requirement in view of these remarks. If the restriction requirement is to be maintained, it must be repeated and made final in the next Office action and the arguments answered. If the application is otherwise in condition for allowance, except for the presence of a non-elected invention, the examiner should contact applicant and advise him or her of his or her options with regard to any pending claims withdrawn from consideration. Alternatively, applicant may be notified using form paragraph 8.03. See MPEP § 821.01.
1504.06 Double Patenting [R-07.2015]
There are generally two types of double patenting rejections. One is the “same invention” type or statutory double patenting rejection based on 35 U.S.C. 171 which states in the singular that an inventor “may obtain a patent.” The second is the “nonstatutory-type” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent.
The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982).
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The submission of a terminal disclaimer in compliance with 37 CFR 1.321(b) to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all those patents or sells them as a group. Van Ornum, 686 F.2d at 944-45, 214 USPQ at 767. Nonstatutory double patenting includes rejections based on anticipation, a one-way determination of “obviousness,” or a two-way determination of “obviousness.” It is important to note that the “obviousness” analysis for “obviousness-type” double-patenting is “similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103.” In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed Cir. 2003). In addition, nonstatutory double patenting also includes rejections based on the equitable principle against permitting an unjustified timewise extension of patent rights. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also MPEP § 804, subsection II.B.3.
The charts in MPEP § 804 outline the procedure for handling all double patenting rejections.
Double patenting rejections are based on a comparison of the claims in a patent and an application or between two applications which have at least one common inventor, common applicant, and/or are commonly assigned/owned or non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 102(c) or in pre-AIA 35 U.S.C. 103(c)(2) and (3). 35 U.S.C. 171 specifically states that “a patent” may be obtained if certain conditions are met; this use of the singular makes it clear that only one patent may issue for a design and is the basis for the statutory double patenting rejections.
Determining if a double patenting rejection is appropriate involves answering the following inquiries: Is the same design being claimed twice? If the answer is yes, then a rejection under 35 U.S.C. 171 should be given on the grounds of “same invention” type or statutory double patenting. If not, are the designs directed to patentably indistinct
variations of the same inventive concept? If the answer is yes, then a rejection based on the nonstatutory type double patenting should be given.
Double patenting rejections are based on a comparison of claims. In double patenting rejections, the disclosure of the patent or application may be relied upon only to define the claim. While there is a direct correlation between the drawings in a design application and the claim, examiners must be aware that no such correlation is necessary in a utility application or patent. Several utility patents may issue with the identical drawing disclosure but with claims directed to different inventions. So any consideration of possible double patenting rejections between a utility application or patent with a design application cannot be based on the utility drawing disclosure alone. See Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F. Supp. 98, 183 USPQ 87 (D. Del. 1974). The examiner must be able to recreate the design claimed from the utility claims without any reliance whatsoever on the drawings.
If a provisional double patenting rejection (nonstatutory or statutory) is the only rejection remaining in two conflicting applications, the examiner should consult MPEP § 1490, subsection VI.D to determine which, if any, of the provisional double patenting rejections should be withdrawn.. See also MPEP § 1490.
A provisional double patenting rejection will be converted into a double patenting rejection when the first application, which is the basis for the rejection, publishes as an application publication or issues as a patent. If more than two applications conflict with each other and one is allowed, the remaining applications should be cross rejected against the others as well as the allowed application. For this type of rejection to be appropriate, there must be either at least one inventor in common, common applicant, or a common owner/assignee. If the claims in copending design applications or a design patent and design applications have a common assignee but different inventive entities, anticipation and/or obviousness rejections based on the other application or patent as prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e), (f) and (g), as applicable, must be considered in addition to the double
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patenting rejection. See MPEP § 804, § 2136, § 2137, § 2138, and § 2154.
I. “SAME INVENTION” DOUBLE PATENTING REJECTIONS
A design - design statutory double patenting rejection based on 35 U.S.C. 171 prevents the issuance of a second patent for a design already patented. For this type of double patenting rejection to be proper, identical designs with identical scope must be twice claimed. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). A design - utility “same invention” double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can be applied against both claims. See In re Thorington, 418 F.2d 528, 163 USPQ 644
(CCPA 1969). The “same invention” type of double patenting rejection, whether statutory or nonstatutory, cannot be overcome by a terminal disclaimer. See In re Swett, 145 F.2d 631, 172 USPQ 72 (CCPA 1971).
¶ 15.23 35 U.S.C. 171 Double Patenting Rejection (Design-Design)
The claim is rejected under 35 U.S.C. 171 on the ground of double patenting since it is claiming the same design as that claimed in United States Design Patent No. [1].
Examiner Note:
Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.
¶ 15.23.01 35 U.S.C. 171 Provisional Double Patenting Rejection (Design-Design)
The claim is provisionally rejected under 35 U.S.C. 171 on the ground of double patenting since it is claiming the same design as that claimed in copending Application No. [1]. This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Examiner Note:
Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.
¶ 15.24.07 Double Patenting Rejection (Design-Utility)
The claim is rejected under the judicially created doctrine of double patenting as being directed to the same invention as that set forth in claim [1] of United States Patent No. [2]. See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).
Examiner Note:
Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.
¶ 15.24.08 Provisional Double Patenting Rejection (Design-Utility)
The claim is provisionally rejected under the judicially created doctrine of double patenting as being directed to the same invention as that set forth in claim [1] of copending Application No. [2]. See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).
This is a provisional double patenting rejection because the claims have not in fact been patented.
Examiner Note:
Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.
¶ 15.23.02 Summary for “Same Invention” – Type Double Patenting Rejections
Applicant is advised that a terminal disclaimer may not be used to overcome a “same invention” type double patenting rejection. In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969);
MPEP § 804.02.
Examiner Note:
This form paragraph should follow all “same invention” type double patenting rejections.
II. NONSTATUTORY DOUBLE PATENTING REJECTIONS
A rejection based on nonstatutory double patenting is based on a judicially created doctrine grounded in public policy so as to prevent the unjustified or improper timewise extension of the right to exclude granted by a patent. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). A double patenting rejection also serves public policy when it prevents the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982).
A nonstatutory double patenting rejection applies to claims directed to the same inventive concept with different appearances or differing scope which are patentably indistinct from each other. Nonstatutory categories of double patenting rejections which are
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not the “same invention” type may be overcome by the submission of a terminal disclaimer.
In determining whether a nonstatutory double patenting rejection is appropriate, the examiner must compare the overall appearance of the claimed design in the application with the overall appearance of the claimed design in the conflicting application or patent. The claim in the patent or conflicting application must be considered as a whole, i.e., the elements of the claimed design of the reference are not considered individually as they may be when establishing a prima facie case of anticipation under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 804, subsection II.B. for more information on the analysis for nonstatutory double patenting rejections. For example, in an obviousness analysis, after the factual inquiries mandated under Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), have been made (as with a rejection under 35 U.S.C. 103, the examiner must then determine whether the results of the inquiries support a conclusion nonstatutory double patenting. To establish nonstatutory double patenting under an obviousness analysis: (A) the conflicting design claims must have overall appearances with basically the same design characteristics; and (B) the differences between the two designs must be insufficient to patentably distinguish one design from the other. Differences may be considered patentably insufficient when they are de minimis or obvious to a designer of ordinary skill in the art. While the conflicting application or patent (if less than a year older than the application) used to establish nonstatutory double patenting is not considered “prior art,” the principle involved is basically the same. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963)(see concurring opinion of Judge Rich).
In determining whether to make a nonstatutory double patenting rejection between designs having differing scope, the examiner should compare the reference claim with the application claim. A rejection is appropriate if:
(A) The difference in scope is minor and patentably indistinct between the claims being compared;
(B) Patent protection for the design, fully disclosed in and covered by the claim of the reference, would be extended by the allowance of the claim in the later filed application; and
(C) No terminal disclaimer has been filed.
This kind of nonstatutory double patenting rejection in designs will occur between designs which may be characterized as a combination (narrow claim) and a subcombination/element thereof (broad claim). See discussion in MPEP § 1504.05, subsection II, B. If the designs are patentably indistinct and are directed to the same inventive concept the examiner must determine whether the subject matter of the narrower claim is fully disclosed in and covered by the broader claim of the reference. If the reference does not fully disclose the narrower claim, then a double patenting rejection should not be made. The additional disclosure necessary to establish that the applicant was in possession of the narrower claim at the time the broader claim was filed may be in a title or descriptive statement as well as in a broken line showing in the drawings. If the broader claim of the reference does not disclose the additional subject matter claimed in the narrower claim, then applicant could not have claimed the narrower claim at the time the application with the broader claim was filed and a rejection under nonstatutory double patenting would be inappropriate.
A nonstatutory double patenting rejection may be made between a patent and an application or provisionally between applications. Such rejection over a patent may only be necessary if the patent issued less than a year before the filing date of the application. If the patent is more than a year older than the application, the patent is considered to be “prior art” under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(b) which may be applied in an anticipation or obviousness rejection as applicable. The purpose of a terminal disclaimer is to obviate a nonstatutory double patenting rejection by removing potential harm to the public by issuing a second patent. See MPEP § 804.
If the issue of double patenting is raised between a patent and a continuing application, examiners are reminded that this ground of rejection can only be made when the filing of the continuing application is voluntary and not the direct, unmodified result of
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restriction requirement under 35 U.S.C. 121. See MPEP § 804.01.
Examiners should particularly note that a design-design nonstatutory double patenting rejection does not always have to be made in both of the conflicting applications. For the most part, these rejections will be made in each of the conflicting applications; but, if the rejection is only appropriate in one direction, it is proper to reject only one application. The criteria for determining whether a one-way distinctness determination is necessary or a two-way distinctness determination is necessary is set forth in MPEP § 804, subsection II.B.2.(b) and (c). However, in design-utility situations, a two-way distinctness determination is necessary for the rejection to be proper. See In re Dembiczak, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir. 1999).
The following form paragraphs may be used in making a nonstatutory double patenting rejection. Explanation should be provided in the appropriate brackets.
¶ 15.24.06 Basis for Nonstatutory Double Patenting, “Heading Only”
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.131(c). A registered attorney or agent of record may sign a terminal disclaimer.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about
e T e r m i n a l D i s c l a i m e r s , r e f e r t o www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Examiner Note:
This form paragraph must precede all nonstatutory double patenting rejections as a heading, except “same invention” type.
¶ 15.24 Nonstatutory Double Patenting Rejection (Single Reference)
The claim is rejected on the ground of nonstatutory double patenting of the claim in United States Patent No. [1]. Although the conflicting claims are not identical, they are not patentably distinct from each other because [2].
Examiner Note:
1. In bracket 1, insert prior U.S. Patent Number.
2. In bracket 2, the differences between the conflicting claims must be identified and indicated as being minor and not distinguishing the overall appearance of one over the other.
3. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.67.
¶ 15.24.03 Provisional Nonstatutory Double Patenting Rejection (Single Reference)
The claim is provisionally rejected on the grounds of nonstatutory double patenting of the claim of copending Application No. [1]. Although the conflicting claims are not identical, they are not patentably distinct from each other because [2]. This is a provisional nonstatutory double patenting rejection because the conflicting claims have not in fact been patented.
Examiner Note:
1. In bracket 1, insert conflicting application number.
2. In bracket 2, the differences between the conflicting claims must be identified and indicated as being minor and not distinguishing the overall appearance of one over the other.
3. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.67.
¶ 15.67 Rationale for 35 U.S.C. 103 Rejection (Single Reference)
It is well settled that it is unobviousness in the overall appearance of the claimed design, when compared with the prior art, rather than minute details or small variations in design as appears to be the case here, that constitutes the test of design patentability. See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
¶ 15.25 Nonstatutory Double Patenting Rejection (Multiple References)
The claim is rejected on the grounds of nonstatutory double patenting of the claim(s) in United States Patent No. [1] in view
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of [2]. At the time applicant made the design, it would have been obvious to a designer of ordinary skill in the art to [3] as demonstrated by [4].
Examiner Note:
1. In bracket 1, insert conflicting patent number.
2. In bracket 2, insert secondary reference(s).
3. In bracket 3, insert an explanation of how the conflicting claim in the patent is modified.
4. In bracket 4, identify the secondary reference(s) teaching the modification(s).
5. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.68.
¶ 15.24.04 Provisional Nonstatutory Double Patenting Rejection (Multiple References)
The claim is provisionally rejected on the grounds of nonstatutory double patenting of the claim of copending Application No. [1] in view of [2]. At the time applicant made the design, it would have been obvious to a designer of ordinary skill in the art to [3] as demonstrated by [4]. This is a provisional nonstatutory double patenting rejection because the conflicting claims have not in fact been patented.
Examiner Note:
1. In bracket 1, insert conflicting application number.
2. In bracket 2, insert secondary reference(s).
3. In bracket 3, insert an explanation of how the conflicting claim in the copending application is modified.
4. In bracket 4, identify the secondary reference(s) teaching the modification(s).
5. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.68.
¶ 15.68 Rationale for 35 U.S.C. 103 Rejection (Multiple References)
This modification of the primary reference in light of the secondary reference is proper because the applied references are so related that the appearance of features shown in one would suggest the application of those features to the other. See In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982), and In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956). Further, it is noted that case law has held that a designer skilled in the art is charged with knowledge of the related art; therefore, the combination of old elements, herein, would have been well within the level of ordinary skill. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).
1504.07
-1504.09 [Reserved]
1504.10 Priority Under 35 U.S.C. 119(a)-(d), 386(a) and (b) [R-07.2015]
35 U.S.C. 172 Right of priority.
The right of priority provided for by subsections (a) through (d) of section 119 shall be six months in the case of designs. The right of priority provided for by section 119(e) shall not apply to designs.
The provisions of 35 U.S.C. 119(a)-(d), 172, 386(a) and (b) apply to design patent applications. In order to obtain the benefit of an earlier foreign filing date, the United States application must be filed within 6 months of the earliest date on which any foreign application for the same design was filed. Under certain conditions, a right of priority to a foreign application may be restored if the U.S. design application is filed within two months of the expiration of the six-month period specified in 35 U.S.C. 172. See 37 CFR 1.55(c). Design applications may not make a claim for priority of a provisional application under 35 U.S.C. 119(e). See 37 CFR 1.55 and MPEP § 213 - 216 for further information concerning the right of priority to a foreign application and the formal requirements applicable thereto.
¶ 15.01 Conditions Under 35 U.S.C. 119(a)-(d), 172, 386(a) and (b)
Applicant is advised of conditions as specified in 35 U.S.C. 119(a)-(d), 172, 386(a) and (b). An application for a design patent for an invention filed in this country by any person who has, or whose legal representatives have previously filed an application for a design patent, or equivalent protection for the same design in a foreign country which offers similar privileges in the case of applications filed in the United States or in a WTO member country, or to citizens of the United States, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within six (6) months from the earliest date on which such foreign application was filed. If the design application is filed within two months from the expiration of the six-month period and the delay was unintentional, the right of priority in the design application may be restored by filing a petition under 37 CFR 1.55(c).
¶ 15.01.01 Conditions Under 35 U.S.C. 172 Not Met
The claim for priority under 35 U.S.C. 119(a)-(d), 386(a) or (b) to the [1] application is acknowledged, however, the claim for
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priority cannot be based on such application since it was filed more than six (6) months before the filing date of the subsequent application in the United States and no petition to restore the right of priority under 37 CFR 1.55(c) has been granted. 35 U.S.C 172.
Applicant may wish to file a petition under 37 CFR 1.55(c) to restore the right of priority if the subsequent application was filed within two months from the expiration of the six-month period and the delay was unintentional. A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a) - (d), 386(a) or (b) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the six-month period was unintentional. The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia, 22313-1450.
Examiner Note:
In bracket 1, insert the name of the foreign country.
¶ 15.03 Certified Copy Filed, But Proper Claim Not Made
Receipt is acknowledged of a certified copy of foreign application [1]. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d), 386(a) or (b), applicant should also file a claim for such priority as required by 35 U.S.C. 119(b). If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.
In the case of a design application, the claim for priority must be presented during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e). If the claim for priority is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
Examiner Note:
In bracket 1, insert the application number of the foreign application.
For design applications filed on or after May 13, 2015, a claim for priority may be made pursuant 35 U.S.C. 386(a) to an international design application
filed under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, provided the international design application designates at least one Contracting Party other than the United States. The United States will also recognize claims for the right of priority under 35 U.S.C. 119(a)-(d) based on applications filed under such bilateral or multilateral treaties as the “Hague Agreement Concerning the International Deposit of Industrial Designs,” “Uniform Benelux Act on Designs and Models” and “European Community Design.” In filing a claim for priority of a foreign application previously filed under such a treaty, certain information must be supplied to the United States Patent and Trademark Office. The required information is:
(A) the application number,
(B) the date of filing of the foreign application,
(C) the name and location of the national or inter-governmental authority which received the application. ¶ 15.02 Claimed Foreign Priority, No Certified Copy Filed
Acknowledgment is made of applicant’s claim for foreign priority based on an application filed in [1] on [2]. It is noted, however, that applicant has not filed a certified copy of the [3] application as required by 37 CFR 1.55. In the case of a design application, the certified copy must be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(g) together with the fee set forth in 37 CFR 1.17(g), that includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application. If the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
Examiner Note:
1. In bracket 1, insert the name of the country or intellectual property authority.
2. In bracket 2, insert the filing date of the foreign application.
3. In bracket 3, insert the application number of the foreign application.
The notation requirement on design patent application file wrappers when foreign priority is claimed is set forth in MPEP § 202.
¶ 15.04 Priority Under Bilateral or Multilateral Treaties
The United States will recognize claims for the right of priority under 35 U.S.C. 119(a)-(d) based on applications filed under
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such bilateral or multilateral treaties as the Hague Agreement Concerning the International Deposit of Industrial Designs, the Benelux Designs Convention and European Community Design. In filing a claim for priority of a foreign application previously filed under such a treaty, certain information must be supplied to the United States Patent and Trademark Office. The required information is (1) the application number: (2) the date of filing of the application, and (3) the name and location of the national or international governmental authority which received such application.
1504.11 -1504.19 [Reserved]
1504.20 Benefit Under 35 U.S.C. 120 [R-07.2015]
35 U.S.C. 120 Benefit of earlier filing date in the United States.
[Editor Note: Applicable to a patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 120 (pre-AIA) for the law otherwise applicable.]
An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section.
35 U.S.C. 120 (pre-AIA) Benefit of earlier filing date in the United States.
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed
on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.
For a benefit claim under 35 U.S.C. 120, the later-filed application must contain a reference to the prior-filed copending application. For applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet (37 CFR 1.76). For applications filed prior to September 16, 2012, the specific reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet. The prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, the prior-filed application must either be: (i) a nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in §§ 1.53(b) or 1.53(d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application, (ii) an international design application entitled to a filing date in accordance with § 1.1023 and designating the United States; or (iii) an international application entitled to a filing date in accordance with PCT Article 11 and designating the United States. See 37 CFR 1.78(d).
Except as provided for in 37 CFR 1.78(e), the failure to timely submit the reference required under 35 U.S.C. 120 and 37 CFR 1.78 in a design application during its pendency is considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c) or 386(c). See 37 CFR 1.78(d)(3)(iii).
See MPEP § 211 for additional information concerning benefit claims under 35 U.S.C. 120.
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§ 1504.20DESIGN PATENTS
Form paragraph 15.26 may be used to remind applicant where a reference to the prior application must be included in the first sentence(s) of the specification or in an application data sheet.
¶ 15.26 Identification of Prior Application(s) in Nonprovisional Applications - Benefit Claimed
Applicant is reminded of the following requirement:
To claim the benefit of a prior-filed application, a continuation or divisional application (other than a continued prosecution application filed under 37 CFR 1.53(d)), must include a specific reference to the prior-filed application in compliance with 37 CFR 1.78. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.
Attention is directed to the requirements for “continuing” applications set forth in MPEP §§ 201.07, 201.08, and § 211. Applicants are entitled to claim the benefit of the filing date of earlier applications for later claimed inventions under 35 U.S.C. 120 only when the earlier application discloses that invention in the manner required by 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph). In all continuation and divisional applications, a determination must be made by the examiner as to whether the conditions for priority under 35 U.S.C. 120 have been met. The claimed design in a continuation application and in a divisional application must be disclosed in the original application. If this condition is not met, the application is not entitled to the benefit of the earlier filing date and the examiner should notify applicant accordingly by specifying the reasons why applicant is not entitled to claim the benefit under 35 U.S.C. 120. Form paragraphs 2.09, 2.10 and 2.10.01 may be used followed by a specific explanation as to why the later filed application fails to comply with the requirements of 35 U.S.C. 120. The examiner should also require applicant to change the relationship (continuation or divisional application) to continuation-in-part or delete the benefit claim. For applications filed on or after September 16, 2012,
applicant can delete or change the benefit claim by filing a corrected application data sheet in compliance with 37 CFR 1.76(c). For applications filed prior to September 16, 2012, applicant can delete or change the benefit claim by amending the specification (if the benefit claim is in the specification) or by submitting a supplemental application data sheet in compliance with pre-AIA 37 CFR 1.76(c). If applicant chooses to change the relationship (continuation or divisional application) to continuation-in-part, note that for applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is incompliance with 37 CFR 1.64. See 37 CFR 1.63(d)(1). See MPEP § 602.05(a) for more information regarding the oath or declaration in continuing applications filed on or after September 16, 2012. For continuation-in-part applications filed before September 16, 2012, a newly executed oath or declaration must be filed. See pre-AIA 37 CFR 1.63(e).
In general, a mere statement that an application is a continuation or division of an earlier filed application is not an incorporation of anything into the application containing such reference for purposes of satisfying the disclosure requirements of 35 U.S.C. 112(a), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph). See In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). See also MPEP § 608.01(p). However, for applications filed on or after September 21, 2004, 37 CFR 1.57(b) provides that a claim under 37 CFR 1.78 for the benefit of a prior-filed application, that was present on the filing date of the application, is considered an incorporation by reference as to inadvertently omitted material. See MPEP § 217.
A continuation-in-part application is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the earlier nonprovisional application. Only when the claim of the continuation-in-part application is disclosed in
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the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph in the earlier nonprovisional application will the claim be entitled to the benefit of the filing date of the earlier nonprovisional application. However, unless the filing date of the earlier application is needed, such as with the existence of intervening prior art, the entitlement to benefit in the continuation in part application, as based on 35 U.S.C. 120, will not be considered by the examiner. See In re Corba, 212 USPQ 825 (Comm’r Pat. 1981 ).
When the first application is found to be fatally defective under 35 U.S.C. 112 because of insufficient disclosure to support an allowable claim and such position has been made of record by the examiner, a second design patent application filed as an alleged “continuation-in-part” of the first application to supply the deficiency is not entitled to the benefit of the earlier filing date. See Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 83 USPQ 277 (F2d Cir. 1949) and cases cited therein. Also, a design application filed as a “continuation-in-part” that changes the shape or configuration of a design disclosed in an earlier application is not entitled to the benefit of the filing date of the earlier application. See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). However, a later filed application that changes the scope of a design claimed in an earlier filed application by reducing certain portions of the drawing to broken lines is not a change in configuration as defined by the court in Salmon. See MPEP § 1504.04, subsection II.
Form paragraph 15.74 may be used in an Office action in any application identified as a continuation-in-part which claims benefit under 35 U.S.C. 120 to a prior application and the examiner has not considered whether the application is entitled to benefit of the earlier filing date. Form paragraph 15.74.01 should be used where there is intervening prior art and the examiner has determined that the application is not entitled to benefit of the earlier filing date.
¶ 15.74 Continuation-In-Part
Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Unless the filing date of the earlier application is actually needed, such as to avoid intervening prior art, the entitlement to priority in this CIP
application will not be considered. See In re Corba, 212 USPQ 825 (Comm’r Pat. 1981).
Examiner Note:
This form paragraph should be used to notify applicant that the C-I-P application is not entitled to the benefit of the parent application under 35 U.S.C. 120.
¶ 15.74.01 Continuation-In-Part – Not Entitled To Benefit of Earlier Filing Date
Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design claimed in the present application is not disclosed in the parent application. Therefore, the parent application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 for the design claimed in the present application and the present application is not entitled to the benefit of the earlier filing date. Because the present application is not entitled to the benefit of the earlier filing date of the parent application, the parent application is available as prior art under 35 U.S.C. 102 .
Examiner Note:
This form paragraph should be used to notify applicant that the C-I-P application is not entitled to the benefit of the parent application under 35 U.S.C. 120.
Where a continuation-in-part application claims benefit under 35 U.S.C. 120 of the filing date of an earlier application, and also claims priority under 35 U.S.C. 119(a)-(d) of a foreign application through the earlier application, and the conditions of 35 U.S.C. 120 are not met, e.g., insufficient disclosure under 35 U.S.C. 112, the continuation-in-part application is not entitled to the benefit of the filing date of the parent application. In this situation, a determination must be made as to whether the foreign application would qualify as prior art under pre-AIA 35 U.S.C. 102(d)/172. To qualify as prior art under pre-AIA 35 U.S.C. 102(d)/172, the foreign application (for patent or registration) must have been filed more than six months before the filing date of the U.S. (CIP) application and the foreign application for patent/registration must have matured into a form of patent protection prior to the filing date of the U.S. (CIP) application. To determine the status of the foreign application, the charts in MPEP § 1504.02 should be used. If the foreign application for patent/registration has matured into a form of patent protection, the foreign application would qualify as prior art under pre-AIA 35 U.S.C. 102(d)/172 and the examiner should consider
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whether the design shown in the foreign application papers would anticipate or render the claim in the CIP application obvious. If the design shown in the foreign application papers would anticipate or render the claim in the CIP application obvious, the claim should be rejected under 35 U.S.C. 102/103 using form paragraphs 15.74.01 and 15.75.fti followed with a rejection under pre-AIA 35 U.S.C. 102(d)/pre-AIA 35 U.S.C. 103(a).
¶ 15.75.fti Preface to Rejection in CIP Based on pre-AIA 35 U.S.C. 102(d)/35 U.S.C.172
Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design disclosed in the parent application is not the same design as the design disclosed in this application. Therefore, this application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not entitled to benefit of the earlier filing date.
The parent application claimed foreign priority under 35 U.S.C. 119(a) -(d), however, the present application is not entitled to the benefit of the earlier filing date of the parent application. The foreign application that the parent application has claimed priority to has matured into a patent/registration before the filing date of the present application and was filed more than six months before the filing date of the present application. Therefore, the foreign patent/registration qualifies as prior art under pre-AIA 35 U.S.C. 102(d)/35 U.S.C. 172.
Examiner Note:
This form paragraph should be followed with a rejection under pre-AIA 35 U.S.C. 102(d)/ pre-AIA 35 U.S.C. 103(a) depending on the difference(s) between this claim and the design shown in the priority papers.
If the status of the foreign application cannot be determined the following form paragraph should be used instead.
¶ 15.75.01.fti C-I-P Caution, Claim to Foreign Priority in Earlier Filed Application - Status of Foreign Application Unknown
Reference to this application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design disclosed in the parent application is not the same design as the design disclosed in this application. Therefore, this application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not entitled to benefit of the earlier filing date.
The parent application claimed foreign priority under 35 U.S.C. 119(a)-(d). Applicant is reminded that if the foreign application to which priority was claimed matured into a patent/registration
before the filing of the present application and was filed more than six months before the filing date of the present application, the foreign patent/registration qualifies as prior art under pre-AIA 35 U.S.C. 102(d)/35 U.S.C. 172.
Therefore, Applicant is requested to inform the Office of the status of the foreign application to which priority is claimed.
Where the conditions of 35 U.S.C. 120 are met, a design application may be considered a continuing application of an earlier utility application. Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 11 USPQ2d 1300 (Fed. Cir. 1989). Conversely, this also applies to a utility application relying on the benefit of the filing date of an earlier filed design application. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991). In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application.
Note also In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) where the benefit of a design patent application filing date requested under 35 U.S.C. 120 was denied in the later filed utility application of the same inventor. The Court of Customs and Patent Appeals took the position that the design application did not satisfy 35 U.S.C. 112, first paragraph, as required under 35 U.S.C. 120.
1504.21 -1504.29 [Reserved]
1504.30 Expedited Examination [R-07.2015]
37 CFR 1.155 Expedited examination of design applications.
(a) The applicant may request that the Office expedite the examination of a design application. To qualify for expedited examination.
(1) The application must include drawings in compliance with § 1.84, or for an international design application that designates the United States, must have been published pursuant to Hague Agreement Article 10(3);
(2) The applicant must have conducted a preexamination search; and
(3) The applicant must file a request for expedited examination including:
(i) The fee set forth in § 1.17(k); and
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1504.21 -1504.29
(ii) A statement that a preexamination search was conducted. The statement must also indicate the field of search and include an information disclosure statement in compliance with § 1.98.
(b) The Office will not examine an application that is not in condition for examination ( e.g., missing basic filing fee) even if the applicant files a request for expedited examination under this section.
37 CFR 1.155 establishes an expedited procedure for design applications. This expedited procedure is available to design applicants who first conduct a preliminary examination search and file a request for expedited treatment accompanied by the fee specified in 37 CFR 1.17(k). This expedited treatment is intended to fulfill a particular need by affording rapid design patent protection that may be especially important where marketplace conditions are such that new designs on articles are typically in vogue for limited periods of time. The expedited procedure is available for international design applications designating the United States that have been published pursuant to HagueAgreementArticle 10(3).
A design application may qualify for expedited examination provided the following requirements are met:
(A) A request for expedited examination is filed (Form PTO/SB/27 should be used);
(B) The design application is complete and includes drawings in compliance with 37 CFR 1.84 (see 37 CFR 1.154 and MPEP § 1503 concerning the requirements for a complete design application), or is an international design application designating the United States that was published pursuant to Hague Agreement Article 10(3);
(C) A statement is filed indicating that a preexamination search was conducted (a search made by a foreign patent office satisfies this requirement). The statement must also indicate the field of search such as by U.S. Class and Subclass (including domestic patent documents, foreign patent documents and nonpatent literature);
(D) An information disclosure statement in compliance with 37 CFR 1.98 is filed;
(E) The basic design application filing fee set forth in 37 CFR 1.16(b), if applicable, is paid; and
(F) The fee for expedited examination set forth in 37 CFR 1.17(k) is paid.
EXPEDITED EXAMINATION PROCEDURE
Design applications requesting expedited examination and complying with the requirements of 37 CFR 1.155 are examined with priority and undergo expedited processing throughout the entire course of prosecution in the Office, including appeal, if any, to the Patent Trial and Appeal Board. All processing is expedited from the date the request is granted.
Design applicants seeking expedited examination may file a design application under 35 U.S.C. chapter 16 in the Office together with a corresponding request under 37 CFR 1.155 by EFS-Web, mail, or by hand-delivering the application papers and the request to the Customer Service Window located at the Randolph Building, 401 Dulany Street, Alexandria, VA 22314. For applicants who choose to file a design application under 35 U.S.C. chapter 16 and the corresponding request under 37 CFR 1.155 via EFS-Web, the document description “Req for Expedited Processing, Design Rocket Docket” should be used to ensure efficient processing of the request. For applicants who choose to file a design application under 35 U.S.C. chapter 16 and the corresponding request under 37 CFR 1.155 by mail, the envelope should be addressed to:
Mail Stop Expedited Design Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
A request under 37 CFR 1.155 may also be made for a previously filed design application. Mail Stop Expedited Design should also be used when filing a request for expedited examination under 37 CFR 1.155 by mail in a previously filed design application. A subsequently filed request under 37 CFR 1.155 may also be filed via EFS-Web. In such case, the document description “Req for Expedited Processing, Design Rocket Docket” in EFS-Web should be used for the request to ensure efficient processing of the request. In addition, a subsequently filed request under 37 CFR 1.155 may be filed by facsimile transmission to the centralized facsimile number 571-273-8300.
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To facilitate processing of a request for expedited examination, the Office strongly encourages use of Fo r m P TO / S B / 2 7 ava i l a b l e a t www.uspto.gov/patent/patents-forms. If Form PTO/SB/27 is not used, then the notations “REQUEST FOR EXPEDITED EXAMINATION OF A DESIGN APPLICATION (37 CFR 1.155)” and “Doc Code: ROCKET” should be included at the top of the first page of the request, and for a subsequently filed request the corresponding application number should also be identified.
Requests for expedited examination under 37 CFR 1.155 are decided by the Director of Technology Center 2900. Expedited examination will be initiated provided the application is in condition for examination and a complete request under 37 CFR 1.155 (including the fee specified at 37 CFR 1.17(k)) qualifies the application for expedited examination.
Upon a decision by the Director of Technology Center 2900 to grant the request for expedited examination, the application is dispatched to an examiner for expedited examination. In addition, the applicant is notified that examination is being expedited. The expedited treatment under 37 CFR 1.155 occurs through initial examination processing and throughout the entire prosecution in the Office. Whereas, an application granted special status pursuant to a successful “petition to make special” under MPEP § 708.02 is prioritized while it is on the examiner’s docket so that the application will be examined out of turn responsive to each successive communication from the applicant requiring Office action. For a patentable design application, the expedited treatment under 37 CFR 1.155 would be a streamlined filing-to-issuance procedure. This procedure further expedites design application processing by decreasing clerical processing time as well as the time spent routing the application between processing steps.
Although a request under 37 CFR 1.155 may be filed subsequent to the filing of the design application under 35 U.S.C. chapter 16, it is recommended that the request and corresponding design application be filed together in order to optimize expeditious processing. Any request under 37 CFR 1.155 in an international design application designating the United States should be filed after publication of the
international design application pursuant to Hague Agreement Article 10(3), as publication of the international design application is required in order to qualify for expedited examination. See 37 CFR 1.155(a)(1). Any request under 37 CFR 1.155 filed in an international design application will generally not be acted upon prior to publication of the application pursuant to Article 10(3). Applicants filing international design applications and seeking expedited examination in the United States may wish to consider requesting the immediate publication of the international design application after registration pursuant to Rule 17(1) of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.
The Office will not examine an application that is not in condition for examination even if the applicant files a request for expedited examination. See 37 CFR 1.155(b).
If the Office finds that a request for expedited examination fails to comply with one or more of the requirements under 37 CFR 1.155, but the application is otherwise complete, the applicant will be promptly notified of the deficiency. Applicant may submit a renewed request under 37 CFR 1.155 to rectify the deficiency. Unless all requirements under 37 CFR 1.155 are timely met, the application will await action in its regular turn.
1505 Allowance and Term of Design Patent [R-07.2015]
35 U.S.C. 173 Term of design patent.
Patents issued from design applications filed on or after May 13, 2015 shall be granted for the term of fifteen years from the date of grant. Patents issued from design applications filed before May 13, 2015 shall be granted for the term of fourteen years from the date of grant.
1506
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-1508 [Reserved]
1509 Reissue of a Design Patent [R-11.2013]
See MPEP Chapter 1400 for practice and procedure in reissue applications. See also MPEP § 1457 regarding design reissue applications.
For design reissue application filing, search and examination fees, see 37 CFR 1.16(e). For the fee for issuing a reissue design patent, see 37 CFR 1.18(a).
The term of a design patent may not be extended by reissue. See Ex parte Lawrence, 70 USPQ 326 (Comm’r Pat. 1946). If a reissue application is filed for the purpose of correcting the drawing of a design patent, either by canceling views, amending views or adding new views, the provisions of 37 CFR 1.173(b)(3) must be followed. All changes to the patent drawing shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawing. A marked-up copy of any amended drawing figure, including annotations indicating the changes made, should be submitted. The marked-up copy must be clearly labeled as “Annotated Marked-up Drawings” and it must be presented in the amendment or remarks section that explains the change to the drawing.
A reissue application must be filed with a copy of all drawing views of the design patent regardless of whether certain views are being cancelled or amended in the reissue application. Inasmuch as the drawing is the primary means for showing the design being claimed, it is important for purposes of comparison that the reissue of the design patent shows a changed drawing view in both its canceled and amended versions and/or show a previously printed drawing view that has been canceled but not replaced. In addition to drawing views that are unchanged from the original design patent, the drawing in the reissue application may include the following views, all of which will be printed as part of the design reissue patent:
(1) CANCELED drawing view. Such a drawing view must be surrounded by brackets and must be labeled as “Canceled.” For example, FIG. 3 (Canceled). If a drawing view is canceled but not replaced the corresponding figure description in the reissue specification must also be cancelled. However, if a drawing view is cancelled and replaced by an amended drawing view the corresponding figure description in the reissue specification may or may not need to be amended.
(2) AMENDED drawing view. Such a drawing view must be labeled as “Amended.” For example, FIG. 3 (Amended). When an amended drawing view is present, there may or may not be a corresponding canceled drawing view. If there is such a corresponding canceled drawing view, the amended and canceled drawing views should have the same figure number. The specification of the reissue application need not indicate that there is both a canceled version and an amended version of the drawing view.
(3) NEW drawing view. Such a drawing view must be labeled as “New” For example, FIG. 5 (New). The new drawing view should have a new figure number, that is, a figure number that did not appear in the original design patent. The specification of the reissue application must include a figure description of the new drawing view.
If a drawing view includes both a cancelled and amended version, and the change in the amended version is for the purpose of converting certain solid lines to broken lines, the reissue specification must
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include a statement indicating the purpose of the broken lines.
1510 Reexamination [R-08.2012]
See MPEP Chapter 2200 for practice and procedure for reexamination applications.
1511 Protest [R-08.2012]
See MPEP Chapter 1900 for practice and procedure in protest.
1512 Relationship Between Design Patent, Copyright, and Trademark [R-07.2015]
I. DESIGN PATENT/COPYRIGHT OVERLAP
There is an area of overlap between copyright and design patent statutes where the author/inventor can secure both a copyright and a design patent. Thus an ornamental design may be copyrighted as a work of art and may also be subject matter of a design patent. The author/inventor may not be required to elect between securing a copyright or a design patent. See In re Yardley, 493 F.2d 1389, 181 USPQ 331. In Mazer v. Stein, 347 U.S. 201, 100 USPQ 325 (1954), the Supreme Court noted the election of protection doctrine but did not express any view on it since a design patent had been secured in the case and the issue was not before the Court.
See form paragraph 15.55 which repeats this information.
II. INCLUSION OF COPYRIGHT NOTICE
It is the policy of the U.S. Patent and Trademark Office to permit the inclusion of a copyright notice in a design patent application, and thereby any patent issuing therefrom, under the following conditions.
(A) A copyright notice must be placed adjacent to the copyright material and, therefore, may appear at any appropriate portion of the patent application disclosure including the drawing. However, if appearing on the drawing, the notice must be limited in print size from 1/8 inch to 1/4 inch and must be placed within the “sight” of the drawing immediately below the figure representing the copyright material.
If placed on a drawing in conformance with these provisions, the examiner will not object to the notice as extraneous matter under 37 CFR 1.84.
(B) The content of the copyright notice must be limited to only those elements required by law. For example, “© 1983 John Doe” would be legally sufficient under 17 U.S.C. 401 and properly limited.
(C) Inclusion of a copyright notice will be permitted only if the following waiver is included at the beginning (preferably as the first paragraph) of the specification to be printed for the patent:
A portion of the disclosure of this patent document contains material to which a claim for copyright is made. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but reserves all other copyright rights whatsoever.
(D) Inclusion of a copyright notice after a Notice of Allowance has been mailed will be permitted only if the criteria of 37 CFR 1.312 have been satisfied.
Any departure from these conditions may result in a refusal to permit the desired inclusion. If the waiver required under condition (C) above does not include the specific language “(t)he copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the U.S. Patent and Trademark Office patent file or records....”, the examiner will object to the copyright notice as improper.
See form paragraph 15.55 which repeats this information.
¶ 15.55 Design Patent-Copyright Overlap
There is an area of overlap between Copyright and Design Patent Statutes where an author/inventor can secure both a Copyright and a Design Patent. Thus, an ornamental design may be copyrighted as a work of art and may also be the subject matter of a Design Patent. The author/inventor may not be required to elect between securing a copyright or a design patent. See In re Yardley, 493 F. 2d 1389, 181 USPQ 331 (CCPA 1974). In Mazer v. Stein, 347 U.S. 201, 100 USPQ 325 (U.S. 1954), the
Supreme Court noted the election of protection doctrine but did not express any view on it since a Design Patent had been secured in the case and the issue was not before the Court.
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It is the policy of the Patent and Trademark Office to permit the inclusion of a copyright notice in a Design Patent application, and thereby any patent issuing therefrom, under the following conditions:
(1) A copyright notice must be placed adjacent to the copyright material and, therefore, may appear at any appropriate portion of the patent application disclosure including the drawing. However, if appearing on the drawing, the notice must be limited in print size from 1/8 inch to 1/4 inch and must be placed within the “sight” of the drawing immediately below the figure representing the copyright material. If placed on a drawing in conformance with these provisions, the examiner will not object to the notice as extraneous matter under 37 CFR 1.84.
(2) The content of the copyright notice must be limited to only those elements required by law. For example, “© 1983 John Doe” would be legally sufficient under 17 U.S.C. 401 and properly limited.
(3) Inclusion of a copyright notice will be permitted only if the following waiver is included at the beginning (preferably as the first paragraph) of the specification to be printed for the patent:
A portion of the disclosure of this patent document contains material to which a claim for copyright is made. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but reserves all other copyrights whatsoever.
(4) Inclusion of a copyright notice after a Notice of Allowance has been mailed will be permitted only if the criteria of 37 CFR 1.312 have been satisfied.
Any departure from these conditions may result in a refusal to permit the desired inclusion. If the waiver required under condition (3) above does not include the specific language “(t)he copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records...,” the examiner will object to the copyright notice as improper.
The files of design patents D-243,821, D-243,824, and D-243,920 show examples of an earlier similar procedure.
III. DESIGN PATENT/TRADEMARK OVERLAP
A design patent and a trademark may be obtained on the same subject matter. The CCPA, in In re Mogen David Wine Corp., 328 F.2d 925, 140 USPQ 575 (CCPA 1964), later reaffirmed by the same court at 372 F.2d 539, 152 USPQ 593 (CCPA 1967), held that the underlying purpose and essence of patent rights are separate and distinct from those pertaining
to trademarks, and that no right accruing from one is dependent or conditioned by the right concomitant to the other.
See form paragraph 15.55.01 which repeats this information.
¶ 15.55.01 Design Patent - Trademark Overlap
A design patent and a trademark may be obtained on the same subject matter. The Court of Customs and Patent Appeals, in In re Mogen David Wine Corp., 328 F.2d 925, 140 USPQ 575
(CCPA 1964), later reaffirmed by the same court at 372 F.2d 539, 152 USPQ 593 (CCPA 1967), has held that the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks, and that no right accruing from the one is dependent upon or conditioned by any right concomitant to the other.
IV. INCLUSION OF TRADEMARKS IN DESIGN PATENT APPLICATIONS
A. Specification
The use of trademarks in design patent application specifications is permitted under limited circumstances. See MPEP § 608.01(v). This section assumes that the proposed use of a trademark is a legal use under federal trademark law.
B. Title
It is improper to use a trademark alone or coupled with the word “type” (e.g., Band-Aid type Bandage) in the title of a design. Examiners must object to the use of a trademark in the title of a design application and require its deletion therefrom.
C. Drawings
When a trademark is used in the drawing disclosure of a design application, the specification must include a statement preceding the claim identifying the trademark material forming part of the claimed design and the name of the owner of the registered trademark. Form paragraph 15.76 may be used.
¶ 15.76 Trademark in Drawing
The [1] forming part of the claimed design is a registered trademark of [2]. The specification must be amended to include a statement preceding the claim identifying the trademark
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§ 1512DESIGN PATENTS
material forming part of the claimed design and the name of the owner of the trademark.
Examiner Note:
1. In bracket 1, identify the trademark material.
2. In bracket 2, identify the trademark owner.
Any derogatory use of a trademark in a design application is prohibited and will result in a rejection of the claim under 35 U.S.C. 171 as being offensive and, therefore, improper subject matter for design patent protection. Cf. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 203 USPQ 161 (2d Cir. 1979) and Coca-Cola Co. v. Gemini Rising Inc., 346 F. Supp. 1183, 175 USPQ 56 (E.D.N.Y. 1972).
1513 Miscellaneous [R-11.2013]
With respect to copies of references being supplied to applicant in a design patent application, see MPEP § 707.05(a).
Effective May 8, 1985, the Statutory Invention Registration (SIR), 35 U.S.C. 157, and 37 CFR 1.293-1.297 replaced the former Defensive Publication Program. The Statutory Invention Registration (SIR) Program applies to utility, plant, and design applications. Effective March 16, 2013, the provisions of 35 U.S.C. 157 were repealed.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1513
Chapter 1600 Plant Patents
Introduction: The Act, Scope, Type of Plants Covered
1601
Rules Applicable1602 Elements of a Plant Application1603 Applicant, Oath or Declaration1604 Specification and Claim1605 Drawings1606 Specimens1607 Examination1608 Report of Agricultural Research Service
1609
The Action1610 Issue1611 UPOV Convention1612 Right of Priority Based upon Application for Plant Breeder’s Rights
1613
1601 Introduction: The Act, Scope, Type of Plants Covered [R-11.2013]
The right to a plant patent stems from:
35 U.S.C. 161 Patents for plants.
Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided.
Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc. Plants capable of sexual reproduction are not excluded from consideration if they have also been asexually reproduced.
With reference to tuber propagated plants, for which a plant patent cannot be obtained, the term “tuber” is used in its narrow horticultural sense as meaning a short, thickened portion of an underground branch. Such plants covered by the term “tuber propagated” are the Irish potato and the Jerusalem artichoke. This exception is made because this group alone, among asexually reproduced plants, is propagated by the same part of the plant that is sold as food.
The term “plant” has been interpreted to mean “plant” in the ordinary and accepted sense and not in the strict scientific sense and thus excludes bacteria. In re Arzberger, 112 F. 2d 834, 46 USPQ 32 (CCPA 1940). The term “plant” thus does not include asexual propagating material, per se. Ex parte Hibberd, 227 USPQ 443, 447 (Bd. Pat. App. & Int. 1985).
35 U.S.C. 161 originated as an amendment to the pre-existing patent statute with the Plant Patent Act of 1930. As enacted, the “invents or discovers” requirement limited patent protection to plants “that were created as a result of plant breeding or other agricultural and horticultural efforts and that were created by the inventor.” In re Beineke, 690 F.3d 1344, 1352, 103 USPQ2d 1872, 1877 (Fed. Cir. 2012). The plant patent provisions were separated from the utility patent provisions in the Patent Act of 1952 to create 35 U.S.C. 161. Id. at 1348 n.2, 103 USPQ2d 1875 n.2. 35 U.S.C. 161 was amended in 1954 to extend protection to “newly found seedlings,” provided they were found in a cultivated state, but did not otherwise alter the scope of plant patent protection. Id. at 1352-53, 103 USPQ2d at 1878-79. In Beineke, the Federal Circuit held that two century-old oak trees found on the lawn of a home were ineligible for patent protection under 35 U.S.C. 161 because they were not created from inception by human activity and created by the inventor (i.e., the patent applicant) as required by the 1930 Act, nor were they “newly found seedlings” under the 1954 amendment. Id. at 1348, 1352, 103 USPQ2d at 1875, 1879.
In reviewing the history of the Plant Patent Act, the Supreme Court explained:
Prior to 1930, two factors were thought to remove plants from patent protection. The first was the belief that plants, even those artificially bred, were products of nature for purposes of the patent law…. The second obstacle to patent protection for plants was the fact that plants were thought not amenable to the “written description” requirement of the patent law. See U.S.C. § 112.
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In enacting the Plant Patent Act, Congress addressed both of these concerns. It explained at length its belief that the work of the plant breeder “in aid of nature” was patentable invention. S. Rep. No. 315, 71st Cong., 2d Sess., 6-8 (1930); H.R. Rep. No. 1129, 71st Cong., 2d Sess., 7-9 (1930). And it relaxed the written description requirement in favor of “a description … as complete as is reasonably possible.” 35 U.S.C. § 162.
Diamond v. Chakrabarty, 447 U.S. 303, 311-312 (1980).
An asexually reproduced plant may alternatively be protected under 35 U.S.C. 101, provided the written description requirement can be satisfied. See 35 U.S.C. 112. In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’ l, Inc., the Supreme Court held that patentable subject matter under 35 U.S.C. 101 includes newly developed plants, even though plant protection is also available under the Plant Patent Act (35 U.S.C. 161-164) and the Plant Variety Protection Act (7 U.S.C. 2321 et. seq.). J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’ l, Inc., 534 U.S. 124, 143-46, 122 S.Ct. 593, 605-06, 60 USPQ2d 1865, 1874 (2001) (The scope of coverage of 35 U.S.C. 101 is not limited by the Plant Patent Act or the Plant Variety Protection Act; each statute has different requirements and protections). An application filed under 35 U.S.C. 101 may claim the same asexually reproduced plant that is claimed under 35 U.S.C. 161, as well as plant materials and processes involving plant materials. See MPEP § 2105.
The filing of a terminal disclaimer may be used in appropriate situations to overcome an obviousness-type double patenting rejection based on claims to the asexually reproduced plant and/or fruit and propagating material thereof in an application under 35 U.S.C. 101 and the claim to the same asexually reproduced plant in an application under 35 U.S.C. 161.
35 U.S.C. 163 Grant.
In the case of a plant patent, the grant shall include the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing
the plant so reproduced, or any parts thereof, into the United States.
As provided in 35 U.S.C. 161, the rights associated with a plant patent include the rights associated with a utility patent, and the “right to exclude” has additional terms provided in 35 U.S.C. 163. A plant patent issuing from an application filed after June 7, 1995 has a term which expires 20 years after the filing date of the application, or any earlier filing date claimed under 35 U.S.C. 120, 121 or 365(c) . See MPEP § 2701. Plant patent applications will be published pursuant to 35 U.S.C. 122(b).
1602 Rules Applicable [R-08.2012]
37 CFR 1.161 Rules applicable.
The rules relating to applications for patent for other inventions or discoveries are also applicable to applications for patents for plants except as otherwise provided.
1603 Elements of a Plant Application [R-11.2013]
37 CFR 1.163 Specification and arrangement of application elements in a plant application.
*****
(b) The elements of the plant application, if applicable, should appear in the following order:
(1) Plant application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings (in duplicate).
(6) The inventor's oath or declaration (§ 1.162).
*****
An application for a plant patent consists of the same parts as other applications. For information pertaining to the inventor's oath or declaration, specification and claim, or drawings, see MPEP § 1604, 1605, or 1606, respectively.
1604 Applicant, Oath or Declaration [R-11.2013]
37 CFR 1.162 Applicant, oath or declaration.
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1602
The inventor named for a plant patent application must be the person who has invented or discovered and asexually reproduced the new and distinct variety of plant for which a patent is sought. The inventor's oath or declaration, in addition to the averments required by § 1.63 or § 1.64, must state that the inventor has asexually reproduced the plant. Where the plant is a newly found plant, the inventor's oath or declaration must also state that it was found in a cultivated area.
37 CFR 1.162 (pre-AIA). Applicant, oath or declaration.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.]
The applicant for a plant patent must be the person who has invented or discovered and asexually reproduced the new and distinct variety of plant for which a patent is sought (or as provided in §§ 1.42, 1.43 and 1.47). The oath or declaration required of the applicant, in addition to the averments required by § 1.63, must state that he or she has asexually reproduced the plant. Where the plant is a newly found plant, the oath or declaration must also state that it was found in a cultivated area.
The inventor's oath or declaration, in addition to the averments required by 37 CFR 1.63 or 37 CFR 1.64, (or, for applications filed before September 16, 2012, pre-AIA 37 CFR 1.63) must state that the inventor has asexually reproduced the plant. Where the plant is a newly found plant, the inventor's oath or declaration must also state that it was found in a cultivated area.
A Plant Patent Application (35 U.S.C. 161) Declaration, Form PTO/AIA/09, may be used to submit a declaration in a plant application filed on or after September 16, 2012.
In an application for a plant patent, there can be joint inventors. See Ex parte Kluis, 70 USPQ 165 (Bd. App. 1945).
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§ 1604PLANT PATENTS
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1604
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§ 1604PLANT PATENTS
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1604
1605 Specification and Claim [R-11.2013]
35 U.S.C. 162 Description, claim.
No plant patent shall be declared invalid for noncompliance with section 112 if the description is as complete as is reasonably possible.
The claim in the specification shall be in formal terms to the plant shown and described.
37 CFR 1.163 Specification and arrangement of application elements in a plant application.
(a) The specification must contain as full and complete a disclosure as possible of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, and must particularly point out where and in what manner the variety of plant has been asexually reproduced. For a newly found plant, the specification must particularly point out the location and character of the area where the plant was discovered.
(b) The elements of the plant application, if applicable, should appear in the following order:
(1) Plant application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings (in duplicate).
(6) The inventor's oath or declaration (§ 1.162).
(c) The specification should include the following sections in order:
(1) Title of the invention, which may include an introductory portion stating the name, citizenship, and residence of the applicant.
(2) Cross-reference to related applications (unless included in the application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Latin name of the genus and species of the plant claimed.
(5) Variety denomination.
(6) Background of the invention.
(7) Brief summary of the invention.
(8) Brief description of the drawing.
(9) Detailed botanical description.
(10) A single claim.
(11) Abstract of the disclosure.
(d) The text of the specification or sections defined in paragraph (c) of this section, if applicable, should be preceded
by a section heading in upper case, without underlining or bold type.
37 CFR 1.164 Claim.
The claim shall be in formal terms to the new and distinct variety of the specified plant as described and illustrated, and may also recite the principal distinguishing characteristics. More than one claim is not permitted.
The specification should include a complete detailed description of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, expressed in botanical terms in the general form followed in standard botanical textbooks or publications dealing with the varieties of the kind of plant involved (evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather than a mere broad nonbotanical characterization such as commonly found in nursery or seed catalogs. The specification should also include the origin or parentage and the genus and species designation of the plant variety sought to be patented. The Latin name of the genus and species of the plant claimed should be stated and preceded by the heading set forth in 37 CFR 1.163(c)(4). The specification must particularly point out where, e.g., location or place of business, and in what manner the variety of plant has been asexually reproduced.
Form Paragraphs 16.01, 16.09, and 16.10 may be used to object to the disclosure under 37 CFR 1.163(a).
¶ 16.01 Specification, Manner of Asexually Reproducing
The application is objected to under 37 CFR 1.163(a) because the specification does not “particularly point out where and in what manner the variety of plant has been asexually reproduced.” Correction is required.
¶ 16.09 Specification, Less Than Complete Description
The disclosure is objected to under 37 CFR 1.163(a) because the specification presents less than a full and complete botanical description and the characteristics which distinguish over related known varieties. More specifically: [1].
¶ 16.10 Specification, Location of Plant Not Disclosed
The disclosure is objected to under 37 CFR 1.163(a) because the specification does not particularly point out the location and character of the area where the plant was discovered.
Where color is a distinctive feature of the plant, the color should be positively identified in the
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§ 1605PLANT PATENTS
specification by reference to a designated color as given by a recognized color dictionary or color chart.
Form Paragraphs 16.02 and 16.03 may be used to object to the disclosure or reject the claim, respectively, because of a lack of a clear and complete disclosure with regard to colors.
¶ 16.02 Colors Specified Do Not Correspond With Those Shown
The disclosure is objected to under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the [1] colors specified fail to correspond with those shown.
¶ 16.03 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Non-Support for Colors
The claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as being unsupported by a clear and complete disclosure with regard to [1] colors, for the following reasons: [2].
If the written description of a plant is deficient in certain respects (see, e.g., In re Greer, 484 F.2d 488, 179 USPQ 301 (CCPA 1973)), a clarification or additional description of the plant, or even a wholesale substitution of the original description so long as not totally inconsistent and unrelated to the original description and photograph of the plant may be submitted in reply to an Office action. Such submission will not constitute new matter under 35 U.S.C. 132. Jessel v. Newland, 195 USPQ 678, 684 (Dep. Comm’r Pat. 1977).
The rules on Deposit of Biological Materials, 37 CFR 1.801-1.809, do not apply to plant patent applications in view of the reduced disclosure requirements of 35 U.S.C. 162, even where a deposit of a plant has been made in conjunction with a utility application (35 U.S.C. 101).
A plant patent is granted only on the entire plant. Only one claim is necessary and only one is permitted. A method claim in a plant patent application is improper. An example of a proper claim would be “A new and distinct variety of hybrid tea rose plant, substantially as illustrated and described herein.”
1606 Drawings [R-11.2013]
37 CFR 1.165 Plant drawings.
(a) Plant patent drawings should be artistically and competently executed and must comply with the requirements of § 1.84. View numbers and reference characters need not be employed unless required by the examiner. The drawing must disclose all the distinctive characteristics of the plant capable of visual representation.
(b) The drawings may be in color. The drawing must be in color if color is a distinguishing characteristic of the new variety. Two copies of color drawings or photographs must be submitted.
If the drawings or photographs are in color, two color copies of each drawing or photograph are required. If the required copies of the drawings are not included, the application will be accorded a filing date, but correction will be required before the application is forwarded for examination.
37 CFR 1.84 Standards for drawings. *****
(c) Identification of drawings. Identifying indicia should be provided, and if provided, should include the title of the invention, inventor’s name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet within the top margin. Each drawing sheet submitted after the filing date of an application must be identified as either “Replacement Sheet” or “New Sheet” pursuant to § 1.121(d). If a marked-up copy of any amended drawing figure including annotations indicating the changes made is filed, such marked-up copy must be clearly labeled as “Annotated Sheet” pursuant to § 1.121(d)(1).
*****
(e) Type of paper. Drawings submitted to the Office must be made on paper which is flexible, strong, white, smooth, non-shiny, and durable. All sheets must be reasonably free from cracks, creases, and folds. Only one side of the sheet may be used for the drawing. Each sheet must be reasonably free from erasures and must be free from alterations, overwritings, and interlineations. Photographs must be developed on paper meeting the sheet-size requirements of paragraph (f) of this section and the margin requirements of paragraph (g) of this section. See paragraph (b) of this section for other requirements for photographs.
(f) Size of paper. All drawing sheets in an application must be the same size. One of the shorter sides of the sheet is regarded as its top. The size of the sheets on which drawings are made must be:
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or
(2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).
(g) Margins. The sheets must not contain frames around the sight ( i.e., the usable surface), but should have scan target points ( i.e., cross-hairs) printed on two cater-corner margin corners. Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby leaving a sight no greater
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1606
than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.
*****
(i) Arrangement of views. One view must not be placed upon another or within the outline of another. All views on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright position. If views wider than the width of the sheet are necessary for the clearest illustration of the invention, the sheet may be turned on its side so that the top of the sheet, with the appropriate top margin to be used as the heading space, is on the right-hand side. Words must appear in a horizontal, left-to-right fashion when the page is either upright or turned so that the top becomes the right side, except for graphs utilizing standard scientific convention to denote the axis of abscissas (of X) and the axis of ordinates (of Y).
*****
(t) Numbering of sheets of drawings. The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1, within the sight as defined in paragraph (g) of this section. These numbers, if present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second being the total number of sheets of drawings, with no other marking.
(u) Numbering of views.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation “FIG.” Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear.
(2) Numbers and letters identifying the views must be simple and clear and must not be used in association with brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference characters.
*****
(x) Holes. No holes should be made by applicant in the drawing sheets.
Form Paragraphs 16.06, 16.07, and 16.11 may be used to object to the drawing disclosure.
¶ 16.06 Color Drawings Must Be in Duplicate
The disclosure is objected to under 37 CFR 1.165(b) because applicant has not provided copies of the color drawing in duplicate. Correction is required.
¶ 16.07 Drawing Figures Not Competently Executed
The disclosure is objected to under 37 CFR 1.165(a) because Fig. [1] not artistically and/or competently executed.
¶ 16.11 Drawings in Improper Scale
The disclosure is objected to under 37 CFR 1.165(a) because the drawings are of an inadequate scale to show the distinguishing features of the plant.
1607 Specimens [R-08.2012]
37 CFR 1.166 Specimens.
The applicant may be required to furnish specimens of the plant, or its flower or fruit, in a quantity and at a time in its stage of growth as may be designated, for study and inspection. Such specimens, properly packed, must be forwarded in conformity with instructions furnished to the applicant. When it is not possible to forward such specimens, plants must be made available for official inspection where grown.
Specimens of the plant variety, its flower or fruit, should not be submitted unless specifically called for by the examiner.
Form Paragraph 16.13 may be used to require specimens.
¶ 16.13 Specimens Are Required
Applicant [1] required to submit [2] in accordance with 37 CFR 1.166.
1608 Examination [R-11.2013]
Plant applications are subject to the same examination process as any other national application. As such, the statutory provisions with regard to patentable subject matter, utility, novelty, obviousness, disclosure, and claim specificity requirements apply (35 U.S.C. 101, 102, 103, and 112). The sole exception in terms of applicability of these statutory provisions is set forth in 35 U.S.C. 162.
The prior art considered by the examiner is developed by a search of appropriate subclasses of the United States patent classification system as well
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§ 1608PLANT PATENTS
as patent and nonpatent literature data bases. Where appropriate, a report may be obtained from the Agricultural Research Service, Horticultural Research Branch, Department of Agriculture. See MPEP § 1609.
1609 Report of Agricultural Research Service [R-11.2013]
35 U.S.C. 164 Assistance of Department of Agriculture.
The President may by Executive order direct the Secretary of Agriculture, in accordance with the requests of the Director, for the purpose of carrying into effect the provisions of this title with respect to plants (1) to furnish available information of the Department of Agriculture, (2) to conduct through the appropriate bureau or division of the Department research upon special problems, or (3) to detail to the Director officers and employees of the Department.
37 CFR 1.167 Examination.
Applications may be submitted by the Patent and Trademark Office to the Department of Agriculture for study and report.
The authority for submitting plant applications to the Department of Agriculture for report is given in:
Executive Order No. 5464, October 17, 1930. Facilitating the consideration of applications for plant patents. I, Herbert Hoover, President of the United States ofAmerica, under the authority conferred upon me by act of May 23, 1930 (Public No. 245) [now 35 U.S.C. 164], entitled “An act to provide for plant patents,” and by virtue of all other powers vested in me relating thereto, do hereby direct the Secretary of Agriculture: (1) to furnish the Commissioner of Patents such available information of the Department of Agriculture, or (2) to conduct through the appropriate bureau or division of the department such research upon special problems, or (3) to detail to the Commissioner of Patents such officers and employees of the department, as the Commissioner may request for the purpose of carrying said act into effect.
Where the examiner considers it necessary to the examination of the plant patent application, a copy of the file and drawing of the application are forwarded to the National Program Leader for
Horticultural Crops, Agricultural Research Service (ARS), U.S. Department of Agriculture, along with a request for a report as to whether the plant variety disclosed is new and distinct over known plant varieties. As the report is merely advisory to the Office, it is placed in the file but is not given a paper number. The copy of the report is customarily utilized by the examiner in the preparation of his or her action on the application.
The report may embody criticisms and objections to the disclosure, may offer suggestions for correction of such, or the report may merely state that:
“Examination of the specification submitted indicates that the variety described is not identical with others with which our specialists are familiar.”
1610 The Action [R-08.2012]
The action on the application by the examiner will include all matters as provided for in other types of patent applications. See 37 CFR 1.161.
With reference to the examination of the claim, the language must be such that it is directed to the “new and distinct variety of plant.” This is important as under no circumstance should the claim be directed to a new variety of flower or fruit in contradistinction to the plant bearing the flower or the tree bearing the fruit. This is in spite of the fact that it is accepted and general botanical parlance to say “A variety of apple or a variety of blackberry” to mean a variety of apple tree or a variety of blackberry plant.
Where the application is otherwise allowable, a claim which recites, for example “A new variety of apple characterized by,” may be amended by the insertion of - tree - after “apple” by an examiner’s amendment.
By the same token, the title of the invention must relate to the entire plant and not to its flower or fruit, thus: Apple Tree, Rose Plant.
Care should also be exercised that the specification does not contain unwarranted advertising, for example, “the disclosed plant being grown in the
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1609
XYZ Nurseries of Topeka, Kansas.” It follows, also, that in the drawings any showing in the background of a plant, as a sign carrying the name of an individual, nursery, etc., is objectionable and deletion thereof is required. Nor should the specification include laudatory expressions, such as, “The rose is prettier than any other rose.” Such expressions are wholly irrelevant. Where the fruit is described, statements in the specification as to the character and quality of products made from the fruit are not necessary and should be deleted.
The Office action may include so much of any report of the ARS as the examiner deems necessary, or may embody no part of it. In the event of an interview, the examiner, in his or her discretion, may show the entire report to the inventor or attorney.
Form Paragraph 16.12 may be used to reference portions of the ARS report.
¶ 16.12 Report From U.S. Dept. of Agriculture
This application has been submitted to the U.S. Department of Agriculture for a report. Pertinent portions follow: [1]
The report of the ARS is not in the nature of a publication and matters raised therein within the personal knowledge of the specialists of the ARS are not sufficient basis for a rejection unless it is first ascertained by the examiner that the same can be supported by affidavits by said specialists (37 CFR 1.104(d)(2)). See Ex parte Rosenberg, 46 USPQ 393 (Bd. App. 1939).
Form Paragraphs 16.04 and 16.08, as appropriate, may be used to reject the claim.
¶ 16.04 Rejection, 35 U.S.C. 102
The claim is rejected under 35 U.S.C. 102 as failing to patentably distinguish over [1].
¶ 16.08 Rejection, 35 U.S.C. 112
The claim is rejected under 35 U.S.C. 112 [1] because [2].
1611 Issue [R-11.2013]
The preparation of a plant patent application for issue involves the same procedure as for other applications (37 CFR 1.161), with the exception that where there are color drawings, the better one of the two judged, for example, by its sharpness or cleanliness is selected to be printed in the patent.
The International Patent Classification symbols, most recent edition, should be placed on the Issue Classification form of all plant patent applications being sent to issue.
All plant patent applications should contain an abstract when allowed.
1612 UPOV Convention [R-11.2013]
The International Convention for the Protection of New Varieties of Plants (generally known by its French acronym as "UPOV Convention") was adopted on December 2, 1961, by a Diplomatic Conference held in Paris.
The UPOV Convention has been revised on November 10, 1972, on October 23, 1978, and on March 19, 1991, in order to reflect technological developments in plant breeding and experience acquired with the application of the UPOV Convention. As of December 5, 2012, 71 states and organizations were party to the UPOV Convention.
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§ 1612PLANT PATENTS
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1612
Most states adhere to either the 1978 text or the 1991 text. The United States adheres to the 1991 text, and has a reservation under Article 35(2) of the text (which allows plant patents rather than breeder’s rights certificates to be granted).
The 1961, 1978, and 1991 texts guarantee to plant breeders in each member state both national treatment and the right of priority in all other member states. In many states, new plant varieties are protected by breeders’ rights laws rather than patent laws. Accordingly, the Paris (Industrial Property) Convention cannot always be relied on to provide these and other rights.
Insofar as the patenting of asexually reproduced plants in the United States is concerned, both national treatment and the right of priority have been accorded to foreign plant breeders since enactment of the plant patent law in 1930 (now 35 U.S.C. 161-164). See MPEP § 1613 for the right of priority based upon an application for plant breeder’s rights.
Application of the UPOV Convention in the United States does not affect the examination of plant patent applications, except in one instance. It is now necessary as a condition for receiving a plant patent to register a variety denomination for that plant. Inclusion of the variety denomination in the patent comprises its registration. The registration process in general terms consists of inclusion of a proposed variety denomination in the plant patent application. The examiner must evaluate the proposed denomination in light of UPOV Convention, Article 13. Basically, this Article requires that the proposed variety denomination not be identical with or confusingly similar to other names utilized in the United States or other UPOV member countries for the same or a closely related species. In addition, the proposed denomination must not mislead the average consumer as to the characteristics, value, or identity of the patented plant. Ordinarily, the denomination proposed for registration in the United States must be the same as the denomination registered in another member state of UPOV.
Pursuant to 37 CFR 1.76(b)(3), the Latin name and the variety denomination for the plant claimed may be included in an application data sheet (ADS). The Office, pursuant to the UPOV Convention, has been
asked to compile a database of the plants patented and the database must include the Latin name and the variety denomination of each patented plant. Having this information in an ADS will make the process of compiling this database more efficient.
Form Paragraph 16.05 may be used to object to the disclosure as lacking a common or market name or “denomination” of the plant.
¶ 16.05 Name or Denomination for Plant Missing
The disclosure is objected to under 37 CFR 1.121(e) because no “variety denomination” of the instant plant has been set forth in the disclosure. 37 CFR 1.163(c)(4). Correction by adding such a name is required.
¶ 16.05.01 Latin Name of Genus and Species of the Plant Claimed Missing
The disclosure is objected to under 37 CFR 1.121(e) because the Latin name of the genus and species of the instant plant has not been set forth in the disclosure. 37 CFR 1.163(c)(4). Correction by adding such a name is required.
1613 Right of Priority Based upon Application for Plant Breeder’s Rights [R-08.2012]
Pursuant to 35 U.S.C. 119(f), an application for a plant patent may rely upon an application for plant breeder’s rights filed in a WTO member country (or in a foreign UPOV Contracting Party) for priority under 35 U.S.C. 119(a) through (c).
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§ 1613PLANT PATENTS
Chapter 1700 Miscellaneous
Office Personnel Not To Express Opinion on Validity, Patentability, or Enforceability of Patent
1701
Office Personnel Not To Testify1701.01 Restrictions on Current and Former Office Employees Regarding Patent Matters
1702
The Official Gazette1703 Application Records and Reports1704 Examiner Docket, Time, and Activity Recordation
1705
[Reserved]1706 -1719
Dissemination of Court and Patent Trial and Appeal Board Decisions
1720
Treatment of Court and Patent Trial and Appeal Board Decisions Affecting
1721
Patent and Trademark Office Policy and Practice [Reserved]1722
-1729 Information Sources1730
1701 Office Personnel Not To Express Opinion on Validity, Patentability, or Enforceability of Patent [R-07.2015]
Every patent is presumed to be valid. See 35 U.S.C. 282, first sentence. Public policy demands that every employee of the United States Patent and Trademark Office (USPTO) refuse to express to any person any opinion as to the validity or invalidity of, or the patentability or unpatentability of any claim in any U.S. patent, except to the extent necessary to carry out:
(A) an examination of a reissue application of the patent,
(B) a supplemental examination proceeding or reexamination proceeding to reexamine the patent,
(C) an interference or derivation proceeding involving the patent, or
(D) an inter partes or post-grant review of the patent.
The question of validity or invalidity is otherwise exclusively a matter to be determined by a court. Likewise, the question of enforceability or unenforceability is exclusively a matter to be determined by a court. Members of the patent
examining corps are cautioned to be especially wary of any inquiry from any person outside the USPTO, including an employee of another U.S. government agency, the answer to which might indicate that a particular patent should not have issued. No USPTO employee may pursue a bounty offered by a private sector source for identifying prior art. The acceptance of payments from outside sources for prior art search activities may subject the employee to administrative disciplinary action.
When a field of search for an invention is requested, examiners should routinely inquire whether the invention has been patented in the United States. If the invention has been patented, no field of search should be suggested.
Employees of the USPTO, particularly patent examiners who examined an application which matured into a patent or a reissued patent or who conducted a reexamination proceeding, should not discuss or answer inquiries from any person outside the USPTO as to whether or not a certain reference or other particular evidence was considered during the examination or proceeding and whether or not a claim would have been allowed over that reference or other evidence had it been considered during the examination or proceeding. Likewise, employees are cautioned against answering any inquiry concerning any entry in the patent or reexamination file, including the extent of the field of search and any entry relating thereto. The record of the file of a patent or reexamination proceeding must speak for itself.
Practitioners shall not make improper inquiries of members of the patent examining corps. Inquiries from members of the public relating to the matters discussed above must of necessity be refused and such refusal should not be considered discourteous or an expression of opinion as to validity, patentability or enforceability.
Rev. 07.2015, October 20151700-1
The definitions set forth in 37 CFR 104.1 and the exceptions in 37 CFR 104.21 are applicable to this section.
1701.01 Office Personnel Not To Testify [R-08.2012]
It is the policy of the United States Patent and Trademark Office (USPTO) that its employees, including patent examiners, will not appear as witnesses or give testimony in legal proceedings, except under the conditions specified in 37 CFR Part 104, Subpart C. The definitions set forth in 37 CFR 104.1 and the exceptions in 37 CFR 104.21 are applicable to this section. Any employee who testifies contrary to this policy will be dismissed or removed.
Whenever an employee of the USPTO, including a patent examiner, is asked to testify or receives a subpoena, the employee shall immediately notify the Office of the USPTO General Counsel. Inquiries requesting testimony shall be also referred immediately to the Office of the USPTO General Counsel.
Any individual desiring the testimony of an employee of the USPTO, including the testimony of a patent examiner or other quasi-judicial employee, must comply with the provisions of 37 CFR Part 104, Subpart C.
A request by a third party to take deposition testimony of a patent examiner in a pending ex parte reexamination proceeding will generally be denied in view of the ex parte nature of the reexamination proceeding.
A request for testimony of an employee of the USPTO should be made to the Office of the USPTO General Counsel at least 10 working days prior to the date of the expected testimony.
Patent examiners and other USPTO employees performing or assisting in the performance of quasi-judicial functions, are forbidden to testify as experts or to express opinions as to the validity of any patent.
If an employee is authorized to testify, the employee will be limited to testifying about facts within the employee’s personal knowledge. Employees are prohibited from giving expert or opinion testimony. Fischer & Porter Co. v. Corning Glass Works, 61
F.R.D. 321, 181 USPQ 329 (E.D. Pa. 1974). Likewise, employees are prohibited from answering hypothetical or speculative questions. In re Mayewsky, 162 USPQ 86, 89 (E.D. Va. 1969) (deposition of an examiner must be restricted to relevant matters of fact and must avoid any hypothetical or speculative questions or conclusions based thereon); ShafferTool Works v. Joy Mfg. Co., 167 USPQ 170 (S.D. Tex. 1970) (deposition of examiner should be limited to matters of fact and must not go into hypothetical or speculative areas or the bases, reasons, mental processes, analyses, or conclusions of the examiner in acting upon a patent application). Employees will not be permitted to give testimony with respect to subject matter which is privileged. Several court decisions limit testimony with respect to quasi-judicial functions performed by employees. Those decisions include United States v. Morgan, 313 U.S. 409, 422 (1941) (improper to inquire into mental processes of quasi-judicial officer or to examine the manner and extent to which the officer considered an administrative record); Western Electric Co. v. Piezo Technology, Inc., 860 F.2d 428, 8 USPQ2d 1853 (Fed. Cir. 1988) (patent examiner may not be compelled to answer questions which probe the examiner’s technical knowledge of the subject matter of a patent); McCulloch Gas Processing Co. v. Department of Energy, 650 F.2d 1216, 1229 (Temp. Emer. Ct. App. 1981) (discovery of degree of expertise of individuals performing governmental functions not permitted); In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988) (technical or scientific qualifications of examiners-in-chief are not legally relevant in appeal under 35 U.S.C. 134 since board members need not be skilled in the art to render obviousness decision); Lange v. Commissioner, 352 F. Supp. 166, 176 USPQ 162 (D.D.C. 1972) (technical qualifications of examiners-in-chief not relevant in 35 U.S.C. 145 action).
In view of the discussion above, if an employee is authorized to testify in connection with the employee’s involvement or assistance in a
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1701.01
quasi-judicial proceeding which took place before the USPTO, the employee will not be permitted to give testimony in response to questions that the Office determines are impermissible. Impermissible questions include, but are not limited to, questions directed to discovering the mental processes or expertise of a quasi-judicial official, such as:
(A) Information about that employee’s:
(1) Background;
(2) Expertise;
(3) Qualifications to examine or otherwise consider a particular patent or trademark application;
(4) Usual practice or whether the employee followed a procedure set out in any Office manual of practice (including the MPEP or TMEP) in a particular case;
(5) Consultation with another Office employee;
(6) Understanding of:
(a) A patented invention, an invention sought to be patented, or patent application, patent, reexamination or interference file;
(b) Prior art;
(c) Registered subject matter, subject matter sought to be registered, or a trademark application, registration, opposition, cancellation, interference, or concurrent use file;
(d) Any Office manual of practice;
(e) Office regulations;
(f) Patent, trademark, or other law; or
(g) The responsibilities of another Office employee;
(7) Reliance on particular facts or arguments;
(B) To inquire into the manner in and extent to which the employee considered or studied material in performing a quasi-judicial function; or
(C) To inquire into the bases, reasons, mental processes, analyses, or conclusions of that Office employee in performing the quasi-judicial function.
Any request for testimony addressed or delivered to the Office of the USPTO General Counsel shall comply with 37 CFR 104.22(c). All requests must be in writing. The need for a subpoena may be
obviated where the request complies with 37 CFR 104.22(c) if the party requesting the testimony further meets the following conditions:
(A) The party requesting the testimony identifies the civil action or other legal proceeding for which the testimony is being taken. The identification shall include the:
(1) Style of the case;
(2) Civil action number;
(3) District in which the civil action is pending;
(4) Judge assigned to the case; and
(5) Name, address, and telephone number of counsel for all parties in the civil action.
(B) The party agrees not to ask questions seeking information which is precluded by 37 CFR 104.23;
(C) The party shall comply with applicable provisions of the Federal Rules of Civil Procedure, including Rule 30, and give 10 working days notice to the Office of the USPTO General Counsel prior to the date a deposition is desired. Fifteen working days notice is required for any deposition which is desired to be taken between November 15 and January 15;
(D) The party agrees to notice the deposition at a place convenient to the USPTO. The Conference Room in the Office of the USPTO General Counsel is deemed to be a place convenient to the Office; and
(E) The party agrees to supply a copy of the transcript of the deposition to the USPTO for its records.
Absent a written agreement meeting the conditions specified in paragraphs (A) through (E), a party must comply with the precise terms of 37 CFR 104.22(c)
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§ 1701.01MISCELLANEOUS
and the USPTO will not permit a deposition without issuance of a subpoena.
1702 Restrictions on Current and Former Office Employees Regarding Patent Matters [R-07.2015]
35 U.S.C. 4 Restrictions on officers and employees as to interest in patents.
Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.
37 CFR 11.10 Restrictions on practice in patent matters.
(a) Only practitioners who are registered under § 11.6 or individuals given limited recognition under § 11.9(a) or (b) are permitted to prosecute patent applications of others before the Office; or represent others in any proceedings before the Office.
(b) Post employment agreement of former Office employee. No individual who has served in the patent examining corps or elsewhere in the Office may practice before the Office after termination of his or her service, unless he or she signs a written undertaking agreeing:
(1) To not knowingly act as agent or attorney for, or otherwise represent, or assist in any manner the representation of, any other person:
(i) Before the Office,
(ii) In connection with any particular patent or patent application,
(iii) In which said employee participated personally and substantially as an employee of the Office; and
(2) To not knowingly act within two years after terminating employment by the Office as agent or attorney for, or otherwise represent, or assist in any manner the representation of any other person:
(i) Before the Office,
(ii) In connection with any particular patent or patent application,
(iii) If such patent or patent application was pending under the employee’s official responsibility as an officer or employee within a period of one year prior to the termination of such responsibility.
(3) The words and phrases in paragraphs (b)(1) and (b)(2) of this section are construed as follows:
(i) Represent and representation mean acting as patent attorney or patent agent or other representative in any
appearance before the Office, or communicating with an employee of the Office with intent to influence.
(ii) Assist in any manner means aid or help another person on a particular patent or patent application involving representation.
(iii) Particular patent or patent application means any patent or patent application, including, but not limited to, a provisional, substitute, international, continuation, divisional, continuation-in-part, or reissue patent application, as well as any protest, reexamination, petition, appeal, interference, or trial proceeding based on the patent or patent application.
(iv) Participate personally and substantially.
(A) Basic requirements. The restrictions of § 11.10(a)(1) apply only to those patents and patent applications in which a former Office employee had “personal and substantial participation,” exercised “through decision, approval, disapproval, recommendation, the rendering of advice, investigation or otherwise.” To participate personally means directly, and includes the participation of a subordinate when actually directed by the former Office employee in the patent or patent application. Substantially means that the employee’s involvement must be of significance to the matter, or form a basis for a reasonable appearance of such significance. It requires more than official responsibility, knowledge, perfunctory involvement, or involvement on an administrative or peripheral issue. A finding of substantiality should be based not only on the effort devoted to a patent or patent application, but also on the importance of the effort. While a series of peripheral involvements may be insubstantial, the single act of approving or participation in a critical step may be substantial. It is essential that the participation be related to a “particular patent or patent application.” ( See paragraph (b)(3)(iii) of this section.)
(B) Participation on ancillary matters. An Office employee’s participation on subjects not directly involving the substantive merits of a patent or patent application may not be “substantial,” even if it is time-consuming. An employee whose official responsibility is the review of a patent or patent application solely for compliance with administrative control or budgetary considerations and who reviews a particular patent or patent application for such a purpose should not be regarded as having participated substantially in the patent or patent application, except when such considerations also are the subject of the employee’s proposed representation.
(C) Role of official responsibility in determining substantial participation. Official responsibility is defined in paragraph (b)(3)(v) of this section. “Personal and substantial participation” is different from “official responsibility.” One’s responsibility may, however, play a role in determining the “substantiality” of an Office employee’s participation.
(v) Official responsibility means the direct administrative or operating authority, whether intermediate or final, and either exercisable alone or with others, and either personally or through subordinates, to approve, disapprove, or otherwise direct Government actions.
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(A) Determining official responsibility. Ordinarily, those areas assigned by statute, regulation, Executive Order, job description, or delegation of authority determine the scope of an employee’s “official responsibility”. All particular matters under consideration in the Office are under the “official responsibility” of the Director of the Office, and each is under that of any intermediate supervisor having responsibility for an employee who actually participates in the patent or patent application within the scope of his or her duties. A patent examiner would have “official responsibility” for the patent applications assigned to him or her.
(B) Ancillary matters and official responsibility. Administrative authority as used in paragraph (v) of this section means authority for planning, organizing and controlling a patent or patent application rather than authority to review or make decisions on ancillary aspects of a patent or patent application such as the regularity of budgeting procedures, public or community relations aspects, or equal employment opportunity considerations. Responsibility for such an ancillary consideration does not constitute official responsibility for the particular patent or patent application, except when such a consideration is also the subject of the employee’s proposed representation.
(C) Duty to inquire. In order for a former employee, e.g. , former patent examiner, to be barred from representing or assisting in representing another as to a particular patent or patent application, he or she need not have known, while employed by the Office, that the patent or patent application was pending under his or her official responsibility. The former employee has a reasonable duty of inquiry to learn whether the patent or patent application had been under his or her official responsibility. Ordinarily, a former employee who is asked to represent another on a patent or patent application will become aware of facts sufficient to suggest the relationship of the prior matter to his or her former office, e.g., technology center, group or art unit. If so, he or she is under a duty to make further inquiry. It would be prudent for an employee to maintain a record of only patent application numbers of the applications actually acted upon by decision or recommendation, as well as those applications under the employee’s official responsibility which he or she has not acted upon.
(D) Self-disqualification. A former employee, e.g. , former patent examiner, cannot avoid the restrictions of
this section through self-disqualification with respect to a patent or patent application for which he or she otherwise had official responsibility. However, an employee who through self-disqualification does not participate personally and substantially in a particular patent or patent application is not subject to the lifetime restriction of paragraph (b)(1) of this section.
(vi) Pending means that the matter was in fact referred to or under consideration by persons within the employee’s area of official responsibility.
(4) Measurement of the two-year restriction period. The two-year period under paragraph (b)(2) of this section is measured from the date when the employee’s official responsibility in a particular area ends, not from the termination
of service in the Office, unless the two occur simultaneously. The prohibition applies to all particular patents or patent applications subject to such official responsibility in the one-year period before termination of such responsibility.
(c) Former employees of the Office . This section imposes restrictions generally parallel to those imposed in 18 U.S.C. 207(a) and (b)(1). This section, however, does not interpret these statutory provisions or any other post-employment restrictions that may apply to former Office employees, and such former employees should not assume that conduct not prohibited by this section is otherwise permissible. Former employees of the Office, whether or not they are practitioners, are encouraged to contact the Department of Commerce for information concerning applicable post-employment restrictions.
(d) An employee of the Office may not prosecute or aid in any manner in the prosecution of any patent application before the Office.
(e) Practice before the Office by Government employees is subject to any applicable conflict of interest laws, regulations or codes of professional responsibility.
Pursuant to 35 U.S.C. 4, patent examiners, other Office employees, and Office officers may not apply for a patent or acquire any right or interest in any patent during the period of their employment with the Office and for one year thereafter. An Office employee or officer who is named as an inventor in a patent application will be presumed (1) to be legally incapable of signing the inventor's oath or declaration pursuant to 35 U.S.C. 4 , or (2) to refuse to sign the inventor's oath or declaration based on his or her status as an Office employee. For applications filed on or after September 16, 2012, a substitute statement under 37 CFR 1.64 may be filed in lieu of the oath or declaration without contacting the current employee or officer of the Office.
See also MPEP § 309.
1703 The Official Gazette [R-07.2015]
The Official Gazette of the United States Patent and Trademark Office (Official Gazette) is published electronically every Tuesday in two sections, the Official Gazette – Patents and the Official Gazette – Trademarks.
The Official Gazette — Patents reports the reexamination certificates, reissues, plant patents, utility patents, and design patents issued and statutory invention registrations (if any) published on that day. The Official Gazette — Patents (eOG:P)
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§ 1703MISCELLANEOUS
(www.uspto.gov/learning-and-resources/ official-gazette/official-gazette-patents) allows browsing through the issued patents for the week. The eOG:P can be browsed by classification or type of patent, for example, utility, design, and plant. Specific patents can be accessed by class/subclass or patentee name. Links are provided to the various pages of the eOG:P:
(A) Browse by Class/Subclass page to access patents by a specific classification;
(B) Classification of Patents page to link to patents issued within specified ranges of classifications;
(C) Browse Granted Patents page to access a patent by patent number or patents by type as well as links to certificates resulting from reexaminations, supplemental examinations and administrative trials;
(D) Index of Patentees page to browse by names of inventors and assignees in either a cumulative alphabetical index or individual indexes by type of patent. Each patentee listing contains a link to the patent;
(E) Geographical Index of Inventors to link to patents by the state or country of residence of the first listed inventor; and
(F) Notices page to link to the text of Patent and Trademark Office Notices for the week.
As to each patent, the following information may be given:
(A) Patent number;
(B) Title of the invention;
(C) Name of inventor(s), city, and state or country of residence;
(D) Assignee's name, city, and state or country of residence, if assigned;
(E) Applicant's name, city, and state or country of residence;
(F) Filing date and application number;
(G) For reissue patents, the original patent number and issue date, and the original application number and filing date;
(H) U.S. benefit application data, if any;
(I) PCT or international design application data, if any;
(J) Foreign priority application data, if any;
(K) Patent Application Publication Number and Publication date, if any;
(L) International classification;
(M) CPC classification;
(N) U.S. classification by class and subclass;
(O) Number of claims;
(P) Selected figure of the drawing, if any;
(Q) A claim or claims.
The Official Gazette – Trademarks is published electronically and contains an illustration of each trademark published for opposition, an alphabetical list of registered trademarks, a classified list of registered trademarks, an index of registrants, a list of canceled trademark registrations, and a list of renewed trademark registrations.
The information in the Official Gazette pertaining to each issued patent and each trademark registration can be obtained from the Patent Grants Database and the U.S. Trademark Electronic Search System (TESS) respectively, both also available on the USPTO website.
Regular and special notices of the United States Patent and Trademark Office are published in the Official Gazette Notices , both as part of the Official Gazette — Patents (eOG:P) and as a separate publication. The notices that are included in this publication include notices of patent and trademark suits, disclaimers filed, Certificates of Correction issued, lists of applications and patents available for license or sale, notices of 37 CFR 1.47 applications, and general information such as orders, notices, changes in rules, changes in classification, certain adverse decisions in interferences, the condition of work in the Office, registration of attorneys and agents, reprimands, suspensions, and exclusions of registered attorneys and agents, and notices to parties not reached by mail. The Official Gazette Notices are available on the United States Patent and
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Trademark Office website (www.uspto.gov/ learning-and-resources/official-gazette).
1704 Application Records and Reports [R-07.2015]
The PALM (Patent Application Locating and Monitoring) System is the automated data management system used by the United States Patent and Trademark Office (USPTO) for the retrieval and/or online updating of the computer record of each patent application. The PALM System also maintains examiner time, activity, and docket records, and technical support staff backlog records.
Information retrieval from PALM is by means of the PALM intranet. Transactions are entered by keyed entries or by making an appropriate choice in a drop down menu. Among other items, classification, examiner docket, attorney, inventor, status, and prosecution history data as well as the location of each paper application can be retrieved and updated online with PALM.
I. DOCKET REPORTS
The recording of changes to examiner dockets is accomplished by PALM simultaneously with the recording of incoming and outgoing communications, transfers of applications to and from dockets, and other types of updating of the application record. The status of each examiner’s docket can be determined by means of the PALM intranet and is supplemented by periodic printed or electronic reports. Docket reports that are generated by PALM include the individual examiner new and amended docket which lists applications as regular, special, or expedited applications in priority order; the individual examiner rejected application docket; the individual examiner new application profile, which lists the totals of new applications in each docket, sorted by month of filing; and various summaries of the above reports at the art unit, Technology Center (TC), and corps levels.
II. BIWEEKLY TIME AND ACTIVITY REPORTS
All reporting of examiner time and activity is on a biweekly basis. Each examiner’s examining and non-examining time, as entered in the Web Time
and Attendance System is used by PALM in the computation of productivity data. The biweekly reports produced include the individual Biweekly Examiner Time and Activity Report which lists, by application number, all applications for which actions have been counted during the biweekly period. The type of action counted for each application is also indicated on the report. This report also includes examiner time data, an action summary, and cumulative summaries to date for the current quarter and fiscal year. Various summary reports at the Art Unit, TC, and Corps levels are also produced.
1705 Examiner Docket, Time, and Activity Recordation [R-07.2015]
Actions prepared by examiners are submitted electronically and sent to their respective legal instrument examiners for entry of the type of Office action into the PALM System and for mailing.
Each examiner’s action that is counted and reported to the PALM system will be listed by application number on the Biweekly Examiner Time and Activity Report. The examiner should check his/her Biweekly Examiner Time and Activity Report to verify that all applications worked on for the biweekly report period are properly listed.
Examples of examiner’s actions that are reported to PALM by the legal instrument examiner, but are not listed on the Biweekly Examiner Time and Activity Report, include examiner’s amendments, actions in reexamination proceedings, interview summaries, transfers of applications, and supplemental Office actions and miscellaneous Office letters which do not set a period for reply.
I. COUNTING OF FIRST ACTION ON THE MERITS (FAOM)
Office actions on the merits consist of rejections (final and non-final), Ex parte Quayle actions, and allowances.
The first time an examiner performs one of the above merit actions, he/she receives credit for a First Action on the Merits (FAOM) on the production reports.
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§ 1705MISCELLANEOUS
A second/subsequent but FAOM usually occurs when the first action is a restriction/election action and the second action is an action on the merits. The PALM system will automatically determine if it is a FAOM. If the second action is a FAOM, the action will be listed and credited on the Biweekly Examiner Time and Activity Report as a Second/Subsequent FAOM.
II. COUNTING OF DISPOSALS
An examiner receives a “disposal” credit for the following actions:
(A) Allowance;
(B) Abandonment;
(C) Requests for Continued Examination;
(D) Examiner’s Answer;
(E) International Preliminary Examination Report;
(F) Statutory Invention Registration (SIR) disposal (only after a FAOM; see MPEP § 1101); and
(G) Institution of an Interference or Derivation proceeding wherein the application would be in condition for allowance but for the interference or derivation proceeding.
These same items constitute the “disposals” for performance evaluation of examining art units and TCs. However, disposals at the Office level consist only of allowances and abandonments.
For either an allowance or an abandonment after an Examiner’s Answer or decision by a court or the Patent Trial and Appeal Board, no disposal credit is received, though these actions are indicated on the Biweekly Examiner Time and Activity Report.
III. CORRECTION INFORMATION
(A) If any information is either missing from or incorrect on the Biweekly Examiner Time and Activity Report, the examiner should promptly notify their supervisory patent examiner (SPE) and either the legal instrument examiner or PALM troubleshooter by providing all the pertinent information necessary to make the changes to the
PALM system (e.g., examining hours, application number, type of action, etc.).
(B) The PALM troubleshooter or legal instrument examiner will report the necessary changes and corrections directly into PALM. These changes will be listed on the next Biweekly Examiner Time and Activity Report.
(C) If any information is missing from the last Biweekly Examiner Time and Activity Report of a quarter (except at the end of a fiscal year) or is incorrect, the examiner should promptly notify the PALM troubleshooter or legal instrument examiner and his/her supervisory patent examiner (SPE). The PALM troubleshooter or legal instrument examiner will make the appropriate changes directly into the PALM system. The changes will be listed on the next Biweekly Examiner Time and Activity Report. However, these changes will not be reflected in the previous Quarter’s Report; the examiner’s SPE may manually make an adjustment to the records to show these changes.
(D) In order to ensure that all PALM reports are correct at the end of the fiscal year (rating period), a special correction cycle is provided on the PALM system. If any information is missing from or is incorrect on the last Biweekly Examiner Time and Activity Report, the examiner should immediately notify the legal instrument examiner and his/her SPE. These changes will be reflected in the examiner’s final biweekly report for the entire fiscal year.
1706 -1719 [Reserved]
1720 Dissemination of Court and Patent Trial and Appeal Board Decisions [R-07.2015]
I. COURT DECISIONS
The Office of the Solicitor forwards to the Office of the Commissioner for Patents copies of all recent court decisions in patent cases where a precedential opinion is issued. The Office of the Commissioner for Patents will routinely forward these opinions to TC Directors, the Office of Patent Training, and the Director of the Office of Patent Quality Assurance.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1706 -1719
TC Directors, in turn, are to make copies available to supervisors and other individuals as the TC Director determines to be appropriate. TC Directors are encouraged to discuss the contents of the opinions in their staff meetings, particularly where such meetings are being held to reinforce examination quality.
II. PATENT TRIAL AND APPEAL BOARD DECISIONS
A decision rendered by the Patent Trial and Appeal Board (Board) is returned to the examiner. The examiner takes action consistent with the decision rendered by the Board unless rehearing of the Board decision will be requested (MPEP § 1214.04). The TC Director may circulate and discuss the decision among some or all of the supervisors in the TC, and the supervisors, in turn, may circulate the decision among the examiners in their art units, depending on the subject matter or issues in the decisions.
1721 Treatment of Court and Patent Trial and Appeal Board Decisions Affecting Patent and Trademark Office Policy and Practice [R-07.2015]
In the event the Patent Trial and Appeal Board (Board) or court decision is one that significantly adds to the body of law by, for example, addressing a new legal or procedural issue, or providing a new interpretation of a prior decision, such a decision may result in an internal United States Patent and Trademark Office (USPTO) memorandum pointing out the significance of the decision to the examination process.
When any examiner or supervisor in the Patent Examining Corps concludes that a recent decision of the Board or a court affects existing USPTO policy or practice, he or she should bring the matter to the attention of his/her TC Director through normal chain-of-command procedures.
When the TC Director believes that guidance to the Corps is warranted as a result of a decision, the TC Director should consult with the Deputy Commissioner for Patent Examination Policy and provide a draft of the guidance that is recommended as appropriate under the circumstances. The Deputy
Commissioner for Patent Examination Policy will then consult appropriate Office officials, as necessary, to formulate a recommendation to the Commissioner for Patents on the policy implications of the opinion.
It may be necessary for the Director, General Counsel, Solicitor, Chief Administrative Patent Judge, Commissioner for Patents, Deputy Commissioner for Patent Examination Policy, Deputy Commissioner for Patent Operations and TC Director making the recommendation to meet to review and discuss the policy ramifications of the opinion and recommended guidance to enable the Director to decide how the USPTO will proceed.
Communication of the decision on the policy implications of the court or Board decision will normally take place by either notice in the Official Gazette and/or via memorandum to USPTO personnel. Ultimately, the policy implications of the decision will be officially incorporated into the Manual of Patent Examining Procedure and Office of Patent Training curriculum materials during the next update cycle for these reference materials.
1722 -1729 [Reserved]
1730 Information Sources [R-07.2015]
I. IN GENERAL
General information about patents, trademarks, products and services offered by the United States Patent and Trademark Office (USPTO), and other related information is available by contacting the USPTO Contact Center at:
800-PTO-9199 or 571-272-1000 (TDD) 571-272-9950
An automated message system is available 7 days a week, 24 hours a day providing informational responses to frequently asked questions and the ability to order certain documents. Customer service representatives are available to answer questions, send materials or connect customers with other offices of the USPTO from 8:30 a.m. - 8:00 p.m. ET, Monday-Friday excluding federal holidays.
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§ 1730MISCELLANEOUS
For other technical patent information needs, the Inventors Assistance Center can be reached through customer service representatives at the above numbers, Monday through Friday (except federal holidays) from 8:30 a.m. to 5:00 p.m. ET.
General information can also be obtained in person from the Public Search Facilities of the USPTO. See subsection IV. below.
II. USPTO INTERNET SITE
A. General Information
The USPTO website (www.uspto.gov ) provides a wealth of information to all users. The USPTO website offers links to news and notices (such as announcements, press releases, Official Gazette Notices and Federal Register Notices), USPTO contacts and addresses, activities and education related pages (such as the PTDL program and the Kids Pages), patent specific information (such as issued patents and published patent applications, general information pertaining to applying for a patent, electronic filing of patent applications, and reference materials such as the MPEP and examination guidelines), and trademark specific information (such as the Trademark Manual of Examining Procedure and the U.S. Trademark Electronic Search System (TESS)). In addition, the website allows downloading of a variety of USPTO forms (including PCT forms), ordering copies of patents and trademarks, accessing a list of all current fees, paying patent maintenance fees, replenishing deposit accounts, accessing various legal materials, linking to related websites, etc.
B. Electronic Business
The Patent Electronic Business Center (EBC) assists USPTO customers with electronic patent application submissions via the Electronic Filing System (EFS-Web) and with the review of patent applications in Public and Private PAIR. The EBC offers online electronic filing information, instructional material, PatentIn and Checker support and is available to assist users through one-on-one support during its normal business hours. The EBC also serves as a liaison in directing customers to other USPTO organizations that can address their
specialized business issues and needs. The hours of operation of the EBC are Monday through Friday 6 a.m. - midnight (ET). The EBC can be reached by telephone at 866-217-9197 (toll-free) or 571-272-4100. The EBC may be reached by email at ebc@uspto.gov and by fax at 571-273-0177.
1. USPTO Databases
(a) Issued Patents
The Patent Grants Database provides access to the full-text of all U.S. patents issued since 1976, and to the full-page images of all U.S. patents issued since 1790.
(b) Published Applications
The Patent Applications Database provides both full-text and full-page images of all U.S. patent applications published since March 15, 2001.
(c) Status Information
Status information relating to patent applications is available through the Patent Application Information Retrieval (PAIR) system. There is both a public and private side to PAIR. In public PAIR, information is available relating to issued patents, published patent applications, and applications to which a patented or published application claims domestic priority. In private PAIR, an applicant (or his or her registered patent attorney or registered patent agent) can securely track the progress of his or her application(s) through the USPTO. Private PAIR makes available information relating to unpublished patent applications, but the applicant must associate a Customer Number with the application to obtain access. See MPEP § 403 for Customer Number practice.
(d) Image File Wrapper (IFW)
The Image File Wrapper (IFW) system uses image technology to replace the paper processing of patent applications in the Office. Paper components of these application files (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) have been scanned to create
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1730
electronic image files. For patent applications in the IFW system, the IFW file is the Official file and no access is granted to the original paper document sheets used to create the IFW file. All processing and examination is conducted using the electronic images instead of the paper source documents.
If an IFW file has been created for a patented application, published application, or an application to which a patented or published application claims domestic priority, the IFW file (with the exception of non-patent literature) is accessible through public PAIR. All patent applications filed after June 30, 2003 have been scanned into the IFW system and will be available in public PAIR as soon as they have been published or patented. Pending applications filed before June 30, 2003 are scanned into IFW as incoming papers are received in the Office. Non-patent literature (NPL) may be viewed using private PAIR (if an IFW file has been created) or obtained from the USPTO Office of Public Records.
Questions about IFW images viewed in PAIR should be directed to the Patent EBC.
(e) Assignments on the Web (AOTW)
Assignment information is available for issued patents and published applications recorded since August 1980. AOTW is available at
www.uspto.gov/patent/laws-and-regulations/ power-attorney-and-assignment/assignments-web-aotw. Questions or concerns regarding the data displayed may be directed to the Assignment Services Division at assign@uspto.gov or 571-272-3350.
(f) Global Patent Search Network
The Global Patent Search Network (http://gpsn.uspto.gov) hosted by the USPTO provides public access to English language translations of a large subset of Chinese patent documents created by machine translation technology. Due to limitations in machine translation technology, the English translation of the patent may not precisely reflect the content of the original patent document. The original patent document images are the authoritative source of the patent content. The translation does not provide an interpretation or
determination of any kind by the USPTO. The translation is not intended to, and does not, create any right or benefit, substantive or procedural, enforceable at law or in equity by a party against the United States, its departments, agencies, instrumentalities, entities, officers, employees or agents, or any other person. The “***” shows words which cannot be translated by the software. Text contained within drawings is not translated.
2. Transacting Electronic Business
(a) Filing Applications and Other Documents
The Electronic Filing System-Web (EFS-Web) allows customers to electronically file patent application documents securely via the Internet. See the EFS-Web Legal Framework ( www.uspto.gov/ patents-application-process/applying-online/ legal-framework-efs-web-06april11) for submissions via EFS-Web. See also MPEP § 502.05.
(b) Paying Fees and Replenishing Deposit Accounts
The Office of Finance Online page available at https://ramps.uspto.gov/eram/ may be used to pay maintenance fees or to maintain and replenish deposit accounts.
(c) Ordering Copies and Publications
Copies of patent applications as filed and patent file wrappers that have been issued or published are available online from the Office of Public Records (OPR) at http://ebiz1.uspto.gov/oems25p/ index.html. Presentation patents may also be ordered on the web. Available service options, fees and delivery methods vary by document type. Contact OPR at 1-800-972-6382 or 571-272-3150 for more information.
III. PCT
For questions and information concerning the Patent Cooperation Treaty (PCT), the PCT Help Desk is available to provide assistance and may be reached by telephone at 571-272-4300 between the hours of 8:30 a.m. and 5:00 p.m. (ET), Monday through Friday, or by facsimile at 571-273-0419, 24 hours a day. In addition, helpful information is available
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§ 1730MISCELLANEOUS
through the Internet at the International Patent Legal Administration page of the USPTO website at http://ptoweb.uspto.gov/patents/oipc/ and at the World Intellectual Property Office website (www.wipo.int/portal/en/index.html).
IV. USPTO SEARCH AND INFORMATION RESOURCE FACILITIES
The following USPTO search and information resource facilities are accessible to the public:
(A) Public Search Facility (Madison East, first floor, 600 Dulany St., Alexandria, VA 22314) at 571-272-3275
(Hours: Weekdays, 8:00 a.m. to 8:00 p.m., ET);
(B) Scientific and Technical Information Center
(1) Main Library (Remsen Bldg., first floor, 400 Dulany St., Alexandria, VA 22314) at 571-272-3547
(2) Biotech/Chemical Library (Remsen 1D58) at 571-272-2520
(Hours: Weekdays, 8:30 a.m. to 5:00 p.m., ET); and
(C) File Information Unit (Randolph Square, third floor, 2800 South Randolph St., Arlington, VA 22206) at 703-756-1800
(Hours: Weekdays, 7:00 a.m. to 6:00 p.m., ET).
V. REGISTERED PRACTITIONERS
The USPTO cannot recommend any particular attorney or agent, or aid in the selection of an attorney or agent. See MPEP § 401. A list of Attorneys and Agents Registered to Practice Before the U.S. Patent and Trademark Office is available on the USPTO website at
https://oedci.uspto.gov/OEDCI/.
VI. MISCELLANEOUS
A. Recently Filed Applications
For information and questions concerning recently filed patent applications and filing receipts, contact
the Application Assistance Unit at 571-272-4200 (hours: weekdays, 8:30 a.m. to 5:00 p.m., ET).
B. Pre-Grant Publication
For inquiries concerning projected pre-grant publication dates, contact the Application Assistance Unit at 571-272-4200.
C. Status Information
For information on the status of a patent application, patent applicants who have access to PAIR should check PAIR. Alternatively, applicants may contact the Application Assistance Unit at 571-272-4200.
D. Correspondence
For information pertaining to mail, facsimile, or hand-delivery of correspondence to the USPTO, see MPEP §§ 502 - 502.01.
E. Copies of Documents
Inquiries regarding certified or uncertified copies of documents, including patent applications-as-filed, patent related file wrappers, and patent copies, should be directed to the Office of Public Records’ (OPR) Patent and Trademark Copy Fulfillment Branch at 571-272-3150 or 1-800-972-6382. Orders may be placed by facsimile to 571-273-3250 or by email to dsd@uspto.gov when paying by VISA®, MasterCard®, American Express®, Discover®, or USPTO Deposit Account. For online document ordering and additional information, see http://ebiz1.uspto.gov/oems25p/index.html. To order file histories for self-service copying, contact the File Information Unit at 703-756-1800.
F. Maintenance Fees
Information regarding maintenance fees may be obtained from the Patent Application Information Retrieval (PAIR) system on the USPTO website, or by contacting the Receipts Accounting Division at 571-272-6500. See MPEP § 2570 for additional information.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1730
G. Assignments
For questions pertaining to filing assignments or other documents affecting title, contact Assignment Recordation Branch at 571-272-3350 or email questions to EPAS@uspto.gov. Documents may be submitted to the Assignment Branch by facsimile at 571-273-0140. See MPEP § 302.09 for additional information.
H. Petitions
Petitions regarding the filing of patent applications, revival of abandoned applications, reinstatement of expired patents, withdrawal of patent applications from issue, small entity entitlement, review of previous decisions of the Technology Centers, suspension of regulations, and questions not specifically provided for by regulations are administered by the Office of Petitions. See MPEP § 1002.02(b). For matters decided by the Office of Petitions, the appropriate USPTO personnel may be reached at the Petitions Help Desk at 571-272-3282.
Resource information and reference materials regarding petitions handled by the Office of Petitions are available at www.uspto.gov/ patents-application-process/petitions. The website also describes various ways available to file petitions, including EFS-Web, mail (United States Postal Service (USPS) and non-USPS), ePetition, facsimile, and hand carry. Note that a petition to withdraw an application from issue may be filed as an ePetition or sent by facsimile to 571-273-0025 (all other facsimile transmissions to the Office of Petitions should be sent to the Central FAX Number 571-273-8300). Urgent petitions to withdraw an application from issue may also be filed as an ePetition.
I. PatentIn
For help related to downloading the PatentIn software program or using PatentIn, contact the Patent Electronic Business Center at 866-217-9197 or via email at ebc@uspto.gov (see subsection II.B. above). See MPEP § 2430 for additional information.
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§ 1730MISCELLANEOUS
Chapter 1800 Patent Cooperation Treaty
Basic Patent Cooperation Treaty (PCT) Principles
1801
PCT Definitions1802 Reservations Under the PCT Taken by, and Notifications of Incompatibility Made by, the United States of America
1803
[Reserved]1804 Where To File an International Application
1805
Applicants and Inventors1806 Agent or Common Representative and General Power of Attorney
1807
Change in or Revocation of the Appointment of anAgent or a Common Representative
1808
PAIR Access1809 Filing Date Requirements1810 [Reserved]1811 Elements of the International Application
1812
[Reserved]1813 -1816
PCT Member States1817 [Reserved]1818 Earlier Search1819 Signature of Applicant1820 The Request1821 [Reserved]1822 The Description1823
Reference to Deposited Biological Material
1823.01
Nucleotide and/or Amino Acid Sequence Listings, and Tables Related to Sequence Listings
1823.02
The Claims1824 The Drawings1825 The Abstract1826 Fees1827
Refund of International Application Fees
1827.01
Priority Claim and Document1828 Restoration of the Right of Priority1828.01 Continuation or Continuation-in-Part Indication in the Request
1828.02
[Reserved]1829 International Application Transmittal Letter
1830
[Reserved]1831 License Request for Foreign Filing Under the PCT
1832
[Reserved]1833
Correspondence1834 Filing of Correspondence by Facsimile
1834.01
Irregularities in the Mail Service1834.02 [Reserved]1835 Rectification of Obvious Mistakes1836 [Reserved]1837
-1839 The International Searching Authority1840
The European Patent Office as an International Searching Authority
1840.01
The Korean Intellectual Property Office as an International Searching Authority
1840.02
The Australian Patent Office (IP Australia) as an International Searching Authority
1840.03
The Federal Service for Intellectual Property (Rospatent) (Russian
1840.04
Federation) as an International Searching Authority The Israel Patent Office (ILPO) as an International Searching Authority
1840.05
The Japan Patent Office (JPO) as an International Searching Authority
1840.06
[Reserved]1841 Basic Flow Under the PCT1842 The International Search1843
Prior Art for Chapter I Processing1843.01 Certain Subject Matter Need Not Be Searched
1843.02
No Search Required if Claims Are Unclear
1843.03
Procedure for Claims Not Required To Be Searched and for Claims That Are Unclear
1843.04
Time Limit for Establishing the International Search Report and the
1843.05
Written Opinion of the International Searching Authority
The International Search Report1844 Preparing the International Search Report (Form PCT/ISA/210)
1844.01
Written Opinion of the International Searching Authority
1845
Preparing the Written Opinion of the International Searching Authority (Form PCT/ISA/237)
1845.01
Notification of Transmittal of the International Search Report and the
1845.02
Written Opinion of the International
Rev. 07.2015, October 20151800-1
Searching Authority, or the Declaration (Form PCT/ISA/220)
[Reserved]1846 -1847
Sequence Listings1848 [Reserved]1849 Unity of Invention Before the International Searching Authority
1850
Identification of Patent Documents1851 Taking Into Account Results of Earlier Search(es)
1852
Amendment Under PCT Article 191853 [Reserved]1854
-1855 Supplementary International Searches1856 International Publication1857 [Reserved]1858 Withdrawal of International Application, Designations, or Priority Claims
1859
International Preliminary Examination Procedure
1860
[Reserved]1861 Agreement With the International Bureau To Serve as an International Preliminary Examining Authority
1862
[Reserved]1863 The Demand and Preparation for Filing of Demand
1864
Amendments Filed Under PCT Article 34
1864.01
Applicant’s Right To File a Demand1864.02 States Which May Be Elected1864.03 Agent’s Right To Act1864.04
Filing of Demand1865 [Reserved]1866 Preliminary Examination Fees1867 Correction of Defects in the Demand1868 Notification to International Bureau of Demand
1869
Priority Document and Translation Thereof
1870
Processing Amendments Filed Under Article 19 and Article 34 Prior to or at
1871
the Start of International Preliminary Examination Availability of the International Application File for International
1872
Preliminary Examination by the Examining Corps [Reserved]1873
Determination if International Preliminary Examination Is Required and Possible
1874
Unity of Invention Before the International Preliminary Examining Authority
1875
Preparation of Invitation Concerning Unity
1875.01
Reply to Invitation Concerning Lack of Unity of Invention
1875.02
Notation of Errors and Informalities by the Examiner
1876
Request for Rectification and Notification of Action Thereon
1876.01
Nucleotide and/or Amino Acid Sequence Listings During the International Preliminary Examination
1877
Preparation of the Written Opinion of the International Preliminary Examining Authority
1878
[Reserved]1878.01 Prior Art for Purposes of the Written Opinion and the
1878.01(a)
International Preliminary Examination Report
Novelty for Purposes of the Written Opinion and the
1878.01(a)(1)
International Preliminary Examination Report Inventive Step for Purposes of the Written Opinion and
1878.01(a)(2)
the International Preliminary Examination Report Industrial Applicability for Purposes of the Written
1878.01(a)(3)
Opinion and the International Preliminary Examination Report
Reply to the Written Opinion of the ISA or IPEA
1878.02
Preparation of the International Preliminary Examination Report
1879
Time Limit for Preparing Report1879.01 Transmittal of the International Preliminary Examination Report
1879.02
Translations1879.03 Confidential Nature of the Report1879.04
Withdrawal of Demand or Election1880 Receipt of Notice of Election and Preliminary Examination Report by
1881
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MANUAL OF PATENT EXAMINING PROCEDURE
the United States Patent and Trademark Office [Reserved]1882
-1892 National Stage (U.S. National Application Filed Under 35 U.S.C. 371)
1893
Commencement and Entry1893.01 Entry via the U.S. Designated or Elected Office
1893.01(a)
Submissions Required by 30 Months from the Priority Date
1893.01(a)(1)
Article 19 Amendment (Filed With the International Bureau)
1893.01(a)(2)
Article 34 Amendments (Filed with the International
1893.01(a)(3)
Preliminary Examining Authority)
Applicant for a U.S. National Stage Application
1893.01(b)
Fees1893.01(c) Translation1893.01(d) Inventor’s Oath or Declaration1893.01(e)
Abandonment1893.02 Prosecution of U.S. National Stage Applications Before the Examiner
1893.03
How To Identify That an Application Is a U.S. National Stage Application
1893.03(a)
The Filing Date of a U.S. National Stage Application
1893.03(b)
The Priority Date, Priority Claim, and Priority Papers for a U.S. National Stage Application
1893.03(c)
Unity of Invention1893.03(d) Documents Received from the International Bureau and Placed
1893.03(e)
in a U.S. National Stage Application File
Title of the Invention1893.03(e)(1) Drawings and PCT Rule 111893.03(f) Information Disclosure Statement in a National Stage Application
1893.03(g)
[Reserved]1894 A Continuation, Divisional, or Continuation- in- Part Application of
1895
a PCT Application Designating the United States
Handling of and Considerations in the Handling of Continuations, Divisions,
1895.01
and Continuations-In-Part of PCT Applications
The Differences Between a National Application Filed Under 35 U.S.C.
1896
111(a) and a National StageApplication Submitted Under 35 U.S.C. 371
INTRODUCTION [R-07.2015]
This chapter is designed to be a guide for patent examiners in searching and examining applications filed under the Patent Cooperation Treaty (PCT). Applicants desiring additional information for filing international applications should obtain a copy of the PCT Applicant’s Guide from the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
The Articles and Regulations under the PCT are reproduced in Appendix T of this Manual and the Administrative Instructions are reproduced in Appendix AI of this Manual. The text of the PCT Applicant’s Guide, the monthly PCT Newsletter, the weekly PCT Gazette, downloadable PCT forms, and additional information about the processing of international applications are available from WIPO’s website (www.wipo.int).
PCT applications are processed by the International Application Processing Division within the U.S. Patent and Trademark Office.
1801 Basic Patent Cooperation Treaty (PCT) Principles [R-07.2015]
I. MAJOR CONCEPTS OF THE PCT
The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application, “an international application,” in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national or regional filing in as many Contracting States to the PCT as the applicant “designates,” that is, names, as countries or regions in which patent protection is desired. The filing of an international application will automatically constitute the designation of all contracting countries to the PCT on that filing date.
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§ 1801PATENT COOPERATION TREATY
In the same manner, the PCT enables foreign applicants to file a PCT international application, designating the United States of America, in their home language in their home patent office and have the application acknowledged as a regular U.S. national filing. The PCT also provides for the establishment of an international search report and written opinion at 16 months from the priority date and publication of the international application after 18 months from the priority date. Upon payment of national fees and the furnishing of any required translation, usually 30 months after the filing of any priority application for the invention, or the international filing date if no priority is claimed, the application will be subjected to national procedures for granting of patents in each of the designated countries. For any countries remaining whose national laws are not compatible with the 30 month period set forth in PCT Article 22(1), the filing of a demand for an international preliminary examination electing such countries within 19 months from the priority date will result in an extension of the period for entering the national stage to 30 months from the priority date. An up-to-date list of such countries may be found on WIPO’s website (www.wipo.int/ pct/en/texts/reservations/res_incomp.html). See also subsection V. below. A brief description of the basic flow under the PCT is provided in MPEP § 1842.
The PCT offers an alternative route to filing patent applications directly in the patent offices of those countries which are Contracting States of the PCT. It does not preclude taking advantage of the priority rights and other advantages provided under the Paris Convention and the WTO administered Agreement on Trade-Related Aspects of Intellectual Property (TRIPSAgreement). The PCT provides an additional and optional foreign filing route to patent applicants.
The filing, search and publication procedures are provided for in Chapter I of the PCT. Additional procedures for a preliminary examination of PCT international applications are provided for in optional PCT Chapter II.
In most instances a national U.S. application is filed first. An international application for the same subject matter will then be filed subsequently within the priority year provided by the Paris Convention
and the priority benefit of the U.S. national application filing date will be claimed.
II. RECEIVING OFFICE (RO)
The international application (IA) must be filed in the prescribed receiving Office (RO)(PCT Article 10). The United States Patent and Trademark Office will act as a receiving Office for United States residents and nationals (35 U.S.C. 361(a)). Under PCT Rule 19.1(a)(iii), the International Bureau of the World Intellectual Property Organization will also act as a Receiving Office for U.S. residents and nationals. The receiving Office functions as the filing and formalities review organization for international applications. International applications must contain upon filing the designation of at least one Contracting State in which patent protection is desired and must meet certain standards for completeness and formality (PCT Articles 11(1) and 14(1)).
Where a priority claim is made, the date of the earliest-filed application whose priority is claimed is used as the date for determining the timing of international processing, including the various transmittals, the payment of certain international and national fees, and publication of the application. Where no priority claim is made, the international filing date will be considered to be the “priority date” for timing purposes (PCT Article 2(xi)).
The international application is subject to the payment of certain fees within 1 month from the date of receipt. See PCT Rules 14.1(c), 15.3, and 16.1(f). The receiving Office will grant an international filing date to the application, collect fees, handle informalities by direct communication with the applicant, and monitor all corrections (35 U.S.C. 361(d)). By 13 months from the priority date, the receiving Office should prepare and transmit a copy of the international application, called the search copy (SC), to the International Searching Authority (ISA); and forward the original, called the record copy (RC), to the International Bureau (IB) (PCT Rules 22.1 and 23). A second copy of the international application, the home copy (HC), remains in the receiving Office (PCT Article 12(1)). Once the receiving Office has transmitted copies of
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1801
the application, the International SearchingAuthority becomes the focus of international processing.
III. INTERNATIONAL SEARCHINGAUTHORITY (ISA)
The basic functions of the International Searching Authority (ISA) are to conduct a prior art search of inventions claimed in international applications (it does this by searching in at least the minimum documentation defined by the Treaty (PCT Articles 15 and 16 and PCT Rule 34)) and to issue a written opinion (PCT Rule 43 bis ) which will normally be considered to be the first written opinion of the International Preliminary Examining Authority where international preliminary examination is demanded. See PCT Rule 66.1 bis .
For most applications filed with the United States Receiving Office, the applicant may choose (in the Request form) the U.S. Patent and Trademark Office, the European Patent Office, the Korean Intellectual Property Office, the Australian Patent Office (IP Australia), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), or the Japan Patent Office (JPO) to act as the International Searching Authority. However, IP Australia, ILPO, and JPO may not be competent to act as an International Searching Authority for certain applications filed by nationals or residents of the United States. See MPEP §§ 1840.01 - 1840.06 for a discussion of competency of ISA/EP, ISA/KR, ISA/AU, ISA/RU, ISA/IL, and ISA/JP. The International Searching Authority is also responsible for checking the content of the title and abstract (PCT Rules 37.2 and 38.2).
An international search report (ISR) and written opinion will normally be issued by the International Searching Authority within 3 months from the receipt of the search copy (usually about 16 months after the priority date) (PCT Rule 42). Copies of the international search report and prior art cited will be made available to the applicant by the ISA (PCT Rules 43 and 44.1). The international search report will contain a listing of documents found to be relevant and will identify the claims in the application to which they are pertinent. The written opinion indicates whether each claim appears to satisfy the PCT Article 33 criteria of “novelty,”
“inventive step,” and “industrial applicability.” The written opinion may also indicate defects in the form or content of the international application under the PCT articles and regulations, as well as any observations the ISA wishes to make on the clarity of the claims, the description, and the drawings, or on the question of whether the claims are fully supported by the description.
Once the international search report and written opinion are established, the ISA transmits one copy of each to the applicant and the International Bureau, and international processing continues before the International Bureau. If a Demand for Chapter II examination is not timely filed, the International Bureau communicates a copy of the written opinion established by the ISA (retitled International Preliminary Report on Patentability (Chapter I of the PCT)) to each designated Office after the expiration of 30 months from the priority date.
IV. INTERNATIONAL BUREAU (IB)
The basic functions of the International Bureau (IB) are to maintain the master file of all international applications and to act as the publisher and central coordinating body under the Treaty. The World Intellectual Property Organization (WIPO) in Geneva, Switzerland performs the duties of the International Bureau.
If the applicant has not filed a certified copy of the priority document in the receiving Office with the international application, requested upon filing that the receiving Office prepare and transmit to the International Bureau a copy of the prior U.S. national application, the priority of which is claimed, or requested the International Bureau to obtain a copy of the earlier application from a digital library, the applicant must submit such a document directly to the International Bureau or the receiving Office not later than 16 months after the priority date (PCT Rule 17). The request (Form PCT/RO/101) contains a box which can be checked requesting the receiving Office to prepare and transmit a copy of a prior application. This is only possible, of course, if the receiving Office is a part of the same national Office where the priority application was filed. The request (Form PCT/RO/101) also contains a box which can be checked requesting the International Bureau to
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obtain a copy of the earlier application from a digital library. This is only possible if the application is registered in a digital library, made available to the International Bureau within the prescribed time limit, as set forth in PCT Rule 17.1(b- bis), and the access code is furnished to the International Bureau.
The applicant has normally 2 months from the date of transmittal of the international search report to amend the claims by filing an amendment and may file a brief statement explaining the amendment directly with the International Bureau (PCT Article 19 and PCT Rule 46). The International Bureau will then normally publish the international application along with the search report and any amended claims at the expiration of 18 months from the priority date (PCT Article 21). For applications filed before July 1, 2014, former PCT Rule 44 ter provided that the written opinion of the ISA would not be made publicly available until the expiration of 30 months from the priority date. For applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by the applicant are made available to the public in their original language as of the publication date. The international publication includes a front page containing bibliographical data, the abstract, and a figure of the drawing (PCT Rule 48). The publication also contains the search report and any amendments to the claims submitted by the applicant. If the application is published in a language other than English, the search report and abstract are also published in English. The International Bureau publishes a PCT Gazette in the French and English languages which contains information similar to that on the front pages of published international applications, as well as various indexes and announcements (PCT Rule 86). The International Bureau also communicates copies of the publication of the international application to all designated Offices that have requested to receive the publication (PCT Article 20, PCT Rule 47, and PCT Rule 93 bis.1).
V. DESIGNATED OFFICE (DO) and ELECTED OFFICE (EO)
The designated Office is the national Office (for example, the USPTO) acting for the state or region designated under Chapter I. Similarly, the elected
Office is the national Office acting for the state or region elected under Chapter II.
PCT Article 22(1) was amended, effective April 1, 2002, to specify that a copy of the international application, a translation thereof (as prescribed), and the national fee are due to the designated Office not later than at the expiration of 30 months from the priority date. Accordingly, the time period for filing the copy of the international application, the translation, and the fee under PCT Article 22 is the same as the 30 month time period set forth in PCT Article 39. The USPTO has adopted the 30 month time limit set forth in PCT Article 22(1). Most Contracting States have changed their national laws for consistency with PCT Article 22(1) as amended. An up-to-date listing of Contracting States that have adopted Article 22(1) as amended is maintained at WIPO’s website at www.wipo.int/ pct/en/texts/time_limits.html. At the time of publication of this Chapter, only three countries have not adopted Article 22(1) as amended: Luxembourg (LU), United Republic of Tanzania (TZ) and Uganda (UG). It is noted that Luxembourg is included in the regional designation “EPO” and that the United Republic of Tanzania and Uganda are included in the regional designation “ARIPO.” For those few remaining Contracting States that have not adopted Article 22(1) as amended, if no “Demand” for international preliminary examination has been filed within 19 months of the priority date, the applicant may be required to complete the requirements for entering the national stage within 20 months from the priority date of the international application in the national offices of those states. When entering the national stage following Chapter I, the applicant has the right to amend the application within the time limit set forth in PCT Rule 52.1. After this time limit has expired (PCT Article 28 and PCT Rule 52), each designated Office will make its own determination as to the patentability of the application based upon its own specific national or regional laws (PCT Article 27(5)).
If the applicant desires to obtain the benefit of delaying the entry into the national stage until 30 months from the priority date in one or more countries where the 30 month time limit set forth in PCT Article 22(1) as amended does not apply, a Demand for international preliminary examination
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must be filed with an appropriate International Preliminary Examining Authority (IPEA) within 19 months of the priority date.
Those states in which the Chapter II procedure is desired must be “elected” in the Demand.
PCT Rule 54 bis.1 requires the Demand to be made prior to the expiration of whichever of the following periods expires later:
(A) three months from the date of transmittal to the applicant of the international search report or of the declaration referred to in PCT Article 17(2)(a), and of the written opinion under PCT Rule 43 bis.1; or
(B) 22 months from the priority date.
However, applicant may desire to file the Demand by 19 months from the priority date to extend the national stage entry deadline in Luxembourg, the United Republic of Tanzania, and Uganda.
The original Demand is forwarded to the International Bureau by the IPEA. The International Bureau then notifies the various elected Offices that the applicant has entered Chapter II and sends a copy of any amendments filed under PCT Article 19 and any statement explaining the amendments and the basis for the amendments to the IPEA. See PCT Rule 62. The International Bureau also sends the IPEA a copy of the written opinion established by the International Searching Authority (ISA) unless the ISA is also acting as the IPEA. See PCT Rule 62.1(i).
VI. INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY (IPEA)
The International Preliminary Examining Authority (IPEA) normally starts the examination process when it is in possession of:
(A) the Demand;
(B) the amount due;
(C) a translation, if the applicant is required to furnish a translation under PCT Rule 55.2;
(D) either the international search report or a notice of the declaration by the International Searching Authority (ISA) that no international search report will be established; and
(E) the written opinion established under PCT Rule 43 bis.1.
However, the IPEA shall not start the international preliminary examination before the expiration of the later of three months from the transmittal of the international search report (or declaration that no international search report will be established) and written opinion; or the expiration of 22 months from the priority date unless the applicant expressly requests an earlier start, with the exception of the situations provided for in PCT Rule 69.1(b) - (e).
The written opinion of the ISA is usually considered the first written opinion of the IPEA unless the IPEA has notified the International Bureau that written opinions established by specified International Searching Authorities shall not be considered a written opinion for this purpose. See PCT Rule 66.1 bis . Also, the IPEA may, at its discretion, issue further written opinions provided sufficient time is available. See PCT Rule 66.4.
The IPEA establishes the international preliminary examination report (entitled “international preliminary report on patentability”), which presents the examiner’s final position as to whether each claim is “novel,” involves “inventive step,” and is “industrially applicable” by 28 months from the priority date. A copy of the international preliminary examination report is sent to the applicant and to the International Bureau. The International Bureau then communicates a copy of the international preliminary examination report to each elected Office.
The applicant must complete the requirements for entering the national stage by the expiration of 30 months from the priority date to avoid any question of withdrawal of the application as to that elected Office; however, some elected Offices provide a longer period to complete the requirements.
A listing of all national and regional offices, and the corresponding time limits for entering the national stage after PCT Chapter I and PCT Chapter II, may
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be found on WIPO’s website at: www.wipo.int/pct/en/texts/time_limits.html.
1802 PCT Definitions [R-07.2015]
The PCT contains definitions in PCT Article 2 and in PCT Rule 2, which are found in MPEP Appendix T. Additional definitions are in 35 U.S.C. 351, found in MPEP Appendix L, in 37 CFR 1.9 and 1.401, found in MPEP Appendix R, and in PCT Administrative Instructions Section 101, found in MPEP Appendix AI.
1803 Reservations Under the PCT Taken by, and Notifications of Incompatibility Made by, the United States of America [R-07.2015]
The United States ofAmerica had originally declared that it was not bound by Chapter II (PCT Article 64(1)), but withdrew that reservation on July 1, 1987.
It has also declared that, as far as the United States of America is concerned, international publication is not required (PCT Article 64 (3)). Accordingly, under PCT Article 64(3)(b), if the United States is the only PCT Contracting State designated in an international application, the international application will not be published by the International Bureau (IB) at 18 months. Even though the United States Patent and Trademark Office has pre-grant publication under 35 U.S.C. 122(b), the United States has not removed its reservation under PCT Article 64(3) because not all United States patent applications are published. See 35 U.S.C. 122(b)(2). The application will, however, be published under 35 U.S.C. 122(b) if it enters the national stage in the United States. It will be published again if it is allowed to issue as a United States patent. This reservation is still in effect.
The U.S. Receiving Office continues to accept applications only in English. See 35 U.S.C. 361(c). PCT Rules 20.1(c), 26.3 ter(a) and 26.3 ter(c) permit an international filing date to be accorded even though portions of an international application are in a language not acceptable to the Receiving Office. PCT Rules 20.1(c), 26.3 ter(a) and 26.3 ter(c) are not compatible with the national law applied by the
United States Patent and Trademark Office (USPTO) as receiving Office. Thus, the USPTO has made a notification of incompatibility with respect to these rules pursuant to PCT Rules 20.1(d), 26.3 ter(b) and 26.3 ter(d). As a result, PCT Rules 20.1(c), 26.3 ter(a) and 26.3 ter(c) shall not apply to the USPTO as receiving Office for as long as the aforementioned incompatibility exists.
PCT Rules 49.5(c- bis) and 49.5(k) continue not to be compatible with the national law applied by the USPTO as a designated Office. See 35 U.S.C. 371(c)(2). Also, PCT Rules 49 ter.1(a)-(d) and 49 ter.2(a)-(g) are not compatible with the national law applied by the USPTO as a designated Office. See 35 U.S.C. 119(a). Thus, the USPTO has made a notification of incompatibility with respect to these Rules pursuant to PCT Rules 49.5(l), 49 ter.1(g) and 49 ter.2(h). As a result, PCT Rules 49.5(c- bis), 49.5(k), 49 ter.1(a)-(d) and 49 ter.2(a)-(g) shall not apply to the USPTO as designated Office for as long as the aforementioned incompatibility exists. See the International Bureau’s notice published on the WIPO website at: www.wipo.int/ pct/en/texts/reservations/res_incomp.html.
1804 [Reserved]
1805 Where To File an International Application [R-07.2015]
35 U.S.C. 361 Receiving Office.
(a) The Patent and Trademark Office shall act as a Receiving Office for international applications filed by nationals or residents of the United States. In accordance with any agreement made between the United States and another country, the Patent and Trademark Office may also act as a Receiving Office for international applications filed by residents or nationals of such country who are entitled to file international applications.
*****
See MPEP § 1806 as to who can file an international application.
Only if at least one of the applicants is a resident or national of the United States of America may an international application be filed in the United States Receiving Office. See PCT Article 9(1)and (3), PCT Rules 19.1 and 19.2, 35 U.S.C. 361(a) and 37 CFR
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1.412(a) and 1.421. The concepts of residence and nationality are defined in PCT Rule 18.1.
International applications may be filed electronically through the Office’s electronic filing system (EFS-Web). International applications and related papers may also be deposited with the United States Receiving Office by addressing the papers to “Mail Stop PCT” and delivering them to the Customer Service Window at the USPTO’s Alexandria headquarters. The street address is: U.S. Patent and Trademark Office, Customer Service Window, Mail Stop PCT, Randolph Building, 401 Dulany Street, Alexandria, VA 22314. The mailing address for delivery by the U.S. Postal Service is: Mail Stop PCT, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450. It should be noted that the Priority Mail Express® provisions of 37 CFR 1.10 apply to the filing of all applications and papers filed in the U.S. Patent and Trademark Office, including PCT international applications and related papers and fees. It should be further noted, however, that PCT international applications and papers relating to international applications are specifically excluded from the Certificate of Mailing or Transmission procedures under 37 CFR 1.8. See MPEP § 1834. If 37 CFR 1.8 is improperly used, the date to be accorded the paper will be the date of actual receipt in the Office unless the receipt date falls on a Saturday, Sunday, or federal holiday in which case the date of receipt will be the next succeeding day which is not a Saturday, Sunday, or federal holiday (37 CFR 1.6).
Irrespective of the Certification practice under 37 CFR 1.8(a), facsimile transmission (without the benefit of the certificate under 37 CFR 1.8(a)) may be used to submit certain papers in international applications. However, facsimile transmission may not be used for the filing of an international application, the filing of color drawings under 37 CFR 1.437, or the filing of a copy of the international application and the basic national fee to enter the U.S. national stage under 35 U.S.C. 371. See 37 CFR 1.6(d)(3) and (4), 1.8(a)(2)(i)(D), and 1.8(a)(2)(i)(F). The Demand for international preliminary examination may be filed by facsimile transmission. See MPEP § 1834.01.
The United States Receiving Office and PCT Help Desk are available to offer guidance on PCT requirements and procedures. See MPEP § 1730 for information on contacting the staff and other available means for obtaining information.
WARNING - although the United States patent law at 35 U.S.C. 21(a) authorizes the Director to prescribe by rule that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service, PCT Rule 20.1(a) provides for marking the “date of actual receipt on the request.” Although the Priority Mail Express® provisions under 37 CFR 1.10 have not been contested to date regarding PCT applications, applicants should be aware of a possible different interpretation by foreign authorities.
PCT Rule 19.4 provides for transmittal of an international application to the International Bureau as Receiving Office in certain instances. For example, when the international application is filed with the United States Receiving Office and the language in which the international application is filed is not accepted by the United States Receiving Office, or if the applicant does not have the requisite residence or nationality, the application may be forwarded to the International Bureau for processing in its capacity as a Receiving Office. See 37 CFR 1.412(c)(6). The Receiving Office of the International Bureau will consider the international application to be received as of the date accorded by the United States Receiving Office. This practice will avoid the loss of a filing date in those instances where the United States Receiving Office is not competent to act, but where the international application indicates an applicant to be a national or resident of a PCT Contracting state or is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office. Where questions arise regarding residence or nationality, i.e., the U.S. is not clearly competent, the application will be forwarded to the International Bureau as Receiving Office. Note, where no residence or nationality is indicated, the U.S. is not competent, and the application will be forwarded to the International Bureau as Receiving Office so long as the necessary fee is paid. The fee is an amount equal to the transmittal fee.
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If all of the applicants are indicated to be residents and nationals of non-PCT Contracting States, PCT Rule 19.4 does not apply, and the application is denied an international filing date.
Any applicant who is a resident or national of a PCT Contracting State may also file their application directly with the International Bureau as receiving Office. An applicant may wish to consider filing directly with the International Bureau as receiving Office instead of the United States Receiving Office in the situation where applicant is filing their international application after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard. See MPEP § 1828.01. An applicant may also request that an application be forwarded to the International Bureau for processing in its capacity as receiving Office in accordance with PCT Rule 19.4(a)(iii) in situations where the international application was filed with the United States Receiving Office after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard. However, any transfer request received after substantial processing of the international application by the United States Receiving Office has occurred may be declined.
Applications filed with, or forwarded to, the International Bureau must have a foreign filing license.
1806 Applicants and Inventors [R-07.2015]
Any resident or national of a Contracting State may file an international application. See PCT Article 9 and PCT Rule 18. The applicant can be an individual, corporate entity or other concern. Where there are two or more applicants, at least one of them must be a national or a resident of a Contracting State.
The question of whether an applicant is a resident or national of a Contracting State depends on the national law of that State and is decided by the receiving Office. Also, possession of a real and effective industrial or commercial establishment in
a Contracting State may be considered residence in that State, and a legal entity constituted according to the national law of a Contracting State is considered a national of that State.
Where the inventor is not the applicant, indications concerning the inventor must nevertheless be made in the Request where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application (PCT Rule 4.1(a)(iv)). See PCT Applicant’s Guide, International Phase, Annexes B1 and B2, for those States and regional patent systems which require such indications. Furthermore, information concerning the inventor is required by most countries for the national phase. In such a case, the check-box “inventor only” should be marked, the inventor’s name and address indicated in Box No. III, and the inventor’s residence and nationality omitted.
I. APPLICANT FOR PURPOSES OF THE UNITED STATES IN INTERNATIONAL APPLICATIONS HAVING AN INTERNATIONAL FILING DATE ON OR AFTER SEPTEMBER 16, 2012
37 CFR 1.421 Applicant for international application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]
(a) Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant:
(1) Has indicated a residence or nationality in a PCT Contracting State, or
(2) Has no residence or nationality indicated, applicant will be so notified and, if the international application includes a fee amount equivalent to that required by § 1.445(a)(4), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office (see also § 1.412(c)(6)).
(b) Although the United States Receiving Office will accept international applications filed by any applicant who is a resident or national of the United States of America for international processing, for the purposes of the designation of the United States, an international application will be accepted by the Patent and Trademark Office for the national stage only if the applicant is the inventor or other person as provided in § 1.422 or § 1.424. Joint inventors must jointly apply for an international application.
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(c) A registered attorney or agent of the applicant may sign the international application Request and file the international application for the applicant. A separate power of attorney from each applicant may be required.
(d) Any indication of different applicants for the purpose of different Designated Offices must be shown on the Request portion of the international application.
(e) Requests for changes in the indications concerning the applicant, agent, or common representative of an international application shall be made in accordance with PCT Rule 92 bis and may be required to be signed by all applicants.
(f) Requests for withdrawals of the international application, designations, priority claims, the Demand, or elections shall be made in accordance with PCT Rule 90 bis and must be signed by all applicants. A separate power of attorney from the applicants will be required for the purposes of any request for a withdrawal in accordance with PCT Rule 90 bis which is not signed by all applicants.
37 CFR 1.422 Legal representative as applicant in an international application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]
If an inventor is deceased or under legal incapacity, the legal representative of the inventor may be an applicant in an international application which designates the United States of America.
II. APPLICANT FOR PURPOSES OF THE UNITED STATES IN INTERNATIONAL APPLICATIONS HAVING AN INTERNATIONAL FILING DATE BEFORE SEPTEMBER 16, 2012
37 CFR 1.421 (pre-AIA) Applicant for international application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 before September 16, 2012]
(a) Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant:
(1) Has indicated a residence or nationality in a PCT Contracting State, or
(2) Has no residence or nationality indicated, applicant will be so notified and, if the international application includes a fee amount equivalent to that required by § 1.445(a)(4), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office (see also § 1.412(c)(6)).
(b) Although the United States Receiving Office will accept international applications filed by any resident or national of the United States of America for international processing, for
the purposes of the designation of the United States, an international application must be filed, and will be accepted by the Patent and Trademark Office for the national stage only if filed, by the inventor or as provided in §§ 1.422 or 1.423. Joint inventors must jointly apply for an international application.
(c) For the purposes of designations other than the United States, international applications may be filed by the assignee or owner.
(d) A registered attorney or agent of the applicant may sign the international application Request and file the international application for the applicant. A separate power of attorney from each applicant may be required.
(e) Any indication of different applicants for the purpose of different Designated Offices must be shown on the Request portion of the international application.
(f) Requests for changes in the indications concerning the applicant, agent, or common representative of an international application shall be made in accordance with PCT Rule 92 bis and may be required to be signed by all applicants.
(g) Requests for withdrawals of the international application, designations, priority claims, the Demand, or elections shall be made in accordance with PCT Rule 90 bis and must be signed by all applicants. A separate power of attorney from the applicants will be required for the purposes of any request for a withdrawal in accordance with PCT Rule 90 bis which is not signed by all applicants. The submission of a separate power of attorney may be excused upon the request of another applicant where one or more inventors cannot be found or reached after diligent effort. Such a request must be accompanied by a statement explaining to the satisfaction of the Director the lack of the signature concerned.
37 CFR 1.422 (pre-AIA) When the inventor is dead.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 before September 16, 2012]
In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may file an international application which designates the United States of America.
37 CFR 1.423 (pre-AIA) When the inventor is insane or legally incapacitated.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 before September 16, 2012]
In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may file an international application which designates the United States of America.
For international applications having international filing dates before September 16, 2012, only inventors (and legal representatives of deceased or legally incapacitated inventors) can be applicants
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for purposes of the designation of the United States. Therefore, for the purpose of entering the national stage in the United States of America, the inventor(s) must be indicated in the PCT Request as “applicant and inventor” for at least the United States.
A legal representative of a deceased inventor may be indicated in the international application as an applicant for the purposes of the United States. In such a case, the indication in the Request (in Box II or III, as appropriate) for the legal representative should be made as follows: SMITH, Alfred, legal representative of JONES, Bernard (deceased), followed by indications of the address, nationality and residence of the legal representative. The legal representative should be indicated as an “applicant only” except where the legal representative is also an inventor, in which case the legal representative should be indicated as an “applicant and inventor.” The name of the deceased inventor should also appear in a separate box (in Box III) with the indication of “deceased” (e.g., “JONES, Bernard (deceased))” and identified as an “inventor only” and not as an applicant.
1807 Agent or Common Representative and General Power of Attorney [R-07.2015]
37 CFR 1.455 Representation in international applications.
(a) Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative ( PCT Art. 49, Rules 4.8 and 90 and § 11.9). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record ( PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated ( PCT Rule 90.6(b) and (c)).
(b) Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either
to the United States Receiving Office or to the International Bureau.
(c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.
(d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions.
PCT Rule 90
Agents and Common Representatives
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90.4. Manner of Appointment of Agent or Common Representative
(a) The appointment of an agent shall be effected by the applicant signing the request, the demand, or a separate power of attorney. Where there are two or more applicants, the appointment of a common agent or common representative shall be effected by each applicant signing, at his choice, the request, the demand or a separate power of attorney.
(b) Subject to Rule 90.5, a separate power of attorney shall be submitted to either the receiving Office or the International Bureau, provided that, where a power of attorney appoints an agent under Rule 90.1(b), (b- bis), (c), or (d)(ii), it shall be submitted to the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, as the case may be.
(c) If the separate power of attorney is not signed, or if the required separate power of attorney is missing, or if the indication of the name or address of the appointed person does not comply with Rule 4.4, the power of attorney shall be considered nonexistent unless the defect is corrected.
(d) Subject to paragraph (e), any receiving Office, any International Searching Authority, any Authority competent to carry out supplementary searches, any International Preliminary Examining Authority and the International Bureau may waive the requirement under paragraph (b) that a separate power of attorney be submitted to it, in which case paragraph (c) shall not apply.
(e) Where the agent or the common representative submits any notice of withdrawal referred to in Rules 90 bis.1 to 90 bis.4, the requirement under paragraph (b) for a separate power of attorney shall not be waived under paragraph (d).
*****
Where an appointment of an agent or common representative is effected by a separate power of attorney, that power of attorney must be submitted to either the receiving Office or the International Bureau. However, a power of attorney appointing an agent or subagent to represent the applicant specifically before the International Searching Authority or the International Preliminary Examining Authority must be submitted directly to that Authority. See PCT Rule 90.4(b).
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The Customer Number Practice set forth in MPEP § 403 may not be used in the international phase to appoint an agent or designate a correspondence address. A power of attorney making use of the Customer Number Practice in the international phase to indicate the name or address of an appointed person will be considered nonexistent unless the defect is corrected. See PCT Rule 90.4(c). A Customer Number may be used in the international phase solely for purposes of viewing the international application in the Patent Application Information Retrieval (PAIR) system. See MPEP § 1809.
I. “GENERAL” POWER OF ATTORNEY
PCT Rule 90
Agents and Common Representatives
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90.5. General Power of Attorney
(a) Appointment of an agent in relation to a particular international application may be effected by referring in the request, the demand, or a separate notice to an existing separate power of attorney appointing that agent to represent the applicant in relation to any international application which may be filed by that applicant (i.e., a “general power of attorney”), provided that:
(i) the general power of attorney has been deposited in accordance with paragraph (b), and
(ii) a copy of it is attached to the request, the demand or the separate notice, as the case may be; that copy need not be signed.
(b) The general power of attorney shall be deposited with the receiving Office, provided that, where it appoints an agent under Rule 90.1(b), (c), or (d)(ii), it shall be deposited with the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, as the case may be.
(c) Any receiving Office, any International Searching Authority, any Authority competent to carry out supplementary searches and any International Preliminary Examining Authority may waive the requirement under paragraph (a)(ii) that a copy of the general power of attorney is attached to the request, the demand or the separate notice, as the case may be.
(d) Notwithstanding paragraph (c), where the agent submits any notice of withdrawal referred to in Rules 90 bis.1 to 90 bis.4 to the receiving Office, the Authority specified for supplementary search, the International Preliminary Examining Authority or the International Bureau, as the case may be, a copy of the general power of attorney shall be submitted to that Office, Authority or Bureau.
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“General” powers of attorney are recognized for the purpose of filing and prosecuting an international application before the international authorities. See PCT Rule 90.5.
Any general power of attorney must be filed with the receiving Office if the appointment was for the purposes of the international phase generally, or with the International SearchingAuthority or International Preliminary Examining Authority if the appointment was specifically to represent the applicant before that Authority. The appointment will then be effective in relation to any particular application filed by that applicant provided that the general power of attorney is referred to in the request, the Demand or a separate notice, and that a copy of the general power of attorney is attached to that request, Demand or separate notice. That copy of the signed original need not, itself, be separately signed.
II. WAIVER OF REQUIREMENT FOR A POWER OF ATTORNEY
Pursuant to PCT Rules 90.4(d) and 90.5(c), which are applicable to international applications having an international filing date on or after January 1, 2004, the receiving Office, International Bureau, International Searching Authority and International Preliminary Examining Authority may waive the requirement for a separate power of attorney or copy of the general power of attorney in all cases except with respect to notice of withdrawals under PCT Rule 90 bis (i.e., notices withdrawing international applications, designations, priority claims, demands or elections). The USPTO, when acting in its capacity as a receiving Office, International Searching Authority, or International Preliminary Examining Authority, will in most cases waive the requirement for a separate power of attorney and copy of the general power of attorney. However, a separate power of attorney or copy of the general power of attorney may still be required in certain cases, e.g., where an agent’s authority to act on behalf of the applicant is in doubt or where waiver could result in harm to an applicant as in the case of the removal of an applicant.
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§ 1807PATENT COOPERATION TREATY
Model power of attorney and general power of attorney forms are available online from WIPO’s website (www.wipo.int/pct/en/index.html).
1808 Change in or Revocation of the Appointment of an Agent or a Common Representative [R-07.2015]
PCT Rule 90.
Agents and Common Representatives
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90.6 Revocation and Renunciation
(a) Any appointment of an agent or common representative may be revoked by the persons who made the appointment or by their successors in title, in which case any appointment of a sub-agent under Rule 90.1(d) by that agent shall also be considered as revoked. Any appointment of a subagent under Rule 90.1(d) may also be revoked by the applicant concerned.
(b) The appointment of an agent under Rule 90.1(a) shall, unless otherwise indicated, have the effect of revoking any earlier appointment of an agent made under that Rule.
(c) The appointment of a common representative shall, unless otherwise indicated, have the effect of revoking any earlier appointment of a common representative.
(d) An agent or a common representative may renounce his appointment by a notification signed by him.
(e) Rule 90.4(b) and (c) shall apply, mutatis mutandis, to a document containing a revocation or renunciation under this Rule.
37 CFR 1.455 Representation in international applications.
(a) Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49 , Rules 4.8 and 90 and § 11.9). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated (PCT Rule 90.6(b) and (c)).
(b) Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed
by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
(c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.
(d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions.
The appointment of an agent or a common representative can be revoked. The document containing the revocation must be signed by the persons who made the appointment or by their successors in title. The appointment of a sub-agent may also be revoked by the applicant concerned. If the appointment of an agent is revoked, any appointment of a sub-agent by that agent is also considered revoked. Also, as an agent may not be appointed by Customer Number Practice in the international phase (see MPEP § 1807), an appointment of an agent may not be revoked by reference to a Customer Number.
The appointment of an agent for the international phase in general automatically has the effect, unless otherwise indicated, of revoking any earlier appointment of an agent. The appointment of a common representative similarly has the effect, unless otherwise indicated, of revoking any earlier appointment of a common representative.
Renunciation of an appointment may be made by means of a notification signed by the agent or common representative. The applicant is informed of the renunciation by the International Bureau.
The rules for signing and submission of a power of attorney set forth in PCT Rule 90.4(b) and (c) also apply to a revocation or renunciation of an appointment. See PCT Rule 90.6(e).
U.S. attorneys or agents wishing to withdraw from representation in international applications may request to do so. To expedite the handling of requests for permission to withdraw as attorney, the request should be submitted to the International Bureau or to the receiving Office at Mail Stop PCT and should indicate the present mailing addresses of the attorney who is withdrawing and of the applicant. The Office will not accept address changes to a new practitioner or law firm absent the filing of a power of attorney
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to the new representative. Because the United States Patent and Trademark Office (USPTO) does not recognize law firms, each attorney of record must sign the notice of withdrawal, or the notice of withdrawal must contain a clear indication of one attorney signing on behalf of another.
In accordance with 37 CFR 11.116, the USPTO will usually require the practitioner(s) to certify that he, she or they have: (1) given reasonable notice to the client, prior to the expiration of the reply period, that the practitioner(s) intends to withdraw from employment; and (2) delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled. Furthermore, as 37 CFR 11.116 permits withdrawal from representation before the Office for reasons set forth in 37 CFR 11.116(a) and (b), if the reasons for withdrawal do not conform to one of the mandatory or permissive reasons set forth in 37 CFR 11.116, the Office will not approve the request.
The Office will not approve requests from practitioners to withdraw from applications where the requesting practitioner was not appointed in a power of attorney but is acting, or has acted, in a representative capacity pursuant to 37 CFR 1.34. In these situations, the practitioner is responsible for the correspondence the practitioner files in the application while acting in a representative capacity. As such, there is no need for the practitioner to obtain the permission of the Office to withdraw from representation.
Practitioners should note that the International Bureau will not record a change in the agent if the requested change is received by it after the expiration of 30 months from the priority date. See PCT Rule 92 bis. Where a request to withdraw from representation is filed with the USPTO after the expiration of this time period, the request may not be treated on the merits.
For withdrawal of attorney or agent in the national stage, see MPEP § 402.06.
1809 PAIR Access [R-07.2015]
The PatentApplication Information Retrieval (PAIR) system displays information regarding patent
application status. The private PAIR system allows applicant to access the current patent application status electronically via the Internet. To have access to private PAIR, the applicant must be a registered patent attorney/agent, an independent inventor, or a person granted limited recognition, have a customer number, and have a digital certificate to allow secure access to patent data. Further information can be f o u n d a t w w w . u s p t o . g o v / patents/process/file/efs/guidance/register.jsp.
To associate a new international application that applicant is filing in EFS-Web with an existing customer number, enter the customer number in the appropriate field of EFS-Web when filling in the data.
To associate a previously filed international application to a customer number, a request must be made. Applicant must provide the customer number, international application number, registration number and signature of applicant or attorney of record. Form PTO-2248 may be obtained from the USPTO website (www.uspto.gov/patents-getting-started/ international-protection/patent-cooperation-treaty/ pct-chapter-i-forms). The form can be mailed or transmitted by facsimile to Mail Stop EBC, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. The fax number is 571-273-0177.
The ability to view on private PAIR the status of the international application does not allow an applicant to change the correspondence address or appoint or change an agent with the customer number. See MPEP § 1807. Such a change must be made under PCT Rule 92 bis through the submission of a written request to the U.S. receiving Office or the International Bureau.
1810 Filing Date Requirements [R-07.2015]
PCT Article 11.
Filing Date and Effects of the International Application
(1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:
(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,
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(ii) the international application is in the prescribed language,
(iii) the international application contains at least the following elements:
(a) an indication that it is intended as an international application,
(b) the designation of at least one Contracting State,
(c) the name of the applicant, as prescribed,
(d) a part which on the face of it appears to be a description
(e) a part which on the face of it appears to be a claim or claims.
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35 U.S.C. 363 International application designating the United States: Effect.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the America Invents Act (AIA). See 35 U.S.C. 100 (note).]
An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.
35 U.S.C. 363 (pre-AIA) International application designating the United States: Effect.
[Editor Note: Applicable to applications not subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 363 immediately above for the law otherwise applicable.]
An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office except as otherwise provided in section 102(e).
37 CFR 1.431 International application requirements.
[Editor Note: See pre-AIA 37 CFR 1.431 in Appendix R for para. (b)(3)(iii) applicable to applications filed before September 16, 2012]
(a) An international application shall contain, as specified in the Treaty and the Regulations, a Request, a description, one or more claims, an abstract, and one or more drawings (where required). ( PCT Art. 3(2) and Section 207 of the Administrative Instructions.)
(b) An international filing date will be accorded by the United States Receiving Office, at the time of receipt of the international application, provided that:
(1) At least one applicant is a United States resident or national and the papers filed at the time of receipt of the international application so indicate (35 U.S.C. 361(a), PCT Art. 11(1)(i)).
(2) The international application is in the English language (35 U.S.C. 361(c), PCT Art. 11(1)(ii)).
(3) The international application contains at least the following elements (PCT Art. 11(1)(iii)):
(i) An indication that it is intended as an international application (PCT Rule 4.2);
(ii) The designation of at least one Contracting State of the International Patent Cooperation Union (§ 1.432);
(iii) The name of the applicant, as prescribed (note §§ 1.421, 1.422, and 1.424);
(iv) A part which on the face of it appears to be a description; and
(v) A part which on the face of it appears to be a claim.
(c) Payment of the international filing fee (PCT Rule 15.2) and the transmittal and search fees (§ 1.445) may be made in full at the time the international application papers required by paragraph (b) of this section are deposited or within one month thereafter. The international filing, transmittal, and search fee payable is the international filing, transmittal, and search fee in effect on the receipt date of the international application.
(1) If the international filing, transmittal and search fees are not paid within one month from the date of receipt of the international application and prior to the sending of a notice of deficiency which imposes a late payment fee, applicant will be notified and given one month within which to pay the deficient fees plus the late payment fee. Subject to paragraph (c)(2) of this section, the late payment fee will be equal to the greater of:
(i) Fifty percent of the amount of the deficient fees; or
(ii) An amount equal to the transmittal fee.
(2) The late payment fee shall not exceed an amount equal to fifty percent of the international filing fee not taking into account any fee for each sheet of the international application in excess of thirty sheets (PCT Rule 16 bis ).
(3) The one-month time limit set pursuant to paragraph (c) of this section to pay deficient fees may not be extended.
(d) If the payment needed to cover the transmittal fee, the international filing fee, the search fee, and the late payment fee pursuant to paragraph (c) of this section is not timely made in accordance with PCT Rule 16 bis.1(e), the Receiving Office will declare the international application withdrawn under PCT Article 14(3)(a).
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THE “INTERNATIONAL FILING DATE”
An international filing date is accorded to the earliest date on which the requirements under PCT Article 11(1) were satisfied. If the requirements under PCT Article 11(1) are not satisfied as of the date of initial receipt of the international application papers, the receiving Office will invite applicant to correct the deficiency within a set time limit. See PCT Article 11(2) and PCT Rule 20.3. In such case, the international filing date will be the date on which a timely filed correction is received by the receiving Office. If the defect under PCT Article 11(1) is that the purported international application fails to contain a portion which on its face appears to be a description or claims, and if the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the initial receipt date may be retained as the international filing date if the submitted correction was completely contained in the earlier application. See PCT Rules 4.18 and 20.6. If the defect under PCT Article 11(1) is not timely corrected, the receiving Office will promptly notify the applicant that the application is not and will not be treated as an international application. See PCT Rule 20.4. Where all the sheets pertaining to the same international application are not received on the same day by the receiving Office, in most instances, the date of receipt of the application will be amended to reflect the date on which the last missing sheets were received. As an amended date of receipt may cause the priority claim to be forfeited, applicants should assure that all sheets of the application are deposited with the receiving Office on the same day. If the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the initial receipt date may be retained as the international filing date if the submitted correction was completely contained in the earlier application. Again see PCT Rules 4.18 and 20.6.
An all too common occurrence is that applicants will file an international application in the U.S. Receiving Office and no applicant has a U.S. residence or nationality. Applicants are cautioned to be sure that at least one applicant is a resident or national of the U.S. before filing in the U.S. Receiving Office. Where no applicant indicated on the request papers
is a resident or national of the United States, the USPTO is not a competent receiving Office for the international application under PCT Rule 19.1(a). Nonetheless, the date the international application was filed in the USPTO will not be lost as a filing date for the international application if at least one applicant is a resident or national of any PCT Contracting State. Under PCT Rule 19.4, the USPTO will receive the application on behalf of the International Bureau as receiving Office (PCT Rule 19.4(a)) and, upon payment of a fee equal to the transmittal fee, the USPTO will promptly transmit the international application to the International Bureau under PCT Rule 19.4(b). However, if all of the applicants are indicated to be both residents and nationals of non-PCT Contracting States, PCT Rule 19.4 does not apply, and the application is denied an international filing date.
The USPTO is also not competent to receive international applications that are not in the English language and, upon payment of a fee equal to the transmittal fee, the USPTO will forward such applications to the International Bureau under PCT Rule 19.4 provided they are in a language accepted by the International Bureau as receiving Office.
A discussion of PCT Rule 19.4 is also included in MPEP § 1805.
1811 [Reserved]
1812 Elements of the International Application [R-07.2015]
PCT Article 3.
The International Application
(1) Applications for the protection of inventions in any of the Contracting States may be filed as international applications under this Treaty.
(2) An international application shall contain, as specified in this Treaty and the Regulations, a request, a description, one or more claims, one or more drawings (where required), and an abstract.
(3) The abstract merely serves the purpose of technical information and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.
(4) The international application shall:
(i) be in a prescribed language;
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(ii) comply with the prescribed physical requirements;
(iii) comply with the prescribed requirement of unity of invention;
(iv) be subject to the payment of the prescribed fees.
Any international application must contain the following elements: request, description, claim or claims, abstract and one or more drawings (where drawings are necessary for the understanding of the invention (PCT Article 3(2) and PCT Article 7(2)). The elements of the international application are to be arranged in the following order: the request, the description (other than any sequence listing part thereof), the claims, the abstract, the drawings, and the sequence listing part of the description (where applicable) (Administrative Instructions Section 207(a)). All the sheets contained in the international application must be numbered in consecutive Arabic numerals by using the following separate series of numbers: a first series applying to the request; a second series to the description, claims and abstract; a third series to the drawings (where applicable); and a further series to the sequence listing part of the description (where applicable) (PCT Rule 11.7 and Administrative Instructions Section 207(b)). Only one copy of the international application need be filed in the United States Receiving Office ( 37 CFR 1.433(a)). The request is made on a standardized form (Form PCT/RO/101), copies of which can be obtained from the USPTO or online f r o m W I P O ’ s w e b s i t e (www.wipo.int/pct/en/forms/). The “Request” form can also be presented as a computer printout prepared using the PCT-SAFE software. This software can be downloaded from the PCT-SAFE w e b s i t e ( w w w . w i p o . i n t / pct-safe/en/download/download_client.html).
1813 -1816 [Reserved]
1817 PCT Member States [R-07.2015]
An updated list of PCT Contracting States is available from WIPO’s website
(www.wipo.int/pct/guide/en/gdvol1/annexes/ annexa/ ax_a.pdf or
www.wipo.int/pct/en/pct_contracting_states.html). An updated list of PCT Contracting States for which a regional patent can be obtained via the PCT is available from the WIPO’s website (www.wipo.int/pct/en/texts/reg_des.html).
1818 [Reserved]
1819 Earlier Search [R-08.2012]
PCT Rule 4.
The Request (Contents)
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4.12. Taking into Account Results of Earlier Search
If the applicant wishes the International Searching Authority to take into account, in carrying out the international search, the results of an earlier international, international-type or national search carried out by the same or another International Searching Authority or by a national Office (“earlier search”):
(i) the request shall so indicate and shall specify the Authority or Office concerned and the application in respect of which the earlier search was carried out;
(ii) the request may, where applicable, contain a statement to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language.
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PCT Rule 12 bis.
Copy of Results of Earlier Search and of Earlier Application; Translation
12 bis.1 Copy of Results of Earlier Search and of Earlier Application; Translation
(a) Where the applicant has, under Rule 4.12, requested the International Searching Authority to take into account the results of an earlier search carried out by the same or another International Searching Authority or by a national Office, the applicant shall, subject to paragraphs (c) to (f), submit to the receiving Office, together with the international application, a copy of the results of the earlier search, in whatever form (for example, in the form of a search report, a listing of cited prior art or an examination report) they are presented by the Authority or Office concerned.
(b) The International Searching Authority may, subject to paragraphs (c) to (f), invite the applicant to furnish to it, within a time limit which shall be reasonable under the circumstances:
(i) a copy of the earlier application concerned;
(ii) where the earlier application is in a language which is not accepted by the International Searching Authority, a
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translation of the earlier application into a language which is accepted by that Authority;
(iii) where the results of the earlier search are in a language which is not accepted by the International Searching Authority, a translation of those results into a language which is accepted by that Authority;
(iv) a copy of any document cited in the results of the earlier search.
(c) Where the earlier search was carried out by the same Office as that which is acting as the receiving Office, the applicant may, instead of submitting the copies referred to in paragraphs (a) and (b)(i) and (iv), indicate the wish that the receiving Office prepare and transmit them to the International Searching Authority. Such request shall be made in the request and may be subjected by the receiving Office to the payment to it, for its own benefit, of a fee.
(d) Where the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, no copy or translation referred to in paragraphs (a) and (b) shall be required to be submitted under those paragraphs.
(e) Where the request contains a statement under Rule 4.12(ii) to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language, no copy or translation referred to in paragraphs (b)(i) and (ii) shall be required to be submitted under those paragraphs.
(f) Where a copy or translation referred to in paragraphs (a) and (b) is available to the International Searching Authority in a form and manner acceptable to it, for example, from a digital library or in the form of the priority document, and the applicant so indicates in the request, no copy or translation shall be required to be submitted under those paragraphs.
Where the applicant wishes the International Searching Authority (ISA) to take into account, in carrying out the international search, the results of one or more earlier international, international-type, or national searches carried out by the same or another ISA or by a national Office, the application(s) must be identified in the request. Applicants should identify the application(s) in Box No. VII of the request by the filing date, application number, and the country or regional Office.
The United States Patent and Trademark Office performs an international-type search on all U.S. national applications filed on and after June 1, 1978. No specific request by the applicant is required and
no number identifying the international-type search is assigned by the Office. See 37 CFR 1.104(a)(3).
1820 Signature of Applicant [R-07.2015]
PCT Article 14.
Certain Defects in the International Application
(1)
(a) The receiving Office shall check whether the international application contains any of the following defects, that is to say
(i) it is not signed as provided in the Regulations;
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PCT Rule 4.
The Request (Contents)
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4.15 Signature
The request shall be signed by the applicant or, if there is more than one applicant, by all of them.
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PCT Rule 26.
Checking by, and Correcting Before, the Receiving Office of Certain Elements of the International Application
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26.2 bis. Checking of Requirements Under Article 14(1)(a)(i) and (ii)
(a) For the purposes of Article 14(1)(a)(i), if there is more than one applicant, it shall be sufficient that the request be signed by one of them.
(b) For the purposes of Article 14(1)(a)(ii), if there is more than one applicant, it shall be sufficient that the indications required under Rule 4.5(a)(ii) and (iii) be provided in respect of one of them who is entitled according to Rule 19.1 to file the international application with the receiving Office.
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SIGNATURE OF APPLICANT OR AGENT
Pursuant to PCT Rule 4.15, the international application must be signed in Box No. X of the request by the applicant, or, where there are two or more applicants, by all of them. However, under PCT Rule 26.2 bis, it is sufficient for purposes of PCT Article 14(1)(a)(i) that the application is signed by only one of the applicants. The United States Receiving Office will not issue an invitation to applicants to furnish missing signatures where the
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§ 1820PATENT COOPERATION TREATY
request is signed by at least one of the applicants. Notwithstanding PCT Rule 26.2 bis, any designated/elected office, in accordance with its national law, can still require confirmation of the international application by the signature of any applicant for such designated state who has not signed the request. PCT Rule 51 bis.1(a)(vi). Pursuant to 37 CFR 1.4(d), the request filed may be either an original, or a copy thereof.
The international application may be signed by an agent.
The requirement for the submission of a separate power of attorney may be waived by the receiving Office. The United States Receiving Office will, in most cases, waive the requirement for a separate power of attorney. See MPEP § 1807.
The United States Receiving Office will accept signatures meeting the requirements of either 37 CFR 1.4(d)(1) with respect to handwritten signatures or 37 CFR 1.4(d)(2) with respect to S-signatures. For handwritten signatures, the name of each person signing the international application should be indicated (preferably typewritten) next to the signature. For S-signatures, the signer’s name must be presented in printed or typed form preferably immediately below or adjacent the S-signature, and must be reasonably specific enough so that the identity of the signer can be readily recognized. See MPEP § 502.02, subsection II. Where a person signs on behalf of a legal entity (an organization such as a corporation, university, nonprofit organization, or governmental agency), his or her name and the capacity in which he or she signs should be indicated. Proof of the person’s authority to sign on behalf of the legal entity will be required if that person does not possess apparent authority to sign on behalf of the legal entity and that person has not submitted a statement that he or she is authorized to sign on behalf of the legal entity (discussed below). An officer (President, Vice-President, Secretary, Treasurer, Chief Executive Officer, Chief Operating Officer or Chief Financial Officer) of an organization is presumed to have authority to sign on behalf of that organization. The signature of the chairman of the board is also acceptable, but not the signature of an individual director. Variations of these titles (such as vice-president for sales, executive vice-president,
assistant treasurer, vice-chairman of the board of directors) are acceptable. In general, a person having a title (manager, director, administrator, general counsel) that does not clearly set forth that person as an officer of the organization is not presumed to be an officer or to have the authority to sign on behalf of the organization. However, an exception is made with respect to foreign juristic applicants. This is because in foreign countries, a person who holds the title “Manager” or “Director” is normally an officer or the equivalent thereof; therefore, those terms are generally acceptable as indicating proper persons to sign applications for foreign applicants. However, titles such as “Manager of Patents,” suggesting narrowly limited duties, are not acceptable. An attorney does not generally have apparent authority to sign on behalf of an organization.
Proof that a person has the authority to sign on behalf of a legal entity may take the form of a copy of a resolution of the board of directors, a provision of the bylaws, or a copy of a paper properly delegating authority to that person to sign the international application on behalf of the legal entity.
It is acceptable to have a person sign the international application on behalf of a legal entity if that person submits a statement that the person has the authority to sign the international application on behalf of the legal entity. This statement should be on a separate paper and must not appear on the Request (or Demand) form itself. The statement must include a clause such as “The undersigned (whose title is supplied below) is empowered to sign the Request on behalf of the applicant.”
The international application can be filed without applicant’s signature on the request. The lack of any required signature on the request is a correctable defect under PCT Article 14(1)(a)(i) and (b), and can be remedied by filing a copy of the request (or, where the request has been signed by an agent, of a power of attorney) duly signed by the applicant
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within the time limit fixed by the receiving Office for the correction of this defect.
1821 The Request [R-07.2015]
A general overview of certain aspects of the request follows.
37 CFR 1.434 The request.
(a) The request shall be made on a standardized form (PCT Rules 3 and 4). Copies of printed Request forms are available from the United States Patent and Trademark Office. Letters requesting printed forms should be marked “Mail Stop PCT.”
(b) The Check List portion of the Request form should indicate each document accompanying the international application on filing.
(c) All information, for example, addresses, names of States and dates, shall be indicated in the Request as required by PCT Rule 4 and Administrative Instructions 110 and 201.
(d) For the purposes of the designation of the United States of America, an international application shall include:
(1) The name of the inventor; and;
(2) A reference to any prior-filed national application or international application designating the United States of America, if the benefit of the filing date for the prior-filed application is to be claimed.
(e) An international application may also include in the Request a declaration of the inventors as provided for in PCT Rule 4.17(iv).
The Request must either be made on a printed standard form PCT/RO/101 to be filled in with the required indications or be presented as a computer printout complying with the PCT Administrative Instructions. Any prospective applicant may obtain copies of the Request form PCT/RO/101, free of charge, from the receiving Office with which he/she plans to file his/her international application. Applicants may obtain an English language Request form from the United States Patent and Trademark Office using the following address: Mail Stop PCT, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450. The Request form may also be obtained online from WIPO’s website (www.wipo.int/pct/en/forms/). Details of the requirements for the Request if presented as a computer printout are set out in Administrative Instructions Section 102(h).
The Request can also be filed via EFS-Web by uploading a PCT-EASY .zip file created using
PCT-SAFE software which is available for downloading at WIPO’s website (www.wipo.int/pct-safe/en/download/download_client.html). The zip file from PCT-SAFE contains a validated PCT Request and fee calculation sheet in PDF format which are subsequently loaded in the USPTO’s Image File Wrapper (IFW). Further, submission of the zip file at the time of filing the international application entitles the applicant to a reduction of the international filing fee.
The Request contains a petition for the international application to be processed according to the PCT and must also contain certain indications. It must contain the title of the invention. It must identify the applicant and the agent (if any), and must contain the designation of at least one Contracting State.
The Request may not contain any matter that is not specified in PCT Rules 4.1 to 4.17 or permitted under PCT Rule 4.18(a) by the Administrative Instructions. Any additional material will be deleted ex officio. See PCT Rule 4.18(b) and Administrative Instructions Section 303.
I. DATES
Each date appearing in the international application or in any correspondence must be indicated by the Arabic number of the day, the name of the month and the Arabic number of the year, in that order. In the request, after, below or above that indication, the date should be repeated in parentheses with a two-digit Arabic numeral each for the number of the day and for the number of the month and followed by the number of the year in four digits, in that order and separated by periods, slashes or hyphens after the digit pairs of the day and of the month, for example, “20 March 2004 (20.03.2004),” “20 March 2004 (20/03/2004),” or “20 March 2004 (20-03-2004).” See Administrative Instructions Section 110.
II. SUPPLEMENTAL BOX
This box is used for any material which cannot be placed in one of the previous boxes because of space limitations. The supplemental information placed in this box should be clearly entitled with the Box number from which it is continued, e.g.,
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“Continuation of Box No. IV.” For indicating the international application as a continuation or continuation-in-part of an earlier application, see MPEP § 1828.02.
III. FILE REFERENCE
The applicant or his/her agent may indicate a file reference in the box provided for this purpose on the first sheet of the Request form, on each page of the other elements of the international application, on the first sheet of the demand form, and in any other correspondence relating to the international application. PCT Rule 11.6(f) indicates that the file reference may be included in the top margin of the sheets of the international application. As provided in Administrative Instructions Section 109, the file reference may be composed either of letters of the Latin alphabet or Arabic numerals, or both. It may not exceed 12 characters including spaces. If the file reference exceeds 12 characters, the receiving Office may ex officio truncate the reference number to 12 characters and notify the applicant. The receiving Office, the International Bureau, the International Searching Authority and the International Preliminary Examining Authority (International Authorities) will use the file reference in correspondence with the applicant.
IV. TITLE OF INVENTION
The Request must contain the title of the invention; the title must be short (preferably 2 to 7 words) and precise (PCT Rule 4.3). The title in Box No. I of the Request is considered to be the title of the application. The title appearing on the first page of the description (PCT Rule 5.1(a)) and on the page containing the abstract should be consistent with the title indicated in Box No. I of the Request form.
A title should not be changed by the examiner merely because it contains words which are not considered descriptive of the invention. Words, for example, such as “improved” or “improvement of” are acceptable. If the title is otherwise not descriptive of the invention, a change to a more descriptive title should be made and the applicant informed thereof in the search report.
Where the title is missing or is inconsistent with the title in the description, the receiving Office invites the applicant to correct the missing or inconsistent title.
V. APPLICANT
See MPEP § 1806 regarding who can be an applicant.
VI. NAMES
The name of a natural person must be indicated by the family name followed by the given name(s). Academic degrees or titles or other indications which are not part of the person’s name must be omitted. The family name should preferably be written in capital letters.
The name of a legal entity must be indicated by its full official designation (preferably in capital letters).
VII. ADDRESSES
Addresses must be indicated in such a way as to satisfy the requirements for prompt postal delivery at the address indicated and must consist of all the relevant administrative units up to and including the house number (if any). The address must also include the country.
VIII. DESIGNATION OF STATES
PCT Rule 4.
The Request (Contents)
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4.9 Designation of States; Kinds of Protection; National and Regional Patents
(a) The filing of a request shall constitute:
(i) the designation of all Contracting States that are bound by the Treaty on the international filing date;
(ii) an indication that the international application is, in respect of each designated State to which Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State:
(iii) an indication that the international application is, in respect of each designated State to which Article 45(1) applies, for the grant of a regional patent and also, unless PCT Article 45(2) applies, a national patent.
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(b) Notwithstanding paragraph (a)(i), if, on October 5, 2005, the national law of a Contracting State provides that the filing of an international application which contains the designation of that State and claims the priority of an earlier national application having effect in that State shall have the result that the earlier national application ceases to have effect with the same consequences as the withdrawal of the earlier national application, any request in which the priority of an earlier national application filed in that State is claimed may contain an indication that the designation of that State is not made, provided that the designated Office notifies the International Bureau by January 5, 2006, that this paragraph shall apply in respect of designations of that State and that the notification is still in force on the international filing date. The information received shall be promptly published by the International Bureau in the Gazette.
37 CFR 1.432 Designation of States by filing an international application.
The filing of an international application request shall constitute:
(a) The designation of all Contracting States that are bound by the Treaty on the international filing date;
(b) An indication that the international application is, in respect of each designated State to which PCT Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State; and
(c) An indication that the international application is, in respect of each designated State to which PCT Article 45(1) applies, for the grant of a regional patent and also, unless PCT Article 45(2) applies, a national patent.
The filing of an international application request constitutes: (A) the designation of all Contracting States that are bound by the Treaty on the international filing date; (B) an indication that the international application is, in respect of each designated State to which PCT Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State; and (C) an indication that the international application is, in respect of each designated State to which PCT Article 45(1) applies, for the grant of a regional patent and also, unless PCT Article 45(2) applies, a national patent. See 37 CFR 1.432 and PCT Rule 4.9.
Pursuant to PCT Rule 4.9(b), certain States may be excepted from the all-inclusive designation system under limited circumstances. Specifically, where the international application contains a priority claim to an earlier national application having effect in a State whose national law provides that the designation of
such State has the result that the earlier national application ceases to have effect in such State, then the request may contain an indication that such State is not designated. Applicability of PCT Rule 4.9(b) is contingent upon timely notice by the affected Office to the International Bureau. The Request may exclude the following designations: Germany (DE), Japan (JP), and Republic of Korea (KR). See Reservations, Declarations, Notifications and Incompatibilities at www.wipo.int/ pct/en/texts/reservations/res_incomp.html.
1822 [Reserved]
1823 The Description [R-07.2015]
PCT Article 5.
The Description
The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.
PCT Rule 5.
The Description.
5.1 Manner of the Description
(a) The description shall first state the title of the invention as appearing in the request and shall:
(i) specify the technical field to which the invention relates;
(ii) indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, cite the documents reflecting such art;
(iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art;
(iv) briefly describe the figures in the drawings, if any;
(v) set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any; where the national law of the designated State does not require the description of the best mode but is satisfied with the description of any mode (whether it is the best contemplated or not), failure to describe the best mode contemplated shall have no effect in that State;
(vi) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the
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way in which it can be used; the term “industry” is to be understood in its broadest sense as in the Paris Convention for the Protection of Industrial Property.
(b) The manner and order specified in paragraph (a) shall be followed except when, because of the nature of the invention, a different manner or a different order would result in a better understanding and a more economic presentation.
(c) Subject to the provisions of paragraph (b), each of the parts referred to in paragraph (a) shall preferably be preceded by an appropriate heading as suggested in the Administrative Instructions.
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PCT Administrative Instructions Section 204.
Headings of the Parts of the Description
The headings of the parts of the description should be as follows:
(i) for matter referred to in Rule 5.1(a)(i), “Technical Field”;
(ii) for matter referred to in Rule 5.1(a)(ii), “Background Art”;
(iii) for matter referred to in Rule 5.1(a)(iii), “Disclosure of Invention” or “Summary of Invention”;
(iv) for matter referred to in Rule 5.1(a)(iv), “Brief Description of Drawings”;
(v) for matter referred to in Rule 5.1(a)(v), “Best Mode for Carrying Out the Invention,” or, where appropriate, “Mode(s) for Carrying Out the Invention” or “Description of Embodiments;
(vi) for matter referred to in Rule 5.1(a)(vi), “Industrial Applicability”;
(vii) for matter referred to in Rule 5.2(a), “Sequence Listing”;
(viii) for matter referred to in Rule 5.2(b), “Sequence Listing Free Text.”
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PCT Administrative Instructions Section 209.
Indications as to Deposited Biological Material on a Separate Sheet
(a) To the extent that any indication with respect to deposited biological material is not contained in the description, it may be given on a separate sheet. Where any such indication is so given, it shall preferably be on Form PCT/RO/134 and, if furnished at the time of filing, the said Form shall, subject to paragraph (b), preferably be attached to the request and referred to in the check list referred to in Rule 3.3(a)(ii).
(b) For the purposes of designated Offices, which have so notified the International Bureau under Rule 13 bis.7(a), paragraph (a) applies only if the said Form or sheet is included as one of the sheets of the description of the international application at the time of filing.
37 CFR 1.435 The description.
(a) The application must meet the requirements as to the content and form of the description set forth in PCT Rules 5, 9, 10, and 11 and sections 204 and 208 of the Administrative Instructions.
(b) In international applications designating the United States the description must contain upon filing an indication of the best mode contemplated by the inventor for carrying out the claimed invention.
The description must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. It must start with the title of the invention as appearing in Box No. I of the request. PCT Rule 5 contains detailed requirements as to the manner and order of the description, which, generally, should be in six parts. Those parts should have the following headings: “Technical Field,” “Background Art,” “Disclosure of Invention,” “Brief Description of Drawings,” “Best Mode for Carrying Out the Invention” or, where appropriate, “Mode(s) for Carrying Out the Invention,” “Industrial Applicability,” “Sequence Listing,” and “Sequence Listing Free Text,” where applicable.
The details required for the disclosure of the invention so that it can be carried out by a person skilled in the art depend on the practice of the national Offices. It is therefore recommended that due account be taken of national practice in the United States of America when the description is drafted.
The need to amend the description during the national phase may thus be avoided.
This applies likewise to the need to indicate the “best mode for carrying out the invention.” If at least one of the designated Offices requires the indication of the best mode (for instance, the United States Patent and Trademark Office), that best mode must be indicated in the description.
A description drafted with due regard to what is said in these provisions will be accepted by all the designated Offices. It might require more care than the drafting of a national patent application, but certainly much less effort than the drafting of
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multiple applications, which is necessary where the PCT route is not used for filing in several countries.
1823.01 Reference to Deposited Biological Material [R-07.2015]
PCT Rule 13 bis
Inventions Relating to Biological Material
13 bis.1 Definition
For the purposes of this Rule, “reference to deposited biological material” means particulars given in an international application with respect to the deposit of a biological material with a depositary institution or to the biological material so deposited.
13 bis.2 References (General)
Any reference to deposited biological material shall be made in accordance with this Rule and, if so made, shall be considered as satisfying the requirements of the national law of each designated State.
13 bis.3 References: Contents; Failure to Include Reference or Indication
(a) A reference to deposited biological material shall indicate:
(i) the name and the address of the depositary institution with which the deposit was made;
(ii) the date of deposit of the biological material with that institution;
(iii) the accession number given to the deposit by that institution; and
(iv) any additional matter of which the International Bureau has been notified pursuant to Rule 13 bis .7(a)(i), provided that the requirement to indicate that matter was published in the Gazette in accordance with Rule 13 bis.7(c) at least two months before the filing of the international application.
(b) Failure to include a reference to deposited biological material or failure to include, in a reference to deposited biological material, an indication in accordance with paragraph (a), shall have no consequence in any designated State whose national law does not require such reference or such indication in a national application.
13 bis.4 References: Time Limit for Furnishing Indications
(a) Subject to paragraphs (b) and (c), if any of the indications referred to in Rule 13 bis.3(a) is not included in a reference to deposited biological material in the international application as filed but is furnished to the International Bureau:
(i) within 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished in time;
(ii) after the expiration of 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished on the last day of that time limit if it reaches the International Bureau before the technical preparations for international publication have been completed.
(b) If the national law applicable by a designated Office so requires in respect of national applications, that Office may require that any of the indications referred to in Rule 13 bis.3(a) be furnished earlier than 16 months from the priority date, provided that the International Bureau has been notified of such requirement pursuant to Rule 13 bis.7(a)(ii) and has published such requirement in the Gazette in accordance with Rule 13 bis.7(c) at least two months before the filing of the international application.
(c) Where the applicant makes a request for early publication under Article 21(2)(b), any designated Office may consider any indication not furnished before the technical preparations for international publication have been completed as not having been furnished in time.
(d) The International Bureau shall notify the applicant of the date on which it received any indication furnished under paragraph (a), and:
(i) if the indication was received before the technical preparations for international publication have been completed, publish the indication furnished under paragraph (a), and an indication of the date of receipt, together with the international application;
(ii) if the indication was received after the technical preparations for international publication have been completed, notify that date and the relevant data from the indication to the designated Offices.
13 bis.5 References and Indications for the Purposes of One or More Designated States; Different Deposits for Different Designated States; Deposits with Depositary Institutions Other Than Those Notified
(a) A reference to deposited biological material shall be considered to be made for the purposes of all designated States, unless it is expressly made for the purposes of certain of the designated States only; the same applies to the indications included in the reference.
(b) References to different deposits of the biological material may be made for different designated States.
(c) Any designated Office may disregard a deposit made with a depositary institution other than one notified by it under Rule 13 bis.7(b).
13 bis.6 Furnishing of Samples
Pursuant to Articles 23 and 40, no furnishing of samples of the deposited biological material to which a reference is made in an international application shall, except with the authorization of the applicant, take place before the expiration of the applicable time limits after which national processing may start under the
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§ 1823.01PATENT COOPERATION TREATY
said Articles. However, where the applicant performs the acts referred to in Articles 22 or 39 after international publication but before the expiration of the said time limits, the furnishing of samples of the deposited biological material may take place, once the said acts have been performed. Notwithstanding the previous provision, the furnishing of samples of the deposited biological material may take place under the national law applicable by any designated Office as soon as, under that law, the international publication has the effects of the compulsory national publication of an unexamined national application.
13 bis.7 National Requirements: Notification and Publication
(a) Any national Office may notify the International Bureau of any requirement of the national law:
(i) that any matter specified in the notification, in addition to those referred to in Rule 13 bis.3(a)(i), (ii) and (iii), is required to be included in a reference to deposited biological material in a national application;
(ii) that one or more of the indications referred to in Rule 13 bis.3(a) are required to be included in a national application as filed or are required to be furnished at a time specified in the notification which is earlier than 16 months after the priority date.
(b) Each national Office shall notify the International Bureau of the depositary institutions with which the national law permits deposits of biological materials to be made for the purposes of patent procedure before that Office or, if the national law does not provide for or permit such deposits, of that fact.
(c) The International Bureau shall promptly publish in the Gazette requirements notified to it under paragraph (a) and information notified to it under paragraph (b).
PCT Administrative Instructions Section 209
Indications as to Deposited Biological Material on a Separate Sheet
(a) To the extent that any indication with respect to deposited biological material is not contained in the description, it may be given on a separate sheet. Where any such indication is so given, it shall preferably be on Form PCT/RO/134 and, if furnished at the time of filing, the said Form shall, subject to paragraph (b), preferably be attached to the request and referred to in the check list referred to in Rule 3.3(a)(ii).
(b) For the purposes of designated Offices, which have so notified the International Bureau under Rule 13 bis.7(a), paragraph (a) applies only if the said Form or sheet is included as one of the sheets of the description of the international application at the time of filing.
REFERENCES TO DEPOSITED BIOLOGICAL MATERIAL IN THE CASE OF MICROBIOLOGICAL INVENTIONS
The PCT does not require the inclusion of a reference to a biological material and/or to its deposit with a depositary institution in an international application;
it merely prescribes the contents of any “reference to deposited biological material” (defined as “particulars given... with respect to the deposit of biological material... or to the biological material so deposited”) which is included in an international application, and when such a reference must be furnished. It follows that the applicant may see a need to make such a reference only when it is required for the purpose of disclosing the invention claimed in the international application in a manner sufficient for the invention to be carried out by a person skilled in the art that is, when the law of at least one of the designated States provides for the making, for this purpose, of a reference to a deposited biological material if the invention involves the use of a biological material that is not available to the public. Any reference to a deposited biological material furnished separately from the description will be included in the publication of the international application.
A reference to a deposited biological material made in accordance with the requirements of the PCT must be regarded by each of the designated Offices as satisfying the requirements of the national law applicable in that Office with regard to the contents of such references and the time for furnishing them.
A reference may be made for the purposes of all designated States or for one or only some of the designated States. A reference is considered to be made for the purpose of all designated States unless it is expressly made for certain designated States only. References to different deposits may be made for the purposes of different designated States.
There are two kinds of indication which may have to be given with regard to the deposit of the biological material, namely:
(A) indications specified in the PCT Regulations themselves; and
(B) additional indications by the national (or regional) Office of (or acting for) a State designated in the international application and which have been published in the PCT Gazette; these additional indications may relate not only to the deposit of the biological material but also to the biological material itself.
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The indications in the first category are:
(1) the name and the address of the depositary institution with which the deposit was made;
(2) the date of the deposit with that institution; and
(3) the accession number given to the deposit by that institution.
U.S. requirements include the name and address of the depository institution at the time of filing, the date of the deposit or a statement that the deposit was made on or before the priority date of the international application and, to the extent possible, a taxonomic description of the biological material. See Annex L of the PCT Applicant’s Guide.
The national laws of some of the national (or regional) Offices require that, besides indications concerning the deposit of a biological material, an indication be given concerning the biological material itself, such as, for example, a short description of its characteristics, at least to the extent that this information is available to the applicant. These requirements must be met in the case of international applications for which any such Office is a designated Office, provided that the requirements have been published in the PCT Gazette. Annex L of the PCT Applicant’s Guide indicates, for each of the national (or regional) Offices, the requirements (if any) of this kind which have been published.
If any indication is not included in a reference to a deposited biological material contained in the international application as filed, it may be furnished to the International Bureau within 16 months after the priority date unless the International Bureau has been notified (and, at least 2 months prior to the filing of the international application, it has published in the PCT Gazette) that the national law requires the indication to be furnished earlier. However, if the applicant makes a request for early publication, all indications should be furnished by the time the request is made, since any designated Office may regard any indication not furnished when the request is made as not having been furnished in time.
No check is made in the international phase to determine whether a reference has been furnished within the prescribed time limit. However, the International Bureau notifies the designated Offices of the date(s) on which indications, not included in the international application as filed, were furnished to it. Those dates are also mentioned in the publication of the international application. Failure to include a reference to a deposited biological material (or any indication required in such a reference) in the international application as filed, or failure to furnish it (or the indication) within the prescribed time limit, has no consequence if the national law does not require the reference (or indication) to be furnished in a national application. Where there is a consequence, it is the same as that which applies under the national law.
To the extent that indications relating to the deposit of a biological material are not given in the description, because they are furnished later, they may be given in the “optional sheet” provided for that purpose. If the sheet is submitted when the international application is filed, a reference to it should be made in the check list contained on the last sheet of the Request form. Should certain States be designated, e.g., Israel, Japan, Korea, Mexico, or Turkey , such a sheet must, if used, be included as one of the sheets of the description at the time of filing; otherwise the indications given in it will not be taken into account by the respective patent offices of those designated States in the national phase. Requirements of the various Offices are set forth in Annex L of the PCT Applicant’s Guide, available online at www.wipo.int/pct/en/appguide. If the sheet is furnished to the International Bureau later, it must be enclosed with a letter.
Each national (or regional) Office whose national law provides for deposits of biological material for the purposes of patent procedure notifies the International Bureau of the depositary institutions with which the national law permits such deposits to be made. Information on the institutions notified by each of those Offices is published by the International Bureau in the PCT Gazette.
A reference to a deposit cannot be disregarded by a designated Office for reasons pertaining to the institution with which the biological material was
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§ 1823.01PATENT COOPERATION TREATY
deposited if the deposit referred to is one made with a depositary institution notified by that Office. Thus, by consulting the PCT Gazette or Annex L of the PCT Applicant’s Guide, the applicant can be sure that he has deposited the biological material with an institution which will be accepted by the designated Office.
International Searching Authorities and International Preliminary Examining Authorities are not expected to request access to deposited biological material. However, in order to retain the possibility of access to a deposited biological material referred to in an international application which is being searched or examined by such an Authority, the PCT provides that the Authorities may, if they fulfill certain conditions, ask for samples. Thus, an Authority may only ask for samples if it has notified the International Bureau (in a general notification) that it may require samples and the International Bureau has published the notification in the PCT Gazette. The only Authority which has made such a notification (and thus the only Authority which may request samples) is the Japan Patent Office. If a sample is asked for, the request is directed to the applicant, who then becomes responsible for making the necessary arrangements for the sample to be provided.
The furnishing of samples of a deposit of a biological material to third persons is governed by the national laws applicable in the designated Offices. PCT Rule 13 bis.6(b), however, provides for the delaying of any furnishing of samples under the national law applicable in each of the designated (or elected) Offices until the start of the national phase, subject to the ending of this “delaying effect” brought about by the occurrence of either of the following two events:
(A) the applicant has, after international publication of the international application, taken the steps necessary to enter the national phase before the designated Office.
(B) international publication of the international application has been effected, and that publication has the same effects, under the national law applicable in the designated Office, as the compulsory national publication of an unexamined national application (in other words, the international
application has qualified for the grant of “provisional protection”).
1823.02 Nucleotide and/or Amino Acid Sequence Listings, and Tables Related to Sequence Listings [R-07.2015]
PCT Rule 5
The Description
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5.2 Nucleotide and/or Amino Acid Sequence Disclosure
(a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the description shall contain a sequence listing complying with the standard prescribed by the Administrative Instructions and presented as a separate part of the description in accordance with that standard.
(b) Where the sequence listing part of the description contains any free text as defined in the standard provided for in the Administrative Instructions, that free text shall also appear in the main part of the description in the language thereof.
PCT Rule 13 ter
Nucleotide and/or Amino Acid Sequence Listings
13 ter.1 Procedure Before the International Searching Authority
(a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the International Searching Authority may invite the applicant to furnish to it, for the purposes of the international search, a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, unless such listing in electronic form is already available to it in a form and manner acceptable to it, and to pay to it, where applicable, the late furnishing fee referred to paragraph (c), within a time limit fixed in the invitation:
(b) Where at least part of the international application is filed on paper and the International Searching Authority finds that the description does not comply with Rule 5.2(a), it may invite the applicant to furnish, for the purposes of the international search, a sequence listing in paper form complying with the standard provided for in the Administrative Instructions, unless such listing in paper form is already available to it in a form and manner acceptable to it, whether or not the furnishing of a sequence listing in electronic form is invited under paragraph (a), and to pay, where applicable, the late furnishing fee referred to in paragraph (c), within a time limit fixed in the invitation.
(c) The furnishing of a sequence listing in response to an invitation under paragraph (a) or (b) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a late furnishing fee whose amount shall be determined by the International Searching Authority but shall not exceed 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets,
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provided that a late furnishing fee may be required under either paragraph (a) or (b) but not both.
(d) If the applicant does not, within the time limit fixed in the invitation under paragraph (a) or (b), furnish the required sequence listing and pay any required late furnishing fee, the International Searching Authority shall only be required to search the international application to the extent that a meaningful search can be carried out without the sequence listing.
(e) Any sequence listing not contained in the international application as filed, whether furnished in response to an invitation under paragraph (a) or (b) or otherwise, shall not form part of the international application, but this paragraph shall not prevent the applicant from amending the description in relation to a sequence listing pursuant to Article 34(2)(b).
(f) Where the International Searching Authority finds that the description does not comply with Rule 5.2(b), it shall invite the applicant to submit the required correction. Rule 26.4 shall apply mutatis mutandis to any correction offered by the applicant. The International Searching Authority shall transmit the correction to the receiving Office and to the International Bureau.
13 ter.2 Procedure Before the International Preliminary Examining Authority
Rule 13 ter.1 shall apply mutatis mutandis to the procedure before the International Preliminary Examining Authority.
13 ter.3 Sequence Listing for Designated Office
No designated Office shall require the applicant to furnish to it a sequence listing other than a sequence listing complying with the standard provided for in the Administrative Instructions.
PCT Administrative Instructions Section 208
Sequence Listings
Any sequence listing whether on paper or in electronic form, whether forming part of the international application or not forming part of the international application, shall comply with Annex C.
I. REQUIREMENTS FOR SEQUENCE LISTINGS
Where an international application discloses one or more nucleotide and/or amino acid sequences, the description must contain a sequence listing complying with the standard specified in the Administrative Instructions. The standard is set forth in detail in Annex C - Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in International Patent Applications Under the PCT. The standard allows the applicant to draw up a single sequence listing which is acceptable to all receiving Offices, International Searching and Preliminary
Examining Authorities for the purposes of the international phase, and to all designated and elected Offices for the purposes of the national phase. The International Searching Authority and the International Preliminary Examining Authority may, in some cases, invite the applicant to furnish a listing complying with that standard. The applicant may also be invited to furnish a listing in an electronic form (text) provided for in the PCT Administrative Instructions. It is advisable for the applicant to submit a listing of the sequence in electronic form (text), if such a listing is required by the competent International Searching Authority or International Preliminary Examining Authority, together with the international application rather than to wait for an invitation by the International Searching Authority or International Preliminary Examining Authority.
The electronic form (text) is not mandatory in international applications to be searched by the United States International Searching Authority or examined by the United States International Preliminary Examining Authority. However, if an electronic form (text) of a sequence listing is not provided, a search or examination will be performed only to the extent possible in the absence of the electronic form (text). The U.S. sequence rules (37 CFR 1.821 - 1.825) and the PCT sequence requirements are substantively consistent. In this regard, full compliance with the requirements of the U.S. rules will generally ensure compliance with the applicable PCT requirements. However, the requirements of 37 CFR 1.821 through 37 CFR 1.825 are less stringent than the requirements of WIPO Standard ST.25. See MPEP § 2422, subsection II, MPEP § 2422.03(a), subsection IV, and MPEP § 2422.07 for information specific to filing sequence listings in international applications.
For a detailed discussion of the U.S. sequence rules, see MPEP §§ 2420 - 2429.
The calculation of the international filing fee for an international application (PCT), including a sequence listing, filed via EFS-Web is determined based on the type of sequence listing file. A sequence listing filed in an ASCII text file will not be included in the sheet count of the international application (PCT). A sequence listing filed in a PDF file will be included in the sheet count of the international
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application (PCT). Therefore, the sheet count for an EFS-Web filed international application (PCT) containing both a PDF file and a text file sequence listing will be calculated to include the number of sheets of the PDF sequence listing.
II. TABLES RELATED TO SEQUENCE LISTINGS
Tables related to a sequence listing must be an integral part of the description of the international application (PCT), and must not be included in the sequence listing part or the drawing part. Such tables will be taken into account when calculating the application sheet count, and excess sheet fees may be required. When applicant submits tables related to a sequence listing in an international application (PCT) via EFS-Web, the tables must be in a PDF file. If applicant submits tables related to a sequence listing in a text file, such tables will not be accepted as part of the international application (PCT). For more information, see Sequence Listings and Tables Related Thereto in International Applications Filed in the United States Receiving Office, 1344 OG 50 (July 7, 2009). If applicant submits tables related to a sequence listing in a text file, such tables will not be accepted as part of the international application (PCT).
1824 The Claims [R-07.2015]
PCT Article 6
The Claims
The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.
PCT Rule 6
The Claims
6.1 Number and Numbering of Claims
(a) The number of the claims shall be reasonable in consideration of the nature of the invention claimed.
(b) If there are several claims, they shall be numbered consecutively in Arabic numerals.
(c) The method of numbering in the case of the amendment of claims shall be governed by the Administrative Instructions.
6.2 References to Other Parts of the International Application
(a) Claims shall not, except where absolutely necessary, rely, in respect of the technical features of the invention, on
references to the description or drawings. In particular, they shall not rely on such references as: “as described in part ... of the description,” or “as illustrated in figure ... of the drawings.”
(b) Where the international application contains drawings, the technical features mentioned in the claims shall preferably be followed by the reference signs relating to such features. When used, the reference signs shall preferably be placed between parentheses. If inclusion of reference signs does not particularly facilitate quicker understanding of a claim, it should not be made. Reference signs may be removed by a designated Office for the purposes of publication by such Office.
6.3 Manner of Claiming
(a) The definition of the matter for which protection is sought shall be in terms of the technical features of the invention.
(b) Whenever appropriate, claims shall contain:
(i) a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art,
(ii) a characterizing portion - preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect - stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect.
(c) Where the national law of the designated State does not require the manner of claiming provided for in paragraph (b), failure to use that manner of claiming shall have no effect in that State provided the manner of claiming actually used satisfies the national law of that State.
6.4 Dependent Claims
(a) Any claim which includes all the features of one or more other claims (claim in dependent form, hereinafter referred to as “dependent claim”) shall do so by a reference, if possible at the beginning, to the other claim or claims and shall then state the additional features claimed. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such claims in the alternative only. Multiple dependent claims shall not serve as a basis for any other multiple dependent claim. Where the national law of the national Office acting as International Searching Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the preceding two sentences, failure to use that manner of claiming may result in an indication under Article 17(2)(b) in the international search report. Failure to use the said manner of claiming shall have no effect in a designated State if the manner of claiming actually used satisfies the national law of that State.
(b) Any dependent claim shall be construed as including all the limitations contained in the claim to which it refers or, if the dependent claim is a multiple dependent claim, all the limitations contained in the particular claim in relation to which it is considered.
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(c) All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.
6.5 Utility Models
Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 6.1 to 6.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least two months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.
PCT Administrative Instructions Section 205.
Numbering and Identification of Claims Upon Amendment
(a) Amendments to the claims under Article 19 or Article 34(2)(b) may be made either by cancelling one or more entire claims, by adding one or more new claims or by amending the text of one or more of the claims as filed. Where a claim is cancelled, no renumbering of the other claims shall be required. In all cases where claims are renumbered, they shall be renumbered consecutively in Arabic numerals.
(b) The applicant shall, in the letter referred to in Rule 46.5(b) or Rule 66.8(c), indicate the differences between the claims as filed and the claims as amended or, as the case may be, differences between the claims as previously amended and currently amended. He shall, in particular, indicate in the said letter, in connection with each claim appearing in the international application (it being understood that identical indications concerning several claims may be grouped), whether:
(i) the claim is unchanged;
(ii) the claim is cancelled;
(iii) the claim is new;
(iv) the claim replaces one or more claims as filed;
(v) the claim is the result of the division of a claim as filed;
(vi) the claim replaces one or more claims as previously amended;
(vii) the claim is the result of the division of a claim as previously amended.
37 CFR 1.436 The claims.
The requirements as to the content and format of claims are set forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered to. The number of the claims shall be reasonable, considering the nature of the invention claimed.
The claim or claims must “define the matter for which protection is sought.” Claims must be clear and concise. They must be fully supported by the description. PCT Rule 6 contains detailed requirements as to the number and numbering of claims, the extent to which any claim may refer to other parts of the international application, the manner of claiming, and dependent claims. As to the manner of claiming, the claims must, whenever appropriate, be in two distinct parts; namely, the statement of the prior art and the statement of the features for which protection is sought (“the characterizing portion”).
The physical requirements for the claims are the same as those for the description. Note that the claims must commence on a new sheet.
The procedure for rectification of obvious mistakes is explained in MPEP § 1836. The omission of an entire sheet of the claims cannot be rectified without affecting the international filing date, except in applications filed on or after April 1, 2007, where, if the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the original international filing date may be retained if the submitted correction was completely contained in the earlier application. See PCT Rules 4.18 and 20.6. It is recommended that a request for rectification of obvious mistakes in the claims be made only if the mistake is liable to affect the international search; otherwise, the rectification should be made by amending the claims.
The claims can be amended during the international phase under PCT Article 19 on receipt of the international search report, during international preliminary examination if the applicant has filed a Demand, and during the national phase.
Multiple dependent claims are permitted in international applications before the United States Patent and Trademark Office as an International Searching and International Preliminary Examining Authority or as a Designated or Elected Office, if they are in the alternative only and do not serve as a basis for any other multiple dependent claim (PCT Rule 6.4(a), 35 U.S.C. 112). The claims, being an element of the application, should start on a new page (PCT Rule 11.4). Page numbers must not be
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placed in the margins (PCT Rule 11.7(b)). Line numbers should appear in the right half of the left margin (PCT Rule 11.8(b)). See PCT Rule 11.6(e).
The number of claims shall be reasonable, considering the nature of the invention claimed (37 CFR 1.436).
1825 The Drawings [R-07.2015]
PCT Article 7
The Drawings
(1) Subject to the provisions of paragraph (2)(ii), drawings shall be required when they are necessary for the understanding of the invention.
(2) Where, without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings:
(i) the applicant may include such drawings in the international application when filed.
(ii) any designated Office may require that the applicant file such drawings with it within the prescribed time limit.
PCT Rule 7.
The Drawings
7.1. Flow Sheets and Diagrams
Flow sheets and diagrams are considered drawings.
7.2 Time Limit
The time limit referred to in Article 7(2)(ii) shall be reasonable under the circumstances of the case and shall, in no case, be shorter than two months from the date of the written invitation requiring the filing of drawings or additional drawings under the said provision.
PCT Rule 11
Physical Requirements of the International Application
*****
11.5 Size of Sheets
The size of the sheets shall be A4 (29.7 cm x 21 cm). However, any receiving Office may accept international applications on sheets of other sizes provided that the record copy, as transmitted to the International Bureau, and, if the competent International Searching Authority so desires, the search copy, shall be of A4 size.
11.6 Margins
*****
(c) On sheets containing drawings, the surface usable shall not exceed 26.2 cm x 17.0 cm. The sheets shall not contain
frames around the usable or used surface. The minimum margins shall be as follows:
- top: 2.5 cm
- left side: 2.5 cm
- right side: 1.5 cm
- bottom: 1.0 cm
*****
11.11 Words in Drawings
(a) The drawings shall not contain text matter, except a single word or words, when absolutely indispensable, such as “water,” “steam,” “open,” “closed,” “section on AB,” and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catchwords indispensable for understanding.
(b) Any words used shall be so placed that, if translated, they may be pasted over without interfering with any lines of the drawings.
*****
11.13 Special Requirements for Drawings
(a) Drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without colorings.
(b) Cross-sections shall be indicated by oblique hatching which should not impede the clear reading of the reference signs and leading lines.
(c) The scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty.
(d) When, in exceptional cases, the scale is given on a drawing, it shall be represented graphically.
(e) All numbers, letters and reference lines, appearing on the drawings, shall be simple and clear. Brackets, circles or inverted commas shall not be used in association with numbers and letters.
(f) All lines in the drawings shall, ordinarily, be drawn with the aid of drafting instruments.
(g) Each element of each figure shall be in proper proportion to each of the other elements in the figure, except where the use of a different proportion is indispensable for the clarity of the figure.
(h) The height of the numbers and letters shall not be less than 0.32 cm. For the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used.
(i) The same sheet of drawings may contain several figures. Where figures on two or more sheets form in effect a single complete figure, the figures on the several sheets shall be so arranged that the complete figure can be assembled without concealing any part of any of the figures appearing on the various sheets.
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(j) The different figures shall be arranged on a sheet or sheets without wasting space, preferably in an upright position, clearly separated from one another. Where the figures are not arranged in an upright position, they shall be presented sideways with the top of the figures at the left side of the sheet.
(k) The different figures shall be numbered in Arabic numerals consecutively and independently of the numbering of the sheets.
(l) Reference signs not mentioned in the description shall not appear in the drawings, and vice versa.
(m) The same features, when denoted by reference signs, shall, throughout the international application, be denoted by the same signs.
(n) If the drawings contain a large number of reference signs, it is strongly recommended to attach a separate sheet listing all reference signs and the features denoted by them.
*****
37 CFR 1.437 The drawings.
(a) Drawings are required when they are necessary for the understanding of the invention (PCT Art. 7).
(b) The physical requirements for drawings are set forth in PCT Rule 11 and shall be adhered to.
The international application must contain drawings when they are necessary for the understanding of the invention. Moreover where, without drawings being actually necessary for the understanding of the invention, its nature admits of illustration by drawings, the applicant may include such drawings and any designated Office may require the applicant to file such drawings during the national phase. Flow sheets and diagrams are considered drawings.
Drawings must be presented on one or more separate sheets. They may not be included in the description, the claims or the abstract. They may not contain text matter, except a single word or words when absolutely indispensable. Note that if the drawings contain text matter not in English but in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office, the international application will be transmitted to the International Bureau for processing in its capacity as a Receiving Office. See 37 CFR 1.412(c)(6)(ii). If the drawings contain text matter not in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office, the application will be denied an international filing date.
All lines in the drawings must, ordinarily, be drawn with the aid of a drafting instrument and must be
executed in black, uniformly thick and well-defined lines. Color drawings are not acceptable. PCT Rules 11.10 to 11.13 contain detailed requirements as to further physical requirements of drawings. Drawings newly executed according to national standards may not be required during the national phase if the drawings filed with the international application comply with PCT Rule 11. The examiner may require new drawings where the drawings which were accepted during the international phase did not comply with PCT Rule 11. A file reference may be indicated in the upper left corner on each sheet of the drawings.
All of the figures constituting the drawings must be grouped together on a sheet or sheets without waste of space, preferably in an upright position and clearly separated from each other. Where the drawings cannot be presented satisfactorily in an upright position, they may be placed sideways, with the tops of the drawings on the left-hand side of the sheet.
The usable surface of sheets (which must be of A4 size) must not exceed 26.2 cm x 17.0 cm. The sheets must not contain frames around the usable surface. The minimum margins which must be observed are: top and left side: 2.5 cm; right side: 1.5 cm; bottom: 1.0 cm.
All sheets of drawings must be numbered in the center of either the top or the bottom of each sheet but not in the margin in numbers larger than those used as reference signs in order to avoid confusion with the latter. For drawings, a separate series of page numbers is to be used. The number of each sheet of the drawings must consist of two Arabic numerals separated by an oblique stroke, the first being the sheet number and the second being the total number of sheets of drawings. For example, “2/5” would be used for the second sheet of drawings where there are five in all.
Different figures on the sheets of drawings must be numbered in Arabic numerals consecutively and independently of the numbering of the sheets and, if possible, in the order in which they appear. This numbering should be preceded by the expression “Fig.”
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The PCT makes no provision for photographs. Nevertheless, they are allowed by the International Bureau where it is impossible to present in a drawing what is to be shown (for instance, crystalline structures). Where, exceptionally, photographs are submitted, they must be on sheets of A4 size, they must be black and white, and they must respect the minimum margins and admit of direct reproduction. Color photographs are not accepted.
The procedure for rectification of obvious mistakes in the drawings is explained in MPEP § 1836. The omission of an entire sheet of drawings cannot be rectified without affecting the international filing date, except in applications filed on or after April 1, 2007, where, if the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the original international filing date may be retained if the submitted correction was completely contained in the earlier application. See PCT Rules 4.18 and 20.6. Rectifications of obvious mistakes are not considered to be amendments.
The drawings can be amended during the international phase only if the applicant files a Demand for international preliminary examination. The drawings can also be amended during the national phase. The amendment shall not go beyond the disclosure in the international application as filed. See PCT Article 34(2)(b).
If drawings are referred to in an international application and are not found in the search copy file, the examiner should refer the application to a Quality Assurance Specialist in his or her Technology Center or a PCT Special Program Examiner. See Administrative Instructions Section 310.
1826 The Abstract [R-07.2015]
PCT Rule 8.
The Abstract
8.1 Contents and Form of the Abstract
(a) The abstract shall consist of the following:
(i) a summary of the disclosure as contained in the description, the claims, and any drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem
through the invention, and the principal use or uses of the invention;
(ii) where applicable, the chemical formula which, among all the formulae contained in the international application, best characterizes the invention.
(b) The abstract shall be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English).
(c) The abstract shall not contain statements on the alleged merits or value of the claimed invention or on its speculative application.
(d) Each main technical feature mentioned in the abstract and illustrated by a drawing in the international application shall be followed by a reference sign, placed between parentheses.
8.2 Figure
(a) If the applicant fails to make the indication referred to in Rule 3.3(a)(iii), or if the International Searching Authority finds that a figure or figures other than that figure or those figures suggested by the applicant would, among all the figures of all the drawings, better characterize the invention, it shall, subject to paragraph (b), indicate the figure or figures which should accompany the abstract when the latter is published by the International Bureau. In such case, the abstract shall be accompanied by the figure or figures so indicated by the International Searching Authority. Otherwise, the abstract shall, subject to paragraph (b), be accompanied by the figure or figures suggested by the applicant.
(b) If the International Searching Authority finds that none of the figures of the drawings is useful for the understanding of the abstract, it shall notify the International Bureau accordingly. In such case, the abstract, when published by the International Bureau, shall not be accompanied by any figure of the drawings even where the applicant has made a suggestion under Rule 3.3(a)(iii).
8.3 Guiding Principles in Drafting
The abstract shall be so drafted that it can efficiently serve as a scanning tool for purposes of searching in the particular art, especially by assisting the scientist, engineer or researcher in formulating an opinion on whether there is a need for consulting the international application itself.
37 CFR 1.438 The abstract
(a) Requirements as to the content and form of the abstract are set forth in PCT Rule 8, and shall be adhered to.
(b) Lack of an abstract upon filing of an international application will not affect the granting of a filing date. However, failure to furnish an abstract within one month from the date of the notification by the Receiving Office will result in the international application being declared withdrawn.
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The abstract must consist of a summary of the disclosure as contained in the description, the claims and any drawings. Where applicable, it must also contain the most characteristic chemical formula. The abstract must be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English). National practice (see MPEP § 608.01(b)) also provides a maximum of 150 words for the abstract. See 37 CFR 1.72(b). The PCT range of 50 - 150 words is not absolute but publication problems could result when the PCT limit is increased beyond the 150 word limit. Maintaining the PCT upper limit is encouraged. As a rule of thumb, it can be said that the volume of the text of the abstract, including one of the figures from the drawings (if any), should not exceed what can be accommodated on an A4 sheet of typewritten matter, 1 1/2 spaced. The abstract of the international application as filed must begin on a new sheet following the claims (Administrative Instructions Section 207). The other physical requirements must correspond to those for the description. The abstract must be so drafted that it can efficiently serve as a scanning tool for the purposes of searching in the particular art. These and other requirements concerning the abstract are spelled out in detail in PCT Rule 8. Useful guidance can be obtained from the “Guidelines for the Preparation of Abstracts Under the Patent Cooperation Treaty,” published in the PCT Gazette (No. 5/1978). Those Guidelines may be obtained, in English and French, from the International Bureau.
The abstract should be primarily related to what is new in the art to which the invention pertains. Phrases should not be used which are implicit, (for instance, “the invention relates to...”), and statements on the alleged merits or value of the invention are not allowed.
Where the receiving Office finds that the abstract is missing, it invites the applicant to furnish it within a time limit fixed in the invitation. Where the receiving Office has not invited the applicant to furnish an abstract or the applicant fails to furnish an abstract within a time limit fixed in the invitation, the International Searching Authority establishes one. See PCT Rule 38. The same applies where the abstract does not comply with the requirements outlined in the preceding paragraphs. Where the
abstract is established by the International Searching Authority, the applicant may propose modifications of, or comment on, the new abstract until the expiration of 1 month from the date of mailing of the international search report (PCT Rule 38.3).
SUMMARY OF ABSTRACT REQUIREMENTS
Preferably 50-150 words. Should contain:
(A) Indication of field of invention.
(B) Clear indication of the technical problem.
(C) Gist of invention’s solution of the problem.
(D) Principal use or uses of the invention.
(E) Reference numbers of the main technical features placed between parentheses.
(F) Where applicable, chemical formula which best characterizes the invention.
Should not contain:
(A) Superfluous language.
(B) Legal phraseology such as “said” and “means.”
(C) Statements of alleged merit or speculative application.
(D) Prohibited items as defined in PCT Rule 9.
1827 Fees [R-07.2015]
A complete list of Patent Cooperation Treaty fee amounts which are to be paid to the United States Patent and Trademark Office (USPTO), for both the national and international stages, can be found at the beginning of each weekly issue of the Official Gazette of the United States Patent and Trademark Office and on the International Patent Legal Administration page of the USPTO website (see MPEP § 1730). Applicants are urged to refer to this list before submitting any fees to the USPTO.
Pursuant to PCT Rules 14.1(c), PCT Rule 15.3, and 16.1(f), the international filing, transmittal, and search fee payable is the international filing, transmittal, and search fee in effect on the receipt date of the international application. See 37 CFR 1.431(c). For international applications filed on or after November 15, 2011, the transmittal fee paid to
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the USPTO as Receiving Office consists of both a basic portion and a non-electronic filing portion. See 37 CFR 1.445(a)(1). The non-electronic filing portion is applicable where applicant files the international application in paper rather than by the USPTO’s electronic filing system (EFS-Web).
1827.01 Refund of International Application Fees [R-07.2015]
37 CFR 1.446 Refund of international application filing and processing fees.
(a) Money paid for international application fees, where paid by actual mistake or in excess, such as a payment not required by law or treaty and its regulations, may be refunded. A mere change of purpose after the payment of a fee will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested and will not notify the payor of such amounts. If the payor or party requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer, the Office may use the banking information provided on the payment instrument to make any refund by electronic funds transfer.
(b) Any request for refund under paragraph (a) of this section must be filed within two years from the date the fee was paid. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization under § 1.25(b), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
(c) Refund of the supplemental search fees will be made if such refund is determined to be warranted by the Director or the Director’s designee acting under PCT Rule 40.2(c).
(d) The international and search fees will be refunded if no international filing date is accorded or if the application is withdrawn before transmittal of the record copy to the International Bureau (PCT Rules 15.6 and 16.2). The search fee will be refunded if the application is withdrawn before transmittal of the search copy to the International Searching Authority. The transmittal fee will not be refunded.
(e) The handling fee (§ 1.482(b)) will be refunded (PCT Rule 57.6) only if:
(1) The Demand is withdrawn before the Demand has been sent by the International Preliminary Examining Authority to the International Bureau, or
(2) The Demand is considered not to have been submitted (PCT Rule 54.4(a)).
Although 37 CFR 1.446(a) indicates that a “mere change of purpose after the payment of a fee will not entitle a party to a refund of such fee,” 37 CFR
1.446(d) and (e) contain exceptions to this general statement.
According to 37 CFR 1.446(d), the search fee will be refunded if no international filing date is accorded or if the application is withdrawn before the search copy is transmitted to the International Searching Authority. The transmittal fee will not be refunded.
According to 37 CFR 1.446(e), the handling fee will be refunded if the Demand is withdrawn before the Demand has been sent by the International Preliminary ExaminingAuthority to the International Bureau.
Refund of the supplemental search fee will be made if the applicant is successful in a protest (filed pursuant to 37 CFR 1.477) to a holding of lack of unity of invention. The supplemental search fee must be paid and be accompanied by (1) a protest and (2) a request for refund of the supplemental search fee.
If the receiving Office and International Searching Authority are not the same Office, any request for refund of the search fee made after the search copy has been transmitted to the International Searching Authority must be directed to the International Searching Authority and not to the receiving Office.
1828 Priority Claim and Document [R-07.2015]
An applicant who claims the priority of one or more earlier national, regional or international applications for the same invention must indicate on the Request, at the time of filing, the country in or for which it was filed, the date of filing, and the application number. See PCT Article 8 and PCT Rule 4.10 for priority claim particulars and PCT Rule 90 bis.3 for withdrawal of priority claims. Note that under PCT Rule 4.10, an applicant may claim the priority of an application filed in or for a State which is a Member of the World Trade Organization (WTO), even if that State is not party to the Paris Convention for the Protection of Industrial Property (Paris Convention). However, a PCT Contracting State that is not a Member of the WTO would not be obliged to recognize the effects of such a priority claim.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1827.01
The applicant may correct or add a priority claim by a notice submitted to the Receiving Office or the International Bureau (IB) within 16 months from the priority date, or where the priority date is changed, within 16 months from the priority date so changed, whichever period expires first, provided that a notice correcting or adding a priority claim may in any event be submitted until the expiration of 4 months from the international filing date. PCT Rule 26 bis.1 and 37 CFR 1.451 and 1.465. For a withdrawal of a priority claim, see MPEP § 1859.
Under the PCT procedure, the applicant may file the certified copy of the earlier filed national application together with the international application in the receiving Office for transmittal with the record copy, or alternatively the certified copy may be submitted by the applicant to the IB or the receiving Office not later than 16 months from the priority date or, if the applicant has requested early processing in any designated Office, not later than the time such processing or examination is requested. The IB will normally furnish copies of the certified copy to the various designated Offices so that the applicant will not normally be required to submit certified copies to each designated Office. If the earlier filed application was filed with the U.S. Patent and Trademark Office, the applicant may request the U.S. Receiving Office (RO/US) to prepare, and transmit to the IB, a certified copy of the earlier application. The request (Form PCT/RO/101) contains a box which can be checked requesting that the receiving Office prepare the certified copy. In international applications filed in the RO/US on or after August 31, 2007, the RO/US will electronically transmit the certified copy of the earlier application if the applicant has made a request in accordance with PCT Rule 17.1(b) and 37 CFR 1.451(b). Further, in such international applications filed on or after August 31, 2007, the USPTO has waived the fee set out in 37 CFR 1.19(b)(1)(iii)(A) for electronically providing a copy of the patent application as filed. If the earlier application is made available to the International Bureau via a digital library, applicant may request the International Bureau to obtain a copy of the earlier application from the digital library. The International Bureau will electronically obtain the copy of the earlier application if the applicant has made a request in accordance with PCT Rule 17.1(b- bis ).
Transmission may be delayed or prevented when no inventor common to the priority application is named in the international application. Further, transmission of the priority document will not occur until its national security review is complete.
For use of the priority document in a U.S. national application which entered the national stage from an international application after compliance with 35 U.S.C. 371, see MPEP § 1893.03(c).
1828.01 Restoration of the Right of Priority [R-07.2015]
37 CFR 1.452 Restoration of right of priority
(a) If the international application has an international filing date which is later than the expiration of the priority period as defined by PCT Rule 2.4 but within two months from the expiration of the priority period, the right of priority in the international application may be restored upon request if the delay in filing the international application within the priority period was unintentional.
(b) A request to restore the right of priority in an international application under paragraph (a) of this section must be filed not later than two months from the expiration of the priority period and must include:
(1) A notice under PCT Rule 26 bis.1(a) adding the priority claim, if the priority claim in respect of the earlier application is not contained in the international application;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the delay in filing the international application within the priority period was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(c) If the applicant makes a request for early publication under PCT Article 21(2)(b), any requirement under paragraph (b) of this section filed after the technical preparations for international publication have been completed by the International Bureau shall be considered as not having been submitted in time.
On April 1, 2007, the regulations to the PCT were amended to allow applicants with applications which were filed on or after that date and which were also filed after the expiration of the 12 month priority period but within two months of the expiration of the priority period, to request that the right of priority be restored, provided that the failure to file the application within the priority period was in spite of due care or unintentional. See PCT Rule 26 bis.3. Grantable requests for restoration of the right of priority must be filed within two months from the
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§ 1828.01PATENT COOPERATION TREATY
date of expiration of the priority period as defined by new PCT Rule 2.4, and must be accompanied by: (i) the requisite fee as set forth in § 1.17(m); (ii) a notice under PCT Rule 26 bis.1(a) adding the priority claim, if the priority claim in respect of the earlier application is not contained in the international application; and (iii) a statement that the delay in filing the international application within the priority period was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. If the applicant makes a request for early publication under PCT Article 21(2)(b), any of requirements (i), (ii), or (iii) above which are filed after the technical preparations for international publication have been completed by the International Bureau shall be considered as not having been submitted in time.
The International Bureau has indicated that it intends to decide these matters under both the in spite of due care and unintentional standards. Therefore, in view of the fact that the USPTO only decides these matters under the unintentional standard, applicants may wish to consider filing directly with the International Bureau as receiving Office instead of the United States Receiving Office in the situation where applicant desires to request restoration of the right of priority under the in spite of due care standard. Applicants may also request that an application be forwarded to the International Bureau for processing in its capacity as a receiving Office in accordance with PCT Rule 19.4(a)(iii) in situations where applicants, after the international application has been filed, realize that the application was filed after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard. However, the United States Receiving Office may decline to forward the international application to the International Bureau under PCT Rule 19.4(a)(iii) if substantial processing of the international application by the United States Receiving Office has occurred. Applications filed with, or forwarded to, the International Bureau must have a foreign filing license.
It should be noted that restoration of a right of priority to a prior application by the United States Receiving Office, or by any other receiving Office,
under the provisions of PCT Rule 26 bis.3, will not entitle applicants to a right of priority to such prior application in a national stage application in any office that has notified the International Bureau under PCT Rule 26 bis.3(j) and 49 ter.1(g) of an incompatibility with its national law. A full listing of the national offices that will not accept the restoration of the right of priority in the national stage may be found on WIPO’s website at www.wipo.int/pct/en/texts/reservations/res_incomp.html. In the United States, a right of priority that has been restored under PCT Rule 26 bis.3 during the international stage will be effective in the U.S. national stage. See MPEP § 1893.03(c).
It should also be noted that regardless of the PCT Rule 26 bis.3(j) and 49 ter.1(g) status of any particular office, the priority date will still govern all PCT time limits, including the thirty-month period for filing national stage papers and fees under 37 CFR 1.495. PCT Article 2(ix), which defines “priority date” for purposes of computing time limits, contains no limitation that the priority claim be valid.
1828.02 Continuation or Continuation-in-Part Indication in the Request [R-07.2015]
PCT Rule 4.
The Request (Contents)
*****
4.11 Reference to Continuation or Continuation-in-Part, or Parent Application or Grant
(a) If:
(ii) the applicant intends to make an indication under Rule 49 bis.1(d) of the wish that the international application be treated, in any designated State, as an application for a continuation or a continuation-in-part of an earlier application; the request shall so indicate and shall indicate the relevant parent application or parent patent or other parent grant.
*****
The Supplemental Box of the Request form should be used where the applicant has an earlier pending United States nonprovisional application or international application designating the U.S. and wishes the later-filed international application to be treated as a continuation or continuation-in-part of such earlier application. To properly identify the parent application, the specific reference must
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identify the parent application by application number and indicate the relationship to the parent application (i.e., “continuation” or “continuation-in-part”). The specific reference must also indicate the filing date of the parent application if the parent application is an international application. See 37 CFR 1.78(d)(2).
The inclusion of a proper reference to the parent application in the PCT Request form or the presence of such reference on the front page of the published international application will satisfy the requirement in 37 CFR 1.78 for the presentation of a benefit claim in an application data sheet. See 37 CFR 1.76(g). In such cases, a reference to the parent application in an application data sheet would not be required in the national stage application. Furthermore, inclusion of a proper reference to the parent application in the PCT Request form is also beneficial where applicant chooses to file a continuing application claiming benefit under 35 U.S.C. 365(c) to the international application (i.e., a bypass application) rather than entering the U.S. national phase under 35 U.S.C. 371. See MPEP § 211.02, which indicates the right to rely on a prior application may be waived by an applicant if a reference to the prior application is not included in the later-filed application.
1829 [Reserved]
1830 International Application Transmittal Letter [R-07.2015]
A PCT international application transmittal letter, Form PTO-1382, is available for applicants to use when filing PCT international applications and related documents with the United States Receiving Office. The form, which is intended to simplify the filing of PCT international applications and related documents with the United States Receiving Office, may be obtained online at www.uspto.gov/
patents-getting-started/international-protection/ patent-cooperation-treaty/pct-chapter-i-forms.
1831 [Reserved]
1832 License Request for Foreign Filing Under the PCT [R-07.2015]
A license for foreign filing is not required to file an international application in the United States Receiving Office but may be required before the applicant or the U.S. Receiving Office can forward a copy of the international application to a foreign patent office, the International Bureau or other foreign authority (35 U.S.C. 368, 37 CFR 5.1 and 5.11). A foreign filing license to permit transmittal to a foreign office or international authority is not required if the international application does not disclose subject matter in addition to that disclosed in a prior U.S. national application filed more than 6 months prior to the filing of the international application (37 CFR 5.11(a)). In all other instances (direct foreign filings outside the PCT or filings in a foreign receiving Office), the applicant should petition for a license for foreign filing (37 CFR 5.12) and if appropriate, identify any additional subject matter in the international application which was not in the earlier U.S. national application (37 CFR 5.14(c)).
If no petition or request for a foreign filing license is included in the international application, and it is clear that a license is required because of the designation of foreign countries and the time at which the Record Copy must be transmitted, it is current Office practice to construe the filing of such an international application to include a request for a foreign filing license. If the license can be granted, it will be issued without further correspondence. If no license can be issued, or further information is required, applicant will be contacted. The automatic request for a foreign filing license does not apply to the filing of a foreign application outside the PCT.
EFFECT OF SECRECY ORDER
If a secrecy order is applied to an international application, the application will not be forwarded to the International Bureau as long as the secrecy order remains in effect (PCT Article 27(8) and
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§ 1832PATENT COOPERATION TREATY
35 U.S.C. 368). If the secrecy order remains in effect, the international application will be declared withdrawn (abandoned) because the Record Copy of the international application was not received in time by the International Bureau (37 CFR 5.3(d), PCT Article 12(3), and PCT Rule 22.3). It is, however, possible to prevent abandonment as to the United States of America if it has been designated, by fulfilling the requirements of 35 U.S.C. 371(c).
1833 [Reserved]
1834 Correspondence [R-07.2015]
PCT Rule 92
Correspondence
92.1 Need for Letter and for Signature
(a) Any paper submitted by the applicant in the course of the international procedure provided for in the Treaty and these Regulations, other than the international application itself, shall, if not itself in the form of a letter, be accompanied by a letter identifying the international application to which it relates. The letter shall be signed by the applicant.
(b) If the requirements provided for in paragraph (a) are not complied with, the applicant shall be informed as to the non-compliance and invited to remedy the omission within a time limit fixed in the invitation. The time limit so fixed shall be reasonable in the circumstances; even where the time limit so fixed expires later than the time limit applying to the furnishing of the paper (or even if the latter time limit has already expired), it shall not be less than 10 days and not more than one month from the mailing of the invitation. If the omission is remedied within the time limit fixed in the invitation, the omission shall be disregarded; otherwise, the applicant shall be informed that the paper has been disregarded.
(c) Where non-compliance with the requirements provided for in paragraph (a) has been overlooked and the paper taken into account in the international procedure, the non-compliance shall be disregarded.
92.2 Languages
(a) Subject to Rules 55.1 and 55.3 and to paragraph (b) of this Rule, any letter or document submitted by the applicant to the International Searching Authority or the International Preliminary Examining Authority shall be in the same language as the international application to which it relates. However, where a translation of the international application has been transmitted under Rule 23.1(b) or furnished under Rule 55.2, the language of such translation shall be used.
(b) Any letter from the applicant to the International Searching Authority or the International Preliminary Examining Authority may be in a language other than that of the
international application, provided the said Authority authorizes the use of such language.
(c) [Deleted]
(d) Any letter from the applicant to the International Bureau shall be in English or French.
(e) Any letter or notification from the International Bureau to the applicant or to any national Office shall be in English or French.
*****
PCT Administrative Instructions Section 105.
Identification of International Application With Two or More Applicants
Where any international application indicates two or more applicants, it shall be sufficient, for the purpose of identifying that application, to indicate, in any Form or correspondence relating to such application, the name of the applicant first named in the request. The provisions of the first sentence of this Section do not apply to the demand.
I. NOTIFICATION UNDER PCT RULE 92.1(b) OF DEFECTS WITH REGARD TO CORRESPONDENCE
If the Office finds that papers, other than the international application itself, are not accompanied by a letter identifying the international application to which they relate, or are accompanied by an unsigned letter, or are furnished in the form of an unsigned letter, it notifies the applicant and invites him or her to remedy the omission. The Office disregards the said papers or letter if the omission is not remedied within the time limit fixed in the invitation (PCT Rule 92.1(b)). If the omission has been overlooked and the paper taken into account, the omission is disregarded.
II. CORRESPONDENCE ADDRESS
Where there is a sole applicant without an agent in an international application, correspondence will be sent to the applicant at his or her indicated address; or, if he or she has appointed one or more agents, to that agent or the first-mentioned of those agents; or, if he or she has not appointed an agent but has indicated a special address for notifications, at that special address.
Where there are two or more applicants who have appointed one or more common agents, correspondence will be addressed to that agent or
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1833
the first-mentioned of those agents. Where no common agent has been appointed, correspondence will be addressed to the common representative (either the appointed common representative or the applicant who is considered to be the common representative (PCT Rule 90.2) at the indicated address; or, if the common representative has appointed one or more agents, to that agent or the first-mentioned of those agents; or, if the common representative has not appointed an agent but has indicated a special address for notifications, at that address.
III. FILING OF CORRESPONDENCE BY MAIL
The Priority Mail Express® procedure set forth at 37 CFR 1.10 applies to papers filed with the U.S. Patent and Trademark Office (USPTO) in international applications. Accordingly, papers filed with the USPTO in international applications will be accorded by the USPTO the date of deposit with the United States Postal Service as shown on the “date-in” on the Priority Mail Express® mailing label as the date of filing in the USPTO if the provisions of 37 CFR 1.10 are complied with. See MPEP § 513.
If there is a question regarding the date of deposit, the Priority Mail Express® provisions of 37 CFR 1.10(c) - (e) require, in addition to using the Priority Mail Express® Post Office to Addressee service, an indication of the Priority Mail Express® mailing label number on each paper or fee. In situations wherein the correspondence includes several papers directed to the same application (for example, Request, description, claims, abstract, drawings, and other papers) the correspondence may be submitted with a cover or transmittal letter, which should itemize the papers. The cover or transmittal letter must have the Priority Mail Express® mailing label number thereon.
The certificate of mailing by first class mail procedure set forth at 37 CFR 1.8 differs from the 37 CFR 1.10 Priority Mail Express® procedure. See 37 CFR 1.8(a)(2)(i)(D) and (E). It is important to understand that the 37 CFR 1.8 certificate of mailing procedure CANNOT be used for filing any papers during the international stage if the date of deposit is desired. If the 37 CFR 1.8 certificate of mailing
procedure is used, the paper and/or fee will be accorded the date of receipt in the USPTO unless the receipt date falls on a Saturday, Sunday, or federal holiday in which case the date of receipt will be the next succeeding day which is not a Saturday, Sunday, or federal holiday (37 CFR 1.6(a)(1)). Accordingly, the certificate of mailing procedures of 37 CFR 1.8 are not available to have a submission during the international stage considered as timely filed if the submission is not physically received at the USPTO on or before the due date.
1834.01 Filing of Correspondence by Facsimile [R-07.2015]
PCT Rule 92.4 provides that a national Office may receive documents by telegraph, teleprinter, or facsimile machine. However, the United States Patent and Trademark Office has not informed the International Bureau that it accepts such submissions other than facsimile transmissions. Accordingly, applicants may not currently file papers in international applications with the United States Patent and Trademark Office via telegraph or teleprinter.
Generally, any paper may be filed by facsimile transmission with certain exceptions which are identified in 37 CFR 1.6(d). It should be noted that a facsimile transmission of a document is not permitted and, if submitted, will not be accorded a date of receipt if the document is:
(A) Required by statute to be certified;
(B) A color drawing submitted under 37 CFR 1.437;
(C) An international application for patent; or
(D) A copy of the international application and the basic national fee necessary to enter the national stage, as specified in 37 CFR 1.495(b).
Facsimile transmission may be used to submit substitute sheets (other than color drawings), extensions of time, power of attorney, fee authorizations (other than the basic national fee), demands , response to written opinions, oaths or declarations, petitions, Article 34 amendments, and translations in international applications.
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§ 1834.01PATENT COOPERATION TREATY
A Certificate of Transmission may be used as provided in 37 CFR 1.8(a)(1) except in the instances specifically excluded in 37 CFR 1.8(a)(2). Note particularly that the Certificate of Transmission cannot be used for the filing of an international application for patent or correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority. Guidelines for facsimile transmission are clearly set forth in 37 CFR 1.6(d) and should be read before transmitting by facsimile machine.
A signature on a document received via facsimile in a permitted situation is acceptable as a proper signature. See PCT Rule 92.4(b) and 37 CFR 1.4(d)(1)(ii).
The receipt date of a document transmitted via facsimile is the date in the USPTO on which the transmission is completed, unless the receipt date is a Saturday, Sunday, or Federal holiday in which case the date of receipt will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday (37 CFR 1.6(a)(3)). See 37 CFR 1.6(d). Where a document is illegible or part of the document is not received, the document will be treated as not received to the extent that it is illegible or the transmission failed. See PCT Rule 92.4(c).
1834.02 Irregularities in the Mail Service [R-07.2015]
PCT Rule 82.
Irregularities in the Mail Service
82.1 Delay or Loss in Mail
(a) Any interested party may offer evidence that he has mailed the document or letter five days prior to the expiration of the time limit. Except in cases where surface mail normally arrives at its destination within two days of mailing, or where no airmail service is available, such evidence may be offered only if the mailing was by airmail. In any case, evidence may be offered only if the mailing was by mail registered by the postal authorities.
(b) If the mailing, in accordance with paragraph (a), of a document or letter is proven to the satisfaction of the national Office or intergovernmental organization which is the addressee, delay in arrival shall be excused, or, if the document or letter is lost in the mail, substitution for it of a new copy shall be permitted, provided that the interested party proves to the satisfaction of the said Office or organization that the document
or letter offered in substitution is identical with the document or letter lost.
(c) In the cases provided for in paragraph (b), evidence of mailing within the prescribed time limit, and, where the document or letter was lost, the substitute document or letter as well as the evidence concerning its identity with the document or letter lost shall be submitted within one month after the date on which the interested party noticed or with due diligence should have noticed the delay or the loss, and in no case later than six months after the expiration of the time limit applicable in the given case.
(d) Any national Office or intergovernmental organization which has notified the International Bureau that it will do so shall, where a delivery service other than the postal authorities is used to mail a document or letter, apply the provisions of paragraphs (a) to (c) as if the delivery service was a postal authority. In such a case, the last sentence of paragraph (a) shall not apply but evidence may be offered only if details of the mailing were recorded by the delivery service at the time of mailing. The notification may contain an indication that it applies only to mailings using specified delivery services or delivery services which satisfy specified criteria. The International Bureau shall publish the information so notified in the Gazette.
(e) Any national Office or intergovernmental organization may proceed under paragraph (d):
(i) even if, where applicable, the delivery service used was not one of those specified, or did not satisfy the criteria specified, in the relevant notification under paragraph (d), or
(ii) even if that Office or organization has not sent to the International Bureau a notification under paragraph (d).
I. DELAY OR LOSS IN MAIL
Delay or loss in the mail shall be excused when it is proven to the satisfaction of the receiving Office that the concerned letter or document was mailed at least five days before the expiration of the time limit. The mailing must have been by registered air mail or, where surface mail would normally arrive at the destination concerned within two days of mailing, by registered surface mail (PCT Rule 82.1(a) to (c)). PCT Rule 82 contains detailed provisions governing the situation where a letter arrives late or gets lost due to irregularities in the mail service, for example, because the mail service was interrupted due to a strike. The provisions operate to excuse failure to meet a time limit for filing a document for up to six months after the expiration of the time limit concerned, provided that the document was mailed at least five days before the expiration of the time limit. In order to take advantage of these provisions, the mailing must have been by registered airmail or, where surface mail would normally arrive at the
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destination concerned within two days of mailing, by registered surface mail. Evidence is required to satisfy the Office, and a substitute document must be filed promptly—see PCT Rule 82.1(b) and (c) for details.
II. INTERRUPTION IN MAIL SERVICE
The provisions of PCT Rule 82.1(c) apply mutatis mutandis for interruptions in the mail service caused by war, revolution, civil disorder, strike, natural calamity or other like reasons (PCT Rule 82 quater. )
Special provisions also apply to mail interruptions caused by war, revolution, civil disorder, strike, natural calamity or other like reasons—see PCT Rule 82 quater for details.
See PCT Rule 80.5 for guidance on periods which expire on a non-working day.
1835 [Reserved]
1836 Rectification of Obvious Mistakes [R-07.2015]
PCT Rule 91
Rectification of Obvious Mistakes in the International Application and Other Documents
91.1 Rectification of Obvious Mistakes
(a) An obvious mistake in the international application or another document submitted by the applicant may be rectified in accordance with this Rule if the applicant so requests.
(b) The rectification of a mistake shall be subject to authorization by the “competent authority”, that is to say:
(i) in the case of a mistake in the request part of the international application or in a correction thereof—by the receiving Office;
(ii) in the case of a mistake in the description, claims or drawings or in a correction thereof, unless the International Preliminary Examining Authority is competent under item (iii)—by the International Searching Authority;
(iii) in the case of a mistake in the description, claims or drawings or in a correction thereof, or in an amendment under Article 19 or 34, where a demand for international preliminary examination has been made and has not been withdrawn and the date on which international preliminary examination shall start in accordance with Rule 69.1 has passed—by the International Preliminary Examining Authority;
(iv) in the case of a mistake in a document not referred to in items (i) to (iii) submitted to the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau, other than a mistake in the abstract or in an amendment under Article 19 —by that Office, Authority or Bureau, as the case may be.
(c) The competent authority shall authorize the rectification under this Rule of a mistake if, and only if, it is obvious to the competent authority that, as at the applicable date under paragraph (f), something else was intended than what appears in the document concerned and that nothing else could have been intended than the proposed rectification.
(d) In the case of a mistake in the description, claims or drawings or in a correction or amendment thereof, the competent authority shall, for the purposes of paragraph (c), only take into account the contents of the description, claims and drawings and, where applicable, the correction or amendment concerned.
(e) In the case of a mistake in the request part of the international application or a correction thereof, or in a document referred to in paragraph (b)(iv), the competent authority shall, for the purposes of paragraph (c), only take into account the contents of the international application itself and, where applicable, the correction concerned, or the document referred to in paragraph (b)(iv), together with any other document submitted with the request, correction or document, as the case may be, any priority document in respect of the international application that is available to the authority in accordance with the Administrative Instructions, and any other document contained in the authority’s international application file at the applicable date under paragraph (f).
(f) The applicable date for the purposes of paragraphs (c) and (e) shall be:
(i) in the case of a mistake in a part of the international application as filed—the international filing date;
(ii) in the case of a mistake in a document other than the international application as filed, including a mistake in a correction or an amendment of the international application—the date on which the document was submitted.
(g) A mistake shall not be rectifiable under this Rule if:
(i) the mistake lies in the omission of one or more entire elements of the international application referred to in Article 3(2) or one or more entire sheets of the international application;
(ii) the mistake is in the abstract;
(iii) the mistake is in an amendment under Article 19, unless the International Preliminary Examining Authority is competent to authorize the rectification of such mistake under paragraph (b)(iii); or
(iv) the mistake is in a priority claim or in a notice correcting or adding a priority claim under Rule 26 bis.1(a), where the rectification of the mistake would cause a change in the priority date;
provided that this paragraph shall not affect the operation of Rules 20.4, 20.5, 26 bis and 38.3.
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§ 1836PATENT COOPERATION TREATY
(h) Where the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau discovers what appears to be a rectifiable obvious mistake in the international application or another document, it may invite the applicant to request rectification under this Rule.
91.2 Requests for Rectification
A request for rectification under Rule 91.1 shall be submitted to the competent authority within 26 months from the priority date. It shall specify the mistake to be rectified and the proposed rectification, and may, at the option of the applicant, contain a brief explanation. Rule 26.4 shall apply mutatis mutandis as to the manner in which the proposed rectification shall be indicated.
91.3 Authorization and Effect of Rectifications
(a) The competent authority shall promptly decide whether to authorize or refuse to authorize a rectification under Rule 91.1 and shall promptly notify the applicant and the International Bureau of the authorization or refusal and, in the case of refusal, of the reasons therefor. The International Bureau shall proceed as provided for in the Administrative Instructions, including, as required, notifying the receiving Office, the International Searching Authority, the International Preliminary Examining Authority and the designated and elected Offices of the authorization or refusal.
(b) Where the rectification of an obvious mistake has been authorized under Rule 91.1, the document concerned shall be rectified in accordance with the Administrative Instructions.
(c) Where the rectification of an obvious mistake has been authorized, it shall be effective:
(i) in the case of a mistake in the international application as filed, from the international filing date;
(ii) in the case of a mistake in a document other than the international application as filed, including a mistake in a correction or an amendment of the international application, from the date on which that document was submitted.
(d) Where the competent authority refuses to authorize a rectification under Rule 91.1, the International Bureau shall, upon request submitted to it by the applicant within two months from the date of the refusal, and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, publish the request for rectification, the reasons for refusal by the authority and any further brief comments that may be submitted by the applicant, if possible together with the international application. A copy of the request, reasons and comments (if any) shall if possible be included in the communication under Article 20 where the international application is not published by virtue of Article 64(3).
(e) The rectification of an obvious mistake need not be taken into account by any designated Office in which the processing or examination of the international application has already started prior to the date on which that Office is notified under Rule 91.3(a) of the authorization of the rectification by the competent authority.
(f) A designated Office may disregard a rectification that was authorized under Rule 91.1 only if it finds that it would not have authorized the rectification under Rule 91.1 if it had been the competent authority, provided that no designated Office shall disregard any rectification that was authorized under Rule 91.1 without giving the applicant the opportunity to make observations, within a time limit which shall be reasonable under the circumstances, on the Office’s intention to disregard the rectification.
Obvious mistakes in the international application or other papers submitted by the applicant may generally be rectified under PCT Rule 91, if the rectification is authorized, as required, within the applicable time limit. Any such rectification is free of charge. The omission of entire sheets of the international application cannot be rectified under PCT Rule 91. Correction of such mistakes may only be made in accordance with PCT Rule 20.6. Mistakes in the abstract, in amendments under PCT Article 19 (unless the International Preliminary Examining Authority is competent to authorize the rectification under PCT Rule 91.1(b)(iii)), or in a priority claim or in a notice correcting or adding a priority claim where the rectification would cause a change in the priority, also cannot be rectified under PCT Rule 91.
Applicants often attempt to rely upon the priority application to establish a basis for obvious mistake. The priority document (application) cannot be used to support obvious mistake corrections to the description, claims, or drawings or in a correction or amendment thereof. The rectification is obvious only in the sense that the competent authority (i.e., the receiving Office, the International Searching Authority, the International Preliminary Examining Authority, or the International Bureau), as appropriate, would immediately realize that something else was intended other than what appears in the document and that nothing else could have been intended than what is offered as rectification. Examples of obvious mistakes that are rectifiable include linguistic errors, spelling errors and grammatical errors so long as the meaning of the disclosure does not change upon entry of the rectification. Changes to chemical or mathematical formulas would not generally be rectifiable unless they would be common knowledge to anyone. A missing chemical formula or missing line of text would not be considered to be an obvious mistake subject to rectification.
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Rectifications must be authorized:
(A) by the Receiving Office if the mistake is in the request;
(B) by the International Searching Authority if the mistake is in the description, claims, or drawings or in a correction thereof or in any paper submitted to that Authority, unless the International Preliminary Examining Authority is competent;
(C) by the International Preliminary Examining Authority if the mistake is in the description, claims, or drawings or in a correction thereof, or in an amendment under Article 19 or 34, or in any paper submitted to that Authority, where a demand for Chapter II examination has been filed and has not been withdrawn and the date on which international preliminary examination shall start in accordance with PCT Rule 69.1 has passed;
(D) by the International Bureau if the mistake is in any paper submitted to it other than the international application or amendments or corrections to the application.
The request for rectification must be addressed to the authority competent to authorize the rectification. It must be filed within 26 months from the priority date.
The International Searching Authority informs the applicant of the decision by use of Form PCT/ISA/217, while the International Preliminary Examining Authority informs the applicant of the decision regarding the authorization or refusal to authorize the rectification of obvious mistakes by use of Form PCT/IPEA/412.
1837 -1839 [Reserved]
1840 The International Searching Authority [R-07.2015]
35 U.S.C. 362 International Searching Authority and International Preliminary Examining Authority.
(a) The Patent and Trademark Office may act as an International Searching Authority and International Preliminary Examining Authority with respect to international applications in accordance with the terms and conditions of an agreement which may be concluded with the International Bureau, and may discharge all duties required of such Authorities, including
the collection of handling fees and their transmittal to the International Bureau.
(b) The handling fee, preliminary examination fee, and any additional fees due for international preliminary examination shall be paid within such time as may be fixed by the Director.
37 CFR 1.413 The United States International Searching Authority.
(a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Searching Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with the agreement between the Patent and Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
(b) The Patent and Trademark Office, when acting as an International Searching Authority, will be identified by the full title “United States International Searching Authority” or by the abbreviation “ISA/US.”
(c) The major functions of the International Searching Authority include:
(1) Approving or establishing the title and abstract;
(2) Considering the matter of unity of invention;
(3) Conducting international and international-type searches and preparing international and international-type search reports (PCT Art. 15, 17 and 18, and PCT Rules 25, 33 to 45 and 47), and issuing declarations that no international search report will be established (PCT Article 17(2)(a));
(4) Preparing written opinions of the International Searching Authority in accordance with PCT Rule 43 bis (when necessary); and
(5) Transmitting the international search report and the written opinion of the International Searching Authority to the applicant and the International Bureau.
The United States Patent and Trademark Office (USPTO) agreed to and was appointed by the PCT Assembly, to act as an International Searching Authority. As such an Authority, the primary functions are to establish (1) international search reports and (2) for international applications having an international filing date on or after January 1, 2004, written opinions. See PCT Article 16 and PCT Rule 43 bis.
Pursuant to an agreement concluded with the International Bureau, the USPTO, as an International Searching Authority, agreed to conduct international searches and prepare international search reports and written opinions of the International Searching Authority, for, in addition to the United States of America, Bahrain, Barbados, Brazil, Chile,
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Dominican Republic, Egypt, Georgia, Guatemala, India, Israel, Mexico, New Zealand, Oman, Panama, Peru, Philippines, Qatar, Saint Lucia, Saint Vincent and the Grenadines, South Africa, Thailand, and Trinidad and Tobago. The agreement stipulated the English language and specified that the subject matter to be searched is that which is searched or examined in United States national applications.
I. TRANSMITTAL OF THE SEARCH COPY TO THE INTERNATIONAL SEARCHING AUTHORITY
The “search copy” is transmitted by the Receiving Office to the International Searching Authority (PCT Article 12(1)), the details of the transmittal are provided in PCT Rule 23.
II. THE MAIN PROCEDURAL STEPS IN THE INTERNATIONAL SEARCHING AUTHORITY
The main procedural steps that any international application goes through in the International Searching Authority are (1) the making of the international search (PCT Article 15), (2) the preparing of the international search report (PCT Article 18 and PCT Rule 43) and (3) for international applications having an international filing date on or after January 1, 2004, the preparing of a written opinion of the International Searching Authority (PCT Rule 43 bis ).
III. COMPETENT INTERNATIONAL SEARCHING AUTHORITY
In respect of international applications filed with the U.S. Receiving Office, the United States International Searching Authority is competent to carry out the international search (PCT Article 16, PCT Rules 35 and 36, 35 U.S.C. 362 and 37 CFR 1.413). The European Patent Office (EPO), the Korean Intellectual Property Office (KIPO), the Australian Patent Office (IP Australia) (IPAU), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), and the Japan Patent Office (JPO) may also be competent to carry out the international search (PCT Article 16, PCT Rules 35 and 36) for international applications filed with the U.S. Receiving Office. The choice of International
SearchingAuthority (ISA), the USPTO, EPO, KIPO, IPAU, Rospatent, ILPO, or JPO, must be made by the applicant on filing the international application. See MPEP §§ 1840.01 - 1840.06 for further information regarding the competency of the EPO, KIPO, IPAU, Rospatent, ILPO, and JPO as an International Searching Authority for applications filed by U.S. nationals or residents in the USPTO or in the International Bureau (IB) as receiving Office.
The international search fee for the selected ISA must be paid to the USPTO as a receiving Office within one month from the time of receipt of the international application. The search fee amounts for the competent International SearchingAuthorities are found in each weekly edition of the Official Gazette in United States dollars. The search fee will change as costs and exchange rates require. If exchange rates fluctuate significantly, the fee may change frequently. Notice of changes will be published in the Official Gazette shortly before the effective date of any change.
If the selected ISA considers that the international application does not comply with the requirement of unity of invention as set forth in PCT Rule 13, the ISA may invite applicants to timely pay directly to it an additional search fee in the currency accepted by the ISA for each additional invention.
1840.01 The European Patent Office as an International Searching Authority [R-07.2015]
Since October 1, 1982, the European Patent Office (EPO) has been available as an International Searching Authority for PCT applications filed by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office. The EPO, effective January 1, 2015, no longer has any limitations concerning its competency to act as an International Searching Authority. Previously, the EPO would not carry out an international search for any application which contained one or more claims relating to the field of business methods. Under this new practice, in applications containing claims relating to business methods where the subject matter of the application also contains technical features, the EPO will perform a search for those
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parts of the application which are more than mere business methods. However, the EPO will issue a declaration under PCT Article 17(2)(a) that no ISR will be established whenever an application relates only to a business method as such. Additionally, the EPO will not search any international application to the extent that it considers that the international application relates to subject matter set forth in PCT Rule 39.1. A declaration under PCT Article 17(2)(a) will be issued in these cases as well.
Once the international search report has been established by ISA/EP, the copies of the documents cited in the PCT international search report are also mailed to the applicant.
1840.02 The Korean Intellectual Property Office as an International Searching Authority [R-07.2015]
Since January 1, 2006, the Korean Intellectual Property Office (KIPO) has been available as an International Searching Authority for PCT applications filed by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office. Once the international search report has been established by ISA/KR, the copies of the documents cited in the PCT international search report are made available only to applicant f r o m t h e K I P O w e b s i t e (www.kipo.go.kr/kpo/user.tdf?a= user. english.html.HtmlApp&c=50300&catmenu=ek05_01_01) within 3 months from the mailing of the international search report. A fee may be required for request of the cited documents after the expiration of the 3 month period.
1840.03 The Australian Patent Office (IP Australia) as an International Searching Authority [R-07.2015]
The Australian Patent Office (IP Australia) may act as the ISA for an international application filed with the United States receiving Office or the International Bureau (IB) as receiving Office where at least one of the applicants is either a national or resident of the United States of America. The announcement appears in the Official Gazette at
1337 OG 265, on December 23, 2008. However, the use of IP Australia is restricted. IP Australia will not act as an ISA if it has received more than 250 international applications from the USPTO during a fiscal quarter, as indicated in the Official Gazette at 1409 OG 302 on December 30, 2014.
For cited documents in the International Search Report, the IPAU, upon request and on payment, intends to furnish the applicants with copies of the documents.
1840.04 The Federal Service for Intellectual Property (Rospatent) (Russian Federation) as an International Searching Authority [R-07.2015]
For PCT applications filed after January 10, 2012 by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office, applicants may select Rospatent as the International Searching Authority (ISA).
For cited documents in the international search report, Rospatent will send copies with the report by postal service or private courier delivery to the correspondence address of record.
1840.05 The Israel Patent Office (ILPO) as an International Searching Authority [R-07.2015]
Since October 1, 2014, the Israel Patent Office (ILPO) has been available as an International Searching Authority for PCT applications filed by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office. However, the use of ILPO is restricted. The ILPO will not act as an ISA for: (1) more than 75 applications per fiscal quarter; and (2) applications with one or more claims directed to the field of business methods as determined through classification in G06Q of the International Patent Classification.
For cited documents in the International Search Report, the ILPO, upon request and on payment,
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intends to furnish the applicants with copies of the documents.
1840.06 The Japan Patent Office (JPO) as an International Searching Authority [R-07.2015]
Since July 1, 2015, the Japan Patent Office (JPO) has been available as an International Searching Authority (ISA) for PCT applications filed by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office. However, the use of JPO is restricted. The JPO will act as the ISA for international applications filed with the USPTO insofar as the following conditions are met: (1) the international applications are submitted in English; (2) the claims of the international applications are directed to the field of green technology as defined by certain IPC classes
(see Official Notices (PCT Gazette) dated 25 June 2015, pages 108 et seq.); (3) the JPO has not received more than 5,000 international applications from the USPTO during the three year period from 1 July 2015 to 30 June 2018, not more than 300 applications per quarter during the first year, and not more than 475 applications per quarter during the second and third years; and (4) the JPO is chosen as a competent authority by the applicants of said applications.
For cited documents in the International Search Report, the JPO, upon request and on payment, intends to furnish the applicants with copies of the documents.
1841 [Reserved]
1842 Basic Flow Under the PCT [R-07.2015]
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I. MEASURING TIME LIMITS UNDER THE PCT
Time limits under the PCT are measured from the “priority date” of the application. The priority date for the purposes of computing time limits is defined in PCT Article 2(xi). Where an international application does not contain any priority claim under PCT Article 8, the international filing date is considered to be the priority date.
II. INTERNATIONAL FILING DATE
An international application under the Patent Cooperation Treaty is generally filed within 12 months after the filing of the first application directed to the same subject matter, so that priority may be claimed under PCT Article 8 and Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property. PCT Article 11 specifies the elements required for an
international application to be accorded an international filing date.
III. ESTABLISHMENT OF THE INTERNATIONAL SEARCH REPORT AND WRITTEN OPINION OF THE INTERNATIONAL SEARCHING AUTHORITY
As provided in PCT Rule 42 and PCT Rule 43 bis , the time limit for establishing the international search report (or a declaration that no international search report will be established) and written opinion is three months from the receipt of the search copy by the International SearchingAuthority, or nine months from the priority date, whichever time limit expires later.
IV. INTERNATIONAL PUBLICATION
Under PCT Article 21, the international publication of the international application by the International
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Bureau shall be effected promptly after the expiration of 18 months from the priority date of that application.
V. SUPPLEMENTARY INTERNATIONAL SEARCH (SIS)
As provided in PCT Rule 45bis, at any time prior to the expiration of 19 months from the priority date, the applicant can request one or more supplementary international searches each to be carried out by an International Searching Authority other than the International Searching Authority which carries out the main international search.
VI. DEADLINE FOR FILING THE DEMAND
International preliminary examination is optional. A demand for international preliminary examination must be filed prior to the expiration of whichever of the following periods expires later: (A) three months from the date of transmittal to the applicant of the international search report and the written opinion; or (B) 22 months from the priority date. Otherwise the demand shall be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare. See PCT Rule 54. In order to take advantage of a national phase entry time limit of at least 30 months from the priority date in relation to all States designated in the international application, it may be necessary to file a demand before the expiration of 19 months from the priority date. See subsection VII.A., below.
VII. DEADLINE FOR FILING COPY, TRANSLATION, AND FEE IN NATIONAL STAGE OFFICES
A listing of all national and regional offices, and the corresponding time limits for entering the national stage following PCT Chapter I and PCT Chapter II, may be found on WIPO’s website at: www.wipo.int/pct/en/texts/time_limits.html.
A. National Stage Entry Following PCT Chapter I
PCT Article 22(1) was amended, effective April 1, 2002, to specify that the national stage requirements are due not later than at the expiration of 30 months from the priority date if no demand has been filed.
Prior to April 1, 2002, PCT Article 22(1) specified that these requirements were due not later than at the expiration of 20 months from the priority date. Seewww.wipo.int/pct/en/texts/time_limits.html for a list of the Contracting States that have not yet changed their national laws to adopt the 30 month period now set forth in PCT Article 22(1). (At the time of publication of this Chapter, only three countries have not adopted Article 22(1) as amended: Luxembourg (LU), United Republic of Tanzania (TZ) and Uganda (UG). It is noted that Luxembourg is included in the regional designation “EPO” and that the United Republic of Tanzania and Uganda are included in the regional designation “ARIPO.”)
B. National Stage Entry Following PCT Chapter II
If the election of a Contracting State has been effected by filing a demand prior to the expiration of the 19th month from the priority date, the provisions of Article 39 apply rather than the provisions of Article 22. The deadline for filing the national stage requirements under PCT Article 39(a) is 30 months from the priority date, but any national law may fix time limits which expire later than the time limit provided in PCT Article 39(a). See PCT Article 39(b) and the list of time limits found on WIPO’s website at www.wipo.int/ pct/en/texts/time_limits.html.
1843 The International Search [R-07.2015]
PCT Article 17.
Procedure Before the International Searching Authority
(1) Procedure before the International Searching Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.
(2)
(a) If the International Searching Authority considers:
(i) that the international application relates to a subject matter which the International Searching Authority is not required, under the Regulations, to search, and in the particular case decides not to search, or
(ii) that the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out, the said Authority shall so declare and shall notify the applicant and the
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International Bureau that no international search report will be established.
(b) If any of the situations referred to in subparagraph (a) is found to exist in connection with certain claims only, the international search report shall so indicate in respect of such claims, whereas, for the other claims, the said report shall be established as provided in Article 18.
(3)
(a) If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it shall invite the applicant to pay additional fees. The International SearchingAuthority shall establish the international search report on those parts of the international application which relate to the invention first mentioned in the claims (“main invention”) and, provided the required additional fees have been paid within the prescribed time limit, on those parts of the international application which relate to inventions in respect of which the said fees were paid.
(b) The national law of any designated State may provide that, where the national Office of the State finds the invitation, referred to in subparagraph (a), of the International Searching Authority justified and where the applicant has not paid all additional fees, those parts of the international application which consequently have not been searched shall, as far as effects in the State are concerned, be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.
PCT Rule 43 bis
Written Opinion of the International Searching Authority
43 bis.1 Written Opinion
(a) Subject to Rule 69.1(b- bis) , the International Searching Authority shall, at the same time as it establishes the international search report or the declaration referred to in Article 17(2)(a), establish a written opinion as to:
(i) whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable;
(ii) whether the international application complies with the requirements of the Treaty and these Regulations in so far as checked by the International Searching Authority.
The written opinion shall also be accompanied by such other observations as these Regulations provide for.
(b) For the purposes of establishing the written opinion, Articles 33(2) to (6) and 35(2) and (3) and Rules 43.4, 43.6 bis , 64, 65, 66.1(e), 66.7, 67, 70.2(b) and (d), 70.3, 70.4(ii), 70.5(a), 70.6 to 70.10, 70.12, 70.14 and 70.15(a) shall apply mutatis mutandis.
(c) The written opinion shall contain a notification informing the applicant that, if a demand for international preliminary examination is made, the written opinion shall,
under Rule 66.1 bis(a) but subject to Rule 66.1 bis(b), be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a), in which case the applicant is invited to submit to that Authority, before the expiration of the time limit under Rule 54 bis.1(a), a written reply together, where appropriate, with amendments.
The international search is a thorough, high quality search of the most relevant resources. Upon completion of the international search an international search report is established. The report provides information on the relevant prior art to the applicant, the public, the designated Offices, and the International Preliminary Examining Authority.
PCT Article 15 describes the objective of the international search, i.e., to uncover relevant prior art, and also describes the international-type search. It should be noted generally that an international-type search is performed on all U.S. national applications filed after June 1, 1978.
The written opinion indicates whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. The written opinion also indicates any defects in the form or content of the international application under the PCT Articles or Regulations. In addition, the written opinion includes any observations that the International Searching Authority wishes to make on the clarity of the claims, the description, and the drawings, or on the question of whether the claims are fully supported by the description.
1843.01 Prior Art for Chapter I Processing [R-07.2015]
PCT Rule 33
Relevant Prior Art for the International Search
33.1 Relevant Prior Art for the International Search
(a) For the purposes of Article 15(2), relevant prior art shall consist of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) and which is capable of being of assistance in determining that the claimed invention is or is not new and that it does or does not involve an inventive step (i.e., that it is or is not obvious), provided that the making available to the public occurred prior to the international filing date.
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(b) When any written disclosure refers to an oral disclosure, use, exhibition, or other means whereby the contents of the written disclosure were made available to the public, and such making available to the public occurred on a date prior to the international filing date, the international search report shall separately mention that fact and the date on which it occurred if the making available to the public of the written disclosure occurred on a date which is the same as, or later than, the international filing date.
(c) Any published application or any patent whose publication date is the same as, or later than, but whose filing date, or, where applicable, claimed priority date, is earlier than the international filing date of the international application searched, and which would constitute relevant prior art for the purposes of Article 15(2) had it been published prior to the international filing date, shall be specially mentioned in the international search report.
33.2 Fields to Be Covered by the International Search
(a) The international search shall cover all those technical fields, and shall be carried out on the basis of all those search files, which may contain material pertinent to the invention.
(b) Consequently, not only shall the art in which the invention is classifiable be searched but also analogous arts regardless of where classified.
(c) The question what arts are, in any given case, to be regarded as analogous shall be considered in the light of what appears to be the necessary essential function or use of the invention and not only the specific functions expressly indicated in the international application.
(d) The international search shall embrace all subject matter that is generally recognized as equivalent to the subject matter of the claimed invention for all or certain of its features, even though, in its specifics, the invention as described in the international application is different.
33.3 Orientation of the International Search
(a) International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any) and with particular emphasis on the inventive concept towards which the claims are directed.
(b) In so far as possible and reasonable, the international search shall cover the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended.
PCT Rule 64
Prior Art for International Preliminary Examination
64.1 Prior Art
(a) For the purposes of Article 33(2) and (3), everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) shall be considered prior art provided that such making available occurred prior to the relevant date.
(b) For the purposes of paragraph (a), the relevant date shall be:
(i) subject to items (ii) and (iii), the international filing date of the international application under international preliminary examination;
(ii) where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is within the priority period, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid;
(iii) where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid for reasons other than the fact that the international application has an international filing date which is later than the date on which the priority period expired.
64.2 Non-Written Disclosures
In cases where the making available to the public occurred by means of an oral disclosure, use, exhibition or other non-written means (“non-written disclosure”) before the relevant date as defined in Rule 64.1(b) and the date of such non-written disclosure is indicated in a written disclosure which has been made available to the public on a date which is the same as, or later than, the relevant date, the non-written disclosure shall not be considered part of the prior art for the purposes of Article 33(2) and (3). Nevertheless, the international preliminary examination report shall call attention to such non-written disclosure in the manner provided for in Rule 70.9.
64.3 Certain Published Documents
In cases where any application or any patent which would constitute prior art for the purposes of Article 33(2) and (3) had it been published prior to the relevant date referred to in Rule 64.1 was published on a date which is the same as, or later than, the relevant date but was filed earlier than the relevant date or claimed the priority of an earlier application which had been filed prior to the relevant date, such published application or patent shall not be considered part of the prior art for the purposes of Article 33(2) and (3). Nevertheless, the international preliminary examination report shall call attention to such application or patent in the manner provided for in Rule 70.10.
The objective of the international search is to discover relevant prior art (PCT Article 15(2)). “Prior art” consists of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations); it is relevant in respect of the international application if it is capable of being
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of assistance in determining that the claimed invention is or is not new and that the claimed invention does or does not involve an inventive step (i.e., that it is or is not obvious), and if the making available to the public occurred prior to the international filing date for the purposes of the international search report and prior to the earliest validly claimed priority date for the purposes of the written opinion of the International Searching Authority. For further details, see PCT Rules 33, 43 bis.1(b) and 64.
A written disclosure, that is, a document, is regarded as made available to the public if, at the relevant date, it was possible for members of the public to gain access to the content of the document and to acquire possession of the content of the document, and there was no bar of confidentiality restricting the use or dissemination of knowledge gained thereby. Where the document only provides the month or the year, but not the specific date, which the document was made available to the public, the content of the document is presumed to have been made available to the public on the last day of that month or that year, respectively, unless evidence is provided to prove otherwise.
Prior art disclosure on the Internet or on an online database is considered in the same manner as other forms of written disclosure. Information disclosed on the Internet or an online database is considered to be publicly available as of the date the disclosure was publicly posted. Where the examiner obtains an electronic document that establishes the publication date for the Internet disclosure, he/she should make a printout of this document, which must mention both the URL of the relevant Internet disclosure and the date of publication of that relevant Internet disclosure. The examiner must then cite this printout in the international search report as an “L” document and cite the relevant Internet disclosure according to the relevance of its content (“X”, “Y”, “A”) and according to the date as established (“X”, “Y”, “A”, “P,X”, “P,Y”, “P,A”, “E”, etc.). See MPEP § 1844.01, subsection VII. Where the examiner is unable to establish the publication date of the relevant Internet disclosure and it is relevant to the inventive step and/or novelty of the claimed invention, he/she should cite it in the international search report as a category “L” document for those
claims which it would have affected if it were published in time, giving the date the document was printed out as its publication date.
Examiners are also encouraged to cite prior art that might be of assistance in determining whether other requirements are fulfilled, such as sufficient support of the claims by the description and industrial applicability. The examiner should also note any documents that may be of importance for other reasons, such as documents putting doubt upon the validity of any priority claimed, documents contributing to a better or more correct understanding of the claimed invention, and documents illustrating the technological background, but the examiner should not spend time in searching for these documents, nor the consideration of such matters unless there is a special reason for doing so in a particular case. Documents which do not qualify as prior art because they post-date the claimed invention may nevertheless be cited to show a universal fact, such as characteristics or properties of a material, or a specific scientific fact, or to show the level of ordinary skill in the art. Furthermore, examiners must recognize that different designated Offices may have different definitions of what is the effective date of prior art. Accordingly, when performing the search, examiners should be mindful to pick out and select for citation, where appropriate, prior art which may be relevant in offices other than the one in which they are situated. However, the examiner need not expand the search beyond the standard search parameters to discover such art. Where the search has been performed and such potentially relevant prior art has been identified, examiners are encouraged to, for example, cite all relevant art published prior to the international filing date even if that art and the international application under consideration have common applicants and/or inventors. As such, if the examiner is basing the international search on a prior search performed in a prior related U.S. national application, it may be necessary for the examiner to review the prior art published within the time period of the one year preceding the filing date of the prior U.S. application for any written disclosures based on the applicant’s own work that may have been published within that time period. Any such documents are considered prior art in an international application and are cited on the international search report even though they
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do not meet the definition of prior art in the prior U.S. national application. A further objective of the international search is to avoid, or at least minimize, additional searching at the national stage.
The international search is made on the basis of the claims, with due regard to the description and the drawings (if any) contained in the international application (PCT Article 15(3)) and should cover the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended (PCT Rule 33.3(b)).
The relevant date for the purpose of considering prior art for the purposes of establishment of the written opinion of the International Searching Authority is defined in PCT Rule 64.1(b) as the international filing date or, where the international application contains a claim for priority, the date provided in PCT Rule 64.1(b)(ii) - (iii). See MPEP § 1878.01(a).
In establishment of the written opinion, when determining whether there is inventive step, account should be taken of what the applicant acknowledges in his/her description as known. Such admissions should be regarded as correct and used when considering whether the claimed invention lacks novelty and/or inventive step where appropriate.
A nonwritten disclosure such as an oral disclosure, use, exhibition or other means of disclosure is not relevant prior art for the purposes of the international search unless it is substantiated by a written disclosure made available to the public prior to the international filing date and it is the written disclosure which constitutes the prior art. However, if the date on which the written disclosure was made available to the public was on or after the filing date of the international application under consideration, the search report should separately mention that fact and the date on which the written disclosure was available, even though such a written disclosure does not meet the definition of relevant prior art in the international phase, so long as the non-written disclosure was made available to the public on a date prior to the international filing date since such a non-written disclosure may be considered to be prior
art under national law in the national phase. See PCT Rules 33.1(b), 64.2 and 70.9.
DOCUMENTS AND DATABASES SEARCHED BY THE INTERNATIONAL SEARCHING AUTHORITY
The International SearchingAuthority must endeavor to discover as much of the relevant prior art as its facilities permit (PCT Article 15(4)), and, in any case, must consult the so-called “minimum documentation” (PCT Rule 34).
Even though completeness should be the ultimate goal of the international search, this goal may at times be difficult to obtain, because of such factors as text search limitations and the inevitable imperfections of any classification system and its implementation. The examiner therefore consults the appropriate minimum documentation and the most relevant search resources for the technology, including databases listed in the U.S. Search Guidance index (available through the USPTO Intranet website), and organizes the search effort and utilizes the search time in such a manner as to reduce to a minimum the possibility of failing to discover existing highly relevant prior art, such as art that fully anticipates any claims.
When conducting the search, it may be necessary to make use of the Internet as a search tool. Where the international application has not yet been published at the time of the search, there exists the danger that search terms used in the search on non-secure Internet search engines or in databases available on the Internet may be observed by third parties. Accordingly, all websites must be treated as non-secure unless the Office has a commercial arrangement with a service provider in order to maintain confidentiality and a secure connection to that website. Consequently, extreme caution must be exercised when using the Internet as a search tool where (as in most cases) the international application has not yet been published. Where a relevant database is accessible via the Internet, but an alternative secure connection to the same database is accessible, the secure connection must be used. Where no secure connection to a database on the Internet is available, the search may be conducted on the Internet using generalized search terms
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representing combinations of features that relate to the claimed invention, which have already been shown to exist in the state of the art.
1843.02 Certain Subject Matter Need Not Be Searched [R-08.2012]
PCT Rule 39.
Subject Matter under Article 17(2)(a)(i)
39.1. Definition
No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following:
(i) scientific and mathematical theories,
(ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
(iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,
(iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
(v) mere presentations of information,
(vi) computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs.
PCT Rule 66
Procedure Before the International Preliminary Examining Authority
66.1 Basis of the International Preliminary Examination
*****
(e) Claims relating to inventions in respect of which no international search report has been established need not be the subject of international preliminary examination.
*****
PCT Rule 67
Subject Matter Under Article 34(4)(a)(i)
67.1. Definition
No International Preliminary Examining Authority shall be required to carry out an international preliminary examination on an international application if, and to the extent to which, its subject matter is any of the following:
(i) scientific and mathematical theories,
(ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
(iii) schemes, rules, or methods of doing business, performing purely mental acts, or playing games,
(iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
(v) mere presentations of information,
(vi) computer programs to the extent that the International Preliminary Examining Authority is not equipped to carry out an international preliminary examination concerning such programs.
The USPTO has declared that it will search and examine, in international applications, all subject matter searched and examined in U.S. national applications. However under PCT Rules 39, 43 bis.1(b), 66.1(e) and 67.1, no International Searching Authority is required to perform an international search or to establish a written opinion concerning novelty, inventive step and industrial applicability where the international application relates to any of the following subject matters:
(A) Scientific and mathematical theories;
(B) Plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes;
(C) Schemes, rules or methods of doing business, performing purely mental acts or playing games;
(D) Methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods;
(E) Mere presentation of information; and
(F) Computer programs to the extent the said Authority is not equipped to search prior art concerning such programs.
See PCT Rule 39. In addition, the examiner is not required to search the international application, to the extent that a meaningful search cannot be carried out, in certain cases where a nucleotide and/or amino acid sequence listing is not furnished in accordance with the prescribed standard or in a computer readable form. See Administrative Instructions Section 513(c). However, the U.S. Patent and Trademark Office has declared that it will search and examine all subject matter searched and examined in U.S. national applications.
The applicant considering the filing of an international application may be well advised not to
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file one if the subject matter of the application falls into one of the above mentioned areas. If he or she still does file, the International Searching Authority may declare that it will not establish an international search report. Accordingly, applicant should take into consideration which International Searching Authority (e.g., European Patent Office) he or she selects to conduct the international search. It is to be noted, nevertheless, that the lack of the international search report in such case will not have, in itself, any influence on the validity of the international application and the latter’s processing will continue, including its communication to the designated Offices.
1843.03 No Search Required if Claims Are Unclear [R-08.2012]
If the International Searching Authority considers that the description, the claims, or the drawings fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out, it may declare that it will not establish a search report (PCT Article 17(2)(a)(ii)). Further, for applications having an international filing date on or after January 1, 2004, if the International Searching Authority considers that the description, claims, or drawings are so unclear, or the claims are so inadequately supported by the description that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness), or industrial applicability of the claimed invention, the Authority shall not go into these issues in its written opinion with regard to the claims so affected (PCT Rules 43 bis.1(b) and 66.1(e)). For example, the examiner may determine that a meaningful search cannot be carried out or that no meaningful opinion can be formed in certain cases where a nucleotide and/or amino acid sequence listing is not furnished in accordance with the prescribed standard or in a computer readable form. See Administrative Instructions Section 513(c) and MPEP § 1848. Further, the examiner may determine that a meaningful search cannot be carried out or that no
meaningful opinion can be formed for improper multiple dependent claims (see PCT Rule 6.4(a)).
1843.04 Procedure for Claims Not Required To Be Searched and for Claims That Are Unclear [R-07.2015]
The International Searching Authority (ISA) may declare that a meaningful search cannot be carried out with respect to some of the claims only and/or that only certain claims relate to subject matter which the ISA is not required to and has decided not to search. Where only some of the claims will not be searched, the ISA searches the remaining claims of the international application. Any unsearched claims and the reasons why those claims have not been searched are indicated in Box No. II of the international search report (Form PCT/ISA/210).
If the examiner determines that none of the claims will be searched, the examiner declares that no search report will be established using Form PCT/ISA/203. The lack of the international search report will not, in itself, have any influence on the validity of the international application and the latter’s processing will continue, including its communication to the designated Offices.
If the international application cites a document that is not published or otherwise not accessible to the ISA and the document appears essential to a correct understanding of the invention to the extent that a meaningful international search would not be possible without knowledge of the content of that document, the ISA may postpone the search and request that the applicant first provide first a copy of the document, if possible to do so within the time limits for the preparation of the international search report of the ISA under the PCT. If no copy of the document is received, the ISA should first attempt to carry out the international search and then, if necessary, indicate that no meaningful search could be carried out in total or that the search needed to be restricted.
The ISA establishes the written opinion of the International Searching Authority (Form PCT/ISA/237) at the same time it establishes either the international search report (Form PCT/ISA/210) or the declaration of non-establishment of the
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international search report (Form PCT/ISA/203). However, if the ISA determines that for any or all claims (A) the international application relates to subject matter for which it is not required to establish a written opinion concerning novelty, inventive step and industrial applicability, (B) the description, claims, or drawings, are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the novelty, inventive step, or industrial applicability, of the claimed invention, or (C) the subject matter of the claims relates to inventions for which no international search report will be established, the ISA indicates, in Box No. III of the written opinion of the International Searching Authority (Form PCT/ISA/237), that no opinion with regard to novelty, inventive step or industrial applicability will be established with regard to those claims. In most instances it will be sufficient for the examiner to (A) indicate that no international search report has been established for the relevant claims as the reason for not establishing an opinion on novelty, inventive step, and industrial applicability and (B) refer to the international search report or declaration of non-establishment of the international search report for further details.
1843.05 Time Limit for Establishing the International Search Report and the Written Opinion of the International Searching Authority [R-07.2015]
Publication of the international application occurs at 18 months from the earliest priority date or, where there is no priority date, 18 months from the international filing date. The international search report is subject to international publication. For international applications filed before July 1, 2014, the written opinion of the International Searching Authority (ISA) is not published but is made available to the public after the expiration of 30 months from the priority date. See former PCT Rule 44 ter. For international applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by the applicant will be made available to the public in their original language as of the publication date. The Office goal is to have the search report and written opinion mailed in sufficient time to reach the International Bureau by the end of 16 months from the priority
date or 9 months from the filing date if no priority claim is made. This is necessary since the technical preparations for publication are completed by 17.5 months from the earliest priority date. In view of the treaty mandated publication and the time needed for technical preparation, the Office sets time periods for completion of the search report and the written opinion which will ensure sufficient time to complete internal processing and review and achieve receipt of the search report and the written opinion at the International Bureau by the 16th month from the priority date. See PCT Rule 42.1 and 43 bis.1(a).
1844 The International Search Report [R-07.2015]
PCT Article 18.
The International Search Report
(1) The international search report shall be established within the prescribed time limit and in the prescribed form.
(2) The international search report shall, as soon as it has been established, be transmitted by the International Searching Authority to the applicant and the International Bureau.
(3) The international search report or the declaration referred to in Article 17(2)(a) shall be translated as provided in the Regulations. The translations shall be prepared by or under the responsibility of the International Bureau.
The results of the international search are recorded in the international search report (Form PCT/ISA/210), which, together with the written opinion of the International Searching Authority (Form PCT/ISA/237) is transmitted with Form PCT/ISA/220. The search report will be published by the International Bureau and, together with the written opinion of the International Searching Authority, will serve as a basis for examination of the international application by the designated Offices and the International Preliminary Examining Authority.
The search report is only for the purpose of identifying prior art and should not contain any expressions of opinion, reasoning, argument or explanation as to any cited prior art. Such comments should be included in the written opinion of the International Searching Authority.
The printed international search report form (Form PCT/ISA/210) to be transmitted to the applicant and
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to the International Bureau contains two main sheets (“first sheet” and “second sheet”) to be used for all searches. These two main sheets are intended for recording the important features of the search such as the fields searched and for citing documents revealed by the search. The printed international search report form also contains five optional continuation sheets for use where necessary. They are the: “continuation of first sheet (1),” “continuation of first sheet (2),” “continuation of first sheet (3),” “continuation of second sheet” and “patent family annex,” respectively. The patent family annex sheet is not currently used by the United States International SearchingAuthority since patent family information is not readily available to the examiner. The “continuation of first sheet (1)” is to be used only when the international application includes a nucleotide and/or amino acid sequence and indicates the basis on which the international search was carried out, since the relevant listings may be filed or furnished at different times and in different forms. The “continuation of first sheet (2)” is used where an indication is made on the first sheet that claims were found unsearchable (item 2) and/or unity of invention is lacking (item 3). The relevant indications must then be made on that continuation sheet. The “continuation of first sheet (3)” is to contain the text of the abstract where an abstract or an amended abstract has been established by the International Searching Authority (item 5) and an indication to that effect is made on the first sheet. The “continuation of second sheet” is to be used where the space on the second sheet is insufficient for the citation of documents. The form also includes an “extra sheet” which may be used whenever additional space is required to complete information from the other sheets.
It is to be noted that only the “second sheet”, the “continuation of second sheet” (if any), the “continuation of first sheet (2)” (if any), and the “extra sheet” (if any), as well as any separate sheet with information on members of patent families, will be the subject of international publication, as the “first sheet,” “continuation of first sheet (1)” (if any), and the “continuation of first sheet (3)” (if any) contain only information which will already appear on the front page of the publication of the international application (PCT Rule 48.2(b)).
CONTENTS OF THE INTERNATIONAL SEARCH REPORT
The international search report (PCT Rule 43) contains, among other things, the citations of the documents considered to be relevant (PCT Rule 43.5 and Administrative Instructions Section 503), the classification of the subject matter of the invention (PCT Rule 43.3 and Administrative Instructions Section 504) and an indication of the fields searched (PCT Rule 43.6). Citations of particular relevance must be specially indicated (Administrative Instructions Section 505); citations of certain special categories of documents are also indicated (Administrative Instructions Section 507); citations which are not relevant to all the claims must be cited in relation to the claim or claims to which they are relevant (Administrative Instructions Section 508); if only certain passages of the cited document are particularly relevant, they must be identified, for example, by indicating the page, the column or the lines, where the passage appears (PCT Rule 43.5(e).
1844.01 Preparing the International Search Report (Form PCT/ISA/210) [R-07.2015]
The first sheet of the international search report indicates the total number of sheets in the report. The correct number is entered, not including sheets that have not been filled-in (blank sheets). The number of sheets only includes the number of sheets from Form PCT/ISA/210.
I. BASIS OF THE REPORT
A. Box 1a – Language
In most circumstances, the first box under box 1a is checked indicating that the search is carried out on the basis of the international application in the language in which it was filed. Alternatively, the second box under box 1a is checked and an indication of English made when the search is on the basis of a translation of the international application into English.
B. Box 1b – Rectification of an Obvious Mistake
Where the application includes the rectification of an obvious mistake authorized by or notified to the
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International Searching Authority under PCT Rule 91, box 1b of the first sheet is checked. The authorization or notification will generally be indicated on a Notification of Decision Concerning Request for Rectification (Form PCT/RO/109 or PCT/ISA/217) (see MPEP § 1836).
C. Box 1c And Box No. I – Nucleotide and/or Amino Acid Sequence Listings
Where the application discloses any nucleotide and/or amino acid sequence, box 1c of the first sheet is checked and Box No. I (appearing on “continuation of first sheet (1)”) indicates in item 1.a. the sequence listing format (that is, whether in paper/image or electronic form (text)) and in item 1.b. the time of filing/furnishing (that is whether contained in the international application as filed, filed together with the international application in electronic form (text) and/or furnished subsequently to the International Searching Authority (ISA) for purposes of search).
If more than one version or copy of the sequence listing is filed, item 2. indicates whether the applicant has provided the required statement indicating that the information in the subsequent or additional copies is identical to that in the application as filed or does not go beyond the application as filed, as appropriate. Item 3. indicates any additional comments.
II. BOX 2 AND BOX NO. II – LIMITATION OF THE SUBJECT OF THE INTERNATIONAL SEARCH
The report indicates whether any claims are unsearchable for any of the reasons indicated below. If any such limitations of the subject of the search are applied, the claims in respect of which a search has not been carried out are identified and the reasons for this are indicated. The three categories where such limitations may arise are:
(A) claims drawn to subject matter not required to be searched by the International Searching Authority (see MPEP § 1843.02);
(B) claims in respect of which a meaningful search cannot be carried out (see MPEP § 1843.03); and
(C) multiple dependent claims which do not comply with PCT Rule 6.4(a) (see MPEP § 1843.03).
Where claims are not searched for any of the reasons identified in (A)-(C) above, box 2 of the first sheet of the international search report is checked. In addition, Box No. II of the international search report (on “continuation of first sheet (2)”) is completed, giving the details.
III. BOX 3 AND BOX NO. III – LACK OF UNITY OF THE CLAIMED INVENTION
The report indicates whether the search is limited due to a lack of unity of invention. If unity is lacking, the claims in respect of which a search has not been carried out are identified and the reasons for this are indicated.
Where lack of unity has been found (see MPEP § 1850), box 3 of the first sheet of the international search report is checked. In addition, Box No. III of the international search report (on “continuation of first sheet (2)”) is completed, irrespective of whether an invitation to pay additional search fees has issued. The search report indicates the separate inventions claimed in the application, whether additional search fees were requested and paid, and which claims were searched. It also indicates whether any additional search fees were accompanied by a protest.
An explanation of the separate inventions is entered in the appropriate area in Box No. III (see MPEP § 1850).
If applicant paid all the required additional search fees for additional inventions, the examiner should check item 1 under Box No. III indicating that the international search report covers all searchable claims.
If the examiner did not invite payment of additional search fees, item 2 should be checked under Box. No. III and the international search report will cover all searchable claims.
If, in response to a lack of unity of invention, applicant paid only some of the required additional search fees for additional inventions, the examiner should check item 3 under Box No. III and indicate
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the claims for which fees were paid and therefore, covered by the international search.
If the international search report is based on the invention first mentioned in the claims, the examiner should check item 4 under Box No. III and indicate the claims limited to the first mentioned invention that are covered by the international search report.
Regarding the three boxes indicating a Remark on Protest, the first box would be checked if the payment of any additional search fees is accompanied by a protest. The second box would not be checked since the ISA/US does not require a protest fee. The third box would be checked if the payment of any additional search fees is not accompanied by a protest. See MPEP § 1850, subsection X., for a discussion of protest procedure.
IV. TITLE, ABSTRACT, AND FIGURE FOR PUBLICATION
The international application must contain an abstract and a title. The examiner considers the abstract (together with the title of the invention and the figure of the drawings to be published with the abstract) in relation to the requirements of the Regulations under the PCT. The examiner indicates approval or amendment of the title of the invention, the text of the abstract, and the selection of the figure that is to accompany the abstract in items 4 to 6 of the first sheet of the international search report.
A. Box 4 - Title
PCT Rule 4
The Request (Contents)
*****
4.3 Title of the Invention
The title of the invention shall be short (preferably from two to seven words when in English or translated into English) and precise.
*****
PCT Rule 37
Missing or Defective Title
37.1 Lack of Title
If the international application does not contain a title and the receiving Office has notified the International Searching
Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.
37.2 Establishment of Title
If the international application does not contain a title and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish a title, or if the said Authority finds that the title does not comply with Rule 4.3, it shall itself establish a title. Such title shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, in the language of that translation.
The title must be short and precise (preferably from two to seven words in English or when translated into English). Furthermore, the title should clearly and concisely state the technical designation of the invention. In this regard the following should be taken into account:
(A) personal names or trade names or similar terms of non-technical nature which do not serve to identify the invention should not be used;
(B) the abbreviation “etc.,” being vague, should not be used and should be replaced by an indication of what it is intended to cover;
(C) titles such as “Method,” “Apparatus,” “Chemical Compounds” alone or similar vague titles do not clearly state the technical designation of the invention and should not be used.
In general, the examiner is required to draft a new title if the applicant failed to provide a title or if the title is deficient because it does not comply with the requirements of PCT Rule 4.3. The examiner is not required to gain the applicant’s approval of the new title established by the examiner.
On the first sheet of the international search report, the examiner indicates the title text is approved (the first box under Box 4) or has been established (the second box under Box 4).
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B. Box 5 and Box 6 - Abstract and Figure for Publication
PCT Rule 8
The Abstract
8.1 Contents and Form of the Abstract
(a) The abstract shall consist of the following:
(i) a summary of the disclosure as contained in the description, the claims, and any drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention;
(ii) where applicable, the chemical formula which, among all the formulae contained in the international application, best characterizes the invention.
(b) The abstract shall be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English).
(c) The abstract shall not contain statements on the alleged merits or value of the claimed invention or on its speculative application.
(d) Each main technical feature mentioned in the abstract and illustrated by a drawing in the international application shall be followed by a reference sign, placed between parentheses.
8.2 Figure
(a) If the applicant fails to make the indication referred to in Rule 3.3(a)(iii), or if the International Searching Authority finds that a figure or figures other than that figure or those figures suggested by the applicant would, among all the figures of all the drawings, better characterize the invention, it shall, subject to paragraph (b), indicate the figure or figures which should accompany the abstract when the latter is published by the International Bureau. In such case, the abstract shall be accompanied by the figure or figures so indicated by the International Searching Authority. Otherwise, the abstract shall, subject to paragraph (b), be accompanied by the figure or figures suggested by the applicant.
(b) If the International Searching Authority finds that none of the figures of the drawings is useful for the understanding of the abstract, it shall notify the International Bureau accordingly. In such case, the abstract, when published by the International Bureau, shall not be accompanied by any figure of the drawings even where the applicant has made a suggestion under Rule 3.3(a)(iii).
*****
PCT Rule 38
Missing or Defective Abstract
38.1 Lack of Abstract
If the international application does not contain an abstract and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.
38.2 Establishment of Abstract
If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall itself establish an abstract. Such abstract shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, in the language of that translation.
38.3 Modification of Abstract
The applicant may, until the expiration of one month from the date of mailing of the international search report, submit to the International Searching Authority:
(i) proposed modifications of the abstract; or
(ii) where the abstract has been established by the Authority, proposed modifications of, or comments on, that abstract, or both modifications and comments;
and the Authority shall decide whether to modify the abstract accordingly. Where the Authority modifies the abstract, it shall notify the modification to the International Bureau.
In general, the examiner will have to establish a new abstract if the applicant did not provide an abstract or if the abstract does not comply with PCT Rule 8. In determining the definitive contents of the abstract, or establishing the text of the abstract anew where it is missing, the examiner should take into consideration the fact that the abstract is merely for use as technical information and, in particular, must not be used for the purpose of interpreting the scope of the protection sought. The abstract constitutes an efficient instrument for the purpose of assisting the scientist, engineer, or researcher in searching in the particular technical field and should in particular make it possible to assess whether there is need for consulting the international application itself. WIPO guidelines for the preparation of abstracts are found in WIPO Standard ST.12/A, which is available from
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W I P O ’ s w e b s i t e (www.wipo.int/standards/en/part_03_standards.html).
In considering the adequacy of the applicant’s abstract and figure, because of practical difficulties experienced by the International Bureau with publication, examiners should have particular regard to the following:
(A) It is important that the abstract be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English). Within this constraint the abstract must provide a summary of the technical information about the disclosure as contained in the description, claims, and drawings. It should be drafted so as to serve as an efficient scanning tool for searching purposes in the art.
(B) Phrases should not be used which can be implied, such as “This disclosure concerns,” “The invention defined by this disclosure,” and “This invention relates to.”
(C) Only one figure should normally be selected unless this would lead to inadequate disclosure. The inclusion of more than two figures should not be considered except in extreme circumstances where necessary information cannot be otherwise conveyed. Where none of the figures is considered useful for the understanding of the invention (even where the applicant has suggested a figure), no figure should be selected.
(D) Abstracts may be incomprehensible if the numerals of the selected figure(s) do not correspond with those in the abstract. Thus, this should be avoided.
(E) An absence of reference numbers on the figures must be accepted as the examiner has no mechanism to initiate their addition.
(F) Each main technical feature mentioned in the abstract and illustrated by a drawing should be followed by a reference sign, placed between parentheses.
In box 5 of the first sheet of the international search report, the examiner indicates approval of the text of the abstract by checking the first box. When the text of the abstract is missing or defective the second box is checked and the new abstract is established by entering the text of the new abstract. The defect
or reason for establishing the new abstract should be indicated, e.g., too long or missing.
The applicant may submit modifications of the abstract until the expiration of one month from the date of mailing of the search report. If the examiner establishes a new abstract, the applicant may propose modifications of, and/or comment on, the new abstract after it has been established in the international search report. The applicant is allowed one month from the date of mailing of the international search report to respond to the examiner’s abstract in the report. If the applicant does comment, the examiner takes the applicant’s comments into consideration. It is not necessary for the examiner to reply to the applicant’s comments even if adverse. If the examiner decides to amend the abstract established in the international search report based on the proposed modifications and/or comment, the International Bureau and the applicant are notified using Form PCT/ISA/205. See PCT Rule 38.3 and Administrative Instructions Section 515.
When indicating the figure to be published, the applicant’s suggestion is found in Box No. IX of the request (Form PCT/RO/101). Where none of the figures is considered useful for the understanding of the abstract, this is indicated at the appropriate box (box 6b of the first sheet of Form PCT/ISA/210). When no drawings accompany the application, none of the boxes are checked. Otherwise, box 6a is checked and the reason for selecting the figure to be published is indicated, i.e., as suggested by the applicant, as selected by the examiner because either the applicant failed to suggest a figure in Box No. IX of Form PCT/RO/101 or the figure better characterizes the invention. It is not recommended to select more than one figure; however, if it is necessary to do so then the wording of the form should be changed to reflect the change from single case to plural case. For example, “figure” is changed to “figures”, “is” to “are” and “ No.” to “Nos.”.
V. BOX A - CLASSIFICATION OF SUBJECT MATTER
The International Searching Authority assigns obligatory International Patent Classification (IPC) symbols in accordance with the rules as set forth in the Guide to the IPC and in the IPC itself (using the
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edition of the IPC in force at the time), whereby the technical subject of the invention of the application is identified. The International Searching Authority then records the International Patent Classification and the patent classification as required by the ISA/US in Box A of the second sheet of the international search report. The IPC Guide can be accessed via the Patent Examiner’s Toolkit under Classification Tools or via WIPO’s website (www.wipo.int/classifications/ipc/en/).
VI. BOX B - RECORDING THE SEARCH
The examiner records the search history in Box B of the second sheet of the international search report. In recording the search history of the international search, the examiner lists the classification identification of the fields searched. Examiners are also encouraged to record the search history in sufficient detail to allow examiners of national stage applications to fully interpret and rely upon the international search. This includes recording the details of any patent and non-patent literature searches as well as searches conducted on the Internet.
Where the international search report is entirely or partly based on a previous search made for an application relating to a similar subject, the previous application number and the relevant search history consulted for this previous search is, where appropriate, identified as having been consulted for the international application in question, except in those instances where the details of an earlier search cannot be ascertained, or whenever it is impractical to record the full details of the earlier search. In the later case, a summary of the earlier search should be included. Where the previous application has been published, this information is recorded in the international search report.
The USPTO in its capacity as the International SearchingAuthority makes a separate detailed search history of record in the applications. These search histories are mailed to applicants with the international search report.
VII. BOX C - DOCUMENTS CONSIDERED TO BE RELEVANT
The completion of Box C of the second sheet of the international search report can be considered as having three components. These are: (A) the citation category; (B) the citation of the document together with identification of the relevant passages where appropriate; and (C) the identification of relevant claim numbers. The citation of multiple documents showing the same inventive elements should be kept to a minimum. Further, when citing a document, the examiner should clearly indicate which portions of the document are most relevant.
A. Citation Category
Documents which are cited are given a category indication by way of an alphabetic character, details of which are given in PCT Administrative Instructions Sections 505 and 507 and below. The categories for citations are also explained under the “documents considered to be relevant” section of the report. A category should always be indicated for each document cited. Where needed, combinations of different categories are possible.
1. Particularly Relevant Documents
Where a document cited in the international search report is particularly relevant, it is indicated by the letters “X” or “Y”. Category “X” is applicable where a document is such that when taken alone, a claimed invention cannot be considered novel or where a document is such that when considered in light of common general knowledge, a claimed invention cannot be considered to involve an inventive step. Category “Y” is applicable where a document is such that a claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other documents of the same category, such combination being obvious to a person skilled in the art.
2. Documents Defining the State of the Art and Not Prejudicing Novelty or Inventive Step
Where a document cited in the international search report represents state of the art and is not prejudicial
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to the novelty or inventive step of the claimed invention, it is indicated by the letter “A”.
3. Documents Which Refer to a Non-Written Disclosure
Where a document cited in the international search report refers to a non-written disclosure referred to in PCT Rule 33.1(b), the letter “O” is entered. Examples of such disclosures include conference proceedings. The document category “O” is always accompanied by a symbol indicating the relevance of the document, for example: “O,X”, “O,Y”, or “O,A”.
4. Intermediate Documents
Documents published on dates falling between the date of filing of the application being searched and the date of priority claimed, or the earliest priority if there is more than one (see PCT Article 2(xi)(b)), are denoted by the letter “P”. The letter “P” is also given to a document published on the very day of the earliest date of priority of the patent application under consideration. The document category “P” is always accompanied by a symbol indicating the relevance of the document, for example: “P,X”, “P,Y”, or “P,A”.
5. Documents Relating to the Theory or Principle Underlying the Invention
Where any document cited in the search report is a document that may be useful for a better understanding of the principle or theory underlying the invention, or is cited to show that the reasoning or the facts underlying the invention are incorrect, it is indicated by the letter “T”.
6. Potentially Conflicting Patent Documents
Any patent document bearing a filing or priority date earlier than the filing date of the application searched (not the priority date) but published on or later than that date and the content of which would constitute prior art relevant to novelty (PCT Article 33(2)) is indicated by the letter “E” (see PCT Administrative Instructions Section 507(b) and PCT Rule 33.1(c)).
7. Documents Cited in the Application
When the search report cites documents already mentioned in the description of the patent application for which the search is carried out, such documents may be identified on the search report by the wording “cited in the application” under the cited document.
8. Documents Cited for Other Reasons
Where in the search report any document is cited for reasons other than those referred to in the foregoing paragraphs (in particular as evidence), for example:
(A) a document which may throw doubt on a priority claim (Article 4(C)(4) of the Paris Convention), or
(B) a document cited to establish the publication date of another citation,
the document is indicated by the letter “L”. Brief reasons for citing the document should be given. Documents of this type need not be indicated as relevant to any particular claims. However, where the evidence that they provide relates only to certain claims (for example the “L” document cited in the search report may invalidate the priority in respect of certain claims and not others), then the citation of the document should refer to those claims.
B. Citation of the Documents
Identification of any document should be made according to WIPO Standard ST.14 (see PCT Administrative Instructions Section 503). For “A” citations it is not necessary to indicate the relevant claims unless there is good reason to do so; for example where there is a clear lack of unity a priori (see MPEP § 1850) and the citation is relevant only to a particular claim or group of claims or when the claims meet the criteria of novelty, inventive step, and industrial applicability under PCT Article 33(2) to (4) and the “A” category citations represent the most relevant prior art. The box on the second sheet of Form PCT/ISA/210 entitled “Further documents listed are in the continuation of Box C” is checked if a continuation sheet is used to list additional documents that will not fit in the space provided in Box C.
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C. Relationship Between Documents and Claims
Each citation should include a reference to the claims to which it relates (see PCT Administrative Instructions Section 508). If necessary, various relevant parts of the document cited should each be related to the claims in like manner (with the exception of “L” documents and “A” documents). It is also possible for the same document to represent a different category with respect to different claims. For example:
WO1990/001867 A (WIDEGREN LARS (SE)) 8 March 1990 (08-03-1990), figures 1 and 2
X 1
Y 2-5
A 6-10
The above example means that Figures 1 and 2 of the cited document disclose subject matter which prejudices the novelty or inventive step of claim 1, which prejudices the inventive step of claims 2-5 when combined with another document cited in the search report, and which represents non-prejudicial state of the art for the subject matter of claims 6-10.
VIII. FINALIZATION OF THE SEARCH REPORT
The identification of the International Searching Authority which established the international search report and the date of actual completion, that is, the date on which the report was drawn up are indicated at the bottom of the second sheet of the international search report. The international search report will be accompanied by a transmittal letter (Form PCT/ISA/220) indicating the date the search report was mailed to the applicant. See MPEP § 1845.02.
Pursuant to PCT Rule 43.8, the international search report must indicate the name of the officer of the International Searching Authority responsible for the report, i.e., the “authorized officer.” An “authorized officer” is the person who actually performed the search work and prepared the search report, or another person who was responsible for supervising the search. See PCT Administrative Instructions Section 514. Thus, an examiner need not have signatory authority in order to be named as an authorized officer on the search report. However, the “file copy” of the search report must be signed by an examiner having at least partial signatory authority.
The international search report should be mailed within 3 months of receipt of the search copy or within 9 months from the priority date, whichever is later.
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1845 Written Opinion of the International Searching Authority [R-07.2015]
PCT Rule 43 bis.
Written Opinion of the International Searching Authority
43 bis .1. Written Opinion
(a) Subject to Rule 69.1(b- bis) , the International Searching Authority shall, at the same time as it establishes the international search report or the declaration referred to in Article 17(2)(a), establish a written opinion as to:
(i) whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable;
(ii) whether the international application complies with the requirements of the Treaty and these Regulations in so far as checked by the International Searching Authority.
The written opinion shall also be accompanied by such other observations as these Regulations provide for.
(b) For the purposes of establishing the written opinion, Articles 33(2) to (6) and 35(2) and (3) and Rules 43.4, 43.6 bis , 64, 65, 66.1(e), 66.7, 67, 70.2(b) and (d), 70.3, 70.4(ii), 70.5(a), 70.6 to 70.10, 70.12, 70.14 and 70.15(a) shall apply mutatis mutandis.
(c) The written opinion shall contain a notification informing the applicant that, if a demand for international preliminary examination is made, the written opinion shall, under Rule 66.1 bis(a) but subject to Rule 66.1 bis(b), be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a), in which case the applicant is invited to submit to that Authority, before the expiration of the time limit under Rule 54 bis.1(a), a written reply together, where appropriate, with
amendments.
The examiner is required, in most instances, to establish a written opinion on novelty, inventive step, and industrial applicability of the claimed invention at the same time he/she establishes the international search report. The international search report and written opinion together serve to inform the International Preliminary Examining Authority of the documents and arguments necessary to complete the relevant assessments if international preliminary examination is demanded, and to inform the designated Offices of information that may be relevant to examination in the national phase. (The written opinion is transmitted to the designated offices in the form of an international preliminary report on patentability if no international preliminary examination report is established under Chapter II of the PCT). A written opinion of the International
Searching Authority is not required in the limited instance where a demand for international preliminary examination and required fees (PCT Rule 69.1(a)) have been filed with the United States International Preliminary Examining Authority and the examiner considers all the conditions of PCT Article 34(2)(c)(i) to (iii) to be fulfilled. In this limited instance, a positive international preliminary examination report may be issued. See PCT Rule 69.1(b- bis)).
The applicant must be notified in the written opinion of the defects found in the application. The examiner is further required to fully state the reasons for his/her opinion (PCT Rules 66.1 bis and 66.2(b)) and invite a written reply, with amendments where appropriate (PCT Rule 66.2(c)).
1845.01 Preparing the Written Opinion of the International Searching Authority (Form PCT/ISA/237) [R-07.2015]
The classifications in the header on the cover sheet of Form PCT/ISA/237 are to be consistent with the classifications of subject matter in Box A on the second sheet of the International Search Report (Form PCT/ISA/210).
The Boxes marked on the cover sheet represent a summary of the indications detailed on the subsequent relevant sheets of Form PCT/ISA/237.
I. BOX NO. I. — BASIS OF OPINION
When completing Box No. I, item 1, of Form PCT/ISA/237, the examiner must indicate whether or not the opinion has been established on the basis of the international application in the language in which it was filed. If a translation was furnished for the purpose of the search, this must be indicated.
Box No. I, item 2 of Form PCT/ISA/237 is to be marked when the opinion is established taking into account the rectification of an obvious mistake under PCT Rule 91.
With respect to Box No. I, item 3 of Form PCT/ISA/237, if the opinion has been based on a nucleotide and/or amino acid sequence disclosed
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and necessary to the claimed invention, the examiner must indicate the format of the material (i.e., on paper/image or in electronic form (text)) and the time of filing/furnishing (i.e., contained in the international application as filed, filed together with the international application in electronic form (text) and/or furnished subsequently to the ISA for the purposes of the search). If more than one version or copy of the sequence listing is filed, the examiner must indicate in item 4 whether the applicant has provided the required statement indicating that the information in the subsequent or additional copies are identical to that in the application as filed or does not go beyond the application as filed, as appropriate. Item 5 is available for providing any additional comments.
II. BOX NO. II. — PRIORITY
Box No. II of Form PCT/ISA/237 is to inform applicant of the status of a request for priority. Where one or more citations of the international search report were published after the earliest priority date, the validity of that earliest priority date requires checking. Where the priority document is one which is in the records of the ISA, it should be obtained from those records. If a copy of the priority document is not available before preparation of the written opinion of the ISA because it has not yet been provided by the applicant, and if that earlier application was not filed with that Authority in its capacity as a national Office or the priority document is not available to that Authority from a digital library in accordance with the Administrative Instructions, the written opinion of the ISA may be established as if the priority had been validly claimed.
If the examiner needs a copy of a foreign priority document, the copy will be supplied on request to the International Bureau (IB) unless the IB has not yet received the priority document, in which case the examiner may invite the applicant to furnish such a copy. See PCT Rule 66.7(a). The examiner may consult with the Technology Center Quality Assurance Specialist or PCT Special Program Examiner regarding requesting a copy of the priority document from the IB. If the priority document is not in English, the examiner may invite the applicant to furnish a translation of the priority document
within two months of the invitation. See PCT Rule 66.7(b). Box No. II, item 3, “Additional Observations” may be used to invite applicant to supply a copy of the priority document and/or translation. Preparation of the written opinion by the International Searching Authority should not be delayed to await a response to the invitation. The written opinion of the ISA will ordinarily be established as if the priority claim had been validly claimed even though the copy and/or translation has not been furnished. However, failure to timely furnish a copy of the priority document and/or translation may result in any further written opinion or international preliminary examination report of the International Preliminary Examining Authority being established as if the priority had not been claimed.
If applicant fails to furnish a copy or translation of the earlier application, whose priority has been claimed, check item 1 and then check the first box of the subsection if applicant failed to furnish a copy of the earlier application whose priority has been claimed, and check the second box of the subsection if applicant failed to furnish a translation of the earlier application whose priority has been claimed.
When the claim for priority has been found invalid (e.g., the notification under PCT Rule 26 bis.2(b) has been provided or all claims are directed to inventions which were not described and enabled by the earlier application), check item 2 in Box II and indicate why the claim for priority has been found invalid following item 3 “Additional observations.”
III. BOX NO. III. — NON-ESTABLISHMENT OF OPINION ON NOVELTY, INVENTIVE STEP AND INDUSTRIAL APPLICABILITY
Box No. III of Form PCT/ISA/237 is intended to cover situations where some or all claims of an application are so unclear or inadequately supported by the description that the question of novelty, inventive step (nonobviousness), and industrial applicability cannot be considered, or where the international application or claims thereof relate to subject matter for which it is not required to establish a written opinion concerning novelty, inventive step
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and industrial applicability, or where no international search report has been established for the claims.
If some or all of the claims of an application relate to subject matter for which it is not required to establish a written opinion concerning novelty, inventive step and industrial applicability, check the appropriate box, indicate which claims relate to that subject matter and specify the reasons e.g., improper multiple dependent claims that fail to comply with PCT Rule 6.4.
If some or all of the claims of an application are so unclear that no meaningful opinion could be formed, check the appropriate box, indicate which claims are unclear and specify the reasons.
If some or all of the claims are so inadequately supported by the description that no meaningful opinion could be formed, check the appropriate box.
If no international search report has been established for certain claims, check the appropriate box and indicate the claim numbers.
If the nucleotide and/or amino acid sequence listing does not comply with Annex C of the Administrative Instructions, the examiner must indicate whether the written form and/or the electronic form (text) is not in compliance and the reason for the non-compliance.
IV. BOX NO. IV. — LACK OF UNITY OF INVENTION
Box No. IV of Form PCT/ISA/237 should be used by the examiner to notify applicant that lack of unity has been found by checking item 1, and one of the four boxes under item 1.
If applicant paid additional fees for additional inventions, the examiner should check the first box under item 1.
If the additional fees were paid under protest, the examiner should check the second box under item 1.
Regarding the third box, since the ISA/US does not require a protest fee, this box would not be checked.
If the search report is based on the first mentioned invention (no additional search fees were paid), the examiner should check the fourth box under item 1.
Item 2 of Box No. IV is to be completed if the examiner determines that unity of invention is lacking but chooses not to invite the applicant to agree to a search limited to the first mentioned invention or pay additional fees.
If a lack of unity exists, the examiner would mark the second box under item 3. However, since the reasons for the lack of unity have already been set forth on the simultaneously issued international search report, the examiner can simply state that the reason the requirement of unity of invention is not complied with is set forth in the international search report. The first box under item 3 would never be marked.
Item 4 is used by the examiner to indicate which parts of the application form the basis of the opinion after the lack of unity of invention has been explained. The first box should be checked when the opinion is established for all parts. Otherwise, the second box is checked and the relevant claims identified.
V. BOX NO. V. — REASONED STATEMENT WITH REGARD TO NOVELTY, INVENTIVE STEP, AND INDUSTRIAL APPLICABILITY OF CLAIMS
In Box No. V of Form PCT/ISA/237, the examiner must list in summary form all claims with regard to the criteria of novelty (N), inventive step (IS), and industrial applicability (IA). For definitions of novelty, inventive step, and industrial applicability see MPEP §§ 1878.01(a)(1), 1878.01(a)(2), and 1878.01(a)(3), respectively.
Box No. V is the main purpose of the written opinion. All claims without fatal defects are treated on the merits in Box No. V as to novelty, inventive step (nonobviousness) and industrial applicability.
The treatment of claims in Box No. V is similar in format to an Office action in a U.S. national patent application except that the words “rejection,” “patentability,” and “allowable are never used in a written opinion. On the international level, all written
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opinions are nonbinding and a patent does not issue; what does issue is an international preliminary report on patentability (IPRP), which is nonbinding on the elected States.
Examiner statements in Box No. V can be positive or negative. If the claims define over the prior art and meet the test of novelty, inventive step (nonobviousness) and industrial applicability, a positive statement equivalent to detailed reasons for allowance in a corresponding U.S. national application should be provided, indicating how the claims meet the tests of novelty, inventive step and industrial applicability. Form paragraphs 18.04 and 18.04.01 may be used for this purpose.
¶ 18.04 Meets Novelty and Inventive Step
Claim [1] the criteria set out in PCT Article 33(2)-(3), because the prior art does not teach or fairly suggest [2].
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and insert the verb --meet-- or --meets--, as appropriate.
2. In bracket 2, insert the details of the claimed subject matter that render it unobvious over the prior art.
3. If the claims also meet the industrial applicability criteria set out in PCT Article 33(4), this form paragraph should be followed by form paragraph 18.04.01.
4. If the claims do not meet the industrial applicability criteria set out in PCT Article 33(4), this form paragraph should be followed by form paragraph 18.03.
¶ 18.04.01 Meets Industrial Applicability
Claim [1] the criteria set out in PCT Article 33(4), and thus [2] industrial applicability because the subject matter claimed can be made or used in industry.
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --meet-- or -- meets--, as appropriate.
2. In bracket 2, insert --have-- or --has--, as appropriate.
3. If the claims meet all of the requirements of PCT Article 33(2)-(4), use form paragraph 18.04 before this form paragraph to provide positive statements for novelty and inventive step under PCT Article 33(2)-(3).
4. If the claims have industrial applicability but lack novelty and inventive step, use this form paragraph and additionally use form paragraph 18.01.
5. If the claims have industrial applicability and novelty but lack inventive step, use this form paragraph and additionally
use one or more of form paragraphs 18.02, 18.02.01 and 18.02.02, as appropriate.
6. If the claims do not have industrial applicability, use form paragraph 18.03 instead of this form paragraph.
If, on the other hand, it is the opinion of the examiner that some or all claims lack novelty, inventive step, or industrial applicability, specific reasons must be given similar to those used in U.S. national applications.
Form paragraphs 18.01, 18.02, 18.02.01, 18.02.02, and 18.03 may be used, as appropriate, to explain the negative statements listed in Box No. V.
¶ 18.01 Lacks Novelty
Claim [1] novelty under PCT Article 33(2) as being anticipated by [2].
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
2. In bracket 2, insert name of prior art relied upon.
¶ 18.02 Lacks Inventive Step - One Reference
Claim [1] an inventive step under PCT Article 33(3) as being obvious over [2]. [3]
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
2. In bracket 2, insert name of prior art relied upon.
3. In bracket 3, add reasoning.
¶ 18.02.01 Lacks Inventive Step - Two References
Claim [1] an inventive step under PCT Article 33(3) as being obvious over [2] in view of [3]. [4]
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
2. In bracket 2, insert name of PRIMARY prior art relied upon.
3. In bracket 3, insert name of SECONDARY prior art relied upon.
4. In bracket 4, add reasoning.
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¶ 18.02.02 Lacks Inventive Step - Additional Reference
Claim [1] an inventive step under PCT Article 33(3) as being obvious over the prior art as applied in the immediately preceding paragraph and further in view of [2]. [3]
Examiner Note:
1. This form paragraph may follow either 18.02 or 18.02.01.
2. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
3. In bracket 2, insert name of additional prior art relied upon.
4. In bracket 3, add reasoning.
¶ 18.03 Lacks Industrial Applicability
Claim [1] industrial applicability as defined by PCT Article 33(4). [2]
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
2. In bracket 2, add reasoning.
Examiners are encouraged to indicate any amendments which applicant could present which would avoid a negative statement in the international preliminary examination report in the event that applicant chooses to file a demand.
VI. BOX NO. VI. — CERTAIN DOCUMENTS CITED
Since all documents cited at the time of establishment of the written opinion will be listed on the simultaneously established search report, there is no need to also list them on the written opinion, and as such this box should be left blank.
VII. BOX NO. VII. — CERTAIN DEFECTS IN THE INTERNATIONAL APPLICATION
In Box No. VII of Form PCT/ISA/237, defects in the form and content of the international application are identified.
Defects that would be listed in Box No. VII include informalities such as misplaced and/or omitted drawing numerals, misspelled words, and grammatical errors.
The following form paragraphs are used in Box No. VII of PCT/ISA/237, “Certain defects in the international application,” for noting technical defects.
¶ 18.08 Drawing - Defect in Form or Contents Thereof
The drawings contain the following defect(s) in the form or content thereof: [1]
Examiner Note:
In bracket 1, insert identification of defects in drawings.
¶ 18.08.01 Drawing Is Required
The subject matter of this application admits of illustration by drawing to facilitate understanding of the invention. Applicant is required under PCT Article 7(1) to furnish a drawing.
¶ 18.09 Description - Defect in Form or Contents Thereof
The description contains the following defect(s) in the form or contents thereof: [1]
Examiner Note:
In bracket 1, insert the technical problem, e.g., misspelled word.
¶ 18.10 Claims - Defect in Form or Contents Thereof
Claim [1] contain(s) the following defect(s) in the form or contents thereof: [2]
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, and insert claim no.(s).
2. In bracket 2, identify the technical deficiency.
VIII. BOX NO. VIII. — CERTAIN OBSERVATIONS ON THE INTERNATIONAL APPLICATION
In Box No. VIII, the examiner notifies the applicant of observations made as to the clarity of the claims, the description, the drawings, or on the question whether the claims are fully supported by the description.
If the claims, the description, or the drawings are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the question of novelty, inventive step (nonobviousness) or industrial applicability, the applicant is so informed in Box No. III. See PCT Article 34(4)(a)(ii). Reasons for the examiner’s
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opinion that the claims, description and drawings, etc., lack clarity must also be provided.
If the above situation is found to exist in certain claims only, the provisions of PCT Article 34(4)(a)(ii) shall apply to those claims only.
If the lack of clarity of the claims, the description, or the drawings is of such a nature that it is possible to form a meaningful opinion on the claimed subject matter, then it is required that the examiner consider the claims and render a written opinion on novelty, inventive step, and industrial applicability in Box No. V.
Since the claims of an international application are not subject to a rejection on either art or indefiniteness consistent with U.S. practice, observations by the examiner with regard to clarity of the claims, the description and the drawings will be treated in the form of an objection in the written opinion in Box No. VIII.
The following form paragraphs may be used in Box No. VIII, “Certain observations on the international application,” of Form PCT/ISA/237 for noting objections which are substantive rather than merely technical in nature.
¶ 18.11 Drawing Objections - Lack Clarity
The drawings are objected to under PCT Article 7 as lacking clarity under PCT Article 7 because: [1]
Examiner Note:
In bracket 1, insert reasons why the drawings lack clarity, e.g., inaccurate showing.
¶ 18.12.01 Claims Objectionable - Inadequate Written Description
Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The application, as originally filed, did not describe: [3]
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --is-- or --are--, as appropriate.
2. In bracket 2, pluralize “claim” if needed, and insert the verb --is-- or --are--.
3. In bracket 3, identify subject matter not described in the application as filed.
¶ 18.13.01 Claims Objectionable - Non-Enabling Disclosure
Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The description does not disclose the claimed invention in a manner sufficiently clear and complete for the claimed invention to be carried out by a person skilled in the art as required by PCT Article 5 because: [3]
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--.
2. In bracket 2, pluralize “claim” if needed, insert the verb --is-- or --are--.
3. In bracket 3, identify the claimed subject matter that is not enabled and explain why it is not enabled.
¶ 18.14.01 Claims Objectionable - Lack of Best Mode
Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The description fails to set forth the best mode contemplated by the applicant for carrying out the claimed invention as required by PCT Rule 5.1(a)(v) because: [3].
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--.
2. In bracket 2, pluralize “claim” if needed, and insert the appropriate verb --is-- or --are--.
3. In bracket 3, insert the objection and reasons.
¶ 18.15 Claims Objectionable - Indefiniteness
Claim [1] objected to under PCT Article 6 as lacking clarity because claim [2] indefinite for the following reason(s): [3]
Examiner Note:
1. In brackets 1 and 2, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--.
2. In bracket 3, insert reasons.
IX. AUTHORIZED OFFICER
Pursuant to PCT Rules 43 bis.1 and 70.14, the written opinion of the International Searching Authority must indicate the name of the officer of the International Searching Authority responsible for the written opinion, i.e., the “authorized officer.” An “authorized officer” is the person who actually performed the search work and prepared the search report and the written opinion, or another person who was responsible for supervising the search and the establishment of the written opinion. See PCT Administrative Instructions Section 514. Thus, an
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examiner need not have signatory authority in order to be named as an authorized officer on the written opinion. However, the “file copy” of the written opinion must be signed by an examiner having at least partial signatory authority.
X. TIME TO REPLY
If, in response to the written opinion of the International Searching Authority (Form PCT/ISA/237), applicant wishes to file a demand and amendments and/or arguments, the time period for response is 3 months from the mailing of the international search report and the written opinion or before the expiration of 22 months from the priority date, whichever expires later.
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1845.02 Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority, or the Declaration (Form PCT/ISA/220) [R-07.2015]
The examiner completes the Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority, or the Declaration (Form PCT/ISA/220) upon completion of the International Search Report (Form PCT/ISA/210) or the Declaration of Non-Establishment of the International Search Report (Form PCT/ISA/203) and completion of the Written Opinion of the International Searching Authority (Form PCT/ISA/237).
The Form PCT/ISA/220 serves as a cover letter for the PCT/ISA/210 or PCT/ISA/203 and for the PCT/ISA/237.
The Form PCT/ISA/220 indicates the mailing date, which is important for the computation of the time limit for filing amendments to the claims under PCT Article 19 (see MPEP § 1853) and proposed modifications of, or comments on, the abstract. The mailing date on Form PCT/ISA/220 may also establish the time limit for making a demand under PCT Rule 54 bis.1 (see MPEP § 1842, subsection VI) and for making Article 34 amendments that will be ensured consideration by the examiner (see MPEP § 1871).
I. ADDRESS FOR CORRESPONDENCE
The address for correspondence is taken from the request (Form PCT/RO/101). When an agent represents the applicant, the address for correspondence is listed in Box No. IV of the PCT Request form. For applicants processing their own applications, the address for correspondence may be listed in Box No. II of the Request form. However, where a Notification of the Recording of a Change (Form PCT/IB/306) shows any changes in the applicant or address for correspondence effected under PCT Rule 92 bis , the later address is used.
II. APPLICANT
When there is more than one applicant in respect of the international application, only the first mentioned of these on the Request form is indicated in the international search report. Other applicants, if any, are indicated by the words “et al” following the first applicant’s name. The first mentioned applicant is indicated in Box No. II of the Request form, a second applicant is listed in Box No. III; further applicants are listed on the continuation sheet if there are more than two applicants. Company names are preferably written in capital letters; for personal names the family name is preferably given first in capital letters and the given names are in mixed case. This helps to identify the family name.
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1846 -1847 [Reserved]
1848 Sequence Listings [R-07.2015]
PCT Rule 13 ter
Nucleotide and/or Amino Acid Sequence Listings
13 ter.1 Procedure Before the International Searching Authority
(a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the International Searching Authority may invite the applicant to furnish to it, for the purposes of the international search, a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, unless such listing in electronic form is already available to it in a form and manner acceptable to it, and to pay to it, where applicable, the late furnishing fee referred to paragraph (c), within a time limit fixed in the invitation.
(b) Where at least part of the international application is filed on paper and the International Searching Authority finds that the description does not comply with Rule 5.2(a), it may invite the applicant to furnish, for the purposes of the international search, a sequence listing in paper form complying with the standard provided for in the Administrative Instructions, unless such listing in paper form is already available to it in a form and manner acceptable to it, whether or not the furnishing of a sequence listing in electronic form is invited under paragraph (a), and to pay, where applicable, the late furnishing fee referred to in paragraph (c), within a time limit fixed in the invitation.
(c) The furnishing of a sequence listing in response to an invitation under paragraph (a) or (b) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a late furnishing fee whose amount shall be determined by the International Searching Authority but shall not exceed 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets, provided that a late furnishing fee may be required under either paragraph (a) or (b) but not both.
(d) If the applicant does not, within the time limit fixed in the invitation under paragraph (a) or (b), furnish the required sequence listing and pay any required late furnishing fee, the International Searching Authority shall only be required to search the international application to the extent that a meaningful search can be carried out without the sequence listing.
(e) Any sequence listing not contained in the international application as filed, whether furnished in response to an invitation under paragraph (a) or (b) or otherwise, shall not form part of the international application, but this paragraph shall not prevent the applicant from amending the description in relation to a sequence listing pursuant to Article 34(2)(b).
(f) Where the International Searching Authority finds that the description does not comply with Rule 5.2(b), it shall invite
the applicant to submit the required correction. Rule 26.4 shall apply mutatis mutandis to any correction offered by the applicant. The International Searching Authority shall transmit the correction to the receiving Office and to the International Bureau.
13 ter.2 Procedure before the International Preliminary Examining Authority
Rule 13 ter.1 shall apply mutatis mutandis to the procedure before the International Preliminary Examining Authority.
13 ter.3 Sequence Listing for Designated Office
No designated Office shall require the applicant to furnish to it a sequence listing other than a sequence listing complying with the standard provided for in the Administrative Instructions.
PCT Administrative Instructions Section 513
Sequence Listings
(a) Where the International Searching Authority receives a correction of a defect under Rule 13 ter.1(f), it shall:
(i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
(ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “SUBSTITUTE SHEET (Rule 13 ter.1(f))” or their equivalent in the language of publication of the international application;
(iii) indelibly mark on the letter containing the correction, or accompanying any replacement sheet, the date on which that letter was received;
(iv) keep in its files a copy of the letter containing the correction or, when the correction is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet, and a copy of the replacement sheet;
(v) promptly transmit any letter and any replacement sheet to the International Bureau, and a copy thereof to the receiving Office.
(b) Where the international search report and the written opinion of the International Searching Authority are based on a sequence listing that was not contained in the international application as filed but was furnished subsequently to the International Searching Authority, the international search report and the written opinion of the International Searching Authority shall so indicate.
(c) Where a meaningful international search cannot be carried out and a meaningful written opinion, as to whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious) and to be industrially applicable, cannot be established because a sequence listing is not available to the International Searching Authority in the required form, that Authority shall so state in the international search report or declaration referred to in Article 17(2)(a), and in the written opinion.
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(d) The International Searching Authority shall indelibly mark, on the first sheet of any sequence listing on paper which does not form part of the international application but was furnished for the purposes of the international search, the words “SEQUENCE LISTING NOT FORMING PART OF THE INTERNATIONAL APPLICATION” or their equivalent in the language of publication of the international application. Where such sequence listing is furnished in electronic form on a physical medium, that Authority shall physically label that medium accordingly.
(e) The International Searching Authority shall:
(i) keep in its files one copy of any sequence listing, whether on paper or in electronic form, which does not form part of the international application but was furnished for the purposes of the international search; and
(ii) where the sequence listing which does not form part of the international application but was furnished for the purposes of the international search is in electronic form, transmit one copy thereof to the International Bureau together with the copy of the international search report. If that listing in electronic form is filed on a physical medium in less than the number of copies required by the International Searching Authority, that Authority shall be responsible for the preparation of the additional copy and shall have the right to fix a fee for performing that task and to collect such fee from the applicant.
(f) Any International Searching Authority which requires, for the purposes of the international search, the furnishing of a sequence listing in electronic form shall notify the International Bureau accordingly. In that notification, the Authority shall specify the means of transmittal of the sequence listing in electronic form accepted by it in accordance with Annex F. The International Bureau shall promptly publish details of the notification in the Gazette.
Where an international application contains disclosure of a nucleotide and/or amino acid sequence, the description must contain a listing of the sequence complying with the standard specified in Annex C of the Administrative Instructions. See MPEP § 1823.02. If the International Searching Authority finds that an international application contains such a disclosure but that the description does not include such a listing or that the listing included does not comply with that standard, the International Searching Authority may invite the applicant to furnish a listing complying with that standard.
If the International Searching Authority finds that a sequence listing is not in an electronic form (text) provided for in the Administrative Instructions, it may invite the applicant to furnish a listing to it in such a form.
An invitation from the International Searching Authority to furnish a sequence listing complying with the standard specified in the Administrative Instructions, will specify a time limit for complying with the invitation. Any sequence listing furnished by the applicant in response to the invitation must be accompanied by a statement to the effect that the listing does not include matter which goes beyond the disclosure in the international application as filed. If the applicant does not comply within that time limit, the search undertaken by the International Searching Authority may be limited.
If the applicant wishes to include such a listing in the text of the description itself, appropriate amendments may be made later under PCT Article 34, provided that the applicant files a Demand for international preliminary examination.
1849 [Reserved]
1850 Unity of Invention Before the International Searching Authority [R-07.2015]
PCT Rule 13.
Unity of Invention
13.1. Requirement
The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”).
13.2. Circumstances in Which the Requirement of Unity of Invention Is to Be Considered Fulfilled
Where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
13.3. Determination of Unity of Invention Not Affected by Manner of Claiming
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
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13.4. Dependent Claims
Subject to Rule 13.1, it shall be permitted to include in the same international application a reasonable number of dependent claims, claiming specific forms of the invention claimed in an independent claim, even where the features of any dependent claim could be considered as constituting in themselves an invention.
13.5. Utility Models
Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 13.1 to 13.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least two months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.
PCT Rule 40
Lack of Unity of Invention (International Search)
40.1 Invitation to Pay Additional Fees; Time Limit
The invitation to pay additional fees provided for in Article 17(3)(a) shall:
(i) specify the reasons for which the international application is not considered as complying with the requirement of unity of invention;
(ii) invite the applicant to pay the additional fees within one month from the date of the invitation, and indicate the amount of those fees to be paid; and
(iii) invite the applicant to pay, where applicable, the protest fee referred to in Rule 40.2(e) within one month from the date of the invitation, and indicate the amount to be paid.
40.2. Additional Fees
(a) The amount of the additional fees due for searching under Article 17(3)(a) shall be determined by the competent International Searching Authority.
(b) The additional fees due for searching under Article 17(3)(a) shall be payable direct to the International Searching Authority.
(c) Any applicant may pay the additional fees under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the amount of the required additional fees is excessive. Such protest shall be examined by a review body constituted in the framework of the International Searching Authority, which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fees. On the request of the applicant, the text of both the protest and the decision thereon shall be notified to the designated Offices together with the international search report. The applicant shall submit any translation thereof with the
furnishing of the translation of the international application required under Article 22.
(d) The membership of the review body referred to in paragraph (c) may include, but shall not be limited to, the person who made the decision which is the subject of the protest.
(e) The examination of a protest referred to in paragraph (c) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a protest fee. Where the applicant has not, within the time limit under Rule 40.1(iii), paid any required protest fee, the protest shall be considered not to have been made and the International Searching Authority shall so declare. The protest fee shall be refunded to the applicant where the review body referred to in paragraph (c) finds that the protest was entirely justified.
37 CFR 1.475 Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.
(a) An international and a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
(b) An international or a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
(c) If an application contains claims to more or less than one of the combinations of categories of invention set forth in paragraph (b) of this section, unity of invention might not be present.
(d) If multiple products, processes of manufacture or uses are claimed, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the main invention in the claims, see PCT Article 17(3)(a) and § 1.476(c).
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(e) The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
I. THE REQUIREMENT FOR “UNITY OF INVENTION”
Any international application must relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (PCT Article 3(4)(iii) and 17(3)(a), PCT Rule 13.1, and 37 CFR 1.475). Observance of this requirement is checked by the International Searching Authority and may be relevant in the national (or regional) phase.
The decision in Caterpillar Tractor Co. v. Commissioner of Patents and Trademarks, 650 F. Supp. 218, 231 USPQ 590 (E.D. Va. 1986) held that the Patent and Trademark Office interpretation of 37 CFR 1.141(b)(2) as applied to unity of invention determinations in international applications was not in accordance with the Patent Cooperation Treaty and its implementing regulations. In the Caterpillar international application, the USPTO acting as an International Searching Authority, had held lack of unity of invention between a set of claims directed to a process for forming a sprocket and a set of claims drawn to an apparatus (die) for forging a sprocket. The court stated that it was an unreasonable interpretation to say that the expression “specifically designed” as found in former PCT Rule 13.2(ii) means that the process and apparatus have unity of invention if they can only be used with each other, as was set forth in MPEP § 806.05(e).
Therefore, when the Office considers international applications as an International Searching Authority, as an International Preliminary ExaminingAuthority, and during the national stage as a Designated or Elected Office under 35 U.S.C. 371, PCT Rule 13.1 and 13.2 will be followed when considering unity of invention of claims of different categories without regard to the practice in national applications filed under 35 U.S.C. 111. No change was made in restriction practice in United States national applications filed under 35 U.S.C. 111 outside the PCT.
In applying PCT Rule 13.2 to international applications as an International Searching Authority, an International Preliminary Examining Authority and to national stage applications under 35 U.S.C. 371, examiners should consider for unity of invention all the claims to different categories of invention in the application and permit retention in the same application for searching and/or preliminary examination, claims to the categories which meet the requirements of PCT Rule 13.2.
PCT Rule 13.2, as it was modified effective July 1, 1992, no longer specifies the combinations of categories of invention which are considered to have unity of invention. Those categories, which now appear as a part of Chapter 10 of the International Search and Preliminary Examination Guidelines, may be obtained from the Patent Examiner’s Toolkit l i n k o r f r o m W I P O ’s w e b s i t e (www.wipo.int/pct/en/texts/gdlines.html). The categories of invention in former PCT Rule 13.2 have been replaced with a statement describing the method for determining whether the requirement of unity of invention is satisfied. Unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more special technical features. The term “special technical features” is defined as meaning those technical features that define a contribution which each of the inventions considered as a whole, makes over the prior art. The determination is made based on the contents of the claims as interpreted in light of the description and drawings. Chapter 10 of the International Search and Preliminary Examination Guidelines also contains examples concerning unity of invention.
II. DETERMINATION OF “UNITY OF INVENTION”
An international application should relate to only one invention or, if there is more than one invention, the inclusion of those inventions in one international application is only permitted if all inventions are so linked as to form a single general inventive concept (PCT Rule 13.1). With respect to a group of inventions claimed in an international application, unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding
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special technical features. The expression “special technical features” is defined in PCT Rule 13.2 as meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art. The determination is made on the contents of the claims as interpreted in light of the description and drawings (if any).
Whether or not any particular technical feature makes a “contribution” over the prior art, and therefore constitutes a “special technical feature,” should be considered with respect to novelty and inventive step. For example, a document discovered in the international search shows that there is a presumption of lack of novelty or inventive step in a main claim, so that there may be no technical relationship left over the prior art among the claimed inventions involving one or more of the same or corresponding special technical features, leaving two or more dependent claims without a single general inventive concept.
Lack of unity of invention may be directly evident “ a priori,” that is, before considering the claims in relation to any prior art, or may only become apparent “ a posteriori,” that is, after taking the prior art into consideration. For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a priori as there is no subject matter common to all claims. In the case of independent claims to A + X and A +Y, unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a
group of features) is not a technical feature that defines a contribution over the prior art.
Although lack of unity of invention should certainly be raised in clear cases, it should neither be raised nor maintained on the basis of a narrow, literal or academic approach. There should be a broad, practical consideration of the degree of interdependence of the alternatives presented, in relation to the state of the art as revealed by the international search or, in accordance with PCT Article 33(6), by any additional document considered to be relevant. If the common matter of the independent claims is well known and the remaining subject matter of each claim differs from that of the
others without there being any unifying novel inventive concept common to all, then clearly there is lack of unity of invention. If, on the other hand, there is a single general inventive concept that appears novel and involves inventive step, then there is unity of invention and an objection of lack of unity does not arise. For determining the action to be taken by the examiner between these two extremes, rigid rules cannot be given and each case should be considered on its merits, the benefit of any doubt being given to the applicant.
From the preceding paragraphs it is clear that the decision with respect to unity of invention rests with the International Searching Authority or the International Preliminary Examining Authority. However, the International Searching Authority or the International Preliminary Examining Authority should not raise objection of lack of unity of invention merely because the inventions claimed are classified in separate classification groups or merely for the purpose of restricting the international search to certain classification groups.
Unity of invention has to be considered in the first place only in relation to the independent claims in an international application and not the dependent claims. By “dependent” claim is meant a claim which contains all the features of one or more other claims and contains a reference, preferably at the beginning, to the other claim or claims and then states the additional features claimed (PCT Rule 6.4). The examiner should bear in mind that a claim may also contain a reference to another claim even if it is not a dependent claim as defined in PCT Rule 6.4. One example of this is a claim referring to a claim of a different category (for example, “Apparatus for carrying out the process of Claim 1 ...,” or “Process for the manufacture of the product of Claim 1 ...”). Similarly, a claim to one part referring to another cooperating part, for example, “plug for cooperation with the socket of Claim 1 ...”) is not a dependent claim.
If the independent claims avoid the prior art and satisfy the requirement of unity of invention, no problem of lack of unity arises in respect of any claims that depend on the independent claims. In particular, it does not matter if a dependent claim itself contains a further invention. For example,
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suppose claim 1 claims a turbine rotor blade shaped in a specified manner such that it avoids the prior art, while claim 2 is for a “turbine rotor blade as claimed in claim 1” and produced from alloy Z. Then no objection under PCT Rule 13 arises either because alloy Z was new and its composition was not obvious and thus the alloy itself already contains the essential features of an independent possibly later patentable invention, or because, although alloy Z was not new, its application in respect of turbine rotor blades was not obvious, and thus represents an independent invention in conjunction with turbine rotor blades. As another example, suppose that the main claim defines a process avoiding the prior art for the preparation of a product A starting from a product B and the second claim reads: “Process according to claim 1 characterized by producing B by a reaction using the product C.” In this case, too, no objection arises under PCT Rule 13, whether or not the process for preparation of B from C is novel and inventive, since claim 2 contains all the features of claim 1. Equally, no problem arises in the case of a genus/species situation where the genus claim avoids the prior art, provided the genus claim is directed only to alternatives of a similar nature and the species falls entirely within the genus. To determine if a genus claim is directed only to alternatives “of a similar nature,” see subsection III.B. below. Moreover, no problem arises in the case of a combination/subcombination situation where the subcombination claim avoids the prior art and the combination claim includes all the features of the subcombination.
If, however, an independent claim does not avoid the prior art, then the question whether there is still an inventive link between all the claims dependent on that claim needs to be carefully considered. If there is no link remaining, an objection of lack of unity a posteriori (that is, arising only after assessment of the prior art) may be raised. Similar considerations apply in the case of a genus/species or combination/subcombination situation.
This method for determining whether unity of invention exists is intended to be applied even before the commencement of the international search. Where a search of the prior art is made, an initial determination of unity of invention, based on the assumption that the claims avoid the prior art, may
be reconsidered on the basis of the results of the search of the prior art.
Alternative forms of an invention may be claimed either in a plurality of independent claims, or in a single claim. In the latter case, the presence of the independent alternatives may not be immediately apparent. In either case, however, the same criteria should be applied in deciding whether there is unity of invention. Accordingly, lack of unity of invention may exist within a single claim. Where the claim contains distinct embodiments that are not linked by a single general inventive concept, the objection as to lack of unity of invention should be raised. PCT Rule 13.3 does not prevent an Authority from objecting to alternatives being contained within a single claim on the basis of considerations such as clarity, the conciseness of claims or the claims fee system applicable in that Authority.
Objection of lack of unity of invention does not normally arise if the combination of a number of individual elements is claimed in a single claim (as opposed to distinct embodiments as discussed in the paragraph immediately above), even if these elements seem unrelated when considered individually.
III. ILLUSTRATIONS OF PARTICULAR SITUATIONS
There are three particular situations for which the method for determining unity of invention contained in PCT Rule 13.2 is explained in greater detail:
(A) Combinations of different categories of claims;
(B) So-called “Markush practice”; and
(C) Intermediate and final products.
Principles for the interpretation of the method contained in PCT Rule 13.2, in the context of each of those situations are set out below. It is understood that the principles set out below are, in all instances, interpretations of and not exceptions to the requirements of PCT Rule 13.2.
Examples to assist in understanding the interpretation on the three areas of special concern referred to in the preceding paragraph are set out in Chapter 10 of
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the International Search and Preliminary Examination Guidelines which can be obtained from the Patent Examiner’s Toolkit link or from WIPO’s website (www.wipo.int/pct/en/texts/gdlines.html).
A. Combinations of Different Categories of Claims
The method for determining unity of invention under PCT Rule 13 shall be construed as permitting, in particular, the inclusion of any one of the following combinations of claims of different categories in the same international application:
(A) In addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product, and an independent claim for a use of the said product; or
(B) In addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out the said process; or
(C) In addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product and an independent claim for an apparatus or means specifically designed for carrying out the said process.
A process is specially adapted for the manufacture of a product if it inherently results in the product and an apparatus or means is specifically designed for carrying out a process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art.
Thus, a process shall be considered to be specially adapted for the manufacture of a product if the claimed process inherently results in the claimed product with the technical relationship being present between the claimed product and claimed process. The words “specially adapted” are not intended to imply that the product could not also be manufactured by a different process.
Also an apparatus or means shall be considered to be specifically designed for carrying out a claimed process if the contribution over the prior art of the apparatus or means corresponds to the contribution
the process makes over the prior art. Consequently, it would not be sufficient that the apparatus or means is merely capable of being used in carrying out the claimed process. However, the expression “specifically designed” does not imply that the apparatus or means could not be used for carrying out another process, nor that the process could not be carried out using an alternative apparatus or means.
More extensive combinations than those set forth above should be looked at carefully to ensure that the requirements of both PCT Rule 13 (unity of invention) and PCT Article 6 (conciseness of claims) are satisfied. In particular, while a single set of independent claims according to one of (A), (B), or (C) above is always permissible, it does not require the International Authority to accept a plurality of such sets which could arise by combining the provisions of PCT Rule 13.3 (which provides that the determination of unity of invention be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim), with the provisions set out above (thus resulting in a set based on each of a number of independent claims in the same category under PCT Rule 13.3). The proliferation of claims arising from a combined effect of this kind should be accepted only exceptionally. For example, independent claims are permissible for two related articles such as a transmitter and receiver; however, it does not follow that an applicant may include also, in the one international application, four additional independent claims: two for a process for the manufacture of the transmitter and the receiver, respectively, and two for use of the transmitter and receiver, respectively.
A single general inventive concept must link the claims in the various categories and in this connection the wording above should be carefully noted. The link between product and process in (A) is that the process must be “specially adapted for the manufacture of” the product. Similarly, in (B), the apparatus or means claimed must be “specifically designed for” carrying out the process. Likewise, in (C), the process must be “specially adapted for the manufacture of” the product and the apparatus must be “specifically designed for” carrying out the process. In combinations (A) and (C), the emphasis is on, and the essence of the invention should
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primarily reside in, the product, whereas in combination (B) the emphasis is on, and the invention should primarily reside in, the process. (See Examples in Chapter 10 of the International Search and Preliminary Examination Guidelines which can be obtained from the Patent Examiner’s Toolkit link or from WIPO’s website (www.wipo.int/pct/en/texts/gdlines.html.))
B. “Markush Practice”
The situation involving the so-called Markush practice wherein a single claim defines alternatives (chemical or non-chemical) is also governed by PCT Rule 13.2. In this special situation, the requirement of a technical interrelationship and the same or corresponding special technical features as defined in PCT Rule 13.2, shall be considered to be met when the alternatives are of a similar nature.
When the Markush grouping is for alternatives of chemical compounds, they shall be regarded as being of a similar nature where the following criteria are fulfilled:
(A) All alternatives have a common property or activity; and
(B)
(1) A common structure is present, i.e., a significant structural element is shared by all of the alternatives; or
(B)
(2) In cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.
In paragraph (B)(1), above, the words “significant structural element is shared by all of the alternatives” refer to cases where the compounds share a common chemical structure which occupies a large portion of their structures, or in case the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion in view of existing prior art, and the common structure is essential to the common property or activity. The structural element may be a single component or a combination of individual components linked together.
In paragraph (B)(2), above, the words “recognized class of chemical compounds” mean that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. In other words, each member could be substituted one for the other, with the expectation that the same intended result would be achieved.
The fact that the alternatives of a Markush grouping can be differently classified should not, taken alone, be considered to be justification for a finding of a lack of unity of invention.
When dealing with alternatives, if it can be shown that at least one Markush alternative is not novel over the prior art, the question of unity of invention should be reconsidered by the examiner. Reconsideration does not necessarily imply that an objection of lack of unity shall be raised. (See Examples in Chapter 10 of the International Search and Preliminary Examination Guidelines which can be obtained from the Patent Examiner’s Toolkit link o r f r o m W I P O ’ s w e b s i t e (www.wipo.int/pct/en/texts/gdlines.html.))
C. Intermediate and Final Products
The situation involving intermediate and final products is also governed by PCT Rule 13.2.
The term “intermediate” is intended to mean intermediate or starting products. Such products have the ability to be used to produce final products through a physical or chemical change in which the intermediate loses its identity.
Unity of invention shall be considered to be present in the context of intermediate and final products where the following two conditions are fulfilled:
(A) The intermediate and final products have the same essential structural element, in that:
(1) The basic chemical structures of the intermediate and the final products are the same, or
(2) The chemical structures of the two products are technically closely interrelated, the intermediate incorporating an essential structural element into the final product; and
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(B) The intermediate and final products are technically interrelated, this meaning that the final product is manufactured directly from the intermediate or is separated from it by a small number of intermediates all containing the same essential structural element.
Unity of invention may also be considered to be present between intermediate and final products of which the structures are not known, for example, as between an intermediate having a known structure and a final product the structure of which is not known, or as between an intermediate of unknown structure and a final product of unknown structure. In order to satisfy unity in such cases, there must be sufficient evidence to lead one to conclude that the intermediate and final products are technically closely interrelated as, for example, when the intermediate contains the same essential element as the final product or incorporates an essential element into the final product.
It is possible to accept in a single international application different intermediate products used in different processes for the preparation of the final product, provided that they have the same essential structural element.
The intermediate and final products shall not be separated, in the process leading from one to the other, by an intermediate which is not new.
If the same international application claims different intermediates for different structural parts of the final product, unity shall not be regarded as being present between the intermediates.
If the intermediate and final products are families of compounds, each intermediate compound shall correspond to a compound claimed in the family of the final products. However, some of the final products may have no corresponding compound in the family of the intermediate products so that the two families need not be absolutely congruent.
As long as unity of invention can be recognized applying the above interpretations, the fact that, besides the ability to be used to produce final products, the intermediates also exhibit other possible effects or activities shall not affect the
decision on unity of invention. (See Examples in Chapter 10 of the International Search and Preliminary Examination Guidelines which can be obtained from the Patent Examiner’s Toolkit link or f r o m W I P O ’ s w e b s i t e (www.wipo.int/pct/en/texts/gdlines.html.))
IV. SEARCH OF ADDITIONAL INVENTIONS WITHOUT PAYMENT OF FEES
If little or no additional search effort is required, reasons of economy may make it advisable for the examiner, while making the search for the main invention, to search at the same time, despite the nonpayment of additional fees, one or more additional inventions in the classification units consulted for the main invention. The international search for such additional inventions will then have to be completed in any further classification units which may be relevant, when the additional search fees have been paid. This situation may occur when the lack of unity of invention is found either “ a priori ” or “ a posteriori.”
When the examiner finds lack of unity of invention, normally, the applicant is invited to pay fees for the search of additional inventions. In exceptional circumstances, however, the examiner may be able to establish both an international search and a written opinion covering more than one invention with negligible additional work, in particular, when the inventions are conceptually very close. In those cases, the examiner may decide to complete the international search and the written opinion of the International Searching Authority for the additional invention(s) together with that for the invention first mentioned. In considering the amount of work involved, the examiner should take into account the time needed to create the written opinion as well as that needed to perform the search, since even when the additional work with regard to the search is negligible, the opposite may be the case for the written opinion of the International Searching Authority and therefore justify requesting the additional fees. If it is considered that the total additional work does not justify requesting additional fees, all results are included in the international search report (and where applicable, the written opinion) without inviting the applicant to pay an additional search fee in respect of the additional
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inventions searched but stating the finding of lack of unity of invention.
V. INVITATION TO PAY ADDITIONAL FEES
The search fee which the applicant is required to pay is intended to compensate the International Searching Authority for carrying out an international search and preparing a written opinion, but only where the international application meets the “requirement of unity of invention.” That means that the international application must relate to only one invention or must relate to a group of inventions which are so linked as to form a single general inventive concept (PCT Articles 3(4)(iii) and 17(3)(a)).
If the International Searching Authority finds that the international application does not comply with the requirement of unity of invention, the applicant will be informed of the lack of unity of invention by a communication preceding the issuance of the international search report and written opinion of the International Searching Authority which contains an invitation to pay additional search fees. (Form PCT/ISA/206 or USPTO/299 (telephone practice), see below). This invitation specifies the reasons the international application is not considered to comply with the requirement of unity of invention, identifies the separate inventions, and indicates the number of additional search fees and the amount to be paid (PCT Rules 40.1, 40.2(a) and (b)). The International Searching Authority cannot consider the application withdrawn for lack of unity of invention, nor invite the applicant to amend the claims, but informs the applicant that, if the international search report is to be drawn up in respect of those inventions present other than the first mentioned, then the additional fees must be paid within one month from the date of the invitation to pay additional fees (PCT Rule 40.1).Such additional fees are payable directly to the International Searching Authority which is conducting the search, i.e., the USPTO, EPO, KIPO, IPAU, Rospatent, or ILPO. The additional search fee amounts for the competent international searching authorities can be found in Annex D of t h e A p p l i c a n t ’ s G u i d e (www.wipo.int/pct/en/appguide).
In the invitation to pay additional fees, the International Searching Authority should set out a
logically presented, technical reasoning containing the basic considerations behind the finding of lack of unity (PCT Rule 40.1).
Since these payments must take place within the time limit set by the International Searching Authority so as to enable the observation of the time limit for establishing the international search report set by PCT Rule 42, the International Searching Authority should endeavor to ensure that international searches be made as early as possible after the receipt of the search copy. The International Searching Authority finally draws up the international search report and written opinion of the International Searching Authority on those parts of the international application which relate to the “main invention,” that is, the invention or the group of inventions so linked as to form a single general inventive concept first mentioned in the claims (PCT Article 17(3)(a)). Moreover, the international search report and written opinion of the International Searching Authority will be established also on those parts of the international application which relate to any invention (or any group of inventions so linked as to form a single general inventive concept) in respect of which the applicant has paid any additional fee within the prescribed time limits.
Where, within the prescribed time limit, the applicant does not pay any additional fees or only pays some of the additional fees indicated, certain parts of the international application will consequently not be searched. The lack of an international search report in respect of such parts of the international application will, in itself, have no influence on the validity of the international application and processing of the international application will continue, both in the international and in the national (regional) phases. The unsearched claims, upon entry into the national stage, will be considered by the examiner and may be the subject of a holding of lack of unity of invention.
VI. PREPARATION OF THE INVITATION TO PAY ADDITIONAL FEES
An Invitation to Pay Additional Fees and, Where Applicable, Protest Fee (Form PCT/ISA/206) is used to invite the applicant to pay additional search fees. In the space provided on form PCT/ISA/206, the
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examiner should indicate the number of inventions claimed in the international application covering which particular claims and explain why the international application is not considered to comply with the requirements of unity of invention. The examiner should then indicate the total amount of additional fees required for the search of all claimed inventions.
Any claims found to be unsearchable under PCT Article 17(2)(b) are not included with any invention. Unsearchable claims include the following:
(A) claims drawn to subject matter not required to be searched by the International Searching Authority (see MPEP § 1843.02);
(B) claims in respect of which a meaningful search cannot be carried out (see MPEP § 1843.03);
(C) multiple dependent claims which do not comply with PCT Rule 6.4(a) (see MPEP § 1843.03).
In the box provided at the top of the form, the time limit of one month for response is set according to PCT Rule 40.1. Extensions of time are not permitted.
VII. AUTHORIZED OFFICER
Form PCT/ISA/206 must be signed by an examiner with at least partial signatory authority.
VIII. TELEPHONIC UNITY PRACTICE
Telephone practice may be used to allow applicants to pay additional fees if
(A) Applicant or applicant’s legal representative has a USPTO deposit account,
(B) Applicant or the legal representative orally agrees to charge the additional fees to the account, and
(C) A complete record of the telephone conversation is included with the international search report including:
(1) Examiner’s name;
(2) Authorizing attorney’s name;
(3) Date of conversation;
(4) Inventions for which additional fees paid; and
(5) Deposit account number and amount to be charged.
When the telephone practice is used in making lack of unity requirements, it is critical that the examiner orally inform applicant that there is no right to protest the holding of lack of unity of invention for any group of invention(s) for which no additional search fee has been paid.
The examiner must further orally advise applicant that any protest to the holding of lack of unity or the amount of additional fee required must be filed in writing no later than one month from the mailing date of the international search report. The examiner should fill in the information on Form USPTO/299 “Chapter I PCT Telephone Memorandum for Lack of Unity” as a record of the telephonic holding of lack of unity.
If the applicant or the legal representative or agent refuses to either agree to a search limited to the first mentioned invention or authorize payment of additional fees over the telephone, or if applicant does not have a deposit account, the examiner should send a written invitation using Form PCT/ISA/206.
If a written invitation is required, the examiner should, if possible, submit the written invitation to the Technology Center for review and mailing within 7 days from the date the international application is charged to the examiner.
IX. FORM PARAGRAPHS FOR LACK OF UNITY IN INTERNATIONAL APPLICATIONS
¶ 18.05 Heading for Lack of Unity Action for PCT Applications During the International Phase (Including Species)
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), an international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in an international application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
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The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Processes, Products, and/or Apparatuses:
Products, processes of manufacture, processes of use, and apparatuses are different categories of invention. When an application includes claims to more than one product, process, or apparatus, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the “main invention” in the claims. In the case of non-compliance with unity of invention and where no additional fees are timely paid, the international search and/or international preliminary examination, as appropriate, will be based on the main invention in the claims. See PCT Article 17(3)(a), 37 CFR 1.475(d), 37 CFR 1.476(c) and 37 CFR 1.488(b)(3).
As provided in 37 CFR 1.475(b), an international application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Examiner Note:
1. Begin all Lack of Unity actions for PCT applications during the international phase (including species) with this heading.
2. Follow with form paragraphs 18.06 - 18.06.02, 18.07 - 18.07.03, as appropriate.
3. Use form paragraph 18.18 for lack of unity in U.S. national stage applications submitted under 35 U.S.C. 371 .
¶ 18.06 Lack of Unity - Three Groups of Claims
Group [1], claim(s) [2], drawn to [3].
Group [4], claim(s) [5], drawn to [6].
Group [7], claim(s) [8], drawn to [9].
Examiner Note:
1. In brackets 1, 4 and 7, insert Roman numerals for each Group.
2. In brackets 2, 5 and 8, insert respective claim numbers.
3. In brackets 3, 6 and 9, insert respective names of grouped inventions.
¶ 18.06.01 Lack of Unity - Two (or Additional) Groups of Claims
Group [1], claim(s) [2], drawn to [3].
Group [4], claim(s) [5], drawn to [6].
Examiner Note:
This form paragraph may be used alone or following form paragraph 18.06.
¶ 18.06.02 Lack of Unity - One Additional Group of Claims
Group [1], claim(s) [2], drawn to [3].
Examiner Note:
This form paragraph may be used following either form paragraph 18.06 or 18.06.01.
¶ 18.07 Lack of Unity - Reasons Why Inventions Lack Unity
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Examiner Note:
Follow with form paragraphs 18.07.01 through 18.07.03, as appropriate.
¶ 18.07.01 Same or Corresponding Technical Feature Lacking Among Groups
[1] lack unity of invention because the groups do not share the same or corresponding technical feature.
Examiner Note:
1. This form paragraph may be used, for example, where the claims of Group I are directed to A + B, whereas the claims of Group II are directed to C + D, and thus the groups do not share a technical feature.
2. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national
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stage applications under 35 U.S.C. 371 , identify the groups involved by Roman numerals (e.g., “Groups I and II”) where inventions have been grouped using form paragraphs 18.06 - 18.06.02, or identify the species involved where species have been listed using form paragraph 18.20.
¶ 18.07.02 Shared Technical Feature Does Not Make a Contribution Over the Prior Art
[1] lack unity of invention because even though the inventions of these groups require the technical feature of [2], this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of [3]. [4]
Examiner Note:
1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the groups involved by Roman numerals (e.g., “Groups I and II”) where inventions have been grouped using form paragraphs 18.06 - 18.06.02, or identify the species involved where species have been listed using form paragraph 18.20.
2. In bracket 2, identify the technical feature shared by the groups.
3. In bracket 3, insert citation of prior art reference(s) demonstrating the shared technical feature does not make a contribution over the prior art. Whether a particular technical feature makes a “contribution” over the prior art, and, therefore, constitutes a “special technical feature,” is considered with respect to novelty and inventive step.
4. In bracket 4, explain how the shared technical feature lacks novelty or inventive step in view of the reference(s).
¶ 18.07.03 Heading – Chemical Compound Alternatives of Markush Group Are Not of a Similar Nature
Where a single claim defines alternatives of a Markush group, the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2, is considered met when the alternatives are of a similar nature. When the Markush grouping is for alternatives of chemical compounds, the alternatives are regarded as being of a similar nature where the following criteria are fulfilled:
(A) all alternatives have a common property or activity; AND
(B)
(1) a common structure is present, that is, a significant structural element is shared by all of the alternatives; OR
(B)
(2) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.
The phrase “significant structural element is shared by all of the alternatives” refers to cases where the compounds share a common chemical structure which occupies a large portion of their structures, or in case the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion in view of existing prior art, and the common structure is essential to the common property or activity.
The phrase “recognized class of chemical compounds” means that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention, i.e. each member could be substituted one for the other, with the expectation that the same intended result would be achieved.
Examiner Note:
1. This heading should be used when the chemical alternatives of a Markush group are determined to lack unity of invention.
2. Follow with form paragraphs listed using form paragraphs 18.07.03a - 18.07.03c, as appropriate.
¶ 18.07.03a Alternatives Lack Common Property or Activity
The chemical compounds of [1] are not regarded as being of similar nature because all of the alternatives do not share a common property or activity. [2]
Examiner Note:
1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the species involved where species have been listed using form paragraph 18.20.
2. In bracket 2, insert reasoning.
¶ 18.07.03b Alternatives Share a Common Structure - However, the Common Structure is Not a Significant Structural Element and the Alternatives Do Not Belong to a Recognized Class
Although the chemical compounds of [1] share a common structure of [2], the common structure is not a significant structural element because it represents only a small portion of the compound structures and does not constitute a structurally distinctive portion in view of [3]. Further, the compounds of these groups do not belong to a recognized class of chemical compounds. [4]
Examiner Note:
1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the species involved where species have been listed using form paragraph 18.20.
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2. In bracket 2, identify common structure.
3. In bracket 3, insert citation of prior art reference(s) relied upon to demonstrate the commonly shared structure is not distinctive.
4. In bracket 4, explain why the compounds do not belong to a recognized class of chemical compounds.
¶ 18.07.03cAlternatives Do Not Share a Common Structure or Belong to Recognized Class
The chemical compounds of [1] are not regarded as being of similar nature because: (1) all the alternatives do not share a common structure and (2) the alternatives do not all belong to a recognized class of chemical compounds. [2]
Examiner Note:
1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the species involved where species have been listed using form paragraph 18.20.
2. In bracket 2, insert reasoning.
X. PROTEST PROCEDURE
PCT Administrative Instructions Section 502.
Transmittal of Protest Against Payment of Additional Fees and Decision Thereon Where International Application Is
Considered to Lack Unity of Invention
The International Searching Authority shall transmit to the applicant, preferably at the latest together with the international search report, any decision which it has taken under Rule 40.2(c) on the protest of the applicant against payment of additional fees where the international application is considered to lack unity of invention. At the same time, it shall transmit to the International Bureau a copy of both the protest and the decision thereon, as well as any request by the applicant to forward the texts of both the protest and the decision thereon to the designated Offices.
37 CFR 1.477 Protest to lack of unity of invention before the International Searching Authority.
(a) If the applicant disagrees with the holding of lack of unity of invention by the International Searching Authority, additional fees may be paid under protest, accompanied by a request for refund and a statement setting forth reasons for disagreement or why the required additional fees are considered excessive, or both (PCT Rule 40.2(c)).
(b) Protest under paragraph (a) of this section will be examined by the Director or the Director’s designee. In the event that the applicant’s protest is determined to be justified, the additional fees or a portion thereof will be refunded.
(c) An applicant who desires that a copy of the protest and the decision thereon accompany the international search report
when forwarded to the Designated Offices may notify the International Searching Authority to that effect any time prior to the issuance of the international search report. Thereafter, such notification should be directed to the International Bureau (PCT Rule 40.2(c)).
The applicant may protest the allegation of lack of unity of invention or that the number of required additional fees is excessive and request a refund of the additional fee(s) paid. If, and to the extent that, the International Searching Authority finds the protest justified, the fee(s) are refunded (PCT Rule 40.2(c)). (The additional search fees must be paid for any protest to be considered.)
Protest of allegation of lack of unity is in the form of a reasoned statement accompanying payment of the additional fee, explaining why the applicant believes that the requirements of unity of invention are fulfilled and fully taking into account the reasons indicated in the invitation to pay additional fees issued by the International Searching Authority. Any such protest filed with the U.S. International SearchingAuthority will be decided by a Technology Center Director (MPEP § 1002.02(c) item (2)). To the extent applicant’s protest is found to be justified, total or partial reimbursement of the additional fee will be made. On the request of the applicant, the text of both the protest and the decision thereon is sent to the designated Offices together with the international search report (37 CFR 1.477(c)).
XI. NOTIFICATION OF DECISION ON PROTEST
A Notification of Decision of Protest or Declaration That Protest Considered Not to Have Been Made (Form PCT/ISA/212) is used by the Technology Center (TC) to inform the applicant of the decision regarding applicant’s protest on the payment of additional fees concerning unity of invention. The TC checks the appropriate box, i.e., 1 or 2. If box 2 is checked, a clear and concise explanation as to why the protest concerning the unity of invention was found to be unjustified must be given. Since the space is limited, supplemental attachment sheet(s) should be incorporated whenever necessary.
XII. AUTHORIZED OFFICER
Form PCT/ISA/212 must be signed by a TC Director. See MPEP § 1002.02(c), item (2).
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XIII. UNITY OF INVENTION - NUCLEOTIDE SEQUENCES
Under 37 CFR 1.475 and 1.499 et seq., when claims do not comply with the requirement of unity of invention, i.e., when the claimed subject matter does not involve “one or more of the same or corresponding special technical features,” 37 CFR 1.475(a), an additional fee is required to maintain the claims in the same application. 37 CFR 1.476(b).
Nucleotide sequences encoding the same protein are considered to satisfy the unity of invention standard and will continue to be examined together.
Examples concerning Unity of Invention involving biotechnological inventions may be found in Chapter 10 of the International Search and Preliminary Examination Guidelines which can be obtained from the Patent Examiner’s Toolkit link or from the W I P O ’ s w e b s i t e (www.wipo.int/pct/en/texts/gdlines.html).
1851 Identification of Patent Documents [R-07.2015]
The examiner, in completing the international search report as well as the written opinion and international preliminary examination report, is required to cite the references in accordance with the provisions of Administrative Instructions Sections 503 and 611 and WIPO Standard ST.14. These sections of the Administrative Instructions require reference citations to include, in addition to other information which is apparent from the forms which the examiner fills out, an indication of the two-letter country code of the country or entity issuing or publishing the document and the standard code for identifying the kind of patent document. The discussion which follows is limited to the identification of patent documents (and nonpatent publications) and a listing of the two-letter country codes for countries or other entities which issue or publish industrial property information.
The standard codes for identifying different kinds of patent documents are found in the “WIPO Handbook on Industrial Property Information and Documentation” - WIPO Standard ST.16 which is published by the World Intellectual Property
Organization. The listing is extensive. The Quality Assurance Specialists in each Technology Center (TC) have a complete copy of Standard ST.16. It is also accessible on WIPO’s website (www.wipo.int/standards/en/part_03_standards.html). Provided herein is an abbreviated version representing the countries and codes commonly used by the examiner in preparing search reports.
U.S. patents published before January 2, 2001, are CodeA documents generally. Beginning with patents published on January 2, 2001, U.S. patents are Code B documents. Patent Application Publications, first published on March 15, 2001, are Code A documents. Reexamination certificates published before January 2, 2001, are Code B documents. Reexamination certificates published on or after January 2, 2001, are Code C documents. Tables providing a complete list of the kind codes of patents and other documents published by the USPTO are included in MPEP § 901.04(a). All nonpatent literature documents are Code N. Numerical designations are sometimes found on published documents along with the letter code designation. These should be used by the examiner only if such numerical designation is on the document. Numerical codes along with letter codes can be found, for example, on certain published patent documents such as the German Offenlegungsschrift and published international applications. If numerical designations are not provided, the examiner should use only the letter code designation.
The most commonly cited documents are patents and published patent applications. A guideline for the citation of such documents is listed below. The listing is indicated in the order in which the elements should be listed.
In the case of a patent or published patent application:
(A) The Office that issued the document, by the two letter code (WIPO Standard ST.3);
(B) The number of the document as given to it by the Office that issued it (for Japanese patent documents the indication of the year of the reign of the Emperor must precede the serial number of the patent document);
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(C) The kind of document, by the appropriate symbols as indicated on the document under WIPO Standard ST.16 or, if not indicated on that document, as provided in that Standard, if possible;
(D) The name of the patentee or applicant (in capital letters, where appropriate, abbreviated);
(E) The date of publication of the cited patent document or, in case of a corrected patent document, the date of issuance of the corrected patent document as referred to under INID code (48) of WIPO Standard ST.9 and, if provided on the document, the supplementary correction code as referred to under INID code (15);
(F) Where applicable, the pages, columns, lines or paragraph numbers where the relevant passages appear, or the relevant figures of the drawings.
The following examples illustrate the citation of a patent document as indicated above:
JP 10-105775A (NCR INTERNATIONAL INC.) 24April 1998 (24.04.1998) paragraphs 26 to 30.
DE 3744403 A1 (JOSEK, A.) 29 August 1991 (29-08-1991), page 1, abstract.
US 5,635,683 A (MCDERMOTT, R. M. et al.) 03 June 1997 (03/06/1997), column 7, lines 21 to 40.
STANDARD CODE FOR THE IDENTIFICATION OF DIFFERENT KINDS OF PATENT DOCUMENTS
The Code, WIPO Standard ST.16 is subdivided into mutually exclusive groups of letters. The groups characterize patent documents, nonpatent literature documents (N), and restricted documents (X). Groups 1-7 comprise letters enabling identification of documents pertaining to different publication levels.
Part 7.3 "Examples and Kinds of Patent Documents" provides, in the first document (Part 7.3.1), examples of patent documents, previously and currently published, or intended to be published, listed according to code. The second document (Part 7.3.2) contains a listing, in alphabetical order of issuing industrial property office, of kinds of patent documents and their codes, as applied by the offices. Finally, the third document (Part 7.3.3) provides access to a collection of samples of first pages of
patent documents published by industrial property offices.
Country Codes
The two-letter country codes are set forth in WIPO Standard ST.3, which is published in the “WIPO Handbook on Industrial Property Information and Documentation” and is accessible via the Internet at t h e W I P O w e b s i t e (www.wipo.int/standards/en/part_03_standards.html). WIPO Standard ST.3 provides, in Annex A, Section 1, a listing of two-letter country codes and/or organizational codes in alphabetic sequence of their short names for the states, other entities and intergovernmental organizations issuing or publishing industrial property documents. Codes for states or organizations that existed on January 1, 1978, but that no longer exist are provided in Annex B, Section 2. Annex B, Section 1 lists States for which the Codes have changed.
1852 Taking Into Account Results of Earlier Search(es) [R-07.2015]
PCT Rule 41
Taking into Account Results of Earlier Search
41.1 Taking into Account Results of Earlier Search
Where the applicant has, under Rule 4.12, requested the International Searching Authority to take into account the results of an earlier search and has complied with Rule 12 bis.1 and:
(i) the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, the International Searching Authority shall, to the extent possible, take those results into account in carrying out the international search;
(ii) the earlier search was carried out by another International Searching Authority, or by an Office other than that which is acting as the International Searching Authority, the International Searching Authority may take those results into account in carrying out the international search.
37 CFR 1.104 Nature of examination.
(a) Examiner’s action.
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(3) An international-type search will be made in all national applications filed on and after June 1, 1978.
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(4) Any national application may also have an international-type search report prepared thereon at the time of the national examination on the merits, upon specific written request therefor and payment of the international-type search report fee set forth in § 1.21(e). The Patent and Trademark Office does not require that a formal report of an international-type search be prepared in order to obtain a search fee refund in a later filed international application.
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PCT Rule 4.12 provides that the applicant may request that the results of an earlier international, international-type or national search carried out by the same or another International Searching Authority or by a national Office be used in establishing an international search report on such international application.
See MPEP § 1819. An international-type search is conducted on all U.S. nonprovisional applications filed after June 1, 1978.
When specifically requested by the applicant, the examiner is required to prepare an international search report taking into account the results of an earlier search. The examiner can determine whether applicant has requested the ISA/US to use the results of an earlier search by inspecting Box No. VII of the PCT Request. Box No. VII of the Request also allows applicant to indicate that certain documents relating to the earlier search are either available to the Authority or are being transmitted thereto.
Where the applicant has requested the United States International Searching Authority (ISA/US) to take into account earlier search results from a foreign Office and where a copy of the earlier search results (and a translation into English where the search results are in a foreign language) and copies of the documents cited therein (other than copies of U.S. patents and U.S. patent application publications) have been provided, the examiner shall take into account such earlier search results. Where the earlier search results (including any required translation thereof) or any copies of the documents cited therein (other than copies of U.S. patents and U.S. patent application publications) have not been furnished and therefore are not of record in the file, whether the earlier foreign Office search results will be taken into account is at the examiner's discretion.
It is emphasized that when taking into account the results of an earlier search, the examiner is not bound by the results of the earlier search. The process of taking into account earlier search results consists of a cursory review of the provided results, followed by a more comprehensive inspection of the cited references if warranted. The forms used in preparing the international search report do not provide for indicating either that the results of an earlier search have been taken into account or the extent to which the results of an earlier search have been taken into account and, accordingly, the examiner need not make such indications in the international search report.
1853 Amendment Under PCT Article 19 [R-07.2015]
PCT Article 19
Amendment of the Claims before the International Bureau
(1) The applicant shall, after having received the international search report, be entitled to one opportunity to amend the claims of the international application by filing amendments with the International Bureau within the prescribed time limit. He may, at the same time, file a brief statement, as provided in the Regulations, explaining the amendments and indicating any impact that such amendments might have on the description and the drawings.
(2) The amendments shall not go beyond the disclosure in the international application as filed.
(3) If the national law of any designated State permits amendments to go beyond the said disclosure, failure to comply with paragraph (2) shall have no consequence in that State.
PCT Rule 46
Amendment of Claims Before the International Bureau
46.1 Time Limit
The time limit referred to in Article 19 shall be two months from the date of transmittal of the international search report to the International Bureau and to the applicant by the International Searching Authority or 16 months from the priority date, whichever time limit expires later, provided that any amendment made under Article 19 which is received by the International Bureau after the expiration of the applicable time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the technical preparations for international publication have been completed.
46.2 Where to File
Amendments made under Article 19 shall be filed directly with the International Bureau.
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46.3 Language of Amendments
If the international application has been filed in a language other than the language in which it is published, any amendment made under Article 19 shall be in the language of publication.
46.4 Statement
(a) The statement referred to in Article 19(1) shall be in the language in which the international application is published and shall not exceed 500 words if in the English language or if translated into that language. The statement shall be identified as such by a heading, preferably by using the words “Statement under Article 19(1)” or their equivalent in the language of the statement.
(b) The statement shall contain no disparaging comments on the international search report or the relevance of citations contained in that report. Reference to citations, relevant to a given claim, contained in the international search report may be made only in connection with an amendment of that claim.
46.5. Form of Amendments
(a) The applicant, when making amendments under Article 19, shall be required to submit a replacement sheet or sheets containing a complete set of claims in replacement of all the claims originally filed.
(b) The replacement sheet or sheets shall be accompanied by a letter which:
(i) shall identify the claims which, on account of the amendments, differ from the claims originally filed, and shall draw attention to the differences between the claims originally filed and the claims as amended;
(ii) shall identify the claims originally filed which, on account of the amendments, are cancelled.
(iii) shall indicate the basis for the amendments in the application as filed.
PCT Administrative Instructions Section 205.
Numbering and Identification of Claims Upon Amendment
(a) Amendments to the claims under Article 19 or Article 34(2)(b) may be made either by cancelling one or more entire claims, by adding one or more new claims or by amending the text of one or more of the claims as filed. Where a claim is cancelled, no renumbering of the other claims shall be required. In all cases where claims are renumbered, they shall be renumbered consecutively in Arabic numerals.
(b) The applicant shall, in the letter referred to in the second and third sentences of Rule 46.5(b) or Rule 66.8(c) indicate the differences between the claims as filed and the claims as amended or, as the case may be, differences between the claims as previously amended and currently amended. He shall, in particular, indicate in the said letter, in connection with each claim appearing in the international application (it being understood that identical indications concerning several claims may be grouped), whether:
(i) the claim is unchanged;
(ii) the claim is cancelled;
(iii) the claim is new;
(iv) the claim replaces one or more claims as filed;
(v) the claim is the result of the division of a claim as filed;
(vi) the claim replaces one or more claims as previously amended;
(vii) the claim is the result of the division of a claim as previously amended
The applicant is entitled, under Article 19, to one opportunity to amend the claims of the international application in the international phase. Further opportunities to amend the claims, and also the description and the drawings, are available during the international phase under Article 34 if, and only if, the applicant files a Demand for international preliminary examination. Any amendment to the claims under Article 19 must be filed with the International Bureau – not with the receiving Office nor with the International Searching Authority. The amendments must be in the language in which the international application is published.
The opportunity to make amendments under Article 19 is available after the applicant has received the international search report and the written opinion of the International Search Authority, and remains available until the end of 16 months from the priority date or two months after the transmittal (that is, the date of mailing) of that report and opinion, whichever expires later. Amendments received by the International Bureau after the time limit are still accepted if they have been received before the technical preparations for international publication have been completed. Amendments to the claims under Article 19 are not allowed where the International Searching Authority has declared, under Article 17(2), that no international search report would be established. If the amendments to the claims are timely received by the International Bureau, such amendments will be published as part of the publication of the international application directly following the claims as filed. Article 19 offers applicants the opportunity to generally amend the claims before entering the designated Offices. The national laws of some designated Offices may grant provisional protection on the invention from
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the date of publication of the claims. Therefore, some applicants take advantage of the opportunity under Article 19 to polish the claims anticipating provisional protection. See PCT Rule 46.5.
The submission of Article 19 amendments should comprise:
(i) a complete set of claims in replacement of the claims originally filed
(ii) a letter which must indicate the differences between the claims as filed and those as amended plus the basis for the amendments
(iii) an optional statement under Article 19
When filing amendments to the claims under Article 19, the applicant is required to file a sheet or sheets containing a complete set of claims in replacement of the claims originally filed. The replacement sheet or sheets must be accompanied by a letter drawing attention to the differences between the claims as filed and the claims as amended. It must also indicate the basis for the amendment to the claims with specific references to particular parts of the application as originally filed, as illustrated in the Example below. Where an amendment results in the cancellation of an entire sheet of the international application as originally filed, the amendment (that is, the cancellation) is evidenced only by the letter addressed to the International Bureau. Amendments may consist in the cancellation of one or more entire claims, in the addition of one or more new claims, or in the amendment of the text of one or more of the claims as filed. All the claims appearing on a replacement sheet must be numbered in Arabic numerals (corresponding to the order of the claims). Where a claim is cancelled, no renumbering of the other claims is required. However, where the applicant does renumber claims, they must be renumbered consecutively.
The letter, which must accompany the replacement sheets containing amendments to the claims, must indicate firstly the differences between the claims as filed and those as amended and secondly the basis for the amendments in the application as filed. This should be done by stating, in connection with each claim appearing in the international application, whether:
(i) the claim is unchanged,
(ii) the claim is cancelled;
(iii) the claim is new;
(iv) the claim replaces one or more claims as filed;
(v) the claim is the result of the division of a claim as filed, etc.
The replacement sheets containing the amended claims should not, however, contain marked-up text; they should contain clean text only. This should be followed by an indication of the basis for the amendments in the application as filed. The basis for the amendments has to be indicated so that the examiner may, by consulting those precise references in the application, assess whether the amendments contain subject-matter which extends beyond the disclosure of the application as filed. Therefore, non-specific indications such as “see the description as filed” or “see the claims as filed” are generally not considered sufficient for an indication of the basis for the amendment.
Example:
“Claim 1 amended; claims 2 to 7 unchanged; claims 8 and 9 amended; claims 10 to 14 cancelled; claims 15 to 17 unchanged; new claim 18 added.
(i) Basis for the amendment: Claim 1 has been amended at lines 4 and 11 to 14 and now indicates that the filter comprises a periodic backwashing means serially coupled to a first and second chamber. The basis for this amendment can be found in original claims 2 and 4 as filed.
(ii) Basis for the amendment: Concerning amended claims 8 and 9, the indication of ‘quick-fire piston’ is in paragraph Nos. 2 and 19 in the description as filed.
(iii) Basis for the amendment: Claim 18 is new, the indication is in drawing No. III of the original application.”
Any amendment may be accompanied by a brief statement by the applicant explaining the amendment and indicating any impact it might have on the description and the drawings. Such a statement is published together with the international application itself. Statements not referring to a specific amendment are not permitted. The statement must not exceed 500 words if in English or when translated into English. It may not contain
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disparaging comments on the international search report or on the relevance of any of the citations contained in that report. References to certain citations in the report may be made only in connection with an amendment made to a specific claim. The statement must be in the language in which the international application is published.
A statement explaining the amendment is not to be confused with and must be clearly distinguished from the letter indicating the differences between the claims as filed and those as amended and the basis for the amendment. It is also distinct from the statement concerning amendments which must be included in a demand for international preliminary examination. It must therefore be identified as such by a heading “Statement under Article 19(1).” Where the statement does not comply with the requirements, it is neither published by the International Bureau nor communicated to the designated Offices.
The PCT provides that amendments are not to go beyond the disclosure in the international application as filed. This requirement is not directly enforceable during Chapter I of the international phase, but failure to comply with it may have adverse consequences for the applicant during the international preliminary examination and in the national phase.
1854 -1855 [Reserved]
1856 Supplementary International Searches [R-07.2015]
PCT Rule 45 bis
Supplementary International Searches
45 bis.1 Supplementary Search Request
(a) The applicant may, at any time prior to the expiration of 19 months from the priority date, request that a supplementary international search be carried out in respect of the international application by an International Searching Authority that is competent to do so under Rule 45 bis.9. Such requests may be made in respect of more than one such Authority.
(b) A request under paragraph (a) (“supplementary search request”) shall be submitted to the International Bureau and shall indicate:
(i) the name and address of the applicant and of the agent (if any), the title of the invention, the international filing date and the international application number;
(ii) the International Searching Authority that is requested to carry out the supplementary international search (“Authority specified for supplementary search”); and
(iii) where the international application was filed in a language which is not accepted by that Authority, whether any translation furnished to the receiving Office under Rule 12.3 or 12.4 is to form the basis of the supplementary international search.
(c) The supplementary search request shall, where applicable, be accompanied by:
(i) where neither the language in which the international application was filed nor that in which a translation (if any) has been furnished under Rule 12.3 or 12.4 is accepted by the Authority specified for supplementary search, a translation of the international application into a language which is accepted by that Authority;
(ii) preferably, a copy of a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, if required by the Authority specified for supplementary search.
(d) Where the International Searching Authority has found that the international application does not comply with the requirement of unity of invention, the supplementary search request may contain an indication of the wish of the applicant to restrict the supplementary international search to one of the inventions as identified by the International Searching Authority other than the main invention referred to in Article 17(3)(a).
(e) The supplementary search request shall be considered not to have been submitted, and the International Bureau shall so declare:
(i) if it is received after the expiration of the time limit referred to in paragraph (a); or
(ii) if the Authority specified for supplementary search has not stated, in the applicable agreement under Article 16(3)(b), its preparedness to carry out such searches or is not competent to do so under Rule 45 bis.9(b).
45 bis.2 Supplementary Search Handling Fee
(a) The supplementary search request shall be subject to the payment of a fee for the benefit of the International Bureau (“supplementary search handling fee”) as set out in the Schedule of Fees.
(b) The supplementary search handling fee shall be paid in the currency in which the fee is set out in the Schedule of Fees or in any other currency prescribed by the International Bureau. The amount in such other currency shall be the equivalent, in round figures, as established by the International Bureau, of the
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amount as set out in the Schedule of Fees, and shall be published in the Gazette.
(c) The supplementary search handling fee shall be paid to the International Bureau within one month from the date of receipt of the supplementary search request. The amount payable shall be the amount applicable on the date of payment.
(d) The International Bureau shall refund the supplementary search handling fee to the applicant if, before the documents referred to in Rule 45 bis.4(e)(i) to (iv) are transmitted to the Authority specified for supplementary search, the international application is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or is considered not to have been submitted under Rule 45 bis.1(e).
45 bis.3 Supplementary Search Fee
(a) Each International Searching Authority carrying out supplementary international searches may require that the applicant pay a fee (“supplementary search fee”) for its own benefit for carrying out such a search.
(b) The supplementary search fee shall be collected by the International Bureau. Rules 16.1(b) to (e) shall apply mutatis mutandis.
(c) As to the time limit for payment of the supplementary search fee and the amount payable, the provisions of Rule 45 bis.2(c) shall apply mutatis mutandis.
(d) The International Bureau shall refund the supplementary search fee to the applicant if, before the documents referred to in Rule 45 bis.4(e)(i) to (iv) are transmitted to the Authority specified for supplementary search, the international application is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or is considered not to have been submitted under Rule 45 bis.1(e) or 45 bis.4(d).
(e) The Authority specified for supplementary search shall, to the extent and under the conditions provided for in the applicable agreement under Article 16(3)(b), refund the supplementary search fee if, before it has started the supplementary international search in accordance with Rule 45 bis.5(a), the supplementary search request is considered not to have been submitted under Rule 45 bis.5(g).
45 bis.4 Checking of Supplementary Search Request; Correction of Defects; Late Payment of Fees; Transmittal to Authority Specified for Supplementary Search
(a) Promptly after receipt of a supplementary search request, the International Bureau shall check whether it complies with the requirements of Rule 45 bis.1(b) and (c)(i) and shall invite the applicant to correct any defects within a time limit of one month from the date of the invitation.
(b) Where, by the time they are due under Rules 45 bis.2(c) and 45 bis.3(c), the International Bureau finds that the supplementary search handling fee and the supplementary search fee have not been paid in full, it shall invite the applicant to pay to it the amount required to cover those fees, together with the late payment fee under paragraph (c), within a time limit of one month from the date of the invitation.
(c) The payment of fees in response to an invitation under paragraph (b) shall be subject to the payment to the International Bureau, for its own benefit, of a late payment fee whose amount shall be 50% of the supplementary search handling fee.
(d) If the applicant does not furnish the required correction or does not pay the amount in full of the fees due, including the late payment fee, before the expiration of the time limit applicable under paragraph (a) or (b), respectively, the supplementary search request shall be considered not to have been submitted and the International Bureau shall so declare and shall inform the applicant accordingly.
(e) On finding that the requirements of Rule 45 bis.1(b) and (c)(i), 45 bis.2(c) and 45 bis.3(c) have been complied with, the International Bureau shall promptly, but not before the date of receipt by it of the international search report or the expiration of 17 months from the priority date, whichever occurs first, transmit to the Authority specified for supplementary search a copy of each of the following:
(i) the supplementary search request;
(ii) the international application;
(iii) any sequence listing furnished under Rule 45 bis.1(c)(ii); and
(iv) any translation furnished under Rule 12.3, 12.4 or 45 bis.1(c)(i) which is to be used as the basis of the supplementary international search; and, at the same time, or promptly after their later receipt by the International Bureau:
(v) the international search report and the written opinion established under Rule 43 bis.1;
(vi) any invitation by the International Searching Authority to pay additional fees referred to in Article 17(3)(a); and
(vii) any protest by the applicant under Rule 40.2(c) and the decision thereon by the review body constituted in the framework of the International Searching Authority.
(f) Upon request of the Authority specified for supplementary search, the written opinion referred to in paragraph (e)(v) shall, when not in English or in a language accepted by that Authority, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to that Authority within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.
45 bis.5 Start, Basis and Scope of Supplementary International Search
(a) The Authority specified for supplementary search shall start the supplementary international search promptly after receipt of the documents specified in Rule 45 bis.4(e)(i) to (iv), provided that the Authority may, at its option, delay the start of the search until it has also received the documents specified in
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Rule 45 bis.4(e)(v) or until the expiration of 22 months from the priority date, whichever occurs first.
(b) The supplementary international search shall be carried out on the basis of the international application as filed or of a translation referred to in Rule 45 bis.1(b)(iii) or 45 bis.1(c)(i), taking due account of the international search report and the written opinion established under Rule 43.1 where they are available to the Authority specified for supplementary search before it starts the search. Where the supplementary search request contains an indication under Rule 45 bis.1(d), the supplementary international search may be restricted to the invention specified by the applicant under Rule 45 bis.1(d) and those parts of the international application which relate to that invention.
(c) For the purposes of the supplementary international search, Article 17(2) and Rules 13 ter.1, 33 and 39 shall apply mutatis mutandis.
(d) Where the international search report is available to the Authority specified for supplementary search before it starts the search under paragraph (a), that Authority may exclude from the supplementary search any claims which were not the subject of the international search.
(e) Where the International Searching Authority has made the declaration referred to in Article 17(2)(a) and that declaration is available to the Authority specified for supplementary search before it starts the search under paragraph (a), that Authority may decide not to establish a supplementary international search report, in which case it shall so declare and promptly notify the applicant and the International Bureau accordingly.
(f) The supplementary international search shall cover at least the documentation indicated for that purpose in the applicable agreement under Article 16(3)(b).
(g) If the Authority specified for supplementary search finds that carrying out the search is entirely excluded by a limitation or condition referred to in Rule 45 bis.9(a), other than a limitation under Article 17(2) as applicable by virtue of Rule 45 bis.5(c), the supplementary search request shall be considered not to have been submitted, and the Authority shall so declare and shall promptly notify the applicant and the International Bureau accordingly.
(h) The Authority specified for supplementary search may, in accordance with a limitation or condition referred to in Rule 45 bis.9(a), decide to restrict the search to certain claims only, in which case the supplementary international search report shall so indicate.
45 bis.6 Unity of Invention
(a) If the Authority specified for supplementary search finds that the international application does not comply with the requirement of unity of invention, it shall:
(i) establish the supplementary international search report on those parts of the international application which relate to the invention first mentioned in the claims (“main invention”);
(ii) notify the applicant of its opinion that the international application does not comply with the requirement
of unity of invention and specify the reasons for that opinion; and
(iii) inform the applicant of the possibility of requesting, within the time limit referred to in paragraph (c), a review of the opinion.
(b) In considering whether the international application complies with the requirement of unity of invention, the Authority shall take due account of any documents received by it under Rule 45 bis.4(e)(vi) and (vii) before it starts the supplementary international search.
(c) The applicant may, within one month from the date of the notification under paragraph (a)(ii), request the Authority to review the opinion referred to in paragraph (a). The request for review may be subjected by the Authority to the payment to it, for its own benefit, of a review fee whose amount shall be fixed by it.
(d) If the applicant, within the time limit under paragraph (c), requests a review of the opinion by the Authority and pays any required review fee, the opinion shall be reviewed by the Authority. The review shall not be carried out only by the person who made the decision which is the subject of the review. Where the Authority:
(i) finds that the opinion was entirely justified, it shall notify the applicant accordingly;
(ii) finds that the opinion was partially unjustified but still considers that the international application does not comply with the requirement of unity of invention, it shall notify the applicant accordingly and, where necessary, proceed as provided for in paragraph (a)(i);
(iii) finds that the opinion was entirely unjustified, it shall notify the applicant accordingly, establish the supplementary international search report on all parts of the international application and refund the review fee to the applicant.
(e) On the request of the applicant, the text of both the request for review and the decision thereon shall be communicated to the designated Offices together with the supplementary international search report. The applicant shall submit any translation thereof with the furnishing of the translation of the international application required under Article 22.
(f) Paragraphs (a) to (e) shall apply mutatis mutandis where the Authority specified for supplementary search decides to restrict the supplementary international search in accordance with the second sentence of Rule 45 bis.5(b) or with Rule 45 bis.5(h), provided that any reference in the said paragraphs to the “international application” shall be construed as a reference to those parts of the international application which relate to the invention specified by the applicant under Rule 45 bis.1(d) or which relate to the claims and those parts of the international application for which the Authority will carry out a supplementary international search, respectively.
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45 bis.7 Supplementary International Search Report
(a) The Authority specified for supplementary search shall, within 28 months from the priority date, establish the supplementary international search report, or make the declaration referred to in Article 17(2)(a) as applicable by virtue of Rule 45 bis.5(c) that no supplementary international search report will be established.
(b) Every supplementary international search report, any declaration referred to in Article 17(2)(a) as applicable by virtue of Rule 45 bis.5(c) and any declaration under Rule 45 bis.5(e) shall be in a language of publication.
(c) For the purposes of establishing the supplementary international search report, Rules 43.1, 43.2, 43.5, 43.6, 43.6 bis, 43.8 and 43.10 shall, subject to paragraphs (d) and (e), apply mutatis mutandis. Rule 43.9 shall apply mutatis mutandis,
except that the references therein to Rules 43.3, 43.7 and 44.2 shall be considered non-existent. Article 20(3) and Rule 44.3 shall apply mutatis mutandis.
(d) The supplementary international search report need not contain the citation of any document cited in the international search report, except where the document needs to be cited in conjunction with other documents that were not cited in the international search report.
(e) The supplementary international search report may contain explanations:
(i) with regard to the citations of the documents considered to be relevant;
(ii) with regard to the scope of the supplementary international search.
45 bis.8 Transmittal and Effect of the Supplementary International Search Report
(a) The Authority specified for supplementary search shall, on the same day, transmit one copy of the supplementary international search report or the declaration that no supplementary international search report shall be established, as applicable, to the International Bureau and one copy to the applicant.
(b) Subject to paragraph (c), Article 20(1) and Rules 45.1, 47.1(d) and 70.7(a) shall apply as if the supplementary international search report were part of the international search report.
(c) A supplementary international search report need not be taken into account by the International Preliminary Examining Authority for the purposes of a written opinion or the international preliminary examination report if it is received by that Authority after it has begun to draw up that opinion or report.
45 bis.9 International Searching Authorities Competent to Carry Out Supplementary International Search
(a) An International Searching Authority shall be competent to carry out supplementary international searches if its preparedness to do so is stated in the applicable agreement under Article 16(3)(b), subject to any limitations and conditions set out in that agreement.
(b) The International Searching Authority carrying out the international search under Article 16(1) in respect of an international application shall not be competent to carry out a supplementary international search in respect of that application.
(c) The limitations referred to in paragraph (a) may, for example, include limitations as to the subject matter for which supplementary international searches will be carried out, other than limitations under Article 17(2) as applicable by virtue of Rule 45 bis.5(c), limitations as to the total number of supplementary international searches which will be carried out in a given period, and limitations to the effect that the supplementary international searches will not extend to any claim beyond a certain number of claims.
The supplementary international search (SIS) is an optional service that allows additional searches to be performed by a Supplementary International Searching Authority (SISA) during the international phase, in addition to the search performed by the main International Searching Authority (ISA). Requesting supplementary international search reduces the risk of new prior art being cited in the national phase. The increasing diversity of prior art in different languages and different technical fields means that the Authority carrying out the main international search is not always capable of discovering all of the relevant prior art. Requesting one or more supplementary international searches, during this early phase of the patent prosecution, expands both the linguistic and technical scope of the search. In addition, it may also be possible to have the supplementary search carried out in a State where an applicant is likely to enter the national phase later on.
Only an ISA that has stated its preparedness to carry out supplementary international searches (see the Annex SISA of the Applicant’s Guide at www.wipo.int/pct/en/appguide/index.jsp) and which is not the ISA that carried out the main international search, can be requested to carry out a SIS. The Authorities prepared to offer supplementary international searches may specify any limitations and conditions on this service in their agreement
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w i t h t h e I B ( s e e www.wipo.int/pct/en/access/isa_ipea_agreements.html). These limitations may include limitations as to the subject matter for which supplementary searches will be carried out, beyond those limitations that can be evoked in respect of the main international search, and limitations as to the total number of supplementary international searches which will be carried out in a given period.
The SIS will be carried out on the application as filed (amendments under PCT Article 19 and/or 34 will not be considered) and will only cover one invention or group of inventions having unity of invention – there is no option for paying additional fees for the searching of multiple inventions. However, if the main ISA has identified a lack of unity before SIS is requested, the latter can be requested to concentrate on an invention which is not necessarily the first one claimed (PCT Rule 45 bis.1(d)). If not established in English, the resulting supplementary international search report will be translated into English by the IB.
In many cases, requests for supplementary search will be filed once the applicant has received the main international search report. In any event, the applicant must file a request for a SIS prior to the expiration of 19 months from the priority date. If the request is received after the expiration of this time limit, it will be considered not to have been submitted and there are no provisions to extend this time limit. The requests for SIS must be submitted directly to the IB and not to an individual SISA. There is a supplementary search handling fee to cover the costs of the IB and a supplementary search fee set by each SISA. These fees must be paid to the IB in Swiss francs within one month of filing the request for SIS. Applicants from certain States may be eligible for a 90% reduction in the supplementary search handling fee.
1857 International Publication [R-07.2015]
PCT Article 21
International Publication
(1) The International Bureau shall publish international applications.
(2)
(a) Subject to the exceptions provided for in subparagraph (b) and in Article 64(3), the international publication of the international application shall be effected promptly after the expiration of 18 months from the priority date of that application.
(b) The applicant may ask the International Bureau to publish his international application any time before the expiration of the time limit referred to in subparagraph (a). The International Bureau shall proceed accordingly, as provided in the Regulations.
(3) The international search report or the declaration referred to in Article 17(2)(a) shall be published as prescribed in the Regulations.
(4) The language and form of the international publication and other details are governed by the Regulations.
(5) There shall be no international publication if the international application is withdrawn or is considered withdrawn before the technical preparations for publication have been completed.
(6) If the international application contains expressions or drawings which, in the opinion of the International Bureau, are contrary to morality or public order, or if, in its opinion, the international application contains disparaging statements as defined in the Regulations, it may omit such expressions drawings, and statements, from its publications, indicating the place and number of words or drawings omitted, and furnishing, upon request, individual copies of the passages omitted.
PCT Article 29
Effects of the International Publication
(1) As far as the protection of any rights of the applicant in a designated State is concerned, the effects, in that State, of the international publication of an international application shall, subject to the provisions of paragraphs (2) to (4), be the same as those which the national law of the designated State provides for the compulsory national publication of unexamined national applications as such.
(2) If the language in which the international publication has been effected is different from the language in which publications under the national law are effected in the designated State, the said national law may provide that the effects provided for in paragraph (1) shall be applicable only from such time as:
(i) a translation into the latter language has been published as provided by the national law, or
(ii) a translation into the latter language has been made available to the public, by laying open for public inspection as provided by the national law, or
(iii) a translation into the latter language has been transmitted by the applicant to the actual or prospective unauthorized user of the invention claimed in the international application, or
(iv) both the acts described in (i) and (iii), or both the acts described in (ii) and (iii), have taken place.
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(3) The national law of any designated State may provide that, where the international publication has been effected, on the request of the applicant, before the expiration of 18 months from the priority date, the effects provided for in paragraph (1) shall be applicable only from the expiration of 18 months from the priority date.
(4) The national law of any designated State may provide that the effects provided for in paragraph (1) shall be applicable only from the date on which a copy of the international application as published under Article 21 has been received in the national Office of or acting for such State. The said Office shall publish the date of receipt in its gazette as soon as possible.
PCT Administrative Instructions Section 404
International Publication Number of International Application
The International Bureau shall assign to each published international application an international publication number which shall be different from the international application number. The international publication number shall be used on the published international application and in the Gazette entry. It shall consist of the two-letter code “WO” followed by a four-digit indication of the year of publication, a slant, and a serial number consisting of six digits (e.g., “WO 2004/123456”).
35 U.S.C. 374 Publication of international application.
The publication under the treaty defined in section 351(a), of an international application designating the United States shall be deemed a publication under section 122(b), except as provided in section 154(d).
The publication of international applications currently occurs every Thursday. Under PCT Article 20 and PCT Rules 47.1(a) and 93 bis.1, the International Bureau communicates published international applications to each of the designated Offices that have requested to receive such documents on the date specified by that Office. Published international applications are available f r o m t h e W I P O ’s Pa t e n t s c o p e (www.wipo.int/patentscope/en/).
PUBLICATION OF SEQUENCE LISTING FILED IN ELECTRONIC FORM
As of August 2, 2001, WIPO began to publish sequence listing parts of the description on the Internet. Sequence listings forming part of the international application may be filed in ASCII text (.txt) format. They need not be filed in paper or PDF in addition to .txt format. Sequence listing parts of the description may be viewed and downloaded on the page containing the published international a p p l i c a t i o n o r a t
www.patentscope.wipo.int/search/en/sequences.jsf. This page also contains a link to the remainder of the published international application.
The bibliographic page of a published international application includes the statement: “Published with sequence listing part of description.”
1858 [Reserved]
1859 Withdrawal of International Application, Designations, or Priority Claims [R-07.2015]
PCT Rule 90 bis
Withdrawals
90 bis.1 Withdrawal of the International Application
(a) The applicant may withdraw the international application at any time prior to the expiration of 30 months from the priority date.
(b) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
(c) No international publication of the international application shall be effected if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.
90 bis.2 Withdrawal of Designations
(a) The applicant may withdraw the designation of any designated State at any time prior to the expiration of 30 months from the priority date. Withdrawal of the designation of a State which has been elected shall entail withdrawal of the corresponding election under Rule 90 bis.4 .
(b) Where a State has been designated for the purpose of obtaining both a national patent and a regional patent, withdrawal of the designation of that State shall be taken to mean withdrawal of only the designation for the purpose of obtaining a national patent, except where otherwise indicated.
(c) Withdrawal of the designations of all designated States shall be treated as withdrawal of the international application under Rule 90 bis.1.
(d) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
(e) No international publication of the designation shall be effected if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International
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§ 1859PATENT COOPERATION TREATY
Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.
90 bis.3 Withdrawal of Priority Claims
(a) The applicant may withdraw a priority claim, made in the international application under Article 8(1), at any time prior to the expiration of 30 months from the priority date.
(b) Where the international application contains more than one priority claim, the applicant may exercise the right provided for in paragraph (a) in respect of one or more or all of the priority claims.
(c) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
(d) Where the withdrawal of a priority claim causes a change in the priority date, any time limit which is computed from the original priority date and which has not already expired shall, subject to paragraph (e), be computed from the priority date resulting from that change.
(e) In the case of the time limit referred to in Article 21(2)(a), the International Bureau may nevertheless proceed with the international publication on the basis of the said time limit as computed from the original priority date if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau after the completion of the technical preparations for international publication.
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90 bis.5 Signature
Any notice of withdrawal referred to in Rules 90 bis.1 to 90 bis.4 shall be signed by the applicant or, if there are two or more applicants, by all of them. An applicant who is considered to be the common representative under Rule 90.2(b) shall not be entitled to sign such a notice on behalf of the other applicants.
90 bis.6 Effect of Withdrawal
(a) Withdrawal under Rule 90 bis of the international application, any designation, any priority claim, the demand or any election shall have no effect in any designated or elected Office where the processing or examination of the international application has already started under Article 23(2) or Article 40(2).
(b) Where the international application is withdrawn under Rule 90 bis.1, the international processing of the international application shall be discontinued.
(c) Where the demand or all elections are withdrawn under Rule 90 bis.4, the processing of the international application by the International Preliminary Examining Authority shall be discontinued.
90 bis.7 Faculty Under Article 37(4)(b)
(a) Any Contracting State whose national law provides for what is described in the second part of Article 37(4)(b) shall notify the International Bureau in writing.
(b) The notification referred to in paragraph (a) shall be promptly published by the International Bureau in the Gazette, and shall have effect in respect of international applications filed more than one month after the date of such publication.
For a discussion of the withdrawal of the demand or of elections ( PCT Rule 90 bis.4), see MPEP § 1880.
Form PCT/IB/372 may be used by the applicant to make a withdrawal under any of PCT Rules 90 bis.1, 90 bis.2, 90 bis.3, and 90 bis.4. The form is available f r o m W I P O ’ s w e b s i t e (www.wipo.int/pct/en/forms/).
The applicant may withdraw the international application, the designation of any state, or a priority claim by a notice addressed to the International Bureau or to the receiving Office and received before the expiration of 30 months from the priority date. Where Article 39(1) applies, the notice may also be addressed to the International Preliminary Examining Authority. Any such withdrawal is free of charge. A notice of withdrawal must be signed by all the applicants. The provisions for waiver of a power of attorney set forth in PCT Rules 90.4(d) and 90.5(c) do not apply in the case of withdrawals under PCT Rule 90 bis. An appointed agent or appointed common representative may sign such a notice on behalf of the applicant or applicants who appointed him, but an applicant who is considered to be the common representative may not sign such a notice on behalf of the other applicants. For international applications filed prior to January 1, 2013, please see the version of PCT Rule 90 bis.5 in effect at that time.
The applicant may prevent international publication by withdrawing the international application, provided that the notice of withdrawal reaches the International Bureau before the completion of technical preparations for that publication. The notice of withdrawal may state that the withdrawal is to be effective only on the condition that international publication can still be prevented. In such a case the withdrawal is not effective if the condition on which it was made cannot be met that is, if the technical
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preparations for international publication have already been completed.
If all designations are withdrawn, the international application will be treated as withdrawn.
Where the withdrawal of a priority claim causes a change in the priority date of the international application, any time limit which is computed from the original priority date and which has not yet expired—for example, the time limit before which processing in the national phase cannot start—is computed from the priority date resulting from the change. (It is not possible to extend the time limit concerned if it has already expired when the priority claim is withdrawn.) Thus, international publication may be postponed by withdrawing the priority claim prior to publication. However, if the notice of withdrawal reaches the International Bureau after the completion of the technical preparations for international publication, the International Bureau may proceed with the international publication on the basis of the time limit for international publication as computed from the original priority date.
1860 International Preliminary Examination Procedure [R-07.2015]
I. EXAMINATION PROCEDURE
The international preliminary examination is to be carried out in accordance with PCT Article 34 and PCT Rule 66. After the demand is checked for compliance with PCT Rules 53 - 55, 57 and 58, the first step of the examiner is to study the description, the drawings (if any), the claims of the international application, the documents describing the prior art as cited in the international search report, and the written opinion established by the International Searching Authority. Furthermore, the examiner shall search at least to the point of bringing the previous search up to date and any new prior art discovered and applied must be made of record. See PCT Rule 66.1 ter.
A further written opinion is usually not mandatory where the written opinion of the International Searching Authority is treated as the first written opinion of the International Preliminary Examining
Authority. The United States International Preliminary Examining Authority will treat any written opinion of the International Searching Authority established by the USPTO, EPO, KIPO, IP Australia, Rospatent, ILPO, or JPO as the first written opinion of the International Preliminary Examining Authority.
Assuming the written opinion of the International Searching Authority is treated as the first written opinion of the International Preliminary Examining Authority, as noted above, no further written opinion need be issued before the international preliminary examination report, even if there are objections outstanding. The examiner takes into consideration any comments or amendments made by the applicant when establishing the international preliminary examination report.
II. FURTHER WRITTEN OPINION SHOULD BE ISSUED
A further written opinion should be prepared by the examiner if applicant files a response which includes a persuasive argument that the written opinion issued by the International Searching Authority was improper because of a negative opinion with respect to a lack of novelty, inventive step (non-obviousness) or industrial applicability as described in PCT Article 33(2) - (4); and which results in the examiner considering any of the claims to lack novelty, inventive step (non-obviousness) or industrial applicability as described in PCT Article 33(2) - (4) based on new art not necessitated by any amendment.
Any further written opinion established by the International Preliminary Examining Authority should set forth, as applicable:
(A) Any defects in the international application as described in PCT Article 34(4) concerning subject matter which is not required to be examined or which is unclear or inadequately supported;
(B) Any negative findings with respect to any of the claims because of a lack of novelty, inventive step (non-obviousness) or industrial applicability as described in PCT Article 33(2) - (4);
(C) Any defects in the form or contents of the international application;
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(D) Any finding by the examiner that an amendment goes beyond the disclosure in the international application as originally filed;
(E) Any observation which the examiner wishes to make on the clarity of the claims, the description, the drawings or to the question whether the claims are fully supported by the description (PCT Rule 66.2);
(F) Any decision by the examiner not to carry out the international preliminary examination on a claim for which no international search report was issued; or
(G) If the examiner considers that no acceptable nucleotide and/or amino acid sequence listing is available in a form that would allow a meaningful international preliminary examination to be carried out.
The further written opinion is prepared on Form PCT/IPEA/408 to notify applicant of the defects found in the international application. The examiner is further required to fully state the reasons for his/her opinion (PCT Rule 66.2(b)) and invite a written reply, with amendments where appropriate (PCT Rule 66.2(c)), normally setting a 2 month time limit for the reply.
The applicant may reply to the invitation by making amendments or, if applicant disagrees with the opinion of the examiner, by submitting arguments, as the case may be, or both.
The U.S. Rules of Practice pertaining to international preliminary examination of international applications permit a second written opinion in those cases where sufficient time is available. Normally only one written opinion will be issued. Any reply received after the expiration of the set time limit will not normally be considered in preparing the international preliminary examination report. In situations, however, where the examiner has requested an amendment or where a later amendment places the application in better condition for examination, the amendment may be considered by the examiner.
If the applicant does not reply to any further written opinion established by the International Preliminary Examining Authority within the set time period, the international preliminary examination report will be
prepared after expiration of the time limit plus sufficient time to have any reply clear the Mail Center.
1861 [Reserved]
1862 Agreement With the International Bureau To Serve as an International Preliminary Examining Authority [R-07.2015]
PCT Article 32
The International Preliminary Examining Authority
(1) International preliminary examination shall be carried out by the International Preliminary Examining Authority
(2) In the case of demands referred to in Article 31(2)(a), the receiving Office, and, in the case of demands referred to in Article 31(2)(b), the Assembly, shall, in accordance with the applicable agreement between the interested International Preliminary Examining Authority or Authorities and the International Bureau, specify the International Preliminary Examining Authority or Authorities competent for the preliminary examination.
(3) The provisions of Article 16(3) shall apply, mutatis mutandis, in respect of the International Preliminary Examining Authorities.
PCT Article 34
Procedure before the International Preliminary Examining Authority
(1) Procedure before the International Preliminary Examining Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.
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37 CFR 1.416 The United States International Preliminary Examining Authority.
(a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Preliminary Examining Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with agreement between the Patent and Trademark Office and the International Bureau.
(b) The United States Patent and Trademark Office, when acting as an International Preliminary Examining Authority, will be identified by the full title “United States International Preliminary Examining Authority” or by the abbreviation “IPEA/US.”
(c) The major functions of the International Preliminary Examining Authority include:
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(1) Receiving and checking for defects in the Demand;
(2) Forwarding Demands in accordance with PCT Rule 59.3;
(3) Collecting the handling fee for the International Bureau and the preliminary examination fee for the United States International Preliminary Examining Authority;
(4) Informing applicant of receipt of the Demand;
(5) Considering the matter of unity of invention;
(6) Providing an international preliminary examination report which is a nonbinding opinion on the questions whether the claimed invention appears to be novel, to involve inventive step (to be nonobvious), and to be industrially applicable; and
(7) Transmitting the international preliminary examination report to applicant and the International Bureau.
An agreement was concluded between the United States Patent and Trademark Office (USPTO) and the International Bureau under which the USPTO agreed to serve as an International Preliminary Examining Authority for those applications filed in the USPTO as a Receiving Office and for those international applications filed in other receiving Offices for which the USPTO has served as an International Searching Authority. This agreement between the USPTO and IB is available on WIPO’s website (www.wipo.int/export/sites/www/pct/en/ texts/agreements/ag_us.pdf).
The agreement is provided for in PCT Articles 32(2) & (3) and 34(1), and in PCT Rules 59.1, 63.1, 72.1, and 77.1(a). Authority is given in 35 U.S.C. 361(c), 362(a) & (b) and in 364(a). 37 CFR 1.416(a) and PCT Administrative Instructions Section 103(c) are also relevant.
1863 [Reserved]
1864 The Demand and Preparation for Filing of Demand [R-07.2015]
37 CFR 1.480 Demand for international preliminary examination.
(a) On the filing of a proper Demand in an application for which the United States International Preliminary Examining Authority is competent and for which the fees have been paid, the international application shall be the subject of an international preliminary examination. The preliminary examination fee (§ 1.482(a)(1)) and the handling fee (§ 1.482(b)) shall be due within the applicable time limit set forth in PCT Rule 57.3.
(b) The Demand shall be made on a standardized form (PCT Rule 53). Copies of the printed Demand forms are available from the United States Patent and Trademark Office. Letters requesting printed Demand forms should be marked “Mail Stop PCT.”
(c) Withdrawal of a proper Demand prior to the start of the international preliminary examination will entitle applicant to a refund of the preliminary examination fee minus the amount of the transmittal fee set forth in § 1.445(a)(1).
(d) The filing of a Demand shall constitute the election of all Contracting States which are designated and are bound by Chapter II of the Treaty on the international filing date (PCT Rule 53.7).
(e) Any Demand filed after the expiration of the applicable time limit set forth in PCT Rule 54 bis.1(a) shall be considered as if it had not been submitted (PCT Rule 54 bis.1(b)).
Once applicant has filed an international application under Chapter I of the PCT, applicant has the right to file a demand for preliminary examination under Chapter II of the Treaty. The use of the term “Demand” distinguishes Chapter II from the “Request” under Chapter I. It is not possible to file a demand unless a proper Chapter I “Request” for an international application has been filed. Chapter I affords applicant the benefit of an international search, which includes an international search report and a written opinion established by the International Searching Authority. The filing of a demand affords applicant examination of the application and allows applicant to file amendments to the description, claims and drawings to correct any defects, respond to any observations, or address negative findings with respect to any of the claims because of a lack of novelty, inventive step (non-obviousness) or industrial applicability as described in PCT Article 33(2) - (4) mentioned in the written opinion (Form PCT/ISA/237) established by the International Searching Authority. Thus, examination enables applicant to attempt to obtain a positive international preliminary examination report, which in some elected Offices is used as a basis for the issuance of a patent or acceleration programs, e.g., Patent Prosecution Highway.
The demand should be filed on Form PCT/IPEA/401 along with the fee calculation sheet. The form is
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available free of charge on WIPO’s website at www.wipo.int/pct/en/forms/index.html.
1864.01 Amendments Filed Under PCT Article 34 [R-07.2015]
PCT Article 34
Procedure Before the International Preliminary Examining Authority
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(2)
*****
(b) The applicant shall have a right to amend the claims, the description, and the drawings, in the prescribed manner and within the prescribed time limit, before the international preliminary examination report is established. The amendment shall not go beyond the disclosure in the international application as filed.
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PCT Rule 66
Procedure Before the International Preliminary Examining Authority
*****
66.8 Form of Amendments
(a) Subject to paragraph (b) when amending the description or the drawings, the applicant shall be required to submit a replacement sheet for every sheet of the international application which, on account of an amendment, differs from the sheet previously filed. The replacement sheet or sheets shall be accompanied by a letter which shall draw attention to the differences between the replaced sheets and the replacement sheets, shall indicate the basis for the amendment in the application as filed and shall preferably also explain the reasons for the amendment.
(b) Where the amendment consists in the deletion of passages or in minor alterations or additions, the replacement sheet referred to in paragraph (a) may be a copy of the relevant sheet of the international application containing the alterations or additions, provided that the clarity and direct reproducibility of that sheet are not adversely affected. To the extent that any amendment results in the cancellation of an entire sheet, that amendment shall be communicated in a letter which shall preferably also explain the reasons for the amendment.
(c) When amending the claims, Rule 46.5 shall apply mutatis mutandis. The set of claims submitted under Rule 46.5 as applicable by virtue of this paragraph shall replace all the claims originally filed or previously amended under Articles 19 or 34, as the case may be.
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37 CFR 1.485 Amendments by applicant during international preliminary examination.
The applicant may make amendments at the time of filing the Demand. The applicant may also make amendments within the time limit set by the International Preliminary Examining Authority for reply to any notification under § 1.484(b) or to any written opinion. Any such amendments must be made in accordance with PCT Rule 66.8.
Under PCT Article 34(2)(b), the applicant has a right to amend the claims, the description, and the drawings in the application before the International Preliminary Examining Authority (IPEA) before the international preliminary examination report is established. The amendment may be filed with the demand (PCT Article 34), within the period for reply to the written opinion of the International Searching Authority (ISA), or within the period for reply to the written opinion of the IPEA.
See MPEP § 1871 regarding the processing of amendments filed prior to or at the start of international preliminary examination. See MPEP § 1878.02 regarding amendments filed in reply to the written opinion of the ISA or IPEA.
The applicant must submit a replacement sheet for every sheet which, on account of an amendment, differs from the sheet previously filed. The amendment must be submitted with an accompanying letter which explains the difference between the replaced sheet and the replacement sheet and which preferably explains the reasons for the amendment. In addition, the letter must indicate the basis for the amendment in the application. The basis for the amendment must always refer to the application (description, claims, drawings) as originally filed, even if multiple amendments were made during the international phase. When filing amendments to the claims, a complete set of claims in replacement of the claims as originally filed (or previously amended under Article 19) shall be submitted. For an example of how the basis for the amendment should be indicated, see MPEP § 1853. Where the amendment consists in the deletion of passages or in minor alterations or additions, the alterations or additions may be made on a copy of the relevant sheet of the international application, provided that the clarity and direct reproducibility of that sheet are not adversely affected. No replacement sheet is required where the amendment results in the cancellation of an entire sheet; such an
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amendment may be communicated in a letter which preferably explains the reasons for the amendment.
Where the international application was not filed in the language of publication, any amendments under Article 34 and any accompanying letter (as well as any letter accompanying Article 19 amendments) must be in the language of publication. Where the international preliminary examination is carried out on the basis of a translation of the international application, any amendments under Article 34 and any amendments under Article 19, which are to be taken into account, and any accompanying letter must be in the language of that translation. Where such amendments have been or are filed in another language, a translation of the amendments into the language in which the international preliminary examination is carried out must also be furnished. No fee is payable in respect of filing any amendments under Article 34(2)(b). If the amendments or accompanying letter are not in the required language, the International Preliminary Examining Authority will invite the applicant to furnish them within a reasonable time limit. If the applicant fails to furnish the amendments and/or the accompanying letter within the time limit set in the invitation, the International Preliminary Examining Authority shall not take such amendments into account for the purposes of the international preliminary examination.
1864.02 Applicant’s Right To File a Demand [R-07.2015]
PCT Article 31
Demand for International Preliminary Examination
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(2)
(a) Any applicant who is a resident or national, as defined in the Regulations, of a Contracting State bound by Chapter II, and whose international application has been filed with the receiving Office of or acting for such State, may make a demand for international preliminary examination.
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PCT Rule 54
The Applicant Entitled to Make a Demand
54.1 Residence and Nationality
(a) Subject to the provisions of paragraph (b), the residence or nationality of the applicant shall, for the purposes of Article 31(2), be determined according to Rule 18.1(a) and (b).
(b) The International Preliminary Examining Authority shall, in the circumstances specified in the Administrative Instructions, request the receiving Office or, where the international application was filed with the International Bureau as receiving Office, the national Office of, or acting for, the Contracting State concerned to decide the question whether the applicant is a resident or national of the Contracting State of which he claims to be a resident or national. The International Preliminary Examining Authority shall inform the applicant of any such request. The applicant shall have an opportunity to submit arguments directly to the Office concerned. The Office concerned shall decide the said question promptly.
54.2 Right to Make a Demand
The right to make a demand under Article 31(2) shall exist if the applicant making the demand or, if there are two or more applicants, at least one of them is a resident or national of a Contracting State bound by Chapter II and the international application has been filed with a receiving Office of or acting for a Contracting State bound by Chapter II.
54.3 International Applications Filed with the International Bureau as Receiving Office
Where the international application is filed with the International Bureau as receiving Office under Rule 19.1(a)(iii), the International Bureau shall, for the purposes of Article 31(2)(a), be considered to be acting for the Contracting State of which the applicant is a resident or national.
54.4 Applicant Not Entitled to Make a Demand
If the applicant does not have the right to make a demand or, in the case of two or more applicants, if none of them has the right to make a demand under Rule 54.2, the demand shall be considered not to have been submitted.
If there is a sole applicant, he or she must be a resident or national of a Contracting State bound by Chapter II of the PCT. If there are two or more applicants, it is sufficient that one of them be a resident or national of a Contracting State bound by Chapter II, regardless of the elected State(s) for which each applicant is indicated. Only applicants for the elected States are required to be indicated in the Demand. The detailed requirements for the various indications required in connection with each applicant (name and address, telephone number, facsimile machine number, nationality and residence)
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§ 1864.02PATENT COOPERATION TREATY
are the same as those required under PCT Rule 4 in connection with the Request. Note that any inventor who is not also an applicant is not indicated in the Demand.
If the recording of a change in the name or person has been requested under PCT Rule 92 bis.1 before the Demand was filed, it is the applicant(s) of record at the time when the Demand is filed who must be indicated in the Demand.
1864.03 States Which May Be Elected [R-07.2015]
PCT Article 31
Demand for International Preliminary Examination
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(4)
(a) The demand shall indicate the Contracting State or States in which the applicant intends to use the results of the international preliminary examination (“elected States”). Additional Contracting States may be elected later. Election may relate only to Contracting States already designated under Article 4.
(b) Applicants referred to in paragraph (2)(a) may elect any Contracting State bound by Chapter II. Applicants referred to in paragraph (2)(b) may elect only such Contracting States bound by Chapter II as have declared that they are prepared to be elected by such applicants.
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The filing of a demand shall constitute the election of all Contracting States which are designated and are bound by Chapter II of the Treaty on the international filing date (PCT Rule 53.7). For demands filed before January 1, 2004, only those eligible states pursuant to PCT Article 31 indicated as being elected are elected. Only PCT member states which have ratified or acceded to Chapter II and which were designated in the Request may be elected under Chapter II. The Assembly has taken no action to allow persons who are residents or nationals of a State not party to the PCT or not bound by Chapter II to make a Demand under Article 31(2)(b).
1864.04 Agent’s Right To Act [R-08.2012]
Any agent entitled to practice before the receiving Office where the international application was filed
may represent the applicant before the international authorities ( PCT Article 49).
If for any reason, the examiner needs to question the right of an attorney or agent to practice before the International Preliminary Examining Authority (IPEA), the USPTO roster of registered attorneys and agents should be consulted. If the international application was filed with a receiving Office other than the United States, Form PCT/IPEA/410 may be used by the requesting IPEA to ask the receiving Office with which the international application was filed, whether the agent named in the international application has the right to practice before that Office.
The PCT Article and Regulations governing the right to practice are PCT Article 49 and PCT Rule 83.
1865 Filing of Demand [R-07.2015]
PCT Article 31
Demand for International Preliminary Examination
(1) On the demand of the applicant, his international application shall be the subject of an international preliminary examination as provided in the following provisions and the Regulations.
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(3) The demand for international preliminary examination shall be made separately from the international application. The demand shall contain the prescribed particulars and shall be in the prescribed language and form.
*****
(6)
(a) The demand shall be submitted to the competent International Preliminary Examining Authority referred to in Article 32.
*****
Applicants should submit the Demand and appropriate fees directly to the International Preliminary ExaminingAuthority (IPEA) they desire to prepare the International Preliminary Examination Report. The demand must be filed prior to the expiration of whichever of the following periods expires later: (A) three months from the date of transmittal to the applicant of the international search report and the written opinion; or (B) 22 months from the priority date. Otherwise the demand shall
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be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare. See PCT Rule 54. In order to take advantage of a national phase entry time limit of at least 30 months from the priority date in relation to all States designated in the international application, it may be necessary to file a demand before the expiration of 19 months from the priority date. See MPEP § 1842, subsection VII.A.
CHOICE OF INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
The IPEA/US will serve as International Preliminary ExaminingAuthority for U.S. residents and nationals if the USPTO, EPO, KIPO, IP Australia, Rospatent, ILPO, or JPO served as the International Searching Authority (ISA) and the international application was filed in the U.S. receiving Office or the International Bureau as receiving Office.
The IPEA/US will also serve as International Preliminary Examining Authority for residents or nationals of Bahrain, Barbados, Brazil, Chile, Dominican Republic, Egypt, Georgia, Guatemala, India, Israel, Mexico, New Zealand, Oman, Panama, Peru, the Philippines, Qatar, Saint Lucia, Saint Vincent and the Grenadines, South Africa, Thailand, and Trinidad and Tobago if the USPTO was the ISA.
U.S. residents and nationals may also choose to have the international preliminary examination done by KIPO or Rospatent if the USPTO, EPO, KIPO, IP Australia, Rospatent, or JPO served as the ISA.
U.S. residents and nationals may choose to have the international preliminary examination done by the EPO if the EPO served as the ISA.
U.S. residents and nationals may choose to have the international preliminary examination done by IP Australia if IP Australia served as the ISA and IP Australia has not received more than 250 international applications from the USPTO during the fiscal quarter.
U.S. residents and nationals may choose to have the international preliminary examination done by ILPO if ILPO served as the ISA. ILPO has certain
restrictions of competency as an IPEA based upon the subject matter of the application.
U.S. residents and nationals may choose to have the international preliminary examination done by the JPO if the JPO served as the ISA.
Information regarding the demand filing with the specific IPEA is available on the PCT Applicant’s G u i d e a t W I P O ’ s w e b s i t e (www.wipo.int/pct/en/appguide/).
Demands filed in the United States Patent and Trademark Office (USPTO) should preferably be filed via USPTO's electronic filing system (EFS-Web) by registered e-filers in an application filed with the U.S. receiving office or searched by the USPTO. Filers who are not registered users of EFS-Web must file the demand by another acceptable method.
To avoid unnecessary work and communication by the USPTO, applicants should not file a courtesy copy of a Demand with the USPTO, because the U.S. International Preliminary Examining Authority will process the Demand. If the USPTO is not a competent IPEA, the demand will be forwarded to the IB.
If mailed to the USPTO, the demand should be addressed as follows:
Mailing address for delivery by the U.S. Postal Service:
Mail Stop PCT Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450.
OR
If hand-carried directly to the USPTO:
Customer Service Window, Mail Stop PCT Randolph Building 401 Dulany Street Alexandria, VA 22314
The Priority Mail Express® provisions of 37 CFR 1.10 may be used to file a Demand under Chapter
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II in the USPTO. Applicants are advised that failure to comply with the provisions of 37 CFR 1.10 will result in the paper or fee being accorded the date of receipt and not the date of deposit. See MPEP § 513.
Demand for international preliminary examination may also be submitted to the USPTO via facsimile. The Certificate of Mailing or Transmission practice under 37 CFR 1.8 CANNOT be used to file a Demand if the date of deposit is desired. If used, the date of the Demand will be the date of receipt in the USPTO. See MPEP §§ 513, 1834, and 1834.01.
All Demands filed in the USPTO must be in the English language.
PCT Rule 59.3 provides a safeguard in the case of a Demand filed with an International Preliminary Examining Authority which is not competent for the international preliminary examination of a particular international application. The USPTO will forward such a Demand to the International Bureau and the International Bureau will forward the Demand to a competent International Preliminary Examining Authority pursuant to PCT Rule 59.3(c). The competent International Preliminary Examining Authority will process the Demand based on the date of receipt in the USPTO. See 37 CFR 1.416(c)(2).
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1866 [Reserved]
1867 Preliminary Examination Fees [R-07.2015]
37 CFR 1.481 Payment of international preliminary examination fees.
(a) The handling and preliminary examination fees shall be paid within the time period set in PCT Rule 57.3. The handling fee or preliminary examination fee payable is the handling fee or preliminary examination fee in effect on the date of payment.
(1) If the handling and preliminary fees are not paid within the time period set in PCT Rule 57.3, applicant will be notified and given one month within which to pay the deficient fees plus a late payment fee equal to the greater of:
(i) Fifty percent of the amount of the deficient fees, but not exceeding an amount equal to double the handling fee; or
(ii) An amount equal to the handling fee (PCT Rule 58 bis.2).
(2) The one-month time limit set in this paragraph to pay deficient fees may not be extended.
(b) If the payment needed to cover the handling and preliminary examination fees, pursuant to paragraph (a) of this section, is not timely made in accordance with PCT Rule 58 bis.1(d), the United States International Preliminary ExaminationAuthority will declare the Demand to be considered as if it had not been submitted.
The preliminary examination fee is for the benefit of the International Preliminary ExaminingAuthority and the amount for the USPTO doing the preliminary examination is specified in 37 CFR 1.482. The fee is somewhat higher if the international search was performed by an authority other than the USPTO.
The handling fee is a fee for the benefit of the International Bureau and is collected by the International Preliminary Examining Authority.
The current amount of both the preliminary examination fee and the handling fee can be found in each weekly issue of the Official Gazette. Since supplements to the handling fee were deleted, no additional Chapter II fees are required other than any additional preliminary examination fee where additional inventions are determined to be present. The amount of this fee is also specified in 37 CFR 1.482 and in the weekly issues of the Official Gazette. See also PCT Rules 57 and 58.
The time limit for paying the preliminary examination fee and the handling fee is set forth in PCT Rules 57.3 and 58.1(b). 37 CFR 1.481(a) provides that the preliminary examination fee or handling fee payable is the preliminary examination fee or handling fee in effect on the date of payment. The preliminary examination fee and handling fee are considered to have been received before the expiration of the time limit set in PCT Rule 57.3 if the fees were submitted prior to the sending of an invitation to pay the fees. See PCT Rule 58 bis.1(c).
PCT Rule 58 bis.1(a) permits the International Preliminary Examining Authority to collect a late payment fee set forth in PCT Rule 58 bis.2 if the fees for preliminary examination are not paid prior to the sending of the invitation to pay the fees. If the preliminary examination fee and handling fee are not paid within the time set in PCT Rule 57.3, applicants will be notified and given 1 month within which to pay the deficient fees plus a late payment fee equal to the greater of: (1) 50% of the amount of the deficient fees, but not exceeding an amount equal to double the handling fee; or (2) an amount equal to the handling fee. See 37 CFR 1.481(a)(1)(i) and (ii). The 1 month time limit set forth in 37 CFR 1.481(a)(1) to pay deficient fees may not be extended. See 37 CFR 1.481(a)(2).
If the payment needed to cover the preliminary examination fee and handling fee is not timely made in accordance with PCT Rule 58 bis.1(d), the United States International Preliminary Examining Authority will declare the Demand to be considered as if it had not been submitted. In this regard, where the Authority sends a notification that the Demand is considered not to have been made and applicant’s payment is received on the same date the notification is sent, the fee is considered to be late and the notification remains effective. The fee must antedate
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the notice in order for the notice not to be effective. See 37 CFR 1.481(b).
1868 Correction of Defects in the Demand [R-07.2015]
PCT Rule 60
Certain Defects in the Demand or Elections
60.1. Defects in the Demand
(a) Subject to paragraphs (a- bis) and (a- ter), if the demand does not comply with the requirements specified in Rules 53.1, 53.2(a)(i) to (iii), 53.2(b), 53.3 to 53.8 and 55.1, the International Preliminary Examining Authority shall invite the applicant to correct the defects within a time limit which shall be reasonable under the circumstances. That time limit shall not be less than one month from the date of the invitation. It may be extended by the International Preliminary Examining Authority at any time before a decision is taken.
(a-bis) For the purposes of Rule 53.4, if there are two or more applicants, it shall be sufficient that the indications referred to in Rule 4.5(a)(ii) and (iii) be provided in respect of one of them who has the right according to Rule 54.2 to make a demand.
(a-ter) For the purposes of Rule 53.8, if there are two or more applicants, it shall be sufficient that the demand be signed by one of them.
(b) If the applicant complies with the invitation within the time limit under paragraph (a), the demand shall be considered as if it had been received on the actual filing date, provided that the demand as submitted permitted the international application to be identified; otherwise, the demand shall be considered as if it had been received on the date on which the International Preliminary Examining Authority receives the correction.
(c) If the applicant does not comply with the invitation within the time limit under paragraph (a), the demand shall be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.
(d) [Deleted]
(e) If the defect is noticed by the International Bureau, it shall bring the defect to the attention of the International Preliminary Examining Authority, which shall then proceed as provided in paragraphs (a) to (c).
(f) If the demand does not contain a statement concerning amendments, the International Preliminary ExaminingAuthority shall proceed as provided for in Rules 66.1 and 69.1(a) or (b).
(g) Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand ( Rule 53.9(c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Authority shall invite the applicant to submit the amendments within a time limit fixed in the invitation and shall proceed as provided for in Rule 69.1(e).
Defects in the Demand may be corrected. The type of correction determines whether the filing date of the Demand must be changed. The most common defects which result in the mailing of an invitation to correct are found in PCT Rules 53 and 55. If the applicant complies with the invitation, the Demand is considered as if it had been received on the actual filing date, i.e., the original date of receipt, provided that the demand as submitted permitted the international application to be identified. See PCT Rule 60.1(b).
1869 Notification to International Bureau of Demand [R-08.2012]
PCT Article 31
Demand for International Preliminary Examination
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(7) Each elected Office shall be notified of its election.
The International Preliminary Examining Authority, pursuant to PCT Rule 61, promptly notifies the International Bureau and the applicant of the filing of any Demand. The International Bureau in turn notifies each elected Office of their election and also notifies the applicant that such notification has been made.
1870 Priority Document and Translation Thereof [R-08.2012]
PCT Rule 66
Procedure before the International Preliminary Examining Authority
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66.7. Copy and Translation of Earlier Application Whose Priority Is Claimed
(a) If the International Preliminary Examining Authority needs a copy of the earlier application whose priority is claimed in the international application, the International Bureau shall, on request, promptly furnish such copy. If that copy is not furnished to the International Preliminary Examining Authority because the applicant failed to comply with the requirements of Rule 17.1, and if that earlier application was not filed with that Authority in its capacity as a national Office or the priority document is not available to that Authority from a digital library in accordance with the Administrative Instructions, the international preliminary examination report may be established as if the priority had not been claimed.
(b) If the application whose priority is claimed in the international application is in a language other than the language
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or one of the languages of the International Preliminary Examining Authority, that Authority may, where the validity of the priority claim is relevant for the formulation of the opinion referred to in Article 33(1), invite the applicant to furnish a translation in the said language or one of the said languages within two months from the date of the invitation. If the translation is not furnished within that time limit, the international preliminary examination report may be established as if the priority had not been claimed.
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A copy of the priority document and/or a translation thereof, if the priority document is not in English may be required by the examiner if necessary because of an intervening reference.
1871 Processing Amendments Filed Under Article 19 and Article 34 Prior to or at the Start of International Preliminary Examination [R-07.2015]
PCT Rule 62
Copy of the Written Opinion by the International Searching Authority and of Amendments Under Article 19 for the
International Preliminary Examining Authority
62.1 Copy of Written Opinion by International Searching Authority and of Amendments Made Before the Demand Is Filed
Upon receipt of a demand, or a copy thereof, from the International Preliminary Examining Authority, the International Bureau shall promptly transmit to that Authority:
(i) a copy of the written opinion established under Rule 43 bis.1, unless the national Office or intergovernmental organization that acted as International Searching Authority is also acting as International Preliminary Examining Authority; and
(ii) a copy of any amendment under Article 19, and any statement referred to in that Article, and the letter required under Rule 46.5(b), unless that Authority has indicated that it has already received such a copy.
62.2 Amendments Made After the Demand Is Filed
If, at the time of filing any amendments under Article 19, a demand has already been submitted, the applicant shall preferably, at the same time as he files the amendments with the International Bureau, also file with the International Preliminary Examining Authority a copy of such amendments, and any statement referred to in that Article and the letter required under Rule 46.5(b). In any case, the International Bureau shall promptly transmit a copy of such amendments statement and letter to that Authority.
PCT Rule 62 bis
Translation for the International Preliminary Examining Authority of the Written Opinion of the International
Searching Authority
62 bis.1 Translation and Observations
(a) Upon request of the International Preliminary Examining Authority, the written opinion established under Rule 43 bis.1 shall, when not in English or in a language accepted by that Authority, be translated into English by or under the responsibility of the International Bureau.
(b) The International Bureau shall transmit a copy of the translation to the International Preliminary Examining Authority within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.
(c) The applicant may make written observations as to the correctness of the translation and shall send a copy of the observations to the International Preliminary Examining Authority and to the International Bureau.
PCT Rule 66
Procedure before the International Preliminary Examining Authority
66.8 Form of Amendments
(a) Subject to paragraph (b), when amending the description or the drawings, the applicant shall be required to submit a replacement sheet for every sheet of the international application which, on account of an amendment, differs from the sheet previously filed. The replacement sheet or sheets shall be accompanied by a letter which shall draw attention to the differences between the replaced sheets and the replacement sheets, shall indicate the basis for the amendment in the application as filed and shall preferably also explain the reasons for the amendment.
(b) Where the amendment consists in the deletion of passages or in minor alterations or additions, the replacement sheet referred to in paragraph (a) may be a copy of the relevant sheet of the international application containing the alterations or additions, provided that the clarity and direct reproducibility of that sheet are not adversely affected. To the extent that any amendment results in the cancellation of an entire sheet, that amendment shall be communicated in a letter which shall preferably also explain the reasons for the amendment.
(c) When amending the claims, Rule 46.5 shall apply mutatis mutandis. The set of claims submitted under Rule 46.5 as applicable by virtue of this paragraph shall replace all the claims originally filed or previously amended under Articles 19 or 34, as the case may be.
The documents making up the international application may include amendments of the claims filed by the applicant under PCT Article 19. Article 19 amendments are exclusively amendments to the claims and these amendments can only be made after the international search report has been established.
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Article 19 amendments, any statement referred to in that Article, and the letter required under PCT Rule 46.5(b) will be transmitted to the International Preliminary Examining Authority (IPEA) by the International Bureau unless that Authority has indicated that it has already received such a copy. The International Bureau marks, in the upper right-hand corner of each replacement sheet submitted under PCT Article 19, the international application number, the date on which that sheet was received under PCT Article 19 and, in the middle of the bottom margin, the words “AMENDED SHEET (ARTICLE 19).” Where a demand for international preliminary examination has been submitted to the IPEA/US and a copy of the PCT Article 19 amendments has not yet been received from the IB, applicant may consider filing a copy directly with the IPEA/US. If the copy of the PCT Article 19 amendments has not been stamped as “AMENDED SHEET (ARTICLE 19)” by the IB, the IPEA/US will treat the unstamped copy as an amendment under PCT Article 34.
The IPEA starts the international preliminary examination when it is in possession of the demand; the required fees; if the applicant is required to furnish a translation under PCT Rule 55.2, that translation; either the international search report or a notice of the declaration by the International Searching Authority under PCT Article 17(2)(a) that no international search report will be established; and the written opinion established under PCT Rule 43 bis.1, provided that the IPEA shall not start the international preliminary examination before the expiration of the later of three months from the transmittal of the international search report, or declaration that no international search report will be established, and written opinion; or the expiration of 22 months from the priority date unless the applicant expressly requests an earlier start, with the exception of the following situations:
(A) If the competent IPEA is part of the same national Office or intergovernmental organization as the competent International Searching Authority, the international preliminary examination may, if the IPEA so wishes, start at the same time as the international search, provided that the examination is not to be postponed according to the statement concerning PCT Article 19 amendments (PCT Rule 53.9(b));
(B) Where the statement concerning amendments contains an indication that amendments made with the International Bureau under PCT Article 19 are to be taken into account (PCT Rule 53.9(a)(i)), the IPEA does not start the international preliminary examination before it has received a copy of the amendments concerned, any statement referred to in that Article and the letter required under PCT Rule 46.5(b). These will be transmitted to the IPEA by the International Bureau. The applicant should preferably, at the time he/she files the demand, also file a copy of the amendments, any statement referred to in that Article and the letter required under PCT Rule 46.5(b) with the IPEA;
(C) Where the statement concerning amendments contains an indication that the start of the international preliminary examination is to be postponed (PCT Rule 53.9(b)), the IPEA does not start the international preliminary examination before:
(1) it has received a copy of any amendments made under PCT Article 19, any statement referred to in that Article and the letter required under Rule 46.5(b);
(2) it has received a notice from the applicant that he/she does not wish to make amendments under PCT Article 19; or
(3) the later of two months from the transmittal of the international search report or the expiration of 16 months from the priority date;
whichever occurs first; and
(D) Where the statement concerning amendments contains an indication that amendments under PCT Article 34 are submitted with the demand (PCT Rule 53.9(c)) but no such amendments are, in fact, submitted, the IPEA does not start the international preliminary examination before it has received the amendments or before the time limit fixed in the invitation referred to in PCT Rule 60.1(g) has expired, whichever occurs first.
The applicant has the right to amend the claims, the description, and the drawings, in the prescribed manner and before the start of international preliminary examination. The amendment must not go beyond the disclosure in the international application as filed. These amendments are referred to as PCT Article 34(2)(b) amendments. It should
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be noted that PCT Article 19 amendments are strictly amendments to the claims made during the Chapter I search phase while PCT Article 34(2)(b) amendments to the description, claims, and drawings are made during the Chapter II examination phase.
When amendments to the description, claims, or drawings are made under PCT Rule 66.8, the applicant shall be required to submit a replacement sheet for every sheet of the international application which, on account of an amendment, differs from the sheet previously filed. The replacement sheet or sheets shall be accompanied by a letter which shall draw attention to the differences between the replaced sheets and the replacement sheets, shall indicate the basis for the amendment in the application as filed and shall preferably also explain the reasons for the amendment. These amendments may have been submitted to avoid possible objections as to lack of novelty or lack of inventive step in view of the citations listed in the international search report and the observations on novelty, inventive step, and industrial applicability set forth in the written opinion established by the International Searching Authority; to meet any objections noted by the International Searching Authority under PCT Article 17(2)(a)(ii) (i.e., that all or at least some claims do not permit a meaningful search) or under PCT Rule 13 (i.e., that there is a lack of unity of invention); or to meet objections that may be raised for some other reason, e.g., to remedy some obscurity which the applicant himself/herself has noted in the original documents.
The amendments are made by the applicant of his/her own volition. This means that the applicant is not restricted to amendments necessary to remedy a defect in his/her international application. It does not, however, mean that the applicant should be regarded as free to amend in any way he/she chooses. Any amendment must not add subject matter which goes beyond the disclosure of the international application as originally filed. Furthermore, it should not itself cause the international application as amended to be objectionable under the PCT, e.g., the amendment should not introduce obscurity.
As a matter of policy and to ensure consistency in handling amendments filed under Articles 19 and
34 of the PCT, the following guidelines for processing these amendments have been established:
(A) Any argument or amendment which complies with 37 CFR 1.485(a) will be considered;
(B) Amendments filed after the demand:
(1) will be considered if filed before the later of: three months from the transmittal of either the international search report or a notice of the declaration by the International Searching Authority under PCT Article 17(2)(a) that no international search report will be established, and the written opinion established under PCT Rule 43 bis.1; or the expiration of 22 months from the priority date, unless the applicant expressly requests an earlier start to international preliminary examination,
(2) will be considered if filed before the application is docketed to the examiner,
(3) may be considered if filed after docketing. The examiner has discretion to consider such amendments if the examiner determines that the amendment places the application in better condition for examination or the examiner determines that the amendment should otherwise be entered;
(C) Amendments and/or arguments filed after expiration of the period for response to the written opinion:
(1) will be considered if the amendment was requested by the examiner,
(2) need not be taken into account for the purposes of a further written opinion or the international preliminary examination report if they are received after the examiner has begun to draw up that opinion or report. The applicant may file an amendment to the description, the claims and the drawings in the prescribed manner, even if this is outside the time period set for reply in PCT Rule 66.2(d). Since the examiner may begin to draw up the final report once the time period set for reply in PCT Rule 66.2(d) expires, amendments filed after the expiration of the time period set in for reply in PCT Rule 66.2(d) may or may not be considered. There may be situations where it is advisable, to the extent possible, to take such amendments or arguments into account, for example, where the international preliminary examination report has not yet been completed and it is readily apparent to the
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examiner that consideration of the late-filed response would result in the issuance of a favorable report.
It is expected, due to the relatively short time period for completion of preliminary examination, that the Chapter II application will be taken up promptly after docketing to the examiner for preparation of either a further written opinion, if necessary, or the international preliminary examination report (Form PCT/IPEA/409).
Amendments timely filed but misdirected or otherwise late reaching the examiner will be considered as in the case of regular domestic applications and may require a supplemental written opinion and/or international preliminary examination report.
Clearly, these guidelines offer the examiner flexibility. The examiner should be guided by the overriding principle that the international preliminary examination report should be established with as few written opinions as possible and resolution of as many issues as possible consistent with the goal of a timely and quality report.
See also Administrative Instructions Section 602 regarding processing of amendments by the IPEA.
1872 Availability of the International Application File for International Preliminary Examination by the Examining Corps [R-08.2012]
PCT Administrative Instructions Section 605.
File to be used for International Preliminary Examination
Where the International Preliminary Examining Authority is part of the same national Office or intergovernmental organization as the International Searching Authority, the same file shall serve the purposes of international search and international preliminary examination.
After the PCT International Application Processing Division has finished processing the documents and fees filed with a complete demand, the international application is docketed to an examiner in the appropriate Technology Center for examination. If the USPTO was the International Searching Authority for the international application, the same file used for purposes of the international search will
be used for purposes of international preliminary examination.
1873 [Reserved]
1874 Determination if International Preliminary Examination Is Required and Possible [R-07.2015]
PCT Article 34
Procedure Before the International Preliminary Examining Authority
*****
(4)
(a) If the International Preliminary Examining Authority considers
(i) that the international application relates to a subject matter on which the International Preliminary Examining Authority is not required, under the Regulations, to carry out an international preliminary examination, and an international preliminary examination, and in the particular case decides not to carry out such examination, or
(ii) that the description, the claims, or the drawings, are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness), or industrial applicability, of the claimed invention, the said authority shall not go into the questions referred to in Article 33(1) and shall inform the applicant of this opinion and the reasons therefor.
(b) If any of the situations referred to in subparagraph (a) is found to exist in, or in connection with, certain claims only, the provisions of that subparagraph shall apply only to the said claims.
There are instances where international preliminary examination is not required because of the nature of the subject matter claimed and also because the claims are so indefinite that no examination is possible. Such instances should seldom occur, especially since most problems of this nature would have already been discovered and indicated at the time of the international search.
If it is found that certain claims of an international application relate to subject matter for which no international preliminary examination is required, check the appropriate box on a Form PCT/IPEA/408 or a Form PCT/IPEA/409, as appropriate (see MPEP § 1860). It should be noted that subject matter which is normally examined under U.S. national procedure
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should also be examined as an International Preliminary Examining Authority.
The examiner should check the appropriate box if it is found that the description, claims or drawings are so unclear, or the claims are so inadequately supported by the description that no opinion could be formed as to the novelty, inventive step (nonobviousness) and industrial applicability of the claimed invention.
Subject matter not searched under Chapter I will not be the subject of a preliminary examination under Chapter II. This is so even if claims which were not searched under Chapter I are modified to be acceptable for examination.
1875 Unity of Invention Before the International Preliminary Examining Authority [R-07.2015]
PCT Article 34
Procedure before the International Preliminary Examining Authority
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(3)
(a) If the International Preliminary Examining Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it may invite the applicant, at his option, to restrict the claims so as to comply with the requirement or to pay additional fees.
*****
(c) If the applicant does not comply with the invitation referred to in subparagraph (a) within the prescribed time limit, the International Preliminary ExaminingAuthority shall establish an international preliminary examination report on those parts of the international application which relate to what appears to be the main invention and shall indicate the relevant facts in the said report. The national law of any elected State may provide that, where its national Office finds the invitation of the International Preliminary Examining Authority justified, those parts of the international application which do not relate to the main invention shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to that Office.
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37 CFR 1.488 Determination of unity of invention before the International Preliminary Examining Authority.
(a) Before establishing any written opinion or the international preliminary examination report, the International
Preliminary Examining Authority will determine whether the international application complies with the requirement of unity of invention as set forth in § 1.475.
(b) If the International Preliminary Examining Authority considers that the international application does not comply with the requirement of unity of invention, it may:
(1) Issue a written opinion and/or an international preliminary examination report, in respect of the entire international application and indicate that unity of invention is lacking and specify the reasons therefor without extending an invitation to restrict or pay additional fees. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority.
(2) Invite the applicant to restrict the claims or pay additional fees, pointing out the categories of invention found, within a set time limit which will not be extended. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority, or
(3) If applicant fails to restrict the claims or pay additional fees within the time limit set for reply, the International Preliminary Examining Authority will issue a written opinion and/or establish an international preliminary examination report on the main invention and shall indicate the relevant facts in the said report. In case of any doubt as to which invention is the main invention, the invention first mentioned in the claims and previously searched by an International Searching Authority shall be considered the main invention.
(c) Lack of unity of invention may be directly evident before considering the claims in relation to any prior art, or after taking the prior art into consideration, as where a document discovered during the search shows the invention claimed in a generic or linking claim lacks novelty or is clearly obvious, leaving two or more claims joined thereby without a common inventive concept. In such a case the International Preliminary Examining Authority may raise the objection of lack of unity of invention.
The examiner will usually begin the preliminary examination by checking the international application for unity of invention. The international preliminary examination will only be directed to inventions which have been searched by the International Searching Authority. All claims directed to inventions which have not been searched by the International Searching Authority will not be considered by the International Preliminary Examining Authority. If the examiner in the International Preliminary Examining Authority finds lack of unity of invention in the claims to be examined, an invitation is normally prepared and sent to the applicant requesting the payment of additional fees or the restriction of the claims on Form PCT/IPEA/405. Such an invitation will include the identification of what the examiner considers to
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be the “main invention” which will be examined if no additional fees are paid or restriction is made by the applicant.
The procedure before the International Preliminary Examining Authority regarding lack of unity of invention is governed by PCT Article 34(3)(a) through (c), PCT Rule 68 (see also PCT Rule 70.13), and 37 CFR 1.475 and 1.488. It should be noted that in most instances lack of unity of invention will have been noted and reported upon by the International Searching Authority which will have drawn up an international search report and a written opinion based on those parts of the international application relating to the invention, or unified linked group of inventions, first mentioned in the claims (“main invention”), unless the applicant has paid additional fees . If the applicant has paid additional search fees, additional inventions would also have been searched. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority (37 CFR 1.488(b)(2)).
If the examiner determines that unity of invention is lacking, there are two options:
(A) The examiner may conduct an international preliminary examination covering all the claimed and previously searched inventions and indicate that unity of invention is lacking and specify the reasons therefor without extending an invitation to restrict or pay additional fees (PCT Rule 68.1), or
(B) The examiner may invite the applicant to restrict the claims, so as to comply with the requirement, or pay additional fees, pointing out the categories of invention found using Form PCT/IPEA/405 or USPTO/499 (telephone practice). See MPEP § 1875.01. The invitation to restrict or pay additional fees shall state the reasons for which the international application is considered as not complying with the requirement of unity of invention. (PCT Rule 68.2). Inventions not previously searched will not be considered or included in the invitation.
The written opinion, if any, and the international preliminary examination report must be established on all inventions for which examination fees have been paid.
If the applicant fails to reply to the invitation to restrict the claims or pay additional examination fees due to lack of unity of invention (by not paying the additional fees or by not restricting the claims either sufficiently or at all), the written opinion, if any, and international preliminary examination report must be established on the claims directed to what appears to be the main invention (PCT Article 34(3)(c)). The main invention, in case of doubt, is the first claimed invention for which an international search report has been issued by the International Searching Authority. The main invention, as viewed by the examiner, must be set forth on Form PCT/IPEA/405.
If the applicant timely complies with the invitation to pay additional fees even under protest, or to restrict the claims, the examiner carries out international preliminary examination on those claimed inventions for which additional fees have been paid or to which the claims have been restricted. It should be noted that the national law of any elected State may provide that, where its national Office finds the invitation of the International Preliminary Examining Authority justified, those parts of the international application which do not relate to the main invention shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to that Office (PCT Article 34(3)(c)). Whether or not the question of unity of invention has been raised by the International Searching Authority, it may be considered by the examiner when serving as an authorized officer of the International Preliminary Examining Authority. In the examiner’s consideration, all documents cited by the International Searching Authority should be taken into account and any additional relevant documents considered. However, there are cases of lack of unity of invention, where, compared with the procedure of inviting the applicant to restrict the international application or pay additional fees (PCT Rule 68.2), little or no additional effort is involved in establishing the written opinion , if any, and the international preliminary examination report for the entire international application. Then reasons of economy may make it advisable for the examiner to use the option referred to in PCT Rule 68.1 by choosing not to invite the applicant to restrict the claims or to pay additional fees.
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Unity of invention is defined by 37 CFR 1.475 which describes the circumstances in which the requirement of unity of invention is considered fulfilled.
1875.01 Preparation of Invitation Concerning Unity [R-07.2015]
The “Invitation to restrict or pay additional fees,” Form PCT/IPEA/405, is used to invite the applicant, at his/her option, to restrict the claims to comply with the requirements of unity of invention or to pay additional examination fees. In addition, the examiner must explain the reasons why the international application is not considered to comply with the requirement of unity of invention. The examiner must also specify, on Form PCT/IPEA/405, at least one group or groups of claims which, if elected, would comply with the requirement for unity of invention.
I. INVITATION TO RESTRICT OR PAY ADDITIONAL FEES
In the space provided on form PCT/IPEA/405, the examiner should identify the disclosed inventions by claim numerals and indicate which disclosed inventions are so linked as to form a single general inventive concept, thereby complying with the requirement of unity of invention. For example, claims to different categories of invention such as a product, claims to a process specifically adapted for the manufacture of the product and a claim for a use of the product would be considered related inventions which comply with the unity of invention requirement, whereas a claim to an apparatus for making the product in the same application would be considered a second invention for which additional fees would be required. The reasons for holding that unity of invention is lacking must be specified. See 37 CFR 1.475 and Chapter 10 of the International Search and Preliminary Examination Guidelines which can be obtained from WIPO’s website (www.wipo.int/pct/en/texts/gdlines.html).
Also, the examiner should specify the main invention and claims directed thereto which will be examined if the applicant fails to restrict or pay additional fees. The main invention, in case of doubt, is the first claimed invention or related invention before the International Preliminary Examining Authority for
which a search fee has been paid and an international search report has been prepared.
The examiner should indicate the total amount of additional fees required for examination of all claimed inventions.
In the box provided at the top of the form, the time limit of one month for response is set according to PCT Rule 68.2. Extensions of time are not permitted.
Since the space provided on Form PCT/IPEA/405 is limited, supplemental attachment sheets, supplied by the examiner, with reference back to the specific section, should be incorporated whenever necessary.
II. AUTHORIZED OFFICER
Form PCT/IPEA/405 must be signed by an examiner with at least partial signatory authority.
III. TELEPHONIC RESTRICTION PRACTICE
Telephone practice may be used to allow applicants to elect an invention to be examined or to pay additional fees if:
(A) Applicant or applicant’s legal representative has a USPTO deposit account,
(B) Applicant or the legal representative or agent orally agrees to charge the additional fees to the account, and
(C) A complete record of the telephone conversation is included with the written opinion, if any, or the international preliminary examination report, including:
(1) Examiner’s name;
(2) Authorizing attorney’s name;
(3) Date of conversation;
(4) Invention elected and/or inventions for which additional fees paid; and
(5) Deposit account number and amount to be charged.
When the telephone practice is used in making lack of unity requirements, it is critical that the examiner orally inform applicant that there is no right to protest the holding of lack of unity of invention for
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any group of invention(s) for which no additional examination fee has been paid.
The examiner must further orally advise applicant that any protest to the holding of lack of unity or the amount of additional fee required must be filed in writing no later than one month from the mailing date of the written opinion or the international preliminary examination report if the lack of unity holding is first mailed with the IPER because there was no written opinion. The examiner should fill in the information on Form USPTO/499 “Chapter II PCT Telephone Memorandum for Lack of Unity” as a record of the telephonic holding of lack of unity.
If applicant refuses to either restrict the claims to one invention or authorize payment of additional fees, or if applicant does not have a deposit account, Form PCT/IPEA/405 should be prepared and mailed to applicant.
If a written invitation is required, the examiner should, if possible, submit that written invitation to the TC for review and mailing within 7 days from the date the international application is charged to the examiner.
See MPEP § 1850 for form paragraphs for lack of unity in international applications.
1875.02 Reply to Invitation Concerning Lack of Unity of Invention [R-07.2015]
PCT Administrative Instructions Section 603
Transmittal of Protest Against Payment of Additional Fees and Decision Thereon Where International Application Is
Considered to Lack Unity of Invention
The International Preliminary Examining Authority shall transmit to the applicant, preferably at the latest together with the international preliminary examination report, any decision which it has taken under Rule 68.3(c) on the protest of the applicant against payment of additional fees where the international application is considered to lack unity of invention. At the same time, it shall transmit to the International Bureau a copy of both the protest and the decision thereon, as well as any request by the applicant to forward the texts of both the protest and the decision thereon to the elected Offices.
37 CFR 1.489 Protest to lack of unity of invention before the International Preliminary Examining Authority.
(a) If the applicant disagrees with the holding of lack of unity of invention by the International Preliminary Examining
Authority, additional fees may be paid under protest, accompanied by a request for refund and a statement setting forth reasons for disagreement or why the required additional fees are considered excessive, or both.
(b) Protest under paragraph (a) of this section will be examined by the Director or the Director’s designee. In the event that the applicant’s protest is determined to be justified, the additional fees or a portion thereof will be refunded.
(c) An applicant who desires that a copy of the protest and the decision thereon accompany the international preliminary examination report when forwarded to the Elected Offices, may notify the International Preliminary Examining Authority to that effect any time prior to the issuance of the international preliminary examination report. Thereafter, such notification should be directed to the International Bureau.
Applicant may reply directly to the International Preliminary Examining Authority issuing the invitation by paying some or all additional fees or by restricting the claims to one invention. If applicant makes no reply within the set time limit, the international preliminary examination will proceed on the basis of the main invention only.
If applicant has paid an additional fee or fees, a protest to the holding of lack of unity of invention may be filed with the International Preliminary Examining Authority.
I. NOTIFICATION OF DECISION ON PROTEST
Form PCT/IPEA/420 is used by the Technology Center (TC) to inform the applicant of the decision regarding applicant’s protest on the payment of additional fees concerning unity of invention.
II. NOTIFICATION
The TC checks the appropriate box, i.e., 1 or 2. If box 2 is checked, a clear and concise explanation as to why the protest concerning the unity of invention was found to be unjustified must be given.
Since the space is limited, supplemental attachment sheet(s) should be incorporated whenever necessary.
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III. AUTHORIZED OFFICER
Form PCT/IPEA/420 must be signed by a TC Director. See MPEP § 1002.02(c), item (2).
1876 Notation of Errors and Informalities by the Examiner [R-07.2015]
PCT Administrative Instructions Section 607
Rectifications of Obvious Mistakes under Rule 91
(a) Where the International Preliminary Examining Authority authorizes a rectification of an obvious mistake under Rule 91, it shall:
(i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
(ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “RECTIFIED SHEET (RULE 91)” or their equivalent in the language of the demand as well as an indication of the International Preliminary Examining Authority as provided for in Section 107(b);
(iii) indelibly mark on the letter containing the rectification or accompanying any replacement sheet the date on which that letter was received;
(iv) keep in its files a copy of the letter containing the rectification or, when the rectification is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet and a copy of the replacement sheet;
(v) annex to the copy of the international preliminary examination report which is transmitted to the International Bureau any replacement sheet and any letter as provided for under Rule 70.16;
(vi) annex to the copy of the international preliminary examination report which is transmitted to the applicant a copy of each replacement sheet and any letter as provided for under Rule 70.16.
(b) Where the rectification of an obvious mistake is not taken into account by the International Preliminary Examining Authority pursuant to Rule 66.4 bis , and the Authority so indicates in the international preliminary examination report in accordance with Rule 70.2(e), it shall proceed as indicated under paragraph (a), provided that the words “RECTIFIED SHEET (RULE 91) – NOT CONSIDERED FOR REPORT (Rule 66.4 bis)” shall be used when marking in accordance with paragraph (a)(ii).
(c) Where the rectification of an obvious mistake is not taken into account by the International Preliminary Examining Authority pursuant to Rule 66.4 bis , and the Authority is not able to so indicate in the international preliminary examination report in accordance with the second sentence of Rule 70.2(e), it shall proceed as indicated under paragraph (a)(i) to (iv) and forward any replacement sheet and any letter containing the rectification or accompanying any replacement sheet to the
International Bureau. The International Bureau will promptly notify the elected Offices accordingly.
Although the examiner is not responsible for discovering mistakes in the international application, if any mistakes come to the attention of the examiner, they may be noted and called to the applicant’s attention. The examiner may invite applicant to rectify obvious mistakes using Form PCT/IPEA/411. Mistakes that are not obvious may be called to applicant’s attention in Box VII of PCT/IPEA/408.
AUTHORIZED OFFICER
Form PCT/IPEA/408 and Form PCT/IPEA/411 must be signed by an examiner having at least partial signatory authority.
1876.01 Request for Rectification and Notification of Action Thereon [R-07.2015]
I. NOTIFICATION OF DECISION CONCERNING REQUEST FOR RECTIFICATION
The rectification of obvious mistakes is governed by PCT Rule 91. PCT Administrative Instructions Section 325 provides instructions for the processing of rectifications of obvious mistakes by the receiving Office; PCT Administrative Instructions Sections 413 and 413 bis provide instructions for the processing of rectifications of obvious mistakes by the International Bureau; PCT Administrative Instructions Section 511 provides instructions for the processing of rectifications of obvious mistakes by the International Searching Authority; and PCT Administrative Instructions Section 607 provides instructions for the processing of rectifications of obvious mistakes by the International Preliminary Examining Authority.
II. NOTIFICATION
If the applicant requests rectification of any obvious mistakes in the description, claims, or drawings, or in a correction thereon, or in an amendment under Article 19 or 34, the International Preliminary ExaminingAuthority should notify applicant whether the rectification is authorized or refused using Form PCT/IPEA/412. Any rectification offered to the
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international preliminary examining authority must be in the form of a replacement sheet embodying the rectification and the letter accompanying the replacement sheet must draw attention to the differences between the replaced sheet and the replacement sheet.
The International Preliminary Examining Authority, after fully considering applicant’s request for rectification of an obvious mistake, will notify applicant of the action taken on Form PCT/IPEA/412. Since the space provided is limited, supplemental sheet(s) should be incorporated whenever necessary.
1877 Nucleotide and/or Amino Acid Sequence Listings During the International Preliminary Examination [R-07.2015]
If the International Preliminary Examining Authority finds that the international application contains disclosure of one or more nucleotide and/or amino acid sequences but (A) the international application does not contain a sequence listing complying with the standard provided for in the Administrative Instructions, or (B) applicant has not furnished a sequence listing in computer readable form (text) complying with the standard provided for in the Administrative Instructions, the International Preliminary Examining Authority may request the applicant to furnish such sequence listing or listing in computer readable form (text) in accordance with the Administrative Instructions. PCT Rule 13 ter.2.
1878 Preparation of the Written Opinion of the International Preliminary Examining Authority [R-07.2015]
PCT Article 34
Procedure Before the International Preliminary Examining Authority
*****
(2)
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(c) The applicant shall receive at least one written opinion from the International Preliminary Examining Authority unless such Authority considers that all of the following conditions are fulfilled:
(i) the invention satisfies the criteria set forth in Article 33(1),
(ii) the international application complies with the requirements of this Treaty and the Regulations in so far as checked by that Authority,
(iii) no observations are intended to be made under Article 35(2), last sentence.
*****
37 CFR 1.484 Conduct of international preliminary examination.
(a) An international preliminary examination will be conducted to formulate a non-binding opinion as to whether the claimed invention has novelty, involves an inventive step (is non-obvious) and is industrially applicable.
(b) International preliminary examination will begin in accordance with PCT Rule 69.1.
(c) No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority.
(d) The International Preliminary Examining Authority will establish a written opinion if any defect exists or if the claimed invention lacks novelty, inventive step or industrial applicability and will set a non-extendable time limit in the written opinion for the applicant to reply.
(e) The written opinion established by the International SearchingAuthority under PCT Rule 43 bis.1 shall be considered to be a written opinion of the United States International Preliminary Examining Authority for the purposes of paragraph (d) of this section.
(f) The International Preliminary Examining Authority may establish further written opinions under paragraph (d) of this section.
(g) If no written opinion under paragraph (d) of this section is necessary, or if no further written opinion under paragraph (f) of this section is to be established, or after any written opinion and the reply thereto or the expiration of the time limit for reply to such written opinion, an international preliminary examination report will be established by the International Preliminary Examining Authority. One copy will be submitted to the International Bureau and one copy will be submitted to the applicant.
(h) An applicant will be permitted a personal or telephone interview with the examiner, which may be requested after the filing of a Demand, and must be conducted during the period between the establishment of the written opinion and the establishment of the international preliminary examination report. Additional interviews may be conducted where the examiner determines that such additional interviews may be helpful to advancing the international preliminary examination procedure. A summary of any such personal or telephone interview must be filed by the applicant or, if not filed by applicant be made of record in the file by the examiner.
(i) If the application whose priority is claimed in the international application is in a language other than English, the
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United States International Preliminary Examining Authority may, where the validity of the priority claim is relevant for the formulation of the opinion referred to in Article 33(1), invite the applicant to furnish an English translation of the priority document within two months from the date of the invitation. If the translation is not furnished within that time limit, the international preliminary report may be established as if the priority had not been claimed.
PCT Rule 66
Procedure Before the International Preliminary Examining Authority
*****
66.1bis Written Opinion of the International Searching Authority
*****
(a) Subject to paragraph (b), the written opinion established by the International Searching Authority under Rule 43 bis.1 shall be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a).
*****
66.1 ter Top-up Searches
The International Preliminary ExaminingAuthority shall conduct a search ("top-up search") to discover documents referred to in Rule 64 which have been published or have become available to the said Authority for search subsequent to the date on which the international search report was established, unless it considers that such a search would serve no useful purpose. If the Authority finds that any of the situations referred to in Article 34(3) or (4) or Rule 66.1(e) exists, the top-up search shall cover only those parts of the international application that are the subject of international preliminary examination.
*****
66.4 Additional Opportunity for Submitting Amendments or Arguments
(a) If the International Preliminary Examining Authority wishes to issue one or more additional written opinions, it may do so, and Rules 66.2 and 66.3 shall apply.
*****
A written opinion must be prepared by the International Searching Authority at the same time the international search report is prepared. The United States International Preliminary Examining Authority (IPEA/US) will consider the written opinion of the International Searching Authority to be the first written opinion of the IPEA and as such in most instances no further written opinion need be issued by the U.S. examiner handling the international preliminary examination before establishment of the international preliminary examination report, even if there are objections
outstanding. The examiner is to take into consideration any comments or amendments made by the applicant when he/she establishes the international preliminary examination report. However, a further written opinion must be prepared if applicant files a response which includes a persuasive argument that the written opinion issued by the International Searching Authority was improper because of a negative opinion with respect to a lack of novelty, inventive step (non-obviousness) or industrial applicability as described in PCT Article 33(2) - (4); and which results in the examiner considering any of the claims to lack novelty, inventive step (non-obviousness) or industrial applicability as described in PCT Article 33(2) - (4) based on new art not necessitated by any amendment. Such a further written opinion should be established as the Written Opinion of the International Preliminary Examining Authority (Form PCT/IPEA/408).
When preparing Form PCT/IPEA/408, the classification of the subject matter inserted by the examiner in the header on the cover sheet shall be either:
(A) that given by the International Searching Authority under PCT Rule 43.3, if the examiner agrees with such classification; or
(B) that which the examiner considers to be correct, if the examiner does not agree with that classification.
Both the International Patent Classification (IPC) and the classification as required by the IPEA/US should be given.
Since the IPEA/US will consider the written opinion of the ISA to be the first written opinion of the IPEA, item 1 of the cover sheet is marked accordingly. Further, since the written opinion of the ISA is considered to be the first written opinion, the written opinion of the IPEA needs to be indicated as a second opinion in item 2 of the cover sheet.
A top-up search should be conducted by the IPEA to identify any additional prior art that has been published or has become available subsequent to the date of the establishment of the international search report. The purpose is to discover any intermediate
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prior art not available during the international search, i.e., a patent application published on or after the filing or, the valid priority date of the international application, but having an earlier filing or priority date. The top-up search should be differentiated from additional search. A top-up search is to find prior art which recently became available, which is not the same as additional search required as a result of a claim amendment to present additional features not previously claimed.
A top-up search should be performed in all Chapter II examination, except where the examiner considers performing a top-up search would serve no useful purpose. This, however, should be a rare occurrence. For example, this is the case when it is decided that the international application, in its entirety, relates to subject matter on which the International Preliminary Examining Authority is not required to carry out an international preliminary examination, or that the international application is so unclear or the claims are so inadequately supported by the description that no meaningful opinion can be formed on the novelty, inventive step, or industrial applicability, of the claimed invention. The same applies when no international search report has been established for certain claims and it is thus decided not to carry out an international preliminary examination on these claims. Note, however, that when any of the above situations applies to only part of the claimed subject matter or where there is lack of unity of invention, a top-up search should still be carried out but restricted to those parts of the international application that are the subject of international preliminary examination. Another situation is when the IPEA considers that the documents cited in the International Search Report are sufficient to show there is lack of novelty on the entire subject matter. A further example where a top-up search is considered to serve no useful purpose is when the International Search Report cited novelty defeating X references and no amendment to the claims or comments on the application of art has been filed.
If the claims in the international application lack unity, the examiner will first issue an invitation to pay further examination fees and then perform the top-up search on inventions for which examination fees have been paid. The invention paid for must not
have been excluded from preliminary examination due to lack of international search in Chapter I.
In an application where an Article 34 amendment has been filed but no basis can be located, and/or there is no letter explaining the basis, the top-up search may be limited to the scope of the claims forming the basis for the report.
In cases where relevant documents have been discovered in a top-up search and the examiner intends to raise a new objection based on the documents, a second written opinion should be issued where the new objection was not necessitated by an amendment.
I. BOX NO. I. — BASIS OF OPINION
When completing Box No. I, item 1 of Form PCT/IPEA/408, the examiner must indicate whether or not the opinion has been established on the basis of the international application in the language in which it was filed. If a translation was furnished for the purpose of the international search, publication, or international preliminary examination, this must be indicated. The opinion will be established on the basis of any amendments, rectifications, priority and/or unity of invention holdings, and shall answer the questions concerning novelty, inventive step, and industrial applicability for each of the claims under examination.
For the purpose of completing Box No. I, item 2, sheets of the description and drawings filed during Chapter I proceedings and stamped “SUBSTITUTE SHEET (RULE 26)”, “RECTIFIED SHEET (RULE 91)”, and “INCORPORATED BY REFERENCE (RULE 20.6)” are considered to be originally filed/furnished pages and should be listed as originally filed/furnished pages. Only those amendments or rectifications to the description and drawings filed on the date of demand or after the filing of a demand should be listed as pages “received by this Authority on ______________.” Claims filed during the Chapter I proceedings and stamped “SUBSTITUTE SHEET (RULE 26)”, “RECTIFIED SHEET (RULE 91)”, and “INCORPORATED BY REFERENCE (RULE 20.6)” are also considered to be originally
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filed/furnished and should be listed as originally filed/furnished claim nos. or pages.
However, amended claims filed under PCT Article 19 in response to the international search report are to be indicated as claim nos. or pages as amended (together with any statement) under PCT Article 19. The International Bureau (IB) marks, in the upper right-hand corner of each replacement sheet submitted under PCT Article 19, the international application number, the date on which that sheet was received under PCT Article 19 and, in the middle of the bottom margin, the words “AMENDED SHEET (ARTICLE 19).” See PCT Administrative Instructions Section 417. Applicant’s submission of a timely amendment to the claims alleged to be under Article 19 is accepted under Article 34 (not Article 19) unless the International Bureau has indicated the amendments were accepted under Article 19. Only those claims filed on the date of demand or after the filing of a demand should be listed as claim nos. or pages “received by this Authority on ______________.”
Further, if the opinion has been based on a nucleotide and/or amino acid sequence disclosed and necessary to the claimed invention, the examiner must indicate the format of the material (i.e., on paper/image or in electronic form (text)) and the time of filing/furnishing (i.e., contained in the international application as filed, filed together with the international application in electronic form (text), or furnished subsequently to the IPEA). If more than one version or copy of the sequence listing is filed, the examiner must indicate in item 2 whether the applicant has provided the required statement indicating that the information in the subsequent or additional copies are identical to that in the application as filed or does not go beyond the application as filed, as appropriate. Item 3 is available for providing additional comments.
The examiner must also indicate, in Box No. I, item 3, if any of the amendments filed resulted in the cancellation of any pages of the description, any of the claims, any sheets and/or figures of the drawings, or any of sequence listing. If the examiner considers any of the amendments to go beyond the original disclosure, or they were not accompanied by a letter indicating the basis for the amendment in the
application as filed, the examiner must point this out in Box No. I, item 4 and explain the reasons for this determination in the Supplemental Box. New matter which appears on a replacement sheet will be disregarded for the purpose of establishing the opinion. However, the remainder of the replacement sheet, including any amendments which do not constitute new matter, will be taken into consideration for the purpose of establishing the opinion. Box No. I, item 5 needs to be marked if the opinion is established taking into account the rectification of an obvious mistake under PCT Rule 91. Further, Box No. I, item 6 needs to be marked if the opinion is established taking into account the supplementary international search report(s) from the specified Supplementary International Searching Authority(ies) (SISA).
II. BOX NO. II. — PRIORITY
Where the priority document is provided by the applicant in compliance with PCT Rule 17.1 after the preparation of the search report and the written opinion of the ISA, any written opinion of the IPEA and/or the international preliminary examination report should reconsider the validity of the priority claim. Where the priority document is a foreign document and it is not already in the file, the IPEA may request a copy of the document from the IB and, if necessary, a translation from the applicant. In the meantime, if the outcome of the examination requires the issuing of an opinion, that opinion should be issued without waiting to obtain the priority document and/or the translation. An appropriate comment should be made under the heading “Additional observations, if necessary” in Box No. II of the written opinion. If the IPEA needs a copy of the priority document, and the priority document was not filed with the IPEA in its capacity as a national office and is not available to the IPEA from a digital library in accordance with the Administrative Instructions, then the IPEA may request the IB to furnish such copy. PCT Rule 66.7(a). If the priority document is in a foreign language, the IPEA may invite applicant to furnish a translation within two months of such invitation. PCT Rule 66.7(b). Failure to furnish the copy of the priority document or translation may result in the IPEA establishing the written opinion of the IPEA and/or the IPER as if the priority had not been
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claimed. This is indicated by checking the appropriate boxes in item 1 of Box No. II in the opinion or report.
III. BOX NO. III. — NON-ESTABLISHMENT OF OPINION ON NOVELTY, INVENTIVE STEP AND INDUSTRIAL APPLICABILITY
Box No. III of Form PCT/IPEA/408 is intended to cover situations where some or all claims of an application are so unclear or inadequately supported by the description that the question of novelty, inventive step (nonobviousness), and industrial applicability cannot be considered, or where the international application or claims thereof relate to subject matter which does not require international preliminary examination, or where no international search report has been established for the claims.
Box No. III of Form PCT/IPEA/408 should be filled out in accordance with the instructions for Box No. III of Form PCT/ISA/237 provided in MPEP § 1845.01.
IV. BOX NO. IV. — LACK OF UNITY OF INVENTION
Box No. IV of Form PCT/IPEA/408 should be used by the examiner to notify applicant that lack of unity of invention has been found.
If in reply to an invitation to restrict, applicant restricted the claims to a particular group, check the first box under subsection 1. If applicant paid additional fees for examination of additional inventions, check the second box under subsection 1. If the additional fees were paid under protest, check the third box under subsection 1. If applicant neither restricted nor paid additional fees in reply to the objection of lack of unity of invention, check the fourth box under subsection 1.
Subsection 2 of Box IV is to be completed if the examiner determines that unity of invention is lacking but chooses not to invite the applicant to restrict or pay additional fees.
Subsection 3 of Box IV is to be completed to indicate which claims were the subject of international preliminary examination. If all claims are to be
examined, check the first box under subsection 3. If only some of the claims were the subject of international preliminary examination, check the second box under subsection 3 and identify the claim numbers.
V. BOX NO. V. — REASONED STATEMENT WITH REGARD TO NOVELTY, INVENTIVE STEP, AND INDUSTRIAL APPLICABILITY OF CLAIMS
In Box No. V, the examiner must list in summary form all claims with regard to the criteria of novelty (N), inventive step (IS), and industrial applicability (IA), and should be filled out in accordance with the instructions for Box No. V of Form PCT/ISA/237 provided in MPEP § 1845.01.
In all cases, the application should be searched by the examiner at least to the point of bringing the previous search up to date. Prior art discovered in a search and applied in a reasoned statement in Box No. V must be made of record in Box No. V. Prior art already cited on the international search report need not again be cited on the written opinion or international preliminary examination report. The subsequently discovered prior art is to be cited in compliance with PCT Rule 43.5 and PCT Administrative Instructions Section 503 using the same citation format used on the international search report. One copy of each newly cited foreign patent document and non-patent literature reference will be sent to the applicant and one copy will be retained for the application file. The USPTO no longer mails paper copies of U.S. patents and U.S. patent application publications cited during the international stage of an international application, so paper copies of these documents need not be included in the file.
VI. BOX NO. VI. — CERTAIN DOCUMENTS CITED
Box No. VI provides a convenient manner of listing two different types of documents that were newly discovered and which were not applied in Box No. V:
(A) Published applications or patents which would constitute prior art for purposes of PCT Article 33(2) and (3) had they been published prior to the relevant date (PCT Rule 64.1) but were filed prior to, or claim the priority of an earlier application
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which had been filed prior to, the relevant date (PCT Rule 64.3) - by the application number or patent number as well as the publication date, filing date and priority date; and
(B) Nonwritten disclosure - by the kind of disclosure, date of the disclosure and the date of the written disclosure referring to the nonwritten disclosure.
As with the newly cited art in Box No. V, the subsequently discovered prior art is to be cited in compliance with PCT Rule 43.5 and Administrative Instructions Section 503 using the same citation format used on the international search report. Two copies of each newly cited foreign patent document and non-patent literature reference should be included in the application file when it is sent to PCT Operations for the mailing of the Form PCT/IPEA/408. One of the copies of each newly cited foreign patent document and non-patent literature reference will be sent to the applicant and one copy will be for the Chapter II file. The USPTO no longer mails paper copies of U.S. patents and U.S. patent application publications cited during the international stage of an international application, so paper copies of these documents need not be included in the file.
VII. BOX VII. — CERTAIN DEFECTS IN THE INTERNATIONAL APPLICATION
In Box No. VII, defects in the form and content of the international application are identified. Box No. VII should be filled out in accordance with the instructions for Box No. VII of Form PCT/ISA/237 provided in MPEP § 1845.01.
VIII. BOX NO. VIII. — CERTAIN OBSERVATIONS ON THE INTERNATIONAL APPLICATION
In Box No. VIII, the examiner notifies the applicant of observations made as to the clarity of the claims, the description, the drawings, or on the question whether the claims are fully supported by the description. Box No. VIII should be filled out in accordance with the instructions for Box No. VIII of Form PCT/ISA/237 provided in MPEP § 1845.01.
IX. TIME TO REPLY
An invitation by the International Preliminary Examining Authority (IPEA) to applicant to reply to the examiner’s written opinion will normally set a 2-month time limit for reply.
However, PCT Rule 69.2 sets forth time limits for the IPEA to establish the international preliminary examination report (IPER). Accordingly, a 1-month time limit should be set by the examiner in situations when a 2-month time limit would risk delaying the date of establishment of the IPER beyond:
(A) 28 months from the priority date; or
(B) 6 months from the time provided under PCT Rule 69.1 for the start of international preliminary examination; or
(C) 6 months from the date of receipt by the IPEA of the translation furnished under PCT Rule 55.2.
As a general rule, a 1-month time limit for reply to the written opinion should be set by the examiner if the written opinion (Form PCT/IPEA/408) has not been completed by the examiner within 24 months following the application’s “priority date” as defined in PCT Article 2.
The United States rules pertaining to international preliminary examination of international applications do not provide for any extension of time to reply to a written opinion. See 37 CFR 1.484(d) - (f) and MPEP § 1878.02.
X. AUTHORIZED OFFICER
Every written opinion must be signed by an examiner having at least partial signatory authority.
1878.01 [Reserved]
1878.01(a) Prior Art for Purposes of the Written Opinion and the International Preliminary Examination Report [R-07.2015]
PCT Article 33.
The International Preliminary Examination
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§ 1878.01(a)PATENT COOPERATION TREATY
(6) The international preliminary examination shall take into consideration all the documents cited in the international search report. It may take into consideration any additional documents considered to be relevant in the particular case.
PCT Rule 64
Prior Art for International Preliminary Examination
64.1 Prior Art
(a) For the purposes of Article 33(2) and (3), everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) shall be considered prior art provided that such making available occurred prior to the relevant date.
(b) For the purposes of paragraph (a), the relevant date shall be:
(i) subject to items (ii) and (iii), the international filing date of the international application under international preliminary examination;
(ii) where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is within the priority period, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid;
(iii) where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid for reasons other than the fact that the international application has an international filing date which is later than the date on which the priority period expired.
64.2 Non-Written Disclosures
In cases where the making available to the public occurred by means of an oral disclosure, use, exhibition or other non-written means (“non-written disclosure”) before the relevant date as defined in Rule 64.1(b) and the date of such non-written disclosure is indicated in a written disclosure which has been made available to the public on a date which is the same as, or later than, the relevant date, the non-written disclosure shall not be considered part of the prior art for the purposes of Article 33(2) and (3). Nevertheless, the international preliminary examination report shall call attention to such non-written disclosure in the manner provided for in Rule 70.9.
64.3 Certain Published Documents
In cases where any application or any patent which would constitute prior art for the purposes of Article 33(2) and (3) had it been published prior to the relevant date referred to in Rule 64.1 was published on a date which is the same as, or later than, the relevant date but was filed earlier than the relevant date or claimed the priority of an earlier application which had been
filed prior to the relevant date, such published application or patent shall not be considered part of the prior art for the purposes of Article 33(2) and (3). Nevertheless, the international preliminary examination report shall call attention to such application or patent in the manner provided for in Rule 70.10.
The above provisions apply mutatis mutandis to the written opinion of the International Searching Authority. See PCT Rule 43 bis.1(b).
The relevant date for the purpose of considering prior art is defined in PCT Rule 64.1(b) as:
(A) the international filing date (subject to (B) and (C));
(B) where the international application claims the priority of an earlier application and has an international filing date which is within the priority period, the filing date of such earlier application, unless the Authority considers that the priority claim is not valid;
(C) where the international application claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the filing date of such earlier application, unless the Authority considers that the priority claim is not valid for reasons other than the fact that the international application has an international filing date which is later than the date on which the priority period expired.
When a potentially relevant document has been published between a claimed priority date of the application and its international filing date, the examiner is required to consider whether the claimed priority date is valid for the purposes of determining the “relevant date” of the claims in the international application. For international applications filed on or after April 1, 2007, a priority date should not be considered invalid merely because the international application was not filed prior to the date of expiration of the priority period, provided that the international application is filed within the period of two months from the date of expiration of the priority period. Note that if there is time left for the applicant to perfect, correct or add a priority claim but there is insufficient time for the examiner to make a proper determination as to whether the
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priority claim is valid, due to the need to issue a timely written opinion by the International Searching Authority, the “relevant date” for the purposes of the written opinion will be based on the claimed priority date. See Chapter 11 of the International Search and Preliminary Examination Guidelines, which may be obtained from WIPO’s website (www.wipo.int/pct/en/texts/gdlines.html). In cases where any application or any patent which would constitute prior art for the purpose of international preliminary examination as to novelty and inventive step (nonobviousness) was published on or after the relevant date of the international application under consideration but was filed earlier than the relevant date or claimed the priority of an earlier application which was filed prior to the relevant date, the published application or patent is not to be considered part of the prior art for the purpose of international preliminary examination as to novelty and inventive step. Nevertheless, these documents are to be listed on Form PCT/ISA/237, PCT/IPEA/408, or PCT/IPEA/409, as appropriate under the heading “CERTAIN PUBLISHED DOCUMENTS”.
In determining whether there is inventive step, account should be taken of what the applicant acknowledges in his/her description as known. Such acknowledged prior art should be regarded as correct and used during preliminary examination where appropriate.
For oral or nonwritten disclosure, see PCT Rules 64.2 and 70.9.
1878.01(a)(1) Novelty for Purposes of the Written Opinion and the International Preliminary Examination Report [R-08.2012]
Novelty is defined in PCT Article 33(2).
PCT Article 33
The International Preliminary Examination
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(2) For the purposes of the international preliminary examination, a claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations.
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The above provisions apply mutatis mutandis to the written opinion of the International Searching Authority. See PCT Rule 43 bis.1(b).
1878.01(a)(2) Inventive Step for Purposes of the Written Opinion and the International Preliminary Examination Report [R-08.2012]
Inventive step is defined in PCT Article 33(3).
PCT Article 33
The International Preliminary Examination
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(3) For purposes of the international preliminary examination, a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.
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PCT Rule 65
Inventive Step or Non-Obviousness
65.1 Approach to Prior Art
For the purposes of Article 33(3), the international preliminary examination shall take into consideration the relation of any particular claim to the prior art as a whole. It shall take into consideration the claim’s relation not only to individual documents or parts thereof taken separately but also its relation to combinations of such documents or parts of documents, where such combinations are obvious to a person skilled in the art.
65.2 Relevant Date
For the purposes of Article 33(3), the relevant date for the consideration of inventive step (non-obviousness) is the date prescribed in Rule 64.1.
The above provisions apply mutatis mutandis to the written opinion of the International Searching Authority. See PCT Rule 43 bis.1(b).
1878.01(a)(3) Industrial Applicability for Purposes of the Written Opinion and the International Preliminary Examination Report [R-08.2012]
Industrial applicability is defined in PCT Article 33(4).
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PCT Article 33.
The International Preliminary Examination
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(4) For the purposes of the international preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. “Industry” shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.
*****
The above provisions apply mutatis mutandis to the written opinion of the International Searching Authority. See PCT Rule 43 bis.1(b).
1878.02 Reply to the Written Opinion of the ISA or IPEA [R-07.2015]
PCT Article 34
Procedure Before the International Preliminary Examining Authority
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(2)
(d) The applicant may respond to the written opinion.
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PCT Rule 66
Procedure before the International Preliminary Examining Authority
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66.3 Formal Response to the International Preliminary Examining Authority
(a) The applicant may respond to the invitation referred to in Rule 66.2(c) of the International Preliminary Examining Authority by making amendments or - if he disagrees with the opinion of that Authority - by submitting arguments, as the case may be, or do both.
(b) Any response shall be submitted directly to the International Preliminary Examining Authority.
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66.4. bis Consideration of Amendments, Arguments and Rectifications of Obvious Mistakes
Amendments, arguments and rectifications of obvious mistakes need not be taken into account by the International Preliminary Examining Authority for the purposes of a written opinion or the international preliminary examination report if they are received by, authorized by or notified to that Authority, as applicable, after it has begun to draw up that opinion or report.
66.5 Amendment
Any change, other than the rectification of an obvious mistake, in the claims, the description, or the drawings, including cancellation of claims, omission of passages in the description, or omission of certain drawings, shall be considered an amendment.
66.6 Informal Communications with the Applicant
The International Preliminary Examining Authority may, at any time, communicate informally, over the telephone, in writing, or through personal interviews, with the applicant. The said Authority shall, at its discretion, decide whether it wishes to grant more than one personal interview if so requested by the applicant, or whether it wishes to reply to any informal written communication from the applicant.
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66.8 Form of Amendments
(a) Subject to paragraph (b), when amending the description or the drawings, the applicant shall be required to submit a replacement sheet for every sheet of the international application which, on account of an amendment, differs from the sheet previously filed. The replacement sheet or sheets shall be accompanied by a letter which shall draw attention to the differences between the replaced sheets and the replacement sheets, shall indicate the basis for the amendment in the application as filed and shall preferably also explain the reasons for the amendment.
(b) Where the amendment consists in the deletion of passages or in minor alterations or additions, the replacement sheet referred to in paragraph (a) may be a copy of the relevant sheet of the international application containing the alterations or additions, provided that the clarity and direct reproducibility of that sheet are not adversely affected. To the extent that any amendment results in the cancellation of an entire sheet, that amendment shall be communicated in a letter which shall preferably also explain the reasons for the amendment.
(c) When amending the claims, Rule 46.5 shall apply mutatis mutandis. The set of claims submitted under Rule 46.5 as applicable by virtue of this paragraph shall replace all the claims originally filed or previously amended under Articles 19 or 34, as the case may be.
37 CFR 1.485 Amendments by applicant during international preliminary examination.
The applicant may make amendments at the time of filing the Demand. The applicant may also make amendments within the time limit set by the International Preliminary Examining Authority for reply to any notification under § 1.484(b) or to any written opinion. Any such amendments must be made in accordance with PCT Rule 66.8.
A reply to the written opinion of the ISA in the form of arguments and/or amendments will be considered by the IPEA if a demand has been filed with the
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IPEA. All amendments in reply to a written opinion must be received within the time limit set for reply in order to be assured of consideration in the international preliminary examination report. Amendments filed at or before expiration of the period for reply will be considered. Since the examiner will begin to draw up the international preliminary examination report rather promptly after the time period expires, amendments filed after expiration of the reply period may not be considered. However, as indicated in MPEP § 1871, there may be situations where it is advisable, to the extent possible, to take such amendments or arguments into account, for example, where the international preliminary examination report has not yet been completed and it is readily apparent to the examiner that consideration of the late-filed response would result in the issuance of a favorable report. In view of the short time period for completion of preliminary examination, applicants are strongly encouraged to file any amendments promptly. 37 CFR 1.484(d) does not allow for extensions of time to reply to a written opinion. The policy of not allowing extensions of time is to ensure that the USPTO can meet its treaty deadline for transmission of the international preliminary examination report.
Any change, other than the rectification of obvious mistakes in the claims, the description, or the drawings, including the cancellation of claims, omission of passages in the description or omission of certain drawings will be considered an amendment (PCT Rule 66.5). The Patent and Trademark Office when acting as the International Preliminary Examining Authority will not accept any non-English applications or amendments.
Any amendments to the description and the drawings in reply to a written opinion must (1) be made by submitting a replacement sheet for every sheet of the application which differs from the sheet it replaces unless an entire sheet is cancelled and (2) include a description of how the replacement sheet differs from the replaced sheet in accordance with PCT Rule 66.8.
Any amendment to the claims in reply to a written opinion must be made by submitting a replacement sheet or sheets containing a complete set of claims in replacement of all the claims originally filed or
previously amended under Articles 19 or 34, as the case may be in accordance with PCT Rule 66.8. The replacement sheet or sheets shall be accompanied by a letter which: (i) shall identify the claims which, on account of the amendments, differ from the claims originally filed, and shall draw attention to the differences between the claims originally filed and the claims as amended; (ii) shall identify the claims originally filed which, on account of the amendments, are cancelled; (iii) shall indicate the basis for the amendments in the application as filed.
In the particular case where the amendment cancels claims, passages in the description or certain drawings resulting in the cancellation of an entire sheet, the amendment must be submitted in the form of a letter cancelling the sheet (PCT Rule 66.8(a)).
Generally, the replacement sheets should be in typed form and contain the changes in clean copy without any underlining and/or bracketing. A marked-up copy may be included as part of the remarks, along with the clean copy.
Any paper submitted by the applicant, if not in the form of a letter, must be accompanied by a letter signed by the applicant or agent (PCT Rule 92.1). The letter must draw attention to the differences between the replaced sheet and the replacement sheet.
The examiner should make sure that amendments filed in accordance with the PCT, which are necessary to correct any deficiencies notified to the applicant, do not go beyond the disclosure of the international application as filed, thus violating PCT Article 34(2)(b). In other words, no amendment should contain matter that cannot be substantiated by the application as originally filed. In a situation where new matter is introduced by amendment in reply to a written opinion, the international preliminary examination report will be established as if the amendment had not been made, and the report should so indicate. It shall also indicate the reasons why the amendment goes beyond the disclosure (PCT Rule 70.2(c)). Although new matter which appears on a replacement sheet will be disregarded for the purpose of establishing the report, the remainder of the replacement sheet, including any amendments which do not constitute new matter,
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will be taken into consideration for the purpose of establishing the report.
INTERVIEWS
The examiner or applicant may, after the filing of a demand and during the time limit for reply to the written opinion, request a telephone or personal interview. Only one interview is a matter of right, whether by telephone or in person. Additional interviews may be authorized by the examiner in a particular international application where such additional interview may be helpful to advance the international preliminary examination procedure.
All interviews of substance must be made of record by using PCT/IPEA/428 Notice on Informal Communication with the Applicant.
When an interview is arranged, whether by telephone or in writing, and whether by the examiner or by the applicant, the matters for discussion should be stated.
The records of interviews or telephone conversations should indicate, where appropriate, whether a reply is due from the applicant or agent or whether the examiner wishes to issue an additional written opinion or establish the international preliminary examination report.
If the applicant desires to reply to the written opinion, such reply must be filed within the time limit set for reply in order to assure consideration. No extensions to the time limit will be considered or granted. If no timely reply is received from the applicant, the international preliminary examination report will be established by the examiner, treating each claim substantially as it was treated in the written opinion. Replies to the written opinion which are not filed within the time limit set but which reach the examiner before the examiner takes up the application for preparation of the final report may be considered. Thus, only timely replies can be assured of consideration.
The applicant may reply to the invitation referred to in Rule 66.2(c) by making amendments or, if the applicant disagrees with the opinion of the authority, by submitting arguments, as the case may be, or both (PCT Rule 66.3).
If applicant does not reply to the written opinion, the international preliminary examination report will be prepared in time for forwarding to the International Division in finished form by 27 months from the priority date.
1879 Preparation of the International Preliminary Examination Report [R-07.2015]
PCT Article 35
The International Preliminary Examination Report
(1) The international preliminary examination report shall be established within the prescribed time limit and in the prescribed form.
(2) The international preliminary examination report shall not contain any statement on the question whether the claimed invention is or seems to be patentable or unpatentable according to any national law. It shall state, subject to the provisions of paragraph (3), in relation to each claim, whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined for the purposes of the international preliminary examination in Article 33(1) to (4). The statement shall be accompanied by the citation of the documents believed to support the stated conclusion with such explanations as the circumstances of the case may require. The statement shall also be accompanied by such other observation as the Regulations provide for.
(3)
(a) If, at the time of establishing the international preliminary examination report, the International Preliminary Examining Authority considers that any of the situations referred to in Article 34(4)(a) exists, that report shall state this opinion and the reasons therefor. It shall not contain any statement as provided in paragraph (2).
(b) If a situation under Article 34(4)(b) is found to exist, the international preliminary examination report shall, in relation to the claims in question, contain the statement as provided in subparagraph (a), whereas, in relation to the other claims, it shall contain the statement as provided in paragraph (2).
PCT Administrative Instructions Section 604
Guidelines for Explanations Contained in the International Preliminary Examination Report
(a) Explanations under Rule 70.8 shall clearly point out to which of the three criteria of novelty, inventive step (non-obviousness) and industrial applicability referred to in Article 35(2), taken separately, any cited document is applicable and shall clearly describe, with reference to the cited documents, the reasons supporting the conclusion that any of the said criteria is or is not satisfied.
(b) Explanations under Article 35(2) shall be concise and preferably in the form of short sentences.
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The international preliminary examination report (otherwise known as International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty)) is established on Form PCT/IPEA/409.
The international preliminary examination report must be established within:
(A) 28 months from the priority date; or
(B) 6 months from the time provided under PCT Rule 69.1 for the start of international preliminary examination; or
(C) 6 months from the date of receipt by the IPEA of the translation furnished under PCT Rule 55.2, whichever expires last, as provided in PCT Rule 69.2.
To meet the 28-month date for establishing the report, Office practice is to complete internal processing by 27 months from the priority date in order to provide adequate time for reviewing, final processing and mailing. Thus, under normal circumstances, the applicant receives the report, at the latest, 2 months before national processing at the elected Offices may start. This ensures that he/she has time to consider whether, and in which elected Offices, he/she wants to enter the national stage and to take the necessary action.
The international preliminary examination report contains, among other things, a statement (in the form of simple “yes” or “no”), in relation to each claim which has been examined, on whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness) and industrial applicability. The statement is, where appropriate, accompanied by the citation of relevant documents together with concise explanations pointing out the criteria to which the cited documents are applicable and giving reasons for the International Preliminary Examining Authority’s conclusions. Where applicable, the report also includes remarks relating to the question of unity of invention.
The international preliminary examination report identifies the basis on which it is established, that is, whether, and if so, which amendments have been taken into account. Replacement sheets containing amendments under PCT Article 19 and/or PCT
Article 34 which have been taken into account are attached as “annexes” to the international preliminary examination report. Amendments under PCT Article 19 which have been considered as reversed by an amendment under PCT Article 34 are not annexed to the report; neither are the letters which accompany replacement sheets.
Superseded amendments are not normally included. However, if a first replacement sheet is acceptable and a second replacement sheet for the same numbered sheet contains subject matter that goes beyond the original disclosure of the application as filed, the second replacement sheet supersedes the first replacement sheet, but both the first and second replacement sheets shall be attached to the international preliminary examination report. In this case, the superseded replacement sheets are to be marked as provided in PCT Administrative Instructions Section 602.
Before the preparation of the Chapter II report, a top-up search should be conducted by the IPEA to identify any additional prior art that has been published or has become available subsequent to the date of the establishment of the international search report. The purpose is to discover any intermediate prior art not available during the international search, i.e. patent application published on or after the filing or, the valid priority date of the international application, but having an earlier filing or priority date. The top-up search should be differentiated from additional search. A top-up search is to find prior art which recently became available, which is not the same as additional search required as a result of a claim amendment to present additional features not previously claimed.
A top-up search should be performed in all Chapter II examination, except where the examiner considers performing a top-up search would serve no useful purpose. This, however, should be a rare occurrence. For example, this is the case when it is decided that the international application, in its entirety, relates to subject matter on which the International Preliminary Examining Authority is not required to carry out an international preliminary examination, or that the international application is so unclear or the claims are so inadequately supported by the description that no meaningful opinion can be
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formed on the novelty, inventive step, or industrial applicability, of the claimed invention. The same applies when no international search report has been established for certain claims and it is thus decided not to carry out an international preliminary examination on these claims. Note, however, that when any of the above situations applies to only part of the claimed subject matter or where there is lack of unity of invention, a top-up search should still be carried out but restricted to those parts of the international application that are the subject of international preliminary examination. Another situation is when the IPEA considers that the documents cited in the International Search Report are sufficient to show there is lack of novelty on the entire subject matter. A further example where a top-up search is considered to serve no useful purpose is when the International Search Report cited novelty defeating X references and no amendment to the claims or comments on the application of art has been filed.
If the claims in the international application lack unity, the examiner will first issue an invitation to pay further examination fees and then perform the top-up search on inventions for which examination fees have been paid. The invention paid for must not have been excluded from preliminary examination due to lack of international search in Chapter I.
In an application where an Article 34 amendment has been filed but no basis can be located, and/or there is no letter explaining the basis, the top-up search may be limited to the scope of the claims forming the basis for the report.
In cases where relevant documents have been discovered in a top-up search and the examiner intends to raise new objection based on the documents, a second written opinion should be issue where the new objection was not necessitated by an amendment.
The international preliminary examination report may not express a view on the patentability of the invention. PCT Article 35(2) expressly states that “the international preliminary examination report shall not contain any statement on the question whether the claimed invention is or seems to be
patentable or unpatentable according to any national law.”
Form PCT/IPEA/409 Cover Sheet. The classification of the subject matter placed on the cover sheet of the report shall be either (1) that given by the International Searching Authority under PCT Rule 43.3, if the examiner agrees with such classification, or (2) shall be that which the examiner considers to be correct, if the examiner does not agree with that classification. Both the International Patent Classification (IPC) and the classification required by the IPEA/US should be given. The cover sheet will also include the date on which the report was completed and the name and mailing address of the International Preliminary Examining Authority. This information is generated automatically by the OACS software when preparing the report. In addition, the examiner must indicate the date on which the demand for international preliminary examination was submitted. The date of receipt of the demand is usually stamped on the first sheet of the demand (form PCT/IPEA/401).
I. BOX NO. I. BASIS OF REPORT
When completing Box No. I, item 1 of Form PCT/IPEA/409, the examiner must indicate whether or not the report has been established on the basis of the international application in the language in which it was filed. If a translation was furnished for the purpose of the international search, publication or international preliminary examination, this must be indicated. The international preliminary examination report will be established on the basis of any amendments, rectifications, priority and/or unity of invention holdings and shall answer the questions concerning novelty, inventive step, and industrial applicability for each of the claims under examination.
For the purpose of completing Box No. I, item 2, sheets of the description and drawings filed during Chapter I proceedings and stamped “SUBSTITUTE SHEET (RULE 26)”, “RECTIFIED SHEET (RULE 91)”, and “INCORPORATED BY REFERENCE (RULE 20.6)” are considered to be originally filed/furnished pages and should be listed as originally filed/furnished pages. Only those
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amendments or rectifications to the description and drawings filed on the date of demand or after the filing of a demand should be listed as later filed pages “received by this Authority on ______________."
Claims filed during the Chapter I proceedings and stamped “SUBSTITUTE SHEET (RULE 26)”, “RECTIFIED SHEET (RULE 91)”, and “INCORPORATED BY REFERENCE (RULE 20.6)” are also considered to be originally filed/furnished and should be listed as originally filed/furnished claim nos. or pages. However, amended claims filed under Article 19 in response to the international search report are to be indicated as claim nos. or pages as amended (together with any statement) under Article 19. The International Bureau (IB) marks, in the upper right-hand corner of each replacement sheet submitted under PCT Article 19, the international application number, the date on which that sheet was received under PCT Article 19 and, in the middle of the bottom margin, the words “AMENDED SHEET (ARTICLE 19).” See Administrative Instructions Section 417. Applicant’s submission of a timely amendment to the claims alleged to be under Article 19 is accepted under Article 34 (not Article 19) unless the International Bureau has indicated the amendments were accepted under Article 19. Only those claims filed on the date of demand or after the filing of a demand should be listed as claim nos. or pages “received by this Authority on ______________.”
Further, if the report has been based on a nucleotide and/or amino acid sequence disclosed and necessary to the claimed invention, the examiner must indicate the format of the material (i.e., on paper/image or in electronic form (text)) and the time of filing/furnishing (i.e., contained in the international application as filed, filed together with the international application in electronic form (text), or furnished subsequently to the IPEA). If more than one version or copy of the sequence listing is filed, the examiner must indicate in item 2 whether the applicant has provided the required statement indicating that the information in the subsequent or additional copies are identical to that in the application as filed or does not go beyond the application as filed Item 3 is available for providing additional comments.
The examiner must also indicate, in Box No. I, item 3, if any of the amendments filed resulted in the cancellation of any pages of the description, any of the claims, any sheets and/or figures of the drawings, any of the sequence listing.
If the examiner considers any of the amendments to go beyond the original disclosure, or they were not accompanied by a letter indicating the basis for the amendment in the application as filed, the examiner must point this out in Box No. I, item 4 and explain the reasons for this determination in the Supplemental Box. New matter which appears on a replacement sheet will be disregarded for the purpose of establishing the report. However, the remainder of the replacement sheet, including any amendments which do not constitute new matter, will be taken into consideration for the purpose of establishing the report.
Box No. I, item 5 needs to be marked if the report is established taking into account the rectification of an obvious mistake under PCT Rule 91.
Box No. I, item 6 needs to be marked whether or not top-up searches have been carried out by the International Preliminary Examining Authority. If the search was carried out, the date of the top-up search and whether additional relevant document discovered need to be indicated. If any document discovered in the top-up search is used to support any negative statement with respect to any of the claimed subject matter, it should be cited in Box No. V of the report. Documents that refer to an oral disclosure, use, exhibition or other means occurred prior to the international filing date and documents that refer to earlier patent document, but published on or after the international filing date, should be cited in Box VI of the report.
Further, Box No. I, item 7 needs to be marked if the report is established taking into account the supplementary international search report(s) from the specified Supplementary International Searching Authority(ies) (SISA).
II. BOX NO. II. PRIORITY
Box No. II of Form PCT/IPEA/409 is to inform applicant of the establishment of the report as if the
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priority claim made in the international application had not been made. This may occur where:
(A) the IPEA requested, but was not furnished, a copy of the earlier application whose priority is claimed (PCT Rule 66.7(a)), or
(B) applicant failed to timely comply with an invitation to furnish a translation of the earlier application (PCT Rule 66.7(b)), or
(C) the priority claim is found invalid or all claims are directed to inventions which were not described and enabled by the earlier application (PCT Rule 64.1), or
(D) the priority claim has been withdrawn.
III. BOX NO. III. NON-ESTABLISHMENT OF OPINION WITH REGARD TO NOVELTY, INVENTIVE STEP OR INDUSTRIAL APPLICABILITY
Indications that a report has not been established on the questions of novelty, inventive step or industrial applicability, either as to some claims or as to all claims, are given in Box No. III on the Report. The examiner must specify that the report has not been established because:
(A) the application relates to subject matter which does not require international preliminary examination;
(B) the description, claims or drawings are so unclear that no meaningful opinion could be formed;
(C) the claims are so inadequately supported by the description that no meaningful opinion could be formed;
(D) no international search report has been established for the claims.
Where the report has not been established in relation to certain claims only, the claims affected must be specified.
If the nucleotide and/or amino acid sequence listing, do not comply with the standard in Annex C of the Administrative Instructions, the examiner must indicate the reason for non-compliance.
IV. BOX NO. IV. LACK OF UNITY OF INVENTION
If the applicant has paid additional fees or has restricted the claims in response to an invitation to do so or if the applicant has failed to respond to the invitation to pay additional fees or restrict the claims, the international preliminary examination report shall so indicate. The examiner should indicate whether:
(A) the claims have been restricted;
(B) additional fees have been paid without protest;
(C) additional fees have been paid by the applicant under protest;
(D) the applicant has neither restricted the claims nor paid additional fees;
(E) the examiner was of the opinion that the international application did not comply with the requirement of unity of invention but decided not to issue an invitation to restrict the claims or pay additional fees.
In addition, if the examiner is examining less than all the claims, the examiner must indicate which parts of the international application were, and which parts were not, the subject of international preliminary examination.
In the case where additional fees were paid under protest, the text of the protest, together with the decision thereon, must be annexed to the report by International Application Processing Division IPEA personnel if the applicant has so requested.
Where an indication has been given under item (E) above, the examiner must also specify the reasons for which the international application was not considered as complying with the requirement of unity of invention.
V. BOX NO. V. REASONED STATEMENT UNDER ARTICLE 35(2) WITH REGARD TO NOVELTY, INVENTIVE STEP, AND INDUSTRIAL APPLICABILITY; AND CITATIONS AND
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EXPLANATIONS SUPPORTING SUCH STATEMENT
The examiner must indicate whether each claim appears to satisfy the criteria of novelty, inventive step (nonobviousness), and industrial applicability. The determination or statement should be made on each of the three criteria taken separately. The determination as to any criteria should be negative if the criteria as to the particular claim is not satisfied. The examiner should always cite documents believed to support any negative determination as to novelty and inventive step. Any negative holding as to lack of industrial applicability must be fully explained. See the further discussion in MPEP § 1845.01 relating to Box No. V of Form PCT/ISA/237. The citation of documents should be in accordance with Administrative Instructions Sections 503 and 611. The procedure is the same as the procedure for search report citations. Explanations should clearly indicate, with reference to the cited documents, the reasons supporting the conclusions that any of the said criteria is or is not satisfied, unless the statement is positive and the reason for citing any document is easy to understand when consulting the document. If only certain passages of the cited documents are relevant, the examiner should identify them, for example, by indicating the page, column, or the lines where such passages appear. Preferably, a reasoned statement should be provided in all instances.
VI. BOX NO. VI. CERTAIN DOCUMENTS CITED
If the examiner has discovered, or the international search report has cited, a relevant document which refers to a nonwritten disclosure, and the document was only published on or after the relevant date of the international application, the examiner must indicate on the international preliminary examination report:
(A) the date on which the document was made available to the public;
(B) the date on which the non-written public disclosure occurred.
The examiner should also identify any published application or patent which would constitute prior art for purposes of PCT Article 33(2) and (3) had it
been published prior to the relevant date (PCT Rule 64.1) but was filed prior to, or claims the priority of an earlier application which had been filed prior to, the relevant date (PCT Rule 64.3). For each such published application or patent the following indications should be provided:
(A) its date of publication;
(B) its filing date, and its claimed priority date (if any).
The Report may also indicate that, in the opinion of the International Preliminary Examining Authority, the priority date of the document cited has not been validly claimed ( PCT Rule 70.10).
Guidelines explaining to the examiner the manner of indicating certain special categories of documents as well as the manner of indicating the claims to which the documents cited in such report are relevant are set forth in Administrative Instructions Sections 507(c), (d), and (e) and 508.
VII. BOX NO. VII. CERTAIN DEFECTS IN THE INTERNATIONAL APPLICATION
If, in the opinion of the examiner, defects existing in the form or contents of the international application have not been suitably solved at the prescribed time limit for establishing the international preliminary examination report, the examiner may include this opinion in the report, and if included, must also indicate the reasons therefor. See the further discussion in MPEP § 1845.01 relating to Box No. VII of Form PCT/ISA/237.
VIII. BOX NO. VIII. CERTAIN OBSERVATIONS ON THE INTERNATIONAL APPLICATION
If, in the opinion of the examiner, the clarity of claims, the description, and the drawings, or the question as to whether the claims are fully supported by the description have not been suitably solved at the prescribed time limit for establishing the international preliminary examination report, the examiner may include this opinion in the report, and if included, must also indicate the reasons therefor. See the further discussion in MPEP § 1845.01 relating to Box No. VIII of Form PCT/ISA/237.
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IX. FINALIZATION OF THE INTERNATIONAL PRELIMINARY EXAMINATION REPORT
The name of the authorized officer responsible for the report must be indicated. Pursuant to Administrative Instructions Section 612, an “authorized officer” is the person who actually performed the examination work and prepared the international preliminary examination report or another person who was responsible for supervising the examination. Thus, an examiner need not have signatory authority in order to be named as an authorized officer on the examination report. However, the “file copy” of the international preliminary examination report must be signed by a primary examiner.
The total number of sheets of the international preliminary examination report, including the cover sheet, must be indicated on the cover sheet. In addition, the annexes, if any, must accompany the international preliminary examination report.
For annexes to be sent to the applicant and to the International Bureau, an indication must be made regarding the total sheets of the following: sheets of the description, claims and/or drawings which have been amended and/or sheets containing rectifications
authorized by the IPEA, unless those sheets were superseded or cancelled, and any accompanying letters (see PCT Rules 46.5, 66.8, 70.16, 91.2, and PCTAdministrative Instructions Section 607); sheets containing rectifications, where the decision was made by the IPEA not to take them into account because they were not authorized by or notified to the IPEA at the time when the IPEA began to draw up the report, and any accompanying letters (PCT Rules 66.4 bis, 70.2(e), 70.16 and 91.2); and superseded sheets and any accompanying letters, where the IPEA either considered that the superseding sheets contained an amendment that goes beyond the disclosure in the international application as filed, or the superseding sheets were not accompanied by a letter indicating the basis for the amendments in the application as filed, as indicated in item 4 of Box No. I and the Supplemental Box (see PCT Rule 70.16(b)).
For annexes to be sent to the International Bureau only, an indication must be made regarding the total of the type and number of electronic carrier(s) containing a sequence listing, in electronic form only, as indicated in the Supplemental Box Relating to Sequence Listing (see paragraph 3 bis of Annex C of the PCT Administrative Instructions).
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1879.01 Time Limit for Preparing Report [R-07.2015]
PCT Rule 69
Start of and Time Limit for International Preliminary Examination
69.1 Start of International Preliminary Examination
(a) Subject to paragraphs (b) to (e), the International Preliminary Examining Authority shall start the international preliminary examination when it is in possession of all of the following:
(i) the demand;
(ii) the amount due (in full) for the handling fee and the preliminary examination fee, including where applicable, the late payment fee under Rule 58 bis.2; and
(iii) either the international search report or the declaration by the International Searching Authority under Article 17(2)(a) that no international search report will be established, and the written opinion established under Rule 43 bis.1;
provided that the International Preliminary Examining Authority shall not start the international preliminary examination before the expiration of the applicable time limit under Rule 54 bis.1(a) unless the applicant expressly requests an earlier start.
(b) If the national Office or intergovernmental organization that acts as International Searching Authority also acts as International Preliminary Examining Authority, the international preliminary examination may, if that national Office or intergovernmental organization so wishes and subject to paragraphs (d) and (e), start at the same time as the international search.
(b-bis) Where, in accordance with paragraph (b), the national Office or intergovernmental organization that acts as both International Searching Authority and International Preliminary ExaminingAuthority wishes to start the international preliminary examination at the same time as the international search and considers that all of the conditions referred to in Article 34(2)(c)(i) to (iii) are fulfilled, that national Office or intergovernmental organization need not, in its capacity as International Searching Authority, establish a written opinion under Rule 43 bis.1.
(c) Where the statement concerning amendments contains an indication that amendments under Article 19 are to be taken into account ( Rule 53.9(a)(i)), the International Preliminary Examining Authority shall not start the international preliminary examination before it has received a copy of the amendments concerned.
(d) Where the statement concerning amendments contains an indication that the start of the international preliminary examination is to be postponed ( Rule 53.9(b)), the International Preliminary Examining Authority shall not start the international preliminary examination before whichever of the following occurs first:
(i) it has received a copy of any amendments made under Article 19;
(ii) it has received a notice from the applicant that he does not wish to make amendments under Article 19; or
(iii) the expiration of the applicable time limit under Rule 46.1.
(e) Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand ( Rule 53.9(c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Authority shall not start the international preliminary examination before it has received the amendments or before the time limit fixed in the invitation referred to in Rule 60.1(g) has expired, whichever occurs first.
69.2 Time Limit for International Preliminary Examination
The time limit for establishing the international preliminary examination report shall be whichever of the following periods expires last:
(i) 28 months from the priority date; or
(ii) six months from the time provided under Rule 69.1 for the start of the international preliminary examination; or
(iii) six months from the date of receipt by the International Preliminary Examining Authority of the translation furnished under Rule 55.2.
The time limit for preparing the international preliminary examination report is 28 months from the priority date, or 6 months from the time provided under PCT Rule 69.1 for the start of the international preliminary examination, or 6 months from the date of receipt by the International Preliminary Examining Authority of the translation furnished under PCT Rule 55.2, whichever expires first. This time limit is 27 months internally to ensure sufficient time to process, review and mail the report in sufficient time to reach the International Bureau by 28 months from the earliest priority date.
1879.02 Transmittal of the International Preliminary Examination Report [R-07.2015]
PCT Article 36
Transmittal, Translation, and Communication of the International Preliminary Examination Report
(1) The international preliminary examination report, together with the prescribed annexes, shall be transmitted to the applicant and to the International Bureau.
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PCT Rule 71
Transmittal of the International Preliminary Examination Report
71.1 Recipients
The International Preliminary Examining Authority shall, on the same day, transmit one copy of the international preliminary examination report and its annexes, if any, to the International Bureau, and one copy to the applicant.
71.2 Copies of Cited Documents
(a) The request under Article 36(4) may be presented any time during seven years from the international filing date of the international application to which the report relates.
(b) The International Preliminary Examining Authority may require that the party (applicant or elected Office) presenting the request pay to it the cost of preparing and mailing the copies. The level of the cost of preparing copies shall be provided for in the agreements referred to in Article 32(2) between the International Preliminary Examining Authorities and the International Bureau.
(c) [Deleted]
(d) Any International Preliminary Examining Authority may perform the obligations referred to in paragraphs (a) and (b) through another agency responsible to it.
The international preliminary examination report and its annexes, if any, are transmitted to the applicant and the International Bureau using a Notification of Transmittal of International Preliminary Report on Patentability (Form PCT/IPEA/416). Every effort is made to ensure that the transmittal is effected in sufficient time to reach the International Bureau before the expiration of the time limit set in PCT Rule 69.2.
AUTHORIZED OFFICER
The name of the authorized officer responsible for the international preliminary report must be indicated on the Form PCT/IPEA/416.
1879.03 Translations [R-07.2015]
PCT Article 36
Transmittal, Translation, and Communication of the International Preliminary Examination Report
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(2)
(a) The international preliminary examination report and its annexes shall be translated into the prescribed languages.
(b) Any translation of the said report shall be prepared by or under the responsibility of the International Bureau, whereas any translation of the said annexes shall be prepared by the applicant.
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PCT Rule 70
International Preliminary Report on Patentability by the International Preliminary Examining Authority (International
Preliminary Examination Report)
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70.17 Languages of the Report and the Annexes
The report and any annex shall be in the language in which the international application to which they relate is published, or, if the international preliminary examination is carried out, pursuant to Rule 55.2, on the basis of a translation of the international application, in the language of that translation.
PCT Rule 72
Translation of the International Preliminary Examination Report and of the Written Opinion of the International
Searching Authority
72.1 Languages
(a) Any elected State may require that the international preliminary examination report, established in any language other than the official language, or one of the official languages, of its national Office, be translated into English.
(b) Any such requirement shall be notified to the International Bureau, which shall promptly publish it in the Gazette.
72.2 Copy of Translation for the Applicant
The International Bureau shall transmit a copy of the translation referred to in Rule 72.1(a) of the international preliminary examination report to the applicant at the same time as it communicates such translation to the interested elected Office or Offices.
72.2 bis Translation of the Written Opinion of the International Searching Authority Established Under Rule 43 bis.1
In the case referred to in Rule 73.2(b)(ii), the written opinion established by the International Searching Authority under Rule 43 bis.1 shall, upon request of the elected Office concerned, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to the elected Office concerned within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.
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72.3 Observations on the Translation
The applicant may make written observations as to the correctness of the translation of the international preliminary examination report or of the written opinion established by the International Searching Authority under Rule 43 bis.1 and shall send a copy of the observations to each of the interested elected Offices and to the International Bureau.
The written opinion established by the International Searching Authority and the international preliminary examination report and any annexes are established in Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish, if the international application was filed in one of those languages or translated into one of those languages. See PCT Rules 48.3(b), 55.2 and 70.17. Each elected State may require that the written opinion and/or the report, if it is not in (one of) the official language(s) of its national Office, be translated into English. See PCT Rule 72.1(a). In that case, the translation of the body of the written opinion and/or report is prepared by the International Bureau, which transmits copies to the applicant and to each interested elected Office. If any elected Office requires a translation of annexes to the report, the preparation and furnishing of that translation is the responsibility of the applicant. See PCT Article 36(2)(b).
The U.S. requires the final report and the annexes thereto to be in English. Translation of the annexes for national stage purposes is required pursuant to 35 U.S.C. 371(c)(5) and 37 CFR 1.495(e). Failure to timely provide such translation results in cancellation of the annexes.
1879.04 Confidential Nature of the Report [R-07.2015]
PCT Article 38
Confidential Nature of the International Preliminary Examination
(1) Neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or authorized by the applicant, allow access within the meaning, and with the proviso, of Article 30(4) to the file of the international preliminary examination by any person or authority at any time, except by the elected Offices once the international preliminary examination report has been established.
(2) Subject to the provisions of paragraph (1) and Articles 36(1) and (3) and 37(3)(b), neither the International Bureau nor the International Preliminary Examining Authority shall, unless
requested or authorized by the applicant, give information on the issuance or non-issuance of an international preliminary examination report and on the withdrawal or non-withdrawal of the demand or of any election.
37 CFR 1.11 Files open to the public.
(a) The specification, drawings, and all papers relating to the file of: A published application; a patent; or a statutory invention registration are open to inspection by the public, and copies may be obtained upon the payment of the fee set forth in § 1.19(b)(2). If an application was published in redacted form pursuant to § 1.217, the complete file wrapper and contents of the patent application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; and the application is still pending. See § 2.27 of this title for trademark files.
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37 CFR 1.14 Patent applications preserved in confidence. *****
(g) International applications.
(1) Copies of international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2), or copies of a document in such application files, will be furnished in accordance with PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3, upon written request including a showing that the publication of the application has occurred and that the U.S. was designated, and upon payment of the appropriate fee (see § 1.19(b)), if:
(i) With respect to the Home Copy (the copy of the international application kept by the Office in its capacity as the Receiving Office, see PCT Article 12(1)), the international application was filed with the U.S. Receiving Office;
(ii) With respect to the Search Copy (the copy of an international application kept by the Office in its capacity as the International Searching Authority, see PCT Article 12(1)), the U.S. acted as the International Searching Authority, except for the written opinion of the International Searching Authority which shall not be available until the expiration of thirty months from the priority date; or
(iii) With respect to the Examination Copy (the copy of an international application kept by the Office in its capacity as the International Preliminary Examining Authority), the United States acted as the International Preliminary Examining Authority, an International Preliminary Examination Report has issued, and the United States was elected.
(2) A copy of an English language translation of a publication of an international application which has been filed in the United States Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be furnished upon written request including a showing that the publication of the application in accordance with PCT Article 21(2) has occurred and that the U.S. was designated, and upon payment of the appropriate fee (§ 1.19(b)(4)).
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(3) Access to international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2), or copies of a document in such application files, will be permitted in accordance with PCT Articles 30 and 38 and PCT Rules 44 ter.1, 94.2 and 94.3, upon written request including a showing that the publication of the application has occurred and that the U.S. was designated.
(4) In accordance with PCT Article 30, copies of an international application-as-filed under paragraph (a) of this section will not be provided prior to the international publication of the application pursuant to PCT Article 21(2).
(5) Access to international application files under paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be permitted with respect to the Examination Copy in accordance with PCT Article 38.
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(i) Access or copies in other circumstances. The Office, either sua sponte or on petition, may also provide access or copies of all or part of an application if necessary to carry out an Act of Congress or if warranted by other special circumstances. Any petition by a member of the public seeking access to, or copies of, all or part of any pending or abandoned application preserved in confidence pursuant to paragraph (a) of this section, or any related papers, must include:
(1) The fee set forth in § 1.17(g); and
(2) A showing that access to the application is necessary to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access to all or part of the application.
For a discussion of the availability of copies of documents from international application files and/or access to international application files, see MPEP § 110.
1880 Withdrawal of Demand or Election [R-07.2015]
PCT Article 37
Withdrawal of Demand or Election
(1) The applicant may withdraw any or all elections.
(2) If the election of all elected States is withdrawn, the demand shall be considered withdrawn.
(3)
(a) Any withdrawal shall be notified to the International Bureau.
(b) The elected Office concerned and the International Preliminary Examining Authority concerned shall be notified accordingly by the International Bureau.
(4)
(a) Subject to the provisions of subparagraph (b), withdrawal of the demand or of the election of a Contracting State shall, unless the national law of that State provides otherwise, be considered to be withdrawal of the international application as far as that State is concerned.
(b) Withdrawal of the demand or of the election shall not be considered to be withdrawal of the international application if such withdrawal is effected prior to the expiration of the applicable time limit under Article 22; however, any Contracting State may provide in its national law that the aforesaid shall apply only if its national Office has received, within the said time limit, a copy of the international application, together with a translation (as prescribed), and the national fee.
PCT Rule 90 bis
Withdrawals
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90 bis.4 Withdrawal of the Demand, or of Elections
(a) The applicant may withdraw the demand or any or all elections at any time prior to the expiration of 30 months from the priority date.
(b) Withdrawal shall be effective upon receipt of a notice addressed by the applicant to the International Bureau.
(c) If the notice of withdrawal is submitted by the applicant to the International Preliminary Examining Authority, that Authority shall mark the date of receipt on the notice and transmit it promptly to the International Bureau. The notice shall be considered to have been submitted to the International Bureau on the date marked.
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PCT Administrative Instructions Section 606
Cancellation of Elections
(a) The International Preliminary Examining Authority shall cancel ex officio:
(i) the election of any State which is not a designated State;
(ii) the election of any State not bound by Chapter II of the Treaty.
(b) The International Preliminary Examining Authority shall enclose that election within square brackets, shall draw a line between the square brackets while still leaving the election legible and shall enter, in the margin, the words “CANCELLED EX OFFICIO BY IPEA” or their equivalent in the language of the demand, and shall notify the applicant accordingly.
Any withdrawal of the demand or any election must be sent to the International Bureau or to the International Preliminary Examining Authority, provided that the withdrawal is signed by all applicants in accordance with PCT Rule 90 bis.5. Pursuant to PCT Rules 90.4(e) and 90.5(d), the
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requirement for a separate power of attorney or a copy of the general power of attorney shall not be waived in cases of withdrawal.
1881 Receipt of Notice of Election and Preliminary Examination Report by the United States Patent and Trademark Office [R-07.2015]
PCT Rule 61
Notification of the Demand and Elections
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61.2 Notification to the Elected Offices
(a) The notification provided for in Article 31(7) shall be effected by the International Bureau.
(b) The notification shall indicate the number and filing date of the international application, the name of the applicant, the filing date of the application whose priority is claimed (where priority is claimed) and the date of receipt by the International Preliminary Examining Authority of the demand.
(c) The notification shall be sent to the elected Office together with the communication provided for in Article 20. Elections effected after such communication shall be notified promptly after they have been made.
(d) Where the applicant makes an express request to an elected Office under Article 40(2) prior to the international publication of the international application, the International Bureau shall, upon request of the applicant or the elected Office, promptly effect the communication provided for in Article 20 to that Office.
61.3 Information for the Applicant
The International Bureau shall inform the applicant in writing of the notification referred to in Rule 61.2 and of the elected Offices notified under Article 31(7).
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All notices of election are received by the Office of PCT Operations from the International Bureau. The Office of PCT Operations prepares the appropriate records of the election when a request for national stage entry is received. The international preliminary examination report received by the USPTO will also be included in the national stage file. The international preliminary report on patentability is communicated to the elected Offices by the International Bureau.
1882
-1892 [Reserved]
1893 National Stage (U.S. National Application Filed Under 35 U.S.C. 371) [R-07.2015]
There are three types of U.S. national applications: a national stage application under 35 U.S.C. 371), a regular domestic national application filed under 35 U.S.C. 111(a), and a provisional application filed under 35 U.S.C. 111(b). See 37 CFR 1.9.
An applicant who uses the Patent Cooperation Treaty gains the benefit of:
(A) a delay in the time when papers must be submitted to the national offices;
(B) an international search (to judge the level of the relevant prior art) and a written opinion on the question of whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable before having to expend resources for filing fees, translations and other costs;
(C) a delay in the expenditure of fees;
(D) additional time for research;
(E) additional time to evaluate financial, marketing, commercial and other considerations; and
(F) the option of obtaining international preliminary examination.
The time delay is, however, the benefit most often recognized as primary. Ultimately, applicant might choose to submit the national stage application. The national stage is unique compared to a domestic national application in that:
(A) it is submitted later (i.e., normally 30 months from a claimed priority date as compared to 12 months for a domestic application claiming priority); and
(B) the status of the prior art is generally known before the national stage begins and this is not necessarily so in a domestic national application.
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IDENTIFICATION OF THE NATIONAL STAGE APPLICATION
Once an international application entering the U.S. national phase (“national stage application”) has been accorded a U.S. application number (the two digit series code followed by a six digit serial number), that number should be used whenever papers or other communications are directed to the USPTO regarding the national stage application. See 37 CFR 1.5(a). The national stage application is tracked through the Patent Application Locating and Monitoring (PALM) system by the eight digit U.S. application number. Therefore, processing is expedited if the U.S. application number is indicated. The international application number, international filing date, and the national stage entry date under 35 U.S.C. 371 (if such has been accorded) should also be included, as such would also be helpful for identification purposes and can be used to cross-check a possibly erroneous U.S. application number.
1893.01 Commencement and Entry [R-07.2015]
35 U.S.C. 371 National stage: Commencement.
(a) Receipt from the International Bureau of copies of international applications with any amendments to the claims, international search reports, and international preliminary examination reports including any annexes thereto may be required in the case of international applications designating or electing the United States.
(b) Subject to subsection (f) of this section, the national stage shall commence with the expiration of the applicable time limit under article 22(1) or (2), or under article 39(1)(a) of the treaty.
(c) The applicant shall file in the Patent and Trademark Office —
(1) the national fee provided in section 41(a);
(2) a copy of the international application, unless not required under subsection (a) of this section or already communicated by the International Bureau, and a translation into the English language of the international application, if it was filed in another language;
(3) amendments, if any, to the claims in the international application, made under article 19 of the treaty, unless such amendments have been communicated to the Patent and Trademark Office by the International Bureau, and a translation into the English language if such amendments were made in another language;
(4) an oath or declaration of the inventor (or other person authorized under chapter 11) complying with the requirements of section 115 and with regulations prescribed for oaths or declarations of applicants;
(5) a translation into the English language of any annexes to the international preliminary examination report, if such annexes were made in another language.
(d) The requirement with respect to the national fee referred to in subsection (c)(1), the translation referred to in subsection (c)(2), and the oath or declaration referred to in subsection (c)(4) of this section shall be complied with by the date of the commencement of the national stage or by such later time as may be fixed by the Director. The copy of the international application referred to in subsection (c)(2) shall be submitted by the date of the commencement of the national stage. Failure to comply with these requirements shall be regarded as abandonment of the application by the parties thereof, unless it be shown to the satisfaction of the Director that such failure to comply was unavoidable. The payment of a surcharge may be required as a condition of accepting the national fee referred to in subsection (c)(1) or the oath or declaration referred to in subsection (c)(4) of this section if these requirements are not met by the date of the commencement of the national stage. The requirements of subsection (c)(3) of this section shall be complied with by the date of the commencement of the national stage, and failure to do so shall be regarded as a cancellation of the amendments to the claims in the international application made under article 19 of the treaty. The requirement of subsection (c)(5) shall be complied with at such time as may be fixed by the Director and failure to do so shall be regarded as cancellation of the amendments made under article 34(2)(b) of the treaty.
(e) After an international application has entered the national stage, no patent may be granted or refused thereon before the expiration of the applicable time limit under article 28 or article 41 of the treaty, except with the express consent of the applicant. The applicant may present amendments to the specification, claims, and drawings of the application after the national stage has commenced.
(f) At the express request of the applicant, the national stage of processing may be commenced at any time at which the application is in order for such purpose and the applicable requirements of subsection (c) of this section have been complied with.
37 CFR 1.491 National stage commencement, entry, and fulfillment.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]
(a) Subject to 35 U.S.C. 371(f), the national stage shall commence with the expiration of the applicable time limit under PCT Article 22(1) or (2), or under PCT Article 39(1)(a).
(b) An international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c)(1) and (c)(2) within the period set in § 1.495.
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(c) An international application fulfills the requirements of 35 U.S.C. 371 when the national stage has commenced under 35 U.S.C. 371(b) or (f) and all applicable requirements of 35 U.S.C. 371 have been satisfied.
37 CFR 1.491 (pre-AIA) National stage commencement and entry.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 prior to September 16, 2012]
(a) Subject to 35 U.S.C. 371(f), the national stage shall commence with the expiration of the applicable time limit under PCT Article 22(1) or (2), or under PCT Article 39(1)(a).
(b) An international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c) within the period set in § 1.495.
Subject to 35 U.S.C. 371(f), commencement of the national stage occurs upon expiration of the applicable time limit under PCT Article 22(1) or (2), or under PCT Article 39(1)(a). See 35 U.S.C. 371(b) and 37 CFR 1.491(a). PCT Articles 22(1), 22(2), and 39(1)(a) provide for a time limit of not later than the expiration of 30 months from the priority date. Thus, in the absence of an express request for early processing of an international application under 35 U.S.C. 371(f) and compliance with the conditions provided therein, the U.S. national stage will commence upon expiration of 30 months from the priority date of the international application. Pursuant to 35 U.S.C. 371(f), the national stage may commence earlier than 30 months from the priority date, provided applicant makes an express request for early processing and has complied with the applicable requirements under 35 U.S.C. 371(c).
Entry into the national stage occurs upon completion of certain acts, as provided in 37 CFR 1.491(b). For international applications having an international filing date before September 16, 2012, the international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c) within the period set in 37 CFR 1.495. For international applications having an international filing date on or after September 16, 2012, the international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c)(1)and (2) within the period set in 37 CFR 1.495. Thus, for international applications having an international filing date on or after September 16,
2012, submission of the oath or declaration of the inventor under 35 U.S.C. 371(c)(4) is not required to enter the U.S. national phase.
1893.01(a) Entry via the U.S. Designated or Elected Office [R-07.2015]
PCT Article 2
Definitions
*****
(xiii) “designated Office” means the national Office of or acting for the State designated by the applicant under Chapter I of this Treaty;
(xiv) “elected Office” means the national Office of or acting for the State elected by the applicant under Chapter II of this Treaty;
*****
37 CFR 1.414 The United States Patent and Trademark Office as a Designated Office or Elected Office.
(a) The United States Patent and Trademark Office will act as a Designated Office or Elected Office for international applications in which the United States of America has been designated or elected as a State in which patent protection is desired.
(b) The United States Patent and Trademark Office, when acting as a Designated Office or Elected Office during international processing will be identified by the full title “United States Designated Office” or by the abbreviation “DO/US” or by the full title “United States Elected Office” or by the abbreviation “EO/US.”
(c) The major functions of the United States Designated Office or Elected Office in respect to international applications in which the United States of America has been designated or elected, include:
(1) Receiving various notifications throughout the international stage and
(2) National stage processing for international applications entering the national stage under 35 U.S.C. 371.
An international application designating the U.S. will enter the national stage via the U.S. Designated Office unless a Demand electing the U.S. is filed under PCT Article 31 whereupon entry will be via the U.S. Elected Office.
1893.01(a)(1) Submissions Required by 30 Months from the Priority Date [R-07.2015]
37 CFR 1.495 Entering the national stage in the United States of America.
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[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]
(a) The applicant in an international application must fulfill the requirements of 35 U.S.C. 371 within the time periods set forth in paragraphs (b) and (c) of this section in order to prevent the abandonment of the international application as to the United States of America. The thirty-month time period set forth in paragraphs (b), (c), (d), (e) and (h) of this section may not be extended.
(b) To avoid abandonment of the application, the applicant shall furnish to the United States Patent and Trademark Office not later than the expiration of thirty months from the priority date:
(1) A copy of the international application, unless it has been previously communicated by the International Bureau or unless it was originally filed in the United States Patent and Trademark Office; and
(2) The basic national fee (see § 1.492(a)).
(c)
(1) If applicant complies with paragraph (b) of this section before expiration of thirty months from the priority date, the Office will notify the applicant if he or she has omitted any of:
(i) A translation of the international application, as filed, into the English language, if it was originally filed in another language and if any English language translation of the publication of the international application previously submitted under 35 U.S.C. 154(d) (§ 1.417 ) is not also a translation of the international application as filed (35 U.S.C. 371(c)(2));
(ii) The inventor’s oath or declaration (35 U.S.C. 371(c)(4) and § 1.497), if a declaration of inventorship in compliance with §1.63 has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26 ter.1;
(iii) The search fee set forth in § 1.492(b);
(iv) The examination fee set forth in § 1.492(c); and
(v) Any application size fee required by § 1.492(j);
(2) A notice under paragraph (c)(1) of this section will set a time period within which applicant must provide any omitted translation, search fee set forth in § 1.492(b), examination fee set forth in § 1.492(c), and any application size fee required by § 1.492(j) in order to avoid abandonment of the application.
(3) The inventor’s oath or declaration must also be filed within the period specified in paragraph (c)(2) of this section, except that the filing of the inventor’s oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in paragraphs (c)(3)(i) through (c)(3)(iii) of this section.
(i) The application contains an application data sheet in accordance with § 1.76 filed prior to the expiration of
the time period set in any notice under paragraph (c)(1) identifying:
(A) Each inventor by his or her legal name;
(B) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
(ii) The applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee for the patent is paid. If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)). The Office may dispense with the notice provided for in paragraph (c)(1) of this section if each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, has been filed before the application is in condition for allowance.
(iii) An international application in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid and for which an application data sheet in accordance with § 1.76 has been filed may be treated as complying with 35 U.S.C. 371 for purposes of eighteen-month publication under 35 U.S.C. 122(b) and § 1.211 et seq.
(4) The payment of the processing fee set forth in § 1.492(i) is required for acceptance of an English translation later than the expiration of thirty months after the priority date. The payment of the surcharge set forth in § 1.492(h) is required for acceptance of any of the search fee, the examination fee, or the inventor’s oath or declaration after the date of the commencement of the national stage (§ 1.491(a)).
(5) A “Sequence Listing” need not be translated if the “Sequence Listing” complies with PCT Rule 12.1(d) and the description complies with PCT Rule 5.2(b).
(d) A copy of any amendments to the claims made under PCT Article 19, and a translation of those amendments into English, if they were made in another language, must be furnished not later than the expiration of thirty months from the priority date. Amendments under PCT Article 19 which are not received by the expiration of thirty months from the priority date will be considered to be canceled.
(e) A translation into English of any annexes to an international preliminary examination report (if applicable), if the annexes were made in another language must be furnished not later than the expiration of thirty months from the priority date. Translations of the annexes which are not received by the expiration of thirty months from the priority date may be submitted within any period set pursuant to paragraph (c) of this section accompanied by the processing fee set forth in § 1.492(f).
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Annexes for which translations are not timely received will be considered canceled.
(f) Verification of the translation of the international application or any other document pertaining to an international application may be required where it is considered necessary, if the international application or other document was filed in a language other than English.
(g) The documents and fees submitted under paragraphs (b) and (c) of this section must be identified as a submission to enter the national stage under 35 U.S.C. 371. If the documents and fees contain conflicting indications as between an application under 35 U.S.C. 111 and a submission to enter the national stage under 35 U.S.C. 371, the documents and fees will be treated as a submission to enter the national stage under 35 U.S.C. 371.
(h) An international application becomes abandoned as to the United States thirty months from the priority date if the requirements of paragraph (b) of this section have not been complied with within thirty months from the priority date.
37 CFR 1.495 (pre-AIA) Entering the national stage in the United States of America.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 prior to September 16, 2012]
(a) The applicant in an international application must fulfill the requirements of 35 U.S.C. 371 within the time periods set forth in paragraphs (b) and (c) of this section in order to prevent the abandonment of the international application as to the United States of America. The thirty-month time period set forth in paragraphs (b), (c), (d), (e) and (h) of this section may not be extended. International applications for which those requirements are timely fulfilled will enter the national stage and obtain an examination as to the patentability of the invention in the United States of America.
(b) To avoid abandonment of the application, the applicant shall furnish to the United States Patent and Trademark Office not later than the expiration of thirty months from the priority date:
(1) A copy of the international application, unless it has been previously communicated by the International Bureau or unless it was originally filed in the United States Patent and Trademark Office; and
(2) The basic national fee (see § 1.492(a)).
(c)(1) If applicant complies with paragraph (b) of this section before expiration of thirty months from the priority date, the Office will notify the applicant if he or she has omitted any of:
(i) A translation of the international application, as filed, into the English language, if it was originally filed in another language and if any English language translation of the publication of the international application previously submitted under 35 U.S.C. 154(d) (§ 1.417) is not also a translation of the international application as filed (35 U.S.C. 371(c)(2));
(ii) The oath or declaration of the inventor (35 U.S.C. 371(c)(4) and § 1.497), if a declaration of inventorship in compliance with § 1.497 has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26 ter.1;
(iii) The search fee set forth in § 1.492(b);
(iv) The examination fee set forth in §1.492(c); and
(v) Any application size fee required by §1.492(j);
(2) A notice under paragraph (c)(1) of this section will set a time period within which applicant must provide any omitted translation, oath or declaration of the inventor, search fee set forth in § 1.492(b), examination fee set forth in § 1.492(c), and any application size fee required by § 1.492(j) in order to avoid abandonment of the application.
(3) The payment of the processing fee set forth in § 1.492(i) is required for acceptance of an English translation later than the expiration of thirty months after the priority date. The payment of the surcharge set forth in § 1.492(h) is required for acceptance of any of the search fee, the examination fee, or the oath or declaration of the inventor after the date of the commencement of the national stage (§ 1.491(a)).
(4) A “Sequence Listing” need not be translated if the “Sequence Listing” complies with PCT Rule 12.1(d) and the description complies with PCT Rule 5.2(b).
(d) A copy of any amendments to the claims made under PCT Article 19, and a translation of those amendments into English, if they were made in another language, must be furnished not later than the expiration of thirty months from the priority date. Amendments under PCT Article 19 which are not received by the expiration of thirty months from the priority date will be considered to be canceled.
(e) A translation into English of any annexes to an international preliminary examination report (if applicable), if the annexes were made in another language must be furnished not later than the expiration of thirty months from the priority date. Translations of the annexes which are not received by the expiration of thirty months from the priority date may be submitted within any period set pursuant to paragraph (c) of this section accompanied by the processing fee set forth in § 1.492(f). Annexes for which translations are not timely received will be considered canceled.
(f) Verification of the translation of the international application or any other document pertaining to an international application may be required where it is considered necessary, if the international application or other document was filed in a language other than English.
(g) The documents and fees submitted under paragraphs (b) and (c) of this section must be clearly identified as a submission to enter the national stage under 35 U.S.C. 371. Otherwise, the submission will be considered as being made under 35 U.S.C. 111(a).
(h) An international application becomes abandoned as to the United States thirty months from the priority date if the
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requirements of paragraph (b) of this section have not been complied with within thirty months from the priority date. If the requirements of paragraph (b) of this section are complied with within thirty months from the priority date but either of any required translation of the international application as filed or the oath or declaration are not timely filed, an international application will become abandoned as to the United States upon expiration of the time period set pursuant to paragraph (c) of this section.
To avoid abandonment of an international application as to the United States, applicant is required to comply with 37 CFR 1.495(b) within 30 months from the priority date. Thus, applicant must pay the basic national fee not later than the expiration of 30 months from the priority date and be sure that a copy of the international application has been received by the U.S. Designated or Elected Office not later than the expiration of 30 months from the priority date. Where the international application was filed with the United States Receiving Office as the competent receiving Office, the copy of the international application referred to in 37 CFR 1.495(b) is not required.
It is preferable to file the required national stage items online using the EFS-Web system (further information regarding EFS-Web is available at www.uspto.gov/ebc/efs_help.html). Applicants may also file these items using the Priority Mail Express® mailing procedure set forth in 37 CFR 1.10. Facsimile transmission is not acceptable for submission of the basic national fee and/or the copy of the international application. See 37 CFR 1.6(d). Likewise, the certificate of mailing procedures of 37 CFR 1.8 do not apply to the filing of the copy of the international application and payment of the basic national fee. See 37 CFR 1.8(a)(2)(i)(F).
Applicants cannot pay the basic national fee with a surcharge after the 30 month deadline. Failure to pay the basic national fee within 30 months from the priority date will result in abandonment of the application. The time for payment of the basic national fee is not extendable.
Similarly, the copy of the international application required under 37 CFR 1.495(b) must be provided within 30 months from the priority date to avoid abandonment.A copy of the international application is published by the International Bureau at about 18 months from the priority date, at which time the
published application becomes available to the U.S. Designated or Elected Office in electronic form in a digital library from which the U.S. Designated or Elected Office is entitled to retrieve the application. Pursuant to PCT Rule 93 bis(b), the publication of the international application by the International Bureau (and the resulting availability of the published application in a digital library) is considered to effect the required communication of the copy of the international application to the U.S. Designated or Elected Office. Thus, publication of an international application by the International Bureau within 30 months from the priority date is considered to satisfy the requirement of 37 CFR 1.495(b).
Where the basic national fee has been paid and the copy of the international application (if required) has been received not later than the expiration of 30 months from the priority date, but applicant has omitted any required item set forth in 37 CFR 1.495(c)(1), the Office will process the national stage application in accordance with the provisions of 37 CFR 1.495 in effect for that application. As a consequence of the America Invents Act (AIA), 37 CFR 1.495 was amended to permit postponement of the submission of the inventor’s oath or declaration under certain conditions and is applicable to national stage applications having an international filing date on or after September 16, 2012. For national stage applications having an international filing date prior to September 16, 2012, the pre-AIA version of 37 CFR 1.495 remains in effect.
If the international filing date is prior to September 16, 2012 and the basic national fee has been paid and the copy of the international application (if required) has been received not later than the expiration of 30 months from the priority date, but the required oath or declaration, translation, search fee (37 CFR 1.492(b)), examination fee (37 CFR 1.492(c)), or application size fee (37 CFR 1.492(j)) has not been filed prior to commencement of the national stage (see MPEP § 1893.01), the Office will send applicant a notice identifying any deficiency and provide a period of time to correct the deficiency as set forth in 37 CFR 1.495(c). The time period usually set is 2 months from the date of the notification by the Office or 32 months from the priority date, whichever is later. This period may be
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§ 1893.01(a)(1)PATENT COOPERATION TREATY
extended for up to 5 additional months pursuant to the provisions of 37 CFR 1.136(a). Failure to timely file the proper reply to the notification will result in abandonment of the national stage application. The processing fee set forth in 37 CFR 1.492(i) will be required for acceptance of an English translation of the international application later than the expiration of thirty months after the priority date, and the surcharge fee set forth in 37 CFR 1.492(h) will be required for acceptance of any of the search fee, examination fee, or oath or declaration of the inventor after the date of commencement. See pre-AIA 37 CFR 1.495(c)(3).
If the international filing date is on or after September 16, 2012, the filing of the oath or declaration may be postponed until the application is otherwise in condition for allowance if applicants submit an application data sheet in accordance with 37 CFR 1.76 identifying each inventor by his or her legal name, the mailing address where each inventor customarily receives mail, and the residence of each inventor, if the inventor lives at a location which is different from where the inventor customarily receives mail. 37 CFR 1.495(c)(3).
For further information regarding the oath or declaration required under 35 U.S.C. 371(c)(4) and 37 CFR 1.497 see MPEP § 1893.01(e).
For further information regarding the translation required under 35 U.S.C. 371(c)(2) and 37 CFR 1.495(c), see MPEP § 1893.01(d).
1893.01(a)(2) Article 19 Amendment (Filed With the International Bureau) [R-07.2015]
The claims of an international application may be amended under PCT Article 19 after issuance of the search report. The description and drawings may not be amended under PCT Article 19. The amendment is forwarded to the U.S. Designated Office by the International Bureau for inclusion in the U.S. national stage application. Article 19 amendments including a complete claim set in English will be entered by replacing the original English language claims of the international application with the amended claim set. If the Article 19 amendments were made in a language other than English, applicant must provide an English translation for the
U.S. national stage application. The Article 19 amendment(s) and the English translation of the amendment(s) must be received by the Office by the date of commencement of the national stage (see MPEP § 1893.01). Otherwise, the amendment(s) will be considered to be canceled, 35 U.S.C. 371(d). If such canceled amendments are desired, they must be offered under 37 CFR 1.121 as a preliminary amendment or a responsive amendment under 37 CFR 1.111. In this regard, the “Transmittal Letter To The United States Designated/Elected Office (DO/EO/US) Concerning A Submission Under 35 U.S.C. 371” (Form PTO-1390) available at www.uspto.gov/forms/ includes a check box by which the applicant may expressly instruct the U.S. Designated/Elected Office not to enter the Article 19 amendment(s) in the United States national stage application.
Article 19 amendments filed before July 1, 2009 were not required to include a complete claim set and the pages of the translation would not have been entered as replacement claim sheets where entry would have resulted in an inconsistency in the flow of the claims from the bottom of one page to the top of the following page. In such situations, applicants are encouraged to submit a preliminary amendment in accordance with 37 CFR 1.121 to obtain entry of the desired changes.
1893.01(a)(3) Article 34 Amendments (Filed with the International Preliminary Examining Authority) [R-07.2015]
Amendments to the international application that were properly made under PCT Article 34 during the international preliminary examination phase (i.e., Chapter II) will be annexed by the International Preliminary ExaminingAuthority to the international preliminary examination report (IPER) and communicated to the elected Offices. See PCT Article 36, PCT Rule 70.16, and MPEP § 1893.03(e). If these annexes are in English, they will normally be entered into the U.S. national stage application by the Office absent a clear instruction by the applicant that the annexes are not to be entered. In this regard, the “Transmittal Letter To The United States Designated/Elected Office (DO/EO/US) Concerning A Submission Under 35 U.S.C. 371” (Form PTO-1390) ava i l ab l e a t
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www.uspto.gov/forms/ includes a check box by which the applicant may expressly instruct the U.S. Designated/Elected Office not to enter the Article 34 amendment(s) in the United States national stage application. However, if entry of the replacement sheets will result in an obvious inconsistency in the description, claims or drawings of the international application, then the annexes will not be entered. If the annexes are in a foreign language, a proper translation of the annexes must be furnished to the Office not later than the expiration of 30 months from the priority date, unless a period has been set pursuant to 37 CFR 1.495(c) to furnish an oath or declaration, English translation of the international application, search fee (37 CFR 1.492(b)), examination fee (37 CFR 1.492(c)), or application size fee (37 CFR 1.492(j)), in which case the translations of the annexes, accompanied by the processing fee set forth in 37 CFR 1.492(f), may be submitted within the period set pursuant to 37 CFR 1.495(c). See 37 CFR 1.495(e). Annexes for which translations are not timely received will be considered canceled. Amendments made under PCT Article 34 to the international application after commencement and entry into the U.S. national phase (see MPEP § 1893.01) will not be considered in a U.S. national stage application. However, applicants may still amend the U.S. national stage application by way of a preliminary amendment submitted in accordance with 37 CFR 1.115 and 37 CFR 1.121.
Where an English translation of the annexes is provided, the translation must be such that the translation of the originally filed application can be changed by replacing the originally filed application page(s) (of translation) with substitute page(s) of translation of the annex. Thus, applicant should check to be sure that the English translation can be entered by substituting the pages of translation for corresponding pages of the description or claims of the international application without leaving an inconsistency. If entry of the page of translation causes inconsistencies in the description or claims of the international application the translation will not be entered. Non-entry of the annexes will be indicated on the “NOTICE OF ACCEPTANCE OF APPLICATION UNDER 35 U.S.C. 371 AND 37 CFR 1.495” (Form PCT/DO/EO/903). For example, if the translation of the originally filed application
has a page which begins with claim 1 and ends with a first part of claim 2 with the remainder of claim 2 on the next page then translation of the annex to only claim 1 must include a substitute page or pages beginning with the changes to claim 1 and ending with the last of the exact same first part of claim 2. This enables the original translated first page of claims to be replaced by the translation of the annex without changing the subsequent unamended page(s). Alternatively applicant may submit a preliminary amendment in accordance with 37 CFR 1.121. The fact that an amendment made to the international application during the international phase was entered in the national stage application does not necessarily mean that the amendment is proper. Specifically, amendments are not permitted to introduce “new matter” into the application. See PCT Article 34(2)(b). Where it is determined that such amendments introduce new matter into the application, then the examiner should proceed as in the case of regular U.S. national applications filed under 35 U.S.C. 111(a) by requiring removal of the new matter and making any necessary rejections to the claims. See MPEP §§ 608.04 and 2163.06.
1893.01(b) Applicant for a U.S. National Stage Application [R-07.2015]
37 CFR 1.42 Applicant for Patent
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]
(a) The word “applicant” when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.
(b) If a person is applying for a patent as provided in § 1.46, the word “applicant” refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and not the inventor.
(c) If fewer than all joint inventors are applying for a patent as provided in § 1.45, the phrase “the applicant” means the joint inventors who are applying for the patent without the omitted inventor(s).
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37 CFR 1.43 Application for patent by a legal representative of a deceased or legally incapacitated inventor.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]
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If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
37 CFR 1.45 Application for patent by joint inventors.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]
(a) Joint inventors must apply for a patent jointly, and each must make an inventor’s oath or declaration as required by § 1.63, except as provided for in § 1.64. If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See § 1.64 concerning the execution of a substitute statement by the other joint inventor or inventors in lieu of an oath or declaration.
(b) Inventors may apply for a patent jointly even though:
(1) They did not physically work together or at the same time;
(2) Each inventor did not make the same type or amount of contribution; or
(3) Each inventor did not make a contribution to the subject matter of every claim of the application.
(c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.
37 CFR 1.46 Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]
(a) A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
(b) If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section,
the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. If an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under paragraph (a) of this section, the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).
(1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
(2) If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including:
(i) The fee set forth in § 1.17(g);
(ii) A showing that such person has sufficient proprietary interest in the matter; and
(iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
(c) Any request to correct or update the name of the applicant after an applicant has been specified under paragraph (b) of this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7)). Any request to change the applicant after an original applicant has been specified under paragraph (b) of this section must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7)) and comply with §§ 3.71 and 3.73 of this title.
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In general, for U.S. national stage applications having an international filing date prior to September 16, 2012, the inventors are required to be the applicants. The America Invents Act (AIA) amended 35 U.S.C. 118 to expand who may be an applicant in patent applications. Consequently, for national stage applications having an international filing date on or after September 16, 2012, the applicant may be: (a) the inventor(s); (b) the legal representative of a deceased or legally incapacitated inventor; (c)
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the assignee; (d) the obligated assignee (i.e., a person to whom the inventor is under an obligation to assign the invention); or (e) a person who otherwise shows proprietary interest in the application. See 37 CFR 1.42, 1.43, 1.45, and 1.46.
For national stage applications having an international filing date on or after September 16, 2012, the person identified in the international stage as the applicant for the United States will normally be considered the applicant for the U.S. national stage application. See 37 CFR 1.46(b).
Where the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: the fee set forth in 37 CFR 1.17(g), a showing that such person has sufficient proprietary interest in the matter, and a statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties. See 37 CFR 1.46(b)(2).
The name of the applicant may be corrected or updated, or the applicant may be changed, in accordance with the procedure set forth in 37 CFR 1.46(c).
1893.01(c) Fees [R-07.2015]
Because the national stage fees are subject to change, applicants and examiners should always consult the Official Gazette for the current fee listing.
The basic national fee must be paid prior to the expiration of 30 months from the priority date to avoid abandonment of the international application as to the United States. This time period is not extendable. 37 CFR 1.495(a) - (b). The search fee required under 37 CFR 1.492(b) and examination fee required under 37 CFR 1.492(c) are due on commencement of the national stage (37 CFR 1.491(a)), but may be accepted later with the payment of a surcharge. 37 CFR 1.495(c)(3).
Fees under 37 CFR 1.16 relate to national applications under 35 U.S.C. 111(a), and not to international applications entering the national stage
under 35 U.S.C. 371. National stage fees are specifically provided for in 37 CFR 1.492. However, an authorization to charge fees under 37 CFR 1.16 in an international application entering the national stage under 35 U.S.C. 371 will be treated as an authorization to charge fees under 37 CFR 1.492. See 37 CFR 1.25(b). Accordingly, applications will not be held abandoned if an authorization to charge fees under 37 CFR 1.16 has been provided instead of an authorization to charge fees under 37 CFR 1.492.
A preliminary amendment accompanying the initial national stage submission under 35 U.S.C. 371 that is effective to cancel claims and/or eliminate multiple dependent claims will be effective to reduce the number of claims to be considered in calculating extra claim fees required under 37 CFR 1.492(d) - (e) and/or eliminate the multiple dependent claim fee required under 37 CFR 1.492(f). A subsequently filed amendment canceling claims and/or eliminating multiple dependent claims will not entitle applicant to a refund of fees previously paid. See MPEP §§ 607 and 608.
The application size fee for a national stage application (37 CFR 1.492(j)) is determined on the basis of the international application as published by WIPO pursuant to PCT Article 21. Specifically, the application size fee is calculated on the basis of the number of sheets of description (including a sequence listing in portable document format (PDF)), claims, drawings, and abstract present in the published international application. This calculation is made without regard to the language of publication. Certain other sheets typically present in the international publication are not taken into account in determining the application size fee, i.e., a sequence listing in ASCII text (.txt) format, Article 19 amendments, the international search report, and any additional bibliographic sheets (other than the cover sheet containing the abstract). Nor are Article 34 amendments or preliminary amendments taken into account in determining the application size fee.
The processing fee set forth in 37 CFR 1.492(i) will be required for acceptance of an English translation of the international application later than the expiration of thirty months after the priority date, and the surcharge fee set forth in 37 CFR 1.492(h)
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will be required for acceptance of any of the search fee, examination fee, or inventor’s oath or declaration after the date of commencement. 37 CFR 1.495(c)(4).
1893.01(d) Translation [R-07.2015]
Applicants entering the national stage in the U.S. are required to file an English translation of the international application if the international application was filed in another language and was not published under PCT Article 21(2) in English. 35 U.S.C. 371(c)(2) and 37 CFR 1.495(c). A “Sequence Listing” need not be translated if the “Sequence Listing” complies with PCT Rule 12.1(d) and the description complies with PCT Rule 5.2(b). See 37 CFR 1.495(c). The translation must be a translation of the international application as filed or with any changes which have been properly accepted under PCT Rule 26 or any rectifications which have been properly accepted under PCT Rule 91. A translation of less than all of the international application (e.g., a translation that fails to include a translation of text contained in the drawings or a translation that includes a translation of claims amended under PCT Article 19 or 34 but does not include a translation of the original claims) is unacceptable. In addition, a translation that includes modifications other than changes that have been properly accepted under PCT Rule 26 or 91 (e.g., a translation that includes headings that were not present in the international application as originally filed) is unacceptable. A translation of words contained in the drawings must be furnished either in the form of new drawings or in the form of a copy of the original drawings with the translation pasted on the original text matter. See PCT Rule 49.5(d).
Amendments, even those considered to be minor or to not include new matter, may not be incorporated into the translation. If an amendment to the international application as filed is desired for the national stage, it may be submitted in accordance with 37 CFR 1.121. An amendment filed under 37 CFR 1.121 should be submitted within 3 months from the date the national stage is entered as set forth 37 CFR 1.491. See 37 CFR 1.115(b)(3)(iii). If applicant has timely paid the basic national fee and submitted the copy of the international application but the translation is missing or is defective, a
Notification of Missing Requirements (PCT/DO/EO/905) will be sent to applicant setting a period to correct any missing or defective requirements. The time period is 32 months from the priority date or 2 months from the date of the notice, whichever expires later. The time period may be extended for up to five additional months as provided in 37 CFR 1.136(a). A processing fee is required for accepting a translation after 30 months from the priority date. See 37 CFR 1.492(i).
Pursuant to PCT Rule 48.3(c), if the international application is published in a language other than English, the publication shall include an English translation of the title of the invention, the abstract, and any text matter pertaining to the figure or figures accompanying the abstract. The translations shall be prepared under the responsibility of the International Bureau.
A translation of the international application as filed and identified as provided in 37 CFR 1.417 submitted for the purpose of obtaining provisional rights pursuant to 35 U.S.C. 154(d)(4) can be relied on to fulfill the translation requirement under 35 U.S.C. 371(c)(2) in a national stage application.
1893.01(e) Inventor’s Oath or Declaration [R-07.2015]
35 U.S.C. 371 National stage: Commencement.
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(c) The applicant shall file in the Patent and Trademark Office –
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(4) an oath or declaration of the inventor (or other person authorized under chapter 11) complying with the requirements of section 115 and with regulations prescribed for oaths or declarations of applicants;
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Pursuant to 35 U.S.C. 371(c)(4), the applicant for a national stage application is required to file an oath or declaration of the inventor (or other person authorized under 35 U.S.C. chapter 11) complying with the requirements of 35 U.S.C. 115 and with regulations prescribed for oaths or declarations of applicants. The America Invents Act (AIA) amended 35 U.S.C. 115 with effect for applications filed on
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or after September 16, 2012. As a consequence of this change, the oath or declaration requirements for a national stage application differ depending on the international filing date of the national stage application, as set forth below.
I. NATIONAL STAGE APPLICATIONS HAVING AN INTERNATIONAL FILING DATE ON OR AFTER SEPTEMBER 16, 2012
37 CFR 1.41 Inventorship
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]
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(e) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371. Unless the initial submission under 35 U.S.C. 371 is accompanied by an application data sheet in accordance with § 1.76 setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92 bis.
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37 CFR 1.497 Inventor’s oath or declaration under 35 U.S.C. 371(c)(4).
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]
(a) When an applicant of an international application desires to enter the national stage under 35 U.S.C. 371 pursuant to § 1.495, and a declaration in compliance with § 1.63 has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26 ter.1, the applicant must file the inventor’s oath or declaration. The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration in accordance with the conditions and requirements of § 1.63, except as provided for in § 1.64.
(b) An oath or declaration under § 1.63 will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the requirements of §§ 1.63(a), (c) and (g). A substitute statement under § 1.64 will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the requirements of §§ 1.64(b)(1), (c) and (e) and identifies the person executing the substitute statement. If a newly executed inventor’s oath or declaration under § 1.63 or substitute statement under § 1.64 is not required pursuant to § 1.63(d), submission of the copy of the previously executed oath, declaration, or substitute statement under § 1.63(d)(1) is required to comply with 35 U.S.C. 371(c)(4).
(c) If an oath or declaration under § 1.63, or substitute statement under § 1.64, meeting the requirements of § 1.497(b) does not also meet the requirements of § 1.63 or § 1.64, an oath,
declaration, substitute statement, or application data sheet in accordance with § 1.76 to comply with § 1.63 or § 1.64 will be required.
Applicants entering the national stage under 35 U.S.C. 371 for an international application having an international filing date on or after September 16, 2012 are required to file an inventor’s oath or declaration in accordance with 37 CFR 1.497 unless a declaration in compliance with 37 CFR 1.63 was previously submitted in the international phase under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26 ter.1.
The inventor’s oath or declaration will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the minimum requirements set forth in 37 CFR 1.497(b). However, if the inventor’s oath or declaration does not satisfy all the requirements of 37 CFR 1.63 or 1.64, the applicant will be required to comply with the outstanding requirements. See 37 CFR 1.497(c).
The filing of the inventor’s oath or declaration may be postponed until the application is otherwise in condition for allowance if applicant submits an application data sheet in accordance with 37 CFR 1.76 identifying each inventor by his or her legal name, the mailing address where each inventor customarily receives mail, and the residence of each inventor, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.495(c)(3). Postponement of the filing of the inventor’s oath or declaration pursuant to 37 CFR 1.495(c) will not postpone the requirement to pay the surcharge fee under 37 CFR 1.492(h) for filing the inventor’s oath or declaration after the date of commencement. Note that early national stage entry under 35 U.S.C. 371(f) requires the submission of the oath or declaration required by 35 U.S.C. 371(c)(4) and submission may not be postponed in this situation.
If the basic national fee and copy of the international application have been received by the expiration of 30 months from the priority date, but applicant has not submitted 1) the required inventor’s oath or declaration, or 2) an application data sheet in compliance with 37 CFR 1.495(c)(3), the Office will send applicant a Notification of Missing Requirements (Form PCT/DO/EO/905) setting a
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§ 1893.01(e)PATENT COOPERATION TREATY
time period to submit the required inventor’s oath or declaration or application data sheet and surcharge fee under 37 CFR 1.492(h) unless previously paid. Failure to timely file the required reply will result in abandonment of the application.
The inventor’s oath or declaration must be executed by each inventor, except as provided under 37 CFR 1.64. The inventorship of an international application entering the national stage under 35 U.S.C. 371 having an international filing date on or after September 16, 2012, is the inventor or joint inventors set forth in an application data sheet in accordance with 37 CFR 1.76 accompanying the initial submission under 35 U.S.C. 371. If the initial submission under 35 U.S.C. 371 is not accompanied by an application data sheet in accordance with 37 CFR 1.76, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92 bis . See 37 CFR 1.41(e). Inventorship may be corrected under the procedure set forth in 37 CFR 1.48(a). The name of an inventor may be corrected or updated under the procedure set forth in 37 CFR 1.48(f).
If the inventor is deceased, is under legal incapacity, has refused to execute the oath or declaration under 37 CFR 1.63, or cannot be found or reached after diligent effort, the applicant under 37 CFR 1.43, 1.45 or 1.46 may execute a substitute statement under 1.64 in lieu of an oath or declaration under 37 CFR 1.63.
II. NATIONAL STAGE APPLICATIONS HAVING AN INTERNATIONAL FILING DATE BEFORE SEPTEMBER 16, 2012
37 CFR 1.41 (pre-AIA) Applicant for Patent
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 prior to September 16, 2012]
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(a)
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(4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92 bis . See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the
international application, or if a change to the inventive entity has been effected under PCT Rule 92 bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv) (§ 1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371).
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37 CFR 1.497 (pre-AIA) Oath or declaration under 35 U.S.C. 371(c)(4).
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 prior to September 16, 2012]
(a) When an applicant of an international application desires to enter the national stage under 35 U.S.C. 371 pursuant to § 1.495 , and a declaration in compliance with this section has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26 ter.1, he or she must file an oath or declaration that:
(1) Is executed in accordance with either §§ 1.66 or 1.68;
(2) Identifies the specification to which it is directed;
(3) Identifies each inventor and the country of citizenship of each inventor; and
(4) States that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.
(b)
(1) The oath or declaration must be made by all of the actual inventors except as provided for in §§ 1.42, 1.43 or 1.47.
(2) If the person making the oath or declaration or any supplemental oath or declaration is not the inventor (§§ 1.42, 1.43, or § 1.47), the oath or declaration shall state the relationship of the person to the inventor, and, upon information and belief, the facts which the inventor would have been required to state. If the person signing the oath or declaration is the legal representative of a deceased inventor, the oath or declaration shall also state that the person is a legal representative and the citizenship, residence and mailing address of the legal representative.
(c) Subject to paragraph (f) of this section, if the oath or declaration meets the requirements of paragraphs (a) and (b) of this section, the oath or declaration will be accepted as complying with 35 U.S.C. 371(c)(4) and § 1.495(c). However, if the oath or declaration does not also meet the requirements of § 1.63, a supplemental oath or declaration in compliance with § 1.63 or an application data sheet will be required in accordance with § 1.67.
(d) If the oath or declaration filed pursuant to 35 U.S.C. 371(c)(4) and this section names an inventive entity different from the inventive entity set forth in the international application, or if a change to the inventive entity has been effected under PCT Rule 92 bis subsequent to the execution of any oath or declaration which was filed in the application under PCT Rule 4.17(iv) or this section and the inventive entity thus changed is
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different from the inventive entity identified in any such oath or declaration, applicant must submit:
(1) A statement from each person being added as an inventor and from each person being deleted as an inventor that any error in inventorship in the international application occurred without deceptive intention on his or her part;
(2) The processing fee set forth in § 1.17(i); and
(3) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter); and
(4) Any new oath or declaration required by paragraph (f) of this section.
(e) The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.
(f) A new oath or declaration in accordance with this section must be filed to satisfy 35 U.S.C. 371(c)(4) if the declaration was filed under PCT Rule 4.17(iv), and:
(1) There was a change in the international filing date pursuant to PCT Rule 20.5(c) after the declaration was executed; or
(2) A change in the inventive entity was effected under PCT Rule 92 bis after the declaration was executed and no declaration which sets forth and is executed by the inventive entity as so changed has been filed in the application.
(g) If a priority claim has been corrected or added pursuant to PCT Rule 26 bis during the international stage after the declaration of inventorship was executed in the international application under PCT Rule 4.17(iv), applicant will be required to submit either a new oath or declaration or an application data sheet as set forth in § 1.76 correctly identifying the application upon which priority is claimed.
Applicants entering the national stage under 35 U.S.C. 371 for an international application having an international filing date prior to September 16, 2012 are required to file an oath or declaration of the inventor in accordance with pre-AIA 37 CFR 1.497(a) and (b). If the basic national fee and copy of the international application have been received by the expiration of 30 months from the priority date, but the required oath or declaration has not been filed, the Office will send applicant a Notification of Missing Requirements (Form PCT/DO/EO/905) setting a time period to correct any missing or defective requirements and to submit the surcharge fee required under 37 CFR 1.492(h) unless previously paid. Failure to timely file the required oath or declaration will result in abandonment of the application.
An oath or declaration satisfying the requirements of pre-AIA 37 CFR 1.497(a) - (b) will be sufficient for the purposes of entering the U.S. national phase. However, if the oath or declaration fails to also comply with the additional requirements for oaths and declarations set forth in 37 CFR 1.63, applicants will need to submit a supplemental oath or declaration, or an application data sheet where permitted under 37 CFR 1.63(c), to correct the deficiency. See 37 CFR 1.497(c).
In general, the requirement for an oath or declaration in compliance with 37 CFR 1.497(a) - (b) will have been previously satisfied if a declaration in compliance with PCT Rule 4.17(iv) executed by all the inventors was submitted within the time limits provided in PCT Rule 26 ter.1 in the international phase. However, if the inventorship was changed in the international application under PCT Rule 92 bis such that the inventorship identified in the PCT Rule 4.17(iv) declaration no longer corresponds to that of the international application (see pre-AIA 37 CFR 1.41(a)(4)), then a new oath or declaration in accordance with 37 CFR 1.497(a)-(b) may be required to enter the national stage. See pre-AIA 37 CFR 1.497(f)(2). Similarly, a new oath or declaration in compliance with 37 CFR 1.497(a)-(b) is required where the PCT Rule 4.17(iv) declaration was executed prior to a change in the international filing date pursuant to PCT Rule 20.5(c). See pre-AIA 37 CFR 1.497(f)(1). In addition, where a priority claim has been corrected or added pursuant to PCT Rule 26.2 bis after execution of the PCT Rule 4.17(iv) declaration, then a supplemental oath or declaration, or an application data sheet, identifying the correct priority claim will be required. See pre-AIA 37 CFR 1.497(g).
The inventorship of an international application entering the national stage under 35 U.S.C. 371 having an international filing date before September 16, 2012 is that inventorship set forth in the international application, which includes any changes effected under PCT Rule 92 bis . See pre-AIA 37 CFR 1.41(a)(4). Accordingly, an oath or declaration that names an inventive entity different than that set forth in the international application will not be accepted for purposes of entering the U.S. national phase unless the inventorship is corrected. See the procedures set forth in pre-AIA 37 CFR 1.497(d)
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and 37 CFR 1.48(a) for correcting inventorship. If an inventor refuses to execute the oath or declaration or cannot be found or reached after diligent effort, applicant may file an oath or declaration and a petition in accordance with pre-AIA 37 CFR 1.47. Similarly, where an inventor is deceased or legally incapacitated, an oath or declaration may be made in accordance with the provisions of pre-AIA 37 CFR 1.42 or 1.43. See pre-AIA 37 CFR 1.497(b).
Where there has been no change of inventorship but there is a discrepancy between the name of an inventor as indicated in the international application during the international phase and the corresponding name indicated in an oath or declaration submitted under 37 CFR 1.497, correction will be required to accept the oath or declaration with the different name. Effective September 16, 2012, the procedure set forth in 37 CFR 1.48(f) may be used to correct or update the name of an inventor in a nonprovisional application. In applications where the procedure under 37 CFR 1.48(f) is not available, correction may be made by way of petition under 37 CFR 1.182 to accept the oath or declaration with the different name.
1893.02 Abandonment [R-07.2015]
If the requirements for the submission of the basic national fee and a copy of the international application (if necessary) prior to the expiration of 30 months from the priority date are not satisfied, then the international application becomes abandoned as to the United States. 37 CFR 1.495(h). Should online filing and/or fee payment via EFS-Web become unavailable due to a system outage, applicant may need to use an alternative filing method such as hand-delivery to the USPTO or the Priority Mail Express® service of the United States Postal Service (USPS) in accordance with 37 CFR 1.10 to meet the requirements of 37 CFR 1.495(b). For more information about filing via EFS-Web, see the Legal Framework for EFS-Web available from www.uspto.gov/patents/process/ file/efs/guidance/New_legal_framework.jsp.
If the requirements under 37 CFR 1.495(b) are timely met, but the requirements under 37 CFR 1.495(c) for an English translation of the international application, oath/declaration, search fee, examination
fee and application size fee are not met within a time period set in a notice provided by the Office, then the application will become abandoned upon expiration of the time period set in the notice. See 37 CFR 1.495(c)(2).
Examiners and applicants should be aware that sometimes papers filed for the national stage are deficient and abandonment results. For example, if the fee submitted does not include at least the amount of the basic national fee that is due, the application becomes abandoned.
Applicant may file a petition to revive an abandoned application in accordance with the provisions of 37 CFR 1.137. See MPEP § 711.03(c). For applicant’s convenience, applicant may use Form PTO/SB/64PCT for this purpose. This form is available online at www.uspto.gov/forms.
1893.03 Prosecution of U.S. National Stage Applications Before the Examiner [R-07.2015]
37 CFR 1.496 Examination of international applications in the national stage.
National stage applications having paid therein the search fee as set forth in § 1.492(b)(1) and examination fee as set forth in § 1.492(c)(1) may be amended subsequent to the date of commencement of national stage processing only to the extent necessary to eliminate objections as to form or to cancel rejected claims. Such national stage applications will be advanced out of turn for examination.
An international application which enters the national stage will be forwarded to the appropriate Technology Center (TC) for examination in turn based on the date of entry into the national stage. See MPEP § 1893.01(a). This is commonly referred to as the “35 U.S.C. 371(c)” date of the application.
If an international preliminary examination report (IPER) prepared by the United States International Preliminary Examining Authority or a written opinion on the international application prepared by the United States International Searching Authority states that the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined in PCT Article 33(1) - (4) have been satisfied for all of the claims presented in the application entering the national stage, the national stage search
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fee is reduced and the national stage examination fee is reduced. See 37 CFR 1.492(b)(1) and 37 CFR 1.492(c)(1). Such applications may be amended only to the extent necessary to eliminate objections as to form or cancel rejected claims, and they will be advanced out of turn for examination. See MPEP § 708 for a discussion of the order of examination of applications by examiners.
Once the national stage application has been taken up by the examiner, prosecution proceeds in the same manner as for a domestic application with the exceptions that:
(A) the international filing date (or, if appropriate, the priority date) is the date to keep in mind when searching the prior art; and
(B) unity of invention proceeds as under 37 CFR 1.475.
1893.03(a) How To Identify That an Application Is a U.S. National Stage Application [R-07.2015]
Applicant’s initial submission under 35 U.S.C. 371 must be identified as a submission to enter the national stage under 35 U.S.C. 371. See 37 CFR 1.495(g). If the initial submission does not include any indication that the submission is made under 35 U.S.C. 371, the application will be treated as an application filed under 35 U.S.C. 111(a) (unless the submission is clearly identified as a submission pursuant to 35 U.S.C. 154(d)(4) for the purpose of obtaining provisional rights). See 37 CFR 1.417. Thus, if applicant wishes the application to be treated as a filing under 35 U.S.C. 111(a), the originally filed application papers need indicate simply that the papers are for a new U.S. patent application. If, however, applicant is submitting papers for entry into the national stage of a PCT application, or to establish an effective date for provisional rights resulting from the filing of a PCT application under 35 U.S.C. 154(d), applicant must so state.
When filing an application via EFS-Web, the EFS-Web screen prompts applicant for the type of filing being made, e.g., “nonprovisional application under 35 U.S.C. 111(a)” or “U.S. National Stage Under 35 U.S.C. 371.” Identifying the type of filing as a national stage submission under 35 U.S.C. 371
on this screen will serve to identify the submission as a national stage submission under 35 U.S.C. 371. Applicants seeking to enter the national stage are also advised to use transmittal Form PTO-1390, as this form clearly indicates that the submission is under 35 U.S.C. 371. The inclusion with the initial application submission of an inventor’s oath or declaration identifying the international application by international application number as the application to which the oath or declaration is directed is considered an indication that the application was submitted under 35 U.S.C. 371. However, claiming priority of an international application in an oath or declaration will not serve to indicate a submission under 35 U.S.C. 371.
Examination of the original application papers occurs in the Office of Patent Application Processing (OPAP) where it is determined whether applicant has asked that the papers be treated as a submission to enter the national stage under 35 U.S.C. 371. If the application is accepted for entry into the national stage, the image file wrapper will contain a “Notification of Acceptance of Application Under 35 U.S.C. 371 and 37 CFR 1.495” (Form PCT/DO/EO/903) indicating acceptance of the application as a national stage submission under 35 U.S.C. 371. PALM records will indicate that the application is a national stage entry of the PCT application (e.g., under “Continuity Data”). Initially, the examiner should check the application file for the presence of Form PCT/DO/EO/903 and review the PALM Bib-data sheet for an indication that the application is a national stage entry (371) of the PCT application. If neither of these indications are present, in the absence of evidence to the contrary (i.e., an indication in the originally filed application papers that processing as a national stage is desired), the application may be treated as a filing under 35 U.S.C. 111(a). If both indications are present, the application should be treated as a submission under 35 U.S.C. 371.
The examiner is advised to consult the Office of PCT Legal Administration if he or she has any question as to whether the application should be treated under 35 U.S.C. 111(a) or 371.
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CONFLICTING INSTRUCTIONS
Where applicant’s initial submission under 35 U.S.C. 371 contains conflicting instructions as to whether the filing is under 35 U.S.C. 111(a) or 35 U.S.C. 371, the application will be treated in accordance with 37 CFR 1.495(g). Note that 37 CFR 1.495(g) in effect prior to September 16, 2012, provided that an application submission containing conflicting instructions as to treatment under 35 U.S.C. 371 or 111(a) was to be treated under 35 U.S.C. 111(a). However, 37 CFR 1.495(g) was amended with effect on September 16, 2012 to provide that conflicting indications will result in the application being treated as a national stage submission under 35 U.S.C. 371.
A conflicting instruction will be present, for example, where applicant, in the initial submission under 35 U.S.C. 371, selects “Nonprovisional Application under 35 U.S.C. 111(a)” as the utility application type when submitting the application in EFS-Web, includes a “Utility Patent Application Transmittal” (Form PTO/AIA/15 or PTO/SB/05), or includes a benefit claim under 35 U.S.C. 120 to the international application.As additional examples, a conflicting instruction will be present where applicant includes in an initial filing under 35 U.S.C. 111(a) a “Transmittal Letter To The United States Designated/Elected Office (DO/EO/US) Concerning A Submission Under 35 U.S.C. 371” (Form PTO-1390) or an indication (for example, on the application data sheet) that the application is the national stage (or 371) of an international application.
The examiner is advised to contact the International Patent Legal Administration if he or she has any question as to whether an application has been properly treated, or should have been treated, as a national stage application under 35 U.S.C. 371.
1893.03(b) The Filing Date of a U.S. National Stage Application [R-07.2015]
An international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages. Often the date of entry into the national stage is confused with the filing date. It should be borne in mind that the filing date of the international stage application is
also the filing date for the national stage application. Specifically, 35 U.S.C. 363 provides that
An international application designating the United States shall have the effect, from its international filing date under Article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.
Similarly, PCT Article 11(3) provides that
...an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.
National stage applications are ordinarily taken up for action based on the date of entry into the national phase. See MPEP § 1893.01 regarding entry into the national stage. Because the date of entry is dependent upon receipt of certain items required under 35 U.S.C. 371(c), this date is also referred to as the “371(c) date.” The 371(c) date, not the international filing date, is the date that appears in the “Filing or 371(c) Date” box on the filing receipt and the application data sections of PALM and PAIR.
The NOTIFICATION OF ACCEPTANCE OF APPLICATION UNDER 35 U.S.C. 371 AND 37 CFR 1.495 (Form PCT/DO/EO/903) indicates the 371(c) date of the national stage application. Because of changes implemented pursuant to the America Invents Act (AIA), and in particular, the ability to postpone the submission of the oath or declaration required under 35 U.S.C. 371(c)(4) under certain conditions, the requirements for entry into the national stage, and thus the determination of the 371(c) date, are different based on the international filing date of the national stage application. See MPEP § 1893.03. Form PTO/DO/EO/903 in a national stage application having an international filing date prior to September 16, 2012 identifies the 371(c) date as the date of receipt of the 35 U.S.C. 371(c)(1), (c)(2), and (c)(4) requirements, while Form PTO/DO/EO/903 in a national stage application having an international filing date on or after September 16, 2012 identifies the 371(c) date
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as the date of receipt of the 371(c)(1) and (c)(2) requirements. Filing receipts are mailed concurrently with the mailing of the Form PCT/DO/EO/903.
The “Date of Completion of all 35 U.S.C. 371 Requirements” included on the NOTIFICATION OF ACCEPTANCE OF APPLICATION UNDER 35 U.S.C. 371 AND 37 CFR 1.495 (Form PCT/DO/EO/903) in pre-AIA national stage applications is relevant for purposes of patent term adjustment under former 35 U.S.C. 154(b)(1)(A)(i)(II) when the Office has failed to mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than fourteen months after the date on which the requirements under 35 U.S.C. 371 were fulfilled. This date is the latest of:
(A) the date of submission of the basic national fee;
(B) the date of submission or communication of the copy of the international application;
(C) the date of submission of the translation of the international application if the international application is not in the English language;
(D) the date of submission of an oath or declaration of the inventor in compliance with 35 U.S.C. 371(c)(4);
(E) the earlier of 30 months from the priority date or the date of request for early processing under 35 U.S.C. 371(f) if requested prior to 30 months from the priority date (Form PCT/DO/EO/903 will indicate the date early processing was requested);
(F) if a request for early processing has not been requested prior to 30 months from the priority date, the date of submission of any translation of the annexes to the international preliminary examination report if the translation of the annexes are filed within the time period set in a Notification of Missing Requirements (Form PCT/DO/EO/905) requiring either an English translation of the international application or an oath or declaration; and
(G) the date of submission of any surcharge for submitting the oath or declaration later than 30 months from the priority date.
The AIA Technical Corrections Act, enacted on January 14, 2013, amended 35 U.S.C. 154(b)(1)(A)(i)(II) to change “the date on which an international application fulfilled the requirements of section 371” to “the date of commencement of the national stage under section 371 in an international application.” See Public Law 112-274, 126 Stat. 2456 (2013). Thus, under the AIA Technical Corrections Act, the fourteen-month period in 35 U.S.C. 154(b)(1)(A)(i) for a national stage application is measured from the date of commencement of the national stage under 35 U.S.C. 371 in an international application.
1893.03(c) The Priority Date, Priority Claim, and Priority Papers for a U.S. National Stage Application [R-07.2015]
A U.S. national stage application may be entitled to: (A) a right of priority under 35 U.S.C. 119(a) and 365(b) based on a prior foreign application or international application designating at least one country other than the United States; and (B) the benefit of an earlier filed U.S. national application or international application designating the United States pursuant to 35 U.S.C. 119(e) or 35 U.S.C. 120 and 365(c).
I. RIGHT OF PRIORITY UNDER 35 U.S.C. 119(a) and 365(b)
Pursuant to 35 U.S.C. 365(b) a U.S. national stage application shall be entitled to a right of priority based on a prior foreign application or international application designating at least one country other than the United States in accordance with the conditions and requirements of 35 U.S.C. 119(a) and the treaty and the PCT regulations. See in particular PCT Article 8 and PCT Rules 4.10 and 26 bis . To obtain priority in the U.S. national stage application to such applications, the priority must have been timely claimed in the international stage of the international application. See 37 CFR 1.55(d)(2). In the event that a claim of foreign priority is not timely made in the international stage, the priority claim may be made in the U.S. national stage application upon petition under 37 CFR 1.55(e), if the entire delay between the date the priority claim was due under PCT Rule 26 bis and the date the claim is filed is unintentional.
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Note that in U.S. national stage applications it is permissible, but not required, to present the claim for priority in an application data sheet. A proper claim for priority will be acknowledged (subject to the paragraph below) and the national stage application file will then be checked to see if the file contains a copy of the certified copy of the priority document submitted to the International Bureau. See subsection II below for further information concerning the certified copy of the priority document.
International applications filed on or after April 1, 2007 are subject to amended PCT Rules permitting restoration of a right of priority. See MPEP § 1828.01. Consequently, international applications filed on or after April 1, 2007 may claim priority to a foreign application filed more than 12 months before the filing date of the international application. Such a priority claim will be effective in the U.S. national stage if the right of priority has been restored under PCT Rule 26 bis.3 during the international stage. See 37 CFR 1.55(c).
Furthermore, the right of priority may be restored in a U.S. national stage application upon petition under 37 CFR 1.55(c). Restoration of the right of priority upon petition under 37 CFR 1.55(c) is not limited to applications having an international filing date of April 1, 2007 or later. It should be noted that where a petition under 37 CFR 1.55(c) is necessary to restore the right of priority in a U.S. national stage application, a petition under 37 CFR 1.55(e) to add a delayed priority claim will also be required where the priority claim was not properly made within the time limit set forth in the PCT and the Regulations under the PCT. 37 CFR 1.55(d)(2).
For a comparison with 35 U.S.C. 119(a) - (d) priority claims in a national application filed under 35 U.S.C. 111(a), see MPEP § 1895.01.
II. THE CERTIFIED COPY
The requirement in PCT Rule 17 for a certified copy of the foreign priority application is normally fulfilled by applicant providing a certified copy to the receiving Office or to the International Bureau, or by applicant requesting the receiving Office to prepare and transmit the priority document to the
International Bureau if the receiving Office issued the priority document, or by applicant requesting the International Bureau to obtain the priority document from a digital library. Pursuant to PCT Rule 17.1(a), (b) or (b-bis ), applicant must submit the certified copy, request the receiving Office to prepare and transmit the certified copy or request the International Bureau to obtain the priority document from a digital library, within 16 months from the priority date. Where applicant has complied with PCT Rule 17, the International Bureau will forward a copy of the certified priority document to each Designated Office that has requested such document with an indication that the priority document was submitted in compliance with the rule and the date the document was received by the International Bureau. This indication may be in the form of either a cover sheet attached to the copy of the priority document or a WIPO stamp on the face of the certified copy. The U.S. Patent and Trademark Office, as a Designated Office, will normally request the International Bureau to furnish the copy of the certified priority document upon receipt of applicant’s submission under 35 U.S.C. 371 to enter the U.S. national phase. The copy from the International Bureau is placed in the U.S. national stage file. The copy of the priority document received from the International Bureau with either of the indications above is acceptable to establish that applicant has filed a certified copy of the priority document in compliance with 37 CFR 1.55(f). The examiner should acknowledge in the next Office action that the copy of the certified copy of the foreign priority document has been received in the national stage application from the International Bureau.
On the following pages, note the examples of acceptable indications in the form of:
(A) a cover sheet indicating receipt by the International Bureau on 15 April 2011 (15.04.2011) and compliance with PCT Rule 17.1(a), (b) or (b- bis) in the “Remark” section; and
(B) the stamp (box) in the upper right hand section indicating receipt by the International Bureau (WIPO) on 30 December 2002 and the stamped indication "PRIORITY DOCUMENT SUBMITTED OR TRANSMITTED IN COMPLIANCE WITH RULE 17.1(a) OR (b)."
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If the International Bureau is unable to forward a copy of the certified priority document to the U.S. Patent and Trademark Office, then applicant must provide a certified copy of the priority document during the national stage, unless the requirements of 37 CFR 1.55(h) or 37 CFR 1.55(i) have been met. For international applications in which the U.S. national stage commenced under 35 U.S.C. 371 on or after December 18, 2013, applicant must submit the certified copy within the later of four months from the date of entry into the U.S. national stage as set forth in 37 CFR 1.491 or sixteen months from the filing date of the prior-filed foreign application. See 37 CFR 1.55(f)(2). A delay in filing the certified copy under 37 CFR 1.55(f)(2) may be excused upon petition under 37 CFR 1.55(f)(3). The International Bureau may not forward a copy of the priority document because the certified priority document was not furnished in compliance with PCT Rule 17.1(a), (b) or (b -bis) or applicant requested examination to begin pursuant to 35 U.S.C. 371(f) prior to availability of the priority document from the International Bureau. If the priority claim was not in accordance with PCT Rule 4.10 or the priority document was not provided in accordance with PCT Rule 17.1(a), (b) or (b -bis), the copy of the priority document will not have been provided by the International Bureau. If a copy of the foreign priority document is not in the national stage application file but applicant asserts that a certified copy of the priority document was timely furnished under PCT Rule 17 in the international phase, then the examiner should consult with a Quality Assurance Specialist in his or her Technology Center or a PCT Special Program Examiner.
III. BENEFIT CLAIM UNDER 35 U.S.C. 119(e), OR 120 AND 365(c)
A national stage application may include a benefit claim under 35 U.S.C. 119(e), or 120 and 365(c) to a prior U.S. national application or under 35 U.S.C. 120 and 365(c) to a prior international application designating the U.S. The conditions for according benefit under 35 U.S.C. 120 are as described in MPEP §§ 201.07, 201.08, and 211 et seq. and are similar regardless of whether the U.S. national application is a national stage application submitted under 35 U.S.C. 371 or a national application filed under 35 U.S.C. 111(a).
The conditions for according benefit of a provisional application under 35 U.S.C. 119(e) are also similar for national stage applications and applications filed under 35 U.S.C. 111(a), and the conditions are described in MPEP § 211.01(a).
In order for a national stage application (of international application “X”) to obtain benefit under 35 U.S.C. 119(e) of a prior U.S. provisional application, the national stage application must comply with the requirements set forth in 37 CFR 1.78(a). 37 CFR 1.78(a)(2) requires that the prior provisional application must be entitled to a filing date as set forth in 37 CFR 1.53(c), and the basic filing fee set forth in 37 CFR 1.16(d) must be paid on the provisional application within the time period set forth in 37 CFR 1.53(g). Additionally, the provisional application must name as an inventor at least one inventor named in the later filed international application “X” and disclose the named inventor’s invention claimed in at least one claim of the national stage application in the manner provided by the first paragraph of 35 U.S.C. 112. The national stage application must contain a reference to the provisional application identifying it as a provisional application, and including the provisional application number (series code and serial number). If the national stage application has an international filing date prior to September 16, 2012, then the reference must be in either an application data sheet (37 CFR 1.76) or in the first sentence(s) of the specification. See pre-AIA 37 CFR 1.78(a)(5)(iii). If the national stage application has an international filing date that is on or after September 16, 2012, then the reference must be in an application data sheet (37 CFR 1.76). See 37 CFR 1.78(a)(3). However, the requirement for inclusion of the benefit claim in an application data sheet will be satisfied in a U.S. national stage application by the presentation of such benefit claim in the PCT request form contained in the international application or the presence of such benefit claim on the front page of the published international application. See 37 CFR 1.76(g). The required reference to the earlier provisional application must be submitted within the time period provided by 37 CFR 1.78(a)(4). This time period is not extendable. However, if the entire delay, between the date the claim was due under 37 CFR 1.78(a)(4) and the date the claim was filed, was unintentional, a petition under 37 CFR 1.78(c) may be filed to
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accept the delayed claim. If the provisional application was filed in a language other than English, an English-language translation of the non-English language provisional application and a statement that the translation is accurate will be required. See MPEP § 211.01(a). If the translation and statement that the translation is accurate were not filed in the provisional application or in the later-filed national stage application before November 25, 2005, applicant will be notified and given a period of time within which to file an English-language translation and a statement that the translation is accurate in the provisional application, and a reply in the national stage application that the translation and statement were filed in the provisional application. Failure to timely reply to such a notice will result in abandonment of the national stage application. See 37 CFR 1.78(a)(5).
Public Law 106-113 amended 35 U.S.C. 119(e) to eliminate the copendency requirement for a nonprovisional application claiming benefit of a provisional application. 35 U.S.C. 119(e)(2) as amended became effective on November 29, 1999 and applies to provisional applications filed on or after June 8, 1995. An international application claiming benefit under 35 U.S.C. 365(c) and 35 U.S.C. 119(e) to a prior filed provisional application must be filed within twelve months of the filing date of the provisional application. The Director may extend the twelve month statutory period by an additional two months in situations where the failure to file the international application under 35 U.S.C. 363 was unintentional. See 35 U.S.C. 119(e).
International applications filed on or after April 1, 2007 are subject to amended PCT Rules permitting restoration of a right of priority. See MPEP § 1828.01. Consequently, international applications filed on or after April 1, 2007 may claim the benefit of a provisional application filed more than 12 months before the filing date of the international application. Such a benefit claim will be effective in the U.S. national stage if the benefit of the provisional application has been restored under PCT Rule 26 bis.3 during the international stage. See 37 CFR 1.78(b).
Furthermore, the benefit of a provisional application may be restored in a U.S. national stage application upon petition under 37 CFR 1.78(b). Restoration of the benefit of a provisional application upon petition under 37 CFR 1.78(b) is not limited to applications having an international filing date of April 1, 2007 or later. It should be noted that where a petition under 37 CFR 1.78(b) is necessary to restore the benefit of a provisional application in a U.S. national stage application, a petition under 37 CFR 1.78(c) to add a delayed benefit claim will also be required, unless the benefit claim was timely made under 37 CFR 1.78(a)(4) (which includes, inter alia, making the benefit claim during the international stage).
In order for a national stage application (of international application “X”) to obtain benefit under 35 U.S.C. 120 and 365(c) of a prior filed copending nonprovisional application or prior filed copending international application designating the United States of America, the national stage application must comply with the requirements set forth in 37 CFR 1.78(d). The prior nonprovisional application or international application must name as an inventor at least one inventor named in the later filed international application “X” and disclose the named inventor’s invention claimed in at least one claim of the national stage application in the manner provided by the first paragraph of 35 U.S.C. 112. The national stage application must contain a reference to the prior nonprovisional or international application (either in an application data sheet (37 CFR 1.76) or in the first sentence(s) of the specification), identifying it by application number (series code and serial number) or international application number and international filing date and indicating the relationship of the applications. If the national stage application has an international filing date prior to September 16, 2012, then the reference must be in either an application data sheet (37 CFR 1.76) or in the first sentence(s) of the specification. See pre-AIA 37 CFR 1.78(a)(2)(iii). If national stage application has an international filing date that is on or after September 16, 2012, then the reference must be in an application data sheet (37 CFR 1.76). See 37 CFR 1.78(d)(2). However, the requirement for inclusion of the benefit claim in an application data sheet will be satisfied in a U.S. national stage application by the presentation of such benefit claim in the PCT Request form contained in the international
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application or the presence of such benefit claim on the front page of the published international application. See 37 CFR 1.76(g). The required reference to the earlier filed application must be submitted within the time period set forth in 37 CFR 1.78(d)(3). This time period is not extendable and failure to timely submit the required reference to the earlier application will be considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such prior-filed application. See 37 CFR 1.78(d)(3). However, if the entire delay, between the date the claim was due under 37 CFR 1.78(d)(3) and the date the claim was filed, was unintentional, a petition under 37 CFR 1.78(e) may be filed to accept the delayed claim.
A prior filed nonprovisional application is copending with the national stage application if the prior U.S. national application was pending on the international filing date of the national stage application.
A prior-filed international application designating the United States of America is copending with the national stage application if the prior international application was not abandoned or withdrawn, either generally or as to the United States, on the international filing date of the national stage application.
Note: a national stage application submitted under 35 U.S.C. 371 may not claim benefit of the filing date of the international application of which it is the national stage since its filing date is the international filing date of the international application. See also MPEP § 1893.03(b). Stated differently, since the international application is not an earlier application (it has the same filing date as the national stage), a benefit claim under 35 U.S.C. 120 in the national stage to the international application is inappropriate.
For a comparison with 35 U.S.C. 120 benefit claims in a national application filed under 35 U.S.C. 111(a), see MPEP § 1895.
1893.03(d) Unity of Invention [R-07.2015]
37 CFR 1.499 Unity of invention during the national stage
If the examiner finds that a national stage application lacks unity of invention under § 1.475, the examiner may in an Office action
require the applicant in the response to that action to elect the invention to which the claims shall be restricted. Such requirement may be made before any action on the merits but may be made at any time before the final action at the discretion of the examiner. Review of any such requirement is provided under §§ 1.143 and 1.144.
PCT Rule 13 was amended effective July 1, 1992. 37 CFR 1.475 was amended effective May 1, 1993 to correspond to PCT Rule 13.
Examiners are reminded that unity of invention (not restriction practice pursuant to 37 CFR 1.141 - 1.146) is applicable in international applications (both Chapter I and II) and in national stage applications submitted under 35 U.S.C. 371. Restriction practice in accordance with 37 CFR 1.141-1.146 continues to apply to U.S. national applications filed under 35 U.S.C. 111(a), even if the application filed under 35 U.S.C. 111(a) claims benefit under 35 U.S.C. 120 and 365(c) to an earlier international application designating the United States or to an earlier U.S. national stage application submitted under 35 U.S.C. 371.
The sections of the MPEP relating to double patenting rejections (MPEP § 804), election and reply by applicant (MPEP § 818), and rejoinder of nonelected inventions (MPEP § 821.04) generally also apply to national stage applications submitted under 35 U.S.C. 371. See MPEP § 823.
When making a unity of invention requirement, the examiner must (1) list the different groups of claims and (2) explain why each group lacks unity with each other group (i.e., why there is no single general inventive concept) specifically describing the unique special technical feature in each group.
The principles of unity of invention are used to determine the types of claimed subject matter and the combinations of claims to different categories of invention that are permitted to be included in a single international or national stage patent application. See MPEP § 1850 for a detailed discussion of Unity of Invention. The basic principle is that an application should relate to only one invention or, if there is more than one invention, that applicant would have a right to include in a single application only those inventions which are so linked as to form a single general inventive concept.
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A group of inventions is considered linked to form a single general inventive concept where there is a technical relationship among the inventions that involves at least one common or corresponding special technical feature. The expression special technical features is defined as meaning those technical features that define the contribution which each claimed invention, considered as a whole, makes over the prior art. For example, a corresponding technical feature is exemplified by a key defined by certain claimed structural characteristics which correspond to the claimed features of a lock to be used with the claimed key. Note also the examples contained in Chapter 10 of the International Search and Preliminary Examination Guidelines which can be obtained from the Patent Examiner’s Toolkit or WIPO’s website (www.wipo.int/pct/en/texts/gdlines.html).
A process is “specially adapted” for the manufacture of a product if the claimed process inherently produces the claimed product with the technical relationship being present between the claimed process and the claimed product. The expression “specially adapted” does not imply that the product could not also be manufactured by a different process.
An apparatus or means is specifically designed for carrying out the process when the apparatus or means is suitable for carrying out the process with the technical relationship being present between the claimed apparatus or means and the claimed process. The expression specifically designed does not imply that the apparatus or means could not be used for carrying out another process, nor does it imply that the process could not be carried out using an alternative apparatus or means.
Note: the determination regarding unity of invention is made without regard to whether a group of inventions is claimed in separate claims or as alternatives within a single claim. The basic criteria for unity of invention are the same, regardless of the manner in which applicant chooses to draft a claim or claims.
If an examiner (1) determines that the claims do not meet the unity of invention requirement and (2) requires election of a single invention, when all of
the claims drawn to the elected invention are allowable (i.e., meet the requirements of 35 U.S.C. 101, 102, 103 and 112), the nonelected invention(s) should be considered for rejoinder. Any nonelected product claim that requires all the limitations of an allowable product claim, and any nonelected process claim that requires all the limitations of an allowable process claim, should be rejoined. See MPEP § 821.04. Any nonelected processes of making and/or using an allowable product should be considered for rejoinder. The examiner should notify applicants of potential rejoinder of non-elected process claims by placing form paragraph 8.21.04 at the end of any lack of unity determination made between a product and a process of making the product or between a product and a process of using the product.
FORM PARAGRAPHS FOR LACK OF UNITY IN NATIONAL STAGE APPLICATIONS
¶ 18.18 Heading for Lack of Unity Action in National Stage Applications Submitted Under 35 U.S.C. 371 (Including Species)
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
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(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Examiner Note:
1. Begin all Lack of Unity actions in national stage applications submitted under 35 U.S.C. 371 (including species) with this heading.
2. Follow with form paragraph 18.19 or 18.20, as appropriate.
3. For lack of unity during the international phase, use form paragraph 18.05 instead of this form paragraph.
¶ 18.19 Restriction Requirement in National Stage Applications Submitted Under 35 U.S.C. 371
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Examiner Note:
1. This form paragraph is to be used when making a restriction requirement in a national stage application submitted under 35 U.S.C. 371.
2. This form paragraph is to be followed by form paragraphs 18.06 - 18.06.02, as appropriate, and by form paragraphs 18.07 - 18.07.02, as appropriate.
3. All restriction requirements between a product/apparatus and a process of making the product/apparatus or between a product and a process of using the product should be followed by form paragraph 8.21.04 to notify the applicant that if all product/apparatus claims are found allowable, process claims that require all the limitations of the patentable product/apparatus should be considered for rejoinder.
4. When all of the claims directed to the elected invention are in condition for allowance, the propriety of the restriction requirement should be reconsidered to verify that the non-elected claims do not share a same or corresponding technical feature with the allowable claims.
¶ 8.21.04 Notice of Potential Rejoinder of Process Claims
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the
product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Examiner Note:
This form paragraph should appear at the end of any requirement for restriction between a process and a product/apparatus for practicing the process (see form paragraph 8.17), a product/apparatus and a process of making the product/apparatus (see form paragraph 8.18) or between a product/apparatus and a process of using the product/apparatus (see form paragraph 8.20). See MPEP § 821.04 for rejoinder practice.
¶ 18.20 Election of Species in National Stage Applications Submitted Under 35 U.S.C. 371
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
[1]
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written
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in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claim(s) are generic: [2].
Examiner Note:
1. This form paragraph is to be used when making an election of species requirement in a national stage application submitted under 35 U.S.C. 371.
2. In bracket 1, identify the species from which an election is to be made.
3. In bracket 2, identify each generic claim by number or insert the word --NONE--.
4. This form paragraph is to be followed by form paragraphs 18.07 - 18.07.03, as appropriate.
¶ 18.21 Election by Original Presentation in National Stage Applications Submitted Under 35 U.S.C. 371
Newly submitted claim [1] directed to an invention that lacks unity with the invention originally claimed for the following reasons: [2]
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a nonelected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
¶ 18.22 Requirement for Election and Means for Traversal in National Stage Applications Submitted Under 35 U.S.C. 371
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may
be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Examiner Note:
1. This form paragraph should be used when requiring restriction (including an election of species) in an application that entered the national stage under 35 U.S.C. 371.
2. This form paragraph should follow form paragraph 8.23.01 when a telephone call was made that did not result in an election being made.
1893.03(e) Documents Received from the International Bureau and Placed in a U.S. National Stage Application File [R-07.2015]
The national stage application includes documents communicated by the International Bureau and submissions from applicant. Some of the documents from the International Bureau are identified in this section with a brief note as to their importance to the national stage application. The examiner should review each such document and the important aspect indicated.
I. THE PUBLICATION OF THE INTERNATIONAL APPLICATION
The publication of the international application includes
(A) a cover page with the applicant/inventor data, the application data (application number, filing date, etc.) and the Abstract (and, if appropriate, a figure of drawing),
(B) the description, claims and drawing parts of the international application, and
(C) the search report (Form PCT/ISA/210), if available.
The publication may also include other items as set forth in PCT Rule 48.
The cover page is important as a source of the correct application data, most importantly the filing date and priority date accorded to the international application. If the international application is published in English, the Office will use the description, claims, abstract and drawings as published in the pamphlet for the U.S. national stage application under 35 U.S.C. 371. The description,
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claims and drawing parts of the international application reflect the application subject matter on the international filing date and are important for comparison with any amendments to check for new matter. The search report reflects the International Searching Authority’s opinion regarding the prior art.
The abstract is reproduced on the cover page of the publication, even though it appears on a separate sheet of the international application in accordance with PCT Rule 11.4(a). The requirement of 37 CFR 1.52(b) that the abstract “commence on a separate physical sheet or electronic page” does not apply to the copy of the published international application communicated to the designated Offices by the International Bureau under PCT Article 20. Accordingly, it is improper for the examiner of the U.S. national stage application to require the applicant to provide an abstract commencing on a separate sheet if the abstract does not appear on a separate sheet in the publication of the international application. Unless the abstract is properly amended under the U.S. rules during national stage processing, the abstract that appears on the cover page of the published international application will be the abstract published by the USPTO under 35 U.S.C. 122(b) and in any U.S. patent issuing from the application.
II. THE INTERNATIONAL PRELIMINARY EXAMINATION REPORT AND THE INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY (CHAPTER I AND II)
When an international preliminary examination is performed by an International Preliminary Examining Authority (IPEA), an international preliminary examination report (IPER) is prepared on Form PCT/IPEA/409 by the IPEA and sent to the elected Offices. This report reflects the IPEA’s non-binding opinion regarding novelty, inventive step and industrial applicability. The IPER bears the title “International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty)”.
If the applicant did not timely file a demand for international preliminary examination with the IPEA, then an “International Preliminary Report on
Patentability (Chapter I of the Patent Cooperation Treaty)” reflecting the International Searching Authority’s (ISA’s) non-binding opinion regarding novelty, inventive step and industrial applicability is sent to the designated Offices.
The examiner may adopt any portion or all of the report on patentability of the IPEA or ISA upon consideration in the national stage so long as it is consistent with U.S. practice. The first Office action on the merits should indicate the report on patentability of the IPEA or ISA has been considered by the examiner. The indication may be a mere acknowledgement.
The IPER may include annexes, i.e., amendments to the international application that were made during the international phase. See MPEP § 1893.01(a)(3). These annexes will be placed in the U.S. national stage application file. Consequently, if the international application has been extensively amended during the international stage, there may be a number of different copies of the description, claims and drawings present in the national stage application file. The IPER may be consulted in Box No. I “Basis of the report” to determine what pages the report was based upon. Using the IPER as a roadmap of what happened during Chapter II examination will help determine which version should be examined.
Original sheets, substitute sheets, rectified sheets, and sheets that were incorporated by reference and included as part of the application examined under Chapter II are listed in the IPER as “originally filed/furnished.” Replacement sheets showing amendments made under PCT Article 19 or 34 and considered during Chapter II are also listed. See MPEP § 1879. If the IPER was established in a language other than English, the International Bureau will translate the IPER into English. However, the International Bureau will not translate the annexes to the IPER into English. Unless proper and timely translations are furnished by the applicant, foreign language annexes will be considered canceled. See MPEP § 1893.01(a)(3). All replacement sheets in the international application are marked with the international application number and the date of receipt in the upper right-hand corner. Replacement sheets that contain changes in format only and are
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accepted by the receiving Office are marked as “SUBSTITUTE SHEET” at the bottom of the page. Replacement sheets that contain a rectification of an obvious error or mistake and are accepted by either the ISA or the IPEA are marked as “RECTIFIED SHEET (RULE 91)” at the bottom of the page. Sheets that were incorporated by reference and accepted by the receiving Office are marked as “INCORPORATED BY REFERENCE (RULE 20.6).” Additionally, replacement sheets to the claims submitted to the International Bureau as Article 19 Amendments will be marked as “AMENDED SHEET (Article 19)” at the bottom of the page. Furthermore, replacement sheets to the description, claims and drawings submitted to the IPEA as Article 34 Amendments will be marked as “AMENDED SHEET” at the bottom of the page. The IPER will indicate in “Box No. I Basis of the Report” that claim nos. or pages submitted under either PCT Article 19 or 34 have been considered and will indicate the date they were received and the replacement sheets will be annexed to the IPER. The NOTIFICATION OF ACCEPTANCE OF APPLICATION UNDER 35 U.S.C. 371 AND 37 CFR 1.495 (Form PCT/DO/EO/903) should also be consulted, as it will indicate if the annexes or their translation have not been entered.
III. THE PRIORITY DOCUMENT
See the discussion in MPEP § 1893.03(c).
IV. NOTIFICATION OF WITHDRAWAL
If the national stage application papers include an indication that the international application or US designation has been withdrawn, then the application should be brought to the attention of the Office of PCT Legal Administration to determine whether the withdrawal occurred prior to completion of the requirements under 35 U.S.C. 371(c). If the withdrawal occurred prior to completion of the requirements under 35 U.S.C. 371(c), then entry into the U.S. national stage is prohibited. See 35 U.S.C. 366. The indication of withdrawal may appear on a Notification of Withdrawal (PCT/IB/307 or PCT/RO/136), a Notification that International
Application Considered to Be Withdrawn (Form PCT/RO/117), or other notification.
1893.03(e)(1) Title of the Invention [R-08.2012]
In the absence of an application data sheet (37 CFR 1.76) or preliminary amendment changing the title, the Office will use the title of the invention that appears on the first page of the description of the published international application (if published under PCT Article 21 in English) or the title that appears on the first page of the description of the English translation of the international application (if not published under PCT Article 21 in English) in preparing the official filing receipt. If the title does not appear on the first page of the description, and an application data sheet or preliminary amendment changing the title has not been furnished, then the title will be taken from the cover page of the published international application. If applicant furnishes an application data sheet or preliminary amendment changing the title, the Office will use the title as indicated in such document in preparing the official filing receipt. If applicant submits both an application data sheet and a preliminary amendment, the later filed document will govern. See 37 CFR 1.76(d)(1). An application data sheet will govern over a concurrently filed preliminary amendment. See 37 CFR 1.76(d)(2).
1893.03(f) Drawings and PCT Rule 11 [R-08.2012]
The drawings for the national stage application must comply with PCT Rule 11. The USPTO may not impose requirements beyond those imposed by the Patent Cooperation Treaty (e.g., PCT Rule 11). However, the examiner does have the authority to require new drawings if the drawings were published without meeting all requirements under the PCT for drawings.
1893.03(g) Information Disclosure Statement in a National Stage Application [R-07.2015]
An extensive discussion of Information Disclosure Statement practice is to be found in MPEP § 609. Although not specifically stated therein, the duty to
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disclose information material to patentability as defined in 37 CFR 1.56 is placed on individuals associated with the filing and prosecution of a national stage application in the same manner as for a domestic national application. The averment with respect to the duty under 37 CFR 1.56 required under 37 CFR 1.63(b)(3) in an oath or declaration is applicable to oaths and declarations filed in U.S. national stage applications. See 37 CFR 1.497(c).
When an international application is filed under the Patent Cooperation Treaty (PCT), prior art documents may be cited by the examiner in the international search report and/or the international preliminary examination report. It is desirable for the U.S. examiner to consider the documents cited in the international application when examining the U.S. national stage application or when examining an application filed under 35 U.S.C. 111(a) which claims the benefit of the international application under 35 U.S.C. 365(a) or (c).
When all the requirements for a national stage application have been completed, applicant is notified (Form PCT/DO/EO/903) of the acceptance of the application under 35 U.S.C. 371, including an itemized list of the items received. The itemized list includes an indication of whether a copy of the international search report and copies of the references cited therein are present in the national stage file. The examiner will consider the documents cited in the international search report and any supplementary international search report under PCT Rule 45 bis , without any further action by applicant under 37 CFR 1.97 and 1.98, when both the international search report (or supplementary international search report under PCT Rule 45 bis ) and copies of the documents are indicated to be present in the national stage file. The examiner will note the consideration in the first Office action. There is no requirement that the examiners list the documents on a PTO-892 form. See form paragraphs 6.53, 6.54, and 6.55 (reproduced in MPEP § 609.03). Otherwise, applicant must follow the procedure set forth in 37 CFR 1.97 and 1.98 in order to ensure that the examiner considers the documents cited in the international search report.
This practice applies only to documents cited in the international search report relative to a national stage
application filed under 35 U.S.C. 371. It does not apply to documents cited in an international preliminary examination report that are not cited in the search report. It does not apply to applications filed under 35 U.S.C. 111(a) claiming the benefit of an international application filing date.
1894 [Reserved]
1895 A Continuation, Divisional, or Continuation- in- Part Application of a PCT Application Designating the United States [R-07.2015]
It is possible to file a U.S. national application under 35 U.S.C. 111(a) during the pendency (prior to the abandonment) of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371(c). The ability to take such action is based on provisions of the United States patent law. 35 U.S.C. 363 provides that “[a]n international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office....” 35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) “shall be regarded as abandonment... by the parties thereof....” It is therefore clear that an international application which designates the United States has the effect of a pending U.S. application from the international application filing date until its abandonment as to the United States. The first sentence of 35 U.S.C. 365(c) specifically provides that “[i]n accordance with the conditions and requirements of section 120 of this title,... a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States.” The condition of 35 U.S.C. 120 relating to the time of filing requires the later application to be filed before the patenting or abandonment of or termination of proceedings on the first application. The filing of a continuation, divisional, or continuation-in-part application of a PCT application designating the United States is known as a “bypass” application.
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Continuation-in-part applications are generally filed in instances where applicants seek to add matter to the disclosure which is not supported by the disclosure of the international application as originally filed, as new matter may not be added to a U.S. national stage application. See 37 CFR 1.121(f).
1895.01 Handling of and Considerations in the Handling of Continuations, Divisions, and Continuations-In-Part of PCT Applications [R-07.2015]
Pursuant to 35 U.S.C. 365(c), a regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) (not under 37 CFR 1.53(d)) may claim benefit of the filing date of an international application which designates the United States. Thus, rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of the international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as “bypass” applications.
A typical time line involving a continuing application filed during the pendency of an international application is illustrated as follows:
To obtain benefit under 35 U.S.C. 120 and 365(c) of a prior international application designating the U.S., the continuing application must:
(A) include a specific reference to the prior international application
(B) be copending with the prior international application, and
(C) have at least one inventor in common with the prior international application.
With regard to (A), if the continuing application was filed prior to September 16, 2012, the specific reference to the international application required under 35 U.S.C. 120 and 365(c) must either be contained in the first sentence(s) of the specification following the title or included in an application data sheet. See 37 CFR 1.78(d)(2) and 37 CFR 1.78(h). If the continuing application was filed on or after September 16, 2012, the specific reference to the international application required under 35 U.S.C. 120 and 365(c) must be contained in an application data sheet. 37 CFR 1.78(d)(2). The specific reference must identify the parent international application by international application number and international filing date and indicate the relationship of the applications (i.e., continuation, continuation-in-part, or division). See 37 CFR 1.78(d)(2) and MPEP § 211.02. An example of an appropriate first sentence of the specification is, for example, “This is a continuation of International Application PCT/EP2004/000000, with an international filing date of January 5, 2004, now abandoned.” The required reference must be submitted within the time period provided by 37 CFR 1.78(d)(3). This time period is not extendable. A certified copy of the international application (and an English translation of the international application) may be required by the examiner to perfect the claim for benefit under 35 U.S.C. 120 and 365(c) if the international application did not originate in the United States and such is necessary, for example, where an intervening reference is found and applied in a rejection of one or more claims. If the international application was published by the International Bureau pursuant to PCT Article 21, then a certified copy would not normally be necessary.
If benefit under 35 U.S.C. 119(e), and/or under 35 U.S.C. 120 and 365(c) is being claimed to an earlier filed national application (or international application designating the U.S.) via an intermediate international application designating the U.S., then the intermediate international application must contain a specific reference to the earlier application, as required under 37 CFR 1.78. The specific reference will usually be included on the cover page of the published international application and/or may appear in the first sentence(s) of the description of the published application. A lack of a proper reference in the published international application
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does not necessarily mean that a proper reference is not contained in the intermediate international application. Accordingly, the international application file (if the USPTO was the receiving Office) may have to be inspected to determine whether the requirements under 37 CFR 1.78 were satisfied after publication of the international application. For example, the intermediate international application file may contain the specific reference in a separate paper filed after publication but during the pendency of the international application, or a decision granting a petition to accept a late benefit claim may be present in the application file. See MPEP § 211.04. The examiner may contact the Office of PCT Legal Administration for assistance.
With regard to (B), a U.S. national application is considered copending with a prior international application designating the U.S. if the international application was pending on the filing date of the U.S. national application. Generally, except in cases where the international application has been withdrawn (either generally or as to the United States), an international application becomes abandoned as to the United States upon expiration of 30 months from the priority date (i.e., the priority date claimed in the international application or, if no priority is claimed, the international filing date) unless a proper submission under 35 U.S.C. 371 to enter the U.S. national phase is filed prior to the expiration of this 30-month period. See MPEP §§ 1893.01(a)(1) and 1893.02. However, if the international application is one where the 20-month period from the priority date expired before April 1, 2002, then it was necessary to file a demand electing the United States prior to the expiration of 19 months from the priority date in order to extend the international phase to 30 months from the priority date. If such a demand was not timely filed, then under former 37 CFR 1.494, such an international application became abandoned at the expiration of 20 months from the priority date unless a proper submission under 35 U.S.C. 371 to enter the U.S. national phase was made prior to the expiration of 20 months from the priority date. Accordingly, if the international application is not subject to the filing of a demand in order to delay entry into the U.S. national phase to 30 months from the priority date, then a national application filed prior to the
expiration of this 30 month period will be copending with the international application unless the international application was withdrawn, either generally or as to the United States, prior to the filing of the national application. To determine whether the application was withdrawn, the examiner must either review the Home Copy of the international application file (if the USPTO was the receiving Office), or require applicant to certify that the international application was not withdrawn or considered to be withdrawn, either generally or as to the United States, prior to the filing date of the national application claiming benefit under 35 U.S.C. 120 and 365(c) to such international application. In order to expedite examination, applicant should certify at the time of filing a national application claiming benefit under 35 U.S.C. 120 and 365(c) to an international application that the international application has not been withdrawn. If the national application claiming benefit to the international application was filed after the expiration of this 30-month period, then there will be no copendency in the absence of a timely and proper submission to enter the U.S. national phase under 35 U.S.C. 371. The existence of a national stage application may be checked through PALM and the records of the national stage application should be consulted to verify copendency. Additionally, if the 20-month period from the priority date of the international application expired before April 1, 2002 and the national application claiming benefit under 35 U.S.C. 120 and 365(c) was filed later than 20 months from the priority date of the international application, the applicant may be required to submit proof of the filing of a demand electing the United States within 19 months from the priority date. This proof may be in the form of a copy of the “Notification of Receipt of Demand by Competent International Preliminary Examining Authority” (Form PCT/IPEA/402) showing the demand was received prior to the expiration of 19 months from the priority date, and a copy of the “Notification Concerning Elected Offices Notified of Their Election” (Form PCT/IB/332) showing the election of the United States. If the parent international application was not copending (i.e., abandoned or withdrawn), benefit under 35 U.S.C. 120 is not possible.
With regard to (C), inventors will normally be identified on the cover page of the published
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international application. In addition, such information is indicated in the PCT Gazette , which is available in electronic form from WIPO’s website (www.wipo.int/pct/en/official_notices).
PRIORITY CLAIMS UNDER 35 U.S.C. 119 (a)-(d)
A claim for foreign priority under 35 U.S.C. 119(a) - (d) must be made in the continuing application in order to obtain the benefit of the filing date of the prior filed foreign application. This is true regardless of whether such a claim was made in the parent international application. A foreign priority claim is proper in the continuing application if the , continuing application or the parent international application was filed not later than 12 months after the filing date of the foreign application. See 37 CFR 1.55(b). In addition, a foreign priority claim is proper in the continuing application if the continuing application or the parent international application was filed after expiration of the 12 month period set forth in 37 CFR 1.55(b) but within two months from such expiration, if the right of priority is restored under 37 CFR 1.55(c). The required claim must be made within the time period set forth in 37 CFR 1.55(d)(1). This time period is not extendable. See MPEP § 214.01. A certified copy of any foreign priority document must be provided by the applicant unless the requirements of 37 CFR 1.55(h) or 37
CFR 1.55(i) have been met or the parent international application has entered the national stage under 35 U.S.C. 371 and the national stage application contains the priority document from the International Bureau. See MPEP § 1893.03(c). In the latter case, the applicant, in the continuing application, may state that the priority document is contained in the national stage application.
For a discussion of U.S. national applications filed under 35 U.S.C. 111(a) having foreign priority claims under 35 U.S.C. 119(a) - (d) and 365(a) to a prior international application designating at least one country other than the United States, see MPEP § 213.01.
1896 The Differences Between a National Application Filed Under 35 U.S.C. 111(a) and a National Stage Application Submitted Under 35 U.S.C. 371 [R-07.2015]
The following section describes some differences between a U.S. national application filed under 35 U.S.C. 111(a), including those claiming benefit of a PCT application under 35 U.S.C. 120 (a continuation, division, or a continuation-in-part of a PCT application), and a U.S. national stage application (submitted under 35 U.S.C. 371).
Chart of Some Common Differences
National Stage Applications (submitted under 35 U.S.C. 371)
National Applications (filed under 35 U.S.C. 111(a) )
International filing date of PCT application
see 37 CFR 1.53(b)
Filing Date
Claim for priority in accordance
Claim for priority in accordance
35 U.S.C. 119(a) - (d)
with 37 CFRwith 37 CFRPriority Requirement 1.55(d)(2) Copy1.55(d)(1)
of certifiedCertified copy priority documentprovided by provided by theapplicant in Internationalaccordance with Bureau or in37 CFR accordance with1.55(f)(1), unless
National Stage Applications (submitted under 35 U.S.C. 371)
National Applications (filed under 35 U.S.C. 111(a) )
the requirements of 37 CFR
37 CFR 1.55(f)(2).
1.55(h) or (i) have been met
Unity of invention practice
U.S. restriction practice under 37 CFR 1.141-1.146
Unity of Invention
under 37 CFR 1.499 37 CFR 1.49237 CFR 1.16Filing Fees
The differences between a national application filed under 35 U.S.C. 111(a) and a national application
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1896
submitted under 35 U.S.C. 371 are often subtle, but the differences are important.
I. FILING DATE
The filing date of a 35 U.S.C. 111(a) application is, except as provided in 35 U.S.C. 111(c), the date when a specification is received in the USPTO. See 37 CFR 1.53(b) and 37 CFR 1.57(a).
The filing date of a PCT international application is the date applicant satisfies Article 11 requirements, i.e., includes a description, a claim, names at least one applicant who is a resident or national of a PCT Contracting State, filed in the prescribed language, and designates at least one Contracting State. See MPEP § 1810. By virtue of 35 U.S.C. 363, the U.S. filing date of an international application that designates the United States is, for most legal purposes, the international filing date. See MPEP § 1893.03(b).
II. 35 U.S.C. 119(a)-(d) AND 365(b) PRIORITY REQUIREMENTS
In a U.S. national application filed under 35 U.S.C. 111(a), the claim for priority must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d). The certified copy of the foreign priority application must be provided to the Office by applicant within the time period set forth in 37 CFR 1.55(f), which is the later of four months from the actual filing date of the application or sixteen months from the prior foreign application, unless the requirements of 37 CFR 1.55(h) or 37 CFR 1.55(i) have been met. See MPEP § 1895.01.
In a U.S. national stage application submission under 35 U.S.C. 371, where applicant filed an international application claiming priority to an earlier filed national application, the claim for priority must be made and the certified copy of the priority application must be furnished during the international stage within the time limit set forth in the PCT and Regulations under the PCT. The International Bureau sends a copy of the certified priority document to each designated office that has requested to receive such documents. Upon receipt
of applicant’s submission to enter the U.S. national stage under 35 U.S.C. 371, the USPTO will request from the International Bureau a copy of the certified priority document submitted in the international stage. Upon receipt of the priority document, the USPTO will place the document in the image file wrapper of the national stage application. Such a copy from the International Bureau is acceptable in a U.S. national stage application to establish that applicant has filed a certified copy of the priority document in compliance with 37 CFR 1.55(f)(2). For procedures when the certified priority document was not provided during the international stage, see MPEP § 1893.03(c).
III. UNITY OF INVENTION
U.S. national applications filed under 35 U.S.C. 111(a) are subject to restriction practice in accordance with 37 CFR 1.141-1.146. See MPEP § 803. U.S. national stage applications are subject to unity of invention practice in accordance with 37 CFR 1.475 and 1.499.
IV. FILING FEES
U.S. national applications filed under 35 U.S.C. 111(a) are subject to the national application filing fees set forth at 37 CFR 1.16. Submissions to enter the U.S. national stage under 35 U.S.C. 371 are subject to the national stage fees prescribed at 37 CFR 1.492.
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§ 1896PATENT COOPERATION TREATY
Chapter 1900 Protest
Protest Under 37 CFR 1.2911901 Who Can Protest1901.01 Information Which Can Be Relied on in Protest
1901.02
How Protest Is Submitted1901.03 When Should the Protest Be Submitted
1901.04
Initial Office Handling and Acknowledgment of Protest
1901.05
Examiner Treatment of Protest1901.06 Protestor Participation1901.07
Filing of Multiple Papers Relating to Same Issues
1901.07(a)
[Reserved]1902-1905 Supervisory Review of an Examiner’s Decision Adverse to Protestor
1906
Unauthorized Participation by Protestor
1907
[Reserved]1908-1919 Citation of Prior Art Under 37 CFR 1.501(a)
1920
[ Editor Note: This chapter was not substantively revised for the Ninth Edition of the MPEP. Each section has a revision indicator of “[R-08.2012],” meaning that the section as reproduced in this Edition is the version in force in August 2012 with the following exceptions: 1) As a result of the publication process, form paragraphs reproduced in this chapter reflect the text used by examiners effective November 2013 rather than those in force in August 2012; 2) The marks indicating added or deleted text from prior revisions have been removed; and 3) The notation “[Reserved]” has been added for section numbers previously missing in the hierarchy (i.e., section numbers that were never used or no longer have text). See the ninth revision of the Eighth Edition of the MPEP published August 2012 as posted on the USPTO Web site on the MPEP Archives page (http://www.uspto.gov/web/offices/ pac/mpep/old/index.htm) for the text of form paragraphs in force in August 2012 and the prior revision marks.]
1901 Protest Under 37 CFR 1.291 [R-08.2012]
37 CFR 1.291 Protests by the public against pending applications.
(a) A protest may be filed by a member of the public against a pending application, and it will be matched with the application
file if it adequately identifies the patent application. A protest submitted within the time frame of paragraph (b) of this section, which is not matched in a timely manner to permit review by the examiner during prosecution, due to inadequate identification, may not be entered and may be returned to the protestor where practical, or, if return is not practical, discarded.
(b) The protest will be entered into the record of the application if, in addition to complying with paragraph (c) of this section, the protest has been served upon the applicant in accordance with § 1.248, or filed with the Office in duplicate in the event service is not possible; and, except for paragraph (b)(1) of this section, the protest was filed prior to the date the application was published under § 1.211, or a notice of allowance under § 1.311 was mailed, whichever occurs first:
(1) If a protest is accompanied by the written consent of the applicant, the protest will be considered if the protest is matched with the application in time to permit review during prosecution.
(2) A statement must accompany a protest that it is the first protest submitted in the application by the real party in interest who is submitting the protest; or the protest must comply with paragraph (c)(5) of this section. This section does not apply to the first protest filed in an application.
(c) In addition to compliance with paragraphs (a) and (b) of this section, a protest must include.
(1) A listing of the patents, publication, or other information relied upon;
(2) A concise explanation of the relevance of each item listed pursuant to paragraph (c)(1) of this section;
(3) A copy of each listed patent, publication, or other item of information in written form, or at least the pertinent portions thereof;
(4) An English language translation of all the necessary and pertinent parts of any non-English language patent, publication, or other item of information relied upon; and
(5) If it is a second or subsequent protest by the same party in interest, an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier and why the significantly different issue(s) were not presented earlier, and a processing fee under § 1.17(i) must be submitted.
(d) A member of the public filing a protest in an application under this section will not receive any communication from the Office relating to the protest, other than the return of a self-addressed postcard which the member of the public may include with the protest in order to receive an acknowledgement by the Office that the protest has been received. The limited involvement of the member of the public filing a protest pursuant to this section ends with the filing of the protest, and no further submission on behalf of the protestor will be considered, unless the submission is made pursuant to paragraph (c)(5) of this section.
(e) Where a protest raising inequitable conduct issues satisfies the provisions of this section for entry, it will be entered into the application file, generally without comment on the inequitable conduct issues raised in it.
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(f) In the absence of a request by the Office, an applicant has no duty to, and need not, reply to a protest.
(g) Protests that fail to comply with paragraphs (b) or (c) of this section may not be entered, and if not entered, will be returned to the protestor, or discarded, at the option of the Office.
37 CFR 1.248 Service of papers; manner of service; proof of service; proof of service in cases other than interferences.
(a) Service of papers must be on the attorney or agent of the party if there be such or on the party if there is no attorney or agent, and may be made in any of the following ways:
(1) By delivering a copy of the paper to the person served;
(2) By leaving a copy at the usual place of business of the person served with someone in his employment;
(3) When the person served has no usual place of business, by leaving a copy at the person’s residence, with some person of suitable age and discretion who resides there;
(4) Transmission by first class mail. When service is by mail the date of mailing will be regarded as the date of service;
(5) Whenever it shall be satisfactorily shown to the Director that none of the above modes of obtaining or serving the paper is practicable, service may be by notice published in the Official Gazette.
(b) Papers filed in the Patent and Trademark Office which are required to be served shall contain proof of service. Proof of service may appear on or be affixed to papers filed. Proof of service shall include the date and manner of service. In the case of personal service, proof of service shall also include the name of any person served, certified by the person who made service. Proof of service may be made by:
(1) An acknowledgement of service by or on behalf of the person served or
(2) A statement signed by the attorney or agent containing the information required by this section.
(c) See § 41.106(e) of this title for service of papers in contested cases before the Board of Patent Appeals and Interferences.
The degree of participation allowed a protestor is solely within the discretion of the Director of the USPTO.
37 CFR 1.291 gives recognition to the value of written protests in bringing information to the attention of the Office and in avoiding the issuance of invalid patents. With the exception of a protest accompanied by a written consent of the applicant, all protests must be submitted prior to the publication of the application or the mailing of a notice of allowance, whichever occurs first. No protest or other form of preissuance opposition to the grant of
a patent may be initiated after publication of the application without the applicant’s express written consent as specified by 35 U.S.C. 122(c).
It is noted that a protest filed in a reissue application is not a “form of preissuance opposition to the grant of a patent” since the patent to be reissued has already been granted. Thus, a protest may be filed in a reissue application throughout the pendency of the reissue application prior to the date of mailing of a notice of allowance subject to the timing constraints of the examination. A protest with regard to a reissue application should, however, be filed within the 2-month period following the announcement of the filing of the reissue application in the Official Gazette. See MPEP § 1441.01 for guidance as to the filing of a protest in a reissue application.
37 CFR 1.291(b) provides that a protest will be entered into the record of the application if, in addition to complying with the requirements of 37 CFR 1.291(c), the protest is either served upon the applicant, or is filed in duplicate in the event service is not possible. In the event a duplicate protest is enclosed for the applicant, the protest should be accompanied by an explanation of why service on applicant could not be made.
37 CFR 1.291(c) requires that the protest must include:
(A) a listing of the patents, publications, or other information relied on;
(B) a concise explanation of the relevance of each listed item;
(C) a copy of each listed patent, publication, or other item of information in written form, or at least the pertinent portions thereof;
(D) an English language translation of all necessary and pertinent parts of any non-English language patent, publication, or other information relied upon; and
(E) if the protest is a second or subsequent protest by the same real party in interest, the protest must further include:
""(1) an explanation as to why the issue(s) being raised in the second or subsequent protest are significantly different than those raised earlier;
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1901
""(2) an explanation as to why the significantly different issue(s) were not presented to the Office earlier; and
""(3) the processing fee under 37 CFR 1.17(i).
Note that item (E) above does not apply if the protest is accompanied by a statement that it is the first protest submitted in the application by the real party in interest, or if the protest is the first protest ever to be filed in the application. 37 CFR 1.291(b)(2).
A party obtaining knowledge of an application pending in the Office may file a protest against the application and may therein call attention to any facts within protestor’s knowledge which, in the protestor’s opinion, would make the grant of a patent on the application improper. The party should include with the protest whatever information the party is aware of that would facilitate identification of the application and matching the protest with the application. If there is insufficient information to identify the application, the protest may not be matched at all or not timely matched with the intended application to permit review by the examiner during prosecution of the application, in which case, the protest may not be entered and may be returned to the protestor where practical. If return is not practical, the protest will be discarded. 37 CFR 1.291(a). See MPEP § 1901.03.
A protestor does not, by the mere filing of a protest, obtain the “right” to argue the protest before the Office. Active participation by a protestor ends with the filing of the protest, and no further submission on behalf of the protestor will be considered, unless the submission is made pursuant to 37 CFR 1.291(c)(5). See 37 CFR 1.291(d). The USPTO will acknowledge the receipt of a protest in an original or a reissue application file , only if a self-addressed postcard is included with the protest (see MPEP § 1901.05). The question of whether or not a patent will issue is a matter between the applicant and the Office acting on behalf of the public.
1901.01 Who Can Protest [R-08.2012]
Any member of the public, including private persons, corporate entities, and government agencies, may file a protest under 37 CFR 1.291. A protest may be
filed by an attorney or other representative on behalf of an unnamed real party in interest. 37 CFR 1.291 does not require that the real party in interest be identified. Where a protest is not the first protest by the real party in interest, 37 CFR 1.291(b)(2) requires compliance with 37 CFR 1.291(c)(5). The requirements of 37 CFR 1.291(c)(5) cannot be avoided by multiple protests submitted by different people representing the same real party in interest.
1901.02 Information Which Can Be Relied on in Protest [R-08.2012]
Any information which, in the protestor’s opinion, would make the grant of a patent improper can be relied on in a protest under 37 CFR 1.291. While prior art documents, such as patents and publications, are most often the types of information relied on in protests, 37 CFR 1.291 is not limited to prior art documents. Protests may be based on any facts or information adverse to patentability. The content and substance of the protest are more important than whether prior art documents, or some other form of evidence adverse to patentability, are being relied on. The Office recognizes that when evidence other than prior art documents is relied on, problems may arise as to authentication and the probative value to assign to such evidence. However, the fact that such problems may arise, and have to be resolved, does not preclude the Office from considering such evidence, nor does it mean that such evidence cannot be relied on in a protest under 37 CFR 1.291. Information in a protest should be set forth in the manner required by 37 CFR 1.291(c).
The following are examples of the kinds of information, in addition to prior art documents, which can be relied on in a protest under 37 CFR 1.291:
(A) Information demonstrating that the inven-tion was publicly “known or used by others in this country... before the invention thereof by the applicant for patent” and is therefore barred under 35 U.S.C. 102(a) and/or 103.
(B) Information that the invention was “in public use or on sale in this country, more than 1 year prior to the date of the application for patent in the United States” (35 U.S.C. 102(b)).
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§ 1901.02PROTEST
(C) Information that the applicant “has abandoned the invention” (35 U.S.C. 102(c)) or “did not himself invent the subject matter sought to be patented” (35 U.S.C. 102(f)).
(D) Information relating to inventorship under 35 U.S.C. 102(g).
(E) Information relating to sufficiency of disclosure or failure to disclose best mode, under 35 U.S.C. 112.
(F) Any other information demonstrating that the application lacks compliance with the statutory requirements for patentability.
(G) Information indicating “fraud” or “violation of the duty of disclosure” under 37 CFR 1.56 may be the subject of a protest under 37 CFR 1.291. Protests raising fraud or other inequitable conduct issues will be entered in the application file, generally without comment on those issues. 37 CFR 1.291(e).
Different forms of evidence may accompany, or be submitted as a part of, a protest under 37 CFR 1.291. Conventional prior art documents such as patents and publications are the most common form of evidence. However, other forms of evidence can likewise be submitted. Some representative examples of other forms of evidence are litigation-related materials such as complaints, answers, depositions, answers to interrogatories, exhibits, transcripts of hearings or trials, court orders and opinions, stipulations of the parties, etc. Where only a portion of the litigation-related materials is relevant to the protest, protestors are encouraged to submit only the relevant portion(s).
In a protest based on an alleged public use or sale by, or on behalf of, the applicant or applicant’s assignee, evidence of such public use or sale may be submitted along with affidavits or declarations identifying the source(s) of the evidence and explaining its relevance and meaning. Such evidence might include documents containing offers for sale by applicant or applicant’s assignee, orders, invoices, receipts, delivery schedules, etc. The Office will make a decision as to whether or not public use or sale has been established based on the evidence the Office has available. If applicant denies the authenticity of the documents and/or evidence, or if the alleged public use and/or sale is by a party other
than applicant or applicant’s assignee, protestor may find it desirable or necessary to proceed via 37 CFR 1.292 (public use proceedings) rather than by a protest under 37 CFR 1.291.
While the forms in which evidence and/or information may be submitted with, or as a part of, a protest under 37 CFR 1.291, are not limited, protestors must recognize that such submissions may encounter problems such as establishing authenticity and/or the probative value to apply to the evidence. Obviously, the Office will have to evaluate each item of evidence and/or information submitted with a view as to both its authenticity and what weight to give thereto.
Information which is subject to a court-imposed protective or secrecy order may be submitted with, or as a part of, a protest under 37 CFR 1.291. Trade secret information which was obtained by a protestor through agreements with others can likewise be submitted. Such information, if submitted, will be treated in accordance with the guidelines set forth in MPEP § 724 and will be made public if a reasonable examiner would consider the information important in deciding whether to allow the application to issue as a patent.
1901.03 How Protest Is Submitted [R-08.2012]
A protest under 37 CFR 1.291 must be submitted in writing, must specifically identify the application to which the protest is directed by application number or serial number and filing date, and must include a listing of all patents, publications, or other information relied on; a concise explanation of the relevance of each listed item; an English language translation of all relevant parts of any non-English language patent, publication, or other information relied upon; and be accompanied by a copy of each patent, publication, or other document relied on. Protestors are encouraged to use form PTO/SB/08A and 08B “Information Disclosure Statement By Applicant” (or an equivalent form) when preparing a protest under 37 CFR 1.291, especially the listing enumerated under 37 CFR 1.291(c)(1). See MPEP § 609.04(a). In addition, the protest and any accompanying papers must either (1) reflect that a copy of the same has been served upon the applicant
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1901.03
or upon the applicant’s attorney or agent of record; or (2) be filed with the Office in duplicate in the event service is not possible.
It is important that any protest against a pending application specifically identify the application to which the protest is directed with the identification being as complete as possible. If possible, the following information should be placed on the protest:
(A) Name of Applicant(s).
(B) Application number (mandatory).
(C) Filing date of application.
(D) Title of invention.
(E) Group art unit number (if known).
(F) Name of examiner to whom the application is assigned (if known).
(G) Current status and location of application (if known).
(H) The word “ATTENTION:” followed by the area of the Office to which the protest is directed as set forth below.
In addition to the above information, the protest itself should be clearly identified as a “PROTEST UNDER 37 CFR 1.291.” If the protest includes exhibits or other attachments, these should also contain identifying information thereon in order to prevent them from becoming inadvertently separated and lost.
Any protest can be submitted by mail to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, and should be directed to the attention of the Director of the particular Technology Center in which the application is pending. If the protestor is unable to specifically identify the application to which the protest is directed, but, nevertheless, believes such an application to be pending, the protest should be directed to the attention of the Office of Petitions (using Mail Stop Petition), along with as much identifying data for the application as possible. Protests which do not adequately identify a pending patent application will be returned to the protestor or discarded, and will not be further considered by the Office.
Where a protest is directed to a reissue application for a patent which is involved in litigation, the outside envelope and the top right-hand portion of the protest should be marked with the words “REISSUE LITIGATION.” The notations preferably should be written in a bright color with a felt point marker. Any “REISSUE LITIGATION” protest mailed to the Office should be so marked and mailed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
INITIAL PROTEST SUBMISSION MUST BE COMPLETE
A protest must be complete and contain a copy of every document relied on by the protestor, whether the document is a prior art document, court litigation material, affidavit, or declaration, etc., because a protestor will not be given an opportunity to supplement or complete any protest which is incomplete. Active participation by protestor ends with the filing of the initial protest, as provided in 37 CFR 1.291( d), and no further submission on behalf of protestor will be acknowledged or considered, unless the submission is made pursuant to 37 CFR 1.291(c)(5). 37 CFR 1.291(c)(5) requires that any further submission by the same party in interest must be directed to significantly different issue(s) than those raised in the earlier protest. 37 CFR 1.291(c)(5) requires (A) an explanation as to how the issue(s) raised are significantly different, (B) why the different issue(s) were not presented in the earlier protest, and (C) the processing fee under 37 CFR 1.17(i). Submissions which will not be entered in the application file include further submissions in violation of 37 CFR 1.291 by which protestor merely seeks to participate in the examination process. For example, mere arguments relating to an Office action or an applicant’s reply would not qualify as a new protest. Likewise, additional comments seeking to bring in further or even new data or information with respect to an issue previously raised by protestor would not qualify as a new protest. The Office will not add these arguments or comments to the original protest and will not enter them in the application file.
Even new protests which also argue Office actions or replies or any matter beyond the new issue should not be accepted. Improper protests will be returned
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§ 1901.03PROTEST
to the protestor, or discarded, at the option of the Office. 37 CFR 1.291(g). While improper protests will be returned or discarded, a new protest by an earlier protestor will be proper and can be entered if it complies with 37 CFR 1.291(c)(5).
As indicated in 37 CFR 1.291( c)(3), a protest must be accompanied by a copy of each prior art document relied on in order to ensure consideration by the examiner, although a protest without copies of prior art documents will not necessarily be ignored. While a protest without copies of documents will not necessarily be ignored, the submission of such documents with the protest will obviously expedite consideration of the documents, which consideration might not otherwise occur. Further, some documents which are available to protestor may not be otherwise available to the Office.
Every effort should be made by a protestor to serve a copy of the protest upon the attorney or agent of record or upon the applicant if no attorney or agent is of record. Of course, the copy served upon applicant or upon applicant’s attorney or agent should be a complete copy including a copy of each prior art or other document relied on in the same manner as required by 37 CFR 1.291(c)(3) for the Office copy. The protest filed in the Office should reflect, by an appropriate “Certificate of Service,” that service has been made as provided in 37 CFR 1.291( b). Only in those instances where service is not possible should the protest be filed in duplicate in order that the Office can attempt service.
1901.04 When Should the Protest Be Submitted [R-08.2012]
Except where a protest is accompanied by the written consent of the applicant as provided in 37 CFR 1.291(b)(1), a protest under 37 CFR 1.291(a) must be submitted prior to the date the application was published under 37 CFR 1.211 or the mailing of a notice of allowance under 37 CFR 1.311, whichever occurs first, and the application must be pending when the protest and application file are brought before the examiner in order to be ensured of consideration. As a practical matter, any protest should be submitted as soon as possible after the protestor becomes aware of the existence of the application to which the protest is to be directed. By
submitting a protest early in the examination process, i.e., before the Office acts on the application if possible, the protestor ensures that the protest will receive maximum consideration and will be of the most benefit to the Office in its examination of the application. A protest submitted after the mailing of the notice of allowance will not knowingly be ignored if the protest includes prior art documents which clearly anticipate or clearly render obvious one or more claims. However, the likelihood of consideration of a protest decreases as the patent date approaches.
A protest filed after final rejection and complying with all the requirements of 37 CFR 1.291 will be considered if the application is still pending when the protest and application are provided to the examiner. However, prosecution will not ordinarily be reopened after final rejection if the prior art cited in the protest is merely cumulative of the prior art cited in the final rejection.
A protest filed in a reissue application is not a “form of preissuance opposition to the grant of a patent” since the patent to be reissued has already been granted. Thus, a protest may be filed in a reissue application throughout the pendency of the reissue application prior to the date of mailing of a notice of allowance subject to the timing constraint of the examination. A protest with regard to a reissue application should, however, be filed within the 2-month period following announcement of the filing of the reissue application in the Official Gazette. See MPEP § 1441.01. If, for some reason, the protest of the reissue application cannot be filed within the 2-month period provided by MPEP § 1441, the protest can be submitted at a later time, but the protestor must be aware that reissue applications are “special” and a later filed protest may be received after action by the examiner. Any request by a protestor in a reissue application for an extension of the 2-month period following the announcement in the Official Gazette , and a delay of the examination until the extended period expires, will be considered only if filed in the form of a petition under 37 CFR 1.182 and accompanied by the petition fee set forth in 37 CFR 1.17( f). The petition under 37 CFR 1.182 and the petition fee must be filed prior to the expiration of the 2-month period provided by MPEP § 1441. The petition must explain why the additional
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1901.04
time is necessary and the nature of the protest intended. A copy of such petition must be served upon applicant in accordance with 37 CFR 1.248. The petition should be directed to the appropriate Technology Center (TC) which will forward the petition to the Office of Patent Legal Administration for decision. Any such petition will be critically reviewed as to demonstrated need before being granted since the delay of examination of a reissue application of another party is being requested. Accordingly, the requests should be made only where necessary, for the minimum period required, and with a justification establishing the necessity for the extension.
Where a protest of a reissue application is submitted after the 2-month period, no petition for entry of the protest under 37 CFR 1.182 is needed with respect to the protest being submitted after the 2 months, unless a final rejection has been issued or prosecution on the merits has been closed for the reissue application. See MPEP § 1441.01. In situations where a final rejection has been issued, or prosecution on the merits has been otherwise closed, a petition under 37 CFR 1.182 along with the petition fee under 37 CFR 1.17(f) must be submitted with the protest. The petition must include an explanation as to why the additional time was necessary and identify the nature of the protest submitted. A copy of the petition must be served upon the applicant in accordance with 37 CFR 1.248. The petition should be directed to the Office of Petitions.
If the protest is a “REISSUE LITIGATION” protest, it is particularly important that it be filed early if protestor wishes it considered at the time the Office first acts on the application. Protestors should be aware that the Office will entertain petitions from reissue applicants under 37 CFR 1.182 to waive the 2-month delay period of MPEP § 1441 in appropriate circumstances. Accordingly, protestors to reissue applications cannot automatically assume that the
full 2-month delay period of MPEP § 1441 will always be available.
1901.05 Initial Office Handling and Acknowledgment of Protest [R-08.2012]
I. PROTESTS REFERRED TO EXAMINER
Protests filed against pending applications will be referred to the examiner having charge of the application involved. 37 CFR 1.291(a). A protest specifically identifying the application to which it is directed will be entered in the application file, if (A) the protest is accompanied by a written consent of the applicant or is submitted prior to the publication of the application under 37 CFR 1.211 or the mailing of a notice of allowance under 37 CFR 1.311, whichever occurs first, (see MPEP § 1901.04) ,(B) a copy of the protest has been served on applicant in accordance with 37 CFR 1.248, or a duplicate copy is filed with the Office in the event service is not possible , and (C) the protest complies with the content requirements of 37 CFR 1.291(c). 37 CFR 1.291( b).
A protest where the application is specifically identified, which is submitted in conformance with 37 CFR 1.291(a) , (b), and (c), will be considered by the Office if the protest is matched with the application in time to permit review by the examiner during prosecution.
II. PROTEST DOES NOT INDICATE SERVICE
If the protest filed in the Office does not, however, indicate service on applicant or applicant’s attorney or agent, and is not filed in duplicate, then the Office may undertake to determine whether or not service has been made by contacting applicant or applicant’s attorney or agent by telephone or in writing to ascertain if service has been made. If service has not been made and no duplicate has been filed, then the Office may request protestor to file such a duplicate before the protest is referred to the examiner. Alternatively, if the protest involves only a few pages, the Office may, in its sole discretion, elect to reproduce the protest rather than delay referring it to the examiner. If duplicate protest papers are mailed to applicant or applicant’s attorney or agent by the Office, the application file should reflect that
March 20141900-7
§ 1901.05PROTEST
fact, either by a letter transmitting the protest or, if no transmittal letter is used, simply by an appropriate notation in the “Contents” section of the application file history.
III. ACKNOWLEDGMENT OF PROTEST
A protestor in an original or reissue application will not receive any communications from the Office relating to the protest, or to the application, other than the return of a self-addressed postcard which protestor may include with the protest in order to receive an acknowledgment that the protest has been received by the Office. 37 CFR 1.291( d). Where a self-addressed postcard is included with the protest, the Office will acknowledge a protest by return of the self-addressed postcard prior to the protest’s entry into the application file or return to the protestor, as appropriate. Thus, it is to be noted that the receipt of the self-addressed postcard from the Office is not an indication that the protest complies with 37 CFR 1.291.
IV. APPLICATIONS AND STATUS THEREOF MAINTAINED IN CONFIDENCE
The postcard acknowledging receipt of a protest in other than a reissue application will not and must not indicate whether such application in fact exists or the status of any such application. Office employees must exercise care to ensure that matters relating to applications are not discussed with protestor or communicated in writing to protestor. Original applications are, of course, required by 35 U.S.C. 122 to be kept in confidence unless published pursuant to 35 U.S.C. 122(b) or are available to the public pursuant to 37 CFR 1.14(a)(1)(iv), (v), or (vi). Thus, unless a protestor has been granted access to an original application, the protestor is not entitled to obtain from the Office any information concerning the same, including the mere fact that such an application exists. Petitions for access to patent applications with the exception of applications involved in or related to a proceeding before the Board of Patent Appeals or Interferences are decided by the Office of Petitions pursuant to delegation contained in MPEP § 1002.02(b). Reissue applications filed on, or after, March 1, 1977 are pursuant to 37 CFR 1.11(b) “open to inspection by the public.” After an application is published
pursuant to 35 U.S.C. 122(b), the application file contents become available to the public over the Internet through the Office’s public Patent Application Information Retrieval (PAIR) website. In addition, a copy of the file content of the published application may be requested by filing a written request under 37 CFR 1.14(a)(1) including the fee as set forth in 37 CFR 1.19(b).
The Office will communicate with the applicant regarding any protest entered in an application file and may require the applicant to supply information pursuant to 37 CFR 1.291( f), including replies to specific questions raised by the protest, in order for the Office to decide any issues raised thereby. Under 37 CFR 1.291(f), the examiner can require the applicant to reply to the protest and answer specific questions raised by the protest.
1901.06 Examiner Treatment of Protest [R-08.2012]
Office practice as defined in 37 CFR 1.291(a) gives recognition to the value of the written protests in avoiding the issuance of invalid patents. However, the fact that one or more protests has been filed in an application, whether the application is an original application or a reissue application, does not relieve the examiner from conducting a normal examination on the merits, including the required search. Evidence submitted in a protest will be considered on the same basis as other ex parte evidence. In re Reuter, 651 F.2d 751, 758, 210 USPQ 249, 255 (CCPA 1981).
I. INITIAL REVIEW
An examiner initially receiving a protest will immediately review the same for the following:
(A) To ensure that either the protest or the application file indicates that a copy of the protest has been served on applicant or applicant’s attorney or agent. If a copy is not indicated as having been served on applicant or applicant’s attorney and is not filed in duplicate, then the examiner should undertake to determine whether or not service has been made by contacting applicant or applicant’s attorney or agent, but not the protestor. If it has, this should be noted on the protest or on the application
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1901.06
file. If service has not been made, the protest and application file should be brought to the attention of the TC Director for appropriate action. See MPEP § 1901.05.
(B) A protest raising issues of “fraud,” “inequitable conduct,” or “violation of duty of disclosure” will be entered in the application file, generally without comments on those issues.
If a protest is filed in a reissue application and the reissue application is related to a patent involved in a pending interference proceeding, such application should be referred to the Office of Patent Legal Administration before considering the protest and acting on the applications.
II. PERIOD FOR COMMENTS BY APPLICANT
If the primary examiner’s initial review reveals that the protest is ready for consideration during the examination, the examiner may nevertheless consider it desirable, or necessary, to obtain applicant’s comments on the protest before further action. In such situations, the examiner will offer applicant an opportunity to file comments within a set period, usually 1 month, unless circumstances warrant a longer period.
Form paragraph 19.01 can be used to offer applicant an opportunity to file comments on the protest.
¶ 19.01 Period for Comments on Protest by Applicant
A protest against issuance of a patent based upon this application has been filed under 37 CFR 1.291(a) on [1], and a copy [2]. Any comments or reply applicant desires to file before consideration of the protest must be filed by [3].
Examiner Note:
1. Applicant is normally given one month to submit any comments, unless circumstances in the case would warrant a longer period.
2. A copy of this Office action is NOT sent to the protestor. See 37 CFR 1.291(d).
3. In bracket 2, insert either-- has been served on applicant-- or-- is attached hereto--.
Where necessary or desirable to decide questions raised by the protest, under 37 CFR 1.291( f) the primary examiner can require the applicant to reply to the protest and answer specific questions raised by the protest. The primary examiner cannot require
a reply to questions relating to “fraud,” “inequitable conduct,” or “violation of the duty of disclosure” since those issues are generally not commented on by the Office. Any questions directed to applicant by the primary examiner must be limited to seeking answers reasonably necessary in order for the primary examiner to decide questions raised by the protest and which are before the primary examiner for decision. The primary examiner is not permitted, under 37 CFR 1.291( f), to seek answers to questions which are not before the primary examiner for decision. The primary examiner must use care in requiring information from applicant pursuant to 37 CFR 1.291(f) to ensure that the required information is necessary to the decision to be made.
Form paragraph 19.02 can be used to require additional information from applicant regarding issues raised by the protest.
¶ 19.02 Requirement for Information
The protest under 37 CFR 1.291 filed on [1] has been considered. In order to reach a full and proper consideration of the issues raised therein, it is necessary to obtain additional information from applicant regarding these issues. In particular [2]. The failure to reply to this requirement for information within ONE MONTH or THIRTY DAYS, whichever is longer, of the mailing date of this requirement will result in abandonment of the application. This time period may be extended under the provisions of 37 CFR 1.136.
Examiner Note:
While the examiner normally should not need further information from applicant, this form paragraph may be used to request specific additional information from the applicant.
III. PROTESTOR NOT PERMITTED TO COMPLETE INCOMPLETE PROTEST
A protestor may not complete an incomplete protest, nor further participate in, or inquire as to the status of, any Office proceedings relating to the initial protest. 37 CFR 1.291. The examiner must not, therefore, communicate with protestor in any way and will not consider a later submission by protestor, unless such submission complies with 37 CFR 1.291(c)(5) (see MPEP § 1901.07). Improper protests will be returned to the protestor, or discarded, at the option of the Office. 37 CFR 1.291(g).
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§ 1901.06PROTEST
IV. TREATMENT OF TIMELY SUBMITTED PROTEST
If the protest has been timely submitted and is entered into the record of the application in time to permit review by the examiner during prosecution, the examiner must consider (A) each of the prior art or other documents submitted in conformance with 37 CFR 1.291(c) and any discussion of such documents in the protest, and (B) any non-prior art issue(s) raised by the protest, and the information supplied as to same. If the protest has been timely submitted in accordance with 37 CFR 1.291(b) but is not timely matched with the application to permit review by the examiner during prosecution, due to inadequate identification, the protest may be returned to the protestor where practical, or if return is not practical, discarded. 37 CFR 1.291(a).
At least those prior art documents which the examiner relies on in rejecting claims will be made of record by means of form PTO-892, unless the protestor has listed such prior art or other documents on form PTO/SB/08A and 08B (or an acceptable substitute as provided by MPEP § 609.04(a)), in which case the examiner will place the examiner’s initials adjacent to the citations in the boxes provided on the form PTO/SB/08A and 08B (see MPEP § 609.04(a)). Where the prior art or other documents have not been cited on a PTO-892, or listed and initialed on a PTO/SB/08A and 08B, the examiner will place a notation in the protest paper adjacent to the reference to the documents. The notation should include the examiner’s initials and the term “checked.” The examiner will also indicate in the next Office action that all documents submitted have been considered.
It is not intended that the examiner be overly technical in construing 37 CFR 1.291( c) and refuse consideration of a protest because it does not include all of the contents enumerated by 37 CFR 1.291( c). The examiner should consider the protest to the extent it is helpful even though one or more of the listed items is omitted.
Where prior art or other documents are considered by the examiner, even though not submitted in full conformance with 37 CFR 1.291( c), the examiner must , for all those documents considered but not
listed on the form PTO-892, (A) mark “checked” and place the examiner’s initials beside each citation, or (B) where all the documents cited on a given page have been considered, mark “All checked” and place the examiner’s initials in the left-hand margin beside the citations. See MPEP § 609.04(a). Where prior art or other documents are listed by the protestor on form PTO/SB/08A and 08B, even though not submitted in full conformance with 37 CFR 1.291( c), the examiner must , for all those documents considered, place the examiner’s initials adjacent to the citations in the boxes provided on the form PTO/SB/08A and 08B. Where the prior art or other documents are listed by the protestor on form PTO/SB/08A and 08B, but are not submitted in full compliance with 37 CFR 1.291( c), the examiner must , for all those documents not considered, draw a line through the citation on the form PTO/SB/08A and 08B. See MPEP § 609.05(a). If a protest entered in an application file complies with 37 CFR 1.291( c), the examiner is required to fully consider all the issues, except for any issues of “fraud,” “inequitable conduct,” or “duty of disclosure” raised by the protestor, and clearly state the examiner’s position thereon in detail. 37 CFR 1.291(e).
V. PROTEST FILED AFTER ALLOWANCE OR THE PUBLICATION OF THE APPLICATION
A. Without the Written Consent of Applicant
If the protest is submitted after the publication of the application under 37 CFR 1.211 or the mailing of a notice of allowance under 37 CFR 1.311, whichever occurs first, and is not accompanied by the written consent of the applicant, it should not be entered in the application file. The applicant should be notified that the protest is untimely and that it is not being entered in the application file. The handling of the protest will vary depending on the particular situation as follows.
1. Service of Copy Included
Where the protest includes an indication of service of copy on the applicant, the original protest should be discarded.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1901.06
2. Service of Copy Not Included
Where the protest does not include an indication of service, the duplicate copy of the protest (if present) should be discarded and the original protest papers should be sent to the applicant along with the notification of nonentry.
B. With the Written Consent of Applicant
37 CFR 1.291(b)(1) provides that a protest may be filed at any time if it is accompanied by the written consent of the applicant to the filing of the protest being submitted as it specifically excludes the timeliness requirements of 37 CFR 1.291(b). While 37 CFR 1.291(b)(1) ensures that any (adequately identified) protest filed with the written consent of the applicant will be entered into the record of the intended application (if there is also compliance with 37 CFR 1.291(c)), 37 CFR 1.291(b)(1) makes clear that the protest must be matched with the intended application during prosecution to ensure consideration by the examiner. For example, where the protest is submitted close to publication of the patent, it is doubtful that the examiner would have time to review the protest, although the protest would be made of record. Even if not timely matched with the intended application, the examiner may still decide to consider the protest should there be sufficient time to do so.
35 U.S.C. 122(c) permits the filing of a protest in an application after the application has been published if there is express written consent of the applicant. In order to file protests after publication of patent applications, 37 CFR 1.291(b)(1) requires that the protest after publication of an application be accompanied by the written consent of the applicant. The written consent should indicate that applicant is consenting to the specific protest being submitted. Applicant may choose to provide a blanket consent to: any protests filed; protests filed by a particular real party in interest; a single protest by a particular party in interest (e.g., a protest that party Smith has informed me that he will be submitting during the
week of November 26th); a protest involving a particular item of prior art; or a particular protest that has been reviewed and applicant is willing to have considered by the Office. Where applicant consents to a protest, the Office will abide by the
terms of the consent, and will enter the protest only if (A) the protest submitted is within the scope of the consent, and (B) the protest complies with the requirements of 37 CFR 1.291(b) (other than the timeliness requirement) and (c). If a properly consented to protest does not comply with some of the requirements of 37 CFR 1.291(b) or (c), the Office may choose to consider a piece of prior art permitted under the terms of the consent.
VI. COPIES OF DOCUMENTS NOT SUBMITTED
If the protest is not accompanied by a copy of each prior art or other document relied on as required by 37 CFR 1.291( c), the examiner will consider the documents submitted. The protestor cannot be assured that the examiner will consider the missing document(s). However, if the examiner does so, the examiner will either cite the document on form PTO-892 or place a notation in the protest paper adjacent to the reference to the document which will include the examiner’s initials and the term “checked.” If the examiner considered a document not submitted, the next Office action will so indicate.
VII. CONSIDERATION OF PROTESTOR’S ARGUMENTS
In view of the value of written protests, the examiner must give careful consideration to the points and arguments made on behalf of the protestor. Any Office action by the examiner treating the merits of a timely submitted protest complying with 37 CFR 1.291(c) must specifically consider and make evident by detailed reasoning the examiner’s position as to the major arguments and points raised by the protestor. While it is not necessary for the examiner to respond to each and every minute argument or point, the major arguments and points must be specifically covered. The examiner will not, under any circumstances, treat or discuss those arguments or points directed to “fraud,” “inequitable conduct,” or “violation of duty of disclosure.” 37 CFR 1.291(e).
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§ 1901.06PROTEST
VIII. RESULTS OF CONSIDERATION REPORTED TO TECHNOLOGY CENTER (TC) DIRECTOR
After the examiner has considered the protest, the examiner will report the results of such consideration to the TC Director.
1901.07 Protestor Participation [R-08.2012]
37 CFR 1.291 does not permit protestor, or any other member of the public, to contact or receive information from the Office as to the disposition or status of the protest, or the application to which it is directed, or to participate in any Office proceedings relating to the protest. The Office does not serve copies of Office actions or other documents mailed by the Office on protestors, and does not require applicants to serve copies of papers filed with the Office on protestors. Furthermore, a protestor is not permitted to participate in interviews, appeal a decision by the examiner adverse to the protestor to the Board of Patent Appeals and Interferences, or participate in an appeal by applicant. The disposition of the protest will be an ex parte matter between the Office and the applicant. Where protestor has access to an application, for example, a reissue application which is open to the public and may be inspected under 37 CFR 1.11, the proceedings may thereby be monitored.
Under 37 CFR 1.291( f), applicant may be required by the Office to reply to a protest. Any reply thereto would be ex parte and would not be served on the protestor.
1901.07(a) Filing of Multiple Papers Relating to Same Issues [R-08.2012]
Under 37 CFR 1.291( d), protestor participation ends with the filing of the initial protest, and protestor will not be allowed to complete any protest that is incomplete. Effective November 22, 2004, 37 CFR 1.291(c) was amended to no longer permit the submission of additional (cumulative) prior art by the same real party in interest. Multiple piecemeal protests (raising a slightly different issue in each protest submission) in a single application by the same real party in interest are not permitted. After the filing of the initial protest, no further submission of prior art by the same real party in interest will be
considered, except for new, non-cumulative prior art submitted under the conditions of 37 CFR 1.291(c)(5). 37 CFR 1.291(c)(5) requires that a second or subsequent protest by the same real party in interest include:
(A) an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier;
(B) an explanation as to why the significantly different issue(s) were not earlier presented; and
(C) the processing fee under 37 CFR 1.17(i).
Significantly different issue(s) may be raised by the submission of new, non-cumulative prior art or other information not previously made of record. Additional comments seeking to bring in further or even new data or information with respect to an issue previously raised by the same real party in interest would not qualify as a significantly different issue. By imposing requirements for second or subsequent protests on “the same real party in interest,” the requirements of 37 CFR 1.291(c)(5) cannot be avoided by multiple protests submitted by different people representing the same real party in interest.
Second or subsequent protest by the same real party in interest that do not comply with 37 CFR 1.291(c)(5) will not be entered in the intended application and will be returned to the protestor, or discarded, at the option of the Office. 37 CFR 1.291(g).
An examiner will consider a second or subsequent protest filed on behalf of the same real party in interest (subject to the time frames set forth in 37 CFR 1.291(b), the caveat that the protest can be timely matched and considered prior to the issuance of the patent, and the content requirements of 37
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1901.07
CFR 1.291(c)(1) to (4)), if the second or subsequent protest complies with 37 CFR 1.291(c)(5).
1902-1905 [Reserved]
1906 Supervisory Review of an Examiner’s Decision Adverse to Protestor [R-08.2012]
As pointed out in MPEP § 1901.07, a protestor cannot appeal to the Board of Patent Appeals and Interferences from an adverse decision of the examiner. Further, a decision by the examiner adverse to a protestor is final, and under the restricted protestor participation permitted under 37 CFR 1.291( d) is not petitionable to the Director.
1907 Unauthorized Participation by Protestor [R-08.2012]
Office personnel must exercise care to ensure that substantive matters relating to the application are not discussed ex parte with protestor or communicated in writing ex parte to protestor. The examiner must not communicate in any manner with protestor. See 37 CFR 1.291( d).
1908-1919 [Reserved]
1920 Citation of Prior Art Under 37 CFR 1.501(a) [R-08.2012]
37 CFR 1.501(a) permits any person at any time during the period of enforceability of a patent to cite to the Office, in writing, prior art consisting of patent and printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability of any claim(s) of the patent. See MPEP § 2202 - § 2208.
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§ 1920PROTEST
Chapter 2000 Duty of Disclosure
[Reserved]2000 Introduction2000.01
Duty of Disclosure, Candor, and Good Faith
2001
Who Has Duty To Disclose2001.01 [Reserved]2001.02 To Whom Duty of Disclosure Is Owed
2001.03
Information Under 37 CFR 1.56(a)2001.04 Materiality Under 37 CFR 1.56(b)2001.05 Sources of Information2001.06
Prior Art Cited in Related Foreign Applications
2001.06(a)
Information Relating to or From Copending United States Patent Applications
2001.06(b)
Information From Related Litigation
2001.06(c)
Information Relating to Claims Copied From a Patent
2001.06(d)
Disclosure — By Whom and How Made2002 By Whom Made2002.01 Must be in Writing2002.02
Disclosure __ When Made2003 Disclosure After Patent Is Granted2003.01
Aids to Compliance With Duty of Disclosure
2004
Comparison to Requirement for Information
2005
[Reserved]2006-2009 Office Handling of Duty of Disclosure/Inequitable Conduct Issues
2010
[Reserved]2011 Reissue Applications Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure
2012
Collateral Estoppel2012.01 Protests Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure
2013
Duty of Disclosure in Reexamination Proceedings
2014
[Reserved]2015 Fraud, Inequitable Conduct, or Violation of Duty of Disclosure Affects All Claims
2016
[Reserved]2017-2021 [Reserved]2022
[Reserved]2022.01-2022.04 Determination of “Error Without Any Deceptive Intention”
2022.05
[ Editor Note : This chapter was not substantively revised for the Ninth Edition of the MPEP. Each section has a revision indicator of “[R-08.2012],” meaning that the section as reproduced in this Edition is the version in force in August 2012 with the following exceptions: 1) As a result of the publication process, form paragraphs reproduced in this chapter reflect the text used by examiners effective November 2013 rather than those in force in August 2012; 2) The marks indicating added or deleted text from prior revisions have been removed; and 3) The notation “[Reserved]” has been added for section numbers previously missing in the hierarchy (i.e., section numbers that were never used or no longer have text). See the ninth revision of the Eighth Edition of the MPEP published August 2012 as posted on the USPTO Web site on the MPEP Archives page (http://www.uspto.gov/web/offices/ pac/mpep/old/index.htm) for the text of form paragraphs in force in August 2012 and the prior revision marks. ]
2000 [Reserved]
2000.01 Introduction [R-08.2012]
This Chapter deals with the duties owed toward the U.S. Patent and Trademark Office by the inventor and every other individual who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor or the inventor’s assignee. These duties, of candor and good faith and disclosure, have been codified in 37 CFR 1.56, as promulgated pursuant to carrying out the duties of the Director under Sections 2, 3, 131, and 132 of Title 35 of the United States Code.
2001 Duty of Disclosure, Candor, and Good Faith [R-08.2012]
37 CFR 1.56 Duty to disclose information material to patentability.
(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose
March 20142000-1
information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. The Office encourages applicants to carefully examine:
(1) Prior art cited in search reports of a foreign patent office in a counterpart application, and
(2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.
(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.
(3) A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the application; and
(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.
(d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
(e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.
37 CFR 1.56 defines the duty to disclose information to the Office.
2001.01 Who Has Duty To Disclose [R-08.2012]
37 CFR 1.56 Duty to disclose information material to patentability.
*****
(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the application; and
(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.
*****
Individuals having a duty of disclosure are limited to those who are “substantively involved in the preparation or prosecution of the application.” This is intended to make clear that the duty does not extend to typists, clerks, and similar personnel who assist with an application.
The word “with” appears before “the assignee” and “anyone to whom there is an obligation to assign” to make clear that the duty applies only to individuals, not to organizations. For instance, the duty of disclosure would not apply to a corporation or institution as such. However, it would apply to individuals within the corporation or institution who were substantively involved in the preparation or prosecution of the application, and actions by such
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2001.01
individuals may affect the rights of the corporation or institution.
2001.02 [Reserved]
2001.03 To Whom Duty of Disclosure Is Owed [R-08.2012]
37 CFR 1.56(a) states that the “duty of candor and good faith” is owed “in dealing with the Office” and that all associated with the filing and prosecution of a patent application have a “duty to disclose to the Office” material information. This duty “in dealing with” and “to” the Office extends, of course, to all dealings which such individuals have with the Office, and is not limited to representations to or dealings with the examiner. For example, the duty would extend to proceedings before the Board of Patent Appeals and Interferences and the Office of the Commissioner for Patents.
2001.04 Information Under 37 CFR 1.56(a) [R-08.2012]
37 CFR 1.56 Duty to disclose information material to patentability.
(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. The Office encourages applicants to carefully examine:
(1) Prior art cited in search reports of a foreign patent office in a counterpart application, and
(2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.
*****
The language of 37 CFR 1.56 (and 37 CFR 1.555) has been modified effective March 16, 1992 to emphasize that there is a duty of candor and good faith which is broader than the duty to disclose material information. 37 CFR 1.56 further states that “no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.”
The Office strives to issue valid patents. The Office has both an obligation not to unjustly issue patents and an obligation not to unjustly deny patents. Innovation and technological advancement are best served when an inventor is issued a patent with the scope of protection that is deserved. The rules as adopted serve to remind individuals associated with the preparation and prosecution of patent applications of their duty of candor and good faith in their dealings with the Office, and will aid the Office in receiving, in a timely manner, the information it needs to carry out effective and efficient examination of patent applications.
The amendment to 37 CFR 1.56 was proposed to address criticism concerning a perceived lack of certainty in the materiality standard. The rule as promulgated will provide greater clarity and hopefully minimize the burden of litigation on the question of inequitable conduct before the Office, while providing the Office with the information necessary for effective and efficient examination of patent applications. 37 CFR 1.56 has been amended to present a clearer and more objective definition of what information the Office considers material to patentability. The rules do not define fraud or inequitable conduct which have elements both of materiality and of intent.
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The definition of materiality in 37 CFR 1.56 does not impose substantial new burdens on applicants, but is intended to provide the Office with the information it needs to make a proper and independent determination on patentability. It is the patent examiner who should make the determination after considering all the facts involved in the particular case.
37 CFR 1.56 states that each individual associated with the filing and prosecution of a patent application has a duty to disclose all information known to that individual to be material to patentability as defined in the section. Thus, the duty applies to contemporaneously or presently known information. The fact that information was known years ago does not mean that it was recognized that the information is material to the present application.
The term “information” as used in 37 CFR 1.56 means all of the kinds of information required to be disclosed and includes any information which is “material to patentability.” Materiality is defined in 37 CFR 1.56(b) and discussed herein at MPEP § 2001.05. In addition to prior art such as patents and publications, 37 CFR 1.56 includes, for example, information on enablement, possible prior public uses, sales, offers to sell, derived knowledge, prior invention by another, inventorship conflicts, and the like. “Materiality is not limited to prior art but embraces any information that a reasonable examiner would be substantially likely to consider important in deciding whether to allow an application to issue as a patent.” Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1234, 66 USPQ2d 1481, 1486 (Fed. Cir. 2003) (emphasis in original) (finding article which was not prior art to be material to enablement issue).
The term “information” is intended to be all encompassing, similar to the scope of the term as discussed with respect to 37 CFR 1.291(a) (see MPEP § 1901.02). 37 CFR 1.56(a) also states: “The Office encourages applicants to carefully examine: (1) prior art cited in search reports of a foreign patent office in a counterpart application, and (2) the closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained
therein is disclosed to the Office.” The sentence does not create any new duty for applicants, but is placed in the text of the rule as helpful guidance to individuals who file and prosecute patent applications.
It should be noted that the rules are not intended to require information favorable to patentability such as, for example, evidence of commercial success of the invention. Similarly, the rules are not intended to require, for example, disclosure of information concerning the level of skill in the art for purposes of determining obviousness.
37 CFR 1.56(a) states that the duty to disclose information exists until the application becomes abandoned. The duty to disclose information, however, does not end when an application becomes allowed but extends until a patent is granted on that application. The rules provide for information being considered after a notice of allowance is mailed and before the issue fee is paid (37 CFR 1.97(d)) (see MPEP § 609, paragraph B(3)). The rules also provide for an application to be withdrawn from issue
(A) because one or more claims are unpatentable (37 CFR 1.313(c)(1));
(B) for express abandonment so that information may be considered in a continuing application before a patent issues (37 CFR 1.313(c)(3)); or
(C) for consideration of a request for continued examination (RCE) under 37 CFR 1.114 (37 CFR 1.313(a) and (c)(2)). Note that RCE practice does not apply to utility or plant applications filed before June 8, 1995 or to design applications. See MPEP § 706.07(h).
See MPEP § 1308 for additional information pertaining to withdrawal of an application from issue.
In a continuation-in-part application, individuals covered by 37 CFR 1.56 have a duty to disclose to the Office all information known to be material to patentability which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application. See 37 CFR 1.56(e).
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37 CFR 1.56 provides that the duty of disclosure can be met by submitting information to the Office in the manner prescribed by 37 CFR 1.97 and 1.98 . See MPEP § 609. Applicants are provided certainty as to when information will be considered, and applicants will be informed when information is not considered. Note, however, that the Office may order or conduct reexamination proceedings based on prior art that was cited/considered in any prior related Office proceeding. See MPEP § 2242 and MPEP § 2258.01 .
The Office does not believe that courts should, or will, find violations of the duty of disclosure because of unintentional noncompliance with 37 CFR 1.97 and 1.98. If the noncompliance is intentional, however, the applicant will have assumed the risk that the failure to submit the information in a manner that will result in its being considered by the examiner may be held to be a violation.
The Office does not anticipate any significant change in the quantity of information cited to the Office. Presumably, applicants will continue to submit information for consideration by the Office in applications rather than making and relying on their own determinations of materiality. An incentive remains to submit the information to the Office because it will result in a strengthened patent and will avoid later questions of materiality and intent to deceive. In addition, the new rules will actually facilitate the filing of information since the burden of submitting information to the Office has been reduced by eliminating, in most cases, the requirement for a concise statement of the relevance of each item of information listed in an information disclosure statement. It should also be noted that 37 CFR 1.97(h) states that the filing of an information disclosure statement shall not be considered to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in 37 CFR 1.56.
2001.05 Materiality Under 37 CFR 1.56(b) [R-08.2012]
37 CFR 1.56 Duty to disclose information material to patent ability.
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(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
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Under the rule, information is not material unless it comes within the definition of 37 CFR 1.56(b)(1) or (2). If information is not material, there is no duty to disclose the information to the Office. Thus, it is theoretically possible for applicants to draft claims and a specification to avoid a prima facie case of obviousness over a reference and then to be able to withhold the reference from the examiner. The Office believes that most applicants will wish to submit the information, however, even though they may not be required to do so, to strengthen the patent and avoid the risks of an incorrect judgment on their part on materiality or that it may be held that there was an intent to deceive the Office.
2001.06 Sources of Information [R-08.2012]
All individuals covered by 37 CFR 1.56 (reproduced in MPEP § 2001.01) have a duty to disclose to the U.S. Patent and Trademark Office all material information they are aware of regardless of the source of or how they become aware of the information. See Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 267 F.3d 1370, 1383, 60 USPQ2d 1482, 1490 (Fed. Cir. 2001) (“Once an attorney, or an applicant has notice that information exists that appears material and questionable, that person cannot ignore that notice in an effort to avoid his or her duty to disclose.”). Materiality controls whether information must be disclosed to the Office, not the
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circumstances under which or the source from which the information is obtained. If material, the information must be disclosed to the Office. The duty to disclose material information extends to information such individuals are aware of prior to or at the time of filing the application or become aware of during the prosecution thereof.
Such individuals may be or become aware of material information from various sources such as, for example, co-workers, trade shows, communications from or with competitors, potential infringers, or other third parties, related foreign applications (see MPEP § 2001.06(a)), prior or copending United States patent applications (see MPEP § 2001.06(b)), related litigation (see MPEP § 2001.06(c)) and preliminary examination searches.
2001.06(a) Prior Art Cited in Related Foreign Applications [R-08.2012]
Applicants and other individuals, as set forth in 37 CFR 1.56, have a duty to bring to the attention of the Office any material prior art or other information cited or brought to their attention in any related foreign application. The inference that such prior art or other information is material is especially strong where it has been used in rejecting the same or similar claims in the foreign application or where it has been identified in some manner as particularly relevant. See Gemveto Jewelry Co. v. Lambert Bros., Inc., 542 F. Supp. 933, 216 USPQ 976 (S.D. N.Y. 1982) wherein a patent was held invalid or unenforceable because patentee’s foreign counsel did not disclose to patentee’s United States counsel or to the Office prior art cited by the Dutch Patent Office in connection with the patentee’s corresponding Dutch application. The court stated, 542 F. Supp. at 943, 216 USPQ at 985:
Foreign patent attorneys representing applicants for U.S. patents through local correspondent firms surely must be held to the same standards of conduct which apply to their American counterparts; a double standard of accountability would allow foreign attorneys and their clients to escape responsibility for fraud or inequitable conduct merely by withholding from the local correspondent
information unfavorable to patentability and claiming ignorance of United States disclosure requirements.
2001.06(b) Information Relating to or From Copending United States Patent Applications [R-08.2012]
The individuals covered by 37 CFR 1.56 have a duty to bring to the attention of the examiner, or other Office official involved with the examination of a particular application, information within their knowledge as to other copending United States applications which are “material to patentability” of the application in question. As set forth by the court in Armour & Co. v. Swift & Co., 466 F.2d 767, 779, 175 USPQ 70, 79 (7th Cir. 1972):
[W]e think that it is unfair to the busy examiner, no matter how diligent and well informed he may be, to assume that he retains details of every pending file in his mind when he is reviewing a particular application . . . [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
See also MPEP § 2004, paragraph 9.
Accordingly, the individuals covered by 37 CFR 1.56 cannot assume that the examiner of a particular application is necessarily aware of other applications which are “material to patentability” of the application in question, but must instead bring such other applications to the attention of the examiner. See Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003). For example, if a particular inventor has different applications pending in which similar subject matter but patentably indistinct claims are present that fact must be disclosed to the examiner of each of the involved applications. Similarly, the prior art references from one application must be made of record in another subsequent application if such prior art references are “material to patentability” of the subsequent application.See Dayco Prod., 329 F.3d at 1369, 66 USPQ2d at 1808.
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If the application under examination is identified as a continuation, divisional, or continuation-in-part of an earlier application, the examiner will consider the prior art cited in the earlier application.See MPEP § 609. The examiner must indicate in the first Office action whether the prior art in a related earlier application has been reviewed. Accordingly, no separate citation of the same prior art need be made in the later application.
2001.06(c) Information From Related Litigation [R-08.2012]
Where the subject matter for which a patent is being sought is or has been involved in litigation, the existence of such litigation and any other material information arising therefrom must be brought to the attention of the U.S. Patent and Trademark Office. Examples of such material information include evidence of possible prior public use or sales, questions of inventorship, prior art, allegations of “fraud,” “inequitable conduct,” and “violation of duty of disclosure.” Another example of such material information is any assertion that is made during litigation which is contradictory to assertions made to the examiner. Environ Prods., Inc. v. Total Containment, Inc., 43 USPQ2d 1288, 1291 (E.D. Pa. 1997). Such information might arise during litigation in, for example, pleadings, admissions, discovery including interrogatories, depositions, and other documents and testimony.
Where a patent for which reissue is being sought is, or has been, involved in litigation which raised a question material to examination of the reissue application, such as the validity of the patent, or any allegation of “fraud,” “inequitable conduct,” or “violation of duty of disclosure,” the existence of such litigation must be brought to the attention of the Office by the applicant at the time of, or shortly after, filing the application, either in the reissue oath or declaration, or in a separate paper, preferably accompanying the application, as filed. Litigation begun after filing of the reissue application should be promptly brought to the attention of the Office. The details and documents from the litigation, insofar as they are “material to patentability” of the reissue application as defined in 37 CFR 1.56, should accompany the application as filed, or be submitted as promptly thereafter as possible. See Critikon,
Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1258, 1259, 43 USPQ2d 1666, 1670-71 (Fed. Cir. 1997) (patent held unenforceable due to inequitable conduct based on patentee's failure to disclose a relevant reference and for failing to disclose ongoing litigation).
For example, the defenses raised against validity of the patent, or charges of “fraud” or “inequitable conduct” in the litigation, would normally be “material to the examination” of the reissue application. It would, in most situations, be appropriate to bring such defenses to the attention of the Office by filing in the reissue application a copy of the court papers raising such defenses. At a minimum, the applicant should call the attention of the Office to the litigation, the existence and the nature of any allegations relating to validity and/or “fraud,” or “inequitable conduct” relating to the original patent, and the nature of litigation materials relating to these issues. Enough information should be submitted to clearly inform the Office of the nature of these issues so that the Office can intelligently evaluate the need for asking for further materials in the litigation. See MPEP § 1442.04.
If litigation papers of a live litigation relating to a pending reissue application are filed with the Office, the litigation papers along with the reissue application file should be forwarded to the Solicitor’s Office for processing. If the litigation is not live, the litigation papers are processed by the Technology Center assigned the reissue application.
2001.06(d) Information Relating to Claims Copied From a Patent [R-08.2012]
Where claims are copied or substantially copied from a patent, 37 CFR 1.607(c) requires applicant shall, at the time he or she presents the claim(s), identify the patent and the numbers of the patent claims. Clearly, the information required by 37 CFR 1.607(c) as to the source of copied claims is material information under 37 CFR 1.56 and failure to inform
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the USPTO of such information may violate the duty of disclosure.
2002 Disclosure — By Whom and How Made [R-08.2012]
37 CFR 1.56 Duty to disclose information material to patentability.
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(d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
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2002.01 By Whom Made [R-08.2012]
37 CFR 1.56(d) makes clear that information may be disclosed to the Office through an attorney or agent of record or through a pro se inventor, and that other individuals may satisfy their duty of disclosure to the Office by disclosing information to such an attorney, agent, or inventor who then is responsible for disclosing the same to the Office. Information that is not material need not be passed along to the Office.
2002.02 Must be in Writing [R-08.2012]
37 CFR 1.2 Business to be transacted in writing.
All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
37 CFR 1.4 Nature of correspondence and signature requirements.
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(b) Since each file must be complete in itself, a separate copy of every paper to be filed in a patent or trademark application, patent file, trademark registration file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical. The filing of duplicate copies of correspondence in the file of an application, patent, trademark registration file, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence in the file of an application, patent, trademark registration file, or other proceeding.
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A disclosure under 37 CFR 1.56 must be in writing as prescribed by 37 CFR 1.2, and a copy of any such disclosure must be filed in each application or other proceeding to which the disclosure pertains (37 CFR 1.4(b)).
2003 Disclosure __ When Made [R-08.2012]
In reissue applications, applicants are encouraged to file information disclosure statements at the time of filing or within 2 months of filing, since reissue applications are taken up “special” (see MPEP § 1442 and § 1442.03). However, in a reissue where waiver of the normal 2 month delay period of 37 CFR 1.176 is being requested (see MPEP § 1441), the statement should be filed at the time of filing the application, or as soon thereafter as possible.
The presumption of validity is generally strong when prior art was before and considered by the Office and weak when it was not. See Bolkcom v. Carborundum Co., 523 F.2d 492, 498, 186 USPQ 466, 471 (6th Cir. 1975).
2003.01 Disclosure After Patent Is Granted [R-08.2012]
I. BY CITATIONS OF PRIOR ART UNDER 37 CFR 1.501
Where a patentee or any member of the public (including private persons, corporate entities, and government agencies) has prior art patents or printed publications which the patentee or member of the public desires to have made of record in the patent file, patentee or such member of the public may file a citation of such prior art with the U.S. Patent and Trademark Office pursuant to 35 U.S.C. 301 and 37 CFR 1.501. Such citations and papers will be entered without comment by the Office. The Office generally does not consider the citation and papers but merely places them of record in the patent file. Information which may be filed under 37 CFR 1.501 is limited to prior art patents and printed publications. Any citations which include items other than patents and printed publications will not be entered in the patent file. See MPEP § 2202 through § 2208.
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II. BY REEXAMINATION
Where any person, including patentee, has prior art patents and/or printed publications which said person desires to have the U.S. Patent and Trademark Office consider after a patent has issued, such person may file a request for ex parte reexamination of the patent (see 37 CFR 1.510 and MPEP § 2209 through § 2220). For a request for inter partes reexamination, see 37 CFR 1.913 and MPEP § 2609 through § 2620.
2004 Aids to Compliance With Duty of Disclosure [R-08.2012]
While it is not appropriate to attempt to set forth procedures by which attorneys, agents, and other individuals may ensure compliance with the duty of disclosure, the items listed below are offered as examples of possible procedures which could help avoid problems with the duty of disclosure. Though compliance with these procedures may not be required, they are presented as helpful suggestions for avoiding duty of disclosure problems.
1. Many attorneys, both corporate and private, are using letters and questionnaires for applicants and others involved with the filing and prosecution of the application and checklists for themselves and applicants to ensure compliance with the duty of disclosure. The letter generally explains the duty of disclosure and what it means to the inventor and assignee. The questionnaire asks the inventor and assignee questions about
__ the origin of the invention and its point of departure from what was previously known and in the prior art,
__ possible public uses and sales,
__ prior publication, knowledge, patents, foreign patents, etc.
The checklist is used by the attorney to ensure that the applicant has been informed of the duty of disclosure and that the attorney has inquired of and cited material prior art.
The use of these types of aids would appear to be most helpful, though not required, in identifying prior art and may well help the attorney and the client avoid or more easily explain a potentially embarrassing and harmful “fraud” allegation.
2. It is desirable to ask questions about inventorship. Who is the proper inventor? Are there disputes or possible disputes about inventorship? If there are questions, call them to the attention of the U.S. Patent and Trademark Office.
3. It is desirable to ask questions of the inventor about the disclosure of the best mode. Make sure that the best mode is described. See MPEP § 2165 - § 2165.04.
4. It is desirable for an attorney or agent to make certain that the inventor, especially a foreign inventor, recognizes his or her responsibilities in signing the oath or declaration. See 37 CFR 1.69(a).
37 CFR 1.69 Foreign language oaths and declarations.
(a) Whenever an individual making an oath or declaration cannot understand English, the oath or declaration must be in a language that such individual can understand and shall state that such individual understands the content of any documents to which the oath or declaration relates.
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Note MPEP § 602.06 for a more detailed discussion.
5. It is desirable for an attorney or agent to carefully evaluate and explain to the applicant and others involved the scope of the claims, particularly the broadest claims. Ask specific questions about possible prior art which might be material in reference to the broadest claim or claims. There is some tendency to mistakenly evaluate prior art in the light of the gist of what is regarded as the invention or narrower interpretations of the claims, rather than measuring the art against the broadest claim with all of its reasonable interpretations. It is desirable to pick out the broadest claim or claims and measure the materiality of prior art against a reasonably broad interpretation of these claims.
6. It may be useful to evaluate the materiality of prior art or other information from the viewpoint of whether it is the closest prior art or other information. This will tend to put the prior art or
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§ 2004DUTY OF DISCLOSURE
other information in better perspective. See Semiconductor Energy Laboratory Co. v. Samsung Electronics Co. , 204 F.3d 1368, 1374, 54 USPQ2d 1001, 1005 (Fed. Cir. 2000) (“A withheld reference may be highly material when it discloses a more complete combination of relevant features, even if those features are before the patent examiner in other references.” (citations omitted)). However, 37 CFR 1.56 may still require the submission of prior art or other information which is not as close as that of record.
7. Care should be taken to see that prior art or other information cited in a specification or in an information disclosure statement is properly described and that the information is not incorrectly or incompletely characterized. It is particularly important for an attorney or agent to review, before filing, an application which was prepared by someone else, e.g., a foreign application. It is also important that an attorney or agent make sure that foreign clients, including foreign applicants, attorneys, and agents understand the requirements of the duty of disclosure, and that the U.S. attorney or agent review any information disclosure statements or citations to ensure that compliance with 37 CFR 1.56 is present. See Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 54 USPQ2d 1001 (Fed. Cir. 2000). During prosecution patentee submitted an untranslated 29-page Japanese reference as well as a concise explanation of its relevance and an existing one-page partial English translation, both of which were directed to less material portions of the reference. The untranslated portions of the Japanese reference “contained a more complete combination of the elements claimed [in the patent] than anything else before the PTO.” 204 F.3d at 1374, 54 USPQ2d at 1005. The patentee, whose native language was Japanese, was held to have understood the materiality of the reference. “The duty of candor does not require that the applicant translate every foreign reference, but only that the applicant refrain from submitting partial translations and concise explanations that it knows will misdirect the examiner’s attention from the reference’s relevant teaching.” 204 F.3d at 1378, 54 USPQ2d at 1008. See also Gemveto Jewelry Co. v. Lambert Bros., Inc., 542 F. Supp. 933, 216 USPQ 976 (S.D.N.Y. 1982) wherein a patent was held invalid or
unenforceable because patentee’s foreign counsel did not disclose to patentee’s United States counsel or to the Office prior art cited by the Dutch Patent Office in connection with the patentee’s corresponding Dutch application. The court stated, 542 F. Supp. at 943, 216 USPQ at 985:
Foreign patent attorneys representing applicants for U.S. patents through local correspondent firms surely must be held to the same standards of conduct which apply to their American counterparts; a double standard of accountability would allow foreign attorneys and their clients to escape responsibility for fraud or inequitable conduct merely by withholding from the local correspondent information unfavorable to patentability and claiming ignorance of United States disclosure requirements.
8. Care should be taken to see that inaccurate statements or inaccurate experiments are not introduced into the specification, either inadvertently or intentionally. For example, stating that an experiment “was run” or “was conducted” when in fact the experiment was not run or conducted is a misrepresentation of the facts. No results should be represented as actual results unless they have actually been achieved. Paper or prophetic examples should not be described using the past tense. Hoffman-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1367, 66 USPQ2d 1385, 1394 (Fed. Cir. 2003); see alsoMPEP § 608.01(p) and § 707.07(l). Also, misrepresentations can occur when experiments which were run or conducted are inaccurately reported in the specification, e.g., an experiment is changed by leaving out one or more ingredients. See Steierman v. Connelly, 192 USPQ 433 (Bd. Pat. Int. 1975); 192 USPQ 446 (Bd. Pat. Int. 1976).
9. Do not rely on the examiner of a particular application to be aware of other applications belonging to the same applicant or assignee. It is desirable to call such applications to the attention of the examiner even if there is only a question that they might be “material to patentability” of the application the examiner is considering. See Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003) (contrary decision of another examiner
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reviewing substantially similar claims is ‘material’; copending application may be ‘material’even though it cannot result in a shorter patent term, when it could affect the rights of the patentee to assign the issued patents). It is desirable to be particularly careful that prior art or other information in one application is cited to the examiner in other applications to which it would be material. Do not assume that an examiner will necessarily remember, when examining a particular application, other applications which the examiner is examining, or has examined. A “lapse on the part of the examiner does not excuse the applicant.” KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1576, 228 USPQ 32, 35 (Fed. Cir. 1985); see also MPEP § 2001.06(b).
10. When in doubt, it is desirable and safest to submit information. Even though the attorney, agent, or applicant doesn’t consider it necessarily material, someone else may see it differently and embarrassing questions can be avoided. The court in U.S. Industries v. Norton Co., 210 USPQ 94, 107 (N.D. N.Y. 1980) stated “In short, the question of relevancy in close cases, should be left to the examiner and not the applicant.” See also LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066, 22 USPQ2d 1025 (Fed. Cir. 1992).
11. It may be desirable to submit information about prior uses and sales even if it appears that they may have been experimental, not involve the specifically claimed invention, or not encompass a completed invention. See Hycor Corp. v. The Schlueter Co., 740 F.2d 1529, 1534-37, 222 USPQ 553, 557-559 (Fed. Cir. 1984). See also LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066, 22 USPQ2d 1025 (Fed. Cir. 1992).
12. Submit information promptly. An applicant, attorney, or agent who is aware of prior art or other information and its significance should submit same early in prosecution, e.g., before the first action by the examiner, and not wait until after allowance. Potentially material information discovered late in the prosecution should be immediately submitted. That the issue fee has been paid is no reason or excuse for failing to submit information. See Elmwood Liquid Products, Inc. v. Singleton Packing Corp., 328 F. Supp. 974, 170 USPQ 398 (M.D. Fla. 1971).
13. It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).
14. Watch out for continuation-in-part applications where intervening material information or documents may exist; particularly watch out for foreign patents and publications related to the parent application and dated more than 1 year before the filing date of the CIP. These and other intervening documents may be material information. See In re Ruscetta, 255 F.2d 687, 690-91, 118 USPQ 101, 104 (CCPA 1958); In re van Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972); Chromalloy American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 173 USPQ 295 (D. Del. 1972).
15. Watch out for information that might be deemed to be prior art under 35 U.S.C. 102(f) and (g).
Prior art under 35 U.S.C. 102(f) may be available under 35 U.S.C. 103. See OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1401, 43 USPQ2d 1641, 1644 (Fed. Cir. 1997)(35 U.S.C. “102(f) is a prior art provision for purposes of § 103”); Dale Electronics v. R.C.L. Electronics, 488 F.2d 382, 386, 180 USPQ 225, 227 (1st. Cir. 1973); and Ex parte Andresen, 212 USPQ 100, 102 (Bd. App. 1981).
Note also that evidence of prior invention under 35 U.S.C. 102(g) may be available under 35 U.S.C. 103, such as in In re Bass, 474 F.2d 1276, 177 USPQ 178 (CCPA 1973).
Note 35 U.S.C. 103(c) disqualifies 35 U.S.C. 102(f)/103 or 102(g)/103 prior art which was, at the time the second invention was made, owned by or subject to an obligation of assignment to, the person who owned the first invention. Further note that 35 U.S.C. 103(c) disqualifies 35 U.S.C. 102(e)/103
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§ 2004DUTY OF DISCLOSURE
prior art for applications filed on or after November 29, 1999. See MPEP § 706.02(l) - § 706.02(l)(2).
16. Watch out for information picked up by the inventors and others at conventions, plant visits, in-house reviews, etc. See, for example, Dale Electronics v. R.C.L. Electronics, 488 F.2d 382, 386-87, 180 USPQ 225, 228 (1st Cir. 1973).
17. Make sure that all of the individuals who are subject to the duty of disclosure, such as spelled out in 37 CFR 1.56, are informed of and fulfill their duty.
18. Finally, if information was specifically considered and discarded as not material, this fact might be recorded in an attorney’s file or applicant’s file, including the reason for discarding it. If judgment might have been bad or something might have been overlooked inadvertently, a note made at the time of evaluation might be an invaluable aid in explaining that the mistake was honest and excusable. Though such records are not required, they could be helpful in recalling and explaining actions in the event of a question of “fraud” or “inequitable conduct” raised at a later time.
2005 Comparison to Requirement for Information [R-08.2012]
Under 37 CFR 1.56, each individual associated with the filing and prosecution of a patent application has a duty to disclose on his or her own initiative information material to patentability under 37 CFR 1.56. By contrast, under 37 CFR 1.105, an examiner or other Office employee is authorized to require, from parties identified in 37 CFR 1.56, information reasonably necessary to examine or treat a matter in an application. The provisions of 37 CFR 1.105 are detailed in MPEP § 704 et seq. The criteria for requiring information under 37 CFR 1.56, i.e., materiality to the patentability of claimed subject matter, is substantially higher than the criteria for requiring information under 37 CFR 1.105, i.e., reasonable necessity to the examination of the application. See, e.g., Star Fruits S.N.C. v. United States, 280 F.Supp.2d 512, 515-61 (E.D. Va 2003)(“Beyond that which a patent applicant is duty-bound to disclose pursuant to 37 CFR 1.56, an examiner may require the production of ‘such
information as may be reasonably necessary to properly examine or treat the matter.’”). Thus, information required by the examiner pursuant to 37 CFR 1.105 would not necessarily be considered material to patentability in itself, but would be necessary to obtain a complete record from which a determination of patentability will be made.
2006-2009 [Reserved]
2010 Office Handling of Duty of Disclosure/Inequitable Conduct Issues [R-08.2012]
Determination of inequitable conduct issues requires an evaluation of the intent of the party involved. While some court decisions have held that intent may be inferred in some circumstances, consideration of the good faith of the party, or lack thereof, is often required. In several court decisions, a high level of proof of intent to mislead the Office was required in order to prove inequitable conduct under 37 CFR 1.56. See In re Harito, 847 F.2d 801, 6 USPQ2d 1930 (Fed. Cir. 1988) and FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 5 USPQ2d 1112 (Fed. Cir. 1987). The Office is not the best forum in which to determine whether there was an “intent to mislead”; such intent is best determined when the trier of facts can observe demeanor of witnesses subjected to cross-examination. A court, with subpoena power, is presently the best forum to consider duty of disclosure issues under the present evidentiary standard for finding an “intent to mislead.” The court proceeding involves two participating adverse parties. This is not the case in the Office, since even “protesting” parties are not permitted to participate under the rules. Also, it is the courts and not the Office that are in the best position to fashion an equitable remedy to fit the precise facts in those cases where inequitable conduct is established. Furthermore, inequitable conduct is not set by statute as a criteria for patentability but rather is a judicial application of the doctrine of unclean hands which is appropriate to be handled by the courts rather than by an administrative body. Because of the lack of tools in the Office to deal with this issue and because of its sensitive nature and potential impact on a patent, Office determinations generally will not deter
2000-12March 2014
MANUAL OF PATENT EXAMINING PROCEDURE§ 2005
subsequent litigation of the same issue in the courts on appeal or in separate litigation. Office determinations would significantly add to the expense and time involved in obtaining a patent with little or no benefit to the patent owner or any other parties with an interest.
Accordingly, the Office does not investigate and reject original or reissue applications under 37 CFR 1.56. Likewise, the Office will not comment upon duty of disclosure issues which are brought to the attention of the Office in original or reissue applications except to note in the application, in appropriate circumstances, that such issues are no longer considered by the Office during its examination of patent applications. Examination of lack of deceptive intent in reissue applications will continue but without any investigation of inequitable conduct issues. Applicant’s statement of lack of deceptive intent normally will be accepted as dispositive except in special circumstances such as an admission or judicial determination of fraud or inequitable conduct. See notice published in the Official Gazette at 1095 O.G. 16 (October 11, 1988). See also MPEP § 2022.05.
Issues of fraud and/or inequitable conduct in an interference proceeding before the Board of Patent Appeals and Interferences (Board) will be considered by the Board if they are raised by way of preliminary motion for judgment under 37 CFR 1.633(a). The motion must be filed during the period set for filing preliminary motions (37 CFR 1.636(a)), or good cause (37 CFR 1.655(b)) must be shown as to why the issues of fraud and/or inequitable conduct were not timely raised during the preliminary motion period. Issues of fraud and/or inequitable conduct will not be considered in any interference in which the times for taking testimony or the times for filing briefs for final hearing have already been set, unless 'good cause' is shown under 37 CFR 1.655(b). An example of good cause would be where fraud or inequitable conduct is first discovered during taking
of testimony. See notice published in the Official Gazette at 1133 O.G. 21 (December 10, 1991).
2011 [Reserved]
2012 Reissue Applications Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure [R-08.2012]
Questions of “fraud,” “inequitable conduct,” or violation of “duty of disclosure” or “candor and good faith” can arise in reissue applications.
REQUIREMENT FOR “ERROR WITHOUT ANY DECEPTIVE INTENTION”
Both 35 U.S.C. 251 and 37 CFR 1.175 promulgated pursuant thereto require that the error must have arisen “without any deceptive intention.” In re Heany, 1911 C.D. 138, 180 (1911), unequivocally states:
Where such a condition [fraudulent or deceptive intention] is shown to exist the right to reissue the patent is forfeited.
Similarly, the court in In re Clark, 522 F.2d 623, 627, 187 USPQ 209, 213 (CCPA 1975) indicated:
Reissue is not available to rescue a patentee who had presented claims limited to avoid particular prior art and then had failed to disclose that prior art . . . after that failure to disclose has resulted in invalidating of the claims.
It is clear that “fraud” cannot be purged through the reissue process. See conclusions of Law 89 and 91 in Intermountain Research and Eng’g Co. v. Hercules Inc., 171 USPQ 577, 631-32 (C.D. Cal. 1971).
Clearly, where several patents or applications stem from an original application which contained fraudulent claims ultimately allowed, the doctrine of unclean hands bars allowance or enforcement of any of the claims of any of the applications or
March 20142000-13
§ 2012DUTY OF DISCLOSURE
patents. See Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 245, 19 USPQ 228, 230 (1933); East Chicago Machine Tool Corp. v. Stone Container Corp., 181 USPQ 744, 748 (N.D. Ill.), modified, 185 USPQ 210 (N.D. Ill. 1974). See also Chromalloy American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 173 USPQ 295 (D.Del. 1972) and Strong v. General Electric Co., 305 F. Supp. 1084, 162 USPQ 141 (N.D. Ga. 1969), aff’d, 434 F.2d 1042, 168 USPQ 8 (5th Cir. 1970), cert. denied, 403 U.S. 906 (1971) where fraud or inequitable conduct affecting only certain claims or only one of related patents was held to affect the other claims or patent. Clearly, “fraud” practiced or attempted in an application which issues as a patent is “fraud” practiced or attempted in connection with any subsequent application to reissue that patent. The reissue application and the patent are inseparable as far as questions of “fraud,” “inequitable conduct,” or “violation of the duty of disclosure” are concerned. See In re Heany, supra; and Norton v. Curtiss, 433 F.2d 779, 792, 167 USPQ 532, 543 (CCPA 1970), wherein the court stated:
We take this to indicate that any conduct which will prevent the enforcement of a patent after the patent issues should, if discovered earlier, prevent the issuance of the patent.
Clearly, if a reissue patent would not be enforceable after its issue because of “fraud,” “inequitable conduct” or “violation of the duty of disclosure” during the prosecution of the patent sought to be reissued, the reissue patent application should not issue. Where no investigation is needed to establish such circumstances, an appropriate remedy would be to reject the claims in the application in accordance with 35 U.S.C. 251. See MPEP § 1448.
The examiner is not to make any investigation as to the lack of deceptive intent requirement in reissue applications. Applicant's statement (in the oath or declaration) of lack of deceptive intent will be accepted as dispositive except in special circumstances such as an admission or judicial determination of fraud, inequitable conduct or violation of the duty of disclosure, where no investigation need be made and the fact of the admission or judicial determination exists per se. Also, any admission of fraud, inequitable conduct
or violation of the duty of disclosure must be explicit, unequivocal, and not subject to other interpretation. Where a rejection is made based upon such an admission (see MPEP § 1448) and applicant responds with any reasonable interpretation of the facts that would not lead to a conclusion of fraud, inequitable conduct or violation of the duty of disclosure, the rejection should be withdrawn. Alternatively, if applicant shows that the admission noted by the examiner was not in fact an admission, the rejection should also be withdrawn.
2012.01 Collateral Estoppel [R-08.2012]
The Supreme Court in Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 169 USPQ 513 (1971) set forth the rule that once a patent has been declared invalid via judicial inquiry, a collateral estoppel barrier is created against further litigation involving the patent, unless the patentee-plaintiff can demonstrate “that he did not have” a full and fair chance to litigate the validity of his patent in “the earlier case.” See also Ex parte Varga, 189 USPQ 209 (Bd. App. 1973). As stated in Kaiser Industries Corp. v. Jones & Laughlin Steel Corp., 515 F.2d 964, 987, 185 USPQ 343, 362 (3rd Cir. 1975):
In fashioning the rule of Blonder-Tongue, Justice White for a unanimous Court made it clear that a determination of patent invalidity, after a thorough and equitable judicial inquiry, creates a collateral estoppel barrier to further litigation to enforce that patent.
Under 35 U.S.C. 251, the Director can reissue a patent only if there is “error without any deceptive intention.” The Director is without authority to reissue a patent when “deceptive intention” was present during prosecution of the parent application. See In re Clark, 522 F.2d 62, 187 USPQ 209 (CCPA 1975) and In re Heany, 1911 C.D. 138, 180 (1911). Thus, the collateral estoppel barrier applies where reissue is sought of a patent which has been held invalid or unenforceable for “fraud” or “violation of duty of disclosure” in procuring of said patent. It was held in In re Kahn, 202 USPQ 772, 773 (Comm’r Pat. 1979):
2000-14March 2014
MANUAL OF PATENT EXAMINING PROCEDURE§ 2012.01
Therefore, since the Kahn patent was held invalid, inter alia, for “failure to disclose material facts of which * * * [Kahn] was aware” this application may be stricken under 37 CFR 1.56 via the doctrine of collateral estoppel as set forth in Blonder-Tongue, supra.
***** The Patent and Trademark Office . . . has found no clear justification for not adhering to the doctrine of collateral estoppel under Blonder-Tongue in this case. Applicant has had his day in court. He appears to have had a full and fair chance to litigate the validity of his patent.
See MPEP § 2259 for collateral estoppel in reexamination proceedings.
2013 Protests Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure [R-08.2012]
37 CFR 1.291 permits protests by the public against pending applications.
Submissions under 37 CFR 1.291 are not limited to prior art documents such as patents and publications, but are intended to include any information, which in the protestor’s opinion, would make or have made the grant of the patent improper (see MPEP § 1901.02). This includes, of course, information indicating the presence of “fraud” or “inequitable conduct” or “violation of the duty of disclosure,” which will be entered in the application file, generally without comment other than to state that such information will not be considered (see MPEP § 2010). See MPEP § 1901.06.
Protests should be in conformance with 37 CFR 1.291(a) and (b), and include a statement of the alleged facts involved, the point or points to be reviewed, and the action requested. Any briefs or memoranda in support of the petition, and any affidavits, declarations, depositions, exhibits, or other
material in support of the alleged facts, should accompany the protest.
2014 Duty of Disclosure in Reexamination Proceedings [R-08.2012]
As provided in 37 CFR 1.555, the duty of disclosure in both ex parte and inter partes reexamination proceedings applies to the patent owner. That duty is a continuing obligation on the part of the patent owner throughout the proceedings. However, issues of “fraud,” “ inequitable conduct,” or “violation of duty of disclosure” are not considered in reexamination. See MPEP § 2280 for ex parte reexamination proceedings and MPEP § 2684 for inter partes reexamination proceedings. If questions of “fraud” or “inequitable conduct” or “violation of the duty of disclosure” are discovered during reexamination proceedings, the existence of such questions will be noted by the examiner in an Office action without further comment. See MPEP § 2258 for ex parte reexamination proceedings and MPEP § 2658 for inter partes reexamination proceedings.
For the patent owner’s duty to disclose prior or concurrent proceedings in which the patent is or was involved, see MPEP § 2282 (for ex parte reexamination), § 2686 (for inter partes reexamination), and § 2001.06(c).
2015 [Reserved]
2016 Fraud, Inequitable Conduct, or Violation of Duty of Disclosure Affects All Claims [R-08.2012]
A finding of “fraud,” “inequitable conduct,” or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid. See Chromalloy American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 173 USPQ 295 (D.Del. 1972) and Strong v. General Electric Co., 305 F. Supp. 1084,
162 USPQ 141 (N.D. Ga. 1969), aff’d, 434 F.2d 1042, 168 USPQ 8 (5th Cir. 1970), cert. denied, 403 U.S. 906 (1971). In J. P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553, 1561, 223 USPQ 1089, 1093-94 (Fed. Cir. 1984), the court stated:
March 20142000-15
§ 2016DUTY OF DISCLOSURE
Once a court concludes that inequitable conduct
occurred, all the claims __ not just the particular claims in which the inequitable conduct is
directly connected __ are unenforceable. See generally, cases collected in 4 Chisum,
PATENTS, paragraph 19.03[6] at 19-85 n. 10 (1984). Inequitable conduct “goes to the patent right as a whole, independently of particular claims.” In re Clark 522 F.2d 623, 626, 187 USPQ 209, 212 (CCPA).
The court noted in footnote 8 of Stevens:
In In re Multiple Litigation Involving Frost Patent, 540 F.2d 601, 611, 191 USPQ 241, 249 (3rd. Cir. 1976), some claims were upheld despite nondisclosure with respect to others. The case is not precedent in this court.
As stated in Gemveto Jewelry Co. v. Lambert Bros., Inc., 542 F. Supp. 933, 943, 216 USPQ 976, 984 (S. D. N.Y. 1984) (quoting Patent Law Perspectives, 1977 Developments, § G.1 [1]-189):
The gravamen of the fraud defense is that the patentee has failed to discharge his duty of dealing with the examiner in a manner free from the taint of “fraud or other inequitable conduct.” If such conduct is established in connection with the prosecution of a patent, the fact that the lack of candor did not directly affect all the claims in the patent has never been the governing principle. It is the inequitable conduct that generates the unenforceability of the patent and we cannot think of cases where a patentee partially escaped the consequences of his wrongful acts by arguing that he only committed acts of omission or commission with respect to a
limited number of claims. It is an all or nothing proposition. [Emphasis in original.]
2017-2021 [Reserved]
2022 [Reserved]
2022.01-2022.04 [Reserved]
2022.05 Determination of “Error Without Any Deceptive Intention” [R-08.2012]
If the application is a reissue application, the action by the examiner may extend to a determination as to whether at least one “error” required by 35 U.S.C. 251 has been alleged, i.e., identified. Further, the examiner should determine whether applicant has averred in the reissue oath or declaration, as required by 37 CFR 1.175(a)(2), (b)(1), and (b)(2), that all “errors” arose “without any deceptive intention.” However, the examiner should not normally comment or question as to whether the averred statement as to lack of deceptive intention appears correct or true. See MPEP § 1414.
2000-16March 2014
MANUAL OF PATENT EXAMINING PROCEDURE§ 2017-2021
Chapter 2100 Patentability
[Reserved]2101 -2102
Patent Examination Process2103 Patentable Subject Matter2104 Patentable Subject Matter — Living Subject Matter
2105
Patent Subject Matter Eligibility2106 [Reserved]2106.01
Guidelines for Examination of Applications for Compliance with the Utility Requirement
2107
General Principles Governing Utility Rejections
2107.01
Procedural Considerations Related to Rejections for Lack of Utility
2107.02
Special Considerations for Asserted Therapeutic or Pharmacological Utilities
2107.03
[Reserved]2108 -2110
Claim Interpretation; Broadest Reasonable Interpretation
2111
Plain Meaning2111.01 Effect of Preamble2111.02 Transitional Phrases2111.03 “Adapted to,” “Adapted for,” “Wherein,” and “Whereby” Clauses
2111.04
Functional and Nonfunctional Descriptive Material
2111.05
Requirements of Rejection Based on Inherency; Burden of Proof
2112
Composition, Product, and Apparatus Claims
2112.01
Process Claims2112.02 Product-by-Process Claims2113 Apparatus and Article Claims — Functional Language
2114
Material or Article Worked Upon by Apparatus
2115
[Reserved]2116 Novel, Unobvious Starting Material or End Product
2116.01
[Reserved]2117 -2120
Prior Art; General Level of Operability Required to Make a Prima Facie Case
2121
Use of Prior Art in Rejections Where Operability is in Question
2121.01
Compounds and Compositions — What Constitutes Enabling Prior Art
2121.02
Plant Genetics — What Constitutes Enabling Prior Art
2121.03
Apparatus and Articles — What Constitutes Enabling Prior Art
2121.04
Discussion of Utility in the Prior Art2122 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments
2123
Exception to the Rule That the Critical Reference Date Must Precede the Filing Date
2124
Tax Strategies Deemed Within the Prior Art
2124.01
Drawings as Prior Art2125 Availability of a Document as a “Patent” for Purposes of Rejection
2126
Under 35 U.S.C. 102(a) or Pre-AIA 35 U.S.C. 102(a), (b), and (d)
Date of Availability of a Patent as a Reference
2126.01
Scope of Reference’s Disclosure Which Can Be Used to Reject Claims
2126.02
When the Reference Is a “Patent” but Not a “Publication”
Domestic and Foreign Patent Applications as Prior Art
2127
“Printed Publications” as Prior Art2128 Level of Public Accessibility Required
2128.01
Date Publication Is Available as a Reference
2128.02
Admissions as Prior Art2129 [Reserved]2130 Anticipation —Application of 35 U.S.C. 102
2131
Multiple Reference 35 U.S.C. 102 Rejections
2131.01
Genus-Species Situations2131.02 Anticipation of Ranges2131.03 Secondary Considerations2131.04 Nonanalogous or Disparaging Prior Art
2131.05
Pre-AIA 35 U.S.C. 102(a)2132 Publications as Pre-AIA 35 U.S.C. 102(a) Prior Art
2132.01
Pre-AIA 35 U.S.C. 102(b)2133 Rejections of Continuation-In-Part (CIP) Applications
2133.01
Rejections Based on Publications and Patents
2133.02
Rev. 07.2015, November 20152100-1
Rejections Based on “Public Use” or “On Sale”
2133.03
“Public Use”2133.03(a) “On Sale”2133.03(b) The “Invention”2133.03(c) “In This Country”2133.03(d) Permitted Activity; Experimental Use
2133.03(e)
Commercial Exploitation2133.03(e)(1) Intent2133.03(e)(2) “Completeness” of the Invention
2133.03(e)(3)
Factors Indicative of an Experimental Purpose
2133.03(e)(4)
Experimentation and Degree of Supervision and Control
2133.03(e)(5)
Permitted Experimental Activity and Testing
2133.03(e)(6)
Activity of an Independent Third Party Inventor
2133.03(e)(7)
Pre-AIA 35 U.S.C. 102(c)2134 Pre-AIA 35 U.S.C. 102(d)2135
The Four Requirements of Pre-AIA 35 U.S.C. 102(d)
2135.01
Pre-AIA 35 U.S.C. 102(e)2136 Status of U.S. Application as a Reference
2136.01
Content of the Prior Art Available Against the Claims
2136.02
Critical Reference Date2136.03 Different Inventive Entity; Meaning of “By Another”
2136.04
Overcoming a Rejection Under Pre-AIA 35 U.S.C. 102(e)
2136.05
Pre-AIA 35 U.S.C. 102(f)2137 Inventorship2137.01 Applicability of Pre-AIA 35 U.S.C. 103(c)
2137.02
Pre-AIA 35 U.S.C. 102(g)2138 Interference Practice2138.01 “The Invention Was Made in This Country”
2138.02
“By Another Who Has Not Abandoned, Suppressed, or Concealed It”
2138.03
“Conception”2138.04 “Reduction to Practice”2138.05 “Reasonable Diligence”2138.06
[Reserved]2139 -2140
Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103
2141
Scope and Content of the Prior Art2141.01 Analogous and NonanalogousArt2141.01(a)
Differences Between Prior Art and Claimed Invention
2141.02
Level of Ordinary Skill in the Art2141.03 Legal Concept of Prima Facie Obviousness
2142
Examples of Basic Requirements of a Prima Facie Case of Obviousness
2143
Suggestion or Motivation To Modify the References
2143.01
Reasonable Expectation of Success Is Required
2143.02
All Claim Limitations Must Be Considered
2143.03
Supporting a Rejection Under 35 U.S.C. 103
2144
Implicit Disclosure2144.01 Reliance on Scientific Theory2144.02 Reliance on Common Knowledge in the Art or “Well Known” Prior Art
2144.03
Legal Precedent as Source of Supporting Rationale
2144.04
Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions
2144.05
Art Recognized Equivalence for the Same Purpose
2144.06
Art Recognized Suitability for an Intended Purpose
2144.07
Obviousness of Species When Prior Art Teaches Genus
2144.08
Close Structural Similarity Between Chemical Compounds (Homologs, Analogues, Isomers)
2144.09
Consideration of Applicant’s Rebuttal Arguments
2145
Pre-AIA 35 U.S.C. 103(c)2146 [Reserved]2147
-2149 Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First
2150
Inventor To File Provisions of the Leahy-Smith America Invents Act Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA
2151
Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)
2152
2100-2Rev. 07.2015, November 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Effective Filing Date of the Claimed Invention
2152.01
Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described in a
2152.02
Printed Publication, or in Public Use, on Sale, or Otherwise Available to the Public)
Patented2152.02(a) Described in a Printed Publication2152.02(b) In Public Use2152.02(c) On Sale2152.02(d) Otherwise Available to the Public2152.02(e) No Requirement of "By Others"2152.02(f)
Admissions2152.03 The Meaning of "Disclosure"2152.04
Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1)
2153
Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) To AIA 35
2153.01
U.S.C. 102(a)(1) (Grace Period Inventor Or Inventor-Originated Disclosure Exception)
Grace Period Inventor Disclosure Exception
2153.01(a)
Grace Period Inventor-Originated Disclosure Exception
2153.01(b)
Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(B) toAIA 35 U.S.C.
2153.02
102(a)(1) (Inventor Or Inventor-Originated Prior Public Disclosure Exception)
Provisions Pertaining to Subject Matter in a U.S. Patent or Application
2154
Effectively Filed Before the Effective Filing Date of the Claimed Invention
Prior Art Under AIA 35 U.S.C. 102(a)(2) “U.S. Patent Documents”
2154.01
WIPO Published Applications2154.01(a) Determining When Subject Matter Was Effectively Filed Under AIA 35 U.S.C. 102(d)
2154.01(b)
Requirement Of “Names Another Inventor”
2154.01(c)
Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C. 102(a)(2)
2154.02
Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA
2154.02(a)
35 U.S.C. 102(a)(2) (Inventor-Originated Disclosure Exception)
Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(B) to AIA
2154.02(b)
35 U.S.C. 102(a)(2) (Inventor or Inventor-Originated Prior Public Disclosure Exception) Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(C) to AIA
2154.02(c)
35 U.S.C. 102(a)(2) (Common Ownership or Obligation of Assignment)
Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections
2155
Showing That the Disclosure Was Made by the Inventor or a Joint Inventor
2155.01
Showing That the Subject Matter Disclosed Had Been Previously
2155.02
Publicly Disclosed by the Inventor or a Joint Inventor Showing That the Disclosure was Made, or That Subject Matter had
2155.03
Been Previously Publicly Disclosed, byAnother Who Obtained the Subject Matter Disclosed Directly or Indirectly From the Inventor or a Joint Inventor Enablement2155.04 Who May File an Affidavit or Declaration Under 37 CFR 1.130
2155.05
Situations in Which an Affidavit or Declaration Is Not Available
2155.06
Joint Research Agreements2156 Improper Naming of Inventors2157 AIA 35 U.S.C. 1032158 Applicability Date Provisions and Determining Whether an Application
2159
Is Subject to the First Inventor To File Provisions of the AIA
Applications Filed Before March 16, 2013
2159.01
Applications Filed on or After March 16, 2013
2159.02
Applications Subject to the AIA but Also Containing a Claimed Invention
2159.03
Having an Effective Filing Date Before March 16, 2013 Applicant Statement in Transition Applications Containing a Claimed
2159.04
Invention Having an Effective Filing Date on or After March 16, 2013
Rev. 07.2015, November 20152100-3
PATENTABILITY
[Reserved]2160 Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
2161
Computer Programming and 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
2161.01
Policy Underlying 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
2162
Guidelines for the Examination of Patent Applications Under the 35
2163
U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, para. 1, “Written Description” Requirement
Support for the Claimed Subject Matter in Disclosure
2163.01
Standard for Determining Compliance With the Written Description Requirement
2163.02
Typical Circumstances Where Adequate Written Description Issue Arises
2163.03
Burden on the Examiner with Regard to the Written Description Requirement
2163.04
Changes to the Scope of Claims2163.05 Relationship of Written Description Requirement to New Matter
2163.06
Amendments to Application Which Are Supported in the Original Description
2163.07
Inherent Function, Theory, or Advantage
2163.07(a)
Incorporation by Reference2163.07(b) The Enablement Requirement2164
Test of Enablement2164.01 Undue Experimentation Factors2164.01(a) How to Make the Claimed Invention
2164.01(b)
How to Use the Claimed Invention
2164.01(c)
Working Example2164.02 Relationship of Predictability of the Art and the Enablement Requirement
2164.03
Burden on the Examiner Under the Enablement Requirement
2164.04
Determination of Enablement Based on Evidence as a Whole
2164.05
Specification Must Be Enabling as of the Filing Date
2164.05(a)
Specification Must Be Enabling to Persons Skilled in the Art
2164.05(b)
Quantity of Experimentation2164.06 Examples of Enablement Issues-Missing Information
2164.06(a)
Examples of Enablement Issues — Chemical Cases
2164.06(b)
Examples of Enablement Issues – Computer Programming Cases
2164.06(c)
Relationship of Enablement Requirement to Utility Requirement of 35 U.S.C. 101
2164.07
Enablement Commensurate in Scope With the Claims
2164.08
Single Means Claim2164.08(a) Inoperative Subject Matter2164.08(b) Critical Feature Not Claimed2164.08(c)
The Best Mode Requirement2165 Considerations Relevant to Best Mode2165.01 Best Mode Requirement Compared to Enablement Requirement
2165.02
Requirements for Rejection for Lack of Best Mode
2165.03
Examples of Evidence of Concealment
2165.04
[Reserved]2166 -2170
Two Separate Requirements for Claims Under 35 U.S.C. 112 (b) or Pre-AIA 35 U.S.C. 112, Second Paragraph
2171
Subject Matter Which the Inventor or a Joint Inventor Regards as The Invention
2172
Unclaimed Essential Matter2172.01 Claims Must Particularly Point Out and Distinctly Claim the Invention
2173
Interpreting the Claims2173.01 Determining Whether Claim Language is Definite
2173.02
Correspondence Between Specification and Claims
2173.03
Breadth Is Not Indefiniteness2173.04 Specific Topics Related to Issues Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph
2173.05
New Terminology2173.05(a) Relative Terminology2173.05(b) Numerical Ranges and Amounts Limitations
2173.05(c)
Exemplary Claim Language (“for example,” “such as”)
2173.05(d)
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Lack of Antecedent Basis2173.05(e) Reference to Limitations in Another Claim
2173.05(f)
Functional Limitations2173.05(g) Alternative Limitations2173.05(h) Negative Limitations2173.05(i) Old Combination2173.05(j) Aggregation2173.05(k) [Reserved]2173.05(l) Prolix2173.05(m) Multiplicity2173.05(n) Double Inclusion2173.05(o) Claim Directed to Product-By- Process or Product and Process
2173.05(p)
“Use” Claims2173.05(q) Omnibus Claim2173.05(r) Reference to Figures or Tables2173.05(s) Chemical Formula2173.05(t) Trademarks or Trade Names in a Claim
2173.05(u)
Mere Function of Machine2173.05(v) Practice Compact Prosecution2173.06
Relationship Between the Requirements of 35 U.S.C. 112(a) and (b) or Pre-AIA
2174
35 U.S.C. 112, First and Second Paragraphs [Reserved]2175
-2180 Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation
2181
Search and Identification of the Prior Art
2182
Making a Prima Facie Case of Equivalence
2183
Determining Whether anApplicant Has Met the Burden of Proving
2184
Nonequivalence After a Prima Facie Case Is Made Related Issues Under 35 U.S.C. 112(a) or (b) and Pre-AIA 35 U.S.C. 112, First or Second Paragraphs
2185
Relationship to the Doctrine of Equivalents
2186
[Reserved]2187 -2189
Prosecution Laches2190
2101
-2102 [Reserved]
2103 Patent Examination Process [R-07.2015]
I. DETERMINE WHAT APPLICANT HAS INVENTED AND IS SEEKING TO PATENT
It is essential that patent applicants obtain a prompt yet complete examination of their applications. Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Thus, USPTO personnel should state all reasons and bases for rejecting claims in the first Office action. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved. A failure to follow this approach can lead to unnecessary delays in the prosecution of the application.
Prior to focusing on specific statutory requirements, USPTO personnel must begin examination by determining what, precisely, the applicant has invented and is seeking to patent, and how the claims relate to and define that invention. USPTO personnel will review the complete specification, including the detailed description of the invention, any specific embodiments that have been disclosed, the claims and any specific, substantial, and credible utilities that have been asserted for the invention.
After obtaining an understanding of what applicant invented, the examiner will conduct a search of the prior art and determine whether the invention as claimed complies with all statutory requirements.
A. Identify and Understand Any Utility for the Invention
The claimed invention as a whole must be useful. The purpose of this requirement is to limit patent protection to inventions that possess a certain level of “real world” value, as opposed to subject matter
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that represents nothing more than an idea or concept, or is simply a starting point for future investigation or research (Brenner v. Manson, 383 U.S. 519, 528-36, 148 USPQ 689, 693-96 (1966); In re Fisher, 421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir. 2005); In re Ziegler, 992 F.2d 1197, 1200-03, 26 USPQ2d 1600, 1603-06 (Fed. Cir. 1993)).
USPTO personnel should review the application to identify any asserted utility. The applicant is in the best position to explain why an invention is believed useful. Accordingly, a complete disclosure should contain some indication of the practical application for the claimed invention, i.e., why the applicant believes the claimed invention is useful. Such a statement will usually explain the purpose of the invention or how the invention may be used (e.g., a compound is believed to be useful in the treatment of a particular disorder). Regardless of the form of statement of utility, it must enable one ordinarily skilled in the art to understand why the applicant believes the claimed invention is useful. See MPEP § 2107 for utility examination guidelines. An applicant may assert more than one utility and practical application, but only one is necessary. Alternatively, an applicant may rely on the contemporaneous art to provide that the claimed invention has a well-established utility.
B. Review the Detailed Disclosure and Specific Embodiments of the Invention To Understand What the Applicant Has Invented
The written description will provide the clearest explanation of the applicant’s invention, by exemplifying the invention, explaining how it relates to the prior art and explaining the relative significance of various features of the invention. Accordingly, USPTO personnel should continue their evaluation by
(A) determining the function of the invention, that is, what the invention does when used as disclosed (e.g., the functionality of a programmed computer); and
(B) determining the features necessary to accomplish at least one asserted practical application.
Patent applicants can assist the USPTO by preparing applications that clearly set forth these aspects of an invention.
C. Review the Claims
The claims define the property rights provided by a patent, and thus require careful scrutiny. The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention. USPTO personnel must first determine the scope of a claim by thoroughly analyzing the language of the claim before determining if the claim complies with each statutory requirement for patentability. See In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (“[T]he name of the game is the claim.”).
USPTO personnel should begin claim analysis by identifying and evaluating each claim limitation. For processes, the claim limitations will define steps or acts to be performed. For products, the claim limitations will define discrete physical structures or materials. Product claims are claims that are directed to either machines, manufactures or compositions of matter.
USPTO personnel are to correlate each claim limitation to all portions of the disclosure that describe the claim limitation. This is to be done in all cases, regardless of whether the claimed invention is defined using means- (or step-) plus- function language. The correlation step will ensure that USPTO personnel correctly interpret each claim limitation.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
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(A) statements of intended use or field of use,
(B) “adapted to” or “adapted for” clauses,
(C) "wherein" clauses, or
(D) “whereby” clauses.
This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002)(finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”). See also MPEP §§ 2111.02 and 2111.04.
USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure. See MPEP § 2111. Disclosure may be express, implicit, or inherent. USPTO personnel are to give the claimed means- (or step-) plus- function limitations their broadest reasonable interpretation consistent with all corresponding structures or materials described in the specification and their equivalents including the manner in which the claimed functions are performed. See Kemco Sales, Inc. v. Control Papers Company, Inc., 208 F.3d 1352, 54 USPQ2d 1308 (Fed. Cir. 2000). Further guidance in interpreting the scope of equivalents is provided in MPEP § 2181 through MPEP § 2186.
While it is appropriate to use the specification to determine what applicant intends a term to mean, a positive limitation from the specification cannot be read into a claim that does not itself impose that limitation. A broad interpretation of a claim by USPTO personnel will reduce the possibility that the claim, when issued, will be interpreted more broadly than is justified or intended. An applicant can always amend a claim during prosecution to better reflect the intended scope of the claim.
Finally, when evaluating the scope of a claim, every limitation in the claim must be considered. USPTO personnel may not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered. See, e.g., Diamond v. Diehr, 450 U.S. 175, 188-89, 209 USPQ 1, 9 (1981) (“In determining the eligibility of respondents’ claimed process for
patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.”).
II. CONDUCT A THOROUGH SEARCH OF THE PRIOR ART
Prior to evaluating the claimed invention under 35 U.S.C. 101, USPTO personnel are expected to conduct a thorough search of the prior art. Generally, a thorough search involves reviewing both U.S. and foreign patents and nonpatent literature. In many cases, the result of such a search will contribute to USPTO personnel’s understanding of the invention. Both claimed and unclaimed aspects of the invention described in the specification should be searched if there is a reasonable expectation that the unclaimed aspects may be later claimed. A search must take into account any structure or material described in the specification and its equivalents which correspond to the claimed means- (or step-) plus- function limitation, in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph and MPEP § 2181 through MPEP § 2186.
III. DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 101
A. Consider the Breadth of 35 U.S.C. 101 Under Controlling Law
Section 101 of title 35, United States Code, provides:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 101 defines four categories of inventions that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. The latter
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three categories define “things” or “products” while the first category defines “actions” (i.e., inventions that consist of a series of steps or acts to be performed). See 35 U.S.C. 100(b) (“The term ‘process’means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”).
The subject matter which courts have found to be outside of, or exceptions to, the four statutory categories of invention is limited to abstract ideas, laws of nature and natural phenomena (i.e., the judicial exceptions). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 2354, 110 USPQ2d 1976, 1980 (2014) (citing Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. _, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972, 1979 (2013)). See also Bilski v. Kappos, 561 U.S.593, 601, 130 S. Ct. 3218, 3225, 95 USPQ2d 1001, 1005-06 (2010) (citing Diamond v. Chakrabarty, 447 U.S. 303, 309, 206 USPQ 193, 197 (1980)).
The Supreme Court's concern that drives this "exclusionary principle" is pre-emption. Alice Corp., 134 S. Ct. at 2354, 110 USPQ2d at 1980 (citing Bilski, 561 U.S. at 611-612, 95 USPQ2d at 1010
("upholding the patent 'would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea'"). The courts have held that a claim may not preempt abstract ideas, laws of nature, or natural phenomena, i.e., one may not patent every "substantial practical application" of an abstract idea, law of nature, or natural phenomenon. This is because such a patent would "in practical effect be a patent on the [abstract idea, law of nature or natural phenomenon] itself." Gottschalk v. Benson, 409 U.S. 63, 71, 72, 175
USPQ 673, 676 (1972). The concern over preemption was expressed as early as 1852. See Le Roy v. Tatham, 55 U.S. 156, 175 (1852) (“A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.”).
Abstract ideas, laws of nature, and natural phenomenon "are the basic tools of scientific and technological work." Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289,
1293, 101 USPQ2d 1961, 1965 (2012) (citing Gottschalk v. Benson, 409 U.S. 63, 67, 97, 175
USPQ 673, 675 (1972)). Thus, the courts have expressed concern that monopolizing these tools by granting patent rights may impede innovation rather than promote it. See Alice Corp., 134 S. Ct. at 2354, 110 USPQ2d at 1980 (citing Mayo, 132 S. Ct. at 1293, 101 USPQ2d at 1965). However, the courts have carefully construed this "exclusionary principle lest it swallow all of patent law" because "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomenon, or abstract ideas." Alice, 134 S. Ct. at 2354, 110 USPQ2d at 1980 (citing Mayo, 132 S. Ct. at 1293, 101 USPQ2d at 1965). Therefore, an invention is not considered to be ineligible for patent simply because it involves a judicial exception. Alice, 134 S. Ct. at 2354, 110 USPQ2d at 1980-81 (citing Diamond v. Diehr, 450 U.S. 174, 187 (1981)).
The courts have held that an application of an abstract idea, law of nature or natural phenomenon "to a new and useful end" is eligible for patent protection. Alice, 134 S. Ct. at 2354, 110 USPQ2d at 1980 (citing Benson, 409 U.S. at 67, 175 USPQ at 675). However, to transform an abstract idea, law of nature or natural phenomenon into "a patent-eligible application", the claim must recite more than simply the judicial exception "while adding the words 'apply it.'" Mayo, 132 S. Ct. at 1294, 101 USPQ2d at 1965. Further, patent eligibility under 35 U.S.C. section 101 must not depend simply on the draftsman's art. Alice, 134 S. Ct. at 2360, 110 USPQ2d at 1985 (citing Mayo 132 S. Ct. at 1294, 101 USPQ2d at 1966).
Determining whether an applicant is seeking to patent a judicial exception, namely an abstract idea, a law of nature or a natural phenomenon, or a patent-eligible application of the judicial exception has proven to be challenging. The Supreme Court in Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289, 1301, 101 USPQ2d 1961, 1966 (2013) laid out a framework for making this determination. See also Alice, 134 S. Ct. at 2355, 110 USPQ2d at 1981. This framework, which is referred to as the Mayo test, is discussed in further detail in MPEP § 2106. The first part of the test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural
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phenomenon (i.e., a judicial exception). If the claims are directed to a judicial exception, the second part of the test is to determine when the claim recites additional elements that amount to significantly more than the judicial exception. The Supreme Court has described the second part of the test as the "search for an 'inventive concept'". Alice, 134 S. Ct. at 2355, 110 USPQ2d at 1981 (citing Mayo 132 S. Ct. at 1294, 101 USPQ2d at 1966).
The Supreme Court in Bilski v. Kappos, 561 U.S. 593, 130 S. Ct. 3218, 95 USPQ2d 1001 (2010), made clear that business methods are not "categorically outside of § 101’s scope," stating that "a business method is simply one kind of ‘method’ that is, at least in some circumstances, eligible for patenting under § 101." Thus, examiners are reminded that software and business methods are not excluded categories of subject matter. For example, software is not automatically an abstract idea. While some software may include an abstract idea (such as a step that employs a mathematical relationship), further analysis of the claim as a whole would be required to determine eligibility.
In addition, examiners are reminded that 35 U.S.C. 101 is not the sole tool for determining patentability; where a claim encompasses an abstract idea, law of nature, or natural phenomenon, 35 U.S.C. 112 , 35 U.S.C. 102 , and 35 U.S.C. 103 will provide additional tools for ensuring that the claim meets the conditions for patentability. As the Supreme Court made clear in Bilski:
The § 101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies as a process, machine, manufacture, or composition of matter, in order to receive the Patent Act’s protection the claimed invention must also satisfy ‘‘the conditions and requirements of this title.’’ § 101. Those requirements include that the invention be novel, see § 102, nonobvious, see § 103, and fully and particularly described, see § 112.
Therefore, examiners should avoid focusing on issues of patent-eligibility under 35 U.S.C. 101 to the detriment of considering an application for compliance with the requirements of 35 U.S.C. 112,
35 U.S.C. 102, and 35 U.S.C. 103, and should avoid treating an application solely on the basis of patent-eligibility under 35 U.S.C. 101 except in the most extreme cases.
See MPEP § 2106 for determining whether a claim is directed to patent-eligible subject matter.
See MPEP § 2107 for a detailed discussion of utility, which is a separate requirement from eligibility under 35 U.S.C. 101, and requires that inventions be useful or have a utility that is specific, substantial and credible.
IV. EVALUATE APPLICATION FOR COMPLIANCE WITH 35 U.S.C. 112
A. DetermineWhether the Claimed Invention Complies with 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph Requirements
35 U.S.C. 112(b) and the second paragraph of pre-AIA 35 U.S.C. 112 contains two separate and distinct requirements: (A) that the claim(s) set forth the subject matter applicants regard as the invention, and (B) that the claim(s) particularly point out and distinctly claim the invention. An application will be deficient under the first requirement of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph when evidence including admissions, other than in the application as filed, shows that an applicant has stated what he or she regards the invention to be different from what is claimed (see MPEP § 2171 - MPEP § 2172.01).
An application fails to comply with the second requirement of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph when the claims do not set out and define the invention with a reasonable degree of precision and particularity. In this regard, the definiteness of the language must be analyzed, not in a vacuum, but always in light of the teachings of the disclosure as it would be interpreted by one of ordinary skill in the art. Applicant’s claims, interpreted in light of the disclosure, must reasonably apprise a person of ordinary skill in the art of the invention.
The scope of a “means” limitation is defined as the corresponding structure or material set forth by the
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inventor in the written description and equivalents thereof that perform the claimed function. See MPEP § 2181 through MPEP § 2186. See MPEP § 2173 et seq. for a discussion of a variety of issues pertaining to the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requirement that the claims particularly point out and distinctly claim the invention.
B. DetermineWhether the Claimed Invention Complies with 35 U.S.C. 112(a) or 35 U.S.C. 112, First Paragraph Requirements
35 U.S.C. 112(a) and the first paragraph of pre-AIA 35 U.S.C. 112 contain three separate and distinct requirements:
(A) adequate written description,
(B) enablement, and
(C) best mode.
1. Adequate Written Description
For the written description requirement, an applicant’s specification must reasonably convey to those skilled in the art that the applicant was in possession of the claimed invention as of the date of invention. See MPEP § 2163 for further guidance with respect to the evaluation of a patent application for compliance with the written description requirement.
2. Enabling Disclosure
An applicant’s specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation. The fact that experimentation is complex, however, will not make it undue if a person of skill in the art typically engages in such complex experimentation.
See MPEP § 2164 et seq. for detailed guidance with regard to the enablement requirement of 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph.
3. Best Mode
Determining compliance with the best mode requirement requires a two-prong inquiry:
(1) at the time the application was filed, did the inventor possess a best mode for practicing the invention; and
(2) if the inventor did possess a best mode, does the written description disclose the best mode such that a person skilled in the art could practice it.
See MPEP § 2165 et seq. for additional guidance. Deficiencies related to disclosure of the best mode for carrying out the claimed invention are not usually encountered during examination of an application because evidence to support such a deficiency is seldom in the record. Fonar Corp. v. General Elec. Co., 107 F.3d 1543, 1548-49, 41 USPQ2d at 1804-05.
V. DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 102 AND 103
Reviewing a claimed invention for compliance with 35 U.S.C. 102 and 35 U.S.C.103 begins with a comparison of the claimed subject matter to what is known in the prior art. See MPEP § 2131 - MPEP § 2146 and for specific guidance on patentability determinations under 35 U.S.C. 102 and 35 U.S.C. 103. If no differences are found between the claimed invention and the prior art, then the claimed invention lacks novelty and is to be rejected by USPTO personnel under 35 U.S.C. 102. Once differences are identified between the claimed invention and the prior art, those differences must be assessed and resolved in light of the knowledge possessed by a person of ordinary skill in the art. Against this backdrop, one must determine whether the invention would have been obvious. If not, the claimed invention satisfies 35 U.S.C. 103.
VI. CLEARLY COMMUNICATE FINDINGS, CONCLUSIONS AND THEIR BASES
Once USPTO personnel have concluded the above analyses of the claimed invention under all the statutory provisions, including 35 U.S.C. 101, 35 U.S.C. 112, 35 U.S.C. 102, and 35 U.S.C. 103, they should review all the proposed rejections and their bases to confirm that they are able to set forth a
prima facie case of unpatentability. Only then should any rejection be imposed in an Office action. The Office action should clearly communicate the
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findings, conclusions and reasons which support them.
2104 Patentable Subject Matter [R-07.2015]
35 U.S.C. 101 Inventions patentable
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 101 has been interpreted as imposing four requirements.
First, whoever invents or discovers an eligible invention may obtain only ONE patent therefor. This requirement forms the basis for statutory double patenting rejections when two applications claim the same invention, i.e. claim identical subject matter. See MPEP § 804 for a full discussion of the prohibition against double patenting.
Second, the inventor(s) must be the applicant in an application filed before September 16, 2012, (except as otherwise provided in pre-AIA 37 CFR 1.41(b)) and the inventor or each joint inventor must be identified in an application filed on or after September 16, 2012. See MPEP § 2137.01 for a detailed discussion of inventorship, MPEP § 602.01(c) et seq. for details regarding correction of inventorship, and MPEP § 706.03(a), subsection IV, for rejections under 35 U.S.C. 101 and 115 (and pre-AIA 35 U.S.C. 102(f) for applications subject to pre-AIA 35 U.S.C. 102) for failure to set forth the correct inventorship).
Third, a claimed invention must fall within one of the four eligible categories of invention, i.e., process, machine, manufacture, or composition of matter, as these categories have been interpreted by the courts. See MPEP § 2106 for a detailed discussion of the subject matter eligibility requirements and MPEP § 2105 for special considerations for living subject matter.
Fourth, a claimed invention must be useful or have a utility that is specific, substantial and credible. See
MPEP § 2107 for a detailed discussion of the utility requirement.
2105 Patentable Subject Matter — Living Subject Matter [R-07.2015]
I. INTRODUCTION
The decision of the Supreme Court in Diamond v. Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980), held that microorganisms produced by genetic engineering are not excluded from patent protection by 35 U.S.C. 101. It is clear from Chakrabarty and subsequent judicial decisions that the question of whether or not an invention embraces living matter is irrelevant to the issue of patentability. Note, however, that Congress has excluded claims directed to or encompassing a human organism from patentability. See The Leahy-Smith America Invents Act (AIA), Pub. L. 112-29, sec. 33(a), 125 Stat. 284 (September 16, 2011).
II. LIVING SUBJECT MATTER MAY BE PATENTABLE
A. Living Subject Matter May Be Directed To A Statutory Category
In Chakrabarty, the Supreme Court held that a claim to a genetically engineered bacterium was directed to at least one of the four statutory categories, because the bacterium was a “manufacture” and/or a “composition of matter.”
The Supreme Court made the following points in the Chakrabarty opinion:
1. “Guided by these canons of construction, this Court has read the term ‘manufacture’ in § 101 in accordance with its dictionary definition to mean ‘the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.’” 2. “In choosing such expansive terms as ‘manufacture’ and ‘composition of matter,’ modified by the comprehensive ‘any,’Congress
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plainly contemplated that the patent laws would be given wide scope.” 3. “The Act embodied Jefferson’s philosophy that ‘ingenuity should receive a liberal encouragement.’ 5 Writings of Thomas Jefferson, 75-76 Washington ed. 1871). See Graham v . John Deere Co., 383 U.S. 1, 7-10, 148 USPQ459, 462-464 (1966). Subsequent patent statutes in 1836, 1870, and 1874 employed this same broad language. In 1952, when the patent laws were recodified, Congress replaced the word ‘art’ with ‘process,’ but otherwise left Jefferson’s language intact. The Committee Reports accompanying the 1952 act inform us that Congress intended statutory subject matter to ‘include any thing under the sun that is made by man.’ S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952)” 4. “Congress thus recognized that the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions. Here, respondent’s microorganism is the result of human ingenuity and research.”
A review of these statements as well as the whole Chakrabarty opinion reveals that the Court did not limit its decision to genetically engineered living organisms, and that the Court enunciated a very broad interpretation of “manufacture” and “composition of matter” in 35 U.S.C. 101.
Following the reasoning in Chakrabarty, the Board of Patent Appeals and Interferences determined that animals are patentable subject matter under 35 U.S.C. 101. In Ex parte Allen, 2 USPQ2d 1425 (Bd. Pat. App. & Inter. 1987), the Board decided that a polyploid Pacific coast oyster could have been the proper subject of a patent under 35 U.S.C. 101 if all the criteria for patentability were satisfied. Shortly after the Allen decision, the Commissioner of Patents and Trademarks issued a notice (Animals - Patentability, 1077 O.G. 24, April 21, 1987) that the Patent and Trademark Office would now consider nonnaturally occurring, nonhuman multicellular living organisms, including animals, to be patentable subject matter within the scope of 35 U.S.C. 101.
With respect to plant subject matter, the Supreme Court held that patentable subject matter under 35 U.S.C. 101 includes newly developed plant breeds, even though plant protection is also available under the Plant Patent Act (35 U.S.C. 161 - 164) and the Plant Variety Protection Act (7 U.S.C. 2321 et. seq.). J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’ l, Inc., 534 U.S. 124, 143-46, 122 S.Ct. 593, 605-06, 60 USPQ2d 1865, 1874 (2001) (The scope of coverage of 35 U.S.C. 101 is not limited by the Plant Patent Act or the Plant Variety Protection Act; each statute can be regarded as effective because of its different requirements and protections). In analyzing the history of the Plant Patent Act of 1930 in Chakrabarty, the Court stated: “In enacting the Plant Patent Act, Congress addressed both of these concerns [the concern that plants, even those artificially bred, were products of nature for purposes of the patent law and the concern that plants were thought not amenable to the written description requirements of the patent law]. It explained at length its belief that the work of the plant breeder ‘in aid of nature’was patentable invention. S. Rep. No. 315, 71st Cong., 2d Sess., 6-8 (1930); H.R. Rep. No. 1129, 71st Cong., 2d Sess., 7-9 (1930).” See also Ex parte Hibberd, 227 USPQ 443 (Bd. Pat. App. & Inter. 1985), wherein the Board held that plant subject matter may be the proper subject of a patent under 35 U.S.C. 101 even though such subject matter may be protected under the Plant Patent Act or the Plant Variety Protection Act.
See MPEP § 2106, subsection I, for a discussion of the categories of statutory subject matter.
B. Living Subject Matter May Be Eligible for Patent Protection
The Supreme Court in Chakrabarty held a claim to a genetically engineered bacterium eligible, because the claimed bacterium was not a “product of nature” exception. In so holding, the Court made the following points:
1. “This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable.” 2. “Thus, a new mineral discovered in the earth or a new plant found in the wild is not
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patentable subject matter. Likewise, Einstein
could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity.” 3. “His claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter - a product of human ingenuity ‘having a distinctive name, character [and] use.’” 4. After reference to Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 76 USPQ 280 (1948), “Here, by contrast, the patentee has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility. His discovery is not nature’s handiwork, but his own; accordingly it is patentable subject matter under § 101.”
A review of these statements as well as the whole Chakrabarty opinion reveals that “laws of nature,
physical phenomena and abstract ideas” are not patentable subject matter. See MPEP § 2106, subsection II, for a discussion of the judicial exceptions.
A more recent judicial decision from the Federal Circuit indicated that “discoveries that possess ‘markedly different characteristics from any found in nature,’ … are eligible for patent protection.” In re Roslin Institute (Edinburgh), 750 F.3d 1333, 1336, 110 USPQ2d 1668, 1671 (Fed. Cir. 2014), quoting
Chakrabarty, 447 U.S. at 310. In Roslin, the claimed invention was a live-born clone of a pre-existing, non-embryonic, donor mammal selected from cattle, sheep, pigs, and goats. An embodiment of the claimed invention was the famous Dolly the Sheep, which the court stated was “the first mammal ever cloned from an adult somatic cell.” Despite acknowledging that the method used to create the claimed clones “constituted a breakthrough in scientific discovery”, the court held the claims ineligible because “Dolly herself is an exact genetic replica of another sheep and does not possess ‘markedly different characteristics from any [farm animals] found in nature.’” Roslin, 750 F.3d at 1337, 110 USPQ2d at 1671.
Office personnel are to consult the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (December 16, 2014) and related materials available at www.uspto.gov/patent/ laws-and-regulations/examination-policy/2014-interim- guidance-subject-matter-eligibility-0 to determine whether a nature-based product such as living subject matter is eligible for patent protection. See also MPEP § 2106, subsection II.
III. HUMAN ORGANISMS ARE NONSTATUTORY SUBJECT MATTER
Congress has excluded claims directed to or encompassing a human organism from patentability. The Leahy-SmithAmerica InventsAct (AIA), Public Law 112-29, sec. 33(a), 125 Stat. 284, states:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
The legislative history of the AIA includes the following statement, which sheds light on the meaning of this provision:
[T]he U.S. Patent Office has already issued patents on genes, stems cells, animals with human genes, and a host of non-biologic products used by humans, but it has not issued patents on claims directed to human organisms, including human embryos and fetuses. My amendment would not affect the former, but would simply affirm the latter.
157 Cong. Rec. E1177-04 (testimony of Representative Dave Weldon previously presented in connection with the Consolidated Appropriations Act, 2004, Public Law 108-199, 634, 118 Stat. 3, 101, and later resubmitted with regard to the AIA; see 149 Cong. Rec. E2417-01). Thus, section 33(a) of theAIA codifies existing Office policy that human organisms are not patent-eligible subject matter.
If the broadest reasonable interpretation of the claimed invention as a whole encompasses a human organism, then a rejection under 35 U.S.C. 101 and AIA sec. 33(a) must be made indicating that the claimed invention is directed to a human organism
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and is therefore nonstatutory subject matter. Form paragraph 7.04.03 should be used; see MPEP § 706.03(a). Furthermore, the claimed invention must be examined with regard to all issues pertinent to patentability, and any applicable rejections under 35 U.S.C. 102, 103, or 112 must also be made.
2106 Patent Subject Matter Eligibility [R-07.2015]
There are two criteria for determining subject matter eligibility under 35 U.S.C. 101 and both must be satisfied. The claimed invention (1) must be directed to one of the four statutory categories, and (2) must not be wholly directed to subject matter encompassing a judicially recognized exception, as defined below. The following two step analysis is used to evaluate these criteria.
I. THE FOUR CATEGORIES OF STATUTORY SUBJECT MATTER
Step 1: Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? The subject matter of the claim must be directed to one of the four subject matter categories. If it is not, the claim is not eligible for patent protection and should be rejected under 35 U.S.C. 101, for at least this reason. A summary of the four categories of invention, as they have been defined by the courts, are:
i. Process – an act, or a series of acts or steps. See Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972) ("A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing." (emphasis added) (quoting Cochrane v. Deener, 94 U.S. 780, 788, 24 L. Ed. 139, 1877 Dec. Comm'r Pat. 242 (1876))); NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1316, 75 USPQ2d 1763, 1791 (Fed. Cir. 2005) ("[A] process is a series of acts." (quoting Minton v. Natl. Ass’n. of Securities Dealers, 336 F.3d 1373, 336 F.3d 1373, 1378, 67 USPQ2d 1614, 1681 (Fed. Cir. 2003))). See also 35 U.S.C. 100(b); Bilski v. Kappos, 561 U.S. 593, 130 S. Ct. 3218, 95 USPQ2d 1001 (2010).
ii. Machine – a concrete thing, consisting of parts, or of certain devices and combination of devices. Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570, 17 L. Ed. 650 (1863). This includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. Corning v. Burden, 56 U.S. 252, 267, 14 L. Ed. 683 (1854).
iii. Manufacture – an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery. Diamond v. Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193, 197 (1980) (emphasis added) (quoting Am. Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11, 51 S. Ct. 328, 75 L. Ed. 801, 1931 (Dec. Comm'r Pat. 711 (1931))).
iv. Composition of matter – all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids, for example. Chakrabarty, 447 U.S. at 308, 206 USPQ at 197.
Non-limiting examples of claims that are not directed to one of the statutory categories:
i. transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se), In re Nuijten, 500 F.3d 1346, 1357, 84 USPQ2d 1495, 1503 (Fed. Cir. 2007);
ii. a human per se, The Leahy-Smith America Invents Act (AIA), Public Law 112-29, sec. 33, 125 Stat. 284 (September 16, 2011);
iii. a legal contractual agreement between two parties, see In re Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, 1039-40 (Fed. Cir. 2009) (cert. denied);
iv. a computer program per se, Gottschalk v. Benson, 409 U.S. at 72, 175 USPQ at 676-77;
v. a company, Ferguson, 558 F.3d at 1366, 90 USPQ at 1040;
vi. a mere arrangement of printed matter, In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969); and
vii. data per se, Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1720 (Fed. Cir. 2014).
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A claim that covers both statutory and non-statutory embodiments (under the broadest reasonable interpretation of the claim when read in light of the specification and in view of one skilled in the art) embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. Such claims fail the first step (Step 1: NO) and should be rejected under 35 U.S.C. 101, for at least this reason.
For example, machine readable media can encompass non-statutory transitory forms of signal transmission, such as, a propagating electrical or electromagnetic signal per se. See In re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007). When the broadest reasonable interpretation of machine readable media in light of the specification as it would be interpreted by one of ordinary skill in the art encompasses transitory forms of signal transmission, a rejection under 35 U.S.C. 101 as failing to claim statutory subject matter would be appropriate. Thus, a claim to a computer readable medium that can be a compact disc or a carrier wave covers a non-statutory embodiment and therefore should be rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
If the claimed invention is clearly not within one of the four categories, then a rejection under 35 U.S.C. 101 must be made indicating that the claimed invention is directed to non-statutory subject matter. Form paragraphs 7.05 and 7.05.01 should be used; see MPEP § 706.03(a). However, when the claim fails under Step 1 and it appears from applicant’s disclosure that the claim could be amended to be directed to a statutory category, Step 2 below should still be conducted.
II. JUDICIAL EXCEPTIONS TO THE FOUR CATEGORIES
Step 2: Does the claim wholly embrace a judicially recognized exception, which includes laws of nature, natural phenomena, and abstract ideas? Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 2354, 110 USPQ2d 1976, 1980 (2014) (citing Association for Molecular Pathology v. Myriad
Genetics, Inc. 569 U.S. _, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972, 1979 (2013)). See also Bilski v. Kappos, 561 U.S.593, 601, 130 S. Ct. 3218, 3225,
95 USPQ2d 1001, 1005-06 (2010) (stating “The Court's precedents provide three specific exceptions to § 101's broad patent-eligibility principles: ‘laws of nature, physical phenomena, and abstract ideas.’”) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 309, 206 USPQ 193, 197 (1980)).
Determining that a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter) does not end the eligibility analysis because claims directed to nothing more than abstract ideas (such as mathematical algorithms), natural phenomena, and laws of nature are not eligible for patent protection. Diamond v. Diehr, 450 U.S. 175, 185, 209 USPQ
1, 7 (1981); accord, e.g., Chakrabarty, 447 U.S. at 309, 206 USPQ at 197; Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978); Benson, 409 U.S. at 67-68 , 175 USPQ at 675.
In addition to the terms "laws of nature," "natural phenomena," and "abstract ideas," judicially recognized exceptions have been described using various other terms, including "physical phenomena," "scientific principles," "systems that depend on human intelligence alone," "disembodied concepts," "mental processes" and "disembodied mathematical algorithms and formulas," for example. The exceptions reflect the courts’view that the basic tools of scientific and technological work are not patentable. “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Le Roy v. Tatham,55 U.S. (14 How.) 156, 175 (1852). Instead, such “manifestations of laws of nature” are “part of the storehouse of knowledge,” “free to all men and reserved exclusively to none.” Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948).
Thus, “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter” under Section 101. Chakrabarty, 447 U.S. at 309, 206 USPQ at 197. “Likewise, Einstein could
not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity.” Id. Nor can one patent “a novel and useful mathematical formula,” Flook, 437 U.S. at 585, 198 USPQ at 195;
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electromagnetism or steam power, O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113-114 (1853); or “[t]he qualities of ... bacteria, ... the heat of the sun, electricity, or the qualities of metals,” Funk, 333 U.S. at 130, 76 USPQ at 281; see Le Roy, 55 U.S. (14 How.) at 175.
Analysis Of Subject Matter Eligibility
While abstract ideas, natural phenomena, and laws of nature are not eligible for patenting, methods and products employing abstract ideas, natural phenomena, and laws of nature to perform a real-world function may well be. Thus, if a claim is directed to a judicial exception, it must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination, are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself - this has been termed a search for an inventive concept. Alice Corp., 134 S. Ct. at 2357, 110 USPQ2d at 1981. This analysis considers whether the claim as a whole is for a particular application of an abstract idea, natural phenomenon, or law of nature, as opposed to the abstract idea, natural phenomenon, or law of nature itself. Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289, 1293-94, 101 USPQ2d 1961, 1965-66 (2012) (citing Diehr, 450 U.S. at 187, 209 USPQ at 7).
For a detailed discussion of the analysis required to determine whether a claim is directed to patent-eligible subject matter, see the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (December 16, 2014) and related materials available at www.uspto.gov /patent/laws-and-regulations/examination-policy/2014- interim-guidance-subject-matter-eligibility-0.
III. Establish on the Record a Prima Facie Case
USPTO personnel should review the totality of the evidence (e.g., the specification, claims, relevant prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter. USPTO personnel must reach a conclusion as to whether it is more likely than not that the claimed invention as a whole either falls outside of one of the enumerated statutory classes
or within one of the exceptions to statutory subject matter. “The examiner bears the initial burden … of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). If the record as a whole suggests that it is more likely than not that the claimed invention would be considered significantly more than an abstract idea, natural phenomenon, or law of nature, then USPTO personnel should not reject the claim.
After USPTO personnel identify and explain in the record the reasons why a claim is for an abstract idea, natural phenomenon, or law of nature without significantly more, then the burden shifts to the applicant to either amend the claim or make a showing of why the claim is eligible for patent protection. See, e.g., In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995).
Under the principles of compact prosecution, regardless of whether a rejection under 35 U.S.C. 101 is made based on lack of subject matter eligibility, a complete examination should be made for every claim under each of the other patentability requirements: 35 U.S.C. 102, 103, 112, and 101 (utility, inventorship and double patenting) and non-statutory double patenting. Thus, Office personnel should state all non-cumulative reasons and bases for rejecting claims in the first Office action.
2106.01 [Reserved]
2107 Guidelines for Examination of Applications for Compliance with the Utility Requirement [R-11.2013]
I. INTRODUCTION
The following Guidelines establish the policies and procedures to be followed by Office personnel in the evaluation of any patent application for compliance with the utility requirements of 35 U.S.C. 101 and 35 U.S.C. 112(a), or pre-AIA 35 U.S.C. 112, first paragraph. These Guidelines have been promulgated to assist Office personnel in their review of applications for compliance with the utility requirement. The Guidelines do not alter the
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substantive requirements of 35 U.S.C. 101 and 35 U.S.C. 112, nor are they designed to obviate the examiner’s review of applications for compliance with all other statutory requirements for patentability. The Guidelines do not constitute substantive rulemaking and hence do not have the force and effect of law. Rejections will be based upon the substantive law, and it is these rejections which are appealable. Consequently, any perceived failure by Office personnel to follow these Guidelines is neither appealable nor petitionable.
II. EXAMINATION GUIDELINES FOR THE UTILITY REQUIREMENT
Office personnel are to adhere to the following procedures when reviewing patent applications for compliance with the “useful invention” (“utility”) requirement of 35 U.S.C. 101 and 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
(A) Read the claims and the supporting written description.
(1) Determine what the applicant has claimed, noting any specific embodiments of the invention.
(2) Ensure that the claims define statutory subject matter (i.e., a process, machine, manufacture, composition of matter, or improvement thereof).
(3) If at any time during the examination, it becomes readily apparent that the claimed invention has a well-established utility, do not impose a rejection based on lack of utility. An invention has a well-established utility if (i) a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (e.g., properties or applications of a product or process), and (ii) the utility is specific, substantial, and credible.
(B) Review the claims and the supporting written description to determine if the applicant has asserted for the claimed invention any specific and substantial utility that is credible:
(1) If the applicant has asserted that the claimed invention is useful for any particular practical purpose (i.e., it has a “specific and substantial utility”) and the assertion would be considered credible by a person of ordinary skill in
the art, do not impose a rejection based on lack of utility.
(i) A claimed invention must have a specific and substantial utility. This requirement excludes “throw-away,” “insubstantial,” or “nonspecific” utilities, such as the use of a complex invention as landfill, as a way of satisfying the utility requirement of 35 U.S.C. 101.
(ii) Credibility is assessed from the perspective of one of ordinary skill in the art in view of the disclosure and any other evidence of record (e.g., test data, affidavits or declarations from experts in the art, patents or printed publications) that is probative of the applicant’s assertions. An applicant need only provide one credible assertion of specific and substantial utility for each claimed invention to satisfy the utility requirement.
(2) If no assertion of specific and substantial utility for the claimed invention made by the applicant is credible, and the claimed invention does not have a readily apparent well-established utility, reject the claim(s) under 35 U.S.C. 101 on the grounds that the invention as claimed lacks utility. Also reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, on the basis that the disclosure fails to teach how to use the invention as claimed. The 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection imposed in conjunction with a 35 U.S.C. 101 rejection should incorporate by reference the grounds of the corresponding 35 U.S.C. 101 rejection.
(3) If the applicant has not asserted any specific and substantial utility for the claimed invention and it does not have a readily apparent well-established utility, impose a rejection under 35 U.S.C. 101, emphasizing that the applicant has not disclosed a specific and substantial utility for the invention. Also impose a separate rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, on the basis that the applicant has not disclosed how to use the invention due to the lack of a specific and substantial utility. The 35 U.S.C. 101 and 35 U.S.C. 112 rejections shift the burden of coming forward with evidence to the applicant to:
(i) Explicitly identify a specific and substantial utility for the claimed invention; and
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(ii) Provide evidence that one of ordinary skill in the art would have recognized that the identified specific and substantial utility was well-established at the time of filing. The examiner should review any subsequently submitted evidence of utility using the criteria outlined above. The examiner should also ensure that there is an adequate nexus between the evidence and the properties of the now claimed subject matter as disclosed in the application as filed. That is, the applicant has the burden to establish a probative relation between the submitted evidence and the originally disclosed properties of the claimed invention.
(C) Any rejection based on lack of utility should include a detailed explanation why the claimed invention has no specific and substantial credible utility. Whenever possible, the examiner should provide documentary evidence regardless of publication date (e.g., scientific or technical journals, excerpts from treatises or books, or U.S. or foreign patents) to support the factual basis for the prima facie showing of no specific and substantial credible utility. If documentary evidence is not available, the examiner should specifically explain the scientific basis for his or her factual conclusions.
(1) Where the asserted utility is not specific or substantial, a prima facie showing must establish that it is more likely than not that a person of ordinary skill in the art would not consider that any utility asserted by the applicant would be specific and substantial. The prima facie showing must contain the following elements:
(i) An explanation that clearly sets forth the reasoning used in concluding that the asserted utility for the claimed invention is not both specific and substantial nor well-established;
(ii) Support for factual findings relied upon in reaching this conclusion; and
(iii) An evaluation of all relevant evidence of record, including utilities taught in the closest prior art.
(2) Where the asserted specific and substantial utility is not credible, a prima facie showing of no specific and substantial credible utility must establish that it is more likely than not that a person skilled in the art would not consider credible any specific and substantial utility asserted by the
applicant for the claimed invention. The prima facie showing must contain the following elements:
(i) An explanation that clearly sets forth the reasoning used in concluding that the asserted specific and substantial utility is not credible;
(ii) Support for factual findings relied upon in reaching this conclusion; and
(iii) An evaluation of all relevant evidence of record, including utilities taught in the closest prior art.
(3) Where no specific and substantial utility is disclosed or is well-established, a prima facie showing of no specific and substantial utility need only establish that applicant has not asserted a utility and that, on the record before the examiner, there is no known well-established utility.
(D) A rejection based on lack of utility should not be maintained if an asserted utility for the claimed invention would be considered specific, substantial, and credible by a person of ordinary skill in the art in view of all evidence of record.
Office personnel are reminded that they must treat as true a statement of fact made by an applicant in relation to an asserted utility, unless countervailing evidence can be provided that shows that one of ordinary skill in the art would have a legitimate basis to doubt the credibility of such a statement. Similarly, Office personnel must accept an opinion from a qualified expert that is based upon relevant facts whose accuracy is not being questioned; it is improper to disregard the opinion solely because of a disagreement over the significance or meaning of the facts offered.
Once a prima facie showing of no specific and substantial credible utility has been properly established, the applicant bears the burden of rebutting it. The applicant can do this by amending the claims, by providing reasoning or arguments, or by providing evidence in the form of a declaration under 37 CFR 1.132 or a patent or a printed publication that rebuts the basis or logic of the prima facie showing. If the applicant responds to the prima facie rejection, the Office personnel should review the original disclosure, any evidence relied upon in establishing the prima facie showing, any claim
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amendments, and any new reasoning or evidence provided by the applicant in support of an asserted specific and substantial credible utility. It is essential for Office personnel to recognize, fully consider and respond to each substantive element of any response to a rejection based on lack of utility. Only where the totality of the record continues to show that the asserted utility is not specific, substantial, and credible should a rejection based on lack of utility be maintained.
If the applicant satisfactorily rebuts a prima facie rejection based on lack of utility under 35 U.S.C. 101, withdraw the 35 U.S.C. 101 rejection and the corresponding rejection imposed under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
2107.01 General Principles Governing Utility Rejections [R-07.2015]
35 U.S.C. 101 Inventions patentable
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent therefor, subject to the conditions and requirements of this title.
See MPEP § 2107 for guidelines for the examination of applications for compliance with the utility requirement of 35 U.S.C. 101.
The Office must examine each application to ensure compliance with the “useful invention” or utility requirement of 35 U.S.C. 101. In discharging this obligation, however, Office personnel must keep in mind several general principles that control application of the utility requirement. 35 U.S.C. 101 has been interpreted as imposing four purposes. First, 35 U.S.C. 101 limits an inventor to ONE patent for a claimed invention. If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims included in more than one application that are directed to the same invention. See MPEP § 804. Second, the inventor(s) must be the applicant in an application filed before September 16, 2012, (except as otherwise provided in pre-AIA 37 CFR 1.41(b)) and the inventor or each joint inventor must be identified in an application filed on or after September 16, 2012. See MPEP § 2137.01 for a detailed discussion of inventorship, MPEP § 602.01(c) et seq. for details
regarding correction of inventorship, and MPEP § 706.03(a), subsection IV, for rejections under 35 U.S.C. 101 and 115 (and pre-AIA 35 U.S.C. 102(f) for applications subject to pre-AIA 35 U.S.C. 102) for failure to set forth the correct inventorship). Third, 35 U.S.C. 101 defines which categories of inventions are eligible for patent protection. An invention that is not a machine, an article of manufacture, a composition or a process cannot be patented. See Diamond v. Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980); Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981); In re Nuijten, 500 F.3d 1346, 1354, 84 USPQ2d 1495, 1500 (Fed. Cir. 2007). Fourth, 35 U.S.C. 101 serves to ensure that patents are granted on only those inventions that are “useful.” This second purpose has a Constitutional footing — Article I, Section 8 of the Constitution authorizes Congress to provide exclusive rights to inventors to promote the “useful arts.” See Carl Zeiss Stiftung v. Renishaw PLC, 945 F.2d 1173, 20 USPQ2d 1094 (Fed. Cir. 1991). Thus, to satisfy the requirements of 35 U.S.C. 101, an applicant must claim an invention that is statutory subject matter and must show that the claimed invention is “useful” for some purpose either explicitly or implicitly. Application of this latter element of 35 U.S.C. 101 is the focus of these guidelines.
Deficiencies under the “useful invention” requirement of 35 U.S.C. 101 will arise in one of two forms. The first is where it is not apparent why the invention is “useful.” This can occur when an applicant fails to identify any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention. Brenner v. Manson, 383 U.S. 519, 148 USPQ 689
(1966); In re Fisher, 421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir. 2005); In re Ziegler, 992 F.2d 1197, 26 USPQ2d 1600 (Fed. Cir. 1993). The second type of deficiency arises in the rare instance where an assertion of specific and substantial utility for the invention made by an applicant is not credible.
I. SPECIFIC AND SUBSTANTIAL REQUIREMENTS
To satisfy 35 U.S.C. 101, an invention must be “useful.” Courts have recognized that the term
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“useful” used with reference to the utility requirement can be a difficult term to define. Brenner v. Manson, 383 U.S. 519, 529, 148 USPQ
689, 693 (1966) (simple everyday word like “useful” can be “pregnant with ambiguity when applied to the facts of life.”). Where an applicant has set forth a specific and substantial utility, courts have been reluctant to uphold a rejection under 35 U.S.C. 101 solely on the basis that the applicant’s opinion as to the nature of the specific and substantial utility was inaccurate. For example, in Nelson v. Bowler, 626 F.2d 853, 206 USPQ 881 (CCPA 1980), the court reversed a finding by the Office that the applicant had not set forth a “practical” utility under 35 U.S.C. 101. In this case the applicant asserted that the composition was “useful” in a particular pharmaceutical application and provided evidence to support that assertion. Courts have used the labels “practical utility,” “substantial utility,” or “specific utility” to refer to this aspect of the “useful invention” requirement of 35 U.S.C. 101. The Court of Customs and Patent Appeals has stated:
Practical utility is a shorthand way of attributing “real-world” value to claimed subject matter. In other words, one skilled in the art can use a claimed discovery in a manner which provides some immediate benefit to the public.
Nelson v. Bowler, 626 F.2d 853, 856, 206 USPQ 881, 883 (CCPA 1980).
Practical considerations require the Office to rely on the inventor’s understanding of his or her invention in determining whether and in what regard an invention is believed to be “useful.” Because of this, Office personnel should focus on and be receptive to assertions made by the applicant that an invention is “useful” for a particular reason.
A. Specific Utility
A “specific utility” is specific to the subject matter claimed and can “provide a well-defined and particular benefit to the public.” In re Fisher, 421 F.3d 1365, 1371, 76 USPQ2d 1225, 1230 (Fed. Cir. 2005). This contrasts with a general utility that would be applicable to the broad class of the
invention. Office personnel should distinguish between situations where an applicant has disclosed a specific use for or application of the invention and situations where the applicant merely indicates that the invention may prove useful without identifying with specificity why it is considered useful. For example, indicating that a compound may be useful in treating unspecified disorders, or that the compound has “useful biological” properties, would not be sufficient to define a specific utility for the compound. See, e.g., In re Kirk, 376 F.2d 936, 153 USPQ 48 (CCPA 1967); In re Joly, 376 F.2d 906, 153 USPQ 45 (CCPA 1967). Similarly, a claim to a polynucleotide whose use is disclosed simply as a “gene probe” or “chromosome marker” would not be considered to be specific in the absence of a disclosure of a specific DNA target. See In re Fisher, 421 F.3d at 1374, 76 USPQ2d at 1232 (“Any EST [expressed sequence tag] transcribed from any gene in the maize genome has the potential to perform any one of the alleged uses…. Nothing about [applicant’s] seven alleged uses set the five claimed ESTs apart from the more than 32,000 ESTs disclosed in the [ ] application or indeed from any EST derived from any organism. Accordingly, we conclude that [applicant] has only disclosed general uses for its claimed ESTs, not specific ones that satisfy § 101.”). A general statement of diagnostic utility, such as diagnosing an unspecified disease, would ordinarily be insufficient absent a disclosure of what condition can be diagnosed. Contrast the situation where an applicant discloses a specific biological activity and reasonably correlates that activity to a disease condition. Assertions falling within the latter category are sufficient to identify a specific utility for the invention. Assertions that fall in the former category are insufficient to define a specific utility for the invention, especially if the assertion takes the form of a general statement that makes it clear that a “useful” invention may arise from what has been disclosed by the applicant. Knapp v. Anderson, 477 F.2d 588, 177 USPQ 688
(CCPA 1973).
B. Substantial Utility
“[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. Simply put, to satisfy the
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‘substantial’utility requirement, an asserted use must show that the claimed invention has a significant and presently available benefit to the public.” Fisher, 421 F.3d at 1371, 76 USPQ2d at 1230. The claims at issue in Fisher were directed to expressed sequence tags (ESTs), which are short nucleotide sequences that can be used to discover what genes and downstream proteins are expressed in a cell. The court held that “the claimed ESTs can be used only to gain further information about the underlying genes and the proteins encoded for by those genes. The claimed ESTs themselves are not an end of [applicant’s] research effort, but only tools to be used along the way in the search for a practical utility…. [Applicant] does not identify the function for the underlying protein-encoding genes. Absent such identification, we hold that the claimed ESTs have not been researched and understood to the point of providing an immediate, well-defined, real world benefit to the public meriting the grant of a patent.”
Id. at 1376, 76 USPQ2d at 1233-34). Thus a “substantial utility” defines a “real world” use. Utilities that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use are not substantial utilities. For example, both a therapeutic method of treating a known or newly discovered disease and an assay method for identifying compounds that themselves have a “substantial utility” define a “real world” context of use. An assay that measures the presence of a material which has a stated correlation to a predisposition to the onset of a particular disease condition would also define a “real world” context of use in identifying potential candidates for preventive measures or further monitoring. On the other hand, the following are examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use and, therefore, do not define “substantial utilities”:
(A) Basic research such as studying the properties of the claimed product itself or the mechanisms in which the material is involved;
(B) A method of treating an unspecified disease or condition;
(C) A method of assaying for or identifying a material that itself has no specific and/or substantial utility;
(D) A method of making a material that itself has no specific, substantial, and credible utility; and
(E) A claim to an intermediate product for use in making a final product that has no specific, substantial and credible utility.
Office personnel must be careful not to interpret the phrase “immediate benefit to the public” or similar formulations in other cases to mean that products or services based on the claimed invention must be “currently available” to the public in order to satisfy the utility requirement. See, e.g., Brenner v. Manson, 383 U.S. 519, 534-35, 148 USPQ 689, 695 (1966). Rather, any reasonable use that an applicant has identified for the invention that can be viewed as providing a public benefit should be accepted as sufficient, at least with regard to defining a “substantial” utility.
C. Research Tools
Some confusion can result when one attempts to label certain types of inventions as not being capable of having a specific and substantial utility based on the setting in which the invention is to be used. One example is inventions to be used in a research or laboratory setting. Many research tools such as gas chromatographs, screening assays, and nucleotide sequencing techniques have a clear, specific and unquestionable utility (e.g., they are useful in analyzing compounds). An assessment that focuses on whether an invention is useful only in a research setting thus does not address whether the invention is in fact “useful” in a patent sense. Instead, Office personnel must distinguish between inventions that have a specifically identified substantial utility and inventions whose asserted utility requires further research to identify or reasonably confirm. Labels such as “research tool,” “intermediate” or “for research purposes” are not helpful in determining if an applicant has identified a specific and substantial utility for the invention.
II. WHOLLY INOPERATIVE INVENTIONS; “INCREDIBLE” UTILITY
An invention that is “inoperative” (i.e., it does not operate to produce the results claimed by the patent applicant) is not a “useful” invention in the meaning of the patent law. See, e.g., Newman v. Quigg,
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877 F.2d 1575, 1581, 11 USPQ2d 1340, 1345 (Fed. Cir. 1989); In re Harwood, 390 F.2d 985, 989, 156 USPQ 673, 676 (CCPA 1968) (“An inoperative invention, of course, does not satisfy the requirement of 35 U.S.C. 101 that an invention be useful.”). However, as the Federal Circuit has stated, “[t]o violate [35 U.S.C.] 101 the claimed device must be totally incapable of achieving a useful result.” Brooktree Corp. v. Advanced Micro Devices, Inc.,
977 F.2d 1555, 1571, 24 USPQ2d 1401, 1412 (Fed. Cir. 1992) (emphasis added). See also E.I. du Pont De Nemours and Co. v. Berkley and Co., 620 F.2d 1247, 1260 n.17, 205 USPQ 1, 10 n.17 (8th Cir. 1980) (“A small degree of utility is sufficient . . . The claimed invention must only be capable of performing some beneficial function . . . An invention does not lack utility merely because the particular embodiment disclosed in the patent lacks perfection or performs crudely . . . A commercially successful product is not required . . . Nor is it essential that the invention accomplish all its intended functions . . . or operate under all conditions . . . partial success being sufficient to demonstrate patentable utility . . . In short, the defense of non-utility cannot be sustained without proof of total incapacity.” If an invention is only partially successful in achieving a useful result, a rejection of the claimed invention as a whole based on a lack of utility is not appropriate. See In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995); In re Gardner, 475 F.2d 1389, 177 USPQ 396 (CCPA), reh’g denied, 480 F.2d 879 (CCPA 1973); In re
Marzocchi, 439 F.2d 220, 169 USPQ 367 (CCPA 1971).
Situations where an invention is found to be “inoperative” and therefore lacking in utility are rare, and rejections maintained solely on this ground by a federal court even rarer. In many of these cases, the utility asserted by the applicant was thought to be “incredible in the light of the knowledge of the art, or factually misleading” when initially considered by the Office. In re Citron, 325 F.2d 248, 253, 139 USPQ 516, 520 (CCPA 1963). Other cases suggest that on initial evaluation, the Office considered the asserted utility to be inconsistent with known scientific principles or “speculative at best” as to whether attributes of the invention necessary to impart the asserted utility were actually present in the invention. In re Sichert, 566 F.2d 1154, 196
USPQ 209 (CCPA 1977). However cast, the underlying finding by the court in these cases was that, based on the factual record of the case, it was clear that the invention could not and did not work as the inventor claimed it did. Indeed, the use of many labels to describe a single problem (e.g., a false assertion regarding utility) has led to some of the confusion that exists today with regard to a rejection based on the “utility” requirement. Examples of such cases include: an invention asserted to change the taste of food using a magnetic field (Fregeau v. Mossinghoff, 776 F.2d 1034, 227 USPQ 848 (Fed. Cir. 1985)), a perpetual motion machine (Newman v. Quigg, 877 F.2d 1575, 11 USPQ2d 1340 (Fed. Cir. 1989)), a flying machine operating on “flapping or flutter function” (In re Houghton, 433 F.2d 820, 167 USPQ 687 (CCPA 1970)), a “cold fusion” process for producing energy (In re Swartz, 232 F.3d 862, 56 USPQ2d 1703 (Fed. Cir. 2000)), a method for increasing the energy output of fossil fuels upon combustion through exposure to a magnetic field (In re Ruskin, 354 F.2d 395, 148 USPQ 221 (CCPA 1966)), uncharacterized compositions for curing a wide array of cancers (In re Citron, 325 F.2d 248, 139 USPQ 516 (CCPA 1963)), and a method of controlling the aging process (In re Eltgroth, 419 F.2d 918, 164 USPQ 221
(CCPA 1970)). These examples are fact specific and should not be applied as a per se rule. Thus, in view of the rare nature of such cases, Office personnel should not label an asserted utility “incredible,” “speculative” or otherwise unless it is clear that a rejection based on “lack of utility” is proper.
III. THERAPEUTIC OR PHARMACOLOGICAL UTILITY
Inventions asserted to have utility in the treatment of human or animal disorders are subject to the same legal requirements for utility as inventions in any other field of technology. In re Chilowsky, 229 F.2d 457, 461-2, 108 USPQ 321, 325 (CCPA 1956) (“There appears to be no basis in the statutes or decisions for requiring any more conclusive evidence of operativeness in one type of case than another. The character and amount of evidence needed may vary, depending on whether the alleged operation described in the application appears to accord with or to contravene established scientific principles or to depend upon principles alleged but not generally
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recognized, but the degree of certainty as to the ultimate fact of operativeness or inoperativeness should be the same in all cases”); In re Gazave, 379 F.2d 973, 978, 154 USPQ 92, 96 (CCPA 1967) (“Thus, in the usual case where the mode of operation alleged can be readily understood and conforms to the known laws of physics and chemistry, operativeness is not questioned, and no further evidence is required.”). As such, pharmacological or therapeutic inventions that provide any “immediate benefit to the public” satisfy 35 U.S.C. 101. The utility being asserted in Nelson related to a compound with pharmacological utility. Nelson v. Bowler, 626 F.2d 853, 856, 206 USPQ
881, 883 (CCPA 1980). Office personnel should rely on Nelson and other cases as providing general guidance when evaluating the utility of an invention that is based on any therapeutic, prophylactic, or pharmacological activities of that invention.
Courts have repeatedly found that the mere identification of a pharmacological activity of a compound that is relevant to an asserted pharmacological use provides an “immediate benefit to the public” and thus satisfies the utility requirement. As the Court of Customs and Patent Appeals held in Nelson v. Bowler:
Knowledge of the pharmacological activity of any compound is obviously beneficial to the public. It is inherently faster and easier to combat illnesses and alleviate symptoms when the medical profession is armed with an arsenal of chemicals having known pharmacological activities. Since it is crucial to provide researchers with an incentive to disclose pharmacological activities in as many compounds as possible, we conclude that adequate proof of any such activity constitutes a showing of practical utility.
Nelson v. Bowler, 626 F.2d 853, 856, 206 USPQ 881, 883 (CCPA 1980).
In Nelson v. Bowler, the court addressed the practical utility requirement in the context of an interference proceeding. Bowler challenged the patentability of the invention claimed by Nelson on the basis that Nelson had failed to sufficiently and
persuasively disclose in his application a practical utility for the invention. Nelson had developed and claimed a class of synthetic prostaglandins modeled on naturally occurring prostaglandins. Naturally occurring prostaglandins are bioactive compounds that, at the time of Nelson’s application, had a recognized value in pharmacology (e.g., the stimulation of uterine smooth muscle which resulted in labor induction or abortion, the ability to raise or lower blood pressure, etc.). To support the utility he identified in his disclosure, Nelson included in his application the results of tests demonstrating the bioactivity of his new substituted prostaglandins relative to the bioactivity of naturally occurring prostaglandins. The court concluded that Nelson had satisfied the practical utility requirement in identifying the synthetic prostaglandins as pharmacologically active compounds. In reaching this conclusion, the court considered and rejected arguments advanced by Bowler that attacked the evidentiary basis for Nelson’s assertions that the compounds were pharmacologically active.
In In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980), an inventor claimed protection for pharmaceutical compositions for treating leukemia. The active ingredient in the compositions was a structural analog to a known anticancer agent. The applicant provided evidence showing that the claimed analogs had the same general pharmaceutical activity as the known anticancer agents. The court reversed the Board’s finding that the asserted pharmaceutical utility was “incredible,” pointing to the evidence that showed the relevant pharmacological activity.
In Cross v. Iizuka, 753 F.2d 1040, 224 USPQ 739 (Fed. Cir. 1985), the Federal Circuit affirmed a finding by the Board of Patent Appeals and Interferences that a pharmacological utility had been disclosed in the application of one party to an interference proceeding. The invention that was the subject of the interference count was a chemical compound used for treating blood disorders. Cross had challenged the evidence in Iizuka’s specification that supported the claimed utility. However, the Federal Circuit relied extensively on Nelson v. Bowler in finding that Iizuka’s application had sufficiently disclosed a pharmacological utility for the compounds. It distinguished the case from
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cases where only a generalized “nebulous” expression, such as “biological properties,” had been disclosed in a specification. Such statements, the court held, “convey little explicit indication regarding the utility of a compound.” Cross, 753 F.2d at 1048, 224 USPQ at 745 (citing In re Kirk, 376 F.2d 936, 941, 153 USPQ 48, 52 (CCPA 1967)).
Similarly, courts have found utility for therapeutic inventions despite the fact that an applicant is at a very early stage in the development of a pharmaceutical product or therapeutic regimen based on a claimed pharmacological or bioactive compound or composition. The Federal Circuit, in Cross v. Iizuka, 753 F.2d 1040, 1051, 224 USPQ
739, 747-48 (Fed. Cir. 1985), commented on the significance of data from in vitro testing that showed pharmacological activity:
We perceive no insurmountable difficulty, under appropriate circumstances, in finding that the first link in the screening chain, in vitro testing, may establish a practical utility for the compound in question. Successful in vitro testing will marshal resources and direct the expenditure of effort to further in vivo testing of the most potent compounds, thereby providing an immediate benefit to the public, analogous to the benefit provided by the showing of an in vivo utility.
The Federal Circuit has reiterated that therapeutic utility sufficient under the patent laws is not to be confused with the requirements of the FDA with regard to safety and efficacy of drugs to marketed in the United States.
FDA approval, however, is not a prerequisite for finding a compound useful within the meaning of the patent laws. Scott v. Finney, 34 F.3d 1058, 1063, 32 USPQ2d 1115, 1120 [(Fed.Cir. 1994)]. Usefulness in patent law, and in particular in the context of pharmaceutical inventions, necessarily includes the expectation of further research and development. The stage at which an invention in this field becomes useful is well before it is ready to be administered to humans. Were we to require Phase II testing in order to prove utility, the
associated costs would prevent many companies from obtaining patent protection on promising new inventions, thereby eliminating an incentive to pursue, through research and development, potential cures in many crucial areas such as the treatment of cancer.
In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995). Accordingly, Office personnel should not construe 35 U.S.C. 101, under the logic of “practical” utility or otherwise, to require that an applicant demonstrate that a therapeutic agent based on a claimed invention is a safe or fully effective drug for humans. See, e.g., In re Sichert, 566 F.2d 1154, 196 USPQ 209 (CCPA 1977); In re Hartop, 311 F.2d 249, 135 USPQ 419 (CCPA 1962); In re Anthony, 414 F.2d 1383, 162 USPQ 594 (CCPA 1969); In re Watson, 517 F.2d 465, 186 USPQ 11 (CCPA 1975).
These general principles are equally applicable to situations where an applicant has claimed a process for treating a human or animal disorder. In such cases, the asserted utility is usually clear — the invention is asserted to be useful in treating the particular disorder. If the asserted utility is credible, there is no basis to challenge such a claim on the basis that it lacks utility under 35 U.S.C. 101.
See MPEP § 2107.03 for special considerations for asserted therapeutic or pharmacological utilities.
IV. RELATIONSHIP BETWEEN 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, FIRST PARAGRAPH, AND 35 U.S.C. 101
A deficiency under the utility prong of35 U.S.C. 101 also creates a deficiency under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. See In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995); In re Jolles, 628 F.2d 1322, 1326 n.10, 206 USPQ 885, 889 n.11 (CCPA 1980); In re Fouche, 439 F.2d 1237, 1243, 169 USPQ 429, 434 (CCPA 1971) (“If such compositions are in fact useless, appellant’s specification cannot have taught how to use them.”). Courts have also cast the 35 U.S.C. 101/35 U.S.C. 112 relationship such that 35 U.S.C. 112 presupposes compliance with 35 U.S.C. 101. See In re Ziegler, 992 F.2d 1197, 1200-1201, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993) (“The how to
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use prong of section 112 incorporates as a matter of law the requirement of 35 U.S.C. 101 that the specification disclose as a matter of fact a practical utility for the invention. ... If the application fails as a matter of fact to satisfy 35 U.S.C. § 101, then the application also fails as a matter of law to enable one of ordinary skill in the art to use the invention under 35 U.S.C. § 112.”); In re Kirk, 376 F.2d 936, 942, 153 USPQ 48, 53 (CCPA 1967) (“Necessarily, compliance with § 112 requires a description of how to use presently useful inventions, otherwise an applicant would anomalously be required to teach how to use a useless invention.”). For example, the Federal Circuit noted, “[o]bviously, if a claimed invention does not have utility, the specification cannot enable one to use it.” In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995). As such, a rejection properly imposed under 35 U.S.C. 101 for lack of utility should be accompanied with a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. It is equally clear that a rejection based on “lack of utility,” whether grounded upon 35 U.S.C. 101 or 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rests on the same basis (i.e., the asserted utility is not credible). To avoid confusion, any lack of utility rejection that is imposed on the basis of 35 U.S.C. 101 should be accompanied by a rejection based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection should be set out as a separate rejection that incorporates by reference the factual basis and conclusions set forth in the 35 U.S.C. 101 rejection. The 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection should indicate that because the invention as claimed does not have utility, a person skilled in the art would not be able to use the invention as claimed, and as such, the claim is defective under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. A 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection based on lack of utility should not be imposed or maintained unless an appropriate basis exists for imposing a utility rejection under 35 U.S.C. 101. In other words, Office personnel should not impose a 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection grounded on a “lack of utility” basis unless a 35 U.S.C. 101 rejection is proper. In particular, the factual showing needed to impose a rejection under 35 U.S.C. 101
must be provided if a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is to be imposed on “lack of utility” grounds.
It is important to recognize that 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, addresses matters other than those related to the question of whether or not an invention lacks utility. These matters include whether the claims are fully supported by the disclosure (In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991)), whether the applicant has provided an enabling disclosure of the claimed subject matter (In re Wright, 999 F.2d 1557, 1561-1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)), whether the applicant has provided an adequate written description of the invention and whether the applicant has disclosed the best mode of practicing the claimed invention (Chemcast Corp. v. Arco Indus. Corp., 913 F.2d
923, 927-928, 16 USPQ2d 1033, 1036-1037 (Fed. Cir. 1990)). See also Transco Products Inc. v. Performance Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994); Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 34 USPQ2d 1565 (Fed. Cir. 1995). The fact that an applicant has disclosed a specific utility for an invention and provided a credible basis supporting that specific utility does not provide a basis for concluding that the claims comply with all the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. For example, if an applicant has claimed a process of treating a certain disease condition with a certain compound and provided a credible basis for asserting that the compound is useful in that regard, but to actually practice the invention as claimed a person skilled in the relevant art would have to engage in an undue amount of experimentation, the claim may be defective under 35 U.S.C. 112, but not 35 U.S.C. 101. To avoid confusion during examination, any rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, based on grounds other than “lack of utility” should be imposed separately from any rejection imposed due to “lack of utility” under 35
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U.S.C. 101 and 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
2107.02 Procedural Considerations Related to Rejections for Lack of Utility [R-11.2013]
I. THE CLAIMED INVENTION IS THE FOCUS OF THE UTILITY REQUIREMENT
The claimed invention is the focus of the assessment of whether an applicant has satisfied the utility requirement. Each claim (i.e., each “invention”), therefore, must be evaluated on its own merits for compliance with all statutory requirements. Generally speaking, however, a dependent claim will define an invention that has utility if the independent claim from which the dependent claim depends is drawn to the same statutory class of invention as the dependent claim and the independent claim defines an invention having utility. An exception to this general rule is where the utility specified for the invention defined in a dependent claim differs from that indicated for the invention defined in the independent claim from which the dependent claim depends. Where an applicant has established utility for a species that falls within an identified genus of compounds, and presents a generic claim covering the genus, as a general matter, that claim should be treated as being sufficient under 35 U.S.C. 101. Only where it can be established that other species clearly encompassed by the claim do not have utility should a rejection be imposed on the generic claim. In such cases, the applicant should be encouraged to amend the generic claim so as to exclude the species that lack utility.
It is common and sensible for an applicant to identify several specific utilities for an invention, particularly where the invention is a product (e.g., a machine, an article of manufacture or a composition of matter). However, regardless of the category of invention that is claimed (e.g., product or process), an applicant need only make one credible assertion of specific utility for the claimed invention to satisfy 35 U.S.C. 101 and 35 U.S.C. 112; additional statements of utility, even if not “credible,” do not render the claimed invention lacking in utility. See, e.g., Raytheon v. Roper, 724 F.2d 951, 958, 220 USPQ
592, 598 (Fed. Cir. 1983), cert. denied, 469 U.S. 835 (1984) (“When a properly claimed invention
meets at least one stated objective, utility under 35 U.S.C. 101 is clearly shown.”); In re Gottlieb, 328 F.2d 1016, 1019, 140 USPQ 665, 668 (CCPA 1964) (“Having found that the antibiotic is useful for some purpose, it becomes unnecessary to decide whether it is in fact useful for the other purposes ‘indicated’ in the specification as possibly useful.”); In re Malachowski, 530 F.2d 1402, 189 USPQ 432 (CCPA 1976); Hoffman v. Klaus, 9 USPQ2d 1657 (Bd. Pat. App. & Inter. 1988). Thus, if applicant makes one credible assertion of utility, utility for the claimed invention as a whole is established.
Statements made by the applicant in the specification or incident to prosecution of the application before the Office cannot, standing alone, be the basis for a lack of utility rejection under 35 U.S.C. 101 or 35 U.S.C. 112. Tol-O-Matic, Inc. v. Proma Produkt-Und Mktg. Gesellschaft m.b.h., 945 F.2d 1546, 1553, 20 USPQ2d 1332, 1338 (Fed. Cir. 1991) (It is not required that a particular characteristic set forth in the prosecution history be achieved in order to satisfy 35 U.S.C. 101.). An applicant may include statements in the specification whose technical accuracy cannot be easily confirmed if those statements are not necessary to support the patentability of an invention with regard to any statutory basis. Thus, the Office should not require an applicant to strike nonessential statements relating to utility from a patent disclosure, regardless of the technical accuracy of the statement or assertion it presents. Office personnel should also be especially careful not to read into a claim unclaimed results, limitations or embodiments of an invention. See Carl Zeiss Stiftung v. Renishaw PLC, 945 F.2d 1173, 20 USPQ2d 1094 (Fed. Cir. 1991); In re Krimmel, 292 F.2d 948, 130 USPQ 215 (CCPA 1961). Doing so can inappropriately change the relationship of an asserted utility to the claimed invention and raise issues not relevant to examination of that claim.
II. IS THERE AN ASSERTED OR WELL-ESTABLISHED UTILITY FOR THE CLAIMED INVENTION?
Upon initial examination, the examiner should review the specification to determine if there are any statements asserting that the claimed invention is useful for any particular purpose. A complete disclosure should include a statement which
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identifies a specific and substantial utility for the invention.
A. An Asserted Utility Must Be Specific and Substantial
A statement of specific and substantial utility should fully and clearly explain why the applicant believes the invention is useful. Such statements will usually explain the purpose of or how the invention may be used (e.g., a compound is believed to be useful in the treatment of a particular disorder). Regardless of the form of statement of utility, it must enable one ordinarily skilled in the art to understand why the applicant believes the claimed invention is useful.
Except where an invention has a well-established utility, the failure of an applicant to specifically identify why an invention is believed to be useful renders the claimed invention deficient under 35 U.S.C. 101 and 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In such cases, the applicant has failed to identify a “specific and substantial utility” for the claimed invention. For example, a statement that a composition has an unspecified “biological activity” or that does not explain why a composition with that activity is believed to be useful fails to set forth a “specific and substantial utility.” Brenner v. Manson, 383 US 519, 148 USPQ 689 (1966) (general assertion of similarities to known compounds known to be useful without sufficient corresponding explanation why claimed compounds are believed to be similarly useful insufficient under 35 U.S.C. 101); In re Ziegler, 992 F.2d 1197, 1201, 26 USPQ2d 1600, 1604 (Fed. Cir. 1993) (disclosure that composition is “plastic-like” and can form “films” not sufficient to identify specific and substantial utility for invention); In re Kirk, 376 F.2d 936, 153 USPQ 48 (CCPA 1967) (indication that compound is “biologically active” or has “biological properties” insufficient standing alone). See also In re Joly, 376 F.2d 906, 153 USPQ 45 (CCPA 1967); Kawai v. Metlesics, 480 F.2d 880, 890, 178 USPQ
158, 165 (CCPA 1973) (contrasting description of invention as sedative which did suggest specific utility to general suggestion of “pharmacological effects on the central nervous system” which did not). In contrast, a disclosure that identifies a particular biological activity of a compound and explains how that activity can be utilized in a
particular therapeutic application of the compound does contain an assertion of specific and substantial utility for the invention.
Situations where an applicant either fails to indicate why an invention is considered useful, or where the applicant inaccurately describes the utility should rarely arise. One reason for this is that applicants are required to disclose the best mode known to them of practicing the invention at the time they file their application. An applicant who omits a description of the specific and substantial utility of the invention, or who incompletely describes that utility, may encounter problems with respect to the best mode requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
B. No Statement of Utility for the Claimed Invention in the Specification Does Not Per Se Negate Utility
Occasionally, an applicant will not explicitly state in the specification or otherwise assert a specific and substantial utility for the claimed invention. If no statements can be found asserting a specific and substantial utility for the claimed invention in the specification, Office personnel should determine if the claimed invention has a well-established utility. An invention has a well-established utility if (i) a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (e.g., properties or applications of a product or process), and (ii) the utility is specific, substantial, and credible. If an invention has a well- established utility, rejections under 35 U.S.C. 101 and 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, based on lack of utility should not be imposed. In re Folkers, 344 F.2d 970, 145 USPQ 390 (CCPA 1965). For example, if an application teaches the cloning and characterization of the nucleotide sequence of a well-known protein such as insulin, and those skilled in the art at the time of filing knew that insulin had a well-established use, it would be improper to reject the claimed invention as lacking utility solely because of the omitted statement of specific and substantial utility.
If a person of ordinary skill would not immediately recognize a specific and substantial utility for the claimed invention (i.e., why it would be useful)
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based on the characteristics of the invention or statements made by the applicant, the examiner should reject the application under 35 U.S.C. 101 and under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to identify a specific and substantial utility for the claimed invention. The rejection should clearly indicate that the basis of the rejection is that the application fails to identify a specific and substantial utility for the invention. The rejection should also specify that the applicant must reply by indicating why the invention is believed useful and where support for any subsequently asserted utility can be found in the specification as filed. See MPEP § 2701.
If the applicant subsequently indicates why the invention is useful, Office personnel should review that assertion according to the standards articulated below for review of the credibility of an asserted utility.
III. EVALUATING THE CREDIBILITY OF AN ASSERTED UTILITY
A. An Asserted Utility Creates a Presumption of Utility
In most cases, an applicant’s assertion of utility creates a presumption of utility that will be sufficient to satisfy the utility requirement of 35 U.S.C. 101. See, e.g., In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980); In re Irons, 340 F.2d 974, 144 USPQ 351 (CCPA 1965); In re Langer, 503 F.2d 1380, 183 USPQ 288 (CCPA 1974); In re Sichert, 566 F.2d 1154, 1159, 196 USPQ 209, 212-13 (CCPA 1977). As the Court of Customs and Patent Appeals stated in In re Langer:
As a matter of Patent Office practice, a specification which contains a disclosure of utility which corresponds in scope to the subject matter sought to be patented must be taken as sufficient to satisfy the utility requirement of § 101 for the entire claimed subject matter unless there is a reason for one skilled in the art to question the objective truth of the statement of utility or its scope.
In re Langer, 503 F.2d at 1391, 183 USPQ at 297 (emphasis in original). The “Langer” test for utility has been used by both the Federal Circuit and the
Court of Customs and Patent Appeals in evaluation of rejections under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, where the rejection is based on a deficiency under 35 U.S.C. 101. In In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995), the Federal Circuit explicitly adopted the Court of Customs and Patent Appeals formulation of the “Langer” standard for 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph rejections, as it was expressed in a slightly reworded format in In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971), namely:
[A] specification disclosure which contains a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as in compliance with the enabling requirement of the first paragraph of § 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support. (emphasis added).
Thus, Langer and subsequent cases direct the Office to presume that a statement of utility made by an applicant is true. See In re Langer, 503 F.2d at 1391, 183 USPQ at 297; In re Malachowski, 530 F.2d 1402, 1404, 189 USPQ 432, 435 (CCPA 1976); In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995). For obvious reasons of efficiency and in deference to an applicant’s understanding of his or her invention, when a statement of utility is evaluated, Office personnel should not begin by questioning the truth of the statement of utility. Instead, any inquiry must start by asking if there is any reason to question the truth of the statement of utility. This can be done by simply evaluating the logic of the statements made, taking into consideration any evidence cited by the applicant. If the asserted utility is credible (i.e., believable based on the record or the nature of the invention), a rejection based on “lack of utility” is not appropriate. Clearly, Office personnel should not begin an evaluation of utility by assuming that an asserted utility is likely to be false, based on the technical field of the invention or for other general reasons.
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Compliance with 35 U.S.C. 101 is a question of fact. Raytheon v. Roper, 724 F.2d 951, 956, 220 USPQ
592, 596 (Fed. Cir. 1983) cert. denied, 469 U.S. 835 (1984). Thus, to overcome the presumption of truth that an assertion of utility by the applicant enjoys, Office personnel must establish that it is more likely than not that one of ordinary skill in the art would doubt (i.e., “question”) the truth of the statement of utility. The evidentiary standard to be used throughout ex parte examination in setting forth a rejection is a preponderance of the totality of the evidence under consideration. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (“After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.”); In re Corkill, 771 F.2d 1496, 1500, 226 USPQ 1005, 1008 (Fed. Cir. 1985). A preponderance of the evidence exists when it suggests that it is more likely than not that the assertion in question is true. Herman v. Huddleston, 459 U.S. 375, 390 (1983). To do this, Office personnel must provide evidence sufficient to show that the statement of asserted utility would be considered “false” by a person of ordinary skill in the art. Of course, a person of ordinary skill must have the benefit of both facts and reasoning in order to assess the truth of a statement. This means that if the applicant has presented facts that support the reasoning used in asserting a utility, Office personnel must present countervailing facts and reasoning sufficient to establish that a person of ordinary skill would not believe the applicant’s assertion of utility. In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995). The initial evidentiary standard used during evaluation of this question is a preponderance of the evidence (i.e., the totality of facts and reasoning suggest that it is more likely than not that the statement of the applicant is false).
B. When Is an Asserted Utility Not Credible?
Where an applicant has specifically asserted that an invention has a particular utility, that assertion cannot simply be dismissed by Office personnel as being “wrong,” even when there may be reason to believe that the assertion is not entirely accurate. Rather, Office personnel must determine if the assertion of utility is credible (i.e., whether the
assertion of utility is believable to a person of ordinary skill in the art based on the totality of evidence and reasoning provided). An assertion is credible unless (A) the logic underlying the assertion is seriously flawed, or (B) the facts upon which the assertion is based are inconsistent with the logic underlying the assertion. Credibility as used in this context refers to the reliability of the statement based on the logic and facts that are offered by the applicant to support the assertion of utility.
One situation where an assertion of utility would not be considered credible is where a person of ordinary skill would consider the assertion to be “incredible in view of contemporary knowledge” and where nothing offered by the applicant would counter what contemporary knowledge might otherwise suggest. Office personnel should be careful, however, not to label certain types of inventions as “incredible” or “speculative” as such labels do not provide the correct focus for the evaluation of an assertion of utility. “Incredible utility” is a conclusion, not a starting point for analysis under 35 U.S.C. 101. A conclusion that an asserted utility is incredible can be reached only after the Office has evaluated both the assertion of the applicant regarding utility and any evidentiary basis of that assertion. The Office should be particularly careful not to start with a presumption that an asserted utility is, per se, “incredible” and then proceed to base a rejection under 35 U.S.C. 101 on that presumption.
Rejections under 35 U.S.C. 101 based on a lack of credible utility have been sustained by federal courts when, for example, the applicant failed to disclose any utility for the invention or asserted a utility that could only be true if it violated a scientific principle, such as the second law of thermodynamics, or a law of nature, or was wholly inconsistent with contemporary knowledge in the art. In re Gazave, 379 F.2d 973, 978, 154 USPQ 92, 96 (CCPA 1967). Special care should be taken when assessing the credibility of an asserted therapeutic utility for a claimed invention. In such cases, a previous lack of success in treating a disease or condition, or the absence of a proven animal model for testing the effectiveness of drugs for treating a disorder in humans, should not, standing alone, serve as a basis for challenging the asserted utility under 35 U.S.C. 101. See MPEP § 2107.03 for additional guidance
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with regard to therapeutic or pharmacological utilities.
IV. INITIAL BURDEN IS ON THE OFFICE TO ESTABLISH A PRIMA FACIE CASE AND PROVIDE EVIDENTIARY SUPPORT THEREOF
To properly reject a claimed invention under 35 U.S.C. 101, the Office must (A) make a prima facie showing that the claimed invention lacks utility, and (B) provide a sufficient evidentiary basis for factual assumptions relied upon in establishing the prima facie showing. In re Gaubert, 524 F.2d 1222, 1224, 187 USPQ 664, 666 (CCPA 1975) "Accordingly, the PTO must do more than merely question operability - it must set forth factual reasons which would lead one skilled in the art to question the objective truth of the statement of operability." If the Office cannot develop a proper prima facie case and provide evidentiary support for a rejection under 35 U.S.C. 101, a rejection on this ground should not be imposed. See, e.g., In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant.... If examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent.”). See also Fregeau v. Mossinghoff, 776 F.2d 1034, 227 USPQ 848 (Fed. Cir. 1985) (applying prima facie case law to 35 U.S.C. 101); In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984).
The prima facie showing must be set forth in a well-reasoned statement. Any rejection based on lack of utility should include a detailed explanation why the claimed invention has no specific and substantial credible utility. Whenever possible, the examiner should provide documentary evidence regardless of publication date (e.g., scientific or technical journals, excerpts from treatises or books, or U.S. or foreign patents) to support the factual basis for the prima facie showing of no specific and substantial credible utility. If documentary evidence is not available, the examiner should specifically explain the scientific basis for his or her factual conclusions.
Where the asserted utility is not specific or substantial, a prima facie showing must establish that it is more likely than not that a person of ordinary skill in the art would not consider that any utility asserted by the applicant would be specific and substantial. The prima facie showing must contain the following elements:
(A) An explanation that clearly sets forth the reasoning used in concluding that the asserted utility for the claimed invention is neither both specific and substantial nor well-established;
(B) Support for factual findings relied upon in reaching this conclusion; and
(C) An evaluation of all relevant evidence of record, including utilities taught in the closest prior art.
Where the asserted specific and substantial utility is not credible, a prima facie showing of no specific and substantial credible utility must establish that it is more likely than not that a person skilled in the art would not consider credible any specific and substantial utility asserted by the applicant for the claimed invention. The prima facie showing must contain the following elements:
(A) An explanation that clearly sets forth the reasoning used in concluding that the asserted specific and substantial utility is not credible;
(B) Support for factual findings relied upon in reaching this conclusion; and
(C) An evaluation of all relevant evidence of record, including utilities taught in the closest prior art.
Where no specific and substantial utility is disclosed or is well-established, a prima facie showing of no specific and substantial utility need only establish that applicant has not asserted a utility and that, on the record before the examiner, there is no known well-established utility.
It is imperative that Office personnel use specificity in setting forth and initial rejection under 35 U.S.C. 101 and support any factual conclusions made in the prima facie showing.
By using specificity, the applicant will be able to identify the assumptions made by the Office in
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setting forth the rejection and will be able to address those assumptions properly.
V. EVIDENTIARY REQUESTS BYAN EXAMINER TO SUPPORT AN ASSERTED UTILITY
In appropriate situations the Office may require an applicant to substantiate an asserted utility for a claimed invention. See In re Pottier, 376 F.2d 328, 330, 153 USPQ 407, 408 (CCPA 1967) (“When the operativeness of any process would be deemed unlikely by one of ordinary skill in the art, it is not improper for the examiner to call for evidence of operativeness.”). See also In re Jolles, 628 F.2d 1322, 1327, 206 USPQ 885, 890 (CCPA 1980); In re Citron, 325 F.2d 248, 139 USPQ 516 (CCPA 1963); In re Novak, 306 F.2d 924, 928, 134 USPQ 335, 337 (CCPA1962). In In re Citron, the court held that when an “alleged utility appears to be incredible in the light of the knowledge of the art, or factually misleading, applicant must establish the asserted utility by acceptable proof.” 325 F.2d at 253, 139 USPQ at 520. The court approved of the board’s decision which affirmed the rejection under 35 U.S.C. 101 “in view of the art knowledge of the lack of a cure for cancer and the absence of any clinical data to substantiate the allegation.” 325 F.2d at 252, 139 USPQ at 519 (emphasis in original). The court thus established a higher burden on the applicant where the statement of use is incredible or misleading. In such a case, the examiner should challenge the use and require sufficient evidence of operativeness. The purpose of this authority is to enable an applicant to cure an otherwise defective factual basis for the operability of an invention. Because this is a curative authority (e.g., evidence is requested to enable an applicant to support an assertion that is inconsistent with the facts of record in the application), Office personnel should indicate not only why the factual record is defective in relation to the assertions of the applicant, but also, where appropriate, what type of evidentiary showing can be provided by the applicant to remedy the problem.
Requests for additional evidence should be imposed rarely, and only if necessary to support the scientific credibility of the asserted utility (e.g., if the asserted utility is not consistent with the evidence of record and current scientific knowledge). As the Federal
Circuit recently noted, “[o]nly after the PTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince such a person of the invention’s asserted utility.” In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995) (citing In re Bundy, 642 F.2d 430, 433, 209 USPQ 48, 51
(CCPA 1981)). In Brana, the court pointed out that the purpose of treating cancer with chemical compounds does not suggest, per se, an incredible utility. Where the prior art disclosed “structurally similar compounds to those claimed by applicants which have been proven in vivo to be effective as chemotherapeutic agents against various tumor models . . ., one skilled in the art would be without basis to reasonably doubt applicants’asserted utility on its face.” 51 F.3d at 1566, 34 USPQ2d at 1441. As courts have stated, “it is clearly improper for the examiner to make a demand for further test data, which as evidence would be essentially redundant and would seem to serve for nothing except perhaps to unduly burden the applicant.” In re Isaacs, 347 F.2d 887, 890, 146 USPQ 193, 196 (CCPA 1965).
VI. CONSIDERATION OF A REPLY TO A PRIMA FACIE REJECTION FOR LACK OF UTILITY
If a rejection under 35 U.S.C. 101 has been properly imposed, along with a corresponding rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, the burden shifts to the applicant to rebut the prima facie showing. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (“The examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant. . . After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.”). An applicant can do this using any combination of the following: amendments to the claims, arguments or reasoning, or new evidence submitted in an affidavit or declaration under 37 CFR 1.132, or in a printed publication. New evidence provided by an applicant must be relevant to the issues raised in the rejection. For example, declarations in which
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conclusions are set forth without establishing a nexus between those conclusions and the supporting evidence, or which merely express opinions, may be of limited probative value with regard to rebutting a prima facie case. In re Grunwell, 609 F.2d 486, 203 USPQ 1055 (CCPA 1979); In re Buchner, 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991). See MPEP § 716.01(a) through MPEP § 716.01(c).
If the applicant responds to the prima facie rejection, Office personnel should review the original disclosure, any evidence relied upon in establishing the prima facie showing, any claim amendments, and any new reasoning or evidence provided by the applicant in support of an asserted specific and substantial credible utility. It is essential for Office personnel to recognize, fully consider and respond to each substantive element of any response to a rejection based on lack of utility. Only where the totality of the record continues to show that the asserted utility is not specific, substantial, and credible should a rejection based on lack of utility be maintained. If the record as a whole would make it more likely than not that the asserted utility for the claimed invention would be considered credible by a person of ordinary skill in the art, the Office cannot maintain the rejection. In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
VII. EVALUATION OF EVIDENCE RELATED TO UTILITY
There is no predetermined amount or character of evidence that must be provided by an applicant to support an asserted utility, therapeutic or otherwise. Rather, the character and amount of evidence needed to support an asserted utility will vary depending on what is claimed (Ex parte Ferguson, 117 USPQ 229 (Bd. App. 1957)), and whether the asserted utility appears to contravene established scientific principles and beliefs. In re Gazave, 379 F.2d 973, 978, 154 USPQ 92, 96 (CCPA 1967); In re Chilowsky, 229 F.2d 457, 462, 108 USPQ 321, 325 (CCPA 1956). Furthermore, the applicant does not have to provide evidence sufficient to establish that an asserted utility is true “beyond a reasonable doubt.” In re Irons, 340 F.2d 974, 978, 144 USPQ 351, 354 (CCPA 1965). Nor must an applicant provide evidence such that it establishes an asserted utility as a matter of statistical certainty.
Nelson v. Bowler, 626 F.2d 853, 856-57, 206 USPQ 881, 883-84 (CCPA 1980) (reversing the Board and rejecting Bowler’s arguments that the evidence of utility was statistically insignificant. The court pointed out that a rigorous correlation is not necessary when the test is reasonably predictive of the response). See also Rey-Bellet v. Englehardt, 493 F.2d 1380, 181 USPQ 453 (CCPA 1974) (data from animal testing is relevant to asserted human therapeutic utility if there is a “satisfactory correlation between the effect on the animal and that ultimately observed in human beings”). Instead, evidence will be sufficient if, considered as a whole, it leads a person of ordinary skill in the art to conclude that the asserted utility is more likely than not true.
2107.03 Special Considerations for Asserted Therapeutic or Pharmacological Utilities [R-08.2012]
The federal courts have consistently reversed rejections by the Office asserting a lack of utility for inventions claiming a pharmacological or therapeutic utility where an applicant has provided evidence that reasonably supports such a utility. In view of this, Office personnel should be particularly careful in their review of evidence provided in support of an asserted therapeutic or pharmacological utility.
I. A REASONABLE CORRELATION BETWEEN THE EVIDENCE AND THE ASSERTED UTILITY IS SUFFICIENT
As a general matter, evidence of pharmacological or other biological activity of a compound will be relevant to an asserted therapeutic use if there is a reasonable correlation between the activity in question and the asserted utility. Cross v. Iizuka, 753 F.2d 1040, 224 USPQ 739 (Fed. Cir. 1985); In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980); Nelson v. Bowler, 626 F.2d 853, 206 USPQ 881 (CCPA 1980). An applicant can establish this reasonable correlation by relying on statistically relevant data documenting the activity of a compound or composition, arguments or reasoning, documentary evidence (e.g., articles in scientific journals), or any combination thereof. The applicant does not have to prove that a correlation exists between a particular activity and an asserted
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therapeutic use of a compound as a matter of statistical certainty, nor does he or she have to provide actual evidence of success in treating humans where such a utility is asserted. Instead, as the courts have repeatedly held, all that is required is a reasonable correlation between the activity and the asserted use. Nelson v. Bowler, 626 F.2d 853, 857, 206 USPQ 881, 884 (CCPA 1980).
II. STRUCTURAL SIMILARITY TO COMPOUNDS WITH ESTABLISHED UTILITY
Courts have routinely found evidence of structural similarity to a compound known to have a particular therapeutic or pharmacological utility as being supportive of an assertion of therapeutic utility for a new compound. In In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980), the claimed compounds were found to have utility based on a finding of a close structural relationship to daunorubicin and doxorubicin and shared pharmacological activity with those compounds, both of which were known to be useful in cancer chemotherapy. The evidence of close structural similarity with the known compounds was presented in conjunction with evidence demonstrating substantial activity of the claimed compounds in animals customarily employed for screening anticancer agents. Such evidence should be given appropriate weight in determining whether one skilled in the art would find the asserted utility credible. Office personnel should evaluate not only the existence of the structural relationship, but also the reasoning used by the applicant or a declarant to explain why that structural similarity is believed to be relevant to the applicant's assertion of utility.
III. DATA FROM IN VITRO OR ANIMAL TESTING IS GENERALLY SUFFICIENT TO SUPPORT THERAPEUTIC UTILITY
If reasonably correlated to the particular therapeutic or pharmacological utility, data generated using in vitro assays, or from testing in an animal model or a combination thereof almost invariably will be sufficient to establish therapeutic or pharmacological utility for a compound, composition or process. A cursory review of cases involving therapeutic inventions where 35 U.S.C. 101 was the dispositive issue illustrates the fact that the federal courts are
not particularly receptive to rejections under 35 U.S.C. 101 based on inoperability. Most striking is the fact that in those cases where an applicant supplied a reasonable evidentiary showing supporting an asserted therapeutic utility, almost uniformly the 35 U.S.C. 101-based rejection was reversed. See, e.g., In re Brana, 51 F.3d 1560, 34 USPQ 1436 (Fed. Cir. 1995); Cross v. Iizuka, 753 F.2d 1040, 224 USPQ 739 (Fed. Cir. 1985); In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980); Nelson v. Bowler, 626 F.2d 853, 856, 206 USPQ
881, 883 (CCPA 1980); In re Malachowski, 530 F.2d 1402, 189 USPQ 432 (CCPA 1976); In re Gaubert, 530 F.2d 1402, 189 USPQ 432 (CCPA 1975); In re Gazave, 379 F.2d 973, 154 USPQ 92 (CCPA 1967); In re Hartop, 311 F.2d 249, 135 USPQ 419 (CCPA 1962); In re Krimmel, 292 F.2d 948, 130 USPQ 215 (CCPA 1961). Only in those cases where the applicant was unable to come forward with any relevant evidence to rebut a finding by the Office that the claimed invention was inoperative was a 35 U.S.C. 101 rejection affirmed by the court. In re Citron, 325 F.2d 248, 253, 139 USPQ 516, 520 (CCPA 1963) (therapeutic utility for an uncharacterized biological extract not supported or scientifically credible); In re Buting, 418 F.2d 540, 543, 163 USPQ 689, 690 (CCPA 1969) (record did not establish a credible basis for the assertion that the single class of compounds in question would be useful in treating disparate types of cancers); In re Novak, 306 F.2d 924, 134 USPQ 335 (CCPA 1962) (claimed compounds did not have capacity to effect physiological activity upon which utility claim based). Contrast, however, In re Buting to In re Gardner, 475 F.2d 1389, 177 USPQ 396 (CCPA 1973), reh'g denied, 480 F.2d 879 (CCPA 1973), in which the court held that utility for a genus was found to be supported through a showing of utility for one species. In no case has a federal court required an applicant to support an asserted utility with data from human clinical trials.
If an applicant provides data, whether from in vitro assays or animal tests or both, to support an asserted utility, and an explanation of why that data supports the asserted utility, the Office will determine if the data and the explanation would be viewed by one skilled in the art as being reasonably predictive of the asserted utility. See, e.g., Ex parte Maas, 9 USPQ2d 1746 (Bd. Pat. App. & Inter. 1987); Ex
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parte Balzarini, 21 USPQ2d 1892 (Bd. Pat. App. & Inter. 1991). Office personnel must be careful to evaluate all factors that might influence the conclusions of a person of ordinary skill in the art as to this question, including the test parameters, choice of animal, relationship of the activity to the particular disorder to be treated, characteristics of the compound or composition, relative significance of the data provided and, most importantly, the explanation offered by the applicant as to why the information provided is believed to support the asserted utility. If the data supplied is consistent with the asserted utility, the Office cannot maintain a rejection under 35 U.S.C. 101.
Evidence does not have to be in the form of data from an art-recognized animal model for the particular disease or disease condition to which the asserted utility relates. Data from any test that the applicant reasonably correlates to the asserted utility should be evaluated substantively. Thus, an applicant may provide data generated using a particular animal model with an appropriate explanation as to why that data supports the asserted utility. The absence of a certification that the test in question is an industry-accepted model is not dispositive of whether data from an animal model is in fact relevant to the asserted utility. Thus, if one skilled in the art would accept the animal tests as being reasonably predictive of utility in humans, evidence from those tests should be considered sufficient to support the credibility of the asserted utility. In re Hartop, 311 F.2d 249, 135 USPQ 419 (CCPA 1962); In re Krimmel, 292 F.2d 948, 953, 130 USPQ 215, 219 (CCPA 1961); Ex parte Krepelka, 231 USPQ 746 (Bd. Pat. App. & Inter. 1986). Office personnel should be careful not to find evidence unpersuasive simply because no animal model for the human disease condition had been established prior to the filing of the application. See In re Chilowsky, 229 F.2d 457, 461, 108 USPQ 321, 325 (CCPA 1956) (“The mere fact that something has not previously been done clearly is not, in itself, a sufficient basis for rejecting all applications purporting to disclose how to do it.”); In re Wooddy, 331 F.2d 636, 639, 141 USPQ 518,
520 (CCPA 1964) (“It appears that no one on earth is certain as of the present whether the process claimed will operate in the manner claimed. Yet absolute certainty is not required by the law. The mere fact that something has not previously been
done clearly is not, in itself, a sufficient basis for rejecting all applications purporting to disclose how to do it.”).
IV. HUMAN CLINICAL DATA
Office personnel should not impose on applicants the unnecessary burden of providing evidence from human clinical trials. There is no decisional law that requires an applicant to provide data from human clinical trials to establish utility for an invention related to treatment of human disorders (see In re Isaacs, 347 F.2d 889, 146 USPQ 193 (CCPA 1963); In re Langer, 503 F.2d 1380, 183 USPQ 288 (CCPA 1974)), even with respect to situations where no art-recognized animal models existed for the human disease encompassed by the claims. Ex parte Balzarini, 21 USPQ2d 1892 (Bd. Pat. App. & Inter. 1991) (human clinical data is not required to demonstrate the utility of the claimed invention, even though those skilled in the art might not accept other evidence to establish the efficacy of the claimed therapeutic compositions and the operativeness of the claimed methods of treating humans). Before a drug can enter human clinical trials, the sponsor, often the applicant, must provide a convincing rationale to those especially skilled in the art (e.g., the Food and Drug Administration (FDA)) that the investigation may be successful. Such a rationale would provide a basis for the sponsor’s expectation that the investigation may be successful. In order to determine a protocol for phase I testing, the first phase of clinical investigation, some credible rationale of how the drug might be effective or could be effective would be necessary. Thus, as a general rule, if an applicant has initiated human clinical trials for a therapeutic product or process, Office personnel should presume that the applicant has established that the subject matter of that trial is reasonably predictive of having the asserted therapeutic utility.
V. SAFETY AND EFFICACY CONSIDERATIONS
The Office must confine its review of patent applications to the statutory requirements of the patent law. Other agencies of the government have been assigned the responsibility of ensuring conformance to standards established by statute for the advertisement, use, sale or distribution of drugs. The FDA pursues a two-prong test to provide
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approval for testing. Under that test, a sponsor must show that the investigation does not pose an unreasonable and significant risk of illness or injury and that there is an acceptable rationale for the study. As a review matter, there must be a rationale for believing that the compound could be effective. If the use reviewed by the FDA is not set forth in the specification, FDA review may not satisfy 35 U.S.C. 101. However, if the reviewed use is one set forth in the specification, Office personnel must be extremely hesitant to challenge utility. In such a situation, experts at the FDA have assessed the rationale for the drug or research study upon which an asserted utility is based and found it satisfactory. Thus, in challenging utility, Office personnel must be able to carry their burden that there is no sound rationale for the asserted utility even though experts designated by Congress to decide the issue have come to an opposite conclusion. “FDA approval, however, is not a prerequisite for finding a compound useful within the meaning of the patent laws.” In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995) (citing Scott v. Finney, 34 F.3d 1058, 1063, 32 USPQ2d 1115, 1120 (Fed. Cir. 1994)).
Thus, while an applicant may on occasion need to provide evidence to show that an invention will work as claimed, it is improper for Office personnel to request evidence of safety in the treatment of humans, or regarding the degree of effectiveness. See In re Sichert, 566 F.2d 1154, 196 USPQ 209 (CCPA 1977); In re Hartop, 311 F.2d 249, 135 USPQ 419 (CCPA 1962); In re Anthony, 414 F.2d 1383, 162 USPQ 594 (CCPA 1969); In re Watson, 517 F.2d 465, 186 USPQ 11 (CCPA 1975); In re Krimmel, 292 F.2d 948, 130 USPQ 215 (CCPA 1961); Ex parte Jovanovics, 211 USPQ 907 (Bd. Pat. App. & Inter. 1981).
VI. TREATMENT OF SPECIFIC DISEASE CONDITIONS
Claims directed to a method of treating or curing a disease for which there have been no previously successful treatments or cures warrant careful review for compliance with 35 U.S.C. 101. The credibility of an asserted utility for treating a human disorder may be more difficult to establish where current scientific understanding suggests that such a task
would be impossible. Such a determination has always required a good understanding of the state of the art as of the time that the invention was made. For example, prior to the 1980’s, there were a number of cases where an asserted use in treating cancer in humans was viewed as “incredible.” In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980); In re Buting, 418 F.2d 540, 163 USPQ 689 (CCPA
1969); Ex parte Stevens, 16 USPQ2d 1379 (Bd. Pat. App. & Inter. 1990); Ex parte Busse, 1 USPQ2d 1908 (Bd. Pat. App. & Inter. 1986); Ex parte Krepelka, 231 USPQ 746 (Bd. Pat. App. & Inter. 1986); Ex parte Jovanovics, 211 USPQ 907 (Bd. Pat. App. & Inter. 1981). The fact that there is no known cure for a disease, however, cannot serve as the basis for a conclusion that such an invention lacks utility. Rather, Office personnel must determine if the asserted utility for the invention is credible based on the information disclosed in the application. Only those claims for which an asserted utility is not credible should be rejected. In such cases, the Office should carefully review what is being claimed by the applicant. An assertion that the claimed invention is useful in treating a symptom of an incurable disease may be considered credible by a person of ordinary skill in the art on the basis of a fairly modest amount of evidence or support. In contrast, an assertion that the claimed invention will be useful in “curing” the disease may require a significantly greater amount of evidentiary support to be considered credible by a person of ordinary skill in the art. In re Sichert, 566 F.2d 1154, 196 USPQ 209 (CCPA 1977); In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980). See also Ex parte Ferguson, 117 USPQ 229 (Bd. Pat. App. & Inter. 1957).
In these cases, it is important to note that the Food and Drug Administration has promulgated regulations that enable a party to conduct clinical trials for drugs used to treat life threatening and severely-debilitating illnesses, even where no alternative therapy exists. See 21 CFR 312.80-88 (1994). Implicit in these regulations is the recognition that experts qualified to evaluate the effectiveness of therapeutics can and often do find a sufficient basis to conduct clinical trials of drugs for incurable or previously untreatable illnesses. Thus, affidavit evidence from experts in the art indicating that there is a reasonable expectation of
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success, supported by sound reasoning, usually should be sufficient to establish that such a utility is credible.
2108 -2110 [Reserved]
2111 Claim Interpretation; Broadest Reasonable Interpretation [R-07.2015]
CLAIMS MUST BE GIVEN THEIR BROADEST REASONABLE INTERPRETATION IN LIGHT OF THE SPECIFICATION
During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) expressly recognized that the USPTO employs the “broadest reasonable interpretation” standard:
The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004). Indeed, the rules of the PTO require that application claims must “conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.” 37 CFR 1.75(d)(1).
See also In re Suitco Surface, Inc., 603 F.3d 1255, 1259, 94 USPQ2d 1640, 1643 (Fed. Cir. 2010); In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000).
Patented claims are not given the broadest reasonable interpretation during court proceedings involving
infringement and validity, and can be interpreted based on a fully developed prosecution record. In contrast, an examiner must construe claim terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. Thus, the Office does not interpret claims in the same manner as the courts. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1321-22 (Fed. Cir. 1989).
Because applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (“During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow.”); In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (Claim 9 was directed to a process of analyzing data generated by mass spectrographic analysis of a gas. The process comprised selecting the data to be analyzed by subjecting the data to a mathematical manipulation. The examiner made rejections under 35 U.S.C. 101 and 35 U.S.C. 102. In the 35 U.S.C. 102 rejection, the examiner explained that the claim was anticipated by a mental process augmented by pencil and paper markings. The court agreed that the claim was not limited to using a machine to carry out the process since the claim did not explicitly set forth the machine. The court explained that “reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.” The court found that applicant was advocating the latter, i.e., the impermissible importation of subject matter from the specification into the claim.). See also In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997) (The court held that the PTO is not required, in the course of prosecution, to interpret claims in applications in the same manner as a court would interpret claims in an infringement suit.
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Rather, the “PTO applies to verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant’s specification.”).
The broadest reasonable interpretation does not mean the broadest possible interpretation. Rather, the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999) (The Board’s construction of the claim limitation “restore hair growth” as requiring the hair to be returned to its original state was held to be an incorrect interpretation of the limitation. The court held that, consistent with applicant’s disclosure and the disclosure of three patents from analogous arts using the same phrase to require only some increase in hair growth, one of ordinary skill would construe “restore hair growth” to mean that the claimed method increases the amount of hair grown on the scalp, but does not necessarily produce a full head of hair.). Thus the focus of the inquiry regarding the meaning of a claim should be what would be reasonable from the perspective of one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260, 94 USPQ2d 1640, 1644 (Fed. Cir. 2010); In re Buszard, 504 F.3d 1364, 84 USPQ2d 1749 (Fed. Cir. 2007). In Buszard, the claim was directed to a flame retardant composition comprising a flexible polyurethane foam reaction mixture. 504 F.3d at 1365, 84 USPQ2d at 1750. The Federal Circuit found that the Board’s interpretation that equated a “flexible” foam with a crushed “rigid” foam was not reasonable. Id. at 1367, 84 USPQ2d at 1751. Persuasive argument was presented that persons experienced in the field of polyurethane foams know that a flexible mixture is different than a rigid foam mixture. Id. at 1366, 84 USPQ2d at 1751.
See MPEP § 2173.02 for further discussion of claim interpretation in the context of analyzing claims for compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
2111.01 Plain Meaning [R-07.2015]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time of the invention," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
I. THE WORDS OF A CLAIM MUST BE GIVEN THEIR “PLAIN MEANING” UNLESS SUCH MEANING IS INCONSISTENT WITH THE SPECIFICATION
Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (discussed below); Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372, 69 USPQ2d 1857 (Fed. Cir. 2004) (Ordinary, simple English words whose meaning is clear and unquestionable, absent any indication that their use in a particular context changes their meaning, are construed to mean exactly what they say. Thus, “heating the resulting batter-coated dough to a temperature in the range of
about 400oF to 850oF” required heating the dough, rather than the air inside an oven, to the specified temperature.).
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The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) (the USPTO looks to the ordinary use of the claim terms taking into account definitions or other “enlightenment” contained in the written description); But c.f. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). When the specification sets a clear path to the claim language, the scope of the claims is more easily determined and the public notice function of the claims is best served.
II. IT IS IMPROPER TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION
“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906, 69 USPQ2d 1801, 1807 (Fed. Cir. 2004) (discussing recent cases wherein the court expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003) (“Interpretation of descriptive statements in a patent’s written description is a difficult task, as an inherent tension exists as to whether a statement is a clear lexicographic definition or a description of a preferred embodiment. The problem is to interpret claims ‘in view of the specification’ without unnecessarily importing limitations from the specification into the claims.”); Altiris Inc. v.
Symantec Corp., 318 F.3d 1363, 1371, 65 USPQ2d 1865, 1869-70 (Fed. Cir. 2003) (Although the specification discussed only a single embodiment, the court held that it was improper to read a specific order of steps into method claims where, as a matter of logic or grammar, the language of the method claims did not impose a specific order on the performance of the method steps, and the specification did not directly or implicitly require a particular order). See also subsection IV., below. When an element is claimed using language falling under the scope of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th paragraph (often broadly referred to as means- (or step-) plus- function language), the specification must be consulted to determine the structure, material, or acts corresponding to the function recited in the claim, and the claimed element is construed as limited to the corresponding structure, material, or acts described in the specification and equivalents thereof. In re Donaldson, 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994) (see MPEP § 2181- MPEP § 2186).
In Zletz, supra, the examiner and the Board had interpreted claims reading “normally solid polypropylene” and “normally solid polypropylene having a crystalline polypropylene content” as being limited to “normally solid linear high homopolymers of propylene which have a crystalline polypropylene content.” The court ruled that limitations, not present in the claims, were improperly imported from the specification. See also In re Marosi, 710 F.2d 799, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) (“'[C]laims are not to be read in a vacuum, and limitations therein are to be interpreted in light of the specification in giving them their ‘broadest reasonable interpretation.'” (quoting In re Okuzawa, 537 F.2d 545, 548, 190 USPQ 464, 466 (CCPA 1976)). The court looked to the specification to construe “essentially free of alkali metal” as including unavoidable levels of impurities but no more.).
III. “PLAIN MEANING” REFERS TO THE ORDINARYAND CUSTOMARY MEANING GIVEN TO THE TERM BY THOSE OF ORDINARY SKILL IN THE ART
“[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a
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person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp.,415 F.3d 1303, 1313, 75 USPQ2d 1321, 1326 (Fed. Cir. 2005) (en banc); Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1302, 67 USPQ2d 1438, 1441 (Fed. Cir. 2003); Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc.,
334 F.3d 1294, 1298 67 USPQ2d 1132, 1136 (Fed. Cir. 2003) (“In the absence of an express intent to impart a novel meaning to the claim terms, the words are presumed to take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art.”).
The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification – the greatest clarity is obtained when the specification serves as a glossary for the claim terms. See, e.g., In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149-50, 104 USPQ2d 1337, 1342-43 (Fed. Cir. 2012) (construing the term “electrochemical sensor” as “devoid of external connection cables or wires to connect to a sensor control unit” to be consistent with “the language of the claims and the specification”); In re Suitco Surface, Inc., 603 F.3d 1255, 1260-61, 94 USPQ2d 1640, 1644 (Fed. Cir. 2010) (construing the term “material for finishing the top surface of the floor” to mean “a clear, uniform layer on the top surface of a floor that is the final treatment or coating of a surface” to be consistent with “the express language of the claim and the specification”); Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1583, 39 USPQ2d 1573, 1577 (Fed. Cir. 1996) (construing the term “solder reflow temperature” to mean “peak reflow temperature” of solder rather than the “liquidus temperature” of solder in order to remain consistent with the specification).
It is also appropriate to look to how the claim term is used in the prior art, which includes prior art patents, published applications, trade publications, and dictionaries. Any meaning of a claim term taken from the prior art must be consistent with the use of the claim term in the specification and drawings. Moreover , when the specification is clear about the
scope and content of a claim term, there is no need to turn to extrinsic evidence for claim interpretation. 3M Innovative Props. Co. v. Tredegar Corp., 725
F.3d 1315, 1326-28, 107 USPQ2d 1717, 1726-27 (Fed. Cir. 2013) (holding that “continuous microtextured skin layer over substantially the entire laminate” was clearly defined in the written description, and therefore, there was no need to turn to extrinsic evidence to construe the claim).
IV. APPLICANT MAY BE OWN LEXICOGRAPHER AND/OR MAY DISAVOW CLAIM SCOPE
The only exceptions to giving the words in a claim their ordinary and customary meaning in the art are (1) when the applicant acts as his own lexicographer; and (2) when the applicant disavows or disclaims the full scope of a claim term in the specification. To act as his own lexicographer, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. The specification may also include an intentional disclaimer, or disavowal, of claim scope. In both of these cases, “the inventor’s intention, as expressed in the specification, is regarded as dispositive.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
Cir. 2005) (en banc). See also Starhome GmbH v. AT&T Mobility LLC, 743 F.3d 849, 857, 109 USPQ2d 1885, 1890-91 (Fed. Cir. 2014) (holding that the term “gateway” should be given its ordinary and customary meaning of “a connection between different networks” because nothing in the specification indicated a clear intent to depart from that ordinary meaning); Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1367-68, 101 USPQ2d 1457, 1460 (Fed. Cir. 2012) (The asserted claims of the patent were directed to a tactile feedback system for video game controllers comprising a flexible pad with a plurality of actuators “attached to said pad.” The court held that the claims were not limited to actuators attached to the external surface of the pad, even though the specification used the word “attached” when describing embodiments affixed to the external surface of the pad but the word “embedded” when describing embodiments affixed to the internal surface of the pad. The court explained that the plain and ordinary meaning of “attached” includes both
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external and internal attachments. Further, there is no clear and explicit statement in the specification to redefine “attached” or disavow the full scope of the term.)
A. Lexicography
An applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s) in the specification at the time of filing. See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994) (holding that an inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision” and, if done, must “‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d
1384, 1387-88, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992)).
Where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999) (meaning of words used in a claim is not construed in a “lexicographic vacuum, but in the context of the specification and drawings”). Thus, if a claim term is used in its ordinary and customary meaning throughout the specification, and the written description clearly indicates its meaning, then the term in the claim has that meaning. Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 1317, 78 USPQ2d 1705, 1711 (Fed. Cir. 2006) (The court held that “completion of coalescence” must be given its ordinary and customary meaning of reaching the end of coalescence. The court explained that even though coalescence could theoretically be “completed” by halting the molding process earlier, the specification clearly intended that completion of coalescence occurs only after the molding process reaches its optimum stage.)
However, it is important to note that any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477, 45 USPQ2d 1429, 1432 (Fed. Cir. 1998). See also Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999) and MPEP § 2173.05(a).
In some cases, the meaning of a particular claim term may be defined by implication, that is, according to the usage of the term in the context in the specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1320-21, 75 USPQ2d 1321, 1332 (Fed. Cir. 2005) (en banc); Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1583, 39 USPQ2d 1573, 1577 (Fed. Cir. 1996). But where the specification is ambiguous as to whether the inventor used claim terms inconsistent with their ordinary meaning, the ordinary meaning will apply. Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005) (The Federal Circuit reversed the district court’s construction of the claim term “about” as “exactly.” The appellate court explained that a passage in the specification the district court relied upon for the definition of “about” was too ambiguous to redefine “about” to mean “exactly” in clear enough terms. The appellate court held that “about” should instead be given its plain and ordinary meaning of “approximately.”).
B. Disavowal
Applicant may also rebut the presumption of plain meaning by clearly disavowing the full scope of the claim term in the specification. Disavowal, or disclaimer of claim scope, is only considered when it is clear and unmistakable. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.Cir.2001) (“Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.”); see also In re Am. Acad. Of Sci. Tech
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Ctr., 367 F.3d 1359, 1365-67 (Fed. Cir. 2004) (refusing the limit claim term “user computer” to only “single-user computers” even though “some of the language of the specification, when viewed in isolation, might lead a reader to conclude that the term . . . is meant to refer to a computer that serves only a single user, the specification as a whole suggests a construction that is not so narrow”). But, in some cases, disavowal of a broader claim scope may be made by implication, such as where the specification contains only disparaging remarks with respect to a feature and every embodiment in the specification excludes that feature. In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149-50, 104 USPQ2d 1337, 1342-43 (Fed. Cir. 2012) (holding that the broadest reasonable interpretation of the claim term “electrochemical sensor” does not include a sensor having “external connection cables or wires” because the specification “repeatedly, consistently, and exclusively depict[s] an electrochemical sensor without external cables or wires while simultaneously disparaging sensors with external cables or wires”). If the examiner believes that the broadest reasonable interpretation of a claim is narrower than what the words of the claim otherwise suggest as the result of implicit disavowal in the specification, then the examiner should make his or her interpretation clear on the record.
See also MPEP § 2173.05(a).
V. Summary of determining the meaning of a claim term that does not invoke 35 U.S.C. 112(f )
This flow chart indicates the decisions an examiner would follow in order to ascertain the proper claim interpretation based on the plain meaning definition of BRI. With each decision in the flow chart, a different path may need to be taken to conclude
whether plain meaning applies or a special definition applies.
The first question is to determine whether a claim term has an ordinary and customary meaning to those of ordinary skill in the art. If so, then the examiner should check the specification to determine whether it provides a special definition for the claim term. If the specification does not provide a special definition for the claim term, the examiner should apply the ordinary and customary meaning to the claim term. If the specification provides a special definition for the claim term, the examiner should use the special definition. However, because there is a presumption that claim terms have their ordinary and customary meaning and the specification must provide a clear and intentional use of a special definition for the claim term to be treated as having a special definition, an Office action should acknowledge and identify the special definition in this situation.
Moving back to the first question, if a claim term does not have an ordinary and customary meaning, the examiner should check the specification to determine whether it provides a meaning to the claim term. If no reasonably clear meaning can be ascribed to the claim term after considering the specification and prior art, the examiner should apply the broadest reasonable interpretation to the claim term as it can be best understood. Also, the claim should be rejected under 35 U.S.C. 112(b) and the specification objected to under 37 CFR 1.75(d).
If the specification provides a meaning for the claim term, the examiner should use the meaning provided by the specification. It may be appropriate for an Office action to clarify the meaning acknowledge and identify the special definition in this situation.
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§ 2111.01PATENTABILITY
2111.02 Effect of Preamble [R-08.2012]
The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim. Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289
F.3d 801, 808, 62 USPQ2d 1781, 1785 (Fed. Cir. 2002). See id. at 808-10, 62 USPQ2d at 1784-86 for a discussion of guideposts that have emerged from various decisions exploring the preamble’s effect on claim scope, as well as a hypothetical example illustrating these principles.
“[A] claim preamble has the import that the claim as a whole suggests for it.” Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir.
1995). “If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). See also Jansen v. Rexall Sundown, Inc., 342 F.3d 1329,
1333, 68 USPQ2d 1154, 1158 (Fed. Cir. 2003) (In considering the effect of the preamble in a claim directed to a method of treating or preventing pernicious anemia in humans by administering a certain vitamin preparation to “a human in need thereof,” the court held that the claims’ recitation of a patient or a human “in need” gives life and meaning to the preamble’s statement of purpose.). Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478,
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481 (CCPA 1951) (A preamble reciting “[a]n abrasive article” was deemed essential to point out the invention defined by claims to an article comprising abrasive grains and a hardened binder and the process of making it. The court stated “it is only by that phrase that it can be known that the subject matter defined by the claims is comprised as an abrasive article. Every union of substances capable inter alia of use as abrasive grains and a binder is not an ‘abrasive article.’” Therefore, the preamble served to further define the structure of the article produced.).
I. PREAMBLE STATEMENTS LIMITING STRUCTURE
Any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation. See, e.g., Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989) (The determination of whether preamble recitations are structural limitations can be resolved only on review of the entirety of the application “to gain an understanding of what the inventors actually invented and intended to encompass by the claim.”); Pac-Tec Inc. v. Amerace Corp., 903 F.2d 796, 801,
14 USPQ2d 1871, 1876 (Fed. Cir. 1990) (determining that preamble language that constitutes a structural limitation is actually part of the claimed invention). See also In re Stencel, 828 F.2d 751, 4 USPQ2d 1071 (Fed. Cir. 1987) (The claim at issue was directed to a driver for setting a joint of a threaded collar; however, the body of the claim did not directly include the structure of the collar as part of the claimed article. The examiner did not consider the preamble, which did set forth the structure of the collar, as limiting the claim. The court found that the collar structure could not be ignored. While the claim was not directly limited to the collar, the collar structure recited in the preamble did limit the structure of the driver. “[T]he framework - the teachings of the prior art - against which patentability is measured is not all drivers broadly, but drivers suitable for use in combination with this collar, for the claims are so limited.” Id. at 1073, 828 F.2d at 754.).
II. PREAMBLE STATEMENTS RECITING PURPOSE OR INTENDED USE
The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use “can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (holding that the preamble phrase “which provides improved playing and handling characteristics” in a claim drawn to a head for a lacrosse stick was not a claim limitation). Compare Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1333-34, 68 USPQ2d 1154, 1158 (Fed. Cir. 2003) (In a claim directed to a method of treating or preventing pernicious anemia in humans by administering a certain vitamin preparation to “a human in need thereof,” the court held that the preamble is not merely a statement of effect that may or may not be desired or appreciated, but rather is a statement of the intentional purpose for which the method must be performed. Thus the claim is properly interpreted to mean that the vitamin preparation must be administered to a human with a recognized need to treat or prevent pernicious anemia.); In re Cruciferous Sprout Litig., 301 F.3d
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1343, 1346-48, 64 USPQ2d 1202, 1204-05 (Fed. Cir. 2002) (A claim at issue was directed to a method of preparing a food rich in glucosinolates wherein cruciferous sprouts are harvested prior to the 2-leaf stage. The court held that the preamble phrase “rich in glucosinolates” helps define the claimed invention, as evidenced by the specification and prosecution history, and thus is a limitation of the claim (although the claim was anticipated by prior art that produced sprouts inherently “rich in glucosinolates”)).
During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963) (The claims were directed to a core member for hair curlers and a process of making a core member for hair curlers. The court held that the intended use of hair curling was of no significance to the structure and process of making.); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962) (statement of intended use in an apparatus claim did not distinguish over the prior art apparatus). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (anticipation rejection affirmed based on Board’s factual finding that the reference dispenser (a spout disclosed as useful for purposes such as dispensing oil from an oil can) would be capable of dispensing popcorn in the manner set forth in appellant’s claim 1 (a dispensing top for dispensing popcorn in a specified manner)) and cases cited therein. See also MPEP § 2112 - MPEP § 2112.02.
However, a “preamble may provide context for claim construction, particularly, where … that preamble’s statement of intended use forms the basis for distinguishing the prior art in the patent’s prosecution history.” Metabolite Labs., Inc. v. Corp. of Am. Holdings, 370 F.3d 1354, 1358-62, 71 USPQ2d 1081, 1084-87 (Fed. Cir. 2004). The patent claim at issue was directed to a two-step method for detecting
a deficiency of vitamin B12 or folic acid, involving
(i) assaying a body fluid for an “elevated level” of homocysteine, and (ii) “correlating” an “elevated” level with a vitamin deficiency. Id. at 1358-59, 71 USPQ2d at 1084. The court stated that the disputed claim term “correlating” can include comparing with either an unelevated level or elevated level, as opposed to only an elevated level because adding the “correlating” step in the claim during prosecution to overcome prior art tied the preamble directly to the “correlating” step. Id. at 1362, 71 USPQ2d at 1087. The recitation of the intended use of “detecting” a vitamin deficiency in the preamble rendered the claimed invention a method for “detecting,” and, thus, was not limited to detecting “elevated” levels. Id.
See also Catalina Mktg. Int’l, 289 F.3d at 808-09, 62 USPQ2d at 1785 (“[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.…Without such reliance, however, a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Consequently, “preamble language merely extolling benefits or features of the claimed invention does not limit the claim scope without clear reliance on those benefits or features as patentably significant.”). In Poly-America LP v. GSE Lining Tech. Inc., 383 F.3d 1303, 1310, 72 USPQ2d 1685, 1689 (Fed. Cir. 2004), the court stated that “a ‘[r]eview of the entirety of the ’047 patent reveals that the preamble language relating to ‘blown-film’ does not state a purpose or an intended use of the invention, but rather discloses a fundamental characteristic of the claimed invention that is properly construed as a limitation of the claim.’” Compare Intirtool, Ltd. v. Texar Corp., 369 F.3d 1289, 1294-96, 70 USPQ2d 1780, 1783-84 (Fed. Cir. 2004) (holding that the preamble of a patent claim directed to a “hand-held punch pliers for simultaneously punching and connecting overlapping sheet metal” was not a limitation of the claim because (i) the body of the claim described a “structurally complete invention” without the preamble, and (ii) statements in prosecution history
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referring to “punching and connecting” function of invention did not constitute “clear reliance” on the preamble needed to make the preamble a limitation).
2111.03 Transitional Phrases [R-08.2012]
The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim. The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.
The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (“[L]ike the term ‘comprising,’ the terms ‘containing’ and ‘mixture’ are open-ended.”). Invitrogen Corp. v. Biocrest Manufacturing, L.P.,
327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps.”); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“comprising” leaves “the claim open for the inclusion of unspecified ingredients even in major amounts”). In Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371-73, 74 USPQ2d 1586, 1589-91 (Fed. Cir. 2005), the court held that a claim to “a safety razor blade unit comprising a guard, a cap, and a group of first, second, and third blades” encompasses razors with more than three blades because the transitional phrase “comprising” in the preamble and the phrase “group of” are presumptively open-ended. “The word ‘comprising’ transitioning from the preamble to the body signals that the entire claim is presumptively
open-ended.” Id. In contrast, the court noted the phrase “group consisting of” is a closed term, which is often used in claim drafting to signal a “Markush group” that is by its nature closed. Id. The court also emphasized that reference to “first,” “second,” and “third” blades in the claim was not used to show a serial or numerical limitation but instead was used to distinguish or identify the various members of the group. Id.
The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“consisting of” defined as “closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith”). But see Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331-32, 70 USPQ2d 1508, 1516 (Fed. Cir. 2004) (holding that a bone repair kit “consisting of” claimed chemicals was infringed by a bone repair kit including a spatula in addition to the claimed chemicals because the presence of the spatula was unrelated to the claimed invention). A claim which depends from a claim which “consists of” the recited elements or steps cannot add an element or step. When the phrase “consists of” appears in a clause of the body of a claim, rather than immediately following the preamble, it limits only the element set forth in that clause; other elements are not excluded from the claim as a whole. Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 230 USPQ 45 (Fed. Cir. 1986). See also In re Crish, 393 F.3d 1253, 73 USPQ2d 1364 (Fed. Cir. 2004) (The claims at issue “related to purified DNA molecules having promoter activity for the human involucrin gene (hINV).” Id., 73 USPQ2d at 1365. In determining the scope of applicant’s claims directed to “a purified oligonucleotide comprising at least a portion of the nucleotide sequence of SEQ ID NO:1 wherein said portion consists of the nucleotide sequence from … to 2473 of SEQ ID NO:1, and wherein said portion of the nucleotide sequence of SEQ ID NO:1 has promoter activity,” the court stated that the use of “consists” in the body of the claims did not limit the open-ended “comprising” language in the claims (emphases added). Id. at 1257, 73 USPQ2d at 1367. The court held that the claimed promoter sequence
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§ 2111.03PATENTABILITY
designated as SEQ ID NO:1 was obtained by sequencing the same prior art plasmid and was therefore anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. Id. at 1256 and 1259, 73 USPQ2d at 1366 and 1369. The court affirmed the Board’s interpretation that the transition phrase “consists” did not limit the claims to only the recited numbered nucleotide sequences of SEQ ID NO:1 and that “the transition language ‘comprising’ allowed the claims to cover the entire involucrin gene plus other portions of the plasmid, as long as the gene contained the specific portions of SEQ ID NO:1 recited by the claim[s].” Id. at 1256, 73 USPQ2d at 1366.).
The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) (Prior art hydraulic fluid required a dispersant which appellants argued was excluded from claims limited to a functional fluid “consisting essentially of” certain components. In finding the claims did not exclude the prior art dispersant, the court noted that appellants’ specification indicated the claimed composition can contain any well-known additive such as a dispersant, and there was no evidence that the presence of a dispersant would materially affect the basic and novel characteristic of the claimed invention. The prior art composition had the same basic and novel characteristic (increased oxidation resistance) as well as additional enhanced detergent and dispersant characteristics.). “A ‘consisting essentially of’ claim occupies a middle ground between closed claims that are written in a ‘consisting of’ format and fully open claims that are drafted in a ‘comprising’ format.” PPG Industries v. Guardian Industries, 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). See also Atlas Powder v. E.I. duPont de Nemours & Co., 750 F.2d 1569, 224 USPQ 409 (Fed. Cir. 1984); In re Janakirama-Rao, 317 F.2d 951, 137 USPQ 893 (CCPA 1963); Water Technologies Corp. vs. Calco, Ltd., 850 F.2d 660, 7 USPQ2d 1097 (Fed. Cir. 1988). For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or
claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 (“PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention.”). See also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41,
68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003) (Applicant’s statement in the specification that “silicon contents in the coating metal should not exceed about 0.5% by weight” along with a discussion of the deleterious effects of silicon provided basis to conclude that silicon in excess of 0.5% by weight would materially alter the basic and novel properties of the invention. Thus, “consisting essentially of” as recited in the preamble was interpreted to permit no more than 0.5% by weight of silicon in the aluminum coating.); In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 895-96 (CCPA 1963). If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of,” applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of applicant’s invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See also Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Inter. 1989) (“Although ‘consisting essentially of’ is typically used and defined in the context of compositions of matter, we find nothing intrinsically wrong with the use of such language as a modifier of method steps. . . [rendering] the claim open only for the inclusion of steps which do not materially affect the basic and novel characteristics of the claimed method. To determine the steps included versus excluded the claim must be read in light of the specification. . . . [I]t is an applicant’s burden to establish that a step practiced in a prior art method is excluded from his claims by ‘consisting essentially of’ language.”).
OTHER TRANSITIONAL PHRASES
Transitional phrases such as “having” must be interpreted in light of the specification to determine whether open or closed claim language is intended.
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See, e.g., Lampi Corp. v. American Power Products Inc., 228 F.3d 1365, 1376, 56 USPQ2d 1445, 1453 (Fed. Cir. 2000) (interpreting the term “having” as open terminology, allowing the inclusion of other components in addition to those recited); Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., 246 F.3d 1336, 1348, 57 USPQ2d 1953, 1959 (Fed. Cir. 2001) (term “having” in transitional phrase “does not create a presumption that the body of the claim is open”); Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1573, 43 USPQ2d 1398, 1410 (Fed. Cir. 1997) (in the context of a cDNA having a sequence coding for human PI, the term “having” still permitted inclusion of other moieties). The transitional phrase “composed of” has been interpreted in the same manner as either “consisting of” or “consisting essentially of,” depending on the facts of the particular case. See AFG Industries, Inc. v. Cardinal IG Company, 239 F.3d 1239, 1245, 57 USPQ2d 1776, 1780-81 (Fed. Cir. 2001) (based on specification and other evidence, “composed of” interpreted in same manner as “consisting essentially of”); In re Bertsch, 132 F.2d 1014, 1019-20, 56 USPQ 379, 384 (CCPA 1942) (“Composed of” interpreted in same manner as “consisting of”; however, the court further remarked that “the words ‘composed of’ may under certain circumstances be given, in patent law, a broader meaning than ‘consisting of.’”).
2111.04 “Adapted to,” “Adapted for,” “Wherein,” and “Whereby” Clauses [R-07.2015]
Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 283 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002)
(finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”). In In re Giannelli, 739 F.3d 1375, 1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014), the court found that an "adapted to" clause limited a machine claim where "the written description makes clear that 'adapted to,' as used in the [patent] application, has a narrower meaning, viz., that the claimed machine is designed or constructed to be used as a rowing machine whereby a pulling force is exerted on the handles." In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), the court held that when a “‘whereby’clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. However, the court noted that a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’” Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)).
2111.05 Functional and Nonfunctional Descriptive Material [R-07.2015]
USPTO personnel must consider all claim limitations when determining patentability of an invention over the prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter. See Id. at 1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). However, USPTO personnel need not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). The rationale behind the printed matter cases, in which, for example, written instructions are added to a known product, has been extended to method claims in which an instructional limitation is added to a method known in the art. Similar to the inquiry for products with printed matter thereon, in such method cases the relevant inquiry is whether a new and unobvious functional relationship with the known method exists. See In re Kao, 639 F.3d 1057,
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§ 2111.05PATENTABILITY
1072-73, 98 USPQ2d 1799, 1811-12 (Fed. Cir. 2011); King Pharmaceuticals Inc. v. Eon Labs Inc., 616 F.3d 1267, 1279, 95 USPQ2d 1833, 1842 (Fed. Cir. 2010).
I. DETERMINING WHETHER A FUNCTIONAL RELATIONSHIP EXISTS BETWEEN PRINTED MATTER AND ASSOCIATED PRODUCT (OR PROCESS)
A. Evidence Supporting a Functional Relationship
To be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated. See Lowry, 32 F.3d at 1584, 32 USPQ2d at 1035 (citing Gulack, 703 F.2d at 1386, 217 USPQ at 404). For instance, indicia on a measuring cup perform the function of indicating volume within that measuring cup. See In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969). A functional relationship can also be found where the product performs some function with respect to the printed matter to which it is associated. For instance, where a hatband places a string of numbers in a certain physical relationship to each other such that a claimed algorithm is satisfied due to the physical structure of the hatband, the hatband performs a function with respect to the string of numbers. See Gulack, 703 F.2d at 1386-87, 217 USPQ at 405.
B. Evidence Against a Functional Relationship
However, where a product merely serves as a support for printed matter, no functional relationship exists. Such a situation would occur for a hatband with images displayed on the hatband but not arranged in any particular sequence. See Gulack, 703 F.2d at 1386, 217 USPQ at 404. Another example in which a product merely serves as a support would occur for a deck of playing cards having images on each card. See In re Bryan, 2009 U.S. App. LEXIS 6667 (Fed. Cir. 2009) (unpublished). See also Ex parte Gwinn, 112 USPQ 439, 446-47 (Bd. Pat. App. & Int. 1955), in which the invention was directed to a set of dice by means of which a game may be played. The claims differed from the prior art solely by the printed matter in the dice. The claims were
properly rejected on prior art because there was no new feature of physical structure and no new relation of printed matter to physical structure. These situations may arise where the claim as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product. For example, a claimed measuring tape having electrical wiring information thereon, or a generically claimed substrate having a picture of a golf ball thereupon, would lack a functional relationship as the claims as a whole are directed towards conveying wiring information (unrelated to the measuring tape) or an aesthetically pleasing image (unrelated to the substrate) to the reader. Additionally, where the printed matter and product do not depend upon each other, no functional relationship exists. For example, in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions are not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864.
II. FUNCTIONAL RELATIONSHIP BETWEEN PRINTED MATTERANDASSOCIATED PRODUCT (OR PROCESS) MUST BE NEWAND UNOBVIOUS
Once a functional relationship between the product and associated printed matter is found, the investigation shifts to the determination of whether the relationship is new and unobvious. For example, a claim to a color-coded indicia on a container in which the color indicates the expiration date of the container may give rise to a functional relationship. The claim may, however, be anticipated by prior art that reads on the claimed invention, or by a combination of prior art that teaches the claimed invention.
III. MACHINE-READABLE MEDIA
When determining the scope of a claim directed to a computer-readable medium containing certain programming, the examiner should first look to the relationship between the programming and the intended computer system. Where the programming performs some function with respect to the computer with which it is associated, a functional relationship will be found. For instance, a claim to computer-readable medium programmed with attribute data objects that perform the function of
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facilitating retrieval, addition, and removal of information in the intended computer system, establishes a functional relationship such that the claimed attribute data objects are given patentable weight. See Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035.
However, where the claim as a whole is directed conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists. For example, a claim to a memory stick containing tables of batting averages, or tracks of recorded music, utilizes the intended computer system merely as a support for the information. Such claims are directed toward conveying meaning to the human reader rather than towards establishing a functional relationship between recorded data and the computer.
A claim directed to a computer readable medium storing instructions or executable code that recites an abstract idea must be evaluated for eligibility under 35 U.S.C. 101. See MPEP § 2106.
2112 Requirements of Rejection Based on Inherency; Burden of Proof [R-07.2015]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time of the invention," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
I. SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides . The court stated that “just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel.” Id. See also MPEP § 2112.01 with regard to inherency and product-by-process claims and MPEP § 2141.02 with regard to inherency and rejections under 35 U.S.C. 103.
II. INHERENT FEATURE NEED NOT BE RECOGNIZED AT THE TIME OF THE INVENTION
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) (“[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was
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unknown at the time of the prior invention.”); Abbott Labs v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed.Cir.1999) (“If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.”); Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1348-49, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) (“Because ‘sufficient aeration’ was inherent in the prior art, it is irrelevant that the prior art did not recognize the key aspect of [the] invention.... An inherent structure, composition, or function is not necessarily known.”); SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343-44, 74 USPQ2d 1398, 1406-07 (Fed. Cir. 2005) (holding that a prior art patent to an anhydrous form of a compound “inherently” anticipated the claimed hemihydrate form of the compound because practicing the process in the prior art to manufacture the anhydrous compound “inherently results in at least trace amounts of” the claimed hemihydrate even if the prior art did not discuss or recognize the hemihydrate); In re Omeprazole Patent Litigation, 483 F.3d 1364, 1373, 82 USPQ2d 1643, 1650 (Fed. Cir. 2007) (The court noted that although the inventors may not have recognized that a characteristic of the ingredients in the prior art method resulted in an in situ formation of a separating layer, the in situ formation was nevertheless inherent. “The record shows formation of the in situ separating layer in the prior art even though that process was not recognized at the time. The new realization alone does not render that necessary [sic] prior art patentable.”)
III. A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C.
102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is appropriate for these types of claims as well as for composition claims.
IV. EXAMINER MUST PROVIDE RATIONALE OR EVIDENCETENDINGTO SHOW INHERENCY
The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) (reversed rejection because inherency was based on what would result due to optimization of conditions, not what was necessarily present in the prior art); In re Oelrich, 666 F.2d 578, 581-82, 212 USPQ 323, 326 (CCPA 1981). Also, “[a]n invitation to investigate is not an inherent disclosure” where a prior art reference “discloses no more than a broad genus of potential applications of its discoveries.” Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1367, 71 USPQ2d 1081, 1091 (Fed. Cir. 2004) (explaining that “[a] prior art reference that discloses a genus still does not inherently disclose all species within that broad category” but must be examined to see if a disclosure of the claimed species has been made or whether the prior art reference merely invites further experimentation to find the species).
“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original) (Applicant’s invention was directed to a biaxially oriented, flexible dilation catheter balloon (a tube which expands upon inflation) used, for example, in clearing the blood vessels of heart patients). The examiner applied a U.S. patent to Schjeldahl which disclosed injection molding a tubular preform and then injecting air into the preform to expand it against a mold (blow molding). The reference did not directly state that the end product balloon was biaxially oriented. It did
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disclose that the balloon was “formed from a thin flexible inelastic, high tensile strength, biaxially oriented synthetic plastic material.” Id. at 1462 (emphasis in original). The examiner argued that Schjeldahl’s balloon was inherently biaxially oriented. The Board reversed on the basis that the examiner did not provide objective evidence or cogent technical reasoning to support the conclusion of inherency.).
In In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997), the court affirmed a finding that a prior patent to a conical spout used primarily to dispense oil from an oil can inherently performed the functions recited in applicant’s claim to a conical container top for dispensing popped popcorn. The examiner had asserted inherency based on the structural similarity between the patented spout and applicant’s disclosed top, i.e., both structures had the same general shape. The court stated:
[N]othing in Schreiber’s [applicant’s] claim suggests that Schreiber’s container is 'of a different shape’ than Harz’s [patent]. In fact, [ ] an embodiment according to Harz (Fig. 5) and the embodiment depicted in figure 1 of Schreiber’s application have the same general shape. For that reason, the examiner was justified in concluding that the opening of a conically shaped top as disclosed by Harz is inherently of a size sufficient to ‘allow [ ] several kernels of popped popcorn to pass through at the same time’ and that the taper of Harz’s conically shaped top is inherently of such a shape ‘as to by itself jam up the popped popcorn before the end of the cone and permit the dispensing of only a few kernels at a shake of a package when the top is mounted to the container.’ The examiner therefore correctly found that Harz established a prima facie case of anticipation.
Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.
V. ONCE A REFERENCE TEACHING PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS MADE THE BASIS OF A REJECTION, AND THE EXAMINER PRESENTS EVIDENCE OR REASONING TENDING TO SHOW
INHERENCY, THE BURDEN OF PRODUCTION SHIFTS TO THE APPLICANT
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘ prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255.
In Fitzgerald, the claims were directed to a self-locking screw-threaded fastener comprising a metallic threaded fastener having patches of crystallizable thermoplastic bonded thereto. The claim further specified that the thermoplastic had a reduced degree of crystallization shrinkage. The specification disclosed that the locking fastener was made by heating the metal fastener to melt a thermoplastic blank which is pressed against the metal. After the thermoplastic adheres to the metal fastener, the end product is cooled by quenching in water. The examiner made a rejection based on a U.S. patent to Barnes. Barnes taught a self-locking fastener in which the patch of thermoplastic was made by depositing thermoplastic powder on a metallic fastener which was then heated. The end product was cooled in ambient air, by cooling air or by contacting the fastener with a water trough. The court first noted that the two fasteners were identical or only slightly different from each other. “Both fasteners possess the same utility, employ the same crystallizable polymer (nylon 11), and have an adherent plastic patch formed by melting and then cooling the polymer.” Id. at 596 n.1, 619 F.2d at 70 n.l. The court then noted that the Board had found that Barnes’ cooling rate could reasonably be expected to result in a polymer possessing the claimed crystallization shrinkage rate. Applicants had not rebutted this finding with evidence that the shrinkage rate was indeed different. They had only argued that the crystallization shrinkage rate was dependent on the cool down rate and that the cool down rate of Barnes was much slower than theirs.
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Because a difference in the cool down rate does not necessarily result in a difference in shrinkage, objective evidence was required to rebut the 35 U.S.C. 102/103 prima facie case.
In Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed.Cir.1997), the court held that applicant’s declaration failed to overcome a prima facie case of anticipation because the declaration did not specify the dimensions of either the dispensing top that was tested or the popcorn that was used. Applicant’s declaration merely asserted that a conical dispensing top built according to a figure in the prior art patent was too small to jam and dispense popcorn and thus could not inherently perform the functions recited in applicant’s claims. The court pointed out the disclosure of the prior art patent was not limited to use as an oil can dispenser, but rather was broader than the precise configuration shown in the patent’s figure. The court also noted that the Board of Patent Appeals and Interferences found as a factual matter that a scaled-up version of the top disclosed in the patent would be capable of performing the functions recited in applicant’s claim.
See MPEP § 2113 for more information on the analogous burden of proof applied to product-by-process claims.
2112.01 Composition, Product, and Apparatus Claims [R-07.2015]
I. PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775,
227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.).
See also In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (Claim 1 was directed to a parachute canopy having concentric circumferential panels radially separated from each other by radially extending tie lines. The panels were separated “such that the critical velocity of each successively larger panel will be less than the critical velocity of the previous panel, whereby said parachute will sequentially open and thus gradually decelerate.” The court found that the claim was anticipated by Menget. Menget taught a parachute having three circumferential panels separated by tie lines. The court upheld the rejection finding that applicant had failed to show that Menget did not possess the functional characteristics of the claims.); Northam Warren Corp. v. D. F. Newfield Co., 7 F. Supp . 773, 22 USPQ 313 (E.D.N.Y. 1934) (A patent to a pencil for cleaning fingernails was held invalid because a pencil of the same structure for writing was found in the prior art.).
II. COMPOSITION CLAIMS — IF THE COMPOSITION IS PHYSICALLY THE SAME, IT MUST HAVE THE SAME PROPERTIES
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art
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teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. “The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.”).
III. PRODUCT CLAIMS – NONFUNCTIONAL PRINTED MATTER DOES NOT DISTINGUISH CLAIMED PRODUCT FROM OTHERWISE IDENTICAL PRIOR ART PRODUCT
Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed, explaining “[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.”). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983) (“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability….[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.”); In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) (finding a new and unobvious relationship between a measuring cup and writing showing how to “half” a recipe); In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art); In re Xiao, 462 Fed. Appx. 947, 950-51 (Fed. Cir. 2011) (non-precedential) (affirming an obviousness rejection of claims directed to a tumbler lock that used letters instead
of numbers and had a wild-card label instead of one of the letters); In re Bryan, 323 Fed. Appx. 898, 901 (Fed. Cir. 2009) (non-precedential) (printed matter on game cards bears no new and unobvious functional relationship to game board).
The court has extended the rationale in the printed matter cases, in which, for example, written instructions are added to a known product, to method claims in which "an instruction limitation" (i.e., a limitation “informing” someone about the existence of an inherent property of that method) is added to a method known in the art. King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279, 95 USPQ2d 1833, 1842 (2010). Similar to the inquiry for products with printed matter thereon, for such method cases the relevant inquiry is whether a new and unobvious functional relationship with the known method exists. In King Pharma, the court found that the relevant determination is whether the "instruction limitation" has a "new and unobvious functional relationship" with the known method of administering the drug with food. Id.. The court held that the relationship was non-functional because "[i]nforming a patient about the benefits of a drug in no way transforms the process of taking the drug with food." Id. That is, the actual method of taking a drug with food is the same regardless of whether the patient is informed of the benefits. Id. “In other words, the ‘informing’ limitation ‘in no way depends on the method, and the method does not depend on the ‘informing’ limitation.’" Id. (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)); see also In re Kao, 639 F.3d 1057, 1072-73, 98 USPQ2d 1799, 1811-12 (Fed. Cir. 2011).
2112.02 Process Claims [R-07.2015]
I. PROCESS CLAIMS — PRIOR ART DEVICE ANTICIPATES A CLAIMED PROCESS IF THE DEVICE CARRIES OUT THE PROCESS DURING NORMAL OPERATION
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be
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assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986) (The claims were directed to a method of enhancing color effects produced by ambient light through a process of absorption and reflection of the light off a coated substrate. A prior art reference to Donley disclosed a glass substrate coated with silver and metal oxide 200-800 angstroms thick. While Donley disclosed using the coated substrate to produce architectural colors, the absorption and reflection mechanisms of the claimed process were not disclosed. However, King’s specification disclosed using a coated substrate of Donley’s structure for use in his process. The Federal Circuit upheld the Board’s finding that “Donley inherently performs the function disclosed in the method claims on appeal when that device is used in ‘normal and usual operation’” and found that a prima facie case of anticipation was made out. Id. at 138, 801 F.2d at 1326. It was up to applicant
to prove that Donley's structure would not perform the claimed method when placed in ambient light.). See also In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (Applicant claimed a process for preparing a hydrolytically-stable zeolitic aluminosilicate which included a step of “cooling the steam zeolite ... at a rate sufficiently rapid that the cooled zeolite exhibits a X-ray diffraction pattern ....” All the process limitations were expressly disclosed by a U.S. patent to Hansford except the cooling step. The court stated that any sample of Hansford’s zeolite would necessarily be cooled to facilitate subsequent handling. Therefore, a prima facie case under 35 U.S.C. 102/103 was made. Applicant had failed to introduce any evidence comparing X-ray diffraction patterns showing a difference in cooling rate between the claimed process and that of Hansford or any data showing that the process of Hansford would result in a product with a different X-ray diffraction. Either type of evidence would have rebutted the prima facie case under 35 U.S.C. 102. A further analysis would be necessary to determine if the process was unobvious under 35 U.S.C. 103.); Ex parte Novitski, 26 USPQ2d 1389 (Bd. Pat. App. & Inter. 1993) (The Board rejected a claim directed to a method for protecting a plant from plant pathogenic nematodes by inoculating the plant with a nematode inhibiting strain of P. cepacia. A U.S. patent to Dart disclosed inoculation using P. cepacia type Wisconsin 526
bacteria for protecting the plant from fungal disease. Dart was silent as to nematode inhibition but the Board concluded that nematode inhibition was an inherent property of the bacteria. The Board noted that applicant had stated in the specification that Wisconsin 526 possesses an 18% nematode inhibition rating.).
II. PROCESS OF USE CLAIMS — NEW AND UNOBVIOUS USES OF OLD STRUCTURES AND COMPOSITIONS MAY BE PATENTABLE
The discovery of a new use for an old structure based on unknown properties of the structure might be patentable to the discoverer as a process of using. In re Hack, 245 F.2d 246, 248, 114 USPQ 161,
163 (CCPA 1957). However, when the claim recites using an old composition or structure and the “use” is directed to a result or property of that composition or structure, then the claim is anticipated. In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978) (Claims 1 and 6, directed to a method of effecting nonaddictive analgesia (pain reduction) in animals, were found to be anticipated by the applied prior art which disclosed the same compounds for effecting analgesia but which was silent as to addiction. The court upheld the rejection and stated that the applicants had merely found a new property of the compound and such a discovery did not constitute a new use. The court went on to reverse the obviousness rejection of claims 2-5 and 7-10 which recited a process of using a new compound. The court relied on evidence showing that the nonaddictive property of the new compound was unexpected.). See also In re Tomlinson, 363 F.2d 928, 150 USPQ 623 (CCPA 1966) (The claim was directed to a process of inhibiting light degradation of polypropylene by mixing it with one of a genus of compounds, including nickel dithiocarbamate. A reference taught mixing polypropylene with nickel dithiocarbamate to lower heat degradation. The court held that the claims read on the obvious process of mixing polypropylene with the nickel dithiocarbamate and that the preamble of the claim was merely directed to the result of mixing the two materials. “While the references do not show a specific recognition of that result, its discovery by appellants is tantamount only to finding a property
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in the old composition.” 363 F.2d at 934, 150 USPQ at 628 (emphasis in original)).
2113 Product-by-Process Claims [R-08.2012]
I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, “[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 (“a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim”).
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding “interbonded by interfusion” to limit structure of the claimed composite and noting that terms such as “welded,” “intermixed,” “ground in place,” “press fitted,” and “etched” are capable of construction as structural limitations).
II. ONCE A PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS FOUND AND A 35 U.S.C. 102/103 REJECTION MADE, THE BURDEN SHIFTS TO THEAPPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) (The claims were directed to a zeolite manufactured by mixing together various inorganic materials in solution and heating the resultant gel to form a crystalline metal silicate essentially free of alkali metal. The prior art described a process of making a zeolite which, after ion exchange to remove alkali metal, appeared to be “essentially free of alkali metal.” The court upheld the rejection because the applicant had not come forward with any evidence that the prior art was not “essentially free of alkali metal” and therefore a different and unobvious product.).
See also Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989) (The prior art disclosed human
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nerve growth factor (b-NGF) isolated from human placental tissue. The claim was directed to b-NGF produced through genetic engineering techniques. The factor produced seemed to be substantially the same whether isolated from tissue or produced through genetic engineering. While the applicant questioned the purity of the prior art factor, no concrete evidence of an unobvious difference was presented. The Board stated that the dispositive issue is whether the claimed factor exhibits any unexpected properties compared with the factor disclosed by the prior art. The Board further stated that the applicant should have made some comparison between the two factors to establish unexpected properties since the materials appeared to be identical or only slightly different.).
III. THE USE OF 35 U.S.C. 102/103 REJECTIONS FOR PRODUCT-BY-PROCESS CLAIMS HAS BEEN APPROVED BY THE COURTS
“[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Office personnel should note that reliance on the alternative grounds of 35 U.S.C. 102 or 35 U.S.C. 103 does not eliminate the need to explain both the anticipation and obviousness aspects of the rejections.
2114 Apparatus and Article Claims — Functional Language [R-07.2015]
For a discussion of case law which provides guidance in interpreting the functional portion of
means-plus-function limitations see MPEP § 2181 - § 2186.
I. INHERENCY AND FUNCTIONAL LIMITATIONS IN APPARATUS CLAIMS
Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). See also MPEP § 2173.05(g). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661
F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971) (“where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on”).
II. MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the
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body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material.” The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
III. A PRIOR ART DEVICE CAN PERFORM ALL THE FUNCTIONS OF THE APPARATUS CLAIM AND STILL NOT ANTICIPATE THE CLAIM
Even if the prior art device performs all the functions recited in the claim, the prior art cannot anticipate the claim if there is any structural difference. It should be noted, however, that means-plus-function limitations are met by structures which are equivalent to the corresponding structures recited in the specification. In re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir. 1994). See also In re Robertson, 169 F.3d 743, 745, 49 USPQ2d
1949, 1951 (Fed. Cir. 1999) (The claims were drawn to a disposable diaper having three fastening elements. The reference disclosed two fastening elements that could perform the same function as the three fastening elements in the claims. The court construed the claims to require three separate elements and held that the reference did not disclose a separate third fastening element, either expressly or inherently.).
IV. DETERMINING WHETHER A COMPUTER-IMPLEMENTED FUNCTIONAL CLAIM LIMITATION IS PATENTABLE OVER THE PRIOR ART UNDER 35 U.S.C. 102 AND 103
Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 and/or 35 U.S.C. 103 may be appropriate. See In re Translogic Technology, Inc., 504 F.3d 1249, 1258, 84 USPQ2d 1929, 1935-1936 (Fed. Cir. 2007) (The claims were drawn to multiplexer circuit. The patent at issue claimed “coupled to” and “coupled to receive” between various portions of the circuitry. In reference to the claim phrase “input
terminals ‘coupled to receive’ first and second input variables,” the court held that “the claimed circuit does not require any specific input or connection … [a]s such, ‘coupled to’ and ‘coupled to receive’ are clearly different … [a]s shown in [the figures of the] patent, input terminals … only need to be ‘capable of receiving’ an input variable for the multiplexer circuit as claimed”. Therefore, the specification supported the claim construction “that ‘coupled to receive’means ‘capable of receiving.’”); Intel Corp. v. U.S. Int'l Trade Comm’n, 946 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991) (The court held that “programmable” claim language required only that the accused product could be programmed to perform the claimed functionality.); In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997); In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977); In re Ludtke, 441 F.2d 660, 663-64, 169 USPQ 563, 566-67 (CCPA 1971); In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971) (“[I]t is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art”). See MPEP § 2112 for more information.
Conversely, computer-implemented functional claim limitations may narrow the functionality of the device, by limiting the specific structure capable of performing the recited function. Nazomi Communications, Inc. v. Nokia Corp., 739 F.3d 1339, 1345, 109 USPQ2d 1258, 1262 (Fed Cir. 2014) (The claims were drawn to a CPU that can perform processing of both register-based and stack-based instructions. Appellant alleged infringement of the claims based on claim construction requiring only hardware capable of performing the claimed functionalities. Contrasted with the finding of Intel Corp. v. U.S. Int'l Trade Comm’n, 846 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991), the court found that “[s]ince hardware cannot meet these limitations in the absence of enabling software, the claims are properly construed as claiming an apparatus comprising a combination of hardware and software capable of practicing the claim limitations.”).
Computer-implemented functional claim limitations may also be broad because the term “computer” is
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commonly understood by one of ordinary skill in the art to describe a variety of devices with varying degrees of complexity and capabilities. In re Paulsen, 30 F.3d 1475, 1479-80, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). Therefore, a claim containing the term “computer” should not be construed as limited to a computer having a specific set of characteristics and capabilities, unless the term is modified by other claim terms or clearly defined in the specification to be different from its common meaning. Id. In Paulsen, the claims, directed to a portable computer, were rejected as anticipated under 35 U.S.C. 102 by a reference that disclosed a calculator, because the term “computer” was given the broadest reasonable interpretation consistent with the specification to include a calculator, and a calculator was considered to be a particular type of computer by those of ordinary skill in the art. Id.
When determining whether a computer-implemented functional claim would have been obvious, examiners should note that broadly claiming an automated means to replace a manual function to accomplish the same result does not distinguish over the prior art. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161, 82 USPQ2d 1687, 1691 (Fed. Cir. 2007) (“Accommodating a prior art mechanical device that accomplishes [a desired] goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices. Applying modern electronics to older mechanical devices has been commonplace in recent years.”); In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958); see also MPEP § 2144.04. Furthermore, implementing a known function on a computer has been deemed obvious to one of ordinary skill in the art if the automation of the known function on a general purpose computer is nothing more than the predictable use of prior art elements according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417, 82 USPQ2d 1385, 1396 (2007); see also MPEP § 2143, Exemplary Rationales D and F. Likewise, it has been found to be obvious to adapt an existing process to incorporate Internet and Web browser technologies for communicating and displaying information because these technologies had become commonplace for those functions. Muniauction,
Inc. v. Thomson Corp., 532 F.3d 1318, 1326-27, 87 USPQ2d 1350, 1357 (Fed. Cir. 2008).
For more information on the obviousness determination, see MPEP § 2141.
2115 Material or Article Worked Upon by Apparatus [R-07.2015]
MATERIAL OR ARTICLE WORKED UPON DOES NOT LIMIT APPARATUS CLAIMS
Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
In Otto, the claims were directed to a core member for hair curlers (i.e., a particular device) and a method of making the core member (i.e., a particular method of making that device) and “not to a method of curling hair wherein th[e] particular device is used.” 312 F.2d at 940. The court held that patentability of the claims cannot be based “upon a certain procedure for curling hair using th[e] device and involving a number of steps in the process.” The court noted that “the process is irrelevant as is the recitation involving the hair being wound around the core” in terms of determining patentability of the particular device. Id. Therefore, the inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.
In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.
In In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), an apparatus claim recited “[a] taping machine comprising a supporting structure, a brush attached to said supporting structure, said brush being formed with projecting bristles which
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terminate in free ends to collectively define a surface to which adhesive tape will detachably adhere, and means for providing relative motion between said brush and said supporting structure while said adhesive tape is adhered to said surface.” An obviousness rejection was made over a reference to Kienzle which taught a machine for perforating sheets. The court upheld the rejection stating that “the references in claim 1 to adhesive tape handling do not expressly or impliedly require any particular structure in addition to that of Kienzle.” Id. at 580-81. The perforating device had the structure of the taping device as claimed, the difference was in the use of the device, and “the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself.” Id. at 580.
Note that this line of cases is limited to claims directed to machinery which works upon an article or material in its intended use.
2116 [Reserved]
2116.01 Novel, Unobvious Starting Material or End Product [R-08.2012]
All the limitations of a claim must be considered when weighing the differences between the claimed invention and the prior art in determining the obviousness of a process or method claim. See MPEP § 2143.03.
In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) and In re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996) addressed the issue of whether an otherwise conventional process could be patented if it were limited to making or using a nonobvious product. In both cases, the Federal Circuit held that the use of per se rules is improper in applying the test for obviousness under 35 U.S.C. 103. Rather, 35 U.S.C. 103 requires a highly fact-dependent analysis involving taking the claimed subject matter as a whole and comparing it to the prior art. “A process yielding a novel and nonobvious product may nonetheless be obvious; conversely, a process yielding a well-known product may yet be nonobvious.” TorPharm, Inc. v. Ranbaxy
Pharmaceuticals, Inc., 336 F.3d 1322, 1327, 67 USPQ2d 1511, 1514 (Fed. Cir. 2003).
Interpreting the claimed invention as a whole requires consideration of all claim limitations. Thus, proper claim construction requires treating language in a process claim which recites the making or using of a nonobvious product as a material limitation. The decision in Ochiai specifically dispelled any distinction between processes of making a product and methods of using a product with regard to the effect of any product limitations in either type of claim.
As noted in Brouwer, 77 F.3d at 425, 37 USPQ2d at 1666, the inquiry as to whether a claimed invention would have been obvious is “highly fact-specific by design.” Accordingly, obviousness must be assessed on a case-by-case basis. The following decisions are illustrative of the lack of per se rules in applying the test for obviousness
under 35 U.S.C. 103 and of the fact-intensive comparison of claimed processes with the prior art: In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985) (The examiner rejected a claim directed to a process in which patentable starting materials were reacted to form patentable end products. The prior art showed the same chemical reaction mechanism applied to other chemicals. The court held that the process claim was obvious over the prior art.); In re Albertson, 332 F.2d 379, 141 USPQ 730 (CCPA 1964) (Process of chemically reducing one novel, nonobvious material to obtain another novel, nonobvious material was claimed. The process was held obvious because the reduction reaction was old.); In re Kanter, 399 F.2d 249, 158 USPQ 331 (CCPA 1968) (Process of siliconizing a patentable base material to obtain a patentable product was claimed. Rejection based on prior art teaching the siliconizing process as applied to a different base material was upheld.); Cf. In re Pleuddemann, 910 F.2d 823, 15 USPQ2d 1738 (Fed. Cir. 1990) (Methods of bonding polymer and filler using a novel silane coupling agent held patentable even though methods of bonding using other silane coupling agents were well known because the process could not be conducted without the new agent); In re Kuehl, 475 F.2d 658, 177 USPQ 250 (CCPA 1973) (Process of cracking hydrocarbons using novel zeolite catalyst found to be patentable
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even though catalytic cracking process was old. “The test under 103 is whether in view of the prior art the invention as a whole would have been obvious at the time it was made, and the prior art here does not include the zeolite, ZK-22. The obviousness of the process of cracking hydrocarbons with ZK-22 as a catalyst must be determined without reference to knowledge of ZK-22 and its properties.” 475 F.2d at 664-665, 177 USPQ at 255.); and In re Mancy, 499 F.2d 1289, 182 USPQ 303 (CCPA 1974) (Claim to a process for the production of a known antibiotic by cultivating a novel, unobvious microorganism was found to be patentable.).
2117 -2120 [Reserved]
2121 Prior Art; General Level of Operability Required to Make a Prima Facie Case [R-08.2012]
I. PRIOR ART IS PRESUMED TO BE OPERABLE/ENABLING
When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to provide facts rebutting the presumption of operability. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980). See also MPEP § 716.07.
II. WHAT CONSTITUTES AN “ENABLING DISCLOSURE” DOES NOT DEPEND ON THE TYPE OF PRIOR ART THE DISCLOSURE IS CONTAINED IN
The level of disclosure required within a reference to make it an “enabling disclosure” is the same no matter what type of prior art is at issue. It does not matter whether the prior art reference is a U.S. patent, foreign patent, a printed publication or other. There is no basis in the statute (35 U.S.C. 102 or 103) for discriminating either in favor of or against prior art references on the basis of nationality. In re Moreton, 288 F.2d 708, 129 USPQ 227 (CCPA 1961).
III. EFFICACY IS NOT A REQUIREMENT FOR PRIOR ART ENABLEMENT
A prior art reference provides an enabling disclosure and thus anticipates a claimed invention if the reference describes the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention; “proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.” Impax Labs. Inc. v. Aventis Pharm . Inc., 468 F.3d 1366, 1383, 81 USPQ2d 1001, 1013 (Fed. Cir. 2006). See also MPEP § 2122.
2121.01 Use of Prior Art in Rejections Where Operability is in Question [R-08.2012]
“In determining that quantum of prior art disclosure which is necessary to declare an applicant’s invention ‘not novel’ or ‘anticipated’ within section 102, the stated test is whether a reference contains an ‘enabling disclosure’... .” In re Hoeksema, 399 F.2d 269, 158 USPQ 596 (CCPA 1968). The disclosure in an assertedly anticipating reference must provide an enabling disclosure of the desired subject matter; mere naming or description of the subject matter is insufficient, if it cannot be produced without undue experimentation. Elan Pharm., Inc. v. Mayo Found. For Med. Educ. & Research, 346 F.3d 1051, 1054, 68 USPQ2d 1373, 1376 (Fed. Cir. 2003) (At issue was whether a prior art reference enabled one of ordinary skill in the art to produce Elan’s claimed transgenic mouse without undue experimentation. Without a disclosure enabling one skilled in the art to produce a transgenic mouse without undue experimentation, the reference would not be applicable as prior art.). A reference contains an “enabling disclosure” if the public was in possession of the claimed invention before the date of invention. “Such possession is effected if one of ordinary skill in the art could have combined the publication’s description of the invention with his [or her] own knowledge to make the claimed invention.” In re Donohue, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985).
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I. 35 U.S.C. 102 REJECTIONS AND ADDITION OF EVIDENCE SHOWING REFERENCE IS OPERABLE
It is possible to make a 35 U.S.C. 102 rejection even if the reference does not itself teach one of ordinary skill how to practice the invention, i.e., how to make or use the article disclosed. If the reference teaches every claimed element of the article, secondary evidence, such as other patents or publications, can be cited to show public possession of the method of making and/or using. In re Donohue, 766 F.2d at 533, 226 USPQ at 621. See MPEP § 2131.01 for more information on 35 U.S.C. 102 rejections using secondary references to show that the primary reference contains an “enabling disclosure.”
II. 35 U.S.C. 103 REJECTIONS AND USE OF INOPERATIVE PRIOR ART
“Even if a reference discloses an inoperative device, it is prior art for all that it teaches.” Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551, 13 USPQ2d 1301, 1304 (Fed. Cir. 1989). Therefore, “a non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. 103.” Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991).
2121.02 Compounds and Compositions — What Constitutes Enabling Prior Art [R-08.2012]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time of the invention" or "date of invention," which are only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
I. ONE OF ORDINARY SKILL IN THE ART MUST BE ABLE TO MAKE OR SYNTHESIZE
Where a process for making the compound is not developed until after the date of invention, the mere naming of a compound in a reference, without more, cannot constitute a description of the compound. In
re Hoeksema, 399 F.2d 269, 158 USPQ 596 (CCPA 1968). Note, however, that a reference is presumed operable until applicant provides facts rebutting the presumption of operability. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980). Therefore, applicant must provide evidence showing that a process for making was not known at the time of the invention. See the following subsection for the evidentiary standard to be applied.
II. A REFERENCE DOES NOT CONTAIN AN “ENABLING DISCLOSURE” IF ATTEMPTS AT MAKING THE COMPOUND OR COMPOSITION WERE UNSUCCESSFUL BEFORE THE DATE OF INVENTION
When a prior art reference merely discloses the structure of the claimed compound, evidence showing that attempts to prepare that compound were unsuccessful before the date of invention will be adequate to show inoperability. In re Wiggins, 488 F.2d 538, 179 USPQ 421 (CCPA 1971). However, the fact that an author of a publication did not attempt to make the compound disclosed, without more, will not overcome a rejection based on that publication. In re Donohue, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985) (In this case, the examiner had made a rejection under pre-AIA 35 U.S.C. 102(b) over a publication, which disclosed the claimed compound, in combination with two patents teaching a general process of making the particular class of compounds. The applicant submitted an affidavit stating that the authors of the publication had not actually synthesized the compound. The court held that the fact that the publication’s author did not synthesize the disclosed compound was immaterial to the question of reference operability. The patents were evidence that synthesis methods were well known. The court distinguished Wiggins, in which a very similar rejection was reversed. In Wiggins, attempts to make the compounds using the prior art methods were all unsuccessful.). Compare In re Hoeksema, 399 F.2d 269, 158 USPQ 596 (CCPA 1968) (A claim to a compound was rejected over a patent to De Boer which disclosed compounds similar in structure to those claimed (obvious homologs) and a process of making these compounds. Applicant responded with an affidavit by an expert named Wiley which stated that there was no indication in the De Boer patent that the process disclosed in De Boer could
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be used to produce the claimed compound and that he did not believe that the process disclosed in De Boer could be adapted to the production of the claimed compound. The court held that the facts stated in this affidavit were legally sufficient to overcome the rejection and that applicant need not show that all known processes are incapable of producing the claimed compound for this showing would be practically impossible.).
2121.03 Plant Genetics — What Constitutes Enabling Prior Art [R-08.2012]
THOSE OF ORDINARY SKILL MUST BE ABLE TO GROW AND CULTIVATE THE PLANT
When the claims are drawn to plants, the reference, combined with knowledge in the prior art, must enable one of ordinary skill in the art to reproduce the plant. In re LeGrice, 301 F.2d 929, 133 USPQ 365 (CCPA 1962) (National Rose Society Annual of England and various other catalogues showed color pictures of the claimed roses and disclosed that applicant had raised the roses. The publications were published more than 1 year before applicant's filing date. The court held that the publications did not place the rose in the public domain. Information on the grafting process required to reproduce the rose was not included in the publications and such information was necessary for those of ordinary skill in the art (plant breeders) to reproduce the rose.). Compare Ex parte Thomson, 24 USPQ2d 1618 (Bd. Pat. App. & Inter. 1992) (Seeds were commercially available more than 1 year prior to applicant’s filing date. One of ordinary skill in the art could grow the claimed cotton cultivar from the commercially available seeds. Thus, the publications describing the cotton cultivar had “enabled disclosures.” The Board distinguished In re LeGrice by finding that the catalogue picture of the rose of In re LeGrice was the only evidence in that case. There was no evidence of commercial availability in enabling form since the asexually reproduced rose could not be reproduced from seed. Therefore, the public would not have possession of the rose by its picture alone, but the public would have possession of the cotton cultivar based on the publications and the availability of the seeds.). In In re Elsner, 381 F.3d 1125, 1126, 72 USPQ2d 1038, 1040 (Fed. Cir. 2004), prior to the critical date of a plant patent application, the
plant had been sold in Germany and a foreign Plant Breeder’s Rights (PBR) application for the same plant had been published in the Community Plant Variety Office Official Gazette. The court held that when (i) a publication identifies claimed the plant, (ii) a foreign sale occurs that puts one of ordinary skill in the art in possession of the plant itself, and (iii) such possession permits asexual reproduction of the plant without undue experimentation to one of ordinary skill in the art, then that combination of facts and events directly conveys the essential knowledge of the invention and constitutes a pre-AIA 35 U.S.C. 102(b) statutory bar. Id. at 1129, 72 USPQ2d at 1041. Although the court agreed with the Board that foreign sales may enable an otherwise non-enabling printed publication, the case was remanded for additional fact-finding in order to determine if the foreign sales of the plant were known to be accessible to the skilled artisan and if the skilled artisan could have reproduced the plant asexually after obtaining it without undue experimentation. Id. at 1131, 72 USPQ2d at 1043.
2121.04 Apparatus and Articles — What Constitutes Enabling Prior Art [R-08.2012]
PICTURES MAY CONSTITUTE AN “ENABLING DISCLOSURE”
Pictures and drawings may be sufficiently enabling to put the public in the possession of the article pictured. Therefore, such an enabling picture may be used to reject claims to the article. However, the picture must show all the claimed structural features and how they are put together. Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928). See also MPEP § 2125 for a discussion of drawings as prior art.
2122 Discussion of Utility in the Prior Art [R-08.2012]
UTILITY NEED NOT BE DISCLOSED IN REFERENCE
In order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility need be disclosed by the reference. In re Schoenwald, 964 F.2d 1122, 1124, 22 USPQ2d 1671, 1673 (Fed. Cir. 1992) (The application claimed compounds used in ophthalmic
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compositions to treat dry eye syndrome. The examiner found a printed publication which disclosed the claimed compound but did not disclose a use for the compound. The court found that the claim was anticipated since the compound and a process of making it was taught by the reference. The court explained that “no utility need be disclosed for a reference to be anticipatory of a claim to an old compound.” It is enough that the claimed compound is taught by the reference.). See also Impax Labs. Inc. v. Aventis Pharm. Inc., 468 F.3d 1366, 1383, 8 USPQ2d 1001, 1013 (Fed. Cir. 2006) (“[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.”).
2123 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments [R-08.2012]
I. PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d
804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
See also MPEP § 2131.05 and § 2145, subsection X.D., which discuss prior art that teaches away from the claimed invention in the context of anticipation and obviousness, respectively.
II. NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have “relatively acceptable dimensional stability” and “some degree of flexibility,” but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since “Gurley asserted no discovery beyond what was known in the art.” Id. at 554, 31 USPQ2d at 1132.). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In
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re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
2124 Exception to the Rule That the Critical Reference Date Must Precede the Filing Date [R-11.2013]
IN SOME CIRCUMSTANCES A FACTUAL REFERENCE NEED NOTANTEDATETHE FILING DATE
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. Some specific examples in which later publications showing factual evidence can be cited include situations where the facts shown in the reference are evidence “that, as of an application’s filing date, undue experimentation would have been required, In re Corneil, 347 F.2d 563, 568, 145 USPQ 702, 705 (CCPA 1965), or that a parameter absent from the claims was or was not critical, In re Rainer, 305 F.2d 505, 507 n.3, 134 USPQ 343, 345 n.3 (CCPA 1962), or that a statement in the specification was inaccurate, In re Marzocchi, 439 F.2d 220, 223 n.4, 169 USPQ 367, 370 n.4 (CCPA 1971), or that the invention was inoperative or lacked utility, In re Langer, 503 F.2d 1380, 1391, 183 USPQ 288, 297 (CCPA 1974), or that a claim was indefinite, In re Glass, 492 F.2d 1228,1232 n.6, 181 USPQ 31, 34 n.6 (CCPA 1974), or that characteristics of prior art products were known, In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962).” In re Koller, 613 F.2d 819, 823 n.5, 204 USPQ 702, 706 n.5 (CCPA 1980) (quoting In re Hogan, 559 F.2d 595, 605 n.17, 194 USPQ 527, 537 n.17 (CCPA 1977) (emphasis in original)). However, it is impermissible to use a later factual reference to determine whether the application is enabled or described as required under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In re Koller, 613 F.2d 819, 823 n. 5, 204 USPQ
702, 706 n.5 (CCPA 1980). References which do not qualify as prior art because they postdate the claimed invention may be relied upon to show the level of ordinary skill in the art at or around the time
the invention was made. Ex parte Erlich, 22 USPQ 1463 (Bd. Pat. App. & Inter. 1992).
2124.01 Tax Strategies Deemed Within the Prior Art [R-08.2012]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time of the invention," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
I. OVERVIEW
The Leahy-Smith America Invents Act (AIA), Public Law 112-29, sec. 14, 125 Stat. 284 (September 16, 2011) provides that for purposes of evaluating an invention for novelty and nonobviousness under 35 U.S.C. 102 and 35 U.S.C. 103, any strategy for reducing, avoiding, or deferring tax liability (hereinafter "tax strategy"), whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art. As a result, applicants will no longer be able to rely on the novelty or non-obviousness of a tax strategy embodied in their claims to distinguish them from the prior art. Any tax strategy will be considered indistinguishable from all other publicly available information that is relevant to a patent’s claim of originality. This provision aims to keep the ability to interpret the tax law and to implement such interpretation in the public domain, available to all taxpayers and their advisors.
The term "tax liability" is defined for purposes of this provision as referring to any liability for a tax under any federal, state, or local law, or the law of any foreign jurisdiction, including any statute, rule, regulation, or ordinance that levies, imposes, or assesses such tax liability.
There are two exclusions to this provision. The first is that the provision does not apply to that part of an invention that is a method, apparatus, technology, computer program product, or system, that is used solely for preparing a tax or information return or
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other tax filing, including one that records, transmits, transfers, or organizes data related to such filing.
The second is that the provision does not apply to that part of an invention that is a method, apparatus, technology, computer program product, or system, that is used solely for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor.
This provision took effect on September 16, 2011, and applies to any patent application that is pending on, or filed on or after, September 16, 2011, and to any patent issued on or after September 16, 2011. Accordingly, this provision will apply in a reexamination or other post-grant proceeding only to patents issued on or after September 16, 2011.
II. EXAMINATION GUIDANCE FOR CLAIMS RELATING TO TAX STRATEGIES
The following procedure should be followed when examining claims relating to tax strategies.
1. Construe the claim in accordance with MPEP § 2111 et seq.
2. Analyze the claim for compliance with 35 U.S.C. 101 and 112 in accordance with current guidance, which is unaffected by this provision.
3. Identify any limitations relating to a tax strategy, as defined above (note the listed exclusions).
a. Inventions that fall within the scope of AIA section 14 include those tax strategies especially suitable for use with tax-favored structures that must meet certain requirements, such as employee benefit plans, tax-exempt organizations, or other entities that must be structured or operated in a particular manner to obtain certain tax consequences.
b. Thus, AIA section 14 applies if the effect of an invention is to aid in satisfying the qualification requirements for a desired tax-favored entity status, to take advantage of the specific tax benefits offered in a tax-favored structure, or to allow for tax reduction, avoidance, or deferral not otherwise automatically available in such entity or structure.
4. Evaluate the claim in view of the prior art under 35 U.S.C. 102 and 103, treating any limitations
relating to a tax strategy as being within the prior art, and not as a patentable difference between the claim and the prior art. This approach is analogous to the treatment of printed matter limitations in a claim as discussed at MPEP § 2112.01, subsection III.
Form paragraph 7.06 may be used to indicate claim limitation(s) interpreted as a tax strategy. See MPEP § 706.02(m).
III. EXAMPLES DIRECTED TO COMPUTER-IMPLEMENTED METHODS
A computer-implemented method that is deemed novel and non-obvious would not be affected by this provision even if used for a tax purpose. For example, a novel and non-obvious computer-implemented method for manipulating data would not be affected by this provision even if the method organized data for a future tax filing. However, a prior art computer-implemented method would not become non-obvious by implementing a novel and non-obvious tax strategy. That is, the presence of limitations relating to the tax strategy would not cause a claim that is otherwise within the prior art to become novel or non-obvious over the prior art.
Thus, for purposes of applying art to a software-related invention under 35 U.S.C. 102 and 35 U.S.C. 103, claim limitations that are directed solely to enabling individuals to file their income tax returns or assisting them with managing their finances should be given patentable weight, except that claim limitations directed to a tax strategy should not be given patentable weight.
2125 Drawings as Prior Art [R-08.2012]
I. DRAWINGS CAN BE USED AS PRIOR ART
Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). However, the picture must show all the claimed structural features and how they are put together. Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928). The origin of the drawing is immaterial. For instance, drawings in a design patent can anticipate or make
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obvious the claimed invention as can drawings in utility patents. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). See MPEP § 2121.04 for more information on prior art drawings as “enabled disclosures.”
II. PROPORTIONS OF FEATURES INA DRAWING ARE NOT EVIDENCE OF ACTUAL PROPORTIONS WHEN DRAWINGS ARE NOT TO SCALE
When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of l i t t le value. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
222 F.3d 951, 956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000) (The disclosure gave no indication that the drawings were drawn to scale. “[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”). However, the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art. In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977) (“We disagree with the Solicitor’s conclusion, reached by a comparison of the relative dimensions of appellant’s and Bauer’s drawing figures, that Bauer ‘clearly points to the use of a chime length of roughly 1/2 to 1 inch for a whiskey barrel.’ This ignores the fact that Bauer does not disclose that his drawings are to scale. ... However, we agree with the Solicitor that Bauer’s teaching that whiskey losses are influenced by the distance the liquor needs to ‘traverse the pores of the wood’ (albeit in reference to the thickness of the barrelhead)” would have suggested the desirability of an increased chime length to one of ordinary skill in the art bent on further reducing whiskey losses.” 569 F.2d at 1127, 193 USPQ at 335-36.)
2126 Availability of a Document as a “Patent” for Purposes of Rejection Under 35
U.S.C. 102(a) or Pre-AIA 35 U.S.C. 102(a), (b), and (d) [R-11.2013]
I. THE NAME “PATENT” ALONE DOES NOT MAKE A DOCUMENT AVAILABLE AS A PRIOR ART PATENT UNDER 35 U.S.C. 102(a) or Pre-AIA 35 U.S.C. 102(a) OR (b)
What a foreign country designates to be a patent may not be a patent for purposes of rejection under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) and (b); it is the substance of the rights conferred and the way information within the “patent” is controlled that is determinative. In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958). See the next subsection for further explanation with respect to when a document can be applied in a rejection as a “patent.” See MPEP § 2135.01 for a further discussion of the use of “patents” in pre-AIA 35 U.S.C. 102(d) rejections.
II. A SECRET PATENT IS NOT AVAILABLE AS A REFERENCE UNDER 35 U.S.C. 102(a) or Pre-AIA 35 U.S.C. 102(a) or (b) UNTIL IT IS AVAILABLE TO THE PUBLIC BUT IT MAY BE AVAILABLE UNDER Pre-AIA 35 U.S.C. 102(d) AS OF GRANT DATE
Secret patents are defined as patents which are insufficiently accessible to the public to constitute “printed publications.” Decisions on the issue of what is sufficiently accessible to be a “printed publication” are located in MPEP § 2128 - MPEP § 2128.01.
Even if a patent grants an exclusionary right (is enforceable), it is not available as prior art under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b) if it is secret or private. In re Carlson, 983 F.2d 1032, 1037, 25 USPQ2d 1207, 1211 (Fed. Cir. 1992). The document must be at least minimally available to the public to constitute prior art. The patent is sufficiently available to the public for the purposes of 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b) if it is laid open for public inspection or disseminated in printed form. See, e.g., In re Carlson, 983 F.2d at 1037, 25 USPQ2d at 1211 (“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person
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or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”). The date that the patent is made available to the public is the date it is available as a 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b) reference. In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958). But a period of secrecy after granting the patent has been held to have no effect in connection with pre-AIA 35 U.S.C. 102(d). These patents are usable in rejections under pre-AIA 35 U.S.C. 102(d) as of the date patent rights are granted. In re Kathawala, 9 F.3d 942, 946, 28 USPQ2d 1789, 1788-89 (Fed. Cir. 1993). See MPEP § 2135 - MPEP § 2135.01 for more information on pre-AIA 35 U.S.C. 102(d).
2126.01 Date of Availability of a Patent as a Reference [R-11.2013]
DATE FOREIGN PATENT IS EFFECTIVE AS A REFERENCE IS USUALLY THE DATE PATENT RIGHTS ARE FORMALLY AWARDED TO ITS APPLICANT
The date the patent is available as a reference is generally the date that the patent becomes enforceable. This date is the date the sovereign formally bestows patents rights to the applicant. In re Monks, 588 F.2d 308, 200 USPQ 129 (CCPA 1978). There is an exception to this rule when the patent is secret as of the date the rights are awarded. In re Ekenstam, 256 F.2d 321, 118 USPQ 349
(CCPA 1958).
Note that MPEP § 901.05 summarizes in tabular form dates of patenting for many foreign patents. For a list of cases that discuss the date of patenting countries for purposes of pre-AIA 35 U.S.C. 102 in particular, see Chisum, Patents § 3.06[4] n.2.
2126.02 Scope of Reference’s Disclosure Which Can Be Used to Reject Claims When
the Reference Is a “Patent” but Not a “Publication” [R-11.2013]
OFTEN UNCLAIMED DETAILS FOUND IN THE PATENT SPECIFICATION CAN BE RELIED ON EVEN IF PATENT IS SECRET
When the patented document is used as a patent and not as a publication, the examiner is not restricted to the information conveyed by the patent claims but may use any information provided in the specification which relates to the subject matter of the patented claims when making a rejection under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a), (b) or (d). Ex parte Ovist, 152 USPQ 709, 710 (Bd. App. 1963) (The claim of an Italian patent was generic and thus embraced the species disclosed in the examples, the Board added that the entire specification was germane to the claimed invention and upheld the examiner’s pre-AIA 35 U.S.C. 102(b) rejection.); In re Kathawala, 9 F.3d 942, 28 USPQ2d 1785 (Fed. Cir. 1993) (The claims at issue where rejected under pre-AIA 35 U.S.C. 102(d) by applicant’s own parent applications in Greece and Spain. The applicant argued that the “invention ... patented in Spain was not the same ‘invention’ claimed in the U.S. application because the Spanish patent claimed processes for making [compounds for inhibition of cholesterol biosynthesis] and claims 1 and 2 were directed to the compounds themselves.” Id. at 944, 28 USPQ2d at 1786. The Federal Circuit held that “when an applicant files a foreign application fully disclosing his invention and having the potential to claim his invention in a number of ways, the reference in section 102(d) to ‘invention ... patented’necessarily includes all disclosed aspects of the invention.” Id. at 945-46, 28 USPQ2d at 1789.).
Note that In re Fuge, 272 F.2d 954, 957, 124 USPQ 105, 107 (CCPA 1959), does not conflict with the above decisions. This decision simply states “that, at the least, the scope of the patent embraces everything included in the [claim].” (emphasis added).
The courts have interpreted the phrase “invention ... patented” in pre-AIA 35 U.S.C. 102(a), (b), and (d) the same way and have cited decisions without regard to which of these subsections of pre-AIA 35
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U.S.C. 102 was at issue in the particular case at hand. Therefore, it does not seem to matter to which subsection of pre-AIA 35 U.S.C. 102 the cases are directed; the court decisions are interchangeable as to this issue.
2127 Domestic and Foreign Patent Applications as Prior Art [R-07.2015]
I. ABANDONED APPLICATIONS, INCLUDING PROVISIONAL APPLICATIONS
Abandoned Applications Disclosed to the Public Can Be Used as Prior Art
“An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent [application] is reference[d] in the disclosure of another patent, in a publication, or by voluntary disclosure under [former Defensive Publication rule] 37 CFR 1.139 [Reserved].” Lee Pharmaceutical v. Kreps, 577 F.2d 610, 613, 198 USPQ 601, 605 (9th Cir. 1978). An abandoned patent application becomes available as prior art only as of the date the public gains access to it. See 37 CFR 1.14(a)(1)(ii) and (iv). However, the subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent or U.S. patent application publication may be relied on in a 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) rejection based on that patent or patent application publication if the disclosure of the abandoned application is actually included or incorporated by reference in the patent. Compare In re Lund, 376 F.2d 982, 991, 153 USPQ 625, 633 (CCPA 1967) (The court reversed a rejection over a patent which was a continuation-in-part of an abandoned application. Applicant’s filing date preceded the issue date of the patent reference. The abandoned application contained subject matter which was essential to the rejection but which was not carried over into the continuation-in-part. The court held that the subject matter of the abandoned application was not available to the public as of either the parent’s or the child’s filing dates and thus could not be relied on in the pre-AIA 35 U.S.C. 102(e) rejection.). See also MPEP § 901.02. See MPEP § 2136.02 and MPEP § 2136.03 for the 35 U.S.C. 102(e) date of a U.S.
patent claiming priority under 35 U.S.C. 119 or 35 U.S.C. 120. See MPEP § 2154 for prior art under 35 U.S.C. 102(a)(2).
II. APPLICATIONS WHICH HAVE ISSUED AS PATENTS
A. A 35 U.S.C. 102(a)(2) or Pre-AIA 35 U.S.C. 102(e) Rejection Cannot Rely on Matter Which Was Canceled from the Application and Thus Did Not Get Published in the Issued Patent
Canceled matter in the application file of a U.S. patent cannot be relied upon in a rejection under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e). Ex Parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966). The canceled matter only becomes available as prior art as of the date the application issues into a patent since this is the date the application file history becomes available to the public. In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967). However, as discussed below, such matter may be available as prior art under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(b). For more information on available prior art for use in pre-AIA 35 U.S.C. 102(e) rejections see MPEP § 2136.02. For more information on available prior art for use in 35 U.S.C. 102(a)(2) rejections see MPEP § 2154 et seq.
B. A 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(b) Rejection Over a Published Application May Rely on Information that Was Canceled Prior to Publication
Figures that had been canceled from a Canadian patent application before issuance of the patent were available as prior art under pre-AIA 35 U.S.C. 102(b) as of the date the application became publicly accessible. The patent at issue and its underlying application were available for public inspection at the Canadian Patent Office more than one year before the effective filing date of the patents in suit. Bruckelmyer v. Ground Heaters, Inc., 445 F.3d
1374, 78 USPQ2d 1684 (Fed. Cir. 2006).
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III. FOREIGN APPLICATIONS OPEN FOR PUBLIC INSPECTION (LAID OPEN APPLICATIONS)
Laid Open Applications May Constitute “Published” Documents
When the specification is not issued in printed form but is announced in an official journal and anyone can inspect or obtain copies, it is sufficiently accessible to the public to constitute a “publication” within the meaning of 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) and (b). See In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981).
Older cases have held that laid open patent applications are not “published” and cannot constitute prior art. Ex parte Haller, 103 USPQ 332 (Bd. App. 1953). However, whether or not a document is “published” for the purposes of 35 U.S.C. 102 and 35 U.S.C. 103 depends on how accessible the document is to the public. As technology has made reproduction of documents easier, the accessibility of the laid open applications has increased. Items provided in easily reproducible form have thus become “printed publications” as the phrase is used in 35 U.S.C. 102. In re Wyer, 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981) (Laid open Australian patent application held to be a “printed publication” even though only the abstract was published because it was laid open for public inspection, microfilmed, “diazo copies” were distributed to five suboffices having suitable reproduction equipment and the diazo copies were available for sale.). The contents of a foreign patent application should not be relied upon as prior art until the date of publication (i.e., the insertion into the laid open application) can be confirmed by an examiner’s review of a copy of the document. See MPEP § 901.05.
IV. PENDING U.S. APPLICATIONS
As specified in 37 CFR 1.14(a), all pending U.S. applications are preserved in confidence except for published applications (see also 35 U.S.C. 122(b)), reissue applications, and applications in which a request to open the complete application to inspection by the public has been granted by the Office (37 CFR 1.11(b)). However, if an application
that has not been published has an assignee or inventor in common with the application being examined, a rejection will be proper in some circumstances. For instance, when the claims between the two applications are not independent or distinct, a provisional double patenting rejection is made. See MPEP § 804. If the copending applications differ by at least one inventor and at least one of the applications would have been obvious in view of the other, a provisional rejection over 35 U.S.C. 102(a)(2) or 35 U.S.C. 102(e) or 35 U.S.C. 103 is made when appropriate. See MPEP § 706.02(f)(2), § 706.02(k), § 706.02(l)(1), § 706.02(l)(3) and § 2154.
See MPEP § 706.02(a), § 804 , § 2136 et seq. and § 2154 for information pertaining to rejections relying on U.S. application publications.
2128 “Printed Publications” as Prior Art [R-11.2013]
I. A REFERENCE ISA “PRINTED PUBLICATION” IF IT IS ACCESSIBLE TO THE PUBLIC
A reference is proven to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981) (quoting I.C.E. Corp. v. Armco Steel Corp., 250 F. Supp.
738, 743, 148 USPQ 537, 540 (SDNY 1966)) (“We agree that ‘printed publication’should be approached as a unitary concept. The traditional dichotomy between ‘printed’ and ‘publication’ is no longer valid. Given the state of technology in document duplication, data storage, and data retrieval systems, the ‘probability of dissemination’ of an item very often has little to do with whether or not it is ‘printed’ in the sense of that word when it was introduced into the patent statutes in 1836. In any event, interpretation of the words ‘printed’ and ‘publication’ to mean ‘probability of dissemination’ and ‘public accessibility’ respectively, now seems to render their use in the phrase ‘printed publication’ somewhat redundant.”) In re Wyer, 655 F.2d at 226, 210 USPQ at 794.
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See also Carella v. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed. Cir. 1986) (Starlight Archery argued that Carella’s patent claims to an archery sight were anticipated under pre-AIA 35 U.S.C. 102(a) by an advertisement in a Wisconsin Bow Hunter Association (WBHA) magazine and a WBHA mailer prepared prior to Carella’s filing date. However, there was no evidence as to when the mailer was received by any of the addressees. Plus, the magazine had not been mailed until 10 days after Carella’s filing date. The court held that since there was no proof that either the advertisement or mailer was accessible to any member of the public before the filing date there could be no rejection under pre-AIA 35 U.S.C. 102(a).).
II. ELECTRONIC PUBLICATIONSAS PRIORART
A. Status as a “Printed Publication”
An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981) (“Accordingly, whether information is printed, handwritten, or on microfilm or a magnetic disc or tape, etc., the one who wishes to characterize the information, in whatever form it may be, as a ‘printed publication’ ... should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.’” (citations omitted).). See also Amazon.com v. Barnesandnoble.com, 73 F. Supp. 2d 1228, 53 USPQ2d 1115, 1119 (W.D. Wash. 1999) (Pages from a website were relied on by defendants as an anticipatory reference (to no avail), however status of the reference as prior art was not challenged.); In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Database printouts of abstracts which were not themselves prior art publications were properly relied as providing evidence that the software products referenced therein were “first installed” or “released” more than one year prior to applicant’s filing date.).
The Office policy requiring recordation of the field of search and search results (see MPEP § 719.05) weighs in favor of finding that Internet and on-line database references cited by the examiner are “accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” Wyer, 655 F.2d at 221, 210 USPQ at 790. Office copies of an electronic document must be retained if the same document may not be available for retrieval in the future. This is especially important for sources such as the Internet and online databases.
B. Date of Availability
Prior art disclosures on the Internet or on an on-line database are considered to be publicly available as of the date the item was publicly posted. Absent evidence of the date that the disclosure was publicly posted, if the publication itself does not include a publication date (or retrieval date), it cannot be relied upon as prior art under 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) or (b). However, it may be relied upon to provide evidence regarding the state of the art. Examiners may ask the Scientific and Technical Information Center to find the earliest date of publication or posting. See MPEP § 901.06(a), subsection IV.G.
C. Extent of Teachings Relied Upon
An electronic publication, like any publication, may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP § 2121.01 and § 2123. Note, however, that if an electronic document which is the abstract of a patent or printed publication is relied upon in a rejection under 35 U.S.C. 102 or 35 U.S.C. 103, only the text of the abstract (and not the underlying document) may be relied upon to support the rejection. In situations where the electronic version and the published paper version of the same or a corresponding patent or printed publication differ appreciably, each may need to be cited and relied upon as independent references based on what they disclose.
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D. Internet Usage Policy
See MPEP § 904.02(c) for the portions of the Internet Usage Policy pertaining to Internet searching and documenting search strategies. See MPEP § 707.05 for the proper citation of electronic documents.
III. EXAMINER NEED NOT PROVE ANYONE ACTUALLY LOOKED AT THE DOCUMENT
One need not prove someone actually looked at a publication when that publication is accessible to the public through a library or patent office. See In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981); In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986).
2128.01 Level of Public Accessibility Required [R-07.2015]
I. A THESIS PLACED IN A UNIVERSITY LIBRARY MAY BE PRIORART IF SUFFICIENTLY ACCESSIBLE TO THE PUBLIC
A doctoral thesis indexed and shelved in a library is sufficiently accessible to the public to constitute prior art as a “printed publication.” In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). Even if access to the library is restricted, a reference will constitute a “printed publication” as long as a presumption is raised that the portion of the public concerned with the art would know of the invention. In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978).
In In re Hall, general library cataloging and shelving practices showed that a doctoral thesis deposited in university library would have been indexed, cataloged and shelved and thus available to the public before the critical date. Compare In re Cronyn, 890 F.2d 1158, 13 USPQ2d 1070 (Fed. Cir. 1989) wherein doctoral theses were shelved and indexed by index cards filed alphabetically by student name and kept in a shoe box in the chemistry library. The index cards only listed the student name and title of the thesis. In Cronyn, the court held that the students’ theses were not accessible to the public. The court reasoned that the theses had not been either cataloged or indexed in a meaningful way since
thesis could only be found if the researcher’s name was known, but the name bears no relationship to the subject of the thesis. Notably, a dissenting judge, in Cronyn, indicated that since the theses were shelved in the library, it was enough to make them sufficiently accessible to the public. The nature of the index was not determinative. The dissenting judge relied on prior Board decisions (Gulliksen v. Halberg, 75 USPQ 252, 257 (Bd. App. 1937) and Ex parte Hershberger, 96 USPQ 54, 56 (Bd. App. 1952)), which held that shelving a single copy in a public library makes the work a “printed publication.” While these Board decisions have not been expressly overruled, they have been criticized in other decisions. See In re Tenney, 254 F.2d 619, 117 USPQ 348 (CCPA 1958) (concurring opinion by J.Rich) (A document, of which there is but one copy, whether it be handwritten, typewritten or on microfilm, may be technically accessible to anyone who can find it. Such a document is not “printed” in the sense that a printing press has been used to reproduce the document. If only technical accessibility were required “logic would require the inclusion within the term [printed] of all unprinted public documents for they are all ‘accessible.’While some tribunals have gone quite far in that direction, as in the ‘college thesis cases’ I feel they have done so unjustifiably and on the wrong theory. Knowledge is not in the possession of the public where there has been no dissemination, as distinguished from technical accessibility...” The real significance of the word “printed” is grounded in the “ probability of wide circulation.”). See also Deep Welding, Inc. v. Sciaky Bros., 417 F.2d 1227, 163 USPQ 144 (7th Cir. 1969) (calling the holding of Ex parte Hershberger “extreme”). Compare In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978) (A reference will constitute a “printed publication” as long as a presumption is raised that the portion of the public concerned with the art would know of the invention even if accessibility is restricted to only this part of the public. But accessibility to applicant’s thesis was restricted to only three members of a graduate committee. There can be no presumption that those concerned with the art would have known of the invention in this case.).
II. ORALLY PRESENTED PAPER CAN CONSTITUTE A “PRINTED PUBLICATION” IF
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WRITTEN COPIES ARE AVAILABLE WITHOUT RESTRICTION
A paper which is orally presented in a forum open to all interested persons constitutes a “printed publication” if written copies are disseminated without restriction. Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir. 1985) (Paper orally presented to between 50 and 500 persons at a scientific meeting open to all persons interested in the subject matter, with written copies distributed without restriction to all who requested, is a printed publication. Six persons requested and obtained copies.). An oral presentation at a scientific meeting or a demonstration at a trade show may be prior art under 35 U.S.C. 102(a)(1)’s provision: “otherwise available to the public.” See MPEP § 2152.02(e).
III. INTERNAL DOCUMENTS INTENDED TO BE CONFIDENTIAL ARE NOT “PRINTED PUBLICATIONS”
Documents and items only distributed internally within an organization which are intended to remain confidential are not “printed publications” no matter how many copies are distributed. There must be an existing policy of confidentiality or agreement to remain confidential within the organization. Mere intent to remain confidential is insufficient. In re George, 2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987) (Research reports disseminated in-house to only those persons who understood the policy of confidentiality regarding such reports are not printed publications even though the policy was not specifically stated in writing.); Garret Corp. v. United States, 422 F.2d 874, 878, 164 USPQ 521, 524 (Ct. Cl.1970) (“While distribution to government agencies and personnel alone may not constitute publication ... distribution to commercial companies without restriction on use clearly does.”); Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 15 USPQ2d 1321 (Fed. Cir. 1990) (Four reports on the AESOP-B military computer system which were not under security classification were distributed to about fifty organizations involved in the AESOP-B project. One document contained the legend “Reproduction or further dissemination is not authorized.” The other documents were of the class that would contain this legend. The documents were housed in Mitre
Corporation’s library. Access to this library was restricted to those involved in the AESOP-B project. The court held that public access was insufficient to make the documents “printed publications.”).
IV. PUBLICLY DISPLAYED DOCUMENTS CAN CONSTITUTEA “PRINTED PUBLICATION” EVEN IF THE DURATION OF DISPLAY IS FOR ONLY A FEW DAYS AND THE DOCUMENTS ARE NOT DISSEMINATED BY COPIES OR INDEXED IN A LIBRARY OR DATABASE
A publicly displayed document where persons of ordinary skill in the art could see it and are not precluded from copying it can constitute a “printed publication,” even if it is not disseminated by the distribution of reproductions or copies and/or indexed in a library or database. As stated in In re Klopfenstein, 380 F.3d 1345, 1348, 72 USPQ2d 1117, 1119 (Fed. Cir. 2004), “the key inquiry is whether or not a reference has been made ‘publicly accessible.’” Prior to the critical date, a fourteen-slide presentation disclosing the invention was printed and pasted onto poster boards. The printed slide presentation was displayed with no confidentiality restrictions for approximately three cumulative days at two different industry events. Id. at 1347, 72 USPQ2d at 1118. The court noted that “an entirely oral presentation at a scientific conference that includes neither slides nor copies of the presentation is without question not a 'printed publication' for the purposes of [pre-AIA] 35 U.S.C. § 102(b). Furthermore, a presentation that includes a transient display of slides is likewise not necessarily a ‘printed publication.’” Id. at 1349 n.4, 72 USPQ2d at 1120 n.4. In resolving whether or not a temporarily displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible to count as a “printed publication” under pre-AIA 35 U.S.C. 102(b), the court considered the following factors: “the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.” Id. at 1350, 72 USPQ2d at 1120. Upon reviewing the above factors, the court concluded that the display “was sufficiently publicly accessible to count as a ‘printed publication.’” Id. at 1352, 72 USPQ2d at 1121. See also Diomed, Inc. v.
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Angiodynamics, 450 F.Supp.2d 130 (D. Mass. 2006)(a video that accompanied oral presentations in Austria, Belgium, France, and Italy was held not a printed publication).
Note that an oral presentation at a scientific meeting or a demonstration at a trade show may be prior art under 35 U.S.C. 102(a)(1)’s provision: “otherwise available to the public.” See MPEP § 2152.02(e).
2128.02 Date Publication Is Available as a Reference [R-08.2012]
I. DATE OF ACCESSIBILITY CAN BE SHOWN THROUGH EVIDENCE OF ROUTINE BUSINESS PRACTICES
Evidence showing routine business practices can be used to establish the date on which a publication became accessible to the public. Specific evidence showing when the specific document actually became available is not always necessary. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir.), cert. denied, 988 U.S. 892 (1988) (Court held that evidence submitted by Intel regarding undated specification sheets showing how the company usually treated such specification sheets was enough to show that the sheets were accessible by the public before the critical date.); In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986) (Librarian’s affidavit establishing normal time frame and practice for indexing, cataloging and shelving doctoral theses established that the thesis in question would have been accessible by the public before the critical date.).
II. A JOURNAL ARTICLE OR OTHER PUBLICATION BECOMESAVAILABLEAS PRIOR ART ON DATE OF IT IS RECEIVED BY A MEMBER OF THE PUBLIC
A publication disseminated by mail is not prior art until it is received by at least one member of the public. Thus, a magazine or technical journal is effective as of the date when first person receives it, not the date it was mailed or sent to the publisher.
In re Schlittler, 234 F.2d 882, 110 USPQ 304 (CCPA 1956).
2129 Admissions as Prior Art [R-08.2012]
I. ADMISSIONS BY APPLICANT CONSTITUTE PRIOR ART
A statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988). However, even if labeled as “prior art,” the work of the same inventive entity may not be considered prior art against the claims unless it falls under one of the statutory categories. Id.; see also Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984) (“[W]here the inventor continues to improve upon his own work product, his foundational work product should not, without a statutory basis, be treated as prior art solely because he admits knowledge of his own work. It is common sense that an inventor, regardless of an admission, has knowledge of his own work.”).
Consequently, the examiner must determine whether the subject matter identified as “prior art” is applicant’s own work, or the work of another. In the absence of another credible explanation, examiners should treat such subject matter as the work of another.
II. DISCUSSION OF PRIOR ART IN SPECIFICATION
Where the specification identifies work done by another as “prior art,” the subject matter so identified is treated as admitted prior art. In re Nomiya, 509 F.2d 566, 571, 184 USPQ 607, 611 (CCPA 1975) (holding applicant’s labeling of two figures in the application drawings as “prior art” to be an
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admission that what was pictured was prior art relative to applicant’s improvement).
III. JEPSON CLAIMS
Drafting a claim in Jepson format (i.e., the format described in 37 CFR 1.75(e); see MPEP § 608.01(m)) is taken as an implied admission that the subject matter of the preamble is the prior art work of another. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 534 (CCPA 1982) (holding preamble of Jepson-type claim to be admitted prior art where
applicant’s specification credited another as the inventor of the subject matter of the preamble). However, this implication may be overcome where applicant gives another credible reason for drafting the claim in Jepson format. In re Ehrreich, 590 F.2d 902, 909-910, 200 USPQ 504, 510 (CCPA 1979) (holding preamble not to be admitted prior art where applicant explained that the Jepson format was used to avoid a double patenting rejection in a co-pending application and the examiner cited no art showing the subject matter of the preamble). Moreover, where the preamble of a Jepson claim describes applicant’s own work, such may not be used against the claims. Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984); Ehrreich, 590 F.2d at 909-910, 200 USPQ at 510.
IV. INFORMATION DISCLOSURE STATEMENT (IDS)
Mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354-55, 66 USPQ2d 1331, 1337-38 (Fed Cir. 2003) (listing of applicant’s own prior patent in an IDS does not make it available as prior art absent a statutory basis); see also 37 CFR 1.97(h) (“The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered
to be, material to patentability as defined in § 1.56(b).”).
2130 [Reserved]
2131 Anticipation — Application of 35 U.S.C. 102 [R-11.2013]
A claimed invention may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is available as prior art. To anticipate a claim, the disclosure must teach every element of the claim.
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). “When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art.” Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001) (claim to a system for setting a computer clock to an offset time to address the Year 2000 (Y2K) problem, applicable to records with year date data in “at least one of two-digit, three-digit, or four-digit” representations, was held anticipated by a system that offsets year dates in only two-digit formats). See also MPEP § 2131.02. “The identical invention must be shown in as complete detail as is contained in the ... claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology
is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Note that, in some circumstances, it is permissible to use multiple
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references in a 35 U.S.C. 102 rejection. See MPEP § 2131.01.
2131.01 Multiple Reference 35 U.S.C. 102 Rejections [R-11.2013]
Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:
(A) Prove the primary reference contains an “enabled disclosure;”
(B) Explain the meaning of a term used in the primary reference; or
(C) Show that a characteristic not disclosed in the reference is inherent.
See subsections I-III below for more explanation of each circumstance.
I. TO PROVE REFERENCE CONTAINS AN “ENABLED DISCLOSURE”
Extra References and Extrinsic Evidence Can Be Used To Show the Primary Reference Contains an “Enabled Disclosure”
When the claimed composition or machine is disclosed identically by the reference, an additional reference may be relied on to show that the primary reference has an “enabled disclosure.” In re Samour, 571 F.2d 559, 197 USPQ 1 (CCPA 1978) and In re Donohue, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985) (Compound claims were rejected under pre-AIA 35 U.S.C. 102(b) over a publication in view of two patents. The publication disclosed the claimed compound structure while the patents taught methods of making compounds of that general class. The applicant argued that there was no motivation to combine the references because no utility was previously known for the compound and that the 35 U.S.C. 102 rejection over multiple references was improper. The court held that the publication taught all the elements of the claim and thus motivation to combine was not required. The patents were only submitted as evidence of what was in the public's possession before applicant’s invention.).
II. TO EXPLAIN THE MEANING OF A TERM USED IN THE PRIMARY REFERENCE
Extra References or Other Evidence Can Be Used to Show Meaning of a Term Used in the Primary Reference
Extrinsic evidence may be used to explain but not expand the meaning of terms and phrases used in the reference relied upon as anticipatory of the claimed subject matter. In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Baxter Travenol Labs. invention was directed to a blood bag system incorporating a bag containing DEHP, an additive to the plastic which improved the bag’s red blood cell storage capability. The examiner rejected the claims over a technical progress report by Becker which taught the same blood bag system but did not expressly disclose the presence of DEHP. The report, however, did disclose using commercial blood bags. It also disclosed the blood bag system as “very similar to [Baxter] Travenol’s commercial two bag blood container.” Extrinsic evidence (depositions, declarations and Baxter Travenol’s own admissions) showed that commercial blood bags, at the time Becker’s report was written, contained DEHP. Therefore, one of ordinary skill in the art would have known that “commercial blood bags” meant bags containing DEHP. The claims were thus held to be anticipated.).
III. TO SHOW THAT A CHARACTERISTIC NOT DISCLOSED IN THE REFERENCE IS INHERENT
Extra Reference or Evidence Can Be Used To Show an Inherent Characteristic of the Thing Taught by the Primary Reference
“To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991) (The court went on to explain that “this modest flexibility in the rule that ‘anticipation’ requires that every element of the claims appear in a single reference accommodates situations in which the common knowledge of technologists is not
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recorded in the reference; that is, where technological facts are known to those in the field of the invention, albeit not known to judges.” 948 F.2d at 1268, 20 USPQ at 1749-50.). Note that as long as there is evidence of record establishing inherency, failure of those skilled in the art to contemporaneously recognize an inherent property, function or ingredient of a prior art reference does not preclude a finding of anticipation. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Two prior art references disclosed blasting compositions containing water-in-oil emulsions with identical ingredients to those claimed, in overlapping ranges with the claimed composition. The only element of the claims arguably not present in the prior art compositions was “sufficient aeration . . . entrapped to enhance sensitivity to a substantial degree.” The Federal Circuit found that the emulsions described in both references would inevitably and inherently have “sufficient aeration” to sensitize the compound in the claimed ranges based on the evidence of record (including test data and expert testimony). This finding of inherency was not defeated by the fact that one of the references taught away from air entrapment or purposeful aeration.). See also In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 139 (Fed. Cir. 1986); Titanium Metals Corp. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985). See MPEP § 2112 - § 2112.02 for case law on inherency. Also note that the critical date of extrinsic evidence showing a universal fact need not antedate the filing date. See MPEP § 2124.
2131.02 Genus-Species Situations [R-11.2013]
I. A SPECIES WILL ANTICIPATE A CLAIM TO A GENUS
“A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus.” The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989) (Gosteli claimed a genus of 21 specific chemical species of bicyclic thia-aza compounds in Markush claims. The prior art reference applied against the claims disclosed two of the chemical species. The parties agreed that the prior art species
would anticipate the claims unless applicant was entitled to his foreign priority date.).
II. A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO MATTER HOW MANY OTHER SPECIES ARE NAMED
A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught. The Board compared the facts to the situation in which the compound was found in the Merck Index, saying that “the tenth edition of the Merck Index lists ten thousand compounds. In our view, each and every one of those compounds is ‘described’ as that term is used in [pre-AIA] 35 U.S.C. 102(a), in that publication.”). Id. at 1718. See also In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982) (The claims were directed to polycarbonate containing cadmium laurate as an additive. The court upheld the Board’s finding that a reference specifically naming cadmium laurate as an additive amongst a list of many suitable salts in polycarbonate resin anticipated the claims. The applicant had argued that cadmium laurate was only disclosed as representative of the salts and was expected to have the same properties as the other salts listed while, as shown in the application, cadmium laurate had unexpected properties. The court held that it did not matter that the salt was not disclosed as being preferred, the reference still anticipated the claims and because the claim was anticipated, the unexpected properties were immaterial.).
III. A GENERIC DISCLOSURE WILL ANTICIPATE A CLAIMED SPECIES COVERED BY THAT DISCLOSURE WHEN THE SPECIES CAN BE “AT ONCE ENVISAGED” FROM THE DISCLOSURE
“[W]hether a generic disclosure necessarily anticipates everything within the genus … depends
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on the factual aspects of the specific disclosure and the particular products at issue.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083, 89 USPQ2d 1370, 1375 (Fed. Cir. 2008). See also Osram Sylvania Inc. v. American Induction Tech., 701 F.3d 698, 706, 105 USPQ2d 1368, 1374 (Fed. Cir. 2012) (“how one of ordinary skill in the art would understand the relative size of a genus or species in a particular technology is of critical importance”).
For example, when a claimed compound is not specifically named in a reference, but instead it is necessary to select portions of teachings within the reference and combine them, e.g., select various substituents from a list of alternatives given for placement at specific sites on a generic chemical formula to arrive at a specific composition, anticipation can only be found if the classes of substituents are sufficiently limited or well delineated. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). If one of ordinary skill in the art is able to “at once envisage” the specific compound within the generic chemical formula, the compound is anticipated. One of ordinary skill in the art must be able to draw the structural formula or write the name of each of the compounds included in the generic formula before any of the compounds can be “at once envisaged.” One may look to the preferred embodiments to determine which compounds can be anticipated. In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
In In re Petering, the prior art disclosed a generic
chemical formula “wherein X, Y, Z, P, and R'- represent either hydrogen or alkyl radicals, R a side chain containing an OH group.” The court held that this formula, without more, could not anticipate a
claim to 7-methyl-9-[d, l'-ribityl]-isoalloxazine because the generic formula encompassed a vast number and perhaps even an infinite number of compounds. However, the reference also disclosed
preferred substituents for X, Y, Z, P, R, and R' as
follows: where X, P, and R' are hydrogen, where Y and Z may be hydrogen or methyl, and where R is one of eight specific isoalloxazines. The court determined that this more limited generic class consisted of about 20 compounds. The limited number of compounds covered by the preferred formula in combination with the fact that the number
of substituents was low at each site, the ring positions were limited, and there was a large unchanging structural nucleus, resulted in a finding that the reference sufficiently described “each of the various permutations here involved as fully as if he had drawn each structural formula or had written each name.” The claimed compound was 1 of these 20 compounds. Therefore, the reference “described” the claimed compound and the reference anticipated the claims.
In In re Schauman, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), claims to a specific compound were anticipated because the prior art taught a generic formula embracing a limited number of compounds closely related to each other in structure and the properties possessed by the compound class of the prior art was that disclosed for the claimed compound. The broad generic formula seemed to describe an infinite number of compounds but claim 1 was limited to a structure with only one variable substituent R. This substituent was limited to low alkyl radicals. One of ordinary skill in the art would at once envisage the subject matter within claim 1 of the reference.).
Compare In re Meyer, 599 F.2d 1026, 202 USPQ 175 (CCPA 1979) (A reference disclosing “alkaline chlorine or bromine solution” embraces a large number of species and cannot be said to anticipate claims to “alkali metal hypochlorite.”); Akzo N.V. v. International Trade Comm’n, 808 F.2d 1471, 1 USPQ2d 1241 (Fed. Cir. 1986) (Claims to a process for making aramid fibers using a 98% solution of sulfuric acid were not anticipated by a reference which disclosed using sulfuric acid solution but which did not disclose using a 98% concentrated sulfuric acid solution.). See MPEP § 2144.08 for a discussion of obviousness in genus-species situations.
2131.03 Anticipation of Ranges [R-07.2015]
I. A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE
“[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.”
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Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (emphasis in original) (Claims to titanium (Ti) alloy with 0.6-0.9% nickel (Ni) and 0.2-0.4% molybdenum (Mo) were held anticipated by a graph in a Russian article on Ti-Mo-Ni alloys because the graph contained an actual data point corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni and this composition was within the claimed range of compositions.).
II. PRIOR ART WHICH TEACHES A RANGE OVERLAPPING,APPROACHING, OR TOUCHING THE CLAIMED RANGE ANTICIPATES IF THE PRIOR ART RANGE DISCLOSES THE CLAIMED RANGE WITH “SUFFICIENT SPECIFICITY”
When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with “sufficient specificity to constitute an anticipation under the statute.” What constitutes a “sufficient specificity” is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with “sufficient specificity” to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
In ClearValue, the claim at issue was directed to a process of clarifying water with alkalinity below 50 ppm, whereas the prior art taught that the same process works for systems with alkalinity of 150 ppm or less. In holding the claim anticipated, the court observed that “there is no allegation of criticality or any evidence demonstrating any difference across the range.” Id. at 1345, 101 USPQ2d at 1777. In Atofina, the court held that a reference temperature range of 100-500 degrees C did not describe the claimed range of 330-450 degrees C with sufficient specificity to be
anticipatory, even though there was a slight overlap between the reference’s preferred range (150-350 degrees C) and the claimed range. “[T]he disclosure of a range is no more a disclosure of the end points of the range than it is each of the intermediate points.” Id. at 1000, 78 USPQ2d at 1424. Patentee described claimed temperature range as “critical” to enable the process to operate effectively, and showed that one of ordinary skill would have expected the synthesis process to operate differently outside the claimed range.
If the prior art disclosure does not disclose a claimed range with “sufficient specificity” to anticipate a claimed invention, any evidence of unexpected results within the narrow range may render the claims unobvious. See MPEP § 716.02 et seq. The question of “sufficient specificity” is similar to that of “clearly envisaging” a species from a generic teaching. See MPEP § 2131.02.
A 35 U.S.C. 102/103 combination rejection is permitted if it is unclear if the reference teaches the range with “sufficient specificity.” The examiner must, in this case, provide reasons for anticipation as well as a reasoned statement regarding obviousness. Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993) (expanded Board). For a discussion of the obviousness of ranges see MPEP § 2144.05.
III. PRIOR ART WHICH TEACHES A VALUE OR RANGE THAT IS VERY CLOSE TO, BUT DOES NOT OVERLAP OR TOUCH, THE CLAIMED RANGE DOES NOT ANTICIPATE THE CLAIMED RANGE
“[A]nticipation under § 102 can be found only when the reference discloses exactly what is claimed and that where there are differences between the reference disclosure and the claim, the rejection must be based on § 103 which takes differences into account.” Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims to titanium (Ti) alloy with 0.8% nickel (Ni) and 0.3% molybdenum (Mo) were not anticipated by, although they were held obvious over, a graph in a Russian article on Ti-Mo-Ni alloys in which the graph
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contained an actual data point corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni.).
2131.04 Secondary Considerations [R-08.2012]
Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973).
2131.05 Nonanalogous or Disparaging Prior Art [R-08.2012]
“Arguments that the alleged anticipatory prior art is ‘nonanalogous art’ or ‘teaches away from the invention’ or is not recognized as solving the problem solved by the claimed invention, [are] not ‘germane’ to a rejection under section 102.” Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)). See also State Contracting & Eng’ g Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068, 68 USPQ2d 1481, 1488 (Fed. Cir. 2003) (The question of whether a reference is analogous art is not relevant to whether that reference anticipates. A reference may be directed to an entirely different problem than the one addressed by the inventor, or may be from an entirely different field of endeavor than that of the claimed invention, yet the reference is still anticipatory if it explicitly or inherently discloses every limitation recited in the claims.).
A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference “teaches away” from the invention is inapplicable to an anticipation analysis. Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The prior art was held to anticipate the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”). See Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)(claimed composition
that expressly excluded an ingredient held anticipated by reference composition that optionally included that same ingredient); see also Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Claimed composition was anticipated by prior art reference that inherently met claim limitation of “sufficient aeration” even though reference taught away from air entrapment or purposeful aeration.).
2132 Pre-AIA 35 U.S.C. 102(a) [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]
Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
*****
I. “KNOWN OR USED”
A. “Known or Used” Means Publicly Known or Used
“The statutory language ‘known or used by others in this country’ [pre-AIA 35 U.S.C. 102(a)], means knowledge or use which is accessible to the public.” Carella v. Starlight Archery, 804 F.2d 135, 231
USPQ 644 (Fed. Cir. 1986). The knowledge or use is accessible to the public if there has been no deliberate attempt to keep it secret. W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).
See MPEP § 2128 - § 2128.02 for case law concerning public accessibility of publications.
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B. Another’s Sale of a Product Made by a Secret Process Can Be a Pre-AIA 35 U.S.C. 102(a) Public Use if the Process Can Be Determined by Examining the Product
“The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” But a secret use of the process coupled with the sale of the product does not result in a public use of the process unless the public could learn the claimed process by examining the product. Therefore, secret use of a process by another, even if the product is commercially sold, cannot result in a rejection under pre-AIA 35 U.S.C. 102(a) if an examination of the product would not reveal the process. Id.
II. “IN THIS COUNTRY”
Only Knowledge or Use in the U.S. Can Be Used in a Pre-AIA 35 U.S.C. 102(a) Rejection
The knowledge or use relied on in a pre-AIA 35 U.S.C. 102(a) rejection must be knowledge or use “in this country.” Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C. 102(a). In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958). Note that the changes made to pre-AIA 35 U.S.C. 104 by NAFTA (Public Law 103-182) and Uruguay Round Agreements Act (Public Law 103-465) do not modify the meaning of “in this country” as used in pre-AIA 35 U.S.C. 102(a) and thus “in this country” still means in the United States for purposes of pre-AIA 35 U.S.C. 102(a) rejections.
III. “BY OTHERS”
“Others” Means Any Combination of Authors or Inventors Different Than the Inventive Entity
The term “others” in pre-AIA 35 U.S.C. 102(a) refers to any entity which is different from the inventive entity. The entity need only differ by one person to be “by others.” This holds true for all types of references eligible as prior art under pre-AIA 35 U.S.C. 102(a) including publications as well as public knowledge and use. Any other interpretation of pre-AIA 35 U.S.C. 102(a) “would negate the one
year [grace] period afforded under § 102(b).” In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982).
IV. “PATENTED IN THIS OR A FOREIGN COUNTRY”
See MPEP § 2126 for information on the use of secret patents as prior art.
2132.01 Publications as Pre-AIA 35 U.S.C. 102(a) Prior Art [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]
I. Pre-AIA 35 U.S.C. 102(a) PRIMA FACIE CASE IS ESTABLISHED IF REFERENCE PUBLICATION IS “BY OTHERS”
A prima facie case is made out under pre-AIA 35 U.S.C. 102(a) if, within 1 year of the filing date, the invention, or an obvious variant thereof, is described in a “printed publication” whose authorship differs in any way from the inventive entity unless it is stated within the publication itself that the publication is describing the applicant’s work. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). See MPEP § 2128 for case law on what constitutes a “printed publication.” Note that when the reference is a U.S. patent published within the year prior to the application filing date, a pre-AIA 35 U.S.C. 102(e) rejection should be made. See MPEP § 2136 - § 2136.05 for case law dealing with pre-AIA 35 U.S.C. 102(e).
II. APPLICANT CAN REBUT PRIMA FACIE CASE BY SHOWING REFERENCE’S DISCLOSURE WAS DERIVED FROM APPLICANT’S OWN WORK
Applicant’s disclosure of his or her own work within the year before the application filing date cannot be used against him or her under pre-AIA 35 U.S.C.
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102(a). In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982) (discussed below). Therefore, where the applicant is one of the co-authors of a publication cited against his or her application, the publication may be removed as a reference by the filing of affidavits made out by the other authors establishing that the relevant portions of the publication originated with, or were obtained from, applicant. Such affidavits are called disclaiming affidavits. Ex parte Hirschler, 110 USPQ 384 (Bd. App. 1952). The rejection can also be overcome by submission of a specific declaration by the applicant establishing that the article is describing applicant’s own work. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA
1982). However, if there is evidence that the co-author has refused to disclaim inventorship and believes himself or herself to be an inventor, applicant’s affidavit will not be enough to establish that applicant is the sole inventor and the rejection will stand. Ex parte Kroger, 219 USPQ 370 (Bd. Pat. App. & Int. 1982) (discussed below). It is also possible to overcome the rejection by adding the coauthors as inventors to the application if the requirements of 35 U.S.C. 116, third paragraph are met. In re Searles, 422 F.2d 431, 164 USPQ 623 (CCPA 1970).
In In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982), Katz stated in a declaration that the coauthors of the publication, Chiorazzi and Eshhar, “were students working under the direction and supervision of the inventor, Dr. David H. Katz.” The court held that this declaration, in combination with the fact that the publication was a research paper, was enough to establish Katz as the sole inventor and that the work described in the publication was his own. In research papers, students involved only with assay and testing are normally listed as coauthors but are not considered co-inventors.
In Ex parte Kroger, 219 USPQ 370 (Bd. Pat. App. & Inter. 1982), Kroger, Knaster and others were listed as authors on an article on photovoltaic power generation. The article was used to reject the claims of an application listing Kroger and Rod as inventors. Kroger and Rod submitted affidavits declaring themselves to be the inventors. The affidavits also stated that Knaster merely carried out assignments and worked under the supervision and direction of Kroger. The Board stated that if this were the only
evidence in the case, it would be established, under In re Katz, that Kroger and Rod were the only
inventors. However, in this case, there was evidence that Knaster had refused to sign an affidavit disclaiming inventorship and Knaster had introduced evidence into the case in the form of a letter to the PTO in which he alleged that he was a co-inventor. The Board held that the evidence had not been fully developed enough to overcome the rejection. Note that the rejection had been made under pre-AIA 35 U.S.C. 102(f) but the Board treated the issue the same as if it had arisen under pre-AIA 35 U.S.C. 102(a). See also case law dealing with overcoming pre-AIA 35 U.S.C. 102(e) rejections as presented in MPEP § 2136.05. Many of the issues are the same.
III. A 37 CFR 1.131 AFFIDAVIT CAN BE USED TO OVERCOME A Pre-AIA 35 U.S.C. 102(a) REJECTION
When the reference is not a statutory bar under pre-AIA 35 U.S.C. 102(b), (c), or (d), applicant can overcome the rejection by swearing back of the reference through the submission of an affidavit under 37 CFR 1.131. In re Foster, 343 F.2d 980, 145 USPQ 166 (CCPA 1965). If the reference is disclosing applicant’s own work as derived from him or her, applicant may submit either a 37 CFR 1.131 affidavit to antedate the reference or a 37 CFR 1.132 affidavit to show derivation of the reference subject matter from applicant and invention by applicant. In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969). See MPEP § 715 for more information on when an affidavit under 37 CFR 1.131 can be used to overcome a reference and what evidence is required.
2133 Pre-AIA 35 U.S.C. 102(b) [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]
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Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
*****
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
*****
I. THE 1-YEAR GRACE PERIOD IS EXTENDED TO THE NEXT WORKING DAY IF IT WOULD OTHERWISE END ONA HOLIDAY OR WEEKEND
Publications, patents, public uses and sales must occur “more than one year prior to the date of application for patent in the United States” in order to bar a patent under pre-AIA 35 U.S.C. 102(b). However, applicant’s own activity will not bar a patent if the 1-year grace period expires on a Saturday, Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding business day. Ex parte Olah, 131 USPQ 41 (Bd. App. 1960). Despite changes to 37 CFR 1.6(a)(2) and 37 CFR 1.10 which require the PTO to accord a filing date to an application as of the date of deposit as Priority Express Mail® with the U.S. Postal Service in accordance with 37 CFR 1.10 (e.g., a Saturday filing date), the rule changes do not affect applicant's concurrent right to defer the filing of an application until the next business day when the last day for “taking any action” falls on a Saturday, Sunday, or a federal holiday (e.g., the last day of the 1-year grace period falls on a Saturday).
II. THE 1-YEAR TIME BAR IS MEASURED FROM THE U.S. FILING DATE
If one discloses his or her own work more than 1 year before the filing of the patent application, that person is barred from obtaining a patent. In re Katz, 687 F.2d 450, 454, 215 USPQ 14, 17 (CCPA 1982). The 1-year time bar is measured from the U.S. filing date. Thus, applicant will be barred from obtaining a patent if the public came into possession of the invention on a date before the 1-year grace period ending with the U.S. filing date. It does not matter how the public came into possession of the invention. Public possession could occur by a public use, public sale, a publication, a patent or any combination of
these. In addition, the prior art need not be identical to the claimed invention but will bar patentability if it is an obvious variant thereof. In re Foster, 343 F.2d 980, 145 USPQ 166 (CCPA 1966). See MPEP § 706.02 regarding the effective U.S. filing date of an application.
2133.01 Rejections of Continuation-In-Part (CIP) Applications [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]
When applicant files a continuation-in-part whose claims are not supported by the parent application, the effective filing date is the filing date of the child CIP. Any prior art disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the filing date of the child will bar the issuance of a patent under pre-AIA 35 U.S.C. 102(b). Paperless Accounting v. Bay Area Rapid Transit System, 804 F.2d 659, 665, 231 USPQ 649, 653 (Fed. Cir. 1986).
2133.02 Rejections Based on Publications and Patents [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]
I. APPLICANT’S OWN WORK WHICH WAS AVAILABLE TO THE PUBLIC BEFORE THE
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2133.01
GRACE PERIOD MAY BE USED IN A PRE-AIA 35 U.S.C. 102(b) REJECTION
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.” De Graffenried v. United States, 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990). “Once an inventor has decided to lift the veil of secrecy from his [or her] work, he [or she] must choose between the protection of a federal patent, or the dedication of his [or her] idea to the public at large.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 9 USPQ2d 1847, 1851 (1989).
II. A PRE-AIA 35 U.S.C. 102(b) REJECTION CREATES A STATUTORY BAR TO PATENTABILITY OF THE REJECTED CLAIMS
A rejection under pre-AIA 35 U.S.C. 102(b) cannot be overcome by affidavits and declarations under 37 CFR 1.131 (Rule 131 Declarations), foreign priority dates, or evidence that applicant himself invented the subject matter. Outside the 1-year grace period, applicant is barred from obtaining a patent containing any anticipated or obvious claims. In re Foster, 343 F.2d 980, 984, 145 USPQ 166, 170 (CCPA 1965).
2133.03 Rejections Based on “Public Use” or “On Sale” [R-11.2013]
[Editor Note: This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
Pre-AIA 35 U.S.C. 102(b) “contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these - the ‘public use’ and the ‘on sale’ objections - are sometimes considered
together although it is quite clear that either may apply when the other does not.” Dart Indus. v. E.I. du Pont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an invention absent any sales activity. Likewise, there may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which nevertheless constitutes a statutory bar. Hobbs v. United States, 451 F.2d 849, 859-60, 171 USPQ 713, 720 (5th Cir. 1971).
In similar fashion, not all “public use” and “on sale” activities will necessarily occasion the identical result. Although both activities affect how an inventor may use an invention prior to the filing of a patent application, “non-commercial” pre-AIA 35 U.S.C. 102(b) activity may not be viewed the same as similar “commercial” activity. See MPEP § 2133.03(a) and § 2133.03(e)(1). Likewise, “public use” activity by an applicant may not be considered in the same light as similar “public use” activity by one other than an applicant. See MPEP § 2133.03(a) and § 2133.03(e)(7). Additionally, the concept of “experimental use” may have different significance in “commercial” and “non-commercial” environments. See MPEP § 2133.03(c) and § 2133.03(e) - § 2133.03(e)(6).
It should be noted that pre-AIA 35 U.S.C. 102(b) may create a bar to patentability either alone, if the device in public use or placed on sale anticipates a later claimed invention, or in conjunction with 35 U.S.C. 103, if the claimed invention would have been obvious from the device in conjunction with the prior art. LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992).
I. POLICY CONSIDERATIONS
(A) “One policy underlying the [on-sale] bar is to obtain widespread disclosure of new inventions to the public via patents as soon as possible.” RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989).
(B) Another policy underlying the public use and on-sale bars is to prevent the inventor from commercially exploiting the exclusivity of his [or her] invention substantially beyond the statutorily authorized period. RCA Corp. v. Data Gen. Corp.,
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§ 2133.03PATENTABILITY
887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989). See MPEP § 2133.03(e)(1).
(C) Another underlying policy for the public use and on-sale bars is to discourage “the removal of inventions from the public domain which the public justifiably comes to believe are freely available.” Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990).
2133.03(a) “Public Use” [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note) . See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
I. TEST FOR “PUBLIC USE
The public use bar under pre-AIA 35 U.S.C. 102(b) arises where the invention is in public use before the critical date and is ready for patenting. Invitrogen Corp. v. Biocrest Manufacturing L.P., 424 F.3d 1374, 76 USPQ2d 1741 (Fed. Cir. 2005). As explained by the court,
The proper test for the public use prong of the pre-AIA § 102(b) statutory bar is whether the purported use: (1) was accessible to the public; or (2) was commercially exploited. Commercial exploitation is a clear indication of public use, but it likely requires more than, for example, a secret offer for sale. Thus, the test for the public use prong includes the consideration of evidence relevant to experimentation, as well as, inter alia , the nature of the activity that occurred in public; public access to the use; confidentiality obligations imposed on members of the public who observed the use; and commercial exploitation…. That evidence is relevant to discern whether the use was a public use that could raise a bar to patentability, but it is distinct from evidence relevant to the ready for patenting component of Pfaff ’s two-part
test, another necessary requirement of a public use bar
Id. at 1380, 76 USPQ2d at 1744 (citations omitted). See MPEP § 2133.03(c) for a discussion of the “ready for patenting” prong of the public use and on sale statutory bars.
“[T]o constitute the public use of an invention it is not necessary that more than one of the patent articles should be publicly used. The use of a great number may tend to strengthen the proof, but one well defined case of such use is just as effectual to annul the patent as many.” Likewise, it is not necessary that more than one person use the invention. Egbert v. Lippmann, 104 U.S. 333, 336 (1881).
II. PUBLIC KNOWLEDGE IS NOT NECESSARILY PUBLIC USE UNDER Pre-AIA 35 U.S.C. 102(b)
Mere knowledge of the invention by the public does not warrant rejection under pre-AIA 35 U.S.C. 102(b). Pre-AIA 35 U.S.C. 102(b) bars public use or sale, not public knowledge. TP Labs., Inc. v. Professional Positioners, Inc., 724 F.2d 965, 970, 220 USPQ 577, 581 (Fed. Cir. 1984).
Note, however, that public knowledge may provide grounds for rejection under pre-AIA 35 U.S.C. 102(a). See MPEP § 2132.
A. Commercial Versus Noncommercial Use and the Impact of Secrecy
There are limited circumstances in which a secret or confidential use of an invention may give rise to the public use bar. “[S]ecrecy of use alone is not sufficient to show that existing knowledge has not been withdrawn from public use; commercial exploitation is also forbidden.” Invitrogen, 424 F.3d at 1382, 76 USPQ2d at 1745-46 (The fact that patentee secretly used the claimed invention internally before the critical date to develop future products that were never sold was by itself insufficient to create a public use bar to patentability.).
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1. “Public Use” and “Non-secret Use” Are Not Necessarily Synonymous
“Public” is not necessarily synonymous with “non- secret.” The fact “that non-secret uses of the device were made [by the inventor or someone connected with the inventor] prior to the critical date is not itself dispositive of the issue of whether activity barring a patent under pre-AIA 35 U.S.C. 102(b) occurred. The fact that the device was not hidden from view may make the use not secret, but nonsecret use is not ipso facto ‘public use’ activity. Nor, it must be added, is all secret use ipso facto not ‘public use’ within the meaning of the statute,” if the inventor is making commercial use of the invention under circumstances which preserve its secrecy. TP Labs., Inc. v. Professional Positioners, Inc., 724 F.2d 965, 972, 220 USPQ 577, 583 (Fed. Cir. 1983) (citations omitted).
2. Even If the Invention Is Hidden, Inventor Who Puts Machine or Article Embodying the Invention in Public View Is Barred from Obtaining a Patent as the Invention Is in Public Use
When the inventor or someone connected to the inventor puts the invention on display or sells it, there is a “public use” within the meaning of pre-AIA 35 U.S.C. 102(b) even though by its very nature an invention is completely hidden from view as part of a larger machine or article, if the invention is otherwise used in its natural and intended way and the larger machine or article is accessible to the public. In re Blaisdell, 242 F.2d 779, 783, 113 USPQ 289, 292 (CCPA 1957); Hall v. Macneale, 107 U.S. 90, 96-97 (1882); Ex parte Kuklo, 25 USPQ2d 1387, 1390 (Bd. Pat. App. & Inter. 1992) (Display of equipment including the structural features of the claimed invention to visitors of laboratory is public use even though public did not see inner workings of device. The person to whom the invention is publicly disclosed need not understand the significance and technical complexities of the invention.).
3. There Is No Public Use If Inventor Restricted Use to Locations Where There Was a Reasonable
Expectation of Privacy and the Use Was for His or Her Own Enjoyment
An inventor’s private use of the invention, for his or her own enjoyment is not a public use. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809 (Fed. Cir. 1986) (Inventor showed inventive puzzle to close friends while in his dorm room and later the president of the company at which he was working saw the puzzle on the inventor’s desk and they discussed it. Court held that the inventor retained control and thus these actions did not result in a “public use.”).
4. The Presence or Absence of a Confidentiality Agreement is Not Dispositive of the Public Use Issue
“The presence or absence of a confidentiality agreement is not dispositive of the public use issue, but ‘is one factor to be considered in assessing all the evidence.’” Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1380-81, 72 USPQ2d, 1901, 1909 (Fed. Cir. 2004) (quoting Moleculon Research Corp. v. CBS Inc., 793 F.2d
1261, 1266, 229 USPQ 805, 808 (Fed. Cir. 1986)). The court stressed that it is necessary to analyze the evidence of public use in the context of policies that underlie the public use and on sale bar that include “‘discouraging removal of inventions from the public domain that the public justifiably believes are freely available, prohibiting an extension of the period for exploiting an invention, and favoring prompt and widespread disclosure of inventions.’” Bernhardt, 386 F.3d at 1381, 72 USPQ2d at 1909. See also Invitrogen, 424 F.3d at 1379, 76 USPQ2d at 1744;
MPEP § 2133.03, subsection I. Evidence that the court emphasized included the “‘nature of the activity that occurred in public; the public access to and knowledge of the public use; [and] whether there were any confidentiality obligations imposed on persons who observed the use.’” Bernhardt, 386 F.3d at 1381, 72 USPQ2d at 1909. For example, the court in Bernhardt noted that an exhibition display at issue in the case “was not open to the public, that the identification of attendees was checked against a list of authorized names by building security and later at a reception desk near the showroom, that attendees were escorted through the showroom, and that the attendees were not permitted to make written notes or take photographs inside the showroom.”
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Id. The court remanded the issue of whether the exhibition display was a public use for further proceedings since the district court “focused on the absence of any confidentiality agreements and did not discuss or analyze how the totality of the circumstances surrounding” the exhibition “comports with the policies underlying the public use bar.” Id.
B. Use by Third Parties Deriving the Invention from Applicant
An Invention Is in Public Use If the Inventor Allows Another To Use the Invention Without Restriction or Obligation of Secrecy
“Public use” of a claimed invention under pre-AIA 35 U.S.C. 102(b) occurs when the inventor allows another person to use the invention without limitation, restriction or obligation of secrecy to the inventor.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983). The presence or absence of a confidentiality agreement is not itself determinative of the public use issue, but is one factor to be considered along with the time, place, and circumstances of the use which show the amount of control the inventor retained over the invention. Moleculon Research Corp. v. CBS, Inc., 793 F.2d
1261, 1265, 229 USPQ 805, 809 (Fed. Cir. 1986). See Ex parte C, 27 USPQ2d 1492, 1499 (Bd. Pat. App. & Inter. 1992) (Inventor sold inventive soybean seeds to growers who contracted and were paid to plant the seeds to increase stock for later sale. The commercial nature of the use of the seed coupled with the “on-sale” aspects of the contract and apparent lack of confidentiality requirements rose to the level of a “public use” bar.); Egbert v. Lippmann, 104 U.S. 333, 336 (1881) (Public use found where inventor allowed another to use inventive corset insert, though hidden from view during use, because he did not impose an obligation of secrecy or restrictions on its use.).
C. Use by Independent Third Parties
Use by an Independent Third Party Is Public Use If It Sufficiently “Informs” the Public of the Invention or a Competitor Could Reasonably Ascertain the Invention
Any “nonsecret” use of an invention by someone unconnected to the inventor, such as someone who has independently made the invention, in the
ordinary course of a business for trade or profit may be a “public use,” Bird Provision Co. v. Owens Country Sausage, Inc., 568 F.2d 369, 374-76, 197 USPQ 134, 138-40 (5th Cir. 1978). Additionally, even a “secret” use by another inventor of a machine or process to make a product is “public” if the details of the machine or process are ascertainable by inspection or analysis of the product that is sold or publicly displayed. Gillman v. Stern, 114 F.2d 28, 46 USPQ 430 (2d Cir. 1940); Dunlop Holdings, Ltd. v. Ram Golf Corp., 524 F.2d 33, 36-7, 188 USPQ 481, 483-484 (7th Cir. 1975). If the details of an inventive process are not ascertainable from the product sold or displayed and the third party has kept the invention as a trade secret then that use is not a public use and will not bar a patent issuing to someone unconnected to the user. W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). However, a device qualifies as prior art if it places the claimed features in the public's possession before the critical date even if other unclaimed aspects of the device were not publicly available. Lockwood v. American Airlines, Inc., 41 USPQ2d 1961, 1964-65 (Fed. Cir. 1997) (Computer reservation system was prior art even though “essential algorithms of the SABRE software were proprietary and confidential and...those aspects of the system that were readily apparent to the public would not have been sufficient to enable one skilled in the art to duplicate the [unclaimed aspects of the] system.”). The extent that the public becomes “informed” of an invention involved in public use activity by one other than an applicant depends upon the factual circumstances surrounding the activity and how these comport with the policies underlying the on sale and public use bars. Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990) (quoting King Instrument Corp. v. Otari Corp., 767 F.2d 833, 860, 226 USPQ 402, 406 (Fed. Cir. 1985)). By way of example, in an allegedly “secret” use by a third party other than an applicant, if a large number of employees of such a party, who are not under a promise of secrecy, are permitted unimpeded access to an invention, with affirmative steps by the party to educate other employees as to the nature of the invention, the public is “informed.” Chemithon Corp. v. Proctor & Gamble Co., 287 F. Supp. 291, 308, 159 USPQ 139, 154 (D.Md. 1968), aff’d., 427 F.2d 893, 165 USPQ 678 (4th Cir. 1970).
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Even if public use activity by one other than an applicant is not sufficiently “informing,” there may be adequate grounds upon which to base a rejection under pre-AIA 35 U.S.C. 102(f) and pre-AIA 35 U.S.C. 102(g). See Dunlop Holdings Ltd. v. Ram Golf Corp., 524 F.2d 33, 188 USPQ 481 (7th Cir. 1975). See MPEP § 2137 and § 2138.
2133.03(b) “On Sale” [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note) . See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
An impermissible sale has occurred if there was a definite sale, or offer to sell, more than 1 year before the effective filing date of the U.S. application and the subject matter of the sale, or offer to sell, fully anticipated the claimed invention or would have rendered the claimed invention obvious by its addition to the prior art. Ferag AG v. Quipp, Inc., 45 F.3d 1562, 1565, 33 USPQ2d 1512, 1514 (Fed. Cir. 1995). The on-sale bar of pre-AIA 35 U.S.C. 102(b) is triggered if the invention is both (1) the subject of a commercial offer for sale not primarily for experimental purposes and (2) ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67, 48 USPQ2d 1641, 1646-47 (1998). Traditional contract law principles are applied when determining whether a commercial offer for sale has occurred. See Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1048, 61 USPQ2d 1225, 1229 (Fed. Cir. 2001), petition for cert. filed, 71 USLW 3093 (July 03, 2002) (No. 02-39); Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041,1047, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001) (“As a general proposition, we will look to the Uniform Commercial Code (‘UCC’) to define whether … a communication or series of communications rises to the level of a commercial offer for sale.”).
I. THE MEANING OF “SALE”
A sale is a contract between parties wherein the seller agrees “to give and to pass rights of property” in return for the buyer’s payment or promise “to pay the seller for the things bought or sold.” In re Caveney, 761 F.2d 671, 676, 226 USPQ 1, 4 (Fed. Cir. 1985). A contract for the sale of goods requires a concrete offer and acceptance of that offer. See, e.g., Linear Tech., 275 F.3d at 1052-54, 61 USPQ2d at 1233-34 (Court held there was no sale within the meaning of pre-AIA 35 U.S.C. 102(b) where prospective purchaser submitted an order for goods at issue, but received an order acknowledgement reading “will advise-not booked.” Prospective purchaser would understand that order was not accepted.).
A. Conditional Sale May Bar a Patent
An invention may be deemed to be “on sale” even though the sale was conditional. The fact that the sale is conditioned on buyer satisfaction does not, without more, prove that the sale was for an experimental purpose. Strong v. General Elec. Co., 434 F.2d 1042, 1046, 168 USPQ 8, 12 (5th Cir. 1970).
B. Nonprofit Sale May Bar a Patent
A “sale” need not be for profit to bar a patent. If the sale was for the commercial exploitation of the invention, it is “on sale” within the meaning of pre-AIA 35 U.S.C. 102(b). In re Dybel, 524 F.2d 1393, 1401, 187 USPQ 593, 599 (CCPA 1975) (“Although selling the devices for a profit would have demonstrated the purpose of commercial exploitation, the fact that appellant realized no profit from the sales does not demonstrate the contrary.”).
C. A Single Sale or Offer To Sell May Bar a Patent
Even a single sale or offer to sell the invention may bar patentability under pre-AIA 35 U.S.C. 102(b). Consolidated Fruit-Jar Co. v. Wright, 94 U.S. 92,
94 (1876); Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).
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D. A Sale of Rights Is Not a Sale of the Invention and Will Not in Itself Bar a Patent
“[A]n assignment or sale of the rights in the invention and potential patent rights is not a sale of ‘the invention’ within the meaning of [pre-AIA] section 102(b).” Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1267, 229 USPQ 805, 809 (Fed. Cir. 1986); see also Elan Corp., PLC v. Andrx Pharms. Inc., 366 F.3d 1336, 1341, 70 USPQ2d 1722, 1728 (Fed. Cir. 2004); In re Kollar, 286 F.3d 1326, 1330 n.3, 1330-1331, 62 USPQ2d 1425, 1428 n.3, 1428-1429 (Fed. Cir. 2002) (distinguishing licenses which trigger the on-sale bar (e.g., a standard computer software license wherein the product is just as immediately transferred to the licensee as if it were sold), from licenses that merely grant rights to an invention which do not per se trigger the on-sale bar (e.g., exclusive rights to market the invention or potential patent rights)); Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d
1041, 1049 n. 2, 59 USPQ2d 1121, 1129 n. 2 (Fed. Cir. 2001).
E. Buyer Must Be Uncontrolled by the Seller or Offerer
A sale or offer for sale must take place between separate entities. In re Caveney, 761 F.2d 671, 676, 226 USPQ 1, 4 (Fed. Cir. 1985). “Where the parties to the alleged sale are related, whether there is a statutory bar depends on whether the seller so controls the purchaser that the invention remains out of the public’s hands. Ferag AG v. Quipp, Inc., 45 F.3d 1562, 1566, 33 USPQ2d 1512, 1515 (Fed. Cir. 1995) (Where the seller is a parent company of the buyer company, but the President of the buyer company had “essentially unfettered” management authority over the operations of the buyer company, the sale was a statutory bar.).
II. OFFERS FOR SALE
“Only an offer which rises to the level of a commercial offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale under §102(b).” Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041,1048, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001).
A. Rejected or Unreceived Offer for Sale Is Enough To Bar a Patent
Since the statute creates a bar when an invention is placed “on sale,” a mere offer to sell is sufficient commercial activity to bar a patent. In re Theis, 610 F.2d 786, 791, 204 USPQ 188, 192 (CCPA 1979). Even a rejected offer may create an on sale bar. UMC Elecs. v. United States, 816 F.2d 647, 653, 2
USPQ2d 1465, 1469 (Fed. Cir. 1987). In fact, the offer need not even be actually received by a prospective purchaser. Wende v. Horine, 225 F. 501 (7th Cir. 1915).
B. Delivery of the Offered Item Is Not Required
“It is not necessary that a sale be consummated for the bar to operate.” Buildex v. Kason Indus., Inc., 849 F.2d 1461, 1463-64, 7 USPQ2d 1325, 1327-28 (Fed. Cir. 1988) (citations omitted). See also Weatherchem Corp. v. J.L. Clark Inc., 163 F.3d
1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed. Cir. 1998) (A signed purchase agreement prior to the critical date constituted a commercial offer; it was immaterial that there was no delivery of later patented caps and no exchange of money until after critical date.).
C. Seller Need Not Have the Goods “On Hand” When the Offer for Sale Is Made
Goods need not be “on hand” and transferred at the time of the sale or offer. The date of the offer for sale is the effective date of the “on sale” activity. J. A. La Porte, Inc. v. Norfolk Dredging Co., 787 F.2d 1577, 1582, 229 USPQ 435, 438 (Fed. Cir. 1986). However, the invention must be complete and “ready for patenting” (see MPEP § 2133.03(c)) before the critical date. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67, 48 USPQ2d 1641, 1647 (1998). See also Micro Chemical, Inc. v. Great Plains Chemical Co., 103 F.3d 1538, 1545, 41 USPQ2d 1238, 1243 (Fed. Cir. 1997) (The on-sale bar was not triggered by an offer to sell because the inventor “was not close to completion of the invention at the time of the alleged offer and had not demonstrated a high likelihood that the invention would work for its intended purpose upon completion.”); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985) (Where there was no
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evidence that the samples shown to the potential customers were made by the new process and apparatus, the offer to sell did not rise to the level of an on sale bar.). Compare Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 221 USPQ 561 (Fed. Cir. 1984) (Where a “make shift” model of the inventive product was shown to the potential purchasers in conjunction with the offer to sell, the offer was enough to bar a patent under pre-AIA 35 U.S.C. 102(b).).
D. Material Terms of an Offer for Sale Must be Present
“[A] communication that fails to constitute a definite offer to sell the product and to include material terms is not an ‘offer’ in the contract sense.” Elan Corp., PLC v. Andrx Pharms. Inc., 366 F.3d 1336, 1341, 70 USPQ2d 1722, 1728 (Fed. Cir. 2004). The court stated that an “offer to enter into a license under a patent for future sale of the invention covered by the patent when and if it has been developed... is not an offer to sell the patented invention that constitutes an on-sale bar.” Id., 70 USPQ2d at 1726. Accordingly, the court concluded that Elan’s letter was not an offer to sell a product. In addition, the court stated that the letter lacked material terms of a commercial offer such as pricing for the product, quantities, time and place of delivery, and product specifications and that the dollar amount in the letter was not a price term for the sale of the product but rather the amount requested was to form and continue a partnership, explicitly referred to as a “licensing fee.” Id.
III. SALE BY INVENTOR,ASSIGNEE OR OTHERS ASSOCIATED WITH THE INVENTOR IN THE COURSE OF BUSINESS
A. Sale Activity Need Not Be Public
Unlike questions of public use, there is no requirement that “on sale” activity be “public.” “Public” as used in pre-AIA 35 U.S.C. 102(b) modifies “use” only. “Public” does not modify “sale.” Hobbs v. United States, 451 F.2d 849, 171 USPQ 713, 720 (5th Cir. 1971).
B. Inventor’s Consent to the Sale Is Not a Prerequisite To Finding an On Sale Bar
If the invention was placed on sale by a third party who obtained the invention from the inventor, a patent is barred even if the inventor did not consent to the sale or have knowledge that the invention was embodied in the sold article. Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 41 USPQ 155 (1938); In re Blaisdell, 242 F.2d 779, 783, 113 USPQ 289, 292 (CCPA 1957); CTS Corp. v. Electro Materials Corp. of America, 469 F. Supp. 801, 819, 202 USPQ 22, 38 (S.D.N.Y. 1979).
C. Objective Evidence of Sale or Offer To Sell Is Needed
In determining if a sale or offer to sell the claimed invention has occurred, a key question to ask is whether the inventor sold or offered for sale a product that embodies the invention claimed in the application. Objective evidence such as a description of the inventive product in the contract of sale or in another communication with the purchaser controls over an uncommunicated intent by the seller to deliver the inventive product under the contract for sale. Ferag AG v. Quipp, Inc., 45 F.3d 1562, 1567, 33 USPQ2d 1512, 1516 (Fed. Cir. 1995) (On sale bar found where initial negotiations and agreement containing contract for sale neither clearly specified nor precluded use of the inventive design, but an order confirmation prior to the critical date did specify use of inventive design.). The purchaser need not have actual knowledge of the invention for it to be on sale. The determination of whether “the offered product is in fact the claimed invention may be established by any relevant evidence, such as memoranda, drawings, correspondence, and testimony of witnesses.” RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1060, 12 USPQ2d 1449, 1452 (Fed. Cir. 1989). However, “what the purchaser reasonably believes the inventor to be offering is relevant to whether, on balance, the offer objectively may be said to be of the patented invention.” Envirotech Corp. v. Westech Eng’g, Inc., 904 F.2d
1571, 1576, 15 USPQ2d 1230, 1234 (Fed. Cir. 1990) (Where a proposal to supply a general contractor with a product did not mention a new design but, rather, referenced a prior art design, the uncommunicated intent of the supplier to supply the
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new design if awarded the contract did not constitute an “on sale” bar to a patent on the new design, even though the supplier’s bid reflected the lower cost of the new design.).
IV. SALES BY INDEPENDENT THIRD PARTIES
A. Sales or Offers for Sale by Independent Third Parties Will Bar a Patent
Sale or offer for sale of the invention by an independent third party more than 1 year before the filing date of applicant’s patent will bar applicant from obtaining a patent. “An exception to this rule exists where a patented method is kept secret and remains secret after a sale of the unpatented product of the method. Such a sale prior to the critical date is a bar if engaged in by the patentee or patent applicant, but not if engaged in by another.” In re Caveney, 761 F.2d 671, 675-76, 226 USPQ 1, 3-4 (Fed. Cir. 1985).
B. Nonprior Art Publications Can Be Used as Evidence of Sale Before the Critical Date
Abstracts identifying a product’s vendor containing information useful to potential buyers such as whom to contact, price terms, documentation, warranties, training and maintenance along with the date of product release or installation before the inventor’s critical date may provide sufficient evidence of prior sale by a third party to support a rejection based on pre-AIA 35 U.S.C. 102(b) or 103. In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Examiner's rejection was based on nonprior art published abstracts which disclosed software products meeting the claims. The abstracts specified software release dates and dates of first installation which were more than 1 year before applicant’s filing date.).
2133.03(c) The “Invention” [R-11.2013]
[Editor Note: This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for
examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
*****
(b) the invention was…in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States
*****
(Emphasis added).
I. THE INVENTION MUST BE “READY FOR PATENTING”
In Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 66-68, 48 USPQ2d 1641, 1647 (1998), the Supreme Court enunciated a two-prong test for determining whether an invention was “on sale” within the meaning of pre-AIA 35 U.S.C. 102(b) even if it has not yet been reduced to practice. “[T]he on-sale bar applies when two conditions are satisfied before the critical date [more than one year before the effective filing date of the U.S. application]. First, the product must be the subject of a commercial offer for sale…. Second, the invention must be ready for patenting.” Id. at 67, 119 S.Ct. at 311-12, 48 USPQ2d at 1646-47.
The Federal Circuit explained that the Supreme Court’s “ready for patenting” prong applies in the context of both the on sale and public use bars. Invitrogen Corp. v. Biocrest Manufacturing L.P.,
424 F.3d 1374, 1379, 76 USPQ2d 1741, 1744 (Fed. Cir. 2005) (“A bar under [pre-AIA] section 102(b) arises where, before the critical date, the invention is in public use and ready for patenting.”). “Ready for patenting,” the second prong of the Pfaff test, “may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.” Id. at 67, 199 S.Ct. at 311-12, 48 USPQ2d at 1647
(The patent was held invalid because the invention for a computer chip socket was “ready for patenting”
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when it was offered for sale more than one year prior to the application filing date. Even though the invention had not yet been reduced to practice, the manufacturer was able to produce the claimed computer chip sockets using the inventor’s detailed drawings and specifications, and those sockets contained all elements of invention claimed in the patent.). See also Weatherchem Corp. v. J.L. Clark Inc., 163 F.3d 1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed. Cir. 1998) (The invention was held “ready for patenting” since the detailed drawings of plastic dispensing caps offered for sale “contained each limitation of the claims and were sufficiently specific to enable person skilled in art to practice the invention”.).
If the invention was actually reduced to practice before being sold or offered for sale more than 1 year before filing of the application, a patent will be barred. Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1366-67, 53 USPQ2d 1377, 1379 (Fed. Cir. 2000) (“Here the pre-critical date sales were of completed cartridges made to specifications that remained unchanged to the present day, showing that any invention embodied in the accused cartridges was reduced to practice before the critical date. The Pfaff ready for patenting condition is also satisfied because the specification drawings, available prior to the critical date, were actually used to produce the accused cartridges.”); In re Hamilton, 882 F.2d 1576, 1580, 11 USPQ2d 1890, 1893 (Fed. Cir. 1989). “If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the produc t possesses the c la imed characteristics.” Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999) (Claim for a particular anhydrous crystalline form of a pharmaceutical compound was held invalid under the on-sale bar of pre-AIA 35 U.S.C. 102(b), even though the parties to the U.S. sales of the foreign manufactured compound did not know the identity of the particular crystalline form.); STX LLC. v. Brine Inc., 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (Claim for a lacrosse stick was held invalid under the on-sale bar despite the argument that it was not known at the time of sale whether the sticks possessed the recited “improved
playing and handling characteristics.” “Subjective qualities inherent in a product, such as ‘improved playing and handling’, cannot serve as an escape hatch to circumvent an on-sale bar.”). Actual reduction to practice in the context of an on-sale bar issue usually requires testing under actual working conditions in such a way as to demonstrate the practical utility of an invention for its intended purpose beyond the probability of failure, unless by virtue of the very simplicity of an invention its practical operativeness is clear. Field v. Knowles, 183 F.2d 593, 601, 86 USPQ 373, 379 (CCPA 1950); Steinberg v. Seitz, 517 F.2d 1359, 1363, 186 USPQ 209, 212 (CCPA 1975).
The invention need not be ready for satisfactory commercial marketing for sale to bar a patent. Atlantic Thermoplastics Co. v. Faytex Corp., 970
F.2d 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).
II. INVENTOR HAS SUBMITTED A 37 CFR 1.131 AFFIDAVIT OR DECLARATION
Affidavits or declarations submitted under 37 CFR 1.131 to swear behind a reference may constitute, among other things, an admission that an invention was “complete” more than 1 year before the filing of an application. See In re Foster, 343 F.2d 980, 987-88, 145 USPQ 166, 173 (CCPA 1965); Dart Indus. v. E.I. duPont de Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). Also see MPEP § 715.10.
III. SALE OF A PROCESS
A claimed process, which is a series of acts or steps, is not sold in the same sense as is a claimed product, device, or apparatus, which is a tangible item. “‘Know-how’ describing what the process consists of and how the process should be carried out may be sold in the sense that the buyer acquires knowledge of the process and obtains the freedom to carry it out pursuant to the terms of the transaction. However, such a transaction is not a ‘sale’ of the invention within the meaning of [pre-AIA] §102(b) because the process has not been carried out or performed as a result of the transaction.” In re Kollar, 286 F.3d 1326, 1332, 62 USPQ2d 1425, 1429 (Fed. Cir. 2002). However,
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sale of a product made by the claimed process by the patentee or a licensee would constitute a sale of the process within the meaning of pre-AIA 35 U.S.C. 102(b). See id. at 1333, 62 USPQ2d at 1429; D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1147-48, 219 USPQ 13, 15-16 (Fed. Cir. 1983) (Even though the sale of a product made by a claimed method before the critical date did not reveal anything about the method to the public, the sale resulted in a “forfeiture” of any right to a patent to that method); W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). The application of pre-AIA 35 U.S.C. 102(b) would also be triggered by actually performing the claimed process itself for consideration. See Scaltech, Inc. v. Retec/Tetra, L.L.C., 269 F.3d 1321, 1328, 60 USPQ2d 1687, 1691(Fed. Cir. 2001) (Patent was held invalid under pre-AIA 35 U.S.C. 102(b) based on patentee’s offer to perform the claimed process for treating oil refinery waste more than one year before filing the patent application). Moreover, the sale of a device embodying a claimed process may trigger the on-sale bar. Minton v. National Ass’n. of Securities Dealers, Inc., 336 F.3d 1373, 1378, 67 USPQ2d 1614, 1618 (Fed. Cir. 2003) (finding a fully operational computer program implementing and thus embodying the claimed method to trigger the on-sale bar). However, the sale of a prior art device different from that disclosed in a patent that is asserted after the critical date to be capable of performing the claimed method is not an on-sale bar of the process. Poly-America LP v. GSE Lining Tech. Inc., 383
F.3d 1303, 1308-09, 72 USPQ2d 1685, 1688-89 (Fed. Cir. 2004) (stating that the transaction involving the sale of the prior art device did not involve a transaction of the claimed method but instead only a device different from that described in the patent for carrying out the claimed method, where the device was not used to practice the claimed method until well after the critical date, and where there was evidence that it was not even known whether the device could perform the claimed process).
2133.03(d) “In This Country” [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set
forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
For purposes of judging the applicability of the pre-AIA 35 U.S.C. 102(b) bars, public use or on sale activity must take place in the United States. The “on sale” bar does not generally apply where both manufacture and delivery occur in a foreign country. Gandy v. Main Belting Co., 143 U.S. 587, 593
(1892). However, “on sale” status can be found if substantial activity prefatory to a “sale” occurs in the United States. Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426, 433, 178 USPQ 577, 583 (9th Cir. 1973). An offer for sale, made or originating in this country, may be sufficient prefatory activity to bring the offer within the terms of the statute, even though sale and delivery take place in a foreign country. The same rationale applies to an offer by a foreign manufacturer which is communicated to a prospective purchaser in the United States prior to the critical date. CTS Corp. v. Piher Int’l Corp., 593 F.2d 777, 201 USPQ 649 (7th Cir. 1979).
2133.03(e) Permitted Activity; Experimental Use [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
The question posed by the experimental use doctrine is “whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1354, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002) (quoting EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1356-57,
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61 USPQ2d 1289, 1295-96 (Fed. Cir. 2002)) (Linn, J., concurring). Experimentation must be the primary purpose and any commercial exploitation must be incidental.
If the use or sale was experimental, there is no bar under pre-AIA 35 U.S.C. 102(b). “A use or sale is experimental for purposes of pre-AIA section 102(b) if it represents a bona fide effort to perfect the invention or to ascertain whether it will answer its intended purpose.… If any commercial exploitation does occur, it must be merely incidental to the primary purpose of the experimentation to perfect the invention.” LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)). “The experimental use exception…does not include market testing where the inventor is attempting to gauge consumer demand for his claimed invention. The purpose of such activities is commercial exploitation and not experimentation.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).
2133.03(e)(1) Commercial Exploitation [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
One policy of the on sale and public use bars is the prevention of inventors from exploiting their inventions commercially more than 1 year prior to the filing of a patent application. Therefore, if applicant’s precritical date activity is a sale or offer for sale that is an attempt at market penetration, a patent is barred. Thus, even if there is bona fide experimental activity, an inventor may not commercially exploit an invention more than 1 year prior to the filing date of an application. In re Theis,
610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
I. THE COMMERCIAL ACTIVITY MUST LEGITIMATELY ADVANCE DEVELOPMENT OF THE INVENTION TOWARDS COMPLETION
As the degree of commercial exploitation surrounding pre-AIA 35 U.S.C. 102(b) activity increases, the burden on an applicant to establish clear and convincing evidence of experimental activity with respect to a public use becomes more difficult. Where the examiner has found a prima facie case of a sale or an offer to sell, this burden will rarely be met unless clear and convincing necessity for the experimentation is established by the applicant. This does not mean, of course, that there are no circumstances which would permit alleged experimental activity in an atmosphere of commercial exploitation. In certain circumstances, even a sale may be necessary to legitimately advance the experimental development of an invention if the primary purpose of the sale is experimental. In re Theis, 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979); Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426, 433, 178 USPQ 577, 582 (9th Cir. 1973). However, careful scrutiny by the examiner of the objective factual circumstances surrounding such a sale is essential. See Ushakoff v. United States, 327 F.2d 669, 140 USPQ 341 (Ct.Cl. 1964); Cloud v. Standard Packaging Corp., 376 F.2d 384,
153 USPQ 317 (7th Cir. 1967).
II. SIGNIFICANT FACTORS INDICATIVE OF “COMMERCIAL EXPLOITATION”
As discussed in MPEP § 2133.03, a policy consideration in questions of pre-AIA 35 U.S.C. 102(b) activity is premature “commercial exploitation” of a “completed” or “ready for patenting” invention (see MPEP § 2133.03(c)). The extent of commercial activity which constitutes pre-AIA 35 U.S.C. 102(b) “on sale” status depends upon the circumstances of the activity, the basic indicator being the subjective intent of the inventor as manifested through objective evidence. The following activities should be used by the examiner as indicia of this subjective intent:
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(A) Preparation of various contemporaneous “commercial” documents, e.g., orders, invoices, receipts, delivery schedules, etc.;
(B) Preparation of price lists (Akron Brass Co. v. Elkhart Brass Mfg. Co., 353 F.2d 704, 709, 147 USPQ 301, 305 (7th Cir. 1965) and distribution of price quotations (Amphenol Corp. v. General. Time Corp., 158 USPQ 113, 117 (7th Cir. 1968));
(C) Display of samples to prospective customers (Cataphote Corp. v. DeSoto Chemical Coatings, Inc., 356 F.2d 24, 27, 148 USPQ 527, 529 (9th Cir. 1966) mod. on other grounds, 358 F.2d 732, 149 USPQ 159 (9th Cir.), cert. denied, 385 U.S. 832 (1966); Chicopee Mfg. Corp. v. Columbus Fiber Mills Co., 165 F.Supp. 307, 323-325, 118 USPQ 53, 65-67 (M.D.Ga. 1958));
(D) Demonstration of models or prototypes (General Elec. Co. v. United States, 206 USPQ 260, 266-67 (Ct. Cl. 1979); Red Cross Mfg. v. Toro Sales Co., 525 F.2d 1135, 1140, 188 USPQ 241, 244-45 (7th Cir. 1975); Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 815-16, 131 USPQ 413, 429-30 (D.Del. 1961)), especially at trade conventions (InterRoyal Corp. v. Simmons Co., 204 USPQ 562, 563-65 (S.D. N.Y. 1979)), and even though no orders are actually obtained (Monogram Mfg. v. F. & H. Mfg., 144 F.2d 412, 62 USPQ 409, 412 (9th Cir. 1944));
(E) Use of an invention where an admission fee is charged (In re Josserand, 188 F.2d 486, 491, 89 USPQ 371, 376 (CCPA 1951); Greenewalt v. Stanley, 54 F.2d 195, 12 USPQ 122 (3d Cir. 1931)); and
(F) Advertising in publicity releases, brochures, and various periodicals (In re Theis, 610 F.2d 786, 792 n.6, 204 USPQ 188, 193 n. 6 (CCPA 1979); InterRoyal Corp. v. Simmons Co., 204 USPQ 562, 564-66 (S.D.N.Y.1979); Akron Brass, Inc. v. Elkhart Brass Mfg., Inc., 353 F.2d 704, 709, 147 USPQ 301, 305 (7th Cir.1965); Tucker Aluminum Prods. v. Grossman, 312 F.2d 393, 394, 136 USPQ 244, 245 (9th Cir. 1963)).
See MPEP § 2133.03(e)(4) for factors indicative of an experimental purpose.
2133.03(e)(2) Intent [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention. Under such circumstances, the customer at a minimum must be made aware of the experimentation.” LaBounty Mfg., Inc. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1072, 22 USPQ2d 1025, 1029 (Fed. Cir. 1992) (quoting Harrington Mfg. Co. v. Powell Mfg. Co., 815 F.2d 1478, 1480 n.3, 2 USPQ2d 1364, 1366 n.3 (Fed. Cir. 1986); Paragon Podiatry Laboratory, Inc. v. KLM Labs., Inc., 984 F.2d 1182, 25 USPQ2d 1561 (Fed. Cir. 1993) (Paragon sold the inventive units to the trade as completed devices without any disclosure to either doctors or patients of their involvement in alleged testing. Evidence of the inventor’s secretly held belief that the units were not durable and may not be satisfactory for consumers was not sufficient, alone, to avoid a statutory bar.).
2133.03(e)(3) “Completeness” of the Invention [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c)
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through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
I. EXPERIMENTAL USE ENDS WHEN THE INVENTION IS ACTUALLY REDUCED TO PRACTICE
Experimental use “means perfecting or completing an invention to the point of determining that it will work for its intended purpose.” Therefore, experimental use “ends with an actual reduction to practice.” RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1061, 12 USPQ2d 1449, 1453 (Fed. Cir. 1989). If the examiner concludes from the evidence of record that an applicant was satisfied that an invention was in fact “complete,” awaiting approval by the applicant from an organization such as Underwriters’ Laboratories will not normally overcome this conclusion. InterRoyal Corp. v. Simmons Co., 204 USPQ 562, 566 (S.D.N.Y. 1979); Skil Corp. v. Rockwell Manufacturing Co., 358 F.
Supp. 1257, 1261, 178 USPQ 562, 565 (N.D.Ill. 1973), aff’d. in part, rev’d in part sub nom. Skil Corp. v. Lucerne Products Inc., 503 F.2d 745, 183 USPQ 396, 399 (7th Cir. 1974), cert. denied, 420 U.S. 974, 185 USPQ 65 (1975). See MPEP § 2133.03(c) for more information of what constitutes a “complete” invention.
The fact that alleged experimental activity does not lead to specific modifications or refinements of an invention is evidence, although not conclusive evidence, that such activity is not within the realm permitted by the statute. This is especially the case where the evidence of record clearly demonstrates to the examiner that an invention was considered “complete” by an inventor at the time of the activity. Nevertheless, any modifications or refinements which did result from such experimental activity must at least be a feature of the claimed invention to be of any probative value. In re Theis, 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
II. DISPOSAL OF PROTOTYPES
Where a prototype of an invention has been disposed of by an inventor before the critical date, inquiry by the examiner should focus upon the intent of the inventor and the reasonableness of the disposal under all circumstances. The fact that an otherwise
reasonable disposal of a prototype involves incidental income is not necessarily fatal. In re Dybel, 524 F.2d 1393, 1399, n.5, 187 USPQ 593, 597 n.5 (CCPA 1975). However, if a prototype is considered “complete” by an inventor and all experimentation on the underlying invention has ceased, unrestricted disposal of the prototype constitutes a bar under pre-AIA 35 U.S.C. 102(b). In re Blaisdell, 242 F.2d 779, 113 USPQ 289
(CCPA 1957); contra, Watson v. Allen, 254 F.2d 342, 117 USPQ 68 (D.C. Cir. 1958).
2133.03(e)(4) Factors Indicative of an Experimental Purpose [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
The courts have considered a number of factors in determining whether a claimed invention was the subject of a commercial offer for sale primarily for purposes of experimentation. “These factors include: (1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, ... (9) the degree of commercial exploitation during testing[,] ... (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1353, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002) (quoting EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1357, 61 USPQ2d 1289, 1296 (Fed. Cir. 2002)) (Linn, J., concurring). Another critical attribute of experimentation is the “customer’s awareness of the purported testing in
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the context of a sale.” Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1241, 75 USPQ2d 1650, 1658 (Fed. Cir. 2005).
Once alleged experimental activity is advanced by an applicant to explain a prima facie case under pre-AIA 35 U.S.C. 102(b), the examiner must determine whether the scope and length of the activity were reasonable in terms of the experimental purpose intended by the applicant and the nature of the subject matter involved. No one of, or particular combination of, factors is necessarily determinative of this purpose.
See MPEP § 2133.03(e)(1) for factors indicative of commercial exploitation.
2133.03(e)(5) Experimentation and Degree of Supervision and Control [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
THE INVENTOR MUST MAINTAIN SUFFICIENT CONTROL OVER THE INVENTION DURING TESTING BY THIRD PARTIES
The significant determinative factors in questions of experimental purpose are the extent of supervision and control maintained by an inventor over an invention during an alleged period of experimentation , and the customer’s awareness of the experimentation. Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1214,75 USPQ2d 1650, 1658 (Fed. Cir. 2005)(“control and customer awareness ordinarily must be proven if experimentation is to be found”). Once a period of experimental activity has ended and supervision and control has been relinquished by an inventor without any restraints on subsequent use of an invention, an
unrestricted subsequent use of the invention is a pre-AIA 35 U.S.C. 102(b) bar. In re Blaisdell, 242 F.2d 779, 784, 113 USPQ 289, 293 (CCPA 1957).
2133.03(e)(6) Permitted Experimental Activity and Testing [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
I. DEVELOPMENTAL TESTING IS PERMITTED
Testing of an invention in the normal context of its technological development is generally within the realm of permitted experimental activity. Likewise, experimentation to determine utility, as that term is applied in 35 U.S.C. 101, may also constitute permissible activity. See General Motors Corp. v. Bendix Aviation Corp., 123 F. Supp. 506, 521, 102 USPQ 58, 69 (N.D.Ind. 1954). For example, where an invention relates to a chemical composition with no known utility, i.e., a patent application for the composition could not be filed (35 U.S.C. 101; 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph), continued testing to find utility would likely be permissible under pre-AIA 35 U.S.C. 102(b), absent a sale of the composition or other evidence of commercial exploitation.
II. MARKET TESTING IS NOT PERMITTED
Experimentation to determine product acceptance, i.e., market testing, is typical of a trader’s and not an inventor’s experiment and is thus not within the area of permitted experimental activity. Smith & Davis Mfg. Co. v. Mellon, 58 F. 705, 707 (8th Cir. 1893) Likewise, testing of an invention for the benefit of appeasing a customer, or to conduct “minor ‘tune up’ procedures not requiring an inventor’s skills, but rather the skills of a competent technician,” are also not within the exception. In re
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Theis, 610 F.2d 786, 793, 204 USPQ 188, 193-94 (CCPA 1979).
III. EXPERIMENTAL ACTIVITY IN THE CONTEXT OF DESIGN APPLICATIONS
The public use of an ornamental design which is directed toward generating consumer interest in the aesthetics of the design is not an experimental use. In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed.
Cir. 1988) (display of a wrought iron table at a trade show held to be public use). However, “experimentation directed to functional features of a product also containing an ornamental design may negate what otherwise would be considered a public use within the meaning of section 102(b).” Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1196, 31 USPQ2d 1321, 1326 (Fed. Cir. 1994) (A study wherein students evaluated the effect of the functional features of a spice container design may be considered an experimental use.).
2133.03(e)(7) Activity of an Independent Third Party Inventor [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note) . See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
EXPERIMENTAL USE EXCEPTION IS PERSONAL TO AN APPLICANT
The statutory bars of pre-AIA 35 U.S.C. 102(b) are applicable even though public use or on sale activity is by a party other than an applicant. Where an applicant presents evidence of experimental activity by such other party, the evidence will not overcome the prima facie case under pre-AIA 35 U.S.C. 102(b) based upon the activity of such party unless the activity was under the supervision and control of the applicant. Magnetics v. Arnold Eng’g Co., 438 F.2d 72, 74, 168 USPQ 392, 394 (7th Cir. 1971), Bourne v. Jones, 114 F.Supp. 413, 419, 98 USPQ
206, 210 (S.D. Fla. 1951), aff'd., 207 F.2d 173, 98 USPQ 205 (5th Cir. 1953), cert. denied, 346 U.S. 897, 99 USPQ 490 (1953); contra, Watson v. Allen, 254 F.2d 342, 117 USPQ 68 (D.C.Cir. 1957). In other words, the experimental use activity exception is personal to an applicant.
2134 Pre-AIA 35 U.S.C. 102(c) [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
*****
(c) he has abandoned the invention.
*****
I. UNDER 35 U.S.C. 102(c), AN ABANDONMENT MUST BE INTENTIONAL
“Actual abandonment under pre-AIA 35 U.S.C. 102(c) requires that the inventor intend to abandon the invention, and intent can be implied from the inventor’s conduct with respect to the invention. In re Gibbs, 437 F.2d 486, 168 USPQ 578 (CCPA 1971). Such intent to abandon the invention will not be imputed, and every reasonable doubt should be resolved in favor of the inventor.” Ex parte Dunne, 20 USPQ2d 1479 (Bd. Pat. App. & Inter. 1991).
II. DELAY IN MAKING FIRST APPLICATION
Abandonment under pre-AIA 35 U.S.C. 102(c) requires a deliberate, though not necessarily express, surrender of any rights to a patent. To abandon the invention the inventor must intend a dedication to the public. Such dedication may be either express or implied, by actions or inactions of the inventor. Delay alone is not sufficient to infer the requisite intent to abandon. Moore v. United States, 194 USPQ 423, 428 (Ct. Cl. 1977) (The drafting and
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retention in his own files of two patent applications by inventor indicates an intent to retain his invention; delay in filing the applications was not sufficient to establish abandonment); but see Davis Harvester Co., Inc. v. Long Mfg. Co., 252 F. Supp. 989, 1009-10, 149 USPQ 420, 435-436 (E.D. N.C. 1966) (Where the inventor does nothing over a period of time to develop or patent his invention, ridicules the attempts of another to develop that invention and begins to show active interest in promoting and developing his invention only after successful marketing by another of a device embodying that invention, the inventor has abandoned his invention under pre-AIA 35 U.S.C. 102(c).).
III. DELAY IN REAPPLYING FOR PATENT AFTERABANDONMENT OF PREVIOUS PATENT APPLICATION
Where there is no evidence of expressed intent or conduct by inventor to abandon his invention, delay in reapplying for patent after abandonment of a previous application does not constitute abandonment under pre-AIA 35 U.S.C. 102(c). Petersen v. Fee Int’l, Ltd., 381 F. Supp. 1071, 182
USPQ 264 (W.D. Okla. 1974).
IV. DISCLOSURE WITHOUT CLAIMING IN A PRIOR ISSUED PATENT
Any inference of abandonment (i.e., intent to dedicate to the public) of subject matter disclosed but not claimed in a previously issued patent is rebuttable by an application filed at any time before a statutory bar arises. Accordingly, a rejection of a claim of a patent application under pre-AIA 35 U.S.C. 102(c) predicated solely on the issuance of a patent which discloses the subject matter of the claim in the application without claiming it would be improper, regardless of whether there is copendency between the application at issue and the application which issued as the patent. In re Gibbs, 437 F.2d 486, 168 USPQ 578 (CCPA 1971).
V. ONLY WHEN THERE IS A PRIORITY CONTEST CAN A LAPSE OF TIME BAR A PATENT
The mere lapse of time will not bar a patent. The only exception is when there is a priority contest
under pre-AIA 35 U.S.C. 102(g) and applicant abandons, suppresses or conceals the invention. Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 1101, 227 USPQ 337, 350 (Fed. Cir. 1985). Abandonment, suppression and concealment are treated by the courts under pre-AIA 35 U.S.C. 102(g). See MPEP § 2138.03 for more information on this issue.
2135 Pre-AIA 35 U.S.C. 102(d) [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
*****
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.
*****
GENERAL REQUIREMENTS OF 35 U.S.C. 102(d)
Pre-AIA 35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a bar against the granting of a patent in this country:
(A) The foreign application must be filed more than 12 months before the effective U.S. filing date (See MPEP § 706.02 regarding effective U.S. filing date of an application);
(B) The foreign application must have been filed by the same applicant as in the United States or by his or her legal representatives or assigns.
(C) The foreign patent or inventor’s certificate must be actually granted (e.g., by sealing of the papers in Great Britain) before the U.S. filing date. It need not be published.
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(D) The same invention must be involved.
If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory bar. See MPEP § 2135.01 for further clarification of each of the four requirements of pre-AIA 35 U.S.C. 102(d).
2135.01 The Four Requirements of Pre-AIA 35 U.S.C. 102(d) [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
I. FOREIGN APPLICATION MUST BE FILED MORE THAN 12 MONTHS BEFORE THE EFFECTIVE U.S. FILING DATE
A. An Anniversary Date Ending on a Weekend or Holiday Results in an Extension to the Next Business Day
The U.S. application is filed in time to prevent a pre-AIA 35 U.S.C. 102(d) bar from arising if it is filed on the 1 year anniversary date of the filing date of the foreign application. If this day is a Saturday, Sunday or federal holiday, the year would be extended to the following business day. See Ex parte Olah, 131 USPQ 41 (Bd. App. 1960). Despite changes to 37 CFR 1.6(a)(2) and 37 CFR 1.10, which require the PTO to accord a filing date to an application as of the date of deposit as Priority Express Mail® with the U.S. Postal Service in accordance with 37 CFR 1.10 (e.g., a Saturday filing date), the rule changes do not affect applicant’s concurrent right to defer the filing of an application until the next business day when the last day for “taking any action” falls on a Saturday, Sunday, or a federal holiday (e.g., the last day of the 1-year grace period falls on a Saturday).
B. A Continuation-in-Part Breaks the Chain of Priority as to Foreign as Well as U.S. Parents
In the case where applicant files a foreign application, later files a U.S. application claiming priority based on the foreign application, and then files a continuation-in-part (CIP) application whose claims are not entitled to the filing date of the U.S. parent, the effective filing date is the filing date of the CIP and applicant cannot obtain the benefit of either the U.S. parent or foreign application filing dates. In re Van Langenhoven, 458 F.2d 132, 137, 173 USPQ 426, 429 (CCPA 1972). If the foreign application issues into a patent before the filing date of the CIP, it may be used in a pre-AIA 35 U.S.C. 102(d)/103 rejection if the subject matter added to the CIP does not render the claims nonobvious over the foreign patent. Ex parte Appeal No. 242-47, 196 USPQ 828 (Bd. App. 1976) (Foreign patent can be combined with other prior art to bar a U.S. patent in an obviousness rejection based on pre-AIA 35 U.S.C. 102(d)/103).
II. FOREIGN APPLICATION MUST HAVE BEEN FILED BY SAME APPLICANT, HIS OR HER LEGAL REPRESENTATIVE OR ASSIGNS
Note that where the U.S. application was made by two or more inventors, it is permissible for these inventors to claim priority from separate applications, each to one of the inventors or a subcombination of inventors. For instance, a U.S. application naming inventors A and B may be entitled to priority from one application to A and one to B filed in a foreign country.
III. THE FOREIGN PATENT OR INVENTOR’S CERTIFICATE WAS ACTUALLY GRANTED BEFORE THE U.S. FILING DATE
A. To Be “Patented” an Exclusionary Right Must Be Awarded to the Applicant
“Patented” means “a formal bestowal of patent rights from the sovereign to the applicant.” In re Monks, 588 F.2d 308, 310, 200 USPQ 129, 131 (CCPA 1978); American Infra-Red Radiant Co. v. Lambert Indus., 360 F.2d 977, 149 USPQ 722 (8th Cir.), cert. denied, 385 U.S. 920 (1966) (German Gebrauchsmuster petty patent was held to be a patent usable in a pre-AIA 35 U.S.C. 102(d) rejection.
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Gebrauchmustern are not examined and only grant a 6-year patent term. However, except as to duration, the exclusionary patent right granted is as extensive as in the U.S.).
B. A Published Application Is Not a “Patent”
An application must issue into a patent before it can be applied in a pre-AIA 35 U.S.C. 102(d) rejection. Ex parte Fujishiro, 199 USPQ 36 (Bd. App. 1977)
(“Patenting,” within the meaning of pre-AIA 35 U.S.C. 102(d), does not occur upon laying open of a Japanese utility model application (kokai or kohyo)); Ex parte Links, 184 USPQ 429 (Bd. App. 1974) (German applications, which have not yet been published for opposition, are published in the form of printed documents called Offenlegungsschriften 18 months after filing. These applications are unexamined or in the process of being examined at the time of publication. The Board held that an Offenlegungsschrift is not a patent under pre-AIA 35 U.S.C. 102(d) even though some provisional rights are granted. The Board explained that the provisional rights are minimal and do not come into force if the application is withdrawn or refused.).
C. An Allowed Application Can Be a “Patent” for Purposes of Pre-AIA 35 U.S.C. 102(d) as of the Date Published for Opposition Even Though It Has Not Yet Been Granted as a Patent
An examined application which has been allowed by the examiner and published to allow the public to oppose the grant of a patent has been held to be a “patent” for purposes of rejection under pre-AIA 35 U.S.C. 102(d) as of the date of publication for opposition if substantial provisional enforcement rights arise. Ex parte Beik, 161 USPQ 795 (Bd. App. 1968) (This case dealt with examined German applications. After a determination that an application is allowable, the application is published in the form of a printed document called an Auslegeschrift. The publication begins a period of opposition were the public can present evidence showing unpatentability. Provisional patent rights are granted which are substantially the same as those available once the opposition period is over and the patent is granted. The Board found that an Auslegeschrift provides the legal effect of a patent
for purposes of rejection under pre-AIA 35 U.S.C. 102(d).).
D. Grant Occurs When Patent Becomes Enforceable
The critical date of a foreign patent as a reference under pre-AIA 35 U.S.C. 102(d) is the date the patent becomes enforceable (issued, sealed or granted). In re Monks, 588 F.2d 308, 310, 200 USPQ 129, 131 (CCPA 1978) (British reference became available as prior art on date the patent was “sealed” because as of this date applicant had the right to exclude others from making, using or selling the claimed invention.).
E. Pre-AIA 35 U.S.C. 102(d) Applies as of Grant Date Even If There Is a Period of Secrecy After Patent Grant
A period of secrecy after granting the patent, as in Belgium and Spain, has been held to have no effect in connection with pre-AIA 35 U.S.C. 102(d). These patents are usable in rejections under pre-AIA 35 U.S.C. 102(d) as of the date patent rights are granted. In re Kathawala, 9 F.3d 942, 28 USPQ2d 1789
(Fed. Cir. 1993) (An invention is “patented” for purposes of pre-AIA 35 U.S.C. 102(d) when the patentee’s rights under the patent become fixed. The fact that applicant’s Spanish application was not published until after the U.S. filing date is immaterial since the Spanish patent was granted before U.S. filing.); Gramme Elec. Co. v. Arnoux and Hochhausen Elec. Co., 17 F. 838, 1883 C.D. 418 (S.D.N.Y. 1883) (Rejection made under a predecessor of pre-AIA 35 U.S.C. 102(d) based on an Austrian patent granted an exclusionary right for 1 year but was kept secret, at the option of the patentee, for that period. The court held that the Austrian patent grant date was the relevant date under the statute for purposes of pre-AIA 35 U.S.C. 102(d) but that the patent could not have been used to in a rejection under pre-AIA 35 U.S.C. 102(a) or (b).); In re Talbott, 443 F.2d 1397, 170 USPQ 281 (CCPA 1971) (Applicant cannot avoid a pre-AIA 35 U.S.C. 102(d) rejection by exercising an option to keep the subject matter of a German Gebrauchsmuster (petty patent) in secrecy until time of U.S. filing.).
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IV. THE SAME INVENTION MUST BE INVOLVED
“Same Invention” Means That the Application Claims Could Have Been Presented in the Foreign Patent
Under pre-AIA 35 U.S.C. 102(d), the “invention... patented” in the foreign country must be the same as the invention sought to be patented in the U.S. When the foreign patent contains the same claims as the U.S. application, there is no question that “the invention was first patented... in a foreign country.” In re Kathawala, 9 F.3d 942, 945, 28 USPQ2d 1785, 1787 (Fed. Cir. 1993). However, the claims need not be identical or even within the same statutory class. If applicant is granted a foreign patent which fully discloses the invention and which gives applicant a number of different claiming options in the U.S., the reference in pre-AIA 35 U.S.C. 102(d) to “‘invention... patented’ necessarily includes all the disclosed aspects of the invention. Thus, the [pre-AIA] section 102(d) bar applies regardless whether the foreign patent contains claims to less than all aspects of the invention.” 9 F.3d at 946, 28 USPQ2d at 1788. In essence, a pre-AIA 35 U.S.C. 102(d) rejection applies if applicant’s foreign application supports the subject matter of the U.S. claims. Id. at 944, 947, 28 USPQ2d at 1786, 1789 (Applicant was granted a Spanish patent claiming a method of making a composition. The patent disclosed compounds, methods of use and processes of making the compounds. After the Spanish patent was granted, the applicant filed a U.S. application with claims directed to the compound but not the process of making it. The Federal Circuit held that it did not matter that the claims in the U.S. application were directed to the composition instead of the process because the foreign specification would have supported claims to the composition. It was immaterial that the formulations were unpatentable pharmaceutical compositions in Spain.).
2136 Pre-AIA 35 U.S.C. 102(e) [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note), except for determining eligibility of SIRs as eligible prior art. See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions,
and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless-
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(e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
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Pre-AIA 35 U.S.C. 102(e) allows the use of certain international application publications and U.S. patent application publications, and certain U.S. patents as prior art under pre-AIA 35 U.S.C. 102(e) as of their respective U.S. filing dates, including certain international filing dates. The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. See MPEP § 706.02(f)(1) for examination guidelines on the application of pre-AIA 35 U.S.C. 102(e). References based on international applications that were filed prior to November 29, 2000 are subject to the pre-AIPA version of 35 U.S.C. 102(e) (i.e., the version in force on November 28, 2000). See MPEP § 2136.03 for additional information.
I. STATUTORY INVENTION REGISTRATIONS (SIRs) ARE ELIGIBLE AS PRIOR ART UNDER 35 U.S.C. 102 and Pre-AIA 35 U.S.C. 102(e)
In accordance with former 35 U.S.C. 157(c), a published SIR will be treated the same as a U.S. patent for all defensive purposes, usable as a reference as of its filing date in the same manner as a U.S. patent. A SIR is prior art under all applicable
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sections of 35 U.S.C. 102 including pre-AIA 35 U.S.C. 102(e). See MPEP § 1111.
II. DEFENSIVE PUBLICATIONSARE NOT PRIOR ART AS OF THEIR FILING DATE
The Defensive Publication Program, available between April 1968 and May 1985, provided for the voluntary publication of the abstract of the technical disclosure of a pending application under certain conditions. A defensive publication is not a patent or an application publication under 35 U.S.C. 122(b); it is a publication. Therefore, it is prior art only as of its publication date. Ex parte Osmond, 191 USPQ 334 (Bd. App. 1973). See MPEP § 711.06(a) for more information on Defensive Publications.
2136.01 Status of U.S. Application as a Reference [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
I. WHEN THERE IS NO COMMON ASSIGNEE OR INVENTOR, A U.S. APPLICATION MUST ISSUE AS A PATENT OR BE PUBLISHED AS A SIR OR AS AN APPLICATION PUBLICATION BEFORE IT ISAVAILABLEAS PRIORART UNDER Pre-AIA 35 U.S.C. 102(e)
In addition to U.S. patents and SIRs, certain U.S. application publications and certain international application publications are also available as prior art under pre-AIA 35 U.S.C. 102(e) as of their effective U.S. filing dates (which will include certain international filing dates). See MPEP § 706.02(a).
II. WHEN THERE IS A COMMON ASSIGNEE OR INVENTOR, A PROVISIONAL Pre-AIA 35 U.S.C. 102(e) REJECTION OVER AN EARLIER FILED UNPUBLISHED APPLICATION CAN BE MADE
Based on the assumption that an application will ripen into a U.S. patent (or into an application
publication), it is permissible to provisionally reject a later application over an earlier filed, and unpublished, application under pre-AIA 35 U.S.C. 102(e) when there is a common assignee or inventor. In re Irish, 433 F.2d 1342, 167 USPQ 764 (CCPA 1970). In addition, a provisional pre-AIA 35 U.S.C. 102(e) rejection may be made if the earlier filed copending U.S. application has been published as redacted (37 CFR 1.217) and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application. Such a provisional rejection “serves to put applicant on notice at the earliest possible time of the possible prior art relationship between copending applications” and gives applicant the fullest opportunity to overcome the rejection by amendment or submission of evidence. In addition, since both applications are pending and usually have the same assignee, more options are available to applicant for overcoming the provisional rejection than if the other application were already issued. Ex parte Bartfeld, 16 USPQ2d 1714 (Bd. Pat. App. & Int. 1990) aff’d on other grounds, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). Note that provisional rejections over pre-AIA 35 U.S.C. 102(e) are only authorized when there is a common inventor or assignee, otherwise the copending application prior to publication must remain confidential. MPEP § 706.02(f)(2) and MPEP § 706.02(k) discuss the procedures to be used in provisional rejections over pre-AIA 35 U.S.C. 102(e) and pre-AIA 35 U.S.C. 102(e)/103.
For applications filed on or after November 29, 1999 or pending on or after December 10, 2004, a provisional rejection under 35 U.S.C. 103(a) using prior art under pre-AIA 35 U.S.C. 102(e) is not proper if the application contains evidence that the application and the prior art reference were owned by the same person, or subject to an obligation of assignment to the same person, at the time the invention was made. The changes to pre-AIA 35 U.S.C. 102(e) in the Intellectual Property and High Technology Technical Amendments Act of 2002 (Pub. L. 107-273, 116 Stat. 1758 (2002)) did not affect 35 U.S.C. 103(c) as amended on November 29, 1999. See MPEP § 706.02(l)(1) through § 706.02(l)(3) for information relating to rejections under pre-AIA 35 U.S.C. 103 and evidence of common ownership.
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In addition, certain non-commonly owned references may be disqualified from being applied in a rejection under pre-AIA 35 U.S.C. 103(a) due to the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) (Pub. L. 108-453; 118 Stat. 3596 (2004)), which was enacted on December 10, 2004 and was effective for all patents granted on or after December 10, 2004. The CREATE Act amended pre-AIA 35 U.S.C. 103(c) to provide that subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if certain conditions are met. Pre-AIA 35 U.S.C.103(c), as amended by the CREATE Act, continues to apply only to subject matter which qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g), and which is being relied upon in a rejection under 35 U.S.C. 103. It does not apply to or affect subject matter which is applied in a rejection under pre-AIA 35 U.S.C. 102 or a double patenting rejection (see 37 CFR 1.78(c) and MPEP § 804). In addition, if the subject matter qualifies as prior art under any other subsection of pre-AIA 35 U.S.C. 102 (e.g., pre-AIA 35 U.S.C. 102(a) or (b)) it will not be disqualified as prior art under pre-AIA 35 U.S.C. 103(c). See also MPEP § 706.02(l)(1) through § 706.02(l)(3) for information relating to rejections under pre-AIA 35 U.S.C. 103 and evidence of joint research agreements.
2136.02 Content of the Prior Art Available Against the Claims [R-11.2013]
Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
I. A 35 U.S.C. 102(e) REJECTION MAY RELY ON ANY PART OF THE PATENT OR APPLICATION PUBLICATION DISCLOSURE
Under pre-AIA 35 U.S.C. 102(e), the entire disclosure of a U.S. patent, a U.S. patent application publication, or an international application
publication having an earlier effective U.S. filing date (which will include certain international filing dates) can be relied on to reject the claims. Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 983, 10 USPQ2d 1338, 1342 (Fed. Cir. 1989). See MPEP § 706.02(a).
II. REFERENCE MUST ITSELF CONTAIN THE SUBJECT MATTER RELIED ON IN THE REJECTION
When a U.S. patent, a U.S. patent application publication, or an international application publication is used to reject claims under pre-AIA 35 U.S.C. 102(e), the disclosure relied on in the rejection must be present in the issued patent or application publication. It is the earliest effective U.S. filing date (which will include certain international filing dates) of the U.S. patent or application publication being relied on as the critical reference date and subject matter not included in the patent or application publication itself can only be used when that subject matter becomes public. Portions of the patent application which were canceled are not part of the patent or application publication and thus cannot be relied on in a pre-AIA 35 U.S.C. 102(e) rejection over the issued patent or application publication. Ex parte Stalego, 154 USPQ 52 (Bd. App. 1966). Likewise, subject matter which is disclosed in a parent application, but not included in the child continuation-in-part (CIP) cannot be relied on in a pre-AIA 35 U.S.C. 102(e) rejection over the issued or published CIP. In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).
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III. THE SUPREME COURT HAS AUTHORIZED 35 U.S.C. 103 REJECTIONS BASED ON PRE-AIA 35 U.S.C. 102(e)
U.S. patents may be used as of their filing dates to show that the claimed subject matter is anticipated or obvious. Obviousness can be shown by combining other prior art with the U.S. patent reference in a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965). Similarly, certain U.S. application publications and certain international application publications may also be used as of their earliest effective U.S. filing dates (which will include certain international filing dates) to show that the claimed subject matter would have been anticipated or obvious.
See MPEP § 706.02(1)(1) through § 706.02(l)(3) for additional information on rejections under 35 U.S.C. 103 and evidence of common ownership or a joint research agreement.
2136.03 Critical Reference Date [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
I. FOREIGN PRIORITY DATE
Reference’s Foreign Priority Date Under 35 U.S.C. 119(a)-(d) and (f) Cannot Be Used as the Pre-AIA 35 U.S.C. 102(e) Reference Date
Pre-AIA 35 U.S.C. 102(e) is explicitly limited to certain references “filed in the United States before the invention thereof by the applicant” (emphasis added). Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).Therefore, the foreign
priority date of the reference under 35 U.S.C. 119(a)-(d), (f), and 35 U.S.C. 365(a) cannot be used to antedate the application filing date. In contrast, applicant may be able to overcome the pre-AIA 35 U.S.C. 102(e) rejection by proving he or she is entitled to his or her own 35 U.S.C. 119 priority date which is earlier than the reference’s U.S. filing date. In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966) (Hilmer I) (Applicant filed an application with a right of priority to a German application. The examiner rejected the claims over a U.S. patent to Habicht based on its Swiss priority date. The U.S. filing date of Habicht was later than the application’s German priority date. The court held that the reference’s Swiss priority date could not be relied on in a pre-AIA 35 U.S.C. 102(e) rejection. Because the U.S. filing date of Habicht was later than the earliest effective filing date (German priority date) of the application, the rejection was reversed.). See MPEP § 216 for information on procedures to be followed in considering applicant's right of priority.
Note that certain international application (PCT) filings are considered to be “filings in the United States” for purposes of applying an application publication as prior art. See MPEP § 706.02(a).
II. INTERNATIONAL (PCT) APPLICATIONS; INTERNATIONAL APPLICATION PUBLICATIONS
A. International Application Filed On or After November 29, 2000
If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined:
(A) If the international application meets the following three conditions:
(1) an international filing date on or after November 29, 2000;
(2) designated the United States; and
(3) published under PCT Article 21(2) in English,
the international filing date is a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e). If such an international application properly claims benefit to an earlier-filed U.S. or international
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application, or priority to an earlier-filed U.S. provisional application, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the earlier filing date, assuming all the conditions of pre-AIA 35 U.S.C. 102(e) and 35 U.S.C. 119(e), 120, or 365(c) are met. In addition, the subject matter relied upon in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112(a) /pre-AIA 35 U.S.C. 112, first paragraph, in order to give that subject matter the benefit of the earlier filing date under pre-AIA 35 U.S.C. 102(e). Note, where the earlier application is an international application, the earlier international application must satisfy the same three conditions (i.e., filed on or after November 29, 2000, designated the U.S., and had been published in English under PCT Article 21(2)) for the earlier international filing date to be a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C.102(e).
(B) If the international application was filed on or after November 29, 2000, but did not designate the United States or was not published in English under PCT Article 21(2), do not treat the international filing date as a U.S. filing date. In this situation, do not apply the reference as of its international filing date, its date of completion of the 35 U.S.C. 371(c)(1), (2) and (4) requirements, or any earlier filing date to which such an international application claims benefit or priority. The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date, or pre-AIA 35 U.S.C. 102(e) as of any later U.S. filing date of an application that properly claimed the benefit of the international application (if applicable).
B. International Application Filed Before November 29, 2000
References based on international applications that were filed prior to November 29, 2000 are subject to the pre-AIPA version of 35 U.S.C. 102(e) (i.e., the version in force on November 28, 2000) as set forth below.
Former 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent (as in force on November 28, 2000)
A person shall be entitled to a patent unless-
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(e) the invention was described in a patent granted on an application for patent by another filed in the United States before
the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.
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If an international application has an international filing date prior to November 29, 2000, the reference should be applied under the provisions of 35 U.S.C. 102 and 374 as in force on November 28, 2000 (prior to the AIPA amendments):
(1) For U.S. patents, apply the reference under 35 U.S.C. 102(e) as in force on November 28, 2000 as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later-filed U.S. application that claimed the benefit of the international application;
(2) For U.S. application publications and WIPO publications directly resulting from international applications under PCT Article 21(2), never apply these references under 35 U.S.C. 102(e) as in force on November 28, 2000. These references may be applied as of their publication dates under pre-AIA 35 U.S.C. 102(a) or (b);
(3) For U.S. application publications of applications that claim the benefit under 35 U.S.C. 120 or 365(c) of an international application filed prior to November 29, 2000, apply the reference under 35 U.S.C. 102(e) as in force on November 28, 2000 as of the actual filing date of the later-filed U.S. application that claimed the benefit of the international application.
Examiners should be aware that although a publication of, or a U.S. patent issued from, an international application may not be available as prior art under former 35 U.S.C. 102(e) as in force on November 28, 2000 or under pre-AIA 35 U.S.C. 102(e), the corresponding WIPO publication of an international application may have an earlier pre-AIA 35 U.S.C. 102(a) or (b) date.
III. PRIORITY FROM PROVISIONAL APPLICATION UNDER 35 U.S.C. 119(e)
The pre-AIA 35 U.S.C. 102(e) critical reference date of a U.S. patent or U.S. application publications and certain international application publications entitled to the benefit of the filing date of a provisional
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application under 35 U.S.C. 119(e) is the filing date of the provisional application with certain exceptions if the provisional application(s) properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C 112(a)/ pre-AIA 35 U.S.C. 112, first paragraph. See MPEP § 706.02(f)(1), examples 5 to 9. Note that international applications which (1) were filed prior to November 29, 2000, or (2) did not designate the U.S., or (3) were not published in English under PCT Article 21(2) by WIPO, may not be used to reach back (bridge) to an earlier filing date through a priority or benefit claim for prior art purposes under pre-AIA 35 U.S.C. 102(e).
IV. PARENT’S FILING DATE WHEN REFERENCE IS A CONTINUATION-IN-PART OF THE PARENT
Filing Date of U.S. Parent Application Can Only Be Used as the Pre-AIA 35 U.S.C. 102(e) Date If It Supports the Subject Matter Relied Upon in the Child
For prior art purposes, a U.S. patent or patent application publication that claims the benefit of an earlier filing date under 35 U.S.C. 120 of a prior nonprovisional application would be accorded the earlier filing date as its prior art date under pre-AIA 35 U.S.C. 102(e), provided the earlier-filed application properly supports the subject matter relied upon in any rejection in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In other words, the subject matter used in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, in order for that subject matter to be entitled to the earlier filing date under pre-AIA 35 U.S.C. 102(e).
See also MPEP § 706.02(f)(1), examples 2 and 5 to 9.
V. DATE OF CONCEPTION OR REDUCTION TO PRACTICE
Pre-AIA 35 U.S.C. 102(e) Reference Date Is the Filing Date, Not Date of Inventor’s Conception or Reduction to Practice
If a reference available under pre-AIA 35 U.S.C. 102(e) discloses, but does not claim the subject matter of the claims being examined or an obvious
variant, the reference is not prior art under pre-AIA 35 U.S.C. 102(g). Furthermore, the reference does not qualify as “prior art” under 35 U.S.C. 102 as of a date earlier than its filing date based upon any prior inventive activity that is disclosed in the U.S. patent or U.S. patent application publication in the absence of evidence that the subject matter was actually reduced to practice in this country on an earlier date. See MPEP § 2138. When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing dates), as stated in pre-AIA 35 U.S.C. 102(e). See MPEP § 706.02(a). The date that the prior art subject matter was conceived or reduced to practice is of no importance when pre-AIA 35 U.S.C. 102(g) is not at issue. Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 983, 10 USPQ2d 1338, 1342 (Fed. Cir. 1989) (The defendant sought to invalidate patents issued to Mason and Sohn assigned to Sun Studs. The earliest of these patents issued in June 1973. A U.S. patent to Mouat was found which issued in March 1976 and which disclosed the invention of Mason and Sohn. While the patent to Mouat issued after the Mason and Sohn patents, it was filed 7 months earlier than the earliest of the Mason and Sohn patents. Sun Studs submitted affidavits showing conception in 1969 and diligence to the constructive reduction to practice and therefore antedated the patent to Mouat. The defendant sought to show that Mouat conceived the invention in 1966. The court held that conception of the subject matter of the reference only becomes an issue when the claims of the conflicting patents cover inventions which are the same or obvious over one another. When pre-AIA 35 U.S.C. 102(e) applies but not pre-AIA 35 U.S.C. 102(g), the filing date of the prior art patent is the earliest date that can be used to reject or invalidate claims.).
2136.04 Different Inventive Entity; Meaning of “By Another” [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and
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MPEP § 2150 et seq. for examination of applications subject to those provisions.]
I. IF THERE IS ANY DIFFERENCE IN THE INVENTIVE ENTITY, THE REFERENCE IS “BY ANOTHER”
“Another” means other than applicants, In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966), in other words, a different inventive entity. The inventive entity is different if not all inventors are the same. The fact that the application and reference have one or more inventors in common is immaterial. Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was “by another” and thus could be used in a pre-AIA 35 U.S.C. 102(e)/103 rejection of the application.).
II. A DIFFERENT INVENTIVE ENTITY IS PRIMA FACIE EVIDENCE THAT THE REFERENCE IS “BY ANOTHER”
As stated by the House and Senate reports on the bills enacting section pre-AIA 35 U.S.C. 102(e) as part of the 1952 Patent Act, this subsection of 102 codifies the Milburn rule of Milburn v. Davis-Bournonville, 270 U.S. 390 (1926). The Milburn rule authorized the use of a U.S. patent containing a disclosure of the invention as a reference against a later filed application as of the U.S. patent filing date. The existence of an earlier filed U.S. application containing the subject matter claimed in the application being examined indicates that applicant was not the first inventor. Therefore, a U.S. patent, a U.S. patent application publication or international application publication, by a different inventive entity, whether or not the application shares some inventors in common with the patent, is prima facie evidence that the invention was made “by another” as set forth in pre-AIA 35 U.S.C. 102(e). In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969); In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969); Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992). See MPEP § 706.02(b) and § 2136.05
for discussion of methods of overcoming pre-AIA 35 U.S.C. 102(e) rejections.
2136.05 Overcoming a Rejection Under Pre-AIA 35 U.S.C. 102(e) [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
I. A PRE-AIA 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME BY ANTEDATING THE FILING DATE OR SHOWING THAT DISCLOSURE RELIED ON IS APPLICANT'S OWN WORK
When a prior U.S. patent, U.S. patent application publication, or international application publication is not a statutory bar, a pre-AIA 35 U.S.C. 102(e) rejection can be overcome by antedating the filing date (see MPEP § 2136.03 regarding critical reference date of pre-AIA 35 U.S.C. 102(e) prior art) of the reference by submitting an affidavit or declaration under 37 CFR 1.131 or by submitting an affidavit or declaration under 37 CFR 1.132 establishing that the relevant disclosure is applicant’s own work. In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969). The filing date can also be antedated by applicant’s earlier foreign priority application or provisional application if 35 U.S.C. 119 is met and the foreign application or provisional application “supports” (conforms to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, requirements) all the claims of the U.S. application. In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614
(Fed. Cir. 1989). But a prior application which was not copending with the application at issue cannot be used to antedate a reference. In re Costello, 717 F.2d 1346, 219 USPQ 389 (Fed. Cir. 1983). A terminal disclaimer also does not overcome a pre-AIA 35 U.S.C. 102(e) rejection. See, e.g., In re Bartfeld, 925 F.2d 1415, 17 USPQ2d 1885 (Fed. Cir. 1991).
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See MPEP § 706.02(b) for a list of methods which can be used to overcome rejections based on pre-AIA 35 U.S.C. 102(e) rejections. For information on the required contents of a 37 CFR 1.131 affidavit or declaration and the situations in which such affidavits and declarations are permitted see MPEP § 715. An affidavit or declaration is not appropriate if the reference describes applicant’s own work. In this case, applicant must submit an affidavit or declaration under 37 CFR 1.132. See the next subsection for more information concerning the requirements of 37 CFR 1.132 affidavits and declarations.
II. A PRE-AIA 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME BY SHOWING THE REFERENCE IS DESCRIBING APPLICANT’S OWN WORK
“The fact that an application has named a different inventive entity than a patent does not necessarily make that patent prior art.” Applied Materials Inc. v. Gemini Research Corp., 835 F.2d 279, 15 USPQ2d 1816 (Fed. Cir. 1988). The issue turns on what the evidence of record shows as to who invented the subject matter. In re Whittle, 454 F.2d 1193, 1195, 172 USPQ 535, 537 (CCPA 1972). In fact, even if applicant’s work was publicly disclosed prior to his or her application, applicant’s own work may not be used against him or her in an application subject to pre-AIA 35 U.S.C. 102 unless there is a time bar under pre-AIA 35 U.S.C. 102(b). In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982) (citing In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982)). Therefore, when the unclaimed subject matter of a reference is applicant’s own invention, applicant may overcome a prima facie case based on the patent, U.S. patent application publication, or international application publication, by showing that the disclosure is a description of applicant’s own previous work. Such a showing can be made by proving that the patentee, or the inventor(s) of the U.S. patent application publication or the international application publication, was associated with applicant (e.g. worked for the same company) and learned of applicant’s invention from applicant. In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969). In the situation where one application is first filed by inventor X and then a later application is filed by X &Y, it must be proven that the joint invention was made first, was thereafter
described in the sole applicant’s patent, or was thereafter described in the sole applicant’s U.S. patent application publication or international application publication, and then the joint application was filed. In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966).
In In re Land, separate U.S. patents to Rogers and to Land were used to reject a joint application to Rogers and Land under pre-AIA 35 U.S.C. 102(e)/103. The inventors worked for the same company (Polaroid) and in the same laboratory. All the patents flowed from the same research. In addition, the patent applications were prepared by the same attorneys, were interrelated and contained cross-references to each other. The court affirmed the rejection because (1) the inventive entities of the patents (one to Rogers and one to Land) were different from the inventive entity of the joint application (Rogers and Land) and (2) Land and Rogers brought their knowledge of their individual work with them when they made the joint invention. There was no indication that the portions of the references relied on disclosed anything they did jointly. Neither was there any showing that what they did jointly was done before the filing of the reference patent applications.
See also In re Carreira, 532 F.2d 1356, 189 USPQ 461 (CCPA 1976) (The examiner rejected claims to a joint application to Carreira, Kyrakakis, Solodar, and Labana under pre-AIA 35 U.S.C. 102(e) and 103 in view of a U.S. patent issued to Tulagin and Carreira or a patent issued to Clark. The applicants submitted declarations under 37 CFR 1.132 by Tulagin and Clark in which each declarant stated he was “not the inventor of the use of compounds having a hydroxyl group in a position ortho to an azo linkage.” The court held that these statements were vague and inconclusive because the declarants did not disclose the use of this generic compound but rather species of this generic compound in their patents and it was the species which met the claims. The declaration that each did not invent the use of the generic compound does not establish that Tulagin and Clark did not invent the use of the species.)
MPEP § 715.01(a), § 715.01(c), and § 716.10 set forth more information pertaining to the contents and uses of affidavits and declarations under 37 CFR
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1.132 for antedating references. See MPEP § 706.02(l)(1) for information pertaining to rejections under pre-AIA 35 U.S.C. 102(e)/103 and the applicability of pre-AIA 35 U.S.C. 103(c).
III. APPLICANT NEED NOT SHOW DILIGENCE OR REDUCTION TO PRACTICE WHEN THE SUBJECT MATTER DISCLOSED IN THE REFERENCE IS APPLICANT’S OWN WORK
When the reference reflects applicant’s own work, applicant need not prove diligence or reduction to practice to establish that he or she invented the subject matter disclosed in the reference. A showing that the reference disclosure arose from applicant’s work coupled with a showing of conception by the applicant before the filing date of the reference will overcome the pre-AIA 35 U.S.C. 102(e) rejection. The showing can be made by submission of an affidavit by the inventor under 37 CFR 1.132. The other patentees need not submit an affidavit disclaiming inventorship, but, if submitted, a disclaimer by all other patentees should be considered by the examiner. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982) (Declaration submitted by DeBaun stated that he was the inventor of subject matter disclosed in the U.S. patent reference of DeBaun and Noll. Exhibits were attached to the declaration showing conception and included drawings DeBaun had prepared and given to counsel for purposes of preparing the application which issued as the reference patent. The court held that, even though the evidence was not sufficient to antedate the prior art patent under 37 CFR 1.131, diligence and/or reduction to practice was not required to show DeBaun invented the subject matter. Declarant’s statement that he conceived the invention first was enough to overcome the pre-AIA 35 U.S.C. 102(e) rejection.).
IV. CLAIMING OF INDIVIDUAL ELEMENTS OR SUBCOMBINATIONS IN A COMBINATION CLAIM OF THE REFERENCE DOES NOT ITSELF ESTABLISH THAT THE PATENTEE INVENTED THOSE ELEMENTS
The existence of combination claims in a reference is not evidence that the patentee invented the individual elements or subcombinations included if the elements and subcombinations are not separately claimed apart from the combination. In re DeBaun,
687 F.2d 459, 214 USPQ 933 (CCPA 1982) (citing In re Facius, 408 F.2d 1396, 1406, 161 USPQ 294, 301 (CCPA 1969)).
See also In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969) (On September 15, 1961, Dewey filed an application disclosing and claiming a time delay protective device for an electric circuit. In disclosing the invention, Dewey completely described, but did not claim, a “gating means 19” invented by Mathews which was usable in the protective device. Dewey and Mathews were coworkers at General Electric Company, the assignee. Mathews filed his application on March 7, 1963, before the Dewey patent issued but almost 18 months after its filing. The Mathews application disclosed that “one illustration of a circuit embodying the present invention is shown in copending patent application S.N. 138,476-Dewey.” The examiner used Dewey to reject all the Mathews claims under pre-AIA 35 U.S.C. 102(e). In response, Mathews submitted an affidavit by Dewey under 37 CFR 1.132. In the affidavit, Dewey stated that he did not invent the gating means 19 but had learned of the gating means through Mathews and that GE attorneys had advised that the gating means be disclosed in Dewey’s application to comply with 35 U.S.C. 112, first paragraph. The examiner argued that the only way to overcome a pre-AIA 35 U.S.C. 102(e) rejection was by submitting an affidavit or declaration under 37 CFR 1.131 to antedate the filing date of the reference. The court reversed the rejection, holding that the totality of the evidence on record showed that Dewey derived his knowledge from Mathews who is “the original, first and sole inventor.”).
2137 Pre-AIA 35 U.S.C. 102(f) [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. For information pertaining to derivation proceedings see 37 CFR 42.401.]
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Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
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(f) he did not himself invent the subject matter sought to be patented.
*****
Where it can be shown that an applicant “derived” an invention from another, a rejection under pre-AIA 35 U.S.C. 102(f) is proper. Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981) (“most, if not all, determinations under section 102(f) involve the question of whether one party derived an invention from another”).
While derivation will bar the issuance of a patent to the deriver, a disclosure by the deriver, absent a bar under pre-AIA 35 U.S.C. 102(b), will not bar the issuance of a patent to the party from which the subject matter was derived. In re Costello, 717 F.2d 1346, 1349, 219 USPQ 389, 390-91 (Fed. Cir. 1983) (“[a] prior art reference that is not a statutory bar may be overcome [in an application subject to pre-AIA 35 U.S.C. 102] by two generally recognized methods”: an affidavit under 37 CFR 1.131, or an affidavit under 37 CFR 1.132 “showing that the relevant disclosure is a description of the applicant’s own work”); In re Facius, 408 F.2d 1396, 1407, 161 USPQ 294, 302 (CCPA 1969) (subject matter incorporated into a patent that was brought to the attention of the patentee by applicant, and hence derived by the patentee from the applicant, is available for use against applicant unless applicant had actually invented the subject matter placed in the patent).
Where there is a published article identifying the authorship (MPEP § 715.01(c)) or a patent identifying the inventorship (MPEP § 715.01(a)) that discloses subject matter being claimed in an application undergoing examination, the designation of authorship or inventorship does not raise a presumption of inventorship with respect to the subject matter disclosed in the article or with respect to the subject matter disclosed but not claimed in the patent so as to justify a rejection under pre-AIA 35 U.S.C. 102(f). However, it is incumbent upon the inventors named in the application, in reply to an
inquiry regarding the appropriate inventorship under pre-AIA subsection (f), or to rebut a rejection under pre-AIA 35 U.S.C. 102(a) or (e), to provide a satisfactory showing by way of affidavit under 37 CFR 1.132 that the inventorship of the application is correct in that the reference discloses subject matter invented by the applicant rather than derived from the author or patentee notwithstanding the authorship of the article or the inventorship of the patent. In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982) (inquiry is appropriate to clarify any ambiguity created by an article regarding inventorship, and it is then incumbent upon the applicant to provide “a satisfactory showing that would lead to a reasonable conclusion that [applicant] is the…inventor” of the subject matter disclosed in the article and claimed in the application).
I. DERIVATION REQUIRES COMPLETE CONCEPTION BY ANOTHER AND COMMUNICATION TO THEALLEGED DERIVER
“The mere fact that a claim recites the use of various components, each of which can be argumentatively assumed to be old, does not provide a proper basis for a rejection under pre-AIA 35 U.S.C. 102(f).” Ex parte Billottet, 192 USPQ 413, 415 (Bd. App. 1976). Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that the one charged with derivation possessed knowledge of the invention. Kilbey v. Thiele, 199 USPQ 290, 294 (Bd. Pat. Inter. 1978).
See also Price v. Symsek, 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908, 182 USPQ 167, 169 (CCPA 1974). “Communication of a complete conception must be sufficient to enable one of ordinary skill in the art to construct and successfully operate the invention.” Hedgewick, 497 F.2d at 908, 182 USPQ at 169. See also Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1577, 42 USPQ2d 1378, 1383 (Fed. Cir. 1997) (Issue in proving derivation is “whether the communication enabled one of ordinary skill in the art to make the patented invention.”).
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II. PARTY ALLEGING DERIVATION DOES NOT HAVE TO PROVE AN ACTUAL REDUCTION TO PRACTICE, DERIVATION OF PUBLIC KNOWLEDGE, OR DERIVATION IN THIS COUNTRY
The party alleging derivation “need not prove an actual reduction to practice in order to show derivation.” Scott v. Brandenburger, 216 USPQ 326, 327 (Bd. App. 1982). Furthermore, the application of subsection (f) is not limited to public knowledge derived from another, and “the site of derivation need not be in this country to bar a deriver from patenting the subject matter.” Ex parte Andresen, 212 USPQ 100, 102 (Bd. App. 1981).
III. DERIVATION DISTINGUISHED FROM PRIORITY OF INVENTION
Although derivation and priority of invention both focus on inventorship, derivation addresses originality (i.e., who invented the subject matter), whereas priority focuses on which party first invented the subject matter. Price v. Symsek, 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993).
IV. PRE-AIA 35 U.S.C. 102(f) MAY APPLY WHERE Pre-AIA 35 U.S.C. 102(a) AND PRE-AIA 35 U.S.C. 102(e) ARE NOT AVAILABLE STATUTORY GROUNDS FOR REJECTION
Pre-AIA 35 U.S.C. 102(f) does not require an inquiry into the relative dates of a reference and the application, and therefore may be applicable where pre-AIA subsections (a) and (e) are not available for references having an effective date subsequent to the effective date of the application being examined. However for a reference having a date later than the date of the application some evidence may exist that the subject matter of the reference was derived from the applicant in view of the relative dates. Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981) (The relative dates of the events are important in determining derivation; a publication dated more than a year after applicant’s filing date that merely lists as literary coauthors individuals other than applicant is not the strong evidence needed to rebut
a declaration by the applicant that he is the sole inventor.).
2137.01 Inventorship [R-07.2015]
The requirement that the applicant for a patent in an application filed before September 16, 2012 be the inventor(s) (except as otherwise provided in pre-AIA 37 CFR 1.41), and that the inventor or each joint inventor be identified in applications filed on or after September 16, 2012, are characteristics of U.S. patent law not generally shared by other countries. Consequently, foreign applicants may misunderstand U.S. law regarding naming of the actual inventors causing an error in the inventorship of a U.S. application that may claim priority to a previous foreign application under 35 U.S.C. 119. A request under 37 CFR 1.48 is required to correct any error in naming the inventors in the U.S. application as filed. See MPEP § 602.01(c) et seq. Foreign applicants may need to be reminded of the requirement for the same inventor or at least one common joint inventor between a U.S. application and a 35 U.S.C. 119 priority application. See MPEP § 213.02, subsection II.
If a determination is made that the inventive entity named in a U.S. application is not correct, such as when a request under 37 CFR 1.48(a) is not granted or is not entered for technical reasons, but the admission therein regarding the error in inventorship is uncontroverted, a rejection should be made on this basis. See MPEP § 706.03(a), subsection IV, for rejections under 35 U.S.C. 101 and 35 U.S.C. 115 (and pre-AIA 35 U.S.C. 102(f) for applications subject to pre-AIA 35 U.S.C. 102) for failure to set forth the correct inventorship.
I. NAMING INVENTORSHIP
The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in 37 CFR 1.64. See MPEP § 602.01(a) for the requirements of an inventor’s oath or declaration in an application filed on or after September 16, 2012. See MPEP § 602.01(b) for the requirements of an original oath
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or declaration in an application filed before September 16, 2012.
For applications filed before September 16, 2012, pre-AIA 37 CFR 1.41(a)(1) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as otherwise provided. Thus the party or parties executing an oath or declaration under pre-AIA 37 CFR 1.63 are presumed to be the inventors. Driscoll v. Cebalo, 5 USPQ2d 1477, 1481 (Bd. Pat. Inter. 1982); In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982) (The inventor of an element, per se, and the inventor of that element as used in a combination may differ. “The existence of combination claims does not evidence inventorship by the patentee of the individual elements or subcombinations thereof if the latter are not separately claimed apart from the combination.” (quoting In re Facius, 408 F.2d 1396, 1406, 161 USPQ 294, 301 (CCPA 1969) (emphasis in original)); Brader v. Schaeffer, 193 USPQ 627, 631 (Bd. Pat. Inter. 1976) (in regard to an inventorship correction: “[a]s between inventors their word is normally taken as to who are the actual inventors” when there is no disagreement).
II. AN INVENTOR MUST CONTRIBUTE TO THE CONCEPTION OF THE INVENTION
The definition for inventorship can be simply stated: “The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant [except for simultaneous conception and reduction to practice, Fiers v. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993)]. One must contribute to the conception to be an inventor.” In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984). See also Board of Education ex rel. Board of Trustees of Florida State Univ. v. American Bioscience Inc., 333 F.3d 1330, 1340, 67 USPQ2d 1252, 1259 (Fed. Cir. 2003) (“Invention requires conception.” With regard to the inventorship of chemical compounds, an inventor must have a conception of the specific compounds being claimed. “[G]eneral knowledge regarding the anticipated
biological properties of groups of complex chemical compounds is insufficient to confer inventorship status with respect to specifically claimed compounds.”); Ex parte Smernoff, 215 USPQ 545, 547 (Bd. App. 1982) (“one who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not an coinventor”). See MPEP § 2138.04 - § 2138.05 for a discussion of what evidence is required to establish conception or reduction to practice.
III. AS LONG AS THE INVENTOR MAINTAINS INTELLECTUAL DOMINATION OVER MAKING THE INVENTION, IDEAS, SUGGESTIONS, AND MATERIALS MAY BE ADOPTED FROM OTHERS
“In arriving at … conception [the inventor] may consider and adopt ideas and materials derived from many sources … [such as] a suggestion from an employee, or hired consultant … so long as he maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting as he goes…even if such suggestion [or material] proves to be the key that unlocks his problem.” Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965). See also New England Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 883, 23 USPQ2d 1622, 1626 (Fed. Cir. 1992) (Adoption of the ideas and materials from another can become a derivation.).
IV. THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO PRACTICE
Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers. Fritsch v. Lin, 21 USPQ2d 1737, 1739 (Bd. Pat.
App. & Inter. 1991) (The inventor “took no part in developing the procedures…for expressing the EPO gene in mammalian host cells and isolating the resulting EPO product.” However, “it is not essential for the inventor to be personally involved in carrying out process steps…where implementation of those steps does not require the exercise of inventive skill.”); In re DeBaun, 687 F.2d 459, 463, 214
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USPQ 933, 936 (CCPA 1982) (“there is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf”).
See also Mattor v. Coolegem, 530 F.2d 1391, 1395, 189 USPQ 201, 204 (CCPA 1976) (one following oral instructions is viewed as merely a technician); Tucker v. Naito, 188 USPQ 260, 263 (Bd. Pat. Inter. 1975) (inventors need not “personally construct and test their invention”); Davis v. Carrier, 81 F.2d 250, 252, 28 USPQ 227, 229 (CCPA 1936) (noninventor’s work was merely that of a skilled mechanic carrying out the details of a plan devised by another).
V. REQUIREMENTS FOR JOINT INVENTORSHIP
The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. “Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” 35 U.S.C. 116. “[T]he statute neither states nor implies that two inventors can be ‘joint inventors’ if they have had no contact whatsoever and are completely unaware of each other's work.” What is required is some “quantum of collaboration or connection.” In other words, “[f]or persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another’s suggestion at a meeting.” Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 916-17, 23 USPQ2d 1921, 1925-26 (Fed. Cir. 1992); Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat. Inter. 1960) (“it is not necessary that the inventive concept come to both [joint inventors] at the same time”).
Each joint inventor must generally contribute to the conception of the invention. A coinventor need not make a contribution to every claim of a patent. A contribution to one claim is enough. “The contributor of any disclosed means of a means-plus-function claim element is a joint inventor as to that claim, unless one asserting sole inventorship can show that
the contribution of that means was simply a reduction to practice of the sole inventor’s broader concept.” Ethicon Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460-63, 45 USPQ2d 1545, 1548-1551 (Fed. Cir. 1998) (The electronics technician who contributed to one of the two alternative structures in the specification to define “the means for detaining” in a claim limitation was held to be a joint inventor.).
2137.02 Applicability of Pre-AIA 35 U.S.C. 103(c) [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
Pre-AIA 35 U.S.C. 103(c) states that subsection (f) of pre-AIA 35 U.S.C. 102 will not preclude patentability where subject matter developed by another person, that would otherwise qualify under pre-AIA 35 U.S.C. 102(f), and the claimed invention of an application under examination were owned by the same person, subject to an obligation of assignment to the same person, or involved in a joint research agreement, which meets the requirements of pre-AIA 35 U.S.C. 103(c)(2) and (c)(3), at the time the invention was made. See MPEP § 706.02(l) and § 2146.
Inventorship is generally “by another” where there are different inventive entities with at least one inventor in common. For case law relating to inventorship by “another” involving different inventive entities with at least one inventor in common see Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (the presence of a common inventor in a reference patent and a pending application does not preclude the determination that the reference inventive entity is to “another” within the meaning of [pre-AIA] 35 U.S.C. 102(e)) and the discussion of prior art
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available under pre-AIA 35 U.S.C. 102(e) in MPEP § 2136.04.
2138 Pre-AIA 35 U.S.C. 102(g) [R-11.2013]
[Editor Note: This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, MPEP § 2159.03 for the conditions under which this section applies to an AIA application, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
*****
(g) (1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
Pre-AIA 35 U.S.C. 102(g) issues such as conception, reduction to practice and diligence, while more commonly applied to interference matters, also arise in other contexts.
Pre-AIA 35 U.S.C. 102(g) may form the basis for an ex parte rejection if: (1) the subject matter at issue has been actually reduced to practice by another before the applicant’s invention; and (2) there has been no abandonment, suppression or concealment. See, e.g., Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1205, 18 USPQ2d 1016, 1020 (Fed. Cir. 1991); New Idea Farm Equipment Corp. v. Sperry Corp., 916 F.2d 1561, 1566, 16 USPQ2d 1424, 1428 (Fed. Cir. 1990); E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1434, 7 USPQ2d
1129, 1132 (Fed. Cir. 1988); Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1444-46, 223 USPQ 603, 606-08 (Fed. Cir. 1984). To qualify as prior art under pre-AIA 35 U.S.C. 102(g), however, there must be evidence that the subject matter was actually reduced to practice, in that conception alone is not sufficient. See Kimberly-Clark, 745 F.2d at 1445, 223 USPQ at 607. While the filing of an application for patent is a constructive reduction to practice, the filing of an application does not in itself provide the evidence necessary to show an actual reduction to practice of any of the subject matter disclosed in the application as is necessary to provide the basis for an ex parte rejection under pre-AIA 35 U.S.C. 102(g). Thus, absent evidence showing an actual reduction to practice (which is generally not available during ex parte examination), the disclosure of a United States patent application publication or patent falls under pre-AIA 35 U.S.C. 102(e) and not under pre-AIA 35 U.S.C. 102(g). Cf. In re Zletz, 893 F.2d 319, 323, 13 USPQ2d 1320, 1323 (Fed. Cir. 1990) (the disclosure in a reference United States patent does not fall under pre-AIA 35 U.S.C. 102(g) but under pre-AIA 35 U.S.C. 102(e)).
In addition, subject matter qualifying as prior art only under pre-AIA 35 U.S.C. 102(g) may also be the basis for an ex parte rejection under pre-AIA 35 U.S.C. 103. See In re Bass, 474 F.2d 1276, 1283, 177 USPQ 178, 183 (CCPA 1973) (in an unsuccessful attempt to utilize a 37 CFR 1.131 affidavit relating to a combination application, applicants admitted that the subcombination screen of a copending application which issued as a patent was earlier conceived than the combination). Pre-AIA 35 U.S.C. 103(c), however, states that subsection (g) of pre-AIA 35 U.S.C. 102 will not preclude patentability where subject matter developed by another person, that would otherwise qualify under pre-AIA 35 U.S.C. 102(g), and the claimed invention of an application under examination were owned by the same person, subject to an obligation of assignment to the same person, or involved in a joint research agreement, which meets the requirements of pre-AIA 35 U.S.C. 103(c)(2) and (c)(3), at the time the invention was made. See MPEP § 706.02(l) and § 2146.
For additional examples of pre-AIA 35 U.S.C. 102(g) issues such as conception, reduction to
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practice and diligence outside the context of interference matters, see In re Costello, 717 F.2d 1346, 219 USPQ 389 (Fed. Cir. 1983) (discussing the concepts of conception and constructive reduction to practice in the context of a declaration under 37 CFR 1.131), and Kawai v. Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973) (holding constructive reduction to practice for priority under 35 U.S.C. 119 requires meeting the requirements of 35 U.S.C. 101 and 35 U.S.C. 112).
2138.01 Interference Practice [R-11.2013]
[Editor Note: This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, MPEP § 2159.03 for the conditions under which this section applies to an AIA application, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
I. PRE-AIA 35 U.S.C. 102(g) IS THE BASIS OF INTERFERENCE PRACTICE
Subsection (g) of pre-AIA 35 U.S.C. 102 is the basis of interference practice for determining priority of invention between two parties. See Bigham v. Godtfredsen, 857 F.2d 1415, 1416, 8 USPQ2d 1266, 1267 (Fed. Cir. 1988), 35 U.S.C. 135, 37 CFR Part 41, Subparts D and E and MPEP Chapter 2300. An interference is an inter partes proceeding directed at determining the first to invent as among the parties to the proceeding, involving two or more pending applications naming different inventors or one or more pending applications and one or more unexpired patents naming different inventors. The United States is unusual in having a first to invent rather than a first to file system. Paulik v. Rizkalla, 760 F.2d 1270, 1272, 226 USPQ 224, 225 (Fed. Cir. 1985) (reviews the legislative history of the subsection in a concurring opinion by Judge Rich). The first of many to reduce an invention to practice around the same time will be the sole party to obtain a patent, Radio Corp. of America v. Radio Eng’g Labs., Inc., 293 U.S. 1, 2, 21 USPQ 353, 353-4 (1934), unless another was the first to conceive and couple a later-in-time reduction to practice with
diligence from a time just prior to when the second conceiver entered the field to the first conceiver’s reduction to practice. Hull v. Davenport, 90 F.2d 103, 105, 33 USPQ 506, 508 (CCPA 1937). See the priority time charts below illustrating this point. Upon conclusion of an interference, subject matter claimed by the losing party that was the basis of the interference is rejected under pre-AIA 35 U.S.C. 102(g), unless the acts showing prior invention were not in this country.
It is noted that 35 U.S.C. 101 requires that whoever invents or discovers is the party who may obtain a patent for the particular invention or discovery. 35 U.S.C. 111 (applicant) or 35 U.S.C. 116 (applicants) set forth the requirement that the actual inventor(s) be the party who applies for a patent or that a patent be applied for on behalf of the inventor. Where it can be shown that an applicant has “derived” an invention from another, a rejection under pre-AIA 35 U.S.C. 102(f) is proper. Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981) (“most, if not all, determinations under [pre-AIA] Section 102(f) involve the question of whether one party derived an invention from another”); Price v. Symsek, 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993) (Although derivation and priority of invention both focus on inventorship, derivation addresses originality, i.e., who invented the subject matter, whereas priority focuses on which party invented the subject matter first.).
II. PRIORITY TIME CHARTS
The following priority time charts illustrate the award of invention priority in several situations. The time charts apply to interference proceedings and are also applicable to declarations or affidavits filed under 37 CFR 1.131 to antedate references which are available as prior art under pre-AIA 35 U.S.C. 102(a) or 102(e). Note, however, in the context of 37 CFR 1.131, an applicant does not have to show that the invention was not abandoned, suppressed, or concealed from the time of an actual reduction to practice to a constructive reduction to practice because the length of time taken to file a patent application after an actual reduction to practice is generally of no consequence except in an interference proceeding. Paulik v. Rizkalla, 760 F.2d 1270, 226 USPQ 224 (Fed. Cir. 1985). See the
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discussion of abandonment, suppression, and concealment in MPEP § 2138.03.
For purposes of analysis under 37 CFR 1.131, the conception and reduction to practice of the reference to be antedated are both considered to be on the effective filing date of domestic patent or foreign patent or the date of printed publication.
In the charts, C = conception, R = reduction to practice (either actual or constructive), Ra = actual reduction to practice, Rc = constructive reduction to practice, and TD = commencement of diligence.
Example 1
A is awarded priority in an interference, or antedates B as a reference in the context of a declaration or affidavit filed under 37 CFR 1.131, because A conceived the invention before B and constructively reduced the invention to practice before B reduced the invention to practice. The same result would be reached if the conception date was the same for both inventors A and B.
Example 2
A is awarded priority in an interference, or antedates B as a reference in the context of a declaration or affidavit filed under 37 CFR 1.131, if A can show reasonable diligence from TD (a
point just prior to B’s conception) until Rc because A conceived the invention before B, and diligently constructively reduced the invention to practice even though this was after B reduced the invention to practice.
Example 3
A is awarded priority in an interference in the absence of abandonment, suppression, or concealment from Ra to Rc, because A conceived the invention before B, actually reduced the invention to practice before B reduced the invention to practice, and did not abandon, suppress, or conceal the invention after actually reducing the invention to practice and before constructively reducing the invention to practice.
A antedates B as a reference in the context of a declaration or affidavit filed under 37 CFR 1.131 because A conceived the invention before B and actually reduced the invention to practice before B reduced the invention to practice.
Example 4
A is awarded priority in an interference if A can show reasonable diligence from TD (a point just prior to B’s conception) until
Ra in the absence of abandonment, suppression, or concealment from Ra to Rc, because A conceived the invention before B, diligently actually reduced the invention to practice (after B reduced the invention to practice), and did not abandon, suppress, or conceal the invention after actually reducing the invention to practice and before constructively reducing the invention to practice.
A antedates B as a reference in the context of a declaration or affidavit filed under 37 CFR 1.131 because A conceived the invention before B, and diligently actually reduced the invention to practice, even though this was after B reduced the invention to practice.
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III. 37 CFR 1.131 DOES NOT APPLY IN INTERFERENCE PROCEEDINGS
Interference practice operates to the exclusion of ex parte practice under 37 CFR 1.131 which permits an applicant to show an actual date of invention prior to the effective date of a reference or activity applied under pre-AIA 35 U.S.C. 102 or 103, as long as the reference is not a statutory bar under pre-AIA 35 U.S.C. 102(b) or a U.S. patent application publication claiming the same patentable invention. Ex parte Standish, 10 USPQ2d 1454, 1457 (Bd. Pat. App. & Inter. 1988) (An application claim to the “same patentable invention” claimed in a domestic patent requires interference rather than an affidavit under 37 CFR 1.131 to antedate the patent. The term “same patentable invention” encompasses a claim that is either anticipated by or obvious in view of the subject matter recited in the patent claim.). Subject matter which is prior art under pre-AIA 35 U.S.C. 102(g) and is subject to an interference is not open to further inquiry under 37 CFR 1.131 during the interference proceeding.
IV. LOST COUNTS IN AN INTERFERENCE ARE NOT, PER SE, STATUTORY PRIOR ART
Loss of an interference count alone does not make its subject matter statutory prior art to losing party; however, lost count subject matter that is available as prior art under 35 U.S.C. 102 may be used alone or in combination with other references under 35 U.S.C. 103. But see In re Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992) (Under the principles of res judicata and collateral estoppel, Deckler was not entitled to claims that were patentably indistinguishable from the claim lost in interference even though the subject matter of the lost count was not available for use in an obviousness rejection under 35 U.S.C. 103.).
2138.02 “The Invention Was Made in This Country” [R-11.2013]
[Editor Note: This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF
provisions, MPEP § 2159.03 for the conditions under which this section applies to an AIA application, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
An invention is made when there is a conception and a reduction to practice. Dunn v. Ragin, 50 USPQ 472, 474 (Bd. Pat. Inter. 1941). Prior art under pre-AIA 35 U.S.C. 102(g) is limited to an invention that is made. In re Katz, 687 F.2d 450, 454, 215 USPQ 14, 17 (CCPA 1982) (the publication of an article, alone, is not deemed a constructive reduction to practice, and therefore its disclosure does not prove that any invention within the meaning of pre-AIA 35 U.S.C. 102(g) has ever been made).
Subject matter under pre-AIA 35 U.S.C. 102(g) is available only if made in this country. Pre-AIA 35 U.S.C. 104. Kondo v. Martel, 220 USPQ 47 (Bd. Pat. Inter. 1983) (acts of conception, reduction to practice and diligence must be demonstrated in this country). Compare Colbert v. Lofdahl, 21 USPQ2d 1068, 1071 (Bd. Pat. App. & Inter. 1991) (“[i]f the invention is reduced to practice in a foreign country and knowledge of the invention was brought into this country and disclosed to others, the inventor can derive no benefit from the work done abroad and such knowledge is merely evidence of conception of the invention”).
In accordance with pre-AIA 35 U.S.C. 102(g)(1), a party involved in an interference proceeding under pre-AIA 35 U.S.C. 135 or 291 may establish a date of invention under pre-AIA 35 U.S.C. 104. Pre-AIA 35 U.S.C. 104, as amended by GATT (Public Law 103-465, 108 Stat. 4809 (1994)) and NAFTA (Public Law 103-182, 107 Stat. 2057 (1993)), provides that an applicant can establish a date of invention in a NAFTA member country on or after December 8, 1993 or in WTO member country other than a NAFTA member country on or after January 1, 1996. Accordingly, an interference count may be won or lost on the basis of establishment of invention by one of the parties in a NAFTA or WTO member country, thereby rendering the subject matter of that count unpatentable to the other party under the principles of res judicata and collateral estoppel, even though such subject matter is not available as statutory prior art under pre-AIA 35 U.S.C. 102(g).
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See MPEP § 2138.01 regarding lost interference counts which are not statutory prior art.
2138.03 “By Another Who Has Not Abandoned, Suppressed, or Concealed It” [R-11.2013]
[Editor Note: This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, MPEP § 2159.03 for the conditions under which this section applies to an AIA application, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
Pre-AIA 35 U.S.C. 102(g) generally makes available as prior art within the meaning of 35 U.S.C. 103, the prior invention of another who has not abandoned, suppressed or concealed it. In re Bass, 474 F.2d 1276, 177 USPQ 178 (CCPA 1973); In re Suska, 589 F.2d 527, 200 USPQ 497 (CCPA 1979) (The result of applying the suppression and concealment doctrine is that the inventor who did not conceal (but was the de facto last inventor) is treated legally as the first to invent, while the de facto first inventor who suppressed or concealed is treated as a later inventor. The de facto first inventor, by his suppression and concealment, lost the right to rely on his actual date of invention not only for priority purposes, but also for purposes of avoiding the invention of the counts as prior art.).
“The courts have consistently held that an invention, though completed, is deemed abandoned, suppressed, or concealed if, within a reasonable time after completion, no steps are taken to make the invention publicly known. Thus failure to file a patent application; to describe the invention in a publicly disseminated document; or to use the invention publicly, have been held to constitute abandonment, suppression, or concealment.” Correge v. Murphy, 705 F.2d 1326, 1330, 217 USPQ 753, 756 (Fed. Cir. 1983) (quoting International Glass Co. v. United States, 408 F.2d 395, 403, 159 USPQ 434, 441 (Ct. Cl. 1968)). In Correge, an invention was actually reduced to practice, 7 months later there was a public disclosure of the invention, and 8 months thereafter
a patent application was filed. The court held filing a patent application within 1 year of a public disclosure is not an unreasonable delay, therefore reasonable diligence must only be shown between the date of the actual reduction to practice and the public disclosure to avoid the inference of abandonment.
I. DURING AN INTERFERENCE PROCEEDING, AN INFERENCE OF SUPPRESSION OR CONCEALMENT MAY ARISE FROM DELAY IN FILING PATENT APPLICATION
Once an invention is actually reduced to practice an inventor need not rush to file a patent application.
Shindelar v. Holdeman, 628 F.2d 1337, 1341, 207 USPQ 112, 116 (CCPA 1980). The length of time taken to file a patent application after an actual reduction to practice is generally of no consequence except in an interference proceeding. Paulik v. Rizkalla, 760 F.2d 1270, 1271, 226 USPQ 225, 226 (Fed. Cir. 1985) (suppression or concealment may be deliberate or may arise due to an inference from a “too long” delay in filing a patent application). Peeler v. Miller, 535 F.2d 647, 656, 190 USPQ
117,124 (CCPA 1976) (“mere delay, without more, is not sufficient to establish suppression or concealment.” “What we are deciding here is that Monsanto’s delay is not ‘merely delay’ and that Monsanto's justification for the delay is inadequate to overcome the inference of suppression created by the excessive delay.” The word “mere” does not imply a total absence of a limit on the duration of delay. Whether any delay is “mere” is decided only on a case-by-case basis.).
Where a junior party in an interference relies upon an actual reduction to practice to demonstrate first inventorship, and where the hiatus in time between the date for the junior party's asserted reduction to practice and the filing of its application is unreasonably long, the hiatus may give rise to an inference that the junior party in fact suppressed or concealed the invention and the junior party will not be allowed to rely upon the earlier actual reduction to practice. Young v. Dworkin, 489 F.2d 1277, 1280 n.3, 180 USPQ 388, 391 n.3 (CCPA 1974) (suppression and concealment issues are to be addressed on a case-by-case basis).
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II. SUPPRESSION OR CONCEALMENT NEED NOT BE ATTRIBUTED TO INVENTOR
Suppression or concealment need not be attributed to the inventor. Peeler v. Miller, 535 F.2d 647, 653-54, 190 USPQ 117, 122 (CCPA 1976) (“four year delay from the time an inventor … completes his work … and the time his assignee-employer files a patent application is, prima facie, unreasonably long in an interference with a party who filed first”);
Shindelar v. Holdeman, 628 F.2d 1337, 1341-42, 207 USPQ 112, 116-17 (CCPA 1980) (A patent attorney’s workload will not preclude a holding of an unreasonable delay—a total of 3 months was identified as possible of excuse in regard to the filing of an application.).
III. INFERENCE OF SUPPRESSION OR CONCEALMENT IS REBUTTABLE
Notwithstanding a finding of suppression or concealment, a constructive reduction to practice such as renewed activity just prior to other party’s entry into field coupled with the diligent filing of an application would still cause the junior party to prevail. Lutzker v. Plet, 843 F.2d 1364, 1367-69, 6 USPQ2d 1370, 1371-72 (Fed. Cir. 1988) (activities directed towards commercialization not sufficient to rebut inference); Holmwood v. Cherpeck, 2 USPQ2d 1942, 1945 (Bd. Pat. App. & Inter. 1986) (the inference of suppression or concealment may be rebutted by showing activity directed to perfecting the invention, preparing the application, or preparing other compounds within the scope of the generic invention); Engelhardt v. Judd, 369 F.2d 408, 411, 151 USPQ 732, 735 (CCPA 1966) (“We recognize that an inventor of a new series of compounds should not be forced to file applications piecemeal on each new member as it is synthesized, identified and tested for utility. A reasonable amount of time should be allowed for completion of the research project on the whole series of new compounds, and a further reasonable time period should then be allowed for drafting and filing the patent application(s) thereon.”); Bogoslowsky v. Huse, 142 F.2d 75, 77, 61 USPQ 349, 351 (CCPA 1944) (The doctrine of suppression and concealment is not applicable to conception without an actual reduction to practice.).
IV. ABANDONMENT
A finding of suppression or concealment may not amount to a finding of abandonment wherein a right to a patent is lost. Steierman v. Connelly, 197 USPQ 288, 289 (Comm'r Pat. 1976); Correge v. Murphy, 705 F.2d 1326, 1329, 217 USPQ 753, 755 (Fed. Cir. 1983) (an invention cannot be abandoned until it is first reduced to practice).
2138.04 “Conception” [R-11.2013]
[Editor Note: This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, MPEP § 2159.03 for the conditions under which this section applies to an AIA application, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
Conception has been defined as “the complete performance of the mental part of the inventive act” and it is “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice….” Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930). “[C]onception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or the exercise of inventive skill.” Hiatt v. Ziegler, 179 USPQ 757, 763 (Bd. Pat. Inter. 1973). Conception has also been defined as a disclosure of an invention which enables one skilled in the art to reduce the invention to a practical form without “exercise of the inventive faculty.” Gunter v. Stream, 573 F.2d 77, 197 USPQ 482 (CCPA 1978). See also Coleman v. Dines, 754 F.2d 353, 224 USPQ 857 (Fed. Cir. 1985) (It is settled that in establishing conception a party must show possession of every feature recited in the count, and that every limitation of the count must have been known to the inventor at the time of the alleged conception. Conception must be proved by corroborating evidence.); Hybritech Inc. v. Monoclonal Antibodies Inc., 802 F. 2d 1367, 1376, 231 USPQ 81, 87 (Fed. Cir. 1986) (Conception is
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the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.”) ; Hitzeman v. Rutter, 243 F.3d 1345, 58 USPQ2d 1161 (Fed. Cir. 2001) (Inventor’s “hope” that a genetically altered yeast would produce antigen particles having the particle size and sedimentation rates recited in the claims did not establish conception, since the inventor did not show that he had a “definite and permanent understanding” as to whether or how, or a reasonable expectation that, the yeast would produce the recited antigen particles.).
I. CONCEPTION MUST BE DONE IN THE MIND OF THE INVENTOR
The inventor must form a definite and permanent idea of the complete and operable invention to establish conception. Bosies v. Benedict, 27 F.3d 539, 543, 30 USPQ2d 1862, 1865 (Fed. Cir. 1994) (Testimony by a noninventor as to the meaning of a variable of a generic compound described in an inventor’s notebook was insufficient as a matter of law to establish the meaning of the variable because the testimony was not probative of what the inventors conceived.).
II. AS LONG AS THE INVENTOR MAINTAINS INTELLECTUAL DOMINATION OVER MAKING THE INVENTION, IDEAS, SUGGESTIONS, AND MATERIALS MAY BE ADOPTED FROM OTHERS
An inventor may consider and adopt ideas, suggestions and materials derived from many sources: a suggestion from an employee, a hired consultant or a friend even if the adopted material proves to be the key that unlocks the problem so long as the inventor “maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting….” Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965); Staehelin v. Secher, 24 USPQ2d 1513, 1522 (Bd. Pat. App. & Inter. 1992) (“evidence of conception naming only one of the actual inventive entity inures to the benefit of and serves as evidence of conception by the complete inventive entity”).
III. CONCEPTION REQUIRES CONTEMPORANEOUS RECOGNITION AND APPRECIATION OF THE INVENTION
There must be a contemporaneous recognition and appreciation of the invention for there to be conception. Silvestri v. Grant, 496 F.2d 593, 596, 181 USPQ 706, 708 (CCPA 1974) (“an accidental and unappreciated duplication of an invention does not defeat the patent right of one who, though later in time was the first to recognize that which constitutes the inventive subject matter”); Invitrogen, Corp. v. Clontech Laboratories, Inc.,
429 F.3d 1052, 1064, 77 USPQ2d 1161, 1169 (Fed. Cir. 2005) (In situations where there is unrecognized accidental duplication, establishing conception requires evidence that the inventor actually made the invention and understood the invention to have the features that comprise the inventive subject matter at issue). Langer v. Kaufman, 465 F.2d 915, 918, 175 USPQ 172, 174 (CCPA 1972) (new form of catalyst was not recognized when it was first produced; conception cannot be established nunc pro tunc). However, an inventor does not need to know that the invention will work for there to be complete conception. Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228, 32 USPQ2d 1915, 1919 (Fed. Cir. 1994) (Draft patent application disclosing treatment of AIDS with AZT reciting dosages, forms, and routes of administration was sufficient to collaborate conception whether or not the inventors believed the inventions would work based on initial screening tests.) Furthermore, the inventor does not need to appreciate the patentability of the invention. Dow Chem. Co. v. Astro-Valcour, Inc., 267 F.3d 1334, 1341, 60 USPQ2d 1519, 1523 (Fed. Cir. 2001).
The first to conceive of a species is not necessarily the first to conceive of the generic invention. In re Jolley, 308 F.3d 1317, 1323 n.2, 64 USPQ2d 1901, 1905 n.2 (Fed. Cir. 2002). Further, while conception of a species within a genus may constitute conception of the genus, conception of one species and the genus may not constitute conception of another species in the genus. Oka v. Youssefyeh, 849 F.2d 581, 7 USPQ2d 1169 (Fed. Cir. 1988) (conception of a chemical requires both the idea of the structure of the chemical and possession of an operative method of making it). See also Amgen v.
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Chugai Pharmaceutical Co., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (in the isolation of a gene, defining a gene by its principal biological property is not sufficient for conception absent an ability to envision the detailed constitution as well as a method for obtaining it); Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1605 (Fed. Cir. 1993) (“[b]efore reduction to practice, conception only of a process for making a substance, without conception of a structural or equivalent definition of that substance, can at most constitute a conception of the substance claimed as a process” but cannot constitute conception of the substance; as “conception is not enablement,” conception of a purified DNA sequence coding for a specific protein by function and a method for its isolation that could be carried out by one of ordinary skill in the art is not conception of that material).
On rare occasions conception and reduction to practice occur simultaneously. Alpert v. Slatin, 305 F.2d 891, 894, 134 USPQ 296, 299 (CCPA 1962). “[I]n some unpredictable areas of chemistry and biology, there is no conception until the invention has been reduced to practice.” MacMillan v. Moffett, 432 F.2d 1237, 1234-40, 167 USPQ 550, 552-553 (CCPA 1970). See also Hitzeman v. Rutter, 243 F.3d 1345, 58 USPQ2d 1161 (Fed. Cir. 2001) (conception simultaneous with reduction to practice where appellant lacked reasonable certainty that yeast’s performance of certain intracellular processes would result in the claimed antigen particles); Dunn v. Ragin, 50 USPQ 472, 475 (Bd. Pat. Inter. 1941) (a new variety of asexually reproduced plant is conceived and reduced to practice when it is grown and recognized as a new variety). Under these circumstances, conception is not complete if subsequent experimentation reveals factual uncertainty which “so undermines the specificity of the inventor’s idea that it is not yet a definite and permanent reflection of the complete invention as it will be used in practice.” Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1229, 32 USPQ2d 1915, 1920 (Fed. Cir. 1994).
IV. A PREVIOUSLY ABANDONED APPLICATION WHICH WAS NOT COPENDING WITH A
SUBSEQUENT APPLICATION IS EVIDENCE ONLY OF CONCEPTION
An abandoned application with which no subsequent application was copending serves to abandon benefit of the application’s filing as a constructive reduction to practice and the abandoned application is evidence only of conception. In re Costello, 717 F.2d 1346, 1350, 219 USPQ 389, 392 (Fed. Cir. 1983).
2138.05 “Reduction to Practice” [R-11.2013]
[Editor Note: This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, MPEP § 2159.03 for the conditions under which this section applies to an AIA application, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
Reduction to practice may be an actual reduction or a constructive reduction to practice which occurs when a patent application on the claimed invention is filed. The filing of a patent application serves as conception and constructive reduction to practice of the subject matter described in the application. Thus the inventor need not provide evidence of either conception or actual reduction to practice when relying on the content of the patent application. Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d
1128, 1130 (Fed. Cir. 1998). A reduction to practice can be done by another on behalf of the inventor. De Solms v. Schoenwald, 15 USPQ2d 1507, 1510
(Bd. Pat. App. & Inter. 1990). “While the filing of the original application theoretically constituted a constructive reduction to practice at the time, the subsequent abandonment of that application also resulted in an abandonment of the benefit of that filing as a constructive reduction to practice. The filing of the original application is, however, evidence of conception of the invention.” In re Costello, 717 F.2d 1346, 1350, 219 USPQ 389, 392 (Fed. Cir. 1983)(The second application was not co-pending with the original application and it did not reference the original application. Because of the requirements of 35 U.S.C. 120 had not been satisfied, the filing of the original application was
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not recognized as constructive reduction to practice of the invention.).
I. CONSTRUCTIVE REDUCTION TO PRACTICE REQUIRES COMPLIANCE WITH 35 U.S.C. 112(a) or PRE-AIA 35 U.S.C. 112, FIRST PARAGRAPH
When a party to an interference seeks the benefit of an earlier-filed U.S. patent application, the earlier application must meet the requirements of 35 U.S.C. 120 and 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for the subject matter of the count. The earlier application must meet the enablement requirement and must contain a written description of the subject matter of the interference count. Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed. Cir. 1998). Proof of a constructive reduction to practice requires sufficient disclosure under the “how to use” and “how to make” requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Kawai v. Metlesics, 480 F.2d 880, 886, 178 USPQ 158, 163 (CCPA 1973) (A constructive reduction to practice is not proven unless the specification discloses a practical utility where one would not be obvious. Prior art which disclosed an anticonvulsant compound which differed from the claimed compound only in the absence of a -CH2- group connecting two functional
groups was not sufficient to establish utility of the claimed compound because the compounds were not so closely related that they could be presumed to have the same utility.). The purpose of the written description requirement is “to ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him.” In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978). The written description must include all of the limitations of the interference count, or the applicant must show that any absent text is necessarily comprehended in the description provided and would have been so understood at the time the patent application was filed. Furthermore, the written description must be sufficient, when the entire specification is considered, such that the “necessary and only reasonable construction” that would be given it by a person skilled in the art is one that clearly supports each positive limitation in the count. Hyatt v. Boone, 146 F.3d at 1354-55, 47 USPQ2d
at 1130-1132 (Fed. Cir. 1998) (The claim could be
read as describing subject matter other than that of the count and thus did not establish that the applicant was in possession of the invention of the count.). See also Bigham v. Godtfredsen, 857 F.2d 1415, 1417, 8 USPQ2d 1266, 1268 (Fed. Cir. 1988) (“[t]he generic term halogen comprehends a limited number of species, and ordinarily constitutes a sufficient written description of the common halogen species,” except where the halogen species are patentably distinct).
II. REQUIREMENTS TO ESTABLISH ACTUAL REDUCTION TO PRACTICE
“In an interference proceeding, a party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the party constructed an embodiment or performed a process that met every element of the interference count, and (2) the embodiment or process operated for its intended purpose.” Eaton v. Evans, 204 F.3d 1094, 1097, 53 USPQ2d 1696, 1698 (Fed. Cir. 2000).
The same evidence sufficient for a constructive reduction to practice may be insufficient to establish an actual reduction to practice, which requires a showing of the invention in a physical or tangible form that shows every element of the count. Wetmore v. Quick, 536 F.2d 937, 942, 190 USPQ
223, 227 (CCPA 1976). For an actual reduction to practice, the invention must have been sufficiently tested to demonstrate that it will work for its intended purpose, but it need not be in a commercially satisfactory stage of development. See, e.g., Scott v. Finney, 34 F.3d 1058, 1062, 32 USPQ2d 1115, 1118-19 (Fed. Cir. 1994) (citing numerous cases wherein the character of the testing necessary to support an actual reduction to practice varied with the complexity of the invention and the problem it solved). If a device is so simple, and its purpose and efficacy so obvious, construction alone is sufficient to demonstrate workability. King Instrument Corp. v. Otari Corp., 767 F.2d 853, 860, 226 USPQ 402, 407 (Fed. Cir. 1985).
For additional cases pertaining to the requirements necessary to establish actual reduction to practice see DSL Dynamic Sciences, Ltd. v. Union Switch & Signal, Inc., 928 F.2d 1122, 1126, 18 USPQ2d 1152, 1155 (Fed. Cir. 1991) (“events occurring after an
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alleged actual reduction to practice can call into question whether reduction to practice has in fact occurred”); Fitzgerald v. Arbib, 268 F.2d 763, 765-66, 122 USPQ 530, 531-32 (CCPA 1959) (“the reduction to practice of a three-dimensional design invention requires the production of an article embodying that design” in “other than a mere drawing”); Birmingham v. Randall, 171 F.2d 957, 80 USPQ 371, 372 (CCPA 1948) (To establish an actual reduction to practice of an invention directed to a method of making a product, it is not enough to show that the method was performed. “[S]uch an invention is not reduced to practice until it is established that the product made by the process is satisfactory, and [ ] this may require successful testing of the product.”).
III. TESTING REQUIRED TO ESTABLISH AN ACTUAL REDUCTION TO PRACTICE
“The nature of testing which is required to establish a reduction to practice depends on the particular facts of each case, especially the nature of the invention.” Gellert v. Wanberg, 495 F.2d 779, 783, 181 USPQ
648, 652 (CCPA 1974) (“an invention may be tested sufficiently … where less than all of the conditions of actual use are duplicated by the tests”); Wells v. Fremont, 177 USPQ 22, 24-5 (Bd. Pat. Inter. 1972) (“even where tests are conducted under ‘bench’ or laboratory conditions, those conditions must ‘fully duplicate each and every condition of actual use’ or if they do not, then the evidence must establish a relationship between the subject matter, the test condition and the intended functional setting of the invention,” but it is not required that all the conditions of all actual uses be duplicated, such as rain, snow, mud, dust and submersion in water).
IV. REDUCTION TO PRACTICE REQUIRES RECOGNITION AND APPRECIATION OF THE INVENTION
The invention must be recognized and appreciated for a reduction to practice to occur. “The rule that conception and reduction to practice cannot be established nunc pro tunc simply requires that in order for an experiment to constitute an actual reduction to practice, there must have been contemporaneous appreciation of the invention at issue by the inventor…. Subsequent testing or later
recognition may not be used to show that a party had contemporaneous appreciation of the invention. However, evidence of subsequent testing may be admitted for the purpose of showing that an embodiment was produced and that it met the limitations of the count.” Cooper v. Goldfarb, 154 F.3d 1321, 1331, 47 USPQ2d 1896, 1904 (Fed. Cir. 1998) (citations omitted). Meitzner v. Corte, 537 F.2d 524, 528, 190 USPQ 407, 410 (CCPA 1976) (there can be no conception or reduction to practice of a new form or of a process using such a new form of an otherwise old composition where there has been no recognition or appreciation of the existence of the new form); Estee Lauder, Inc. v. L’Oreal S.A., 129 F.3d 588, 593, 44 USPQ2d 1610, 1615 (Fed. Cir. 1997) (“[W]hen testing is necessary to establish utility, there must be recognition and appreciation that the tests were successful for reduction to practice to occur.” A showing that testing was completed before the critical date, and that testing ultimately proved successful, was held insufficient to establish a reduction to practice before the critical date, since the success of the testing was not appreciated or recognized until after the critical date.); Parker v. Frilette, 462 F.2d 544, 547, 174 USPQ 321, 324 (CCPA 1972) (“[an] inventor need not understand precisely why his invention works in order to achieve an actual reduction to practice”).
V. RECOGNITION OF THE INVENTION BY ANOTHER MAY INURE TO THE BENEFIT OF THE INVENTOR
“Inurement involves a claim by an inventor that, as a matter of law, the acts of another person should accrue to the benefit of the inventor.” Cooper v. Goldfarb, 154 F.3d 1321, 1331, 47 USPQ2d 1896, 1904 (Fed. Cir. 1998). Before a non-inventor’s recognition of the utility of the invention can inure to the benefit of the inventor, the following three-prong test must be met: (1) the inventor must have conceived of the invention, (2) the inventor must have had an expectation that the embodiment tested would work for the intended purpose of the invention, and (3) the inventor must have submitted the embodiment for testing for the intended purpose of the invention. Genentech Inc. v. Chiron Corp., 220 F.3d 1345, 1354, 55 USPQ2d 1636, 1643 (Fed. Cir. 2000). In Genentech, a non-inventor hired by the inventors to test yeast samples for the presence
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of the fusion protein encoded by the DNA construct of the invention recognized the growth-enhancing property of the fusion protein, but did not communicate this recognition to the inventors. The court found that because the inventors did not submit the samples for testing growth-promoting activity, the intended purpose of the invention, the third prong was not satisfied and the uncommunicated recognition of the activity of the fusion protein by the non-inventor did not inure to their benefit. See also Cooper v. Goldfarb, 240 F.3d 1378, 1385, 57 USPQ2d 1990, 1995 (Fed. Cir. 2001) (Cooper sent to Goldfarb samples of a material for use in vascular grafts. At the time the samples were sent, Cooper was unaware of the importance of the fibril length of the material. Cooper did not at any time later convey to, or request from, Goldfarb any information regarding fibril length. Therefore, Goldfarb’s determination of the fibril lengths of the material could not inure to Cooper’s benefit.).
VI. IN AN INTERFERENCE PROCEEDING, ALL LIMITATIONS OFA COUNT MUST BE REDUCED TO PRACTICE
The device reduced to practice must include every limitation of the count. Fredkin v. Irasek, 397 F.2d 342, 158 USPQ 280, 285 (CCPA 1968); every limitation in a count is material and must be proved to establish an actual reduction to practice. Meitzner v. Corte, 537 F.2d 524, 528, 190 USPQ 407, 410. See also Hull v. Bonis, 214 USPQ 731, 734 (Bd. Pat. Inter. 1982) (no doctrine of equivalents—remedy is a preliminary motion to amend the count to conform to the proofs).
VII. CLAIMED INVENTION IS NOT ACTUALLY REDUCED TO PRACTICE UNLESS THERE IS A KNOWN UTILITY
Utility for the invention must be known at the time of the reduction to practice. Wiesner v. Weigert, 666 F.2d 582, 588, 212 USPQ 721, 726 (CCPA 1981) (except for plant and design inventions); Azar v. Burns, 188 USPQ 601, 604 (Bd. Pat. Inter. 1975) (a composition and a method cannot be actually reduced to practice unless the composition and the product produced by the method have a practical utility); Ciric v. Flanigen, 511 F.2d 1182, 1185, 185 USPQ 103, 105-6 (CCPA 1975) (“when a count
does not recite any particular utility, evidence establishing a substantial utility for any purpose is sufficient to prove a reduction to practice”; “the demonstrated similarity of ion exchange and adsorptive properties between the newly discovered zeolites and known crystalline zeolites … have established utility for the zeolites of the count”); Engelhardt v. Judd, 369 F.2d 408, 411, 151 USPQ
732, 735 (CCPA 1966) (When considering an actual reduction to practice as a bar to patentability for claims to compounds, it is sufficient to successfully demonstrate utility of the compounds in animals for somewhat different pharmaceutical purposes than those asserted in the specification for humans.); Rey-Bellet v. Engelhardt, 993 F.2d 1380, 1384, 181 USPQ 453, 455 (CCPA 1974) (Two categories of tests on laboratory animals have been considered adequate to show utility and reduction to practice: first, tests carried out to prove utility in humans where there is a satisfactory correlation between humans and animals, and second, tests carried out to prove utility for treating animals.).
VIII. A PROBABLE UTILITY MAY NOT BE SUFFICIENT TO ESTABLISH UTILITY
A probable utility does not establish a practical utility, which is established by actual testing or where the utility can be “foretold with certainty.” Bindra v. Kelly, 206 USPQ 570, 575 (Bd. Pat. Inter. 1979) (Reduction to practice was not established for an intermediate useful in the preparation of a second intermediate with a known utility in the preparation of a pharmaceutical. The record established there was a high degree of probability of a successful preparation because one skilled in the art may have been motivated, in the sense of 35 U.S.C. 103, to prepare the second intermediate from the first intermediate. However, a strong probability of utility is not sufficient to establish practical utility.); Wu v. Jucker, 167 USPQ 467, 472 (Bd. Pat. Inter. 1968) (screening test where there was an indication of possible utility is insufficient to establish practical utility). But see Nelson v. Bowler, 628 F.2d 853, 858, 206 USPQ 881, 885 (CCPA 1980) (Relevant evidence is judged as a whole for its persuasiveness in linking observed properties to suggested uses.
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Reasonable correlation between the two is sufficient for an actual reduction to practice.).
2138.06 “Reasonable Diligence” [R-11.2013]
[Editor Note: This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, MPEP § 2159.03 for the conditions under which this section applies to an AIA application, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
The diligence of pre-AIA 35 U.S.C. 102(g) relates to reasonable “attorney-diligence” and “engineering-diligence” (Keizer v. Bradley, 270 F.2d 396, 397, 123 USPQ 215, 216 (CCPA 1959)), which does not require that “an inventor or his attorney … drop all other work and concentrate on the particular invention involved….” Emery v. Ronden, 188 USPQ 264, 268 (Bd. Pat. Inter. 1974).
I. CRITICAL PERIOD FOR ESTABLISHING DILIGENCE BETWEEN ONE WHO WAS FIRST TO CONCEIVE BUT LATER TO REDUCE TO PRACTICE THE INVENTION
The critical period for diligence for a first conceiver but second reducer begins not at the time of conception of the first conceiver but just prior to the entry in the field of the party who was first to reduce to practice and continues until the first conceiver reduces to practice. Hull v. Davenport, 90 F.2d 103, 105, 33 USPQ 506, 508 (CCPA 1937) (“lack of diligence from the time of conception to the time immediately preceding the conception date of the second conceiver is not regarded as of importance except as it may have a bearing upon his subsequent acts”). What serves as the entry date into the field of a first reducer is dependent upon what is being relied on by the first reducer, e.g., conception plus reasonable diligence to reduction to practice (Fritsch v. Lin, 21 USPQ2d 1731, 1734 (Bd. Pat. App. & Inter. 1991), Emery v. Ronden, 188 USPQ 264, 268 (Bd. Pat. Inter. 1974)); an actual reduction to practice or a constructive reduction to practice by the filing of either a U.S. application (Rebstock v. Flouret,
191 USPQ 342, 345 (Bd. Pat. Inter. 1975)) or reliance upon priority under 35 U.S.C. 119 of a foreign application (Justus v. Appenzeller, 177 USPQ 332, 339 (Bd. Pat. Inter. 1971) (chain of priorities under 35 U.S.C. 119 and 120, priority under 35 U.S.C. 119 denied for failure to supply certified copy of the foreign application during pendency of the application filed within the twelfth month)).
II. THE ENTIRE PERIOD DURING WHICH DILIGENCE IS REQUIRED MUST BE ACCOUNTED FOR BY EITHER AFFIRMATIVE ACTS OR ACCEPTABLE EXCUSES
An applicant must account for the entire period during which diligence is required. Gould v. Schawlow, 363 F.2d 908, 919, 150 USPQ 634, 643 (CCPA 1966) (Merely stating that there were no weeks or months that the invention was not worked on is not enough.); In re Harry, 333 F.2d 920, 923, 142 USPQ 164, 166 (CCPA 1964) (statement that the subject matter “was diligently reduced to practice” is not a showing but a mere pleading). A 2-day period lacking activity has been held to be fatal. In re Mulder, 716 F.2d 1542, 1545, 219 USPQ 189, 193 (Fed. Cir. 1983) (37 CFR 1.131 issue); Fitzgerald v. Arbib, 268 F.2d 763, 766, 122 USPQ
530, 532 (CCPA 1959) (Less than 1 month of inactivity during critical period. Efforts to exploit an invention commercially do not constitute diligence in reducing it to practice. An actual reduction to practice in the case of a design for a three-dimensional article requires that it should be embodied in some structure other than a mere drawing.); Kendall v. Searles, 173 F.2d 986, 993, 81 USPQ 363, 369 (CCPA 1949) (Diligence requires that applicants must be specific as to dates and facts.).
The period during which diligence is required must be accounted for by either affirmative acts or acceptable excuses. Rebstock v. Flouret, 191 USPQ 342, 345 (Bd. Pat. Inter. 1975); Rieser v. Williams, 225 F.2d 419, 423, 118 USPQ 96, 100 (CCPA 1958) (Being last to reduce to practice, party cannot prevail unless he has shown that he was first to conceive and that he exercised reasonable diligence during the critical period from just prior to opponent’s entry into the field); Griffith v. Kanamaru, 816 F.2d 624,
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2 USPQ2d 1361 (Fed. Cir. 1987) (Court generally reviewed cases on excuses for inactivity including vacation extended by ill health and daily job demands, and held lack of university funding and personnel are not acceptable excuses.); Litchfield v. Eigen, 535 F.2d 72, 190 USPQ 113 (CCPA 1976) (budgetary limits and availability of animals for testing not sufficiently described); Morway v. Bondi, 203 F.2d 741, 749, 97 USPQ 318, 323 (CCPA 1953) (voluntarily laying aside inventive concept in pursuit of other projects is generally not an acceptable excuse although there may be circumstances creating exceptions); Anderson v. Crowther, 152 USPQ 504, 512 (Bd. Pat. Inter. 1965) (preparation of routine periodic reports covering all accomplishments of the laboratory insufficient to show diligence); Wu v. Jucker, 167 USPQ 467, 472-73 (Bd. Pat. Inter. 1968) (applicant improperly allowed test data sheets to accumulate to a sufficient amount to justify interfering with equipment then in use on another project); Tucker v. Natta, 171 USPQ 494,498 (Bd. Pat. Inter. 1971) (“[a]ctivity directed toward the reduction to practice of a genus does not establish,
prima facie, diligence toward the reduction to practice of a species embraced by said genus”); Justus v. Appenzeller, 177 USPQ 332, 340-1 (Bd.
Pat. Inter. 1971) (Although it is possible that patentee could have reduced the invention to practice in a shorter time by relying on stock items rather than by designing a particular piece of hardware, patentee exercised reasonable diligence to secure the required hardware to actually reduce the invention to practice. “[I]n deciding the question of diligence it is immaterial that the inventor may not have taken the expeditious course….”).
III. WORK RELIED UPON TO SHOW REASONABLE DILIGENCE MUST BE DIRECTLY RELATED TO THE REDUCTION TO PRACTICE
The work relied upon to show reasonable diligence must be directly related to the reduction to practice of the invention in issue. Naber v. Cricchi, 567 F.2d 382, 384, 196 USPQ 294, 296 (CCPA 1977), cert. denied, 439 U.S. 826 (1978). See also Scott v. Koyama, 281 F.3d 1243, 1248-49, 61 USPQ2d 1856, 1859 (Fed. Cir. 2002) (Activities directed at building a plant to practice the claimed process of producing tetrafluoroethane on a large scale constituted efforts toward actual reduction to practice, and thus
were evidence of diligence. The court distinguished cases where diligence was not found because inventors either discontinued development or failed to complete the invention while pursuing financing or other commercial activity.); In re Jolley, 308 F.3d 1317, 1326-27, 64 USPQ2d 1901, 1908-09 (Fed. Cir. 2002) (diligence found based on research and procurement activities related to the subject matter of the interference count). “[U]nder some circumstances an inventor should also be able to rely on work on closely related inventions as support for diligence toward the reduction to practice on an invention in issue.” Ginos v. Nedelec, 220 USPQ 831, 836 (Bd. Pat. Inter. 1983) (work on other closely related compounds that were considered to be part of the same invention and which were included as part of a grandparent application). “The work relied upon must be directed to attaining a reduction to practice of the subject matter of the counts. It is not sufficient that the activity relied on concerns related subject matter.” Gunn v. Bosch, 181 USPQ 758, 761 (Bd. Pat. Inter. 1973) (An actual reduction to practice of the invention at issue which occurred when the inventor was working on a different invention “was fortuitous, and not the result of a continuous intent or effort to reduce to practice the invention here in issue. Such fortuitousness is inconsistent with the exercise of diligence toward reduction to practice of that invention.” 181 USPQ at 761. Furthermore, evidence drawn towards work on improvement of samples or specimens generally already in use at the time of conception that are but one element of the oscillator circuit of the count does not show diligence towards the construction and testing of the overall combination.); Broos v. Barton, 142 F.2d 690, 691, 61 USPQ 447, 448 (CCPA 1944) (preparation of application in U.S. for foreign filing constitutes diligence); De Solms v. Schoenwald, 15 USPQ2d 1507 (Bd. Pat. App. & Inter. 1990) (principles of diligence must be given to inventor’s circumstances including skill and time; requirement of corroboration applies only to testimony of inventor); Huelster v. Reiter, 168 F.2d 542, 78 USPQ 82 (CCPA 1948) (if inventor was not able to make an actual reduction to practice of the invention, he must also show why he was not able to constructively reduce the invention to practice by the filing of an application).
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IV. DILIGENCE REQUIRED IN PREPARING AND FILING PATENT APPLICATION
The diligence of attorney in preparing and filing patent application inures to the benefit of the inventor. Conception was established at least as early as the date a draft of a patent application was finished by a patent attorney on behalf of the inventor. Conception is less a matter of signature than it is one of disclosure. Attorney does not prepare a patent application on behalf of particular named persons, but on behalf of the true inventive entity. Six days to execute and file application is acceptable. Haskell v. Coleburne, 671 F.2d 1362, 213 USPQ
192, 195 (CCPA 1982). See also Bey v. Kollonitsch, 866 F.2d 1024, 231 USPQ 967 (Fed. Cir. 1986) (Reasonable diligence is all that is required of the attorney. Reasonable diligence is established if attorney worked reasonably hard on the application during the continuous critical period. If the attorney has a reasonable backlog of unrelated cases which he takes up in chronological order and carries out expeditiously, that is sufficient. Work on a related case(s) that contributed substantially to the ultimate preparation of an application can be credited as diligence.).
V. END OF DILIGENCE PERIOD IS MARKED BY EITHER ACTUAL OR CONSTRUCTIVE REDUCTION TO PRACTICE
“[I]t is of no moment that the end of that period [for diligence] is fixed by a constructive, rather than an actual, reduction to practice.” Justus v. Appenzeller, 177 USPQ 332, 340-41 (Bd. Pat. Inter. 1971).
2139 -2140 [Reserved]
2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 [R-07.2015]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time of the invention," which is only applicable to applications subject to
pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Pre-AIA 35 U.S.C. 103 Conditions for patentability; nonobvious subject matter
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
*****
EXAMINATION GUIDELINES FOR DETERMINING OBVIOUSNESS UNDER 35 U.S.C. 103
These guidelines are intended to assist Office personnel to make a proper determination of obviousness under 35 U.S.C. 103, and to provide an appropriate supporting rationale in view of the recent decision by the Supreme Court in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). The guidelines are based on the Office’s current understanding of the law, and are believed to be fully consistent with the binding precedent of the Supreme Court. The KSR decision reinforced earlier decisions that validated a more flexible approach to providing reasons for obviousness. However, the Supreme Court’s pronouncement in KSR overruled cases such as In re Lee, 277 F.3d 1338, 61 USPQ2d 1430 (Fed. Cir. 2002), insofar as those cases require record evidence of an express reason to modify the prior art. As the Federal Circuit has explained:
At the time [of the decision in In re Lee], we required the PTO to identify record evidence
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of a teaching, suggestion, or motivation to combine references because “[o]mission of a relevant factor required by precedent is both legal error and arbitrary agency action.” However, this did not preclude examiners from employing common sense. More recently [in DyStar Textilfarben GmbH v. C.H. Patrick
Co., 464 F.3d 1356, 1366 (Fed.Cir. 2006)], we explained that use of common sense does not require a “specific hint or suggestion in a particular reference,” only a reasoned explanation that avoids conclusory generalizations.
Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329, 92 USPQ2d 1849, 1854 (Fed. Cir. 2009) (citations omitted).
These guidelines do not constitute substantive rule making and hence do not have the force and effect of law. They have been developed as a matter of internal Office management and are not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office. Rejections will continue to be based upon the substantive law, and it is these rejections that are appealable. Consequently, any failure by Office personnel to follow the guidelines is neither appealable nor petitionable.
I. THE KSR DECISIONAND PRINCIPLES OF THE LAW OF OBVIOUSNESS
The Supreme Court in KSR reaffirmed the familiar framework for determining obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), but stated that the Federal Circuit h a d e r r e d b y a p p l y i n g t h e teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic way. KSR, 550 U.S. at 404, 82 USPQ2d at 1391. Specifically, the Supreme Court stated that the Federal Circuit had erred in four ways: (1) “by holding that courts and patent examiners should look only to the problem the patentee was trying to solve ” (Id. at 420, 82 USPQ2d at 1397); (2) by assuming “that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem” (Id.); (3) by concluding “that a patent claim cannot be proved obvious merely
by showing that the combination of elements was ‘obvious to try’” (Id. at 421, USPQ2d at 1397); and (4) by overemphasizing “the risk of courts and patent examiners falling prey to hindsight bias” and as a result applying “[r]igid preventative rules that deny factfinders recourse to common sense” (Id.).
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” Id. at 415, 82 USPQ2d at 1395, and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 415-16, 82 USPQ2d at 1395. The Supreme Court stated that there are “[t]hree cases decided after Graham [that] illustrate this doctrine.” Id. at 416,
82 USPQ2d at 1395. (1) “In United States v. Adams, . . . [t]he Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” Id. (2) “In Anderson’s-Black Rock, Inc. v. Pavement Salvage
Co., . . . [t]he two [pre-existing elements] in combination did no more than they would in separate, sequential operation.” Id. at 416-17, 82 USPQ2d at 1395. (3) “[I]n Sakraida v. AG Pro, Inc., the Court derived . . . the conclusion that when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” Id. at 417, 82 USPQ2d at 1395-96 (Internal quotations omitted.). The principles underlining these cases are instructive when the question is whether a patent application claiming the combination of elements of prior art would have been obvious. The Supreme Court further stated that:
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used
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to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. at 417, 82 USPQ2d at 1396.
When considering obviousness of a combination of known elements, the operative question is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id.
The Supreme Court’s flexible approach to the obviousness inquiry is reflected in numerous pre- KSR decisions; see MPEP § 2144. That section provides many lines of reasoning to support a determination of obviousness based upon earlier legal precedent that had condoned the use of particular examples of what may be considered common sense or ordinary routine practice (e.g., making integral, changes in shape, making adjustable). Thus, the type of reasoning sanctioned by the opinion in KSR has long been part of the patent examination process.
II. THE BASIC FACTUAL INQUIRES OF GRAHAM v. JOHN DEERE CO.
An invention that would have been obvious to a person of ordinary skill at the time of the invention is not patentable. See 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a). As reiterated by the Supreme Court in KSR, the framework for the objective analysis for determining obviousness under 35 U.S.C. 103 is stated in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows:
(A) Determining the scope and content of the prior art; and
(B) Ascertaining the differences between the claimed invention and the prior art; and
(C) Resolving the level of ordinary skill in the pertinent art.
Objective evidence relevant to the issue of obviousness must be evaluated by Office personnel. Id. at 17-18, 148 USPQ at 467. Such evidence,
sometimes referred to as “secondary considerations,” may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results. The evidence may be included in the specification as filed, accompany the application on filing, or be provided in a timely manner at some other point during the prosecution. The weight to be given any objective evidence is made on a case-by-case basis. The mere fact that an applicant has presented evidence does not mean that the evidence is dispositive of the issue of obviousness.
The question of obviousness must be resolved on the basis of the factual inquiries set forth above. While each case is different and must be decided on its own facts, the Graham factors, including secondary considerations when present, are the controlling inquiries in any obviousness analysis. The Graham factors were reaffirmed and relied upon by the Supreme Court in its consideration and determination of obviousness in the fact situation presented in KSR, 550 U.S. at 406-07, 82 USPQ2d at 1391 (2007). The Supreme Court has utilized the Graham factors in each of its obviousness decisions since Graham. See Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied, 426 U.S. 955 (1976); Dann v. Johnston, 425 U.S. 219, 189 USPQ 257 (1976); and Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 163 USPQ 673 (1969). As stated by the Supreme Court in KSR, “While the sequence of these questions might be reordered in any particular case, the [ Graham] factors continue to define the inquiry that controls.” KSR, 550 U.S. at 407, 82 USPQ2d at 1391.
Office Personnel As Factfinders
Office personnel fulfill the critical role of factfinder when resolving the Graham inquiries. It must be remembered that while the ultimate determination of obviousness is a legal conclusion, the underlying Graham inquiries are factual. When making an
obviousness rejection, Office personnel must therefore ensure that the written record includes findings of fact concerning the state of the art and the teachings of the references applied. In certain
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circumstances, it may also be important to include explicit findings as to how a person of ordinary skill would have understood prior art teachings, or what a person of ordinary skill would have known or could have done. Factual findings made by Office personnel are the necessary underpinnings to establish obviousness.
Once the findings of fact are articulated, Office personnel must provide an explanation to support an obviousness rejection under 35 U.S.C. 103. 35 U.S.C. 132 requires that the applicant be notified of the reasons for the rejection of the claim so that he or she can decide how best to proceed. Clearly setting forth findings of fact and the rationale(s) to support a rejection in an Office action leads to the prompt resolution of issues pertinent to patentability.
In short, the focus when making a determination of obviousness should be on what a person of ordinary skill in the pertinent art would have known at the time of the invention, and on what such a person would have reasonably expected to have been able to do in view of that knowledge. This is so regardless of whether the source of that knowledge and ability was documentary prior art, general knowledge in the art, or common sense. What follows is a discussion of the Graham factual inquiries.
A. Determining the Scope and Content of the Prior Art
In determining the scope and content of the prior art, Office personnel must first obtain a thorough understanding of the invention disclosed and claimed in the application under examination by reading the specification, including the claims, to understand what the applicant has invented. See MPEP § 904. The scope of the claimed invention must be clearly determined by giving the claims the “broadest reasonable interpretation consistent with the specification.” See Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) and MPEP § 2111. Once the scope of the claimed invention is determined, Office personnel must then determine what to search for and where to search.
1. What To Search For:
The search should cover the claimed subject matter and should also cover the disclosed features which
might reasonably be expected to be claimed. See MPEP § 904.02. Although a rejection need not be based on a teaching or suggestion to combine, a preferred search will be directed to finding references that provide such a teaching or suggestion if they exist.
2. Where To Search:
Office personnel should continue to follow the general search guidelines set forth in MPEP § 904 to § 904.03 regarding search of the prior art. Office personnel are reminded that, for purposes of 35 U.S.C. 103, prior art can be either in the field of applicant’s endeavor or be reasonably pertinent to the particular problem with which the applicant was concerned. See MPEP § 2141.01(a) for a discussion of analogous art. Furthermore, prior art that is in a field of endeavor other than that of the applicant (as noted by the Court in KSR, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one,” 550 U.S. at 417, 82 USPQ2d at 1396 (emphasis added)), or solves a problem which is different from that which the applicant was trying to solve, may also be considered for the purposes of 35 U.S.C. 103. (The Court in KSR stated that “[t]he first error…in this case was…holding that courts and patent examiners should look only to the problem the patentee was trying to solve. The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent’s subject matter…The second error [was]…that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem.” 550 U.S. at 420, 82 USPQ2d at 1397. Federal Circuit case law prior to the Supreme Court’s decision in KSR is generally in accord with these statements by the KSR Court. See e.g., In re Dillon, 919 F.2d 688,
693, 16 USPQ2d 1897, 1902 (Fed. Cir. 1990) (en banc) (“[I]t is not necessary in order to establish a
prima facie case of obviousness that both a structural similarity between a claimed and prior art compound (or a key component of a composition) be shown and that there be a suggestion in or expectation from the prior art that the claimed compound or composition will have the same or a similar utility as one newly discovered by
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applicant”) (emphasis added); In re Lintner, 458 F.2d 1013, 1018, 173 USPQ 560, 562 (CCPA 1972) (“The fact that [applicant] uses sugar for a different purpose does not alter the conclusion that its use in a prior art composition would be prima facie obvious from the purpose disclosed in the references.”).
For a discussion of what constitutes prior art, see MPEP § 901 to § 901.06(d) and § 2121 to § 2129. See MPEP § 2141.01(a) for a discussion of analogous art.
B. Ascertaining the Differences Between the Claimed Invention and the Prior Art
Ascertaining the differences between the claimed invention and the prior art requires interpreting the claim language, see MPEP § 2111, and considering both the invention and the prior art as a whole. See MPEP § 2141.02.
C. Resolving the Level of Ordinary Skill in the Art
Any obviousness rejection should include, either explicitly or implicitly in view of the prior art applied, an indication of the level of ordinary skill. A finding as to the level of ordinary skill may be used as a partial basis for a resolution of the issue of obviousness.
The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. Factors that may be considered in determining the level of ordinary skill in the art may include: (1) “type of problems encountered in the art;” (2) “prior art solutions to those problems;” (3) “rapidity with which innovations are made;” (4) “sophistication of the technology; and” (5) “educational level of active workers in the field." In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995). "In a given case, every factor may not be present, and one or more factors may predominate.” Id. See also Custom Accessories, Inc. v. Jeffrey-Allan Indust.,
Inc., 807 F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir. 1986); Environmental Designs, Ltd. V. Union Oil Co., 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983).
“A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396.
In addition to the factors above, Office personnel may rely on their own technical expertise to describe the knowledge and skills of a person of ordinary skill in the art. The Federal Circuit has stated that examiners and administrative patent judges on the Board are “persons of scientific competence in the fields in which they work” and that their findings are “informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art.” In re Berg, 320 F.3d 1310, 1315, 65 USPQ2d 2003, 2007 (Fed. Cir. 2003). In addition, examiners “are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art .” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 86 USPQ2d 1385 (Fed. Cir. 2008) (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1360, 220 USPQ 763, 770 (Fed. Cir. 1984). See MPEP § 2141 for a discussion of the level of ordinary skill.
III. RATIONALES TO SUPPORT REJECTIONS UNDER 35 U.S.C. 103
Once the Graham factual inquiries are resolved, Office personnel must determine whether the claimed invention would have been obvious to one of ordinary skill in the art.
The obviousness analysis cannot be confined by . . . overemphasis on the importance of published articles and the explicit content of issued patents. . . . . In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. KSR, 550 U.S. at 419, 82 USPQ2d at 1396.
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Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The prior art reference (or references when combined) need not teach or suggest all the claim limitations, however, Office personnel must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art. The “mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness.” Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976). The gap between the prior art and the claimed invention may not be “so great as to render the [claim] nonobvious to one reasonably skilled in the art.” Id . In determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls. The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts. See 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a). Factors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap. The rationales discussed below outline reasoning that may be applied to find obviousness in such cases.
If the search of the prior art and the resolution of the Graham factual inquiries reveal that an obviousness rejection may be made using the familiar teaching-suggestion-motivation (TSM) rationale, then such a rejection should be made. Although the Supreme Court in KSR cautioned against an overly rigid application of TSM, it also recognized that TSM was one of a number of valid rationales that could be used to determine obviousness. (According to the Supreme Court, establishment of the TSM approach to the question of obviousness “captured a helpful insight.” 550 U.S. at 418, 82 USPQ2d at 1396 (citing In re Bergel, 292 F.2d 955, 956-57, 130 USPQ 206, 207-208 (1961)). Furthermore, the Court explained that “[t]here is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis.” 550 U.S. at 419, 82 USPQ2d at 1396. The Supreme Court also commented that the Federal Circuit “no doubt has applied the test in accord with these principles [set forth in KSR] in many cases.” Id. Office personnel should also consider whether one or more of the
other rationales set forth below support a conclusion of obviousness. The Court in KSR identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. KSR, 550 U.S. at 415-21, 82 USPQ2d at 1395-97. Note that the list of rationales provided below is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that “‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine
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prior art reference teachings to arrive at the claimed invention.
See MPEP § 2143 for a discussion of the rationales listed above along with examples illustrating how the cited rationales may be used to support a finding of obviousness. See also MPEP § 2144 - § 2144.09 for additional guidance regarding support for obviousness determinations.
IV. APPLICANT’S REPLY
Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, the burden then shifts to the applicant to (A) show that the Office erred in these findings or (B) provide other evidence to show that the claimed subject matter would have been nonobvious. 37 CFR 1.111(b) requires applicant to distinctly and specifically point out the supposed errors in the Office’s action and reply to every ground of objection and rejection in the Office action. The reply must present arguments pointing out the specific distinction believed to render the claims patentable over any applied references.
If an applicant disagrees with any factual findings by the Office, an effective traverse of a rejection based wholly or partially on such findings must include a reasoned statement explaining why the applicant believes the Office has erred substantively as to the factual findings. A mere statement or argument that the Office has not established a prima facie case of obviousness or that the Office’s reliance on common knowledge is unsupported by documentary evidence will not be considered substantively adequate to rebut the rejection or an effective traverse of the rejection under 37 CFR 1.111(b). Office personnel addressing this situation may repeat the rejection made in the prior Office action and make the next Office action final. See MPEP § 706.07(a).
V. CONSIDERATION OF APPLICANT’S REBUTTAL EVIDENCE
Office personnel should consider all rebuttal evidence that is timely presented by the applicants when reevaluating any obviousness determination. Rebuttal evidence may include evidence of “secondary considerations,” such as “commercial
success, long felt but unsolved needs, [and] failure of others” (Graham v. John Deere Co., 383 U.S. at 17, 148 USPQ at 467), and may also include evidence of unexpected results. As set forth above, Office personnel must articulate findings of fact that support the rationale relied upon in an obviousness rejection. As a result, applicants are likely to submit evidence to rebut the fact finding made by Office personnel. For example, in the case of a claim to a combination, applicants may submit evidence or argument to demonstrate that:
(A) one of ordinary skill in the art could not have combined the claimed elements by known methods (e.g., due to technological difficulties);
(B) the elements in combination do not merely perform the function that each element performs separately; or
(C) the results of the claimed combination were unexpected.
Once the applicant has presented rebuttal evidence, Office personnel should reconsider any initial obviousness determination in view of the entire record. See, e.g., In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re Eli Lilly & Co., 90 F.2d 943, 945, 14 USPQ2d 1741, 1743 (Fed. Cir. 1990). All the rejections of record and proposed rejections and their bases should be reviewed to confirm their continued viability. The Office action should clearly communicate the Office’s findings and conclusions, articulating how the conclusions are supported by the findings. The procedures set forth in MPEP § 706.07(a) are to be followed in determining whether an action may be made final.
See MPEP § 2145 concerning consideration of applicant’s rebuttal evidence. See also MPEP § 716 to § 716.10 regarding affidavits or declarations filed under 37 CFR 1.132 for purposes of traversing grounds of rejection.
2141.01 Scope and Content of the Prior Art [R-11.2013]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed
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invention instead of the "time the invention was made," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
I. PRIOR ART AVAILABLE UNDER 35 U.S.C. 102 IS AVAILABLE UNDER 35 U.S.C. 103
“Before answering Graham’s ‘content’ inquiry, it must be known whether a patent or publication is in the prior art under 35 U.S.C. § 102.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987). Subject matter that is prior art under 35 U.S.C. 102 can be used to support a rejection under section 103. Ex parte Andresen, 212 USPQ 100, 102 (Bd. Pat. App. & Inter. 1981) (“it appears to us that the commentator [of 35 U.S.C.A.] and the [congressional] committee viewed section 103 as including all of the various bars to a patent as set forth in section 102.”).
Furthermore, admitted prior art can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988). See MPEP § 2129 for discussion of admissions as prior art.
A 35 U.S.C. 103 rejection is based on 35 U.S.C. 102(a)(1) or (a)(2) or pre-AIA 35 U.S.C. 102(a), 102(b), 102(e), etc. depending on the type of prior art reference used and its publication or issue date. For instance, an obviousness rejection over a U.S. patent which was issued more than 1 year before the filing date of the application subject to pre-AIA 35 U.S.C. 102 is said to be a statutory bar just as if it anticipated the claims under pre-AIA 35 U.S.C. 102(b). Analogously, an obviousness rejection based on a publication which would be applied under pre-AIA 35 U.S.C. 102(a) if it anticipated the claims can be overcome by swearing behind the publication date of the reference by filing an affidavit or declaration under 37 CFR 1.131.
For an overview of what constitutes prior art under 35 U.S.C. 102, see MPEP § 901 - § 901.06(d), § 2121 - § 2129 and § 2151 - § 2155.
II. SUBSTANTIVE CONTENT OF THE PRIORART
See MPEP § 2121 - § 2129 for case law relating to the substantive content of the prior art (e.g., availability of inoperative devices, extent to which prior art must be enabling, broad disclosure rather than preferred embodiments, admissions, etc.).
III. CONTENT OF THE PRIOR ART IS DETERMINED AT THE TIME THE INVENTION WAS MADE TO AVOID HINDSIGHT
The requirement “at the time the invention was made” is to avoid impermissible hindsight. See MPEP § 2145, subsection X.A. for a discussion of rebutting applicants’ arguments that a rejection is based on hindsight.
“It is difficult but necessary that the decisionmaker forget what he or she has been taught . . . about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art. ...” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
IV. PRE-AIA 35 U.S.C. 103(c) — EVIDENCE REQUIRED TO SHOW CONDITIONS OF PRE-AIA 35 U.S.C. 103(c) APPLY
An applicant subject to pre-AIA 35 U.S.C. 102 who wants to avail himself or herself of the benefits of pre-AIA 35 U.S.C. 103(c) has the burden of establishing that subject matter which only qualifies as prior art under subsection (e), (f) or (g) of pre-AIA 35 U.S.C. 102 used in a rejection under pre-AIA 35 U.S.C. 103(a) and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. Ex parte Yoshino, 227 USPQ 52 (Bd. Pat. App. & Inter. 1985). Likewise, an applicant who wants to avail himself or herself of the benefits of the joint research provisions of pre-AIA 35 U.S.C. 103(c) (for applications pending on or after
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December 10, 2004) has the burden of establishing that:
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
This prior art disqualification is only applicable for subject matter which only qualifies as prior art under subsection (e), (f) or (g) of pre-AIA 35 U.S.C. 102 used in a rejection under pre-AIA 35 U.S.C. 103(a).
Note that for applications filed prior to November 29, 1999, and granted as patents prior to December 10, 2004, pre-AIA 35 U.S.C. 103(c) is limited on its face to subject matter developed by another person which qualifies as prior art only under subsection (f) or (g) of pre-AIA 35 U.S.C. 102. See MPEP § 706.02(l)(1). See also In re Bartfeld, 925 F.2d 1450, 1453-54, 17 USPQ2d 1885, 1888 (Fed. Cir. 1991) (Applicant attempted to overcome a pre-AIA 35 U.S.C. 102(e)/103 rejection with a terminal disclaimer by alleging that the public policy intent of pre-AIA 35 U.S.C 103(c) was to prohibit the use of “secret” prior art in obviousness determinations. The court rejected this argument, holding “We may not disregard the unambiguous exclusion of § 102(e) from the statute’s purview.”).
See MPEP § 706.02(l)(2) for the requirements which must be met to establish common ownership or a joint research agreement.
2141.01(a) Analogous and Nonanalogous Art [R-08.2012]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time of the invention," which is only applicable to applications subject to
pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
I. TO RELY ON A REFERENCE UNDER 35 U.S.C. 103, IT MUST BE ANALOGOUS PRIOR ART
In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103 , the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). The examiner must determine what is “analogous prior art” for the purpose of analyzing the obviousness of the subject matter at issue. “Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent [or application at issue] can provide a reason for combining the elements in the manner claimed. ” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420,
82 USPQ2d 1385, 1397 (2007). This does not require that the reference be from the same field of endeavor as the claimed invention, in light of the Supreme Court's instruction that “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” Id. at 417, 82 USPQ2d 1396. Rather, a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
In order for a reference to be "reasonably pertinent" to the problem, it must “logically [] have commended itself to an inventor's attention in considering his problem. ” In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656,658, 23 USPQ2 1058, 1061 (Fed. Cir. 1992)). A recent decision from the U.S. Court of Appeals for the Federal Circuit, In re Klein, 647 F.3d 1343, 98 USPQ2d 1991 (Fed. Cir. 2011), is instructive as to the "reasonably pertinent" prong for determining whether a reference is analogous art. In determining whether a reference is reasonably pertinent, an examiner should consider the problem faced by the inventor, as reflected - either explicitly or implicitly - in the specification. In order to support
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a determination that a reference is reasonably pertinent, it may be appropriate to include a statement of the examiner's understanding of the problem. The question of whether a reference is reasonably pertinent often turns on how the problem to be solved is perceived. If the problem to be solved is viewed in a narrow or constrained way, and such a view is not consistent with the specification, the scope of available prior art may be inappropriately limited. It may be necessary for the examiner to explain why an inventor seeking to solve the identified problem would have looked to the reference in an attempt to find a solution to the problem, i.e., factual reasons why the prior art is pertinent to the identified problem.
Any argument by the applicant that the examiner has misconstrued the problem to be solved, and as a result has improperly relied on nonanalogous art, should be fully considered in light of the specification. In evaluating the applicant's argument, the examiner should look to the teachings of the specification and the inferences that would reasonably have been drawn from the specification by a person of ordinary skill in the art as a guide to understanding the problem to be solved. A prior art reference not in the same field of endeavor as the claimed invention must be reasonably pertinent to the problem to be solved in order to qualify as analogous art and be applied in an obviousness rejection.
II. CONSIDER SIMILARITIES AND DIFFERENCES IN STRUCTURE AND FUNCTION
While Patent Office classification of references and the cross-references in the official search notes of the class definitions are some evidence of “nonanalogy” or “analogy” respectively, the court has found “the similarities and differences in structure and function of the inventions to carry far greater weight.” In re Ellis, 476 F.2d 1370, 1372, 177 USPQ 526, 527 (CCPA 1973) (The structural similarities and functional overlap between the structural gratings shown by one reference and the shoe scrapers of the type shown by another reference were readily apparent, and therefore the arts to which the reference patents belonged were reasonably pertinent to the art with which appellant’s invention dealt (pedestrian floor gratings).).
III. ANALOGY IN THE CHEMICAL ARTS
See, for example, Ex parte Bland, 3 USPQ2d 1103 (Bd. Pat App. & Inter. 1986) (Claims were drawn to a particulate composition useful as a preservative for an animal foodstuff (or a method of inhibiting fungus growth in an animal foodstuff therewith) comprising verxite having absorbed thereon propionic acid. All references were concerned with absorbing biologically active materials on carriers, and therefore the teachings in each of the various references would have been pertinent to the problems in the other references and the invention at hand.); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
218 USPQ 871 (Fed. Cir. 1983) (Problem confronting inventor was preventing electrostatic buildup in PTFE tubing caused by hydrocarbon fuel flow while precluding leakage of fuel. Two prior art references relied upon were in the rubber hose art, both referencing the problem of electrostatic buildup caused by fuel flow. The court found that because PTFE and rubber are used by the same hose manufacturers and experience the same and similar problems, a solution found for a problem experienced with either PTFE or rubber hosing would be looked to when facing a problem with the other.); In re Mlot-Fijalkowski, 676 F.2d 666, 213 USPQ 713 (CCPA 1982) (Problem faced by appellant was enhancement and immobilization of dye penetrant indications. References which taught the use of dyes and finely divided developer materials to produce colored images preferably in, but not limited to, the duplicating paper art were properly relied upon because the court found that appellant’s problem was one of dye chemistry, and a search for its solution would include the dye arts in general.).
IV. ANALOGY IN THE MECHANICAL ARTS
See, for example, Stevenson v. Int'l Trade Comm., 612 F.2d 546, 550, 204 USPQ 276, 280 (CCPA 1979) (“In a simple mechanical invention a broad spectrum of prior art must be explored and it is reasonable to permit inquiry into other areas where one of ordinary skill in the art would be aware that similar problems exist.”). See also In re Bigio, 381 F.3d 1320, 1325-26, 72 USPQ2d 1209, 1211-12 (Fed. Cir. 2004). The patent application claimed a "hair brush" having a specific bristle configuration.
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The Board affirmed the examiner’s rejection of the claims as being obvious in view of prior art patents disclosing toothbrushes. Id. at at 1323, 72 USPQ2d at 1210. The applicant disputed that the patent references constituted analogous art. On appeal, the court upheld the Board’s interpretation of the claim term “hair brush” to encompass any brush that may be used for any bodily hair, including facial hair. Id. at 1323-24, 72 USPQ2d at 1211. With this claim interpretation, the court applied the “field of endeavor test” for analogous art and determined that the references were within the field of applicant’s endeavor and hence was analogous art because toothbrushes are structurally similar to small brushes for hair, and a toothbrush could be used to brush facial hair. Id. at 1326, 72 USPQ2d at 1212.
Also see In re Deminski, 796 F.2d 436, 230 USPQ 313 (Fed. Cir. 1986) (Applicant’s claims related to double-acting high pressure gas transmission line compressors in which the valves could be removed easily for replacement. The Board relied upon references which taught either a double-acting piston pump or a double-acting piston compressor. The court agreed that since the cited pumps and compressors have essentially the same function and structure, the field of endeavor includes both types of double-action piston devices for moving fluids.); Pentec, Inc. v. Graphic Controls Corp., 776 F.2d
309, 227 USPQ 766 (Fed. Cir. 1985) (Claims at issue were directed to an instrument marker pen body, the improvement comprising a pen arm holding means having an integrally molded hinged member for folding over against the pen body. Although the patent owners argued the hinge and fastener art was nonanalogous, the court held that the problem confronting the inventor was the need for a simple holding means to enable frequent, secure attachment and easy removal of a marker pen to and from a pen arm, and one skilled in the pen art trying to solve that problem would have looked to the fastener and hinge art.); and Ex parte Goodyear Tire & Rubber Co., 230 USPQ 357 (Bd. Pat. App. & Inter. 1985) (A reference in the clutch art was held reasonably pertinent to the friction problem faced by applicant, whose claims were directed to a braking material, because brakes and clutches utilize interfacing materials to accomplish their respective purposes.).
V. ANALOGY IN THE ELECTRICAL ARTS
See, for example, Medtronic, Inc. v. Cardiac Pacemakers, 721 F.2d 1563, 220 USPQ 97 (Fed. Cir. 1983) (Patent claims were drawn to a cardiac pacemaker which comprised, among other components, a runaway inhibitor means for preventing a pacemaker malfunction from causing pulses to be applied at too high a frequency rate. Two references disclosed circuits used in high power, high frequency devices which inhibited the runaway of pulses from a pulse source. The court held that one of ordinary skill in the pacemaker designer art faced with a rate-limiting problem would look to the solutions of others faced with rate limiting problems, and therefore the references were in an analogous art.).
VI. EXAMPLES OF ANALOGY IN THE DESIGN ARTS
See MPEP § 1504.03 for a discussion of the relevant case law setting forth the general requirements for analogous art in design applications.
For examples of analogy in the design arts, see In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982) (The design at issue was a coffee table of contemporary styling. The court held designs of contemporary furniture other than coffee tables, such as the desk and circular glass table top designs of the references relied upon, would reasonably fall within the scope of the knowledge of the designer of ordinary skill.); Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992) (At issue was an ornamental design for a feed bunk with an inclined corner configuration. Examiner relied upon references to a bunk lacking the inclined corners claimed by appellant and the Architectural Precast Concrete Drafting Handbook. The Board found the Architectural Precast Concrete Drafting Handbook was analogous art, noting that a bunk may be a wood or concrete trough, and that both references relied upon “disclose structures in which at least one upstanding leg is generally perpendicular to a base portion to define a corner configuration between the leg and base portion.”); In re Butera, 1 F.3d 1252, 28 USPQ2d 1399, 1400 (Fed. Cir. 1993) (unpublished - not citable as precedent) (The claimed invention, a spherical design for a combined insect
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repellent and air freshener, was rejected by the Board as obvious over a single reference to a design for a metal ball anode. The court reversed, holding the reference design to be nonanalogous art. “A prior design is of the type claimed if it has the same general use as that claimed in the design patent application . . . . One designing a combined insect repellent and air freshener would therefore not have reason to know of or look to a design for a metal ball anode.”).
2141.02 Differences Between Prior Art and Claimed Invention [R-08.2012]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time the invention was made," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
Ascertaining the differences between the prior art and the claims at issue requires interpreting the claim language, and considering both the invention and the prior art references as a whole. See MPEP § 2111 - § 2116.01 for case law pertaining to claim interpretation.
I. THE CLAIMED INVENTION AS A WHOLE MUST BE CONSIDERED
In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form “a single integral and gaplessly continuous piece.” Nortron argued the invention is just making integral what had been made in four bolted pieces, improperly limiting the focus to a structural difference from the prior art and failing to consider the invention as a whole. The prior art
perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure. “Because that insight was contrary to the understandings and expectations of the art, the structure effectuating it would not have been obvious to those skilled in the art.” 713 F.2d at 785, 218 USPQ at 700 (citations omitted).).
See also In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) (Claims were directed to a three step process for preparing sweetened foods and drinks. The first two steps were directed to a process of producing high purity maltose (the sweetener), and the third was directed to adding the maltose to foods and drinks. The parties agreed that the first two steps were unobvious but formed a known product and the third step was obvious. The Solicitor argued the preamble was directed to a process for preparing foods and drinks sweetened mildly and thus the specific method of making the high purity maltose (the first two steps in the claimed process) should not be given weight, analogizing with product-by-process claims. The court held “due to the admitted unobviousness of the first two steps of the claimed combination of steps, the subject matter as a whole would not have been obvious to one of ordinary skill in the art at the time the invention was made.” 535 F.2d at 69, 190 USPQ at 17 (emphasis in original). The preamble only recited the purpose of the process and did not limit the body of the claim. Therefore, the claimed process was a three step process, not the product formed by two steps of the process or the third step of using that product.).
II. DISTILLING THE INVENTION DOWN TO A “GIST” OR “THRUST” OF AN INVENTION DISREGARDS “AS A WHOLE” REQUIREMENT
Distilling an invention down to the “gist” or “thrust” of an invention disregards the requirement of analyzing the subject matter “as a whole.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (restricting consideration of the claims to a 10% per second rate of stretching of unsintered PTFE and disregarding other limitations resulted in treating claims as though they read differently than allowed); Bausch & Lomb v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443,
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447-49, 230 USPQ 416, 419-20 (Fed. Cir. 1986), cert. denied, 484 U.S. 823 (1987) (District court
focused on the “concept of forming ridgeless depressions having smooth rounded edges using a laser beam to vaporize the material,” but “disregarded express limitations that the product be an ophthalmic lens formed of a transparent cross-linked polymer and that the laser marks be surrounded by a smooth surface of unsublimated polymer.”). See also Jones v. Hardy, 727 F.2d 1524, 1530, 220 USPQ 1021, 1026 (Fed. Cir. 1984) (“treating the advantage as the invention disregards statutory requirement that the invention be viewed ‘as a whole’”); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir. 1987), cert. denied, 481 U.S. 1052 (1987) (district court
improperly distilled claims down to a one word solution to a problem).
III. DISCOVERING SOURCE/CAUSE OF A PROBLEM IS PART OF “AS A WHOLE” INQUIRY
“[A] patentable invention may lie in the discovery of the source of a problem even though the remedy may be obvious once the source of the problem is identified. This is part of the ‘subject matter as a whole’ which should always be considered in determining the obviousness of an invention under 35 U.S.C. § 103.” In re Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969). However, “discovery of the cause of a problem . . does not always result in a patentable invention. . . . [A] different situation exists where the solution is obvious from prior art which contains the same solution for a similar problem.” In re Wiseman, 596 F.2d 1019, 1022, 201 USPQ 658, 661 (CCPA 1979) (emphasis in original).
In In re Sponnoble, the claim was directed to a plural compartment mixing vial wherein a center seal plug was placed between two compartments for temporarily isolating a liquid-containing compartment from a solids-containing compartment. The claim differed from the prior art in the selection of butyl rubber with a silicone coating as the plug material instead of natural rubber. The prior art recognized that leakage from the liquid to the solids compartment was a problem, and considered the problem to be a result of moisture passing around the center plug because of microscopic fissures
inherently present in molded or blown glass. The court found the inventor discovered the cause of moisture transmission was through the center plug, and there was no teaching in the prior art which would suggest the necessity of selecting applicant's plug material which was more impervious to liquids than the natural rubber plug of the prior art.
In In re Wiseman, 596 F.2d at 1022, 201 USPQ at 661, claims directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action to minimize fading of the brakes were rejected as obvious over a reference showing carbon disc brakes without grooves in combination with a reference showing grooves in noncarbon disc brakes for the purpose of cooling the faces of the braking members and eliminating dust, thereby reducing fading of the brakes. The court affirmed the rejection, holding that even if applicants discovered the cause of a problem, the solution would have been obvious from the prior art which contained the same solution (inserting grooves in disc brakes) for a similar problem.
IV. APPLICANTS ALLEGING DISCOVERY OF A SOURCE OF A PROBLEM MUST PROVIDE SUBSTANTIATING EVIDENCE
Applicants who allege they discovered the source of a problem must provide evidence substantiating the allegation, either by way of affidavits or declarations, or by way of a clear and persuasive assertion in the specification. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (unsubstantiated statement of counsel was insufficient to show appellants discovered source of the problem); In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983) (Claims were directed to a method for redeeming merchandising coupons which contain a UPC “5-by-5” bar code wherein, among other steps, the memory at each supermarket would identify coupons by manufacturer and transmit the data to a central computer to provide an audit thereby eliminating the need for clearinghouses and preventing retailer fraud. In challenging the propriety of an obviousness rejection, appellant argued he discovered the source of a problem (retailer fraud and manual clearinghouse operations) and its solution. The court found appellant’s specification did not support the argument that he
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discovered the source of the problem with respect to retailer fraud, and that the claimed invention failed to solve the problem of manual clearinghouse operations.).
V. DISCLOSED INHERENT PROPERTIES ARE PART OF “AS A WHOLE” INQUIRY
“In determining whether the invention as a whole would have been obvious under 35 U.S.C. 103, we must first delineate the invention as a whole. In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question... but also to those properties of the subject matter which are inherent in the subject matter and are disclosed in the specification. . . Just as we look to a chemical and its properties when we examine the obviousness of a composition of matter claim, it is this invention as a whole, and not some part of it, which must be obvious under 35 U.S.C. 103.” In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977) (emphasis in original) (citations omitted) (The claimed wastewater treatment device had a tank volume to contractor area of 0.12 gal./sq. ft. The court found the invention as a whole was the ratio of 0.12 and its inherent property that the claimed devices maximized treatment capacity regardless of other variables in the devices. The prior art did not recognize that treatment capacity was a function of the tank volume to contractor ratio, and therefore the parameter optimized was not recognized in the art to be a result-effective variable.). See also In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) (“From the standpoint of patent law, a compound and all its properties are inseparable.”).
Obviousness cannot be predicated on what is not known at the time an invention is made, even if the inherency of a certain feature is later established. In re Rijckaert, 9 F.2d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993). See MPEP § 2112 for the requirements of rejections based on inherency.
VI. PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS
A prior art reference must be considered in its entirety, i.e., as a whole, including portions that
would lead away from the claimed invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (Claims were directed to a process of producing a porous article by expanding shaped, u n s i n t e r e d , h i g h l y c r y s t a l l i n e poly(tetrafluoroethylene) (PTFE) by stretching said PTFE at a 10% per second rate to more than five times the original length. The prior art teachings with regard to unsintered PTFE indicated the material does not respond to conventional plastics processing, and the material should be stretched slowly. A reference teaching rapid stretching of conventional plastic polypropylene with reduced crystallinity combined with a reference teaching stretching unsintered PTFE would not suggest rapid stretching of highly crystalline PTFE, in light of the disclosures in the art that teach away from the invention, i.e., that the conventional polypropylene should have reduced crystallinity before stretching, and that PTFE should be stretched slowly.).
However, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See also MPEP § 2123.
2141.03 Level of Ordinary Skill in the Art [R-08.2012]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time of the invention" or "time the invention was made," which are only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
I. FACTORS TO CONSIDER IN DETERMINING LEVEL OF ORDINARY SKILL
The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. Factors that may be considered in determining the level of
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ordinary skill in the art may include: (A) “type of problems encountered in the art;” (B) “prior art solutions to those problems;” (C) “rapidity with which innovations are made;” (D) “sophistication of the technology; and” (E) “educational level of active workers in the field. In a given case, every factor may not be present, and one or more factors may predominate.” In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995); Custom Accessories, Inc. v. Jeffrey-Allan Indus.,
Inc., 807 F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir. 1986 ); Environmental Designs, Ltd. V. Union Oil Co., 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983).
“A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396.
The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988) (The Board disagreed with the examiner’s definition of one of ordinary skill in the art (a doctorate level engineer or scientist working at least 40 hours per week in semiconductor research or development), finding that the hypothetical person is not definable by way of credentials, and that the evidence in the application did not support the conclusion that such a person would require a doctorate or equivalent knowledge in science or engineering.).
References which do not qualify as prior art because they postdate the claimed invention may be relied upon to show the level of ordinary skill in the art at or around the time the invention was made. Ex parte Erlich, 22 USPQ 1463 (Bd. Pat. App. & Inter. 1992). Moreover, documents not available as prior art because the documents were not widely disseminated
may be used to demonstrate the level of ordinary skill in the art. For example, the document may be relevant to establishing "a motivation to combine which is implicit in the knowledge of one of ordinary skill in the art." Nat'l Steel Car, Ltd. v. Can. Pac. Ry., Ltd., 357 F.3d 1319, 1338, 69 USPQ2d 1641, 1656 (Fed. Cir. 2004) (holding that a drawing made by an engineer that was not prior art can, nonetheless, “... be used to demonstrate a motivation to combine implicit in the knowledge of one of ordinary skill in the art”).
II. SPECIFYING A PARTICULAR LEVEL OF SKILL IS NOT NECESSARY WHERE THE PRIOR ART ITSELF REFLECTS AN APPROPRIATE LEVEL
If the only facts of record pertaining to the level of skill in the art are found within the prior art of record, the court has held that an invention may be held to have been obvious without a specific finding of a particular level of skill where the prior art itself reflects an appropriate level. Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 218 USPQ 673 (Fed. Cir. 1983). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d 1795, 1797 (Fed. Cir. 2001).
III. ASCERTAINING LEVEL OF ORDINARY SKILL IS NECESSARY TO MAINTAIN OBJECTIVITY
“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718, 21 USPQ2d 1053, 1057 (Fed. Cir. 1991). The examiner must ascertain what would have been obvious to one of ordinary skill in the art at the time the invention was made, and not to the inventor, a judge, a layman, those skilled in remote arts, or to geniuses in the art at hand. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984).
2142 Legal Concept of Prima Facie Obviousness [R-07.2015]
The legal concept of prima facie obviousness is a procedural tool of examination which applies broadly
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to all arts. It allocates who has the burden of going forward with production of evidence in each step of the examination process. See In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971); In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971), amended, 448 F.2d 791, 171 USPQ 294 (CCPA 1971); In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit secondary evidence to show nonobviousness. If, however, the examiner does produce a prima facie case, the burden of coming forward with evidence or arguments shifts to the applicant who may submit additional evidence of nonobviousness, such as comparative test data showing that the claimed invention possesses improved properties not expected by the prior art. The decision of whether to submit evidence after a rejection should be influenced by the goals of compact prosecution, which encourages the early submission of such evidence. It is also noted that evidence submitted after final rejection may be denied entry into the record. The initial evaluation of prima facie obviousness thus relieves both the examiner and applicant from evaluating evidence beyond the prior art and the evidence in the specification as filed until the art has been shown to render obvious the claimed invention.
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical “person of ordinary skill in the art” when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention “as a whole” would have been obvious at that time to that person. Knowledge of applicant’s disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the “differences,” conduct the search and evaluate the “subject matter as a whole” of the invention. The tendency to resort to “hindsight” based upon applicant's disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible
hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
ESTABLISHING A PRIMA FACIE CASE OF OBVIOUSNESS
The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 418, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); see also KSR, 550 U.S. at 418, 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
It remains true that “[t]he determination of obviousness is dependent on the facts of each case.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075,
1089, 89 USPQ2d 1370, 1379 (Fed. Cir. 2008) (citing Graham, 383 U.S. at 17-18, 148 USPQ 459, 467 (1966)). If the examiner determines there is factual support for rejecting the claimed invention under 35 U.S.C. 103, the examiner must then consider any evidence supporting the patentability of the claimed invention, such as any evidence in the specification or any other evidence submitted by the applicant. The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The legal standard of “a preponderance of evidence” requires the evidence to be more convincing than the evidence which is offered in opposition to it. With regard to rejections under 35 U.S.C. 103, the examiner must provide evidence which as a whole shows that the legal determination sought to be proved (i.e., the reference teachings establish a prima facie case of obviousness) is more probable
than not.
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When an applicant submits evidence, whether in the specification as originally filed or in reply to a rejection, the examiner must reconsider the patentability of the claimed invention. The decision on patentability must be made based upon consideration of all the evidence, including the evidence submitted by the examiner and the evidence submitted by the applicant. A decision to make or maintain a rejection in the face of all the evidence must show that it was based on the totality of the evidence. Facts established by rebuttal evidence must be evaluated along with the facts on which the conclusion of obviousness was reached, not against the conclusion itself. In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990).
See In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984) for a discussion of the proper roles of the examiner’s prima facie case and applicant’s rebuttal evidence in the final determination of obviousness. See MPEP § 706.02(j) for a discussion of the proper contents of a rejection under 35 U.S.C. 103.
2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-08.2012]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time of the invention" or "time the invention was made," which are only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed.
Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel. Any rationale employed must provide a link between the factual findings and the legal conclusion of obviousness.
It is important for Office personnel to recognize that when they do choose to formulate an obviousness rejection using one of the rationales suggested by the Supreme Court in KSR and discussed herein, they are to adhere to the guidance provided regarding the necessary factual findings. It remains Office policy that appropriate factual findings are required in order to apply the enumerated rationales properly.
The subsections below include discussions of each rationale along with examples illustrating how the cited rationales may be used to support a finding of obviousness. Some examples use the facts of pre- KSR cases to show how the rationales suggested by the Court in KSR may be used to support a finding of obviousness. The cases cited (from which the facts were derived) may not necessarily stand for the proposition that the particular rationale is the basis for the court’s holding of obviousness, but they do illustrate consistency of past decisions with the lines of reasoning laid out in KSR. Other examples are post- KSR decisions that show how the Federal Circuit has applied the principles of KSR. Cases are included that illustrate findings of obviousness as well as nonobviousness. Note that, in some instances, a single case is used in different subsections to illustrate the use of more than one rationale to support a finding of obviousness. It will often be the case that, once the Graham inquiries have been satisfactorily resolved, a conclusion of obviousness may be supported by more than one line of reasoning.
A. Combining Prior Art Elements According to Known Methods To Yield Predictable Results
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage
Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip.
Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). “[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
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Example 1:
The claimed invention in Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 163 USPQ 673 (1969) was a paving machine which combined several well-known elements onto a single chassis. Standard prior art paving machines typically combined equipment for spreading and shaping asphalt onto a single chassis. The patent claim included the well-known element of a radiant-heat burner attached to the side of the paver for the purpose of preventing cold joints during continuous strip paving. The prior art used radiant heat for softening the asphalt to make patches, but did not use radiant heat burners to achieve continuous strip paving. All of the component parts were known in the prior art. The only difference was the combination of the “old elements” into a single device by mounting them on a single chassis. The Court found that the operation of the heater was in no way dependent on the operation of the other equipment, and that a separate heater could also be used in conjunction with a standard paving machine to achieve the same results. The Court concluded that “[t]he convenience of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a ‘new’ or ‘different function’” and that to those skilled in the art the use of the old elements in combination would have been obvious. Id. at 60, 163 USPQ at 674.
Note that combining known prior art elements is not sufficient to render the claimed invention obvious if the results would not have been predictable to one of ordinary skill in the art. United States v. Adams, 383 U.S. 39, 51-52, 148 USPQ 479, 483-84 (1966). In Adams, the claimed invention was to a battery with one magnesium electrode and one cuprous chloride electrode that could be stored dry and activated by the addition of plain water or salt water. Although magnesium and cuprous chloride were individually known battery components, the Court concluded that the claimed battery was nonobvious. The Court stated that “[d]espite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore” the teaching away of the prior art that such batteries were impractical and that water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium electrodes. Id. at 42-43, 50-52, 148 USPQ at 480, 483. “[w]hen the prior art teaches away from combining certain known elements, discovery of successful means of combining them is more likely to be nonobvious.” KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Example 2:
The claimed invention in Ruiz v. AB Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004) was directed to a system which employs a screw anchor for underpinning existing foundations and a metal bracket to transfer the building load onto the screw anchor. The prior art (Fuller) used screw anchors for underpinning existing structural foundations. Fuller used a concrete haunch to transfer the load of the foundation to the screw anchor. The prior art (Gregory) used a push pier for underpinning existing structural foundations. Gregory taught a method of transferring load using a bracket, specifically: a metal bracket transfers the foundation load to the push pier. The pier is driven into the ground to support the load. Neither reference
showed the two elements of the claimed invention – screw anchor and metal bracket – used together. The court found that “artisans knew that a foundation underpinning system requires a means of connecting the foundation to the load-bearing member.” Id. at 1276, 69 USPQ2d at 1691.
The nature of the problem to be solved – underpinning unstable foundations – as well as the need to connect the member to the foundation to accomplish this goal, would have led one of ordinary skill in the art to choose an appropriate load bearing member and a compatible attachment. Therefore, it would have been obvious to use a metal bracket (as shown in Gregory) in combination with the screw anchor (as shown in Fuller) to underpin unstable foundations.
Example 3:
The case of In re Omeprazole Patent Litigation, 536 F.3d 1361, 87 USPQ2d 1865 (Fed. Cir. 2008), is one in which the claims in question were found to be nonobvious in the context of an argument to combine prior art elements. The invention involved applying enteric coatings to a drug in pill form for the purpose of ensuring that the drug did not disintegrate before reaching its intended site of action. The drug at issue was omeprazole, the generic name for gastric acid inhibitor marketed as Prilosec®. The claimed formulation included two layers of coatings over the active ingredient.
The district court found that Astra’s patent in suit was infringed by defendants Apotex and Impax. The district court rejected Apotex’s defense that the patents were invalid for obviousness. Apotex had argued that the claimed invention was obvious because coated omeprazole tablets were known from a prior art reference, and because secondary subcoatings in pharmaceutical preparations generally were also known. There was no evidence of unpredictability associated with applying two different enteric coatings to omeprazole. However, Astra’s reason for applying an intervening subcoating between the prior art coating and omeprazole had been that the prior art coating was actually interacting with omeprazole, thereby contributing to undesirable degradation of the active ingredient. This degradation of omeprazole by interaction with the prior art coating had not been recognized in the prior art. Therefore, the district court reasoned that based on the evidence available, a person of ordinary skill in the art would have had no reason to include a subcoating in an omeprazole pill formulation.
The Federal Circuit affirmed the district court’s decision that the claimed invention was not obvious. Even though subcoatings for enteric drug formulation were known, and there was no evidence of undue technical hurdles or lack of a reasonable expectation of success, the formulation was nevertheless not obvious because the flaws in the prior art formulation that had prompted the modification had not been recognized. Thus there would have been no reason to modify the initial formulation, even though the modification could have been done. Moreover, a person of skill in the art likely would have chosen a different modification even if he or she had recognized the problem.
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Office personnel should note that in this case the modification of the prior art that had been presented as an argument for obviousness was an extra process step that added an additional component to a known, successfully marketed formulation. The proposed modification thus amounted to extra work and greater expense for no apparent reason. This is not the same as combining known prior art elements A and B when each would have been expected to contribute its own known properties to the final product. In the Omeprazole case, in view of the expectations of those of ordinary skill in the art, adding the subcoating would not have been expected to confer any particular desirable property on the final product. Rather, the final product obtained according to the proposed modifications would merely have been expected to have the same functional properties as the prior art product.
The Omeprazole case can also be analyzed in view of the discovery of a previously unknown problem by the patentee. If the adverse interaction between active agent and coating had been known, it might well have been obvious to use a subcoating. However, since the problem had not been previously known, there would have been no reason to incur additional time and expense to add another layer, even though the addition would have been technologically possible. This is true because the prior art of record failed to mention any stability problem, despite the acknowledgment during testimony at trial that there was a known theoretical reason that omeprazole might be subject to degradation in the presence of the known coating material.
Example 4:
The case of Crocs, Inc. v. U.S. Int'l Trade Comm'n, 598 F.3d 1294, 93 USPQ 1777 (Fed. Cir. 2010), is a decision in which the claimed foam footwear was held by the Federal Circuit to be nonobvious over a combination of prior art references.
The claims involved in the obviousness issue were from Crocs’ U.S. Patent No. 6,993,858, and were drawn to footwear in which a one-piece molded foam base section formed the top of the shoe (the upper) and the sole. A strap also made of foam was attached to the foot opening of the upper, such that the strap could provide support to the Achilles portion of the wearer’s foot. The strap was attached via connectors that allowed it to be in contact with the base section, and to pivot relative to the base section. Because both the base portion and the strap were made of foam, friction between the strap and the base section allowed the strap to maintain its position after pivoting. In other words, the foam strap did not fall under the force of gravity to a position adjacent to the heel of the base section.
The International Trade Commission (ITC) determined that the claims were obvious over the combination of two pieces of prior art. The first was the Aqua Clog, which was a shoe that corresponded to the base section of the footwear of the ‘858 patent. The second was the Aguerre patent, which taught heel straps made of elastic or another flexible material. In the ITC’s view, the claimed invention was obvious because the prior art Aqua Clog differed from the claimed invention only as to the presence of the strap, and a suitable strap was taught by Aguerre.
The Federal Circuit disagreed. The Federal Circuit stated that the prior art did not teach foam heel straps, or that a foam heel strap should be placed in contact with a foam base. The Federal Circuit pointed out that the prior art actually counseled against using foam as a material for the heel strap of a shoe.
The record shows that the prior art would actually discourage and teach away from the use of foam straps. An ordinary artisan in this field would not add a foam strap to the foam Aqua Clog because foam was likely to stretch and deform, in addition to causing discomfort for a wearer. The prior art depicts foam as unsuitable for straps.
Id. at 1309, 93 USPQ2d at 1787-88.
The Federal Circuit continued, stating that even if – contrary to fact – the claimed invention had been a combination of elements that were known in the prior art, the claims still would have been nonobvious. There was testimony in the record that the loose fit of the heel strap made the shoe more comfortable for the wearer than prior art shoes in which the heel strap was constantly in contact with the wearer’s foot. In the claimed footwear, the foam heel strap contacted the wearer’s foot only when needed to help reposition the foot properly in the shoe, thus reducing wearer discomfort that could arise from constant contact. This desirable feature was a result of the friction between the base section and the strap that kept the strap in place behind the Achilles portion of the wearer’s foot. The Federal Circuit pointed out that this combination “yielded more than predictable results.” Id. at 1310, 93 USPQ2d at 1788. Aguerre had taught that friction between the base section and the strap was a problem rather than an advantage, and had suggested the use of nylon washers to reduce friction. Thus the Federal Circuit stated that even if all elements of the claimed invention had been taught by the prior art, the claims would not have been obvious because the combination yielded more than predictable results.
The Federal Circuit’s discussion in Crocs serves as a reminder to Office personnel that merely pointing to the presence of all claim elements in the prior art is not a complete statement of a rejection for obviousness. In accordance with MPEP § 2143, subsection I.A.(3), a proper rejection based on the rationale that the claimed invention is a combination of prior art elements also includes a finding that results flowing from the combination would have been predictable to a person of ordinary skill in the art. MPEP § 2143, subsection I.A.(3). If results would not have been predictable, Office personnel should not enter an obviousness rejection using the combination of prior art elements rationale, and should withdraw such a rejection if it has been made.
Example 5:
Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 89 USPQ2d 1535 (Fed. Cir. 2008), involved a segmented and mechanized cover for trucks, swimming pools, or other structures. The claim was found to be obvious over the prior art applied.
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A first prior art reference taught that a reason for making a segmented cover was ease of repair, in that a single damaged segment could be readily removed and replaced when necessary. A second prior art reference taught the advantages of a mechanized cover for ease of opening. The Federal Circuit noted that the segmentation aspect of the first reference and the mechanization function of the second perform in the same way after combination as they had before. The Federal Circuit further observed that a person of ordinary skill in the art would have expected that adding replaceable segments as taught by the first reference to the mechanized cover of the other would result in a cover that maintained the advantageous properties of both of the prior art covers.
Thus, the Sundance case points out that a hallmark of a proper obviousness rejection based on combining known prior art elements is that one of ordinary skill in the art would reasonably have expected the elements to maintain their respective properties or functions after they have been combined.
Example 6:
In the case of Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 91 USPQ2d 1225 (Fed Cir. 2009), an “apparent reason to combine” in conjunction with the technical ability to optimize led to the conclusion that the claimed invention would have been obvious.
The invention in question was a method of treating meat to reduce the incidence of pathogens, by spraying the meat with an antibacterial solution under specified conditions. The parties did not dispute that a single prior art reference had taught all of the elements of the claimed invention, except for the pressure limitation of “at least 50 psi.”
FMC had argued at the district court that the claimed invention would have been obvious in view of the first prior art reference mentioned above in view of a second reference that had taught the advantages of spray-treating at pressures of 20 to 150 psi when treating meat with a different antibacterial agent. The district court did not find FMC’s argument to be convincing, and denied the motion for judgment as a matter of law that the claim was obvious.
Disagreeing with the district court, the Federal Circuit stated that “there was an apparent reason to combine these known elements – namely to increase contact between the [antibacterial solution] and the bacteria on the meat surface and to use the pressure to wash additional bacteria off the meat surface.” Id. at 1350, 91 USPQ2d at 1234. The Federal Circuit explained that because the second reference had taught “using high pressure to improve the effectiveness of an antimicrobial solution when sprayed onto meat, and because an ordinarily skilled artisan would have recognized the reasons for applying [the claimed antibacterial solution] using high pressure and would have known how to do so, Ecolab’s claims combining high pressure with other limitations disclosed in FMC’s patent are invalid as obvious.” Id.
When considering the question of obviousness, Office personnel should keep in mind the capabilities of a person of ordinary skill. In Ecolab, the Federal Circuit stated:
Ecolab’s expert admitted that one skilled in the art would know how to adjust application parameters to determine the optimum parameters for a particular solution. The question then is whether it would have been obvious to combine the high pressure parameter disclosed in the Bender patent with the PAA methods disclosed in FMC’s ’676 patent. The answer is yes. Id.
If optimization of the application parameters had not been within the level of ordinary skill in the art, the outcome of the Ecolab case may well have been different.
Example 7:
In the case of Wyers v. Master Lock Co., 616 F.3d 1231, 95 USPQ2d 1525 (Fed. Cir. 2010), the Federal Circuit held that the claimed barbell-shaped hitch pin locks used to secure trailers to vehicles were obvious.
The court discussed two different sets of claims in Wyers, both drawn to improvements over the prior art hitch pin locks. The first improvement was a removable sleeve that could be placed over the shank of the hitch pin lock so that the same lock could be used with towing apertures of varying sizes. The second improvement was an external flat flange seal adapted to protect the internal lock mechanism from contaminants. Wyers had admitted that each of several prior art references taught every element of the claimed inventions except for the removable sleeve and the external covering. Master Lock had argued that these references, in combination with additional references teaching the missing elements, would have rendered the claims obvious. The court first addressed the question of whether the additional references relied on by Master Lock were analogous prior art. As to the reference teaching the sleeve improvement, the court concluded that it dealt specifically with using a vehicle to tow a trailer, and was therefore in the same field of endeavor as Wyers’ sleeve improvement. The reference teaching the sealing improvement dealt with a padlock rather than a lock for a tow hitch. The court noted that Wyers’ specification had characterized the claimed invention as being in the field of locking devices, thus at least suggesting that the sealed padlock reference was in the same field of endeavor. However, the court also observed that even if sealed padlocks were not in the same field of endeavor, they were nevertheless reasonably pertinent to the problem of avoiding contamination of a locking mechanism for tow hitches. The court explained that the Supreme Court’s decision in KSR “directs [it] to construe the scope of analogous art broadly.” Id. at 1238, 95 USPQ2d at 1530. For these reasons, the court found that Master Lock’s asserted references were analogous prior art, and therefore relevant to the obviousness inquiry.
The court then turned to the question of whether there would have been adequate motivation to combine the prior art elements as had been urged by Master Lock. The court recalled the Graham inquiries, and also emphasized the “expansive and
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flexible” post-KSR approach to obviousness that must not “deny factfinders recourse to common sense.” Id. at 1238, 95 USPQ2d at 1530-31. (quoting KSR, 550 U.S. at 415, 421, 82 USPQ2d at 1395, 1397). The court stated:
KSR and our later cases establish that the legal determination of obviousness may include recourse to logic, judgment, and common sense, in lieu of expert testimony. . . . Thus, in appropriate cases, the ultimate inference as to the existence of a motivation to combine references may boil down to a question of “common sense,” appropriate for resolution on summary judgment or JMOL.
Id. at 1240, 82 USPQ2d at 1531 (citing Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330, 92 USPQ2d, 1849, 1854 (Fed. Cir. 2009); Ball Aerosol, 555 F.3d at 993, 89 USPQ2d 1870, 1875 (Fed. Cir. 2009)).
After reviewing these principles, the court proceeded to explain why adequate motivation to combine had been established in this case. With regard to the sleeve improvement, it pointed out that the need for different sizes of hitch pins was well known in the art, and that this was a known source of inconvenience and expense for users. The court also mentioned the marketplace aspect of the issue, noting that space on store shelves was at a premium, and that removable sleeves addressed this economic concern. As to the sealing improvement, the court pointed out that both internal and external seals were well-known means to protect locks from contaminants. The court concluded that the constituent elements were being employed in accordance with their recognized functions, and would have predictably retained their respective functions when combined as suggested by Master Lock. The court cited In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) for the proposition that a reasonable expectation of success is a requirement for a proper determination of obviousness.
Office personnel should note that although the Federal Circuit invoked the idea of common sense in support of a conclusion of obviousness, it did not end its explanation there. Rather, the court explained why a person of ordinary skill in the art at the time of the invention, in view of the facts relevant to the case, would have found the claimed inventions to have been obvious. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that “[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See MPEP § 2141, subsection III. Office personnel should continue to provide a reasoned explanation for every obviousness rejection.
Example 8:
The claim in DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 90 USPQ2d 1865 (Fed. Cir. 2009), was directed to a polyaxial pedicle screw used in spinal surgeries that included a compression member for pressing a screw head against a receiver member. A prior art reference (Puno) disclosed all of the elements of the claim except for the compression member. Instead, the screw head in Puno was separated from the receiver member to achieve a shock absorber effect, allowing some motion between receiver member and the vertebrae. The missing compression member was readily found in another prior art reference (Anderson), which disclosed an external fracture immobilization splint for immobilizing long bones with a swivel clamp capable of polyaxial movement until rigidly secured by a compression member. It was asserted during trial that a person of ordinary skill would have recognized that the addition of Anderson’s compression member to Puno’s device would have achieved a rigidly locked polyaxial pedicle screw covered by the claim.
In conducting its analysis, the Federal Circuit noted that the “predictable result” discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose. In this case, it was successfully argued that Puno “teaches away” from a rigid screw because Puno warned that rigidity increases the likelihood that the screw will fail within the human body, rendering the device inoperative for its intended purpose. In fact, the reference did not merely express a general preference for pedicle screws having a “shock absorber” effect, but rather expressed concern for failure and stated that the shock absorber feature “decrease[s] the chance of failure of the screw of the bone-screw interface” because “it prevent[s] direct transfer of load from the rod to the bone-screw interface.” Thus, the alleged reason to combine the prior art elements of Puno and Anderson—increasing the rigidity of the screw—ran contrary to the prior art that taught that increasing rigidity would result in a greater likelihood of failure. In view of this teaching and the backdrop of collective teachings of the prior art, the Federal Circuit determined that Puno teaches away from the proposed combination such that a person of ordinary skill would have been deterred from combining the references as proposed. Secondary considerations evaluated by the Federal Circuit relating to failure by others and copying also supported the view that the combination would not have been obvious at the time of the invention.
B. Simple Substitution of One Known Element for Another To Obtain Predictable Results
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some
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components (step, element, etc.) with other components;
(2) a finding that the substituted components and their functions were known in the art;
(3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
Example 1:
The claimed invention in In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) was directed to a method for decaffeinating coffee or tea. The prior art (Pagliaro) method produced a decaffeinated vegetable material and trapped the caffeine in a fatty material (such as oil). The caffeine was then removed from the fatty material by an aqueous extraction process. Applicant (Fout) substituted an evaporative distillation step for the aqueous extraction step. The prior art (Waterman) suspended coffee in oil and then directly distilled the caffeine through the oil. The court found that “[b]ecause both Pagliaro and Waterman teach a method for separating caffeine from oil, it would have been prima facie obvious to substitute one method for the other.
Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” Id. at 301, 213 USPQ at 536.
Example 2:
The claimed invention in In re O’Farrell, 853 F.2d 894, 7 USPQ2d 1673 (Fed. Cir. 1988) was directed to a method for synthesizing a protein in a transformed bacterial host species by substituting a heterologous gene for a gene native to the host species. Generally speaking, protein synthesis in vivo follows a path from DNA to mRNA. Although the prior art Polisky article (authored by two of the three inventors of the application) had explicitly suggested employing the method described for protein synthesis, the inserted heterologous gene exemplified in the article was one that normally did not proceed all the way to the protein production step, but instead terminated with the mRNA. A second reference to Bahl had described a general method of inserting chemically synthesized DNA into a plasmid. Thus, it would have been obvious to one of ordinary skill in the art to replace the prior art gene with another gene known to lead
to protein production, because one of ordinary skill in the art would have been able to carry out such a substitution, and the results were reasonably predictable.
In response to applicant’s argument that there had been significant unpredictability in the field of molecular biology at the time of the invention, the court stated that the level of skill was quite high and that the teachings of Polisky, even taken alone, contained detailed enabling methodology and included the suggestion that the modification would be successful for synthesis of proteins.
This is not a situation where the rejection is a statement that it would have been “obvious to try” without more. Here there was a reasonable expectation of success. “Obviousness does not require absolute predictability of success.” Id. at 903, 7 USPQ2d at 1681.
Example 3:
The fact pattern in Ruiz v. AB Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004) is set forth above in Example 2 in subsection I.A., above.
The prior art showed differing load-bearing members and differing means of attaching the foundation to the member. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the metal bracket taught in Gregory for Fuller’s concrete haunch for the predictable result of transferring the load.
Example 4:
The claimed invention in Ex parte Smith, 83 USPQ2d 1509 (Bd. Pat. App. & Int. 2007), was a pocket insert for a bound book made by gluing a base sheet and a pocket sheet of paper together to form a continuous two-ply seam defining a closed pocket. The prior art (Wyant) disclosed at least one pocket formed by folding a single sheet and securing the folder portions along the inside margins using any convenient bonding method. The prior art (Wyant) did not disclose bonding the sheets to form a continuous two-ply seam. The prior art (Dick) disclosed a pocket that is made by stitching or otherwise securing two sheets along three of its four edges to define a closed pocket with an opening along its fourth edge.
In considering the teachings of Wyant and Dick, the Board “found that (1) each of the claimed elements is found within the scope and content of the prior art; (2) one of ordinary skill in the art could have combined the elements as claimed by methods known at the time the invention was made; and (3) one of ordinary skill in the art would have recognized at the time the invention was made that the capabilities or functions of the combination were predictable.” Citing KSR, the Board concluded that “[t]he substitution of the continuous, two-ply seam of Dick for the folded seam of Wyant thus is no more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement.
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Example 5:
The claimed invention in In re ICON Health & Fitness, Inc., 496 F.3d 1374, 83 USPQ2d 1746 (Fed. Cir. 2007), was directed to a treadmill with a folding tread base that swivels into an upright storage position, including a gas spring connected between the tread base and the upright structure to assist in stably retaining the tread base in the storage position. On reexamination, the examiner rejected the claims as obvious based on a combination of references including an advertisement (Damark) for a folding treadmill demonstrating all of the claim elements other than the gas spring, and a patent (Teague) with a gas spring. Teague was directed to a bed that folds into a cabinet using a novel dual-action spring that reverses force as the mechanism passes a neutral position, rather than a single-action spring that would provide a force pushing the bed closed at all times. The dual-action spring reduced the force required to open the bed from the closed position, while reducing the force required to lift the bed from the open position.
The Federal Circuit addressed the propriety of making the combination since Teague was in a different field than the application. Teague was found to be reasonably pertinent to the problem addressed in the application because the folding mechanism did not require any particular focus on treadmills, but rather generally addressed problems of supporting the weight of such a mechanism and providing a stable resting position.
The court also considered whether one skilled in the art would have been led to combine the teachings of Damark and Teague. Appellant argued that Teague teaches away from the invention because it directs one skilled in the art not to use single-action springs and does not satisfy the claim limitations as the dual-action springs would render the invention inoperable. The Federal Circuit considered these arguments and found that, while Teague at most teaches away from using single-action springs to decrease the opening force, it actually instructed that single-action springs provide the result desired by the inventors, which was to increase the opening force provided by gravity. As to inoperability, the claims were not limited to single-action springs and were so broad as to encompass anything that assists in stably retaining the tread base, which is the function that Teague accomplished. Additionally, the fact that the counterweight mechanism from Teague used a large spring, which appellant argued would overpower the treadmill mechanism, ignores the modifications that one skilled in the art would make to a device borrowed from the prior art. One skilled in the art would size the components from Teague appropriately for the application.
ICON is another useful example for understanding the scope of analogous art. The art applied concerned retaining mechanisms for folding beds, not treadmills. When determining whether a reference may properly be applied to an invention in a different field of endeavor, it is necessary to consider the problem to be solved. It is certainly possible that a reference may be drawn in such a way that its usefulness as a teaching is narrowly restricted. However, in ICON, the problem to be solved was not limited to the teaching of the “treadmill” concept. The Teague reference was analogous art because “Teague and the current application both address the need to stably retain a
folding mechanism,” and because “nothing about ICON’s folding mechanism requires any particular focus on treadmills,” Id. at 1378, 1380, 83 USPQ2d at 1749-50.
ICON is also informative as to the relationship between the problem to be solved and existence of a reason to combine. “Indeed, while perhaps not dispositive of the issue, the finding that Teague, by addressing a similar problem, provides analogous art to ICON’s application goes a long way towards demonstrating a reason to combine the two references. Because ICON’s broad claims read on embodiments addressing that problem as described by Teague, the prior art here indicates a reason to incorporate its teachings.” Id. at 1380-81, 83 USPQ2d at 1751.
The Federal Circuit’s discussion in ICON also makes clear that if the reference does not teach that a combination is undesirable, then it cannot be said to teach away. An assessment of whether a combination would render the device inoperable must not “ignore the modifications that one skilled in the art would make to a device borrowed from the prior art.” Id. at 1382, 83 USPQ2d at 1752.
Example 6:
Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 86 USPQ2d 1110 (Fed. Cir. 2008), involved a stationary pest control device for electrocution of pests such as rats and gophers, in which the device is set in an area where the pest is likely to encounter it. The only difference between the claimed device and the prior art stationary pest control device was that the claimed device employed a resistive electrical switch, while the prior art device used a mechanical pressure switch. A resistive electrical switch was taught in two prior art patents, in the contexts of a hand-held pest control device and a cattle prod.
In determining that the claimed invention was obvious, the Federal Circuit noted that “[t]he asserted claims simply substitute a resistive electrical switch for the mechanical pressure switch” employed in the prior art device. Id. at 1344, 86 USPQ2d at 1115. In this case, the prior art concerning the hand-held devices revealed that the function of the substituted resistive electrical switch was well known and predictable, and that it could be used in a pest control device. According to the Federal Circuit, the references that taught the hand-held devices showed that “the use of an animal body as a resistive switch to complete a circuit for the generation of an electric charge was already well known in the prior art.” Id. Finally, the Federal Circuit noted that the problem solved by using the resistive electrical switch in the prior art hand-held devices – malfunction of mechanical switches due to dirt and dampness – also pertained to the prior art stationary pest control device.
The Federal Circuit recognized Agrizap as “a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results.” Id. Agrizap exemplifies a strong case of obviousness based on simple substitution that was not overcome by the objective evidence of nonobviousness offered. It also demonstrates that analogous art is not limited to the field
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of applicant’s endeavor, in that one of the references that used an animal body as a resistive switch to complete a circuit for the generation of an electric charge was not in the field of pest control.
Example 7:
The invention at issue in Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 87 USPQ2d1350 (Fed. Cir. 2008), was a method for auctioning municipal bonds over the Internet. A municipality could offer a package of bond instruments of varying principal amounts and maturity dates, and an interested buyer would then submit a bid comprising a price and interest rate for each maturity date. It was also possible for the interested buyer to bid on a portion of the offering. The claimed invention considered all of the noted parameters to determine the best bid. It operated on conventional Web browsers and allowed participants to monitor the course of the auction.
The only difference between the prior art bidding system and the claimed invention was the use of a conventional Web browser. At trial, the district court had determined that Muniauction’s claims were not obvious. Thomson argued that the claimed invention amounted to incorporating a Web browser into a prior art auction system, and was therefore obvious in light of KSR. Muniauction rebutted the argument by offering evidence of skepticism by experts, copying, praise, and commercial success. Although the district court found the evidence to be persuasive of nonobviousness, the Federal Circuit disagreed. It noted that a nexus between the claimed invention and the proffered evidence was lacking because the evidence was not coextensive with the claims at issue. For this reason, the Federal Circuit determined that Muniauction’s evidence of secondary considerations was not entitled to substantial weight.
The Federal Circuit analogized this case to Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 82 USPQ2d 1687 (Fed. Cir. 2007). The Leapfrog case involved a determination of obviousness based on application of modern electronics to a prior art mechanical children’s learning device. In Leapfrog, the court noted that market pressures would have prompted a person of ordinary skill to use modern electronics in the prior art device. Similarly in Muniauction, market pressures would have prompted a person of ordinary skill to use a conventional Web browser in a method of auctioning municipal bonds.
Example 8:
In Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007), the claims were drawn to the 5(S) stereoisomer of the blood pressure drug ramipril in stereochemically pure form, and to compositions and methods requiring 5(S) ramipril. The 5(S) stereoisomer is one in which all five stereocenters in the ramipril molecule are in the S rather than the R configuration. A mixture of various stereoisomers including 5(S) ramipril had been taught by the prior art. The question before the court was whether the purified single stereoisomer would have been obvious over the known mixture of stereoisomers.
The record showed that the presence of multiple S stereocenters in drugs similar to ramipril was known to be associated with enhanced therapeutic efficacy. For example, when all of the stereocenters were in the S form in the related drug enalapril (SSS enalapril) as compared with only two stereocenters in the S form (SSR enalapril), the therapeutic potency was 700 times as great. There was also evidence to indicate that conventional methods could be used to separate the various stereoisomers of ramipril.
The district court saw the issue as a close case, because, in its view, there was no clear motivation in the prior art to isolate 5(S) ramipril. However, the Federal Circuit disagreed, and found that the claims would have been obvious. The Federal Circuit cautioned that requiring such a clearly stated motivation in the prior art to isolate 5(S) ramipril ran counter to the Supreme Court’s decision in KSR, and the court stated:
Requiring an explicit teaching to purify the 5(S) stereoisomer from a mixture in which it is the active ingredient is precisely the sort of rigid application of the TSM test that was criticized in KSR.
Id. at 1301, 84 USPQ2d at 1204. The Aventis court also relied on the settled principle that in chemical cases, structural similarity can provide the necessary reason to modify prior art teachings. The Federal Circuit also addressed the kind of teaching that would be sufficient in the absence of an explicitly stated prior art-based motivation, explaining that an expectation of similar properties in light of the prior art can be sufficient, even without an explicit teaching that the compound will have a particular utility.
In the chemical arts, the cases involving so-called “lead compounds” form an important subgroup of the obviousness cases that are based on substitution. The Federal Circuit has had a number of opportunities since the KSR decision to discuss the circumstances under which it would have been obvious to modify a known compound to arrive at a claimed compound. The following cases explore the selection of a lead compound, the need to provide a reason for any proposed modification, and the predictability of the result.
Example 9:
Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 87 USPQ2d 1452 (Fed. Cir. 2008), concerns the pharmaceutical compound rabeprazole. Rabeprazole is a proton pump inhibitor for treating stomach ulcers and related disorders. The Federal Circuit affirmed the district court’s summary judgment of nonobviousness, stating that no reason had been advanced to modify the prior art compound in a way that would destroy an advantageous property.
Co-defendant Teva based its obviousness argument on the structural similarity between rabeprazole and lansoprazole. The compounds were recognized as sharing a common core, and the Federal Circuit characterized lansoprazole as a “lead compound.” The prior art compound lansoprazole was useful for the same indications as rabeprazole, and differed from rabeprazole only
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in that lansoprazole has a trifluoroethoxy substituent at the 4-position of the pyridine ring, while rabeprazole has a methoxypropoxy substituent. The trifluoro substituent of lansoprazole was known to be a beneficial feature because it conferred lipophilicity to the compound. The ability of a person of ordinary skill to carry out the modification to introduce the methoxypropoxy substituent, and the predictability of the result were not addressed.
Despite the significant similarity between the structures, the Federal Circuit did not find any reason to modify the lead compound. According to the Federal Circuit:
Obviousness based on structural similarity thus can be proved by identification of some motivation that would have led one of ordinary skill in the art to select and then modify a known compound (i.e. a lead compound) in a particular way to achieve the claimed compound. . . . In keeping with the flexible nature of the obviousness inquiry, the requisite motivation can come from any number of sources and need not necessarily be explicit in the art. Rather “it is sufficient to show that the claimed and prior art compounds possess a ‘sufficiently close relationship . . . to create an expectation,’ in light of the totality of the prior art, that the new compound will have ‘similar properties’ to the old.” Id. at 1357, 87 USPQ2d at 1455. (citations omitted)
The prior art taught that introducing a fluorinated substituent was known to increase lipophilicity, so a skilled artisan would have expected that replacing the trifluoroethoxy substituent with a methoxypropoxy substituent would have reduced the lipophilicity of the compound. Thus, the prior art created the expectation that rabeprazole would be less useful than lansoprazole as a drug for treating stomach ulcers and related disorders because the proposed modification would have destroyed an advantageous property of the prior art compound. The compound was not obvious as argued by Teva because, upon consideration of all of the facts of the case, a person of ordinary skill in the art at the time of the invention would not have had a reason to modify lansoprazole so as to form rabeprazole.
Office personnel are cautioned that the term “lead compound” in a particular opinion can have a contextual meaning that may vary from the way a pharmaceutical chemist might use the term. In the field of pharmaceutical chemistry, the term “lead compound” has been defined variously as “a chemical compound that has pharmacological or biological activity and whose chemical structure is used as a starting point for chemical modifications in order to improve potency, selectivity, or pharmacokinetic parameters;” “[a] compound that exhibits pharmacological properties which suggest its development;” and “a potential drug being tested for safety and efficacy.” See, e.g., http://en.wikipedia.org/wiki/Lead_compound, accessed January 13, 2010; www.combichemistry.com/glossary_k.html, a c c e s s e d J a n u a r y 1 3 , 2 0 1 0 ; a n d www.buildingbiotechnology.com/glossary4.php, accessed January 13, 2010.
The Federal Circuit in Eisai makes it clear that from the perspective of the law of obviousness, any known compound might possibly serve as a lead compound: “Obviousness based on structural similarity thus can be proved by identification of some motivation that would have led one of ordinary skill in the art to select and then modify a known compound (i.e. a lead compound) in a particular way to achieve the claimed compound.” Eisai, 533 F.3d at 1357, 87 USPQ2d at 1455. Thus, Office personnel should recognize that a proper obviousness rejection of a claimed compound that is useful as a drug might be made beginning with an inactive compound, if, for example, the reasons for modifying a prior art compound to arrive at the claimed compound have nothing to do with pharmaceutical activity. The inactive compound would not be considered to be a lead compound by pharmaceutical chemists, but could potentially be used as such when considering obviousness. Office personnel might also base an obviousness rejection on a known compound that pharmaceutical chemists would not select as a lead compound due to expense, handling issues, or other business considerations. However, there must be some reason for starting with that lead compound other than the mere fact that the “lead compound” merely exists. See Altana Pharma AG v. Teva Pharm. USA, Inc., 566 F.3d 999, 1007, 91 USPQ2d 1018, 1024 (Fed. Cir. 2009) (holding that there must be some reason “to select and modify a known compound”); Ortho-McNeil Pharm., Inc. v. Mylan Labs, Inc., 520 F.3d 1358, 1364, 86 USPQ2d 1196, 1201 (Fed. Cir. 2008).
Example 10:
The claimed chemical compound was also found to be nonobvious in Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 90 USPQ2d 1947 (Fed. Cir. 2009). The compound at issue was risedronate – the active ingredient of
Procter & Gamble’s osteoporosis drug Actonel®. Risedronate is an example of a bisphosphonate, which is a class of compounds known to inhibit bone resorption.
When Procter & Gamble sued Teva for infringement, Teva defended by arguing invalidity for obviousness over one of Procter & Gamble’s earlier patents. The prior art patent did not teach risedronate, but instead taught thirty-six other similar compounds including 2-pyr EHDP that were potentially useful with regard to osteoporosis. Teva argued obviousness on the basis of structural similarity to 2-pyr EHDP, which is a positional isomer of risedronate.
The district court found no reason to select 2-pyr EHDP as a lead compound in light of the unpredictable nature of the art, and no reason to modify it so as to obtain risedronate. In addition, there were unexpected results as to potency and toxicity. Therefore the district court found that Teva had not made a prima facie case, and even if it had, it was rebutted by evidence of unexpected results.
The Federal Circuit affirmed the district court’s decision. The Federal Circuit did not deem it necessary in this case to consider the question of whether 2-pyr EHDP had been appropriately selected as a lead compound. Rather, the Federal Circuit reasoned that, if 2-pyr EHDP is presumed to be an appropriate
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lead compound, there must be both a reason to modify it so as to make risedronate and a reasonable expectation of success. Here, there was no evidence that the necessary modifications would have been routine, so there would have been no reasonable expectation of success.
Procter & Gamble is also informative in its discussion of the treatment of secondary considerations of non-obviousness. Although the court found that no prima facie case of obviousness had been presented, it proceeded to analyze Procter & Gamble’s proffered evidence countering the alleged prima facie case in some detail, thus shedding light on the proper treatment of such evidence.
The Federal Circuit noted in dicta that even if a prima facie case of obviousness had been established, sufficient evidence of unexpected results was introduced to rebut such a showing. At trial, the witnesses consistently testified that the properties of risedronate were not expected, offering evidence that researchers did not predict either the potency or the low dose at which the compound was effective. Tests comparing risedronate to a compound in the prior art reference showed that risedronate outperformed the other compound by a substantial margin, could be administered in a greater amount without an observable toxic effect, and was not lethal at the same levels as the other compound. The weight of the evidence and the credibility of the witnesses were sufficient to show unexpected results that would have rebutted an obviousness determination. Thus, nonobviousness can be shown when a claimed invention is shown to have unexpectedly superior properties when compared to the prior art.
The court then addressed the evidence of commercial success of risedronate and the evidence that risedronate met a long felt need. The court pointed out that little weight was to be afforded to the commercial success because the competing product was also assigned to Procter & Gamble. However, the Federal Circuit affirmed the district court’s conclusion that risedronate met a long-felt, but unsatisfied need. The court rejected Teva’s contention that because the competing drug was available before Actonel7, there was no unmet need that the invention satisfied. The court emphasized that whether there was a long-felt but unsatisfied need is to be evaluated based on the circumstances as of the filing date of the challenged invention – not as of the date that the invention is brought to market.
It should be noted that the lead compound cases do not stand for the proposition that identification of a single lead compound is necessary in every obviousness rejection of a chemical compound. For example, one might envision a suggestion in the prior art to formulate a compound having certain structurally defined moieties, or moieties with certain properties. If a person of ordinary skill would have known how to synthesize such a compound, and the structural and/or functional result could reasonably have been predicted, then a prima facie case of obviousness of the claimed chemical compound might exist even without identification a particular lead compound. As a second example, it could be possible to view a claimed compound as consisting of two known compounds attached via a chemical linker. The claimed compound might properly be
found to have been obvious if there would have been a reason to link the two, if one of ordinary skill would have known how to do so, and if the resulting compound would have been the predictable result of the linkage procedure. Thus, Office personnel should recognize that in certain situations, it may be proper to reject a claimed chemical compound as obvious even without identifying a single lead compound.
Example 11:
The decision reached by the Federal Circuit in Altana Pharma AG v. Teva Pharm. USA, Inc., 566 F.3d 999, 91 USPQ2d 1018 (Fed. Cir. 2009), as discussed below, involved a motion for preliminary injunction and did not include a final determination of obviousness. However, the case is instructive as to the issue of selecting a lead compound.
The technology involved in Altana was the compound pantoprazole, which is the active ingredient in Altana’s antiulcer
drug Protonix®. Pantoprazole belongs to a class of compounds known as proton pump inhibitors that are used to treat gastric acid disorders in the stomach.
Altana accused Teva of infringement. The district court denied Altana’s motion for preliminary injunction for failure to establish a likelihood of success on the merits, determining that Teva had demonstrated a substantial question of invalidity for obviousness in light of one of Altana’s prior patents. Altana’s patent discussed a compound referred to as compound 12, which was one of eighteen compounds disclosed. The claimed compound pantoprazole was structurally similar to compound 12. The district court found that one of ordinary skill in the art would have selected compound 12 as a lead compound for modification, and the Federal Circuit affirmed.
Obviousness of a chemical compound in view of its structural similarity to a prior art compound may be shown by identifying some line of reasoning that would have led one of ordinary skill in the art to select and modify the prior art compound in a particular way to produce the claimed compound. The necessary line of reasoning can be drawn from any number of sources and need not necessarily be explicitly found in the prior art of record. The Federal Circuit determined that ample evidence supported the district court’s finding that compound 12 was a natural choice for further development. For example, Altana’s prior art patent claimed that its compounds, including compound 12, were improvements over the prior art; compound 12 was disclosed as one of the more potent of the eighteen compounds disclosed; the patent examiner had considered the compounds of Altana’s prior art patent to be relevant during the prosecution of the patent in suit; and experts had opined that one of ordinary skill in the art would have selected the eighteen compounds to pursue further investigation into their potential as proton pump inhibitors.
In response to Altana’s argument that the prior art must point to only a single lead compound for further development, the Federal Circuit stated that a “restrictive view of the lead compound test would present a rigid test similar to the teaching-suggestion-motivation test that the Supreme Court
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explicitly rejected in KSR . . . . The district court in this case employed a flexible approach – one that was admittedly preliminary – and found that the defendants had raised a substantial question that one of skill in the art would have used the more potent compounds of [Altana’s prior art] patent, including compound 12, as a starting point from which to pursue further development efforts. That finding was not clearly erroneous.” Id. at 1008, 91 USPQ2d at 1025.
C. Use of Known Technique To Improve Similar Devices (Methods, or Products) in the Same Way
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art contained a “base” device (method, or product) upon which the claimed invention can be seen as an “improvement;”
(2) a finding that the prior art contained a “comparable” device (method, or product that is not the same as the base device) that has been improved in the same way as the claimed invention;
(3) a finding that one of ordinary skill in the art could have applied the known “improvement” technique in the same way to the “base” device (method, or product) and the results would have been predictable to one of ordinary skill in the art; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a “base” device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. The Supreme Court in KSR noted that if the actual application of the technique would have been beyond the skill of one of ordinary skill in the art, then using the technique would not have been obvious. KSR, 550 U.S. at 417, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot
be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
Example 1:
The claimed invention in In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988) was directed to a “means by which the self-oscillating inverter in a power-line-operated inverter-type fluorescent lamp ballast is disabled in case the output current from the inverter exceeds some pre-established threshold level for more than a very brief period.” Id. at 1402, 7 USPQ2d at 1501 That is, the current output was monitored, and if the current output exceeded some threshold for a specified short time, an actuation signal was sent and the inverter was disabled to protect it from damage.
The prior art (a USSR certificate) described a device for protecting an inverter circuit in an undisclosed manner via a control means. The device indicated the high-load condition by way of the control means, but did not indicate the specific manner of overload protection. The prior art (Kammiller) disclosed disabling the inverter in the event of a high-load current condition in order to protect the inverter circuit. That is, the overload protection was achieved by disabling the inverter by means of a cutoff switch.
The court found “it would have been obvious to one of ordinary skill in the art to use the threshold signal produced in the USSR device to actuate a cutoff switch to render the inverter inoperative as taught by Kammiller.” Id. at 1403, 7 USPQ2d at 1502. That is, using the known technique of a cutoff switch for protecting a circuit to provide the protection desired in the inverter circuit of the USSR document would have been obvious to one of ordinary skill.
Example 2:
The fact pattern in Ruiz v. AB Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004) is set forth above in Example 2 in subsection I.A.
The nature of the problem to be solved may lead inventors to look at references relating to possible solutions to that problem. Id. at 1277, 69 USPQ2d at 1691. Therefore, it would have been obvious to use a metal bracket (as shown in Gregory) with the screw anchor (as shown in Fuller) to underpin unstable foundations.
D. Applying a Known Technique to a Known Device (Method, or Product) Ready for Improvement To Yield Predictable Results
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
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(1) a finding that the prior art contained a “base” device (method, or product) upon which the claimed invention can be seen as an “improvement;”
(2) a finding that the prior art contained a known technique that is applicable to the base device (method, or product);
(3) a finding that one of ordinary skill in the art would have recognized that applying the known technique would have yielded predictable results and resulted in an improved system; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
Example 1:
The claimed invention in Dann v. Johnston, 425 U.S. 219, 189 USPQ 257 (1976) was directed towards a system (i.e., computer) for automatic record keeping of bank checks and deposits. In this system, a customer would put a numerical category code on each check or deposit slip. The check processing system would record these on the check in magnetic ink, just as it does for amount and account information. With this system in place, the bank can provide statements to customers that are broken down to give subtotals for each category. The claimed system also allowed the bank to print reports according to a style requested by the customer. As characterized by the Court, “[u]nder respondent’s invention, then, a general purpose computer is programmed to provide bank customers with an individualized and categorized breakdown of their transactions during the period in question.” Id. at 222, 189 USPQ at 259.
BASE SYSTEM - The nature of the use of data processing equipment and computer software in the banking industry was that banks routinely did much of the record-keeping automatically. In routine check processing, the system read any magnetic ink characters identifying the account and routing. The system also read the amount of the check and then printed that value in a designated area of the check. The check was then sent through a further data processing step which used the magnetic ink information to generate the appropriate records
for transactions and for posting to the appropriate accounts. These systems included generating periodic statements for each account, such as the monthly statement sent to checking account customers.
IMPROVED SYSTEM - The claimed invention supplemented this system by recording a category code which could be used to track expenditures by category. Again, the category code will be a number recorded on the check (or deposit slip) which will be read, converted into a magnetic ink imprint, and then processed in the data system to include the category code. This enabled reporting of data by category as opposed to only allowing reporting by account number.
KNOWN TECHNIQUE - This is an application of a technique from the prior art – the use of account numbers (generally used to track an individual's total transactions) to solve the problem of how to track categories of expenditures to more finely account for a budget. That is, account numbers (identifying data capable of processing in the automatic data processing system) were used to distinguish between different customers. Furthermore, banks have long segregated debits attributable to service charges within any given separate account and have rendered their customers subtotals for those charges. Previously, one would have needed to set up separate accounts for each category and thus receive separate reports. Supplementing the account information with additional digits (the category codes) solved the problem by effectively creating a single account that can be treated as distinct accounts for tracking and reporting services. That is, the category code merely allowed what might previously have been separate accounts to be handled as a single account, but with a number of sub-accounts indicated in the report.
The basic technique of putting indicia on data to enable standard sorting, searching, and reporting yielded no more than the predictable outcome which one of ordinary skill would have expected to achieve with this common tool of the trade and was therefore an obvious expedient. The Court held that “[t]he gap between the prior art and respondent’s system is simply not so great as to render the system nonobvious to one reasonably skilled in the art.” Id. at 230, 189 USPQ at 261.
Example 2:
The fact pattern in In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988) is set forth above in Example 1 in subsection C.
The court found “it would have been obvious to one of ordinary skill in the art to use the threshold signal produced in the USSR device to actuate a cutoff switch to render the inverter inoperative as taught by Kammiller.” Id. at 1403, 7 USPQ2d at 1502. The known technique of using a cutoff switch would have predictably resulted in protecting the inverter circuit. Therefore, it would have been within the skill of the ordinary artisan to use a cutoff switch in response to the actuation signal to protect the inverter.
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E. “Obvious To Try” – Choosing From a Finite Number of Identified, Predictable Solutions, With a Reasonable Expectation of Success
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
The question of whether a claimed invention can be shown to be obvious based on an “obvious to try” line of reasoning has been explored extensively by the Federal Circuit in several cases since the KSR decision. The case law in this area is developing quickly in the chemical arts, although the rationale has been applied in other art areas as well.
Some commentators on the KSR decision have expressed a concern that because inventive activities are always carried out in the context of what has come before and not in a vacuum, few inventions
will survive scrutiny under an obvious to try standard. The cases decided since KSR have proved this fear to have been unfounded. Courts appear to be applying the KSR requirement for “a finite number of identified predictable solutions” in a manner that places particular emphasis on predictability and the reasonable expectations of those of ordinary skill in the art.
The Federal Circuit pointed out the challenging nature of the task faced by the courts – and likewise by Office personnel – when considering the viability of an obvious to try argument: “The evaluation of the choices made by a skilled scientist, when such choices lead to the desired result, is a challenge to judicial understanding of how technical advance is achieved in the particular field of science or technology.” Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1352, 89 USPQ2d 1161, 1171 (Fed. Cir. 2008). The Federal Circuit cautioned that an obviousness inquiry based on an obvious to try rationale must always be undertaken in the context of the subject matter in question, “including the characteristics of the science or technology, its state of advance, the nature of the known choices, the specificity or generality of the prior art, and the predictability of results in the area of interest.” Id.
Example 1:
The claimed invention in Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 82 USPQ2d 1321 (Fed. Cir. 2007), was directed to the amlodipine besylate drug product, which was sold in tablet form
in the United States under the trademark Norvasc®. Amlodipine and the use of besylate anions were both known at the time of the invention. Amlodipine was known to have the same therapeutic properties as were being claimed for the amlodipine besylate, but Pfizer discovered that the besylate form had better manufacturing properties (e.g., reduced “stickiness”).
Pfizer argued that the results of forming amlodipine besylate would have been unpredictable and therefore nonobvious. The court rejected the notion that unpredictability could be equated with nonobviousness here, because there were only a finite number (53) of pharmaceutically acceptable salts to be tested for improved properties.
The court found that one of ordinary skill in the art having problems with the machinability of amlodipine would have looked to forming a salt of the compound and would have been able to narrow the group of potential salt-formers to a group of 53 anions known to form pharmaceutically acceptable salts, which would be an acceptable number to form “a reasonable expectation of success.”
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Example 2:
The claimed invention in Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 80 USPQ2d 1001 (Fed. Cir. 2006) was drawn to sustained-release formulations of the drug oxybutynin in which the drug is released at a specified rate over a 24-hour period. Oxybutynin was known to be highly water-soluble, and the specification had pointed out that development of sustained-release formulations of such drugs presented particular problems.
A prior art patent to Morella had taught sustained-release compositions of highly water-soluble drugs, as exemplified by a sustained-release formulation of morphine. Morella had also identified oxybutynin as belonging to the class of highly water-soluble drugs. The Baichwal prior art patent had taught a sustained-release formulation of oxybutynin that had a different release rate than the claimed invention. Finally, the Wong prior art patent had taught a generally applicable method for delivery of drugs over a 24-hour period. Although Wong mentioned applicability of the disclosed method to several categories of drugs to which oxybutynin belonged, Wong did not specifically mention its applicability to oxybutynin.
The court found that because the absorption properties of oxybutynin would have been reasonably predictable at the time of the invention, there would have been a reasonable expectation of successful development of a sustained-release formulation of oxybutynin as claimed. The prior art, as evidenced by the specification, had recognized the obstacles to be overcome in development of sustained-release formulations of highly water-soluble drugs, and had suggested a finite number of ways to overcome these obstacles. The claims were obvious because it would have been obvious to try the known methods for formulating sustained-release compositions, with a reasonable expectation of success. The court was not swayed by arguments of a lack of absolute predictability.
Example 3:
The Federal Circuit’s decision in In re Kubin, 561 F.3d 1351, 90 USPQ2d 1417 (Fed. Cir. 2009), affirmed the Office’s determination in Ex parte Kubin, 83 USPQ2d 1410 (Bd. Pat. App. & Int. 2007) that the claims in question, directed to an isolated nucleic acid molecule, would have been obvious over the prior art applied. The claim stated that the nucleic acid encoded a particular polypeptide. The encoded polypeptide was identified in the claim by its partially specified sequence, and by its ability to bind to a specified protein.
A prior art patent to Valiante taught the polypeptide encoded by the claimed nucleic acid, but did not disclose either the sequence of the polypeptide, or the claimed isolated nucleic acid molecule. However, Valiante did disclose that by employing conventional methods such as those disclosed by a prior art laboratory manual by Sambrook, the sequence of the polypeptide could be determined, and the nucleic acid molecule could be isolated. In view of Valiante’s disclosure of the polypeptide, and of routine prior art methods for sequencing the polypeptide and isolating the nucleic acid molecule, the Board found that a person of ordinary skill in the art would have had a reasonable
expectation that a nucleic acid molecule within the claimed scope could have been successfully obtained.
Relying on In re Deuel, 51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995), appellant argued that it was improper for the Office to use the polypeptide of the Valiante patent together with the methods described in Sambrook to reject a claim drawn to a specific nucleic acid molecule without providing a reference showing or suggesting a structurally similar nucleic acid molecule. Citing KSR, the Board stated that “when there is motivation to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” The Board noted that the problem facing those in the art was to isolate a specific nucleic acid, and there were a limited number of methods available to do so. The Board concluded that the skilled artisan would have had reason to try these methods with the reasonable expectation that at least one would be successful. Thus, isolating the specific nucleic acid molecule claimed was “the product not of innovation but of ordinary skill and common sense.”
The Board’s reasoning was substantially adopted by the Federal Circuit. However, it is important to note that in the Kubin decision, the Federal Circuit held that “the Supreme Court in KSR unambiguously discredited” the Federal Circuit’s decision in Deuel, insofar as it “implies the obviousness inquiry cannot consider that the combination of the claim’s constituent elements was ‘obvious to try.’” Kubin, 561 F.3d at 1358, 90 USPQ2d at 1422. Instead, Kubin stated that KSR “resurrects” the Federal Circuit’s own wisdom in O’Farrell, in which “to differentiate between proper and improper applications of ‘obvious to try,’” the Federal Circuit “outlined two classes of situations where ‘obvious to try’ is erroneously equated with obviousness under § 103.” Kubin, 561 F.3d at 1359, 90 USPQ2d at 1423. These two classes of situations are: (1) when what would have been “obvious to try” would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful; and (2) when what was “obvious to try” was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it. Id. (citing In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir.)).
Example 4:
Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 83 USPQ2d 1169 (Fed. Cir. 2007), is an example of a chemical case in which the Federal Circuit found that the claimed invention was not obvious. The claimed compound was pioglitazone, a member of a class of drugs known as thiazolidinediones (TZDs) marketed by Takeda as a treatment for Type 2 diabetes. The Takeda case brings together the concept of a “lead compound” and the obvious-to-try argument.
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Alphapharm had filed an Abbreviated New Drug Application with the Food and Drug Administration, which was a technical act of infringement of Takeda’s patent. When Takeda brought suit, Alphapharm’s defense was that Takeda’s patent was invalid due to obviousness. Alphapharm argued that a two-step modification – involving homologation and ring-walking – of a known compound identified as “compound b” would have produced pioglitazone, and that it was therefore obvious.
The district court found that there would have been no reason to select compound b as a lead compound. There were a large number of similar prior art TZD compounds; fifty-four were specifically identified in Takeda’s prior patent, and the district court observed that “hundreds of millions” were more generally disclosed. Although the parties agreed that compound b represented the closest prior art, one reference taught certain disadvantageous properties associated with compound b, which according to the district court would have taught the skilled artisan not to select that compound as a lead compound. The district court found no prima facie case of obviousness, and stated that even if a prima facie case had been established, it would have been overcome in this case in view of the unexpected lack of toxicity of pioglitazone.
The Federal Circuit affirmed the decision of the district court, citing the need for a reason to modify a prior art compound. The Federal Circuit quoted KSR, stating:
The KSR Court recognized that “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. In such circumstances, “the fact that a combination was obvious to try might show that it was obvious under § 103.” Id. That is not the case here. Rather than identify predictable solutions for antidiabetic treatment, the prior art disclosed a broad selection of compounds any one of which could have been selected as a lead compound for further investigation. Significantly, the closest prior art compound (compound b, the 6-methyl) exhibited negative properties that would have directed one of ordinary skill in the art away from that compound. Thus, this case fails to present the type of situation contemplated by the Court when it stated that an invention may be deemed obvious if it was “obvious to try.” The evidence showed that it was not obvious to try.
Takeda, 492 F.3d at 1359, 83 USPQ2d at 1176.
Accordingly, Office personnel should recognize that the obvious to try rationale does not apply when the appropriate factual findings cannot be made. In Takeda, there was a recognized need for treatment of diabetes. However, there was no finite number of identified, predictable solutions to the recognized need, and no reasonable expectation of success. There were numerous known TZD compounds, and although one clearly represented the closest prior art, its known disadvantages
rendered it unsuitable as a starting point for further research, and taught the skilled artisan away from its use. Furthermore, even if there had been reason to select compound b, there had been no reasonable expectation of success associated with the particular modifications necessary to transform compound b into the claimed compound pioglitazone. Thus, an obviousness rejection based on an obvious to try rationale was not appropriate in this situation.
Example 5:
The case of Ortho-McNeil Pharm., Inc. v. Mylan Labs, Inc., 520 F.3d 1358, 86 USPQ2d 1196 (Fed. Cir. 2008), provides another example in which a chemical compound was determined not to be obvious. The claimed subject matter was topiramate, which is used as an anti-convulsant.
In the course of working toward a new anti-diabetic drug, Ortho-McNeil’s scientist had unexpectedly discovered that a reaction intermediate had anti-convulsant properties. Mylan’s defense of invalidity due to obviousness rested on an obvious to try argument. However, Mylan did not explain why it would have been obvious to begin with an anti-diabetic drug precursor, especially the specific one that led to topiramate, if one had been seeking an anti-convulsant drug. The district court ruled on summary judgment that Ortho-McNeil’s patent was not invalid for obviousness.
The Federal Circuit affirmed. The Federal Circuit pointed out that there was no apparent reason a person of ordinary skill would have chosen the particular starting compound or the particular synthetic pathway that led to topiramate as an intermediate. Furthermore, there would have been no reason to test that intermediate for anticonvulsant properties if treating diabetes had been the goal. The Federal Circuit recognized an element of serendipity in this case, which runs counter to the requirement for predictability. Summarizing their conclusion with regard to Mylan’s obvious to try argument, the Federal Circuit stated:
[T]his invention, contrary to Mylan’s characterization, does not present a finite (and small in the context of the art) number of options easily traversed to show obviousness. . . . KSR posits a situation with a finite, and in the context of the art, small or easily traversed, number of options that would convince an ordinarily skilled artisan of obviousness. . . . [T]his clearly is not the easily traversed, small and finite number of alternatives that
KSR suggested might support an inference of obviousness. Id. at 1364, 86 USPQ2d at 1201.
Thus, Ortho-McNeil helps to clarify the Supreme Court’s requirement in KSR for “a finite number” of predictable solutions when an obvious to try rationale is applied: under the Federal Circuit’s case law “finite” means “small or easily traversed” in the context of the art in question. As taught in Abbott, discussed above, it is essential that the inquiry be placed in the context of the subject matter at issue, and each case must be decided on its own facts.
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Example 6:
In Bayer Schering Pharma A.G. v. Barr Labs., Inc., 575 F.3d 1341, 91 USPQ2d 1569 (Fed. Cir. 2009), the claimed invention was an oral contraceptive containing micronized drospirenone
marketed as Yasmin®. The prior art compound drospirenone was known to be a poorly water-soluble, acid-sensitive compound with contraceptive effects. It was also known in the art that micronization improves the solubility of poorly water soluble drugs.
Based on the known acid sensitivity, Bayer had studied how effectively an enteric-coated drospirenone tablet delivered a formulation as compared to an intravenous injection of the same formulation to measure the “absolute bioavailability” of the drug. Bayer added an unprotected (normal) drospirenone tablet and compared its bioavailability to that of the enteric-coated formulation and the intravenous delivery. Bayer expected to find that the enteric-coated tablet would produce a lower bioavailability than an intravenous injection, while the normal pill would produce an even lower bioavailability than the enteric-coated tablet. However, they found that despite observations that drospirenone would quickly isomerize in a highly acidic environment (supporting the belief that an enteric coating would be necessary to preserve bioavailability), the normal pill and the enteric-coated pill resulted in the same bioavailability. Following this study, Bayer developed micronized drospirenone in a normal pill, the basis for the disputed patent.
The district court found that a person having ordinary skill in the art would have considered the prior art result that a structurally related compound, spirorenone, though acid-sensitive, would nevertheless absorb in vivo, would have suggested the same result for drospirenone. It also found that while another reference taught that drospirenone isomerizes in vitro when exposed to acid simulating the human stomach, a person of ordinary skill would have been aware of the study’s shortcomings, and would have verified the findings as suggested by a treatise on the science of dosage form design, which would have then showed that no enteric coating was necessary.
The Federal Circuit held that the patent was invalid because the claimed formulation was obvious. The Federal Circuit reasoned that the prior art would have funneled the formulator toward two options. Thus, the formulator would not have been required to try all possibilities in a field unreduced by the prior art. The prior art was not vague in pointing toward a general approach or area of exploration, but rather guided the formulator precisely to the use of either a normal pill or an enteric-coated pill.
It is important for Office personnel to recognize that the mere existence of a large number of options does not in and of itself lead to a conclusion of nonobviousness. Where the prior art teachings lead one of ordinary skill in the art to a narrower set of options, then that reduced set is the appropriate one to consider when determining obviousness using an obvious to try rationale.
Example 7:
The case of Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 89 USPQ2d 1370 (Fed. Cir. 2008), also sheds light on the obvious to try line of reasoning. The claimed compound was clopidogrel, which is the dextrorotatory isomer of methyl alpha- 5(4,5,6,7-tetrahydro(3,2-c)thienopyridyl)(2-chlorophenyl)-acetate. Clopidogrel is an anti-thrombotic compound used to treat or prevent heart attack or stroke. The racemate, or mixture of dextrorotatory and levorotatory (D- and L-) isomers of the compound, was known in the prior art. The two forms had not previously been separated, and although the mixture was known to have anti-thrombotic properties, the extent to which each of the individual isomers contributed to the observed properties of the racemate was not known and was not predictable.
The district court assumed that in the absence of any additional information, the D-isomer would have been prima facie obvious over the known racemate. However, in view of the evidence of unpredicted therapeutic advantages of the D-isomer presented in the case, the district court found that any prima facie case of obviousness had been overcome. At trial, the experts for both parties testified that persons of ordinary skill in the art could not have predicted the degree to which the isomers would have exhibited different levels of therapeutic activity and toxicity. Both parties’ experts also agreed that the isomer with greater therapeutic activity would most likely have had greater toxicity. Sanofi witnesses testified that Sanofi’s own researchers had believed that the separation of the isomers was unlikely to have been productive, and experts for both parties agreed that it was difficult to separate isomers at the time of the invention. Nevertheless, when Sanofi ultimately undertook the task of separating the isomers, it found that they had the “rare characteristic of ‘absolute stereoselectivity,’” whereby the D-isomer provided all of the favorable therapeutic activity but no significant toxicity, while the L-isomer produced no therapeutic activity but virtually all of the toxicity. Based on this record, the district court concluded that Apotex had not met its burden of proving by clear and convincing evidence that Sanofi’s patent was invalid for obviousness. The Federal Circuit affirmed the district court’s conclusion.
Office personnel should recognize that even when only a small number of possible choices exist, the obvious to try line of reasoning is not appropriate when, upon consideration of all of the evidence, the outcome would not have been reasonably predictable and the inventor would not have had a reasonable expectation of success. In Bayer, there were art-based reasons to expect that both the normal pill and the enteric-coated pill would be therapeutically suitable, even though not all prior art studies were in complete agreement. Thus, the result obtained was not unexpected. In Sanofi, on the other hand, there was strong evidence that persons of ordinary skill in the art, prior to the separation of the isomers, would have had no reason to expect that the D-isomer would have such strong therapeutic advantages as compared with the L-isomer. In other words, the result in Sanofi was unexpected.
Example 8:
In Rolls-Royce, PLC v. United Tech. Corp., 603 F.3d 1325, 95 USPQ2d 1097 (Fed. Cir. 2010), the Federal Circuit addressed
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the obvious to try rationale in the context of a fan blade for jet engines. The case had arisen out of an interference proceeding. Finding that the district court had correctly determined that there was no interference-in-fact because Rolls-Royce’s claims would not have been obvious in light of United’s application, the Federal Circuit affirmed.
The Federal Circuit described the fan blade of the count as follows:
Each fan blade has three regions – an inner, an intermediate, and an outer region. The area closest to the axis of rotation at the hub is the inner region. The area farthest from the center of the engine and closest to the casing surrounding the engine is the outer region. The intermediate region falls in between. The count defines a fan blade with a swept-forward inner region, a swept-rearward intermediate region, and forward-leaning outer region.
Id. at 1328, 95 USPQ2d at 1099.
United had argued that it would have been obvious for a person of ordinary skill in the art to try a fan blade design in which the sweep angle in the outer region was reversed as compared with prior art fan blades from rearward to forward sweep, in order to reduce endwall shock. The Federal Circuit disagreed with United’s assessment that the claimed fan blade would have been obvious based on an obvious to try rationale. The Federal Circuit pointed out that in a proper obvious to try approach to obviousness, the possible options for solving a problem must have been “known and finite.” Id. at 1339, 95 USPQ2d at 1107 (citing Abbott, 544 F.3d at 1351, 89 USPQ2d at 1171). In this case, nothing in the prior art would have suggested that changing the sweep angle as Rolls-Royce had done would have addressed the issue of endwall shock. Thus, the Federal Circuit concluded that changing the sweep angle “would not have presented itself as an option at all, let alone an option that would have been obvious to try.” Id. The decision in Rolls-Royce is a reminder to Office personnel that the obvious to try rationale can properly be used to support a conclusion of obviousness only when the claimed solution would have been selected from a finite number of potential solutions known to persons of ordinary skill in the art.
Example 9:
The case of Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29, 92 USPQ2d 1849, 1854 (Fed. Cir. 2009), provides an example in which the Federal Circuit held that a claimed method for managing bulk e-mail distribution was obvious on the basis of an obvious to try argument. In Perfect Web, the method required selecting the intended recipients, transmitting the e-mails, determining how many of the e-mails had been successfully received, and repeating the first three steps if a pre-determined minimum number of intended recipients had not received the e-mail.
The Federal Circuit affirmed the district court’s determination on summary judgment that the claimed invention would have
been obvious. Failure to meet a desired quota of e-mail recipients was a recognized problem in the field of e-mail marketing. The prior art had also recognized three potential solutions: increasing the size of the initial recipient list; resending e-mails to recipients who did not receive them on the first attempt; and selecting a new recipient list and sending e-mails to them. The last option corresponded to the fourth step of the invention as claimed.
The Federal Circuit noted that based on “simple logic,” selecting a new list of recipients was more likely to result in the desired outcome than resending to those who had not received the e-mail on the first attempt. There had been no evidence of any unexpected result associated with selecting a new recipient list, and no evidence that the method would not have had a reasonable likelihood of success. Thus, the Federal Circuit concluded that, as required by KSR, there were a “finite number of identified, predictable solutions,” and that the obvious to try inquiry properly led to the legal conclusion of obviousness.
The Federal Circuit in Perfect Web also discussed the role of common sense in the determination of obviousness. The district court had cited KSR for the proposition that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and found that “the final step [of the claimed invention] is merely the logical result of common sense application of the maxim ‘try, try again.’” In affirming the district court, the Federal Circuit undertook an extended discussion of common sense as it has been applied to the obviousness inquiry, both before and since the KSR decision.
The Federal Circuit pointed out that application of common sense is not really an innovation in the law of obviousness when it stated, “Common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.” Perfect Web, 587 F.3d at 1328, 92 USPQ2d at 1853 (emphasis added). The Federal Circuit then provided a review of a number of precedential cases that inform the understanding of common sense, including In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969) (explaining that a patent examiner may rely on “common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference”) and In re Zurko, 258 F.3d 1379, 1383, 1385, 59 USPQ2d 1693 at 1695, 1697 (Fed. Cir. 2001) (clarifying that a factual foundation is needed in order for an examiner to invoke “good common sense” in a case in which “basic knowledge and common sense was not based on any evidence in the record”). The Federal Circuit implicitly acknowledged in Perfect Web that the kind of strict evidence-based teaching, suggestion, or motivation required in In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed.
Cir. 2002), is not an absolute requirement for an obviousness rejection in light of the teachings of KSR. The Federal Circuit explained that “[a]t the time [of the Lee decision], we required the PTO to identify record evidence of a teaching, suggestion, or motivation to combine references.” However, Perfect Web went on to state that even under Lee, common sense could properly be applied when analyzing evidence relevant to obviousness. Citing DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 80 USPQ2d 1641 (Fed. Cir. 2006), and In re Kahn, 441 F.3d 977, 78 USPQ2d 1329 (Fed. Cir. 2006), two cases decided shortly before the Supreme Court’s decision in
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KSR, the Federal Circuit noted that although “a reasoned explanation that avoids conclusory generalizations” is required to use common sense, identification of a “specific hint or suggestion in a particular reference” is not.
F. Known Work in One Field of Endeavor May Prompt Variations of It for Use in Either the Same Field or a Different One Based on Design Incentives or Other Market Forces if the Variations Are Predictable to One of Ordinary Skill in the Art
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant’s invention or a different field of endeavor, included a similar or analogous device (method, or product);
(2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
(3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and
(5) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claimed invention would have been obvious is that design incentives or other market forces could have prompted one of ordinary skill in the art to vary the prior art in a predictable manner to result in the claimed invention. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
Example 1:
The fact pattern in Dann v. Johnston, 425 U.S. 219, 189 USPQ 257 (1976) is set forth above in Example 1 in subsection D.
The Court found that the problem addressed by applicant – the need to give more detailed breakdown by a category of transactions – was closely analogous to the task of keeping track of the transaction files of individual business units. Id. at 229, 189 USPQ at 261. Thus, an artisan in the data processing area would have recognized the similar class of problem and the known solutions of the prior art and it would have been well within the ordinary skill level to implement the system in the different environment. The Court held that “[t]he gap between the prior art and respondent’s system is simply not so great as to render the system nonobvious to one reasonably skilled in the art.” Id. at 230, 189 USPQ at 261.
Example 2:
The claimed invention in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 82 USPQ2d 1687 (Fed. Cir. 2007) was directed to a learning device to help young children read phonetically. The claim read as follows:
An interactive learning device, comprising:
a housing including a plurality of switches;
a sound production device in communication with the switches and including a processor and a memory;
at least one depiction of a sequence of letters, each letter being associable with a switch; and
a reader configured to communicate the identity of the depiction to the processor,
wherein selection of a depicted letter activates an associated switch to communicate with the processor, causing the sound production device to generate a signal corresponding to a sound associated with the selected letter, the sound being determined by a position of the letter in the sequence of letter.
The court concluded that the claimed invention would have been obvious in view of the combination of two pieces of prior art, (1) Bevan (which showed an electro-mechanical toy for phonetic learning), (2) the Super Speak & Read device (SSR) (an electronic reading toy), and the knowledge of one of ordinary skill in the art.
The court made clear that there was no technological advance beyond the skill shown in the SSR device. The court stated that “one of ordinary skill in the art of children’s learning toys would have found it obvious to combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost. While the SSR only permits generation of a
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sound corresponding to the first letter of a word, it does so using electronic means. The combination is thus the adaptation of an old idea or invention (Bevan) using newer technology that is commonly available and understood in the art (the SSR).”
The court found that the claimed invention was but a variation on already known children’s toys. This variation presented no nonobvious advance over other toys. The court made clear that there was no technological advance beyond the skill shown in the SSR device. The court found that “[a]ccomodating a prior art mechanical device that accomplishes that goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices. Applying modern electronics to older mechanical devices has been commonplace in recent years.”
Example 3:
The claimed invention in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), was an adjustable pedal assembly with a fixed pivot point and an electronic pedal-position sensor attached to the assembly support. The fixed pivot point meant that the pivot was not changed as the pedal was adjusted. The placement of the sensor on the assembly support kept the sensor fixed while the pedal was adjusted.
Conventional gas pedals operated by a mechanical link which adjusted the throttle based on the travel of the pedal from a set position. The throttle controlled the combustion process and the available power generated by the engine. Newer cars used computer controlled throttles in which a sensor detected the motion of the pedal and sent signals to the engine to adjust the throttle accordingly. At the time of the invention, the marketplace provided a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for doing so. The prior art (Asano) taught an adjustable pedal with a fixed pivot point with mechanical throttle control. The prior art (‘936 patent to Byler) taught an electronic pedal sensor which was placed on a pivot point in the pedal assembly and that it was preferable to detect the pedal’s position in the pedal mechanism rather than in the engine. The prior art (Smith) taught that to prevent the wires connecting the sensor to the computer from chafing and wearing out, the sensor should be put on a fixed part of the pedal assembly rather than in or on the pedal’s footpad. The prior art (Rixon) taught an adjustable pedal assembly (sensor in the footpad) with an electronic sensor for throttle control. There was no prior art electronic throttle control that was combined with a pedal assembly which kept the pivot point fixed when adjusting the pedal.
The Court stated that “[t]he proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor.” Id. at 424, 82 USPQ2d at 1399. The Court found that technological developments in the automotive design would have prompted a designer to upgrade Asano with an electronic sensor. The next question was where to attach the sensor. Based on the prior art, a designer would have known to place the sensor on a nonmoving part of the pedal structure and the most obvious nonmoving point on the structure from which a sensor can easily
detect the pedal’s position was a pivot point. The Court concluded that it would have been obvious to upgrade Asano’s fixed pivot point adjustable pedal by replacing the mechanical assembly for throttle control with an electronic throttle control and to mount the electronic sensor on the pedal support structure.
Example 4:
The claimed invention in Ex parte Catan, 83 USPQ2d 1568 (Bd. Pat. App. & Int. 2007), was a consumer electronics device using bioauthentication to authorize sub-users of an authorized credit account to place orders over a communication network up to a pre-set maximum sub-credit limit.
The prior art (Nakano) disclosed a consumer electronics device like the claimed invention, except that security was provided by a password authentication device rather than a bioauthentication device. The prior art (Harada) disclosed that the use of a bioauthentication device (fingerprint sensor) on a consumer electronics device (remote control) to provide bioauthentication information (fingerprint) was known in the prior art at the time of the invention. The prior art (Dethloff) also disclosed that it was known in the art at the time of the invention to substitute bioauthentication for PIN authentication to enable a user to access credit via a consumer electronics device.
The Board found that the prior art “shows that one of ordinary skill in the consumer electronic device art at the time of the invention would have been familiar with using bioauthentication information interchangeably with or in lieu of PINs to authenticate users.” The Board concluded that one of ordinary skill in the art of consumer electronic devices would have found it obvious to update the prior art password device with the modern bioauthentication component and thereby gain, predictably, the commonly understood benefits of such adaptation, that is, a secure and reliable authentication procedure.
G. Some Teaching, Suggestion, or Motivation in the Prior Art That Would Have Led One of Ordinary Skill To Modify the Prior Art Reference or To Combine Prior Art Reference Teachings To Arrive at the Claimed Invention
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that there was some teaching, suggestion, or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings;
(2) a finding that there was reasonable expectation of success; and
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(3) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and whether there would have been a reasonable expectation of success in doing so." DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
The courts have made clear that the teaching, suggestion, or motivation test is flexible and an explicit suggestion to combine the prior art is not necessary. The motivation to combine may be implicit and may be found in the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved. Id. at 1366, 80 USPQ2d at 1649. “[A]n implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal-and even common-sensical-we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368, 80 USPQ2d at 1651.
2143.01 Suggestion or Motivation To Modify the References [R-11.2013]
Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching,
suggestion, or motivation to do so. In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (discussing rationale underlying the motivation-suggestion-teaching test as a guard against using hindsight in an obviousness analysis).
I. PRIOR ART SUGGESTION OF THE CLAIMED INVENTION NOT NECESSARILY NEGATED BY DESIRABLE ALTERNATIVES
The disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention. In In re Fulton, 391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004), the claims of a utility patent application were directed to a shoe sole with increased traction having hexagonal projections in a “facing orientation.” 391 F.3d at 1196-97, 73 USPQ2d at 1142. The Board combined a design patent having hexagonal projections in a facing orientation with a utility patent having other limitations of the independent claim. 391 F.3d at 1199, 73 USPQ2d at 1144. Applicant argued that the combination was improper because (1) the prior art did not suggest having the hexagonal projections in a facing (as opposed to a “pointing”) orientation was the “most desirable” configuration for the projections, and (2) the prior art “taught away” by showing desirability of the “pointing orientation.” 391 F.3d at 1200-01, 73 USPQ2d at 1145-46. The court stated that “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” Id. In affirming the Board’s obviousness rejection, the court held that the prior art as a whole suggested the desirability of the combination of shoe sole limitations claimed, thus providing a motivation to combine, which need not be supported by a finding that the prior art suggested that the combination claimed by the applicant was the preferred, or most desirable combination over the other alternatives. Id.
In Ruiz v. A.B. Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004), the patent claimed underpinning a slumping building foundation using a screw anchor attached to the foundation by a metal bracket. One prior art reference taught a screw anchor with a concrete
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bracket, and a second prior art reference disclosed a pier anchor with a metal bracket. The court found motivation to combine the references to arrive at the claimed invention in the “nature of the problem to be solved” because each reference was directed “to precisely the same problem of underpinning slumping foundations.” Id. at 1276, 69 USPQ2d at 1690. The court also rejected the notion that “an express written motivation to combine must appear in prior art references….” Id. at 1276, 69 USPQ2d at 1690.
II. WHERE THE TEACHINGS OF THE PRIOR ART CONFLICT, THE EXAMINER MUST WEIGH THE SUGGESTIVE POWER OF EACH REFERENCE
The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art, and all teachings in the prior art must be considered to the extent that they are in analogous arts. Where the teachings of two or more prior art references conflict, the examiner must weigh the power of each reference to suggest solutions to one of ordinary skill in the art, considering the degree to which one reference might accurately discredit another. In re Young, 927 F.2d 588, 18 USPQ2d 1089 (Fed. Cir. 1991) (Prior art patent to Carlisle disclosed controlling and minimizing bubble oscillation for chemical explosives used in marine seismic exploration by spacing seismic sources close enough to allow the bubbles to intersect before reaching their maximum radius so the secondary pressure pulse was reduced. An article published several years later by Knudsen opined that the Carlisle technique does not yield appreciable improvement in bubble oscillation suppression. However, the article did not test the Carlisle technique under comparable conditions because Knudsen did not use Carlisle’s spacing or seismic source. Furthermore, where the Knudsen model most closely approximated the patent technique there was a 30% reduction of the secondary pressure pulse. On these facts, the court found that the Knudsen article would not have deterred one of ordinary skill in the art from using the Carlisle patent teachings.).
III. FACT THAT REFERENCES CAN BE COMBINED OR MODIFIED MAY NOT BE
SUFFICIENT TO ESTABLISH PRIMA FACIE OBVIOUSNESS
The mere fact that references can be combined or modified does not render the resultant combination obvious unless the results would have been predictable to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 417, 82 USPQ2d 1385, 1396 (2007) (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).
IV. MERE STATEMENT THAT THE CLAIMED INVENTION IS WITHIN THE CAPABILITIES OF ONE OF ORDINARY SKILL IN THE ART IS NOT SUFFICIENT BY ITSELF TO ESTABLISH PRIMA FACIE OBVIOUSNESS
A statement that modifications of the prior art to meet the claimed invention would have been “‘well within the ordinary skill of the art at the time the claimed invention was made’” because the references relied upon teach that all aspects of the claimed invention were individually known in the art is not sufficient to establish a prima facie case of obviousness without some objective reason to combine the teachings of the references. Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993). ‘‘‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR, 550 U.S. at 418, 82 USPQ2d at 1396 (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
V. THE PROPOSED MODIFICATION CANNOT RENDER THE PRIOR ART UNSATISFACTORY FOR ITS INTENDED PURPOSE
If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) (Claimed device was a blood filter assembly
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for use during medical procedures wherein both the inlet and outlet for the blood were located at the bottom end of the filter assembly, and wherein a gas vent was present at the top of the filter assembly. The prior art reference taught a liquid strainer for removing dirt and water from gasoline and other light oils wherein the inlet and outlet were at the top of the device, and wherein a pet-cock (stopcock) was located at the bottom of the device for periodically removing the collected dirt and water. The reference further taught that the separation is assisted by gravity. The Board concluded the claims were prima facie obvious, reasoning that it would have been obvious to turn the reference device upside down. The court reversed, finding that if the prior art device was turned upside down it would be inoperable for its intended purpose because the gasoline to be filtered would be trapped at the top, the water and heavier oils sought to be separated would flow out of the outlet instead of the purified gasoline, and the screen would become clogged.).
“Although statements limiting the function or capability of a prior art device require fair consideration, simplicity of the prior art is rarely a characteristic that weighs against obviousness of a more complicated device with added function.” In re Dance, 160 F.3d 1339, 1344, 48 USPQ2d 1635, 1638 (Fed. Cir. 1998) (Court held that claimed catheter for removing obstruction in blood vessels would have been obvious in view of a first reference which taught all of the claimed elements except for a “means for recovering fluid and debris” in combination with a second reference describing a catheter including that means. The court agreed that the first reference, which stressed simplicity of structure and taught emulsification of the debris, did not teach away from the addition of a channel for the recovery of the debris.).
VI. THE PROPOSED MODIFICATION CANNOT CHANGE THE PRINCIPLE OF OPERATION OF A REFERENCE
If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA
1959) (Claims were directed to an oil seal comprising a bore engaging portion with outwardly biased resilient spring fingers inserted in a resilient sealing member. The primary reference relied upon in a rejection based on a combination of references disclosed an oil seal wherein the bore engaging portion was reinforced by a cylindrical sheet metal casing. Patentee taught the device required rigidity for operation, whereas the claimed invention required resiliency. The court reversed the rejection holding the “suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principle under which the [primary reference] construction was designed to operate.”).
2143.02 Reasonable Expectation of Success Is Required [R-08.2012]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time the invention was made," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 416, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage
Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equip.
Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
I. OBVIOUSNESS REQUIRES A REASONABLE EXPECTATION OF SUCCESS
Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims
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may be rejected as prima facie obvious provided there is also a reasonable expectation of success. In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (Claims directed to a method of treating depression with amitriptyline (or nontoxic salts thereof) were rejected as prima facie obvious over prior art disclosures that amitriptyline is a compound known to possess psychotropic properties and that imipramine is a structurally similar psychotropic compound known to possess antidepressive properties, in view of prior art suggesting the aforementioned compounds would be expected to have similar activity because the structural difference between the compounds involves a known bioisosteric replacement and because a research paper comparing the pharmacological properties of these two compounds suggested clinical testing of amitriptyline as an antidepressant. The court sustained the rejection, finding that the teachings of the prior art provide a sufficient basis for a reasonable expectation of success.); Ex parte Blanc, 13 USPQ2d 1383 (Bd. Pat. App. & Inter. 1989) (Claims were directed to a process of sterilizing a polyolefinic composition with high-energy radiation in the presence of a phenolic polyester antioxidant to inhibit discoloration or degradation of the polyolefin. Appellant argued that it is unpredictable whether a particular antioxidant will solve the problem of discoloration or degradation. However, the Board found that because the prior art taught that appellant’s preferred antioxidant is very efficient and provides better results compared with other prior art antioxidants, there would have been a reasonable expectation of success.).
II. AT LEAST SOME DEGREE OF PREDICTABILITY IS REQUIRED; APPLICANTS MAY PRESENT EVIDENCE SHOWING THERE WAS NO REASONABLE EXPECTATION OF SUCCESS
Obviousness does not require absolute predictability, however, at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (Claims directed to a method for the commercial scale production of polyesters in the presence of a solvent at superatmospheric pressure were rejected as obvious
over a reference which taught the claimed method at atmospheric pressure in view of a reference which taught the claimed process except for the presence of a solvent. The court reversed, finding there was no reasonable expectation that a process combining the prior art steps could be successfully scaled up in view of unchallenged evidence showing that the prior art processes individually could not be commercially scaled up successfully.). See also Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1207-08, 18 USPQ2d 1016, 1022-23 (Fed. Cir.), cert. denied, 502 U.S. 856 (1991) (In the context of a biotechnology case, testimony supported the conclusion that the references did not show that there was a reasonable expectation of success.); In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988) (The court held the claimed method would have been obvious over the prior art relied upon because one reference contained a detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful.).
III. PREDICTABILITY IS DETERMINED AT THE TIME THE INVENTION WAS MADE
Whether an art is predictable or whether the proposed modification or combination of the prior art has a reasonable expectation of success is determined at the time the invention was made. Ex parte Erlich, 3 USPQ2d 1011, 1016 (Bd. Pat. App. & Inter. 1986) (Although an earlier case reversed a rejection because of unpredictability in the field of monoclonal antibodies, the court found “in this case at the time this invention was made, one of ordinary skill in the art would have been motivated to produce monoclonal antibodies specific for human fibroplast interferon using the method of [the prior art] with a reasonable expectation of success.”) (emphasis in original).
2143.03 All Claim Limitations Must Be Considered [R-08.2012]
“All words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). If an independent claim is nonobvious under 35 U.S.C. 103, then any claim
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depending therefrom is nonobvious. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988).
I. INDEFINITE LIMITATIONS MUST BE CONSIDERED
A claim limitation which is considered indefinite cannot be disregarded. If a claim is subject to more than one interpretation, at least one of which would render the claim unpatentable over the prior art, the examiner should reject the claim as indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph (see MPEP § 706.03(d)) and should reject the claim over the prior art based on the interpretation of the claim that renders the prior art applicable. Ex parte Ionescu, 222 USPQ 537 (Bd. Pat. App. & Inter. 1984) (Claims on appeal were rejected on indefiniteness grounds only; the rejection was reversed and the case remanded to the examiner for consideration of pertinent prior art.). Compare In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970) (if no reasonably definite meaning can be ascribed to certain claim language, the claim is indefinite, not obvious) and In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (it is improper to rely on speculative assumptions regarding the meaning of a claim and then base a rejection under 35 U.S.C. 103 on these assumptions).
II. LIMITATIONS WHICH DO NOT FIND SUPPORT IN THE ORIGINAL SPECIFICATION MUST BE CONSIDERED
When evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter). Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984) (Claim to a catalyst expressly excluded the presence of sulfur, halogen, uranium, and a combination of vanadium and phosphorous. Although the negative limitations excluding these elements did not appear in the specification as filed, it was error to disregard these limitations when determining whether the claimed
invention would have been obvious in view of the prior art.).
2144 Supporting a Rejection Under 35 U.S.C. 103 [R-07.2015]
When considering obviousness, Office personnel are cautioned against treating any line of reasoning as a per se rule. This section discusses supporting a rejection under 35 U.S.C. 103 by reliance on scientific theory and legal precedent. In keeping with the flexible approach to obviousness under KSR, as well as the requirement for explanation, Office personnel may invoke legal precedent as a source of supporting rationale when warranted and appropriately supported. See MPEP § 2144.04. So, for example, automating a manual activity, making portable, making separable, reversing or duplicating parts, or purifying an old product may form the basis of a rejection. However, such rationales should not be treated as per se rules, but rather must be explained and shown to apply to the facts at hand. A similar caveat applies to any obviousness analysis. Simply stating the principle (e.g., “art recognized equivalent,” “structural similarity”) without providing an explanation of its applicability to the facts of the case at hand is generally not sufficient to establish a prima facie case of obviousness.
I. RATIONALE MAY BE IN A REFERENCE, OR REASONED FROM COMMON KNOWLEDGE IN THE ART, SCIENTIFIC PRINCIPLES, ART-RECOGNIZED EQUIVALENTS, OR LEGAL PRECEDENT
The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). See also In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000) (setting forth test for implicit teachings); In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (discussion of reliance on legal precedent); In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502
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(Fed. Cir. 1988) (references do not have to explicitly suggest combining teachings); Ex parte Clapp, 227 USPQ 972 (Bd. Pat. App. & Inter. 1985) (examiner must present convincing line of reasoning supporting rejection); and Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993) (reliance on logic and sound scientific reasoning).
II. THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING REFERENCES
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) (“Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.”).
III. LEGAL PRECEDENT CAN PROVIDE THE RATIONALE SUPPORTING OBVIOUSNESS ONLY IF THE FACTS IN THE CASEARE SUFFICIENTLY SIMILAR TO THOSE IN THE APPLICATION
The examiner must apply the law consistently to each application after considering all the relevant facts. If the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court. If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on the rationale used
by the court to support an obviousness rejection. “The value of the exceedingly large body of precedent wherein our predecessor courts and this court have applied the law of obviousness to particular facts, is that there has been built a wide spectrum of illustrations and accompanying reasoning, that have been melded into a fairly consistent application of law to a great variety of facts.” In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990).
IV. RATIONALE DIFFERENT FROM APPLICANT’S IS PERMISSIBLE
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below).
In In re Lintner, the claimed invention was a laundry composition consisting essentially of a dispersant, cationic fabric softener, sugar, sequestering phosphate, and brightener in specified proportions. The claims were rejected over the combination of a primary reference which taught all the claim limitations except for the presence of sugar, and secondary references which taught the addition of sugar as a filler or weighting agent in compositions containing cationic fabric softeners. Appellant argued that in the claimed invention, the sugar is responsible for the compatibility of the cationic softener with the other detergent components. The court sustained the rejection, stating “The fact that appellant uses sugar for a different purpose does not
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alter the conclusion that its use in a prior art composition would be [ sic, would have been] prima facie obvious from the purpose disclosed in the references.” 173 USPQ at 562.
In In re Dillon, applicant claimed a composition comprising a hydrocarbon fuel and a sufficient amount of a tetra-orthoester of a specified formula to reduce the particulate emissions from the combustion of the fuel. The claims were rejected as obvious over a reference which taught hydrocarbon fuel compositions containing tri-orthoesters for dewatering fuels, in combination with a reference teaching the equivalence of tri-orthoesters and tetra-orthoesters as water scavengers in hydraulic (nonhydrocarbon) fluids. The Board affirmed the rejection finding “there was a ‘reasonable expectation’ that the tri- and tetra-orthoester fuel compositions would have similar properties based on ‘close structural and chemical similarity’between the tri- and tetra-orthoesters and the fact that both the prior art and Dillon use these compounds ‘as fuel additives’.” 919 F.2d at 692, 16 USPQ2d at 1900. The court held “it is not necessary in order to establish a prima facie case of obviousness . . . that there be a suggestion or expectation from the prior art that the claimed [invention] will have the same or a similar utility as one newly discovered by applicant,” and concluded that here a prima facie case was established because “[t]he art provided the motivation to make the claimed compositions in the expectation that they would have similar properties.” 919 F.2d at 693, 16 USPQ2d at 1901 (emphasis in original).
See MPEP § 2145, subsection II for case law pertaining to the presence of additional advantages or latent properties not recognized in the prior art.
2144.01 Implicit Disclosure [R-08.2012]
“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (A process for catalytically producing carbon disulfide by reacting sulfur vapor and methane in the presence of charcoal at a temperature of “about 750-830°C”
was found to be met by a reference which expressly taught the same process at 700°C because the reference recognized the possibility of using temperatures greater than 750°C. The reference disclosed that catalytic processes for converting methane with sulfur vapors into carbon disulfide at temperatures greater than 750°C (albeit without charcoal) was known, and that 700°C was “much lower than had previously proved feasible.”); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (Reference disclosure of a compound where the R-S-R¢ portion has “at least one methylene group attached to the sulfur atom” implies that the other R group attached to the sulfur atom can be other than methylene and therefore suggests asymmetric dialkyl moieties.).
2144.02 Reliance on Scientific Theory [R-08.2012]
The rationale to support a rejection under 35 U.S.C. 103 may rely on logic and sound scientific principle. In re Soli, 317 F.2d 941, 137 USPQ 797 (CCPA
1963). However, when an examiner relies on a scientific theory, evidentiary support for the existence and meaning of that theory must be provided. In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion. The known chemical relationship between structurally similar compounds (homologs, analogs, isomers) did not support a finding of prima facie obviousness of claimed zeolite over the prior art because a zeolite is not a compound but a mixture of compounds related to each other by a particular crystal structure.).
2144.03 Reliance on Common Knowledge in the Art or “Well Known” Prior Art [R-08.2012]
In certain circumstances where appropriate, an examiner may take official notice of facts not in the record or rely on “common knowledge” in making a rejection, however such rejections should be judiciously applied.
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PROCEDURE FOR RELYING ON COMMON KNOWLEDGE OR TAKING OFFICIAL NOTICE
The standard of review applied to findings of fact is the “substantial evidence” standard under the Administrative Procedure Act (APA), 5 U.S.C. 500 et seq. See In re Gartside, 203 F.3d 1305, 1315,
53 USPQ2d 1769, 1775 (Fed. Cir. 2000). See also MPEP § 1216.01. In light of recent Federal Circuit decisions as discussed below and the substantial evidence standard of review now applied to USPTO Board decisions, the following guidance is provided in order to assist the examiners in determining when it is appropriate to take official notice of facts without supporting documentary evidence or to rely on common knowledge in the art in making a rejection, and if such official notice is taken, what evidence is necessary to support the examiner’s conclusion of common knowledge in the art.
A. Determine When It Is Appropriate To Take Official Notice Without Documentary Evidence To Support the Examiner’s Conclusion
Official notice without documentary evidence to support an examiner’s conclusion is permissible only in some circumstances. While “official notice” may be relied on, these circumstances should be rare when an application is under final rejection or action under 37 CFR 1.113. Official notice unsupported by documentary evidence should only be taken by the examiner where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known. As noted by the court in In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420 (CCPA 1970), the notice of facts beyond the record which may be taken by the examiner must be “capable of such instant and unquestionable demonstration as to defy dispute” (citing In re Knapp Monarch Co., 296 F.2d 230, 132 USPQ 6 (CCPA 1961)). In Ahlert, the court held that the Board properly took judicial notice that “it is old to adjust intensity of a flame in accordance with the heat requirement.” See also In re Fox, 471 F.2d 1405, 1407, 176 USPQ 340, 341 (CCPA 1973) (the court took “judicial notice of the fact that tape recorders commonly erase tape automatically when new ‘audio information’ is recorded on a tape which already has a recording on it”). In appropriate circumstances, it might be
reasonable to take official notice of the fact that it is desirable to make something faster, cheaper, better, or stronger without the specific support of documentary evidence. Furthermore, it might be reasonable for the examiner in a first Office action to take official notice of facts by asserting that certain limitations in a dependent claim are old and well known expedients in the art without the support of documentary evidence provided the facts so noticed are of notorious character and serve only to “fill in the gaps” which might exist in the evidentiary showing made by the examiner to support a particular ground of rejection. In re Zurko, 258 F.3d 1379, 1385, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001); Ahlert, 424 F.2d at 1092, 165 USPQ at 421.
It would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known. For example, assertions of technical facts in the areas of esoteric technology or specific knowledge of the prior art must always be supported by citation to some reference work recognized as standard in the pertinent art. In re Ahlert, 424 F.2d at 1091, 165 USPQ at 420-21. See also In re Grose, 592 F.2d 1161, 1167-68, 201 USPQ 57, 63 (CCPA 1979) (“[W]hen the PTO seeks to rely upon a chemical theory, in establishing a prima facie case of obviousness, it must provide evidentiary support for the existence and meaning of that theory.”); In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973) (“[W]e reject the notion that judicial or administrative notice may be taken of the state of the art. The facts constituting the state of the art are normally subject to the possibility of rational disagreement among reasonable men and are not amenable to the taking of such notice.”).
It is never appropriate to rely solely on “common knowledge” in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based. Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697 (“[T]he Board cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.”). While the
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court explained that, “as an administrative tribunal the Board clearly has expertise in the subject matter over which it exercises jurisdiction,” it made clear that such “expertise may provide sufficient support for conclusions [only] as to peripheral issues.” Id. at 1385-86, 59 USPQ2d at 1697. As the court held in Zurko, an assessment of basic knowledge and common sense that is not based on any evidence in the record lacks substantial evidence support. Id. at 1385, 59 USPQ2d at 1697.
B. If Official Notice Is Taken of a Fact, Unsupported by Documentary Evidence, the Technical Line of Reasoning Underlying a Decision To Take Such Notice Must Be Clear and Unmistakable
In certain older cases, official notice has been taken of a fact that is asserted to be “common knowledge” without specific reliance on documentary evidence where the fact noticed was readily verifiable, such as when other references of record supported the noticed fact, or where there was nothing of record to contradict it. See In re Soli, 317 F.2d 941, 945-46, 137 USPQ 797, 800 (CCPA 1963) (accepting the examiner’s assertion that the use of “a control is standard procedure throughout the entire field of bacteriology” because it was readily verifiable and disclosed in references of record not cited by the Office); In re Chevenard, 139 F.2d 711, 713, 60 USPQ 239, 241 (CCPA 1943) (accepting the examiner’s finding that a brief heating at a higher temperature was the equivalent of a longer heating at a lower temperature where there was nothing in the record to indicate the contrary and where the applicant never demanded that the examiner produce evidence to support his statement). If such notice is taken, the basis for such reasoning must be set forth explicitly. The examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge. See Soli, 317 F.2d at 946, 37 USPQ at 801; Chevenard, 139 F.2d at 713, 60 USPQ at 241. The applicant should be presented with the explicit basis on which the examiner regards the matter as subject to official notice so as to adequately traverse the rejection in the next reply after the Office action in which the common knowledge statement was made.
C. If Applicant Challenges a Factual Assertion as Not Properly Officially Noticed or Not Properly Based Upon
Common Knowledge, the Examiner Must Support the Finding With Adequate Evidence
To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. See 37 CFR 1.111(b). See also Chevenard, 139 F.2d at 713, 60 USPQ at 241 (“[I]n the absence of any demand by appellant for the examiner to produce authority for his statement, we will not consider this contention.”). A general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. If applicant adequately traverses the examiner’s assertion of official notice, the examiner must provide documentary evidence in the next Office action if the rejection is to be maintained. See 37 CFR 1.104(c)(2). See also Zurko, 258 F.3d at 1386, 59 USPQ2d at 1697 (“[T]he Board [or examiner] must point to some concrete evidence in the record in support of these findings” to satisfy the substantial evidence test). If the examiner is relying on personal knowledge to support the finding of what is known in the art, the examiner must provide an affidavit or declaration setting forth specific factual statements and explanation to support the finding. See 37 CFR 1.104(d)(2).
If applicant does not traverse the examiner’s assertion of official notice or applicant’s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate. If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate.
D. Determine Whether the Next Office Action Should Be Made Final
If the examiner adds a reference in the next Office action after applicant’s rebuttal, and the newly added reference is added only as directly corresponding evidence to support the prior common knowledge finding, and it does not result in a new issue or constitute a new ground of rejection, the Office
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action may be made final. If no amendments are made to the claims, the examiner must not rely on any other teachings in the reference if the rejection is made final. If the newly cited reference is added for reasons other than to support the prior common knowledge statement and a new ground of rejection is introduced by the examiner that is not necessitated by applicant’s amendment of the claims, the rejection may not be made final. See MPEP § 706.07(a).
E. Summary
Any rejection based on assertions that a fact is well-known or is common knowledge in the art without documentary evidence to support the examiner’s conclusion should be judiciously applied. Furthermore, as noted by the court in Ahlert, any facts so noticed should be of notorious character and serve only to “fill in the gaps” in an insubstantial manner which might exist in the evidentiary showing made by the examiner to support a particular ground for rejection. It is never appropriate to rely solely on common knowledge in the art without evidentiary support in the record as the principal evidence upon which a rejection was based. See Zurko, 258 F.3d at 1386, 59 USPQ2d at 1697; Ahlert, 424 F.2d at 1092, 165 USPQ 421.
2144.04 Legal Precedent as Source of Supporting Rationale [R-11.2013]
As discussed in MPEP § 2144, if the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court. Examples directed to various common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients are discussed below. If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obviousness rejection.
I. AESTHETIC DESIGN CHANGES
In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (Claim was directed to an advertising display device comprising a bottle and a hollow member in the shape of a human figure from the waist up which was adapted to fit over and cover the neck of the
bottle, wherein the hollow member and the bottle together give the impression of a human body. Appellant argued that certain limitations in the upper part of the body, including the arrangement of the arms, were not taught by the prior art. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.). But see Ex parte Hilton, 148 USPQ 356 (Bd. App. 1965) (Claims were directed to fried potato chips with a specified moisture and fat content, whereas the prior art was directed to french fries having a higher moisture content. While recognizing that in some cases the particular shape of a product is of no patentable significance, the Board held in this case the shape (chips) is important because it results in a product which is distinct from the reference product (french fries).).
II. ELIMINATION OF A STEP OR AN ELEMENT AND ITS FUNCTION
A. Omission of an Element and Its Function Is Obvious if the Function of the Element Is Not Desired
Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a method for inhibiting corrosion on metal surfaces using a composition consisting of epoxy resin, petroleum sulfonate, and hydrocarbon diluent. The claims were rejected over a primary reference which disclosed an anticorrosion composition of epoxy resin, hydrocarbon diluent, and polybasic acid salts wherein said salts were taught to be beneficial when employed in a freshwater environment, in view of secondary references which clearly suggested the addition of petroleum sulfonate to corrosion inhibiting compositions. The Board affirmed the rejection, holding that it would have been obvious to omit the polybasic acid salts of the primary reference where the function attributed to such salt is not desired or required, such as in compositions for providing corrosion resistance in environments which do not encounter fresh water.). See also In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) (Omission of additional framework and axle which served to increase the cargo carrying capacity of prior art mobile fluid carrying unit would have been obvious if this feature was not desired.); and
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In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient).
B. Omission of an Element with Retention of the Element's Function Is an Indicia of Unobviousness
Note that the omission of an element and retention of its function is an indicia of unobviousness. In re Edge, 359 F.2d 896, 149 USPQ 556 (CCPA 1966) (Claims at issue were directed to a printed sheet having a thin layer of erasable metal bonded directly to the sheet wherein said thin layer obscured the original print until removal by erasure. The prior art disclosed a similar printed sheet which further comprised an intermediate transparent and erasure-proof protecting layer which prevented erasure of the printing when the top layer was erased. The claims were found unobvious over the prior art because the although the transparent layer of the prior art was eliminated, the function of the transparent layer was retained since appellant’s metal layer could be erased without erasing the printed indicia.).
III. AUTOMATING A MANUAL ACTIVITY
In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) (Appellant argued that claims to a permanent mold casting apparatus for molding trunk pistons were allowable over the prior art because the claimed invention combined “old permanent-mold structures together with a timer and solenoid which automatically actuates the known pressure valve system to release the inner core after a predetermined time has elapsed.” The court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.).
IV. CHANGES IN SIZE, SHAPE, OR SEQUENCE OF ADDING INGREDIENTS
A. Changes in Size/Proportion
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight requiring handling by
a lift truck” where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (“mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” 531 F.2d at 1053, 189 USPQ at 148.).
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
B. Changes in Shape
In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
C. Changes in Sequence of Adding Ingredients
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA
1930) (Selection of any order of mixing ingredients is prima facie obvious.).
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V. MAKING PORTABLE, INTEGRAL, SEPARABLE, ADJUSTABLE, OR CONTINUOUS
A. Making Portable
In re Lindberg, 194 F.2d 732, 93 USPQ 23 (CCPA 1952) (Fact that a claimed device is portable or movable is not sufficient by itself to patentably distinguish over an otherwise old device unless there are new or unexpected results.).
B. Making Integral
In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, “that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.”); but see Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form “a single integral and gaplessly continuous piece.” Nortron argued that the invention is just making integral what had been made in four bolted pieces. The court found this argument unpersuasive and held that the claims were patentable because the prior art perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure, showing insight that was contrary to the understandings and expectations of the art.).
C. Making Separable
In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is “press fitted” and therefore not manually removable. The court held that “if it were considered desirable for any reason to obtain access to the end of [the prior
art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.”).
D. Making Adjustable
In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954) (Claims were directed to a handle for a fishing rod wherein the handle has a longitudinally adjustable finger hook, and the hand grip of the handle connects with the body portion by means of a universal joint. The court held that adjustability, where needed, is not a patentable advance, and because there was an art-recognized need for adjustment in a fishing rod, the substitution of a universal joint for the single pivot of the prior art would have been obvious.).
E. Making Continuous
In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963) (Claim directed to a method of producing a cementitious structure wherein a stable air foam is introduced into a slurry of cementitious material differed from the prior art only in requiring the addition of the foam to be continuous. The court held the claimed continuous operation would have been obvious in light of the batch process of the prior art.).
VI. REVERSAL, DUPLICATION, OR REARRANGEMENT OF PARTS
A. Reversal of Parts
In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955) (Prior art disclosed a clock fixed to the stationary steering wheel column of an automobile while the gear for winding the clock moves with steering wheel; mere reversal of such movement, so the clock moves with wheel, was held to be an obvious modification.).
B. Duplication of Parts
In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a
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“web” which lies in the joint, and a plurality of “ribs” projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).
C. Rearrangement of Parts
In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). However, “[t]he mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellant’s specification, to make the necessary changes in the reference device.” Ex parte Chicago Rawhide Mfg. Co., 223 USPQ
351, 353 (Bd. Pat. App. & Inter. 1984).
VII. PURIFYING AN OLD PRODUCT
Pure materials are novel vis-à-vis less pure or impure materials because there is a difference between pure and impure materials. Therefore, the issue is whether claims to a pure material are unobvious over the prior art. In re Bergstrom, 427 F.2d 1394, 166 USPQ 256 (CCPA 1970). Purer forms of known products may be patentable, but the mere purity of a product, by itself, does not render the product unobvious.
Factors to be considered in determining whether a purified form of an old product is obvious over the prior art include whether the claimed chemical compound or composition has the same utility as closely related materials in the prior art, and whether the prior art suggests the particular form or structure
of the claimed material or suitable methods of obtaining that form or structure. In re Cofer, 354 F.2d 664, 148 USPQ 268 (CCPA 1966) (Claims to the free-flowing crystalline form of a compound were held unobvious over references disclosing the viscous liquid form of the same compound because the prior art of record did not suggest the claimed compound in crystalline form or how to obtain such crystals.).
See also Ex parte Stern, 13 USPQ2d 1379 (Bd. Pat. App. & Inter. 1987) (Claims to interleukin-2 (a protein with a molecular weight of over 12,000) purified to homogeneity were held unpatentable over references which recognized the desirability of purifying interleukin-2 to homogeneity in a view of a reference which taught a method of purifying proteins having molecular weights in excess of 12,000 to homogeneity wherein the prior art method was similar to the method disclosed by appellant for purifying interleukin-2).
2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-07.2015]
See MPEP § 2131.03 for case law pertaining to rejections based on the anticipation of ranges under 35 U.S.C. 102 and 35 U.S.C. 102/103.
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of “50 to 100 Angstroms” considered prima facie obvious in view of prior art reference teaching that “for suitable protection, the thickness of the protective
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layer should be not less than about 10 nm [i.e., 100 Angstroms].” The court stated that “by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range.”).
Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0, explaining “[t]hat which infringes if later anticipates if earlier”); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Waite, 168 F.2d 104, 108 (CCPA 1948); In re Scherl, 156 F.2d 72, 74-75 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Swenson, 132 F.2d 1020, 1022 (CCPA 1942); In re Bergen, 120 F.2d 329, 332 (CCPA 1941); In re Becket, 88 F.2d 684 (CCPA 1937) (“Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys.”); In re Dreyfus, 73 F.2d 931, 934 (CCPA 1934); In
re Lilienfeld, 67 F.2d 920, 924 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner
to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., “not substantially less than 13%,” “not substantially below 17%,” and “between about 13[%] and 20%”); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. Appx. 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); Gentiluomo v. Brunswick Bowling and Billiards Corp., 36 Fed. Appx. 433 (Fed. Cir. 2002)(non-precedential)(disagreeing with argument that overlapping ranges were required to find a claim prima facie obvious).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) (claimed alloy held obvious over prior art alloy that taught ranges of weight percentages overlapping, and in most instances completely encompassing, claimed ranges; furthermore, narrower ranges taught by reference overlapped all but one range in claimed invention). However, if the reference’s disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus. Id. See also In re Baird, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992); MPEP § 2144.08.
A range can be disclosed in multiple prior art references instead of in a single prior art reference depending on the specific facts of the case. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). The patent claim at issue was directed to a weight plate having 3 elongated openings that served as handles for transporting the weight plate. Multiple prior art patents each disclosed weight plates having 1, 2 or 4 elongated openings. 392 F.3d at 1319, 73 USPQ2d at 1226. The court stated that the claimed weight plate having 3 elongated openings fell within the “range” of the prior art and was thus presumed obvious. 392 F.3d at 1322, 73 USPQ2d at 1228. The
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court further stated that the “range” disclosed in multiple prior art patents is “a distinction without a difference” from previous range cases which involved a range disclosed in a single patent since the “prior art suggested that a larger number of elongated grips in the weight plates was beneficial… thus plainly suggesting that one skilled in the art look to the range appearing in the prior art.” Id.
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling,
897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or
degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
B. There is a Motivation to Optimize Result-Effective Variables
In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because “obvious to try” is not a valid rationale for an obviousness finding. In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court held that “obvious to try” was a valid rationale for an obviousness finding, for example, when there is a “design need” or “market demand” and there are a “finite number” of solutions. 550 U.S. at 421 (“The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.”). Thus, after
KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.
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III. REBUTTAL OF PRIMA FACIE CASE OF OBVIOUSNESS
A. Showing That the Change Is Critical
Applicants can rebut a prima facie case of obviousness by showing the criticality of the change. “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See also Minerals Separation, Ltd., et al. v. Hyde, 242 U.S. 261, 271 (1916) (a patent based on a change in the proportions of a prior product or process (changing from 4-10% oil to 1% oil) must be confined to the proportions that were shown to be critical (1%)); In re Scherl, 156 F.2d 72, 74-75 (CCPA 1946) (“Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”); In re Becket, 88 F.2d 684 (CCPA 1937) (“Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys.”); In re Lilienfeld, 67 F.2d 920, 924 (CCPA 1933) (“It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree.”); In re Wells, 56 F.2d 674, 675 (CCPA 1932) (“Changes in proportions of agents used in combinations . . . in order to be patentable, must be critical as compared with the proportions of the prior processes.”).
See MPEP § 716.02 - § 716.02(g) for a discussion of criticality and unexpected results.
B. Showing That the Prior Art Teaches Away
A prima facie case of obviousness may also be rebutted by showing that the art, in any material respect, teaches away from the claimed invention.
In re Geisler, 116 F.3d 1465, 1471, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997) (Applicant argued that the prior art taught away from use of a protective layer for a reflective article having a thickness within the claimed range of “50 to 100 Angstroms.” Specifically, a patent to Zehender, which was relied upon to reject applicant’s claim, included a statement that the thickness of the protective layer “should be not less than about [100 Angstroms].” The court held that the patent did not teach away from the claimed invention. “Zehender suggests that there are benefits to be derived from keeping the protective layer as thin as possible, consistent with achieving adequate protection.A thinner coating reduces light absorption and minimizes manufacturing time and expense. Thus, while Zehender expresses a preference for a thicker protective layer of 200-300 Angstroms, at the same time it provides the motivation for one of ordinary skill in the art to focus on thickness levels at the bottom of Zehender’s ‘suitable’ range- about 100 Angstroms- and to explore thickness levels below that range. The statement in Zehender that ‘[i]n general, the thickness of the protective layer should be not less than about [100 Angstroms]’ falls far short of the kind of teaching that would discourage one of skill in the art from fabricating a protective layer of 100 Angstroms or less. [W]e are therefore ‘not convinced that there was a sufficient teaching away in the art to overcome [the] strong case of obviousness’ made out by Zehender.”). See MPEP § 2145, subsection X.D., for a discussion of “teaching away” references.
Applicant can rebut a presumption of obviousness based on a claimed invention that falls within a prior art range by showing “(1) [t]hat the prior art taught away from the claimed invention...or (2) that there are new and unexpected results relative to the prior art.” Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). The court found that patentee offered neither evidence of teaching away of the prior art nor new and unexpected results of the claimed invention drawn to a weight plate having 3 elongated handle openings. 392 F.3d at 1323, 73 USPQ2d at 1229. The court then turned to considering substantial evidence of pertinent secondary factors such as commercial success, satisfaction of a long-felt need, and copying by others may also support patentability. Id. Nevertheless, the court
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found that Iron Grip failed to show evidence of commercial success, copying by others, or satisfaction of a long felt need for the following reasons: (A) Iron Grip’s licensing of its patent to three competitors was insufficient to show nexus between the “merits of the invention and the licenses,” and thus did not establish secondary consideration of commercial success; (B) in response to Iron Grip’s argument that the competitor’s production of a three-hole plate is evidence of copying, the court stated that “[n]ot every competing product that falls within the scope of a patent is evidence of copying” since “[o]therwise every infringement suit would automatically confirm the nonobviousness of the patent;” and (C) although Iron Grip offered as evidence that the absence of the three-grip plate on the market prior to its patent showed that the invention was nonobviousness, the court stated that “[a]bsent a showing of a long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness.” 392 F.3d at 1324-25, 73 USPQ2d at 1229-30.
2144.06 Art Recognized Equivalence for the Same Purpose [R-08.2012]
I. COMBINING EQUIVALENTS KNOWN FOR THE SAME PURPOSE
“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992)
(mixture of two known herbicides held prima facie obvious).
II. SUBSTITUTING EQUIVALENTS KNOWN FOR THE SAME PURPOSE
In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958) (The mere fact that components are claimed as members of a Markush group cannot be relied upon to establish the equivalency of these components. However, an applicant’s expressed recognition of an art-recognized or obvious equivalent may be used to refute an argument that such equivalency does not exist.); Smith v. Hayashi, 209 USPQ 754 (Bd. of Pat. Inter. 1980) (The mere fact that phthalocyanine and selenium function as equivalent photoconductors in the claimed environment was not sufficient to establish that one would have been obvious over the other. However, there was evidence that both phthalocyanine and selenium were known photoconductors in the art of electrophotography. “This, in our view, presents strong evidence of obviousness in substituting one for the other in an electrophotographic environment as a photoconductor.” 209 USPQ at 759.).
An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
2144.07 Art Recognized Suitability for an Intended Purpose [R-08.2012]
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly
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volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.).
2144.08 Obviousness of Species When Prior Art Teaches Genus [R-07.2015]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time the invention was made," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
I. EXAMINATION OF CLAIMS DIRECTED TO SPECIES BASED UPON A SINGLE PRIOR ART REFERENCE
When a single prior art reference which discloses a genus encompassing the claimed species or subgenus but does not expressly disclose the particular claimed species or subgenus, Office personnel should attempt to find additional prior art to show that the differences between the prior art primary reference and the claimed invention as a whole would have been obvious. Where such additional prior art is not found, Office personnel should consider the factors discussed below to determine whether a single
reference 35 U.S.C. 103 rejection would be appropriate.
II. DETERMINE WHETHER THE CLAIMED SPECIES OR SUBGENUS WOULD HAVE BEEN OBVIOUS TO ONE OF ORDINARY SKILL IN THE PERTINENTARTAT THE TIME THE INVENTION WAS MADE
The patentability of a claim to a specific compound, species, or subgenus embraced by a prior art genus should be analyzed no differently than any other claim for purposes of 35 U.S.C. 103. “The section 103 requirement of unobviousness is no different in chemical cases than with respect to other categories of patentable inventions.” In re Papesch, 315 F.2d 381, 385, 137 USPQ 43, 47 (CCPA 1963). A determination of patentability under 35 U.S.C. 103 should be made upon the facts of the particular case in view of the totality of the circumstances. See, e.g., In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d
1897, 1901 (Fed. Cir. 1990) (en banc). Use of per se rules by Office personnel is improper for determining whether claimed subject matter would have been obvious under 35 U.S.C. 103. See, e.g., In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995); In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994). The fact that a claimed species or subgenus is encompassed by a prior art genus is not sufficient by itself to establish a prima facie case of obviousness. In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) (“The fact that a claimed compound may be encompassed by a disclosed generic formula does not by itself render that compound obvious.”); In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992) (Federal Circuit has “decline[d] to extract from Merck [ & Co. v. Biocraft Laboratories Inc., 874
F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989)] the rule that... regardless of how broad, a disclosure of a chemical genus renders obvious any species that happens to fall within it.”).
A. Establishing a Prima Facie Case of Obviousness
A proper obviousness analysis involves a three-step process. First, Office personnel should establish a prima facie case of unpatentability considering the
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factors set out by the Supreme Court in Graham v. John Deere, 383 U.S. 1, 148 USPQ 459 (1966). See, e.g., In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (“The PTO bears the burden of establishing a case of prima facie obviousness.”); In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Graham at 17-18, 148 USPQ at 467 requires that to make out a case of obviousness, one must:
(A) determine the scope and contents of the prior art;
(B) ascertain the differences between the prior art and the claims in issue;
(C) determine the level of ordinary skill in the pertinent art; and
(D) evaluate any evidence of secondary considerations.
If a prima facie case is established, the burden shifts to applicant to come forward with rebuttal evidence or argument to overcome the prima facie case. See, e.g., Bell, 991 F.2d at 783-84, 26 USPQ2d at 1531; Rijckaert, 9 F.3d at 1532, 28 USPQ2d at 1956; Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444 .
Finally, Office personnel should evaluate the totality of the facts and all of the evidence to determine whether they still support a conclusion that the claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made. Graham, at 17-18, 148 USPQ at 467.
1. Determine the Scope and Content of the Prior Art
As an initial matter, Office personnel should determine the scope and content of the relevant prior art. Each reference must qualify as prior art under 35 U.S.C. 102 (e.g., Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987) (“Before answering Graham’s ‘content’ inquiry, it must be known whether a patent or publication is in the prior art under 35 U.S.C. § 102.”)) and should be analogous art. See MPEP § 2141.01(a) .
In the case of a prior art reference disclosing a genus, Office personnel should make findings as to:
(A) the structure of the disclosed prior art genus and that of any expressly described species or subgenus within the genus;
(B) any physical or chemical properties and utilities disclosed for the genus, as well as any suggested limitations on the usefulness of the genus, and any problems alleged to be addressed by the genus;
(C) the predictability of the technology; and
(D) the number of species encompassed by the genus taking into consideration all of the variables possible.
2. Ascertain the Differences Between the Closest Disclosed Prior Art Species or Subgenus of Record and the Claimed Species or Subgenus
Once the structure of the disclosed prior art genus and that of any expressly described species or subgenus within the genus are identified, Office personnel should compare it to the claimed species or subgenus to determine the differences. Through this comparison, the closest disclosed species or subgenus in the prior art reference should be identified and compared to that claimed. Office personnel should make explicit findings on the similarities and differences between the closest disclosed prior art species or subgenus of record and the claimed species or subgenus including findings relating to similarity of structure, properties and utilities. In Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1537, 218 USPQ 871, 877 (Fed. Cir. 1983), the court noted that “the question under 35 U.S.C. § 103 is not whether the differences [between the claimed invention and the prior art] would have been obvious” but “whether the claimed invention as a whole would have been obvious.” (emphasis in original).
3. Determine the Level of Skill in the Art
Office personnel should evaluate the prior art from the standpoint of the hypothetical person having ordinary skill in the art at the time the claimed invention was made. See, Ryko Mfg. Co. v. Nu-Star Inc., 950 F.2d 714, 718, 21 USPQ2d 1053, 1057 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”); Uniroyal Inc. v. Rudkin-Wiley Corp.,
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837 F.2d 1044, 1050, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988) (evidence must be viewed from position of ordinary skill, not of an expert). In most cases, the only facts of record pertaining to the level of skill in the art will be found within the prior art reference. However, any additional evidence presented by applicant should be evaluated.
4. Determine Whether One of Ordinary Skill in the Art Would Have Been Motivated To Select the Claimed Species or Subgenus
In light of the findings made relating to the three Graham factors, Office personnel should determine whether it would have been obvious to one of ordinary skill in the relevant art to make the claimed invention as a whole, i.e., to select the claimed species or subgenus from the disclosed prior art genus. To address this key issue, Office personnel should consider all relevant prior art teachings, focusing on the following, where present.
(a) Consider the Size of the Genus
Consider the size of the prior art genus, bearing in mind that size alone cannot support an obviousness rejection. There is no absolute correlation between the size of the prior art genus and a conclusion of obviousness. See, e.g., Baird, 16 F.3d at 383, 29 USPQ2d at 1552. Thus, the mere fact that a prior art genus contains a small number of members does not create a per se rule of obviousness. However, a genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. For example, it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because “one skilled in [the] art would... envisage each member” of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962) (emphasis in original). More specifically, the court in Petering stated:
A simple calculation will show that, excluding isomerism within certain of the R groups, the limited class we find in Karrer contains only 20 compounds. However, we wish to point out that it is not the mere number of compounds in
this limited class which is significant here but, rather, the total circumstances involved, including such factors as the limited number of variations for R, only two alternatives for Y and Z, no alternatives for the other ring positions, and a large unchanging parent structural nucleus. With these circumstances in mind, it is our opinion that Karrer has described to those with ordinary skill in this art each of the various permutations here involved as fully as if he had drawn each structural formula or had written each name.
Id. (emphasis in original). Accord In re Schaumann, 572 F.2d 312, 316, 197 USPQ 5, 9 (CCPA 1978) (prior art genus encompassing claimed species which disclosed preference for lower alkyl secondary amines and properties possessed by the claimed compound constituted description of claimed compound for purposes of pre-AIA 35 U.S.C. 102(b)). C.f., In re Ruschig, 343 F.2d 965, 974, 145 USPQ 274, 282 (CCPA 1965) (Rejection of claimed compound in light of prior art genus based on Petering is not appropriate where the prior art does not disclose a small recognizable class of compounds with common properties.).
(b) Consider the Express Teachings
If the prior art reference expressly teaches a particular reason to select the claimed species or subgenus, Office personnel should point out the express disclosure and explain why it would have been obvious to one of ordinary skill in the art to select the claimed invention. An express teaching may be based on a statement in the prior art reference such as an art recognized equivalence. For example, see Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989) (holding claims directed to diuretic compositions comprising a specific mixture of amiloride and hydrochlorothiazide were obvious over a prior art reference expressly teaching that amiloride was a pyrazinoylguanidine which could be coadministered with potassium excreting diuretic agents, including hydrochlorothiazide which was a named example, to produce a diuretic with desirable sodium and potassium eliminating properties). See also, In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1312 (Fed. Cir. 1996) (holding it would have been obvious
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to combine teachings of prior art to achieve claimed invention where one reference specifically refers to the other).
(c) Consider the Teachings of Structural Similarity
Consider any teachings of a “typical,” “preferred,” or “optimum” species or subgenus within the disclosed genus. If such a prior art species or subgenus is structurally similar to that claimed, its disclosure may provide a reason for one of ordinary skill in the art to choose the claimed species or subgenus from the genus, based on the reasonable expectation that structurally similar species usually have similar properties. See, e.g., Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also
Deuel, 51 F.3d at 1558, 34 USPQ2d at 1214 (“Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.”).
In making an obviousness determination, Office personnel should consider the number of variables which must be selected or modified, and the nature and significance of the differences between the prior art and the claimed invention. See, e.g., In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992) (reversing obviousness rejection of novel dicamba salt with acyclic structure over broad prior art genus encompassing claimed salt, where disclosed examples of genus were dissimilar in structure, lacking an ether linkage or being cyclic); In re Susi, 440 F.2d 442, 445, 169 USPQ 423, 425
(CCPA 1971) (the difference from the particularly preferred subgenus of the prior art was a hydroxyl group, a difference conceded by applicant “to be of little importance”). In the area of biotechnology, an exemplified species may differ from a claimed species by a conservative substitution (“the replacement in a protein of one amino acid by another, chemically similar, amino acid... [which] is generally expected to lead to either no change or only a small change in the properties of the protein.” Dictionary of Biochemistry and Molecular Biology 97 (John Wiley & Sons, 2d ed. 1989)). The effect
of a conservative substitution on protein function depends on the nature of the substitution and its location in the chain. Although at some locations a conservative substitution may be benign, in some proteins only one amino acid is allowed at a given position. For example, the gain or loss of even one methyl group can destabilize the structure if close packing is required in the interior of domains. James Darnell et al., Molecular Cell Biology 51 (2d ed. 1990).
The closer the physical and/or chemical similarities between the claimed species or subgenus and any exemplary species or subgenus disclosed in the prior art, the greater the expectation that the claimed subject matter will function in an equivalent manner to the genus. See, e.g., Dillon, 919 F.2d at 696, 16 USPQ2d at 1904 (and cases cited therein). Cf. Baird, 16 F.3d at 382-83, 29 USPQ2d at 1552 (disclosure of dissimilar species can provide teaching away).
Similarly, consider any teaching or suggestion in the reference of a preferred species or subgenus that is significantly different in structure from the claimed species or subgenus. Such a teaching may weigh against selecting the claimed species or subgenus and thus against a determination of obviousness. Baird, 16 F.3d at 382-83, 29 USPQ2d at 1552 (reversing obviousness rejection of species in view of large size of genus and disclosed “optimum” species which differed greatly from and were more complex than the claimed species); Jones, 958 F.2d at 350, 21 USPQ2d at 1943 (reversing obviousness rejection of novel dicamba salt with acyclic structure over broad prior art genus encompassing claimed salt, where disclosed examples of genus were dissimilar in structure, lacking an ether linkage or being cyclic). For example, teachings of preferred species of a complex nature within a disclosed genus may motivate an artisan of ordinary skill to make similar complex species and thus teach away from making simple species within the genus. Baird, 16 F.3d at 382, 29 USPQ2d at 1552. See also Jones, 958 F.2d at 350, 21 USPQ2d at 1943 (disclosed salts of genus held not sufficiently similar in structure to render claimed species prima facie obvious).
Concepts used to analyze the structural similarity of chemical compounds in other types of chemical cases are equally useful in analyzing genus-species cases.
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For example, a claimed tetra-orthoester fuel composition was held to be obvious in light of a prior art tri-orthoester fuel composition based on their structural and chemical similarity and similar use as fuel additives. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1900-02. Likewise, claims to amitriptyline used as an antidepressant were held obvious in light of the structural similarity to imipramine, a known antidepressant prior art compound, where both compounds were tricyclic dibenzo compounds and differed structurally only in the replacement of the unsaturated carbon atom in the center ring of amitriptyline with a nitrogen atom in imipramine. In re Merck & Co., 800 F.2d 1091, 1096-97, 231 USPQ 375, 378-79 (Fed. Cir. 1986). Other structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re May, 574 F.2d 1082, 1093-95, 197 USPQ 601, 610-11 (CCPA 1978) (stereoisomers); In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers); In re Hoch, 428 F.2d 1341, 1344, 166 USPQ 406, 409 (CCPA 1970) (acid and ethyl ester); In re Druey, 319 F.2d 237, 240, 138 USPQ 39, 41
(CCPA 1963) (omission of methyl group from pyrazole ring). Generally, some teaching of a structural similarity will be necessary to suggest selection of the claimed species or subgenus. Id.
(d) Consider the Teachings of Similar Properties or Uses
Consider the properties and utilities of the structurally similar prior art species or subgenus. It is the properties and utilities that provide real world motivation for a person of ordinary skill to make species structurally similar to those in the prior art. Dillon, 919 F.2d at 697, 16 USPQ2d at 1905; In re Stemniski, 444 F.2d 581, 586, 170 USPQ 343, 348 (CCPA 1971). Conversely, lack of any known useful properties weighs against a finding of motivation to make or select a species or subgenus. In re Albrecht, 514 F.2d 1389, 1392, 1395-96, 185 USPQ 585, 587, 590 (CCPA 1975) (The prior art compound so irritated the skin that it could not be regarded as useful for the disclosed anesthetic purpose, and therefore a person skilled in the art would not have been motivated to make related compounds.); Stemniski, 444 F.2d at 586, 170 USPQ at 348 (close structural similarity alone is not sufficient to create
a prima facie case of obviousness when the reference compounds lack utility, and thus there is no motivation to make related compounds.). However, the prior art need not disclose a newly discovered property in order for there to be a prima facie case of obviousness. Dillon, 919 F.2d at 697, 16 USPQ2d at 1904-05 (and cases cited therein). If the claimed invention and the structurally similar prior art species share any useful property, that will generally be sufficient to motivate an artisan of ordinary skill to make the claimed species, e.g., id. For example, based on a finding that a tri-orthoester and a tetra-orthoester behave similarly in certain chemical reactions, it has been held that one of ordinary skill in the relevant art would have been motivated to select either structure. 919 F.2d at 692, 16 USPQ2d at 1900-01. In fact, similar properties may normally be presumed when compounds are very close in structure. Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also In re Grabiak, 769 F.2d 729, 731, 226 USPQ 870, 871 (Fed. Cir. 1985) (“When chemical compounds have ‘very close’ structural similarities and similar utilities, without more a prima facie case may be made.”). Thus, evidence of similar properties or evidence of any useful properties disclosed in the prior art that would be expected to be shared by the claimed invention weighs in favor of a conclusion that the claimed invention would have been obvious. Dillon, 919 F.2d at 697-98, 16 USPQ2d at 1905; In re Wilder, 563 F.2d 457, 461, 195 USPQ 426, 430 (CCPA 1977); In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
(e) Consider the Predictability of the Technology
Consider the predictability of the technology. See, e.g., Dillon, 919 F.2d at 692-97, 16 USPQ2d at 1901-05; In re Grabiak, 769 F.2d 729, 732-33, 226 USPQ 870, 872 (Fed. Cir. 1985). If the technology is unpredictable, it is less likely that structurally similar species will render a claimed species obvious because it may not be reasonable to infer that they would share similar properties. See, e.g. , In re May, 574 F.2d 1082, 1094, 197 USPQ 601, 611 (CCPA 1978) (prima facie obviousness of claimed analgesic compound based on structurally similar prior art isomer was rebutted with evidence demonstrating that analgesia and addiction properties could not be reliably predicted on the basis of chemical structure);
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In re Schechter, 205 F.2d 185, 191, 98 USPQ 144, 150 (CCPA 1953) (unpredictability in the insecticide field, with homologs, isomers and analogs of known effective insecticides having proven ineffective as insecticides, was considered as a factor weighing against a conclusion of obviousness of the claimed compounds). However, obviousness does not require absolute predictability, only a reasonable expectation of success, i.e., a reasonable expectation of obtaining similar properties. See , e.g. , In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
(f) Consider Any Other Teaching To Support the Selection of the Species or Subgenus
The categories of relevant teachings enumerated above are those most frequently encountered in a genus-species case, but they are not exclusive. Office personnel should consider the totality of the evidence in each case. In unusual cases, there may be other relevant teachings sufficient to support the selection of the species or subgenus and, therefore, a conclusion of obviousness.
5. Make Express Fact-Findings and Determine Whether They Support a Prima Facie Case of Obviousness
Based on the evidence as a whole (In re Bell, 991 F.2d 781,784, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1057 (Fed. Cir. 1990)), Office personnel should make express fact-findings relating to the Graham factors, focusing primarily on the prior art teachings discussed above. The fact-findings should specifically articulate what teachings or suggestions in the prior art would have motivated one of ordinary skill in the art to select the claimed species or subgenus. Kulling, 897 F.2d at 1149, 14 USPQ2d at 1058; Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1579 n.42, 1 USQP2d 1593, 1606 n.42 (Fed. Cir. 1987). Thereafter, it should be determined whether these findings, considered as a whole, support a prima facie case that the claimed invention would have been obvious to one of
ordinary skill in the relevant art at the time the invention was made.
2144.09 Close Structural Similarity Between Chemical Compounds (Homologs,Analogues, Isomers) [R-08.2012]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time the invention was made," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
I. REJECTION BASED ON CLOSE STRUCTURAL SIMILARITY IS FOUNDED ON THE EXPECTATION THAT COMPOUNDS SIMILAR IN STRUCTURE WILL HAVE SIMILAR PROPERTIES
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, subsection II.A.4.(c).
II. HOMOLOGY AND ISOMERISM ARE FACTS WHICH MUST BE CONSIDERED WITH ALL OTHER RELEVANT FACTS IN DETERMINING OBVIOUSNESS
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2-
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groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious).
Isomers having the same empirical formula but different structures are not necessarily considered equivalent by chemists skilled in the art and therefore are not necessarily suggestive of each other. Ex parte Mowry, 91 USPQ 219 (Bd. App. 1950) (claimed cyclohexylstyrene not prima facie obvious over prior art isohexylstyrene). Similarly, homologs which are far removed from adjacent homologs may not be expected to have similar properties. In re Mills, 281 F.2d 218, 126 USPQ 513 (CCPA 1960) (prior art disclosure of C8 to C12 alkyl sulfates was
not sufficient to render prima facie obvious claimed C1 alkyl sulfate).
Homology and isomerism involve close structural similarity which must be considered with all other relevant facts in determining the issue of obviousness. In re Mills, 281 F.2d 218, 126 USPQ 513 (CCPA 1960); In re Wiechert, 370 F.2d 927, 152 USPQ 247 (CCPA 1967). Homology should not be automatically equated with prima facie obviousness because the claimed invention and the prior art must each be viewed “as a whole.” In re Langer, 465 F.2d 896, 175 USPQ 169 (CCPA 1972) (Claims to a polymerization process using a sterically hindered amine were held unobvious over a similar prior art process because the prior art disclosed a large number of unhindered amines and only one sterically hindered amine (which differed from a claimed amine by 3 carbon atoms), and therefore the reference as a whole did not apprise the ordinary artisan of the significance of hindered amines as a class.).
III. PRESENCE OF A TRUE HOMOLOGOUS OR ISOMERIC RELATIONSHIP IS NOT CONTROLLING
Prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious. In re Payne, 606 F.2d 303,
203 USPQ 245 (CCPA 1979) (Claimed and prior
art compounds were both directed to heterocyclic carbamoyloximino compounds having pesticidal activity. The only structural difference between the claimed and prior art compounds was that the ring structures of the claimed compounds had two carbon atoms between two sulfur atoms whereas the prior art ring structures had either one or three carbon atoms between two sulfur atoms. The court held that although the prior art compounds were not true homologs or isomers of the claimed compounds, the similarity between the chemical structures and properties is sufficiently close that one of ordinary skill in the art would have been motivated to make the claimed compounds in searching for new pesticides.).
See also In re Mayne, 104 F.3d 1339, 41 USPQ2d 1451 (Fed. Cir. 1997) (claimed protein was held to be obvious in light of structural similarities to the prior art, including known structural similarity of Ile and Lev); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (claimed and prior art compounds used in a method of treating depression would have been expected to have similar activity because the structural difference between the compounds involved a known bioisosteric replacement) (see MPEP § 2144.08, subsection II.A.4(c) for a more detailed discussion of the facts in the Mayne and Merck cases); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (The tri-orthoester fuel compositions of the prior art and the claimed tetra-orthoester fuel compositions would have been expected to have similar properties based on close structural and chemical similarity between the orthoesters and the fact that both the prior art and applicant used the orthoesters as fuel additives.) (See MPEP § 2144 for a more detailed discussion of the facts in the Dillon case.).
Compare In re Grabiak, 769 F.2d 729, 226 USPQ 871 (Fed. Cir. 1985) (substitution of a thioester group for an ester group in an herbicidal safener compound was not suggested by the prior art); In re Bell, 991 F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993) (The established relationship between a nucleic acid and the protein it encodes in the genetic code does not render a gene prima facie obvious over its corresponding protein in the same way that closely related structures in chemistry may create a prima facie case because there are a vast number
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of nucleotide sequences that might encode for a specific protein as a result of degeneracy in the genetic code (i.e., the fact that most amino acids are specified by more than one nucleotide sequence or codon).); In re Deuel, 51 F.3d 1552, 1558-59, 34 USPQ2d 1210, 1215 (Fed. Cir. 1995) (“A prior art disclosure of the amino acid sequence of a protein does not necessarily render particular DNA molecules encoding the protein obvious because the redundancy of the genetic code permits one to hypothesize an enormous number of DNA sequences coding for the protein.” The existence of a general method of gene cloning in the prior art is not sufficient, without more, to render obvious a particular cDNA molecule.).
IV. PRESENCE OR ABSENCE OF PRIOR ART SUGGESTION OF METHOD OF MAKING A CLAIMED COMPOUND MAY BE RELEVANT IN DETERMINING PRIMA FACIE OBVIOUSNESS
“[T]he presence—or absence—of a suitably operative, obvious process for making a composition of matter may have an ultimate bearing on whether that composition is obvious—or nonobvious—under 35 U.S.C. 103.” In re Maloney, 411 F.2d 1321, 1323, 162 USPQ 98, 100 (CCPA 1969).
“[I]f the prior art of record fails to disclose or render obvious a method for making a claimed compound, at the time the invention was made, it may not be legally concluded that the compound itself is in the possession of the public. In this context, we say that the absence of a known or obvious process for making the claimed compounds overcomes a presumption that the compounds are obvious, based on the close relationships between their structures and those of prior art compounds.” In re Hoeksema, 399 F.2d 269, 274-75, 158 USPQ 597, 601 (CCPA 1968).
See In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979) for a general discussion of circumstances under which the prior art suggests methods for making novel compounds which are of close structural similarity to compounds known in the prior art. It may be proper to apply “methodology in rejecting product claims under 35 U.S.C. 103, depending on the particular facts of the case, the manner and context in which methodology applies,
and the overall logic of the rejection.” Ex parte Goldgaber, 41 USPQ2d 1172, 1176 (Bd. Pat. App. & Inter. 1996).
V. PRESUMPTION OF OBVIOUSNESS BASED ON STRUCTURAL SIMILARITY IS OVERCOME WHERE THERE IS NO REASONABLE EXPECTATION OF SIMILAR PROPERTIES
The presumption of obviousness based on a reference disclosing structurally similar compounds may be overcome where there is evidence showing there is no reasonable expectation of similar properties in structurally similar compounds. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (appellant produced sufficient evidence to establish a substantial degree of unpredictability in the pertinent art area, and thereby rebutted the presumption that structurally similar compounds have similar properties); In re Schechter, 205 F.2d 185, 98 USPQ 144 (CCPA 1953). See also Ex parte Blattner, 2 USPQ2d 2047 (Bd. Pat. App. & Inter. 1987) (Claims directed to compounds containing a 7-membered ring were rejected as prima facie obvious over a reference which taught 5- and 6-membered ring homologs of the claimed compounds. The Board reversed the rejection because the prior art taught that the compounds containing a 5-membered ring possessed the opposite utility of the compounds containing the 6-membered ring, undermining the examiner’s asserted prima facie case arising from an expectation of similar results in the claimed compounds which contain a 7-membered ring.).
VI. IF PRIOR ART COMPOUNDS HAVE NO UTILITY, OR UTILITY ONLY AS INTERMEDIATES, CLAIMED STRUCTURALLY SIMILAR COMPOUNDS MAY NOT BE PRIMA FACIE OBVIOUS OVER THE PRIOR ART
If the prior art does not teach any specific or significant utility for the disclosed compounds, then the prior art is unlikely to render structurally similar claims prima facie obvious in the absence of any reason for one of ordinary skill in the art to make the reference compounds or any structurally related compounds. In re Stemniski, 444 F.2d 581, 170 USPQ 343 (CCPA 1971).
See also In re Albrecht, 514 F.2d 1389, 1396, 185 USPQ 585, 590 (CCPA 1975) (prior art reference
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studied the local anesthetic activity of various compounds, and taught that compounds structurally similar to those claimed were irritating to human skin and therefore “cannot be regarded as useful anesthetics.” 514 F.2d at 1393, 185 USPQ at 587).
Similarly, if the prior art merely discloses compounds as intermediates in the production of a final product, one of ordinary skill in the art would not ordinarily stop the reference synthesis and investigate the intermediate compounds with an expectation of arriving at claimed compounds which have different uses. In re Lalu, 747 F.2d 703, 223 USPQ 1257 (Fed. Cir. 1984).
VII. PRIMA FACIE CASE REBUTTABLE BY EVIDENCE OF SUPERIOR OR UNEXPECTED RESULTS
A prima facie case of obviousness based on structural similarity is rebuttable by proof that the claimed compounds possess unexpectedly advantageous or superior properties. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (affidavit evidence which showed that claimed triethylated compounds possessed anti-inflammatory activity whereas prior art trimethylated compounds did not was sufficient to overcome obviousness rejection based on the homologous relationship between the prior art and claimed compounds); In re Wiechert, 370 F.2d 927, 152 USPQ 247 (CCPA 1967) (a 7-fold improvement of activity over the prior art held sufficient to rebut prima facie obviousness based on close structural similarity).
However, a claimed compound may be obvious because it was suggested by, or structurally similar to, a prior art compound even though a particular benefit of the claimed compound asserted by patentee is not expressly disclosed in the prior art. It is the differences in fact in their respective properties which are determinative of nonobviousness. If the prior art compound does in fact possess a particular benefit, even though the benefit is not recognized in the prior art, applicant’s recognition of the benefit is not in itself sufficient to distinguish the claimed compound from the prior art. In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991).
See MPEP § 716.02 - § 716.02(g) for a discussion of evidence alleging unexpectedly advantageous or superior results.
2145 Consideration of Applicant’s Rebuttal Arguments [R-08.2012]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time the invention was made," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ
191, 196 (Fed. Cir. 1984).
Office personnel should consider all rebuttal arguments and evidence presented by applicants. See, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687 (error not to consider evidence presented in the specification). C.f., In re Alton, 76 F.3d 1168, 37 USPQ2d 1578 (Fed. Cir. 1996) (error not to consider factual evidence submitted to counter a 35 U.S.C. 112 rejection); In re Beattie, 974 F.2d 1309, 1313, 24 USPQ2d 1040, 1042-43 (Fed. Cir. 1992) (Office personnel should consider declarations from those skilled in the art praising the claimed invention and opining that the art teaches away from the invention.); Piasecki, 745 F.2d at 1472, 223 USPQ at 788 (“[Rebuttal evidence] may relate to any of
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the Graham factors including the so-called secondary considerations.”).
Rebuttal evidence may include evidence of “secondary considerations,” such as “commercial success, long felt but unsolved needs, [and] failure of others.” Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 4459, 467. See also, e.g., In re Piasecki, 745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir. 1984) (commercial success). Rebuttal evidence may also include evidence that the claimed invention yields unexpectedly improved properties or properties not present in the prior art. Rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997) (conclusory statements that claimed compound possesses unusually low immune response or unexpected biological activity that is unsupported by comparative data held insufficient to overcome prima facie case of obviousness). Rebuttal evidence may include evidence that the claimed invention was copied by others. See, e.g., In re GPAC, 57 F.3d 1573, 1580, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995); Hybritech Inc. v. Monoclonal Antibodies, 802 F.2d 1367, 1380, 231 USPQ 81, 90 (Fed. Cir. 1986). It may also include evidence of the state of the art, the level of skill in the art, and the beliefs of those skilled in the art. See, e.g., In re Oelrich, 579 F.2d 86, 91-92, 198 USPQ 210, 214 (CCPA 1978) (Expert opinions regarding the level of skill in the art were probative of the Nonobviousness of the claimed invention.); Piasecki, 745 F.2d at 1471, 1473-74, 223 USPQ at 790 (Evidence of nontechnological nature is pertinent to the conclusion of obviousness. The declarations of those skilled in the art regarding the need for the invention and its reception by the art were improperly discounted by the Board.); Beattie, 974 F.2d at 1313, 24 USPQ2d at 1042-43 (Seven declarations provided by music teachers opining that the art teaches away from the claimed invention must be considered, but were not probative because they did not contain facts and did not deal with the specific prior art that was the subject of the rejection.). For example, rebuttal evidence may include a showing that the prior art fails to disclose or render obvious a method for
making the compound, which would preclude a conclusion of obviousness of the compound. A conclusion of obviousness requires that the reference(s) relied upon be enabling in that it put the public in possession of the claimed invention. The court in In re Hoeksema, 399 F.2d 269, 274, 158 USPQ 596, 601 (CCPA 1968), stated:
Thus, upon careful reconsideration it is our view that if the prior art of record fails to disclose or render obvious a method for making a claimed compound, at the time the invention was made, it may not be legally concluded that the compound itself is in the possession of the public. [footnote omitted.] In this context, we say that the absence of a known or obvious process for making the claimed compounds overcomes a presumption that the compounds are obvious, based on close relationships between their structures and those of prior art compounds.
The Hoeksema court further noted that once a prima facie case of obviousness is made by the PTO through citation of references, the burden is on the applicant to produce contrary evidence establishing that the reference being relied on would not enable a skilled artisan to produce the different compounds claimed. Id. at 274-75, 158 USPQ at 601. See also Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 295, 297, 227 USPQ 657, 666, 667 (Fed. Cir. 1985) (citing Hoeksema for the proposition above); In re Grose, 592 F.2d 1161, 1168, 201 USPQ 57, 63-64 (CCPA 1979) (“One of the assumptions underlying a prima facie obviousness rejection based upon a structural relationship between compounds, such as adjacent homologs, is that a method disclosed for producing one would provide those skilled in the art with a method for producing the other... Failure of the prior art to disclose or render obvious a method for making any composition of matter, whether a compound or a mixture of compounds like a zeolite, precludes a conclusion that the composition would have been obvious.”).
Consideration of rebuttal evidence and arguments requires Office personnel to weigh the proffered evidence and arguments. Office personnel should avoid giving evidence no weight, except in rare
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circumstances. Id. See also In re Alton, 76 F.3d 1168, 1174-75, 37 USPQ2d 1578, 1582-83 (Fed. Cir. 1996). However, to be entitled to substantial weight, the applicant should establish a nexus between the rebuttal evidence and the claimed invention, i.e., objective evidence of nonobviousness must be attributable to the claimed invention. The Federal Circuit has acknowledged that applicant bears the burden of establishing nexus, stating:
In the ex parte process of examining a patent application, however, the PTO lacks the means or resources to gather evidence which supports or refutes the applicant’s assertion that the sales constitute commercial success. C.f. Ex parte Remark, 15 USPQ2d 1498, 1503 ([BPAI] 1990) (evidentiary routine of shifting burdens in civil proceedings inappropriate in ex parte prosecution proceedings because examiner has no available means for adducing evidence). Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success.
In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996). See also GPAC, 57 F.3d at 1580, 35 USPQ2d at 1121; In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994) (Evidence of commercial success of articles not covered by the claims subject to the 35 U.S.C. 103 rejection was not probative of nonobviousness.). Additionally, the evidence must be reasonably commensurate in scope with the claimed invention. See, e.g., In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990); In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 777 (Fed. Cir. 1983). In re Soni, 54 F.3d 746, 34 USPQ2d 1684 (Fed. Cir. 1995) does not change this analysis. In Soni, the court declined to consider the Office’s argument that the evidence of nonobviousness was not commensurate in scope with the claim because it had not been raised by the examiner Id. 54 F.3d at 751, 34 USPQ2d at 1688.
When considering whether proffered evidence is commensurate in scope with the claimed invention, Office personnel should not require the applicant to show unexpected results over the entire range of properties possessed by a chemical compound or composition. See, e.g., In re Chupp, 816 F.2d 643,
646, 2 USPQ2d 1437, 1439 (Fed. Cir. 1987). Evidence that the compound or composition possesses superior and unexpected properties in one of a spectrum of common properties can be sufficient to rebut a prima facie case of obviousness. Id.
For example, a showing of unexpected results for a single member of a claimed subgenus, or a narrow portion of a claimed range would be sufficient to rebut a prima facie case of obviousness if a skilled artisan “could ascertain a trend in the exemplified data that would allow him to reasonably extend the probative value thereof.” In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Evidence of the unobviousness of a broad range can be proven by a narrower range when one skilled in the art could ascertain a trend that would allow him to reasonably extend the probative value thereof.). But see, Grasselli, 713 F.2d at 743, 218 USPQ at 778 (evidence of superior properties for sodium containing composition insufficient to establish the non-obviousness of broad claims for a catalyst with “an alkali metal” where it was well known in the catalyst art that different alkali metals were not interchangeable and applicant had shown unexpected results only for sodium containing materials); In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978) (evidence of superior properties in one species insufficient to establish the nonobviousness of a subgenus containing hundreds of compounds); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (one test not sufficient where there was no adequate basis for concluding the other claimed compounds would behave the same way). However, an exemplary showing may be sufficient to establish a reasonable correlation between the showing and the entire scope of the claim, when viewed by a skilled artisan. See, e.g., Chupp, 816 F.2d at 646, 2 USPQ2d at 1439; Clemens, 622 F.2d at 1036, 206 USPQ at 296. On the other hand, evidence of an unexpected property may not be sufficient regardless of the scope of the showing. Usually, a showing of unexpected results is sufficient to overcome a prima facie case of obviousness. See, e.g., In re Albrecht, 514 F.2d 1389, 1396, 185 USPQ 585, 590 (CCPA 1975). However, where the claims are not limited to a particular use, and where the prior art provides other motivation to select a particular species or subgenus, a showing of a new use may not be
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sufficient to confer patentability. See Dillon, 919 F.2d at 692, 16 USPQ2d at 1900-01. Accordingly, each case should be evaluated individually based on the totality of the circumstances.
Evidence pertaining to secondary considerations must be taken into account whenever present; however, it does not necessarily control the obviousness conclusion. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372, 82 USPQ2d 1321, 1339 (Fed. Cir. 2007) (“the record establish [ed] such a strong case of obviousness” that allegedly unexpectedly superior results were ultimately insufficient to overcome obviousness conclusion); Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157, 1162, 82 USPQ2d 1687, 1692 (Fed. Cir. 2007) (“given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion” of obviousness); and Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988). Office personnel should not evaluate rebuttal evidence for its “knockdown” value against the prima facie case, Piasecki, 745 F.2d at 1473, 223 USPQ at 788, or summarily dismiss it as not compelling or insufficient. If the evidence is deemed insufficient to rebut the prima facie case of obviousness, Office personnel should specifically set forth the facts and reasoning that justify this conclusion. See MPEP § 716 - § 716.10 for additional information pertaining to the evaluation of rebuttal evidence submitted under 37 CFR 1.132.
Many basic approaches that a practitioner may use to demonstrate nonobviousness also continue to apply in the post- KSR era. Since it is now clear that a strict teaching-suggestion-motivation approach is not the only way to establish a prima facie case of obviousness, it is true that practitioners have been required to shift the emphasis of their nonobviousness arguments to a certain degree. However, familiar lines of argument still apply, including teaching away from the claimed invention by the prior art, lack of a reasonable expectation of success, and unexpected results. Indeed, they may have even taken on added importance in view of the recognition in KSR of a variety of possible rationales.
The following cases exemplify the continued application of the principle that when evidence has been presented to rebut an obviousness rejection, it should not be evaluated simply for its “knockdown” value. Rather, all evidence must be reweighed to determine whether the claims are nonobvious.
Example 1:
The claims at issue in PharmaStem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 83 USPQ2d 1289 (Fed. Cir. 2007), were directed to compositions comprising hematopoietic stem cells from umbilical cord or placental blood, and to methods of using such compositions for treatment of blood and immune system disorders. The composition claims required that the stem cells be present in an amount sufficient to effect hematopoietic reconstitution when administered to a human adult. The trial court had found that PharmaStem’s patents were infringed and not invalid on obviousness or other grounds. On appeal, the Federal Circuit reversed the district court, determining that the claims were invalid for obviousness.
The Federal Circuit discussed the evidence presented at trial. It pointed out that the patentee, PharmaStem, had not invented an entirely new procedure or new composition. Rather, PharmaStem’s own specification acknowledged that it was already known in the prior art that umbilical cord and placental blood-based compositions contained hematopoietic stem cells, and that hematopoietic stem cells were useful for the purpose of hematopoietic reconstitution. PharmaStem’s contribution was to provide experimental proof that umbilical cord and placental blood could be used to effect hematopoietic reconstitution in mice. By extrapolation, one of ordinary skill in the art would have expected this reconstitution method to work in humans as well.
The court rejected PharmaStem’s expert testimony that hematopoietic stem cells had not been proved to exist in cord blood prior to the experiments described in PharmaStem’s patents. The court explained that the expert testimony was contrary to the inventors’ admissions in the specification, as well as prior art teachings that disclosed stem cells in cord blood. In this case, PharmaStem’s evidence of nonobviousness was outweighed by contradictory evidence.
Despite PharmaStem’s useful experimental validation of hematopoietic reconstitution using hematopoietic stem cells from umbilical cord and placental blood, the Federal Circuit found that the claims at issue would have been obvious. There had been ample suggestion in the prior art that the claimed method would have worked. Absolute predictability is not a necessary prerequisite to a case of obviousness. Rather, a degree of predictability that one of ordinary skill would have found to be reasonable is sufficient. The Federal Circuit concluded that “[g]ood science and useful contributions do not necessarily result in patentability.” Id. at 1364, 83 USPQ2d at 1304.
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Example 2:
It was found to be an error in In re Sullivan, 498 F.3d 1345, 84 USPQ2d 1034 (Fed. Cir. 2007), for the Board to fail to consider evidence submitted to rebut a prima facie case of obviousness.
The claimed invention was directed to an antivenom composition comprising F(ab) fragments used to treat venomous rattlesnake bites. The composition was created from antibody molecules that include three fragments, F(ab)2, F(ab) and F(c), which have separate properties and utilities. There have been commercially available antivenom products that consisted of whole antibodies and F(ab)2 fragments, but researchers had not experimented with antivenoms containing only F(ab) fragments because it was believed that their unique properties would prevent them from decreasing the toxicity of snake venom. The inventor, Sullivan, discovered that F(ab) fragments are effective at neutralizing the lethality of rattlesnake venom, while reducing the occurrence of adverse immune reactions in humans. On appeal of the examiner’s rejection, the Board held that the claim was obvious because all the elements of the claimed composition were accounted for in the prior art, and that the composition taught by that prior art would have been expected by a person of ordinary skill in the art at the time the invention was made to neutralize the lethality of the venom of a rattlesnake.
Rebuttal evidence had not been considered by the Board because it considered the evidence to relate to the intended use of the claimed composition as an antivenom, rather than the composition itself. Appellant successfully argued that even if the Board had shown a prima facie case of obviousness, the extensive rebuttal evidence must be considered. The evidence included three expert declarations submitted to show that the prior art taught away from the claimed invention, an unexpected property or result from the use of F(ab) fragment antivenom, and why those having ordinary skill in the art expected antivenoms comprising F(ab) fragments to fail. The declarations related to more than the use of the claimed composition. While a statement of intended use may not render a known composition patentable, the claimed composition was not known, and whether it would have been obvious depends upon consideration of the rebuttal evidence. Appellant did not concede that the only distinguishing factor of its composition is the statement of intended use and extensively argued that its claimed composition exhibits the unexpected property of neutralizing the lethality of rattlesnake venom while reducing the occurrence of adverse immune reactions in humans. The Federal Circuit found that such a use and unexpected property cannot be ignored – the unexpected property is relevant and thus the declarations describing it should have been considered.
Nonobviousness can be shown when a person of ordinary skill in the art would not have reasonably predicted the claimed invention based on the prior art, and the resulting invention would not have been expected. All evidence must be considered when properly presented.
Example 3:
The case of Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 94 USPQ2d 1385 (Fed. Cir. 2010), involved a disposable
protective covering for the portion of a hearing aid that is inserted into the ear canal. The covering was such that it could be readily replaced by a user as needed.
At the district court, Shure had argued that Hearing Components’ patents were obvious over one or more of three different combinations of prior art references. The jury disagreed, and determined that the claims were nonobvious. The district court upheld the jury verdict, stating that in view of the conflicting evidence presented by the parties as to the teachings of the references, motivation to combine, and secondary considerations, the nonobviousness verdict was sufficiently grounded in the evidence.
Shure appealed to the Federal Circuit, but the Federal Circuit agreed with the district court that the jury’s nonobviousness verdict had been supported by substantial evidence. Although Shure had argued before the jury that the Carlisle reference taught an ear piece positioned inside the ear canal, Hearing Components’ credible witness countered that only the molded duct and not the ear piece itself was taught by Carlisle as being inside the ear canal. On the issue of combining references, Shure’s witness had given testimony described as “rather sparse, and lacking in specific details.” Id. at 1364, 94 USPQ2d at 1397. In contradistinction, Hearing Components’ witness “described particular reasons why one skilled in the art would not have been motivated to combine the references.” Id. Finally, as to secondary considerations, the Federal Circuit determined that Hearing Components had shown a nexus between the commercial success of its product and the patent by providing evidence that “the licensing fee for a covered product was more than cut in half immediately upon expiration” of the patent.
Although the Hearing Components case involves substantial evidence of nonobviousness in a jury verdict, it is nevertheless instructive for Office personnel on the matter of weighing evidence. Office personnel routinely must consider evidence in the form of prior art references, statements in the specification, or declarations under 37 CFR 1.131 or 1.132 . Other forms of evidence may also be presented during prosecution. Office personnel are reminded that evidence that has been presented in a timely manner should not be ignored, but rather should be considered on the record. However, not all evidence need be accorded the same weight. In determining the relative weight to accord to rebuttal evidence, considerations such as whether a nexus exists between the claimed invention and the proffered evidence, and whether the evidence is commensurate in scope with the claimed invention, are appropriate. The mere presence of some credible rebuttal evidence does not dictate that an obviousness rejection must always be withdrawn. See MPEP § 2145. Office personnel must consider the appropriate weight to be accorded to each piece of evidence. An obviousness rejection should be made or maintained only if evidence of obviousness outweighs evidence of nonobviousness. See MPEP § 706, subsection I. (“The standard to be applied in all cases is the ‘preponderance of the evidence’ test. In other words, an examiner should reject a claim if, in view of the prior art and evidence of record, it is more likely than not that the claim is unpatentable.”). MPEP § 716.01(d) provides further guidance on weighing evidence in making a determination of patentability.
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I. ARGUMENT DOES NOT REPLACE EVIDENCE WHERE EVIDENCE IS NECESSARY
Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art.
The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration.
II. ARGUING ADDITIONAL ADVANTAGES OR LATENT PROPERTIES
Prima Facie Obviousness Is Not Rebutted by Merely Recognizing Additional Advantages or Latent Properties Present But Not Recognized in the Prior Art
Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) “would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art.” 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d
1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness, however the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.).
“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) (“The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention.”).
In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) discussed in MPEP § 2144 are also pertinent to this issue.
See MPEP § 716.02 - § 716.02(g) for a discussion of declaratory evidence alleging unexpected results.
III. ARGUING THAT PRIOR ART DEVICES ARE NOT PHYSICALLY COMBINABLE
“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of
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the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).
However, the claimed combination cannot change the principle of operation of the primary reference or render the reference inoperable for its intended purpose. See MPEP § 2143.01.
IV. ARGUING AGAINST REFERENCES INDIVIDUALLY
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
V. ARGUING ABOUT THE NUMBER OF REFERENCES COMBINED
Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court affirmed a rejection of a detailed claim to a candy sucker shaped like a thumb on a stick based on thirteen prior art references.).
VI. ARGUING LIMITATIONS WHICH ARE NOT CLAIMED
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) (Claims to a superconducting magnet which generates a “uniform magnetic field” were not limited to the degree of magnetic field uniformity required for Nuclear Magnetic Resonance (NMR) imaging. Although the specification disclosed that the claimed magnet may be used in an NMR apparatus, the claims were not so limited.); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571-72, 7 USPQ2d 1057, 1064-1065 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988) (Various limitations on which
appellant relied were not stated in the claims; the specification did not provide evidence indicating these limitations must be read into the claims to give meaning to the disputed terms.); Ex parte McCullough, 7 USPQ2d 1889, 1891 (Bd. Pat. App. & Inter. 1987) (Claimed electrode was rejected as obvious despite assertions that electrode functions differently than would be expected when used in nonaqueous battery since “although the demonstrated results may be germane to the patentability of a battery containing appellant’s electrode, they are not germane to the patentability of the invention claimed on appeal.”).
See MPEP § 2111 - § 2116.01, for additional case law relevant to claim interpretation.
VII. ARGUING ECONOMIC INFEASIBILITY
The fact that a combination would not be made by businessmen for economic reasons does not mean that a person of ordinary skill in the art would not make the combination because of some technological incompatibility. In re Farrenkopf, 713 F.2d 714, 219 USPQ 1 (Fed. Cir. 1983) (Prior art reference taught that addition of inhibitors to radioimmunoassay is the most convenient, but costliest solution to stability problem. The court held that the additional expense associated with the addition of inhibitors would not discourage one of ordinary skill in the art from seeking the convenience expected therefrom.).
VIII. ARGUING ABOUT THE AGE OF REFERENCES
“The mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem.” In re Wright, 569 F.2d 1124, 1127, 193 USPQ 332, 335 (CCPA 1977) (100 year old patent was properly relied upon in a rejection based on a combination of references.). See also Ex parte Meyer, 6 USPQ2d 1966 (Bd. Pat. App. & Inter. 1988) (length of time between the issuance of prior art patents relied upon (1920 and 1976) was not persuasive of unobviousness).
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IX. ARGUING THAT PRIOR ART IS NONANALOGOUS
See MPEP § 2141.01(a) for case law pertaining to analogous art.
X. ARGUING IMPROPER RATIONALES FOR COMBINING REFERENCES
A. Impermissible Hindsight
Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Applicants may also argue that the combination of two or more references is “hindsight” because “express” motivation to combine the references is lacking. However, there is no requirement that an “express, written motivation to combine must appear in prior art references before a finding of obviousness.” See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004). See MPEP § 2141 and § 2143 for guidance regarding establishment of a prima facie case of obviousness.
B. Obvious To Try Rationale
An applicant may argue the examiner is applying an improper “obvious to try” rationale in support of an obviousness rejection.
An “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. “ [A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a
combination was obvious to try might show that it was obvious under § 103.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 421, 82 USPQ2d 1385, 1397 (2007).
“The admonition that ‘obvious to try’ is not the standard under § 103 has been directed mainly at two kinds of error. In some cases, what would have been ‘obvious to try’ would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful.... In others, what was ‘obvious to try’ was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.” In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988) (citations omitted) (The court held the claimed method would have been obvious over the prior art relied upon because one reference contained a detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful.).
C. Lack of Suggestion To Combine References
A suggestion or motivation to combine references is an appropriate method for determining obviousness, however it is just one of a number of valid rationales for doing so. The Court in KSR identified several exemplary rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. KSR, 550 U.S. at 415-21, 82 USPQ2d at
1395-97. See MPEP § 2141 and § 2143.
D. References Teach Away from the Invention or Render Prior Art Unsatisfactory for Intended Purpose
In addition to the material below, see MPEP § 2141.02 (prior art must be considered in its entirety, including disclosures that teach away from the claims) and MPEP § 2143.01 (proposed modification cannot render the prior art
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unsatisfactory for its intended purpose or change the principle of operation of a reference).
1. The Nature of the Teaching Is Highly Relevant
A prior art reference that “teaches away” from the claimed invention is a significant factor to be considered in determining obviousness; however, “the nature of the teaching is highly relevant and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (Claims were directed to an epoxy resin based printed circuit material. A prior art reference disclosed a polyester-imide resin based printed circuit material, and taught that although epoxy resin based materials have acceptable stability and some degree of flexibility, they are inferior to polyester-imide resin based materials. The court held the claims would have been obvious over the prior art because the reference taught epoxy resin based material was useful for applicant’s purpose, applicant did not distinguish the claimed epoxy from the prior art epoxy, and applicant asserted no discovery beyond what was known to the art.).
Furthermore, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
2. References Cannot Be Combined Where Reference Teaches Away from Their Combination
It is improper to combine references where the references teach away from their combination. In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 779 (Fed. Cir. 1983) (The claimed catalyst which contained both iron and an alkali metal was not suggested by the combination of a reference which taught the interchangeability of antimony and alkali metal with the same beneficial result, combined with a reference expressly excluding antimony from, and adding iron to, a catalyst.).
3. Proceeding Contrary to Accepted Wisdom Is Evidence of Nonobviousness
The totality of the prior art must be considered, and proceeding contrary to accepted wisdom in the art is evidence of nonobviousness. In re Hedges, 783 F.2d 1038, 228 USPQ 685 (Fed. Cir. 1986) (Applicant’s claimed process for sulfonating diphenyl sulfone at a temperature above 127ºC was contrary to accepted wisdom because the prior art as a whole suggested using lower temperatures for optimum results as evidenced by charring, decomposition, or reduced yields at higher temperatures.).
Furthermore, “[k]nown disadvantages in old devices which would naturally discourage search for new inventions may be taken into account in determining obviousness.” United States v. Adams, 383 U.S. 39, 52, 148 USPQ 479, 484 (1966).
E. Applicability of KSR to All Technologies
At the time the KSR decision was handed down, some observers questioned whether the principles discussed were intended by the Supreme Court to apply to all fields of inventive endeavor. Arguments were made that because the technology at issue in KSR involved the relatively well-developed and predictable field of vehicle pedal assemblies, the decision was relevant only to such fields. The Federal Circuit has soundly repudiated such a notion, stating that KSR applies across technologies:
This court also declines to cabin KSR to the “predictable arts” (as opposed to the “unpredictable art” of biotechnology). In fact, this record shows that one of skill in this advanced art would find these claimed “results” profoundly “predictable.”
In re Kubin, 561 F.3d 1351, 1360, 90 USPQ2d 1417, 1424 (Fed. Cir. 2009). Thus, Office personnel should not withdraw any rejection solely on the basis that the invention lies in a technological area ordinarily considered to be unpredictable.
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XI. FORM PARAGRAPHS
See MPEP § 707.07(f) for form paragraphs 7.37 through 7.38 which may be used where applicant’s arguments are not persuasive or are moot.
2146 Pre-AIA 35 U.S.C. 103(c) [R-11.2013]
[Editor Note: This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, MPEP § 2156 for joint research agreement prior art disqualification for application subject to those provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]
Pre-AIA 35 U.S.C. 103 Conditions of patentability; non-obvious subject matter.
*****
(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
Effective November 29, 1999, subject matter which was prior art under former 35 U.S.C. 103 via pre-AIA 35 U.S.C. 102(e) was disqualified as prior
art against the claimed invention if that subject matter and the claimed invention “were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” This amendment to pre-AIA 35 U.S.C. 103(c) was made pursuant to section 4807 of the American Inventors Protection Act of 1999 (AIPA); see Pub. L. 106-113, 113 Stat. 1501, 1501A-591 (1999). The changes to pre-AIA 35 U.S.C. 102(e) in the Intellectual Property and High Technology Technical Amendments Act of 2002 (Pub. L. 107-273, 116 Stat. 1758 (2002)) did not affect the exclusion under pre-AIA 35 U.S.C. 103(c) as amended on November 29, 1999. Subsequently, the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) (Pub. L. 108-453, 118 Stat. 3596 (2004)) further amended pre-AIA 35 U.S.C. 103(c) to provide that subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if three conditions are met:
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement (hereinafter “joint research agreement disqualification”).
These changes to pre-AIA 35 U.S.C. 103(c) apply to all patents (including reissue patents) granted on or after December 10, 2004 that are subject to pre-AIA 35 U.S.C. 102. The amendment to pre-AIA 35 U.S.C. 103(c) made by the AIPA to change “subsection (f) or (g)” to “one of more of subsections (e), (f), or (g)” applies to applications filed on or after November 29, 1999. It is to be noted that, for all applications (including reissue applications), if the application is pending on or after December 10, 2004, the 2004 changes to pre-AIA 35 U.S.C. 103(c), which effectively include the 1999 changes, apply; thus, the November 29, 1999 date of the prior revision to pre-AIA 35 U.S.C. 103(c) is no longer
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relevant. In a reexamination proceeding, however, one must look at whether or not the patent being reexamined was granted on or after December 10, 2004 to determine whether pre-AIA 35 U.S.C. 103(c), as amended by the CREATE Act, applies. For a reexamination proceeding of a patent granted prior to December 10, 2004 on an application filed on or after November 29, 1999, it is the 1999 changes to pre-AIA 35 U.S.C. 103(c) that are applicable to the disqualifying commonly assigned/owned prior art provisions of pre-AIA 35 U.S.C. 103(c). See MPEP § 706.02(l)(1) for additional information regarding disqualified prior art under pre-AIA 35 U.S.C. 102(e)/103. For a reexamination proceeding of a patent granted prior to December 10, 2004 on an application filed prior to November 29, 1999, neither the 1999 nor the 2004 changes to pre-AIA 35 U.S.C. 103(c) are applicable. Therefore, only prior art under pre-AIA 35 U.S.C. 102(f) or (g) used in a rejection under pre-AIA 35 U.S.C. 103(a) may be disqualified under the commonly assigned/owned prior art provision pre-AIA of 35 U.S.C. 103(c).
Pre-AIA 35 U.S.C. 103(c), as amended by the CREATE Act, applies only to subject matter which qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g), and which is being relied upon in a rejection under 35 U.S.C. 103. If the rejection is anticipation under pre-AIA 35 U.S.C. 102(e), (f), or (g), pre-AIA 35 U.S.C. 103(c) cannot be relied upon to disqualify the subject matter in order to overcome or prevent the anticipation rejection. Likewise, pre-AIA 35 U.S.C. 103(c) cannot be relied upon to overcome or prevent a double patenting rejection. See 37 CFR 1.78(c) and MPEP § 804. See also MPEP § 706.02(l) - § 706.02(l)(3).
2147 -2149 [Reserved]
2150 Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor To File Provisions of the
Leahy-Smith America Invents Act [R-11.2013]
[Editor Note: See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
Continued Applicability of pre-AIA 35 U.S.C. 102 and 103: The Leahy-Smith America Invents Act (AIA) revised 35 U.S.C. 102 and thereby, the standard to determine what prior art is available during examination of an application. See Pub. L. 112-29, 125 Stat. 284 (2011). The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application filed before March 16, 2013. Thus, any application filed before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103 (i.e., the application is a pre-AIA (first to invent) application (hereinafter “pre-AIA application”)). Note that neither the filing of a request for continued examination, nor entry into the national stage under 35 U.S.C. 371, constitutes the filing of a new application. Accordingly, even if a request for continued examination under 37 CFR 1.114 is filed on or after March 16, 2013, in an application that was filed before March 16, 2013, the application remains subject to pre-AIA 35 U.S.C. 102 and 103. Submission of an amendment including a claim that includes new matter on or after March 16, 2013, also does not affect an application’s status as a pre-AIA application. See 35 U.S.C. 132(a). Similarly, a PCT application filed under 35 U.S.C. 363 before March 16, 2013, is subject to pre-AIA 35 U.S.C. 102 and 103, regardless of whether the application enters the national stage under 35 U.S.C. 371 before or after March 16, 2013. Applications filed on or after March 16, 2013 are also subject to pre-AIA 35 U.S.C. 102 if the application has never contained a claim with an effective filing date on or after March 16, 2013 and has never claimed the benefit of an application that ever contained such a claim. MPEP §§ 2131-2138 provide examination guidance on the
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prior art available in the examination of applications subject to pre-AIA 35 U.S.C. 102.
2151 Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
After the AIA, 35 U.S.C. 102 continues to set forth the scope of prior art that will preclude the grant of a patent on a claimed invention, but revises what qualifies as prior art. Specifically, AIA 35 U.S.C. 102(a)(1) and (a)(2) set forth what qualifies as prior art. AIA 35 U.S.C. 102(a)(1) provides that a person is not entitled to a patent if the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. AIA 35 U.S.C. 102(a)(2) provides that a person is not entitled to a patent if the claimed invention was described in a patent issued under 35 U.S.C. 151, or in an application for patent published or deemed published under 35 U.S.C. 122(b), in which the patent or application, as the case may be, names another inventor, and was effectively filed before the effective filing date of the claimed invention. AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a). Specifically, AIA 35 U.S.C. 102(b)(1) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a)(1), and AIA 35 U.S.C. 102(b)(2) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a)(2).
The AIA also provides definitions in 35 U.S.C. 100 of the meaning of the terms “claimed invention,” “effective filing date,” “inventor,” and “joint inventor” (or “coinventor”). The AIA defines the term “claimed invention” in 35 U.S.C. 100(j) as the subject matter defined by a claim in a patent or an application for a patent. The AIA defines the term “effective filing date” for a claimed invention in a patent or application for patent (other than a reissue
application or reissued patent) in 35 U.S.C. 100(i)(1) as meaning the earlier of: (1) The actual filing date of the patent or the application for the patent containing the claimed invention; or (2) the filing date of the earliest provisional, nonprovisional, international (PCT), or foreign patent application to which the patent or application is entitled to benefit or priority as to such claimed invention. The AIA defines the term “inventor” in 35 U.S.C. 100(f) as the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention, and in 35 U.S.C. 100(g) defines the term “joint inventor” and “coinventor” to mean any one of the individuals who invented or discovered the subject matter of a joint invention.
As discussed previously, AIA 35 U.S.C. 102(a)(1) provides that a person is not entitled to a patent if the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Under pre-AIA 35 U.S.C. 102(a) and (b), knowledge or use of the invention (pre-AIA 35 U.S.C. 102(a)), or public use or sale of the invention (pre-AIA 35 U.S.C. 102(b)), was required to be in the United States to qualify as a prior art activity. Under the AIA, a prior public use, sale activity, or other disclosure has no geographic requirement (i.e., need not be in the United States) to qualify as prior art.
AIA 35 U.S.C. 102(b)(1) provides that certain disclosures made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) with respect to the claimed invention if: (1) The disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Thus, AIA 35 U.S.C. 102(b)(1) effectively provides a one-year grace period (grace period) after a first inventor-originated disclosure of an invention within which the inventor, assignee, obligated assignee, or other party having sufficient interest may file a patent application which is not subject to such disclosure and certain other
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disclosures as prior art. The one-year grace period in AIA 35 U.S.C. 102(b)(1) is measured from the filing date of the earliest U.S. or foreign patent application to which a proper benefit or priority claim to such invention has been asserted in the patent or application and the earlier application supports the claimed invention in the manner required by 35 U.S.C. 112(a). Under pre-AIA 35 U.S.C. 102(b), the one-year grace period is measured from the filing date of the earliest application filed in the United States (directly or through the PCT) and not from the dates of earlier filed foreign patent applications.
The date of invention is not relevant under AIA 35 U.S.C. 102. Thus, a prior art disclosure could not be disqualified or antedated by showing that the inventor invented the claimed invention prior to the effective date of the prior art disclosure of the subject matter (e.g., under the provisions of 37 CFR 1.131).
As discussed previously, AIA 35 U.S.C. 102(a)(2) provides that a person is not entitled to a patent if the claimed invention was described in a U.S. patent, a U.S. patent application publication, or an application for patent deemed published under 35 U.S.C. 122(b) (collectively referred to as “U.S. patent documents”), that names another inventor and was effectively filed before the effective filing date of the claimed invention. Under 35 U.S.C. 374, a World Intellectual Property Organization (WIPO) publication of a Patent Cooperation Treaty (PCT) international application that designates the United States is an application for patent deemed published under 35 U.S.C. 122(b) for purposes of AIA 35 U.S.C. 102(a)(2). Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States. Accordingly, a WIPO publication of a PCT application (WIPO published application) that designates the United States, a U.S. patent, or a U.S. patent application publication that names another inventor and was effectively filed before the effective filing date of the claimed invention, is prior art under AIA 35 U.S.C. 102(a)(2). Under pre-AIA 35 U.S.C. 102(e), a WIPO published application designating
the United States is treated as a U.S. patent application publication only if the PCT application was filed on or after November 29, 2000, and published under PCT Article 21(2) in the English language. See MPEP § 2136.03, subsection III.
AIA 35 U.S.C. 102(d) defines “effectively filed” for the purpose of determining whether a particular U.S. patent document is prior art under AIA 35 U.S.C. 102(a)(2) to a claimed invention. A U.S. patent document is considered to have been effectively filed for purposes of its prior art effect under 35 U.S.C. 102(a)(2) with respect to any subject matter it describes on the earlier of: (1) The actual filing date of the patent or the application for patent; or (2) if the patent or application for patent is entitled to claim the benefit of, or priority to, the filing date of an earlier U.S. provisional, U.S. nonprovisional, international (PCT), or foreign patent application, the filing date of the earliest such application that describes the subject matter of the claimed invention. Thus, a U.S. patent document is effective as prior art as of the filing date of the earliest application to which benefit or priority is claimed and which describes the subject matter relied upon, regardless of whether the earliest such application is a U.S. provisional or nonprovisional application, an international (PCT) application, or a foreign patent application.
AIA 35 U.S.C. 102(b)(2)(A) and (B) provide that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if: (1) The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such subject matter was effectively filed under 35 U.S.C. 102(a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Thus, under the AIA, a U.S. patent document that was not issued or published more than one year before the effective filing date of the claimed invention is not prior art to the claimed invention if: (1) The U.S. patent document was by another who obtained the subject matter disclosed from the inventor or a joint inventor; or (2) the inventor or a joint inventor, or another who obtained the subject matter disclosed from an inventor or joint inventor, had publicly
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disclosed the subject matter before the 35 U.S.C. 102(d) (“effectively filed”) date of the U.S. patent document.
Additionally, AIA 35 U.S.C. 102(b)(2)(C) provides that a disclosure made in a U.S. patent document shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person. This provision replaces the exception in pre-AIA 35 U.S.C. 103(c) that applied only in the context of an obviousness analysis under 35 U.S.C. 103 to prior art that was commonly owned at the time the claimed invention was made, and which qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g). Thus, the AIA provides that certain prior patents and published patent applications of co-workers and collaborators are not prior art either for purposes of determining novelty (35 U.S.C. 102) or nonobviousness (35 U.S.C. 103). This exception, however, only removes disclosures as prior art under AIA 35 U.S.C. 102(a)(2), namely, U.S. patent documents that were not published, but that were effectively filed, before the effective filing date of the claimed invention. This exception is not effective to except prior art that is also available under 35 U.S.C. 102(a)(1), that is, patents, printed publications, public uses, sale activities, or other publicly available disclosures published or occurring before the effective filing date of the claimed invention. A prior disclosure, as defined in AIA 35 U.S.C. 102(a)(1), by a co-worker or collaborator is prior art under AIA 35 U.S.C. 102(a)(1) unless it falls within an exception under AIA 35 U.S.C. 102(b)(1), regardless of whether the subject matter of the prior disclosure and the claimed invention was commonly owned not later than the effective filing date of the claimed invention.
The AIA eliminates the provisions in pre-AIA 35 U.S.C. 102(c) (abandonment of the invention), 102(d) (premature foreign patenting), 102(f) (derivation), and 102(g) (prior invention by another, but see below for discussion of continued limited applicability). Under the AIA, abandonment of the invention or premature foreign patenting is not relevant to patentability. Prior invention by another
is likewise not relevant to patentability under the AIA unless there is a prior disclosure or filing of an application by another. A situation in which an application names a person who is not the actual inventor as the inventor (pre-AIA 35 U.S.C. 102(f)) will be handled in a derivation proceeding under 35 U.S.C. 135, by a correction of inventorship under 37 CFR 1.48 to name the actual inventor, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115. See form paragraphs 7.04.101.aia and 7.04.102.aia.
AIA 35 U.S.C. 102(c) provides for common ownership of subject matter made pursuant to joint research agreements. Under 35 U.S.C. 100(h), the term “joint research agreement” as used in AIA 35 U.S.C. 102(c) is defined as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. AIA 35 U.S.C. 102(c) specifically provides that subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of AIA 35 U.S.C. 102(b)(2)(C) if: (1) The subject matter disclosed was developed and the claimed invention was made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention; (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
AIA 35 U.S.C. 103 provides that a patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. In addition, AIA 35 U.S.C. 103 provides that patentability shall not be negated by the manner in which the invention was made. This provision tracks pre-AIA 35 U.S.C.
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103(a), except that the temporal focus for the obviousness inquiry is before the effective filing date of the claimed invention, rather than at the time of the invention. The provisions of pre-AIA 35 U.S.C. 103(c) have been replaced with AIA 35 U.S.C. 102(b)(2)(C) and (c), and the provisions of pre-AIA 35 U.S.C. 103(b) pertaining to biotechnological processes have been eliminated.
AIA 35 U.S.C. 102 and 103 took effect on March 16, 2013. These new provisions apply to any patent application that contains or contained at any time: (1) a claim to a claimed invention that has an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013; or (2) a designation as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time a claim to a claimed invention that has an effective filing date that is on or after March 16, 2013. Such an application is referred to as an AIA (first inventor to file) application (hereinafter “AIA application”). AIA 35 U.S.C. 102 and 103 also apply to any patent resulting from an AIA application. See Pub. L. 112-29, § 3(n)(1), 125 Stat. at 293. See also MPEP § 2159 et seq. for guidance in determining whether an application is subject to AIA 35 U.S.C. 102 and 103.
The AIA provides that the provisions of pre-AIA 35 U.S.C. 102(g) apply to each claim of an AIA application for patent if the patent application: (1) contains or contained at any time a claim to a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time a claim to a claimed invention that has an effective filing date before March 16, 2013. Pub. L. 112-29, § 3(n)(2), 125 Stat. at 293. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an AIA application to which pre-AIA 35 U.S.C. 102(g) applied. See MPEP § 2138 for guidance on application of pre-AIA 35 U.S.C. 102(g) and form paragraph 7.14.aia.
If an application (1) contains or contained at any time a claimed invention having an effective filing date that is before March 16, 2013, or ever claimed the benefit of an earlier filing date under 35 U.S.C.
120, 121, or 365(c) based upon an earlier application that ever contained a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013, and (2) also contains or contained at any time any claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013, or ever claimed the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 365 based upon an earlier application that ever contained a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013, then AIA 35 U.S.C. 102 and 103 apply to the application, and each claimed invention in the application is also subject to pre-AIA 35 U.S.C. 102(g).
2152 Detailed Discussion of AIA 35 U.S.C. 102(a) and (b) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(a) defines the prior art that will preclude the grant of a patent on a claimed invention unless an exception in AIA 35 U.S.C. 102(b) is applicable. Specifically, AIA 35 U.S.C. 102(a) provides that:
[a] person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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As an initial matter, Office personnel should note that the introductory phrase “[a] person shall be entitled to a patent unless” remains unchanged from the pre-AIA version of 35 U.S.C. 102. Thus, 35 U.S.C. 102 continues to provide that the Office bears the initial burden of explaining why the applicable statutory or regulatory requirements have not been met if a claim in an application is to be rejected. The AIA also does not change the requirement that whenever a claim for a patent is rejected or an objection or requirement is made, the Office shall notify the applicant thereof and state the reasons for such rejection, objection, or requirement, and provide such information and references as may be useful to the applicant in judging of the propriety of continuing the prosecution of the application. See 35 U.S.C. 132, 37 CFR 1.104(c) and MPEP § 706.
The categories of prior art documents and activities are set forth in AIA 35 U.S.C. 102(a)(1) and the categories of prior art patent documents are set forth in AIA 35 U.S.C. 102(a)(2). These documents and activities are used to determine whether a claimed invention is novel or nonobvious. The documents upon which a prior art rejection under 35 U.S.C. 102(a)(1) may be based are an issued patent, a published application, and a non-patent printed publication. The documents upon which a prior art rejection under 35 U.S.C. 102(a)(2) may be based are U.S. patent documents only (see discussion of U.S. patent documents in MPEP § 2151). Evidence that the claimed invention was in public use, on sale, or otherwise available to the public may also be used as the basis for a prior art rejection under 35 U.S.C. 102(a)(1). Note that a printed publication that does not have a sufficiently early publication date to itself qualify as prior art under AIA 35 U.S.C. 102(a)(1) may be competent evidence of a previous public use, sale activity, or other availability of a claimed invention to the public where the public use, sale activity, or other public availability does have a sufficiently early date to qualify as prior art under AIA 35 U.S.C. 102(a)(1). See In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) and MPEP § 2133.03(b), subsection III.C.
AIA 35 U.S.C. 102(b) sets out exceptions to AIA 35 U.S.C. 102(a), in that prior art that otherwise would be included in AIA 35 U.S.C. 102(a) shall
not be prior art if it falls within an exception under AIA 35 U.S.C. 102(b).
Exceptions to the categories of prior art defined in AIA 35 U.S.C. 102(a)(1) are provided in AIA 35 U.S.C. 102(b)(1). Specifically, AIA 35 U.S.C. 102(b)(1) states that “[a] disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”
Exceptions to the categories of prior art defined in AIA 35 U.S.C. 102(a)(2) are provided in AIA 35 U.S.C. 102(b)(2). Specifically, AIA 35 U.S.C. 102(b)(2) states that “[a] disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.”
Although some of the provisions of AIA 35 U.S.C. 102(a) and (b) are similar to pre-AIA 35 U.S.C. 102(a), (b), and (e), the AIA has introduced a number of important changes with respect to prior art documents and activities (collectively, “disclosures”). First, the availability of a U.S. patent document as prior art to a claimed invention is
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measured from the effective filing date of the claimed invention as defined in 35 U.S.C. 100(i), which takes into account both foreign priority and domestic benefit dates. Note that this differs from practice under pre-AIA 35 U.S.C. 102 wherein the availability of a patent document as prior art is measured from either “the date of the application for patent in the United States” (pre-AIA 35 U.S.C. 102(b)) or “the invention thereof by the applicant for patent” (pre-AIA 35 U.S.C. 102(a) and (e)). Second, the AIA adopts a global view of prior art disclosures and thus does not require that a public use or sale activity be “in this country” to be a prior art activity. Finally, a catch-all “otherwise available to the public” category of prior art is added.
2152.01 Effective Filing Date of the Claimed Invention [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
Pre-AIA 35 U.S.C. 102(a) and (e) reference patent-defeating activities occurring before the applicant invented the claimed invention. AIA 35 U.S.C. 102(a)(1) and (a)(2) make no mention of the date of the invention, but instead concern documents that existed or activities that occurred “before the effective filing date of the claimed invention.” As a result, it is no longer possible to antedate or “swear behind” certain prior art disclosures by making a showing under 37 CFR 1.131 that the applicant invented the claimed subject matter prior to the effective date of the prior art disclosure.
The AIA defines the term “effective filing date” for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) as the earliest of: (1) the actual filing date of the patent or the application for the patent containing the claimed invention; or (2) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date
under 35 U.S.C. 119, 120, 121, or 365. See 35 U.S.C. 100(i)(1). Thus, the one-year grace period (as defined in MPEP § 2151) in AIA 35 U.S.C. 102(b)(1) is measured from the filing date of any U.S. or foreign patent application to which the patent or application is entitled to benefit or priority as to such invention, whereas the one-year grace period in pre-AIA 35 U.S.C. 102(b) is measured from only the filing date of the earliest application filed in the United States (directly or through the PCT).
As under pre-AIA law, the effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis. That is, the principle that different claims in the same application may be entitled to different effective filing dates vis-à-vis the prior art remains unchanged by the AIA. See MPEP § 706.02, subsection VI. However, it is important to note that although prior art is applied on a claim-by-claim basis, the determination of whether pre-AIA 35 U.S.C. 102 and 35 U.S.C. 103 or AIA 35 U.S.C. 102 and 103 apply is made on an application-by-application basis. MPEP § 2151 and MPEP § 2159 discuss the applicability date provisions of section 3 of the AIA.
Finally, the AIA provides that the “effective filing date” for a claimed invention in a reissued patent or application for a reissue patent shall be determined by deeming the claim to the claimed invention to have been contained in the patent for which reissue was sought. See 35 U.S.C. 100(i)(2).
2152.02 Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described in a Printed Publication, or in Public Use, on Sale, or Otherwise Available to the Public) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
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Prior art documents and activities which may preclude patentability are set forth in AIA 35 U.S.C. 102(a)(1). Such documents and activities include prior patenting of the claimed invention, descriptions of the claimed invention in a printed publication, public use of the claimed invention, placing the claimed invention on sale, and otherwise making the claimed invention available to the public. MPEP §§ 2154.02(a)–2152.02(f) discuss each prior art document and activity that might preclude patentability under AIA in turn.35 U.S.C. 102(a)(1)
2152.02(a) Patented [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(a)(1) indicates that a prior patent of a claimed invention will preclude the grant of a subsequent patent on the claimed invention. This means that if a claimed invention was patented in this or a foreign country before the effective filing date of the claimed invention, AIA 35 U.S.C. 102(a)(1) precludes the grant of a patent on the claimed invention. The effective date of the patent for purposes of determining whether the patent qualifies as prior art under AIA 35 U.S.C. 102(a)(1) is the grant date of the patent. There is an exception to this rule if the patent is secret as of the date the rights are awarded. See In re Ekenstam, 256 F.2d 321, 323, 118 USPQ 349, 353 (CCPA 1958); see also MPEP § 2126.01. In such situations, the patent is available as prior art as of the date the patent was made available to the public by being laid open for public inspection or disseminated in printed form. See In re Carlson, 983 F.2d 1032, 1037, 25 USPQ2d 1207 (Fed. Cir. 1992); see also MPEP § 2126. The phrase “patented” in AIA 35 U.S.C. 102(a)(1) has the same meaning as “patented” in pre-AIA 35 U.S.C. 102(a) and (b). For a discussion of “patented” as used in pre-AIA 35 U.S.C. 102(a) and (b), see generally MPEP § 2126.
Although an invention may be described in a patent and not claimed therein, the grant date would also be the applicable prior art date for purposes of relying on the subject matter disclosed therein as “described in a printed publication,” provided that the patent was made available to the public on its grant date. Note that a U.S. patent that issues after the effective filing date of a claimed invention and is not available as prior art against that invention under AIA 35 U.S.C. 102(a)(1) could be available as prior art under AIA 35 U.S.C. 102(a)(2).
2152.02(b) Described in a Printed Publication [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
If a claimed invention is described in a patent, published patent application, or printed publication, such a document may be available as prior art under AIA 35 U.S.C. 102(a)(1). Both pre-AIA 35 U.S.C. 102(a) and (b) and AIA 35 U.S.C. 102(a)(1) use the term “described” with respect to an invention in a prior art printed publication. Likewise, AIA 35 U.S.C. 102(a)(2) uses that term with respect to U.S. patents, U.S. patent application publications, and WIPO published applications. Thus, the Office does not view the AIA as changing the extent to which a claimed invention must be described for a prior art document to anticipate the claimed invention under 35 U.S.C. 102.
While the conditions for patentability of AIA 35 U.S.C. 112(a) require a written description of the claimed invention that would have enabled a person skilled in the art to make as well as use the invention, the prior art provisions of AIA 35 U.S.C. 102(a)(1) and (a)(2) require only that the claimed invention is “described” in a prior art document (patent, published patent application, or printed publication). The two basic requirements that must be met by a prior art document in order to describe a claimed invention such that it is anticipated under AIA 35
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U.S.C. 102 are the same as those under pre-AIA 35 U.S.C. 102. First, “each and every element of the claimed invention” must be disclosed either explicitly or inherently, and the elements must be “arranged or combined in the same way as in the claim.” See In re Gleave, 560 F.3d 1331, 1334, 90 USPQ2d 1235, 1237-38 (Fed. Cir. 2009), citing Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 1375, 81 USPQ2d 1324,1328 (Fed. Cir. 2006); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370, 88 USPQ2d 1751, 1759 (Fed. Cir. 2008); In re Bond, 910 F.2d 831, 832-33, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990). Second, a person of ordinary skill in the art must have been enabled to make the invention without undue experimentation. See Gleave, 560 F.3d at 1334, 90 USPQ2d at 1238 (citing Impax Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314, 88 USPQ2d 1381, 1383 (Fed. Cir. 2008), and In re LeGrice, 301 F.2d 929, 940-44, 133 USPQ 365, 372 (CCPA 1962)). Thus, in order for a prior art document to describe a claimed invention such that it is anticipated under AIA 35 U.S.C. 102(a)(1) or (a)(2), it must disclose all elements of the claimed invention arranged as they are in the claim, and also provide sufficient guidance to enable a person skilled in the art to make the claimed invention. There is, however, no requirement that a prior art document meet the “how to use” requirement of 35 U.S.C. 112(a) in order to qualify as prior art. See Gleave, 560 F.3d at 1334, 90 USPQ2d at 1237-38; see also In re Schoenwald, 964 F.2d 1122, 1124, 22 USPQ2d 1671, 1673 (Fed. Cir. 1992) (holding that a claimed compound was anticipated even though the prior art reference did not disclose a use for the compound); Schering Corp. v. Geneva Pharms., Inc., 339 F.3d
1373, 1380-81, 67 USPQ2d 1664, 1670 (Fed. Cir. 2003) (pointing out that actually reducing the invention to practice is not necessary in order for a prior art reference to anticipate); Impax Labs, 468 F.3d at 1382 (stating that “proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation”). Furthermore, compliance with the “how to make” requirement is judged from the viewpoint of a person of ordinary skill in the art, and thus does not require that the prior art document explicitly disclose information within the knowledge of such a person. See In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed. Cir. 1985).
There is an additional important distinction between the written description that is necessary to support a claim under 35 U.S.C. 112(a) and the description sufficient to anticipate the subject matter of the claim under AIA 35 U.S.C. 102(a)(1) or (a)(2). See Rasmussen v. SmithKline Beecham Corp., 413 F.3d 1318, 75 USPQ2d 1297 (Fed. Cir. 2005). To provide support for a claim under 35 U.S.C. 112(a), it is necessary that the specification describe and enable the entire scope of the claimed invention. However, in order for a prior art document to describe a claimed invention under AIA 35 U.S.C. 102(a)(1) or (a)(2), the prior art document need only describe and enable one skilled in the art to make a single species or embodiment of the claimed invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562,
19 USPQ2d 1111, 1115 (Fed. Cir. 1991) (“As the court pointed out, ‘the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes..., whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure.’”) (quoting In re Lukach, 442 F.2d 967, 970, 169 USPQ 795, 797 (CCPA 1971)); see also In re Van Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972), and In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958).
An anticipatory description it is not required in order for a disclosure to qualify as prior art, unless the disclosure is being used as the basis for an anticipation rejection. In accordance with pre-AIA case law concerning obviousness, a disclosure may be cited for all that it would reasonably have made known to a person of ordinary skill in the art. Thus, the description requirement of AIA 35 U.S.C. 102(a)(1) and (a)(2) does not preclude an examiner from applying a disclosure in an obviousness rejection under AIA 35 U.S.C. 103 simply because the disclosure is not adequate to anticipate the claimed invention.
2152.02(c) In Public Use [R-11.2013]
Under pre-AIA 35 U.S.C. 102(b), an invention that was “in public use” precluded the grant of a patent only if such public use occurred “in this country.” See MPEP § 2133.03(d).
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Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where prior public use or public availability occurs. Furthermore, a public use would need to occur before the effective filing date of the claimed invention to constitute prior art under AIA 35 U.S.C. 102(a)(1).
The pre-AIA case law also indicates that a public use will bar patentability if the public use occurs before the critical date and the invention is ready for patenting. Under pre-AIA 35 U.S.C. 102(b), the critical date is the date that is one year prior to the date of application for patent in the United States. See Invitrogen Corp. v. Biocrest Manufacturing. L.P., 424 F.3d 1374, 1379-80, 76 USPQ2d 1741, 1744 (Fed. Cir. 2005) and MPEP § 2133. Under pre-AIA 35 U.S.C. 102(b), the uses of an invention before the patent's critical date that constitute a “public use” fall into two categories: the use either “(1) was accessible to the public; or (2) was commercially exploited.” See American Seating Co. v. USSC Group, Inc., 514 F.3d 1262, 1267, 85 USPQ2d 1683, 1685 (Fed. Cir. 2008) and MPEP § 2133.03(a). Whether a use is a pre-AIA 35 U.S.C. 102(b) public use also depends on who is making the use of the invention. “[W]hen an asserted prior use is not that of the applicant, [pre-AIA 35 U.S.C.] 102(b) is not a bar when that prior use or knowledge is not available to the public.” See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371, 47 USPQ2d 1363, 1366 (Fed. Cir. 1998). In other words, a use by a third party who did not obtain the invention from the inventor named in the application or patent is an invalidating use under pre-AIA 35 U.S.C. 102(b) only if it falls into the first category: That the use was accessible to the public. See MPEP § 2133.03(a), subsection II.C. On the other hand, “an inventor's own prior commercial use, albeit kept secret, may constitute a public use or sale under [pre-AIA 35 U.S.C.] 102(b), barring him from obtaining a patent.” See Woodland Trust, 148 F.3d at 1370, 47 USPQ2d at 1366 and MPEP § 2133.03(a), subsection II.A. Also, an inventor creates a public use bar under pre-AIA 35 U.S.C. 102(b) when the inventor shows the invention to, or allows it to be used by, another person who is “under no limitation, restriction, or obligation of confidentiality” to the inventor. See American Seating, 514 F.3d at 1267 and MPEP § 2133.03(a), subsection II.B.
Further, under pre-AIA 35 U.S.C. 102(a), “in order to invalidate a patent based on prior knowledge or use” by another in this country prior to the patent's priority date, “that knowledge or use must have been available to the public.” See Woodland Trust, 148 F.3d at 1370, 47 USPQ2d at 1366 and MPEP § 2132, subsection I. Patent-defeating “use,” under pre-AIA 35 U.S.C. 102(a) includes only that “use which is accessible to the public.” See id. (quoting Carella v. Starlight Archery, 804 F.2d 135, 139, 231 USPQ 644, 646 (Fed. Cir. 1986)).
As discussed previously, public use under AIA 35 U.S.C. 102(a)(1) is limited to those uses that are available to the public. The public use provision of AIA 35 U.S.C. 102(a)(1) thus has the same substantive scope, with respect to uses by either the inventor or a third party, as public uses under pre-AIA 35 U.S.C. 102(b) by unrelated third parties or others under pre-AIA 35 U.S.C. 102(a).
As also discussed previously, once an examiner becomes aware that a claimed invention has been the subject of a potentially public use, the examiner should require the applicant to provide information showing that the use did not make the claimed process accessible to the public.
2152.02(d) On Sale [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2133.03 et seq. for information about on sale in regard to applications subject to pre-AIA 35 U.S.C. 102.]
The pre-AIA case law indicates that on sale activity will bar patentability if the claimed invention was: (1) the subject of a commercial sale or offer for sale, not primarily for experimental purposes; and (2) ready for patenting. See Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67, 48 USPQ2d 1641, 1646-47 (1998). Contract law principles apply in order to determine whether a commercial sale or offer for sale occurred. In addition, the enablement inquiry is not applicable to the question of whether a claimed invention is
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“on sale” under pre-AIA 35 U.S.C. 102(b). See Epstein, 32 F.3d at 1568, 31 USPQ2d at 1824. The phrase “on sale” in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning as “on sale” in pre-AIA 35 U.S.C. 102(b), except that the sale must make the invention available to the public. For a discussion of “on sale” as used in pre-AIA 35 U.S.C. 102(b), see generally MPEP § 2133.03(b) et seq.
Under pre-AIA 35 U.S.C. 102(b), if an invention was “on sale,” patentability was precluded only if the invention was on sale “in this country.” See MPEP § 2133.03(d). Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where the sale or offer for sale may occur. When formulating a rejection, Office personnel should consider evidence of sales activity, regardless of where the sale activity took place.
The pre-AIA 35 U.S.C. 102(b) “on sale” provision has been interpreted as including commercial activity even if the activity is secret. See MPEP § 2133.03(b), subsection III.A. AIA 35 U.S.C. 102(a)(1) uses the same “on sale” term as pre-AIA 35 U.S.C. 102(b). The “or otherwise available to the public” residual clause of AIA 35 U.S.C. 102(a)(1), however, indicates that AIA 35 U.S.C. 102(a)(1) does not cover secret sales or offers for sale. For example, an activity (such as a sale, offer for sale, or other commercial activity) is secret (non-public) if it is among individuals having an obligation of confidentiality to the inventor.
2152.02(e) Otherwise Available to the Public [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(a)(1) provides a “catch-all” provision, which defines a new additional category of potential prior art not provided for in pre-AIA 35 U.S.C. 102. Specifically, a claimed invention is not entitled to a patent if it was “otherwise available to
the public” before its effective filing date. This “catch-all” provision permits decision makers to focus on whether the disclosure was “available to the public,” rather than on the means by which the claimed invention became available to the public or whether a disclosure constitutes a “printed publication” or falls within another category of prior art as defined in AIA 35 U.S.C. 102(a)(1). The availability of the subject matter to the public may arise in situations such as a student thesis in a university library (see, e.g., In re Cronyn, 890 F.2d 1158, 13 USPQ2d 1070 (Fed. Cir. 1989); In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986); In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978) and MPEP § 2128.01, subsection I.); a poster display or other information disseminated at a scientific meeting (see, e.g., In re Klopfenstein, 380 F.3d 1345, 72 USPQ2d 1117 (Fed. Cir. 2004), Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 227 USPQ 428 (Fed. Cir. 1985) and MPEP § 2128.01, subsection IV.); subject matter in a laid-open patent application or patent (see, e.g., In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA
1981); see also Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 78 USPQ2d 1684 (Fed. Cir. 2006)); a document electronically posted on the Internet (see, e.g., Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 104 USPQ2d 1553 (Fed. Cir. 2012), In re Lister, 583 F.3d 1307, 92 USPQ2d 1225 (Fed. Cir. 2009), SRI Int'l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 85 USPQ2d 1489 (Fed. Cir. 2008), and MPEP § 2128); or a commercial transaction that does not constitute a sale under the Uniform Commercial Code (see, e.g., Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d
1041, 59 USPQ2d 1121 (Fed. Cir. 2001) and MPEP § 2133.03(e)(1)). Even if a document or other disclosure is not a printed publication, or a transaction is not a sale, either may be prior art under the “otherwise available to the public” provision of AIA 35 U.S.C. 102(a)(1), provided that the claimed invention is made sufficiently available to the public.
2152.02(f) No Requirement of "By Others" [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et
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seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
A key difference between pre-AIA 35 U.S.C. 102(a) and AIA 35 U.S.C. 102(a)(1) is the requirement in pre-AIA 35 U.S.C. 102(a) that the prior art relied on was “by others.” Under AIA 35 U.S.C. 102(a)(1), there is no requirement that the prior art relied upon be by others. Thus, any prior art which falls under AIA 35 U.S.C. 102(a)(1) need not be by another to constitute potentially available prior art. However, disclosures of the subject matter made one year or less before the effective filing date of the claimed invention by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or a joint inventor may fall within an exception under AIA 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1).
2152.03 Admissions [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
The Office will continue to treat admissions by the applicant as prior art under the AIA. A statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under AIA 35 U.S.C. 102. See Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063
(Fed. Cir.1988). For a discussion of admissions as prior art, see generally MPEP § 2129.
2152.04 The Meaning of "Disclosure" [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
The AIA does not define the term “disclosure,” and AIA 35 U.S.C. 102(a) does not use the term “disclosure.” AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2). Thus, the Office is treating the term “disclosure” as a generic expression intended to encompass the documents and activities enumerated in AIA 35 U.S.C. 102(a) (i.e., being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application).
2153 Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
See MPEP § 2153.01 for prior art exceptions based on grace period inventor or inventor-originated disclosures as provided for under AIA 35 U.S.C. 102(b)(1)(A). See MPEP § 2153.02 for prior art
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exceptions based on inventor or inventor-originated prior public disclosures.
2153.01 Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) To AIA 35 U.S.C. 102(a)(1) (Grace Period Inventor Or Inventor-Originated Disclosure Exception) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(1). These exceptions limit the use of an inventor's own work as prior art, when the inventor's own work has been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor not more than one year before the effective filing date of the claimed invention. AIA 35 U.S.C. 102(b)(1)(A) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) One year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. MPEP § 2153.01(a) discusses issues pertaining to disclosures within the grace period by the inventor or a joint inventor (“grace period inventor disclosures”) and MPEP § 2153.01(b) discusses issues pertaining to disclosures within the grace period by another who obtained the subject matter directly or indirectly from the inventor or joint inventor (“grace period inventor-originated
disclosures”). MPEP § 2152.01 discusses the “effective filing date” of a claimed invention.
2153.01(a) Grace Period Inventor Disclosure Exception [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(b)(1)(A) first provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) may be disqualified as prior art if the disclosure is made: (1) one year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor. Thus, a disclosure that would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) will not be treated as prior art by Office personnel if the disclosure is made one year or less before the effective filing date of the claimed invention, and the evidence shows that the disclosure is by the inventor or a joint inventor. What evidence is necessary to show that the disclosure is by the inventor or a joint inventor requires case-by-case treatment, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is by the inventor or a joint inventor.
Office personnel will not apply a disclosure as prior art under AIA 35 U.S.C. 102(a)(1) if it is apparent from the disclosure itself that it is by the inventor or a joint inventor. Specifically, Office personnel will not apply a disclosure as prior art under AIA 35 U.S.C. 102(a)(1) if the disclosure: (1) was made one year or less before the effective filing date of the claimed invention; (2) names the inventor or a joint inventor as an author or an inventor; and (3) does not name additional persons as authors on a printed publication or joint inventors on a patent. This means that in circumstances where an application names additional persons as joint inventors relative to the persons named as authors in the publication (e.g., the application names as joint inventors A, B, and
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C, and the publication names as authors A and B), and the publication is one year or less before the effective filing date, it is apparent that the disclosure is a grace period inventor disclosure, and the publication would not be treated as prior art under AIA 35 U.S.C. 102(a)(1). If, however, the application names fewer joint inventors than a publication (e.g., the application names as joint inventors A and B, and the publication names as authors A, B and C), it would not be readily apparent from the publication that it is by the inventor (i.e., the inventive entity) or a joint inventor and the publication would be treated as prior art under AIA 35 U.S.C. 102(a)(1).
Applicants can include a statement designating any grace period inventor disclosures in the specification See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). An applicant is not required to use the format specified in 37 CFR 1.77 or identify any prior disclosures by the inventor or a joint inventor (unless necessary to overcome a rejection), but identifying any prior disclosures by the inventor or a joint inventor may expedite examination of the application and save applicants (and the Office) the costs related to an Office action and reply. If the patent application specification contains a specific reference to a grace period inventor disclosure, the Office will consider it apparent from the specification that the prior disclosure is by the inventor or a joint inventor, provided that the prior disclosure does not name additional authors or joint inventors and there is no other evidence to the contrary. The applicant may also provide a copy of the grace period inventor disclosure (e.g., copy of a printed publication).
The Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130) to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b). See MPEP § 717. In the situations in which it is not apparent from the prior disclosure or the patent application specification that the prior disclosure is by the inventor or a joint inventor, the applicant may establish by way of an affidavit or declaration that a grace period disclosure is not prior art under AIA 35 U.S.C. 102(a)(1) because the prior disclosure was by the inventor or a joint inventor. MPEP § 2155.01 discusses the use of affidavits or declarations to show that the prior disclosure was
made by the inventor or a joint inventor under the exception of AIA 35 U.S.C. 102(b)(1)(A) for a grace period inventor disclosure.
2153.01(b) Grace Period Inventor-Originated Disclosure Exception [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(b)(1)(A) also provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) may be disqualified as prior art if the disclosure was made: (1) one year or less before the effective filing date of the claimed invention; and (2) by another who obtained the subject matter directly or indirectly from the inventor or a joint inventor. Thus, if a prior disclosure upon which the rejection is based is by someone who obtained the subject matter from the inventor or a joint inventor, and was made one year or less before the effective filing date of the claimed invention, the applicant may establish by way of an affidavit or declaration that the prior disclosure is not prior art under AIA 35 U.S.C. 102(a)(1) because the prior disclosure was by another who obtained the subject matter directly or indirectly from the inventor or a joint inventor. MPEP § 718 and MPEP § 2155.03 discuss the use of affidavits or declarations to show that a prior disclosure was by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor under the exception of AIA 35 U.S.C. 102(b)(1)(A) for a grace period inventor-originated disclosure.
2153.02 Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(B) to AIA 35 U.S.C. 102(a)(1) (Inventor Or Inventor-Originated Prior Public Disclosure Exception) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first
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inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(b)(1)(B) provides additional exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(1). These exceptions disqualify a disclosure of subject matter that occurs after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. Specifically, AIA 35 U.S.C. 102(b)(1)(B) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) (patent, printed publication, public use, sale, or other means of public availability) may be disqualified as prior art if: (1) the disclosure was made one year or less before the effective filing date of the claimed invention; and (2) the subject matter disclosed had been previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. The previous public disclosure of the subject matter by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor typically will be a disclosure within the one-year grace period (i.e., be either a grace period inventor disclosure by the inventor or a joint inventor or be a grace period inventor-originated disclosure by another who obtained the subject matter directly or indirectly from the inventor or joint inventor). However, if the previous public disclosure of the subject matter was made outside the grace period, it would qualify as prior art under AIA 35 U.S.C. 102(a)(1) that could not be disqualified under AIA 35 U.S.C. 102(b)(1)(A). MPEP § 2152.01 discusses the “effective filing date” of a claimed invention. MPEP § 2155.02 discusses the use of affidavits or declarations to show that the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor, and MPEP § 2155.03 discusses the use of affidavits or declarations to show that the disclosure was made, or that the subject matter had been previously publicly disclosed, by another obtained the subject
matter disclosed directly or indirectly from the inventor or a joint inventor.
The exception in AIA 35 U.S.C. 102(b)(1)(B) applies if the “subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure, been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor).” See 35 U.S.C. 102(b)(1)(B). The exception in AIA 35 U.S.C. 102(b)(1)(B) focuses on the “subject matter” that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). There is no requirement under AIA 35 U.S.C. 102(b)(1)(B) that the mode of disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening grace period disclosure (e.g., patenting, publication, public use, sale activity). There is also no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening grace period disclosure. See In re Kao, 639 F.3d 1057, 1066 98 USPQ2d 1799, 1806 (Fed. Cir. 2011) (subject matter does not change as a function of how one chooses to describe it). What is required for subject matter in an intervening grace period disclosure to be excepted under AIA 35 U.S.C. 102(b)(1)(B) is that the subject matter of the disclosure to be disqualified as prior art must have been previously publicly disclosed by the inventor or a joint inventor (or by another who obtained the subject matter therefrom).
The exception in AIA 35 U.S.C. 102(b)(1)(B) applies to the subject matter in the intervening grace period disclosure being relied upon as prior art for a rejection under AIA 35 U.S.C. 102(a)(1) (an intervening disclosure) that was also publicly disclosed by the inventor or a joint inventor (or by another who obtained the subject matter therefrom) before such intervening disclosure. The subject matter of an intervening grace period disclosure that is not in the inventor or inventor-originated prior public disclosure is available as prior art under AIA 35 U.S.C. 102(a)(1). For example, if the inventor or a joint inventor had publicly disclosed elements A,
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B, and C, and a subsequent intervening grace period disclosure discloses elements A, B, C, and D, then only element D of the intervening grace period disclosure is available as prior art under AIA 35 U.S.C. 102(a)(1).
In addition, if subject matter of an intervening grace period disclosure is simply a more general description of the subject matter in the inventor or inventor-originated prior public disclosure, the exception in AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening grace period disclosure. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening grace period disclosure discloses a genus (i.e., provides a more generic disclosure of the species), the intervening grace period disclosure of the genus is not available as prior art under AIA 35 U.S.C. 102(a)(1). Conversely, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening grace period disclosure discloses a species, the intervening grace period disclosure of the species would be available as prior art under AIA 35 U.S.C. 102(a)(1). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening grace period disclosure discloses an alternative species not also disclosed by the inventor or a joint inventor, the intervening grace period disclosure of the alternative species would be available as prior art under AIA 35 U.S.C. 102(a)(1).
Finally, AIA 35 U.S.C. 102(b)(1)(B) does not discuss “the claimed invention” with respect to either the subject matter disclosed by the inventor or a joint inventor, or the subject matter of the subsequent intervening grace period disclosure. Any inquiry with respect to the claimed invention is whether or not the subject matter in the prior art disclosure being relied upon anticipates or renders obvious the claimed invention. A determination of whether the exception in AIA 35 U.S.C. 102(b)(1)(B) is applicable to subject matter in an intervening grace period disclosure does not involve a comparison of the subject matter of the claimed invention to either the subject matter in the inventor or inventor-originated prior public disclosure, or to the
subject matter of the subsequent intervening grace period disclosure.
2154 Provisions Pertaining to Subject Matter in a U.S. Patent or Application Effectively Filed Before the Effective Filing Date of the Claimed Invention [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(a)(2) sets forth three types of U.S. patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor. See MPEP §§ 2151, 2154.01, and 2154.01(a) for a discussion of the types of patent documents that qualify as prior art under 35 U.S.C. 102(a)(2). See MPEP § 2154.02 et seq. for prior art exceptions under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C. 102(a)(2).
2154.01 Prior Art Under AIA 35 U.S.C. 102(a)(2) “U.S. Patent Documents” [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor: (1) U.S. patents; (2) U.S. patent application publications; and (3) certain WIPO published applications. These documents are referred to collectively as “U.S. patent documents.”
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These documents may have different prior art effects under pre-AIA 35 U.S.C. 102(e) than under AIA 35 U.S.C. 102(a)(2). Note that a U.S. patent document may also be prior art under AIA 35 U.S.C. 102(a)(1) if its issue or publication date is before the effective filing date of the claimed invention in question.
If the issue date of the U.S. patent or publication date of the U.S. patent application publication or WIPO published application is not before the effective filing date of the claimed invention, it may be applicable as prior art under AIA 35 U.S.C. 102(a)(2) if it was “effectively filed” before the effective filing date of the claimed invention in question with respect to the subject matter relied upon to reject the claim. MPEP § 2152.01 discusses the “effective filing date” of a claimed invention. AIA 35 U.S.C. 102(d) sets forth the criteria to determine when subject matter described in a U.S. patent document was “effectively filed” for purposes of AIA 35 U.S.C. 102(a)(2).
2154.01(a) WIPO Published Applications [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
The WIPO publication of a PCT international application that designates the United States is an application for patent deemed published under 35 U.S.C. 122(b) for purposes of AIA 35 U.S.C. 102(a)(2) under 35 U.S.C. 374. Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States. Accordingly, a U.S. patent, a U.S. patent application publication, or a WIPO published application that names another inventor and was effectively filed before the effective filing date of the claimed invention, is prior art under AIA 35
U.S.C. 102(a)(2). This differs from the treatment of a WIPO published application under pre-AIA 35 U.S.C. 102(e), where a WIPO published application is treated as a U.S. patent application publication only if the PCT application was filed on or after November 29, 2000, designated the United States, and is published under PCT Article 21(2) in the English language. See MPEP § 2136.03, subsection II.
2154.01(b) Determining When Subject Matter Was Effectively Filed Under AIA 35 U.S.C. 102(d) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the filing date of a prior application to which there is a priority or benefit claim (AIA 35 U.S.C. 102(d)(2)). A U.S. patent document “is entitled to claim” priority to, or the benefit of, a prior-filed application if it fulfills the ministerial requirements of: (1) containing a priority or benefit claim to the prior-filed application; (2) being filed within the applicable filing period requirement (copending with or within twelve months of the earlier filing, as applicable); and (3) having a common inventor or being by the same applicant. See MPEP § 211 et. seq.
The AIA draws a distinction between actually being entitled to priority to, or the benefit of, a prior-filed application according to the definition of “effective filing date” of a claimed invention in AIA 35 U.S.C. 100(i)(1)(B), and merely being entitled to claim priority to, or the benefit of, a prior-filed application according to the use of “effectively filed” in AIA 35 U.S.C. 102(d). As a result of this distinction, the
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question of whether a patent or published application is actually entitled to priority or benefit with respect to any of its claims is not at issue in determining the date the patent or published application was “effectively filed” for prior art purposes. Thus, as was the case even prior to the AIA, there is no need to evaluate whether any claim of a U.S. patent document is actually entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365 when applying such a document as prior art. See MPEP § 2136.03, subsection IV.
AIA 35 U.S.C. 102(d) requires that a prior-filed application to which a priority or benefit claim is made must describe the subject matter from the U.S. patent document relied upon in a rejection. However, AIA 35 U.S.C. 102(d) does not require that this description meet the enablement requirements of 35 U.S.C. 112(a). As discussed previously with respect to AIA 35 U.S.C. 102(a)(1), the Office does not view the AIA as changing the extent to which a claimed invention must be described for a prior art document to anticipate the claimed invention under AIA 35 U.S.C. 102.
The AIA also eliminates the so-called Hilmer doctrine. Under the Hilmer doctrine, pre-AIA 35 U.S.C. 102(e) limited the effective filing date for U.S. patents (and published applications) as prior art to their earliest U.S. filing date. In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966). In contrast, AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter. Therefore, if the subject matter relied upon is described in the application to which there is a priority or benefit claim, the U.S. patent document is effective as prior art as of the filing date of the earliest such application, regardless of where filed. When examining an application to which the AIA changes in 35 U.S.C. 102 and 103 do not apply, Office personnel will continue to apply the Hilmer doctrine, and foreign priority dates may not be used in determining pre-AIA 35 U.S.C. 102(e) prior art dates. Note that the international filing date of a published PCT application may be the pre-AIA 35
U.S.C. 102(e) prior art date under pre-AIA law under certain circumstances. See MPEP § 706.02(f).
2154.01(c) Requirement Of “Names Another Inventor” [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
To qualify as prior art under AIA 35 U.S.C. 102(a)(2), the prior art U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) must “name[ ] another inventor.” This means that if there is any difference in inventive entity between the prior art U.S. patent document and the application under examination or patent under reexamination, the U.S. patent document satisfies the “names another inventor” requirement of AIA 35 U.S.C. 102(a)(2). Thus, in the case of joint inventors, only one joint inventor needs to be different for the inventive entities to be different. Even if there are one or more joint inventors in common in a U.S. patent document and the later-filed application under examination or patent under reexamination, the U.S. patent document qualifies as prior art under AIA 35 U.S.C. 102(a)(2) unless an exception in AIA 35 U.S.C. 102(b)(2) is applicable.
2154.02 Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C. 102(a)(2) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
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See MPEP § 2154.02(a) for prior art exceptions to 35 U.S.C. 102(a)(2) under AIA 35 U.S.C. 102(b)(2)(A) based on the inventor-originated disclosure exception. See MPEP § 2154.02(b) for prior art exceptions to AIA 35 U.S.C. 102(a)(2) based on inventor or inventor-originated prior public disclosures as provided for in AIA 35 U.S.C. 102(b)(2)(B). See MPEP § 2154.02(c) the prior art exception under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C. 102(a)(2) based on common ownership or obligation of assignment.
2154.02(a) Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Disclosure Exception) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(b)(2)(A) provides an exception to the prior art provisions of AIA 35 U.S.C. 102(a)(2). This exception limits the use of an inventor's own work as prior art, when the inventor's own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.
Specifically, AIA 35 U.S.C. 102(b)(2)(A) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) may be disqualified as prior art if the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. Thus, if the subject matter in a U.S. patent document upon which the rejection is based is by another who obtained the subject matter from the inventor or a joint inventor, the applicant may establish by way of an affidavit or declaration that a disclosure is not prior art under AIA 35 U.S.C. 102(a)(2). MPEP § 2155.03 discusses the use of affidavits or declarations to show that the disclosure was by another who obtained the subject
matter disclosed directly or indirectly from the inventor or a joint inventor under the exception of AIA 35 U.S.C. 102(b)(2)(A) for an inventor-originated disclosure.
2154.02(b) Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C. 102(a)(2) (Inventor or Inventor-Originated Prior Public Disclosure Exception) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(b)(2)(B) provides additional exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(2). These exceptions disqualify subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.
Specifically, AIA 35 U.S.C. 102(b)(2)(B) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) (a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”)) may be disqualified as prior art if the subject matter disclosed had been previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. The previous public disclosure of the subject matter by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor must itself be a public disclosure (i.e., be either an inventor disclosure by the inventor or a joint inventor or be an inventor-originated disclosure by another who obtained the subject matter directly or indirectly from the inventor or joint inventor). If a previous public disclosure by the inventor or which originated
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with the inventor is not within the grace period of AIA 35 U.S.C. 102(b)(1), it would qualify as prior art under AIA 35 U.S.C. 102(a)(1), and could not be disqualified under AIA 35 U.S.C. 102(b)(1). MPEP § 2155.02 discusses the use of affidavits or declarations to show that the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor, and MPEP § 2155.03 discusses the use of affidavits or declarations to show that another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the “subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.” The exception in AIA 35 U.S.C. 102(b)(2)(B) focuses on the “subject matter” that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). There is no requirement under 35 U.S.C. 102(b)(2)(B) that the mode of prior disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening U.S. patent document(e.g., patenting, publication, public use, sale activity). There is also no requirement that the prior disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening U.S. patent document. What is required for subject matter in the intervening U.S. patent document to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor).
The exception in AIA 35 U.S.C. 102(b)(2)(B) applies only to the subject matter in the intervening U.S. patent document being relied upon for a rejection under AIA 35 U.S.C. 102(a)(2) that was also publicly disclosed by the inventor or a joint inventor (or
another who obtained the subject matter directly or indirectly from the inventor or joint inventor) before the date the subject matter relied upon was effectively filed. The subject matter of an intervening U.S. patent document that was not previously publicly disclosed by the inventor or a joint inventor (or by another who obtained the subject matter from the inventor or joint inventor) is available as prior art under AIA 35 U.S.C. 102(a)(2). For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening U.S. patent document discloses elements A, B, C, and D, then only element D of the intervening U.S. patent document is available as prior art under AIA 35 U.S.C. 102(a)(2).
In addition, if subject matter of an intervening U.S. patent document is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor), the exception in AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening U.S. patent document. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent document is not available as prior art under AIA 35 U.S.C. 102(a)(2). Conversely, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent document discloses a species, the disclosure of the species in the subsequent intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2).
Finally, AIA 35 U.S.C. 102(b)(2)(B) does not discuss “the claimed invention” with respect to either the subject matter disclosed by the inventor or a joint inventor, or the subject matter of the subsequent
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intervening U.S. patent document. Any inquiry with respect to the claimed invention is whether or not the subject matter in the prior art disclosure being relied upon anticipates or renders obvious the claimed invention. A determination of whether the exception in AIA 35 U.S.C. 102(b)(2)(B) is applicable to subject matter in an intervening U.S. patent document does not involve a comparison of the subject matter of the claimed invention to either the subject matter disclosed by the inventor or a joint inventor, or to the subject matter of the subsequent intervening U.S. patent document.
2154.02(c) Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C. 102(a)(2) (Common Ownership or Obligation of Assignment) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(b)(2)(C) provides an additional exception to the prior art provisions of AIA 35 U.S.C. 102(a)(2). The exception of AIA 35 U.S.C. 102(b)(2)(C) disqualifies subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) from constituting prior art under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, “were owned by the same person or subject to an obligation of assignment to the same person.” AIA 35 U.S.C. 102(b)(2)(C) resembles pre-AIA 35 U.S.C. 103(c) in that both concern common ownership, and offer an avenue by which an applicant may avoid certain prior art. However, there are significant differences between AIA 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c).
If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, a U.S. patent document that might otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) is not available as prior art under either AIA 35
U.S.C. 102 or 103. This differs from pre-AIA 35 U.S.C. 103(c) in which prior art can preclude patentability under pre-AIA 35 U.S.C. 102, even if the conditions of pre-AIA 35 U.S.C. 103(c) are met. The consequence of this distinction is that a published application or an issued patent that falls under the common ownership exception of AIA 35 U.S.C. 102(b)(2)(C) may not be applied in either an anticipation or an obviousness rejection.
It is important to note the circumstances in which the AIA 35 U.S.C. 102(b)(2)(C) exception does not remove a U.S. patent document as a basis for a rejection. The AIA 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under AIA 35 U.S.C. 102(a)(1) (disclosures made before the effective filing date of the claimed invention). Thus, if the issue date of a U.S. patent document is before the effective filing date of the claimed invention, it may be prior art under AIA 35 U.S.C. 102(a)(1), regardless of common ownership or the existence of an obligation to assign. Also, even if a U.S. patent or U.S. published application is not prior art under AIA 35 U.S.C. 102 or 103 as a result of AIA 35 U.S.C. 102(b)(2)(C), a double patenting rejection (either statutory under 35 U.S.C. 101 or non-statutory, sometimes called obviousness-type) may still be made on the basis of the U.S. patent or U.S. patent application publication. Furthermore, the U.S. patent document that does not qualify as prior art as a result of AIA 35 U.S.C. 102(b)(2)(C) may still be cited, in appropriate situations, to indicate the state of the art when making a lack of enablement rejection under 35 U.S.C. 112(a). A document need not qualify as prior art to be applied in the context of double patenting, see MPEP § 804.03 (prior art disqualified under the CREATE Act may be the basis for a double patenting rejection), or enablement. See MPEP § 2124.
The Office revised the rules of practice to include provisions that pertain to commonly owned or joint research agreement subject matter (37 CFR 1.104(c)(4) and (c)(5)). 37 CFR 1.104(c)(4) applies to an application that is subject to AIA 35 U.S.C. 102 and 35 U.S.C. 103, and 37 CFR 1.104(c)(5) applies to an application that is subject to pre-AIA 35 U.S.C. 102 and 103. Commonly owned subject matter under AIA 35 U.S.C. 102 and 103 is treated
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under 37 CFR 1.104(c)(4)(i), and commonly owned subject matter under pre-AIA 35 U.S.C. 102 and 103 is treated under 37 CFR 1.104(c)(5)(i). See MPEP § 706.02(l)(1).
A clear and conspicuous statement by the applicant (or the applicant's representative of record) that the claimed invention of the application under examination and the subject matter disclosed in the U.S. patent document applied as prior art were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention will be sufficient to establish that the AIA 35 U.S.C. 102(b)(2)(C) exception applies. Likewise, when relying on the provisions of pre-AIA 35 U.S.C. 103(c), the applicant (or the applicant's representative of record) can provide a similar statement required to disqualify the cited prior art. The applicant may present supporting evidence such as copies of assignment documents, but is not required to do so. Furthermore, the Office will not request corroborating evidence in the absence of independent evidence which raises doubt as to the veracity of such a statement. The statement under AIA 35 U.S.C. 102(b)(2)(C) will generally be treated by Office personnel analogously to statements made under pre-AIA 35 U.S.C. 103(c). See MPEP § 706.02(l)(2), subsection II.
2155 Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
37 CFR 1.130 Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act.
(a) Affidavit or declaration of attribution. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a
joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
(b) Affidavit or declaration of prior public disclosure. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. An affidavit or declaration under this paragraph must identify the subject matter publicly disclosed and provide the date such subject matter was publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(1) If the subject matter publicly disclosed on that date was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication.
(2) If the subject matter publicly disclosed on that date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on that date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(c) When this section is not available . The provisions of this section are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. The provisions of this section may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant's or patent owner's claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or a patent owner may file a petition for a derivation proceeding pursuant to § 42.401 et seq. of this title.
(d) Applications and patents to which this section is applicable. The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
(1) A claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013.
The Office has provided a mechanism in 37 CFR 1.130 for filing an affidavit or declaration to establish
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that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b). Under 37 CFR 1.130(a), an affidavit or declaration of attribution may be submitted to disqualify a disclosure as prior art because it was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. Under 37 CFR 1.130(b), an affidavit or declaration of prior public disclosure may be submitted to disqualify an intervening disclosure as prior art if the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed in a U.S. patent, U.S. patent application publication, or WIPO published application, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
2155.01 Showing That the Disclosure Was Made by the Inventor or a Joint Inventor [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if the disclosure was made by the inventor or a joint inventor. An applicant may show that a disclosure was made by the inventor or a joint inventor by way of an affidavit or declaration under 37 CFR 1.130(a) (an affidavit or declaration of attribution). See In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982) and MPEP § 718. Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an “unequivocal” statement from the inventor or a joint inventor that he/she (or some specific combination of named inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be
acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982). However, a mere statement from the inventor or a joint inventor without any accompanying reasonable explanation may not be sufficient where there is evidence to the contrary. See Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (affirming rejection notwithstanding declarations by the alleged actual inventors as to their inventorship in view of a nonapplicant author submitting a letter declaring the nonapplicant author's inventorship). This is similar to the current process for disqualifying a publication as not being by “others” discussed in MPEP § 2132.01, except that AIA 35 U.S.C. 102(b)(1)(A) requires only that the disclosure be by the inventor or a joint inventor.
2155.02 Showing That the Subject Matter Disclosed Had Been Previously Publicly Disclosed by the Inventor or a Joint Inventor [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(b)(1)(B) provides that a grace period disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor. Similarly, AIA 35 U.S.C. 102(b)(2)(B) provides that a disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed had, before such subject matter was effectively filed under AIA 35 U.S.C. 102(a)(2), been publicly disclosed by the inventor or a joint inventor. An applicant may show that the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor before the disclosure or effective filing date of the subject matter on which the rejection was based by way of an affidavit or declaration under 37 CFR 1.130(b) (an affidavit or declaration of prior public disclosure). Specifically, the affidavit or declaration
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must identify the subject matter publicly disclosed and establish the date and content of their earlier public disclosure. If the earlier public disclosure is a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication in accordance with37 CFR 1.130(b)(1). If the earlier disclosure is not a printed publication, the affidavit or declaration must describe the earlier disclosure with sufficient detail and particularity to determine that the earlier disclosure is a public disclosure of the subject matter, as required by 37 CFR 1.130(b)(2).
The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b)(2) is not critical. Just as the prior art provision of AIA 35 U.S.C. 102(a)(1) encompasses any disclosure that renders a claimed invention “available to the public,” any manner of disclosure may be evidenced in an affidavit or declaration under 37 CFR 1.130(b). That is, when using an affidavit or declaration under 37 CFR 1.130(b) to disqualify an intervening disclosure as prior art based on a prior public disclosure by an inventor or a joint inventor, it is not necessary for the subject matter to have been disclosed in the same manner or using the same words. For example, the inventor or a joint inventor may have publicly disclosed the subject matter in question via a slide presentation at a scientific meeting, while the intervening disclosure of the subject matter may have been made in a journal article. This difference in the manner of disclosure or differences in the words used to describe the subject matter will not preclude the inventor from submitting an affidavit or declaration under 37 CFR 1.130(b) to disqualify the intervening disclosure (e.g., a journal article) as prior art.
2155.03 Showing That the Disclosure was Made, or That Subject Matter had Been Previously Publicly Disclosed, by Another Who Obtained the Subject Matter Disclosed Directly or Indirectly From the Inventor or a Joint Inventor [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et
seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(b)(1)(A), 102(b)(1)(B), 102(b)(2)(A), and 102(b)(2)(B) each provide similar treatment for disclosures of subject matter by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Specifically, AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if the disclosure was made by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, and AIA 35 U.S.C. 102(b)(2)(A) provides that a disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
In addition, AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) respectively provide that a grace period disclosure under AIA 35 U.S.C. 102(a)(1), and that a disclosure under AIA 35 U.S.C. 102(a)(2) shall not be prior art to a claimed invention, if the subject matter disclosed had, before such grace disclosure was made or before such subject matter was effectively filed according to 35 U.S.C. 102(a)(2), been publicly disclosed by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. An applicant may also show that another obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor in an affidavit or declaration under 37 CFR 1.130(a) or (b). Thus, an applicant may establish a prior public disclosure by another during the grace period if the applicant can establish that subject matter disclosed originated with the inventor or a joint inventor and that the subject matter was communicated by the inventor or a joint inventor, directly or indirectly. Any documentation which provides evidence of the communication of the subject matter by the inventor or a joint inventor to the entity that made the disclosure of the subject matter directly or indirectly, such as by an assignee
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of the inventor, should accompany the affidavit or declaration.
2155.04 Enablement [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
An affidavit or declaration under 37 CFR 1.130(a) or (b) need not demonstrate that the disclosure by the inventor, a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from an inventor or a joint inventor was an “enabling” disclosure of the subject matter within the meaning of 35 U.S.C. 112(a). Rather, an affidavit or declaration under 37 CFR 1.130 must show that: (1) the disclosure in question was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor (37 CFR 1.130(a)); or (2) the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor (37 CFR 1.130(b)).
2155.05 Who May File an Affidavit or Declaration Under 37 CFR 1.130 [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
In accordance with 37 CFR 1.130, the applicant or patent owner may submit an affidavit or declaration. When an assignee, obligated assignee, or person
showing sufficient proprietary interest is the applicant under 35 U.S.C. 118 rather than the inventor, the inventor may sign an affidavit or declaration under 37 CFR 1.130 to disqualify a disclosure of the invention as prior art, but the declaration must be filed by a party having authority to take action in the application. Authority to file papers in an application generally does not lie with the inventor if the inventor is not the applicant.
2155.06 Situations in Which an Affidavit or Declaration Is Not Available [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
The provisions of 37 CFR 1.130 are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. A disclosure made more than one year before the effective filing date of a claimed invention is prior art under AIA 35 U.S.C. 102(a)(1) that cannot be disqualified under AIA 35 U.S.C. 102(b)(1).
Additionally, the provisions of 37 CFR 1.130 may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication naming another inventor if: (1) the patent or pending application claims an invention that is the same or substantially the same as the applicant's or patent owner's claimed invention; and (2) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent. The provisions of 37 CFR 1.130 are not available if it would result in the Office issuing or confirming two patents containing patentably indistinct claims to two different parties. See In re Deckler, 977 F.2d 1449, 1451-52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) (35 U.S.C. 102 , 103, and 135 “clearly contemplate—where different inventive entities are concerned—only one patent should issue for
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inventions which are either identical to or not patentably distinct from each other”) (quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977)). In this situation, an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401 et seq. (37 CFR 1.130(c)).
2156 Joint ResearchAgreements [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 and MPEP § 2146 for examination of applications subject to pre-AIA 35 U.S.C. 102 and 35 U.S.C. 103.]
35 U.S.C. 102(c) Conditions for patentability; novelty.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
AIA 35 U.S.C. 102(c) provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or subject to an obligation of assignment to the same person in applying common ownership provisions of AIA 35 U.S.C. 102(b)(2)(C) in the context of a joint research agreement. First, the subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention. See 35 U.S.C. 102(c)(1). The
AIA defines the term “joint research agreement” as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. See 35 U.S.C. 100(h). Second, the claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement. See 35 U.S.C. 102(c)(2). Third, the application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement. See 35 U.S.C. 102(c)(3). Joint research agreement subject matter under AIA 35 U.S.C. 102 and 103 is treated under 37 CFR 1.104(c)(5)(ii), joint research agreement subject matter under pre-AIA 35 U.S.C. 102 and 103 is treated under 37 CFR 1.104(c)(5)(ii). If these conditions are met, the joint research agreement prior art is not available as prior art under AIA 35 U.S.C. 102(a)(2).
The provisions of AIA 35 U.S.C. 102(c) generally track those of the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). See MPEP § 706.02(l)(1). The major differences between AIA 35 U.S.C. 102(c) and the CREATE Act are that: (1) the AIA provision is keyed to the effective filing date of the claimed invention, while the CREATE Act focuses on the date that the claimed invention was made; and (2) the CREATE Act provisions only apply to obviousness rejections and not to anticipation rejections.
In order to invoke a joint research agreement to disqualify a disclosure as prior art, the applicant (or the applicant's representative of record) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were made by or on behalf of parties to a joint research agreement under AIA 35 U.S.C. 102(c). The statement must also assert that the agreement was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. When relying on the provisions of pre-AIA 35 U.S.C. 103(c), the applicant or his attorney or agent of record can provide a similar statement to disqualify the cited prior art as to the
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issue of obviousness. If the names of the parties to the joint research agreement are not already stated in the application, it is necessary to amend the application to include the names of the parties to the joint research agreement in accordance with 37 CFR 1.71(g).
As is the case with establishing common ownership, the applicant may, but is not required to, present evidence supporting the existence of the joint research agreement. Furthermore, the Office will not request corroborating evidence in the absence of independent evidence which raises doubt as to the existence of the joint research agreement.
As discussed previously, the AIA 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under AIA 35 U.S.C. 102(a)(1) (disclosures made before the effective filing date of the claimed invention). Thus, if the issue date or publication date of a U.S. patent document is before the effective filing date of the claimed invention, it may be prior art under AIA 35 U.S.C. 102(a)(1), regardless of the fact that the claimed invention resulted from a joint research agreement and the disclosure was by a party to the agreement.
2157 Improper Naming of Inventors [R-07.2015]
Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent laws still require the naming of the actual inventor or joint inventors of the claimed subject matter. See 35 U.S.C. 115(a) (“[a]n application for patent that is filed under [35 U.S.C.] 111(a) or commences the national stage under [35 U.S.C.] 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application”). The Office presumes that the named inventor or joint inventors in the application are the actual inventor or joint inventors to be named on the patent. See MPEP § 2137.01. Where an application names an incorrect inventorship, the applicant should submit a request to correct inventorship under 37 CFR 1.48. See MPEP § 602.01(c) et seq. In the rare situation where it clear that the application does not name the correct inventorship and the applicant has not filed a request to correct inventorship under 37 CFR 1.48, Office
personnel should reject the claims under 35 U.S.C. 101 and 35 U.S.C. 115. See MPEP § 706.03(a), subsection IV. Note that a rejection under pre-AIA 35 U.S.C. 102(f) should not be made if the application is subject to examination under the first inventor to file (FITF) provisions of the AIA. See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2137 for information pertaining to pre-AIA 35 U.S.C. 102(f).
2158 AIA 35 U.S.C. 103 [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2141-MPEP § 2146 for information on pre-AIA 35 U.S.C. 103 and AIA 35 U.S.C. 103.]
AIA 35 U.S.C. 103 continues to set forth the nonobviousness requirement for patentability. There are, however, some important changes from pre-AIA 35 U.S.C. 103.
The most significant difference between the AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103(a) is that AIA 35 U.S.C. 103 determines obviousness as of the effective filing date of the claimed invention, rather than as of the time that the claimed invention was made. Under pre-AIA examination practice, the Office uses the effective filing date as a proxy for the invention date, unless there is evidence of record to establish an earlier date of invention. Thus, as a practical matter during examination, this distinction between the AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103 will result in a difference in practice only when the case under examination is subject to pre-AIA 35 U.S.C. 103 , and there is evidence in the case concerning a date of invention prior to the effective filing date. Such evidence is ordinarily presented by way of an affidavit or declaration under 37 CFR 1.131.
Next, AIA 35 U.S.C. 103 differs from that of pre-AIA 35 U.S.C. 103 in that AIA 35 U.S.C. 103 requires consideration of “the differences between the claimed invention and the prior art,” while
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pre-AIA 35 U.S.C. 103 refers to “the differences between the subject matter sought to be patented and the prior art.” This difference in terminology does not indicate the need for any difference in approach to the question of obviousness. As pointed out by the Federal Circuit, “[t]he term ‘claims' has been used in patent legislation since the Patent Act of 1836 to define the invention that an applicant believes is patentable.” Hoechst-Roussel Pharms., Inc. v. Lehman, 109 F.3d 756, 758, 42 USPQ2d 1220, 1222 (Fed. Cir. 1997) (citing Act of July 4, 1836, ch. 357, § 6, 5 Stat. 117). Furthermore, in Graham v. John Deere, the second of the Supreme
Court's factual inquiries (the “Graham factors”) is that the “differences between the prior art and the claims at issue are to be ascertained.” 383 U.S. 1, 17, 148 USPQ 459, 467. Thus, in interpreting 35 U.S.C. 103 as enacted in the 1952 Patent Act—language that remained unchanged until enactment of the AIA—the Court equated “the subject matter sought to be patented” with the claims.
Further, AIA 35 U.S.C. 103 does not contain any provision similar to pre-AIA 35 U.S.C. 103(b). Pre-AIA 35 U.S.C. 103(b) is narrowly drawn, applying only to nonobviousness of biotechnological inventions, and even then, only when specifically invoked by the patent applicant. Pre-AIA 35 U.S.C. 103(b) provides that under certain conditions, “a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection [103(a)] of this section shall be considered nonobvious.” In view of the case law since 1995, the need to invoke pre-AIA 35 U.S.C. 103(b) has been rare. As stated in MPEP § 706.02(n), in view of the Federal Circuit's decisions in In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) and In re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996), the need to invoke pre-AIA 35 U.S.C. 103(b) rarely arose. Those cases continue to retain their validity under the AIA.
Finally, AIA 35 U.S.C. 103 eliminates pre-AIA 35 U.S.C. 103(c), but corresponding provisions have been introduced in AIA 35 U.S.C. 102(b)(2)(C) and 102(c). Pre-AIA 35 U.S.C. 103(c) applied if subject matter qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g), and only in the context of obviousness under pre-AIA 35 U.S.C. 103(a). If subject matter developed by another person was
commonly owned with the claimed invention, or if the subject matter was subject to an obligation of assignment to the same person, at the time the claimed invention was made, then pre-AIA 35 U.S.C. 103(a) did not preclude patentability. Furthermore, under pre-AIA 35 U.S.C. 103(c), if a joint research agreement was in place on or before the date that the claimed invention was made, the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement, and the application for patent disclosed or was amended to disclose the names of the parties to the joint research agreement, common ownership or an obligation to assign was deemed to exist. As discussed previously, AIA 35 U.S.C. 102(b)(2)(C) and 102(c) expand on this concept. Under the AIA, the common ownership, obligation to assign, or joint research agreement must exist on or before the effective filing date of the claimed invention, rather than on or before the date the invention was made. If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, a disclosure is not prior art at all, whereas under pre-AIA 35 U.S.C. 103(c) , certain prior art merely was defined as not precluding patentability. Finally, disclosures disqualified as prior art under AIA 35 U.S.C. 102(b)(2)(C) and 102(c) may not be applied in either an anticipation or an obviousness rejection. However, such disclosures could be the basis for statutory double patenting or non-statutory (sometimes referred to as obviousness-type) double patenting rejections.
Generally speaking, and with the exceptions noted herein, pre-AIA notions of obviousness will continue to apply under the AIA. AIA 35 U.S.C. 102(a) defines what is prior art both for purposes of novelty under AIA 35 U.S.C. 102 as well as for purposes of obviousness under AIA 35 U.S.C. 103. See Hazeltine Res., Inc. v. Brenner, 382 U.S. 252, 256, 147 USPQ 429, 430 (1965) (a previously filed patent application to another pending in the Office, but not patented or published, at the time an application is filed constitutes part of the “prior art” within the meaning of 35 U.S.C. 103). Thus, if a document qualifies as prior art under AIA 35 U.S.C. 102(a)(1) or (a)(2), and is not subject to an exception under AIA 35 U.S.C. 102(b), it may be applied for what it describes or teaches to those skilled in the art in a rejection under AIA 35 U.S.C. 103. This is in accordance with pre-AIA case law indicating that in making
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determinations under 35 U.S.C. 103, “it must be known whether a patent or publication is in the prior art under 35 U.S.C. 102.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987). However, while a disclosure must enable those skilled in the art to make the invention in order to anticipate under 35 U.S.C. 102, a non-enabling disclosure is prior art for all it teaches for purposes of determining obviousness under 35 U.S.C. 103 . Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991); Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551, 13 USPQ2d 1301, 1304 (Fed. Cir. 1989) (“Even if a reference discloses an inoperative device, it is prior art for all that it teaches.”). Office personnel should continue to follow guidance for formulating an appropriate rationale to support any conclusion of obviousness. See MPEP § 2141 et seq. and the guidance documents available at www.uspto.gov/patent/ laws-and-regulations/examination-policy/examination- guidelines-training-materials-view-ksr .
2159 Applicability Date Provisions and Determining Whether an Application Is Subject to the First Inventor To File Provisions of the AIA [R-11.2013]
Because the changes to 35 U.S.C. 102 and 35 U.S.C. 103 in the AIA apply only to specific applications filed on or after March 16, 2013, determining the effective filing date of a claimed invention for purposes of applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102 and 103 provisions is critical.
2159.01 Applications Filed Before March 16, 2013 [R-11.2013]
The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application filed before March 16, 2013. Thus, any application filed before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103 (i.e., the application is a pre-AIA first to invent application). Note that neither the filing of a request for continued examination, nor entry into the national stage under 35 U.S.C. 371, constitutes the filing of a new application. Accordingly, even if a request for continued examination under 37 CFR 1.114 is
filed on or after March 16, 2013, in an application that was filed before March 16, 2013, the application remains subject to pre-AIA 35 U.S.C. 102 and 103. Similarly, a PCT application filed under 35 U.S.C. 363 before March 16, 2013, is subject to pre-AIA 35 U.S.C. 102 and 103, regardless of whether the application enters the national stage under 35 U.S.C. 371 before or after March 16, 2013. Additionally, adding claims after March 16, 2013 in an application filed before March 16, 2013 via an amendment which contains new matter does not make the changes to 35 U.S.C. 102 and 35 U.S.C. 103 in the AIA applicable to the application because 35 U.S.C. 132(a) prohibits the introduction of new matter into the disclosure. If new matter is added via amendment, claims directed to the new matter will be rejected under pre-AIA 35 U.S.C. 112, first paragraph. See MPEP § 608.04.
2159.02 Applications Filed on or After March 16, 2013 [R-11.2013]
AIA 35 U.S.C. 102 and 103 took effect on March 16, 2013. AIA 35 U.S.C. 102 and 103 apply to any patent application that contains or contained at any time a claim to a claimed invention that has an effective filing date that is on or after March 16, 2013. If a patent application (1) contains or contained at any time a claim to a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013 or (2) claims or ever claimed the benefit of an earlier filing date under 35 U.S.C. 120 , 121, or 365 based upon an earlier application that ever contained such a claim, then AIA 35 U.S.C. 102 and 103 apply to the application, (i.e., the application is an AIA application). If there is ever even a single claim to a claimed invention in the application having an effective filing date on or after March 16, 2013, AIA 35 U.S.C. 102 and 103 apply in determining the patentability of every claimed invention in the application. This is the situation even if the remaining claimed inventions all have an effective filing date before March 16, 2013, and even if the claim to a claimed invention having an effective filing date on or after March 16, 2013, is canceled.
If an application filed on or after March 16, 2013, that did not previously contain any claim to a claimed invention having an effective filing date on
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or after March 16, 2013, (a pre-AIA application) is amended to contain a claim to a claimed invention having an effective filing date on or after March 16, 2013, the application becomes an AIA application (AIA 35 U.S.C. 102 and 103 apply to the application), provided that the newly added claimed invention has support under 35 U.S.C. 112(a) in the application filed on or after March 16, 2013. The application also becomes subject to AIA 35 U.S.C. 102 and 103 even if the claim to a claimed invention having an effective filing date on or after March 16, 2013, is subsequently canceled. If an amendment after an Office action causes the application to change from being governed by pre-AIA 35 U.S.C. 102 and 103 (from being a pre-AIA application) to being governed by AIA 35 U.S.C. 102 and 103 (to being a AIA application), any new ground of rejection necessitated by the change in applicable law would be considered a new ground of rejection necessitated by an amendment for purposes of determining whether the next Office action may be made final. See MPEP § 706.07(a).
As 35 U.S.C. 132(a) prohibits the introduction of new matter into the disclosure, an application may not contain a claim to a claimed invention that does not have support under 35 U.S.C. 112(a) in the application (that is directed to new matter). Thus, an application cannot “contain” a claim to a claimed invention that is directed to new matter for purposes of determining whether the application ever contained a claim to a claimed invention having an effective filing date on or after March 16, 2013. Amendments that are believed to contain new matter should be treated as follows: (1) a new drawing should not be entered if the examiner discovers that the drawing contains new matter (MPEP § 608.02, subsection II.); and (2) amendments to the written description or claims involving new matter are ordinarily entered, but the new matter is required to be canceled from the written description and the claims directed to the new matter are rejected under 35 U.S.C. 112(a) (MPEP § 608.04). This process for treating amendments containing new matter is purely an administrative process for handling an amendment seeking to introduce new matter into the disclosure of the invention in violation of 35 U.S.C. 132(a), and for resolving disputes between the applicant and an examiner as to whether a new drawing or amendment to the written description or claims
would actually introduce new matter into the disclosure of the invention. Therefore, an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim to a claimed invention that is directed to new matter in an application filed on or after March 16, 2013, that, as originally filed, discloses and claims only subject matter also disclosed in an earlier application filed before March 16, 2013 to which the application filed on or after March 16, 2013, is entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365, would not change the application from a pre-AIA application into an AIA application.
2159.03 Applications Subject to the AIA but Also Containing a Claimed Invention Having an Effective Filing Date Before March 16, 2013 [R-11.2013]
Even if AIA 35 U.S.C. 102 and 103 apply to a patent application, pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application if it: (1) contains or contained at any time a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time such a claim. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an application to which pre-AIA 35 U.S.C. 102(g) applied. See MPEP § 2138.
Thus, if an application contains, or contained at any time, any claim having an effective filing date that occurs before March 16, 2013, and also contains, or contained at any time, any claim having an effective filing date that is on or after March 16, 2013, each claim must be patentable under AIA 35 U.S.C. 102 and 103, as well as pre-AIA 35 U.S.C. 102(g), for the applicant to be entitled to a patent. However, an application will not otherwise be concurrently subject to both pre-AIA 35 U.S.C. 102 and 103 and AIA 35 U.S.C. 102 and 103.
For these reasons, when subject matter is claimed in an application filed on or after March 16, 2013 having priority to or the benefit (e.g., under 35 U.S.C. 120, 121, or 365(c)) of a prior application filed before March 16, 2013, care must be taken to accurately determine whether AIA or pre-AIA 35
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U.S.C. 102 and 103 applies to the application. See Also MPEP § 2151.
2159.04 Applicant Statement in Transition Applications Containing a Claimed Invention Having an Effective Filing Date on or After March 16, 2013 [R-11.2013]
The Office revised 37 CFR 1.55 and 1.78 to require that if a nonprovisional application filed on or after March 16, 2013, claims the benefit of or priority to an application where the filing date of a foreign, U.S. provisional, U.S. nonprovisional, or international application is prior to March 16, 2013 (termed as “a transition application”), and also contains or contained at any time a claimed invention having an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect (“the 37 CFR 1.55 or 1.78 statement”). This information will assist the Office in determining whether the transition application is subject to AIA 35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 and 103. However, applicant is not required to provide this information if the transition application claims the benefit of an earlier transition application in which a 37 CFR 1.55 or 37 CFR 1.78 statement has been filed. See 37 CFR 1.78(c)(6)(i). See also MPEP § 210.
2160 [Reserved]
2161 Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph [R-07.2015]
I. THE SPECIFICATION MUST INCLUDE A WRITTEN DESCRIPTION OF THE INVENTION, ENABLEMENT,AND BEST MODE OF CARRYING OUT THE CLAIMED INVENTION
35 U.S.C. 112(a) (applicable to applications filed on or after September 16, 2012) provides:
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact
terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The first paragraph of pre-AIA 35 U.S.C. 112 (applicable to applications filed before September 16, 2012) provides:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. [emphasis added].
35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph require that the specification include the following:
(A) A written description of the invention;
(B) The manner and process of making and using the invention (the enablement requirement); and
(C) The best mode contemplated by the inventor of carrying out his invention.
II. THE THREE REQUIREMENTS ARE SEPARATE AND DISTINCT FROM EACH OTHER
The written description requirement is separate and distinct from the enablement requirement. Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1341, 94 USPQ2d 1161, 1167 (Fed. Cir. 2010) (en banc) (If Congress had intended enablement to be the sole description requirement of § 112, first paragraph, the statute would have been written differently.) Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d 1111, 1115 (Fed. Cir. 1991) (While acknowledging that some of its cases concerning the written description requirement and the enablement requirement are confusing, the Federal Circuit reaffirmed that under 35 U.S.C. 112, first paragraph, the written description requirement is separate and distinct from the enablement
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requirement and gave an example thereof.); In re Barker, 559 F.2d 588, 194 USPQ 470 (CCPA 1977), cert. denied, 434 U.S. 1064 (1978). See also, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc.,
782 F.3d 671, 681-685, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court's grant of summary judgment of invalidity for lack of an adequate written description and lack of enablement because there were genuine issues of material fact regarding 1) whether the claims had sufficient written description support (“[t]he fact that . . . the specification do[es] not speak in haec verba of accessing ‘disparate databases’does not eliminate as a genuine issue of material fact that the existence of at least some discussion, and therefore, possession, of the accessing of disparate databases, as claimed”); and 2) whether the claims were enabled (“the effort it took the inventor to reduce the invention to practice does not conclusively show lack of enablement”). An invention may be described without the disclosure being enabling (e.g., a chemical compound for which there is no disclosed or apparent method of making), and a disclosure could be enabling without describing the invention (e.g., a specification describing a method of making and using a paint composition made of functionally defined ingredients within broad ranges would be enabling for formulations falling within the description but would not describe any specific formulation). See In re Armbruster, 512 F.2d 676, 677, 185 USPQ 152, 153 (CCPA 1975) (“[A] specification which ‘describes’ does not necessarily also ‘enable’ one skilled in the art to make or use the claimed invention.”). Best mode is a separate and distinct requirement from the enablement requirement. In re Newton, 414 F.2d 1400, 163 USPQ 34 (CCPA 1969).
2161.01 Computer Programming and 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph [R-07.2015]
The s ta tu tory requi rements for computer-implemented inventions are the same as for all inventions, such as the subject matter eligibility and utility requirements under 35 U.S.C. 101 (see MPEP §§ 2106 and 2107, respectively), the novelty requirement of 35 U.S.C. 102, the nonobviousness requirement of 35 U.S.C. 103, the
definiteness requirement of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and the three separate and distinct requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In addition, claims with computer-implemented functional claim limitations may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See MPEP § 2181, subsection II.B. and § 2181, subsection IV. for information regarding means- (or step-) plus- function limitations.
I. DETERMINING WHETHER THERE IS ADEQUATE WRITTEN DESCRIPTION FOR A COMPUTER-IMPLEMENTED FUNCTIONAL CLAIM LIMITATION
The 35 U.S.C. 112(a) or first paragraph of pre-AIA 35 U.S.C. 112 contains a written description requirement that is separate and distinct from the enablement requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1167 (Fed. Cir. 2010) (en banc). To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344-45, 76 USPQ2d 1724, 1731-32 (Fed. Cir. 2005); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-64, 19 USPQ2d 1111, 1115-16 (Fed. Cir. 1991). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172. The function of the written description requirement is to ensure that the inventor had possession of, as of the filing date of the application relied on, the specific subject matter later claimed by him or her; how the specification accomplishes this is not material. In re Herschler, 591 F.2d 693, 700-01, 200 USPQ 711, 717 (CCPA 1979) and further reiterated in In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983). See also MPEP § 2163 - § 2163.04.
The written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, applies to all claims including original claims that are part of the disclosure as filed. Ariad, 598 F.3d
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at 1349, 94 USPQ2d at 1170. As stated by the Federal Circuit, “[a]lthough many original claims will satisfy the written description requirement, certain claims may not.” Id. at 1349, 94 USPQ2d at 1170-71; see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343-46, 76 USPQ2d 1724, 1730-33 (Fed. Cir. 2005); Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405-06 (Fed. Cir. 1997)(“The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention.”). Problems satisfying the written description requirement for original claims often occur when claim language is generic or functional, or both. Ariad, 593 F.3d at 1349, 94 USPQ2d at 1171 ("The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.").
For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1349-50, 94 USPQ2d at 1171 (“[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.”) (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1405-06); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d
956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not
satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d
1601, 1606 (Fed. Cir. 1993) (rejecting the argument that “only similar language in the specification or original claims is necessary to satisfy the written description requirement”). For example, in LizardTech, the claim was directed to a method of
compressing digital images using seamless discrete wavelet transformation (“DWT”). The court found
that the claim covered all ways of performing DWT-based compression processes that lead to a seamless DWT because there were no limitations as to how the seamless DWT was to be accomplished. However, the specification provided only one method for creating a seamless DWT, and there was no evidence that the specification contemplated a more generic way of creating a seamless array of DWT coefficients. Therefore, the written description requirement was not satisfied in this case because the specification did not provide sufficient evidence that the inventor invented the generic claim. “[T]he description of one method for creating a seamless DWT does not entitle the inventor . . . to claim any and all means for achieving that objective.” LizardTech, 424 F.3d at 1346, 76 USPQ2d at 1733.
Similarly, original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language (whether or not the functional claim language invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph) but the specification does not sufficiently identify how the invention achieves the claimed function.
The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172; Capon v. Eshhar, 418 F.3d 1349, 1357-58, 76 USPQ2d 1078, 1083-84 (Fed. Cir. 2005). Computer-implemented inventions are often disclosed and claimed in terms of their functionality. This is because writing computer programming code for software to perform specific functions is normally within the skill of the art once those functions have been adequately disclosed. Fonar Corp. v. General Elec. Co., 107 F.3d 1543, 1549, 41 USPQ2d 1801, 1805 (Fed. Cir. 1997). Nevertheless, for computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into both the sufficiency of the disclosed hardware as well as the disclosed software due to the interrelationship and interdependence of computer hardware and software.
When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the
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algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described in the specification to achieve the claimed function and the inventor was in possession of that knowledge, the written description requirement would be satisfied. Id. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made. For more information regarding the written description requirement, see MPEP § 2161.01- § 2163.07(b). If the specification does not provide a disclosure of sufficient corresponding structure, materials, or acts that perform the entire claimed function of a means- (or step-) plus- function limitation in a claim under 35 U.S.C. 112(f) or the sixth paragraph of pre-AIA 35 U.S.C. 112, "the applicant has in effect failed to particularly point out and distinctly claim the invention" as required by the 35 U.S.C. 112(b) [or the second paragraph of pre-AIA 35 U.S.C. 112].
In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). A rejection under 35 U.S.C. 112(b) or the second paragraph of pre-AIA 35 U.S.C. 112 must be made in addition to the written description rejection.
II. BEST MODE
The purpose of the best mode requirement is to “restrain inventors from applying for patents while at the same time concealing from the public the preferred embodiments of their inventions which they have in fact conceived.” In re Gay, 309 F.2d 769, 772, 135 USPQ 311, 315 (CCPA 1962). Only evidence of concealment, “whether accidental or intentional,” is considered in judging the adequacy of the disclosure for compliance with the best mode requirement. Spectra-Physics, Inc. v. Coherent, Inc.,827 F.2d 1524, 1535, 3 USPQ 2d 1737, 1745 (Fed. Cir. 1987). That evidence, in order to result in
affirmance of a best mode rejection, must tend to show that the quality of an applicant’s best mode disclosure is so poor as to effectively result in concealment.” In re Sherwood, 613 F.2d 809, 816-817, 204 USPQ 537, 544 (CCPA 1980). Also, see White Consol. Indus. v. Vega Servo-Control Inc., 214 USPQ 796, 824 (S.D. Mich. 1982), aff’d on related grounds, 713 F.2d 788, 218 USPQ 961 (Fed. Cir. 1983). See also MPEP § 2165 - § 2165.04.
There are two factual inquiries to be made in determining whether a specification satisfies the best mode requirement. First, there must be a subjective determination as to whether at the time the application was filed, the inventor knew of a best mode of practicing the invention. Second, if the inventor had a best mode of practicing the invention in mind, there must be an objective determination as to whether that best mode was disclosed in sufficient detail to allow one skilled in the art to practice it. Fonar Corp. v. Gen. Elect. Co., 107 F.3d 1543, 41 USPQ2d 1801, 1804 (Fed. Cir. 1997); Chemcast Corp. v. Arco Indus., 913 F.2d 923,
927-28, 16 USPQ2d 1033, 1036 (Fed. Cir. 1990). “As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed. . . . [F]low charts or source code listings are not a requirement for adequately disclosing the functions of software.” Fonar Corp., 107 F.3d at 1549, 41 USPQ2d at 1805 (citations omitted).
III. DETERMININGWHETHERTHE FULL SCOPE OFA COMPUTER-IMPLEMENTED FUNCTIONAL CLAIM LIMITATION IS ENABLED
To satisfy the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without “undue experimentation.” See, e.g., In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Wands, 858 F.2d 731, 736-37, 8 USPQ2d 1400, 1402 (Fed. Cir. 1988). In In re Wands, the court set forth the following factors to consider when determining whether undue
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experimentation is needed: (1) the breadth of the claims; (2) the nature of the invention; (3) the state of the prior art; (4) the level of one of ordinary skill; (5) the level of predictability in the art; (6) the amount of direction provided by the inventor; (7) the existence of working examples; and (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Wands, 858 F.2d at 737, 8 USPQ2d 1404. The undue experimentation determination is not a single factual determination. Rather, it is a conclusion reached by weighing all the factual considerations. Id.
When basing a rejection on the failure of the applicant’s disclosure to meet the enablement provisions of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, USPTO personnel must establish on the record a reasonable basis for questioning the adequacy of the disclosure to enable a person of ordinary skill in the art to make and use the claimed invention without resorting to undue experimentation. See In re Brown, 477 F.2d 946, 177 USPQ 691 (CCPA 1973); In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA 1971). Once USPTO personnel have advanced a reasonable basis for questioning the adequacy of the disclosure, it becomes incumbent on the applicant to rebut that challenge and factually demonstrate that his or her application disclosure is in fact sufficient. See In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973); In re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 302 (CCPA 1974); In re Ghiron, supra. See also MPEP § 2164 - § 2164.08(c).
Functional claim language may render the claims broad when the claim is not limited to any particular structure for performing the claimed function. In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971). Since such a claim covers all devices which perform the recited function, there is a concern regarding whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claim. Id; AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003); In re Moore, 439 F.2d 1232, 1236, 169 USPQ 236, 239 (CCPA 1971). Applicants who present broad claim language must ensure the claims are fully enabled. Specifically, the scope of the
claims must be less than or equal to the scope of the enablement provided by the specification. Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999, 85 USPQ2d 1826, 1830 (Fed. Cir. 2008) (“The scope of the claims must be less than or equal to the scope of the enablement to ensure that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.”) (quotation omitted).
For example, the claims in Sitrick were directed to “integrating” or “substituting” a user’s audio signal or visual image into a pre-existing video game or movie. While the claims covered both video games and movies, the specification only taught the skilled artisan how to substitute and integrate user images into video games. The Federal Circuit held that the specification failed to enable the full scope of the claims because the skilled artisan could not substitute a user image for a preexisting character image in movies without undue experimentation. Specifically, the court recognized that one skilled in the art could not apply the teachings of the specification regarding video games to movies, because movies, unlike video games, do not have easily separable character functions. Because the specification did not teach how the substitution and integration of character functions for a user image would be accomplished in movies, the claims were not enabled. Sitrick, 516 F.3d at 999-1001, 85 USPQ2d at 1830-32.
In MagSil Corp. v. Hitachi Global Storage Technologies, Inc. 687 F.3d 1377, 103 USPQ2d 1769 (Fed. Cir. 2012), the Federal Circuit stated that “a patentee chooses broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage,” finding “one skilled in the art could not have taken the disclosure in the specification regarding ‘change in the resistance by at least 10% at room temperature’ and achieved a change in resistance in the full scope of that term without undue experimentation." 687 F.3d at 1381-82. "Thus, the specification enabled a marginal advance over the prior art, but did not enable at the time of filing a tunnel junction of resistive changes reaching even up to 20%, let alone the more recent achievements above 600%.” The court held that the “claims [were] invalid for lack of enablement because their broad scope [was] not reasonably supported by the scope of enablement in the
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specification.” 687 F.3d at 1381-1382, 1384, 103 USPQ2d at 1771, 1772, 1774 (“MagSil did not fully enable its broad claim scope. Therefore, it cannot claim an exclusive right to exclude later tri-layer tunnel junctions that greatly exceed a 10% resistive change.”). See also Convolve, Inc. v. Compaq Computer Corp., 527 F.App’x 910, 931 (Fed. Cir. 2013) (non-precedential), quoting MagSil Corp.)(affirming grant of summary judgment of invalidity due to lack of enablement where the patentee “[b]y choosing such broad claim language, ... put itself ‘at the peril of losing any claim that cannot be enabled across its full scope of coverage.’”).
The specification need not teach what is well known in the art. However, applicant cannot rely on the knowledge of one skilled in the art to supply information that is required to enable the novel aspect of the claimed invention when the enabling knowledge is in fact not known in the art. ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 941, 94 USPQ2d 1823, 1827 (Fed. Cir. 2010) (“ALZA was required to provide an adequate enabling disclosure in the specification; it cannot simply rely on the knowledge of a person of ordinary skill to serve as a substitute for the missing information in the specification.”); Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283, 84 USPQ2d 1108, 1114-15 (Fed. Cir. 2007) (“Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent.”). The Federal Circuit has stated that “‘[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.’” Auto. Technologies, 501 F.3d at 1283, 84 USPQ2d at 1115 (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366, 42 USPQ2d 1001, 1005 (Fed. Cir. 1997)). The rule that a specification need not disclose what is well known in the art is “merely a rule of supplementation, not a substitute for a basic enabling disclosure.” Genentech, 108 F.3d at 1366, 42 USPQ2d 1005;
see also ALZA Corp., 603 F.3d at 940-41, 94 USPQ2d at 1827. Therefore, the specification must contain the information necessary to enable the novel aspects of the claimed invention. Id. at 941, 94 USPQ2d at 1827; Auto. Technologies, 501 F.3d at 1283-84, 84 USPQ2d at 1115 (“[T]he ‘omission of
minor details does not cause a specification to fail to meet the enablement requirement. However, when there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required.’”) (quoting Genentech, 108 F.3d at 1366, 42 USPQ2d at 1005). For instance, in Auto. Technologies, the claim limitation “means responsive to the motion of said mass” was construed to include both mechanical side impact sensors and electronic side impact sensors for performing the function of initiating an occupant protection apparatus. Auto. Technologies, 501 F.3d at 1282, 84 USPQ2d at 1114. The specification did not disclose any discussion of the details or circuitry involved in the electronic side impact sensor, and thus, it failed to apprise one of ordinary skill how to make and use the electronic sensor. Since the novel aspect of the invention was side impact sensors, the patentee could not rely on the knowledge of one skilled in the art to supply the missing information. Auto. Technologies, 501 F.3d at 1283, 84 USPQ2d at 1114.
A rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for lack of enablement must be made when the specification does not enable the full scope of the claim. USPTO personnel should establish a reasonable basis to question the enablement provided for the claimed invention and provide reasons for the uncertainty of the enablement. For more information regarding the enablement requirement, see MPEP § 2164.01(a) - MPEP § 2164.08(c), e.g., MPEP § 2164.06(c) on examples of computer programming cases.
2162 Policy Underlying 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph [R-11.2013]
To obtain a valid patent, a patent application must be filed that contains a full and clear disclosure of the invention in the manner prescribed by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The requirement for an adequate disclosure ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent. The grant of a patent helps to foster and enhance the development and disclosure of new ideas and the advancement of scientific knowledge. Upon the grant of a patent in the U.S., information
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contained in the patent becomes a part of the information available to the public for further research and development, subject only to the patentee’s right to exclude others during the life of the patent.
In exchange for the patent rights granted, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, sets forth the minimum requirements for the quality and quantity of information that must be contained in the patent to justify the grant. As discussed in more detail below, the patentee must disclose in the patent sufficient information to put the public in possession of the invention and to enable those skilled in the art to make and use the invention. The applicant must not conceal from the public the best way of practicing the invention that was known to the patentee at the time of filing the patent application. Failure to fully comply with the disclosure requirements could result in the denial of a patent, or in a holding of invalidity of an issued patent.
2163 Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, para. 1, “Written Description” Requirement [R-07.2015]
The following Guidelines establish the policies and procedures to be followed by Office personnel in the evaluation of any patent application for compliance with the written description requirement of 35 U.S.C. 112. These Guidelines are based on the Office’s current understanding of the law and are believed to be fully consistent with binding precedent of the U.S. Supreme Court, as well as the U.S. Court of Appeals for the Federal Circuit and its predecessor courts.
The Guidelines do not constitute substantive rulemaking and hence do not have the force and effect of law. They are designed to assist Office personnel in analyzing claimed subject matter for compliance with substantive law. Rejections will be based upon the substantive law, and it is these rejections which are appealable. Consequently, any perceived failure by Office personnel to follow these Guidelines is neither appealable nor petitionable.
These Guidelines are intended to form part of the normal examination process. Thus, where Office personnel establish a prima facie case of lack of written description for a claim, a thorough review of the prior art and examination on the merits for compliance with the other statutory requirements, including those of 35 U.S.C. 101, 102, 103, and 112, is to be conducted prior to completing an Office action which includes a rejection for lack of written description.
I. GENERAL PRINCIPLES GOVERNING COMPLIANCE WITH THE “WRITTEN DESCRIPTION” REQUIREMENT FOR APPLICATIONS
35 U.S.C. 112(a) and the first paragraph of pre-AIA 35 U.S.C. 112 require that the “specification shall contain a written description of the invention ....” This requirement is separate and distinct from the enablement requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1167 (Fed. Cir. 2010) (en banc); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991). See also Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920-23, 69 USPQ2d 1886, 1890-93 (Fed. Cir. 2004) (discussing history and purpose of the written description requirement); In re Curtis, 354 F.3d 1347, 1357, 69 USPQ2d 1274, 1282 (Fed. Cir. 2004) (“conclusive evidence of a claim’s enablement is not equally conclusive of that claim’s satisfactory written description”). The written description requirement has several policy objectives. “[T]he ‘essential goal’ of the description of the invention requirement is to clearly convey the information that an applicant has invented the subject matter which is claimed.” In re Barker, 559 F.2d 588, 592 n.4, 194 USPQ 470, 473 n.4 (CCPA 1977). Another objective is to put the public in possession of what the applicant claims as the invention. See Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1566, 43 USPQ2d 1398, 1404 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089 (1998). “The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention
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that is claimed.” Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1084 (Fed. Cir. 2005). Further, the written description requirement promotes the progress of the useful arts by ensuring that patentees adequately describe their inventions in their patent specifications in exchange for the right to exclude others from practicing the invention for the duration of the patent’s term.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d
1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116. However, a showing of possession alone does not cure the lack of a written description. Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 969-70, 63 USPQ2d 1609, 1617 (Fed. Cir. 2002). While early opinions suggested that the Patent and Trademark Office was unwilling to find written descriptive support when the only description was found in the claims, this viewpoint was rejected. See In re Koller, 613 F.2d 819, 204 USPQ 702 (CCPA 1980) (original claims constitute their own description); accord In re Gardner, 475 F.2d 1389, 177 USPQ 396 (CCPA 1973); accord In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). It is now well accepted that a satisfactory description may be in the claims or any other portion of the originally filed specification. These early opinions did not address the quality or specificity of particularity that was required in the description, i.e., how much description is enough.
An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was “ready for patenting” such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying
characteristics sufficient to show that the applicant was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406; Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (one must define a compound by “whatever characteristics sufficiently distinguish it”). “Compliance with the written description requirement is essentially a fact-based inquiry that will ‘necessarily vary depending on the nature of the invention claimed.’” Enzo Biochem, 323 F.3d at 963, 63 USPQ2d at 1613. An application specification may show actual reduction to practice by describing testing of the claimed invention or, in the case of certain biological materials, by specifically describing a deposit made in accordance with 37 CFR 1.801 et seq. See Enzo Biochem, 323 F.3d at 965, 63 USPQ2d at 1614 (“reference in the specification to a deposit may also satisfy the written description requirement with respect to a claimed material”); see also Deposit of Biological Materials for Patent Purposes, Final Rule, 54 Fed. Reg. 34,864 (August 22, 1989) (“The requirement for a specific identification is consistent with the description requirement of the first paragraph of 35 U.S.C. 112, and to provide an antecedent basis for the biological material which either has been or will be deposited before the patent is granted.” Id. at 34,876. “The description must be sufficient to permit verification that the deposited biological material is in fact that disclosed. Once the patent issues, the description must be sufficient to aid in the resolution of questions of infringement.” Id. at 34,880.) Such a deposit is not a substitute for a written description of the claimed invention. The written description of the deposited material needs to be as complete as possible because the examination for patentability proceeds solely on the basis of the written description. See, e.g., In re Lundak, 773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 1985). See also 54 Fed. Reg. at 34,880 (“As a general rule, the more information that is provided about a particular deposited biological material, the better the examiner will be able to compare the identity and characteristics of the deposited biological material with the prior art.”).
A question as to whether a specification provides an adequate written description may arise in the context
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of determining whether an original claim is described sufficiently (see, e.g., LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345, 76 USPQ2d 1724, 1733 (Fed. Cir. 2005); Enzo Biochem, 323 F.3d at 968, 63 USPQ2d at 1616 (Fed. Cir. 2002); Eli Lilly, 119 F.3d 1559, 43 USPQ2d 1398), whether new or amended claims are supported by the description of the invention in the application as filed (see, e.g., In re Wright, 866 F.2d 422, 9 USPQ2d 1649 (Fed. Cir. 1989)), whether a claimed invention is entitled to the benefit of an earlier priority date or effective filing date under 35 U.S.C. 119, 120, 365, or 386 (see, e.g., New Railhead Mfg. L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 63 USPQ2d 1843 (Fed. Cir. 2002); Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d 1829 (Fed. Cir. 1998); Fiers v. Revel, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993); In re Ziegler, 992 F.2d 1197, 1200, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993)), or whether a specification provides support for a claim corresponding to a count in an interference (see, e.g., Martin v. Mayer, 823 F.2d 500, 503, 3 USPQ2d
1333, 1335 (Fed. Cir. 1987); Fields v. Conover, 443 F.2d 1386, 170 USPQ 276 (CCPA 1971)). Compliance with the written description requirement is a question of fact which must be resolved on a case-by-case basis. Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116 (Fed. Cir. 1991).
A. Original Claims
There is a presumption that an adequate written description of the claimed invention is present when the application is filed. In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976) (“we are of the opinion that the PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims”). However, as discussed in subsection I., supra, the issue of a lack of adequate written description may arise even for an original claim when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention. The claimed invention as a whole may not be adequately described if the claims require an essential or critical feature which is not adequately described in the specification and which is not conventional in the art or known to one
of ordinary skill in the art. For example, consider the claim “A gene comprising SEQ ID NO:1.” A determination of what the claim as a whole covers may result in a conclusion that specific structures such as a promoter, a coding region, or other elements are included. Although all genes encompassed by this claim share the characteristic of comprising SEQ ID NO:1, there may be insufficient description of those specific structures (e.g., promoters, enhancers, coding regions, and other regulatory elements) which are also included. For guidance on subject matter eligibility of such claims, see MPEP § 2106.
The claimed invention as a whole may not be adequately described where an invention is described solely in terms of a method of its making coupled with its function and there is no described or art recognized correlation or relationship between the structure of the invention and its function. A biomolecule sequence described only by a functional characteristic, without any known or disclosed correlation between that function and the structure of the sequence, normally is not a sufficient identifying characteristic for written description purposes, even when accompanied by a method of obtaining the claimed sequence. For example, even though a genetic code table would correlate a known amino acid sequence with a genus of coding nucleic acids, the same table cannot predict the native, naturally occurring nucleic acid sequence of a naturally occurring mRNA or its corresponding cDNA. Cf. In re Bell, 991 F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993), and In re Deuel, 51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995) (holding that a process could not render the product of that process obvious under 35 U.S.C. 103). For guidance on subject matter eligibility of such claims, see MPEP § 2106.The Federal Circuit has pointed out that under United States law, a description that does not render a claimed invention obvious cannot sufficiently describe the invention for the purposes of the written description requirement of 35 U.S.C. 112. Eli Lilly, 119 F.3d at 1567, 43 USPQ2d at 1405. Compare Fonar Corp. v. Gen. Elec. Co., 107 F.3d 1543, 1549, 41 USPQ2d 1801, 1805 (Fed. Cir. 1997) (“As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is
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because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed.... Thus, flow charts or source code listings are not a requirement for adequately disclosing the functions of software.”).
A lack of adequate written description issue also arises if the knowledge and level of skill in the art would not permit one skilled in the art to immediately envisage the product claimed from the disclosed process. See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559, 1571, 39 USPQ2d 1895, 1905 (Fed. Cir. 1996) (a “laundry list” disclosure of every possible moiety does not necessarily constitute a written description of every species in a genus because it would not “reasonably lead” those skilled in the art to any particular species); In re Ruschig, 379 F.2d 990, 995, 154 USPQ 118, 123 (CCPA 1967) (“ If n-propylamine had been used in making the compound instead of n-butylamine, the compound of claim 13 would have resulted. Appellants submit to us, as they did to the board, an imaginary specific example patterned on specific example 6 by which the above butyl compound is made so that we can see what a simple change would have resulted in a specific supporting disclosure being present in the present specification. The trouble is that there is no such disclosure, easy though it is to imagine it.”) (emphasis in originan( � Purdue Pharma L.P. v. Faulding Inc., 230 F.3d
1320, 1328, 56 USPQ2d 1481, 1487 (Fed. Cir. 2000) (“the specification does not clearly disclose to the skilled artisan that the inventors ... considered the ratio... to be part of their invention .... There is therefore no force to Purdue’s argument that the written description requirement was satisfied because the disclosure revealed a broad invention from which the [later-filed] claims carved out a patentable portion”).
B. New or Amended Claims
The proscription against the introduction of new matter in a patent application (35 U.S.C. 132 and 251) serves to prevent an applicant from adding information that goes beyond the subject matter originally filed. See In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 326 (CCPA 1981). See MPEP § 2163.06 through § 2163.07 for a more
detailed discussion of the written description requirement and its relationship to new matter. The claims as filed in the original specification are part of the disclosure and, therefore, if an application as originally filed contains a claim disclosing material not found in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985). Thus, the written description requirement prevents an applicant from claiming subject matter that was not adequately described in the specification as filed. New or amended claims which introduce elements or limitations which are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (a subgenus is not necessarily described by a genus encompassing it and a species upon which it reads).
While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure. An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of the error in the specification, but also recognize the appropriate correction. In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971). With respect to the correction of sequencing errors in applications disclosing nucleic acid and/or amino acid sequences, it is well known that sequencing errors are a common problem in molecular biology. See, e.g., Peter Richterich, Estimation of Errors in ‘Raw’ DNA Sequences: A Validation Study, 8 Genome Research 251-59 (1998). If an application as filed includes sequence information and references a deposit of the sequenced material made in accordance with the requirements of 37 CFR 1.801 et seq., amendment may be permissible. Deposits made after the application filing date cannot be relied upon to support additions to or correction of information in the application as filed. Corrections of minor errors in the sequence may be possible based on the argument that one of skill in the art would have resequenced the deposited material and
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would have immediately recognized the minor error. Deposits made after the filing date can only be relied upon to provide support for the correction of sequence information if applicant submits a statement in compliance with 37 CFR 1.804 stating that the biological material which is deposited is a biological material specifically defined in the application as filed.
Under certain circumstances, omission of a limitation can raise an issue regarding whether the inventor had possession of a broader, more generic invention. See, e.g., PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1248, 64 USPQ2d 1344, 1353 (Fed. Cir. 2002) (Claim for a method of inhibiting sprout growth on tubers by treating them with spaced, sequential application of two chemicals was held invalid for lack of adequate written description where the specification indicated that invention was a method of applying a “composition,” or mixture, of the two chemicals.); Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 45 USPQ2d 1498 (Fed. Cir. 1998) (claims to a sectional sofa comprising, inter alia, a console and a control means were held invalid for failing to satisfy the written description requirement where the claims were broadened by removing the location of the control means); Johnson Worldwide Assoc. v. Zebco Corp., 175 F.3d 985, 993, 50 USPQ2d 1607, 1613 (Fed. Cir. 1999) (In Gentry Gallery, the “court’s determination that the patent disclosure did not support a broad meaning for the disputed claim terms was premised on clear statements in the written description that described the location of a claim element--the ‘control means’ --as ‘the only possible location’ and that variations were ‘outside the stated purpose of the invention.’ Gentry Gallery, 134 F.3d at 1479, 45 USPQ2d at
1503. Gentry Gallery, then, considers the situation where the patent’s disclosure makes crystal clear that a particular (i.e., narrow) understanding of a claim term is an ‘essential element of [the inventor’s] invention.’”); Tronzo v. Biomet, 156 F.3d at 1158-59, 47 USPQ2d at 1833 (Fed. Cir. 1998) (claims to generic cup shape were not entitled to filing date of parent application which disclosed “conical cup” in view of the disclosure of the parent application stating the advantages and importance of the conical shape.). A claim that omits an element which applicant describes as an essential or critical feature of the invention originally disclosed does not
comply with the written description requirement. See Gentry Gallery, 134 F.3d at 1480, 45 USPQ2d at 1503; In re Sus, 306 F.2d 494, 504, 134 USPQ 301, 309 (CCPA 1962) (“[O]ne skilled in this art would not be taught by the written description of the invention in the specification that any ‘aryl or substituted aryl radical’ would be suitable for the purposes of the invention but rather that only certain aryl radicals and certain specifically substituted aryl radicals [i.e., aryl azides] would be suitable for such purposes.”) (emphasis in original). A claim which omits matter disclosed to be essential to the invention as described in the specification or in other statements of record may also be subject to rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, as not enabling, or under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, para. 2. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976); In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976); and In re Collier, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968). See also MPEP § 2172.01.
The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64, 19 USPQ2d at 1117.
II. METHODOLOGY FOR DETERMINING ADEQUACY OF WRITTEN DESCRIPTION
A. Read and Analyze the Specification for Compliance with 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, para. 1
Office personnel should adhere to the following procedures when reviewing patent applications for compliance with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1. There is a presumption that an adequate written description of the claimed invention is present in the specification as filed, Wertheim, 541 F.2d at 262, 191 USPQ at 96, thus the examiner has the initial burden, after a thorough reading and evaluation of the content of the application, of presenting evidence or reasons why a person skilled in the art would not recognize that the written description of the invention provides support for the claims. While it is not
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necessary for the examiner to present factual evidence, to make a prima facie case it is necessary to point out the claim limitations that are not adequately supported and explain any other reasons that the claim is not fully supported by the disclosure to show that the inventor had possession of the invention. See for example, Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007) in which the examiner made a prima facie case by clearly and specifically explaining that the written description did not support the particular claimed combination of elements, even listing each and every element of the allegedly unsupported combination. The court found the “examiner was explicit that while each element may be individually described in the specification, the deficiency was lack of adequate description of their combination” and therefore “[t]he burden was then properly shifted to [inventor] to cite to the examiner where adequate written description could be found or to make an amendment to address the deficiency.” Id. See also Stored Value Solutions, Inc. v. Card Activation
Technologies, 499 Fed.App’x 5, 13-14 (Fed. Cir. 2012) (non-precedential) (The claims drawn to a method for processing debit purchase transactions, requiring three separate authorization codes, were found to be invalid because “the written description [did] not contain a method that include[d] all three codes” and “[e]ach authorization code is an important claim limitation, and the presence of multiple authorization codes in [the claim] was essential”.).
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a “simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”); see also MPEP § 714.02 and § 2163.06 (“Applicant should ... specifically point out the support for any amendments made to the disclosure.”); and MPEP § 2163.04 (“If applicant amends the claims and
points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.”). The inquiry into whether the description requirement is met is a question of fact that must be determined on a case-by-case basis. AbbVie Deutschland GmbH & Co., KG v. Janseen Biotech, Inc., 759 F.3d 1285, 1297, 111 USPQ2d 1780, 1788 (Fed. Cir. 2014) ("Whether a patent claim is supported by an adequate written description is a question of fact."); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (“Precisely how close [to the claimed invention] the description must come to comply with Sec. 112 must be left to case-by-case development.”); In re Wertheim, 541 F.2d at 262, 191 USPQ at 96 (inquiry is primarily factual and depends on the nature of the invention and the amount of knowledge imparted to those skilled in the art by the disclosure).
1. For Each Claim, Determine What the Claim as a Whole Covers
Claim construction is an essential part of the examination process. Each claim must be separately analyzed and given its broadest reasonable interpretation in light of and consistent with the written description. See, e.g., In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1319-1320, 97 USPQ2d 1737, 1750 (Fed. Cir. 2011) (stating that “[t]he construction of the claims [is] important to the written description analysis” and patent holder’s failure “to point to a genuine factual dispute over whether the specification disclosed” the claimed subject matter made summary judgment proper on that issue.); In re Morris, 127 F.3d 1048, 1053-54, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). The entire claim must be considered, including the preamble language and the transitional phrase. “Preamble language” is that language in a claim appearing before the transitional phase, e.g., before “comprising,” “consisting essentially of,” or “consisting of.” The transitional term “comprising”
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(and other comparable terms, e.g., “containing,” and “including”) is “open-ended” -it covers the expressly recited subject matter, alone or in combination with unrecited subject matter. See, e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.”); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“comprising” leaves the “claim open for the inclusion of unspecified ingredients even in major amounts”). See also MPEP § 2111.03. “By using the term ‘consisting essentially of,’ the drafter signals that the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention. A ‘consisting essentially of’ claim occupies a middle ground between closed claims that are written in a ‘consisting of’ format and fully open claims that are drafted in a ‘comprising’ format.” PPG Indus. v. Guardian Indus., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 (“PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention.”). See also AK Steel Corp. v. Sollac, 344 F3.d 1234, 1239-1240, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003); In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 895-96 (CCPA 1963). If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of,” applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of applicant’s invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See also MPEP § 2111.03. The claim as a whole, including all limitations found in the preamble (see Pac-Tec Inc. v. Amerace Corp., 903 F.2d 796, 801,
14 USPQ2d 1871, 1876 (Fed. Cir. 1990)
(determining that preamble language that constitutes a structural limitation is actually part of the claimed invention)), the transitional phrase, and the body of the claim, must be sufficiently supported to satisfy the written description requirement. An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations. Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966.
The examiner should evaluate each claim to determine if sufficient structures, acts, or functions are recited to make clear the scope and meaning of the claim, including the weight to be given the preamble. See, e.g., Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995) (“[A] claim preamble has the import that the claim as a whole suggests for it.”); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989) (The determination of whether preamble recitations are structural limitations can be resolved only on review of the entirety of the application “to gain an understanding of what the inventors actually invented and intended to encompass by the claim.”). The absence of definitions or details for well-established terms or procedures should not be the basis of a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, for lack of adequate written description. Limitations may not, however, be imported into the claims from the specification.
2. Review the Entire Application to Understand How Applicant Provides Support for the Claimed Invention Including Each Element and/or Step
Prior to determining whether the disclosure satisfies the written description requirement for the claimed subject matter, the examiner should review the claims and the entire specification, including the specific embodiments, figures, and sequence listings, to understand how applicant provides support for the various features of the claimed invention. An element may be critical where those of skill in the art would require it to determine that applicant was in possession of the invention. Compare Rasmussen, 650 F.2d at 1215, 211 USPQ at 327 (“one skilled in the art who read Rasmussen’s specification would understand that it is unimportant how the layers are
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adhered, so long as they are adhered”) (emphasis in original), with Amgen, Inc. v. Chugai Pharm.Co., Ltd., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (“it is well established in our law that conception of a chemical compound requires that the inventor be able to define it so as to distinguish it from other materials, and to describe how to obtain it”). The analysis of whether the specification complies with the written description requirement calls for the examiner to compare the scope of the claim with the scope of the description to determine whether applicant has demonstrated possession of the claimed invention. Such a review is conducted from the standpoint of one of skill in the art at the time the application was filed (see, e.g., Wang Labs. v. Toshiba Corp., 993 F.2d 858, 865,
26 USPQ2d 1767, 1774 (Fed. Cir. 1993)) and should include a determination of the field of the invention and the level of skill and knowledge in the art. For some arts, there is an inverse correlation between the level of skill and knowledge in the art and the specificity of disclosure necessary to satisfy the written description requirement. Information which is well known in the art need not be described in detail in the specification. See, e.g., Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1379-80, 231 USPQ 81, 90 (Fed. Cir. 1986). However, sufficient information must be provided to show that the inventor had possession of the invention as claimed.
3. Determine Whether There is Sufficient Written Description to Inform a Skilled Artisan That Applicant was in Possession of the Claimed Invention as a Whole at the Time the Application Was Filed
(a) Original claims
Possession may be shown in many ways. For example, possession may be shown by describing an actual reduction to practice of the claimed invention. Possession may also be shown by a clear depiction of the invention in detailed drawings or in structural chemical formulas which permit a person skilled in the art to clearly recognize that applicant had possession of the claimed invention. An adequate written description of the invention may be shown by any description of sufficient, relevant, identifying characteristics so long as a person skilled in the art would recognize that the inventor had
possession of the claimed invention. See, e.g., Purdue Pharma L.P. v. Faulding Inc., 230 F.3d
1320, 1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000) (the written description “inquiry is a factual one and must be assessed on a case-by-case basis”); see also Pfaff v. Wells Elect., Inc., 55 U.S. at 66, 119 S.Ct.
at 311, 48 USPQ2d at 1646 (“The word ‘invention’ must refer to a concept that is complete, rather than merely one that is ‘substantially complete.’ It is true that reduction to practice ordinarily provides the best evidence that an invention is complete. But just because reduction to practice is sufficient evidence of completion, it does not follow that proof of reduction to practice is necessary in every case. Indeed, both the facts of the Telephone Cases and the facts of this case demonstrate that one can prove that an invention is complete and ready for patenting before it has actually been reduced to practice.”).
A specification may describe an actual reduction to practice by showing that the inventor constructed an embodiment or performed a process that met all the limitations of the claim and determined that the invention would work for its intended purpose. Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901 (Fed. Cir. 1998). See also UMC Elecs. Co. v. United States, 816 F.2d 647, 652, 2 USPQ2d 1465, 1468 (Fed. Cir. 1987) (“[T]here cannot be a reduction to practice of the invention ... without a physical embodiment which includes all limitations of the claim.”); Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 593, 44 USPQ2d 1610, 1614 (Fed. Cir. 1997) (“[A] reduction to practice does not occur until the inventor has determined that the invention will work for its intended purpose.”); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578, 38 USPQ2d 1288, 1291 (Fed. Cir. 1996) (determining that the invention will work for its intended purpose may require testing depending on the character of the invention and the problem it solves). Description of an actual reduction to practice of a biological material may be shown by specifically describing a deposit made in accordance with the requirements of 37 CFR 1.801 et seq. See especially 37 CFR 1.804 and 1.809. See also subsection I., supra.
An applicant may show possession of an invention by disclosure of drawings or structural chemical formulas that are sufficiently detailed to show that
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applicant was in possession of the claimed invention as a whole. See, e.g., Vas-Cath, 935 F.2d at 1565, 19 USPQ2d at 1118 (“drawings alone may provide a ‘written description’ of an invention as required by Sec. 112”); In re Wolfensperger, 302 F.2d 950, 133 USPQ 537 (CCPA 1962) (the drawings of applicant’s specification provided sufficient written descriptive support for the claim limitation at issue); Autogiro Co. of Am. v. United States, 384 F.2d 391, 398, 155 USPQ 697, 703 (Ct. Cl. 1967) (“In those instances where a visual representation can flesh out words, drawings may be used in the same manner and with the same limitations as the specification.”); Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406 (“In claims involving chemical materials, generic formulae usually indicate with specificity what the generic claims encompass. One skilled in the art can distinguish such a formula from others and can identify many of the species that the claims encompass. Accordingly, such a formula is normally an adequate description of the claimed genus.”). The description need only describe in detail that which is new or not conventional. See Hybritech v. Monoclonal Antibodies, 802 F.2d at 1384, 231 USPQ at 94. This is equally true whether the claimed invention is directed to a product or a process.
An applicant may also show that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics which provide evidence that applicant was in possession of the claimed invention, i.e., complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics. Enzo Biochem, 323 F.3d at 964, 63 USPQ2d at 1613 (quoting the Written Description Guidelines, 66 Fed. Reg. at 1106, n. 49, stating that “if the art has established a strong correlation between structure and function, one skilled in the art would be able to predict with a reasonable degree of confidence the structure of the claimed invention from a recitation of its function”.). “Thus, the written description requirement may be satisfied through disclosure of function and minimal structure when there is a well-established correlation between structure and function.” Id. (explaining that a claim to an antibody satisfies the “function-structure test” where the antigen to which it binds has been fully
characterized, and methods for making the antibody are routine”).
For some biomolecules, examples of identifying characteristics include a sequence, structure, binding affinity, binding specificity, molecular weight, and length. Although structural formulas provide a convenient method of demonstrating possession of specific molecules, other identifying characteristics or combinations of characteristics may demonstrate the requisite possession. As explained by the Federal Circuit, “(1) examples are not necessary to support the adequacy of a written description; (2) the written description standard may be met … even where actual reduction to practice of an invention is absent; and (3) there is no per se rule that an adequate written description of an invention that involves a biological macromolecule must contain a recitation of known structure.” Falkner v. Inglis, 448 F.3d 1357, 1366, 79 USPQ2d 1001, 1007 (Fed. Cir. 2006). See also Capon v. Eshhar, 418 F.3d at 1358, 76 USPQ2d at 1084 (“The Board erred in holding that the specifications do not meet the written description requirement because they do not reiterate the structure or formula or chemical name for the nucleotide sequences of the claimed chimeric genes” where the genes were novel combinations of known DNA segments.). For example, disclosure of an antigen fully characterized by its structure, formula, chemical name, physical properties, or deposit in a public depository provides an adequate written description of an antibody claimed by its binding affinity to that antigen, if “generating the claimed antibody is so routine that possessing the [antigen] places the applicant in possession of an antibody.”
Centocor Ortho Biotech, Inc. v. Abbott Laboratories, 636 F.3d 1341, 1351-52, 97 USPQ2d 1870, 1877 (Fed. Cir. 2011), distinguishing Noelle v. Lederman, 355 F.3d 1343, 1349, 69 USPQ2d 1508, 1514 (Fed. Cir. 2004) (holding there is a lack of written descriptive support for an unknown antibody defined by its binding affinity to an antigen that itself was not adequately described). In Centocor, the patent at issue claimed antibodies
with specific properties including high affinity to a particular antigen, which was characterized in the prior art. The patent did disclose the antigen, but did not disclose any antibodies with the specific claimed properties. The court held that the claimed antibodies were not adequately described, because as of the
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priority date of the patent, the generation of such antibodies was not possible using conventional, routine or well-developed technology. Additionally, unique cleavage by particular enzymes, isoelectric points of fragments, detailed restriction enzyme maps, a comparison of enzymatic activities, or antibody cross-reactivity may be sufficient to show possession of the claimed invention to one of skill in the art. See Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966 (“written description” requirement may be satisfied by using “such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention”). A definition by function alone “does not suffice” to sufficiently describe a coding sequence “because it is only an indication of what the gene does, rather than what it is.” Eli Lilly, 119 F.3 at 1568, 43 USPQ2d at 1406. See also Fiers, 984 F.2d at 1169-71, 25 USPQ2d at 1605-06 (discussing Amgen Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991)). An adequate written description of a chemical invention also requires a precise definition, such as by structure, formula, chemical name, or physical properties, and not merely a wish or plan for obtaining the chemical invention claimed. See, e.g., Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 927, 69 USPQ2d 1886, 1894-95 (Fed. Cir. 2004) (The patent at issue claimed a method of selectively inhibiting PGHS-2 activity by administering a non-steroidal compound that selectively inhibits activity of the PGHS-2 gene product, however the patent did not disclose any compounds that can be used in the claimed methods. While there was a description of assays for screening compounds to identify those that inhibit the expression or activity of the PGHS-2 gene product, there was no disclosure of which peptides, polynucleotides, and small organic molecules selectively inhibit PGHS-2. The court held that “[w]ithout such disclosure, the claimed methods cannot be said to have been described.”).
If a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, para. 6, it must be interpreted to cover the corresponding structure, materials, or acts in the specification and “equivalents thereof.” See 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, para. 6. See also B. Braun Medical, Inc. v. Abbott Lab., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1899 (Fed. Cir. 1997). In
considering whether there is 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, support for a means- (or step) plus- function claim limitation, the examiner must consider not only the original disclosure contained in the summary and detailed description of the invention portions of the specification, but also the original claims, abstract, and drawings. A means- (or step-) plus- function claim limitation is adequately described under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, if: (1) The written description adequately links or associates adequately described particular structure, material, or acts to perform the function recited in a means- (or step-) plus- function claim limitation; or (2) it is clear based on the facts of the application that one skilled in the art would have known what structure, material, or acts disclosed in the specification perform the function recited in a means- (or step-) plus- function limitation. See Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1336-37, 86 USPQ2d 1235, 1242 (Fed. Cir. 2008) ("'consideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.' It is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function."), quoting Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1380, 53 USPQ2d 1225, 1229 (Fed. Cir. 1999); Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 953, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007) ("The inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure."). Note also that a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, para. 2, “cannot stand where there is adequate description in the specification to satisfy 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, regarding means-plus-function recitations that are not, per se, challenged for being unclear.” In re Noll, 545 F.2d 141, 149, 191 USPQ 721, 727 (CCPA 1976). See "Supplemental Examination Guidelines for Determining the Applicability of 35 U.S.C. 112, para. 6," 65 Fed. Reg. 38510, June 21, 2000. See also MPEP § 2181. However, when a means- (or step-) plus-function claim limitation is found to be indefinite based on failure of the specification to
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disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function, then the claim limitation necessarily lacks an adequate written description. Thus, when a claim is rejected as indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph because there is no corresponding structure, materials, or acts, or an inadequate disclosure of corresponding structure, materials, or acts, for a means- (or step-) plus-function claim limitation, then the claim must also be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of an adequate written description.
What is conventional or well known to one of ordinary skill in the art need not be disclosed in detail. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d at 1384, 231 USPQ at 94. See also Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1085 (Fed. Cir. 2005) (“The ‘written description’ requirement must be applied in the context of the particular invention and the state of the knowledge…. As each field evolves, the balance also evolves between what is known and what is added by each inventive contribution.”). If a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met. See, e.g., Vas-Cath, 935 F.2d at 1563, 19 USPQ2d at 1116; Martin v. Johnson, 454 F.2d 746, 751, 172 USPQ
391, 395 (CCPA 1972) (stating “the description need not be in ipsis verbis [i.e., “in the same words”] to be sufficient”).
A claim which is limited to a single disclosed embodiment or species is analyzed as a claim drawn to a single embodiment or species, whereas a claim which encompasses two or more embodiments or species within the scope of the claim is analyzed as a claim drawn to a genus. See also MPEP § 806.04(e).
i) For Each Claim Drawn to a Single Embodiment or Species:
(A) Determine whether the application describes an actual reduction to practice of the claimed invention.
(B) If the application does not describe an actual reduction to practice, determine whether the invention is complete as evidenced by a reduction to drawings or structural chemical formulas that are sufficiently detailed to show that applicant was in possession of the claimed invention as a whole.
(C) If the application does not describe an actual reduction to practice or reduction to drawings or structural chemical formula as discussed above, determine whether the invention has been set forth in terms of distinguishing identifying characteristics as evidenced by other descriptions of the invention that are sufficiently detailed to show that applicant was in possession of the claimed invention.
(1) Determine whether the application as filed describes the complete structure (or acts of a process) of the claimed invention as a whole. The complete structure of a species or embodiment typically satisfies the requirement that the description be set forth “in such full, clear, concise, and exact terms” to show possession of the claimed invention. 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1. Cf. Fields v. Conover, 443 F.2d 1386, 1392, 170 USPQ 276, 280 (CCPA 1971) (finding a lack of written description because the specification lacked the “full, clear, concise, and exact written description” which is necessary to support the claimed invention). If a complete structure is disclosed, the written description requirement is satisfied for that species or embodiment, and a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, for lack of written description must not be made.
(2) If the application as filed does not disclose the complete structure (or acts of a process) of the claimed invention as a whole, determine whether the specification discloses other relevant identifying characteristics sufficient to describe the claimed invention in such full, clear, concise, and exact terms that a skilled artisan would recognize applicant was in possession of the claimed invention. For example, in the biotech art, if a strong correlation has been established between structure and function, one skilled in the art would be able to predict with a reasonable degree of confidence the structure of the claimed invention from a recitation of its function. Thus, the written description requirement may be satisfied through disclosure of function and minimal structure when there is a well-established correlation between structure and function. In
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contrast, without such a correlation, the capability to recognize or understand the structure from the mere recitation of function and minimal structure is highly unlikely. In this latter case, disclosure of function alone is little more than a wish for possession; it does not satisfy the written description requirement. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406 (written description requirement not satisfied by merely providing “a result that one might achieve if one made that invention”); In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming a rejection for lack of written description because the specification does “little more than outline goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate”).
Whether the specification shows that applicant was in possession of the claimed invention is not a single, simple determination, but rather is a factual determination reached by considering a number of factors. Factors to be considered in determining whether there is sufficient evidence of possession include the level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials and would lead one of skill in the art to the conclusion that the applicant was in possession of the claimed species is sufficient. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. The description needed to satisfy the requirements of 35 U.S.C. 112 “varies with the nature and scope of the invention at issue, and with the scientific and technologic knowledge already in existence.” Capon v. Eshhar, 418 F.3d at 1357, 76 USPQ2d at 1084. Patents and printed publications in the art should be relied upon to determine whether an art is mature and what the level of knowledge and skill is in the art. In most technologies which are mature, and wherein the knowledge and level of skill in the art is high, a written description question should not be raised for claims present in the application when originally filed, even if the specification discloses only a method of making the invention and the function of the invention.
In contrast, for inventions in emerging and unpredictable technologies, or for inventions characterized by factors not reasonably predictable which are known to one of ordinary skill in the art, more evidence is required to show possession. For example, disclosure of only a method of making the invention and the function may not be sufficient to support a product claim other than a product-by-process claim. See, e.g., Fiers v. Revel, 984 F.2d at 1169, 25 USPQ2d at 1605; Amgen, 927 F.2d at 1206, 18 USPQ2d at 1021. Where the process has actually been used to produce the product, the written description requirement for a product-by-process claim is clearly satisfied; however, the requirement may not be satisfied where it is not clear that the acts set forth in the specification can be performed, or that the product is produced by that process. Furthermore, disclosure of a partial structure without additional characterization of the product may not be sufficient to evidence possession of the claimed invention. See, e.g., Amgen, 927 F.2d at 1206, 18 USPQ2d at 1021 (“A gene is a chemical compound, albeit a complex one, and it is well established in our law that conception of a chemical compound requires that the inventor be able to define it so as to distinguish it from other materials, and to describe how to obtain it. Conception does not occur unless one has a mental picture of the structure of the chemical, or is able to define it by its method of preparation, its physical or chemical properties, or whatever characteristics sufficiently distinguish it. It is not sufficient to define it solely by its principal biological property, e.g., encoding human erythropoietin, because an alleged conception having no more specificity than that is simply a wish to know the identity of any material with that biological property. We hold that when an inventor is unable to envision the detailed constitution of a gene so as to distinguish it from other materials, as well as a method for obtaining it, conception has not been achieved until reduction to practice has occurred, i.e., until after the gene has been isolated.”) (citations omitted). In such instances the alleged conception fails not merely because the field is unpredictable or because of the general uncertainty surrounding experimental sciences, but because the conception is incomplete due to factual uncertainty that undermines the specificity of the inventor’s idea of the invention. Burroughs Wellcome Co. v. Barr Lab.
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Inc., 40 F.3d 1223, 1229, 32 USPQ2d 1915, 1920 (Fed. Cir. 1994). Reduction to practice in effect provides the only evidence to corroborate conception (and therefore possession) of the invention. Id.
Any claim to a species that does not meet the test described under at least one of (a), (b), or (c) must be rejected as lacking adequate written description under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1.
ii) For each claim drawn to a genus:
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A), above), reduction to drawings (see i)(B), above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus (see i)(C), above). See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014) (Claims directed to a functionally defined genus of antibodies were not supported by a disclosure that “only describe[d] one type of structurally similar antibodies” that “are not representative of the full variety or scope of the genus.”). The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure “indicates that the patentee has invented species sufficient to constitute the gen[us].” See Enzo Biochem, 323 F.3d at 966, 63 USPQ2d at 1615;
Noelle v. Lederman, 355 F.3d 1343, 1350, 69 USPQ2d 1508, 1514 (Fed. Cir. 2004) (Fed. Cir. 2004) (“[A] patentee of a biotechnological invention cannot necessarily claim a genus after only
describing a limited number of species because there may be unpredictability in the results obtained from species other than those specifically enumerated.”). “A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when … the evidence indicates ordinary artisans could not predict the operability in the invention of any species other than the one disclosed.” In re Curtis, 354 F.3d 1347, 1358, 69 USPQ2d 1274, 1282 (Fed. Cir. 2004) (Claims directed to PTFE dental floss with a friction-enhancing coating were not supported by a disclosure of a microcrystalline wax coating where there was no evidence in the disclosure or anywhere else in the record showing applicant conveyed that any other coating was suitable for a PTFE dental floss.) On the other hand, there may be situations where one species adequately supports a genus. See, e.g., Rasmussen, 650 F.2d at 1214, 211 USPQ at 326-27 (disclosure of a single method of adheringly applying one layer to another was sufficient to support a generic claim to “adheringly applying” because one skilled in the art reading the specification would understand that it is unimportant how the layers are adhered, so long as they are adhered); In re Herschler, 591 F.2d 693, 697, 200 USPQ 711, 714 (CCPA 1979) (disclosure of corticosteroid in DMSO sufficient to support claims drawn to a method of using a mixture of a “physiologically active steroid” and DMSO because “use of known chemical compounds in a manner auxiliary to the invention must have a corresponding written description only so specific as to lead one having ordinary skill in the art to that class of compounds. Occasionally, a functional recitation of those known compounds in the specification may be sufficient as that description.”); In re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 285 (CCPA 1973) (the phrase “air or other gas which is inert to the liquid” was sufficient to support a claim to “inert fluid media” because the description of the properties and functions of the air or other gas segmentizing medium would suggest to a person skilled in the art that appellant’s invention includes the use of “inert fluid” broadly.).
The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 “merely by clearly describing one embodiment of
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the thing claimed.” LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005). The issue is whether a person skilled in the art would understand applicant to have invented, and been in possession of, the invention as broadly claimed. In LizardTech, claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. See also Tronzo v. Biomet, 156 F.3d at 1159, 47 USPQ2d at 1833 (Fed. Cir. 1998), wherein the disclosure of a species in the parent application did not suffice to provide written description support for the genus in the child application where the specification taught against other species.
Satisfactory disclosure of a “representative number” depends on whether one of skill in the art would recognize that the applicant was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus. See, e.g., Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. Instead, the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are “representative of the full variety or scope of the genus,” or by the establishment of “a reasonable structure-function correlation.” Such correlations may be established “by the inventor as described in the specification,” or they may be “known in the art at the time of the filing date.” See AbbVie, 759 F.3d at 1300-01, 111 USPQ2d 1780, 1790-91 (Fed. Cir. 2014) (Claims to all human antibodies that bind IL-12 with a particular koff rate constant were not adequately disclosed by specification describing only a single type of human antibody having a particular type of heavy and light chain, because such disclosure was not representative of other types of the claimed antibodies. For example, the specification failed to disclose other antibodies encompassed by the claimed genus that bound to different epitopes on IL-12, had different types of heavy and light chains, and shared only a 50%
sequence similarity in their variable regions with the disclosed antibodies.). Description of a representative number of species does not require the description to be of such specificity that it would provide individual support for each species that the genus embraces. For example, in the molecular biology arts, if an applicant disclosed an amino acid sequence, it would be unnecessary to provide an explicit disclosure of nucleic acid sequences that encoded the amino acid sequence. Since the genetic code is widely known, a disclosure of an amino acid sequence would provide sufficient information such that one would accept that an applicant was in possession of the full genus of nucleic acids encoding a given amino acid sequence, but not necessarily any particular species. Cf. In re Bell, 991 F.2d 781, 785, 26 USPQ2d 1529, 1532 (Fed. Cir. 1993) and In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994). If a representative number of adequately described species are not disclosed for a genus, the claim to that genus must be rejected as lacking adequate written description under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1.
(b) New Claims, Amended Claims, or Claims Asserting Entitlement to the Benefit of an Earlier Priority Date or Filing Date under 35 U.S.C. 119, 120, 365, or 386
The examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. See Wertheim, 541 F.2d at 263, 191 USPQ at 97 (“[T]he PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.”). However, when filing an amendment an applicant should show support in the original disclosure for new or amended claims. See MPEP § 714.02 and § 2163.06 (“Applicant should ... specifically point out the support for any amendments made to the disclosure.”).
To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each
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claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure. When an explicit limitation in a claim “is not present in the written description whose benefit is sought it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998). See also In re Wright, 866 F.2d 422, 425, 9 USPQ2d 1649, 1651 (Fed. Cir. 1989) (Original specification for method of forming images using photosensitive microcapsules which describes removal of microcapsules from surface and warns that capsules not be disturbed prior to formation of image, unequivocally teaches absence of permanently fixed microcapsules and supports amended language of claims requiring that microcapsules be “not permanently fixed” to underlying surface, and therefore meets description requirement of 35 U.S.C. 112.); In re Robins, 429 F.2d 452, 456-57, 166 USPQ 552, 555 (CCPA 1970) (“[W]here no explicit description of a generic invention is to be found in the specification[,] ... mention of representative compounds may provide an implicit description upon which to base generic claim language.”); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (a subgenus is not necessarily implicitly described by a genus encompassing it and a species upon which it reads); In re Robertson, 169 F.3d 743, 745, 49 USPQ2d
1949, 1950-51 (Fed. Cir. 1999) (“To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’”) (citations omitted). Furthermore, each claim must include all elements which applicant has described as essential. See, e.g., Johnson Worldwide Assoc. Inc. v. Zebco Corp., 175 F.3d at 993, 50 USPQ2d at 1613; Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d at 1479, 45 USPQ2d at 1503; Tronzo v. Biomet, 156 F.3d at 1159, 47 USPQ2d at 1833.
If the originally filed disclosure does not provide support for each claim limitation, or if an element
which applicant describes as essential or critical is not claimed, a new or amended claim must be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, as lacking adequate written description, or in the case of a priority or benefit claim under 35 U.S.C. 119, 120, 365, or 386, the priority or benefit claim must be denied.
III. COMPLETE PATENTABILITY DETERMINATION UNDER ALL STATUTORY REQUIREMENTS AND CLEARLY COMMUNICATE FINDINGS, CONCLUSIONS, AND THEIR BASES
The above only describes how to determine whether the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, is satisfied. Regardless of the outcome of that determination, Office personnel must complete the patentability determination under all the relevant statutory provisions of title 35 of the U.S. Code.
Once Office personnel have concluded analysis of the claimed invention under all the statutory provisions, including 35 U.S.C. 101, 112, 102, and 103, they should review all the proposed rejections and their bases to confirm their correctness. Only then should any rejection be imposed in an Office action. The Office action should clearly communicate the findings, conclusions, and reasons which support them. When possible, the Office action should offer helpful suggestions on how to overcome rejections.
A. For Each Claim Lacking Written Description Support, Reject the Claim Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, para. 1, for Lack of Adequate Written Description
A description as filed is presumed to be adequate, unless or until sufficient evidence or reasoning to the contrary has been presented by the examiner to rebut the presumption. See, e.g., In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971). The examiner, therefore, must have a reasonable basis to challenge the adequacy of the written description. The examiner has the initial burden of presenting by a preponderance of evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims. Wertheim, 541 F.2d
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at 263, 191 USPQ at 97. In rejecting a claim, the examiner must set forth express findings of fact regarding the above analysis which support the lack of written description conclusion. These findings should:
(A) Identify the claim limitation at issue; and
(B) Establish a prima facie case by providing reasons why a person skilled in the art at the time the application was filed would not have recognized that the inventor was in possession of the invention as claimed in view of the disclosure of the application as filed. A general allegation of “unpredictability in the art” is not a sufficient reason to support a rejection for lack of adequate written description.
When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description. See Rasmussen, 650 F.2d at 1214, 211 USPQ at 326.
B. Upon Reply by Applicant, Again Determine the Patentability of the Claimed Invention, Including Whether the Written Description Requirement Is Satisfied by Reperforming the Analysis Described Above in View of the Whole Record
Upon reply by applicant, before repeating any rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, for lack of written description, review the basis for the rejection in view of the record as a whole, including amendments, arguments, and any evidence submitted by applicant. If the whole record now demonstrates that the written description requirement is satisfied, do not repeat the rejection in the next Office action. If the record still does not demonstrate that the written description is adequate to support the claim(s), repeat the rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, fully respond to applicant’s rebuttal arguments, and properly treat any further showings submitted by applicant in the reply. When a rejection is maintained, any affidavits relevant to the 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, written description requirement, must be thoroughly analyzed and discussed in the next Office
action. See In re Alton, 76 F.3d 1168, 1176, 37 USPQ2d 1578, 1584 (Fed. Cir. 1996).
2163.01 Support for the Claimed Subject Matter in Disclosure [R-11.2013]
A written description requirement issue generally involves the question of whether the subject matter of a claim is supported by [conforms to] the disclosure of an application as filed. If the examiner concludes that the claimed subject matter is not supported [described] in an application as filed, this would result in a rejection of the claim on the ground of a lack of written description under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or denial of the benefit of the filing date of a previously filed application. The claim should not be rejected or objected to on the ground of new matter. As framed by the court in In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981), the concept of new matter is properly employed as a basis for objection to amendments to the abstract, specification or drawings attempting to add new disclosure to that originally presented. While the test or analysis of description requirement and new matter issues is the same, the examining procedure and statutory basis for addressing these issues differ. See MPEP § 2163.06.
2163.02 Standard for Determining Compliance With the Written Description Requirement [R-11.2013]
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, “does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed. The test for
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sufficiency of support in a parent application is whether the disclosure of the application relied upon “reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.” Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed. Cir. 1985) (quoting In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983)).
Whenever the issue arises, the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was “ready for patenting” such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997); Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (one must define a compound by “whatever characteristics sufficiently distinguish it”).
The subject matter of the claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement. If a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application. This conclusion will result in the
rejection of the claims affected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.112, first paragraph - description requirement, or denial of the benefit of the filing date of a previously filed application, as appropriate.
See MPEP § 2163 for examination guidelines pertaining to the written description requirement.
2163.03 Typical Circumstances Where Adequate Written Description Issue Arises [R-07.2015]
A description requirement issue can arise in a number of different circumstances where it must be determined whether the subject matter of a claim is supported in an application as filed. See MPEP § 2163 for examination guidelines pertaining to the written description requirement. Most typically, the issue will arise in the following circumstances:
I. AMENDMENT AFFECTING A CLAIM
An amendment to the claims or the addition of a new claim must be supported by the description of the invention in the application as filed. In re Wright, 866 F.2d 422, 9 USPQ2d 1649 (Fed. Cir. 1989). An amendment to the specification (e.g., a change in the definition of a term used both in the specification and claim) may indirectly affect a claim even though no actual amendment is made to the claim.
II. RELIANCE ON FILING DATE OF PARENT APPLICATION UNDER 35 U.S.C. 120
Under 35 U.S.C. 120, the claims in a U.S. application are entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph in the earlier filed application. See, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d 1829 (Fed. Cir. 1998); In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA 1978).
III. RELIANCE ON PRIORITY UNDER 35 U.S.C. 119
Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign
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priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In re Ziegler, 992 F.2d 1197, 1200, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993); Kawai v. Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989).
IV. SUPPORT FOR A CLAIM CORRESPONDING TO A COUNT IN AN INTERFERENCE
In an interference proceeding, the claim corresponding to a count must be supported by the specification in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Fields v. Conover, 443 F.2d 1386, 170 USPQ 276
(CCPA 1971) (A broad generic disclosure to a class of compounds was not a sufficient written description of a specific compound within the class.). Furthermore, when a party to an interference seeks the benefit of an earlier-filed U.S. patent application, the earlier application must meet the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for the subject matter of the count. Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed. Cir. 1998).
V. ORIGINAL CLAIM NOT SUFFICIENTLY DESCRIBED
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) en banc. The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the
specification. “Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement.” Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
VI. INDEFINITENESS REJECTION OFA MEANS- (OR STEP-) PLUS-FUNCTION LIMITATION
A claim limitation expressed in means- (or step-) plus-function language “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. If the specification fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function, then the claim limitation is indefinite because the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.
2163.04 Burden on the Examiner with Regard to the Written Description Requirement [R-11.2013]
The inquiry into whether the description requirement is met must be determined on a case-by-case basis and is a question of fact. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). A description as filed is presumed to be adequate, unless or until sufficient evidence or reasoning to the contrary has been presented by the examiner to rebut the presumption. See, e.g., In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971). The examiner, therefore, must have a
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reasonable basis to challenge the adequacy of the written description. The examiner has the initial burden of presenting by a preponderance of evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims. Wertheim, 541 F.2d at 263, 191 USPQ at 97.
I. STATEMENT OF REJECTION REQUIREMENTS
In rejecting a claim, the examiner must set forth express findings of fact which support the lack of written description conclusion (see MPEP § 2163 for examination guidelines pertaining to the written description requirement). These findings should:
(A) Identify the claim limitation(s) at issue; and
(B) Establish a prima facie case by providing reasons why a person skilled in the art at the time the application was filed would not have recognized that the inventor was in possession of the invention as claimed in view of the disclosure of the application as filed. A general allegation of “unpredictability in the art” is not a sufficient reason to support a rejection for lack of adequate written description. A simple statement such as “Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.” may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.
See Hyatt v. Dudas, 492 F.3d 1365, 1370, 83 USPQ2d 1373, 1376 (Fed. Cir. 2007) (holding that “[MPEP] § 2163.04 [subsection] (I)(B) as written is a lawful formulation of the prima facie standard for a lack of written description rejection.”).
When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description. See Rasmussen, 650 F.2d at 1214, 211 USPQ at 326.
II. RESPONSE TO APPLICANT’S REPLY
Upon reply by applicant, before repeating any rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, for lack of written description, review the basis for the rejection in view of the record as a whole, including amendments, arguments, and any evidence submitted by applicant. If the whole record now demonstrates that the written description requirement is satisfied, do not repeat the rejection in the next Office action. If the record still does not demonstrate that the written description is adequate to support the claim(s), repeat the rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, fully respond to applicant’s rebuttal arguments, and properly treat any further showings submitted by applicant in the reply. When a rejection is maintained, any affidavits relevant to the 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, written description requirement, must be thoroughly analyzed and discussed in the next Office action. See In re Alton, 76 F.3d 1168, 1176, 37 USPQ2d 1578, 1584 (Fed. Cir. 1996).
2163.05 Changes to the Scope of Claims [R-07.2015]
The failure to meet the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, commonly arises when the claims are changed after filing to either broaden or narrow the breadth of the claim limitations, or to alter a numerical range limitation or to use claim language which is not synonymous with the terminology used in the original disclosure. To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, or 365(c), each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure. See MPEP § 2163 for examination guidelines pertaining to the written description requirement.
I. BROADENING CLAIM
A. Omission of a Limitation
Under certain circumstances, omission of a limitation can raise an issue regarding whether the inventor
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had possession of a broader, more generic invention. See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 45 USPQ2d 1498 (Fed. Cir. 1998) (claims to a sectional sofa comprising, inter alia, a console and a control means were held invalid for failing to satisfy the written description requirement where the claims were broadened by removing the location of the control means.); Johnson Worldwide Assoc. v. Zebco Corp., 175 F.3d 985, 993, 50 USPQ2d 1607, 1613 (Fed. Cir. 1999) (In Gentry Gallery, the “court’s determination that the patent disclosure did not support a broad meaning for the disputed claim terms was premised on clear statements in the written description that described the location of a claim element--the ‘control means’--as ‘the only possible location’ and that variations were ‘outside the stated purpose of the invention.’ Gentry Gallery, 134 F.3d at 1479, 45 USPQ2d at 1503. Gentry Gallery, then, considers the situation where the patent’s disclosure makes crystal clear that a particular (i.e., narrow) understanding of a claim term is an ‘essential element of [the inventor’s] invention.’”); Tronzo v. Biomet, 156 F.3d at 1158-59, 47 USPQ2d at 1833 (Fed. Cir. 1998) (claims to generic cup shape were not entitled to filing date of parent application which disclosed “conical cup” in view of the disclosure of the parent application stating the advantages and importance of the conical shape.); In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984) (reissue claim omitting “in synchronism” limitation with respect to scanning means and indexing means was not supported by the original patent’s disclosure in such a way as to indicate possession, as of the original filing date, of that generic invention.).
A claim that omits an element which applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the written description requirement. See Gentry Gallery, 134 F.3d at 1480, 45 USPQ2d at 1503; In re Sus, 306 F.2d 494, 504, 134 USPQ 301, 309 (CCPA 1962) (“[O]ne skilled in this art would not be taught by the written description of the invention in the specification that any ‘aryl or substituted aryl radical’ would be suitable for the purposes of the invention but rather that only certain aryl radicals and certain specifically substituted aryl radicals [i.e., aryl azides] would be suitable for such purposes.”) (emphasis in original). Compare In re Peters, 723
F.2d 891, 221 USPQ 952 (Fed. Cir. 1983) (In a reissue application, a claim to a display device was broadened by removing the limitations directed to the specific tapered shape of the tips without violating the written description requirement. The shape limitation was considered to be unnecessary since the specification, as filed, did not describe the tapered shape as essential or critical to the operation or patentability of the claim.). A claim which omits matter disclosed to be essential to the invention as described in the specification or in other statements of record may also be subject to rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, as not enabling, or under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, para. 2. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976); In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976); and In re Collier, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968). See also MPEP § 2172.01.
B. Addition of Generic Claim
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species. A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014) (Claims directed to a functionally defined genus of antibodies were not supported by a disclosure that “only describe[d] one type of structurally similar antibodies” that “are not representative of the full variety or scope of the genus.”). The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure “indicates that the patentee has invented species sufficient to constitute the gen[us].” See Enzo Biochem, 323 F.3d at 966, 63 USPQ2d at 1615. “A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when … the evidence indicates ordinary artisans could not predict the operability in the invention of any species other than the one disclosed.” In re Curtis, 354 F.3d 1347,
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1358, 69 USPQ2d 1274, 1282 (Fed. Cir. 2004) (Claims directed to PTFE dental floss with a friction-enhancing coating were not supported by a disclosure of a microcrystalline wax coating where there was no evidence in the disclosure or anywhere else in the record showing applicant conveyed that any other coating was suitable for a PTFE dental floss.) On the other hand, there may be situations where one species adequately supports a genus. See, e.g., In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 326-27 (CCPA 1981) (disclosure of a single method of adheringly applying one layer to another was sufficient to support a generic claim to “adheringly applying” because one skilled in the art reading the specification would understand that it is unimportant how the layers are adhered, so long as they are adhered); In re Herschler, 591 F.2d 693, 697, 200 USPQ 711, 714 (CCPA 1979) (disclosure of corticosteriod in DMSO sufficient to support claims drawn to a method of using a mixture of a “physiologically active steroid” and DMSO because “use of known chemical compounds in a manner auxiliary to the invention must have a corresponding written description only so specific as to lead one having ordinary skill in the art to that class of compounds. Occasionally, a functional recitation of those known compounds in the specification may be sufficient as that description.”); In re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 285 (CCPA 1973) (the phrase “air or other gas which is inert to the liquid” was sufficient to support a claim to “inert fluid media” because the description of the properties and functions of the air or other gas segmentizing medium would suggest to a person skilled in the art that appellant’s invention includes the use of “inert fluid” broadly.). However, in Tronzo v. Biomet, 156 F.3d 1154, 1159, 47 USPQ2d 1829, 1833 (Fed. Cir. 1998), the disclosure of a species in the parent application did not suffice to provide written description support for the genus in the child application where the specification taught against other species. See also In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989) (generic and subgeneric claims in the U.S. application were not entitled to the benefit of foreign priority where the foreign application disclosed only two of the species encompassed by the broad generic claim and the subgeneric Markush claim that encompassed 21 compounds).
II. NARROWING OR SUBGENERIC CLAIM
The introduction of claim changes which involve narrowing the claims by introducing elements or limitations which are not supported by the as-filed disclosure is a violation of the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559, 1571, 39 USPQ2d 1895, 1905 (Fed. Cir. 1996) (a “laundry list” disclosure of every possible moiety does not constitute a written description of every species in a genus because it would not “reasonably lead” those skilled in the art to any particular species); In re Ruschig, 379 F.2d 990, 995, 154 USPQ 118, 123 (CCPA 1967) (“ If n-propylamine had been used in making the compound instead of n-butylamine, the compound of claim 13 would have resulted. Appellants submit to us, as they did to the board, an imaginary specific example patterned on specific example 6 by which the above butyl compound is made so that we can see what a simple change would have resulted in a specific supporting disclosure being present in the present specification. The trouble is that there is no such disclosure, easy though it is to imagine it.”) (emphasis in originan( � Rozbicki v. Chiang, 590 Fed.App’x 990, 996 (Fed. Cir. 2014) (non-precedential) (The court found that patentee, “while attempting to obtain the broadest claim language possible during prosecution, cannot now improperly narrow its language by importing limitations not supported by the claim language or written description.”). In Ex parte Ohshiro, 14 USPQ2d 1750 (Bd. Pat. App. & Inter. 1989), the Board affirmed the rejection under 35 U.S.C. 112, first paragraph, of claims to an internal combustion engine which recited “at least one of said piston and said cylinder (head) having a recessed channel.” The Board held that the application which disclosed a cylinder head with a recessed channel and a piston without a recessed channel did not specifically disclose the “species” of a channeled piston.
While these and other cases find that recitation of an undisclosed species may violate the description requirement, a change involving subgeneric terminology may or may not be acceptable. Applicant was not entitled to the benefit of a parent filing date when the claim was directed to a subgenus (a specified range of molecular weight ratios) where
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the parent application contained a generic disclosure and a specific example that fell within the recited range because the court held that subgenus range was not described in the parent application. In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971). On the other hand, in Ex parte Sorenson, 3 USPQ2d 1462 (Bd. Pat. App. & Inter. 1987), the subgeneric language of “aliphatic carboxylic acid” and “aryl carboxylic acid” did not violate the written description requirement because species falling within each subgenus were disclosed as well as the generic carboxylic acid. See also In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (“Whatever may be the viability of an inductive-deductive approach to arriving at a claimed subgenus, it cannot be said that such a subgenus is necessarily described by a genus encompassing it and a species upon which it reads.” (emphasis added)). Each case must be decided on its own facts in terms of what is reasonably communicated to those skilled in the art. In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984).
III. RANGE LIMITATIONS
With respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure. In the decision in In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the ranges described in the original specification included a range of “25%- 60%” and specific examples of “36%” and “50%.” A corresponding new claim limitation to “at least 35%” did not meet the description requirement because the phrase “at least” had no upper limit and caused the claim to read literally on embodiments outside the “25% to 60%” range, however a limitation to “between 35% and 60%” did meet the description requirement.
See also Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1328, 56 USPQ2d 1481, 1487 (Fed. Cir. 2000) (“[T]he specification does not clearly disclose to the skilled artisan that the inventors... considered the... ratio to be part of their invention.... There is therefore no force to Purdue’s argument that the written description requirement was satisfied because the disclosure revealed a broad invention from which the [later-filed] claims carved
out a patentable portion”). Compare Union Oil of Cal. v. Atl. Richfield Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232-33 (Fed. Cir. 2000) (Description in terms of ranges of chemical properties which work in combination with ranges of other chemical properties to produce an automotive gasoline that reduces emissions was found to provide an adequate written description even though the exact chemical components of each combination were not disclosed and the specification did not disclose any distinct embodiments corresponding to any claim at issue. “[T]he Patent Act and this court’s case law require only sufficient description to show one of skill in the . . . art that the inventor possessed the claimed invention at the time of filing.”).
2163.06 Relationship of Written Description Requirement to New Matter [R-11.2013]
Lack of written description is an issue that generally arises with respect to the subject matter of a claim. If an applicant amends or attempts to amend the abstract, specification or drawings of an application, an issue of new matter will arise if the content of the amendment is not described in the application as filed. Stated another way, information contained in any one of the specification, claims or drawings of the application as filed may be added to any other part of the application without introducing new matter.
There are two statutory provisions that prohibit the introduction of new matter. The first provision is 35 U.S.C. 132, which provides that no amendment shall introduce new matter into the disclosure of the invention. The second provision is 35 U.S.C. 251, which provides that no new matter shall be introduced into the application for reissue.
I. TREATMENT OF NEW MATTER
If new subject matter is added to the disclosure, whether it be in the abstract, the specification, or the drawings, the examiner should object to the introduction of new matter under 35 U.S.C. 132 or 251 as appropriate, and require applicant to cancel the new matter. If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first
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paragraph - written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). The examiner should still consider the subject matter added to the claim in making rejections based on prior art since the new matter rejection may be overcome by applicant.
When the claims have not been amended, per se, but the specification has been amended to add new matter, a rejection of the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, should be made whenever any of the claim limitations are affected by the added material.
When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not “new matter” is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure.
II. REVIEW OF NEW MATTER OBJECTIONS AND/OR REJECTIONS
A rejection of claims is reviewable by the Patent Trial and Appeal Board, whereas an objection and requirement to delete new matter is subject to supervisory review by petition under 37 CFR 1.181. If both the claims and specification contain new matter either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable and should not be decided by petition.
III. CLAIMED SUBJECT MATTER NOT DISCLOSED IN REMAINDER OF SPECIFICATION
The claims as filed in the original specification are part of the disclosure and therefore, if an application as originally filed contains a claim disclosing material not disclosed in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed.
Cir. 1985). Form paragraph 7.44 may be used where originally claimed subject matter lacks proper
antecedent basis in the specification. See MPEP § 608.01(o).
2163.07 Amendments to Application Which Are Supported in the Original Description [R-08.2012]
Amendments to an application which are supported in the original description are NOT new matter.
I. REPHRASING
Mere rephrasing of a passage does not constitute new matter. Accordingly, a rewording of a passage where the same meaning remains intact is permissible. In re Anderson, 471 F.2d 1237, 176 USPQ 331 (CCPA 1973). The mere inclusion of dictionary or art recognized definitions known at the time of filing an application may not be considered new matter. If there are multiple definitions for a term and a definition is added to the application, it must be clear from the application as filed that applicant intended a particular definition, in order to avoid an issue of new matter and/or lack of written description. See, e.g., Scarring Corp. v. Megan, Inc., 222 F.3d 1347, 1352-53, 55 USPQ2d 1650, 1654 (Fed. Cir. 2000). In Scarring, the original disclosure was drawn to recombinant DNA molecules and used the term “leukocyte interferon.” Shortly after the filing date, a scientific committee abolished the term in favor of “IFN-(a),” since the latter term more specifically identified a particular polypeptide and since the committee found that leukocytes also produced other types of interferon. The court held that the subsequent amendment to the specification and claims substituting the term “IFN-(a)” for “leukocyte interferon” merely renamed the invention and did not constitute new matter. The claims were limited to cover only the interferon subtype coded for by the inventor’s original deposits.
II. OBVIOUS ERRORS
An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction. In re Odd, 443 F.2d 1200, 170 USPQ 268 (CCPA
1971).
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Where a foreign priority document under 35 U.S.C. 119 is of record in the U.S. application file, applicant may not rely on the disclosure of that document to support correction of an error in the pending U.S. application. Ex parte Bondiou, 132 USPQ 356 (Bd. App. 1961). This prohibition applies regardless of the language of the foreign priority documents because a claim for priority is simply a claim for the benefit of an earlier filing date for subject matter that is common to two or more applications, and does not serve to incorporate the content of the priority document in the application in which the claim for priority is made. This prohibition does not apply where the U.S. application explicitly incorporates the foreign priority document by reference. For applications filed on or after September 21, 2004, where all or a portion of the specification or drawing(s) is inadvertently omitted from the U.S. application, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that is present on the filing date of the application is considered an incorporation by reference of the prior-filed foreign application as to the inadvertently omitted portion of the specification or drawing(s), subject to the conditions and requirements of 37 CFR 1.57(a). See 37 CFR 1.57(a) and MPEP § 217 .
Where a U.S. application as originally filed was in a non-English language and an English translation thereof was subsequently submitted pursuant to 37 CFR 1.52(d), if there is an error in the English translation, applicant may rely on the disclosure of the originally filed non-English language U.S. application to support correction of an error in the English translation document.
2163.07(a) Inherent Function, Theory, or Advantage [R-08.2012]
By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it. The application may later be amended to recite the function, theory or advantage without introducing prohibited new matter. In re Reynolds, 443 F.2d 384, 170 USPQ 94 (CCPA 1971); In re Smythe, 480 F. 2d 1376, 178 USPQ 279 (CCPA 1973). “To establish inherency,
the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (citations omitted).
2163.07(b) Incorporation by Reference [R-11.2013]
Instead of repeating some information contained in another document, an application may attempt to incorporate the content of another document or part thereof by reference to the document in the text of the specification. The information incorporated is as much a part of the application as filed as if the text was repeated in the application, and should be treated as part of the text of the application as filed. Replacing the identified material incorporated by reference with the actual text is not new matter. See 37 CFR 1.57 and MPEP § 608.01(p) for Office policy regarding incorporation by reference. See MPEP § 2181 for the impact of incorporation by reference on the determination of whether applicant has complied with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked.
2164 The Enablement Requirement [R-11.2013]
The enablement requirement refers to the requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph that the specification describe how to make and how to use the invention. The invention that one skilled in the art must be enabled to make and use is that defined by the claim(s) of the particular application or patent.
The purpose of the requirement that the specification describe the invention in such terms that one skilled in the art can make and use the claimed invention is to ensure that the invention is communicated to the interested public in a meaningful way. The
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information contained in the disclosure of an application must be sufficient to inform those skilled in the relevant art how to both make and use the claimed invention. However, to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, it is not necessary to “enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.” CFMT, Inc. v.Yieldup Int’l Corp., 349 F.3d 1333, 1338, 68 USPQ2d 1940, 1944 (Fed. Cir. 2003) (an invention directed to a general system to improve the cleaning process for semiconductor wafers was enabled by a disclosure showing improvements in the overall system). Detailed procedures for making and using the invention may not be necessary if the description of the invention itself is sufficient to permit those skilled in the art to make and use the invention. A patent claim is invalid if it is not supported by an enabling disclosure.
The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563,
19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) (“the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’”). See also MPEP § 2161. Therefore, the fact that an additional limitation to a claim may lack descriptive support in the disclosure as originally filed does not necessarily mean that the limitation is also not enabled. In other words, even if a new limitation is not described in the original disclosure, the addition of a new limitation in and of itself may not create an enablement problem provided that one skilled in the art could make and use the claimed invention with the new limitation. Consequently, such limitations must be analyzed for both enablement and description using their separate and distinct criteria.
Furthermore, when the limitation is not described in the specification portion of the application as filed but is in the claims, the limitation in and of itself may enable one skilled in the art to make and use the claimed invention. When claimed subject matter is only presented in the claims and not in the specification portion of the application, the specification should be objected to for lacking the
requisite support for the claimed subject matter using form paragraph 7.44. See MPEP § 2163.06. This is an objection to the specification only and enablement issues should be treated separately.
2164.01 Test of Enablement [R-08.2012]
Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Minerals Separation Ltd. v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Accordingly, even though the statute does not use the term “undue experimentation,” it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988). See also United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988) (“The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.”). A patent need not teach, and preferably omits, what is well known in the art. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991); Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987); and Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984). Any part of the specification can support an enabling disclosure, even a background section that discusses, or even disparages, the subject matter disclosed therein. Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361,
77 USPQ2d 1041 (Fed. Cir. 2005)(discussion of problems with a prior art feature does not mean that
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one of ordinary skill in the art would not know how to make and use this feature). Determining enablement is a question of law based on underlying factual findings. In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991); Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984).
UNDUE EXPERIMENTATION
The fact that experimentation may be complex does not necessarily make it undue, if the art typically engages in such experimentation. In re Certain Limited-Charge Cell Culture Microcarriers, 221 USPQ 1165, 1174 (Int’l Trade Comm'n 1983), aff’d. sub nom., Massachusetts Institute of Technology v. A.B. Fortia, 774 F.2d 1104, 227 USPQ 428 (Fed. Cir. 1985). See also In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404. The test of enablement is not whether any experimentation is necessary, but whether, if experimentation is necessary, it is undue. In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976).
2164.01(a) Undue Experimentation Factors [R-08.2012]
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s
determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that “there was considerable direction and guidance” in the specification; there was “a high level of skill in the art at the time the application was filed;” and “all of the methods needed to practice the invention were well known.” 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that “it would not require undue experimentation to obtain antibodies needed to practice the claimed invention.” Id., 8 USPQ2d at 1407.
It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others. The examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole. 858 F.2d at 737, 740, 8 USPQ2d at 1404, 1407.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 USPQ2d
1510, 1513 (Fed. Cir. 1993).
The determination that “undue experimentation” would have been needed to make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion reached by weighing all the above noted factual considerations. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
These factual considerations are discussed more fully in MPEP § 2164.08 (scope or breadth of the claims), § 2164.05(a) (nature of the invention and state of the prior art), § 2164.05(b) (level of one of ordinary skill), § 2164.03 (level of predictability in the art
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and amount of direction provided by the inventor), § 2164.02 (the existence of working examples) and § 2164.06 (quantity of experimentation needed to make or use the invention based on the content of the disclosure).
2164.01(b) How to Make the Claimed Invention [R-08.2012]
As long as the specification discloses at least one method for making and using the claimed invention that bears a reasonable correlation to the entire scope of the claim, then the enablement requirement of 35 U.S.C. 112 is satisfied. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). Failure to disclose other methods by which the claimed invention may be made does not render a claim invalid under 35 U.S.C. 112. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1533, 3 USPQ2d 1737, 1743 (Fed. Cir. 1987), cert. denied, 484 U.S. 954 (1987).
Naturally, for unstable and transitory chemical intermediates, the “how to make” requirement does not require that the applicant teach how to make the claimed product in stable, permanent or isolatable form. In re Breslow, 616 F.2d 516, 521, 205 USPQ 221, 226 (CCPA 1980).
A key issue that can arise when determining whether the specification is enabling is whether the starting materials or apparatus necessary to make the invention are available. In the biotechnical area, this is often true when the product or process requires a particular strain of microorganism and when the microorganism is available only after extensive screening.
The court in In re Ghiron, 442 F.2d 985, 991, 169 USPQ 723, 727 (CCPA 1971), made clear that if the practice of a method requires a particular apparatus, the application must provide a sufficient disclosure of the apparatus if the apparatus is not readily available. The same can be said if certain chemicals are required to make a compound or practice a
chemical process. In re Howarth, 654 F.2d 103, 105, 210 USPQ 689, 691 (CCPA 1981).
2164.01(c) How to Use the Claimed Invention [R-11.2013]
If a statement of utility in the specification contains within it a connotation of how to use, and/or the art recognizes that standard modes of administration are known and contemplated, 35 U.S.C. 112 is satisfied. In re Johnson, 282 F.2d 370, 373, 127 USPQ 216, 219 (CCPA 1960); In re Hitchings, 342 F.2d 80, 87, 144 USPQ 637, 643 (CCPA 1965). See also In re Brana, 51 F.2d 1560, 1566, 34 USPQ2d 1437, 1441 (Fed. Cir. 1993).
For example, it is not necessary to specify the dosage or method of use if it is known to one skilled in the art that such information could be obtained without undue experimentation. If one skilled in the art, based on knowledge of compounds having similar physiological or biological activity, would be able to discern an appropriate dosage or method of use without undue experimentation, this would be sufficient to satisfy 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The applicant need not demonstrate that the invention is completely safe. See also MPEP § 2107.01 and § 2107.03.
When a compound or composition claim is limited by a particular use, enablement of that claim should be evaluated based on that limitation. See In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (claiming a chimeric gene capable of being expressed in any cyanobacterium and thus defining the claimed gene by its use).
In contrast, when a compound or composition claim is not limited by a recited use, any enabled use that would reasonably correlate with the entire scope of that claim is sufficient to preclude a rejection for nonenablement based on how to use. If multiple uses for claimed compounds or compositions are disclosed in the application, then an enablement rejection must include an explanation, sufficiently supported by the evidence, why the specification fails to enable each disclosed use. In other words, if
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any use is enabled when multiple uses are disclosed, the application is enabling for the claimed invention.
2164.02 Working Example [R-11.2013]
Compliance with the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, does not turn on whether an example is disclosed. An example may be “working” or “prophetic.” A working example is based on work actually performed. A prophetic example describes an embodiment of the invention based on predicted results rather than work actually conducted or results actually achieved.
An applicant need not have actually reduced the invention to practice prior to filing. In Gould v. Quigg, 822 F.2d 1074, 1078, 3 USPQ 2d 1302, 1304 (Fed. Cir. 1987), as of Gould’s filing date, no person had built a light amplifier or measured a population inversion in a gas discharge. The court held that “The mere fact that something has not previously been done clearly is not, in itself, a sufficient basis for rejecting all applications purporting to disclose how to do it.” 822 F.2d at 1078, 3 USPQ2d at 1304 (quoting In re Chilowsky, 229 F.2d 457, 461, 108 USPQ 321, 325 (CCPA 1956)).
The specification need not contain an example if the invention is otherwise disclosed in such manner that one skilled in the art will be able to practice it without an undue amount of experimentation. In re Borkowski, 422 F.2d 904, 908, 164 USPQ 642, 645 (CCPA 1970).
Lack of a working example, however, is a factor to be considered, especially in a case involving an unpredictable and undeveloped art. But because only an enabling disclosure is required, applicant need not describe all actual embodiments.
I. NONE OR ONE WORKING EXAMPLE
When considering the factors relating to a determination of non-enablement, if all the other factors point toward enablement, then the absence of working examples will not by itself render the invention non-enabled. In other words, lack of working examples or lack of evidence that the claimed invention works as described should never
be the sole reason for rejecting the claimed invention on the grounds of lack of enablement. A single working example in the specification for a claimed invention is enough to preclude a rejection which states that nothing is enabled since at least that embodiment would be enabled. However, a rejection stating that enablement is limited to a particular scope may be appropriate.
The presence of only one working example should never be the sole reason for rejecting claims as being broader than the enabling disclosure, even though it is a factor to be considered along with all the other factors. To make a valid rejection, one must evaluate all the facts and evidence and state why one would not expect to be able to extrapolate that one example across the entire scope of the claims.
II. CORRELATION: IN VITRO/ IN VIVO
The issue of “correlation” is related to the issue of the presence or absence of working examples. “Correlation” as used herein refers to the relationship between in vitro or in vivo animal model assays and a disclosed or a claimed method of use. An in vitro or in vivo animal model example in the specification, in effect, constitutes a “working example” if that example “correlates” with a disclosed or claimed method invention. If there is no correlation, then the examples do not constitute “working examples.” In this regard, the issue of “correlation” is also dependent on the state of the prior art. In other words, if the art is such that a particular model is recognized as correlating to a specific condition, then it should be accepted as correlating unless the examiner has evidence that the model does not correlate. Even with such evidence, the examiner must weigh the evidence for and against correlation and decide whether one skilled in the art would accept the model as reasonably correlating to the condition. In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995) (reversing the PTO decision based on finding that in vitro data did not support in vivo applications).
Since the initial burden is on the examiner to give reasons for the lack of enablement, the examiner must also give reasons for a conclusion of lack of correlation for an in vitro or in vivo animal model
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example. A rigorous or an invariable exact correlation is not required, as stated in Cross v. Iizuka, 753 F.2d 1040, 1050, 224 USPQ 739, 747 (Fed. Cir. 1985):
[B]ased upon the relevant evidence as a whole, there is a reasonable correlation between the disclosed in vitro utility and an in vivo activity, and therefore a rigorous correlation is not necessary where the disclosure of pharmacological activity is reasonable based upon the probative evidence. (Citations omitted.)
III. WORKING EXAMPLES AND A CLAIMED GENUS
For a claimed genus, representative examples together with a statement applicable to the genus as a whole will ordinarily be sufficient if one skilled in the art (in view of level of skill, state of the art and the information in the specification) would expect the claimed genus could be used in that manner without undue experimentation. Proof of enablement will be required for other members of the claimed genus only where adequate reasons are advanced by the examiner to establish that a person skilled in the art could not use the genus as a whole without undue experimentation.
2164.03 Relationship of Predictability of the Art and the Enablement Requirement [R-08.2012]
The amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). The “amount of guidance or direction” refers to that information in the application, as originally filed, that teaches exactly how to make or use the invention. The more that is known in the prior art about the nature of the invention, how to make, and how to use the invention, and the more predictable the art is, the less information needs to be explicitly stated in the specification. In contrast, if little is known in the prior art about the nature of the invention and the art is unpredictable, the
specification would need more detail as to how to make and use the invention in order to be enabling. See, e.g., Chiron Corp. v. Genentech Inc., 363 F.3d 1247, 1254, 70 USPQ2d 1321, 1326 (Fed. Cir. 2004) (“Nascent technology, however, must be enabled with a ‘specific and useful teaching.’ The law requires an enabling disclosure for nascent technology because a person of ordinary skill in the art has little or no knowledge independent from the patentee’s instruction. Thus, the public’s end of the bargain struck by the patent system is a full enabling disclosure of the claimed technology.” (citations omitted)).
The “predictability or lack thereof” in the art refers to the ability of one skilled in the art to extrapolate the disclosed or known results to the claimed invention. If one skilled in the art can readily anticipate the effect of a change within the subject matter to which the claimed invention pertains, then there is predictability in the art. On the other hand, if one skilled in the art cannot readily anticipate the effect of a change within the subject matter to which that claimed invention pertains, then there is lack of predictability in the art. Accordingly, what is known in the art provides evidence as to the question of predictability. In particular, the court in In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971), stated:
[I]n the field of chemistry generally, there may be times when the well-known unpredictability of chemical reactions will alone be enough to create a reasonable doubt as to the accuracy of a particular broad statement put forward as enabling support for a claim. This will especially be the case where the statement is, on its face, contrary to generally accepted scientific principles. Most often, additional factors, such as the teachings in pertinent references, will be available to substantiate any doubts that the asserted scope of objective enablement is in fact commensurate with the scope of protection sought and to support any demands based thereon for proof. [Footnote omitted.]
The scope of the required enablement varies inversely with the degree of predictability involved, but even in unpredictable arts, a disclosure of every
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operable species is not required. A single embodiment may provide broad enablement in cases involving predictable factors, such as mechanical or electrical elements. In re Vickers, 141 F.2d 522, 526-27, 61 USPQ 122, 127 (CCPA 1944); In re Cook, 439 F.2d 730, 734, 169 USPQ 298, 301 (CCPA 1971). However, in applications directed to inventions in arts where the results are unpredictable, the disclosure of a single species usually does not provide an adequate basis to support generic claims. In re Soll, 97 F.2d 623, 624, 38 USPQ 189, 191
(CCPA 1938). In cases involving unpredictable factors, such as most chemical reactions and physiological activity, more may be required. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) (contrasting mechanical and electrical elements with chemical reactions and physiological activity). See also In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Vaeck, 947 F.2d 488, 496, 20 USPQ2d 1438, 1445 (Fed. Cir. 1991). This is because it is not reasonably predictable from the disclosure of one species, what other species will work.
2164.04 Burden on the Examiner Under the Enablement Requirement [R-11.2013]
Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims. For terms that are not well-known in the art, or for terms that could have more than one meaning, it is necessary that the examiner select the definition that he/she intends to use when examining the application, based on his/her understanding of what applicant intends it to mean, and explicitly set forth the meaning of the term and the scope of the claim when writing an Office action. See Genentech v. Wellcome Foundation, 29 F.3d 1555, 1563-64, 31 USPQ2d 1161, 1167-68 (Fed. Cir. 1994).
In order to make a rejection, the examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner must provide a reasonable explanation as to why the scope of protection provided by a claim is not adequately enabled by the disclosure). A specification disclosure which contains a teaching of the manner and process of making and using an
invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as being in compliance with the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, unless there is a reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support. Assuming that sufficient reason for such doubt exists, a rejection for failure to teach how to make and/or use will be proper on that basis. In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971). As stated by the court, “it is incumbent upon the Patent Office, whenever a rejection on this basis is made, to explain why it doubts the truth or accuracy of any statement in a supporting disclosure and to back up assertions of its own with acceptable evidence or reasoning which is inconsistent with the contested statement. Otherwise, there would be no need for the applicant to go to the trouble and expense of supporting his presumptively accurate disclosure.” 439 F.2d at 224, 169 USPQ at 370 (emphasis in original).
According to In re Bowen, 492 F.2d 859, 862-63, 181 USPQ 48, 51 (CCPA 1974), the minimal requirement is for the examiner to give reasons explaining the uncertainty of the enablement. This standard is applicable even when there is no evidence in the record of operability without undue experimentation beyond the disclosed embodiments. See also In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995) (citing In re Bundy, 642 F.2d 430, 433, 209 USPQ 48, 51 (CCPA 1981)) (discussed in MPEP § 2164.07 regarding the relationship of the enablement requirement to the utility requirement of 35 U.S.C. 101).
While the analysis and conclusion of a lack of enablement are based on the factors discussed in MPEP § 2164.01(a) and the evidence as a whole, it is not necessary to discuss each factor in the enablement rejection. Instead, the explanation of the rejection should focus on those factors, reasons, and evidence that lead the examiner to conclude e.g., that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to one skilled in the art is not
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commensurate with the scope of protection sought by the claims. This can be done by making specific findings of fact, supported by the evidence, and then drawing conclusions based on these findings of fact. For example, doubt may arise about enablement because information is missing about one or more essential parts or relationships between parts which one skilled in the art could not develop without undue experimentation. In such a case, the examiner should specifically identify what information is missing and why one skilled in the art could not supply the information without undue experimentation. See MPEP § 2164.06(a). References should be supplied if possible to support a prima facie case of lack of enablement, but are not always required. In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971). However, specific technical reasons are always required.
In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal. Providing the best rejection in the first Office action will also allow the second Office action to be made final should applicant fail to provide appropriate convincing arguments and/or evidence. Citing new references and/or expanding arguments in a second Office action could prevent that Office action from being made final. The principles of compact prosecution also dictate that if an enablement rejection is appropriate and the examiner recognizes limitations that would render the claims enabled, the examiner should note such limitations to applicant as early in the prosecution as possible.
In other words, the examiner should always look for enabled, allowable subject matter and communicate to applicant what that subject matter is at the earliest point possible in the prosecution of the application.
2164.05 Determination of Enablement Based on Evidence as a Whole [R-08.2012]
Once the examiner has weighed all the evidence and established a reasonable basis to question the enablement provided for the claimed invention, the
burden falls on applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would be able to make and use the claimed invention using the application as a guide. In re Brandstadter, 484 F.2d 1395, 1406-07, 179 USPQ 286, 294 (CCPA 1973). The evidence provided by applicant need not be conclusive but merely convincing to one skilled in the art.
Applicant may submit factual affidavits under 37 CFR 1.132 or cite references to show what one skilled in the art knew at the time of filing the application. A declaration or affidavit is, itself, evidence that must be considered. The weight to give a declaration or affidavit will depend upon the amount of factual evidence the declaration or affidavit contains to support the conclusion of enablement. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991) (“expert’s opinion on the ultimate legal conclusion must be supported by something more than a conclusory statement”); cf. In re Alton, 76 F.3d 1168, 1174, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996) (declarations relating to the written description requirement should have been considered).
Applicant should be encouraged to provide any evidence to demonstrate that the disclosure enables the claimed invention. In chemical and biotechnical applications, evidence actually submitted to the FDA to obtain approval for clinical trials may be submitted. However, considerations made by the FDA for approving clinical trials are different from those made by the PTO in determining whether a claim is enabled. See Scott v. Finney, 34 F.3d 1058, 1063, 32 USPQ2d 1115, 1120 (Fed. Cir. 1994) (“Testing for full safety and effectiveness of a prosthetic device is more properly left to the [FDA].”). Once that evidence is submitted, it must be weighed with all other evidence according to the standards set forth above so as to reach a determination as to whether the disclosure enables the claimed invention.
To overcome a prima facie case of lack of enablement, applicant must demonstrate by argument and/or evidence that the disclosure, as filed, would have enabled the claimed invention for one skilled in the art at the time of filing. This does not preclude
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applicant from providing a declaration after the filing date which demonstrates that the claimed invention works. However, the examiner should carefully compare the steps, materials, and conditions used in the experiments of the declaration with those disclosed in the application to make sure that they are commensurate in scope; i.e., that the experiments used the guidance in the specification as filed and what was well known to one of skill in the art at the time of filing. Such a showing also must be commensurate with the scope of the claimed invention, i.e., must reasonably enable the full scope of the claimed invention.
The examiner must then weigh all the evidence before him or her, including the specification, any new evidence supplied by applicant, and any evidence and scientific reasoning previously presented in the rejection and then decide whether the claimed invention is enabled. The examiner should never make this determination based on personal opinion. The determination should always be based on the weight of all the evidence.
2164.05(a) Specification Must Be Enabling as of the Filing Date [R-08.2012]
Whether the specification would have been enabling as of the filing date involves consideration of the nature of the invention, the state of the prior art, and the level of skill in the art. The initial inquiry is into the nature of the invention, i.e., the subject matter to which the claimed invention pertains. The nature of the invention becomes the backdrop to determine the state of the art and the level of skill possessed by one skilled in the art.
The state of the prior art is what one skilled in the art would have known, at the time the application was filed, about the subject matter to which the claimed invention pertains. The relative skill of those in the art refers to the skill of those in the art in relation to the subject matter to which the claimed invention pertains at the time the application was filed. See MPEP § 2164.05(b).
The state of the prior art provides evidence for the degree of predictability in the art and is related to the amount of direction or guidance needed in the specification as filed to meet the enablement
requirement. The state of the prior art is also related to the need for working examples in the specification.
The state of the art for a given technology is not static in time. It is entirely possible that a disclosure which would not have been enabled if filed on January 2, 1990 might be enabled if the same disclosure had been filed on January 2, 1996. Therefore, the state of the prior art must be evaluated for each application based on its filing date.
35 U.S.C. 112 requires the specification to be enabling only to a person “skilled in the art to which it pertains, or with which it is most nearly connected.” In general, the pertinent art should be defined in terms of the problem to be solved rather than in terms of the technology area, industry, trade, etc. for which the invention is used.
The specification need not disclose what is well-known to those skilled in the art and preferably omits that which is well-known to those skilled and already available to the public. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991); Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987); and Lindemann Maschinenfabrik GMBH v. American
Hoist & Derrick Co., 730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984).
The state of the art existing at the filing date of the application is used to determine whether a particular disclosure is enabling as of the filing date. Chiron Corp. v. Genentech Inc., 363 F.3d 1247, 1254, 70 USPQ2d 1321, 1325-26 (Fed. Cir. 2004) (“a patent document cannot enable technology that arises after the date of application”). Publications dated after the filing date providing information publicly first disclosed after the filing date generally cannot be used to show what was known at the time of filing.
In re Gunn, 537 F.2d 1123, 1128, 190 USPQ 402,405-06 (CCPA 1976); In re Budnick, 537 F.2d 535, 538, 190 USPQ 422, 424 (CCPA 1976) (In general, if an applicant seeks to use a patent to prove the state of the art for the purpose of the enablement requirement, the patent must have an issue date earlier than the effective filing date of the application.). While a later dated publication cannot
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supplement an insufficient disclosure in a prior dated application to make it enabling, applicant can offer the testimony of an expert based on the publication as evidence of the level of skill in the art at the time the application was filed. Gould v. Quigg, 822 F.2d 1074, 1077, 3 USPQ2d 1302, 1304 (Fed. Cir. 1987).
In general, the examiner should not use post-filing date references to demonstrate that a patent is not enabled. Exceptions to this rule could occur if a later-dated reference provides evidence of what one skilled in the art would have known on or before the effective filing date of the patent application. In re Hogan, 559 F.2d 595, 605, 194 USPQ 527, 537 (CCPA 1977). If individuals of skill in the art state that a particular invention is not possible years after the filing date, that would be evidence that the disclosed invention was not possible at the time of filing. In In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513-14 (Fed. Cir. 1993) (an article published 5 years after the filing date of the application adequately supported the examiner’s position that the physiological activity of certain viruses was sufficiently unpredictable so that a person skilled in the art would not have believed that the success with one virus and one animal could be extrapolated successfully to all viruses with all living organisms. Claims not directed to the specific virus and the specific animal were held nonenabled).
2164.05(b) Specification Must Be Enabling to Persons Skilled in the Art [R-08.2012]
The relative skill of those in the art refers to the skill level of those in the art in the technological field to which the claimed invention pertains. Where different arts are involved in the invention, the specification is enabling if it enables persons skilled in each art to carry out the aspect of the invention applicable to their specialty. In re Naquin, 398 F.2d 863, 866, 158 USPQ 317, 319 (CCPA 1968).
When an invention, in its different aspects, involves distinct arts, the specification is enabling if it enables those skilled in each art, to carry out the aspect proper to their specialty. “If two distinct technologies are relevant to an invention, then the disclosure will be adequate if a person of ordinary skill in each of the two technologies could practice the invention from the disclosures.” Technicon Instruments
Corp. v. Alpkem Corp., 664 F. Supp. 1558, 1578, 2 USPQ2d 1729, 1742 (D. Ore. 1986), aff’d in part, vacated in part, rev’d in part, 837 F. 2d 1097 (Fed. Cir. 1987) (unpublished opinion), appeal after remand, 866 F. 2d 417, 9 USPQ 2d 1540 (Fed. Cir. 1989). In Ex parte Zechnall, 194 USPQ 461 (Bd. App. 1973), the Board stated “appellants’disclosure must be held sufficient if it would enable a person skilled in the electronic computer art, in cooperation with a person skilled in the fuel injection art, to make and use appellants’ invention.” 194 USPQ at 461.
2164.06 Quantity of Experimentation [R-08.2012]
The quantity of experimentation needed to be performed by one skilled in the art is only one factor involved in determining whether “undue experimentation” is required to make and use the invention. “[A]n extended period of experimentation may not be undue if the skilled artisan is given sufficient direction or guidance.” In re Colianni, 561 F.2d 220, 224, 195 USPQ 150, 153 (CCPA 1977).“ ‘The test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed.’” In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (citing In re Angstadt, 537 F.2d 489, 502-04, 190 USPQ 214, 217-19 (CCPA 1976)). Time and expense are merely factors in this consideration and are not the controlling factors. United States v. Telectronics Inc., 857 F.2d 778,
785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert. denied, 490 U.S. 1046 (1989).
In the chemical arts, the guidance and ease in carrying out an assay to achieve the claimed objectives may be an issue to be considered in determining the quantity of experimentation needed. For example, if a very difficult and time consuming assay is needed to identify a compound within the scope of a claim, then this great quantity of experimentation should be considered in the overall analysis. Time and difficulty of experiments are not determinative if they are merely routine. Quantity of examples is only one factor that must be considered before reaching the final conclusion that
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undue experimentation would be required. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
I. EXAMPLE OF REASONABLE EXPERIMENTATION
In United States v. Telectronics, Inc., 857 F.2d 778, 8 USPQ2d 1217 (Fed. Cir. 1988), cert. denied, 490 U.S. 1046 (1989), the court reversed the findings of the district court for lack of clear and convincing proof that undue experimentation was needed. The court ruled that since one embodiment (stainless steel electrodes) and the method to determine dose/response was set forth in the specification, the specification was enabling. The question of time and expense of such studies, approximately $50,000 and 6-12 months standing alone, failed to show undue experimentation.
II. EXAMPLE OF UNREASONABLE EXPERIMENTATION
In In re Ghiron, 442 F.2d 985, 991-92, 169 USPQ 723, 727-28 (CCPA 1971), functional “block diagrams” were insufficient to enable a person skilled in the art to practice the claimed invention with only a reasonable degree of experimentation because the claimed invention required a “modification to prior art overlap computers,” and because “many of the components which appellants illustrate as rectangles in their drawing necessarily are themselves complex assemblages . . . . It is common knowledge that many months or years elapse from the announcement of a new computer by a manufacturer before the first prototype is available. This does not bespeak of a routine operation but of extensive experimentation and development work. . . .”
2164.06(a) Examples of Enablement Issues-Missing Information [R-07.2015]
It is common that doubt arises about enablement because information is missing about one or more essential claim elements or relationships between elements which one skilled in the art could not develop without undue experimentation. In such a case, the examiner should specifically identify what information is missing and why the missing information is needed to provide enablement.
I. ELECTRICAL AND MECHANICAL DEVICES OR PROCESSES
Enablement serves the dual function of ensuring adequate disclosure of the claimed invention and of preventing claims broader than the disclosed invention. Broad claim language is used at the peril of losing any claim that cannot be enabled across its full scope. For example, in MagSil Corp. v. Hitachi Global Storage Technologies, Inc., 103 USPQ2d 1769 (Fed. Cir. 2012), the claim recited a change in resistance by at least 10% at room temperature, but the specification contained no showing that the knowledge of a person of ordinary skill in the art at the time of filing would have been able to achieve resistive changes in values that greatly exceed 10% without undue experimentation (noting that it took nearly 12 years of experimentation to achieve modern values above 600%). See also Auto. Techs. Intl, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007) in which the claim limitation means responsive to the motion of said mass was construed to include both mechanical and electronic side impact sensors for performing the function of initiating an occupant protection apparatus. The specification did not disclose any details or circuitry for electronic side impact sensors, and thus, failed to apprise one of ordinary skill how to make and use the electronic sensor.
A disclosure of an electrical circuit apparatus, depicted in the drawings by block diagrams with functional labels, was held to be nonenabling in In re Gunn, 537 F.2d 1123, 1129, 190 USPQ 402, 406 (CCPA 1976). There was no indication in the specification as to whether the parts represented by boxes were “off the shelf” or must be specifically constructed or modified for applicant’s system. Also there were no details in the specification of how the parts should be interconnected, timed and controlled so as to obtain the specific operations desired by the applicant. In In re Donohue, 550 F.2d 1269, 193 USPQ 136 (CCPA 1977), the lack of enablement was caused by lack of information in the specification about a single block labelled “LOGIC” in the drawings. See also Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 57 USPQ2d 1293 (Fed. Cir. 2001) (Claims directed to a method of determining the location of a horizontal borehole in the earth failed to comply with
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enablement requirement of 35 U.S.C. 112 because certain computer programming details used to perform claimed method were not disclosed in the specification, and the record showed that a person of skill in art would not understand how to “compare” or “rescale” data as recited in the claims in order to perform the claimed method.).
In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA 1971), involved a method of facilitating transfers from one subset of program instructions to another which required modification of prior art “overlap mode” computers. The Board rejected the claims on the basis, inter alia, that the disclosure was insufficient to satisfy the requirements of 35 U.S.C. 112, first paragraph and was affirmed. The Board focused on the fact that the drawings were “block diagrams, i.e., a group of rectangles representing the elements of the system, functionally labelled and interconnected by lines.” 442 F.2d at 991, 169 USPQ at 727. The specification did not particularly identify each of the elements represented by the blocks or the relationship therebetween, nor did it specify particular apparatus intended to carry out each function. The Board further questioned whether the selection and assembly of the required components could be carried out routinely by persons of ordinary skill in the art.
An adequate disclosure of a device may require details of how complex components are constructed and perform the desired function. The claim before the court in In re Scarbrough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974) was directed to a system which comprised several component parts (e.g., computer, timing and control mechanism, A/D converter, etc.) only by generic name and overall ultimate function. The court concluded that there was not an enabling disclosure because the specification did not describe how “complex elements known to perform broadly recited functions in different systems would be adaptable for use in Appellant’s particular system with only a reasonable amount of experimentation” and that “an unreasonable amount of work would be required to arrive at the detailed relationships appellant says that he has solved.” 500 F.2d at 566, 182 USPQ at 302.
II. MICROORGANISMS
Patent applications involving living biological products, such as microorganisms, as critical elements in the process of making the invention, present a unique question with regard to availability. The issue was raised in a case involving claims drawn to a fermentative method of producing two novel antibiotics using a specific microorganism and claims to the novel antibiotics so produced. In re Argoudelis, 434 F.2d 1390, 168 USPQ 99 (CCPA 1970). As stated by the court, “a unique aspect of using microorganisms as starting materials is that a sufficient description of how to obtain the microorganism from nature cannot be given.” 434 F.2d at 1392, 168 USPQ at 102. It was determined by the court that availability of the biological product via a public depository provided an acceptable means of meeting the written description and the enablement requirements of 35 U.S.C. 112, first paragraph.
To satisfy the enablement requirement a deposit must be made “prior to issue” but need not be made prior to filing the application. In re Lundak, 773 F.2d 1216, 1223, 227 USPQ 90, 95 (Fed. Cir. 1985).
The availability requirement of enablement must also be considered in light of the scope or breadth of the claim limitations. The Board of Appeals considered this issue in an application which claimed a fermentative method using microorganisms belonging to a species. Applicants had identified three novel individual strains of microorganisms that were related in such a way as to establish a new species of microorganism, a species being a broader classification than a strain. The three specific strains had been appropriately deposited. The issue focused on whether the specification enabled one skilled in the art to make any member of the species other than the three strains which had been deposited. The Board concluded that the verbal description of the species was inadequate to allow a skilled artisan to make any and all members of the claimed species. Ex parte Jackson, 217 USPQ 804, 806 (Bd. App.
1982).
See MPEP § 2402 - § 2411.03 for a detailed discussion of the deposit rules. See MPEP § 2411.01
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for rejections under 35 U.S.C. 112 based on deposit issues.
III. DRUG CASES
See MPEP § 2107 - § 2107.03 for a discussion of the utility requirement under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, in drug cases.
2164.06(b) Examples of Enablement Issues — Chemical Cases [R-08.2012]
The following summaries should not be relied on to support a case of lack of enablement without carefully reading the case.
I. SEVERAL DECISIONS RULING THAT THE DISCLOSURE WAS NONENABLING
(A) In Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 52 USPQ2d 1129 (Fed. Cir. 1999), the court held that claims in two patents directed to genetic antisense technology (which aims to control gene expression in a particular organism), were invalid because the breadth of enablement was not commensurate in scope with the claims. Both specifications disclosed applying antisense technology in regulating three genes in E. coli. Despite the limited disclosures, the specifications asserted that the “[t]he practices of this invention are generally applicable with respect to any organism containing genetic material which is capable of being expressed … such as bacteria, yeast, and other cellular organisms.” The claims of the patents encompassed application of antisense methodology in a broad range of organisms. Ultimately, the court relied on the fact that (1) the amount of direction presented and the number of working examples provided in the specification were very narrow compared to the wide breadth of the claims at issue, (2) antisense gene technology was highly unpredictable, and (3) the amount of experimentation required to adapt the practice of creating antisense DNA from E. coli to other types of cells was quite high, especially in light of the record, which included notable examples of the inventor’s own failures to control the expression of other genes in E. coli and other types of cells. Thus, the teachings set forth in the specification provided no more than a “plan” or
“invitation” for those of skill in the art to experiment using the technology in other types of cells.
(B) In In re Wright, 999 F.2d 1557, 27 USPQ2d 1510 (Fed. Cir. 1993), the 1983 application disclosed a vaccine against the RNA tumor virus known as Prague Avian Sarcoma Virus, a member of the Rous Associated Virus family. Using functional language, Wright claimed a vaccine “comprising an immunologically effective amount” of a viral expression product. Id. at 1559, 27 USPQ2d at 1511. Rejected claims covered all RNA viruses as well as avian RNA viruses. The examiner provided a teaching that in 1988, a vaccine for another retrovirus (i.e., HIV) remained an intractable problem. This evidence, along with evidence that the RNA viruses were a diverse and complicated genus, convinced the Federal Circuit that the invention was not enabled for either all retroviruses or even for avian retroviruses.
(C) In In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993), a 1985 application functionally claimed a method of producing protein in plant cells by expressing a foreign gene. The court stated: “[n]aturally, the specification must teach those of skill in the art ‘how to make and use the invention as broadly as it is claimed.’” Id. at 1050, 29 USPQ2d at 2013. Although protein expression in dicotyledonous plant cells was enabled, the claims covered any plant cell. The examiner provided evidence that even as late as 1987, use of the claimed method in monocot plant cells was not enabled. Id. at 1051, 29 USPQ2d at 2014.
(D) In In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991), the court found that several claims were not supported by an enabling disclosure “[t]aking into account the relatively incomplete understanding of the biology of cyanobacteria as of appellants’filing date, as well as the limited disclosure by appellants of the particular cyanobacterial genera operative in the claimed invention....” The claims at issue were not limited to any particular genus or species of cyanobacteria and the specification mentioned nine genera and the working examples employed one species of cyanobacteria.
(E) In In re Colianni, 561 F.2d 220, 222-23, 195 USPQ 150, 152 (CCPA 1977), the court affirmed a rejection under 35 U.S.C. 112, first paragraph, because the specification, which was
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directed to a method of mending a fractured bone by applying “sufficient” ultrasonic energy to the bone, did not define a “sufficient” dosage or teach one of ordinary skill how to select the appropriate intensity, frequency, or duration of the ultrasonic energy.
II. SEVERAL DECISIONS RULING THAT THE DISCLOSURE WAS ENABLING
(A) In PPG Indus. v. Guardian Indus., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996), the court ruled that even though there was a software error in calculating the ultraviolet transmittance data for examples in the specification making it appear that the production of a cerium oxide-free glass that satisfied the transmittance limitation would be difficult, the specification indicated that such glass could be made. The specification was found to indicate how to minimize the cerium content while maintaining low ultraviolet transmittance.
(B) In In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988), the court reversed the rejection for lack of enablement under 35 U.S.C. 112, first paragraph, concluding that undue experimentation would not be required to practice the invention. The nature of monoclonal antibody technology is such that experiments first involve the entire attempt to make monoclonal hybridomas to determine which ones secrete antibody with the desired characteristics. The court found that the specification provided considerable direction and guidance on how to practice the claimed invention and presented working examples, that all of the methods needed to practice the invention were well known, and that there was a high level of skill in the art at the time the application was filed. Furthermore, the applicant carried out the entire procedure for making a monoclonal antibody against HBsAg three times and each time was successful in producing at least one antibody which fell within the scope of the claims.
(C) In In re Bundy, 642 F.2d 430, 434, 209 USPQ 48, 51-52 (CCPA 1981), the court ruled that appellant’s disclosure was sufficient to enable one skilled in the art to use the claimed analogs of naturally occurring prostaglandins even though the specification lacked any examples of specific dosages, because the specification taught that the novel prostaglandins had certain pharmacological
properties and possessed activity similar to known E-type prostaglandins.
2164.06(c) Examples of Enablement Issues – Computer Programming Cases [R-07.2015]
To establish a reasonable basis for questioning the adequacy of a disclosure, the examiner must present a factual analysis of a disclosure to show that a person skilled in the art would not be able to make and use the claimed invention without resorting to undue experimentation.
In computer applications, it is not unusual for the claimed invention to involve two areas of prior art or more than one technology, e.g., an appropriately programmed computer and an area of application of said computer. White Consol. Indus. v. Vega Servo-Control, Inc., 214 USPQ 796, 821 (S.D.Mich. 1982). In regard to the “skilled in the art” standard, in cases involving both the art of computer programming, and another technology, the examiner must recognize that the knowledge of persons skilled in both technologies is the appropriate criteria for determining sufficiency. See In re Naquin, 398 F.2d 863, 158 USPQ 317 (CCPA 1968); In re Brown, 477 F.2d 946, 177 USPQ 691 (CCPA 1973); White Consol. Indus., 214 USPQ at 822, aff’d on related grounds, 713 F.2d 788, 218 USPQ 961 (Fed. Cir. 1983).
In a typical computer application, system components are often represented in a “block diagram” format, i.e., a group of hollow rectangles representing the elements of the system, functionally labeled, and interconnected by lines. Such block diagram computer cases may be categorized into (A) systems that include but are more comprehensive than a computer and (B) systems wherein the block elements are totally within the confines of a computer. For instances where a computer invention is claimed using functional language, that is not limited to a specific structure, see MPEP § 2161.01.
I. BLOCK ELEMENTS MORE COMPREHENSIVE THAN A COMPUTER
The first category of such block diagram cases involves systems which include a computer as well as other system hardware and/or software
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components. In order to meet his or her burden of establishing a reasonable basis for questioning the adequacy of such disclosure, the examiner should initiate a factual analysis of the system by focusing on each of the individual block element components. More specifically, such an inquiry should focus on the diverse functions attributed to each block element as well as the teachings in the specification as to how such a component could be implemented. If based on such an analysis, the examiner can reasonably contend that more than routine experimentation would be required by one of ordinary skill in the art to implement such a component or components, then enablement of the component or components should specifically be challenged by the examiner as part of a 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph rejection. Additionally, the examiner should determine whether certain of the hardware or software components depicted as block elements are themselves complex assemblages which have widely differing characteristics and which must be precisely coordinated with other complex assemblages. Under such circumstances, a reasonable basis may exist for challenging such a functional block diagram form of disclosure. See In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA 1971) and In re Brown, supra. Even if the applicant has cited prior art patents or publications to demonstrate that particular block diagram hardware or software components are old, it should not always be considered as self-evident how such components are to be interconnected to function in a disclosed complex manner. See In re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 301 (CCPA 1974) and In re Forman, 463 F.2d 1125, 1129, 175 USPQ 12, 16 (CCPA 1972).
For example, where the specification provides in a block diagram disclosure of a complex system that includes a microprocessor and other system components controlled by the microprocessor, a mere reference to a commercially available microprocessor, without any description of the precise operations to be performed by the microprocessor, fails to disclose how such a microprocessor would be properly programmed to (1) either perform any required calculations or (2) coordinate the other system components in the proper timed sequence to perform the functions disclosed and claimed. If a particular program is disclosed in
such a system, the program should be carefully reviewed to ensure that its scope is commensurate with the scope of the functions attributed to such a program in the claims. In re Brown, 477 F.2d at 951, 177 USPQ at 695. If (1) the disclosure fails to disclose any program and (2) more than routine experimentation would be required of one skilled in the art to generate such a program, the examiner clearly would have a reasonable basis for challenging the sufficiency of such a disclosure. The amount of experimentation that is considered routine will vary depending on the facts and circumstances of individual cases and should be reviewed on a case-by-case basis. No exact numerical standard has been fixed by the courts, but the “amount of required experimentation must, however, be reasonable.” White Consol. Indus., 713 F.2d at 791, 218 USPQ
at 963. One court apparently found that the amount of experimentation involved was reasonable where a skilled programmer was able to write a general computer program, implementing an embodiment form, within 4 hours. Hirschfield v. Banner, 462 F. Supp. 135, 142, 200 USPQ 276, 279 (D.D.C. 1978), aff’d, 615 F.2d 1368 (D.C. Cir. 1986), cert. denied, 450 U.S. 994 (1981). Another court found that, where the required period of experimentation for skilled programmers to develop a particular program would run to 1 to 2 man years, this would be “a clearly unreasonable requirement” (White Consol. Indus., 713 F.2d at 791, 218 USPQ at 963).
II. BLOCK ELEMENTS WITHIN A COMPUTER
The second category of block diagram cases occurs most frequently in pure data processing applications where the combination of block elements is totally within the confines of a computer, where there is no interfacing with external apparatus other than normal input/output devices. In some instances, it has been found that particular kinds of block diagram disclosures were sufficient to meet the enabling requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. See In re Knowlton, 481 F.2d 1357, 178 USPQ 486 (CCPA 1973), In re Comstock, 481 F.2d 905, 178 USPQ 616 (CCPA 1973). The Comstock and Knowlton decisions turned on the appellants’disclosure of (1) a reference to and reliance on an identified prior art computer system and (2) an operative computer program for the referenced prior art computer system. In
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Knowlton, the disclosure was presented in such a detailed fashion that the individual program's steps were specifically interrelated with the operative structural elements in the referenced prior art computer system. The court in Knowlton indicated that the disclosure did not merely consist of a cursory explanation of flow diagrams or a bare group of program listings together with a reference to a proprietary computer in which they might be run. The disclosure was characterized as going into considerable detail in explaining the interrelationships between the disclosed hardware and software elements. Under such circumstances, the court considered the disclosure to be concise as well as full, clear, and exact to a sufficient degree to satisfy the literal language of 35 U.S.C. 112, first paragraph. It must be emphasized that because of the significance of the program listing and the reference to and reliance on an identified prior art computer system, absent either of these items, a block element disclosure within the confines of a computer should be scrutinized in precisely the same manner as the first category of block diagram cases discussed above.
Regardless of whether a disclosure involves block elements more comprehensive than a computer or block elements totally within the confines of a computer, USPTO personnel, when analyzing method claims, must recognize that the specification must be adequate to teach how to practice the claimed method. If such practice requires a particular apparatus, then the application must provide a sufficient disclosure of that apparatus if such is not already available. See In re Ghiron, 442 F.2d 985, 991, 169 USPQ 723, 727 (CCPA 1971) and In re Gunn, 537 F.2d 1123, 1128, 190 USPQ 402, 406 (CCPA 1976). When USPTO personnel question the adequacy of computer system or computer programming disclosures, the reasons for finding the specification to be nonenabling should be supported by the record as a whole. In this regard, it is also essential for USPTO personnel to reasonably challenge evidence submitted by the applicant. For example, in In re Naquin, supra, an affiant’s statement that the average computer programmer was familiar with the subroutine necessary for performing the claimed process, was held to be a statement of fact as it was unchallenged by USPTO personnel. In other words, unless USPTO
personnel present a reasonable basis for challenging the disclosure in view of the record as a whole, a 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph rejection in a computer system or computer programming application may not be sustained on appeal. See In re Naquin, supra, and In re Morehouse, 545 F.2d 162, 165-66, 192 USPQ 29, 32 (CCPA 1976).
While no specific universally applicable rule exists for recognizing an insufficiently disclosed application involving computer programs, an examining guideline to generally follow is to challenge the sufficiency of such disclosures which fail to include either the programmed steps, algorithms or procedures that the computer performs to accomplish the claimed function. These can be described in any way that would be understood by one of ordinary skill in the art, such as with a reasonably detailed flowchart which delineates the sequence of operations the program must perform. In programming applications where the software disclosure only includes a flowchart, as the complexity of functions and the generality of the individual components of the flowchart increase, the basis for challenging the sufficiency of such a flowchart becomes more reasonable because the likelihood of more than routine experimentation being required to generate a working program from such a flowchart also increases.
As stated earlier, once USPTO personnel have advanced a reasonable basis or presented evidence to question the adequacy of a computer system or computer programming disclosure, the applicant must show that his or her specification would enable one of ordinary skill in the art to make and use the claimed invention without resorting to undue experimentation. In most cases, efforts to meet this burden involve submitting affidavits, referencing prior art patents or technical publications, presenting arguments of counsel, or combinations of these approaches.
III. AFFIDAVIT PRACTICE (37 CFR 1.132)
In computer cases, affidavits must be critically analyzed. Affidavit practice at the outset usually involves analyzing the skill level and/or qualifications of the affiant, which should be of the
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person of ordinary skill in the art. When an affiant’s skill level is higher than that required by the person of ordinary skill in the art for a particular application, an examiner may challenge the affidavit as insufficient should the affiant not submit evidence demonstrating the amount of experimentation required by a person of ordinary skill in the art to implement the invention. An affiant having a skill level or qualifications above that of the person of ordinary skill in the art would require less experimentation to implement the claimed invention than that for the person of ordinary skill. Similarly, an affiant having a skill level or qualifications below that of the person of ordinary skill in the art would require more experimentation to implement the claimed invention than that for the person of ordinary skill in the art. In either situation, the standard of the person of ordinary skill in the art would not have been met.
In computer systems or programming cases, the problems with a given affidavit, which relate to the sufficiency of disclosure issue, generally involve affiants submitting few facts to support their conclusions or opinions. Some affidavits may go so far as to present conclusions on the ultimate legal question of sufficiency. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973), illustrates the extent of the inquiry into the factual basis underlying an affiant’s conclusions or opinions. In
Brandstadter, the invention concerned a stored program controller (computer) programmed to control the storing, retrieving, and forwarding of messages in a communications system. The disclosure consisted of broadly defined block diagrams of the structure of the invention and no flowcharts or program listings of the programs of the controller. The court quoted extensively from the examiner’s Office actions and examiner’s answer in its opinion where it was apparent that the examiner consistently argued that the disclosure was merely a broad system diagram in the form of labeled block diagrams along with statements of a myriad of desired results. Various affidavits were presented in which the affiants stated that all or some of the system circuit elements in the block diagrams were either well-known in the art or “could be constructed” by the skilled design engineer, that the controller was “capable of being programmed” to perform the stated functions or results desired, and
that the person having ordinary skill in the art “could design or construct or was able to program” the system. The court did consider the affiants’ statements as being some evidence on the ultimate legal question of enablement but concluded that the statements failed in their purpose since they recited conclusions or opinions with few facts to support or buttress these conclusions. With reference to the lack of a disclosed computer program or even a flowchart of the program to control the message switching system, the record contained no evidence as to the number of programmers needed, the number of man-hours and the level of skill of the programmers to produce the program required to practice the invention.
Factual evidence directed to the amount of time and effort and level of knowledge required for the practice of the invention from the disclosure, and knowledge in the art can be expected to rebut a prima facie case of nonenablement, but not opinion evidence directed to the ultimate legal question of enablement. See Hirschfield, 462 F. Supp. at 143, 200 USPQ at 281. Where an affidavit shows that an inventor described the problem to be solved to an affiant, which then enabled the affiant to generate a computer program to solve the problem, such an affidavit will fail to demonstrate that the application alone would have taught a person of ordinary skill in the art how to make and use the claimed invention. See In re Brown, 477 F.2d at 951, 177 USPQ at 695. In Brown, the court indicated that it had not been factually established that the applicant had not conveyed to the affiant vital and additional information in their several meetings in addition to that set out in the application. For an affidavit to be relevant to the determination of enablement, it must be probative of the level of skill of the personal of ordinary skill in the art as of the time the applicant filed his application. See In re Gunn, 537 F.2d 1123, 1128, 190 USPQ 402, 406 (CCPA 1976). In that case, each of the affiants stated what was known at the time he executed the affidavit, and not what was known at the time the applicant filed his application.
IV. REFERENCING PRIOR ART DOCUMENTS
The commercial availability of an identified prior art computer system is very pertinent to the issue of enablement. But in some cases, this approach may
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not be sufficient to meet the applicant’s burden. Merely citing excerpts from technical publications in an affidavit in order to satisfy the enablement requirement is not sufficient if it is not made clear that a person skilled in the art would know which, or what parts, of the cited circuits could be used to construct the claimed device or how they could be interconnected to act in combination to produce the required results. See In re Forman, 463 F.2d 1125, 1129, 175 USPQ 12, 16 (CCPA 1972). This analysis would appear to be less critical where the circuits comprising applicant’s system are essentially standard components of an identified prior art computer system and a standard device attached thereto.
Prior art patents are often relied on by applicants to show the state of the art for purposes of enablement. However, these patents must have an issue date earlier than the effective filing date of the application under consideration. See In re Budnick, 537 F.2d 535, 538, 190 USPQ 422, 424 (CCPA 1976). An analogous point was made in In re Gunn, supra, where the court indicated that patents issued after the filing date of the application under examination are not evidence of subject matter known to any person skilled in the art since their subject matter may have been known only to the patentees and the Patent and Trademark Office.
Merely citing prior art patents to demonstrate that the challenged components are old may not be sufficient proof since, even if each of the enumerated devices or labelled blocks in a block diagram disclosure were old, per se, this would not make it self-evident how each would be interconnected to function in a disclosed complex combination manner. Therefore, the specification in effect must set forth the integration of the prior art; otherwise, it is likely that undue experimentation, or more than routine experimentation would be required to implement the claimed invention. See In re Scarbrough, 500 F.2d 560, 565, 182 USPQ 298, 301 (CCPA 1974). The court also noted that any cited patents which are used by the applicant to demonstrate that particular box diagram hardware or software components are old must be analyzed as to whether such patents are germane to the instant invention and as to whether such patents provide better detail of disclosure as to such components than an applicant’s own disclosure.
Also, any patent or publication cited to provide evidence that a particular programming technique is well-known in the programming art does not demonstrate that one of ordinary skill in the art could make and use correspondingly disclosed programming techniques unless both programming techniques are of approximately the same degree of complexity. See In re Knowlton, 500 F.2d 566, 572, 183 USPQ 33, 37 (CCPA 1974).
V. ARGUMENTS OF COUNSEL
Arguments of counsel may be effective in establishing that an examiner has not properly met his or her burden or has otherwise erred in his or her position. However, it must be emphasized that arguments of counsel alone cannot take the place of evidence in the record once an examiner has advanced a reasonable basis for questioning the disclosure. See In re Budnick, 537 F.2d at 538, 190 USPQ at 424; In re Schulze, 346 F.2d 600, 145 USPQ 716 (CCPA 1965); In re Cole, 326 F.2d 769, 140 USPQ 230 (CCPA 1964). For example, in a case where the record consisted substantially of arguments and opinions of applicant’s attorney, the court indicated that factual affidavits could have provided important evidence on the issue of enablement. See In re Knowlton, 500 F.2d at 572, 183 USPQ at 37; In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).
2164.07 Relationship of Enablement Requirement to Utility Requirement of 35 U.S.C. 101 [R-11.2013]
The requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph as to how to use the invention is different from the utility requirement of 35 U.S.C. 101. The requirement of 35 U.S.C. 101 is that some specific, substantial, and credible use be set forth for the invention. On the other hand, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph requires an indication of how the use (required by 35 U.S.C. 101) can be carried out, i.e., how the invention can be used.
If an applicant has disclosed a specific and substantial utility for an invention and provided a credible basis supporting that utility, that fact alone does not provide a basis for concluding that the
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claims comply with all the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. For example, if an applicant has claimed a process of treating a certain disease condition with a certain compound and provided a credible basis for asserting that the compound is useful in that regard, but to actually practice the invention as claimed a person skilled in the relevant art would have to engage in an undue amount of experimentation, the claim may be defective under 35 U.S.C. 112, but not 35 U.S.C. 101. To avoid confusion during examination, any rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, based on grounds other than “lack of utility” should be imposed separately from any rejection imposed due to “lack of utility” under 35 U.S.C. 101 and 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
I. WHEN UTILITY REQUIREMENT IS NOT SATISFIED
A. Not Useful or Operative
If a claim fails to meet the utility requirement of 35 U.S.C. 101 because it is shown to be nonuseful or inoperative, then it necessarily fails to meet the how-to-use aspect of the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. As noted in In re Fouche, 439 F.2d 1237, 169 USPQ 429 (CCPA 1971), if “compositions are in fact useless, appellant’s specification cannot have taught how to use them.” 439 F.2d at 1243, 169 USPQ at 434. The examiner should make both rejections (i.e., a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph and a rejection under 35 U.S.C. 101) where the subject matter of a claim has been shown to be nonuseful or inoperative.
The 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection should indicate that because the invention as claimed does not have utility, a person skilled in the art would not be able to use the invention as claimed, and as such, the claim is defective under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. A 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection should not be imposed or maintained unless an appropriate basis exists for imposing a rejection under 35 U.S.C. 101. In other words, Office
personnel should not impose a 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection grounded on a “lack of utility” basis unless a 35 U.S.C. 101 rejection is proper. In particular, the factual showing needed to impose a rejection under 35 U.S.C. 101 must be provided if a 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection is to be imposed on “lack of utility” grounds. See MPEP § 2107 - § 2107.03 for a more detailed discussion of the utility requirements of 35 U.S.C. 101 and 35 U.S.C. 112(a) or pre-AIA 112, first paragraph.
B. Burden on the Examiner
When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the burden is on the examiner to provide a reasonable basis to support this conclusion. Rejections based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, and 35 U.S.C. 101 should be made.
Examiner Has Initial Burden To Show That One of Ordinary Skill in the Art Would Reasonably Doubt the Asserted Utility
The examiner has the initial burden of challenging an asserted utility. Only after the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince one of ordinary skill in the art of the invention’s asserted utility. In re Fisher, 421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir. 2005); In re Swartz, 232 F.3d 862, 863, 56 USPQ2d 1703, 1704 (Fed. Cir. 2000); In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995) (citing In re Bundy, 642 F.2d 430, 433, 209 USPQ 48, 51 (CCPA 1981)).
C. Rebuttal by Applicant
If a rejection under 35 U.S.C. 101 has been properly imposed, along with a corresponding rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, the burden shifts to the applicant to rebut the prima facie showing. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). There is no predetermined amount or
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character of evidence that must be provided by an applicant to support an asserted utility. Rather, the character and amount of evidence needed to support an asserted utility will vary depending on what is claimed (Ex parte Ferguson, 117 USPQ 229, 231 (Bd. App. 1957)), and whether the asserted utility appears to contravene established scientific principles and beliefs. In re Gazave, 379 F.2d 973, 978, 154 USPQ 92, 96 (CCPA 1967 ); In re Chilowsky, 229 F.2d 457, 462, 108 USPQ 321, 325 (CCPA 1956). Furthermore, the applicant does not have to provide evidence sufficient to establish that an asserted utility is true “beyond a reasonable doubt.” In re Irons, 340 F.2d 974, 978, 144 USPQ 351, 354 (CCPA 1965). Instead, evidence will be sufficient if, considered as a whole, it leads a person of ordinary skill in the art to conclude that the asserted utility is more likely than not true. See MPEP § 2107.02 for a more detailed discussion of consideration of a reply to a prima facie rejection for lack of utility and evaluation of evidence related to utility.
II. WHEN UTILITY REQUIREMENT IS SATISFIED
In some instances, the utility of the claimed invention will be provided, but the skilled artisan will not know how to effect that use. In such a case, no rejection will be made under 35 U.S.C. 101, but a rejection will be made under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. As pointed out in Mowry v. Whitney, 81 U.S. (14 Wall.) 620 (1871),
an invention may in fact have great utility, i.e., may be “a highly useful invention,” but the specification may still fail to “enable any person skilled in the art or science” to use the invention. 81 U.S. (14 Wall.) at 644.
2164.08 Enablement Commensurate in Scope With the Claims [R-11.2013]
All questions of enablement are evaluated against the claimed subject matter. The focus of the examination inquiry is whether everything within the scope of the claim is enabled. Accordingly, the first analytical step requires that the examiner determine exactly what subject matter is encompassed by the claims. See, e.g., AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d
1280, 1287 (Fed. Cir. 2003) (When a range is claimed, there must be reasonable enablement of the scope of the range. Here, the claims at issue encompassed amounts of silicon as high as 10% by weight, however the specification included statements clearly and strongly warning that a silicon content above 0.5% by weight in an aluminum coating causes coating problems. Such statements indicate that higher amounts will not work in the claimed invention.). The examiner should determine what each claim recites and what the subject matter is when the claim is considered as a whole, not when its parts are analyzed individually. No claim should be overlooked. With respect to dependent claims, 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph, should be followed. These paragraphs state “a claim in a dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers” and requires the dependent claim to further limit the subject matter claimed.
The Federal Circuit has repeatedly held that “the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’.” In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). Nevertheless, not everything necessary to practice the invention need be disclosed. In fact, what is well-known is best omitted. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991). All that is necessary is that one skilled in the art be able to practice the claimed invention, given the level of knowledge and skill in the art. Further the scope of enablement must only bear a “reasonable correlation” to the scope of the claims. See, e.g., In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).
With respect to the breadth of a claim, the relevant concern is whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claims. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003); In re Moore, 439 F.2d 1232, 1236, 169 USPQ 236, 239 (CCPA 1971). See also Plant Genetic Sys., N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1339, 65 USPQ2d 1452, 1455 (Fed. Cir. 2003) (alleged “pioneer status” of invention irrelevant to enablement determination).
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The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation.
An enabling disclosure may be set forth by specific example or broad terminology; the exact form of disclosure is not dispositive. In re Marzocchi, 439 F.2d 220, 223-24 169 USPQ 367, 370 (CCPA 1971). A rejection of a claim under 35 U.S.C. 112 as broader than the enabling disclosure is a 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, enablement rejection and not a 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, definiteness rejection. Claims are not rejected as broader than the enabling disclosure under 35 U.S.C. 112 for noninclusion of limitations dealing with factors which must be presumed to be within the level of ordinary skill in the art; the claims need not recite such factors where one of ordinary skill in the art to whom the specification and claims are directed would consider them obvious. In re Skrivan, 427 F.2d 801, 806, 166 USPQ 85, 88 (CCPA 1970). One does not look to the claims but to the specification to find out how to practice the claimed invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1558, 220 USPQ 303, 316-17 (Fed. Cir. 1983); In re Johnson, 558 F.2d 1008, 1017, 194 USPQ
187, 195 (CCPA 1977). In In re Goffe, 542 F.2d 564, 567, 191 USPQ 429, 431 (CCPA 1976), the court stated:
[T]o provide effective incentives, claims must adequately protect inventors. To demand that the first to disclose shall limit his claims to what he has found will work or to materials which meet the guidelines specified for “preferred” materials in a process such as the one herein involved would not serve the constitutional purpose of promoting progress in the useful arts.
When analyzing the enabled scope of a claim, the teachings of the specification must not be ignored because claims are to be given their broadest reasonable interpretation that is consistent with the specification. “That claims are interpreted in light of the specification does not mean that everything
in the specification must be read into the claims.” Raytheon Co. v. Roper Corp., 724 F.2d 951, 957,
220 USPQ 592, 597 (Fed. Cir. 1983), cert. denied, 469 U.S. 835 (1984).
The record must be clear so that the public will have notice as to the patentee’s scope of protection when the patent issues. If a reasonable interpretation of the claim is broader than the description in the specification, it is necessary for the examiner to make sure the full scope of the claim is enabled. Limitations and examples in the specification do not generally limit what is covered by the claims.
The breadth of the claims was a factor considered in Amgen v. Chugai Pharm. Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991), cert. denied, 502 U.S. 856 (1991). In Amgen, the patent claims were directed to a purified DNA sequence encoding polypeptide analogs of the protein erythropoietin (EPO). The court stated that:
Amgen has not enabled preparation of DNA sequences sufficient to support its all-encompassing claims. . . . [D]espite extensive statements in the specification concerning all the analogs of the EPO gene that can be made, there is little enabling disclosure of particular analogs and how to make them. Details for preparing only a few EPO analog genes are disclosed. . . . This disclosure might well justify a generic claim encompassing these and similar analogs, but it represents inadequate support for Amgen’s desire to claim all EPO gene analogs. There may be many other genetic sequences that code for EPO-type products. Amgen has told how to make and use only a few of them and is therefore not entitled to claim all of them.
927 F.2d at 1213-14, 18 USPQ2d at 1027. However, when claims are directed to any purified and isolated DNA sequence encoding a specifically named protein where the protein has a specifically identified sequence, a rejection of the claims as broader than the enabling disclosure is generally not appropriate because one skilled in the art could readily determine any one of the claimed embodiments.
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See also In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (The evidence did not show that a skilled artisan would have been able to carry out the steps required to practice the full scope of claims which encompass “any and all live, non-pathogenic vaccines, and processes for making such vaccines, which elicit immunoprotective activity in any animal toward any RNA virus.” (original emphasis)); In re Goodman, 11 F.3d 1046, 1052, 29 USPQ2d 2010, 2015 (Fed. Cir. 1993) (The specification did not enable the broad scope of the claims for producing mammalian peptides in plant cells because the specification contained only an example of producing gamma-interferon in a dicot species, and there was evidence that extensive experimentation would have been required for encoding mammalian peptide into a monocot plant at the time of filing); In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) (Where applicant claimed a composition suitable for the treatment of arthritis having a potency of “at least” a particular value, the court held that the claim was not commensurate in scope with the enabling disclosure because the disclosure was not enabling for compositions having a slightly higher potency. Simply because applicant was the first to achieve a composition beyond a particular threshold potency did not justify or support a claim that would dominate every composition that exceeded that threshold value.); In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (Given the relatively incomplete understanding in the biotechnological field involved, and the lack of a reasonable correlation between the narrow disclosure in the specification and the broad scope of protection sought in the claims, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for lack of enablement was appropriate.).
If a rejection is made based on the view that the enablement is not commensurate in scope with the claim, the examiner should identify the subject matter that is considered to be enabled.
2164.08(a) Single Means Claim [R-11.2013]
A single means claim, i.e., where a means recitation does not appear in combination with another recited element of means, is subject to an enablement rejection under 35 U.S.C. 112(a) or pre-AIA 35
U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) (A single means claim which covered every conceivable means for achieving the stated purpose was held nonenabling for the scope of the claim because the specification disclosed at most only those means known to the inventor.). When claims depend on a recited property, a fact situation comparable to Hyatt is possible, where the claim covers every conceivable structure (means) for achieving the stated property (result) while the specification discloses at most only those known to the inventor.
2164.08(b) Inoperative Subject Matter [R-08.2012]
The presence of inoperative embodiments within the scope of a claim does not necessarily render a claim nonenabled. The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art. Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1577, 224 USPQ 409, 414 (Fed. Cir. 1984) (prophetic examples do not make the disclosure nonenabling).
Although, typically, inoperative embodiments are excluded by language in a claim (e.g., preamble), the scope of the claim may still not be enabled where undue experimentation is involved in determining those embodiments that are operable. A disclosure of a large number of operable embodiments and the identification of a single inoperative embodiment did not render a claim broader than the enabled scope because undue experimentation was not involved in determining those embodiments that were operable. In re Angstadt, 537 F.2d 498, 502-503, 190 USPQ
214, 218 (CCPA 1976). However, claims reading on significant numbers of inoperative embodiments would render claims nonenabled when the specification does not clearly identify the operative embodiments and undue experimentation is involved in determining those that are operative. Atlas Powder Co. v. E.I. duPont de Nemours & Co., 750 F.2d 1569, 1577, 224 USPQ 409, 414 (Fed. Cir.
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1984); In re Cook, 439 F.2d 730, 735, 169 USPQ 298, 302 (CCPA 1971).
2164.08(c) Critical Feature Not Claimed [R-08.2012]
A feature which is taught as critical in a specification and is not recited in the claims should result in a rejection of such claim under the enablement provision section of 35 U.S.C. 112. See In re Mayhew, 527 F.2d 1229, 1233, 188 USPQ 356, 358 (CCPA 1976). In determining whether an unclaimed feature is critical, the entire disclosure must be considered. Features which are merely preferred are not to be considered critical. In re Goffe, 542 F.2d 564, 567, 191 USPQ 429, 431 (CCPA 1976).
Limiting an applicant to the preferred materials in the absence of limiting prior art would not serve the constitutional purpose of promoting the progress in the useful arts. Therefore, an enablement rejection based on the grounds that a disclosed critical limitation is missing from a claim should be made only when the language of the specification makes it clear that the limitation is critical for the invention to function as intended. Broad language in the disclosure, including the abstract, omitting an allegedly critical feature, tends to rebut the argument of criticality.
2165 The Best Mode Requirement [R-11.2013]
I. REQUIREMENT FOR A DISCLOSURE OF THE BEST MODE
A third requirement of 35 U.S.C. 112(a) (applicable to applications filed on or after September 16, 2012) is that:
The specification. . . shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The third requirement of the first paragraph of pre-AIA 35 U.S.C. 112 (applicable to applications filed before September 16, 2012) is that:
The specification. . . shall set forth the best mode contemplated by the inventor of carrying out his invention.
The best mode requirement is a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute. The requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves. In re Nelson, 280 F.2d 172, 126 USPQ 242 (CCPA 1960).
Determining compliance with the best mode requirement requires a two-prong inquiry. First, it must be determined whether, at the time the application was filed, the inventor possessed a best mode for practicing the invention. This is a subjective inquiry which focuses on the inventor’s state of mind at the time of filing. Second, if the inventor did possess a best mode, it must be determined whether the written description disclosed the best mode such that a person skilled in the art could practice it. This is an objective inquiry, focusing on the scope of the claimed invention and the level of skill in the art. Eli Lilly & Co. v. Barr Lab. Inc., 251 F.3d 955, 963, 58 USPQ2d 1865, 1874 (Fed. Cir. 2001). All applicants are required to disclose for the claimed subject matter the best mode contemplated by the inventor even if the inventor was not the discoverer of that mode. Benger Labs. Ltd. v. R.K. Laros Co., 209 F. Supp. 639, 135 USPQ 11 (E.D. Pa. 1962).
Failure to disclose the best mode need not rise to the level of active concealment or inequitable conduct in order to support a rejection. Where an inventor knows of a specific material or method that will make possible the successful reproduction of the claimed invention, but does not disclose it, the best mode requirement has not been satisfied. Union Carbide Corp. v. Borg-Warner, 550 F.2d 555, 193 USPQ 1 (6th Cir. 1977).
II. IMPACT OF FAILURE TO DISCLOSE THE BEST MODE PURSUANT TO THE AIA
Section 15 of the Leahy-Smith America Invents Act (AIA), Pub. L. 112-29, 125 Stat. 284 (September 16, 2011), did not eliminate the requirement in
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pre-AIA 35 U.S.C. 112 , first paragraph, for a disclosure of the best mode, (see 35 U.S.C. 112(a)) but effective September 16, 2011, it amended 35 U.S.C. 282 (the provision that sets forth defenses in a patent validity or infringement proceeding) to provide that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. As this change is applicable only in patent validity or infringement proceedings, it does not alter current patent examining practices as set forth above for evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112 .
Prior to September 16, 2011, for an invention claimed in a later-filed application to receive the benefit of the filing date of an earlier-filed application, 35 U.S.C. 119(e) and 120 required that the invention claimed in the later-filed application be disclosed in the earlier-filed application in the manner provided by pre-AIA 35 U.S.C. 112, first paragraph. Section 15 of the Leahy-Smith America Invents Act also amended 35 U.S.C. 119(e) and 120 to modify this requirement such that the disclosure in the earlier filed application must be made in the manner provided by pre-AIA 35 U.S.C. 112, first paragraph, "other than the requirement to disclose the best mode." This change should not noticeably impact patent examining procedure. MPEP § 201.08 provides that there is no need to determine whether the earlier-filed application contains a disclosure of the invention claimed in the later filed application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, unless the filing date of the earlier-filed application is actually necessary (e.g., to overcome a reference). Examiners should consult with their supervisors if it appears that an earlier-filed application does not disclose the best mode for carrying out a claimed invention and the filing date of the earlier-filed application is actually necessary. 35 U.S.C. 119(e) and 120 were further amended effective for applications filed on or after September
16, 2012 to refer to 35 U.S.C. 112(a) rather than pre-AIA 35 U.S.C. 112, first paragraph.
2165.01 Considerations Relevant to Best Mode [R-11.2013]
I. DETERMINE WHAT IS THE INVENTION
Determine what the invention is — the invention is defined in the claims. The specification need not set forth details not relating to the essence of the invention. In re Bosy, 360 F.2d 972, 149 USPQ 789 (CCPA 1966). See also Northern Telecom Ltd. v. Samsung Elec. Co., 215 F.3d 1281, 55 USPQ2d 1065 (Fed. Cir. 2000) (Unclaimed matter that is unrelated to the operation of the claimed invention does not trigger the best mode requirement); Eli Lilly & Co. v. Barr Lab. Inc., 251 F.3d 955, 966, 58 USPQ2d 1865, 1877 (Fed. Cir. 2001) (“[P]atentee’s failure to disclose an unclaimed preferred mode for accomplishing a routine detail does not violate the best mode requirement because one skilled in the art is aware of alternative means for accomplishing the routine detail that would still produce the best mode of the claimed invention.”).
II. SPECIFIC EXAMPLE IS NOT REQUIRED
There is no statutory requirement for the disclosure of a specific example — a patent specification is not intended nor required to be a production specification. In re Gay, 309 F.2d 768, 135 USPQ 311 (CCPA 1962).
The absence of a specific working example is not necessarily evidence that the best mode has not been disclosed, nor is the presence of one evidence that it has. Best mode may be represented by a preferred range of conditions or group of reactants. In re Honn, 364 F.2d 454, 150 USPQ 652 (CCPA 1966).
III. DESIGNATION AS BEST MODE IS NOT REQUIRED
There is no requirement in the statute that applicants point out which of their embodiments they consider to be their best; that the disclosure includes the best mode contemplated by applicants is enough to satisfy the statute. Ernsthausen v. Nakayama, 1 USPQ2d 1539 (Bd. Pat. App. & Inter. 1985).
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IV. UPDATING BEST MODE IS NOT REQUIRED
There is no requirement to update in the context of a foreign priority application under 35 U.S.C. 119, Standard Oil Co. v. Montedison, S.p.A., 494 F.Supp. 370, 206 USPQ 676 (D.Del. 1980) (better catalyst developed between Italian priority and U.S. filing dates). Furthermore, it is not necessary to update the best mode in applications claiming the benefit of an earlier filing date under 35 U.S.C. 119(e) or 120, which indicate that the disclosure in the earlier filed application must be made in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, "other than the requirement to disclose the best mode." See MPEP § 2165, subsection II.
V. DEFECT IN BEST MODE CANNOT BE CURED BY NEW MATTER
If the best mode contemplated by the inventor at the time of filing the application is not disclosed, such a defect cannot be cured by submitting an amendment seeking to put into the specification something required to be there when the patent application was originally filed. In re Hay, 534 F.2d 917, 189 USPQ 790 (CCPA 1976).
Any proposed amendment of this type (adding a specific mode of practicing the invention not described in the application as filed) should be treated as new matter. New matter under 35 U.S.C. 132 and 251 should be objected to and coupled with a requirement to cancel the new matter.
2165.02 Best Mode Requirement Compared to Enablement Requirement [R-11.2013]
The best mode requirement is a separate and distinct requirement from the enablement requirement of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112. In re Newton, 414 F.2d 1400, 163 USPQ 34 (CCPA 1969).
The best mode provision of 35 U.S.C. 112 is not directed to a situation where the application fails to set forth any mode — such failure is equivalent to nonenablement. In re Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974).
The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public. If, however, the applicant develops specific instrumentalities or techniques which are recognized by the applicant at the time of filing as the best way of carrying out the invention, then the best mode requirement imposes an obligation to disclose that information to the public as well. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 3 USPQ 2d 1737 (Fed. Cir.), cert. denied, 484 U.S. 954 (1987).
2165.03 Requirements for Rejection for Lack of Best Mode [R-11.2013]
I. ASSUME BEST MODE IS DISCLOSED UNLESS THERE IS EVIDENCE TO THE CONTRARY
The examiner should assume that the best mode is disclosed in the application, unless evidence is presented that is inconsistent with that assumption. It is extremely rare that a best mode rejection properly would be made in ex parte prosecution. The information that is necessary to form the basis for a rejection based on the failure to set forth the best mode is rarely accessible to the examiner, but is generally uncovered during inter partes proceedings.
II. EXAMINER MUST DETERMINE WHETHER THE INVENTOR KNEW THAT ONE MODE WAS BETTER THAN ANOTHER, AND IF SO, WHETHER THE DISCLOSURE ISADEQUATE TO ENABLE ONE OF ORDINARY SKILL IN THEART TO PRACTICE THE BEST MODE
According to the approach used by the court in Chemcast Corp. v. Arco Indus., 913 F.2d 923,
16 USPQ2d 1033 (Fed. Cir. 1990), a proper best mode analysis has two components:
(A) Determine whether, at the time the application was filed, the inventor knew of a mode of practicing the claimed invention that the inventor considered to be better than any other.
The first component is a subjective inquiry because it focuses on the inventor’s state of mind at the time the application was filed. Unless the examiner has evidence that the inventors had information in their possession
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(1) at the time the application was filed
(2) that a mode was considered to be better than any others by the inventors,
there is no reason to address the second component and there is no proper basis for a best mode rejection. If the facts satisfy the first component, then, and only then, is the following second component analyzed:
(B) Compare what was known in (A) with what was disclosed - is the disclosure adequate to enable one skilled in the art to practice the best mode?
Assessing the adequacy of the disclosure in this regard is largely an objective inquiry that depends on the level of skill in the art. Is the information contained in the specification disclosure sufficient to enable a person skilled in the relevant art to make and use the best mode?
A best mode rejection is proper only when the first inquiry can be answered in the affirmative, and the second inquiry answered in the negative with reasons to support the conclusion that the specification is nonenabling with respect to the best mode.
2165.04 Examples of Evidence of Concealment [R-08.2012]
In determining the adequacy of a best mode disclosure, only evidence of concealment (accidental or intentional) is to be considered. That evidence must tend to show that the quality of an applicant’s best mode disclosure is so poor as to effectively result in concealment.
I. EXAMPLES — BEST MODE REQUIREMENT SATISFIED
In one case, even though the inventor had more information in his possession concerning the contemplated best mode than was disclosed (a known computer program) the specification was held to delineate the best mode in a manner sufficient to require only the application of routine skill to produce a workable digital computer program. In re Sherwood, 613 F.2d 809, 204 USPQ 537 (CCPA 1980).
In another case, the claimed subject matter was a time controlled thermostat, but the application did not disclose the specific Quartzmatic motor which was used in a commercial embodiment. The court concluded that failure to disclose the commercial motor did not amount to concealment since similar clock motors were widely available and widely advertised. There was no evidence that the specific Quartzmatic motor was superior except possibly in price. Honeywell v. Diamond, 208 USPQ 452 (D.D.C. 1980).
There was held to be no violation of the best mode requirement even though the inventor did not disclose the only mode of calculating the stretch rate for plastic rods that he used because that mode would have been employed by those of ordinary skill in the art at the time the application was filed. W.L. Gore & Assoc., Inc. v. Garlock Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).
There was no best mode violation where the patentee failed to disclose in the specification “[k]nown ways to perform a known operation” to practice the claimed invention. “Known ways of performing a known operation cannot be deemed intentionally concealed absent evidence of intent to deliberately withhold that information.” High Concrete Structures Inc. v. New Enter. Stone & Lime Co., 377 F.3d 1379, 1384, 71 USPQ2d 1948, 1951 (Fed. Cir. 2004). The unintentional failure to disclose in the specification the use of a crane to support the patented frame in order to carry out the method of loading and tilting the frame was held not to defeat the best mode requirement because one of ordinary skill in the art would understand and use a crane to move heavy loads. Id. “The best mode requirement of [35 U.S.C.] § 112 is not violated by unintentional omission of information that would be readily known to persons in the field of the invention.” Id.
There was no best mode violation where there was no evidence that the monoclonal antibodies used by the inventors differed from those obtainable according to the processes described in the specification. It was not disputed that the inventors obtained the antibodies used in the invention by following the procedures in the specification, that these were the inventors’ preferred procedures, and that the data reported in the specification was for the
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antibody that the inventors had actually used. Scripps Clinic and Research Found. v. Genentech,
Inc., 927 F.2d 1565, 18 USPQ 2d 1001 (Fed. Cir. 1991).
Where an organism was created by the insertion of genetic material into a cell obtained from generally available sources, all that was required to satisfy the best mode requirement was an adequate description of the means for carrying out the invention, not deposit of the cells. As to the observation that no scientist could ever duplicate exactly the cell used by applicants, the court observed that the issue is whether the disclosure is adequate, not that an exact duplication is necessary. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 18 USPQ 2d 1016 (Fed. Cir. 1991).
There was held to be no violation of the best mode requirement where the Solicitor argued that concealment could be inferred from the disclosure in a specification that each analog is “surprisingly and unexpectedly more useful than one of the corresponding prostaglandins . . . for at least one of the pharmacological purposes.” It was argued that appellant must have had test results to substantiate this statement and this data should have been disclosed. The court concluded that no withholding could be inferred from general statements of increased selectivity and narrower spectrum of potency for these novel analogs, conclusions which could be drawn from the elementary pharmacological testing of the analogs. In re Bundy, 642 F.2d 430, 435, 209 USPQ 48, 52 (CCPA 1981).
II. EXAMPLES — BEST MODE REQUIREMENT NOT SATISFIED
The best mode requirement was held to be violated where inventors of a laser failed to disclose details of their preferred TiCuSil brazing method which were not contained in the prior art and were contrary to criteria for the use of TiCuSil as contained in the literature. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 3 USPQ 2d 1737 (Fed. Cir. 1987).
The best mode requirement was violated because an inventor failed to disclose whether to use a specific surface treatment that he knew was necessary to the satisfactory performance of his invention, even
though how to perform the treatment itself was known in the art. The argument that the best mode requirement may be met solely by reference to what was known in the prior art was rejected as incorrect. Dana Corp. v. IPC Ltd. P'ship, 860 F.2d 415,
8 USPQ2d 1692 (Fed. Cir. 1988).
2166 -2170 [Reserved]
2171 Two Separate Requirements for Claims Under 35 U.S.C. 112 (b) or Pre-AIA 35 U.S.C. 112, Second Paragraph [R-11.2013]
35 U.S.C. 112 Specification
*****
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
*****
Pre-AIA 35 U.S.C. 112 Specification
*****
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
*****
Two separate requirements are set forth in 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, second paragraph, namely that:
(A) the claims must set forth the subject matter that the inventor or a joint inventor regards as the invention; and
(B) the claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant.
The first requirement is a subjective one because it is dependent on what the inventor or a joint inventor for a patent regards as his or her invention. Note that although pre-AIA 35 U.S.C. 112, second paragraph, uses the phrase "which applicant regards as his invention," pre-AIA 37 CFR 1.41(a) provides that a patent is applied for in the name or names of the actual inventor or inventors.
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The second requirement is an objective one because it is not dependent on the views of the inventor or any particular individual, but is evaluated in the context of whether the claim is definite — i.e., whether the scope of the claim is clear to a hypothetical person possessing the ordinary level of skill in the pertinent art.
Although an essential purpose of the examination process is to determine whether or not the claims define an invention that is both novel and nonobvious over the prior art, another essential purpose of patent examination is to determine whether or not the claims are precise, clear, correct, and unambiguous. The uncertainties of claim scope should be removed, as much as possible, during the examination process.
The inquiry during examination is patentability of the invention as the inventor or a joint inventor regards it. If the claims do not particularly point out and distinctly claim that which the inventor or a joint inventor regards as his or her invention, the appropriate action by the examiner is to reject the claims under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989). If a rejection is based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, the examiner should further explain whether the rejection is based on indefiniteness or on the failure to claim what the inventor or a joint invention regards as the invention. Ex parte Ionescu, 222 USPQ 537, 539 (Bd. Pat.
App. & Inter. 1984).
2172 Subject Matter Which the Inventor or a Joint Inventor Regards as The Invention [R-11.2013]
I. FOCUS FOR EXAMINATION
A rejection based on the failure to satisfy this requirement is appropriate only where an inventor has stated, somewhere other than in the application as filed, that the invention is something different from what is defined by the claims. In other words, the invention set forth in the claims must be presumed, in the absence of evidence to the contrary, to be that which the inventor or a joint inventor
regards as the invention. In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971).
II. EVIDENCE TO THE CONTRARY
Evidence that shows that a claim does not correspond in scope with that which an inventor regards as an inventor’s invention may be found, for example, in contentions or admissions contained in briefs or remarks filed by applicant (see e.g., Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 55 USPQ2d 1279 (Fed. Cir. 2000) and In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969)), or in affidavits filed under 37 CFR 1.132 (see, e.g., In re Cormany, 476 F.2d 998, 177 USPQ 450 (CCPA 1973)). The content of the specification is not used as evidence that the scope of the claims is inconsistent with the subject matter which an inventor regards as his or her invention. As noted in In re Ehrreich, 590 F.2d 902, 200 USPQ 504 (CCPA 1979), agreement, or lack thereof, between the claims and the specification is properly considered only with respect to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; it is irrelevant to compliance with the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
III. SHIFT IN CLAIMS PERMITTED
35 U.S.C. 112(b) or the second paragraph of pre-AIA 35 U.S.C. 112 does not prohibit the inventor or a joint inventor from changing what he or she regards as the invention during the pendency of the application. In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971) (permitting claims and submission of comparative evidence with respect to claimed subject matter which originally was only the preferred embodiment within much broader claims (directed to a method)). The fact that claims in a continuation application were directed to originally disclosed subject matter which had not been regarded as part of the invention when the parent application was filed was held not to prevent the continuation application from receiving benefits of the filing date of the parent application under 35
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U.S.C. 120. In re Brower, 433 F.2d 813, 167 USPQ 684 (CCPA 1970).
2172.01 Unclaimed Essential Matter [R-11.2013]
A claim which omits matter disclosed to be essential to the invention as described in the specification or in other statements of record may be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as not enabling. In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). See also MPEP § 2164.08(c). Such essential matter may include missing elements, steps or necessary structural cooperative relationships of elements described by the applicant(s) as necessary to practice the invention.
In addition, a claim which fails to interrelate essential elements of the invention as defined by applicant(s) in the specification may be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, for failure to point out and distinctly claim the invention. See In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976); In re Collier, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968). But see Ex parte Nolden, 149 USPQ 378, 380 (Bd. Pat. App. & Inter. 1965) (“[I]t is not essential to a patentable combination that there be interdependency between the elements of the claimed device or that all the elements operate concurrently toward the desired result”); Ex parte Huber, 148 USPQ 447, 448-49 (Bd. Pat. App. & Inter. 1965) (A claim does not necessarily fail to comply with 35 U.S.C. 112, second paragraph where the various elements do not function simultaneously, are not directly functionally related, do not directly intercooperate, and/or serve independent purposes.).
2173 Claims Must Particularly Point Out and Distinctly Claim the Invention [R-11.2013]
Optimizing patent quality by providing clear notice to the public of the boundaries of the inventive subject matter protected by a patent grant fosters innovation and competitiveness. Accordingly, providing high quality patents is one of the agency’s guiding principles. The Office recognizes that issuing
patents with clear and definite claim language is a key component to enhancing the quality of patents and raising confidence in the patent process.
35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that a patent application specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his or her invention. In patent examining parlance, the claim language must be “definite” to comply with35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Conversely, a claim that does not comply with this requirement of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is “indefinite.”
The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent. A secondary purpose is to provide a clear measure of what applicants regard as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph with respect to the claimed invention.
It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter. Therefore, claims that do not meet this standard must be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph as indefinite. Such a rejection requires that the applicant respond by explaining why the language is definite or by amending the claim, thus making the record clear regarding the claim boundaries prior to issuance. As an indefiniteness rejection requires the applicant to respond by explaining why the language is definite or by amending the claim, such rejections must clearly identify the language that causes the claim to be
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indefinite and thoroughly explain the reasoning for the rejection.
2173.01 Interpreting the Claims [R-07.2015]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time of the invention," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
A fundamental principle contained in 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is that applicants are their own lexicographers. They can define in the claims what they regard as their invention essentially in whatever terms they choose so long as any special meaning assigned to a term is clearly set forth in the specification. See MPEP § 2111.01. Applicant may use functional language, alternative expressions, negative limitations, or any style of expression or format of claim which makes clear the boundaries of the subject matter for which protection is sought. As noted by the court in In re Swinehart, 439 F.2d 210, 160 USPQ 226 (CCPA 1971), a claim may not be rejected solely because of the type of language used to define the subject matter for which patent protection is sought.
I. BROADEST REASONABLE INTERPRETATION
The first step to examining a claim to determine if the language is definite is to fully understand the subject matter of the invention disclosed in the application and to ascertain the boundaries of that subject matter encompassed by the claim. During examination, a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art. Because the applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989) (“During patent examination the pending claims must be interpreted as broadly
as their terms reasonably allow.”). The focus of the inquiry regarding the meaning of a claim should be what would be reasonable from the perspective of one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260, 94 USPQ2D 1640, 1644 (Fed. Cir. 2010); In re Buszard, 504 F.3d 1364, 84 USPQ2d 1749 (Fed. Cir. 2007). In Buszard, the claim was directed to a flame retardant composition comprising a flexible polyurethane foam reaction mixture. Buszard, 504 F.3d at 1365, 84 USPQ2d at 1749. The Federal Circuit found that the Board’s interpretation that equated a “flexible” foam with a crushed “rigid” foam was not reasonable. Id. at 1367, 84 USPQ2d at 1751. Persuasive argument was presented that persons experienced in the field of polyurethane foams know that a flexible mixture is different than a rigid foam mixture. Id. at 1366, 84 USPQ2d at 1751. See MPEP § 2111 for a full discussion of broadest reasonable interpretation.
Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) (the USPTO looks to the ordinary use of the claim terms taking into account definitions or other “enlightenment” contained in the written description); But c.f. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”); In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1211 (Fed. Cir.
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2004) (The claims at issue were drawn to a “hair brush.” The Court upheld the Board’s refusal to import from the specification a limitation that would apply the term only to hairbrushes for the scalp. “[T]his court counsels the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages. Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”). When the specification sets a clear path to the claim language, the scope of the claims is more easily determined and the public notice function of the claims is best served. See MPEP § 2111.01 for a full discussion of the plain meaning of claim language.
II. DETERMINE WHETHER OR NOT EACH CLAIM LIMITATION INVOKES 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, sixth paragraph
As part of the claim interpretation analysis, examiners should determine whether each limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph or not. If the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the claim limitation must “be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. 112(f) and pre-AIA 35 U.S.C. 112, sixth paragraph; see also In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc) (“[W]e hold that paragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”). See MPEP § 2181, subsection I. for more information regarding the determination of whether a limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, and means- (or step-) plus- function claim limitations.
2173.02 Determining Whether Claim Language is Definite [R-07.2015]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed
invention instead of the "time the invention was made," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention. The claim places the public on notice of the scope of the patentee’s right to exclude. See, e.g., Johnson & Johnston Assoc. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed. Cir. 2002) (en banc). As the Federal Circuit stated in Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008):
We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.
A decision on whether a claim is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d
1343, 1350, 94 USPQ2d 1241, 1245 (Fed. Cir. 2010); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986). In Orthokinetics, a claim directed to a wheel chair included the phrase “so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof.” 806 F.2d at 1568, 1 USPQ2d at 1082. The court found the phrase to be as accurate as the subject matter permits, since automobiles are of various sizes. Id. at 1576, 1 USPQ2d at 1088. “As long as those of ordinary skill in the art realized the dimensions could be easily obtained, § 112, 2d para. requires nothing more.” Id. Claim terms are typically given their ordinary and customary meaning as understood by one of ordinary skill in the pertinent art, and the generally understood meaning of particular terms may vary from art to art. Therefore, it is important
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to analyze claim terms in view of the application’s specification from the perspective of those skilled in the relevant art since a particular term used in one patent or application may not have the same meaning when used in a different application. Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1318, 74 USPQ2d 1184, 1188 (Fed. Cir. 2005).
I. CLAIMS UNDER EXAMINATION ARE CONSTRUED DIFFERENTLY THAN PATENTED CLAIMS
Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can be interpreted based on a fully developed prosecution record. While "absolute precision is unattainable" in patented claims, the definiteness requirement "mandates clarity." Nautilus, Inc. v. Biosig Instruments, Inc., 527 U.S. __, 134 S. Ct. 2120, 2129, 110 USPQ2d 1688, 1693 (2014). A court will not find a patented claim indefinite unless the claim interpreted in light of the specification and the prosecution history fails to "inform those skilled in the art about the scope of the invention with reasonable certainty." Id. at 1689.
The Office does not interpret claims when examining patent applications in the same manner as the courts. In re Packard, 751 F.3d 1307, 1312, 110 USPQ2d
1785, 1788 (Fed. Cir. 2014); In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Office construes claims by giving them their broadest reasonable interpretation during prosecution in an effort to establish a clear record of what the applicant intends to claim. Such claim construction during prosecution may effectively result in a lower threshold for ambiguity than a court's determination. Packard, 751 F.3d at 1323-24, 110 USPQ2d at 1796-97 (Plager, J., concurring). However, applicant has the ability to amend the claims during prosecution to ensure that the meaning of the language is clear and definite prior to issuance or provide a persuasive explanation (with evidence as necessary) that a person of ordinary skill in the art would not consider the claim language unclear. In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir.
2007)( claims are given their broadest reasonable interpretation during prosecution “to facilitate sharpening and clarifying the claims at the
application stage”); see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
See MPEP § 2111 et seq. for a detailed discussion of claim interpretation during the examination process. The lower threshold is also applied because the patent record is in development and not fixed during examination, and the agency does not rely on it for interpreting claims. Packard, 751 F.3d at 1325 (Plager, J., concurring). Burlington Indus. Inc. v. Quigg, 822 F.2d 1581, 1583, 3 USPQ2d 1436, 1438 (Fed. Cir. 1987) (“Issues of judicial claim construction such as arise after patent issuance, for example during infringement litigation, have no place in prosecution of pending claims before the PTO, when any ambiguity or excessive breadth may be corrected by merely changing the claim.”).
During examination, after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected. Packard, 751 F.3d at 1310 (“[W]hen the USPTO
has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b).”); Zletz, 893 F.2d at 322, 13 USPQ2d at 1322. For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate. Examiners, however, are cautioned against confusing claim breadth with claim indefiniteness. A broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined. Instead, a claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear. For example, a genus claim that covers multiple species is broad, but is not indefinite because of its breadth, which is otherwise clear. But a genus claim that could be interpreted in
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such a way that it is not clear which species are covered would be indefinite (e.g., because there is more than one reasonable interpretation of what species are included in the claim). See MPEP § 2173.05(h), subsection I., for more information regarding the determination of whether a Markush claim satisfies the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
II. THRESHOLD REQUIREMENTS OF CLARITY AND PRECISION
The examiner’s focus during examination of claims for compliance with the requirement for definiteness of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is whether the claim meets the threshold requirements of clarity and precision set forth in the statute, not whether more suitable language or modes of expression are available. When the examiner is satisfied that patentable subject matter is disclosed, and it is apparent to the examiner that the claims are directed to such patentable subject matter, he or she should allow claims which define the patentable subject matter with the required degree of particularity and distinctness. Some latitude in the manner of expression and the aptness of terms should be permitted so long as 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is satisfied. Examiners are encouraged to suggest claim language to applicants to improve the clarity or precision of the language used, but should not insist on their own preferences if other modes of expression selected by applicants satisfy the statutory requirement.
The essential inquiry pertaining to this requirement is whether the claims set out and circumscribe a particular subject matter with a reasonable degree of clarity and particularity. “As the statutory language of ‘particular[ity]' and 'distinct[ness]' indicates, claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms. It is the claims that notify the public of what is within the protections of the patent, and what is not.” Packard, 751 F.3d at 1313. Definiteness of claim
language must be analyzed, not in a vacuum, but in light of:
(A) The content of the particular application disclosure;
(B) The teachings of the prior art; and
(C) The claim interpretation that would be given by one possessing the ordinary level of skill in the pertinent art at the time the invention was made.
In reviewing a claim for compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, the examiner must consider the claim as a whole to determine whether the claim apprises one of ordinary skill in the art of its scope and, therefore, serves the notice function required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, by providing clear warning to others as to what constitutes infringement of the patent. See, e.g., Solomon v. Kimberly-Clark Corp., 216 F.3d 1372,
1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). See also In re Larsen, No. 01-1092 (Fed. Cir. May 9, 2001) (unpublished) (The preamble of the Larsen claim recited only a hanger and a loop but the body of the claim positively recited a linear member. The court observed that the totality of all the limitations of the claim and their interaction with each other must be considered to ascertain the inventor’s contribution to the art. Upon review of the claim in its entirety, the court concluded that the claim at issue apprises one of ordinary skill in the art of its scope and, therefore, serves the notice function required by 35 U.S.C. 112.).
If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993). However, if the language used by applicant satisfies the statutory requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, the claim must not be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Examiners should note that Office policy is not to employ per se rules to make technical rejections. Examples of claim language which have been held to be indefinite set forth in MPEP § 2173.05(d) are fact specific and should not be applied as per se rules.
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III. RESOLVING INDEFINITE CLAIM LANGUAGE
A. Examiner Must Establish a Clear Record
Examiners are urged to carefully carry out their responsibilities to see that the application file contains a complete and accurate picture of the Office’s consideration of the patentability of an application. See MPEP § 1302.14, subsection I. In order to provide a complete application file history and to enhance the clarity of the prosecution history record, an examiner should provide clear explanations of all actions taken during prosecution of the application. See MPEP § 707.07(f). Thus, when a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate based on the examiner’s determination that a claim term or phrase is prima facie indefinite, the examiner should clearly communicate in an Office action any findings and reasons which support the rejection and avoid a mere conclusion that the claim term or phrase is indefinite. See MPEP § 706.03 and MPEP § 707.07(g).
MPEP § 2173.05 provides numerous examples of rationales that may support a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, such as functional claim limitations, relative terminology/terms of degree, lack of antecedent basis, etc. Only by providing a complete explanation in the Office action as to the basis for determining why a particular term or phrase used in the claim is “vague and indefinite” will the examiner enhance the clarity of the prosecution history record.
B. An Office Action Should Provide a Sufficient Explanation
The Office action must set forth the specific term or phrase that is indefinite and why the metes and bounds are unclear. Since a rejection requires the applicant to respond by explaining why claim language would be recognized by a person of ordinary skill in the art as definite or by amending the claim, the Office action should provide enough information for the applicant to prepare a meaningful response. “Because claims delineate the patentee’s right to exclude, the patent statute requires that the scope of the claims be sufficiently definite to inform
the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249, 85 USPQ2d 1654, 1658 (Fed. Cir. 2008). Thus, claims are given their broadest reasonable interpretation during prosecution “to facilitate sharpening and clarifying the claims at the application stage” when claims are readily changed. In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007); see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
To comply with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, applicants are required to make the terms that are used to define the invention clear and precise, so that the metes and bounds of the subject matter that will be protected by the patent grant can be ascertained. See MPEP § 2173.05(a), subsection I. It is important that a person of ordinary skill in the art be able to interpret the metes and bounds of the claims so as to understand how to avoid infringement of the patent that ultimately issues from the application being examined. See MPEP § 2173.02, subsection II (citing Morton Int ’l, Inc. v. Cardinal Chem. Co., 5 F.3d
1464, 1470 (Fed. Cir. 1993)); see also Halliburton Energy Servs., 514 F.3d at 1249, 85 USPQ2d at 1658 (“Otherwise, competitors cannot avoid infringement, defeating the public notice function of patent claims.”). Examiners should bear in mind that “[a]n essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” Zletz, 893 F.2d at 322, 13 USPQ2d at 1322.
Accordingly, when rejecting a claim as prima facie indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, the examiner should provide enough information in the Office action to permit applicant to make a meaningful response, as the indefiniteness rejection requires the applicant to explain or provide evidence as to why the claim language is not indefinite or amend the claim. For example, in making a prima facie case of indefiniteness, the examiner should point out the specific term or phrase that is indefinite, explain in detail why such term or phrase renders the metes
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and bounds of the claim scope unclear and, whenever practicable, indicate how the indefiniteness issues may be resolved to overcome the rejection. See MPEP § 707.07(d). If the applicant does not adequately respond to the prima facie case, the examiner may make the indefiniteness rejection final. Packard, 751 F.3d at 1312.
The focus during the examination of claims for compliance with the requirement for definiteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is whether the claim meets the threshold requirements of clarity and precision, not whether more suitable language or modes of expression are available. See MPEP § 2173.02, subsection II. Examiners are encouraged to suggest claim language to applicants to improve the clarity or precision of the language used, but should not insist on their own preferences if other modes of expression selected by applicants satisfy the statutory requirement. Furthermore, when the examiner determines that more information is necessary to ascertain the meaning of a claim term, a requirement for information under 37 CFR 1.105 may be appropriate. See MPEP § 704.10 regarding requirements for information.
It is highly desirable to have applicants resolve ambiguity by amending the claims during prosecution of the application rather than attempting to resolve the ambiguity in subsequent litigation of the issued patent. Halliburton Energy Servs., 514 F.3d at 1255. Thus, in response to an examiner’s rejection for indefiniteness, an applicant may resolve the ambiguity by amending the claim, or by providing a persuasive explanation on the record that a person of ordinary skill in the relevant art would not consider the claim language unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). For the latter option, in some cases, it may be necessary for the applicant to provide a separate definition (such as from an art-recognized dictionary) to show how the ordinarily-skilled artisan would have understood the claim language at issue. Id.
If the examiner considers applicant’s arguments and/or amendments to be persuasive, the examiner should indicate in the next Office communication that the previous rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, has
been withdrawn and provide an explanation as to what prompted the change in the examiner’s position (e.g., by making specific reference to portions of applicant’s remarks).
By providing an explanation as to the action taken, the examiner will enhance the clarity of the prosecution history record. As noted by the Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 122 S.Ct. 1831, 1838, 62 USPQ2d 1705, 1710 (2002), a clear and complete prosecution file record is important in that “[p]rosecution history estoppel requires that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process.” In Festo, the court held that “a narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel.” With respect to amendments made to comply with the requirements of 35 U.S.C. 112, the court stated that “[i]f a § 112 amendment is truly cosmetic, then it would not narrow the patent’s scope or raise an estoppel. On the other hand, if a § 112 amendment is necessary and narrows the patent’s scope—even if only for the purpose of better description—estoppel may apply.” Id. at 1840, 62 USPQ2d at 1712. The court further stated that “when the court is unable to determine the purpose underlying a narrowing amendment—and hence a rationale for limiting the estoppel to the surrender of particular equivalents—the court should presume that the patentee surrendered all subject matter between the broader and the narrower language…the patentee should bear the burden of showing that the amendment does not surrender the particular equivalent in question.” Id. at 1842, 62 USPQ2d at 1713. Thus, whenever possible, the examiner should make the record clear by providing explicit reasoning for making or withdrawing any rejection related to 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
C. Provide Claim Interpretation in Reasons for Allowance When Record is Unclear
Pursuant to 37 CFR 1.104(e), if the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning in reasons for allowance. Further, prior to
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allowance, the examiner may also specify allowable subject matter and provide reasons for indicating such allowable subject matter in an Office communication. See MPEP § 1302.14, subsection I. One of the primary purposes of 37 CFR 1.104(e) is to improve the quality and reliability of issued patents by providing a complete file history which should clearly reflect the reasons why the application was allowed. Such information facilitates evaluation of the scope and strength of a patent by the patentee and the public and may help avoid or simplify subsequent litigation of an issued patent. See MPEP § 1302.14, subsection I. In meeting the need for the application file history to speak for itself, it is incumbent upon the examiner in exercising his or her responsibility to the public to see that the file history is complete. See MPEP § 1302.14, subsection I.
For example, when allowing a claim based on a claim interpretation which might not be readily apparent from the record of the prosecution as a whole, the examiner should set forth in reasons for allowance the claim interpretation that he or she applied in determining that the claim is allowable over the prior art. See MPEP § 1302.14, subsection II.G. This is especially the case where the application is allowed after an interview. The examiner should ensure, however, that statements of reasons for allowance do not place unwarranted interpretations, whether broad or narrow, upon the claims. See MPEP § 1302.14, subsection I.
D. Open Lines of Communication with the Applicant – When Indefiniteness Is the Only Issue, Attempt Resolution through an Interview before Resorting to a Rejection
Examiners are reminded that interviews can be an effective examination tool and are encouraged to initiate an interview with the applicant or applicant’s representative at any point during the pendency of an application, if the interview can help further prosecution, shorten pendency, or provide a benefit to the examiner or applicant. Issues of claim interpretation and clarity of scope may lend themselves to resolution through an examiner interview. For example, the examiner may initiate an interview to discuss, among other issues, the broadest reasonable interpretation of a claim, the
meaning of a particular claim limitation, and the scope and clarity of preamble language, functional language, intended use language, and means-plus-function limitations, etc.
An interview can serve to develop and clarify such issues and lead to a mutual understanding between the examiner and the applicant, potentially eliminating the need for the examiner to resort to making a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The examiner is reminded that the substance of any interview, whether in person, by video conference, or by telephone must be made of record in the application, whether or not an agreement was reached at the interview. See MPEP § 713.04; see also 37 CFR 1.2 (“The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.”). Examples of 35 U.S.C. 112 issues that should be made of record after the interview include: why the discussed claim term is or is not sufficiently clear; why the discussed claim term is or is not inconsistent with the specification; why the discussed claim term does or does not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (and if it does, the identification of corresponding structure, material, or acts in the specification for a 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation); and any claim amendments discussed that would resolve identified ambiguities.
2173.03 Correspondence Between Specification and Claims [R-07.2015]
The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification. Glossaries of terms used in the claims are a helpful device for ensuring adequate definition of terms used in claims. If the specification does not provide the needed support
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or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1). See MPEP § 608.01(o) and MPEP § 2181, subsection IV. Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.
A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA
1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). For example, a claim with a limitation of “the clamp means including a clamp body and first and second clamping members, the clamping members being supported by the clamp body” was determined to be indefinite because the terms “first and second clamping members” and “clamp body” were found to be vague in light of the specification which showed no “clamp member” structure being “supported by the clamp body.” In re Anderson, 1997 U.S. App. Lexis 167 (Fed. Cir. January 6, 1997) (unpublished). In Cohn, a claim was directed to a process of treating an aluminum surface with an alkali silicate solution and included a further limitation that the surface has an “opaque” appearance. Id. The specification, meanwhile, associated the use of an alkali silicate with a glazed or porcelain-like finish, which the specification distinguished from an opaque finish. Cohn, 438 F.2d at 993. Noting that no claim may be read apart from and independent of the supporting disclosure on which it is based, the court found that the claim was internally inconsistent based on the description, definitions and examples set forth in the specification relating to the appearance of the surface after treatment, and therefore indefinite. Id.
2173.04 Breadth Is Not Indefiniteness [R-07.2015]
Breadth of a claim is not to be equated with indefiniteness. In re Miller, 441 F.2d 689, 169
USPQ 597 (CCPA 1971); In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) ("Breadth is not indefiniteness."). A broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined. But a claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear. For example, a genus claim that covers multiple species is broad, but is not indefinite because of its breadth, which is otherwise clear. But a genus claim that could be interpreted in such a way that it is not clear which species are covered would be indefinite (e.g., because there is more than one reasonable interpretation of what species are included in the claim).
Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad. If the claim is too broad because it does not set forth that which applicants regard as their invention as evidenced by statements outside of the application as filed, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, would be appropriate. If the claim is too broad because it is not supported by the original description or by an enabling disclosure, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, would be appropriate. If the claim is too broad because it reads on the prior art, a rejection under either 35 U.S.C. 102 or 103 would be appropriate.
2173.05 Specific Topics Related to Issues Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph [R-11.2013]
The following sections are devoted to a discussion of specific topics where issues under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, have been addressed. These sections are not intended to be an exhaustive list of the issues that can arise under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, but are intended to provide guidance in areas that have been addressed with some frequency in recent examination practice. The court and Board decisions cited are representative. As with all appellate decisions, the results are largely dictated by the facts in each case. The use of the
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same language in a different context may justify a different result.
See MPEP § 2181 for guidance in determining whether an applicant has complied with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
2173.05(a) New Terminology [R-07.2015]
I. THE MEANING OF EVERY TERM SHOULD BE APPARENT
The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.” Packard, 751 F.3d at 1311. Applicants need not
confine themselves to the terminology used in the prior art, but are required to make clear and precise the terms that are used to define the invention whereby the metes and bounds of the claimed invention can be ascertained. During patent examination, the pending claims must be given the broadest reasonable interpretation consistent with the specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969). See also MPEP § 2111 - § 2111.01. When the specification states the meaning that a term in the claim is intended to have, the claim is examined using that meaning, in order to achieve a complete exploration of the applicant’s invention and its relation to the prior art. In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989).
II. THE REQUIREMENT FOR CLARITY AND PRECISION MUST BE BALANCED WITH THE LIMITATIONS OF THE LANGUAGE
Courts have recognized that it is not only permissible, but often desirable, to use new terms that are frequently more precise in describing and defining the new invention. In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 1970). Although it is difficult to compare the claimed invention with the
prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.
New terms are often used when a new technology is in its infancy or is rapidly evolving. The requirements for clarity and precision must be balanced with the limitations of the language and the science. If the claims, read in light of the specification, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits, the statute (35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph) demands no more. Packard, 751 F.3d at 1313 (“[H]ow much clarity is required necessarily invokes some standard of reasonable precision in the use of language in the context of the circumstances.”). This does not mean that the examiner must accept the best effort of applicant. If the language is not considered as precise as the subject matter permits, the examiner should provide reasons to support the conclusion of indefiniteness and is encouraged to suggest alternatives that would not be subject to rejection.
III. TERMS USED CONTRARY TO THEIR ORDINARY MEANING MUST BE CLEARLY REDEFINED IN THE WRITTEN DESCRIPTION
Consistent with the well-established axiom in patent law that a patentee or applicant is free to be his or her own lexicographer, a patentee or applicant may use terms in a manner contrary to or inconsistent with one or more of their ordinary meanings if the written description clearly redefines the terms. See, e.g., Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999) (“While we have held many times that a patentee can act as his own lexicographer to specifically define terms of a claim contrary to their ordinary meaning,” in such a situation the written description must clearly redefine a claim term “so as to put a reasonable competitor or one reasonably skilled in the art on notice that the patentee intended to so redefine that claim term.”); Hormone Research Foundation Inc. v. Genentech Inc., 904 F.2d 1558, 15 USPQ2d 1039 (Fed. Cir. 1990). Accordingly, when there is more than one meaning for a term, it is incumbent upon applicant to make clear which meaning is being relied upon to claim the invention.
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Until the meaning of a term or phrase used in a claim is clear, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate. It is appropriate to compare the meaning of terms given in technical dictionaries in order to ascertain the accepted meaning of a term in the art. In re Barr, 444 F.2d 588, 170 USPQ 330 (CCPA
1971). See also MPEP § 2111.01.
2173.05(b) Relative Terminology [R-07.2015]
The use of relative terminology in claim language, including terms of degree, does not automatically render the claim indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984). Acceptability of the claim language depends on whether one of ordinary skill in the art would understand what is claimed, in light of the specification.
I. TERMS OF DEGREE
Terms of degree are not necessarily indefinite. “Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370, 112 USPQ2d 1188, 1192-93 (Fed. Cir. 2014) (citing Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 65-66 (1923) (finding ‘substantial pitch’ sufficiently definite because one skilled in the art ‘had no difficulty … in determining what was the substantial pitch needed’ to practice the invention)). Thus, when a term of degree is used in the claim, the examiner should determine whether the specification provides some standard for measuring that degree. Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367, 94 USPQ2d 1385, 1391 (Fed. Cir. 2010); Enzo Biochem, Inc., v. Applera Corp., 599 F.3d 1325, 1332, 94 USPQ2d 1321, 1326 (Fed. Cir. 2010); Seattle Box Co., Inc. v. Indus. Crating & Packing,
Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984). If the specification does not provide some standard for measuring that degree, a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art
for measuring the meaning of the term of degree). For example, in Ex parte Oetiker, 23 USPQ2d 1641 (Bd. Pat. App. & Inter. 1992), the phrases “relatively shallow,” “of the order of,” “the order of about 5mm,” and “substantial portion” were held to be indefinite because the specification lacked some standard for measuring the degrees intended.
The claim is not indefinite if the specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement (e.g., a figure that provides a standard for measuring the meaning of the term of degree). See, e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371-72, 112 USPQ2d 1188, 1193 (Fed. Cir. 2014) (observing that although there is no absolute or mathematical precision required, “[t]he claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art”).
During prosecution, an applicant may also overcome an indefiniteness rejection by providing evidence that the meaning of the term of degree can be ascertained by one of ordinary skill in the art when reading the disclosure. For example, in Enzo Biochem, the applicant submitted a declaration under 37 CFR 1.132 showing examples that met the claim limitation and examples that did not. Enzo Biochem, 599 F.3d at 1335, 94 USPQ2d at 1328 (noting that applicant overcame an indefiniteness rejection over “not interfering substantially” claim language by submitting a declaration under 37 CFR 1.132 listing eight specific linkage groups that applicant declared did not substantially interfere with hybridization or detection).
Even if the specification uses the same term of degree as in the claim, a rejection is proper if the scope of the term is not understood when read in light of the specification. While, as a general proposition, broadening modifiers are standard tools in claim drafting in order to avoid reliance on the doctrine of equivalents in infringement actions, when the scope of the claim is unclear a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is proper. See In re Wiggins, 488 F. 2d 538, 541, 179 USPQ 421, 423 (CCPA 1973).
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When relative terms are used in claims wherein the improvement over the prior art rests entirely upon size or weight of an element in a combination of elements, the adequacy of the disclosure of a standard is of greater criticality.
II. REFERENCE TO AN OBJECT THAT IS VARIABLE MAY RENDERA CLAIM INDEFINITE
A claim may be rendered indefinite by reference to an object that is variable. See, e.g., Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989). In Miyazaki, the Board held that claims to a large
printer were not sufficiently definite because:
The language of claim 1 attempts to claim the height of the paper feeding unit in relation to a user of a specific height who is performing operations on the printer.... Claim 1 fails to specify, however, a positional relationship of the user and the printer to each other.
Miyazaki, 89 USPQ2d at 1212. In Brummer, the Board held that a limitation in a claim to a bicycle that recited “said front and rear wheels so spaced as to give a wheelbase that is between 58 percent and 75 percent of the height of the rider that the bicycle was designed for” was indefinite because the relationship of parts was not based on any known standard for sizing a bicycle to a rider, but on a rider of unspecified build. Brummer, 12 USPQ2d at 1655.
On the other hand, a claim limitation specifying that a certain part of a pediatric wheelchair be “so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats” was held to be definite. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986). The court stated that the phrase “so dimensioned” is as accurate as the subject matter permits, noting that the patent law does not require that all possible lengths corresponding to the spaces in hundreds of different automobiles be listed in the patent, let alone that they be listed in the claims.
III. APPROXIMATIONS
A. “About”
In determining the range encompassed by the term “about”, one must consider the context of the term as it is used in the specification and claims of the application. Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007). In W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), the court held that a limitation defining the stretch rate of a plastic as “exceeding about 10% per second” is definite because infringement could clearly be assessed through the use of a stopwatch. However, in another case, the court held that claims reciting “at least about” were invalid for indefiniteness where there was close prior art and there was nothing in the specification, prosecution history, or the prior art to provide any indication as to what range of specific activity is covered by the term “about.” Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18
USPQ2d 1016 (Fed. Cir. 1991).
B. “Essentially”
The phrase “a silicon dioxide source that is essentially free of alkali metal” was held to be definite because the specification contained guidelines and examples that were considered sufficient to enable a person of ordinary skill in the art to draw a line between unavoidable impurities in starting materials and essential ingredients. In re Marosi, 710 F.2d 799, 218 USPQ 289 (CCPA 1983). The court further observed that it would be impractical to require applicants to specify a particular number as a cutoff between their invention and the prior art.
C. “Similar”
The term “similar” in the preamble of a claim that was directed to a nozzle “for high-pressure cleaning units or similar apparatus” was held to be indefinite since it was not clear what applicant intended to cover by the recitation “similar” apparatus. Ex parte Kristensen, 10 USPQ2d 1701 (Bd. Pat. App. & Inter. 1989).
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A claim in a design patent application which read: “The ornamental design for a feed bunk or similar structure as shown and described.” was held to be indefinite because it was unclear from the specification what applicant intended to cover by the recitation of “similar structure.” Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992).
D. “Substantially”
The term “substantially” is often used in conjunction with another term to describe a particular characteristic of the claimed invention. It is a broad term. In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960). The court held that the limitation “to substantially increase the efficiency of the compound as a copper extractant” was definite in view of the general guidelines contained in the specification. In re Mattison, 509 F.2d 563, 184 USPQ 484 (CCPA 1975). The court held that the limitation “which produces substantially equal E and H plane illumination patterns” was definite because one of ordinary skill in the art would know what was meant by “substantially equal.” Andrew Corp. v. Gabriel Electronics, 847 F.2d 819, 6 USPQ2d 2010 (Fed. Cir. 1988).
E. “Type”
The addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). Likewise, the phrase “ZSM-5-type aluminosilicate zeolites” was held to be indefinite because it was unclear what “type” was intended to convey. The interpretation was made more difficult by the fact that the zeolites defined in the dependent claims were not within the genus of the type of zeolites defined in the independent claim. Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. &
Inter. 1986).
IV. SUBJECTIVE TERMS
When a subjective term is used in the claim, the examiner should determine whether the specification supplies some standard for measuring the scope of the term, similar to the analysis for a term of degree.
Some objective standard must be provided in order to allow the public to determine the scope of the claim. A claim that requires the exercise of subjective judgment without restriction may render the claim indefinite. In re Musgrave, 431 F.2d 882, 893 (CCPA 1970). Claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention. Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350, 75 USPQ2d 1801, 1807 (Fed. Cir. 2005)); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373, 112 USPQ2d 1188 (Fed. Cir. 2014) (holding the claim phrase “unobtrusive manner” indefinite because the specification did not “provide a reasonably clear and exclusive definition, leaving the facially subjective claim language without an objective boundary”).
For example, in Datamize, the invention was directed to a computer interface screen with an “aesthetically pleasing look and feel.” Datamize, 417 F.3d at 1344-45. The meaning of the term “aesthetically pleasing” depended solely on the subjective opinion of the person selecting features to be included on the interface screen. Nothing in the intrinsic evidence (e.g., the specification) provided any guidance as to what design choices would result in an “aesthetically pleasing” look and feel. Id. at 1352. The claims were held indefinite because the interface screen may be “aesthetically pleasing” to one user but not to another. Id. at 1350. See also Ex parte Anderson, 21 USPQ2d 1241 (Bd. Pat. App. & Inter. 1991) (the terms “comparable” and “superior” were held to be indefinite in the context of a limitation relating the characteristics of the claimed material to other materials).
During prosecution, the applicant may overcome a rejection by amending the claim to remove the subjective term, or by providing evidence that the meaning of the term can be ascertained by one of ordinary skill in the art when reading the disclosure. However, “[f]or some facially subjective terms, the definiteness requirement is not satisfied by merely offering examples that satisfy the term within the
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specification.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1261 (Fed. Cir. 2014).
2173.05(c) Numerical Ranges and Amounts Limitations [R-11.2013]
Generally, the recitation of specific numerical ranges in a claim does not raise an issue of whether a claim is definite.
I. NARROW AND BROADER RANGES IN THE SAME CLAIM
Use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible. Description of examples and preferences is properly set forth in the specification rather than in a single claim. A narrower range or preferred embodiment may also be set forth in another independent claim or in a dependent claim. If stated in a single claim, examples and preferences lead to confusion over the intended scope of the claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The Examiner should analyze whether the metes and bounds of the claim are clearly set forth. Examples of claim language which have been held to be indefinite are (A) “a temperature of between 45 and 78 degrees Celsius, preferably between 50 and 60 degrees Celsius”; and (B) “a predetermined quantity, for example, the maximum capacity.”
While a single claim that includes both a broad and a narrower range may be indefinite, it is not improper under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C.112, second paragraph, to present a dependent claim that sets forth a narrower range for an element than the range set forth in the claim from which it depends. For example, if claim 1 reads “A circuit … wherein the resistance is 70-150 ohms.” and claim 2 reads “The circuit of claim 1 wherein the resistance is 70-100 ohms.”, then claim 2 should not be rejected as indefinite.
II. OPEN-ENDED NUMERICAL RANGES
Open-ended numerical ranges should be carefully analyzed for definiteness. For example, when an independent claim recites a composition comprising “at least 20% sodium” and a dependent claim sets forth specific amounts of nonsodium ingredients which add up to 100%, apparently to the exclusion of sodium, an ambiguity is created with regard to the “at least” limitation (unless the percentages of the nonsodium ingredients are based on the weight of the nonsodium ingredients). On the other hand, the court held that a composition claimed to have a theoretical content greater than 100% (i.e., 20-80% of A, 20-80% of B and 1-25% of C) was not indefinite simply because the claims may be read in theory to include compositions that are impossible in fact to formulate. It was observed that subject matter which cannot exist in fact can neither anticipate nor infringe a claim. In re Kroekel, 504 F.2d 1143, 183 USPQ 610 (CCPA 1974).
In a claim directed to a chemical reaction process, a limitation required that the amount of one ingredient in the reaction mixture should “be maintained at less than 7 mole percent” based on the amount of another ingredient. The examiner argued that the claim was indefinite because the limitation sets only a maximum amount and is inclusive of substantially no ingredient resulting in termination of any reaction. The court did not agree, holding that the claim was clearly directed to a reaction process, and explaining that “[t]he imposition of a maximum limit on the quantity of one of the reactants without specifying a minimum does not warrant distorting the overall meaning of the claim to preclude performing the claimed process.” In re Kirsch, 498 F.2d 1389, 1394, 182 USPQ 286, ___ (CCPA 1974).
Some terms have been determined to have the following meanings in the factual situations of the reported cases: the term “up to” includes zero as a lower limit, In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 1974); and “a moisture content of not more than 70% by weight” reads on dry material, Ex parte Khusid, 174 USPQ 59 (Bd. App. 1971).
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III. “EFFECTIVE AMOUNT”
The common phrase “an effective amount” may or may not be indefinite. The proper test is whether or not one skilled in the art could determine specific values for the amount based on the disclosure. See In re Mattison, 509 F.2d 563, 184 USPQ 484
(CCPA 1975). The phrase “an effective amount . . . for growth stimulation” was held to be definite where the amount was not critical and those skilled in the art would be able to determine from the written disclosure, including the examples, what an effective amount is. In re Halleck, 422 F.2d 911, 164 USPQ 647 (CCPA 1970). The phrase “an effective amount” has been held to be indefinite when the claim fails to state the function which is to be achieved and more than one effect can be implied from the specification or the relevant art. In re Fredericksen, 213 F.2d 547, 102 USPQ 35 (CCPA 1954). The more recent cases have tended to accept a limitation such as “an effective amount” as being definite when read in light of the supporting disclosure and in the absence of any prior art which would give rise to uncertainty about the scope of the claim. In Ex parte Skuballa, 12 USPQ2d 1570 (Bd. Pat. App. & Inter. 1989), the Board held that a pharmaceutical composition claim which recited an “effective amount of a compound of claim 1” without stating the function to be achieved was definite, particularly when read in light of the supporting disclosure which provided guidelines as to the intended utilities and how the uses could be effected.
2173.05(d) Exemplary Claim Language (“for example,” “such as”) [R-07.2015]
Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The examiner should analyze whether the metes and bounds of the claim are clearly set forth. Note that the mere use of the phrase "such as" or "for example" in a claim does not by itself render the claim indefinite.
Examples of claim language which have been held to be indefinite because the intended scope of the claim was unclear are:
(A) “R is halogen, for example, chlorine”;
(B) “material such as rock wool or asbestos” Ex parte Hall, 83 USPQ 38 (Bd. App. 1949);
(C) “lighter hydrocarbons, such, for example, as the vapors or gas produced” Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949);
(D) “normal operating conditions such as while in the container of a proportioner” Ex parte Steigerwald, 131 USPQ 74 (Bd. App. 1961); and
(E) “coke, brick, or like material”. Ex parte Caldwell, 1906 C.D. 58 (Comm’r Pat. 1906).
The above examples of claim language which have been held to be indefinite are fact specific and should not be applied as per se rules. See MPEP § 2173.02 for guidance regarding when it is appropriate to make a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
2173.05(e) Lack of Antecedent Basis [R-07.2015]
A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The lack of clarity could arise where a claim refers to “said lever” or “the lever,” where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. Similarly, if two different levers are recited earlier in the claim, the recitation of “said lever” in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended. A claim which refers to “said aluminum lever,” but recites only “a lever” earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made. Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite. Ex parte Porter, 25 USPQ2d 1144, 1145 (Bd. Pat. App. & Inter. 1992) (“controlled stream of fluid” provided reasonable
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antecedent basis for “the controlled fluid”). Inherent components of elements recited have antecedent basis in the recitation of the components themselves. For example, the limitation “the outer surface of said sphere” would not require an antecedent recitation that the sphere has an outer surface. See Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359, 61 USPQ2d 1216, 1218-19 (Fed. Cir 2001) (holding that recitation of “an ellipse” provided antecedent basis for “an ellipse having a major diameter” because “[t]here can be no dispute that mathematically an inherent characteristic of an ellipse is a major diameter”).
I. EXAMINER SHOULD SUGGEST CORRECTIONS TO ANTECEDENT PROBLEMS
Antecedent problems in the claims are typically drafting oversights that are easily corrected once they are brought to the attention of applicant. The examiner’s task of making sure the claim language complies with the requirements of the statute should be carried out in a positive and constructive way, so that minor problems can be identified and easily corrected, and so that the major effort is expended on more substantive issues. However, even though indefiniteness in claim language is of semantic origin, it is not rendered unobjectionable simply because it could have been corrected. In re Hammack, 427 F.2d 1384, 1388 n.5, 166 USPQ 209, 213 n.5 (CCPA 1970).
II. A CLAIM TERM WHICH HAS NO ANTECEDENT BASIS IN THE DISCLOSURE IS NOT NECESSARILY INDEFINITE
The mere fact that a term or phrase used in the claim has no antecedent basis in the specification disclosure does not mean, necessarily, that the term or phrase is indefinite. There is no requirement that the words in the claim must match those used in the specification disclosure. Applicants are given a great deal of latitude in how they choose to define their invention so long as the terms and phrases used define the invention with a reasonable degree of clarity and precision.
III. A CLAIM IS NOT PER SE INDEFINITE IF THE BODY OF THE CLAIM RECITES ADDITIONAL
ELEMENTS WHICH DO NOT APPEAR IN THE PREAMBLE
The mere fact that the body of a claim recites additional elements which do not appear in the claim’s preamble does not render the claim indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Larsen, No. 01-1092 (Fed. Cir. May 9, 2001) (unpublished) (The preamble of the Larsen claim recited only a hanger and a loop but the body of the claim positively recited a linear member. The examiner rejected the claim under 35 U.S.C. 112, second paragraph, because the omission from the claim’s preamble of a critical element (i.e., a linear member) renders that claim indefinite. The court reversed the examiner’s rejection and stated that the totality of all the limitations of the claim and their interaction with each other must be considered to ascertain the inventor’s contribution to the art. Upon review of the claim in its entirety, the court concluded that the claim at issue apprises one of ordinary skill in the art of its scope and, therefore, serves the notice function required by 35 U.S.C. 112, paragraph 2.).
2173.05(f) Reference to Limitations in Another Claim [R-11.2013]
A claim which makes reference to a preceding claim to define a limitation is an acceptable claim construction which should not necessarily be rejected as improper or confusing under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, claims which read: “The product produced by the method of claim 1.” or “A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions .....” are not indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, merely because of the reference to another claim. See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7” in a method claim was held to comply with 35 U.S.C. 112, second paragraph). However, where the format of making reference to limitations recited in another claim results in confusion, then a rejection would be proper under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
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When examining a dependent claim, the examiner should also determine whether the claim complies with 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. See MPEP § 608.01(n), subsection II.
2173.05(g) Functional Limitations [R-07.2015]
A claim term is functional when it recites a feature “by what it does rather than by what it is” (e.g., as evidenced by its specific structure or specific ingredients). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper. Id. In fact, 35 U.S.C. 112(f) and pre-AIA 35 U.S.C. 112, sixth paragraph, expressly authorize a form of functional claiming (means- (or step-) plus- function claim limitations discussed in MPEP § 2181 et seq.). Functional language may also be employed to limit the claims without using the means-plus-function format. See, e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999). Unlike means-plus-function claim language that applies only to purely functional limitations, Phillips v. AWH Corp, 415 F.3d 1303, 1311 (Fed. Cir. 2005) (en banc) (“Means-plus-function claiming applies
only to purely functional limitations that do not provide the structure that performs the recited function.”), functional claiming often involves the recitation of some structure followed by its function. For example, in In re Schreiber, the claims were directed to a conical spout (the structure) that “allow[ed] several kernels of popped popcorn to pass through at the same time” (the function). In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As noted by the court in Schreiber, “[a] patent applicant is free to recite features of an apparatus either structurally or functionally.” Id.
A functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or
step. In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 (Fed. Cir. 2004), the court noted that the claim term “operatively connected” is “a general descriptive claim term frequently used in patent drafting to reflect a functional relationship between claimed components,” that is, the term “means the claimed components must be connected in a way to perform a designated function.” “In the absence of modifiers, general descriptive terms are typically construed as having their full meaning.” Id. at 1118, 72 USPQ2d at 1006. In the patent claim at issue, “subject to any clear and unmistakable disavowal of claim scope, the term ‘operatively connected’ takes the full breath of its ordinary meaning, i.e., ‘said tube [is] operatively connected to said cap’ when the tube and cap are arranged in a manner capable of performing the function of filtering.” Id. at 1120, 72 USPQ2d at 1008.
Other examples of permissible function language include the following.
It was held that the limitation used to define a radical on a chemical compound as “incapable of forming a dye with said oxidizing developing agent” although functional, was perfectly acceptable because it set definite boundaries on the patent protection sought. In re Barr, 444 F.2d 588, 170 USPQ 330(CCPA 1971).
In a claim that was directed to a kit of component parts capable of being assembled, the court held that limitations such as “members adapted to be positioned” and “portions . . . being resiliently dilatable whereby said housing may be slidably positioned” serve to precisely define present structural attributes of interrelated component parts of the claimed assembly. In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976).
Notwithstanding the permissible instances, the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514
F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs “when the inventor is painstaking when he recites what has
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already been seen, and then uses conveniently functional language at the exact point of novelty”) (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942) (holding indefinite claims that recited substantially pure carbon black “in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior”). Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). See also Datamize LLC v. Plumtree Software Inc., 75 USPQ2d 1801 (Fed. Cir. 2005) where a claim directed to a software based system for creating a customized computer interface screen recited that the screen be "aesthetically pleasing," which is an intended result and does not provide a clear cut indication of scope because it imposed no structural limits on the screen. Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167. For instance, a single means claim covering every conceivable means for achieving the stated result was held to be invalid under 35 U.S.C. 112, first paragraph because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim. Hyatt, 708 F.2d at 714-715, 218 USPQ at 197. For more information regarding the written description requirement and enablement requirement under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, see MPEP §§ 2161-2164.08(c). Examiners should keep in mind that whether or not the functional limitation complies with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is a different issue from whether the limitation is properly supported under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or is distinguished over the prior art.
When a claim limitation employs functional language, the examiner’s determination of whether the limitation is sufficiently definite will be highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the art). Halliburton Energy Servs., 514 F.3d at 1255, 85 USPQ2d at 1663. For example, a claim that included the term “fragile gel” was found to be indefinite because the definition of the term in the specification was functional, i.e., the fluid is defined by what it does rather than what it is (“ability of the fluid to transition quickly from gel to liquid, and the ability of the fluid to suspend drill cuttings at rest”), and it was ambiguous as to the requisite degree of the fragileness of the gel, the ability of the gel to suspend drill cuttings (i.e., gel strength), and/or some combination of the two. Halliburton Energy Servs., 514 F.3d at 1255-56, 85 USPQ2d at 1663. In another example, the claims directed to a tungsten filament for electric incandescent lamps were held invalid for including a limitation that recited “comparatively large grains of such size and contour as to prevent substantial sagging or offsetting during a normal or commercially useful life for such a lamp or other device.” General Elec. Co., 304 U.S. at 370-71, 375. The Court observed that the prior art filaments also “consisted of comparatively large crystals” but they were “subject to offsetting” or shifting, and the court further found that the phrase “of such size and contour as to prevent substantial sagging and offsetting during a normal or commercially useful life for a lamp or other device” did not adequately define the structural characteristics of the grains (e.g., the size and contour) to distinguish the claimed invention from the prior art. Id. at 370. Similarly, a claim was held invalid because it recited “sustantially (sic) pure carbon black in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior.” United Carbon Co., 317 U.S. at 234. In the latter
example, the Court observed various problems with the limitation: “commercially uniform” meant only the degree of uniformity buyers desired; “comparatively small” did not add anything because no standard for comparison was given; and “spongy” and “porous” are synonyms that the Court found unhelpful in distinguishing the claimed invention from the prior art. Id. at 233.
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In comparison, a claim limitation reciting “transparent to infrared rays” was held to be definite because the specification showed that a substantial amount of infrared radiation was always transmitted even though the degree of transparency varied depending on certain factors. Swinehart, 439 F.2d at 214, 169 USPQ at 230. Likewise, the claims in another case were held definite because applicant provided “a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine whether a process uses a silicon dioxide source ‘essentially free of alkali metal’ to make a reaction mixture ‘essentially free of alkali metal’ to produce a zeolitic compound ‘essentially free of alkali metal.’” In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 293 (Fed. Cir. 1983).
Examiners should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. These factors are examples of points to be considered when determining whether language is ambiguous and are not intended to be all inclusive or limiting. Other factors may be more relevant for particular arts. The primary inquiry is whether the language leaves room for ambiguity or whether the boundaries are clear and precise.
During prosecution, applicant may resolve the ambiguities of a functional limitation in a number of ways. For example: (1) “the ambiguity might be resolved by using a quantitative metric (e.g., numeric limitation as to a physical property) rather than a qualitative functional feature” (see Halliburton Energy Servs., 514 F.3d at 1255-56, 85 USPQ2d at 1663); (2) applicant could demonstrate that the “specification provide[s] a formula for calculating a property along with examples that meet the claim limitation and examples that do not” (see id. at 1256, 85 USPQ2d at 1663 (citing Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1341, 65 USPQ2d 1321, 1326 (Fed. Cir. 2003))); (3) applicant could
demonstrate that the specification provides a general guideline and examples sufficient to teach a person skilled in the art when the claim limitation was satisfied (see Marosi, 710 F.2d at 803, 218 USPQ at 292); or (4) applicant could amend the claims to recite the particular structure that accomplishes the function.
2173.05(h) Alternative Limitations [R-11.2013]
I. MARKUSH GROUPS
Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. A “Markush” claim recites a list of alternatively useable species. In re Harnisch, 631 F.2d 716, 719-20, 206 USPQ 300, 303-04 (CCPA 1980); Ex parte Markush, 1925 Dec. Comm’r Pat. 126, 127 (1924). A Markush claim is commonly formatted as: “selected from the group consisting of A, B, and C;” however, the phrase “Markush claim” means any claim that recites a list of alternatively useable species regardless of format.
Ex parte Markush sanctions claiming a genus expressed as a group consisting of certain specified materials. Inventions in metallurgy, refractories, ceramics, pharmacy, pharmacology and biology are most frequently claimed under the Markush formula but purely mechanical features or process steps may also be claimed by using the Markush style of claiming. See Ex parte Head, 214 USPQ 551 (Bd. App. 1981); In re Gaubert, 524 F.2d 1222, 187 USPQ 664 (CCPA 1975); In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980). It is improper to use the term “comprising” instead of “consisting of.” Ex parte Dotter, 12 USPQ 382 (Bd. App. 1931).
The use of Markush claims of diminishing scope should not, in itself, be considered a sufficient basis for objection to or rejection of claims. However, if such a practice renders the claims indefinite or if it results in undue multiplicity, an appropriate rejection should be made.
A Markush claim may encompass a large number of alternative species, but is not necessarily indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112,
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second paragraph for such breadth. In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is not indefiniteness.”). In certain circumstances, however, a Markush group may be so expansive that persons skilled in the art cannot determine the metes and bounds of the claimed invention. For example, a Markush group that encompasses a massive number of distinct alternative species may be indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph if one skilled in the art cannot determine the metes and bounds of the claim due to an inability to envision all of the members of the Markush group. In such a circumstance, an examiner may reject the claim for indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Similarly, the double inclusion of an element by members of a Markush group is not, in itself, sufficient basis for objection to or rejection of claims. Rather, the facts in each case must be evaluated to determine whether or not the multiple inclusion of one or more elements in a claim renders that claim indefinite. The mere fact that a compound may be embraced by more than one member of a Markush group recited in the claim does not necessarily render the scope of the claim unclear. For example, the Markush group, “selected from the group consisting of amino, halogen, nitro, chloro and alkyl” should be acceptable even though “halogen” is generic to “chloro.”
The materials set forth in the Markush group ordinarily must belong to a recognized physical or chemical class or to an art-recognized class. However, when the Markush group occurs in a claim reciting a process or a combination (not a single compound), it is sufficient if the members of the group are disclosed in the specification to possess at least one property in common which is mainly responsible for their function in the claimed relationship, and it is clear from their very nature or from the prior art that all of them possess this property. While in the past the test for Markush-type claims was applied as liberally as possible, present practice which holds that claims reciting Markush groups are not generic claims (MPEP § 803) may subject the groups to a more stringent test for propriety of the recited members. Where a Markush expression is applied only to a portion of a chemical compound, the propriety of the grouping is
determined by a consideration of the compound as a whole, and does not depend on there being a community of properties in the members of the Markush expression.
When materials recited in a claim are so related as to constitute a proper Markush group, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper.
Subgenus Claim
Genus, subgenus, and Markush-type claims, if properly supported by the disclosure, are all acceptable ways for applicants to claim their inventions. They provide different ways to present claims of different scope. Examiners should therefore not reject Markush-type claims merely because there are genus claims that encompass the Markush-type claims.
See also MPEP § 608.01(p) and § 715.03.
See MPEP § 803.02 for restriction practice re Markush-type claims.
II. “OR” TERMINOLOGY
Alternative expressions using “or” are acceptable, such as “wherein R is A, B, C, or D.” The following phrases were each held to be acceptable and not in violation of 35 U.S.C. 112, second paragraph in In re Gaubert, 524 F.2d 1222, 187 USPQ 664 (CCPA 1975): “made entirely or in part of”; “at least one piece”; and “iron, steel or any other magnetic material.”
III. “OPTIONALLY”
An alternative format which requires some analysis before concluding whether or not the language is indefinite involves the use of the term “optionally.” In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language “containing A, B, and optionally C” was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim. A
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similar holding was reached with regard to the term “optionally” in Ex parte Wu, 10 USPQ2d 2031 (Bd. Pat. App. & Inter. 1989). In the instance where the list of potential alternatives can vary and ambiguity arises, then it is proper to make a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and explain why there is confusion.
2173.05(i) Negative Limitations [R-11.2013]
The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. So long as the boundaries of the patent protection sought are set forth definitely, albeit negatively, the claim complies with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Some older cases were critical of negative limitations because they tended to define the invention in terms of what it was not, rather than pointing out the invention. Thus, the court observed that the limitation “R is an alkenyl radical other than 2-butenyl and 2,4-pentadienyl” was a negative limitation that rendered the claim indefinite because it was an attempt to claim the invention by excluding what the inventors did not invent rather than distinctly and particularly pointing out what they did invent. In re Schechter, 205 F.2d 185, 98 USPQ 144 (CCPA 1953).
A claim which recited the limitation “said homopolymer being free from the proteins, soaps, resins, and sugars present in natural Hevea rubber” in order to exclude the characteristics of the prior art product, was considered definite because each recited limitation was definite. In re Wakefield, 422 F.2d 897, 899, 904, 164 USPQ 636, 638, 641 (CCPA 1970). In addition, the court found that the negative limitation “incapable of forming a dye with said oxidized developing agent” was definite because the boundaries of the patent protection sought were clear. In re Barr, 444 F.2d 588, 170 USPQ 330 (CCPA 1971).
Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ
187, 196 (CCPA 1977) (“[the] specification, having described the whole, necessarily described the part
remaining.”). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). The mere absence of a positive recitation is not basis for an exclusion. Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. Note that a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993). See MPEP § 2163 - § 2163.07(b) for a discussion of the written description requirement of 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph.
2173.05(j) Old Combination [R-11.2013]
A CLAIM SHOULD NOT BE REJECTED ON THE GROUND OF OLD COMBINATION
With the passage of the 1952 Patent Act, the courts and the Board have taken the view that a rejection based on the principle of old combination is NO LONGER VALID. Claims should be considered proper so long as they comply with the provisions of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
A rejection on the basis of old combination was based on the principle applied in Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 37 USPQ 1 (1938). The principle was that an inventor who made an improvement or contribution to but one element of a generally old combination, should not be able to obtain a patent on the entire combination including the new and improved element. A rejection required the citation of a single reference which broadly disclosed a combination of the claimed elements functionally cooperating in substantially the same manner to produce substantially the same results as that of the claimed combination. The case of In re Hall, 208 F.2d 370, 100 USPQ 46 (CCPA 1953) illustrates an application of this principle.
The court pointed out in In re Bernhart, 417 F.2d 1395, 163 USPQ 611 (CCPA 1969) that the statutory language (particularly point out and distinctly claim)
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is the only proper basis for an old combination rejection, and in applying the rejection, that language determines what an applicant has a right and obligation to do. A majority opinion of the Board of Appeals held that Congress removed the underlying rationale of Lincoln Engineering in the 1952 Patent Act, and thereby effectively legislated that decision out of existence. Ex parte Barber, 187 USPQ 244 (Bd. App. 1974). Finally, the Court of Appeals for the Federal Circuit, in Radio Steel and Mfg. Co. v. MTD Products, Inc., 731 F.2d 840, 221 USPQ 657 (Fed. Cir. 1984), followed the Bernhart case, and ruled that a claim was not invalid under Lincoln Engineering because the claim complied with the requirements of 35 U.S.C. 112, second paragraph. Accordingly, a claim should not be rejected on the ground of old combination.
2173.05(k) Aggregation [R-08.2012]
A claim should not be rejected on the ground of “aggregation.” In re Gustafson, 331 F.2d 905, 141 USPQ 585 (CCPA 1964) (an applicant is entitled to know whether the claims are being rejected under 35 U.S.C. 101, 102, 103, or 112); In re Collier, 397 F.2d 1003, 1006, 158 USPQ 266, 268 (CCPA 1968) (“[A] rejection for ‘aggregation’ is non-statutory.”).
If a claim omits essential matter or fails to interrelate essential elements of the invention as defined by applicant(s) in the specification, see MPEP § 2172.01.
2173.05(l) [Reserved]
2173.05(m) Prolix [R-08.2012]
Examiners should reject claims as prolix only when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby. Claims are rejected as prolix when they contain long recitations
that the metes and bounds of the claimed subject matter cannot be determined.
2173.05(n) Multiplicity [R-11.2013]
37 CFR 1.75 Claim(s).
(a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
(b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.
*****
Where, in view of the nature and scope of applicant’s invention, applicant presents an unreasonable number of claims which are repetitious and multiplied, the net result of which is to confuse rather than to clarify, a rejection on undue multiplicity based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, may be appropriate. As noted by the court in In re Chandler, 319 F.2d 211, 225, 138 USPQ 138, 148 (CCPA 1963), “applicants should be allowed reasonable latitude in stating their claims in regard to number and phraseology employed. The right of applicants to freedom of choice in selecting phraseology which truly points out and defines their inventions should not be abridged. Such latitude, however, should not be extended to sanction that degree of repetition and multiplicity which beclouds definition in a maze of confusion. The rule of reason should be practiced and applied on the basis of the relevant facts and circumstances in each individual case.” See also In re Flint, 411 F.2d 1353, 1357, 162 USPQ 228, 231 (CCPA 1969). Undue multiplicity rejections based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, should be applied judiciously and should be rare.
If an undue multiplicity rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate, the examiner should contact applicant by telephone explaining that the claims are unduly multiplied and will be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Note MPEP § 408. The examiner should also request that applicant select a specified number of claims for purpose of examination. If applicant is willing to select, by telephone, the claims for examination, an undue multiplicity rejection on all the claims
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based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, should be made in the next Office action along with an action on the merits on the selected claims. If applicant refuses to comply with the telephone request, an undue multiplicity rejection of all the claims based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, should be made in the next Office action. Applicant’s reply must include a selection of claims for purpose of examination, the number of which may not be greater than the number specified by the examiner. In response to applicant’s reply, if the examiner adheres to the undue multiplicity rejection, it should be repeated and the selected claims will be examined on the merits. This procedure preserves applicant’s right to have the rejection on undue multiplicity reviewed by the Patent Trail and Appeal Board.
Also, it is possible to reject one claim over an allowed claim if they differ only by subject matter old in the art. This ground of rejection is set forth in Ex parte Whitelaw, 1915 C.D. 18, 219 O.G. 1237
(Comm’r Pat. 1914). The Ex parte Whitelaw doctrine is restricted to cases where the claims are unduly multiplied or are substantial duplicates. Ex parte Kochan, 131 USPQ 204, 206 (Bd. App. 1961).
2173.05(o) Double Inclusion [R-08.2012]
There is no per se rule that “double inclusion” is improper in a claim. In re Kelly, 305 F.2d 909, 916, 134 USPQ 397, 402 (CCPA 1962) (“Automatic reliance upon a ‘rule against double inclusion’ will lead to as many unreasonable interpretations as will automatic reliance upon a ‘rule allowing double inclusion’. The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.”). Older cases, such as Ex parte White, 759 O.G. 783 (Bd. App. 1958) and Ex parte Clark, 174 USPQ 40 (Bd. App. 1971) should be applied with care, according to the facts of each case.
The facts in each case must be evaluated to determine whether or not the multiple inclusion of one or more elements in a claim gives rise to indefiniteness in that claim. The mere fact that a compound may be embraced by more than one member of a Markush group recited in the claim does not lead to any uncertainty as to the scope of
that claim for either examination or infringement purposes. On the other hand, where a claim directed to a device can be read to include the same element twice, the claim may be indefinite. Ex parte Kristensen, 10 USPQ2d 1701 (Bd. Pat. App. & Inter. 1989).
2173.05(p) Claim Directed to Product-By- Process or Product and Process [R-11.2013]
There are many situations where claims are permissively drafted to include a reference to more than one statutory class of invention.
I. PRODUCT-BY-PROCESS
A product-by-process claim, which is a product claim that defines the claimed product in terms of the process by which it is made, is proper. In re Luck, 476 F.2d 650, 177 USPQ 523 (CCPA 1973); In re Pilkington, 411 F.2d 1345, 162 USPQ 145
(CCPA 1969); In re Steppan, 394 F.2d 1013, 156 USPQ 143 (CCPA 1967). A claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, so long as it is clear that the claim is directed to the product and not the process.
An applicant may present claims of varying scope even if it is necessary to describe the claimed product in product-by-process terms. Ex parte Pantzer, 176 USPQ 141 (Bd. App. 1972).
II. PRODUCT AND PROCESS IN THE SAME CLAIM
A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 97 USPQ2d 1737 (Fed. Cir. 2011). In Katz, a claim directed to “[a] system with an interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data” was determined to be indefinite because the italicized claim limitation is not directed to the system, but
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rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. Katz, 639 F.3d at 1318 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited “an input means” and required a user to use the input means was found to be indefinite because it was unclear “whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.”); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).
2173.05(q) “Use” Claims [R-11.2013]
Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: “[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon” was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
Other decisions suggest that a more appropriate basis for this type of rejection is 35 U.S.C. 101. In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: “The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.” In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: “The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.”
Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415
F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.
I. A “USE” CLAIM SHOULD BE REJECTED UNDER ALTERNATIVE GROUNDS BASED ON 35 U.S.C 101 AND 112
In view of the split of authority as discussed above, the most appropriate course of action would be to reject a “use” claim under alternative grounds based on 35 U.S.C. 101 and 112 .
II. BOARD HELD STEP OF “UTILIZING” WAS NOT INDEFINITE
It is often difficult to draw a fine line between what is permissible, and what is objectionable from the perspective of whether a claim is definite. In the case of Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992), the Board held that a claim which clearly recited the step of “utilizing” was not indefinite under 35 U.S.C. 112, second paragraph. (Claim was to “A method for unloading nonpacked, nonbridging and packed, bridging flowable particle catalyst and bead material from the opened end of a reactor tube which comprises utilizing the nozzle of claim 7.”).
2173.05(r) Omnibus Claim [R-11.2013]
Some applications are filed with an omnibus claim which reads as follows: A device substantially as shown and described. This claim should be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because it is indefinite in that it fails to point out what is included or excluded by the claim language. See Ex parte Fressola, 27 USPQ2d 1608 (Bd. Pat. App. & Inter. 1993), for a discussion of the history of omnibus claims and an explanation of why omnibus claims do not comply with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Such a claim can be rejected using form paragraph 7.35. See MPEP § 706.03(d).
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For cancellation of such a claim by examiner’s amendment, see MPEP § 1302.04(b).
2173.05(s) Reference to Figures or Tables [R-08.2012]
Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table “is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.” Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted).
Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. See MPEP § 608.01(m).
2173.05(t) Chemical Formula [R-11.2013]
Claims to chemical compounds and compositions containing chemical compounds often use formulas that depict the chemical structure of the compound. These structures should not be considered indefinite nor speculative in the absence of evidence that the assigned formula is in error. The absence of corroborating spectroscopic or other data cannot be the basis for finding the structure indefinite. See Ex parte Morton, 134 USPQ 407 (Bd. App. 1961), and Ex parte Sobin, 139 USPQ 528 (Bd. App. 1962).
A claim to a chemical compound is not indefinite merely because a structure is not presented or because a partial structure is presented. For example, the claim language at issue in In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 1970) referred to a chemical compound as a “polypeptide of at least 24 amino acids having the following sequence.” A rejection under pre-AIA 35 U.S.C. 112, second paragraph, for failure to identify the entire structure was reversed and the court held: “While the absence of such a limitation obviously broadens the claim and raises questions of sufficiency of disclosure, it
does not render the claim indefinite.” Chemical compounds may be claimed by a name that adequately describes the material to one skilled in the art. See Martin v. Johnson, 454 F.2d 746, 172 USPQ 391 (CCPA 1972). A compound of unknown structure may be claimed by a combination of physical and chemical characteristics. See Ex parte Brian, 118 USPQ 242 (Bd. App. 1958). A compound may also be claimed in terms of the process by which it is made without raising an issue of indefiniteness.
2173.05(u) Trademarks or Trade Names in a Claim [R-11.2013]
The presence of a trademark or trade name in a claim is not, per se, improper under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, but the claim should be carefully analyzed to determine how the mark or name is used in the claim. It is important to recognize that a trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. See definitions of trademark and trade name in MPEP § 608.01(v).
If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. In fact, the value of a trademark would be lost to the extent that it became descriptive of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to identify or describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name.
If a trademark or trade name appears in a claim and is not intended as a limitation in the claim, the question of why it is in the claim should be addressed. If its presence in the claim causes confusion as to the scope of the claim, then the claim
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should be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
2173.05(v) Mere Function of Machine [R-11.2013]
Process or method claims are not subject to rejection by U.S. Patent and Trademark Office examiners under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, solely on the ground that they define the inherent function of a disclosed machine or apparatus. In re Tarczy-Hornoch, 397 F.2d 856, 158 USPQ 141 (CCPA 1968). The court in Tarczy-Hornoch held that a process claim, otherwise patentable, should not be rejected merely because the application of which it is a part discloses an apparatus which will inherently carry out the recited steps.
2173.06 Practice Compact Prosecution [R-07.2015]
I. INTERPRET THE CLAIM AND APPLY ART WITH AN EXPLANATION OF HOW AN INDEFINITE TERM IS INTERPRETED
The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the chance to provide evidence of patentability and otherwise reply completely at the earliest opportunity. See MPEP § 706. Under the principles of compact prosecution, the examiner should review each claim for compliance with every statutory requirement for patentability in the initial review of the application and identify all of the applicable grounds of rejection in the first Office action to avoid unnecessary delays in the prosecution of the application. See 37 CFR 1.104(a)(1) (“On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application . . . with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.”).
Thus, when the examiner determines that a claim term or phrase renders the claim indefinite, the examiner should make a rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as well as a rejection(s) in view of the prior art under 35 U.S.C. 102 or 103 that renders the prior art applicable based on the examiner’s interpretation of the claim. See In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014) (stating that the prima facie case is appropriately used for making an indefiniteness rejection). When making a rejection over prior art in these circumstances, it is important that the examiner state on the record how the claim term or phrase is being interpreted with respect to the prior art applied in the rejection. By rejecting each claim on all reasonable grounds available, the examiner can avoid piecemeal examination. See MPEP § 707.07(g) (“Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available . . . .”).
II. PRIOR ART REJECTION OF CLAIM REJECTED AS INDEFINITE
All words in a claim must be considered in judging the patentability of a claim against the prior art. In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). The fact that terms may be indefinite does not make the claim obvious over the prior art. When the terms of a claim are considered to be indefinite, at least two approaches to the examination of an indefinite claim relative to the prior art are possible.
First, where the degree of uncertainty is not great, and where the claim is subject to more than one interpretation and at least one interpretation would render the claim unpatentable over the prior art, an appropriate course of action would be for the examiner to enter two rejections: (A) a rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; and (B) a rejection over the prior art based on the interpretation of the claims which renders the prior art applicable. See, e.g., Ex parte Ionescu, 222 USPQ 537 (Bd. App. 1984). When making a rejection over prior art in these circumstances, it is important for the examiner to point out how the claim is being interpreted. Second, where there is a great deal of confusion and uncertainty as to the
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proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
The first approach is recommended from an examination standpoint because it avoids piecemeal examination in the event that the examiner’s 35 U.S.C. 112, second paragraph rejection is not affirmed, and may give applicant a better appreciation for relevant prior art if the claims are redrafted to avoid the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph rejection.
2174 Relationship Between the Requirements of 35 U.S.C. 112(a) and (b) or Pre-AIA 35 U.S.C. 112, First and Second Paragraphs [R-11.2013]
The requirements of 35 U.S.C. 112(a) and (b) or the first and second paragraphs of pre-AIA 35 U.S.C. 112 are separate and distinct. If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground. In re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970). If the specification discloses that a particular feature or element is critical or essential to the practice of the invention, failure to recite or include that particular feature or element in the claims may provide a basis for a rejection based on the ground that those claims are not supported by an enabling disclosure. In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). In Mayhew, the examiner argued that the only mode of operation of the process disclosed in the specification involved the use of a cooling zone at a particular location in the processing cycle. The claims were rejected because they failed to specify either a cooling step or the location of the step in the process. The court was convinced that
the cooling bath and its location were essential, and held that claims which failed to recite the use of a cooling zone, specifically located, were not supported by an enabling disclosure (35 U.S.C. 112, first paragraph).
In addition, if a claim is amended to include an invention that is not described in the application as filed, a rejection of that claim under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as being directed to subject matter that is not described in the specification as filed may be appropriate. In re Simon, 302 F.2d 737, 133 USPQ 524 (CCPA 1962). In Simon, which involved a reissue application containing claims to a reaction product of a composition, applicant presented claims to a reaction product of a composition comprising the subcombinationA+B+C, whereas the original claims and description of the invention were directed to a composition comprising the combination A+B+C+D+E. The court found no significant support for the argument that ingredients D+E were not essential to the claimed reaction product and concluded that claims directed to the reaction product of a subcombination A+B+C were not described (35 U.S.C. 112, first paragraph) in the application as filed. See also In re Panagrossi, 277 F.2d 181, 125 USPQ 410 (CCPA 1960).
2175 -2180 [Reserved]
2181 Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation [R-07.2015]
This section sets forth guidelines for the examination of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, “means or step plus function” limitations in a claim. These guidelines are based on the Office’s current understanding of the law and are believed to be fully consistent with binding precedent of the Supreme Court, the Federal Circuit and the Federal Circuit’s predecessor courts. These guidelines do not constitute substantive rulemaking and hence do not have the force and effect of law.
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The Court of Appeals for the Federal Circuit, in its en banc decision In re Donaldson Co., 16 F.3d
1189, 1194, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994), held that a “means-or-step-plus-function” limitation should be interpreted as follows:
Per our holding, the “broadest reasonable interpretation” that an examiner may give means-plus-function language is that statutorily mandated in paragraph six. Accordingly, the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.
Therefore, the broadest reasonable interpretation of a claim limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is the structure, material or act described in the specification as performing the entire claimed function and equivalents to the disclosed structure, material or act. As a result, section 112(f) or pre-AIA section 112, sixth paragraph, limitations will, in some cases, be afforded a more narrow interpretation than a limitation that is not crafted in “means plus function” format.
I. DETERMINING WHETHER A CLAIM LIMITATION INVOKES 35 U.S.C. 112(f) or PRE-AIA 35 U.S.C. 112, SIXTH PARAGRAPH
The USPTO must apply 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph in appropriate cases, and give claims their broadest reasonable interpretation, in light of and consistent with the written description of the invention in the application. See Donaldson, 16 F.3d at 1194, 29 USPQ2d at 1850 (stating that 35 U.S.C. 112, sixth paragraph “merely sets a limit on how broadly the PTO may construe means-plus-function language under the rubric of reasonable interpretation’”). The Federal Circuit has held that applicants (and reexamination patentees) before the USPTO have the opportunity and the obligation to define their inventions precisely during proceedings before the USPTO. See In re Morris, 127 F.3d 1048, 1056–57, 44 USPQ2d 1023, 1029–30 (Fed. Cir. 1997) (35 U.S.C. 112, second paragraph places the burden of precise claim drafting on the applicant); In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989) (manner of claim interpretation that is used by courts in litigation is not the manner of claim interpretation that is applicable during prosecution of a pending application before the USPTO); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425, 44 USPQ2d 1103, 1107 (Fed. Cir. 1997) (patentee who had a clear opportunity to negotiate broader claims during prosecution but did not do so, may not seek to expand the claims through the doctrine of equivalents, for it is the patentee, not the public, who must bear the cost of failure to seek protection for this foreseeable alteration of its claimed structure).
If a claim limitation recites a term and associated functional language, the examiner should determine whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The claim limitation is presumed to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph when it explicitly uses the term “means” or “step” and includes functional language. That presumption is overcome when the limitation further includes the structure necessary to perform the recited function.
TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259-60, 85 USPQ2d 1787, 1789 (Fed. Cir. 2008) (“Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.”); see also Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1376, 65 USPQ2d 1865, 1874 (Fed. Cir. 2003).
By contrast, a claim limitation that does not use the term “means” or “step” will trigger the rebuttable presumption that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph does not apply. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1310, 75 USPQ2d 1321, 1324 (Fed. Cir. 2005) (en banc); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1369, 62 USPQ2d 1658, 1664 (Fed. Cir. 2002); Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 703-04, 48 USPQ2d 1880, 1886–87 (Fed. Cir. 1998). The presumption is overcome when "the claim term fails to 'recite sufficiently definite structure' or else recites 'function without reciting sufficient structure for performing that function.'" Williamson v. Citrix Online, LLC, 792 F.3d 1339,
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1348, 115 USPQ2d 1105, 1111 (Fed. Cir. 2015) ( en banc) (quoting Watts v. XL Systems, Inc., 232 F.3d 877, 880 (Fed. Cir. 2000); see also Personalized Media Communications, LLC v. International Trade Commission, 161 F. 3d 696, 704 (Fed. Cir. 1998). Instead of using "means" or "step" in such cases, a substitute term acts as a generic placeholder for the term "means" and would not be recognized by one of ordinary skill in the art as being sufficiently definite structure for performing the claimed function. "The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Williamson, 792 F.3d at 1349, 115 USPQ2d at 1111; see also Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996).
Accordingly, examiners will apply 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph to a claim limitation if it meets the following 3-prong analysis:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
A. The Claim Limitation Uses the Term “Means” or “Step” or a Generic Placeholder (A Term That Is Simply A Substitute for “Means”)
With respect to the first prong of this analysis, a claim element that does not include the term “means” or “step” triggers a rebuttable presumption that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply. When the claim limitation does not use the term “means,” examiners should determine whether the presumption that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6 does
not apply is overcome. The presumption may be overcome if the claim limitation uses a generic placeholder (a term that is simply a substitute for the term “means”). The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6: “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for.” Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096, 89 USPQ2d 1289, 1293-94 (Fed. Cir. 2008); Massachusetts Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354, 80 USPQ2d 1225, 1228 (Fed. Cir. 2006); Personalized Media, 161 F.3d at 704, 48 USPQ2d
at 1886–87; Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214-1215, 48 USPQ2d 1010, 1017 (Fed. Cir. 1998). This list is not exhaustive, and other generic placeholders may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6.
However, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6 will not apply if persons of ordinary skill in the art reading the specification understand the term to have a sufficiently definite meaning as the name for the structure that performs the function, even when the term covers a broad class of structures or identifies the structures by their function (e.g., “filters,” “brakes,” “clamp,” “screwdriver,” and “locks”). Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1372-73, 66 USPQ2d 1444, 1451-52 (Fed. Cir. 2003); CCS Fitness, 288 F.3d at 1369, 62 USPQ2d at 1664; Watts v. XL Sys. Inc., 232 F.3d 877, 880-81, 56 USPQ2d 1836, 1839 (Fed. Cir. 2000); Personalized Media, 161 F.3d at 704, 48 USPQ2d at 1888; Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583, 39 USPQ2d 1783, 1786 (Fed. Cir. 1996) (“Many devices take their names from the functions they perform.”) The term is not required to denote a specific structure or a precise physical structure to avoid the application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6. See Watts, 232 F.3d at 880, 56 USPQ2d at 1838; Inventio AG v. Thyssenkrupp Elevator Americas Corp., 649 F.3d 1350, 99 USPQ2d 1112 (Fed. Cir. 2011) (holding that the claim terms "modernizing device" and "computing unit" when read in light of the specification connoted sufficient, definite structure to one of skill in the art to preclude application of 35 U.S.C. 112, sixth
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paragraph). The following are examples of structural terms that have been found not to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6: “circuit,” “detent mechanism,” “digital detector,” “reciprocating member,” “connector assembly,” “perforation,” “sealingly connected joints,” and “eyeglass hanger member.” See Mass. Inst. of Tech., 462 F.3d at 1355-1356, 80 USPQ2d at 1332 (the court found the recitation of "aesthetic correction circuitry" sufficient to avoid pre-AIA 35 U.S.C. 112, paragraph 6, treatment because the term circuit, combined with a description of the function of the circuit, connoted sufficient structure to one of ordinary skill in the art.); Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1321, 72 USPQ2d 1065, 1071 (Fed. Cir. 2004); Apex, 325 F.3d at 1373, 66 USPQ2d at 1452; Greenberg, 91 F.3d at 1583-84, 39 USPQ2d at 1786; Personalized Media, 161 F.3d at 704-05, 39 USPQ2d at 1786; CCS Fitness, 288 F.3d at 1369-70, 62 USPQ2d at
1664-65; Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996); Watts, 232 F.3d at 881, 56 USPQ2d at 1839; Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318-19, 50 USPQ2d 1161, 1166-67 (Fed. Cir. 1999).
For a term to be considered a substitute for “means,” and lack sufficient structure for performing the function, it must serve as a generic placeholder and thus not limit the scope of the claim to any specific manner or structure for performing the claimed function. It is important to remember that there are no absolutes in the determination of terms used as a substitute for “means” that serve as generic placeholders. The examiner must carefully consider the term in light of the specification and the commonly accepted meaning in the technological art. Every application will turn on its own facts.
If the examiner has not interpreted a claim limitation as invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph and an applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant must either: (A) amend the claim to include the phrase “means” or “step”; or (B) rebut the presumption that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph does not apply by showing that the claim limitation is written as a function to be performed and does not recite
sufficient structure, material, or acts to perform that function. See Watts, 232 F.3d at 881, 56 USPQ2d at 1839 (Fed. Cir. 2000) (Claim limitations were held not to invoke 35 U.S.C. 112, sixth paragraph, because the absence of the term “means” raised the presumption that the limitations were not in means-plus-function form and the applicant did not rebut that presumption.); see also Masco Corp. v. United States, 303 F.3d 1316, 1327, 64 USPQ2d 1182, 1189 (Fed. Cir. 2002) (“[W]here a method claim does not contain the term ‘step[s] for,’ a limitation of that claim cannot be construed as a step-plus-function limitation without a showing that the limitation contains no act.”).
Some of the following examples illustrate situations where the term “means” or “step” was not used but either the Board or courts nevertheless determined that the claim limitation fell within the scope of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Note that the examples are fact specific and should not be applied as per se rules. See Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352,
1356, 50 USPQ2d 1372, 1374–75 (Fed. Cir.1999) (“ink delivery means positioned on …” invokes 35 U.S.C. 112, sixth paragraph since the phrase “ink delivery means” is equivalent to “means for ink delivery”); Seal-Flex, Inc. v. Athletic Track and Court Construction, 172 F.3d 836, 850, 50 USPQ2d 1225, 1234 (Fed. Cir. 1999) (Rader, J., concurring) (“Claim elements without express step-plus-function language may nevertheless fall within Section 112, Para. 6 if they merely claim the underlying function without recitation of acts for performing that function…. In general terms, the ‘underlying function’ of a method claim element corresponds to
what that element ultimately accomplishes in relationship to what the other elements of the claim and the claim as a whole accomplish. ‘Acts,’ on the other hand, correspond to how the function is accomplished…. If the claim element uses the phrase ‘step for,’ then Section 112, Para. 6 is presumed to apply…. On the other hand, the term ‘step’ alone and the phrase ‘steps of’ tend to show that Section 112, Para. 6 does not govern that limitation.”);
Personalized Media, 161 F.3d at 703–04, 48 USPQ2d at 1886–87 (Fed. Cir. 1998); Mas-Hamilton, 156 F.3d at 1213, 48 USPQ2d at
1016 (Fed. Cir. 1998) (“lever moving element for moving the lever” and “movable link member for
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holding the lever…and for releasing the lever” were construed as means-plus-function limitations invoking 35 U.S.C. 112, sixth paragraph since the claimed limitations were described in terms of their function rather than their mechanical structure); Ethicon, Inc. v. United States Surgical Corp., 135
F.3d 1456, 1463, 45 USPQ2d 1545, 1550 (Fed. Cir. 1998) (“use of the word ‘means’ gives rise to a presumption that the inventor used the term advisedly to invoke the statutory mandates for means-plus-function clauses”) (quotation omitted). However, compare Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1317-19, 50 USPQ2d 1161, 1166-67 (Fed. Cir. 1999) (holding that although the claim elements “eyeglass hanger member” and “eyeglass contacting member” include a function, these claim elements do not invoke 35 U.S.C. 112, sixth paragraph because the claims themselves contain sufficient structural limitations for performing these functions); O.I. Corp. v. Tekmar, 115 F.3d 1576, 1583, 42 USPQ2d 1777, 1782 (Fed. Cir. 1997) (method claim that paralleled means-plus-function apparatus claim but lacked “step for” language did not invoke 35 U.S.C. 112, sixth paragraph).
When applicant uses the term “means” or “step” in the preamble, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph may be appropriate when it is unclear whether the preamble is reciting a means- (or step-) plus- function limitation or whether the preamble is merely stating the intended use of the claimed invention. If applicant uses a structural or generic placeholder with the word “for” or other linking word in the preamble, the examiner should not construe such phrase as reciting a means-plus-function limitation.
The Examiner is reminded that, absent a determination that a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the broadest reasonable interpretation will not be limited to “corresponding structure… and equivalents thereof.” Morris, 127 F.3d at 1055, 44 USPQ2d at 1028 (“no comparable mandate in the patent statute that relates the claim scope of non-§ 112 paragraph 6 claims to particular matter found in the specification”).
B. The Term “Means” or “Step” or the Generic Placeholder Must Be Modified By Functional Language
With respect to the second prong of this analysis, it must be clear that the element in the claims is set forth, at least in part, by the function it performs as opposed to the specific structure, material, or acts that perform the function. See York Prod., Inc. v. Central Tractor Farm & Family Center, 99 F.3d 1568, 1574, 40 USPQ2d 1619, 1624 (Fed. Cir. 1996) (holding that a claim limitation containing the term “means” does not invoke 35 U.S.C. 112, sixth paragraph, if the claim limitation does not link the term “means” to a specific function). Caterpillar Inc. v. Detroit Diesel Corp., 41 USPQ2d 1876, 1882 (N.D. Ind. 1996) (stating that 35 U.S.C. 112, sixth paragraph, “applies to functional method claims where the element at issue sets forth a step for reaching a particular result, but not the specific technique or procedure used to achieve the result.”); O.I. Corp., 115 F.3d at 1582-83, 42 USPQ2d at 1782 (With respect to process claims, “[35 U.S.C. 112, sixth paragraph] is implicated only when steps plus function without acts are present…. If we were to construe every process claim containing steps described by an ‘ing’ verb, such as passing, heating, reacting, transferring, etc., into a step-plus-function, we would be limiting process claims in a manner never intended by Congress.” (emphasis in original)); see also Baran v. Medical Device Techs., Inc., 616 F.3d 1309, 1317, 96 USPQ2d 1057, 1063 (Fed. Cir. 2010) (the claimed function may include the functional language that precedes the phrase “means for.”). However, “the fact that a particular mechanism…is defined in functional terms is not sufficient to convert a claim element containing that term into a ‘means for performing a specified function’ within the meaning of section 112(6).” Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d
1580, 1583, 39 USPQ2d 1783, 1786 (Fed. Cir. 1996) (“detent mechanism” defined in functional terms was not intended to invoke 35 U.S.C. 112, sixth paragraph); see also Al-Site Corp. v. VSI International Inc., 174 F.3d 1308, 1318, 50 USPQ2d 1161, 1166–67 (Fed. Cir. 1999) (although the claim elements “eyeglass hanger member” and “eyeglass contacting member” include a function, these claim elements do not invoke 35 U.S.C. 112, sixth paragraph, because the claims themselves contain sufficient structural limitations for performing those
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functions). Also, a statement of function appearing only in the claim preamble is generally insufficient to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. O.I. Corp., 115 F.3d at 1583, 42 USPQ2d at 1782 (“[A] statement in a preamble of a result that necessarily follows from performing a series of steps does not convert each of those steps into step- plus-function clauses. The steps of ‘passing’are not individually associated in the claims with functions performed by the steps of passing.”).
The mere use of the term “means” with no associated function rebuts the presumption that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. A function must be recited within the claim limitation, but it is not necessary that a particular format be used. Typically, the claim limitation will use the linking word “for” to associate “means” or a generic placeholder with the function. However, other linking words may be used, such as “so that” or “configured to”, provided it is clear that the claim element is reciting a function. In certain circumstances, it is also not necessary to use a linking word if other words used with “means”, or the generic placeholder, convey the function. Such words, however, cannot convey specific structure for performing the function or the phrase will not be treated as invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, “ink delivery means”, “module configured to deliver ink” and “means for ink delivery” could all be interpreted as claim elements that invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See Signtech USA, 174 F.3d at 1356.
C. The Term “Means” or “Step” or the Generic Placeholder Must Not Be Modified By Sufficient Structure, Material, or Acts for Achieving the Specified Function
With respect to the third prong of this analysis, the term “means” or “step” or the generic placeholder recited in the claim must not be modified by sufficiently definite structure, material, or acts for achieving the specified function. See Seal-Flex, 172 F.3d at 849, 50 USPQ2d at 1234 (Radar, J., concurring) (“Even when a claim element uses language that generally falls under the step-plus-function format, however, [35 U.S.C.] 112 ¶ 6 still does not apply when the claim limitation
itself recites sufficient acts for performing the specified function.”); Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 54 USPQ2d 1449 (Fed. Cir. 2000) (holding “second baffle means” does not invoke 35 U.S.C. 112, sixth paragraph, because the word “baffle” itself imparts structure and the claim further recites the structure of the baffle); Rodime PLC v. Seagate Technology, Inc., 174 F.3d 1294, 1303–04, 50 USPQ2d 1429, 1435–36 (Fed. Cir. 1999) (holding “positioning means for moving” does not invoke 35 U.S.C. 112, sixth paragraph, because the claim further provides a list of the structure underlying the means and the detailed recitation of the structure for performing the moving function removes this element from the purview of 35 U.S.C. 112, sixth paragraph); Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531, 41 USPQ2d 1001, 1006 (Fed. Cir. 1996) (holding “perforation means…for tearing” does not invoke 35 U.S.C. 112, sixth paragraph, because the claim describes the structure supporting the tearing function (i.e., perforation)). In other situations, the Federal Circuit has come to a different conclusion. See Unidynamics Corp. v. Automatic Prod. Int’l, 157 F.3d 1311, 1319, 48 USPQ2d 1099, 1104 (Fed. Cir. 1998) (holding that “spring means” invokes 35 U.S.C. 112, sixth paragraph).
Examiners will apply 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph to a claim limitation that uses the term “means” or “step” or generic placeholder associated with functional language, unless that term is (1) preceded by a structural modifier, defined in the specification as a particular structure or known by one skilled in the art, that denotes the type of structural device (e.g., “filters”), or (2) modified by sufficient structure or material for achieving the claimed function.
A limitation will not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph if there is a structural modifier that further describes the term “means” or “step” or the generic placeholder. For example, although a generic placeholder like “mechanism” standing alone may invoke 35 U.S.C. 112(f) 35 U.S.C. 112, sixth paragraph when coupled with a function, it will not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph when it is preceded by a structural modifier (e.g., “detent mechanism”). Greenberg, 91 F.3d at 1583, 39
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USPQ2d at 1786 (holding that the term “detent mechanism” did not to invoke 35 U.S.C. 112, sixth paragraph because the structural modifier “detent” denotes a type of structural device with a generally understood meaning in the mechanical arts). By contrast, a generic placeholder (e.g., “mechanism,” “element,” “member”) coupled with a function may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph when it is preceded by a non-structural modifier that does not have any generally understood structural meaning in the art (e.g., “colorant selection mechanism,” “lever moving element,” or “movable link member”). See Massachusetts Inst. of Tech., 462 F.3d at 1354, 80
USPQ2d at 1231 (The claim recited use of a colorant selection mechanism, to which the court performed a means-plus-function analysis under pre-AIA 35 U.S.C. 112, sixth paragraph. The court held that the term "colorant selection", which modifies the generic term "mechanism", was not defined in the specification, had no dictionary definition, nor any generally understood meaning in the art, the term does not connote sufficient structure to a person of ordinary skill in the art to avoid pre-AIA 35 U.S.C. 112, sixth paragraph treatment.); Mas-Hamilton, 156 F.3d at 1214-1215, 48 USPQ2d at 1017.
To determine whether a word, term, or phrase coupled with a function denotes structure, examiners should check whether: (1) the specification provides a description sufficient to inform one of ordinary skill in the art that the term denotes structure; (2) general and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and (3) the prior art provides evidence that the term has an art-recognized structure to perform the claimed function. Ex parte Rodriguez, 92 USPQ2d 1395, 1404 (Bd. Pat. App. & Int. 2009) (precedential). “The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349, 115 USPQ2d 1105, 1111 (Fed. Cir. 2015).
During examination, however, applicants have the opportunity and the obligation to define their inventions precisely, including whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35
U.S.C. 112, sixth paragraph. Thus, if the term “means” or “step” or a generic placeholder is modified by sufficient structure, material or acts for achieving the specified function, the USPTO will consider that presumption has been rebutted and will not apply 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, until such modifying language is deleted from the claim limitation.
It is necessary to decide on an element by element basis whether 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applies. Not all terms in a means-plus-function or step-plus-function clause are limited to what is disclosed in the written description and equivalents thereof, since 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applies only to the interpretation of the means or step that performs the recited function. See, e.g., IMS Technology Inc. v. Haas Automation Inc., 206 F.3d 1422, 54 USPQ2d 1129 (Fed. Cir. 2000) (the term “data block” in the phrase “means to sequentially display data block inquiries” was not the means that caused the sequential display, and its meaning was not limited to the disclosed embodiment and equivalents thereof). Each claim must be independently reviewed to determine the applicability of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, even where the application contains substantially similar process and apparatus claims. O.I. Corp., 115 F.3d at 1583-1584, 42 USPQ2d at 1782 (“We understand that the steps in the method claims are essentially in the same language as the limitations in the apparatus claim, albeit without the ‘means for’qualification…. Each claim must be independently reviewed in order to determine if it is subject to the requirements of section 112, ¶ 6. Interpretation of claims would be confusing indeed if claims that are not means- or step- plus function were to be interpreted as if they were, only because they use language similar to that used in other claims that are subject to this provision.”).
Where a claim limitation meets the 3-prong analysis and is being treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the examiner will include a statement in the Office action that the claim limitation is being treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See MPEP § 2181, subsection VI., below.
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If a claim limitation uses the term “means” or “step,” but the examiner determines that either the second prong or the third prong of the 3-prong analysis is not met, then in these situations, the examiner must include a statement in the Office action explaining the reasons why a claim limitation which uses the term “means” or “step” is not being treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
In the event that it is unclear whether the claim limitation falls within the scope of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, may be appropriate.
II. DESCRIPTION NECESSARY TO SUPPORT A CLAIM LIMITATION WHICH INVOKES 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, SIXTH PARAGRAPH
35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph states that a claim limitation expressed in means- (or step-) plus-function language “shall be construed to cover the corresponding structure…described in the specification and equivalents thereof.” “If one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the 35 U.S.C. 112(b) [or the second paragraph of pre-AIA section 112].” In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc).
A. The Corresponding Structure Must Be Disclosed In the Specification Itself in a Way That One Skilled In the Art Will Understand What Structure Will Perform the Recited Function
The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function. See Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1381, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999). In Atmel, the
patentee claimed an apparatus that included a “high voltage generating means” limitation, thereby invoking 35 U.S.C. 112, sixth paragraph. The specification incorporated by reference a non-patent document from a technical journal, which described a particular high voltage generating circuit. The Federal Circuit concluded that the title of the article in the specification may, by itself, be sufficient to indicate to one skilled in the art the precise structure of the means for performing the recited function, and it remanded the case to the district court “to consider the knowledge of one skilled in the art that indicated, based on unrefuted testimony, that the specification disclosed sufficient structure corresponding to the high-voltage means limitation.” Id. at 1382, 53 USPQ2d at 1231.
The disclosure of the structure (or material or acts) may be implicit or inherent in the specification if it would have been clear to those skilled in the art what structure (or material or acts) corresponds to the means- (or step-) plus-function claim limitation. See id. at 1380, 53 USPQ2d at 1229; In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997). If there is no disclosure of structure, material or acts for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. “[A] bare statement that known techniques or methods can be used does not disclose structure” in the context of a means plus function limitation. Biomedino, LLC v. Waters Technology Corp., 490
F.3d 946, 952, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007) (Disclosure that an invention “may be controlled by known differential pressure, valving and control equipment” was not a disclosure of any structure corresponding to the claimed “control means for operating [a] valving ” and the claim was held indefinite). See also Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376, 58 USPQ2d 1801, 1806 (Fed. Cir. 2001); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1115-18, 63 USPQ2d 1725, 1731-34 (Fed. Cir. 2002) (Court interpreted the language of the “third monitoring means for monitoring the ECG signal…for activating …” to require the same means to perform both functions and the only entity referenced in the specification that could possibly perform both functions is the physician. The court held that excluding the physician, no structure accomplishes
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the claimed dual functions. Because no structure disclosed in the embodiments of the invention actually performs the claimed dual functions, the specification lacks corresponding structure as required by 35 U.S.C. 112, sixth paragraph, and fails to comply with 35 U.S.C. 112, second paragraph.).
Whether a claim reciting an element in means- (or step-) plus-function language fails to comply with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because the specification does not disclose adequate structure (or material or acts) for performing the recited function is closely related to the question of whether the specification meets the description requirement in 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. See In re Noll, 545 F.2d 141, 149, 191 USPQ 721, 727 (CCPA 1976) (unless the means-plus-function language is itself unclear, a claim limitation written in means-plus- function language meets the definiteness requirement in 35 U.S.C. 112, second paragraph, so long as the specification meets the written description requirement in 35 U.S.C. 112, first paragraph). In Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1336-37, 86 USPQ2d 1235, 1242 (Fed. Cir. 2008), the court stated:
Enablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device. A section 112[(f) or pre-AIA] paragraph 6 disclosure, however, serves the very different purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents. … For example, in Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1380[, 53 USPQ2d 1225, 1230] (Fed. Cir. 1999), the court embraced the proposition that ‘consideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.’ It is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function. The court in Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 953[, 83 USPQ2d 1118, 1123] (Fed. Cir. 2007),
put the point this way: "The inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing that structure."
The invocation of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not exempt an applicant from compliance with 35 U.S.C. 112(a) and 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, first and second paragraphs. See Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850; In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 493 (CCPA 1973) (“[The sixth paragraph of section 112] cannot be read as creating an exception either to the description requirement of the first paragraph … or to the definiteness requirement found in the second paragraph of section 112. Means-plus-function language can be used in the claims, but the claims must still accurately define the invention.”).
Under certain limited circumstances, the written description does not have to explicitly describe the structure (or material or acts) corresponding to a means- (or step-) plus-function limitation to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See Dossel, 115 F.3d at 946, 42 USPQ2d at 1885. Under proper circumstances, drawings may provide a written description of an invention as required by 35 U.S.C. 112. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1565, 19 USPQ2d 1111, 1118 (Fed. Cir. 1991). Further, disclosure of structure corresponding to a means-plus-function limitation may be implicit in the written description if it would have been clear to those skilled in the art what structure must perform the function recited in the means-plus-function limitation. See Atmel Corp. v. Information Storage Devices Inc., 198 F.3d 1374, 1379, 53 USPQ2d 1225, 1228 (Fed. Cir. 1999) (stating that the “one skilled in the art” analysis should apply in determining whether sufficient structure has been disclosed to support a means-plus-function limitation); Dossel, 115 F.3d at 946–47, 42 USPQ2d at 1885 (“Clearly, a unit which receives digital data, performs complex mathematical computations and outputs the results to a display must be implemented by or on a general or special purpose computer (although it is not clear why the written description
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does not simply state ‘computer’or some equivalent phrase).”).
B. Computer-Implemented Means-Plus-Function Limitations
As noted above, when rendering patentability determinations the Office may not disregard the structure disclosed in the specification corresponding to the means-plus-function language. “[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.’” In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999)); see also In re Alappat, 33 F.3d 1526, 1545, 31 USPQ2d 1545, 1558 (Fed. Cir. 1994) (en banc). In cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit has consistently required that the structure be more than simply a general purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function. See, e.g., Noah Systems Inc. v. Intuit Inc., 675 F.3d 1302, 1312, 102 USPQ2d 1410, 1417 (Fed. Cir. 2012); Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239.
For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, a general purpose computer is usually only sufficient as the corresponding structure for performing a general computing function (e.g., “means for storing data”), but the corresponding structure for performing a specific function is required to be more than simply a general purpose computer or microprocessor. In
In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011) (citations omitted), the court stated:
Those cases involved specific functions that would need to be implemented by programming a general purpose computer to convert it into a special purpose computer capable of performing those specified functions. By
contrast, in the seven claims identified above, Katz has not claimed a specific function
performed by a special purpose computer, but has simply recited the claimed functions of ‘processing,’ ‘receiving,’ and ‘storing.’ Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can be achieved by any general purpose computer without special programming. As such, it was not necessary to disclose more structure than the general purpose processor that performs those functions. Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of ‘processing,’ ‘receiving,’ and ‘storing’ are coextensive with the structure disclosed, i.e., a general purpose processor.
To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241. (“Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose
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computer programmed to perform the disclosed algorithm.’” (quoting WMS Gaming, 184 F.3d at 1349, 51 USPQ2d at 1391.))An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or “in any other manner that provides sufficient structure.” Finisar, 523 F.3d at 1340, 86 USPQ2d at 1623; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir.1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376,
1385, 100 USPQ2d 1690, 1697 (Fed. Cir. 2011); In re Aoyama, 656 F.3d at 1306, 99 USPQ2d at 1945.
The Federal Circuit case law regarding special purpose computer-implemented means-plus-function claims is divided into two distinct groups. The first group includes cases in which the specification discloses no algorithm, and the second group includes cases in which the specification does disclose an algorithm, but an issue exists as to whether the disclosure is adequate to perform the entire claimed function(s). The sufficiency of the algorithm is determined in view of what one of ordinary skill in the art would understand as sufficient to define the structure and make the boundaries of the claim understandable. See Noah, 675 F.3d at 1313, 102 USPQ2d at 1417.
Accordingly, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the specification discloses no corresponding algorithm associated with a computer or microprocessor. Aristocrat, 521 F.3d at 1337-38, 86 USPQ2d at 1242. For example, mere reference to a general purpose computer with appropriate programming without providing an explanation of the appropriate programming, or simply reciting “software” without providing detail about the means to accomplish a specific software function, would not be an adequate disclosure of the corresponding structure to satisfy the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Aristocrat, 521 F.3d at 1334, 86 USPQ2d at 1239; Finisar, 523 F.3d at 1340-41, 86 USPQ2d at 1623.
In addition, merely referencing a specialized computer (e.g., a “bank computer”), some undefined component of a computer system (e.g., “access control manager”), “logic,” “code,” or elements that are essentially a black box designed to perform the recited function, will not be sufficient because there must be some explanation of how the computer or the computer component performs the claimed function. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383-85, 91 USPQ2d 1481, 1491-93 (Fed. Cir. 2009); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1366-67, 88 USPQ2d 1751, 1756-57 (Fed. Cir. 2008); Rodriguez, 92 USPQ2d at 1405-06.
If the specification explicitly discloses an algorithm, the sufficiency of the disclosure of the algorithm must be determined in light of the level of ordinary skill in the art. Aristocrat, 521 F.3d at 1337, 86 USPQ2d at 1241; AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1245, 84 USPQ2d 1886, 1893 (Fed. Cir. 2007); Intel Corp., 319 F.3d at 1366-67, 65 USPQ2d 1934, 1941 (knowledge of a person of ordinary skill in the art can be used to make clear how to implement a disclosed algorithm). The examiner should determine whether one skilled in the art would know how to program the computer to perform the necessary steps described in the specification (i.e., the invention is enabled), and that the inventor was in possession of the invention (i.e., the invention meets the written description requirement). Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to a special purpose computer so that a person of ordinary skill in the art can implement the disclosed algorithm to achieve the claimed function. Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1242.
A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is also appropriate if the specification discloses an algorithm but the algorithm is not sufficient to perform the entire claimed function. For example, for a function that includes two distinct functional components, disclosure of an algorithm that is sufficient to perform one of the functions but not the other would not be adequate to satisfy the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The disclosure of structure to support one
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function cannot fill in the gaps in the specification for structure needed to perform a different function. Where a disclosed algorithm supports some, but not all, of the functions associated with a means-plus-function limitation, the specification is treated as if no algorithm has been disclosed at all. Moreover, attempting to fill in the gaps of the specification by importing off the shelf software or asserting that individuals of ordinary skill in the art would understand how to accomplish the function described with the assistance of such off the shelf software does not solve the inadequacy of the disclosure. Noah, 675 F.3d at 1318, 102 USPQ2d at 1421.
In several Federal Circuit cases, the patentees argued that the requirement for the disclosure of an algorithm can be avoided if one of ordinary skill in the art is capable of writing the software to convert a general purpose computer to a special purpose computer to perform the claimed function. See, e.g., Blackboard, 574 F.3d at 1385, 91 USPQ2d at 1493; Biomedino, 490 F.3d at 952, 83 USPQ2d at 1123; Atmel Corp., 198 F.3d at 1380, 53 USPQ2d at 1229. Such argument was found to be unpersuasive because the understanding of one skilled in the art does not relieve the patentee of the duty to disclose sufficient structure to support means-plus-function claim terms. Blackboard, 574 F.3d at 1385, 91 USPQ2d at 1493 (“A patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function.”); Atmel Corp., 198 F.3d at 1380, 53 USPQ2d at 1229 (“[C]onsideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.”). The specification must explicitly disclose the algorithm for performing the claimed function, and simply reciting the claimed function in the specification will not be a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, 574 F.3d at 1384, 91 USPQ2d at 1492 (stating that language that simply describes the function to be performed describes an outcome, not a means for achieving that outcome); Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002; see also Encyclopaedia Britannica, Inc. v. Alpine Elecs., Inc., 355 Fed. Appx. 389, 394-95, 2009 U.S. App. Lexis. 26358,
10-16 (Fed. Cir. 2009) (holding that implicit or inherent disclosure of a class of algorithms for performing the claimed functions is not sufficient, and the purported “one-step” algorithm is not an algorithm at all) (unpublished).
Often the supporting disclosure for a computer-implemented invention discusses the implementation of the functionality of the invention through hardware, software, or a combination of both. In this situation, a question can arise as to which mode of implementation supports the means-plus-function limitation. The language of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph requires that the recited “means” for performing the specified function shall be construed to cover the corresponding “structure or material” described in the specification and equivalents thereof. Therefore, by choosing to use a means-plus-function limitation and invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant limits that claim limitation to the disclosed structure, i.e., implementation by hardware or the combination of hardware and software, and equivalents thereof. Therefore, the examiner should not construe the limitation as covering pure software implementation.
However, if there is no corresponding structure disclosed in the specification (i.e., the limitation is only supported by software and does not correspond to an algorithm and the computer or microprocessor programmed with the algorithm), the limitation should be deemed indefinite as discussed above, and the claim should be rejected under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, second paragraph. It is important to remember that claims must be interpreted as a whole; so, a claim that includes a means-plus-function limitation that corresponds to software per se (and is thus indefinite for lacking structural support in the specification) is not necessarily directed as a whole to software per se unless the claim lacks other structural limitations.
As noted below in subsection III., if it is unclear whether there is sufficient supporting structure or whether the algorithm is adequate to perform the entire claimed function, it is appropriate to reject the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
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C. The Supporting Disclosure Clearly Links or Associates the Disclosed Structure, Material, or Acts to the Claimed Function
The structure disclosed in the written description of the specification is the corresponding structure only if the written description of the specification or the prosecution history clearly links or associates that structure to the function recited in a means- (or step-) plus-function claim limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See B. Braun Medical Inc., v. Abbott Laboratories, 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1900 (Fed. Cir. 1997). The requirement that a particular structure be clearly linked with the claimed function in order to qualify as corresponding structure is the quid pro quo for the convenience of employing 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, and is also supported by the requirement of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, that an invention must be particularly pointed out and distinctly claimed. See Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211, 68 USPQ2d 1263, 1268. For a means- (or step-) plus- function claim limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate if one of ordinary skill in the art cannot identify what structure, material, or acts disclosed in the written description of the specification perform the claimed function.
III. DETERMINING 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112 SECOND PARAGRAPH COMPLIANCE WHEN 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112 SIXTH PARAGRAPH IS INVOKED
Once the examiner determines that a claim limitation is a means-plus-function limitation invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the examiner should determine the claimed function and then review the written description of the specification to determine whether the corresponding structure, material, or acts that perform the claimed function are disclosed. Note that drawings may provide a written description of an invention as required by 35 U.S.C. 112. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565,
19 USPQ2d 1111, 1117 (Fed. Cir. 1991). The corresponding structure, material, or acts may be
disclosed in the original drawings, figures, tables, or sequence listing. However, the corresponding structure, material, or acts cannot include any structure, material, or acts disclosed only in the material incorporated by reference or a prior art reference. See Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1317, 94 USPQ2d 1261, 1267 (Fed. Cir. 2010) (stating, “[s]imply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all of the structures disclosed in those references.”); Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999). The disclosure must be reviewed from the point of view of one skilled in the relevant art to determine whether that person would understand the written description to disclose the corresponding structure, material, or acts. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338, 88 USPQ2d 1865, 1879 (Fed. Cir. 2008); Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211-12, 68 USPQ2d 1263, 1269 (Fed. Cir. 2003). To satisfy the definiteness requirement under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function. Telcordia Techs., Inc. v. Cisco Systems, Inc., 612 F.3d 1365, 1376, 95 USPQ2d 1673, 1682 (Fed. Cir. 2010). A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the written description fails to link or associate the disclosed structure, material, or acts to the claimed function, or if there is no disclosure (or insufficient disclosure) of structure, material, or acts for performing the claimed function. Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850. A bare statement that known techniques or methods can be used would not be a sufficient disclosure to support a means-plus-function limitation. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 953, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007).
A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph may be appropriate in the following situations when examining means-plus-function claim limitations under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
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(1) when it is unclear whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(2) when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and there is no disclosure or there is insufficient disclosure of structure, material, or acts for performing the claimed function; and/or
(3) when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and the supporting disclosure fails to clearly link or associate the disclosed structure, material, or acts to the claimed function.
When the examiner cannot identify the corresponding structure, material, or acts, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. In some cases, a requirement for information under 37 CFR 1.105 may be made to require the identification of the corresponding structure, material, or acts. See MPEP § 704.11(a), Example R. If a requirement for information under 37 CFR 1.105 is made and the applicant states that he or she lacks such information or the reply does not identify the corresponding structure, material, or acts, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. For more information, see MPEP § 704.12 (“Replies to requirements for information must be complete and filed within the time period set including any extensions. Failure to reply within the time period set will result in the abandonment of the application.”).
If the written description sets forth the corresponding structure, material, or acts in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, the claim limitation must “be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, functional limitations that are not recited in the claim, or structural limitations from the written description that are unnecessary to perform the claimed function, cannot be imported into the claim. Welker Bearing, 550 F.3d at 1097, 89 USPQ2d at 1294; Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001).
The following guidance is provided to determine whether applicant has complied with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked:
(A) If the corresponding structure, material or acts are described in the specification in specific terms (e.g., an emitter-coupled voltage comparator), are linked to or associated with the claimed function and one skilled in the art could identify the structure, material or acts from that description as being adequate to perform the claimed function, then the requirements of 35 U.S.C. 112(b) and (f) or pre-AIA 35 U.S.C. 112, second and sixth paragraphs and are satisfied. See Atmel, 198 F.3d at 1382, 53 USPQ2d 1231.
(B) If the corresponding structure, material or acts are described in the specification in broad generic terms and the specific details of which are incorporated by reference to another document (e.g., attachment means disclosed in U.S. Patent No. X, which is hereby incorporated by reference, or a comparator as disclosed in the Y article, which is hereby incorporated by reference), Office personnel must review the description in the specification, without relying on any material from the incorporated document, and apply the “one skilled in the art” analysis to determine whether one skilled in the art could identify the corresponding structure (or material or acts) for performing the recited function to satisfy the definiteness requirement of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 75 USPQ2d 1116 (Fed. Cir. 2005) (“The inquiry under [35 U.S.C.] § 112, ¶ 2, does not turn on whether a patentee has ‘incorporated by reference’ material into the specification relating to structure, but instead asks first ‘whether structure is described in the specification, and, if so, whether one skilled in the art would identify the structure from that description.’”).
(1) If one skilled in the art would be able to identify the structure, material or acts from the description in the specification for performing the recited function, then the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, are satisfied. See Dossel, 115 F.3d at 946-47, 42
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USPQ2d at 1885 (The function recited in the means-plus-function limitation involved “reconstructing” data. The issue was whether the structure underlying this “reconstructing” function was adequately described in the written description to satisfy 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The court stated that “[n]either the written description nor the claims uses the magic word ‘computer,’ nor do they quote computer code that may be used in the invention. Nevertheless, when the written description is combined with claims 8 and 9, the disclosure satisfies the requirements of Section 112, Para. 2.” The court concluded that based on the specific facts of the case, one skilled in the art would recognize the structure for performing the “reconstructing” function since “a unit which receives digital data, performs complex mathematical computations and outputs the results to a display must be implemented by or on a general or special purpose computer.”). See also Intel Corp. v. VIA Technologies, Inc, 319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003) (The “core logic” structure that was modified to perform a particular program was held to be adequate corresponding structure for a claimed function although the specification did not disclose internal circuitry of the core logic to show exactly how it must be modified.)
(2) If one skilled in the art would not be able to identify the structure, material or acts from description in the specification for performing the recited function, then applicant will be required to amend the specification to contain the material incorporated by reference, including the clear link or associated structure, material or acts to the function recited in the claim. See 37 CFR 1.57(c)(3). Applicant should not be required to insert all of the subject matter described in the entire referenced document into the specification. To maintain a concise specification, applicant should only include the relevant portions of the referenced document that correspond to the means- (or step-) plus-function limitation. See Atmel, 198 F.3d at 1382, 53 USPQ2d at 1230 (“All one needs to do…is to recite some structure corresponding to the means in the specification…so that one can readily ascertain what the claim means and comply with the particularity requirement of Para. 2.”).
IV. DETERMINING WHETHER 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, FIRST PARAGRAPH SUPPORT EXISTS
A means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, based on failure of the specification to disclose corresponding structure, material or act that performs the entire claimed function may also lack adequate written description and/or not be sufficiently enabled to support the full scope of the claim. The principal function of claims is to provide notice of the boundaries of the right to exclude by defining the limits of the invention, and means-plus-function claims rely on the disclosure to define those limits. Accordingly, an inadequate disclosure may give rise to both an indefiniteness rejection for a means-plus-function limitation and a failure to satisfy the written description and enablement requirements of section 112(a) or pre-AIA section 112, first paragraph. The Federal Circuit has recognized the problem of providing a sufficient disclosure for functional claiming, particularly with generic claim language, explaining that “The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.” Ariad Pharmaceuticals Inc. v. Eli & Lilly Co., 598 F.3d 1336, 1349, 94 USPQ2d 1161, 1171 (Fed. Cir. 2010) (en banc).
Thus, the means- (or step-) plus- function claims must still be analyzed to determine whether there exists corresponding adequate support for such claim under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In considering whether there is 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph support for the claim limitation, the examiner must consider not only the original disclosure contained in the summary and detailed description of the invention portions of the specification, but also the original claims, abstract,
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and drawings. See In re Mott, 539 F.2d 1291, 1299, 190 USPQ 536, 542–43 (CCPA 1976) (claims); In re Anderson, 471 F.2d 1237, 1240, 176 USPQ 331, 333 (CCPA 1973) (claims); Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 54 USPQ2d 1437 (Fed. Cir. 2000) (unpublished) (abstract); In re Armbruster, 512 F.2d 676, 678–79, 185 USPQ 152, 153–54 (CCPA 1975) (abstract); Anderson, 471 F.2d at 1240, 176 USPQ at 333 (abstract); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (drawings); In re Wolfensperger, 302 F.2d 950, 955–57, 133 USPQ 537, 541– 43 (CCPA 1962) (drawings).
Merely restating a function associated with a means-plus-function limitation is insufficient to provide the corresponding structure for definiteness. See, e.g., Noah, 675 F.3d at 1317, 102 USPQ2d at 1419; Blackboard, 574 F.3d at 1384; Aristocrat, 521 F.3d at 1334, 86 USPQ2d at 1239. It follows therefore that such a mere restatement of function in the specification without more description of the means that accomplish the function would also likely fail to provide adequate written description under section 112(a) or pre-AIA section 112, first paragraph.
37 CFR 1.75(d)(1) provides, in part, that “the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.” In the situation in which the written description only implicitly or inherently sets forth the structure, materials, or acts corresponding to a means- (or step-) plus-function, and the examiner concludes that one skilled in the art would recognize what structure, materials, or acts perform the function recited in a means- (or step-) plus-function, the examiner should either: (A) have the applicant clarify the record by amending the written description such that it expressly recites what structure, materials, or acts perform the function recited in the claim element; or (B) state on the record what structure, materials, or acts perform the function recited in the means- (or step-) plus-function limitation. Even if the disclosure implicitly sets forth the structure, materials, or acts corresponding to a means- (or step-) plus-function claim element in compliance with 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C.
112, first and second paragraphs, the USPTO may still require the applicant to amend the specification pursuant to 37 CFR 1.75(d) and MPEP § 608.01(o) to explicitly state, with reference to the terms and phrases of the claim element, what structure, materials, or acts perform the function recited in the claim element in a manner that does not add prohibited new matter to the specification. See 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” (emphasis added)); see also B. Braun Medical, 124 F.3d at 1424, 43 USPQ2d at 1900 (holding that “pursuant to this provision [35 U.S.C. 112, sixth paragraph], structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing 112, paragraph 6.”); Medical Instrumentation and Diagnostic Corp. v. Elekta AB, 344 F.3d 1205, 1218, 68 USPQ2d 1263, 1268 (Fed. Cir. 2003) (Although one of skill in the art would have been able to write a software program for digital to digital conversion, such software did not fall within the scope of “means for converting” images as claimed because nothing in the specification or prosecution history clearly linked or associated such software with the function of converting images into a selected format.); Wolfensperger, 302 F.2d at 955, 133 USPQ at 542
(just because the disclosure provides support for a claim element does not mean that the USPTO cannot enforce its requirement that the terms and phrases used in the claims find clear support or antecedent basis in the written description).
V. SINGLE MEANS CLAIMS
A single means claim is a claim that recites a means-plus-function limitation as the only limitation of a claim. The long-recognized problem with a single means claim is that it covers every conceivable means for achieving the stated result, while the specification discloses at most only those
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means known to the inventor. In re Hyatt, 708 F.2d 712, 218 USPQ 195 (Fed. Cir. 1983). A single means claim does not comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph requiring that the enabling disclosure of the specification be commensurate in scope with the claim under consideration. As Donaldson applies only to an interpretation of a limitation drafted to correspond to 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by its terms is limited to “an element in a claim for a combination.” Therefore, single means claims that do not recite a combination cannot invoke section 112(f) or pre-AIA section 112, sixth paragraph. As such, they are not limited to the structure, material or act disclosed in the specification. Thus, a single means limitation that is properly construed will cover all means of performing the claimed function. A claim of such breadth reads on subject matter that is not enabled by the specification, and therefore, should be rejected under section 112(a) or pre-AIA section 112, first paragraph. See also MPEP § 2164.08(a).
VI. ENSURE THAT THE RECORD IS CLEAR
When an examiner interprets a claim limitation under the provisions of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the Office action should specify that the examiner has done so. When claim terms other than “means” or "step" are determined to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the reasons why the claim was interpreted as invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should also be clearly stated in the Office action. For example, the Office action can include a statement that a certain claim limitation is expressed in functional terms coupled to a generic placeholder (e.g., “module for,”) that does not connote structure and therefore invokes treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. When the examiner has determined that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph applies, the examiner may also specify what the specification identifies as the corresponding structure.
The two rebuttable presumptions regarding the application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, noted in subsection I., above, should be established in the prosecution record. If
one of the presumptions is rebutted, an explanation of the reasons that the presumption is rebutted should be provided on the record. In particular, clarification should be provided when the claim uses the word “means” or "step" and section 112(f) or pre-AIA section 112, sixth paragraph, is not invoked or when the claim uses a substitute for the word “means” or "step" (a generic placeholder) and section 112(f) or pre-AIA section 112, sixth paragraph, is invoked. By this, the applicant and the public are notified as to the claim construction used by the examiner during prosecution. Also, if the applicant intends a different claim construction, the issue can be clarified early in prosecution.
The presumptions noted above are as follows. The first presumption is that use of the word “means” or "step" in a claim creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption is rebutted when “means” or "step" is not modified by function or when the function is recited with sufficient structure or material within the claim itself to perform the recited function. The second presumption is that absence of the word “means” or "step" in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption is rebutted when the claim element recites function but fails to recite sufficiently definite structure or material to perform that function. See MPEP § 706.03 for applicable form paragraphs. Additionally, if the corresponding structure for the claimed function is not clearly identifiable in the specification, the Office action should, nevertheless, attempt to identify what structure is most closely associated with the means- (or step-) plus-function limitation to facilitate a prior art search. This is especially true when there may be confusion as to which disclosed implementation of the invention supports the limitation, as explained in subsection II.B., above.
When allowing a claim that was treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the examiner should indicate that the claim was interpreted under the provisions of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph in reasons for allowance if such an
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explanation has not previously been made of record. As noted above, the indication should also clarify the associated structure if not readily apparent in the specification.
2182 Search and Identification of the Prior Art [R-11.2013]
The application of a prior art reference to a means- (or step-) plus-function limitation requires that the prior art element perform the identical function specified in the claim. However, if a prior art reference only teaches identity of function to that specified in a claim, then an examiner carries the initial burden of proof for showing that the prior art structure or step is the same as or equivalent to the structure, material, or acts described in the specification which has been identified as corresponding to the claimed means- (or step-) plus-function.
The means- (or step-) plus- function limitation should be interpreted in a manner consistent with the specification disclosure. The Federal Circuit explained the two step analysis involved in construing means- (or step-) plus- function limitations in Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34, 69 USPQ2d 1481, 1486 (Fed. Cir. 2004):
The first step in construing a means-plus-function claim limitation is to define the particular function of the claim limitation. Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376, 58 USPQ2d 1801, 1806 (Fed. Cir. 2001). “The court must construe the function of a means-plus-function limitation to include the limitations contained in the claim language, and only those limitations.” Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113, 63 USPQ2d 1725, 1730 (Fed. Cir. 2002). The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function. “Under this second step, ‘structure disclosed in the specification is “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the
function recited in the claim.’” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210, 68 USPQ2d 1263, 1267 (Fed. Cir. 2003) (quoting B. Braun Med. Inc. v. Abbott Labs., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1900 (Fed. Cir. 1997)).
If the specification defines what is meant by the limitation for the purposes of the claimed invention, the examiner should interpret the limitation as having that meaning. If no definition is provided, some judgment must be exercised in determining the scope of the limitation. See, e.g., B. Braun Medical, Inc. v. Abbott Labs., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1900 (Fed. Cir. 1997) (“We hold that, pursuant to [35 U.S.C. 112, sixth paragraph], structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing 112, paragraph 6.” The court refused to interpret a means-plus-function limitation as corresponding to a disclosed valve seat structure, as argued by patentee, since there was no indication in the specification or prosecution history that this structure corresponds to the recited function, and there was an explicitly clear association between that function and a traverse cross section bar structure disclosed in the specification.).
2183 Making a Prima Facie Case of Equivalence [R-11.2013]
[Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time of the invention," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]
If the examiner finds that a prior art element
(A) performs the function specified in the claim,
(B) is not excluded by any explicit definition provided in the specification for an equivalent, and
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(C) is an equivalent of the means- (or step-) plus-function limitation,
the examiner should provide an explanation and rationale in the Office action as to why the prior art element is an equivalent. See In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990) ("The disclosed and prior art structures are not identical, but the claim may nonetheless be anticipated. … However, the Board made no finding that the delay means of claim 1 and that embodied in the Curtis device are structurally equivalent. Accordingly, its decision as to the anticipation of claim 1 is deficient and must be vacated.”)
Factors that will support a conclusion that the prior art element is an equivalent are:
(A) the prior art element performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 54 USPQ2d 1308 (Fed. Cir. 2000) (An internal adhesive sealing the inner surfaces of an envelope pocket was not held to be equivalent to an adhesive on a flap which attached to the outside of the pocket. Both the claimed invention and the accused device performed the same function of closing the envelope. But the accused device performed it in a substantially different way (by an internal adhesive on the inside of the pocket) with a substantially different result (the adhesive attached the inner surfaces of both sides of the pocket)); Odetics Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267, 51 USPQ2d 1225, 1229-30 (Fed. Cir. 1999); Lockheed Aircraft Corp. v. United States, 193 USPQ 449, 461 (Ct. Cl. 1977). The concepts of equivalents as set forth in Graver Tank & Mfg. Co. v. Linde Air Products, 339 U.S. 605, 85 USPQ 328 (1950) are relevant to any “equivalents” determination. Polumbo v. Don-Joy Co., 762 F.2d 969, 975 n.4, 226 USPQ 5, 8-9 n.4 (Fed. Cir. 1985).
(B) a person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000); Al-Site Corp. v. VSI Int’ l, Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165 (Fed. Cir. 1999); Chiuminatta Concrete Concepts, Inc.
v. Cardinal Indus. Inc., 145 F.3d 1303, 1309, 46 USPQ2d 1752, 1757 (Fed. Cir. 1998); Lockheed Aircraft Corp. v. United States, 193 USPQ 449, 461 (Ct. Cl. 1977 ); Data Line Corp. v. Micro Technologies, Inc., 813 F.2d 1196, 1 USPQ2d 2052 (Fed. Cir. 1987).
(C) there are insubstantial differences between the prior art element and the corresponding element disclosed in the specification. IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1436, 54 USPQ2d 1129, 1138 (Fed. Cir. 2000); Warner-Jenkinson Co. v. Hilton Davis Chemical
Co., 117 S. Ct. 1040, 41 USPQ2d 1865, 1875 (1997); Valmont Industries, Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 25 USPQ2d 1451 (Fed. Cir. 1993). See also Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000) (A structure lacking several components of the overall structure corresponding to the claimed function and also differing in the number and size of the parts may be insubstantially different from the disclosed structure. The limitation in a means- (or step-) plus-function claim is the overall structure corresponding to the claimed function. The individual components of an overall structure that corresponds to the claimed function are not claim limitations. Also, potential advantages of a structure that do not relate to the claimed function should not be considered in an equivalents determination under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph).
A showing of at least one of the above-noted factors by the examiner should be sufficient to support a conclusion that the prior art element is an equivalent. The examiner should then conclude that the claimed limitation is met by the prior art element. In addition to the conclusion that the prior art element is an equivalent, examiners should also demonstrate, where appropriate, why it would have been obvious to one of ordinary skill in the art at the time of the invention to substitute applicant’s described structure, material, or acts for that described in the prior art reference. See In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). The burden then shifts to applicant to show that the element shown in the prior art is not an equivalent of the structure, material or acts disclosed in the application. In re Mulder, 716 F.2d 1542, 219 USPQ 189 (Fed. Cir. 1983). No further analysis of
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equivalents is required of the examiner until applicant disagrees with the examiner’s conclusion, and provides reasons why the prior art element should not be considered an equivalent. See also In re Walter, 618 F.2d 758, 768, 205 USPQ 397, 407-08 (CCPA 1980) (treating 35 U.S.C. 112, sixth paragraph, in the context of a determination of statutory subject matter and noting “[i]f the functionally-defined disclosed means and their equivalents are so broad that they encompass any and every means for performing the recited functions . . . the burden must be placed on the applicant to demonstrate that the claims are truly drawn to specific apparatus distinct from other apparatus capable of performing the identical functions”); In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 229 (CCPA 1971) (treating as improper a rejection under 35 U.S.C. 112, second paragraph, of functional language, but noting that “where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristics relied on”); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980) (indicating that the burden of proof can be shifted to the applicant to show that the subject matter of the prior art does not possess the characteristic relied on whether the rejection is based on inherency under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103).
See MPEP § 2184 when determining whether the applicant has successfully met the burden of proving that the prior art element is not equivalent to the structure, material or acts described in the applicant’s specification.
IF NONEQUIVALENCE SHOWN, EXAMINER MUST CONSIDER OBVIOUSNESS
However, even where the applicant has met that burden of proof and has shown that the prior art element is not equivalent to the structure, material or acts described in the applicant’s specification, the examiner must still make a 35 U.S.C. 103 analysis to determine if the claimed means- (or step-) plus-function is obvious from the prior art to one of
ordinary skill in the art. Thus, while a finding of nonequivalence prevents a prior art element from anticipating a means- (or step-) plus-function limitation in a claim, it does not prevent the prior art element from rendering the claim limitation obvious to one of ordinary skill in the art. Because the exact scope of an “equivalent” may be uncertain, it would be appropriate to apply a 35 U.S.C. 102/103 rejection where the balance of the claim limitations are anticipated by the prior art relied on. A similar approach is authorized in the case of product-by-process claims because the exact identity of the claimed product or the prior art product cannot be determined by the examiner. In re Brown, 450 F.2d 531, 173 USPQ 685 (CCPA 1972). In addition, although it is normally the best practice to rely on only the best prior art references in rejecting a claim, alternative grounds of rejection may be appropriate where the prior art shows elements that are different from each other, and different from the specific structure, material or acts described in the specification, yet perform the function specified in the claim.
2184 Determining Whether an Applicant Has Met the Burden of Proving Nonequivalence After a Prima Facie Case Is Made [R-11.2013]
The specification need not necessarily describe the equivalents of the structures, material, or acts corresponding to the means-(or step-) plus-function claim element. See In re Noll, 545 F.2d 141, 149-50, 191 USPQ 721, 727 (CCPA 1976) (if the meaning of equivalents is well understood in patent law, then an applicant need not describe in his specification the full range of equivalents of his invention). Cf. Hybritech Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986) (“a patent need not teach, and preferably omits, what is well known in the art”). Where, however, the specification is silent as to what constitutes equivalents and the examiner has made out a prima facie case of equivalence, the burden is placed upon the applicant to show that a prior art element which performs the claimed function is not an equivalent of the structure, material, or acts disclosed in the specification. See In re Mulder, 716 F.2d 1542, 1549, 219 USPQ 189, 196 (Fed. Cir. 1983).
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If the applicant disagrees with the inference of equivalence drawn from a prior art reference, the applicant may provide reasons why the applicant believes the prior art element should not be considered an equivalent to the specific structure, material or acts disclosed in the specification. Such reasons may include, but are not limited to:
(A) Teachings in the specification that particular prior art is not equivalent;
(B) Teachings in the prior art reference itself that may tend to show nonequivalence; or
(C) 37 CFR 1.132 affidavit evidence of facts tending to show nonequivalence.
I. TEACHINGS INAPPLICANT’S SPECIFICATION
When the applicant relies on teachings in applicant’s own specification, the examiner must make sure that the applicant is interpreting the means- (or step-) plus- function limitation in the claim in a manner which is consistent with the disclosure in the specification. If the specification defines what is meant by “equivalents” to the disclosed embodiments for the purpose of the claimed means- (or step-) plus- function, the examiner should interpret the limitation as having that meaning. If no definition is provided, some judgment must be exercised in determining the scope of “equivalents.” Generally, an “equivalent” is interpreted as embracing more than the specific elements described in the specification for performing the specified function, but less than any element that performs the function specified in the claim. See, e.g., NOMOS Corp. v. BrainLAB USA Inc., 357 F.3d, 1364, 1368, 69 USPQ2d 1853, 1856 (Fed. Cir. 2004) (where only one embodiment is described, the corresponding structure is limited to that embodiment and equivalents thereof). To interpret means- (or step-) plus-function limitations as limited to a particular means (or step) set forth in the specification would nullify the provisions of 35 U.S.C. 112 requiring that the limitation shall be construed to cover the structure described in the specification and equivalents thereof. D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 1574, 225 USPQ 236, 238 (Fed. Cir. 1985).
The scope of equivalents embraced by a claim limitation is dependent on the interpretation of an
“equivalent.” The interpretation will vary depending on how the element is described in the supporting specification. The claim may or may not be limited to particular structure, material or acts (e.g., steps) as opposed to any and all structure, material or acts performing the claimed function, depending on how the specification treats that question. See, e.g., Ishida Co. v. Taylor, 221 F.3d 1310, 55 USPQ2d
1449 (Fed. Cir. 2000) (The court construed the scope of a means-plus-function claim element where the specification disclosed two structurally very different embodiments for performing the claimed function by looking separately to each embodiment to determine corresponding structures. The court declined to adopt a single claim construction encompassing both embodiments since it would be so broad as to describe systems both with and without the fundamental structural features of each embodiment.).
If the disclosure is so broad as to encompass any and all structures, materials or acts for performing the claimed function, the claims must be read accordingly when determining patentability. When this happens the limitation otherwise provided by “equivalents” ceases to be a limitation on the scope of the claim in that an equivalent would be any structure, material or act other than the ones described in the specification that perform the claimed function. For example, this situation will often be found in cases where (A) the claimed invention is a combination of elements, one or more of which are selected from elements that are old,
per se, or (B) apparatus claims are treated as indistinguishable from method claims. See, for example, In re Meyer, 688 F.2d 789, 215 USPQ 193 (CCPA 1982); In re Abele, 684 F.2d 902, 909, 214 USPQ 682, 688 (CCPA 1982); In re Walter, 618 F.2d 758, 767, 205 USPQ 397, 406-07 (CCPA 1980); In re Maucorps, 609 F.2d 481, 203 USPQ 812 (CCPA 1979); In re Johnson, 589 F.2d 1070, 200 USPQ 199 (CCPA 1978); and In re Freeman, 573 F.2d 1237, 1246, 197 USPQ 464, 471 (CCPA 1978).
On the other end of the spectrum, the “equivalents” limitation as applied to a claim may also operate to constrict the claim scope to the point of covering virtually only the disclosed embodiments. This can happen in circumstances where the specification
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describes the invention only in the context of a specific structure, material or act that is used to perform the function specified in the claim.
II. FACTORS TO BE CONSIDERED IN DECIDING EQUIVALENCE
When deciding whether an applicant has met the burden of proof with respect to showing nonequivalence of a prior art element that performs the claimed function, the following factors may be considered. First, unless an element performs the identical function specified in the claim, it cannot be an equivalent for the purposes of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 4 USPQ2d 1737 (Fed. Cir. 1987), cert. denied, 484 U.S. 961 (1988).
Second, while there is no litmus test for an “equivalent” that can be applied with absolute certainty and predictability, there are several indicia that are sufficient to support a conclusion that one element is or is not an “equivalent” of a different element in the context of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Indicia that will support a conclusion that one element is or is not an equivalent of another are set forth in MPEP § 2183.
III. MERE ALLEGATIONS OF NONEQUIVALENCE ARE NOT SUFFICIENT
In determining whether arguments or 37 CFR 1.132 evidence presented by an applicant are persuasive that the element shown in the prior art is not an equivalent, the examiner should consider and weigh as many of the above-indicated or other indicia as are presented by applicant, and should determine whether, on balance, the applicant has met the burden of proof to show nonequivalence. However, under no circumstance should an examiner accept as persuasive a bare statement or opinion that the element shown in the prior art is not an equivalent embraced by the claim limitation. Moreover, if an applicant argues that the means- (or step-) plus-function language in a claim is limited to certain specific structural or additional functional characteristics (as opposed to “equivalents” thereof) where the specification does not describe the
invention as being only those specific characteristics, the claim should not be allowed until the claim is amended to recite those specific structural or additional functional characteristics. Otherwise, a claim could be allowed having broad functional language which, in reality, is limited to only the specific structure or steps disclosed in the specification. This would be contrary to public policy of granting patents which provide adequate notice to the public as to a claim’s true scope.
IV. APPLICANT MAY AMEND CLAIMS
Finally, as in the past, applicant has the opportunity during proceedings before the Office to amend the claims so that the claimed invention meets all the statutory criteria for patentability. An applicant may choose to amend the claim by further limiting the function so that there is no longer identity of function with that taught by the prior art element, or the applicant may choose to replace the claimed means- (or step-) plus-function limitation with specific structure, material or acts that are not described in the prior art.
2185 Related Issues Under 35 U.S.C. 112(a) or (b) and Pre-AIA 35 U.S.C. 112, First or Second Paragraphs [R-07.2015]
Interpretation of claims as set forth in MPEP § 2181 may create some uncertainty as to what applicant regards as the invention. If this issue arises, it should be addressed in a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. While 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, permits a particular form of claim limitation, it cannot be read as creating an exception either to the description, enablement or best mode requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph or the definiteness requirement of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Knowlton, 481 F.2d 1357, 178 USPQ 486 (CCPA 1973).
If a means- (or step-) plus-function limitation recited in a claim is not supported by corresponding structure, material or acts in the specification disclosure, the following rejections should be considered:
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(A) under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as not being supported by an enabling disclosure because the person skilled in the art would not know how to make and use the invention without a description of elements to perform the function. Note that the description of an apparatus with block diagrams describing the function, but not the structure, of the apparatus is not fatal under the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as long as the structure is conventional and can be determined without an undue amount of experimentation. In re Ghiron, 442 F.2d 985, 991, 169 USPQ 723, 727 (CCPA 1971);
(B) under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph as lacking adequate written description because the specification does not describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. As an example, if the means- (or step-) plus-function limitation is computer-implemented, and the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made;
(C) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite. See Biomedino, LLC v. Waters Technology Corp., 490 F.3d 946, 952, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007), In re Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881, 1884 (Fed. Cir. 1997) and MPEP § 2181; and
(D) under 35 U.S.C. 102 or 103 where the prior art anticipates or renders obvious the claimed subject matter including the means or step that performs the function specified in the claim, the theory being that since there is no corresponding structure, etc., in the specification to limit the means- (or step-) plus-
function limitation, an equivalent is any element that performs the specified function.
2186 Relationship to the Doctrine of Equivalents [R-11.2013]
The doctrine of equivalents arises in the context of an infringement action. If an accused product or process does not literally infringe a patented invention, the accused product or process may be found to infringe under the doctrine of equivalents. The essential objective inquiry is: “Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?” Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 117 S. Ct. 1040, 41 USPQ2d 1865, 1875 (1997). In determining equivalence, “[a]n analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute plays a role substantially different from the claimed element.” 41 USPQ2d at 1875.
35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, permit means- (or step-) plus-function limitations in claims to combinations, “with the proviso that application of the broad literal language of such claims must be limited to only those means that are ‘equivalent’ to the actual means shown in the patent specification. This is an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements.” 41 USPQ2d at 1870. Accordingly, decisions involving the doctrine of equivalents should be considered, but should not unduly influence a determination under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, during ex parte examination. See MPEP § 2183.
2187 -2189 [Reserved]
2190 Prosecution Laches [R-08.2012]
The Federal Circuit affirmed a rejection of claims in a patent application on the ground that applicant had forfeited his right to a patent under the doctrine
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of prosecution history laches for unreasonable and undue delay in prosecution. In re Bogese, 303 F.3d 1362, 1369, 64 USPQ2d 1448, 1453 (Fed. Cir. 2002) (Applicant “filed twelve continuation applications over an eight-year period and did not substantively advance prosecution when required and given an opportunity to do so by the PTO.”). While there are no firm guidelines for determining when laches is triggered, it applies only in egregious cases of unreasonable and unexplained delay in prosecution. For example, where there are “multiple examples of repetitive filings that demonstrate a pattern of unjustified delayed prosecution,” laches may be triggered. Symbol Tech. Inc. v. Lemelson Med., Educ., & Research Found., 422 F.3d 1378, 1385, 76 USPQ2d 1354, 1360 (Fed. Cir. 2005)(Court discussed difference between legitimate reasons for refiling patent applications and refilings for the business purpose of delaying the issuance of previously allowed claims.). An examiner should obtain approval from the TC Director before making a rejection on the grounds of prosecution history laches.
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Chapter 2200 Citation of Prior Art and Ex Parte Reexamination of Patents
Introduction2201 Citation of Prior Art and Written Statements
2202
Persons Who May Cite Prior Art or Written Statements
2203
Time for Filing Prior Art or Section 301 Written Statements
2204
Content of Prior Art or Section 301 Written Statements
2205
Handling of Prior Art or Section 301 Written Statements
2206
Entry of Court Decision in Patent File2207 Service of Prior Art or Section 301 Written Statements on Patent Owner
2208
Ex Parte Reexamination2209 Request for Ex Parte Reexamination under 35 U.S.C. 302
2210
Time for Requesting Ex Parte Reexamination under 35 U.S.C. 302
2211
Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302
2212
Inquiries from Persons Other Than the Patent Owner
2212.01
Representative of Requester2213 Content of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302
2214
Fee for Requesting Ex Parte Reexamination under 35 U.S.C. 302
2215
Substantial New Question of Patentability
2216
Statement Applying Prior Art in a Request Filed under 35 U.S.C. 302
2217
Copies of Prior Art2218 Copy of Printed Patent2219 Certificate of Service2220 Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner
2221
Address of Patent Owner2222 Withdrawal of Attorney or Agent2223 Correspondence2224 Untimely Paper Filed Prior to Order under 35 U.S.C. 304
2225
Initial Processing of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302
2226
Incomplete Request for Ex Parte Reexamination Filed under 35 U.S.C. 302
2227
[Reserved]2228 Notice of Request under 35 U.S.C. 302 for Ex Parte Reexamination in Official Gazette
2229
Constructive Notice to Patent Owner2230 Processing of Request Corrections2231 Public Access to Reexaminations Filed under 35 U.S.C. 302
2232
Determining if a Reexamination Request Was Filed under 35 U.S.C. 302 for a Patent
2232.01
Processing in Central Reexamination Unit and Technology Center
2233
Entry of Amendments2234 Record Systems2235 Assignment of Reexamination2236 Transfer Procedure2237 Time Reporting2238 Reexamination Ordered at the Director’s Initiative
2239
Decision on Request Filed under 35 U.S.C. 302
2240
Time for Deciding Request Filed under 35 U.S.C. 302
2241
Criteria for Deciding Request Filed under 35 U.S.C. 302
2242
Claims Considered in Deciding Request Filed under 35 U.S.C. 302
2243
Prior Art on Which the Determination Is Based in Requests Filed under 35 U.S.C. 302
2244
Processing of Decision2245 Decision Ordering Reexamination under 35 U.S.C. 304
2246
Decision under 35 U.S.C. 303 on Request for Reexamination filed Under 35 U.S.C. 302, Request Denied
2247
Examples of Decisions on Request for Reexamination
2247.01
Petition From Denial of Request Filed Under 35 U.S.C. 302
2248
Patent Owner’s Statement in Reexaminations Filed Under 35 U.S.C. 302
2249
Amendment by Patent Owner2250 Correction of Patent Drawings2250.01
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Correction of Inventorship2250.02 Fees for Adding Claims and for Filing a Petition
2250.03
Reply by Third Party Requester2251 Consideration of Statement and Reply2252 Consideration by Examiner2253 Conduct of Ex Parte Reexamination Proceedings
2254
Who Reexamines2255 Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination
2256
Listing of Prior Art2257 Scope of Ex Parte Reexamination2258
Use of Previously Cited/Considered Art in Rejections
2258.01
Claiming Foreign Priority and Domestic Benefit in Reexamination
2258.02
Res Judicata and Collateral Estoppel in Reexamination Proceedings
2259
Office Actions2260 Dependent Claims2260.01
Special Status for Action2261 Form and Content of Office Action2262 Time for Response2263 Mailing of Office Action2264 Extension of Time2265 Responses2266
Submission Not Fully Responsive to Non-Final Office Action
2266.01
Examiner Issues Notice of Defective Paper in Ex Parte Reexamination
2266.02
Service of Papers2266.03 Handling of Inappropriate or Untimely Filed Papers
2267
Petition for Entry of Late Papers for Revival of Reexamination Proceeding
2268
Reconsideration2269 Clerical Handling2270 Final Action2271
Panel Review2271.01 After Final Practice2272 Appeal in Ex Parte Reexamination2273 Appeal Brief2274 Examiner’s Answer2275 Oral Hearing2276 Board Decision2277 Action Following Decision2278 Appeal to Courts2279
Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302
2280
Interviews in Ex Parte Reexamination Proceedings
2281
Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon
2282
Multiple Copending Ex Parte Reexamination Proceedings
2283
Copending Ex Parte Reexamination and Interference Proceedings
2284
Copending Ex Parte Reexamination and Reissue Proceedings
2285
Ex Parte Reexamination and Litigation Proceedings
2286
Reexamination and Inter Partes Review Proceedings, Post-Grant
2286.01
Review, and Covered Business Method Patent Review
Conclusion of Ex Parte Reexamination Proceeding
2287
Examiner Consideration of Submissions After a NIRC
2287.01
Issuance of Ex Parte Reexamination Certificate
2288
Reexamination Review2289 Format of Ex Parte Reexamination Certificate
2290
Notice of Ex Parte Reexamination Certificate Issuance in Official Gazette
2291
Distribution of Certificate2292 Intervening Rights2293 Concluded Reexamination Proceedings2294 Reexamination of a Reexamination2295 USPTO Forms To Be Used In Ex Parte Reexamination
2296
2201 Introduction [R-07.2015]
Statutory basis for citation of prior art patents or printed publications in patent files and ex parte reexamination of patents became available on July 1, 1981, as a result of new sections 301-307 of title 35, United States Code, which were added by Public Law 96-517, enacted on December 12, 1980. The rules of practice in patent cases relating to reexamination were initially promulgated on April 30, 1981, at 46 FR 24179-24180 and on May 29, 1981, at 46 FR 29176-29187.
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The reexamination statute was amended on November 2, 2002, by Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002) to expand the scope of what qualifies for a substantial new question of patentability upon which an ex parte reexamination may be based (see MPEP § 2242, subsection II.A), and made technical corrections to the statute. See the 21st Century Department of Justice Appropriations Authorization Act, TITLE III- INTELLECTUAL PROPERTY, Subtitle A - Patent and Trademark Office, Section 13105, of the “Patent and Trademark Office Authorization Act of 2002” - Enacted as part of Public Law 107-273 on November 2, 2002.
On September 16, 2012, the Leahy-Smith America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, was enacted. The AIA expanded the scope of information that any party may cite in a patent file to include written statements of a patent owner filed in a proceeding before a federal court or the United States Patent and Trademark Office (Office) regarding the scope of any claim of the patent, and provides for how such information may be considered in ex parte reexamination, inter partes review, and post grant review. The AIA also provided for an estoppel that may attach with respect to the filing of an ex parte reexamination request subsequent to a final written decision in an inter partes review or post grant review proceeding.
The AIA also provided for a first-inventor-to-file prior art regime to replace the first-to-invent prior art regime, with respect to prior art available to be applied to claims. The prior art regime under which the application for the patent was examined (the first-inventor-to-file prior art regime, or the first-to-invent prior art regime) will generally be applied in the reexamination of the patent. However, there are rare exceptions. For example, a situation may arise in which a benefit claim to an application filed before March 16, 2013, is added in a reexamination proceeding based on an AIA patent. If all of the claims that have ever been presented in the reexamination proceeding and the underlying patent are fully supported by the prior application filed before March 16, 2013, and the application which resulted in the patent subject to the reexamination proceeding did not claim, directly or indirectly, the benefit of an application filed in the
United States that presented at any time a claim that had an effective filing date on or after March 16, 2013, then the reexamination proceeding would be examined under the pre-AIA, first to invent, provisions.
This chapter is intended to primarily be a guide for U.S. Patent and Trademark Office (Office) personnel on the processing of prior art citations and ex parte reexamination requests under 35 U.S.C. 302, as well as handling ex parte reexamination proceedings. Second, it serves as a guide to the formal requirements for filing such documents in the Office. It is noted that all citations in this chapter to 35 U.S.C. discussing the first-to-invent prior art regime (as opposed to the first-inventor-to-file prior art regime) are to the relevant statute in effect prior to March 16, 2013.
Ex Parte Reexamination Proceedings Resulting from Supplemental Examination Proceedings: Section 12 of the AIA added new 35 U.S.C. 257, which provides for a proceeding titled "supplemental examination" that may be requested by the patent owner to consider, reconsider, or correct information believed to be relevant to the patent in accordance with requirements which have been established by the Office. The information that may be presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability under 35 U.S.C. 101 and 35 U.S.C. 112. If the supplemental examination certificate, which is issued under 35 U.S.C. 257(a), states that a substantial new question of patentability is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. See MPEP Chapter 2800 for guidance on the procedures for supplemental examination proceedings, and for procedures regarding the order and first Office action mailed in any ex parte reexamination proceeding ordered as a result of a supplemental examination proceeding.
Inter Partes Reexamination Proceedings: On November 29, 1999, the American Inventors Protection Act of 1999 (the AIPA), Public Law 106-113 was enacted, and expanded reexamination by providing an “ inter partes” option. The AIPA authorized the extension of reexamination
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§ 2201CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
proceedings via an optional inter partes reexamination procedure in addition to ex parte reexamination. 35 U.S.C. 311 - 318 (in effect for inter partes reexaminations filed prior to September 16, 2012) are directed to the optional inter partes reexamination procedures. The final rules to implement the optional inter partes reexamination were published in the Federal Register on December 7, 2000 at 65 FR 76756 and in the Official Gazette on January 2, 2001 at 1242 OG 12. Effective September 16, 2012, section 6(c) of the Leahy-Smith America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, replaced the inter partes reexamination process that was established by the AIPA with an inter partes review process, such that (on or after September 16, 2012) the Office no longer entertains requests for inter partes reexamination
but instead accepts petitions to conduct inter partes review before the Board, where appropriate. For any inter partes reexamination filed prior to September 16, 2012, the provisions of 35 U.S.C. 311 – 318 as they were in effect prior to September 16, 2012, continue to apply to the inter partes reexamination proceedings. See MPEP Chapter 2600 for guidance on the procedures for inter partes reexamination proceedings, as well as with respect to an ex parte reexamination proceeding merged (consolidated) with an inter partes reexamination proceeding.
Flowcharts: The flowcharts show the general provisions of both the citation of prior art and ex parte reexamination proceedings, including reference to the pertinent rule sections.
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2202 Citation of Prior Art and Written Statements [R-07.2015]
35 U.S.C. 301 Citation of prior art.
(a) IN GENERAL.—Any person at any time may cite to the Office in writing—
(1) prior art consisting of patents or printed publications which that person believes to have a bearing on the patent ability of any claim of a particular patent; or
(2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.
(b) OFFICIAL FILE.—If the person citing prior art or written statements pursuant to subsection (a) explains in writing the pertinence and manner of applying the prior art or written statements to at least 1 claim of the patent, the citation of the prior art or written statements and the explanation thereof shall become a part of the official file of the patent.
(c) ADDITIONAL INFORMATION.—A party that submits a written statement pursuant to subsection (a)(2) shall include any other documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement.
(d) LIMITATIONS.—A written statement submitted pursuant to subsection (a)(2), and additional information submitted pursuant to subsection (c), shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324. If any such written statement or additional information is subject to an applicable protective order, such statement or information shall be redacted to exclude information that is subject to that order.
(e) CONFIDENTIALITY.—Upon the written request of the person citing prior art or written statements pursuant to subsection (a), that person’s identity shall be excluded from the patent file and kept confidential.
37 CFR 1.501 Citation of prior art and written statements in patent files.
(a) Information content of submission: At any time during the period of enforceability of a patent, any person may file a written submission with the Office under this section, which is directed to the following information:
(1) Prior art consisting of patents or printed publications which the person making the submission believes to have a bearing on the patentability of any claim of the patent; or
(2) Statements of the patent owner filed by the patent owner in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent. Any statement submitted under this paragraph must be accompanied by any other documents, pleadings, or evidence from the proceeding in which the statement was filed that address the written statement, and such statement and accompanying information under this paragraph must be
submitted in redacted form to exclude information subject to an applicable protective order.
(3) Submissions under paragraph (a)(2) of this section must identify:
(i) The forum and proceeding in which patent owner filed each statement;
(ii) The specific papers and portions of the papers submitted that contain the statements; and
(iii) How each statement submitted is a statement in which patent owner took a position on the scope of any claim in the patent.
(b) Explanation: A submission pursuant to paragraph (a) of this section:
(1) Must include an explanation in writing of the pertinence and manner of applying any prior art submitted under paragraph (a)(1) of this section and any written statement and accompanying information submitted under paragraph (a)(2) of this section to at least one claim of the patent, in order for the submission to become a part of the official file of the patent; and
(2) May, if the submission is made by the patent owner, include an explanation of how the claims differ from any prior art submitted under paragraph (a)(1) of this section or any written statements and accompanying information submitted under paragraph (a)(2) of this section.
(c) Reexamination pending : If a reexamination proceeding has been requested and is pending for the patent in which the submission is filed, entry of the submission into the official file of the patent is subject to the provisions of §§ 1.502 and 1.902.
(d) Identity: If the person making the submission wishes his or her identity to be excluded from the patent file and kept confidential, the submission papers must be submitted anonymously without any identification of the person making the submission.
(e) Certificate of Service : A submission under this section by a person other than the patent owner must include a certification that a copy of the submission was served in its entirety upon patent owner at the address as provided for in § 1.33(c). A submission by a person other than the patent owner that fails to include proper proof of service as required by § 1.248(b) will not be entered into the patent file.
37 CFR 1.502 Processing of prior art citations during an ex parte reexamination proceeding.
Citations by the patent owner under § 1.555 and by an ex parte reexamination requester under either § 1.510 or § 1.535 will be entered in the reexamination file during a reexamination proceeding. The entry in the patent file of citations submitted after the date of an order to reexamine pursuant to § 1.525 by persons other than the patent owner, or an ex parte reexamination requester under either § 1.510 or § 1.535, will be delayed until the reexamination proceeding has been terminated. See § 1.902 for processing of prior art citations in patent and reexamination files during an inter partes reexamination proceeding filed under § 1.913.
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§ 2202CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
37 CFR 1.902 Processing of prior art citations during an inter partes reexamination proceeding.
Citations by the patent owner in accordance with § 1.933 and by an inter partes reexamination third party requester under § 1.915 or § 1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citations submitted after the date of an order for reexamination pursuant to § 1.931 by persons other than the patent owner, or the third party requester under either § 1.913 or § 1.948, will be delayed until the inter partes reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.502 for processing of prior art citations in patent and reexamination files during an ex parte reexamination proceeding filed under § 1.510.
Prior art in the form of patents or printed publications may be cited to the Office for placement into the patent files. Written statements made by the patent owner concerning the scope of the claims can also be cited to the Office for placement into the patent files. Submission may be made without payment of a fee. These citations may be made separate from and without a request for reexamination.
The basic purpose for citing prior art in patent files is to inform the patent owner and the public in general that such patents or printed publications are in existence and should be considered when evaluating the validity of the patent claims. The basic purpose for citing written claim scope statements is to ensure that the patent owner takes consistent positions regarding the scope of the claims of a particular patent in the courts and the before the Office. Placement in the patent file also ensures consideration thereof during any subsequent reissue application, reexamination proceeding, or other post-patent proceeding.
The citation of prior art and written statement provisions of 35 U.S.C. 301 and 37 CFR 1.501 do not apply to citations or protests filed in pending applications.
2203 Persons Who May Cite Prior Art or Written Statements [R-07.2015]
The patent owner, or any member of the public, may submit prior art patents or printed publications and/or written statements and additional information to the Office. 35 U.S.C. 301 states that “[a]ny person at any time may cite to the Office. . . .”
“Any person” may be a corporate or governmental entity as well as an individual.
“Any person” includes patentees, licensees, reexamination requesters, real parties in interest to the patent owner or requester, persons without a real interest, and persons acting for real parties in interest without a need to identify the real party of interest.
If a person citing prior art or written statements desires his or her identity to be kept confidential, such a person need not identify himself or herself. Persons other than reexamination requesters who desire to remain confidential are therefore advised to not identify themselves anywhere in their papers.
For reexamination requesters, the certification requirement of 37 CFR 1.510(b)(6), coupled with a party’s 37 CFR 11.18 certification obligations when transacting business before the Office, are considered sufficient to ensure compliance with the inter partes review and post grant statutory estoppel requirements. A real party in interest that wishes to remain anonymous when filing a request for reexamination under 37 CFR 1.510 can do so by utilizing the services of a registered practitioner. In such an instance, the registered practitioner submitting a request for reexamination on behalf of the real party in interest would be certifying that the real party in interest was not estopped from filing the request. Conversely, an individual filing a request for reexamination under 37 CFR 1.510 on behalf of himself cannot remain anonymous, as he is required to sign the document that includes the 37 CFR 1.510(b)(6) certification.
Confidential submissions should include proper proof of service as required by 37 CFR 1.248(b) that the patent owner has been sent a copy of the submission; otherwise the submission will not be entered into the patent file.
Patent examiners should not, at their own initiative, create a submission under 35 U.S.C. 301 and place it in a patent file or forward it for placement in the patent file. Patent examiners are delegated by the Director with the responsibility of making decisions as to patentability. Any activity by examiners which would appear to indicate that patent claims are not
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patentable, outside of those cases pending before them, is inappropriate.
2204 Time for Filing Prior Art or Section 301 Written Statements [R-07.2015]
Submissions may be filed “at any time” under 35 U.S.C. 301. However, this period has been defined by rule (37 CFR 1.501(a)) to be “any time during the period of enforceability of a patent.” The period of enforceability is generally the length of the term of the patent plus the 6 years under the statute of limitations for bringing an infringement action (35 U.S.C. 286). In addition, if litigation is instituted within the period of the statute of limitations, submissions may be filed after the statute of limitations has expired, as long as the patent is still enforceable against someone. While submission under 35 U.S.C. 301 may be filed at any time during the period of enforceability of the patent, submissions filed after the date of any order to reexamine will not be entered into the patent file until the pending reexamination proceeding has been concluded (37 CFR 1.501(c)), unless the submissions are submitted (A) by the patent owner, (B) by an ex parte reexamination requester who also submits the fee and other documents required under 37 CFR 1.510, (C) in an ex parte third party requester’s reply under 37 CFR 1.535, or (D) as an enterable submission pursuant to 37 CFR 1.948 in an inter partes reexamination proceeding.
The purpose of this rule is to prevent harassment of the patent owner due to frequent submissions of prior art citations during reexamination proceedings.
2205 Content of Prior Art or Section 301 Written Statements [R-07.2015]
Information that may be submitted under 35 U.S.C. 301 is limited to prior art consisting of patents or printed publications or written statements of the patent owner filed in a proceeding before a federal court or the Office by the patent owner in which the patent owner took a position on the scope of any claim of the patent.
Pursuant to 35 U.S.C. 301, an explanation is required of how the person submitting the prior art or written
statement considers it to be pertinent and applicable to the patent. The submission must, at a minimum, contain some broad statement of the pertinence and manner of applying the prior art or written statement submitted as to the patentability of the claims of the patent. The explanation of how the person submitting the prior art or written statement considers it to be pertinent and applicable to the patent would set forth, for at least one of the patent claims, how each item cited shows or teaches at least one limitation of the claim. Submissions by patent owners may also include an explanation of how the claims of the patent differ from the submitted prior art or written statement.
Copies of all the submitted prior art patents, printed publications or section 301 written statements and any necessary English translation must be included so that the value of the information may be readily determined by persons inspecting the patent files and by the examiner during any subsequent reissue, reexamination proceeding, or other post patent proceeding.
All submissions filed by persons other than the patent owner must include proper proof of service as required by 37 CFR 1.248(b) reflecting that a copy of the submission has been mailed to, or otherwise served upon, the patent owner at the correspondence address as defined under 37 CFR 1.33(c).
All submissions filed should identify the patent to which the citation pertains by identifying the patent number, issue date, and patentee using a cover sheet. The documents themselves should also contain, or have placed thereon, an identification of the patent for which they are intended.
A submission that includes written statements must also include any other additional information, e.g. documents, pleadings, or evidence from the proceeding, in which the statement was filed that address the written statement, and such statement and accompanying information under this paragraph must be submitted in redacted form to exclude information subject to any applicable protective order.
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§ 2205CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
A submission that includes section 301 written statements must, pursuant to 37 CFR 1.501(a)(3), further include the identification of: (1) The forum and proceeding in which patent owner filed each statement; (2) The specific papers and portions of the papers submitted that contain the statement; and (3) How each statement submitted is a statement in which patent owner took a position on the scope of any claim in the patent. Identification of the portions of the papers required by 37 CFR 1.501(a)(3)(ii) can be satisfied, for example, by citing to the documents and specific pages of those documents where the patent owner claim scope statements are found. The requirement of 37 CFR 1.501(a)(3)(iii) ensures that the statement is one in which patent owner has taken a position on claim scope in a proceeding and not merely a restatement of a position asserted by another party. Other information can be provided by the submitter to assist the Office in readily identifying the patent owner claim scope statement, such as (1) information regarding the status of the proceeding and (2) the relationship of the proceeding to the patent.
Affidavits or declarations or other written evidence relating to the submitted documents may accompany the 37 CFR 1.501 submission to explain the contents or pertinent dates in more detail. A commercial success affidavit tied in with a particular document may also be acceptable. For example, the patent owner may wish to cite a patent or printed publication which raises the issue of obviousness of at least one patent claim. Together with the cited art, the patent owner may file (A) an affidavit of commercial success or other evidence of nonobviousness, or (B) an affidavit which questions the enablement of the teachings of the cited prior art.
No fee is required for the submission under 37 CFR 1.501.
A submission under 37 CFR 1.501 is limited to patents, printed publications, or patent owner written claim scope statements, additional information and an explanation of the pertinency and applicability of them. This may include an explanation by the patent owner as to how the claims differ from the prior art patents or printed publications or written claim scope statement and additional information.
It may also include affidavits and declarations. The submission cannot include any issue which is not directed to patents, printed publications or written claim scope statements and additional information. Thus, for example, a submission cannot include a statement as to the claims violating 35 U.S.C. 112, a statement as to the public use of the claimed invention, or a statement as to the conduct of the patent owner. The submission must be directed to patents, printed publications and/or written claim scope statements and additional information and cannot discuss what the patent owner did, or failed to do, with respect to submitting and/or describing patents and printed publications during examination, because that would be a statement as to the conduct of the patent owner. The submission also should not contain argument and discussion of references previously treated in the prosecution of the application which matured into the patent or references previously treated in a reexamination proceeding as to the patent.
If the submission contains any issue not directed to patents, printed publications or patent owner written claim scope statements, it should not be entered into the patent file, despite the fact that it may otherwise contain a complete submission of patents, printed publications and/or written statements and additional information with an explanation of the pertinency and applicability. Rather, the submission should be returned to the sender, discarded, or closed as described in MPEP § 2206.
Examples of letters submitting prior art under 37 CFR 1.501 follow.
EXAMPLE I
Submission by a third party:
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re patent of Joseph Smith Patent No. 9,999,999 Issued: July 7, 2000 For: Cutting Tool Submission of Prior Art Under 37 CFR 1.501 Hon. Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
Sir:
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The undersigned herewith submits in the above-identified patent the following prior art (including copies thereof) which is pertinent and applicable to the patent and is believed to have a bearing on the patentability of at least claims 1 – 3 thereof: Weid et al. U.S. 2,585,416 April 15, 1933; McGee U.S. 2,722,794 May 1, 1934; Paulk et al. U.S. 3,625,291 June 16, 1936 Each of the references discloses a cutting tool strikingly similar to the device of Smith in having pivotal handles with cutting blades and a pair of dies. It is believed that each of the references has a bearing on the patentability of claims 1 – 3 of the Smith patent. Insofar as claims 1 and 2 are concerned, each of the references anticipates the claimed subject matter under 35 U.S.C. 102. See Figure 2 and column 2 lines 20-45 of Weid et al., Figure 4 and column 3 lines 10-35 of Paulk et al., and Figure 2 and column 2 lines 12-25 of McGee. As to claim 3, only Weid et al. is a relevant primary reference, and the differences between the subject matter of this claim and the cutting tool of Weid et al are shown in the device of Paulk et al. Further, Weid et al suggests that different cutting blades can be used in their device. A person of ordinary skill in the art at the time the invention was made would have been led by the suggestion of Weid et al to the cutting blades of Paulk et al. as obvious substitutes for the blades of Weid et al. Respectfully submitted, (Signed)
Certificate of Service I hereby certify on this first day of June 1982, that a true and correct copy of the foregoing “Submission of Prior Art” was mailed by first-class mail, postage paid, to: John Roe, 555 Any Lane Anytown,VA 22202 (Signed) /John Jones/
EXAMPLE II
Submission by the patent owner:
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re patent of Joseph Smith Patent No. 9,999,999 Issued: July 7, 2000 For: Cutting Tool
Submission of Prior Art Under 37 CFR 1.501 Hon. Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 Sir: The undersigned herewith submits in the above identified patent the following prior art (including copies thereof) which is pertinent and applicable to the patent and is believed to have a bearing on the patentability of at least claims 1-3 thereof:
Weid et al. U.S. 2,585,416 April 15, 1933; McGee U.S. 2,722,794 May 1, 1934; Paulk et al. U.S. 3,625,291 June 16, 1936 Each of the references discloses a cutting tool strikingly similar to the device of Smith in having pivotal handles with cutting blades and a pair of dies. See Figure 2 and column 2 lines 20-45 of Weid et al., Figure 4 and column 3 lines 10-35 of Paulk et al., and Figure 2 and column 2 lines 12-25 of McGee; limitations (a) – (c) and (e) of Smith claim 1 are visible in the figures, and are described in the disclosures. While it is believed that each of the references has a bearing on the patentability of claims 1 – 3 of the Smith patent, the subject matter claimed differs from the references and is believed patentable thereover. Insofar as claims 1 and 2 are concerned, none of the references show the particular die (limitation (d) of Smith claim 1) claimed and the structure of these claimed dies would not have been obvious to a person of ordinary skill in the art at the time the invention was made.
As to claim 3, only Weid et al is a relevant primary reference, and the cutting blades required by claim 3 are shown in Paulk et al.; however, the remainder of the claimed structure is found only in Weid et al. A person of ordinary skill in the art at the time the invention was made would not have found it obvious to substitute the cutting blades of Paulk et al. for those of Weid et al. In fact, the disclosure of Weid et al. would lead a person of ordinary skill in the art away from the use of cutting blades such as shown in Paulk et al.
Respectfully submitted,
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§ 2205CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
(Signed) John Doe Attorney for Patent Owner Reg. No. 29760
2206 Handling of Prior Art or Section 301 Written Statements [R-07.2015]
Submissions under 37 CFR 1.501 received in the Office will be forwarded to the Technology Center (TC) that currently examines the class and subclass of the patent to which the submission is directed.
It is the responsibility of the TC to promptly determine whether the submission meets the requirements of the statute and the rules and to enter it into the patent file at the appropriate time if proper.
If a proper submission is filed after the date of an order for reexamination, the submission will be stored until the reexamination is concluded. Note 37 CFR 1.502 and 1.902 . After the reexamination proceeding is concluded, the submission is entered in the patent file. Submissions filed after the date of an order for reexamination will not be considered by the examiner during the reexamination.
I. SUBMISSION QUALIFIES FOR ENTRY UNDER 37 CFR 1.501
A. Submission by Third Party
1. Prior to Order in Any Pending Reexamination Proceeding
If the 37 CFR 1.501 submission is proper (i.e., is limited to patents, printed publications, and/or patent owner written claim scope statements and additional information and includes the requisite citation description and information) it should be immediately entered into the patent file.
2. After the Order in Any Pending Reexamination Proceeding
If the 37 CFR 1.501 submission is proper but is filed after an order for reexamination in a pending reexamination, the submission is not entered at that time because of the ongoing reexamination. It will be stored until the conclusion of the reexamination proceeding, after which the submission will be entered into the patent file. The patent owner and
third party submitter (if known) should be alerted of this by a letter providing notification. If there is a third party requester, the third party requester should also be sent a copy of the notification letter pursuant to 37 CFR 1.550(f). Such notification is important to enable the patent owner to consider submitting the prior art under 37 CFR 1.555 or 1.933 during the reexamination. Such notification will also enable the third party submitter to consider the desirability of filing a separate request for reexamination. If the submission does not include service of a copy on the patent owner and a duplicate copy is submitted, the duplicate copy should be sent to the patent owner along with the notification. If a duplicate copy is not present, no copy will accompany the notification to the patent owner. In this situation, the copy can be obtained from Public PAIR by the patent owner. If the submission includes service of a copy on the patent owner, the submission remains closed (i.e., is stored), but is not entered in the patent file until the reexamination is concluded. The patent owner and third party submitter (if known) should be given notice of this action.
B. Submission Filed by Patent Owner
If a proper 37 CFR 1.501 submission is filed by the patent owner, it should be entered in the file. This is true whether the submission is filed prior to or after an order for reexamination has been mailed. No notification to the patent owner is necessary.
II. SUBMISSION DOES NOT QUALIFY FOR ENTRY UNDER 37 CFR 1.501
A. Submission by Third Party
If the 37 CFR 1.501 submission is not proper because it is not limited to patents, printed publications, and/or patent owner written claim scope statements and additional information or it fails to include the requisite description and information or proof of service, it will not be entered into the patent file. The third party submitter (if known) and the patent owner may, as described below, be notified that the citation submission is improper and that it is not being entered in the patent file. The handling of the submission will vary depending on the particular following situations:
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1. Service of Copy Included
Where the submission includes an indication of service of copy on the patent owner or a satisfactory showing that none of the modes of service set forth in 37 CFR 1.248(a) are practicable, and the identity of the third party sender is known, the original submission should be returned to the third party sender, discarded, or closed if inadvertently entered into the file, and the third party submitter will be notified. Patent owner should be notified of non-entry.
2. Service of Copy Not Included; Identity of Third Party Sender Known
Where the submission does not include an indication of service on the patent owner or a satisfactory showing that none of the modes of service set forth in 37 CFR 1.248(a) are practicable, and the identity of the third party submitter is known, the submission should be returned to the third party submitter, discarded, or closed if inadvertently entered into the file, and the third party submitter will be notified. Patent owner will not be notified.
3. Service of Copy Not Included; Identity of Third Party Sender Not Known
Where the submission does not include an indication of service on the patent owner or a satisfactory showing that none of the modes of service set forth in 37 CFR 1.248(a) are practicable, and the identity of the third party submitter is not known, the original submission papers will be discarded. Patent owner will not be notified.
B. Citation Filed by the Patent Owner
If an improper submission under 37 CFR 1.501 is filed by the patent owner prior to an order for reexamination, it should not be entered in the file.
The patent owner should be notified of the non-entry, and the submission should be returned to the patent owner, discarded, or closed if inadvertently entered in the file. Proper submissions filed by the patent owner in a reexamination proceeding after an order for reexamination should be entered in the file under
37 CFR 1.555 (for ex parte reexamination) or under 37 CFR 1.933 (for inter partes reexamination).
2207 Entry of Court Decision in Patent File [R-07.2015]
The Solicitor’s Office processes notices required by 35 U.S.C. 290, received from the clerks of the various courts in the United States, and has them entered in the patent file. However, it is considered desirable that the entire court decision be supplied to the Office for entry into the patent file. Accordingly, the Office will accept at any time from
any party for placement in the patent file, submissions of the following: copies of notices of suits, copies of notices regarding other proceedings involving the patent and copies of decisions from litigation or other proceedings involving the patent. The Office will accept for entry into the patent file other court papers, or papers filed in the court, from litigation or other proceedings involving the patent. The decisions from litigation or other proceedings include final court decisions (even if the decision is still appealable), decisions to vacate, decisions to remand, and decisions as to the merits of the patent claims. Non-merit decisions (e.g., on motions for a new venue, a new trial/discovery date, or sanctions) will not be entered and will be expunged from the patent file by closing the appropriate paper if they were entered before recognizing their nature. Further, papers filed in the court from litigation or other proceedings involving the patent will not be entered into the patent file (and will be expunged if already entered) if they provide a party’s arguments (e.g., a memorandum in support of summary judgment). If the argument has an entry right in the reexamination proceeding, it must be submitted via the proper procedural vehicle (provision(s) of the rules) that provides for their entry. It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding number and its status. Any submission that is not permitted entry will be returned, expunged, or discarded, at the sole discretion of the Office.
It is noted that if the Office, in its sole discretion, deems the volume of the papers filed from litigation
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or other proceedings to be too lengthy, the Office may return, expunge, or discard, at its sole discretion, all or part of the submission. In such an instance, a party may limit the submission in accordance with what is deemed relevant, and resubmit the papers. Such submissions must be provided without additional comment. Persons making such submissions must limit the submission to the notification and not include further arguments or information. Highlighting of certain text by underlining, fluorescent marker, etc., goes beyond bare notice of the prior or concurrent proceedings. Any proper submission will be promptly placed on record (entered) in the patent file. Entry of these submissions is performed by the Files Repository personnel, unless a reexamination proceeding is pending, in which case, the Central Reexamination Unit, the Technology Center, or other area of the Office having responsibility for the reexamination enters the submission.
It is to be further noted that 35 U.S.C. 290 is directed to “courts of the United States.” Accordingly, any submission of papers from a court outside the United States (a foreign jurisdiction) will be returned, expunged or discarded, at the sole discretion of the Office.
Where a request for reexamination has been filed, see MPEP § 2282 for ex parte reexamination and MPEP § 2686 for inter partes reexamination. See MPEP § 2240 and § 2242 for handling of requests for ex parte reexamination of patents involved in litigation. See MPEP § 2640 and § 2642 for handling of requests for inter partes reexamination of patents involved in litigation.
2208 Service of Prior Art or Section 301 Written Statements on Patent Owner [R-07.2015]
A copy of any submission of prior art patents, printed publications, and/or section 301 written statements and additional information in a patent file by a person other than the patent owner must be served on the patent owner so that the patent owner is kept fully informed as to the content of his or her patent file wrapper/file history. See MPEP § 2206 for handling of prior art citations and written statements under 35 U.S.C. 301 .
The service to the patent owner should be addressed to the correspondence address as set forth in 37 CFR 1.33(c). See MPEP § 2222 as to the correspondence address.
A submission by a person other than the patent owner that fails to include proper proof of service as required by 37 CFR 1.248(b) or a satisfactory showing that none of the modes of service set forth in 37 CFR 1.248(a) are practicable will not be entered into the patent file.
2209 Ex Parte Reexamination [R-07.2015]
Procedures for reexamination of issued patents began on July 1, 1981, the date when the reexamination provisions of Public Law 96-517 came into effect.
The reexamination statute, 35 U.S.C. 302, and rules permit any person to file a request for an ex parte reexamination containing certain elements and the fee required under 37 CFR 1.20(c)(1). The Office initially determines if “a substantial new question of patentability” (35 U.S.C. 303(a)) is presented. If such a new question has been presented, reexamination will be ordered. The reexamination proceedings which follow the order for reexamination are very similar to regular examination procedures in patent applications; however, there are notable differences. For example, there are certain limitations as to the kind of rejections which may be made in a reexamination ordered under 35 U.S.C. 304, special reexamination forms to be used, and time periods set to provide “special dispatch.” When the prosecution of a reexamination proceeding is terminated, a reexamination certificate is issued which indicates the status of all claims following the reexamination.
The following sections of this chapter explain the details of reexamination.
The intent of the reexamination procedures covered in this chapter include the following:
(A) To provide procedures for reexamination of patents;
(B) To implement reexamination in an essentially ex parte manner;
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(C) To minimize the processing costs and complexities of reexamination;
(D) To maximize respect for the reexamined patent;
(E) To provide procedures for prompt and timely determinations by the Office in accordance with the “special dispatch” requirements of 35 U.S.C. 305.
The basic characteristics of ex parte reexamination are as follows:
(A) Anyone can request reexamination at any time during the period of enforceability of the patent;
(B) In ex parte reexaminations ordered under 35 U.S.C. 304, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103.Patents may also be applied in a double patenting rejection as discussed in MPEP § 2258 subsection I.D. (However, in ex parte reexaminations ordered under 35 U.S.C. 257, the prior art considered during reexamination is not limited. See MPEP § 2801);
(C) A substantial new question of patentability must be present for reexamination to be ordered;
(D) If ordered, the actual reexamination proceeding is ex parte in nature;
(E) Decision on a request for reexamination submitted under 35 U.S.C. 302 must be made no later than 3 months from its filing, and the remainder of the proceeding must proceed with “special dispatch” within the Office. (Similarly, a decision on a request for supplemental examination submitted under 35 U.S.C. 257 must be made no later than 3 months from its filing (see MPEP § 2815), and any ex parte reexamination proceeding ordered as a
result of a supplemental examination proceeding must proceed with “special dispatch” within the Office);
(F) If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of a reexamination certificate;
(G) The scope of a claim cannot be enlarged by amendment;
(H) All reexamination and patent files are open to the public, but see paragraph (I) below;
(I) The reexamination file is scanned into IFW to provide an electronic format copy of the file. All
public access to and copying of the reexamination file may be made from the electronic format copy available through PAIR. Any remaining paper files are not available to the public. Images of non-patent literature (NPL) cited in public files are not available for either viewing or downloading through Public PAIR. Certified copies of the full contents of the files, including NPL, are available from the Office of Public Records, and may be ordered online at www.uspto.gov.
For a discussion of public access to papers filed in a supplemental examination proceeding, see MPEP § 2803.02.
Parties are cautioned that the reexamination statute, regulations, and published examining procedures do not countenance so-called “litigation tactics” in reexamination proceedings. The parties are expected to conduct themselves accordingly. For example, it is expected that submissions of papers that are not provided for in the reexamination regulations and/or appear to be excluded by the regulation will either be filed with an appropriate petition to accept the paper and/or waive the regulation(s), or not filed at all. Parties are advised that multiple submissions, such as a reply to a paper opposing a petition and a sur-reply directed to such a reply are not provided for in the reexamination regulations or examining procedures. It is expected that the parties will adhere to the provisions of 37 CFR 11.18(b) throughout the course of a reexamination proceeding.
2210 Request for Ex Parte Reexamination under 35 U.S.C. 302 [R-07.2015]
35 U.S.C. 302 Request for reexamination.
Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301. The request must be in writing and must be accompanied by payment of a reexamination fee established by the Director pursuant to the provisions of section 41. The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested. Unless the requesting person is the owner of the patent, the Director promptly will send a copy of the request to the owner of record of the patent.
37 CFR 1.510 Request for ex parte reexamination.
(a) Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under §
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1.501, unless prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). The request must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).
(b) Any request for reexamination must include the following parts:
(1) A statement pointing out each substantial new question of patentability based on prior patents and printed publications.
(2) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. For each statement of the patent owner and accompanying information submitted pursuant to § 1.501(a)(2) which is relied upon in the detailed explanation, the request must explain how that statement is being used to determine the proper meaning of a patent claim in connection with the prior art applied to that claim and how each relevant claim is being interpreted. If appropriate, the party requesting reexamination may also point out how claims distinguish over cited prior art.
(3) A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.
(4) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.
(5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.
(6) A certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request.
(c) If the request does not include the fee for requesting ex parte reexamination required by paragraph (a) of this section and meet all the requirements by paragraph (b) of this section, then the person identified as requesting reexamination will be so notified and will generally be given an opportunity to complete the request within a specified time. Failure to comply with the notice will result in the ex parte reexamination request not being granted a filing date, and will result in placement of the request in the patent file as a citation if it complies with the requirements of § 1.501.
(d) The filing date of the request for ex parte reexamination is the date on which the request satisfies all the requirements of this section.
(e) A request filed by the patent owner may include a proposed amendment in accordance with § 1.530.
(f) If a request is filed by an attorney or agent identifying another party on whose behalf the request is being filed, the attorney or agent must have a power of attorney from that party or be acting in a representative capacity pursuant to § 1.34.
Any person, at any time during the period of enforceability of a patent, may file a request for ex parte reexamination by the U.S. Patent and Trademark Office of any claim of the patent based on prior art patents or printed publications, unless prohibited by the estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). The estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes review and post grant review, respectively, and they only prohibit the filing of a subsequent request for ex parte reexamination, once estoppel attaches; there is no estoppel as to the Office maintaining an existing ex parte reexamination proceeding. The request must include the elements set forth in 37 CFR 1.510(b) (see MPEP § 2214) and must be accompanied by the fee as set forth in 37 CFR 1.20(c)(1). If a request filed by the patent owner includes a proposed amendment in accordance with 37 CFR 1.530, excess claims fees under 37 CFR 1.20(c)(3) and (c)(4) may also apply; see MPEP § 2250.03. No attempt will be made to maintain a requester’s name in confidence.
After the request for reexamination, including the entire fee for requesting reexamination, is received in the Office, no abandonment, withdrawal, or striking of the request is possible, regardless of who requests the same. In some limited circumstances, such as after a final court decision where all of the claims are finally held invalid, a reexamination order may be vacated if the decision was rendered prior to the order, and the reexamination may be terminated if the decision was rendered subsequent to the order, see MPEP § 2286.
2211 Time for Requesting Ex Parte Reexamination under 35 U.S.C. 302 [R-07.2015]
Under 37 CFR 1.510(a), any person may, at any time during the period of enforceability of a patent, file a request for ex parte reexamination. This period was set by rule, since the Office considered that Congress could not have intended expending Office resources on deciding patent validity questions in
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patents which cannot be enforced. See Patlex Corp. v. Mossinghoff, 758 F.2d 594, 225 USPQ 243, 249 (Fed. Cir. 1985). The period of enforceability is generally determined by adding 6 years to the date on which the patent expires but the period may be extended if there is pending litigation. Specifically, if litigation is instituted within the period of the statute of limitations, requests for reexamination may be filed after the statute of limitations has expired, as long as the patent is still enforceable.
The patent expiration date for a utility patent, for example, is determined by taking into account the term of the patent, whether maintenance fees have been paid for the patent, whether any disclaimer was filed as to the patent to shorten its term, any patent term extensions or adjustments for delays within the Office under 35 U.S.C. 154 (see MPEP § 2710, et seq.), and any patent term extensions available under 35 U.S.C. 156 for premarket regulatory review (see MPEP § 2750 et. seq.). Any other relevant information should also be taken into account.
2212 Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302 [R-07.2015]
37 CFR 1.510 Request for ex parte reexamination.
(a) Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501, unless prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). The request must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).
*****
35 U.S.C. 302 and 37 CFR 1.510(a) both indicate that “any person” may file a request for ex parte reexamination of a patent, unless prohibited by AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). Accordingly, there are no types of “persons” who are excluded from being able to seek reexamination under 35 U.S.C. 302. Corporations and/or governmental entities are included within the scope of the term “any person.” The only “person” who is barred from filing a request for ex parte reexamination of a patent under 35 U.S.C. 302 is one who is barred from doing so by the estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) based on inter partes review and post
grant review, respectively, once the estoppel attaches. The patent owner can ask for reexamination which will be limited to an ex parte consideration of prior art patents or printed publications. If the patent owner wishes to have a wider consideration of issues by the Office, including matters such as prior public use or on sale, the patent owner may file a reissue application (see, e.g., MPEP § 1401 - § 1403), or, where appropriate, a supplemental examination proceeding (see, e.g., MPEP § 2801 – § 2803). It is also possible for the Director of the Office to initiate reexamination on the Director’s own initiative under 37 CFR 1.520. Some of the persons likely to use reexamination under 35 U.S.C. 302 are patentees, licensees, potential licensees, attorneys without identification of their real client in interest, infringers, potential exporters, patent litigants, interference applicants, and International Trade Commission respondents. The name of the person who files the request will not be maintained in confidence.
2212.01 Inquiries from Persons Other Than the Patent Owner [R-11.2013]
Examiners should not discuss or answer inquiries from third parties (i.e., parties who are not the patent owner) in reexamination proceedings. A party who is not the patent owner should be referred by the examiner to the Technology Center (TC) Quality Assurance Specialist (QAS) or Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) for the examiner’s art unit. The CRU SPRS or TC QAS will address any such questions. Only questions on strictly procedural matters, i.e., not directed to any specific reexamination proceeding, may be discussed by the CRU SPRS or TC QAS with that party.
Employees of the Office, particularly patent examiners who conducted a concluded reexamination proceeding, should not discuss or answer inquiries from any person outside the Office as to whether a certain reference or other particular evidence was considered during the proceeding and whether a claim would have been allowed over that reference or other evidence had it been considered during the proceeding.
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Patent practitioners must not make improper inquiries of members of the patent examining corps and the Office as a whole. See 37 CFR 11.804. Inquiries from members of the public relating to the matters discussed above must, of necessity, be refused and such refusal should not be considered discourteous or an expression of opinion by the Office as to the validity, patentability, or enforceability of the patent.
The definitions set forth in 37 CFR 104.1 and the exceptions in 37 CFR 104.21 are applicable to this section.
2213 Representative of Requester [R-07.2015]
37 CFR 1.510 Request for ex parte reexamination. *****
(f) If a request is filed by an attorney or agent identifying another party on whose behalf the request is being filed, the attorney or agent must have a power of attorney from that party or be acting in a representative capacity pursuant to § 1.34.
Where an attorney or agent files a request for an identified client (the requester), he or she may act under either a power of attorney from the client, or act in a representative capacity under 37 CFR 1.34, see 37 CFR 1.510(f). While the filing of the power of attorney is desirable, processing of the reexamination request will not be delayed due to its absence.
In order to act in a representative capacity under 37 CFR 1.34, an attorney or agent must set forth his or her registration number, his or her name, and his or her signature. In order to act under a power of attorney from a requester, an attorney or agent must be provided with a power of attorney. 37 CFR 1.32(c) provides that a “power of attorney may only name as representative” the inventors or registered patent practitioners. Thus, an attorney or agent representing a requester must be a registered patent practitioner.
If any question of authority to act is raised, proof of authority may be required by the Office.
All correspondence for a requester that is not the patent owner is addressed to the representative of
the requester, unless a specific indication is made to forward correspondence to another address.
If the request is filed by a person on behalf of the patent owner, correspondence will be directed to the patent owner at the address as indicated in 37 CFR 1.33(c), regardless of the address of the person filing the request. See MPEP § 2222 for a discussion of who receives correspondence on behalf of a patent owner and how changes in the correspondence address are to be made.
A patent owner may not be represented during a reexamination proceeding by any person who is not registered to practice before the Office, since those individuals are prohibited by 37 CFR 1.33(c) from signing amendments and other papers filed in a reexamination proceeding on behalf of the patent owner.
2214 Content of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 [R-07.2015]
37 CFR 1.510 Request for ex parte reexamination.
(a) Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501, unless prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). The request must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).
(b) Any request for reexamination must include the following parts:
(1) A statement pointing out each substantial new question of patentability based on prior patents and printed publications.
(2) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. For each statement of the patent owner and accompanying information submitted pursuant to § 1.501(a)(2) which is relied upon in the detailed explanation, the request must explain how that statement is being used to determine the proper meaning of a patent claim in connection with the prior art applied to that claim and how each relevant claim is being interpreted. If appropriate the party requesting reexamination may also point out how claims distinguish over cited prior art.
(3) A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the
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necessary and pertinent parts of any non-English language patent or printed publication.
(4) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.
(5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.
(6) A certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request.
*****
37 CFR 1.510(a) requires the payment of the fee specified in 37 CFR 1.20(c)(1) for a request for reexamination filed under 35 U.S.C. 302 . See MPEP § 2215. If a request filed under 35 U.S.C. 302 by the patent owner includes a proposed amendment in accordance with 37 CFR 1.530, excess claims fees under 37 CFR 1.20(c)(3) and (c)(4) may also apply; see MPEP § 2250.03.
37 CFR 1.510(b) sets forth the required elements of a request for ex parte reexamination. The elements are as follows:
“(1) a statement pointing out each substantial new question of patentability based on prior patents and printed publications.”
This statement should clearly point out what the requester considers to be the substantial new question of patentability which would warrant a reexamination. The cited prior art should be listed on a form PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms) by the requester. See also MPEP § 2217.
A request for reexamination must assert a substantial new question of patentability. For each identified substantial new question of patentability and each identified proposed ground of rejection, the request must explain how the cited documents identified for that substantial new question of
patentability/proposed ground of rejection raise a substantial new question of patentability. See MPEP § 2216. A requester must not, in a request for reexamination, argue that the submitted references do not raise a substantial new question of patentability, and that no order for reexamination should be issued.
“(2) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. For each statement of the patent owner and accompanying information submitted pursuant to § 1.501(a)(2) which is relied upon in the detailed explanation, the request must explain how that statement is being used to determine the proper meaning of a patent claim in connection with the prior art applied to that claim and how each relevant claim is being interpreted. If appropriate, the party requesting reexamination may also point out how claims distinguish over cited prior art.”
The request must identify each substantial new question of patentability raised and proposed ground of rejection separately. The request must apply all of the cited prior art to the claims for which reexamination is requested. For each identified substantial new question of patentability and each identified proposed ground of rejection, the request must explain how the cited documents identified for that substantial new question of patentability/proposed ground of rejection are applied to meet or teach the patent claim limitations to thus establish the identified substantial new question of patentability or proposed ground of rejection. See MPEP § 2217. If the request is filed by the patent owner, he or she may also indicate how the claims distinguish from the cited prior art patents and printed publications. If any statement of the patent owner submitted pursuant to 37 CFR 1.501(a)(2) is relied upon in the detailed explanation, requester must explain how that statement is being used to determine the proper meaning of a patent claim in connection with prior art applied to that claim. 37 CFR 1.510(b)(2) requires that the “detailed explanation” of applying prior art provided in the request for ex parte reexamination must explain
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§ 2214CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
how each patent owner claim scope statement is being used to determine the proper meaning of each patent claim in connection with the prior art applied to that claim. The explanation will be considered by the Office during the examination stage, if reexamination is ordered. At the order stage, the Office will not consider any patent owner claim scope statement discussed in the detailed explanation of the request. See 35 U.S.C. 301(d).
“(3) A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.”
A copy of each cited patent or printed publication, as well as a translation of each non-English document (or a translation of at least the portion(s) relied upon) is required so that all materials will be available to the examiner for full consideration. A listing of the patents and printed publications as provided for in 37 CFR 1.98 must also be provided. A comprehensive listing is required, since the identification of the cited art in reexamination by the requester is no less important than that of a patent owner or applicant, and furthers the statutory mandate of 35 U.S.C. 305 that reexamination proceedings must be “conducted with special dispatch within the Office.” The requirement for the submission of a copy of every patent or printed publication relied upon or referred to in the request, pursuant to 37 CFR 1.510(b)(3), is waived to the extent that copies of U.S. patents and U.S. patent application publications which are relied upon or referred to in the request are not required to be submitted with the request, unless specifically required by the Office. See MPEP § 2218.
“(4) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.”
A copy of the patent, for which reexamination is requested, should be provided with the specification and claims submitted in a double column format. The drawing pages of the printed patent are presented as they appear in the printed patent; the same is true for the front page of the patent. Thus, a full copy of the printed patent (including the front page) can be used to provide the abstract, drawings, specification, and claims of the patent for the reexamination request. The printed patent is to be reproduced on only one side of the paper; a two sided copy of the patent is not proper. See MPEP § 2219.
Any disclaimer, certificate of correction, or reexamination certificate issued in the patent becomes a part of the patent. Thus, a copy of each must be supplied in order to provide the complete patent. The copy must have each page plainly written on only one side of a sheet of paper.
“(5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirely on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.”
If the request is filed under 35 U.S.C. 302 by a person other than the patent owner, a certification that a copy of the request papers has been served on the patent owner must be included. The certification must set forth the name and address employed in serving the patent owner. If service was not possible after a reasonable effort to do so, a duplicate copy of the request must be supplied to the Office together with a cover letter including an explanation of what effort was made to effect service, and why that effort was not successful. To avoid the possibility of the Office erroneously charging a duplicate filing fee, requesters are strongly encouraged to clearly word the cover letter by stating, for example, in bold print in the heading “Duplicate Copy of Request Filed under 37 CFR 1.510(b)(5) When Service on the Patent Owner Was Not Possible.” The request should be as complete as possible, since there is no guarantee that the examiner will consider other prior art when making the decision on the request. Also, this may be the third party requester’s only
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opportunity to participate in the proceeding since, if no statement under 37 CFR 1.530(b) is filed by the patent owner, no later reply under 37 CFR 1.535 or other submission may be filed by the requester in the ex parte reexamination proceeding. See also MPEP § 2220.
“(6) A certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request.”
37 CFR 1.510(b)(6) requires that the request contain a certification by the third party requester that the statutory estoppel provisions of inter partes review and post grant review do not bar the third party from requesting ex parte reexamination under 35 U.S.C. 302 . The basis for this requirement is the estoppel provisions of inter partes review and post grant review provided in AIA 35 U.S.C. 315(e)(1) and 35 U.S.C. 325(e)(1), respectively, which identify when a petitioner for inter partes review or post grant review, or a real party in interest or privy of the petitioner, may not file a request for ex parte reexamination.
The rules do not requireex parte reexamination requesters to identify themselves upon the filing of the request under 35 U.S.C. 302 . The certification requirement of 37 CFR 1.510(b)(6), coupled with a party’s 37 CFR 11.18 certification obligations when transacting business before the Office, are considered sufficient to ensure compliance with the inter partes review and post grant statutory estoppel
requirements. A real party in interest that wishes to remain anonymous when filing a request for reexamination under 37 CFR 1.510 can do so by utilizing the services of a registered practitioner. In such an instance, the registered practitioner submitting a request for reexamination on behalf of the real party in interest would be certifying that the real party in interest was not estopped from filing the request. Conversely, an individual filing a request for reexamination under 37 CFR 1.510 on behalf of himself cannot remain anonymous, as he is required to sign the document that includes the 37 CFR 1.510(b)(6) certification.
In order to obtain a reexamination filing date, the request papers must include the fee for requesting ex parte reexamination required by 37 CFR 1.510(a) and all of the parts required by 37 CFR 1.510(b). Request papers that fail to satisfy all the requirements of 37 CFR 1.510(a) and (b) are incomplete and will not be granted a filing date. See MPEP § 2227.
An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a reexamination proceeding except as provided in MPEP § 2258.02.
Form PTO/SB/57 should be helpful to persons filing requests for reexamination under 37 CFR 1.510 . The use of this form as the transmittal form and cover sheet of a request for reexamination is encouraged, but its use is not a requirement of the law nor the rules. Immediately following is a form PTO/SB/57 and a sample of a request for reexamination that would be attached to the form PTO/SB/57 cover sheet.
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2215 Fee for Requesting Ex Parte Reexamination under 35 U.S.C. 302 [R-07.2015]
37 CFR 1.510 Request for ex parte reexamination. *****
(c) If the request does not include the fee for requesting ex parte reexamination required by paragraph (a) of this section and meet all the requirements by paragraph (b) of this section, then the person identified as requesting reexamination will be so notified and will generally be given an opportunity to complete the request within a specified time. Failure to comply with the notice will result in the ex parte reexamination request not being granted a filing date, and will result in placement of the request in the patent file as a citation if it complies with the requirements of § 1.501.
(d) The filing date of the request for ex parte reexamination is the date on which the request satisfies all the requirements of this section.
*****
In order for a request filed under 35 U.S.C. 302 to be accepted, be given a filing date, and be published in the Official Gazette , the request papers must satisfy all the requirements of 37 CFR 1.510(a) and (b). The entire fee required under 37 CFR 1.20(c)(1) for filing a request for reexamination must be paid. If the request was filed under 35 U.S.C. 302 by the patent owner and includes a proposed amendment in accordance with 37 CFR 1.530, excess claims fees under 37 CFR 1.20(c)(3) and (c)(4) may also apply; see MPEP § 2250.03.
Pursuant to 37 CFR 1.20(c)(1), there are different filing fees for a large entity, a small entity and a micro entity, when filing a request for ex parte reexamination under 35 U.S.C. 302. In order for a requester to pay small entity or micro entity fees, a requester must affirmatively state that it is eligible for small entity or micro entity status (respectively). For example, a requester can affirmatively assert small entity status by checking the appropriate box in line 3 on the transmittal form (PTO/SB/57). However, only a patent owner requester can establish micro entity status. A third party requester cannot establish micro entity status, since a third party requester is not provided for in 37 CFR 1.29. See 37 CFR 1.27 and MPEP §§ 509.02 and 509.03 for more information about establishing small entity status. See 37 CFR 1.29 and MPEP § 509.04 et seq. for more information about establishing micro entity status.
If the request for ex parte reexamination under 35 U.S.C. 302 is subsequently denied (see MPEP § 2247 and § 2248), or vacated (see MPEP § 2227 and § 2246, subsection I), a refund in accordance with 37 CFR 1.26(c) will be made to the identified requester. If the request for ex parte reexamination under 35 U.S.C. 302 is found to be incomplete and the defect is not cured (see MPEP § 2227), a refund in accordance with 37 CFR 1.26(a) will be made to the identified requester.
If the entire fee for ex parte reexamination is not paid or all the requirements of 37 CFR 1.510(a) and (b) are not satisfied, the request will be considered to be incomplete. See 37 CFR 1.510(c) and (d) and MPEP § 2227.
Where the entire filing fee is not paid after the requester has been given an opportunity to do so, no determination on the request will be made. The request papers will ordinarily be placed in the patent file as a submission under 37 CFR 1.501, if they comply with the requirements of the rule. See MPEP § 2206 for handling of prior art citations or written statements under 37 CFR 1.501.
2216 Substantial New Question of Patentability [R-07.2015]
Under 35 U.S.C. 304, the Office must determine whether “a substantial new question of patentability” affecting any claim of the patent has been raised. 37 CFR 1.510(b)(1) requires that a request for ex parte reexamination include “a statement pointing out each substantial new question of patentability based on prior patents and printed publications.” If such a new question is found, an order for ex parte reexamination of the patent is issued. It is therefore important that the request clearly set forth in detail what the requester considers the “substantial new question of patentability” to be in view of patents and printed publications cited under the provisions of 35 U.S.C. 302. The request must point out how any questions of patentability raised are substantially different from those raised in the previous examination of the patent before the Office.
For requests filed under 35 U.S.C. 302, it is not sufficient that a request for reexamination merely proposes one or more rejections of a patent claim or
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claims as a basis for reexamination. It must first be demonstrated that a patent or printed publication that is relied upon in a proposed rejection presents a new, non-cumulative technological teaching that was not previously considered and discussed on the record during the prosecution of the application that resulted in the patent for which reexamination is requested, and during the prosecution of any other prior proceeding involving the patent for which reexamination is requested. See also MPEP § 2242.
The legal standard for ordering ex parte reexamination, as set forth in 35 U.S.C. 303(a), requires a substantial new question of patentability. The substantial new question of patentability may be based on art previously considered by the Office if the reference is presented in a new light or a different way that escaped review during earlier examination. The clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists. The requirement for a substantial new question of patentability remains in place even if it is clear from the record of a patent for which reexamination is requested that the patent was granted because the Office did not show “motivation” to combine, or otherwise satisfy the teaching, suggestion, or motivation (TSM) test. Thus, a reexamination request relying on previously applied prior art that asks the Office to look at the art again based solely on the Supreme Court’s clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR, without presenting the art in new light or different way, will not raise a substantial new question of patentability as to the patent claims, and reexamination will not be ordered.
After the enactment of the Patent and Trademark Office Authorization Act of 2002 (“the 2002 Act”), a substantial new question of patentability can be raised by patents and printed publications “previously cited by or to the Office or considered by the Office” (“old art”). The 2002 Act did not negate the statutory requirement for a substantial new question of patentability that requires raising new questions about pre-existing technology. In the implementation of the 2002 Act, MPEP § 2242,
subsection II.A. was revised. The revision permits raising a substantial new question of patentability based solely on old art, but only if the old art is “presented/viewed in a new light, or in a different way, as compared with its use in the earlier examination(s), in view of a material new argument or interpretation presented in the request.” Thus, a request may properly raise a substantial new question of patentability by raising a material new analysis of previously considered reference(s) under the rationales authorized by KSR.
Questions relating to grounds of rejection other than those based on prior art patents or printed publications should not be included in a request filed under 35 U.S.C. 302 and will not be considered by the examiner if included. Examples of such questions that will not be considered are public use, on sale, and conduct by parties.
Affidavits or declarations or other written evidence which explain the contents or pertinent dates of prior art patents or printed publications in more detail may be considered in reexamination. See MPEP § 2258.
2217 Statement Applying Prior Art in a Request Filed under 35 U.S.C. 302 [R-07.2015]
The third sentence of 35 U.S.C. 302 indicates that the “request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.” 37 CFR 1.510(b)(2) requires that the request include “[a]n identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested.” If the request is filed by the patent owner, the request for reexamination may also point out how claims distinguish over cited prior art.
The prior art applied may only consist of prior art patents or printed publications. The prior art regime under which the application for the patent was examined (the first-inventor-to-file prior art regime, or the first-to-invent prior art regime) will generally be applied in reexamination of the patent, and any statement in the request applying the prior art must reflect that.
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With respect to the first-inventor-to-file prior art regime, substantial new questions of patentability may be based upon the provisions of 35 U.S.C. 102 as it is in effect on and after March 16, 2013, applicable to prior art patents and printed publications. Thus “A person shall be entitled to a patent unless”:
(1) “the claimed invention was patented” or “described in a printed publication” “before the effective filing date of the claimed invention”; or (2) “the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”
These provisions are subject to the exceptions of 35 U.S.C. 102(b), and effective filing dates are determined pursuant to 35 U.S.C. 102(d). For further information as to the first-inventor-to-file prior art regime, see MPEP Chapter 700.
With respect to the first-to-invent prior art regime, substantial new questions of patentability may be based upon the following portions of 35 U.S.C. 102 (in effect on March 15, 2013):
“(a)...patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or” “(b) the invention was patented or described in a printed publication in this or a foreign country... more than one year prior to the date of the application for patent in the United States, or”
***** “(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than
twelve months before the filing of the application in the United States, or” “(e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or”
***** “(g)...(2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. ...”
Substantial new questions of patentability may also be presented under 35 U.S.C. 103 which are based on the above indicated portions of 35 U.S.C. 102.
Substantial new questions of patentability in a reexamination proceeding filed under 35 U.S.C. 302 must be based on patents or printed publications. Other matters, such as public use or on sale, inventorship, 35 U.S.C. 101, 35 U.S.C. 112, conduct, etc., will not be considered when making the determination on the request and should not be presented in the request. Further, a prior art patent or printed publication cannot be properly applied as a ground for reexamination if it is merely used as evidence of alleged prior public use or on sale, insufficiency of disclosure, etc. The prior art patent or printed publication must be applied directly to claims under 35 U.S.C. 103 and/or an appropriate portion of 35 U.S.C. 102 or relate to the application of other prior art patents or printed publications to claims on such grounds.
The statement applying the prior art may, where appropriate, point out that claims in the patent for which reexamination is requested are entitled only to the filing date of the patent and are not supported
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by an earlier foreign or United States patent application whose filing date is claimed. For example, the effective date of some of the claims in a patent which resulted from a continuing application under 35 U.S.C. 120 could be the filing date of the continuing application since those claims were not supported in the parent application. Therefore, intervening patents or printed publications are available as prior art. See In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958), In re van Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972). See also MPEP § 211.05.
Typically, substantial new questions of patentability in a reexamination proceeding filed under 35 U.S.C. 302 are based on “prior art” patents and publications. There are exceptions, however. For example, in In re Lonardo, 119 F.3d 960, 43 USPQ2d 1262 (Fed. Cir. 1997), the Federal Circuit upheld a nonstatutory double patenting rejection in which the patent upon which the rejection was based and the patent under reexamination shared the same effective filing date. See also the discussion as to double patenting in MPEP § 2258. Analogously, for reexamination proceedings examined under the first-to-invent prior art regime, a 35 U.S.C. 102(g)(2) rejection may be asserted in a reexamination proceeding based on the examples illustrated below:
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I. EXPLANATION MUST BE COMPLETE
The mere citation of new patents or printed publications without an explanation does not comply with 37 CFR 1.510(b)(2). Requester must present an explanation of how the cited patents or printed publications are applied to all claims which requester considers to merit reexamination. This not only sets forth the requester’s position to the Office, but also to the patent owner (where the patent owner is not the requester). A request for reexamination, including the citation form (form on which the references are listed), must not include citations to background references or other references which are not used to support a SNQ or proposed rejection of the claims, and explained in the request as to providing such support. Without explanation for each of the references the request seeks to make of record, the request lacks the requisite “detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested.”
Thus, for example, once the request has cited documents (patents and printed publications) and proposed combinations of the documents as to patent claims 1-10 (for example), the request must explain how each of the proposed combinations specifically applies to each claim that it is asserted against (i.e., claims 1 – 10), explaining how each document (reference) identified for the combination is used.
Ideally, the required explanation can be provided using an appropriately detailed claim chart that compares, limitation by limitation, each claim for which reexamination is requested with the relevant teachings of each reference cited in the request. See the sample request for reexamination in MPEP § 2214.
For proposed obviousness rejections, requester must provide at least one basis for combining the cited references, and a statement of why the claim(s) under reexamination would have been obvious over the proposed reference combination. Preferably, the requester should quote the pertinent teachings in the reference, referencing each quote by page, column and line number and any relevant figure numbers. The explanation must not lump together the
proposed rejections or proposed combinations of references.
Examples of inappropriate language:
- Claim 1 is unpatentable under 35 U.S.C. 102 as being anticipated by, or in the alternative, under 35 U.S.C. 103 as being obvious over the Smith reference.
- Claim 1 is unpatentable under 35 U.S.C. 103 as being obvious over Smith and/or Charles.
- Claim 2 is unpatentable under 35 U.S.C. 103 as being obvious over Smith in view of Jones or Harvey. (This could however be used if both Jones and Harvey provide a minor teaching which can be articulated in a sentence or two.)
- Claims 3 - 10 are unpatentable under 35 U.S.C. 103 as being obvious over Smith in view of either Jones and Cooper or Harvey and Cooper.
- Claims 3 - 10 are unpatentable under 35 U.S.C. 103 as being obvious over Smith in view of Harvey, taken alone or further in view of Cooper.
Examples of appropriate language:
- Claim 1 is unpatentable under 35 U.S.C. 102 as being anticipated by Smith.
- Claim 1 is unpatentable under 35 U.S.C. 103 as being obvious over Smith.
- Claim 1 is unpatentable under 35 U.S.C. 103 as being obvious over Charles.
- Claim 2 is unpatentable under 35 U.S.C. 103 as being obvious over Smith in view of Jones.
- Claim 2 is unpatentable under 35 U.S.C. 103 as being obvious over Smith in view of Harvey.
- Claims 3 - 10 are unpatentable under 35 U.S.C. 103 as being obvious over Smith in view of Jones, and further in view of Cooper.
- Claims 3 - 10 are unpatentable under 35 U.S.C. 103 as being obvious over Smith in view of Harvey, and further in view of Cooper.
Any failure to provide the required explanation for any document, combination, or claim will be identified in a “Notice of Failure to Comply with
Ex Parte Reexamination Request Filing Requirements” (see MPEP § 2227). If a requester
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receives such a notice that identifies one or more documents, combinations, or claims for which an explanation was not given, the requester has the option to respond by either:
(A) providing a separate explanation for each combination, document, and claim identified in the notice as lacking explanation; or
(B) explicitly withdrawing any document, combination, or claim for which reexamination was requested for which there is no explanation. Obviously, once this is done, requester need not provide an explanation for the withdrawn document, combination, or claim. Thus, for example, if the requester’s response to the notice explicitly withdraws the request as to claims 6-10, then the documents and their combinations need only be applied separately as to claims 1-5 of the patent. Likewise, if the requester’s response to the notice explicitly withdraws the Jones patent from the request, then no explanation is required as to the Jones reference, and all combinations advanced in the request that contained Jones are deemed to be withdrawn.
Even if the request fails to comply with one of the above-identified requirements, the request may be accepted if it is readily understood from the explanation provided in the request as to how the cited patents or printed publications are applied to all claims which requester considers to merit reexamination.
II. AFFIDAVITS/DECLARATIONS/OTHER WRITTEN EVIDENCE
Affidavits or declarations or other written evidence which explain the contents or pertinent dates of prior art patents or printed publications in more detail may be considered in reexamination. See MPEP § 2258.
III. ADMISSIONS
The consideration under 35 U.S.C. 303 of a request for ex parte reexamination filed under 35 U.S.C. 302 is limited to prior art patents and printed publications. See Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988). Thus an admission, per se, may not be the basis for establishing a substantial new question of
patentability. However, an admission by the patent owner of record in the file or in a court record may be utilized in combination with a patent or printed publication.
For handling of admissions during the examination stage of a proceeding (i.e., after reexamination has been ordered), see MPEP § 2258.
The admission can reside in the patent file (made of record during the prosecution of the patent application) or may be presented during the pendency of the reexamination proceeding or in litigation. Admissions by the patent owner as to any matter affecting patentability may be utilized to determine the scope and content of the prior art in conjunction with patents and printed publications in a prior art rejection, whether such admissions result from patents or printed publications or from some other source. An admission relating to any prior art established in the record or in court may be used by the examiner in combination with patents or printed publications in a reexamination proceeding. The admission must stand on its own. Information supplementing or further defining the admission would be improper.
Any admission submitted by the patent owner is proper. A third party, however, may not submit admissions of the patent owner made outside the record of the file or the court record, unless such admissions were entered into a court record. If an admission made outside the record of the file or the court record is entered into a court record and a copy thereof is then filed in a reexamination (as a copy of a paper filed in the court), such paper could be admitted pursuant to MPEP § 2282; however, such would not be given weight as an admission with respect to use in establishing a substantial new question of patentability, or as a basis in rejecting claims. Such a submission would be outside the scope of reexamination.
2218 Copies of Prior Art [R-07.2015]
It is required that a copy of each patent or printed publication relied on or referred to in the request filed under 35 U.S.C. 302, be filed with the request (37 CFR 1.510(b)(3)). If the copy provided is not legible, or is such that its image scanned into the
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Image File Wrapper system (IFW) will not be legible, it is deemed to not have been provided. The appropriate “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements” (see MPEP § 2227) will identify this defect. An exception is color photographs and like color submissions, which, if legible as presented, will be retained in an “artifact” file and used as such. If any of the documents are not in the English language, an English language translation of all necessary and pertinent parts is also required. See MPEP § 609.04(a), subsection III. An English language summary or abstract of a non-English language document is usually not sufficient. There is no assurance that the Office will consider the non-English language patent or printed publication beyond the translation matter that is submitted.
The requirement for the submission of a copy of every patent or printed publication relied upon or referred to in the request, pursuant to 37 CFR 1.510(b)(3), is waived to the extent that copies of U.S. patents and U.S. patent application publications which are relied upon or referred to in the request are not required to be submitted with the request, unless specifically required by the Office. This waiver is in accordance with 37 CFR 1.98, which excludes U.S. patents and U.S. patent publications from the requirement for the submission of a legible copy of documents cited in an information disclosure statement, unless specifically required by the Office.
In addition, it is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide the application/proceeding number and its status (note that a submission that is not permitted entry will be returned, expunged or discarded, at the sole discretion of the Office). For example, where the patent for which reexamination is requested is a continuation-in-part of a parent application, the requester would notify the Office of the application number of the parent application and its status if the asserted substantial new question of patentability relates to a proposed rejection based on an intervening art and the question of whether the
claimed subject matter in the patent has support in the parent application is relevant.
2219 Copy of Printed Patent [R-07.2015]
Requesters are required under 37 CFR 1.510(b)(4) to include a copy of the patent for which reexamination is requested, to serve as the specification for the reexamination proceeding. A copy of the patent for which reexamination is requested should be provided in a double column format. Thus, a full copy of the printed patent (including the front page) would be used to provide the abstract, drawings, specification, and claims of the patent for the reexamination request and the resulting reexamination proceeding. A copy of any disclaimer, certificate of correction, or reexamination certificate issued for the patent must also be included, so that a complete history of the patent is before the Office for consideration. A copy of any federal court decision, complaint in a pending civil action, or interference or derivation decision should also be submitted.
2220 Certificate of Service [R-07.2015]
If the requester of a request filed under 35 U.S.C. 302 is a person other than the patent owner, the owner of the patent must be served with a copy of the request in its entirety. The service must be made on the patent owner’s correspondence address as indicated in 37 CFR 1.33(c). The third party requester must set forth on the certificate of service the name and address of the party served and the method of service. The certificate of service must be attached to the request submitted to the Office. Further, the copy of the request served on the patent owner must also include a copy of the certificate of service. If service was not possible after a reasonable effort to do so, a duplicate copy of the request papers must be supplied to the Office together with a cover letter including an explanation of what effort was made to effect service, and why that effort was not successful. To avoid the possibility of the Office erroneously charging a duplicate filing fee, requesters are strongly encouraged to clearly word the cover letter by stating, for example, in bold print in the heading “Duplicate Copy of Request Filed under 37 CFR 1.510(b)(5) When Service on the Patent Owner Was Not Possible .”
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See MPEP § 2266.03 regarding service on the requester and on the patent owner.
2221 Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner [R-07.2015]
Under 37 CFR 1.510(e), a patent owner may include a proposed amendment with his or her request. Any such amendment must be in accordance with 37 CFR 1.530(d) through (j). See MPEP § 2250 as to the format and requirements of an amendment in a reexamination proceeding. If an amendment is submitted to add claims to the patent being reexamined, then excess claims fees pursuant to 37 CFR 1.20(c)(3) and (c)(4) may be applicable to the presentation of the added claims. See the discussion of excess claim fees in MPEP § 2250.03. Amendments may also be proposed by patent owners in a statement under 37 CFR 1.530(b) and (c) or during the actual ex parte reexamination prosecution (37 CFR 1.550(b)). See also MPEP § 2234 and § 2250.
The request should be decided on the wording of the patent claims in effect at that time (without any proposed amendments). The decision on the request will be made on the basis of the patent claims as though the proposed amendment had not been presented. However, if the request for reexamination is granted, all subsequent reexamination prosecution and examination should be on the basis of the claims as amended.
2222 Address of Patent Owner [R-07.2015]
37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
*****
(c) All notices, official letters, and other communications for the patent owner or owners in a reexamination or supplemental examination proceeding will be directed to the correspondence address in the patent file. Amendments filed in a reexamination proceeding, and other papers filed in a reexamination or supplemental examination proceeding on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34. Double correspondence with the patent owner or owners and the patent owner’s attorney
or agent, or with more than one attorney or agent, will not be undertaken.
*****
Address of Patent Owner: The correspondence address for the patent to be reexamined, or being reexamined is the correct address for all notices, official letters, and other communications for patent owners in reexamination proceedings. See 37 CFR 1.33(c).
Representative of Patent Owner: As a general rule, the attorney-client relationship terminates when the purpose for which the attorney was employed is accomplished; e.g., the issuance of a patent to the client. However, under 37 CFR 11.104, as under former 37 CFR 10.23(c)(8), a practitioner should not fail to timely and adequately inform a client or former client of correspondence received from the Office when the correspondence: (i) could have a significant effect on a matter pending before the Office, (ii) is received by the practitioner on behalf of a client or former client , and (iii) is correspondence of which a reasonable practitioner would believe under the circumstances the client or former client should be notified.” (Emphasis added.) This responsibility of a practitioner to a former client is not eliminated by withdrawing as an attorney or agent of record. See also 37 CFR 1.116(d). The practitioner if he/she so desires, can minimize the need for forwarding correspondence concerning issued patents by having the correspondence address changed after the patent issues if the correspondence address is the practitioner’s address, which frequently is the case where the practitioner is the attorney or agent of record.
If the patent owner desires that a different attorney or agent receive correspondence, then a new power of attorney must be filed. See MPEP § 324 for establishing an assignee’s right to take action when submitting a power of attorney.
Submissions to the Office to change the correspondence address or power of attorney in the record of the patent should be addressed as follows:
Where a request for ex parte reexamination has been filed:
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2221
Mail Stop “ Ex Parte Reexam” Attn: Central Reexamination Unit Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
Where a request for inter partes reexamination has been filed:
Mail Stop “ Inter Partes Reexam” Attn: Central Reexamination Unit Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
Where no request for reexamination has been filed and the patent is in storage:
Mail Stop Document Services Director of the U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
It is strongly recommended that the Mail Stop information be placed in a prominent position on the
first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.
Sample forms for changing the correspondence address or power of attorney for the patent owner and for the third party requester are set forth below.
Form PTO/AIA/81B Reexamination or Supplemental Examination – Patent Owner Power of Attorney or Revocation of Power of Attorney with a New Power of Attorney and Change of Correspondence Address for Reexamination or Supplemental Examination and Patent
Form PTO/SB/81C Reexamination – Third Party Requester Power ofAttorney or Revocation of Power of Attorney with a New Power of Attorney and Change of Correspondence Address
Rev. 07.2015, October 20152200-35
§ 2222CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2222
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§ 2222CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2222
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§ 2222CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2222
2223 Withdrawal of Attorney or Agent [R-07.2015]
For a practitioner to withdraw from a patent and/or a reexamination proceeding, the Office no longer requires that there be at least 30 days remaining in any running period for response between the approval of a request to withdraw from representation and the expiration date of any running period for response. Instead, pursuant to 37 CFR 11.116, the Office requires the practitioner(s) to certify that he, she or they have: (1) given reasonable notice to the client, prior to the expiration of the response period, that the practitioner(s) intends to
withdraw from employment; (2) delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled; and (3) notified the client of any responses that may be due and the time frame within which the client must respond. “Reasonable notice” would allow a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period. See also MPEP § 402.06.
A sample form for a request by an attorney or agent of record to withdraw from a patent is set forth below.
Rev. 07.2015, October 20152200-41
§ 2223CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2223
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§ 2223CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
2200-44Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2223
2224 Correspondence [R-07.2015]
All requests for ex parte reexamination filed under 35 U.S.C. 302 (original request papers) and all subsequent ex parte reexamination correspondence mailed to the U.S. Patent and Trademark Office via the U.S. Postal Service Mail, other than correspondence to the Office of the General Counsel pursuant to 37 CFR 1.1(a)(3) and 1.302(e), should be addressed:
Mail Stop “ Ex Parte Reexam” Attn: Central Reexamination Unit Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
All such correspondence hand carried to the Office, or submitted by delivery service (e.g., Federal Express, DHL, etc., which are commercial mail or delivery services) should be carried to:
Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314
Hand-carried correspondence and correspondence submitted by delivery service should also be marked “Mail Stop Ex Parte Reexam.” Whether the correspondence is mailed via the U.S. Postal Service mail or is hand-carried to the Office, it is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.
A request for ex parte reexamination may not be sent by facsimile transmission (FAX). See 37 CFR 1.6(d)(5). This is also true for a corrected/completed request sent in response to a notice that the original request was not filing date compliant, since the corrected/completed request stands in place of, or is a completion of, the original request papers. All subsequent ex parte reexamination correspondence, however, may be FAXed to:
Central Reexamination Unit (571) 273-9900.
Effective July 9, 2007, the U.S. Patent and Trademark Office began accepting requests for reexamination, and “follow-on” papers (i.e.,
subsequent correspondence in reexamination proceedings) submitted via the Office’s Web-based electronic filing system (EFS-Web). The Office has updated the Legal Framework for EFS-Web to set forth that requests for reexamination, and reexamination “follow-on” papers are permitted to be submitted using EFS-Web. The current version of the Legal Framework for EFS-Web is at: www.uspto.gov/ebc/portal/efs/legal.htm.
After the filing of the request for ex parte reexamination, any letters sent to the U.S. Patent and Trademark Office relating to the resulting ex parte reexamination proceeding should identify the proceeding by the number of the patent undergoing reexamination, the reexamination request control number assigned, the art unit, and the name of the examiner.
The certificate of mailing and transmission procedures (37 CFR 1.8) may be used to file any paper in an ex parte reexamination proceeding, except for a request for reexamination and a corrected/replacement request for reexamination. This includes the filing of a patent owner’s statement under 37 CFR 1.530, and a requester’s reply under 37 CFR 1.535. See MPEP § 512 as to the use of the certificate of mailing and transmission procedures. The Priority Mail Express® mailing procedure (37 CFR 1.10) may be used to file any paper in an ex parte reexamination proceeding. See MPEP § 513 as to the use of the Priority Mail Express® mailing procedure. Again, the filing of a patent owner’s statement under 37 CFR 1.530, and a requester’s reply under 37 CFR 1.535, are included.
Communications from the U.S. Patent and Trademark Office to the patent owner will be directed to the correspondence address for the patent being reexamined. See 37 CFR 1.33(c).
Amendments and other papers filed on behalf of patent owners must be signed by the patent owners, or the registered attorney or agent of record in the patent file, or any registered attorney or agent acting in a representative capacity under 37 CFR 1.34(a). See MPEP § 2213.
Rev. 07.2015, October 20152200-45
§ 2224CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
Double correspondence with the patent owners and the attorney or agent normally will not be undertaken by the Office.
Where no correspondence address is otherwise specified, correspondence will be with the most recent attorney or agent made of record by the patent owner.
Note MPEP § 2220 on certificate of service.
See MPEP § 2624 for correspondence in inter partes reexamination proceedings.
2225 Untimely Paper Filed Prior to Order under 35 U.S.C. 304 [R-07.2015]
After filing of a request for ex parte reexamination under 35 U.S.C. 302, no papers directed to the merits of the reexamination other than (A) citations of patents or printed publications under 37 CFR 1.501 or 37 CFR 1.555, (B) another complete request under 37 CFR 1.510 or 37 CFR 1.915, or (C) notifications pursuant to MPEP § 2282, should be filed with the Office prior to the date of the decision on the request for reexamination. Any papers directed to the merits of the reexamination other than those under 37 CFR 1.501 or 1.555, or MPEP § 2282, filed prior to the decision on the request will be returned to the sender by the Central Reexamination Unit or Technology Center Director without consideration. If the papers are entered prior to discovery of the impropriety, such papers will be expunged from the record. A copy of the letter providing notification of the returned papers or expungement will be made of record in the patent file. However, no copy of the returned/expunged papers will be retained by the Office. If the submission of the returned/expunged papers is appropriate later in the proceedings, they may be filed and accepted by the Office at that time. See Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985, 989 (Fed. Cir. 1985); In re Knight, 217
USPQ 294 (Comm’r Pat. 1982) and In re Amp, 212 USPQ 826 (Comm’r Pat. 1981).
2226 Initial Processing of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 [R-07.2015]
The opening of all mail marked “Mail Stop Ex Parte Reexam,” and all initial clerical processing of requests for reexamination, will be performed in the Office of Patent Application Processing (OPAP).
2227 Incomplete Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 [R-07.2015]
37 CFR 1.510 Request for ex parte reexamination. *****
(c) If the request does not include the fee for requesting ex parte reexamination required by paragraph (a) of this section and meet all the requirements by paragraph (b) of this section, then the person identified as requesting reexamination will be so notified and will generally be given an opportunity to complete the request within a specified time. Failure to comply with the notice will result in the ex parte reexamination request not being granted a filing date, and will result in placement of the request in the patent file as a citation if it complies with the requirements of § 1.501.
(d) The filing date of the request for ex parte reexamination is the date on which the request satisfies all the requirements of this section.
*****
Request papers that fail to satisfy all the requirements of 37 CFR 1.510(a) and (b) are incomplete and will not be granted a filing date.
OFFICE PROCEDURE WHERE THE REQUEST FAILSTO COMPLYWITH REQUIREMENTS FOR A FILING DATE
A. Discovery of Non-Compliance with Filing Date Requirement(s) Prior to Assigning a Filing Date
1. Notice of Failure to Comply with Reexamination Request Filing Requirement
The Central Reexamination Unit (CRU) Legal Instrument Examiner (LIE) and CRU Paralegal check the request for compliance with the reexamination filing date requirements. If it is determined that the request fails to meet one or more
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2225
of the filing date requirements (see MPEP § 2214), the person identified as requesting reexamination will be so notified and will be given an opportunity to complete the requirements of the request within a specified time (generally 30 days). Form PTOL-2077, “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements,” is used to provide the notification for ex parte reexamination. If explanation is needed as to a non-compliance item, the box at the bottom of the form will be checked. An attachment will then be completed to specifically explain why the request does not comply. If there is a filing fee deficiency, a form, PTOL-2057, is completed and attached to form PTOL-2077.
2. Failure to Remedy Defect(s) in “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements”
If after receiving a “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements,” the requester does not remedy the defects in the request papers that are pointed out, then the request papers will not be given a filing date, but the assigned control number will be retained. Examples of a failure to remedy the defect(s) in the notice are (A) where the requester does not timely respond to the notice, and (B) where requester does respond, but the response does not cure the defect(s) identified to requester and/or introduces a new defect or deficiency.
If the requester timely responds to the “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements,” the CRU LIE and CRU Paralegal will check the request, as supplemented by the response, for correction of all non-compliance items identified in the notice. If any identified non-compliance item has not been corrected, a filing date will not be assigned to the request papers. It is to be noted that a single failure to comply with the “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements” will ordinarily result in the reexamination request not being granted a filing date. 37 CFR 1.510(c) provides that “[f]ailure to comply with the notice may result in the ex parte reexamination request not being granted a filing date.” Thus, absent extraordinary circumstances,
requester will be given only one opportunity to correct the non-compliance. Similarly, if the response introduces a new defect or deficiency into the request papers, the ex parte reexamination request will not be granted a filing date absent extraordinary circumstances.
If the request papers are not made filing-date-compliant in response to the Office’s “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements,” the CRU LIE will prepare a “Notice of Disposition of
Ex Parte Reexamination Request,” form PTOL-2079, identifying what defects have not been corrected.
B. Non-Compliance with Filing Date Requirement(s) Discovered After Initial Issuance of Notice of Reexamination Request Filing Date
1. Decision Vacating Filing Date
After a filing date and control number are assigned to the request papers, the examiner reviews the request to decide whether to grant or deny reexamination. If, in the process of reviewing the request, the examiner notes a non-compliance item not earlier recognized, the examiner will communicate with the CRU Supervisory Patent Reexamination Specialist (SPRS) detailing any such non-compliance item(s). The CRU SPRS will discuss the case with an appropriate OPLA Legal Advisor. Upon confirmation of the existence of any such non-compliant item(s), OPLA will issue a decision vacating the assigned reexamination filing date. In OPLA’s decision, the requester will be notified of the non-compliant item(s) and given time to correct the non-compliance. As noted above, 37 CFR 1.510(c) provides that “[f]ailure to comply with the notice may result in the ex parte reexamination request not being granted a filing date.” Thus, absent extraordinary circumstances, requester will only be given one opportunity to correct the non-compliant item(s) identified in the Decision Vacating Filing Date. This category also includes instances where the Office becomes aware of a check returned for insufficient fund or a stopped payment of a check after a filing date has been assigned, and prior to the decision on the request for reexamination.
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§ 2227CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
2. Failure to Remedy Defect in Decision Vacating Filing Date
If the requester does not timely respond to the Office’s notice, the CRU will draft a Decision Vacating the Proceeding, which will be reviewed and signed by OPLA.
If the requester timely responds to the Decision Vacating Filing Date, but the response fails to satisfy all the non-compliance items identified in the decision or introduces a new defect into the request papers, the examiner will inform the CRU SPRS of the defects, and whether the non-compliant request papers qualify as a 37 CFR 1.501 submission or not (and why). Where the defects are not remedied or a new defect has been added, the Office will issue a Decision Vacating the Proceeding.
The Decision Vacating the Proceeding will identify the items that do not comply with the filing date requirements which were not rectified, or are newly added. The decision will also point out the disposition of the request papers (treated as a 37 CFR 1.501 submission or discarded) and why.
2228 [Reserved]
2229 Notice of Request under 35 U.S.C. 302 for Ex Parte Reexamination in Official Gazette [R-07.2015]
Notice of filing of all complete ex parte reexamination requests filed under 35 U.S.C. 302 will be published in the Official Gazette, approximately 4 - 5 weeks after filing.
Both reexamination requests filed under 35 U.S.C. 302 that have been assigned a filing date and Director-initiated orders to reexamine made without a request will be announced in the Official Gazette. The reexamination preprocessing staff of the Central Reexamination Unit (CRU) will complete a form with the information needed to print the notice. The forms are forwarded at the end of each week to the Office of Data Management for printing in the Official Gazette.
Office personnel may use the PALM system to determine if a request for reexamination has been filed in a particular patent. The Official Gazette notice will appear in the notice section of the Official Gazette under the heading of Requests for Ex Parte Reexamination Filed and will include the name of any requestor along with the other items set forth in 37 CFR 1.11(c).
2230 Constructive Notice to Patent Owner [R-07.2015]
In some instances, it may not be possible to deliver mail to the patent owner because no current address is available. If all efforts to correspond with the patent owner fail, the reexamination proceeding will proceed without actual notice to the patent owner. The publication in the Official Gazette of (A) the notice of the filing of a request for reexamination filed under 35 U.S.C. 302, or (B) the notice of the ordering of reexamination at the initiative of the Director of the Office, will serve as constructive notice to the patent owner in such an instance.
2231 Processing of Request Corrections [R-07.2015]
All processing of submissions to cure an incomplete request for ex parte reexamination filed under35 U.S.C. 302 (see MPEP § 2227) is carried out by the Central Reexamination Unit (CRU). Any such submission should be marked “Mail Stop Ex Parte Reexam” in the manner discussed in MPEP § 2224 so that the submission may be promptly forwarded to the staff of the CRU.
2232 Public Access to Reexaminations Filed under 35 U.S.C. 302 [R-07.2015]
Reexamination files are open to inspection by the general public by way of the Public PAIR via the USPTO Internet site. In viewing the images of the reexamination proceedings, members of the public will be able to view the entire content of the reexamination file with the exception of non-patent literature. To access Public PAIR, a member of the public would go to the USPTO website at www.uspto.gov.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2228
If a copy of the reexamination file is requested, it may be ordered from the Document Services Division of the Office of Public Records (OPR). Orders for such copies must indicate the control number of the reexamination proceeding. Orders should be addressed as follows:
Mail Stop Document Services Director of the U.S. Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
Requests for a copy of a request may also be sent via email to: dsd@uspto.gov, and the cost of the copy may be charged to a credit card or deposit account. Alternatively, a copy may be obtained from IFW via PAIR.
To obtain a “certified copy” of a reexamination file, a CD-ROM may be purchased from Document Services Division of OPR.
2232.01 Determining if a Reexamination Request Was Filed under 35 U.S.C. 302 for a Patent [R-07.2015]
TO DETERMINE FROM PAIR OR PALM IF A REEXAMINATION REQUEST HAS BEEN FILED FOR A GIVEN PATENT NUMBER
Both the Internet (using PAIR) and the USPTO intranet (using PALM) can be accessed to determine if a reexamination request has been filed for a particular patent.
Using the USPTO Intranet
- From the USPTO intranet si te http://ptoweb/ptointranet/index.htm, Office personnel can click on “PALM” and then “General Information” which opens the PALM INTRANET General Information Display.
- From here, enter the patent number in the box labeled Patent #.
- Click on “Search” and when the “Patent Number Information” appears, click on “Continuity Data” to obtain the reexamination number.
Any reexamination for the patent number will be listed.
There will be about a ten (10) day lag between filing and data entry into the PALM database.
2233 Processing in Central Reexamination Unit and Technology Center [R-07.2015]
The working groups in the Central Reexamination Unit (CRU) or Technology Centers (TCs) have designated the legal instrument examiners and paralegals to act as reexamination clerks, as part of their assigned duties, and thus to perform those clerical duties and responsibilities in the groups which are unique to reexamination. The TC Quality Assurance Specialists (QASs) or CRU Supervisory Patent Reexamination Specialists (SPRSs) and CRU Paralegal Specialists have the responsibility to oversee clerical processing and serve as a resource for questions.
I. FEES
Under reexamination pursuant to 35 U.S.C. 302, there are fees for the request (37 CFR 1.20(c)(1)), for addition of claims (excess claims fees under 37 CFR 1.20(c)(3) and (c)(4)), for an extension of time, and for any appeal, appeal forwarding fee, and oral hearing fees under 37 CFR 41.20(b). No fee is required for issue of the reexamination certificate.
Any petitions relating to a reexamination proceeding require fees (37 CFR 1.17(m) and 1.20(c)(6)).
Micro entity reductions are available to patent owners only. Small entity and micro entity reductions are available to the patent owner for excess claim fees, appeal, appeal forwarding, and oral hearing fees. For the request and petition fees, small entity reductions are available to both third party requesters and patent owners; however, micro entity reductions are available only to patent owners.
When a fee is required in a merged proceeding (see MPEP § 2283 and § 2285), only a single fee is needed even though multiple copies of the submissions (one for each file) are required.
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§ 2233CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
II. MAILING
A transmittal form with the requester’s address will be used to forward copies of Office actions (and any references cited in the Office actions) to the requester. Whenever an Office action is issued, a copy of this form will be made and attached to a copy of the Office action. The use of this form removes the need to retype the requester’s address each time a mailing is required. When the patent owner is the requester, no such form is needed.
2234 Entry of Amendments [R-07.2015]
37 CFR 1.121 Manner of making amendments in applications.
*****
(j) Amendments in reexamination proceedings. Any proposed amendment to the description and claims in patents involved in reexamination proceedings must be made in accordance with § 1.530.
*****
37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
*****
(d) Making amendments in a reexamination proceeding. A proposed amendment in an ex parte or an inter partes reexamination proceeding is made by filing a paper directing that proposed specified changes be made to the patent specification, including the claims, or to the drawings. An amendment paper directing that proposed specified changes be made in a reexamination proceeding may be submitted as an accompaniment to a request filed by the patent owner in accordance with § 1.510(e), as part of a patent owner statement in accordance with paragraph (b) of this section, or, where permitted, during the prosecution of the reexamination proceeding pursuant to § 1.550(a) or § 1.937.
(1) Specification other than the claims. Changes to the specification, other than to the claims, must be made by submission of the entire text of an added or rewritten paragraph including markings pursuant to paragraph (f) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The precise point in the specification must be identified where any added or rewritten paragraph is located. This paragraph applies whether the amendment is submitted on paper or compact disc ( see §§ 1.96 and 1.825).
(2) Claims. An amendment paper must include the entire text of each patent claim which is being proposed to be changed by such amendment paper and of each new claim being proposed to be added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression
“amended,” “twice amended,” etc. , should follow the claim number. Each patent claim proposed to be changed and each proposed added claim must include markings pursuant to paragraph (f) of this section, except that a patent claim or proposed added claim should be canceled by a statement canceling the claim, without presentation of the text of the claim.
(3) Drawings . Any change to the patent drawings must be submitted as a sketch on a separate paper showing the proposed changes in red for approval by the examiner. Upon approval of the changes by the examiner, only new sheets of drawings including the changes and in compliance with § 1.84 must be filed. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
(4) The formal requirements for papers making up the reexamination proceeding other than those set forth in this section are set out in § 1.52.
(e) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (d) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status ( i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes to the claims made by the amendment paper.
(f) Changes shown by markings. Any changes relative to the patent being reexamined which are made to the specification, including the claims, must include the following markings:
(1) The matter to be omitted by the reexamination proceeding must be enclosed in brackets; and
(2) The matter to be added by the reexamination proceeding must be underlined.
(g) Numbering of patent claims preserved. Patent claims may not be renumbered. The numbering of any claims added in the reexamination proceeding must follow the number of the highest numbered patent claim.
(h) Amendment of disclosure may be required. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(i) Amendments made relative to patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing the request for reexamination.
(j) No enlargement of claim scope. No amendment may enlarge the scope of the claims of the patent or introduce new matter. No amendment may be proposed for entry in an expired patent. Moreover, no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent.
(k) Amendments not effective until certificate . Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2234
effective until the reexamination certificate is issued and published.
*****
Amendments which comply with 37 CFR 1.530(d) through (j) (and are formally presented pursuant to 37 CFR 1.52(a) and 37 CFR 1.52(b), and contain all fees required by 37 CFR 1.20(c)) are entered in the reexamination file.
Patent claims must not be renumbered, and the numbering of the claims added during reexamination must follow the number of the highest numbered patent claim.
ALL amendments in reexamination proceedings, including examiner’s amendments made at the time when the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) is prepared (37 CFR 1.121(g) does not apply in reexamination proceedings), must be presented in the form of a full copy of the text of each claim which is amended and each paragraph of the description which is amended. In other words, the entire claim or paragraph must be presented for any amendment of the claim or paragraph.
If a portion of the text is amended more than once, each amendment should indicate ALL of the changes (insertions and deletions) in relation to the current text of the patent under reexamination.
Although amendments will be entered for purposes of examination, the amendments are not legally effective until the reexamination certificate is issued and published.
See MPEP § 2250 for manner of making amendments by patent owner and for examples of proper claim amendment format. For clerical handling of amendments, see MPEP § 2270. See also MPEP § 2221 for amendments included in the request filed under 35 U.S.C. 302 by the patent
owner. For entry of amendments in a merged proceeding, see MPEP § 2283 and § 2285.
2235 Record Systems [R-07.2015]
PALM — MONITORING SYSTEMS
The Patent Application Locating and Monitoring (PALM) system is used to support the reexamination process. The sections below delineate PALM related activities.
(A) Reexamination File Data on PALM — The routine PALM retrieval transactions are used to obtain data on reexamination files. From the USPTO intranet site, Office staff can click on “PALM” and then “General Information” which opens the PALM INTRANET General Information Display. From here, enter the patent number in the box labeled Patent #. Then click on “Search” and when the “Patent Number Information” appears, click on “Continuity Data” to obtain the reexamination number.
(B) Reexamination e-File — The papers of a reexamination proceeding may be viewed on IFW. PALM provides information for the reexamination proceeding as to the patent owner and requester, contents, status, and related Office proceedings (applications, patents and reexamination proceedings). Some of the data entry for reexamination in PALM is different from that of a regular patent application. There are also differences in the status codes – all reexamination proceedings generally have status codes in the “400” range (there are some in the “800” range for some inter partes documents and actions).
(C) Patent File Location Control for Patents Not Available on IFW, i.e., Available Only in Paper File — The movement of paper patent files related to requests for reexamination throughout the Office is monitored by the PALM system. If the patent file is in paper form, the paper file should be ordered and scanned into the Image File Wrapper (IFW) for access throughout the prosecution of the reexamination proceeding.
(D) Reporting Events to PALM — The PALM system is used to monitor major events that take place in processing reexamination proceedings. During initial processing all major pre- ex parte
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examination events are reported. During the ex parte phase, the mailing of examiner’s actions is reported as well as owner’s responses thereto. The Central Reexamination Unit is responsible for reporting these events by, e.g., using the reexamination icon and window initiated in the PALM EXPO program. Examples of the events that may be reported (in the PALM system or in the tracking system of the Office of Petitions) are as follows:
(1) Determination Mailed — Denial of request for reexamination.
(2) Determination Mailed — Grant of request for reexamination.
(3) Petition for reconsideration of determination received.
(4) Decision on petition mailed — Denied.
(5) Decision on petition mailed — Granted.
(6) Owner response to determination (owner’s statement) received.
(7) Requester response to determination (requester’s reply) received.
(8) The mailing of all examiner actions.
(9) The receipt of owner’s responses to examiner’s actions and Office receipt date.
Each of these events, as well as additional events reported by the Central Reexamination Unit (CRU) Technical Support Staff (TSS) will be permanently recorded and displayed in the “Contents” portion of PALM. In addition, status representative of these events will also be displayed.
(E) Status Reports — Various weekly reports can be generated for the event reporting discussed above. The primary purpose of these reports is to assure that reexaminations are, in fact, processed with “special dispatch.”
PALM Reports — A number of automated reports generated from the PALM system are provided to the CRU and other appropriate TCs at the beginning of each week. These reports serve to indicate to the CRU and other appropriate TCs when certain deadlines are approaching. Each report is subdivided by working group and lists the requests in control number sequence. For example:
(1) Preexam Reexam — This report serves to highlight those requests which have not been
assigned to an examiner by the sixth week since their filing. Requests appearing on this report should be located and docketed immediately.
(2) Reexams Awaiting FA – This report lists those proceedings awaiting first action after the mailing of the order granting reexamination. This report includes ex parte reexaminations, including reexaminations ordered under 35 U.S.C. 257, and inter partes reexaminations.
(3) Reexam Actions in CRU – This report lists reexamination proceedings located in the Central Reexamination Unit (CRU) with action type and date.
(4) Reexam PTAB - status 143, 440, 441 and 887-891 – This report lists the proceedings that have been forwarded to the Patent Trial and Appeal Board (PTAB).
2236 Assignment of Reexamination [R-07.2015]
Reexamination requests are generally assigned to the Central Reexamination Unit (CRU) art unit which examines the technology (Chemical, Electrical, Mechanical, etc.) in which the patent to be reexamined is currently classified as an original. In that art unit, the CRU Supervisory Patent Reexamination Specialist (SPRS) will assign the reexamination request to a primary examiner, other than the examiner who originally examined the patent application (see “Examiner Assignment Policy” below), who is most familiar with the claimed subject matter of the patent. In an extremely rare situation, where a proceeding is still in a Technology Center (TC) rather than the CRU, the reexamination may be assigned to an assistant examiner if no knowledgeable primary examiner is available. In such an instance a primary examiner must sign all actions, conference all actions with a SPRS or manager and another examiner, and take responsibility for all actions taken.
I. EXAMINER ASSIGNMENT POLICY
It is the policy of the Office that the CRU SPRS will assign the reexamination request to an examiner different from the examiner(s) who examined the patent application. Thus, under normal circumstances, the reexamination request will not
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be assigned to a primary examiner or assistant examiner who was involved in any part of the examination of the patent for which reexamination is requested (e.g., by preparing/signing an action), or was so involved in the examination of the parent of the patent. This would preclude assignment of the request to an examiner who was a conferee in an appeal conference or panel review conference in an earlier concluded examination of the patent (e.g., the application for patent, a reissue, or a prior concluded reexamination proceeding). The conferee is considered to have participated in preparing the Office action which is preceded by the conference.
Exceptions to this general policy include cases where the original examiner is the only examiner with adequate knowledge of the relevant technology to examine the case. In the unusual case where there is a need to assign the request to the original examiner, the assignment must be approved by the CRU Director, and the fact that such approval was given by the CRU Director must be stated by the examiner in the decision on the request for reexamination or must be indicated with the CRU Director’s signature affixed at the end of the order or action.
It should be noted that while an examiner who examined an earlier concluded reexamination proceeding is generally excluded from assignment of a newly filed reexamination, if the earlier reexamination is still ongoing, the same examiner will generally be assigned the new reexamination.
Copending reissue and reexamination proceedings:
(A) When a reissue application is pending for a patent, and a reexamination request is filed under 35 U.S.C. 302 for the same patent, the reexamination request is generally assigned to an examiner who did not examine the original patent application even if the examiner who examined the patent application is also examining the reissue application. If the reexamination request is granted and the reissue and reexamination proceedings are later merged (see MPEP § 2285), the merged proceeding will be handled (upon return of the files from the Office of Patent Legal Administration (OPLA)) by the examiner who is handling the reissue application. However, if that examiner was involved in any part of the examination of the patent for which
reexamination is requested (e.g., by preparing/signing an action), or was involved in the examination of the parent application of the patent, a different examiner will be assigned. In this instance, the reissue application would be transferred (reassigned) from the originally assigned examiner.
(B) When a reexamination proceeding is pending for a patent, and a reissue application is filed for the same patent:
(1) Where reexamination has already been ordered (granted) in the reexamination proceeding, OPLA should be notified as promptly as possible after the reissue application is available for docketing, that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be scanned into the Image File Wrapper (IFW) at the time of the notification to OPLA. If the reissue and reexamination proceedings are merged by OPLA, the reissue application will generally be assigned to the examiner who would ordinarily handle the reissue application. However, if that examiner was involved in any part of the examination of patent for which reexamination is requested (e.g., by preparing/signing an action), or was so involved in the examination of the parent application of the patent, a different examiner will be assigned. If the reissue and reexamination proceedings are not merged by OPLA, the decision will provide guidance as to assignment of the reissue proceeding depending on the individual fact situation.
(2) If reexamination has not yet been ordered (granted) in the reexamination proceeding, the Supervisory Patent Reexamination Specialist (SPRS) will ensure that the reissue application is not assigned nor acted on, and the decision on the reexamination request under 35 U.S.C. 302 will be made. If reexamination is denied, the reexamination proceeding will be concluded pursuant to MPEP § 2294, and the reissue application assigned in accordance with MPEP § 1440. If reexamination is granted, the SPRS will await the filing of any statement under 37 CFR 1.530 and any reply under 37 CFR 1.535, or the expiration of the time for same (see MPEP § 2249 – § 2251), and then OPLA should be promptly notified that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be scanned
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into the Image File Wrapper (IFW) at the time of the notification to OPLA. If the reissue and reexamination proceedings are merged by OPLA, the reissue application will generally be assigned (upon return of the files from OPLA) to the examiner who ordinarily handles the reissue application. However, if that examiner was involved in any part of the examination of the patent for which reexamination is requested (e.g., by preparing/signing an action), or was so involved in the examination of the parent application of the patent, a different examiner will be assigned. If the reissue and reexamination proceedings are not merged by OPLA, the decision may provide guidance as to assignment of the reissue proceeding, if necessary, depending on the individual fact situation.
II. CONSEQUENCES OF INADVERTENT ASSIGNMENT TO AN “ORIGINAL EXAMINER”
Should a reexamination be inadvertently assigned to an “original examiner” (in a situation where the TC or CRU Director’s approval is not stated in the decision on the request), the patent owner or the third party requester who objects must promptly file a paper alerting (notifying) the Office of this fact. Any paper alerting (notifying) the Office to the assignment to an “original examiner” must be filed within two months of the first Office action or other Office communication indicating the examiner assignment, or reassignment based on the objection will not be considered. Reassignment of the reexamination to a different examiner will be addressed on a case-by-case basis. In no event will the assignment to the original examiner, by itself, be grounds for vacating any Office decision(s) or action(s) and “restarting” the reexamination.
A situation may arise where a party timely (i.e., within the two months noted above) files a paper alerting (notifying) the Office to the assignment of a reexamination to the “original examiner,” but that paper does not have a right of entry under the rules. An example of this is where a third party requester becomes aware of the assignment to the “original examiner” via that examiner signing the order for reexamination, and the patent owner does not file a statement under 37 CFR 1.530. In that situation, the third party requester cannot file a reply under 37
CFR 1.535, and thus has no way to present the paper directed to the examiner assignment (no right of entry under the rules). In situations where a paper directed to the examiner assignment has no right of entry under the rules, the Office may waive the rules to the extent that the paper directed to the examiner assignment will be entered and considered.
2237 Transfer Procedure [R-07.2015]
Although the number of reexamination requests which must be transferred should be very small, the following procedures have been established for an expeditious resolution of any such problems.
A reexamination request is normally assigned to a Central Reexamination Unit (CRU) art unit which examines the technology (Chemical, Electrical, Mechanical, etc.) in which the patent to be reexamined is currently classified as an original. If the CRU Supervisory Patent Reexamination Specialist (SPRS) (to whose art unit the reexamination has been assigned) believes that the reexamination should be assigned to another art unit, he or she must obtain the consent of the CRU SPRS of the art unit to which a transfer is desired. Pursuant to 35 U.S.C. 305, all ex parte reexamination proceedings must be conducted with special dispatch within the Office. This applies to the transfer of reexamination proceedings. Accordingly, the CRU SPRS to whose art unit the reexamination has been assigned should expeditiously make any request for transfer of a reexamination proceeding to the CRU SPRS of the art unit to which a transfer is desired (the “new” art unit). Any conflict which cannot be resolved by the SPRSs will be resolved by the CRU Director.
If the “new” art unit accepts assignment of the reexamination request, the “new” CRU SPRS assigns the request to an examiner in that unit.
2238 Time Reporting [R-11.2013]
It is essential that all time expended on reexamination activities be reported accurately. Thus, all USPTO personnel should report all time spent on reexamination on their individual Time and Attendance Reports. Even activities such as
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supervision, copying, typing, and docketing should be included.
2239 Reexamination Ordered at the Director’s Initiative [R-07.2015]
37 CFR 1.520 Ex parte reexamination at the initiative of the Director.
The Director, at any time during the period of enforceability of a patent, may determine whether or not a substantial new question of patentability is raised by patents or printed publications which have been discovered by the Director or which have been brought to the Director’s attention, even though no request for reexamination has been filed in accordance with § 1.510 or § 1.913. The Director may initiate ex parte reexamination without a request for reexamination pursuant to § 1.510 or § 1.913. Normally requests from outside the Office that the Director undertake reexamination on his own initiative will not be considered. Any determination to initiate ex parte reexamination under this section will become a part of the official file of the patent and will be mailed to the patent owner at the address as provided for in § 1.33(c).
The Director of the USPTO may initiate reexamination without a request being filed and without a fee being paid. Such reexamination may be ordered at any time during the period of enforceability of the patent.
A decision to order reexamination at the Director’s initiative is, however, rare. Only in compelling circumstances, after a review of all the facts concerning the patent, would such a decision be made. Authority to order reexamination at the Director’s initiative has been delegated to the Deputy Commissioner for Patent Examination Policy. A decision to order reexamination at the Director’s initiative may also be made by the Director of the USPTO, the Deputy Director or the Commissioner for Patents.
If an Office employee becomes aware of an unusual fact situation in a patent which he or she considers to clearly warrant reexamination, a memorandum setting forth these facts (including a proposed rejection of all appropriate claims) should be forwarded to the Office of Patent Legal Administration (OPLA) through the Central Reexamination Unit (CRU) or Technology Center (TC) supervisory chain of command.
If an order to reexamine is to be issued, the decision is prepared in OPLA in cooperation with the CRU or other appropriate Technology Center. The decision is signed by the Deputy Commissioner for Patent Examination Policy and mailed by the CRU. The CRU technical support staff will prepare a reexamination file and Official Gazette notice. Examination and prosecution will then proceed without further communication with anyone but the patent owner.
If the Deputy Commissioner for Patent Examination Policy refuses to issue an order for reexamination, no record of any consideration of the matter will be maintained in the patent file or anywhere else in the Office, and the patent owner will not be notified.
The Director of the USPTO will not normally consider requests to order reexamination at the Director’s initiative received from members of the public. If a member of the public desires reexamination of a patent, a request and fee should be filed in accordance with 37 CFR 1.510.
2240 Decision on Request Filed under 35 U.S.C. 302 [R-07.2015]
35 U.S.C. 303 Determination of issue by Director.
(a) Within three months following the filing of a request for reexamination under the provisions of section 302, the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him or cited under the provisions of section 301 or 302 of this title. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.
(b) A record of the Director’s determination under subsection (a) of this section will be placed in the official file of the patent, and a copy promptly will be given or mailed to the owner of record of the patent and to the person requesting reexamination, if any.
(c) A determination by the Director pursuant to subsection (a) of this section that no substantial new question of patentability has been raised will be final and nonappealable. Upon such a determination, the Director may refund a portion of the reexamination fee required under section 302.
37 CFR 1.515 Determination of the request for ex parte reexamination.
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(a) Within three months following the filing date of a request for an ex parte reexamination, an examiner will consider the request and determine whether or not a substantial new question of patentability affecting any claim of the patent is raised by the request and the prior art cited therein, with or without consideration of other patents or printed publications. A statement and any accompanying information submitted pursuant to § 1.501(a)(2) will not be considered by the examiner when making a determination on the request. The examiner’s determination will be based on the claims in effect at the time of the determination, will become a part of the official file of the patent, and will be given or mailed to the patent owner at the address provided for in § 1.33(c) and to the person requesting reexamination.
(b) Where no substantial new question of patentability has been found, a refund of a portion of the fee for requesting ex parte reexamination will be made to the requester in accordance with § 1.26(c).
(c) The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.
Before making a determination on the request for reexamination filed under 35 U.S.C. 302, a litigation search from the Technical Support Staff (TSS) of the Central Reexamination Unit (CRU) or the Scientific and Technical Information Center (STIC) must be done to check if the patent has been, or is, involved in litigation. The “Litigation Review” box on the reexamination IFW file jacket form (RXFILJKT) should be completed to indicate that the review was conducted and the results thereof. A copy of the litigation search and the reexamination file jacket form are scanned into the IFW reexamination file history. In the rare instance where the record of the reexamination proceeding or the litigation search indicates that additional information is desirable, guidance as to making an additional litigation search may be obtained from the library of the Office of the Solicitor. If the patent is or was involved in litigation, and a paper referring to the court proceeding has been filed, reference to the paper by number should be made in the “Litigation Review” box on the reexamination IFW file jacket form as, for example, “litigation; see paper filed 7-14-2005.” If a litigation records search is already noted on the file, the examiner need not repeat or update it before making a determination on the request.
If litigation has concluded or is taking place in the patent on which a request for reexamination has been filed, the request must be promptly brought to the attention of the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS), who should review the decision on the request and any examiner’s action to ensure that it conforms to the current Office litigation policy and guidelines. See MPEP § 2286.
35 U.S.C. 303 requires that within 3 months following the filing of a request for reexamination filed under 35 U.S.C. 302, the Director of the USPTO will determine whether or not the request raises a “substantial new question of patentability” affecting any claim of the patent of which reexamination is desired. See also MPEP § 2241. Such a determination may be made with or without consideration of other patents or printed publications in addition to those cited in the request. No input from the patent owner is considered prior to the determination, unless the patent owner filed the request. See Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985).
The patent claims in effect at the time of the determination will be the basis for deciding whether a substantial new question of patentability has been raised. 37 CFR 1.515(a). Amendments which (1) have been presented with the request if filed under 35 U.S.C. 302 by the patent owner, (2) have been filed in a pending reexamination proceeding in which the certificate has not been issued, or (3) have been submitted in a reissue application on which no reissue patent has been issued, will not be considered or commented upon when deciding requests.
The decision on the request for reexamination filed under 35 U.S.C. 302 has as its object either the granting or denial of an order for reexamination. This decision is based on whether or not “a substantial new question of patentability” is found. A determination as to patentability/unpatentability of the claims is not made in the decision on the request; rather, this determination will be made during the examination stage of the reexamination proceedings if reexamination is ordered. Accordingly, no prima facie case of unpatentability need be found to grant an order for reexamination. If a decision to deny an order for reexamination is
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made, the requester may seek review by a petition under 37 CFR 1.181. See 37 CFR 1.515(c). See MPEP § 2248. It should be noted that a decision to deny the request for reexamination is equivalent to a final holding (subject only to a petition pursuant to 37 CFR 1.515(c) for review of the denial) that the request failed to raise a substantial new question of patentability based on the cited art (patents and printed publications).
It is only necessary to establish that a substantial new question of patentability exists as to one of the patent claims in order to grant reexamination. The Office’s determination in both the order for reexamination and the examination stage of the reexamination ordered under 35 U.S.C. 304 will generally be limited solely to a review of the claim(s) for which reexamination was requested. If the requester was interested in having all of the claims reexamined, requester had the opportunity to include them in its request for reexamination. However, if the requester chose not to do so, those claim(s) for which reexamination was not requested will generally not be reexamined by the Office. It is further noted that 35 U.S.C. 302 requires that “[t]he request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.” If the requester fails to apply the art to certain claims, then the requester is not statutorily entitled to reexamination of such claims. If a requester chooses not to request reexamination for a claim, and thus fails to set forth the pertinency and manner of applying the cited art to that claim as required by 37 CFR 1.510(b), that claim will generally not be reexamined. The decision to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302 lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case. If the Office chooses to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302, it is permitted to do so. In addition, the Office may always initiate a reexamination on its own initiative of the non-requested claim (35 U.S.C. 303(a)). See Sony Computer Entertainment America Inc. v. Dudas , 85 USPQ2d 1594 (E.D. Va 2006). It is to be noted that if a request fails to set forth the pertinency and manner of applying the cited art to any claim for which reexamination is requested as required by 37
CFR 1.510(b), a filing date will not be awarded to the request. See MPEP § 2217 and § 2227.
One instance where reexamination was carried out only for the claims requested occurred in reexamination control numbers 95/000,093 and 95/000,094, where reexamination was requested for patent claims which were being litigated, but not for claims which were not being litigated. In that instance, the entirety of the reexamination was limited to the claims for which reexamination was requested, and which were also being litigated. The Office’s authority to carry out reexamination only for the claims for which reexamination was requested in reexamination control numbers 95/000,093 and 95/000,094 was confirmed by the court in Sony, supra. See also MPEP § 2242 for the situation where there was a prior final federal court decision as to the invalidity/unenforceability of some of the claims, as another example of non-examination of some of the patent claims in a reexamination proceeding.
The decision on the request for reexamination should discuss all of the patent claims requested for reexamination. The examiner should limit the discussion of those claims in the order for reexamination as to whether a substantial new question of patentability has been raised. The examiner SHOULD NOT reject claims in the order for reexamination. Rather, any rejection of the claims will be made in the first Office action (on the patentability of the claims) that is issued after the expiration of the time for submitting any patent owner statement and requester reply that follow the examiner’s order.
A patent owner claim scope statement and any accompanying information submitted pursuant to 37 CFR 1.501(a)(2) will not be considered by the examiner when making the determination of whether to order ex parte reexamination under 35 U.S.C. 304. This is so, because 35 U.S.C. 301(d) provides that a written statement submitted pursuant to 35 U.S.C. 301(a)(2), and additional information submitted pursuant to 35 U.S.C. 301(c) are not to be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered pursuant to 35 U.S.C. 304. In making the determination of whether to order reexamination, the Office will determine
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the proper meaning of the patent claims by giving the claims their broadest reasonable interpretation consistent with the specification (see In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984)), except in the case of an expired patent (in a reexamination involving claims of an expired patent, claim construction is pursuant to the principle set forth by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (words of a claim “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention), see Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986)). If reexamination is ordered, the patent owner statement, if applicable, and any accompanying information submitted pursuant to 37 CFR 1.501(a)(2) will be considered during the examination stage to the fullest extent possible when determining the scope of any claims of the patent which are subject to reexamination.
The examiner should indicate, insofar as possible, his or her initial position on all the issues identified in the request filed under 35 U.S.C. 302 or by the requester so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.
The Director of the USPTO has the authority to order reexamination only for a request which raises a substantial new question of patentability. The substantial new question of patentability requirement protects patentees from having to respond to, or participate in unjustified reexaminations. Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985).
I. REQUEST FOR REEXAMINATION OF THE PATENT AFTER REISSUE OF THE PATENT
Where a request for reexamination is filed on a patent after a reissue patent for that patent has already issued, reexamination will be denied, because the patent on which the request for reexamination is based has been surrendered. Should reexamination of the reissued patent be desired, a new request for reexamination, including and based on the specification and the claims of the reissue patent, must be filed. Where the reissue patent issues
after the filing of a request for reexamination, see MPEP § 2285.
II. SECOND OR SUBSEQUENT REQUEST FILED UNDER 35 U.S.C. 302 DURING REEXAMINATION
If a second or subsequent request for ex parte reexamination is filed (by any party) under 35 U.S.C. 302 while a first ex parte reexamination is pending, the presence of a substantial new question of patentability depends on the prior art (patents and printed publications) cited by the second or subsequent requester. If the requester includes in the second or subsequent request prior art which raised a substantial new question in the pending reexamination, reexamination should be ordered only if the prior art cited raises a substantial new question of patentability which is different from that raised in the pending reexamination proceeding. If the prior art cited raises the same substantial new question of patentability as that raised in the pending reexamination proceedings, the second or subsequent request should be denied.
Where the request raises a different substantial new question of patentability as to some patent claims, but not as to others, the request would be granted in part; see the orders issued in reexamination control number 90/007,843 and 90/007,844.
The second or subsequent request for reexamination under 35 U.S.C. 302 may provide information raising a substantial new question of patentability with respect to any new or amended claim which has been proposed under 37 CFR 1.530(d) in the first (or prior) pending reexamination proceeding. However, in order for the second or subsequent request for reexamination to be granted, the second or subsequent requester must independently provide a substantial new question of patentability which is different from that raised in the pending reexamination for the claims in effect at the time of the determination. The decision on the second or subsequent request is based on the claims in effect at the time of the determination (37 CFR 1.515(a)). Thus, the second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer, or by any reexamination certificate that has issued as of the time of the determination. If a “different” substantial new question of
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patentability is not provided by the second or subsequent request for the claims in effect at the time of the determination, the second or subsequent request for reexamination must be denied since the Office is only authorized by statute to grant a reexamination proceeding based on a substantial new question of patentability “affecting any claim of the patent.” See 35 U.S.C. 303. Accordingly, there must be at least one substantial new question of patentability established for the existing claims in the patent in order to grant reexamination.
Once the second or subsequent request has provided a “different” substantial new question of patentability based on the claims in effect at the time of the determination, the second or subsequent request for reexamination may also provide information directed to any proposed new or amended claim in the pending reexamination, to permit examination of the entire patent package. The information directed to a proposed new or amended claim in the pending reexamination is addressed during the later filed reexamination (where a substantial new question of patentability is raised in the later filed request for reexamination for the existing claims in the patent), in order to permit examination of the entire patent package. When a proper basis for the second or subsequent request for reexamination is established, it would be a waste of resources to prevent addressing the proposed new or amended claims, by requiring parties to wait until the certificate issues for the proposed new or amended claims, and only then to file a new reexamination request challenging the claims as revised via the certificate. This also prevents a patent owner from simply amending all the claims in some nominal fashion to preclude a subsequent reexamination request during the pendency of the reexamination proceeding.
In certain situations, after a grant of a second or subsequent request for ex parte reexamination, where (A) the patent owner files a petition under 37 CFR 1.182 as part of the statement or as the statement, and (B) it appears clear that the second or subsequent request was filed for purposes of harassment of the patent owner, if the petition is granted, prosecution on the second or subsequent reexamination would be suspended. Merger of such a second or subsequent request with the already pending reexamination proceeding(s) would unduly
prolong the conclusion of the pending reexamination and be inconsistent with the requirement that reexamination proceeding be conducted with special dispatch.
If the second or subsequent requester does not include the prior art which raised a substantial new question of patentability in the pending reexamination, reexamination may or may not be ordered depending on whether the different prior art raises a substantial new question of patentability. The second or subsequent request should be determined on its own merits without reference to the pending reexamination.
For additional treatment of cases in which a first ex parte reexamination is pending at the time a second or subsequent request for ex parte reexamination is to be decided, see MPEP § 2283.
For additional treatment of cases in which either the first or subsequent request for reexamination, or both, is/are an inter partes reexamination proceeding, see MPEP § 2640 and § 2686.01.
2241 Time for Deciding Request Filed under 35 U.S.C. 302 [R-07.2015]
The determination of whether or not to reexamine must be made within 3 months following the filing date of a request. See 35 U.S.C. 303(a) and 37 CFR 1.515(a). If the 3-month period ends on a Saturday, Sunday, or federal holiday within the District of Columbia, then the determination must be mailed by the preceding business day. See the last portion of MPEP § 2240 and also see MPEP § 2283 for multiple copending reexamination proceedings. A determination to reexamine may be made at any time during the period of enforceability of a patent.
2242 Criteria for Deciding Request Filed under 35 U.S.C. 302 [R-07.2015]
I. SUBSTANTIAL NEW QUESTION OF PATENTABILITY
The presence or absence of “a substantial new question of patentability” determines whether or not reexamination is ordered. The meaning and scope
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of the term “a substantial new question of patentability” is not defined in the statute and must be developed to some extent on a case-by-case basis, using the case law to provide guidance as will be discussed in this section.
If the prior art patents and printed publications raise a substantial question of patentability of at least one claim of the patent, then a substantial new question of patentability as to the claim is present, unless the same question of patentability has already been: (A) decided in a final holding of invalidity by a federal court in a decision on the merits involving the claim, after all appeals; (B) decided in an earlier concluded examination or review of the patent by the Office; or (C) raised to or by the Office in a pending reexamination or supplemental examination of the patent. Issues involving 35 U.S.C. 325(d) must be referred to the Director of the CRU.
An earlier concluded examination or review of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent; (C) the examination of the patent in an earlier concluded reexamination or supplemental examination; (D) the review of the patent in an earlier concluded trial by the Patent Trial and Appeal Board, such as a post-grant review, inter partes review, or covered business method review of the patent; or (E) any other contested Office proceeding which has been concluded and which involved the patent. The answer to the question of whether a “substantial new question of patentability” exists, and therefore whether reexamination may be had, is decided by the examiner, and the examiner’s determination may be reconsidered:
(a) If reexamination is denied – as set forth in MPEP § 2248.
(b) If reexamination is granted – as set forth in MPEP § 2246, subsection II.
A prior art patent or printed publication raises a substantial question of patentability where there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the
claim is patentable. If the prior art patents and/or publications would be considered important, then the examiner should find “a substantial new question of patentability” unless the same question of patentability has already been decided as to the claim in a final holding of invalidity by a federal court or by the Office in an earlier concluded examination or review of the patent, or unless the same question of patentability has been raised to or by the Office in a pending reexamination or supplemental examination of the patent. For example, the same question of patentability may have already been decided by the Office where the examiner finds the additional (newly provided) prior art patents or printed publications are merely cumulative to similar prior art already fully considered by the Office in an earlier concluded examination or review of the claim.
For “a substantial new question of patentability” to be present, it is only necessary that: (A) the prior art patents and/or printed publications raise a substantial question of patentability regarding at least one claim, i.e., the teaching of the (prior art) patents and printed publications is such that a reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable; and (B) the same question of patentability as to the claim has not been decided by the Office in an earlier concluded examination or review of the patent, raised to or by the Office in a pending reexamination or supplemental examination of the patent, or decided in a final holding of invalidity (after all appeals) by a federal court in a decision on the merits involving the claim. If a reexamination proceeding was terminated/vacated without resolving the substantial question of patentability question, it can be re-presented in a new reexamination request. It is not necessary that a “ prima facie” case of unpatentability exist as to the claim in order for “a substantial new question of patentability” to be present as to the claim. Thus, “a substantial new question of patentability” as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications. As to the importance of the difference between “a substantial new question of patentability” and a “ prima facie” case of unpatentability see generally In re Etter, 756 F.2d 852, 857 n.5, 225 USPQ 1, 4 n.5 (Fed. Cir. 1985).
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Note that the clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550
U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists. See the discussion in MPEP § 2216.
Where a second or subsequent request for reexamination of a patent is made before the conclusion of an earlier filed reexamination proceeding pending (ongoing) for that patent, the second or subsequent request for reexamination may provide information raising a substantial new question of patentability with respect to any new or amended claim which has been proposed under 37 CFR 1.530(d) in the ongoing pending reexamination proceeding. However, in order for the second or subsequent request for reexamination to be granted, the second or subsequent requester must independently provide a substantial new question of patentability which is different from that raised in the pending reexamination for the claims in effect at the time of the determination The decision on the second or subsequent request is based on the claims in effect at the time of the determination (37 CFR 1.515(a)). Thus, the second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer, or by any reexamination certificate that has issued as of the time of the determination. If a “different” substantial new question of patentability is not provided by the second or subsequent request for the claims in effect at the time of the determination, the second or subsequent request for reexamination must be denied since the Office is only authorized by statute to grant a reexamination proceeding based on a substantial new question of patentability “affecting any claim of the patent.” See 35 U.S.C. 303. Accordingly, there must be at least one substantial new question of patentability established for the existing claims in the patent in order to grant reexamination.
Once the second or subsequent request has provided a “different” substantial new question of patentability based on the claims in effect at the time of the determination, the second or subsequent request for reexamination may also provide information directed to any proposed new or amended claim in the pending reexamination, to permit examination of
the entire patent package. The information directed to a proposed new or amended claim in the pending reexamination is addressed during the later filed reexamination (where a substantial new question is raised in the later reexamination for the existing claims in the patent), in order to permit examination of the entire patent package. When a proper basis for the subsequent reexamination is established, it would be a waste of resources to prevent addressing the proposed new or amended claims, by requiring parties to wait until the certificate issues for the proposed new or amended claims, and only then to file a new reexamination request challenging the claims as revised via the certificate. This also prevents a patent owner from simply amending all the claims in some nominal fashion to preclude a subsequent reexamination request during the pendency of the reexamination proceeding.
II. POLICY IN SPECIFIC SITUATIONS
In order to further clarify the meaning of “a substantial new question of patentability” certain situations are outlined below which, if present, should be considered when making a decision as to whether or not “a substantial new question of patentability” is present. Issues involving 35 U.S.C. 325(d) must be referred to the Director of the CRU.
A. Prior Favorable Decisions by the U.S. Patent and Trademark Office (Office) on the Same or Substantially Identical Prior Art in Relation to the Same Patent
A “substantial new question of patentability” is not raised by prior art presented in a reexamination request if the Office has previously considered (in an earlier concluded examination or review of the patent) the same question of patentability as to a patent claim favorable to the patent owner based on the same prior art patents or printed publications. In re Recreative Technologies, 83 F.3d 1394, 38
USPQ2d 1776 (Fed. Cir. 1996).
In deciding whether to grant a request for reexamination of a patent, the examiner should check the patent’s file history to ascertain whether any of the prior art now advanced by requester was previously cited/considered in an earlier concluded examination or review of the patent or has been raised to or by the Office in a pending reexamination
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or supplemental examination of the patent. For the sake of expediency, such art is referred to as “old art” throughout, since the term “old art” was coined by the Federal Circuit in its decision of In re Hiniker, 150 F.3d 1362,1365-66, 47 USPQ2d 1523, 1526 (Fed. Cir. 1998).
In a decision to order reexamination made on or after November 2, 2002, reliance on old art does not necessarily preclude the existence of a substantial new question of patentability that is based exclusively on that old art. See Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002), which expanded the scope of what qualifies for a substantial new question of patentability upon which a reexamination may be based. Determinations on whether a substantial new question of patentability exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis. For example, a substantial new question of patentability may be based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier examination(s), in view of a material new argument or interpretation presented in the request. Such material new argument or interpretation may be based solely on claim scope of the patent being reexamined.
When it is determined that a substantial new question of patentability based solely on old art is raised, form paragraph 22.01.01 should be included in the order for reexamination.
¶ 22.01.01 Criteria for Applying Old Art as Sole Basis for Reexamination
The above [1] is based solely on patents and/or printed publications already cited/considered in an earlier concluded examination or review of the patent being reexamined, or has been raised to or by the Office in a pending reexamination or supplemental examination of the patent. On November 2, 2002, Public Law 107-273 was enacted. Title III, Subtitle A, Section 13105, part (a) of the Act revised the reexamination statute by adding the following new last sentence to 35 U.S.C. 303(a) and 312(a):
"The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office."
For any reexamination ordered on or after November 2, 2002, the effective date of the statutory revision, reliance on previously cited/considered art, i.e., “old art,” does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art. Rather, determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis.
In the present instance, there exists a SNQ based solely on [2]. A discussion of the specifics now follows:
[3]
Examiner Note:
1. In bracket 1, insert “substantial new question of patentability” if the present form paragraph is used in an order granting reexamination (or a TC or CRU Director’s decision on petition of the denial of reexamination). If this form paragraph is used in an Office action, insert “ground of rejection.”
2. In bracket 2, insert the old art that is being applied as the sole basis of the SNQ. For example, “the patent to J. Doe” or “the patent to J. Doe when taken with the Jones publication” or “the combination of the patent to J. Doe and the Smith publication” could be inserted. Where more than one SNQ is presented based solely on old art, the examiner would insert all such bases for SNQ.
3. In bracket 3, for each basis identified in bracket 2, explain how and why that fact situation applies in the proceeding being acted on. The explanation could be for example that the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier examination(s), in view of a material new argument or interpretation presented in the request. See Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351 (Bd. Pat. App. & Inter. 1984).
4. This form paragraph is only used the first time the “already cited/considered” art is applied, and is not repeated for the same art in subsequent Office actions.
See MPEP § 2258.01 for a discussion of the use of “old art” in the examination stage of an ordered reexamination (as a basis for rejecting the patent claims).
B. Prior Adverse Decisions by the Office on the Same or Substantially Identical Prior Art in the Same Patent
A prior decision adverse to the patentability of a claim of a patent by the Office based upon prior art patents or printed publications would usually mean that “a substantially new question of patentability” is present. Such an adverse decision by the Office could, for example, arise from a reissue application which was abandoned after rejection of the claim and without disclaiming the patent claim.
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C. Prior Adverse Reissue Application Final Decision by the Director of the USPTO or the Board Based Upon Grounds Other Than Patents or Printed Publications
Any prior adverse final decision by the Director of the USPTO or the Patent Trial and Appeal Board or Board of Patent Appeals and Interferences (Board), on an application seeking to reissue the same patent on which reexamination is requested will be considered by the examiner when determining whether or not a “substantial new question of patentability” is present. However, to the extent that such prior adverse final decision was based upon grounds other than patents or printed publications, the prior adverse final decision will not be a basis for determining whether or not a “substantial new question of patentability” is present.
D. Prior Favorable or Adverse Decisions on the Same or Substantially Identical Prior Art Patents or Printed Publications in Other Cases not Involving the Patent
While the Office would consider decisions involving substantially identical patents or printed publications in determining whether a “substantial new question of patentability” is raised, the weight to be given such decisions will depend upon the circumstances.
III. POLICY WHERE A FEDERAL COURT DECISION HAS BEEN ISSUED ON THE PATENT
A. Final Holding of Validity by the Courts
When the initial question as to whether the prior art raises a substantial new question of patentability as to a patent claim is under consideration, the existence of a final court decision of claim validity in view of the same or different prior art does not necessarily mean that no new question is present, because of the different standards of proof employed by the federal district courts and the Office. While the Office may accord deference to factual findings made by the district court, the determination of whether a substantial new question of patentability exists will be made independently of the court’s decision on validity, because it is not controlling on the Office. See In re Swanson et al., 540 F.3d 1368, 1378 (Fed. Cir. 2008), where the Federal Circuit approved of the Office’s interpretation in MPEP § 2242. See also In re Baxter International Inc., 678 F.3d 1357, 102 USPQ2d 1925 (Fed. Cir. 2012) (patent
reexamination should take notice of a court decision but the Office need not come to the same conclusion as the court).
B. Nonfinal Holding of Invalidity or Unenforceability by the Courts
A nonfinal holding of claim invalidity or unenforceability will not be controlling on the question of whether a substantial new question of patentability is present.
C. Final Holding of Invalidity or Unenforceability by the Courts
A final holding of claim invalidity or unenforceability, after all appeals, is controlling on the Office. In such cases, a substantial new question of patentability would not be present as to the claims finally held invalid or unenforceable.
As to subsections A, B, and C above, see Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).
Any situations requiring clarification should be brought to the attention of the Office of Patent Legal Administration.
2243 Claims Considered in Deciding Request Filed under 35 U.S.C. 302 [R-07.2015]
The claims of the patent in effect at the time of the determination will be the basis for deciding whether “a substantial new question of patentability” is present. 37 CFR 1.515(a). The Office’s determination in both the order for reexamination and the examination stage of the reexamination under 35 U.S.C. 302 will generally be limited solely to a review of the claim(s) for which reexamination was requested. If the requester was interested in having all of the claims reexamined, requester had the opportunity to include them in its request for reexamination. However, if the requester chose not to do so, those claim(s) for which reexamination was not requested will generally not be reexamined by the Office. It is further noted that 35 U.S.C. 302 requires that “[t]he request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.”
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If the requester fails to apply the art to certain claims, then the requester is not statutorily entitled to reexamination of such claims. If a request fails to set forth the pertinency and manner of applying the cited art to any claim for which reexamination is requested as required by 37 CFR 1.510(b), that claim will generally not be reexamined. The decision to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302 lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case. If the Office chooses to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302, it is permitted to do so. In addition, the Office may always initiate a reexamination on its own initiative of the non-requested claim (35 U.S.C. 303(a)). Thus, while the examiner will ordinarily concentrate on those claims for which reexamination is requested, the finding of “a substantial new question of patentability” can be based upon a claim of the patent other than the ones for which reexamination is requested, if reexamination is requested under 35 U.S.C. 302. For example, the request filed under 35 U.S.C. 302 might seek reexamination of particular claims, but the examiner is not limited to those claims and can make a determination that “a substantial new question of patentability” is present as to other claims in the patent without necessarily finding “a substantial new question” with regard to the claims for which reexamination was requested.
The decision on the request for reexamination should discuss all of the patent claims requested for reexamination. The examiner should limit the discussion of those claims in the order for reexamination as to whether a substantial new question of patentability has been raised.
See MPEP § 2242 for a discussion of patent claims which have been the subject of a prior decision.
Amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent to be reexamined will not (see MPEP §
2240, subsection II.) be considered nor commented upon when deciding a request for reexamination.
2244 Prior Art on Which the Determination Is Based in Requests Filed under 35 U.S.C. 302 [R-07.2015]
The determination under 35 U.S.C. 303(a) whether or not “a substantial new question of patentability” is present can be based upon any prior art patents or printed publications. 35 U.S.C. 303(a) and 37 CFR 1.515(a) provide that the determination on a request will be made “with or without consideration of other patents or printed publications,” i.e., other than those relied upon in the request. The examiner is not limited in making the determination based on the patents and printed publications relied on in the request. The examiner can find “a substantial new question of patentability” based upon the prior art patents or printed publications relied on in the request, a combination of the prior art relied on in the request and other prior art found elsewhere, or based entirely on different patents or printed publications. The primary source of patents and printed publications used in making the determination are those relied on in the request. For reexamination ordered on or after November 2, 2002, see MPEP § 2242, subsection II.A. for a discussion of “old art.” The examiner can also consider any patents and printed publications of record in the patent file from submissions under 37 CFR 1.501 which are in compliance with 37 CFR 1.98 in making the determination. If the examiner believes that additional prior art patents and publications can be readily obtained by searching to supply any deficiencies in the prior art cited in the request, the examiner can perform such an additional search. Such a search should be limited to that area most likely to contain the deficiency of the prior art previously considered and should be made only where there is a reasonable likelihood that prior art can be found to supply any deficiency necessary to “a substantial new question of patentability.”
The determination should be made on the claims in effect at the time the decision is made (37 CFR 1.515(a)).
The Director of the USPTO has the authority to order reexamination only in those cases which raise a
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substantial new question of patentability. The substantial new question of patentability requirement protects patentees from having to respond to, or participate in unjustified reexaminations. See, e.g., Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226
USPQ 985 (Fed. Cir. 1985).
2245 Processing of Decision [R-07.2015]
After the examiner has prepared the decision and proofread and signed the final version, the reexamination file and decision are forwarded to the Central Reexamination Unit (CRU) Legal Instrument Examiner (LIE) for coordinating the clerical processing carried out by the technical support staff.
A copy of the decision is then mailed to the patent owner and to any third party, along with any required copies of prior art documents. The signed copy of the decision and a copy of any prior art enclosed is made of record in the reexamination electronic file (file history).
2246 Decision Ordering Reexamination under 35 U.S.C. 304 [R-07.2015]
35 U.S.C. 304 Reexamination order by Director.
If, in a determination made under the provisions of subsection 303(a), the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question. The patent owner will be given a reasonable period, not less than two months from the date a copy of the determination is given or mailed to him, within which he may file a statement on such question, including any amendment to his patent and new claim or claims he may wish to propose, for consideration in the reexamination. If the patent owner files such a statement, he promptly will serve a copy of it on the person who has requested reexamination under the provisions of section 302. Within a period of two months from the date of service, that person may file and have considered in the reexamination a reply to any statement filed by the patent owner. That person promptly will serve on the patent owner a copy of any reply filed.
37 CFR 1.525 Order for ex parte reexamination.
(a) If a substantial new question of patentability is found pursuant to § 1.515 or § 1.520, the determination will include an order for ex parte reexamination of the patent for resolution of the question. If the order for ex parte reexamination resulted from a petition pursuant to § 1.515(c), the ex parte reexamination will ordinarily be conducted by an examiner other
than the examiner responsible for the initial determination under § 1.515(a).
(b) The notice published in the Official Gazette under § 1.11(c) will be considered to be constructive notice and ex parte reexamination will proceed.
If a request for reexamination is granted, the examiner’s decision granting the request will conclude that a substantial new question of patentability has been raised by (A) identifying all claims and issues, (B) identifying the patents and/or printed publications relied on, and (C) providing a brief statement of the rationale supporting each new question.
In the examiner’s decision, the examiner must identify at least one substantial new question of patentability and explain how the prior art patents and/or printed publications raise such a question. The examiner should indicate, insofar as possible, his or her initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply. The prior art relied on should be listed on a form PTO-892 if it is not already listed on a form PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms) by the requester. A copy of a reference should be supplied only where it has not been previously supplied to the patent owner and requester.
As to each substantial new question of patentability identified in the decision, the decision should point out:
(A) The prior art patents and printed publications which add some new teaching as to at least one claim;
(B) What that new teaching is;
(C) The claims that the new teaching is directed to;
(D) That the new teaching was not previously considered nor addressed in the earlier concluded examination or review of the patent or a final holding of invalidity by a federal court, and was not raised to or by the Office in a pending reexamination or supplemental examination of the patent;
(E) That the new teaching is such that a reasonable examiner would consider the new
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teaching to be important in deciding to allow the claim being considered; and
(F) Where the question is raised, or where it is not clear that a patent or printed publication pre-dates the patent claims, a discussion should be provided as to why the patent or printed publication is deemed to be available against the patent claims.
See MPEP § 2247.01 for an example of a decision granting a request for reexamination.
In a simple case, the examiner may adopt the reasons provided by the requester in the discussion of the substantial new question of patentability.
The example in MPEP § 2247.01 is drafted for the case where the “request indicates that Requester considers that Claims 1-3 are unpatentable over Smith taken with Jones.” There may, however, be a request that does not indicate the claims to be unpatentable over the art , but rather that a substantial new question of patentability is raised by the art. This may occur, for example, in a patent owner request filed to address prior art that raises a substantial new question of patentability but the claims are still patentable over the art. In such an instance , the decision on the request should not state that the “request indicates that Requester considers that Claims 1-3 are unpatentable over Smith taken with Jones.” Rather, it should state that the “request indicates that Requester considers that a substantial new question of patentability is raised as to Claims 1-3 based on Smith taken with Jones.”
In the decision on the request, the examiner will not decide, and no statement should be made as to, whether the claims are rejected over the patents and printed publications. The examiner does not decide the question of patentability of the claims in the decision on the request. The examiner only decides whether there is a substantial new question of patentability to grant the request to order reexamination.
If arguments are raised by a requester (third party or patent owner) as to grounds not based on the patents or printed publications, such as those based on public use or sale, or abandonment under 35 U.S.C. 102(c) for reexamination proceedings examined under the first-to-invent prior art regime,
the examiner should note that such grounds are improper for reexamination under 35 U.S.C. 302 and are not considered or commented upon. See 37 CFR 1.552(c).
The decision granting the request must set forth the time periods for the patent owner and requester to file their statement and any reply thereto.
Form paragraph 22.01 should be used at the beginning of each decision letter.
¶ 22.01 New Question of Patentability
A substantial new question of patentability affecting claim [1] of United States Patent Number [2] is raised by the request for ex parte reexamination.
Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that ex parte reexamination proceedings “will be conducted with special dispatch” (37 CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).
Form paragraph 22.73 should be used at the end of each decision letter.
¶ 22.73 Correspondence and Inquiry as to Office Actions
All correspondence relating to this ex parte reexamination proceeding should be directed:
By EFS: Registered users may submit via the electronic filing s y s t e m E F S - W e b , a t https://efs.uspto.gov/efile/myportal/efs-registered.
By Mail to: Mail Stop Ex Parte Reexam
Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
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401 Dulany Street
Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.
Any inquiry concerning this communication should be directed to [1] at telephone number [2].
Examiner Note:
1. This form paragraph is used at the end of ex parte reexamination communications.
2. In bracket 1, insert the name of the examiner having charge of the proceeding.
3. In bracket 2, insert the examiner’s telephone number.
I. PROCESS OF PREPARING THE DECISION ON THE REQUEST FILED UNDER 35 U.S.C. 302
After the reexamination file has been reviewed in the Central Reexamination Unit (CRU) to ensure that it is ready for examination, the reexamination proceeding will be assigned to an examiner.
In the event the CRU Reexamination Specialist (SPRS) believes that another Art Unit within the CRU should examine the reexamination file, see MPEP § 2237 for procedures for transferring the reexamination file.
After the examiner receives the new reexamination file, the examiner will prepare for and set up a panel review conference as per MPEP § 2271.01, to discuss the issuance of a decision on the request for reexamination. The examiner may prepare the decision on the request for reexamination, and, where applicable, (where the statement has been waived by patent owner - see MPEP § 2249 “Waiver of Statement Program”) the first Office action to accompany the decision after the conference, or may prepare the decision on the request for reexamination, and, where applicable, the first Office action prior to the conference and revise it as needed after the conference.
If the conference confirms the examiner’s preliminary decision to grant reexamination, the decision on the request for reexamination will be completed and signed by the examiner, with the two or more other conferees initialing the action (as “conferee”) to indicate their presence in the conference. When ready, the examiner’s decision processed and mailed. A transmittal form PTOL-465 with the third party requester’s address will be completed, if a copy for mailing is not already available. The transmittal form PTOL-465 is used to forward copies of Office actions (and any references cited in the actions) to the third party requester. Whenever an Office action is issued, a copy of this form will be made and attached to a copy of the Office action. The use of this form removes the need to retype the third party requester’s address each time a mailing is required. In conjunction with the mailing, any appropriate processing (e.g., PALM work, update scanning) is carried out by the staff of the CRU.
II. SEEKING REVIEW OF A FINDING OF A SUBSTANTIAL NEW QUESTION OF PATENTABILITY IN EX PARTE REEXAMINATION PROCEEDINGS UNDER 35 U.S.C. 302
A substantive determination by the Director of the USPTO to institute reexamination pursuant to a finding that the prior art patents or printed publications raise a substantial new question of patentability (SNQ) is not subject to review by the courts until a final agency decision in the reexamination proceeding has issued. See Joy Mfg. Co. v. Nat’l Mine Serv. Co., Inc., 810 F.2d 1127, 1 USPQ2d 1627 (Fed. Cir. 1987); Heinl v. Godici, 143 F. Supp.2d 593 (E.D.Va. 2001). Note further the decision of Patlex Corp. v. Quigg, 680 F. Supp. 33, 35, 6 USPQ2d 1296, 1298 (D.D.C. 1988) (the legislative scheme leaves the Director’s 35 U.S.C. 303 determination entirely to his or her discretion and not subject to judicial review until a final agency decision on the reexamination proceeding has issued).
A patent owner may challenge the correctness of the decision to grant an order for ex parte reexamination under 35 U.S.C. 304 on the basis that there is no SNQ by requesting reconsideration of the examiner's
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SNQ determination in a patent owner’s statement under 37 CFR 1.530 discussing the SNQ raised in the reexamination order for the examiner's consideration. See 35 U.S.C. 304. When the examiner makes a rejection based in whole or in part on a reference (patent or printed publication) in an Office action, the patent owner may present a challenge to the examiner's SNQ determination by requesting reconsideration of the examiner's determination that the reference raises a SNQ and presenting appropriate arguments in the response to the Office action. See 37 CFR 1.111(b) (the patent owner's response to an Office action must point out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the Office action). By presenting arguments regarding the SNQ to the examiner in the early stages of the proceeding, the patent owner helps the Office to resolve the issues quickly. For example, if the patent owner timely files a statement or response, and the examiner agrees with the patent owner that no SNQ has been raised in the ex parte reexamination proceeding, then the proceeding prosecution will be terminated or the reexamination order will be vacated (whichever is appropriate). However, if the examiner determines that the SNQ is proper, further review can be obtained by exhausting the patent owner's rights through the reexamination proceeding and ultimately seeking review before the Board - along with an appeal of any rejections. To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board.
In order to preserve the right to have the Board review the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner. Accordingly, for ex parte reexamination proceedings ordered under 35 U.S.C. 304 on or after June 25, 2010, the patent owner may seek a final agency decision from the Board on the SNQ issue only if the patent owner has first requested reconsideration before the examiner (e.g., in a patent owner's statement under 37 CFR 1.530 or in a patent owner's response under 37 CFR 1.111) and then seeks review of the examiner's SNQ determination before the Board. In its appeal brief, the patent owner is to clearly present the issue and arguments regarding the examiner's SNQ
determination under a separate heading and identify the communication in which the patent owner first requested reconsideration before the examiner. (For ex parte reexamination proceedings ordered under
35 U.S.C. 304 prior to June 25, 2010, if the patent owner presents the SNQ issue in its appeal brief, the Board panel will review the procedural SNQ issue along with its review of any rejections in an appeal and will enter a final agency decision accordingly.) See MPEP § 2274 for further discussion of the appeal process as to the SNQ issue.
Separate from the Board's consideration of the SNQ issue, a patent owner may file a petition under 37 CFR 1.181(a)(3) to vacate an ex parte reexamination order as " ultra vires." Such petitions should be rare, and will be granted only in a situation where the USPTO acted in ``brazen defiance'' of its statutory authorization in granting the order for ex parte reexamination. See Heinl, 143 F. Supp. 2d at 601-02. These types of petitions to vacate an ex parte reexamination order are not decided by the Board, but are delegated to the Director of Central Reexamination Unit (CRU).
“Appropriate circumstances” under 37 CFR 1.181(a)(3) exist to vacate the order granting reexamination where, for example:
(A) the reexamination order under 35 U.S.C. 304 is facially not based on prior art patents or printed publications (this does not include a situation where the Office has given reasons why a reference is a prior art patent or printed publication, and patent owner disagrees, but rather would include, for example, a situation where reexamination is ordered based on 35 U.S.C. 112, with a reference used to support a new question as to 35 U.S.C. 112);
(B) all claims of the patent for which reexamination was ordered were held to be invalid by a final decision of a federal court after all appeals;
(C) reexamination was ordered for the wrong patent; or
(D) reexamination was ordered based on a duplicate copy of the request.
There is no right to petition, as an " ultra vires" action by the Office, if the finding of a SNQ is based on reasons other than those urged by the requester
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(or based on less than all the grounds urged by the requester).
When a petition under 37 CFR 1.181 is filed to vacate a reexamination order under 35 U.S.C. 304, the third party requester (where one is present in the reexamination proceeding) may file a single submission in opposition to the petition. Because reexamination proceedings are conducted with special dispatch, 35 U.S.C. 305, any such opposition by the third party requester must be filed within two weeks of the date upon which a copy of the original 37 CFR 1.181 petition was served on the third party requester to ensure consideration. It is advisable that, upon receipt and review of the served copy of such a 37 CFR 1.181 petition which the third party requester intends to oppose, the requester should immediately place a courtesy telephone call to both the CRU support staff and the CRU SPRS to notify the Office that an opposition to the 37 CFR 1.181 petition will be filed. Whenever possible, filing of the opposition should be submitted electronically.
The filing of a 37 CFR 1.181 petition to vacate an ultra vires reexamination order is limited to a single submission, even if an opposition thereto is filed by a third party requester.
III. PRIORART SUBMITTEDAFTER THE ORDER
Any prior art citations or written statements under 37 CFR 1.501 submitted after the date of the decision on the order are stored until the reexamination is concluded. Note 37 CFR 1.502 and 1.902. After the reexamination proceeding is concluded, the submission is entered in the patent file. Submissions filed after the date of an order for reexamination will not be considered by the examiner during the reexamination. See MPEP § 2206.
2247 Decision under 35 U.S.C. 303 on Request for Reexamination filed Under 35 U.S.C. 302, Request Denied [R-07.2015]
The request for reexamination will be denied if a substantial new question of patentability is not found based on patents or printed publications.
If the examiner concludes that no substantial new question of patentability has been raised, the examiner should prepare a decision denying the reexamination request. Form paragraph 22.02 should be used as the introductory paragraph in a decision denying reexamination.
¶ 22.02 No New Question of Patentability
No substantial new question of patentability is raised by the request for reexamination and prior art cited therein for the reasons set forth below.
The decision denying the request will then indicate, for each patent and printed publication cited in the request, why the citation is:
(A) Cumulative to the teachings of the art cited in the earlier concluded examination or review of the patent, or raised to or by the Office in a pending reexamination or supplemental examination of the patent;
(B) Not available against the claims (e.g., the reference is not available as prior art because of its date or the reference is not a publication);
(C) Not important to a reasonable examiner in deciding whether any claim of the patent for which reexamination is requested is patentable, even though the citation is not cumulative and the citation is available against the claim; or
(D) One which was cited in the record of the patent and is barred by the guidelines set forth in MPEP § 2242, subsection II. A.
The examiner should also, in the decision respond to the substance of each argument raised by the requester which is based on patents or printed publications. If arguments are presented as to grounds not based on prior art patents or printed publications, such as those based on public use or on sale under 35 U.S.C. 102(b), or abandonment under 35 U.S.C. 102(c) for reexamination proceedings examined under the first-to-invent prior art regime, the examiner should note that such grounds are improper for reexamination and are not considered or commented upon. See 37 CFR 1.552(c).
See MPEP § 2247.01 for an example of a decision denying a request for reexamination. The example in MPEP § 2247.01 is drafted for the case where the
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“request indicates that Requester considers that Claims 1-2 are unpatentable over Smith taken with Jones.” There may, however, be a request that does not indicate the claims to be unpatentable over the art , but rather that a substantial new question of patentability is raised by the art. This may occur, for example, in a patent owner request filed to address prior art that raises a substantial new question of patentability but the claims are still patentable over the art. In such an instance , the decision on the request should not state that the “request indicates that Requester considers that Claims 1-2 are unpatentable over Smith taken with Jones.” Rather, it should state that the “request indicates that Requester considers that a substantial new question of patentability is raised as to Claims 1-2 based on Smith taken with Jones.”
The decision denying a request for reexamination is processed for mailing by the Central Reexamination Unit (CRU), and the CRU will allow time for a petition seeking review of the examiner’s determination refusing reexamination. If such a petition is not filed within one (1) month of the examiner’s determination denying reexamination, the CRU then processes the reexamination file to provide the partial refund set forth in 37 CFR 1.26(c) (the Office of Finance no longer processes reexamination proceedings for a refund). The reexamination proceeding is then given a 420 status. A copy of the PALM “Application Number Information” screen and the “Contents” screen is printed, the printed copy is annotated by adding the comment “PROCEEDING CONCLUDED,” and the annotated copy is then scanned into IFW using the miscellaneous letter document code.
The concluded reexamination file (electronic or paper) containing the request and the decision denying the request becomes part of the patent’s record.
PROCESS OF PREPARING THE DECISION DENYING THE REQUEST
If the examiner’s position is to deny reexamination, the examiner will prepare for and set up a panel review conference as per MPEP § 2271.01, to discuss the issuance of a decision denying reexamination. The examiner may prepare the decision after the conference, or may prepare the decision and revise it as needed after the conference.
The conference will be conducted. If the conference confirms the examiner’s preliminary decision not to grant reexamination, the decision denying reexamination will be completed and signed by the examiner, with the two or more other conferees initialing the action (as “conferee”) to indicate their presence in the conference. A transmittal form PTOL-465 with the third party requester’s address will be completed, if a copy for mailing is not already available. The transmittal form PTOL-465 is used to forward the decision to the third party requester. The use of this form removes the need to retype the third party requester’s address each time a mailing is required. In conjunction with the mailing, any appropriate processing (e.g., PALM work, update scanning) is carried out by the staff of the CRU.
2247.01 Examples of Decisions on Request for Reexamination [R-11.2013]
Examples of decisions on requests for ex parte reexamination are provided below. The first example is a grant of an ex parte reexamination. The second example is a denial of an ex parte reexamination. The examiner should leave the paper number blank since IFW files do not have a paper number.
Example (1): Decision Granting Request for Reexamination
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Example (2): Decision Denying Request for Reexamination
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2248 Petition From Denial of Request Filed Under 35 U.S.C. 302 [R-07.2015]
37 CFR 1.515 Determination of the request for ex parte reexamination.
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(c) The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.
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PROCESSING OF PETITION UNDER 37 CFR 1.515(c)
After a request for reexamination under 35 U.S.C. 302 has been denied, the Central Reexamination Unit (CRU) will allow time for a petition seeking review of the examiner’s determination refusing reexamination. If a petition seeking review of the examiner’s determination refusing reexamination is not filed within one (1) month of the examiner’s determination, the CRU will then process the reexamination file as a concluded reexamination file. See MPEP § 2247 and § 2294.
If a petition seeking review of the examiner’s determination refusing reexamination is filed, it is brought to the attention of the CRU Director or his/her designee for decision. Where a petition is filed, the CRU Director will review the examiner’s determination that a substantial new question of patentability has not been raised. The CRU Director’s review will be de novo. Each decision by the CRU Director will conclude with the paragraph:
This decision is final and nonappealable. See 35 U.S.C. 303(c) and 37 CFR 1.515(c). No further communication on this matter will be acknowledged or considered.
If the petition is granted, the decision of the CRU Director should include a sentence setting a two-month period for filing a statement under 37 CFR 1.530; the reexamination file will then be returned to the CRU Supervisory Patent Reexamination Specialist (SPRS) of the art unit that will handle the reexamination for consideration of reassignment to another examiner.
In the situation in which the examiner's determination failed to find any SNQ, reassignment will be the general rule. Only in exceptional circumstances, where no other examiner is available and capable to give a proper examination, will the case remain with the examiner who denied the request.
Under normal circumstances, the reexamination proceeding will not be reassigned to a primary
examiner or assistant examiner who was involved in any part of the examination of the patent for which reexamination is requested. Only where unusual circumstances are found to exist may the CRU Director make an exception to this practice and reassign the reexamination proceeding to an examiner involved with the examination of the patent. For example, if the original examiner of the patent and the examiner who issued the denial are the only examiners with adequate knowledge of the relevant technology, the CRU Director may permit reassignment of the reexamination proceeding to the examiner that originally examined the patent.
The requester may seek review of a denial of a request for reexamination only by petitioning the Director of the USPTO under 37 CFR 1.515(c) and 1.181 within one month of the mailing date of the decision denying the request for reexamination. Additionally, any request for an extension of the time period to file such a petition from the examiner’s denial of a request for reexamination can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).
After the time for petition has expired without a petition having been filed, or a petition has been filed and the decision thereon affirms the denial of the request, a partial refund of the filing fee for requesting reexamination will be made to the requester. (35 U.S.C. 303(c) and 37 CFR 1.26(c)). A decision on a petition under 37 CFR 1.515(c) is final and is not appealable.
37 CFR 1.515(c) applies only to challenging a basis for denying of reexamination; it does not apply to challenging a basis for granting of reexamination.
If an order granting reexamination includes a determination that the third party requester has not raised a substantial new question of patentability (SNQ) for one claim, but has raised a SNQ for at least one other claim, then third party requester may (within one month of the mailing date of the order) file a petition under 37 CFR 1.515(c) for reconsideration of the determination as to the claim for which no SNQ has been found to be raised.
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Similarly, a petition under 37 CFR 1.181 may be filed (within one month of the mailing date of the order) requesting review of a determination granting a request for reexamination, if the determination grants the request as to a specific claim for some reasons (SNQs) advanced in the request but does not grant the request as to the claim for other reasons (SNQs) advanced in the request. A decision on such a petition is final and non-appealable. If no petition is timely filed, the determination shall be final and non-appealable. See, e.g., Belkin Int'l, Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012).
2249 Patent Owner’s Statement in Reexaminations Filed Under 35 U.S.C. 302 [R-07.2015]
37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
(a) Except as provided in § 1.510(e), no statement or other response by the patent owner in an ex parte reexamination proceeding shall be filed prior to the determinations made in accordance with § 1.515 or § 1.520. If a premature statement or other response is filed by the patent owner, it will not be acknowledged or considered in making the determination, and it will be returned or discarded (at the Office’s option).
(b) The order for ex parte reexamination will set a period of not less than two months from the date of the order within which the patent owner may file a statement on the new question of patentability, including any proposed amendments the patent owner wishes to make.
(c) Any statement filed by the patent owner shall clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations. Where the reexamination request was filed by a third party requester, any statement filed by the patent owner must be served upon the ex parte reexamination requester in accordance with § 1.248.
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The patent owner has no right to file a statement subsequent to the filing of the request under 35 U.S.C. 302 but prior to the order for reexamination. Any such premature statement will not be acknowledged nor considered by the Office when making the decision on the request and will be returned or discarded at the option of the Office, and will be expunged if inadvertently entered into the record. See MPEP § 2225 and Patlex
Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985).
If reexamination is ordered under 35 U.S.C. 304, the decision will set a period of not less than two months within which period the patent owner may file a statement and any narrowing amendments to the patent claims. If necessary, an extension of time beyond the two months may be requested under 37 CFR 1.550(c) by the patent owner. See MPEP § 2265.
Any statement filed must clearly point out why the patent claims are believed to be patentable, considering the cited prior art patents or printed publications alone or in any reasonable combination.
A copy of the statement must be served by the patent owner on the requester, unless the request was filed by the patent owner.
Lack of proof of service especially poses a problem where the patent owner fails to indicate that he or she has served the requester in the statement subsequent to the order for reexamination (37 CFR 1.530(c)). In this situation, the Central Reexamination Unit should immediately contact the patent owner by telephone to see whether the indication of proof of service was inadvertently omitted from the patent owner’s response. If it was, the patent owner should be advised to submit a supplemental paper indicating the manner and date of service on requester. If the patent owner cannot be contacted, the Central Reexamination Unit will then contact the requester to verify that service has in fact been made by the patent owner and indicate that acknowledgment of proof of service should accompany requester’s reply (37 CFR 1.248(b)(1)). If the 2-month period for response under 37 CFR 1.530 has expired and requester has not been served, the patent owner’s statement is considered inappropriate (37 CFR 1.248) and may be denied consideration; see MPEP § 2267.
See also MPEP § 2266.03 for further discussion as to the patent owner providing service on the third party requester.
It should be noted that the period for response by requester for a reply under 37 CFR 1.535 is two
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months from the owner’s service date and not two months from the date the patent owner’s statement was received in the Office.
Where the patent owner has determined that a statement under 37 CFR 1.530 will not be filed, the patent owner may expedite the reexamination proceeding by filing a paper that indicates that the patent owner waives the filing of a statement under 37 CFR 1.530 and serving the waiver on the requester, if any. This will permit reexamination of the proceeding to proceed pursuant to 37 CFR 1.550(a).
Waiver of Statement Program:
If the patent owner waives the right to file a patent owner’s statement in response to a request from the Office, the examiner will be able to act on the first Office action on the merits immediately after determining that reexamination will be ordered under 35 U.S.C. 304, and in a suitable case issue the reexamination order and the first Office action on the merits at the same time (the first action may be a Notice of Intent to Issue Reexamination Certificate, where appropriate). This eliminates the delay of waiting for a patent owner’s statement and the third-party requester’s reply, and it permits the examiner to utilize his or her time more efficiently by drafting the order and the first Office action on the merits together.
Accordingly, the Central Reexamination Unit (CRU) will contact, via telephone, the patent owner to request the optional waiver of the patent owner’s statement after a reexamination proceeding under 35 U.S.C. 302 has been granted a filing date and before the examiner begins his or her review. The telephone communication will be strictly limited to the CRU requesting the waiver of the patent owner’s statement and agreement (or non-agreement) to the waiver by the patent owner. Discussion of the merits of the proceedings, e.g., the patentability of claims in patents, is not permitted. The CRU will make the agreement or non-agreement of record in the reexamination file in an interview summary, using form PTOL-2292 (Ex Parte Reexamination Interview Summary – Pilot Program for Waiver of Patent Owner’s Statement). A copy of the completed form will then be mailed to the patent owner and
any third party requester. The patent owner is not required to file a written statement as to the telephone communication under 37 CFR 1.560(b) or otherwise, and such a statement should not be filed as it will slow the process. If the patent owner agrees to the waiver of the right to file a patent owner’s statement, the examiner may issue the reexamination order and the first Office action on the merits on the same day as the order, or within a few days thereafter.
2250 Amendment by Patent Owner [R-07.2015]
37 CFR 1.121 Manner of making amendments in application. *****
(j) Amendments in reexamination proceedings. Any proposed amendment to the description and claims in patents involved in reexamination proceedings must be made in accordance with § 1.530.
37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
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(d) Making amendments in a reexamination proceeding. A proposed amendment in an ex parte or an inter partes reexamination proceeding is made by filing a paper directing that proposed specified changes be made to the patent specification, including the claims, or to the drawings. An amendment paper directing that proposed specified changes be made in a reexamination proceeding may be submitted as an accompaniment to a request filed by the patent owner in accordance with § 1.510(e), as part of a patent owner statement in accordance with paragraph (b) of this section, or, where permitted, during the prosecution of the reexamination proceeding pursuant to § 1.550(a) or § 1.937.
(1) Specification other than the claims. Changes to the specification, other than to the claims, must be made by submission of the entire text of an added or rewritten paragraph including markings pursuant to paragraph (f) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The precise point in the specification must be identified where any added or rewritten paragraph is located. This paragraph applies whether the amendment is submitted on paper or compact disc (see §§ 1.96 and 1.825).
(2) Claims. An amendment paper must include the entire text of each patent claim which is being proposed to be changed by such amendment paper and of each new claim being proposed to be added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each patent claim proposed to be changed and each proposed added claim must include markings pursuant to
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paragraph (f) of this section, except that a patent claim or proposed added claim should be canceled by a statement canceling the claim, without presentation of the text of the claim.
(3) Drawings. Any change to the patent drawings must be submitted as a sketch on a separate paper showing the proposed changes in red for approval by the examiner. Upon approval of the changes by the examiner, only new sheets of drawings including the changes and in compliance with § 1.84 must be filed. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
(4) The formal requirements for papers making up the reexamination proceeding other than those set forth in this section are set out in § 1.52.
(e) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (d) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status ( i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes to the claims made by the amendment paper.
(f) Changes shown by markings. Any changes relative to the patent being reexamined which are made to the specification, including the claims, must include the following markings:
(1) The matter to be omitted by the reexamination proceeding must be enclosed in brackets; and
(2) The matter to be added by the reexamination proceeding must be underlined.
(g) Numbering of patent claims preserved. Patent claims may not be renumbered. The numbering of any claims added in the reexamination proceeding must follow the number of the highest numbered patent claim.
(h) Amendment of disclosure may be required. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(i) Amendments made relative to patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing the request for reexamination.
(j) No enlargement of claim scope. No amendment may enlarge the scope of the claims of the patent or introduce new matter. No amendment may be proposed for entry in an expired patent. Moreover, no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent.
(k) Amendments not effective until certificate. Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published.
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37 CFR 1.52 Language, paper, writing, margins, compact disc specifications.
(a) Papers that are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application, or a reexamination or supplemental examination proceeding.
(1) All papers, other than drawings, that are submitted on paper or by facsimile transmission, and are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination or supplemental examination proceeding, must be on sheets of paper that are the same size, not permanently bound together, and:
(i) Flexible, strong, smooth, non-shiny, durable, and white;
(ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8 1/2 by 11 inches), with each sheet including a top margin of at least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch), and a bottom margin of at least 2.0 cm (3/4 inch);
(iii) Written on only one side in portrait orientation;
(iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent; and
(v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition.
(2) All papers that are submitted on paper or by facsimile transmission and are to become a part of the permanent records of the United States Patent and Trademark Office should have no holes in the sheets as submitted.
(3) The provisions of this paragraph and paragraph (b) of this section do not apply to the pre-printed information on paper forms provided by the Office, or to the copy of the patent submitted on paper in double column format as the specification in a reissue application or request for reexamination.
(4) See § 1.58 for chemical and mathematical formulae and tables, and § 1.84 for drawings.
(5) Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office’s electronic filing system requirements.
(b) The application (specification, including the claims, drawings, and the inventor's oath or declaration) or reexamination or supplemental examination proceeding, any amendments to the application or reexamination proceeding, or any corrections to the application, or reexamination or supplemental examination proceeding.
(1) The application or proceeding and any amendments or corrections to the application (including any translation submitted pursuant to paragraph (d) of this section) or
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proceeding, except as provided for in § 1.69 and paragraph (d) of this section, must:
(i) Comply with the requirements of paragraph (a) of this section; and
(ii) Be in the English language or be accompanied by a translation of the application and a translation of any corrections or amendments into the English language together with a statement that the translation is accurate.
(2) The specification (including the abstract and claims) for other than reissue applications and reexamination or supplemental examination proceedings, and any amendments for applications (including reissue applications) and reexamination proceedings to the specification, except as provided for in §§ 1.821 through 1.825, must have:
(i) Lines that are 1 1/2 or double spaced;
(ii) Text written in a nonscript type font ( e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high ( e.g., a font size of 6); and
(iii) Only a single column of text.
(3) The claim or claims must commence on a separate physical sheet or electronic page (§ 1.75(h)).
(4) The abstract must commence on a separate physical sheet or electronic page or be submitted as the first page of the patent in a reissue application or reexamination or supplemental examination proceeding (§ 1.72(b)).
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Amendments to the patent (one which has not expired) may be filed by the patent owner with his or her request under 35 U.S.C. 302. See MPEP § 2221. Such amendments, however, may not enlarge the scope of a claim of the patent or introduce new matter. Amended or new claims which broaden or enlarge the scope of a claim of the patent should be rejected under 35 U.S.C. 305. The test for when an amended or “new claim enlarges the scope of an original claim under 35 U.S.C. 305 is the same as that under the 2-year limitation for reissue applications adding enlarging claims under 35 U.S.C. 251, last paragraph.” In re Freeman, 30 F.3d 1459, 1464, 31 USPQ2d 1444, 1447 (Fed. Cir. 1994). See MPEP § 2258 for a discussion of enlargement of claim scope. For handling of new matter, see MPEP § 2270. Amendments proposed in a reexamination will normally be entered and be considered to be entered for purposes of prosecution before the Office (if they are timely and comply with the rules); however, the amendments do not become effective
in the patent until the reexamination certificate under 35 U.S.C. 307 is issued and published.
No amendment will be permitted where the certificate issues after expiration of the patent. See 37 CFR 1.530(d)(3). The patent expiration date for a utility patent, for example, is determined by taking into account the term of the patent, whether maintenance fees have been paid for the patent, whether any disclaimer was filed as to the patent to shorten its term, any patent term extensions or adjustments for delays within the USPTO under 35 U.S.C. 154 (see MPEP § 2710 et seq.), and any patent term extensions under 35 U.S.C. 156 for premarket regulatory review (see MPEP § 2750 et. seq.). Any other relevant information should also be taken into account.
Amendment Entry — Amendments which comply with 37 CFR 1.530(d)-(j) (and are formally presented pursuant to 37 CFR 1.52(a) and (b), and contain all fees required by 37 CFR 1.20(c)) will be entered in the reexamination file pursuant to the guidelines set forth in MPEP § 2234.
I. MANNER OF MAKING AMENDMENTS IN REEXAMINATION PROCEEDINGS
Amendments made in a reexamination proceeding must comply with the formal requirements of 37 CFR 1.52(a) and (b), as do all papers that are to become a part of the permanent USPTO file records in a patent application or proceeding. If an amendment is submitted to add claims to the patent being reexamined (i.e., to provide new claims), then excess claim fees pursuant to 37 CFR 1.20(c)(3) and (4) may be applicable to the presentation of the added claims. See MPEP § 2250.03. In addition, the provisions of 37 CFR 1.530(d)-(k) uniquely apply to amendments in both ex parte and inter partes reexamination proceedings, as follows.
A. The Specification
37 CFR 1.530(d)(1) relates to the manner of making amendments to the reexamination “specification” (other than the claims). It is not to be used for making amendments to the claims or the drawings.
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37 CFR 1.530(d)(1) requires that all amendments, which include any deletions or additions, must be made by submission of the full text of any paragraph to be changed in any manner, with markings (single brackets and underlining) showing the changes. It should be noted that examiner’s amendments made at the time when the Notice of Intent to Issue Reexamination Certificate (NIRC) is prepared also require the full text of any paragraph to be changed, with markings. The exception for examiner’s amendment set forth in 37 CFR 1.121(g) does not apply to examiner’s amendments in reexamination proceedings. It should further be noted that the requirement of 37 CFR 1.530(d)(1) applies regardless of whether the amendment is submitted on paper or on compact disc (pursuant to 37 CFR 1.96 or 1.825). The only exception to this requirement is that an entire paragraph of specification text may be deleted from the specification by a statement deleting the paragraph without the presentation of the text of the paragraph. However, presentation of the text of the paragraph to be deleted will assist the Office in proper entry of the amendment.
In accordance with 37 CFR 1.530(d)(1), all paragraphs which are added to the specification must be submitted as completely underlined.
37 CFR 1.530(d)(1) requires that the precise point where each amendment is to be made must be indicated. This is important because uncertainty about the precise point for an amendment may cause delay in the publication of the reexamination certificate. Care should be taken to clearly identify the precise point for each change to the specification.
37 CFR 1.530(d)(1) defines the “markings” by reference to 37 CFR 1.530(f) as being single brackets for deletion and underlining for addition. All bracketing and underlining is made in comparison to the original patent; not in comparison with the prior amendment.
Where a change is made in one sentence, paragraph or page of the patent, and the change increases or decreases the size of the sentence, paragraph or page, this will have no effect on the body of the reexamination “specification” (the copy of the patent). This is because all insertions are made as
blocked additions of paragraphs. Therefore, a reexamination patent owner need not be concerned with page formatting considerations when presenting amendments to the Office.
B. The Claims
37 CFR 1.530(d)(2) relates to the manner of making amendments to the claims in a reexamination proceeding. It is not to be used for making amendments to the remainder of the specification or to the drawings.
37 CFR 1.530(d)(2) requires that:
(A) for each claim that is proposed to be amended by the amendment paper being submitted (the current amendment paper), the entire text of the claim must be presented with appropriate markings showing the changes to the claim;
(B) for each proposed new claim which is added in the reexamination by the amendment paper being submitted (the current amendment paper), the entire text of the proposed new claim must be presented and it must be underlined throughout;
(C) a patent claim is canceled by a direction to cancel that claim, there is no need to present the text of the patent claim surrounded by brackets; and
(D) a proposed new claim (previously added in the reexamination) is canceled by a direction to cancel that claim.
Examiner’s amendments made at the time when the Notice of Intent to Issue Reexamination Certificate (NIRC) is prepared also require the full text of any claim to be changed, with markings. The exception for examiner’s amendment set forth in 37 CFR 1.121(g) does not apply to examiner’s amendments in reexamination proceedings. The requirements of 37 CFR 1.530(d)(2) apply regardless of whether the amendment is submitted on paper or on compact disc (pursuant to 37 CFR 1.96 or 1.825).
In accordance with 37 CFR 1.530(e), each amendment submitted must set forth the status of all patent claims and all added claims as of the date of the submission. The status to be set forth is whether the claim is pending, or canceled. The failure to submit the claim status will generally result in a
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notification to the patent owner of an informal response (see MPEP § 2266.02) prior to final rejection. Such an amendment submitted after final rejection will not be entered.
Also in accordance with 37 CFR 1.530(e), each claim amendment must be accompanied by an explanation of the support in the disclosure of the patent for the amendment (i.e., support for the changes made in the claim(s), support for any insertions and deletions). The failure to submit an explanation will generally result in a notification to the patent owner that the amendment prior to final rejection is not completely responsive since the failure to set forth the support in the disclosure goes to the merits of the case (see MPEP § 2266.01). Such an amendment submitted after final rejection will not be entered.
37 CFR 1.530(f) identifies the type of markings required in the claim to be amended as underlining for added material and single brackets for material deleted.
37 CFR 1.530(g) states that original patent claims may not be renumbered. A patent claim retains its number even if it is canceled in the reexamination proceeding, and the numbering of any added claims must begin after the last original patent claim.
C. The Drawings
With respect to amendment of the drawings in a reexamination proceeding, see MPEP § 2250.01.
Form paragraph 22.12 may be used to advise patent owner of the proper manner of making amendments in an ex parte reexamination proceeding.
D. Form Paragraphs - Ex Parte Reexamination
¶ 22.12 Amendments Proposed in a Reexamination - 37 CFR 1.530(d)-(j)
Patent owner is notified that any proposed amendment to the specification and/or claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be formally presented pursuant to 37 CFR 1.52(a) and (b), and must contain any fees required by 37 CFR 1.20(c).
Examiner Note:
This paragraph may be used in the order granting reexamination and/or in the first Office action to advise patent owner of the proper manner of making amendments in a reexamination proceeding.
¶ 22.13 Improper Amendment in an Ex Parte Reexamination - 37 CFR 1.530(d)-(j)
The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.530(d)-(j), which sets forth the manner of making amendments in reexamination proceedings. A supplemental paper correctly proposing amendments in the present ex parte reexamination proceeding is required.
A shortened statutory period for response to this letter is set to expire [3] from the mailing date of this letter. If patent owner fails to timely correct this informality, the amendment will be held not to be an appropriate response, prosecution of the present ex parte reexamination proceeding will be terminated, and a reexamination certificate will issue. 37 CFR 1.550(d).
Examiner Note:
1. This paragraph may be used for any 37 CFR 1.530(d)-(j) informality as to a proposed amendment submitted in a reexamination proceeding prior to final rejection. After final rejection, the amendment should not be entered and patent owner informed of such in an advisory Office action using Form PTOL 467.
2. In bracket 3, if the reexamination was requested by a third party requester, the examiner should insert “ONE MONTH or thirty days, whichever is longer”. If the reexamination was requested by the patent owner, if the reexamination was ordered under 35 U.S.C. 257, or if it is a Director ordered reexamination, the examiner should insert “TWO MONTHS.”
The cover sheet to be used for mailing the notification to the patent owner will be PTOL-473.
As an alternative to using form paragraph 22.13, it would also be appropriate to use form PTOL-475.
Note that if the informal amendment is submitted after final rejection, form paragraph 22.13 and form PTOL-475 should not be used. Rather an advisory Office action (using form PTOL-467) should be issued indicating that the amendment was not entered. In the “Other” section, it should be explained that the amendment was not entered because it does not comply with 37 CFR 1.530(d)-(j), which sets forth the manner of making amendments in reexamination proceedings.
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E. Form Paragraphs - Inter Partes Reexamination
See MPEP § 2666.01 for the form paragraphs to use in inter partes reexamination proceedings, in advising the patent owner as to the manner of making amendments.
II. ALL CHANGES ARE MADE VIS-A-VIS THE PATENT BEING REEXAMINED
When a reexamination certificate is printed, all underlined matter is printed in italics and all brackets are printed as they were inserted in the proceeding in order to thereby show exactly which additions and deletions have been made in the patent via the reexamination proceeding. In accordance with 37 CFR 1.530(i), all amendments to the patent being reexamined must be made relative to the patent specification in effect as of the date of the filing of the request for reexamination. The patent specification includes the claims and drawings. If there was a prior change to the patent (made via a concluded post-patent proceeding, e.g., prior reexamination certificate, reissue of the patent, certificate of correction, etc.), the first amendment must be made relative to the patent specification as changed by the prior proceeding or other mechanism for changing the patent. All amendments subsequent to the first amendment must also be made relative to the patent specification in effect as of the date of the filing of the request for reexamination, and not relative to the prior amendment. In those rare instances where a concluded post-patent proceeding changes the patent while the reexamination proceeding is pending, amendments will be made relative to the patent, as revised by the concluded proceeding, and 37 CFR 1.530(i) is waived to that extent.
III. AMENDMENT AFTER THE PATENT HAS EXPIRED
Pursuant to 37 CFR 1.530(j), “[n]o amendment may be proposed for entry in an expired patent.” Thus, if a patent expires during the pendency of a reexamination proceeding for a patent, all amendments to the patent claims and all claims added during the proceeding are withdrawn. The patent owner should be notified of this in the next Office action. The Office action will hold the
amendments to be improper, and state that all subsequent reexamination will be on the basis of the unamended patent claims. This procedure is necessary since no amendments will be incorporated into the patent by a certificate after the expiration of the patent.
37 CFR 1.530(j) further states that “[m]oreover, no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent.”
Thus, at the time the NIRC is to be issued, the examiner should ensure that all rejected and objected to claims are canceled. The examiner should issue an examiner’s amendment canceling any such claims not already canceled.
The cancellation of the original patent claims is the only “amendatory” change permitted in an expired patent.
IV. EXAMPLES
A substantial number of problems arise in the Office because of improper submission of proposed amendments in reexamination proceedings. The following examples are provided to assist in the preparation of proper proposed amendments in reexamination proceedings.
(A) Original Patent Description or Patent Claim Amended.
(1) Specification - submit a copy of the entire paragraph (of the specification of the patent) being amended with underlining and bracketing. Thus, the amendment would be presented as follows:
Replace the paragraph beginning at column 4, line 23 with the following:
Scanning [is] are controlled by clocks which are, in turn, controlled from the display tube line synchronization. The signals resulting from scanning the scope of the character are delivered in parallel, then converted into serial mode through a shift register, wherein the shift signal frequency is controlled by a clock that
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is controlled from the display tube line synchronization.
(2) Claims - for changes to the patent claims, one must submit a copy of the entire patent claim with the amendments shown by underlining and single bracketing. Thus, the amendment would be presented as follows:
Amend claim 6 as follows:
Claim 6. (amended), The apparatus of claim [5] 1 wherein the [first] second piezoelectric element is parallel to the [second] third piezoelectric element.
If the dependency of any original patent claim is to be changed by amendment, it is proper to make that original patent claim dependent upon a later filed higher numbered claim.
(B) Cancellation of Entire Claim(s).
(1) Original patent claim canceled - in writing, direct cancellation of the entire patent claim.
Cancel claim 6.
(2) Proposed new claim (previously added in the reexamination) canceled - in writing, direct cancellation of the entire claim.
Cancel claim 15.
(C) Re-presentation of Original Patent Claims (no underlining or bracketing).
Amend claim 4 to read as original patent claim 4:
Claim 4. The apparatus of claim 1 wherein the first piezoelectric element is perpendicular to the second piezoelectric element.
(D) Presentation of New Claims.
Each proposed new claim (i.e., a claim not found in the patent, that is newly presented in the reexamination proceeding) should be presented with
underlining throughout the claim, including the claim number and status indicator.
Insert new claim 7 as follows:
Claim 7 (New). The apparatus of claim 5 further comprising electrodes attaching to said opposite faces of the second and third piezoelectric elements.
Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent. If new claims have been added to the reexamination proceeding which are later canceled prior to the issuance of the reexamination certificate, the examiner will renumber, at the time of preparing the NIRC for subsequent issuance of the certificate, any remaining new claims in numerical order to follow the highest number of the claims in the original patent.
A claim number previously assigned to a new claim that has been canceled should not be reassigned to a different new claim during the reexamination proceeding. For example, if new claim 5 added in a prior amendment is canceled in a later amendment, a different new claim added in a later amendment during the reexamination proceeding would be claim 6. Of course, at the time of preparing the NIRC, claim 6 would be renumbered for issue of the reexamination certificate as claim 5.
(E) Amendment of New Claims.
An amendment of a new claim (i.e., a claim not found in the patent, that was previously presented in the reexamination proceeding) must present the entire text of the new claim containing the amendatory material, and it must be underlined throughout the claim, including the claim number and status indicator. The presentation cannot contain any bracketing or other indication of what was in the previous version of the claim. This is because all changes in the reexamination are made vis-a-vis the original patent, and not in comparison with any prior amendment. Although the presentation of the amended claim does not contain any indication of
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what is changed from a previous version of the claim, patent owner must point out what is changed, in the “Remarks” portion of the amendment. Also, as per 37 CFR 1.530(e), each change made in the claim must be accompanied by an explanation of the support in the disclosure of the patent (i.e., the reexamination specification) for the change.
(F) Amendment of Original Patent Claims More Than Once.
The following example illustrates proper claim amendment of original patent claims in reexamination proceedings, where more than one amendment to a claim is made:
(1) Patent claim.
Claim 1. A cutting means having a handle portion and a blade portion.
(2) Proper first amendment format.
Claim 1. (amended), A [cutting means] knife having a bone handle portion and a notched blade portion.
(3) Proper second amendment format.
Claim 1. (twice amended), A [cutting means] knife having a handle portion and a serrated blade portion.
Note that the second amendment must include (1) the changes previously presented in the first amendment; i.e., [cutting means] knife, as well as (2) the new changes presented in the second amendment; i.e., serrated.
The word bone was presented in the first amendment and is now to be deleted in the second amendment. Thus, “bone” is NOT to be shown in brackets in the second amendment. Rather, the word “bone” is simply omitted from the claim, since “bone” never appeared in the patent.
The word notched which was presented in the first amendment is replaced by the word serrated in the second amendment. The word notched is being deleted in the second amendment and did not appear in the patent; accordingly, “notched” is not shown in any form in the claim. The word serrated is being
added in the second amendment, and accordingly, “serrated” is added to the claim and is underlined.
It should be understood that in the second amendment, the deletions of “notched” and “bone” are not changes from the original patent claim text and therefore, are not shown in the second amendment. In both the first and the second amendments, the entire claim is presented only with the changes from the original patent text.
If the patent expires during an ex parte or inter partes reexamination proceeding and the patent claims have been amended in that reexamination proceeding, the Office will hold the amendments as being improper, and all subsequent reexamination will be on the basis of the unamended patent claims. This procedure is necessary since no amendments will be incorporated into the patent by certificate after the expiration of the patent.
V. CROSS REFERENCES TO OTHER AREAS
(A) For clerical handling of amendments, see MPEP § 2270 for ex parte reexamination proceedings, and see MPEP § 2670 for inter partes reexamination proceedings.
(B) As to amendments in a merged proceeding, see MPEP § 2283 for an ex parte reexamination merged with another ex parte reexamination and MPEP § 2285 for an ex parte reexamination merged with a reissue application. If an inter partes reexamination proceeding is included in the merger, see MPEP § 2686.01 and § 2686.03.
(C) As to amendments in a pending reexamination proceeding where a reexamination certificate has issued for the patent based on a prior concluded reexamination, pursuant to MPEP § 2295, any amendment made in the pending reexamination proceeding must be presented as if the changes made to the patent text via the reexamination certificate (for the prior concluded reexamination) are a part of the original patent. All italicized text of the certificate is considered as if the text was present without italics in the original patent. Further, any text of the reexamination certificate found in brackets is considered as if it were never present in the patent at all. Thus, for making an amendment in the pending reexamination, all italicized text of the reexamination certificate is presented in the amendment without italics. Further, any text found in brackets in the
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reexamination certificate is omitted in the amendment.
(D) As to amendments in a pending reexamination proceeding where a reissue patent has been granted, pursuant to MPEP § 2285, subsection II.A., an amendment in a reexamination of a reissued patent is made the same way as in a reexamination of a reexamined patent (i.e., as per MPEP § 2295). Thus, all italicized text of the reissue patent is presented in the amendment (made in the pending reexamination proceeding) without italics. Further, any text found in brackets in the reissue patent is omitted in the amendment (made in the pending reexamination proceeding).
(E) For handling a dependent claim in reexamination proceedings, see MPEP § 2260.01.
2250.01 Correction of Patent Drawings [R-07.2015]
37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
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(d) Making amendments in a reexamination proceeding . A proposed amendment in an ex parte or an inter partes reexamination proceeding is made by filing a paper directing that proposed specified changes be made to the patent specification, including the claims, or to the drawings. An amendment paper directing that proposed specified changes be made in a reexamination proceeding may be submitted as an accompaniment to a request filed by the patent owner in accordance with § 1.510(e), as part of a patent owner statement in accordance with paragraph (b) of this section, or, where permitted, during the prosecution of the reexamination proceeding pursuant to § 1.550(a) or § 1.937.
(3) Drawings . Any change to the patent drawings must be submitted as a sketch on a separate paper showing the proposed changes in red for approval by the examiner. Upon approval of the changes by the examiner, only new sheets of drawings including the changes and in compliance with § 1.84 must be filed. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
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In the reexamination proceeding, the copy of the patent drawings submitted pursuant to 37 CFR 1.510(b)(4) will be used for reexamination purposes, provided no change whatsoever is made to the drawings. If there is to be ANY change in the
drawings, a new sheet of drawings for each sheet changed must be submitted. The change may NOT be made on the original patent drawings.
37 CFR 1.530(d)(3) sets forth the manner of making amendments to the drawings. Amendments to the original patent drawing sheets are not permitted, and any change to the patent drawings must be in the form of a new sheet of drawings for each drawing sheet that is changed. Any amended figure(s) must be identified as “Amended” and any added figure(s) must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
Where the patent owner wishes to change/amend the drawings, the patent owner should submit a sketch in permanent ink showing proposed change(s)/amendment(s), for approval by the examiner. The submitted sketch should be presented as a separate paper, which is clearly labeled as “Annotated Sheet,” and it will be made part of the record. Once the proposed changes are approved, sheets of substitute or new drawings must be submitted for each drawing sheet that is to be changed/amended. If a new drawing sheet contains multiple figures, each figure must be marked as “amended” or “new,” if applicable, to comply with the requirements of 37 CFR 1.530(d)(3). For example, if the new drawing sheet contains Figures 1-3 but only Figure 2 is amended, the new drawing sheet must identify Figure 2 as “Amended.” It is not sufficient to generally indicate that the entire sheet is amended by, e.g., placing the term “Amended” in the header of the drawing sheet.
The new sheets of drawings must be entered into the record in the reexamination file prior to the preparation of a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC). If a proposed drawing correction has been approved but the new sheets of drawings have not been filed, and the proceeding is otherwise in condition for termination of the prosecution by means of a NIRC, an ex parte Quayle Office action should be prepared - setting an appropriate shortened statutory time period (SSP) for the filing of the new sheets of drawing. If the reexamination was requested by a third party requester, the examiner should set an SSP of ONE MONTH or thirty days, whichever is longer. If the
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reexamination was requested by the patent owner, if the reexamination was ordered under 35 U.S.C. 257, or if it is a Director ordered reexamination, the examiner should set an SSP of TWO MONTHS. If the new sheets of drawings are not timely filed in response to the Quayle action, the reexamination certificate will be issued with drawings that do not reflect the changes/amendments that were proposed by the patent owner.
2250.02 Correction of Inventorship [R-07.2015]
37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
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(l) Correction of inventorship in an ex parte or inter partes reexamination proceeding.
(1) When it appears in a patent being reexamined that the correct inventor or inventors were not named, the Director may, on petition of all the parties set forth in § 1.324(b)(1) and (b)(2), including the assignees, and satisfactory proof of the facts and payment of the fee set forth in § 1.20(b), or on order of a court before which such matter is called in question, include in the reexamination certificate to be issued under § 1.570 or § 1.997 an amendment naming only the actual inventor or inventors. The petition must be submitted as part of the reexamination proceeding and must satisfy the requirements of § 1.324.
(2) Notwithstanding paragraph (I)(1) of this section, if a petition to correct inventorship satisfying the requirements of § 1.324 is filed in a reexamination proceeding, and the reexamination proceeding is concluded other than by a reexamination certificate under § 1.570 or § 1.997, a certificate of correction indicating the change of inventorship stated in the petition will be issued upon request by the patentee.
Where the inventorship of a patent being reexamined is to be corrected, a petition for correction of inventorship which complies with 37 CFR 1.324 must be submitted during the prosecution of the reexamination proceeding. See 37 CFR 1.530(l)(1). If the petition under 37 CFR 1.324 is granted, a certificate of correction indicating the change of inventorship will not be issued, because the reexamination certificate that will ultimately issue will contain the appropriate change of inventorship information. The certificate of correction is in effect merged with the reexamination certificate.
In some instances, the reexamination proceeding concludes but does not result in a reexamination certificate under 37 CFR 1.570 or 1.997, e.g., reexamination is vacated, or the order for reexamination is denied. In those instances, patent owner may, after the conclusion of the reexamination proceeding, request that the inventorship be corrected by a certificate of correction indicating the change of inventorship. See 37 CFR 1.530(l)(2). Alternatively, the failure to name the correct inventive entity is an error in the patent which is correctable by reissue under 35 U.S.C. 251. See MPEP § 1412.04 for a discussion of when correction of inventorship by reissue is appropriate.
2250.03 Fees for Adding Claims and for Filing a Petition [R-07.2015]
I. FEES FOR ADDING CLAIMS
Excess claims fees are applicable to excess claims proposed to be added to a patent by their presentation during a reexamination proceeding. See 37 CFR 1.20(c)(3) and (c)(4). Under “former” 35 U.S.C. 41, excess claims fees were included as part of the “application” filing fee under 35 U.S.C. 41(a)(1), and thus did not apply during reexamination proceedings. The Consolidated Appropriations Act does not include the excess claims as part of the “application” filing fee under 35 U.S.C. 41(a)(1), but separately provides for excess claims fees in 35 U.S.C. 41(a)(2) (as being in addition to the filing fee in 35 U.S.C. 41(a)(1)). 35 U.S.C. 41(a)(2) provides that an excess claims fee is due “on filing or on presentation at any other time” (e.g., during a reexamination proceeding) of an independent claim in excess of three or of a claim (whether independent or dependent) in excess of twenty.
37 CFR 1.20 was amended, effective December 8, 2004, to provide for excess claims fees in a reexamination proceeding. The excess claims fees specified in 37 CFR 1.20(c) apply to all patents, whenever granted. The fees must be submitted for any excess claims presented in a reexamination proceeding on or after December 8, 2004 (no excess claims fee was due under 35 U.S.C. 41 for any claim presented during a reexamination proceeding before December 8, 2004). Even though a reexamination proceeding was commenced prior to December 8,
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2004, the excess claims fees are due for any amendment filed on or after December 8, 2004.
When a patent owner presents an amendment to the claims (on or after December 8, 2004) during an ex parte reexamination proceeding, or upon filing of an ex parte reexamination request under 35 U.S.C. 302 (on or after December 8, 2004), excess claims fees may be applicable. If the amendment is limited to revising the existing claims, i.e., it does not provide any new claim, there is no claim fee. The excess claims fees apply only to the submission of new, i.e., “excess” claims.
The excess claims fees specified in 37 CFR 1.20(c) apply to excess claims that result from an amendment as follows:
(A) The fee designated in 37 CFR 1.20(c)(3) as the independent claims fee must be paid for each independent claim in excess of three and also in excess of the number of independent claims in the patent being reexamined. The amendment must increase the number of independent claims to be more than both of these limits, in order for the “independent excess claims fee” to apply;
(B) The fee designated in 37 CFR 1.20(c)(4) as the total claims fee must be paid for each claim (whether independent or dependent) in excess of twenty and also in excess of the number of claims in the patent being reexamined. The amendment must increase the total number of claims to be more than both of these limits, in order for the “total excess claims fee” to apply.
The following examples illustrate the application of the excess claims fees in a patent (non-small entity) to be reexamined containing six independent claims and thirty total claims:
(A) No excess claims fee is due if the patent owner cancels ten claims, two of which are independent, and adds ten claims, two of which are independent.
(B) The 37 CFR 1.20(c)(3) excess independent claims fee for a seventh independent claim is due if the patent owner cancels ten claims, two of which are independent, and adds ten claims, three of which are independent.
(C) The 37 CFR 1.20(c)(4) excess total claims fee for a thirty-first claim is due if the patent owner cancels ten claims, two of which are independent, and adds eleven claims, two of which are independent.
(D) The 37 CFR 1.20(c)(3) excess independent claims fee for a seventh independent claim and the 37 CFR 1.20(c)(4) excess total claims fee for a thirty-first claim are due if the patent owner cancels ten claims, two of which are independent, and adds eleven claims, three of which are independent.
A claim that has been disclaimed under 35 U.S.C. 253 and 37 CFR 1.321(a) as of the date of filing of the request for reexamination is not considered to be a claim in the patent under reexamination for purposes of excess claims fee calculations. The same applies to a claim canceled via a prior Reexamination Certificate, reissue patent, or Certificate of Correction.
If, for a response to a non-final Office action, the excess claims fees required by 37 CFR 1.20(c)(3) and (c)(4) are not paid with the presentation of the excess claims, a notice of fee deficiency will be issued as a Notice of Defective Paper In Ex Parte Reexamination. In third party requested reexaminations, a one-month time period will be set in the form PTOL-475 for correction of the defect, i.e., the fee deficiency. In patent owner requested reexaminations (including reexaminations ordered under 35 U.S.C. 257) or Director ordered reexaminations, a two-month time period will be set in form PTO-2311 for correction of the defect, i.e., the fee deficiency. An extension of time to correct the fee deficiency may be requested under 37 CFR 1.550(c). If the unpaid excess claims fees required by 37 CFR 1.20(c)(3) and (c)(4) are not paid within the time period set for response to the Notice, the prosecution of the reexamination proceeding will be terminated under 37 CFR 1.550(e), to effect the “abandonment” set forth in 37 CFR 1.20(c)(5). If the excess claims fees required by 37 CFR 1.20(c)(3) and (c)(4) are not paid with the presentation of the excess claims in a response to a final Office action, the examiner should notify the owner of the fee deficiency in the advisory action.
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II. FEES FOR FILING A PETITION IN REEXAMINATION
Pursuant to 37 CFR 1.550(i), a petition in an ex parte reexamination proceeding must be accompanied by the fee set forth in 37 CFR 1.20(c)(6), except for petitions under 37 CFR 1.530(c) to extend the period for response by a patent owner, petitions under 37 CFR 1.550(e) to accept a delayed response by a patent owner, petitions under 37 CFR 1.78 to accept an unintentionally delayed benefit claim, and petitions under 37 CFR 1.530(l) for correction of inventorship in a reexamination proceeding.
Pursuant to 37 CFR 1.20(c)(6), the fee for filing a petition in an ex parte reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) is:
$ 1,940 for a large entity.
$ 970 for a small entity.
$ 485 for a micro entity (available for patent owners only).
2251 Reply by Third Party Requester [R-08.2012]
37 CFR 1.535 Reply by third party requester in ex parte reexamination.
A reply to the patent owner’s statement under § 1.530 may be filed by the ex parte reexamination requester within two months from the date of service of the patent owner’s statement. Any reply by the ex parte requester must be served upon the patent owner in accordance with § 1.248. If the patent owner does not file a statement under § 1.530, no reply or other submission from the ex parte reexamination requester will be considered.
If the patent owner files a statement in a timely manner, the third party requester is given a period of 2 months from the date of service to reply. Since the statute, 35 U.S.C. 304, provides this time period, there will be no extensions of time granted.
The reply need not be limited to the issues raised in the statement. The reply may include additional prior art patents and printed publications and may raise any issue appropriate for reexamination.
If no statement is filed by the patent owner, no reply is permitted from the third party requester.
The third party requester must serve a copy of the reply on the patent owner. See MPEP § 2266.03 for further discussion as to the third party requester providing service on the patent owner.
The third party requester is not permitted to file any further papers after his or her reply to the patent owner’s statement. Any further papers will not be considered and will be returned to the requester. The patent owner cannot file papers on behalf of the third party requester and thereby circumvent the rules.
2252 Consideration of Statement and Reply [R-11.2013 ]
37 CFR 1.540 Consideration of responses in ex parte reexamination.
The failure to timely file or serve the documents set forth in § 1.530 or in § 1.535 may result in their being refused consideration. No submissions other than the statement pursuant to § 1.530 and the reply by the ex parte reexamination requester pursuant to § 1.535 will be considered prior to examination.
Although 37 CFR 1.540 would appear to be discretionary in stating that late responses “may result in their being refused consideration,” patent owners and requesters can expect consideration to be refused if the statement and/or reply is not timely filed. 37 CFR 1.540 restricts the number and kind of submissions to be considered prior to examination to those expressly provided for in 37 CFR 1.530 and 37 CFR 1.535. Untimely submissions will ordinarily not be considered. Untimely submissions, other than untimely papers filed by the patent owner after the period set for response, will not be placed of record in the reexamination file but will be returned to the sender.
Any paper for which proof of service is required, which is filed without proof of service, may be denied consideration. Where no proof of service is included, inquiry should be made of the sender by the Central Reexamination Unit as to whether service was in fact made. If no service was made, the paper
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is placed in the reexamination file but is not considered. See MPEP § 2266.03 and § 2267.
2253 Consideration by Examiner [R-07.2015]
Once reexamination is ordered under 35 U.S.C. 304, any submissions properly filed and served in accordance with 37 CFR 1.530 and 37 CFR 1.535 will be considered by the examiner when preparing the first Office action.
With respect to consideration of any proposed amendments to the specification, including claims, made by the patent owner, the examiner will be guided by the provisions of 37 CFR 1.530(d)-(j). With respect to consideration of the patent owner’s statement, the examiner will be guided by 37 CFR 1.530(c).
As to consideration of a reply by a third party requester, the examiner will be guided by 37 CFR 1.535. If the requester’s reply to the patent owner’s statement raises issues not previously presented, such issues will be treated by the examiner in the Office action if they are within the scope of reexamination. However, if an issue raised by the third party requester in the reply is not within the scope of reexamination, it should be treated pursuant to 37 CFR 1.552(c).
For handling of new matter, see MPEP § 2270.
2254 Conduct of Ex Parte Reexamination Proceedings [R-07.2015]
35 U.S.C. 305 Conduct of reexamination proceedings.
After the times for filing the statement and reply provided for by section 304 have expired, reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited under the provisions of section 301, or in response to a decision adverse to the patentability of a claim of a patent. No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter. All reexamination proceedings under this section, including any appeal to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office.
37 CFR 1.550 Conduct of ex parte reexamination proceedings.
(a) All ex parte reexamination proceedings, including any appeals to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office. After issuance of the ex parte reexamination order and expiration of the time for submitting any responses, the examination will be conducted in accordance with §§ 1.104 through 1.116 and will result in the issuance of an ex parte reexamination certificate under § 1.570.
(b) The patent owner in an ex parte reexamination proceeding will be given at least thirty days to respond to any Office action. In response to any rejection, such response may include further statements and/or proposed amendments or new claims to place the patent in a condition where all claims, if amended as proposed, would be patentable.
(c) The time for taking any action by a patent owner in an ex parte reexamination proceeding may be extended as provided in this paragraph.
(1) Any request for such an extension must specify the requested period of extension and be accompanied by the petition fee set forth in § 1.17(g).
(2) Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of such a request for extension will not effect the extension. A request for an extension in a third party requested ex parte reexamination will not be granted in the absence of sufficient cause or for more than a reasonable time.
(3) Any request for an extension in a patent owner requested or Director ordered ex parte reexamination for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested or Director ordered ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months from the time period set in the Office action will not effect the extension. The time for taking action in a patent owner requested or Director ordered ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.
(4) The reply or other action must in any event be filed prior to the expiration of the period of extension, but in no situation may a reply or other action be filed later than the maximum time period set by statute.
(5) See § 90.3(c) of this title for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action.
(d) If the patent owner fails to file a timely and appropriate response to any Office action or any written statement of an interview required under § 1.560(b), the prosecution in the ex parte reexamination proceeding will be a terminated
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prosecution, and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.570 in accordance with the last action of the Office.
(e) If a response by the patent owner is not timely filed in the Office, a petition may be filed pursuant to § 1.137 to revive a reexamination prosecution terminated under paragraph (d) of this section if the delay in response was unintentional.
(f) The reexamination requester will be sent copies of Office actions issued during the ex parte reexamination proceeding. After filing of a request for ex parte reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party in the reexamination proceeding in the manner provided by § 1.248. The document must reflect service or the document may be refused consideration by the Office.
(g) The active participation of the ex parte reexamination requester ends with the reply pursuant to § 1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered. Further, no submissions on behalf of any third parties will be acknowledged or considered unless such submissions are:
(1) in accordance with § 1.510 or § 1.535; or
(2) entered in the patent file prior to the date of the order for ex parte reexamination pursuant to § 1.525.
(h) Submissions by third parties, filed after the date of the order for ex parte reexamination pursuant to § 1.525, must meet the requirements of and will be treated in accordance with § 1.501(a).
(i) A petition in an ex parte reexamination proceeding must be accompanied by the fee set forth in § 1.20(c)(6), except for petitions under paragraph (c) of this section to extend the period for response by a patent owner, petitions under paragraph (e) of this section to accept a delayed response by a patent owner, petitions under § 1.78 to accept an unintentionally delayed benefit claim, and petitions under § 1.530(l) for correction of inventorship in a reexamination proceeding.
Once ex parte reexamination is ordered pursuant to 35 U.S.C. 304 and the times for submitting any responses to the order have expired, no further active participation by a third party reexamination requester is allowed, and no third party submissions will be acknowledged or considered unless they are in accordance with 37 CFR 1.510. The reexamination proceedings will be ex parte, even if ordered based on a request filed by a third party, because this was the intention of the legislation. Ex parte proceedings preclude the introduction of arguments and issues by the third party requester which are not within the intent of 35 U.S.C. 305 (“reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133”).
The patent owner may not file papers on behalf of the requester and thereby circumvent the intent of the ex parte reexamination legislation and the rules. The U.S. Court of Appeals for the Federal Circuit held in Emerson Elec. Co. v. Davoil, Inc., 88 F.3d 1051, 39 USPQ2d 1474 (Fed. Cir. 1996) that a federal district court does not have the authority to order a patent owner to file papers prepared by a third party in addition to the patent owner’s own submission in a patent reexamination proceeding. Such papers prepared by the third party and filed by the patent owner will not be entered, and the entire submission will be returned to the patent owner as an inappropriate response. See MPEP § 2266 and § 2267.
The examination will be conducted in accordance with 37 CFR 1.104, 1.105, 1.110-1.113, and 1.116 (35 U.S.C. 132 and 133) and will result in the issuance of a reexamination certificate under 37 CFR 1.570. The proceeding shall be conducted with special dispatch within the Office pursuant to 35 U.S.C. 305, last sentence. A full search will not routinely be made by the examiner. The third party reexamination requester will be sent copies of Office actions and the patent owner must serve responses on the requester. Citations submitted in the patent file prior to issuance of an order for reexamination will be considered by the examiner during the reexamination. Reexamination will proceed even if the copy of the order sent to the patent owner is returned undelivered. The notice under 37 CFR 1.11(c) is constructive notice to the patent owner and lack of response from the patent owner will not delay reexamination. See MPEP § 2230.
2255 Who Reexamines [R-07.2015]
The examination will ordinarily be conducted by the same patent examiner who made the decision on whether the reexamination request should be granted. See MPEP § 2236.
However, if a petition under 37 CFR 1.515(c) is granted after an examiner's determination that found the request did not raise any SNQ, the reexamination
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will generally be conducted by another examiner. See MPEP § 2248.
2256 Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination [R-07.2015]
Typically, the primary source of prior art will be the patents and printed publications cited in the request for ex parte reexamination.
Subject to the discussion provided below in this section, the examiner must also consider patents and printed publications:
(A) cited by another reexamination requester under 37 CFR 1.510 or 37 CFR 1.915;
(B) cited in a patent owner’s statement under 37 CFR 1.530 or a requester’s reply under 37 CFR 1.535 if they comply with 37 CFR 1.98;
(C) cited by the patent owner under a duty of disclosure (37 CFR 1.555) in compliance with 37 CFR 1.98;
(D) discovered by the examiner in searching;
(E) of record in the patent file from earlier examination; and
(F) of record in the patent file from any 37 CFR 1.501 submission prior to date of an order if it complies with 37 CFR 1.98.
Where patents, publications, and other such documents are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given to such information will be normally limited by the degree to which the party filing the information citation has explained the content and relevance of the document. The initials of the examiner placed adjacent to the citations on the form PTO/SB/08A and 08B or its equivalent, without an indication to the contrary in the record, do not signify that the document has been considered by the examiner any further than to the extent noted above.
As to (E) above, it is pointed out that the degree of consideration of information from the patent file and its parent files is dependent on the availability of the information. Thus, for example, as to a reference
other than a U.S. patent and U.S. patent publication that is not scanned into the Image File Wrapper (IFW) what was said about that reference in the patent’s record is the full extent of consideration, unless otherwise indicated, or unless parties appropriately supplied a copy.
As to (B), (C) and (F) above, 37 CFR 1.98(a)(2) requires a legible copy of:
(1) each foreign patent;
(2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
(3) for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion;
(4) all other information or that portion which caused it to be listed.
It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide the application/proceeding number and its status. A submission that is not permitted entry will be returned, expunged, or discarded at the sole discretion of the Office.
The exception to the requirement for reference copies in37 CFR 1.98(d)(1) does not apply to reexamination proceedings since a reexamination proceeding does not receive 35 U.S.C. 120 benefit from the patent.
AFTER THE NOTICE OF INTENT TO ISSUE EX PARTE REEXAMINATION CERTIFICATE (NIRC):
Once the NIRC has been mailed, the reexamination proceeding is forwarded for publication of the reexamination certificate. Thus, when the patent owner provides a submission of patents and printed publications or other information described in 37 CFR 1.98(a) after the NIRC has been mailed, the proceeding has entered the publication process for printing the reexamination certificate. To automatically delay prosecution by pulling the
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proceeding from that process when such a submission has been filed, without more, would be contrary to the Office’s statutory mandate for “special dispatch”, as set forth in 35 U.S.C. 305.
For this reason, the submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier, (B) an unequivocal statement that one or more claims are unpatentable, and (C) an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. This must be provided via a petition under 37 CFR 1.182 (with the petition fee) for entry and consideration of the information submitted after NIRC. These requirements are necessary to provide a basis for interrupting the proceeding after NIRC, in order for the Office to comply with its statutory mandate for “special dispatch”.
These requirements are similar to the requirements to withdraw an application from issue as set forth in 37 CFR 1.313(c)(1). The printing cycle for an application occurs after the payment of the issue fee (there is no issue fee in reexamination), and thus, in order to withdraw an application from issue after payment of the issue fee, the requirements of 37 CFR 1.313(c) must be met. Based on the statutory requirement for “special dispatch,” the requirements for withdrawal of a reexamination proceeding from issue, i.e., its printing cycle, after NIRC are at least as burdensome as those set forth in 37 CFR 1.313(b) and (c). Accordingly, where a submission of patents and printed publications or other information described in 37 CFR 1.98(a) is made after NIRC, the patent owner must provide an unequivocal statement as to why the art submitted makes at least one claim unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. This is in addition to the above-discussed factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier (see item (A) above).
No consideration will be given to a third party requester submission of patents and printed publications, or other information, that is filed in the reexamination proceeding unless it is part of the
request for reexamination or the requester’s reply under 37 CFR 1.535. See 37 CFR 1.540.
2257 Listing of Prior Art [R-07.2015]
The reexamination request must provide a listing of the patents and printed publications (discussed in the request) as provided for in 37 CFR 1.98. See MPEP § 2214. The examiner must list on a form PTO-892, if not already listed on a form PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms), all prior art patents or printed publications which have been cited in the decision on the request, applied in making rejections or cited as being pertinent during the reexamination proceedings. Such prior art patents or printed publications may have come to the examiner’s attention because:
(A) they were of record in the patent file due to a prior art submission under 37 CFR 1.501 which was received prior to the date of the order;
(B) they were of record in the patent file as result of earlier examination proceedings; or
(C) they were discovered by the examiner during a prior art search.
All citations listed on form PTO-892, and all citations not lined-through on any form PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms), will be the list of prior art documents considered in the reexamination proceeding. A notice will be printed on the reexamination certificate to state that the list of cited prior art documents will be available via PAIR by the reexamination control number.
A submission of patents and/or publications is entitled to entry and citation in the reexamination certificate (that will be issued) when it complies with 37 CFR 1.98 and is submitted:
(A) by the patent owner in the statement under 37 CFR 1.530;
(B) by the reexamination requester in the reply under 37 CFR 1.535;
(C) prior to the order of reexamination under 37 CFR 1.501 by any party; and/or
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(D) by the patent owner under the duty of disclosure requirements of 37 CFR 1.555.
2258 Scope of Ex Parte Reexamination [R-07.2015]
37 CFR 1.552 Scope of reexamination in ex parte reexamination proceedings.
(a) Claims in an ex parte reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112.
(b) Claims in an ex parte reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent.
(c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in a reexamination proceeding. If such issues are raised by the patent owner or third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may consider the advisability of filing a reissue application to have such issues considered and resolved.
(d) Any statement of the patent owner and any accompanying information submitted pursuant to § 1.501(a)(2) which is of record in the patent being reexamined (which includes any reexamination files for the patent) may be used after a reexamination proceeding has been ordered to determine the proper meaning of a patent claim when applying patents or printed publications.
37 CFR 1.625 Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.
*****
(d) Any ex parte reexamination ordered under 35 U.S.C. 257 will be conducted in accordance with §§ 1.530 through 1.570, which govern ex parte reexamination, except that:
(1) The patent owner will not have the right to file a statement pursuant to § 1.530, and the order will not set a time period within which to file such a statement;
(2) Reexamination of any claim of the patent may be conducted on the basis of any item of information as set forth in § 1.605, and is not limited to patents and printed publications or to subject matter that has been added or deleted during the reexamination proceeding, notwithstanding § 1.552(a);
(3) Issues in addition to those raised by patents and printed publications, and by subject matter added or deleted during a reexamination proceeding, may be considered and resolved, notwithstanding § 1.552(c); and
(4) Information material to patentability will be defined by § 1.56(b), notwithstanding § 1.555(b).
A reexamination proceeding ordered under 35 U.S.C. 304 provides a complete reexamination of the patent
claims on the basis of prior art patents and printed publications. Double patenting issues may also be considered during reexamination. See subsection I.D. below. Issues relating to 35 U.S.C. 112 are addressed only with respect to new claims or amendatory subject matter in the specification, claims or drawings. Any new or amended claims are examined to ensure that the scope of the original patent claims is not enlarged, i.e., broadened. See 35 U.S.C. 305.
In a reexamination proceeding ordered under 35 U.S.C. 257, however, reexamination is not limited to patents and printed publications. Reexamination ordered under 35 U.S.C. 257 may involve any information which is determined by the Office to raise a substantial new question of patentability in a supplemental examination proceeding. The information may include, for example, not only a patent or a journal article, but also a sales invoice, or a transcript of an audio or video recording. A reexamination proceeding ordered under 35 U.S.C. 257 may involve issues relating to 35 U.S.C. 112 which are not limited to matter that has been added or deleted during reexamination. Issues under 35 U.S.C. 112 in a reexamination ordered under 35 U.S.C. 257 may also involve the original subject matter of the patent under reexamination, including the original specification, claims, and drawings. Reexamination ordered under 35 U.S.C. 257 may involve any ground of patentability, such as, for example, patent eligible subject matter, anticipation, public use or sale, obviousness, written description, enablement, indefiniteness, and double-patenting. See MPEP §§ 2801 and 2809.01, subsection I.
I. PRIOR ART PATENTS OR PRINTED PUBLICATIONS, AND DOUBLE PATENTING
Rejections on prior art in reexamination proceedings ordered under 35 U.S.C. 304 may only be made on the basis of prior art patents or printed publications. The prior art regime under which the application for the patent was examined (the first-inventor-to-file prior art regime, or the first-to-invent prior art regime) will generally be applied in reexamination of the patent. One exception would be where an amended or new claim having an effective filing date for the new claim on or after March 16, 2013, is presented during the reexamination of a patent
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that was subject to the first-to-invent prior art regime, in which case the reexamination would be conducted under the first-inventor-to-file prior art regime. Similarly if a benefit claim to a prior application with a filing date before March 16, 2013 is made during the reexamination , then reexamination would be conducted under the first-to-invent prior art regime even if the application that matured into the patent was examined under the first-inventor-to-file prior art regime when the following conditions are met. Specifically, the written description of the prior application must provide adequate written support under 35 U.S.C. 112 for the following: (1) all of the patent claims; (2) all claims presented at any time during the prosecution of the application that matured into the patent under reexamination; and (3) all claims presented at any time during the prosecution of any application to which the benefit was sought by the application that matured into the patent under reexamination.
With respect to the first-inventor-to-file prior art regime, prior art rejections may be based upon the provisions of 35 U.S.C. 102 as it is in effect on and after March 16, 2013, applicable to prior art patents and printed publications. Thus “A person shall be entitled to a patent unless”:
(1) “the claimed invention was patented” or “described in a printed publication” “before the effective filing date of the claimed invention”; or (2) “the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”
These provisions are subject to the exceptions of 35 U.S.C. 102(b), and effective filing dates are determined pursuant to 35 U.S.C. 102(d). For further information as to the first-inventor-to-file prior art regime, see MPEP Chapter 700.
With respect to the first-to-invent prior art regime, prior art rejections may be based upon the following
portions of prior 35 U.S.C. 102 (in effect prior to March 16, 2013):
“(a) . . . patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or” “(b) the invention was patented or described in a printed publication in this or a foreign country . . . more than one year prior to the date of the application for patent in the United States, or”
***** “(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or”
(e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or”
***** “(g)... (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.”
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All citations to 35 U.S.C. discussing the first-to-invent prior art regime are to the relevant statute in effect on March 15, 2013.
Typically, substantial new questions of patentability and rejections in a reexamination proceeding are based on “prior art” patents and publications. However, there are exceptions, even for reexaminations ordered under 35 U.S.C. 304. For example, in In re Lonardo, 119 F.3d 960, 43
USPQ2d 1262 (Fed. Cir. 1997), the Federal Circuit upheld a nonstatutory double patenting rejection in which the patent upon which the rejection was based and the patent under reexamination shared the same effective filing date. See also the discussion as to double patenting in subsection I.D. below. Analogously, for reexamination proceedings examined under the first-to-invent prior art regime, a 35 U.S.C. 102(g)(2) rejection may be asserted in a reexamination proceeding based on the examples illustrated below:
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A. Previously Considered Prior Art Patents or Printed Publications
After reexamination is ordered based on a proper substantial new question of patentability, the propriety of making a ground of rejection based on prior art previously considered by the Office (in an earlier examination of the patent) is governed by the guidance set forth in MPEP § 2258.01. Note also In re Hiniker Co., 150 F.3d 1362, 1367, 47 USPQ2d 1523,1527 (Fed. Cir. 1998)(court held the reexamination proceeding was supported by a substantial new question of patentability where the rejection before the court was based on a combination of art that had been before the examiner during the original prosecution, and art newly cited during the reexamination proceeding. The court further stated that any error in the Commissioner’s authority to institute a reexamination was “washed clean” during the reexamination procedure.)
B. Matters Other Than Patents or Printed Publications in Reexaminations Ordered under 35 U.S.C. 304
Rejections will not be based on matters other than patents or printed publications, such as public use or sale, inventorship, 35 U.S.C. 101, conduct issues, etc. In this regard, see In re Lanham, 1 USPQ2d 1877 (Comm’r Pat. 1986), and Stewart Systems v. Comm’r of Patents and Trademarks, 1 USPQ2d 1879 (E.D. Va. 1986). A rejection on prior public use or sale, insufficiency of disclosure (with respect to original subject matter), etc., cannot be made even if it relies on a prior art patent or printed publication. Prior art patents or printed publications must be applied under an appropriate portion of 35 U.S.C. 102 and/or 103 when making a rejection.
C. Intervening Patents or Printed Publications
Rejections may be made in reexamination proceedings based on intervening patents or printed publications where the patent claims under reexamination are entitled only to the filing date of the patent and are not supported by an earlier foreign or United States patent application whose filing date is claimed. For example, under 35 U.S.C. 120, the effective date of these claims would be the filing date of the application which resulted in the patent. Intervening patents or printed publications are
available as prior art under In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958), and In re van Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972). See MPEP § 211. See also In re NTP, Inc., 654 F.3d 1268, 99 USPQ2d 1500 (Fed. Cir. 2011) (holding that the Office is not prohibited from performing a 35 U.S.C. 112 written description priority analysis during reexamination).
D. Double Patenting
Double patenting is normally proper for consideration in reexamination under 35 U.S.C. 302 . See In re Lonardo, 119 F.3d 960, 43 USPQ2d 1262 (Fed. Cir. 1997). In Lonardo, the Federal Circuit reviewed and interpreted the language of 35 U.S.C. 303 and stated that:
Since the statute in other places refers to prior art in relation to reexamination, see id., it seems apparent that Congress intended that the phrases ‘patents and publications’ and ‘other patents or printed publications’ in section 303(a) not be limited to prior art patents or printed publications… . Finally, it is reasonable to conclude that Congress intended to include double patenting over a prior patent as a basis for reexamination because maintenance of a patent that creates double patenting is as much of an imposition on the public as maintenance of patent that is unpatentable over prior art. Thus, we conclude that the PTO was authorized during reexamination to consider the question of double patenting based upon the `762 patent.
In re Lonardo, 119 F.3d at 966, 43 USPQ2d at 1266. Accordingly, the issue of double patenting, over prior art patents or non-prior art patents, is appropriate for consideration in reexamination under 35 U.S.C. 302, both as a basis for ordering reexamination under 35 U.S.C. 304 and during subsequent examination on the merits. The issue of double patenting is to be considered by the examiner when making the decision on the request for reexamination. The examiner should determine whether the issue of double patenting raises a substantial new question of patentability. The issue of double patenting is also to be considered during the examination stage of reexamination proceeding. In the examination stage, the examiner should
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determine whether a rejection based on double patenting is appropriate.
Reexaminations ordered under 35 U.S.C. 257 may also involve double patenting grounds. See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (“Double patenting rejections are analogous to rejections under 35 U.S.C. 103 and depend on the presence of a prior patent as the basis for the rejection”).
See MPEP § 804 to § 804.03 for discussion on double patenting.
E. Affidavits or Declarations or Other Written Evidence
Affidavits or declarations or other written evidence which explain the contents or pertinent dates of prior art patents or printed publications in more detail may be considered in reexamination.
In reexaminations ordered under 35 U.S.C. 304, any rejection must be based upon the prior art patents or printed publications as explained by the affidavits or declarations or other written evidence. The rejection in such circumstances cannot be based on the affidavits or declarations or other written evidence as such, but must be based on the prior art patents or printed publications.
F. Admissions; Use of Admissions in Reexaminations Filed under 35 U.S.C. 302 and Ordered under 35 U.S.C. 304
1. Initial Reexamination Determination and Order
The consideration under 35 U.S.C. 303 of a request for reexamination is limited to prior art patents and printed publications. See Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988). Thus an admission, per se , may not be the basis for establishing a substantial new question of patentability. However, an admission by the patent owner of record in the file or in a court record may be utilized in combination with a patent or printed publication. While such an admission may be utilized in combination with a patent or printed publication, a written statement of the patent owner submitted pursuant to 37 CFR 1.501 and accompanying 37
CFR 1.510(b)(2) explanation (of how each patent owner claim scope statement is being used to determine the proper meaning of patent claim) cannot be considered in making the initial reexamination determination and issuance of the order granting or denying reexamination. See 35 U.S.C. 301(d).
2. Reexamination Ordered under 35 U.S.C. 304, Examination on the Merits
After reexamination has been ordered under 35 U.S.C. 304, the examination on the merits is dictated by 35 U.S.C. 305, see Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988).
35 U.S.C. 301(a)(2) permits a submission under 35 U.S.C. 301 to contain written “statements of the patent owner filed in a proceeding before a federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.” This provision of the statute has been implemented via 37 CFR 1.501(a)(2). If any statement of the patent owner submitted pursuant to 37 CFR 1.501(a)(2) is relied upon in the request, requester must explain how that statement is being used to determine the proper meaning of a patent claim in connection with prior art applied to that claim. 37 CFR 1.510(b)(2) requires that the “detailed explanation” of applying prior art provided in the request for ex parte reexamination must explain how each patent owner claim scope statement is being used to determine the proper meaning of each patent claim in connection with the prior art applied to that claim. The explanation will be considered by the Office during the examination stage, if reexamination is ordered, to determine the proper meaning of a patent claim in connection with prior art applied to that claim.
Further, admissions by the patent owner in the record as to matters affecting patentability may be utilized during a reexamination proceeding under 35 U.S.C. 302 in combination with a patent or printed publication with respect to the determination of anticipation and obviousness; see 37 CFR 1.104(c)(3).
37 CFR 1.104(c)(3) provides that admissions by the patent owners as to matters affecting patentability
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may be utilized in a reexamination proceeding. The Supreme Court when discussing 35 U.S.C. 103 in Graham v. John Deere Co., 383 U.S. 6, 148 USPQ 459 (1966) stated, inter alia, “the scope and content of the prior art are to be determined.” Accordingly, a proper evaluation of the scope and content of the prior art in determining obviousness would require a utilization of any “admission” by the patent owner which can be used to interpret or modify a patent or printed publication applied in a reexamination proceeding. This is true whether such admission results from a patent or printed publication or from some other source. An admission as to what is in the prior art is simply that, an admission, and requires no independent proof. It is an acknowledged, declared, conceded, or recognized fact or truth, Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988). While the scope and content of the admission may sometimes have to be determined, this can be done from the record and from the paper file or IFW file history in the same manner as with patents and printed publications. To ignore an admission by the patent owner, from any source, and not use the admission as part of the prior art in conjunction with patents and printed publications in reexamination would make it impossible for the examiner to properly determine the scope and content of the prior art as required by Graham, supra.
The Board upheld the use of an admission in a reexamination proceeding under 35 U.S.C. 302 in Ex parte Seiko Koko Kabushiki Kaisha, 225 USPQ 1260 (Bd. Pat. App. & Inter. 1984), Ex parte Kimbell, 226 USPQ 688 (Bd. Pat. App. & Inter. 1985) and in Ex parte McGaughey, 6 USPQ2d 1334 (Bd. Pat. App. & Inter. 1988). In Seiko, the Board relied on In re Nomiya, 509 F.2d 566, 184 USPQ 607 (CCPA 1975) holding an admission of prior art in the specification of the parent undergoing reexamination is considered prior art which may be considered as evidence of obviousness under 35 U.S.C. 103. In Kimbell, the Board referred to the patent specification and noted the admission by appellant that an explosion-proof housing was well known at the time of the invention. In Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Int. 1988), the Board held that any unequivocal admission relating to prior art is a fact which is part of the scope and content of the prior
art and that prior art admissions established in the record are to be considered in reexamination. An admission from any source can be used with respect to interpreting or modifying a prior art patent or printed publication, in a reexamination proceeding. The Board expressly overruled the prior Board decision in Ex parte Horton, 226 USPQ 697 (Bd. Pat. App. & Inter. 1985) which held that admissions which are used as a basis for a rejection in reexamination must relate to patents and printed publications.
The admission can reside in the patent file (made of record during the prosecution of the patent application) or may be presented during the pendency of the reexamination proceeding or in litigation. Admissions by the patent owner as to any matter affecting patentability may be utilized to determine the scope and content of the prior art in conjunction with patents and printed publications in a prior art rejection, whether such admissions result from patents or printed publications or from some other source. An admission relating to any prior art (e.g., on sale, public use) established in the record or in court may be used by the examiner in combination with patents or printed publications in a reexamination proceeding under 35 U.S.C. 302. Any admission submitted by the patent owner is proper. A third party, however, may not submit admissions of the patent owner made outside the record of the file or the court record. Such a submission would be outside the scope of reexamination.
Reexaminations ordered under 35 U.S.C. 257 may involve an admission by the patent owner, and the admission need not be combined with patents or printed publications.
G. Claim Interpretation and Treatment
Original patent claims will be examined only on the basis of prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103 in reexaminations ordered under 35 U.S.C. 304. See MPEP § 2217. Where there is related litigation and a federal court has made a judicial interpretation of a disputed claim term, the examiner in treating the disputed claim term should set forth his or her reasoning by, for example, acknowledging
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the judicial interpretation and assessing whether the judicial interpretation is consistent with the broadest reasonable construction of the term. Moreover, if adopting a different claim construction than the judicial interpretation, the examiner should supply reasoning to support the different interpretation.
35 U.S.C. 301(a)(2) permits a submission under 35 U.S.C. 301 to contain written “statements of the patent owner filed in a proceeding before a federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.” This provision of the statute has been implemented via 37 CFR 1.501(a)(2). Pursuant to 37 CFR 1.552, any written statement of the patent owner and any accompanying information submitted pursuant to 37 CFR 1.501(a)(2) which is of record in the patent being reexamined (which includes any reexamination files for the patent) should be considered (after a reexamination proceeding has been ordered, but not at the order stage) to determine the proper meaning of a patent claim when applying patents or printed publications.
During reexamination ordered under 35 U.S.C. 304, and also during reexamination ordered under 35 U.S.C. 257, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims (In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984)). In a reexamination proceeding involving claims of an expired patent, claim construction pursuant to the principle set forth by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (words of a claim “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention) should be applied since the expired claim are not subject to amendment. See Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986). The statutory presumption of validity, 35 U.S.C. 282, has no application in reexamination ( In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985)).
II. COMPLIANCE WITH 35 U.S.C. 112
In reexaminations ordered under 35 U.S.C. 304, where new claims are presented or where any part
of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112.Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim. Thus, a term in a patent claim which the examiner might deem to be too broad cannot be considered as too broad in a new or amended claim unless the amendatory matter in the new or amended claim creates the issue. If a limitation that appears in an existing patent claim also appears in a claim newly presented in a reexamination proceeding, that limitation cannot be examined as to 35 U.S.C. 112. If a dependent claim is rewritten as an independent claim in a reexamination proceeding, that independent claim cannot be examined as to 35 U.S.C. 112, unless the nature of the rewriting raises a new question (e.g., by newly providing a lack of claim antecedent for a term in the claim). However, a specific determination regarding whether the claimed invention (including original patent claims) is entitled to a particular priority or benefit date is permitted. See In re NTP, Inc., 654 F.3d 1268, 99 USPQ2d 1500 (Fed. Cir. 2011)(holding that the USPTO is not prohibited from performing a 35 U.S.C. 112 written description priority analysis during reexamination).
In contrast, reexaminations ordered under 35 U.S.C. 257 may involve any issues under 35 U.S.C. 112. Such issues are not limited to matter that has been added or deleted during reexamination. Issues under 35 U.S.C. 112 may also include the original subject matter of the patent under reexamination, including the original specification, claims, and drawings.
A. 35 U.S.C. 112 Issues To Be Considered in Reexaminations Ordered under 35 U.S.C. 304
Compliance of new or amended claims with the enablement and/or description requirements of the first paragraph of 35 U.S.C. 112 should be considered as to the amendatory and new text in the
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reexamination proceeding. Likewise, the examiner should determine whether the new or amended claims comply with the second paragraph of 35 U.S.C. 112. MPEP § 2163 - § 2173.05(v) provide extensive guidance as to these matters.
B. New Matter
35 U.S.C. 305 provides for examination under 35 U.S.C. 132, which prohibits the introduction of new matter into the disclosure. Thus, the question of new matter should be considered in a reexamination proceeding. See MPEP § 2163.06 as to the relationship of the written description requirement of the first paragraph of 35 U.S.C. 112 and the new matter prohibition under 35 U.S.C. 132. Where the new matter is added to the claims or affects claim limitations, the claims should be rejected under 35 U.S.C. 112, first paragraph, for failing to meet the written description requirement.
C. Amendment of the Specification
Where the specification is amended in a reexamination proceeding, the examiner should make certain that the requirements of 35 U.S.C. 112 are met. An amendment to the specification can redefine the scope of the terms in a claim such that the claim is no longer clear or is not supported by the specification. Thus, an amendment to the specification can result in the failure of the claims to comply with 35 U.S.C. 112, even where the claims are not amended in any respect.
III. CLAIMS IN PROCEEDING MUST NOT ENLARGE SCOPE OF THE CLAIMS OF THE PATENT
Where new or amended claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding should be examined under 35 U.S.C. 305, to determine whether they enlarge the scope of the original claims. 35 U.S.C. 305 states that “no proposed amended or new claim enlarging the scope of the claims of the patent will be permitted in a reexamination proceeding....”
A. Criteria for Enlargement of the Scope of the Claims
A claim presented in a reexamination proceeding “enlarges the scope” of the claims of the patent being reexamined where the claim is broader than each and every claim of the patent. See MPEP § 1412.03 for guidance as to when the presented claim is considered to be a broadening claim as compared with the claims of the patent, i.e., what is broadening and what is not. If a claim is considered to be a broadening claim for purposes of reissue, it is likewise considered to be a broadening claim in reexamination.
B. Amendment of the Specification
Where the specification is amended in a reexamination proceeding, the examiner should make certain that the amendment to the specification does not enlarge the scope of the claims of the patent. An amendment to the specification can enlarge the scope of the claims by redefining the scope of the terms in a claim, even where the claims are not amended in any respect.
C. Rejection of Claims Where There Is Enlargement
Any claim in a reexamination proceeding which enlarges the scope of the claims of the patent should be rejected under 35 U.S.C. 305. Form paragraph 22.11 is to be employed in making the rejection.
¶ 22.11 Rejection, 35 U.S.C. 305, Claim Enlarges Scope of Patent - Ex Parte Reexamination
Claim [1] rejected under 35 U.S.C. 305 as enlarging the scope of the claim(s) of the patent being reexamined. In 35 U.S.C. 305, it is stated that “[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding....” A claim presented in a reexamination “enlarges the scope” of the patent claim(s) where the claim is broader than any claim of the patent. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect, even though it may be narrower in other respects.
[2]
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Examiner Note:
The claim limitations which are considered to broaden the scope should be identified and explained in bracket 2. See MPEP § 2258.
IV. OTHER MATTERS
A. Patent Under Reexamination Subject of a Prior Office or Court Decision
Where some of the patent claims in a patent being reexamined have been the subject of a prior Office or court decision, see MPEP § 2242. Where other proceedings involving the patent are copending with the reexamination proceeding, see MPEP § 2282 - § 2286.
Patent claims not subject to reexamination because of their prior adjudication by a court should be identified. See MPEP § 2242. For handling a claim under reexamination which is dependent on a claim not subject to reexamination, see MPEP § 2260.01. All added claims will be examined.
For reexaminations ordered under 35 U.S.C. 304, where grounds are set forth in a prior Office decision or federal court decision, which are not based on patents or printed publications and which clearly raise questions as to the validity of the claims, the examiner’s Office action should clearly state that the claims have not been examined as to those grounds not based on patents or printed publications that were stated in the prior decision. See 37 CFR 1.552(c). See In re Knight, 217 USPQ 294 (Comm’r Pat. 1982).
B. “Live” Claims That Are Reexamined During Reexamination
The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the “live” claims (i.e., existing claims not held invalid by a final decision, after all appeals) for which reexamination has been requested. If the requester was interested in having all of the claims reexamined, requester had the opportunity to include them in its request for reexamination. However, if the requester chose not to do so, those claim(s) for which reexamination was not requested under 35
U.S.C. 302 will generally not be reexamined by the Office. It is further noted that 35 U.S.C. 302 requires that “[t]he request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.” If requester fails to apply the art to certain claims, requester is not statutorily entitled to reexamination of such claims. If a request fails to set forth the pertinency and manner of applying the cited art to any claim for which reexamination is requested as required by 37 CFR 1.510(b), that claim will generally not be reexamined.
The decision to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302 lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case. If the Office chooses to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302, it is permitted to do so. In addition, the Office may always initiate a reexamination on its own initiative of the non-requested claim (35 U.S.C. 303(a)).
Similarly, if prior art patents or printed publications are discovered during reexamination which raise a substantial new question of patentability as to one or more patent claims for which reexamination has not been ordered under 35 U.S.C. 304 (while reexamination has been ordered under 35 U.S.C. 304 for other claims in the patent), then such claims may be added, within the sole discretion of the Office, during the examination phase of the proceeding.
C. Restriction Not Proper in Reexamination
Restriction requirements cannot be made in a reexamination proceeding since no statutory basis exists for restriction in a reexamination proceeding. Note also that the addition of claims to a “separate and distinct” invention to the patent would be considered as being an enlargement of the scope of the patent claims. See Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989). See MPEP § 1412.03.
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D. Ancillary Matters
There are matters ancillary to reexamination which are necessary and incident to patentability which will be considered. Amendments may be made to the specification to correct, for example, an inadvertent failure to claim foreign priority or the continuing status of the patent relative to a parent application if such correction is necessary to overcome a reference applied against a claim of the patent.
E. Claiming Foreign Priority and Domestic Benefit in Reexamination
See MPEP § 2258.02 for guidance on claiming foreign priority or domestic benefit in a reexamination proceeding.
F. Correction of Inventorship
Correction of inventorship may also be made during reexamination. See 37 CFR 1.324 and MPEP § 1481 for petition for correction of inventorship in a patent. If a petition filed under 37 CFR 1.324 is granted, a Certificate of Correction indicating the change of inventorship will not be issued, because the reexamination certificate that will ultimately issue will contain the appropriate change-of-inventorship information (i.e., the Certificate of Correction is in effect merged with the reexamination certificate).
G. Affidavits in Reexamination
Affidavits under 37 CFR 1.131(a) and 1.132 may be utilized in a reexamination proceeding. Note, however, that an affidavit under 37 CFR 1.131(a) may not be used to “swear behind” a reference patent if the reference patent is claiming the “same invention” as the patent undergoing reexamination. In such a situation, the patent owner may, if appropriate, seek to raise this issue via an affidavit under 37 CFR 1.131(c) (see MPEP § 718) or in an interference or derivation proceeding via an appropriate reissue application if such a reissue application may be filed (see MPEP § 1449.02).
H. Issues Not Considered in Reexamination Ordered under 35 U.S.C. 304
If questions other than those indicated above (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under pre-AIA 35 U.S.C. 102(c) for a patent that was examined under the first-to-invent prior art regime, etc.) are raised by the third party requester or the patent owner during a reexamination proceeding, the existence of such questions will be noted by the examiner in an Office action. Such questions could arise in a reexamination requester’s 37 CFR 1.510 request or in a 37 CFR 1.535 reply by the requester. Note form paragraph 22.03.
¶ 22.03 Issue Not Within Scope of Ex Parte Reexamination
An issue has been raised in the present reexamination proceeding that is not within the scope of an ex parte reexamination ordered under 35 U.S.C. 304. [1]. This issue will not be considered in the present proceeding. 37 CFR 1.552(c).
Examiner Note:
1. In bracket 1, identify the issues.
2. This paragraph may be used either when the patent owner or third party requester raises issues such as public use or on sale, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.
If questions of patentability based on public use or on sale, conduct issues, abandonment under pre-AIA35 U.S.C. 102(c) for reexamination proceedings under 35 U.S.C. 302 examined under the first-to-invent prior art regime, etc. are independently discovered by the examiner during a reexamination proceeding but were not raised by the third party requester or the patent owner, the existence of such questions will not be noted by the examiner in an Office action, because 37 CFR 1.552(c) is only directed to such questions “raised by the patent owner or the third party requester.”
I. Request for Reexamination under 35 U.S.C. 302 Filed on Patent After It Has Been Reissued
Where a request for reexamination under 35 U.S.C. 302 is filed on a patent after it has been reissued, reexamination will be denied because the patent on which the request for reexamination is based has been surrendered. Should reexamination of the reissued patent be desired, a new request for
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reexamination including, and based on, the specification and claims of the reissue patent must be filed.
Any amendment submitted by the patent owner to accompany the initial reexamination request under 35 U.S.C. 302, or filed after reexamination has been ordered under 35 U.S.C. 304 (or, for that matter, under 35 U.S.C. 257), should treat the changes made by the granted reissue patent as the text of the patent, and all bracketing and underlining made with respect to the patent as changed by the reissue.
Where the reissue patent issues after the filing of a request for reexamination, see MPEP § 2285.
J. No Preissuance Submissions
Because a reexamination proceeding is a post-issuance proceeding, a preissuance submission under 35 U.S.C. 122(e) is not permitted to be filed in a reexamination proceeding; 35 U.S.C. 122(e) is limited to preissuance submissions by third parties in patent applications. A preissuance submission filed in a reexamination proceeding is not to be entered, and will be expunged if it is inadvertently entered.
2258.01 Use of Previously Cited/Considered Art in Rejections [R-07.2015]
In the examining stage of a reexamination proceeding, the examiner will consider whether the claims are subject to rejection based on art. Before making such a rejection, the examiner should check the patent’s file history to ascertain whether the art that will provide the basis for the rejection was previously cited/considered in an earlier concluded Office examination of the patent (e.g., in the examination of the application for the patent). For the sake of expediency, such art is referred to as “old art” throughout, since the term “old art” was coined by the Federal Circuit in its decision of In re Hiniker, 150 F.3d 1362, 1365-66, 47 USPQ2d 1523, 1526 (Fed. Cir. 1998).
If the rejection to be made by the examiner will be based on a combination of “old art” and art newly cited during the reexamination proceeding, the rejection is proper, and should be made. See In re
Hiniker, 150 F.3d at 1367, 47 USPQ2d at 1527. (Court held the reexamination proceeding was supported by a substantial new question of patentability where the rejection before the court was based on a combination of art that had been before the examiner during the original prosecution, and art newly cited during the reexamination proceeding.)
If the “old art” provides the sole basis for a rejection, the following applies:
(A) Reexamination was ordered on or after November 2, 2002:
For a reexamination that was ordered on or after November 2, 2002 (the date of enactment of Public Law 107-273; see Section 13105, of the Patent and Trademark Office Authorization Act of 2002), reliance solely on old art (as the basis for a rejection) does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art. Determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis. For example, a SNQ may be based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier concluded examination(s), in view of a material new argument or interpretation presented in the request.
When an Office action is being considered, and it is newly determined that a SNQ based solely on old art is raised by a request in a reexamination that was ordered on or after November 2, 2002, form paragraph 22.01.01 should be included in the Office action. Form paragraph 22.01.01 should be included in any Office action in which a SNQ based solely on the old art is first set forth (i.e., it was not set forth in the order granting reexamination or a prior Office action in the proceeding).
¶ 22.01.01 Criteria for Applying Old Art as Sole Basis for Reexamination
The above [1] is based solely on patents and/or printed publications already cited/considered in an earlier concluded examination or review of the patent being reexamined, or has been raised to or by the Office in a pending reexamination or supplemental examination of the patent. On November 2, 2002, Public Law 107-273 was enacted. Title III, Subtitle A, Section 13105, part (a) of the Act revised the reexamination statute by
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adding the following new last sentence to 35 U.S.C. 303(a) and 312(a):
"The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office."
For any reexamination ordered on or after November 2, 2002, the effective date of the statutory revision, reliance on previously cited/considered art, i.e., “old art,” does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art. Rather, determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis.
In the present instance, there exists a SNQ based solely on [2]. A discussion of the specifics now follows:
[3]
Examiner Note:
1. In bracket 1, insert “substantial new question of patentability” if the present form paragraph is used in an order granting reexamination (or a TC or CRU Director’s decision on petition of the denial of reexamination). If this form paragraph is used in an Office action, insert “ground of rejection.”
2. In bracket 2, insert the old art that is being applied as the sole basis of the SNQ. For example, “the patent to J. Doe” or “the patent to J. Doe when taken with the Jones publication” or “the combination of the patent to J. Doe and the Smith publication” could be inserted. Where more than one SNQ is presented based solely on old art, the examiner would insert all such bases for SNQ.
3. In bracket 3, for each basis identified in bracket 2, explain how and why that fact situation applies in the proceeding being acted on. The explanation could be for example that the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier examination(s), in view of a material new argument or interpretation presented in the request. See Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351 (Bd. Pat. App. & Inter. 1984).
4. This form paragraph is only used the first time the “already cited/considered” art is applied, and is not repeated for the same art in subsequent Office actions.
(B) Reexamination was ordered prior to November 2, 2002:
For a reexamination that was ordered prior to November 2, 2002, old art cannot (subject to the exceptions set forth below) be used as the sole basis for a rejection.
In determining the presence or absence of “a substantial new question of patentability” on which to base a rejection, the use of “old art” in a reexamination that was ordered prior to November 2, 2002, is controlled by In re Portola Packaging Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). (Note that Portola Packaging was decided based on the reexamination statute as it existed prior to the amendment by Public Law 107-273, Section 13105 of the Patent and Trademark Office Authorization Act of 2002). The amendment by Public Law 107-273, Section 13105, overruled the Portola Packaging decision for any reexamination
that was ordered on or after November 2, 2002. See In re Bass, 314 F.3d 575, 576-77, 65 USPQ2d 1156, 1157 (Fed. Cir. 2002) where the court stated in the sole footnote:
The following guidelines are provided for reviewing ongoing reexaminations ordered prior to November 2, 2002, for compliance with the Portola Packaging decision.
On November 2, 2002, 35 U.S.C. 303(a) was amended by the passage of Pub. L. No. 107-273, 13105, (116 Stat.) 1758, 1900, to add “[t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office,” thereby overruling Portola Packaging. The following guidelines are provided for reviewing ongoing reexaminations ordered prior to November 2, 2002, for compliance with the Portola Packaging decision.
(1) General principles governing compliance with Portola Packaging for ongoing reexaminations ordered prior to November 2, 2002.
If prior art was previously relied upon to reject a claim in a concluded prior related Office proceeding, the Office will not conduct reexamination based only on such prior art. “Prior related Office proceedings” include the application which matured into the patent that is being reexamined, any reissue application for the patent, and any reexamination proceeding for the patent.
If prior art was not relied upon to reject a claim, but was cited in the record of a concluded prior related
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Office proceeding, and its relevance to the patentability of any claim was actually discussed on the record, the Office will not conduct reexamination based only on such prior art. The relevance of the prior art to patentability may have been discussed by the applicant, patentee, examiner, or any third party. However, 37 CFR 1.2 requires that all Office business be transacted in writing. Thus, the Office cannot presume that a prior art reference was previously relied upon or discussed in a prior Office proceeding if there is no basis in the written record to so conclude other than the examiner’s initials or a check mark on a form PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms) submitted with an information disclosure statement. Thus, any specific discussion of prior art must appear on the record of a prior related Office proceeding. Generalized statements such as the prior art is “cited to show the state of the art,” “cited to show the background of the invention,” or “cited of interest” would not preclude reexamination.
The Office may conduct reexamination based on prior art that was cited but whose relevance to patentability of the claims was not discussed in any prior related Office proceeding.
(2) Procedures for determining whether the prosecution of an ongoing reexamination must be terminated in compliance with Portola Packaging.
Office personnel must adhere to the following procedures when determining whether the prosecution of an ongoing reexamination should be terminated in compliance with the Federal Circuit’s decision in Portola Packaging.
(a) Ascertain that the order granting reexamination was mailed prior to November 2, 2002. If the order granting reexamination was not mailed prior to November 2, 2002, see above “Reexamination was ordered on or after November 2, 2002” for guidance.
(b) Prior to making any rejection in the ongoing reexamination, determine for any prior related Office proceeding what prior art was (i) relied upon to reject any claim, or (ii) cited and discussed.
(c) Base any and all rejections of the patent claims under reexamination at least in part on prior art that was, in any prior related Office
proceeding, neither (i) relied upon to reject any claim, nor (ii) cited and its relevance to patentability of any claim discussed.
(d) Withdraw any rejections based only on prior art that was, in any prior related Office proceeding, previously either (i) relied upon to reject any claim, or (ii) cited and its relevance to patentability of any claim discussed.
(e) Terminate the prosecution of any reexamination in which the only remaining rejections are entirely based on prior art that was, in any prior related Office proceeding, previously (i) relied upon to reject any claim, and/or (ii) cited and its relevance to patentability of a claim discussed.
The Director of the USPTO may conduct a search for new art to determine whether a substantial new question of patentability exists prior to terminating the prosecution of any ongoing reexamination proceeding. See 35 U.S.C. 303. See also 35 U.S.C. 305 (indicating that “reexamination will be conducted according to the procedures established for initial examination,” thereby suggesting that the Director of the USPTO may conduct a search during an ongoing reexamination proceeding).
(3) Application of Portola Packaging to unusual fact patterns.
The Office recognizes that each case must be decided on its particular facts and that cases with unusual fact patterns will occur. In such a case, the reexamination should be brought to the attention of the Central Reexamination Unit (CRU) or Technology Center (TC) Director who will then determine the appropriate action to be taken.
Unusual fact patterns may appear in cases in which prior art was relied upon to reject any claim or cited and discussed with respect to the patentability of a claim in a prior related Office proceeding, but other evidence clearly shows that the examiner did not appreciate the issues raised in the reexamination request or the ongoing reexamination with respect to that art. Such other evidence may appear in the reexamination request, in the nature of the prior art, in the prosecution history of the prior examination, or in an admission by the patent owner, applicant, or inventor. See 37 CFR 1.104(c)(3).
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The following examples are intended to be illustrative and not inclusive.
For example, if a textbook was cited during prosecution of the application which matured into the patent, the record of that examination may show that only select information from the textbook was discussed with respect to the patentability of the claims. The file history of the prior Office proceeding should indicate which portion of the textbook was previously considered. See 37 CFR 1.98(a)(2)(ii) (an information disclosure statement must include a copy of each “publication or that portion which caused it to be listed”). If a subsequent reexamination request relied upon other information in the textbook that actually teaches what is required by the claims, it may be appropriate to rely on this other information in the textbook to order and/or conduct reexamination. However, a reexamination request that merely provides a new interpretation of a reference already previously relied upon or actually discussed by the Office does not create a substantial new question of patentability.
Another example involves the situation where an examiner discussed a reference in a prior Office proceeding, but did not either reject a claim based upon the reference or maintain the rejection based on the mistaken belief that the reference did not qualify as prior art. For example, the examiner may not have believed that the reference qualified as prior art because: (i) the reference was undated or was believed to have a bad date; (ii) the applicant submitted a declaration believed to be sufficient to antedate the reference under 37 CFR 1.131(a); or (iii) the examiner attributed an incorrect filing date to the claimed invention. If the reexamination request were to explain how and why the reference actually does qualify as prior art, it may be appropriate to rely on the reference to order and/or conduct reexamination. For example, the request could: (i) verify the date of the reference; (ii) undermine the sufficiency of the declaration filed under 37 CFR 1.131(a) (by a showing of an inaccuracy/mistake of fact in the declaration); or (iii) explain the correct filing date accorded a claim where the issue was not previously addressed in an earlier examination of the patent. See e.g., Heinl v. Godici, 143 F. Supp.2d 593 (E.D.Va. 2001) (reexamination on the basis of art previously presented without adequate proof of
date may proceed if prior art status is now established).
Another example involves foreign language prior art references. If a foreign language prior art reference was cited and discussed in any prior Office proceeding but the foreign language prior art reference was never completely and accurately translated into English during the original prosecution, Portola Packaging may not prohibit reexamination over a complete and accurate translation of that foreign language prior art reference. Specifically, if a reexamination request were to explain why a more complete and accurate translation of that same foreign language prior art reference actually teaches what is required by the patent claims, it may be appropriate to rely on the foreign language prior art reference to order and/or conduct reexamination.
Another example of an unusual fact pattern involves cumulative references. To the extent that a cumulative reference is repetitive of a prior art reference that was previously applied or discussed, Portola Packaging may prohibit reexamination of
the patent claims based only on the repetitive reference. For purposes of reexamination, a cumulative reference that is repetitive is one that substantially reiterates verbatim the teachings of a reference that was either previously relied upon or discussed in a prior Office proceeding even though the title or the citation of the reference may be different. However, it is expected that a repetitive reference which cannot be considered by the Office during reexamination will be a rare occurrence since most references teach additional information or present information in a different way than other references, even though the references might address the same general subject matter.
(4) Notices regarding compliance with Portola Packaging.
(a) If the prosecution of an ongoing reexamination is terminated under (2)(e) above in order to comply with the Federal Circuit’s decision in Portola Packaging, the Notice of Intent to Issue Ex Parte Reexamination Certificate should state:
“The prosecution of this reexamination is terminated based on In re
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Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). No patentability determination has been made in this reexamination proceeding.”
(b) If a rejection in the reexamination has previously been issued and that rejection is withdrawn under (2)(d) above in order to comply with the Federal Circuit’s decision in Portola Packaging, the Office action withdrawing such rejection should state:
“The rejection(s) based upon _______is/are withdrawn in view of In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). No patentability determination of the claims of the patent in view of such prior art has been made in this reexamination proceeding.”
2258.02 Claiming Foreign Priority and Domestic Benefit in Reexamination [R-07.2015]
The patent owner may correct the failure to adequately claim foreign priority or domestic benefit in a patent to be reexamined during reexamination in accordance with the guidelines set forth in this section. However, a renewal of previously made claims for foreign priority under 35 U.S.C. 119 or domestic benefit under 35 U.S.C. 119(e) or 120, is not necessary during reexamination. Note that a design application cannot claim the benefit of a provisional application. See MPEP § 211.02, subsection III; see also MPEP § 1504.20 for benefit information specific to design applications.
I. FOREIGN PRIORITY
A. Claim Made Before Patent Granted; Certified Copy Needed to Perfect Priority
The patent owner may obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) where a claim for priority had been made before the patent was granted, and it is only necessary for submission of the certified copy in the reexamination proceeding to perfect priority.
However, where a petition to accept a delayed certified copy under 37 CFR 1.53(f)(3) is required (such as, for example, when the application which matured in the patent to be reexamined was filed on or after March 16, 2013), a grantable petition, the appropriate fee, and any required attachments must be filed in the file of the application that matured into the patent to be reexamined. See MPEP § 215.02 for further guidance. In addition, a letter must be filed as a separate paper in the reexamination proceeding, notifying the Office that a petition to accept a delayed certified copy under 37 CFR 1.53(f)(3), the appropriate fee, and any required attachments was or is being concurrently filed in the file of the patent to be reexamined. When a decision on the petition to accept a delayed certified copy under 37 CFR 1.53(f)(3) is rendered in the file of the application that matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding.
B. Submitting for the First Time Both the Claim for Foreign Priority and the Certified Copy
The patent owner may obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) where it is necessary to submit for the first time both the claim for priority and the certified copy. However, where it is necessary to submit for the first time both the claim for priority and the certified copy, and the patent to be reexamined matured from a utility or plant application filed on or after November 29, 2000, a grantable petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) must be filed. The petition, and any required attachments, must be filed in the file of the application which matured into the patent to be reexamined, and a letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application (identifying the application number) which matured into the patent to be reexamined, according to the following guidance:
1. Application Which Became Patent to be Reexamined Filed On or After September 16, 2012
If the patent to be reexamined matured from an application filed on or after September 16, 2012, the
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patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:
(a) A grantable petition for an unintentionally delayed priority claim under 37 CFR 1.55(e);
(b) An application data sheet (37 CFR 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
(c) A certified copy of the foreign application, unless previously submitted, or an exception in 37 CFR 1.55(h), (i) or (j) applies;
(d) The petition fee as set forth in 37 CFR 1.17(m); and
(e) A statement that the entire delay between the date the priority claim was due under 37 CFR 1.55 and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(f) In the Reexamination Proceeding:
A letter, as a separate paper, notifying the Office that items (a)-(e), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.
When a decision on the petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.55(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.
2. Application Which Became Patent to be Reexamined Filed Before September 16, 2012
If the patent to be reexamined matured from an application filed before September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:
(a) A grantable petition for an unintentionally delayed priority claim under 37 CFR 1.55(e);
(b) Unless previously submitted, either (i) an application data sheet (37 CFR 1.76(b)(6)) or (ii) an oath or declaration under 37 CFR 1.63; where the application data sheet, oath or declaration, whichever is filed, identifies the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (see 37 CFR 1.55(n));
(c) A certified copy of the foreign application, unless previously submitted, or an exception in 37 CFR 1.55(h), (i) or (j) applies;
(d) The petition fee as set forth in 37 CFR 1.17(m); and
(e) A statement that the entire delay between the date the priority claim was due under 37 CFR 1.55 and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(f) In the Reexamination Proceeding:
A letter, as a separate paper, notifying the Office that items (a)-(e), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.
When a decision on the petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet, oath, or declaration, which was determined by the Office in its decision to meet the requirements of 37 CFR 1.55(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.
For further guidance on the requirements for a grantable petition for an intentionally delayed priority claim under 37 CFR 1.55(e), see MPEP § 214.02.
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C. Restoring Right of Foreign PriorityWhere the Filing of the Subsequent Application Was Delayed
The patent owner may also restore the right of foreign priority under 35 U.S.C. 119(a)-(d) where the filing of the subsequent application was delayed, in accordance with 37 CFR 1.55(c). A grantable petition to restore the right of foreign priority and any required attachments, including an application data sheet, must be filed in the application specified in 37 CFR 1.55(c), not in the reexamination proceeding. A letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application specified in 37 CFR 1.55(c) (identifying the application number).
When a decision on the petition to restore the right of foreign priority under 37 CFR 1.55(c) is rendered in the file of the application specified in 37 CFR 1.55(c), a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.55(c) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.
For further guidance on the requirements for a grantable petition to restore the right of foreign priority under 37 CFR 1.55(c), see MPEP § 213.03, subsection III.
II. DOMESTIC BENEFIT
A. Claiming Benefit under 35 U.S.C. 120
The patent owner may also correct the failure to adequately claim (in the application for the patent to be reexamined) benefit under 35 U.S.C. 120 of an earlier filed copending U.S. patent application. For a patent to be reexamined which matured from a utility or plant application filed on or after November 29, 2000, a grantable petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e) must be filed. The petition, and any required attachments (with the exception of an amendment to the first sentence(s) of the specification if the
application which matured into the patent to be reexamined is a nonprovisional application filed before September 16, 2012 – see subsection II.A.2. below), must be filed in the file of the application which matured into the patent to be reexamined, and a letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application (identifying the application number) which matured into the patent to be reexamined, according to the following guidance:
1. Application Which Became Patent to be Reexamined Filed On or After September 16, 2012
If the patent to be reexamined matured from an application filed on or after September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:
(a) A grantable petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e);
(b) An application data sheet including the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application (37 CFR 1.76(b)(5)), unless previously submitted;
(c) The petition fee as set forth in 37 CFR 1.17(m); and
(d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(e) In the Reexamination Proceeding:
A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.
When a decision on the petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data
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sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.78(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.
2. Application Which Became Patent to be Reexamined Filed Before September 16, 2012
If the patent to be reexamined matured from an application filed before September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:
(a) A grantable petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e);
(b) If the patent owner does not choose to file an amendment as set forth in (e) below in the reexamination proceeding, an application data sheet including the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application (37 CFR 1.76(b)(5)), unless previously submitted;
(c) The petition fee as set forth in 37 CFR 1.17(m); and
(d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(e) In the Reexamination Proceeding:
If the patent owner does not choose to file an application data sheet as set forth in (b) above in the application which matured into the patent to be reexamined, an amendment inserting the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted; and
(f) In the Reexamination Proceeding: A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.
When a decision on the petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e) is rendered in the file of the application which matured into the patent to be reexamined, a
copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of any application data sheet, where applicable, which was determined by the Office in its decision to meet the requirements of 37 CFR 1.78(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.
Note, if the application which matured into the patent to be reexamined is a nonprovisional application filed before September 16, 2012, the patent owner must choose to either (i) file, in the application which matured into the patent to be reexamined, an application data sheet including the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application (37 CFR 1.76(b)(5)), unless previously submitted; or (ii) file, in the reexamination proceeding, an amendment inserting the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted. See (b) and (e) above.
For further guidance on the requirements for a petition for an intentionally delayed benefit claim under 37 CFR 1.78(e), see MPEP § 211.04.
B. Claiming Benefit under 35 U.S.C. 119(e)
The patent owner may correct, in a patent to be reexamined which matured from a utility or plant application, the failure to adequately claim benefit under 35 U.S.C. 119(e) of an earlier filed provisional application. A design application cannot claim the benefit of a provisional application. See MPEP § 211.02; see also MPEP § 1504.20 for benefit information specific to design applications.
For a patent to be reexamined which matured from a utility or plant application filed before November 29, 2000, the patent owner can correct via reexamination the failure to adequately claim benefit under 35 U.S.C. 119(e) of an earlier filed provisional application. However, for a patent to be reexamined which matured from a utility or plant application filed on or after November 29, 2000, the patent owner must file a grantable petition for an unintentionally delayed claim under 35 U.S.C.
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119(e), pursuant to 37 CFR 1.78(c). The petition, and any required attachments (with the exception of an amendment to the first sentence(s) of the specification if the application which matured into the patent to be reexamined is a nonprovisional utility or plant application filed before September 16, 2012 – see subsection II.B.2. below), must be filed in the file of the application which matured into the patent to be reexamined, and a letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application (identifying the application number) which matured into the patent to be reexamined, according to the following guidance:
1. Application Which Became Patent to be Reexamined Filed On or After September 16, 2012
If the patent to be reexamined matured from a utility or plant application filed on or after September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:
(a) A grantable petition for an unintentionally delayed claim under 35 U.S.C. 119(e), pursuant to 37 CFR 1.78(c);
(b) An application data sheet including the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application; unless previously submitted;
(c) The petition fee as set forth in 37 CFR 1.17(m); and
(d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(e) In the Reexamination Proceeding:
A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.
When a decision on the petition for an unintentionally delayed claim under 35 U.S.C. 119(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 35 U.S.C. 119(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.
2. Application Which Became Patent to be Reexamined Filed Before September 16, 2012
If the patent to be reexamined matured from a utility or plant application filed before September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:
(a) A grantable petition for an unintentionally delayed claim under 35 U.S.C. 119(e), pursuant to 37 CFR 1.78(c);
(b) If the patent owner does not choose to file an amendment as set forth in (e) below in the reexamination proceeding, an application data sheet including the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application; unless previously submitted;
(c) The petition fee as set forth in 37 CFR 1.17(m); and
(d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(e) In the Reexamination Proceeding:
If the patent owner does not choose to file an application data sheet as set forth in (b) above in the application which matured into the patent to be reexamined, an amendment inserting the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted; and
(f) In the Reexamination Proceeding:
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A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.
When a decision on the petition for an unintentionally delayed claim under 35 U.S.C. 119(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of any application data sheet, where applicable, which was determined by the Office in its decision to meet the requirements of 35 U.S.C. 119(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.
Note, if the application which matured into the patent to be reexamined is a nonprovisional utility or plant application filed before September 16, 2012, the patent owner must choose to either (i) file, in the application which matured into the patent to be reexamined, an application data sheet including the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed application (37 CFR 1.76(b)(5)), unless previously submitted; or (ii) file, in the reexamination proceeding, an amendment inserting the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted. See (b) and (e) above.
For further guidance on petitions for an intentionally delayed benefit claim under 35 U.S.C. 119(e), pursuant to 37 CFR 1.78(c), see MPEP § 211.04.
C. Restoring the Benefit of a Provisional Application Where the Filing of the Application Which Became the Patent to be Reexamined Was Delayed
The patent owner may also restore the benefit of a provisional application where the filing of the application which matured into the patent to be reexamined (i.e., the subsequent nonprovisional application) was unintentionally delayed, in accordance with 37 CFR 1.78(b). The patent owner must file a grantable petition to restore the benefit of a provisional application under 37 CFR 1.78(b),
and any required attachments, including an application data sheet meeting the requirements set forth in 37 CFR 1.78(b), in the file of the application which matured into the patent to be reexamined (i.e., the subsequent application as specified in 37 CFR 1.78(b)). A letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application (identifying the application number) which matured into the patent to be reexamined. Note that a design application cannot claim the benefit of a provisional application.
When a decision on the petition to restore the benefit of a provisional application is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.78(b) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.
For further guidance on the requirements for a grantable petition to restore the benefit of a provisional application under 37 CFR 1.78(b), see MPEP § 211.01(a), subsection II.
2259 Res Judicata and Collateral Estoppel in Reexamination Proceedings [R-07.2015]
MPEP § 2242 and § 2286 relate to the Office policy controlling the determination on a request for reexamination and the subsequent examination phase of the reexamination where there has been a federal court decision on the merits as to the patent for which reexamination is requested.
Claims finally held invalid by a federal court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding. A rejection on the grounds of res judicata will not be appropriate in reexamination. One of the essential elements of claim preclusion ( res judicata) is the involvement of the same parties, or parties in privity with the original parties. The doctrine of res judicata based on a court holding in
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an infringement proceeding is not applicable in reexamination proceedings, because the Office was not a party to the litigation.
In In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007), the court held that issue preclusion (collateral estoppel) could not be applied against the Office based on a district court holding in an infringement proceeding, because the Office was not a party to the earlier infringement proceeding and did not have “a full and fair opportunity” to litigate the issue; See also In re Construction Equipment Company, 665 F.3d 1254, 100 USPQ2d 1922 (Fed. Cir. 2011), in which the majority did not adopt the dissent view that reexamination was barred by claim preclusion ( res judicata) or issue preclusion (collateral estoppel).
2260 Office Actions [R-07.2015]
As is true in the examination of applications, 37 CFR 1.104 (Nature of examination) applies to the examination of reexamination proceedings. It is intended that the examiner’s first ex parte action on the merits be the primary action to establish the issues which exist between the examiner and the patent owner insofar as the patent is concerned. At the time the first action is issued in reexaminations ordered under 35 U.S.C. 304, the patent owner has already been permitted to file a statement and an amendment pursuant to 37 CFR 1.530; and the reexamination requester, if the requester is not the patent owner, has been permitted to reply thereto pursuant to 37 CFR 1.535. In any case, thus, at this point, the issues should be sufficiently focused to enable the examiner to make a definitive first ex parte action on the merits which should clearly establish the issues which exist between the examiner and the patent owner insofar as the patent is concerned. In view of the fact that the examiner’s first action will clearly establish the issues, the first action should include a statement cautioning the patent owner that a complete response should be made to the action since the next action is expected to be a final action. The first action should further caution the patent owner that the requirements of 37 CFR 1.116(b) will be strictly enforced after final action and that any amendment after a final action must include “a showing of good and sufficient reasons why the amendment is necessary and was
not earlier presented” in order to be considered. The language of form paragraph 22.04 is appropriate for inclusion in the first Office action:
¶ 22.04 Papers To Be Submitted in Response to Action - Ex Parte Reexamination
In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidence of patentability, such documents must be submitted in response to this Office action. Submissions after the next Office action, which is intended to be a final action, will be governed by the requirements of 37 CFR 1.116 after final rejection and 37 CFR 41.33 after appeal, which will be strictly enforced.
2260.01 Dependent Claims [R-07.2015]
If an unamended base patent claim (i.e., a claim appearing in the reexamination as it appears in the patent) has been rejected, canceled, or is no longer subject to reexamination due to adjudication in court, any claim undergoing reexamination which is directly or indirectly dependent thereon should be confirmed or allowed if the dependent claim is otherwise allowable. The dependent claim should not be objected to or rejected merely because it
depends on a rejected or canceled patent claim or a claim no longer subject to reexamination. No requirement should be made for rewriting the dependent claim in independent form.As the original patent claim numbers are not changed in a reexamination proceeding, the content of the canceled base claim would remain in the printed patent and would be available to be read as a part of the confirmed or allowed dependent claim.
If a new base claim (a base claim other than a base claim appearing in the patent) has been canceled in a reexamination proceeding, a claim which depends thereon should be rejected as indefinite. If a new base claim or an amended patent claim is rejected, a claim dependent thereon should be objected to if it is otherwise patentable and a requirement made for rewriting the dependent claim in independent form.
2261 Special Status for Action [R-07.2015]
35 U.S.C. 305 Conduct of reexamination proceedings.
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All reexamination proceedings under this section, including any appeal to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office.
In view of the requirement for “special dispatch,” reexamination proceedings will be “special” throughout their pendency in the Office.
Any cases involved in litigation, whether they are reexamination proceedings or reissue applications, will have priority over all other cases. Reexamination proceedings not involved in litigation will have priority over all other cases except reexaminations or reissues involved in litigation.
2262 Form and Content of Office Action [R-07.2015]
The examiner’s first Office action will be a statement of the examiner’s position and should be so complete that the second Office action can properly be made a final action. See MPEP § 2271.
The first Office action must be sufficiently detailed that the pertinency and manner of applying the cited prior art to the claims in each rejection is clearly set forth therein. Where the request for reexamination includes material such as a claim chart to explain a proposed rejection in order to establish the existence of a substantial new question of patentability, the examiner may bodily incorporate the claim chart (or other material) within the Office action. The examiner must, however, carefully review the claim chart (or other material) to ensure that any items incorporated in a statement of the rejection clearly and completely address the patentability of the claims. For actions subsequent to the first Office action, the examiner must be careful to additionally address all patent owner responses to previous actions. If the examiner concludes in any Office action that one or more of the claims are patentable over the cited patents or printed publications, the examiner should indicate why the claim(s) is clearly patentable in a manner similar to that used to indicate reasons for allowance (MPEP § 1302.14). If the record is clear why the claim(s) is/are clearly patentable, the examiner may refer to the particular portions of the record which clearly establish the patentability of the claim(s). The first action should also respond to the substance of each argument
raised by the patent owner and requester pursuant to 37 CFR 1.510, 1.530, and 1.535. If arguments are presented which are inappropriate in reexamination, they should be treated in accordance with 37 CFR 1.552(c).
If any statement of the patent owner submitted pursuant to 37 CFR 1.501(a)(2) is relied upon in the detailed explanation, requester must have explained how that statement is being used to determine the proper meaning of a patent claim in connection with prior art applied to that claim. That explanation will be considered by the Office, when drafting the Office action, in determining the scope of the claims of the patent which are subject to reexamination.
It is especially important that the examiner’s action in reexamination be thorough and complete in view of the finality of a reexamination proceeding and the patent owner’s inability to file a continuation proceeding.
Normally, the title will not need to be changed during reexamination. If a change of the title is necessary, patent owner should be notified of the need to provide an amendment changing the title as early as possible in the prosecution as a part of an Office Action. If all of the claims are found to be patentable and a Notice of Intent to Issue Ex Parte Reexamination Certificate has been or is to be mailed, a change to the title of the invention by the examiner may only be done by a formal Examiner’s Amendment. Changing the title and merely initialing the change is NOT permitted in reexamination.
Current procedure permits the examiner, in the exercise of his or her professional judgment to indicate that a discussion with the patent owner’s representative may result in agreement whereby the reexamination proceeding may be placed in condition for issuing a Notice of Intent to Issue a Reexamination Certificate (NIRC) and that the examiner will telephone the patent owner’s representative within about two weeks. Under this practice the patent owner’s representative can be adequately prepared to conduct such a discussion. Any resulting amendment may be made either by the patent owner’s attorney or agent, or by the examiner in an examiner’s amendment. It should be recognized that when extensive amendments are
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necessary, it would be preferable if the amendments were filed by the patent owner’s attorney or agent of record since this will provide the file wrapper with a better record because the amendments would include the patent owner’s arguments for patentability as required by 37 CFR 1.111.
I. PROCESS OF PREPARING THE ACTION
Upon receipt of a patent owner response to the action by the CRU, or upon the expiration of the time to submit the response, the examiner will be notified. The examiner will prepare for and set up a panel review conference as per MPEP § 2271.01, to discuss the issuance of the Office action. The examiner may prepare the Office action after the conference, or may prepare the Office action prior to the conference and revise it as needed after the conference. See MPEP § 2271.01 for more information on policies concerning conferences.
If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims, the Office action shall be issued and signed by the examiner, with the two or more other conferees initialing the action (as “conferee”) to indicate their presence in the conference.
II. SAMPLE OFFICE ACTION
A sample of a first Office action in a reexamination proceeding is set forth below.
Form PTOL-465. Ex Parte Reexamination Communication
Transmittal Form
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2263 Time for Response [R-07.2015] A shortened statutory period of two months will generally be set for filing a response to an Office
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action in an ex parte reexamination. An extension of time may be requested under 37 CFR 1.550(c). See MPEP § 2265.
2264 Mailing of Office Action [R-07.2015]
Ex parte reexamination forms are structured so that the identifying information for the reexamination file and the correspondence address for the patent owner, which is the official correspondence address of record in the file of the patent requested to be reexamined, can be printed on the forms. Usually, the official correspondence address of the patent owner, which is of record in the file of the patent, is the mailing address of the patent owner's legal representative. If there is no official correspondence address of record in the patent file, the Office may treat the mailing address of the patent owner as the correspondence address. Where there are multiple patent owners, the Office may treat the mailing address of the first named patent owner of record as the correspondence address of the patent owner. The Office will not engage in double correspondence with more than one patent owner. See 37 CFR 1.33(a). Copies of Office actions may be obtained by access Public PAIR at the Office's website www.uspto.gov.
All actions in a third party requester ex parte reexamination will have a copy mailed to the third party requester. A transmittal form PTOL-465 must be used in providing the third party requester with a copy of each Office action. If there are more than one third party requester for a single request, and if a third party requester has not designated the mailing address of a registered patent practitioner as the correspondence address for the requester, the Office may treat the mailing address of the first named third party requester as the correspondence address for the third party requester.
A completed transmittal form PTOL-465 will be provided as needed for any third party requester, and the appropriate address will be entered on it. The number of transmittal forms provides a ready reference for the number of copies of each Office action to be made, and the transmittal form permits
use of the window envelopes in mailing the copies of the action to parties other than the patent owner.
2265 Extension of Time [R-07.2015]
37 CFR 1.550 Conduct of ex parte reexamination proceedings.
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(c) The time for taking any action by a patent owner in an ex parte reexamination proceeding may be extended as provided in this paragraph.
(1) Any request for such an extension must specify the requested period of extension and be accompanied by the petition fee set forth in § 1.17(g).
(2) Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of such a request for extension will not effect the extension. A request for an extension in a third party requested ex parte reexamination will not be granted in the absence of sufficient cause or for more than a reasonable time.
(3) Any request for an extension in a patent owner requested or Director ordered ex parte reexamination for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested or Director ordered ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months from the time period set in the Office action will not effect the extension. The time for taking action in a patent owner requested or Director ordered ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.
(4) The reply or other action must in any event be filed prior to the expiration of the period of extension, but in no situation may a reply or other action be filed later than the maximum time period set by statute.
(5) See § 90.3(c) of this title for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action.
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I. EXTENSIONS UNDER 37 CFR 1.136 ARE NOT PERMITTED IN EX PARTE REEXAMINATION PROCEEDINGS
The provisions of 37 CFR 1.136(a) and (b) are NOT applicable to ex parte reexamination proceedings under any circumstances. Public Law 97-247 amended 35 U.S.C. 41 to authorize the Director to provide for extensions of time to take action in an
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“application.”An ex parte reexamination proceeding does not involve an “application.” 37 CFR 1.136 authorizes extensions of the time period only in an application in which an applicant must respond or take action. There is neither an “application,” nor an “applicant” involved in a reexamination proceeding.
An extension of time in an ex parte reexamination proceeding is requested pursuant to 37 CFR 1.550(c) which provides that any request for such an extension must specify the requested period of extension and be accompanied by the fee set forth in 37 CFR 1.17(g).
Form paragraph 22.04.01 may be used to notify the parties in a reexamination proceeding the extension of time practice in reexamination.
¶ 22.04.01 Extension of Time in Reexamination
Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings “will be conducted with special dispatch” ( 37 CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).
II. FEE FOR AN EXTENSION OF TIME IN EX PARTE REEXAMINATION PROCEEDINGS
The fee set forth in 37 CFR 1.17(g) is the required fee for filing a request for an extension of time in a reexamination proceeding. Unlike extension of time practice under 37 CFR 1.136, the period of extension is not determined by the amount of the fee paid. The fee is for filing the request. Under 37 CFR 1.550(c), each request for an extension must specify the requested period of extension and must be accompanied by the fee set forth in 37 CFR 1.17(g).
III. GENERAL GUIDANCE ON EXTENSIONS OF TIME IN EX PARTE REEXAMINATION PROCEEDINGS
All requests by the patent owner for extensions of time to respond to any Office action in an ex parte reexamination proceeding, including the submission of a patent owner statement under 37 CFR 1.530, must be filed under 37 CFR 1.550(c), in writing, and will be decided by the Director or SPRS of the
Central Reexamination Unit (CRU) or the Director of a Technology Center (TC) conducting the reexamination proceeding, with the exception of an automatic two-month extension of time to take further action which will be granted upon filing a first timely response to a final Office action (see subsection VII below; see also MPEP § 2272). Requests for an extension of time must be filed on or before the day on which action by the patent owner is due, and will be granted only for sufficient cause (see subsection VI below), except for requests for a “no cause” extension in patent owner requested or Director ordered reexaminations as provided in 37 CFR 1.550(c) (see subsection V.A. below). Patent owner requested reexaminations include reexaminations ordered under 35 U.S.C. 257. In no case, other than the “after final” practice and the “no cause” extension in patent owner requested or Director ordered reexaminations, will a mere filing of a request for extension of time automatically effect any extension.
The time extended is added to the last calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Saturday, Sunday, or federal holiday.
A request for an extension of time under 37 CFR 1.550(c) must be submitted as a separate paper which will be forwarded to the CRU SPRS or TC Director for action. The certificate of mailing and the certificate of transmission procedures (37 CFR 1.8) and the Priority Mail Express® mailing procedure (37 CFR 1.10) may be used to file a request for extension of time.
A request for an extension of time in an ex parte reexamination proceeding will be considered only after the decision to grant or deny reexamination is mailed. Any request filed before that decision will be denied. A request for an extension of the time period to file a petition from the denial of a request for reexamination can only be entertained by filing a petition under 37 CFR 1.183 with the appropriate fee to waive the time provisions of 37 CFR 1.515(c).
Ex parte prosecution will generally be conducted by initially setting a two-month shortened period for response. See MPEP § 2263. In any ex parte reexamination ordered under 35 U.S.C. 304 (i.e.,
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patent owner requested, Director ordered, or third party requested), the patent owner also will be given a two-month statutory period after the order for reexamination to file a statement. See 37 CFR 1.530(b). However, in ex parte reexaminations ordered under 35 U.S.C. 257, the statute does not permit the patent owner to file such a statement. See MPEP §§ 2818.01 and 2823.
The time period for filing a third party requester reply under 37 CFR 1.535 to the patent owner’s statement (i.e., two (2) months from the date of service of the statement on the third party requester) cannot be extended under any circumstances. No extensions will be permitted to the time for filing a reply under 37 CFR 1.535 by the requester because the two-month period for filing the reply is a statutory period. See 35 U.S.C. 304. A statutory period for response cannot be waived. See MPEP § 2251.
IV. THIRD PARTY REQUESTED EX PARTE REEXAMINATIONS
The extension of time practice under 37 CFR 1.550(c) for patent owner responses in an ex parte reexamination proceeding which has been requested by a third party, i.e., a third party requested ex parte reexamination, remains unchanged under the rules and practices adopted in view of the Patent Law Treaty (PLT). A third party requested ex parte reexamination is initiated by a party other than the patent owner or the Office. Thus, it is an “inter partes proceeding” under PLT Rule 12(5)(a)(vi). For this reason, the minimum reply period provisions of the PLT do not apply to third party requested ex parte reexaminations.
The patent owner must file a written request specifying the requested period for extension (e.g., one month), and must file the request, the required fee, and the response within the specified period for extension. A request for an extension, which must be accompanied by the required fee, may be filed with or without the response.
A. Requirements for a Showing of Sufficient Cause and for a Reasonable Time
Any request for an extension of time for a response by the patent owner in a third party requested ex parte reexamination must include a showing of sufficient cause, and the requested extension must be for a reasonable time. See subsection VI below.
“No cause” extensions of time for up to two months for filing a response (see subsection V.A. below), or for filing an appeal brief (see also subsection IV.C. below) are not available, because the extension of time provisions of the PLT do not apply to third party requested reexaminations. The mere filing of a written request for an extension of time and the required fee in a third party requested reexamination will not result in an extension of time; i.e., will not effect the extension.
B. Time for Filing
37 CFR 1.550(c) continues to provide that any request for an extension in a third party requested ex parte reexamination must be filed on or before
the day on which action by the patent owner is due. Because the extension of time practice for patent owner responses in third party requested reexaminations remains unchanged, “the day on which action by the patent owner is due” continues to be no later than the day before the date of expiration of the time period for response set in the Office action. For example, if the Office action sets a one-month period for response, any request for an extension of time must be filed no later than one month from the mail date of the Office action.
C. Extension of Time for Filing a Notice of Appeal, an Appeal Brief, or a Reply Brief
Extensions of time for filing a notice of appeal to the Patent Trial and Appeal Board (PTAB), an appeal brief, or a reply brief, are governed by 37 CFR 1.550(c).
A notice of appeal is governed by 37 CFR 1.550(c) in the same manner as a response.
For the purposes of requesting an extension of time for filing an appeal brief or a reply brief, the “the
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day on which action by the patent owner is due” set forth in 37 CFR 1.550(c) is the last day of the time period permitted to file the brief. For example, 37 CFR 41.35(a) requires that an appeal brief must be filed within two months from the date of the appeal. See MPEP § 1205. 37 CFR 41.41(a) governs the time for filing a reply brief. See MPEP § 1208. See also MPEP § 2274, subsection III.
The request for an extension of time to file a notice of appeal, an appeal brief, or a reply brief must include a showing of sufficient cause, and the extension must be for a reasonable time. See subsection VI below. The request must be filed as a separate paper.
See MPEP § 1216 for specific guidance on the time for filing the notice and reasons of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action. See also MPEP § 2279.
V. PATENT OWNER REQUESTED AND DIRECTOR ORDERED EX PARTE REEXAMINATIONS
The extension of time practice in ex parte reexaminations which have been requested by the patent owner (patent owner requested reexaminations), and in ex parte reexaminations initiated by the Director pursuant to 35 U.S.C. 302 (see MPEP § 2239) (Director ordered reexaminations), has been revised as a result of the implementation of the Patent Law Treaty (PLT). See Changes to Implement the Patent Law Treaty, 78
FR 62368 (October 21, 2013)(final rule).
Because a supplemental examination of a patent can only be requested by a patent owner (see 37 CFR 1.601), any ex parte reexamination ordered under 35 U.S.C. 257 as a result of a supplemental examination is considered to be a “patent owner requested” ex parte reexamination for the purposes of 37 CFR 1.550(c).
For specific guidance on extension of time practice in ex parte reexaminations which have been requested by a third party (third party requested reexaminations), see subsection IV above.
A. “No Cause” Extensions of Time for Up to Two Months from Response Period Set in Office Action
Effective December 18, 2013, 37 CFR 1.550(c) was amended to omit the requirement, in patent owner requested or Director ordered ex parte reexamination proceedings, for a showing of sufficient cause in a request for an extension of time for up to two months from the time period set in the Office action, i.e., a “no cause” extension.
As in extension of time practice under 37 CFR 1.136 for applications, a patent owner is not required to provide a reason why the extension is requested (i.e., the “cause” of the need for the extension) in a request for an extension of time for up to two months from the time period for response set in the Office action. However, unlike extension of time practice under 37 CFR 1.136 for applications, the mere filing of the fee for the extension of time is insufficient. The patent owner must timely file, in addition to the response to the Office action: (i) a written request for an extension of time which specifies the requested period of extension, i.e., for up to two months from the response period set in the Office action; and (ii) the fee set forth in 37 CFR 1.17(g) . The written request must be filed as a separate paper. The written request for the extension and the fee may be filed with or without the response. However, the request for the extension, the required fee, and the response must all be timely filed.
The patent owner must, in its written request, specify the requested period for extension (e.g., one month or two months), and must file the request and the required fee within the specified period for extension. See subsection V.C below. The Office may then grant an extension for the time specified, up to a period of two months.
B. Extensions of Time for More than Two Months from Response Period Set in Office Action
A request for an extension for more than two months from the time period for response set in the Office action must include a showing of sufficient cause, and the extension must be for a reasonable time. The timely filing of a written request for an extension for more than two months from the time period for set in the Office action and the required fee, alone,
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will not result in an extension of time; i.e., will not effect the extension. See subsection VI below.
C. Time for Filing
1. “No Cause” Extension of Time
37 CFR 1.550(c) provides that any request in a patent owner requested or Director ordered ex parte reexamination for an extension of time for up to two months from the time period set in the Office action, i.e., a “no cause” extension, must be filed no later than two months from the expiration of the time period set in the Office action. The patent owner must specify the requested period of extension, not to exceed two months from the time period set in the Office action. The patent owner must file the request and the required fee within the specified period for extension.
If, for example, the Office action sets a two-month period for response, and if the patent owner requests a two-month extension, the patent owner is permitted to file the request for such an extension up to the last day of the fourth month from the mail date of the Office action. However, if the Office action sets a two-month period for response, and if the patent owner requests only a one-month extension, the patent owner must file the request for the extension by the last day of the third month from the mail date of the Office action.
2. Extensions of Time for More than Two Months
37 CFR 1.550(c) provides that any request in a patent owner requested or Director ordered ex parte reexamination for an extension of time for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due.
Patent owners are cautioned that a request for an extension for more than two months from the time period set in the Office Action will only be granted in extraordinary circumstances. See subsection VI below.
If the patent owner wishes to request an extension for more than two months, and if the patent owner has timely filed one or more requests for an
extension of time, the total of which does not exceed two months from the time period set in the Office action, i.e., “no cause” extensions, then “the day on which action by the patent owner is due” is the expiration of the total of the period(s) of extension specified in the request(s) for the “no cause” extension, not to exceed two months. Thus, if the patent owner wishes to request an extension for more than two months, the patent owner must file, no later than two months from the expiration of the time period set in the Office action: 1) one or more written requests specifying a period of extension, the total of which does not exceed two months from the time period set in the Office action, i.e., “no cause” extensions, and the required fee for each request; and 2) an additional written request specifying a period of extension, which is more than two months from the time period set in the Office action, and an additional required fee. The request for an extension for more than two months must also include a showing of sufficient cause, and must be for a reasonable time. See subsection VI below. A request for an extension for more than two months may be filed in the same paper as a request for a “no cause” extension for up to two months, or each request may be filed separately. Any request for an extension of time, however, must be filed separately from any other paper, such as a response or an appeal brief.
For example, if the Office action sets a two-month time period for response, any request for an extension of time for two months must be filed no later than four months from the mail date of the Office action, and any request for an extension of time for more than two months must also be filed no later than four months from the mail date of the Office action. However, if the Office action only sets a one-month time period for response (for example, in situations where a lack of response does not result in a loss of rights), any request for an extension of time for two months must be filed no later than three months from the mail date of the Office action, and any request for an extension of time for more than two months must also be filed no later than three months from the mail date of the Office action.
3. Specific Examples
Example 1
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The patent owner, in a patent owner requested reexamination, wishes to file a written request specifying a two-month extension, i.e., a “no cause” extension. The Office action sets a two-month period for response.
The patent owner must file the written request accompanied by the required fee, and the required response, within four months of the mail date of the Office action.
Example 2
The patent owner, in a patent owner requested reexamination, wishes to file a written request specifying only a one-month extension, i.e., a “no cause” extension. The Office action sets a two-month period for response.
The patent owner must file the written request accompanied by the required fee, and the required response, within three months of the mail date of the Office action.
Example 3
The patent owner, in a patent owner requested reexamination, wishes to file a written request specifying only a one-month extension, i.e., a “no cause” extension. The Office action sets a two-month period for response. The patent owner timely files, within three months from the mail date of the Office action, the request for the one-month extension and the required fee, but fails to file the response.
The patent owner may, in order to timely file the response, file another request for a one-month “no-cause” extension, another required fee, and the response within four months from the mail date of the Office action.
Example 4
The patent owner, in a patent owner requested reexamination, wishes to file a written request specifying only a one-month extension, i.e., a “no cause” extension. The Office action sets a two-month period for response. The patent owner files a request for only a one-month extension and the required fee (with or without the response) after three months from the mail date of the Office action.
The request will be dismissed as untimely even if it is filed within four months from the mail date of the Office action. In such a case, a subsequent written request for an extension of two months from the original time period set in the Office action, accompanied by the required fee, may be granted if it is filed within four months from the mail date of the Office action.
Example 5
The patent owner, in a patent owner requested reexamination, wishes to file a request for an extension for three months, i.e., more than two months from the time period set in the Office action. (Such a request will only be granted in extraordinary
circumstances. See subsection VI below.) The Office action sets a two-month time period for response.
The patent owner may file, up to the last day of the fourth month from the mail date of the Office action: 1) a first request for a two-month “no cause” extension and the required fee; and 2) a second request specifying an additional one-month extension, which is more than two months from the time period set in the Office action, a showing of sufficient cause, and a second required fee. If the second request is granted (which would only occur in extraordinary circumstances – see subsection VI. below), the required reply must be filed on or before the last day of the fifth month. If the second request is not granted, a reply filed after the last day of the fourth month would be untimely and would not be entered.
Alternatively, the patent owner may file, up to the last day of the third month from the mail date of the Office action: 1) a request for a one-month “no cause” extension and the required fee; and 2) a second request specifying an additional two-month extension, which is more than two months from the time period set in the Office action, a showing of sufficient cause, and a second required fee. If the second request is granted (which would only occur in extraordinary circumstances – see subsection VI below), the required reply must be filed on or before the last day of the fifth month. If the second request is not granted, a reply filed after the last day of the third month would be untimely and would not be entered.
D. Extension of Time for Filing a Notice of Appeal, an Appeal Brief, or a Reply Brief
Extensions of time for filing a notice of appeal to the Board, an appeal brief, or a reply brief, are governed by 37 CFR 1.550(c). The request must be filed as a separate paper.
A notice of appeal is governed by 37 CFR 1.550(c) in the same manner as a response.
For the purposes of requesting an extension of time for filing an appeal brief or a reply brief, the “time set in the Office action” set forth in 37 CFR 1.550(c) is the time permitted to file the brief. The “day on which action by the patent owner is due” set forth in 37 CFR 1.550(c) is the last day of the time period permitted to file the brief. For example, 37 CFR 41.37(a) requires that an appeal brief must be filed within two months from the date of the appeal. See MPEP § 1205. 37 CFR 41.41(a) governs the time for filing a reply brief. See MPEP § 1208. See also MPEP § 2274, subsection III.
In patent owner requested or Director ordered reexamination proceedings, the patent owner may
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request an extension of time for filing an appeal brief or a reply brief for up to two months from the time permitted to file the brief, without providing a showing of sufficient cause, i.e., a “no cause” extension. See subsection V.A above. For example, since the time permitted to file an appeal brief is two months from the date of the appeal, any request for an extension of time for two months must be filed no later than four months from the date of the appeal. See subsection V.C. above.
The patent owner must, in its written request, specify the requested period for extension (e.g., one month or two months), and must file the request and the required fee within the specified period for extension. For example, if the patent owner only specifies a one-month extension in its request, the patent owner must file, in addition to an appeal brief, the written request for the extension and the required fee within three months from the date of the appeal. The request for the extension and the fee may be filed with or without the brief. For further examples, see subsection V.C. above.
However, the timely filing of a written request for an extension for more than two months from the time permitted to file the brief and the required fee, alone, will not result in an extension of time; i.e., will not effect the extension. The request for such an extension must include a showing of sufficient cause. In addition, the extension must be for a reasonable time. Such requests will only be granted in extraordinary circumstances. See subsection VI below.
See MPEP § 1216 et seq. for specific guidance on the time for filing the notice and reasons of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action. See also MPEP § 2279.
VI. REQUIREMENTS FOR A SHOWING OF SUFFICIENT CAUSE AND AN EXTENSION FOR A REASONABLE TIME
Requests for any extension of time in third party requested reexaminations, and requests for an extension of more than two months from the time period set in the Office action in patent owner requested or Director ordered reexaminations, must
include a showing of sufficient cause, and the extension must be for a reasonable time.
Any evaluation of whether sufficient cause has been shown for an extension must balance the need to provide the patent owner with a fair opportunity to present an argument against any attack on the patent, and the requirement of the statute (35 U.S.C. 305) that the proceeding be conducted with special dispatch.
Any request for an extension of time, except for the “no cause” extension in patent owner requested or Director ordered reexamination provided in 37 CFR 1.550(c), must fully state the reasons therefor. The reasons must include a statement of what action the patent owner has taken to provide a response as of the date the request for extension is submitted, and why, in spite of the action taken thus far, the requested additional time is needed. The statement must include a factual accounting of reasonably diligent behavior by all those responsible for preparing a response to the outstanding Office action within the statutory time period.
In patent owner requested and Director ordered reexaminations, the patent owner already has the opportunity to obtain an extension of time for up to two months from the time period set in the Office action, without a showing of sufficient cause, i.e., a “no cause” extension. For this reason, requests for an extension of more than two months in patent owner requested or Director ordered reexaminations are expected to be rare and will only be granted in extraordinary situations.
However, in third party requested ex parte reexaminations, a first request for an extension of time will generally be granted if a sufficient cause is shown, and for a reasonable time specified — usually one month. The reasons stated in the request will be evaluated by the CRU SPRS or TC Director, and the requests will be favorably considered where there is a factual accounting of reasonably diligent behavior by all those responsible for preparing a response within the statutory time period. Second or subsequent requests for an extension of time and requests for an extension of more than one month in third party requested reexaminations will only be granted in extraordinary situations.
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A request for an extension of the time period to file a petition from the denial of a request for reexamination can only be entertained by filing a petition under 37 CFR 1.183 with the appropriate fee to waive the time provisions of 37 CFR 1.515(c). Since the examination process (for reexaminations ordered under 35 U.S.C. 304 or under 35 U.S.C. 257) is intended to be essentially ex parte , the third party requesting reexamination can anticipate that requests for an extension of time to file a petition under 37 CFR 1.515(c) will be granted only in extraordinary situations.
¶ 22.04.01 Extension of Time in Reexamination
Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings “will be conducted with special dispatch” ( 37 CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).
VII. FINAL ACTION — TIME FOR RESPONSE
In any ex parte reexamination proceeding, including third party requested reexaminations and patent owner requested or Director ordered reexaminations, the filing of a timely first response to a final rejection having a shortened statutory period for response is construed as including a request to extend the shortened statutory period for an additional two months, but in no case may the period for response exceed six months from the date of the final action. Even if previous extensions have been granted, the primary examiner is authorized to grant the request for extension of time which is implicit in the filing of a timely first response to a final rejection. The filing of any timely first response to a final rejection will be construed as including a request to extend the shortened statutory period for an additional two months, even if the response is informal and/or not signed. An object of this practice is to obviate the necessity for appeal merely to gain time to consider the examiner’s position in reply to a response timely filed after final rejection. Accordingly, the shortened statutory period for response to a final rejection to which a proposed first response has been received will be extended two months. Note that the Office policy of construing a response after final as inherently including a request for a two-month extension of time applies only to the first response
to the final rejection. This automatic two-month extension of time does not apply once the notice of appeal has been filed. In that instance, the patent owner will be notified that an appeal brief is due two months from the date of the notice of appeal to avoid dismissal of the appeal, and extensions of time are governed by 37 CFR 1.550(c).
The patent owner is entitled to know the examiner’s ruling on a timely response filed after final rejection before being required to file a notice of appeal. Notification of the examiner’s ruling should reach the patent owner with sufficient time for the patent owner to consider the ruling and act on it.
The present after final practice of providing an automatic two-month extension for filing a response to a final Office action is in conformance with the minimum reply period provisions of the Patent Law Treaty (PLT). For this reason, additional “no cause” extensions of time for filing a response to a final Office action in patent owner requested or Director ordered reexaminations are not available. Any extensions of time for more than two months from the time for response set in the final rejection must provide a showing of sufficient cause in accordance with 37 CFR 1.550(c)(3). See subsection VI above.
In those situations where the advisory action cannot be mailed in sufficient time for the patent owner to consider the examiner’s position with respect to the amendment after final rejection (or other patent owner paper) and act on it before termination of the prosecution of the proceeding, the granting of additional time to complete the response to the final rejection or to take other appropriate action would be appropriate. See Theodore Groz & Sohne & Ernst Bechert Nadelfabrik KG v. Quigg, 10 USPQ2d 1787 (D.D.C. 1988). The additional time should be granted by the examiner, and the time granted should be set forth in the advisory Office action. The advisory action form, Ex Parte Reexamination Advisory Action Before the Filing of an Appeal Brief (PTOL-467), states that “THE PERIOD FOR RESPONSE IS EXTENDED TO RUN ___ MONTHS FROM THE MAILING DATE OF THE FINAL REJECTION.” The blank before “MONTHS” should be filled in with an integer (2, 3, 4, 5, or 6); fractional months should not be indicated. In no case can the period for response to
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the final rejection be extended to exceed six months from the mailing date of the final rejection. An appropriate response (e.g., a second or subsequent amendment or a notice of appeal) must be filed within the extended period for response. If the patent owner elects to file a second or subsequent amendment, it must place the reexamination in condition for allowance. If the amendment does not place the reexamination in condition for allowance, the prosecution of the reexamination proceeding will stand terminated under 37 CFR 1.550(d) unless an appropriate notice of appeal was filed before the expiration of the response period.
VIII. EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS OR DECLARATIONSAFTER FINAL REJECTION
Frequently, patent owners request an extension of time, stating as a reason therefor that more time is needed in which to submit an affidavit or declaration. When such a request is filed after final rejection, the granting of the request for extension of time is without prejudice to the right of the examiner to question why the affidavit or declaration is now necessary and why it was not earlier presented. See 37 CFR 1.116(e). If the patent owner’s showing is insufficient, the examiner may deny entry of the affidavit, notwithstanding the previous grant of an extension of time to submit it. The grant of an extension of time in these circumstances serves merely to keep the prosecution of the proceeding from becoming terminated while allowing the patent owner the opportunity to present the affidavit or to take other appropriate action. Moreover, prosecution of the reexamination to save it from termination must include such timely, complete and proper action as required by 37 CFR 1.113. The admission of the affidavit or declaration for purposes other than allowance of the claims, or the refusal to admit the affidavit or declaration, and any proceedings relative thereto, shall not operate to save the prosecution of the proceeding from termination.
Implicit in the above practice is the fact that affidavits or declarations submitted after final rejection are subject to the same treatment as amendments submitted after final rejection. See In
re Affidavit Filed After Final Rejection, 152 USPQ 292, 1966 C.D. 53 (Comm’r Pat. 1966).
2266 Responses [R-07.2015]
37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action.
(a)(1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
(a)(2) Supplemental replies.
(i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner suggestion(s);
(C) Placement of the application in condition for allowance;
(D) Reply to an Office requirement made after the first reply was filed;
(E) Correction of informalities (e.g., typographical errors); or
(F) Simplification of issues for appeal.
(ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).
(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably
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distinguishes them from the references does not comply with the requirements of this section.
(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.
37 CFR 1.550 Conduct of ex parte reexamination proceedings.
(a) All ex parte reexamination proceedings, including any appeals to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office. After issuance of the ex parte reexamination order and expiration of the time for submitting any responses, the examination will be conducted in accordance with §§ 1.104 through 1.116 and will result in the issuance of an ex parte reexamination certificate under § 1.570.
(b) The patent owner in an ex parte reexamination proceeding will be given at least thirty days to respond to any Office action. In response to any rejection, such response may include further statements and/or proposed amendments or new claims to place the patent in a condition where all claims, if amended as proposed, would be patentable.
(c) The time for taking any action by a patent owner in an ex parte reexamination proceeding may be extended as provided in this paragraph.
(1) Any request for such an extension must specify the requested period of extension and be accompanied by the petition fee set forth in § 1.17(g).
(2) Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of such a request for extension will not effect the extension. A request for an extension in a third party requested ex parte reexamination will not be granted in the absence of
sufficient cause or for more than a reasonable time.
(3) Any request for an extension in a patent owner requested or Director ordered ex parte reexamination for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested or Director ordered ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months from the time period set in the Office action will not effect the extension. The time for taking action in a patent owner requested or Director ordered ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.
(4) The reply or other action must in any event be filed prior to the expiration of the period of extension, but in no
situation may a reply or other action be filed later than the maximum time period set by statute.
(5) See § 90.3(c) of this title for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action.
(d) If the patent owner fails to file a timely and appropriate response to any Office action or any written statement of an interview required under § 1.560(b), the prosecution in the ex parte reexamination proceeding will be a terminated prosecution, and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.570 in accordance with the last action of the Office.
(e) If a response by the patent owner is not timely filed in the Office, a petition may be filed pursuant to § 1.137 to revive a reexamination prosecution terminated under paragraph (d) of this section if the delay in response was unintentional.
(f) The reexamination requester will be sent copies of Office actions issued during the ex parte reexamination proceeding. After filing of a request for ex parte reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party in the reexamination proceeding in the manner provided by § 1.248. The document must reflect service or the document may be refused consideration by the Office.
(g) The active participation of the ex parte reexamination requester ends with the reply pursuant to § 1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered. Further, no submissions on behalf of any third parties will be acknowledged or considered unless such submissions are:
(1) in accordance with § 1.510 or § 1.535; or
(2) entered in the patent file prior to the date of the order for ex parte reexamination pursuant to § 1.525.
(h) Submissions by third parties, filed after the date of the order for ex parte reexamination pursuant to § 1.525, must meet the requirements of and will be treated in accordance with § 1.501(a).
(i) A petition in an ex parte reexamination proceeding must be accompanied by the fee set forth in § 1.20(c)(6) except for petitions under paragraph (c) of this section to extend the period for response by a patent owner, petitions under paragraph (e) of this section to accept a delayed response by a patent owner, petitions under § 1.78 to accept an unintentionally delayed benefit claim, and petitions under § 1.530(l) for correction of inventorship in a reexamination proceeding.
Pursuant to 37 CFR 1.550(a):
“After issuance of the ex parte reexamination order and expiration of the time for submitting any responses, the examination will be conducted in accordance with §§ 1.104 through 1.116…”
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Accordingly, the provisions of 37 CFR 1.111, other than the provision in 37 CFR 1.111(a)(1) to “see . . . [37 CFR] 1.136 for time for reply to avoid abandonment”, apply to the response by a patent owner in a reexamination proceeding.
The certificate of mailing and certificate of transmission procedures (37 CFR 1.8), and the Priority Mail Express® mailing procedure (37 CFR 1.10), may be used to file any response in a pending ex parte reexamination proceeding.
The patent owner is required to serve a copy of any response made in the reexamination proceeding on the third party requester. 37 CFR 1.550(f). See MPEP § 2266.03 for service of patent owner responses to an Office action.
The patent owner will normally be given a period of 2 months to respond to the Office action. An extension of time can be obtained only in accordance with 37 CFR 1.550(c). Note that 37 CFR 1.136 does not apply in reexamination proceedings.
If the patent owner fails to file a timely and appropriate response to any Office action, the prosecution of the reexamination proceeding will be terminated, unless the response is “not fully responsive” as defined in MPEP § 2266.01 or is an “informal submission” as defined in MPEP § 2266.02. After the prosecution of the proceeding is terminated, the Director will proceed to issue and publish a reexamination certificate.
Pursuant to 37 CFR 1.111(a)(2), a response that is supplemental to a response that is in compliance with 37 CFR 1.111(b) will not be entered as a matter of right. The Office may enter a supplemental response if the supplemental response is clearly limited to: (A) cancellation of a claim(s); (B) adoption of the examiner suggestion(s); (C) placement of the proceeding in condition for Notice of Intent to Issue Reexamination Certificate (NIRC); (D) a response to an Office requirement made after the first response was filed; (E) correction of informalities (e.g., typographical errors); or (F) simplification of issues for appeal. When a supplemental response is filed in sufficient time to be entered into the reexamination proceeding before the examiner considers the prior response, the
examiner may approve the entry of a supplemental response if, after a cursory review, the examiner determines that the supplemental response is limited to meeting one or more of the conditions set forth in 37 CFR 1.111(a)(2)(i).
A supplemental response, which has not been approved for entry, will not be entered when a response to a subsequent Office action is filed, even if there is a specific request for its entry in the subsequent response. If a patent owner wishes to have the unentered supplemental response considered by the examiner, the patent owner must include the contents of the unentered supplemental response in a proper response to a subsequent Office action.
The patent owner in an ex parte reexamination proceeding must not file papers on behalf of a third party. 37 CFR 1.550(g). If a third party paper accompanies, or is submitted as part of a timely filed response, the response and the third party paper are considered to be an improper submission under 37 CFR 1.550(g), and the entire submission shall be returned to the patent owner, since the Office will not determine which portion of the submission is the third party paper. The third party paper will not be considered. The decision returning the improper response and the third party paper should provide an appropriate extension of time under 37 CFR 1.550(c) to refile the patent owner response without the third party paper. See MPEP § 2254 and § 2267.
Patent owner cannot submit an application data sheet (ADS) in a reexamination proceeding except as provided in MPEP § 2258.02.
2266.01 Submission Not Fully Responsive to Non-Final Office Action [R-07.2015]
A response by the patent owner will be considered not fully responsive to a non-final Office action where:
(A) a bona fide response to an examiner’s non-final action is filed;
(B) before the expiration of the permissible response period, including any extensions of the response period pursuant to 37 CFR 1.550(c);
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(C) but through an apparent oversight or inadvertence, some point necessary to a full response has been omitted (i.e., appropriate consideration of a matter that the action raised, or compliance with a requirement made by the examiner, has been omitted).
Where patent owner’s amendment or response prior to final rejection is not fully responsive to an Office action in a reexamination and meets all of (A) through (C) above, the prosecution of the reexamination proceeding should not be terminated; but, rather, a practice similar to that of 37 CFR 1.135(c) (which is directed to applications) may be followed. The examiner may treat a patent owner submission which is not fully responsive to a non-final Office action by:
(A) waiving the deficiencies (if not serious) in the response and acting on the patent owner submission;
(B) accepting the amendment as a response to the non-final Office action but notifying the patent owner (via a new Office action setting a new time period for response) that the omission must be supplied; or
(C) notifying the patent owner that the response must be completed within the remaining period for response to the non-final Office action (or within any extension pursuant to 37 CFR 1.550(c)) to avoid termination of the prosecution of the proceeding under 37 CFR 1.550(d). This third alternative should only be used in the very unusual situation where there is sufficient time remaining in the period for response (including extensions under 37 CFR 1.550(c)), as is discussed below.
Where a patent owner submission responds to the rejections, objections, or requirements in a non-final Office action and is a bona fide attempt to advance the reexamination proceeding to final action, but contains a minor deficiency (e.g., fails to treat every rejection, objection, or requirement), the examiner may simply act on the amendment and issue a new (non-final or final) Office action. The new Office action may simply reiterate the rejection, objection, or requirement not addressed by the patent owner submission, or the action may indicate that such rejection, objection, or requirement is no longer applicable. In the new Office action, the examiner will identify the part of the previous Office action
which was not responded to and make it clear what is needed. Obviously, this course of action would not be appropriate in instances in which a patent owner submission contains a serious deficiency (e.g., the patent owner submission does not appear to have been filed in response to the non-final Office action).
Where patent owner’s submission contains a serious deficiency (i.e., omission) to be dealt with prior to issuing an action on the merits and the period for response has expired, or there is insufficient time remaining to take corrective action before the expiration of the period for response, the patent owner should be notified of the deficiency and what is needed to correct the deficiency, and given a new time period for response. The patent owner must supply the omission within the new time period for response (or any extensions under 37 CFR 1.550(c) thereof) to avoid termination of the prosecution of the proceeding under 37 CFR 1.550(d). The patent owner may also file a further response as permitted under 37 CFR 1.111. This is analogous to 37 CFR 1.135(c) for an application.
Form paragraph 22.14 may be used where a bona fide response is not entirely responsive to a non-final Office action.
¶ 22.14 Submission Not Fully Responsive to Non-Final Office Action - Ex Parte Reexamination
The communication filed on [1] is not fully responsive to the prior Office action. [2]. The response appears to be bona fide, but through an apparent oversight or inadvertence, consideration of some matter or compliance with some requirement has been omitted. Patent owner is required to deal with the omission to thereby provide a full response to the prior Office action.
A shortened statutory period for response to this letter is set to expire [3] from the mailing date of this letter. If patent owner fails to timely deal with the omission and thereby provide a full response to the prior Office action, prosecution of the present reexamination proceeding will be terminated. 37 CFR 1.550(d).
Examiner Note:
1. In bracket 2, the examiner should explain the nature of the omitted point necessary to complete the response, i.e., what part of the Office action was not responded to. The examiner should also make it clear what is needed to deal with the omitted point.
2. In bracket 3, if the reexamination was requested by a third party requester, the examiner should insert “ONE MONTH or thirty days, whichever is longer”. If the reexamination was requested by the patent owner, if the reexamination was ordered
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under 35 U.S.C. 257, or if it is a Director-ordered reexamination, the examiner should insert “TWO MONTHS”.
3. This paragraph may be used for a patent owner communication that is not completely responsive to the outstanding (i.e., prior) Office action. See MPEP § 2266.01.
4. This practice does not apply where there has been a deliberate omission of some necessary part of a complete response.
5. This paragraph is only used for a response made prior to final rejection. After final rejection, an advisory Office action and Form PTOL 467 should be used, and the patent owner informed of any non-entry of the amendment.
In the very unusual situation where there is sufficient time remaining in the period for response (including extensions under 37 CFR 1.550(c)), the patent owner may simply be notified that the omission must be supplied within the remaining time period for response. This notification should be made, by telephone, and an interview summary record (see MPEP § 2281) must be completed and entered into the file of the reexamination proceeding to provide a record of such notification. When notification by telephone is not possible, the procedure set forth above should be followed.
The practice of giving the patent owner a time period to supply an omission in a bona fide response (which is analogous to that set forth in 37 CFR 1.135(c) for an application) does not apply where there has been a deliberate omission of some necessary part of a complete response; rather, it is applicable only when the missing matter or lack of compliance is considered by the examiner as being “inadvertently omitted.” Once an inadvertent omission is brought to the attention of the patent owner, the question of inadvertence no longer exists. Therefore, a second Office action giving another new time period to supply the omission would not be appropriate. However, if patent owner’s response to the notification of the omission raises a different issue of a different inadvertently omitted matter, a second Office action may be given.
This practice authorizes, but does not require, an examiner to give the patent owner a new time period to supply an omission. Thus, where the examiner concludes that the patent owner is attempting to abuse the practice to obtain additional time for filing a response, the practice should not be followed. If time still remains for response, the examiner may
telephone the patent owner and inform the patent owner that the response must be completed within the period for response to the non-final Office action or within any extension pursuant to 37 CFR 1.550(c) to avoid termination of the prosecution of the reexamination proceeding.
The practice of giving the patent owner a time period to supply an omission in a bona fide response does not apply after a final Office action. If a bona fide response to an examiner’s action is filed after final rejection (before the expiration of the permissible response period), but through an apparent oversight or inadvertence, some point necessary to fully respond has been omitted, the examiner should not issue (to the patent owner) a notice of failure to fully respond. Rather, an advisory Office action (form PTOL-467) should be issued with an explanation of the omission. The time period set in the final rejection continues to run and is extended by two months if the response is the first response after the final rejection in accordance with the guidelines set forth in MPEP § 2265. See also MPEP § 2272.
Amendments after final rejection are approved for entry only if they place the proceeding in condition for issuance of a reexamination certificate or in better form for appeal. Otherwise, they are not approved for entry. See MPEP § 714.12 and § 714.13. Thus, an amendment after final rejection should be denied entry if some point necessary for a complete response under 37 CFR 1.113 was omitted, even where the omission was through an apparent oversight or inadvertence. Where a submission after final Office action (e.g., an amendment filed under 37 CFR 1.116) does not place the proceeding in condition for issuance of a reexamination certificate, the period for response continues to run until a response under 37 CFR 1.113 (i.e., a notice of appeal or an amendment that places the proceeding in condition for issuance of a reexamination certificate) is filed. Where a submission after appeal (e.g., an amendment filed under 37 CFR 41.33) does not place the proceeding in condition for issuance of a reexamination certificate, the period for filing an appeal brief continues to run until an appeal brief or an amendment that places the proceeding in condition for issuance of a reexamination certificate is filed. The nature of the omission is immaterial.
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The examiner cannot give the patent owner a time period to supply the omission.
The examiner has the authority to enter the response, withdraw the final Office action, and issue a new Office action, which may be a final Office action, if appropriate, or an action in an otherwise allowable application under Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11 (Comm’r Pat. 1935), if appropriate. This course of action is within the discretion of the examiner. However, the examiner should recognize that substantial patent rights will be at issue with no opportunity for the patent owner to refile under 37 CFR 1.53(b) or 1.53(d) in order to continue prosecution nor to file a request for continued examination under 37 CFR 1.114. Thus, where the time has expired for response and the amendment submitted would place the proceeding in condition for issuance of a reexamination certificate except for an omission through apparent oversight or inadvertence, the examiner should follow this course of action.
2266.02 Examiner Issues Notice of Defective Paper in Ex Parte Reexamination [R-07.2015]
Even if the substance of a submission is complete, the submission can still be defective, i.e., an “informal submission.” Defects in the submission can be, for example:
(A) The paper filed does not include proof of service;
(B) The paper filed is unsigned;
(C) The paper filed is signed by a non-practitioner who is not of record;
(D) The amendment filed by the patent owner does not comply with 37 CFR 1.530(d)-(j);
(E) The amendment filed by the patent owner does not comply with 37 CFR 1.20(c)(3) and/or 37 CFR 1.20(c)(4).
Where a submission made prior to final rejection is defective (informal), forms PTOL-475 and PTO-2311 are used to provide notification of the defects present in the submission. Form PTOL-475 provides notification of the defect(s) in a submission filed in a third-party requested ex parte
reexamination, while form PTO-2311 provides notification of the defect(s) in a submission filed a in patent owner requested ex parte reexamination (including a reexamination ordered under 35 U.S.C. 257) or Director ordered ex parte reexamination. In many cases, it is only necessary to check the appropriate box on the form and fill in the blanks. However, if the defect denoted by one of the entries on the appropriate form needs further clarification (such as the specifics of why the amendment does not comply with 37 CFR 1.530(d)-(j)), the additional information should be set forth on a separate sheet of paper which is then attached to the form.
The defects identified above as (A) through (E) are specifically included in form PTOL-475 and PTO-2311, with the exception of (A), which only appears in form PTOL-475 (proof of service is inapplicable in patent owner requested reexaminations). If the submission contains a defect other than those specifically included on the form, the “other” box on the form is to be checked and the defect explained in the space provided for the explanation. For example, a response might be presented on easily erasable paper, and thus, a new submission would be needed.
A time period from the mailing date of the notice will be set in the appropriate form (PTOL-475 or PTO-2311) for correction of the defect(s). Extension of time to correct the defect(s) may be requested under 37 CFR 1.550(c). If, in response to the notice, the defect still is not corrected, the submission will not be entered. If the failure to comply with the notice results in a patent owner failure to file a timely and appropriate response to any Office action, the prosecution of the reexamination proceeding generally will be terminated under 37 CFR 1.550(d).
If a defective (informal) response to an examiner’s action is filed after final rejection (before the expiration of the permissible response period), the examiner should not issue a form PTOL-475 or form PTO-2311 notification to the patent owner. Rather, an advisory Office action (form PTOL-467 or PTOL-467A) should be issued with an explanation of the defect (informality). The time period set in the final rejection continues to run and is extended by two months if the response is the first response after the final rejection in accordance with the
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guidelines set forth in MPEP § 2265. See also MPEP § 2272.
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2266.03 Service of Papers [R-07.2015]
37 CFR 1.510 Request for ex parte reexamination. *****
(b) Any request for reexamination must include the following parts:
*****
(5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.
*****
37 CFR 1.550 Conduct of ex parte reexamination proceedings.
*****
(f) The reexamination requester will be sent copies of Office actions issued during the ex parte reexamination proceeding. After filing of a request for ex parte reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party in the reexamination proceeding in the manner provided by § 1.248. The document must reflect service or the document may be refused consideration by the Office.
*****
Any paper filed with the Office in a third party requested reexamination, i.e., any submission made by either the patent owner or the third party requester, must be served on every other party in the reexamination proceeding.
As proof of service, the party submitting the paper to the Office must attach a certificate of service to the paper. It is required that the name and address of the party served, and the method of service be set forth in the certificate of service. Further, a copy of the certificate of service must be attached with the copy of the paper that is served on the other party.
Any paper for which proof of service is required, which is filed without proof of service, may be denied consideration. Where no proof of service is included, the Central Reexamination Unit should immediately contact the party making the submission by telephone to see whether the indication of proof of service was inadvertently omitted from the submission but there was actual service.
If service was in fact made, the party making the submission should be advised to submit a supplemental paper indicating the manner and date of service. The Central Reexamination Unit should enter the submission for consideration, and annotate the submission with:
“Service confirmed by [name of person] on [date]”
If no service was made, or the party making the submission cannot be contacted where an effort to do so was made, the submission is placed in the reexamination file and normally is not considered. Where the submission is not considered because of a service defect, the submission is added to the IFW file history as an unentered paper with a “N/E” notation, along with a brief annotation as to why the paper is not entered. The submission itself shall be annotated with “no service,” which also can be crossed through if the appropriate service is later made.
If the party making the submission cannot be contacted, a Notice of Defective Paper (PTOL-475), giving one month or thirty days, whichever is longer, to complete the paper, with a supplemental paper indicating the manner and date of service, will generally be mailed to the party.
If it is known that service of a submission was not made, notice of the requirement for service of copy may be given (to the party that made the submission), if appropriate, and a one month or thirty days, whichever is longer, time period is set. Form paragraph 22.15 may be used to give notice.
¶ 22.15 Lack of Service - 37 CFR 1.550(f)
The submission filed on [1] is defective because it appears that the submission was not served on the [2]. After the filing of a request for reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party (or parties where two or more third party requester proceedings are merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248. See 37 CFR 1.550(f).
It is required that service of the submission be made, and a certificate of service be provided to the Office within a shortened statutory period of ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If service of the submission is not timely made, the submission may be denied consideration.
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Examiner Note:
1. This paragraph may be used where a submission to the Office was not served as required in a third party requester reexamination proceeding.
2. In bracket 2, insert --patent owner-- or --third party requester--, whichever is appropriate.
The cover sheet to be used for mailing the notice will be form PTOL-473.
If the submission that lacks proof of service is a response to a final rejection, form PTOL-475 or form paragraph22.15 should not be used. Rather, an advisory Office action (form PTOL-467 or PTOL-467A) should be issued with an explanation that the response lacks proof of service. The time period set in the final rejection continues to run and is extended by two months if the response is the first response after the final rejection in accordance with the guidelines set forth in MPEP § 2265. See also MPEP § 2272.
The failure of a party to serve the submission in response to the notice will have the following consequences:
(A) For a patent owner statement or a third party reply, the submission may be refused consideration by the Office. Where consideration is refused, the submission will not be addressed in the reexamination proceeding other than to inform parties of the lack of consideration thereof;
(B) For a patent owner response to an Office action, the response may be refused consideration by the Office. Where consideration of a response is refused, the prosecution of the proceeding will be terminated in accordance with 37 CFR 1.550(d), unless the patent owner has otherwise completely responded to the Office action.
See MPEP § 2220 as to the initial third party request.
See MPEP § 2249 as to the patent owner statement.
See MPEP § 2251 as to third party reply.
See MPEP § 2266 as to patent owner responses to an Office action.
2267 Handling of Inappropriate or Untimely Filed Papers [R-07.2015]
The applicable regulations (37 CFR 1.501(a), 1.550(e)) provide that certain types of correspondence will not be considered or acknowledged unless timely received. Whenever reexamination correspondence is received, a decision is required of the Office as to the action to be taken on the correspondence based on what type of paper it is and whether it is timely.
The return of inappropriate submissions complies with the regulations that certain papers will not be considered and also reduces the amount of paper which would ultimately have to be scanned into the record. Where an inappropriate (unauthorized, improper) paper has already been scanned into the Image File Wrapper (IFW) of the reexamination proceeding before discovery of the inappropriate nature of the paper, the paper cannot be physically returned to the party that submitted it. Instead, the paper will be “returned” by expunging it, i.e., by marking the paper as “non-public” and “closed” so that it does not appear in the active IFW record with the other active papers that comprise the public record of the reexamination proceeding.
I. DISPOSITION OF PAPERS
Where papers are filed during reexamination proceedings which are inappropriate because of some defect, such papers will be expunged from the official file by marking the papers “closed” and “non-public”.
II. TYPES OF PAPERS EXPUNGED WITH APPROVAL OF THE DIRECTOR OF THE USPTO OR CRU/TC DIRECTOR OR SPRS
A. Premature Response by Owner-Filed by Owner Where the patent owner is NOT the requester, any response or amendment
§ 1.530(a), § 1.540
filed by owner prior to an order to reexamine is premature, will not be considered, and will be expunged.
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A. Premature Response by Owner-Filed by Owner B. Paper Submitted on Behalf of Third Party -
§ 1.550(g)
Submission filed on behalf of a third party will not be considered, and will be expunged. Where third party paper is submitted as part of a patent owner response, see MPEP § 2254 and § 2266.
In those rare instances where an opposition to a patent owner petition is filed, after such opposition is filed by a third party requester (regardless of whether such opposition has an entry right or not), any further paper in opposition/rebuttal/response to the third party opposition paper will not be considered and will be expunged. There must be a limitation on party iterations of input, especially given the statutory mandate for special dispatch in reexamination.
A. No Statement Filed by Owner -Filed by Requester
If a patent owner fails to file a statement within the prescribed limit,
§ 1.535
any reply by the requester is inappropriate , will not be considered, and will be expunged. B. Late Response by Requester - Any response subsequent to 2 months from the date of service of the patent
§ 1.535, § 1.540
owner’s statement will not be considered, and will be expunged. C. Additional Response by Requester- The active participation of the reexamination requester ends with the
§ 1.550(g)
reply pursuant to § 1.535. Any further submission on behalf of requester will not be considered, and will be expunged.
In those rare instances where an opposition to a requester petition is filed, after such opposition is filed by the patent owner (regardless of whether such opposition has an entry right or not), any further paper in opposition/rebuttal/response to the patent owner opposition paper will not be considered and will be returned. There must be a limitation on party iterations of input, especially given the statutory
mandate for special dispatch in reexamination. Further, any petition requesting that an extension of time be denied will be expunged, since a requester does not have a participation right in the reexamination proceeding.
Filed by Third Party
Unless a paper submitted by a third party raises only issues appropriate
§ 1.501, § 1.565(a)
under 37 CFR 1.501, or consists solely of a prior decision on the patent by another forum, e.g., a court (see MPEP § 2207 and § 2286 or presentation of a paper of record in a litigation (see MPEP § 2282)), it will be destroyed, or if inadvertently entered, it will be expunged from the file.
Where a petition under 37 CFR 1.182 or 1.183 has been filed, the reexamination proceeding should be forwarded to the Office of Patent Legal Administration for decision.
III. TYPES OF DEFECTIVE PAPERS TO BE RETAINED IN THE REEXAMINATION FILE
A. Unsigned Papers -Filed by Owner Papers filed by owner which are unsigned or signed by less than all of
§ 1.33
the owners (no attorney of record or acting in representative capacity). B. No Proof of Service - Papers filed by the patent owner in which no proof of service on requester
§ 1.248
is included and proof of service is required may be denied consideration. C. Untimely Papers - Where owner has filed a paper which is untimely, that is, it was filed after
§ 1.530(b), § 1.540
the period set for response, the paper will not be considered.
A. Unsigned Papers -Filed by Requester
Papers filed by requester which are unsigned will not be considered. B. No Proof of Service -
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A. Unsigned Papers -Filed by Requester
Papers filed by requester in which no proof of service on owner is included
§ 1.510(b)(5), § 1.33, § 1.248
and where proof of service is required may be denied consideration.
In those limited instances where there is a right to file an opposition to a petition, any such opposition must be filed within two weeks of the date upon which a copy of the original petition was served on the opposing party, to ensure consideration. Any such opposition which is filed after the two-week period will remain in the record, even though it is not considered.
IV. PAPERS LOCATED IN THE PATENT FILE
Citations by Third Parties§ 1.501 Submissions by third parties based solely on prior art patents or
§ 1.550(h)
publications filed after the date of the order to reexamine are not entered into the patent file but delayed until the reexamination proceedings have been concluded. See MPEP § 2206.
2268 Petition for Entry of Late Papers for Revival of Reexamination Proceeding [R-07.2015]
35 U.S.C. 27 Revival of applications; reinstatement of reexamination proceedings.
The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing each patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner.
35 U.S.C. 41 Patent fees; patent and trademark search systems.
(a) GENERAL FEES. — The Director shall charge the following fees:
*****
(7) REVIVAL FEES. — On filing each petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining
a patent in force, for the delayed submission of a priority or benefit claim, or for the extension of the 12-month period for filing a subsequent application, $1,700. The Director may refund any part of the fee specified in this paragraph, in exceptional circumstances as determined by the Director.
*****
35 U.S.C. 133 Time for prosecuting application.
Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto.
37 CFR 1.137 Revival of abandoned application, or terminated or limited reexamination prosecution.
(a) Revival on the basis of unintentional delay. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this section to revive an abandoned application or a reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited under § 1.957(c).
(b) Petition requirements. A grantable petition pursuant to this section must be accompanied by:
(1) The reply required to the outstanding Office action or notice, unless previously filed;
(2) The petition fee as set forth in § 1.17(m);
(3) Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section; and
(4) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
*****
(e) Request for reconsideration . Any request for reconsideration or review of a decision refusing to revive an abandoned application, or a terminated or limited reexamination prosecution, upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under:
(1) The provisions of § 1.136 for an abandoned application;
(2) The provisions of § 1.550(c) for a terminated ex parte reexamination prosecution, where the ex parte reexamination was filed under § 1.510; or
(3) The provisions of § 1.956 for a terminated inter partes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the inter partes reexamination was filed under § 1.913.
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*****
Pursuant to 37 CFR 1.550(d), the prosecution of an ex parte reexamination proceeding is terminated if the patent owner fails to file a timely and appropriate response to any Office action or any written statement of an interview required under 37 CFR 1.560(b). An ex parte reexamination prosecution terminated under 37 CFR 1.550(d) can be revived if the delay in response by the patent owner (or the failure to timely file the interview statement) was unintentional in accordance with 37 CFR 1.137 .
The failure to timely file a statement pursuant to 37 CFR 1.530 or a reply pursuant to 37 CFR 1.535, however, would not (under ordinary circumstances) constitute adequate basis to justify a showing of unintentional delay regardless of the reasons for the failure, since failure to file a statement or reply does not result in a “termination” of the reexamination prosecution, to which 37 CFR 1.137 is directed.
All petitions in reexamination proceedings to accept late papers and to revive the proceedings will be decided in the Office of Patent Legal Administration.
I. PETITION BASED ON UNAVOIDABLE DELAY IS NO LONGER AVAILABLE
37 CFR 1.137 was revised to implement the changes in the Patent Law Treaties Implementation Act of 2012 (PLTIA) to eliminate revival of an abandoned application and reexamination prosecution terminated under § 1.550(d) under the ‘‘unavoidable’’ standard, and to provide for the revival of abandoned applications and the acceptance of delayed responses in reexamination by patent owners on the basis of unintentional delay. Specifically, section 201(b) of the PLTIA added new 35 U.S.C. 27, which provides that the Director may establish procedures to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing a patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner. Accordingly, 37 CFR 1.137(a) was amended to eliminate the provisions pertaining to petitions on the basis of unavoidable delay. These changes were effective on December 18, 2013 and
apply to all any patent application filed before, on, or after December 18, 2013, to any patent resulting from an application filed before, on, or after December 18, 2013, to any reexamination proceeding filed before, on, or after December 18, 2013, and to any reexamination proceeding resulting from a supplemental examination proceeding filed before, on, or after December 18, 2013.
II. PETITION BASED ON UNINTENTIONAL DELAY
As discussed in paragraph I above, section 201(b) of the PLTIA added new 35 U.S.C. 27, which provides that the Director may establish procedures to accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the patent owner. The patent laws formerly provided for revival of an unintentionally abandoned application only in the patent fee provisions of 35 U.S.C. 41(a)(7). See Public Law 97–247, section 3(a), 96 Stat. 317–18 (1982). The unintentional delay fee provisions of 35 U.S.C. 41(a)(7) were imported into, and were applicable to, all ex parte reexamination proceedings by section 4605 of the American Inventors Protection Act of 1999. The unintentional delay provisions of 35 U.S.C. 41(a)(7) became effective in reexamination proceedings on November 29, 2000. However, this statutory structure raised questions concerning the Office’s authority to revive an unintentionally abandoned application (without a showing of unavoidable delay) in certain situations. See e.g., Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 543 F.3d 657 (Fed. Cir. 2008).
37 CFR 1.137(a), as amended in the final rule to implement the PLTIA, provides that if the delay in reply by patent owner was unintentional, a petition may be filed pursuant to 37 CFR 1.137 to revive a reexamination prosecution terminated under 37 CFR 1.550(d). 37 CFR 1.137(b) states the petition requirements. Specifically, for ex parte reexamination proceedings, 37 CFR 1.137(b) provides that a grantable petition pursuant to 37 CFR 1.137 must be accompanied by: (1) The reply required to the outstanding Office action or notice, unless previously filed; (2) the petition fee as set forth in 37 CFR 1.17(m); and (3) a statement that the entire delay in filing the required reply from the
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due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. 37 CFR 1.137 continues to provide that the Director may require additional information where there is a question whether the delay was unintentional.
III. RENEWED PETITION
Reconsideration may be requested of a decision dismissing or denying a petition under 37 CFR 1.137 to revive a terminated reexamination prosecution. The request for reconsideration must be submitted within two months from the mail date of the decision for which reconsideration is requested. An extension of time may be requested only under 37 CFR 1.550(c); extensions of time under 37 CFR 1.136 are not available in reexamination proceedings. The extension of time provisions of 37 CFR 1.550(c) also apply to any request for an extension filed in a reexamination proceeding ordered under 35 U.S.C. 257 as a result of a supplemental examination proceeding. Any reconsideration request which is submitted should include a cover letter entitled “Renewed Petition under 37 CFR 1.137”.
IV. FURTHER DISCUSSION OF THE PETITION REQUIREMENTS
See also MPEP § 711.03(c) for a detailed discussion of the requirements of petitions filed under 37 CFR 1.137.
2269 Reconsideration [R-08.2012]
In order to be entitled to reconsideration, the patent owner must respond to the Office action. 37 CFR 1.111(b). The patent owner may respond to such Office action with or without amendment and the patent under reexamination will be reconsidered, and so on repeatedly unless the examiner has indicated that the action is final. See 37 CFR 1.112. Any amendment after the second Office action, which will normally be final as provided for in MPEP § 2271, must ordinarily be restricted to the rejection or to the objection or requirement made.
2270 Clerical Handling [R-07.2015]
The legal instrument examiners and paralegals will handle most of the initial clerical processing of the
reexamination file. The Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) provides oversight as to clerical processing.
Amendments submitted with a request filed under 35 U.S.C. 302, or after reexamination is ordered under 35 U.S.C. 304 or under 35 U.S.C. 257, and which comply with 37 CFR 1.530(d)-(j), will generally be entered for purposes of reexamination in the reexamination file if submitted prior to a final action. See MPEP § 2234 and § 2250 for the manner of entering amendments.
For entry of amendments in a merged reissue-reexamination proceeding, see MPEP § 2283 and § 2285.
Where an amendment is submitted in proper form prior to a final action and it is otherwise appropriate to enter the amendment, the amendment will be entered for purposes of the reexamination proceeding, even though the amendment does not have legal effect until the certificate is issued. Any “new matter” amendment to the disclosure (35 U.S.C. 132) will be required to be canceled, and claims containing new matter will be rejected under 35 U.S.C. 112. A “new matter” amendment to the drawing is ordinarily not entered. See MPEP §§ 608.04, 608.04(a), and 608.04(c). Where an amendment enlarges the scope of the claims of the patent, the amendment will be entered; however the appropriate claims will be rejected under 35 U.S.C. 305.
2271 Final Action [R-07.2015]
Before a final action is in order, a clear issue should be developed between the examiner and the patent owner. To bring the prosecution to a speedy conclusion and at the same time deal justly with the patent owner and the public, the examiner will twice provide the patent owner with such information and references as may be useful in defining the position of the Office as to unpatentability before the action is made final. Initially, the decision ordering reexamination of the patent will contain an identification of the substantial new questions of patentability that the examiner considers to be raised
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by the cited prior art . In addition, the first Office action will reflect the consideration of any arguments contained in the request, any amendments submitted with a request under 35 U.S.C. 302, any owner’s statement filed pursuant to 37 CFR 1.530, and any reply thereto by the requester, and should fully apply all relevant grounds of rejection to the claims.
The statement which the patent owner may file under 37 CFR 1.530 and the response to the first Office action should completely respond to and/or amend with a view to avoiding all outstanding grounds of rejection.
It is intended that the second Office action in the reexamination proceeding following the decision ordering reexamination will generally be made final. The criteria for making a rejection final in an ex parte reexamination proceeding is analogous to that set forth in MPEP § 706.07(a) for making a rejection final in an application. Both the patent owner and the examiner should recognize that a reexamination proceeding may result in the final cancellation of claims from the patent and that the patent owner does not have the right to renew or continue the proceedings by refiling under 37 CFR 1.53(b) or 37 CFR 1.53(d) or former 37 CFR 1.60 or 1.62, nor by filing a request for continued examination under 37 CFR 1.114. Complete and thorough actions by the examiner coupled with complete responses by the patent owner, including early presentation of evidence under 37 CFR 1.131(a) or 37 CFR 1.132, will go far in avoiding such problems and reaching a desirable early termination of the reexamination prosecution.
In making the final rejection, all outstanding grounds of rejection of record should be carefully reviewed and any grounds or rejection relied on should be reiterated. The grounds of rejection must (in the final rejection) be clearly developed to such an extent that the patent owner may readily judge the advisability of an appeal. However, where a single previous Office action contains a complete statement of a ground of rejection, the final rejection may refer to such a statement and also should include a rebuttal of any arguments raised in the patent owner’s response.
I. PROCESS OF PREPARING THE ACTION
After an examiner has determined that the reexamination proceeding is ready for the final Office action, the examiner will set up a panel review conference as per MPEP § 2271.01, to discuss the issuance of the action. The examiner may prepare the action after the conference, or may prepare the action prior to the conference and revise it as needed after the conference.
If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims and issue a final Office action, the proposed final Office action shall be issued and signed by the examiner, with the two, or more, other conferees initialing the action (as “conferee”) to indicate their presence in the conference.
II. FORM PARAGRAPHS
The final rejection letter should conclude with one of form paragraphs 22.09 or 22.10.
¶ 22.09 Ex Parte Reexamination - Action Is Final
THIS ACTION IS MADE FINAL.
A shortened statutory period for response to this action is set to expire [1] from the mailing date of this action.
Extensions of time under 37 CFR 1.136(a) do not apply in reexamination proceedings. The provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(a), it is required that reexamination proceedings “will be conducted with special dispatch within the Office.”
Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c) . A request for extension of time must specify the requested period of extension and it must be accompanied by the petition fee set forth in 37 CFR 1.17(g). Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request will not effect any extension of time. A request for an extension of time in a third party requested ex parte reexamination will be granted only for sufficient cause, and for a reasonable time specified. Any request for extension in a patent owner requested ex parte reexamination (including reexamination ordered under 35 U.S.C. 257) for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on
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which action by the patent owner is due, and the mere filing of a request for an extension for more than two months will not effect the extension. The time for taking action in a patent owner requested ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.
The filing of a timely first response to this final rejection will be construed as including a request to extend the shortened statutory period for an additional two months. In no event, however, will the statutory period for response expire later than SIX MONTHS from the mailing date of the final action. See MPEP § 2265.
Examiner Note:
1. This form paragraph may be used only in reexamination proceedings.
2. In bracket 1, insert the appropriate period for response, which is normally TWO (2) MONTHS.
¶ 22.10 Ex Parte Reexamination - Action Is Final, Necessitated by Amendment
Patent owner’s amendment filed [1] necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
A shortened statutory period for response to this action is set to expire [2] from the mailing date of this action.
Extensions of time under 37 CFR 1.136(a) do not apply in reexamination proceedings. The provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(a), it is required that reexamination proceedings “will be conducted with special dispatch within the Office.”
Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c). A request for extension of time must specify the requested period of extension and it must be accompanied by the petition fee set forth in 37 CFR 1.17(g). Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request will not effect any extension of time. A request for an extension of time in a third party requested ex parte reexamination will be granted only for sufficient cause, and for a reasonable time specified. Any request for extension in a patent owner requested ex parte reexamination (including reexamination ordered under 35 U.S.C. 257) for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months will not effect the extension. The time for taking action in a patent owner requested ex parte reexamination will not be extended for more
than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.
The filing of a timely first response to this final rejection will be construed as including a request to extend the shortened statutory period for an additional two months. In no event, however, will the statutory period for response expire later than SIX MONTHS from the mailing date of the final action. See MPEP § 2265.
Examiner Note:
1. This form paragraph may be used only in reexamination proceedings.
2. In bracket 1, insert filing date of amendment.
3. In bracket 2, insert the appropriate period for response, which is normally TWO (2) MONTHS.
4. As with all other Office correspondence on the merits in a reexamination proceeding, the final Office action must be signed by a primary examiner.
III. ART CITED BY PATENT OWNER DURING PROSECUTION
Where art is submitted in a prior art citation under 37 CFR 1.501 and/or 37 CFR 1.555 (an IDS filed in a reexamination is construed as a prior art citation) and the submission is not accompanied by a statement similar to that of 37 CFR 1.97(e), the examiner may use the art submitted and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection is introduced by the examiner based on the new art not cited in the prior art citation. See MPEP § 706.07(a).
IV. SIGNATORY AUTHORITY
As with all other Office correspondence on the merits in a reexamination proceeding, the final Office action must be signed by a primary examiner.
2271.01 Panel Review [R-07.2015]
A panel review will be conducted at each stage of the examiner’s examination in an ex parte reexamination proceeding, other than for actions such as notices of informality or incomplete response. Matters requiring decision outside of the examiner’s jurisdiction (e.g., decisions on petitions or extensions of time, or Central Reexamination Unit
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(CRU) support staff notices) will not be reviewed by a panel.
The panel review is carried out for each Office action. The panel reviews the examiner’s preliminary decision to reject and/or allow the claims in the reexamination proceeding, prior to the issuance of each Office action.
I. MAKE-UP OF THE PANEL
The panel will consist of three, or more, members, one of whom will be a manager. The second member will be the examiner in charge of the proceeding. The manager may select the third member. The examiner-conferees will be primary examiners, or examiners who are knowledgeable in the technology of the invention claimed in the patent being reexamined and/or who are experienced in reexamination practice. The majority of those present at the conference will be examiners who were not involved in the examination or issuance of the patent. An “original” examiner (see MPEP § 2236) should be chosen as a conferee only if that examiner is the most knowledgeable in the art, or there is some other specific and justifiable reason to choose an original examiner as a participant in the conference.
II. PANEL PROCESS
The examiner must inform his/her manager of his/her intent to issue an Office action. The manager will then convene a panel and the members will confer and review the patentability of the claim(s). If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims, the Office action shall be issued and signed by the examiner, with the two, or more, other conferees initialing the action (as “conferee”) to indicate their participation in the conference. All conferees will initial, even though one of them may have dissented from the 3-party conference decision as to the patentability of claims. If the conference does not confirm the examiner’s preliminary decision, examiner will reevaluate and issue an appropriate Office action.
Where the examiner in charge of the proceeding is not in agreement with the conference decision, the manager will generally assign the proceeding to another examiner.
III. WHAT THE CONFERENCE IS TO ACCOMPLISH
Each conference will provide a forum to consider all issues of patentability as well as procedural issues having an impact on patentability. Review of the patentability of the claims by more than one primary examiner should diminish the perception that the patent owner can disproportionately influence the examiner in charge of the proceeding. The conferences will also provide greater assurance that all matters will be addressed appropriately. All issues in the proceeding will be viewed from the perspectives of three examiners. What the examiner in charge of the proceeding might have missed, the other two, or more, conference members would likely detect. The conference will provide for a comprehensive discussion of, and finding for, each issue.
IV. CONSEQUENCES OF FAILURE TO HOLD CONFERENCE
Should the examiner issue an Office action without panel review, the patent owner or the third party requester who wishes to object must promptly file a paper alerting the Office of this fact. (The failure to provide panel review would be noted by the parties where there are no conferees’ initials at the end of the Office action.) Any challenge of the failure to hold a panel review conference must be made within two weeks of receipt of the Office action issued, or the challenge will not be considered. In no event will the failure to hold a panel review conference, by itself, be grounds for vacating any Office decision(s) or action(s) and “restarting” the reexamination proceeding.
2272 After Final Practice [R-07.2015]
It is intended that prosecution before the examiner in a reexamination proceeding will be concluded with the final action. Once a final rejection that is not premature has been entered in a reexamination proceeding, the patent owner no longer has any right to unrestricted further prosecution. Consideration of amendments submitted after final rejection and prior to, or with, the appeal will be governed by the strict standards of 37 CFR 1.116. Further, consideration of amendments submitted after appeal will be
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governed by the strict standards of 37 CFR 41.33. Both the examiner and the patent owner should recognize that substantial patent rights will be at issue with no opportunity for the patent owner to refile under 37 CFR 1.53(b), or 1.53(d), and with no opportunity to file a request for continued examination under 37 CFR 1.114. Accordingly, both the examiner and the patent owner should identify and develop all issues prior to the final Office action, including the presentation of evidence under 37 CFR 1.131(a) and 1.132.
In the event that the patent owner is of the opinion that (A) a final rejection is improper or premature, or (B) that an amendment submitted after final rejection complies with 37 CFR 1.116 but the examiner improperly refused entry of such an amendment, the patent owner may file a petition under 37 CFR 1.181 requesting that the final rejection be withdrawn and that prosecution be reopened, or file a petition under 37 CFR 1.181 requesting entry of the amendment, where appropriate. The petition under 37 CFR 1.181 must be filed within the time period for filing a notice of appeal. Note that the filing of a petition under 37 CFR 1.181 does not toll the time period for filing a notice of appeal.
I. FINAL REJECTION — TIME FOR RESPONSE
The statutory period for response to a final rejection in a reexamination proceeding will normally be two (2) months. If a response to the final rejection is filed, the time period set in the final rejection continues to run. In any ex parte reexamination proceeding, including third party requested reexaminations, patent owner requested reexaminations (including reexaminations ordered under 35 U.S.C. 257) or Director ordered reexaminations, the time period is automatically extended by two months (in accordance with the guidelines set forth in MPEP § 2265) if the response is the first response after the final rejection and a notice of appeal has not yet been filed. Any advisory Office action using form PTOL-467, Ex Parte Reexamination Advisory Action Before the Filing of an Appeal Brief, which is issued in reply to patent owner’s response after final rejection (and prior to the filing of the notice of appeal) will inform the patent owner of the automatic two month extension
of time. It should be noted that the filing of any timely first response to a final rejection (even an informal response or even a response that is not signed) will automatically result in the extension of the shortened statutory period for an additional two months. Note further that the patent owner is entitled to know the examiner’s ruling on a timely response filed after final rejection before being required to file a notice of appeal. Notification of the examiner’s ruling should reach the patent owner with sufficient time for the patent owner to consider the ruling and act on it. Accordingly, the period for response to the final rejection should be appropriately extended in the examiner’s advisory action. See Theodore Groz & Sohne & Ernst Bechert Nadelfabrik KG v. Quigg, 10 USPQ2d 1787 (D.D.C. 1988). The period for response may not, however, be extended to run past 6 months from the date of the final rejection.
The present after final practice of providing an automatic two-month extension for filing a response to a final Office action is in conformance with the minimum reply period provisions of the Patent Law Treaty (PLT). For this reason, additional “no cause” extensions of time for filing a response to a final Office action in patent owner requested or Director ordered reexaminations are not available. Any extensions of time for more than two months from the time for response set in the final rejection must provide a showing of sufficient cause in accordance with 37 CFR 1.550(c)(3). See MPEP § 2265, subsections VI-VII.
II. ACTION BY EXAMINER
It should be kept in mind that a patent owner cannot, as a matter of right, amend any finally rejected claims, add new claims after a final rejection, or reinstate previously canceled claims. For an amendment filed after final rejection and prior to the appeal brief, a showing under 37 CFR 1.116(b) is required and will be evaluated by the examiner for all proposed amendments after final rejection except where an amendment merely cancels claims, adopts examiner’s suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner. An amendment filed at any time after final rejection but before an appeal brief is filed, may be entered upon or after filing of an appeal provided:
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(A) the total effect of the amendment is to cancel claims or comply with any requirement of form expressly set forth in a previous Office action, or present rejected claims in better form for consideration on appeal;
(B) for an amendment touching the merits of the patent under reexamination, the patent owner provides a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
The first proposed amendment after final action in a reexamination proceeding will be given sufficient consideration to determine whether it places all the claims in condition where they are patentable and/or whether the issues on appeal are reduced or simplified. Unless the proposed amendment is entered in its entirety, the examiner will briefly explain the reasons for not entering a proposed amendment. For example, if the claims as amended present a new issue requiring further consideration or search, the new issue should be identified and a brief explanation provided as to why a new search or consideration is necessary. The patent owner should be notified if certain portions of the amendment would be entered if a separate paper was filed containing only such amendment.
Any second or subsequent amendment after final will be considered only to the extent that it removes issues for appeal or puts a claim in obvious patentable condition.
Since patents undergoing reexamination cannot become abandoned and cannot be refiled, and since the holding of claims unpatentable and canceled in a certificate is absolutely final, it is appropriate that the examiner consider the feasibility of entering amendments touching the merits after final rejection or after appeal has been taken, where there is a showing why the amendments are necessary and a suitable reason is given why they were not earlier presented.
The practice of giving the patent owner a time period to supply an omission in a bona fide response (as set forth in MPEP § 2266.01) does not apply after a final Office action. If a bona fide response to an examiner’s action is filed after final rejection (before the expiration of the permissible response
period), but through an apparent oversight or inadvertence, some point necessary to fully respond has been omitted, the examiner should not issue (to the patent owner) a notice of failure to fully respond. Rather, an advisory Office action (e.g., form PTOL-467) should be issued with an explanation of the omission.
Likewise, the practice of notifying the patent owner of the defects present in a submission via form PTOL-475 or form PTO-2311 and setting a time period for correction of the defect(s) (as set forth in MPEP § 2266.02) does not apply after a final Office action. If a defective (informal) response to an examiner’s action is filed after final rejection (before the expiration of the permissible response period), the examiner should not issue a form PTOL-475 or form PTO-2311 notification to the patent owner. Rather, an advisory Office action (e.g., form PTOL-467) should be issued with an explanation of the defect (informality) being provided in the advisory action.
2273 Appeal in Ex Parte Reexamination [R-07.2015]
35 U.S.C. 306 Appeal.
The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134, and may seek court review under the provisions of sections 141 to 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.
A patent owner who is dissatisfied with the primary examiner’s decision to reject claims in an ex parte reexamination proceeding may appeal to the Board for review of the examiner’s rejection by filing a notice of appeal within the required time. A third party requester may not appeal, and may not participate in the patent owner’s appeal.
The patent owner may appeal to the Board only after the final rejection of the claims. This is based on the version of 35 U.S.C. 134 as amended by Public Law 106-113. This version of 35 U.S.C. 134 applies to appeals in reexamination, where the reexamination was filed in the Office on or after November 29, 1999. See Section 13202(d) of Public Law 107-273.
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The notice of appeal need not be signed. See 37 CFR 41.31(b). The fee required by 37 CFR 41.20(b)(1) must accompany the notice of appeal. See 37 CFR 41.31(a)(2) and (a)(3).
The period for filing the notice of appeal is the period set for response in the last Office action which is normally 2 months. The timely filing of a first response to a final rejection having a shortened statutory period for response is construed as including a request to extend the period for response an additional two months, even if an extension has been previously granted, as long as the period for response does not exceed 6 months from the date of the final rejection. The normal ex parte appeal procedures set forth at 37 CFR 41.31 through 37 CFR 41.54 apply in ex parte reexamination, except as pointed out in this Chapter. A third party requester may not appeal or otherwise participate in the appeal.
The reexamination statute does not provide for review of a patentability decision favoring the patentee. Greenwood v. Seiko Instruments, 8 USPQ2d 1455 (D.D.C. 1988).
See MPEP § 1204 for a discussion of the requirements for a proper appeal. However, note that in the unusual circumstances where an appeal is defective (e.g., no proof of service is included, it was filed for the wrong proceeding), patent owner should not be advised by the examiner to obtain an extension of time under 37 CFR 1.136(a), because an extension of time under 37 CFR 1.136 cannot be obtained in a reexamination proceeding.
Where a notice of appeal is defective, the patent owner will be so notified. In third party requested reexaminations, Form PTOL-475 will be used to provide the notification. A time period of one month or thirty days, whichever is longer, will be provided for the patent owner to cure the defect(s) in the appeal. In patent owner requested reexaminations (including reexaminations ordered under 35 U.S.C. 257) or Director ordered reexaminations, Form PTO-2311 will be used to provide the notification, and a two-month time period will be provided for the patent owner to cure the defect(s) in the appeal. An explanation of the defect(s) in the notice of appeal must accompany the appropriate form for
providing the notification of the defects (PTOL-475 or PTO-2311).
If the patent owner does not timely file a notice of appeal and/or does not timely file the appropriate appeal fee, the patent owner will be notified that the appeal is dismissed. Form PTOL-468 may be used to provide the notification. The reexamination prosecution is then terminated, and a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) will subsequently be issued indicating the status of the claims at the time of final rejection (or after the second rejection of the claims, where an appeal was taken from that action without waiting for a final rejection). See MPEP § 2287.
2274 Appeal Brief [R-07.2015]
I. AMENDMENT
Where the appeal brief is not filed, but within the period allowed for filing the brief an amendment is presented which places the claims of the patent under reexamination in a patentable condition, the amendment may be entered. Amendments should not be included in the appeal brief.
As to separate amendments, i.e., amendments not included with the appeal brief, filed with or after the appeal, see MPEP § 1206.
II. TIME FOR FILING APPEAL BRIEF
The time for filing the appeal brief is two (2) months from the date of the appeal.
III. EXTENSION OF TIME FOR FILING APPEAL BRIEF
In the event that the patent owner finds that he or she is unable to file a brief within the time allowed by the rules, he or she may file a request with the appropriate extension of time fee, to the Central Reexamination Unit (CRU) or Technology Center (TC), requesting additional time. See MPEP § 2265 for specific guidance. The request should contain the address to which the response is to be sent. If the request and the required fee are filed prior to the expiration of the period sought to be extended (37 CFR 1.550(c)), the CRU SPRS or TC Director is
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authorized to grant the extension for up to one month in third party requested reexamination proceedings, and for up to two months (i.e., a “no cause” extension) in patent owner requested reexamination proceedings (including reexaminations ordered under 35 U.S.C. 257) or Director ordered reexamination proceedings. Requests for extensions of time for more than one month in third party requested reexaminations and for more than two months in patent owner requested reexaminations (including reexaminations ordered under 35 U.S.C. 257) or Director ordered reexaminations, will also be decided by the CRU SPRS or TC Director, but will not be granted unless extraordinary circumstances are involved; e.g., death or incapacitation of the patent owner. The time extended is added to the last calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Saturday, Sunday, or federal holiday.
IV. FAILURE TO TIMELY FILE APPEAL BRIEF
Failure to file the brief and/or the appeal brief fee within the permissible time will result in dismissal of the appeal. Form PTOL-468 may be used to notify the patent owner that the appeal is dismissed. The reexamination prosecution is then terminated, and a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) (see MPEP § 2287) will subsequently be issued indicating the status of the claims at the time of appeal.
V. REQUIREMENTS FOR THE APPEAL BRIEF
A fee as set forth in 37 CFR 41.20(b)(2) is required when the appeal brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a). 37 CFR 41.37 provides that the appellant shall file a brief of the authorities and arguments on which he or she will rely to maintain his or her appeal, including a summary of claimed subject matter which must refer to the specification by page and line number, and to the drawing, if any, by reference characters, and a copy of the claims involved. Only one copy of the appeal brief is required. Where the request for reexamination was filed by a third party requester, a copy of the brief must be served on that third party requester.
In the case of a merged proceeding (see MPEP § 2283 and § 2285), one original copy of the brief should be provided for each reexamination proceeding and reissue application in the merged proceeding. In addition, a copy of the brief must be served on any third party requesters who are part of the merged proceeding.
For the sake of convenience, the copy of the claims involved should be double spaced and should start on a new page. Note that the copy of the claims on appeal in reexamination proceedings must include all underlining and bracketing, as required by 37 CFR 1.530(f), to reflect the changes made to the original patent claims throughout the prosecution of the reexamination. In addition, any new claims added in the reexamination should be completely underlined. This represents a departure from the procedure set forth in MPEP § 1205.02 for applications.
The brief, as well as every other paper relating to an appeal, should indicate the number of the art unit to which the reexamination is assigned and the reexamination control number. When the brief is received, it is forwarded to the CRU or TC (depending which is examining the proceeding) where it is entered in the file and referred to the examiner.
Patent owners are reminded that their briefs in appeal cases must be responsive to every ground of rejection stated by the examiner. A reply brief, if filed, shall be entered, except that amendments or affidavits or other evidence are subject to 37 CFR 1.116 and 41.33. See 37 CFR 41.41(a)(2).
It is essential that the Board should be provided with a brief fully stating the position of the appellant with respect to each issue involved in the appeal so that no search of the record is required in order to determine that position. The fact that appellant may consider a ground to be clearly improper does not justify a failure on the part of the appellant to point out to the Board the reasons for that view in the brief.
See MPEP § 1205.02 for further discussion of the requirements for an appeal brief.
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VI. SEEKING REVIEW OF A FINDING OF A SUBSTANTIAL NEW QUESTION OF PATENTABILITY
The patent owner may seek review on the examiner's SNQ determination before the Board along with any appeal of the examiner's rejections. To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner. Accordingly, for ex parte reexamination proceedings ordered on or after June 25, 2010, the patent owner may seek a final agency decision from the Board on the SNQ issue only if the patent owner has first requested reconsideration before the examiner (e.g., in a patent owner's statement under 37 CFR 1.530 or in a patent owner's response under 37 CFR 1.111) and then seeks review of the examiner's SNQ determination before the Board. In its appeal brief, the patent owner is to clearly present the issue and arguments regarding the examiner's SNQ determination under a separate heading and identify the communication in which the patent owner first requested reconsideration before the examiner. (For ex parte reexamination proceedings ordered prior
to June 25, 2010, if the patent owner presents the SNQ issue in its appeal brief, the Board panel will review the procedural SNQ issue along with its review of any rejections in an appeal and will enter a final agency decision accordingly.)
The final decision by the Board panel in the ex parte reexamination proceeding may include: (1) its review of the procedural SNQ issue in a separate section, and (2) its review of the merits of the rejections. See, e.g., In re Searles, 422 F.2d 431, 434-35 (C.C.P.A. 1970) (holding certain procedural matters that are “determinative of the rejection” are properly appealable to the Board); see also In re Hengehold, 440 F.2d 1395, 1404 (C.C.P.A. 1971) (“[T]he kind of adverse decisions of examiners which are reviewable by the board must be those which relate, at least indirectly, to matters involving the rejection of the claims.''); cf. 37 CFR 41.121 (providing both "substantive" motions and "miscellaneous," i.e., procedural motions, which may be decided together in a single decision).
The patent owner may file a single request for rehearing under 37 CFR 11.52 for both the decision on the SNQ issue and the merits decision on the examiner's rejections, resulting in a single final decision for purposes of judicial review. Judicial review of the Board's final decision issued pursuant to 35 U.S.C. 134, which will incorporate the decision on the finding of a SNQ, is directly to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. 141. See In re Hiniker Co., 150 F.3d 1362, 1367 (Fed. Cir. 1998) (“With direct review by this court of the Board's reexamination decisions, a patentee can be certain that it cannot be subjected to harassing duplicative examination.”); see also Heinl v. Godici, 143 F. Supp. 2d 593, 597-598 (E.D. Va. 2001).
VII. DEFECTIVE APPEAL BRIEF
Since May 25, 2010, the Patent Trial and Appeal Board, (Board), has the sole responsibility for determining whether appeal briefs filed in ex parte reexamination proceedings comply with 37 CFR 41.37, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. If the appeal brief is determined to be compliant with the rules or it contains only minor informalities that do not affect the Board panel’s ability to render a decision, the Board will accept the appeal brief and forward it to the examiner for consideration. If the Board determines that the appeal brief is non-compliant with 37 CFR 41.37 and sends appellant a notice of non-compliant brief requiring a corrected brief, appellant will be required to file a corrected brief within the time period set forth in the notice to avoid the dismissal of the appeal. The Board also has the sole responsibility for determining whether corrected briefs comply with 37 CFR 41.37, and addresses any inquiries and petitions regarding notices of non-compliant briefs.
Once an appeal brief is accepted by the Board as in compliance with 37 CFR 41.37, the appeal brief will not later be held as defective by the CRU or the examiner. The Board will not return or remand the proceeding to the examiner for issues related to a non-compliant appeal brief. Furthermore, examiners are not required to review appeal briefs for the purposes of determining whether the appeal briefs comply with 37 CFR 41.37. Accordingly, the
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Notification of Non-Compliant Appeal Brief (PTOL-462R) and form paragraphs for holding an appeal brief defective are no longer be available in OACS for the CRU to use.
Examiners are no longer to hold any appeal briefs defective. Rather, the Board will correspond directly with the appellant on non-compliant brief issues. In a rare situation where an appeal brief contains serious defects that will prevent the examiner from drafting an examiner’s answer, the examiner should report the issue to the Director of CRU who will communicate with the Board regarding the issue if appropriate.
In addition, examiners are not required to make any determination whether fewer than all of the rejected claims are identified by the appellant as being appealed. If the notice of appeal or appeal brief identifies fewer than all of the rejected claims as being appealed, the issue will be addressed by the Board panel. Therefore, the examiner will treat all pending, rejected claims as being on appeal, and the examiner must maintain all of the rejections set forth in the Office action from which the appeal is taken, unless appellant has overcome the rejection (e.g., by submitting persuasive arguments, an acceptable terminal disclaimer, or evidence). In situations where the appellant makes a request to hold a rejection in abeyance or did not present any argument on a rejection in the appeal brief, the examiner should maintain the rejection in the examiner’s answer.
The responsibility of the Board for determining whether appeal briefs comply with 37 CFR 41.37 is not considered a transfer of jurisdiction when an appeal brief is filed, but rather is only a transfer of the specific responsibility of notifying appellants under 37 CFR 41.37(d) of the reasons for non-compliance. The CRU retains the jurisdiction over the reexamination proceeding to consider the appeal brief, conduct a conference, draft an examiner’s answer, and decide the entry of amendments, evidence, and information disclosure statements filed after final or after the filing of a notice of appeal. Furthermore, petitions concerning the refusal to enter amendments and/or evidence remain delegated as per MPEP §§ 1002.02(b) and 1002.02(c). The jurisdiction of the ex parte reexamination proceeding is transferred to the Board
when a docketing notice is entered after the time period for filing a reply brief expires or the examiner acknowledges the receipt and entry of the reply brief.
It is to be noted that the mere filing of any paper whatsoever entitled as a brief cannot necessarily be considered as compliance with 37 CFR 41.37. The rule requires that the brief must set forth the authorities and arguments relied on, and to the extent that it fails to do so with respect to any ground of rejection, that ground may be summarily sustained. A distinction must be made between the lack of any argument and the presentation of arguments that carry no conviction. In the former case summarily sustaining the rejection is in order, while in the latter case a decision on the merits is made, although it may well be merely an affirmance based on the grounds relied on by the examiner.
Appellant must traverse every ground of rejection set forth in the final rejection that appellant is presenting for review in the appeal. Oral argument at the hearing will not remedy a deficiency of failure to traverse a ground of rejection in the brief. Ignoring or acquiescing in any rejection, even one based upon formal matters which could be cured by subsequent amendment, will invite summarily affirmance of the rejection.
The reexamination prosecution is considered terminated as of the date of the dismissal of the appeal. After the appeal is dismissed, the examiner will proceed to issue a Notice of Intent to Issue Ex Parte Reexamination Certificate for the proceeding; see MPEP § 2287.
2275 Examiner’s Answer [R-07.2015]
37 CFR 41.39 Examiner’s answer.
(a) Content of examiner's answer. The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief.
(1) An examiner's answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision), unless the examiner's answer expressly indicates that a ground of rejection has been withdrawn.
(2) An examiner's answer may include a new ground of rejection. For purposes of the examiner's answer, any rejection that relies upon any Evidence not relied upon in the Office action
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from which the appeal is taken (as modified by any advisory action) shall be designated by the primary examiner as a new ground of rejection. The examiner must obtain the approval of the Director to furnish an answer that includes a new ground of rejection.
(b) Appellant's response to new ground of rejection. If an examiner’s answer contains a rejection designated as a new ground of rejection, appellant must within two months from the date of the examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:
(1) Reopen prosecution . Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.
(2) Maintain appeal . Request that the appeal be maintained by filing a reply brief as set forth in § 41.41. Such a reply brief must address as set forth in § 41.37(c)(1)(iv) each new ground of rejection and should follow the other requirements of a brief as set forth in § 41.37(c). A reply brief may not be accompanied by any amendment, affidavit (§§ 1.131(a), 1.131(c), or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.
(c) Extensions of time . Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
MPEP § 1207 through § 1207.05 relate to preparation of examiner’s answers in appeals. The procedures covered in these sections apply to appeals in both patent applications and patents undergoing
ex parte reexamination proceedings, except as provided for in this Chapter. For example, there is no requirement for pre-appeal conferences in reexamination proceedings but there is a requirement for panel review of the examiner’s answer.
Where appellant files a timely reply brief to an examiner’s answer or a supplemental examiner’s answer, the examiner may (A) acknowledge receipt and entry of the reply brief, (B) reopen prosecution
to respond to the reply brief, or (C) furnish a supplemental examiner’s answer responding to any new issue raised in the reply brief (see MPEP § 1207.05 for information on supplemental examiner’s answer). See 37 CFR 41.43(a). A supplemental examiner’s answer responding to a reply brief may not include a new ground of rejection. See 37 CFR 41.43(a)(2). A supplemental examiner’s answer, other than to respond to any new issue raised in the reply brief, is not permitted unless the reexamination proceeding has been remanded by the Board for such purposes.
2276 Oral Hearing [R-08.2012]
If appellant (patent owner) desires an oral hearing, appellant must file a written request for such hearing accompanied by the fee set forth in 37 CFR 41.20(b)(3) within two months after the date of the examiner’s answer or supplemental examiner’s answer. The time for requesting an oral hearing may not be extended. 37 CFR 41.73(b). No appellant will be permitted to participate in an oral hearing unless he or she has requested an oral hearing and submitted the fee set forth in 37 CFR 41.20(b)(3).
Where the appeal involves reexamination proceedings, oral hearings are open to the public as observers (subject to the admittance procedures established by the Board), unless the appellant (A) petitions under 37 CFR 41.3 that the hearing not be open to the public, (B) presents sufficient reasons for such a request, (C) pays the petition fee set forth in 37 CFR 41.20(a), and (D) the petition is granted.
MPEP § 1209 relates to oral hearings in appeals in both patent applications and ex parte reexamination proceedings.
2277 Board Decision [R-11.2013]
MPEP § 1213 through § 1213.03 relate to decisions of the Board for both applications and ex parte reexamination proceedings.
2278 Action Following Decision [R-11.2013]
MPEP § 1214 through § 1214.07 provide the procedures to be followed after the conclusion of
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the appeal to the Board, for both patent applications and ex parte reexamination proceedings, except as provided for in this Chapter.
2279 Appeal to Courts [R-07.2015]
A patent owner who is not satisfied with the decision of the Board may seek judicial review.
The patent owner may appeal the decision of the Board only to the United States Court of Appeals for the Federal Circuit pursuant to 35 U.S.C. 141. This is based on the version of 35 U.S.C. 141 and 35 U.S.C. 145 as they were amended by Public Law 106-113. This version of 35 U.S.C. 141 and 35 U.S.C. 145 applies to appeals in reexamination, where the reexamination was filed in the Office on or after November 29, 1999 and the proceeding was commenced before September 16, 2012. See Section 13202(d) of Public Law 107-273. Similarly, 35 U.S.C. 141(b), as further amended by Public Law 112-29 (effective September 16, 2012), only provides for appeal of a final decision in a reexamination proceeding to the United States Court of Appeals for the Federal Circuit.
A third party requester of an ex parte reexamination may not seek judicial review. Yuasa Battery v. Comm’r, 3 USPQ2d 1143 (D.D.C. 1987).
While the reexamination statutory provisions do not provide for participation by any third party requester during any court review, the courts have permitted intervention by a third party requester in appropriate circumstances. See In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985) and Reed v. Quigg, 230 USPQ 62 (D.D.C. 1986). See also MPEP §§ 1216, 1216.01, and 1216.02. A third party requester who is permitted to intervene in a civil action has no standing to appeal the court’s decision, Boeing Co. v. Comm’r, 853 F.2d 878, 7 USPQ2d 1487 (Fed. Cir. 1988).
2280 Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302 [R-07.2015]
37 CFR 1.555 Information material to patentability in ex parte reexamination and inter partes reexamination proceedings.
(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective reexamination occurs when, at the time a reexamination proceeding is being conducted, the Office is aware of and evaluates the teachings of all information material to patentability in a reexamination proceeding. Each individual associated with the patent owner in a reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability in a reexamination proceeding. The individuals who have a duty to disclose to the Office all information known to them to be material to patentability in a reexamination proceeding are the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding. The duty to disclose the information exists with respect to each claim pending in the reexamination proceeding until the claim is cancelled. Information material to the patentability of a cancelled claim need not be submitted if the information is not material to patentability of any claim remaining under consideration in the reexamination proceeding. The duty to disclose all information known to be material to patentability in a reexamination proceeding is deemed to be satisfied if all information known to be material to patentability of any claim in the patent after issuance of the reexamination certificate was cited by the Office or submitted to the Office in an information disclosure statement. However, the duties of candor, good faith, and disclosure have not been complied with if any fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct by, or on behalf of, the patent owner in the reexamination proceeding. Any information disclosure statement must be filed with the items listed in § 1.98(a) as applied to individuals associated with the patent owner in a reexamination proceeding, and should be filed within two months of the date of the order for reexamination, or as soon thereafter as possible.
(b) Under this section, information is material to patentability in a reexamination proceeding when it is not cumulative to information of record or being made of record in the reexamination proceeding, and
(1) It is a patent or printed publication that establishes, by itself or in combination with other patents or printed publications, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the patent owner takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability of a claim pending in a reexamination proceeding is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration
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is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
(c) The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section and no evaluation will be made by the Office in the reexamination proceeding as to compliance with this section. If questions of compliance with this section are raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.552(c).
The duty of disclosure in reexamination proceedings filed under 35 U.S.C. 302 applies to the patent owner; to each attorney or agent who represents the patent owner, and to every other individual who is substantively involved on behalf of the patent owner. That duty is a continuing obligation on all such individuals throughout the proceeding. The continuing obligation during the reexamination proceeding is that any such individual to whom the duty applies who is aware of, or becomes aware of, patents or printed publications which (A) are material to patentability in a reexamination proceeding, and (B) which have not previously been made of record in the patent file, must bring such patents or printed publications to the attention of the Office.
Such individuals are strongly encouraged to file information disclosure statements in accordance with 37 CFR 1.98, within two months of the date of the order to reexamine, or as soon thereafter as possible, in order to bring the patents or printed publications to the attention of the Office. An information disclosure statement filed under 37 CFR 1.555 by the patent owner after the order for reexamination and before the first action on the merits may be submitted as part of the statement under 37 CFR 1.530, or it may be filed as a separate paper. If the information disclosure statement is filed as part of a statement under 37 CFR 1.530, the submission may include a discussion of the patentability issues in the reexamination. If, however, the submission is filed as a separate paper, not part of a statement under 37 CFR 1.530, the submission must be limited to a listing of the information disclosed and an explanation of its relevance. See 37 CFR 1.98. Any discussion of the information disclosed relating to patentability issues in the reexamination would be improper.
To comply with 37 CFR 1.98(a) as to documents cited in the patent or its parent applications that a party wishes to submit, the party must supply copies of the information. 37 CFR 1.98(a)(2) requires a legible copy of:
(1) each foreign patent;
(2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
(3) for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion;
(4) all other information or that portion which caused it to be listed.
The exception to the requirement for copies noted in 37 CFR 1.98(d) does not apply to ex parte and inter partes reexamination proceedings, since a
reexamination proceeding does not rely on the patent for an earlier effective filing date.
Any individual substantively involved in the reexamination proceeding filed under 35 U.S.C. 302 may satisfy his or her duty by disclosing the information to the attorney or agent having responsibility for the reexamination proceeding or to a patent owner acting in his or her own behalf. A patent owner may satisfy his or her duty by disclosing the information to the attorney or agent having responsibility for the reexamination proceeding. An attorney, agent, or patent owner who receives information has no duty to submit such information if it is not material to patentability in the reexamination proceeding. See 37 CFR 1.555(b) for the definition of “material to patentability.”
The responsibility of compliance with 37 CFR 1.555 rests on all such individuals. Any fraud practiced or attempted on the Office or any violation of the duty of disclosure through bad faith or intentional misconduct by any such individual results in noncompliance with 37 CFR 1.555(a). This duty of disclosure is consistent with the duty placed on patent applicants by 37 CFR 1.56. Any such issues raised by the patent owner or the third party requester
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during a reexamination proceeding will merely be noted as unresolved questions under 37 CFR 1.552(c).
All such individuals who fail to comply with 37 CFR 1.555(a) do so at the risk of diminishing the quality and reliability of the reexamination certificate issuing from the proceeding.
However, the material to patentability standard set forth in 37 CFR 1.52(b), which is applicable to patent applications, and not the standard set forth in 37 CFR 1.555(b), applies in ex parte reexamination proceedings ordered under 35 U.S.C. 257 (as a result of a supplemental reexamination proceeding). Like patent application examination, ex parte reexamination proceedings ordered under 35 U.S.C. 257 are not limited to patents and printed publications. In contrast, the material to patentability standard under 37 CFR 1.555(b), which is applicable to ex parte reexaminations filed under 35 U.S.C. 302, is limited to patents and printed publications. Any reference to “applicant” in 37 CFR 1.52(b) will be read as “patent owner” in the context of ex parte reexamination proceedings ordered under 35 U.S.C. 257, because these proceedings are only available to a patent owner. See MPEP § 2818.01; see also MPEP Chapter 2000.
See MPEP § 2282 ( ex parte reexamination) and MPEP § 2686 ( inter partes reexamination) for the patent owner’s duty to disclose prior or concurrent proceedings in which the patent is or was involved.
2281 Interviews in Ex Parte Reexamination Proceedings [R-07.2015]
37 CFR 1.560 Interviews in ex parte reexamination proceedings.
(a) Interviews in ex parte reexamination proceedings pending before the Office between examiners and the owners of such patents or their attorneys or agents of record must be conducted in the Office at such times, within Office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Director. Interviews for the discussion of the patentability of claims in patents involved in ex parte reexamination proceedings will not be conducted prior to the first official action. Interviews should be arranged in advance. Requests that reexamination requesters participate in interviews with examiners will not be granted.
(b) In every instance of an interview with an examiner in an ex parte reexamination proceeding, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the patent owner. An interview does not remove the necessity for response to Office actions as specified in § 1.111. Patent owner’s response to an outstanding Office action after the interview does not remove the necessity for filing the written statement. The written statement must be filed as a separate part of a response to an Office action outstanding at the time of the interview, or as a separate paper within one month from the date of the interview, whichever is later.
Interviews are permitted in an ex parte reexamination proceeding. In the ex parte proceeding, only ex parte interviews between the examiner and patent owner and/or the patent owner’s representative are permitted. Requests by third party requesters to participate in interviews or to attend interviews will not be granted. However, it is permitted for a Paralegal or Legal Instruments Examiner (or support staff in general) to telephone a requester to discuss a request that fails to comply with the filing date requirements for filing a reexamination request, because there is no reexamination proceeding yet.
In person interviews between examiner and the owners of patents undergoing ex parte reexamination or their attorneys or agents must be had in the Office at its Alexandria location or one of the Office’s satellite locations at such times, within Office hours when building security permits public admission, as the respective examiners may designate. Telephonic and videoconferencing interviews are permitted in ex parte reexamination proceedings according to the guidelines set forth in MPEP § 713.01 for ex parte prosecution of applications. See MPEP § 713.01 for more information on the general policies on how an interview may be conducted.
Where a panel review has been conducted for an action in a reexamination proceeding, every effort will be made to have the panel members present at an interview requested by the patent owner to discuss that action. An interview initiated by the examiner to obtain an amendment to render the reexamined claims patentable might not have the panel members participating in the interview.
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§ 2281CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
Interviews for the discussion of the patentability of claims in patents involved in reexamination proceedings will ordinarily not be had prior to the first Office action following the order for reexamination and any submissions pursuant to 37 CFR 1.530 and 1.535. Such interviews will be permitted prior to the first Office action only where the examiner initiates the interview for the purpose of providing an amendment which will make the claims patentable and the patent owner’s role is passive. The patent owner’s role (or patent owner’s attorney or agent) is limited to agreeing to the change or not. The patent owner should not otherwise discuss the case on the merits during this interview.
The patent owner’s questions on purely procedural matters may be answered by the examiner at any time during the proceeding.
Where any party who is not the patent owner requests information as to the merits of a reexamination proceeding, the examiner will not conduct an interview with that party to provide the information. Only questions on strictly procedural matters, i.e., not directed to any specific reexamination proceeding, may be discussed with that party. The party who is not the patent owner should be referred by the examiner to the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) to address any such questions on strictly procedural matters. See MPEP § 2212.01. The following guidelines are to be followed in determining whether a question is strictly directed to a procedural matter: (A) any information which a person could obtain by reading the file (which is open to the public) is procedural, and it may be discussed only to the extent of the information provided in the public file; (B) a matter not available from a reading of the file is considered as relating to the merits of the proceeding, and may not be discussed. Thus, for example, a question relating to when the next Office action will be rendered is improper as it relates to the merits of the proceeding (because this information cannot be obtained from a reading of the file). Such a question by a party who is not the patent owner should not be responded to by the examiner or any other official. As another example, a question regarding how the examiner is interpreting
a claim limitation relates to the merits of the proceeding, and may not be discussed. If the examiner has set forth an interpretation of a claim limitation in an Office action, the examiner may only quote the Office action. The interpretation may not be further discussed, because any further information cannot be obtained from a reading of the file.
The examiner must complete an Ex Parte Interview Summary form PTOL-474 for each interview held where a matter of substance has been discussed (see MPEP § 713.04). If practicable, a copy of the form should be given to the patent owner at the conclusion of the interview. The original should be made of record in the reexamination file, and a copy should be mailed to any third party requester and the patent owner, if not already provided with a copy.
The general procedure for conducting interviews and recording same is described at MPEP § 713.01 - § 713.04.
Pursuant to 35 U.S.C. 305, however, “[a]ll reexamination proceedings … will be conducted with special dispatch within the Office.” Accordingly, there are additional procedural requirements to facilitate the statutory mandate for “special dispatch.”
In the case where the patent owner desires to initiate an interview, the patent owner should initially contact the examiner in charge of the proceeding to indicate what issues are sought to be discussed, and to determine if an interview will be granted. If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement. The copy of these materials is to be submitted by facsimile transmission (FAX) directly to the examiner or hand-carried to the examiner so as to avoid the possibility of delay in matching the materials with the file. The informal copies that are considered by the examiner will be made of record in the reexamination proceeding as an attachment to the Interview Summary form PTOL-474 completed by the examiner after the interview. These preliminary steps are for the purpose of providing
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structure to the interview so as to facilitate the statutory mandate for special dispatch.
The duration of the interview will not exceed one hour, unless the patent owner files a petition under 37 CFR 1.182 showing sufficient cause where more time is needed. In a reexamination proceeding, the invention should be well defined after the patent has issued, and it is simply a matter of defining the claims over art applied, to the extent such is deemed necessary. An hour of time in a structured planned interview should be sufficient to accomplish this, and in those rare instances where it is not, a patent owner may show cause to extend the time. During the interview, the examiner is always free to extend the duration of the interview to discuss issues that the examiner deems appropriate for (further) discussion. Such an extension of the duration of the interview is permitted at the examiner’s sole discretion.
Only one interview may be requested after an Office action and prior to filing the response to that action, absent a showing of good cause to conduct a second interview during this period. The showing of good cause will explain why the information to be presented could not have been presented sooner, given the statutory requirement for "special dispatch" in reexamination. It is to be noted that a party requesting a second interview after final rejection must provide an advance showing that would "convince" a reasonable examiner that "it will expedite the issues for appeal or disposal of the application." See MPEP § 713.09.
PATENT OWNER’S STATEMENT OF THE INTERVIEW
In every instance of an interview with the examiner, a patent owner’s statement of the interview, including a complete written statement of the reasons presented at the interview as warranting favorable action, must be filed by the patent owner. 37 CFR 1.560(b). The written statement must be filed either as a separate paper within one month after the date of the interview, or as a separate part of a response to an outstanding Office action, whichever is later.
The requirement for a patent owner’s statement of the interview cannot be waived by the examiner. It
should be noted that, pursuant to 37 CFR 1.550(d), the failure to file a written statement of an interview as required under 37 CFR 1.560(b) will result in the termination of the reexamination prosecution (in the same way that failure to timely respond to an Office action results in the termination of the reexamination prosecution).
2282 Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon [R-07.2015]
37 CFR 1.565 Concurrent office proceedings which include an ex parte reexamination proceeding.
(a) In an ex parte reexamination proceeding before the Office, the patent owner must inform the Office of any prior or concurrent proceedings in which the patent is or was involved such as interferences, reissues, ex parte reexaminations, inter partes reexaminations, or litigation and the results of such proceedings. See § 1.985 for notification of prior or concurrent proceedings in an inter partes reexamination proceeding.
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It is important for the Office to be aware of any prior or concurrent proceedings in which a patent undergoing ex parte reexamination is or was involved, and any results of such proceedings. In accordance with 37 CFR 1.565(a), the patent owner is required to provide the Office with information regarding the existence of any such proceedings, and the results thereof, if known. This requirement includes supplemental examination proceedings and reviews before the Patent Trial and Appeal Board in addition to the examples provided in 37 CFR 1.565(a) reproduced above. Ordinarily, no submissions of any kind by third parties filed after the date of the order are entered into the reexamination or patent file while the reexamination proceeding is pending. However, in order to ensure a complete file, with updated status information regarding prior or concurrent proceedings regarding the patent under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file, copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent. Such decisions include final court decisions (even if the decision is still appealable), decisions to vacate, decisions to remand, and decisions as to the merits of the patent claims. Non-merit decisions on
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motions such as for a new venue, a new trial/discovery date, or sanctions will not be entered into the patent file, and will be expunged from the patent file by closing the appropriate paper if they were entered before discovery of their nature. Further, papers filed in the court from litigations or other proceedings involving the patent will not be entered into the record (and will be expunged if already entered) if they provide a party’s arguments, such as a memorandum in support of summary judgment. If the argument has an entry right in the reexamination proceeding, it must be submitted via the vehicle (provision(s) of the rules) that provides for that entry right. It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding number and its status. Any submission that is not permitted entry will be returned, expunged, or discarded, at the sole discretion of the Office. It is to be noted that if the Office, in its sole discretion, deems the volume of the papers filed from litigations or other proceedings to be too extensive/lengthy, the Office may return, expunge or discard, at its sole discretion, all or part of the submission. In such an instance, a party may limit the submission in accordance with what is deemed relevant, and resubmit the papers. Persons making such submissions must limit the submissions to the notification, and must not include further arguments or information. Where a submission is not limited to bare notice of the prior or concurrent proceedings (in which a patent undergoing reexamination is or was involved), the submission will be returned, expunged or discarded by the Office. It is to be understood that highlighting of certain text by underlining, fluorescent marker, etc., goes beyond bare notice of the prior or concurrent proceedings.
Any proper submission pursuant to 37 CFR 1.565(a) will be promptly entered into the record of the reexamination file, and will be considered by the examiner as to its content, when the proceeding comes up for action on the merits. Thus, for example, if the patent owner properly files in a reexamination proceeding, pursuant to 37 CFR 1.565(a), an enterable paper from the discovery stage of litigation of the patent being reexamined, the paper would be
entered into the reexamination file and considered by the examiner, the next time the proceeding comes up for action on the merits. See MPEP § 2286 for Office investigation for prior or concurrent litigation.
Form paragraph 22.07 or 22.08, if appropriate, may be used to remind the patent owner of the continuing duty under 37 CFR 1.565(a) to apprise the Office of any litigation activity.
¶ 22.07 Litigation Reminder (Patent Owner Request or Director Ordered Reexamination)
The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent No. [1] throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282 and 2286.
Examiner Note:
This form paragraph is to be used when granting an ex parte reexamination request filed by a patent owner and in the first action in a Director Ordered reexamination or reexamination ordered under 35 U.S.C. 257.
¶ 22.08 Litigation Reminder (Third Party Requester)
The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent No. [1] throughout the course of this reexamination proceeding. The third party requester is also reminded of the ability to similarly apprise the Office of any such activity or proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282 and 2286.
Examiner Note:
This form paragraph is to be used when granting an ex parte reexamination request filed by a third party requester.
2283 Multiple Copending Ex Parte Reexamination Proceedings [R-07.2015]
37 CFR 1.565 Concurrent Office proceedings which include an ex parte reexamination proceeding.
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(c) If ex parte reexamination is ordered while a prior ex parte reexamination proceeding is pending and prosecution in the prior ex parte reexamination proceeding has not been terminated, the ex parte reexamination proceedings will usually be merged and result in the issuance and publication of a single certificate under § 1.570. For merger of inter partes reexamination proceedings, see § 1.989(a). For merger of ex parte reexamination and inter partes reexamination proceedings, see § 1.989(b).
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This section discusses multiple copending reexamination requests which are filed on the same patent, where none of the requests is an inter partes request. If one of the multiple copending reexamination requests is an inter partes request, see MPEP § 2686.01.
In order for a second or subsequent request for ex parte reexamination to be granted, a substantial new question of patentability must be raised by the art (patents and/or printed publications) cited in the second or subsequent request for reexamination. MPEP § 2240 provides a discussion as to whether a substantial new question of patentability is raised by the prior art cited in a second or subsequent request for reexamination filed while a reexamination proceeding is pending.
If the second or subsequent request is granted, the decision on whether or not to combine the proceedings will be made by the Central Reexamination Unit (CRU) Director where the reexamination is pending. The CRU Director may delegate this to the CRU Supervisory Patent Reexamination Specialist (SPRS). No decision on combining the reexaminations should be made until after reexamination is actually ordered in the later filed request for reexamination. See subsection I below.
I. PROCEEDINGS MERGED
Where a second request for reexamination is filed and reexamination is ordered, and a first reexamination proceeding is pending, 37 CFR 1.565(c) provides that the proceedings will usually be merged. However, a decision not to merge is within the sole discretion of the Office to facilitate/carry out the statutory mandate of 35 U.S.C. 305 to conduct reexamination proceedings with “special dispatch.”
Where a second request for reexamination is filed while a first reexamination proceeding is pending, the second request is decided based on the claims in effect at the time of the determination (see 37 CFR 1.515(a)), and if reexamination is ordered, the patent owner and the second requester are given an opportunity to file a statement and reply, respectively. It is then considered whether the
proceedings will, or will not, be merged. If the proceedings are merged, the prosecution will then continue at the most advanced point possible for the first proceeding. It should be noted that if a final rejection has been issued in the first proceeding, prosecution will be ordinarily be reopened where any of the new patents or printed publications presented in the second request are applied to the merged proceeding in a new ground of rejection.
The patent owner will be provided with an opportunity to respond to any new rejection in a merged reexamination proceeding prior to the action being made final. See MPEP § 2271. If the reexamination proceedings are merged, a single certificate will be issued based upon the merged proceedings. See 37 CFR 1.565(c).
II. WHEN PROCEEDING IS SUSPENDED
It may also be desirable in certain situations to suspend a proceeding for a short and specified period of time. For example, a suspension of a first reexamination proceeding may be issued to allow time for the patent owner’s statement and the requester’s reply in a second proceeding prior to merging. A suspension will only be granted in extraordinary instances, because of the statutory requirements that examination proceed with “special dispatch.” Suspension will not be granted when there is an outstanding Office action.
III. MERGER OF REEXAMINATIONS
The following guidelines should be observed when two requests for reexamination directed to a single patent have been filed.
The second request (i.e., Request 2) should be processed as quickly as possible and assigned to the same examiner to whom the first request (i.e., Request 1) is assigned. If neither request for reexamination has been ordered, the examiner must address each request within three months of its filing date. If Request 1 has been ordered, Request 2 should be decided immediately. If Request 2 is denied, ex parte prosecution of Request 1 should continue. If Request 2 is granted, the order in the second proceeding should be mailed immediately. The two proceedings should not be acted upon until the patent
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owner’s statement and any reply by the requester have been received in Request 2, or until the time for filing same expires. Then, the CRU Director or the CRU Director’s delegate will prepare a decision whether to merge the two proceedings.
A decision by the CRU Director to merge the reexamination proceedings should include a requirement that the patent owner maintain identical claims in both files. It will further require that responses by the patent owner, and any other paper filed in the merged proceeding, must consist of a single response, addressed to both files, filed in duplicate, each bearing a signature and containing identifying data for both files, for entry in both files. The decision will point out that both files will be maintained as separate complete files. Where the claims are not the same in both files, the decision of merger will indicate at its conclusion that the patent owner is given one month to provide an amendment to make the claims the same in each file. Where the claims are already the same in both files, the decision will indicate at its conclusion that an Office action will be mailed in due course, and that the patent owner need not take any action at present. The decision of merger will be mailed immediately.
Where the merger decision indicates that an Office action will follow, the merged proceeding is returned to the examiner immediately after the decision to issue an Office action. Where the merger decision indicates that the patent owner is given one month to provide an amendment to make the claims the same in each file (identical amendments to be placed in all files), the CRU will await submission of the amendment or the expiration of the time to submit the amendment. After the amendment is received and processed by the technical support staff or the time for submitting the amendment expires, the merged proceeding will be returned to the examiner to issue an Office action.
Once the merged proceeding is returned to the examiner for issuance of an Office action, the examiner should prepare an Office action at the most advanced point possible for the first proceeding. Thus, if the first proceeding is ready for a final rejection and the second proceeding does not provide any new information which would call for a new ground of rejection, the examiner should issue a final
rejection for the merged proceeding using the guidelines for the prosecution stage set forth below.
If the ex parte prosecution stage has not yet begun in Request 1 when Request 2 is received, Request 1 should be processed to the point where it is ready for ex parte prosecution. Then, Request 1 is normally not acted upon until Request 2 is granted and is ready for ex parte action following the statement and reply. Thereafter, the two proceedings would be merged. However, if Request 2 is denied, there would be no merger and prosecution will be carried out solely on Request 1. Note that Request 2 should be determined on its own merits and should not rely on nor refer to the decision issued in Request 1.
In the event that an amendment to make the claims the same in each file is required by the merger decision (identical amendments to be placed in all files) but is not timely submitted, any claim that does not contain identical text in all of the merged proceedings (or is present in one proceeding but not present in the other(s)) should be rejected under 35 U.S.C. 112, second paragraph, as being indefinite as to the content of the claim, and thus failing to particularly point out the invention.
IV. THE PROSECUTION STAGE, AFTER MERGER
Where merger is ordered, the patent owner is required to maintain identical amendments in the merged reexamination files for purposes of the merged proceeding. The maintenance of identical amendments in the files is required as long as the reexamination proceedings remain merged. Where identical amendments are not present in the reexamination files at the time merger is ordered, the patent owner will be required to submit an appropriate “housekeeping” amendment placing the same amendments in the proceedings. This may be accomplished by amending one or more of the proceedings, as appropriate. The patent owner must not address any issue of patentability in the housekeeping amendment. In the event that an amendment to make the claims the same in each file is required by the merger decision (identical amendments to be placed in all files) but is not timely submitted, any claim that does not contain
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identical text in all of the merged proceedings should be rejected under 35 U.S.C. 112, second paragraph, as being indefinite as to the content of the claim, and thus failing to particularly point out the invention.
When prosecution is appropriate in merged proceedings, a single combined examiner’s action will be prepared. Each action will contain the control number of the two proceedings on every page. A single action cover mailing sheet (having both control numbers at the top) will be provided by the examiner to the support staff. The support staff will ensure that the action is processed and mailed to the patent owner and to each of the requesters, that the action cover mailing sheets accurately reflect the mailing to each of these parties, that all parties receive copies of the action, the cover mailing sheets, and any other attachments, and that the entire action, including the mailing sheets and any other attachments, is scanned into the file of the Image File Wrapper (IFW) database.
When a “Notice Of Intent To Issue Ex Parte Reexamination Certificate” (NIRC) is appropriate, a notice will be printed for the merged proceeding and scanned into the files of the merged proceeding. Both reexamination files will then be processed. The TC or the CRU should prepare the file of the concurrent proceedings in the manner specified in MPEP § 2287 before release to Office of Data Management.
The above guidelines should be extended to those situations where more than two requests for reexamination are filed for a single patent.
V. PROCEEDINGS NOT MERGED
Pursuant to 35 U.S.C. 305, “[a]ll reexamination proceedings under this section…will be conducted with special dispatch within the Office.” This statutory provision is grounded on the need for certainty and finality as to the question of patentability raised by the request for reexamination. Thus, if a second request for reexamination will unduly delay the first reexamination proceeding, the two proceedings generally will not be merged. If the Office were to merge the two proceedings, the first reexamination proceeding would need to be withdrawn from its place in the process, thus
delaying, instead of advancing, prosecution. This would run contrary to the statutory “special dispatch” requirement of 35 U.S.C. 305 and its intent. On the other hand, if the Office does not merge, the first reexamination proceeding can be concluded, and any substantial new question of patentability raised by the second reexamination request can be resolved in the second proceeding, with no delay resulting. The second request is then considered based on the claims in the patent as indicated in the issued reexamination certificate, rather than the original claims of the patent. However, the Office always retains the authority to merge because in some instances, it may be more efficient to merge the two proceedings, which would foster “special dispatch.” The instances where the Office may, or may not, merge an ongoing reexamination proceeding with a subsequent reexamination proceeding, are addressed on a case-by-case basis.
For processing of the second reexamination proceeding, see MPEP § 2295.
VI. FEES IN MERGED PROCEEDINGS
Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., excess claim fee, fee for request for extension of time, petition fee, appeal fee, brief fee, oral hearing fee), only a single fee need be paid. For example, only one fee need be paid for an appeal brief even though the brief relates to merged multiple proceedings and copies must be filed for each file in the merged proceeding.
VII. PETITION TO MERGE MULTIPLE COPENDING REEXAMINATION PROCEEDINGS
No petition to merge multiple reexamination proceedings is necessary since the Office will generally, sua sponte, make a decision as to whether it is appropriate to merge the multiple reexamination proceedings. If any petition to merge the proceedings is filed prior to the determination (37 CFR 1.515) and order to reexamine (37 CFR 1.525) on the second request, it will not be considered but will be returned to the party submitting the same by the CRU Director. The decision expunging such a premature petition will be made of record in both reexamination files. See MPEP § 2267.
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While the patent owner can file a petition to merge the proceedings at any time after the order to reexamine (37 CFR 1.525) on the second request, the better practice is to include any such petition with the patent owner’s statement under 37 CFR 1.530 or subsequent thereto in the event the CRU Director has not acted prior to that date to merge the multiple reexamination proceedings. The third party requester of a reexamination proceeding (reexamination # 1) does not have a right to file a petition under 37 CFR 1.182 to merge that reexamination proceeding with another reexamination proceeding (reexamination # 2), where that reexamination third party requester does not have any standing to request relief with respect to the other reexamination proceeding (reexamination # 2). No such standing is provided for anywhere in the statute. Instead of filing a petition under 37 CFR 1.182 to merge the reexamination proceedings, the third party requester may file a notification of concurrent proceedings pursuant to MPEP § 2282. After being notified of the existence of the concurrent reexamination proceedings and after consideration of the merger and suspension options becomes ripe, the Office would sua sponte consider any action to be taken. The requester does have the right to file a petition under 37 CFR 1.182 to stay the reexamination proceeding that it requested.
All decisions on the merits of petitions to merge multiple reexamination proceedings will be made by the CRU Director (or to the CRU SPRS, if the CRU Director delegates it to him or her).
2284 Copending Ex Parte Reexamination and Interference Proceedings [R-11.2013]
37 CFR 1.565 Concurrent office proceedings which include an ex parte reexamination proceeding.
(a) In an ex parte reexamination proceeding before the Office, the patent owner must inform the Office of any prior or concurrent proceedings in which the patent is or was involved such as interferences, reissues, ex parte reexaminations, inter partes reexaminations, or litigation and the results of such proceedings. See § 1.985 for notification of prior or concurrent proceedings in an inter partes reexamination proceeding.
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(e) If a patent in the process of ex parte reexamination is or becomes involved in an interference, the Director may suspend the reexamination or the interference. The Director will
not consider a request to suspend an interference unless a motion (§ 41.121(a)(3) of this title) to suspend the interference has been presented to, and denied by, an administrative patent judge, and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set. For concurrent inter partes reexamination and interference of a patent, see § 1.993.
37 CFR 41.8 Mandatory notices.
(a) In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the initiation of a contested case (§ 41.101), and within 20 days of any change during the proceeding, a party must identify:
(1) Its real party-in-interest, and
(2) Each judicial or administrative proceeding that could affect, or be affected by, the Board proceeding.
(b) For contested cases, a party seeking judicial review of a Board proceeding must file a notice with the Board of the judicial review within 20 days of the filing of the complaint or the notice of appeal. The notice to the Board must include a copy of the complaint or notice of appeal. See also §§ 1.301 to 1.304 of this title.
37 CFR 41.102 Completion of examination.
Before a contested case is initiated, except as the Board may otherwise authorize, for each involved application and patent:
(a) Examination or reexamination must be completed, and
(b) There must be at least one claim that:
(1) Is patentable but for a judgment in the contested case, and
(2) Would be involved in the contested case.
37 CFR 41.103 Jurisdiction over involved files.
The Board acquires jurisdiction over any involved file when the Board initiates a contested case. Other proceedings for the involved file within the Office are suspended except as the Board may order.
A patent being reexamined in an ex parte reexamination proceeding may be involved in an interference proceeding with at least one application, where the patent and the application are claiming the same patentable invention, and at least one of the application’s claims to that invention are patentable to the applicant. See MPEP Chapter 2300.
The general policy of the Office is that a reexamination proceeding will not be delayed, or stayed, because of an interference or the possibility of an interference. The reason for this policy is the requirement of 35 U.S.C. 305 that all reexamination proceedings be conducted with “special dispatch”
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within the Office. In general, the Office will follow the practice of making the required and necessary decisions in the reexamination proceeding and, at the same time, going forward with the interference to the extent desirable. It is noted that 37 CFR 41.103 provides the Board with the flexibility to tailor a specific solution to occurrences where reexamination and interference proceedings for the same patent are copending, as such occurrences may arise. Decisions in the interference will take into consideration the status of the reexamination proceeding and what is occurring therein. The decision as to what actions are taken in the interference will, in general, be taken in accordance with normal interference practice.
Although a patent being reexamined via a reexamination proceeding may become involved in an interference proceeding, the reexamination proceeding itself can never be involved in an interference proceeding. See 35 U.S.C. 135 subsection (a) which states that “[w]henever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an
interference may be declared” (emphasis added). The reexamination proceeding is neither an application nor a patent.
I. ATTEMPTING TO PROVOKE AN INTERFERENCE WITH A PATENT INVOLVED IN A REEXAMINATION PROCEEDING
When an amendment is filed in a pending application seeking to provoke an interference with a patent involved in a reexamination proceeding, the applicant must comply with 37 CFR 41.202(a), including identifying the patent under reexamination with which interference is sought. The corresponding application claims may be rejected on any applicable ground including, if appropriate, the prior art cited in the reexamination proceeding. See MPEP Chapter 2300. Prosecution of the application should continue as far as possible. If the application is placed in condition for allowance and still contains claims which interfere with claims of the patent under reexamination, then an interference should ordinarily be proposed between the application and the patent. The examiner must notify the Office of Patent Legal Administration (OPLA) before proposing the
interference, and such an interference may not be proposed unless authorized by OPLA.
If the interference is not authorized (e.g., resolution of an issue in the reexamination proceeding is necessary to the interference), further action on the application should be suspended until the certificate on the reexamination proceeding has been issued and published. Form paragraph 23.16 may be used to notify applicant of the suspension.
Once the reexamination certificate has issued and published, the examiner should review the certificate to see if it makes any changes in the patent claims and then evaluate whether the patent still contains claims which interfere with claims of the application. If the claims do interfere, then the examiner should propose an interference. See MPEP Chapter 2300.
II. MOTION/REQUEST TO SUSPEND INTERFERENCE PENDING THE OUTCOME OF A REEXAMINATION PROCEEDING
A miscellaneous motion under 37 CFR 41.121(a)(3) to suspend an interference pending the outcome of a reexamination proceeding may be made at any time during the interference by any party thereto. See 37 CFR 41.123(b) for the procedure. The motion must be presented to the administrative patent judge who will decide the motion based on the particular fact situation. However, suspension is not favored. Normally, no consideration will be given such a motion unless and until a reexamination order is issued, nor will suspension of the interference normally be permitted until after any motions have been disposed of in the interference proceeding. If the motion under 37 CFR 41.121(a)(3) is denied by the administrative patent judge, a request to stay the interference may be made to the Director of the USPTO under 37 CFR 1.565(e).
A request to stay an interference under 37 CFR 1.565(e) will be decided by the Chief Administrative Patent Judge of the Board.
III. REQUEST FOR REEXAMINATION FILED DURING INTERFERENCE
In view of the provisions of 37 CFR 1.510(a), “[a]ny person may, at any time during the period of
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enforceability of a patent” file a request for reexamination. Under 37 CFR 41.8(a), the patent owner must notify the Board that a request for reexamination was filed, within 20 days of receiving notice of the request having been filed. Where it is the patent owner that files the request for reexamination, the 20 days run from the filing date of the request, since that is when the patent owner “received the notice” of filing the request. Such requests for reexamination will be processed in the normal manner. No delay, or stay, of the reexamination will occur because the requester is not a party to the interference. If the examiner orders reexamination pursuant to 37 CFR 1.525 and subsequently rejects a patent claim corresponding to a count in the interference, the attention of the Board shall be called thereto.
IV. INTERFERENCE DECLARED WHILE REEXAMINATION PROCEEDING IS ONGOING
Under 37 CFR 1.565, the patent owner in a reexamination proceeding before the Office is required to notify the Office when the patent being reexamined becomes involved in an interference. To do so, the patent owner must file in the reexamination proceeding a paper giving notice of the interference proceeding. The requirements of 37 CFR 1.565, and of 37 CFR 41.8(a) (see the preceding paragraph), are designed to keep the Office and the appropriate parties informed of activity which is relevant to reexamination and interference proceedings and, to the extent possible, to eliminate procedural surprise.
V. PETITION TO STAY REEXAMINATION PROCEEDING BECAUSE OF INTERFERENCE
Any petition to stay a reexamination proceeding, because of an interference, which is filed prior to the determination (37 CFR 1.515) and order to reexamine (37 CFR 1.525) will not be considered, but will be returned to the party submitting the same. The decision returning such a premature petition will be made of record in the reexamination file, but no copy of the petition will be retained by the Office. A petition to stay the reexamination proceeding because of the interference may be filed by the patent owner as a part of the patent owner’s statement under 37 CFR 1.530 or subsequent thereto. If a party to
the interference, other than the patent owner, is a requester of the reexamination, that party may petition to stay the reexamination proceeding as a part of a reply pursuant to 37 CFR 1.535. If the other party to the interference is not the requester, any petition by that party is improper under 37 CFR 1.550(g) and will not be considered. Any such improper petitions will be returned to the party submitting the same. Premature petitions to stay the reexamination proceedings, i.e., those filed prior to the determination (37 CFR 1.515) and order to reexamine (37 CFR 1.525), will be returned by the Central Reexamination Unit (CRU) or Technology Center (TC) Director as premature. Petitions to stay filed subsequent to the date of the order for reexamination will be referred to OPLA for decision. All decisions on the merits of petitions to stay a reexamination proceeding because of an interference will be made in OPLA.
VI. ACTION IN INTERFERENCE FOLLOWING REEXAMINATION
If one or more claims of a patent which is involved in an interference are canceled or amended by the issuance and publication of a reexamination certificate, the Board must be promptly notified.
Upon issuance and publication of the reexamination certificate, the patent owner must notify the administrative patent judge thereof.
2285 Copending Ex Parte Reexamination and Reissue Proceedings [R-07.2015]
37 CFR 1.565 Concurrent office proceedings which include an ex parte reexamination proceeding.
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(d) If a reissue application and an ex parte reexamination proceeding on which an order pursuant to § 1.525 has been mailed are pending concurrently on a patent, a decision will usually be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an ex parte reexamination proceeding is ordered, the merged examination will be conducted in accordance with §§ 1.171 through 1.179, and the patent owner will be required to place and maintain the same claims in the reissue application and the ex parte reexamination proceeding during the pendency of the merged proceeding. The examiner’s actions and responses by the patent owner in a merged proceeding will apply to both the reissue application and the ex parte reexamination proceeding and will be physically entered into both files. Any ex parte reexamination proceeding merged
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with a reissue application shall be concluded by the grant of the reissued patent. For merger of a reissue application and an inter partes reexamination, see § 1.991.
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The general policy of the Office is that a reissue application examination and an ex parte reexamination proceeding will not be conducted separately at the same time as to a particular patent. The reason for this policy is to permit timely resolution of both proceedings to the extent possible and to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two proceedings on behalf of the patent owner. Accordingly, if both a reissue application and an ex parte reexamination proceeding are pending concurrently on a patent, a decision will normally be made (A) to merge the two proceedings or (B) to stay one of the two proceedings. See In re Onda, 229 USPQ 235 (Comm’r Pat. 1985). The decision as to whether the proceedings are to be merged, or which proceeding (if any) is to be stayed is made in the Office of Patent Legal Administration (OPLA).
Where a reissue application and a reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of such. 37 CFR 1.178(b), 1.565(a), and 1.985. The patent owner should file in the reissue application, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.178(b) in order to notify the Office in the reissue application of the existence of the reexamination proceeding on the same patent. See MPEP § 1418. In addition, the patent owner should file in the reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.565(a) or 1.985 (depending on whether the reexamination proceeding is an ex parte reexamination proceeding or an inter partes reexamination proceeding) to notify the Office in the reexamination proceeding of the existence of the two concurrent proceedings.
I. TIME FOR MAKING DECISION ON MERGING OR STAYING THE PROCEEDINGS
A decision whether or not to merge the reissue application examination and the ex parte reexamination proceeding, or to stay one of the two proceedings, will not be made prior to the mailing
of an order to reexamine the patent pursuant to 37 CFR 1.525, and the expiration of the statement-reply period following the order to reexamine. Until such time, the examination of the reissue application will proceed. A determination on the request must not be delayed because of the existence of a copending reissue application, since 35 U.S.C. 304 and 37 CFR 1.515 require a determination within 3 months following the filing date of the request. See MPEP § 2241. If the decision on the request denies reexamination (MPEP § 2247), the examination of the reissue application should be continued. If reexamination is ordered (MPEP § 2246), the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center Quality Assurance Specialist (QAS) will await the filing of any statement under 37 CFR 1.530 and any reply under 37 CFR 1.535, or the expiration of the time for same (see MPEP § 2249 to § 2251). Thereafter, CRU SPRS or TC QAS should promptly notify OPLA that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA.
If a reissue application is filed during the pendency of a reexamination proceeding, OPLA should be notified as promptly as possible after the reissue application reaches the TC, that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to the OPLA at the time of the notification to OPLA.
The decision on whether or not the proceedings are to be merged, or which proceeding (if any) is to be stayed, will generally be made as promptly as possible after receipt of the notification to OPLA and, if applicable, delivery of all the paper files to OPLA. Until a decision is mailed merging the proceedings or staying one of the proceedings, the two proceedings will continue and be conducted simultaneously, but separately.
The Office may in certain situations issue a certificate at the termination of a reexamination prosecution, even if a copending reissue application
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or another reexamination request has already been filed.
II. CONSIDERATIONS IN DECIDING WHETHER TO MERGE THE PROCEEDINGS OR WHETHER TO STAY A PROCEEDING
The decision on whether to merge the proceedings or stay a proceeding will be made on a case-by-case basis based upon the status of the various proceedings. The decision to merge, or not to merge, is within the sole discretion of the Office to facilitate/carry out the orderly operation of the Office in addressing the proceedings. The status of the reissue application and the reexamination proceeding will be taken into account in the decision as to whether merger will be ordered, or one of the two proceedings stayed.
A. Reissue About To Issue, Reexamination Requested
If the reissue patent will issue before the determination on the reexamination request must be made (e.g., within three months from the request’s filing date), the determination on the request should normally be delayed until after the granting of the reissue patent; and then the determination should be made on the basis of the claims in the reissue patent. The reexamination, if ordered, would then be on the reissue patent claims rather than the original patent claims. Since the reissue application would no longer be pending, the reexamination would be processed in a normal manner.
Where a reissue patent has been issued, the determination on the request for reexamination should specifically point out that the determination has been made on the claims of the reissue patent and not on the claims of the original patent. Any amendment made in the reexamination proceeding should treat the changes made by the reissue as the text of the patent, and all bracketing and underlining made with respect to the patent as changed by the reissue. Note that the reissue claims used as the starting point in the reexamination proceeding must be presented in the reexamination proceeding as a “clean copy.” Thus, words bracketed in the reissue patent claim(s) would not appear at all in the reexamination clean copy of the claim(s). Also, words that were added via the reissue patent will
appear in italics in the reissue patent, but must appear in plain format in the reexamination clean copy of the claim(s).
If a reissue patent issues on the patent under reexamination after reexamination is ordered, the next action from the examiner in the reexamination should point out that further proceedings in the reexamination will be based on the claims of the reissue patent and not on the patent surrendered. Form paragraph 22.05 may be used in the Office action.
¶ 22.05 Reexamination (Ex Parte or Inter Partes) Based on Reissue Claims
In view of the surrender of original Patent No. [1] and the granting of Reissue Patent No. [2] which issued on [3], all subsequent proceedings in this reexamination will be based on the reissue patent claims.
Where the reissue patent has issued prior to the filing of a request for reexamination of the parent patent, see MPEP § 2258.
B. Reissue Pending, Reexamination Request Filed
Where a reissue patent will not be granted prior to the expiration of the 3-month period for making the determination on the reexamination request, a decision will be made as to whether the reissue application and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed, after an order to reexamine has been issued.
The general policy of the Office is to merge the more narrow reexamination proceeding with the broader reissue application examination whenever it is desirable to do so in the interests of expediting the conduct of both proceedings. In making a decision on whether or not to merge the reissue application and the reexamination proceeding, consideration will be given to the status of the reissue application examination at the time the order for reexamination of the patent pursuant to 37 CFR 1.525 is mailed. For example, if examination of the reissue application has not begun, or if a rejection by the primary examiner has not been appealed to the Board pursuant to 37 CFR 41.31, it is likely that the OPLA will order a merger of the reissue application examination and the reexamination proceeding. If,
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however, the reissue application is on appeal to the Board or the courts, that fact would be considered in making a decision whether to merge the reissue application and the reexamination proceeding or stay one of them. See In re Stoddard, 213 USPQ 386 (Comm’r Pat. 1982); and In re Scragg, 215 USPQ 715 (Comm’r Pat. 1982).
If such a merger of the reissue application and the reexamination proceeding is ordered, the order merging them will also require that the patent owner place the same claims in the reissue application and in the reexamination proceeding for purposes of the merged proceedings.An amendment may be required to be filed to do this within a specified time set in the order merging the proceedings.
If the reissue application examination has progressed to a point where a merger of the two proceedings is not desirable at that time, then the reexamination proceeding will generally be stayed until the reissue application examination is complete on the issues then pending. After completion of the examination on the issues then pending in the reissue application examination, the stay of the reexamination proceeding will be removed and the proceedings will be merged if the reissue application is pending, or the reexamination proceeding will be conducted separately if the reissue application has become abandoned. The reissue application examination will be reopened, if necessary, for merger of the reexamination proceeding therewith.
If the reissue application examination and the reexamination proceeding are merged, the issuance of the reissue patent will also serve as the certificate under 37 CFR 1.570 and the reissue patent will so indicate.
C. Reexamination Proceedings Underway, Reissue Application Filed
When a reissue application is filed after an ex parte reexamination request has been filed, OPLA should be notified as promptly as possible after the reissue application reaches the TC. A determination will be made as to whether reexamination should be ordered. If reexamination is ordered, no first Office action will accompany the decision ordering reexamination.
The order and any of the files that are paper files should then be hand delivered to OPLA.
Where reexamination has already been ordered prior to the filing of a reissue application, OPLA should be notified as promptly as possible after the reissue application reaches the TC, that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to the OPLA at the time of the notification to OPLA.
In making a decision on whether or not to merge the reissue application examination and the reexamination proceeding, consideration will be given as to whether issues are raised in the reissue application that would not be proper for consideration in reexamination. In addition, consideration will also be given to the status of the reexamination proceeding. For example, if the reexamination proceeding is on appeal to the Board or to the U.S. Court of Appeals for the Federal Circuit, or a Notice of Intent to Issue a Reexamination Certificate was issued for the reexamination, that fact would be considered in making a decision whether to merge the reissue application examination and the reexamination proceeding or stay one of them.
III. EXAMINER ASSIGNMENT
With respect to the appropriate examiner assignment of the merged reexamination/reissue proceeding, see MPEP § 2236.
IV. CONDUCT OF MERGED REISSUE APPLICATION AND REEXAMINATION PROCEEDING
Where merger is ordered, the patent owner is required to maintain identical amendments in the reissue application and the reexamination file for purposes of the merged proceeding. The maintenance of identical amendments in both files is required as long as the reissue and reexamination proceedings remain merged. See 37 CFR 1.565(d). Where identical amendments are not present in both files at the time merger is ordered, the patent owner will be required to submit an appropriate “housekeeping”
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amendment placing the same amendments in both proceedings. This may be accomplished by amending either of the two proceedings (the reissue application or the reexamination) or both of them, as appropriate. The patent owner must not address any issue of patentability in the housekeeping amendment. Amendments in a merged reexamination/reissue proceeding are submitted under 37 CFR 1.173, in accordance with reissue practice.
Where the merger decision indicates that an Office action will follow, the merged proceeding is returned to the examiner immediately after the decision to issue an Office action. Where the merger decision indicates that the patent owner is given one month to provide an amendment to make the claims the same in each file (identical amendments to be placed in all files), the CRU SPRS or TC QAS will retain jurisdiction over the merged reexamination proceeding to await submission of the amendment or the expiration of the time to submit the amendment. After the amendment is received and processed by the technical support staff or the time for submitting the amendment expires, the merged proceeding will be returned to the examiner to issue an Office action.
Once the proceeding is returned to the examiner for issuance of an Office action, the examiner should prepare an Office action at the most advanced point possible for the first proceeding. Thus, if the first proceeding is ready for a final rejection and the second proceeding does not provide any new information which would call for a new ground of rejection, the examiner should issue a final rejection for the merged proceeding.
In the event that a “housekeeping” amendment to make the claims the same in each file is required by the merger decision (identical amendments to be placed in all files) but is not timely submitted, any claim that does not contain identical text in all of the merged proceedings should be rejected under 35 U.S.C. 112,second paragraph, as being indefinite as to the content of the claim, and thus failing to particularly point out the invention.
If a reissue application examination and a reexamination proceeding are merged, the merged examination will be conducted on the basis of the
rules relating to the broader reissue application examination. Amendments should be submitted in accordance with the reissue practice under 37 CFR 1.121(i) and 37 CFR 1.173; see MPEP § 1453. The examiner, in examining the merged proceeding, will apply the reissue statute, rules, procedures, and case law to the merged proceeding. This is appropriate in view of the fact that the statutory provisions for reissue applications and reissue application examination include provisions equivalent to 35 U.S.C. 305 relating to the conduct of reexamination proceedings.
In any merged reissue application and reexamination proceeding, each Office action issued by the examiner will take the form of a single action which jointly applies to both the reissue application and the reexamination proceeding. Each action will contain identifying data for both the reissue application and the reexamination proceeding, and each action will be physically entered into both files, which will be maintained as separate files.
Any response by the applicant/patent owner in such a merged proceeding must consist of a single response, filed in duplicate for entry in both files (or provide multiple copies if there are multiple reexamination proceedings being merged with a reissue application), and service of a copy must be made on any third party reexamination requester. A copy of all Office actions will be mailed to the third party reexamination requester but not to any other third party.
If the applicant/patent owner in such a merged proceeding fails to file a timely and appropriate response to any Office action, then the merger will be automatically dissolved (severed). The reissue application will be held abandoned. A NIRC will be issued (see MPEP § 2287), and the Director will proceed to issue a reexamination certificate under 37 CFR 1.570 in accordance with the last action of the Office, unless further action is clearly needed in view of the difference in rules relating to reexamination and reissue proceedings.
If the applicant/patent owner in a merged proceeding files an express abandonment of the reissue application pursuant to 37 CFR 1.138, the next Office action of the examiner will accept the express
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abandonment, dissolve the merged proceeding, and continue the reexamination proceeding. If the applicant/patent owner files a continued prosecution reissue application (a CPA) of a reissue design application under 37 CFR 1.53(d), whereby the existing reissue design application is considered to be expressly abandoned, this will most likely result in the dissolution of the merged proceeding, a stay of the CPA reissue application, and separate, continued prosecution of the reexamination proceeding.
Where the merged proceeding is dissolved based on abandonment of the reissue application and the reexamination proceeding continues, any grounds of rejection which are not applicable under reexamination should be withdrawn (e.g., based on public use or on sale) and any new grounds of rejection which are applicable under reexamination (e.g., improper broadened claims) should be made by the examiner. The existence of any questions remaining which cannot be considered under reexamination following dissolution of the merged proceeding would be noted by the examiner as not being proper under reexamination pursuant to 37 CFR 1.552(c).
Where the merged proceeding is dissolved based on abandonment of the reissue application and the reexamination proceeding continues, there is no guarantee that any continuation reissue application will be merged with the reexamination proceeding (the continuation reissue application might be stayed pending conclusion of the reexamination). This policy is necessary to prevent the patent owner from filing reissue continuation applications to delay a decision by the Board on rejected claims.
If applicant/patent owner files a request for continued examination (RCE) of the reissue application under 37 CFR 1.114 (which may be filed on or after May 29, 2000 for an application filed on or after June 8, 1995), then the merger will be automatically dissolved (severed), and the reissue application will then be suspended. Patent owners are put on notice that, in such event, a request for continued examination (RCE) is not available in the reexamination proceeding, and any response to an Office action (e.g., response to a final rejection) in the reexamination proceeding must be made taking
into account the non-availability of RCE practice. Any failure to timely respond would result in the termination of the prosecution pursuant to 37 CFR 1.550(d).
V. PETITION TO MERGE REISSUE APPLICATION AND REEXAMINATION PROCEEDING OR TO STAY EITHER OF THE TWO BECAUSE OF THE EXISTENCE OF THE OTHER
No petition to merge the reissue application and the reexamination proceeding, or stay one of them, should be filed before an order granting reexamination is issued because the Office will generally, sua sponte , make a decision to merge the reissue application and the reexamination proceeding or stay one of them. If any petition to merge the reissue application and the reexamination proceeding, or to stay one of them because of the other, is filed prior to the determination (37 CFR 1.515) and order to reexamine (37 CFR 1.525), it will not be considered, but will be returned to the party submitting the same by the CRU or TC Director, regardless of whether the petition is filed in the reexamination proceeding, the reissue application, or both. This is necessary to prevent premature papers relating to the reexamination proceeding from being filed. The decision expunging such a premature petition will be made of record in both the reexamination file and the reissue application file. See MPEP § 2267.
The patent owner may file a petition under 37 CFR 1.182 to merge the reissue application and the reexamination proceeding, or stay one of them because of the other, at the time the patent owner’s statement under 37 CFR 1.530 is filed or subsequent thereto in the event the Office has not acted prior to that date to merge or stay. The third party requester does not have a right to file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, since a reexamination third party requester does not have any standing to request relief with respect to a reissue application, to which requester cannot be a party. No such standing is provided for anywhere in the statute. Instead of filing a petition under 37 CFR 1.182 to merge a reexamination proceeding with a reissue application, a third party requester may file
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a notification of concurrent proceedings pursuant to MPEP § 2282. After being notified of the existence of a reissue application and after consideration of the merger and suspension options becomes ripe, the Office of Patent Legal Administration (OPLA) would sua sponte consider the action to be taken. A petition to merge the reissue application and the reexamination proceeding, which is filed by a party other than the patent owner will not be considered, but will be returned to that party (or expunged if already entered) by the CRU or TC Director as being improper under 37 CFR 1.550(g). The requester does have the right to file a petition under 37 CFR 1.182 to stay the reexamination proceeding that it requested.
All petitions to merge or stay which are filed by the patent owner or the third party requester subsequent to the date of the order for reexamination will be referred to OPLA for decision.
VI. FEES IN MERGED PROCEEDINGS
Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., excess claim fee, extension of time fee, petition fee, appeal fee, brief fee, oral hearing fee), only a single fee need be paid. For example, only one fee need be paid for an appeal brief even though the brief relates to merged multiple proceedings and copies must be filed for each file in the merged proceeding. As to excess claim fees, reissue practice will control.
2286 Ex Parte Reexamination and Litigation Proceedings [R-07.2015]
37 CFR 1.565 Concurrent office proceedings which include an ex parte reexamination proceeding.
*****
(b) If a patent in the process of ex parte reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the reexamination. See § 1.987 for inter partes reexamination proceedings.
*****
35 U.S.C. 302 permits a request for ex parte reexamination to be filed “at any time.” Requests for ex parte reexamination are frequently filed where the patent for which reexamination is requested is involved in concurrent litigation. The guidelines set forth below will generally govern
Office handling of ex parte reexamination requests where there is concurrent litigation in the federal courts.
I. COURT-ORDERED/ SANCTIONED REEXAMINATION PROCEEDING, LITIGATION STAYED FOR REEXAMINATION, OR EXTENDED PENDENCY OF REEXAMINATION PROCEEDING CONCURRENT WITH LITIGATION
Where a request for ex parte reexamination indicates (A) that it is filed as a result of an order by a court or an agreement by parties to litigation which agreement is sanctioned by a court, or (B) that litigation is stayed for the filing of a reexamination request, all aspects of the proceeding will be expedited to the extent possible. If reexamination is ordered, the examination following the statement by the patent owner under 37 CFR 1.530 and the reply by the requester under 37 CFR 1.535 will be expedited to the extent possible.
II. FEDERAL COURT DECISION KNOWN TO EXAMINER AT THE TIME THE DETERMINATION ON THE REQUEST FOR REEXAMINATION IS MADE
If a federal court decision on the merits of a patent is known to the examiner at the time the determination on the request for ex parte reexamination is made, the following guidelines will be followed by the examiner, whether or not the person who filed the request was a party to the litigation. When the initial question as to whether the prior art raises a substantial new question of patentability as to a patent claim is under consideration, the existence of a final court decision of claim validity in view of the same or different prior art does not necessarily mean that no new question is present. This is true because of the different standards of proof and claim interpretation employed by the district courts and the Office. See for example In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (manner of claim interpretation that is used by courts in litigation is not the manner of claim interpretation that is applicable during prosecution of a pending application before the PTO) and In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985) (the 35 U.S.C. 282 presumption of patent validity has no application in reexamination proceedings). Thus,
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while the Office may accord deference to factual findings made by the court, the determination of whether a substantial new question of patentability exists will be made independently of the court’s decision on validity as it is not controlling on the Office. See In re Swanson et al., 540 F.3d 1368, 1378 (Fed. Cir. 2008), where the Federal Circuit approved of the Office’s interpretation in MPEP § 2242. A non-final holding of claim invalidity or unenforceability will not be controlling on the question of whether a substantial new question of patentability is present. A final holding of claim invalidity or unenforceability (after all appeals), however, is controlling on the Office. In such cases, a substantial new question of patentability would not be present as to the claims held invalid or
unenforceable. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).
Note the following Federal Circuit decisions involving reexamination proceedings where the court affirmed the Office’s rejections even though parallel district court proceeding upheld the claims as valid and infringed. In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007), In re Translogic Technology, Inc., 504 F.3d 1249,
84 USPQ2d 1929 (Fed. Cir. 2007), In re Swanson et al., 540 F.3d 1368, 88 USPQ 2d 1196 (Fed. Cir. 2008) and In re Baxter International Inc., 678 F.3d 1357, 102 USPQ2d 1925 (Fed. Cir. 2012).
In Trans Texas, the patent being reexamined was subject to an infringement suit, in which the district court had issued its claim construction ruling (in a district court opinion) as to the definition of a term. The parties ultimately reached a settlement before trial, and the district court issued an “Order of Dismissal with Prejudice.” The patent owner relied on that district court claim construction ruling in a reexamination proceeding, and argued that the Office was bound by that district court claim construction ruling, under the doctrine of issue preclusion. The Federal Circuit stated that issue preclusion could not be applied against the Office based on a district court holding in an infringement proceeding, since the Office was not a party to that earlier infringement proceeding.
In Translogic, a district court infringement suit proceeded in parallel with a reexamination
proceeding. The district court upheld the validity of the patent in the infringement suit, while the reexamination examiner found the claim combination to be obvious. The examiner’s rejection was affirmed by the Board. The defendant (the alleged infringer) of the infringement suit appealed the district court decision to the Federal Circuit, while the patent owner appealed the Board’s decision to the Federal Circuit. The Federal Circuit consolidated the appeals, and then addressed only the patent owner’s reexamination appeal from the Board. The Federal Circuit affirmed the examiner’s conclusion of obviousness by relying upon and providing an extensive discussion of KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Note also In re Swanson et al., 540 F.3d 1368, 88 USPQ 2d 1196 (Fed. Cir. 2008) where the Federal Circuit held that the prior federal court judgment upholding validity over a specific prior art reference (in Abbott Labs. v. Syntron Bioreseach, Inc., 334 F.3d 1343 (Fed. Cir. 2003)), did not preclude the Office’s finding that a substantial new question of patentability existed as to the same claims based on the same prior art reference applied in the same manner in the subsequent ex parte reexamination proceeding, and did not preclude the Office’s finding that the patent claims were unpatentable.
Finally, see In re Baxter International Inc., 678 F.3d 1357, 102 USPQ2d 1925 (Fed. Cir. 2012)(patent reexamination should take notice of a court decision but the Office need not come to the same conclusion as the court).
Any determination on a request for reexamination which the examiner makes after a federal court decision must be reviewed by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) to ensure that it conforms to the current Office litigation policy and guidelines. See MPEP § 2240.
For a discussion of the policy in specific situations where a federal court decision has been issued, see MPEP § 2242.
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III. REEXAMINATION WITH CONCURRENT LITIGATION BUT ORDERED PRIOR TO FEDERAL COURT DECISION
In view of the statutory mandate to make the determination on the request within 3 months, the determination on the request based on the record before the examiner will be made without awaiting a decision by the federal court. It is not realistic to attempt to determine what issues will be treated by the federal court prior to the court decision. Accordingly, the determination on the request will be made without considering the issues allegedly before the court. If an ex parte reexamination is ordered, the reexamination will continue until the Office becomes aware that a court decision has issued. At such time, the request will be reviewed in accordance with the guidelines set forth below. The patent owner is required by 37 CFR 1.565(a) to call the attention of the Office to any prior or concurrent proceeding in which the patent is involved or was involved. Thus, the patent owner has an obligation to promptly notify the Office that a decision has been issued in the federal court.
IV. FEDERAL COURT DECISION ISSUES AFTER EX PARTE REEXAMINATION ORDERED
Pursuant to 37 CFR 1.565(a), the patent owner in an ex parte reexamination proceeding must promptly
notify the Office of any federal court decision involving the patent. Where the reexamination proceeding is currently pending and the court decision issues, or the Office becomes aware of a court decision relating to a pending reexamination proceeding, the order to reexamine is reviewed to see if a substantial new question of patentability is still present. If no substantial new question of patentability is still present, the reexamination is terminated by the CRU or TC Director.
A non-final federal court decision concerning a patent under reexamination shall have no binding effect on a reexamination proceeding.
The issuance of a final federal court decision upholding validity during an ex parte reexamination also will have no binding effect on the examination of the reexamination. This is because the court states in Ethicon v. Quigg, 849 F.2d 1422, 1428, 7
USPQ2d 1152, 1157 (Fed. Cir. 1988) that the Office is not bound by a court’s holding of patent validity and should continue the reexamination. The court notes that district courts and the Office use different standards of proof in determining invalidity, and thus, on the same evidence, could quite correctly come to different conclusions. Specifically, invalidity in a district court must be shown by “clear and convincing” evidence, whereas in the Office, it is sufficient to show nonpatentability by a “preponderance of evidence.” Since the “clear and convincing” standard is harder to satisfy than the “preponderance” standard, deference will ordinarily be accorded to the factual findings of the court where the evidence before the Office and the court is the same. If sufficient reasons are present, claims held valid by the court may be rejected in reexamination.
On the other hand, a final federal court holding of invalidity or unenforceability (after all appeals), is binding on the Office. Upon the issuance of a final holding of invalidity or unenforceability, the claims being examined which are held invalid or unenforceable will be withdrawn from consideration in the reexamination. The reexamination will continue as to any remaining claims being examined. Thus, the reexamination will continue if any original, new, or amended claim being examined that was not found invalid or unenforceable by the court. If all of the claims being examined in the reexamination proceeding are finally held invalid or unenforceable, the reexamination will be vacated by the CRU or TC Director if the decision was rendered prior to the order, or terminated by the CRU or TC Director as no longer containing a substantial new question of patentability if the decision was rendered subsequent to the order, and the reexamination will be concluded. If not all claims being examined were held invalid (or unenforceable), a substantial new question of patentability may still exist as to the remaining claims. In such a situation, the remaining claims would be examined; and, as to the claims held invalid/unenforceable, form paragraph 22.20 should be used at the beginning of the Office action.
¶ 22.20 Claims Held Invalid By Court, No Longer Being Reexamined
Claims [1] of the [2] patent are not being reexamined in view of the final decision of [3]. Claim(s) [1] was/were held invalid/unenforceable by the [4].
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Examiner Note:
1. In bracket 1, insert the claim(s) held invalid.
2. In bracket 2, insert the patentee (e.g., Rosenthal, J. Doe et al).
3. In bracket 3, insert the decision (e.g., ABC Corp. v. Smith, 888 F. 3d 88, 999 USPQ2d 99 (Fed. Cir. 1999) or XYZ Corp. v. Jones, 888 F. Supp. 2d 88, 999 USPQ2d 1024 (N.D. Cal. 1999)).
4. In bracket 4, insert the name of the court (e.g., the Court of Appeals for the Federal Circuit, or the Federal District Court).
V. LITIGATION REVIEW AND APPROVAL
In order to ensure that the Office is aware of prior or concurrent litigation, the examiner is responsible for conducting a reasonable investigation for evidence as to whether the patent for which ex parte reexamination is requested has been or is involved in litigation. The investigation will include a review of the reexamination file, the patent file, and the results of the litigation computer search.
If the examiner discovers, at any time during the reexamination proceeding, that there is litigation or that there has been a federal court decision on the patent, the fact will be brought to the attention of the CRU SPRS or Technology Center (TC) Quality Assurance Specialist (QAS) prior to any further action by the examiner. The CRU SPRS or TC QAS must review any action taken by the examiner in such circumstances to ensure current Office litigation policy is being followed.
VI. FEDERAL COURT DECISION CONTROLLING IN REEXAMINATION PROCEEDING
Once a federal court has ruled upon the merits of a patent and an ex parte reexamination is still appropriate under the guidelines set forth above, the federal court decision will be considered controlling and will be followed as to claims finally held to be invalid by the court.
2286.01 Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and
Covered Business Method Patent Review [R-07.2015]
The Leahy-Smith America Invents Act amended 35 U.S.C. 315(d) and added 35 U.S.C. 325(d) to provide that, during the pendency of an inter partes review, post grant review or covered business method review ("PTAB Review Proceeding"), if another proceeding (e.g., an ex parte reexamination proceeding) or matter involving the patent is before the Office, the Director may determine the manner in which the PTAB Review Proceeding and the other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of such matter or proceeding. If an examiner becomes aware of a PTAB Review Proceeding for the same patent that is being reexamined, the ex parte reexamination proceeding must be referred to the examiner’s SPRS. The SPRS will coordinate with the PTAB before taking any action on the reexamination proceeding.
The existence of a PTAB Review Proceeding does not change the fact that any reexamination request must, by statute, be decided (a grant or a denial) within three months of its filing date.
2287 Conclusion of Ex Parte Reexamination Proceeding [R-07.2015]
Upon conclusion of the ex parte reexamination proceeding, the examiner must prepare a “Notice of Intent to Issue Ex Parte Reexamination Certificate” (NIRC) by completing form PTOL-469. If appropriate, an examiner’s amendment will also be prepared. Where claims are found patentable, reasons must be given for each claim found patentable. See the discussion as to preparation of an examiner’s amendment and reasons for allowance at the end of this section. In addition, the examiner must prepare the reexamination file so that the Office of Data Management can prepare and issue a certificate in accordance with 35 U.S.C. 307 and 37 CFR 1.570 setting forth the results of the reexamination proceeding and the content of the patent following the proceeding. See MPEP § 2288.
The examiner will so inform his/her Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology
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Center (TC) Quality Assurance Specialist (QAS) of the conclusion of the reexamination proceeding. The CRU SPRS/TC QAS will convene a panel review conference (see MPEP § 2271.01), and the conference members will review the patentability of the claim(s). If the conference confirms the examiner’s decision, a NIRC shall be issued and signed by the examiner, with the two, or more, other conferees initialing the NIRC (as “conferee”) to indicate their participation in the conference. All conferees will initial, even though one of them may have dissented from the conference decision on the patentability of the claim(s). If the conference does not confirm the patentability of the claim(s), the examiner will reevaluate and issue an appropriate Office action rejecting the claim(s), not confirmed as patentable.
A panel review conference is not to be held as to any claim that was in the case (proceeding) at the time the case was reviewed by the Board or a federal court. The following example will serve to illustrate this point. In a reexamination proceeding, claims 5-10 are allowed by the examiner, and claims 1-4 are rejected. The rejection of claims 1-4 is then appealed to the Board. The Board reverses the rejection of claims 1-4 and imposes a new ground of rejection of claims 1-4 under 37 CFR 41.50(b). The patent owner then elects further prosecution before the examiner pursuant to 37 CFR 41.50(b)(1) and submits an amended set of claims 1-4. The examiner finds amended claims 1-4 to be allowable and wishes to “allow” the entire case by issuing a NIRC. A panel review conference must be held at this stage of the proceeding. The conferees will review the allowance of amended claims 1-4. The conferees will not, however, review the allowance of claims 5-10, because claims 5-10 were in the case, and before the Board at the time the Board decided the appeal.
A panel review conference is not to be held where the proceeding is to be concluded by the cancellation of all claims. No panel review conference is needed in this instance, as the issuance of the NIRC is essentially ministerial.
Thus, a panel review conference must be held in each instance where a NIRC is about to be issued, unless the NIRC is being issued: (A) following and
consistent with a decision by the Board (or court) on the merits of the proceeding; or (B) as a consequence of the patent owner’s failure to respond or take other action where such a response or action is necessary to maintain pendency of the proceeding and, as a result of which failure to respond, all of the claims will be canceled.
A NIRC informs the patent owner and any third party requester that the reexamination prosecution has been terminated. The rules do not provide for an amendment to be filed in a reexamination proceeding after prosecution has been terminated. The provisions of 37 CFR 1.312 do not apply in reexamination. Any amendment, information disclosure statement, or other paper related to the merits of the reexamination proceeding filed after prosecution has been terminated must be accompanied by a petition under 37 CFR 1.182 to have the amendment, information disclosure statement, or other paper considered.
If all of the claims are disclaimed in a patent under reexamination, a certificate under 37 CFR 1.570 will be issued indicating that fact.
I. PREPARATION OF THE CASE FOR PUBLICATION
In preparing the reexamination file for publication of the certificate, the examiner must review the reexamination and patent files (IFW and paper files) to be sure that all the appropriate parts are completed. The review should include completion of the following items:
(A) The IFW file wrapper Search Notes form — The “SEARCHED” and the “SEARCH NOTES” boxes are to be filled in with the classes and subclasses that were actually searched and other areas consulted. See MPEP § 719.05.
(B) The IFW file jacket form — Check to be sure that the necessary data is included thereon, such as the certificate number, e.g., “C1” or “C2”. The “Litigation Review” and “Copending Office Proceedings” boxes should be completed to ensure that the Office is aware of prior or concurrent litigation and Office proceedings.
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(C) The Bibliographic Data Sheet — Check to be sure that the data included thereon is correct and the blank spaces have been initialed.
(D) The Issue Classification IFW form — The form must be completed to set forth the status of each claim and the final claim numbers. The appropriate information must be included in the “Issue Classification” boxes. The examiner should enter the classification in the Issue Classification boxes that corresponds to the current classification of the patent and any additional classification based on newly claimed subject matter. See MPEP § 903.07. The current classification of the patent may be found by viewing the patent in the EAST or WEST automated search tools. See MPEP § 902.03(e). Completion of the Issue Classification boxes is required, even if all of the claims are canceled.An appropriate drawing figure is to be indicated for printing on the certificate cover sheet and in the Official Gazette. In addition, a representative claim which has been reexamined is to be indicated for publication in the Official Gazette. The claim or claims for the Official Gazette should be selected in accordance with the following instructions:
(A) The broadest claim should be selected;
(B) Examiners should ordinarily designate but one claim on each invention, although when a plurality of inventions are claimed in one application, additional claims up to a maximum of five may be designated for publication. In the case of reexamination, the examiner must select only one claim;
(C) A dependent claim should not be selected unless the independent claim from which it depends is also printed. In the case where a multiple dependent claim is selected, the entire chain of claims for one embodiment should be listed. In the case of reexamination, a dependent patent claim may be selected where the independent original patent claim has been canceled; in such a case, the dependent claim would be printed while the independent claim would not be printed; and
(D) In reissue applications, the broadest claim with changes or the broadest additional reissue claim should be selected for printing.
When recording this information in the box provided, the following items should be kept in mind:
(A) Enter the claim number clearly;
(B) If multiple claims are selected, the claim numbers should be separated by commas; and
(C) The claim designated must be referred to by using the renumbered patent claim number rather than the original claim number if different.
If the patent owner desires the names of the attorneys or agents, or law firm, to be printed on the certificate, a separate paper limited to this issue which lists the names and positively states that they should be printed on the certificate must be filed. A mere power of attorney or change of address is not a request that the name appear on the certificate.
The examiner must also complete a checklist, form PTO-1516, for the reexamination file which will be forwarded to the Office of Data Management identifying information used in printing the reexamination certificate. A copy of this form may be obtained from the CRU SPRS or TC QAS or their support staff.
The examiner should inspect the title report, or patent abstract of title, in the file. If the title report, or patent abstract of title, indicates a title in the inventors, but the patent copy shows an assignment to an assignee, a telephone call can be made to the patent owner, and the patent owner can be asked to submit a statement under 37 CFR 3.73(b) indicating that title is in the assignee (i.e., it has not reverted back to the inventors). See MPEP § 320.
After the examiner has prepared the NIRC and attachments for mailing, completed the review and preparation of the case as discussed above, and completed the Examiner Checklist form PTOL-1516, the reexamination and patent files will be given to the CRU support staff. The CRU support staff will complete the Reexamination Clerk Checklist form PTO-1517. The CRU support staff will revise and update the files. The clerk should check to see if any changes in especially:
(A) the title;
(B) the inventor;
(C) the assignee;
(D) the continuing data;
(E) the foreign priority;
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(F) the address of the owner’s attorney; and
(G) the requester’s address
have been properly entered in the reexamination and patent files (in the file history of an IFW file and on the face of a paper file) and properly entered in the PALM database. After the clerk has finished his/her processing, he or she will forward the reexamination proceeding to the CRU SPRS or TC QAS for review. After approval by the CRU SPRS or TC QAS, the CRU support staff will process the NIRC with attachments for mailing.
II. REEXAMINATION PROCEEDINGS IN WHICH ALL THE CLAIMS ARE CANCELED
There will be instances where all claims in the reexamination proceeding are to be canceled, and a NIRC will be issued indicating that fact. This would occur where the patent owner fails to timely respond to an Office action, and all live claims in the reexamination proceeding are under rejection. It would also occur where all live claims in the reexamination proceeding are to be canceled as a result of a Board decision affirming the examiner, and the time for appeal to the court and for requesting reconsideration or modification has expired.
Prior to canceling the claims and issuing the NIRC, the examiner should telephone the patent owner to inquire if a timely response, timely appeal, etc., was filed with the Office so as to make certain that a timely response has not been misdirected within the Office. Where the patent owner indicates that no such filing was made, or where the patent owner cannot be reached, the examiner will proceed to issue a NIRC terminating prosecution.
A panel review conference is not to be held, because the proceeding is to be concluded by the cancellation of all claims. Rather, the examiner will issue a NIRC action, and as an attachment to the NIRC, the examiner will draft an examiner’s amendment canceling all live claims in the reexamination proceeding. In the examiner’s amendment, the examiner should point out why the claims have been canceled. For example, the examiner might make one of the two following statements, as appropriate:
“Claims 1-5 and 6-8 (all live claims in the proceeding) were subject to rejection in the last Office action mailed 9/9/99. Patent owner failed to timely respond to that Office action. Accordingly claims 1-5 and 6-8 have been canceled. See 37 CFR 1.550(d) and MPEP § 2266.” “The rejection of claims 1-5 and 6-8 (all live claims in the proceeding) has been affirmed in the Board decision of 9/9/99, and no timely appeal to the court has been filed. Accordingly claims 1-5 and 6-8 have been canceled.”
If the patent owner was reached by telephone and indicated that there was no timely filing (as discussed above), the attachment to the NIRC will make the telephone interview of record.
The examiner will designate a cancelled original patent claim, to be printed in the Official Gazette, on the Issue Classification IFW form in the appropriate place for the claim chosen.
III. HANDLING OF MULTIPLE DEPENDENT CLAIMS
The following discussion provides guidance on how to treat multiple dependent claims when preparing a reexamination proceeding for publication of the reexamination certificate.
Assume Patent X issues with the following claims:
Patent claims:
1. A method of sintering a particulate ceramic preform, comprising heating it above 500 degrees F, cooling it to 100 degrees F, and repeating the heating and cooling steps six times.
2. The method of claim 1, where a pressure of 300 - 400 psi is applied during the heating steps.
3. The method of claim 1 or claim 2, where the pressure applied during the heating steps is 350 - 375 psi.
4. The method of claim 3, where the pressure applied during the heating steps is 360 - 365 psi.
5. The method of claim 1, where the preform contains lithium and magnesium oxides.
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6. The method of claim 5, where the preform contains sodium fluoride.
7. The method of claim 1 or claim 5, where the sintered preform is machined into a lens.
A reexamination request is then filed for Patent X, and at the point when the claims are ready for issuance of the certificate, the following claims are present in the reexamination file.
In reexamination:
1. (Text Unchanged) A method of sintering a particulate ceramic preform, comprising heating it above 500 degrees F, cooling it to 100 degrees F, and repeating the heating and cooling steps six times.
2. (Amended) The method of claim 1 or claim 8, where a pressure of 300 - 400 psi is applied during the heating steps.
3. (Amended) The method of [claim 1 or] claim 2, where the pressure applied during the heating steps is 350 - 375 psi.
4. (Amended) The method of claim 3 or claim 8, where the pressure applied during the heating steps is 355[360] - 365 psi.
5. (Text Unchanged) The method of claim 1, where the preform contains lithium and magnesium oxides.
6. (Amended) The method of claim 8[5], where the preform contains sodium fluoride.
7. (Text Unchanged) The method of claim 1 or claim 5, where the sintered preform is machined into a lens.
8. (New) A method of sintering a particulate fluoride ceramic preform comprising heating it above 500 degrees F, cooling it to 100 degrees F, and repeating the heating and cooling steps six times.
The status of the claims would be set forth as follows:
Part 1(h) of the Notice of Intent to Issue Ex Parte Reexamination Certificate Form PTOL-469 (NIRC) would be completed as follows.
Patent claims confirmed: 1, 2/1, 5, 7
Patent claims amended: 3, 4/3
Patent claims canceled: 3/1, 6/5
New claims patentable: 2/8, 4/8, 6/8, 8
The parts of the Examiner’s checklist (Form PTO-1516) directed to the status of the claims would be completed as follows.
7. Patent claims confirmed: 1, 5, 7
11. Patent claims canceled: None
12. Patent claims amended: 2, 3, 4 and 6
13. Patent claims dependent on amended: None
14. New claims patentable: 8
Looking at claim 2:
For the purpose of the NIRC, the addition of a claim of the multiple dependency is viewed as adding a new claim for which protection is now to be provided. Thus, prior to reexamination, only the subject matter of claim 2/1 was protected. As a result of reexamination, claim 2/8 has been added, and its subject matter is now protected. Thus, claim 2/8 is designated as a new claim. Claim 2/1 has not changed as to its content and its scope of protection, and is designated as a confirmed claim.
For the purpose of the Examiner’s checklist, the addition or deletion of a claim of the multiple dependency is viewed simply as amending the claim, because of the way claims are printed on the certificate. Thus, claim 2 is designated as an amended claim and is simply printed on the certificate in its amended form as:
2. The method of claim 1 or claim 8, where the sintered preform is machined into a lens.
Looking at claim 3:
For the purpose of the NIRC, the deletion of a claim of the multiple dependency is viewed as canceling the claim deleted, and protection is no longer provided for the claim as dependent from the deleted claim. Thus, prior to reexamination, the subject
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matter of claims 3/1 and 3/2 was protected. As a result of reexamination, claim 3/1 has been deleted, and its subject matter is no longer protected. Thus, claim 3/1 is designated as a canceled claim. Claim 3/2 has not changed as to its content and its scope of protection, and is designated as a confirmed claim.
For the purpose of the Examiner’s checklist, the addition or deletion of a claim of the multiple dependency is viewed simply as amending the claim, because of the way claims are printed on the certificate. Thus, claim 3 is designated as an amended claim and is simply printed on the certificate in its amended form as:
3. The method of [claim 1 or] claim 2, where the pressure applied during the heating steps is 350 - 375 psi.
Looking at claim 4:
For the purpose of the NIRC, the addition of a claim of the multiple dependency is viewed as adding a new claim for which protection is now to be provided. Thus, prior to reexamination, only the subject matter of claim 4/3 was protected. As a result of reexamination, claim 4/8 has been added, and its subject matter is now protected. Thus, claim 4/8 is designated as a new claim. Claim 4/3 has changed as to its content and its scope of protection due to the expanding of the pressure range from 360 - 365 psi to 355 - 365 psi, and claim 4/3 is designated as an amended claim.
For the purpose of the Examiner’s checklist, the addition or deletion of a claim of the multiple dependency is viewed simply as amending the claim, because of the way claims are printed on the certificate. Thus, claim 4 is designated as an amended claim and simply printed on the certificate in its amended form as:
4. (Amended) The method of claim 3 or claim 8, where the pressure applied during the heating steps is 355 [360] - 365 psi.
Looking at claim 6:
For the purpose of the NIRC, prior to reexamination, the subject matter of claim 6/5 was protected and
claim 6/8 did not exist. As a result of reexamination, claim 6/5 has been deleted and claim 6/8 has been added. Thus, claim 6/5 is designated as a canceled claim, and claim 6/8 is designated as a new claim.
For the Examiner’s checklist, claim 6 is designated as an amended claim and is simply printed on the certificate in its amended form as:
6. (Amended) The method of claim 8 [5], where the preform contains sodium fluoride.
Looking at claim 7:
It is unchanged as to its text. Claim 7 remains dependent on claim 1 or claim 5, as it did prior to reexamination. Thus, both claims 7/1 and 7/5 are confirmed. Claims 7/1 and 7/5 are listed in the “Confirmed” part of the NIRC. They are not listed separately, but rather simply as “7.” This is because the entirety of claim 7 has been confirmed.
As to the Examiner’s checklist, claim 7, being unchanged as to its text and not being dependent on an amended claim, is simply listed in the “Confirmed” part of the checklist. Claim 7 will not be printed on the certificate, but will simply be listed as one of the confirmed claims.
IV. REEXAMINATION REMINDERS
The following items deserve special attention. The examiner should ensure they have been correctly completed or followed before forwarding for processing of the NIRC.
(A) All patent claims for which a substantial new question of patentability has been found must have been examined. See MPEP § 2243.
(B) No renumbering of patent claims is permitted. New claims may require renumbering. See MPEP § 2250.
(C) All amendments to the description and claims must conform to requirements of 37 CFR 1.530(d)-(j). This includes any changes made by Examiner’s Amendment. If a portion of the text is amended more than once, each amendment should indicate all of the changes (insertions and deletions) in relation to the current text in the patent under reexamination. See MPEP § 2250.
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(D) The prior art must be listed on a form PTO 892, PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms). These forms must be properly completed. See MPEP § 2257.
(E) The examiner and reexamination clerk checklists PTO-1516 and PTO-1517 must be entirely and properly completed. A careful reading of the instructions contained in these checklists is essential. The clerical checklist is designed as a check and review of the examiner’s responses on the examiner checklist. Accordingly, the CRU support staff should personally review the file before completing an item. The CRU support staff should check to make certain that the responses to all related items on both checklists are in agreement.
(F) Multiple pending reexamination proceedings are often merged. See MPEP § 2283.
(G) Where the reexamination proceeding is copending with an application for reissue of the patent being reexamined, the files must have been forwarded to the Office of Patent Legal Administration (OPLA) for a consideration of potential merger, with a decision (by a Senior Legal Advisor) on the question being present in the reexamination file. See MPEP § 2285.
(H) Reasons for patentability and/or confirmation are required for each claim found patentable. See below.
(I) There is no issue fee in reexamination. See MPEP § 2233.
(J) The patent claims may not be amended nor new claims added after expiration of the patent. See MPEP § 2250.
(K) Original drawings cannot be physically changed. “Amended” or “New” figures must be appropriately labeled as such and presented on new sheets in compliance with 37 CFR 1.84. See 37 CFR 1.530(d)(3) and MPEP § 2250.01.
(L) An amended or new claim may not enlarge the scope of the patent claims. See MPEP § 2250.
(M) If the patent has expired, all amendments to the patent claims and all claims added during the proceeding must be withdrawn. Further, all presently rejected and objected-to claims are canceled by examiner’s amendment. See MPEP § 2250, subsection III, Amendment after the Patent Has Expired.
V. EXAMINER’S AMENDMENT
Where it is necessary to amend the patent in order to place the proceeding in condition to issuance of a reexamination certificate, the examiner may request that the patent owner provide the amendment(s), or the examiner may make the amendments, with the patent owner’s approval, by an examiner’s amendment. If the changes are made by an examiner’s amendment, the examiner’s amendment must comply with the requirements of 37 CFR 1.530(d)-(j) in amending the patent. Thus, the examiner’s amendment requires presentation of the full text of any paragraph or claim to be changed, with the 37 CFR 1.530(f) markings. The exception for examiner’s amendments set forth in 37 CFR 1.121(g) does not apply to examiner’s amendments in reexamination proceedings. See MPEP § 2250. The only exception to the full text presentation requirement is that an entire claim or an entire paragraph of specification may be deleted from the patent by a statement deleting the claim or paragraph without the presentation of the text of the claim or paragraph.
Normally the title of the invention or the abstract will not need to be changed during reexamination. If a change to the title or to the abstract is necessary, the patent owner should be notified of the need to provide an amendment changing the title or abstract as early as possible in the prosecution as a part of an Office action. If all of the claims are found to be patentable and a NIRC has been or is to be mailed, the examiner may only change the title of the invention or the text of the abstract by an examiner’s amendment authorized by the patent owner. Changing the title and merely initialing the change is not permitted in reexamination.
If a patent expires during the pendency of a reexamination proceeding for that patent, all amendments to the patent claims and all claims added during the proceeding must be withdrawn. The examiner’s amendment is to include a statement such as:
“As the patent being reexamined has expired during the pendency of the present reexamination proceeding, all amendments
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made during the proceeding are improper, and are hereby expressly withdrawn.”
Where an examiner’s amendment is prepared, Box 7 of form PTOL-469 (Notice of Intent to Issue Ex Parte Reexamination Certificate) is checked, and form paragraph 22.06 is used to provide the appropriate attachments.
¶ 22.06 Examiner’s Amendment Accompanying Notice of Intent To Issue Ex Parte Reexamination Certificate
An examiner’s amendment to the record appears below. The changes made by this examiner’s amendment will be reflected in the reexamination certificate to issue in due course.
[1]
VI. REASONS FOR PATENTABILITY AND/OR CONFIRMATION
Reasons for patentability must be provided, unless all claims are canceled in the proceeding. Box 2 of form PTOL-469 is checked, and the reasons are provided as an attachment. In the attachment to the NIRC, the examiner should indicate why the claims found patentable in the reexamination proceeding are clearly patentable over the cited patents or printed publications. This is done in a manner similar to that used to indicate reasons for allowance in an application. See MPEP § 1302.14. Where the record is clear as to why a claim is patentable, the examiner may refer to the particular portions of the record which clearly establish the patentability of that claim.
The reasons for patentability may be set forth on form PTOL-476, entitled “REASONS FOR PATENTABILITY AND/OR CONFIRMATION.” However, as a preferred alternative to using form PTOL-476, the examiner may instead use form paragraph 22.16.
¶ 22.16 Reasons For Patentability and/or Confirmation
STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
The following is an examiner’s statement of reasons for patentability and/or confirmation of the claims found patentable in this reexamination proceeding: [1]
Any comments considered necessary by PATENT OWNER regarding the above statement must be submitted promptly to
avoid processing delays. Such submission by the patent owner should be labeled: “Comments on Statement of Reasons for Patentability and/or Confirmation” and will be placed in the reexamination file.
Examiner Note:
This form paragraph may be used as an attachment to the Notice of Intent to Issue Ex Parte Reexamination Certificate, PTOL-469 (item number 2).
Original patent claims that are found patentable in a reexamination proceeding are generally to be designated as “confirmed” claims, while new claims and amended patent claims are generally to be designated as “patentable” claims. However, for purposes of the examiner setting forth reasons for patentability or confirmation, the examiner may use “patentable” to refer to any claim that defines over the cited patents or printed publications. There is no need to separate the claims into “confirmed” and “patentable” categories when setting forth the reasons.
Obviously, where all claims are canceled in the proceeding, no reasons for patentability are provided.
2287.01 Examiner Consideration of Submissions After a NIRC [R-07.2015]
The rules do not provide for an amendment to be filed in a reexamination proceeding after a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) has been issued. Note that 37 CFR 1.312 does not apply in a reexamination proceeding. Any amendment, information disclosure statement, or other paper related to the merits of the reexamination proceeding filed after the NIRC must be accompanied by a petition under 37 CFR 1.182. The petition must be granted, in order to have the amendment, information disclosure statement, or other paper related to the merits considered. Where an amendment, information disclosure statement, or other paper related to the merits of the reexamination proceeding is filed after the NIRC, and the accompanying petition under 37 CFR 1.182 is granted, the examiner will reconsider the case in view of the new information, and if appropriate, will reopen prosecution. See MPEP § 2256 for a detailed discussion of the criteria for obtaining entry and
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consideration of an information disclosure statement filed after a NIRC.
Any “Comments on Statement of Reasons for Patentability and/or Confirmation” which are received will be placed in the reexamination file, without comment. This will be done even when the reexamination certificate has already issued.
2288 Issuance of Ex Parte Reexamination Certificate [R-08.2012]
35 U.S.C. 307 Certificate of patentability, unpatentability, and claim cancellation.
(a) In a reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Director will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.
*****
37 CFR 1.570 Issuance and publication of ex parte reexamination certificate concludes ex parte reexamination proceeding.
(a) To conclude an ex parte reexamination proceeding, the Director will issue and publish an ex parte reexamination certificate in accordance with 35 U.S.C. 307 setting forth the results of the ex parte reexamination proceeding and the content of the patent following the ex parte reexamination proceeding.
(b) An ex parte reexamination certificate will be issued and published in each patent in which an ex parte reexamination proceeding has been ordered under § 1.525 and has not been merged with any inter partes reexamination proceeding pursuant to § 1.989(a). Any statutory disclaimer filed by the patent owner will be made part of the ex parte reexamination certificate.
(c) The ex parte reexamination certificate will be mailed on the day of its date to the patent owner at the address as provided for in § 1.33(c). A copy of the ex parte reexamination certificate will also be mailed to the requester of the ex parte reexamination proceeding.
(d) If an ex parte reexamination certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto.
(e) If the ex parte reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.565(d), the reissued patent will constitute the ex parte reexamination certificate required by this section and 35 U.S.C. 307.
(f) A notice of the issuance of each ex parte reexamination certificate under this section will be published in the Official Gazette on its date of issuance.
Since abandonment is not possible in a reexamination proceeding, a reexamination certificate will be issued and published at the conclusion of the proceeding in each patent in which a reexamination proceeding has been ordered under 37 CFR 1.525 except where the reexamination has been concluded by vacating the reexamination proceeding or by the grant of a reissue patent on the same patent in which case the reissue patent also serves as the reexamination certificate.
Where the reexamination is to be concluded for a failure to timely respond to an Office action, see MPEP § 2266.
The reexamination certificate will set forth the results of the proceeding and the content of the patent following the reexamination proceeding. The certificate will:
(A) cancel any patent claims determined to be unpatentable;
(B) confirm any patent claims determined to be patentable;
(C) incorporate into the patent any amended or new claims determined to be patentable;
(D) make any changes in the description approved during reexamination;
(E) include any statutory disclaimer or terminal disclaimer filed by the patent owner;
(F) identify unamended claims which were held invalid on final holding by another forum on any grounds;
(G) identify any patent claims not reexamined;
(H) be mailed on the day it is dated to the patent owner at the address provided for in 37 CFR 1.33(c) and a copy will be mailed to the third party requester; and
(I) identify patent claims, dependent on amended claims, determined to be patentable.
If a certificate issues and publishes which cancels all of the claims of the patent, no further Office proceedings will be conducted with regard to that patent or any reissue application or reexamination request directed thereto. However, in an extremely rare situation in which a reissue application is copending with a reexamination proceeding in which
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a reexamination certificate subsequently issues cancelling all claims of the patent, the patent owner may file a petition under 37 CFR 1.183 requesting waiver of the provisions of 37 CFR 1.570(d), to address claims that were pending in the reissue application prior to the issuance of the certificate. Any such petition must be accompanied by a paper cancelling any claim within the scope of the claims canceled by the certificate and pointing out why the claims remaining in the reissue application can be patentable, despite the cancellation of all the patent claims by certificate, i.e., why the remaining claims are patentable over the cancelled claims. Such a paper will be available to the examiner, should the petition be granted. See 37 CFR 1.570(d). If a reexamination proceeding is concluded by the grant of a reissued patent as provided for in 37 CFR 1.565(b), the reissued patent will constitute the reexamination certificate required by 35 U.S.C. 307 and this section. See 37 CFR 1.570(e).
A notice of the issuance of each reexamination certificate will be published in the Official Gazette on its date of issuance in a format similar to that used for reissue patents. See 37 CFR 1.570(f) and MPEP § 2291.
2289 Reexamination Review [R-07.2015]
All reexamination cases are monitored and reviewed in the Central Reexamination Unit (CRU) or Technology Center (TC) by the CRU Supervisory Patent Reexamination Specialist (SPRS) or TC Quality Assurance Specialist (QAS), paralegal or other technical support who might be assigned as backup at several stages during the prosecution. This is done to ensure that practice and procedure unique to reexamination has been carried out for the reexamination proceeding. In addition to the CRU SPRS or TC QAS review of the reexamination cases, a panel review is made prior to issuing Office actions as set forth in MPEP § 2271.01.
The above identified review processes are appropriate vehicles for correcting errors, identifying problem areas and recognizing trends, providing information on the uniformity of practice, and
providing feedback to the Office personnel that process and examine reexamination cases.
2290 Format of Ex Parte Reexamination Certificate [R-07.2015]
An ex parte reexamination certificate is issued at the close of each ex parte reexamination proceeding in which reexamination has been ordered under 37 CFR 1.525, except for the following two cases:
(A) The ex parte reexamination proceeding is merged with a reissue application pursuant to 37 CFR 1.565(d). If the ex parte reexamination proceeding is concluded by the grant of a reissue patent, the reissue patent will constitute the reexamination certificate;
(B) The ex parte reexamination proceeding is merged with an inter partes reexamination proceeding pursuant to 37 CFR 1.989(a). If the ex parte reexamination proceeding is to be concluded as part of a merged proceeding containing an inter partes reexamination proceeding, a single reexamination certificate will issue for both proceedings; see MPEP § 2690.
The ex parte reexamination certificate is formatted much the same as the title page of current U.S. patents.
The certificate is titled “ Ex Parte Reexamination Certificate.” The title is followed by an “ordinal” number in parentheses. For example, if reexamination was ordered under 35 U.S.C. 304, the ordinal number may be, for example, “(235th),” which indicates that it is the two hundred and thirty fifth ex parte reexamination certificate that has issued. The certificates continue the ordinal numbering sequence that has already been established for ex parte reexamination proceedings ordered under 35 U.S.C. 304.
If the reexamination proceeding was ordered under 35 U.S.C. 257 as a result of a supplemental examination proceeding, the certificate is also titled “ Ex Parte Reexamination Certificate.” In addition, the certificate will state “ Ex Parte Reexamination Ordered under 35 U.S.C. 257”. Ex parte reexamination certificates for reexaminations ordered
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under 35 U.S.C. 257 are numbered in a separate and
new ordinal sequence, beginning with “(1st).”
Inter partes reexamination certificates are also numbered in a separate and new ordinal sequence,
beginning with “(1st).”
The ex parte reexamination certificate number will always be the patent number of the original patent followed by a two-character “kind code” suffix. The first letter of the “kind code” suffix is “B” for reexamination certificates published prior to January 2, 2001, and “C” for reexamination certificates published on or after January 2, 2001. The second letter of the “kind code” suffix is the number of the reexamination proceeding of that patent, and thus shows how many times that patent has been reexamined.
Note that where the first reexamination certificate was a "B1" certificate and a second reexamination certificate then issues, the second reexamination certificate will be designated “C2” and NOT “C1.” Thus, by looking at the number following the “C,” one will be able to ascertain the number of reexamination certificates that preceded the certificate being viewed, i.e., how many prior reexamination certificates have been issued for the patent. (If this were not the practice and C1 were used, one would not be able to ascertain from the number on the certificate how many B certificates came before.)
The next higher number will be given to the reexamination proceeding for which the reexamination certificate is issued, regardless of whether the proceeding is an ex parte reexamination ordered under 35 U.S.C. 304 or 35 U.S.C. 257, or an inter partes reexamination proceeding.
See MPEP § 901.04(a) for a complete list of the kind codes used by the United States Patent and Trademark Office.
The certificate denotes the date the certificate was issued at INID code [45] (see MPEP § 901.04). The title, name of inventor, the current classification, the abstract, and the notice regarding the list of prior art documents appear at their respective INID code designations, much the same as is presently done in utility patents.
The primary differences, other than as indicated above, are:
(A) The filing date and number of the request is preceded by “Reexamination Request if the reexamination was ordered under 35 U.S.C. 304, and “Supplemental Examination Request” if the reexamination was ordered under 35 U.S.C. 257 (the control number of the supplemental examination request, which is also the control number of the supplemental examination proceeding, is identical to the control number of the reexamination proceeding ordered as a result of the supplemental examination proceeding).
(B) The patent for which the certification is now issued is identified under the heading “Reexamination Certificate for”; and
(C) A notice will be present which will inform that the list of cited prior art documents will be available via PAIR by control number.
Finally, the certificate will identify the patent claims which were confirmed as patentable, canceled, disclaimed, and those claims not examined. Only the status of the confirmed, canceled, disclaimed, and not examined claims will be indicated in the certificate. The text of the new and amended claims will be printed in the certificate. Any new claims will be printed in the certificate completely in italics, and any amended claims will be printed in the certificate with italics and bracketing indicating the amendments thereto. Any prior court decisions will be identified, as well as the citation of the court decisions.
Below is an example of a certificate for an ex parte reexamination ordered under 35 U.S.C. 304:
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2291 Notice of Ex Parte Reexamination Certificate Issuance in Official Gazette [R-07.2015]
The Official Gazette notice will include bibliographic information, and an indication of the status of each claim after the conclusion of the reexamination proceeding. Additionally, a representative claim will be published along with an
indication of any changes to the specification or drawing.
The notice will clearly indicate the type of certificate, e.g., an ex parte reexamination certificate (for proceedings ordered under 35 U.S.C. 304), an inter partes reexamination certificate, a supplemental examination certificate, or an ex parte reexamination
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certificate from reexamination ordered under 35 U.S.C. 257.
2292 Distribution of Certificate [R-08.2012]
An e-copy of the reexamination certificate will be associated with the e-copy of the patent in the search files. A copy of the certificate will also be made a part of any patent copies prepared by the Office subsequent to the issuance of the certificate.
A copy of the certificate will also be forwarded to all depository libraries and to those foreign offices which have an exchange agreement with the U.S. Patent and Trademark Office.
2293 Intervening Rights [R-11.2013]
35 U.S.C. 307 Certificate of patentability, unpatentability, and claim cancellation.
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(b) Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding will have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section.
The situation of intervening rights resulting from reexamination proceedings parallels the intervening rights situation resulting from reissue proceedings, and the rights detailed in 35 U.S.C. 252 apply equally in reexamination and reissue situations. See Fortel Corp. v. Phone-Mate, Inc., 825 F.2d 1577,
3 USPQ2d 1771 (Fed. Cir. 1987); Kaufman Co., Inc. v. Lantech, Inc., 807 F.2d 970, 1 USPQ2d 1202 (Fed. Cir. 1986); Tennant Co. v. Hako Minuteman, Inc., 4 USPQ2d 1167 (N.D. Ill. 1987); Key Mfg. Group, Inc. v. Microdot, Inc., 679 F. Supp. 648, 4 USPQ2d 1687 (E.D. Mich. 1987).
2294 Concluded Reexamination Proceedings [R-07.2015]
Ex parte reexamination proceedings may be concluded in one of four ways:
(A) The prosecution of the proceeding may be brought to an end, and the proceeding itself concluded, by a denial of reexamination, or vacating the reexamination proceeding, or terminating the reexamination proceeding. (In these instances, no Reexamination Certificate is issued).
(1) A reexamination file (IFW or paper) in which reexamination has been denied or vacated is processed by the Central Reexamination Unit (CRU) or Technology Center (TC) to provide the partial refund set forth in 37 CFR 1.26(c). The reexamination file will then be given a 420 status (reexamination denied) or a 422 status (reexamination vacated). A copy of the PALM “Application Number Information” screen and the “Contents” screen is printed. The printed copy is annotated by adding the comment “PROCEEDING CONCLUDED,” and the annotated copy is then scanned into IFW using the miscellaneous letter document code.
(2) A reexamination file (IFW or paper) in which the reexamination proceeding has been terminated should be forwarded to the Central Reexamination Unit (CRU) if the file is not already there. The reexamination file will then be given a 420 status. A copy of the PALM “Application Number Information” screen and the “Contents” screen is printed, the printed copy is annotated by adding the comment “PROCEEDING CONCLUDED,” and the annotated copy is then scanned into IFW using the miscellaneous letter document code. A partial refund is not made in this instance, since the reexamination was properly commenced and addressed, and was terminated later based upon a court decision, or the like.
(B) The proceeding may be concluded under 37 CFR 1.570(b) with the issuance of a Reexamination Certificate.
A reexamination proceeding that is to be concluded in this manner should be processed as set forth in MPEP § 2287, and reviewed by the CRU Supervisory Patent Reexamination Specialist (SPRS) or TC Quality Assurance Specialist (QAS).
(C) The proceeding may be concluded under 37 CFR 1.570(e) where the reexamination proceeding has been merged with a reissue proceeding and a reissue patent is granted; an
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individual reexamination certificate is not issued, but rather the reissue patent serves as the certificate.
A reexamination proceeding that is to be concluded in this manner should be processed, together with the reissue proceeding, as set forth in MPEP § 1455 and MPEP § 1456.
(D) The proceeding may be concluded under 37 CFR 1.997(b) where the ex parte reexamination proceeding has been merged with an inter partes reexamination proceeding and a single reexamination certificate is issued.
A reexamination proceeding that is to be concluded in this manner should be processed, together with the inter partes reexamination, into a merged certificate of the nature set forth in MPEP § 2690 and MPEP § 2694.
2295 Reexamination of a Reexamination [R-07.2015]
This section provides guidance for the processing and examination of a reexamination request filed on a patent for which a reexamination certificate has already issued, or a reexamination certificate issues on a prior reexamination, while the new reexamination is pending. This reexamination request is generally referred to as a “Reexamination of a reexamination.”
The reexamination request is to be considered based on the claims in the patent as modified by the previously issued reexamination certificate, and not based on the original claims of the patent. Accordingly, when the file for the new reexamination proceeding (reexamination of a reexamination) is first received by the Central Reexamination Unit (CRU), the CRU technical support staff will print out a copy of the issued reexamination certificate and make it of record in the second reexamination file wrapper as a preliminary amendment. Such incorporation must be done prior to forwarding the proceeding to the examiner for action.
The examiner should review the CRU support staff's entry of the reexamination certificate to ensure that all certificate changes are properly entered so that (A) the reexamination will be given on an accurate
specification and claims, and (B) the appropriate version of the patent will be printed in any future reexamination certificate that will ultimately issue. The examiner will issue a decision on the reexamination request based on the patent claims (and specification) with the certificate changes entered.
Once reexamination is ordered, the reexamination proceeding is conducted in accordance with 35 U.S.C. 305, 37 CFR 1.550 and MPEP §§ 2254 - 2294.
I. PRIOR REEXAMINATION MATURES TO CERTIFICATEWHILE LATER REEXAMINATION IS PENDING
If a second request for reexamination of a patent is filed where the certificate for the first reexamination of the patent will issue within 3 months from the filing of the second request, the proceedings normally will not be merged. If the certificate for the first reexamination proceeding will issue before the decision on the second request must be decided, the reexamination certificate is allowed to issue. The second request is then considered based upon the claims in the patent as indicated in the issued reexamination certificate rather than the original claims of the patent. The Legal Instrument Examiner (LIE) will print out a copy of the issued reexamination certificate and make it of record in the second reexamination file wrapper as a preliminary amendment.
In the order/denial decision on the second request, it should be noted that this preliminary amendment (the certificate) was entered into the reexamination file, and that the determination (order/denial) was based upon the new patent claims in the certificate.
A copy of the reexamination certificate should be included as an attachment to the order/denial decision to ensure that any third party requester of the second reexamination has a copy of the certificate claims.
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§ 2295CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
II. PATENT OWNER’S SUBMISSION OF AMENDMENTS
Any amendment to the claims (or specification) of the reexamination proceeding must be presented as if the changes made to the patent text via the reexamination certificate are a part of the original patent. Thus, all italicized text in the certificate is considered as if the text was present without italics in the original patent. Further, any certificate text placed in brackets is considered as if it were never present in the patent at all.
For example, an amendment in a “reexamination of a reexamination” might include italicized text of claim 1 of the reexamination certificate as underlined (or italicized) in the copy of claim 1 submitted in the amendment. This would indicate that text already present in the patent (via the reexamination certificate) is again being added. This would be an improper amendment, and as such, an “informal submission.” Accordingly, the examiner would notify the patent owner that the amendment does not comply with 37 CFR 1.530. Form PTOL-475 or form PTO-2311 would be used to provide the notification of the defect in the amendment, as appropriate, and an appropriate time period (see MPEP § 2266.02) would be set for correction of the defect.
III. COMPLETION OF THE CHECKLISTS
After the mailing of the NIRC, the reexamination file will be processed by the CRU or the TC so that the Office of Data Management can prepare and issue a certificate in accordance with 35 U.S.C. 307 and 37 CFR 1.570. The certificate will set forth the results of the reexamination proceeding and the content of the patent following the proceeding. See MPEP § 2287. The examiner will complete a checklist, Form PTO-1516, and the CRU support staff will complete the reexamination clerk checklist Form PTO-1517. In completing the checklists, the examiner and CRU support staff should keep in mind that the “patent” is the original patent as modified by the reexamination certificate. For example, claims canceled by the prior reexamination certificate should be listed in Item 8 - “Claim(s) __________ was (were) previously canceled.” Likewise, in Item 12 of the examiner checklist - “Claim(s) ________
is (are) determined to be patentable as amended”; any claims amended only by the prior reexamination certificate (i.e., not further amended in the present reexamination) should not be listed.
Each “reexamination of a reexamination” must be reviewed by a CRU Supervisory Patent Reexamination Specialist (SPRS) or TC Quality Assurance Specialist (QAS) and a paralegal to ensure compliance with the above guidelines.
2296 USPTO Forms To Be Used In Ex Parte Reexamination [R-07.2015]
The following forms must be used in ex parte reexamination actions and processing (these forms are not reproduced below):
(A) Order Denying Request For Ex Parte Reexamination – PTOL-471D
(B) Order Granting Request For Ex Parte Reexamination – PTOL-471G
(C) Office Action in Ex Parte Reexamination – PTOL-466
(D) Ex Parte Reexamination Advisory Action Before the Filing of an Appeal Brief – PTOL-467
(E) Ex Parte Reexamination Advisory Action After the Filing of an Appeal Brief – PTOL-467A
(F) Ex Parte Reexamination Notification Re: Appeal – PTOL-468
(G) Reasons for Patentability/Confirmation – PTOL-476
(H) Notice of Intent to Issue Ex Parte Reexamination Certificate – PTOL-469
(I) Ex Parte Reexamination Communication Transmittal Form – PTOL-465
(J) Ex Parte Reexamination Interview Summary- PTOL-474
(K) Notice of Defective Paper In Ex Parte Reexamination - Third Party Requested – PTOL-475
(L) Notice of Defective Paper in Ex Parte Reexamination - Patent Owner Requested - PTO-2311
(M) Ex Parte Reexamination Communication – PTOL-473
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(N) Reexamination Clerk Checklist – PTOL-1517
(O) Examiner Checklist – Reexamination – PTOL-1516
(P) Decision on Petition for Extension of Time in Reexamination - PTO-2293
A Request for Ex Parte Reexamination Transmittal Form, PTO/SB/57, is available on the USPTO website at www.uspto.gov for use in the filing of a request for reexamination; its use, however, is not mandatory.
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§ 2296CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS
Chapter 2300 Interference Proceedings
Introduction2301 Statutory Basis2301.01 Definitions2301.02 Interfering Subject Matter2301.03
Consult an Interference Practice Specialist
2302
Completion of Examination2303 Issuance and Suspension2303.01 Other Outstanding Issues with Patents2303.02
Suggesting an Interference2304 Preliminaries to Referring an Interference to the Board
2304.01
Interference Search2304.01(a) Obtaining Control Over Involved Files
2304.01(b)
Translation of Foreign Benefit Application
2304.01(c)
Sorting Claims2304.01(d) Applicant Suggestion2304.02
Identifying the Other Application or Patent
2304.02(a)
Counts and Corresponding Claims
2304.02(b)
Explaining Priority2304.02(c) Adequate Written Description2304.02(d)
Patentee Suggestion2304.03 Examiner Suggestion2304.04
Interfering Claim Already in Application
2304.04(a)
Requiring a Claim2304.04(b) Common Ownership2304.05
Requiring a Priority Showing2305 Secrecy Order Cases2306 Action During an Interference2307
Ex Parte Communications2307.01 Access to Related Files2307.02 Suspension of Related Examinations2307.03 Additional Parties to Interference2307.04 Board Action on Related Files2307.05 Action at the Board2307.06
Action After an Interference2308 Final Disposal of Claims2308.01 Added or Amended Claims2308.02 Estoppel Within the Office2308.03
Losing Party2308.03(a) No Interference-in-Fact2308.03(b) No Second Interference2308.03(c)
National Aeronautics and Space Administration or Department of Energy
2309
[Editor Note: This chapter was not substantively revised for the Ninth Edition of the MPEP. Each section has a revision indicator of “[R-08.2012],” meaning that the section as reproduced in this Edition is the version in force in August 2012 with the following exceptions: 1) As a result of the publication process, form paragraphs reproduced in this chapter reflect the text used by examiners effective November 2013 rather than those in force in August 2012; 2) The marks indicating added or deleted text from prior revisions have been removed; and 3) The notation “[Reserved]” has been added for section numbers previously missing in the hierarchy (i.e., section numbers that were never used or no longer have text). See the ninth revision of the Eighth Edition of the MPEP published August 2012 as posted on the USPTO Web site on the MPEP Archives page (http://www.uspto.gov/web/offices/ pac/mpep/old/index.htm) for the text of form paragraphs in force in August 2012.]
[Editor Note, October 2015: This chapter was not substantively revised in the Ninth Edition, Revision 07.2015 of the MPEP. However, as a result of the publication process, the form paragraphs reproduced herein have been updated and may include substantive changes. A future revision will revise sections of this chapter as necessary for consistency with the form paragraph changes. ]
2301 Introduction [R-08.2012]
An interference is a contest under 35 U.S.C. 135(a) between an application and either another application or a patent. An interference is declared to assist the Director of the United States Patent and Trademark Office in determining priority, that is, which party first invented the commonly claimed invention within the meaning of 35 U.S.C. 102(g)(1). See MPEP § 2301.03. Once an interference has been suggested under 37 CFR 41.202, the examiner refers the suggested interference to the Board of Patent Appeals and Interferences (Board). An administrative patent judge declares the interference, which is then administered at the Board. A panel of Board members enters final judgment on questions of priority and patentability arising in an interference.
Rev. 07.2015, October 20152300-1
Once the interference is declared, the examiner generally will not see the application again until the interference has been terminated. Occasionally, however, the Board may refer a matter to the examiner or may consult with the examiner on an issue. Given the very tight deadlines in an interference, any action on a consultation or referral from the Board must occur with special dispatch.
The application returns to the examiner after the interference has been terminated. Depending on the nature of the judgment in the case, the examiner may need to take further action in the application. For instance, if there are remaining allowable claims, the application may need to be passed to issue. The Board may have entered a recommendation for further action by the examiner in the case. If the applicant has lost an issue in the interference, the applicant may be barred from taking action in the application or any subsequent application that would be inconsistent with that loss.
Given the infrequency, cost, and complexity of interferences, it is important for the examiner to consult immediately with an Interference Practice Specialist (IPS) in the examiner’s Technology Center, see MPEP § 2302, once a possible interference is identified. It is also important to complete examination before the possible interference is referred to the Board. See MPEP § 2303.
2301.01 Statutory Basis [R-08.2012]
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless —
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(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or
*****
35 U.S.C. 104 Invention made abroad.
(a) IN GENERAL.—
(1) PROCEEDINGS.—In proceedings in the Patent and Trademark Office, in the courts, and before any other
competent authority, an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a foreign country other than a NAFTA country or a WTO member country, except as provided in sections 119 and 365 of this title.
(2) RIGHTS.—If an invention was made by a person, civil or military—
(A) while domiciled in the United States, and serving in any other country in connection with operations by or on behalf of the United States,
(B) while domiciled in a NAFTA country and serving in another country in connection with operations by or on behalf of that NAFTA country, or
(C) while domiciled in a WTO member country and serving in another country in connection with operations by or on behalf of that WTO member country, that person shall be entitled to the same rights of priority in the United States with respect to such invention as if such invention had been made in the United States, that NAFTA country, or that WTO member country, as the case may be.
(3) USE OF INFORMATION.—To the extent that any information in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or disproving a date of invention has not been made available for use in a proceeding in the Patent and Trademark Office, a court, or any other competent authority to the same extent as such information could be made available in the United States, the Director, court, or such other authority shall draw appropriate inferences, or take other action permitted by statute, rule, or regulation, in favor of the party that requested the information in the proceeding.
(b) DEFINITIONS.—As used in this section—
(1) The term “NAFTA country” has the meaning given that term in section 2(4) of the North American Free Trade Agreement Implementation Act; and
(2) The term “WTO member country” has the meaning given that term in section 2(10) of the Uruguay Round Agreements Act.
35 U.S.C. 135 Interferences.
(a) Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared and the Director shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be. The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability. Any final decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office of the claims involved, and the Director may issue a patent to the applicant who is adjudged the prior inventor. A final judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2301.01
copies of the patent distributed after such cancellation by the Patent and Trademark Office.
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2301.02 Definitions [R-08.2012]
37 CFR 41.2 Definitions.
Unless otherwise clear from the context, the following definitions apply to proceedings under this part:
Affidavit means affidavit, declaration under § 1.68 of this title, or statutory declaration under 28 U.S.C. 1746. A transcript of an ex parte deposition may be used as an affidavit in a contested case.
Board means the Board of Patent Appeals and Interferences and includes:
(1) For a final Board action:
(i) In an appeal or contested case, a panel of the Board.
(ii) In a proceeding under § 41.3, the Chief Administrative Patent Judge or another official acting under an express delegation from the Chief Administrative Patent Judge.
(2) For non-final actions, a Board member or employee acting with the authority of the Board.
Board member means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges.
Contested case means a Board proceeding other than an appeal under 35 U.S.C. 134 or a petition under § 41.3. An appeal in an inter partes reexamination is not a contested case.
Final means, with regard to a Board action, final for the purposes of judicial review. A decision is final only if:
(1) In a panel proceeding. The decision is rendered by a panel, disposes of all issues with regard to the party seeking judicial review, and does not indicate that further action is required; and
(2) In other proceedings. The decision disposes of all issues or the decision states it is final.
Hearing means consideration of the issues of record. Rehearing means reconsideration.
Office means United States Patent and Trademark Office.
Panel means at least three Board members acting in a panel proceeding.
Panel proceeding means a proceeding in which final action is reserved by statute to at least three Board members, but includes a non-final portion of such a proceeding whether administered by a panel or not.
Party, in this part, means any entity participating in a Board proceeding, other than officers and employees of the Office, including:
(1) An appellant;
(2) A participant in a contested case;
(3) A petitioner; and
(4) Counsel for any of the above, where context permits.
37 CFR 41.100 Definitions.
In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart:
Business day means a day other than a Saturday, Sunday, or Federal holiday within the District of Columbia.
Involved means the Board has declared the patent application, patent, or claim so described to be a subject of the contested case.
37 CFR 41.200 Procedure; pendency.
(a) A patent interference is a contested case subject to the procedures set forth in subpart D of this part.
(b) A claim shall be given its broadest reasonable construction in light of the specification of the application or patent in which it appears.
(c) Patent interferences shall be administered such that pendency before the Board is normally no more than two years.
37 CFR 41.201 Definitions.
In addition to the definitions in §§ 41.2 and 41.100, the following definitions apply to proceedings under this subpart:
Accord benefit means Board recognition that a patent application provides a proper constructive reduction to practice under 35 U.S.C. 102(g)(1).
Constructive reduction to practice means a described and enabled anticipation under 35 U.S.C. 102(g)(1) in a patent application of the subject matter of a count. Earliest constructive reduction to practice means the first constructive reduction to practice that has been continuously disclosed through a chain of patent applications including in the involved application or patent. For the chain to be continuous, each subsequent application must have been co-pending under 35 U.S.C. 120 or 121 or timely filed under 35 U.S.C. 119 or 365(a).
Count means the Board’s description of the interfering subject matter that sets the scope of admissible proofs on priority. Where there is more than one count, each count must describe a patentably distinct invention.
Involved claim means, for the purposes of 35 U.S.C.135(a), a claim that has been designated as corresponding to the count.
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§ 2301.02INTERFERENCE PROCEEDINGS
Senior party means the party entitled to the presumption under § 41.207(a)(1) that it is the prior inventor. Any other party is a junior party.
Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference. Threshold issues may include:
(1) No interference-in-fact, and
(2) In the case of an involved application claim first made after the publication of the movant’s application or issuance of the movant’s patent:
(i) Repose under 35 U.S.C. 135(b) in view of the movant’s patent or published application, or
(ii) Unpatentability for lack of written description under 35 U. S.C. 112 (1) of an involved application claim where the applicant suggested, or could have suggested, an interference under § 41.202(a).
2301.03 Interfering Subject Matter [R-08.2012]
37 CFR 41.203 Declaration.
(a) Interfering subject matter. An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.
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A claim of one inventor can be said to interfere with the claim of another inventor if they each have a patentable claim to the same invention. The Office practice and the case law define “same invention” to mean patentably indistinct inventions. Case v. CPC Int’l, Inc ., 730 F.2d 745, 750, 221 USPQ 196, 200 (Fed. Cir. 1984); Aelony v. Arni , 547 F.2d 566, 570, 192 USPQ 486, 489-90 (CCPA 1977); Nitz v. Ehrenreich , 537 F.2d 539, 543, 190 USPQ 413, 416 (CCPA 1976); Ex parte Card , 1904 C.D. 383, 384-85 (Comm’r Pats. 1904). If the claimed invention of either party is patentably distinct from the claimed invention of the other party, then there is no interference-in-fact. Nitz v. Ehrenreich , 537 F.2d 539, 543, 190 USPQ 413, 416 (CCPA 1976). 37 CFR 41.203(a) states the test in terms of the familiar concepts of obviousness and anticipation. Accord Eli Lilly & Co. v. Bd. of Regents of the Univ. of Wa., 334 F.3d 1264, 1269-70, 67 USPQ2d 1161, 1164-65 (Fed. Cir. 2003) (affirming the Office’s interpretive rule).
Identical language in claims does not guarantee that they are drawn to the same invention. Every claim must be construed in light of the application in which it appears. 37 CFR 41.200(b). Claims reciting means-plus-function limitations, in particular, might have different scopes depending on the corresponding structure described in the written description.
When an interference is declared, there is a description of the interfering subject matter, which is called a “count.” Claim correspondence identifies claims that would no longer be allowable or patentable to a party if it loses the priority determination for the count. To determine whether a claim corresponds to a count, the subject matter of the count is assumed to be prior art to the party. If the count would have anticipated or supported an obviousness determination against the claim, then the claim corresponds to the count. 37 CFR 41.207(b)(2). Every count must have at least one corresponding claim for each party, but it is possible for a claim to correspond to more than one count.
Example 1
A patent has a claim to a compound in which R is an alkyl group. An application has a claim to the same compound except that R is n-pentyl, which is an alkyl. The application claim, if prior art to the patent, would have anticipated the patent claim. The patent claim would not have anticipated the application claim. If, however, in the art n-pentyl would have been an obvious choice for alkyl, then the claims define interfering subject matter.
Example 2
An application has a claim to a boiler with a novel safety valve. A patent has a claim to just the safety valve. The prior art shows that the need for boilers to have safety valves is well established. The application claim, when treated as prior art, would have anticipated the patent claim. The patent claim, when treated as prior art and in light of the boiler prior art, can be shown to render the application claim obvious. The claims interfere.
Example 3
An application has a claim to a reaction using platinum as a catalyst. A patent has a claim to the same reaction except the catalyst may be selected from the Markush group consisting of platinum, niobium, and lead. Each claim would have anticipated the other claim when the Markush alternative for the catalyst is platinum. The claims interfere.
Example 4
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Same facts as Example 3, except the applicant has a Markush group for the catalyst consisting of platinum, osmium, and zinc. Each claim would have anticipated the other claim when the Markush alternative for the catalyst in each claim is platinum. The claims interfere.
Example 5
An application has a claim to a protein with a specific amino acid sequence shown in SEQ ID NO:1. A patent has a claim to the genus of polynucleotides defined as encoding the same amino acid sequence as the applicant’s SEQ ID NO:1. The patent claim would have anticipated the application claim since it expressly describes an amino acid sequence identical to the protein of the application. The application claim would have rendered the patent claim obvious in light of a well-established relationship between nucleic acids for encoding amino acids in protein sequences. The claims interfere.
Example 6
A patent has a claim to a genus of polynucleotides that encode a protein with a specific amino acid sequence. An application has a claim to a polynucleotide that encodes a protein with the same amino acid sequence. The application claim is a species within the genus and thus would have anticipated the patent claim. The patent claim would not have anticipated or rendered the application claim obvious without some explanation of why a person having ordinary skill in the art would have selected the applicant’s species from the patentee’s genus. Generally the explanation should include citation to prior art supporting the obviousness of the species. Without the explanation, the claims do not interfere.
Example 7
A patent and an application each claim the same combination including “means for fastening.” The application discloses glue for fastening, while the patent discloses a rivet for fastening. Despite otherwise identical claim language, the claims do not interfere unless it can be shown that in this art glue and rivets were considered structurally equivalent or would have rendered each other obvious.
Example 8
A patent claims a formulation with the surfactant sodium lauryl sulfate. An application claims the same formulation except no specific surfactant is described. The application discloses that it is well known in the art to use sodium lauryl sulfate as the surfactant in these types of formulations. The claims interfere.
Example 9
An applicant has a claim to a genus and a species within the genus. The interference is declared with two counts, one directed to the genus and one directed to the species. The species claim would correspond to the species count because the count would have anticipated the claimed subject matter. The genus count would not ordinarily have anticipated the species claim, however, so the species claim would only correspond to the genus count if there was a showing that the genus count would have rendered the claimed species obvious. The genus claim, however, would have been anticipated by both the genus count and the species count and thus would correspond to both counts.
2302 Consult an Interference Practice Specialist [R-08.2012]
Every Technology Center (TC) has at least one Interference Practice Specialist (IPS), who must be consulted when suggesting an interference to the Board of Patent Appeals and Interferences (Board).
Less than one percent of all applications become involved in an interference. Consequently, examiners are not expected to become experts in interference practices. Instead, examiners are expected to be proficient in identifying potential interference and to consult with an IPS in their TC on interference matters. The IPS, in turn, is knowledgeable about when and how to suggest interferences, how to handle inquiries to and from the Board before and during interferences, and how to handle applications after interferences are completed.
An IPS must approve any referral of a suggested interference to the Board. The referral must include a completed Form PTO-850, which either an IPS or a Director of the examiner’s TC must sign.
IPSs consult with administrative patent judges (APJs) that declare interferences to stay current in interference practice. When necessary, an IPS may arrange for a consultation with an APJ to discuss a suggested interference or the effect of a completed interference. Examiners must promptly address inquiries or requests from an IPS regarding a suggested interference.
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§ 2302INTERFERENCE PROCEEDINGS
GENERAL PRACTICES
Practice 1. Consult an Interference Practice Specialist.
In an effort to maximize uniformity, when an examiner first becomes aware that a potential interference exists or any other interference issue
arises during prosecution of an application, the examiner should bring the matter to the attention of an IPS in the examiner’s TC.
The IPS in turn will consult with an APJ designated from time to time by the Chief Administrative Patent Judge.
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A plan of action will be developed on a case-by-case basis.
Practice 2. Party not in condition for allowance.
When:
(A) a first application and a second application claim the same patentable invention; and
(B) a first application is in condition for allowance; and
(C) the second application is not in condition for allowance,
then generally a notice of allowance should be entered in the first application and it should become a patent.
Without suspending action in the first application and after consultation consistent with Practice 1 above, the examiner may wish to give the second applicant a very brief period of time within which to put the second application in condition for allowance, e.g., by canceling rejected claims thereby leaving only allowable claims which interfere with the claims of the first application.
When examination of the second application is complete, an application versus patent interference may be appropriate.
Practice 3. Both in condition for allowance; earliest effective filing dates within six months.
When two applications are in condition for allowance and the earliest effective filing dates of the applications are within six months of each other, an application versus application interference may be suggested, provided the applicant with the later filing date makes the showing required by 37 CFR 41.202(d). Note that if the earliest filed application is available as a reference (for example, as a published application under 35 U.S.C. 102(e)) against the other application, then a rejection should be made against the other application. Ideally, the rejection would be made early in the prosecution, but if it is not and as a result the junior application is not in condition for allowance, then the senior application should be issued. In light of patent term adjustments it is no longer appropriate to suspend
an application on the chance that an interference might ultimately result.
Practice 4. Both in condition for allowance; earliest effective filing dates not within six months.
If the applications are both in condition for allowance and earliest effective filing dates of the applications are not within six months of each other, the application with the earliest effective filing date shall be issued. The application with the later filing date shall be rejected on the basis of the application with the earliest effective filing date. Further action in the application with the later filing date will be governed by prosecution in that application. If the applicant in the application with the later filing date makes the showing required by 37 CFR 41.202(d), an application versus patent interference may be declared. If no rejection is possible over the patent issuing from the application with the earliest effective filing date, then the applicant must still be required under 35 U.S.C. 132 to make the priority showing required in 37 CFR 41.202(d).
Practice 5. Suspension discouraged.
Suspension of prosecution pending a possible interference should be rare and should not be entered prior to the consultation required by Practice 1 above.
2303 Completion of Examination [R-08.2012]
37 CFR 41.102 Completion of examination.
Before a contested case is initiated, except as the Board may otherwise authorize, for each involved application and patent:
(a) Examination or reexamination must be completed, and
(b) There must be at least one claim that:
(1) Is patentable but for a judgment in the contested case, and
(2) Would be involved in the contested case.
An interference should rarely be suggested until examination is completed on all other issues. Each pending claim must be allowed, finally rejected, or canceled. Any appeal from a final rejection must be completed, including any judicial review. Any petition must be decided.
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§ 2303INTERFERENCE PROCEEDINGS
Example 1
An applicant has one allowed claim directed to invention A, which is the same invention of another inventor within the meaning of 35 U.S.C. 102(g)(1), and has rejected claims directed to different invention B. If the rejection is contested, the application is not yet ready for an interference. Restriction of the application to invention A, followed by cancellation of the claims directed to invention B would remove this impediment to declaring an interference.
Example 2
A patent has a claim to a species. An applicant has claims to the species and to a genus that includes the species. The examiner has allowed the species claim, but rejected the genus claim. The applicant suggests an interference with the patent. The interference will generally not be declared until the applicant resolves the status of the genus claim by, for example, appealing the rejection or canceling the rejected claim. An applicant may expedite the process of having the interference declared by canceling the genus claim from the application.
Two grounds of unpatentability receive particularly close scrutiny before an interference is declared. Enforcement of the written description requirement under 35 U.S.C. 112, first paragraph and the late claiming bars under 35 U.S.C. 135(b) are important to preserve the efficiency and integrity of interferences.37 CFR 41.201, “Threshold issue.” See, e.g., Berman v. Housey, 291 F.3d 1345, 1354, 63 USPQ2d 1023, 1029 (Fed. Cir. 2002).
RESTRICTION IN APPLICATIONS WITH INTERFERING CLAIMS
Ordinarily restrictions are limited to situations where (A) the inventions are independent or distinct as claimed, and (B) there would be a serious burden on the examiner if restriction is not required (see MPEP § 803). Potential interferences present an additional situation in which a restriction requirement may be appropriate. Specifically, restriction of interfering claims from non-interfering claims, or from unpatentable claims whose further prosecution would unduly delay initiation of an interference, can be an appropriate use of restrictions under 35 U.S.C. 121. An Interference Practice Specialist (IPS) should be consulted in making and resolving restrictions under this heading. An applicant may, of course, also choose to cancel claims and refile them in a continuation application without waiting for the restriction requirement.
A. Non-Interfering Claims
Patent term adjustments are available for patents whose issuance has been delayed for an interference.35 U.S.C. 154(b)(1)(C)(i). A claim that does not interfere, by definition, is directed to a patentably distinct invention compared to a claim that does interfere. Leaving a non-interfering claim in an application going into an interference creates an unwarranted delay in the issuance of claims to the non-interfering subject matter. As far as the public and the Office are concerned, there is no justification for not issuing the non-interfering claims promptly. An exception exists if the claims are already term limited, as would be the case for an application subject to a terminal disclaimer or a reissue application (see 35 U.S.C. 154(b)(1)(C) (referring to issuance of the original patent)).
If an application contains both interfering and non-interfering claims, a restriction requirement should be made between the two. If the applicant traverses the restriction requirement, depending on the reasons for the traversal, the restriction may be maintained or the traversal may be treated as a concession that the non-interfering claims should be designated as corresponding to the count.
B. Unpatentable Claims
Ordinarily restriction of claims simply because they are not patentable would not be appropriate. If, however, (A) prosecution of the unpatentable claims to completion would unduly delay initiation of the interference and (B) the delay would create prejudice to another stakeholder, such as another applicant or the public, a restriction requirement may be appropriate. Approval of an IPS is required before this restriction requirement may be made.
Example
An applicant has both broad and narrow claims. The narrow claims are plainly supported, but the support for the broad claims is contested. A patent with claims to the narrow invention issues to another inventor with a much later earliest effective filing date. Delay of the interference until the patentability of the broader claims is resolved may unduly prejudice the patentee and the public by leaving a cloud of doubt hanging over the patent claims.
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If the unpatentable application claims are eventually prosecuted to allowance, the examiner should consult with the IPS regarding the status of the interference in case the claims would be affected by the outcome of the interference.
C. Reissue Applications
As explained above, reissue applications are not subject to patent term adjustments. Applicants sometimes, however, file reissue applications to amend patent claims in response to events occurring in the interference. To maintain parity with other applicants, the Board does not permit reissue applicants to add claims that would not correspond to a count. Winter v. Fujita, 53 USPQ2d 1234, 1249 (Bd. Pat. App. & Inter. 1999). Since the burden lies with the reissue applicant to comply with Winter, the examiner need not require restriction of the non-interfering claims. Practice under Winter, however, may explain why some reissue applicants file more than one reissue application for the same patent.
Form paragraph 23.01 may be used to acknowledge a request for interference that is premature since examination of the application has not been completed.
¶ 23.01 Request for Interference Premature; Examination Not Completed
The request for interference filed [1] is acknowledged. However, examination of this application has not been completed as required by 37 CFR 41.102(a). Consideration of a potential interference is premature. See MPEP § 2303.
2303.01 Issuance and Suspension [R-08.2012]
Since applicants may be eligible for patent term adjustments to offset delays in examination, 35 U.S.C. 154(b)(1), it is important that suspensions should rarely, if ever, be used and that applications with allowed claims be issued to the greatest extent possible.
Example 1
A claim of patent A and a claim of application B interfere. Examination of application B is completed. An interference may not be declared between two patents. 35 U.S.C. 135(a). Consequently, the interfering claim in application B should not be passed to issue, even if it has an earlier effective filing date than patent A. Instead, an interference should be suggested.
Example 2
Two applications, C and D, with interfering claims are pending. Examination of application C is completed and all claims are allowable. Examination of application D is not completed. Application C should be issued promptly. If application C has an earlier effective U.S. filing date when issued as patent C, or when published as application publication C, it may be available as prior art under 35 U.S.C. 102(e) against application D. However, even if application C’s effective filing date is later than application D’s effective filing date, application C should issue. Until examination of application D is completed, it is not known whether application D should be in interference with application C, so suspension of application C will rarely, if ever, be justified.
Example 3
Two applications, E and F, with interfering claims are pending. Both are ready to issue. (Such ties should be extremely rare; suspensions must not be used to create such ties.) If the applications have their earliest effective filing dates within six months of each other, then an interference may be suggested. If, however, application E’s earliest effective filing date is more than six months before application F’s earliest effective filing date, then application E should issue. If application E (or the resulting patent E) is available as prior art (under 35 U.S.C. 102(a) or 102(e)) against application F, then a rejection should be made. If not, a requirement under 37 CFR 41.202(d) to show priority should be made. See MPEP § 2305.
2303.02 Other Outstanding Issues with Patents [R-08.2012]
Patents that are undergoing reexamination or reissue are subject to the requirement of 37 CFR 41.102 that examination be completed. Patents may, however, be the subject of other proceedings before the Office. For instance, a patent may be the subject of a petition to accept a late maintenance fee,35 U.S.C. 41(c), or a request for disclaimer or correction. 35 U.S.C. 253 to 256. Such issues must be resolved before an interference is suggested because they may affect whether or how an interference may be declared.
Example 1
A patent maintenance fee has not been timely paid. By operation of law, 35 U.S.C. 41(b), the patent is considered to be expired. An interference cannot be declared with an expired patent. 35 U.S.C. 135(a). Consequently, if a petition to accept delayed payment is not granted, 37 CFR 1.378, then no interference can be declared.
Example 2
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§ 2303.02INTERFERENCE PROCEEDINGS
A disclaimer under 35 U.S.C. 253, is filed for the sole patent claim directed to the same invention as the claims of the applicant. Since the patentee and applicant must both have claims to the same invention, 35 U.S.C. 102(g)(1), no interference can be declared.
Example 3
Similar to Example 2, a request for correction under 35 U.S.C. 254 or 255, is filed that results in a change to the sole patent claim such that it is no longer directed to the same invention as any claim of the applicant. Again, since the patentee and applicant must both have claims to the same invention, 35 U.S.C. 102(g)(1), no interference can be declared.
Example 4
Inventorship is corrected such that the inventors for the patent and the application are the same. Since 35 U.S.C. 102(g)(1) requires the interference to be with “another inventor,” the correction eliminates the basis for an interference. Other rejections, such as a double-patenting rejection may be appropriate.
2304 Suggesting an Interference [R-08.2012]
The suggestion for an interference may come from an applicant or from an examiner. Who suggests the interference determines what must be done and shown prior to declaration of an interference. In either circumstance, the examiner must consult with an Interference Practice Specialist (IPS), who may then refer the suggested interference to the Board of Patent Appeals and Interferences.
2304.01 Preliminaries to Referring an Interference to the Board [R-08.2012]
2304.01(a) Interference Search [R-08.2012]
When an application is in condition for allowance, an interference search must be made by performing a text search of the “US-PGPUB” database in EAST or WEST directed to the comprehensive inventive features in the broadest claim. If the application contains a claim directed to a nucleotide or peptide sequence, the examiner must submit a request to STIC to perform an interference search of the sequence. If the search results identify any potential interfering subject matter, the examiner will review the application(s) with the potential interfering subject to determine whether interfering subject matter exists. If interfering subject matter does exist,
the examiner will follow the guidance set forth in this chapter. If there is no interfering subject matter then the examiner should prepare the application for issuance. A printout of only the database(s) searched, the query(ies) used in the interference search, and the date the interference search was performed must be made of record in the application file. The results of the interference search must not be placed in the application file.
The search for interfering applications must not be limited to the class or subclass in which the application is classified, but must be extended to all classes, in and out of the Technology Center (TC), in which it has been necessary to search in the examination of the application. See MPEP § 1302.08.
2304.01(b) Obtaining Control Over Involved Files [R-08.2012]
Ordinarily applications that are believed to interfere should be assigned to the same examiner.
I. IN DIFFERENT TECHNOLOGY CENTERS
If the interference would be between two applications, and the applications are assigned to different Technology Centers (TCs), then one application must be reassigned. Ordinarily the applications should both be assigned to the TC where the commonly claimed invention would be classified. After termination of the interference, further transfer may be appropriate depending on the outcome of the interference.
II. PAPERS NOT CONVERTED TO IMAGE FILE WRAPPER FILES
Although the official records for most applications have been converted into Image File Wrapper (IFW) files, some records exist only in paper form, particularly older benefit application files. Even IFW files may have artifact records that have not been converted. Complete patent and benefit files are necessary for determining whether benefit should be accorded for purposes of 35 U.S.C. 102(g)(1). A suggested interference must not be referred to the Board of Patent Appeals and Interferences (Board)
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if all files, including benefit files, are not available to the examiner in either IFW format or paper.
If a paper file wrapper has been lost, it must be reconstructed before the interference is referred to the Board.
III. PATENT COOPERATION TREATY FILES
Generally, a separate application file for a Patent Cooperation Treaty (PCT) application is not required for according benefit because the PCT application is included in a national stage application file that is itself either the application involved in the interference or a benefit file. Occasionally, however, the PCT application file itself is required for benefit. For instance, if benefit is claimed to the PCT application, but not to a national stage application in which it is included, then the PCT application file must be obtained.
2304.01(c) Translation of Foreign Benefit Application [R-08.2012]
A certified translation of every foreign benefit application or Patent Cooperation Treaty (PCT) application not filed in English is required.35 U.S.C. 119(b)(3) and 372(b)(3) and 37 CFR 1.55(a)(4). If no certified translation is in the official record for the application, the examiner must require the applicant to file a certified translation. The applicant should provide the required translation if applicant wants the application to be accorded benefit of the non-English language application. Any showing of priority that relies on a non-English language application is prima facie insufficient if no certified translation of the application is on file.37 CFR 41.154(b) and 41.202(e).
Form paragraph 23.19 may be used to notify applicant that a certified English translation of the priority document is required.
¶ 23.19 Foreign Priority Not Substantiated
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action, 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
2304.01(d) Sorting Claims [R-08.2012]
An applicant may be entitled to a day-for-day patent term adjustment for any time spent in an interference. If an applicant has several related applications with interfering claims intermixed with claims that do not interfere, the examiner should consider whether the interfering claims should be consolidated in a single application or whether an application should be restricted to claims that do not interfere. This way examination can proceed for any claims that do not interfere without the delay that will result from the interference.
Interfering claims of an applicant are “conflicting claims” within the meaning of 37 CFR 1.78(b). The examiner may require consolidation of such claims into any disclosure of the applicant that provides support for the claims.35 U.S.C. 132(a).
Similarly, the examiner should require an applicant to restrict an application to the interfering claims,35 U.S.C. 121, in which case the applicant may file a divisional application for the claims that do not interfere.
Sorting of claims may not be appropriate in all cases. For instance, a claim should not be consolidated into an application that does not provide support under 35 U.S.C. 112, first paragraph for the claim.
2304.02 Applicant Suggestion [R-08.2012]
37 CFR 41.202 Suggesting an interference.
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
(1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference,
(2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
(3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
(4) Explain in detail why the applicant will prevail on priority,
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§ 2304.02INTERFERENCE PROCEEDINGS
(5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant’s specification, and
(6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter.
*****
(d) Requirement to show priority under 35 U.S.C. 102(g).
(1) When an applicant has an earliest constructive reduction to practice that is later than the apparent earliest constructive reduction to practice for a patent or published application claiming interfering subject matter, the applicant must show why it would prevail on priority.
(2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause. The Board may authorize the filing of motions to redefine the interfering subject matter or to change the benefit accorded to the parties.
*****
When an applicant suggests an interference under 37 CFR 41.202(a), an examiner must review the suggestion for formal sufficiency. As explained in MPEP § 2304.02(c), the examiner is generally not responsible for determining the substantive adequacy of any priority showing. The examiner may, however, offer pertinent observations on any showing when the suggested interference is referred to the Board of Patent Appeals and Interferences. The observations may be included as an attachment to the Form PTO-850.
Form paragraphs 23.06 to 23.06.06 may be used to acknowledge applicant’s suggestion for interference under 37 CFR 41.202(a) that failed to comply with one or more of paragraphs (a)(1) to (a)(6) of 37 CFR 41.202.
¶ 23.06 Applicant Suggesting an Interference
Applicant has suggested an interference pursuant to 37 CFR 41.202(a) in a communication filed [1].
Examiner Note:
1. Use this form paragraph if applicant has suggested an interference under 37 CFR 41.202(a) and applicant has failed
to comply with one or more of paragraphs (a)(1) to (a)(6) of 37 CFR 41.202.
2. In bracket 1, insert the date of applicant’s communication.
3. This form paragraph must be followed by one or more of form paragraphs 23.06.01 to 23.06.03 and end with form paragraph 23.06.04.
¶ 23.06.01 Failure to Identify the Other Application or Patent
Applicant failed to provide sufficient information to identify the application or patent with which the applicant seeks an interference. See 37 CFR 41.202(a)(1) and MPEP § 2304.02(a).
¶ 23.06.02 Failure to Identify the Counts and Corresponding Claims
Applicant failed to (1) identify all claims the applicant believes interfere, and/or (2) propose one or more counts, and/or (3) show how the claims correspond to one or more counts. See 37 CFR 41.202(a)(2) and MPEP § 2304.02(b).
¶ 23.06.03 Failure to Provide Claim Chart Comparing At Least One Claim
Applicant failed to provide a claim chart comparing at least one claim of each party corresponding to the count. See 37 CFR 41.202(a)(3) and MPEP § 2304.02(c).
¶ 23.06.04 Failure to Explain in Detail Why Applicant Will Prevail on Priority
Applicant failed to provide a detailed explanation as to why applicant will prevail on priority. See 37 CFR 41.202(a)(4), (a)(6), (d) and MPEP § 2304.02(c).
¶ 23.06.05 ClaimAdded/Amended; Failure to Provide Claim Chart Showing Written Description
Claim [1] has been added or amended in a communication filed on [2] to provoke an interference. Applicant failed to provide a claim chart showing the written description for each claim in the applicant’s specification. See 37 CFR 41.202(a)(5) and MPEP § 2304.02(d).
¶ 23.06.06 Time Period for Reply
Applicant is given TWO MONTHS from the mailing date of this communication to correct the deficiency(ies). EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).
2304.02(a) Identifying the Other Application or Patent [R-08.2012]
37 CFR 41.202 Suggesting an interference.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2304.02(a)
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
(1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference,
*****
Usually an applicant seeking an interference will know the application serial number or the patent number of the application or patent, respectively, with which it seeks an interference. If so, providing that number will fully meet the identification requirement of 37 CFR 41.202(a)(1).
Occasionally, an applicant will believe another interfering application exists based only on indirect evidence, for instance through a journal article, a “patent pending” notice, or a foreign published application. In such cases, information about likely named inventors and likely assignees may lead to the right application. The applicant should be motivated to help the examiner identify the application since inadequate information may prevent the declaration of the suggested interference.
2304.02(b) Counts and Corresponding Claims [R-08.2012]
37 CFR 41.202 Suggesting an interference.
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
*****
(2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
(3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
*****
The applicant must identify at least one patentable claim from every application or patent that interferes for each count. A count is just a description of the interfering subject matter, which the Board of Patent Appeals and Interferences uses to determine what evidence may be used to prove priority under 35 U.S.C. 102(g)(1).
The examiner must confirm that the applicant has (A) identified at least one patentable count, (B) identified at least one patentable claim from each party for each count, and (C) has provided a claim chart comparing at least one set of claims for each count. The examiner need not agree with the applicant’s suggestion. The examiner’s role is to confirm that there are otherwise patentable interfering claims and that the formalities of 37 CFR 41.202 are met.
2304.02(c) Explaining Priority [R-08.2012]
37 CFR 41.202 Suggesting an interference.
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
(4) Explain in detail why the applicant will prevail on priority,
*****
(6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter.
*****
(d) Requirement to show priority under 35 U.S.C. 102(g).
(1) When an applicant has an earliest constructive reduction to practice that is later than the apparent earliest constructive reduction to practice for a patent or published application claiming interfering subject matter, the applicant must show why it would prevail on priority.
(2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause. The Board may authorize the filing of motions to redefine the interfering subject matter or to change the benefit accorded to the parties.
*****
A description in an application that would have anticipated the subject matter of a count is called a constructive reduction-to-practice of the count. One disclosed embodiment is enough to have anticipated the subject matter of the count. If the application is relying on a chain of benefit disclosures under any of 35 U.S.C. 119, 120, 121 and 365, then the anticipating disclosure must be continuously
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§ 2304.02(c)INTERFERENCE PROCEEDINGS
disclosed through the entire benefit chain or no benefit may be accorded.
If the application has an earlier constructive reduction-to-practice than the apparent earliest constructive reduction-to-practice of the other application or patent, then the applicant may simply explain its entitlement to its earlier constructive reduction-to-practice. Otherwise, the applicant must (A) antedate the earliest constructive reduction-to-practice of the other application or patent, (B) demonstrate why the other application or patent is not entitled to its apparent earliest constructive reduction-to-practice, or (C) provide some other reason why the applicant should be considered the prior inventor.
The showing of priority may look similar to showings under 37 CFR 1.130-1.132, although there are differences particularly in the scope of what must be shown. In any case, with the exception discussed below, the examiner is not responsible for examining the substantive sufficiency of the showing.
I. REJECTION UNDER 35 U.S.C. 102(a) or 102(e)
If an application claim is subject to a rejection under 35 U.S.C. 102(a) or 102(e) and the applicant files a suggestion under 37 CFR 41.202(a) rather than a declaration under 37 CFR 1.130-1.132, then the examiner must review the suggestion to verify that the applicant’s showing, taken at face value, is sufficient to overcome the rejection. If the examiner determines that the showing is not sufficient, then the examination is not completed, 37 CFR 41.102, the rejection should be maintained and the suggestion should not be referred to the Board of Patent Appeals and Interferences (Board) for an interference.
II. COMPLIANCE WITH 35 U.S.C. 135(b)
If an application claim interferes with a claim of a patent or published application, and the claim was added to the application by an amendment filed more than one year after issuance of the patent, or the application was not filed until more than one year after issuance of the patent (but the patent is not a statutory bar), then under the provisions of 35 U.S.C. 135(b), an interference will not be declared unless at least one of the claims which were in the
application, or in a parent application, prior to expiration of the one-year period was for “substantially the same subject matter” as at least one of the claims of the patent.
If the applicant does not appear to have had a claim for “substantially the same subject matter” as at least one of the patent claims prior to the expiration of the one-year period, the examiner may require, 35 U.S.C. 132, that the applicant explain how the requirements of 35 U.S.C. 135(b) are met. Further, if the patent issued from an application which was published under 35 U.S.C. 122(b), note the one year from publication date limitation found in 35 U.S.C. 135(b)(2) with respect to applications filed after the date of publication.
The obviousness test is not the standard for determining whether the subject matter is the same or substantially the same. Rather the determination turns on the presence or absence of a different material limitation in the claim. These tests are distinctly different. The analysis focuses on the interfering claim to determine whether all material limitations of the interfering claim necessarily occur in a prior claim. In re Berger, 279 F.3d 975, 61 USPQ2d 1523 (Fed. Cir. 2002). If none of the claims which were present in the application, or in a parent application, prior to expiration of the one-year period meets the “substantially the same subject matter” test, the interfering claim should be rejected under 35 U.S.C. 135(b). In re McGrew, 120 F.3d 1236, 43 USPQ2d 1632 (Fed. Cir. 1997). Note that the expression “prior to one year from the date on which the patent was granted” in 35 U.S.C. 135(b) includes the one-year anniversary date of the issuance of a patent. Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964).
Form paragraph 23.14 may be used to reject a claim as not being made prior to one year of the patent issue date. Form paragraph 23.14.01 may be used to reject a claim as not being made prior to one year from the application publication date.
¶ 23.14 Claims Not Copied Within OneYear of Patent Issue Date
Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(1) as not being made prior to one year from the date on which U.S. Patent No. [2] was granted. See In re McGrew, 120 F.3d 1236, 1238,
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43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.
¶ 23.14.01 Claims Not Copied Within One Year Of Application Publication Date
Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(2) as not being made prior to one year from the date on which [2] was published under 35 U.S.C. 122(b). See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.
Examiner Note:
1. In bracket 2, insert the publication number of the published application.
2. This form paragraph should only be used if the application being examined was filed after the publication date of the published application.
2304.02(d) Adequate Written Description [R-08.2012]
37 CFR 41.202 Suggesting an interference.
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
*****
(5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant’s specification, and
*****
An applicant is not entitled to an interference simply because applicant wants one. The interfering claim must be allowable, particularly with respect to the written description supporting the interfering claim.
Historically, an applicant provoked an interference by copying a claim from its opponent. The problem this practice created was that differences in the underlying disclosures might leave the claim allowable to one party, but not to the other; or despite identical claim language differences in the disclosures might require that the claims be construed differently.
Rather than copy a claim literally, the better practice is to add (or amend to create) a fully supported claim and then explain why, despite any apparent differences, the claims define the same invention. 37 CFR 41.203(a). The problem of inadequate
written description in claims added or amended to provoke an interference is so great that the issue has been singled out for heightened scrutiny early in the course of an interference. 37 CFR 41.201, under “Threshold issue.”
2304.03 Patentee Suggestion [R-08.2012]
37 CFR 41.202 Suggesting an interference. *****
(b) Patentee . A patentee cannot suggest an interference under this section but may, to the extent permitted under § 1.99 and § 1.291 of this title, alert the examiner of an application claiming interfering subject matter to the possibility of an interference.
*****
A patentee may not suggest an interference unless it becomes an applicant by filing a reissue application. A patentee may, however, to the limited extent permitted under 37 CFR 1.99 and 1.291, alert an examiner to the existence of interfering claims in an application. See MPEP § 1134 and § 1901.
2304.04 Examiner Suggestion [R-08.2012]
37 CFR 41.202 Suggesting an interference. *****
(c) Examiner. An examiner may require an applicant to add a claim to provoke an interference. Failure to satisfy the requirement within a period (not less than one month) the examiner sets will operate as a concession of priority for the subject matter of the claim. If the interference would be with a patent, the applicant must also comply with paragraphs (a)(2) through (a)(6) of this section. The claim the examiner proposes to have added must, apart from the question of priority under 35 U.S.C. 102(g):
(1) Be patentable to the applicant, and
(2) Be drawn to patentable subject matter claimed by another applicant or patentee.
*****
2304.04(a) Interfering Claim Already in Application [R-08.2012]
If the applicant already has a claim to the same subject matter as a claim in the application or patent of another inventor, then there is no need to require the applicant to add a claim to have a basis for an interference.
Rev. 07.2015, October 20152300-15
§ 2304.04(a)INTERFERENCE PROCEEDINGS
The examiner may invite the applicant to suggest an interference pursuant to 37 CFR 41.202(a). An applicant may be motivated to do so in order to present its views on how the interference should be declared.
If the applicant does not suggest an interference, then the examiner should work with an Interference Practice Specialist (IPS) to suggest an interference to the Board of Patent Appeals and Interferences (Board). The suggestion should include an explanation of why at least one claim of every application or patent defines the same invention within the meaning of 37 CFR 41.203(a). See MPEP § 2301.03 for a discussion of interfering subject matter. The examiner must also complete Form PTO-850.
The examiner should be prepared to discuss why claims interfere, whether the subject matter of other claims would have been anticipated or rendered obvious if the interfering claims are treated as prior art, and whether an applicant or patentee is entitled to claim the benefit of an application as a constructive reduction-to-practice. The IPS may require the examiner to prepare a memorandum for the Board on any of these subjects. The IPS may require the examiner to participate in a conference with the Board to discuss the suggested interference.
2304.04(b) Requiring a Claim [R-08.2012]
35 U.S.C. 132 Notice of rejection; reexamination.
(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.
*****
The examiner may, pursuant to 35 U.S.C. 132(a), require an applicant to add a claim that would interfere with the claim of another application or patent. For example, the requirement may be made to obtain a clearer definition of the interfering subject matter or to establish whether the applicant will
pursue claims to the interfering subject matter. When the requirement is based on a published application with allowed claims or a patent, the examiner must identify the published application or the patent in making the requirement.
Given the cost and complexity of interferences, a requirement to add a claim under 37 CFR 41.202(c) should not be lightly made. Before making the requirement, the examiner should consult with an Interference Practice Specialist (IPS). The following principles should guide the examiner in exercising discretion to make this requirement:
(A) An interference should generally not be suggested if examination of the application is not otherwise completed.
(B) The required claim must not encompass prior art or otherwise be barred.
(C) The application must provide adequate support under 35 U.S.C. 112, first paragraph for the subject matter of the required claim.
(D) A claim should not be required when the applicant expressly states that the commonly described subject matter is not the applicant’s invention.
(E) A claim based on a claim from a published application should not be required unless the claim from the published application has been allowed.
Example 1
A patent is 35 U.S.C. 102(b) prior art against any possible interfering claim. No interfering claim should be required.
Example 2
The patent issued more than one year ago and the applicant did not previously have a claim to the same subject matter. Any added claim would most likely be time barred under 35 U.S.C. 135(b)(1). No interfering claim should be required.
Example 3
An application describes work that attributes to another inventor, but also describes and claims an improvement. The other inventor has received a patent for original work. The applicant may in some sense have 35 U.S.C. 112, first paragraph support for an interfering claim to the other inventor’s work. Nevertheless, the applicant has indicated that the commonly described subject matter is not the applicant’s invention. No interfering claim should be required.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2304.04(b)
Example 4
An application has support for both a generic claim G and a species claim G1. The applicant only claims the genus G. A patent discloses and claims only G1. Under the facts of this example, there is no evidence that genus G would have rendered the species G1 obvious. If for some reason the patent is not available as a reference against the application, the examiner may require the applicant to add a claim to species G1 after consulting with an IPS.
Example 5
Published application H and application I both support a claim to H1. Published application H contains a claim to H1, but application I does not. The claim to H1 in the published application is under rejection. Applicant I should not ordinarily be required to add the claim.
Form paragraph 23.04 may be used to require applicant to add a claim to provoke interference.
¶ 23.04 Requiring Applicant to Add Claim to Provoke Interference
The following allowable claim from [1] is required to be added for the purpose of an interference:
[2]
The claim must be copied exactly.
Applicant is given TWO MONTHS from the mailing date of this communication to add the claim. Refusal to add a required claim will operate as a concession of priority for the subject matter of the required claim, but will not result in abandonment of this application. See 37 CFR 41.202(c) and MPEP § 2304.04(b). EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a). If the interference would be with a patent, applicant must also comply with 37 CFR 41.202(a)(2) to (a)(6).
Examiner Note:
1. In bracket 1, insert the published application number if the claim is an allowed claim from a U.S. application publication or the patent number if the claim is from a U.S. patent.
2. In bracket 2, insert the claim which applicant is required to add to provoke an interference.
APPLICANT MUST ADD THE CLAIM
If required to add a claim under 37 CFR 41.202(c), the applicant must do so. Refusal to add a required claim will operate as a concession of priority for the subject matter of the required claim. The applicant would then be barred from claiming, not only the
subject matter of the required claim, but any subject matter that would have been anticipated or rendered obvious if the required claim were treated as prior art. In re Ogiue, 517 F.2d 1382, 1390, 186 USPQ 227, 235 (CCPA 1975).
While complying with the requirement to add a claim, an applicant may also express disagreement with the requirement several ways, including:
(A) Identifying a claim already in its application, or another of its applications, that provides a basis for the proposed interference;
(B) Adding an alternative claim and explaining why it would provide a better basis for the proposed interference (such as having better support in the applicant’s disclosure); or
(C) Explaining why the required claim is not patentable to the applicant.
The examiner may withdraw the requirement if persuaded by the reasons the applicant offers.
2304.05 Common Ownership [R-08.2012]
37 CFR 41.206 Common interests in the invention.
An administrative patent judge may decline to declare, or if already declar ed the Board may issue judgment in, an interference between an application and another application or patent that are commonly owned.
An interference is rarely appropriate between two applications or an application and patent that belong to the same owner. The owner should ordinarily be able to determine priority and is obligated under 37 CFR 1.56 to inform the examiner about which application or patent is entitled to priority. The examiner may require an election of priority between the application and other application or patent. 35 U.S.C. 132(a).
In making the election, the owner must eliminate the commonly claimed subject matter. This may be accomplished by canceling the interfering application claims, disclaiming the interfering patent claims, amending the application claims such that they no longer interfere, or filing a reissue application to amend the patent claims such that they no longer interfere.
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§ 2304.05INTERFERENCE PROCEEDINGS
Example 1
Two corporations have applications that claim the same invention. After a merger of the corporations, the resulting corporation owns both applications. The new corporation is obligated to investigate priority. Once the corporation has had an opportunity to determine which application is entitled to priority, the corporation must elect between the applications or otherwise eliminate the need for an interference.
Example 2
J files an application in which J is the sole inventor and assignee. K files an application in which J and K are named as inventors and co-assignees. Although J is an owner of both applications, an interference may nevertheless be necessary if J and K disagree about which application is entitled to priority.
2305 Requiring a Priority Showing [R-08.2012]
37 CFR 41.202 Suggesting an interference. *****
(d) Requirement to show priority under 35 U.S.C. 102(g).
(1) When an applicant has an earliest constructive reduction to practice that is later than the apparent earliest constructive reduction to practice for a patent or published application claiming interfering subject matter, the applicant must show why it would prevail on priority.
*****
(e) Sufficiency of showing.
(1) A showing of priority under this section is not sufficient unless it would, if unrebutted, support a determination of priority in favor of the party making the showing.
(2) When testimony or production necessary to show priority is not available without authorization under § 41.150(c) or § 41.156(a), the showing shall include:
(i) Any necessary interrogatory, request for admission, request for production, or deposition request, and
(ii) A detailed proffer of what the response to the interrogatory or request would be expected to be and an explanation of the relevance of the response to the question of priority.
*****
Whenever the application has an earliest constructive reduction-to-practice that is later than the earliest constructive reduction-to-practice of a published application having allowed claims or a patent with which it interferes, the applicant must make a priority showing under 37 CFR 41.202(d)(1).
There are two typical situations in which a showing under 37 CFR 41.202(d)(1) is filed without a requirement from the examiner. First, the applicant may be complying with 37 CFR 41.202(a)(2) in order to suggest an interference under 37 CFR 41.202(a) or as part of complying with a requirement under 37 CFR 41.202(c). Second, the applicant may file the showing to overcome a rejection based on 35 U.S.C. 102(a) or 102(e) when an affidavit is not permitted under 37 CFR 1.131(a)(1) because the applicant is claiming interfering subject matter.
If no showing has been filed, and the application’s earliest constructive reduction-to-practice is later than the earliest constructive reduction-to-practice of a patent or published application, then the examiner must require a showing of priority. This showing is necessary because an insufficient showing (including no showing at all) can trigger a prompt judgment against the applicant in an interference. 37 CFR 41.202(d)(2). The applicant may choose to comply with a requirement under 37 CFR 41.202(d)(1) by suggesting an interference under 37 CFR 41.202(a).
Example
Application L has claims that interfere with claims of patent M. Application L was filed in June 2001. The application that resulted in patent M was filed in November 2001, but has an earliest constructive reduction-to-practice in a foreign application filed in December 2000. Assuming no rejection is available under 35 U.S.C. 102(e), the examiner must require a showing under 37 CFR 41.202(d)(1) in application L.
I. RELATIONSHIP TO 37 CFR 1.131 AFFIDAVIT
Ordinarily an applicant may use an affidavit of prior invention under 37 CFR 1.131 to overcome a rejection under 35 U.S.C. 102(a) or 102(e). An exception to the rule arises when the reference is a patent or application published under 35 U.S.C. 122(b) and the reference has claims directed to the same patentable invention as the application claims being rejected. 37 CFR 1.131(a)(1). The reason for this exception is that priority is determined in an interference when the claims interfere. 35 U.S.C. 135(a). In such a case, the applicant must make the priority showing under 37 CFR 41.202(d) instead. In determining whether a 37 CFR 1.131 affidavit is permitted or not, the examiner should keep the
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2305
purpose of the exception in mind. If an interference would not be possible at the time the affidavit would be submitted, then the affidavit should be permitted. This situation could arise two ways.
First, the claims that matter for the purposes of 37 CFR 1.131 are not the published claims but the currently existing claims. For example, if the claims that were published in a published application have been significantly modified during subsequent examination, they may no longer interfere with the rejected claims. Similarly, the patent claims may have been subsequently corrected or amended in a reissue application or a reexamination. Since an interference no longer exists between the current claims in the patent or published application and the rejected claims, an affidavit under 37 CFR 1.131 may be submitted.
Similarly, if a published application contains claims to the same invention, but the claims in the published application are not in condition for allowance, then no interference is yet possible. 37 CFR 41.102. Since the claims in the published application might never be allowed in their present form, it is not appropriate to proceed as though an interference would be inevitable. Consequently, an affidavit under 37 CFR 1.131 may be submitted.
II. NOT A PRIORITY STATEMENT
A priority showing under 37 CFR 41.202(d)(1), which is presented during examination, is not the same as a priority statement under 37 CFR 41.204(a), which is filed during an interference. A priority statement is a notice of what a party intends to prove on the issue of priority during an interference. A priority showing under 37 CFR 41.202(d)(1) must, however, actually prove priority assuming that the opposing party did not oppose the showing.37 CFR 41.202(e)(1). Generally speaking, while a priority statement might be more detailed in some respects, it will not be sufficient to make the necessary showing of priority for the purposes of 37 CFR 41.202.
An applicant presenting a priority showing must establish through the showing that it would prevail on priority if an interference is declared and the opponent does not oppose the showing. The
requirement for a priority showing is intended to spare a senior party patentee the burden of an interference if the junior party applicant cannot establish that it would prevail in an interference even if the senior party does nothing. Kistler v. Weber, 412 F.2d 280, 283-85, 162 USPQ 214, 217-19 (CCPA 1969) and Edwards v. Strazzabosco, 58 USPQ2d 1836 (Bd. Pat. App. & Inter. 2001).
The consequence of an inadequate showing may be serious for the applicant. If an interference is declared and the Board of Patent Appeals and Interferences (Board) finds the priority showing insufficient (thereby issuing an order to show cause why judgment should not be entered against the applicant), the applicant will not be allowed to present additional evidence to make out a priority showing unless the applicant can show good cause why any additional evidence was not presented in the first instance with the priority showing before the examiner.37 CFR 41.202(d)(2); Huston v. Ladner, 973 F.2d 1564, 23 USPQ2d 1910 (Fed. Cir. 1992); Hahn v. Wong, 892 F.2d 1028, 13 USPQ2d 1313 (Fed. Cir. 1989); Edwards v. Strazzabosco, 58 USPQ2d 1836 (Bd. Pat. App. & Inter. 2001). The principles which govern review of a priority showing are discussed in Basmadjian v. Landry, 54 USPQ2d 1617 (Bd. Pat. App. & Inter. 1997) (citing former 37 CFR 1.608(b)).
2306 Secrecy Order Cases [R-08.2012]
37 CFR 5.3 Prosecution of application under secrecy orders; withholding patent.
*****
(b) An interference will not be declared involving a national application under secrecy order. An applicant whose application is under secrecy order may suggest an interference (§ 41.202(a) of this title), but the Office will not act on the request while the application remains under a secrecy order.
*****
Once an interference is declared, an opposing party is entitled to access to the application and benefit applications .37 CFR 41.109. See MPEP § 2307.02. Consequently, an interference should not be suggested for an application under a secrecy order. See MPEP § 120 and § 130. When a secrecy order expires or is rescinded, if the examination is otherwise completed,37 CFR 41.102, then the need for an interference may be reconsidered.
Rev. 07.2015, October 20152300-19
§ 2306INTERFERENCE PROCEEDINGS
If an application not under a secrecy order has allowable claims that interfere with allowable claims of an application that is under a secrecy order, then the application that is not under the secrecy order should be passed to issue as a patent. An interference may be suggested with the application and the patent (unless the patent has expired) once the secrecy order has been lifted.
Example
Application L discloses and claims a transistor that is useful in a commercial context. Application M discloses the same transistor in the context of a missile control circuit, but claims only the transistor. A secrecy order is placed on application M. Once examination of application L is completed and the transistor claim is allowable, application L should pass to issue.
2307 Action During an Interference [R-08.2012]
37 CFR 41.103 Jurisdiction over involved files.
The Board acquires jurisdiction over any involved file when the Board initiates a contested case. Other proceedings for the involved file within the Office are suspended except as the Board may order.
Once a patent or application becomes involved in an interference, the Board of Patent Appeals and Interferences (Board) has jurisdiction over the file. The examiner may not act on an involved patent or application except as the Board may authorize.
The Board may occasionally consult with the examiner, for instance, on a question regarding the technology at issue in an involved application or patent.
The Board retains jurisdiction over the interference until the interference is terminated. The Director has defined termination to occur after a final Board judgment in the interference and the period for seeking judicial review has expired or, if judicial review is sought, after completion of judicial review including any further action by the Board. 37 CFR 41.205(a).
2307.01 Ex Parte Communications [R-08.2012]
37 CFR 41.11 Ex parte communications in inter partes proceedings.
An ex parte communication about an inter partes reexamination (subpart C of this part) or about a contested case (subparts D and E of this part) with a Board member, or with a Board employee assigned to the proceeding, is not permitted.
Since an interference involves two or more parties, the integrity of the process requires the opportunity for the opposing party to participate in communications or actions regarding any involved application or patent. Once an interference is declared, any attempt by a party to communicate with the Board of Patent Appeals and Interferences (Board) through the examiner or to have the examiner act in an involved patent or application without Board authorization should be promptly reported to the Board. Board action may include a sanction in the interference or referral of a patent practitioner to the Office of Enrollment and Discipline.
2307.02 Access to Related Files [R-08.2012]
37 CFR 41.109 Access to and copies of Office records.
(a) Request for access or copies . Any request from a party for access to or copies of Office records directly related to a contested case must be filed with the Board. The request must precisely identify the records and in the case of copies include the appropriate fee set under § 1.19(b) of this title.
(b) Authorization of access and copies. Access and copies will ordinarily only be authorized for the following records:
(1) The application file for an involved patent;
(2) An involved application; and
(3) An application for which a party has been accorded benefit under subpart E of this part.
*****
In addition to any access permitted to a member of the public under 37 CFR 1.11 and 1.14 (see MPEP § 103), an opposing party may be authorized under 37 CFR 41.109 to have access to or a copy of the record for any involved patent or application, and for any application for which benefit has been accorded. The availability of a file to an opposing party under 37 CFR 41.109 has no bearing on
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2307
whether a file is otherwise available under 37 CFR 1.11 or 1.14.
2307.03 Suspension of Related Examinations [R-08.2012]
Although the examiner may not act in a patent or an application directly involved in an interference, 37 CFR 41.103, examination may continue in related cases, including any benefit files. Once examination is completed, the examiner should consult with an Interference Practice Specialist (IPS) to determine whether and how further action should proceed. The IPS may consult with the Board of Patent Appeals and Interferences (Board) to determine whether the application claims would be barred in the event the applicant loses the interference.
Suspension may be necessary if the claims would be barred by a loss in the interference. Steps should be considered to minimize the effect of any patent term adjustment that would result from the suspension. For instance, the examiner could require restriction,35 U.S.C. 121, of the application to only the claims that do not interfere so that they can be issued. The applicant may then file a divisional application with the interfering claims, which may be suspended.
2307.04 Additional Parties to Interference [R-08.2012]
During the course of an interference, the examiner may come across applications or patents of parties that claim the same invention, but are not already involved in the interference. If so, the examiner should consult with an Interference Practice Specialist (IPS) and prepare a referral of the suggested interference to the Board of Patent Appeals and Interferences in the same way that a referral is prepared in the first instance.
2307.05 Board Action on Related Files [R-08.2012]
Occasionally, the Board may order that a paper be filed in a related application. Generally, the paper will notify the examiner of a fact, such as a party
admission or prior art, that may be relevant to examination of the related case.
2307.06 Action at the Board [R-08.2012]
Action at the Board of Patent Appeals and Interferences (Board) during an interference is beyond the scope of this Chapter. For further information, see 37 CFR part 41, subparts A, D, and E; see also the Board’s Contested Case Practice Guide. A Standing Order and other orders, which further direct the conduct of the parties, are also entered in each interference.
2308 Action After an Interference [R-08.2012]
37 CFR 41.127 Judgment.
(a) Effect within Office—
(1) Estoppel. A judgment disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party’s failure to move, except that a losing party shall not be estopped with respect to any contested subject matter for which that party was awarded a favorable judgment.
(2) Final disposal of claim. Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently.
*****
(c) Recommendation. The judgment may include a recommendation for further action by the examiner or by the Director. If the Board recommends rejection of a claim of an involved application, the examiner must enter and maintain the recommended rejection unless an amendment or showing of facts not previously of record is filed which, in the opinion of the examiner, overcomes the recommended rejection.
*****
Jurisdiction over an application returns to the examiner once the interference has terminated. If there is a recommendation for further action in the application, the examiner must reopen prosecution to consider the recommendation. The examiner must enter any recommended rejection, and must maintain the rejection unless the applicant by amendment or submission of new evidence overcomes the rejection to the examiner’s satisfaction.
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§ 2308INTERFERENCE PROCEEDINGS
If there is no recommendation in the judgment, the examiner should update the search and may, but is not required to, reopen prosecution for any claim not disposed of in the judgment.
An interference judgment simply resolves any question of priority between the two parties to the interference. The judgment does not prevent the examiner from making a rejection in further examination in the same application or a different application. If a party loses on an issue in the interference, the examiner should reject any claim for which allowance would be inconsistent with the interference judgment.
Form paragraph 23.02 may be used to resume ex parte prosecution.
¶ 23.02 Ex Parte Prosecution Is Resumed
Interference No. [1] has been terminated by a decision [2] to applicant. Ex parte prosecution is resumed.
Examiner Note:
1. In bracket 1, insert the interference number.
2. In bracket 2, insert whether favorable or unfavorable.
2308.01 Final Disposal of Claims [R-08.2012]
Judgment against a claim in an interference, including any judgment on priority or patentability, finally disposes of the claim. No further action is needed from the examiner on that claim. If no claim remains allowable to the applicant, a notice of abandonment should be issued.
2308.02 Added or Amended Claims [R-08.2012]
An applicant may file a motion during the interference to add or amend a claim. A patentee may file a reissue application in support of a motion to add or amend a claim. A copy of the paper adding or amending the claim will be placed in the official record of the application, but not entered. A decision on the motion is entered in the official record of the application. The examiner may enter the added claim or amended claim into the application only if, and only to the extent, authorized by the Board of Patent
Appeals and Interferences, typically in the decision on the motion. The decision authorizing entry of the added or amended claim does not prevent the examiner from rejecting the claim during further prosecution.
2308.03 Estoppel Within the Office [R-08.2012]
If a party loses on an issue, it may not re-litigate the issue before the examiner or in a subsequent Board of Patent Appeals and Interferences (Board) proceeding. The time for the party to make all pertinent arguments is during the interference, unless the Board expressly prevented the party from litigating the issue during the interference.
There are two main types of interference estoppel. First, a losing party is barred on the merits from seeking a claim that would have been anticipated or rendered obvious by the subject matter of the lost count. In re Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992); Ex parte Tytgat, 225 USPQ 907 (Bd. Pat. App. & Inter. 1985). Second, a losing party is procedurally barred from seeking from the examiner relief that could have been--but was not--sought in the interference. 37 CFR 41.127(a)(1); Ex parte Kimura, 55 USPQ2d 1537 (Bd. Pat. App.
& Inter. 2000) (reissue applicant estopped to claim compound when patentability of that compound could have been put in issue in interference where opponent’s application also described compound).
The examiner should consult with an Interference Practice Specialist (IPS) before allowing a claim to a losing party that was added or amended during post-interference examination.
Example 1
The applicant lost on priority for a count drawn to subject matter X. The Board’s judgment automatically disposed of all of the applicant’s claims corresponding to the count. The applicant files a continuing application with a claim to subject matter X. The claim must be rejected as estopped on the merits by the applicant’s loss in the interference.
Example 2
Same facts as Example 1 except the applicant files a continuing application with a claim generic to subject matter X. Since the
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2308.01
generic claim encompasses subject matter lost in the interference, the generic claim must be rejected as estopped on the merits by the loss in the interference.
Example 3
Same facts as Example 1 except the applicant files a continuing application with a claim to subject matter that would have been obvious in view of subject matter X. The claim must be rejected as estopped on the merits by the applicant’s loss in the interference, but the examiner must demonstrate why the claim would have been obvious if subject matter X is assumed to be prior art.
Example 4
Same facts as Example 1 except the applicant files a continuing application with a claim identical to a claim that corresponded to the count of the interference. The applicant also files a showing of why the claim should not have corresponded to the count. The claim should be rejected as procedurally estopped. Whether the showing is adequate or not, it is too late. The time to make the showing was during the interference.
Example 5
Same facts as Example 4 except that during the interference the applicant timely requested, but was not permitted, to show the claim did not correspond to the count. The examiner may determine in light of the new showing whether the lost count would have anticipated or rendered obvious the subject matter of the claim. The procedural estoppel does not apply if, through no fault of the applicant, the Board prevented the applicant from seeking relief during the interference.
Example 6
The applicant’s claim 1 was held unpatentable during the interference. The applicant could have moved, but did not move, to amend the claim. The applicant files a continuing application with an amended claim 1. If the subject matter of the amended claim would have been anticipated or obvious in view of a count of the interference, it must be rejected as procedurally estopped. Whether the amendment is sufficient to overcome the ground for unpatentability or not, the time to have amended the claim was during the interference.
Example 7
Same situation as Example 6 except the applicant did move to amend the claim, but the motion was denied. The result is the same as in Example 6. If the subject matter of the amended claim would have been anticipated or obvious in view of a count of the interference, it must be rejected as procedurally estopped. The applicant’s lack of success on the motion does not prevent the estoppel from applying to the claim.
Example 8
Same facts as Example 6 except the applicant filed a late request during the interference to amend the claim to overcome the basis for unpatentability. The request was denied as untimely. The claim must be rejected as procedurally estopped. Even though the applicant was not permitted to amend the claim during the interference, the estoppel still applies because the applicant’s inability to obtain relief in the interference was the result of the applicant’s failure to seek timely relief.
2308.03(a) Losing Party [R-08.2012]
A party is barred (estopped) from raising an issue if the party lost on the issue during the interference. A party may lose on one issue, yet not lose on a different issue.
Example
The applicant lost the interference on a count drawn to a compound, but the opponent lost on a count drawn to methods of using the compound. The applicant may continue to pursue claims to the method of using the compound, but not claims to the compound itself.
2308.03(b) No Interference-in-Fact [R-08.2012]
A judgment of no interference-in-fact means that no interference is needed to resolve priority between the parties. Neither party has lost the interference for the purpose of estoppel,37 CFR 41.127(a)(1), even if one of the parties suggested the interference.
A judgment of no interference-in-fact bars any further interference between the same parties for claims to the same invention as the count of the interference.
2308.03(c) No Second Interference [R-08.2012]
No second interference should occur between the same parties on patentably indistinct subject matter. If the Board of Patent Appeals and Interferences held that there is no interference-in-fact between the parties for the subject matter of the count, that holding may not be reopened in further examination. If a party that lost the earlier interference is again
Rev. 07.2015, October 20152300-23
§ 2308.03(c)INTERFERENCE PROCEEDINGS
claiming the same invention as the count, the interfering claims should be rejected as estopped.
2309 National Aeronautics and Space Administration or Department of Energy [R-08.2012]
Ownership of an invention made pursuant to a U.S. government contract may be vested in the contracting government agency. The Board of Patent Appeals and Interferences (Board) determines two such ownership contests using interference procedures: for the National Aeronautics and Space Administration (NASA), 42 U.S.C. 2457 (inventions having significant utility in aeronautical or space activity), and for the Department of Energy (DoE), 42 U.S.C. 2182 (inventions relating to special nuclear material or atomic energy).
An applicant with an application covered by these Acts must file a statement regarding the making or conception of the invention and any relation to a contract with NASA or DoE. See MPEP § 150 and § 151. The examiner should work in coordination with Licensing and Review and one of the Technology Centers Interference Practice Specialists in suggesting these cases to the Board. Although these cases are not interferences, the interference practices in this chapter generally apply to NASA and DoE ownership contests as well.
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Chapter 2400 Biotechnology
Introduction2401 The Deposit Rules2402 Deposit of Biological Material2403
Material Capable of Self- Replication2403.01 Plant Material2403.02
Need or Opportunity to Make a Deposit2404 Biological Material That Is Known and Readily Available to the Public
2404.01
Biological Material That Can Be Made or Isolated Without Undue Experimentation
2404.02
Reference to a Deposit in the Specification
2404.03
Acceptable Depository2405 Time of Making an Original Deposit2406
Description in Application Specification
2406.01
Deposit After Filing Date - Corroboration
2406.02
Possible Loss of U.S. Filing Date in Other Countries
2406.03
Replacement or Supplement of Deposit2407 In a Pending Application2407.01 After a Patent Has Issued2407.02 Failure to Replace2407.03 Treatment of Replacement2407.04 Exemption From Replacement2407.05 Replacement May Not Be Recognized2407.06
Term of Deposit2408 Viability of Deposit2409 Furnishing of Samples2410
Conditions of Deposit2410.01 Certification of Statement of Availability of Deposit
2410.02
Examination Procedures2411 Rejections Based on Deposit Issue2411.01 Replies to Rejections Based on Deposit Issue
2411.02
Application in Condition for Allowance Except for Deposit
2411.03
[Reserved]2411.04 Content of Application with Respect to Deposited Material
2411.05
[Reserved]2412-2419 The Requirements for Patent Applications Containing Nucleotide
2420
Sequence and/or Amino Acid Sequence Disclosures - the Sequence Rules Overview of the Sequence Rules2421
Definition of “Sequence Listing” and “CRF”
2421.01
Summary of the Requirements of the Sequence Rules
2421.02
Notification of a Failure to Comply2421.03 Future Changes to the Sequence Rules2421.04
Nucleotide and/or Amino Acid Sequence Disclosures in Patent Applications
2422
Nucleotide and/or Amino Acids Disclosures Requiring a Sequence Listing
2422.01
The Requirement for Exclusive Conformance; Sequences Presented in Drawing Figures
2422.02
Sequence Listing Submission2422.03 Sequence Listings Submitted as ASCII Text Files via EFS-Web
2422.03(a)
The Requirement for a Computer Readable Copy of the Official Copy of the Sequence Listing
2422.04
Request for Transfer of Computer Readable Form
2422.05
Requirement for Statement Regarding Content of Official and Computer Readable Copies of Sequence Listing
2422.06
Requirements for Compliance, Statements Regarding New Matter, and Sanctions for Failure to Comply
2422.07
Presumptions Regarding Compliance2422.08 Box Sequence; Hand Delivery of Sequence Listings and Computer Readable Forms
2422.09
Symbols and Format To Be Used for Nucleotide and/or Amino Acid Sequence Data
2423
Format and Symbols To Be Used in Sequence Listings
2423.01
Depiction of Coding Regions2423.02 Presentation and Numbering of Sequences
2423.03
Requirements for Nucleotide and/or Amino Acid Sequences as Part of the Application Papers
2424
Informational Requirements for the Sequence Listing
2424.01
Sequence Listing Numeric Identifiers2424.02 Additional Miscellaneous Requirements
2424.03
Form and Format for Nucleotide and/or Amino Acid Sequence Submissions in Computer Readable Form
2425
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Amendments to or Replacement of Sequence Listing and Computer Readable Copy Thereof
2426
Form Paragraphs2427 Sample Statements2428 Helpful Hints for Compliance2429 PatentIn Information2430 Sample Sequence Listing2431 [Reserved]2432-2433 Examination of Patent Applications Claiming Large Numbers of Nucleotide Sequences
2434
Publishing of Patents and Patent Application Publications with Lengthy Sequence Listings
2435
2401 Introduction [R-07.2015]
This chapter provides guidance on the practices and procedures pertaining to the rules for deposits of biological materials for patent purposes (37 CFR 1.801 - 1.809 ) and the rules for the requirements for patent applications containing nucleotide sequence and/or amino acid sequence disclosures (37 CFR 1.821 - 1.825 ).
2402 The Deposit Rules [R-07.2015]
37 CFR 1.801 Biological material.
For the purposes of these regulations pertaining to the deposit of biological material for purposes of patents for inventions under 35 U.S.C. 101, the term biological material shall include material that is capable of self-replication either directly or indirectly. Representative examples include bacteria, fungi including yeast, algae, protozoa, eukaryotic cells, cell lines, hybridomas, plasmids, viruses, plant tissue cells, lichens and seeds. Viruses, vectors, cell organelles and other non-living material existing in and reproducible from a living cell may be deposited by deposit of the host cell capable of reproducing the non-living material.
Every patent must contain a written description of the invention sufficient to enable a person skilled in the art to which the invention pertains to make and use the invention. Where the invention involves a biological material and words alone cannot sufficiently describe how to make and use the invention in a reproducible manner, access to the biological material may be necessary for the satisfaction of the statutory requirements for patentability under 35 U.S.C. 112. Courts have recognized the necessity and desirability of
permitting an applicant for a patent to supplement the written disclosure in an application with a deposit of biological material which is essential to meet some requirement of the statute with respect to the claimed invention. See, e.g., Ajinomoto Co. v. Archer-Daniels-Midland Co., 228 F.3d 1338, 1345-46, 56 USPQ2d 1332, 1337-38 (Fed. Cir. 2000), cert. denied, 121 S.Ct. 1957 (2001)(explaining how deposit may help satisfy enablement requirement); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 63 USPQ2d 1609 (Fed. Cir. 2002)(deposit may satisfy the written description requirement); In re Argoudelis, 434 F.2d 666, 168 USPQ 99 (CCPA 1970). To facilitate the recognition of deposited biological material in patent applications throughout the world, the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure was established in 1977, and became operational in 1981. The Treaty requires signatory countries, like the United States, to recognize a deposit with any depository which has been approved by the World Intellectual Property Organization (WIPO).
The deposit rules (37 CFR 1.801 - 1.809) set forth examining procedures and conditions of deposit which must be satisfied in the event a deposit is required. The rules do not address the substantive issue of whether a deposit is required under any particular set of facts.
See PCT Rule 13bis and MPEP § 1823.01 for the requirements under the PCT for a reference to a deposited biological material in an international application.
2403 Deposit of Biological Material [R-07.2015]
37 CFR 1.801 indicates that the rules pertaining to deposits for purposes of patents for inventions under 35 U.S.C. 101 are intended to relate to biological material. For the purposes of these rules, the term “biological material” is defined in terms of a non-exhaustive list of representative materials which can be deposited in accordance with the procedures defined in these rules. These rules are intended to address procedural matters in the deposit of biological material for patent purposes. They are not
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designed to decide substantive issues such as whether a deposit of a particular organism or material would be recognized or necessary for the purposes of satisfying the statutory requirements for patentability under 35 U.S.C. 112. The issue of the need to make a deposit of biological material typically arises under 35 U.S.C. 112(a) with regard to the enablement requirement, although the issue may also arise under the written description or best mode requirement of the statute. Deposit issues may also arise under 35 U.S.C. 112(b) with respect to the claims.
37 CFR 1.801 does not attempt to identify what biological material either needs to be or may be deposited to comply with the requirements of 35 U.S.C. 112. For the most part, this issue must be addressed on a case-by-case basis. Thus, while the Office does not currently contemplate that there would be any situations where a material that is not capable of self-replication either directly or indirectly would be acceptable as a deposit, an applicant is clearly not precluded by these rules from attempting to show in any given application why the deposit of such a material should be acceptable to satisfy the requirements of 35 U.S.C. 112. The examiner is cautioned against requiring that a specific biological material be deposited where the applicant can show that a deposit of starting material that is currently not available to the public would allow the skilled artisan to make and use the claimed invention. For example, where a claimed invention is drawn to a plant having novel properties produced by the insertion of a proprietary gene at a specific loci, the plant per se need not be deposited if deposit of a vector or hybridoma containing the gene would enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation.
2403.01 Material Capable of Self- Replication [R-08.2012]
Biological material includes material that is capable of self-replication either directly or indirectly. Direct self-replication includes those situations where the biological material reproduces by itself. Representative examples of materials capable of self-replication are defined in the rule. Indirect self-replication is meant to include those situations where the biological material is only capable of
replication when another self-replicating biological material is present. Self-replication after insertion in a host is one example of indirect self-replication. Examples of indirect replicating biological materials include viruses, phages, plasmids, symbionts, and replication defective cells. The list of representative examples of each type of replicating material includes viruses to demonstrate that the two lists in the rule are not intended to be mutually exclusive.
2403.02 Plant Material [R-07.2015]
Although plant material is included within the scope of the definition of biological material for purposes of patents for plant inventions under 35 U.S.C. 101, the rules on deposits are not applicable to applications filed under the Plant Patent Act (35 U.S.C. 161-164). The Office is of the view that a deposit is not required under the present provisions of 35 U.S.C. 162. Thus, a deposit is not necessary for the grant of a plant patent under the provisions of 35 U.S.C. 161-164. See also MPEP § 1605. As with other biological material deposited for purposes of patents for inventions under 35 U.S.C. 101, the deposit of plant material together with the written specification must enable those skilled in the art to make and use the claimed invention, in accordance with the requirements of 35 U.S.C. 112.
As with some types of reproducible biological material, seeds can be reproduced only after a growing season which may be relatively long. Although the rules do not specify a specific number of seeds to be deposited to meet the requirements of these rules, the Office will consider 2500 to be an optimum number in the normal case, but will give an applicant the opportunity to provide justification why a lesser number would be suitable under the circumstances of a particular case. The Department of Agriculture requires a deposit of 2500 seeds for the grant of a Plant Variety Protection Certificate under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.). As the reproduction of seeds will often take a substantial period of time, the Office will require, at a minimum for the grant of a patent, a number of seeds that is likely to satisfy demand for samples once the patent is granted. In one instance, the Office accepted a deposit of 600 seeds coupled with an undertaking to deposit 1900 more seeds with due diligence. The particular situation involved a
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§ 2403.02BIOTECHNOLOGY
“seedless” vegetable with very few seeds per “fruit;” about two growing seasons were required to provide the additional 1900 seeds.
2404 Need or Opportunity to Make a Deposit [R-08.2012]
37 CFR 1.802 Need or opportunity to make a deposit.
(a) Where an invention is, or relies on, a biological material, the disclosure may include reference to a deposit of such biological material.
(b) Biological material need not be deposited unless access to such material is necessary for the satisfaction of the statutory requirements for patentability under 35 U.S.C. 112. If a deposit is necessary, it shall be acceptable if made in accordance with these regulations. Biological material need not be deposited, inter alia, if it is known and readily available to the public or
can be made or isolated without undue experimentation. Once deposited in a depository complying with these regulations, a biological material will be considered to be readily available even though some requirement of law or regulation of the United States or of the country in which the depository institution is located permits access to the material only under conditions imposed for safety, public health or similar reasons.
(c) The reference to a biological material in a specification disclosure or the actual deposit of such material by an applicant or patent owner does not create any presumption that such material is necessary to satisfy 35 U.S.C. 112 or that deposit in accordance with these regulations is or was required.
37 CFR 1.802(a) permits a deposit of a biological material to be referenced in a patent application where an invention is, or relies on, a biological material. The invention may rely on a biological material for the purposes of making or using the invention, either as a preferred mode or an alternative mode of operation. A reference to a deposit may be included in a specification even though the deposit is not required to satisfy the requirements of 35 U.S.C. 112.
There is no necessary implication or presumption that can or should be made about the need for a deposit simply because reference to a deposit is made in an application disclosure, as noted in paragraph (c). As noted in paragraph (b), biological material need not be deposited unless access to such material is necessary for the satisfaction of the statutory requirements for patentability under 35 U.S.C. 112 and that access is not otherwise available in the absence of a deposit. Where a deposit is required to provide the necessary access, a deposit is acceptable for patent purposes only where it is made in
accordance with these regulations. Even where access to biological material is required to satisfy these statutory requirements, a deposit may not be necessary if access sufficient to satisfy these requirements is otherwise available.
2404.01 Biological Material That Is Known and Readily Available to the Public [R-07.2015]
In an application where the invention required access to specific biological material, an applicant could show that the biological material is accessible because it is known and readily available to the public. The concepts of “known and readily available” are considered to reflect a level of public accessibility to a necessary component of an invention disclosure that is consistent with an ability to make and use the invention. To avoid the need for a deposit on this basis, the biological material must be both known and readily available - neither concept alone is sufficient. A material may be known in the sense that its existence has been published, but is not available to those who wish to obtain that particular known biological material. Likewise, a biological material may be available in the sense that those having possession of it would make it available upon request, but no one has been informed of its existence.
The Board has held that a description of the precise geographic location of marine tunicates, as a biological material, used in a claimed invention was adequate to satisfy the enablement requirement of 35 U.S.C. 112. See Ex Parte Rinehart, 10 USPQ2d 1719 (Bd. Pat. App. & Int. 1985). The term “readily” used in the phrase “known and readily available” is considered appropriate to define that degree of availability which would be reasonable under the circumstances. If the biological material and its natural location can be adequately described so that one skilled in the art could obtain it using ordinary skill in the art, the disclosure would appear to be sufficient to meet the enablement requirement of 35 U.S.C. 112 without a deposit so long as its degree of availability is reasonable under the circumstances.
By showing that a biological material is known and readily available or by making a deposit in accordance with these rules, applicant does not
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2404
guarantee that such biological material will be available forever. Public access during the term of the patent may affect the enforceability of the patent. Although there is a public interest in the availability of a deposited biological material during and after the period of enforceability of the patent, there should not be any undue concern about continued access to the public. See 37 CFR 1.806 (the term of deposit is “at least thirty (30) years and at least five (5) years after the most recent request” for a sample; the agreement sufficiently ensures that the deposit will be “available beyond the enforceable life of the patent”). Unless there is a reasonable basis to believe that the biological material will cease to be available during the enforceable life of the patent, current availability would satisfy the requirement. The incentives provided by the patent system should not be constrained by the mere possibility that a disclosure that was once enabling would become non-enabling over a period of time through no fault of the patentee. In re Metcalfe, 410 F.2d 1378, 161 USPQ 789 (CCPA 1969).
If an applicant has adequately established that a biological material is known and readily available, the Office will accept that showing. In those instances, however, the applicant takes the risk that the material may cease to be known and readily available. Such a defect cannot be cured by reissue after the grant of a patent.
On the other hand, Ex parte Humphreys, 24 USPQ2d 1255 (Bd. Pat. App. & Int. 1992), held that the only manner in which applicants could satisfy their burden of assuring public access to the needed biological material, and, thereby, compliance with the enablement requirement of 35 U.S.C. 112, was by making an appropriate deposit. The fact that applicants and other members of the public were able to obtain the material in question from a given depository prior to and after the filing date of the application in issue did not establish that upon issuance of a patent on the application that such material would continue to be accessible to the public. The applicants did not make of record any of the facts and circumstances surrounding their access to the material in issue from the depository, nor was there any evidence as to the depository’s policy regarding the material if a patent would have been granted. Further, there was no assurance that
the depository would have allowed unlimited access to the material if the application had matured into a patent.
There are many factors that may be used as indicia that a biological material is known and readily available to the public. Relevant factors include commercial availability, references to the biological material in printed publications, declarations of accessibility by those working in the field, evidence of predictable isolation techniques, or an existing deposit made in accordance with these rules. Each factor alone may or may not be sufficient to demonstrate that the biological material is known and readily available. Those applicants that rely on evidence of accessibility other than a deposit take the risk that the patent may no longer be enforceable if the biological material necessary to satisfy the requirements of 35 U.S.C. 112 ceases to be accessible.
The Office will accept commercial availability as evidence that a biological material is known and readily available only when the evidence is clear and convincing that the public has access to the material. See the final rule entitled “Deposit of Biological Materials for Patent Purposes,” 54 FR 34864, 34875 (August 22, 1989). A product could be commercially available but only at a price that effectively eliminates accessibility to those desiring to obtain a sample. The relationship between the applicant relying on a biological material and the commercial supplier is one factor that would be considered in determining whether the biological material was known and readily available. However, the mere fact that the biological material is commercially available only through the patent holder or the patent holder’s agents or assigns shall not, by itself, justify a finding that the necessary material is not readily available, absent reason to believe that access to the biological material would later be improperly restricted.
The mere reference to a deposit or the biological material itself in any document or publication does not necessarily mean that the deposited biological material is readily available. Even a deposit made under the Budapest Treaty and referenced in a United States or foreign patent document would not necessarily meet the test for known and readily available unless the deposit was made under
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§ 2404.01BIOTECHNOLOGY
conditions that are consistent with those specified in these rules, including the provision that requires, with one possible exception (37 CFR 1.808(b)), that all restrictions on the accessibility be irrevocably removed by the applicant upon the granting of the patent. Ex parte Hildebrand, 15 USPQ2d 1662 (Bd. Pat. App. & Int. 1990).
A deposit of biological material cited in a U.S. patent need not be made available if it was not required to satisfy 35 U.S.C. 112. For this reason, 37 CFR 1.808(c) provides that upon request made to the Office, the Office will certify whether a deposit has been stated to have been made under conditions which make it available to the public as of the issue date. See 37 CFR 1.808(c) and MPEP § 2410.02 for the requirements of the request. The Office will not certify that the aforementioned statement has been made unless:
(A) the deposit was necessary to overcome a rejection under 35 U.S.C. 112,
(B) there is, in the record, a statement by the examiner that a rejection would have been made “but for” the deposit (assumes deposit information in record, as filed),
(C) the record otherwise clearly indicates that the deposit was made under Budapest Treaty, and that all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of the patent (with the possible exception of requiring the request for the deposit to be in the format specified in 37 CFR 1.808(b)), or
(D) the record otherwise clearly indicates that an acceptable non-Budapest Treaty deposit was made and that all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of the patent (with the possible exception of requiring the request for the deposit to be in the format specified in 37 CFR 1.808(b)).
If a deposit is not made under the conditions set forth in 37 CFR 1.808(a), the deposit cannot be relied upon for other purposes, e.g., the deposit cannot be relied upon by a third party to establish “known” and “readily available” in another application. See 37 CFR 1.808 and MPEP § 2410 and § 2410.02.
Once a deposit is made in a depository complying with these rules, and under conditions complying with these rules, a biological material will be considered to be readily available even though some requirement of law or regulation in the United States or in the country where the depository institution is located permits access to the material only under conditions imposed for health, safety or similar reasons. This provision is consistent with the Budapest Treaty (Article 5) and is designed to permit the patenting of inventions involving materials having restricted distribution, where the restrictions are imposed for the public, as opposed to the private, welfare.
2404.02 Biological Material That Can Be Made or Isolated Without Undue Experimentation [R-08.2012]
Applicant may show that a deposit is not necessary even though specific biological materials are required to practice the invention if those biological materials can be made or isolated without undue experimentation. Deposits may be required to support the claims if an isolation procedure requires undue experimentation to obtain the desired biological material. Ex Parte Jackson, 217 USPQ 804 (Bd. App. 1982). No deposit is required, however, where the required biological materials can be obtained from publicly available material with only routine experimentation and a reliable screening test. Tabuchi v. Nubel, 559 F.2d 1183, 194 USPQ 521 (CCPA 1977); Ex Parte Hata, 6 USPQ2d 1652 (Bd. Pat. App. & Int. 1987).
2404.03 Reference to a Deposit in the Specification [R-08.2012]
37 CFR 1.802(c) specifically provides that the mere reference to a biological material in the specification disclosure or the actual deposit of such material does not create any presumption that such referenced or deposited material is necessary to satisfy 35 U.S.C. 112, or that a deposit in accordance with these regulations is or was required. It should be noted, however, that a reference to a biological material, present in an application upon filing, may form the basis for making a deposit, where required, after the filing date of a given application but that the
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reference to the biological material, itself, cannot be added after filing without risking the prohibited introduction of new matter (35 U.S.C. 132). See the discussion of the Lundak application in MPEP § 2406.01.
2405 Acceptable Depository [R-07.2015]
37 CFR 1.803 Acceptable depository.
(a) A deposit shall be recognized for the purposes of these regulations if made in
(1) any International Depositary Authority (IDA) as established under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, or
(2) any other depository recognized to be suitable by the Office. Suitability will be determined by the Commissioner on the basis of the administrative and technical competence, and agreement of the depository to comply with the terms and conditions applicable to deposits for patent purposes. The Commissioner may seek the advice of impartial consultants on the suitability of a depository. The depository must:
(i) Have a continuous existence;
(ii) Exist independent of the control of the depositor;
(iii) Possess the staff and facilities sufficient to examine the viability of a deposit and store the deposit in a manner which ensures that it is kept viable and uncontaminated;
(iv) Provide for sufficient safety measures to minimize the risk of losing biological material deposited with it;
(v) Be impartial and objective;
(vi) Furnish samples of the deposited material in an expeditious and proper manner; and
(vii) Promptly notify depositors of its inability to furnish samples, and the reasons why.
(b) A depository seeking status under paragraph (a)(2) of this section must direct a communication to the Commissioner which shall:
(1) Indicate the name and address of the depository to which the communication relates;
(2) Contain detailed information as to the capacity of the depository to comply with the requirements of paragraph (a) (2) of this section, including information on its legal status, scientific standing, staff and facilities;
(3) Indicate that the depository intends to be available, for the purposes of deposit, to any depositor under these same conditions;
(4) Where the depository intends to accept for deposit only certain kinds of biological material, specify such kinds;
(5) Indicate the amount of any fees that the depository will, upon acquiring the status of suitable depository under paragraph (a) (2) of this section, charge for storage, viability statements and furnishings of samples of the deposit.
(c) A depository having status under paragraph (a)(2) of this section limited to certain kinds of biological material may extend such status to additional kinds of biological material by directing a communication to the Commissioner in accordance with paragraph (b) of this section. If a previous communication under paragraph (b) of this section is of record, items in common with the previous communication may be incorporated by reference.
(d) Once a depository is recognized to be suitable by the Commissioner or has defaulted or discontinued its performance under this section, notice thereof will be published in the Official Gazette of the Patent and Trademark Office.
37 CFR 1.803 indicates that a depository will be recognized as acceptable for the purposes of these regulations if it is either an International Depositary Authority (IDA) established under the Budapest Treaty, or if it is a depository recognized as suitable by the Commissioner. After the effective date of these regulations, a deposit of biological material which is made in a depository which is not recognized as acceptable under this regulation will not be considered as satisfying the requirements of 35 U.S.C. 112. See Ex parte Humphreys, 24 USPQ2d 1255 (Bd. Pat. App. & Int. 1992). On the other hand, if a deposit is not required to satisfy the requirements of 35 U.S.C. 112, it is permissible to make reference to such a deposit even though it may not be in a depository or made under the conditions which are acceptable under these regulations. As new depositories are recognized as suitable by the Commissioner, their identity will be announced in the Official Gazette.
An organization may be recognized as suitable by the Office if the procedure and conditions specified in 37 CFR 1.803(a)(2) and 37 CFR 1.803(b) are followed. Generally, it is not the intention of the Office to recognize as suitable any organization where the need for a suitable depository for patent purposes is being met by depositories recognized as IDAs under the Budapest Treaty. Suitability will be judged by the Commissioner, based on need and the information supplied by the organization seeking status, and information obtained from other sources that may be consulted.
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§ 2405BIOTECHNOLOGY
While there is a desire to provide flexibility to a patent applicant in selecting an appropriate depository, these rules are not intended to permit each patent applicant to become its own depository since both the patent owner and the public have an interest in the continued availability and accessibility of the deposit during the enforceable life of the patent, and the public has a continuing interest in its availability when the patent is no longer enforceable. The concept of a depository independent of the control of the depositor or an IDA as an acceptable depository is based on the need and desire to ensure the safe and reliable storage of a deposited biological material under circumstances that are substantially free of the opportunity for intentional mishandling or negligent handling of the deposited material. The use of an independent depository or internationally recognized depository will tend to preserve the integrity of the deposit process against those that may accidentally alter the deposited material, may wish to tamper with the deposited material or may wish to resume control of its availability when the patent is no longer enforceable, and will tend to preserve the interest of the public in the access to the biological material once the term of the patent expires.
When a depository having status under 37 CFR 1.803(a)(2) seeks to change the kinds of biological materials that it will accept and maintain for the purposes of these rules, a communication requesting such a change should be directed to the Commissioner containing the information requested in 37 CFR 1.803(b). When such a change is requested, the requesting depository should provide a complete list of the kinds of biological materials it will accept.
37 CFR 1.803(d) indicates that once a depository is recognized as suitable for the purposes of this rule, or has defaulted or discontinued its performance under this section, notice thereof will be published in the Official Gazette of the Patent and Trademark Office. The mere fact that a deposit has been made in an IDA recognized under the Budapest Treaty does not mean that the terms of the deposit meet either the requirements of the Budapest Treaty or the deposit regulations. Many of the depositories recognized under the Budapest Treaty have many
different arrangements under which biological material may be stored.
The World Intellectual Property Organization (WIPO) publishes a Guide to the Deposit of Micro-organisms under the Budapest Treaty (WIPO Publication No. 661 (E)) on the procedures and requirements concerning the deposit of biological material, including procedures for obtaining a sample of deposited material, in each of the international depository authorities. The Guide and a list of current IDAs under the Budapest Treaty are available at www.wipo.int/treaties/en/registration/budapest/.
2406 Time of Making an Original Deposit [R-07.2015]
37 CFR 1.804 Time of making an original deposit.
(a) Whenever a biological material is specifically identified in an application for patent as filed, an original deposit thereof may be made at any time before filing the application for patent or, subject to § 1.809, during pendency of the application for patent.
(b) When the original deposit is made after the effective filing date of an application for patent, the applicant must promptly submit a statement from a person in a position to corroborate the fact, stating that the biological material which is deposited is a biological material specifically identified in the application as filed.
37 CFR 1.804 specifies the time for making an original deposit to fulfill the requirements of 35 U.S.C. 112. For the reasons discussed throughout this section, it is recommended that a deposit be made before the filing date of the application. However, for the purposes of complying with the requirements of 35 U.S.C. 112, a deposit of a biological material may be made at any time before filing the application for patent or during the pendency of the application subject to the conditions of 37 CFR 1.809. Where a deposit is needed to satisfy the requirements of 35 U.S.C. 112 and it is made during the pendency of the application, it must be made no later than the time period set by the examiner at the time the Notice of Allowance and Issue Fee Due is mailed. However, a necessary deposit need not be made by an applicant until the application is in condition for allowance so long as the applicant provides a written assurance that an acceptable deposit will be made on or before the payment of the issue fee. This written assurance must provide sufficiently detailed information to convince
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the examiner that there is no outstanding issue regarding deposits that needs to be resolved. Note that while 37 CFR 1.804 permits making a deposit after the filing date of an application, in many countries the deposit must be made before the filing date of the application. See MPEP § 2406.03.
Insofar as the rules do not permit post-issuance original deposits, the failure to make an original deposit in an application cannot be cured by filing a reissue application or instituting a reexamination proceeding. However, if an amendment of claims in a reexamination proceeding raises the need for a deposit, an original deposit may be made during the reexamination proceeding.
2406.01 Description in Application Specification [R-07.2015]
37 CFR 1.804(a) specifies not only a permissible time frame for making an original deposit, but also specifies that the biological material deposited must be specifically identified in the application for patent as filed. The requirement for a specific identification is consistent with the description requirement of 35 U.S.C. 112 and provides an antecedent basis for the biological material which either has been or will be deposited before the patent is granted.
The description in the Lundak application as filed (now U.S. Patent No. 4,594,325) provides a suitable illustration of the specific identification and description which are required in an application as filed. In that application, an immortal B-cell line was disclosed and claimed. The cell line was referred to in the application, as filed, as WI-L2-729 HF2. The methods of obtaining and using this cell line were also described in the application as filed. A deposit of the cell line was made with the American Type Culture Collection (ATCC) about a week after the application was filed in the United States. The United States Court of Appeals for the Federal Circuit held that the requirements of access by the Office to a sample of the cell line during pendency, and public access after grant, were met by Lundak's procedures. The Court further held that the addition of information designating the depository, accession number, and deposit date of the deposited cell line in ATCC after the filing date did not violate the prohibition against new matter in 35 U.S.C. 132. In
re Lundak, 773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 1985). However, it must be clear from the application as filed that the invention claimed and described in the specification “was fully capable of being reduced to practice (i.e., no technological problems, the resolution of which would require more than ordinary skill and reasonable time, remained in order to obtain an operative, useful process).” Feldman v. Aunstrup, 517 F.2d 1351, 1355, 186 USPQ 108, 113 (CCPA 1975), cert. denied, 424 U.S. 912 (1976).
2406.02 Deposit After Filing Date - Corroboration [R-08.2012]
When the original deposit is made after the effective filing date of an application for patent, an applicant is required to promptly submit a statement from a person in a position to corroborate that the biological material which is deposited is a biological material specifically identified in the application (the filing date of which is relied upon) as filed. The nature of this corroboration will depend on the circumstances in the particular application under consideration, including the length of time between the application filing date and the date of deposit. While few, if any, situations can be imagined where the description requirement of 35 U.S.C. 112 can be satisfied where the biological material was not in existence at the time of filing, the rules will not preclude such a situation as there is no requirement in the patent law that an actual reduction to practice occur as a condition precedent to filing a patent application.
2406.03 Possible Loss of U.S. Filing Date in Other Countries [R-07.2015]
Those applicants intending to file patent applications in a country other than the United States relying upon biological material that must be deposited to satisfy the requirements of 35 U.S.C. 112 when the application is filed in the United States are cautioned that in many countries the deposit must be made before the filing date of the priority application in order to obtain foreign priority rights. Thus, while the deposit of a biological material subsequent to the effective filing date of a United States application may be relied upon to comply with 35 U.S.C. 112, an applicant may not be able to rely on the filing
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date of such a U.S. application if a patent is sought in certain countries other than the United States.
2407 Replacement or Supplement of Deposit [R-08.2012]
37 CFR 1.805 Replacement or supplement of deposit.
(a) A depositor, after receiving notice during the pendency of an application for patent, application for reissue patent or reexamination proceeding, that the depository possessing a deposit either cannot furnish samples thereof or can furnish samples thereof but the deposit has become contaminated or has lost its capability to function as described in the specification, shall notify the Office in writing, in each application for patent or patent affected. In such a case, or where the Office otherwise learns, during the pendency of an application for patent, application for reissue patent or reexamination proceeding, that the depository possessing a deposit either cannot furnish samples thereof or can furnish samples thereof but the deposit has become contaminated or has lost its capability to function as described in the specification, the need for making a replacement or supplemental deposit will be governed by the same considerations governing the need for making an original deposit under the provisions set forth in § 1.802(b). A replacement or supplemental deposit made during the pendency of an application for patent shall not be accepted unless it meets the requirements for making an original deposit under these regulations, including the requirement set forth under § 1.804(b). A replacement or supplemental deposit made in connection with a patent, whether or not made during the pendency of an application for reissue patent or a reexamination proceeding or both, shall not be accepted unless a certificate of correction under § 1.323 is requested by the patent owner which meets the terms of paragraphs (b) and (c) of this section.
(b) A request for certificate of correction under this section shall not be granted unless the certificate identifies:
(1) The accession number for the replacement or supplemental deposit;
(2) The date of the deposit; and
(3) The name and address of the depository.
(c) A request for a certificate of correction under this section shall not be granted unless the request is made promptly after the replacement or supplemental deposit has been made and the request:
(1) Includes a statement of the reason for making the replacement or supplemental deposit;
(2) Includes a statement from a person in a position to corroborate the fact, and stating that the replacement or supplemental deposit is of a biological material which is identical to that originally deposited;
(3) Includes a showing that the patent owner acted diligently —
(i) In the case of a replacement deposit, in making the deposit after receiving notice that samples could no longer be furnished from an earlier deposit; or
(ii) In the case of a supplemental deposit, in making the deposit after receiving notice that the earlier deposit had become contaminated or had lost its capability to function as described in the specification;
(4) Includes a statement that the term of the replacement or supplemental deposit expires no earlier than the term of the deposit being replaced or supplemented; and
(5) Otherwise establishes compliance with these regulations.
(d) A depositor’s failure to replace a deposit, or in the case of a patent, to diligently replace a deposit and promptly thereafter request a certificate of correction which meets the terms of paragraphs (b) and (c) of this section, after being notified that the depository possessing the deposit cannot furnish samples thereof, shall cause the application or patent involved to be treated in any Office proceeding as if no deposit were made.
(e) In the event a deposit is replaced according to these regulations, the Office will apply a rebuttable presumption of identity between the original and the replacement deposit where a patent making reference to the deposit is relied upon during any Office proceeding.
(f) A replacement or supplemental deposit made during the pendency of an application for patent may be made for any reason.
(g) In no case is a replacement or supplemental deposit of a biological material necessary where the biological material, in accordance with § 1.802(b), need not be deposited.
(h) No replacement deposit of a biological material is necessary where a depository can furnish samples thereof but the depository for national security, health or environmental safety reasons is unable to provide samples to requesters outside of the jurisdiction where the depository is located.
(i) The Office will not recognize in any Office proceeding a replacement deposit of a biological material made by a patent owner where the depository could furnish samples of the deposit being replaced.
37 CFR 1.805 relates to the deposit of a biological material to replace or supplement a previous deposit. The term “replacement” is directed to those situations where one deposit is being substituted for another. An applicant may have greater latitude in replacing a deposit during the pendency of an application than after the patent is granted. Replacement will typically take place where the earlier deposit is no longer viable. The term “supplement” is directed to those situations where the earlier deposit is still viable in the sense that it is alive and capable of replication either directly or indirectly, but has lost a quality (e.g., purity,
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functionality) it allegedly possessed at the time the application was filed.
2407.01 In a PendingApplication [R-07.2015]
Pursuant to 37 CFR 1.805(a), an applicant is required to notify the Office when it obtains information that the depository possessing a deposit referenced in an application cannot furnish samples of the deposit. When the Office is so informed or otherwise becomes aware that samples of the deposited material cannot be furnished by the depository, the examiner will treat the application as if no deposit existed. A replacement or supplemental deposit must be made if access to the deposited material is necessary to satisfy the requirements for patentability under 35 U.S.C. 112. A replacement or supplemental deposit will be accepted if it meets all the requirements for making an original deposit.
It should be noted that in a pending application, an applicant need not replace the identical material previously deposited, but may make an original deposit of a biological material which is specifically identified and described in the application as filed. Whether this alternative deposit will meet the requirements of 35 U.S.C. 112 with respect to the claimed subject matter must be resolved by the examiner on a case-by-case basis. The conditions in 37 CFR 1.802(b) and 37 CFR 1.804(b) must be satisfied.
2407.02 After a Patent Has Issued [R-07.2015]
A patent owner is required to notify the Office when it obtains information that a depository possessing a deposit referenced in a patent cannot furnish samples of the deposit. Failure to diligently replace the deposit and promptly thereafter request a certificate of correction which meets the terms of 37 CFR 1.805(b) and 37 CFR 1.805(c) will cause the patent involved to be treated in any Office proceeding as if no deposit were made.
A replacement or supplemental deposit made in connection with a patent, whether or not made during the pendency of an application for reissue patent or a reexamination proceeding or both, shall not be
accepted unless a certificate of correction under 37 CFR 1.323 is requested which meets the terms of 37 CFR 1.805(b) and 37 CFR 1.805(c) for replacement or supplemental deposits. See MPEP § 1411.01 for including changes that were made by a certificate of correction to the original patent grant in a reissue application, and MPEP § 2219 for including a copy of any certificate of correction to the original patent grant as part of a request for ex parte reexamination.
37 CFR 1.805(b) and 37 CFR 1.805(c) specify the procedures that a patent owner may follow to ensure that a patent contains the appropriate information about a deposited biological material in the event that a replacement or supplemental deposit is made after the patent is granted. 37 CFR 1.805(b) describes the information which must be contained in the certificate of correction, whereas 37 CFR 1.805(c) describes the information which must be provided in the request to make the correction.
A request for a certificate of correction of a patent under 37 CFR 1.805(b) and 37 CFR 1.805(c) will not be granted where no original deposit was made before or during the pendency of the application which matured into the patent. A patent defective because of lack of a necessary deposit is necessarily fatally defective for failure to comply with the first paragraph of 35 U.S.C. 112. Reissue is not available in such cases. See In re Hay, 534 F.2d 917, 189 USPQ 790 (CCPA 1976).
2407.03 Failure to Replace [R-08.2012]
37 CFR 1.805(d) sets forth the Office position that the failure to make a replacement deposit in a case pending before the Office, for example a reissue or reexamination proceeding, where a deposit is considered to be necessary to satisfy the requirements of 35 U.S.C. 112, shall cause the application or patent involved to be treated in any Office proceeding as if no deposit were made. The provisions of 37 CFR 1.805(g) indicate that a replacement need not be made where, at the point in time when replacement would otherwise be necessary, access to the necessary biological material was otherwise available. For example, a replacement deposit would not be required under the circumstances where access to the necessary
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§ 2407.03BIOTECHNOLOGY
biological material was established through commercial suppliers.
2407.04 Treatment of Replacement [R-08.2012]
37 CFR 1.805(e) indicates that the Office will apply a rebuttable presumption of identity between the replacement deposit and an original deposit where a patent making reference to the deposit is relied on during any Office proceeding. This means that where a replacement deposit is permitted and made, the examiner will assume that the same material as described in the patent is accessible from the identified depository unless evidence to the contrary comes to the attention of the Office.
An applicant for patent may make a replacement deposit during the pendency of the application for any reason. The provisions of 37 CFR 1.805(f) recognize that since an original deposit may be made during the pendency of the application subject to the conditions of 37 CFR 1.809, a replacement deposit logically cannot be held to any higher standard or any further requirements.
2407.05 Exemption From Replacement [R-08.2012]
The provisions of 37 CFR 1.805(h) indicate that a replacement deposit is not required even though the depository cannot furnish samples, under certain conditions, to those requesting a sample outside of the jurisdiction where the depository is located. The conditions are specified in this paragraph as being limited to national security, health or environmental safety reasons. See also Article 5 of the Budapest Treaty.
2407.06 Replacement May Not Be Recognized [R-07.2015]
37 CFR 1.805(i) indicates that the Office will not recognize in any Office proceeding a replacement deposit made by the patent owner where the depository could furnish samples of the original deposit being replaced. The best evidence of what was originally deposited should not be lost through destruction or replacement if made in association
with an existing patent. A supplemental deposit may be accepted in an Office proceeding, however, depending on the circumstances in each case.
2408 Term of Deposit [R-07.2015]
37 CFR 1.806 Term of deposit.
A deposit made before or during pendency of an application for patent shall be made for a term of at least thirty (30) years and at least five (5) years after the most recent request for the furnishing of a sample of the deposit was received by the depository. In any case, samples must be stored under agreements that would make them available beyond the enforceable life of the patent for which the deposit was made.
The term of deposit must satisfy the requirements of the Budapest Treaty which sets a term of at least 30 years from the date of deposit and at least 5 years after the most recent request for the furnishing of a sample of the deposit was received by the depository. In the event that the 30-year term of deposit covers the 17-year term or 20-year term of the patent (see MPEP § 2701) plus 6 years to include the Statute of Limitations, no further requirement is necessary. Unless applicant indicates that the deposit has been made under the Budapest Treaty, applicant must indicate the term for which the deposit has been made. The mere possibility of patent term extension or extended litigation involving the patent should not be considered in this analysis.
In the event that the 30-year term of deposit measured from the date of deposit would necessarily terminate within the period of enforceability of the patent (the patent term (see MPEP § 2701) plus 6 years to include the Statute of Limitations), samples must be stored under agreements that would make them available beyond the enforceable life of the patent for which the deposit was made. No requirement should be made as to any particular period of time beyond the enforceable life of the patent. The purpose of the requirement is to insure that a deposited biological material necessary for the practice of a patented invention would be available to the public after expiration of the patent for which the deposit was made. The term of the deposit must comply with the requirements of each sentence of 37 CFR 1.806 whether or not the deposit is made under the Budapest Treaty. A specific statement that the deposit would be stored under agreements that would make them available beyond
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the enforceable life of the patent for which the deposit was made is required only where the 30-year term of deposit would terminate within the enforceable life of the patent.
2409 Viability of Deposit [R-07.2015]
37 CFR 1.807 Viability of deposit.
(a) A deposit of biological material that is capable of self-replication either directly or indirectly must be viable at the time of deposit and during the term of deposit. Viability may be tested by the depository. The test must conclude only that the deposited material is capable of reproduction. No evidence is necessarily required regarding the ability of the deposited material to perform any function described in the patent application.
(b) A viability statement for each deposit of a biological material defined in paragraph (a) of this section not made under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure must be filed in the application and must contain:
(1) The name and address of the depository;
(2) The name and address of the depositor;
(3) The date of deposit;
(4) The identity of the deposit and the accession number given by the depository;
(5) The date of the viability test;
(6) The procedures used to obtain a sample if the test is not done by the depository; and
(7) A statement that the deposit is capable of reproduction.
(c) If a viability test indicates that the deposit is not viable upon receipt, or the examiner cannot, for scientific or other valid reasons, accept the statement of viability received from the applicant, the examiner shall proceed as if no deposit has been made. The examiner will accept the conclusion set forth in a viability statement issued by a depository recognized under § 1.803(a).
37 CFR 1.807 requires that the deposit of biological material that is capable of self-replication either directly or indirectly must be viable at the time of deposit and during the term of deposit. This requirement for viability is essentially a requirement that the deposited material is capable of reproduction. For the purpose of making a deposit under these rules, there is no requirement that evidence be provided that the deposited material is capable or has the ability to perform any function described in the patent application. However, as with any other issue of description or enablement, if the examiner has evidence or reason to question the
objective statements made in the patent application, applicants may be required to demonstrate that the deposited biological material will perform in the manner described.
Under the Budapest Treaty, there is a requirement that the deposit be tested for viability before it is accepted. Thus, a mere statement by an applicant, an authorized representative of applicant or the assignee that the deposit has been accepted under the Budapest Treaty would satisfy 37 CFR 1.807. The examiner should note the clear distinction between a statement by the applicant that the deposit has been made under the Budapest Treaty and one in which the deposit has been made and accepted under the Budapest Treaty. Where a statement is merely an indication that a deposit has been made (with no indication as to whether it has been accepted), there is no assurance that the requirements under 35 U.S.C. 112 have been satisfied.
For each deposit which is not made under the Budapest Treaty, a viability statement must be filed in the patent application and contain the information listed in paragraph (b) of this section. Under 37 CFR 1.807(c), the examiner will accept the conclusion set forth in a viability statement which is issued by a depository recognized under 37 CFR 1.803(a). If the viability test indicates that the deposit is not viable upon receipt, or the examiner cannot, for scientific or other valid reasons, accept the statement of viability received from the applicant, the examiner shall so notify the applicant stating the reasons for not accepting the statement and proceed with the examination process as if no deposit had been made.
2410 Furnishing of Samples [R-08.2012]
37 CFR 1.808 Furnishing of samples.
(a) A deposit must be made under conditions that assure that:
(1) Access to the deposit will be available during pendency of the patent application making reference to the deposit to one determined by the Commissioner to be entitled thereto under § 1.14 and 35 U.S.C. 122, and
(2) Subject to paragraph (b) of this section, all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of the patent.
(b) The depositor may contract with the depository to require that samples of a deposited biological material shall be
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furnished only if a request for a sample, during the term of the patent:
(1) Is in writing or other tangible form and dated;
(2) Contains the name and address of the requesting party and the accession number of the deposit; and
(3) Is communicated in writing by the depository to the depositor along with the date on which the sample was furnished and the name and address of the party to whom the sample was furnished.
(c) Upon request made to the Office, the Office will certify whether a deposit has been stated to have been made under conditions which make it available to the public as of the issue date of the patent grant provided the request contains:
(1) The name and address of the depository;
(2) The accession number given to the deposit;
(3) The patent number and issue date of the patent referring to the deposit; and
(4) The name and address of the requesting party.
2410.01 Conditions of Deposit [R-07.2015]
37 CFR 1.808 requires that the deposit of biological material be made under two conditions:
(A) access to the deposit will be available during pendency of the patent application making reference to the deposit to one determined by the Commissioner to be entitled thereto under 37 CFR 1.14 and 35 U.S.C. 122, and
(B) with one exception, that all restrictions imposed by the depositor on the availability to the public of the deposited biological material be irrevocably removed upon the granting of the patent.
The one exception that is permitted is specified in 37 CFR 1.808(b) which permits the depositor to contract with the depository to require that samples of a deposited biological material shall be furnished only if a request for a sample, during the term of the patent, meets any one or all of the three conditions specified in this paragraph. These conditions are:
(A) the request is in writing or other tangible form and dated; and/or
(B) the request contains the name and address of the requesting party and the accession number of the deposit; and/or
(C) the request is communicated in writing by the depository to the depositor along with the date on which the sample was furnished and the name
and address of the party to whom the sample was furnished.
It should be noted that this exception to the general rule that all restrictions will be removed must be strictly followed and that no variations of this explicit exception will be accepted as meeting the conditions of this section. Although this exception is consistent with the provisions in the Budapest Treaty and its implementing regulations (Rule 11.4), other conditions on accessibility are permitted under the Budapest Treaty as prescribed by national law. Consequently, the mere indication that a deposit has been made and accepted under conditions prescribed by the Budapest Treaty would satisfy all conditions of these regulations except the requirement that all restrictions on access be removed on grant of the patent. Ex parte Hildebrand, 15 USPQ2d 1662 (Bd. Pat. App. & Int. 1990).
2410.02 Certification of Statement of Availability of Deposit [R-07.2015]
Since the mere description of a deposit or identity of a deposit in a patent specification is not necessarily an indication that a requirement for deposit was made or that a deposit which complies with these rules has been made, accessibility to a deposited material referenced in a patent may depend on the satisfaction of conditions not apparent on the face of the patent. For these reasons, and upon request made to the U.S. Patent and Trademark Office, the Office will certify whether a deposit has been stated to have been made under conditions which make it available to the public as of the issue date of the patent grant provided the request is made to a Director of Technology Center (TC) 1600, and contains the following information:
(A) the name and address of the depository;
(B) the accession number given to the deposit;
(C) the patent number and issue date of the patent referring to the deposit; and
(D) the name and address of the requesting party.
Persons requesting a certificate of statement of availability of deposit should contact the TC 1600 Director's office directly, and should not submit a request via the examiner of record.
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The Office will not certify whether a deposit has been made under conditions which would make it available to the public until the issuance of a U.S. Patent referencing the deposit. For example, a request for such certification will not be considered where the request is filed with regard to a deposit referenced in an international application filed under the PCT, in an international application that entered the U.S. national stage, or any other U.S. national application, that has not yet issued as a patent.
See also MPEP § 2404.01.
For those deposits made pursuant to the Budapest Treaty, the World Intellectual Property Organization provides a form (Form BP-12) for requesting a certification of legal entitlement to receive samples of deposited microorganisms pursuant to Rule 11.3(a) of the Regulations under the Budapest Treaty. The form is available at www.wipo.int/treaties/en/registration/budapest/guide.
2411 Examination Procedures [R-07.2015]
37 CFR 1.809 Examination procedures.
(a) The examiner shall determine pursuant to § 1.104 in each application for patent, application for reissue patent or reexamination proceeding if a deposit is needed, and if needed, if a deposit actually made is acceptable for patent purposes. If a deposit is needed and has not been made or replaced or supplemented in accordance with these regulations, the examiner, where appropriate, shall reject the affected claims under the appropriate provision of 35 U.S.C. 112, explaining why a deposit is needed and/or why a deposit actually made cannot be accepted.
(b) The applicant for patent or patent owner shall reply to a rejection under paragraph (a) of this section by—
(1) In the case of an applicant for patent, either making an acceptable original, replacement, or supplemental deposit, or assuring the Office in writing that an acceptable deposit will be made; or, in the case of a patent owner, requesting a certificate of correction of the patent which meets the terms of paragraphs (b) and (c) of § 1.805, or
(2) Arguing why a deposit is not needed under the circumstances of the application or patent considered and/or why a deposit actually made should be accepted. Other replies to the examiner’s action shall be considered nonresponsive. The rejection will be repeated until either paragraph (b)(1) of this section is satisfied or the examiner is convinced that a deposit is not needed.
(c) If an application for patent is otherwise in condition for allowance except for a needed deposit and the Office has received a written assurance that an acceptable deposit will be
made, the Office may notify the applicant in a notice of allowability and set a three month period of time from the mailing date of the notice of allowability within which the deposit must be made in order to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)).
(d) For each deposit made pursuant to these regulations, the specification shall contain:
(1) The accession number for the deposit;
(2) The date of the deposit;
(3) A description of the deposited biological material sufficient to specifically identify it and to permit examination; and
(4) The name and address of the depository.
(e) Any amendment required by paragraphs (d)(1), (d)(2) or (d)(4) of this section must be filed before or with the payment of the issue fee (see § 1.312).
37 CFR 1.809 sets forth procedures that will be used by the examiner to address a deposit issue. The burden is initially on the Office to establish that access to a biological material is necessary for the satisfaction of the statutory requirements for patentability under 35 U.S.C. 112. Once the Office has met this burden, the burden shifts to the applicant or patent owner to demonstrate that access to such biological material either is not necessary, or is already available, or that a deposit of such material will be made in accordance with these regulations.
2411.01 Rejections Based on Deposit Issue [R-07.2015]
Under 37 CFR 1.809(a), once the examiner has determined that access to a biological material is necessary, and there is no information that would support the conclusion that access is currently available in accordance with these regulations, the examiner should make an appropriate rejection under 35 U.S.C. 112 until such time as a deposit in accordance with these regulations is actually made or a written assurance is received in the patent application that such a deposit will be made upon an indication of allowability of the application. The examiner should clearly indicate the statutory basis for the rejection and the reasons that are relied upon by the examiner to conclude that the application does not comply with some requirement of 35 U.S.C. 112. Although not exhaustive, the following grounds of rejection may be applicable in appropriate circumstances:
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(A) 35 U.S.C. 112(a), enablement requirement. Rejection for lack of an enabling disclosure without access to a specific biological material. This ground of rejection should be accompanied by evidence of scientific reasoning to support the conclusion that a person skilled in the art could not make or use the invention defined in and commensurate with the claims without access to the specific biological material. See MPEP § 2164.06(a).
(B) 35 U.S.C. 112(a), written description requirement. A rejection for lack of written description typically arises in the context that the application as filed does not contain a description to support an amendment to the specification or claims, although it can arise in the context of original claims. See MPEP § 2163 et seq. An amendment to the claims that is not described in the application as filed would justify a rejection of the affected claims under 35 U.S.C. 112(a). If an amendment is made to the application, other than the claims, that is not described in the application as filed, this would justify a rejection under 35 U.S.C. 112(a) and/or an objection under 35 U.S.C. 132 (prohibition against the introduction of new matter) and a requirement that the amendment be canceled.
(C) 35 U.S.C. 112(a), best mode requirement. A rejection for lack of a best mode will be rare in the ex parte examination process because it requires (1) a finding by the examiner that, at the time the application was filed, the inventor(s) knew of a specific material that was considered by the inventor(s) to be better than any other, and (2) if a best mode was contemplated at that time, that the inventor(s) concealed the best mode (accidentally or intentionally) by failing to adequately describe that best mode. See Chemcast Corp. v. Arco Industries Corp., 913 F.2d 923, 16 USPQ2d 1033 (Fed. Cir. 1990). See also MPEP § 2165 et seq.
(D) 35 U.S.C. 112(b), requirement to particularly point out and distinctly claim invention. A rejection for indefiniteness, as applied to a deposit issue, requires the examiner to provide reasons why the terms in the claims and/or scope of the invention are unclear because of an incomplete or inaccurate description or the absence of a reference to a biological material.
(E) 35 U.S.C. 112(b), requirement to claim what the inventor or a joint inventor regards as the invention. A rejection on the basis that the claims
do not set forth the subject matter that the inventor or a joint inventor regards as the invention requires the citation of some evidence, not contained in the application as filed, to support the rejection. In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969). Any disagreement between the content of the application disclosure and the scope of the claims should be addressed under 35 U.S.C. 112(a). See In re Ehrreich, 590 F.2d 902, 200 USPQ 504 (CCPA 1979).
Where a deposit is required to satisfy 35 U.S.C. 112, a deposit must be made in accordance with these regulations. See 37 CFR 1.802. A deposit accepted in any International Depositary Authority (IDA) under the Budapest Treaty shall be accepted for patent purposes if made under conditions which comply with 37 CFR 1.806 and 37 CFR 1.808(a) concerning term of deposit and permissible conditions on access once the patent is granted.
2411.02 Replies to Rejections Based on Deposit Issue [R-07.2015]
Once a rejection under 35 U.S.C. 112 has been made by the examiner directed to the absence of access to a biological material, applicant may reply, pursuant to 37 CFR 1.809(b)(1), by either making an acceptable original, replacement, or supplemental deposit in accordance with these regulations, or assuring the Office in writing that an acceptable deposit will be made on or before the date of payment of the issue fee, or by submitting an argument of why a deposit is not required under the circumstances of the application being considered. Other replies to such a rejection by the examiner shall be considered nonresponsive and may result in abandonment of the application. The rejection will be repeated and made final until the requirements of 37 CFR 1.809(b)(1) are satisfied or the examiner is convinced that a deposit is not required for the claimed subject matter. Once the rejection is made final, the requirements of 37 CFR 1.116 apply to further submissions. The written assurance will be accepted by the Office if it clearly states that an acceptable deposit will be made within the required time and under conditions which satisfy these rules. In the case that an acceptable written assurance has been made by the applicant, the rejection under 35 U.S.C. 112 directed to the absence
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of access to the biological material should be removed.
2411.03 Application in Condition for Allowance Except for Deposit [R-07.2015]
As set forth in 37 CFR 1.809(c), in the event that an application for patent is otherwise in condition for allowance except for a required deposit and the Office has received a written assurance that an acceptable deposit will be made, the Office may notify the applicant in a notice of allowability and set a three month period of time from the mailing date of the notice of allowability within which the deposit must be made in order to avoid abandonment. This time period is not extendable under 37 CFR 1.136 (see 37 CFR 1.136(c)). Failure to make the needed deposit in accordance with this requirement will be considered a failure to prosecute the application under 35 U.S.C. 133 and result in abandonment of the application.
Once the deposit has been made, information regarding the deposit, such as the name and address of the depository, the accession number and the date of the deposit, that is to be added to the specification must be added by means of filing an amendment under the provisions of 37 CFR 1.312. Such an amendment must be filed before or with the payment of the issue fee. Therefore, applicants need to make any necessary deposit of biological material well prior to payment of the issue fee such that the accession number is received with sufficient time remaining to amend the specification as required by 37 CFR 1.809(d) on or before the date the issue fee is paid. See 37 CFR 1.809(e).
2411.04 [Reserved]
2411.05 Content of Application with Respect to Deposited Material [R-08.2012]
37 CFR 1.809(d) sets forth the requirements for the content of the specification with respect to a deposited biological material. Specifically, the specification shall contain the accession number for the deposit, the date of the deposit, the name and address of the depository, and a description of the deposited biological material sufficient to
specifically identify it and to permit examination. The description also must be sufficient to permit verification that the deposited biological material is in fact that disclosed. Once the patent issues, the description must be sufficient to aid in the resolution of questions of infringement. As a general rule, the more information that is provided about a particular deposited biological material, the better the examiner will be able to compare the identity and characteristics of the deposited biological material with the prior art.
2412-2419 [Reserved]
2420 The Requirements for Patent Applications Containing Nucleotide Sequence and/or Amino Acid Sequence Disclosures - the Sequence Rules [R-07.2015]
The sequence rules (37 CFR 1.821 -1.825) set forth the requirements pertaining to patent applications containing nucleotide sequence and/or amino acid sequence disclosures. See also MPEP § 608.05 and § 2422.03.
See PCT Rule 5 and Rule 13ter , and MPEP § 1823.02 and § 2422, for the requirements under the PCT for international applications that disclose nucleic acid or amino acid sequences.
2421 Overview of the Sequence Rules [R-08.2012]
2421.01 Definition of “Sequence Listing” and “CRF” [R-07.2015]
The sequence rules (37 CFR 1.821 -1.825) require the use of standard symbols and a standard format for submitting sequence data in most patent applications that disclose nucleic acid or amino acid sequences. For purposes of the sequence rules and the discussion in MPEP Chapter 2400, the phrase “disclose(d) (or disclosure(s) of) nucleic acid or amino acid sequences” is intended to refer to those nucleic acid or amino acid sequences that are described in the patent application by enumeration of their residues and that meet the length thresholds of 37 CFR 1.821(a).
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§ 2421.01BIOTECHNOLOGY
37 CFR 1.821(c) requires that applications containing disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) contain, as a separate part, a disclosure of the nucleotide and/or amino acid sequences, and associated information, using the format and symbols that are set forth in 37 CFR 1.822 and 37 CFR 1.823. This separate part of the disclosure is referred to as the “Sequence Listing” (hereinafter alternatively referred to as “sequence listing”). The sequence listing required pursuant to 37 CFR 1.821(c) is the official copy of the sequence listing, and may be submitted as an ASCII text file via EFS-Web, on compact disc, as a PDF submitted via EFS-Web, or on paper. See MPEP § 2422.03 for additional information.
37 CFR 1.821(e) requires that a copy of the sequence listing referred to in 37 CFR 1.821(c) must also be submitted in computer readable form (CRF) as an ASCII text file in accordance with the requirements of 37 CFR 1.824 (hereinafter “CRF of the sequence listing” or “CRF”). The computer readable form may be submitted on the electronic media permitted by 37 CFR 1.824, or may be submitted as an ASCII text file via EFS-Web. See MPEP § 2422.04 for additional information.
2421.02 Summary of the Requirements of the Sequence Rules [R-07.2015]
The sequence rules define a set of symbols and procedures that are both mandatory and the only way that an applicant is permitted to describe information in the sequence listing about a sequence that falls within the definitions used in the rules. Thus, 37 CFR 1.821 defines a “sequence” and a sequence listing for the purpose of the rules, the requirements for specific symbols, and formats for the sequence listing, the requirement for a computer readable form (CRF) of the sequence listing and the deadlines for complying with the requirements. 37 CFR 1.822 to 37 CFR 1.824 set forth detailed descriptions of the requirements that are mandatory for the presentation of sequence data, and 37 CFR 1.825 sets forth procedures that are available to an applicant in the event that amendments to the sequence listing or replacement of the CRF of the sequence listing become necessary.
The sequence rules embrace all unbranched nucleotide sequences with ten or more nucleotide bases and all unbranched, non-D amino acid sequences with four or more amino acids, provided that there are at least 10 “specifically defined” nucleotides or 4 “specifically defined” or amino acids. The rules apply to all sequences in a given application, whether claimed or not. All such sequences are relevant for the purposes of building a comprehensive database and properly assessing prior art. It is therefore essential that all sequences, whether only disclosed or also claimed, be included in the database.
2421.03 Notification of a Failure to Comply [R-07.2015]
With respect to the Office’s determination of compliance with the sequence rules and the opportunities afforded applicants to satisfy the requirements of the rules, applicants will be notified of easily detectable deficiencies early in the application process. Applicants whose computer readable forms are not readable, or are missing mandatory elements, will be notified shortly after receipt of the application by the Office. Applications filed on or after November 29, 2000, will be retained in the Office of Patent Application Processing (OPAP) until any noncompliant sequence listing that renders an application unsuitable for examination is corrected.
OPAP will mail a Notice to Comply With Requirements For Patent Applications Containing Nucleotide Sequence And/Or Amino Acid Sequence Disclosures to applicant listing the requirements that have not been met and setting a two month time period within which to comply with the sequence rules, 37 CFR 1.821 - 1.825. Failure to comply with these requirements will result in abandonment of the application under 37 CFR 1.821(g). Extension of time may be obtained by filing a petition accompanied by the extension fee under the provisions of 37 CFR 1.136.
Patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013, may be subject to reductions in patent terms
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adjustment pursuant to 37 CFR 1.704(c)(13) if they are not in condition for examination within eight months from the filing date or date of commencement, respectively. “In condition for examination” includes compliance with 37 CFR 1.821 -1.825 (see 37 CFR 1.704(f)). Deficiencies of a more sophisticated nature will likely only be detected by the examiner to whom the application is assigned. Applicant will be notified of any errors or inconsistencies detected by the examiner in the next Office action.
A notification of a failure to comply with the sequence rules will be accompanied by an analysis of any submitted computer readable form. Any inquiries regarding a specific computer readable form that has been processed by the Office should be directed to the Sequence Systems Service Center of the Scientific and Technical Information Center at 571-272-2510 or via email at STIC-SSSCHelpdesk@uspto.gov.
2421.04 Future Changes to the Sequence Rules [R-07.2015]
With general regard to the symbols and format to be used for nucleotide and/or amino acid sequence data set forth in 37 CFR 1.822 and the form and format for sequence submissions in computer readable form set forth in 37 CFR 1.824, the Office intends to accommodate progress in the areas of both standardization and computerization as they relate to sequence data by subsequently amending the rules to take into account any such progress. As the Office progresses in these areas, the Office will do so by the publication of notices in the Official Gazette or formal rulemaking proposals, as appropriate. The Office will also continue work on the preparation of a new World Intellectual Property Organization (WIPO) standard on the presentation of nucleotide and amino acid sequence listings using eXtensible Markup Language (XML) with the members of the Task Force on Sequence Listings created by the Committee on WIPO Standards. See Request for Comments on the Recommendation for the Disclosure of Sequence Listings Using XML
(Proposed ST.26), 77 Fed. Reg. 28541 (May 15, 2012), for additional information.
2422 Nucleotide and/or Amino Acid Sequence Disclosures in Patent Applications [R-07.2015]
37 CFR 1.821 Nucleotide and/or amino acid sequence disclosures in patent applications.
(a) Nucleotide and/or amino acid sequences as used in §§ 1.821 through 1.825 are interpreted to mean an unbranched sequence of four or more amino acids or an unbranched sequence of ten or more nucleotides. Branched sequences are specifically excluded from this definition. Sequences with fewer than four specifically defined nucleotides or amino acids are specifically excluded from this section. “Specifically defined” means those amino acids other than “Xaa” and those nucleotide bases other than “n” defined in accordance with the World Intellectual Property Organization (WIPO) Handbook on Industrial Property Information and Documentation, Standard ST.25: Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in Patent Applications (1998), including Tables 1 through 6 in Appendix 2, herein incorporated by reference. (Hereinafter “WIPO Standard ST.25 (1998)''). This incorporation by reference was approved by the Director of the Federal Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of WIPO Standard ST.25 (1998) may be obtained from the World Intellectual Property Organization; 34 chemin des Colombettes; 1211 Geneva 20 Switzerland. Copies of ST.25 may be inspected at the Patent Search Room; Crystal Plaza 3, Lobby Level; 2021 South Clark Place; Arlington, VA 22202. Copies may also be inspected at the Office of the Federal Register, 800 North Capitol Street, NW, Suite 700, Washington, DC. Nucleotides and amino acids are further defined as follows:
(1) Nucleotides: Nucleotides are intended to embrace only those nucleotides that can be represented using the symbols set forth in WIPO Standard ST.25 (1998), Appendix 2, Table 1. Modifications, e.g., methylated bases, may be described as set forth in WIPO Standard ST.25 (1998), Appendix 2, Table 2, but shall not be shown explicitly in the nucleotide sequence.
(2) Amino acids: Amino acids are those L-amino acids commonly found in naturally occurring proteins and are listed in WIPO Standard ST.25 (1998), Appendix 2, Table 3. Those amino acid sequences containing D-amino acids are not intended to be embraced by this definition. Any amino acid sequence that contains post-translationally modified amino acids may be described as the amino acid sequence that is initially translated using the symbols shown in WIPO Standard ST.25 (1998), Appendix 2, Table 3 with the modified positions; e.g., hydroxylations or glycosylations, being described as set forth in WIPO Standard ST.25 (1998), Appendix 2, Table 4, but these modifications shall not be shown explicitly in the amino acid sequence. Any peptide or protein that can be expressed as a sequence using the symbols in WIPO Standard ST.25 (1998), Appendix 2, Table 3 in conjunction with a description in the Feature section to describe, for example, modified linkages, cross links and end caps, non-peptidyl bonds, etc., is embraced by this definition.
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§ 2422BIOTECHNOLOGY
(b) Patent applications which contain disclosures of nucleotide and/or amino acid sequences, in accordance with the definition in paragraph (a) of this section, shall, with regard to the manner in which the nucleotide and/or amino acid sequences are presented and described, conform exclusively to the requirements of §§ 1.821 through 1.825.
(c) Patent applications which contain disclosures of nucleotide and/or amino acid sequences must contain, as a separate part of the disclosure, a paper copy disclosing the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of §§ 1.822 and 1.823. This paper copy is hereinafter referred to as the “Sequence Listing.” Each sequence disclosed must appear separately in the “Sequence Listing.” Each sequence set forth in the “Sequence Listing” shall be assigned a separate sequence identifier. The sequence identifiers shall begin with 1 and increase sequentially by integers. If no sequence is present for a sequence identifier, the code “000” shall be used in place of the sequence. The response for the numeric identifier <160> shall include the total number of SEQ ID NOs, whether followed by a sequence or by the code “000.”
(d) Where the description or claims of a patent application discuss a sequence that is set forth in the “Sequence Listing” in accordance with paragraph (c) of this section, reference must be made to the sequence by use of the sequence identifier, preceded by “SEQ ID NO:” in the text of the description or claims, even if the sequence is also embedded in the text of the description or claims of the patent application.
(e) A copy of the “Sequence Listing” referred to in paragraph (c) of this section must also be submitted in computer readable form in accordance with the requirements of § 1.824. The computer readable form is a copy of the “Sequence Listing” and will not necessarily be retained as a part of the patent application file. If the computer readable form of a new application is to be identical with the computer readable form of another application of the applicant on file in the Patent and Trademark Office, reference may be made to the other application and computer readable form in lieu of filing a duplicate computer readable form in the new application if the computer readable form in the other application was compliant with all of the requirements of these rules. The new application shall be accompanied by a letter making such reference to the other application and computer readable form, both of which shall be completely identified. In the new application, applicant must also request the use of the compliant computer readable “Sequence Listing” that is already on file for the other application and must state that the paper copy of the “Sequence Listing” in the new application is identical to the computer readable copy filed for the other application.
(f) In addition to the paper copy required by paragraph (c) of this section and the computer readable form required by paragraph (e) of this section, a statement that the content of the paper and computer readable copies are the same must be submitted with the computer readable form, e.g., a statement that “the information recorded in computer readable form is identical to the written sequence listing.”
(g) If any of the requirements of paragraphs (b) through (f) of this section are not satisfied at the time of filing under 35 U.S.C. 111(a) or at the time of entering the national stage under 35 U.S.C. 371, applicant will be notified and given a period of time within which to comply with such requirements in order to prevent abandonment of the application. Any submission in reply to a requirement under this paragraph must be accompanied by a statement that the submission includes no new matter.
(h) If any of the requirements of paragraphs (b) through (f) of this section are not satisfied at the time of filing an international application under the Patent Cooperation Treaty (PCT), which application is to be searched by the United States International Searching Authority or examined by the United States International Preliminary Examining Authority, applicant will be sent a notice necessitating compliance with the requirements within a prescribed time period. Any submission in reply to a requirement under this paragraph must be accompanied by a statement that the submission does not include matter which goes beyond the disclosure in the international application as filed. If applicant fails to timely provide the required computer readable form, the United States International Searching Authority shall search only to the extent that a meaningful search can be performed without the computer readable form and the United States International Preliminary Examining Authority shall examine only to the extent that a meaningful examination can be performed without the computer readable form.
I. INCORPORATION BY REFERENCE OF WIPO ST.25 (1998) IN 37 CFR 1.821
37 CFR 1.821 incorporates by reference the World Intellectual Property Organization (WIPO) Handbook on Industrial Property Information and Documentation, Standard ST.25 (1998), including Tables 1 through 6 of Appendix 2. Copies may be obtained from the World Intellectual Property Organization; 34 chemin des Colombettes; 1211 Geneva 20 Switzerland. Copies may also be inspected at the Office of the Federal Register, 800 North Capitol Street, NW, Suite 700, Washington, DC 20408. These tables are reproduced below. The 1998 version of WIPO ST.25 is available online at www.wipo.int/standards/en/archives.html. Note that the standard was revised in December 2009, and the current version is available online at www.wipo.int/export/sites/www/standards/en/pdf/03-25-01.pdf.
WIPO Standard ST.25 (1998), Appendix 2, Table 1, provides that the bases of a nucleotide sequence should be represented using the following one-letter symbol for nucleotide sequence characters:
Table 1: List of Nucleotides
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2422
Origin of designation
MeaningSymbol
adenineaa guaninegg cytosinecc thyminett uraciluu purineg or ar pyrimidinet/u or cy aminoa or cm ketog or t/uk strong interactions 3H-bonds
g or cs
weak interactions 2H-bonds
a or t/uw
not ag or c or t/ub not ca or g or t/ud not ga or c or t/uh
not t, not ua or g or cv anya or g or c or t/u,
unknown, or other n
WIPO Standard ST.25 (1998), Appendix 2, Table 2, provides that modified bases may be represented as the corresponding unmodified bases in the sequence itself, if the modification is further described in numeric identifier <223> of the Feature section of the sequence listing. The symbols from the list below may be used in the description (i.e., the specification and drawing, or in the Feature section of the sequence listing) but these symbols may not be used in the sequence itself. Modifications not listed in Table 2 may also be represented as the corresponding unmodified base in the sequence itself, and the modification should be described using its full chemical name in the Feature section of the sequence listing.
Table 2: List of Modified Nucleotides
MeaningSymbol 4-acetylcytidineac4c 5-(carboxyhydroxymethyl)uridinechm5u 2'-O-methylcytidinecm 5-carboxymethylaminomethyl-2-thiouridinecmnm5s2u 5-carboxymethylaminomethyluridinecmnm5u dihydrouridined 2'-O-methylpseudouridinefm beta, D-galactosylqueuosinegal q 2'-O-methylguanosinegm inosinei N6-isopentenyladenosinei6a 1-methyladenosinem1a 1-methylpseudouridinem1f 1-methylguanosinem1g 1-methylinosinem1i 2,2-dimethylguanosinem22g 2-methyladenosinem2a 2-methylguanosinem2g 3-methylcytidinem3c 5-methylcytidinem5c N6-methyladenosinem6a 7-methylguanosinem7g
5-methylaminomethyluridinemam5u 5-methoxyaminomethyl-2-thiouridinemam5s2u beta, D-mannosylqueuosineman q 5-methoxycarbonylmethyl-2-thiouridinemcm5s2u 5-methoxycarbonylmethyluridinemcm5u 5-methoxyuridinemo5u 2-methylthio-N6-isopentenyladenosinems2i6a N-((9-beta-D-ribofuranosyl-2-methylthiopurine -6-yl)carbamoyl)threonine
ms2t6a
N-((9-beta-D-ribofuranosylpurine-6-yl) N-methylcarbamoyl)threonine
mt6a
uridine-5-oxyacetic acid-methylestermv uridine-5-oxyacetic acido5u wybutoxosineosyw pseudouridinep queuosineq 5-methyl-2-thiouridines2t 2-thiocytidines2c 5-methyl-2-thiouridines2t 2-thiouridines2u 4-thiouridines4u 5-methyluridinet
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§ 2422BIOTECHNOLOGY
N-((9-beta-D-ribofuranosylpurine-6-yl)- carbamoyl)threonine
t6a
2'-O-methyl-5-methyluridinetm 2'-O-methyluridineum wybutosineyw 3-(3-amino-3-carboxy-propyl)uridine, (acp3)u
x
WIPO Standard ST.25 (1998), Appendix 2, Table 3, provides that the amino acids should be represented using the following three-letter symbols with the first letter as a capital.
Table 3: List of Amino Acids
MeaningSymbol AlanineAla CysteineCys Aspartic AcidAsp Glutamic AcidGlu PhenylalaninePhe GlycineGly HistidineHis IsoleucineIle LysineLys LeucineLeu MethionineMet AsparagineAsn ProlinePro GlutamineGln ArginineArg SerineSer ThreonineThr ValineVal
TryptophanTrp TyrosineTyr Asp or AsnAsx Glu or GlnGlx unknown or otherXaa
WIPO Standard ST.25 (1998), Appendix 2, Table 4, provides that modified and unusual amino acids may be represented as the corresponding unmodified amino acids in the sequence itself if the modification is further described in numeric identifier <223> of the Feature section of the sequence listing. The symbols from the list below may be used in the description (i.e., the specification and drawings, or in the Feature section of the sequence listing) but these symbols may not be used in the sequence itself. Modifications not listed in Table 4 may also be represented as the corresponding unmodified amino acid in the sequence itself, and the modification should be described using its full chemical name in the Feature section of the sequence listing.
Table 4: List of Modified and Unusual Amino Acids
MeaningSymbol 2-Aminoadipic acidAad 3-Aminoadipic acidbAad beta-Alanine, beta-Aminopropionic acidbAla 2-Aminobutyric acidAbu 4-Aminobutyric acid, piperidinic acid4Abu 6-Aminocaproic acidAcp 2-Aminoheptanoic acidAhe 2-Aminoisobutyric acidAib 3-Aminoisobutyric acidbAib 2-Aminopimelic acidApm 2,4-Diaminobutyric acidDbu DesmosineDes
2,2' -Diaminopimelic acidDpm 2,3-Diaminopropionic acidDpr N-EthylglycineEtGly N-EthylasparagineEtAsn HydroxylysineHyl allo-HydroxylysineaHyl 3-Hydroxyproline3Hyp 4-Hydroxyproline4Hyp IsodesmosineIde allo-IsoleucineaIle N-Methylglycine, sarcosineMeGly N-MethylisoleucineMeIle 6-N-MethyllysineMeLys
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2422
N-MethylvalineMeVal NorvalineNva NorleucineNle OrnithineOrn
WIPO Standard ST.25 (1998), Appendix 2, Table 5, provides for feature keys related to DNA sequences.
Table 5: List of Feature Keys Related to Nucleotide Sequences
DescriptionKey a related individual or strain contains stable, alternative forms of the same gene which differs from the presented sequence at this location (and perhaps others)
allele
(1) region of DNA at which regulation of termination of transcription occurs, which controls the expression of some bacterial operons; (2) sequence segment located
attenuator
between the promoter and the first structural gene that causes partial termination of transcription constant region of immunoglobulin light and heavy chains, and T-cell receptor alpha, beta, and gamma chains; includes one or more exons depending on the particular chain
C_region
CAAT box; part of a conserved sequence located about 75 bp up-stream of the start point of eukaryotic transcription units which may be involved in RNA polymerase binding; consensus=GG (C or T) CAATCT
CAAT_signal
coding sequence; sequence of nucleotides that corresponds with the sequence of amino acids in a protein (location includes stop codon); feature includes amino acid conceptual translation
CDS
independent determinations of the “same” sequence differ at this site or regionconflict displacement loop; a region within mitochondrial DNA in which a short stretch of RNA is paired with one strand of DNA, displacing the original partner DNA strand
D-loop
in this region; also used to describe the displacement of a region of one strand of duplex DNA by a single stranded invader in the reaction catalyzed by RecA protein diversity segment of immunoglobulin heavy chain, and T-cell receptor beta chainD-segment a cis-acting sequence that increases the utilization of (some) eukaryotic promoters, and can function in either orientation and in any location (upstream or downstream) relative to the promoter
enhancer
region of genome that codes for portion of spliced mRNA; may contain 5'UTR, all CDSs, and 3'UTR
exon
GC box; a conserved GC-rich region located upstream of the start point of eukaryotic transcription units which may occur in multiple copies or in either orientation; consensus=GGGCGG
GC_signal
region of biological interest identified as a gene and for which a name has been assigned
gene
intervening DNA; DNA which is eliminated through any of several kinds of recombination
iDNA
a segment of DNA that is transcribed, but removed from within the transcript by splicing together the sequences (exons) on either side of it
intron
joining segment of immunoglobulin light and heavy chains, and T-cell receptor alpha, beta, and gamma chains
J_segment
long terminal repeat, a sequence directly repeated at both ends of a defined sequence, of the sort typically found in retroviruses
LTR
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§ 2422BIOTECHNOLOGY
DescriptionKey mature peptide or protein coding sequence; coding sequence for the mature or final peptide or protein product following post-translational modification; the location does not include the stop codon (unlike the corresponding CDS)
mat_peptide
site in nucleic acid which covalently or non-covalently binds another moiety that cannot be described by any other Binding key (primer_bind or protein_bind)
misc_binding
feature sequence is different from that presented in the entry and cannot be described by any other Difference key (conflict, unsure, old_sequence, mutation, variation, allele, or modified_base)
misc_difference
region of biological interest which cannot be described by any other feature key; a new or rare feature
misc_feature
site of any generalized, site-specific or replicative recombination event where there is a breakage and reunion of duplex DNA that cannot be described by other
misc_recomb
recombination keys (iDNA and virion) or qualifiers of source key (/insertion_seq, /transposon, /proviral) any transcript or RNA product that cannot be defined by other RNA keys (prim_transcript, precursor_RNA, mRNA, 5'clip, 3'clip, 5'UTR, 3'UTR, exon,
misc_RNA
CDS, sig_peptide, transit_peptide, mat_peptide, intron, polyA_site, rRNA, tRNA, scRNA, and snRNA) any region containing a signal controlling or altering gene function or expression that cannot be described by other Signal keys (promoter, CAAT_signal,
misc_signal
TATA_signal, -35_signal, -10_signal, GC_signal, RBS, polyA_signal, enhancer, attenuator, terminator, and rep_origin) any secondary or tertiary structure or conformation that cannot be described by other Structure keys (stem_loop and D-loop)
misc_structure
the indicated nucleotide is a modified nucleotide and should be substituted for by the indicated molecule (given in the mod_base qualifier value)
modified_base
messenger RNA; includes 5' untranslated region (5'UTR), coding sequences (CDS, exon) and 3' untranslated region (3'UTR)
mRNA
a related strain has an abrupt, inheritable change in the sequence at this locationmutation extra nucleotides inserted between rearranged immunoglobulin segmentsN_region the presented sequence revises a previous version of the sequence at this locationold_sequence recognition region necessary for endonuclease cleavage of an RNA transcript that is followed by polyadenylation; consensus=AATAAA
polyA_signal
site on an RNA transcript to which will be added adenine residues by post-transcriptional polyadenylation
polyA_site
any RNA species that is not yet the mature RNA product; may include 5' clipped region (5'clip), 5' untranslated region (5'UTR), coding sequences (CDS, exon),
precursor_RNA
intervening sequences (intron), 3' untranslated region (3'UTR), and 3' clipped region (3'clip) primary (initial, unprocessed) transcript; includes 5' clipped region (5'clip), 5' untranslated region (5'UTR), coding sequences (CDS, exon), intervening sequences (intron), 3' untranslated region (3'UTR), and 3' clipped region (3'clip)
prim_transcript
non-covalent primer binding site for initiation of replication, transcription, or reverse transcription; includes site(s) for synthetic, for example, PCR primer elements
primer_bind
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2422
DescriptionKey region on a DNA molecule involved in RNA polymerase binding to initiate transcription
promoter
non-covalent protein binding site on nucleic acidprotein_bind ribosome binding siteRBS region of genome containing repeating unitsrepeat_region single repeat elementrepeat_unit origin of replication; starting site for duplication of nucleic acid to give two identical copies
rep_origin
mature ribosomal RNA; the RNA component of the ribonucleoprotein particle (ribosome) which assembles amino acids into proteins
rRNA
switch region of immunoglobulin heavy chains; involved in the rearrangement of heavy chain DNA leading to the expression of a different immunoglobulin class from the same B-cell
S_region
many tandem repeats (identical or related) of a short basic repeating unit; many have a base composition or other property different from the genome average that allows them to be separated from the bulk (main band) genomic DNA
satellite
small cytoplasmic RNA; any one of several small cytoplasmic RNA molecules present in the cytoplasm and (sometimes) nucleus of a eukaryote
scRNA
signal peptide coding sequence; coding sequence for an N-terminal domain of a secreted protein; this domain is involved in attaching nascent polypeptide to the membrane; leader sequence
sig_peptide
small nuclear RNA; any one of many small RNA species confined to the nucleus; several of the snRNAs are involved in splicing or other RNA processing reactions
snRNA
identifies the biological source of the specified span of the sequence; this key is mandatory; every entry will have, as a minimum, a single source key spanning the entire sequence; more than one source key per sequence is permissable
source
hairpin; a double-helical region formed by base-pairing between adjacent (inverted) complementary sequences in a single strand of RNA or DNA
stem_loop
Sequence Tagged Site; short, single-copy DNA sequence that characterizes a mapping landmark on the genome and can be detected by PCR; a region of the genome can be mapped by determining the order of a series of STSs
STS
TATA box; Goldberg-Hogness box; a conserved AT-rich septamer found about 25 bp before the start point of each eukaryotic RNA polymerase II transcript unit
TATA_signal
which may be involved in positioning the enzyme for correct initiation; consensus=TATA(A or T)A(A or T) sequence of DNA located either at the end of the transcript or adjacent to a promoter region that causes RNA polymerase to terminate transcription; may also be site of binding of repressor protein
terminator
transit peptide coding sequence; coding sequence for an N-terminal domain of a nuclear-encoded organellar protein; this domain is involved in post-translational import of the protein into the organelle
transit_peptide
mature transfer RNA, a small RNA molecule (75-85 bases long) that mediates the translation of a nucleic acid sequence into an amino acid sequence
tRNA
author is unsure of exact sequence in this regionunsure
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§ 2422BIOTECHNOLOGY
DescriptionKey variable region of immunoglobulin light and heavy chains, and T-cell receptor alpha, beta, and gamma chains; codes for the variable amino terminal portion; can be made up from V_segments, D_segments, N_regions, and J_segments
V_region
variable segment of immunoglobulin light and heavy chains, and T-cell receptor alpha, beta, and gamma chains; codes for most of the variable region (V_region) and the last few amino acids of the leader peptide
V_segment
a related strain contains stable mutations from the same gene (for example, RFLPs, polymorphisms, etc.) which differ from the presented sequence at this location (and possibly others)
variation
3'-most region of a precursor transcript that is clipped off during processing3'clip region at the 3' end of a mature transcript (following the stop codon) that is not translated into a protein
3'UTR
5'-most region of a precursor transcript that is clipped off during processing5'clip region at the 5' end of a mature transcript (preceding the initiation codon) that is not translated into a protein
5'UTR
pribnow box; a conserved region about 10 bp upstream of the start point of bacterial transcription units which may be involved in binding RNA polymerase; consensus=TAtAaT
-10_signal
a conserved hexamer about 35 bp upstream of the start point of bacterial transcription units; consensus=TTGACa [ ] or TGTTGACA [ ]
-35_signal
WIPO Standard ST.25 (1998), Appendix 2, Table 6 provides for feature keys related to protein sequences.
Table 6: List of Feature Keys Related to Protein Sequences
DescriptionKey different papers report differing sequencesCONFLICT authors report that sequence variants existVARIANT description of sequence variants produced by alternative splicingVARSPLIC site which has been experimentally alteredMUTAGEN post-translational modification of a residueMOD_RES N-terminal or otherACETYLATION generally at the C-terminal of a mature active peptideAMIDATION undetermined N- or C-terminal blocking groupBLOCKED of the N-terminal methionineFORMYLATION of asparagine, aspartic acid, proline or lysineGAMMA-CARBOXYGLUTAMIC
ACID HYDROXYLATION generally of lysine or arginineMETHYLATION of serine, threonine, tyrosine, aspartic acid or histidinePHOSPHORYLATION N-terminal glutamate which has formed an internal cyclic lactamPYRROLIDONE CARBOXYLICACID generally of tyrosineSULFATATION covalent binding of a lipidic moietyLIPID
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myristate group attached through an amide bond to the N-terminal glycine residue of the mature form of a protein or to an internal lysine residue
MYRISTATE
palmitate group attached through a thioether bond to a cysteine residue or through an ester bond to a serine or threonine residue
PALMITATE
farnesyl group attached through a thioether bond to a cysteine residue
FARNESYL
geranyl-geranyl group attached through a thioether bond to a cysteine residue
GERANYL-GERANYL
glycosyl-phosphatidylinositol (GPI) group linked to the alpha-carboxyl group of the C-terminal residue of the mature form of a protein
GPI-ANCHOR
N-terminal cysteine of the mature form of a prokaryotic lipoprotein with an amide-linked fatty acid and a glyceryl group to which two fatty acids are linked by ester linkages
N-ACYL DIGLYCERIDE
disulfide bond; the ‘FROM’ and ‘TO’ endpoints represent the two residues which are linked by an intra-chain disulfide bond; if the
DISULFID
‘FROM’ and ‘TO’ endpoints are identical, the disulfide bond is an interchain one and the description field indicates the nature of the cross-link thiolester bond; the ‘FROM’and ‘TO’endpoints represent the two residues which are linked by the thiolester bond
THIOLEST
thioether bond; the ‘FROM’ and ‘TO’ endpoints represent the two residues which are linked by the thioether bond
THIOETH
glycosylation site; the nature of the carbohydrate (if known) is given in the description field
CARBOHYD
binding site for a metal ion; the description field indicates the nature of the metal
METAL
binding site for any chemical group (co-enzyme, prosthetic group, etc.); the chemical nature of the group is given in the description field
BINDING
extent of a signal sequence (prepeptide)SIGNAL extent of a transit peptide (mitochondrial, chloroplastic, or for a microbody)
TRANSIT
extent of a propeptidePROPEP extent of a polypeptide chain in the mature proteinCHAIN extent of a released active peptidePEPTIDE extent of a domain of interest on the sequence; the nature of that domain is given in the description field
DOMAIN
extent of a calcium-binding regionCA_BIND extent of a DNA-binding regionDNA_BIND extent of a nucleotide phosphate binding region; the nature of the nucleotide phosphate is indicated in the description field
NP_BIND
extent of a transmembrane regionTRANSMEM extent of a zinc finger regionZN_FING
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extent of a similarity with another protein sequence; precise information, relative to that sequence is given in the description field
SIMILAR
extent of an internal sequence repetitionREPEAT secondary structure: Helices, for example, Alpha-helix, 3(10) helix, or Pi-helix
HELIX
secondary structure: Beta-strand, for example, Hydrogen bonded beta-strand, or Residue in an isolated beta-bridge
STRAND
secondary structure: Turns, for example, H-bonded turn (3-turn, 4-turn, or 5-turn)
TURN
amino acid(s) involved in the activity of an enzymeACT_SITE any other interesting site on the sequenceSITE the sequence is known to start with an initiator methionineINIT_MET the residue at an extremity of the sequence is not the terminal residue; if applied to position 1, this signifies that the first position
NON_TER
is not the N-terminus of the complete molecule; if applied to the last position, it signifies that this position is not the C-terminus of the complete molecule; there is no description field for this key non consecutive residues; indicates that two residues in a sequence are not consecutive and that there are a number of unsequenced residues between them
NON_CONS
uncertainties in the sequence; used to describe region(s) of a sequence for which the authors are unsure about the sequence assignment
UNSURE
II. FILING INTERNATIONALLY
The requirements of 37 CFR 1.821 through 37 CFR 1.825 are the result of an effort to harmonize the USPTO requirements with international sequence listing requirements to the extent possible. The requirements of 37 CFR 1.821 through 37 CFR 1.825 substantially correspond to the requirements of WIPO Standard ST.25. PatentIn Version 3.5.1 software (see MPEP § 2430) generates sequence listings that meet all of the requirements of WIPO Standard ST.25. The requirements of 37 CFR 1.821 through 37 CFR 1.825, however, are less stringent than the requirements of WIPO Standard ST.25. Thus, applicants who wish to file in countries which adhere to WIPO Standard ST.25 should consider the following when not using PatentIn Version 3.5.1:
(A) The data in numeric identifier <221> must use selections from Tables 5 and 6 of WIPO Standard ST.25 (2009) to comply with that standard. The terms from these Tables are considered language neutral vocabulary;
(B) Where the sequence listing forming part of the international application contains free text, e.g., free text in numeric identifier <223>, any such free text shall be repeated in the main part of the description in the language thereof. It is recommended that the free text in the language of the main part of the description be put in a specific section of the description called “Sequence Listing Free Text;
(C) A sequence listing filed after the international filing date is generally not considered to be part of the disclosure and usually will not be published as part of the international application publication (see PCT Article 34 and PCT Rules 26 and 91 for exceptions);
(D) Paragraphs 4(v) and 4bis(iv) of WIPO Standard ST.25 (2009) requires the specific wording “the information recorded in electronic form furnished under PCT Rule 13ter is identical to the sequence listing”; and
(E) WIPO Standard ST.25 (2009), paragraph 24, requires a blank line between numeric identifiers
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in the sequence listing when the digit in the first or second position of the numeric identifier changes.
Requirements related to the submission of sequence listings may also differ between filing in the United States and filing internationally. For example, where an international application is filed in paper, the sequence listing part of the international application must also be provided in paper, although the search copy must be filed in electronic form, e.g. on a CD or, in the RO/US, as an ASCII text file via EFS-Web. Also, any tables filed in an international application must be an integral part of the application, i.e., cannot be submitted as a separate file in text format.
2422.01 Nucleotide and/or Amino Acids Disclosures Requiring a Sequence Listing [R-07.2015]
I. LENGTH THRESHOLDS
37 CFR 1.821(a) presents a definition for “nucleotide and/or amino acid sequences.” This definition sets forth limits, in terms of numbers of amino acids and/or numbers of nucleotides, at or above which compliance with the sequence rules is required. Nucleotide and/or amino acid sequences as used in 37 CFR 1.821 through 37 CFR 1.825 are interpreted to mean an unbranched sequence of four or more amino acids or an unbranched sequence of ten or more nucleotides. Branched sequences are specifically excluded from this definition. Sequences with fewer than ten specifically defined nucleotides or four specifically defined amino acids are specifically excluded from this section. “Specifically defined” means those amino acids other than “Xaa” and those nucleotide bases other than “n” defined in accordance with the World Intellectual Property Organization (WIPO) Handbook on Industrial Property Information and Documentation, Standard ST.25: Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in Patent Applications (1998), including Tables 1 through 6 in Appendix 2 (see MPEP § 2422).
The limit of four or more amino acids was established for consistency with limits in place for industry database collections whereas the limit of ten or more nucleotides, while lower than certain industry database limits, was established to
encompass those nucleotide sequences to which the smallest probe will bind in a stable manner.
II. REPRESENTATION OF NUCLEIC ACIDS AND AMINO ACIDS
37 CFR 1.821(a)(1) and 37 CFR 1.821(a)(2) present further definitions for those nucleotide and amino acid sequences that are intended to be embraced by the sequence rules. Situations in which the applicability of the rules is in issue will be resolved on a case-by-case basis.
Nucleotide sequences are further limited to those that can be represented by the symbols set forth in 37 CFR 1.822(b), which incorporates by reference WIPO Standard ST.25 (1998), Appendix 2, Table 1 (see MPEP § 2422). The presence of other than typical 5' to 3' phosphodiester linkages in a nucleotide sequence does not render the rules inapplicable. The Office does not want to exclude linkages of the type commonly found in naturally occurring nucleotides, e.g., eukaryotic end capped sequences.
Amino acid sequences are further limited to those listed in 37 CFR 1.822(b), which incorporates by reference WIPO Standard ST.25 (1998), Appendix 2, Table 3 (see MPEP § 2422), and those L-amino acids that are commonly found in naturally occurring proteins. The presence of one or more D-amino acids in a sequence will exclude that sequence from the scope of the rules. Voluntary compliance is, however, encouraged in these situations; the symbol “Xaa” can be used to represent D-amino acids. The sequence rules embrace “[a]ny peptide or protein that can be expressed as a sequence using the symbols in WIPO Standard ST.25 (1998), Appendix 2, Table 3 in conjunction with a description in the Feature section to describe, for example, modified linkages, cross links and end caps, non-peptidyl bonds, etc.” 37 CFR 1.821(a)(2).
With regard to amino acid sequences, the use of the terms “peptide or protein” implies, however, that the amino acids in a given sequence are linked by at least three consecutive peptide bonds. Accordingly, an amino acid sequence is not excluded from the scope of the rules merely due to the presence of a single non-peptidyl bond. If an amino
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acid sequence can be represented by a string of amino acid abbreviations, with reference, where necessary, to a features table to explain modifications in the sequence, the sequence comes within the scope of the rules. However, the rules are not intended to encompass the subject matter that is generally referred to as synthetic resins.
III. SEQUENCES DISCLOSED IN APPLICATION TEXT
The requirement for compliance in 37 CFR 1.821(c) is directed to “disclosures of nucleotide and/or amino acid sequences.” (Emphasis added.) All sequence information, whether claimed or not, that meets the length thresholds in 37 CFR 1.821(a) is subject to the rules. The goal of the Office is to build a comprehensive database that can be used for, inter alia, the purpose of assessing the prior art. It is therefore essential that all sequence information, whether only disclosed or also claimed, be included in the database. In those instances in which prior art sequences are only referred to in a given application by name and a publication or accession reference, they need not be included as part of the sequence listing, unless the referred-to sequence is “essential material” per MPEP § 608.01(p). However, if the applicant presents the sequence as a string of particular nucleotide bases or amino acids, it is necessary to include the sequence in the sequence listing regardless of whether the applicant considers the sequence to be prior art. In general, any sequence that is disclosed and/or claimed as a sequence, i.e., as a string of particular nucleotide bases or amino acids, and that otherwise meets the criteria of 37 CFR 1.821(a), must be set forth in the sequence listing.
IV. VARIANTS OF A PRESENTED SEQUENCE
It is generally acceptable to present a single, primary sequence in the specification and sequence listing by enumeration of its residues in accordance with the sequence rules (“primary sequence”) and to discuss and/or claim variants of that primary sequence without presenting each variant as a separate sequence in the sequence listing. However, the primary sequence should be annotated in the sequence listing to reflect such variants. By way of example only, the following types of sequence
disclosures would be treated as noted herein by the Office. With respect to a primary sequence and “conservatively modified variants thereof,” the sequences may be described as SEQ ID NO:X (the primary sequence) and “conservatively modified variants thereof,” if desired. With respect to a sequence that “may be deleted at the C-terminus by 1, 2, 3, 4, or 5 residues,” all of the implied variations do not need to be included in the sequence listing. In this latter example, only the sequence without deletions needs to be included in the sequence listing, however applicant is encouraged to annotate the sequence to indicate that deletions have been made at the C-terminus by 1, 2, 3, 4, or 5 residues.
The Office's database will only contain the unmodified sequence. It is strongly recommended that any sequences appearing in the claims, or sequences that are considered essential to understanding the invention, be included in the sequence listing as a separate sequence.
V. SEQUENCE IDENTIFIER
37 CFR 1.821(c) requires that each disclosed nucleic acid or amino acid sequence in the application appear separately in the sequence listing, with each sequence further being assigned a sequence identifier, referred to as “SEQ ID NO.” The sequence identifiers must begin with 1 and increase sequentially by integers. The requirement for sequence identifiers, at a minimum, requires that each sequence be assigned a different number for purposes of identification. However, where practical and for ease of reference, sequences should be presented in the sequence listing in numerical order and in the order in which they are discussed in the application.
37 CFR 1.821(d) requires that where the description or claims of a patent application discuss a sequence that is set forth in the sequence listing, a reference to the sequence identifier of that sequence is required at all occurrences, even if in the text of the description or claims that sequence is set forth by enumeration of its residues. This requirement is also intended to permit references elsewhere in the application (e.g., specification, claims, or drawings) to sequences set forth in the sequence listing by the use of assigned sequence identifiers without
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repeating the sequence. Sequence identifiers can also be used to discuss and/or claim parts or fragments of a properly presented sequence. For example, language such as “residues 14 to 243 of SEQ ID NO:23” is permissible and the fragment need not be separately presented in the sequence listing. Where a sequence that meets the length thresholds of 37 CFR 1.821(a) is disclosed by enumeration of its residues anywhere in an application, it must be presented in a sequence listing in a manner that complies with the requirements of the sequence rules.
The rules do not alter, in any way, the requirements of 35 U.S.C. 112. The implementation of the rules has had no effect on disclosure and/or claiming requirements. The rules, in general, or the use of sequence identifiers throughout the specification and claims, specifically, should not raise any issues under 35 U.S.C. 112(a) or 35 U.S.C. 112(b). The use of sequence identifiers (SEQ ID NO:X) only provides a shorthand way for applicants to discuss and claim their inventions. These identification numbers do not in any way restrict the manner in which an invention can be claimed.
2422.02 The Requirement for Exclusive Conformance; Sequences Presented in Drawing Figures [R-07.2015]
For all applications that disclose nucleic acid and/or amino acid sequences that fall within the definition set forth in 37 CFR 1.821(a), 37 CFR 1.821(b)requires exclusive conformance to the requirements of 37 CFR 1.821 through 37 CFR 1.825 with regard to the manner in which the disclosed nucleic acid and/or amino acid sequences are presented and described. This requirement is necessary to minimize any confusion that could result if more than one format for representing sequence data was employed in a given application.
Pursuant to 37 CFR 1.83(a), sequences that are included in sequence listings should not be duplicated in the drawings. However many significant sequence characteristics may only be demonstrated by a figure. This is especially true in view of the fact that the representation of double stranded nucleotides is not permitted in the sequence listing and many significant nucleotide features, such
as “sticky ends” and the like, may only be shown effectively by reference to a drawing figure. Further, the similarity or homology between/among sequences may only be depicted in an effective manner in a drawing figure. Similarly, drawing figures are recommended for use with amino acid sequences to depict structural features of the corresponding protein, such as finger regions and Kringle regions. The situations discussed herein are given by way of example only and there may be many other reasons for including a sequence in a drawing. However, when a sequence is presented in a drawing, the sequence must still be included in the sequence listing if the sequence falls within the definition set forth in 37 CFR 1.821(a), and the sequence identifier (“SEQ ID NO:X”) must be used, either in the drawing or in the Brief Description of the Drawings.
2422.03 Sequence Listing Submission [R-07.2015]
37 CFR 1.821(c) requires that applications containing disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) contain, as a separate part of the disclosure, a disclosure of the nucleotide and/or amino acid sequences, and associated information, using the format and symbols that are set forth in 37 CFR 1.822 and 37 CFR 1.823. This separate part of the disclosure is referred to as the sequence listing. The sequence listing required pursuant to 37 CFR 1.821(c) may be submitted as an ASCII text file via EFS-Web, on compact disc, as a PDF submitted via EFS-Web, or on paper. The sequence listing required by 37 CFR 1.821(c) is the official copy of the sequence listing. Note that 37 CFR 1.821(e) requires that a copy of the sequence listing referred to in 37 CFR 1.821(c) must also be submitted in computer readable form (CRF) in accordance with the requirements of 37 CFR 1.824.
The Office strongly suggests filing the sequence listing required by 37 CFR 1.821(c) as a text file via EFS-Web. If a new application is filed via EFS-Web with an ASCII text file sequence listing that complies with the requirements of 37 CFR 1.824(a)(2)-(6) and (b), and applicant has not filed a sequence listing in a PDF file, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the computer
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readable form (CRF) required by 37 CFR 1.821(e). Note that the specification must contain a statement in a separate paragraph that incorporates by reference the material in the ASCII text file identifying the name of the ASCII text file, the date of creation, and the size of the ASCII text file in bytes. See MPEP § 2422.03(a) for additional information pertaining to EFS-Web submission of sequence listings.
If submitted on paper, the sequence listing is a separate part of the disclosure which must begin on a new page within the specification. A plurality of sequences may, if feasible, be presented on a single page; the separate presentation of both nucleotide and amino acid sequences on the same page is also permitted.
If the official copy of the sequence listing as required by 37 CFR 1.821(c) is submitted on compact disc, the specification must contain an incorporation by reference of the material on the compact disc in a separate paragraph, identifying each compact disc by the names of the file(s) contained on each of the compact discs, their date of creation and their sizes in bytes (37 CFR 1.52(e)). The total number of compact discs including duplicates and the files on each compact disc shall be specified (37 CFR 1.77(b)(5)). The sequence listing must be a single document, but the document may be split using software designed to divide a file, that is too large to fit on a single compact disc, into multiple concatenated files. If the user breaks up a sequence listing so that it may be submitted on multiple compact discs, the compact discs must be labeled to indicate their order (e.g., “1 of X”, “2 of X”).
The compact disc used to submit the sequence listing may also contain table information if the table has more than 50 pages of text. See 37 CFR 1.823(a)(2) and 1.52(e)(1)(iii). The compact disc and duplicate copy must be labeled “Copy 1” and “Copy 2,” respectively, and a statement stating that the copies are identical must be included. If the two compact discs are not identical, the Office will use the disc labeled “Copy 1” for further processing ( 37 CFR 1.52(e)(4) ). See also MPEP § 608.05.
If the sequence listing under 37 CFR 1.821(c) is submitted on compact disc, applicant is still required to submit a separate CRF of the sequence listing
pursuant to 37 CFR 1.821(e) and 37 CFR 1.824. If the CRF is also submitted on compact disc, applicants will need to submit a total of three copies of the sequence listing (one pursuant to 37 CFR 1.821(c), and two pursuant to 37 CFR 1.821(e)). The compact disc with the CRF of the sequence listing may be identical to the compact disc submitted under 37 CFR 1.821(c) if the latter compact disc includes only the sequence listing (i.e., no additional content, such as tables).
2422.03(a) Sequence Listings Submitted as ASCII Text Files via EFS-Web [R-07.2015]
The EFS-Web Legal Framework (www.uspto.gov/patents-application-process /applying-online/legal-framework-efs-web-06april11) and MPEP § 502.05 provide detailed information pertaining to filing applications and other documents via EFS-Web. The information below is specific to sequence listing submissions via EFS-Web.
Pursuant to the EFS-Web Legal Framework, applicants may submit a sequence listing under 37 CFR 1.821 as an as ASCII text file via EFS-Web instead of on compact disc, provided the specification contains a statement in a separate paragraph (preferably on the first page) that incorporates by reference the material in the ASCII text file identifying the name of the ASCII text file, the date of creation, and the size of the ASCII text file in bytes. The requirements of 37 CFR 1.52(e)(3) - (6) for documents submitted on compact disc are not applicable to sequence listings submitted as ASCII text files via EFS-Web. However, each text file must be in compliance with ASCII and have a file name with a “.txt” extension.
I. ASCII TEXT FILE SUBMITTED VIA EFS-WEB MAY SERVE AS BOTH PAPER COPY AND CRF
It is recommended that a sequence listing be submitted in an ASCII text file via EFS-Web rather than in a PDF file. See subsection IV, below, for information regarding filing an international application (PCT) with a sequence listing text file via EFS-Web.
If a sequence listing ASCII text file submitted via EFS-Web on the application filing date complies
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with the requirements of 37 CFR 1.824(a)(2)-(6) and (b), and applicant has not filed a sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the computer readable form (CRF) required by 37 CFR 1.821(e).Thus, the following are not required and should not be submitted: (1) a second copy of the sequence listing in a PDF file; (2) a statement under 37 CFR 1.821(f) (indicating that the paper copy and CRF copy of the sequence listing are identican( � and (3) a request to use a compliant computer readable form of the sequence listing that is already on file for another application pursuant to 37 CFR 1.821(e). If such a request is filed, the USPTO will not carry out the request but will use the sequence listing submitted in the ASCII text file with the application via EFS-Web. See MPEP § 2422.05. Checker software that may be used to check a sequence listing for compliance with the requirements of 37 CFR 1.824 is available on t h e U S P T O w e b s i t e a t www.uspto.gov/patents-getting-started/patent-basics/ types-patent-applications/utility-patent/checker-version-446. The User Notes on the Checker website should be consulted for an explanation of errors that are not indicated, and content that is not verified, by the Checker software.
If a user submits a sequence listing (under 37 CFR 1.821(c) and (e)) as an ASCII text file via EFS-Web in response to a requirement under 37 CFR 1.821(g) or (h), the sequence listing text file must be accompanied by a statement that the submission does not include any new matter which goes beyond the disclosure of the application as filed. In addition, if a user submits an amendment to, or a replacement of, a sequence listing (under 37 CFR 1.821(c)and (e)) as an ASCII text file via EFS-Web, the sequence listing text file must be accompanied by: (1) a statement that the submission does not include any new matter, and (2) a statement that indicates support for the amendment in the application, as filed. See 37 CFR 1.825.
Submission of the sequence listing in a PDF file on the application filing date is not recommended. Applicant must still provide the CRF required by 37 CFR 1.821(e), and the sequence listing in the PDF file will not be excluded when determining the application size fee. The USPTO prefers the
submission of a sequence listing in an ASCII text file via EFS-Web on the application filing date because as stated above, if applicant has not filed a second copy of the sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the CRF required by 37 CFR 1.821(e). Any sequence listing submitted in PDF format (or on paper) on the application filing date is treated as the paper copy required by 37 CFR 1.821(c). If applicant submits a sequence listing in both a PDF file and an ASCII text file via EFS-Web on the application filing date, a statement that the sequence listing content of the PDF copy and the ASCII text file copy are identical is required. In situations where applicant files the sequence listing in PDF format and requests the use of the CRF of another application under 37 CFR 1.821(e), applicant must submit a letter and request in compliance with 37 CFR 1.821(e) and a statement that the PDF copy filed in the new application is identical to the CRF filed in the other application. See MPEP § 2422.05.
II. APPLICATION SIZE FEE
Any sequence listing submitted as an ASCII text file via EFS-Web that is otherwise in compliance with 37 CFR 1.52(e) and37 CFR 1.824(a)(2)-(6) and (b) will be excluded when determining the application size fee required by 37 CFR 1.16(s) or 1.492(j) as per 37 CFR 1.52(f)(1). A sequence listing submitted as a PDF file via EFS-Web will not be excluded when determining the application size fee.
Regarding a table submitted as an ASCII text file via EFS-Web that is part of the specification or drawings, each three kilobytes of content submitted will be counted as a sheet of paper for purposes of determining the application size fee required by 37 CFR 1.16(s) or 1.492(j). Each table should be submitted as a separate text file. Further, the file name for each table should indicate which table is contained therein.
See subsection IV, below, for additional information regarding application size fees in an international application (PCT).
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III. SIZE LIMIT FOR TEXT FILES
One hundred (100) megabytes is the size limit for sequence listing text files submitted via EFS-Web. If a user wishes to submit an electronic copy of a sequence listing text file that exceeds 100 megabytes, it is recommended that the user file the application without the sequence listing using EFS-Web to obtain the application number and confirmation number, and then file the sequence listing on compact disc in accordance with 37 CFR 1.52(e) on the same day by using Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or hand delivery, in order to secure the same filing date for all parts of the application. Alternatively, a user may submit the application on paper and include the electronic copy of the sequence listing text file on compact disc in accordance with 37 CFR 1.52(e) . Sequence listing text files may not be partitioned into multiple files for filing via EFS-Web as the EFS-Web system is not currently capable of handling such submissions. If the sequence listing is filed on a compact disc, the sequence listing must be a single document, but the document may be split using software designed to divide a file, that is too large to fit on a single compact disc, into multiple concatenated files. If the user breaks up a sequence listing so that it may be submitted on multiple compact discs, the compact discs must be labeled to indicate their order (e.g., “1 of X”, “2 of X”).
See subsection IV.B, below, for information regarding submission of a sequence listing text file that exceeds 100 megabytes in an international application (PCT) filed via EFS-Web.
For all other file types, 25 megabytes is the size limit. If a user wishes to submit a table that is larger than 25 megabytes, it is recommended that the electronic copy be submitted on compact disc via Priority Mail Express Mail® from the USPS in accordance with 37 CFR 1.52(f)(1) on the date of the corresponding EFS-Web filing in accordance with 37 CFR 1.52(e) if the user wishes the electronic copy to be considered to be part of the application as filed. Alternatively, the user may submit the application in paper and include the electronic copies on compact disc in accordance with 37 CFR 1.52(e). Another alternative would be for the user to break up a computer program listing or table file that is
larger than 25 megabytes into multiple files that are no larger than 25 megabytes each and submit those smaller files via EFS-Web. If the user chooses to break up a table file so that it may be submitted electronically, the file names must indicate their order (e.g., “1 of X”, “2 of X”).
See subsection IV.C, below, for information regarding submission of tables in an international application (PCT) filed via EFS-Web.
IV. FILING SEQUENCE LISTINGS IN INTERNATIONAL APPLICATIONS (PCT) VIA EFS-WEB
A. Sequence Listing Must Be Presented as a Separate Part of the Application
Under PCT Rule 5.2(a), the sequence listing must always be presented as a separate part of the description. When filing an international application (PCT) using EFS-Web, the sequence listing part of the description may be submitted either as a single ASCII text file with a ".txt" extension (e.g., "seqlist.txt") or as a PDF file. Note that 100 megabytes is the size limit for submitting a sequence listing text file via EFS-Web. See subsection IV.B, below.
If the sequence listing is submitted as an ASCII text file, applicant need not and should not submit any additional copies. The single ASCII text file is preferred because the ASCII text file will serve both as the sequence listing part of the description under PCT Rule 5.2 and the electronic form under PCT Rule 13 ter.1(a) in the absence of a PDF sequence listing file. The check list of the PCT Request provided via EFS-Web together with the international application (PCT) must indicate that the sequence listing forms part of the international application. Furthermore, the statement as set forth in paragraph 4(v) of the AI Annex C (Administrative Instructions under the PCT, Annex C), that “the information recorded in electronic form furnished under PCT Rule 13 ter is identical to the sequence listing as contained in the international application,” is not required. Also, the sequence listing in an ASCII text file will not be taken into account when calculating the application sheet count, i.e., no excess
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sheet fee will be required for the sequence listing text file.
Submission of the sequence listing part of the description in a PDF file is not recommended because the applicant would also be required to supply a copy of the sequence listing in an ASCII text file for purposes of international search and/or international preliminary examination in accordance with paragraph 40 of AI Annex C. When a sequence listing is filed via EFS-Web in a new PCT international application in both a PDF file and an ASCII text file, the PDF copy of the sequence listing will be considered to form part of the application and the ASCII text file will be used for search purposes and will be transmitted to the International Bureau with the record copy.
The calculation of the international filing fee for an international application (PCT), including a sequence listing, filed via EFS-Web is determined based on the type of sequence listing file. A sequence listing filed in an ASCII text file will not be included in the sheet count of the international application (PCT). A sequence listing filed in a PDF file will be included in the sheet count of the international application (PCT). Therefore, the sheet count for an EFS-Web filed international application (PCT) containing both a PDF file and a text file sequence listing will be calculated to include the number of sheets of the PDF sequence listing.
B. File Size and Quantity Limits
One hundred (100) megabytes is the size limit for sequence listing text files submitted via EFS-Web. Sequence listing text files must not be partitioned into multiple files for filing via EFS-Web as the EFS-Web electronic filing system is not currently capable of handling such submissions. For all other file types EFS-Web is currently not capable of accepting files that are larger than 25 megabytes. Additionally, a single EFS-Web submission may include no more than 60 electronic files. Note that regarding the 60 electronic file limit, an applicant may upload and validate in sets of up to 20 files each, with a limit of three sets of 20. If applicant chooses to divide a file into multiple parts using the multi-doc feature, each part is counted as one file.
The need to submit unusually large sequence listings and/or numerous electronic files may prevent applicant from making a complete international application (PCT) filing in a single EFS-Web submission. Applicant may use EFS-Web to file part of the international application (PCT) and to obtain the international application (PCT) number and the confirmation number, and then file the remainder of the international application (PCT) on the same day as one or more follow-on submissions using EFS-Web, in order to secure the same filing date for all parts of the international application (PCT). However, applicant is not permitted to file part of the international application (PCT) electronically via EFS-Web, and then file the remainder of the international application (PCT) on paper to secure a filing date of all parts of the international application (PCT).
In the situation where applicant needs to file a sequence listing that is over one hundred (100) megabytes, applicant may use EFS-Web to file the international application (PCT) without the sequence listing to obtain the international application (PCT) number and the confirmation number, and then file the sequence listing on compact discs on the same day by using Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or hand delivery, in order to secure the same filing date for all parts of the international application (PCT). Priority Mail ® from the USPS and hand-carried submissions must not contain PDF files and must fully comply with the guidelines for filing a sequence listing on electronic media. The check list of the PCT Request provided via EFS-Web together with the international application (PCT) must indicate that the sequence listing part of the description will be filed separately on physical data carrier(s), on the same day and in the form of an Annex C/ST.25 text file. The sequence listing must be a single document, but the document may be split using software designed to divide a file, that is too large to fit on a single compact disc, into multiple concatenated files. If the user breaks up a sequence listing into multiple concatenated files so that it may be submitted on multiple compact discs, the compact discs must be labeled to indicate their order (e.g., “1 of X”, “2 of X”).
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C. Tables Related to a Sequence Listing
Tables related to a sequence listing must be an integral part of the description of the international application (PCT), and must not be included in the sequence listing part or the drawing part. Such tables will be taken into account when calculating the application sheet count, and excess sheet fees may be required. When applicant submits tables related to a sequence listing in an international application (PCT) via EFS-Web, the tables must be in a PDF file. If applicant submits tables related to a sequence listing in a text file, such tables will not be accepted as part of the international application (PCT). For more information, see Sequence Listings and Tables Related Thereto in International Applications Filed in the United States Receiving Office, 1344 Off. Gaz. Pat. Office 50 (July 7, 2009). If applicant submits tables related to a sequence listing in a text file, such tables will not be accepted as part of the international application (PCT).
2422.04 The Requirement for a Computer Readable Copy of the Official Copy of the Sequence Listing [R-07.2015]
37 CFR 1.821(e) requires the submission of a copy of the sequence listing in computer readable form. The computer readable form may be submitted on the electronic media permitted by 37 CFR 1.824, or may be submitted as an ASCII text file via EFS-Web. The information on the computer readable form will be entered into the Office’s database for searching and printing nucleotide and amino acid sequences. This electronic database will also enable the Office to provide published sequence data, in electronic form, to the National Center for Biotechnology Information (NCBI) for publication in GenBank, and enable NCBI to exchange data with the DNA Data Bank of Japan (DDBJ) and the European Bioinformatics Institute (EBI). It should be noted that the Office’s database complies with the confidentiality requirement imposed by 35 U.S.C. 122. Unpublished pending application sequences are maintained in the database separately from published or patented sequences. That is, the Office will not exchange or make public any information on any sequence until the patent application containing that information is published or matures into a patent, or as otherwise allowed by 35 U.S.C. 122.
The Office may permit correction of the official copy of the sequence listing submitted pursuant to 37 CFR 1.821(c), whether on paper or compact disc, at the least, during the pendency of a given application by reference to the computer readable copy thereof submitted pursuant to 37 CFR 1.821(e) if both the official copy and computer readable form were submitted at the time of filing of the application and the totality of the circumstances otherwise substantiate the proposed correction. A mere discrepancy between the official copy and the computer readable form may not, in and of itself, be sufficient to justify a proposed correction. In this regard, the Office will assume that the computer readable form has been incorporated by reference into the application when the official copy and computer readable form were submitted at the time of filing of the application. The Office will attempt to accommodate or address all correction issues, but it must be kept in mind that the real burden rests with the applicant to ensure that any discrepancies between the official copy and the computer readable form are eliminated or minimized. Applicants should be aware that there will be instances where the applicant may have to suffer the consequences of any discrepancies between the two. If a new application is filed via EFS-Web with an ASCII text file sequence listing that complies with the requirements of 37 CFR 1.824(a)(2) - (6) and 37 CFR 1.824(b), and applicant has not filed a sequence listing in a PDF file, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and CRF required by 37 CFR 1.821(e), eliminating any chance for discrepancies between the official copy and the CRF.
The Office does not desire to be bound by a requirement to permanently preserve computer readable forms for support, priority or correction purposes. For example, the Office will make corrections, where appropriate, by reference to the CRF as long as the CRF is still available to the Office. However, once use of the CRF by the Office for processing has ended, i.e., once the Office has entered the data contained on the computer readable form into the appropriate database, the Office does
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not intend to further preserve the CRF submitted by the applicant.
2422.05 Request for Transfer of Computer Readable Form [R-07.2015]
37 CFR 1.821 Nucleotide and/or amino acid sequence disclosures in patent applications.
*****
(e) A copy of the “Sequence Listing” referred to in paragraph (c) of this section must also be submitted in computer readable form (CRF) in accordance with the requirements of § 1.824. The computer readable form must be a copy of the “Sequence Listing” and may not be retained as a part of the patent application file. If the computer readable form of a new application is to be identical with the computer readable form of another application of the applicant on file in the Office, reference may be made to the other application and computer readable form in lieu of filing a duplicate computer readable form in the new application if the computer readable form in the other application was compliant with all of the requirements of this subpart. The new application must be accompanied by a letter making such reference to the other application and computer readable form, both of which shall be completely identified. In the new application, applicant must also request the use of the compliant computer readable “Sequence Listing” that is already on file for the other application and must state that the paper or compact disc copy of the “Sequence Listing” in the new application is identical to the computer readable copy filed for the other application.
*****
Where the computer readable form (CRF) of the sequence listing of a new application is to be identical with the CRF of another application of the applicant on file in the Office, 37 CFR 1.821(e) provides a mechanism for applicant to request a transfer of the CRF from the application already on file to the new application in limited circumstances. However, the Office strongly recommends that applicant submit an ASCII text copy of a sequence listing in the new application rather than request a transfer of a previously filed CRF to avoid the need to file a PDF or paper copy of the sequence listing (which is included in the calculation of the application size fee) and to avoid delays that may be introduced by defective transfer requests. Applicant may be able to retrieve a copy of the sequence listing in ASCII text format in another application of the applicant from applicant's records, public or private PAIR via the Supplemental Content Tab, or from PATENTSCOPE (WIPO website) when provided in an international application.
I. REQUIREMENTS OF A TRANSFER REQUEST
First, the application in which the request for a transfer is submitted must have been filed with (or include via an amendment that does not add new matter) a paper copy or PDF of a sequence listing. Second, the CRF of the previous application must be identical to the sequence listing contained in the new application and the request for transfer must include a statement to this effect. Note that applicant may only request transfer of a CRF that complies with 37 CFR 1.824(a)(2) - (6) and 37 CFR 1.824(b), (i.e., is a compliant sequence listing ASCII text file). Third, the previous application and the CRF to be transferred must be completely and clearly identified in the transfer request. Necessary identifying information includes the application number, filing date of the application, and submission date of the CRF that is to be transferred.
F o r m P T O / S B / 9 3 (www.uspto.gov/forms/sb0093.pdf) should be used to request a transfer of a CRF under 37 CFR 1.821(e) to facilitate processing of the request.
If a user submits a sequence listing ASCII text file via EFS-Web and concurrently requests the Office to use a compliant computer readable sequence listing that is already on file for another application pursuant to 37 CFR 1.821(e), the Office will not carry out the request but will use the sequence listing submitted with the application as originally filed via EFS-Web.
II. REPLY TO A DEFECTIVE TRANSFER REQUEST NOTICE
Applicant's reply to a notice of a defective transfer request preferably includes a CRF (an ASCII text file submitted via EFS-Web or on compact disc), however a new transfer request and correction of the noted deficiencies is also permitted. As an example, if applicant requested transfer of a CRF into a new application that does not include a sequence listing and such request is defective, the response to a defective transfer request notice may be a CRF of the sequence listing. If it is not, then the response must include a new transfer request, a PDF or paper
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§ 2422.05BIOTECHNOLOGY
copy of the sequence listing, and an amendment entering the sequence listing in the application.
2422.06 Requirement for Statement Regarding Content of Official and Computer Readable Copies of Sequence Listing [R-07.2015]
37 CFR 1.821(f) requires that the official sequence listing (submitted on paper or compact disc pursuant to 37 CFR 1.821(c)) and computer readable copies of the sequence listing (submitted pursuant to 37 CFR 1.821(e)) be accompanied by a statement that the content of the official and computer readable copies are the same, at the time when the computer readable form is submitted. Such a statement may be made by a registered practitioner, the applicant, an inventor, or the person who actually compares the sequence data on behalf of the aforementioned. See MPEP § 2428 for further information and Sample Statements.
Note that if the sequence listing is filed in a new application as an ASCII text file via EFS-Web, and applicant has not filed a sequence listing in a PDF file, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the computer readable form (CRF) required by 37 CFR 1.821(e). See MPEP § 2422.03(a), subsections I and IV, for additional information. Thus, the following are not required and should not be submitted: (1) a second copy of the sequence listing in a PDF file; and (2) a statement under 37 CFR 1.821(f) (indicating that the paper copy and CRF copy of the sequence listing are identical).
2422.07 Requirements for Compliance, Statements Regarding New Matter, and Sanctions for Failure to Comply [R-07.2015]
37 CFR 1.821(g) requires compliance with the requirements of 37 CFR 1.821(b) through (f), as discussed above, if they are not satisfied at the time of filing under 35 U.S.C. 111(a) or at the time of entering the national stage of an international application under 35 U.S.C. 371, within the period of time set in a notice requiring compliance. Failure to comply will result in the abandonment of the application. When applicant files an amendment to
comply with the requirements of 37 CFR 1.821(g) and that amendment adds or amends a compact disc(s) or ASCII text file submitted via EFS-Web, applicant is required to update or insert in the specification an appropriate incorporation by reference statement describing the compact disc and the files contained thereon or the description of the ASCII text file submitted via EFS-Web. See 37 CFR 1.77(b)(5) and 37 CFR 1.52(e)(5). Submissions in reply to requirements under 37 CFR 1.821(g) must be accompanied by a statement that the submission includes no new matter. Such a statement may be made by a registered practitioner, the applicant, an inventor, or the person who actually compares the sequence data on behalf of the aforementioned. Extensions of time in which to reply to a requirement under this paragraph are available pursuant to 37 CFR 1.136. Note, however, that patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013, may be subject to reductions in patent terms adjustment pursuant to 37 CFR 1.704(c)(13) if they are not in condition for examination within eight months from the filing date or date of commencement, respectively. “In condition for examination” includes compliance with 37 CFR 1.821 through 1.825 (see 37 CFR 1.704(f)).
Provisional applications filed under 35 U.S.C. 111(b) need not comply with 37 CFR 1.821 through 1.825, however, applicants are encouraged to file a sequence listing as defined in 37 CFR 1.821(c) for ease of identification of the sequence information contained in the provisional application.
If any of the requirements of 37 CFR 1.821(b) - (f) are not satisfied at the time of filing an international application under the Patent Cooperation Treaty (PCT), which application is to be searched by the United States International Searching Authority or examined by the United States International Preliminary Examining Authority, applicant will be sent a notice necessitating compliance with the requirements within a prescribed time period. Submissions in reply to requirements under this paragraph must be accompanied by a statement that the submission does not include matter which goes beyond the disclosure in the international application as filed. Such a statement may be made by a
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2422.06
registered practitioner, the applicant, an inventor, or the person who actually compares the sequence data on behalf of the aforementioned. International applications that fail to comply with any of the requirements of 37 CFR 1.821(b)- (f) will be searched and/or examined to the extent possible without the benefit of the information in computer readable form. See PCT Administrative Instructions Section 513(c).
The requirement to submit a statement that a submission in reply to the requirements of this section does not include new matter or matter which goes beyond the disclosure in the application as filed is not the first instance in which the applicant has been required to ensure that there is not new matter upon amendment. The requirement is analogous to that found in 37 CFR 1.125 regarding substitute specifications. When a substitute specification is required because the number or nature of amendments would make it difficult to examine the application, the applicant must include a statement that the substitute specification includes no new matter. The necessity of requiring a substitute sequence listing, or pages thereof, is similar to the necessity of requiring a substitute specification and, likewise, the burden is on the applicant to ensure that no new matter is added. Applicants have a duty to comply with the statutory prohibition (35 U.S.C. 132 and 35 U.S.C. 251) against the introduction of new matter.
The correction of errors in sequencing or any other errors that are made in describing an invention are subject to the statutory prohibition (35 U.S.C. 132 and 35 U.S.C. 251) against the introduction of new matter.
2422.08 Presumptions Regarding Compliance [R-08.2012]
Neither the presence nor absence of information which is not required under the sequence rules will create a presumption that such information is necessary to satisfy any of the requirements of 35 U.S.C. 112. Further, the grant of a patent on an application that is subject to 37 CFR 1.821 through 37 CFR 1.825 constitutes a presumption that the
granted patent complies with the requirements of these rules.
2422.09 Box Sequence; Hand Delivery of Sequence Listings and Computer Readable Forms [R-07.2015]
To facilitate administrative processing of all papers and compact discs associated with sequence rule compliance, all computer readable forms, compact discs, fees, and papers accompanying them filed in the Office should be marked “Box SEQUENCE.”
Correspondence relating to the sequence rules may also be hand-delivered to the Customer Service Window. In cases of hand delivery to the Customer Service Window, the computer readable form should be placed in a protective mailer labeled with at least the application number, if available. The labeling requirements of 37 CFR 1.52(e) and 1.824(a)(6) must also be complied with. The use of staples and clips, if any, should be confined to carefully attaching the mailer to the submitted papers without contact or compression of the media. In no situations should additional or complimentary electronic copies be delivered to examiners or other Office personnel.
2423 Symbols and Format To Be Used for Nucleotide and/orAminoAcid Sequence Data [R-08.2012]
37 CFR 1.822 Symbols and format to be used for nucleotide and/or amino acid sequence data.
(a) The symbols and format to be used for nucleotide and/or amino acid sequence data shall conform to the requirements of paragraphs (b) through (e) of this section.
(b) The code for representing the nucleotide and/or amino acid sequence characters shall conform to the code set forth in the tables in WIPO Standard ST.25 (1998), Appendix 2, Tables 1 and 3. This incorporation by reference was approved by the Director of the Federal Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of ST.25 may be obtained from the World Intellectual Property Organization; 34 chemin des Colombettes; 1211 Geneva 20 Switzerland. Copies of ST.25 may be inspected at the Patent Search Room; Crystal Plaza 3, Lobby Level; 2021 South Clark Place; Arlington, VA 22202. Copies may also be inspected at the Office of the Federal Register, 800 North Capitol Street, NW, Suite 700, Washington, DC. No code other than that specified in these sections shall be used in nucleotide and amino acid sequences. A modified base or modified or unusual amino acid may be presented in a given sequence as the corresponding unmodified base or amino acid if the modified base or modified or unusual amino acid is one
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§ 2423BIOTECHNOLOGY
of those listed in WIPO Standard ST.25 (1998), Appendix 2, Tables 2 and 4, and the modification is also set forth in the Feature section. Otherwise, each occurrence of a base or amino acid not appearing in WIPO Standard ST.25 (1998), Appendix 2, Tables 1 and 3, shall be listed in a given sequence as “n” or “Xaa,” respectively, with further information, as appropriate, given in the Feature section, preferably by including one or more feature keys listed in WIPO Standard ST.25 (1998), Appendix 2, Tables 5 and 6.
(c) Format representation of nucleotides.
(1) A nucleotide sequence shall be listed using the lower-case letter for representing the one-letter code for the nucleotide bases set forth in WIPO Standard ST.25 (1998), Appendix 2, Table 1.
(2) The bases in a nucleotide sequence (including introns) shall be listed in groups of 10 bases except in the coding parts of the sequence. Leftover bases, fewer than 10 in number, at the end of noncoding parts of a sequence shall be grouped together and separated from adjacent groups of 10 or 3 bases by a space.
(3) The bases in the coding parts of a nucleotide sequence shall be listed as triplets (codons). The amino acids corresponding to the codons in the coding parts of a nucleotide sequence shall be typed immediately below the corresponding codons. Where a codon spans an intron, the amino acid symbol shall be typed below the portion of the codon containing two nucleotides.
(4) A nucleotide sequence shall be listed with a maximum of 16 codons or 60 bases per line, with a space provided between each codon or group of 10 bases.
(5) A nucleotide sequence shall be presented, only by a single strand, in the 5 to 3 direction, from left to right.
(6) The enumeration of nucleotide bases shall start at the first base of the sequence with number 1. The enumeration shall be continuous through the whole sequence in the direction 5 to 3. The enumeration shall be marked in the right margin, next to the line containing the one-letter codes for the bases, and giving the number of the last base of that line.
(7) For those nucleotide sequences that are circular in configuration, the enumeration method set forth in paragraph (c)(6) of this section remains applicable with the exception that the designation of the first base of the nucleotide sequence may be made at the option of the applicant.
(d) Representation of amino acids.
(1) The amino acids in a protein or peptide sequence shall be listed using the three-letter abbreviation with the first letter as an upper case character, as in WIPO Standard ST.25 (1998), Appendix 2, Table 3.
(2) A protein or peptide sequence shall be listed with a maximum of 16 amino acids per line, with a space provided between each amino acid.
(3) An amino acid sequence shall be presented in the amino to carboxy direction, from left to right, and the amino and carboxy groups shall not be presented in the sequence.
(4) The enumeration of amino acids may start at the first amino acid of the first mature protein, with the number 1. When presented, the amino acids preceding the mature protein, e.g., pre-sequences, pro-sequences, pre-pro-sequences and signal sequences, shall have negative numbers, counting backwards starting with the amino acid next to number 1. Otherwise, the enumeration of amino acids shall start at the first amino acid at the amino terminal as number 1. It shall be marked below the sequence every 5 amino acids. The enumeration method for amino acid sequences that is set forth in this section remains applicable for amino acid sequences that are circular in configuration, with the exception that the designation of the first amino acid of the sequence may be made at the option of the applicant.
(5) An amino acid sequence that contains internal terminator symbols ( e.g., “Ter”, “*”, or “.”, etc.) may not be represented as a single amino acid sequence, but shall be presented as separate amino acid sequences.
(e) A sequence with a gap or gaps shall be presented as a plurality of separate sequences, with separate sequence identifiers, with the number of separate sequences being equal in number to the number of continuous strings of sequence data. A sequence that is made up of one or more noncontiguous segments of a larger sequence or segments from different sequences shall be presented as a separate sequence.
Tables 1-6 of WIPO Standard ST.25 (1998), Appendix 2, are reproduced in MPEP § 2422.
2423.01 Format and Symbols To Be Used in Sequence Listings [R-07.2015]
37 CFR 1.822 sets forth the format and symbols to be used for listing nucleotide and/or amino acid sequence data. The symbols for representing the nucleotide and/or amino acid characters in the sequences are set forth in the tables of WIPO Standard ST.25 (1998), Appendix 2, Tables 1 and 3. See MPEP § 2422. No other symbols shall be used in nucleotide and amino acid sequences. The “modified base” and “modified and unusual amino acid” symbols appearing in WIPO Standard ST.25 (1998), Appendix 2, Tables 2 and 4 (see 37 CFR 1.822 and MPEP § 2422) are not to be set forth in the sequences recited in the sequence listing. However, “modified base” or “modified and unusual amino acid” symbols may be used in the written description and/or drawing portions of the specification. To properly enter notations for modified bases or amino acids in the sequence listing, the Feature section of the sequence listing should be used. That is, a modified base or amino acid may be presented in a given sequence as the
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2423.01
corresponding unmodified base or amino acid if the modified base or amino acid is one of those listed in WIPO Standard ST.25 (1998), Appendix 2, Table 2 or 4 and the modification is also set forth in the Feature section of the sequence listing. Otherwise, all nucleotide bases or amino acids not appearing in WIPO Standard ST.25 (1998), Appendix 2, Table 1 or 3 must be listed in a given sequence as “n” or “Xaa,” respectively, with further information given in the Feature section of the sequence listing. See 37 CFR 1.822(b).
In 37 CFR 1.822(b) and 37 CFR 1.822(d), the use of three-letter symbols for amino acids is required in the sequence listing. The three-letter symbols must be presented using the upper case for the first character and lower case for the remaining two characters. Applicants are encouraged to use the three-letter symbols for amino acids throughout the disclosure, instead of the one-letter symbols, for easier reading of the application and any patent issuing therefrom.
37 CFR 1.822(c) through (e) set forth the format for presenting sequence data. These paragraphs set forth the manner in which the characters in sequences are to be grouped, spaced, presented and numbered.
2423.02 Depiction of Coding Regions [R-07.2015]
If applicant chooses to depict coding regions, 37 CFR 1.822(c)(3) requires the amino acids corresponding to the codons in the coding parts of a nucleotide sequence to be typed immediately below the corresponding codons. Further, in 37 CFR 1.822(c)(3), the situation in which a codon spans an intron has been addressed. In those situations, the “amino acid symbol shall be typed below the portion of the codon containing two nucleotides.” This requirement clarifies the representation of an amino acid that corresponds to a codon that spans an intron.
It should be noted that the sequence rules do not, in any way, require the depiction of coding regions or the amino acids corresponding to the codons in those coding regions. 37 CFR 1.822(d) only requires that where amino acids corresponding to the codons in the coding parts of a nucleotide sequence are depicted, they must be depicted below the
corresponding codons. There is absolutely no requirement in the rules to depict coding regions. However, when the coding parts of a nucleotide sequence and their corresponding amino acids have been enumerated by their residues, those amino acids must also be set forth as a separate sequence if the amino acid sequence meets the length thresholds in 37 CFR 1.821(a).
2423.03 Presentation and Numbering of Sequences [R-07.2015]
37 CFR 1.822(c)(5) provides that nucleotide sequences shall only be represented by a single strand, in the 5 to 3 direction, from left to right. That is, double stranded nucleotides shall not be represented in the sequence listing. A double stranded nucleotide may be represented as two single stranded nucleotides, and any relationship between the two may be shown in the drawings.
The procedures for presenting and numbering amino acid sequences are set forth in 37 CFR 1.822(d). Two alternatives are presented for numbering amino acid sequences. Amino acid sequences may be numbered with respect to the identification of the first amino acid of the first mature protein or with respect to the first amino acid appearing at the amino terminal. The numbering procedure for nucleotides is set forth in 37 CFR 1.822(c)(6). Sequences that are circular in configuration are intended to be encompassed by these rules, and the numbering procedures described above remain applicable with the exception that the designation of the first nucleotide base or amino acid of the sequence may be made at the option of the applicant. See 37 CFR 1.822(c)(7) and (d)(4).
In 37 CFR 1.822(e) the procedures for presenting and numbering hybrid and gapped sequences are set forth. A sequence with a gap or gaps shall be presented as a plurality of separate sequences, each having separate sequence identification numbers, with the number of separate sequences being equal in number to the number of continuous strings of sequence data. The term “gap” is not intended to embrace a gap or gaps that is/are introduced into the presentation of otherwise continuous sequence information in, e.g., a drawing figure, to show alignments or similarities with other sequences. The
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§ 2423.03BIOTECHNOLOGY
“gaps” referred to in this section are gaps representing unknown or undisclosed regions in a sequence between regions that are known or disclosed. On the other hand, a sequence that contains one or more regions of contiguous “n” or “Xaa” residues, wherein the exact number of “n” or “Xaa” residues in each region is disclosed, must be included in the sequence listing as a single sequence with a single sequence identification number. A sequence disclosed by enumeration of its residues that is constructed as a single continuous sequence from one or more non-contiguous segments of a larger sequence or segments from different sequences must be included in the sequence listing as a single sequence with a single sequence identification number. A fragment of a larger sequence need not be enumerated by its residues, and may be referred to in the specification, claims or drawings as, e.g., “residues 2 through 33 of SEQ ID NO:12,” assuming that SEQ ID NO:12 has been properly included in the sequence listing.
2424 Requirements for Nucleotide and/or Amino Acid Sequences as Part of the Application Papers [R-08.2012]
37 CFR 1.823 Requirements for nucleotide and/or amino acid sequences as part of the application.
(a)(1) If the “Sequence Listing” required by § 1.821(c) is submitted on paper: The “Sequence Listing,” setting forth the
nucleotide and/or amino acid sequence and associated information in accordance with paragraph (b) of this section, must begin on a new page and must be titled “Sequence Listing.” The pages of the “Sequence Listing” preferably should be numbered independently of the numbering of the remainder of the application. Each page of the “Sequence Listing” shall contain no more than 66 lines and each line shall contain no more than 72 characters. A fixed-width font should be used exclusively throughout the “Sequence Listing.”
(2) If the “Sequence Listing” required by § 1.821(c) is submitted on compact disc: The “Sequence Listing” must be submitted on a compact disc in compliance with § 1.52(e). The compact disc may also contain table information if the application contains table information that may be submitted on a compact disc (§ 1.52(e)(1)(iii)). The specification must contain an incorporation-by-reference of the Sequence Listing as required by § 1.52(e)(5). The presentation of the “Sequence Listing” and other materials on compact disc under § 1.821(c) does not substitute for the Computer Readable Form that must be submitted on disk, compact disc, or tape in accordance with § 1.824.
(b) The “Sequence Listing” shall, except as otherwise indicated, include the actual nucleotide and/or amino acid sequence, the numeric identifiers and their accompanying information as shown in the following table. The numeric identifier shall be used only in the “Sequence Listing.” The order and presentation of the items of information in the “Sequence Listing” shall conform to the arrangement given below. Each item of information shall begin on a new line and shall begin with the numeric identifier enclosed in angle brackets as shown. The submission of those items of information designated with an “M” is mandatory. The submission of those items of information designated with an “O” is optional. Numeric identifiers <110> through <170> shall only be set forth at the beginning of the “Sequence Listing.” The following table illustrates the numeric identifiers.
Mandatory (M) or Optional (O)Comments and formatDefinitionNumeric Identifier
M.Preferably max. of 10 names; one name per line; preferable format: Surname, Other Names and/or Initials.
Applicant......................<110>
M..............................................................Title of Invention..........<120> M when filed prior to assignment or appl. number
Personal file reference.........................File Reference...............<130>
M, if available.Specify as: US 07/999,999 or PCT/US96/99999.
Current Application Number.
<140>
M, if available.Specify as: yyyy-mm-dd......................Current Filing Date.......<141> M, if applicable include priority documents under 35 U.S.C. 119 and 120
Specify as: US 07/999,999 or PCT/US96/99999.
Prior Application Number.
<150>
M, if applicableSpecify as: yyyy-mm-dd .....................Prior Application Filing Date.
<151>
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2424
Mandatory (M) or Optional (O)Comments and formatDefinitionNumeric Identifier
M.Count includes total number of SEQ ID NOs.................................................
Number of SEQ ID NOs.
<160>
O.Name of software used to create the Sequence Listing.
Software.......................<170>
M.Response shall be an integer representing the SEQ ID NO shown.
SEQ ID NO:#:..............<210>
M.Respond with an integer expressing the number of bases or amino acid residues.
Length...........................<211>
M.Whether presented sequence molecule is DNA, RNA, or PRT (protein). If a
Type..............................<212>
nucleotide sequence contains both DNA and RNA fragments, the type shall be “DNA.” In addition, the combined DNA/ RNA molecule shall be further described in the <220> to <223> feature section.
M.Scientific name, i.e. Genus/ species, Unknown or Artificial Sequence. In
Organism......................<213>
addition, the “Unknown” or “Artificial Sequence” organisms shall be further described in the <220> to <223> feature section.
M, under the following conditions: if “n,” “Xaa,” or a modified or unusual
Leave blank after <220>. <221-223> provide for a description of points of
Feature..........................<220>
L-amino acid or modified base wasbiological significance in the sequence. used in a sequence; if ORGANISM is
“Artificial Sequence” or “Unknown”; if molecule is combined DNA/RNA. M, under the following conditions: if “n,” “Xaa,” or a modified or unusual
Provide appropriate identifier for feature, preferably from WIPO
Name/Key.....................<221>
L-amino acid or modified base was used in a sequence.
Standard ST.25 (1998), Appendix 2, Tables 5 and 6.
Mandatory (M) or Optional (O)Comments and formatDefinitionNumeric Identifier
M, under the following conditions: if “n,” “Xaa,” or a modified or unusual
Specify location within sequence; where appropriate state number of first and last bases/amino acids in feature.
Location........................<222>
L-amino acid or modified base was used in a sequence. M, under the following conditions: if “n,” “Xaa,” or a modified or unusual
Other relevant information; four lines maximum.............................................
Other Information.........<223>
L-amino acid or modified base was used in a sequence; if ORGANISM is “Artificial Sequence” or “Unknown”; if molecule is combined DNA/RNA. O.Leave blank after <300>Publication Information<300>
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§ 2424BIOTECHNOLOGY
Mandatory (M) or Optional (O)Comments and formatDefinitionNumeric Identifier
O.Preferably max. of ten named authors of publication; specify one name per
Authors.........................<301>
line; preferable format: Surname, Other Names and/or Initials.
O..............................................................Title...............................<302> O..............................................................Journal..........................<303> O..............................................................Volume .........................<304> O..............................................................Issue .............................<305> O..............................................................Pages ............................<306> O.Journal date on which data published;
specify as yyyy- mm-dd, MMM-yyyy or Season- yyyy.
Date..............<307>
O.Accession number assigned by database including database name.
Database Accession Number.
<308>
O.Date of entry in database; specify as yyyy-mm-dd or MMM-yyyy.
Database Entry Date........
<309>
O.Document number; for patent-type citations only. Specify as, for example, US 07/ 999,999.
Patent Document Number.
<310>
O.Document filing date, for patent-type citations only; specify as yyyy-mm-dd.
Patent Filing Date..............
<311>
O.Document publication date, for patent-type citations only; specify as yyyy-mm-dd.
Publication Date................
<312>
O.FROM (position) TO (position)...........Relevant Residues............
<313>
M.SEQ ID NO should follow the numeric identifier and should appear
Sequence.......................<400>
on the line preceding the actual sequence.
2424.01 Informational Requirements for the Sequence Listing [R-07.2015]
37 CFR 1.823 sets forth the informational requirements for the sequence listing that must be submitted in accordance with 37 CFR 1.821(c) as part of the application. See MPEP § 2422.03 for a discussion of 37 CFR 1.821(c).
37 CFR 1.823(a)(1) sets forth page and line length requirements for any sequence listing submitted on paper. The requirement to use a fixed width font to present sequence data is also set forth therein. This latter requirement is made to ensure that the desired
sequence character spacing and numbering is maintained.
37 CFR 1.823(a)(2) requires that any sequence listing submitted under 37 CFR 1.821(c) as part of the application on compact disc must comply with 37 CFR 1.52(e). The compact disc may also contain table information if the application contains table information that is over 50 pages. See 37 CFR 1.52(e)(1)(iii). Note that a CRF of a sequence listing submitted on compact disc cannot include table information. See MPEP § 2422.03. If a sequence listing or CRF of a sequence listing is submitted as an ASCII text file via EFS-Web, the file cannot
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2424.01
contain information other than the sequence listing. Any table information to be submitted as a text file in an application via EFS-Web must be submitted as a separate file. See MPEP § 2422.03(a) for additional information pertaining to filing a sequence listing via EFS-Web. See MPEP § 608.05(b) for information regarding submission of large tables in ASCII text format via EFS-Web or on compact disc.
37 CFR 1.823(b) lists the items of information that are to be included in the sequence listing in the order in which those items are to appear. The numeric identifier for each item of information shall not include the explanatory information included in 37 CFR 1.823(b).
2424.02 Sequence Listing Numeric Identifiers [R-07.2015]
37 CFR 1.823(b) sets forth the order and presentation of the items of information in the sequence listing. Each item of information in the sequence listing must include the appropriate numeric identifier and its accompanying information as shown in 37 CFR 1.823(b). Each item of information must begin on a new line with the numeric identifier enclosed in angle brackets. The submission of those items of information designated with an “M” is mandatory. The submission of those items of information designated with an “O” is optional. Numeric identifiers <110> through <170> must be set forth at the beginning of the sequence listing.
See MPEP § 2431 for a sample sequence listing.
2424.03 Additional Miscellaneous Requirements [R-07.2015]
Throughout 37 CFR 1.823(b), the items of information relating to patent applications and patent publications should be provided keeping in mind the appropriate standards that have been established by the World Intellectual Property Organization (WIPO). In general, an application should be identified by a country code, a number and a filing date, while a published patent document should be identified by a country code, a number and kind code. Proper citation of priority patent applications is covered in MPEP § 214.04. For published patent
documents, the country code, number and kind code will appear on the front page of the document. Unpublished PCT applications are identified by the letters PCT, the country code of the Receiving Office, and either the last two digits of the year of filing and a number, e.g., PCT/AT81/00033 or PCT/FR88/00100, or the four digit year of filing and a six digit number, e.g., PCT/SE2011/000123. A published PCT application is identified by the letters WO, the last two digits of the year of publication, a number and a kind code, e.g., WO82/02827A or WO88/06811A, or by the letters WO, the four digit year of publication and a six digit number, e.g. WO/2015/009167. Country codes from WIPO Standard ST.3 Annex A and kind codes from WIPO Standard ST.16 are reproduced in MPEP § 1851. Questions on proper citation of patent documents should be directed to staff in the Office of International Patent Cooperation.
In 37 CFR 1.823(b), numeric identifier <110>, the item of information relating to “Applicant” should be limited to a maximum of the first ten named applicants in the application. Similarly, in numeric identifier <301>, the item of information relating to “Authors” should be limited to a maximum of the first ten named authors in the publication.
In 37 CFR 1.823(b) “yyyy-mm-dd” is the format for the presentation of patent related date information in the sequence listing. Other date information may also be presented as MMM-yyyy or Season-yyyy. The lower case letters designate numeric responses and the upper case letters designate alphabetical responses. As such, March 2, 1988, would be presented as 1988-03-02 or MAR 1988.
In numeric identifiers <220> - <223>, relating to “Features” or the description of the points of biological significance in a given sequence, it is recommended, but not required, that the information that is provided by the applicant conform to the controlled vocabulary that is set forth in the DDBJ/EMBL/GenBank FeatureTable Definition provided by the International Nucleotide Sequence Data Collaborat ion (INSDC) at www.insdc.org/documents. See MPEP § 2422 when filing in countries which adhere to WIPO Standard ST.25.
Rev. 07.2015, October 20152400-45
§ 2424.03BIOTECHNOLOGY
In numeric identifiers <300> - <312>, publication information for a given sequence is collected. The publication information encompasses both patent-type publications and non-patent literature publications. Numeric identifier <313>, Relevant Residues, is intended to collect information relating to the correspondence between a sequence set forth in the sequence listing and published sequence information. The starting (FROM) and end (TO) positions in the listed sequence that correspond to the published sequence information should be set forth.
2425 Form and Format for Nucleotide and/or Amino Acid Sequence Submissions in Computer Readable Form [R-07.2015]
37 CFR 1.824 Form and format for nucleotide and/or amino acid sequence submissions in computer readable form.
(a) The computer readable form required by § 1.821(e) shall meet the following requirements:
(1) The computer readable form shall contain a single “Sequence Listing” as either a diskette, series of diskettes, or other permissible media outlined in paragraph (c) of this section.
(2) The “Sequence Listing” in paragraph (a)(l) of this section shall be submitted in American Standard Code for Information Interchange (ASCII) text. No other formats shall be allowed.
(3) The computer readable form may be created by any means, such as word processors, nucleotide/amino acid sequence editors’ or other custom computer programs; however, it shall conform to all requirements detailed in this section.
(4) File compression is acceptable when using diskette media, so long as the compressed file is in a self-extracting format that will decompress on one of the systems described in paragraph (b) of this section.
(5) Page numbering must not appear within the computer readable form version of the “Sequence Listing” file.
(6) All computer readable forms must have a label permanently affixed thereto on which has been hand-printed or typed: the name of the applicant, the title of the invention, the date on which the data were recorded on the computer readable form, the operating system used, a reference number, and an application number and filing date, if known. If multiple diskettes are submitted, the diskette labels must indicate their order ( e.g., “1 of X”).
(b) Computer readable form submissions must meet these format requirements:
(1) Computer Compatibility: IBM PC/XT/AT or Apple Macintosh;
(2) Operating System Compatibility: MS-DOS, MS-Windows, Unix or Macintosh;
(3) Line Terminator: ASCII Carriage Return plus ASCII Line Feed; and
(4) Pagination: Continuous file (no “hard page break” codes permitted).
(c) Computer readable form files submitted may be in any of the following media:
(1) Diskette: 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb storage; 5.25 inch, 1.2 Mb storage; 5.25 inch, 360 Kb storage.
(2) Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 6250 bits per inch, 9 track; Format: Unix tar command; specify blocking factor (not “block size”); Line Terminator: ASCII Carriage Return plus ASCII Line Feed.
(3) 8mm Data Cartridge: Format: Unix tar command; specify blocking factor (not “block size”); Line Terminator: ASCII Carriage Return plus ASCII Line Feed.
(4) Compact disc: Format: ISO 9660 or High Sierra Format.
(5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 640 Mb.
(d) Computer readable forms that are submitted to the Office will not be returned to the applicant.
37 CFR 1.824 sets forth the requirements for sequence submissions in computer readable form. Any computer operating system may be utilized to produce a sequence submission; however, the resultant file must have the characteristics specified in 37 CFR 1.824.
If the sequence listing required by 37 CFR 1.821(c) cannot be submitted via EFS-Web because it is larger than 100 megabytes (see MPEP § 2422.03(a)), and it is impractical to provide the sequence listing on compact discs or other electronic media as set forth in 37 CFR 1.824 due to the size of the sequence listing, an exception via a non-fee petition to waive this provision will be considered. As set forth in 37 CFR 1.824(d), the computer readable forms that are submitted in accordance with these rules will not be returned to the applicant. 37 CFR 1.824(a)(6) requires the labeling, with appropriate identifying information, of the computer readable forms that are submitted in accordance with these rules.
2426 Amendments to or Replacement of Sequence Listing and Computer Readable Copy Thereof [R-07.2015]
37 CFR 1.825 Amendments to or replacement of sequence listing and computer readable copy thereof.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2425
(a) Any amendment to a paper copy of the “Sequence Listing” (§ 1.821(c)) must be made by the submission of substitute sheets and include a statement that the substitute sheets include no new matter. Any amendment to a compact disc copy of the “Sequence Listing” (§ 1.821(c)) must be made by the submission of a replacement compact disc (2 copies) in compliance with § 1.52(e). Amendments must also be accompanied by a statement that indicates support for the amendment in the application, as filed, and a statement that the replacement compact disc includes no new matter.
(b) Any amendment to the paper copy of the “Sequence Listing,” in accordance with paragraph (a) of this section, must be accompanied by a substitute copy of the computer readable form (§ 1.821(e)) including all previously submitted data with the amendment incorporated therein, accompanied by a statement that the copy in computer readable form is the same as the substitute copy of the “Sequence Listing.”
(c) Any appropriate amendments to the “Sequence Listing” in a patent; e.g., by reason of reissue or certificate of correction, must comply with the requirements of paragraphs (a) and (b) of this section.
(d) If, upon receipt, the computer readable form is found to be damaged or unreadable, applicant must provide, within such time as set by the Commissioner, a substitute copy of the data in computer readable form accompanied by a statement that the substitute data is identical to that originally filed.
37 CFR 1.825 sets forth the procedures for amending the sequence listing and the CRF thereof. Analogous procedures apply to amending a sequence listing filed as an ASCII text file via EFS-Web. These procedures involve the submission of either substitute sheets or a substitute ASCII text file submitted via EFS-Web or on compact disc(s), in conjunction with statements that indicate support for the amendment in the application, as filed, and that the substitute documents include no new matter. (See MPEP § 608.05 and § 2428 for further information.) An amendment to the sequence listing or CRF submitted as an ASCII text file via EFS-Web or on compact disc(s) must be done by submitting a replacement sequence listing or CRF ASCII text file via EFS-Web or on compact disc(s). The amendment should include a corresponding amendment to the description of the compact disc and the files contained thereon or the description of the EFS-Web submitted ASCII text file in the incorporation by reference statement in the specification. If the sequence listing required by 37 CFR 1.821(c) was filed on a compact disc that included files in addition to the sequence listing, a replacement compact disc containing the amended sequence listing also must contain all of the files of the original compact disc that were not amended.
This will insure that the Office, printer, and public can quickly access all of the current files in an application or patent by referencing only the latest version. The requirement for statements regarding the absence of new matter follows current practice relating to the submission of substitute specifications, as set forth in 37 CFR 1.125. 37 CFR 1.825(c)addresses the situation where amendments to the sequence listing are made after a patent has been granted, e.g., by a certificate of correction, reissue or reexamination. 37 CFR 1.825(d) addresses the possibility and presents a remedy for the situation where the computer readable form may be found by the Office to be damaged or unreadable.
2427 Form Paragraphs [R-07.2015]
See MPEP § 608.05 for form paragraphs which should be used when notifying applicant that a compact disc submitted in accordance with 37 CFR 1.52(e) (i.e., containing a computer program listing, sequence listing, and/or table) does not comply with all of the requirements of the 37 CFR 1.52(e). See also MPEP § 608.05(b) for form paragraphs which should be used when a table submitted on compact disc does not comply with 37 CFR 1.52(e).
In order to expedite the processing of applications, minor errors pertaining to compliance with the sequence rules discovered after examination has begun may be handled with the next Office action. Examples of minor errors are: missing any necessary sequence identifiers in the specification/drawings; when the sequence listing under 37 CFR 1.821(c) is submitted on compact disc, missing statement in the transmittal letter stating that the two compact discs are identical; missing or providing an incomplete incorporation by reference of the sequence listing in the specification; missing statement that the sequence listing information in computer readable form is identical to the written (on paper or compact disc) sequence listing when such a statement is necessary, etc. Since the application is ready for examination, the examiner may act on the application and include any objections to the application based
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§ 2427BIOTECHNOLOGY
on minor errors related to the sequence listing with his/her Office action.
2428 Sample Statements [R-08.2012]
Sample language for the statements required to support sequence rule submissions is provided below. These statements are given by way of example only; other language may, of course, be used. For the statements that relate to the assertion that the content of the paper or compact disc and computer readable copies are the “same,” it is acknowledged that there may be some nonsubstantive differences between the two, e.g., page numbers and page breaks may be present in the paper copy but not in the computer readable copy thereof. This requirement for sameness relates to the informational content of the paper or compact disc and computer readable copies relevant to the requirements of the sequence rules.
37 CFR 1.821(f) - I hereby state that the information recorded in computer readable form is identical to the written (on paper or compact disc) sequence listing. 37 CFR 1.52(e)(4) - I hereby state that the two compact discs are identical. 37 CFR 1.821(g) [or (h)] - I hereby state that the submission, filed in accordance with 37 CFR 1.821(g) [or (h)], herein does not include new matter [or matter which goes beyond the disclosure in the international application]. 37 CFR 1.825(a) - I hereby state that the amendments, made in accordance with 37 CFR 1.825(a), included in the substitute sheet(s) or compact disc(s) of the Sequence Listing are supported in the application, as filed, at _____________. I hereby state that the substitute sheet(s) of the Sequence Listing does (do) not include new matter. 37 CFR 1.825(b) - I hereby state that the substitute copy of the computer readable form, submitted in accordance with 37 CFR 1.825(b), is the same as the amended Sequence Listing. 37 CFR 1.825(d) - I hereby state that the substitute copy of the computer readable
form, submitted in accordance with 37 CFR 1.825(d), is identical to that originally filed.
2429 Helpful Hints for Compliance [R-07.2015]
The Office has now had a good deal of experience in the implementation of the sequence rules. The following list sets forth helpful hints, for both examiners and applicants, for compliance. For the most part, the list is a compilation of frequently asked questions.
—Compliance is not a filing date issue.
—Compliance is not a 35 U.S.C. 112 issue.
—Compliance is not a 35 U.S.C. 119/120 issue.
—Compliance is not per se a new matter issue. The standard for resolution of inconsistencies between the official sequence listing (submitted on paper or compact disc pursuant to 37 CFR 1.821(c)) and the computer readable form thereof and/or errors in the official copy of sequence information is based on the new matter standard. If there are inconsistencies in compact discs submitted in accordance with 37 CFR 1.52(e) between “Copy 1” and “Copy 2”, the compact disc labeled “Copy 1” will be used for further processing.
—Compliance can be achieved via amendment.
—If a new application is filed via EFS-Web with an ASCII text file sequence listing that complies with the requirements of 37 CFR 1.824(a)(2) - (6) and 37 CFR 1.824(b), and applicant has not filed a sequence listing in a PDF file, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the computer readable form (CRF) required by 37 CFR 1.821(e) thus the filer need not submit i) any additional copies of the sequence listing pursuant to 37 CFR 1.821(e) nor ii) the statement described in 37 CFR 1.821(f). Any sequence listing submitted as an ASCII text file via EFS-Web that is otherwise in compliance with 37 CFR 1.52(e) and 37 CFR 1.824(a)(2) - (6) and 37 CFR 1.824(b) will be excluded when determining the application size fee required by 37 CFR 1.16(s)or 37 CFR 1.492(j) as
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2428
per 37 CFR 1.52(f)(1). See MPEP § 2422.03(a) for additional information.
—Filing a sequence listing via EFS-Web in PDF format is not recommended. A sequence listing in PDF format is treated as the paper copy required by 37 CFR 1.821(c) and would require filing of both a separate CRF and a statement that the written copy and the CRF are identical as required by 37 CFR 1.821(f). In addition, a sequence listing submitted via EFS-Web in PDF format as part of the specification is not excluded when determining the application size fee required by 37 CFR 1.16(s) or 1.492(j) as per 37 CFR 1.52(f)(1).
—For international applications (PCT), the check list of the PCT Request filed with the international application must contain an indication that the sequence listing forms part of the international application. See MPEP § 2422.03(a), subsection IV, for information specific to filing sequence listings in international applications (PCT) via EFS-Web.
—Applicants are reminded that for fee purposes, a table of sequences is not a sequence listing. Such tables are considered text as part of the specification and are included when determining the application size fee required by 37 CFR 1.16(s) or 1.492(j) as per 37 CFR 1.52(f)(1).
—Failure to reply to sequence compliance issues in a timely manner may reduce any patent term adjustment. Patent applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013, may be subject to reductions in patent terms adjustment pursuant to 37 CFR 1.704(c)(13) if they are not in condition for examination within eight months from the filing date or date of commencement, respectively. “In condition for examination” includes compliance with 37 CFR 1.821 - 1.825 (see 37 CFR 1.704(f)).
—The copy of the sequence listing required by 37 CFR 1.821(c) is an integral part of the application. If submitted on paper, the sequence listing must begin on a new page, should appear at the end of the application, and preferably should be numbered independently of the numbering of the remainder of
the application. The new page that begins the sequence listing should be entitled “Sequence Listing.” If not submitted as such at filing, the Sequence Listing must be inserted into the application via amendment, e.g., by preliminary amendment. If submitted on compact disc, or as an ASCII text file via EFS-Web, the specification must contain an incorporation by reference of the material on the compact disc or submitted via EFS-Web in a separate paragraph identifying each compact disc or ASCII text file.
—Substitute pages, replacement compact discs, or replacement ASCII text files submitted via EFS-Web, as appropriate, must be used for any changes to the sequence listing or CRF thereof. See MPEP § 2426 for additional information regarding amendments to or replacement of a sequence listing or CRF thereof.
—Applicant's reply to a notice of a defective transfer request preferably includes a CRF (an ASCII text file submitted via EFS-Web or on compact disc(s)), however a new transfer request and correction of the noted deficiencies is also permitted. See MPEP § 2422.05.
—Angle brackets and numeric identifiers listed in 37 CFR 1.823 are very important for our database. Extra punctuation should not be used in sequence listings.
—The computer readable form cannot contain page numbers. Page numbers should only be placed on the paper copy of the sequence listing. Page numbers should not be placed on the ASCII text file or compact disc copy of the sequence listing.
—The PatentIn computer program is not the only means by which to comply with the rules. Any word processing program can be used to generate a sequence listing if it has the capability to convert a file into ASCII text. However, use of a word processing program to generate or amend a sequence listing file is discouraged. Word processing programs often introduce unintended changes to the sequence listing that render the listing unacceptable. Use of a plain text editor to generate or edit a sequence listing is recommended.
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§ 2429BIOTECHNOLOGY
—If a word processing program is used to generate a sequence listing, hard page break controls should not be used and margins should be adjusted to the smallest setting.
—Word processing files should not be submitted to the Office; the sequence listing generated by a word processing file should be saved as an ASCII text file for submission. Most word processing programs provide this feature.
—Statements in accordance with 37 CFR 1.821(f), (g), and (h) and 37 CFR 1.825 and proper labeling in accordance with 37 CFR 1.824(a)(6) should be noted. Sample statements to support filings and submissions in accordance with 37 CFR 1.821 through 1.825 are provided in MPEP § 2428 Sample Statements.
—Use Box SEQUENCE. See MPEP § 2422.09.
—On nucleotide sequences, since only single strands may be depicted in the sequence listing, show strands in 5 to 3 direction.
—The single stranded nucleotide depicted in the sequence listing may represent a strand of a nucleotide sequence that may be single or double stranded which may be, further, linear or circular. An amino acid sequence or peptide may be linear or circular.
—Numeric identifiers “<140>, Current Application Number,” “<141>, Current Filing Date,” “<150>, Prior Application Number,” and “<151>, Prior Application Filing Date,” should appear in the sequence listing in all cases. If the information about the current application is not known or is unavailable at the time of completing the sequence listing, then the lines following numeric identifiers <140> and <141> should be left blank. This would normally be the case when the sequence listing is included in a newly filed application. Similarly, if information regarding prior applications is inapplicable, or not known at the time of completing the sequence listing but will be later filed, then the numeric identifiers <150> and <151> should appear with the line following the numeric identifiers left blank.
—The mandatory items of information that must be included in a sequence listing are identified in the table of numeric identifiers set forth in 37 CFR 1.823(b). See also MPEP § 2424.02.
—Pursuant to 37 CFR 1.83(a), sequences that are included in sequence listings should not be duplicated in the drawings. However, significant sequence characteristics that are not readily conveyed by the data in the sequence listing may be depicted in a drawing figure. However, the sequence information so conveyed must still be included in a sequence listing if the sequence falls within the definition set forth in 37 CFR 1.821(a), and the sequence identifier (“SEQ ID NO:X”) must be used, either in the drawing or in the “Brief Description of the Drawings.” See MPEP § 2422.02 for additional information.
—Extra copies of computer readable forms should not be sent to examiners.
—Inosine may be represented by the use of “I” in the features section, otherwise use “n.”
—Stop codons that are represented by an asterisk are not permitted in amino acid sequences.
—Punctuation should not be used in a sequence to indicate unknown nucleotide bases or amino acid residues or to delimit active or functional regions of a sequence. These regions should be noted as Features of the sequence per 37 CFR 1.823(b) (see numeric identifiers <220> - <223>.
—The presence of an unnatural amino acid in a sequence does not have the same effect as the presence of a D-amino acid. The sequence may still be subject to the rules even though one or more of the amino acids is not naturally occurring.
—Cyclic and branched peptides are causing some confusion in the application of the rules. Specific questions should be directed to Sequence Systems Service Center of the Scientific and Technical Information Center at 571-272-2510.
—A cyclic peptide with a tail is regarded as a branched sequence, and thereby exempt from the
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2429
rules, if all bonds adjacent to the amino acid from which the tail emanates are normal peptide bonds.
—Sequences that have variable-length regions depicted as, for example, Ala Ala Leu Leu (Xaa Xaa)n Ile Pro where n=0-234 or
agccttgggaca(nnnnn)mgtcatt where m=0-354 or Ser
Met Ala Xaa Ser where Xaa could be 1, 2, 3, 4 and/or 5 amino acids must still comply with the Sequence Rules. The method to use is to repeat the variable-length region as many times as the maximum length and specify in the Features section that the amino acid (or nucleotide) at a specified position is either absent or present. The variables Xaa and n may stand for only one residue, hence the need to repeat the variable. The correct way to submit the third example is Ser Met Ala Xaa Xaa Xaa Xaa Xaa Ser combined with an explanation in the Features section of the listing that any one or all of amino acids 4-8 can either be present or absent.
—Single letter amino acid abbreviations are not acceptable within the sequence listing but may appear elsewhere in the application.
—Zero (0) is not used when the numbering of amino acids uses negative numbers to distinguish the mature protein.
—Subscripts or superscripts are not permitted in a sequence listing.
—The exclusive conformance requirement of 37 CFR 1.821(b) requires that any amendment of the sequence information in a sequence listing be accompanied by an amendment to the corresponding information, if any, embedded in the text of the specification or presented in a drawing figure.
—A mandatory feature is required to cover every “n” or “Xaa” used in a sequence. The feature consists of numeric identifiers <220>, <221>, <222>, and <223>. Numeric identifier <220> should remain blank, numeric Identifier <221> should be selected from “WIPO Standard ST.25 (1998), Appendix 2,” numeric identifier <222> should identify the location of the “n” or “Xaa” within the sequence, and numeric identifier should <223> specify what the “n” or “Xaa” can be. When all of the “n” or “Xaa” variables
in a sequence are equal to the same thing, a range of the entire sequence can be given for numeric identifier <222> to cover all of the “n” or “Xaa” designators in one feature.
—Remove all non-ASCII characters from the .txt file. For example, an symbol should be spelled out as “alpha.”
—Tabs are non-ASCII characters. Do not use tabs in sequence listing .txt files.
—Make all explanations in a feature section consistent with the molecule type in numeric identifier <212>. For example, if the sequence is type “PRT” do not describe the sequence in a feature section as a “synthetic oligonucleotide.”
—A response for numeric identifier <130>, “File Reference,” is mandatory if the numeric identifier <140> is not present, e.g., when the sequence listing is filed before the application number has been assigned. At least one of a numeric identifier <130> with docket number or numeric identifier <140> with current application number must be in the sequence listing. This information is used to ensure that CRF files are correctly matched to their corresponding applications.
—The format “YYYY-MM-DD” should be used for dates.
—If a sequence listing is modified by the addition or deletion of sequences, remember to update the total number of sequences in numeric identifier <160>.
—Numeric identifier <213> can only be one of three choices: Scientific name (i.e. Genus/species), Unknown, or Artificial Sequence. Do not add any extraneous information about the sequence, such as a gene names, in this field. Do not use common names for species. For example, human should be “Homo sapiens” and cow should be “Bos taurus.” If a specific genus/species is unknown, use the reply “Unknown” in numeric identifier <213> and add whatever information is known into numeric identifier <223> of the feature section. For example, if only the family “Saccharomycetaceae” is known, numeric identifier <213> should state “Unknown”
Rev. 07.2015, October 20152400-51
§ 2429BIOTECHNOLOGY
and numeric identifier <223> could state “fungus of the family Saccharomycetaceae.”
—For all sequences using “Unknown” or “Artificial sequence” for numeric identifier <213>, a mandatory feature is required to explain the source of the genetic material. The feature consists of <220>, which remains blank, and <223>, which states the source of the genetic material. To explain the source, if the sequence is put together from several organisms, please list those organisms. If the sequence is made in the laboratory, please indicate that the sequence is synthesized.
—Only use abbreviations that are specifically defined in “WIPO Standard ST.25 (1998)” or that are well known. Do not use abbreviations that are specific to the application at issue and would not be clear to someone who had not read the invention description. When in doubt, use the full name rather than an abbreviation.
—Note that if a sequence listing CRF is rejected and an error report issued, the errors listed are exemplary and may not be a complete list of all errors in the sequence listing file. The applicant is required to review the sequence listing in its entirety and correct all instances of similar errors.
—Any inquiries regarding a specific computer readable form that has been processed by the Office should be directed to the Sequence Systems Service Center of the Scientific and Technical Information Center at 571-272-2510.
2430 PatentIn Information [R-07.2015]
In those areas of biotechnology in which nucleotide and/or amino acid sequence information is significant, many patent applicants are accustomed to, or familiar with, the submission of such sequence information, in electronic form, to various sequence databases, such as GenBank, which is produced by the National Institutes of Health. In order to facilitate such submissions, or merely for the purpose of researching and developing sequence information, many eventual patent applicants also generate or encode sequence information in computer readable form. In order to further facilitate compliance with the sequence rules, the Office previously made
available to the public an input program based on the AuthorIn program produced by GenBank. This input program, called PatentIn version 1.3, was specifically tailored to the requirements of the sequence rules which were in effect between October 1, 1990 and July 1, 1998. Applications filed in the U.S. or in member countries of WIPO after July 1, 1998, containing sequence listings prepared using PatentIn version 1.3 will not be in compliance with 37 CFR 1.821-1.825 or ST.25.
The current sequence rules, which are embodied in 37 CFR 1.821-1.825 and World Intellectual Property Organization (WIPO) Standard ST.25, became effective July 1, 1998. Several versions of PatentIn have been released since 1998.
PatentIn version 3.5.1, available as of November 2010, and the companion User’s Manual, are avai lable on the Office websi te (www.uspto.gov/patents-getting-started/patent-basics /types-patent-applications/utility-patent/patentin-version-351) for free downloading. PatentIn 3.5.1 operates in a Windows XP, Windows Vista and Windows 7 environment. A minimum of 512 Megabytes (MB) of memory is required. Additional memory may be required for large patent applications. For the best performance 1 Gigabyte (GB) of memory is recommended for very large projects, projects with 100,000 sequences, or a sequence approaching 12 MB. The disk space required to install PatentIn 3.5.1 is about 6.5 MB. Additional disk space is required to store project files and sequence listing files.
For help related to downloading the PatentIn software program or using PatentIn, contact the Patent Electronic Business Center at 866-217-9197 or via email at ebc@uspto.gov.
While use of the PatentIn program is not required for compliance with the sequence rules, its use is highly recommended, as Office experience has shown that submissions developed with PatentIn are far less likely to include errors than those developed without the program. The many automatic features of the PatentIn program also greatly ease the generation of sequence listings when compared to generating them by hand in a word processing environment. This is especially true for sequence
2400-52Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2430
listings that include many sequences and/or sequences having great lengths.
Checker software that may be used to check a sequence listing for compliance with the requirements of 37 CFR 1.824 is available on the U S P T O w e b s i t e a t www.uspto.gov/patents-getting-started/patent-basics /types-patent-applications/utility-patent/checker-version-446.
The User Notes on the Checker website should be consulted for an explanation of errors that are not indicated, and content that is not verified, by the Checker software.
2431 Sample Sequence Listing [R-08.2012]
A sample sequence listing is included below.
Rev. 07.2015, October 20152400-53
§ 2431BIOTECHNOLOGY
2400-54Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2431
2432-2433 [Reserved]
2434 Examination of Patent Applications Claiming Large Numbers of Nucleotide Sequences [R-07.2015]
Polynucleotide molecules defined by their nucleic acid sequence (hereinafter “nucleotide sequences”) that encode different proteins are structurally distinct chemical compounds. These sequences are thus deemed to normally constitute independent and distinct inventions within the meaning of 35 U.S.C. 121. Absent evidence to the contrary, each such nucleotide sequence is presumed to represent an independent and distinct invention, subject to a restriction requirement pursuant to 35 U.S.C. 121 and 37 CFR 1.141 et seq.
In 1996, the Director decided sua sponte to partially waive the requirements of 37 CFR 1.141 et seq. and permit a reasonable number of such nucleotide sequences to be claimed in a single application. See Examination of Patent Applications Containing
Nucleotide Sequences, 1192 OG 68 (November 19, 1996).
In 2007, the Director rescinded the waiver. See Examination of Patent Applications Containing
Nucleotide Sequences, 1316 OG 123 (March 27, 2007). All pending applications are subject to the
2007 OG notice. Note, however, that supplemental restriction requirements will not be advanced in applications that have already received an action on their merits in the absence of extenuating circumstances. For national applications filed under 35 U.S.C. 111(a), polynucleotide inventions will be considered for restriction, rejoinder, and examination practice in accordance with the standards set forth in MPEP Chapter 800. Claims to polynucleotide molecules will be considered for independence, relatedness, distinction and burden in the same manner as claims to any other type of molecule.
See MPEP § 1850 for treatment of claims containing nucleotide sequences that lack unity of invention in international applications filed under the Patent Cooperation Treaty (PCT) and national stage applications filed under 35 U.S.C. 371.
2435 Publishing of Patents and Patent Application Publications with Lengthy Sequence Listings [R-07.2015]
Due to the high cost and limited usefulness of the printed paper or composed electronic image versions of nucleotide and/or amino acid sequences, if the sequence listing portion is lengthy (i.e., at least 600 Kb (about 300 typed pages)), it will no longer be printed with the paper and composed electronic image (page image) versions of patents and patent application publications. The sequence listing will
Rev. 07.2015, October 20152400-55
§ 2435BIOTECHNOLOGY
only be published in electronic form and will be available on the USPTO sequence homepage (http://seqdata.uspto.gov) as an ASCII text file.
Copies of patents and patent application publications that include sequence listings are available for sale through the Office of Public Records, Certification Division, on paper, on a CDROM, or in PDF format via the Internet. However, these copies will not include a sequence listing if the sequence listing is not included in the composed electronic image (page image) version of the patent or patent application publication.
Copies of U.S. patents and U.S. patent application publications are not provided in paper to applicants and are not placed in the application file. See MPEP § 707.05(a). If an applicant desires an electronic copy of a sequence listing, applicant must specifically request and pay for the electronic copy. Both applicants and members of the general public can obtain an electronic copy of the sequence listing through the Certification Division for a separate fee as set forth in 37 CFR 1.19(b)(3). See MPEP § 1730 for contact information for Certification Division.
The patent mailed to applicant will include a copy of the patent on paper and a copy of the sequence listing on an electronic medium (e.g., compact disc), if the sequence listing is not printed in the patent.
If the sequence listing is not included in the page images of a patent or patent application publication, a standardized statement will appear. Additionally, in the electronic text version of the patent or patent application publication, the statement will include an active hyperlink to a Web page containing the sequence listing. The standardized statement for a patent will read, for example:
SEQUENCE LISTING
The patent contains a lengthy “Sequence Listing” section. A copy of the “Sequence Listing” is available in electronic form f r o m t h e U S P T O w e b s i t e (http://seqdata.uspto.gov/sequence.html?DocID=6183957B1). An electronic copy of the “Sequence Listing” will also be available from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).
The standardized statement for a patent application publication will read, for example:
SEQUENCE LISTING
The patent application contains a lengthy “Sequence Listing” section. A copy of the “Sequence Listing” is available in electronic form from the USPTO web site (http://seqdata.uspto.gov/sequence.html?DocID=20010000241). An electronic copy of the “Sequence Listing” will also be available from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).
Sequence data may also be accessed in a more readily searchable manner from the National Center for Biotechnology Information (NCBI) at www.ncbi.nlm.nih.gov or from a commercial vendor. The USPTO forwards a copy of the sequence data to NCBI when a patent including a sequence listing is granted, and when an application containing a sequence is published pursuant to 35 U.S.C. 122(b). If NCBI elects to include the sequence data in one of its databases, NCBI indexes the sequence data according to patent or patent application publication number. There is currently no fee for the public to use the NCBI site.
2400-56Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2435
Chapter 2500 Maintenance Fees
Introduction2501 [Reserved]2502
-2503 Patents Subject to Maintenance Fees2504 [Reserved]2505 Times for Submitting Maintenance Fee Payments
2506
[Reserved]2507 -2509
Submission of Maintenance Fee Payments and Documents
2510
[Reserved]2511 -2514
Information Required for Submission of Maintenance Fee Payment
2515
[Reserved]2516 -2519
Maintenance Fee Amounts2520 [Reserved]2521 Methods of Payment2522 [Reserved]2523
-2529 Special Acceptance of Maintenance Fee Payments Containing Informalities
2530
Payment Late or Insufficient2531 Duplicate Payments2532 [Reserved]2533
-2539 Fee Address for Maintenance Fee Purposes
2540
[Reserved]2541 Change of Correspondence Address2542 [Reserved]2543
-2549 Entity Status Discounts2550 [Reserved]2551
-2559 Revocation of Power of Attorney and Withdrawal of Attorney
2560
[Reserved]2561 -2569
Maintenance Fee Payment Status Requests
2570
[Reserved]2571 -2574
Notices2575 [Reserved]2576
-2579 Review of Decision Refusing to Accept and Record Payment of a Maintenance Fee Filed Prior to Expiration of Patent
2580
[Reserved]2581 -2589
Acceptance of Delayed Payment of Maintenance Fee in Expired Patent to Reinstate Patent
2590
Intervening Rights in Reinstated Patents
2591
[Reserved]2592 -2594
Forms2595
2501 Introduction [R-07.2015]
35 U.S.C. 41 Patent fees; patent and trademark search systems.
*****
(b) MAINTENANCE FEES
(1) IN GENERAL. — The Director shall charge the following fees for maintaining in force all patents based on applications filed on or after December 12, 1980:
(A) Three years and 6 months after grant, $980.
(B) Seven years and 6 months after grant, $2,480.
(C) Eleven years and 6 months after grant, $4,110.
(2) GRACE PERIOD; SURCHARGE. — Unless payment of the applicable maintenance fee under paragraph (1) is received in the Office on or before the date the fee is due or within a grace period of 6 months thereafter, the patent shall expire as of the end of such grace period. The Director may require the payment of a surcharge as a condition of accepting within such 6-month grace period the payment of an applicable maintenance fee.
(3) NO MAINTENANCE FEE FOR DESIGN OR PLANT PATENT. — No fee may be established for maintaining a design or plant patent in force.
(c) DELAYS IN PAYMENT OF MAINTENANCE FEES. —
(1) ACCEPTANCE. — The Director may accept the payment of any maintenance fee required by subsection (b) after the 6-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional. The Director may require the payment of the fee specified in subsection (a)(7) as a condition of accepting payment of any maintenance fee after the 6-month grace period. If the Director accepts payment of a maintenance fee after the 6-month grace period, the patent shall be considered as not having expired at the end of the grace period.
(2) EFFECT ON RIGHTS OF OTHERS.— A patent, the term of which has been maintained as a result of the acceptance of a payment of a maintenance fee under this subsection, shall not abridge or affect the right of any person or that person’s successors in business who made, purchased, offered to sell, or used anything protected by the patent within
Rev. 07.2015, October 20152500-1
the United States, or imported anything protected by the patent into the United States after the 6-month grace period but prior to the acceptance of a maintenance fee under this subsection, to continue the use of, to offer for sale, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported. The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, or used within the United States, or imported into the United States, as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made after the 6-month grace period but before the acceptance of a maintenance fee under this subsection, and the court may also provide for the continued practice of any process that is practiced, or for the practice of which substantial preparation was made, after the 6-month grace period but before the acceptance of a maintenance fee under this subsection, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced after the 6-month grace period but before the acceptance of a maintenance fee under this subsection.
*****
I. MAINTENANCE FEE BRANCH
The Maintenance Fee Branch of the Receipts Accounting Division of the Office of Finance provides specialized advice and guidance to the public on maintenance fee matters.
The Maintenance Fee Branch determines the proper status of issued patents which are subject to payment of maintenance fees, receives and processes fee transmittals, updates entity status, responds to public inquiries on post-issuance status and maintenance fees, and determines if maintenance fees are timely and properly computed. This Branch also generates the data necessary to produce Official Gazette notices of maintenance fees due and of expiration of patents due to failure to pay maintenance fees.
II. OFFICE OF PATENT APPLICATION PROCESSING
The Office of Patent Application Processing (OPAP) updates patent post issuance automated files with the following information:
(A) Changes of Correspondence Address
(B) Powers of Attorney and Revocations Thereof
(C) Changes to Entity Status
The official mailing address for submitting requests to update all post-issuance patent information is:
Director of the United States Patent and Trademark Office Mail Stop Post Issue P.O. Box 1450 Alexandria, Virginia 22313-1450
2502 -2503 [Reserved]
2504 Patents Subject to Maintenance Fees [R-07.2015]
37 CFR 1.362 Time for payment of maintenance fees.
(a) Maintenance fees as set forth in §§ 1.20(e) through (g) are required to be paid in all patents based on applications filed on or after December 12, 1980, except as noted in paragraph (b) of this section, to maintain a patent in force beyond 4, 8 and 12 years after the date of grant.
(b) Maintenance fees are not required for any plant patents or for any design patents. Maintenance fees are not required for a reissue patent if the patent being reissued did not require maintenance fees.
(c) The application filing dates for purposes of payment of maintenance fees are as follows:
(1) For an application not claiming benefit of an earlier application, the actual United States filing date of the application.
(2) For an application claiming benefit of an earlier foreign application under 35 U.S.C. 119, the United States filing date of the application.
(3) For a continuing (continuation, division, continuation-in-part) application claiming the benefit of a prior patent application under 35 U.S.C. 120, the actual United States filing date of the continuing application.
(4) For a reissue application, including a continuing reissue application claiming the benefit of a reissue application under 35 U.S.C. 120, the United States filing date of the original non-reissue application on which the patent reissued is based.
(5) For an international application which has entered the United States as a Designated Office under 35 U.S.C. 371, the international filing date granted under Article 11(1) of the Patent Cooperation Treaty which is considered to be the United States filing date under 35 U.S.C. 363.
(d) Maintenance fees may be paid in patents without surcharge during the periods extending respectively from:
(1) 3 years through 3 years and 6 months after grant for the first maintenance fee,
(2) 7 years through 7 years and 6 months after grant for the second maintenance fee, and
2500-2Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2502 -2503
(3) 11 years through 11 years and 6 months after grant for the third maintenance fee.
(e) Maintenance fees may be paid with the surcharge set forth in § 1.20(h) during the respective grace periods after:
(1) 3 years and 6 months and through the day of the 4th anniversary of the grant for the first maintenance fee.
(2) 7 years and 6 months and through the day of the 8th anniversary of the grant for the second maintenance fee, and
(3) 11 years and 6 months and through the day of the 12th anniversary of the grant for the third maintenance fee.
(f) If the last day for paying a maintenance fee without surcharge set forth in paragraph (d) of this section, or the last day for paying a maintenance fee with surcharge set forth in paragraph (e) of this section, falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, the maintenance fee and any necessary surcharge may be paid under paragraph (d) or paragraph (e) respectively on the next succeeding day which is not a Saturday, Sunday, or Federal holiday.
(g) Unless the maintenance fee and any applicable surcharge is paid within the time periods set forth in paragraphs (d), (e) or (f) of this section, the patent will expire as of the end of the grace period set forth in paragraph (e) of this section. A patent which expires for the failure to pay the maintenance fee will expire at the end of the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant.
(h) The periods specified in §§ 1.362(d) and (e) with respect to a reissue application, including a continuing reissue application thereof, are counted from the date of grant of the original non-reissue application on which the reissued patent is based.
Maintenance fees are required to be paid on all patents based on applications filed on or after December 12, 1980, except for plant patents and design patents. Furthermore, maintenance fees are not required for a reissue patent if the patent being reissued did not require maintenance fees. Where there are multiple continuation/divisional reissues of an original patent, the maintenance fee must be directed to the latest reissue patent. Only one maintenance fee is required for all the multiple reissue patents that replaced the single original patent. See MPEP § 1415.01.
Application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees are as follows:
(A) For an application not claiming benefit of an earlier application, the actual United States filing date of the application.
(B) For an application claiming benefit of an earlier foreign application under 35 U.S.C. 119(a)-(d), the actual United States filing date of the application.
(C) For a continuing (continuation, division, continuation-in-part) application claiming the benefit of a prior patent application under 35 U.S.C. 120, the actual United States filing date of the continuing application.
(D) For a reissue application, including a continuing reissue application claiming the benefit of a reissue application under 35 U.S.C. 120, the United States filing date of the original nonreissue application on which the patent reissued is based.
(E) For an international application that has entered the United States as a Designated Office under 35 U.S.C. 371, the international filing date granted under Article 11(1) of the Patent Cooperation Treaty which is considered to be the United States filing date under 35 U.S.C. 363.
2505 [Reserved]
2506 Times for Submitting Maintenance Fee Payments [R-08.2012]
Maintenance fees cannot be paid in advance since 35 U.S.C. 41(f) permits maintenance fees to be adjusted every year on October 1 to reflect any fluctuations during the previous 12 months in the Consumer Price Index as determined by the Secretary of Labor.
37 CFR 1.362(d) sets forth the time periods when the maintenance fees for a utility patent can be paid without surcharge. Those periods, referred to generally as the “window period,” are the 6-month periods preceding each due date. The “due dates” are defined in 35 U.S.C. 41(b). The window periods are (1) 3 years to 3 1/2 years after the date of issue for the first maintenance fee payment, (2) 7 years to 7 1/2 years after the date of issue for the second maintenance fee payment, and (3) 11 years to 11 1/2 years after the date of issue for the third and final maintenance fee payment. A maintenance fee paid on the last day of a window period can be paid without surcharge. The last day of a window period is the same day of the month the patent was granted
Rev. 07.2015, October 20152500-3
§ 2506MAINTENANCE FEES
3 years and 6 months, 7 years and 6 months, or 11 years and 6 months after grant of the patent.
37 CFR 1.362(e) sets forth the time periods when the maintenance fees for a utility patent can be paid with surcharge. Those periods, referred to generally as the “grace period,” are the 6-month periods immediately following each due date. The grace periods are (1) 3 1/2 years and through the day of the 4th anniversary of the grant of the patent, (2) 7 1/2 years and through the day of the 8th anniversary of the grant of the patent and, (3) 11 1/2 years and through the day of the 12th anniversary of the grant of the patent. A maintenance fee may be paid with the surcharge on the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant to prevent the patent from expiring.
Maintenance fees for a reissue patent are due based upon the schedule established for the original utility patent. The filing of a request for ex parte or inter partes reexamination and/or the publication of a reexamination certificate does not alter the schedule of maintenance fee payments of the original patent.
If the day for paying a maintenance fee falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, the maintenance fee may be paid on the next succeeding day that is not a Saturday, Sunday, or federal holiday. For example, if the window period for paying a maintenance fee without a surcharge ended on a Saturday, Sunday, or a federal holiday within the District of Columbia, the maintenance fee can be paid without surcharge on the next succeeding day that is not a Saturday, Sunday, or a federal holiday within the District of Columbia. Likewise, if the grace period for paying a maintenance fee with a surcharge ended on a Saturday, Sunday, or a federal holiday within the District of Columbia, the maintenance fee can be paid with surcharge on the next succeeding day that is not a Saturday, Sunday, or a federal holiday within the District of Columbia. In the latter situation, the failure to pay the maintenance fee and surcharge on the next succeeding day that is not a Saturday, Sunday, or a federal holiday within the District of Columbia will result in the patent expiring on a date (4, 8, or 12 years after the date of grant) earlier than the last date on which the maintenance fee and surcharge could be paid. This situation results from
the provisions of 35 U.S.C. 21, but those provisions do not extend the expiration date of the patent if the maintenance fee and any required surcharge are not paid when required. For example, if the grace period for paying a maintenance fee with a surcharge ended on a Saturday, the maintenance fee and surcharge could be paid on the next succeeding business day, e.g., Monday, but the patent will have expired at midnight on Saturday if the maintenance fee and surcharge were not paid on the following Monday. Therefore, if the maintenance fee and any applicable surcharge are not paid, the patent will expire as of the end of the grace period as listed above. A patent that expires for failure of payment will expire on the anniversary date the patent was granted in the 4th, 8th, or 12th year after the grant.
2507 -2509 [Reserved]
2510 Submission of Maintenance Fee Payments and Documents [R-07.2015]
A listing of available payment options and updated mailing addresses is available on the USPTO website at www.uspto.gov/patents-maintaining-patent/ maintain-your-patent.
I. SUBMISSION OVER THE INTERNET
Maintenance fee payments can be made quickly and easily over the Internet at www.uspto.gov by electronic funds transfer (EFT), credit card or deposit account payment methods. Maintenance fee payments cannot be submitted by using EFS-Web. Maintenance fees paid online are through the Office of Finance Online Shopping Page (https://ramps.uspto.gov/eram/). See MPEP § 509 and § 2522 for additional information pertaining to payments by credit card and payments by deposit account.
II. SUBMISSION BY MAIL
Maintenance fee payments not electronically submitted over the Internet, and correspondence related to maintenance fees may be addressed to:
2500-4Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2507 -2509
Director of the United States Patent and Trademark Office Attn: Maintenance Fee 2051 Jamieson Avenue, Suite 300 Alexandria, Virginia 22314
37 CFR 1.366(b) provides that the certificate of mailing procedures of 37 CFR 1.8 or the mailing by Priority Mail Express® provisions of 37 CFR 1.10 may be utilized in paying maintenance fees. The specific requirements of either 37 CFR 1.8 or 1.10 must be fully complied with if the benefits of either are desired. See MPEP § 512 and § 513.
III. SUBMISSION BY FACSIMILE
Payment of a maintenance fee is accepted via facsimile, when charged to a deposit account or to a credit card. Credit Card Payment Form (PTO-2038) should be used if payment is made by credit card. See MPEP § 509 and § 2522. In addition, requests pertaining to post-issuance documents, such as change of correspondence address, assignment of fee address, etc., may be submitted by facsimile.
37 CFR 1.366(b) provides that the certificate of transmission procedure of 37 CFR 1.8 may be utilized in paying maintenance fees. The specific requirements of 37 CFR 1.8 must be fully complied with if the benefits thereof are desired. See MPEP § 512.
IV. SUBMISSION BY HAND DELIVERY
Maintenance fee payments may be hand-carried to the Office of Finance receptionist in Suite 300 of the Carlyle Place Building, 2051 Jamieson Avenue, Alexandria, VA 22314. Although the receptionist will not process the maintenance fee payment, if the payment is delivered with an itemized postcard, the receptionist will provide a delivery receipt by date stamping the postcard. The maintenance fee payment should be placed in an envelope with MAINTENANCE FEE written in dark ink across the envelope.
2511
-2514 [Reserved]
2515 Information Required for Submission of Maintenance Fee Payment [R-07.2015]
37 CFR 1.366 Submission of maintenance fees.
(a) The patentee may pay maintenance fees and any necessary surcharges, or any person or organization may pay maintenance fees and any necessary surcharges on behalf of a patentee. A maintenance fee transmittal letter may be signed by a juristic applicant or patent owner. A patentee need not file authorization to enable any person or organization to pay maintenance fees and any necessary surcharges on behalf of the patentee.
(b) A maintenance fee and any necessary surcharge submitted for a patent must be submitted in the amount due on the date the maintenance fee and any necessary surcharge are paid. A maintenance fee or surcharge may be paid in the manner set forth in § 1.23 or by an authorization to charge a deposit account established pursuant to § 1.25. Payment of a maintenance fee and any necessary surcharge or the authorization to charge a deposit account must be submitted within the periods set forth in § 1.362(d), (e), or (f). Any payment or authorization of maintenance fees and surcharges filed at any other time will not be accepted and will not serve as a payment of the maintenance fee except insofar as a delayed payment of the maintenance fee is accepted by the Director in an expired patent pursuant to a petition filed under § 1.378. Any authorization to charge a deposit account must authorize the immediate charging of the maintenance fee and any necessary surcharge to the deposit account. Payment of less than the required amount, payment in a manner other than that set forth in § 1.23, or in the filing of an authorization to charge a deposit account having insufficient funds will not constitute payment of a maintenance fee or surcharge on a patent. The procedures set forth in § 1.8 or § 1.10 may be utilized in paying maintenance fees and any necessary surcharges.
(c) In submitting maintenance fees and any necessary surcharges, identification of the patents for which maintenance fees are being paid must include the patent number, and the application number of the United States application for the patent on which the maintenance fee is being paid. If the payment includes identification of only the patent number ( i.e., does not identify the application number of the United States application for the patent on which the maintenance fee is being paid), the Office may apply the payment to the patent identified by patent number in the payment or may return the payment.
(d) Payment of maintenance fees and any surcharges should identify the fee being paid for each patent as to whether it is the 3 1/2-, 7 1/2-, or 11 1/2-year fee, whether small entity status is being changed or claimed, the amount of the maintenance fee and any surcharge being paid, and any assigned customer number. If the maintenance fee and any necessary surcharge is being paid on a reissue patent, the payment must identify the reissue patent by reissue patent number and reissue application number as required by paragraph (c) of this section and should also include the original patent number.
Rev. 07.2015, October 20152500-5
§ 2515MAINTENANCE FEES
(e) Maintenance fee payments and surcharge payments relating thereto must be submitted separate from any other payments for fees or charges, whether submitted in the manner set forth in § 1.23 or by an authorization to charge a deposit account. If maintenance fee and surcharge payments for more than one patent are submitted together, they should be submitted on as few sheets as possible with the patent numbers listed in increasing patent number order. If the payment submitted is insufficient to cover the maintenance fees and surcharges for all the listed patents, the payment will be applied in the order the patents are listed, beginning at the top of the listing.
(f) Notification of any change in status resulting in loss of entitlement to small entity status must be filed in a patent prior to paying, or at the time of paying, the earliest maintenance fee due after the date on which status as a small entity is no longer appropriate. See § 1.27(g).
(g) Maintenance fees and surcharges relating thereto will not be refunded except in accordance with §§ 1.26 and 1.28(a).
37 CFR 1.366 establishes the guidelines and procedures for submission of maintenance fees, including any necessary surcharges. The patentee may pay maintenance fees and any necessary surcharges or any person or organization may pay maintenance fees and any necessary surcharges on behalf of the patentee without filing in the Office evidence of authorization by the patentee to pay maintenance fees. This will enable patentees to pay the maintenance fees and any necessary surcharges themselves or authorize some person or organization to pay maintenance fees and any necessary surcharges on their behalf. No verification of the authority to pay maintenance fees and any necessary surcharges in a particular patent will be made by the Office. While anyone may pay the maintenance fees and any necessary surcharges on a patent, if the payment is accepted by the Office, any Office notices relating to maintenance fees and any necessary surcharges will be mailed to the “fee address” set forth in 37 CFR 1.363. If the payment is not accepted by the Office, it will be returned to the person who submitted the payment if a return address is available. It is strongly recommended that the payor should include a return address along with his or her telephone number since the Office may contact the payor in some instances when it is unclear to which patent the fees are to be applied. See MPEP § 2530.
A maintenance fee and any necessary surcharge for a patent must be submitted in the amount due on the date the maintenance fee and any necessary surcharge are paid, and at the proper time, i.e., within the periods set forth in 37 CFR 1.362. If the amount
of the maintenance fee is correct on the date it is paid and credited to the patent, a later change in the maintenance fees to reflect a new fee amount will not require a modification in the amount paid.
37 CFR 1.366(c) provides that a maintenance fee payment must include the patent number and the application number on which the maintenance fee is being paid. If the payment includes identification of only the patent number (i.e., does not identify the application number for the patent on which the maintenance fee is being paid), the Office may apply the payment to the patent identified by patent number in the payment or may return the payment. See MPEP § 2530. The application number required to be submitted is not that of a prior parent application, but rather the application number of the actual application that matured into the patent for which maintenance fees are to be paid. If the maintenance fee and any necessary surcharge is being paid on a reissue patent, the application number required is that of the reissue application.
If a patent expires because the maintenance fee and any necessary surcharge have not been paid in the manner required by 37 CFR 1.366, the patentee could proceed under 37 CFR 1.378 (see MPEP § 2590), if appropriate, or could file a petition under 37 CFR 1.377 (see MPEP § 2580) within the period set therein seeking to have the maintenance fee accepted as timely even though not all of the required identifying data was present prior to expiration of the grace period.
Under 37 CFR 1.366(d), the following information should also be submitted for each patent on which a maintenance fee or surcharge is paid (37 CFR 1.366(d)):
(A) the fee year (i.e., 3 1/2, 7 1/2, or 11 1/2 year fee);
(B) the amount of the maintenance fee and any surcharge being submitted;
(C) any assigned customer number; and
(D) whether entity status is being changed or claimed with the payment.
Where the payment is a maintenance fee and any necessary surcharge on a reissue patent, in addition
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2515
to the information requested for all payments, it is requested that the original patent number be furnished. Although the submission of the information requested under 37 CFR 1.366(d) is not mandatory, it would expedite the processing of maintenance fee payments.
The Maintenance Fee Transmittal Form, PTO/SB/45 should be used when submitting maintenance fees by mail or by facsimile transmission. This form is available, upon request, from the Maintenance Fee Branch. It is also available from the USPTO website (www.uspto.gov/patent/patents-forms#patent).
The Office processes fees in the order in which they are presented. If the payment submitted is insufficient to cover the maintenance fees and surcharges for all patents listed, and there is no general authorization to charge a deposit account, the payment will be applied in the order the patents are listed, beginning at the top of the listing.
2516 -2519 [Reserved]
2520 Maintenance Fee Amounts [R-07.2015]
37 CFR 1.20(e)-(h) sets the fee amounts for the maintenance fees and the grace period surcharge. The maintenance fee amounts are subject to adjustment to reflect fluctuations occurring in the Consumer Price Index pursuant to 35 U.S.C. 41(f). The maintenance fee amounts (37 CFR 1.20(e)-(h)) are subject to a 50% reduction for small entities pursuant to 35 U.S.C. 41(h) and a 75% reduction for micro entities. The Maintenance Fee Branch and the USPTO Office of Finance/USPTO Fee Information website (www.uspto.gov/learning-and-resources/ fees-and-payments) may be contacted for the current maintenance fee amounts.
The term of a patent might be shortened, e.g., by a terminal disclaimer. If a patent will expire part way between the due dates set in 35 U.S.C. 41(b), or between the latest due date and the term set in 35 U.S.C. 154, it is still required that the entire maintenance fee amount for the due date be paid. The maintenance fee amount cannot be prorated to
cover only the amount of time past the due date before the patent expires.
37 CFR 1.366(g) provides that maintenance fees and surcharges relating thereto will not be refunded except in accordance with 37 CFR 1.26 and 1.28(a). A patentee cannot obtain a refund of a maintenance fee that was due and payable on the patent. Any duplicate payment will be refunded to the fee submitter.
2521 [Reserved]
2522 Methods of Payment [R-08.2012]
The method of payment for the maintenance fee and any necessary surcharge is set forth in 37 CFR 1.23. The payment shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order as provided in 37 CFR 1.23(a). If the maintenance fee and any necessary surcharge is sent in any other form, the Office may delay or cancel the credit until collection is made. For example, a personal or other uncertified check drawn on a U.S. bank that is not immediately negotiable, e.g., because it lacks a signature or due to insufficient funds, will not constitute payment of a maintenance fee and/or surcharge.
The maintenance fee can be charged to a credit card as set forth in 37 CFR 1.23(b), but credit for the payment is subject to actual receipt of the fee by the Office. Credit Card Payment Form (PTO-2038) should be used for payment of fees by credit card unless the payment is submitted over the Internet. If credit card information is provided on a form or document other than the form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge. See MPEP § 509.
Any remittance from a foreign country must be payable and immediately negotiable in the United States for the full amount of the maintenance fee and/or surcharge required.
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§ 2522MAINTENANCE FEES
37 CFR 1.366(b) provides that maintenance fees and any necessary surcharge may be paid by authorization to charge a deposit account established pursuant to 37 CFR 1.25. The authorization to charge the deposit account must be submitted within an appropriate window or grace period and must be limited to maintenance fees and surcharges payable on the date of submission. The authorization to charge the deposit account cannot be submitted prior to the third, seventh, or eleventh year after grant of the patent. If an authorization to charge a deposit account were submitted to pay the maintenance fee due at 3 years and 6 months after grant, a new authorization to charge a deposit account or other form of payment will have to be submitted at the appropriate time for each of the maintenance fees due at 7 years and 6 months and 11 years and 6 months. Any payment or authorization filed at any time other than that set forth in 37 CFR 1.362(d), (e), or (f) will not serve as a payment of the maintenance fee, except insofar as a delayed payment of the maintenance fee is accepted by the Commissioner pursuant to 37 CFR 1.378. See MPEP § 2590. A payment of less than the required amount, a payment in a manner other than that set forth in 37 CFR 1.23, or the filing of an authorization to charge a deposit account having insufficient funds, will not constitute payment of a maintenance fee on a patent. The authorization is required to permit the immediate charging of the maintenance fee to the deposit account.An authorization would be improper if it only authorized the maintenance fee to be charged at a later date, e.g., on the last possible day of payment without surcharge. Such an authorization would not serve as payment of the maintenance fee. Any payment which fails to result in the entire proper amount of the maintenance fee being present on the due date will not constitute payment of the maintenance fee.
Maintenance fee payments and any surcharges relating thereto must be submitted separately from any other payments for fees or charges, whether submitted in the manner set forth in 37 CFR 1.23 or by authorization to charge a deposit account. See 37 CFR 1.366(e). Maintenance fee payments and surcharge payments relating thereto that are commingled with payments for other fees or charges, e.g., application filing fees, issue fees, document supply fees, etc., will not be accepted. Maintenance
fees require processing by a separate area of the Office and are not processed in the same manner as other fees and charges. Maintenance fees for a number of patents can be submitted together in one submission and one payment. 37 CFR 1.366(e) specifies that if maintenance fee payments for more than one patent are submitted together, they should be submitted on as few sheets as possible, listing the patent numbers in increasing patent number order. If the payment submitted is insufficient to cover the maintenance fees and any surcharges for all the listed patents, the payment will be applied in the order the patents are listed. In such a circumstance the maintenance fee and any surcharge for one or more of the last listed patents will not be paid.
Money orders and checks must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted. See 37 CFR 1.23(a)). Remittances from foreign countries must be payable and immediately negotiable in the United States for the full amount required.
It is not suggested that cash be sent by mail. However, if cash is sent it will be at the risk of the sender and should be sent via registered mail.
2523 -2529 [Reserved]
2530 Special Acceptance of Maintenance Fee Payments Containing Informalities [R-07.2015]
It is strongly recommended that a maintenance fee submission by mail or facsimile include both a telephone number and a mailing address for the fee submitter because, provided the fee is sufficient, the Office may attempt to contact the submitter by telephone and/or by mail to confirm the patent to which the fee is to be applied. If the Office specially accepts a payment under any one of scenarios I – III below, a Notice of Special Acceptance of Patent Maintenance Fee (PTO-2143) will be mailed to the submitter that identifies the patent number and application number to which the maintenance fee
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2523 -2529
was applied and requests the submitter to verify that the payment was applied as intended. If the payment was not applied to the intended patent, a petition (such as a petition under 37 CFR 1.377) must be filed. If the petition is not filed within 2 months of the date of the notice (PTO-2143), the petition may be dismissed as untimely, and relief may have to be pursued under 37 CFR 1.378(a-c).
I. PATENT NUMBER SUPPLIED BUT NO APPLICATION NUMBER SUPPLIED
If a maintenance fee payment identifies only the patent number (i.e., does not identify the application number for the patent on which the maintenance fee is being paid), the Office may apply the payment to the patent identified by the patent number in the payment or may return the payment. See 37 CFR 1.366(c).
II. PATENT NUMBER AND APPLICATION NUMBER SUPPLIED BUT THEY DO NOT CORRESPOND
When a patent number and an application number are both supplied, but they do not correspond to the same patent, the Office will generally apply the payment to the patent identified by the patent number, if possible. Even if the payment is sufficient and timely to pay the maintenance fee due in the patent identified by the patent number, the Office may return the payment if additional information on the payment submission is inconsistent with the patent identified by the patent number. The Office may even apply the payment to the patent identified by the application number if the additional information corroborates that patent. Such may be the case, for example, where the fee submitter is the addressee named in the correspondence address or fee address of the patent identified by the application number.
III. NO PATENT NUMBER SUPPLIED BUT APPLICATION NUMBER SUPPLIED
If a maintenance fee is due on the patent identified by the application number and the payment submitted is sufficient, the Office may apply the payment to the patent (provided additional
corroborating information is present) or may return the payment.
2531 Payment Late or Insufficient [R-07.2015]
Examples of when a payment of maintenance fees and any necessary surcharges will be considered to be late or insufficient include instances when:
(A) Though a payment was received, additional funds are required due to surcharge or fee increase;
(B) Though a payment was received in an amount for small entity, the patented file records do not indicate that an assertion of small entity status was received; or
(C) The payment was received after the patent expired.
If the Office considers a payment to be late or insufficient, a notice (e.g., a Notice of Non-Acceptance of Patent Maintenance Fee (PTO-2142)) will be sent to the “fee submitter.” Reply to the notice is required prior to expiration of the grace period provided by 37 CFR 1.362(e) in order to avoid the expiration of the patent. If a reply is not received prior to expiration of the patent, then an appropriate petition under 37 CFR 1.377 or 37 CFR 1.378 is required. See MPEP § 2580 and § 2590.
If a payment is deemed insufficient because the payment was submitted in a discounted amount but entitlement to the entity status (small or micro) corresponding to the discounted amount was not established, an Underpayment Notice or Non-Acceptance Notice will be mailed to the fee submitter. See MPEP § 2550 for information on establishing or changing an entity status for the purpose of paying a maintenance fee.
2532 Duplicate Payments [R-08.2012]
In the event a maintenance fee is submitted (hereafter, duplicate payment) in the required amount (including any necessary surcharge) within the payment window for the patent identified for payment, but the same maintenance fee for that patent was already paid by a previous fee submitter
Rev. 07.2015, October 20152500-9
§ 2532MAINTENANCE FEES
(hereafter, first fee submitter), the Office intends to treat the duplicate from the second fee submitter as follows:
(A) If the duplicate payment does not comply with 37 CFR 1.366(c) by not containing both the patent number and the corroborating application number, the Office will return the duplicate payment to the second fee submitter with an indication that the maintenance fee for the patent was already paid.
(B) If the duplicate payment does comply with 37 CFR 1.366(c) by containing both the patent number and the corroborating application number, the Office will verify that the first payment was properly processed.
(1) If the first payment was properly processed, the Office will return the duplicate payment to the second fee submitter. In this event the returned payment will be accompanied by identification of the first fee submitter.
(2) If a review of the Office record of the first maintenance fee payment reveals that the first payment was not properly processed (e.g., did not comply with 37 CFR 1.366(c) or was not specially accepted in accordance with MPEP § 2530), the Office will attempt to determine whether the first payment should have been applied to a patent other than the patent identified under 37 CFR 1.366(c) by the second fee submitter. Based on this determination the Office will: (a) attempt to apply the duplicate payment (and retract the first payment); or (b) return the duplicate payment to the second fee submitter with identification of the first fee submitter.
2533 -2539 [Reserved]
2540 Fee Address for Maintenance Fee Purposes [R-07.2015]
37 CFR 1.363 Fee address for maintenance fee purposes.
(a) All notices, receipts, refunds, and other communications relating to payment or refund of maintenance fees will be directed to the correspondence address used during prosecution of the application as indicated in § 1.33(a) unless:
(1) A fee address for purposes of payment of maintenance fees is set forth when submitting the issue fee, or
(2) A change in the correspondence address for all purposes is filed after payment of the issue fee, or
(3) A fee address or a change in the “fee address” is filed for purposes of receiving notices, receipts and other correspondence relating to the payment of maintenance fees after the payment of the issue fee, in which instance, the latest such address will be used.
(b) An assignment of a patent application or patent does not result in a change of the “correspondence address” or “fee address” for maintenance fee purposes.
(c) A fee address must be an address associated with a Customer Number.
Generally, notices, receipts, and other communications relating to the payment of a maintenance fee will be directed to the correspondence address used during the prosecution of the application, unless a “fee address” for the purpose of payment of the maintenance fee has been designated or a change in the correspondence address has been made (see MPEP § 2542). 37 CFR 1.33(d) allows a correspondence address or change thereto to be filed during the enforceable life of the patent. Patentees should ensure that the Office is properly notified of the proper “fee address” to which all maintenance fee communications are to be directed.
Under the statutes and rules, the Office has no duty to notify patentee of the requirement to pay maintenance fees or to notify patentee when the maintenance fee is due. It is solely the responsibility of the patentee to ensure that the maintenance fee is paid timely to prevent expiration of the patent. The failure to receive the reminder notice will not shift the burden of monitoring the time for paying a maintenance fee from the patentee to the Office. The Office will attempt to assist patentees through the mailing of a Maintenance Fee Reminder in the grace period. However, the failure to receive a Maintenance Fee Reminder will not relieve the patentee of the obligation to timely pay the appropriate maintenance fee to prevent expiration of the patent. See In re Patent No. 4,409,763, 7 USPQ2d 1798 (Comm’r Pat. 1988), aff’d sub nom. Rydeen v. Quigg, 748 F. Supp. 900, 16 USPQ2d 1876 (D.D.C. 1990), aff’d, 937 F.2d 623 (Fed. Cir. 1991) (table), cert. denied, 502 U.S. 1075 (1992). Maintenance fee correspondence will not be directed to more than one address.
37 CFR 1.363(c) states that “[a] fee address must be an address associated with a Customer Number.” Only an address represented by a customer number
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2533 -2539
can be established as the fee address for maintenance fee purposes. The use of the following form(s) is suggested when requesting establishment of a fee address: a current version of the “Fee Address” Indication Form (PTO/SB/47), and if necessary, a Request for Customer Number (PTO/SB/125). If a customer number was previously acquired from the Office for the address being designated as the fee address, that customer number should be entered on the “Fee Address” Indication Form (PTO/SB/47) to make the fee address designation. If no customer number was previously acquired from the Office for the address being designated as the fee address, then the “Fee Address” Indication Form (PTO/SB/47) should be accompanied by a completed Request for Customer Number (form PTO/SB/125). See MPEP § 403 concerning customer number practice.
It is recommended that only a current version of the “Fee Address” Indication Form (PTO/SB/47) available from the USPTO website (www.uspto.gov/patent/patents-forms) be used when designating a fee address.
At the time of issue fee payment, applicants may designate a fee address by submitting a “Fee Address” Indication Form (PTO/SB/47) as an attachment to the Issue Fee Transmittal (PTOL-85B). After issue fee payment, applicants may designate a fee address by submitting a “Fee Address” Indication Form (PTO/SB/47), and if necessary, a Request for Customer Number (PTO/SB/125), to the address specified on the “FeeAddress” Indication Form (PTO/SB/47).
All fee addresses established at the Office will be represented by a customer number, even if the fee address designation lacks an explicit request that a customer number be used for this purpose (e.g., in the event that an outdated “Fee Address” Indication Form (PTO/SB/47), or equivalent form, is submitted without an accompanying Request for Customer Number (PTO/SB/125)).
The current version of the “Fee Address” Indication Form (PTO/SB/47) is available upon request from the Maintenance Fee Branch and from the USPTO website (www.uspto.gov). The Request for Customer Number (PTO/SB/125) is available upon request from the Electronic Business Center and
from the USPTO website (www.uspto.gov). Requests for the establishment of a fee address should be submitted to the Maintenance Fee Branch prior to or at the time of payment of maintenance fees in order to ensure that receipt of payment is directed to the fee address.
Additional patent numbers may be assigned to a customer number at any time, upon written request.
2541 [Reserved]
2542 Change of Correspondence Address [R-07.2015]
Unless a fee address has been designated, notices, receipts, and other communications relating to the patent will generally be directed to the correspondence address (37 CFR 1.33) used during the prosecution of the application. Practitioners of record when the patent issues who do not wish to receive correspondence relating to maintenance fees must change the correspondence address in the patented file or provide a fee address to which such correspondence should be sent. It is not required that a practitioner file a request for permission to withdraw pursuant to 37 CFR 1.36 solely for the purpose of changing the correspondence address in a patented file.
The correspondence address should be updated or changed as necessary to ensure that all communications are received in a timely manner. A change of correspondence address may be made as provided in pre-AIA 37 CFR 1.33(a) or 37 CFR 1.33(a). The correspondence address may be changed as provided in pre-AIA 37 CFR 1.33(a)(1) prior to the filing of an oath or declaration. After an oath or declaration has been executed and filed by at least one inventor, the correspondence address may be changed as provided in pre-AIA 37 CFR 1.33(a)(2).
Requests for a change of the correspondence address may be sent to the Office of Patent Application Processing during the enforceable life of the patent. To ensure accuracy and to expedite requests for change to the correspondence address, it is suggested that the request include both the patent number and
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§ 2542MAINTENANCE FEES
the application number. The Office form, Change of Correspondence Address, Application (PTO/SB/122) may be used to request a change of correspondence address in a patent application. The Office form, Change of Correspondence Address, Patent (PTO/SB/123) may be used to request a change of correspondence address for an issued patent.
2543 -2549 [Reserved]
2550 Entity Status Discounts [R-07.2015]
I. CLAIMING ENTITLEMENT TO AN ENTITY STATUS DISCOUNT
Reduced maintenance fees are available for patentees that can establish entitlement to small or micro entity status.
In order to establish small entity status for the purpose of paying a maintenance fee, a written assertion of entitlement to small entity status must be filed prior to or with the maintenance fee paid as a small entity. 37 CFR 1.27(c)(2) specifies who can sign and file the written assertion of small entity status. A written assertion of small entity status is only required to be filed once and will remain effective until changed. See MPEP §§ 509.02 and 509.03 regarding the requirements for qualifying as a small entity and the requirements for making an assertion of small entity status.
In order to establish micro entity status for the purpose of paying a maintenance fee, a written certification of micro entity status must be filed prior to or at the time the maintenance fee is paid in the micro entity amount. A certification of micro entity status must be signed by a person authorized under 37 CFR 1.33(b). See MPEP § 509.04 regarding the requirements for qualifying as a micro entity as well as the requirements for certifying micro entity status.
The refund provisions of 37 CFR 1.28(a) for later submitted small entity assertions do apply to maintenance fees. However, the process in 37 CFR 1.28(a) for later establishment of small entity status
is not applicable to later submitted micro entity certifications. Accordingly, no refunds are available for later establishment of micro entity status.
II. REMOVAL OF ENTITY STATUS
Notification of any change in status resulting in loss of entitlement to an entity status must be filed in a patent prior to paying, or at the time of paying, the earliest maintenance fee due after the date on which status as a small or micro entity is no longer appropriate. 37 CFR 1.27(g)(2) requires that a notification of loss of entitlement to small entity status be in the form of a specific written notification, rather than only payment of a non-small entity fee. Similarly, 37 CFR 1.29(i) provides that notification of a loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity is no longer appropriate. See MPEP § 509.04(e) for further information regarding notifying the Office of a loss of entitlement to micro entity status, including notifying the Office of a loss of entitlement to both micro and small entity status. All notifications to the Office regarding loss of entity status must be signed by a party identified in 37 CFR 1.33(b). 37 CFR 1.366(f) serves as a reminder to patentees of the necessity to check for the loss of small entity status prior to paying each maintenance fee on a patent. This is also a requirement of 37 CFR 1.27(g). Similarly 37 CFR 1.29(g) serves as a reminder of the necessity to check for the loss of micro entity status prior to paying any fee in the micro entity amount.
If status as a small or micro entity has been previously established by filing an assertion of small entity status or certification of micro entity status, and such status is checked and found to be proper, no notification is required. It is not necessary to file a new assertion establishing small or micro entity status at this point if the status as a small or micro entity has been established and is still proper. After establishing small or micro entity status, it is not necessary to file a new assertion of small entity status or certification of micro entity status, even if rights have been transferred from one small entity to another, or from one micro entity to another. The requirement is to notify the Office of the loss of
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2543 -2549
entitlement and to pay the maintenance fee in the proper amount, where appropriate.
III. PAYMENTS NOT MATCHING THE ENTITY STATUS OF RECORD
If a payment is submitted that conflicts with the Office record of the patentee’s entity status, a notice relating to entity status will be sent to the fee submitter. An Overpayment Notice will be sent if Office records indicate establishment of an entity status (small or micro) entitling the patentee to a reduction in the fee amount submitted. An Underpayment Notice will be sent if Office records indicate that the patentee has not established entitlement to the entity status (small or micro) corresponding to the discounted amount submitted.
Where an Overpayment Notice is sent, the required reply depends on whether the entity status of record is correct. If the patentee determines entitlement to the entity status of record no longer exists or cannot be verified, the appropriate loss of entitlement notification must be filed. See 37 CFR 1.27(g)(2) regarding notification of loss of entitlement to small entity status. See 37 CFR 1.29(i) regarding notification of loss of entitlement to micro entity status. The loss of entitlement notification must be filed by mail, facsimile, or EFS-Web because the online payment system cannot accept entity status documents. A non-extendable ONE MONTH period from the mailing date of the notice will be provided for filing a notification of loss of entitlement to small or micro entity status. However, if additional money is required to complete an undiscounted payment of the maintenance fee and any required surcharge under 37 CFR 1.362(e), the reply (including the additional money and the loss of entity status entitlement notice) must be filed within the earlier of: (A) the non-extendable ONE MONTH period from the mailing date of the notice; or (B) any time remaining under 37 CFR 1.362, including the grace period provided by 37 CFR 1.362(e).Absent a timely reply to the Overpayment Notice, the Office will apply the maintenance fee in the reduced amount corresponding to the entity status of record and refund the overpayment amount. Accordingly, if the patentee is actually entitled to the entity status of record, no reply to the Overpayment Notice is necessary.
Where an Underpayment Notice is sent, the required reply depends on whether the entity status of record is correct. If the patentee determines that the entity status of record is correct, the reply including the additional money required for a sufficient payment in the correct higher amount, including any necessary surcharge under 37 CFR 1.362(e), must be timely filed. If the patentee determines the entity status of record is not correct, the reply must include any additionally required money including any necessary surcharge under 37 CFR 1.362(e), and the appropriate entity status document (e.g., written assertion of small entity status under 37 CFR 1.27 or certification of micro entity status under 37 CFR 1.29). The entity status document must be filed by mail, facsimile, or EFS-Web because the online payment system cannot accept entity status documents. Whether or not the entity status of record is correct, the reply must be filed within the earlier of: (A) a non-extendable ONE MONTH period from the mailing date of the notice; or (B) any time remaining under 37 CFR 1.362, including the grace period provided by 37 CFR 1.362(e). Note that if a previously unpaid surcharge under 37 CFR 1.362(e) has come due by the time the reply is filed, sufficient payment will require payment of the surcharge as well as any additional money required to complete the required maintenance fee amount. Absent a timely reply to the Underpayment Notice, the Office will return the amount received. If the amount received was returned, payment of the maintenance fee and any necessary surcharge in the correct amount must be filed within the time remaining under 37 CFR 1.362, including the grace period provided by 37 CFR 1.362(e). Note that an entity status document may also be required to be filed with the payment in order to establish what the correct amount is (e.g., if the patentee determines that the entity status of record is not correct). If the payment was returned and there is no time remaining in the grace period provided by 37 CFR 1.362(e), a petition under 37 CFR 1.378 for acceptance of a delayed maintenance fee payment must be filed in order to seek acceptance of an unintentionally delayed maintenance fee. See MPEP § 2590.
2551
Rev. 07.2015, October 20152500-13
§ 2551 -2559
MAINTENANCE FEES
-2559 [Reserved]
2560 Revocation of Power of Attorney and Withdrawal of Attorney [R-07.2015]
The revocation or withdrawal of an attorney may be submitted at any time; however, a revocation or withdrawal of an attorney filed after issuance of a patent is not normally processed.
It should be noted that an assignment does not act as a revocation of power of attorney for authorization previously given. However, the assignee may revoke a previous power of attorney. See 37 CFR 3.71 and 3.73.
2561 -2569 [Reserved]
2570 Maintenance Fee Payment Status Requests [R-07.2015]
The Maintenance Fee Branch will respond to requests for the maintenance fee payment status of patents. Maintenance fee status can be requested by telephone. Telephone status requests are limited to two patent numbers per telephone call. In addition, maintenance fee status information is available over the Internet at https://ramps.uspto.gov/ eram/patentMaintFees.do. See MPEP § 1730 for the telephone number.
2571 -2574 [Reserved]
2575 Notices [R-07.2015]
Under the statutes and the regulations, the Office has no duty to notify patentees when their maintenance fees are due. It is the responsibility of the patentee to ensure that the maintenance fees are paid to prevent expiration of the patent. The Office will, however, provide some notices as reminders that maintenance fees are due, but the notices, errors in the notices or in their delivery, or the lack or
tardiness of notices will in no way relieve a patentee from the responsibility to make timely payment of each maintenance fee to prevent the patent from expiring by operation of law. The notices provided by the Office are courtesies in nature and intended to aid patentees. The Office’s provision of notices in no way shifts the burden of monitoring the time for paying maintenance fees on patents from the patentee to the Office.
I. PREPRINTED STANDARD NOTICES
The patent grant currently includes a reminder notice that maintenance fees may be due. The Notice of Allowance currently includes a reminder notice that maintenance fees may be due.
II. OFFICIAL GAZETTE NOTICE
A notice will appear in each issue of the Official Gazette which will indicate which patents have been granted 3, 7, and 11 years earlier, that the window period has opened, and that maintenance fee payments will now be accepted for those patents.
Another Official Gazette notice published after expiration of the grace period will indicate any patent which has expired due to nonpayment of maintenance fees and any patents which have been reinstated.An annual compilation of such expirations and reinstatements will also be published.
III. MAINTENANCE FEE REMINDERS
Since patentees are expected to maintain their own record and docketing systems and since it is expected that most patentees will pay their maintenance fees during the window period to avoid payment of a surcharge, the Office will not send any reminder notices to the patentee until after the grace period has begun. This will reduce and simplify the mailing of notices but still give patentees an opportunity to pay their maintenance fee with surcharge during the grace period before expiration of their patents. The Office will mail any Maintenance Fee Reminder to the fee address as set forth in 37 CFR 1.363. See MPEP § 2540.
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IV. RECEIPT NOTICES
Upon request, the Office will issue a receipt for payment of maintenance fees submitted by mail or facsimile after entry of the maintenance fee payment. Such a receipt, which is sent to the fee address (if no fee address, then the correspondence address), will provide an opportunity for the patentee or fee submitter to check if the Office has properly credited the payment.
V. EXPIRATION NOTICES
The Office will mail a Notice of Patent Expiration to the fee address as set forth in 37 CFR 1.363 when Office records indicate that a patent has expired for failure to pay a required maintenance fee.
2576 -2579 [Reserved]
2580 Review of Decision Refusing to Accept and Record Payment of a Maintenance Fee Filed Prior to Expiration of Patent [R-07.2015]
37 CFR 1.377 Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.
(a) Any patentee who is dissatisfied with the refusal of the Patent and Trademark Office to accept and record a maintenance fee which was filed prior to the expiration of the patent may petition the Director to accept and record the maintenance fee.
(b) Any petition under this section must be filed within two months of the action complained of, or within such other time as may be set in the action complained of, and must be accompanied by the fee set forth in § 1.17(g). The petition may include a request that the petition fee be refunded if the refusal to accept and record the maintenance fee is determined to result from an error by the Patent and Trademark Office.
(c) Any petition filed under this section must comply with the requirements of § 1.181(b) and must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest.
37 CFR 1.377 provides a mechanism for review of a decision refusing to accept and record payment of a maintenance fee filed prior to the expiration of a patent. 37 CFR 1.377(a) permits a patentee who is dissatisfied with the refusal of the Office to accept and record a maintenance fee which was filed prior
to the expiration of the patent to petition the Director to accept and record the maintenance fee. This petition may be used, for example, in situations where an error is present in the identifying data required by 37 CFR 1.366(c) with the maintenance fee payment, i.e., either the patent number or the application number is incorrect. See MPEP § 2515 and § 2530. A petition under 37 CFR 1.377 would not be appropriate where there is a complete failure to include at least one correct mandatory identifier as required by 37 CFR 1.366(c) for the patent since no evidence would be present as to the patent on which the maintenance fee was intended to be paid. If the maintenance fee payment with an incorrect mandatory identifier was made near the end of the grace period, the patent might expire since the Office would not credit the fee to the patent. A petition under 37 CFR 1.377 would not be appropriate where the patentee paid a maintenance fee on one patent when the patentee intended to pay the maintenance fee on a different patent but through error identified the wrong patent number and application number. Likewise, a petition under 37 CFR 1.377 would not be appropriate where the entire maintenance fee payment, including any necessary surcharge, was not filed prior to expiration of the patent.
Any petition filed under 37 CFR 1.377 must be filed within 2 months of the action complained of, or within such other time as may be set in the action complained of. The petition must be accompanied by the proper petition fee (37 CFR 1.17(g)). The petition may include a request that the petition fee be refunded if the refusal to accept and record the maintenance fee is determined to have resulted from an error by the Office.
Any petition filed under 37 CFR 1.377 must comply with the requirements of 37 CFR 1.181(b) and must be signed by an attorney or agent registered to practice before the Office, or by the patentee, the assignee, or other party in interest. A person or organization whose only responsibility insofar as the patent is concerned is the payment of a maintenance fee is not a party in interest for purposes 37 CFR 1.377. If the petition is signed by a person not registered to practice before the Office, the petition must indicate whether the person signing the petition is the patentee, assignee, or other party in interest. An assignee must comply with the
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requirements of pre-AIA 37 CFR 3.73(b), for applications filed prior to September 16, 2012 or 37 CFR 3.73(c) for applications filed on or after September 16, 2012, which are discussed in MPEP §§ 324 and 325, respectively.
Any petition under 37 CFR 1.377 should be marked on the front page of the communication to the attention of the Office of Petitions and addressed as follows:
Mail Stop Petition Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450
2581 -2589 [Reserved]
2590 Acceptance of Delayed Payment of Maintenance Fee in Expired Patent to Reinstate Patent [R-07.2015]
37 CFR 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
(a) The Director may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director to have been unintentional. If the Director accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired, but will be subject to the conditions set forth in 35 U.S.C. 41(c)(2).
(b) Any petition to accept an unintentionally delayed payment of a maintenance fee must include:
(1) the required maintenance fee set forth in § 1.20(e) through (g);
(2) the petition fee as set forth in § 1.17(m); and
(3) A statement that the delay in payment of the maintenance fee was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(c) Any petition under this section must be signed in compliance with § 1.33(b).
(d) Reconsideration of a decision refusing to accept a delayed maintenance fee may be obtained by filing a petition for reconsideration within two months of the decision, or such other time as set in the decision refusing to accept the delayed payment of the maintenance fee.
(e) If the delayed payment of the maintenance fee is not accepted, the maintenance fee will be refunded following the decision on the petition for reconsideration, or after the
expiration of the time for filing such a petition for reconsideration, if none is filed.
37 CFR 1.378(a) provides that the Director of the Office may accept the payment of any maintenance fee due on a patent based on an expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director of the Office to have been unintentional. The appropriate petition fee set forth in 37 CFR 1.17(m) must be paid as a condition of accepting payment of the maintenance fee. If multiple maintenance fees due on a single patent have not been paid, a separate petition fee is required for each delayed maintenance fee payment. A statement that the delay in payment of the maintenance fee was unintentional is also required with respect to each delayed maintenance fee payment. While the patentee can include the statements of unintentional delay in a single petition (if desired), a separate petition fee is required for each delayed maintenance fee payment. If the Director of the Office accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired but will be subject to the intervening rights and provisions of 35 U.S.C. 41(c)(2).
Any petition under 37 CFR 1.378(b) should be marked on the front page of the communication to the attention of the Office of Petitions and addressed as follows:
Mail Stop Petition Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450
For applications filed on or after September 16, 2012, 37 CFR 1.33(b) requires that amendments and other papers be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant (37 CFR 1.42). 37 CFR 1.33(b) further provides that, unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
For applications filed prior to September 16, 2012, pre-AIA 37 CFR 1.33(b) requires that amendments and other papers be signed by: (1) A patent practitioner of record appointed in compliance with
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pre-AIA 37 CFR 1.32(b); (2) A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; (3) An assignee as provided for under pre-AIA 37 CFR 3.71(b) of this chapter; or (4) All of the applicants (pre-AIA 37 CFR 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with pre-AIA 37 CFR 3.71 of this chapter.
37 CFR 1.378(d) provides a mechanism for obtaining reconsideration of a decision refusing to accept a maintenance fee upon petition filed pursuant to paragraph (a). This mechanism is a petition for reconsideration which may be filed within 2 months of, or such other time as set in, the decision refusing to accept the delayed payment of the maintenance fee. After a decision on the petition for reconsideration, no further reconsideration or review of the matter will be undertaken by the Director of the Office. The maintenance fee submitted will be refunded if the delayed payment of the maintenance fee is not accepted. The refund will be made following the decision on the petition for reconsideration, or after the expiration of the time for filing such a petition for reconsideration, if none is filed.
I. UNINTENTIONAL DELAY
Under 35 U.S.C. 41(c)(1), the Director of the Office may accept late payment of any maintenance fee filed after the 6-month grace period, if the delay in payment is shown to the satisfaction of the Director of the Office to have been unintentional. See MPEP § 711.03(c) for a general discussion of the “unintentional” delay standard.
In addition to the timeliness deadline set forth in the preceding paragraph, a petition filed under the unintentional standard of 37 CFR 1.378(b) must include:
(A) the required maintenance fee set forth in 37 CFR 1.20(e) through (g);
(B) the petition fee set forth in 37 CFR 1.17(m); and
(C) a statement that the delay in payment of the maintenance fee was unintentional.
A person seeking reinstatement of an expired patent should not make a statement that the delay in payment of the maintenance fee was unintentional unless the entire delay was unintentional, including the period from discovery that the maintenance fee was not timely paid until payment of the maintenance fee. For example, a statement that the delay in payment of the maintenance fee was unintentional would not be proper when the patentee becomes aware of an unintentional failure to timely pay the maintenance fee and then intentionally delays filing a petition for reinstatement of the patent under 37 CFR 1.378.
Petitions to accept unintentionally delayed payment of a maintenance fee in an expired patent, if expired for two years or less, can be processed electronically, and immediately, by the applicant using the EFS-Web version of the SB/66 form found on the USPTO forms website at www.uspto. gov/patent/patents-forms. An immediate decision regarding the petitions will be rendered. The EFS-Web version of the SB/66 form should not be used if applicant wishes the petition to be processed by the Office of Petitions.
If applicant does not want immediate processing, but would prefer to submit the petition to the Office of Petitions for processing in due course, or if the patent has been expired for more than two years, applicant should use PTO/SB/66 form found on the USPTO forms website at www.uspto. gov/patent/patents-forms.
2591 Intervening Rights in Reinstated Patents [R-08.2012]
Intervening rights in reinstated patents are provided by 35 U.S.C. 41(c)(2) which is reproduced in MPEP § 2501. No patent, the term of which has been maintained as a result of the acceptance of a late payment of a maintenance fee, shall abridge or affect the right of any person or his or her successors in business who made, purchased, imported, or used after the 6-month grace period but prior to the acceptance of the late maintenance fee anything protected by the patent, to continue the use or importation of, or to sell to others to be used or sold, the specific things made, purchased, imported, or used. A court before which such matter is in question
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may provide for the continued manufacture, use, importation, or sale of the thing made, purchased, imported, or used as specified, or for the manufacture, use, importation, or sale of which substantial preparation was made after the 6-month grace period but before the acceptance of the late maintenance fee, and it may also provide for the continued practice of any process, practiced, or for the practice of which substantial preparation was made, after the 6-month grace period but prior to the acceptance of the late maintenance fee, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced after the 6-month grace period but before the acceptance of the late maintenance fee.
2592
-2594 [Reserved]
2595 Forms [R-07.2015]
The following forms are suggested when submitting a maintenance fee or establishing a fee address for maintenance fee purposes. “Maintenance Fee Transmittal Form,” Form PTO/SB 45; and “‘Fee Address’ Indication Form,” Form PTO/SB/47.
Form PTO/SB/125 (“Request for Customer Number”) may be used to request a customer number. Form PTO/SB/66 (“Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b))”) may be used to file a petition under 37 CFR 1.378(b).
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§ 2595MAINTENANCE FEES
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Chapter 2600 Optional Inter Partes Reexamination
Introduction2601 Flowcharts2601.01
Citation of Prior Art2602 [Reserved]2603
-2608 Inter Partes Reexamination2609 Request for Inter Partes Reexamination2610 Time for Requesting Inter Partes Reexamination
2611
Persons Who May File a Request2612 Representative of Requester2613 Content of Request for Inter Partes Reexamination
2614
Fee for Requesting Inter Partes Reexamination
2615
Substantial New Question of Patentability/Reasonable Likelihood That Requester Will Prevail
2616
Statement in the Request Applying Prior Art
2617
Copies of Prior Art (Patents and Printed Publications)
2618
Copy of Printed Patent2619 Certificate of Service2620 [Reserved]2621 Address of Patent Owner2622 Withdrawal of Attorney or Agent2623 Correspondence2624 Untimely Paper Filed Prior to First Office Action
2625
Initial Processing of Request for Inter Partes Reexamination
2626
Incomplete Request for Inter Partes Reexamination
2627
[Reserved]2628 Notice of Request for Inter Partes Reexamination in Official Gazette
2629
Constructive Notice to Patent Owner2630 Processing of Request Corrections2631 Public Access2632
Determining If a Reexamination Request Was Filed for a Patent
2632.01
[Reserved]2633 Fee Processing and Procedure2634 Record Systems2635 Assignment of Reexamination2636 [Reserved]2637 Time Reporting2638 [Reserved]2639 Decision on Request2640 Time for Deciding Request2641
Criteria for Deciding Request2642 Claims Considered in Deciding Request2643 Prior Art on Which the Determination Is Based
2644
[Reserved]2645 Decision Ordering Reexamination2646 Decision Denying Reexamination2647
Examples of Decisions on Requests2647.01 Processing of Decision2647.02
Petition From Denial of Request2648 [Reserved]2649
-2653 Conduct of Inter Partes Reexamination Proceedings
2654
Who Reexamines2655 Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination
2656
Listing of Prior Art2657 Scope of Inter Partes Reexamination2658 Res Judicata and Collateral Estoppel in Reexamination Proceedings
2659
First Office Action2660 [Reserved]2660.01 The Title2660.02 Dependent Claims2660.03
Special Status for Action2661 Time for Response and Comments2662 [Reserved]2663 Mailing of Office Action2664 Extension of Time for Patent Owner Response
2665
Patent Owner Response to Office Action
2666
Amendment by Patent Owner2666.01 Correction of Patent Drawings2666.02 Correction of Inventorship2666.03 Fees for Adding Claims2666.04 Third Party Comments After Patent Owner Response
2666.05
Service of Papers2666.06 [Reserved]2666.07
-2666.09 Patent Owner Does Not Respond to Office Action
2666.10
[Reserved]2666.11 -2666.19
Third Party Does Not Comment After Patent Owner Response
2666.20
[Reserved]2666.21 -2666.29
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Submission Not Fully Responsive to Non-final Office Action
2666.30
[Reserved]2666.31 -2666.39
Patent Owner Completion of Response and Third Party Comments Thereon
2666.40
[Reserved]2666.41 -2666.49
Examiner Issues Notice of Defective Paper in Inter Partes Reexamination
2666.50
[Reserved]2666.51 -2666.59
Response by Patent Owner/Third Party to Notice of Defective Paper
2666.60
Handling of Inappropriate or Untimely Filed Papers
2667
Petition for Entry of Late Papers for Revival of Reexamination Proceeding
2668
[Reserved]2669 Clerical Handling2670 Examiner Action Following Response/Comments or Expiration of Time for Same
2671
Examiner Issues Action on Merits That Does Not Close Prosecution
2671.01
Examiner Issues Action Closing Prosecution (ACP)
2671.02
Panel Review2671.03 Patent Owner Comments/Amendment After ACP and Third Party Requester Responsive Comments
2672
Examiner Consideration of Submissions After ACP and Further Action
2673
Reopening Prosecution After ACP2673.01 Examiner Issues Right of Appeal Notice (RAN)
2673.02
Appeal in Inter Partes Reexamination2674 Cross Appeal After Original Appeal2674.01
Appellant Brief2675 Respondent Brief2675.01 Informalities in One or More of the Briefs
2675.02
Appeal Conference2676 Examiner’s Answer2677 Rebuttal Briefs2678 Office Treatment of Rebuttal Brief2679 Oral Hearing2680 Board Decision2681 Action Following Decision2682 Appeal to Courts2683
Information Material to Patentability in Reexamination Proceeding
2684
No Interviews on Merits in Inter Partes Reexamination Proceedings
2685
Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon
2686
Multiple Copending Reexamination Proceedings
2686.01
Copending Reexamination and Interference Proceedings
2686.02
Copending Reexamination and Reissue Proceedings
2686.03
Reexamination and Litigation Proceedings
2686.04
Reexamination and Inter Partes Review Proceedings, Post-Grant
2686.05
Review, and Covered Business Method Patent Review
Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and
2687
Conclusion of Reexamination Proceeding
Examiner Consideration of Submissions After NIRC
2687.01
Issuance of Inter Partes Reexamination Certificate
2688
Reexamination Review2689 Format of Inter Partes Reexamination Certificate
2690
Notice of Inter Partes Reexamination Certificate Issuance in Official Gazette
2691
Distribution of Certificate2692 Intervening Rights2693 Concluded Reexamination Proceedings2694 Reexamination of a Reexamination2695 USPTO Forms To Be Used in Inter Partes Reexamination
2696
2601 Introduction [R-07.2015]
The reexamination statute was amended on November 29, 1999 by the American Inventors Protection Act of 1999 (the AIPA), Public Law 106-113. The AIPA expanded reexamination by providing an “ inter partes” option; it authorized the extension of reexamination proceedings via an optional inter partes reexamination procedure in addition to the existing ex parte reexamination procedure. See Title IV, subtitle F (§§ 4601 through
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4608) of the “Intellectual Property and Communications Omnibus Reform Act of 1999,” S. 1948 (106th Cong. 1st Sess. (1999)). Section 1000(a)(9), Division B, of Public Law 106-113 incorporated and enacted into law the “Intellectual Property and Communications Omnibus ReformAct of 1999” (S. 1948). As a result, new sections 311-318 of title 35 United States Code directed to the optional inter partes reexamination proceeding were added by Public Law 106-113. The reexamination statute was again amended on November 2, 2002, by Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002). Public Law 107-273 expanded the scope of what qualifies for a substantial new question of patentability upon which a reexamination may be based (see MPEP § 2642, POLICY IN SPECIFIC SITUATIONS, part A), expanded the third party requester’s appeal rights to include appeal to the U.S. Court of Appeals for the Federal Circuit (see MPEP § 2679), and made technical corrections to the statute. See the 21st Century Department of Justice Appropriations Authorization Act, TITLE III - INTELLECTUAL PROPERTY, Subtitle A - Patent and Trademark Office, Sections 13105 and 13106, of the “Patent and Trademark Office Authorization Act of 2002” - Enacted as part of Public Law 107-273 on November 2, 2002.
The present chapter is directed to inter partes reexamination procedure.
Upon enactment of the AIPA, 35 U.S.C. 312(a) provided, as to the standard for granting an inter partes reexamination request, that “the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications….” The Office has referred to this standard as “SNQ.”
The Leahy-Smith America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, was enacted September 16, 2011. Section 6(c) of the AIA replaced the inter partes reexamination process, effective September 16, 2012, with a new inter partes review process, such that on or after September 16, 2012 the Office no longer entertains requests for inter partes reexamination but instead
accepts petitions to conduct inter partes review. For any inter partes reexamination filed prior to September 16, 2012, the provisions of 35 U.S.C. 311 – 35 U.S.C. 318 as they were in effect prior to September 16, 2012, continue to apply to the inter partes reexamination proceedings.
Section 6(c)(3)(B) of the AIA provided a one year transition period (from inter partes reexamination to inter partes review) beginning September 16, 2011 and ending September 15, 2012, during which inter partes reexamination filings would continue
to be accepted, but the standard for granting an inter partes reexamination request was revised to require, pursuant to 35 U.S.C. 312, that the information presented in a request for inter partes reexamination must show that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request.
As a result of the enactment of section 6(c) of the AIA, the following applies for inter partes reexamination:
1. Inter partes reexamination requests filed prior to September 16, 2011: With respect to any inter partes reexamination proceeding for which a request was been filed prior to September 16, 2011, the SNQ standard is the standard that was applicable in determining whether the request for inter partes reexamination would be granted. For reexaminations ordered based on the SNQ standard, the SNQ standard applies throughout the reexamination proceeding, even after September 16, 2011, or September 16, 2012. In addition, the inter partes reexamination provisions of 35 U.S.C. chapter 31, as amended by section 6(c)(3) of the Leahy-Smith America Invents Act, and 37 CFR §§ 1.902 - 1.997 and 41.60 - 41.81, except for the changes made in the Office Notice - Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011) (Final Rule) (i.e., with reference to the change in the standard for granting inter partes reexamination, and the termination of filing inter partes reexamination requests), apply throughout the reexamination, even after September 16, 2011, or September 16, 2012. Any citation to the rules in this chapter will be interpreted accordingly.
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§ 2601OPTIONAL INTER PARTES REEXAMINATION
2. Inter partes reexamination requests filed on or after September 16, 2011, but before September 16, 2012: With respect to any inter partes reexamination proceeding for which a request was filed on or after September 16, 2011, the “reasonable likelihood” standard is the standard that was applicable in determining whether the request for inter partes reexamination would be granted. For reexaminations ordered based on the “reasonable likelihood” standard, then the “reasonable likelihood” standard applies throughout the reexamination proceeding, even after September 16, 2012. In addition, the inter partes reexamination provisions of 35 U.S.C. chapter 31, as amended by section 6(c)(3) of the Leahy-Smith America Invents Act, and 37 CFR §§ 1.902 - 1.997 and 41.60 - 41.81, including the changes made in the Office Notice - Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011) (Final Rule), apply throughout the reexamination, even after September 16, 2012. Any citation to the rules in this chapter will be interpreted accordingly.
3. Inter partes reexamination requests filed on or after September 16, 2012: With respect to any inter partes reexamination proceeding for which a request is submitted on or after September 16, 2012, the Office cannot grant, or even accord a filing date to, the request. See 37 CFR 1.913. In other words, the Office no longer entertains requests for inter partes reexamination but instead will accept petitions to conduct inter partes review, where appropriate.
For a patent issued from an application filed prior to November 29, 1999, the statutory inter partes
reexamination option is not available, only the ex parte reexamination is available as a reexamination option (see 37 CFR, Sub-part D, 37 CFR 1.510 et seq.).
All citations in this chapter to 35 U.S.C. Chapter 31 (i.e., 35 U.S.C. 311-318) are to the relevant statute in effect for inter partes reexamination prior to September 16, 2012.
See MPEP Chapter 2200 (§ 2209 et seq.) for guidance on the procedures for ex parte reexamination proceedings.
2601.01 Flowcharts [R-07.2015]
The flowcharts show the general flow for the various stages of inter partes reexamination proceedings. The first flowchart shows the procedures before appeal for a reexamination filed prior to September 16, 2011 (e.g., under the SNQ standard). Except for the standard for instituting reexamination, the same procedure pertains for an inter partes reexamination filed from September 16, 2011 through September 15, 2012. The second flowchart shows the appeal procedure with a single third party requester. The third flowchart shows the procedures following a Board decision for reexamination proceedings commenced prior to November 2, 2002. The fourth flowchart shows the procedures following a Board decision for reexamination proceedings commenced on or after November 2, 2002.
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2602 Citation of Prior Art [R-07.2015]
37 CFR 1.902 Processing of prior art citations during an inter partes reexamination proceeding.
Citations by the patent owner in accordance with § 1.933 and by an inter partes reexamination third party requester under § 1.915 or § 1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citations submitted after the date of an order for reexamination pursuant to § 1.931 by persons other than the patent owner, or the third party requester under either § 1.913 or § 1.948, will be delayed until the inter partes reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.502 for processing of prior art citations in patent and reexamination files during an ex parte reexamination proceeding filed under § 1.510.
American Inventors Protection Act of 1999 (the AIPA) did not affect the manner of the public’s citation of prior art under 37 CFR 1.501 in a patent. Likewise, it did not affect the Office’s handling of a 37 CFR 1.501 prior art citation in a patent where no reexamination proceeding is pending for that patent when the citation is filed.
Where an inter partes reexamination proceeding is pending when a prior art citation is filed, the following applies:
If the prior art citation satisfies 37 CFR 1.501 and was submitted prior to an order for reexamination, the cited documents (citations) will be considered in an inter partes reexamination proceeding as a prior art citation would be considered in an ex parte reexamination proceeding. See MPEP § 2206.
If the prior art citation satisfies 37 CFR 1.501 and is submitted after an order for reexamination, the citation will be treated as follows:
(A) A patent owner citation will normally be considered if it is submitted in time to do so before the reexamination certificate issues.
(B) A third party requester citation will be considered if it is submitted as part of a third party requester comments submission under 37 CFR 1.947 or 1.951(b) (made as required by 37 CFR 1.948), or in a properly filed request for reexamination under 37 CFR 1.915 or 1.510 (whose art is subject to consideration in the ongoing inter partes reexamination being examined).
(C) Any other prior art citation satisfying 37 CFR 1.501 which is submitted after an order to reexamine will be retained (stored) until the reexamination is concluded by the issuance and publication of a reexamination certificate, after which it will be placed in the file of the patent. 37 CFR 1.902.
The Leahy-Smith America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, enacted September 16, 2011, provided, under 35 U.S.C. 301(a)(2) for submission of “statements of the patent owner filed in a proceeding before a federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent”; however, there is no provision of the statute that applies a submission under 35 U.S.C. 301(a)(2) to an ongoing inter partes reexamination. Thus, a submission under 35 U.S.C. 301(a)(2) is not proper for an inter partes reexamination.
See MPEP §§ 2202 through 2206 and 2208 for the manner of making such citations and Office handling of same.
2603 -2608 [Reserved]
2609 Inter Partes Reexamination [R-07.2015]
The inter partes reexamination statute and rules permit any third party requester to request, prior to September 16, 2012, inter partes reexamination of a patent which issued from an original application filed on or after November 29, 1999, where the request contains certain elements (see 37 CFR 1.915(b)) and is accompanied by the fee required under 37 CFR 1.20(c)(2). The Office initially determines whether the standard for granting reexamination (see 35 U.S.C. 312(a)) is met. If yes, reexamination will be ordered. The reexamination proceedings which follow the order for reexamination are somewhat similar to regular examination procedures in patent applications; however, there are notable differences. For example, there are certain limitations as to the kind of rejections which may be made, a third party requester may participate throughout the proceeding, there is
Rev. 07.2015, October 20152600-9
§ 2609OPTIONAL INTER PARTES REEXAMINATION
an “action closing prosecution” and a “right of appeal notice” rather than a final rejection, special reexamination forms are to be used, and time periods are set to provide “special dispatch.” When the prosecution of an inter partes reexamination proceeding is terminated, an inter partes reexamination certificate is issued to indicate the status of all claims following the reexamination and concludes the reexamination proceeding.
The basic characteristics of inter partes reexamination are as follows:
(A) Any third party requester, prior to September 16, 2012, can request inter partes reexamination at any time during the period of enforceability of the patent (for a patent issued from an original application filed on or after November 29, 1999);
(B) Prior art considered during reexamination is limited to prior patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103;
(C) The standard for granting reexamination (35 U.S.C. 312(a)) must be met for reexamination to be ordered;
(D) If ordered, the actual reexamination proceeding is essentially inter partes in nature;
(E) Decision on the request must be made not later than three months from its filing date, and the remainder of proceedings must proceed with “special dispatch” within the Office;
(F) If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of an inter partes reexamination certificate;
(G) The scope of the patent claims cannot be enlarged by amendment;
(H) Reexamination and patent files are open to the public, but see paragraph (I) below;
(I) The reexamination file is scanned to provide an electronic copy of the file, which is the Official file of the proceeding. All public access to and copying of reexamination proceedings may be had from the electronic copy.
Patent owners and third party requesters are cautioned that the reexamination statute, regulations, and published examining procedures do not countenance so-called “litigation tactics” in
reexamination proceedings. The parties are expected to conduct themselves accordingly. For example, it is expected that submissions of papers that are not provided for in the reexamination regulations and/or appear to be excluded by the regulation will either be filed with an appropriate petition to accept the paper and/or waive the regulation(s), or not filed at all. Parties are advised that multiple submissions, such as a reply to a paper opposing a petition and a sur-reply directed to such a reply are not provided for in the regulations or examining procedures governing inter partes reexamination. It is expected that the parties will adhere to the provisions of 37 CFR 11.18(b) throughout the course of a reexamination proceeding.
2610 Request for Inter Partes Reexamination [R-11.2013]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the
8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011).
2611 Time for Requesting Inter Partes Reexamination [R-11.2013]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the
8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011).
2612 Persons Who May File a Request [R-11.2013]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the
8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes
2600-10Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2610
Reexamination Request, 76 FR 59055 (September 23, 2011).
2613 Representative of Requester [R-08.2012]
37 CFR 1.915 Content of request for inter partes reexamination.
*****
(c) If an inter partes request is filed by an attorney or agent identifying another party on whose behalf the request is being filed, the attorney or agent must have a power of attorney from that party or be acting in a representative capacity pursuant to § 1.34.
*****
Where an attorney or agent files a request for an inter partes reexamination for an identified client (the third party requester), he or she may act under a power of attorney from the client or may act in a representative capacity under 37 CFR 1.34 . See 37 CFR 1.915(c). While the filing of the power of attorney is desirable, processing of the reexamination request will not be delayed due to its absence.
In order to act in a representative capacity under 37 CFR 1.34, an attorney or agent must set forth his or her registration number, name, and signature. In order to act under a power of attorney from a requester, an attorney or agent must be provided with a power of attorney. 37 CFR 1.32(c) provides that a “power of attorney may only name as representative” the inventors or registered patent practitioners. Thus, an attorney or agent representing a requester must be a registered patent practitioner.
If any question of authority to act is raised, proof of authority may be required by the Office.
All correspondence for a third party requester is addressed to the representative of the requester, unless a specific indication is made to forward correspondence to another address.
A third party requester may not be represented during a reexamination proceeding by an attorney
or other person who is not registered to practice before the Office.
2614 Content of Request for Inter Partes Reexamination [R-11.2013]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the
8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011).
2615 Fee for Requesting Inter Partes Reexamination [R-11.2013]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the
8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011).
2616 Substantial New Question of Patentability/Reasonable Likelihood That Requester Will Prevail [R-11.2013]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the
8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011).
2617 Statement in the Request Applying Prior Art [R-11.2013]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the
8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes
Rev. 07.2015, October 20152600-11
§ 2617OPTIONAL INTER PARTES REEXAMINATION
Reexamination Request, 76 FR 59055 (September 23, 2011).
2618 Copies of Prior Art (Patents and Printed Publications) [R-11.2013]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the
8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011).
2619 Copy of Printed Patent [R-11.2013]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the
8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011).
2620 Certificate of Service [R-11.2013]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the
8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011).
2621 [Reserved]
2622 Address of Patent Owner [R-07.2015]
37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
*****
(c) All notices, official letters, and other communications for the patent owner or owners in a reexamination or supplemental examination proceeding will be directed to the correspondence address in the patent file. Amendments filed in a reexamination proceeding and other papers filed in a reexamination or supplemental examination proceeding, on
behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34. Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken.
*****
Address of Patent Owner: The correspondence address for the patent to be reexamined, or being reexamined is the correct address for all notices, official letters, and other communications for patent owners in reexamination proceedings. See 37 CFR 1.33(c).
Representative of Patent Owner: As a general rule, the attorney-client relationship terminates when the purpose for which the attorney was employed is accomplished; e.g., the issuance of a patent to the client. However, under 37 CFR 11.104, as under former 37 CFR 10.23(c)(8), a practitioner should not fail to timely and adequately inform a client or former client of correspondence received from the Office in a proceeding before the Office or from the client’s or former client’s opponent in an inter partes proceeding before the Office when the correspondence (i) could have a significant effect on a matter pending before the Office, (ii) is received by the practitioner on behalf of a client or former client , and (iii) is correspondence of which a reasonable practitioner would believe under the circumstances the client or former client should be notified. This responsibility of a practitioner to a former client is not eliminated by withdrawing as an attorney or agent of record. See also 37 CFR 1.116(d). The practitioner if he/she so desires, can minimize the need for forwarding correspondence concerning issued patents by having the correspondence address changed after the patent issues if the correspondence address is the practitioner’s address, which frequently is the case where the practitioner is the attorney or agent of record.
If the patent owner desires that a different attorney or agent receive correspondence, then a new power of attorney must be filed. See MPEP § 324 for establishing an assignee’s right to take action when submitting a power of attorney in applications filed before September 16, 2012.
2600-12Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2618
Submissions to the Office to change the correspondence address or power of attorney in the record of the patent should be addressed as follows:
Where a request for inter partes reexamination has been filed and a reexamination proceeding is accordingly pending as to a patent.
Mail Stop “ Inter Partes Reexam” Attn: Central Reexamination Unit Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
Where no request for reexamination has been filed and the patent is in storage:
Mail Stop Document Services Director of the U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
It is strongly recommended that the Mail Stop information be placed in a prominent position on the
first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.
Sample forms for changing correspondence address or power of attorney for the patent owner, and for the third party requester are set forth below.
Form PTO/AIA/81B Reexamination or Supplemental Examination – Patent Owner Power of Attorney or Revocation of Power of Attorney with a New Power of Attorney and Change of Correspondence Address for Reexamination or Supplemental Examination and Patent
Form PTO/SB/81C Reexamination – Third Party Requester Power ofAttorney or Revocation of Power of Attorney with a New Power of Attorney and Change of Correspondence Address
Rev. 07.2015, October 20152600-13
§ 2622OPTIONAL INTER PARTES REEXAMINATION
2600-14Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2622
Rev. 07.2015, October 20152600-15
§ 2622OPTIONAL INTER PARTES REEXAMINATION
2600-16Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2622
Rev. 07.2015, October 20152600-17
§ 2622OPTIONAL INTER PARTES REEXAMINATION
2623 Withdrawal of Attorney or Agent [R-07.2015]
For a practitioner to withdraw from a patent and/or reexamination proceeding, the Office no longer requires that there be at least 30 days remaining in any running period for response between the approval of a request to withdraw from representation and the expiration date of any running period for response. Instead, pursuant to 37 CFR 11.116, the Office requires the practitioner(s) to certify that he, she or they have: (1) given reasonable notice to the client, prior to the expiration of the response period, that the practitioner(s) intends to
withdraw from employment; (2) delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled; and (3) notified the client of any responses that may be due and the time frame within which the client must respond. “Reasonable notice” would allow a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period. See also MPEP § 402.06.
A sample form for a request by an attorney or agent of record to withdraw from a patent is set forth below.
2600-18Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2623
Rev. 07.2015, October 20152600-19
§ 2623OPTIONAL INTER PARTES REEXAMINATION
2600-20Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2623
Rev. 07.2015, October 20152600-21
§ 2623OPTIONAL INTER PARTES REEXAMINATION
2624 Correspondence [R-07.2015]
All requests for inter partes reexamination (original request papers) and all subsequent inter partes reexamination correspondence mailed to the U.S. Patent and Trademark Office via the U.S. Postal Service Mail, other than correspondence to the Office of the General Counsel pursuant to 37 CFR 1.1(a)(3) and 1.302(e), should be addressed:
Mail Stop “ Inter Partes Reexam” Attn: Central Reexamination Unit Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
All such correspondence hand carried to the Office, or submitted by delivery service (e.g., Federal Express, DHL, etc., which are commercial mail or delivery services) should be carried to:
Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314
Hand-carried correspondence and correspondence submitted by delivery service should also be marked “Mail Stop Inter Partes Reexam.” Whether the correspondence is mailed via the U.S. Postal Service mail or is hand-carried to the Office, it is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.
A request for inter partes reexamination may not be sent by facsimile transmission (FAX). See 37 CFR 1.6(d)(5). This is also true for a corrected/completed request sent in response to a notice that the original request was not filing date compliant, since the corrected/completed request stands in place of, or is a completion of, the original request papers. All subsequent inter partes reexamination correspondence, however, may be FAXed to:
Central Reexamination Unit (571) 273-9900.
Effective July 9, 2007, the U.S. Patent and Trademark Office began accepting requests for reexamination, and “follow-on” papers (i.e.,
subsequent correspondence in reexamination proceedings) submitted via the Office’s Web-based electronic filing system (EFS-Web). The Office has updated the Legal Framework for EFS-Web (available at www.uspto.gov/ebc/ portal/efs/legal.htm) to set forth that requests for reexamination, and reexamination “follow-on” papers are permitted to be submitted using EFS-Web.
After the filing of the request for inter partes reexamination, any letters sent to the Office relating to the reexamination proceeding should identify the proceeding by the number of the patent undergoing reexamination, the reexamination request control number assigned, the name of the examiner, and the examiner’s Art Unit.
The certificate of mailing and transmission procedures (37 CFR 1.8) may be used to file any paper in an inter partes reexamination proceeding, except for a request for reexamination and a corrected/replacement request for reexamination. See MPEP § 512 as to the use of the certificate of mailing and transmission procedures. The Priority
Mail Express® mailing procedure (37 CFR 1.10) may be used to file any paper in an inter partes reexamination proceeding. See MPEP § 513 as to
the use of the Priority Mail Express® mailing procedure.
Communications from the Office to the patent owner will be directed to the correspondence address for the patent being reexamined. See 37 CFR 1.33(c).
Amendments and other papers filed on behalf of patent owners must be signed by the patent owners, or the registered attorney or agent of record in the patent file, or any registered attorney or agent acting in a representative capacity under 37 CFR 1.34.
Double correspondence with the patent owners and the attorney or agent normally will not be undertaken by the Office.
Where no correspondence address is otherwise specified, correspondence will be with the most recent attorney or agent made of record by the patent owner.
2600-22Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2624
Note MPEP § 2620 for certificate of service.
See MPEP § 2224 for correspondence in ex parte reexamination proceedings.
2625 Untimely Paper Filed Prior to First Office Action [R-07.2015]
37 CFR 1.939 Unauthorized papers in inter partes reexamination
(a) If an unauthorized paper is filed by any party at any time during the inter partes reexamination proceeding it will not be considered and may be returned.
(b) Unless otherwise authorized, no paper shall be filed prior to the initial Office action on the merits of the inter partes reexamination.
37 CFR 1.902 Processing of prior art citations during an inter partes reexamination proceeding.
Citations by the patent owner in accordance with § 1.933 and by an inter partes reexamination third party requester under § 1.915 or § 1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citations submitted after the date of an order for reexamination pursuant to § 1.931 by persons other than the patent owner, or the third party requester under either § 1.913 or § 1.948, will be delayed until the inter partes reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.502 for processing of prior art citations in patent and reexamination files during an ex parte reexamination proceeding filed under § 1.510.
Pursuant to 37 CFR 1.939, after filing of a request for inter partes reexamination, no papers directed to the merits of the reexamination other than (A) citations of patents or printed publications under 37 CFR 1.501 and 1.933, (B) another complete request under 37 CFR 1.510 , or (C) notifications pursuant to MPEP § 2686, should be filed with the Office prior to the date of the first Office action in the reexamination proceeding. Any papers directed to the merits of the reexamination, other than those under 37 CFR 1.501, 1.933, or 1.510, or under MPEP § 2686, filed prior to the date of the first Office action will be returned to the sender without consideration. If the papers are entered prior to discovery of the impropriety, such papers will be expunged from the record. A copy of the letter providing notification of the returned papers or expungement will be made of record in the patent file. However, no copy of the returned/expunged papers will be retained by the Office. If the submission of the returned/expunged papers is
appropriate later in the proceedings, they may be filed, and accepted by the Office, at that time. See Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226
USPQ 985 (Fed. Cir. 1985); In re Knight, 217 USPQ 294 (Comm’r Pat.1982); and In re Amp, 212 USPQ 826 (Comm’r Pat. 1981) which addressed the situation analogous to the present situation for ex parte reexamination proceedings.
2626 Initial Processing of Request for Inter Partes Reexamination [R-11.2013]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the
8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011).
2627 Incomplete Request for Inter Partes Reexamination [R-07.2015]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on
the former practice is available in the 9th Edition of the MPEP.
2628 [Reserved]
2629 Notice of Request for Inter Partes Reexamination in Official Gazette [R-11.2013]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the
8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes
Rev. 07.2015, October 20152600-23
§ 2629OPTIONAL INTER PARTES REEXAMINATION
Reexamination Request, 76 FR 59055 (September 23, 2011).
2630 Constructive Notice to Patent Owner [R-07.2015]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on
the former practice is available in the 9th Edition of the MPEP.
2631 Processing of Request Corrections [R-07.2015]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on
the former practice is available in the 9th Edition of the MPEP.
2632 Public Access [R-07.2015]
Reexamination files are open to inspection by the general public by way of the Public PAIR via the USPTO Internet site. In viewing the images of the reexamination proceedings, members of the public will be able to view the entire content of the reexamination file with the exception of non-patent literature. To access Public PAIR, a member of the public would go to the USPTO website at www.uspto.gov.
If a copy of the reexamination file is requested, it may be ordered from the Document Services Division of the Office of Public Records (OPR). Orders for such copies must indicate the control number of the reexamination proceeding. Orders should be addressed as follows:
Mail Stop Document Services Director of the U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
Requests for a copy of a request may also be sent via email to: dsd@uspto.gov, and the cost of the copy may be charged to a credit card or deposit account. Alternatively, a copy may be obtained from IFW via PAIR.
To obtain a “certified copy” of a reexamination file, a CD-ROM may be purchased from Document Services Division of OPR.
2632.01 Determining If a Reexamination Request Was Filed for a Patent [R-07.2015]
DETERMINING ON PALM IF A REEXAMINATION REQUEST HAS BEEN FILED FOR A GIVEN PATENT NUMBER
Both the Internet and the USPTO intranet can be accessed to determine if a reexamination request has been filed for a particular patent.
Using the USPTO Intranet
From the USPTO in t r ane t s i t e http://ptoweb/ptointranet/index.htm, Office personnel can click on “PALM” and then “General Information” which opens the PALM INTRANET General Information Display.
From here, enter the patent number in the box labeled Patent #.
Click on “Search” and when the “Patent Number Information” appears, click on “Continuity Data” to obtain the reexamination number.
Any reexamination for the patent number will be listed.
There will be about a ten (10) day lag between filing and data entry into the PALM database.
2633 [Reserved]
2634 Fee Processing and Procedure [R-07.2015]
All fees in an inter partes reexamination proceeding (including the fee for filing the request for inter partes reexamination (see MPEP § 2615)) are processed by the Central Reexamination Unit (CRU). The fees will be posted by the CRU via the Revenue Accounting and Managing (RAM) program.
2600-24Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 2630
In an inter partes reexamination proceeding, fees are due for the request (37 CFR 1.915(a)), for the addition of claims by the patent owner during the proceeding (excess claims fees under 37 CFR 1.20(c)(3) and (c)(4)), for an extension of time under 37 CFR 1.956, and for any appeal, brief, and oral hearing under 37 CFR 41.20(b). All petitions filed relating to a reexamination proceeding require fees (37 CFR 1.937(d)).
No fee is required for the issuance of a reexamination certificate.
Micro entity reductions are available to patent owners only. Specifically, micro entity and small entity reductions under 35 U.S.C. 41(h)(1) are available to the patent owner for extension of time fees, appeal fees, brief fees, oral hearing fees, excess claims fees, and petition fees. Small entity reductions are available to the third party requester for petition fees, appeal fees, brief fees, and oral hearing fees; however, micro entity reductions are not available to third party requesters.
When a fee is required in a merged proceeding, only a single fee is needed, even though multiple copies of the submissions (one for each file) are required. See MPEP § 2686.01.
2635 Record Systems [R-07.2015]
The Patent Application Locating and Monitoring (PALM) system is used to support the reexamination process. The sections below delineate PALM related activities.
(A) Reexamination File Data on PALM - The routine PALM retrieval transactions are used to obtain data on reexamination files. From the USPTO intranet site, Office staff can click on “PALM” and then “General Information” which opens the PALM INTRANET General Information Display. From here, enter the patent number in the box labeled Patent #. Then click on “Search” and when the “Patent Number Information” appears, click on “Continuity Data” to obtain the reexamination number.
(B) Reexamination e-File – The papers of a reexamination proceeding may be viewed on IFW. PALM provides information for the reexamination
proceeding as to the patent owner and requester, contents, status, and related Office proceedings (applications, patents and reexamination proceedings). Some of the data entry for reexamination in PALM is different from that of a regular patent application. There are also differences in the status codes – all reexamination proceedings generally have status codes in the “400” or “800” range.
(C) Patent File Location Control for Patents Not Available on IFW, i.e., Available Only in Paper File - The movement of paper patent files related to requests for reexamination throughout the Office is monitored by the PALM system. If the patent file is in paper form, the paper file should be ordered and scanned into the Image File Wrapper (IFW) for access throughout the prosecution of the reexamination proceeding.
(D) Reporting Events to PALM - The PALM system is used to monitor major events that take place in processing reexamination proceedings. All major examination events are reported. The mailing of examiner’s actions is reported, as well as owner’s responses and third party requester comments. The CRU technical support staff is responsible for reporting these events using the reexamination icon and window initiated in the PALM EXPO program. Examples of the events that will be reported (in the PALM system or in the tracking system of the Office of Petitions) are as follows:
(1) Determination Mailed-Denial of request for reexamination;
(2) Determination Mailed-Grant of request for reexamination;
(3) Petition for reconsideration of determination received;
(4) Decision on petition mailed-Denied;
(5) Decision on petition mailed-Granted;
(6) Mailing of all examiner actions;
(7) Patent owner responses to Office Actions
(8) Third party requester comments after a patent owner response.
Each of these events, as well as additional events reported by the Central Reexamination Unit (CRU) Technical Support Staff (TSS) will be permanently recorded and displayed in the “Contents” portion of
Rev. 07.2015, October 20152600-25
§ 2635OPTIONAL INTER PARTES REEXAMINATION
PALM. In addition, status representative of these events will also be displayed.
(E) Status Reports - Various weekly reports can be generated for the event reporting discussed above. The primary purpose of these computer outputs is to assure that reexaminations are, in fact, processed with “special dispatch”.
2636 Assignment of Reexamination [R-07.2015]
I. EXAMINER ASSIGNMENT OF THE REEXAMINATION PROCEEDING
Except for reexamination requests for design patents, reexamination requests are assigned to the Central Reexamination Unit (CRU) art unit which examines the technology (Chemical, Electrical, Mechanical, etc.) in which the patent to be reexamined is currently classified as an original. In that art unit, the Supervisory Patent Reexamination Specialist (SPRS) assigns the reexamination request to a primary examiner, other than the examiner that originally examined the patent (see “Examiner Assignment Policy” below), who is most familiar with the claimed subject matter of the patent. In an extremely rare situation, where a proceeding is still in a Technology Center (TC) rather than the CRU, the reexamination may be assigned to an assistant examiner if no knowledgeable primary examiner is available. In such an instance a primary examiner must sign all actions, conference all actions with a SPRS or TC Quality Assurance Specialist (QAS) and another examiner, and take responsibility for all actions taken.
A. Examiner Assignment Policy
It is the policy of the Office that the CRU SPRS will assign the reexamination request to an examiner different from the examiner(s) who examined the patent application. Thus, under normal circumstances, the reexamination request will not be assigned to a primary examiner or assistant examiner who was involved in any part of the examination of the patent for which reexamination is requested (e.g., by preparing/signing an action), or was so involved in the examination of the parent of the patent. This would preclude assignment of the request to an examiner who was a conferee in an
appeal conference or panel review conference in an earlier concluded examination of the patent (e.g., the application for patent, a reissue, or a prior concluded reexamination proceeding). The conferee is considered to have participated in preparing the Office action which is preceded by the conference.
Exceptions to this general policy include cases where the original examiner is the only examiner with adequate knowledge of the relevant technology to examine the case. In the unusual case where there is a need to assign the request to the original examiner, the assignment must be approved by the CRU Director, and the fact that such approval was given by the CRU Director must be stated (by the examiner) in the decision on the request for reexamination.
It should be noted that while an examiner who examined an earlier concluded reexamination proceeding is generally excluded from assignment of a newly filed reexamination, if the earlier reexamination is still ongoing , the same examiner generally will be assigned the new reexamination.
Copending reissue and reexamination proceeding:
(1) When a reissue application is pending for a patent, and a reexamination request is filed for the same patent, the reexamination request is generally assigned to an examiner who did not examine the original patent application. If the reexamination request is granted and the reissue and reexamination proceedings are merged (see MPEP § 2686.03), the merged proceeding will be handled by an examiner other than the examiner who examined the original patent application. In that instance, if the examiner who examined the patent application is handling the reissue application, the reissue application would be transferred (reassigned) from that examiner.
(2) When a reexamination proceeding is pending for a patent, and a reissue application is filed for the same patent:
(a) Where reexamination has already been ordered (granted) in the reexamination proceeding, the Office of Patent Legal Administration (OPLA) should be notified, as promptly as possible, that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they
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should be hand delivered to OPLA at the time of the notification to OPLA (see MPEP § 2686.03). If the reissue and reexamination proceedings are merged, the reissue will generally be assigned to the examiner who would ordinarily handle the reissue application. However, if that examiner was involved in any part of the examination of the patent for which reexamination is requested (e.g., by preparing or signing an action), or was so involved in the examination of the parent application of the patent, a different examiner will be assigned. If the reissue and reexamination proceedings are not merged by OPLA, the decision will provide guidance as to assignment of the reissue proceeding as necessary.
(b) If reexamination has not yet been ordered (granted) in the reexamination proceeding, a SPRS will ensure that the reissue application is not assigned nor acted on, and the decision on the reexamination request will be made. If reexamination is denied, the reexamination proceeding will be concluded pursuant to MPEP § 2694, and the reissue application assigned in accordance with MPEP § 1440. If reexamination is granted, a first Office action will not accompany the order granting reexamination. The signed order should be (after review by the CRU SPRS) promptly forwarded for mailing. At the same time, OPLA should be notified that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA (see MPEP § 2686.03). If the reissue and reexamination proceedings are merged by OPLA, the reissue application will generally be assigned to the examiner who ordinarily handles the reissue application. However, if that examiner was involved in any part of the examination of the patent for which reexamination is requested (e.g., by preparing/signing the action), or was so involved in examination of the parent application of the patent, a different examiner will be assigned. If the reissue and reexamination proceedings are not merged by OPLA, the decision will provide guidance as to assignment of the reissue proceeding as necessary.
B. Consequences of Inadvertent Assignment to an “Original Examiner”
Should a reexamination be inadvertently assigned to an “original examiner” (in a situation where the
TC or CRU Director’s approval is not stated in the decision on the request), the patent owner or the third party requester who objects must promptly file a paper alerting (notifying) the Office of this fact. Any paper alerting (notifying) the Office to the assignment to an “original examiner” must be filed within two months of the first Office action or other Office communication indicating the examiner assignment, or reassignment will not be considered. Reassignment of the reexamination to a different examiner will be addressed on a case-by-case basis. In no event will the assignment to the original examiner, by itself, be grounds for vacating any Office decision(s) or action(s) and “restarting” the reexamination.
A situation may arise where a party timely (i.e., within the two months noted above) files a paper alerting (notifying) the Office to the assignment of a reexamination to the “original examiner,” but that paper does not have a right of entry under the rules (e.g., where an order granting reexamination was issued by the “original examiner” but a first action on the merits did not accompany the order, the patent owner timely files a paper alerting the Office of the fact that the “original examiner” has been assigned the reexamination proceeding. Pursuant to 37 CFR 1.939(b), that paper does not have a right of entry since a first Office action on the merits has not yet been issued.) In such situations, the Office may waive the rules to the extent that the paper directed to the examiner assignment will be entered and considered.
2637 [Reserved]
2638 Time Reporting [R-11.2013]
It is essential that all time expended on reexamination activities be reported accurately. Thus, all USPTO personnel should report all time spent on reexamination on their individual Time and Attendance Reports. Even activities such as
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supervision, copying, typing, and docketing should be included.
2639 [Reserved]
2640 Decision on Request [R-07.2015]
35 U.S.C. 312 Determination of issue by Director
[Editor Note: As in effect for a request filed prior to September 16, 2011.]
(a) REEXAMINATION.— Not later than 3 months after the filing of a request for inter partes reexamination under section 311, the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.
(b) RECORD.— A record of the Director’s determination under subsection (a) shall be placed in the official file of the patent, and a copy shall be promptly given or mailed to the owner of record of the patent and to the third-party requester.
(c) FINAL DECISION.— A determination by the Director under subsection (a) shall be final and non-appealable. Upon a determination that no substantial new question of patentability has been raised, the Director may refund a portion of the inter partes reexamination fee required under section 311.
35 U.S.C. 312 Determination of issue by Director.
[Editor Note: As in effect for a request filed beginning September 16, 2011 and ending September 15, 2012.]
(a) REEXAMINATION.— Not later than 3 months after the filing of a request for inter partes reexamination under section 311, the Director shall determine whether the information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request, with or without consideration of other patents or printed publications. A showing that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.
(b) RECORD.— A record of the Director’s determination under subsection (a) shall be placed in the official file of the patent, and a copy shall be promptly given or mailed to the owner of record of the patent and to the third-party requester.
(c) FINAL DECISION.— A determination by the Director under subsection (a) shall be final and non-appealable. Upon a determination that the showing required by subsection (a) has
not been made, the Director may refund a portion of the inter partes reexamination fee required under section 311.
37 CFR 1.923 Examiner’s determination on the request for inter partes reexamination.
[Editor Note: For a request filed prior to September 16, 2011.]
Within three months following the filing date of a request for inter partes reexamination under § 1.915, the examiner will consider the request and determine whether or not a substantial new question of patentability affecting any claim of the patent is raised by the request and the prior art citation. The examiner’s determination will be based on the claims in effect at the time of the determination, will become a part of the official file of the patent, and will be mailed to the patent owner at the address as provided for in § 1.33(c) and to the third party requester. If the examiner determines that no substantial new question of patentability is present, the examiner shall refuse the request and shall not order inter partes reexamination.
37 CFR 1.923 Examiner’s determination on the request for inter partes reexamination.
[Editor Note: For a request filed beginning September 16, 2011 and ending September 15, 2012.]
Within three months following the filing date of a request for inter partes reexamination under § 1.915, the examiner will consider the request and determine whether or not the request and the prior art establish a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request. The examiner’s determination will be based on the claims in effect at the time of the determination, will become a part of the official file of the patent, and will be mailed to the patent owner at the address as provided for in § 1.33(c) and to the third party requester. If the examiner determines that the request has not established a reasonable likelihood that the requester will prevail with respect to at least one of the challenged claims, the examiner shall refuse the request and shall not order inter partes reexamination.
37 CFR 1.925 Partial refund if request for inter partes reexamination is not ordered.
Where inter partes reexamination is not ordered, a refund of a portion of the fee for requesting inter partes reexamination will be made to the requester in accordance with § 1.26(c).
37 CFR 1.927 Petition to review refusal to order inter partes reexamination.
[Editor Note: For a request filed prior to September 16, 2011.]
The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing to order inter partes reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.
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37 CFR 1.927 Petition to review refusal to order inter partes reexamination.
[Editor Note: For a request filed beginning September 16, 2011 and ending September 15, 2012.]
The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing to order inter partes reexamination. Any such petition must comply with§ 1.181(b). If no petition is timely filed or if the decision on petition affirms that a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request has not been established, the determination shall be final and nonappealable.
Prior to making a determination on the request for reexamination, a litigation search from the Technical Support Staff (TSS) of the Central Reexamination Unit (CRU) or the Scientific and Technical Information Center (STIC) must be done to check if the patent has been, or is, involved in litigation. A copy of the litigation search is scanned into the IFW reexamination file history. The “Litigation Review” box on the reexamination IFW file jacket form (RXFILJKT) is completed to indicate that the review was conducted and the results thereof, and the reexamination file jacket form is then scanned into the IFW reexamination file history. In the rare instance where the record of the reexamination proceeding or the litigation search indicates that additional information is desirable, guidance as to making an additional litigation search may be obtained from the library of the Office of the Solicitor. If the patent is or was involved in litigation, and a paper referring to the court proceeding has been filed, reference to the paper by number should be made in the “Litigation Review” box of the IFW file jacket form as, for example, “litigation; see paper filed 7-14-2005.” If a litigation records search is already noted on the file, the examiner need not repeat or update it.
If litigation has concluded or is taking place in the patent on which a request for reexamination has been filed, the request must be promptly brought to the attention of the examiner’s CRU SPRS who should review the decision on the request and any examiner’s action to ensure conformance to the current Office litigation policy and guidelines. See MPEP § 2686.04.
35 U.S.C. 312 requires that the Director of the Office determine whether or not a “substantial new question of patentability” affecting any claim of the patent of which reexamination is desired is raised in the request (for inter partes reexamination requests filed prior to September 16, 2011) or there is a “reasonable likelihood that the requester will prevail” with respect to at least one of the claims challenged in the request (for inter partes reexamination requests filed on or after September 16, 2011) - not later than three months after the filing date of a request. See also MPEP § 2641. Such a determination may be made with or without consideration of other patents or printed publications in addition to those cited in the request. No input from the patent owner is considered prior to the determination. See Patlex v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985).
The patent claims in effect at the time of the determination will be the basis for deciding whether reexamination is to be ordered (37 CFR 1.923). See MPEP § 2643. Amendments which (A) have been filed in a copending reexamination proceeding in which the reexamination certificate has not been issued, or (B) have been submitted in a reissue application on which no reissue patent has been issued, will not be considered or commented upon when deciding a request for reexamination.
The decision on the request for reexamination has as its main object either the granting or denial of the request for reexamination. This decision is based on whether or not “a substantial new question of patentability” or a “reasonable likelihood that the requester will prevail” is found. A determination as to ultimate patentability/unpatentability of the claims is not made in the decision on the request; rather, it is made later, during the examination stage of the reexamination proceeding if reexamination is ordered. Accordingly, no prima facie case of unpatentability need be found to grant an order for reexamination. If a decision to deny an order for reexamination is made, the requester may seek review by a petition under 37 CFR 1.181. See 37 CFR 1.927. It should be noted that a decision to deny the request for reexamination is equivalent to a final holding (subject only to a petition pursuant to 37 CFR 1.927 for review of the denial), that the request failed to raise “a substantial new question of
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patentability” or provide a “reasonable likelihood that the requester will prevail” based on the cited art (patents and printed publications). See 35 U.S.C. 312(c).
Where there have been prior decisions relating to the patent, see MPEP § 2642.
It is only necessary to establish that a substantial new question of patentability or reasonable likelihood that requester will prevail exists as to one of the patent claims in order to grant reexamination. The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the claim(s) for which reexamination was requested. If the requester was interested in having all of the claims reexamined, requester had the opportunity to include them in its request for reexamination. However, if the requester chose not to do so, those claim(s) for which reexamination was not requested will generally not be reexamined by the Office. It is further noted that 35 U.S.C. 311(b)(2) requires that a requester “set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.” If the requester fails to apply the art to certain claims, then the requester is not statutorily entitled to reexamination of such claims. If a request fails to set forth the pertinency and manner of applying the cited art to any claim for which reexamination is requested as required by 37 CFR 1.915(b), that claim will generally not be reexamined. The decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case. If the Office chooses to reexamine any claim for which reexamination has not been requested, it is permitted to do so. In addition, the Office may always initiate a reexamination on its own initiative of the non-requested claim (35 U.S.C. 303(a)). See Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va 2006). If a request fails to set forth the pertinency and manner of applying the cited art to any claim for which reexamination is requested as required by 37 CFR 1.915, a filing date will not be awarded to the request. See MPEP § 2617 and § 2627.
One instance where reexamination was carried out only for the claims requested occurred in reexamination control numbers 95/000,093 and 95/000,094, where reexamination was requested for patent claims which were being litigated, but not for claims which were not being litigated. In that instance, the entirety of the reexamination was limited to the claims for which reexamination was requested, and which were being litigated. The Office’s authority to carry out reexamination only for the claims for which reexamination was requested in reexamination control numbers 95/000,093 and 95/000,094 was confirmed by the court in Sony, supra. See MPEP § 2642 for the situation
where there was a prior final federal court decision as to the invalidity/unenforceability of some of the claims, as another example of non-examination of some of the patent claims in a reexamination proceeding.
The decision on the request for reexamination should discuss all of the patent claims requested for reexamination. The examiner should limit the discussion of those claims in the order for reexamination as to whether a substantial new question of patentability has been raised or there is a reasonable likelihood that the requester will prevail. The examiner SHOULD NOT reject claims in the order for reexamination. Rather, any rejection of the claims will be made in the first Office action that normally will accompany the order for reexamination. See MPEP § 2660.
The Director of the Office has the authority to order reexamination only for a request which (prior to September 16, 2011) raises a substantial new question of patentability or request (on or after September 16, 2011) provides a “reasonable likelihood that the requester will prevail”. This protects patentees from having to respond to, or participate in, unjustified reexaminations. See Patlex v. Mossinghoff, 771 F.2d 480, 226 USPQ 985, 989 (Fed. Cir. 1985).
I. REQUEST FOR REEXAMINATION OF THE PATENT AFTER REISSUE OF THE PATENT
Where a request for reexamination is filed on a patent after a reissue patent for that patent has already issued, reexamination will be denied,
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because the patent on which the request for reexamination is based has been surrendered. Should reexamination of the reissued patent be desired, a new request for reexamination, including and based on the specification and claims of the reissue patent, must be filed. Where the reissue patent issues after the filing of a request for reexamination, see MPEP § 2686.03.
II. SECOND OR SUBSEQUENT REQUEST FILED DURING REEXAMINATION
MPEP § 2686.01 provides for a comprehensive discussion of the situation where a first reexamination is pending at the time a second or subsequent request for reexamination is to be decided, and one of the two is an inter partes reexamination. The present subsection merely provides guidance on the standard for the substantial new question of patentability to be applied in the decision on the second or subsequent request.
Where an ordered inter partes reexamination is pending, and an inter partes reexamination request is subsequently filed, the prohibition provision of 37 CFR 1.907(a) must be considered. Once an order for inter partes reexamination has been issued, neither the third party requester of the inter partes reexamination, nor its privies, may file a subsequent request for inter partes reexamination of the same patent until an inter partes reexamination certificate has been issued, unless expressly authorized by the Director of the Office. Note that 37 CFR 1.907(a) tracks the statutory provision of 35 U.S.C. 317(a). A petition for such express authorization is a request for extraordinary relief and will not be granted where there is a more conventional avenue to accomplish the same purpose and provide relief analogous to that requested. See also Cantello v. Rasmussen, 220 USPQ 664 (Comm’r Pat. 1982) for the principle that extraordinary relief will not normally be considered if the rules provide an avenue for obtaining the relief sought.
For additional treatment of cases in which either the first or subsequent request for examination, or both, is/are an inter partes reexamination proceeding, see MPEP §§ 2640 and 2686.01.
For additional treatment of cases in which a first ex parte reexamination is pending at the time a second or subsequent request for ex parte reexamination is to be decided, see MPEP § 2283.
For inter partes reexamination requests filed prior to September 16, 2011:
If a second or subsequent request for reexamination is filed (by any party permitted to do so) while a first reexamination is pending, the presence of a substantial new question of patentability depends on the art (patents and printed publications) cited by the second or subsequent request. The cited art will be reviewed for a substantial new question of patentability based on the following guidelines:
If one of the two reexaminations is an inter partes reexamination, the following possibilities exist:
(1) An ordered inter partes reexamination is pending, and an ex parte reexamination request is subsequently filed.
(2) An ordered inter partes reexamination is pending, and an inter partes reexamination request is subsequently filed.
(3) An ordered ex parte reexamination is pending, and an inter partes reexamination request is subsequently filed.
In all three instances, if the subsequent request includes the art which raised a substantial new question in the earlier pending reexamination, then reexamination should be ordered only if the art cited raises a substantial new question of patentability which is different from that raised in the earlier pending reexamination. If the art cited in the subsequent request raises the same substantial new question of patentability as that raised in the earlier pending reexamination it is not "new," and therefore, the subsequent request should be denied. Where the request raises a different substantial new question of patentability as to some patent claims, but not as to others, the request would be granted in part; see the orders issued in reexamination control number 90/007,843 and 90/007,844. If the subsequent request does not include the art which raised the substantial new question of patentability in the earlier pending reexamination, reexamination may or may not be
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ordered, depending on whether the different art cited raises a substantial new question of patentability.
The second or subsequent request for reexamination may provide information raising a substantial new question of patentability with respect to any new or amended claim which has been proposed in the first (or prior) pending reexamination proceeding. However, in order for the second or subsequent request for reexamination to be granted, the second or subsequent requester must independently provide a substantial new question of patentability which is different from that raised in the pending reexamination for the claims in effect at the time of the determination. The decision on the second or subsequent request is thus based on the claims in effect at the time of the determination (37 CFR 1.923). Thus, the second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer, or by any reexamination certificate that has issued as of the time of the determination. If a “different” substantial new question of patentability is not provided by the second or subsequent request for the claims in effect at the time of the determination, the second or subsequent request for reexamination must be denied since the Office is only authorized by statute to grant a reexamination proceeding based on a substantial new question of patentability “affecting any claim of the patent.” See 35 U.S.C. 312(a). Accordingly, there must be at least one substantial new question of patentability established for the existing claims in the patent in order to grant reexamination.
Once the second or subsequent request has provided a “different” substantial new question of patentability based on the claims in effect at the time of the determination, the second or subsequent request for reexamination may also provide information directed to any proposed new or amended claim in the pending reexamination, to permit examination of the entire patent package. The information directed to a proposed new or amended claim in the pending reexamination is addressed during the later filed reexamination (where a substantial new question of patentability is raised in the later filed request for reexamination for the existing claims in the patent), in order to permit examination of the entire patent package. When a proper basis for the second or subsequent request for reexamination is established,
it would be a waste of resources to prevent addressing the proposed new or amended claims, by requiring parties to wait until the certificate issues for the proposed new or amended claims, and only then to file a new reexamination request challenging the claims as revised via the certificate. This also prevents a patent owner from simply amending all the claims in some nominal fashion to preclude a subsequent reexamination request during the pendency of the reexamination proceeding.
2641 Time for Deciding Request [R-07.2015]
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on
the former practice is available in the 9th Edition of the MPEP.
2642 Criteria for Deciding Request [R-07.2015]
I. SUBSTANTIAL NEW QUESTION OF PATENTABILITY/REASONABLE LIKELIHOOD THAT REQUESTER WILL PREVAIL
A. For reexaminations filed prior to September 16, 2011:
The presence or absence of “a substantial new question of patentability” determines whether or not reexamination is ordered. The meaning and scope of the term “a substantial new question of patentability” is not defined in the statute and must be developed to some extent on a case-by-case basis, using the legislative history and case law to provide guidance as will be discussed in this section.
If the prior art patents and printed publications raise a substantial question of patentability of at least one claim of the patent, then a substantial new question of patentability as to the claim is present, unless the same question of patentability has already been: (A) decided in a final holding of invalidity by a federal court in a decision on the merits involving the claim, after all appeals; (B) decided in an earlier concluded examination or review of the patent by the Office; or (C) raised to or by the Office in a pending reexamination or supplemental examination of the patent.
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An “earlier concluded examination or review” of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent; (C) the examination of the patent in an earlier concluded reexamination or supplemental examination; (D) the review of the patent in an earlier concluded trial by the Patent Trial and Appeal Board, such as a post-grant review, inter partes review, or covered business method review of the patent; or (E) any other contested proceeding which has been concluded and which involved the patent.
The answer to the question of whether a “substantial new question of patentability” exists, and therefore whether reexamination may be had, is decided by the examiner, and if reexamination is denied, requester may obtain reconsideration only pursuant to MPEP § 2648. If reexamination is granted, the decision that a reference raises a SNQ is final and non-appealable by the patent owner. See 35 U.S.C. 312(c).
A prior art patent or printed publication raises a substantial question of patentability where there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable. If the prior art patents and/or publications would be considered important, then the examiner should find “a substantial new question of patentability” unless the same question of patentability has already been decided as to the claim in a final holding of invalidity by a federal court or by the Office in an earlier concluded examination or review or was raised to or by the Office in a pending reexamination or supplemental examination of the patent. For example, the same question of patentability may have already been decided by the Office where the examiner finds the additional (newly provided) prior art patents or printed publications to be merely cumulative to similar prior art already fully considered by the Office in an earlier concluded examination or review of the claim or a pending reexamination or supplemental examination of the claim.
Accordingly, for “a substantial new question of patentability” to be present, it is only necessary that:
(A) The prior art patents and/or printed publications raise a substantial question of patentability regarding at least one claim, i.e., the teaching of the prior art patents and printed publications is such that a reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable; and
(B) The same question of patentability as to the claim has not been decided by the Office in an earlier concluded examination or review of the patent, raised to or by the Office in a pending reexamination or supplemental examination of the patent or decided in a final holding of invalidity (after all appeals) by a federal court in a decision on the merits involving the claim. If a reexamination proceeding was terminated/vacated without resolving the substantial question of patentability question, it can be re-presented in a new reexamination request.
It is not necessary that a “prima facie” case of unpatentability exist as to the claim in order for “a substantial new question of patentability” to be present as to the claim. Thus, “a substantial new question of patentability” as to a patent claim could be present even if the examiner would not necessarily reject the claim as either anticipated by, or obvious in view of, the prior art patents or printed publications. The difference between “a substantial new question of patentability” and a “prima facie” case of unpatentability is important. See generally In re Etter, 756 F.2d 852, 857 n.5, 225 USPQ 1, 4
n.5 (Fed. Cir. 1985).
Note that the clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550
U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists. See the discussion in MPEP § 2616. It should be also noted that the “substantial new question of patentability” standard for granting reexamination on a request for an inter partes reexamination is the same as the “substantial new question of patentability” standard for granting reexamination on a request for an ex parte reexamination.
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B. For reexaminations filed on or after September 16, 2011, and prior to September 16, 2012:
Whether or not the request and the prior art establish a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request determines whether or not reexamination is ordered. The meaning and scope of the term “a reasonable likelihood that the requester will prevail” is not defined in the statute and must be developed to some extent on a case-by-case basis. With respect to the reasonable likelihood standard, House Rep. 112-98 (Part 1), 112th Cong., 1st Sess., provides, in connection with inter partes review, the following:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’--a standard that currently allows 95% of all requests to be granted--to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.” H.R. Rep. No. 112-98 (Part 1), at 47.
Thus, the reasonable likelihood standard requires a showing that is “elevated” from that of the substantial question of patentability question standard.
If a reexamination proceeding was terminated/vacated without resolving the “reasonable likelihood” question, it can be re-presented in a new reexamination request (but note that for an ex parte reexamination request, a substantial new question of patentability must be raised).
II. POLICY AS TO SUBSTANTIAL NEW QUESTION OF PATENTABILITY IN SPECIFIC SITUATIONS
In order to further clarify the meaning of “a substantial new question of patentability,” certain situations are outlined below which, if present, should be considered when making a decision as to whether or not “a substantial new question of patentability” is present.
A. Prior Favorable Decisions by the U.S. Patent and Trademark Office on the Same or Substantially Identical Prior Art in Relation to the Same Patent
A “substantial new question of patentability” is not raised by the prior art if the Office has previously considered (in an earlier concluded examination or review of the patent or in a pending reexamination or supplemental examination of the patent) the same question of patentability as to a patent claim favorable to the patent owner based on the same prior art patents or printed publications. In re Recreative Technologies, 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996).
In deciding whether to grant a request for reexamination of a patent, the examiner should check the patent’s file history to ascertain whether any of the prior art now advanced by requester was previously cited/considered in an earlier concluded examination or review of the patent or in a pending reexamination or supplemental examination of the patent. For the sake of expediency, such art is referred to as “old art” throughout, since the term “old art” was coined by the Federal Circuit in its decision of In re Hiniker Co., 150 F.3d 1362, 1365-66, 47 USPQ2d 1523, 1526 (Fed. Cir. 1998).
In a decision to order reexamination made on or after November 2, 2002, reliance on old art does not necessarily preclude the existence of a substantial new question of patentability that is based exclusively on that old art. See Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002), which expanded the scope of what qualifies for a substantial new question of patentability upon which a reexamination may be based. Determinations on whether a substantial new question of patentability exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis. For example, a substantial new question of patentability may be based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier examination(s), in view of a material new argument or interpretation presented in the request.
When it is determined that a substantial new question of patentability based solely on old art is raised, form
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paragraph 22.01.01 should be included in the order for reexamination.
¶ 22.01.01 Criteria for Applying Old Art as Sole Basis for Reexamination
The above [1] is based solely on patents and/or printed publications already cited/considered in an earlier concluded examination or review of the patent being reexamined, or has been raised to or by the Office in a pending reexamination or supplemental examination of the patent. On November 2, 2002, Public Law 107-273 was enacted. Title III, Subtitle A, Section 13105, part (a) of the Act revised the reexamination statute by adding the following new last sentence to 35 U.S.C. 303(a) and 312(a):
"The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office."
For any reexamination ordered on or after November 2, 2002, the effective date of the statutory revision, reliance on previously cited/considered art, i.e., “old art,” does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art. Rather, determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis.
In the present instance, there exists a SNQ based solely on [2]. A discussion of the specifics now follows:
[3]
Examiner Note:
1. In bracket 1, insert “substantial new question of patentability” if the present form paragraph is used in an order granting reexamination (or a TC or CRU Director’s decision on petition of the denial of reexamination). If this form paragraph is used in an Office action, insert “ground of rejection.”
2. In bracket 2, insert the old art that is being applied as the sole basis of the SNQ. For example, “the patent to J. Doe” or “the patent to J. Doe when taken with the Jones publication” or “the combination of the patent to J. Doe and the Smith publication” could be inserted. Where more than one SNQ is presented based solely on old art, the examiner would insert all such bases for SNQ.
3. In bracket 3, for each basis identified in bracket 2, explain how and why that fact situation applies in the proceeding being acted on. The explanation could be for example that the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier examination(s), in view of a material new argument or interpretation presented in the request. See Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351 (Bd. Pat. App. & Inter. 1984).
4. This form paragraph is only used the first time the “already cited/considered” art is applied, and is not repeated for the same art in subsequent Office actions.
MPEP § 2258.01 provides a discussion of the use of “old art” in the examination stage of an ordered reexamination (as a basis for rejecting patent claims).
B. Prior Adverse Decisions by the Office on the Same or Substantially Identical Prior Art in the Same Patent
A prior decision adverse to the patentability of a claim of a patent by the Office based upon prior art patents or printed publications would usually mean that “a substantially new question of patentability” is present. Such an adverse decision by the Office could arise from a reissue application which was abandoned after rejection of the claim and without disclaiming the patent claim.
C. Prior Adverse Reissue Application Final Decision by the Director of the Office or the Board Based Upon Grounds Other Than Patents or Printed Publications
Any prior adverse final decision by the Director of the Office, or the Patent Trial and Appeal Board or Board of Patent Appeals and Interferences (Board), on an application seeking to reissue the same patent on which reexamination is requested will be considered by the examiner when determining whether or not a “substantial new question of patentability” is present. To the extent that such a prior adverse final decision was based upon grounds other than patents or printed publications, the prior adverse final decision will not be considered in determining whether or not a “substantial new question of patentability” is present.
D. Prior Favorable or Adverse Decisions on the Same or Substantially Identical Prior Art Patents or Printed Publications in Other Cases not Involving the Patent
While the Office would consider decisions involving substantially identical patents or printed publications in determining whether a “substantial new question of patentability” is raised, the weight given to such decisions will depend upon the circumstances.
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§ 2642OPTIONAL INTER PARTES REEXAMINATION
III. POLICY WHERE A FEDERAL COURT DECISION HAS BEEN ISSUED ON THE PATENT
As to A - C which follow, see Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).
A. Final Holding of a Failure to Prove Invalidity by the Courts
When the initial question as to whether the prior art raises a substantial new question of patentability (SNQ) or there is a reasonable likelihood that the requester will prevail (RLP) as to a patent claim is under consideration, the existence of a final court decision that a patent claim is not invalid in view of the same or different prior art does not necessarily mean that no SNQ/RLP is present, because of the different standards of proof and different standards of claim construction applied by the federal district courts and the Office. While the Office may accord deference to factual findings made by the court, the determination of whether a SNQ/RLP exists will be made independently of the court’s decision on validity, because it is not binding on the Office. See, e.g., In re Swanson et al., 540 F.3d 1368, 1378 (Fed. Cir. 2008) (Federal Circuit approved of the Office’s interpretation in MPEP § 2242). Note, where the requester was a party to the prior litigation resulting in the final court decision that a patent claim is not invalid, see MPEP § 2686.04, subsection II(B) for a discussion of the application of the estoppel provisions of the inter partes reexamination statute.
B. Non-final Holding of Invalidity or Unenforceability by the Courts
A non-final holding of claim invalidity or unenforceability will not be controlling on the question of whether a substantial new question of patentability/a reasonable likelihood that the requester will prevail is present.
C. Final Holding of Invalidity or Unenforceability by the Courts
However, a final holding of claim invalidity or unenforceability, after all appeals, binds the Office. In such cases, a substantial new question of patentability/a reasonable likelihood that the
requester will prevail would not be present as to any claims finally held invalid or unenforceable.
Note: Any situations requiring clarification should be brought to the attention of the Office of Patent Legal Administration.
2643 Claims Considered in Deciding Request [R-07.2015]
The claims of the patent in effect at the time of the determination will be the basis for deciding whether “a substantial new question of patentability” or “a reasonable likelihood that the requester will prevail” is present. 37 CFR 1.923. The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the claim(s) for which reexamination was requested. If a requester seeks to have all of the claims in a patent reexamined, the requester has the opportunity to include them in its request for reexamination. However, if the requester chooses not to include all claims, the claim(s) for which reexamination was not requested will generally not be reexamined by the Office. Further, 35 U.S.C. 311(b)(2) requires that a requester “set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.” If requester fails to apply the art to certain claims, requester is not statutorily entitled to reexamination of such claims. If a request fails to set forth the pertinency and manner of applying the cited art to any claim for which reexamination is requested as required by 37 CFR 1.915(b), that claim will generally not be reexamined. The decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case. If the Office chooses to reexamine any claim for which reexamination has not been requested, it is permitted to do so, since the Office may always initiate a reexamination on its own initiative of the non-requested claim (35 U.S.C. 303(a)). Thus, while the examiner ordinarily concentrates on the claims for which reexamination is requested, the finding of “a substantial new question of patentability” or “a reasonable likelihood that the requester will prevail” can be based upon a claim of the patent other than the ones for which
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reexamination is requested. For example, the request might seek reexamination of particular claims only (i.e., claims 1-4), but the examiner is not limited to those claims. The examiner can make a determination that “a substantial new question of patentability” or “a reasonable likelihood that the requester will prevail” is present as to other claims in the patent (i.e., claims 5-7), without necessarily finding “a substantial new question” or “a reasonable likelihood that the requester will prevail” with regard to the claims requested (i.e., claims 1-4).
The decision on the request for reexamination should discuss all of the patent claims requested for reexamination. The examiner should limit the discussion of those claims in the order for reexamination as to whether a substantial new question of patentability has been raised or “a reasonable likelihood that the requester will prevail” is present.
MPEP § 2642 discusses patent claims which have been the subject of a prior decision.
Amendments and/or new claims present in any copending reexamination or reissue proceeding for the patent to be reexamined will not (see MPEP § 2640, subsection II.(A)) be considered nor commented upon when deciding a request for reexamination.
2644 Prior Art on Which the Determination Is Based [R-11.2013]
The determination of whether or not “a substantial new question of patentability” or “a reasonable likelihood that the requester will prevail” is present can be based upon any prior art patents or printed publications. 35 U.S.C. 312(a) provides that the determination on a request will be made “with or without consideration of other patents or printed publications,” i.e., other than those relied upon in the request. The examiner is not limited in making the determination based on the patents and printed publications relied upon in the request. The examiner can find “a substantial new question of patentability” or “a reasonable likelihood that the requester will prevail” based upon the prior art patents or printed publications relied upon in the request, a combination of the prior art relied upon in the request
and other prior art found elsewhere, or based entirely on different patents or printed publications. The primary source of patents and printed publications used in making the determination are those relied on in the request. For reexamination ordered on or after November 2, 2002, see MPEP § 2642, subsection II.A. for a discussion of “old art.” The examiner can also consider any patents and printed publications of record in the patent file from submissions under 37 CFR 1.501 which are in compliance with 37 CFR 1.98 in making the determination. If the examiner believes that additional prior art patents and publications can be readily obtained by searching to supply any deficiencies in the prior art cited in the request, the examiner can perform such an additional search. Such a search should be limited to that area most likely to contain the deficiency of the prior art previously considered and should be made only where there is a reasonable likelihood that prior art can be found to supply any deficiency necessary to “a substantial new question of patentability" or "a reasonable likelihood that the requester will prevail.”
The determination should be made on the claims in effect at the time the determination is made. 37 CFR 1.923.
2645 [Reserved]
2646 Decision Ordering Reexamination [R-07.2015]
35 U.S.C. 313 Inter partes reexamination order by Director.
[Editor Note: As in effect prior to September 16, 2011.]
If, in a determination made under section 312(a), the Director finds that a substantial new question of patentability affecting a claim of a patent is raised, the determination shall include an order for inter partes reexamination of the patent for resolution of the question. The order may be accompanied by the initial action of the Patent and Trademark Office on the merits of the inter partes reexamination conducted in accordance with section 314.
35 U.S.C. 313 Inter partes reexamination order by Director.
[Editor Note: As in effect beginning September 16, 2011 and ending September 15, 2012.]
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§ 2646OPTIONAL INTER PARTES REEXAMINATION
If, in a determination made under section 312(a), the Director finds that it has been shown that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request, the determination shall include an order for inter partes reexamination of the patent for resolution of the question. The order may be accompanied by the initial action of the Patent and Trademark Office on the merits of the inter partes reexamination conducted in accordance with section 314.
37 CFR 1.931 Order for inter partes reexamination.
[Editor Note: As in effect for a request filed prior to September 16, 2011.]
(a) If a substantial new question of patentability is found, the determination will include an order for inter partes reexamination of the patent for resolution of the question.
(b) If the order for inter partes reexamination resulted from a petition pursuant to § 1.927, the inter partes reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.923.
37 CFR 1.931 Order for inter partes reexamination.
[Editor Note: As in effect for a request filed beginning September 16, 2011 and ending September 15, 2012.]
(a) If it is found that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request, the determination will include an order for inter partes reexamination of the patent for resolution of the question of whether the requester will prevail.
(b) If the order for inter partes reexamination resulted from a petition pursuant to § 1.927, the inter partes reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.923.
If a request for reexamination is granted, the examiner’s decision granting the request will conclude by stating:
-For a request filed prior to September 16, 2011 - that a substantial new question of patentability (SNQ) has been raised affecting a claim of a patent.
-For a request filed beginning September 16, 2011 and ending September 15, 2012 - that there is a reasonable likelihood that the requester will prevail (RLP) with respect to at least one of the claims challenged in the request.
These conclusions (depending on when reexamination was filed) will be referred to collectively as a conclusion that “there is a SNQ/RLP”.
The decision will (A) identify all claims and issues, (B) identify the patents and/or printed publications relied upon, and (C) provide a brief statement of the rationale supporting each SNQ/RLP.
In the examiner’s decision, the examiner must identify at least one SNQ/RLP and explain how the prior art patents and/or printed publications establish that SNQ/RLP. In a simple case, this may entail adoption of the reasons provided by the third party requester. The references relied on by the examiner should be cited on a PTO-892 form, unless already listed on a form PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms) submitted by the third party requester. A copy of the reference should be supplied only where it has not been previously supplied to the patent owner and third party requester.
Where it is not clear that a patent or printed publication pre-dates the patent claims, a discussion should be provided as to why the patent or printed publication is deemed to be available against the patent claims.
If arguments are raised by the third party requester as to grounds not based on patents or printed publications, such as those based on public use or on sale under 35 U.S.C. 102(b), or abandonment under 35 U.S.C. 102(c), the examiner should note that such grounds are improper for reexamination and are not considered or commented upon. See 37 CFR 1.906(c).
In the decision on the request, the examiner does not decide the ultimate question of patentability of the claims. Rather, the examiner only decides whether there is a SNQ/RLP established sufficient to grant the request and order reexamination.
The decision granting the request is made using form PTOL-2063 as a cover sheet. See MPEP § 2647.01 for an example of a decision granting a request for inter partes reexamination.
Form Paragraph 26.01 is used at the beginning of each decision letter granting reexamination.
For a request filed prior to September 16, 2011, the following version was to be used:
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Former ¶ 26.01 New Question of Patentability
A substantial new question of patentability affecting claim [1] of United States Patent Number [2] is raised by the present request for inter partes reexamination.
Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes reexamination proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c) requires that inter partes reexamination proceedings “will be conducted with special dispatch” (37 CFR 1.937). Patent owner extensions of time in inter partes reexamination proceedings are provided for in 37 CFR 1.956. Extensions of time are not available for third party requester comments, because a comment period of 30 days from service of patent owner’s response is set by statute. 35 U.S.C. 314(b)(2).
For a request filed beginning September 16, 2011 and ending September 15, 2012, the following version is used:
¶ 26.01 Reasonable likelihood established
The present request for inter partes reexamination establishes a reasonable likelihood that requester will prevail with respect to claim [1] of United States Patent Number [2].
Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes reexamination proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c) requires that inter partes reexamination proceedings “will be conducted with special dispatch” (37 CFR 1.937). Patent owner extensions of time in inter partes reexamination proceedings are provided for in 37 CFR 1.956. Extensions of time are not available for third party requester comments, because a comment period of 30 days from service of patent owner’s response is set by statute. 35 U.S.C. 314(b)(2).
Form paragraph 26.73 is used at the end of each decision letter granting reexamination that is not being mailed concurrently with the first Office action on patentability (see MPEP § 2660).
¶ 26.73 Correspondence and Inquiry as to Office Actions
All correspondence relating to this inter partes reexamination proceeding should be directed:
By EFS: Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/ myportal/efs-registered.
By Mail to: Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.
Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
Examiner Note:
1. This form paragraph is used at the end of inter partes reexamination communications.
2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.
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§ 2646OPTIONAL INTER PARTES REEXAMINATION
I. PROCESS OF PREPARING THE DECISION ON THE REQUEST, AND ANY ACCOMPANYING OFFICE ACTION
After the reexamination file has been reviewed in the Central Reexamination Unit (CRU) to ensure that it is ready for examination, the reexamination proceeding is assigned to an examiner.
In the event the CRU Supervisory Patent Reexamination Specialist (SPRS) believes that another Art Unit within the CRU should examine the reexamination file, see MPEP § 2637 for procedures for transferring the reexamination file.
After the examiner receives the new inter partes reexamination file, the examiner prepares for and sets up a panel review conference as per MPEP § 2671.03, to discuss the issuance of a decision on the request for reexamination, and, where applicable, a first Office action to accompany the decision. The examiner may prepare the decision on the request for reexamination, and, where applicable, the first Office action to accompany the decision after the conference, or may prepare the decision on the request for reexamination, and, where applicable, the first Office action prior to the conference and revise it as needed after the conference.
The conference is conducted. If the conference confirms the examiner’s preliminary decision to grant reexamination, the decision on the request for reexamination, and any first Office action to accompany the decision (also confirmed), is completed and signed by the examiner, with the two, or more, other conferees initialing the action (as “conferee”) to indicate their presence in the conference. A transmittal form PTOL-2070 with the third party requester’s address are completed, if a copy for mailing is not already available. The transmittal form PTOL-2070 is used to forward copies of Office actions (and any references cited in the actions) to the third party requester. Whenever an Office action is issued, a copy of this form is made and attached to a copy of the Office action. The use of this form removes the need to retype the third party requester’s address each time a mailing is required. In conjunction with the mailing, any appropriate processing (e.g., PALM work, update scanning) is carried out by the staff of the CRU.
II. PETITION TO VACATE THE ORDER GRANTING REEXAMINATION
A substantive determination by the Director of the Office to institute reexamination pursuant to a finding that the prior art patents or printed publications raise a substantial new question of patentability is not subject to review by petition or otherwise. See Joy Mfg. Co. v. Nat’l Mine Serv. Co., Inc., 810 F.2d 1127, 1 USPQ2d 1627 (Fed. Cir. 1987); Heinl v. Godici, 143 F.Supp. 2d 593 (E.D. Va. 2001); see also Patlex Corp. v. Quigg, 680 F.Supp. 33, 6 USPQ2d 1296, 1298 (D.D.C. 1988) (the legislative scheme leaves the Director’s 35 U.S.C. 303 determination entirely to his discretion and not subject to judicial review). These decisions were rendered for ex parte reexamination; however, the holdings of these decisions apply equally for a SNQ finding in inter partes reexamination proceedings, since the language of 35 U.S.C. 303(c) (i.e., the ex parte reexamination statute) is also found in 35 U.S.C. 312(c) (i.e., the inter partes reexamination statute). In like manner, these decisions apply equally for a RLP finding in inter partes reexamination proceedings. Because the substantive determination is not subject to review by petition or otherwise, neither the patent owner nor the third party requester has a right to petition, or request reconsideration of, a finding that the prior art patents or printed publications raise a SNQ/RLP. There is no right to petition, as an “ ultra vires” action by the Office, if the finding of a SNQ/RLP is based on reasons other than those urged by the third party requester (or based on less than all the grounds urged by the third party requester). Where the examiner determines that a date of a reference is early enough such that the reference constitutes prior art, that determination is not petitionable (with respect to vacating the examiner’s finding of a SNQ/RLP). Where the examiner determines that a reference is a printed publication (i.e., that the criteria for publication has been satisfied), that determination is also not petitionable. These matters cannot be questioned with respect to vacating the order granting reexamination.
A petition under 37 CFR 1.181 may, however, be filed to vacate a reexamination order where no discretion to grant a request for reexamination exists. “Appropriate circumstances” under 37 CFR
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1.181(a)(3) exist to vacate the order granting reexamination where, for example:
(A) the reexamination order is facially not based on prior art patents or printed publications;
(B) reexamination is prohibited under 37 CFR 1.907;
(C) all claims of the patent were held to be invalid by a final decision of a federal court after all appeals;
(D) reexamination was ordered for the wrong patent; or
(E) reexamination was ordered based on a duplicate copy of the request.
While a patent owner may file a petition under 37 CFR 1.181(a)(3) to vacate a reexamination order as “ ultra vires,” such a petition should be rare, and will be granted only in a situation where the Office acted in “brazen defiance” of its statutory authority in granting the reexamination order. See Heinl, 143 F. Supp. 2d at 601-02. This occurs only where the Office applied the wrong standard in ordering reexamination; a petition is not to be filed to challenge the Office’s application of the correct standard, since such is barred by statute. See 35 U.S.C. 312(c). Petitions to vacate a reexamination order are delegated to the Director of Central Reexamination Unit (CRU).
When a petition under 37 CFR 1.181 is filed to vacate a reexamination order, the third party requester may file a single submission in opposition to the petition. Because reexamination proceedings are conducted with special dispatch, 35 U.S.C. 314(c), any such opposition by the third party requester must be filed within two weeks of the date upon which a copy of the original 37 CFR 1.181 petition was served on the third party requester to ensure consideration. It is advisable that, upon receipt and review of the served copy of such a 37 CFR 1.181 petition which the third party requester intends to oppose, the requester should immediately place a courtesy telephone call to the CRU SPRS to notify the Office that an opposition to the 37 CFR 1.181 petition will be filed. Whenever possible, filing of the opposition should be submitted electronically.
The filing of a 37 CFR 1.181 petition to vacate an ultra vires reexamination order is limited to a single submission, even if an opposition thereto is filed by a third party requester.
III. PRIORART SUBMITTEDAFTER THE ORDER
Any prior art citations under 37 CFR 1.501 submitted after the date of the decision ordering inter partes reexamination are stored until the reexamination is concluded. Note 37 CFR 1.902. After the reexamination proceeding is concluded, the submission is entered in the patent file. Submissions filed after the date of an order for reexamination will not be considered by the examiner during the reexamination. See MPEP § 2206. Note that 37 CFR 1.902 governs submissions of prior art that can be made by patent owners and third party requesters after reexamination has been ordered. Also note that written statements under 37 CFR 1.501 are not permitted to be filed in an inter partes reexamination. See MPEP § 2602.
2647 Decision Denying Reexamination [R-07.2015]
The request for reexamination will be denied if a SNQ/RLP is not found based on patents or printed publications.
If the examiner concludes that no SNQ/RLP has been raised, the examiner should prepare a decision denying the reexamination request. Form paragraph 26.02 should be used as the introductory paragraph in a decision denying reexamination.
For a request filed prior to September 16, 2011, the following version was to be used:
Former ¶ 26.02 No New Question of Patentability
No substantial new question of patentability is raised by the present request for inter partes reexamination and the prior art cited therein for the reasons set forth below.
For a request filed beginning September 16, 2011 and ending September 15, 2012, the following version is used:
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§ 2647OPTIONAL INTER PARTES REEXAMINATION
¶ 26.02 No reasonable likelihood established
For the reasons set forth below, the present request for inter partes reexamination fails to establish a reasonable likelihood that requester will prevail with respect to at least one of the challenged claims of United States Patent Number [1].
The decision denying the request will then indicate, for each patent or publication cited in the request, why a SNQ/RLP has not been established by the request, for that citation.
The examiner should also, in the decision, respond to the substance of each argument raised by the third party requester which is based on patents or printed publications.
If arguments are presented as to grounds not based on prior art patents or printed publications, such as those based on public use or on sale under 35 U.S.C. 102(b), or abandonment under 35 U.S.C. 102(c), the examiner should note that such grounds are improper for reexamination and are not considered or commented upon. See 37 CFR 1.906(c).
See MPEP § 2647.01 for an example of a decision denying a request for inter partes reexamination which was filed prior to September 16, 2011 (when the SNQ standard was applied).
The decision denying the request is processed for mailing by the Central Reexamination Unit (CRU), and the CRU will allow time for petition seeking review of the examiner’s determination refusing reexamination. If such a petition is not filed within one (1) month of the examiner’s determination denying reexamination, the CRU then processes the reexamination file to provide the partial refund set forth in 37 CFR 1.26(c) (the Office of Finance no longer processes reexamination proceedings for a refund).
The reexamination proceeding is then given a 420 status in the Office's PALM system. A copy of the PALM “Application Number Information” screen and the “Contents” screen is printed, the printed copy is annotated by adding the comment
“PROCEEDING CONCLUDED,” and the annotated copy is scanned into IFW using the miscellaneous letter document code.
The concluded reexamination file (electronic or paper) containing the request and the decision denying the request becomes part of the patent’s record.
PROCESS OF PREPARING THE DECISION DENYING THE REQUEST
If the examiner’s position is to deny reexamination, the examiner prepares for and sets up a panel review conference as per MPEP § 2671.03, to discuss the issuance of a decision denying reexamination. The examiner may prepare the decision after the conference, or may prepare the decision prior to the conference and revise it, as needed.
If the conference confirms the examiner’s preliminary decision not to grant reexamination, the decision denying reexamination is completed and signed by the examiner, with the two or more other conferees initialing the action (as “conferee”) to indicate their presence in the conference. A transmittal form PTOL-2070 with the third party requester’s address is completed, if a copy for mailing is not already available. The transmittal form PTOL-2070 is used to forward the decision to the third party requester. The use of this form removes the need to retype the third party requester’s address each time a mailing is required.
2647.01 Examples of Decisions on Requests [R-11.2013]
Examples of decisions on requests for inter partes reexamination for requests filed prior to September 16, 2011 (when the SNQ standard was applied), are provided below. The first example is a grant of an inter partes reexamination. The second example is
a denial of an inter partes reexamination. The examiner should leave the paper number blank, since IFW files do not have a paper number.
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Rev. 07.2015, October 20152600-43
§ 2647.01OPTIONAL INTER PARTES REEXAMINATION
DECISION GRANTING INTER PARTES REEXAMINATION
A substantial new question of patentability affecting claims 1-3 of United States Patent Number 9,999,999 to Key is raised by the present request for inter partes reexamination. Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes reexamination proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 314(c) requires that inter partes reexamination proceedings “will be conducted with special dispatch” (37 CFR 1.937). Patent owner extensions of time in inter partes reexamination proceedings are provided for in 37 CFR 1.956. Extensions of time are not available for third party requester comments, because a comment period of 30 days from service of patent owner’s response is set by statute. 35 U.S.C. 314(b)(3). The patent owner is reminded of the continuing responsibility under 37 CFR 1.985(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent 9,999,999 throughout the course of this reexamination proceeding. The third party requester is also reminded of the ability to similarly apprise the Office of any such activity or proceeding throughout the course of this reexamination proceeding. See MPEP § 2686 and 2686.04. The request sets forth that the third party requester considers claims 1-3 of the Key patent to be unpatentable over Smith taken with Jones. The request further sets forth that the requester considers claim 4 of the Key patent to be unpatentable over the Horn publication. It is agreed that the consideration of Smith raises a substantial new question of patentability as to claims 1-3 of the Key patent. As pointed out on pages 2-3 of the request, Smith teaches using an extruder supported on springs at a 30 degree angle to the horizontal but does not teach the specific polymer of claims 1-3 which is extruded. The teaching as to spring-supporting the extruder at 30 degrees was not present in the prosecution of the application which became the Key patent. Further, there is a substantial likelihood that a reasonable examiner would consider this teaching important in deciding whether or not the claim is patentable. Accordingly, Smith raises a substantial new question of patentability as to claims 1-3, which question has not been raised in a previous examination of the Key patent. The Horn publication does not raise a new question of patentability as to claim 4 because its teaching as to the extrusion die is a substantial equivalent of the teaching of the die by the Dorn patent which was considered in the prosecution of the application which became the Key patent. Further, the request does not present any other new question of patentability as to claim 4, and none has been found. Accordingly, claim 4 will not be reexamined. Finally, reexamination has not been requested for claims 5 – 20 of the Key patent. Accordingly, claims 5 – 20 will not be reexamined. Claims 1 – 3 of the Key patent will be reexamined. All correspondence relating to this inter partes reexamination proceeding should be directed:
Registered users may submit via the electronic filing system EFS-Web, atBy EFS: https://efs.uspto.gov/efile/myportal/efs-registered Mail Stop Inter Partes ReexamBy Mail to: Attn: Central Reexamination Unit Commissioner for Patents United States Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450 (571) 273-9900By FAX to: Central Reexamination Unit Customer Service WindowBy hand: Randolph Building
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401 Dulany Street Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office’s electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action. Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
/John Doe/ John Doe Primary Examiner CRU Art Unit 3998 /ARI/ Conferee /BZ/ Conferee
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DECISION DENYING INTER PARTES REEXAMINATION No substantial new question of patentability is raised by the present request for inter partes reexamination for the reasons set forth below The request indicates that Requester considers that a substantial new question of patentability is raised as to claims 1-2 of the Key patent (Patent # 9,999,999) based on Smith taken with Jones. The request further indicates that Requester considers that a substantial new question of patentability is raised as to claim 3 of the Key patent based on Smith taken with Jones and when further taken with the Horn publication. The claims of the Key patent, for which reexamination is requested, require that an extruder be supported on springs at an angle of 30 degrees to the horizontal, while a specific chlorinated polymer is extruded through a specific extrusion die. The Smith patent does not raise a substantial new question of patentability as to the Key claims. Smith’s teaching as to the extruder being spring-supported at 30 degrees is a substantial equivalent of the teaching of same by the Dorn patent which was considered in the prosecution of the application which became the Key patent. In the request for reexamination, it is argued that Jones teaches the extrusion die. However, Jones was previously used, in the prosecution of the Key application, to teach the extrusion die. Further, there is no argument in the reexamination request that Jones is being applied in a manner different than it was applied in the prosecution of the Key application. The Horn publication has been argued to show the connection of the support means to the extruder via bolts, as recited in claim 3 of the Key patent. Although this teaching was not provided in the prosecution of the Key application, the teaching would not be considered to be important to a reasonable examiner in deciding whether or not the Key claims are patentable.
The references set forth in the request have been considered both alone and in combination. They fail to raise a substantial new question of patentability as to any one of the Key patent claims. In view of the above, the request for reexamination is DENIED. All correspondence relating to this inter partes reexamination proceeding should be directed:
Registered users may submit via the electronic filing system EFS-Web, atBy EFS: https://efs.uspto.gov/efile/myportal/efs-registered. Mail Stop Inter Partes ReexamBy Mail to: Attn: Central Reexamination Unit United States Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450 (571) 273-9900 Central Reexamination UnitBy FAX to: Customer Service WindowBy hand (or
delivery service):
Randolph Building 401 Dulany Street Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office’s electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action. Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
/John Doe/
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§ 2647.01OPTIONAL INTER PARTES REEXAMINATION
John Doe Primary Examiner CRU Art Unit 3998 /ARI/ Conferee /BZ/ Conferee
2647.02 Processing of Decision [R-07.2015]
After the examiner has prepared the decision (and any Office action to accompany the decision) the heading is added to the cover page (PTOL-2063) of the decision. Where the first Office action accompanies the decision, the heading is also printed on the cover page (PTOL-2064) of the first Office action, and the first Office action is mailed with the decision.
A transmittal form PTOL-2070 with the third party requester’s address will be completed (if a copy for mailing is not already in the case file). The transmittal form PTOL-2070 is used to forward copies of Office actions and other communications to the third party requester. Whenever an Office action is issued, a copy of this form will be made and attached to a copy of the Office action. Use of this form removes the need to retype the third party requester’s address each time a mailing is made.
Where the decision is a grant of reexamination, the first Office action on the merits will ordinarily be prepared and mailed with the order granting reexamination. See MPEP § 2660.
The file will be appropriately annotated, update scanning will be effected, and appropriate PALM entries will be made at this time.
2648 Petition From Denial of Request [R-07.2015]
37 CFR 1.927 Petition to review refusal to order inter partes reexamination.
[Editor Note: For a request filed prior to September 16, 2011.]
The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing to order inter partes reexamination. Any such petition must comply with § 1.181(b).
If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.
37 CFR 1.927 Petition to review refusal to order inter partes reexamination.
[Editor Note: For a request filed beginning September 16, 2011 and ending September 15, 2012.]
The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing to order inter partes reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request has not been established, the determination shall be final and nonappealable.
PROCESSING OF PETITION UNDER 37 CFR 1.927
Once a request for inter partes reexamination has been denied, the Central Reexamination Unit (CRU) will allow time for seeking review of the examiner’s determination refusing reexamination. If no petition is filed within one (1) month, the CRU will process the reexamination as a concluded reexamination file. See MPEP § 2647 and § 2694. If a petition is timely filed, the petition (together with the reexamination file) is forwarded to the office of the CRU Director for decision. The CRU Director then reviews the examiner’s determination that a substantial new question of patentability has not been raised or that there is no reasonable likelihood that the requester will prevail. The CRU Director’s review is de novo. Each decision by the CRU Director concludes with the following paragraph:
This decision is final and nonappealable. See 35 U.S.C. 312(c) and 37 CFR 1.927. No further communication on this matter will be acknowledged or considered.
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If the petition is granted, the decision of the CRU Director should include a sentence stating that an Office action will be mailed in due course.
The CRU Director signs the decision granting the petition, and then forwards the reexamination file, together with the decision, to the CRU support staff for mailing of the decision, update scanning and PALM processing. The CRU Supervisory Patent Reexamination Specialist (SPRS) may reassign the reexamination to another examiner pursuant to 37 CFR 1.931(b), notifies the CRU technical support staff of the assignment so that the new assignment can be entered in the PALM records, and forwards the file to the new examiner to prepare a first Office action.
In the situation in which the examiner's determination failed to find any SNQ or RLP, reassignment to another examiner is the general rule. Only in exceptional circumstances where no other examiner is available and capable to give a proper examination, will the case remain with the examiner who denied the request.
Under normal circumstances, the reexamination proceeding is not reassigned to a primary examiner or assistant examiner who was involved in any part of the examination of the patent for which reexamination is requested, or was so-involved in the examination of the parent of the patent. The CRU Director can make an exception to this practice and reassign the reexamination proceeding to an examiner involved with the original examination (of the patent) only where unusual circumstances are found to exist. For example, where there are no examiners other than an original examiner of the patent and the examiner who issued the denial with adequate knowledge of the relevant technology, the CRU Director may permit reassignment of the reexamination proceeding to an examiner that originally examined the patent.
The requester may seek review of a denial of a request for reexamination only by petitioning the Director of the USPTO under 37 CFR 1.927 and 1.181 within one (1) month of the mailing date of the decision denying the request for reexamination. Additionally, any request for an extension of the time to file such a petition from the examiner’s
denial of a request for reexamination can only be entertained by filing a petition under 37 CFR 1.183 with the appropriate fee to waive the time provisions of 37 CFR 1.927.
After the time for petition has expired (without a petition being filed), or a petition has been filed and the decision affirms the denial of the request, a partial refund of the filing fee for the request for reexamination is made to the third party requester. 35 U.S.C. 312(c) and 37 CFR 1.26(c). A decision on a petition seeking review of an Office denial to reexamine a patent under 37 CFR 1.927 and 1.181 is final and is not appealable.
37 CFR 1.927 applies only to challenging a basis for denying of reexamination; it does not apply to challenging a basis for granting of reexamination.
If an order granting reexamination includes a determination that one or more alleged SNQs or RLPs did not raise a SNQ or RLP, respectively, the third party requester may (within one month of the mailing date of the order) file a petition under 37 CFR 1.927 for reconsideration of the determination.
2649 -2653 [Reserved]
2654 Conduct of Inter Partes Reexamination Proceedings [R-07.2015]
35 U.S.C. 314 Conduct of inter partes reexamination proceedings
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to September 16, 2012]
(a) IN GENERAL.— Except as otherwise provided in this section, reexamination shall be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any inter partes reexamination proceeding under this chapter, the patent owner shall be permitted to propose any amendment to the patent and a new claim or claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted.
(b) RESPONSE.—
(1) With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the other party. In
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§ 2654OPTIONAL INTER PARTES REEXAMINATION
addition, the Office shall send to the third-party requester a copy of any communication sent by the Office to the patent owner concerning the patent subject to the inter partes reexamination proceeding.
(2) Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity to file written comments addressing issues raised by the action of the Office or the patent owner’s response thereto, if those written comments are received by the Office within 30 days after the date of service of the patent owner’s response.
(c) SPECIAL DISPATCH.— Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.
37 CFR 1.937 Conduct of inter partes reexamination.
(a) All inter partes reexamination proceedings, including any appeals to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office, unless the Director makes a determination that there is good cause for suspending the reexamination proceeding.
(b) The inter partes reexamination proceeding will be conducted in accordance with §§ 1.104 through 1.116, the sections governing the application examination process, and will result in the issuance of an inter partes reexamination certificate under § 1.997, except as otherwise provided.
(c) All communications between the Office and the parties to the inter partes reexamination which are directed to the merits of the proceeding must be in writing and filed with the Office for entry into the record of the proceeding.
(d) A petition in an inter partes reexamination proceeding must be accompanied by the fee set forth in § 1.20(c)(6), except for petitions under § 1.956 to extend the period for response by a patent owner, petitions under § 1.958 to accept a delayed response by a patent owner, petitions under § 1.78 to accept an unintentionally delayed benefit claim, and petitions under § 1.530(l) for correction of inventorship in a reexamination proceeding.
Once inter partes reexamination is ordered, a first Office action on the merits will be issued (the first Office action will ordinarily be mailed with the order; see MPEP § 2660), and prosecution will proceed. Each time the patent owner responds to an Office action, the third party requester may comment on the Office action and the patent owner response, and thereby participate in the proceeding.
Reexamination will proceed even if the order is returned undelivered. As pointed out in MPEP § 2630, the notice under 37 CFR 1.11(c) is constructive notice to the patent owner, and lack of
response from the patent owner will not delay reexamination.
Examination will be conducted in accordance with 37 CFR 1.104, 1.105, 1.110-1.113, 1.115, and 1.116 (35 U.S.C.132 and 133) and will result in the issuance of a reexamination certificate under 37 CFR 1.997. The proceeding shall be conducted with “special dispatch” pursuant to 35 U.S.C. 314(c). The patent owner and the third party requester are sent copies of all Office actions. Also, the patent owner and the third party requester must serve copies of all their submissions to the Office on each other. Citations of art submitted in the patent file prior to issuance of an order for reexamination will be considered by the examiner during the reexamination.
2655 Who Reexamines [R-07.2015]
The examination is ordinarily conducted by the same patent examiner who made the decision that the reexamination request should be granted. See MPEP § 2636.
However, if a petition under 37 CFR 1.927 is granted overturning a refusal to order reexamination of all of the claims requested to be reexamined, the reexamination proceeding will normally be conducted by another examiner. See MPEP § 2648.
2656 Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination [R-07.2015]
Typically, the primary source of prior art will be the patents and printed publications cited in the request for inter partes reexamination.
Subject to the discussion provided below in this section, the examiner must also consider patents and printed publications:
(A) cited by another reexamination requester under 37 CFR 1.510 or 37 CFR 1.915;
(B) cited by the patent owner under a duty of disclosure (37 CFR 1.933) in compliance with 37 CFR 1.98;
(C) discovered by the examiner in searching;
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(D) of record in the patent file from earlier examination;
(E) of record in the patent file from any 37 CFR 1.501 submission prior to date of an order if it complies with 37 CFR 1.98; and
(F) cited by the third party requester under appropriate circumstances pursuant to 37 CFR 1.948.
Where patents, publications, and other such documents are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given to such information will normally be limited by the degree to which the party filing the document has explained its content and relevance. The initials of the examiner placed adjacent to the citations on the form PTO/SB/08A and 08B or its equivalent, without an indication to the contrary, do not signify that the document has been considered any further than noted above.
As to (D) above, the degree of consideration of information from the patent file and its parent files is dependent on the availability of the information. For example, as to a reference other than a U.S. patent and U.S. patent publication that is not scanned into the Image File Wrapper (IFW) what was said about that reference in the patent’s record is the full extent of consideration, unless otherwise indicated, or unless parties appropriately supply a copy.
As to (B) and (E) above, 37 CFR 1.98(a)(2) requires a legible copy of:
(1) each foreign patent;
(2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
(3) for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion;
(4) all other information or that portion which caused it to be listed.
It is not required nor is it permitted that parties submit copies of copending reexamination
proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide the application/proceeding serial/control number and its status. A submission that is not permitted entry will be returned, expunged, or discarded at the sole discretion of the Office.
The exception to the requirement for reference copies noted in 37 CFR 1.98(d)(1) does not apply to reexamination proceedings since a reexamination proceeding does not receive 35 U.S.C. 120 benefit from the patent.
AFTER THE NOTICE OF INTENT TO ISSUE INTER PARTES REEXAMINATION CERTIFICATE (NIRC):
Once the NIRC has been mailed, the reexamination proceeding is forwarded for publication of the reexamination certificate. Thus, when the patent owner provides a submission of patents and printed publications or other information described in 37 CFR 1.98(a) after the NIRC has been mailed the proceeding has entered the publication process for printing the reexamination certificate. To automatically delay prosecution by pulling the proceeding from that process when such a submission has been filed, without more, would be contrary to the Office’s statutory mandate for “special dispatch,” as set forth in 35 U.S.C. 314.
For this reason, the submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier, (B) an unequivocal statement that one or more claims are unpatentable, and (C) an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. This must be provided via a petition under 37 CFR 1.182 (with petition fee) for entry and consideration of the information submitted after NIRC. These requirements are necessary to provide a basis for interrupting the proceeding after NIRC, in order for the Office to comply with its the statutory mandate for “special dispatch.”
These requirements are similar to the requirements to withdraw an application from issue as set forth in 37 CFR 1.313(c)(1). The printing cycle for an
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application occurs after the payment of the issue fee (there is no issue fee in reexamination), and thus, in order to withdraw an application from issue after payment of the issue fee, the requirements of 37 CFR 1.313(c) must be met. Based on the statutory requirement for “special dispatch,” the requirements for withdrawal of a reexamination proceeding from issue, i.e., its printing cycle, after NIRC are at least as burdensome as those set forth in 37 CFR 1.313(b) and (c). Accordingly, where a submission of patents and printed publications or other information described in 37 CFR 1.98(a) is made after NIRC, the patent owner must provide an unequivocal statement as to why the art submitted makes at least one claim unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. This is in addition to the above-discussed factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier (see item (A) in the paragraph above).
2657 Listing of Prior Art [R-07.2015]
The reexamination request must provide a listing of the patents and printed publications (discussed in the request) as provided for in 37 CFR 1.98. See MPEP § 2614. The examiner must list on a form PTO-892, if not already listed on a form PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms), all prior art patents or printed publications which have been cited in the decision on the request, applied in making rejections or cited as being pertinent during the reexamination proceedings. Such prior art patents or printed publications may have come to the examiner’s attention because they were:
(A) of record in the patent file due to a prior art submission under 37 CFR 1.501 which was received prior to the date of the order;
(B) of record in the patent file as result of earlier examination proceedings as to the patent;
(C) discovered by the examiner during a prior art search; or
(D) submitted pursuant to 37 CFR 1.948.
All citations listed on form PTO-892, and all citations not lined-through on any form PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms), will be the list of prior art documents considered in the reexamination proceeding. A notice will be printed on the reexamination certificate to state that the list of cited prior art documents will be available via PAIR by the reexamination control number.
2658 Scope of Inter Partes Reexamination [R-07.2015]
37 CFR 1.906 Scope of reexamination in inter partes reexamination proceeding.
(a) Claims in an inter partes reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112.
(b) Claims in an inter partes reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent.
(c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in an inter partes reexamination proceeding. If such issues are raised by the patent owner or the third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may desire to consider the advisability of filing a reissue application to have such issues considered and resolved.
Inter partes reexamination differs from ex parte reexamination in matters of procedure, such as when the third party requester can participate, the types of Office actions and the timing of issuance of the Office actions, and the requirement for identification of the real party in interest. Inter partes reexamination also differs from ex parte reexamination in the estoppel effect it provides as to the third party requesters and when the initiation of a reexamination is prohibited.
Inter partes reexamination does not, however, differ from ex parte reexamination ordered under 35 U.S.C. 304 as to the substance to be considered in the proceeding.
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I. PRIOR ART PATENTS OR PRINTED PUBLICATIONS, AND DOUBLE PATENTING
Rejections on art in inter partes reexamination proceedings may only be made on the basis of prior art patents or printed publications under the first-to-invent prior art regime, or double patenting. See MPEP §§ 2258 and 2258.01 for a discussion of art rejections in reexamination proceedings based on prior art patents or printed publications. The discussion there includes making double patenting rejections and the use of admissions.
It is to be noted that the decisions cited in MPEP §§ 2258 and 2258.01 for applying the art in ex parte reexamination proceedings apply analogously in inter partes reexamination proceedings, since the
statutory language relied upon in those decisions, which is taken from the ex parte reexamination statute, is also found in the inter partes reexamination statute.
II. COMPLIANCE WITH 35 U.S.C. 112
Where new or amended claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding are to be examined for compliance with 35 U.S.C. 112. See MPEP § 2258 for a discussion of the examination based upon 35 U.S.C. 112 in an ex parte reexamination proceeding ordered under 35 U.S.C. 304 , which discussion applies to inter partes reexamination in the same way it applies to ex parte reexamination ordered under 35 U.S.C. 304 . See also In re NTP, Inc., 654 F.3d 1268, 99 USPQ2d 1500 (Fed. Cir. 2011)(holding that the Office is not prohibited from performing a 35 U.S.C. 112 written description priority analysis during reexamination).
III. CLAIMS IN PROCEEDING MUST NOT ENLARGE SCOPE OF THE CLAIMS OF THE PATENT
Where new claims are presented, or where any part of the disclosure is amended, the claims of the inter partes reexamination proceeding should be examined under 35 U.S.C. 314, to determine whether they enlarge the scope of the original claims. 35 U.S.C. 314(a) states that “no proposed amended or new claim enlarging the scope of the claims of the patent
shall be permitted” in an inter partes reexamination proceeding.
A. Criteria for Enlargement of the Scope of the Claims
A claim presented in a reexamination proceeding enlarges the scope of the claims of the patent being reexamined where the claim is broader than each and every claim of the patent. See MPEP § 1412.03 for guidance as to when the presented claim is considered to be a broadening claim as compared with the claims of the patent, i.e., what is broadening and what is not. If a claim is considered to be a broadening claim for purposes of reissue, it is likewise considered to be a broadening claim in reexamination.
B. Amendment of the Specification
Where the specification is amended in a reexamination proceeding, the examiner should make certain that the amendment to the specification does not enlarge the scope of the claims of the patent. An amendment to the specification can enlarge the scope of the claims by redefining the scope of the terms in a claim, even where the claims are not amended in any respect.
C. Rejection of Claims Where There Is Enlargement
Any claim which enlarges the scope of the claims of the patent should be rejected under 35 U.S.C. 314(a). Form paragraph 26.03.01 is to be employed in making the rejection.
¶ 26.03.01 Rejection, 35 U.S.C. 314(a), Claim Enlarges Scope of Patent
Claim [1] rejected under 35 U.S.C. 314(a) as enlarging the scope of the claims of the patent being reexamined. 35 U.S.C. 314(a) states that “no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted” in an inter partes reexamination proceeding. A claim presented in a
reexamination “enlarges the scope” of the patent claims where the claim is broader than the claims of the patent. A claim is broadened if it is broader in any one respect, even though it may be narrower in other respects. [2].
Examiner Note:
The claim limitations which are considered to broaden the scope should be identified and explained in bracket 2. See MPEP § 2658.
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IV. OTHER MATTERS
A. Patent Under Reexamination Subject of a Prior Office or Court Decision
Where some of the patent claims in a patent being reexamined have been the subject of a prior Office or court decision, see MPEP § 2642. Where other proceedings involving the patent are copending with the reexamination proceeding, see MPEP § 2686 - § 2686.04.
Patent claims not subject to reexamination because of their prior adjudication by a court should be identified. See MPEP § 2642. For handling a “live” claim dependent on a patent claim not subject to reexamination, see MPEP § 2660.03. All added claims will be examined.
Where grounds set forth in a prior Office or federal court decision, are not based on patents or printed publications, yet clearly raise questions as to the claims, the examiner’s Office action should clearly state that the claims have not been examined as to those grounds not based on patents or printed publications nor applicable portions of 35 U.S.C. 112 stated in the prior decision. See 37 CFR 1.906(c); see also In re Knight, 217 USPQ 294 (Comm’r Pat. 1982).
B. “Live” Claims That Are Reexamined During Reexamination
The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the “live” claims (i.e., existing claims not held invalid by a final decision, after all appeals) for which reexamination has been requested. If the requester was interested in having all of the claims reexamined, requester had the opportunity to include them in its request for reexamination. However, if the requester chose not to do so, those claim(s) for which reexamination was not requested will generally not be reexamined by the Office. It is further noted that 35 U.S.C. 311(b)(2) requires that a requester “set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.” If the requester fails to apply the art to certain claims, then the requester is
not statutorily entitled to reexamination of such claims. If a request fails to set forth the pertinency and manner of applying the cited art to any claim for which reexamination is requested as required by 37 CFR 1.915(b), that claim will generally not be reexamined.
The decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case. If the Office chooses to reexamine any claim for which reexamination has not been requested, it is permitted to do so. In addition, the Office may always initiate a reexamination on its own initiative of the non-requested claim (35 U.S.C. 303(a)). Similarly, if prior art patents or printed publications are discovered during reexamination which raise a substantial new question of patentability (for a reexamination filed under that standard) or a reasonable likelihood that the requester will prevail (for a reexamination filed under that standard) as to one or more patent claims for which reexamination has not been ordered (while reexamination has been ordered for other claims in the patent), and these documents in turn raise a compelling rejection of such claims, then such claims may be added, within the sole discretion of the Office, during the examination phase of the proceeding.
C. Restriction Not Proper in Reexamination
Restriction requirements cannot be made in a reexamination proceeding since no statutory basis exists for restriction in a reexamination proceeding. Note also that the addition of claims to a “separate and distinct” invention to the patent would be considered as being an enlargement of the scope of the patent claims and therefore are prohibited during reexamination. See Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989). See MPEP § 1412.03.
D. Ancillary Matters
There are matters ancillary to reexamination which are necessary and incident to patentability which will be considered. Amendments may be made to the specification to correct, for example, an
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inadvertent failure to claim foreign priority or the continuing status of the patent relative to a parent application if such correction is necessary to overcome a reference applied against a claim of the patent.
E. Claiming Foreign and Domestic Priority in Reexamination
See MPEP § 2258.02 for guidance on claiming foreign priority or domestic benefit in a reexamination proceeding.
F. Correction of Inventorship
Correction of inventorship may also be made during reexamination. See 37 CFR 1.324 and MPEP § 1481 for petition for correction of inventorship in a patent. If a petition filed under 37 CFR 1.324 is granted, a Certificate of Correction indicating the change of inventorship will not be issued, because the reexamination certificate that will ultimately issue will contain the appropriate change-of-inventorship information (i.e., the Certificate of Correction is in effect merged with the reexamination certificate).
G. Affidavits in Reexamination
Affidavits under 37 CFR 1.131(a) and 1.132 may be utilized in a reexamination proceeding. Note, however, that an affidavit under 37 CFR 1.131(a) may not be used to “swear behind” a reference patent if the reference patent is claiming the same invention as the patent undergoing reexamination. In such a situation, the patent owner may, if appropriate, seek to raise this issue via an affidavit under 37 CFR 1.131(c) (see MPEP § 718) or in an interference proceeding via an appropriate reissue application if such a reissue application may be filed (see MPEP § 1449.02).
H. Issues Not Considered in Reexamination
If questions other than those indicated above (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under pre-AIA 35 U.S.C. 102(c), etc.) are raised by the third party requester or the patent owner during a reexamination proceeding, the existence of such questions may be noted by the examiner in the next
Office action. Such questions could arise in a reexamination requester’s 37 CFR 1.915 request or in 37 CFR 1.947 comments by the third party requester. For written comments by the requester during a reexamination proceeding which are not limited to addressing issues raised by the action of the Office or the patent owner’s response, see MPEP § 2666.05.
Note form paragraph 26.03.
¶ 26.03 Issue Not Within Scope of Inter Partes Reexamination
An issue has been raised in the present reexamination proceeding that is not within the scope of inter partes reexamination proceedings. [1]. This issue will not be considered in the present proceeding. 37 CFR 1.906(c).
Examiner Note:
1. In bracket 1, identify the issues.
2. This paragraph may be used either when the patent owner or the third party requester raises issues such as (but not limited to) public use or on sale, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.
If questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102(c), etc. are independently discovered by the examiner during a reexamination proceeding but were not raised by the third party requester or the patent owner, the existence of such questions will not be noted by the examiner in an Office action, because 37 CFR 1.906(c) is only directed to such questions “raised by the patent owner or the third party requester.”
I. Request for Reexamination Filed on Patent after it Has Been Reissued
Where a request for reexamination is filed on a patent after it has been reissued, reexamination will be denied because the patent on which the request for reexamination is based has been surrendered. Should reexamination of the reissued patent be desired, a new request for reexamination including, and based on, the specification and claims of the reissue patent must be filed.
Any amendment made by the patent owner in the prosecution of the reexamination proceeding, should
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treat the changes made by the granted reissue patent as the text of the patent, and all bracketing and underlining made with respect to the patent as changed by the reissue.
Where the reissue patent issues after the filing of a request for reexamination, see MPEP § 2686.03.
2659 Res Judicata and Collateral Estoppel in Reexamination Proceedings [R-07.2015]
MPEP § 2642 and § 2686.04 relate to the Office policy controlling the determination on a request for reexamination and the subsequent examination phase of the reexamination, where there has been a federal court decision on the merits as to the patent for which reexamination is requested.
Claims finally held invalid by a federal court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding. A rejection on the grounds of res judicata for such withdrawn claims will not be appropriate during reexamination. One of the essential elements of claim preclusion ( res judicata) is the involvement of the same parties, or parties in privity with the original parties. The doctrine of res judicata based on a court holding in an infringement proceeding is not applicable in reexamination proceedings, because the Office was not a party to the litigation.
In In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007), the court held that issue preclusion (collateral estoppel) could not be applied against the Office based on a district court holding in an infringement proceeding, because the Office was not a party to the earlier infringement proceeding and did not have “a full and fair opportunity” to litigate the issue; See also In re Construction Equipment Company, 665 F.3d 1254, 100 USPQ2d 1922 (Fed. Cir. 2011), in which the majority did not adopt the dissent view that reexamination was barred by claim preclusion ( res judicata) or issue preclusion (collateral estoppel).
2660 First Office Action [R-07.2015]
37 CFR 1.935 Initial Office action usually accompanies order for inter partes reexamination.
The order for inter partes reexamination will usually be accompanied by the initial Office action on the merits of the reexamination.
37 CFR 1.104 Nature of examination.
[Editor's Note: As in effect prior to March 16, 2013. For the current rule, see 37 CFR 1.104]
(a) Examiner’s action.
(1) On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application or patent under reexamination with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.
(2) The applicant, or in the case of a reexamination proceeding, both the patent owner and the requester, will be notified of the examiner’s action. The reasons for any adverse action or any objection or requirement will be stated in an Office action and such information or references will be given as may be useful in aiding the applicant, or in the case of a reexamination proceeding the patent owner, to judge the propriety of continuing the prosecution.
(3) An international-type search will be made in all national applications filed on and after June 1, 1978.
(4) Any national application may also have an international-type search report prepared thereon at the time of the national examination on the merits, upon specific written request therefor and payment of the international-type search report fee set forth in § 1.21(e). The Patent and Trademark Office does not require that a formal report of an international-type search be prepared in order to obtain a search fee refund in a later filed international application.
(b) Completeness of examiner’s action. The examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable.
(c) Rejection of claims.
(1) If the invention is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected.
(2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.
(3) In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a
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reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section.
(4) Subject matter which is developed by another person which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g) may be used as prior art under 35 U.S.C. 103 against a claimed invention unless the entire rights to the subject matter and the claimed invention were commonly owned by the same person or subject to an obligation of assignment to the same person at the time the claimed invention was made.
(i) Subject matter developed by another person and a claimed invention shall be deemed to have been commonly owned by the same person or subject to an obligation of assignment to the same person in any application and in any patent granted on or after December 10, 2004, if:
(A) The claimed invention and the subject matter was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) The claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(ii) For purposes of paragraph (c)(4)(i) of this section, the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
(iii) To overcome a rejection under 35 U.S.C. 103(a) based upon subject matter which qualifies as prior art under only one or more of 35 U.S.C. 102(e), (f) or (g) via 35 U.S.C. 103(c)(2), the applicant must provide a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) of this section, that was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.
(5) The claims in any original application naming an inventor will be rejected as being precluded by a waiver in a published statutory invention registration naming that inventor if the same subject matter is claimed in the application and the statutory invention registration. The claims in any reissue application naming an inventor will be rejected as being precluded by a waiver in a published statutory invention registration naming that inventor if the reissue application seeks to claim subject matter:
(i) Which was not covered by claims issued in the patent prior to the date of publication of the statutory invention registration; and
(ii) Which was the same subject matter waived in the statutory invention registration.
(d) Citation of references.
(1) If domestic patents are cited by the examiner, their numbers and dates, and the names of the patentees will be stated. If domestic patent application publications are cited by the examiner, their publication number, publication date, and the names of the applicants will be stated. If foreign published applications or patents are cited, their nationality or country, numbers and dates, and the names of the patentees will be stated, and such other data will be furnished as may be necessary to enable the applicant, or in the case of a reexamination proceeding, the patent owner, to identify the published applications or patents cited. In citing foreign published applications or patents, in case only a part of the document is involved, the particular pages and sheets containing the parts relied upon will be identified. If printed publications are cited, the author (if any), title, date, pages or plates, and place of publication, or place where a copy can be found, will be given.
(2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.
(e) Reasons for allowance. If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication.
I. PREPARATION AND MAILING OF FIRST OFFICE ACTION
The first Office action on the merits will ordinarily be mailed together with the order granting reexamination. In some instances, however, it may not be practical or possible to mail the first Office action together with the order. For example, the reexamination file may have been provided to the examiner too late to include an Office action together with the order and still meet the deadline for mailing the order granting the request. Another example is where certain information or copies of prior art may not be available until after the deadline. In these situations, the order would be prepared and mailed,
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and the Office action would be mailed at a later date. In addition, a first Office action is not mailed with the order where the files will be forwarded for decision on merger of a reexamination proceeding with another reexamination proceeding and/or a reissue application. Rather, an Office action would be issued after the merger decision, as a single action for the merged proceeding. See MPEP § 2686.01 and MPEP § 2686.02.
Where the order will be mailed without the first Office action, the order must indicate that an Office action will issue in due course. Form paragraph 26.04 should be used to inform patent owner and requester that the action was not inadvertently left out or separated from the order.
¶ 26.04 First Action Not Mailed With Order
An Office action on the merits does not accompany this order for inter partes reexamination. An Office action on the merits will be provided in due course.
Where the Office action cannot be mailed with the order, the Office action should, in any event, be issued within two months from the mailing of the order, unless the case is awaiting merger, in which case the Office action should be issued within one month from the mailing of the merger decision.
II. TYPES OF FIRST ACTION ON THE MERITS
Where all of the patent claims are found patentable in the first action, the examiner will issue an Action Closing Prosecution (ACP). The ACP is discussed in MPEP § 2671.02.
Where the examiner determines that one or more of the patent claims are to be rejected, the first Office action on the merits will be similar to a first action on the merits in an application (or ex parte reexamination) where a rejection is made. In this situation, even though the action will follow the format of an action in an application, inter partes reexamination practice must be followed. Accordingly, inter partes reexamination forms will be used, special inter partes reexamination time periods will be set, inter partes reexamination form paragraphs will be used, and the patent owner and the third party requester must be sent a copy of the action.
III. FORM AND CONTENT OF FIRST OFFICE ACTION ON THE MERITS THAT IS NOT AN ACP
The examiner’s first Office action will be a statement of the examiner’s position, and it should be sufficiently complete so that the second Office action can be an Action Closing Prosecution (ACP). See MPEP § 2671.02. Accordingly, it is intended that the first Office action be the primary action to establish the issues which exist, such that the patent owner response and any third party comments can place the proceeding in condition for the issuance of an ACP.
The examiner’s first action should be comprehensive and address all issues as to the prior art patents and/or printed publications. The action will clearly set forth each ground of rejection and/or ground of objection, and the reasons supporting the ground. The action will also clearly set forth each determination favorable to the patentability of claims, i.e., each rejection proposed by the third party requester that the examiner refuses to adopt. Reasons why the rejection proposed by the third party requester is not appropriate (i.e., why the claim cannot be rejected under the ground proposed by the third party requester) must be clearly stated for each rejection proposed by the third party requester that the examiner refuses to adopt. Comprehensive reasons for patentability must be given for each determination favorable to patentability of claims. See MPEP § 1302.14 for examples of suitable statements of reasons. The examiner should not refuse to adopt a rejection properly proposed by the requester as being cumulative to other rejections applied. Rather, any such proposed rejection must be adopted to preserve parties’ appeal rights as to such proposed rejections.
In addition to the grounds and determinations set forth in the action, the first action should respond to the substance of each argument raised in the request by the third party requester pursuant to 37 CFR 1.915. In addition, the action should address any issues proper for reexamination that the examiner becomes aware of independent of the request.
Where the request for reexamination includes material such as a claim chart to explain a proposed rejection in order to establish the existence of a
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substantial new question of patentability (for a reexamination filed under that standard), or a reasonable likelihood that the requester will prevail (for a reexamination filed under that standard), the examiner may bodily incorporate the claim chart (or other matter) within the Office action. The examiner must, however, carefully review the claim chart (or other material) to ensure that any items incorporated in a statement of the rejection clearly and completely address the patentability of the claims. For actions subsequent to the first Office action, the examiner must be careful to additionally address all patent owner responses to previous actions and third party requester comments.
Ordinarily, there will be no patent owner amendment to address in the first Office action of the inter partes reexamination, because 37 CFR 1.939(b) prohibits a patent owner amendment prior to first Office action. Thus, the first Office action will ordinarily contain no rejection based on 35 U.S.C. 112; a rejection based on 35 U.S.C. 112 is proper in reexamination only when it is raised by an amendment. The only exception is where the newly requested and granted reexamination is merged with an existing reexamination proceeding which already contains an amendment. In such a case, the first Office action for the new reexamination would be a subsequent action for the existing reexamination, and the amendment in the merged proceeding would be examined for any 35 U.S.C. 112 issues raised by the amendment and any improper broadening of the claims under 35 U.S.C. 314.
In view of the requirement for “special dispatch” in inter partes reexamination proceedings (35 U.S.C. 314(c)), it is intended that the examiner will issue an ACP at the earliest possible time. Accordingly, the first action should include a statement cautioning the patent owner that a complete response should be made to the action. The first action should further caution the patent owner that the requirements of 37 CFR 1.116(b) will be strictly enforced after an ACP and that any amendment after the ACP must include “a showing of good and sufficient reasons why they are necessary and were not earlier presented” in order to be considered. Form paragraph 26.05 should be inserted at the end of the first Office action followed by form paragraph 26.73.
¶ 26.05 Papers To Be Submitted in Response to Action
In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidence of patentability, such documents must be submitted in response to this Office action. Submissions after the next Office action, which is intended to be an Action Closing Prosecution (ACP), will be governed by 37 CFR 1.116(b) and (d), which will be strictly enforced.
¶ 26.73 Correspondence and Inquiry as to Office Actions
All correspondence relating to this inter partes reexamination proceeding should be directed:
By EFS: Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/ myportal/efs-registered.
By Mail to: Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.
Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this
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proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
Examiner Note:
1. This form paragraph is used at the end of inter partes reexamination communications.
2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.
The Office action cover sheet is PTOL-2064. Where the Office action is a first Office action, the space on the PTOL-2064 for the date of the communication to which the Office action is responsive to should not be filled in, since it is the order for reexamination that responds to the request for reexamination, not the first Office action.
As with all other Office correspondence on the merits in a reexamination proceeding, the first Office action must be signed by a primary examiner.
IV. PROCESS OF PREPARING THE ACTION
Upon receipt of a patent owner response to the action (and third party requester comments where
permitted) by the CRU, or upon the expiration of the time to submit same, the examiner will be internally notified. The examiner will prepare for and set up a panel review conference pursuant to MPEP § 2671.03, to discuss the issuance of the Office action. The examiner may prepare the Office action after the conference, or may prepare the Office action prior to the conference and revise it, as needed.
If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims, the Office action shall be issued and signed by the examiner, with the two or more other conferees initialing the action (as “conferee”) to indicate their presence in the conference.
V. SAMPLE FIRST OFFICE ACTION
A sample of a first Office action in an inter partes reexamination proceeding for a reexamination filed under the substantial new question of patentability standard is set forth below. The examiner should leave the paper number blank, since IFW files do not have a paper number.
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This first Office action on the merits is being mailed together with the order granting reexamination. 37 CFR 1.935. Claims 1-3: Claims 1-3 of the Smith patent are not being reexamined in view of the final decision in the ABC Corp. v. Smith, 999 USPQ2d 99 (Fed. Cir. 2008). Claims 1-3 were held invalid by the U.S. Court of Appeals for the Federal Circuit. Claims 4 and 6: The following is a quotation of pre-AIA 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. Claims 4 and 6 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Berridge in view of McGee. Berridge teaches extruding a chlorinated polymer using the same extrusion structure recited in Claims 4 and 6 of the Smith patent. However, Berridge does not show supporting the extrusion barrel at an angle of 25-35 degrees to the horizontal, using spring supports. McGee teaches spring supporting an extrusion barrel at an angle of 30 degrees, in order to decrease imperfections in extruded chlorinated polymers. It would have been obvious to one of ordinary skill in the polymer extrusion art to support the extrusion barrel of Berridge on springs and at an angle of 30 degrees because McGee teaches this to be known in the polymer extrusion art for decreasing imperfections in extruded chlorinated polymers. This rejection was proposed by the third party requester in the request for reexamination, and it is being adopted essentially as proposed in the request. Claim 5: Claim 5 is patentable over the prior art patents and printed publications because of the recitation of the specific octagonal extrusion die used with the Claim 4 spring-supported barrel. This serves to reduce imperfections in the extruded chlorinated polymers and is not taught by the art of record, alone or in combination. Proposed third party requester rejection: In the request, at pages 10-14, the third party requester proposes the claim 5 be rejected based upon Berridge in view of McGee, and further taken with Bupkes or Gornisht. The third party requester points out that both Bupkes and Gornisht teach the use of an octagonal extrusion die to provide a smooth unified extrusion product. This rejection of claim 5 proposed by the third party requester is not adopted. While Bupkes and Gornisht do in fact teach the use of an octagonal extrusion die to provide smooth unified extrusion product, Bupkes teaches such for glass making and Gornisht teaches such for a food product. Despite the argument presented at pages 12-13 of the request and the demonstration of exhibit A, the skilled artisan would not equate the advantages obtained by Bupkes and Gornisht for glass and food, respectively, to the removal of imperfections in a polymer melt being extruded to a solid plastic product. Thus, Bupkes and Gornisht are not deemed to be combinable with Berridge and McGee for purposes of rejecting claim 5. Issue not within the scope of reexamination proceedings: An issue has been raised in the present reexamination proceeding that is not within the scope of inter partes reexamination. In the above-cited final court decision, a question is raised as to the possible public use of the invention of Claim 4. This was pointed out by the third party requester in the request for reexamination. The issue will not be considered in the present reexamination proceeding. 37 CFR 1.906(c). Other art made of record:
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Swiss Patent 80555 and the American Machinist article are cited to show cutting and forming extruder apparatus somewhat similar to that claimed in the Smith patent. Conclusion: In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidence of patentability, such documents must be submitted in response to this Office action. Submissions after the next Office action, which is intended to be an action closing prosecution (ACP), will be governed by 37 CFR 1.116, which will be strictly enforced. All correspondence relating to this inter partes reexamination proceeding should be directed:
Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/myportal/efs-registered.
By EFS:
Mail Stop Inter Partes ReexamBy Mail to: Attn: Central Reexamination Unit Commissioner for Patents United States Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450 (571) 273-9900By FAX to: Central Reexamination Unit Customer Service WindowBy hand: Randolph Building 401 Dulany Street Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office’s electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action. Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
/John Doe/ John Doe Primary Examiner CRU Art Unit 3998 /ARI/ Conferee /BZ/ Conferee
2660.01 [Reserved]
2660.02 The Title [R-08.2012]
Normally, the title of the patent will not need to be changed during reexamination. In those very rare instances where a change of the title does become necessary, the examiner should point out the need
for the change as early as possible in the prosecution, as a part of an Office action. This will give the patent owner an opportunity to comment on the change prior to the examiner’s formal change in the title via an examiner’s amendment accompanying the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) at the time that the prosecution of the reexamination proceeding is to be terminated. A change in the title in a reexamination can only be effected via a formal examiner’s amendment
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accompanying the NIRC. Changing the title and merely initialing the change is not permitted in reexamination.
While a change in the title may be commented on by the patent owner, the final decision as to the change is that of the examiner, and the examiner’s decision is not subject to review. Accordingly, where the examiner notes the need for a change at the time of issuing the NIRC, the examiner may make the change at that point, even though the patent owner will not have an opportunity to comment on the change.
An example of a situation where it would be appropriate to change the title is where all the claims directed to one of the categories of invention (in the patent) are canceled via the reexamination proceeding, it would be appropriate to change the title to delete reference to that category.
2660.03 Dependent Claims [R-07.2015]
If an unamended base patent claim (i.e., a claim appearing in the patent) has been rejected or canceled, any claim undergoing reexamination which is directly or indirectly dependent thereon should be indicated as patentable if it is otherwise patentable. The dependent claim should not be objected to nor rejected merely because it depends upon a rejected or canceled original patent claim. No requirement should be made for rewriting the dependent claim in independent form. As the original patent claim numbers are not changed in a reexamination proceeding, the content of the canceled base claim would remain in the printed patent and would be available to be read as a part of the dependent claim.
If a new base claim has been canceled in a reexamination proceeding, a claim which depends thereon should be rejected as indefinite. If an amended base patent claim or a new base claim is
rejected, a claim dependent thereon should be objected to if it is otherwise patentable, and a
requirement should be made for rewriting the dependent claim in independent form.
2661 Special Status for Action [R-07.2015]
35 U.S.C. 314 Special Status For Action
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to September 16, 2012]
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(c) SPECIAL DISPATCH.— Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.
In view of the requirement for “special dispatch,” all reexamination proceedings will be “special” throughout their pendency in the Office. In order to further the requirement for special dispatch, the examiner’s first Office action on the merits in an inter partes reexamination should ordinarily be
mailed together with the order for reexamination. See MPEP § 2660.
Any cases involved in litigation, whether they are reexamination proceedings or reissue applications, will have priority over all other cases. Reexamination proceedings not involved in litigation will have priority over all other cases except for reexaminations or reissues involved in litigation.
2662 Time for Response and Comments [R-07.2015]
The time periods for response and comments for the various stages of an inter partes reexamination proceeding are as follows:
(A) After an Office action that is not an Action Closing Prosecution (non-ACP Office action).
(1) Patent owner may file a patent owner’s response within the time for response set in the non-ACP Office action. The time period set for response will normally be two (2) months from the mailing date of the action.
(2) Where patent owner files a timely response to the non-ACP Office action, the third party requester may once file written comments addressing issues raised by the Office action or by
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the patent owner response to the action. The third party requester’s written comments must be submitted within thirty days from the date of service of the patent owner’s response on the third party requester. The date of service can be found on the Certificate of Service that accompanies the patent owner’s response.
(B) After an Office letter indicating that a response by the patent owner is not proper.
After an Office letter indicates that a response filed by the patent owner is not completely responsive to a prior Office action (i.e., an incomplete response), the patent owner is required to complete the response within the time period set in the Office letter. 37 CFR 1.957(d). A time period of 30 days or one month (whichever is longer) is normally set. Any third party requester comments on a supplemental patent owner response that completes the initial response must be filed within 30 days from the date of service of the patent owner’s supplemental response on the third party requester, except as provided in MPEP §§ 2666.40 and 2666.60 .
(C) After an Action Closing Prosecution (ACP).
The patent owner may once file written comments and/or present a proposed amendment to the claims within the time period set in the ACP. 37 CFR 1.951(a). Normally, the ACP will set a period of 30 days or one month (whichever is longer) from the mailing date of the ACP. Where the patent owner files comments and/or a proposed amendment, the third party requester may once file comments responsive to the patent owner’s submission within 30 days from the date of service of the patent owner’s submission on the third party requester. 37 CFR 1.951(b).
(D) Appeal to the Board after the examiner issues Right of Appeal Notice.
(1) After the examiner issues a Right of Appeal Notice (RAN), the patent owner and the third party requester may each file a notice of appeal within 30 days or one month (whichever is longer) from the mailing date of the RAN. 37 CFR 1.953(c). The time for filing a notice of appeal cannot be extended. 37 CFR 41.61(e).
(2) A patent owner who has not filed a timely notice of appeal may file a notice of cross appeal (with respect to any decision adverse to the
patentability of any claim) within fourteen days of service of a third party requester’s notice of appeal. 37 CFR 41.61(b)(1).
A third party requester who has not filed a timely notice of appeal may file a notice of cross appeal (with respect to any final decision favorable to the patentability of any claim) within fourteen days of service of a patent owner’s notice of appeal. 37 CFR 41.61(b)(2).
The time for filing a notice of cross-appeal cannot be extended. 37 CFR 41.61(e).
(E) After an Office notification of defective notice of appeal or notice of cross appeal (to the Board).
A party who is notified of a defective notice of appeal, or defective notice of cross appeal, must cure the defect within one month from the mail date of the Office letter notifying the party. (Form PTOL-2067 should be used to notify the parties.)
The time for curing a defective notice of appeal or cross-appeal cannot be extended, since the paper curing the defect is in-effect a substitute notice of appeal or cross-appeal.
(F) Filing of briefs after notice of appeal or notice of cross appeal (to the Board).
(1) Each party that filed a notice of appeal or notice of cross appeal may file an appellant brief and fee within two months after the last-filed notice of appeal or cross appeal. Additionally, if any party to the reexamination is entitled to file an appeal or cross appeal but fails to timely do so, the appellant brief and fee may be filed within two months after the expiration of time for filing (by the last party entitled to do so) of the notice of appeal or cross appeal. 37 CFR 41.66(a). See also MPEP § 2674 et seq.
(2) Once an appellant brief has been properly filed, an opposing party may file a respondent brief and fee within one month from the date of service of the appellant brief. 37 CFR 41.66(b).
(3) The times for filing appellant and respondent briefs may not be extended. 37 CFR 41.66(a) and (b).
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§ 2662OPTIONAL INTER PARTES REEXAMINATION
(G) After an Office notification of non-compliance of appellant brief or respondent brief.
A party who is notified of non-compliance of an appellant brief or respondent brief must file an amended brief within a non-extendable time period of one month from the date of the Office letter notifying the party of the non-compliance of the brief.
(H) Rebuttal brief after the examiner issues an examiner’s answer.
A third-party requester appellant and/or a patent owner appellant may each file a rebuttal brief within one month of the date of the examiner’s answer. The time for filing a rebuttal brief may not be extended. 37 CFR 41.66(d).
(I) Oral Hearing.
If an appellant or a respondent (who has filed a respondent brief) desires an oral hearing by the Board, he or she must file a written request for an oral hearing accompanied by the fee set forth in 37 CFR 41.20(b)(3) within two months after the date of the examiner’s answer. The time for filing a request for oral hearing may not be extended. 37 CFR 41.73(b).
(J) Appeal to Court.
The time for the patent owner and/or the third party requester to file a notice of appeal to the U.S. Court of Appeals for the Federal Circuit is two months from the date of the Board decision. If a timely request for rehearing (37 CFR 41.79) is filed, the time for the patent owner and/or the third party requester to file a notice of appeal to the Federal Circuit is two months from final Board action on the request for rehearing. 37 CFR 1.304(a)(1).
(K) Extensions of Time.
See MPEP § 2665 as to extensions of time in inter partes reexamination.
(L) Litigation.
Where litigation is stayed for purposes of reexamination, the shortened statutory period will
generally be set at one month or thirty days, whichever is longer. See MPEP § 2686.04.
2663 [Reserved]
2664 Mailing of Office Action [R-07.2015]
After an Office action is completed and processed and has been approved by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS), the action is mailed. In conjunction with mailing, any appropriate processing (e.g., PALM work, update scanning) is carried out.
Inter partes reexamination forms are structured so that the identifying information for the reexamination file and the correspondence address for the patent owner, which is the official correspondence address of record in the file of the patent requested to be reexamined, can be printed on the forms. Usually, the official correspondence address of the patent owner, which is of record in the file of the patent, is the mailing address of patent owner’s legal representative. If there is no official correspondence address of record in the patent file, the Office may treat the mailing address of the patent owner as the correspondence address. Where there are multiple patent owners, the Office may treat the mailing address of the first named patent owner of record with the Office as the correspondence address of the patent owner. The Office will not engage in double correspondence with more than one patent owner. See, e.g., 37 CFR 1.33(a). Copies of Office actions may be obtained by accessing Public PAIR at the Office’s website www.uspto.gov.
All actions in an inter partes reexamination proceeding will have a copy mailed to the third party requester. A transmittal form PTOL-2070 must be used in providing the third party requester with a copy of each Office action. If there is more than one third party requester, and if the third party requester has not designated the mailing address of a registered patent practitioner as the correspondence address for the requester, the Office may treat the mailing address of the first named third party requester as the correspondence address for the requester.
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A completed transmittal form will be provided for each requester (there can be multiple requesters in a merged reexamination proceeding; see MPEP § 2686.01), and the appropriate address will be entered on the transmittal form(s). The number of transmittal forms provides a ready reference for the number of copies of each Office action to be made, and the transmittal form permits use of the window envelopes in mailing the copies of the action to parties other than the patent owner.
2665 Extension of Time for Patent Owner Response [R-07.2015]
37 CFR 1.956 Patent owner extensions of time in inter partes reexamination.
The time for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition set forth in § 1.17(g). See § 1.304(a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit.
The provisions of 37 CFR 1.136(a) and 1.136(b) are NOT applicable to inter partes reexamination proceedings under any circumstances. Public Law 97-247 amended 35 U.S.C. 41 to authorize the Director of the USPTO to provide for extensions of time to take action which do not require a reason for the extension of time in an “application.” An inter partes reexamination proceeding does not involve an “application.” The provisions of 37 CFR 1.136 authorize extensions of the time period only in an application in which an applicant must respond or take action. There is neither an “application,” nor an “applicant” involved in an inter partes reexamination proceeding.
The times for filing a notice of appeal or cross-appeal, an appellant brief, a respondent brief, submissions curing a defective appeal or brief, a rebuttal brief, and a request for oral hearing cannot be extended.
A request for an extension of time for filing an appeal to the U.S. Court of Appeals for the Federal Circuit is governed by 37 CFR 1.304(a). A request for an extension of time to petition from the denial
of a request for reexamination can be obtained only by filing a grantable petition under 37 CFR 1.183 (with fee) to waive the time provisions of 37 CFR 1.927.
Extensions of time in an inter partes reexamination proceeding are otherwise governed by 37 CFR 1.956. It should be noted that extensions of time under 37 CFR 1.956 are not available to the third party requester.
An extension of time in an inter partes reexamination proceeding is requested, where applicable, pursuant to 37 CFR 1.956. Any request for extension of time pursuant to 37 CFR 1.956 will be decided by the Central Reexamination Unit (CRU) Director or SPRS. The request (A) must be filed on or before the day on which action by the patent owner is due, (B) must set forth sufficient cause for the extension, and (C) must be accompanied by the petition fee set forth in 37 CFR 1.17(g).
Requests for an extension of time in an inter partes reexamination proceeding will be considered only after the first Office action on the merits in the reexamination is mailed. Any request for an extension of time filed prior to the first action will be denied.
The certificate of mailing and the certificate of transmission procedures (37 CFR 1.8), and the Priority Mail Express® mailing procedure (37 CFR 1.10), may be used to file a request for extension of time, as well as any other paper in an existing inter partes reexamination proceeding (see MPEP § 2666).
As noted above, a request for extension of time under 37 CFR 1.956 will be granted only for sufficient cause, and the request must be filed on or before the day on which action by the patent owner is due. In no case, will the mere filing of a request for extension of time automatically effect any extension, because the showing of cause may be insufficient or incomplete. In the prosecution of an ex parte reexamination, an automatic two-month extension of time to take further action is granted upon filing a first timely response to a final Office action (see MPEP § 2272). The automatic extension given in ex parte reexamination does not apply to the first
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§ 2665OPTIONAL INTER PARTES REEXAMINATION
response to an Action Closing Prosecution (ACP) in an inter partes reexamination. The reason is that in inter partes reexamination, parties do not file an appeal in response to an ACP, and a further Office action (Right of Appeal Notice) will issue even if the parties make no response at all. Thus, there is no time period to appeal running against the parties after the ACP is issued, unlike ex parte reexamination where an appeal is due after final rejection and the time is thus automatically extended two months to provide time for the patent owner to review the Office’s response to the amendment before deciding whether to appeal.
Evaluation of whether “sufficient cause” has been shown for an extension must be made by balancing the desire to provide the patent owner with a fair opportunity to respond, against the requirement of the statute, 35 U.S.C. 314(c), that the proceedings be conducted with special dispatch.
Any request for an extension of time in a reexamination proceeding must fully state the reasons therefor. The reasons must include (A) a statement of what action the patent owner has taken to provide a response, to date as of the date the request for extension is submitted, and (B) why, in spite of the action taken thus far, the requested additional time is needed. The statement of (A) must provide a factual accounting of reasonably diligent behavior by all those responsible for preparing a response to the outstanding Office action within the statutory time period.
Prosecution will be conducted by initially setting a time period of at least 30 days or one month (whichever is longer), see MPEP § 2662. First requests for extensions of these time periods will be granted for sufficient cause, and for a reasonable time specified-usually one month. The reasons stated in the request will be evaluated, and the request will be favorably considered where there is a factual accounting of reasonably diligent behavior by all those responsible for preparing a response or comments within the statutory time period. Second or subsequent requests for extensions of time, or requests for more than one month, will be granted only in extraordinary situations.
EXTENSIONS OF TIME TO SUBMITAFFIDAVITS AFTER ACTION CLOSING PROSECUTION
Frequently, a request for an extension of time is made, stating as a reason therefor, that more time is needed in which to submit an affidavit. When such a request is filed after an ACP, the granting of the request for extension of time is without prejudice to the right of the examiner to question why the affidavit is now necessary and why it was not earlier presented. If the showing by the patent owner is insufficient, the examiner may deny entry of the affidavit, notwithstanding the previous grant of an extension of time to submit it. The grant of an extension of time in these circumstances serves merely to give the patent owner an extended opportunity to present the affidavit or to take other appropriate action.
Affidavits submitted after an ACP are subject to the same treatment as amendments submitted after an ACP. This is analogous to the treatment of affidavits submitted after a final rejection in an application. See In re Affidavit Filed After Final Rejection, 152 USPQ 292, 1966 C.D. 53 (Comm’r Pat. 1966).
2666 Patent Owner Response to Office Action [R-07.2015]
37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action.
(a)(1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
(a)(2) Supplemental replies.
(i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner suggestion(s);
(C) Placement of the application in condition for allowance;
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(D) Reply to an Office requirement made after the first reply was filed;
(E) Correction of informalities (e.g., typographical errors); or
(F) Simplification of issues for appeal.
(ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).
(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.
37 CFR 1.945 Response to Office action by patent owner in inter partes reexamination.
(a) The patent owner will be given at least thirty days to file a response to any Office action on the merits of the inter partes reexamination.
(b) Any supplemental response to the Office action will be entered only where the supplemental response is accompanied by a showing of sufficient cause why the supplemental response should be entered. The showing of sufficient cause must include:
(1) An explanation of how the requirements of § 1.111(a)(2)(i) are satisfied;
(2) An explanation of why the supplemental response was not presented together with the original response to the Office action; and
(3) A compelling reason to enter the supplemental response.
I. SUBSTANCE OF THE RESPONSE
Pursuant to 37 CFR 1.937(b):
“The inter partes reexamination proceeding will be conducted in accordance with §§ 1.104 through 1.116, the sections governing the application examination process…”
Accordingly, the provisions of 37 CFR 1.111 , other than the provision in 37 CFR 1.111(a)(1) to “see . . . [37 CFR] 1.136 for time for reply to avoid abandonment”, apply to the response by a patent owner in a reexamination proceeding.
The patent owner may request reconsideration of the position stated in the Office action, with or without amendment to the claims and/or specification. As to amendments in reexamination proceedings, see MPEP § 2666.01.
Any request for reconsideration must be in writing and must distinctly and specifically point out each supposed error in the examiner’s action. A general allegation that the claims define a patentable invention, without specifically pointing out how the language of the claims patentably distinguishes them over the references, is inadequate and is not in compliance with 37 CFR 1.111(b).
Reasons must be given as to how and why the claims define over the references, and why any rejections made under 35 U.S.C. 112 are incorrect or inapplicable.
Affidavits under 37 CFR 1.131(a) and 1.132 may be utilized in a reexamination proceeding. Note, however, that an affidavit under 37 CFR 1.131(a) may not be used to “swear behind” a reference patent if the reference patent is claiming the same invention as the patent undergoing reexamination. In such a situation, the patent owner may, if appropriate, seek to raise this issue via an affidavit under 37 CFR 1.131(c) (see MPEP § 718) or in an interference proceeding via an appropriate reissue application if such a reissue application may be filed (see MPEP § 1449.02).
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The patent owner cannot file papers on behalf of a third party. If a third party paper accompanies or is submitted as part of a timely filed response, the response and third party paper are considered to be an improper (i.e., informal) submission, and the entire submission shall be returned to the patent owner since the Office will not determine which portion of the submission is the third party paper. The third party paper filed as part of the patent owner’s response will not be considered. The improper response with the third party paper in it should be returned to patent owner as a defective (informal) response, using form PTOL-2069 as the cover letter. See MPEP § 2666.50. The appropriate box on the form should be checked and an explanation for the return of the paper given. The patent owner should be provided an appropriate period of time to refile the patent owner response without the third party paper.
II. PROCEDURAL CONSIDERATIONS OF THE RESPONSE
The certificate of mailing and the certificate of transmission procedures (37 CFR 1.8), and the Priority Mail Express® mailing procedure (37 CFR 1.10), may be used to file a patent owner’s response, as well as any other paper in an existing inter partes reexamination proceeding.
A copy of the response must be served on the third party requester in accordance with 37 CFR 1.248, - see also MPEP § 2666.06. Lack of service poses a problem, since a third party requester must file written comments within a period of 30 days from the date of service of the patent owner’s response, in order to be timely. Where the record does not show the response to have been served on the third party requester, see MPEP § 2666.06.
The patent owner will normally be given a period of two months to respond to an Office action. An extension of time can be obtained only in accordance with 37 CFR 1.956. Note that 37 CFR 1.136 does not apply in reexamination proceedings.
See MPEP § 2666.10 for the consequences of the failure by the patent owner to respond to the Office action.
III. SUPPLEMENTAL RESPONSE TO OFFICE ACTION
Pursuant to 37 CFR 1.945(b), any supplemental response to the Office action in an inter partes reexamination proceeding must be accompanied by a showing of sufficient cause why the supplemental response should be entered. If such a showing is not provided, the supplemental response will not be entered, and may be sealed (i.e., closed) from public view in the Image File Wrapper (IFW), if it has already been scanned into the IFW for the proceeding.
The showing of sufficient cause why the supplemental response should be entered must include:
(A) an explanation of how the requirements of 37 CFR 1.111(a)(2)(i) are satisfied;
(B) an explanation of why the supplemental response was not presented together with the original response to the Office action; and
(C) a compelling reason to enter the supplemental response.
Pursuant to 37 CFR 1.111(a)(2)(i), the Office may enter a supplemental response if the supplemental response is clearly limited to: (1) cancellation of a claim(s); (2) adoption of the examiner suggestion(s); (3) placement of the proceeding in condition for Notice of Intent to Issue Reexamination Certificate (NIRC); (4) a response to an Office requirement made after the first response was filed; (5) correction of informalities (e.g., typographical errors); or (6) simplification of issues for appeal.
In some instances, where there is a clear basis for the supplemental response, the three-prong showing may be easily satisfied. Thus, for example, the patent claim text may have been incorrectly reproduced, where a patent claim is amended in the original response. In such an instance, the patent owner need only point to the provision of 37 CFR 1.111(a)(2)(i)(E) for the correction of the informalities (e.g., typographical errors), and state that the incorrect reproduction of the claim was not noted in the preparation of the original response. The compelling reason to enter the supplemental response is implicit in such a statement, as the record
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for the proceeding certainly must be corrected as to the incorrect reproduction of the claim.
Any requester comments filed after a patent owner response to an Office action must be filed “within 30 days after the date of service of the patent owner’s response,” to satisfy 35 U.S.C. 314(b)(2). Thus, where the patent owner files a supplemental response to an Office action, the requester would be well advised to file any comments deemed appropriate within 30 days after the date of service of the patent owner’s supplemental response to preserve requester’s comment right, in the event the Office exercises its discretion to enter the supplemental response. The requester’s comments may address whether the patent owner showing is adequate, in addition to addressing the merits of the supplemental response. If the patent owner’s supplemental response is not entered by the Office, then both the supplemental response, and any comments following that supplemental response, will either be returned to the parties or discarded at the sole discretion of the Office. If the supplemental response and/or comments were scanned into the IFW for the reexamination proceeding, and thus, the papers cannot be physically returned or discarded, then the supplemental response and/or comments entries will be marked “closed” and “non-public,” and they will not constitute part of the record of the reexamination proceeding. Such papers will not be displayed in the Office’s image file wrapper that is made available to the public, patent owners, and representatives of patent owners, i.e., they will not be displayed in the Patent Application Information Retrieval (PAIR) at the Office’s website.
A supplemental response, which has not been approved for entry, will not be entered when a response to a subsequent Office action is filed, even if a specific request for its entry is made in the subsequent response. If a patent owner wishes to have the unentered supplemental response considered by the examiner, the patent owner must include the contents of the unentered supplemental response in a proper response to a subsequent Office action. If the next Office action is an Action Closing Prosecution under 37 CFR 1.949, or an action that otherwise closes prosecution, the entry of the response is governed by 37 CFR 1.116 (see 37 CFR 1.951(a)).
Patent owner cannot submit an application data sheet (ADS) in a reexamination proceeding except as provided in MPEP § 2258.02.
2666.01 Amendment by Patent Owner [R-07.2015]
37 CFR 1.941 Amendments by patent owner in inter partes reexamination.
Amendments by patent owner in inter partes reexamination proceedings are made by filing a paper in compliance with §§ 1.530(d)-(k) and 1.943.
37 CFR 1.121 Manner of making amendments in applications.
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(j) Amendments in reexamination proceedings. Any proposed amendment to the description and claims in patents involved in reexamination proceedings must be made in accordance with § 1.530.
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37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
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(d) Making amendments in a reexamination proceeding . A proposed amendment in an ex parte or an inter partes reexamination proceeding is made by filing a paper directing that proposed specified changes be made to the patent specification, including the claims, or to the drawings. An amendment paper directing that proposed specified changes be made in a reexamination proceeding may be submitted as an accompaniment to a request filed by the patent owner in accordance with § 1.510(e), as part of a patent owner statement in accordance with paragraph (b) of this section, or, where permitted, during the prosecution of the reexamination proceeding pursuant to § 1.550(a) or § 1.937.
(1) Specification other than the claims . Changes to the specification, other than to the claims, must be made by submission of the entire text of an added or rewritten paragraph including markings pursuant to paragraph (f) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The precise point in the specification must be identified where any added or rewritten paragraph is located. This paragraph applies whether the amendment is submitted on paper or compact disc (see §§ 1.96 and 1.825).
(2) Claims. An amendment paper must include the entire text of each patent claim which is being proposed to be changed by such amendment paper and of each new claim being proposed to be added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each patent claim proposed to be changed and each
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proposed added claim must include markings pursuant to paragraph (f) of this section, except that a patent claim or proposed added claim should be canceled by a statement canceling the claim, without presentation of the text of the claim.
(3) Drawings . Any change to the patent drawings must be submitted as a sketch on a separate paper showing the proposed changes in red for approval by the examiner. Upon approval of the changes by the examiner, only new sheets of drawings including the changes and in compliance with § 1.84 must be filed. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
(4) The formal requirements for papers making up the reexamination proceeding other than those set forth in this section are set out in § 1.52.
(e) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (d) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status ( i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes to the claims made by the amendment paper.
(f) Changes shown by markings. Any changes relative to the patent being reexamined which are made to the specification, including the claims, must include the following markings:
(1) The matter to be omitted by the reexamination proceeding must be enclosed in brackets; and
(2) The matter to be added by the reexamination proceeding must be underlined.
(g) Numbering of patent claims p. Patent claims may not be renumbered. The numbering of any claims added in the reexamination proceeding must follow the number of the highest numbered patent claim.
(h) Amendment of disclosure may be required. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(i) Amendments made relative to patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing the request for reexamination.
(j) No enlargement of claim scope. No amendment may enlarge the scope of the claims of the patent or introduce new matter. No amendment may be proposed for entry in an expired patent. Moreover, no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent.
(k) Amendments not effective until certificate. Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published.
(l) Correction of inventorship in an ex parte or inter partes reexamination proceeding.
(1) When it appears in a patent being reexamined that the correct inventor or inventors were not named through error without deceptive intention on the part of the actual inventor or inventors, the Director may, on petition of all the parties set forth in § 1.324(b)(1)-(3), including the assignees, and satisfactory proof of the facts and payment of the fee set forth in § 1.20(b), or on order of a court before which such matter is called in question, include in the reexamination certificate to be issued under § 1.570 or § 1.997 an amendment naming only the actual inventor or inventors. The petition must be submitted as part of the reexamination proceeding and must satisfy the requirements of § 1.324.
(2) Notwithstanding paragraph (l)(1) of this section, if a petition to correct inventorship satisfying the requirements of § 1.324 is filed in a reexamination proceeding, and the reexamination proceeding is concluded other than by a reexamination certificate under § 1.570 or § 1.997, a certificate of correction indicating the change of inventorship stated in the petition will be issued upon request by the patentee.
Amendments to the patent being reexamined (where the patent has not expired) may be filed by the patent owner in the reexamination proceeding. Such amendments may be provided by the patent owners after the first Office action on the merits has been issued. The first Office action on the merits will ordinarily be mailed with the order. In some instances, however, it may not be practical or possible to mail the first Office action together with the order. In the event that the first Office action is mailed after the order, it would not be proper to provide an amendment prior to the first Office action. Such an amendment would not be considered, and it would be returned to the patent owner as an improper paper. See MPEP § 2667.
If an amendment is submitted to add claims to the patent being reexamined (i.e., to provide new claims), then excess claims fees pursuant to 37 CFR 1.20(c)(3) and (c)(4) may be applicable to the presentation of the added claims. See MPEP § 2666.04. Amendments proposed in a reexamination will normally be entered if timely, and will be considered to be entered for purposes of prosecution before the Office (if they are timely and comply with the rules); however, amendments do not become effective in the patent until the certificate under 35 U.S.C. 316 is issued and published.
Amendments must not enlarge the scope of a claim of the patent nor introduce new matter. Amended or
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new claims which broaden or enlarge the scope of a claim of the patent should be rejected under 35 U.S.C. 314(a). The test for when an amended or “new claim enlarges the scope of an original claim under 35 U.S.C. 314(a) is the same as that under the 2-year limitation for reissue applications adding enlarging claims under 35 U.S.C. 251, last paragraph.” In re Freeman, 30 F.3d 1459, 1464, 31 USPQ2d 1444, 1447 (Fed. Cir. 1994). See MPEP § 2658 for a discussion of enlargement of the claim scope. For handling of new matter, see MPEP § 2670.
If the patent expires during the reexamination procedure, and the patent claims have been amended, the Office will hold the amendments as being improper and all subsequent reexamination will be on the basis of the unamended patent claims. This procedure is necessary since no amendments will be incorporated into the patent by certificate after the expiration of the patent. See 37 CFR 1.941 and 37 CFR 1.530(j). The patent expiration date for a utility patent, for example, is determined by taking into account the term of the patent, whether maintenance fees have been paid for the patent, whether any disclaimer was filed as to the patent to shorten its term, any patent term extensions or adjustments for delays within the USPTO under 35 U.S.C. 154 (see MPEP § 2710, et seq.), and any patent term extensions available under 35 U.S.C. 156 for premarket regulatory review (see MPEP § 2750 et. seq.). Any other relevant information should also be taken into account.
Once the patent expires, a narrow claim construction is applied. See MPEP § 2258, subsection I.G. “Claim Interpretation and Treatment.”
Amendment Entry - Amendments which comply with 37 CFR 1.530(d)-(j) and 37 CFR 1.943 (and are formally presented pursuant to 37 CFR 1.52(a) and (b), and contain fees required by 37 CFR 1.20(c)) will be entered in the reexamination file pursuant to the guidelines set forth in MPEP § 2234.
Manner of Making Amendments - Amendments in an inter partes reexamination proceeding are made in the same manner that amendments in an ex parte reexamination proceeding are made. See MPEP
§ 2250 for guidance as to the manner of making amendments in a reexamination proceeding.
Form paragraph 22.12 may be used to advise the patent owner of the proper manner of making amendments in an inter partes reexamination proceeding.
¶ 22.12 Amendments Proposed in a Reexamination - 37 CFR 1.530(d)-(j)
Patent owner is notified that any proposed amendment to the specification and/or claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be formally presented pursuant to 37 CFR 1.52(a) and (b), and must contain any fees required by 37 CFR 1.20(c).
Examiner Note:
This paragraph may be used in the order granting reexamination and/or in the first Office action to advise patent owner of the proper manner of making amendments in a reexamination proceeding.
Form paragraph 26.05.01 may be used to notify patent owner in an inter partes reexamination proceeding that a proposed amendment in the proceeding does not comply with 37 CFR 1.530(d)-(j).
¶ 26.05.01 Improper Amendment in an Inter Partes Reexamination - 37 CFR 1.530(d)-(j)
The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.530(d)-(j), which sets forth the manner of making amendments in reexamination proceedings. A supplemental paper correctly proposing amendments in the present inter partes reexamination proceeding is required.
A shortened statutory period for response to this letter is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If the patent owner fails to timely correct this informality, the amendment will be held not to be an appropriate response, and the consequences set forth in 37 CFR 1.957(b) or (c) will result. See MPEP § 2666.10
Examiner Note:
This paragraph may be used for any 37 CFR 1.530(d)-(j) informality as to a proposed amendment submitted in a reexamination proceeding.
The cover sheet to be used for mailing the notification to the patent owner will be PTOL-2069.
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As an alternative to using form paragraph 26.05.01, it would also be appropriate to use form PTOL-2069, box 4.
For clerical handling of amendments, see MPEP § 2670. For entry of an amendment in a merged reexamination proceeding, see MPEP §§ 2686.01 and 2686.03. For handling of a dependent claim in reexamination proceedings, see MPEP § 2660.03.
2666.02 Correction of Patent Drawings [R-11.2013]
37 CFR 1.941 Amendments by patent owner in inter partes reexamination.
Amendments by patent owner in inter partes reexamination proceedings are made by filing a paper in compliance with §§ 1.530(d)-(k) and 1.943.
37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
*****
(d) Making amendments in a reexamination proceeding . A proposed amendment in an ex parte or an inter partes reexamination proceeding is made by filing a paper directing that proposed specified changes be made to the patent specification, including the claims, or to the drawings. An amendment paper directing that proposed specified changes be made in a reexamination proceeding may be submitted as an accompaniment to a request filed by the patent owner in accordance with § 1.510(e), as part of a patent owner statement in accordance with paragraph (b) of this section, or, where permitted, during the prosecution of the reexamination proceeding pursuant to § 1.550(a) or § 1.937.
*****
(3) Drawings . Any change to the patent drawings must be submitted as a sketch on a separate paper showing the proposed changes in red for approval by the examiner. Upon approval of the changes by the examiner, only new sheets of drawings including the changes and in compliance with § 1.84 must be filed. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
*****
In the reexamination proceeding, the copy of the patent drawings submitted pursuant to 37 CFR 1.915(b)(5) will be used for reexamination purposes, provided no change is made to the drawings. If there is any change in the drawings, a new sheet of drawing for each sheet changed must be submitted.
The change may not be made on the original patent drawings. Drawing changes in an inter partes reexamination proceeding are made in the same manner that drawing changes in an ex parte reexamination proceeding are made. 37 CFR 1.530(d)(3) sets forth the manner of making amendments to the drawings.Any amended figure(s) must be identified as “Amended” and any added figure(s) must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
Where the patent owner wishes to change/amend the drawings, the patent owner should submit a sketch in permanent ink showing the proposed change(s)/amendment(s), for approval by the examiner. The submitted sketch should be presented as a separate paper, which is clearly labeled as “Annotated Sheet,” and it will be made part of the record. Once the proposed changes are approved, sheets of substitute or new drawings must be submitted for each drawing sheet that is to be changed/amended. If a new drawing sheet contains multiple figures, each figure must be marked as “amended” or “new,” if applicable, to comply with the requirements of 37 CFR 1.530(d)(3). For example, if the new drawing sheet contains Figures 1-3 but only Figure 2 is amended, the new drawing sheet must identify Figure 2 as “Amended.” It is not sufficient to generally indicate that the entire sheet is amended by, e.g., placing the term “Amended” in the header of the drawing sheet. The new sheets of drawings should be entered in the reexamination file.
2666.03 Correction of Inventorship [R-08.2012]
Correction of inventorship in an inter partes reexamination proceeding is effected in the same manner that correction of inventorship in an ex parte reexamination proceeding is effected. See MPEP § 2250.02 for the manner of correcting inventorship in both inter partes and ex parte reexamination proceedings.
2666.04 Fees for Adding Claims [R-11.2013]
37 CFR 1.20 Post issuance fees *****
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(c) In reexamination proceedings
(1) For filing a request for ex parte reexamination (§ 1.510(a))......................$12,000.00
(2) [Reserved]
(3) For filing with a request for reexamination or later presentation at any other time of each claim in independent form in excess of 3 and also in excess of the number of claims in independent form in the patent under reexamination:
By a micro entity.......................$105.00
By a small entity (§ 1.27(a)).......................$210.00
By other than a small entity .......................$420.00
(4) For filing with a request for reexamination or later presentation at any other time of each claim (whether dependent or independent) in excess of 20 and also in excess of the number of claims in the patent under reexamination (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes):
By a micro entity........................$20.00
By a small entity (§ 1.27(a))........................$40.00
By other than a small entity ........................$80.00
(5) If the excess claims fees required by paragraphs (c)(3) and (c)(4) are not paid with the request for reexamination or on later presentation of the claims for which the excess claims fees are due, the fees required by paragraphs (c)(3) and (c)(4) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
*****
Excess claims fees as specified in 35 U.S.C. 41(a)(2) as amended by the Consolidated Appropriations Act of 2005 are applicable to excess claims proposed to be added to a patent by their presentation during a reexamination proceeding. Under “former” 35 U.S.C. 41, excess claims fees were included as part of the “application” filing fee under 35 U.S.C. 41(a)(1), and thus did not apply during reexamination proceedings. The Consolidated Appropriations Act does not include the excess claims as part of the “application” filing fee under 35 U.S.C. 41(a)(1), but separately provides for excess claims fees in 35 U.S.C. 41(a)(2) (as being in addition to the filing fee in 35 U.S.C. 41(a)(1)). 35 U.S.C. 41(a)(2) provides that an excess claims fee is due “on filing or on presentation at any other time” (e.g., during a reexamination proceeding) of an independent claim in excess of three or of a claim (whether independent or dependent) in excess of twenty.
37 CFR 1.20 was amended, effective December 8, 2004, to provide for excess claims fees in a reexamination proceeding. The excess claims fees specified in 37 CFR 1.20(c) apply to all patents eligible for inter partes reexamination. The fees must be submitted for any excess claims presented in a reexamination proceeding on or after December 8, 2004 (no excess claims fee was due under 35 U.S.C. 41 for any claim presented during a reexamination proceeding before December 8, 2004). Even though a reexamination proceeding was commenced prior to December 8, 2004, the excess claims fees are due for any amendment filed on or after December 8, 2004.
When a patent owner presents an amendment to the claims (on or after December 8, 2004) during an
inter partes reexamination proceeding, excess claims fees may be applicable. If the amendment is limited to revising the existing claims, i.e., it does not provide any new claim, there is no claim fee. The excess claims fees apply only to the submission of new, i.e., “excess” claims.
The excess claims fees specified in 37 CFR 1.20(c) apply to excess claims that result from an amendment as follows:
(A) The fee designated in 37 CFR 1.20(c)(3) as the independent claims fee must be paid for each independent claim in excess of three and also in excess of the number of independent claims in the patent being reexamined. The amendment must increase the number of independent claims to be more than both of these limits, in order for the “independent excess claims fee” to apply;
(B) The fee designated in 37 CFR 1.20(c)(4) as the total claims fee must be paid for each claim (whether independent or dependent) in excess of twenty and also in excess of the number of claims in the patent being reexamined. The amendment must increase the total number of claims to be more than both of these limits, in order for the “total excess claims fee” to apply.
The following examples illustrate the application of the excess claims fees in a patent (non-small entity) to be reexamined containing six independent claims and thirty total claims:
(A) No excess claims fee is due if the patent owner cancels ten claims, two of which are
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independent, and adds ten claims, two of which are independent.
(B) The 37 CFR 1.20(c)(3) excess independent claims fee for a seventh independent claim is due if the patent owner cancels ten claims, two of which are independent, and adds ten claims, three of which are independent.
(C) The 37 CFR 1.20(c)(4) excess total claims fee for a thirty-first claim is due if the patent owner cancels ten claims, two of which are independent, and adds eleven claims, two of which are independent.
(D) The 37 CFR 1.20(c)(3) excess independent claims fee for a seventh independent claim and the 37 CFR 1.20(c)(4) excess total claims fee for a thirty-first claim are due if the patent owner cancels ten claims, two of which are independent, and adds eleven claims, three of which are independent.
A claim that has been disclaimed under 35 U.S.C. 253 and 37 CFR 1.321(a) as of the date of filing of the request for reexamination is not considered to be a claim in the patent under reexamination for purposes of excess claims fee calculations. The same applies to a claim canceled via a prior Reexamination Certificate, reissue patent, or Certificate of Correction.
If the excess claims fees required by 37 CFR 1.20(c)(3) and (c)(4) are not paid with the presentation of the excess claims, a notice of fee deficiency will be issued as a Notice of Defective Paper In Inter Partes Reexamination, PTOL-2069. A one-month time period will be set in the form PTOL-2069 for correction of the defect, i.e., the fee deficiency. An extension of time to correct the fee deficiency may be requested under 37 CFR 1.956. If the unpaid excess claims fees required by 37 CFR 1.20(c)(3) and (c)(4) are not paid within the time period set for response to the Notice, the prosecution of the reexamination proceeding will be terminated under 37 CFR 1.957(b) or limited under 37 CFR 1.957(c) (as is appropriate for the particular case),
to effect the “abandonment” set forth in 37 CFR 1.20(c)(5).
2666.05 Third Party CommentsAfter Patent Owner Response [R-07.2015]
37 CFR 1.947 Comments by third party requester to patent owner’s response in inter partes reexamination.
Each time the patent owner files a response to an Office action on the merits pursuant to § 1.945, a third party requester may once file written comments within a period of 30 days from the date of service of the patent owner’s response. These comments shall be limited to issues raised by the Office action or the patent owner’s response. The time for submitting comments by the third party requester may not be extended. For the purpose of filing the written comments by the third party requester, the comments will be considered as having been received in the Office as of the date of deposit specified in the certificate under § 1.8.
37 CFR 1.948 Limitations on submission of prior art by third party requester following the order for inter partes reexamination.
(a) After the inter partes reexamination order, the third party requester may only cite additional prior art as defined under § 1.501 if it is filed as part of a comments submission under § 1.947 or § 1.951(b) and is limited to prior art:
(1) which is necessary to rebut a finding of fact by the examiner;
(2) which is necessary to rebut a response of the patent owner; or
(3) which for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination proceeding. Prior art submitted under paragraph (a)(3) of this section must be accompanied by a statement as to when the prior art first became known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim.
(b) [Reserved].
I. TIMELINESS
A third party requester may once file written comments on any patent owner response to an Office action, during the examination stage of an inter partes reexamination proceeding. The third party requester comments must be filed within a period of 30 days from the date of service of the patent owner’s response on the third party requester. 37 CFR 1.947. The date that the Office receives the patent owner’s response has no bearing on the time period for which the third party requester must file the comments.
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The certificate of mailing and the certificate of transmission procedures (37 CFR 1.8), and the Priority Mail Express® mailing procedure (37 CFR 1.10), may be used to file comments. Any comments by the third party requester must be served upon the patent owner in accordance with 37 CFR 1.248. See also MPEP § 2666.06.
If the third party requester comments are filed after 30 days from the date of service of the patent owner’s response on the third party requester, the comments will not be considered. See 37 CFR 1.957(a).
The following special circumstance is to be noted. It may happen that a patent owner files a response to an Office action and the page length of the response exceeds the page length set by 37 CFR 1.943(b). Accompanying the response is a petition under 37 CFR 1.183 requesting waiver of the 37 CFR 1.943(b) requirement. Until such a 37 CFR 1.183 petition to waive the page length is granted, or a page length compliant response is filed (if the 37 CFR 1.183 petition is not granted), the patent owner response is incomplete. Pursuant to MPEP § 2666.40, “[a]fter the owner completes the response, the examiner will wait two months from the date of service of the patent owner’s completion of the response, and then take up the case for action, since the 30 days for the third party requester comments on the response as completed will have expired by that time. The third party requester may file comments on the response as completed…The response as completed is treated as a new response on-the-merits to the Office action; thus, the third party requester is entitled to file comments and has 30 days to do so.” Based on the above, at the time the 37 CFR 1.183 petition is granted, the patent owner response becomes complete with its content being set in place, and the requester has 30 days from the date of the decision granting the 37 CFR 1.183 petition to file a comment paper pursuant to 37 CFR 1.947 . However, if the Office finds that patent owner’s response is compliant with the page length set by 37 CFR 1.943(b) and that a waiver under 37 CFR 1.183 is not necessary, requester will not be granted additional time to submit comments as the 30 day time period is set by statute. Therefore, requester is advised to file comments within 30 days from the date of service of patent owner’s response
to preserve their right to comment. If the comments exceed the page length set by 37 CFR 1.945(b), then the comments should be accompanied by a petition under 37 CFR 1.183 requesting waiver of the page length requirement of 37 CFR 1.948(b) to the extent that entry of the accompanying comment paper is permitted. Alternatively, the comments could request that if the patent owner’s petition under 37 CFR 1.183 is granted, then the accompanying comments should not be entered, and the requester’s comment period be re-set to run 30 days from the date the patent owner filed a proper response (e.g., the mailing date of the decision granting patent owner’s petition under 37 CFR 1.183 or submission of a corrected response).
When the requester takes issue with the page length of the patent owner’s response and the patent owner has not filed a petition requesting waiver of the page length requirement, the requester may file a 37 CFR 1.181 petition to expunge an improper paper that was entered into the IFW record, accompanying its comments on patent owner’s response (which must be filed within 30 days from the date of service of the response). The 37 CFR 1.181 petition may request that (A) if the patent owner response is expunged, then the accompanying comments should not be entered, and the requester’s comment period be re-set to run 30 days from the date of service of a corrected patent owner response, and (B) if the petition to expunge is denied/dismissed, then the comments accompanying the petition should be entered and that 37 CFR 1.943(b) be waived to the extent that entry of the accompanying comment paper is permitted.
II. CONTENT
The third party requester comments must be directed to points and issues covered by the Office action and/or the patent owner’s response. The written comments filed by a third party requester should specify the issues and points in the Office action or the patent owner’s response to which each comment is directed. Thus, the third party requester should (1) set forth the point or issue, (2) state the page of the Office action and/or the patent owner response where the point or issue is recited, and (3) then present the third party requester’s discussion and argument as to the point or issue. If this is not done
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by the third party requester, the comments should not be held defective if the examiner can ascertain that all of the comments filed by the third party requester are directed to the issues and points in the Office action and/or the patent owner’s response.
Third party requester comments are limited to issues covered by the Office action or the patent owner’s response. New prior art can be submitted with the comments only where the prior art (A) is necessary to rebut a finding of fact by the examiner, (B) is necessary to rebut a response of the patent owner, or (C) for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination.
As to item (A) above, 37 CFR 1.948(a)(1) permits the requester to provide new prior art rebutting the examiner’s interpretation/finding of what the art of record shows. However, a statement in an Office action that a particular claimed feature is not shown by the prior art of record (which includes references that were cited by requester) does NOT permit the requester to then cite new art to replace the art originally advanced by requester. Such a substitution of a new art for the art of record is not a rebuttal of the examiner’s finding that a feature in question is not taught by the art of record. Rather, such a substitution would amount to a rebuttal of a finding that a feature in question is not taught by any art in existence. A finding that the feature in question is not taught by any art in existence could not realistically be made for the reexamination proceeding, since the proceeding does not include a comprehensive validity search, and such was not envisioned by Congress as evidenced by the 35 U.S.C. 314(c) mandate that reexamination proceedings are to be conducted in the Office with special dispatch.
As to item (B) above, 37 CFR 1.948(a)(2) permits the requester to provide a new proposed rejection, where such new proposed rejection is necessitated by patent owner’s amendment of the claims. Analogous to item (A) above, a statement by the patent owner that a particular claimed feature is not shown, or is not obvious, by the prior art of record does NOT permit the requester to then (for unamended claims) cite newly-presented prior art to show the particular claimed feature, or otherwise
propose any new rejection to replace the originally advanced proposed rejections in the reexamination request. Such a substitution of a newly proposed rejection for the original proposed rejection (for the unamended claims) is not a rebuttal of the patent owner's statement asserting that a feature in question is not taught, or is not obvious, by the art of record. Rather, to rebut the patent owner's statement in accordance with 37 CFR 1.947 and 1.948(a)(2), the requester may cite newly presented art directed to supporting the originally advanced proposed rejection(s) made in the request for reexamination, and include the new art as a supporting reference in the existing rejection. For example, the newly presented art may provide evidence that the modification of the reference(s) in the originally advanced proposed rejection would be obvious.
As to item (C) above, prior art submitted under 37 CFR 1.948(a)(3) must be accompanied by a statement that explains the circumstances as to when the prior art first became known or available to the third party requester, including the date and manner that the art became known or available, and why it was not available earlier. The submission must also include a discussion of the pertinency of each reference to the patentability of at least one claim. It is to be noted that entry of prior art submitted under 37 CFR 1.948(a)(3) does not, in and of itself, allow for a proposed rejection based on that art.
In summary, newly presented patents and printed publications (art) may be cited only in accordance with items (A) – (C) above. A newly proposed rejection based on the newly presented art, or on art already of record, may only be presented if the patent owner has presented an amendment to the patent claims, or proposed new claims, which necessitated the newly proposed rejection. The third party requester must present each newly proposed rejection in compliance with the guidelines set forth in MPEP § 2617, since any such new proposed rejection stands on the same footing as a proposed rejection presented with the request for reexamination, and is treated the same way as to future Office actions and any appeal. See MPEP § 2617 as to the required discussion of the pertinency of each reference to the patentability of at least one claim presented for the newly submitted prior art. An explanation pursuant to the requirements of 35 U.S.C. 311 of how the art
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is applied is no less important at this stage of the prosecution, than it is when filing the request. (It is to be understood that a rejection may be “proposed” by requester if the examiner withdrew that rejection in a prior Office action, and this is the first time requester has had an entry right to make it a “proposed” rejection; however, such is not being discussed here, since, although it is “newly proposed,” it is an old rejection to the case, based on art already of record).
Where the third party requester written comments are directed to matters other than issues and points covered by the Office action or the patent owner’s response, or where the prior art submitted with the comments does not satisfy at least one of (A) - (C) above, the written comments are improper. If the written comments are improper, the examiner should return the written comments (the entire paper) with an explanation of what is not proper; if the comments have been scanned into the Image File Wrapper (IFW) for the reexamination proceeding prior to the discovery of the impropriety, they should be expunged from the record, with notification being sent to the third party requester. If the comments were filed prior to the mailing of an Action Closing Prosecution (e.g., in response to a non-final Office action), the notification to the third party requester may provide a time period of fifteen (15) days for the third party requester to rectify and refile the comments. If, upon the second submission, the comments are still not proper, the comments will be returned to third party requester with an explanation of what is not proper, and at that point the comments can no longer be resubmitted. The loss of right to submit further comments applies only to the patent owner response at hand. See MPEP § 2666.20. To the extent that 37 CFR 1.947 provides that the third party requester “may once” file written comments, that provision is hereby waived to the extent of providing the third party requester the one additional opportunity to remedy a comments paper containing merits-content that goes beyond what is permitted by the rules; 37 CFR 1.947 is not waived to provide any further opportunity in view of the statutory requirement for special dispatch in reexamination.
Any replacement comments submitted in response to the notification must be strictly limited to (i.e., must not go beyond) the comments in the original
(returned) comments submission. No comments that add to those in the returned paper will be considered for entry.
The above practice of giving the third party requester a time period of 15 days to rectify and refile comments that are responsive but go beyond the regulatory requirements to the extent discussed above should not be confused with the situation where the third party requester files comments that are late (untimely), or such comments are “inappropriate” within the meaning of 37 CFR 1.957(a) and the time for response has expired. Where the comments are late or inappropriate, an additional 15 days is not given; rather, the comments must be refused consideration pursuant to 37 CFR 1.957(a).
The third party requester is not permitted to file further papers to supplement the third party requester’s written comments. Any such improper supplemental comments will not be considered, and will be returned. A third party requester may, however, file written comments to any supplemental response filed by the patent owner.
See MPEP § 2666.20 for the situation where a third party requester elects not to file written comments on a patent owner response.
Where the patent owner does not respond to an Office action, the third party requester is prohibited from filing written comments under 37 CFR 1.947.
Note that a prior art citation which is proper under 37 CFR 1.501 and is submitted by any party as a separate paper and does not include argument and comments and does not go to the merits of the case, will not be returned, but rather will be stored until the ongoing reexamination proceeding is concluded. See MPEP §§ 2204 and 2206. Also note that prior art returned by the examiner in connection with the third party requester comments as discussed above can be resubmitted as a separate prior art citation under 37 CFR 1.501, and it will be stored until the ongoing reexamination proceeding is concluded.
Rev. 07.2015, October 20152600-79
§ 2666.05OPTIONAL INTER PARTES REEXAMINATION
III. EXAMINER WITHDRAWS A GROUND OF REJECTION
If the examiner withdraws a ground of rejection at any time in the prosecution of the inter partes reexamination proceeding, the following guidelines apply:
(A) Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the Office action as a decision favorable to patentability with respect to the withdrawn rejection. The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester.” In the event the patent owner fails to respond to all actions leading to the Right of Appeal Notice (RAN), including the Action Closing Prosecution (ACP), and a RAN is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability. See 37 CFR 41.61(a)(2). Likewise, where the rejection is first withdrawn in the RAN, there will be no requester opportunity to comment prior to appeal, and the requester may appeal this withdrawal of rejection in the RAN as a final decision favorable to patentability.
(B) Where the claims have not been amended and the examiner withdraws a ground of rejection previously proposed by the third party requester (e.g., based on patent owner’s argument or evidence submitted), the examiner should treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.
(C) Generally (subject to the below-stated exception), where the claims have been amended and the examiner withdraws a ground of rejection previously proposed by the third party requester, this is not a refusal of the examiner to adopt the rejection proposed by the requester, since the rejection was never proposed as to the amended claims. The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester” as to the amended claims. In the event the patent owner fails to respond to all actions leading to the RAN, including the ACP, and a RAN is then issued, the
third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability. See 37 CFR 41.61(a)(2). Likewise, where the rejection is first withdrawn in the RAN, there will be no requester opportunity to comment prior to appeal, and the requester may appeal this withdrawal of rejection in the RAN as a final decision favorable to patentability.
(D) If a claim is amended merely to include a dependent claim that was previously subjected to a proposed requester rejection, and the examiner withdraws that ground of rejection as to the newly amended claim, such would be a refusal to adopt the third party requester’s previously proposed rejection of the dependent claim. Thus, the examiner would treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.
2666.06 Service of Papers [R-08.2012]
37 CFR 1.915 Content of request for inter partes reexamination.
*****
(b) A request for inter partes reexamination must include the following parts:
*****
(6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy of the request must be supplied to the Office.
*****
37 CFR 1.903 Service of papers on parties in inter partes reexamination.
The patent owner and the third party requester will be sent copies of Office actions issued during the inter partes reexamination proceeding. After filing of a request for inter partes reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on every other party in the reexamination proceeding in the manner provided in § 1.248. Any document must reflect service or the document may be refused consideration by the Office. The failure of the patent owner or the third party requester to serve documents may result in their being refused consideration.
Any paper filed with the Office, i.e., any submission made, by either the patent owner or the third party requester must be served on every other party in the reexamination proceeding including any other third
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2666.06
party requester that is part of the proceeding due to merger of reexamination proceedings.
As proof of service, the party submitting the paper to the Office must attach a certificate of service to the paper. It is required that the certificate of service set forth the name and address of the party served and the method of service. Further, a copy of the certificate of service must be attached with the copy of the paper that is served on the other party.
Lack of service poses a problem, since, by statute (35 U.S.C. 314(b)(2)), a third party requester must file written comments within a period of 30 days from the date of service of the patent owner’s response, in order to be timely. In any instance where proof of service is not attached to a paper, a Notice of Defective Paper (PTOL-2069) will be mailed to the party, providing the party with a time period of one month or 30 days, whichever is longer, to complete the paper via a supplemental paper indicating the manner and date of service.
If it is known that service of a submission was not made, form paragraph 26.68 should be used to give notice to the party that made the submission of the requirement for service under 37 CFR 1.903.
¶ 26.68 Lack of Service in inter partes examination-37 CFR 1.903
The submission filed [1] is defective because it appears that the submission was not served on [2]. After the filing of a request for inter partes reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party (or parties where two third party requester proceedings are merged) in the inter partes reexamination proceeding in the manner provided in 37 CFR 1.248. See 37 CFR 1.903.
It is required that service of the submission be made, and a certificate of service be provided to the Office, within ONE MONTH from the date of this letter or within the time remaining in the response period of the last Office action (if applicable), whichever is longer.
Examiner Note:
1. This paragraph may be used where a submission to the Office was not served as required in an inter partes reexamination proceeding.
2. In bracket 2, insert “patent owner” or “third party requester,” whichever is appropriate.
PTOL-2071 should be used as the cover sheet for mailing the notice.
See MPEP § 2620 for service of the initial request on the patent owner.
As pointed out above, the service provision of the statute poses a problem, since, 35 U.S.C. 314(b)(2) mandates that, in order to be timely, a third party requester must file any written comments to the patent owner’s response (to an Office action on the merits) within a period of 30 days from the date of service of such patent owner’s response. Accordingly, if a patent owner’s response to an Office action on the merits that is served on a third party requester is received by the third party requester more than 5 business days after the date of service set forth on the certificate of service, the third party requester may submit a verified statement, specifying the date of actual receipt, as an attachment to the third party requester’s comments. The date of service will then be deemed by the Office to be the date of actual receipt by the third party requester of the patent owner’s response.
2666.07 -2666.09 [Reserved]
2666.10 Patent Owner Does Not Respond to Office Action [R-11.2013]
37 CFR 1.957 Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.
(a) If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination, the paper will be refused consideration.
(b) If no claims are found patentable, and the patent owner fails to file a timely and appropriate response in an inter partes reexamination proceeding, the prosecution in the reexamination proceeding will be a terminated prosecution and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.997 in accordance with the last action of the Office.
(c) If claims are found patentable and the patent owner fails to file a timely and appropriate response to any Office action in an inter partes reexamination proceeding, further prosecution will be limited to the claims found patentable at the time of the failure to respond, and to any claims added thereafter which do not expand the scope of the claims which were found patentable at that time.
Rev. 07.2015, October 20152600-81
§ 2666.10OPTIONAL INTER PARTES REEXAMINATION
(d) When action by the patent owner is a bona fide attempt to respond and to advance the prosecution and is substantially a complete response to the Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, an opportunity to explain and supply the omission may be given.
I. OFFICEACTION PRIOR TOACTION CLOSING PROSECUTION
If the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP), it will result in the following consequences set forth in 37 CFR 1.957(b) or (c):
(A) Where there were no claims found patentable in the Office action, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) terminating prosecution and indicating the status of the claims as canceled. See MPEP § 2687.
(B) Where at least one claim is found patentable, all future prosecution will be limited to the claim(s) found patentable at the time of the failure to respond and to claims which do not expand the scope of the claim(s) found patentable at that time. The patent owner will not be permitted to add claims broader in the scope than the patentable claims which remain in the proceeding at the time of the patent owner’s failure to timely respond. The examiner will proceed to issue an ACP indicating that:
(1) Any claims under rejection or objection are withdrawn from consideration and will be canceled upon publication of the certificate; and
(2) Prosecution will be limited to the claim(s) found patentable at the time of the failure to respond and to claims which do not expand the scope of the claim(s) found patentable at that time.
The ACP will set a period for the patent owner response and the third party requester comments under 37 CFR 1.951. See also MPEP §§ 2671.02 and 2671.03.
II. ACTION CLOSING PROSECUTION
A response to an ACP is not required. Where the patent owner does not respond to an ACP, the Office will issue an Right of Appeal Notice (see MPEP § 2673.02) in due course. Accordingly, the consequences of 37 CFR 1.957(b) and (c), do NOT
apply to the patent owner’s failure to respond to an ACP.
III. RIGHT OF APPEAL NOTICE AND APPEAL
Where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed, the following consequences would result:
(A) If no claim was found patentable at the time that the patent owner fails to take the timely action, a NIRC will immediately be issued. See MPEP § 2687.
(B) Where at least one claim was found patentable and the third party requester does not appeal, or fails to continue its appeal, the prosecution of the reexamination proceeding should be terminated. In order to do so, a NIRC will be issued. See MPEP § 2687.
(C) Where at least one claim was found patentable and the third party appellant continues its appeal, the claims in the proceeding will be limited to the claim(s) found patentable at the time that the patent owner fails to take the timely action, and all other claims will be withdrawn from consideration pending cancellation of same when the NIRC is issued. Any future prosecution is limited to the claims that do not expand the scope of the claim(s) found patentable at that time.
IV. FAILURE OF THIRD PARTY REQUESTER TO TIMELY SUBMIT PAPER
See MPEP § 2666.20 for a discussion of the consequences where the third party requester fails to timely submit a paper where a time period is set for same.
2666.11 -2666.19 [Reserved]
2666.20 Third Party Does Not Comment After Patent Owner Response [R-07.2015]
37 CFR 1.957 Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.
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(a) If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination, the paper will be refused consideration.
*****
Where a third party requester does not timely file written comments on a patent owner response, any subsequent submission of comments on that response will be refused consideration. The third party requester does not, however, lose any rights as to commenting on future patent owner responses. The failure to file the comments applies only to the specific response which the third party requester elects not to comment upon.
Note that where the third party requester did not file comments on a patent owner response that was determined by the Office to be incomplete and the Office provides the patent owner additional time to complete the response, the third party requester may file comments on the response once it is completed (by patent owner’s submission of a supplemental response), provided the comments are filed within 30 days from the date of service of the supplemental response. However, where only a fee (other than an excess claims fee to support an amendment) is needed to complete the response, the third party requester may not file comments after the fee is submitted; see MPEP § 2666.40 for a detailed discussion.
Where the third party requester fails to make a timely appeal or the third party requester’s appeal is dismissed, the third party requester loses further rights as the appellant in the appeal. However, where a patent owner appellant continues its appeal, the third party requester as the respondent can file a respondent brief. Also, the third party requester can enter the appeal pursuant to 37 CFR 41.77(c) and (e) (submission after a Board decision). See MPEP § 2682. In addition, the third party requester can comment on any subsequent patent owner response to any Office action, where the action is issued after the appeal.
Where the third party requester fails to timely appeal, or the requester’s appeal is dismissed, and no other appeal is pending in the proceeding, the prosecution
of the reexamination proceeding should be terminated by the issuance of a NIRC.
2666.21 -2666.29 [Reserved]
2666.30 Submission Not Fully Responsive to Non-final Office Action [R-07.2015]
37 CFR 1.957 Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.
*****
(d) When action by the patent owner is a bona fide attempt to respond and to advance the prosecution and is substantially a complete response to the Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, an opportunity to explain and supply the omission may be given.
A response by the patent owner will be considered not fully responsive to a non-final Office action where a bona fide response to an examiner’s Office action is filed before the expiration of the permissible response period but through an apparent oversight or inadvertence, some point necessary to a full response has been omitted (i.e., appropriate consideration of a matter that the action raised, or compliance with some requirement, has been omitted). In this situation, the prosecution of the reexamination proceeding should not be terminated. Rather, the examiner may, pursuant to 37 CFR 1.957(d), treat the patent owner submission which is not fully responsive to an Office action by:
(A) waiving the deficiencies (if not serious) in the response and acting on the patent owner submission;
(B) treating the amendment/response as an incomplete response to the Office action and notifying the patent owner (via a written notification action pursuant to 37 CFR 1.957(d)) that the response must be completed within the period for response set in the notification action (or within any extension pursuant to 37 CFR 1.956)) to avoid termination of the prosecution (pursuant to 37 CFR 1.957(b)) or limiting prosecution of the claims to those found patentable (pursuant to 37 CFR 1.957(c)).
Rev. 07.2015, October 20152600-83
§ 2666.30OPTIONAL INTER PARTES REEXAMINATION
Discussion of Option (A). Where a patent owner submission responds to the rejections, objections, or requirements in an Office action and is a bona fide attempt to advance the reexamination proceeding to final action, but contains a minor deficiency (e.g., fails to treat every rejection, objection, or requirement), the examiner may simply act on the amendment and issue a new Office action. The new Office action may simply reiterate the rejection, objection, or requirement not addressed by the patent owner submission, or the action may indicate that such rejection, objection, or requirement is no longer applicable. In the new Office action, the examiner will identify the part of the previous Office action which was not responded to and clearly indicate what is needed. This course of action would not be appropriate in instances in which a patent owner submission contains a serious deficiency (e.g., the patent owner submission does not appear to have been filed in response to the Office action).
Discussion of Option (B). Where the patent owner’s submission contains a serious deficiency, i.e., omission, to be dealt with prior to issuing an action on the merits and the period for response has expired, or there is insufficient time remaining to take corrective action before the expiration of the period for response, the patent owner should be notified of the deficiency and the correction needed, and given a new time period for response (usually one month) pursuant to 37 CFR 1.957(d). The patent owner must then supply the omission within the new time period for response or any extensions under 37 CFR 1.956 thereof to avoid termination of the prosecution (pursuant to 37 CFR 1.957(b)) or limiting prosecution of the claims to those found patentable (pursuant to 37 CFR 1.957(c)). In this situation, the requester has thirty days from the date of service of patent owner’s corrected or supplemental response to file comments, unless only a fee (other than an excess claims fee to support an amendment) is needed to complete the response. See MPEP § 2666.40 for a detailed discussion.
Form paragraph 26.06 may be used where option (B) is employed by the examiner to obtain correction of the deficiency.
¶ 26.06 Submission Not Fully Responsive to Office Action
The communication filed on [1] is not fully responsive to the prior Office action. [2]. The response appears to be bona fide, but through an apparent oversight or inadvertence, consideration of some matter or compliance with some requirement has been omitted. Patent owner is required to supply the omission or correction to thereby provide a full response to the prior Office action.
A shortened statutory period for response to this letter is set to expire (a) ONE MONTH, or THIRTY DAYS (whichever is longer), from the mailing date of this letter, or (b) after the due date for response to the last Office action, whichever of (a) or (b) is longer. THE PERIOD FOR RESPONSE SET IN THIS LETTER MAY BE EXTENDED UNDER 37 CFR 1.956.
If patent owner fails to timely supply the omission or correction and thereby provide a full response to the prior Office action, the consequences set forth in 37 CFR 1.957(b) or (c) will result. See MPEP § 2666.10.
Examiner Note:
1. In bracket 2, the examiner should explain the nature of the omitted point necessary to complete the response, i.e., what part of the Office action was not responded to. The examiner should also clearly indicate what is needed to correct the omission.
2. This paragraph may be used for a patent owner communication that is not completely responsive to the outstanding (i.e., prior) Office action. See MPEP § 2666.30.
3. This practice does not apply where there has been a deliberate omission of some necessary part of a complete response. See MPEP § 2666.30.
I. NO NOTIFICATION BY TELEPHONE
It should be noted that the patent owner cannot simply be notified by telephone that the omission must be supplied within the remaining time period for response. This notification would be an interview, and interviews are prohibited in inter partes reexamination. 37 CFR 1.955.
II. FURTHER DISCUSSION
The practice of giving the patent owner a time period to supply an omission in a bona fide response (pursuant to 37 CFR 1.957(d)) does not apply where there has been a deliberate omission of some necessary part of a complete response. It is applicable only when the missing matter or lack of compliance is considered by the examiner as being “inadvertently omitted” pursuant to 37 CFR 1.957(d). Once an inadvertent omission is brought to the attention of the patent owner, the question of
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inadvertence no longer exists. Therefore, a second written notification action giving another new (one month) time period to supply the omission would not be appropriate. However, if the patent owner’s response to the notification of the omission raises a different issue of a different inadvertently omitted matter, a second written notification action may be given.
This practice authorizes, but does not require, an examiner to give the patent owner a new time period to supply an omission. Thus, where the examiner concludes that the patent owner is attempting to abuse the practice to obtain additional time for filing a response, the practice should not be followed.
2666.31 -2666.39 [Reserved]
2666.40 Patent Owner Completion of Response and Third Party Comments Thereon [R-07.2015]
In most cases, the patent owner will have 30-days or one month (whichever is longer) to complete the response. After the owner completes the response, the examiner will wait two months from the date of service of the patent owner’s completion of the response, and then take up the case for action, since the 30 days for the third party requester comments on the response as completed will have expired by that time.
The third party requester may file comments on the Office action and the response as completed within 30 days of the date of service of the completed response. This is true whether or not the third party requester filed comments on the original response that was incomplete. Except as provided in the paragraph below, the response as completed is treated as a new response on-the-merits to the Office action; thus, the third party requester is entitled to respond and has 30 days to do so.
In some instances, the Office will mail a notice that the original response is incomplete only because a fee (other than a failure to pay excess claims fees) is required for the patent owner to complete the
response. In these instances, any third party requester comments must be filed within 30 days from the date of service of the patent owner’s original response. The third party requester is not permitted to file comments in response to the submission of the fee, because the submission of a fee clearly adds nothing on the merits. An example of this would be where a terminal disclaimer is newly required in a reexamination proceeding and is submitted, but the fee is inadvertently omitted. The response would then be incomplete only as to the omitted fee. Any third party requester comments on the response including the terminal disclaimer must be filed within 30 days from the date of service of the patent owner’s response on the third party requester. Where the patent owner then completes the response by paying the fee, the third party requester is not permitted to then comment. However, if the patent owner’s response is not limited to the bare submission of the fee, i.e., if the response also includes argument, then the third party can comment since the patent owner has addressed the merits of the case.
In those instances where there is a failure to pay an excess claims fee by the patent owner, the new claim “package” in patent owner’s original request is not entered until the excess claims fee is paid. Therefore, the requester cannot comment on the new claim “package” until patent owner files a supplemental paper that pays the required excess claims fee. Thus, the third party requester comments may be filed within 30 days from the date of service of the patent owner’s response or paper correcting the excess claims fee deficiency.
2666.41 -2666.49 [Reserved]
2666.50 Examiner Issues Notice of Defective Paper in Inter Partes Reexamination [R-07.2015]
Even if the substance of a submission is complete, the submission can still be defective, i.e., an “informal submission.” Defects in the submission can be, for example:
Rev. 07.2015, October 20152600-85
§ 2666.50OPTIONAL INTER PARTES REEXAMINATION
(A) The paper filed does not include proof of service;
(B) The paper filed is unsigned;
(C) The paper filed is signed by a person who is not of record;
(D) The amendment filed by the patent owner does not comply with 37 CFR 1.530(d)-(j); or
(E) The amendment filed by the patent owner does not comply with 37 CFR 1.20(c)(3) and/or (c)(4).
Where a submission made is defective (informal), form PTOL-2069 is used to provide notification of the defects present in the submission. Form PTOL-2069 is reproduced below. In many cases, it is only necessary to check the appropriate box on the form and fill in the blanks. However, if the defect denoted by one of the entries on form PTOL-2069 needs further clarification (such as the specifics of why the amendment does not comply with 37 CFR 1.530(d)-(j)), the additional information should be set forth on a separate sheet of paper which is then attached to the form PTOL-2069.
The defects identified in (A) through (E) above are specifically included in form PTOL-2069. If the submission contains a defect other than those specifically included on the form, the “Other” box on the form is to be checked and the defect explained in the space provided for the explanation. For example, a response might be presented on easily erasable paper, and thus, a new submission would be needed.
Where both the patent owner response and the third party comments are defective, a first form PTOL-2069 should be completed for the patent
owner (setting forth the defects in the patent owner response), and a second form PTOL-2069 completed for the third party requester (setting forth the defects in the third party requester’s comments). A copy of both completed forms would then be sent to all parties.
A time period of one month or thirty days, whichever is longer, from the mailing date of the form PTOL-2069 or equivalent letter will be set in the letter for correcting the defect(s), except as provided in MPEP §§ 2666.05 and 2667 . The patent owner may request an extension of time to correct the defect(s) under 37 CFR 1.956. The third party requester, however, is barred from requesting an extension of time by statute. 35 U.S.C. 314(b)(2). If, in response to the notice, the defect still is not corrected, the submission will not be entered. If the failure to comply with the notice results in a patent owner failure to file a timely and appropriate response to any Office action, the prosecution of the reexamination proceeding generally will be terminated or limited under 37 CFR 1.957 (whichever is appropriate).
If the defect in the patent owner response or the third party requester comments is limited to a problem with the signature, claim format, or some other obvious defect (easily corrected), and such is noted by the technical support staff of the CRU processing the papers, then form PTOL-2069 may be issued to notify parties of the defect, and obtain a response to the form, prior to forwarding the case to the examiner. Otherwise, the responsibility is with the examiner to obtain the needed correction of the defects in the papers, which defects are either identified to the examiner by the CRU technical support staff or noted independently by the examiner.
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2666.51 -2666.59 [Reserved]
Rev. 07.2015, October 20152600-87
§ 2666.51-2666.59
OPTIONAL INTER PARTES REEXAMINATION
2666.60 Response by Patent Owner/Third Party to Notice of Defective Paper [R-07.2015]
The patent owner and/or the third party requester will be given a time period of one month or thirty days, whichever is longer, from the mailing date of the notice of defective paper, except as provided in MPEP §§ 2666.05 and 2667, or the time remaining in the response/comments period set in the last Office action to correct the defect in a submission. If, in response to the notice, the defect still is not corrected, the submission will not be entered. If the failure to comply with the notice results in a patent owner failure to file a timely and appropriate response to any Office action, the prosecution of the reexamination proceeding will be terminated under 37 CFR 1.957(b) or limited under 37 CFR 1.957(c) (as is appropriate for the case).
After the patent owner or the third party requester has provided a submission directed solely to correcting the defect, the other party is not permitted to comment on the submission correcting the defect if the submission correcting the defect is directed to form and does not go to the merits of the case. This would be the case, for example, where the failure to provide a signature on an affidavit or a certificate of service, or the failure to pay a fee (other than excess claims fee), is corrected.
In the case of correcting a defective amendment or paying an excess claims fee, however, other issues come into play. For example, new claims 10-20 are improperly presented in a patent owner response (e.g., not properly underlined) and form PTOL-2069 (Box 4) is used to notify the patent owner that the claim amendments are not entered and the need to correct this defect. In this situation, until the defect is corrected, claims 10-20 do not yet exist in the proceeding for the third party requester to comment on. Likewise, any argument that was directed to such claims is not truly ripe for the third party requester comment. After the patent owner corrects the defect, claims 10-20 come into existence in the proceeding, and the argument presented by the patent owner becomes relevant. At this point, the third party requester has a right to provide comments in response to the Office action and patent owner’s
argument, whether or not the argument that was included in the original patent owner submission is re-presented with the paper correcting the defect. Thus, any third party requester comments submitted either in response to the patent owner’s initial paper (presenting the informal claims) or in response to the patent owner’s supplemental paper (correcting the informality) will be considered by the examiner.
Any submission correcting the defect which provides a discussion of the merits should (A) set forth that discussion separately from the portion of the response that corrects the defect, and (B) clearly identify the additional discussion as going to the merits. The additional discussion going to the merits must, in and of itself, have an entry right, or the entire submission will be returned to the party that submitted it, and one additional opportunity (30-days or one month, whichever is longer) will be provided, to correct the defect without a discussion of the merits. If the portion directed to the merits is not clearly delineated and identified, the entire submission may be returned to the party that submitted it, and one additional opportunity (30-days or one month, whichever is longer) is then given for that party to correct the defect without intermixed discussion of the merits. The examiner may, however, choose to permit entry of such a paper.
2667 Handling of Inappropriate or Untimely Filed Papers [R-07.2015]
37 CFR 1.939 Unauthorized papers in inter partes reexamination.
(a) If an unauthorized paper is filed by any party at any time during the inter partes reexamination proceeding it will not be considered and may be returned.
(b) Unless otherwise authorized, no paper shall be filed prior to the initial Office action on the merits of the inter partes reexamination.
The applicable regulations (such as 37 CFR 1.501, 1.902 and 1.905, 1.948 and 1.939) provide that certain types of correspondence will not be considered. Whenever reexamination correspondence is received, a decision is required of the Office as to the action to be taken on the correspondence based on what type of paper it is and whether it is timely. In certain instances, the submitted correspondence (submission) will be entered into the reexamination file and be considered. In other instances, the
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2666.60
correspondence will be entered into the reexamination file, but will not be considered. In still other instances, the correspondence will not be entered into the reexamination file and will be returned to the party that sent it. The return of certain inappropriate submissions, not being considered, reduces the amount of paper which would ultimately have to be scanned into the record. Where an inappropriate (unauthorized, improper) paper has already been scanned into the Image File Wrapper (IFW) of the reexamination proceeding before discovery of the inappropriate nature of the paper, the paper cannot be physically returned to the party that submitted it. Instead, the paper will be “returned” by expunging it, i.e., by marking the paper as “non-public” and “closed” so that the paper does not appear in the active IFW record with the other active papers that comprise the public record of the reexamination proceeding.
Where papers are filed during reexamination proceedings which are inappropriate because of some defect, such papers will be expunged from the official file by marking the papers “closed” and “non-public”.
I. TYPES OF PAPERS EXPUNGED WITH APPROVAL OF THE CENTRAL REEXAMINATION UNIT DIRECTOR OR SPRS
A. Filed by Patent Owner
1. Premature Response/Comments by Patent Owner
Any response/comments as to materials of record or any amendment filed by the patent owner prior to the first Office action is premature and will not be considered, and will be expunged. 37 CFR 1.939. Where a paper is to be expunged based on the above reason, and the paper is not accompanied by a petition under 37 CFR 1.182 or 1.183, the CRU Director or SPRS will expunge the paper. Where the submission is accompanied by a petition under 37 CFR 1.182 or 1.183, the reexamination proceeding should be addressed in the Office of Patent Legal Administration (OPLA) to issue a decision on the petition.
Any petition requesting merger of a reexamination with a reexamination or reissue, or a stay of a
reexamination or reissue in place of merger, that is filed prior the order to reexamine (37 CFR 1.931) will be expunged and will not be considered. See MPEP §§ 2686.01 and 2686.03. The reexamination proceeding should be addressed in OPLA to issue a decision on the petition.
2. Response Is Too Long
Where the length of the patent owner submission exceeds that permitted by 37 CFR 1.943, the submission is improper. Accordingly, pursuant to 37 CFR 1.957(d), if the submission is made prior to the mailing of an ACP, a Notice will be mailed to the patent owner. The Notice will be issued by the examiner and will permit the patent owner to exercise one of the following two options:
(A) Submit a re-drafted response that does not exceed the page limit set by 37 CFR 1.943; or
(B) File a copy of the supplemental response with pages redacted to satisfy the 37 CFR 1.943 page limit requirement.
The Notice will set a period of 15 days from the date of the notice to respond. If no response is received, the improper (too-long) patent owner submission will not be considered. If the submission was necessary to respond to an outstanding Office action, the prosecution of the reexamination proceeding is either terminated pursuant to 37 CFR 1.957(b) or limited pursuant to 37 CFR 1.957(c). Any previously submitted third party comments in response to this improper (too-long) patent owner submission would also not be considered, as being moot, since the patent owner did not in fact respond to the Office action in accordance with the rules.
If a response to the Notice is received, then under 37 CFR 1.947, the third party requester may once file written comments, limited to issues raised by the Office action or the patent owner’s response to the Notice, within 30 days from the date of service of the patent owner’s response to the Notice.
With respect to the length of the papers, the following additional information is to be noted. Similar to the Federal Rules of Appellate Procedure, the provisions of 37 CFR 1.943(c) are waived to the extent that the table of contents pages, the table of
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case law pages, and the pages of the claims (but not claim charts applying the art to the claims) are excluded from the page limits that are set forth by 37 CFR 1.943(c). The claims appendix is expressly excluded from the length (see 37 CFR 1.943(c)). Also, the sections of the appellant and respondent briefs required under 37 CFR 41.67(c)(1)(i)-(iv) and (ix)-(xi) and 37 CFR 41.68(b)(1)(i) - 37 CFR 41.68(b)(1)(iv) and (viii)-(xi) respectively (i.e., Real Party in Interest, Related Appeals and Interferences, Status of Claims, Status of Amendments, Evidence Appendix, Related Proceedings Appendix, and Certificate of Service) are excluded from the page limits that are set forth by 37 CFR 1.943(c). Sections are excluded if and only if those sections are limited to the information required by those sections. If other information is included, the entire page count of the section containing such other information will be included.
Any affidavit or declaration (or a clearly defined portion thereof) that contains opinion(s) of the affiant/declarant, or argument(s) that the art either does or does not anticipate or render obvious the claims, or specific claim elements, of the patent under reexamination, is considered to be part of the comments submitted by the patent owner, or by the third party requester, and is subject to the page limit requirements of 37 CFR 1.943. Affidavits or declarations that are excluded from the page limit requirements include declarations attempting to swear behind (antedate) the filing date of a reference, or to establish the date of a printed publication; declarations that provide comparative tests and results and a scientific or technological analysis of the results; and other declarations which are limited to establishing facts. However, if the patent owner’s affidavit or declaration includes any legal argument as to how an outstanding/proposed rejection is overcome, then the page(s) of the affidavit or declaration in which the argument appears would be included against the page limit count. Likewise, if a third party requester affidavit or declaration includes any legal argument as to how a rejection is supported, then the page(s) of the affidavit or declaration in which the argument appears would be included against the page limit count. Similarly, attached exhibits presenting data or drawings are not included against the page limit count, unless an exhibit or drawing includes argument as to how the
outstanding rejection is overcome. Any page(s) of the exhibit or sheet(s) of drawings that include such argument would be included against the page limit count.
3. Improper Patent Owner Response
The patent owner can only file once under 37 CFR 1.951(a). Any second or supplemental submission after ACP by the patent owner will be expunged, unless prosecution has been reopened. See MPEP § 2672.
Where a paper is to be expunged based on the above reason or other appropriate reasons, and the paper is not accompanied by a petition under 37 CFR 1.182 or 1.183, the CRU Director or the SPRS will expunge the paper. Where a petition under 37 CFR 1.182 or 1.183 has been filed, the reexamination proceeding should be addressed in OPLA to issue a decision on the petition.
4. Improper Petition
Note that after an opposition to any patent owner petition is filed by a third party requester (regardless of whether such opposition has an entry right or not), any further patent owner paper in opposition/rebuttal/response to the third party opposition paper will not be considered and will be expunged. There must be a limitation on party iterations of input, especially given the statutory mandate for special dispatch in reexamination. Further, any petition requesting that an extension of time be denied will be expunged, since a third party requester does not have a statutory right to challenge this discretionary procedural process in the reexamination proceeding; whether or not the time is extended clearly does not go to the merits of the reexamination proceeding. The same would apply to oppositions as to requester petitions for accepting late papers, e.g., an appeal brief, and the like. The patent owner could, however, file a petition in opposition to a third party requester’s 37 CFR 1.181 petition, to support the action taken by the Office, since the Office has an unequivocal right to enforce its rules and practice, and patent owner can explain why the Office acted within its right.
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B. Filed by Third Party Requester
1. Premature Comments by Third Party Requester
Any comments filed by a third party requester subsequent to the request for reexamination (i.e., not part of it) and prior to the first Office action is premature and will not be considered, and will be expunged. 37 CFR 1.939. Any petition to stay a reexamination proceeding because of an interference (MPEP § 2686.02), which is filed prior to the first Office action in the reexamination proceeding will be expunged and will not be considered.
Any submission of comments filed by a third party requester where the patent owner has not responded to the outstanding Office action is premature, and it will be expunged and will not be considered. 37 CFR 1.947.
Where a paper is to be expunged based on the above reason, and the paper is not accompanied by a petition under 37 CFR 1.182 or 1.183, the CRU Director or the SPRS will expunge the paper. Where the premature submission is accompanied by a petition under 37 CFR 1.182 or 1.183, the reexamination proceeding should be addressed in OPLA to issue a decision on the petition.
2. Submission Is Too Long
Where the length of the third party requester submission exceeds that permitted by 37 CFR 1.943, the submission is improper. Accordingly, if the submission is made prior to the mailing of an ACP, a Notice will be issued by the examiner and mailed to the third party requester permitting the third party requester to exercise one of the following two options:
(A) Submit a re-drafted submission that does not exceed the page limit set by 37 CFR 1.943; or
(B) File a copy of the supplemental submission with pages redacted to satisfy the 37 CFR 1.943 page limit requirement.
The Notice will set a period of 15 days from the date of the notice to respond to the notice. If no response is received, the improper third party requester submission will not be considered.
For additional information with respect to the length of the papers, see subsection I.A.2. above, which is incorporated herein by reference.
3. Improper Comments
Where the third party requester comments are not limited to the scope provided by the rules, they are improper and will not be considered, and will be expunged. 37 CFR 1.947 and 1.951(b). For example, comments following the patent owner’s response to a first Office action must be limited to issues and/or points covered by the first action and/or the patent owner’s response (in accordance with 37 CFR 1.947); if they are not, they will be expunged. See MPEP § 2666.05 for action to be taken by the examiner.
For any third party requester comments containing a submission of prior art, the prior art must be limited solely to prior art which is necessary to rebut a finding of fact by the examiner, which is necessary to rebut a response of the patent owner, or, which for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination. Prior art submitted for the reason that it became known or available to the third party requester for the first time after the filing of the request for inter partes reexamination must be accompanied by a statement as to when the prior art first became known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim. If the prior art submission does not satisfy at least one of the criteria noted above, the submission is improper and will be expunged and will not be considered. See MPEP § 2666.05 for action to be taken by the examiner.
Supplemental third party requester comments are improper since 37 CFR 1.947 states that comments can “once” be filed. Such supplemental comments are improper, will not be considered, and will be expunged. However, supplemental third party comments are permitted in response to the patent owner’s completion of a response, even where the initial third party comments were provided after the incomplete patent owner response, unless patent owner’s submission correcting the defect is solely directed to form and does not go to the merits of the
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case (e.g. payment of a fee other than excess claims fee). Supplemental third party comments are also permitted in response to a supplemental patent owner response.
The third party requester can only respond to a patent owner submission after an Action Closing Prosecution (ACP), and may only do so once under 37 CFR 1.951(b). Any original third party requester comments (where the patent owner does not respond) or any second or supplemental responsive comments after ACP are improper and will be expunged. See MPEP § 2672.
Third party comments in response to a patent owner submission which does not respond to an Office action are not permitted, since 37 CFR 1.947 only permits comments in response to the patent owner’s response to an Office action. For example, where the patent owner submits a new power of attorney, the third party requester is not permitted to submit a set of comments, because the patent owner submission is not a response to an Office action. If the third party requester does comment, it will be expunged.
4. Improper Petition
Any petition to stay a reexamination proceeding because of an interference (MPEP § 2686.02), which is filed prior to the first Office action in the reexamination proceeding will be expunged and will not be considered. 37 CFR 1.939.
Any petition by a third party requester to stay a reexamination proceeding because of an interference where the third party is not a party to the interference will be expunged and will not be considered. See MPEP § 2686.02.
Any third party requester petition requesting merger of a reexamination with a reexamination or an application for reissue will not be considered. See MPEP §§ 2686.01 and 2686.03. Also, a petition by the requester requesting that a later-filed case should not be merged (see MPEP § 2640 “Second Or Subsequent Request...”) will be expunged and will not be considered, where it is filed prior the order to reexamine. Prior to the order, such a petition is not ripe for decision, because it is possible that
reexamination will not be granted and there will be nothing to merge.
In all these situations, the reexamination proceeding should be addressed in OPLA to issue a decision on the petition.
Note that after an opposition to any third party requester petition is filed by a patent owner (regardless of whether such opposition has an entry right or not), any further requester paper in opposition/rebuttal/response to the patent owner opposition paper will not be considered and will be expunged. There must be a limitation on party iterations of input, especially given the statutory mandate for special dispatch in reexamination. Further, any petition requesting that an extension of time be denied will be expunged, since a requester does not have a statutory right to challenge this discretionary procedural process in the reexamination proceeding; whether or not the time is extended clearly does not go to the merits of the reexamination proceeding. The same would apply to oppositions as to petitions for revival of a terminated prosecution, petitions challenging not making an action a final rejection or an Action Closing Prosecution (ACP), reopening prosecution, and entry of an amendment after final rejection or ACP, and the like. The third party requester could, however, file a petition in opposition to a patent owner’s 37 CFR 1.181 petition, to support the action taken by the Office, since the Office has an unequivocal right to enforce its rules and practice, and requester can explain why the Office acted within its right.
C. Filed by Third Party Other Than Third Party Requester
No submissions on behalf of any third parties other than third party reexamination requesters will be considered unless such submissions are in accordance with 37 CFR 1.915 or are one of the exceptions noted below. Thus, a petition to merge a reexamination, or stay one of them because of the other, which is filed by a party other than the patent owner or the third party requester of reexamination will not be considered, but will be expunged as being improper under 37 CFR 1.905. See also MPEP § 2686.01 and MPEP § 2686.03.
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A paper submitted by a third party other than a third party requester must be (1) a 37 CFR 1.501 art citation limited to the citation of patents and printed publications and an explanation of the pertinency and applicability of the patents and printed publications, or (2) bare notice of suits and other proceedings involving the patent (see MPEP §§ 2686 and 2686.04) which may include copies of decisions or other court papers, or papers filed in the court, from litigations or other proceedings involving the patent. Such submissions must be without additional comment and cannot include further arguments or information. If the submission by the third party is not one of the above-described two types of papers, it will be expunged or destroyed. If a submission by the third party of either of the above-described two types of papers contains additional material that goes beyond the scope of what is permitted, the paper will be expunged or destroyed. If a proper 37 CFR 1.501 submission is filed by a third party after the order to reexamine, it will be stored.
II. TYPES OF DEFECTIVE PAPERS TO BE RETAINED IN THE “REEXAMINATION FILE”
A. Filed by Patent Owner
1. Unsigned Papers
Papers filed by the patent owner which are unsigned, or signed by less than all of the patent owners where no attorney or agent is of record or acting in representative capacity, will be denied consideration, but will be retained in the file. 37 CFR 1.33.
2. No Proof of Service
Papers filed by the patent owner in which no proof of service is included, and proof of service is required, may be denied consideration. Such papers should be denied consideration where it cannot be determined that service was in fact made and the third party requester’s response/comment /appeal/brief period is to be set by the date of service. See 37 CFR 1.248 and MPEP § 2666.06.
3. Late Papers
Where patent owner has filed a paper which was filed after the period for response set by the Office,
the paper will be retained in the file but will not be considered.
A patent owner submission following a third party requester submission, where the patent owner submission is filed subsequent to the permitted time from the date of service of third party requester’s submission, will be retained in the file but will not be considered. The date that the Office actually receives the third party requester’s submission has no bearing here; it is the date of service on the patent owner which is critical.
Thus, for example, in instances where there is a right to file an opposition to a petition, any such opposition must be filed within two weeks of the date upon which a copy of the original petition was served on the opposing party, to ensure consideration. Any such opposition that is filed after the two-week period will remain in the record, even though it need not be considered.
4. Defective Amendment
A proposed amendment to the description and claims which does not comply with 37 CFR 1.530(d)-(k) will be retained in the file, but the amendment will not be considered. An exception to this is where the only defect in the amendment is that it enlarges the scope of the claims of the patent or introduces new matter. Such an amendment will be considered, and a rejection will be made in the next Office action.
5. Premature Appeal
Where a notice of appeal or notice of cross appeal is filed before a Right of Appeal Notice (RAN) has been issued, the paper will be retained in the file but will not be considered (other than to inform the parties that the appeal is not acceptable).
B. Filed by Third Party Requester
1. Unsigned Papers
Papers filed by a third party requester which are unsigned or not signed by the third party requester or requester’s attorney/agent of record or attorney/agent acting in representative capacity will be denied consideration. 37 CFR 1.33.
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2. No Proof of Service
Papers filed by a third party requester in which no proof of service is included as to the patent owner and/or any other third party requester, and proof of service is required, may be denied consideration. Such papers should be denied consideration where it cannot be determined that service was in fact made and another party’s response/comment/appeal/brief period is to be set by the date of service. 37 CFR 1.248.
3. Late Papers
Any third party requester submission following a patent owner’s submission, where the third party requester submission is filed subsequent to the permitted time from the date of service of the patent owner’s submission, will be retained in the file, but will not be considered. Note, for example, a 37 CFR 1.947 submission of third party comments following the patent owner’s response. Where the third party comments are submitted subsequent to 30 days from the date of service of the patent owner’s response, they will be retained in the file but will not be considered. The date that the Office actually receives the patent owner’s response has no bearing here; it is the date of service on the third party requester which is critical.
Where the third party requester has filed a paper which is untimely, that is, it was filed after the period set by the Office for response, the paper will be retained in the file, but will not be considered.
Thus, for example, in instances where there is a right to file an opposition to a petition, any such opposition must be filed within two weeks of the date upon which a copy of the original petition was served on the opposing party, to ensure consideration. Any such opposition that is filed after the two-week period will remain in the record, even though it need not be considered.
4. Premature Appeal
Where a notice of appeal or notice of cross appeal is filed before a Right of Appeal Notice (RAN) has been issued, the paper will be retained in the file, but will not be considered (other than to inform the
parties that the appeal is not acceptable). 37 CFR 41.61.
III. PAPERS LOCATED IN THE “PATENT FILE”
Submissions of art citations in an inter partes reexamination will be stored until the reexamination is concluded. Note 37 CFR 1.902 .
Submission of art citations in an inter partes reexamination is permitted by the patent owner and the third party requester to the extent stated in the regulations. 37 CFR 1.501 and 1.902. All other submissions of art citations based solely on prior patents or publications filed after the date of the order to reexamine are retained as stated above. Such citations are not immediately entered into the patent file, but rather are stored until the reexamination proceedings have been concluded. See MPEP § 2602.
2668 Petition for Entry of Late Papers for Revival of Reexamination Proceeding [R-07.2015]
35 U.S.C. 27 Revival of applications; reinstatement of reexamination proceedings.
The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing each patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner.
35 U.S.C. 41 Patent fees; patent and trademark search systems.
(a) GENERAL FEES. —The Director shall charge the following fees:
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(7) On filing each petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining a patent in force, for the delayed submission of a priority or benefit claim, or for the extension of the 12-month period for filing a subsequent application, $1,700. The Director may refund any part of the fee specified in this paragraph, in exceptional circumstances as determined by the Director.
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35 U.S.C. 133 Time for prosecuting application.
Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto.
37 CFR 1.137 Revival of abandoned application, or terminated reexamination proceeding.
(a) Revival on the basis of unintentional delay. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this section to revive an abandoned application or a reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited under § 1.957(c).
(b) Petition requirements. A grantable petition pursuant to this section must be accompanied by:
(1) The reply required to the outstanding Office action or notice, unless previously filed;
(2) The petition fee as set forth in § 1.17(m);
(3) Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section; and
(4) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
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(e) Request for reconsideration. Any request for reconsideration or review of a decision refusing to revive an abandoned application, or a terminated or limited reexamination prosecution, upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under:
(1) The provisions of § 1.136 for an abandoned application;
(2) The provisions of § 1.550(c) for a terminated ex parte reexamination prosecution, where the ex parte reexamination was filed under § 1.510; or
(3) The provisions of § 1.956 for a terminated inter partes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the inter partes reexamination was filed under § 1.913.
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If the patent owner in an inter partes reexamination proceeding fails to file a timely and appropriate response to any Office action and no claims are allowable, then pursuant to 37 CFR 1.957(b), the prosecution of the reexamination proceeding is terminated, and a certificate under 37 CFR 1.997 is
issued canceling all claims of the patent that were under reexamination.
An inter partes reexamination prosecution terminated under 37 CFR 1.957(b) can be revived if the delay in response by the patent owner was unintentional in accordance with 37 CFR 1.137 .
If the patent owner in an inter partes reexamination proceeding fails to file a timely and appropriate response to any Office action and at least one claim is allowable, then pursuant to 37 CFR 1.957(c), the proceeding continues but is limited to the claim(s) found allowable at the time of the failure to respond (i.e., in the Office action).
Rejected claims terminated under 37 CFR 1.957(c) can be revived if the delay in response by the patent owner was unintentional in accordance with 37 CFR 1.137.
All petitions in reexamination proceedings to accept late papers and revive will be decided in the Office of Patent Legal Administration (OPLA).
I. PETITION BASED ON UNAVOIDABLE DELAY IS NO LONGER AVAILABLE
37 CFR 1.137 was revised to implement the changes in the Patent Law Treaties Implementation Act of 2012 (PLTIA) to eliminate revival of abandoned applications and reexamination prosecution terminated under 37 CFR 1.957(b) or limited under 37 CFR 1.957(c) under the ‘‘unavoidable’’ standard and to provide for the revival of abandoned applications and the acceptance of delayed responses in reexamination by patent owners on the basis of unintentional delay. Specifically, section 201(b) of the PLTIA added new 35 U.S.C. 27 , which provides that the Director may establish procedures to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing a patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner. Accordingly, 37 CFR 1.137(a) was amended to eliminate the provisions pertaining to petitions on the basis of unavoidable delay.
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II. PETITION BASED ON UNINTENTIONAL DELAY
As discussed in subsection I. above, section 201(b) of the PLTIA added new 35 U.S.C. 27, which provides that the Director may establish procedures to accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the patent owner. The patent laws formerly provided for revival of an unintentionally abandoned application only in the patent fee provisions of 35 U.S.C. 41(a)(7) . See Public Law 97–247, section 3(a), 96 Stat. 317–18 (1982). The unintentional delay fee provisions of 35 U.S.C. 41(a)(7) were imported into, and were applicable to, all ex parte reexamination proceedings by section 4605 of the American Inventors Protection Act of 1999. The unintentional delay provisions of 35 U.S.C. 41(a)(7) became effective in reexamination proceedings on November 29, 2000. However, this statutory structure raised questions concerning the Office’s authority to revive an unintentionally abandoned application (without a showing of unavoidable delay) in certain situations. See e.g., Aristocrat Techs. Australia Pty Ltd. v. Int’l Game
Tech., 543 F.3d 657 (Fed. Cir. 2008).
37 CFR 1.137(a) , as amended in the final rule to implement the PLTIA, provides that if the delay in reply by patent owner was unintentional, a petition may be filed pursuant to 37 CFR 1.137 to revive a reexamination prosecution terminated under 37 CFR 1.957(b) or limited under 37 CFR 1.957(c). 37 CFR 1.137(b) states the petition requirements. Specifically, 37 CFR 1.137(b) provides that a grantable petition pursuant to 37 CFR 1.137 must be accompanied by: (1) The reply required to the outstanding Office action or notice; unless previously filed; (2) the petition fee as set forth in 37 CFR 1.17(m); and (3) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. 37 CFR 1.137 continues to provide that the Director may require additional information where there is a question whether the delay was unintentional.
III. RENEWED PETITION
Reconsideration may be requested of a decision dismissing or denying a petition under 37 CFR 1.137 to revive a terminated reexamination prosecution. The request for reconsideration must be submitted within one (1) month from the mail date of the decision for which reconsideration is requested. An extension of time may be requested only under 37 CFR 1.956; extensions of time under 37 CFR 1.136 are not available in reexamination proceedings. Any reconsideration request which is submitted should include a cover letter entitled “Renewed Petition under 37 CFR 1.137”.
IV. PETITION REQUIREMENTS
See also MPEP § 711.03(c) for a detailed discussion of the requirements of petitions filed under 37 CFR 1.137 .
2669 [Reserved]
2670 Clerical Handling [R-07.2015]
Central Reexamination Unit (CRU) technical support staff will carry out clerical handling and processing of inter partes reexamination cases. The technical support staff will perform all PALM matters needed for the case, e.g., PALMing in the file and PALMing it to the examiner. After the examiner has completed a decision on the request for inter partes reexamination and/or an Office action, the technical support staff will process for mailing the decision and/or Office action to the patent owner and to the third party requester(s), if needed. The technical support staff will also mail any copies of any references which are needed. A transmittal form PTOL-2070 with the third party requester’s address will be completed. The technical support staff will coordinate its activities with those of the examiner and the CRU Supervisory Patent Reexamination Specialists (SPRSs) or Technology Center (TC) Quality Assurance Specialists (QASs) and the paralegals.
See MPEP §§ 2234 and 2250 for manner of entering amendments.
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For entry of amendments in a merged inter partes reexamination proceeding (i.e., an inter partes reexamination proceeding merged with another reexamination proceeding or with a reissue application), see MPEP §§ 2686.01 and 2686.03.
Where an amendment is submitted in proper form and it is otherwise appropriate to enter the amendment, the amendment will be entered for purposes of the reexamination proceeding, even though the amendment does not have legal effect until the certificate is issued. Any “new matter” amendment to the disclosure (35 U.S.C. 132) will be required to be canceled, and claims containing new matter will be rejected under 35 U.S.C. 112. A “new matter” amendment to the drawing is ordinarily not entered. See MPEP §§ 608.04, 608.04(a) and 608.04(c). Where an amendment enlarges the scope of the claims of the patent, the claims will be rejected under 35 U.S.C. 314(a).
2671 Examiner Action Following Response/Comments or Expiration of Time for Same [R-07.2015]
I. RECONSIDERATION
After response by the patent owner and any third party comments, the patent under reexamination will be reconsidered. The patent owner and the third party requester will be notified as to any claims rejected, any claims found patentable and any objections or requirements made. The patent owner may respond to such Office action with or without amendment, and the third party requester may provide comments after the patent owner’s response. If the patent owner response contains an amendment, the examiner will consider the amendment to determine whether the amendment raises issues of 35 U.S.C. 112 and/or broadening of the claims under 35 U.S.C. 314. The patent under reexamination will be reconsidered until the proceeding is ready for closing prosecution, at which point the examiner will issue an Action Closing Prosecution (ACP). See MPEP § 2671.02.
II. CASE IS TAKEN UP FOR ACTION
The case should be acted on promptly, in accordance with the statutory requirement for “special dispatch within the Office” (35 U.S.C. 314(c)).
After the examiner receives notification of a response/comment (e.g., having the patent owner’s response to the Office action and any third party requester comments on that response), he/she will prepare for and participate in a conference in accordance with MPEP § 2671.03 .
After the conference, the proceeding, with the completed action, will be forwarded to the CRU Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) for review. If the CRU SPRS/TC QAS returns the case to the examiner for correction/revision, the correction/revision must be handled expeditiously and returned to the CRU SPRS/TC QAS within the time set for such by the CRU SPRS/TC QAS.
III. OPTIONS AS TO OFFICE ACTION TO ISSUE
At this point in the proceeding, the examiner will have the following options as to the next Office action to issue:
(A) There is no timely response by the patent owner (since the patent owner did not respond, no third party requester comments may be filed):
(1) If all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). See MPEP § 2687. All claims will be canceled by formal examiner’s amendment (attached as part of the NIRC).
(2) If at least one claim is free of rejection and objection, the examiner will issue an Action Closing Prosecution (ACP). In the ACP, it will be stated that any claims under rejection or objection are withdrawn from consideration and will be canceled upon issuance of a NIRC. It will further be stated that the proceeding will be limited to the claims found patentable at the time of the failure to respond, and to claims (added or amended) which do not expand the scope of the claims found patentable at that time. See MPEP § 2666.10.
It should be noted that even in a situation where there has been no patent owner response, the examiner is always free to issue a supplemental Office action providing a new rejection of claims previously found patentable, where new information comes
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to the attention of the examiner warranting the new rejection. Of course, such an action would ordinarily not be made an ACP.
(B) There is a timely response by the patent owner, and the third party requester does not timely provide comments:
(1) If the response by the patent owner is incomplete, the examiner may issue an incomplete-response action. See MPEP § 2666.30.
(2) If there is a formality defect in the response by the patent owner, the examiner will issue a Notice of Defective Paper in Reexam. See MPEP § 2666.50.
(3) If the patent owner’s response is complete and defect-free, and the proceeding is ready for closing prosecution, the examiner will issue an ACP. See MPEP § 2671.02. This is true if all claims are determined to be patentable, all claims are determined to be rejected, or if some claims are determined to be patentable and some claims are determined to be rejected. After the ACP has been issued, the patent owner can submit comments with or without a proposed amendment in accordance with MPEP § 2672, and the third party requester can then file comments responsive to the patent owner’s submission.
(4) If the patent owner’s response is complete and defect-free, and the proceeding is not ready for closing prosecution, the examiner will issue a new Office action that does not close prosecution. See MPEP § 2671.01.
(C) There is a timely response by the patent owner, and the third party requester does provide timely comments:
(1) If the response by the patent owner is incomplete, the examiner may issue an incomplete-response action. See MPEP § 2666.30.
(2) If the comments by third party requester go beyond the scope of what is permitted for the third party comments, the examiner will follow the procedures set forth in MPEP § 2666.05 for improper comments.
(3) If there is a formality defect in the response by the patent owner, the examiner will issue a Notice of Defective Paper in Reexam. See MPEP § 2666.50.
(4) If there is a formality defect in the comments by the third party requester, the examiner will issue a Notice of Defective Paper in Reexam. See MPEP § 2666.50.
(5) If the response and comments are in order, and the proceeding is ready for closing prosecution, the examiner will issue an ACP. See MPEP § 2671.02. This is true if all claims are determined to be patentable, all claims are determined to be rejected, or if some claims are determined to be patentable and some claims are determined to be rejected. After the ACP has been issued, the patent owner can submit comments with or without a proposed amendment in accordance with MPEP § 2672 and the third party requester can then file comments responsive to the patent owner’s submission.
(6) If the response and comments are in order and the proceeding is not ready for closing prosecution, the examiner will issue a new Office action that does not close prosecution. See MPEP § 2671.01.
(D) There is a timely request for issuance of an Expedited Right of Appeal Notice:
37 CFR 1.953(b) provides for the issuance of an expedited Right of Appeal Notice (RAN), where the criteria for the same is satisfied. At any time after the patent owner’s response to the first Office action on the merits in an inter partes reexamination, the patent owner and third party requester(s) may request the immediate issuance of a RAN. Where such a request is presented in the proceeding, see MPEP § 2673.02 for guidance as to whether an expedited Right of Appeal Notice will be issued.
2671.01 Examiner Issues Action on Merits That Does Not Close Prosecution [R-07.2015]
37 CFR 1.949 Examiner’s Office action closing prosecution in inter partes reexamination.
Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.
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I. WHEN A NON-ACP ACTION IS ISSUED
After reviewing the patent owner’s response and third party requester comments (if such comments are filed), the examiner may determine that the proceeding is not ready for issuing an Action Closing Prosecution (ACP). Such a determination would be based upon the following:
(A) In accordance with 37 CFR 1.949, an action will not normally close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment. The examiner will not normally close prosecution where a new ground of rejection not necessitated by an amendment is made, because the patent owner’s right to amend the claims becomes limited after prosecution is closed. For an exception where the patent owner submits an IDS, see MPEP § 2671.02.
(B) Where an ACP would be proper, but the examiner feels that the issues are not yet clearly defined, it is always within the discretion of the examiner to issue an Office action that does not close prosecution (rather than an ACP).
II. OVERALL CONTENT
Where the examiner determines that the proceeding is not ready for issuing an ACP, the examiner will issue an Office action that will be similar in form to a first Office action, but will differ in that it addresses the positions and argument set forth in the patent owner’s response and the third party requester comments (if such comments are filed). This Office action will be a statement of the examiner’s position, so complete that the next Office action can properly be made an action closing prosecution.
The action should be comprehensive. It should address all issues as to the patents or printed publications. The action will clearly set forth each ground of rejection and/or ground of objection, and the reasons supporting the ground(s). The action will also clearly set forth each rejection proposed by the third party requester that the examiner refuses to adopt. Reasons why the rejection proposed by the third party is not appropriate (i.e., why the claim cannot be rejected under the ground proposed by the third party requester) must be clearly stated for each
rejection proposed by the third party requester that the examiner refuses to adopt. Comprehensive reasons for patentability must be given for each determination favorable to patentability of claims. See MPEP § 1302.14 for examples of suitable statements of reasons for allowance.
III. REVIEW OF AMENDATORY MATTER UNDER 35 U.S.C. 112
Where an amendment has been submitted in the patent owner’s response, the amendatory matter (i.e., matter revised or newly added) should be reviewed for compliance with 35 U.S.C. 112. As to the content of the patent that has not been revised, a review based upon 35 U.S.C. 112 is not proper in reexamination, and no such review should be made.
IV. WITHDRAWAL OF REJECTION
Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the Office action as a decision favorable to patentability with respect to the withdrawn rejection. The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester.” In the event the patent owner fails to respond to all actions leading to the Right of Appeal Notice (RAN), including the ACP, and a RAN is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability. See 37 CFR 41.61(a)(2).
Where the claims have not been amended and the examiner withdraws a ground of rejection previously proposed by the third party requester (e.g., based on the patent owner’s argument or evidence submitted), the examiner should treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.
Generally (subject to the below-stated exception), where the claims have been amended and the examiner withdraws a ground of rejection previously proposed by the third party requester, this is not a refusal of the examiner to adopt the rejection that was proposed by the requester, since the rejection was never proposed as to the amended claims. The
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§ 2671.01OPTIONAL INTER PARTES REEXAMINATION
third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester” as to the amended claims. In the event the patent owner fails to respond to all actions leading to the RAN, including the ACP, and a RAN is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability. See 37 CFR 41.61(a)(2).
If a claim is amended merely to include a dependent claim that was previously subjected to a proposed requester rejection, and the examiner withdraws that ground of rejection as to the newly amended claim, such would be a refusal to adopt the third party requester’s previously proposed rejection of the dependent claim. Thus, the examiner would treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.
V. ISSUES NOT WITHIN SCOPE OF REEXAMINATION
If questions not within the scope of reexamination proceedings (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102) have been newly raised by the patent owner response or the third party requester comments being addressed by the present Office action, the existence of such questions will be noted by the examiner in the Office action, using form paragraph 26.03.
¶ 26.03 Issue Not Within Scope of Inter Partes Reexamination
An issue has been raised in the present reexamination proceeding that is not within the scope of inter partes reexamination proceedings. [1]. This issue will not be considered in the present proceeding. 37 CFR 1.906(c).
Examiner Note:
1. In bracket 1, identify the issues.
2. This paragraph may be used either when the patent owner or the third party requester raises issues such as (but not limited to) public use or on sale, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.
Note that if questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102(c), etc., have been independently discovered by the examiner during a reexamination proceeding but were not raised by the third party requester or the patent owner, the existence of such questions will not be noted by the examiner in any Office action, because 37 CFR 1.906(c) is only directed to such questions “raised by the patent owner or the third party requester.”
VI. COVER SHEET
Form PTOL-2064 should be used as the Office action cover sheet. Since the Office action is responsive to a patent owner response, and possibly the third party requester comments, the space on the PTOL-2064 for the date of the communication(s) to which the Office action is responsive to should be filled in. Generally, the patent owner is given two months to respond to the action, and thus “Two” should be inserted in the appropriate space.
VII. SIGNATORY AUTHORITY
As with all other Office correspondence on the merits in a reexamination proceeding, the action must be signed by a primary examiner.
VIII. CONCLUDING PARAGRAPHS
In view of the requirement for “special dispatch” in inter partes reexamination proceedings (35 U.S.C. 314(c)), it is intended that the examiner be able to close prosecution at the earliest possible time. Accordingly, the Office action should include a statement cautioning the patent owner that a complete response should be made to the action, since the next action is expected to be an ACP. The action should further caution the patent owner that the requirements of 37 CFR 1.116(b) will be strictly enforced after an ACP and that any amendment after an ACP must include “a showing of good and sufficient reasons why they are necessary and were not earlier presented” in order to be considered. Form paragraph 26.05 should be inserted at the end of the Office action followed by form paragraph 26.73.
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¶ 26.05 Papers To Be Submitted in Response to Action
In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidence of patentability, such documents must be submitted in response to this Office action. Submissions after the next Office action, which is intended to be an Action Closing Prosecution (ACP), will be governed by 37 CFR 1.116(b) and (d), which will be strictly enforced.
¶ 26.73 Correspondence and Inquiry as to Office Actions
All correspondence relating to this inter partes reexamination proceeding should be directed:
By EFS: Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/ myportal/efs-registered.
By Mail to: Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.
Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this
proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
Examiner Note:
1. This form paragraph is used at the end of inter partes reexamination communications.
2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.
IX. PROCESS OF PREPARING THE ACTION
Upon receipt of a patent owner response to the action (and third party requester comments where permitted) by the CRU, or upon the expiration of the time to submit same, the examiner will be notified. The examiner will prepare for and set up a panel review conference as per MPEP § 2671.03, to discuss the issuance of the Office action. The examiner may prepare the Office action after the conference, or may prepare the Office action prior to the conference and revise it as needed after the conference.
If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims and issue a non-final Office action, the proposed Office action shall be issued and signed by the examiner, with the two or more other conferees initialing the action (as “conferee”) to indicate their presence in the conference.
X. NO RESPONSE BY PATENT OWNER
Where the patent owner fails to timely respond to an action requiring a response and there are no patentable claims, a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) will be issued. No panel review conference is needed in this instance, as the issuance of the NIRC is essentially ministerial.
2671.02 Examiner Issues Action Closing Prosecution (ACP) [R-07.2015]
37 CFR 1.949 Examiner’s Office action closing prosecution in inter partes reexamination.
Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all
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§ 2671.02OPTIONAL INTER PARTES REEXAMINATION
rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.
Although an Action Closing Prosecution (ACP) has many attributes similar to a “final rejection” made in an ex parte reexamination proceeding or in a non-provisional application, it is not a final action, and, as such, it cannot be appealed from. An appeal can only be taken after the examiner issues a Right of Appeal Notice (RAN). See MPEP § 2673.02.
Before an ACP is in order, issues should be clearly developed. When all claims are found patentable in the first action, the examiner will, at that point, issue an ACP, since the patent owner has nothing to respond to. Otherwise, it is intended that the second Office action in the reexamination proceeding will ordinarily be an ACP. The criteria for issuing an ACP is analogous to that set forth in MPEP § 706.07(a) for making a rejection final in an application.
All parties to the reexamination should recognize that a reexamination proceeding may result in the final cancellation of claims from the patent and that the patent owner does not have the right to continue the proceeding by refiling under 37 CFR 1.53(b) or 1.53(d) nor by filing a Request for Continued Examination under 37 CFR 1.114, and the patent owner cannot file an inter partes reexamination request (see MPEP § 2612). Complete and thorough actions by the examiner, coupled with complete responses by the patent owner and complete comments by the third party requester (including early presentation of evidence under 37 CFR 1.131(a) or 1.132) will go far in reaching a desirable early termination of the prosecution of the reexamination proceeding.
In making an ACP, (A) all outstanding grounds of rejection of record should be carefully reviewed, (B) all outstanding determinations of patentability (decisions to not make a proposed rejection) of record should be carefully reviewed, and (C) any grounds of rejection relied upon and any determinations of patentability relied upon should be reiterated.
I. CONTENT
The grounds of rejection and determinations of patentability must (in the ACP) be clearly developed to such an extent that the patent owner and the third party requester may readily judge the advisability of filing comments after an ACP pursuant to 37 CFR 1.951(a) and (b), respectively.
The ACP should address all issues as to the patents or printed publications. The ACP will clearly set forth each rejection proposed by the third party requester that the examiner refuses to adopt. Reasons why the rejection proposed by the third party requester is not appropriate (i.e., why the claim cannot be rejected under the ground proposed by the third party requester) must be clearly stated for each rejection proposed by the third party requester that the examiner refuses to adopt. Comprehensive reasons for patentability must be given for each determination favorable to patentability of claims. See MPEP § 1302.14 for examples of suitable statements of reasons for allowance.
Where a previous Office action contains a complete statement of a ground of rejection or of reasons for not making a proposed rejection, the ACP may incorporate by reference that statement. In any event, the ACP must also include a rebuttal of any arguments raised in the patent owner’s response and must reflect consideration of any comments made by the third party requester.
II. REVIEW OFAMENDATORY MATTER UNDER 35 U.S.C. 112
Where an amendment has been submitted in the patent owner’s response, the amendatory matter (i.e., matter revised or newly added) should be reviewed for compliance with 35 U.S.C. 112. As to the content of the patent that has not been revised, a review based upon 35 U.S.C. 112 is not proper in reexamination, and no such review should be made.
III. WITHDRAWAL OF REJECTION
Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the ACP as a decision favorable to patentability with respect to the
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withdrawn rejection. The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester.” In the event the patent owner fails to respond to the ACP and a Right of Appeal Notice (RAN) is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability. See 37 CFR 41.61(a)(2). Where the examiner withdraws a ground of rejection previously proposed by the third party requester, the examiner should treat the issue as rejection proposed by the third party requester that the examiner refuses to adopt.
IV. ISSUES NOT WITHIN SCOPE OF REEXAMINATION
If questions not within the scope of reexamination proceedings (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102(c) have been newly raised by the patent owner response or the third party requester comments being addressed by the ACP, the existence of such questions will be noted by the examiner in the ACP, using form paragraph 26.03.
¶ 26.03 Issue Not Within Scope of Inter Partes Reexamination
An issue has been raised in the present reexamination proceeding that is not within the scope of inter partes reexamination proceedings. [1]. This issue will not be considered in the present proceeding. 37 CFR 1.906(c).
Examiner Note:
1. In bracket 1, identify the issues.
2. This paragraph may be used either when the patent owner or the third party requester raises issues such as (but not limited to) public use or on sale, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.
V. COVER SHEET
Form PTOL-2065 should be used as the cover sheet for the ACP. Since the Office action is responsive to a patent owner response, and possibly the third party requester comments, the space on the PTOL-2065 for the date of the communication(s) to which the Office action is responsive to should be
filled in. Generally, the patent owner is given one month to respond to the action, and thus “One” should be inserted in the appropriate space for such.
VI. SIGNATORY AUTHORITY
As with all other Office correspondence on the merits in a reexamination proceeding, the ACP must be signed by a primary examiner.
VII. CONCLUDING PARAGRAPHS
The ACP should conclude with the following form paragraphs:
¶ 26.07 Action Closing Prosecution
This is an ACTION CLOSING PROSECUTION (ACP); see MPEP § 2671.02.
(1) Pursuant to 37 CFR 1.951(a), the patent owner may once file written comments limited to the issues raised in the reexamination proceeding and/or present a proposed amendment to the claims which amendment will be subject to the criteria of 37 CFR 1.116 as to whether it shall be entered and considered. Such comments and/or proposed amendments must be filed within a time period of 30 days or one month, whichever is longer, from the mailing date of this action. Where the patent owner files such comments and/or a proposed amendment, the third party requester may once file comments under 37 CFR 1.951(b) responding to the patent owner’s submission within 30 days from the date of service of the patent owner’s submission on the third party requester
(2) If the patent owner does not timely file comments and/or a proposed amendment pursuant to 37 CFR 1.951(a), then the third party requester is precluded from filing comments under 37 CFR 1.951(b).
(3) Appeal cannot be taken from this action, since it is not a final Office action.
¶ 26.73 Correspondence and Inquiry as to Office Actions
All correspondence relating to this inter partes reexamination proceeding should be directed:
By EFS: Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/ myportal/efs-registered.
By Mail to: Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
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§ 2671.02OPTIONAL INTER PARTES REEXAMINATION
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.
Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
Examiner Note:
1. This form paragraph is used at the end of inter partes reexamination communications.
2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.
VIII. PROCESS OF PREPARING THE ACTION
After an examiner has determined that the reexamination proceeding is ready for the ACP action, the examiner will set up a panel review conference as per MPEP § 2671.03, to discuss the issuance of the ACP action. The examiner may prepare the action after the conference, or may prepare the action prior to the conference and revise it as needed after the conference.
If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims and issue an ACP, the proposed ACP action shall
be issued and signed by the examiner, with the two other conferees initialing the action (as conferee) to indicate their presence in the conference. When ready, the examiner’s action given to the CRU SPRS and/or technical support staff for processing and mailing.
IX. WHERE PATENT OWNER FAILS TO RESPOND AND CLAIMS HAVE BEEN FOUND PATENTABLE
Where the patent owner fails to respond to the first Office action (or any subsequent Office action which is prior to ACP) and claims have been found patentable in the first action (or a subsequent action), the examiner will issue an ACP (see MPEP § 2671). The ACP should repeat all determinations of patentability (decisions to not make a proposed rejection) applicable to the patentable claims and incorporate by reference the reasons for each determination (the reasons for not making each proposed rejection). If the examiner realizes that more explanation would be helpful, the examiner should include it. Since the patent owner failed to respond to the first Office action (or a subsequent action), the proceeding will be limited to the claims found patentable and to new claims which do not expand the scope of the claims found patentable (if the new claims have an entry right or are otherwise entered at the option of the examiner). See MPEP § 2666.10. A panel review conference pursuant to MPEP § 2671.03 will be held.
X. ART CITED BY PATENT OWNER DURING PROSECUTION
Where art is submitted in a prior art citation under 37 CFR 1.501 and/or 37 CFR 1.555 (an IDS filed in a reexamination is construed as a prior art citation) and the submission is not accompanied by a statement similar to that of 37 CFR 1.97(e), the examiner may use the art submitted and make the next Office action an ACP action whether or not the claims have been amended, provided that no other new ground of rejection is introduced by the
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examiner based on art not cited in the prior art citation. See MPEP § 706.07(a).
2671.03 Panel Review [R-07.2015]
A panel review will be conducted at each stage of the examiner’s examination in an inter partes reexamination proceeding, other than for actions such as notices of informality or incomplete response. Matters requiring decision outside of the examiner’s jurisdiction (e.g., decisions on petitions or extensions of time, or Central Reexamination Unit (CRU) support staff notices) will not be reviewed by a panel.
The panel review is carried out for each Office action. The panel reviews the examiner’s preliminary decision to reject and/or allow the claims in the reexamination proceeding, prior to the issuance of each Office action.
I. MAKE-UP OF THE PANEL
The panel will consist of three members, one of whom will be a manager. The second member will be the examiner in charge of the proceeding. The manager may select the third member. The examiner-conferees will be primary examiners, or examiners who are knowledgeable in the technology of the invention claimed in the patent being reexamined and/or who are experienced in reexamination practice. The majority of those present at the conference will be examiners who were not involved in the examination or issuance of the patent. An “original” examiner (see MPEP § 2636) should be chosen as a conferee only if that examiner is the most knowledgeable in the art, or there is some other specific and justifiable reason to choose an original examiner as a participant in the conference.
II. PANEL PROCESS
The examiner must inform his/her manager of his/her intent to issue an Office action. The manager will then convene a panel and the members will confer and review the patentability of the claim(s). If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims, the Office action shall be issued and signed by the examiner, with the two other conferees initialing the action (as
“conferee”) to indicate their participation in the conference. Both conferees will initial, even though one of them may have dissented from the 3-party conference decision as to the patentability of claims. If the conference does not confirm the examiner’s preliminary decision, the examiner will reevaluate and issue an appropriate Office action .
Where the examiner in charge of the proceeding is not in agreement with the conference decision, the manager will generally assign the proceeding to another examiner.
III. WHAT THE CONFERENCES SHOULD ACCOMPLISH
Each conference will provide a forum to consider all issues of patentability as well as procedural issues having an impact on patentability. Review of the patentability of the claims by more than one primary examiner should diminish any perception that the patent owner can disproportionately influence the examiner in charge of the proceeding. The conferences will also provide greater assurance that all matters will be addressed appropriately. All issues in the proceeding will be viewed from the perspectives of three examiners. What the examiner in charge of the proceeding might have missed, one of the other two conference members would likely detect. The conference will provide for a comprehensive discussion of, and finding for, each issue.
IV. CONSEQUENCES OF FAILURE TO HOLD CONFERENCE
Should the examiner issue Office action without panel review, the patent owner or the third party requester who wishes to object must promptly file a paper alerting the Office of this fact. (The failure to hold a panel review conference would be noted by the parties where there are no conferees’ initials at the end of the Office action.) Any challenge of the failure to hold a panel review conference must be made within two weeks of receipt of the Office action issued, or the challenge will not be considered. In no event will the failure to hold a patentability review conference, by itself, be grounds for vacating
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§ 2671.03OPTIONAL INTER PARTES REEXAMINATION
any Office decision(s) or action(s) and “restarting” the reexamination proceeding.
2672 Patent Owner Comments/Amendment After ACP and Third Party Requester Responsive Comments [R-07.2015]
37 CFR 1.951 Options after Office action closing prosecution in inter partes reexamination.
(a) After an Office action closing prosecution in an inter partes reexamination, the patent owner may once file comments limited to the issues raised in the Office action closing prosecution. The comments can include a proposed amendment to the claims, which amendment will be subject to the criteria of § 1.116 as to whether or not it shall be admitted. The comments must be filed within the time set for response in the Office action closing prosecution.
(b) When the patent owner does file comments, a third party requester may once file comments responsive to the patent owner’s comments within 30 days from the date of service of patent owner’s comments on the third party requester.
I. ONE OPPORTUNITY TO MAKE SUBMISSIONS UNDER 37 CFR 1.951(a) AND (b)
After an Action Closing Prosecution (ACP), the patent owner may once file (pursuant to 37 CFR 1.951(a)) written comments limited to the issues raised in the reexamination proceeding and/or present a proposed amendment to the claims. Where the patent owner does so, the third party requester may once file (pursuant to 37 CFR 1.951(b)) comments responsive to the patent owner’s comments. Any second or supplemental submission after ACP by either the patent owner or the third party requester will thus be returned.
II. TIME FOR MAKING PATENT OWNER SUBMISSION UNDER 37 CFR 1.951(a)
The patent owner submission under 37 CFR 1.951(a) of comments and/or proposed amendment must be filed within the time period set for response to the ACP. Normally, the ACP will set a period of 30 days or one month (whichever is longer) from the mailing date of the ACP.
An extension of the time period for filing the patent owner’s submission under 37 CFR 1.951(a) may be requested under 37 CFR 1.956. The time period may not, however, be extended to run past 6 months from the date of the ACP.
The examiner and all other parties to the reexamination should recognize that a reexamination proceeding may result in the final cancellation of claims from the patent and that the patent owner does not have the right to continue the proceeding by refiling under 37 CFR 1.53(b) or 1.53(d), nor by filing a Request for Continued Examination under 37 CFR 1.114, and the patent owner cannot file an inter partes reexamination request (see MPEP § 2612). Accordingly, the examiner and other parties should identify and develop all issues prior to the ACP, including the presentation of evidence under 37 CFR 1.131(a) and 1.132.
III. PATENT OWNER MAKES SUBMISSION AFTER ACP; LIMITATION ON PATENT OWNER’S SUBMISSION
Once an ACP that is not premature has been entered in a reexamination proceeding, the patent owner no longer has a right to unrestricted further prosecution. Consideration of the proposed amendments submitted after ACP (pursuant to 37 CFR 1.951(a)) will be governed by the strict standards of 37 CFR 1.116. The patent owner’s submission of comments under 37 CFR 1.951(a) must be limited to the issues raised in the ACP. If the submission addresses issues not already raised in the ACP, then the comments will be returned as improper; if the comments have been scanned into the Image File Wrapper (IFW) for the reexamination proceeding prior to the discovery of the impropriety, they should be expunged from the record, with notification being sent to the party that submitted the comments. No additional opportunity will be given for the patent owner to correct the defect unless a petition under 37 CFR 1.183 is granted to waive 37 CFR 1.951 as to its one opportunity limitation for the patent owner comment. If such a petition under 37 CFR 1.183 is granted and the patent owner submits corrected comments under 37 CFR 1.951(a), the third party requester may then once file supplemental comments responding to the ACP and the patent owner’s corrected comments within one month from the date of service of the patent owner’s corrected comments on the third party requester. Any corrected patent owner comments under 37 CFR 1.951(a) that are submitted in the rare instance where a petition is granted must be strictly limited to (i.e., must not go
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beyond) the content of the original comments submission.
IV. PATENT OWNER MAKES SUBMISSION AFTER ACP; THIRD PARTY REQUESTER COMMENTS ARE LIMITED
Where the patent owner files comments and/or a proposed amendment pursuant to 37 CFR 1.951(a), the third party requester may once file comments (pursuant to 37 CFR 1.951(b)) responding to the patent owner’s comments, and/or proposed amendment, and/or the issues raised in the ACP. See 35 U.S.C. 314(b)(2) . Such third party requester comments must be filed within 30 days from the date of service of the patent owner’s comments and/or proposed amendment on the third party requester. If the third party requester’s comments go beyond the scope of responding to the patent owner’s comments, and/or proposed amendments, and/or the issues raised in the ACP, then the third party requester’s comments will be returned as improper; if the comments have been scanned into the Image File Wrapper (IFW) for the reexamination proceeding prior to the discovery of the impropriety, they should be expunged from the record, with notification being sent to the party that submitted the comments. No additional opportunity will be given for the third party requester to correct the defect unless a petition under 37 CFR 1.183 is granted to waive 37 CFR 1.951 as to its one opportunity limitation. Any replacement third party requester comments under 37 CFR 1.951 (that are submitted in the rare instance where a petition is granted) must be strictly limited to (i.e., must not go beyond) the content of the original comments submission.
V. PATENT OWNER DOES NOT MAKE SUBMISSION AFTER ACP
If the patent owner does not timely file comments or a proposed amendment pursuant to 37 CFR 1.951(a), then the third party requester is precluded from filing comments under 37 CFR 1.951(b). Accordingly, a Right of Appeal Notice (RAN) will be issued where the time for filing the patent owner comments and/or amendment has expired and no patent owner paper containing comments or amendment has been received. It should be noted
that where the patent owner chooses not to file a submission pursuant to 37 CFR 1.951(a), no rights of appeal are lost.
VI. ACTION CLOSING PROSECUTION - PREMATURE
If the patent owner is of the opinion that the Office action closing prosecution (ACP) in the inter partes reexamination proceeding is premature, the patent owner may, in addition to the comments submitted under 37 CFR 1.951(a), file a petition under 37 CFR 1.181 (to challenge the making of the action an ACP) within the time period for filing the comments under 37 CFR 1.951(a).
2673 Examiner Consideration of Submissions After ACP and Further Action [R-07.2015]
I. WHEN THE CASE IS TAKEN UP FOR ACTION
The patent owner is given 30 days or one month, whichever is longer, to make the 37 CFR 1.951(a) submission after Action Closing Prosecution (ACP). If no patent owner submission under 37 CFR 1.951(a) is received after two months from the ACP, the examiner will take up the case for action. The case should be acted on promptly, in accordance with the statutory requirement for “special dispatch within the Office” (35 U.S.C. 314(c)). Where a patent owner obtained an extension of time under 37 CFR 1.956, the examiner will wait until the extended time plus one month expires before taking up the case for action.
If the patent owner submission under 37 CFR 1.951(a) is received, the third party requester will then have 30 days from service of the patent owner’s submission to file the third party requester’s 37 CFR 1.951(b) submission. If no third party requester submission under 37 CFR 1.951(b) is received after two months from the date of service of the patent owner’s 37 CFR 1.951(a) submission, the examiner will take up the case for action.
Where both the 37 CFR 1.951(a) and (b) submissions have been received, the case should be taken up for action as soon as possible.
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II. OPTIONS AS TO WHICH ACTION TO ISSUE
(A) Right of Appeal Notice - Where no 37 CFR 1.951(a) submission has been filed by the patent owner, or where a submission under 37 CFR 1.951(a) (and 37 CFR 1.951(b)) has been filed and the examiner will not modify his/her position; the examiner should issue a Right of Appeal Notice (RAN). See MPEP § 2673.02. If the patent owner’s submission included a proposed amendment, the RAN will indicate whether or not it was entered.
Where a submission has been filed under 37 CFR 1.951(a) (or 37 CFR 1.951(b)) and that submission is incomplete or is defective, the examiner should notify the parties, in the RAN, that the submission has not been considered, and that no additional opportunity is available to correct the defect(s) in the submission, because 37 CFR 1.951(a) and (b) provide that comments may only be filed “once.”
(B) Office action reopening of prosecution - See MPEP § 2673.01 for a discussion of when the examiner should issue an action reopening prosecution.
III. ACTION TAKEN BY EXAMINER
It should be kept in mind that a patent owner cannot, as a matter of right, amend claims rejected in the ACP, add new claims after an ACP, nor reinstate previously canceled claims. A showing under 37 CFR 1.116(b) is required and will be evaluated by the examiner for all proposed amendments after the ACP, except where an amendment merely cancels claims, adopts examiner’s suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner.
Where the entry of the proposed amendment (after the ACP) would result in any ground of rejection being withdrawn or any additional claim indicated as patentable, the proposed amendment generally raises new issues requiring more than cursory review by the examiner. The examiner would need to indicate new grounds for patentability for any claim newly found patentable and/or the reason why the rejection was withdrawn and would also need to deal with any third party requester’s comments on the proposed amendment (made pursuant to 37 CFR 1.951(b) in response to owner’s proposed
amendment). Thus, the examiner is not required to enter the proposed amendment.
In view of the fact that the patent owner cannot continue the proceeding by refiling under 37 CFR 1.53(b) or 1.53(d) nor by filing a Request for Continued Examination under 37 CFR 1.114, the examiner should consider the feasibility of entering a proposed amendment paper, where the entirety of the amendment would result only in an additional claim (or claims) being indicated as patentable. The examiner is encouraged to enter such an amendment unless the entry would cause an “undue burden” on the examiner. Where the examiner does not enter the amendment, the examiner should explain the “undue burden.” Where the examiner does enter the amendment, see MPEP § 2673.01 as to whether a Right of Appeal Notice (RAN) can be issued or whether there is a need to reopen prosecution.
Where multiple amendments are submitted after the ACP, all amendments except for the first one will be returned without consideration, since they are improper submissions. Thus, if prosecution is reopened, only the first amendment will be present for entry.
An amendment filed at any time after the ACP and prior to the RAN may be entered (where appropriate for entry). An amendment filed after the RAN will not be entered at all, in the absence of a grantable petition under 37 CFR 1.183 because 37 CFR 1.953(c) prohibits an amendment after the RAN in inter partes reexamination. If the examiner wishes
to have the patent owner provide an amendment after the RAN, the examiner can reopen prosecution, enter the amendment, and issue a new ACP.
Where a proposed amendment is not entered, the examiner will provide a detailed explanation of the reasons for not entering the proposed amendment. For example, if the claims as amended would present a new issue requiring further consideration or search, the new issue should be identified, and an explanation provided as to why a new search is necessary and/or why more than nominal consideration is necessary.
Affidavits submitted after an ACP are subject to the same treatment as amendments submitted after an
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ACP. This is analogous to the treatment of affidavits submitted after a final rejection in an application. See In re Affidavit Filed After Final Rejection, 152 USPQ 292, 1966 C.D. 53 (Comm’r Pat. 1966).
The parties to the reexamination will be notified in the RAN, or the Office action issued in lieu of the RAN (e.g., action reopening prosecution), as to whether the proposed amendment will be entered or will not be entered.
2673.01 Reopening Prosecution After ACP [R-08.2012]
I. MANDATORY REOPENING
Where a submission after Action Closing Prosecution (ACP) has been filed pursuant 37 CFR 1.951(a) (and 37 CFR 1.951(b)) and the examiner decides to modify his/her position, the examiner should ordinarily reopen prosecution, in accordance with the following guidelines.
The patent owner must be given an opportunity to adequately address any change in position adverse to the patent owner’s position. A Right of Appeal Notice (RAN) cannot be issued until the patent owner has had the opportunity to address each and every rejection prior to the appeal stage. Thus, the examiner should reopen prosecution where any new ground of rejection is made or any additional claim is rejected.
Prosecution is ordinarily reopened in this situation by issuing a non-ACP action, i.e., an Office action prior to the ACP stage. If prosecution were reopened at the ACP stage, the patent owner loses rights as to amending the claims in response to the change in the examiner’s position, because the patent owner’s amendment rights are limited after ACP, see MPEP § 2673.
As opposed to the examiner making a new ground of rejection, if a new finding of patentability is made (i.e., a ground of rejection is withdrawn or an additional claim is indicated as patentable), prosecution need not be reopened. The third party requester has no right to comment on and address a finding of patentability made during the reexamination proceeding until the appeal stage,
unless the patent owner responds (after which the third party requester may file comments). Thus, the third party requester may address any new finding of patentability at the appeal stage in the same manner that it would address a finding of patentability made during the reexamination proceeding where the patent owner does not respond (e.g., all claims are allowed on the first Office action and the patent owner sees no reason to respond).
II. DISCRETIONARY REOPENING
In addition to the above situation which requires reopening of prosecution, the examiner should be liberal in reopening prosecution where the equities of the situation make such appropriate, because patent owner cannot continue the proceeding by refiling under 37 CFR 1.53(b) or 1.53(d), nor by filing a Request for Continued Examination under 37 CFR 1.114.
An example of this would be as follows. Patent owner might submit an amendment after the ACP which would make at least one claim patentable, except for one or two minor changes needed to obviate a rejection. The examiner cannot telephone the owner to obtain the minor change(s) and then issue a RAN because interviews are not permitted in an inter partes reexamination proceeding. Also, the examiner cannot make the changes by issuing an examiner’s amendment coupled with a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) because of the presence of the third party requester, i.e., the third party requester is entitled to a RAN so that the claims found patentable can be appealed. Yet, in this situation, it would be inequitable to send the claims to appeal based on the minor points that could be easily corrected. Accordingly, the examiner would reopen prosecution (since 37 CFR 1.953 requires reopening where a RAN is not issued) and issue a new ACP suggesting the amendment which will make the claims patentable. The third party requester would then have an opportunity to comment on the newly-found-patentable claims after the patent owner submits the suggested amendment pursuant to 37 CFR 1.951(a).
See MPEP § 2673 for a discussion of the examiner not exercising his/her discretion to reopen
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prosecution in those situations where an “undue burden” on the Office would result if prosecution were reopened.
2673.02 Examiner Issues Right of Appeal Notice (RAN) [R-11.2013]
37 CFR 1.953 Examiner’s Right of Appeal Notice in inter partes reexamination.
(a) Upon considering the comments of the patent owner and the third party requester subsequent to the Office action closing prosecution in an inter partes reexamination, or upon expiration of the time for submitting such comments, the examiner shall issue a Right of Appeal Notice, unless the examiner reopens prosecution and issues another Office action on the merits.
(b) Expedited Right of Appeal Notice: At any time after the patent owner’s response to the initial Office action on the merits in an inter partes reexamination, the patent owner and all third party requesters may stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability, and may request the issuance of a Right of Appeal Notice. The request must have the concurrence of the patent owner and all third party requesters present in the proceeding and must identify all of the appealable issues and the positions of the patent owner and all third party requesters on those issues. If the examiner determines that no other issues are present or should be raised, a Right of Appeal Notice limited to the identified issues shall be issued.
(c) The Right of Appeal Notice shall be a final action, which comprises a final rejection setting forth each ground of rejection and/or final decision favorable to patentability including each determination not to make a proposed rejection, an identification of the status of each claim, and the reasons for decisions favorable to patentability and/or the grounds of rejection for each claim. No amendment can be made in response to the Right of Appeal Notice. The Right of Appeal Notice shall set a one-month time period for either party to appeal. If no notice of appeal is filed, prosecution in the inter partes reexamination proceeding will be terminated, and the Director will proceed to issue and publish a certificate under § 1.997 in accordance with the Right of Appeal Notice.
A Right of Appeal Notice (RAN) is a final Office action which presents a final decision to reject the claims (i.e., a final decision that the claims are rejected) and/or a final decision favorable to patentability as to the claims (i.e., a final decision not to make a proposed rejection).
The RAN will identify the status of each claim. It will set forth:
(A) the grounds of rejection for all claims rejected in the RAN;
(B) the reasons why a proposed rejection is not made for all decisions favorable to patentability as to claims that were contested by the third party requester; and
(C) the reasons for patentability for all claims “allowed” and not contested by the third party requester.
The RAN will also advise parties of their rights of appeal at this stage in the reexamination proceeding, and the consequences of failure to appeal.
See MPEP § 2673 as to matters that should be taken into account by the examiner before deciding to issue a RAN. Before the examiner actually issues a RAN, all outstanding grounds of rejection of record and findings of patentability that are of record should be carefully reviewed, after consideration of all submissions of record by the parties. Where it is appropriate to retain the grounds of rejection and findings of patentability, and the examiner’s position will not be changed, the examiner is permitted to issue a RAN. Any grounds of rejection and findings of patentability relied upon should be restated in the RAN. The reasons for each rejection and finding should be set forth in detail. The grounds of rejection and findings of patentability should, at this point, be clearly developed to such an extent that the patent owner and the third party requester may readily judge the advisability of filing an appeal. The examiner’s position as to any arguments and comments raised by the patent owner and the third party requester should be clearly set forth, so that any appeal taken can address the examiner’s position as to the arguments and comments.
In the RAN, it should also be point out which submissions after the Action Closing Prosecution (ACP) have been entered and considered, and which have not. At this point, the examiner should check the record to ensure that parties have been made aware of which amendments, evidence (affidavits, declarations, exhibits, etc.), references and argument are before the examiner for consideration. The case should be ready for appeal after the RAN issues.
In the event that an amendment submitted by the patent owner after the ACP has not been entered because the amendment does not comply with the requirements of 37 CFR 1.116 (see 37 CFR
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1.951(a)), the patent owner may file a petition under 37 CFR 1.181 requesting entry of the amendment. The petition under 37 CFR 1.181 must be filed within the time period for filing a notice of appeal or cross appeal, if appropriate (see 37 CFR 1.953(c)). Note that the filing of a petition under 37 CFR 1.181 does not toll the time period for filing a notice of appeal or cross appeal, if appropriate. Thus, in addition to the petition under 37 CFR 1.181, the patent owner is encouraged to file (1) a petition under 37 CFR 1.183 requesting waiver of the prohibition of an extension of time for filing an appeal brief (37 CFR 41.66(a)), and (2) a request for an extension of the period to file the appeal brief until after a decision on the petition under 37 CFR 1.181. The third party requester may once file comments responsive to the patent owner’s petition under 37 CFR 1.181 within 30 days from the date of service of the patent owner’s petition under 37 CFR 1.181 on the third party requester. When rendering a decision on the petition under 37 CFR 1.181, the deciding official should be mindful that a patent owner in an inter partes reexamination proceeding may not be able to proceed effectively if the amendment submitted after the ACP is not entered since the patent owner in an inter partes reexamination proceeding does not have the right to continue the proceeding by refiling under 37 CFR 1.53(b) or 1.53(d) nor by filing a Request for Continued Examination under 37 CFR 1.114, and the patent owner cannot file an inter partes reexamination.
Form PTOL-2066 should be used as the cover sheet for the RAN. The RAN should conclude with form paragraph 26.08 advising the parties of their right to appeal and correspondence and inquiry form paragraph 26.73:
¶ 26.08 Right of Appeal Notice
This is a RIGHT OF APPEAL NOTICE (RAN); see MPEP § 2673.02 and § 2674. The decision in this Office action as to the patentability or unpatentability of any original patent claim, any proposed amended claim and any new claim in this proceeding is a FINAL DECISION.
No amendment can be made in response to the Right of Appeal Notice in an inter partes reexamination. 37 CFR 1.953(c). Further, no affidavit or other evidence can be submitted in an inter partes reexamination proceeding after the right of appeal notice, except as provided in 37 CFR 1.981 or as permitted by 37 CFR 41.77(b)(1). 37 CFR 1.116(f).
Each party has a thirty-day or one-month time period, whichever is longer, to file a notice of appeal. The patent owner may appeal to the Board with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent by filing a notice of appeal and paying the fee set forth in 37 CFR 41.20(b)(1). The third party requester may appeal to the Board with respect to any decision favorable to the patentability of any original or proposed amended or new claim of the patent by filing a notice of appeal and paying the fee set forth in 37 CFR 41.20(b)(1).
In addition, a patent owner who has not filed a notice of appeal may file a notice of cross appeal within fourteen days of service of a third party requester’s timely filed notice of appeal and pay the fee set forth in 37 CFR 41.20(b)(1). A third party requester who has not filed a notice of appeal may file a notice of cross appeal within fourteen days of service of a patent owner’s timely filed notice of appeal and pay the fee set forth in 37 CFR 41.20(b)(1).
Any appeal in this proceeding must identify the claim(s) appealed, and must be signed by the patent owner (for a patent owner appeal) or the third party requester (for a third party requester appeal), or their duly authorized attorney or agent.
Any party that does not file a timely notice of appeal or a timely notice of cross appeal will lose the right to appeal from any decision adverse to that party, but will not lose the right to file a respondent brief and fee where it is appropriate for that party to do so. If no party files a timely appeal, the reexamination prosecution will be terminated, and the Director will proceed to issue and publish a certificate under 37 CFR 1.997 in accordance with this Office action.
¶ 26.73 Correspondence and Inquiry as to Office Actions
All correspondence relating to this inter partes reexamination proceeding should be directed:
By EFS: Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/ myportal/efs-registered.
By Mail to: Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
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Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.
Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
Examiner Note:
1. This form paragraph is used at the end of inter partes reexamination communications.
2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.
An amendment filed after the RAN will not be entered at all, in the absence of a grantable petition under 37 CFR 1.183, because 37 CFR 1.953(c) prohibits an amendment after the RAN in an inter partes reexamination. If the examiner wishes to have the patent owner provide an amendment after the RAN, the examiner can reopen prosecution, accept the amendment (for entry), and issue a new Action Closing Prosecution (ACP). See MPEP § 2673.01 for discussion as to discretionary reopening of prosecution.
Note that 37 CFR 1.116(d)(1) states that no amendment other than canceling claims, where such cancellation does not affect the scope of any other pending claims in the proceeding, can be made in an inter partes reexamination proceeding after the RAN except as provided in 37 CFR 1.981 or as permitted by 37 CFR 41.77(b)(1). Furthermore, no affidavit or other evidence can be submitted in an inter partes reexamination proceeding after the RAN
except as provided in 37 CFR 1.981 or as permitted by 37 CFR 41.77(b)(1). See 37 CFR 1.116(f).
I. EXAMINER NEVER ISSUES A NIRC AFTER ACP
Once an ACP has been issued, there is no requirement for the patent owner to respond; where the patent owner does not respond to the rejection of the patent claims, a RAN will still be issued and the patent owner can appeal at that point to the Board. Because there is no requirement for the patent owner to respond, there is no situation in which a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) can be issued after an ACP and prior to the RAN. Even if (after an ACP has been issued) the examiner finds the patent owner’s subsequent argument to be persuasive as to all of the claims, a NIRC would still not be issued, but rather, a RAN would be issued to provide the third party requester with an opportunity to appeal the “allowed” claims to the Board.
II. EXPEDITED RIGHT OF APPEAL NOTICE
37 CFR 1.953(b) provides for an expedited RAN. At any time after the patent owner’s response to the first Office action on the merits in an inter partes reexamination, the patent owner and the third party requester (all third party requesters, if there is more than one due to a merged proceeding) may request the immediate issuance of a RAN.
The request for an expedited RAN must:
(A) stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability;
(B) state that the patent owner and the third party requester (all third party requesters, if there is more than one) join in making the request;
(C) identify all of the appealable issues; and
(D) identify and discuss the positions of the patent owner and the third party requester(s) on the identified issues.
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If the examiner determines that no other issues are present or should be raised in the proceeding, a RAN limited to the identified issues will be issued.
If the examiner determines that other issues are in fact present, or that other issues need to be raised in the proceeding, the examiner should deny the request, and examination and prosecution will continue as if the request had not been submitted.
In no event will the request for an expedited RAN be construed to extend the time for any response/comments due at the time the request is made.
III. PANEL REVIEW CONFERENCE
After an examiner has determined that the reexamination proceeding is ready for the RAN action, the examiner will formulate a draft preliminary RAN action. The examiner will then inform his/her Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) of his/her intent to issue the action. The CRU SPRS/TC QAS will convene a panel review conference, and the conference members will review the patentability of the claim(s) pursuant to MPEP § 2671.03. If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims, the proposed RAN action shall be issued and signed by the examiner, with the two or more other conferees initialing the action (as “conferee”) to indicate their presence in the conference. If the conference does not confirm the examiner’s treatment of the claims, the examiner will reevaluate and issue an appropriate Office action.
2674 Appeal in Inter Partes Reexamination [R-07.2015]
35 U.S.C. 315 Appeal.
(a) PATENT OWNER.— The patent owner involved in an inter partes reexamination proceeding under this chapter—
(1) may appeal under the provisions of section 134 and may appeal under the provisions of sections 141 through 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent; and
(2) may be a party to any appeal taken by a third-party requester under subsection (b).
(b) THIRD-PARTY REQUESTER.— A third-party requester—
(1) may appeal under the provisions of section 134, and may appeal under the provisions of sections 141 through 144, with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent; and
(2) may, subject to subsection (c), be a party to any appeal taken by the patent owner under the provisions of section 134 or sections 141 through 144.
(c) CIVIL ACTION.— A third-party requester whose request for an inter partes reexamination results in an order under section 313 is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.
37 CFR 1.959 Appeal in inter partes reexamination.
Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(c) are conducted according to part 41 of this title.
37 CFR 41.61 Notice of appeal and cross appeal to Board.
(a)(1) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the owner may appeal to the Board with respect to the final rejection of any claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1).
(2) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the requester may appeal to the Board with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1).
(b)(1) Within fourteen days of service of a requester’s notice of appeal under paragraph (a)(2) of this section and upon payment of the fee set forth in § 41.20(b)(1), an owner who has not filed a notice of appeal may file a notice of cross appeal with respect to the final rejection of any claim of the patent.
(2) Within fourteen days of service of an owner’s notice of appeal under paragraph (a)(1) of this section and upon payment of the fee set forth in § 41.20(b)(1), a requester who has not filed a notice of appeal may file a notice of cross appeal with respect to any final decision favorable to the patentability, including any final determination not to make a proposed
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rejection, of any original, proposed amended, or new claim of the patent.
(c) The notice of appeal or cross appeal in the proceeding must identify the appealed claim(s) and must be signed by the owner, the requester, or a duly authorized attorney or agent.
(d) An appeal or cross appeal, when taken, must be taken from all the rejections of the claims in a Right of Appeal Notice which the patent owner proposes to contest or from all the determinations favorable to patentability, including any final determination not to make a proposed rejection, in a Right of Appeal Notice which a requester proposes to contest. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal is decided.
(e) The time periods for filing a notice of appeal or cross appeal may not be extended.
(f) If a notice of appeal or cross appeal is timely filed but does not comply with any requirement of this section, appellant will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended notice of appeal or cross appeal. If the appellant does not then file an amended notice of appeal or cross appeal within the set time period, or files a notice which does not overcome all the reasons for non-compliance stated in the notification of the reasons for non-compliance, that appellant’s appeal or cross appeal will stand dismissed.
An appeal cannot be taken by parties to the reexamination until a Right of Appeal Notice (RAN) has been issued. Once a RAN has been issued, the patent owner and any third party requester will have, in accordance with 37 CFR 1.953, a time period of one month or thirty days (whichever is longer) to file a notice of appeal (with the fee set forth in 37 CFR 41.20(b)(1)). Pursuant to 37 CFR 41.61(e), the time for filing a notice of appeal may not be extended.
In the event that no party to the reexamination files a timely notice of appeal, the prosecution of the reexamination proceeding will be terminated, with the examiner issuing a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC); see MPEP § 2687. However, if one of the parties does file a notice of appeal within the one month/thirty day period, an opposing party can enter into the appeal by filing a notice of cross appeal pursuant to 37 CFR 41.61(b) within fourteen (14) days from service of the first party’s notice of appeal, see MPEP § 2674.01. Pursuant to 37 CFR 41.61(e), the time for filing a notice of cross appeal may not be extended.
Note that a requester is not entitled to file an appeal or cross appeal for proposed rejections which were determined to not raise a substantial new question of patentability or a reasonable likelihood of prevailing. Such as decision is final and nonappealable. See 35 U.S.C. 312(c) and 37 CFR 1.927.
The procedure for taking appeal is referenced in 37 CFR 1.959 and set forth in 37 CFR 41.61.
(A) The notice of appeal must identify the appealed claim(s).
(B) The appeal must be taken from (1) the rejection(s) of the claims in the Right of Appeal Notice (RAN) which the patent owner proposes to contest, or (2) the finding(s) of patentability of claims in the RAN which the third party requester proposes to contest. Therefore:
A notice of appeal by the patent owner must identify each claim rejected by the examiner that the patent owner intends to contest; A notice of appeal by a third party requester must identify each rejection that was previously proposed which the third party requester intends to contest. It is not sufficient to merely appeal from the allowance of a claim (i.e., the examiner’s finding of a claim patentable); the third party requester must identify each previously proposed rejection to be contested.
(C) The notice of appeal must be signed by the patent owner or the third party requester, or their duly authorized attorney or agent.
“Appellant” and “respondent” are defined in 37 CFR 41.60. Where the patent owner appeals from the rejection of the claims, a third party requester responding to the patent owner’s appeal is termed the respondent as to the rejected claims. Where a third party requester appeals from a favorable determination with respect to the claims, the patent owner responding to the third party requester’s appeal is termed the respondent as to the favorable determination.
Where a party fails to file a timely notice of appeal or notice of cross appeal, that party may no longer
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file an appellant brief to appeal a claim determination adverse to that party.
A party is permitted to file a respondent brief in accordance with 37 CFR 41.66(b) and 41.68 (with the fee as required by 37 CFR 41.68(a)), to respond to issues raised by an opposing party’s appellant brief. The respondent’s brief may include any arguments previously made of record that support the examiner’s finding with respect to any claim addressed in the opposing party’s appellant brief. See MPEP § 2675.01.
Where a notice of appeal or notice of cross appeal is timely filed but is defective, e.g., missing fee or missing portion of the fee, no proof of service is included, it is signed by an inappropriate party or is unsigned, failure to identify the appealed claims; 37 CFR 41.61(f) provides the appropriate party one opportunity to file, within a nonextendable period of one month, an amended notice of appeal or cross appeal that corrects the defect(s). Form PTOL-2067 should be used to provide the notification.
Where a notice of appeal or notice of cross appeal is filed before a RAN has been issued, the appropriate party will be notified in writing that the appeal is not acceptable. The paper will be placed in the file but it will not be considered at all in the proceeding, other than to inform the party that the appeal is not acceptable.
It should be noted that under 37 CFR 41.63(a), amendments filed after the date of filing an appeal (under 37 CFR 41.61) canceling claims may be admitted, where such cancellation does not affect the scope of any other pending claim in the proceeding. However, as to all other amendments filed after the date of filing an appeal, 37 CFR 41.63(b) states that such amendments will not be admitted except as permitted where the patent owner takes action for reopening prosecution under 37 CFR 41.77(b)(1). Also, under 37 CFR 41.63(c), affidavits, declarations, or exhibits submitted after the date of filing an appeal will not be admitted except as permitted by reopening prosecution under 37 CFR 41.77(b)(1).
Effective August 17, 2010, the Board was delegated the sole responsibility for determining whether
appeal briefs (i.e., appellant’s brief, respondent’s brief, and rebuttal briefs) filed in inter partes reexamination proceedings comply with 37 CFR 1.943(c) and 37 CFR 41.67, 41.68, or 41.71. The Board completes the determination before the appeal briefs are forwarded to the examiner for consideration. If the appeal brief is determined to be compliant with the rules or it contains only minor informalities that do not affect the Board panel’s ability to render a decision, the Board will accept the appeal brief and forward it to the examiner for consideration. If the Board determines that the appeal brief is non-compliant with the rules and sends the party a notice of non-compliant brief requiring a corrected brief, the party will be required to file a corrected brief within the time period set forth in the notice to avoid the dismissal of the appeal. The Board will also have the sole responsibility for determining whether corrected briefs comply with 37 CFR 1.943(c) and 41.67,41.68, or 41.71, and will address any inquiries and petitions regarding page limits for briefs, entry of briefs or notices of non-compliant briefs.
Once an appeal brief is accepted by the Board, the appeal brief will not later be held as defective by the CRU or the examiner. The Board will not return or remand the proceeding to the examiner for issues related to a non-compliant appeal brief. Furthermore, examiners are not required to review appeal briefs for the purposes of determining whether the appeal briefs comply with 37 CFR 1.943(c) and 41.67, 41.68, or 41.71. Accordingly, the Inter Partes Reexamination Notification re Brief (PTOL-2073) and form paragraphs for holding an appeal brief defective are no longer available in OACS for the Examining Corps to use.
The revised procedure for appeal brief review took effect on August 17, 2010, regardless of the date on which the appeal brief is filed or forwarded to the examiner for consideration. Examiners should no longer hold any appeal briefs defective including those appeal briefs that are already on the examiners' dockets, because they have already been reviewed and accepted. Furthermore, the Board will correspond directly with the parties on non-compliant brief issues.
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The responsibility of the Board for determining whether appeal briefs comply with the appropriate rules is not considered a transfer of jurisdiction when an appeal brief is filed, but rather is only a transfer of the specific responsibility of notifying parties of the reasons for non-compliance. The CRU retains the jurisdiction over the reexamination proceeding to consider the appeal briefs, conduct an appeal conference, draft an examiner’s answer, and decide the entry of amendments, evidence, and information disclosure statements filed after the Right of Appeal Notice (RAN) or after the filing of a notice of appeal. Furthermore, petitions concerning the refusal to enter amendments and/or evidence remain delegated according to MPEP §§ 1002.02(b) and (c). The jurisdiction of the inter partes reexamination proceeding is transferred to the Board when a docketing notice is entered after the time period for filing the last rebuttal brief (if appropriate) expires or the examiner acknowledges the receipt and entry of the last rebuttal brief.
2674.01 Cross Appeal After Original Appeal [R-11.2013]
37 CFR 41.61 Notice of appeal and cross appeal to Board. *****
(b)(1) Within fourteen days of service of a requester’s notice of appeal under paragraph (a)(2) of this section and upon payment of the fee set forth in § 41.20(b)(1), an owner who has not filed a notice of appeal may file a notice of cross appeal with respect to the final rejection of any claim of the patent.
(2) Within fourteen days of service of an owner’s notice of appeal under paragraph (a)(1) of this section and upon payment of the fee set forth in § 41.20(b)(1), a requester who has not filed a notice of appeal may file a notice of cross appeal with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent.
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The cross appeal provision of 37 CFR 41.61(b) permits a party to the reexamination to wait and see if an opposing party will appeal, before committing to the appeal process.
Within fourteen days of service of a third party requester’s notice of appeal, a patent owner who has not filed a notice of appeal, may file a notice of cross appeal, the cross appeal being with respect to any
final decision (i.e., decision in the RAN) adverse to the patentability of any claim of the patent. Pursuant to 37 CFR 41.61(e), the time for filing the patent owner’s notice of cross appeal may not be extended.
Within fourteen days of service of a patent owner’s notice of appeal, a third party requester who has not filed a notice of appeal may file a notice of cross appeal, the cross appeal being with respect to any final decision (i.e., decision in the RAN) favorable to the patentability of any claim of the patent. Pursuant to 37 CFR 41.61(e), the time for filing the requester’s notice of cross appeal may not be extended.
Where the notice of cross appeal is timely filed but is defective, e.g., missing fee or missing portion of the fee, no proof of service, signed by an inappropriate party or unsigned, failure to identify the appealed claims; 37 CFR 41.61(f) provides the appropriate party one opportunity to file, within a non-extendable period of one month, an amended notice of cross appeal that corrects the defect(s).
Where there are more than two parties to the proceeding, i.e., the patent owner and more than one
inter partes third party requester in a merged proceeding, then a third party cross appeal must be filed within fourteen days of service of a patent owner’s notice of appeal. If a first third party requester filed an appeal later than the patent owner’s appeal, then the second third party requester’s time for cross appeal runs from the earlier-in-time patent owner appeal, not from the later-in-time first requester appeal.
In addition, 37 CFR 41.61(b) only provides for a cross appeal from a “notice of appeal,” not from a “notice of cross appeal.” Thus, if the patent owner files a notice of cross appeal after the original one month/thirty days period for appeal has expired, but within the fourteen days of a first requester’s appeal (which was filed within the original period); a second third party requester does not have fourteen days from the patent owner’s cross appeal. In such a situation, the time for the second requester to appeal (the original one month/thirty days) has expired and the second requester cannot appeal.
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The content of a notice of cross appeal is the same as that for a notice of appeal, except that the notice of cross appeal is titled as such and identifies the original appeal from which the cross appeal is taken. Where a party inadvertently fails to title or identify a notice of cross appeal as such (i.e., the format for an original appeal is used), in an appeal filed after the original one month/thirty days has expired but before the “fourteen days” have expired, the examiner will construe the notice of appeal as the filing of a notice of cross appeal timely filed within the fourteen days.
2675 Appellant Brief [R-07.2015]
37 CFR 41.66 Time for filing briefs.
(a) An appellant’s brief must be filed no later than two months from the latest filing date of the last-filed notice of appeal or cross appeal or, if any party to the proceeding is entitled to file an appeal or cross appeal but fails to timely do so, no later than two months from the expiration of the time for filing (by the last party entitled to do so) such notice of appeal or cross appeal. The time for filing an appellant’s brief or an amended appellant’s brief may not be extended.
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37 CFR 41.67 Appellant’s brief.
(a)(1) Appellant(s) may once, within time limits for filing set forth in § 41.66, file a brief and serve the brief on all other parties to the proceeding in accordance with § 1.903 of this title.
(2) The brief must be signed by the appellant, or the appellant’s duly authorized attorney or agent and must be accompanied by the requisite fee set forth in § 41.20(b)(2).
(b) An appellant’s appeal shall stand dismissed upon failure of that appellant to file an appellant’s brief, accompanied by the requisite fee, within the time allowed under § 41.66(a).
(c)(1) The appellant’s brief shall contain the following items under appropriate headings and in the order indicated in paragraphs (c)(1)(i) through (c)(1)(xi) of this section.
(i) Real party in interest. A statement identifying by name the real party in interest.
(ii) Related appeals, interferences, and trials. A statement identifying by application, patent, appeal or interference number all other prior and pending appeals, interferences or judicial proceedings known to appellant, the appellant’s legal representative, or assignee which may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal. Copies of any decisions rendered by a court or the Board in any proceeding identified under this paragraph must be included in an appendix as required by paragraph (c)(1)(xi) of this section.
(iii) Status of claims. A statement of the status of all the claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled). If the appellant is the owner, the appellant must also identify the rejected claims whose rejection is being appealed. If the appellant is a requester, the appellant must identify the claims that the examiner has made a determination favorable to patentability, which determination is being appealed.
(iv) Status of amendments. A statement of the status of any amendment filed subsequent to the close of prosecution.
(v) Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the independent claims involved in the appeal, which shall refer to the specification by column and line number, and to the drawing(s), if any, by reference characters. For each independent claim involved in the appeal and for each dependent claim argued separately under the provisions of paragraph (c)(1)(vii) of this section, every means plus function and step plus function as permitted by 35 U.S.C. 112(f), must be identified and the structure, material, or acts described in the specification as corresponding to each claimed function must be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters.
(vi) Issues to be reviewed on appeal. A concise statement of each issue presented for review. No new ground of rejection can be proposed by a third party requester appellant, unless such ground was withdrawn by the examiner during the prosecution of the proceeding, and the third party requester has not yet had an opportunity to propose it as a third party requester proposed ground of rejection.
(vii) Argument . The contentions of appellant with respect to each issue presented for review in paragraph (c)(1)(vi) of this section, and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the record relied on. Any arguments or authorities not included in the brief permitted under this section or §§ 41.68 and 41.71 will be refused consideration by the Board, unless good cause is shown. Each issue must be treated under a separate heading. If the appellant is the patent owner, for each ground of rejection in the Right of Appeal Notice which appellant contests and which applies to two or more claims, the claims may be argued separately or as a group. When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. Any claim argued separately should be placed under a subheading identifying the claim by number. Claims argued as a group should be placed under a subheading identifying the claims by number. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.
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(viii) Claims appendix. An appendix containing a copy of the claims to be reviewed on appeal.
(ix) Evidence appendix . An appendix containing copies of any evidence submitted pursuant to §§ 1.130, 1.131, or 1.132 of this title or of any other evidence entered by the examiner and relied upon by appellant in the appeal, along with a statement setting forth where in the record that evidence was entered in the record by the examiner. Reference to unentered evidence is not permitted in the brief. See § 41.63 for treatment of evidence submitted after appeal. This appendix may also include copies of the evidence relied upon by the examiner in any ground of rejection to be reviewed on appeal.
(x) Related proceedings appendix. An appendix containing copies of decisions rendered by a court or the Board in any proceeding identified pursuant to paragraph (c)(1)(ii) of this section.
(xi) Certificate of service. A certification that a copy of the brief has been served in its entirety on all other parties to the reexamination proceeding. The names and addresses of the parties served must be indicated.
(2) A brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence after the date of filing the appeal.
(d) If a brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (c) of this section, appellant will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If appellant does not file an amended brief within the set time period, or files an amended brief which does not overcome all the reasons for non-compliance stated in the notification, that appellant’s appeal will stand dismissed.
In order to file an appellant brief, it is necessary to have first filed a timely and proper notice of appeal or notice of cross appeal; see MPEP §§ 2674 and 2674.01. Each party that filed a timely and proper notice of appeal or notice of cross appeal must then file its appellant brief with fee (set forth in 37 CFR 41.20(b)(2)) by the later of the following periods:
(A) no later than two months from the date of the last-filed notice of appeal or cross appeal; or
(B) if a patent owner or third party requester is entitled to file an appeal or cross appeal but fails to timely do so, no later than two months from the expiration of the time for filing (by the last party entitled to do so) such notice of appeal or cross appeal. Note that a party is not always entitled to file an appeal or cross appeal. See MPEP §§ 2674 and 2674.01.
The time for filing an appellant brief may not be extended. 37 CFR 41.66(a).
Pursuant to 37 CFR 41.67(d), if a brief is filed which does not comply with all the requirements of 37 CFR 41.67(a) and (c), appellant will be notified and given a nonextendable period of one month within which to file an amended brief to correct the defect(s). Failure to timely file the appellant brief and fee within the time allowed will result in dismissal of the appeal of the party that failed to take the timely action. Note that if an appellant brief is late, or if an amended appellant brief is not submitted after a requirement to correct the defect(s), the respondent brief will be placed in the file; however, it will be marked as “not entered” since it is not formally received into the record, and it will not be considered. The same is true for an amended appellant brief which is late.
Where all parties who filed an appeal or cross appeal fail to timely file an appellant brief and fee within the time allowed, the prosecution of the reexamination proceeding is terminated by a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC), and a certificate is issued indicating the status of the claims at the time of appeal.
The appellant brief, as well as every other paper relating to an appeal, should indicate the number of the Central Reexamination Unit (CRU) Art Unit to which the reexamination is assigned and the reexamination control number. When an appellant brief is received, it is scanned and then entered into the file by the CRU support staff.
A fee as set forth in 37 CFR 41.20(b)(2) is required when the appellant brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a). 37 CFR 41.67(c)(1) requires that the appellant shall provide, in the appellant brief, the authorities and arguments on which the appellant will rely to maintain the appeal, a concise explanation of subject matter defined in each of the independent claims involved in the appeal which explanation must refer to the specification by column and line number (and to the drawing, if any, by reference characters), an evidence appendix, a related proceedings appendix, and a copy of the claims involved. The copy of the
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claims (involved in the appeal) required in the claim appendix by 37 CFR 41.67(c)(1)(viii) should be a clean copy. The clean copy must include all brackets and underlining as required by 37 CFR 1.530(d) et seq.; thus, the copy of the claims on appeal must include all underlining and bracketing necessary to reflect the changes made to the original patent claims throughout the prosecution of the reexamination. In addition, any new claims added in the reexamination must be completely underlined. For the sake of convenience, the copy of the claims involved should start on a new page, and it should be double spaced.
The provisions of 37 CFR 41.67(c) should be carefully reviewed to ensure that a complete appellant brief is provided. Patent owners are reminded that their briefs in appeal cases must be responsive to every ground of rejection stated by the examiner which the patent owner-appellant contests. Third party requesters are reminded that their briefs in appeal cases must be responsive to each examiner determination of patentability (determination of inapplicability of a proposed rejection) which the third party requester-appellant contests. Oral argument at the hearing will not remedy such a deficiency in the appellant brief.
Where the appellant brief is not complete as to the provisions of 37 CFR 41.67(a) and (c), appellant will be notified (in accordance with 37 CFR 41.67(d) ) and will be given one (1) month to correct the defect(s) by filing an amended appellant brief.
Examiners are not required to make any determination whether fewer than all of the rejected claims are identified by the party as being appealed. If the notice of appeal or appeal brief identifies fewer than all of the rejected claims as being appealed, the issue will be addressed by the Board panel. The examiner will treat all pending claims in the proceeding as being on appeal.
It is essential that the Board should be provided with a brief fully stating the position of the appellant with respect to each issue involved in the appeal so that no search of the record is required in order to determine that position. The fact that appellant may consider a ground or determination to be clearly improper does not justify a failure on the part of the
appellant to point out to the Board the argument, i.e., reasons, for that view. A distinction must be made between the lack of any argument and the presentation of arguments which carry no conviction. In the former case, dismissal is in order, while in the latter case a decision on the merits is made, although it may well be merely an affirmance based on the grounds or determination relied upon by the examiner.
Ignoring or acquiescing in any rejection or determination, even one based upon formal matters which could be corrected by subsequent amendments, will invite a dismissal of the appeal as to the appropriate party. The prosecution of the reexamination proceedings will be considered terminated as of the date of the dismissal of the appeal of all parties who filed an appeal or cross appeal.
AMENDMENTS, AFFIDAVITS, DECLARATIONS, OR EXHIBITS
Pursuant to 37 CFR 41.67(c)(2), the brief is not to include any (A) new or non-admitted (non-entered) amendment, or (B) new or non-admitted (non-entered) affidavit or other evidence.
Pursuant to 37 CFR 41.63:
(A) Amendments filed after the date of filing an appeal (under 37 CFR 41.61) canceling claims may be admitted, where such cancellation does not affect the scope of any other pending claim in the proceeding;
(B) All other amendments filed after the date of filing an appeal will not be admitted, except as permitted where the patent owner takes action for reopening prosecution under 37 CFR 41.77(b)(1);
(C) Affidavits or other evidence filed after the date of filing an appeal will not be admitted, except as permitted where the patent owner takes action for reopening prosecution under 37 CFR 41.77(b)(1).
If the examiner wishes to have the patent owner provide an amendment (other than cancellation of claims as discussed above) or evidence during the appeal stage, the examiner must (A) reopen prosecution, (B) accept the amendment or evidence for entry, (C) permit timely comment on the new
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amendment or evidence by the third party requester, and (D) then issue a new Action Closing Prosecution (ACP). See MPEP § 2673.01.
2675.01 Respondent Brief [R-07.2015]
37 CFR 41.66 Time for filing briefs. *****
(b) Once an appellant’s brief has been properly filed, any brief must be filed by respondent within one month from the date of service of the appellant’s brief. The time for filing a respondent’s brief or an amended respondent’s brief may not be extended.
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37 CFR 41.68 Respondent’s brief.
(a)(1) Respondent(s) in an appeal may once, within the time limit for filing set forth in § 41.66, file a respondent brief and serve the brief on all parties in accordance with § 1.903 of this title.
(2) The brief must be signed by the party, or the party’s duly authorized attorney or agent, and must be accompanied by the requisite fee set forth in § 41.20(b)(2).
(3) The respondent brief shall be limited to issues raised in the appellant brief to which the respondent brief is directed.
(4) A requester’s respondent brief may not address any brief of any other requester.
(b)(1) The respondent brief shall contain the following items under appropriate headings and in the order here indicated, and may include an appendix containing only those portions of the record on which reliance has been made.
(i) Real Party in Interest. A statement identifying by name the real party in interest.
(ii) Related Appeals, Interferences, and trials. A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences or judicial proceedings known to respondent, the respondent’s legal representative, or assignee which may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal. Copies of any decisions rendered by a court or the Board in any proceeding identified under this paragraph must be included in an appendix as required by paragraph (b)(1)(ix) of this section.
(iii) Status of claims. A statement accepting or disputing appellant’s statement of the status of claims. If appellant’s statement of the status of claims is disputed, the errors in appellant’s statement must be specified with particularity.
(iv) Status of amendments. A statement accepting or disputing appellant’s statement of the status of amendments. If appellant’s statement of the status of amendments is disputed, the errors in appellant’s statement must be specified with particularity.
(v) Summary of claimed subject matter. A statement accepting or disputing appellant’s summary of the subject matter defined in each of the independent claims involved in the appeal. If appellant’s summary of the subject matter is disputed, the errors in appellant’s summary must be specified.
(vi) Issues to be reviewed on appeal. A statement accepting or disputing appellant’s statement of the issues presented for review. If appellant’s statement of the issues presented for review is disputed, the errors in appellant’s statement must be specified. A counter statement of the issues for review may be made. No new ground of rejection can be proposed by a requester respondent.
(vii) Argument. A statement accepting or disputing the contentions of appellant with each of the issues presented by the appellant for review. If a contention of the appellant is disputed, the errors in appellant’s argument must be specified, stating the basis therefor, with citations of the statutes, regulations, authorities, and parts of the record relied on. Each issue must be treated under a separate heading. An argument may be made with each of the issues stated in the counter statement of the issues, with each counter-stated issue being treated under a separate heading.
(viii) Evidence appendix . An appendix containing copies of any evidence submitted pursuant to §§ 1.130, 1.131, or 1.132 of this title or of any other evidence entered by the examiner and relied upon by respondent in the appeal, along with a statement setting forth where in the record that evidence was entered in the record by the examiner. Reference to unentered evidence is not permitted in the respondent’s brief. See § 41.63 for treatment of evidence submitted after appeal.
(ix) Related proceedings appendix. An appendix containing copies of decisions rendered by a court or the Board in any proceeding identified pursuant to paragraph (b)(1)(ii) of this section.
(x) Certificate of service. A certification that a copy of the respondent brief has been served in its entirety on all other parties to the reexamination proceeding. The names and addresses of the parties served must be indicated.
(2) A respondent brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence filed after the date of filing the appeal.
(c) If a respondent brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (b) of this section, respondent will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If respondent does not file an amended respondent brief within the set time period, or files an amended respondent brief which does not overcome all the reasons for non-compliance stated in the notification, the respondent brief and any amended respondent brief by that respondent will not be considered.
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After an appellant brief has been properly filed, a party opposing the appellant may file a respondent brief in support of the claim determination(s) made in the Right of Appeal Notice (RAN) which are in favor of the opposing party. If an appellant brief was not properly filed and a notice of non-compliance is mailed to the appellant, the party opposing the appellant may file a respondent brief within one month from the date of service of the amended appellant’s brief filed in response to the non-compliance notice. The respondent brief must, however, be limited to issues raised in the appellant brief to which the respondent brief is directed or to the examiner’s position. 37 CFR 41.68(a)(3). The respondent’s brief may include any arguments previously made of record that support the examiner’s findings with respect to any claim addressed in the opposing party’s appellant brief. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 109 USPQ2d 1599, 1603 (Fed. Cir. 2014) (“Tempo has the right to defend the examiner's final decision on any ground supported by the record,” citing Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 1356, 105 USPQ2d 1727 (Fed. Cir. 2013)).
The respondent brief must be accompanied by the requisite fee set forth in 37 CFR 41.20(b)(2), and it must be filed within one month from the date of service of the appellant brief on the opposing party.
Pursuant to 37 CFR 41.66(b), the time for filing a respondent brief may not be extended. If a respondent brief is filed which does not comply with all the requirements of 37 CFR 41.68(a) and (b), respondent will be notified and given a nonextendable period of one month within which to file an amended brief to correct the defect(s). See 37 CFR 41.68(c). Failure to timely file a respondent brief and fee (or failure to timely complete the respondent brief, where it is noted as being incomplete under 37 CFR 41.68(c)) will result in the respondent brief not being considered. Note that if the respondent brief is late, or if an amended respondent brief is not submitted after a requirement to correct the defect(s) (following a timely respondent brief), the respondent brief will be placed in the file; however, it will be marked as “not entered” since it is not formally received into the record, and it will not be considered. The same is true for an amended respondent brief which is late.
It should be noted that where a party fails to file a timely notice of appeal or notice of cross appeal, that party may no longer file an appellant brief to appeal a claim determination adverse to that party; however, that party is permitted to file a respondent brief in accordance with 37 CFR 41.66(b).
A fee as set forth in 37 CFR 41.20(b)(2) is required when the respondent brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a). The respondent brief should indicate the number of the Central Reexamination Unit (CRU) Art Unit to which the reexamination is assigned and the reexamination control number. A statement of what in the appellant brief is accepted and what is disputed must be provided in the respondent brief. Respondent must set forth the authorities and arguments upon which he/she will rely to dispute the contentions of the appellant with respect to the issues.
The provisions of 37 CFR 41.68(a) and (b) should be carefully reviewed to ensure that a complete respondent brief is provided. Where the respondent brief is not complete as to the provisions of 37 CFR 41.68(a) and (b), respondent will be notified (in accordance with 37 CFR 41.68(c)) and will be given a non-extendable period of one month to correct the defect(s) by filing an amended respondent brief.
2675.02 Informalities in One or More of the Briefs [R-11.2013]
37 CFR 41.67 Appellant’s brief. *****
(d) If a brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (c) of this section, appellant will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If appellant does not file an amended brief within the set time period, or files an amended brief which does not overcome all the reasons for non-compliance stated in the notification, that appellant’s appeal will stand dismissed.
*****
37 CFR 41.68 Respondent’s brief. *****
(c) If a respondent brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (b) of this section, respondent will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If respondent does not file an
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§ 2675.02OPTIONAL INTER PARTES REEXAMINATION
amended respondent brief within the set time period, or files an amended respondent brief which does not overcome all the reasons for non-compliance stated in the notification, the respondent brief and any amended respondent brief by that respondent will not be considered.
Where an appellant or respondent brief does not comply with all the requirements of 37 CFR 41.67(a) and (c) or 37 CFR 41.68(a) and (b), respectively, such as missing fee or missing portion of the fee, a missing signature, inappropriate signature, less than three copies of the brief, no proof of service on a party; the appropriate party should be notified by the Board of the reasons for non-compliance and provided with a nonextendable period of one month within which to file an amended brief. A separate notification will be sent to each party, where the brief(s) of more than one party are non-compliant and/or defective. Where the same party’s appellant and respondent briefs are both informal, the Board may combine the notifications for both into one notification paper.
If an appellant does not file an amended appellant brief during the one-month period, or files an amended brief which does not overcome all the reasons for non-compliance or does not correct all defects stated in the notification, the appeal will stand dismissed as to that party.
If a respondent does not file an amended respondent brief during the one-month period, or files an amended brief which does not overcome all the reasons for non-compliance or does not correct all defects stated in the notification, the respondent brief will not be formally received into the record and will not be considered (though it will be placed in the file).
Where a party does timely file an amended brief and overcomes all the reasons for non-compliance and corrects all defects stated in the notification, the amended brief will be entered and will be considered along with the original appellant or respondent brief, when the case is taken up by the examiner. After a party has filed an amended appellant brief correcting the defect(s), the other party is not permitted to file a responsive amended respondent brief, if the amended appellant brief correcting the defect(s) is directed to form and does not go to the merits of the case. This would be the case, for example, where
the failure to provide a signature or a certificate of service is corrected.
2676 Appeal Conference [R-07.2015]
All appellant and respondent briefs will be processed by the Board and the reexamination proceeding then forwarded to the Central Reexamination Unit (CRU). The CRU will forward the reexamination proceeding to the examiner after all appellant and respondent briefs have been filed or after the time for filing them has expired.
As long as at least one timely appellant brief has been filed, the case must be considered for appeal by the examiner. The examiner should then formulate an initial opinion as to whether an examiner’s answer should be prepared, or prosecution should be reopened and a non-final Office action issued.
If the examiner reaches the conclusion that the appeal should go forward and an examiner’s answer should be prepared, the examiner will arrange (via the CRU Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS)) for an appeal conference to be conducted pursuant to the procedures set forth in MPEP § 1207.01. In preparing for the appeal conference, the examiner should review the case so that he/she will be prepared to discuss the issues raised in all the briefs. The examiner should be prepared to propose to the conferees how he/she will address each issue raised in the appellant and respondent briefs. The appeal conference will be held in accordance with the procedures as set forth in MPEP § 1207.01.
If the examiner reaches the conclusion that the appeal should not go forward, no appeal conference is held. Prosecution is reopened, and the examiner issues a new non-final Office action.
See MPEP § 2638 for the appropriate code to use for reporting time spent with respect to the appeal conference.
2677 Examiner’s Answer [R-07.2015]
37 CFR 41.69 Examiner’s answer.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2676
(a) The primary examiner may, within such time as directed by the Director, furnish a written answer to the owner’s and/or requester’s appellant brief or respondent brief including, as may be necessary, such explanation of the invention claimed and of the references relied upon, the grounds of rejection, and the reasons for patentability, including grounds for not adopting any proposed rejection. A copy of the answer shall be supplied to the owner and all requesters. If the primary examiner determines that the appeal does not comply with the provisions of §§ 41.61, 41.66, 41.67 and 41.68 or does not relate to an appealable action, the primary examiner shall make such determination of record.
(b) An examiner’s answer may not include a new ground of rejection.
(c) An examiner’s answer may not include a new determination not to make a proposed rejection of a claim.
(d) Any new ground of rejection, or any new determination not to make a proposed rejection, must be made in an Office action reopening prosecution.
Where the term “brief” is used in this section, it shall refer to any appellant briefs and/or respondent briefs in the reexamination proceeding, unless specific identification of an “appellant brief” or a “respondent brief” is made.
Before preparing an examiner’s answer, the examiner should make certain that all amendments approved for entry have in fact been physically entered by the Central Reexamination Unit (CRU). The clerk of the Board will return to the CRU any reexamination proceeding in which approved amendments have not been entered.
The examiner should furnish each party to the reexamination (even a party that has not filed an appellant nor respondent brief) with a comprehensive examiner’s answer that provides a written statement in answer to each appellant brief and each respondent brief. The examiner’s answer is to be completed by the examiner within two weeks after the appeal conference. After the answer is completed (and signed), the examiner obtains the initials of the appeal conference participants (the conferees) and then forwards the reexamination file with the answer to the CRU Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS). The CRU SPRS/TC QAS reviews the answer, and if the answer is in order, forwards the reexamination file with the answer to the CRU technical support staff.
The examiner’s answer may incorporate from any of the briefs the most accurate and most comprehensive information. It should contain a response to the allegations or arguments made in all of the briefs and should call attention to any errors in an appellant’s copy of the claims. If a ground of rejection or reason for patentability is not addressed in the examiner’s answer, the proceeding will be remanded by the Board to the examiner.
The examiner should report his/her conclusions on any affidavits, declarations, or exhibits that were admitted to the record. Any affidavits or declarations in the file swearing behind a patent should be clearly identified by the examiner as being considered under either 37 CFR 1.131(a) or 37 CFR 41.154(a). The distinction is important since the Board will usually consider holdings on 37 CFR 1.131(a) affidavits or declarations but not holdings on 37 CFR 41.154(a) affidavits or declarations in appeal cases.
It sometimes happens that an examiner will state a position (e.g., reasoning) in the answer in a manner that represents a shift from the position stated in the Right of Appeal Notice (RAN). In such a case, the answer must indicate that the last stated position supersedes the former.
If there is a complete and thorough development of the issues at the time of the RAN, it is possible to save time in preparing the examiner’s answer. Examiners may incorporate in the answer their statement of the grounds of rejection or determinations of patentability merely by reference to the RAN. The page(s) and paragraph(s) of the RAN which it is desired to incorporate by reference should be explicitly identified. If the examiner feels that further explanation is necessary, he/she should include it in the answer. The examiner’s answer should also include rebuttal of any and all arguments presented in all of the briefs.
All correspondence with the Board, whether by the examiner or an appellant or respondent, must be on the record. No unpublished decisions which are unavailable to the general public by reason of 35 U.S.C. 122 can be cited by the examiner or the parties.
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§ 2677OPTIONAL INTER PARTES REEXAMINATION
The examiner should reevaluate his/her position in the light of the arguments presented in the briefs, and should expressly withdraw any rejections or determinations of patentability not adhered to. Such a withdrawal would be a new finding of patentability (determination not to make a rejection) or new ground of rejection, respectively. Pursuant to 37 CFR 41.69(b), an examiner’s answer “may not include a new ground of rejection.” Pursuant to 37 CFR 41.69(c), an examiner’s answer “may not include a new determination not to make a proposed rejection of a claim.” Accordingly, prosecution must be reopened for any withdrawal of a rejection or of a determination of patentability. Before issuing the action reopening prosecution, the examiner will consult with his or her CRU SPRS to discuss at what point in the prosecution the prosecution should be reopened, and then the examiner will prepare an appropriate Office action. Note that the examiner may withdraw theAction Closing Prosecution (ACP) and reopen prosecution at any time prior to the mailing of the examiner’s answer.
Examiners should no longer hold any appeal briefs defective including those appeal briefs that are already on the examiner’s dockets, because they have already been reviewed by the Board and accepted. See MPEP § 2674. In a rare situation where an appeal brief contains serious defects that will prevent the examiner from drafting an examiner’s answer, the examiner should report the issue to the Director of CRU who will communicate with the Board regarding the issue.
In addition, examiners are not required to make any determination whether fewer than all of the rejected claims are identified by the party as being appealed. If the notice of appeal or appeal brief identifies fewer than all of the rejected claims as being appealed, the issue will be addressed by the Board panel. The examiner will treat all pending claims in the proceeding as being on appeal.
In a situation where at least two adverse parties filed an appeal brief in the inter partes reexamination proceeding (e.g., the patent owner filed an appellant’s brief and the third-party requester filed a respondent’s brief), most of the time the issues have been completely developed by the examiner in the RAN and by both parties in their briefs, and
additional briefing from the examiner is not necessary for the Board panel to decide the issues. Therefore, examiners may use the new PTOL-2291 form (“ Inter Partes Reexamination Examiner’s Answer”) to incorporate by reference the RAN including the grounds of rejection and determinations not to make a proposed rejection set forth in the RAN, in a proceeding where at least two adverse parties filed an appeal brief. With the approval of the CRU Director, examiners may provide additional explanation as an attachment to the form PTOL-2291. For situations other than where at least two adverse parties have filed an appeal brief, examiners are encouraged to incorporate in the examiner’s answer their statements of the grounds of rejection and determinations not to make a proposed rejection set forth in the RAN. Examiners are reminded that no new ground of rejection and no new determination not to make a proposed rejection are permitted in an examiner’s answer.
If the examiner requests to be present at the oral hearing, the request must be set forth in a separate letter as noted in MPEP § 1209.
MPEP §§ 1207 - 1207.05 relate to preparation of examiner’s answers on appeal in patent applications and ex parte reexamination proceedings.
All examiner’s answers in inter partes reexamination proceedings must comply with the guidelines set forth below.
I. REQUIREMENTS FOR EXAMINER’SANSWER
The examiner may incorporate from any of the briefs information required for the examiner’s answer, as needed to provide accurate and comprehensive information. The examiner’s answer must include, in the order indicated, the following items. Again, the term “brief” or “briefs” shall refer to any appellant briefs and/or respondent briefs in the reexamination proceeding, unless specific identification of an “appellant brief” or a “respondent brief” is made.
(A) Real Party in Interest. For each appellant and respondent brief, a statement by the examiner acknowledging the identification by name of the real party in interest.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2677
(B) Related Appeals and Interferences. A statement identifying by application, patent, appeal or interference number all other prior and pending appeals, interferences or judicial proceedings known to the examiner which may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal. Copies of any decisions rendered by a court or the Board in any proceeding identified under this paragraph should be included in the “Related Proceedings Appendix” section.
(C) Status of Claims. A statement of whether the examiner agrees or disagrees with the statement of the status of claims contained in the briefs. If the examiner disagrees with the statement of the status of claims contained in the briefs, the examiner must set forth a correct statement of the status of all the claims in the proceeding.
(D) Status of Amendments. A statement of whether the examiner agrees or disagrees with the statement of the status of amendments contained in any of the briefs, and an explanation of any disagreement with any of the briefs. If there are no amendments, the examiner shall so state.
(E) Summary of Claimed Subject Matter. A statement of whether the examiner agrees or disagrees with the summary of claimed subject matter contained in the briefs and an explanation of any disagreement.
(F)(1) Grounds of Rejection to be Reviewed on Appeal. A statement of whether the examiner agrees or disagrees with the statement of the grounds of rejection to be reviewed set forth in the briefs and an explanation of any disagreement. In addition, the examiner must include the following subheadings (and state “None” where appropriate):
(a) “Grounds of Rejection Not On Review” - a listing of all grounds of rejection that have not been withdrawn and have not been presented by an appellant for review in the brief; and
(b) “Non-Appealable Issues” - a listing of any non-appealable issues in the briefs.
(2) Findings of Patentability to be Reviewed on Appeal. A statement of whether the examiner agrees or disagrees with the statement of the findings of patentability to be reviewed set forth in the briefs and an explanation of any disagreement. In addition,
the examiner must include the following subheadings (and state “None” where appropriate):
(a) “Findings of Patentability Not On Review” - a listing of all findings of patentability that have not been presented by an appellant for review in the brief; and
(b) “Non-Appealable Issues” - a listing of any non-appealable issues raised by the requester in the briefs.
(G) Claims Appendix. A statement of whether the copy of the appealed claims contained in the appendix to the appellant briefs is correct, and if any claim is not correct in any of the briefs, a copy of the correct claim.
(H) Evidence Relied Upon . A listing of the evidence relied on (e.g., patents, publications, Official Notice, admitted prior art), and, in the case of nonpatent references, the relevant page or pages. Note that new references cannot be applied in an examiner’s answer. 37 CFR 41.69(b). If new references are to be applied, prosecution must be reopened. Also note that both the art relied upon by the examiner in making rejections, and the art relied upon by the third party requester in the proposed rejections, will be listed by the examiner.
(I) Grounds of Rejection. For each ground of rejection maintained by the examiner applicable to the appealed claims, an explanation of the ground of rejection.
(1) For each rejection under 35 U.S.C. 112, first paragraph, the examiner’s answer must explain how the first paragraph of 35 U.S.C. 112 is not complied with, including, as appropriate, how the specification and drawings, if any,
(a) do not describe the subject matter defined by each of the rejected claims, and
(b) would not enable any person skilled in the art to make and use the subject matter defined by each of the rejected claims without undue experimentation including a consideration of the undue experimentation factors set forth in MPEP § 2164.01(a).
(2) For each rejection under 35 U.S.C. 112, second paragraph, the examiner’s answer must explain how the claims do not particularly point out and distinctly claim the subject matter which “applicant” regards as the invention.
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§ 2677OPTIONAL INTER PARTES REEXAMINATION
(3) For each rejection under 35 U.S.C. 102, the examiner’s answer must explain why the rejected claims are anticipated or not patentable under 35 U.S.C. 102, pointing out where all of the specific limitations recited in the rejected claims are found in the prior art relied upon in the rejection.
(4) For each rejection under 35 U.S.C. 103, the examiner’s answer must:
(a) state the ground of rejection and point out where each of the specific limitations recited in the rejected claims is found in the prior art relied on in the rejection,
(b) identify the differences between the rejected claims and the prior art relied on (i.e., the primary reference), and
(c) explain why it would have been obvious at the time the invention was made to a person of ordinary skill in the art to have modified the primary reference to arrive at the claimed subject matter.
(5) For each rejection under 35 U.S.C. 102 or 103 where there are questions as to how limitations in the claims correspond to features in the art even after the examiner complies with the requirements of paragraphs (I)(3) and (4) above, the examiner must compare at least one of the rejected claims feature-by-feature with the art relied upon in the rejection. The comparison shall align the language of the claim side-by-side with a reference to the specific page or column, line number, drawing reference number, and quotation from the reference, as appropriate.
(6) For each rejection, other than those referred to in paragraphs (I)(1) to (I)(5), the examiner’s answer must specifically explain the basis for the particular rejection.
(J) Determinations of Patentability. For each determination of patentability, i.e., each determination of inapplicability of a proposed rejection to the appealed claims, a clear explanation of the determination.
(1) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 112, first paragraph; the examiner’s answer must explain how the first paragraph of 35 U.S.C. 112 is complied with, including, as appropriate, how the specification and drawings, if any, do describe the subject matter defined by each
of the proposed-for-rejection claims, and/or would in fact enable a person skilled in the art to make and use the subject matter defined by each of the proposed-for-rejection claims without undue experimentation.
(2) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 112, second paragraph; the examiner’s answer must explain how the claims do particularly point out and distinctly claim the subject matter which “applicant” regards as the invention.
(3) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 102; the examiner’s answer must explain why the proposed-for-rejection claims are not anticipated and why they are patentable under 35 U.S.C. 102, pointing out which limitations recited in the patentable claims are not found in the art relied upon by the third party requester for the proposed rejection.
(4) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 103; the examiner’s answer must point out which limitations recited in the proposed-for-rejection claims are not found in the art relied upon by the third party requester for the proposed rejection, shall identify the difference between the claims and the art relied upon by the third party requester and must explain why the claimed subject matter is patentable over the art relied on by the third party requester. If the third party requester’s proposed rejection is based upon a combination of references, the examiner’s answer must explain the rationale for not making the combination.
(5) For each rejection proposed under 35 U.S.C. 102 or 103 where there are questions as to how limitations in the claims define over features in the art even after the examiner complies with the requirements of paragraphs (J)(3) and (J)(4) above, the examiner must compare at least one of the proposed-for-rejection claims feature-by-feature with the art relied on in the proposed rejection. The comparison must align the language of the claim side-by-side with a reference to the specific page or column, line number, drawing reference number, and quotation from the reference, as appropriate.
(6) For each determination of inapplicability of a proposed rejection, other than those referred to
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2677
in paragraphs (J)(1) to (J)(5), the examiner’s answer must specifically explain why there is insufficient basis for making that particular proposed rejection.
(K) No New Ground of Rejection or New Finding of Patentability. The examiner’s answer must provide an explicit statement that it does not contain any new ground of rejection, and it does not contain any new finding of patentability (i.e., no new determination of inapplicability of a proposed rejection). This statement will serve as a reminder to the examiner that if a new ground of rejection or new finding of patentability is made, prosecution must be reopened. It will also provide appropriate notification to parties that no new ground of rejection or new finding of patentability was made.
(L) Response to Argument. A statement of whether the examiner disagrees with each of the contentions of appellants and respondents in their briefs with respect to the issues presented, and an explanation of the reasons for disagreement with any such contentions. If any ground of rejection or inapplicability of proposed rejection is not argued and responded to by the appropriate party, the examiner must point out each claim affected.
(M) Related Proceedings Appendix. Copies of any decisions rendered by a court or the Board in any proceeding identified by the examiner in the Related Appeals and Interferences section of the answer.
(N) Period for Providing a Rebuttal Brief. The examiner will set forth the period for the appropriate appellant party, or appellant parties, to file a rebuttal brief after the examiner’s answer, and that no further papers will be permitted subsequent to the rebuttal brief.
II. PROCESSING OF COMPLETED ANSWER
When the examiner’s answer is complete, the examiner will sign it. On the examiner’s answer, each conferee who was present at the appeal conference will place his/her initials below the signature of the examiner who prepared the answer. Thus: “John Smith (conferee)” should be typed, and “JS” should be initialed. (The initialing by the conferee does not necessarily indicate concurrence with the position taken in the examiner’s answer.)
The CRU technical support staff will mail a copy of the examiner’s answer to the patent owner and to the third party requester(s). The technical support staff should attach form PTOL-2070 to the copy of the answer to be mailed to the third party requester by the CRU.
The examiner must prepare the examiner’s answer, ensure that the clerical processing is done, and forward the case to the CRU SPRS/TC QAS.
If an examiner’s answer is believed to contain a new interpretation or application of the existing patent law, the examiner’s answer, the case file, and an explanatory memorandum should be forwarded to the CRU Director for consideration. See MPEP § 1003 which applies to the CRU Director as it does to TC Directors.
2678 Rebuttal Briefs [R-11.2013]
37 CFR 41.66 Time for filing briefs. *****
(d) Any appellant may file a rebuttal brief under § 41.71 within one month of the date of the examiner’s answer. The time for filing a rebuttal brief or an amended rebuttal brief may not be extended.
(e) No further submission will be considered and any such submission will be treated in accordance with § 1.939 of this title.
37 CFR 41.71 Rebuttal brief.
(a) Within one month of the examiner’s answer, any appellant may once file a rebuttal brief.
(b)(1) The rebuttal brief of the owner may be directed to the examiner’s answer and/or any respondent brief.
(2) The rebuttal brief of the owner shall not include any new or non-admitted amendment, or an affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence filed after the date of filing the appeal.
(c)(1) The rebuttal brief of any requester may be directed to the examiner’s answer and/or the respondent brief of the owner.
(2) The rebuttal brief of a requester may not be directed to the respondent brief of any other requester.
(3) No new ground of rejection can be proposed by a requester.
(4) The rebuttal brief of a requester shall not include any new or non-admitted affidavit or other evidence. See § 1.116(d) of this title for affidavits or other evidence filed after
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§ 2678OPTIONAL INTER PARTES REEXAMINATION
final action but before or on the same date of filing an appeal and § 41.63(c) for affidavits or other evidence filed after the date of filing the appeal.
(d) The rebuttal brief must include a certification that a copy of the rebuttal brief has been served in its entirety on all other parties to the proceeding. The names and addresses of the parties served must be indicated.
(e) If a rebuttal brief is timely filed under paragraph (a) of this section but does not comply with all the requirements of paragraphs (a) through (d) of this section, appellant will be notified of the reasons for non-compliance and provided with a non-extendable period of one month within which to file an amended rebuttal brief. If the appellant does not file an amended rebuttal brief during the one-month period, or files an amended rebuttal brief which does not overcome all the reasons for non-compliance stated in the notification, that appellant’s rebuttal brief and any amended rebuttal brief by that appellant will not be considered.
In the examiner’s answer, each appellant is given a period of one month from the mailing date of the examiner’s answer within which to file a rebuttal brief in response to the issues raised in the examiner’s answer and/or in the respondent brief of an opposing party. The one month period may not be extended. 37 CFR 41.66(d).
The rebuttal brief must (A) clearly identify each issue, and (B) point out where the issue was raised in the examiner’s answer and/or in the respondent brief. In addition, the rebuttal brief must be limited to issues raised in the examiner’s answer or in any respondent brief. A rebuttal brief will not be entered if it does not clearly identify each issue and/or is not limited to issues raised in the examiner’s answer or in any respondent brief. Such a rebuttal brief will remain in the file, but it will not be addressed nor considered, except to inform the appropriate party that it was not entered and why.
The rebuttal brief of a third party requester may not be directed to the respondent brief or any other third party requester. No new ground of rejection may be proposed by a third party requester.
After the examiner’s answer, only a rebuttal brief (or an amended rebuttal brief, where appellant is given one opportunity to correct a defective original rebuttal brief (MPEP § 2679)) will be received into the reexamination proceeding. No other submission will be considered, and any such other submission will be returned as an improper paper. 37 CFR 1.939.
If no rebuttal brief is received within the one month period set in the examiner’s answer, the Central Reexamination Unit (CRU) will issue a notification letter to parties using form paragraph 26.67, and will then forward the reexamination proceeding to the Board for decision on the appeal(s).
¶ 26.67 No Receipt of Rebuttal Brief(s)
Appellant(s) was given a period of one month from the mailing date of the examiner’s answer within which to file a rebuttal brief in response to the examiner’s answer. No rebuttal brief has been received within that time period. Accordingly, the reexamination proceeding is being forwarded to the Board for decision on the appeal(s).
Prosecution remains closed. Any further reply/comments by any party will not be considered, and may be returned to the party that submitted it.
__________________________
Central Reexamination Unit
If one or more rebuttal briefs is/are timely received, see MPEP § 2679 for treatment of the rebuttal brief(s).
2679 Office Treatment of Rebuttal Brief [R-11.2013]
As provided in MPEP § 2674, the sole responsibility for determining whether rebuttal briefs comply with 37 CFR 1.943(c) and 37 CFR 41.71 was delegated to the Board effective August 17, 2010, but jurisdiction over the inter partes reexamination proceeding (i.e., to consider briefs, conduct an appeal conference, draft an examiner’s answer, and decide the entry of amendments, evidence, and information disclosure statements filed after the Right of Appeal Notice (RAN) or after the filing of a notice of appeal) is retained in the Central Reexamination Unit (CRU) until a docketing notice is entered after the time period for filing the last rebuttal brief expires or the examiner acknowledges the receipt and entry of the last rebuttal brief. Accordingly, when a rebuttal brief is received in response to an examiner’s answer, it is reviewed by the Board and then forwarded to the CRU for the examiner to consider the submission(s) and acknowledge the rebuttal brief using a Form PTOL-90.
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Some examples of acknowledgement by the examiner are:
Example 1:
The rebuttal brief filed 1/16/2999 by patent owner appellant has been entered.
No further response by the examiner is appropriate. Any further reply/comments by any party will be not be considered, and may be returned to the party that submitted it. The inter partes reexamination proceeding is being forwarded to the Board for decision on the appeal.
Example 2.
The rebuttal brief filed on 1/16/2999 by the third party requester appellant has been entered. The requester requested an Oral Hearing.
No further response by the examiner is appropriate. Any further reply/comments by any party will be not be considered, and may be returned to the party that submitted it. The reexamination proceeding is being forwarded to the Board for decision on the appeals.
In a very rare situation, where the examiner finds that it is essential to address a rebuttal brief, the examiner must reopen prosecution. In order to reopen prosecution after an examiner’s answer, the CRU Director must approve the same in writing, at the end of the action that reopens prosecution.
2680 Oral Hearing [R-08.2012]
37 CFR 41.73 Oral hearing.
(a) An oral hearing should be requested only in those circumstances in which an appellant or a respondent considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as an appeal decided after an oral hearing.
(b) If an appellant or a respondent desires an oral hearing, he or she must file, as a separate paper captioned “REQUEST FOR ORAL HEARING,” a written request for such hearing accompanied by the fee set forth in § 41.20(b)(3) within two months after the date of the examiner’s answer. The time for requesting an oral hearing may not be extended. The request must include a certification that a copy of the request has been served in its entirety on all other parties to the proceeding. The names and addresses of the parties served must be indicated.
(c) If no request and fee for oral hearing have been timely filed by appellant or respondent as required by paragraph (b) of this section, the appeal will be assigned for consideration and decision on the briefs without an oral hearing.
(d) If appellant or respondent has complied with all the requirements of paragraph (b) of this section, a hearing date will
be set, and notice given to the owner and all requesters. If an oral hearing is held, an oral argument may be presented by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board. The notice shall set a non-extendable period within which all requests for oral hearing shall be submitted by any other party to the appeal desiring to participate in the oral hearing. A hearing will be held as stated in the notice, and oral argument will be limited to thirty minutes for each appellant or respondent who has requested an oral hearing, and twenty minutes for the primary examiner unless otherwise ordered. No appellant or respondent will be permitted to participate in an oral hearing unless he or she has requested an oral hearing and submitted the fee set forth in § 41.20(b)(3).
(e)(1) At the oral hearing, each appellant and respondent may only rely on evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the briefs except as permitted by paragraph (e)(2) of this section. The primary examiner may only rely on argument and evidence relied upon in an answer except as permitted by paragraph (e)(2) of this section. The Board will determine the order of the arguments presented at the oral hearing.
(2) Upon a showing of good cause, appellant, respondent and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.
(f) Notwithstanding the submission of a request for oral hearing complying with this rule, if the Board decides that a hearing is not necessary, the Board will so notify the owner and all requesters.
If an appellant or a respondent desires an oral hearing in an appeal of an inter partes reexamination proceeding, he/she must file a written request for such hearing, accompanied by the fee set forth in 37 CFR 41.20(b)(3), within two months after the date of the examiner’s answer. There is no extension of the time for requesting a hearing. 37 CFR 41.73(b). No appellant or respondent will be permitted to participate in an oral hearing, unless he or she has requested an oral hearing and submitted the fee set forth in 37 CFR 41.20(b)(3).
Where the appeal involves reexamination proceedings, oral hearings are open to the public as observers (subject to the admittance procedures established by the Board), unless one of the appellants and/or the respondents (A) petitions under 37 CFR 41.3 that the hearing not be open to the public, (B) presents sufficient reasons for such a
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request, (C) pays the petition fee set forth in 37 CFR 41.20(a), and (D) the petition is granted.
2681 Board Decision [R-07.2015]
37 CFR 41.77 Decisions and other actions by the Board.
(a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner’s determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent Trial and Appeal Board as a new ground of rejection under paragraph (b) of this section. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.
(b) Should the Board reverse the examiner’s determination not to make a rejection proposed by a requester, the Board shall set forth in the opinion in support of its decision a new ground of rejection; or should the Board have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement shall constitute a new ground of rejection of the claim. Any decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board makes a new ground of rejection, the owner, within one month from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal proceeding as to the rejected claim:
(1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both.
(2) Request rehearing . The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.
(c) Where the owner has filed a response requesting reopening of prosecution under paragraph (b)(1) of this section, any requester, within one month of the date of service of the owner’s response, may once file comments on the response. Such written comments must be limited to the issues raised by the Board’s opinion reflecting its decision and the owner’s response. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply.
(d) Following any response by the owner under paragraph (b)(1) of this section and any written comments from a requester under paragraph (c) of this section, the proceeding will be remanded to the examiner. The statement of the Board shall be binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision. The examiner will consider any owner response under paragraph (b)(1) of this section and any written comments by a requester under paragraph (c) of this section and issue a determination that the rejection is maintained or has been overcome.
(e) Within one month of the examiner’s determination pursuant to paragraph (d) of this section, the owner or any requester may once submit comments in response to the examiner’s determination. Within one month of the date of service of comments in response to the examiner’s determination, the owner and any requesters may file a reply to the comments. No requester reply may address the comments of any other requester reply. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply.
(f) After submission of any comments and any reply pursuant to paragraph (e) of this section, or after time has expired, the proceeding will be returned to the Board which shall reconsider the matter and issue a new decision. The new decision is deemed to incorporate the earlier decision, except for those portions specifically withdrawn.
(g) The time period set forth in paragraph (b) of this section is subject to the extension of time provisions of § 1.956 of this title when the owner is responding under paragraph (b)(1) of this section. The time period set forth in paragraph (b) of this section may not be extended when the owner is responding under paragraph (b)(2) of this section. The time periods set forth in paragraphs (c) and (e) of this section may not be extended.
After consideration of the record of the inter partes reexamination proceeding, including all briefs and the examiner’s answer, the Board issues its decision, affirming the examiner in whole or in part, or reversing the examiner’s decision, sometimes also setting forth a new ground of rejection. Where there is reason to do so, the Board will sometimes remand the reexamination proceeding to the examiner for further consideration, prior to rendering a decision.
I. BOARD DECISION MAY CONTAIN NEW GROUND OF REJECTION
37 CFR 41.77(b) provides express discretionary authority for the Board to include, in its decision, a new ground(s) of rejection for any pending claim on appeal. 37 CFR 41.77(b) is not intended as an instruction to the Board to revisit every claim in
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every appealed proceeding. It is, rather, intended to give the Board express discretionary authority to act when it becomes readily apparent, during the consideration of the claims, that one or more claims are clearly subject to rejection on the same grounds or on different grounds, or different reasoning from those applied against the rejected claims.
It should be noted that, pursuant to 37 CFR 41.77(a), the reversal of the examiner’s determination not to make a rejection proposed by the requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection. Accordingly, such reversal will be set forth in the Board’s decision as a new ground of rejection under 37 CFR 41.77(b).
II. BOARD DECISION CONTAINING NEW GROUND(S) OF REJECTION IS NON-FINAL
A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.
III. NO BOARD RECOMMENDATION OF AMENDMENT TO MAKE CLAIM PATENTABLE
Unlike the practice for applications and ex parte reexaminations, the rules do not provide for the Board in its decision to include a statement that a claim may be patentable in amended form, whereby the patent owner would have the right to amend in conformity with that statement and it would be binding on the examiner in the absence of new references or grounds of rejection. The reason behind the absence of a rule permitting the Board to make such a statement is that to permit the patent owner and the third party requester(s) to comment on a Board determination of the patentability of a hypothetical amended claim would unduly delay the proceedings.
A remark by the Board that a certain feature does not appear in a claim is not to be taken as a statement that the claim is patentable if the feature is supplied by amendment. Ex parte Norlund, 1913 C.D. 161, 192 O.G. 989 (Comm’r Pat. 1913).
IV. REVIEW OF BOARD DECISION BY PETITION
Because review of the decisions of the Board relating to patentability is within the exclusive jurisdiction of the U.S. Court of Appeals for the Federal Circuit, the Board’s decisions are properly reviewable on petition only for procedural matters and only to the extent of determining whether they involve a convincing showing of error, abuse of discretion, or policy issue appropriate for higher level determination. Reasonable rulings made by the Board on procedural matters resting in its discretion will not be disturbed upon petition. A party in disagreement with a decision of the Board on substantive merits should consider the appropriateness of filing a request for rehearing under 37 CFR 41.79 or an appeal to the U.S. Court of Appeals for the Federal Circuit.
V. PUBLICATION OF BOARD DECISIONS
Decisions of the Board are published at the discretion of the Office. See 37 CFR 41.6(a).
2682 Action Following Decision [R-07.2015]
37 CFR 41.79 Rehearing.
(a) Parties to the appeal may file a request for rehearing of the decision within one month of the date of:
(1) The original decision of the Board under § 41.77(a),
(2) The original § 41.77(b) decision under the provisions of § 41.77(b)(2),
(3) The expiration of the time for the owner to take action under § 41.77(b)(2), or
(4) The new decision of the Board under § 41.77(f).
(b)(1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this section.
(2) Upon a showing of good cause, appellant and/or respondent may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection made pursuant to § 41.77(b) are permitted.
(c) Within one month of the date of service of any request for rehearing under paragraph (a) of this section, or any further request for rehearing under paragraph (d) of this section, the owner and all requesters may once file comments in opposition
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to the request for rehearing or the further request for rehearing. The comments in opposition must be limited to the issues raised in the request for rehearing or the further request for rehearing.
(d) If a party to an appeal files a request for rehearing under paragraph (a) of this section, or a further request for rehearing under this section, the Board shall render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing and is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing. If the Board opinion reflecting its decision on rehearing becomes, in effect, a new decision, and the Board so indicates, then any party to the appeal may, within one month of the new decision, file a further request for rehearing of the new decision under this subsection. Such further request for rehearing must comply with paragraph (b) of this section.
(e) The times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended.
37 CFR 41.81 Action following decision.
The parties to an appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under § 1.983 of this title until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.
37 CFR 1.981 Reopening after a final decision of the Board of Patent Appeals and Interferences.
When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the inter partes reexamination proceeding will not be reopened or reconsidered by the primary examiner except under the provisions of § 41.77 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
The provisions of 37 CFR 41.77 through 41.79 and 37 CFR 1.979 through 1.983 deal with action by the parties and the examiner following a decision by the Board in an inter partes reexamination proceeding.
The Board, in its decision, may affirm or reverse the decision of the examiner, in whole or in part, on the grounds of rejection specified by the examiner and/or on the proposed grounds presented by a third party requester but not adopted by the examiner. A rejection of claims by the examiner may also be affirmed on the basis of the argument presented by the third party requester, and a finding of patentability may also be affirmed on the basis of the arguments presented by the patent owner. Further handling of the reexamination proceeding will depend upon the nature of the Board’s decision.
Subsection I below discusses procedures in the situation where no new grounds of rejection are found in the decision by the Board. Subsection II discusses procedures in the situation where new ground(s) of rejection were entered in the Board decision.
I. NO NEW GROUNDS: THE BOARD AFFIRMS, REVERSES A REJECTION, OR AFFIRMS-IN-PART (AND REVERSES ONLY AS TO REJECTION(S))
Where the Board decision (A) affirms the examiner in whole, (B) reverses the examiner in whole where only rejections were appealed, or (C) affirms in part and reverses in part, where the only examiner decision overturned is that of rejecting claims, there are no new grounds of rejection in the decision. In these situations, the CRU processes any papers filed by a party to the appeal in response to the decision and if no further action is taken by a party within the appropriate time period, then the CRU, in due course, prepares the proceeding for its conclusion in view of the Board decision, as appropriate. The Board retains jurisdiction of the proceeding until the expiration of both the period for requesting rehearing of the decision by the Board (in accordance with 37 CFR 41.79), and the period for seeking court review of the decision of the Board (in accordance with 37 CFR 1.983). The time period for seeking review of a decision of the Board by the U.S. Court of Appeals for the Federal Circuit pursuant to 37 CFR 1.983 is generally two months from the date of the decision of the Board plus any extension obtained under 37 CFR 1.304. A final decision may be (1) the original decision of the Board under 37 CFR 41.77(a) if no action under 37 CFR 41.79 is taken by any party; (2) a decision under 37 CFR 41.77(f); or (3) a decision under 37 CFR 41.79(d). The two-month time period set forth in 37 CFR 1.304 for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit starts on: (1) the mailing date of the final Board decision if the decision is mailed to the appellant, or (2) the notification date of the final Board decision if electronic mail notification is sent to the appellant under the e-Office Action program, as indicated on form PTOL-90 accompanying the Board decision. The time period for requesting rehearing under 37 CFR 41.79 is one month from
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the date of the decision of the Board and the one month period may not be extended. 37 CFR 41.79(e).
A. No Action Taken by Parties to the Appeal
If no action has been taken by any party to the appeal and at least two weeks after the time for action by any party (to the appeal) has expired, the CRU support staff will notify the examiner that the proceeding is ready to be concluded. The delay is to permit any information as to requesting rehearing, or the filing of an appeal, to reach the Office. The examiner will take up the reexamination proceeding for action by issuing a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) in accordance with MPEP § 2687, which will terminate the prosecution of the reexamination proceeding.
The following form paragraph should be used where the NIRC is issued:
¶ 26.67.01 Periods for Seeking Court Review or Rehearing Have Lapsed
The periods for seeking court review of, or a rehearing of, the decision of the Board rendered [1] have expired and no further action has been taken by any party to the appeal. Accordingly, the appeal in this reexamination proceeding is considered terminated; see 37 CFR 1.979(b). The present Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) is issued in accordance with MPEP § 2687 in order to terminate the present reexamination prosecution.
Examiner Note:
In bracket 1, enter the date of the Board decision.
The NIRC will indicate the status of all the claims in the case as a result of the Board decision. A statement will be included in the NIRC that “Claims ____ have been canceled as a result of the decision of the Board dated _______.”
Claims indicated as patentable prior to appeal except for their dependency from rejected claims not in the original patent will be treated as if they were rejected. See MPEP § 1214.06. The following two examples should be noted (assume that claim 10 has been added to the patent during the reexamination, or claim 10 is a patent claim that was amended during the reexamination and claim 11 depends on claim 10):
- If the Board affirms a rejection of claim 10 and claim 11 was objected to prior to appeal as being patentable except for its dependency from claim 10, the examiner should cancel both claims 10 and 11 by formal examiner’s amendment attached as part of the NIRC.
- On the other hand, if both claims 10 and 11 were rejected prior to the appeal, then the patent owner was never put on notice that claim 11 could be made allowable by placing it in independent form. Thus, where the Board affirms a rejection against claim 10 but reverses the rejections against dependent claim 11, the examiner should convert dependent claim 11 into independent form by formal examiner’s amendment and cancel claim 10 (for which the rejection was affirmed) in the NIRC. In this instance, the examiner could alternatively set a time period of one month or 30 days (whichever is longer) in which the patent owner may rewrite dependent claim 11 in independent form. Extensions of time under 37 CFR 1.956 will be permitted. If no timely response is received, the examiner will cancel both claims 10 and 11 in the NIRC.
See MPEP § 2687 for further guidance in issuing the NIRC and terminating the prosecution of the reexamination proceeding.
B. A Request for Rehearing of the Decision
Any party to the appeal not satisfied with the Board decision may file a (i.e., single) request for rehearing of the decision. The request must be filed within one month from the date of (1) the original decision under 37 CFR 41.77(a) ; (2) the original 37 CFR 41.77(b) decision under the provisions of 37 CFR 41.77(b)(2); (3) the expiration of the time for the patent owner to take action under 37 CFR 41.77(b)(2); or (4) a new decision under 37 CFR 41.77(f) or 37 CFR 41.79(d) specifically designated as “new”. The one month period may not be extended. See 37 CFR 41.79(e). The provisions of 37 CFR 41.79(b) require that any request must specifically state the points believed to have been misapprehended or overlooked in the Board’s decision, as well as all other grounds which rehearing is sought.
If a party does file a request for rehearing of the decision, any opposing party appellant or opposing party respondent may, within one month from the date of service of the request for rehearing, file responsive comments on the request for rehearing. 37 CFR 41.79(c). This one month period may not be extended. 37 CFR 41.79(e).
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Where at least one request for rehearing of the decision is granted, the Board’s decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing, and the decision is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing. If the Board opinion reflecting its decision on rehearing indicates that the decision is a new decision, then any party to the appeal may, within one month of the new decision, file a further request for rehearing of the new decision. Such further request for rehearing must comply with 37 CFR 41.79(b). If the Board’s final decision on the request for rehearing is not timely appealed to the court, jurisdiction of the case is returned to the CRU for processing and subsequent forwarding to the examiner. The examiner will proceed to issue a NIRC and terminate the prosecution of the reexamination proceeding. 37 CFR 1.979(b).
II. NEW GROUND OF REJECTION BY BOARD
Pursuant to 37 CFR 41.77(b), the Board may, in its decision on appeal, make a new rejection of one or more appealed claims on either the same grounds with different reasoning or on different grounds from those applied against the claims. Pursuant to 37 CFR 41.77(a), when the Board decision reverses the examiner in whole (or affirms in part and reverses in part) as to the proposed rejections the examiner refused to adopt or had withdrawn, such a reversal constitutes a decision adverse to the patentability of the claims. Such reversal will be set forth in the Board’s decision as a new ground of rejection under 37 CFR 41.77(b).
In this situation, the patent owner has the option of:
(A) requesting rehearing based upon the same record under 37 CFR 41.79(a); or
(B) filing a response requesting reopening prosecution before the examiner including an appropriate amendment of the newly rejected claim(s), and/or new evidence (e.g., a showing of facts) relating to the new ground(s) of rejection of the claim(s).
After a decision under 37 CFR 41.77(b), the parties do not have the option of an immediate appeal to the U.S. Court of Appeals for the Federal Circuit because the decision under 37 CFR 41.77(b) is not a final decision. Patent owner must exercise one of the two above-mentioned options within one month from the date of the decision. Extension of time are available under37 CFR 1.956 where reopening will be requested; no extensions of time are available to request rehearing. See 37 CFR 41.77(g). If the patent owner does not exercise either option, then the Board may terminate the appeal as to the newly rejected claim(s). If the patent owner files a submission under 37 CFR 41.77(b)(1) or (2) that is denied entry by the Board, then the Board may terminate the appeal as to the newly rejected claim(s), designate the decision as to any remaining claims as a final decision, and permit a request for rehearing for the affirmed claims within one month from the date of notice of termination.
Jurisdiction of the proceeding remains with the Board until the Board (1) remands the proceeding to the examiner or (2) designates the decision as a final decision. If the Board remands the proceeding to the examiner after the Board approves the entry of the patent owner’s request to reopen prosecution, prosecution will be limited in accordance with the policies and procedures set forth in subsection II.B. below. The examiner may not, sua sponte, reopen prosecution, or, for example, issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC).
Where the Board applies new ground(s) of rejection to at least one claim, the patent owner may file either a response requesting a reopening of prosecution relating to the new ground(s) of rejection or a request for rehearing under 37 CFR 41.79(a)(2) of the new ground(s) of rejection based on the same record. In other words, patent owner may not file both a response requesting a reopening of prosecution and also a request for rehearing under 37 CFR 41.79(a) for the same decision. A patent owner may also not file both a request for rehearing and a conditional request to reopen in the event that the request for rehearing is denied. If such an improper conditional request to reopen prosecution is received, then the submission will be treated as a request to reopen prosecution under 37 CFR 41.77(b)(1), and the
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request for rehearing will not be entered or considered. A patent owner seeking to request one of the permitted options must comply with the timing provisions set forth in 37 CFR 41.77(g) and 41.79(a)(2), both of which run from the date of the original decision of the Board under 37 CFR 41.77(b). Should a patent owner desire to request reopening with respect to a new ground of rejection and also to request rehearing relating to another ground of rejection not newly made by the Board in the decision, patent owner should request reopening of prosecution under 37 CFR 41.77(b)(1) addressing the new ground(s) of rejection only. Once the appeal has resulted in a new Board decision under 37 CFR 41.77(f), that new Board decision will incorporate the earlier decision, except for those portions specifically withdrawn. At that time, patent owner has one month from the date of the new decision, pursuant to 37 CFR 41.79(a)(4), to request rehearing of the new Board decision including the portions of the earlier decision incorporated into the new decision. Note, however, that if a patent owner files a request for reopening under 37 CFR 41.77(b)(1) and the Board denies the entry of that request, patent owner has no opportunity to subsequently request rehearing under 37 CFR 41.77(b)(2). A requester may seek rehearing under 37 CFR 41.79 of a Board decision containing a new ground of rejection either within one month of the expiration of the time for the patent owner to take action under 37 CFR 41.77(b)(2), or within one month of the new Board decision under 37 CFR 41.77(f).
A. Proceeding under 37 CFR 41.77(b)(2): Requesting Rehearing of the Decision Which Includes a New Ground of Rejection
A patent owner’s request for rehearing by the Board must be filed within a nonextendable one month period set by 37 CFR 41.79(a). By proceeding in this manner, the patent owner waives his or her right to further prosecution before the examiner. In re Greenfield, 40 F.2d 775, 5 USPQ 474 (CCPA 1930). If the patent owner does file a request for rehearing of the decision, any third party requester that is a party to the appeal may, within a non-extendable one month period from the date of service of the request for rehearing, file responsive comments on the request. See37 CFR 41.79(c).
B. Proceeding under 37 CFR 41.77(b)(1): Requesting Reopening of Prosecution and Submission of Amendment or Showing of Facts After Decision Which Includes a New Ground of Rejection
1. Patent Owner’s Submission under 37 CFR 41.77(b)(1)
If the patent owner elects to proceed before the examiner, the patent owner must take action within the one month period for response which will be set in the Board’s decision. The decision may provide procedural guidance regarding what will be acceptable in a request for reopening prosecution under 37 CFR 41.77. Extensions of time under 37 CFR 1.956 are available to extend the period. 37 CFR 41.77(g). The extension(s) may not, however, extend the time period more than six months from the date of the Board’s decision.
When the patent owner submits a response pursuant to 37 CFR 41.77(b)(1) and the Board grants the request to reopen prosecution, the proceeding will then be governed by the procedures set forth in 37 CFR 41.77(c) through 37 CFR 41.77(g). Under 37 CFR 41.77(b)(1), the patent owner may amend the claims involved, or substitute new claims to avoid the art or reasons stated by the Board. Ex parte Burrowes, 110 OG 599, 1904 C.D. 155 (Comm’r Pat. 1904). The patent owner may, alternatively or in addition, submit evidence relating to the new rejection(s) set forth by the Board. The new ground(s) of rejection raised by the Board does not “reopen the prosecution” (under 37 CFR 41.77(b)(1) and 37 CFR 41.77(c) through 37 CFR 41.77(f)) except as to that subject matter to which the new rejection was applied. Accordingly, the Board will review any submission under 37 CFR 41.77(b)(1) and will determine whether the request for reopening will be granted and if the submission should be entered into the record. Mere argument without either amendment (of the claims so rejected) or the submission of evidence or a showing of facts (as to the claims so rejected) is not in compliance and the Board will not grant the request to reopen. If the Board denies patent owner’s request to reopen prosecution under 37 CFR 41.77(b)(1), no opportunity to subsequently request rehearing under 37 CFR 41.77(b)(2) will be provided. Any amendment or new evidence not directed to that subject matter to which the new rejection was
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applied will be refused entry and will not be considered.
2. Third Party Requester Comments under 37 CFR 41.77(c)
In accordance with 37 CFR 41.77(c), the third party requester may once file comments on the patent owner’s submission under 37 CFR 41.77(b)(1) within one month of the date of service of the request to reopen prosecution. The one-month time period cannot be extended. See 37 CFR 41.77(g). The comments must be limited to issues concerning the new ground(s) of rejection raised by the decision of the Board or the patent owner’s response. The comments may include new evidence and arguments if limited to support the new grounds of rejection by the Board, including new evidence and arguments directed towards amended or new claims if necessitated by patent owner’s submission under 37 CFR 41.77(b)(1). The Board will review any comments under 37 CFR 41.77(c) to determine if the comments should be entered into the record. Any comments that address issues not raised by the new grounds of rejection in the Board’s decision or the patent owner’s response under 37 CFR 41.77(b)(1) will be refused entry and will not be considered. If the third party requester is not an appellant or cross-appellant, such a requester may still file comments under 37 CFR 41.77(c) if the comments are presented with payment of the appeal fee set forth in 37 CFR 41.20(b)(1) and appeal brief fee set forth in 37 CFR 41.20(b)(2).
3. Examiner’s Determination under 37 CFR 41.77(d)
The Board will formally remand the proceeding back to the examiner prior to the examiner’s determination under 37 CFR 41.77(d). In the remand order, the Board should indicate whether the patent owner’s response under 37 CFR 41.77(b)(1) is entered, not entered, or entered-in-part. If the patent owner’s response is entered-in-part, the remand order should instruct the examiner which portion(s) or evidence is not entered. For example, the remand order may instruct the examiner that the amendment cancelling claim 1 and adding new proposed substitute claim 10 is entered but the declaration and exhibits under 37 CFR 1.131(a) to disqualify the Jones reference is not entered. In the remand order, the Board should
similarly explain whether any third party requester comment(s) is entered, not entered, or entered-in-part. The examiner should assume that the Board has entered papers filed under 37 CFR 41.77(b)(1) or (c) unless the remand order explicitly states otherwise. If the examiner is uncertain about the entry status of a paper, the examiner should discuss the issue with his or her SPRS, who then may contact the Board to seek clarification, if necessary.
After a remand order by the Board, the examiner will consider the submissions (or portions thereof) under 37 CFR 41.77(b)(1) (e.g., patent owner’s request to reopen) and 37 CFR 41.77(c) (e.g., third party requester comments) that were entered by the Board. The examiner may only issue a determination under 37 CFR 41.77(d) and may not issue another type of Office action, such as a nonfinal action, an advisory action, a Right of Appeal Notice, or a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC).
The determination under 37 CFR 41.77(d) is limited to the examiner’s determination as to whether or not the new statutory ground(s) of rejection in the Board decision has been overcome. Similar to the situation where the Board applies a new ground of rejection in ex parte examination, unless an amendment or new evidence not of record at the time of the Board decision is presented, the examiner’s determination may not indicate that the rejection has been overcome. The examiner will explain the reasoning for his or her opinion. For example, the examiner may find that the patent owner’s amendment to independent claim 1 introduces a new limitation that is not taught by any of the references applied in the new ground(s) of rejection. The examiner should explicitly identify the limitation that is not taught and provide an explanation of why the examiner finds that the references applied in the new ground(s) of rejection do not teach the missing limitation. In the determination under 37 CFR 41.77(d), the examiner will address any entered third party requester’s arguments and evidence. For example, if the Board enters the requester’s evidence of inherency, which is related to the Board’s new ground of rejection, the examiner should address whether the evidence is, or is not, sufficient to show inherency. The examiner will not comment on any
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entered arguments or comments that are not limited to the new ground(s) of rejection issued in the Board’s decision (e.g., arguments or comments that addressed a rejection affirmed in the Board’s decision). The examiner also will not comment on any unentered amendments, arguments, or evidenced submitted by either the patent owner or a third party requester.
The determination will set (1) a one-month time period from the mailing date of the determination for the patent owner and third party requester(s) to file comments on the examiner’s determination under 37 CFR 41.77(d) and (2) a one month time period from the date of service of such comments for the patent owner and third party requester(s) to file a reply to the comments. For example, form paragraph 26.75 may be used:
¶ 26.75 Time Period for Response under 37 CFR 41.77(e)
Periods for response to this determination are identified in 37 CFR 41.77(e). Following expiration of those time periods, the proceeding will be returned to the Board for reconsideration under 37 CFR 41.77(f). Note that under 37 CFR 41.77(e), patent owner and third party requester responsive comments are due one month from the mailing date of this determination, and both third party requester and patent owner replies to those comments are then due one month from date of service of the comments. These time periods cannot be extended. See 37 CFR 41.77(g).
4. Comments under 37 CFR 41.77(e)
Patent owner and third party requester(s) have one month from the mailing date of the determination under 37 CFR 41.77(d) to once file comments on the determination. If any comments are filed, each opposing party may then file a single reply to the comments from an opposing party. No amendments or further evidence may be submitted as part of these comments. The reply must be filed within one month from the date of service of the comments. These time periods cannot be extended. See 37 CFR 41.77(g). If a third party requester is not an appellant or cross-appellant, such a requester may still file comments under 37 CFR 41.77(e) if the comments are presented with payment of the appeal fee set forth in 37 CFR 41.20(b)(1) and appeal brief fee set forth in 37 CFR 41.20(b)(2).
After receipt of any comments and replies that are filed, the examiner will determine if the comments
and replies are compliant with the requirements of 37 CFR 41.77(e). This review is similar to the scope of an examiner’s review of a rebuttal brief for compliance with 37 CFR 41.71. See MPEP § 2678. Comments that are not limited to issues raised in the determination under 37 CFR 41.77(d) will not be entered. Replies that are not limited to issues raised by the comments to the determination will not be entered. Comments and/or replies that do not comply with 37 CFR 41.77(e) will not be entered but will remain in the record for the proceeding. The examiner will notify the parties and the Board of the compliance with 37 CFR 41.77(e) and will forward the proceeding to the Board. Specifically, the examiner will issue a communication (e.g., form PTOL-90) which acknowledges that the comments and replies were filed, states which submissions were entered or not entered, and states that the proceeding is being forwarded to the Board.
If the patent owner or the third party fails to file comments or replies under 37 CFR 41.77(e), after expiration of the applicable time period, the examiner will return the proceeding to the Board for action in accordance with 37 CFR 41.77(f) by issuing a communication (e.g., a form PTOL-90), which states the lack of receipt of either the comments or replies and that the proceeding is being forwarded to the Board.
After the issuance of the communication pertaining to the comments and replies under 37 CFR 41.77(e), jurisdiction of the proceeding will transfer to the Board. In accordance with 37 CFR 41.77(f), the Board will then act upon the proceeding. If the Board issues a final decision, the alternatives available to a party to the appeal are available. See MPEP § 2683.
C. No submission under 37 CFR 41.77(b)(1) or (2)
If the patent owner does not request, or does not properly request, rehearing or reopening of prosecution in accordance with 37 CFR 41.77(b), the Board may terminate the appeal proceeding as to the claim(s) rejected pursuant to 37 CFR 41.77(b) and designate the decision as to any remaining claims final for purposes of judicial review. Final action by the Board will give rise to the alternatives available to a party to the appeal following a final
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decision by the Board, with respect to any remaining claims.
III. REMAND BY BOARD
In accordance with 37 CFR 41.77(a), the Board, in its decision, may remand the reexamination proceeding to the examiner for further consideration. A Board decision which includes a remand in accordance with 37 CFR 41.77(a) will not be considered a “final decision” in the case.
The Board may remand the case to an examiner where appropriate procedure has not been followed, where further information is needed, or where the examiner is to consider something which the examiner did not yet consider (or it is not clear that the examiner had considered it).
After the examiner has addressed the remand, the examiner will either return the case to the Board (via the CRU) or reopen prosecution, as appropriate. See subsection A. below for policies regarding reopening prosecution after a remand by the Board.
A. Reopening Prosecution of Case
Reopening prosecution of a case after decision by the Board should be a rare occurrence. Proceedings which have been decided by the Board will not be reopened or reconsidered by the primary examiner, unless the provisions of 37 CFR 41.77 apply, or the written consent of the Director of the USPTO is obtained for the consideration of matters not already adjudicated, where sufficient cause has been shown. See 37 CFR 1.981 and MPEP § 1214.07.
The written consent of the CRU Director is required for an action reopening prosecution where the reexamination proceeding has been remanded to the examiner for a failure to follow appropriate procedure, to provide more information, or to consider something not yet considered, and the examiner then concludes, after consideration of all the evidence and argument, that a decision as to patentability made in the RAN should be changed. If so, prosecution would be reopened with the written consent of the CRU Director and an Office action issued, so that any party adversely affected by the
change in the examiner’s position will have an opportunity to consider it and subsequently respond the examiner’s new decision.
Once jurisdiction is returned to the CRU from the Board, the CRU Director will decide any petition to reopen prosecution of an inter partes reexamination proceeding after decision by the Board, where no court action has been filed and the time for filing such has expired. MPEP § 1002.02(c), item 1.
2683 Appeal to Courts [R-07.2015]
35 U.S.C. 141 Appeal to the Court of Appeals for the Federal Circuit.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 141 for the law otherwise applicable.]
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A patent owner, or a third-party requester in an inter partes reexamination proceeding, who is in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Interferences under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.
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PART 90 — JUDICIAL REVIEW OF PATENT TRIAL AND APPEAL BOARD
DECISIONS
37 CFR 90.1 Scope.
The provisions herein govern judicial review for Patent Trial and Appeal Board decisions under chapter 13 of title 35, United States Code. Judicial review of decisions arising out of inter partes reexamination proceedings that are requested under 35 U.S.C. 311, and where available, judicial review of decisions arising out of interferences declared pursuant to 35 U.S.C. 135 continue to be governed by the pertinent regulations in effect on July 1, 2012.
37 CFR 1.302 and 37 CFR 1.304, as in effect on July 1, 2012, are still applicable to inter partes reexamination proceedings (note that, effective September 16, 2012, the Board of Patent Appeals and Interferences was redesignated as the Patent Trial and Appeal Board):
37 CFR 1.302 Notice of appeal.
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(a) When an appeal is taken to the U.S. Court of Appeals for the Federal Circuit, the appellant shall give notice thereof to the Director within the time specified in § 1.304.
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(d) In inter partes reexamination proceedings, the notice must be served as provided in § 1.903.
(e) Notices of appeal directed to the Director shall be mailed to or served by hand on the General Counsel as provided in § 104.2.
37 CFR 1.304 Time for appeal or civil action.
(a)(1) The time for filing the notice of appeal to the U.S. Court of Appeals for the Federal Circuit (§ 1.302) or for commencing a civil action (§ 1.303) is two months from the date of the decision of the Board of Patent Appeals and Interferences. If a request for rehearing or reconsideration of the decision is filed within the time period provided under § 41.52(a), § 41.79(a), or § 41.127(d) of this title, the time for filing an appeal or commencing a civil action shall expire two months after action on the request. In contested cases before the Board of Patent Appeals and Interferences, the time for filing a cross-appeal or cross-action expires:
(i) Fourteen days after service of the notice of appeal or the summons and complaint; or
(ii) Two months after the date of decision of the Board of Patent Appeals and Interferences, whichever is later.
(a)(2) The time periods set forth in this section are not subject to the provisions of § 1.136, § 1.550(c), or § 1.956, or of § 41.4 of this title.
(a)(3) The Director may extend the time for filing an appeal or commencing a civil action:
(i) For good cause shown if requested in writing before the expiration of the period for filing an appeal or commencing a civil action, or
(ii) Upon written request after the expiration of the period for filing an appeal or commencing a civil action upon a showing that the failure to act was the result of excusable neglect.
(b) The times specified in this section in days are calendar days. The time specified herein in months are calendar months except that one day shall be added to any two-month period which includes February 28. If the last day of the time specified for appeal or commencing a civil action falls on a Saturday, Sunday or Federal holiday in the District of Columbia, the time is extended to the next day which is neither a Saturday, Sunday nor a Federal holiday.
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37 CFR 1.983 Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination.
(a) The patent owner or third party requester in an inter partes reexamination proceeding who is a party to an appeal to the Patent Trial and Appeal Board and who is dissatisfied
with the decision of the Patent Trial and Appeal Board may, subject to § 41.81, appeal to the U.S. Court of Appeals for the Federal Circuit and may be a party to any appeal thereto taken from a reexamination decision of the Patent Trial and Appeal Board.
(b) The appellant must take the following steps in such an appeal:
(1) In the U.S. Patent and Trademark Office, timely file a written notice of appeal directed to the Director in accordance with §§ 1.302 and 1.304;
(2) In the U.S. Court of Appeals for the Federal Circuit, file a copy of the notice of appeal and pay the fee, as provided for in the rules of the U.S. Court of Appeals for the Federal Circuit; and
(3) Serve a copy of the notice of appeal on every other party in the reexamination proceeding in the manner provided in § 1.248.
(c) If the patent owner has filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, the third party requester may cross appeal to the U.S. Court of Appeals for the Federal Circuit if also dissatisfied with the decision of the Patent Trial and Appeal Board.
(d) If the third party requester has filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, the patent owner may cross appeal to the U.S. Court of Appeals for the Federal Circuit if also dissatisfied with the decision of the Patent Trial and Appeal Board.
(e) A party electing to participate in an appellant’s appeal must, within fourteen days of service of the appellant’s notice of appeal under paragraph (b) of this section, or notice of cross appeal under paragraphs (c) or (d) of this section, take the following steps:
(1) In the U.S. Patent and Trademark Office, timely file a written notice directed to the Director electing to participate in the appellant’s appeal to the U.S. Court of Appeals for the Federal Circuit by mail to, or hand service on, the General Counsel as provided in § 104.2;
(2) In the U.S. Court of Appeals for the Federal Circuit, file a copy of the notice electing to participate in accordance with the rules of the U.S. Court of Appeals for the Federal Circuit; and
(3) Serve a copy of the notice electing to participate on every other party in the reexamination proceeding in the manner provided in § 1.248.
(f) Notwithstanding any provision of the rules, in any reexamination proceeding commenced prior to November 2, 2002, the third party requester is precluded from appealing and cross appealing any decision of the Patent Trial and Appeal Board to the U.S. Court of Appeals for the Federal Circuit, and the third party requester is precluded from participating in any appeal taken by the patent owner to the U.S. Court of Appeals for the Federal Circuit.
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I. APPEAL TO UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT IS AVAILABLE
A. For Any Inter Partes Reexamination Proceeding “Commenced” on or After November 2, 2002
Section 13106 of Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002), granted the inter partes reexamination third party requester the right to appeal an adverse decision of the Board to the U.S. Court of Appeals for the Federal Circuit (Federal Circuit). 35 U.S.C. 315(b)(1). It should be noted, however, in Consumer Watchdog v. Wisconsin Alumni Research Foundation, 111 USPQ2d 1241, 753 F.3d 1258 (Fed Cir. 2014), the court found that the inter partes reexamination requester lacked Article III standing because it did not identify “a particularized, concrete interest in the patentability of the ‘913 patent or any injury in fact flowing from the Board’s decision…”. Public Law 107-273 further authorized the third party requester to be a party to any appeal taken by the patent owner to the Federal Circuit. 35 U.S.C. 315(b)(2). Also, section 13106 of Public Law 107-273 implicitly permitted the patent owner to be a party to the appeal taken by the third party requester to the Federal Circuit. This is because 35 U.S.C. 315(a)(2) states that the patent owner involved in an inter partes reexamination proceeding “may be a party to any appeal taken by a third party requester under subsection (b).” The effective date for this revision to the statute is provided in section 13106 of Public Law 107-273 as follows: “The amendments made by this section apply with respect to any reexamination proceeding commenced on or after the date of enactment of this Act.”
1. Appeal to the Federal Circuit
A patent owner and/or a third party requester in an inter partes reexamination proceeding who is a party to an appeal to the Board and who is dissatisfied with the decision of the Board may, subject to 37 CFR 41.81 , appeal to the Federal Circuit. Pursuant to 37 CFR 41.81, the patent owner and/or third party requester may not appeal to the Federal Circuit until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable to the Federal Circuit.
A patent owner or a third party requester appellant must take the following steps in such an appeal to the Federal Circuit (37 CFR 1.983(b)):
(A) In the Office, timely file a written notice of appeal directed to the Director of the USPTO in accordance with 37 CFR 1.302 and 1.304, which should preferably provide sufficient information to allow the Director to determine whether to exercise the right (extended by Public Law 112-29, sec. 7(e)(4), 125 Stat. 284, 315 (2011)) to intervene in the appeal pursuant to 35 U.S.C. 143;
(B) In the Federal Circuit, file a copy of the notice of appeal and pay the fee, as provided for in the rules of the Federal Circuit; and
(C) Serve a copy of the notice of appeal on every other party in the reexamination proceeding in the manner provided in 37 CFR 1.248.
2. Cross Appeal
If the patent owner has filed a notice of appeal to the Federal Circuit, the third party requester may cross appeal to the Federal Circuit if also dissatisfied with the decision of the Board. 37 CFR 1.983(c).
If the third party requester has filed a notice of appeal to the Federal Circuit, the patent owner may cross appeal to the Federal Circuit if also dissatisfied with the decision of the Board. 37 CFR 1.983(d).
Such cross appeals would be taken under the rules of the Federal Circuit for cross appeals. Any notice of cross appeal should preferably provide sufficient information to allow the Director to determine whether to exercise the right (extended by Public Law 112-29, sec. 7(e)(4), 125 Stat. 284, 315 (2011)) to intervene in the appeal pursuant to 35 U.S.C. 143.
3. Participation in Other Party’s Appeal
The patent owner and the third party requester may each be a party to, i.e., participate in, each other’s appeal to the Federal Circuit from an inter partes
reexamination decision of the Board (37 CFR 1.983(e)).
A party electing to participate in an appellant’s appeal must, within fourteen days of service of the appellant’s notice of appeal (37 CFR 1.983(b)(3))
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or notice of cross appeal (37 CFR 1.983(c) or (d)), take the following steps:
(A) In the Office, timely file a written notice directed to the Director of the USPTO electing to participate in the appellant’s appeal to the Federal Circuit;
(B) In the Federal Circuit, file a copy of the notice electing to participate; and
(C) Serve a copy of the notice electing to participate on every other party in the reexamination proceeding in the manner provided in 37 CFR 1.248.
B. For Any Inter Partes Reexamination Proceeding “Commenced” Prior to November 2, 2002
In any reexamination proceeding commenced prior to November 2, 2002, only the patent owner can appeal to the U.S. Court of Appeals for the Federal Circuit. Pursuant to 35 U.S.C. 134(c), as it existed prior to its November 2, 2002 revision via Public Law 107-273, the third party requester is expressly precluded from appealing (and cross appealing) any decision of the Board in an inter partes reexamination proceeding commenced prior to November 2, 2002, to the Federal Circuit. The third party requester is also precluded from participating in any appeal taken by the patent owner to the Federal Circuit.
Pursuant to 37 CFR 1.983, a patent owner in a reexamination proceeding commenced prior to November 2, 2002, who is dissatisfied with the decision of the Board may, subject to 37 CFR 41.81, appeal to the Federal Circuit. Under 37 CFR 41.81, the patent owner may not appeal to the Federal Circuit until all parties’ rights to request rehearing of the Board’s decision have been exhausted, at which time the decision of the Board is final and appealable by the patent owner to the Federal Circuit.
The patent owner must take the following steps in such an appeal:
(A) In the Office, timely file a written notice of appeal directed to the Director of the USPTO in accordance with 37 CFR 1.302 and 1.304, which should preferably provide sufficient information to allow the Director to determine whether to exercise the right (extended by Public Law 112-29, sec.
7(e)(4), 125 Stat. 284, 315 (2011)) to intervene in the appeal pursuant to 35 U.S.C. 143;
(B) In the Federal Circuit, file a copy of the notice of appeal and pay the fee, as provided for in the rules of the Federal Circuit; and
(C) Serve a copy of the notice of appeal on the third party requester(s) in the reexamination proceeding in the manner provided in 37 CFR 1.248.
II. APPEAL TO U.S. DISTRICT COURT IS NOT AVAILABLE
The remedy by civil action under 35 U.S.C. 145 is not available to the patent owner and the third party requester in an inter partes reexamination proceeding. Patent owners and third party requesters dissatisfied with a decision of the Board in an inter partes reexamination proceeding are not permitted to file a civil action against the Director of the USPTO in any U.S. district court. Instead, they are limited to appealing decisions of the Office to the Federal Circuit.
When the optional inter partes reexamination alternative was added to the reexamination statute, the legislation did not provide the parties an avenue of judicial review by civil action under 35 U.S.C. 145 in inter partes reexamination proceedings (nor is this avenue available for ex parte reexamination of a patent that issued from an original application filed on or after November 29, 1999; see MPEP § 2279). Federal district court proceedings are generally complicated and time consuming and, therefore, are contrary to the goal of expeditious resolution of reexamination proceedings. Accordingly, the first sentence of 35 U.S.C. 145 was amended to read: “An applicant dissatisfied with the decision of the [Board] in an appeal under 134(a) of this title may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the District of Columbia if commenced within such time after such decision, not less than sixty days, as the Director appoints.” (emphasis added). Note that 35 U.S.C. 134 part (a), which is included by 35 U.S.C. 145 is limited to applicants and applications, while 35 U.S.C. 134 parts (b) and (c) which are not included by 35 U.S.C. 145 are
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directed to reexamination and the patent owner and the third party requester, respectively.
2684 Information Material to Patentability in Reexamination Proceeding [R-08.2012]
37 CFR 1.933 Patent owner duty of disclosure in inter partes reexamination proceedings.
(a) Each individual associated with the patent owner in an inter partes reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability in a reexamination proceeding as set forth in § 1.555(a) and (b). The duty to disclose all information known to be material to patentability in an inter partes reexamination proceeding is deemed to be satisfied by filing a paper in compliance with the requirements set forth in § 1.555(a) and (b).
(b) The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section, and no evaluation will be made by the Office in the reexamination proceeding as to compliance with this section. If questions of compliance with this section are raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.906(c).
Duty of disclosure considerations as to inter partes reexamination proceedings parallel those of ex parte reexamination proceedings. In this regard, 37 CFR 1.933 incorporates the provisions of 37 CFR 1.555(a) and (b). See MPEP § 2280 for a discussion of the duty of disclosure in reexamination.
Any fraud practiced or attempted on the Office or any violation of the duty of disclosure through bad faith or intentional misconduct results in noncompliance with 37 CFR 1.555(a). This duty of disclosure is consistent with the duty placed on patent applicants by 37 CFR 1.56. Any such issues raised by the patent owner or the third party requester during an inter partes reexamination proceeding will merely be noted as unresolved questions under 37 CFR 1.906(c).
2685 No Interviews on Merits in Inter Partes Reexamination Proceedings [R-07.2015]
37 CFR 1.955 Interviews prohibited in inter partes reexamination proceedings.
There will be no interviews in an inter partes reexamination proceeding which discuss the merits of the proceeding.
Pursuant to 37 CFR 1.955, an interview which discusses the merits of a proceeding will not be permitted in inter partes reexamination proceedings. Thus, in an inter partes reexamination proceeding, there will be no inter partes interview as to the substance of the proceeding. Also, there will be no separate ex parte interview as to the substance of the proceeding with either the patent owner or the third party requester. Accordingly, where a party requests any information as to the merits of a reexamination proceeding, the examiner will not conduct an interview with that party to provide the information. Further, an informal amendment by the patent owner will not be accepted, because that would be tantamount to an ex parte interview. All communications between the Office and the patent owner (and the third party requester) which are directed to the merits of the proceeding must be in writing and filed with the Office for entry into the record of the proceeding.
Questions on strictly procedural matters may be discussed with the parties. The guidance to follow is that any information which a person could obtain by reading the file (which is open to the public) is
procedural, and it may be discussed. Matters not available from a reading of the file are considered as relating to the merits of the proceeding, and may not be discussed. Thus, for example, a question relating to when the next Office action will be rendered is improper as it relates to the merits of the proceeding (because this information cannot be obtained from a reading of the file).
The Office may, in its sole discretion, telephone a party as to matters of completing or correcting the record of a file, where the subject matter discussed does not go to the merits of the reexamination proceeding. This informal telephone call may take the form of inquiring as to whether a timely response, timely appeal, etc., was filed with the Office, so as to make certain that a timely response, timely appeal, etc. has not been misdirected within the Office. This may also take the form of telephoning to obtain a paper stated to have been attached to, or included in, a filing, but not found to be present in the record. Likewise, calls to obtain a certificate of service, or to have a party re-submit a paper (e.g., where it was submitted via an improper means), may be made by the Office. Any such
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telephone call IS NOT TO BE MADE by the examiner, or any other Office employee who addresses the proceeding on its merits. Thus, a paralegal or Legal Instruments Examiner (or support staff in general), may make such a telephone call. If the party is reached by telephone and the matter is resolved, then the next Office communication as may be appropriate (e.g., Office action, NIRC) should make the telephone call of record. Any statement of the telephone call in the next communication must provide that “the content of the telephone call was limited solely to” the non-merits matter discussed, and “nothing else was discussed.” Such a telephone call is not to be recorded on an interview summary record form.
It is also permitted for a paralegal or Legal Instruments Examiner (or support staff in general) to call a requester to discuss a request that fails to comply with the filing date requirements for filing a reexamination request, because there is no reexamination proceeding yet, and 37 CFR 1.955 proscribes interviews in “ inter partes reexamination proceedings.”
2686 Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon [R-07.2015]
37 CFR 1.985 Notification of prior or concurrent proceedings in inter partes reexamination.
(a) In any inter partes reexamination proceeding, the patent owner shall call the attention of the Office to any prior or concurrent proceedings in which the patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings.
(b) Notwithstanding any provision of the rules, any person at any time may file a paper in an inter partes reexamination proceeding notifying the Office of a prior or concurrent proceeding in which the same patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings. Such paper must be limited to merely providing notice of the other proceeding without discussion of issues of the current inter partes reexamination proceeding.
It is important for the Office to be aware of any prior or concurrent proceedings in which a patent undergoing inter partes reexamination is or was involved, and any results of such proceedings. In accordance with 37 CFR 1.985, the patent owner is
required to provide the Office with information regarding the existence of any such proceedings, and the results thereof, if known. This requirement includes supplemental examination proceedings and reviews before the Patent Trial and Appeal Board in addition to the examples provided in 37 CFR 1.985(a) reproduced above. Ordinarily, while an inter partes reexamination proceeding is pending,
third party submissions filed after the date of the order are not entered into the reexamination file or the patent file, unless the third party is a third party reexamination requester. However, in order to ensure a complete file, with updated status information regarding prior or concurrent proceedings regarding the patent under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file, copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent. Such decisions include final court decisions (even if the decision is still appealable), decisions to vacate, decisions to remand, and decisions as to the merits of the patent claims. Non-merit decisions on motions such as for a new venue, a new trial/discovery date, or sanctions will not be entered into the patent file, and will be expunged from the patent file by closing the appropriate paper if they were entered before discovery of their nature. Further, papers filed in the court from litigations or other proceedings involving the patent will not be entered into the record (and will be expunged if already entered) if they provide a party’s arguments, such as a memorandum in support of summary judgment. If the argument has an entry right in the reexamination proceeding, it must be submitted via the vehicle (provision(s) of the rules) that provides for that entry right. It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding number and its status. Any submission that is not permitted entry will be returned, expunged, or discarded, at the sole discretion of the Office.
It is to be noted that if the Office, in its sole discretion, deems the volume of the papers filed from litigations or other proceedings to be too
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extensive/lengthy, the Office may return, expunge or discard, at its sole discretion, all or part of the submission. In such an instance, a party may limit the submission in accordance with what is deemed relevant, and resubmit the papers. Persons making such submissions must limit the submissions to the notification, and must not include further arguments or information. Where a submission is not limited to bare notice of the prior or concurrent proceedings (in which a patent undergoing reexamination is or was involved), the submission will be returned, expunged or discarded by the Office. It is to be understood that highlighting of certain text by underlining, fluorescent marker, etc., goes beyond bare notice of the prior or concurrent proceedings. Any proper submission pursuant to 37 CFR 1.985 will be promptly entered into the record of the reexamination file, and will be considered by the examiner as to its content, when the proceeding comes up for action on the merits. Thus, for example, if the patent owner properly files in a reexamination proceeding, pursuant to 37 CFR 1.985, an enterable paper from the discovery stage of litigation of the patent being reexamined, the paper would be entered into the reexamination file and considered by the examiner, the next time the proceeding comes up for action on the merits. See MPEP § 2686.04 for Office investigation for prior or concurrent litigation.
2686.01 Multiple Copending Reexamination Proceedings [R-07.2015]
37 CFR 1.989 Merger of concurrent reexamination proceedings.
(a) If any reexamination is ordered while a prior inter partes reexamination proceeding is pending for the same patent and prosecution in the prior inter partes reexamination proceeding has not been terminated, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger is ordered, the merged examination will normally result in the issuance and publication of a single reexamination certificate under § 1.997.
(b) An inter partes reexamination proceeding filed under § 1.913 which is merged with an ex parte reexamination proceeding filed under § 1.510 will result in the merged proceeding being governed by §§ 1.902 through 1.997, except that the rights of any third party requester of the ex parte reexamination shall be governed by §§ 1.510 through 1.560.
This section discusses multiple copending reexamination requests which are filed on the same patent, where at least one of the multiple copending
reexamination requests is an inter partes request. If all of the multiple copending reexamination requests are ex parte requests, see MPEP § 2283.
I. WHEN PROCEEDINGS ARE MERGED
Where a second request for reexamination is filed and reexamination is ordered, and a first reexamination proceeding is pending, the proceedings will be merged where the Office (in its discretion) deems it appropriate to do so, to facilitate the orderly handling of the proceedings. However, a decision not to merge is within the sole discretion of the Office to facilitate/carry out the statutory mandate of 35 U.S.C. 314(c) to conduct reexamination proceedings with “special dispatch.”
Where a second request for reexamination is filed while a first reexamination proceeding is pending, the second request is decided based on the claims in effect at the time of the determination, and if reexamination is ordered (and the statement-reply period expires for any ex parte reexamination proceeding), the question of merger will then be considered. If the proceedings are merged, the prosecution will be conducted at the most advanced point possible for the first proceeding. Thus, if a final rejection (a Right of Appeal Notice) has been issued in the first proceeding, prosecution will ordinarily be reopened to consider the question of patentability presented in the second request unless the examiner concludes that no new rejection or change of position is warranted. Also, the patent owner will be provided with an opportunity to respond to any new rejection in a merged reexamination proceeding prior to an Action Closing Prosecution (ACP) being issued. See MPEP § 2671.02.
Where the reexamination proceedings are merged, a single certificate will be issued and published based upon the merged proceedings, 37 CFR 1.989(a).
II. WHEN PROCEEDING IS SUSPENDED
It may also be desirable in certain situations to suspend one of the proceedings for a specified period of time. For example, a suspension of a first reexamination proceeding may be issued to allow time for the decision on the second request. A
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suspension will only be granted in exceptional (extraordinary) instances because of the statutory requirements that examination proceed with “special dispatch”, and the express written approval by OPLA must be obtained. Suspension will not be granted when there is an outstanding Office action.
III. MERGER OF REEXAMINATIONS
The following guidelines should be observed when two requests for reexamination directed to a single patent have been filed:
The second request (i.e., Request 2) should be processed as quickly as possible, and assigned to the same examiner to whom the first request (i.e., Request 1) is assigned. If Request 2 is denied, prosecution of Request 1 should continue. If Request 2 is granted, a first Office action on the merits will not be sent with the order granting reexamination in the second proceeding. Instead, the order will indicate that an Office action will follow in due course. MPEP § 2660. The order granting the second proceeding will be prepared, reviewed by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) and mailed. The order will be mailed specially, and the two proceedings will be forwarded to OPLA for preparation of a decision whether to merge the two proceedings.
A decision to merge the reexamination proceedings will require that responses/comments by the patent owner and the third party requester(s) must consist of a single response/comment paper, addressed to both files, filed in duplicate each bearing a signature, for entry in both files. The same applies to any other paper filed in the merged proceeding. The merger decision also will point out that both files will be maintained as separate complete files.
The merger decision should include a requirement that the patent owner maintain identical claims in both files. If the claims are not the same in both files at the time the merger decision is drafted, an Office action will be issued concurrently with the merger decision; the Office action will contain a rejection of the claims under 35 U.S.C. 112(b) as being indefinite as to the content of the claims, and thus failing to particularly point out the invention, and
the Office action will require a patent owner amendment placing the claims in identical form. Patent owner must respond to the Office action in accordance with the procedures in 37 CFR 1.111. For patent owner’s response to the Office action to be considered to be a complete response, patent owner must include (in the proceeding(s) for which any new or amended claims are being added) the remarks that set forth the basis for having presented any new or amended claims in the proceedings. The third party inter partes requester (in the proceedings in which the amendment is made) will then have an opportunity to comment on patent owner’s response with respect to the amendments made in the proceeding(s) in accordance with the procedures in 37 CFR 1.947. Where the claims are already the same in both reexamination files, the decision on merger will indicate at its conclusion that an Office action will be mailed in due course, and that the patent owner need not take any action at present.
After the decision of merger is prepared and signed, the decision will be forwarded directly to the CRU, where the decision will be mailed specially.
Where the merger decision indicates that an Office action will follow, the merged proceeding is immediately returned to the examiner, to issue an Office action, after the CRU mailing and processing of the decision. Where the merger decision indicates that the patent owner is given one month to provide an amendment to make the claims the same in each file (identical amendments to be placed in all files), the CRU will retain jurisdiction over the merged reexamination proceeding to await submission of the amendment or the expiration of the time to submit the amendment. After the amendment is received and processed by the CRU, or the time for submitting the amendment expires, the merged proceeding will be returned to the examiner, to issue an Office action.
Once the merged proceeding is returned to the examiner for issuance of an Office action, the examiner should prepare the action at the most advanced point possible for the first proceeding. Thus, if the first proceeding is ready for an Action Closing Prosecution (ACP) and the second proceeding does not provide any new information which would call for a new ground of rejection, the
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examiner should issue an ACP for the merged proceeding using the guidance for the prosecution stage set forth below.
If the decision on the reexamination request has not yet been made in Request 1 and Request 1 is grantable, it should be processed to the point where an order granting reexamination is mailed. An Office action should not be mailed with the order. Then, Request 1 is normally held until Request 2 is ready for the prosecution stage following an order granting reexamination, or until Request 2 is denied. Request 2 should be determined on its own merits without reference in the decision to Request 1. As before, an Office action should not be mailed with the order in Request 2.
A. The Prosecution Stage, After Merger
Where merger is ordered, the patent owner is required to maintain identical amendments in the merged reexamination files for purposes of the merged proceeding. The maintenance of identical amendments in the files is required as long as the reexamination proceedings remain merged. Where identical amendments are not present in the reexamination files at the time merger is ordered, the patent owner will have been required in an Office action to submit an appropriate amendment placing the same amendments in the proceedings. This may be accomplished by patent owner amending one or more of the proceedings, as appropriate. As pointed out above, patent owner must include (in the proceeding(s) for which any new or amended claims are being added) the remarks that set forth the basis for having presented any new or amended claims in the proceedings. Any inter partes third party requester will then have an opportunity to comment on patent owner’s response in accordance with the procedures in 37 CFR 1.947.
When prosecution is appropriate in merged proceedings, a single combined examiner’s action will be prepared. Each action will contain the control number of the two proceedings on every page. A single action cover mailing sheet (having both control numbers at the top) will be provided by the examiner to the technical support staff. The technical support staff will ensure that the action is processed and mailed to the patent owner and to each of the
requesters, that the action cover mailing sheets accurately reflect the mailing to each of these parties, that all parties receive copies of the action, the cover mailing sheets, and any other attachments, and that the entire action, including the mailing sheets and any other attachments, is scanned into the file of the Image File Wrapper (IFW) database.
When a “Notice of Intent To Issue Inter Partes Reexamination Certificate” (NIRC) is appropriate, a notice will be printed for the merged proceeding and scanned into the files of the merged proceeding. Both reexamination files will then be processed. The CRU should prepare the file of the concurrent proceedings in the manner specified in MPEP § 2687, before release to Office of Data Management (via the CRU).
The above guidance should be extended to situations where more than two requests for reexamination are filed for a single patent. The guidance should also be extended to situations where one of the requests is a request for ex parte reexamination. However, where an ex parte reexamination is to be included in the merger, allowance must be made for the statement and reply periods provided for in an ex parte reexamination after the order granting reexamination is issued. If all the reexamination proceedings to be merged are ex parte reexaminations, the present section does not apply, but rather see MPEP § 2283.
IV. PROCEEDINGS NOT MERGED
Pursuant to 35 U.S.C. 314(c), “[u]nless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section…shall be conducted with special dispatch within the Office.” This statutory provision is grounded on the need for certainty and finality as to the question of patentability raised by the request for reexamination. Thus, if a second request for reexamination will unduly delay the first reexamination proceeding, the two proceedings generally will not be merged. If the Office were to merge the two proceedings, the first reexamination proceeding would need to be withdrawn from its place in the process, thus delaying, instead of advancing, prosecution. This would run contrary to the statutory “special dispatch” requirement of 35
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U.S.C. 314 and its intent. On the other hand, if the Office does not merge, the first reexamination proceeding can be concluded, and any question of patentability raised by the second reexamination request can be resolved in the second proceeding, with no delay resulting. The second request is then considered based on the claims in the patent as indicated in the issued reexamination certificate, rather than the original claims of the patent. However, the Office always retains the authority to merge because in some instances, it may be more efficient to merge the two proceedings, which would foster “special dispatch.” The instances where the Office may, or may not, merge an ongoing reexamination proceeding with a subsequent reexamination proceeding, are addressed on a case-by-case basis.
For processing of the second reexamination proceeding, see MPEP §§ 2295 and 2695.
V. FEES IN MERGED PROCEEDINGS
Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., excess claims fee, extension of time fee, petition fee, appeal fee, brief fee, oral hearing fee), only a single fee need be paid. For example, only one fee need be paid for the patent owner’s appellant brief (or that of the third party requester), even though the brief relates to merged multiple proceedings and copies must be filed for each file in the merged proceeding.
VI. PETITION TO MERGE MULTIPLE COPENDING REEXAMINATION PROCEEDINGS
No petition to merge multiple reexamination proceedings is necessary since the Office will generally, sua sponte, make a decision as to whether it is appropriate to merge the multiple reexamination proceedings. If any petition to merge the proceedings is filed prior to the order to reexamine the second request, it will not be considered but will be returned to the party submitting the same. The decision expunging such a premature petition will be made of record in both reexamination files. See MPEP § 2667.
The patent owner can file a petition to merge the proceedings at any time after the order to reexamine
the second request. Note that the acceptance of a petition to merge the multiple proceedings at any time after the order to reexamine the second request is contrary to 37 CFR 1.939 since such acceptance can be prior to the issuance of the first Office action. Accordingly, the requirement of 37 CFR 1.939 is hereby waived to the extent that a petition for merger of a reexamination proceeding with a reexamination proceeding or with a reissue (see MPEP § 2686.03) can be submitted after the order to reexamine has been issued in all the reexamination proceedings to be merged. This waiver is made to assure merger at the earliest possible stage. The third party requester of a reexamination proceeding (reexamination # 1) does not have a right to file a petition under 37 CFR 1.182 to merge that reexamination proceeding with another reexamination proceeding (reexamination # 2), where the reexamination third party requester does not have any standing to request relief with respect to the other reexamination proceeding (reexamination # 2). No such standing is provided for anywhere in the statute. Instead of filing a petition under 37 CFR 1.182 to merge the reexamination proceedings, that third party requester may file a notification of concurrent proceedings pursuant to 37 CFR 1.985(b). After being notified of the existence of the concurrent reexamination proceedings and after consideration of the merger and suspension options becomes ripe, the Office would sua sponte consider any action to be taken. The requester does have the right to file a petition under 37 CFR 1.182 to stay the reexamination proceeding that it requested.
All decisions on the merits of petitions to merge multiple reexamination proceedings, where at least one of the proceedings is an inter partes reexamination, will be made by OPLA.
Decisions on the merits of petitions to merge multiple reexamination proceedings, where none of the proceedings is an inter partes reexamination, will be made by the CRU Director (or by the CRU SPRS, if the CRU Director delegates such to the CRU SPRS); see MPEP § 2283.
2686.02 Copending Reexamination and Interference Proceedings [R-11.2013]
37 CFR 1.993 Suspension of concurrent interference and inter partes reexamination proceeding.
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If a patent in the process of inter partes reexamination is or becomes involved in an interference or trial before the Patent Trial and Appeal Board, the Director may suspend the inter partes reexamination, interference, or trial. The Director will not consider a request to suspend an interference or trial unless a motion under § 41.121(a)(3) of this title to suspend the interference or trial has been presented to, and denied by, an administrative patent judge and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set.
37 CFR 41.8 Mandatory notices.
(a) In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the initiation of a contested case (§ 41.101), and within 20 days of any change during the proceeding, a party must identify:
(1) Its real party-in-interest, and
(2) Each judicial or administrative proceeding that could affect, or be affected by, the Board proceeding.
(b) For contested cases, a party seeking judicial review of a Board proceeding must file a notice with the Board of the judicial review within 20 days of the filing of the complaint or the notice of appeal. The notice to the Board must include a copy of the complaint or notice of appeal. See also §§ 1.301 to 1.304 of this title.
37 CFR 41.102 Completion of examination.
Before a contested case is initiated, except as the Board may otherwise authorize, for each involved application and patent:
(a) Examination or reexamination must be completed, and
(b) There must be at least one claim that:
(1) Is patentable but for a judgment in the contested case, and
(2) Would be involved in the contested case.
37 CFR 41.103 Jurisdiction over involved files.
The Board acquires jurisdiction over any involved file when the Board initiates a contested case. Other proceedings for the involved file within the Office are suspended except as the Board may order.
A patent being reexamined in an inter partes reexamination proceeding may be involved in an interference proceeding with at least one application, where the patent and the application are claiming the same patentable invention, and at least one of the application’s claims to that invention are patentable to the applicant. See MPEP Chapter 2300.
The general policy of the Office is that a reexamination proceeding will not be delayed, or stayed, because of an interference or the possibility
of an interference. The reason for this policy is the requirement of 35 U.S.C. 314(c) that all reexamination proceedings be conducted with “special dispatch” within the Office.
In general, the Office will follow the practice of making the required and necessary decisions in the inter partes reexamination proceeding and, at the same time, going forward with the interference to the extent desirable. (See Shaked v. Taniguchi , 21 USPQ2d 1289 (Bd. Pat. App. & Inter. 1991), where it was pointed out that neither the reexamination nor the interference will ordinarily be stayed where both proceedings are before the Office.) It is to be noted that 37 CFR 41.103 provides the Board with the flexibility to tailor a specific solution to occurrences where reexamination and interference proceedings for the same patent are copending, as such occurrences may arise. Decisions in the interference will take into consideration the status of the reexamination proceeding and what is occurring therein. The decision as to what actions are taken in the interference will, in general, be taken in accordance with normal interference practice.
Although a patent being reexamined via a reexamination proceeding may become involved in an interference proceeding, the reexamination proceeding itself can never be involved in an interference proceeding. See 35 U.S.C. 135(a) which states that “[w]henever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared”. The reexamination proceeding is neither an application nor a patent.
I. ATTEMPTING TO PROVOKE AN INTERFERENCE WITH A PATENT INVOLVED IN A REEXAMINATION PROCEEDING
See MPEP § 2284 for a discussion of the situation where an amendment seeking to provoke an interference with a patent involved in a reexamination proceeding is filed in a pending application. The practice and procedure in this area as to inter partes reexamination proceedings parallels that of ex parte reexamination proceedings.
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II. MOTION TO SUSPEND INTERFERENCE UNDER 37 CFR 41.121(a)(3) PENDING THE OUTCOME OF A REEXAMINATION PROCEEDING
A miscellaneous motion under 37 CFR 41.121(a)(3) to suspend an interference pending the outcome of a reexamination proceeding may be made at any time during the interference by any party thereto. See 37 CFR 41.123(b) for the proper procedure. The motion must be presented to the Administrative Patent Judge (APJ) who will decide the motion based on the particular fact situation. However, suspension is not favored. Normally, no consideration will be given such a motion unless and until a reexamination order is issued, nor will suspension of the interference normally be permitted until after any motions have been disposed of in the interference proceeding. If the motion under 37 CFR 41.121(a)(3) is denied by the APJ, a request to stay the interference may be made to the Director of the USPTO under 37 CFR 1.993. A request to stay an interference under 37 CFR 1.993 will be decided by the Chief Administrative Patent Judge of the Board.
III. REQUEST FOR REEXAMINATION FILED DURING INTERFERENCE
In view of the provisions of 37 CFR 1.913, “[a]ny person may, at any time during the period of enforceability of a patent” file a request for inter partes reexamination. Under 37 CFR 41.8(a), the patent owner must notify the Board that a request for reexamination was filed within twenty days of receiving notice of the request having been filed. Such requests for reexamination will be processed in the normal manner. No delay, or stay, of the reexamination will occur where the third party requester is not a party to the interference, or where the requester is a party to the interference but does not timely petition for a stay or delay. If the examiner orders reexamination pursuant to 37 CFR 1.931 and subsequently, in the reexamination proceeding, rejects a patent claim corresponding to a count in the interference, the attention of the Board shall be called to the rejection.
IV. PETITION TO STAY REEXAMINATION PROCEEDING BECAUSE OF INTERFERENCE
Any petition to stay an inter partes reexamination proceeding, because of an interference, which is filed prior to the first Office action in the reexamination proceeding will not be considered, and will be returned to the party submitting the petition, or it will be expunged, if the petition has been scanned into the Office's IFW system prior to its discovery. See 37 CFR 1.939 and MPEP § 2625. The decision returning or expunging such a premature petition will be made of record in the reexamination file. A petition to stay the reexamination proceeding because of the interference may be filed by the patent owner after the first Office action in the reexamination proceeding. If a party to the interference, other than the patent owner, is also a requester of the reexamination, that party may also petition to stay the reexamination proceeding after the first Office action. If the party to the interference other than patent owner is not the reexamination requester, any petition by that party is improper under 37 CFR 1.905 and will not be considered. Any such improper petitions will be returned to the party submitting the same. Premature petitions to stay the reexamination proceedings, i.e., those filed prior to the first Office action in the reexamination proceeding, will be returned by a Legal Advisor of the Office of Patent Legal Administration (OPLA) as premature. Petitions to stay filed subsequent to the date of the first Office action in the reexamination proceeding will be referred to OPLA for decision by a Senior Legal Advisor of that Office. All decisions on the merits of petitions to stay a reexamination proceeding because of an interference will be made in OPLA.
V. ACTION IN INTERFERENCE FOLLOWING REEXAMINATION
If one or more claims of a patent which is involved in an interference are canceled or amended by the issuance and publication of a reexamination certificate, the Board must be promptly notified.
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Upon issuance and publication of the reexamination certificate, the patent owner must notify the Board of such issuance.
2686.03 Copending Reexamination and Reissue Proceedings [R-07.2015]
37 CFR 1.991 Merger of concurrent reissue application and inter partes reexamination proceeding.
If a reissue application and an inter partes reexamination proceeding on which an order pursuant to § 1.931 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an inter partes reexamination proceeding is ordered, the merged proceeding will be conducted in accordance with §§ 1.171 through 1.179, and the patent owner will be required to place and maintain the same claims in the reissue application and the inter partes reexamination proceeding during the pendency of the merged proceeding. In a merged proceeding the third party requester may participate to the extent provided under §§ 1.902 through 1.997 and 41.60 through 41.81, except that such participation shall be limited to issues within the scope of inter partes reexamination. The examiner’s actions and any responses by the patent owner or third party requester in a merged proceeding will apply to both the reissue application and the inter partes reexamination proceeding and be physically entered into both files. Any inter partes reexamination proceeding merged with a reissue application shall be concluded by the grant of the reissued patent.
37 CFR 1.937 Conduct of inter partes reexamination.
(a) All inter partes reexamination proceedings, including any appeals to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office, unless the Director makes a determination that there is good cause for suspending the reexamination proceeding.
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37 CFR 1.995 Third party requester’s participation rights preserved in merged proceeding.
When a third party requester is involved in one or more proceedings, including an inter partes reexamination proceeding, the merger of such proceedings will be accomplished so as to preserve the third party requester’s right to participate to the extent specifically provided for in these regulations. In merged proceedings involving different requesters, any paper filed by one party in the merged proceeding shall be served on all other parties of the merged proceeding.
37 CFR 1.997 Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding.
(a) To conclude an inter partes reexamination proceeding, the Director will issue and publish an inter partes reexamination certificate in accordance with 35 U.S.C. 316 setting forth the results of the inter partes reexamination proceeding and the
content of the patent following the inter partes reexamination proceeding.
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(d) If a certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto.
(e) If the inter partes reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.991, the reissued patent will constitute the reexamination certificate required by this section and 35 U.S.C. 316.
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37 CFR 1.176 Examination of reissue.
(a) A reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications. Applications for reissue will be acted on by the examiner in advance of other applications.
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The general policy of the Office is that the examination of a reissue application and an inter partes reexamination proceeding will not be conducted separately at the same time as to a particular patent. The reason for this policy is to permit timely resolution of both the reissue and the reexamination to the extent possible and to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two files on behalf of the patent owner. If both a reissue application and a reexamination proceeding are pending concurrently on a patent, a decision will normally be made to merge the reissue application examination and the reexamination or to stay one of the two. See In re Onda, 229 USPQ 235 (Comm’r Pat. 1985). The decision as to whether the reissue application examination and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed, is made in OPLA.
Where a reissue application and a reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of such. 37 CFR 1.178(b), 1.565(a), and 1.985. The patent owner should file in the reissue application, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.178(b) in order to notify the Office in the reissue application of the existence of the reexamination proceeding on the same patent. See MPEP § 1418. In addition, the patent owner
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should file in the reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.565(a) or 1.985 (depending on whether the reexamination proceeding is an ex parte reexamination proceeding or an inter partes reexamination proceeding) to notify the Office in the reexamination proceeding of the existence of the two concurrent proceedings.
I. TIME FOR MAKING DECISION ON MERGING OR STAYING THE PROCEEDINGS
A decision whether or not to merge the examination of a reissue application and an inter partes reexamination proceeding, or to stay one of the two, will not be made prior to the mailing of the order to reexamine the patent pursuant to 37 CFR 1.931. Until such time as the reexamination is ordered, the examination of the reissue application will proceed. A determination on the request for reexamination should not be delayed despite the existence of a copending reissue application, since 35 U.S.C. 312(a) requires a determination within three months following the filing date of the request. See MPEP § 2641. If the decision on the request denies reexamination (MPEP § 2647 ), the examination of the reissue application should be continued. If reexamination is to be ordered (MPEP § 2646), the signed order should be (after review by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS)) promptly forwarded to the CRU support staff for mailing; no first Office action will accompany the decision ordering reexamination. At the same time that the signed order is forwarded to OPLA, (A) OPLA should be notified that the proceedings are ready for consideration of merger, and (B) if any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA.
If a reissue application is filed during the pendency of a reexamination proceeding, OPLA should be notified, as promptly as possible after the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA.
The decision on whether or not to merge the reissue application examination and the reexamination proceeding or which (if any) is to be stayed (suspended), will generally be made as promptly as possible after receipt of the notification to OPLA, and delivery of all the paper files to OPLA.
Until a decision is mailed merging the reissue application examination and the reexamination proceeding, or staying one of them, prosecution in the reissue application and the reexamination proceeding will continue and be conducted simultaneously, but separately.
The Office may in certain situations issue a certificate at the termination of the prosecution of a reexamination proceeding, even if a copending reissue application or another reexamination request has already been filed.
II. CONSIDERATIONS IN DECIDING WHETHER TO MERGE THE REISSUE AND REEXAMINATION OR WHETHER TO STAY ONE OF THEM
The decision on whether to merge the reissue application examination and reexamination proceeding, or stay one of them, will be made on a case-by-case basis. The decision to merge, or not to merge, is within the sole discretion of the Office to facilitate/carry out the orderly operation of the Office in addressing the proceedings. The status of the reissue application and the reexamination proceeding will be taken into account in the decision as to whether merger will be ordered, or one of the two proceedings stayed. Where there is “good cause” to stay the reexamination proceeding, the Director may do so pursuant to 35 U.S.C. 314(c).
A. Reissue About To Issue, Reexamination Requested
If the reissue patent will issue before the determination on the reexamination request must be made, the determination on the request should normally be made after the granting of the reissue patent; and then the determination should be made on the basis of the claims in the reissue patent. The reexamination, if ordered, would then be based on the reissue patent claims rather than the original patent claims. Since the reissue application would
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no longer be pending, the reexamination would be processed in a normal manner.
Where a reissue patent has been issued, the determination on the request for reexamination should specifically point out that the determination has been made on the claims of the reissue patent and not on the claims of the original patent. Any amendment made in the reexamination proceeding should treat the changes made by the reissue as the text of the patent, and all bracketing and underlining made with respect to the patent as changed by the reissue. Note that the reissue claims used as the starting point in the reexamination proceeding must be presented in the reexamination proceeding as a “clean copy.” Thus, words bracketed in the reissue patent claim(s) would not appear at all in the reexamination clean copy of the claim(s). Also, words that were added via the reissue patent will appear in italics in the reissue patent, but must appear in plain format in the reexamination clean copy of the claim(s).
If a reissue patent issues on the patent under reexamination after reexamination is ordered, the next action from the examiner in the reexamination should point out that further proceedings in the reexamination will be based on the claims of the reissue patent and not on the patent surrendered. Form paragraph 22.05 may be used in the Office action.
¶ 22.05 Reexamination (Ex Parte or Inter Partes) Based on Reissue Claims
In view of the surrender of original Patent No. [1] and the granting of Reissue Patent No. [2] which issued on [3], all subsequent proceedings in this reexamination will be based on the reissue patent claims.
Where the reissue patent has issued prior to the filing of a request for reexamination of the original patent, see MPEP § 2640.
B. Reissue Pending, Reexamination Request Filed
Where a reissue patent will not be granted prior to the expiration of the three-month period for making the determination on the reexamination request, a decision will be made after an order to reexamine is issued as to whether the reissue application
examination and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed. In this situation, no first Office action will have accompanied the order for reexamination.
In making a decision on whether or not to merge the reissue application examination and the reexamination proceeding, consideration will be given as to whether issues are raised in the reissue application that would not be proper for consideration in reexamination and/or not be proper for comment by the reexamination third party requester. If such issues are raised, merger would ordinarily not be ordered, and one of the two proceedings stayed. Consideration will also be given to the status of the reissue application examination at the time the order to reexamine the patent pursuant to 37 CFR 1.931 is mailed. For example, if the reissue application is on appeal to the Board or to the courts, that fact would be considered in making a decision whether to merge the reissue application examination and the reexamination proceeding or stay one of them. See In re Scragg, 215 USPQ 715 (Comm’r Pat. 1982), In re Stoddard, 213 USPQ 386 (Comm’r Pat. 1982).
If merger of the reissue application examination and the reexamination proceeding is ordered, the order merging them will also require that the patent owner place the same claims in the reissue application and in the reexamination proceeding for purposes of the merger. The decision to merge may require an amendment to be filed by the patent owner to provide identical sets of claims, within a specified time set in the decision to merge.
If merger would be appropriate, but the examination of the reissue application has progressed to a point where a merger is not desirable at that time, then the reexamination proceeding will generally be stayed until the reissue application examination is complete on the issues then pending. After completion of the examination on the issues then pending in the reissue application examination, the stay of the reexamination proceeding will be removed. The proceedings would be merged if the reissue application is pending, or the reexamination proceeding will be conducted separately if the reissue application has become abandoned. The reissue application examination would be reopened, if
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necessary, for merger of the reexamination proceeding therewith. If a stay of a reexamination proceeding has been removed following a reissue application examination, the first Office action will set a shortened statutory period for response of one month or thirty days (whichever is longer) unless a longer period for response clearly is warranted by the nature of the examiner’s action. The second Office action will normally be final and will also set a one month or thirty days period for response. These shortened periods are considered necessary to prevent undue delay in concluding the proceedings and also to proceed with “special dispatch” in view of the earlier stay.
If the reissue application examination and reexamination proceedings are merged, the issuance of the reissue patent will also serve as the inter partes reexamination certificate under 37 CFR 1.997, and the reissue patent will so indicate.
C. Reexamination Proceedings Underway, Reissue Application Filed
When a reissue application is filed after an inter partes reexamination request has been filed, OPLA should be notified, as promptly as possible. A determination will be made as to whether reexamination should be ordered. If reexamination is ordered, no first Office action will accompany the decision ordering reexamination. The order and any of the files that are paper files should then be hand delivered to OPLA.
Where reexamination has already been ordered prior to the filing of a reissue application, OPLA should be notified, as promptly as possible, that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the email notification to OPLA.
In making a decision on whether or not to merge the reissue application examination and the reexamination proceeding, consideration will be given as to whether issues are raised in the reissue application that would not be proper for consideration in reexamination and/or not be proper for comment by the reexamination third party
requester. If such issues are raised, merger would ordinarily not be ordered, and one of the two proceedings stayed. In addition, consideration will also be given to the status of the reexamination proceeding. For example, if the reexamination proceeding is on appeal to the Board or to the U.S. Court of Appeals for the Federal Circuit, or a Notice of Intent to Issue a Reexamination Certificate was issued for the reexamination proceeding, that fact would be considered in making a decision whether to merge the reissue application examination and the reexamination proceeding or stay one of them.
D. Examiner Assignment
With respect to the appropriate examiner assignment of the merged reexamination proceeding and the reissue application examination, see MPEP § 2636.
III. CONDUCT OF MERGED REISSUE AND REEXAMINATION PROCEEDING
The decision ordering merger will set forth the practice and procedure to be followed in the examination and prosecution of the merged reissue and inter partes reexamination proceeding. Any questions as to the practice and procedure set forth should be referred to OPLA. In addition, the examiner should consult with OPLA prior to issuing any Office action in the merged proceeding, in the same manner as he or she would consult with the OPLA in an inter partes reexamination proceeding that has not been merged.
Where merger is ordered, the patent owner is required to maintain identical amendments in the reissue application and the reexamination file for purposes of the merged proceeding. The maintenance of identical amendments in both files is required as long as the reissue and reexamination proceedings remain merged. Where identical amendments are not present in both files at the time merger is ordered, the patent owner will be required to submit an appropriate amendment placing the same amendments in both proceedings. This may be accomplished by amending either of the two proceedings (the reissue application or the reexamination) or both of them, as appropriate. The patent owner must not address any issue of patentability in the amendment. Amendments in a
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merged reexamination/reissue proceeding are submitted under 37 CFR 1.173, in accordance with reissue practice. In the event that an amendment to make the claims the same in each file is required by the merger decision (identical amendments to be placed in all files) but is not timely submitted, any claim that does not contain identical text in all of the merged proceedings should be rejected under 35 U.S.C. 112, paragraph 2, as being indefinite as to the content of the claim, and thus failing to particularly point out the invention.
IV. INTER PARTES REEXAMINATION, EX PARTE REEXAMINATION, AND REISSUE APPLICATION FOR THE SAME PATENT
It will sometimes happen that an inter partes reexamination, an ex parte reexamination and a reissue application will all be copending. In these situations, OPLA should be notified by, as promptly as possible after the reissue application reaches the TC, that the proceedings are ready for consideration of merger. If any of the reexamination files, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA. The three most common examples of this are as follows:
(A) A reissue application was previously merged with an ex parte reexamination, and then an inter partes reexamination is filed. An order to reexamine is prepared, and the signed order and any paper files should be promptly processed for mailing of the order, and then consideration by OPLA as to whether or not to merge the proceedings. OPLA should be notified of potential merger consideration.
(B) A reissue application was previously merged with an inter partes reexamination, and then a request for ex parte reexamination is filed. After an order to reexamine has been issued, the TC Quality Assurance Specialist (QAS) will retain jurisdiction over the merged reexamination proceeding until the patent owner’s statement and any reply by the ex parte third party requester have been received for the ex parte reexamination request, or until the time for filing the same expires. OPLA should then be notified that the proceedings are ready for consideration of merger. If any of the reexamination files, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA.
(C) An inter partes reexamination was merged with an ex parte reexamination, and then a reissue application is filed. Once the reissue application is received, OPLA should be promptly notified that the proceedings are ready for consideration of merger. If any of the reexamination files, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA.
The decision to merge the three proceedings by OPLA will provide the guidance for conducting the merged proceeding. It is to be noted that the merger will not be carried out pursuant to MPEP Chapter 2200. Prosecution prior to the point of merger will remain as-is, in the files.
In the event the inter partes reexamination prosecution is terminated and only the ex parte reexamination and the reissue application remain, the prosecution will no longer be governed by the present section. Any further prosecution will be governed by MPEP Chapter 2200; specifically see MPEP § 2285.
V. PETITION TO MERGE REISSUE APPLICATION AND INTER PARTES REEXAMINATION PROCEEDING OR TO STAY EITHER OF THE TWO BECAUSE OF THE EXISTENCE OF THE OTHER
No petition to merge the reexamination proceeding and the reissue application examination, or stay one of them, is necessary, since the Office will generally, sua sponte , make a decision to merge the reexamination proceeding and the reissue application examination or to stay one of them. If any petition to merge the reexamination proceeding and the reissue application examination, or to stay one of them because of the other, is filed prior to the determination (37 CFR 1.923) and the order to reexamine (37 CFR 1.931), it will not be considered, but will be returned to the party submitting the same by the CRU (or it will be expunged, if the petition has been scanned into the Office's IFW system prior to its discovery), regardless of whether the petition is filed in the reexamination proceeding, the reissue application, or both. This is necessary in order to prevent premature papers relating to the reexamination proceeding from being filed. The decision returning or expunging such a premature
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petition will be made of record in both the reexamination file and the reissue application file. See MPEP § 2667.
The patent owner may file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, or stay one of them because of the other, after the order to reexamine (37 CFR 1.931), in the event the Office has not acted prior to that date to merge or stay. The third party requester does not have a right to file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, since the reexamination third party requester does not have any standing to request relief with respect to a reissue application, to which requester cannot be a party. No such standing is provided for anywhere in the statute. Instead of filing a petition under 37 CFR 1.182 to merge a reexamination proceeding with a reissue application, a third party requester may file a notification of concurrent proceedings pursuant to 37 CFR 1.985(b). After being notified of the existence of a reissue application and after consideration of the merger and suspension options becomes ripe, the Office of Patent Legal Administration would sua sponte consider any action to be taken after the order to reexamine (37 CFR 1.931), in the event the Office has not acted prior to that date to merge or stay. The requester does have the right to file a petition under 37 CFR 1.182 to stay the reexamination proceeding that it requested.
Any merger or stay petition under 37 CFR 1.182 filed prior to the initial Office action on the merits must also be filed under 37 CFR 1.183 to waive the requirement of 37 CFR 1.939(b) that no paper shall be filed prior to the initial Office action on the merits of the inter partes reexamination proceeding. Any petition to merge or stay which is filed by a party other than the patent owner will not be considered, but will be returned to that party by OPLA (or expunged by OPLA, if the petition was inadvertently already entered).
All petitions to merge or stay which are filed by the patent owner or the third party requester subsequent to the date of the order for reexamination will be referred to OPLA for decision.
VI. FEES IN MERGED PROCEEDINGS
Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., excess claims fee, extension of time fee, petition fees, appeal fees, brief fees, oral hearing fees), only a single fee need be paid. For example, only one fee need be paid for an appellant brief, even though the brief relates to merged multiple examinations and copies of the brief are filed for each file in the merger (as is required). As to excess claim fees, reissue practice will control.
VII. INTERVIEWS IN MERGED PROCEEDINGS
Pursuant to 37 CFR 1.955, an interview which discusses the merits of a proceeding is not permitted in an inter partes reexamination proceeding. Thus, in a merged proceeding of an inter partes reexamination and a reissue application, there will be no inter partes interview as to the substance of the proceeding. Also, there will be no separate ex parte interview as to the substance of the proceeding with either the patent owner (the reissue applicant) or the third party requester (of the reexamination). Accordingly, where a party requests any information as to the merits of the merged proceeding, the examiner will not conduct an interview with that party to provide the information. Further, an informal amendment by the patent owner (the reissue applicant) will not be accepted, because that would be tantamount to an ex parte interview. All communications between the Office and the patent owner (and the third party requester) which are directed to the merits of the merged proceeding must be in writing and filed with the Office for entry into the record of the proceeding.
VIII. EXAMINER’S AMENDMENT TO PLACE PROCEEDING IN CONDITION FORALLOWANCE IN MERGED REISSUE/ INTER PARTES REEXAMINATION
As pointed out immediately above, interviews, both personal and telephone are not permitted in a merged reissue/ inter partes reexamination proceeding. Thus, the examiner is not permitted to telephone the patent owner/reissue applicant and obtain authorization to make an amendment. Accordingly, the only times that an examiner’s amendment can be made in
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conjunction with a Notice of Allowability are where the patent owner authorization need not be obtained. Such amendments include:
(A) An examiner’s amendment to deal with formal matters such as grammar, incorrect spelling, or incorrect number; i.e., matters that do not involve a rejection, do not go to the merits, and do not require the examiner to obtain approval.
(B) An examiner’s amendment to change the title.
See also MPEP § 1302.04 et seq. as to examiner’s amendments not needing authorization by an applicant or a patent owner. Note, however, that in a merged reissue/ inter partes reexamination proceeding (as opposed to an application per se) all such examiner’s amendments must be made by formal examiner’s amendment accompanying the Notice of Allowability, in order to provide notice of the changes made in the patent being reexamined to both the patent owner/reissue applicant and the third party requester.
Note that any change going to the merits of the case (i.e., more than a formal matter) could not be made by examiner’s amendment accompanying the Notice of Allowability. Rather, a change going to the merits would require (A) reopening of prosecution with the approval of the CRU Director, (B) an Office action suggesting the change to the patent owner/reissue applicant, (C) a formal amendment submitted by patent owner/reissue applicant, and (D) an opportunity for the third party requester to comment on the patent owner/applicant’s submission.
2686.04 Reexamination and Litigation Proceedings [R-07.2015]
35 U.S.C. 314 Conduct of inter partes reexamination proceedings.
*****
[Editor Note: As in effect prior to September 16, 2012]
(c) SPECIAL DISPATCH.— Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.
35 U.S.C. 317 Inter partes reexamination prohibited.
*****
[Editor Note: As in effect prior to September 16, 2012]
(b) FINAL DECISION.— Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.
35 U.S.C. 318 Stay of litigation.
[Editor Note: As in effect prior to September 16, 2012]
Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending determines that a stay would not serve the interests of justice.
37 CFR 1.987 Suspension of inter partes reexamination proceeding due to litigation.
If a patent in the process of inter partes reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the inter partes reexamination proceeding.
37 CFR 1.907 Inter partes reexamination prohibited. *****
(b) Once a final decision has been entered against a party in a civil action arising in whole or in part under 28 U.S.C. 1338 that the party has not sustained its burden of proving invalidity of any patent claim-in-suit, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claim on the basis of issues which that party, or its privies, raised or could have raised in such civil action, and an inter partes reexamination requested by that party, or its privies, on the basis of such issues may not thereafter be maintained by the Office.
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35 U.S.C. 311 permits a request for inter partes reexamination to be filed “at any time.” Thus, requests for inter partes reexamination can be filed where the patent (for which reexamination is requested) is involved in concurrent litigation. The guidelines set forth below will generally govern Office handling of inter partes reexamination requests where there is concurrent litigation.
I. COURT-ORDERED/SANCTIONED REEXAMINATION PROCEEDING, LITIGATION STAYED FOR REEXAMINATION, OR EXTENDED PENDENCY OF REEXAMINATION PROCEEDING CONCURRENT WITH LITIGATION
Where a request for reexamination indicates that litigation is stayed for the purpose of reexamination, all aspects of the proceeding will be expedited to the extent possible. Cases will be taken up for action at the earliest time possible, and Office actions in these reexamination proceedings will normally set a one-month shortened statutory period for response rather than the two months usually set in reexamination proceedings. Response periods may be extended only upon a strong showing of sufficient cause (see MPEP § 2665). The statutory requirement for “special dispatch” in reexamination often becomes important, and sometimes critical, in coordinating the concurrent litigation and reexamination proceedings.
II. FEDERAL COURT DECISION KNOWN TO EXAMINER AT THE TIME THE DETERMINATION ON THE REQUEST FOR REEXAMINATION IS MADE
If a federal court decision on the merits of a patent is known to the examiner at the time the determination on the request for inter partes reexamination is made, the following guidelines will be followed by the examiner:
(A) The Third Party Requester Was Not a Party to the Litigation.
When the initial question as to whether the art raises a question of patentability as to a patent claim is under consideration, the existence of a final court decision of claim validity in view of the same or different art does not necessarily preclude the presence of such a question. This is true because of
the different standards of proof and claim interpretation employed by the district courts and the Office. See for example In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (manner of claim interpretation that is used by courts in litigation is not the manner of claim interpretation that is applicable during prosecution of a pending application before the PTO) and In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985) (the 35 U.S.C. 282 presumption of patent validity has no application in reexamination proceedings). Thus, while the Office may accord deference to factual findings made by the court, the determination of whether a basis for reexamination exists will be made independently of the court’s decision on validity, since the decision is not controlling on the Office. See In re Swanson et al, 540 F.3d 1368, 1378 (Fed. Cir. 2008).
A non-final holding of claim invalidity or unenforceability will also not be controlling on the question of whether a substantial new question of patentability or reasonable likelihood of prevailing is present.
Only a final holding of claim invalidity or unenforceability (after all appeals) is controlling on the Office. In such cases, a substantial new question of patentability or reasonable likelihood of prevailing would not be present as to the claims held invalid or unenforceable. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).
(B) The Third Party Requester Was a Party to the Litigation.
Final Holding upholding validity: The provisions of 35 U.S.C. 317(b) and 37 CFR 1.907(b) apply. Where a final decision was entered against a party in a federal court civil action (arising in whole or in part under 28 U.S.C. 1338) that the party did not sustain its burden of proving invalidity of a patent claim in suit, that party and its privies may not request inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in the civil action. Further, an inter partes reexamination already requested by that party, or its privies, on the basis of such issues will not be maintained by the Office, i.e., the proceeding will be concluded. Note, however, that the statute does not preclude an ex parte reexamination by the same third party requester. See also subsection V. below.
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In view of the above, when the examiner is aware that the third party requester was a party to previous federal court litigation as to the patent for which inter partes reexamination has been requested, the examiner must determine:
(1) Was the federal court decision adverse to the third party requester as to at least one claim of the patent?
(2) Was the federal court decision a final decision, after all appeals?
(3) Is the issue being raised in the reexamination request the same issue as was raised in the federal court during the civil action, or an issue that the third party requester could have raised in the federal court during the civil action?
- If the answer to all of questions (1)-(3) is “yes” for one or more (but not all) of the claims for which reexamination was requested in the proceeding; those claims will not be treated. The examiner’s action will point out the claims not treated and the reason why, i.e., a discussion of the above considerations (1)-(3). The guidelines set forth above in subsection II.(A) will be used for the claims remaining.
- If the answer to question (1) or to question (3) is “no” for all claims for which reexamination was requested, then the examination of the reexamination proceeding will proceed without any discussion on the record of considerations (1)-(3), using the guidelines set forth above in subsection II.(A).
- If, for any claim for which reexamination was requested, the answer to both of questions (1) and (3) is “yes”, but the answer to question (2) is “no”, then examination of the reexamination proceeding will proceed using the guidelines set forth above in subsection II.(A). The examiner’s action will contain a discussion of considerations (1)-(3).
If the examiner subsequently becomes aware that the federal court decision has become final or if the answer to each of questions (1)-(3) is “yes” for all claims for which reexamination was requested in the proceeding, then the examiner should notify his or her SPRS, who will contact OPLA for further guidance. See also subsection V. below.
Final Holding of invalidity: A final holding of claim invalidity or unenforceability (after all appeals) is controlling on the Office. In such cases, a substantial new question of patentability or reasonable likelihood of prevailing would not be present as to the claims held invalid or unenforceable. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152
(Fed. Cir. 1988). Where all claims for which reexamination was requested are affected, the reexamination will be vacated/terminated by the CRU Director. A non-final holding of claim invalidity or unenforceability, however, will not be controlling on the question of whether a substantial new question of patentability or reasonable likelihood of prevailing is present.
(C) Specific Situations.
For a discussion of the policy in specific situations where a federal court decision has been issued, see MPEP § 2642 and subsection V. below.
Note the following two Federal Circuit decisions involving reexamination proceedings where the court affirmed the Office’s rejections even though parallel district court proceeding upheld the validity of the claims. In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007) and In re Translogic Technology, Inc., 504 F.3d 1249, 84 USPQ2d 1929 (Fed. Cir. 2007).
In Trans Texas, the patent being reexamined was subject to an infringement suit, in which the district court had issued its claim construction ruling (in a district court opinion) as to the definition of a term. The parties ultimately reached a settlement before trial, and the district court issued an “Order of Dismissal with Prejudice.” The patent owner relied on that district court claim construction ruling in a reexamination proceeding, and argued that the Office was bound by that district court claim construction ruling, under the doctrine of issue preclusion. The Federal Circuit stated that issue preclusion could not be applied against the Office based on a district court holding in an infringement proceeding, since the Office was not a party to that earlier infringement proceeding.
In Translogic, a district court infringement suit proceeded in parallel with a reexamination
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proceeding. The district court upheld the validity of the patent in the infringement suit, while the reexamination examiner found the claim combination to be obvious. The examiner’s rejection was affirmed by the Board. The defendant (the alleged infringer) of the infringement suit appealed the district court decision to the Federal Circuit, while the patent owner appealed the Board’s decision to the Federal Circuit. The Federal Circuit consolidated the appeals, and then addressed only the patent owner’s reexamination appeal from the Board. The Federal Circuit affirmed the examiner’s conclusion of obviousness by relying upon and providing an extensive discussion of KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Note also In re Swanson et al.,, 540 F.3d 1368, 88 USPQ 2d 1196 (Fed. Cir. 2008) where the Federal Circuit held that the prior federal court judgment upholding validity over a specific prior art reference (in Abbott Labs. v. Syntron Bioreseach, Inc., 334 F.3d 1343 (Fed. Cir. 2003)), did not preclude the Office’s finding that a substantial new question of patentability existed as to the same claims based on the same prior art reference applied in the same manner in the subsequent ex parte reexamination proceeding, and did not preclude the Office’s finding that the patent claims were unpatentable.
Finally, see In re Baxter International Inc., 678 F.3d 1357, 102 USPQ2d 1925 (Fed. Cir. 2012) (patent reexamination should take notice of a court decision but the Office need not come to the same conclusion as the court).
III. REEXAMINATION WITH CONCURRENT LITIGATION BUT ORDERED PRIOR TO FEDERAL COURT DECISION
In view of the statutory mandate to make the determination on a request for reexamination within three months, the determination on the request based on the record before the examiner will be made without awaiting a decision by the federal court. It is not realistic to attempt to determine what issues will be treated by the federal court prior to the court’s decision. Accordingly, the determination on the request will be made without considering the issues allegedly before the court. If reexamination is ordered, the reexamination generally (see
discussion immediately below) will continue until the Office becomes aware that a court decision has issued. At such time, the request will be reviewed in accordance with the guidelines set forth below.
In Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988), the U.S. Court of Appeals for the Federal Circuit stated the following as to the Office’s authority to stay a reexamination process pending the outcome of a federal district court case where invalidity is an issue:
“Whatever else special dispatch means, it does not admit of an indefinite suspension of reexamination proceedings pending conclusion of litigation. If it did, one would expect to find some intimation to that effect in the statute, for it would suggest the opposite of the ordinary meaning. But there is none.”
“The Commissioner… has no inherent authority, only that which Congress gives. It did not give him authority to stay reexaminations; it told him to conduct them with special dispatch. Its silence about stays cannot be used to countermand that instruction.”
The Ethicon case was decided as to ex parte reexamination, for which 35 U.S.C. 305 dictates in its last sentence:
“All reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office.”
For inter partes reexamination, however, 35 U.S.C. 314 provides a qualification as to conducting reexamination with special dispatch:
“Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.” [Emphasis added.]
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35 U.S.C. 314 provides for special dispatch in inter partes reexamination “[u]nless otherwise provided by the Director for good cause.” Accordingly, where there is good cause for the Director of the USPTO to suspend (stay) reexamination proceedings pending the conclusion of litigation, a suspension will be effected. This matter will be approached on a case-by-case basis. See subsection V. below for an actual situation where there was pending litigation having the potential to terminate a reexamination prosecution under 35 U.S.C. 317(b), and a suspension was granted.
It should be noted that a suspension will not be considered on its merits prior to ordering of reexamination. Until that point, there is no proceeding to suspend, and the Office must issue its decision on the request within the statutorily mandated three months. Also, suspension will not be considered on its merits when there is an outstanding Office action. In order to ensure consideration on the merits of a petition to suspend where there is an outstanding Office action, the patent owner must: (1) provide a complete response to the outstanding Office action, and (2) include a petition to suspend under 37 CFR 1.182.
It should also be noted that if, pursuant to 35 U.S.C. 318, a court stays litigation as to the patent being reexamined, action in the reexamination proceeding would not be suspended. This is so because action in the reexamination proceeding would be needed to resolve the “issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order” set forth in 35 U.S.C. 318.
IV. FEDERAL COURT DECISION ISSUES AFTER INTER PARTES REEXAMINATION ORDERED
Pursuant to 37 CFR 1.985(a), the patent owner in an inter partes reexamination proceeding must
promptly notify the Office of any federal court decision involving the patent.
Upon the issuance of a holding of claim invalidity or unenforceability by a federal court, reexamination of those claims will continue in the Office until the decision becomes final. A non-final court decision concerning a patent under reexamination shall have no binding effect on a reexamination proceeding.
Where an inter partes reexamination proceeding is currently pending and a final federal court decision issues after all appeals, the parties are required to notify the Office of the final court decision. The reexamination proceeding is reviewed to see if no substantial new question of patentability remains or reasonable likelihood of prevailing remains (as to one or more claims) due to a holding that patent claims, which are under reexamination, are invalid. If the final court decision holds the claims to be not invalid, and if a party to the reexamination proceeding (such as, e.g., the patent owner) wishes the Office to terminate the proceeding pursuant to pre-AIA 35 U.S.C. 317(b), the party may notify the Office of the final court decision by filing a grantable petition under 37 CFR 1.182 to terminate prosecution of the claims under reexamination which were finally held to be not invalid, in accordance with the guidelines set forth in subsection V below.
A final court holding of invalidity/unenforceability is binding on the Office. Upon the issuance of a final holding of invalidity or unenforceability, the claims held invalid or unenforceable will be withdrawn from consideration in the reexamination if the Office is notified of the final court decision. The reexamination will continue as to any remaining claims. If all of the claims being examined are finally held invalid or unenforceable, and if the Office is notified of the final court decision, the reexamination will be vacated/terminated by the CRU Director as no longer containing a substantial new question of patentability or reasonable likelihood of prevailing. If not all claims being examined were held invalid, a substantial new question of patentability or reasonable likelihood of prevailing may still exist as to the remaining claims. In such a situation, the remaining claims would be examined; and, as to the claims held invalid, form paragraph 26.80 should be used at the beginning of the Office action.
¶ 26.80 Claims Held Invalid by Court, No Longer Being Reexamined
Claims [1] of the [2] patent are not being reexamined in view of the final decision of [3]. Claims [1] were held invalid by the [4].
Examiner Note:
1. In bracket 1, insert the claims held invalid.
2. In bracket 2, insert the patentee (e.g., Rosenthal, J. Doe et al).
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3. In bracket 3, insert the decision (e.g., ABC Corp. v. John Doe, 888 F. 3d 88, 999 USPQ2d 99 (Fed. Cir. 1999) or XYZ Corp. v. Jones, 888 F. Supp. 2d 88, 999 USPQ2d 1024 (N.D. Cal. 1999)).
4. In bracket 4, insert the name of the court (e.g., the Court of Appeals for the Federal Circuit, or the Federal District Court).
The issuance of a final court decision after all appeals (in a civil action arising in whole or in part under 28 U.S.C. 1338) upholding validity during an inter partes reexamination, where the person who filed the request was a party to the litigation, will have the effect that the Office will discontinue examination of all claims affected by the validity holding if a grantable petition under 37 CFR 1.182 to terminate reexamination of those claims is filed in accordance with guidelines set forth in subsection V. If the provisions of 37 CFR 1.907(b) apply such that all of the claims in the reexamination proceeding cannot be maintained, reexamination is terminated. If the provisions of 37 CFR 1.907(b) apply to some of the claims, but not all of the claims in the proceeding; those claims to which 37 CFR 1.907(b) applies will not be treated. The examiner’s action will point out the claims not treated, and the reason why those claims cannot be maintained in the reexamination under 37 CFR 1.907(b). Action will be given on the remaining claims. Note that the provisions of 37 CFR 1.907(b) cannot be waived since they track the statute, pre-AIA 35 U.S.C. 317. See subsection V. below.
The issuance of a final court decision upholding validity during an inter partes reexamination, where the person who filed the request was not a party to the litigation, will have no binding effect on the examination of the reexamination. This is because the court stated in Ethicon v. Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 1152, 1157 (Fed. Cir. 1988) that the Office is not bound by a court’s decision upholding validity and should continue the reexamination. The court noted that district courts and the Office use different standards of proof in determining invalidity and unpatentability, and thus, on the same evidence, could quite correctly come to different conclusions. Specifically, invalidity in a district court must be shown by “clear and convincing” evidence, whereas in the Office it is sufficient to show non-patentability by a “preponderance” of the evidence. Since the “clear and convincing” standard is harder to satisfy than
the “preponderance standard,” a court’s decision upholding validity is not controlling. Deference will, however, ordinarily be accorded to the factual findings of the court, where the evidence before the Office and the court is the same. If sufficient reasons are present, claims upheld by the court may be rejected in reexamination.
V. DISCUSSION OF EFFECT OF LITIGATION WHERE REQUESTER WAS A PARTY TO THE LITIGATION
A. Termination Pursuant to Pre-AIA 35 U.S.C. 317
A party to a pending inter partes reexamination proceeding such as, e.g., the patent owner, may request the Office to terminate prosecution of patent claims under reexamination, which are finally held to be not invalid by a federal court, by filing a grantable petition under 37 CFR 1.182 to terminate prosecution of those claims, in accordance with the guidance set forth below.
Congress specifically provided estoppel provisions to shut down an inter partes reexamination of a patent claim when a “final decision” upholding the validity of that claim has been reached in a civil action or in a prior inter partes reexamination proceeding. See pre-AIA 35 U.S.C. 317(b); pre-AIA 35 U.S.C. 315(c). Thus, if a party’s challenge to the validity of certain patent claims has been finally resolved, either through civil litigation or the inter partes reexamination process, then (A) that party is barred from making a subsequent request for inter partes reexamination (or filing a new civil action) challenging the validity of those same claims, and (B) “an inter partes reexamination previously requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office.” Id.
The statute and legislative history of the estoppel provisions make it clear that the inter partes reexamination of a claim (requested by a party) must be terminated once a final decision upholding the validity of that claim (challenged by the same party) has issued “after any appeals,” and not simply after a district court decision which is still pending on appeal. If there remains any time for an appeal, or a request for reconsideration, from a court (e.g., district
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court or Federal Circuit) decision, or such action has already been taken, then the decision is not final, and the estoppel does not attach. While Congress desired that the creation of an inter partes reexamination option would lead to a reduction in expensive patent litigation, it nonetheless also provided in the statute that a court validity challenge and inter partes reexamination of a patent may occur simultaneously; but once one proceeding finally ends in a manner adverse to a third party, then the issues raised (or that could have been raised) with respect to the validity of a claim in that proceeding would have estoppel effect on the same issues in the other proceeding.
Pre-AIA 35 U.S.C. 317(b) provides, in pertinent part:
“Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit…, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action…, and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.” [Emphasis added]
This is a statutory estoppel which can attach to an inter partes reexamination third party requester that is also a party to litigation concerning the patent for which reexamination has been requested.
A grantable petition under 37 CFR 1.182 to terminate prosecution of claims under reexamination must provide evidence that the following requirements, which track the statutory requirements set forth in pre-AIA 35 U.S.C. 315(c), have been satisfied:
1. The third party requester was a party to the litigation;
2. The decision is final, i.e., after all appeals;
3. The court decided that the requester/party had not sustained its burden of proving the invalidity of any claim in suit, which claim is also under reexamination; and
4. The issue(s) raised in the reexamination proceeding are the same issue(s) that were raised or could have been raised by the requester in the civil action.
The evidence should include a copy of the district court decision, any jury verdict, any decision by the U.S. Court of Appeals for the Federal Circuit (CAFC), including any mandate, any dismissal of an appeal by the CAFC, and any ruling by the United States Supreme Court on a petition for certiorari. Submission of a copy of the district court’s docket is also recommended. The copy of the docket may provide evidence, for example, that no further appeal has been taken in the litigation, or if (and when) a trial has been held, where appropriate.
Regarding item no. 1, evidence that the third party requester was party to the litigation may be provided by filing a copy of the court decision or other court document which provides the name of the requester as, for example, a defendant in the litigation.
Regarding item no. 2, the petition must be accompanied by evidence that the decision is final, after all appeals. If there remains any time for an appeal, or a request for reconsideration, from a court (e.g., district court or Federal Circuit) decision, or such action has already been taken, then the decision is not final, and the estoppel does not attach. Such evidence may include any decision by the CAFC, including any mandate, any dismissal of an appeal by the CAFC, any ruling by the United States Supreme Court on a petition for certiorari, and/or a copy of the district court’s docket.
Regarding item no. 3 above, the evidence must show which claims were before the court at the time of the court’s decision. A “claim in suit” is a claim that was before the court at the time of the court’s decision, and not merely a claim that was asserted at some point in the litigation. If a claim under
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reexamination was not the subject of the court’s decision, then the estoppel provisions of pre-AIA 35 U.S.C. 317(b) do not apply to the final outcome of the litigation as to that patent claim, because there is no “final decision that the party has not sustained its burden of proving the invalidity” of that patent claim. Thus, prosecution of the non-litigated claims would not be “terminated” in the reexamination proceeding.
Pre-AIA 35 U.S.C. 317(b) specifically requires a decision by the court that the requester “has not sustained its burden of providing the invalidity of any patent claim in suit” (emphasis added). The statute does not refer, for example, to any patent claim that “could have been” in suit. Pursuant to the statute, the patent claims that were before the court at the time of the court’s decision must initially be determined. Further, each claim that is determined to be “in suit,” i.e., each claim that is determined to be before the court at the time of the court’s decision, must have a corresponding final decision of non-invalidity. Once the claims in suit have been identified and once the “final decision has been entered . . .,” the statute then prohibits the Office from maintaining an inter partes reexamination “of any such patent claim” (i.e., the patent claim in suit), “on the basis of issues which . . . [the requester] raised or could have raised” in the litigation (emphasis added). Accordingly, the phrase “raised or could have raised” applies only to patent claims that were in suit and for which a final decision on non-invalidity has been entered. Thus, the issue is not whether the requester “could have raised” claims that were not in suit. Rather, once the claims that were actually before the court with respect to the issue of non-invalidity at the time of the court’s decision are determined, the issue is whether any issues raised in the reexamination proceeding with respect to those claims either were raised or could have been raised by the requester in the litigation.
Evidence showing which claims were before the court may include a copy of the jury verdict form, or any other court document which shows which claims were before the court at the time of the court’s decision. Also, where appropriate, a copy of the court’s docket may provide evidence, in combination with another court document such as a complaint and/or defendant’s answer, of which claims were
before the court at the time of the court’s decision, by showing that the specific patent claims before the court at the time of the complaint and defendant’s answer have not been reduced or modified prior to the court’s decision.
Regarding item no. 4 above, the petitioner must sufficiently show that the issue(s) raised in the reexamination proceeding are the same issue(s) that were raised or could have been raised by the requester in the civil action. The last sentence of pre-AIA 35 U.S.C. 317(b) permits “the assertion of invalidity [by the requester] based on newly discovered prior art unavailable to the third party requester”. See the legislative history of pre-AIA 35 U.S.C. 317(b), which provides the meaning of the word “unavailable”, as it appears in the statute (emphasis added in bold):
Further, if a third-party requester asserts patent invalidity in a civil action and a final decision is entered that the party failed to prove the assertion of invalidity . . . after any appeals, that third-party requester cannot thereafter request inter partes reexamination on the basis of issues which were or which could have been raised. However, the third-party requester may assert invalidity based on newly discovered prior art unavailable at the time of the civil action or inter partes reexamination. Prior art was unavailable at the time if it was not known to the individuals who were involved in the civil action or inter partes reexamination proceeding on behalf of the third-party requester and the USPTO.
106 Cong. Rec. S14720, Nov. 17, 1999. See also 106 Cong. Rec. H11805, Nov. 9, 1999.
Thus, to show that a reference is “available”, the patent owner must provide sufficient evidence that the reference was known to the requester (i.e., actual knowledge) at a time when it could have been raised in the civil action; such as, e.g., prior to any trial.
The petitioner may provide, for example, a discussion or comparison of the prior art raised in the reexamination proceeding and any prior art actually raised at trial. Any argument that the prior
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art was raised at trial must be accompanied by evidence such as, for example, a court document that lists the prior art raised, such as a copy of a jury verdict form. The petitioner may also provide evidence that the prior art raised in the reexamination proceeding could have been raised by the requester in the civil action by filing, for example, a copy of defendant’s invalidity contentions, which lists the prior art known to the requester before any trial began, and by comparing the prior art listed with the prior art raised in the reexamination proceeding.
B. Suspension Pending Potential Termination Due to Litigation
Pre-AIA 35 U.S.C. 314(c) states:
“Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.” [Emphasis added]
The statute thus authorizes the Director of the USPTO to suspend (stay) reexamination proceedings, where there is good cause to do so, pending the conclusion of litigation based on a potential for termination of a reexamination prosecution under pre-AIA 35 U.S.C. 317(b). Thus, a district court decision that is pending appeal on the validity of the same claims considered in an inter partes reexamination proceeding, where the requester of the reexamination proceeding (or its privies) is also a party to the litigation, may provide the requisite statutory “good cause” for suspension, due to the possibility that the pre-AIA 35 U.S.C. 317(b) estoppel may attach in the near future to bar/terminate the reexamination proceeding. Any such fact situation is resolved on a case-by-case basis.
Congress, in creating the inter partes reexamination statutory framework in 2002, borrowed heavily from the existing ex parte reexamination regime. For example, inter partes reexamination proceedings, like ex parte reexaminations, must be conducted with “special dispatch.” Pre-AIA 35 U.S.C. 314(c). Unlike ex parte reexamination, however, Congress provided the Office with the statutory authority and
discretion to suspend inter partes reexamination proceedings for “good cause.” See pre-AIA 35 U.S.C. 314(c).
A grant of a petition to suspend an inter partes reexamination proceeding pending potential termination due to litigation is extremely rare, due to the difficulty in determining the probability that the district court will, or will not, be reversed on appeal, or when the litigation might finally be concluded, after all appeals. Because the Office is required to conduct reexamination proceedings with special dispatch, inter partes reexamination proceedings are rarely suspended solely because there is a potential for termination due to pending litigation.
When determining whether there is "good cause" to suspend action in the reexamination based on pending litigation, the Office may consider the following elements:
1. The third party requester is a party to the litigation.
2. The claims at issue in the litigation are identical to the claims under reexamination. The pre-AIA 35 U.S.C. 317(b) estoppel applies only to patent claims that were litigated in the suit, i.e., claims that were before the court at the time of the court's decision (the litigated claims). If a claim under reexamination is not the subject of the litigation, then the estoppel provisions of pre-AIA 35 U.S.C. 317(b) would not apply to the final outcome of the litigation as to that patent claim. Indeed, there would be no “final decision that the party has not sustained its burden of proving the invalidity” of that patent claim. Thus, there is no “potential for termination” of this reexamination proceeding as to the non-litigated claims.
3. The issue(s) raised in the reexamination proceeding are the same issue(s) that were raised or could have been raised by the requester in the litigation. The pre-AIA 35 U.S.C. 317(b) estoppel applies only to issues which the requester or its privies raised or could have raised in the civil action. The estoppel does not apply where new issues are raised in the request, or raised in the reexamination proceeding at a time when the new issues could also have been raised in the litigation.
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If new art is raised in the reexamination proceeding and was not raised in the litigation (civil action), and the art could not have been raised in the litigation, then estoppel does not attach. The patent owner has the burden of showing that the art applied in the request or later raised in the reexamination proceeding was available, i.e., known, to the third-party requester at a time when they could have been placed in the litigation, such as, e.g., prior to trial. See subsection V.A. above.
4. The litigation has advanced to a late enough stage that there is a sufficient probability that a final decision will be adverse to the requester. The pre-AIA 35 U.S.C. 317(b) estoppel applies only in a situation where a final decision adverse to the requester has already been issued. If there remains any time for an appeal, or a request for reconsideration, from a court (e.g., district court or Federal Circuit) decision, or such action has already been taken, then the decision is not final, and the estoppel does not attach.
5. There is a concurrent ex parte reexamination proceeding for the patent. As stated in MPEP § 2286: “The issuance of a final federal court decision upholding validity during an ex parte reexamination also will have no binding effect on the examination of the reexamination. This is because the court states in Ethicon v. Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 1152, 1157 (Fed. Cir. 1988) that the Office is not bound by a court’s holding of patent validity and should continue the reexamination.” If there is a concurrent ex parte reexamination proceeding having overlapping issues with an inter partes reexamination proceeding where the estoppel has the potential to attach, but no final decision has been issued, then the Office may in some instances (depending on the individual facts and circumstances), go forward with statutorily required “special dispatch” as per Ethicon in a merged proceeding containing both the inter partes reexamination and the ex parte reexamination. This is a matter of administrative convenience to avoid rework and make the process more efficient. Again, OPLA should be consulted.
C. Examples of Where this Estoppel Was Addressed by the Office
In reexamination control numbers 95/000,093 and 95/000,094 (the ‘093 and ‘094 proceedings), action was suspended based on ongoing litigation. After a district court decision adverse to requester, it was determined that “good cause” existed to wait for the outcome of the Federal Circuit appeal, because the reexamination proceedings were only at their beginning stages, while the concurrent litigation was potentially near its final resolution. Requester had chosen to permit the district court litigation to proceed for three years before filing its requests for reexamination, the filing taking place only after judgment was entered in patent owner’s favor in the litigation. Had requester filed its requests for reexamination earlier, the reexamination proceedings would have been much farther along in the process, and may likely have been completed at the Office before the district court issued its decision. Moreover, had requester filed its reexamination requests earlier in the litigation, the district court might have stayed the litigation to await the Office’s decisions in the two reexamination proceedings. After choosing to go years through the entire district court litigation proceeding without asking for the Office’s input, requester was not in a position to complain that a suspension of the ‘093 and ‘094 reexamination proceedings would deprive requester of a chance to obtain the Office’s decision, when there was a strong possibility that the Federal Circuit’s decision would estop the Office from issuing any decision at all. In short, requester could not have it both ways. Requester waited three years after the district court case began, and waited until after the district court issued a final decision, such that its district court litigation could in no way be affected by any decision on its reexamination requests. Requester’s delay was the reason that the ‘093 and ‘094 reexaminations could very well be mooted before any reexamination decision issued and the USPTO Director found “good cause” to suspend the proceedings. On May 22, 2006, the U.S. District Court, Eastern District of Virginia, in Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va 2006), issued a decision upholding the Office’s finding of “good cause” to suspend the ‘093 and ‘094 inter partes reexamination proceedings. Requester chose its route
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(litigation) and had to deal with the consequences of its decision, i.e., a suspension of the reexamination proceedings.
On the other hand, see reexamination control numbers 95/000,020, 95/000,071 and 95/000,072, for decisions in which action was not suspended, because the specific facts dictated otherwise.
VI. LITIGATION REVIEW AND CRU APPROVAL
In order to ensure that the Office is aware of prior or concurrent litigation, the examiner is responsible for conducting a reasonable investigation for evidence as to whether the patent for which reexamination is requested has been, or is, involved in litigation. The investigation will include a review of the reexamination file, the patent file, and the results of the litigation computer search.
2686.05 Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review [R-07.2015]
The Leahy-Smith America Invents Act amended 35 U.S.C. 315(d) and added 35 U.S.C. 325(d) to provide that, during the pendency of an inter partes review, post grant review or covered business method review (“PTAB Review Proceeding”), if another proceeding (e.g., a reexamination proceeding) or matter involving the patent is before the Office, the Director may determine the manner in which the PTAB Review Proceeding and the other proceeding or matter may proceed. Accordingly, if an examiner becomes aware of a PTAB Review Proceeding for the same patent that is being reexamined, the reexamination proceeding must be referred to the examiner’s SPRS who will coordinate with the PTAB before taking any action on the reexamination proceeding.
2687 Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and Conclusion of Reexamination Proceeding [R-07.2015]
Upon conclusion of the inter partes reexamination proceeding, the examiner must complete a Notice
of Intent to Issue Inter Partes Reexamination Certificate (NIRC) by filling out Form PTOL-2068. If appropriate, an examiner’s amendment will also be prepared. Where the claims are found patentable, reasons must be given for each claim found patentable. See the discussion as to preparation of an examiner’s amendment and reasons for allowance found at the end of this section. In addition, the examiner must prepare the reexamination file so that the Office of Data Management can prepare and issue a certificate in accordance with 35 U.S.C. 316 and 37 CFR 1.997 and setting forth the results of the reexamination proceeding and the content of the patent following the proceeding. See MPEP § 2688.
I. INSTANCES WHERE A NIRC WOULD BE APPROPRIATE
The following are the only instances when issuance of a NIRC action would be proper in an inter partes reexamination proceeding:
(A) There is no timely response by the patent owner to an Office action requiring a response. If all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). All claims will be canceled by formal examiner’s amendment.
(B) After a Right of Appeal Notice (RAN) where no party to the reexamination timely files a notice of appeal.
(C) After filing of a notice of appeal, where all parties who filed a notice of appeal or notice of cross appeal fail to timely file an appellant brief (or fail to timely complete the brief, where the appellant brief is noted by the examiner as being incomplete).
(D) After a final decision by the Board, where there is no further timely appeal to the U.S. Court of Appeals for the Federal Circuit nor is there a timely request for rehearing by the Board.
(E) After the federal court appeal process has been completed and the case is returned to the examiner.
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II. PREPARATION OF THE NIRC ACTION
A. No Allowed Claims
Where all claims are rejected or objected to in the prior Office action, the examiner will issue a NIRC indicating that all claims have been canceled and terminating the prosecution. The cover sheet to be used is Notice of Intent to Issue Reexamination Certificate Form PTOL-2068. As an attachment to the NIRC cover sheet, the examiner will draft an examiner’s amendment canceling all live claims in the reexamination proceeding. Check the appropriate box on PTOL-2068. In the remarks of the examiner’s amendment, the examiner should point out why the claims have been canceled. Since all claims are being canceled in the proceeding, no reasons for patentability are attached. No panel review conference is needed in this instance, as the issuance of the NIRC is essentially ministerial.
B. At Least One Allowed Claim
If at least one claim is free of rejection and objection, the examiner will issue a NIRC, in which all patentable claims and canceled claims will be identified. All rejected or objected claims will be canceled by formal examiner’s amendment (attached as part of the NIRC). Check the appropriate box on Form PTOL-2068. In the remarks section of the examiner’s amendment, the examiner should point out why the claims have been canceled. As to the patentable claims, reasons for patentability must be provided for all such claims. After the examiner has determined that the reexamination proceeding is ready for the NIRC, the examiner will formulate a draft preliminary NIRC with attachments as needed. The examiner will then inform his/her Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) of his/her intent to issue the NIRC. A panel review conference will be convened, and the conference members will review the patentability of the remaining patentable claim(s) pursuant to MPEP § 2671.03. If the conference confirms the examiner’s preliminary decision, the proposed NIRC shall be issued and signed by the examiner, with the two or more other conferees initialing the action (as “conferee”) to indicate their presence in the
conference. If the conference does not confirm the examiner’s decision (e.g., it is determined that one or more of the remaining claims should be rejected), then the examiner will reevaluate and issue an appropriate Office action. A panel review conference is not to be held as to any claim that was in the case (proceeding) at the time the case was reviewed by the Board or a federal court.
III. EXAMINER’S AMENDMENT TO PLACE PROCEEDING IN CONDITION FOR NOTICE OF INTENT TO ISSUE INTER PARTES REEXAMINATION CERTIFICATE
Interviews are not permitted in an inter partes reexamination proceeding (see MPEP § 2685). Thus, the examiner is not permitted to telephone the patent owner to obtain authorization to make an amendment. Accordingly, the only times that an examiner’s amendment can be made in conjunction with a NIRC are where the patent owner authorization need not be obtained. Such amendments include:
(A) An examiner’s amendment to deal with formal matters such as grammar, incorrect spelling, or incorrect number; i.e., matters that do not involve a rejection, do not go to the merits, and do not require the examiner to obtain approval.
(B) An examiner’s amendment to change the title.
(C) An examiner’s amendment to cancel all rejected and objected claims in the proceeding, when the patent owner fails (1) to timely respond (where a response is required), (2) to timely appeal, or (3) to take further action to maintain an appeal.
(D) If a patent expires during the pendency of a reexamination proceeding for that patent, all amendments to the patent claims and all claims added during the proceeding must be withdrawn. The examiner’s amendment is to include a statement such as:
“As the patent being reexamined has expired during the pendency of the present reexamination proceeding, all amendments made during the proceeding are improper, and are hereby expressly withdrawn.”
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If it has not previously been done in the proceeding, a diagonal line should be drawn across a copy of all amended and new claims (and text added to the specification) residing in the amendment papers, and scanned into the Image File Wrapper (IFW).
See also MPEP § 1302.04 et. seq. as to examiner’s amendments not needing authorization by an applicant or a patent owner. Note, however, that in an inter partes reexamination proceeding (as opposed to an application) all such examiner’s amendments must be made by formal examiner’s amendment accompanying the NIRC, in order to provide notice of the changes made in the patent being reexamined to both the patent owner and the third party requester.
Note that any change going to the merits of the case (i.e., more than a formal matter) could not be made by examiner’s amendment accompanying the NIRC. Rather, a change going to the merits would require (1) reopening of prosecution with the approval of the CRU Director, (2) an Office action suggesting the change to patent owner, (3) a formal amendment submitted by the patent owner, and (4) an opportunity for the third party requester to comment on the patent owner’s submission.
Where an examiner’s amendment is to be prepared, Box 9 of Form PTOL-2068 (Notice of Intent to Issue a Reexamination Certificate) is checked, and form paragraph 26.69 is used to provide the appropriate attachment:
¶ 26.69 Examiner’s Amendment Accompanying Notice of Intent to Issue Reexamination Certificate
An examiner’s amendment to the record appears below. The changes made by this examiner’s amendment will be reflected in the reexamination certificate to issue in due course.
[1]
The examiner’s amendment must comply with the requirements of 37 CFR 1.530(d)-(j) in amending the patent.
Thus, if a portion of the text is amended more than once, the examiner’s amendment should indicate all changes (insertions and deletions) in relation to the current text in the patent under reexamination, not
in relation to a prior amendment made during the proceeding.
In addition, the examiner’s amendment requires presentation of the full text of any paragraph or claim to be changed, with 37 CFR 1.530(f) markings. Examiners’ amendments in reexamination are not subject to the exceptions to this requirement which are provided for applications in 37 CFR 1.121(g) and which do not apply to reexamination proceedings. See MPEP § 2250. The only exception to the full text presentation requirement is that an entire claim or an entire paragraph of specification may be deleted from the patent by a statement deleting the claim or paragraph without the presentation of the text of the claim or paragraph.
IV. REASONS FOR PATENTABILITY AND/OR CONFIRMATION
Reasons for patentability must be provided, unless all claims are canceled in the proceeding. Check the appropriate box on Form PTOL-2068 and provide the reasons as an attachment. In the attachment to the NIRC, the examiner should indicate why the claims found patentable in the reexamination proceeding are clearly patentable over the cited patents or printed publications. This is done in a manner similar to that used to indicate reasons for allowance in an application. See MPEP § 1302.14. Where the record is clear as to why a claim is patentable (which should be the usual situation, in view of the inter partes nature of the proceeding), the examiner may simply refer to the particular portions of the record which clearly establish the patentability of that claim. In any event, reasons for patentability must be provided for every claim identified as patentable in the NIRC, and the patent owner must be notified in the NIRC that it has an opportunity to provide comments on the statement of the reasons for patentability.
The reasons for patentability may be set forth on Form PTOL-476, entitled “REASONS FOR PATENTABILITY AND/OR CONFIRMATION.” However, as a preferred alternative to using Form PTOL-476, the examiner may instead use form paragraph 26.70.
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¶ 26.70 Reasons for Patentability and/or Confirmation in Inter Partes Reexamination
STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
The following is an examiner’s statement of reasons for patentability and/or confirmation of the claims found patentable in this reexamination proceeding: [1]
Any comments considered necessary by the PATENT OWNER regarding the above statement must be submitted promptly to avoid processing delays. Such submission by the patent owner should be labeled: “Comments on Statement of Reasons for Patentability and/or Confirmation” and will be placed in the reexamination file.
Examiner Note:
This form paragraph may be used as an attachment to the Notice of Intent to Issue Inter Partes Reexamination Certificate, PTOL-2068 (item number 3).
Original patent claims that are found patentable in a reexamination proceeding are generally to be designated as “confirmed” claims, while new claims and amended patent claims are generally to be designated as “patentable” claims. However, for purposes of the examiner setting forth reasons for patentability or confirmation, the examiner may use “patentable” to refer to any claim that defines over the cited patents or printed publications. There is no need to separate the claims into “confirmed” and “patentable” categories when setting forth the reasons.
Where all claims are canceled in the proceeding, no reasons for patentability are provided.
V. PREPARATION OF THE CASE FOR PUBLICATION
As to preparing the inter partes reexamination file for publication of the certificate, see MPEP § 2287 for guidance. The preparation of an inter partes reexamination proceeding for publication is carried out in the same manner that an ex parte reexamination proceeding is prepared for publication.
The examiner must complete the examiner preparation of the case for reexamination certificate by completing an Examiner Checklist Reexamination form, PTOL-1516. The Legal Instrument Examiner
(LIE) must complete a Reexamination Clerk Checklist form, PTOL-1517. The case is reviewed by the CRU SPRS/TC QAS.
After the reexamination file and its contents are reviewed, the NIRC will be mailed, and appropriate PALM work and update scanning will be carried out. The reexamination proceeding will then be forwarded, to the Office of Data Management for printing.
VI. REEXAMINATION REMINDERS
The following items deserve special attention. The examiner should ensure they have been correctly completed or followed before forwarding for processing of the NIRC.
(A) All patent claims for which a substantial new question of patentability or reasonable likelihood of prevailing had been found must have been examined. See MPEP § 2643.
(B) No renumbering of patent claims is permitted. New claims may require renumbering. See MPEP §§ 2666.01 and 2250.
(C) Amendments to the description and claims must conform to requirements of 37 CFR 1.530(d)-(k). This includes any changes made by examiner’s amendment. If a portion of the text is amended more than once, each amendment should indicate all of the changes (insertions and deletions) in relation to the current text in the patent under reexamination. See MPEP §§ 2666.01 and 2250.
(D) The prior art must be listed on a form PTO-892, PTO-1449, PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having format equivalent to one of these forms). These forms must be properly completed. See MPEP § 2657.
(E) The examiner and clerk checklists PTO-1516 and PTO-1517 must be entirely and properly completed. A careful reading of the instructions contained in these checklists is essential. The clerk checklist is designed as a check and review of the examiner’s responses on the examiner checklist. Accordingly, the clerk should personally review the file before completing an item. The clerk should check to make certain that the responses to all related items on both checklists are in agreement.
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§ 2687OPTIONAL INTER PARTES REEXAMINATION
(F) Multiple copending reexamination proceedings are often merged. See MPEP § 2686.01.
(G) Where the reexamination proceeding is copending with an application for reissue of the patent being reexamined, the files must have been forwarded to the Office of Patent Legal Administration (OPLA) for a consideration of potential merger, with a decision on the question being present in the reexamination file. See MPEP § 2686.03.
(H) Reasons for patentability and/or confirmation are required for each claim found patentable.
(I) There is no issue fee in reexamination. See MPEP § 2634.
(J) The patent claims may not be amended nor new claims added after expiration of the patent. See MPEP §§ 2666.01 and 2250.
(K) Original drawings cannot be physically changed. "Amended" or "New" figures must be appropriately labeled as such and presented on new sheets in compliance with 37 CFR 1.84. See 37 CFR 1.530(d)(3) and MPEP § 2666.02.
(L) An amended or new claim may not enlarge the scope of the patent claims. See MPEP §§ 2658, 2666.01, and 2250.
(M) If the patent has expired, all amendments to the patent claims and all claims added during the proceeding must be withdrawn. Further, all presently rejected and objected claims are canceled by examiner’s amendment. See MPEP § 2250, subsection on “Amendment After the Patent Has Expired.”
A. Handling of Multiple Dependent Claims
For treatment of multiple dependent claims when preparing a reexamination proceeding for publication of the reexamination certificate, see the discussion in MPEP § 2287.
B. The Title of the Patent
Normally, the title will not need to be changed during reexamination. If a change of the title is necessary, it should have been pointed out as early as possible in the prosecution, as a part of an Office Action. An informal examiner’s amendment (i.e.,
changing the title and merely initialing the change) is not permitted in reexamination.
VII. REEXAMINATION PROCEEDINGS IN WHICH ALL THE CLAIMS ARE CANCELED
There will be instances where all claims in the reexamination proceeding are to be canceled. This would occur where the patent owner fails to timely respond to an Office action that requires a response, and all live claims in the reexamination proceeding are under rejection. This would also occur where all live claims in the reexamination proceeding are to be canceled as a result of a decision of the Board affirming the examiner, and the time for appeal to the court and for requesting rehearing has expired. In these instances the examiner will issue a NIRC indicating that all claims have been canceled and terminating the prosecution. As an attachment to the NIRC, the examiner will draft an examiner’s amendment canceling all live claims in the reexamination proceeding. In the examiner’s amendment, the examiner should point out why the claims have been canceled. For example, the examiner might state one of the two following examples, as is appropriate:
“Claims 1-8 (all live claims in the proceeding) were subject to rejection in the last Office action mailed 9/9/99. Patent owner failed to timely respond to that Office action. Accordingly, claims 1-8 have been canceled. See 37 CFR 1.957(b) and MPEP § 2666.10.”
“The rejection of claims 1-8 (all live claims in the proceeding) has been affirmed in the Board decision of 9/9/99, and no timely appeal to the court has been filed. Accordingly claims 1-8 have been canceled.”
In order to physically cancel the live claims in the reexamination file history, brackets should be placed around all the live claims on a copy of the claims printed from the file history, and the copy then scanned into the file history. All other claims in the proceeding should have previously been either replaced or canceled.
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The examiner will designate a canceled original patent claim, to be printed in the Official Gazette, on the Issue Classification IFW form in the appropriate place for the claim chosen.
A panel review conference is not to be held because the proceeding is to be concluded by the cancellation of all claims.
2687.01 Examiner Consideration of Submissions After NIRC [R-07.2015]
The rules do not provide for an amendment to be filed in an inter partes reexamination proceeding after a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) has been issued. Note that 37 CFR 1.312 does not apply in reexamination. Any amendment, information disclosure statement, or other paper related to the merits of the reexamination proceeding filed after the NIRC (except as indicated immediately below) must be accompanied by a petition under 37 CFR 1.182. The petition must be granted, in order to have the amendment, information disclosure statement, or other paper related to the merits considered. Where an amendment, information disclosure statement, or other paper related to the merits of the reexamination proceeding is filed after the NIRC, and the accompanying petition under 37 CFR 1.182 is granted, the examiner will reconsider the case in view of the new information, and if appropriate, will reopen prosecution. See MPEP § 2656 for a detailed discussion of the criteria for obtaining entry and consideration of information disclosure statement filed after the NIRC.
Interviews are not permitted in an inter partes reexamination proceeding (see MPEP § 2685). Thus, the examiner is not permitted to telephone the patent owner and obtain authorization to make an amendment. The only time an examiner’s amendment can be made in an inter partes reexamination after the NIRC has been issued is where an examiner’s amendment is needed to address matters that do not require the patent owner’s approval. However, matters that do not require the patent owner’s approval are generally minor formal matters. Thus, it would be rare for an examiner to need to withdraw the issued NIRC for issuance of a new NIRC with an examiner’s amendment, since
withdrawal of the NIRC should not be done for minor formal matters. In view of this, any examiner’s amendment in an inter partes reexamination proceeding to be made after a NIRC (has been issued) requires the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) to approve the examiner’s amendment.
Any “Comments on Statement of Reasons for Patentability and/or Confirmation” which are received will be placed in the reexamination file, without comment. This will be done even where the reexamination certificate has already issued.
2688 Issuance of Inter Partes Reexamination Certificate [R-07.2015]
35 U.S.C. 316 Certificate of patentability, unpatentability and claim cancellation.
(a) IN GENERAL.— In an inter partes reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.
*****
37 CFR 1.997 Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding.
(a) To conclude an inter partes reexamination proceeding, the Director will issue and publish an inter partes reexamination certificate in accordance with 35 U.S.C. 316 setting forth the results of the inter partes reexamination proceeding and the content of the patent following the inter partes reexamination proceeding.
(b) A certificate will be issued and published in each patent in which an inter partes reexamination proceeding has been ordered under § 1.931. Any statutory disclaimer filed by the patent owner will be made part of the certificate.
(c) The certificate will be sent to the patent owner at the address as provided for in § 1.33(c). A copy of the certificate will also be sent to the third party requester of the inter partes reexamination proceeding.
(d) If a certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto.
(e) If the inter partes reexamination proceeding is terminated by the grant of a reissued patent as provided in §
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§ 2688OPTIONAL INTER PARTES REEXAMINATION
1.991, the reissued patent will constitute the reexamination certificate required by this section and 35 U.S.C. 316.
(f) A notice of the issuance of each certificate under this section will be published in the Official Gazette.
Since abandonment is not possible in a reexamination proceeding, an inter partes reexamination certificate will be issued at the conclusion of the proceeding for each patent in which a reexamination proceeding has been ordered under 37 CFR 1.931, except where the reexamination has been concluded by vacating the reexamination proceeding, or by the grant of a reissue patent on the same patent in which case the reissue patent also serves as the reexamination certificate.
The inter partes reexamination certificate will set forth the results of the proceeding and the content of the patent following the reexamination proceeding. The certificate will:
(A) cancel any patent claims determined to be unpatentable;
(B) confirm any patent claims determined to be patentable;
(C) incorporate into the patent any amended or new claims determined to be patentable;
(D) make any changes in the description approved during reexamination;
(E) include any statutory disclaimer or terminal disclaimer filed by the patent owner;
(F) identify unamended claims which were held invalid on final holding by another forum on any grounds (e.g., by checking Box 9 “Other” on form PTOL-2068 and describing the status and Box 16 “Other” on the examiner’s checklist form PTO-1516);
(G) identify any patent claims not reexamined;
(H) be mailed on the day of its date to the patent owner at the address provided for in 37 CFR 1.33(c), and a copy will be mailed to the requester; and
(I) refer to patent claims, dependent on amended claims, determined to be patentable.
If a certificate issues which cancels all of the claims of the patent, no further Office proceedings will be conducted with regard to that patent or any reissue application or reexamination request directed thereto.
However, in an extremely rare situation in which a reissue application is copending with a reexamination proceeding in which a reexamination certificate subsequently issues cancelling all claims of the patent, the patent owner may file a petition under 37 CFR 1.183 requesting waiver of the provisions of 37 CFR 1.997(d), to address claims that were pending in the reissue application prior to the issuance of the certificate. Any such petition must be accompanied by a paper cancelling any claim within the scope of the claims canceled by the certificate and pointing out why the claims remaining in the reissue application can be patentable, despite the cancellation of all the patent claims by certificate, i.e., why the remaining claims are patentable over the cancelled claims. Such a paper will be available to the examiner, should the petition be granted.
If a reexamination proceeding is concluded by the grant of a reissue patent as provided for in 37 CFR 1.991, the reissue patent will constitute the reexamination certificate required by 35 U.S.C. 316.
If all of the claims are disclaimed in a patent under reexamination, a certificate under 37 CFR 1.997 will be issued indicating that fact.
A notice of the issuance of each reexamination certificate will be published in the Official Gazette on its date of issuance in a format similar to that used for reissue patents. See MPEP § 2691.
2689 Reexamination Review [R-11.2013]
After a reexamination case is acted on by the examiner and all premailing clerical processing is completed, the case is forwarded to the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS). The CRU SPRS/TC QAS (with the aid of the paralegals or other technical support who might be assigned as backup) will then (A) procedurally review the examiner’s action for compliance with the applicable provisions of the reexamination statute and regulations, and with reexamination policy, practice and procedure, (B) do a completeness review of the action to ensure that all issues and arguments raised by all parties are appropriately developed, considered and addressed, and that all
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materials of the action (e.g., references, forms and cover sheets) are present and appropriately completed.
In addition to the CRU SPRS/TC QAS review of the reexamination cases, a panel review is made prior to issuing Office actions as set forth in MPEP § 2671.03.
2690 Format of Inter Partes Reexamination Certificate [R-07.2015]
An inter partes reexamination certificate is issued at the close of each inter partes reexamination proceeding in which reexamination has been ordered under 37 CFR 1.931, unless the inter partes reexamination proceeding is merged with a reissue application pursuant to 37 CFR 1.991. In that situation, the inter partes reexamination proceeding is concluded by the grant of a reissue patent, the reissue patent will constitute the reexamination certificate. It should be noted that where an ex parte reexamination is merged with an inter partes reexamination proceeding, an inter partes reexamination certificate will issue for the merged proceeding.
The inter partes reexamination certificate is formatted much the same as the title page of current U.S. patents.
The certificate is titled “ INTER PARTES REEXAMINATION CERTIFICATE.” The title is followed by an “ordinal” number in parentheses,
such as “(5th)”, which indicates that it is the fifth inter partes reexamination certificate that has issued. The inter partes reexamination certificates will be numbered in a separate and new ordinal sequence,
beginning with “(1st)”. The ex parte reexamination certificates will continue the ordinal numbering sequence that has already been established for ex parte reexamination certificates.
The certificate number will always be the patent number of the original patent followed by a two-character “kind code” suffix. The “kind code” suffix is C1 for a first reexamination certificate, C2 for a second reexamination certificate for the same patent, etc.
For example, “1” is provided in the certificate for the first reexamination certificate and “2” for the second reexamination certificate. Thus, a second reexamination certificate for the same patent would be designated as “C2” preceded by the patent number. The next higher number will be given to the reexamination proceeding for which the reexamination certificate is issued, regardless of whether the proceeding is an ex parte reexamination or an inter partes reexamination proceeding.
Note that “B1” ex parte reexamination certificates that were issued prior to January 1, 2001, included the patent number of the original patent followed by the letter “B.” Where the first reexamination certificate was a “B1” certificate and an inter partes reexamination certificate then issues, the inter partes reexamination certificate will be designated “C2” and NOT “C1.” Thus, by looking at the number following the “C,” one will be able to ascertain the number of reexamination certificates that preceded the certificate being viewed, i.e., how many prior reexamination certificates have been issued for the patent. (If this were not the practice and C1 were used, one would not be able to ascertain from the number on the certificate how many B certificates came before.)
The certificate denotes the date the certificate was issued at INID code [45] (see MPEP § 901.04). The title, name of inventor, current classification, the abstract, and the notice regarding the list of prior art documents appear at their respective INID code designations, much the same as is presently done in utility patents.
The primary differences, other than as indicated above, are:
(A) The filing date and number of the request is preceded by “Reexamination Request;”
(B) The patent for which the certificate is now issued is identified under the heading “Reexamination Certificate for”; and
(C) A notice will be present which will inform that the list of cited prior art documents will be available via PAIR by reexamination control number.
Finally, the certificate will identify the patent claims which were confirmed as patentable, canceled,
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§ 2690OPTIONAL INTER PARTES REEXAMINATION
disclaimed, and those claims not examined. Only the status of the confirmed, canceled, disclaimed, and not examined claims will be indicated in the certificate. The text of the new and amended claims will be printed in the certificate. Any new claims will be printed in the certificate completely in italics, and any amended claims will be printed in the certificate with italics and bracketing indicating the amendments thereto. Any prior court decisions will be identified, as well as the citation of the court decisions.
2691 Notice of Inter Partes Reexamination Certificate Issuance in Official Gazette [R-08.2012]
The Official Gazette notice will include bibliographic information, and an indication of the status of each claim after the conclusion of the reexamination proceeding. Additionally, a representative claim will be published along with an indication of any changes to the specification or drawing.
The notice of reexamination certificate will clearly state that it is a certificate for a concluded inter partes reexamination proceeding (as opposed to an ex parte reexamination proceeding).
2692 Distribution of Certificate [R-08.2012]
An e-copy of the inter partes reexamination certificate will be associated with the e-copy of the patent in the search files. A copy of the certificate will also be made a part of any patent copies prepared by the Office subsequent to the issuance of the certificate.
A copy of the inter partes reexamination certificate will also be forwarded to all depository libraries and to those foreign offices which have an exchange agreement with the Office.
2693 Intervening Rights [R-08.2012]
35 U.S.C. 316 Certificate of patentability, unpatentability and claim cancellation.
*****
(b) AMENDED OR NEW CLAIM.— Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes reexamination proceeding shall have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, prior to issuance of a certificate under the provisions of subsection (a) of this section.
The situation of intervening rights resulting from inter partes reexamination proceedings parallels the intervening rights situation resulting from reissue patents or from ex parte reexamination proceedings. The rights detailed in 35 U.S.C. 252 for reissue apply equally in reexamination and reissue situations. See Fortel Corp. v. Phone-Mate, Inc., 825 F.2d 1577,
3 USPQ2d 1771 (Fed. Cir. 1987); Kaufman Co., Inc. v. Lantech, Inc., 807 F.2d 970, 1 USPQ2d 1202 (Fed. Cir. 1986); Tennant Co. v. Hako Minuteman, Inc., 4 USPQ2d 1167 (N.D. Ill. 1987); and Key Mfg. Group, Inc. v. Microdot, Inc., 679 F.Supp. 648, 4 USPQ2d 1687 (E.D. Mich. 1987).
2694 Concluded Reexamination Proceedings [R-07.2015]
Inter partes reexamination proceedings may be concluded in one of three ways:
(A) The prosecution of the reexamination proceeding may be brought to an end, and the proceeding itself concluded, by a denial of reexamination, or vacating the reexamination proceeding, or terminating the reexamination proceeding. (In these instances, no reexamination certificate is issued).
(1) A reexamination file (IFW or paper) in which reexamination has been denied or vacated should be forwarded to the Central Reexamination Unit (CRU) if the file is not already there. The CRU will process the file to provide the partial refund set forth in 37 CFR 1.26(c). The reexamination file will then be given an 820 status (reexamination denied) or an 822 status (reexamination vacated). A copy of the PALM “Application Number Information” screen and the “Contents” screen is printed, the printed copy is annotated by adding the comment “PROCEEDING CONCLUDED,” and the annotated copy is then scanned into IFW using the miscellaneous letter document code.
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(2) A reexamination file (IFW or paper) in which reexamination has been terminated should be forwarded to the CRU if the file is not already there. The reexamination file will then be given an 820 status (reexamination terminated). A copy of the PALM “Application Number Information” screen and the “Contents” screen is printed, the printed copy is annotated by adding the comment “PROCEEDING CONCLUDED,” and the annotated copy is then scanned into IFW using the miscellaneous letter document code. A partial refund is not made in this instance, since the reexamination was properly commenced and addressed, and was terminated later based upon a court decision, or the like.
(B) The proceeding may be concluded under 37 CFR 1.997(b) with the issuance of a reexamination certificate.
A reexamination proceeding that is to be concluded in this manner should be processed as set forth in MPEP § 2687 and then forwarded to the CRU for review, mailing of the NIRC, and forwarding the file to the Office of Data Management.
(C) The proceeding may be concluded under 37 CFR 1.997(e) where the reexamination proceeding has been merged with a reissue proceeding and a reissue patent is granted; an individual reexamination certificate is not issued, but rather the reissue patent serves as the certificate.
A reexamination proceeding that is concluded in this manner should be processed, together with the reissue proceeding, as set forth in MPEP § 1455 and § 1456.
2695 Reexamination of a Reexamination [R-08.2012]
See MPEP § 2295 for guidance for the processing and examination of a reexamination request filed on a patent for which a reexamination certificate has already issued, or a reexamination certificate issues on a prior reexamination, while the new reexamination is pending. This reexamination request is generally referred to as a “reexamination of a reexamination.” A reexamination of a reexamination is processed in accordance with the guidelines set forth in MPEP § 2295 regardless of whether the reexamination certificate was issued for an ex parte reexamination or an inter partes reexamination, and regardless of whether the pending reexamination proceeding is an ex parte reexamination or an inter partes reexamination.
2696 USPTO Forms To Be Used in Inter Partes Reexamination [R-11.2013]
The correct forms which are to be used by the Office in inter partes reexamination actions and processing are as follows (these forms are not reproduced below):
PTOL-2064(A) OFFICE ACTION IN INTER PARTES REEXAMINATION...................................... PTOL-2065(B) ACTION CLOSING PROSECUTION (37 CFR 1.949)............................................... PTOL-2066(C) RIGHT OF APPEAL NOTICE (37 CFR 1.953).......................................................... PTOL-2067(D) INTER PARTES REEXAMINATION NOTIFICATION
REAPPEAL....................................................................................................................... PTOL-2068(E) NOTICE OF INTENT TO ISSUE INTER PARTES REEXAMINATION
CERTIFICATE.................................................................................................................. PTOL-476(F) REEXAMINATION REASONS FOR
PATENTABILITY/CONFIRMATION.............................................................................. PTOL-2069(G) NOTICE OF DEFECTIVE PAPER IN INTER PARTES
REEXAMINATION.......................................................................................................... PTOL-2070(H) TRANSMITTAL OF COMMUNICATION TO THIRD PARTY REQUESTER –
INTER PARTES REEXAMINATION............................................................................... PTOL-2071(I) INTER PARTES REEXAMINATION COMMUNICATION (WITH
SSP)...............................................................................................................
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§ 2696OPTIONAL INTER PARTES REEXAMINATION
PTOL-2072(J) INTER PARTES REEXAMINATION COMMUNICATION (NO SSP).......................................................................................................................
PTOL-2073(K) INTER PARTES REEXAMINATION NOTIFICATION RE BRIEF..................... PTOL-2291(L) INTER PARTES REEXAMINATION EXAMINER'S ANSWER...................... PTOL-1516(M) EXAMINER CHECKLIST – REEXAMINATION.............................................. PTOL-1517(N) REEXAMINATION CLERK CHECKLIST.........................................................
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Chapter 2700 Patent Terms and Extensions
Patent Term2701 [Reserved]2702
-2709 Term Extensions or Adjustments for Delays Within the USPTO Under 35 U.S.C. 154
2710
[Reserved]2711 -2719
Applications Filed Between June 8, 1995, and May 28, 2000
2720
[Reserved]2721 -2729
Applications Filed on or After May 29, 2000; Grounds for Adjustment
2730
Period of Adjustment2731 Reduction of Period of Adjustment of Patent Term
2732
Patent Term Adjustment Determination
2733
Application for Patent Term Adjustment; Due Care Showing
2734
[Reserved]2735 Third Party Papers2736 [Reserved]2737
-2749 Patent Term Extension for Delays at other Agencies under 35 U.S.C. 156
2750
Eligibility Requirements2751 Patent Term Extension Applicant2752 Application Contents2753 Filing Date2754
Deadline for Filing an Application Under 35 U.S.C. 156(d)(1)
2754.01
Filing Window for an Application Under 35 U.S.C. 156(d)(5)
2754.02
Filing of a Request for an Extension Under 35 U.S.C. 156(e)(2)
2754.03
Eligibility Determination2755 Interim Extension of Patent Term During the Processing of the Application
2755.01
Interim Extension of Patent Term Before Product Approval
2755.02
Correspondence Between the USPTO and the Regulatory Agency
2756
Regulatory Agency Determination of the Length of the Regulatory Review Period
2757
Due Diligence Determination2757.01 Notice of Final Determination - Calculation of Patent Term Extension
2758
Certificate of Extension of Patent Term2759 Trade Secret, Confidential, and Protective Order Material
2760
Multiple Applications for Extension of Term of the Same Patent or of Different
2761
Patents for the Same Regulatory Review Period for a Product Duty of Disclosure in Patent Term Extension Proceedings
2762
Limitation of Third Party Participation2763 Express Withdrawal of Application for Extension of Patent Term
2764
2701 Patent Term [R-07.2015]
35 U.S.C. 154 Contents and term of patent; provisional rights.
(a) IN GENERAL.—
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(2) TERM.—Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, 365(c), or 386(c) from the date on which the earliest such application was filed.
(3) PRIORITY.—Priority under section 119, 365(a), 365(b), 386(a), or 386(b) shall not be taken into account in determining the term of a patent.
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(c) CONTINUATION.—
(1) DETERMINATION.—The term of a patent that is in force on or that results from an application filed before the date that is 6 months after the date of the enactment of the Uruguay Round Agreements Act shall be the greater of the 20-year term as provided in subsection (a), or 17 years from grant, subject to any terminal disclaimers.
(2) REMEDIES.—The remedies of sections 283, 284, and 285 shall not apply to acts which —
(A) were commenced or for which substantial investment was made before the date that is 6 months after the date of the enactment of the Uruguay Round Agreements Act; and
(B) became infringing by reason of paragraph (1).
(3) REMUNERATION.—The acts referred to in paragraph (2) may be continued only upon the payment of an equitable remuneration to the patentee that is determined in an action brought under chapter 28 and chapter 29 (other than those provisions excluded by paragraph (2)).
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Rev. 07.2015, October 20152700-1
For applications filed on or after June 8, 1995, Section 532(a)(1) of the Uruguay RoundAgreements Act (Public Law 103-465, 108 Stat. 4809 (1994)) amended 35 U.S.C. 154 to provide that the term of a patent (other than a design patent) begins on the date the patent issues and ends on the date that is twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under 35 U.S.C. 120, 121, or 365(c), twenty years from the filing date of the earliest of such application(s). This patent term provision is referred to as the “twenty-year term.” Design patents have a term of fourteen years from the date of patent grant, except for any design patent issued from applications filed on or after May 13, 2015 (the date of entry into force of the 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”) as to the United States) has a term of fifteen years from the date of patent grant (see Public Law 112-211). See 35 U.S.C. 173 and MPEP § 1505. Under the Hague Agreement, qualified applicants may apply for design protection in the Contracting Parties to the Hague Agreement by filing a single, standardized international design application in a single language. Therefore, the term “design patents” includes patents issued from design applications filed under 35 U.S.C. 111 and international design applications filed under 35 U.S.C. 385. The Patent Law Treaties Implementation Act of 2012, Public Law 112-112, which implemented the provisions of the HagueAgreement, amended 35 U.S.C. 154(a)(2) to delete "section 120, 121, or 365(c)" and to insert "section 120, 121, 365(c), or 386(c)" and 35 U.S.C. 154(a)(3) to delete "section 119, 365(a), or 365(b)" and to insert "section 119, 365(a), 365(b), 386(a), or 386(b)."
All patents (other than design patents) that were in force on June 8, 1995, or that issued on an application that was filed before June 8, 1995, have a term that is the greater of the “twenty-year term” or seventeen years from the patent grant. See 35 U.S.C. 154(c). A patent granted on an international application filed before June 8, 1995, and which entered the national stage under 35 U.S.C. 371 before, on or after June 8, 1995, will have a term that is the greater of seventeen years from the date of grant or twenty years from the international filing
date or any earlier filing date relied upon under 35 U.S.C. 120, 121 or 365(c). The terms of these patents are subject to reduction by any applicable terminal disclaimers (discussed below).
I. CONTINUING APPLICATIONS
A patent granted on a continuation, divisional, or continuation-in-part application that was filed on or after June 8, 1995, will have a term which ends twenty years from the filing date of earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) regardless of whether the application for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c) was filed prior to June 8, 1995.
II. INTERNATIONAL APPLICATIONS
A patent granted on an international application filed on or after June 8, 1995 and which enters the national stage under 35 U.S.C. 371 will have a term which ends twenty years from the filing date of the international application. A continuation or a continuation-in-part application claiming benefit under 35 U.S.C. 365(c) of an international application filed under 35 U.S.C. 363 designating the United States will have a term which ends twenty years from the filing date of the parent international application.
III. FOREIGN PRIORITY
Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent. Accordingly, an application claiming priority under 35 U.S.C. 365(a), 365(b), 386(a), or 386(b) has a term which ends twenty years from the filing date of the application in the United States and not the prior international application or international design application.
IV. DOMESTIC BENEFIT UNDER 35 U.S.C. 119(e)
Domestic priority under 35 U.S.C. 119(e) to one or more U.S. provisional applications is not considered in the calculation of the twenty-year term. See 35 U.S.C. 154(a)(3).
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2701
V. EXPIRATION DATE OF PATENTS WITH TERMINAL DISCLAIMERS
To determine the “original expiration date” of a patent subject to a terminal disclaimer, it is generally necessary to examine the language of the terminal disclaimer in the patent file history. If the disclaimer disclaims the terminal portion of the term of the patent which would extend beyond the expiration date of an earlier issued patent, then the expiration date of the earlier issued patent determines the expiration date of the patent subject to the terminal disclaimer. Before June 8, 1995, the terminal disclaimer date was printed on the face of the patent; the date was determined from the expected expiration date of the earlier issued patent based on a seventeen year term measured from grant. When 35 U.S.C. 154 was amended such that all patents (other than design patents) that were in force on June 8, 1995, or that issued on an application that was filed before June 8, 1995, have a term that is the greater of the “twenty year term” or seventeen years from the patent grant, the terminal disclaimer date as printed on many patents became incorrect. If the terminal disclaimer of record in the patent file disclaims the terminal portion of the patent subsequent to the full statutory term of a referenced patent (without identifying a specific date), then the date printed on the face of the patent is incorrect when the full statutory term of the referenced patent is changed as a result of 35 U.S.C. 154(c). That is, the referenced patent’s “twenty year term” is longer than the seventeen year term. In such a case, a patentee may request a Certificate of Correction under 37 CFR 1.323 to correct the information printed on the face of the patent. See Bayer AG v. Carlsbad Tech., Inc., 298 F.3d 1377, 64 USPQ2d 1045 (Fed. Cir. 2002). However, if the terminal disclaimer of record in the patent file disclaims the terminal portion of the patent subsequent to a specific date, without reference to the full statutory term of a referenced patent, then the expiration date is the date specified. But a patent term extension under 35 U.S.C. 156 may be applied to patent that is subject to a terminal disclaimer. See Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317, 82 USPQ2d 1203 (Fed. Cir. 2007).
Several decisions related to disclaimers are posted in the Freedom of Information Act (FOIA) section of the USPTO website (www.uspto.gov).
VI. PATENT TERM EXTENSIONS OR ADJUSTMENTS
See MPEP § 2710 et seq. for patent term extensions or adjustments for delays within the USPTO under 35 U.S.C. 154 for utility and plant patents issuing on applications filed on or after June 8, 1995. Patents that issue from applications filed before June 8, 1995, are not eligible for patent term extension or patent term adjustment under 35 U.S.C. 154.
See MPEP § 2750 et seq. for patent term extensions available under 35 U.S.C. 156 for premarket regulatory review. The patent term extension that may be available under 35 U.S.C. 156 for premarket regulatory review is separate from and will be added to any extension that may be available under former and current 35 U.S.C. 154. While patents that issue from applications filed before June 8, 1995, are not eligible for term adjustment under 35 U.S.C. 154, such patents may be extended under 35 U.S.C. 156.
2702 -2709 [Reserved]
2710 Term Extensions or Adjustments for Delays Within the USPTO Under 35 U.S.C. 154 [R-07.2015]
Utility and plant patents issuing on applications filed on or after June 8, 1995, but before May 29, 2000, are eligible for the patent term extension provisions of former 35 U.S.C. 154(b) and 37 CFR 1.701. See MPEP § 2720. Utility and plant patents issuing on applications filed on or after May 29, 2000 are eligible for the patent term adjustment provisions of 35 U.S.C. 154(b)(effective May 29, 2000 and amended thereafter) and 37 CFR 1.702 -1.705. See MPEP § 2730. See Thomas D. Sykes v. Jon W. Dudas, 573 F.Supp2d 191, 89 USPQ2d 1423 (D.D.C. 2008).
Plant and utility patents issuing on applications filed before June 8, 1995 which have a term that is the
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§ 2710PATENT TERMS AND EXTENSIONS
greater of the “twenty-year term” (see MPEP § 2701) or seventeen years from patent grant are not eligible for term extension or adjustment due to delays in processing the patent application by the United States Patent and Trademark Office.
Since the term of a design patent is not affected by the length of time prosecution takes place, there are no patent term adjustment provisions for design patents. The term “design patents” includes patents issued from design applications filed under 35 U.S.C. 111 and international design applications filed under 35 U.S.C. 385.
2711 -2719 [Reserved]
2720 Applications Filed Between June 8, 1995, and May 28, 2000 [R-11.2013]
Former 35 U.S.C. 154 Contents and term of patent.
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(b) TERM EXTENSION.—
(1) INTERFERENCE DELAY OR SECRECY ORDERS.—If the issue of an original patent is delayed due to a proceeding under section 135(a) of this title, or because the application for patent is placed under an order pursuant to section 181 of this title, the term of the patent shall be extended for the period of delay, but in no case more than 5 years.
(2) EXTENSION FOR APPELLATE REVIEW. —If the issue of a patent is delayed due to appellate review by the Board of Patent Appeals and Interferences or by a Federal court and the patent is issued pursuant to a decision in the review reversing an adverse determination of patentability, the term of the patent shall be extended for a period of time but in no case more than 5 years. A patent shall not be eligible for extension under this paragraph if it is subject to a terminal disclaimer due to the issue of another patent claiming subject matter that is not patentably distinct from that under appellate review.
(3) LIMITATIONS.—The period of extension referred to in paragraph (2)—
(A) shall include any period beginning on the date on which an appeal is filed under section 134 or 141 of this title, or on which an action is commenced under section 145 of this title, and ending on the date of a final decision in favor of the applicant;
(B) shall be reduced by any time attributable to appellate review before the expiration of 3 years from the filing date of the application for patent; and
(C) shall be reduced for the period of time during which the applicant for patent did not act with due diligence, as determined by the Commissioner.
(4) LENGTH OF EXTENSION.—The total duration of all extensions of a patent under this subsection shall not exceed 5 years.
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37 CFR 1.701 Extension of patent term due to examination delay under the Uruguay Round Agreements Act (original applications, other than designs, filed on or after June 8, 1995, and before May 29, 2000).
(a) A patent, other than for designs, issued on an application filed on or after June 8, 1995, is entitled to extension of the patent term if the issuance of the patent was delayed due to:
(1) Interference or derivation proceedings under 35 U.S.C. 135(a); and/or
(2) The application being placed under a secrecy order under 35 U.S.C. 181; and/or
(3) Appellate review by the Patent Trial and Appeal Board or by a Federal court under 35 U.S.C. 141 or 145, if the patent was issued pursuant to a decision in the review reversing an adverse determination of patentability and if the patent is not subject to a terminal disclaimer due to the issuance of another patent claiming subject matter that is not patentably distinct from that under appellate review. If an application is remanded by a panel of the Patent Trial and Appeal Board and the remand is the last action by a panel of the Patent Trial and Appeal Board prior to the mailing of a notice of allowance under 35 U.S.C. 151 in the application, the remand shall be considered a decision in the review reversing an adverse determination of patentability as that phrase is used in 35 U.S.C. 154(b)(2) as amended by section 532(a) of the Uruguay Round Agreements Act, Public Law 103-465, 108 Stat. 4809, 4983-85 (1994), and a final decision in favor of the applicant under paragraph (c)(3) of this section. A remand by a panel of the Patent Trial and Appeal Board shall not be considered a decision in the review reversing an adverse determination of patentability as provided in this paragraph if there is filed a request for continued examination under 35 U.S.C. 132(b) that was not first preceded by the mailing, after such remand, of at least one of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
(b) The term of a patent entitled to extension under paragraph (a) of this section shall be extended for the sum of the periods of delay calculated under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this section, to the extent that these periods are not overlapping, up to a maximum of five years. The extension will run from the expiration date of the patent.
(c)(1) The period of delay under paragraph (a)(1) of this section for an application is the sum of the following periods, to the extent that the periods are not overlapping:
(i) With respect to each interference or derivation proceeding in which the application was involved, the number of days, if any, in the period beginning on the date the
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2711 -2719
interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
(ii) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Patent and Trademark Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension.
(2) The period of delay under paragraph (a)(2) of this section for an application is the sum of the following periods, to the extent that the periods are not overlapping:
(i) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
(ii) The number of days, if any, in the period beginning on the date of mailing of an examiner’s answer under § 41.39 of this title in the application under secrecy order and ending on the date the secrecy order and any renewal thereof was removed;
(iii) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding would be instituted but for the secrecy order and ending on the date the secrecy order and any renewal thereof was removed; and
(iv) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) and ending on the date of mailing of the notice of allowance under § 1.311.
(3) The period of delay under paragraph (a)(3) of this section is the sum of the number of days, if any, in the period beginning on the date on which an appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and ending on the date of a final decision in favor of the applicant by the Patent Trial and Appeal Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
(d) The period of delay set forth in paragraph (c)(3) shall be reduced by:
(1) Any time during the period of appellate review that occurred before three years from the filing of the first national application for patent presented for examination; and
(2) Any time during the period of appellate review, as determined by the Director, during which the applicant for patent did not act with due diligence. In determining the due diligence of an applicant, the Director may examine the facts and circumstances of the applicant’s actions during the period of appellate review to determine whether the applicant exhibited that degree of timeliness as may reasonably be expected from, and which is ordinarily exercised by, a person during a period of appellate review.
(e) The provisions of this section apply only to original patents, except for design patents, issued on applications filed on or after June 8, 1995, and before May 29, 2000.
The twenty-year term of a patent issuing from an application filed on or after June 8, 1995, and before May 29, 2000, may be extended for a maximum of five years for delays in the issuance of the patent due to interferences, secrecy orders and/or successful appeals to the Patent Trial and Appeal Board (Board) or the federal courts in accordance with 37 CFR 1.701. See former 35 U.S.C. 154(b), as reproduced above. Extensions for successful appeals are limited in that the patent must not be subject to a terminal disclaimer. Further, the period of extension will be reduced by any time attributable to appellate review within three years of the filing date of the first national application for patent, and the period of extension for appellate review will be reduced by any time during which the applicant did not act with due diligence. The patent term extension that may be available under 35 U.S.C. 156 for premarket regulatory review is separate from and will be added to any extension that may be available under former and current 35 U.S.C. 154. See MPEP § 2750 et seq. 35 U.S.C. 154(b) was amended, effective May 29, 2000, to provide for patent term adjustment for applications filed on or after May 29, 2000, but the provisions of former 35 U.S.C. 154(b), as reproduced above, continue to apply to applications filed between and including June 8, 1995 and May 28, 2000. 35 U.S.C. 154 also was amended effective September 16, 2012 and January 14, 2013.
Examiners make no decisions regarding patent term extensions. Any patent term extension granted as a result of administrative delay pursuant to 37 CFR 1.701 will be printed on the face of the patent in generally the same location as the terminal disclaimer information. The term of a patent will be readily discernible from the face of the patent (i.e., from the filing date, continuing data, issue date and any patent term extensions printed on the patent).
If applicant disagrees with the patent term extension information printed on the front page of the patent, applicant may request review by way of a petition under 37 CFR 1.181. If the petition is granted, a Certificate of Correction pursuant to 37 CFR 1.322 will be issued.
Effective May 24, 2004, 37 CFR 1.701(a)(3) was amended to indicate that certain remands by the Board shall be considered “a decision in the review
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§ 2720PATENT TERMS AND EXTENSIONS
reversing an adverse determination of patentability” for patent term extension purposes.
Petitions and Certificates of Correction regarding patent term extension under former 35 U.S.C. 154(b) should be addressed to Mail Stop Patent Ext., Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
2721 -2729 [Reserved]
2730 Applications Filed on or After May 29, 2000; Grounds for Adjustment [R-07.2015]
35 U.S.C. 154 Contents and term of patent; provisional rights.
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(b) ADJUSTMENT OF PATENT TERM.—
(1) PATENT TERM GUARANTEES.—
(A) GUARANTEE OF PROMPT PATENT AND TRADEMARK OFFICE RESPONSES.— Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to—
(i) provide at least one of the notifications under section 132 or a notice of allowance under section 151 of this title not later than 14 months after—
(I) the date on which an application was filed under section 111(a); or
(II) the date of commencement of the national stage under section 371 in an international application;
(ii) respond to a reply under section 132, or to an appeal taken under section 134, within 4 months after the date on which the reply was filed or the appeal was taken;
(iii) act on an application within 4 months after the date of a decision by the Patent Trial and Appeal Board under section 134 or 135 or a decision by a Federal court under section 141, 145, or 146 in a case in which allowable claims remain in the application; or
(iv) issue a patent within 4 months after the date on which the issue fee was paid under section 151 and all outstanding requirements were satisfied,
the term of the patent shall be extended 1 day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.
(B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY.— Subject to the
limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application under section 111(a) in the United States, or, in the case of an international application, the date of commencement of the national stage under section 371 in the international application, not including—
(i) any time consumed by continued examination of the application requested by the applicant under section 132(b);
(ii) any time consumed by a proceeding under section 135(a), any time consumed by the imposition of an order under section 181, or any time consumed by appellate review by the Patent Trial and Appeal Board or by a Federal court; or
(iii) any delay in the processing of the application by the United States Patent and Trademark Office requested by the applicant except as permitted by paragraph (3)(C),
the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.
(C) GUARANTEE OF ADJUSTMENTS FOR DELAYS DUE TO DERIVATION PROCEEDINGS, SECRECY ORDERS, AND APPEALS.— Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to—
(i) a proceeding under section 135(a);
(ii) the imposition of an order under section 181; or
(iii) appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability, the term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.
(2) LIMITATIONS.—
(A) IN GENERAL.— To the extent that periods of delay attributable to grounds specified in paragraph (1) overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.
(B) DISCLAIMED TERM.— No patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.
(C) REDUCTION OF PERIOD OF ADJUSTMENT.—
(i) The period of adjustment of the term of a patent under paragraph (1) shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.
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(ii) With respect to adjustments to patent term made under the authority of paragraph (1)(B), an applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of 3 months that are taken to respond to a notice from the Office making any rejection, objection, argument, or other request, measuring such 3-month period from the date the notice was given or mailed to the applicant.
(iii) The Director shall prescribe regulations establishing the circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.
(3) PROCEDURES FOR PATENT TERM ADJUSTMENT DETERMINATION.—
(A) The Director shall prescribe regulations establishing procedures for the application for and determination of patent term adjustments under this subsection.
(B) Under the procedures established under subparagraph (A), the Director shall—
(i) make a determination of the period of any patent term adjustment under this subsection, and shall transmit a notice of that determination no later than the date of issuance of the patent; and
(ii) provide the applicant one opportunity to request reconsideration of any patent term adjustment determination made by the Director.
(C) The Director shall reinstate all or part of the cumulative period of time of an adjustment under paragraph (2)(C) if the applicant, prior to the issuance of the patent, makes a showing that, in spite of all due care, the applicant was unable to respond within the 3-month period, but in no case shall more than three additional months for each such response beyond the original 3-month period be reinstated.
(D) The Director shall proceed to grant the patent after completion of the Director’s determination of a patent term adjustment under the procedures established under this subsection, notwithstanding any appeal taken by the applicant of such determination.
(4) APPEAL OF PATENT TERM ADJUSTMENT DETERMINATION.—
(A) An applicant dissatisfied with the Director’s decision on the applicant’s request for reconsideration under paragraph (3)(B)(ii) shall have the exclusive remedy by a civil action against the Director filed in the United States District Court for the Eastern District of Virginia within 180 days after the date of the Director’s decision on the applicant’s request for reconsideration. Chapter 7 of title 5, United States Code, shall apply to such action. Any final judgment resulting in a change to the period of adjustment of the patent term shall be served on the Director, and the Director shall thereafter alter the term of the patent to reflect such change.
(B) The determination of a patent term adjustment under this subsection shall not be subject to appeal or challenge by a third party prior to the grant of the patent.
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37 CFR 1.702 Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000).
[Editor Note: The provision of 37 CFR 1.702(a)(1), as reproduced below, was effective on April 1, 2013 and applies to patent applications granted on or after January 14, 2013.]
(a) Failure to take certain actions within specified time frames. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to:
(1) Mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application;
(2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken under 35 U.S.C. 134 not later than four months after the date on which the reply was filed or the appeal was taken;
(3) Act on an application not later than four months after the date of a decision by the Patent Trial And Appeal Board under 35 U.S.C. 134 or 135 or a decision by a Federal court under 35 U.S.C. 141, 145, or 146 where at least one allowable claim remains in the application; or
(4) Issue a patent not later than four months after the date on which the issue fee was paid under 35 U.S.C. 151 and all outstanding requirements were satisfied.
(b) Three-year pendency. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to issue a patent within three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application, but not including:
(1) Any time consumed by continued examination of the application under 35 U.S.C. 132(b);
(2) Any time consumed by an interference or derivation proceeding under 35 U.S.C. 135(a);
(3) Any time consumed by the imposition of a secrecy order under 35 U.S.C. 181;
(4) Any time consumed by review by the Patent Trial and Appeal Board or a Federal court; or
(5) Any delay in the processing of the application by the Office that was requested by the applicant.
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§ 2730PATENT TERMS AND EXTENSIONS
(c) Delays caused by interference and derivation proceedings. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to interference or derivation proceedings under 35 U.S.C. 135(a).
(d) Delays caused by secrecy order. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the application being placed under a secrecy order under 35 U.S.C. 181.
(e) Delays caused by successful appellate review. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to review by the Patent Trial and Appeal Board under 35 U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, if the patent was issued under a decision in the review reversing an adverse determination of patentability. If an application is remanded by a panel of the Patent Trial and Appeal Board and the remand is the last action by a panel of the Patent Trial and Appeal Board prior to the mailing of a notice of allowance under 35 U.S.C. 151 in the application, the remand shall be considered a decision by the Patent Trial and Appeal Board as that phrase is used in 35 U.S.C. 154(b)(1)(A)(iii), a decision in the review reversing an adverse determination of patentability as that phrase is used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision in favor of the applicant under § 1.703(e). A remand by a panel of the Patent Trial and Appeal Board shall not be considered a decision in the review reversing an adverse determination of patentability as provided in this paragraph if there is filed a request for continued examination under 35 U.S.C. 132(b) that was not first preceded by the mailing, after such remand, of at least one of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
(f) The provisions of this section and §§ 1.703 through 1.705 apply only to original applications, except applications for a design patent, filed on or after May 29, 2000, and patents issued on such applications.
35 U.S.C. 154(b), was amended effective May 29, 2000, and further amended by Public Law 112-29, enacted on September 16, 2011, known as the Leahy-Smith America Invents Act (AIA) and by Public Law 112-274, enacted on January 14, 2013, known as the AIA Technical Corrections Act. All references to 35 U.S.C. 154(b) hereinafter are to 35 U.S.C. 154(b), as amended effective May 29, 2000 and as further amended by Public Laws 112-29 and 112-274. 37 CFR 1.702-1.705 implement the provisions of 35 U.S.C. 154(b) and apply to utility and plant patent applications filed on or after May 29, 2000.
Due to various effective dates of changes to the provisions of 37 CFR 1.702-1.705, there are several versions currently in place. For example, there is a version of 37 CFR 1.702 that applies only to patents
granted on or after January 14, 2013 and another version that applies to patents granted prior to January 14, 2013. For another example, there is a version of the provisions of 37 CFR 1.703(b)(4) and (e) that are only applicable to applications and patents in which a notice of allowance issued on or after September 17, 2012. Office personnel need to carefully consider the effective date provisions in the regulations in order to determine which version to apply to the particular application or patent under consideration.
37 CFR 1.702 sets forth the bases for patent term adjustment under 35 U.S.C. 154(b)(1).
37 CFR 1.702(a) indicates that a patent is entitled to patent term adjustment if the Office fails to perform certain acts of examination within specified time frames (35 U.S.C. 154(b)(1)(A)).
Effective September 16, 2012, the Board of Patent Appeals and Interferences has been redesignated the Patent Trial and Appeal Board. Accordingly, 37 CFR 1.702(a)(3) has been amended to reflect the redesignation of the patent appeal board.
For applications in which a patent was granted on or after January 14, 2013, 37 CFR 1.702(a)(1) provides patent term adjustment if the Office fails to mail either a notification under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 not later than 14 months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application. For applications filed on or after May 29, 2000 in which the patent was granted prior to January 14 2013, the fourteen month measurement in international applications is based upon the date that the application fulfilled the requirements of 35 U.S.C. 371 and not the date the national stage commenced. See 37 CFR 1.702(a)(1)(pre-2013-04-01).
37 CFR 1.702(b) indicates that a patent is entitled to patent term adjustment if, subject to a number of limitations, the Office fails to issue a patent within three years of the actual filing date of the application (35 U.S.C. 154(b)(1)(B)). In the case of an international application, the phrase “actual filing date of the application in the United States” means
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the date the national stage commenced under 35 U.S.C. 371(b) or (f). See Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR 56366, 56382-84, (September 18, 2000), 1239 OG 14, 28-30 (October 3, 2000). On January 14, 2013, section 1(h)(1)(B) of the AIA Technical Corrections Act amended 35 U.S.C. 154(b)(1)(B) to change “the actual filing date of the application in the United States” to “the actual filing date of the application under section 111(a) in the United States, or, in the case of an international application, the date of commencement of the national stage under section 371 in the international application.” The clarification of the meaning of the phrase “actual filing date of the application in the United States” did not require a change to the language of 37 CFR 1.702(b) because the Office had interpreted, by regulation, the language of the former 35 U.S.C. 154(b)(1)(B) to have the same meaning as the current 35 U.S.C. 154(b)(1)(B), as discussed above. See Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR 56366, 56382-84, (September 18, 2000), 1239 OG 14, 28-30 (October 3, 2000). See also Revisions to Patent Term Adjustment, 78 FR 19416, 19417 (April 1, 2013), 1389 OG 224 (April 23, 2013).
Effective on September 16, 2012, 37 CFR 1.702(b)(2) was amended to reflect the statutory change in section 3(i) of the AIA that replaced interference proceedings with derivation proceedings for some applications. In addition, section 3(j) of the AIA redesignated the title “Board of Patent Appeals and Interferences” as “Patent Trial and Appeal Board” in 35 U.S.C. 134, 145, 146, 154, and 305. Accordingly, 37 CFR 1.702(b)(4) was amended to reflect the redesignation of the title of the Board. See Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act, 77 FR 46615 (August 6, 2012).
37 CFR 1.702(c) also indicates that a patent is entitled to patent term adjustment if the issuance of the patent was delayed by an interference proceeding (35 U.S.C. 154(b)(1)(C)(i)). Effective September 16, 2012, 37 CFR 1.702(c) was amended to reflect the statutory change in section 3(i) of the AIA that replaced interference proceedings with derivation proceedings for certain applications. Specifically, 37 CFR 1.702(c) added derivation proceedings to
the guarantees of adjustment for Office delays. In addition, section 3(j) of the AIA redesignated the title “Board of Patent Appeals and Interferences” as “Patent Trial and Appeal Board” in 35 U.S.C. 134, 145, 146, 154, and 305. 37 CFR 1.702(d) indicates that a patent is entitled to patent term adjustment if the issuance of the patent was delayed by the application being placed under a secrecy order under 35 U.S.C. 181 (35 U.S.C. 154(b)(1)(C)(ii)). 37 CFR 1.702(e) indicates that a patent is entitled to patent term adjustment if the issuance of the patent was delayed by successful appellate review under 35 U.S.C. 134, 141, or 145 (35 U.S.C. 154(b)(1)(C)(iii)).
Effective May 24, 2004, 37 CFR 1.702(e) was amended to indicate that certain remands by the Board of Patent Appeals and Interferences shall be considered “a decision in the review reversing an adverse determination of patentability” for patent term adjustment purposes. Effective September 16, 2012, 37 CFR 1.702(e) was amended to implemented section (3)(j) of the AIA by redesignating the title “Board of Patent Appeals and Interferences” as “Patent Trial and Appeal Board”.
37 CFR 1.702(f) provides that the provisions of 37 CFR 1.702 through 1.705 apply only to original (i.e., non-reissue) applications, except applications for design patents, filed on or after May 29, 2000, and patents issued on such applications. The term ‘‘original application’’ includes a continuing application (continuation, divisional, or continuation-in-part, whether the application is filed under 37 CFR 1.53(b) or as a continued prosecution application under 37 CFR 1.53(d)) and an international application under 35 U.S.C. 363 which has entered the national stage. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 87 USPQ2d 1705 (Fed. Cir. 2008). In particular, since a continued prosecution application (CPA) filed under 37 CFR 1.53(d) is a new (continuing) application, a CPA filed on or after May 29, 2000, and before July 14, 2003, is entitled to the benefits of the patent term adjustment provisions of 35 U.S.C. 154(b) and 37 CFR 1.702 through 1.705. Since a request for continued examination (RCE) filed under 35 U.S.C. 132(b) and 37 CFR 1.114 is not a new application (it is a submission in a previously filed application), filing an RCE in an application filed before May 29,
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2000, does not cause that application to be entitled to the benefits of the patent term adjustment provisions of 35 U.S.C. 154(b) and 37 CFR 1.702 through 1.705. In regard to international applications, such an application must have an international filing date on or after May 29, 2000 in order for the provisions of 37 CFR 1.702 through 1.705 to apply. The date on which an international application fulfills the requirements of 35 U.S.C. 371 (e.g., enters the national stage) is not the filing date of the international application. See 35 U.S.C. 363. The term “design patents” includes patents issued from design applications filed under 35 U.S.C. 111 and international design applications filed under 35 U.S.C. 385.
37 CFR 1.703 Period of adjustment of patent term due to examination delay.
[Editor Note: 37 CFR 1.703(a)(1), as reproduced below, includes amendments applicable only to patents granted on or after January 14, 2013 and 37 CFR 1.703(b)(4) and (e), as reproduced below, include amendments applicable only to applications and patents in which a notice of allowance issued on or after September 17, 2012. See 37 CFR 1.703 (2012-09-17 thru 2013-03-31) or 37 CFR 1.703 (pre-2012-09-17) for paragraph (a)(1) applicable to patents granted before January 14, 2013. See 37 CFR 1.703 (pre-2012-09-17) for paragraphs (b)(4) and (e) that apply if the notice of allowance was issued before September 17, 2012.]
(a) The period of adjustment under § 1.702(a) is the sum of the following periods:
(1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(2) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply under § 1.111 was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(3) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply in compliance with § 1.113(c) was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(4) The number of days, if any, in the period beginning on the day after the date that is four months after the date an appeal brief in compliance with § 41.37 was filed and ending on the date of mailing of any of an examiner’s answer under § 41.39, an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(5) The number of days, if any, in the period beginning on the day after the date that is four months after the date of a final decision by the Patent Trial and Appeal Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 or 146 where at least one allowable claim remains in the application and ending on the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first; and
(6) The number of days, if any, in the period beginning on the day after the date that is four months after the date the issue fee was paid and all outstanding requirements were satisfied and ending on the date a patent was issued.
(b) The period of adjustment under § 1.702(b) is the number of days, if any, in the period beginning on the day after the date that is three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date a patent was issued, but not including the sum of the following periods:
(1) The number of days, if any, in the period beginning on the date on which any request for continued examination of the application under 35 U.S.C. 132(b) was filed and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151;
(2)(i) The number of days, if any, in the period beginning on the date an interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding under 35 U.S.C. 135(a) and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
(ii) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension;
(3)(i) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
(ii) The number of days, if any, in the period beginning on the date of mailing of an examiner's answer under § 41.39 in the application under secrecy order and ending on the date the secrecy order was removed;
(iii) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding under 35 U.S.C. 135(a) would be instituted but for the secrecy order and ending on the date the secrecy order was removed; and
(iv) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151; and,
(4) The number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Patent Trial and Appeal Board under § 41.35(a) of this chapter and ending on the date that jurisdiction by the Patent Trial and Appeal Board ends under § 41.35(b) of this chapter
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or the date of the last decision by a Federal court in an appeal under 35 U.S.C. 141 or civil action under 35 U.S.C. 145, whichever is later.
(c) The period of adjustment under § 1.702(c) is the sum of the following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, in the period beginning on the date an interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding under 35 U.S.C. 135(a) and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
(2) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension.
(d) The period of adjustment under § 1.702(d) is the sum of the following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
(2) The number of days, if any, in the period beginning on the date of mailing of an examiner’s answer under § 41.39 in the application under secrecy order and ending on the date the secrecy order was removed;
(3) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding under 35 U.S.C. 135(a) would be instituted but for the secrecy order and ending on the date the secrecy order was removed; and
(4) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151.
(e) The period of adjustment under § 1.702(e) is the sum of the number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Patent Trial and Appeal Board under § 41.45(a) of this chapter and ending on the date of a final decision in favor of applicant by the Patent Trial and Appeal Board or a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
(f) The adjustment will run from the expiration date of the patent as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of delay attributable to the grounds specified in § 1.702 overlap, the period of adjustment granted under this section shall not exceed the actual number of days the issuance of the patent was delayed. The term of a patent entitled to adjustment under § 1.702 and this section shall be adjusted for the sum of the periods calculated under paragraphs (a) through (e) of this section, to the extent that such periods are not overlapping, less the sum of the periods calculated under § 1.704. The date indicated on any certificate of mailing or transmission under § 1.8 shall not be taken into account in this calculation.
(g) No patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under § 1.702 and this section beyond the expiration date specified in the disclaimer.
37 CFR 1.703 specifies the period of adjustment if a patent is entitled to patent term adjustment under 35 U.S.C. 154(b)(1) and 37 CFR 1.702. See MPEP § 2731 for more information.
On September 16, 2012, 37 CFR 1.703 was amended to reflect the statutory change in section 3(i) of the AIA that replaced interference proceedings with derivation proceedings for certain applications. See AIA section 3(n). 37 CFR 1.702(c) added derivation proceedings to the guarantees of adjustment for Office delays. In addition, section 3(j) of the AIA redesignated the “Board of Patent Appeals and Interferences” as “Patent Trial and Appeal Board” in 35 U.S.C. 134, 145, 146, 154, and 305. 37 CFR 1.703(a)(5) was amended to reflect the change to the title of the Patent Board and 37 CFR 1.703(b)(2), (b)(3), (c)(1), and (d)(3) were amended to reflect the addition of derivation proceedings to the rules providing patent term adjustment for Office delay.
Effective September 17, 2012, any application that receives a notice of allowance on or after such date and issues as a patent, is entitled to patent term adjustment under 37 CFR 1.702(e) for the sum of the number of days, if any, in the period beginning on the date on which jurisdiction passes to the Patent Trial and Appeal Board and ends on the date of a final decision in favor of applicant by the Patent Trial and Appeal Board or a federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145. See Revisions of Patent Term Adjustment Provisions Relating to Appellate Review, 77 FR 49354 (August 16, 2012).
Effective September 17, 2012, any application that receives a notice of allowance on or after such date and issues as a patent, the three year delay under 37 CFR 1.703(b) does not include the number of days, if any, in the period beginning on the date which jurisdiction passes to the Patent Trial and Appeal Board under 37 CFR 41.35(a) to the date that the jurisdiction of the Patent Trial and Appeal Board ends under 37 CFR 41.35(b) or the date of the last decision by the federal court in an appeal under 35 U.S.C. 141 or civil action under 35 U.S.C. 145.
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The Office will also apply the changes to 37 CFR 1.703 in any timely patent term adjustment reconsideration proceeding that is initiated on or after September 17, 2012. To allow patentees to take advantage of changes to this provision relating to appellate review, the Office will consider any of the following timely-filed proceedings to be an eligible "patent term adjustment reconsideration proceeding" if initiated on or after September 17, 2012:
(1) reconsideration proceedings initiated pursuant to a remand from a timely filed civil action in federal court;
(2) reconsideration proceedings initiated pursuant to a timely request for reconsideration of the patent term adjustment indicated in the patent under 37 CFR 1.705(d) (2012) in which the patentee argues that the change to 37 CFR 1.703 in this final rule is applicable to his or her patent; and
(3) reconsideration proceedings initiated pursuant to a request for reconsideration that seeks reconsideration of the Office’s decision under 37 CFR 1.705(d) (2012) regarding patent term adjustment under the Office’s former interpretation of the appellate review language of 35 U.S.C. 154(b)(1)(B)(ii) and (C)(iii), if such request is filed within two months of the date of the decision for which reconsideration is requested. See 37 CFR 1.181(f).
For applications in which the patent was granted on or after January 14, 2013, 37 CFR 1.703(a)(1) provides patent term adjustment if the Office fails to mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than 14 months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application. For applications filed on or after May 29, 2000 in which the patent was granted prior to January 14, 2013, the fourteen month measurement in international applications is based upon the date that application fulfilled the requirements of 35 U.S.C. 371 and not the date the national stage commenced.
Effective January 9, 2015, 37 CFR 1.703(b)(1) was amended to provide that the time consumed by continued examination of the application under 35 U.S.C. 132(b) is the number of days, if any, in the
period beginning on the date on which any request for continued examination of the application under 35 U.S.C. 132(b) was filed and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151. This change is effective for any patent granted before, on, or after January 9, 2015. See MPEP § 2731 for more information. See also Novartis AG v. Lee, 740 F.3d 593, 109 USPQ2d 1385 (Fed. Cir. 2014).
37 CFR 1.704 Reduction of period of adjustment of patent term.
[Editor Note: 37 CFR 1.704(c)(12), as reproduced below, include changes applicable only to applications in which a request for continued examination under 35 U.S.C. 132(b) and 37 CFR 1.114 was filed on or after March 10, 2015. In addition, 37 CFR 1.704(c)(11), (c)(13), (c)(14), and (f), as reproduced below, include changes applicable only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and to international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013. For 37 CFR 1.704(c)(11) and (c)(12) in effect for applications filed before (and international applications in which the national stage commenced before) December 18, 2013, and in which a notice of appeal was filed on or after September 17, 2012, see 37 CFR 1.704 (2012-09-17 thru 2013-12-17). For 37 CFR 1.704(c)(11) in effect for applications in which there was no notice of appeal filed on or after September 17, 2012, see 37 CFR 1.704 (pre-2012-09-17).37 CFR 1.704(e) below includes changes applicable only to applications in which a notice of allowance was mailed on or after April 1, 2013. For 37 CFR 1.704(e) in effect for applications in which the notice of allowance was mailed prior to April 1, 2013, see 37 CFR 1.704(e)(pre-2013-03-31). 37 CFR 1.704(c)(10)(ii) below includes changes applicable only to patent applications in which a notice of appeal was filed on or after September 17, 2012. For 37 CFR 1.704(c)(10) in effect for applications in which the notice of appeal filed prior to September 17, 2012, see 37 CFR 1.704(c)(10)(pre-2012-09-17).]
(a) The period of adjustment of the term of a patent under § 1.703(a) through (e) shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution (processing or examination) of the application.
(b) With respect to the grounds for adjustment set forth in §§ 1.702(a) through (e), and in particular the ground of adjustment set forth in § 1.702(b), an applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of three months that are taken to reply to any notice or action by the Office making any rejection, objection, argument, or other request, measuring such three-month period from the date the notice or action was mailed or given to the applicant, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is three months after the date of mailing or transmission of the Office communication notifying the applicant of the rejection,
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objection, argument, or other request and ending on the date the reply was filed. The period, or shortened statutory period, for reply that is set in the Office action or notice has no effect on the three-month period set forth in this paragraph.
(c) Circumstances that constitute a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application also include the following circumstances, which will result in the following reduction of the period of adjustment set forth in § 1.703 to the extent that the periods are not overlapping:
(1) Suspension of action under § 1.103 at the applicant’s request, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date a request for suspension of action under § 1.103 was filed and ending on the date of the termination of the suspension;
(2) Deferral of issuance of a patent under § 1.314, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date a request for deferral of issuance of a patent under § 1.314 was filed and ending on the date the patent was issued;
(3) Abandonment of the application or late payment of the issue fee, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date of abandonment or the date after the date the issue fee was due and ending on the earlier of:
(i) The date of mailing of the decision reviving the application or accepting late payment of the issue fee; or
(ii) The date that is four months after the date the grantable petition to revive the application or accept late payment of the issue fee was filed;
(4) Failure to file a petition to withdraw the holding of abandonment or to revive an application within two months from the mailing date of a notice of abandonment, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date two months from the mailing date of a notice of abandonment and ending on the date a petition to withdraw the holding of abandonment or to revive the application was filed;
(5) Conversion of a provisional application under 35 U.S.C. 111(b) to a nonprovisional application under 35 U.S.C. 111(a) pursuant to 35 U.S.C. 111(b)(5), in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date the application was filed under 35 U.S.C. 111(b) and ending on the date a request in compliance with § 1.53(c)(3) to convert the provisional application into a nonprovisional application was filed;
(6) Submission of a preliminary amendment or other preliminary paper less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
(i) The number of days, if any, beginning on the day after the mailing date of the original Office action or notice
of allowance and ending on the date of mailing of the supplemental Office action or notice of allowance; or
(ii) Four months;
(7) Submission of a reply having an omission (§ 1.135(c)), in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the reply having an omission was filed and ending on the date that the reply or other paper correcting the omission was filed;
(8) Submission of a supplemental reply or other paper, other than a supplemental reply or other paper expressly requested by the examiner, after a reply has been filed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the initial reply was filed and ending on the date that the supplemental reply or other such paper was filed;
(9) Submission of an amendment or other paper after a decision by the Patent Trial and Appeal Board, other than a decision designated as containing a new ground of rejection under § 41.50(b) of this title or statement under § 41.50(c) of this title, or a decision by a Federal court, less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or supplemental notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
(i) The number of days, if any, beginning on the day after the mailing date of the original Office action or notice of allowance and ending on the mailing date of the supplemental Office action or notice of allowance; or
(ii) Four months;
(10) Submission of an amendment under § 1.312 or other paper, other than a request for continued examination in compliance with § 1.114, after a notice of allowance has been given or mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
(i) The number of days, if any, beginning on the date the amendment under § 1.312 or other paper was filed and ending on the mailing date of the Office action or notice in response to the amendment under § 1.312 or such other paper; or
(ii) Four months;
(11) Failure to file an appeal brief in compliance with § 41.37 of this chapter within three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and § 41.31 of this chapter, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and § 41.31 of this chapter, and ending on the date an appeal brief in compliance with § 41.37 of this chapter or a request for continued examination in compliance with § 1.114 was filed;
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(12) Submission of a request for continued examination under 35 U.S.C. 132(b) after any notice of allowance under 35 U.S.C. 151 has been mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the request for continued examination under 35 U.S.C. 132(b) was filed;
(13) Failure to provide an application in condition for examination as defined in paragraph (f) of this section within eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date the application is in condition for examination as defined in paragraph (f) of this section; and
(14) Further prosecution via a continuing application, in which case the period of adjustment set forth in § 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.
(d)(1) A paper containing only an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraphs (c)(6), (c)(8), (c)(9), or (c)(10) of this section, and a request for continued examination in compliance with § 1.114 with no submission other than an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraph (c)(12) of this section, if the paper or request for continued examination is accompanied by a statement that each item of information contained in the information disclosure statement:
(i) Was first cited in any communication from a patent office in a counterpart foreign or international application or from the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement; or
(ii) Is a communication that was issued by a patent office in a counterpart foreign or international application or by the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement.
(2) The thirty-day period set forth in paragraph (d)(1) of this section is not extendable.
(e) The submission of a request under § 1.705(c) for reinstatement of reduced patent term adjustment will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraph (c)(10) of this section.
(f) An application filed under 35 U.S.C. 111(a) is in condition for examination when the application includes a specification, including at least one claim and an abstract (§ 1.72(b) ), and has papers in compliance with § 1.52 , drawings (if any) in compliance with § 1.84 , any English translation required by § 1.52(d) or § 1.57(a) , a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor’s oath or declaration or an application data sheet containing the information specified in § 1.63(b) , the basic filing fee (§ 1.16(a) or § 1.16(c) ), the search fee (§ 1.16(k) or § 1.16(m) ), the examination fee (§ 1.16(o) or § 1.16(q) ), any certified copy of the previously filed application required by § 1.57(a) , and any application size fee required by the Office under § 1.16(s) . An international application is in condition for examination when the application has entered the national stage as defined in § 1.491(b), and includes a specification, including at least one claim and an abstract (§ 1.72(b) ), and has papers in compliance with § 1.52 , drawings (if any) in compliance with § 1.84 , a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor’s oath or declaration or an application data sheet containing the information specified in § 1.63(b) , the search fee (§ 1.492(b) ), the examination fee (§ 1.492(c) ), and any application size fee required by the Office under § 1.492(j). An application shall be considered as having papers in compliance with § 1.52 , drawings (if any) in compliance with § 1.84 , and a sequence listing in compliance with § 1.821 through § 1.825 (if applicable) for purposes of this paragraph on the filing date of the latest reply (if any) correcting the papers, drawings, or sequence listing that is prior to the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 , whichever occurs first.
Section 1.704 implements the provisions of 35 U.S.C. 154(b)(2)(C). 35 U.S.C. 154(b)(2)(C) specifies certain circumstances as constituting a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application and also provides for the Office to prescribe regulations establishing circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. For more information, see MPEP § 2732.
Section 3(j) of the AIA redesignated the title “Board of Patent Appeals and Interferences” as “Patent Trial and Appeal Board” in 35 U.S.C. 134, 145, 146, 154, and 305. Effective September 16, 2012, 37 CFR 1.704(c)(9) was amended to reflect the change to the title of the Board.
Effective December 1, 2011, 37 CFR 1.704(d) was amended to allow the diligent applicant to avoid patent term adjustment reduction for an information disclosure statement (IDS) submission that results from a communication from the Office if submitted
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within 30 days of receipt of the communication by any individual designated in 37 CFR 1.56(c). See Revision of Patent Term Adjustment Provisions Relating to Information Disclosure Statements , 76 FR 74700 (December 1, 2011). Previously, this section only allowed a diligent applicant to avoid patent term adjustment reduction if the IDS was cited as a result from a foreign patent Office. Effective March 10, 2015, 37 CFR 1.704(d)(1) provides that a request for continued examination in compliance with 37 CFR 1.114 with no submission other than an information disclosure statement in compliance with 37 CFR 1.97 and 37 CFR 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under 37 CFR 1.704(c)(12), if the request for continued examination under 35 U.S.C. 132(b) is accompanied by the statement provided for in 37 CFR 1.704(d).
Effective September 17, 2012, 37 CFR 1.704(c)(11) was amended to provide that failure to file an appeal brief in compliance with 37 CFR 41.37 within three months from the date that the notice of appeal was filed would constitute a failure to engage in reasonable efforts to conclude processing or examination of the application. The amended rule is applicable with respect to the filing of an appeal brief in any application (other than design or reissue applications) in which the notice of appeal is filed on or after September 17, 2012.
Prior to September 17, 2012, 37 CFR 1.704(c)(11) contained a provision that further prosecution via a continuing application is a circumstance constituting a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. Effective September 17, 2012, this provision previously labeled as 37 CFR 1.704(c)(11) was labelled 37 CFR 1.704(c)(12). Effective December 18, 2013, this same provision was amended to be located in 37 CFR 1.704(c)(13), and a new provision regarding the failure to provide an application in condition for examination, as defined in 37 CFR 1.704(f), was added as 37 CFR 1.704(c)(12). Effective March 10, 2015, the same provision formerly labelled as 37 CFR 1.704(c)(13) is now labelled as 37 CFR 1.704(c)(14).
Effective for applications filed under 35 U.S.C. 111 on or after December 18, 2013 and international applications in which the national stage was commenced under 35 U.S.C. 371 on or after December 18, 2013, the following changes to 37 CFR 1.704 were made. On December 18, 2013,37 CFR 1.704(c)(12) was added to provide for a reduction in any earned patent term adjustment in the situation in which an application is not in condition for examination within eight months from when an application under 35 U.S.C. 111 was filed or when an international application commenced the national stage under 35 U.S.C. 371(b) or (f). Effective March 10, 2015, this provision was amended to be labelled as 37 CFR 1.704(c)(13). On December 18, 2013, 37 CFR 1.704(f) was added to define when an application is “in condition for examination” for purposes of 37 CFR 1.704(c)(13). 37 CFR 1.704(c)(11) was modified to delete the “and” at the end of the paragraph because it is no longer the penultimate paragraph of 37 CFR 1.704.
Effective for applications in which a request for continued examination was filed on or after March 10, 2015, 37 CFR 1.704(c)(12) was amended to include a new provision that establishes the submission of a request for continued examination under 35 U.S.C. 132(b) after any notice of allowance under 35 U.S.C. 151 has been mailed as constituting a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application, in which case the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the request for continued examination under 35 U.S.C. 132(b) was filed. See MPEP § 2732 for more information.
37 CFR 1.705 Patent term adjustment determination
[Editor Note: 37 CFR 1.705, as reproduced below, include amendments applicable only to patents granted on or after January 14, 2013. See (pre-2013-04-01) 37 CFR 1.705(a)-(f) in effect with respect to applications granted prior to January 14, 2013.]
(a) The patent will include notification of any patent term adjustment under 35 U.S.C. 154(b).
(b) Any request for reconsideration of the patent term adjustment indicated on the patent must be by way of an application for patent term adjustment filed no later than two months from the date the patent was granted. This two-month
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period may be extended under the provisions of § 1.136(a). An application for patent term adjustment under this section must be accompanied by:
(1) The fee set forth in § 1.18(e); and
(2) A statement of the facts involved, specifying:
(i) The correct patent term adjustment and the basis or bases under § 1.702 for the adjustment;
(ii) The relevant dates as specified in §§ 1.703(a) through (e) for which an adjustment is sought and the adjustment as specified in § 1.703(f) to which the patent is entitled;
(iii) Whether the patent is subject to a terminal disclaimer and any expiration date specified in the terminal disclaimer; and
(iv)(A) Any circumstances during the prosecution of the application resulting in the patent that constitute a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in § 1.704; or
(B) That there were no circumstances constituting a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in § 1.704.
(c) Any requests for reinstatement of all or part of the period of adjustment reduced pursuant to § 1.704(b) for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request be filed prior to the issuance of the patent. This time period is not extendable. Any request for reinstatement of all or part of the period of adjustment reduced pursuant to § 1.704(b) must also be accompanied by:
(1) The fee set forth in § 1.18(f); and
(2) A showing to the satisfaction of the Director that, in spite of all due care, the applicant was unable to reply to the rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request. The Office shall not grant any request for reinstatement for more than three additional months for each reply beyond three months from the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request.
(d) No submission or petition on behalf of a third party concerning patent term adjustment under 35 U.S.C. 154(b) will be considered by the Office. Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.
Section 1.705 implements the provisions of 35 U.S.C. 154(b)(3) and (b)(4)(B). See MPEP § 2733 for more information on the patent term adjustment determination under 37 CFR 1.705(a) and MPEP § 2734 for more information on requests for
reconsideration under 37 CFR 1.705(b) and the due care showing under 37 CFR 1.705(c).
Any patent granted on or after January 14, 2013 is subject to amended 37 CFR 1.705.
2731 Period of Adjustment [R-07.2015]
37 CFR 1.703 Period of adjustment of patent term due to examination delay.
[Editor Note: 37 CFR 1.703(a)(1), as reproduced below, includes amendments applicable only to patents granted on or after January 14, 2013 and 37 CFR 1.703(b)(4) and (e), as reproduced below, include amendments applicable only to applications and patents in which a notice of allowance issued on or after September 17, 2012. See 37 CFR 1.703 (2012-09-17 thru 2013-03-31) or 37 CFR 1.703 (pre-2012-09-17) for paragraph (a)(1) applicable to patents granted before January 14, 2013. See 37 CFR 1.703 (pre-2012-09-17) for paragraphs (b)(4) and (e) that apply if the notice of allowance was issued before September 17, 2012.]
(a) The period of adjustment under § 1.702(a) is the sum of the following periods:
(1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(2) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply under § 1.111 was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(3) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply in compliance with § 1.113(c) was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(4) The number of days, if any, in the period beginning on the day after the date that is four months after the date an appeal brief in compliance with § 41.37 was filed and ending on the date of mailing of any of an examiner’s answer under § 41.39, an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(5) The number of days, if any, in the period beginning on the day after the date that is four months after the date of a final decision by the Patent Trial and Appeal Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 or 146 where at least one allowable claim remains in the application and ending on the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first; and
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(6) The number of days, if any, in the period beginning on the day after the date that is four months after the date the issue fee was paid and all outstanding requirements were satisfied and ending on the date a patent was issued.
(b) The period of adjustment under § 1.702(b) is the number of days, if any, in the period beginning on the day after the date that is three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date a patent was issued, but not including the sum of the following periods:
(1) The number of days, if any, in the period beginning on the date on which any request for continued examination of the application under 35 U.S.C. 132(b) was filed and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151;
(2)(i) The number of days, if any, in the period beginning on the date an interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding under 35 U.S.C. 135(a) and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
(ii) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension;
(3)(i) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
(ii) The number of days, if any, in the period beginning on the date of mailing of an examiner's answer under § 41.39 in the application under secrecy order and ending on the date the secrecy order was removed;
(iii) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding under 35 U.S.C. 135(a) would be instituted but for the secrecy order and ending on the date the secrecy order was removed; and
(iv) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151; and,
(4) The number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Patent Trial and Appeal Board under § 41.35(a) of this chapter and ending on the date that jurisdiction by the Patent Trial and Appeal Board ends under § 41.35(b) of this chapter or the date of the last decision by a Federal court in an appeal under 35 U.S.C. 141 or civil action under 35 U.S.C. 145, whichever is later.
(c) The period of adjustment under § 1.702(c) is the sum of the following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, in the period beginning on the date an interference or proceeding was instituted to involve the application in the interference or derivation proceeding under 35 U.S.C. 135(a) and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
(2) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension.
(d) The period of adjustment under § 1.702(d) is the sum of the following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
(2) The number of days, if any, in the period beginning on the date of mailing of an examiner’s answer under § 41.39 of this title in the application under secrecy order and ending on the date the secrecy order was removed;
(3) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding would be instituted but for the secrecy order and ending on the date the secrecy order was removed; and
(4) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151.
(e) The period of adjustment under § 1.702(e) is the sum of the number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Patent Trial and Appeal Board under § 41.35(a) of this chapter and ending on the date of a final decision in favor of applicant by the Patent Trial and Appeal Board or a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
(f) The adjustment will run from the expiration date of the patent as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of delay attributable to the grounds specified in § 1.702 overlap, the period of adjustment granted under this section shall not exceed the actual number of days the issuance of the patent was delayed. The term of a patent entitled to adjustment under § 1.702 and this section shall be adjusted for the sum of the periods calculated under paragraphs (a) through (e) of this section, to the extent that such periods are not overlapping, less the sum of the periods calculated under § 1.704. The date indicated on any certificate of mailing or transmission under § 1.8 shall not be taken into account in this calculation.
(g) No patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under § 1.702 and this section beyond the expiration date specified in the disclaimer.
37 CFR 1.703 specifies the period of adjustment if a patent is entitled to patent term adjustment under
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35 U.S.C. 154(b)(1) and 37 CFR 1.702. When a period is indicated (in 37 CFR 1.703 or 1.704) as “beginning” on a particular day, that day is included in the period, in that such day is “day one” of the period and not “day zero.” For example, a period beginning on April 1 and ending on April 10 is ten (and not nine) days in length.
35 U.S.C. 154(b)(1)(A) and (B) provide for an adjustment of one day for each day after the end of the period set forth in 35 U.S.C. 154(b)(1)(A)(i), (ii), (iii), (iv), and (B) until the prescribed action is taken, whereas 35 U.S.C. 154(b)(1)(C) provides for an adjustment of one day for each day of the pendency of the proceeding, order, or review prescribed in 35 U.S.C. 154(b)(1)(C)(i) through (iii). Therefore, the end of the period set forth in 37 CFR 1.703(a) and 1.703(b) (which correspond to 35 U.S.C. 154(b)(1)(A) and (B)) is “day zero” (not “day one”) as to the period of adjustment, whereas the first day of the proceeding, order, or review set forth in 37 CFR 1.703(c), 1.703(d), and 1.703(e) (which correspond to 35 U.S.C. 154(b)(1)(C)(i) through (iii)) is “day one” of the period of adjustment.
37 CFR 1.703(a) pertains to 35 U.S.C. 154(b)(1)(A) and indicates that the period of adjustment under 37 CFR 1.702(a) is the sum of the periods specified in 37 CFR 1.703(a)(1) through 37 CFR 1.703(a)(6).
37 CFR 1.703(a)(1) pertains to the provisions of 35 U.S.C. 154(b)(1)(A)(i) and specifies that the period is the number of days, if any, beginning on the date after the day that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 in an international application and ending on the mailing date of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first. For purposes of 35 U.S.C. 154(b)(1)(A)(i)(II) in effect prior to enactment of the AIA Technical Corrections Act, an international application fulfills the requirements of 35 U.S.C. 371 on the date of commencement of the national stage under 35 U.S.C. 371(b) or (f), or the date the application fulfills the requirements of 35 U.S.C. 371(c) if that date is later than the date of commencement of the national stage under 35 U.S.C. 371(b) or (f). In other words, the requirements of 35 U.S.C. 371 are met when applicant has met all of
the requirements of 35 U.S.C. 371(c) and, unless applicant requests early processing under 35 U.S.C. 371(f), the time limit set forth in the applicable one of PCT Articles 22 and 39 has expired. Accordingly, the requirements of 35 U.S.C. 371 are met when the Office can begin examination of the patent application. If, for example, an applicant files the required oath or declaration (35 U.S.C. 115) and any necessary English translation after the expiration of the time limit set forth in Article 22 of the PCT or the time limit under Article 39 of the PCT, the date the requirements of 35 U.S.C. 371 are met is the date the requirements of 35 U.S.C. 371(c) are met. If, however, an applicant files the required declaration (or oath), filing fee, and any required English translation before the expiration of the relevant PCT Article 22 or Article 39 time period, but does not request early processing under 35 U.S.C. 371, the requirements of 35 U.S.C. 371 will be met once the applicable time period has expired.
For patents issuing from international application that are granted on or after January 14, 2013, 37 CFR 1.703(a)(1) in effect on April 1, 2013 applies. The AIA Technical Corrections Act and the changes to 37 CFR 1.703(a)(1) revised the date that begins the fourteen-month measurement from the date on which the international application fulfilled the requirements of 35 U.S.C. 371 to the date of commencement of the national stage under 35 U.S.C. 371. The change to 35 U.S.C. 154(b)(1)(A)(i)(II) means that the time period will begin sooner in international applications where the inventor does not file the inventor’s oath or declaration (35 U.S.C. 371(c)(4)) or other requirements at the time of the commencement.
A written restriction requirement, a written election of species requirement, a requirement for information under 37 CFR 1.105, an action under Ex parte Quayle, 1935 Comm’r Dec. 11 (1935), and a notice of allowability (PTOL-37) are each an action issued as a result of the examination conducted pursuant to 35 U.S.C. 131. As such, each of these Office actions is a notification under 35 U.S.C. 132. Office notices and letters issued as part of the pre-examination processing of an application are not notices issued as a result of an examination conducted pursuant to 35 U.S.C. 131, and thus are not notifications under 35 U.S.C. 132. Examples of such pre-examination
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processing notices are: a Notice of Incomplete Nonprovisional Application, a Notice of Omitted Item(s) in a Nonprovisional Application, a Notice to File Missing Parts of Application, a Notice of Informal Application, a Notice to File Corrected Application Papers Filing Date Granted, or a Notice to Comply with Requirements for Patent Applications Containing Nucleotide Sequence and/or Amino Acid Sequence Disclosures.
Written restriction requirements are notifications under 35 U.S.C. 132. In considering whether a restriction requirement under 35 U.S.C. 121 was appealable under 35 U.S.C. 134, the Court of Customs and Patent Appeals (CCPA) noted that: (1) 35 U.S.C. 121 denoted its restriction procedure as a ‘‘requirement’’; (2) 35 U.S.C. 132 stated that the Commissioner shall give notice to the applicant whenever ‘‘any claim for a patent is rejected, or any objection or requirement made’’; and (3) 35 U.S.C. 134 provided for an appeal only by an applicant whose claims have been ‘‘twice rejected.’’ See In re Hengehold, 440 F.2d 1395, 1402–03, 169 USPQ 473,479 (CCPA 1971). Thus, the CCPA concluded that Congress intended to differentiate between objections and requirements (35 U.S.C. 132) and actual rejections of claims (35 U.S.C. 132) and made appeal applicable only to the latter. See Hengehold, 440 F.2d at 1403, 169 USPQ at 479. Since the CCPA cited with approval the "requirement" language of 35 U.S.C. 121 and evaluated rejections, objections, and requirements together under 35 U.S.C. 132 when discussing and differentiating among them to determine whether a restriction requirement was appealable under 35 U.S.C. 134, the CCPA must have considered a restriction requirement to be a requirement under 35 U.S.C. 132. In other words, the CCPA’s analysis determined that the making of a written restriction (or election) requirement is a notification under 35 U.S.C. 132. See also Digital Equipment Corp. v. Diamond, 653 F.2d 701, 713 n.13, 210 USPQ 521, 535–36 n.13 (1st Cir. 1981) (35 U.S.C. 132 when noting that the terms ‘‘requirement’’ and ‘‘objection’’ are distinct from ‘‘rejection’’ and as such, objections were not appealable under 35 U.S.C. 134). In addition, the Office has long considered a written restriction requirement containing no action on the merits to be a notice under 35 U.S.C. 132. For example, MPEP § 710.02(b) instructs examiners to set a shortened
statutory period for reply of one month for a written restriction requirement containing no action on the merits under the authority given by 35 U.S.C. 133. 35 U.S.C. 133 would not apply to the period for reply to a written restriction requirement, if a written restriction requirement containing no action on the merits is not a notice under 35 U.S.C. 132.
37 CFR 1.703(a)(2) pertains to the provisions of 35 U.S.C. 154(b)(1)(A)(ii) and specifies that the period is the number of days, if any, beginning on the day after the date that is four months after the date a reply under 37 CFR 1.111 was filed and ending on the mailing date of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first.
37 CFR 1.703(a)(3) also pertains to the provisions of 35 U.S.C. 154(b)(1)(A)(ii) and specifies that the period is the number of days, if any, beginning on the day after the date that is four months after the date a reply in compliance with 37 CFR 1.113(c) was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first. A reply under 37 CFR 1.113 is a reply to a final Office action, and a reply in compliance with 37 CFR 1.113 is a reply that cancels all of the rejected claims and removes all outstanding objections and requirements or otherwise places the application in condition for allowance. Any amendment after final that does not cancel all of the rejected claims and remove all outstanding objections and requirements or otherwise place the application in condition for allowance is not a reply in compliance with 37 CFR 1.113(c) and will not trigger the four-month requirement under 37 CFR 1.703(a)(3) for the Office to act on the after-final reply.
37 CFR 1.703(a)(4) also pertains to the provisions of 35 U.S.C. 154(b)(1)(A)(ii) and specifies that the period is the number of days, if any, beginning on the day after the date that is four months after the date an appeal brief in compliance with 37 CFR 41.37 was filed and ending on the mailing date of any of an examiner’s answer under 37 CFR 41.39, an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first. As discussed below, the phrase “the date on which” an “appeal was taken” in 35 U.S.C.
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154(b)(1)(A)(ii) means the date on which an appeal brief (and not a notice of appeal) was filed. The phrase “appeal brief in compliance with 37 CFR 41.37” requires that: (1) the appeal brief fee (37 CFR 1.17(b)) be paid (37 CFR 41.20); and (2) the appeal brief complies with the requirements in 37 CFR 41.37(c). However, for applications in which the appeal brief was filed on or after March 19, 2013, the fee required to accompany the appeal brief is set to zero dollars in amended 37 CFR 41.37(a), and accordingly, the phrase “appeal brief in compliance with 37 CFR 41.37” no longer requires the filing of the appeal brief fee. See Setting and Adjusting Patent Fees, 78 FR 4212, 4291 (January 18, 2013).
37 CFR 1.703(a)(5) pertains to the provisions of 35 U.S.C. 154(b)(1)(A)(iii) and specifies that the period is the number of days, if any, beginning on the day after the date that is four months after the date of a final decision by the Patent Trial and Appeal Board (Board) or by a federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 or 146, where at least one allowable claim remains in the application and ending on the mailing date of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first.
The phrase “allowable claims remain in the application” for purposes of 35 U.S.C. 154(b)(1)(A)(iii) means that after the decision there is at least one pending claim (for purposes of statutory construction, “words importing the plural include the singular” (1 U.S.C. 1)) that is not withdrawn from consideration and is not subject to a rejection, objection, or other requirement. This applies in the following situations: (1) at least one claim is allowable (not merely objected to) at the time the examiner’s answer is mailed and is not canceled before, or made subject to a rejection as a result of, the appellate review; or (2) when all of the rejections applied to at least one claim are reversed, and such claim is not made subject to a rejection, as a result of the appellate review. For example:
(A) If claims 1 and 2 (both independent) are pending, the decision affirms the rejection of claim 1, and claim 2 was indicated as allowable prior to the appeal, then “allowable claims remain in the application” for purposes of 35 U.S.C. 154(b)(1)(A)(iii).
(B) If claims 1 and 2 are pending, the decision affirms the rejection of claim 1, and claim 2 was objected to by the examiner prior to the appeal as being allowable except for its dependency from claim 1, “allowable claims” do not “remain in the application” for purposes of 35 U.S.C. 154(b)(1)(A)(iii) (claim 2 is not allowable because there is an outstanding objection to it).
(C) If claims 1 and 2 are pending (claim 2 either depending from claim 1 or is an independent claim), and the decision affirms the rejection of claim 1 and reverses the rejection of claim 2, then “allowable claims remain in the application” for purposes of 35 U.S.C. 154(b)(1)(A)(iii) (claim 2 is “allowable” within the meaning of 37 CFR 1.703(a)(5)) because there is no outstanding objection or requirement as to it (see MPEP § 1214.06, subsection II).
For a Board decision to be a ‘‘decision by the Patent Trial and Appeal Board under [35 U.S.C.] 134’’ within the meaning of 35 U.S.C. 154(b)(1)(A)(iii) (and 37 CFR 1.703(a)(5)), the decision must sustain or reverse the rejection(s) of the claim(s) on appeal, or in limited circumstances as further described below, a remand may be deemed a decision for purposes of 37 CFR 1.703(a)(5). For a Board decision to be a ‘‘decision by the Patent Trial and Appeal Board under [35 U.S.C.] 135’’within the meaning of 35 U.S.C. 154(b)(1)(A)(iii) (and 37 CFR 1.703(a)(5)), the decision must include a decision on the patentability of the claims, derivation, or priority of invention.
If an application is remanded by a panel and the remand is the last action by a panel of the Board prior to the mailing of a notice of allowance under 35 U.S.C. 151, the remand generally shall be considered a decision by the Patent Trial and Appeal Board as that phrase is used in 35 U.S.C. 154(b)(1)(A)(iii), a decision in the review reversing an adverse determination of patentability as that phrase is used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision in favor of the applicant as that phrase is used in 37 CFR 1.703(e). However, a remand by a panel of the Board shall not be considered a decision in the review reversing an adverse determination of patentability, as provided in this paragraph, if there is filed a request for continued examination under 35 U.S.C. 132(b) that was not first preceded by the mailing, after the remand, of
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at least one of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
The phrase ‘‘final decision’’ in 37 CFR 1.703(a)(5) means that: (1) the decision is the last decision in the review by the Board (or by a federal court); and (2) the decision does not require further action by the applicant to avoid termination of proceedings as to the rejected claims. Thus, a Board decision containing a new ground of rejection under 37 CFR 41.50(b) requires action by the applicant to avoid termination of proceedings as to the rejected claims and is, thus, is not considered a ‘‘final decision’’ for purposes of 37 CFR 1.703(a)(5). The phrase ‘‘final decision,’’ however, does not require that the decision be final for purposes of judicial review (e.g. , a Board decision reversing the rejection of all of the claims on appeal is not ‘‘final’’ for purposes of judicial review, but (absent a subsequent decision by the Board) is a ‘‘final decision’’ for purposes of 37 CFR 1.703(a)(5)).
37 CFR 1.703(a)(6) pertains to the provisions of 35 U.S.C. 154(b)(1)(A)(iv) and specifies that the period is the number of days, if any, beginning on the day after the date that is four months after the date the issue fee was paid and all outstanding requirements were satisfied and ending on the date the patent was issued. Thus, the period of adjustment under 35 U.S.C. 154(b)(1)(A)(iv), if any, is ascertained by looking back from the issue date to the most recent time at which the issue fee or another requirement was outstanding, determining the succeeding date on which the issue fee was paid and all outstanding requirements were satisfied, and measuring the number of days, if any, in the period beginning on the day after the date that is four months after such date the issue fee was paid and all outstanding requirements were satisfied and ending on the date a patent was issued. The date the issue fee was paid and all outstanding requirements were satisfied is the later of the date the issue fee was paid or the date all outstanding requirements were satisfied. Note that the filing of a priority document (and processing fee) is not considered an outstanding requirement under 35 U.S.C. 154(b)(1)(A)(iv) and 37 CFR 1.703(a)(6) because, if the priority document is not filed, the patent simply issues without the priority claim (the application is not abandoned). If prosecution in an application is reopened after
allowance (see MPEP § 1308), all outstanding requirements are not satisfied until the application is again in condition for allowance as indicated by the issuance of a new notice of allowance under 35 U.S.C. 151 (see MPEP § 1308) and the form PTOL-85(b) from the latest notice of allowance is returned to the Office along with any outstanding requirements, such as payment of any additional fees owed and/or additional required drawings to be submitted by the applicant. For example, if prosecution in an application is reopened after a notice of allowance as the result of an applicant filing a request for continued examination, the date on which the issue fee was paid and all outstanding requirements were satisfied is the date on which the Issue Fee Transmittal Form (PTOL-85(b)) from the ultimate notice of allowance under 35 U.S.C. 151 is returned to the Office (or a later date if there remain additional outstanding requirements, such as payment of any additional fees owed or required drawings to be submitted). See MPEP § 2732.
Applicant is also provided patent term adjustment for Office delay under 37 CFR 1.702(a)(2) when the Office fails to act on a request for continued examination within four months of the filing of the request for continued examination. The period of adjustment for Office delay, if any, begins on the date that is the day after the date that is four months from the filing of the request for continued examination and ends on the date of mailing of the date of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
37 CFR 1.703(b) pertains to the provisions of 35 U.S.C. 154(b)(1)(B) and indicates that the period of adjustment under 37 CFR 1.702(b) is the number of days, if any, in the period beginning on the day after the date that is three years after the actual filing date of the application and ending on the date a patent was issued. 37 CFR 1.703(b) also sets forth the limitations on patent term adjustment specified in 35 U.S.C. 154(b)(1)(B)(i) and (ii). Specifically, 37 CFR 1.703(b) provides that the period of adjustment of the term of a patent shall not include the period equal to the sum of the following periods: (1) the period of pendency consumed by continued examination of the application under 35 U.S.C. 132(b) (35 U.S.C. 154(b)(1)(B)(i)); (2) the period of pendency consumed by interference proceedings
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(35 U.S.C. 154(b)(1)(B)(ii)); (3) the period of pendency consumed by imposition of a secrecy order (35 U.S.C. 154(b)(1)(B)(ii)); and (4) the period of pendency consumed by appellate review under 35 U.S.C. 134, 141, 145, whether successful or unsuccessful (35 U.S.C. 154(b)(1)(B)(ii)). The provisions of 35 U.S.C. 154(b)(1)(B)(iii) concerning the period of pendency consumed by delays in the processing of the application requested by the applicant are treated in 37 CFR 1.704 as such applicant delays are also circumstances constituting a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.
The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) decided that, with respect to the provisions of 35 U.S.C. 154(b)(1)(B)(i), that: (1) any time consumed by continued examination under 35 U.S.C. 132(b) is subtracted in determining the extent to which the period defined in 35 U.S.C. 154(b)(1)(B) exceeds three years, regardless of when the continued examination under 35 U.S.C. 132(b) was initiated; but (2) the time consumed by continued examination under 35 U.S.C. 132(b) does not include the time after a notice of allowance is mailed, unless the Office actually resumes examination of the application after allowance. See Novartis AG v. Lee, 740 F.3d 593, 109 USPQ2d
1385 (Fed. Cir. 2014).
Effective January 9, 2015, 37 CFR 1.703(b)(1) was amended to provide that the time consumed by continued examination of the application under 35 U.S.C. 132(b) is the number of days, if any, in the period beginning on the date on which any request for continued examination of the application under 35 U.S.C. 132(b) was filed and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151. The changes to 37 CFR 1.703(b)(1) apply to any patent granted before, on, or after January 9, 2015. The time period between a request for continued examination and a notice of allowance is “time consumed by continued examination of the application requested by the applicant under section 132(b)” regardless of whether the Office issues an Office action under 35 U.S.C. 132. Thus, any period of examination after the mailing of a notice of allowance resulting from the filing of a subsequent request for continued examination would also be
considered “time consumed by continued examination,” but a period of examination after the mailing of a notice of allowance resulting from the Office sua sponte reopening prosecution would not be considered “time consumed by continued examination” (unless the applicant subsequently files a request for continued examination).
For example, if a first request for continued examination is filed before a notice of allowance has been mailed and a second request for continued examination is filed after a notice of allowance has been mailed, the time consumed by continued examination of the application under 35 U.S.C. 132(b) is the number of days in the period beginning on the date on which the first request for continued examination was filed and ending on the date of mailing of the notice of allowance following the first request for continued examination, plus the number of days in the period beginning on the date on which the second request for continued examination was filed and ending on the date of mailing of the notice of allowance following the second request for continued examination. Note that the “time consumed by continued examination” as measured by 37 CFR 1.703(b)(1) may include non-contiguous periods if the applicant files a subsequent request for continued examination after a notice of allowance is mailed.
In contrast, if a second request for continued examination is filed without a notice of allowance having been mailed between the filing of the first and second requests for continued examination and a notice of allowance is mailed after the second request for continued examination, the time consumed by continued examination of the application under 35 U.S.C. 132(b) is the number of days in the period beginning on the date on which the first request for continued examination was filed and ending on the date of mailing of the notice of allowance. 35 U.S.C. 154(b)(1)(B)(i) provides that the period under 35 U.S.C. 154(b)(1)(B) does not include “any time consumed by continued examination of the application requested by the applicant under section 132(b)” (emphasis added). Therefore, a second or subsequent request for continued examination will be treated the same as the first request for continued examination with respect to period between the filing of the request
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for continued examination and a notice of allowance being considered “time consumed by continued examination of the application requested by the applicant under section 132(b).”
The “time consumed by continued examination of the application requested by the applicant under section 132(b)” is the number of days, if any, in the period beginning on the date on which a request for continued examination was filed and ending on the date of mailing of the notice of allowance (PTOL-85), regardless of whether the notice of allowability (PTOL-37) and notice of allowance (PTOL-85) are mailed or issued on different days, and also regardless of whether the Office has issued multiple consecutive notices of allowability (PTOL-37). As background, the Office issues a notice of allowability (PTOL-37) and a notice of allowance (PTOL-85) when an application is in condition for allowance. These notices are generally mailed or issued on the same day, but the notice of allowability (PTOL-37) and notice of allowance (PTOL-85) are occasionally mailed or issued on different days. The Office also occasionally mails or issues multiple consecutive notices of allowability (PTOL-37) (e.g., a notice of allowability and then a supplemental notice of allowability) and rarely issues multiple consecutive notices of allowance (e.g., a notice of allowance (PTOL-85) and then a supplemental notice of allowance (PTOL-85)). In the rare instance in which the Office issues multiple consecutive notices of allowance (PTOL-85), the “time consumed by continued examination of the application requested by the applicant under section 132(b)” is the number of days, if any, in the period beginning on the date on which a request for continued examination was filed and ending on the date of mailing of the first notice of allowance (PTOL-85).
37 CFR 1.703(c) pertains to the provisions of 35 U.S.C. 154(b)(1)(C)(i) and indicates that the period of adjustment under 37 CFR 1.702(c) is the sum of the following periods (to the extent that such periods are not overlapping): (1) the number of days, if any, in the period beginning on the date an interference or derivation proceeding was instituted to involve the application in the interference or deviation proceeding and ending on the date that the interference or deviation proceeding was terminated
with respect to the application; and (2) the number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension.
37 CFR 1.703(d) pertains to the provisions of 35 U.S.C. 154(b)(1)(C)(ii) and indicates that the period of adjustment under 37 CFR 1.702(d) is the sum of the following periods (to the extent that such periods are not overlapping): (1) the number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181; (2) the number of days, if any, in the period beginning on the date of mailing of an examiner’s answer under 37 CFR 41.39 in the application under secrecy order and ending on the date the secrecy order was removed; (3) the number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding under 35 U.S.C. 135(a) would be instituted but for the secrecy order and ending on the date the secrecy order was removed; and (4) the number of days, if any, in the period beginning on the date of notification under 37 CFR 5.3(c) and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151 and 37 CFR 1.311.
37 CFR 1.703(e) pertains to the provisions of 35 U.S.C. 154(b)(1)(C)(iii) and indicates that the period of adjustment under 37 CFR 1.702(e) is the sum of the number of days, if any, in the period beginning on the date on which a jurisdiction over the application passes to the Patent Trial and Appeal Board under 37 CFR 41.35(a) or 37 CFR 41.31 if the notice of allowance was issued prior to September 17, 2012, and ending on the date of a final decision in favor of the applicant by the Board or by a federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
37 CFR 1.703(f) indicates that the adjustment will run from the expiration date of the patent as set forth in 35 U.S.C. 154(a)(2) and also indicates that to the extent that periods of delay attributable to the grounds specified in 37 CFR 1.702 overlap, the period of adjustment will not exceed the actual number of days the issuance of the patent was delayed (35 U.S.C. 154(b)(2)(A)). 35 U.S.C.
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154(b)(2)(A) provides that "[t]o the extent that periods of delay attributable to grounds specified in [35 U.S.C. 154(b)(1)] overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed." The USPTO previously had interpreted this provision as covering situations in which a delay by the USPTO contributes to multiple bases for adjustment (the "pre-Wyeth" interpretation of 35 U.S.C. 154(b)(2)(A)). See Explanation of 37 CFR 1.703(f) and of the United States Patent and Trademark Office Interpretation of 35 U.S.C. 154(b)(2)(A), 69 FR 34283 (June 21, 2004), 1284 OG 56 (July 13, 2004). The United States Court of Appeals for the Federal Circuit, however, held that the USPTO's earlier interpretation of 35 U.S.C. 154(b)(2)(A) was erroneous, and that periods of delay overlap under 35 U.S.C. 154(b)(2)(A) only if the periods which measure the amount of adjustment under 35 U.S.C. 154(b)(1) occur on the same calendar day. See Wyeth v. Kappos, 591 F.3d 1364, 93 USPQ2d 1257 (Fed. Cir. 2010).
37 CFR 1.703(f) also specifically indicates that the term of a patent entitled to adjustment under 37 CFR 1.702 and 1.703 shall be adjusted for the sum of the periods calculated under 37 CFR 1.703(a) through (e), to the extent that such periods are not overlapping, less the sum of the periods calculated under 37 CFR 1.704.
Moreover, 37 CFR 1.703(f) provides that the date indicated on any certificate of mailing or transmission under 37 CFR 1.8 shall not be taken into account in this calculation. The date indicated on a certificate of mailing is used only to determine whether the correspondence is timely (including whether any extension of the time and fee are required) so as to avoid abandonment of the application or termination or dismissal of proceedings. The actual date of receipt of the correspondence in the Office is used for all other purposes. See 37 CFR 1.8(a). Thus, while the date indicated on any certificate of mailing or transmission under 37 CFR 1.8 will continue to be taken into account in determining timeliness, the date of filing (37 CFR 1.6) will be the date used in a patent term adjustment calculation. Applicant may wish to consider the use of the electronic filing
system (EFS), the Priority Mail Express® Post
Office to Addressee service of the United States Postal Service (37 CFR 1.10) or facsimile transmission (37 CFR 1.6(d)), when permitted, for replies to be accorded the earliest possible filing date for patent term adjustment calculations. Alternatively, applicant may choose to mail correspondence with sufficient time to ensure that the correspondence is received in the Office (and stamped with a date of receipt) before the expiration of the three-month period.Applicants are encouraged to check PAIR to verify the date of deposit entered in PALM for the correspondence. Applicants should contact the Office for correction of any such entries prior to the grant of the patent. At the time of the grant of the patent, the patent term adjustment calculation will be made with the dates in PALM. Thereafter, a patent term adjustment accompanied by the requisite fee and statement or showing, will be necessary to have any reduction of patent term under 37 CFR 1.704 reinstated.
Finally, 37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).
2732 Reduction of Period of Adjustment of Patent Term [R-07.2015]
37 CFR 1.704 Reduction of period of adjustment of patent term.
[Editor Note: 37 CFR 1.704(c)(12), as reproduced below, include changes applicable only to applications in which a request for continued examination under 35 U.S.C. 132(b) and 37 CFR 1.114 was filed on or after March 10, 2015. In addition,37 CFR 1.704(c)(11), (c)(13) , (c)(14), and (f), as reproduced below, include changes applicable only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and to international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013. For 37 CFR 1.704(c)(11) and (c)(12) in effect for applications filed before (and international applications in which the national stage commenced before) December 18, 2013, and in which a notice of appeal was filed on or after September 17, 2012, see 37 CFR 1.704 (2012-09-17 thru 2013-12-17). For 37 CFR 1.704(c)(11) in effect for applications in which there was a notice of appeal filed prior to September 17, 2012, see 37 CFR 1.704(c)(11)(pre-2012-09-17).37 CFR 1.704(e) below includes changes applicable only to applications in which a notice of allowance was mailed on or after April 1, 2013. For 37 CFR 1.704(e) in effect for applications in which there was a notice of allowance mailed prior to April 1, 2013, see 37 CFR 1.704(e)(pre-2013-03-31). 37 CFR 1.704(c)(10)(ii) below
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includes changes applicable only to patent applications in which a notice of appeal was filed on or after September 17, 2012. For 37 CFR 1.704(c)(10) in effect for applications in which there was a notice of appeal filed prior to September 17, 2012, see 37 CFR 1.704(c)(10) (pre-2012-09-17).]
(a) The period of adjustment of the term of a patent under § 1.703(a) through (e) shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution (processing or examination) of the application.
(b) With respect to the grounds for adjustment set forth in §§ 1.702(a) through (e), and in particular the ground of adjustment set forth in § 1.702(b), an applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of three months that are taken to reply to any notice or action by the Office making any rejection, objection, argument, or other request, measuring such three-month period from the date the notice or action was mailed or given to the applicant, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is three months after the date of mailing or transmission of the Office communication notifying the applicant of the rejection, objection, argument, or other request and ending on the date the reply was filed. The period, or shortened statutory period, for reply that is set in the Office action or notice has no effect on the three-month period set forth in this paragraph.
(c) Circumstances that constitute a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application also include the following circumstances, which will result in the following reduction of the period of adjustment set forth in § 1.703 to the extent that the periods are not overlapping:
(1) Suspension of action under § 1.103 at the applicant’s request, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date a request for suspension of action under § 1.103 was filed and ending on the date of the termination of the suspension;
(2) Deferral of issuance of a patent under § 1.314, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date a request for deferral of issuance of a patent under § 1.314 was filed and ending on the date the patent was issued;
(3) Abandonment of the application or late payment of the issue fee, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date of abandonment or the date after the date the issue fee was due and ending on the earlier of:
(i) The date of mailing of the decision reviving the application or accepting late payment of the issue fee; or
(ii) The date that is four months after the date the grantable petition to revive the application or accept late payment of the issue fee was filed;
(4) Failure to file a petition to withdraw the holding of abandonment or to revive an application within two months from the mailing date of a notice of abandonment, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date two months from the mailing date of a notice of abandonment and ending on the date a petition to withdraw the holding of abandonment or to revive the application was filed;
(5) Conversion of a provisional application under 35 U.S.C. 111(b) to a nonprovisional application under 35 U.S.C. 111(a) pursuant to 35 U.S.C. 111(b)(5), in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date the application was filed under 35 U.S.C. 111(b) and ending on the date a request in compliance with § 1.53(c)(3) to convert the provisional application into a nonprovisional application was filed;
(6) Submission of a preliminary amendment or other preliminary paper less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
(i) The number of days, if any, beginning on the day after the mailing date of the original Office action or notice of allowance and ending on the date of mailing of the supplemental Office action or notice of allowance; or
(ii) Four months;
(7) Submission of a reply having an omission (§ 1.135(c)), in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the reply having an omission was filed and ending on the date that the reply or other paper correcting the omission was filed;
(8) Submission of a supplemental reply or other paper, other than a supplemental reply or other paper expressly requested by the examiner, after a reply has been filed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the initial reply was filed and ending on the date that the supplemental reply or other such paper was filed;
(9) Submission of an amendment or other paper after a decision by the Patent Trial and Appeal Board, other than a decision designated as containing a new ground of rejection under § 41.50(b) of this title or statement under § 41.50(c) of this title, or a decision by a Federal court, less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or supplemental notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
(i) The number of days, if any, beginning on the day after the mailing date of the original Office action or notice of allowance and ending on the mailing date of the supplemental Office action or notice of allowance; or
(ii) Four months;
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(10) Submission of an amendment under § 1.312 or other paper, other than a request for continued examination in compliance with § 1.114, after a notice of allowance has been given or mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
(i) The number of days, if any, beginning on the date the amendment under § 1.312 or other paper was filed and ending on the mailing date of the Office action or notice in response to the amendment under § 1.312 or such other paper; or
(ii) Four months;
(11) Failure to file an appeal brief in compliance with § 41.37 of this chapter within three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and § 41.31 of this chapter, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and § 41.31 of this chapter, and ending on the date an appeal brief in compliance with § 41.37 of this chapter or a request for continued examination in compliance with § 1.114 was filed;
(12) Submission of a request for continued examination under 35 U.S.C. 132(b) after any notice of allowance under 35 U.S.C. 151 has been mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the request for continued examination under 35 U.S.C. 132(b) was filed;
(13) Failure to provide an application in condition for examination as defined in paragraph (f) of this section within eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date the application is in condition for examination as defined in paragraph (f) of this section; and
(14) Further prosecution via a continuing application, in which case the period of adjustment set forth in § 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.
(d)(1) A paper containing only an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraphs (c)(6), (c)(8), (c)(9), or (c)(10) of this section, and a request for continued examination in compliance with § 1.114 with no submission other than an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable
efforts to conclude prosecution (processing or examination) of the application under paragraph (c)(12) of this section, if the paper or request for continued examination is accompanied by a statement that each item of information contained in the information disclosure statement:
(i) Was first cited in any communication from a patent office in a counterpart foreign or international application or from the Office, and this communication was not received by an individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement; or
(ii) Is a communication that was issued by a patent office in a counterpart foreign or international application or by the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement.
(2) The thirty-day period set forth in paragraph (d)(1) of this section is not extendable.
(e) The submission of a request under § 1.705(c) for reinstatement of reduced patent term adjustment will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraph (c)(10) of this section.
(f) An application filed under 35 U.S.C. 111(a) is in condition for examination when the application includes a specification, including at least one claim and an abstract (§ 1.72(b)), and has papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, any English translation required by § 1.52(d) or §1.57(a), a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor's oath or declaration or an application data sheet containing the information specified in § 1.63(b), the basic filing fee (§ 1.16(a) or § 1.16(c) ), the search fee (§ 1.16(k) or § 1.16(m)), the examination fee (§ 1.16(o) or §1.16(q)), any certified copy of the previously filed application required by § 1.57(a), and any application size fee required by the Office under § 1.16(s). An international application is in condition for examination when the application has entered the national stage as defined in § 1.491(b), and includes a specification, including at least one claim and an abstract (§ 1.72(b)), and has papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor's oath or declaration or an application data sheet containing the information specified in § 1.63(b), the search fee (§ 1.492(b)), the examination fee (§ 1.492(c)), and any application size fee required by the Office under § 1.492(j). An application shall be considered as having papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, and a sequence listing in compliance with § 1.821 through § 1.825 (if applicable) for purposes of this paragraph on the filing date of the latest reply (if any) correcting the papers, drawings, or sequence listing that is prior to the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first.
37 CFR 1.704 implements the provisions of 35 U.S.C. 154(b)(2)(C) which provides that the period of patent term adjustment under 35 U.S.C. 154(b)(1)
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“shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution (processing or examination) of the application,” and specifies certain circumstances as constituting a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. Further, 35 U.S.C. 154(b)(2)(C)(iii) gives the Office the authority to prescribe regulations establishing circumstances that constitute “a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.” 35 U.S.C. 154(b)(2)(C) does not require the applicant’s action or inaction (that amounts to a failure to engage in reasonable efforts to conclude prosecution of the application) to have caused or contributed to patent term adjustment for the period of adjustment to be reduced due to such action or inaction. The patent term adjustment provisions of 35 U.S.C. 154(b) create a balanced system allowing for patent term adjustment due to Office delays for a reasonably diligent applicant. Since the public has an interest in the technology disclosed and covered by a patent being available to the public at the earliest possible date, 35 U.S.C. 154(b)(2)(C)(i) provides that patent term adjustment is reduced by any period of time during which applicant failed to engage in reasonable efforts to conclude prosecution of the application, regardless of whether the applicant’s actions or inactions caused or contributed to patent term adjustment.
37 CFR 1.704(a) implements the provisions of 35 U.S.C. 154(b)(2)(C)(i) and sets forth that the period of adjustment shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution (i.e., processing or examination) of an application.
37 CFR 1.704(b) provides that with respect to the ground for adjustments set forth in 37 CFR 1.702(a) through (e), and in particular 37 CFR 1.702(b), an applicant shall be deemed to have failed to engage in reasonable efforts to conclude prosecution for the cumulative total of any periods of time in excess of three months that are taken to reply to any notice or action by the Office making any rejection, objection, argument, or other request, measuring such three-month period from the date the notice or action
was mailed or given to the applicant. A Notice of Omitted Items in a Nonprovisional Application, however, is not a notice or action by the Office making a rejection, objection, argument, or other request within the meaning of 35 U.S.C. 154(b)(2)(C)(ii) or 37 CFR 1.704(b), since the Office does not require a reply to that notice to continue the processing and examination of an application. 37 CFR 1.704(b) indicates that the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is three months after the date of mailing or transmission of the Office communication notifying the applicant of the rejection, objection, argument, or other request and ending on the date the reply was filed. As discussed above, a reply is considered filed on the date of its actual receipt in the Office as defined by 37 CFR 1.6, and the date indicated on any certificate of mailing or transmission under 37 CFR 1.8 will not be taken into account for patent term adjustment purposes.
The three-month period in 37 CFR 1.704(b) applies to the Office notices and letters issued as part of the pre-examination processing of an application (except a Notice of Omitted Items in a Nonprovisional Application as discussed above). These notices include: (1) a Notice of Incomplete Nonprovisional Application (except as to any period prior to the filing date ultimately accorded to the application); (2) a Notice to File Missing Parts of Non-Provisional Application; (3) a Notice of Informal Application; (4) a Notice to File Corrected Application Papers Filing Date Granted; or (5) a Notice to Comply with Requirements for Patent Applications Containing Nucleotide Sequence and/or Amino Acid Sequence Disclosures.
In addition, the three-month period in 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b) applies regardless of the period for reply set in the Office action or notice. For example, if an Office action sets a two-month period for reply (restriction requirement), the applicant may obtain a one-month extension of time under 37 CFR 1.136(a) before being subject to a reduction of patent term adjustment under 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b). If, however, an Office action sets a six-month period for reply, as is commonly set in
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applications subject to secrecy orders (see MPEP § 130), the applicant is subject to a reduction of patent term adjustment under 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b) if the applicant does not reply to the Office action within three months, notwithstanding that a reply may be timely filed six months after the mailing date of the Office action. If the last day of the three-month time period from the Office communication notifying the applicant of the rejection, objection, argument, or other request falls on a Saturday, Sunday, or federal holiday within the District of Columbia, then action, may be taken, or fee paid, on the next succeeding secular or business day without loss of any patent term adjustment under 37 CFR 1.704(b). See ArQule v. Kappos, 793 F.Supp2d 214 (D.D.C. 2011). For example, no reduction in patent term adjustment would occur if an applicant’s three-month reply time period expires on a Saturday and the applicant files a reply that is received by the Office on the following Monday, which is not a federal holiday within the District of Columbia. In this case, any patent term adjustment would not be reduced under 37 CFR 1.704(b) because the reply was received on Monday, the next succeeding secular or business day after the expiration of the three-month reply time. If applicant files his reply on Tuesday, then any patent term adjustment for the patent issuing from the application would be reduced under 37 CFR 1.704(b) by one day.
37 CFR 1.704(c) establishes further circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. 37 CFR 1.704(c)(1) through (c)(13) set forth actions or inactions by an applicant that interfere with the Office’s ability to process or examine an application (and, thus, are circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application), as well as the period by which a period of adjustment set forth in 37 CFR 1.703 shall be reduced if an applicant engages in any of the enumerated actions or inactions. 37 CFR 1.704(c) requires that an applicant refrain from engaging in actions or inactions that prevent or interfere with the Office’s ability to process or examine an application. An applicant who is engaging in actions or inactions that prevent or interfere with the Office’s ability to
process or examine an application cannot reasonably be characterized as “engag[ing] in reasonable efforts to conclude processing or examination of an application” (35 U.S.C. 154(b)(2)(C)(i)).
37 CFR 1.704(c)(1) through 1.704(c)(14) address situations that occur with sufficient frequency to warrant being specifically provided for in the rules of practice. These situations do not represent an exhaustive list of actions or inactions that interfere with the Office’s ability to process or examine an application, since there are a myriad of actions or inactions that occur infrequently but will interfere with the Office’s ability to process or examine an application (e.g., applicant files and persists in requesting reconsideration of a meritless petition under 37 CFR 1.10; parties to an interference obtain an extension for purposes of settlement negotiations which do not result in settlement of the interference; and when the scope of the broadest claim in the application at the time an application is placed in condition for allowance is substantially the same as suggested or allowed by the examiner more than six months earlier than the date the application was placed in condition for allowance). Thus, the actions or inactions set forth in 37 CFR 1.704(c) are exemplary circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. The Office may also reduce a period of adjustment provided in 37 CFR 1.703 on the basis of conduct that interferes with the Office’s ability to process or examine an application under the authority provided in 35 U.S.C. 154(b)(2)(C)(iii), even if such conduct is not specifically addressed in 37 CFR 1.704(c).
37 CFR 1.704(c)(1) establishes suspension of action under 37 CFR 1.103 at the applicant’s request as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. Obviously, if action is suspended at the applicant’s request, the Office is precluded from processing or examining the application as a result of an action by the applicant. 37 CFR 1.704(c)(1) also provides that in such a case the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the number of days, if any, beginning on the date a request for suspension of action under 37 CFR 1.103 was filed
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and ending on the date of the termination of the suspension.
37 CFR 1.704(c)(2) establishes deferral of issuance of a patent under 37 CFR 1.314 as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. Obviously, if issuance of the patent is deferred under 37 CFR 1.314, the Office is precluded from issuing the application as a result of an action by the applicant. When a petition under 37 CFR 1.314 is granted, the petition decision generally states that the application will be held for a period of a month to await the filing of a paper. At the end of the period, the application is returned to the issue process without a further communication from the Office to the applicant. 37 CFR 1.704(c)(2) also provides that in such a case the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the number of days, if any, beginning on the date a request for deferral of issuance of a patent under 37 CFR 1.314 was filed and ending on the issue date of the patent.
37 CFR 1.704(c)(3) establishes abandonment of the application or late payment of the issue fee as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. Obviously, if the application is abandoned (either by failure to prosecute or late payment of the issue fee), the Office is precluded from processing or examining the application as a result of an action or inaction by the applicant. 37 CFR 1.704(c)(3) also provides that in such a case the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the number of days, if any, beginning on the date of abandonment or the date after the day the issue fee was due, and ending on the earlier of: (1) the date of mailing of the decision reviving the application or accepting late payment of the issue fee; or (2) the date that is four months after the date the grantable petition to revive the application or accept late payment of the issue fee was filed. The phrase “earlier of… [t]he date that is four months after the date the grantable petition to revive the application or accept late payment of the issue fee was filed” is to place a cap (measured from the filing date of the grantable petition) on the reduction if the Office does
not act on (grant) the grantable petition to revive within four months of the date it was filed.
37 CFR 1.704(c)(4) establishes failure to file a petition to withdraw a holding of abandonment or to revive an application within two months from the mailing date of a notice of abandonment as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. Any applicant who considers an application to have been improperly held abandoned (the reduction in 37 CFR 1.704(c)(3) is applicable to the revival of an application properly held abandoned) is expected to file a petition to withdraw the holding of abandonment (or to revive the application) within two months from the mailing date of a notice of abandonment. See MPEP § 711.03(c), subsection I. 37 CFR 1.704(c)(4) also provides that in such a case the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the number of days, if any, beginning on the day after the date two months from the mailing date of a notice of abandonment and ending on the date a petition to withdraw the holding of abandonment or to revive the application was filed.
If a petition to withdraw the holding of abandonment is granted, the Office’s PALM system records should be checked to ensure that the correct term adjustment determination is made. Applicants are encouraged to check the Office’s PALM system records for their applications through PAIR (see MPEP § 2733). For example, if applicant shows in the petition that a reply was filed in the Office on March 2, but the March 2 reply was never matched with the file, when the petition to withdraw the holding of abandonment is granted, the receipt of a paper on March 2 should be recorded on the Office’s PALM system records. If the papers or dates are recorded incorrectly, applicant should contact the examiner, the examiner’s supervisor or the Technology Center customer service representative to have the entry corrected. If an applicant receives a Notice of Abandonment and does not request that the holding of abandonment be withdrawn within two months of the mailing date of the notice, the applicant has failed to engage in reasonable efforts to conclude prosecution and any patent term adjustment will be reduced pursuant to 37 CFR 1.704(c)(4).
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37 CFR 1.704(c)(5) establishes conversion of a provisional application under 35 U.S.C. 111(b) to a nonprovisional application under 35 U.S.C. 111(a) (pursuant to 35 U.S.C. 111(b)(5); (see MPEP § 201.04)) as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. Conversion of a provisional application to a nonprovisional application will require the Office to reprocess the application (as a nonprovisional application) up to one year after the filing date that will be accorded to such nonprovisional application as a result of an action by the applicant. 37 CFR 1.704(c)(5) also provides that in such a case the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the number of days, if any, beginning on the date the application was filed under 35 U.S.C. 111(b) and ending on the date a request in compliance with 37 CFR 1.53(c)(3) to convert the provisional application into a nonprovisional application was filed.
37 CFR 1.704(c)(6) establishes submission of a preliminary amendment or other preliminary paper less than one month before the mailing of an Office action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or notice of allowance as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. If the submission of a preliminary amendment or other paper requires the Office to issue a supplemental Office action or notice of allowance, the submission of that preliminary amendment or other paper has interfered with the processing and examination of an application. 37 CFR 1.704(c)(6) also provides that in such a case the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the lesser of the number of days, if any, beginning on the day after the mailing date of the original Office action or notice of allowance and ending on the date of mailing of the supplemental Office action or notice of allowance or four months. The phrase “lesser of… or [f]our months” is to provide a four-month cap for a reduction under 37 CFR 1.704(c)(6) if the Office takes longer than four months to issue a supplemental Office action or notice of allowance.
37 CFR 1.704(c)(7) establishes submission of a reply having an omission (e.g., 37 CFR 1.135(c)) as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. Submitting a reply having an omission requires the Office to issue an action under 37 CFR 1.135(c) and await and process the applicant’s reply to the action under 37 CFR 1.135(c) before the initial reply (as corrected) can be treated on its merits. In addition, 37 CFR 1.704(c)(7) provides that in such a case the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the reply having an omission was filed and ending on the date that the reply or other paper correcting the omission was filed. The reference to 37 CFR 1.135(c) is parenthetical because 37 CFR 1.704(c)(7) is not limited to Office actions under 37 CFR 1.135(c) but applies also when the Office issues any action or notice indicating that a reply has an omission which must be corrected: e.g., (1) a decision on a petition under 37 CFR 1.47 dismissing the petition as lacking an item necessary to grant the petition; or (2) a notice indicating that the computer readable format sequence listing filed in reply to a Notice to Comply with Requirements for Patent Applications Containing Nucleotide Sequence and/or Amino Acid Sequence Disclosures (PTO-1661) does not comply with 37 CFR 1.821 et seq. The filing of a non-compliant appeal brief, however, will not be deemed an omission under 37 CFR 1.704(c)(7) if the notice of appeal was filed on or after September 17, 2012. This situation is covered under 37 CFR 1.704(c)(11).
37 CFR 1.704(c)(8) establishes submission of a supplemental reply or other paper after a reply has been filed as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. The submission of a supplemental reply or other paper (e.g., an information disclosure statement (IDS) or petition) after an initial reply was filed requires the Office to restart consideration of the initial reply in view of the supplemental reply or other paper, which will result in a delay in the Office’s response to the initial reply. The submission of an information disclosure statement that is filed after a reply to a restriction requirement (and prior to the subsequent Office action and without a safe
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harbor statement under 37 CFR 1.704(d)) is an applicant delay. See Gilead Sciences Inc. v. Lee, 778 F.3d 1341, 113 USPQ2d 1837 (Fed. Cir. 2015). Similarly, the filing of an information disclosure statement after a request for continued examination (RCE) but prior to a subsequent Office action is deemed an applicant delay under 37 CFR 1.704(c)(8). 37 CFR 1.704(c)(8) does not apply to a supplemental reply or other paper that was expressly requested by the examiner. If an amendment is requested by an examiner, the examiner will have the paper processed so that it is included as part of an interview summary or examiner’s amendment and not a separate paper for PALM to flag in the patent term adjustment calculation. 37 CFR 1.704(c)(8) also provides that in such a case the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the initial reply was filed and ending on the date that the supplemental reply or such other paper was filed.
Applicant’s submission of an information disclosure statement pursuant to 37 CFR 1.97(c) or an amendment under 37 CFR 41.33 after a notice of appeal has been filed but prior to jurisdiction passing to the Patent Trial and Appeal Board is deemed an applicant delay under 37 CFR 1.704(c)(8). Under 37 CFR 1.97(c), an applicant who submits an information disclosure statement meeting the requirements of 37 CFR 1.97 and 1.98 will have such submission considered by the examiner if it is accompanied by a statement under 37 CFR 1.97(e) and the fee under 37 CFR 1.17(p). Moreover, the Office may admit an amendment after notice of appeal if it meets the applicable requirements in 37 CFR 41.33(a) and (b) for consideration. Because the treatment of these papers may delay the Board taking jurisdiction of the application, the Office will treat such papers similarly to how the Office treats a supplemental reply under this provision, in that the papers will be considered as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.
37 CFR 1.704(c)(9) establishes submission of an amendment or other paper (other than a statement under 37 CFR 41.50(c)) in an application after a decision by the Patent Trial and Appeal Board (other
than a decision containing a rejection under 37 CFR 41.50(b)) or a federal court less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151, that requires the mailing of a supplemental Office action or supplemental notice of allowance as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. The submission of an amendment or other paper (e.g., IDS or petition) in an application after a Board decision or court decision requires the Office to restart consideration of the application in view of the amendment or other paper, which will result in a delay in the Office’s taking action on the application. 37 CFR 1.704(c)(9) also provides that in such a case the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the lesser of the number of days, if any, beginning on the day after the mailing date of the original Office action or notice of allowance and ending on the mailing date of the supplemental Office action or notice of allowance or four months. The phrase “lesser of…or [f]our months” is to provide a four-month cap for a reduction under 37 CFR 1.704(c)(9) if the Office takes longer than four months to issue a supplemental Office action or notice of allowance. If the amendment is requested by an examiner, the examiner will have the paper processed so that it is included as part of an interview summary or examiner’s amendment and not a separate paper for PALM to flag in the patent term adjustment calculation.
37 CFR 1.704(c)(10) establishes submission of an amendment under 37 CFR 1.312 or other paper, other than a request for continued examination in compliance with 37 CFR 1.114, after a notice of allowance has been given or mailed as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. Effective March 10, 2015, 37 CFR 1.704(c)(10) was amended to change “other paper” to “other paper, other than a request for continued examination in compliance with § 1.114,” to clarify that the filing of a request for continued examination under 35 U.S.C. 132(b) in compliance with 37 CFR 1.114 is treated under 37 CFR 1.704(c)(12) rather than 37 CFR 1.704(c)(10). See the final rule Changes to
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Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee, 80 FR 1346 (January 9, 2015). Prior to March 10, 2015, the submission of a request for continued examination after the mailing date of a notice of allowance was not considered an applicant delay under 37 CFR 1.704. The submission of amendments (or other papers) after an application is allowed may cause substantial interference with the patent issue process. Certain papers filed after allowance are not considered to be a failure to engage in reasonable efforts to conclude processing or examination of an application. See Clarification of 37 CFR 1.704(c)(10) – Reduction of Patent Term Adjustment for Certain Types of Papers Filed After a Notice of Allowance has been Mailed, 1247 OG 111 (June 26, 2001). 37 CFR 1.704(c)(10) provides that in such a case the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the lesser of: (1) the number of days, if any, beginning on the date the amendment under 37 CFR 1.312 or other paper was filed and ending on the mailing date of the Office action or notice in response to the amendment under 37 CFR 1.312 or such other paper; or (2) four months. The phrase “lesser of …or [f]our months” is to provide a four-month cap for a reduction under 37 CFR 1.704(c)(10) if the Office takes longer than four months to issue an Office action or notice in response to the amendment under 37 CFR 1.312 or other paper. If the Office does not mail a response to the paper that triggered the delay under this provision and the patent issues in less than four months, then the applicant delay under this provision will end on the date of the patent issuance. The Office will treat the issuance of the patent as the response to the paper that triggered the delay.
In the final rule Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee, 80 FR 1346 (January 9, 2015), the Office further revised policies regarding 37 CFR 1.704(c)(10) and no longer considers submission of a written (or other type of) status inquiry, request for refund, or an inventor’s oath or declaration to be a failure to engage in reasonable efforts to conclude processing and examination of the application under 37 CFR 1.704(c)(10) due to the changes that have been brought about by the electronic filing and processing of patent applications.
The submission of the following papers after a “Notice of Allowance” is not considered a failure to engage in reasonable efforts to conclude processing or examination of an application: (1) Fee(s) Transmittal (PTOL-85B); (2) power of attorney; (3) power to inspect; (4) change of address; (5) change of status (micro/small/not small entity status); (6) a response to the examiner’s reasons for allowance or a request to correct an error or omission in the “Notice of Allowance” or “Notice of Allowability;” (7) status letters; (8) requests for a refund; (9) an inventor’s oath or declaration; (10) an information disclosure statement with a statement in compliance with 37 CFR 1.704(d); (11) the resubmission by applicant of unlocatable paper(s) previously filed in the application (37 CFR 1.251); (12) a request for acknowledgment of an information disclosure statement in compliance with 37 CFR 1.97 and 1.98, provided that the applicant had requested that the examiner acknowledge the information disclosure statement prior to the notice of allowance, or the request for acknowledgement was applicant’s first opportunity to request that the examiner acknowledge the information disclosure statement; (13) comments on the substance of an interview where the applicant-initiated interview resulted in a notice of allowance; and (14) letters related to government interests (e.g., those between NASA and the Office).
Under 37 CFR 1.704(c)(10), papers that will be considered a failure to engage in reasonable efforts to conclude processing or examination of an application include: (1) an amendment under 37 CFR 1.312; (2) a paper containing a claim for priority or benefit or request to correct priority or benefit information (e.g., a new or supplemental application data sheet filed to correct foreign priority or domestic benefit information); (3) a request for a corrected filing receipt; (4) a certified copy of a priority document; (5) drawings; (6) a letter related to biologic deposits; (7) a request to change or correct inventorship; and (8) an information disclosure statement not accompanied by a statement in compliance with 37 CFR 1.704(d).
Effective for applications in which a notice of appeal was filed on or after September 17, 2012, 37 CFR 1.704(c)(11) establishes that failure to file an appeal brief in compliance with 37 CFR 41.37 within three
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months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and 37 CFR 41.31 is a circumstance that constitutes a failure to engage in reasonable efforts to conclude processing or examination of the application. It is noted that although the appeal brief is due within two months of the filing of the notice of appeal under 37 CFR 41.37, 37 CFR 1.704(c)(11) provides three months before any patent term adjustment under 37 CFR 1.703 will be reduced for the late submission of an appeal brief. If applicant files a non-compliant appeal brief and thereafter files a compliant appeal brief, the period of time from the filing of a non-compliant appeal brief to the filing of the compliant appeal brief will not be considered a failure to engage in reasonable efforts to conclude processing or examination of the application under 37 CFR 1.704(c)(8). However, if the compliant appeal brief is filed more than three months from the date on which the notice of appeal was filed, the provisions of 37 CFR 1.704(c)(11) may result in reduction of any patent term adjustment under 37 CFR 1.703. 37 CFR 1.704(c)(11) provides that the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the number of days, if any, beginning on the day after the date three months from the date on which the notice of appeal to the Patent Trial and Appeal Board was filed and ending on the date an appeal brief in compliance with 37 CFR 41.37 or a request for continued examination in compliance with 37 CFR 1.114 was filed.
If the Office reopens prosecution of the application more than three months after the filing of the notice of appeal but prior to the submission of a compliant appeal brief, the Office will not deem the period of time from the day after three months from the filing of the notice of appeal to the date the Office reopens prosecution to be an applicant delay under 37 CFR 1.704(c)(11). In addition, the Office’s reopening of prosecution after appeal will not be considered as vacating any previous response that potentially increases patent term adjustment under 35 U.S.C. 154(b)(1)(A)(i) through (iv). As discussed above, the change to 37 CFR 1.704(c)(11) is applicable to any applications that includes an appeal brief in which the notice of appeal was filed on or after September 17, 2012.
Effective for applications in which a request for continued examination was filed on or after March 10, 2015, 37 CFR 1.704(c)(12) was amended to provide a new provision that establishes the submission of a request for continued examination under 35 U.S.C. 132(b) after any notice of allowance under 35 U.S.C. 151 has been mailed as constituting a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application, in which case the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the request for continued examination under 35 U.S.C. 132(b) was filed. See the final rule Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee, 80 FR 1346 (January 9, 2015). This new provision ensures that an applicant does not obtain additional patent term adjustment under 35 U.S.C. 154(b)(1)(B) for the time after a notice of allowance has been mailed as a consequence of delaying issuance of the patent by filing a request for continued examination under 35 U.S.C. 132(b) after a notice of allowance has been mailed. Moreover, the filing of a request for continued examination after the mailing of a notice of allowance removes the application from the issue process, prevents the Office from issuing the patent, and requires the Office to determine if the submission affects the patentability of the application, which adds to the pendency of the application in which the request for continued examination is filed (as well as other applications since examination resources must be diverted from other applications to the application in which the request for continued examination is filed). “An applicant who is engaging in actions or inactions that prevent or interfere with the Office’s ability to process or examine an application cannot reasonably be characterized as ‘engag[ing] in reasonable efforts to conclude processing or examination of an application’ (35 U.S.C. 154(b)(2)(C)(i)).” See Changes to Implement Patent Term Adjustment
Under Twenty-Year Patent Term, 65 FR at 56379 (response to comment 17). Therefore, the Office considers it appropriate to expressly define the filing of a request for continued examination after the mailing of any notice of allowance as a failure to engage in reasonable efforts to conclude processing
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or examination of an application. See 35 U.S.C. 154(b)(2)(C)(iii) (provides for the Office to prescribe regulations establishing the circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application).
Nevertheless, the Office considers it appropriate to permit applicants to submit information cited in a patent office communication in a counterpart application to the Office without a reduction in patent term adjustment if an information disclosure statement is submitted to the Office within thirty days (not three months) of the date the patent office communication was received by an individual designated in 37 CFR 1.56(c). Accordingly, 37 CFR 1.704(d) was revised to provide that a request for continued examination in compliance with 37 CFR 1.114 with no submission other than an information disclosure statement in compliance with 37 CFR 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under 37 CFR 1.704(c)(12), if the request for continued examination is accompanied by a statement in compliance with 37 CFR 1.704(d).
Effective for applications in which a request for continued examination was filed on or after March 10, 2015, if such a request for continued examination is filed after payment of the issue fee, any patent term adjustment would be reduced by the number of days in the period starting on the day after the date of mailing of the notice of allowance and ending on the date the request for continued examination was filed. 35 U.S.C. 154(b)(1)(A)(iv) provides that, subject to the limitations under 35 U.S.C. 154(b)(2), if the issue of an original patent is delayed due to the failure of the Office to issue a patent within four months after the date on which the issue fee was paid under 35 U.S.C. 151 and all outstanding requirements were satisfied, the term of the patent shall be extended one day for each day after the date on which the issue fee was paid and all outstanding requirements were satisfied until the patent is issued. Thus, the period of adjustment under 35 U.S.C. 154(b)(1)(A)(iv), if any, is ascertained by looking back from the issue date to the most recent time at which the issue fee or another requirement was outstanding, determining the succeeding date on
which the issue fee was paid and all outstanding requirements were satisfied, and measuring the number of days, if any, in the period beginning on the day after the date that is four months after such date the issue fee was paid and all outstanding requirements were satisfied and ending on the date a patent was issued. Where prosecution in an application is reopened after a notice of allowance (before or after payment of the issue fee), either by the Office sua sponte or as the result of an applicant filing a request for continued examination, the date on which the issue fee was paid and all outstanding requirements were satisfied is the date on which the Issue Fee Transmittal Form (PTOL-85(b)) from the ultimate notice of allowance under 35 U.S.C. 151 is returned to the Office (or a later date if there remain additional outstanding requirements, such as payment of any additional fees owed or required drawings to be submitted). See MPEP § 2731. The mailing of a notice of allowance by the Office subsequent to the reopening of prosecution is the Office’s indication that the application is (again) in condition to be issued as a patent, and the applicant’s return of the Issue Fee Transmittal Form (PTOL-85(b)) is the applicant’s indication or confirmation that the applicant wants any previously paid issue fee to be applied as the issue fee for the patent. See MPEP § 1306. Thus, if prosecution in an application is reopened after a notice of allowance as the result of an applicant filing a request for continued examination, the date on which the issue fee was paid and all outstanding requirements were satisfied is the date on which the Issue Fee Transmittal Form (PTOL-85(b)) from the ultimate notice of allowance under 35 U.S.C. 151 is returned to the Office (or a later date if there remain additional outstanding requirements, such as payment of any additional fees owed or required drawings to be submitted). Applicants should note that 37 CFR 1.114 does not permit an applicant to file a request for continued examination under 35 U.S.C. 132(b) after the date the issue fee is paid as a matter of right. See 37 CFR 1.114(a)(1).
Effective March 10, 2015, the provisions in 37 CFR 1.704(c)(12) and 37 CFR 1.704(c)(13) were relabeled as 37 CFR 1.704(c)(13) and 37 CFR 1.704(c)(14), respectively. See the final rule Changes to Patent Term Adjustment in view of the
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Federal Circuit Decision in Novartis v. Lee, 80 FR 1346 (January 9, 2015).
For applications filed under 35 U.S.C. 111(a) on or after December 18, 2013 and international patent applications in which the national stage was commenced under 35 U.S.C. 371 on or after December 18, 2013, 37 CFR 1.704(c)(13) establishes that the circumstances that constitute a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application also include the failure to provide an application in condition for examination within eight months from the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application. Section 1.704(c)(13) does not require that applications be in condition for examination on filing (or commencement of national stage in an international application) in order for an applicant to avoid a reduction of patent term adjustment.
37 CFR 1.704(c)(13) establishes that where there is a failure to provide an application in condition for examination within eight months from the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application, the period of adjustment set forth in 37 CFR 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is eight months from the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date the application is in condition for examination.
37 CFR 1.704(c)(14) (which was formerly 37 CFR 1.704(c)(11),(c)(12), and (c)(13)) establishes further prosecution via a continuing application as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. Currently, a continuing application may be used to: (1) obtain further examination of an invention disclosed and claimed in the prior application (continuation application); (2) obtain examination (for the first time) of an invention disclosed but not
claimed or not elected for examination in the prior application (divisional application); or (3) obtain examination of an invention neither disclosed nor claimed in the prior application (continuation-in-part application). The provisions of 35 U.S.C. 132(b) and 37 CFR 1.114 permit an applicant to obtain further or continued examination of an invention disclosed and claimed in an application, which renders it unnecessary for an applicant whose application is eligible for patent term adjustment under 35 U.S.C. 154(b) to file a continuing application to obtain further examination of an invention disclosed and claimed in an application. If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application. See Mohsenzadeh v. Lee, 115 USPQ2d 1483 (Fed. Cir. 2015) where the district court upheld the Office’s position that patent term adjustment does not carry over to a continuing or divisional application. Thus, the Office has established further prosecution via a continuing application as a circumstance that constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application, in that the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent. Thus, if the application that resulted in the patent is a continuing application (including a CPA), the period of adjustment set forth in 37 CFR 1.703 (if any) will not include any period that is prior to the actual filing date of the application (in the case of a CPA, the filing date of the request for a CPA) that resulted in the patent.
A CPA under 37 CFR 1.53(d) filed on or after May 29, 2000 and before July 14, 2003 is entitled to the patent term adjustment provisions of 35 U.S.C. 154(b) as amended by section 4402 of the American Inventors Protection Act of 1999 (CPAs can only be filed in design patent applications on or after July 14, 2003, and design applications are not entitled to PTA). The period of patent term adjustment set forth in 37 CFR 1.703 (if any), however, will not include
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any period that is prior to the filing date of the request for that CPA.
Delays before the filing date of an application are not relevant to whether an application is entitled to patent term adjustment. Patent term adjustment will not be reduced by applicant actions or inactions (that amount to a failure to engage in reasonable efforts to conclude processing or examination of the application) occurring in a prior (or other) application.
37 CFR 1.704(d) provides that a paper containing only an information disclosure statement in compliance with 37 CFR 1.97 and 1.98 will not be considered (result in a reduction) under 37 CFR 1.704(c)(6), 1.704(c)(8), 1.704(c)(9), or 1.704(c)(10) if it is accompanied by a statement that each item of information:
(i) was first cited in any communication from a patent office in a counterpart foreign or international application or from the Office, and this communication was not received by an individual designated in 37 CFR 1.56(c) more than thirty days prior to the filing of the information disclosure statement; or
(ii) is a communication that was issued by a patent office in a counterpart foreign international application or by the Office, and this communication was not received by any individual designated in 37 CFR 1.56(c) more than thirty days prior to the filing of the information disclosure statement.
The above-mentioned statement(s) should accompany the submission of the information disclosure statement.
Effective March 10, 2015, 37 CFR 1.704(d)(1) was amended to also provide that a request for continued examination in compliance with 37 CFR 1.114 with no submission other than an information disclosure statement in compliance with 37 CFR 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under 37 CFR 1.704(c)(12), if the request for continued examination under 35 U.S.C. 132(b) is accompanied by the statement provided for in 37 CFR 1.704(d). See the final rule Changes to Patent Term
Adjustment in view of the Federal Circuit Decision in Novartis v. Lee, 80 FR 1346 (January 9, 2015).
The provision in 37 CFR 1.704(d) will permit applicants to submit information first cited in a communication from a patent office in a counterpart foreign or international application or from the Office in another application without a reduction in patent term adjustment if an information disclosure statement is promptly (within thirty days of receipt of the first communication) submitted to the Office. This provision also permits an application to submit communications that were issued by a patent office in a counterpart foreign or international application or by the Office that were not received by any individual designated in 37 CFR 1.56(c) more than thirty days prior to the filing of the information disclosure statement to avoid a reduction in any patent term adjustment.
Compliance with the statement requirement of 37 CFR 1.704(d) does not substitute for compliance with any relevant requirement of 37 CFR 1.97 or 1.98. 37 CFR 1.704(d) also provides that this thirty-day period is not extendable.
The determination of when the thirty day period in 37 CFR 1.704(d)(1)(i) or (ii) begins to run is dependent on the role of each entity involved in the prosecution of the U.S. and foreign applications, and the role that each plays (if any) vis-à-vis the application being examined by the USPTO. The inventors, the assignee and the U.S. patent counsel are all individuals designated in 37 CFR 1.56(c). The issue is whether the foreign patent counsel is also an individual designated in 37 CFR 1.56(c).
37 CFR 1.56(c) provides that individuals associated with the filing or prosecution of a patent application within the meaning of 37 CFR 1.56 are:
1. Each inventor named in the application;
2. Each attorney or agent who prepares or prosecutes the application; and
3. Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.
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Based on these elements of 37 CFR 1.56(c), the following three examples provide guidance in regard to the discussed situations.
Example A:
An applicant based in Chicago, Illinois, directs U.S. counsel to prepare, file and prosecute an application in the United States Patent and Trademark Office (USPTO). The U.S. counsel subsequently sends the application to foreign counsel for filing and prosecution in foreign jurisdictions. The U.S. counsel directs foreign counsel to provide copies of all communications from the foreign office (by fax or overnight mail) within seven days of receipt thereof, and expressly reserves all decision-making authority as to prosecution of the U.S. and foreign applications.
On January 5, 2002, a foreign counsel in Germany receives a communication from the European Patent Office (EPO) that includes a list of citations of patents. On January 8, the foreign counsel, pursuant to the standing instructions of U.S. counsel, sends by overnight mail, a copy of the communication from the EPO. The document is received by U.S. counsel on January 12, 2002. On January 30, the U.S. counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the U.S. counsel, which was received at the USPTO on February 11, 2002.
Answer to Example A:
The thirty-day period would be calculated from January 12, 2002. As such, the IDS received on February 11, 2002 would be filed within the thirty-day period in 37 CFR 1.704(d), and thus would not result in a reduction of any patent term adjustment pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).
In this example, the foreign counsel has no substantive role in the prosecution of the U.S. application. The explicitly defined role of the foreign counsel relative to the U.S. counsel in combination with the practice in the described fact pattern removes any potential doubt as to the role of the foreign counsel. For these reasons, the foreign counsel is not deemed a person who is substantially involved in the U.S. application under 37 CFR 1.56(c).
Example B:
An applicant based in Paris, France, directs French counsel to prepare, file and prosecute an application in the European Patent Office (EPO). The EPO application is then sent to U.S. counsel by French counsel to be reviewed, edited, and prepared for filing in the United States Patent and Trademark Office (USPTO). The U.S. counsel works with the French counsel to review the edited application, and then files the application at the USPTO. The review and editing of the U.S. application filed at the USPTO also leads the French counsel to amend its EPO application.
On January 5, 2002, the French counsel receives a search report from the European Patent Office that includes a list of six patents. On January 20, 2002, the U.S. counsel receives from
French counsel (by overnight mail) a copy of the communication from the EPO and suggests that the U.S. counsel review the search report and “take appropriate action.” On January 25, 2002, the French counsel provides a copy of the search report to the applicant. On January 30, 2002, the U.S. counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the U.S. counsel, which is received at the USPTO on February 14, 2002
Answer to Example B:
The thirty-day period would be calculated from January 5, 2002. As such, the submission of the IDS would not be received within the thirty-day window in 37 CFR 1.704(d), and thus could result in a reduction of any patent term pursuant to37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).
In this example, the USPTO would consider the French counsel to have been a party within the meaning of 37 CFR 1.56(c). The French counsel, based on the above facts, played a substantive role in the preparation and prosecution of the U.S. application (e.g., the French counsel drafted the original application, worked with U.S. counsel to edit the application and subsequently amended the EPO application based on the work product produced with U.S. counsel).
Example C:
An applicant based in Chicago, Illinois, hires U.S. counsel to prepare an application suitable for filing in the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). The U.S. counsel engages a German attorney to assist in the review and editing of the application to take account of issues relevant to EPO practice. The U.S. counsel then reviews the edited application, approves the changes, and files it at the USPTO. The U.S. counsel then directs the German attorney to file the application in the EPO. During prosecution of the U.S. case, the U.S. counsel receives an Office action citing three patents.
On December 1, 2001, the U.S. counsel sends the three patents to the German attorney for review and appropriate action. On January 5, 2002, the German attorney receives a search report from the EPO that cites the three previously cited patents, plus a fourth patent, which are all designated as “X” references. On January 15, 2002, the German attorney reviews the fourth patent and compares it to the three patents cited in the U.S. prosecution. The German attorney concludes that the fourth patent is duplicative of one of the three patents, and takes no further action.
On March 1, 2002, during a routine status inquiry, the U.S. counsel is informed of the citation of the fourth patent by the EPO and the decision of the German attorney that the information in the newly cited patent was duplicative of the three patents previously cited by the USPTO. The U.S. counsel also obtains copies of the newly cited patent on this date. On March 5, 2002, the U.S. counsel files an IDS containing the newly cited patent, which is received at the USPTO on the same date.
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Answer to Example C:
The thirty-day period would be calculated from January 5, 2002. As such, the submission of the IDS would be determined to have not been received within the thirty-day period in 37 CFR 1.704(d), and thus could result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).
In this example, the USPTO would consider the participation of the German attorney in the prosecution and decision-making as to the relevance of the newly cited art vis-à-vis the previously cited three patents to be a substantive participation in the U.S. prosecution. As such, the German attorney would be considered by the USPTO to be a party covered by 37 CFR 1.56(c). Accordingly, evaluation of compliance with 37 CFR 1.704(d) would consider the date that the foreign counsel first learned of the fourth patent (i.e., the newly cited reference).
37 CFR 1.704(e) provides that a submission of a request under 37 CFR 1.705(c) for reinstatement of reduced patent term adjustment will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under 37 CFR 1.704(c)(10). The Office will not deem such a failure to engage in reasonable efforts to conclude processing or examination of the application under 37 CFR 1.704(c)(10) because the statute expressly requires that all such requests be filed prior to the issuance of the patent. See 35 U.S.C. 154(b)(3)(C).
For applications filed under 35 U.S.C. 111(a) on or after December 18, 2013 and international patent applications in which the national stage was commenced under 35 U.S.C. 371 on or after December 18, 2013, 37 CFR 1.704(f) was added to define what is meant by “condition for examination” for purposes of 37 CFR 1.704(c)(13). Specifically, 37 CFR 1.704(f) defines that an application filed under 35 U.S.C. 111(a) is in condition for examination when the application includes a specification, including at least one claim and an abstract (37 CFR 1.72(b)), and has papers in compliance with 37 CFR 1.52, drawings in compliance with 37 CFR 1.84, any English translation required by 37 CFR 1.52(d) or 37 CFR 1.57(a), a sequence listing incompliance with 37 CFR 1.821 through 37 CFR 1.825 (if applicable), the inventor's oath or declaration or application data sheet containing the information specified in 37 CFR 1.63(b), the basic filing fee (37 CFR 1.16(a) or 37 CFR 1.16(c)), the search fee (37 CFR 1.16(k) or 37 CFR 1.16(m)), the examination fee (37 CFR 1.16(o)
or 37 CFR 1.16(q)), any certified copy of the previously filed application required by 37 CFR 1.57(a), and any application size fee required by the Office under 37 CFR 1.16(s).
37 CFR 1.704(f) also provides that an international application is in condition for examination when the application has entered the national stage as defined in 37 CFR 1.491(b), and includes a specification, including at least one claim and an abstract (37 CFR 1.72(b)), and has papers in compliance with 37 CFR 1.52, drawings in compliance with 37 CFR 1.84, a sequence listing in compliance with 37 CFR 1.821 through 37 CFR 1.825 (if applicable), the inventor's oath or declaration or application data sheet containing the information specified 37 CFR 1.63(b), the search fee (37 CFR 1.492(b)), the examination fee (37 CFR 1.492(c)), and any application size fee required by the Office under 37 CFR 1.492(j). 37 CFR 1.704(f) as adopted in this final rule also provides that an application shall be considered as having papers in compliance with 37 CFR 1.52, drawings (if any) in compliance with 37 CFR 1.84, and a sequence listing in compliance with 37 CFR 1.821 through 37 CFR 1.825 (if applicable) for purposes of 37 CFR 1.704(f) on the filing date of the latest reply (if any) correcting the papers, drawings, or sequence listing that is prior to the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first.
2733 Patent Term Adjustment Determination [R-07.2015]
37 CFR 1.705 Patent term adjustment determination.
Editor Note: 37 CFR 1.705(a) below includes amendments applicable only to patents granted on or after January 14, 2013. See 37 CFR 1.705(a) (pre-2013-04-01) with respect to patents granted prior to January 14, 2013.]
(a) The patent will include notification of any patent term adjustment under 35 U.S.C. 154(b).
*****
The AIA Technical Corrections Act was enacted on January 14, 2013. See Public Law 112-274, 126 Stat. 2456 (2013). Section 1(h) of the AIA Technical Corrections Act revises the patent term adjustment provisions of 35 U.S.C. 154(b) and is effective for any patent granted on or after January 14, 2013.
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Section 1(h)(2) of the AIA Technical Corrections Act amended 35 U.S.C. 154(b)(3)(B)(i) to change “shall transmit a notice of that [patent term adjustment] determination with the written notice of allowance of the application under section 151” to “shall transmit a notice of that [patent term adjustment] determination no later than the date of issuance of the patent.” See 126 Stat. at 2457. This change eliminates the need for the Office to provide an initial patent term adjustment determination with the notice of allowance and before the patent term adjustment under 35 U.S.C. 154(b)(1)(A)(iv) and 154(b)(1)(B) is known. See Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR 56365, 56374 (September 18, 2000) (explaining that a two-part process is required because the Office is obliged under 35 U.S.C. 154(b)(3) to provide a patent term adjustment determination before the issue date, and thus the patent term adjustment, is known). 37 CFR 1.705(a) has been amended to reflect that the Office will provide notification of the patent term adjustment on the patent. The Office will no longer provide a notification of the patent term adjustment with the mailing of the notice of allowance for any patent granted on or after January 14, 2013.
The Office has revised 37 CFR 1.705 to implement the statutory changes to 35 U.S.C. 154(b)(3)(B)(i). The amendment to the statute provides that the Office shall transmit a determination of the patent term adjustment no later than the date of issuance of the patent. Accordingly, the Office is no longer required to transmit a determination at the time of the mailing of the notice of allowance which occurs before all of the guarantees of the statute could be calculated. The Office, however, will continue to provide a preliminary patent term adjustment calculation with the issue notification that is mailed to applicant prior to issuance of the patent, but the patent term adjustment indicated on the patent is the “official” notification of the Office’s patent term adjustment determination under 35 U.S.C. 154(b). Accordingly, patentee should wait until the grant of the patent to determine whether or not a request for reconsideration of the patent term adjustment indicated on the patent is warranted. See MPEP § 2734 for a discussion of the requirements of any such request.
If a registered practitioner receives a patent term adjustment indicated on the front of the patent that is longer than expected, the practitioner may disclose the error to the Office in a letter in compliance with the practitioner’s duty of candor and good faith in practice before the Office. The Office will treat letters submitted by patentees stating that Office’s determination of patent term adjustment indicated on the patent is greater than what the applicant or patentee believes is appropriate by placing these letters in the file of the patent without comment. See Treatment of Letters Stating That the USPTO’s Patent Term Adjustment Determination Is Greater Than What the Applicant or Patentee Believes Is Appropriate , 75 FR 42079 (July 20, 2010), 1357 OG 262 (August 24, 2010). The Office will not review these letters or issue certificates of correction under either 35 U.S.C. 254 or 255 on the basis of these letters. In addition, the Office will not grant a request for a certificate of correction under either 35 U.S.C. 254 or 255 to revise the patent term adjustment indicated in a patent, unless the certificate of correction is issued to revised the patent for consistency with (1) the patent term adjustment determined via a decision on the request for reconsideration under 37 CFR 1.705; or (2) the total patent term adjustment indicated on the Patent Application Information Retrieval (PAIR) screen that displays the patent term adjustment calculation for the patent. If patentee submits a request for a certificate of correction under either 35 U.S.C. 254 or 255 to revise the patent term adjustment indicated in a patent that also includes changes in the patent for which a certificate of correction would be appropriate, the request for a certificate of correction will not be granted unless the patentee submits a new request for a certificate of correction that does not also attempt to revise the patent term adjustment indicated in the patent.
If patentee wants the Office to reconsider its patent term adjustment determination, the patentee must use the procedures set forth in 37 CFR 1.705(b) for requesting reconsideration of a patent term adjustment determination. Specifically, the procedures set forth in 37 CFR 1.705(b) must be used whether the USPTO’s patent term adjustment determination is greater than or less than the adjustment that the applicant or patentee believes to be appropriate.
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A patentee may also file a terminal disclaimer at any time disclaiming any period considered in excess of the appropriate patent term adjustment. See 35 U.S.C. 253 and 37 CFR 1.321.
Note that the Office does not require patentee to file either a request for reconsideration under 37 CFR 1.705(b) or a terminal disclaimer when the patent term adjustment indicated on the patent is greater than what the patentee believes is appropriate. As discussed above, the patentee or the appointed registered practitioner may disclose the alleged error to the Office in a letter in compliance with the practitioner’s duty of candor and good faith.
Information as to how the patent term adjustment calculation has been made will be available through Patent Application Information Retrieval (PAIR) at www.uspto.gov/learning-and-resources/portal-applications. Applicants may routinely use PAIR to check the accuracy of the data entered in the PALM system for their applications (i.e., the type of the paper and date of receipt in the Office) throughout prosecution. If any errors are detected, they should be brought to the Office’s attention (e.g., by contacting the examiner or the Technology Center’s customer service representative) as soon as possible to ensure that they are corrected before allowance of the application and the determination of the patent term adjustment. In checking Office records, applicants should keep in mind that the date that should be recorded in the Office computer records is the date of receipt of the paper, not the date that it was mailed under 37 CFR 1.8. In addition, if an original paper is misplaced by the Office and a duplicate is filed with a post card receipt showing the date of receipt of the original paper, the date shown on the post-card receipt for the original paper is the date that should be shown in the Office computer records. If Priority
Mail Express® service was used, then the date
shown as the “date in” on the Priority Mail Express®
label will be entered into the Office computer records. Otherwise, the date reflected in the Office computer records for a duplicate copy of
correspondence will normally be the date that the duplicate was received in the Office.
2734 Application for Patent Term Adjustment; Due Care Showing [R-07.2015]
37 CFR 1.705 Patent term adjustment determination.
[Editor Note: 37 CFR 1.705(b) and (c) below include amendments applicable only to patents granted on or after January 14, 2013. See 37 CFR 1.705 (pre-2013-04-01) with respect to patents granted prior to January 14, 2013.]
*****
(b) Any request for reconsideration of the patent term adjustment indicated on the patent must be by way of an application for patent term adjustment filed no later than two months from the date the patent was granted. This two-month period may be extended under the provisions of § 1.136(a). An application for patent term adjustment under this section must be accompanied by:
(1) The fee set forth in § 1.18(e); and
(2) A statement of the facts involved, specifying:
(i) The correct patent term adjustment and the basis or bases under § 1.702 for the adjustment;
(ii) The relevant dates as specified in §§ 1.703(a) through (e) for which an adjustment is sought and the adjustment as specified in § 1.703(f) to which the patent is entitled;
(iii) Whether the patent is subject to a terminal disclaimer and any expiration date specified in the terminal disclaimer; and
(iv)(A) Any circumstances during the prosecution of the application resulting in the patent that constitute a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in § 1.704; or
(B) That there were no circumstances constituting a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in § 1.704.
(c) Any request for reinstatement of all or part of the period of adjustment reduced pursuant to § 1.704(b) for failing to reply to a rejection, objection, argument, or other request within three months of the date of the mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request must be filed prior to the issuance of the patent. This time period is not extendable. Any request for reinstatement of all or part of the period of adjustment pursuant to § 1.704(b) must be accompanied by:
(1) The fee set forth in § 1.18(f); and
(2) A showing to the satisfaction of the Director that, in spite of all due care, the applicant was unable to reply to the rejection, objection, argument, or other request within three months of the date of mailing of the Office communication
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notifying the applicant of the rejection, objection, argument, or other request. The Office shall not grant any request for reinstatement for more than three additional months for each reply beyond three months from the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request.
*****
I. OFFICE PROCEDURE FOR THE TREATMENT OF REQUESTS FOR RECONSIDERATION OF PATENT TERM ADJUSTMENT
37 CFR 1.705(b) provides that any request for reconsideration of the patent term adjustment indicated on the patent must be by way of an application for patent term adjustment which must filed within two months of the date the patent was granted and accompanied by the fee set forth in 37 CFR 1.18(e) and a statement of the facts involved. 37 CFR 1.705(b)(2) provides that such statement of facts involved must specify: (1) the correct patent term adjustment and the basis or bases under 37 CFR 1.702 for the adjustment; (2) the relevant dates as specified in 37 CFR 1.703(a) through (e) for which an adjustment is sought and the adjustment as specified in 37 CFR 1.703(f) to which the patent is entitled; (3) whether the patent is subject to a terminal disclaimer and any expiration date specified in the terminal disclaimer; and (4) any circumstances, if any, during the prosecution of the application resulting in the patent that constitute a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in 37 CFR 1.704 (or a statement that there were no such circumstances). The two month period set in 37 CFR 1.705(b) is extendable under 37 CFR 1.136 for up to five additional months (permitting patentee to request reconsideration of the patent term adjustment indicated on the patent as late as within seven months after the date the patent was granted).
The Office will conduct a manual redetermination of patent term adjustment in response to a request for reconsideration of the patent term adjustment. The Office makes the patent term adjustment determination indicated in the patent by a computer program that uses the information recorded in the Office's Patent Application Locating and Monitoring (PALM) system, except when an applicant requests reconsideration pursuant to 37 CFR 1.705. See Changes to Implement Patent Term Adjustment
Under Twenty-Year Patent Term, 65 FR 56365, 56370, 56380-81 (September 18, 2000) (final rule). The PALM system was not originally designed for the purpose of calculating patent term adjustment as provided in 35 U.S.C. 154(b). The patent term adjustment provisions of 35 U.S.C. 154(b) are complex, with numerous types of communications exchanged between applicants and the Office during the patent application process. Thus, a manual redetermination of patent term adjustment could result in (1) an amount of patent term adjustment that is the amount of patent term adjustment requested by the applicant; (2) the same amount of patent term adjustment as indicated in the patent (i.e., there being no change); or (3) a different amount of patent term adjustment that may be higher or lower than the patent term adjustment as indicated in the patent.
If the patent term adjustment redetermination results in the amount of patent term adjustment requested by the applicant, the Office will issue a decision granting the request for reconsideration and a certificate of correction that indicates the revised patent term adjustment. If the patent term adjustment redetermination results in the same amount of patent term adjustment as indicated in the patent (i.e., there being no change) and the Office does not require any additional information to render a decision on the request for reconsideration, the Office will issue a decision denying the request for reconsideration, and this decision is the Director's decision on the applicant's request for reconsideration within the meaning of 35 U.S.C. 154(b)(4) .
If the patent term adjustment redetermination results in a different amount of patent term adjustment (higher or lower than the patent term adjustment indicated in the patent), the Office will issue a redetermination of patent term adjustment that explains how the Office arrived at the different amount of patent term adjustment. This redetermination of patent term adjustment is not the Director's decision on the applicant's request for reconsideration within the meaning of 35 U.S.C. 154(b)(4) , but is simply a new patent term adjustment determination (e.g., a redetermination). If the Office issues such a redetermination of patent term adjustment in response to the request for reconsideration, the applicant has two months from
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the date of the redetermination to file a renewed request for reconsideration of the patent term adjustment that addresses the issues included in the Office's redetermination of patent term adjustment. No additional fee under 37 CFR 1.18(e) is required. The two-month period to file a renewed request for reconsideration of patent term adjustment is extendable under 37 CFR 1.136(a).
If the patent term adjustment redetermination results in the same amount of patent term adjustment as indicated in the patent (i.e., there being no change) but the Office requires additional information to render a decision on the request for reconsideration of the patent term adjustment, the Office will issue a requirement for information to obtain the additional information. This requirement for information is not the Director's decision on the applicant's request for reconsideration within the meaning of 35 U.S.C. 154(b)(4). If the Office issues a requirement for information in response to the request for reconsideration of the patent term adjustment, the applicant has two months from the date of the requirement for information to file a renewed request for reconsideration of the patent term adjustment. The renewed request should supply the required information and no additional fee is required. This two-month period is extendable under 37 CFR 1.136(a).
The Office will again conduct a redetermination of patent term adjustment in response to any renewed request for reconsideration, which is filed in response to a redetermination of patent term adjustment and/or a requirement for information. If this redetermination of patent term adjustment results in the amount of patent term adjustment requested by the applicant, the Office will issue a decision granting the request for reconsideration and a certificate of correction that indicates the revised patent term adjustment. If this redetermination of patent term adjustment results in the same amount of patent term adjustment as indicated in the previous redetermination of patent term adjustment or in the patent, the Office will generally issue a decision denying the request for reconsideration and a certificate of correction, if necessary, indicating the revised patent term adjustment as the result of a redetermination of patent term adjustment. The decision denying the request for reconsideration is the Director's decision
on the applicant's request for reconsideration within the meaning of 35 U.S.C. 154(b)(4). In certain, limited circumstances, the redetermination may result in another redetermination of patent term adjustment or requirement for information. In such a case, applicant will be given another opportunity to file a renewed request for reconsideration as described above.
Only if the Office issues a decision denying patentee’s request for reconsideration, then patentee may appeal such decision to the District Court for the Eastern District of Virginia by filing a civil complaint within 180 days of the date of the decision on the request for reconsideration of patent term adjustment (within the meaning of 35 U.S.C. 154(b)(4)).
Section 1(h)(3) of the AIA Technical Corrections Act amended 35 U.S.C. 154(b)(4) to provide that “[a]n applicant dissatisfied with the Director’s decision on the applicant’s request for reconsideration under paragraph (3)(B)(ii) shall have exclusive remedy by a civil action against the Director filed in the United States District Court for the Eastern District of Virginia within 180 days after the date the Director’s decision on the applicant’s request for reconsideration.” The change to 35 U.S.C. 154(b)(4) clarifies that (1) a civil action under 35 U.S.C. 154(b)(4) is not an alternative to requesting reconsideration of the patent term adjustment under 35 U.S.C. 154(b)(3) but is the remedy for an applicant who is dissatisfied with the Director’s decision on the applicant’s request for reconsideration under 35 U.S.C. 154(b)(3); and (2) a civil action provided in 35 U.S.C. 154(b)(4) is the exclusive remedy for an applicant who is dissatisfied with the Director’s decision on the applicant’s request for reconsideration. In other words, an applicant that is dissatisfied with the patent term adjustment determination on the patent must first request reconsideration under 35 U.S.C. 154(b)(3) and 37 CFR 1.705(b). Only after receiving a decision denying the request for reconsideration, may the applicant file a civil action, proscribed in 35 U.S.C. 154(b)(4), if the applicant is dissatisfied with the decision on the request for reconsideration. This statutory change is applicable for all patents that issue on or after January 14, 2013.
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For patents that issued prior to January 14, 2013, 35 U.S.C. 154(b)(4) previously required that patentee commence a civil action within 180 days of the grant of the patent. Patentee is not entitled to equitable tolling of the 180-day period to commence the civil action in the district court where patentee did not lack sufficient facts on which it could sue but instead waited until another, unrelated party secured a favorable ruling on a legal theory in another court proceeding. See Novartis AG v. Lee, 740 F.3d 539, 109 USPQ2d 1385 (Fed. Cir. 2014). It is noted, however, that the U.S. District Court for the District of Columbia affirmed a prior decision of the court holding that the 180-day deadline under 35 U.S.C. 154(b)(4)(A) for filing a lawsuit challenging a PTA determination was tolled in the circumstances of that case by the patent holders' timely requests for reconsideration of the PTA determinations set forth in the patents at issue. See Bristol-Myers Squibb Co. v. Kappos, 891 F.Supp.2d 135 (D.D.C. 2012) (denying reconsideration of the decision published at 841 F. Supp.2d 238 (D.D.C. 2012)). Section 1(n) of the AIA Technical Corrections Act provides that amendments made in section 1(h) shall take effect on January 14, 2013 (the date of enactment) and shall apply to the proceedings commenced on or after January 14, 2013. Section 1(n) of the Technical Corrections Act does not limit the applicability of the changes in section 1(h) to applications filed on or after January 14, 2013. Cf. Section 4405(a) of the American Inventors Protection Act of 1999 (AIPA), Public Law 106-113, 113 Stat. 1501, 1501A-552 through 1501A-591 (limiting the applicability of the patent term adjustment provisions of the AIPA to applications filed on or after May 29, 2000 (the date that is six months after the enactment of AIPA)). Patent term adjustment proceedings are not “commenced” until the Office notifies the applicant of the Office’s patent term adjustment determination under 35 U.S.C. 154(b)(3), which now occurs when the patent is granted. Accordingly, the changes to 35 U.S.C. 154 in section 1(h) of the AIA Technical Corrections Act apply to any patent granted on or after January 14, 2013.
II. DUE CARE SHOWING
37 CFR 1.705(c) implements the provisions of 35 U.S.C. 154(b)(3)(C) and specifically provides that a request for reinstatement of all or part of the period
of adjustment reduced pursuant to 37 CFR 1.704(b) for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request must include: (1) the fee set forth in 37 CFR 1.18(f); and (2) a showing to the satisfaction of the Director that, in spite of all due care, the applicant was unable to reply to the rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request. 37 CFR 1.705(c) also provides that the Office shall not grant any request for reinstatement for more than three additional months for each reply beyond three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request (35 U.S.C. 154(b)(3)(C)). 35 U.S.C. 154(b)(3)(C) and 37 CFR 1.705(c) also requires that the request for reinstatement be filed prior to the issuance of the patent. Because 35 U.S.C. 154(b)(3)(C) requires that the request be filed prior to the issuance of the patent, the Office will not consider or act on a request for reinstatement in a paper filed after the patent is issued. For example, a request for reinstatement cannot be made as part of a request for reconsideration under 37 CFR 1.705(b). Applicants are aware during the pendency of the application of situations where the reply was filed more than three months after the Office communication notifying the applicant of the rejection, objection, argument, or other request. If applicants believe that they can make the required showing that, in spite of all due care, the applicant was unable to rely to the rejection, objection, argument or other Office request within three months, then applicants should file the request for reinstatement promptly and no later than at least one day prior to the issuance of the patent. Applicants need not review of the patent term adjustment calculation to establish a request for reinstatement under 37 CFR 1.705(c). The Office will not delay issuance of the patent but will make a decision on the request for reinstatement after the grant of the patent and if appropriate, issue a certificate of correction to revise the patent term adjustment determination on the patent.
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As noted supra, 37 CFR 1.705(c) continues to require that any request for reinstatement of all or part of the cumulative period of time of an adjustment reduced under 35 U.S.C. 154(b)(2)(C), on the basis of a showing that, in spite of all due care, the applicant was unable to respond within the three-month period, must be filed prior to the issuance of the patent. Thus, where an applicant is seeking reinstatement under 35 U.S.C. 154(b)(3)(C) of patent term adjustment reduced under 35 U.S.C. 154(b)(2)(C), the showing required by 35 U.S.C. 154(b)(3)(C) must be filed prior to the issuance of the patent. However, where the patentee is not seeking reinstatement under 35 U.S.C. 154(b)(3)(C) of patent term adjustment reduced under 35 U.S.C. 154(b)(2)(C), but is simply contending that the Office's patent term adjustment determination is in error with respect to the three-month timeframe in 35 U.S.C. 154(b)(2)(C)(ii) (e.g., a reply is filed within the three-month timeframe in 35 U.S.C. 154(b)(2)(C)(ii), but the Office's patent term adjustment determination treats the reply as having been filed outside the three-month period in 35 U.S.C. 154(b)(2)(C)(ii)), any request for reconsideration or review of a patent term adjustment determination is by way of an application for patent term adjustment under 37 CFR 1.705(b) filed no later than two months from the date the patent was granted (this two-month period being extendable under the provisions of 37 CFR 1.136(a)).
Filing a reply outside of three months after an Office action is per se a failure to engage in reasonable efforts to conclude prosecution under 35 U.S.C. 154(b)(2)(C)(ii) unless applicant can establish that the delay was “in spite of all due care.” The provisions of 35 U.S.C. 21(b) are applicable to the determination of three-month period for reply. If the last day of the three-month period from the Office communication notifying the applicant of the rejection, objection, argument, or other request falls on a Saturday, Sunday, or federal holiday within the District of Columbia, then action, may be taken, or the fee paid, on the next succeeding secular or business day without loss of any patent term adjustment under 37 CFR 1.704(b). See ArQule v. Kappos, 793 F.Supp2d 214 (D.D.C. 2011). For example, an applicant’s three-month reply time period expires on a Saturday and the applicant files a reply that is received by the Office on the following
Monday, which is not a federal holiday within the District of Columbia. In this case, any patent term would not be reduced under 37 CFR 1.704(b) because the reply was received on Monday, the next succeeding secular or business day after the expiration of the three-month reply time. Accordingly, a request for reinstatement of all or part of the period of adjustment under 37 CFR 1.705(c) would not be applicable since applicant would not have been deemed to reply more than three months from the date of the Office action.
The Office “shall reinstate all or part of the cumulative period of time of an adjustment reduced under [35 U.S.C. 154(b)(2)(C)] if the applicant… makes a showing that, in spite of all due care, the applicant was unable to respond within the 3-month period….” See 35 U.S.C. 154(b)(3)(C). The “due care” of a reasonably prudent person standard has been applied in deciding petitions under the “unavoidable delay” standard of 35 U.S.C. 133. See In re Mattullath, 38 App. D.C. 497, 514-15 (1912)
(“the word ‘unavoidable’… is applicable to ordinary human affairs, and requires no more or greater care or diligence than is generally used and observed by prudent and careful men in relation to their most important business”) (quoting and adopting Ex parte Pratt, 1887 Dec. Comm’r Pat. 31, 32-33); see also Ray v. Lehman, 55 F.3d 606, 609, 34 USPQ2d 1786, 1787 (Fed. Cir. 1995) (“in determining whether a delay…was unavoidable, one looks to whether the party…exercised the due care of a reasonably prudent person”). While the legislative history of the American Inventors Protection Act of 1999 is silent as to the meaning of the phrase “in spite of all due care,” the phrases “all due care” and “unable to respond” invoke a higher degree of care than the ordinary due care standard of 35 U.S.C. 133, as well as the “reasonable efforts to conclude processing or examination [or prosecution] of an application” standard of 35 U.S.C. 154(b)(2)(C)(i) and (iii). Therefore, applicants should not rely upon decisions relating to the “unavoidable delay” standard of 35 U.S.C. 133 as controlling in a request to reinstate reduced patent term adjustment on the basis of a showing that the applicant was unable to respond within the three-month period in spite of all due care.
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Examples
The following are examples of showings that may establish that the applicant was unable to respond within the three-month period in spite of all due care:
(A) a showing that the original three-month period was insufficient to obtain the test data necessary for an affidavit or declaration under 37 CFR 1.132 that was submitted with a reply filed outside the original three-month period;
(B) a showing that the applicant was unable to reply within the original three-month period due to a natural disaster;
(C) a showing that applicant was unable to reply within the original three-month period because testing was required to reply to an Office action, and the testing necessarily took longer than three months; or
(D) a showing that the applicant was unable to reply within the original three-month period due to illness or death of a sole practitioner of record who was responsible for prosecuting the application.
The patent term adjustment reinstated would be limited to the period in which the showing establishes that the applicant was acting with all due care to reply to the Office notice or action, but circumstances (outside applicant’s control) made applicant unable to reply in spite of such due care. An applicant will not be able to show that he or she was unable to reply within the three-month period “in spite of all due care” if the reply was not filed within the three-month period due to reasons within the control of applicant or agencies within the applicant’s control.
Examples of circumstances that would NOT establish that the applicant was unable to respond within the three-month period in spite of all due care are:
(A) an applicant’s or representative’s preoccupation with other matters (e.g., an inter partes lawsuit or interference) that is given priority over prosecution of the application;
(B) illness or death of the practitioner in charge of the application if the practitioner is associated (in a law firm) with other practitioners (since the other
practitioners could have taken action to reply within the three-month period);
(C) time consumed with communications between the applicant and his or her representative, regardless of whether the applicant resides in the United States or chooses to communicate with the United States representative via a foreign representative;
(D) vacation or other non-attention to an application that results in a failure to reply within the three-month period;
(E) applicant filing a reply on or near the last day of the three-month period using first class mail with a certificate of mailing under 37 CFR 1.8, rather
than by electronic filing, Priority Mail Express®
under 37 CFR 1.10 or facsimile (if permitted), and the reply is not received (filed) in the Office until after the three-month period; or
(F) failure of clerical employees of applicant or applicant’s representative to properly docket the Office action or notice for reply or perform other tasks necessary for reply within the three-month period.
Rarely is the power of attorney given to a single attorney and often many attorneys are given power of attorney in an application. An attorney in litigation, working on an interference or taking a vacation is generally aware of that fact before the event and should make plans for another to take over his or her work so that it is completed and filed in the Office within the three-month period. Thus, failure to reply within the three-month period in 35 U.S.C. 154(b)(2)(C)(ii) due to preoccupation with other matters (e.g., an inter partes lawsuit or interference) given priority over the application, or vacation or other non-attention to an application, cannot be relied upon to show that applicant was unable to reply “in spite of all due care” under 35 U.S.C. 154(b)(3)(C).
III. OPTIONAL PROCEDURE FOR SEEKING A PATENT TERM ADJUSTMENT CALCULATION FOR INTERNATIONAL APPLICATIONS THAT ISSUE BETWEEN JANUARY 14, 2013 AND MAY 13, 2014
The Office experienced a delay in modifying the computer program used to calculate patent term
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adjustment with respect to measuring the fourteen-month patent term adjustment period from the date of commencement of the national stage under 35 U.S.C. 371 in international applications. In contrast, the change to 35 U.S.C. 154(b)(1)(B) with respect to measuring the three-year patent term adjustment period from the date of commencement of the national stage under 35 U.S.C. 371 in international applications did not require a change to the computer program used to calculate patent term adjustment because the Office interpreted the phrase ``actual filing date of the application in the United States'' in former 35 U.S.C. 154(b)(1)(B) as meaning the date of commencement of the national stage under 35 U.S.C. 371 in an international application. This software modification required for measuring the fourteen-month patent term adjustment period from the date of commencement of the national stage was completed in April of 2014. Therefore, patent term adjustment determinations for patents issued on or after May 20, 2014 will be consistent with the changes to 35 U.S.C. 154(b) in the AIA Technical Corrections Act.
Due to significant delay in modifying the computer program the Office uses to calculate patent term adjustments with respect to the change in 35 U.S.C. 154(b) in the AIA Technical Corrections Act, the Office provided an optional procedure for patentees to request a recalculation of their patent term adjustment without a fee as an alternative to the petition and fee otherwise required to request reconsideration of a patent term adjustment determination under 37 CFR 1.705(b). Specifically, the optional procedure is for patents issued between January 14, 2013 and May 20, 2014, which resulted directly from international applications (i.e., applications that have entered the national stage under 35 U.S.C. 371). The optional procedure is not applicable to patents that resulted from applications under 35 U.S.C. 111(a), including bypass continuations of international applications or continuations of international applications that entered the national stage under 35 U.S.C. 371. Any request for recalculation of patent term adjustment under the optional procedure must have been filed no later than July 31, 2014. See Revisions to Implement the Patent Term Adjustment Provisions of the Leahy-Smith America Invents Act Technical Corrections Act, 79 FR 21736 (May 15, 2014).
Under the optional procedure, the Office provided a Request for Recalculation of Patent Term Adjustment form (PTO/SB/132) for use in making such a request. A copy of form PTO/SB/132 is reproduced at the end of this subsection. As discussed previously, this optional procedure and Request for Recalculation of Patent Term Adjustment form (PTO/SB/132) are applicable only for patents issued between January 14, 2013 and May 20, 2014, that resulted directly from an international application. Any request under the optional procedure must have been filed no later than July 31, 2014.
The fee specified in 37 CFR 1.18(e) and any fee for a petition under 37 CFR 1.136(a) required for a timely request for reconsideration under 37 CFR 1.705(b) is not a fee paid by mistake or in excess of that required, and the Office may only refund fees paid by mistake or in excess of that required (35 U.S.C. 42(d)). Therefore, the optional procedure is not a basis for requesting a refund of the fee specified in 37 CFR 1.18(e) or the fee necessary for any petition under 37 CFR 1.136(a) for any request for reconsideration under 37 CFR 1.705(b), including any previously filed request that was solely based on the Office's alleged error pertaining to the fourteen-month patent term adjustment period.
Applicants seeking a revised patent term adjustment in a patent issued after May 20, 2014, must file a request for reconsideration under 37 CFR 1.705(b) that complies with the requirements of 37 CFR 1.705(b)(1) and (b)(2) within two months of the date the patent issued.
Under the optional procedure, to the extent that the procedures adopted under the authority of 35 U.S.C. 2(b)(2) and 154(b)(3) require that any request for reconsideration of the patent term adjustment indicated in the patent must be filed within two months of the date the patent issued and include the information required by 37 CFR 1.705(b)(2) and the fee required by 37 CFR 1.18(e), these requirements were sua sponte waived for patents that met all of the following criteria: (1) The patent issued between January 14, 2013 and May 20, 2014; (2) the patent resulted directly from an international application that has entered the national stage under 35 U.S.C. 371; and (3) the Request for Recalculation of the
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Patent Term Adjustment form (PTO/SB/132) was filed no later than July 31, 2014. See 37 CFR 1.183. This waiver does not apply to patents issued on or after May 20, 2014, and does not apply to requests that the Office recalculate the patent term adjustment for alleged errors other than the above-identified errors.
A request for recalculation of patent term adjustment under the optional procedure to request a recalculation of patent term adjustment is not a request for reconsideration within the meaning of 35 U.S.C. 154(b)(3), and a recalculation of patent term adjustment under the optional procedure is not the Director's decision on an applicant's request for reconsideration within the meaning of 35 U.S.C. 154(b)(3) and (b)(4). Rather, a recalculation of patent term adjustment under the optional procedure is simply a new patent term adjustment determination under 35 U.S.C. 154(b)(3). Any request for reconsideration under 35 U.S.C. 154(b)(3) and 37
CFR 1.705(b) of a new patent term adjustment determination under the optional procedure must comply with the requirements of 37 CFR 1.705(b)(1) and (b)(2) and be filed no later than two months from the date of the new patent term adjustment determination resulting from the recalculation of patent term adjustment. This two-month time period may be extended under the provisions of 37 CFR 1.136(a).
Nothing in this optional procedure shall be construed as a waiver of the requirement of 35 U.S.C. 154(b)(4) that an applicant dissatisfied with the Director's decision on the applicant's request for reconsideration under 35 U.S.C. 154(b)(3)(B)(ii) shall have exclusive remedy by a civil action against the Director filed in the United States District Court for the Eastern District of Virginia within 180 days after the date of the Director's decision on the applicant's request for reconsideration under 35 U.S.C. 154(b)(3)(B)(ii).
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2735 [Reserved]
2736 Third Party Papers [R-07.2015]
37 CFR 1.705 Patent term adjustment determination. *****
Editor Note: 37 CFR 1.705(d) below includes amendments applicable only to patents granted on or after January 14, 2013. See 37 CFR 1.705(f) (pre-2013-04-01) with respect to patents granted prior to January 14, 2013.]
(d) No submission or petition on behalf of a third party concerning patent term adjustment under 35 U.S.C. 154(b) will be considered by the Office. Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.
*****
For patents granted on or after January 14, 2013,37 CFR 1.705(d) implements the provisions of 35 U.S.C. 154(b)(4)(B) and provides that no submission or petition on behalf of a third party concerning patent term adjustment under 35 U.S.C. 154(b) will be considered by the Office, and that any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office. For patents granted before January 14, 2013, 37 CFR 1.705(f) (pre-2013-04-01) similarly provided that no submission or petition on behalf of a third party concerning patent term adjustment under35 U.S.C. 154(b) will be considered by the Office, and that any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.
2737 -2749 [Reserved]
2750 Patent Term Extension for Delays at other Agencies under 35 U.S.C. 156 [R-11.2013]
The right to a patent term extension based upon regulatory review is the result of the Drug Price Competition and Patent Term Restoration Act of 1984, Public Law 98-417, 98 Stat. 1585 (codified at 21 U.S.C. 355(b), (j), (n( � 35 U.S.C. 156, 271, 282)(Hatch-Waxman Act). The act sought to
eliminate two distortions to the normal “patent term produced by the requirement that certain products must receive premarket regulatory approval.” Eli Lilly & Co. v. Medtronic Inc., 496 U.S. 661, 669, 15 USPQ2d 1121, 1126 (1990). The first distortion was that the patent owner loses patent term during the early years of the patent because the product cannot be commercially marketed without approval from a regulatory agency. The second distortion occurred after the end of the patent term because competitors could not immediately enter the market upon expiration of the patent because they were not allowed to begin testing and other activities necessary to receive FDA approval before patent expiration.
The part of the act codified as 35 U.S.C. 156 was designed to create new incentives for research and development of certain products subject to premarket government approval by a regulatory agency. The statute enables the owners of patents on certain human drugs, food or color additives, medical devices, animal drugs, and veterinary biological products to restore to the terms of those patents some of the time lost while awaiting premarket government approval from a regulatory agency. The rights derived from extension of the patent term under 35 U.S.C. 156(a) are defined in 35 U.S.C. 156(b), but are not limited to a claim-by-claim basis. Rather, subsection(a) of 156 indicates that “[t]he term of a patent which claims a product, a method of using a product, or a method of manufacturing a product shall be extended.” See Genetics Institute LLC v. Novartis Vaccines and Diagnostics Inc., 655 F.3d 1291, 99 USPQ2d 1713 (Fed. Cir. 2011). However, pursuant to 35 U.S.C. 156(b) , if the patent claims other products in addition to the approved product, the exclusive patent rights to the additional products expire with the original expiration date of the patent.
In exchange for extension of the term of the patent, Congress legislatively overruled Roche Products v. Bolar Pharmaceuticals, 733 F.2d 858, 221 USPQ 937 (Fed. Cir. 1984) as to products covered by 35 U.S.C. 271(e) and provided that it shall not be an act of infringement, for example, to make and test a patented drug solely for the purpose of developing and submitting information for an Abbreviated New Drug Application (ANDA). 35 U.S.C. 271(e)(1).
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§ 2750PATENT TERMS AND EXTENSIONS
See Donald O. Beers et al., Generic and Innovator Drugs: A Guide to FDA Approval Requirements, Eighth Edition, Wolters Kluwer Law & Business, 2013, 4.05 for a discussion of the Hatch-Waxman Act and infringement litigation. Furthermore, Congress provided that an ANDA that the FDA will grant to the marketing applicant a period of 5 years of data exclusivity for any active ingredient or salt or ester of the active ingredient which had not been previously approved under section 505(b) of the Federal Food, Drug and Cosmetic Act. 21 U.S.C. 355(j)(4)(D)(ii). See also Lourie, Patent Term Restoration: History, Summary, and Appraisal, 40 Food, Drug and Cosmetic L. J. 351, 353-60 (1985). See also Lourie, Patent Term Restoration, 66 J. Pat. Off. Soc’y 526 (1984).
On November 16, 1988, 35 U.S.C. 156 was amended by Public Law 100-670, essentially to add animal drugs and veterinary biologics to the list of products that can form the basis of patent term extension. Animal drug products which are primarily manufactured through biotechnology are excluded from the provisions of patent term extension.
On December 3, 1993, 35 U.S.C. 156 was further amended to provide for interim extension of a patent where a product claimed by the patent was expected to be approved, but not until after the original expiration date of the patent. Public Law 103-179, Section 5.
An application for the extension of the term of a patent under 35 U.S.C. 156 must be submitted by the owner of record of the patent or its agent within the sixty-day period beginning on the date the product received permission for commercial marketing or use under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use. See 35 U.S.C. 156(d)(1). This language regarding the sixty-day period has been clarified by the America Invents Act where the Act provides that, “[f]or purposes of determining the date on which a product receives permission under the second sentence of this paragraph, if such permission is transmitted after 4:30 P.M., Eastern Time, on a business day, or is transmitted on a day that is not a business day, the product shall be deemed to receive such permission on the next business day. For purposes of the
preceding sentence, the term 'business day' means any Monday, Tuesday, Wednesday, Thursday, or Friday, excluding any legal holiday under section 6103 of title 5.” See Section 37 of the AIA and 35 U.S.C. 156. The USPTO initially determines whether the application is formally complete and whether the patent is eligible for extension. The statute requires the Director of the United States Patent and Trademark Office to notify the Secretary of Agriculture or the Secretary of Health and Human Services of the submission of an application for extension of patent term which complies with 35 U.S.C. 156 within sixty days and to submit to the Secretary a copy of the application. Not later than thirty days after receipt of the application from the Director, the Secretary will determine the length of the applicable regulatory review period and notify the Director of the determination. If the Director determines that the patent is eligible for extension, the Director calculates the length of extension for which the patent is eligible under the appropriate statutory provision and issues an appropriate Certificate of Extension.
Patent term extensions provided by private relief legislation, public laws other than as enacted by 35 U.S.C. 156, such as 35 U.S.C. 155 and 155A, are not addressed herein.
2751 Eligibility Requirements [R-11.2013]
35 U.S.C. 156 Extension of patent term
(a) The term of a patent which claims a product, a method of using a product, or a method of manufacturing a product shall be extended in accordance with this section from the original expiration date of the patent, which shall include any patent term adjustment granted under section 154(b) if —
(1) the term of the patent has not expired before an application is submitted under subsection (d)(1) for its extension;
(2) the term of the patent has never been extended under subsection (e)(1) of this section;
(3) an application for extension is submitted by the owner of record of the patent or its agent and in accordance with the requirements of paragraphs (1) through (4) of subsection (d);
(4) the product has been subject to a regulatory review period before its commercial marketing or use;
(5)
(A) except as provided in subparagraph (B) or (C), the permission for the commercial marketing or use of the
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product after such regulatory review period is the first permitted commercial marketing or use of the product under the provision of law under which such regulatory review period occurred;
(B) in the case of a patent which claims a method of manufacturing the product which primarily uses recombinant DNA technology in the manufacture of the product, the permission for the commercial marketing or use of the product after such regulatory period is the first permitted commercial marketing or use of a product manufactured under the process claimed in the patent; or
(C) for purposes of subparagraph (A), in the case of a patent which —
(i) claims a new animal drug or a veterinary biological product which (I) is not covered by the claims in any other patent which has been extended, and (II) has received permission for the commercial marketing or use in non-food-producing animals and in food-producing animals, and
(ii) was not extended on the basis of the regulatory review period for use in non-food-producing animals,
the permission for the commercial marketing or use of the drug or product after the regulatory review period for use in food-producing animals is the first permitted commercial marketing or use of the drug or product for administration to a food-producing animal.
The product referred to in paragraphs (4) and (5) is hereinafter in this section referred to as the “approved product.”
*****
(f) For purposes of this section:
(1) The term “product” means:
(A) A drug product.
(B) Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act.
(2) The term “drug product” means the active ingredient of—
(A) a new drug, antibiotic drug, or human biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Public Health Service Act) or
(B) a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Virus-Serum-Toxin Act) which is not primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques, including any salt or ester of the active ingredient, as a single entity or in combination with another active ingredient.
(3) The term “major health or environmental effects test” means a test which is reasonably related to the evaluation of the health or environmental effects of a product, which
requires at least six months to conduct, and the data from which is submitted to receive permission for commercial marketing or use. Periods of analysis or evaluation of test results are not to be included in determining if the conduct of a test required at least six months.
(4)(A) Any reference to section 351 is a reference to section 351 of the Public Health Service Act.
(B) Any reference to section 503, 505, 512, or 515 is a reference to section 503, 505, 512, or 515 of the Federal Food, Drug and Cosmetic Act.
(C) Any reference to the Virus-Serum-Toxin Act is a reference to the Act of March 4, 1913 (21 U.S.C. 151 - 158).
(5) The term “informal hearing” has the meaning prescribed for such term by section 201(y) of the Federal Food, Drug and Cosmetic Act.
(6) The term “patent” means a patent issued by the United States Patent and Trademark Office.
(7) The term “date of enactment” as used in this section means September 24, 1984, for human drug product, a medical device, food additive, or color additive.
(8) The term “date of enactment” as used in this section means the date of enactment of the Generic Animal Drug and Patent Term Restoration Act for an animal drug or a veterinary biological product.
*****
37 CFR 1.710 Patents subject to extension of the patent term
(a) A patent is eligible for extension of the patent term if the patent claims a product as defined in paragraph (b) of this section, either alone or in combination with other ingredients that read on a composition that received permission for commercial marketing or use, or a method of using such a product, or a method of manufacturing such a product, and meets all other conditions and requirements of this subpart.
(b) The term product referred to in paragraph (a) of this section means —
(l) The active ingredient of a new human drug, antibiotic drug, or human biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Public Health Service Act) including any salt or ester of the active ingredient, as a single entity or in combination with another active ingredient; or
(2) The active ingredient of a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Virus-Serum-Toxin Act) that is not primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes including site specific genetic manipulation techniques, including any salt or ester of the active ingredient, as a single entity or in combination with another active ingredient; or
(3) Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act.
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§ 2751PATENT TERMS AND EXTENSIONS
37 CFR 1.720 Conditions for extension of patent term
The term of a patent may be extended if:
(a) The patent claims a product or a method of using or manufacturing a product as defined in § 1.710;
(b) The term of the patent has never been previously extended, except for extensions issued pursuant to §§ 1.701, 1.760, or 1.790;
(c) An application for extension is submitted in compliance with § 1.740;
(d) The product has been subject to a regulatory review period as defined in 35 U.S.C. 156(g) before its commercial marketing or use;
(e) The product has received permission for commercial marketing or use and —
(1) The permission for the commercial marketing or use of the product is the first received permission for commercial marketing or use under the provision of law under which the applicable regulatory review occurred, or
(2) In the case of a patent other than one directed to subject matter within § 1.710(b)(2) claiming a method of manufacturing the product that primarily uses recombinant DNA technology in the manufacture of the product, the permission for the commercial marketing or use is the first received permission for the commercial marketing or use of a product manufactured under the process claimed in the patent, or
(3) In the case of a patent claiming a new animal drug or a veterinary biological product that is not covered by the claims in any other patent that has been extended, and has received permission for the commercial marketing or use in non-food-producing animals and in food-producing animals, and was not extended on the basis of the regulatory review period for use in non-food-producing animals, the permission for the commercial marketing or use of the drug or product after the regulatory review period for use in food-producing animals is the first permitted commercial marketing or use of the drug or product for administration to a food-producing animal.
(f) The application is submitted within the sixty-day period beginning on the date the product first received permission for commercial marketing or use under the provisions of law under which the applicable regulatory review period occurred; or in the case of a patent claiming a method of manufacturing the product which primarily uses recombinant DNA technology in the manufacture of the product, the application for extension is submitted within the sixty-day period beginning on the date of the first permitted commercial marketing or use of a product manufactured under the process claimed in the patent; or in the case of a patent that claims a new animal drug or a veterinary biological product that is not covered by the claims in any other patent that has been extended, and said drug or product has received permission for the commercial marketing or use in non-food-producing animals, the application for extension is submitted within the sixty-day period beginning on the date of the first permitted commercial marketing or use of the drug or product for administration to a food-producing animal;
(g) The term of the patent, including any interim extension issued pursuant to § 1.790, has not expired before the submission of an application in compliance with § 1.741; and
(h) No other patent term has been extended for the same regulatory review period for the product.
35 U.S.C. 156(a) sets forth what patents can be extended and the conditions under which they may be extended. 37 CFR 1.710 also addresses the patents that may be extended, and 37 CFR 1.720 describes the conditions under which a patent may be extended. As set forth in 35 U.S.C. 156 and 37 CFR 1.710, a patent which claims a human drug product, medical device, food or color additive first approved for marketing or use after September 24, 1984, or an animal drug or veterinary biological product (which was not primarily manufactured through biotechnology) first approved for marketing or use after November 16, 1988, may qualify for patent term extension. Furthermore, 35 U.S.C. 156(a)(1)-(5) require that the applicant establish that:
(1) the patent has not expired before an application under 35 U.S.C. 156(d) was filed (this may be an application for patent term extension under subsection (d)(1) or an application for interim extension under subsection (d)(5));
(2) the patent has never been extended under 35 U.S.C. 156(e)(1);
(3) the application for extension is submitted by the owner of record of the patent or its agent to the Office within 60 days of regulatory agency approval of the commercial marketing application and the application includes details relating to the patent, the approved product, and the regulatory review time spent in securing regulatory agency approval;
(4) the product has been subject to a regulatory review period within the meaning of 35 U.S.C. 156(g) before its commercial marketing or use;
(5) the approval is the first permitted commercial marketing or use of the product (35 U.S.C. 156(a)(5)(A)), except in the case of human drug products manufactured using recombinant DNA technology where the provisions of 35 U.S.C. 156(a)(5)(B) apply, or in the case of a new animal drug or a veterinary biological product where the provisions of 35 U.S.C. 156(a)(5)(C) apply.
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35 U.S.C. 156(c)(4) also requires that no other patent term has been extended for the same regulatory review period for the product. See MPEP § 2761.
I. TERMINALLY DISCLAIMED PATENTS ARE ELIGIBLE
A patent may be extended under 35 U.S.C. 156, even though it has been terminally disclaimed. A patent term extension under 35 U.S.C. 156 is a limited extension of the patent rights associated with the approved product that is attached onto the original term of the patent. See 35 U.S.C. 156(b). Only one patent may be extended for a regulatory review period for any product, and 35 U.S.C. 156 sets the expiration date of a patent term extension. Although 35 U.S.C. 154(b)(2) (June 8, 1995) precludes a patent from being extended under 35 U.S.C. 154(b) if the patent has been terminally disclaimed due to an obviousness-type double patenting rejection (see MPEP § 2720), there is no such exclusion in 35 U.S.C. 156. Additionally, 35 U.S.C. 154(b)(2)(B)) (May 29, 2000) provides that a patent cannot be adjusted beyond the date set by the disclaimer (see MPEP § 2730), but there is no similar provision in 35 U.S.C. 156. Thus patents may receive a patent term extension under 35 U.S.C. 156 beyond an expiration date set by a terminal disclaimer. See Merck & Co., Inc. v. Hi-Tech Pharmacal, Co., Inc., 482 F3d 1317, 82 USPQ2d 1203 (Fed. Cir. 2007).
II. MEANING OF “PRODUCT” AS DEFINED IN 35 U.S.C. 156(f)
As required by 35 U.S.C. 156(a), patents eligible for extension of patent term are those which:
(A) claim a “product” as defined in 35 U.S.C. 156(f)(1), either alone or in combination with other ingredients, wherein the product reads on a composition (product) that received permission for commercial marketing or use, or a method of using such a product, or a method of manufacturing such a product, and
(B) meet all other conditions and requirements of the statute.
The term “claims a product” is not synonymous with “infringed by a product.” A patent which claims a metabolite of an approved drug does not claim the
approved drug. Hoechst-Roussel Pharmaceuticals Inc. v. Lehman, 109 F.3d 756, 759, 42 USPQ2d 1220, 1223 (Fed. Cir. 1997).
The term “product” means:
(A) The active ingredient of a new human drug, antibiotic drug, or human biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Public Health Service Act) including any salt or ester of the active ingredient, as a single entity or in combination with another active ingredient; or
(B) The active ingredient of a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Virus-Serum-Toxin Act) that is not primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes including site specific genetic manipulation techniques, including any salt or ester of the active ingredient, as a single entity or in combination with another active ingredient; or
(C) Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act.
See 21 CFR 60.3(b) for definitions of terms such as active ingredient, color additive, food additive, human drug product, and medical device.
Essentially, a “product” is a “drug product,” medical device, food additive, or color additive requiring Food and Drug Administration or Department of Agriculture (Plant and Animal Inspection Service) approval of an order or regulation prior to commercial marketing or use. “Drug product” is the active ingredient of a human drug, animal drug (excluding those primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes including site specific genetic manipulation techniques), or biological product (as defined by the Federal Food, Drug and Cosmetics Act and the Public Health Service Act) including any salt or ester of the active ingredient, as a single entity or in combination with another active ingredient. Animal biological products are approved by the Plant and Animal Inspection Service of the Department of Agriculture.
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§ 2751PATENT TERMS AND EXTENSIONS
A “drug product” means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration. See Hoechst-Roussel, 109 F.3d at 759 n.3 (“For purposes of patent term extension, this active ingredient must be present in the drug product when administered.”). In addition, a patent to a drug product having one form of an active ingredient may qualify for an extension even though another form of the underlying chemical moiety was previously approved and commercially marketed or used. For example, a drug product having the ester form of a particular chemical moiety is a different drug product from the same chemical moiety in a salt form, even though both the salt and the ester are used to treat the same disease condition. See PhotoCure v. Kappos, 603 F.3d 1372, 95 USPQ2d 1250 (Fed. Cir. 2010); see also Glaxo Operations UK Ltd. v. Quigg, 894 F.2d 392, 13 USPQ2d 1628 (Fed. Cir. 1990) (holding that a patent which claimed an ester of the acid cefuroxime was eligible for extension regardless of previous approvals of two salts of cefuroxime). Thus, eligibility for patent term extension for a patent which claims a product subject to regulatory review as set forth in 35 U.S.C. 156(b) turns on the question of whether the product, i.e., the active ingredient of the drug product, present in the final dosage form was previously approved by FDA. If neither it, nor any salt or ester of that active ingredient has been previously approved by FDA, then the patent should be eligible for patent term extension.
Furthermore, a “drug product” is the active ingredient of a particular new drug, rather than the entire composition of the drug product approved by the Food and Drug Administration. See Fisons plc v. Quigg, 1988 U.S. Dist. LEXIS 10935; 8 USPQ2d 1491, 1495 (D.D.C. 1988); aff’d., 876 F2d 99, 110; 10 USPQ2d 1869, 1870 (Fed. Cir. 1989).
A patent is considered to claim the product at least in those situations where the patent claims the active ingredient per se, or claims a composition or formulation which contains the active ingredient(s) and reads on the composition or formulation approved for commercial marketing or use.
III. NO PREVIOUS EXTENSIONS (WITH LIMITED EXCEPTIONS)
37 CFR 1.720(b) explains that patent term extension pursuant to 35 U.S.C. 156 is available only if the term of the patent has never been previously extended, except for extensions issued pursuant to 37 CFR 1.701, 1.760, or 1.790. An extension issued pursuant to 37 CFR 1.701 is an extension of the patent due to administrative delay within the Office. Note that the term of a patent is “adjusted,” not extended, pursuant to 37 CFR 1.702-1.705. An extension issued pursuant to 37 CFR 1.760 is an interim extension under 35 U.S.C. 156(e)(2). An extension issued pursuant to 37 CFR 1.790 is an interim extension under 35 U.S.C. 156(d)(5).
IV. REGULATORY REVIEW PERIOD
37 CFR 1.720(d) restates the statutory requirement set forth in 35 U.S.C. 156(a)(4). The regulatory review period must have been a regulatory review period defined by the statute. A regulatory review period under section 510(k) of the Federal Food, Drug and Cosmetic Act is not a regulatory review period which gives rise to eligibility for patent term extension under 35 U.S.C. 156. In re Nitinol Medical Technologies Inc., 17 USPQ2d 1492, 1492-1493 (Comm’r Pat. & Tm. 1990). See also Baxter Diagnostics v. AVL Scientific Corp., 798 F.
Supp. 612, 619-620; 25 USPQ2d 1428,1434 (CD Cal. 1992)(Congress intended only Class III medical devices to be eligible for patent term extension).
If the product is alleged to be a medical device, then regulatory review must have occurred under section 515, and not section 505, of the Federal Food, Drug and Cosmetic Act. Drug products are not reviewed under section 515.
If more than one application for patent term extension is filed based upon a single regulatory review period, election will be required of a single patent. See MPEP § 2761.
V. FIRST PERMITTED MARKETING OR USE
37 CFR 1.720(e) follows 35 U.S.C. 156(a)(5), and sets forth that the approval under the relevant provision of law must have been the first permitted
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marketing or use of the product under the provision of law, unless the product is for use in food producing animals as explained below. See In re Patent Term Extension Application, U.S. Patent No. 3,849,549, 226 USPQ 283, 284 (Pat. & Tm. Office 1985). If the product is a human drug product, then the approval of the active ingredient must be the first permitted commercial marketing or use of the active ingredient as a single entity or in combination with another active ingredient under the provision of law under which regulatory review occurred.
Where a product contains multiple active ingredients, if any one active ingredient has not been previously approved, it can form the basis of an extension of patent term provided the patent claims that ingredient. See In re Alcon Laboratories Inc., 13 USPQ2d 1115, 1121 (Comm’r Pat. & Tm. 1989) for examples of products having different combinations of active ingredients. A different ratio of hormones is not a different active ingredient for purposes of 35 U.S.C. 156. Furthermore, an approved product having two active ingredients will not be considered to have a single active ingredient made of the two active ingredients. See Arnold Partnership v. Dudas, 362 F.3d 1338, 70 USPQ2d 1311 (Fed. Cir. 2004). In considering whether a patent claiming an enantiomer, where the enantiomer was subject to pre-market regulatory review, is barred from receiving patent term extension in light of the previous approval of the racemate of the drug product, the court indicated that an enantiomer was a separate drug product from the racemate and each could support a patent term extension. See
Ortho-McNeil Pharmaceutical Inc. v. Lupin Pharmaceuticals Inc., 603 F3d 1377, 95 USPQ2d 1246 (Fed. Cir. 2010).
As to 35 U.S.C. 156(a)(5)(C), which is addressed in 37 CFR 1.720(e)(3), the term of a patent directed to a new animal drug or veterinary biological product may be extended based on a second or subsequent approval of the active ingredient provided all the following conditions exist:
(A) the patent claims the drug or product;
(B) the drug or product is not covered by the claims in any other patent that has been extended;
(C) the patent term was not extended on the basis of the regulatory review period for use in non-food producing animals; and
(D) the second or subsequent approval was the first permitted commercial marketing or use of the drug or product for administration to a food-producing animal. In this case, the application must be filed within sixty days of the first approval for administration to a food-producing animal.
For animal drugs or products, prior approval for use in a non-food producing animal will not make a patent ineligible for patent term extension based upon a later approval of the drug or product for use in food producing animals, if the later approval is the first approval of the drug or product for use in food producing animals.
2752 Patent Term Extension Applicant [R-07.2015]
35 U.S.C. 156 Extension of patent term
*****
(d)(1) To obtain an extension of the term of a patent under this section, the owner of record of the patent or its agent shall submit an application to the Director. Except as provided in paragraph (5), such an application may only be submitted within the sixty-day period beginning on the date the product received permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use. The application shall contain—
(A) the identity of the approved product and the Federal statute under which regulatory review occurred;
(B) the identity of the patent for which an extension is being sought and the identity of each claim of such patent which claims the approved product or a method of using or manufacturing the approved product;
(C) information to enable the Director to determine under subsections (a) and (b) the eligibility of a patent for extension and the rights that will be derived from the extension and information to enable the Director and the Secretary of Health and Human Services or the Secretary of Agriculture to determine the period of the extension under subsection (g);
(D) a brief description of the activities undertaken by the applicant during the applicable regulatory review period with respect to the approved product and the significant dates applicable to such activities; and
(E) such patent or other information as the Director may require.
For purposes of determining the date on which a product receives permission under the second sentence of 35 U.S.C. 156(d)(1),
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§ 2752PATENT TERMS AND EXTENSIONS
if such permission is transmitted after 4:30 P.M., Eastern Time, on a business day, or is transmitted on a day that is not a business day, the product shall be deemed to receive such permission on the next business day. For purposes of the preceding sentence, the term “business day” means any Monday, Tuesday, Wednesday, Thursday, or Friday, excluding any legal holiday under section 6103 of title 5.
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37 CFR 1.730 Applicant for extension of patent term; signature requirements.
(a) Any application for extension of a patent term must be submitted by the owner of record of the patent or its agent and must comply with the requirements of § 1.740.
(b) If the application is submitted by the patent owner, the application must be signed either by:
(1) The patent owner in compliance with § 3.73(b) of this chapter; or
(2) A registered practitioner on behalf of the patent owner.
(c) If the application is submitted on behalf of the patent owner by an agent of the patent owner ( e.g., a licensee of the patent owner), the application must be signed by a registered practitioner on behalf of the agent. The Office may require proof that the agent is authorized to act on behalf of the patent owner.
(d) If the application is signed by a registered practitioner, the Office may require proof that the practitioner is authorized to act on behalf of the patent owner or agent of the patent owner.
35 U.S.C. 156(d)(1) requires that the application for extension of the patent term must be submitted by the owner of record of the patent or its agent. If the application is filed by an assignee, the application papers should refer to the reel and frame number of the recorded assignment. A power of attorney from the patent owner to any patent attorney or agent submitting the patent term extension application papers should be filed, if the attorney or agent is not already of record in the patent (see 37 CFR 1.34(b)).
If the applicant for patent term extension was not the marketing applicant before the regulatory agency, then there must be an agency relationship between the patent owner and the marketing applicant during the regulatory review period. To show that such an applicant is authorized to rely upon the activities of the marketing applicant before the Food and Drug Administration or the Department of Agriculture, it is advisable for the applicant for patent term
extension to obtain a letter from the marketing applicant specifically authorizing such reliance.
2753 Application Contents [R-11.2013]
37 CFR 1.740 Formal requirements for application for extension of patent term; correction of informalities.
(a) An application for extension of patent term must be made in writing to the Director. A formal application for the extension of patent term must include:
(1) A complete identification of the approved product as by appropriate chemical and generic name, physical structure or characteristics;
(2) A complete identification of the Federal statute including the applicable provision of law under which the regulatory review occurred;
(3) An identification of the date on which the product received permission for commercial marketing or use under the provision of law under which the applicable regulatory review period occurred;
(4) In the case of a drug product, an identification of each active ingredient in the product and as to each active ingredient, a statement that it has not been previously approved for commercial marketing or use under the Federal Food, Drug, and Cosmetic Act, the Public Health Service Act, or the Virus-Serum-Toxin Act, or a statement of when the active ingredient was approved for commercial marketing or use (either alone or in combination with other active ingredients), the use for which it was approved, and the provision of law under which it was approved.
(5) A statement that the application is being submitted within the sixty day period permitted for submission pursuant to § 1.720(f) and an identification of the date of the last day on which the application could be submitted;
(6) A complete identification of the patent for which an extension is being sought by the name of the inventor, the patent number, the date of issue, and the date of expiration;
(7) A copy of the patent for which an extension is being sought, including the entire specification (including claims) and drawings;
(8) A copy of any disclaimer, certificate of correction, receipt of maintenance fee payment, or reexamination certificate issued in the patent;
(9) A statement that the patent claims the approved product, or a method of using or manufacturing the approved product, and a showing which lists each applicable patent claim and demonstrates the manner in which at least one such patent claim reads on:
(i) The approved product, if the listed claims include any claim to the approved product;
(ii) The method of using the approved product, if the listed claims include any claim to the method of using the approved product; and
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(iii) The method of manufacturing the approved product, if the listed claims include any claim to the method of manufacturing the approved product;
(10) A statement beginning on a new page of the relevant dates and information pursuant to 35 U.S.C. 156(g) in order to enable the Secretary of Health and Human Services or the Secretary of Agriculture, as appropriate, to determine the applicable regulatory review period as follows:
(i) For a patent claiming a human drug, antibiotic, or human biological product:
(A) The effective date of the investigational new drug (IND) application and the IND number;
(B) The date on which a new drug application (NDA) or a Product License Application (PLA) was initially submitted and the NDA or PLA number; and
(C) The date on which the NDA was approved or the Product License issued;
(ii) For a patent claiming a new animal drug:
(A) The date a major health or environmental effects test on the drug was initiated, and any available substantiation of that date, or the date of an exemption under subsection (j) of Section 512 of the Federal Food, Drug, and Cosmetic Act became effective for such animal drug;
(B) The date on which a new animal drug application (NADA) was initially submitted and the NADA number; and
(C) The date on which the NADA was approved;
(iii) For a patent claiming a veterinary biological product:
(A) The date the authority to prepare an experimental biological product under the Virus-Serum-Toxin Act became effective;
(B) The date an application for a license was submitted under the Virus-Serum-Toxin Act; and
(C) The date the license issued;
(iv) For a patent claiming a food or color additive:
(A) The date a major health or environmental effects test on the additive was initiated and any available substantiation of that date;
(B) The date on which a petition for product approval under the Federal Food, Drug and Cosmetic Act was initially submitted and the petition number; and
(C) The date on which the FDA published a Federal Register notice listing the additive for use;
(v) For a patent claiming a medical device:
(A) The effective date of the investigational device exemption (IDE) and the IDE number, if applicable, or
the date on which the applicant began the first clinical investigation involving the device, if no IDE was submitted, and any available substantiation of that date;
(B) The date on which the application for product approval or notice of completion of a product development protocol under Section 515 of the Federal Food, Drug and Cosmetic Act was initially submitted and the number of the application; and
(C) The date on which the application was approved or the protocol declared to be completed;
(11) A brief description beginning on a new page of the significant activities undertaken by the marketing applicant during the applicable regulatory review period with respect to the approved product and the significant dates applicable to such activities;
(12) A statement beginning on a new page that in the opinion of the applicant the patent is eligible for the extension and a statement as to the length of extension claimed, including how the length of extension was determined;
(13) A statement that applicant acknowledges a duty to disclose to the Director of the United States Patent and Trademark Office and the Secretary of Health and Human Services or the Secretary of Agriculture any information which is material to the determination of entitlement to the extension sought (see § 1.765);
(14) The prescribed fee for receiving and acting upon the application for extension (see § 1.20(j)); and
(15) The name, address, and telephone number of the person to whom inquiries and correspondence relating to the application for patent term extension are to be directed.
(b) The application under this section must be accompanied by two additional copies of such application (for a total of three copies).
(c) If an application for extension of patent term is informal under this section, the Office will so notify the applicant. The applicant has two months from the mail date of the notice, or such time as is set in the notice, within which to correct the informality. Unless the notice indicates otherwise, this time period may be extended under the provisions of § 1.136.
37 CFR 1.740 sets forth the requirements for a formal application for extension of patent term. See MPEP § 2752 for a discussion of who may apply for a patent term extension. See 37 CFR 1.741 and MPEP § 2754 for a description of the information that must be submitted in the patent term extension application in order to be accorded a filing date.
37 CFR 1.740(a)(1) requires a complete identification of the approved product as by appropriate chemical and generic name, physical structure or characteristics so as to enable the
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Director to make a determination of whether the patent claims the approved product, or a method of using or manufacturing the approved product.
37 CFR 1.740(a)(2) requires a complete identification of the federal statute including the applicable provision of law under which the regulatory review occurred. When the regulatory review of the product took place under more than one federal statute, each appropriate statute should be listed. This could apply to a situation where a human biological product is tested under an investigational new drug (IND) application pursuant to the Federal Food, Drug, and Cosmetic Act, but is approved under the Public Health Service Act; or to a situation where approval is sought for use of a particular medical device with a specific drug product which may require approval under more than a single provision of law. The product that forms the basis of an application for patent term extension must be either a medical device or a drug product; any extension will be granted based upon the review of the product as either a medical device or a drug product, it cannot be a combination of those separate products. See the file history of U.S. Patent No. 4,428,744 for an example of the application of this principle.
The date that a product receives permission for commercial marketing or use (which must be identified pursuant to 37 CFR 1.740(a)(3)) is generally the mailing date of the letter from the regulatory agency indicating regulatory approval. For a food additive, the approval date is generally the effective date stated in the regulation and the date the regulation is published.
37 CFR 1.740(a)(4) provides that for drug products, each active ingredient must be identified and there must be an indication of the use for which the product was approved. For each active ingredient, a statement must be made that either the active ingredient was not previously approved for commercial marketing or use under the Federal Food, Drug and Cosmetic Act, or that the active ingredient was approved for commercial marketing or use (either alone or in combination with other active ingredients) and the provision of law under which it was approved. The information is especially necessary for a determination of eligibility where,
for example, the application is based on a second or subsequent approval of an active ingredient, but the first approval for administration to a food-producing animal.
In accordance with 37 CFR 1.740(a)(5), the application must be submitted within the sixty day period permitted for submission pursuant to 37 CFR 1.720(f). If the sixty day period ends on a Saturday, Sunday or federal holiday, then the last day on which the application could be submitted will be considered to be the next business day following the Saturday, Sunday or federal holiday. See 37 CFR 1.7. The starting date of the sixty-day period as recited in 35 U.S.C. 156(d)(1) has been clarified by the America Invents Act where the Act provides that, “[f]or purposes of determining the date on which a product receives permission under the second sentence of this paragraph, if such permission is transmitted after 4:30 P.M., Eastern Time, on a business day, or is transmitted on a day that is not a business day, the product shall be deemed to receive such permission on the next business day. For purposes of the preceding sentence, the term 'business day' means any Monday, Tuesday, Wednesday, Thursday, or Friday, excluding any legal holiday under section 6103 of title 5.” See Section 37 of the American Invents Act and 35 U.S.C. 156. However, applicants are cautioned to avoid filing an application for patent term extension on the last day for filing to avoid the application being denied because the filing deadline was inadvertently missed.
The expiration date of the patent for which an extension is sought as identified pursuant to 37 CFR 1.740(a)(6) should be the expiration date according to the law (35 U.S.C. 154) at the time of filing of the application for patent term extension, and should include any patent term adjustment under 35 U.S.C. 154(b).
Pursuant to 37 CFR 1.740(a)(9), the application for patent term extension need only explain how one product claim of the patent claims the approved product, if there is a claim to the product. In addition, the application need only explain how one method of use claim of the patent claims the method of use of the approved product, if there is a claim to the method of use of the product. Lastly, the application need only explain how one claim of the patent claims
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the method of manufacturing the approved product, if there is a claim to the method of manufacturing the approved product. At most, a showing explaining three claims is required. However, each claim that claims the approved product, the method of use of the approved product, or the method of manufacturing the approved product must be listed. See 35 U.S.C. 156(d)(1)(B).
The showing should clearly explain how each listed claim reads on the approved product. For example, where a generic chemical structure is used in the claim to define the claimed invention, a listing of variables and substituents which correspond to the approved product is appropriate. Where a claim uses the “means for” language permitted by 35 U.S.C. 112, paragraph 6, or 35 U.S.C. 112(f) for patents granted on AIA applications, reference to the column and line number of the patent text and any drawing reference numbers, as well as a description of any relevant equivalents, is also appropriate.
Pursuant to 37 CFR 1.740(a)(10), the patent term extension applicant must provide a statement to enable the Secretary of Health and Human Services or the Secretary of Agriculture, as appropriate, to determine the applicable regulatory period. In cases where there is no regulatory event to reflect the commencement of the testing or approval phase of the regulatory review period, applicants should include in the application the dates that they claim initiate either the approval or the testing phases and an explanation of their reasonable bases for why they conclude that these dates are the relevant dates. For instance, when the clinical trials are conducted outside of the United States, the testing phase for a medical device begins on the date the clinical investigation involving the device began. An applicant should include an explanation as to why the date claimed is the date on which such clinical investigations had commenced. If the applicant has any means of substantiating that date, that information should be included in the application.
37 CFR 1.740(a)(11) requires a brief description of the activities of the marketing applicant before the regulatory agency. This description should include an identification of significant communications of substance with the regulatory agency and the dates related to such communications. For example, these
activities would include the dates of the submissions of new data to the FDA, communications between FDA and the applicant with respect to the appropriate protocols for testing the product, and communications between FDA and the applicant that are attempts to define the particular requirements for premarketing approval for this particular product. The applicant is not required to establish the existence of due diligence during the regulatory review period in order to have a complete application.
As stated above, the marketing applicant must have been an agent of the patent owner, if not the same entity as the patent owner. Accordingly, the Office will not assist the patent owner in obtaining information required in an application for patent term extension from the marketing applicant. It is sufficient that the description of the activities briefly identify those significant activities undertaken by the marketing applicant directed toward regulatory approval, and a submission of insignificant details or identification of non-substantive communications is not required.
37 CFR 1.740(a)(12) requires that the extension applicant state the length of extension claimed and show how the length of extension was calculated, including whether the 14-year limit of 35 U.S.C. 156(c)(3) or the five-year limit of 35 U.S.C. 156(g)(6)(A) applies.
37 CFR 1.740(a)(15) requires the patent term extension applicant to provide a correspondence address. A fax number should also be provided. Normally, only communications regarding the application for patent term extension will be sent to the address specified in the patent term extension application. If the address is changed after filing the application for patent term extension, the change of address should be sent to Mail Stop Hatch-Waxman PTE, since changing the address for the patent file will not cause the address for the patent term extension application to also be changed.
In order to change the address of all correspondence, including maintenance fee reminders, a change of address should also be filed. A change of address must be signed by the patent applicant, the assignee of the entire interest, or an attorney or agent of
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record. 37 CFR 1.33(a). Accordingly, if the patent term extension application is signed by the marketing applicant, as an agent of the patent owner, a power of attorney from the patent owner to any attorney for the marketing applicant would be necessary for the attorney for the marketing applicant to be able to sign a change of address for the patent file.
Pursuant to 37 CFR 1.740(b), two additional copies of the application for patent term extension must be filed with the application. The original copy, along with the patent file (if not already scanned into the Image File Wrapper system), is scanned into the Image File Wrapper system so that all patent prosecution and patent term extension documents are available in PUBLIC PAIR. One copy of the application is forwarded to the regulatory agency and the second copy is used by the Legal Advisor in the Office of Patent Legal Administration.
2754 Filing Date [R-11.2013]
37 CFR 1.741 Complete application given a filing date; petition procedure.
(a) The filing date of an application for extension of a patent term is the date on which a complete application is received in the Office or filed pursuant to the procedures set forth in § 1.8 or § 1.10. A complete application must include:
(1) An identification of the approved product;
(2) An identification of each Federal statute under which regulatory review occurred;
(3) An identification of the patent for which an extension is being sought;
(4) An identification of each claim of the patent which claims the approved product or a method of using or manufacturing the approved product;
(5) Sufficient information to enable the Director to determine under subsections (a) and (b) of 35 U.S.C. 156 the eligibility of a patent for extension, and the rights that will be derived from the extension, and information to enable the Director and the Secretary of Health and Human Services or the Secretary of Agriculture to determine the length of the regulatory review period; and
(6) A brief description of the activities undertaken by the marketing applicant during the applicable regulatory review period with respect to the approved product and the significant dates applicable to such activities.
(b) If an application for extension of patent term is incomplete under this section, the Office will so notify the applicant. If applicant requests review of a notice that an application is incomplete, or review of the filing date accorded an application under this section, applicant must file a petition pursuant to this paragraph accompanied by the fee set forth in
§ 1.17(h) within two months of the mail date of the notice that the application is incomplete, or the notice according the filing date complained of. Unless the notice indicates otherwise, this time period may be extended under the provisions of § 1.136.
I. FILING DATE ACCORDED
An application for patent term extension under 35 U.S.C. 156 may be filed by mail addressed to Mail Stop Hatch-Waxman PTE, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450 or may be hand carried to the Office of Patent Legal Administration. Applicants are encouraged to use the post card receipt practice described in MPEP § 502.
As set forth in 37 CFR 1.741(a), the filing date of an application for patent term extension is the date on which a complete application is received in the USPTO or filed pursuant to the certificate of mailing provisions of 37 CFR 1.8 (see MPEP § 512 for suggested formats for a certificate of mailing) or the
Priority Mail Express® provisions of 37 CFR 1.10. Patent term extension applications must not be filed by facsimile or the Office’s electronic filing system (EFS-Web). However correspondence setting forth a change of address and other papers relating to a patent term extension may be sent by facsimile to the Office of Patent Legal Administration or via EFS-Web.
II. COMPLETE APPLICATION
The term “complete application” is defined in 37 CFR 1.741(a) and is an application meeting the requirements set forth in 35 U.S.C. 156(d)(1). For the establishment of a filing date, the distinction between the requirements of 37 CFR 1.740 and the requirements of 37 CFR 1.741 are important. While the requirements of 37 CFR 1.740 may be satisfied outside the 60-day filing period, the requirements of 37 CFR 1.741 are mandated by 35 U.S.C. 156 and must be satisfied within the 60-day filing period for the establishment of the filing date. The Office will consider each of these statutory requirements to be satisfied in an application which provides sufficient information, directed to each requirement, to act on the application, even though further information may be desired by the USPTO or the regulatory agency before a final determination of
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eligibility and length of patent term extension is made.
III. INFORMAL APPLICATION
37 CFR 1.740 Formal requirements for application for extension of patent term; correction of informalities.
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(c) If an application for extension of patent term is informal under this section, the Office will so notify the applicant. The applicant has two months from the mail date of the notice, or such time as is set in the notice, within which to correct the informality. Unless the notice indicates otherwise, this time period may be extended under the provisions of § 1.136.
If the application does not meet all the formal requirements of 37 CFR 1.740(a) (see MPEP § 2753), the applicant will be notified of the informalities and may seek to have that holding reviewed under 37 CFR 1.740(c) or to correct the informality. The time periods set forth therein are subject to the provisions of 37 CFR 1.136, unless otherwise stated in the notice.
Note that if the application satisfies the requirements of 37 CFR 1.741, the application filing date will have been established even if the application is held to be informal under 37 CFR 1.740 .
2754.01 Deadline for Filing an Application Under 35 U.S.C. 156(d)(1) [R-11.2013]
An application for patent term extension under 35 U.S.C. 156(d)(1) may only be filed within the sixty-day period beginning on the date the product received permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use. The statutory time period is not extendable and cannot be waived or excused. See U.S. Patent No. 4,486,425 (application for patent term extension filed after the end of the 60-day period and was therefore denied). For purposes of determining the date the product received permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use, if such permission is transmitted after 4:30 P.M., Eastern Time, on a business day, or is transmitted on a day that is not a business day, the product shall be deemed to have received such permission on the
next business day. The term “business day” in this context means any Monday, Tuesday, Wednesday, Thursday, or Friday, excluding any legal holiday under 5 U.S.C. 6103.
The statute takes into account only the regulatory review carried out by the Food and Drug Administration or the Department of Agriculture and no other government obstacles to marketing or use. See Unimed, Inc. v. Quigg, 888 F2d 826, 828; 12 USPQ2d 1644, 1646 (Fed. Cir. 1989). For drug products the approval date is the date of a letter by the Food and Drug Administration indicating that the application has been approved, even if the letter requires further action before the drug can be marketed. Mead Johnson Pharmaceutical Group v. Bowen, 838 F2d 1332, 1336; 6 USPQ2d 1565, 1568 (D.C. Cir. 1988). For food or color additives, the relevant date is the effective date of the regulation or order, which is set forth in the regulation or order, and generally is the date that the regulation or order is published, e.g., in the Federal Register. See 21 U.S.C. 348(e). This date will generally be later than the date the approval is communicated to the marketing applicant.
2754.02 Filing Window for an Application Under 35 U.S.C. 156(d)(5) [R-8.2012]
A first application for interim extension under 35 U.S.C. 156(d)(5) (to extend the patent term before product approval) must be filed within the period beginning six months and ending fifteen days before the patent is due to expire. Each subsequent application for interim extension must be filed during the period beginning sixty days before and ending thirty days before the expiration of the preceding interim extension. 35 U.S.C. 156(d)(5)(C). An interim extension granted under 35 U.S.C. 156(d)(5) terminates sixty days after permission for commercial marketing or use of the product is granted, except, if within the sixty-day period any additional information needed for an application for patent term extension under 35 U.S.C. 156(d)(1) is submitted, the patent may be further extended. 35 U.S.C. 156(d)(5)(E). The additional information required to be submitted includes the fee for an application for patent term extension under 35 U.S.C. 156(d)(1), identification of the date the product received permission for commercial marketing or
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use, a statement that the application is being submitted within sixty days of such date, and identification of the last date that the application could be submitted. See 37 CFR 1.740(a)(3) and (5). However, if the product is not approved within the period of interim extension, a new request for interim extension must be filed and another interim extension granted to keep the patent in force. An applicant is generally limited to four one-year interim extensions.
See MPEP § 2755.02 for additional information pertaining to the interim extension of patent term under 35 U.S.C. 156(d)(5).
2754.03 Filing of a Request for an Extension Under 35 U.S.C. 156(e)(2) [R-8.2012]
A request for an interim extension under 35 U.S.C. 156(e)(2) (to extend the patent term during the processing of the patent term extension application) should be made at least three months before the patent is due to expire. See MPEP § 2755.01 for information pertaining to the interim extension of patent term under 35 U.S.C. 156(e)(2).
2755 Eligibility Determination [R-8.2012]
37 CFR 1.750 Determination of eligibility for extension of patent term
A determination as to whether a patent is eligible for extension may be made by the Director solely on the basis of the representations contained in the application for extension filed in compliance with § 1.740 or § 1.790. This determination may be delegated to appropriate Patent and Trademark Office officials and may be made at any time before the certificate of extension is issued. The Director or other appropriate officials may require from applicant further information or make such independent inquiries as desired before a final determination is made on whether a patent is eligible for extension. In an application for extension filed in compliance with § 1.740, a notice will be mailed to applicant containing the determination as to the eligibility of the patent for extension and the period of time of the extension, if any. This notice shall constitute the final determination as to the eligibility and any period of extension of the patent. A single request for reconsideration of a final determination may be made if filed by the applicant within such time as may be set in the notice of final determination or, if no time is set, within one month from the date of the final determination. The time periods set forth herein are subject to the provisions of § 1.136.
The determination as to whether a patent is eligible for an extension will normally be made solely from
the representations contained in the application for patent term extension. However, further information may be required or inquiry made of applicant before a final determination is made on whether a patent is eligible for extension. In circumstances where further information is required by the Office, the applicant will be given a time period within which to respond. The failure to provide a response within the time period provided may result in a final determination adverse to the granting of an extension of patent term unless the response period is extended. An extension of time to respond may be requested under the provisions of 37 CFR 1.136. Under appropriate circumstances, e.g., if time is of the essence for a particular reason, a request for information may contain a statement that the provisions of 37 CFR 1.136(a) are not available. The intentional failure to provide the information requested may result in an adverse final determination.
A final determination may be made at any time after an application is filed. A single request for reconsideration of a final determination may be filed within one month or within such other time period set in the final determination. A notice will be mailed to applicant containing the determination as to eligibility of the patent for extension and the period of time of the extension of the term, if any. This notice shall constitute the final determination as to eligibility and any period of extension of the patent term. If no request for reconsideration is filed within the time period set in the notice of final determination, the certificate of patent term extension will be issued in due course. See MPEP § 2758.
2755.01 Interim Extension of Patent Term During the Processing of the Application [R-11.2013]
35 U.S.C. 156 Extension of patent term.
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(e)(2) If the term of a patent for which an application has been submitted under subsection (d)(1) would expire before a certificate of extension is issued or denied under paragraph (1) respecting the application, the Director shall extend, until such determination is made, the term of the patent for periods of up to one year if he determines that the patent is eligible for extension.
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37 CFR 1.760 Interim extension of patent term under 35 U.S.C. 156(e)(2).
An applicant who has filed a formal application for extension in compliance with § 1.740 may request one or more interim extensions for periods of up to one year each pending a final determination on the application pursuant to § 1.750. Any such request should be filed at least three months prior to the expiration date of the patent. The Director may issue interim extensions, without a request by the applicant, for periods of up to one year each until a final determination is made. The patent owner or agent will be notified when an interim extension is granted and notice of the extension will be published in the Official Gazette of the United States Patent and Trademark
Office. The notice will be recorded in the official file of the patent and will be considered as part of the original patent. In no event will the interim extensions granted under this section be longer than the maximum period for extension to which the applicant would be eligible.
If the original term of the patent for which extension is sought will expire before a final decision to issue a certificate of extension can be made, and a determination is made that the patent is eligible for extension, 35 U.S.C. 156 provides that the Director may issue an interim extension of the patent term for up to one year pending a final decision on the application for extension. Should additional time be necessary, additional interim extensions of up to one year may be granted by the Director. The length of any interim extension is discretionary with the Director so long as it is for one year or less. Its length should be set to provide time for completion of any outstanding requirements. See In re Reckitt & Colman Products Ltd., 230 USPQ 369, 372 (Comm’r Pat. & Tm. 1986). The Director may issue an interim extension under 35 U.S.C. 156(e)(2) with or without a request from the applicant.
Where a determination is made that the patent is not eligible for patent term extension, an interim extension of the patent term is not warranted under 35 U.S.C. 156(e)(2). See In re Alcon Laboratories Inc., 13 USPQ2d 1115, 1123 (Comm’r. Pat.& Tm. 1989).
Where an interim extension has been granted and it is subsequently determined that the patent is not eligible for patent term extension, the interim extension may be vacated ab initio as ineligible under 35 U.S.C. 156(e)(2). See In re Reckitt, 230 USPQ at 370.
While 37 CFR 1.760 provides that a request for an interim extension by the applicant “should” be filed three months prior to the expiration of the patent, this time frame is not mandatory. Any request filed within a shorter period of time will be considered, upon a proper showing, where it is not possible to make an earlier request. However, for an interim extension to be granted, the application for extension, in compliance with 37 CFR 1.741, must have been filed prior to the expiration date of the patent. In no event will an interim extension be granted for a period of patent term extension longer than the period of extension to which the patent would be eligible.
A notice of each interim extension granted will be issued to the applicant for patent term extension. The notice will be recorded in the official file of the patent and will be considered as part of the original patent.
2755.02 Interim Extension of Patent Term Before Product Approval [R-11.2013]
35 U.S.C. 156 Extension of patent term.
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(d)
(5)(A) If the owner of record of the patent or its agent reasonably expects that the applicable regulatory review period described in paragraphs (1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection (g) that began for a product that is the subject of such patent may extend beyond the expiration of the patent term in effect, the owner or its agent may submit an application to the Director for an interim extension during the period beginning 6 months, and ending 15 days before such term is due to expire. The application shall contain—
(i) the identity of the product subject to regulating review and the Federal statute under which such review is occurring;
(ii) the identity of the patent for which interim extension is being sought and the identity of each claim of such patent which claims the product under regulatory review or a method of using or manufacturing the product;
(iii) information to enable the Director to determine under subsection (a)(1), (2), and (3) the eligibility of a patent for extension;
(iv) a brief description of the activities undertaken by the applicant during the applicable regulatory review period to date with respect to the product under review and the significant dates applicable to such activities; and
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(v) such patent or other information as the Director may require.
(B) If the Director determines that, except for permission to market or use the product commercially, the patent would be eligible for an extension of the patent term under this section, the Director shall publish in the Federal Register a notice of such determination, including the identity of the product under regulatory review, and shall issue to the applicant a certificate of interim extension for a period of not more than 1 year.
(C) The owner of record of a patent, or its agent, for which an interim extension has been granted under subparagraph (B), may apply for not more than 4 subsequent interim extensions under this paragraph, except that, in the case of a patent subject to subsection (g)(6)(C), the owner of record of the patent, or its agent, may apply for only 1 subsequent interim extension under this paragraph. Each such subsequent application shall be made during the period beginning 60 days before, and ending 30 days before, the expiration of the preceding interim extension.
(D) Each certificate of interim extension under this paragraph shall be recorded in the official file of the patent and shall be considered part of the original patent.
(E) Any interim extension granted under this paragraph shall terminate at the end of the 60-day period beginning on the day on which the product involved receives permission for commercial marketing or use, except that, if within that 60-day period, the applicant notifies the Director of such permission and submits any additional information under paragraph (1) of this subsection not previously contained in the application for interim extension, the patent shall be further extended, in accordance with the provisions of this section—
(i) for not to exceed 5 years from the date of expiration of the original patent term; or
(ii) if the patent is subject to subsection (g)(6)(C), from the date on which the product involved receives approval for commercial marketing or use.
(F) The rights derived from any patent the term of which is extended under this paragraph shall, during the period of interim extension—
(i) in the case of a patent which claims a product, be limited to any use then under regulatory review;
(ii) in the case of a patent which claims a method of using a product, be limited to any use claimed by the patent then under regulatory review; and
(iii) in the case of a patent which claims a method of manufacturing a product, be limited to the method of manufacturing as used to make the product then under regulatory review.
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37 CFR 1.790 Interim extension of patent term under 35 U.S.C. 156(d)(5).
(a) An owner of record of a patent or its agent who reasonably expects that the applicable regulatory review period described in paragraph (1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection (g) that began for a product that is the subject of such patent may extend beyond the expiration of the patent term in effect may submit one or more applications for interim extensions for periods of up to one year each. The initial application for interim extension must be filed during the period beginning 6 months and ending 15 days before the patent term is due to expire. Each subsequent application for interim extension must be filed during the period beginning 60 days before and ending 30 days before the expiration of the preceding interim extension. In no event will the interim extensions granted under this section be longer than the maximum period of extension to which the applicant would be entitled under 35 U.S.C. 156(c).
(b) A complete application for interim extension under this section shall include all of the information required for a formal application under § 1.740 and a complete application under § 1.741. Sections (a)(1), (a)(2), (a)(4), and (a)(6) - (a)(17) of § 1.740 and § 1.741 shall be read in the context of a product currently undergoing regulatory review. Sections (a)(3) and (a)(5) of § 1.740 are not applicable to an application for interim extension under this section.
(c) The content of each subsequent interim extension application may be limited to a request for a subsequent interim extension along with a statement that the regulatory review period has not been completed along with any materials or information required under §§ 1.740 and 1.741 that are not present in the preceding interim extension application.
37 CFR 1.791 Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use.
Any interim extension granted under 35 U.S.C. 156(d)(5) terminates at the end of the 60-day period beginning on the date on which the product involved receives permission for commercial marketing or use. If within that 60-day period the patent owner or its agent files an application for extension under §§ 1.740 and 1.741 including any additional information required under 35 U.S.C. 156(d)(1) not contained in the application for interim extension, the patent shall be further extended in accordance with the provisions of 35 U.S.C. 156.
If a patent that claims a product which is undergoing the approval phase of regulatory review as defined by 35 U.S.C. 156(g)(1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), and (5)(B)(ii) is expected to expire before approval is granted, interim patent term extension is available under 35 U.S.C. 156(d)(5). The application for patent term extension that must be submitted is generally the same as would be filed had the product been approved, except that the approval date is not required to be set forth. Once the product is approved, the application must be converted to an application for patent term extension
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under 35 U.S.C. 156(d)(1) to obtain patent term extension under that subsection.
Processing of an application for interim patent term extension under 35 U.S.C. 156(d)(5) is performed in the Office of Patent Legal Administration and is similar to other applications for patent term extension, except that the Office is not required to seek the advice of the relevant regulatory agency. The relevant agency, however, is normally consulted before an interim extension is granted or before the application is denied. The fee for an application for patent term extension under 35 U.S.C. 156(d)(5) is set forth in 37 CFR 1.20(j)(2), and the fee for a subsequent application is set forth in 37 CFR 1.20(j)(3). Copies of an application for interim extension are maintained in the same manner as applications for patent term extension. As required by 35 U.S.C. 156(d)(5)(B), a determination that a patent is eligible for extension under 35 U.S.C. 156, but for regulatory approval, is published in the Federal Register. A sample order granting a second interim extension follows:
UNITED STATES PATENT AND TRADEMARK OFFICE
In re___
Request for Patent Term Extension ORDER GRANTING U.S. Patent No.___ INTERIM EXTENSION
On __, patent owner __, filed an application under 35 U.S.C. 156(d)(5) for interim extension of the term of U.S. Patent No. __. The patent claims the active ingredient __ in the human drug product “___.” The application indicates that the product is currently undergoing a regulatory review before the Food and Drug Administration for permission to market or use the product commercially. The original term of the patent expired on ___ On ___, the patent was granted an first interim extension under 35 U.S.C. 156(d)(5) for a period of one year.
Review of the application indicates that except for receipt of permission to market or use the product commercially, the subject patent would be eligible for an extension of the patent term under 35 U.S.C. 156 . Since it is apparent that the regulatory review period may extend beyond the date of expiration of the patent, as extended by the first interim extension, a second interim extension of the patent term under 35 U.S.C. 156(d)(5) is appropriate.
An interim extension under 35 U.S.C. 156(d)(5) of the term of U.S. Patent No. __ is granted for a period of one year from the extended expiration date of the patent.
As seen from the example given, a series of one-year interim extensions may be granted if requested in a timely manner (in the window of time between thirty and sixty days before the extended expiration date).
An interim extension granted under 35 U.S.C. 156(d)(5) terminates sixty days after permission for commercial marketing or use of the product is granted, except, if within the sixty day period any additional information needed for an application for patent term extension under 35 U.S.C. 156(d)(1) is submitted, the patent may be further extended. 35 U.S.C. 156(d)(5)(E).
2756 Correspondence Between the USPTO and the Regulatory Agency [R-11.2013]
It is the Director’s responsibility to decide whether an applicant has satisfied the requirements of the statute and whether the patent qualifies for patent term extension. The regulatory agency possesses expertise and records regarding some of the statutory requirements and has certain direct responsibilities under 35 U.S.C. 156 for determining the length of the regulatory review period. Consequently, to facilitate eligibility decisions and permit the regulatory agency and the Office to carry out their responsibilities under 35 U.S.C. 156, both the Food and Drug Administration and the Department of Agriculture have entered into an “agreement” of cooperation with the Office. Memorandum of Understanding Between the Patent and Trademark Office and the Food and Drug Administration, 52 FR 17830 (May 12, 1987); Memorandum of Understanding Between the Patent and Trademark Office and the Animal and Plant Health Inspection Service, 54 FR 26399 (June 23, 1989); 1104 OG 18 (July 11, 1989). The agreements establish the procedures whereby the regulatory agency assists the Office in determining a patent’s eligibility for patent term extension under 35 U.S.C. 156. It also establishes procedures for exchanging information between the regulatory agency and the Office regarding regulatory review period determinations, due diligence petitions and informal regulatory agency hearings under the law. The patent term extension applicant receives a copy of all correspondence between the Office and the regulatory agency.
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The Animal and Health Inspection Service of the Department of Agriculture is responsible for assisting the Office in determining the eligibility of patent claiming a veterinary biological product that has been subject to the Virus-Serum-Toxin Act (21 U.S.C. 151-59) and for determining the regulatory review period of the veterinary biological product. The Secretary of Health and Human Services of the Food and Drug Administration is responsible for assisting the Office in determining the eligibility of patents claiming any other product for which regulatory review gives rise to eligibility for patent term extension. 21 CFR 60.10.
I. INFORMATION REGARDING ELIGIBILITY FOR EXTENSION
If the Office has no clear reason to deny eligibility for patent term extension (even if there are questions concerning eligibility), or if the applicant has been notified of any informalities and it is anticipated that the informalities will be corrected or explained, a first letter is sent to the regulatory agency to request information regarding eligibility. The letter is accompanied by a copy of the patent term extension application. This letter does not request the determination of the applicable regulatory review period.
The regulatory agency reply is usually in the form of a written response:
(A) verifying whether the product has undergone a regulatory review period within the meaning of 35 U.S.C. 156(g) prior to commercial marketing or use;
(B) stating whether the marketing permission was for the first permitted commercial marketing or use of that product, or, in the case of recombinant DNA technology, whether such commercial marketing or use was the first permitted under the process claimed in the patent;
(C) informing the Office whether the patent term extension application was submitted within sixty days after the product was approved for marketing or use; and
(D) providing the Office with any other information relevant to the Office determination of whether a patent related to a product is eligible for patent term extension.
While the Office has primary responsibility for the eligibility determination, the regulatory agency often possesses information which is not readily available to the Office. The assistance on the part of the regulatory agency enables both the Office and the agency to process applications efficiently and to conserve resources.
II. PRELIMINARY ELIGIBILITY DECISION
Upon receipt of a reply from the regulatory agency to the first letter from the Office requesting assistance on determining eligibility, a preliminary eligibility decision (not the final decision) is made as to whether the patent is eligible for an extension of its term. As noted above, the reply from the regulatory agency will usually inform the Office as to whether the permission for commercial marketing and use of the product on which the application for patent term extension is based is the first such approval for that product. Furthermore, the regulatory agency usually provides information regarding the date of product approval to permit a determination as to whether the application was filed within the sixty-day statutory period. The information provided by the regulatory agency is then compared with the related information from the application. If no major discrepancies are found and the patent is determined to be eligible for patent term extension, a second letter requesting a determination of the length of the regulatory review period of the product is mailed to the regulatory agency not later than sixty (60) days after the Office receipt date of the reply from the regulatory agency. In the interest of efficiency, if the patent is determined to be ineligible for patent term extension, the Office will dismiss the application rather than request a determination of the regulatory review period. In re Allen & Hansbury, Ltd., 227 USPQ 955, 960 n. 9 (Comm’r Pat. & Tm. 1985). The second letter states that, subject to final review, the patent is considered eligible for patent term extension and
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requests a determination of the applicable regulatory review period.
2757 Regulatory Agency Determination of the Length of the Regulatory Review Period [R-11.2013]
Under 35 U.S.C. 156, the regulatory agency is responsible for the determination of the length of the regulatory review period for the approved product on which the application for patent term extension is based. The determination by the regulatory agency is made based on the application as well as the official regulatory agency records for the approved product. See, e.g., 21 CFR Ch. 1, Subpart C. The determination of the length of the regulatory review period is solely the responsibility of the regulatory agency. Aktiebolaget Astra v. Lehman, 71 F.3d 1578, 1580-81, 37 USPQ2d 1212, 1214-15 (Fed. Cir. 1995) (regarding U.S. Patent No. 4,215,113). To determine the regulatory review period for an animal drug where the New Animal Drug Application (NADA) components were submitted to FDA in a phased review, the approval phase, as defined by 35 U.S.C. 156(g)(4)(B)(ii), begins on the date of the submission of the administrative NADA. See Wyeth Holdings Corp. v. Sebelius, 603 F.3d 1291, 1299-1300, 95 USPQ2d 1233,1240 (Fed. Cir. 2010).
Once the determination has been made, the regulatory agency publishes the information in the Federal Register and forwards a letter to the Office with the same information. Included in both the Federal Register Notice and the letter to the Office are the total length of the regulatory review period and the relevant dates on which the determination is based. Both the letter to the Office and the Federal Register Notice separate the total regulatory period into the initial or testing phase and the final approval phase. This provides the Office with the information necessary to determine the actual length of extension for which the patent may be eligible. The Federal Register Notice also sets a date, 180 days after publication of the notice, as a deadline for filing written comments concerning any of the information set forth in the notice or a petition for a determination regarding whether the marketing applicant has acted with due diligence during the regulatory review period. The letter to the Office
makes clear that the determination does not take into account the issue date of the patent nor does it exclude one-half of the testing phase.
The regulatory review period determination is not final until due diligence petitions and informal hearings, if any, have been resolved. A certificate for extension of the term of a patent may not issue from the Office until the regulatory review period determination is final unless an interim extension appears warranted under 35 U.S.C. 156(d)(5) and (e)(2) .
2757.01 Due Diligence Determination [R-11.2013]
If a due diligence petition is filed during the 180-day period following publication of the regulatory agency determination of the regulatory review period, the regulatory agency (e.g., FDA) makes the determination under 35 U.S.C. 156(d)(2)(B) whether the applicant for patent term extension acted with due diligence during the regulatory review proceedings. The term “due diligence” is defined in 35 U.S.C. 156(d)(3) as “that degree of attention, continuous directed effort, and timeliness as may reasonably be expected from, and are ordinarily exercised by, a person during a regulatory review period.”After affirming or revising the determination of the regulatory review period, the regulatory agency notifies the Office and publishes the results in the Federal Register. If no comment or petition is filed in the time period provided, the regulatory agency notifies the Office that the period for filing a due diligence petition pursuant to the notice has expired and that the regulatory agency therefore considers its determination of the regulatory review period for the product to be final. Following notification from the regulatory agency, the Office will proceed with the final eligibility determination. See 21 CFR Ch. 1, Subparts D and E.
2758 Notice of Final Determination - Calculation of Patent Term Extension [R-11.2013]
35 U.S.C. 156 Extension of patent term.
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§ 2758PATENT TERMS AND EXTENSIONS
(c) The term of a patent eligible for extension under subsection (a) shall be extended by the time equal to the regulatory review period for the approved product which period occurs after the date the patent is issued, except that—
(1) each period of the regulatory review period shall be reduced by any period determined under subsection (d)(2)(B) during which the applicant for the patent extension did not act with due diligence during such period of the regulatory review period;
(2) after any reduction required by paragraph (1), the period of extension shall include only one-half of the time remaining in the periods described in paragraphs (1)(B)(i), (2)(B)(i), (3)(B)(i), (4)(B)(i), and (5)(B)(i) of subsection (g);
(3) if the period remaining in the term of a patent after the date of the approval of the approved product under the provision of law under which such regulatory review occurred when added to the regulatory review period as revised under paragraphs (1) and (2) exceeds fourteen years, the period of extension shall be reduced so that the total of both such periods does not exceed fourteen years, and
(4) in no event shall more than one patent be extended under subsection (e)(i) for the same regulatory review period for any product.
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(g) For purposes of this section, the term “regulatory review period” has the following meanings:
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(6) A period determined under any of the preceding paragraphs is subject to the following limitations:
(A) If the patent involved was issued after the date of the enactment of this section, the period of extension determined on the basis of the regulatory review period determined under any such paragraph may not exceed five years.
(B) If the patent involved was issued before the date of the enactment of this section and —
(i) no request for an exemption described in paragraph (1)(B) or (4)(B) was submitted and no request for the authority described in paragraph (5)(B) was submitted,
(ii) no major health or environment effects test described in paragraph (2)(B) or (4)(B) was initiated and no petition for a regulation or application for registration described in such paragraph was submitted, or
(iii) no clinical investigation described in paragraph (3) was begun or product development protocol described in such paragraph was submitted, before such date for the approved product the period of extension determined on the basis of the regulatory review period determined under any such paragraph may not exceed five years.
(C) If the patent involved was issued before the date of the enactment of this section and if an action described in subparagraph (B) was taken before the date of enactment of this section with respect to the approved product and the commercial marketing or use of the product has not been
approved before such date, the period of extension determined on the basis of the regulatory review period determined under such paragraph may not exceed two years or in the case of an approved product which is a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act or the Virus-Serum-Toxin Act), three years.
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After reviewing the information provided by the regulatory agency, if the Office determines the patent to be eligible for extension, the Office then calculates the length of extension for which the patent is eligible under the appropriate statutory provisions (35 U.S.C. 156(c); 37 CFR 1.750). The length of extension is subject to the limitations of 35 U.S.C. 156(c)(3) and 35 U.S.C. 156(g)(6). A Notice of Final Determination is mailed to applicant which states the length of extension for which the application has been determined to be eligible and the calculations used to determine the length of extension. Recently mailed Notices of Final Determination are posted in the Freedom of Information (FOIA) section of the USPTO website (www.uspto.gov) with other Decisions of the Director. The notice provides a period, usually one month, in which the applicant can request reconsideration of any aspect of the Office determination as to eligibility or the length of extension for which the application has been found eligible.
If the application has been determined to be ineligible for patent term extension, an appropriate Notice of Final Determination is mailed to applicant which dismisses the application and sets forth the basis for the dismissal. The applicant is given a period, usually one month, in which to seek reconsideration of the determination.
If the patent is found to be eligible for extension, the Notice of Final Determination may include text similar to the following:
A determination has been made that U.S. Patent No. ___, which claims the human drug ___, is eligible for patent term extension under 35 U.S.C. 156. The period of extension has been determined to be ___.
A single request for reconsideration of this final determination as to the length of extension of the term of the patent may be
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made if filed within one month of the date of this notice. Extensions of time under 37 CFR 1.136(a) are not applicable to this time period. In the absence of such request for reconsideration, the Director will issue a certificate of extension, under seal, for a period of ___ days.
The period of extension has been calculated using the FDA determination of the length of the regulatory review period published in the Federal Register of ___. Under 35 U.S.C. 156(c)
Period of Extension = RRP - PGRRP - DD - ½ (TP - PGTP)1
1Consistent with 35 U.S.C. 156(c), “RRP” is the total number of days in the regulatory review period, “PGRRP” is the number of days of the RRP which were on and before the date on which the patent issued, “DD” is the number of days of the RRP that the applicant did not act with due diligence, “TP” is the testing phase period described in paragraphs (1)(B)(i), (2)(B)(i), (3)(B)(i), (4)(B)(i), and (5)(B)(i) of subsection (g) of 35 U.S.C. 156, and “PGTP” is the number of days of the TP which were on and before the date on which the patent issued, wherein half days are ignored for purposes of the subtraction of ½ (TP - PGTP).
Since the regulatory review period began __, before the patent issued ___, only that portion of the regulatory review period occurring after the date the patent issued has been considered in the above determination of the length of the extension period 35 U.S.C. 156(c). (From __ to ___ is___ days; this period is subtracted for the number of days occurring in the testing phase according to the FDA determination of the length of the regulatory review period.) No determination of a lack of due diligence under 35 U.S.C. 156(c)(1) was made.
The 14 year exception of 35 U.S.C. 156(c)(3) operates to limit the term of the extension in the present situation because it provides that the period remaining in the term of the patent measured from the date of approval of the approved product (___) when added to the period of extension calculated above (___ days) cannot exceed fourteen years. The period of extension is thus limited to ___, by operation of 35 U.S.C. 156(c)(3). Since the patent term (35 U.S.C. 154) would expire on ___, the period of extension is the number of days to extend the term of the patent from its expiration date to and including ___, or ___ days.
The limitations of 35 U.S.C. 156(g)(6) do not operate to further reduce the period of extension determined above.
See MPEP § 2759 for further information pertaining to the issuance of a certificate of extension.
A patent term extension generally extends the patent from its “original expiration date,” as defined by 35 U.S.C. 154 to include extension under former 35 U.S.C. 154(b) (for applications filed between June 8, 1995 and May 28, 2000) and patent term
adjustment under 35 U.S.C. 154(b) (for applications filed on or after May 29, 2000).
No certificate or extension will be issued if the term of a patent cannot be extended, even though the patent is otherwise determined to be eligible for extension. In such situations the final determination would issue indicating that no certificate will issue.
I. CALCULATION OF PATENT TERM EXTENSION
The procedure for calculating the length of the patent term extension is set forth for human drugs, antibiotic drugs, and human biological products in 37 CFR 1.775; for food or color additives in 37 CFR 1.776; for medical devices in 37 CFR 1.777; for animal drug products in 37 CFR 1.778; and for veterinary biological products in 37 CFR 1.779. The length of patent term extension is the length of the regulatory review period as determined by the Secretary of Health and Human Services or the Secretary of Agriculture, but reduced, where appropriate, by the time periods provided in 37 CFR 1.775 - 1.779. The Office will rely on the Secretary’s determination of the length of the regulatory review period when calculating the length of the extension period under 37 CFR 1.775 - 1.779.
Any part of the regulatory review period which occurs before the patent was granted will not be counted toward patent term extension. Any period in which the marketing applicant failed to exercise due diligence, thereby unnecessarily adding to the length of the regulatory review period after the patent issued, will not be considered in determining the length of the extension period. In making the calculation of the extension period, half days will be ignored and thus will not be subtracted from the regulatory review period.
For products other than animal drug or veterinary biological products, the calculated extension period cannot exceed any of the following statutory maximum periods of extension:
(A) If the period remaining in the term of the patent after the date of approval of the approved product when added to the calculated regulatory review period exceeds fourteen years, the period of
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extension shall be reduced so that the total of both such periods does not exceed fourteen years;
(B) If the patent involved was issued after September 24, 1984, (the date of enactment of the statute), the calculated period of extension may not exceed five years;
(C) If the patent involved was issued before September 24, 1984, (the date of enactment of the statute), and the regulatory review period proceeding started after this date, the calculated period of extension may not exceed five years; and
(D) If the patent involved was issued before September 24, 1984, (the date of enactment of the statute), and the regulatory review period proceeding started before this date, and the commercial marketing or use of the product has been approved after such date, the calculated period of extension may not exceed two years.
For animal drug or veterinary biological products, the calculated extension period cannot exceed any of the following statutory maximum periods of extension:
(A) If the period remaining in the term of the patent after the date of approval of the approved product when added to the calculated regulatory review period exceeds fourteen years, the period of extension shall be reduced so that the total of both such periods does not exceed fourteen years;
(B) If the patent involved was issued after November 16, 1988, the calculated period of extension may not exceed five years;
(C) If the patent involved was issued before November 16, 1988, and the regulatory review period proceeding started after this date, the calculated period of extension may not exceed five years; and
(D) If the patent involved was issued before November 16, 1988, and the regulatory review period proceeding started before this date, and the commercial marketing or use of the product has been approved after such date, the calculated period of extension may not exceed three years.
The patent term extension of a patent that issued before September 24, 1984, where the regulatory review period began and ended before September 24, 1984, would only be a function of the regulatory
review period and the fourteen-year limit, and may be extended for more than five years. Hoechst Aktiengesellschaft v. Quigg, 917 F2d 522, 525, 16 USPQ2d 1549, 1551 (Fed. Cir. 1990).
2759 Certificate of Extension of Patent Term [R-11.2013]
35 U.S.C. 156 Extension of patent term.
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(e)(1) A determination that a patent is eligible for extension may be made by the Director solely on the basis of the representations contained in the application for the extension. If the Director determines that a patent is eligible for extension under subsection (a) and that the requirements of paragraphs (1) through (4) of subsection (d) have been complied with, the Director shall issue to the applicant for the extension of the term of the patent a certificate of extension, under seal, for the period prescribed by subsection (c). Such certificate shall be recorded in the official file of the patent and shall be considered as part of the original patent.
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37 CFR 1.780 Certificate or order of extension of patent term.
If a determination is made pursuant to § 1.750 that a patent is eligible for extension and that the term of the patent is to be extended, a certificate of extension, under seal, or an order granting interim extension under 35 U.S.C. 156(d)(5), will be issued to the applicant for the extension of the patent term. Such certificate or order will be recorded in the official file of the patent and will be considered as part of the original patent. Notification of the issuance of the certificate or order of extension will be published in the Official Gazette of the United States Patent and Trademark Office. Notification of the issuance of the order granting an interim extension under 35 U.S.C. 156(d)(5), including the identity of the product currently under regulatory review, will be published in the Official Gazette of the United States Patent and Trademark Office and in the Federal Register. No certificate of, or order granting, an extension will be issued if the term of the patent cannot be extended, even though the patent is otherwise determined to be eligible for extension. In such situations, the final determination made pursuant to § 1.750 will indicate that no certificate or order will issue.
Once a determination is made pursuant to 37 CFR 1.750 that a patent is eligible for extension of its term, a certificate of extension, under seal, will be issued to the patent owner at the correspondence address specified in the application for patent term extension. Following the one-month period provided in the Notice of Final Determination, and where an extension is appropriate, the Certificate of Extension is signed by the Director. The original certificate is
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mailed or delivered to the applicant and a copy is sent to the regulatory agency. A copy of the certificate is placed in the two files (official file/patent file and public file) maintained for the patent term extension application.
Upon issuance of the certificate of extension, a notice is published in the Official Gazette. A sample Official Gazette Notice Follows:
PATENT TERM EXTENDED UNDER 35 U.S.C. 156
A Certificate extending the term of the following patent was issued on __.
U.S. Patent No.: __ Granted: __; Applicant: __; Owner of Record: __; Title: ___; Classification: __ Product Trade Name: __; Original Expiration Date: __; Term Extended: ____; Extended Expiration Date: __.
All original papers from the application for patent term extension in the official file are transferred to the official patent file of the subject patent and become a part of the permanent record. A copy of the certificate of extension of patent term is added to the patent electronic database as part of the patent record in the same manner as is a certificate of correction or a terminal disclaimer. The patent is also added to the list of patents extended under 35 U.S.C. 156, a copy of which is posted on the USPTO website (www.uspto.gov) and which is also available in the “Patent Term Extension (Restoration)” section of the electronic FOIA Reading Room of USPTO’s website at w w w. u s p t o . g o v / i p / b o a r d s / f o i a _ r r / resources/patents/pte.jsp.
2760 Trade Secret, Confidential, and Protective Order Material [R-8.2012]
There is no provision in the statute or the rules for withholding from the public any information that is submitted to the Office or the regulatory agency relating to an application for patent term extension. While one submitting such materials to the Office in relation to a pending application for patent term extension must generally assume that such materials will be made of record in the file and be made public, the Office is not unmindful of the difficulties this sometimes imposes. Proprietary or trade secret information should be submitted generally in
accordance with the procedures set forth in MPEP § 724.02. Identification of the propriety or trade secret material should be made by page, line, and word, as necessary. The Office will not in the first instance undertake the task of determining the precise material in the application which is proprietary or trade secret information. Only the applicant is in a position to make this determination. See In re Schering-Plough Corp., 1 USPQ2d 1926, 1926 (Comm’r Pat. & Tm. 1986).
The information will not be made public as part of the patent file before a certificate of patent extension is issued. Should the Office receive a Freedom of Information Act (FOIA) request for the material, the applicant will be provided notice and an opportunity to substantiate its claim that the material is proprietary before the Office determines whether disclosure of the material is required under the FOIA. If such information was material to a determination of eligibility or any other Office responsibility under 35 U.S.C. 156, it will be made public at the time the certificate of extension is issued. Otherwise, if a suitable petition to expunge is filed before the issuance of the certificate, the trade secret or confidential information will be expunged from the file and returned to the patent term extension applicant. If a petition to expunge is not filed prior to the issuance of the certificate, all of the information will be open to public inspection.
2761 Multiple Applications for Extension of Term of the Same Patent or of Different Patents for the Same Regulatory Review Period for a Product [R-08.2012]
35 U.S.C. 156 Extension of patent term.
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(c)(4) in no event shall more than one patent be extended under subsection (e)(i) for the same regulatory review period for any product.
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37 CFR 1.785 Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product.
(a) Only one patent may be extended for a regulatory review period for any product § 1.720(h). If more than one application for extension of the same patent is filed, the certificate of extension of patent term, if appropriate, will be issued based upon the first filed application for extension.
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(b) If more than one application for extension is filed by a single applicant which seeks the extension of the term of two or more patents based upon the same regulatory review period, and the patents are otherwise eligible for extension pursuant to the requirements of this subpart, in the absence of an election by the applicant, the certificate of extension of patent term, if appropriate, will be issued upon the application for extension of the patent term having the earliest date of issuance of those patents for which extension is sought.
(c) If an application for extension is filed which seeks the extension of the term of a patent based upon the same regulatory review period as that relied upon in one or more applications for extension pursuant to the requirements of this subpart, the certificate of extension of patent term will be issued on the application only if the patent owner or its agent is the holder of the regulatory approval granted with respect to the regulatory review period.
(d) An application for extension shall be considered complete and formal regardless of whether it contains the identification of the holder of the regulatory approval granted with respect to the regulatory review period. When an application contains such information, or is amended to contain such information, it will be considered in determining whether an application is eligible for an extension under this section. A request may be made of any applicant to supply such information within a non-extendable period of not less than one month whenever multiple applications for extension of more than one patent are received and rely upon the same regulatory review period. Failure to provide such information within the period for reply set shall be regarded as conclusively establishing that the applicant is not the holder of the regulatory approval.
(e) Determinations made under this section shall be included in the notice of final determination of eligibility for extension of the patent term pursuant to § 1.750 and shall be regarded as part of that determination.
Only one patent may be extended for a regulatory review period for any product. If more than one application for extension is filed for a single patent by different applicants, the certificate of extension of the term of the patent, if appropriate, would be issued based upon the first filed application for extension of patent term. If a single applicant files more than one application for patent term extension for a single patent based upon the regulatory review period of different products, then the final determination under 37 CFR 1.750 will provide a period of time (usually one month) for the patent owner to elect the product for which extension is desired. An express withdrawal of the applications for extension of the nonelected products should accompany the election. The final determination will indicate that if the patent owner fails to elect a single product within the set time period, the Office will issue a certificate of extension for the patent for a specified one of the products.
If more than one application for extension is filed by a single applicant for the extension of the terms of different patents based upon the same regulatory review period for a product, the certificate of extension will be issued on the application for extension of the patent having the earliest date of issuance of those for which extension is sought unless all but one application for extension is voluntarily withdrawn by the applicant. When plural patents are found to be eligible for patent term extension based on the same regulatory review of a product, the final determination under 37 CFR 1.750 will provide a period of time (usually one month) for the patent owner to elect the patent for which extension is desired. An express withdrawal of the application(s) for extension of the nonelected patent(s) should accompany the election. A failure to elect within the set time period will result in issuance of a certificate of extension for the patent having the earliest date of issue.
If applications for extension are filed by different applicants for the extension of the terms of different patents based upon the same regulatory review period of a product, the certificate of extension will be issued on the application of the holder of the regulatory approval (marketing applicant). If the marketing applicant is not an applicant for extension, the certificate of extension will issue to the applicant for extension which holds an express authorization from the marketing applicant to rely upon the regulatory review period as the basis for the application for extension. See also 37 CFR 1.785(d).
2762 Duty of Disclosure in Patent Term Extension Proceedings [R-08.2012]
37 CFR 1.765 Duty of disclosure in patent term extension proceedings.
(a) A duty of candor and good faith toward the Patent and Trademark Office and the Secretary of Health and Human Services or the Secretary of Agriculture rests on the patent owner or its agent, on each attorney or agent who represents the patent owner and on every other individual who is substantively involved on behalf of the patent owner in a patent term extension proceeding. All such individuals who are aware, or become aware, of material information adverse to a determination of entitlement to the extension sought, which has not been previously made of record in the patent term extension proceeding must bring such information to the attention of the Office or the Secretary, as appropriate, in accordance with paragraph (b) of this section, as soon as it is practical to do so after the individual becomes aware of the information.
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Information is material where there is a substantial likelihood that the Office or the Secretary would consider it important in determinations to be made in the patent term extension proceeding.
(b) Disclosures pursuant to this section must be accompanied by a copy of each written document which is being disclosed. The disclosure must be made to the Office or the Secretary, as appropriate, unless the disclosure is material to determinations to be made by both the Office and the Secretary, in which case duplicate copies, certified as such, must be filed in the Office and with the Secretary. Disclosures pursuant to this section may be made to the Office or the Secretary, as appropriate, through an attorney or agent having responsibility on behalf of the patent owner or its agent for the patent term extension proceeding or through a patent owner acting on his or her own behalf. Disclosure to such an attorney, agent or patent owner shall satisfy the duty of any other individual. Such an attorney, agent or patent owner has no duty to transmit information which is not material to the determination of entitlement to the extension sought.
(c) No patent will be determined eligible for extension and no extension will be issued if it is determined that fraud on the Office or the Secretary was practiced or attempted or the duty of disclosure was violated through bad faith or gross negligence in connection with the patent term extension proceeding. If it is established by clear and convincing evidence that any fraud was practiced or attempted on the Office or the Secretary in connection with the patent term extension proceeding or that there was any violation of the duty of disclosure through bad faith or gross negligence in connection with the patent term extension proceeding, a final determination will be made pursuant to § 1.750 that the patent is not eligible for extension.
*****
A duty of candor and good faith toward the USPTO, the Secretary of Health and Human Services, and the Secretary of Agriculture rests on the patent owner or its agent, on each attorney or agent who represents the patent owner, and on every other individual who is substantively involved on behalf of the patent owner in a patent term extension proceeding. All such individuals who are aware, or become aware, of material information adverse to a determination of entitlement to the extension sought, which has not been previously made of record in the patent term extension proceeding, must bring such information to the attention of the Office or the Secretary, as appropriate, as soon as it is practicable to do so after the individual becomes aware of the information. Information is “material” when there is a substantial likelihood that the Office or the Secretary would consider it important in determinations to be made in the patent term extension proceeding.Any such material information should be submitted to the Director of the United
States Patent and Trademark Office, the Secretary of Health and Human Services, or the Secretary of Agriculture, as appropriate, accompanied by a copy of each written document being disclosed. The information may be submitted through a patent attorney or agent.
A determination of eligibility for an extension or the issuance of a certificate will not be made if clear and convincing evidence of fraud or attempted fraud on the Office or a Secretary is determined to be present, or the duty of disclosure is determined to have been violated through bad faith or gross negligence in connection with the patent term extension proceeding. Since the determination as to whether a patent is eligible for extension may be made solely on the basis of the representations made in the application for extension, a final determination to refuse a patent term extension because of fraud or a violation of the duty of disclosure is expected to be rare. See MPEP § 2010.
2763 Limitation of Third Party Participation [R-08.2012]
37 CFR 1.765 Duty of disclosure in patent term extension proceedings.
*****
(d) The duty of disclosure pursuant to this section rests on the individuals identified in paragraph (a) of this section and no submission on behalf of third parties, in the form of protests or otherwise, will be considered by the Office. Any such submissions by third parties to the Office will be returned to the party making the submission, or otherwise disposed of, without consideration by the Office.
Although the statute specifically provides for public input into the determination of the regulatory review period, i.e., the filing of a due diligence petition before the regulatory agency, no such provision was made for proceedings before the Office. Since applicant already has a duty of disclosure to both the Office and the regulatory agency, and Congress expected that it would be an administratively simple proceeding, no input from third parties is permitted. Absent an invitation from the Director, any such submission would be inappropriate. Accordingly, 37 CFR 1.765(d) precludes submissions to the Office by or on behalf of third parties, thereby making patent term extension proceedings in the Office an ex parte matter between the patent owner or its
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§ 2763PATENT TERMS AND EXTENSIONS
agent and the Office. Submissions by third parties not requested by the Office will be returned, or otherwise disposed of, without consideration. See In re Dubno, 12 USPQ2d 1153, 1154 (Comm’r Pat. & Tm. 1989).
2764 Express Withdrawal of Application for Extension of Patent Term [R-08.2012]
37 CFR 1.770 Express withdrawal of application for extension of patent term.
An application for extension of patent term may be expressly withdrawn before a determination is made pursuant to § 1.750 by filing in the Office, in duplicate, a written declaration of withdrawal signed by the owner of record of the patent or its agent. An application may not be expressly withdrawn after the date permitted for reply to the final determination on the application. An express withdrawal pursuant to this section is effective when acknowledged in writing by the Office. The filing of an express withdrawal pursuant to this section and its acceptance by the Office does not entitle applicant to a refund of the filing fee (§ 1.20(j)) or any portion thereof.
Any request for withdrawal of an application for extension of patent term after a determination has been made pursuant to 37 CFR 1.750 must be submitted on or before the date permitted for reply to the final determination, and be accompanied by a petition under 37 CFR 1.182 with the appropriate petition filing fee.
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Chapter 2800 Supplemental Examination
Introduction2801 Supplemental Examination2802 Persons Who May File a Request for Supplemental Examination
2803
Inquiries from Persons Other Than the Patent Owner
2803.01
Public Access2803.02 Representative of Patent Owner2804
Withdrawal of Attorney or Agent2804.01 Correspondence with Patent Owner; Patent Owner Address
2805
How to File Papers in a Supplemental Examination Proceeding and in Any
2806
Resulting Ex Parte Reexamination Proceeding Format of Papers Filed in a Supplemental Examination Proceeding
2807
Time for Requesting Supplemental Examination
2808
Items of Information2809 Information Relating to the Correction of Factual Information
2809.01
Fees Due on Filing a Supplemental Examination Request
2810
Document Size Fees2810.01 Content of Request for Supplemental Examination
2811
Detailed Explanation of the Relevance and Manner of Applying Each Item of Information
2811.01
Optional Content2811.02 Initial Processing of a Request for Supplemental Examination
2812
Filing Date of the Request2812.01 Noncompliant Request for Supplemental Examination
2812.02
Corrected Request2812.03 Termination Due to Defective/Improper Request or Corrected Request
2812.04
Handling of Papers, Other Than a Request, in a Supplemental Examination Proceeding
2813
Amendments2813.01 Interviews Are Prohibited2814 Time for Deciding Request2815 Determination on the Request2816
Claims Considered in Making the Determination
2816.01
Criteria for Making the Determination2816.02 Content of the Determination2816.03
Effect of the Determination2816.04 Conclusion of Supplemental Examination
2817
Processing and Electronic Issuance of Supplemental Examination Certificate
2817.01
Procedure after Conclusion of Supplemental Examination
2818
After Determination Finding a Substantial New Question of Patentability
2818.01
After Determination Finding No Substantial New Question of Patentability
2818.02
Discovery of Possible Material Fraud2819 Submission of Notification of Other Prior or Concurrent Post-Patent Office Proceedings
2820
Multiple Post-Patent Office Proceedings2821 Assignment of the Supplemental Examination Proceeding
2822
Differences Between an Ex Parte Reexamination Proceeding Ordered
2823
Pursuant to 35 U.S.C. 257 and an Ex Parte Reexamination Proceeding Ordered Pursuant to 35 U.S.C. 302
2801 Introduction [R-11.2013]
Supplemental examination became available on September 16, 2012, as a result of new section 257 of Title 35, United States Code, which was added by Public Law 112-29, enacted on September 16, 2011, known as the Leahy-Smith America Invents Act (AIA). Supplemental examination provisions of the AIA provide a patent owner with a mechanism to request that the Office consider, reconsider, or correct information believed to be relevant to the patent. The rules of practice in patent cases relating to supplemental examination were promulgated on August 14, 2012, at 77 Fed. Reg. 48828-48853.
Unlike ex parte reexamination practice, the information that the patent owner may request to be considered, reconsidered, or corrected in a supplemental examination proceeding is not limited to patents and printed publications. The "information" may include any information that the patent owner believes to be relevant to the patent. For example, the information may include not only
Rev. 07.2015, October 20152800-1
a patent or a journal article, but also a sales invoice, or a transcript of an audio or video recording. In addition, the information submitted as part of a request for supplemental examination may involve any ground of patentability, such as, for example, patent eligible subject matter, anticipation, public use or sale, obviousness, written description, enablement, indefiniteness, and double-patenting.
The flowchart below shows the general procedure for a supplemental examination proceeding, and for an ex parte reexamination proceeding initiated/ordered as a result of a supplemental examination proceeding.
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§ 2801SUPPLEMENTAL EXAMINATION
2802 Supplemental Examination [R-11.2013]
35 U.S.C. 257 Supplemental examinations to consider, reconsider, or correct information.
(a) REQUEST FOR SUPPLEMENTAL EXAMINATION.—A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability.
(b) REEXAMINATION ORDERED.—If the certificate issued under subsection (a) indicates that a substantial new question of patentability is raised by 1 or more items of information in the request, the Director shall order reexamination of the patent. The reexamination shall be conducted according to procedures established by chapter 30, except that the patent owner shall not have the right to file a statement pursuant to section 304. During the reexamination, the Director shall address each substantial new question of patentability identified during the supplemental examination, notwithstanding the limitations in chapter 30 relating to patents and printed publication or any other provision of such chapter.
(c) EFFECT.—
(1) IN GENERAL.—A patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent. The making of a request under subsection (a), or the absence thereof, shall not be relevant to enforceability of the patent under section 282.
(2) EXCEPTIONS.—
(A) PRIORALLEGATIONS.—Paragraph (1) shall not apply to an allegation pled with particularity in a civil action, or set forth with particularity in a notice received by the patent owner under section 505(j)(2)(B)(iv)(II) of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355(j)(2)(B)(iv)(II)), before the date of a supplemental examination request under subsection (a) to consider, reconsider, or correct information forming the basis for the allegation.
(B) PATENT ENFORCEMENT ACTIONS.—In an action brought under section 337(a) of the Tariff Act of 1930 (19 U.S.C. 1337(a)), or section 281 of this title, paragraph (1) shall not apply to any defense raised in the action that is based upon information that was considered, reconsidered, or corrected pursuant to a supplemental examination request under subsection (a), unless the supplemental examination, and any reexamination ordered pursuant to the request, are concluded before the date on which the action is brought.
(d) FEES AND REGULATIONS.—
(1) FEES.—The Director shall, by regulation, establish fees for the submission of a request for supplemental examination of a patent, and to consider each item of information submitted in the request. If reexamination is ordered under subsection (b), fees established and applicable to ex parte reexamination proceedings under chapter 30 shall be paid, in addition to fees applicable to supplemental examination.
(2) REGULATIONS.—The Director shall issue regulations governing the form, content, and other requirements of requests for supplemental examination, and establishing procedures for reviewing information submitted in such requests.
(e) FRAUD.—If the Director becomes aware, during the course of a supplemental examination or reexamination proceeding ordered under this section, that a material fraud on the Office may have been committed in connection with the patent that is the subject of the supplemental examination, then in addition to any other actions the Director is authorized to take, including the cancellation of any claims found to be invalid under section 307 as a result of a reexamination ordered under this section, the Director shall also refer the matter to the Attorney General for such further action as the Attorney General may deem appropriate. Any such referral shall be treated as confidential, shall not be included in the file of the patent, and shall not be disclosed to the public unless the United States charges a person with a criminal offense in connection with such referral.
(f) RULE OF CONSTRUCTION.—Nothing in this section shall be construed—
(1) to preclude the imposition of sanctions based upon criminal or antitrust laws (including section 1001(a) of title 18, the first section of the Clayton Act, and section 5 of the Federal Trade Commission Act to the extent that section relates to unfair methods of competition);
(2) to limit the authority of the Director to investigate issues of possible misconduct and impose sanctions for misconduct in connection with matters or proceedings before the Office; or
(3) to limit the authority of the Director to issue regulations under chapter 3 relating to sanctions for misconduct by representatives practicing before the Office.
35 U.S.C. 257(a) provides that supplemental examination may be requested by the patent owner to consider, reconsider, or correct information believed to be relevant to the patent in accordance with requirements established by the Office. The information presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability under 35 U.S.C. 101 and 112. Within three months of the receipt of a request for supplemental examination (meeting the requirements of 35 U.S.C. 257 including the requirements established by the Office), the Office shall conduct
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2802
a supplemental examination and conclude the supplemental examination proceeding with the issuance of a supplemental examination certificate. The supplemental examination certificate shall indicate whether the items of information presented in the request raise a substantial new question of patentability.
If the supplemental examination certificate, issued under 35 U.S.C. 257(a), indicates that a substantial new question of patentability is raised by one or more items of information in the request for supplemental examination, the supplemental examination certificate will indicate that ex parte reexamination will be ordered by the Office. The resulting ex parte reexamination proceeding will be conducted according to ex parte reexamination procedures, except that the patent owner does not have the right to file a statement pursuant to 35 U.S.C. 304, and the basis of the ex parte reexamination is not limited to patents and printed publications. Each substantial new question of patentability identified during the supplemental examination proceeding will be addressed by the Office during the resulting ex parte reexamination proceeding. See 35 U.S.C. 257(b).
35 U.S.C. 257(c) specifies the effect of a supplemental examination under 35 U.S.C. 257(a) and any resulting ex parte reexamination under 35 U.S.C. 257(b)on the enforceability of the patent.
35 U.S.C. 257(d)(1) provides the Director with authority to establish fees for filing a request for supplemental examination and for considering each item of information submitted with the request. If ex parte reexamination is ordered under 35 U.S.C.
257(b), 35 U.S.C. 257(d)(1) also establishes that the fees applicable to ex parte reexamination must be paid in addition to the fees for supplemental examination. 35 U.S.C. 257(d)(2) provides the Director with authority to establish regulations governing the requirements of a request for supplemental examination, including its form and content.
In accordance with 35 U.S.C. 257(e), if the Office becomes aware, during the course of a supplemental examination or ex parte reexamination ordered under 35 U.S.C. 257, that a material fraud on the
Office may have been committed in connection with the patent that is the subject of the supplemental examination, the Office shall refer the matter to the U.S. Attorney General, in addition to any other actions the Office is authorized to take, including the cancellation of any claims found to be invalid under 35 U.S.C. 307 as a result of ex parte reexamination ordered under 35 U.S.C. 257. The Office anticipates that such instances will be rare. The Office regards the term “material fraud” in 35 U.S.C. 257(e) to be narrower in scope than inequitable conduct as defined by the U.S. Court of Appeals for the Federal Circuit in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011).
Nothing in 35 U.S.C. 257 precludes the imposition of sanctions based upon criminal or antitrust laws (including 18 U.S.C. 1001(a)), the first section of the Clayton Act, and section 5 of the Federal Trade Commission Act to the extent that section relates to unfair methods of competition. See 35 U.S.C. 257(f)(1). Section 12 of the AIA sets forth rules of construction, providing that 35 U.S.C. 257 shall not be construed to limit the authority of the Office to investigate issues of possible misconduct and impose sanctions for misconduct involving matters or proceedings before the Office, or to issue regulations under 35 U.S.C. 32 or 35 U.S.C. 33 relating to sanctions for misconduct by patent practitioners. See 35 U.S.C. 257(f)(2) and 35 U.S.C. (f)(3).
2803 Persons Who May File a Request for Supplemental Examination [R-11.2013]
37 CFR 1.601 Filing of papers in supplemental examination.
(a) A request for supplemental examination of a patent must be filed by the owner(s) of the entire right, title, and interest in the patent.
*****
Only a patent owner may file a request for supplemental examination of a patent. See 35 U.S.C. 257(a) and 37 CFR 1.601(a). The statute does not authorize the Office to accept a request for supplemental examination from a party who is not the patent owner. For example, a party who merely states that it is an exclusive licensee or that it is a person with sufficient proprietary interest under 35
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§ 2803SUPPLEMENTAL EXAMINATION
U.S.C. 118 is not eligible to file a request for supplemental examination.
The request must be filed by the owner(s) of the entire right, title, and interest in the patent. A request for supplemental examination must include an identification of the owner(s) of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner in compliance with 37 CFR 3.73(c) establishing the entirety of the ownership in the patent requested to be examined. See 37 CFR 1.610(b)(9). This is because the terms of a patent may be changed (e.g., by cancellation or amendment of the claims) during any ex parte reexamination proceeding that may be ordered as a result of the supplemental examination proceeding, and this change must be binding on all parties having an ownership interest in the patent. Furthermore, the Office has consistently required that all parties having an interest in a patent are deemed “a patent owner” as a composite entity and must act together in proceedings before the Office. See MPEP §§ 301 and 324. This is also consistent with ex parte reexamination practice, which requires a patent owner requester of an ex parte reexamination to comply with the provisions of 37 CFR 3.71 and 37 CFR 3.73 for establishing an assignee’s right to take action when submitting a power of attorney. See MPEP § 2222.
The Office may, under rare circumstances, permit less than all of the owners to file a request for supplemental examination if a grantable petition under 37 CFR 1.183 requesting waiver of the provisions of 37 CFR 3.71 and 37 CFR 3.73(c) is filed. For example, such a petition may be filed in the case of a deceased or legally incapacitated joint owner, or where the joint owner refuses to join or cannot be found after diligent effort. See MPEP § 409 et seq. In the case of a deceased joint owner, the heirs, administrators, or executors of the joint owner may be permitted to join in filing the request for supplemental examination. If one of the owners is legally incapacitated, the legal representative of the joint owner may be permitted to join in filing the request for supplemental examination. If a joint owner refuses to sign or cannot be found or reached after diligent effort, the remaining owners must include, in the petition, proof of the pertinent facts, a showing that such action is necessary to preserve
the rights of the parties or to prevent irreparable damage, and the last known address of all of the joint owners. Finally, if an owner of all or a portion of the entire right, title, and interest of the patent is an organization that is dissolved, the Office may require that a determination of the ownership of the patent be obtained from a court of competent jurisdiction prior to accepting and according a filing date to a request for supplemental examination.
A legal representative of the patent owner may file a request for supplemental examination on behalf of the patent owner. See MPEP § 2804.
2803.01 Inquiries from Persons Other Than the Patent Owner [R-11.2013]
37 CFR 1.601 Filing of papers in supplemental examination. *****
(b) Any party other than the patent owner ( i.e., any third party) is prohibited from filing papers or otherwise participating in any manner in a supplemental examination proceeding.
*****
37 CFR 1.601(b) prohibits third parties from filing papers or otherwise participating in any manner in a supplemental examination proceeding. In addition, because only the patent owner can file the request for supplemental examination, third party participation is prohibited in any ex parte reexamination ordered under 35 U.S.C. 257 and 37 CFR 1.625, pursuant to ex parte reexamination practice.
Office personnel, including both the examining and the technical support staff, should not enter into a discussion with, or answer inquiries from, third parties (i.e., parties who are not the patent owner) regarding a supplemental examination proceeding. A party who is not the patent owner should be referred to the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) in the art unit of the assigned examiner. Only questions on strictly general procedural matters regarding supplemental examination, i.e., not directed to any specific supplemental examination proceeding, may be discussed by the CRU SPRS with that party.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2803.01
Employees of the Office, particularly CRU examiners who have conducted a supplemental examination proceeding that has been concluded, should not discuss or answer inquiries from any person outside the Office as to whether a certain reference or other particular evidence was considered during the proceeding, and whether that reference, or other evidence, would have been determined to raise a substantial new question of patentability, had it been considered during the proceeding. Patent practitioners (or other members of the public) must not address improper inquiries to members of the patent examining corps and to the Office as a whole. Inquiries from members of the public relating to the matters discussed above must, of necessity, be refused and this refusal should not be considered discourteous or an expression of opinion by the Office as to the validity, patentability, or enforceability of the patent.
The definitions set forth in 37 CFR 104.1 and the exceptions in 37 CFR 104.21 are applicable to this section.
2803.02 Public Access [R-11.2013]
The Office does not intend to provide the public with access, by Public PAIR or otherwise, to a request for supplemental examination, or to any papers or information submitted as part of or accompanying the request, until the request is granted a filing date by the Office.
After a filing date has been accorded the request, supplemental examination files are open to inspection by the general public by way of Public PAIR which is available on the USPTO's Internet site, www.uspto.gov. See MPEP § 2232 (access guidance for PAIR). Copies of non-patent literature (NPL) cited in the proceeding, however, will not be available via Public PAIR and must be ordered as set forth below.
If a copy of the supplemental examination file or NPL cited in the proceeding is desired, it may be ordered from the Document Services Division of the Office of Public Records (OPR) upon payment of the applicable fee after the request for supplemental examination has been granted a filing date.
Orders for such copies must indicate the control number of the proceeding and should be addressed as follows:
Mail Stop Document Services Director of the U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
In addition, after the request for supplemental examination has been granted a filing date, a request for a copy of the file may also be sent via email to: dsd@uspto.gov, and the fee for the copy may be charged to a credit card or deposit account.
2804 Representative of Patent Owner [R-11.2013]
Where an attorney or agent files a request on behalf of a patent owner, he or she may act under a power of attorney under 37 CFR 1.32, or in a representative capacity under 37 CFR 1.34. In order to act in a representative capacity under 37 CFR 1.34, an attorney or agent must provide his or her registration number, name, and signature. In order to act under a power of attorney from a patent owner, an attorney or agent must be provided with a power of attorney by the patent owner. Pursuant to 37 CFR 1.32(c) a “power of attorney may only name as representative” either one or more inventors or registered patent practitioners. Thus, an attorney or agent representing a patent owner must be a registered patent practitioner. A patent owner may not be represented during a supplemental examination proceeding or any resulting ex parte reexamination proceeding by an attorney or other person who is not registered to practice before the Office.
Any correspondence from the Office will be directed to the patent owner at the address indicated in the file of the patent for which supplemental examination is requested, pursuant to 37 CFR 1.33(c), regardless of the address of the person filing the request . If the patent owner wishes the Office to direct correspondence regarding the supplemental examination proceeding to an address other than the official correspondence address of record in the file of the patent, then the patent owner must file a change of correspondence address in the file of the patent. A change of correspondence address should also be filed in the
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§ 2804SUPPLEMENTAL EXAMINATION
supplemental examination proceeding. See MPEP § 2805.
2804.01 Withdrawal of Attorney or Agent [R-11.2013]
For a practitioner to withdraw from representation in a patent, supplemental examination proceeding, or a reexamination proceeding, the Office no longer requires that there be at least 30 days remaining in any running period for response between the approval of a request to withdraw and the expiration date of any running period for response. Instead, pursuant to 37 CFR 11.116(d), a practitioner must take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred. “Reasonable notice” should allow for a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period. When the correspondence address changes as a result of the withdrawal, the withdrawing practitioner(s) must request that the Office direct all future correspondence to the patent owner of record. Practitioners may do so by specifying either the correspondence address of the patent owner, or the address associated with the Customer Number of the patent owner. Withdrawing practitioner(s) cannot change the correspondence address to the address associated with the Customer Number of another law firm, or to any address other than that of the patent owner of record. See MPEP §§ 402.06 and 2805.
2805 Correspondence with Patent Owner; Patent Owner Address [R-07.2015]
The correspondence address of record for the patent for which supplemental examination is requested is the correct address for all notices, official letters, and other communications for patent owners in supplemental examination proceedings. This is consistent with reexamination practice. See, e.g., 37 CFR 1.33(c). For this reason, the correspondence address of record in the file of the patent for which supplemental examination is requested will be
utilized by the Office as the address of the patent owner when mailing any communications in supplemental examination proceedings, and in any resulting ex parte reexamination proceedings.
If the patent owner desires the Office to send correspondence to a registered attorney or agent other than the attorney or agent of record in the file of the patent for which reexamination is requested, then a new power of attorney must be filed in both: 1) the file of the patent for which supplemental examination is requested; and 2) the file of the supplemental examination proceeding, or, if reexamination is ordered, in the resulting ex parte reexamination proceeding. Patent owners are strongly encouraged to use form PTO/AIA/81B when submitting a power of attorney and/or change of correspondence address in a supplemental examination proceeding or a reexamination proceeding.
After a request for supplemental examination has been filed, and/or after any ex parte reexamination resulting from the supplemental examination has been ordered, any submissions to the Office to change the power of attorney or the correspondence address should be addressed as set forth in MPEP § 2806. Use of form PTO/AIA/81B is encouraged. If, however, the supplemental examination proceeding and any resulting reexamination proceeding is no longer pending, then such submissions should be addressed to Mail Stop Document Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
A submission requesting a change of correspondence address may be signed by all of the patent owners (see MPEP § 2803) or by the registered attorney or agent of record in the file of the patent under supplemental examination. If the application which became the patent under supplemental examination was filed on or after September 12, 2012, a patent practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in the file of the patent under supplemental examination may file a change of correspondence address, provided that the change of correspondence address is accompanied by a statement in accordance with 37 CFR 1.33(g).
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Papers filed on behalf of patent owners must be signed by the patent owners, by the registered attorney or agent of record in the patent file, or by any registered attorney or agent acting in a representative capacity under 37 CFR 1.34. See MPEP § 2804. Double correspondence with the patent owner and the attorney or agent will not normally be undertaken by the Office.
The following is a copy of form PTO/AIA/81B, which may be used for changing a power of attorney and/or a correspondence address in a supplemental examination proceeding and, if desired, simultaneously in the file of the patent.
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2806 How to File Papers in a Supplemental Examination Proceeding and in Any
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Resulting Ex Parte Reexamination Proceeding [R-07.2015]
A request for supplemental examination should be deposited as a new, separate, and independent submission, and should not be deposited in the file of the patent for which supplemental examination is requested, or in the file of any other application, patent, or proceeding. The request should be clearly identified by, for example, providing a heading such as “REQUEST FOR SUPPLEMENTAL EXAMINATION” prominently at the top of the first page of the paper. Use of the new form PTO/SB/59 titled “Request for Supplemental Examination Transmittal Form,” which is available on the Office’s website www.uspto.gov, is also recommended. Requests for supplemental examination, any paper(s) other than a request submission that are to be filed in a supplemental examination proceeding, and any paper(s) to be filed in a reexamination proceeding ordered as a result of a supplemental examination proceeding, should be addressed to the Office as set forth below.
The filing of any papers other than those forming part of a request for supplemental examination in the supplemental examination proceeding submission should be rare.
A supplemental examination proceeding is separate and distinct from any ex parte reexamination proceeding that may later result from it. A supplemental examination proceeding concludes with the electronic issuance of a supplemental examination certificate. 35 U.S.C. 257(a) and 37 CFR 1.625(a). Any reexamination resulting from a supplemental examination proceeding will be ordered after the conclusion of the supplemental examination proceeding. See 35 U.S.C. 257(b) and 37 CFR 1.625(b). The ex parte reexamination is a distinct proceeding initiated by its own order. If reexamination is ordered as a result of a supplemental examination proceeding, any papers submitted subsequent to the order should be filed in the resulting reexamination proceeding.
Supplemental examination proceedings will be assigned a “series 96” control number, such as, for example, 96/999,999. Any ex parte reexamination resulting from a concluded supplemental
examination proceeding will retain the same control number, even though the two proceedings are separate and distinct. After the filing of the request, any correspondence sent to the Office relating to the supplemental examination proceeding or to the resulting ex parte reexamination proceeding should identify the proceeding by the number of the patent, the control number assigned to the proceeding, the art unit, and the name of the examiner.
The certificate of mailing and transmission procedures (37 CFR 1.8) may be used to file any paper in a supplemental examination proceeding, except for a request or corrected request. See MPEP § 512 regarding the use of the certificate of mailing and transmission procedures. The Priority Mail
Express® mailing procedure (37 CFR 1.10) may be used to file any paper, including a request or corrected request, in a supplemental examination proceeding. See MPEP § 513 as to the use of the
Priority Mail Express® mailing procedure.
I. ELECTRONIC SUBMISSION
Patent owners may submit papers in a supplemental examination proceeding via the Office’s Web-based electronic filing system (EFS-Web), available by accessing the Office's website, www.uspto.gov. The electronic submission of requests for supplemental examination and “follow-on” papers (i.e., subsequent correspondence in the proceedings) is encouraged.
When filing a new supplemental examination request, the patent owner should select, in EFS-Web, the filing option “New application/proceeding,” and then select “Supplemental Examination.” Any paper(s) that are to be filed in an existing supplemental examination proceeding, and any paper(s) that are to be filed in a reexamination proceeding ordered as a result of a supplemental examination proceeding, may be filed by selecting “Existing application/patent/proceeding” (e.g., a proceeding that has already been assigned a control number), “Documents/Fees for an existing application/proceeding,” and then entering the assigned control number and confirmation number for the proceeding. For example, a corrected request that is filed in response to a Notice of Noncompliant Supplemental Examination Request should be filed
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as paper(s) in an existing proceeding. After the control number and confirmation number of the proceeding are entered, patent owners will be provided with a menu of document descriptions appropriate for a supplemental examination proceeding, unless reexamination has been ordered. If reexamination has been ordered, patent owners will be provided with a menu of document descriptions for a reexamination proceeding. For further information, see “EFS-Web Quick Start Guide to Filing a Supplemental Examination Request,” at http://www.uspto.gov/sites/ d e f a u l t / fi l e s / p a t e n t s / p r o c e s s / fi l e / e f s / guidance/QSG_Supplemental_Exam.pdf.
Even though the concluded supplemental examination proceeding is separate and distinct from the resulting ex parte reexamination, the resulting reexamination retains the same control number as the concluded supplemental examination proceeding to simplify tracking and processing. Therefore, any paper to be submitted in the resulting reexamination proceeding is to be filed as a paper in an “existing application/patent/proceeding”, using the same control number as was used in the now concluded supplemental examination proceeding.
II. PAPER FORM (HARD COPY) SUBMISSIONS
The Office accepts paper form (hard copy) requests for supplemental examination (i.e., request submissions), and any paper(s) other than request submissions that are filed in a supplemental examination proceeding. These papers should be addressed to “Mail Stop Supplemental Examination” at the appropriate address provided below.
Any papers to be submitted in paper form (hard copy) in a reexamination proceeding ordered as a result of a supplemental examination, other than correspondence to the Office of the General Counsel pursuant to 37 CFR 1.1(a)(3) and 37 CFR 102.4, should be addressed to “Mail Stop Ex Parte Reexam” at the appropriate address provided below.
Mail to be delivered by the United States Postal Service (USPS) should be addressed as:
Mail Stop ______________ Central Reexamination Unit Commissioner for PatentsP.O. Box 1450 Alexandria, VA 22313-1450
Correspondence to be hand-carried or delivered by other delivery services (Federal Express (Fed Ex), UPS, DHL, Laser, Action, Purolator, etc.) should be addressed as:
United States Patent and Trademark Office Customer Service Window Mail Stop __________________ Central Reexamination Unit Randolph Building, Lobby Level 401 Dulany Street Alexandria, VA 22314
Whether the correspondence is mailed via the U.S. Postal Service mail or is hand-carried to the Office, it is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper filed, utilizing a large font size to direct attention to it.
III. FACSIMILE TRANSMISSION
Requests for supplemental examination may not be facsimile-transmitted. This is also true for a corrected request that is filed in response to a Notice ofNoncompliant Supplemental Examination Request (see MPEP §§ 2812.02 - 2812.03), since the corrected request stands in place of the original request. Papers to be filed in a supplemental examination proceeding, other than a request or a corrected request for supplemental examination, and any papers to be filed in a reexamination proceeding resulting from a supplemental examination proceeding, if the papers to be filed in the reexamination proceeding may be properly filed via facsimile transmission in accordance with reexamination practice, may be facsimile-transmitted to the Central Reexamination Unit at (571) 273-9900. See MPEP § 2224.
2807 Format of Papers Filed in a Supplemental Examination Proceeding [R-11.2013]
37 CFR 1.615 Format of papers filed in a supplemental examination proceeding.
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(a) All papers submitted in a supplemental examination proceeding must be formatted in accordance with § 1.52.
(b) Court documents and non-patent literature may be redacted, but must otherwise be identical both in content and in format to the original documents, and, if a court document, to the document submitted in court, and must not otherwise be reduced in size or modified, particularly in terms of font type, font size, line spacing, and margins. Patents, patent application publications, and third-party-generated affidavits or declarations must not be reduced in size or otherwise modified in the manner described in this paragraph.
37 CFR 1.615(a) requires that all papers submitted in a supplemental examination proceeding must be formatted in accordance with 37 CFR 1.52.
37 CFR 1.615(b) provides that court documents and non-patent literature may be redacted, but must otherwise be identical both in content and in format to the original documents, and if a court document, to the document submitted in court, and must not otherwise be reduced in size or modified, particularly in terms of font type, font size, line spacing, and margins. Patents, patent application publications, and third-party-generated affidavits or declarations must not be reduced in size or otherwise modified in the manner described in this paragraph.
If the requirements of 37 CFR 1.615 are not satisfied, the request will be considered to be defective. See 37 CFR 1.610(d) and MPEP § 2812.01 .
Papers filed in a supplemental examination proceeding may be filed electronically via EFS-Web. See MPEP § 2806, subsection I.
2808 Time for Requesting Supplemental Examination [R-11.2013]
37 CFR 1.601 Filing of papers in supplemental examination. *****
(c) A request for supplemental examination of a patent may be filed at any time during the period of enforceability of the patent.
Under 37 CFR 1.601(c), a patent owner may, at any time during the period of enforceability of a patent, file a request for supplemental examination. This period was set by rule, because the Office believes that Congress could not have intended the Office to expend resources on the supplemental examination of a patent which cannot be enforced. The
enforceability period is generally determined by adding six years to the date on which the patent expires, but the period may be extended if litigation is pending. Specifically, if litigation is instituted within the statute of limitations (see 35 U.S.C. 286), requests for supplemental examination may be filed after the statute of limitations has expired, as long as the patent is still enforceable against someone.
It is the responsibility of the patent owner to determine the expiration date of the patent for which supplemental examination is requested. For example, the expiration date of a utility patent may be determined by taking into account the term of the patent, whether maintenance fees have been paid for the patent, whether any disclaimer was filed as to the patent to shorten its term, any patent term extensions or adjustments for delays within the Office under 35 U.S.C. 154 (see MPEP § 2710, et seq.), and any patent term extensions available under 35 U.S.C. 156 for premarket regulatory review (see MPEP § 2750 et seq.). Any other relevant information should also be taken into account.
2809 Items of Information [R-11.2013]
37 CFR 1.605 Items of information.
(a) Each request for supplemental examination may include no more than twelve items of information believed to be relevant to the patent. More than one request for supplemental examination of the same patent may be filed at any time during the period of enforceability of the patent.
(b) An item of information includes a document submitted as part of the request that contains information, believed to be relevant to the patent, that the patent owner requests the Office to consider, reconsider, or correct. If the information to be considered, reconsidered, or corrected is not, at least in part, contained within or based on any document submitted as part of the request, the discussion within the body of the request relative to the information will be considered as an item of information.
(c) An item of information must be in writing in accordance with § 1.2. To be considered, any audio or video recording must be submitted in the form of a written transcript.
(d) If one item of information is combined in the request with one or more additional items of information, each item of information of the combination may be separately counted. Exceptions include the combination of a non-English language document and its translation, and the combination of a document that is over 50 pages in length and its summary pursuant to § 1.610(b)(8).
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An “item of information” includes a document submitted as part of a supplemental examination request that contains information believed to be relevant to the patent, that the patent owner is requesting the Office to consider, reconsider, or correct. See 37 CFR 1.605(b). Patent owners are encouraged to draft the supplemental examination request to clearly and consistently set forth the items of information the patent owner wishes the Office to consider, reconsider, or correct.
I. LIMIT ON THE NUMBER OF ITEMS OF INFORMATION SUBMITTED AS PART OF A SINGLE REQUEST
Each request for supplemental examination may include no more than twelve items of information believed to be relevant to the patent. See 37 CFR 1.605(a). 37 CFR 1.605(a) also permits the filing of more than one request for supplemental examination of the same patent at any time during the period of enforceability of the patent. Therefore, patent owner is not precluded from obtaining review of any item of information despite the twelve-item limit, because the patent owner may file one or more additional requests for supplemental examination of the same patent sequentially or at the same time, each of which may include up to twelve additional items of information.
II. REQUIREMENTS FOR AN ITEM OF INFORMATION
An item of information must be in writing. In most cases, an “item of information” is a separate document submitted as part of the request. Under certain conditions, however, an “item of information” may be contained within the body of the request.
A. An Item of Information Must Be in Writing
37 CFR 1.605(c) requires that an item of information must be in writing in accordance with 37 CFR 1.2. The Office does not currently have the capability of retaining records in unwritten form. For this reason, any audio or video recording must be submitted in the form of a written transcript in order to be considered. A transcript of a video may be submitted together with copies of selected images of the video,
and a discussion of the correlation between the transcript and the copies of the video images. See also MPEP § 2807 regarding the format requirements for papers submitted in a supplemental examination proceeding.
B. An Item of Information Must Be Submitted as a Separate Document, Where Applicable
In most cases, an item of information is a separate document submitted with the request which contains information relevant to the patent that the patent owner wants the Office to consider, reconsider, or correct. Examples of an item of information that must be submitted as a separate document include a journal article, a patent, an affidavit or declaration, a sales receipt, a foreign search report, a copy of a page of a dictionary containing a definition, a court document, and a transcript of an audio or video recording. However, if the item of information is a U.S. patent or a U.S. patent application publication, a copy is not required, but may be submitted. See 37 CFR 1.610(b)(7).
C. When an Item of Information May be Contained within the Body of the Request
If the information to be considered, reconsidered, or corrected is not, at least in part, contained within or based on a supporting document submitted as part of the request, the discussion within the body of the request relative to that information will be considered as the item of information. For example, if the patent owner requests the Office to consider claim 1 of the patent on the basis of 35 U.S.C. 101, and the discussion of any potential application of 35 U.S.C. 101 to claim 1 is wholly contained within the body of the request and is not based, at least in part, on any supporting document, the discussion in the request will be considered as the item of information. Another example of an item of information that may be contained within the request is an admission by patent owner that certain facts or claim limitations were known at the time of the invention.
The patent owner may not avoid counting an item of information by inserting the content of the supporting document within the body of the request. For example, if the patent owner presents an image of a supporting document, such as an image of an
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electronic mail message or other document, within the body of the request, then a separate copy of the supporting document must be provided. The separate copy of the item will be considered as the item of information.
III. HOW ITEMS OF INFORMATION ARE COUNTED
When counting the number of items of information submitted with a request for supplemental examination, the Office will tally the number of items of information, such as documents, presented.
The Office will not count the number of issues raised by, or the number of grounds which the patent owner requests the Office to consider, when determining the number of items of information. A single reference that raises multiple issues under multiple grounds, for example, under 35 U.S.C. 102, 35 U.S.C. 103, and 35 U.S.C. 112, will be counted as a single item of information. However, if the patent owner cites a combination of multiple references under 35 U.S.C. 103, then each reference of the combination will be separately counted as an item of information.
For example, if the patent owner states that the claims are patentable under 35 U.S.C. 103 over the combination of reference A in view of reference B, then references A and B must be separately listed as items of information, and will be counted as two items. If, however, a single item of information, such as a reference patent, raises a potential issue under 35 U.S.C. 102 as to claim 1 and another potential issue under 35 U.S.C. 103 as to claim 2, the reference patent will nevertheless be counted as a single item of information. The Office will count the number of items of information, but will not count the number of issues potentially raised by each item.
As another example, if the patent owner relies upon different abstracts bound together in a book of meeting abstracts, it is likely that the Office will treat each abstract as a separate item of information. In this example, the Office suggests that the patent owner cite and rely upon only the particular abstracts that are relevant to the patent and not cite an entire book of meeting abstracts.
Cumulative items of information will each be separately counted. For example, if the patent owner indicates that reference A is cumulative to reference B, references A and B will be counted as two items of information. If the patent owner believes that multiple items of information are cumulative to each other, the patent owner is encouraged to select one or two documents as the items of information that will be submitted with the request.
If a discussion within the body of the request is based, at least in part, on a supporting document, then the supporting document, and not the discussion within the request, will be counted as the item of information. For example, if the patent owner discusses a potential public use or sale of the claimed invention, and also submits a supporting document, such as a sales invoice, with the request as possible evidence of a public use or sale, or the lack thereof, then the supporting document (e.g., the sales invoice), and not the discussion within the body of the request, will be considered as an item of information.
A declaration or affidavit submitted as part of a request would be considered an item of information. However, if the declaration presents two distinct items of information, such as information relating to a potential ground under 35 U.S.C. 101 as to patent claim 1 that was not considered during the prior examination of the patent, and information relating to erroneous facts or data presented during the prior examination of the patent with respect to an issue under 35 U.S.C. 103 as to patent claim 10, then each item of information contained within the declaration will be counted separately, resulting in two items of information.
The patent owner may not avoid the counting of multiple items of information by inserting the multiple items within the body of a declaration or by presenting them as exhibits accompanying the declaration. If the declaration presents one item of information, such as information regarding erroneous data presented during the prior examination of the patent with respect to an issue under 35 U.S.C. 103 as to a particular patent claim (such as, e.g., claim 10), and relies upon a single exhibit, such as a new table of data, to support facts presented in the declaration, the Office is likely to count the
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declaration, including the supporting exhibit, as a single item of information. If, however, the declaration relies upon two separate and distinct exhibits, then each exhibit may be counted separately. For example, if the declaration relies upon two separate and distinct sales receipts as evidence of a potential sale of the invention ( e.g., a sales receipt dated March 2011, and a second, separate sales receipt dated October 2011, which provides evidence of a second, separate sale of the invention), then each additional sales receipt will be counted separately, resulting in two items of information (one item consisting of the declaration and one sales receipt, and the second item consisting of the second sales receipt). As another example, if the declaration relies not only upon a sales receipt (e.g., exhibit 1) as evidence of a sale of the invention under 35 U.S.C. 102, but also upon a reference patent (e.g., exhibit 2) as evidence of a potential ground under 35 U.S.C. 103, then each additional exhibit will be counted separately. In this example, the declaration and the sales receipt will be counted as a first item of information and the reference patent will be counted as a second item of information.
37 CFR 1.605(d) provides that if an item of information is combined in the request with one or more additional items of information, each item of information of the combination may be separately counted. If it is necessary to combine items of information in order to raise an issue, or to explain the relevance of the items of information to be considered, reconsidered, or corrected with respect to the identified claims, each item of information may be separately counted. For example, if the patent owner requests consideration of claim 1 of a patent in light of references A and B, and explains that it is the combination of references A and B that is relevant to claim 1, reference A and reference B must be separately listed as items of information, and will be counted as two items of information.
Exceptions to this provision include the combination of a non-English language document and its translation, and the combination of a document that is over 50 pages in length and its summary pursuant to 37 CFR 1.610(b)(8).
IV. INFORMATION THAT SHOULD NOT BE SUBMITTED WITH THE REQUEST
Petitions should not be submitted with the request. Petitions including, for example, petitions for unintentionally delayed foreign priority or domestic benefit claims (see MPEP § 2809.01), should only be filed after reexamination is ordered. If a petition is filed in a supplemental examination proceeding, it will generally be held in abeyance until after the issuance of the supplemental examination certificate. See 37 CFR 1.620(b) and MPEP § 2813. If the Office determines that a substantial new question of patentability is raised by the request, any petition held in abeyance will be addressed in due course after reexamination is ordered. If, however, the Office determines that no substantial new question of patentability is raised by the request, any petition held in abeyance will be dismissed as moot.
In addition, amendments to the patent may not be submitted with the request. No amendment may be filed in a supplemental examination proceeding. 37 CFR 1.620(f). Any paper containing an amendment that is filed in a supplemental examination proceeding is an unauthorized paper, and will be expunged from the file if inadvertently entered. If reexamination is ordered, amendments may be filed after an initial Office action on the merits in the resulting reexamination proceeding. See MPEP § 2813.01.
2809.01 Information Relating to the Correction of Factual Information [R-11.2013]
In a request for supplemental examination, the patent owner may inform the Office of factual information believed to be relevant to the patent, which the patent owner wishes to correct. The factual information to be corrected may include, for example, a missing or erroneous foreign priority or benefit claim, or missing or erroneous information relating to the common ownership of the claimed invention. The item of information may be, for example, a patent document relating to the factual information, such as a priority document or parent patent in the case of a missing or erroneous foreign priority or domestic benefit claim, a declaration under 37 CFR 1.132 limited to a discussion of the factual
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information to be corrected, or, if no supporting document is submitted with the request, a discussion within the body of the request relating to the correction of the factual information.
However, if the patent owner merely wishes to amend the patent file in order to correct factual information, the patent owner should file a reissue application or a request for certificate of correction, where appropriate. See MPEP §§ 1402 and 1405. If the patent owner only desires to correct the inventorship, the patent owner should file a request for a certificate of correction under the provisions of 35 U.S.C. 256 and 37 CFR 1.324, or, alternatively, the patent owner may file a reissue application. See MPEP §§ 1402, 1412.04, and 1481.02. Correction of inventorship may also be made, if desired, in an ex parte reexamination proceeding. See MPEP § 2258, subsection IV.F. If the information that the patent owner wishes to correct is only of a clerical or typographical nature, or of a minor character within the meaning of 35 U.S.C. 255 and 37 CFR 1.323, the patent owner should file a request for certificate of correction rather than a supplemental examination request. See, e.g., MPEP § 1481.
A deletion of an earlier-obtained domestic benefit claim in a supplemental examination proceeding or any resulting reexamination proceeding (or, for that matter, in any post-patent Office proceeding) will not operate to extend the term of the patent.
I. SUPPLEMENTAL EXAMINATION IS LIMITED TO A DETERMINATION OF WHETHER THE REQUEST RAISES A SUBSTANTIAL NEW QUESTION OF PATENTABILITY
A supplemental examination proceeding is limited to a determination of whether the information properly submitted as part of the request raises a substantial new question of patentability (SNQ). See 35 U.S.C. 257(a).
However, an item of information limited to a correction of factual information, alone, may not raise a substantial new question of patentability. For example, an item of information limited to the correction of a missing or erroneous foreign priority or domestic benefit claim, alone, generally will not raise an issue of patentability. In order for the
correction of a foreign priority or domestic benefit claim to raise a substantial new question of patentability, the request for supplemental examination should also include one or more additional item(s) of information, such as one or more intervening reference(s), that would cause the patentability of the claims under, e.g.,35 U.S.C. 102 or 103, to depend upon the foreign priority or domestic benefit claim. In such an instance, the item of information may raise a SNQ, depending upon whether the foreign priority or domestic benefit claim is or is not corrected. See MPEP § 2816.02 for a further discussion of whether a document raises a SNQ depending upon the correction of a foreign priority or domestic benefit claim. Similarly, information limited to the correction of other factual information, such as the common ownership of the claims, alone, may not raise a SNQ, in the absence of one or more additional item(s) of information that would cause the patentability of the claims to depend upon the issue of common ownership.
If the Office determines that no SNQ is raised by the request, the supplemental examination proceeding concludes with the issuance of a supplemental examination certificate, indicating that no SNQ is raised. See 35 U.S.C. 257(a), 37 CFR 1.620(a), and 37 CFR 1.625(a). Because no SNQ is raised by the request, ex parte reexamination is not ordered. In such an instance, the factual information cannot be corrected because the procedure for making the correction of the factual information is the reexamination that would have been ordered, had the Office determined that a SNQ was raised in the request. In other words, the patent owner may inform the Office of factual information to be corrected during the supplemental examination proceeding, and thus request supplemental examination “to correct information believed to be relevant to the patent” in accordance with 35 U.S.C. 257(a). However, in the absence of information in the request that raises a SNQ, there is no opportunity to make the correction. Thus, the supplemental examination proceeding will not result in any correction to the patent. In such cases, the patent owner may wish to file a reissue application, a certificate of correction, or other proceeding, as applicable, in order to have the information corrected. See, e.g., MPEP §§ 1402, 1405 and 1481.
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If, however, the Office determines that the request raises a SNQ, reexamination will be ordered. See 35 U.S.C. 257(b) and 37 CFR 1.625(b). The factual information may be corrected during the resulting reexamination proceeding in accordance with ex parte reexamination practice. For example, corrections may be made during the resulting reexamination proceeding by filing, where appropriate, an amendment after the initial Office action on the merits (see MPEP § 2813.01 ), or a petition for an unintentionally delayed foreign priority or domestic benefit claim (see MPEP § 2258, subsection IV.E.).
When analyzing a request for supplemental examination, the Office will only consider the item(s) of information provided by the patent owner. The Office will not initiate supplemental examination of the patent in view of any item of information that was not requested by the patent owner to be considered, reconsidered or corrected. For example, any prior art of record in the patent file, that is not properly submitted as one or more additional item(s) of information in the request, will not, in general, be considered during the supplemental examination proceeding, except to determine whether the item(s) of information properly submitted with the request are cumulative to the prior art of record. Furthermore, a request for supplemental examination “of all of the patent claims” solely in view of the “the factual information to be corrected”, without more, is improper. The patent owner is effectively requesting reconsideration of all of the patent claims in view of all prior art in existence (or, at a minimum, all of the prior art of record). Each prior art document, however, would be considered as a separate item of information. Such a request would be improper because it would not comply with the requirements of, for example, 37 CFR 1.610(b). It would fail to include, e.g., (a) a separate list of each prior art document as an item of information; (b) a copy of each item of information, where appropriate; c) a separate, detailed explanation of the relevance and manner of applying each prior art document to every claim for which supplemental examination is requested, etc. In addition, “all prior art in existence” is likely to include more than twelve items of information. See MPEP § 2811 for discussion of the required elements
of a supplemental examination request as set forth in 37 CFR 1.610(b).
In summary, the patent owner may inform the Office of factual information to be corrected during the supplemental examination proceeding, and thus request supplemental examination “to correct information believed to be relevant to the patent” in accordance with 35 U.S.C. 257(a). However, in the absence of information in the request that raises a SNQ, the supplemental examination proceeding will not result in a corrected patent. Any correction may only be made during a resulting reexamination proceeding, which is only initiated if the supplemental examination proceeding concludes with a determination that a SNQ was raised. For these reasons, the patent owner should include with the request, as one or more additional items of information, evidence that the patentability of the claims depends upon the factual information to be corrected. Such evidence may include, for example, one or more intervening references.
II. RECOMMENDED INFORMATION TO BE SUBMITTED WITH THE REQUEST
The Office recommends that any request for supplemental examination, that includes an item of information limited to the correction of factual information, should also include one or more additional item(s) of information that potentially provide evidence that the patentability of the claims
depends upon the factual information to be corrected.
For example, where the information to be corrected is a foreign priority or domestic benefit claim, the Office recommends that the patent owner include in the request, as one or more additional item(s) of information, any documents or other information, such as an intervening patent or printed publication, that caused the patent owner to reconsider the effective filing date of the claims. The effective date of some of the claims in a patent which resulted from a continuing application under 35 U.S.C. 120, for example, could be the filing date of the continuing application since those claims were not supported in the parent application. Therefore, intervening patents or printed publications may be available as prior art. See, e.g., In re Ruscetta, 255 F.2d 687,
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118 USPQ 101 (CCPA 1958), In re van Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972). See also MPEP § 211.05. Similarly, where the information to be corrected involves, for example, the common ownership of the claims, the patent owner should include with the request one or more additional items of information that cause(s) the patentability of the claims to depend upon the common ownership issue, such any prior art or other documents or information that caused the patent owner to reconsider the common ownership of the claims.
Alternatively, the patent owner may include in the request one or more additional items of information which are unrelated to the factual information to be corrected, but which raise a SNQ. For example, the patent owner may include, in addition to information limited to the correction of a domestic benefit claim, an item of information such as a reference patent that would qualify as prior art under 35 U.S.C. 102 even if the domestic benefit claim is corrected.
III. INFORMATION THAT SHOULD NOT BE SUBMITTED WITH THE REQUEST
See MPEP § 2809, subsection IV. Petitions should not be submitted with the request. Petitions including, for example, petitions for unintentionally delayed foreign priority or domestic benefit claims, should only be filed after reexamination is ordered. See MPEP § 2809.01. In addition, amendments to the patent may not be submitted with the request. No amendment may be filed in a supplemental examination proceeding. 37 CFR 1.620(f). If reexamination is ordered, amendments may be filed after an initial Office action on the merits in the resulting reexamination proceeding. See MPEP § 2813.01.
See MPEP § 2816.02, subsection II, for a further discussion of situations where a SNQ is or is not raised, when the request includes information limited to the correction of factual information.
2810 Fees Due on Filing a Supplemental Examination Request [R-11.2013]
37 CFR 1.610 Content of request for supplemental examination.
(a) A request for supplemental examination must be accompanied by the fee for filing a request for supplemental examination as set forth in § 1.20(k)(1), the fee for reexamination ordered as a result of a supplemental examination proceeding as set forth in § 1.20(k)(2), and any applicable document size fees as set forth in § 1.20(k)(3).
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(d) The filing date of a request for supplemental examination will not be granted if the request is not in compliance with §§ 1.605, 1.615, and this section, subject to the discretion of the Office. If the Office determines that the request, as originally submitted, is not entitled to a filing date, the patent owner will be so notified and will be given an opportunity to complete the request within a specified time. If the patent owner does not timely comply with the notice, the request for supplemental examination will not be granted a filing date and the fee for reexamination as set forth in § 1.20(k)(2) will be refunded. If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies with all of the requirements of §§ 1.605, 1.615, and this section, the filing date of the supplemental examination request will be the receipt date of the corrected request.
Consistent with the requirement in 35 U.S.C. 257(d) to establish fees, 37 CFR 1.610(a) requires that the request be accompanied by the fee for filing a request for supplemental examination as set forth in 37 CFR 1.20(k)(1), the fee for ex parte reexamination ordered as a result of a supplemental examination proceeding as set forth in 37 CFR 1.20(k)(2), and any applicable document size fees as set forth in 37 CFR 1.20(k)(3). These fees qualify for a 50 percent reduction for small entities and a 75 percent reduction for micro entities. See Setting and Adjusting Patent Fees, 78 Fed. Reg. 4212 (January 18, 2013) (final rule); Changes to Implement Micro Entity Status for Paying Patent Fees, 77 Fed. Reg. 65019 (December 19, 2012) (final rule). See MPEP § 509.04.
If all of the required fees for supplemental examination are not paid at the time the request is filed, the request will be considered to be defective, and a filing date will not be granted. See 37 CFR 1.610(d) and MPEP § 2812.01 et seq. If, after notification of the failure to pay all of the required fees, the fees are not timely received, then the request will not receive a filing date, the processing of the request will be terminated, and a refund in accordance with 37 CFR 1.610(d) of any fees paid will be made to the patent owner.
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The fee under 37 CFR 1.20(k)(2) for ex parte reexamination ordered as a result of a supplemental examination proceeding will be refunded, in accordance with 37 CFR 1.610(d), if the supplemental examination certificate indicates that no substantial new question of patentability (SNQ) was raised by any of the items of information properly submitted as part of the request, and reexamination is not ordered.
2810.01 Document Size Fees [R-11.2013]
The document size fees, as set forth in 37 CFR 1.20(k)(3), are only applicable to non-patent documents that having greater than 20 pages. Non-patent documents having 20 pages or less are not subject to the document size fees. Non-patent documents include, for example, non-patent literature, transcripts of audio or video recordings, and court documents. Patent documents, such as U.S. patents, U.S. patent application publications, published international patent applications, and foreign patents and patent application publications, are not subject to the document size fees. Translations of non-English language patent documents are also “patent documents” within the meaning of the rule, and are not subject to the document size fees.
Each non-patent document will be separately subject to the document size fees if greater than 20 pages. For example, each non-patent document attached to a declaration as an exhibit will be subject to its own document size fees if the document is greater than 20 pages. Thus, a 21-page journal article, which is designated as an exhibit to a declaration under 37 CFR 1.132, is considered to be a separate document for the purposes of the document size fees and its pages will be counted separately from the pages of the declaration.
Non-patent documents having 21–50 pages are subject to the fee pursuant to 37 CFR 1.20(k)(3)(i), per document. Non-patent documents having greater than 50 pages are, in addition, subject to a document size fee for each additional 50-page increment, or a fraction thereof, per document, pursuant to 37 CFR 1.20(k)(3)(ii).
The document size fees will not be pro-rated. For example, if a request for supplemental examination included a 51-page non-patent document and a 99-page non-patent document, the same total fee would be due for each document.
Blank pages will be counted. The Office uses an automatic page counter that does not subtract blank pages from the total page count for the non-patent document. This policy is consistent with the Office policy for application size fees.
Examples
Document Size Fee for Each Non-Patent Document Having 21–50 Pages
A request for supplemental examination includes eight documents: two U.S. patents, one U.S. patent application publication, one published international patent application, one Japanese published application, two journal articles, and a court document. The Japanese published application is not in the English language. For this reason, the request also includes a ninth document, which is a 22-page translation of the Japanese published application. The first journal article is 20 pages long, the second journal article is 25 pages long, and the court document is 50 pages long.
In this example, the U.S. patents, the U.S. patent application publication, the published international patent application, and the Japanese published application and its 22-page translation, are all patent documents, and are not subject to the document size fees. The 20-page journal article, which has 20 pages or less, is also not subject to the document size fees.
In this example, there are only two documents which are subject to the document size fee for non-patent documents which have 21–50 pages: the 25-page journal article and the 50-page court document. Therefore, the request should be accompanied by a payment equivalent to two document size fees pursuant to 37 CFR 1.20(k)(3)(i).
In addition, there are no non-patent documents having greater than 50 pages. Therefore, there are no non-patent documents subject to the document size fee pursuant to 37 CFR 1.20(k)(3)(ii). For EFS-Web Filers: in this example, the number “2” should be entered into the box labeled “Quantity” for the number of documents subject to the fee for non-patent documents having 21–50 pages.
Document Size Fee for Each Additional 50-Page Increment, Per Document
A request for supplemental examination includes six documents: one U.S. patent, one 21-page journal article, one 30-page declaration under 37 CFR 1.132, one 2-page invoice or sales
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receipt, one 55-page transcript of an audio or video recording, and one 148-page copy of a catalog. The 2-page invoice or sales receipt is designated as an exhibit to the 30-page declaration.
In this example, the U.S. patent is a patent document, and is not subject to the document size fees. The 2-page invoice or sales receipt is considered to be a separate document for the purposes of the document size fees, even though it is designated as an exhibit to the declaration. It is not subject to the document size
fee because it has less than 20 pages. (If the declaration designated as an exhibit included one or more non-patent documents each having greater than 20 pages, then each of the greater-than-20-page exhibits would be subject to the document size fees.)
The remaining documents are subject to the document size fees, which are calculated as follows:
Each additional 50 pages or a fraction
21-50 pages
121-page journal article 130-page declaration
1155-page transcript of audio or video recording
21148-page chapter of textbook ____ 34Total Quantity
In this example, the 21-page journal article and the 30-page declaration are each subject to the fee for a non-patent document having 21-50 pages. The 55-page transcript and the 148-page catalog also include pages 21-50, and are subject to the same fee. (For EFS-Web Filers: the number “4” should be entered into the box labeled “Quantity” for the number of documents subject to the fee for non-patent documents having 21–50 pages).
In addition, the 55-page transcript and the 148-page catalog each have greater than 50 pages, and therefore include all, or a fraction, of at least one additional 50-page increment. The 55-page transcript includes only one (5-page) fraction of a 50-page increment greater than 50 pages. The 148-page catalog includes two 50-page increments (or a fraction thereof): one for pages 51–100, and a second one for pages 101–148. (For EFS-Web Filers: the number “3” should be entered in the box labeled “Quantity” for the number of documents having additional 50-page increments or a fraction thereof).
Therefore, in this example, the request should be accompanied by a payment equivalent to four times the document size fee pursuant to 37 CFR 1.20(k)(3)(i), plus three times the document size fee pursuant to 37 CFR 1.20(k)(3)(ii).
Note: If the request in the above example also included a 562-page textbook, the document size fees for that document would include one fee under 37 CFR 1.20(k)(3)(i) for pages 21-50, and, in addition, the equivalent of eleven fees under 37 CFR 1.20(k)(3)(ii) for pages 51-562. The total document size fee for the 562-page textbook would be added to the total for all of the documents in the above example. If the 562-page textbook were designated as an exhibit to the 30-page declaration, the fee total would be the same, because the textbook would be considered as a separate document for the purposes of calculating the document size fees, even though it is designated as an exhibit to a declaration.
Patent owners are encouraged to redact lengthy documents to include only the relevant portions, unless the redaction would remove context such that the examiner would not be provided with a full indication of the relevance of the information.
For e-filing information, please see the “EFS-Web Quick Start Guide to Filing a Supplemental Examination Request,” which is available at http://www.uspto.gov/sites/default/files/patents/ process/file/efs/guidance/ QSG_Supplemental_Exam.pdf.
2811 Content of Request for Supplemental Examination [R-11.2013]
37 CFR 1.610 Content of request for supplemental examination.
(a) A request for supplemental examination must be accompanied by the fee for filing a request for supplemental examination as set forth in § 1.20(k)(1), the fee for reexamination ordered as a result of a supplemental examination proceeding as set forth in § 1.20(k)(2), and any applicable document size fees as set forth in § 1.20(k)(3).
(b) A request for supplemental examination must include:
(1) An identification of the number of the patent for which supplemental examination is requested.
(2) A list of the items of information that are requested to be considered, reconsidered, or corrected. Where appropriate, the list must meet the requirements of § 1.98(b).
(3) A list identifying any other prior or concurrent post-patent Office proceedings involving the patent for which supplemental examination is being requested, including an identification of the type of proceeding, the identifying number of any such proceeding (e.g., a control number or reissue application number), and the filing date of any such proceeding.
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(4) An identification of each claim of the patent for which supplemental examination is requested.
(5) A separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested.
(6) A copy of the patent for which supplemental examination is requested and a copy of any disclaimer or certificate issued for the patent.
(7) A copy of each item of information listed in paragraph (b)(2) of this section, accompanied by a written English translation of all of the necessary and pertinent parts of any non-English language item of information. The patent owner is not required to submit copies of items of information that form part of the discussion within the body of the request as specified in § 1.605(b), or copies of U.S. patents and U.S. patent application publications.
(8) A summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length. The summary must include citations to the particular pages containing the relevant portions.
(9) An identification of the owner(s) of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner in compliance with § 3.73(c) establishing the entirety of the ownership in the patent requested to be examined.
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37 CFR 1.610(a) requires payment of the fee specified in 37 CFR 1.20(k)(1), the fee for reexamination ordered as a result of a supplemental examination proceeding as set forth in 37 CFR 1.20(k)(2), and any applicable document size fees as set forth in 37 CFR 1.20(k)(3). See MPEP § 2810.
37 CFR 1.610(b) sets forth content requirements for a request for supplemental examination. The elements are as follows:
I. AN IDENTIFICATION OF THE PATENT FOR WHICH SUPPLEMENTAL EXAMINATION IS REQUESTED
37 CFR 1.610(b)(1) requires that the request include an identification of the number of the patent for which supplemental examination is requested.
II. A LIST OF ALL ITEMS OF INFORMATION SUBMITTED WITH OR AS PART OF THE REQUEST
37 CFR 1.610(b)(2) requires that the request include a list of the items of information that are requested
to be considered, reconsidered, or corrected. Where appropriate, the list must meet the requirements of 37 CFR 1.98(b). For example, the list must include a publication date for each item of information, if applicable. If the item of information is a U.S. patent, it must be identified by inventor, patent number, and issue date, as required by 37 CFR 1.98(b)(1).
This list must include each of the items of information submitted with or as part of the request. See MPEP § 2809 for more information about requirements for items of information. If the item of information is a discussion contained within the body of the request, the pages of the request on which the discussion appears, and a brief description of the item of information, such as “discussion in request of why the claims are patentable under 35 U.S.C. 101, pages 7 - 11,” must be listed. Patent owners are strongly encouraged to use Part B of Office Form PTO/SB/59 to provide the list.
The list must be limited to the items of information for which a separate, detailed explanation is provided in the request, as required by 37 CFR 1.610(b)(5), and, of which a copy is provided with the request, when required by 37 CFR 1.610(b)(7). If the list contains an item of information for which the required detailed explanation and required copy (if applicable) are not provided with the request, the request may not be granted a filing date, and a notice of noncompliant supplemental examination request, informing the patent owner of the defects, may be mailed by the Office.
The list should identify each item of the information in a manner that clearly corresponds to any copy of the item of information provided with the request and to the detailed explanation of the manner of applying the item of information, pursuant to 37 CFR 1.610(b)(5), provided in the request.
The request must include a separate, detailed explanation of the relevance and manner of applying each item of information listed pursuant to 37 CFR 1.610(b)(2) to each claim of the patent for which supplemental examination is requested. See 37 CFR 1.610(b)(5). See also subsection V below, and MPEP § 2811.01.
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III. A LIST OF PRIOR OR CONCURRENT POST-PATENT OFFICE PROCEEDINGS
37 CFR 1.610(b)(3) requires that the request include a list identifying any other prior or concurrent post-patent Office proceedings involving the patent for which the current supplemental examination is requested, including: an identification of the type of proceeding, the identification of Office serial number of any such proceeding ( e.g., a control number or a reissue application number), and the filing date of any such proceeding. The type of proceeding may be, for example, an ex parte or inter partes reexamination proceeding, a reissue application, an interference, another supplemental examination proceeding, a post-grant review proceeding, an inter partes review proceeding, or a covered business method review proceeding. Patent owners are strongly encouraged to use Office Form PTO/SB/59 to provide a list with a request.
If such notice has not been previously provided with the request, 37 CFR 1.620(d) requires that the patent owner must, as soon as possible upon the discovery of any other prior or concurrent post-patent Office proceeding involving the patent for which the supplemental examination is requested, file a paper limited to notifying the Office of the post-patent Office proceeding. See MPEP § 2820.
IV. IDENTIFICATION OF EACH CLAIM OF THE PATENT FOR WHICH SUPPLEMENTAL EXAMINATION IS REQUESTED
37 CFR 1.610(b)(4) requires that the request include an identification of each claim of the patent for which supplemental examination is requested. The result of a supplemental examination is a determination whether any of the items of information raises a SNQ. Because patentability relates to the claims of the patent, the patent owner must identify the patent claims to be examined in order for the Office to determine whether a SNQ affecting those claims has been raised by an item of information.
For example, if the information raises a question as to the adequacy of the written description portion of the specification, the SNQ pertains to the question of whether the specification provides adequate
support under 35 U.S.C. 112 for the identified claim. If the information raises a question regarding whether the claimed invention may be anticipated or may be obvious, the SNQ pertains to the question of whether the identified claim is patentable under 35 U.S.C. 102 or 35 U.S.C. 103 in view of the item of information.
V. A SEPARATE, DETAILED EXPLANATION OF RELEVANCE AND MANNER OF APPLYING EACH ITEM OF INFORMATION TO EACH PATENT CLAIM FOR WHICH SUPPLEMENTAL EXAMINATION IS REQUESTED
37 CFR 1.610(b)(5) requires that the request include a separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested. See MPEP § 2811.01 for a detailed discussion of this requirement. In addition, patent owners may also consider the guidance set forth in MPEP §§ 2214 and 2217, which govern the content of a request for ex parte reexamination.
VI. A COPY OF THE PATENT FOR WHICH SUPPLEMENTAL EXAMINATION IS REQUESTED, AND A COPY OF ANY DISCLAIMER OR CERTIFICATE ISSUED FOR THE PATENT
37 CFR 1.610(b)(6) requires that the request include a copy of the patent for which supplemental examination is requested, and a copy of any disclaimer or certificate issued for the patent. A copy of the patent, for which supplemental examination is requested, should be provided with the specification and claims submitted in a double column format. The drawing pages of the printed patent are presented as they appear in the printed patent; the same is true for the front page of the patent. Thus, a full copy of the printed patent (including the front page) can be used to provide the abstract, drawings, specification, and claims of the patent for the request for supplemental examination. The printed patent is to be reproduced on only one side of the paper; submission of a two-sided copy of the patent is not proper.
A “certificate issued for the patent” includes, for example, a certificate of correction, a certificate of extension, a supplemental examination certificate,
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a post-grant review certificate, an inter partes review certificate, an ex parte reexamination certificate, and/or an inter partes reexamination certificate issued for the patent. Any disclaimer or certificate issued in the patent generally becomes a part of the patent. Thus, a copy of each must be supplied in order to provide the complete patent. The copy must have each page plainly written on only one side of a sheet of paper.
VII. A COPY OF EACH ITEM OF INFORMATION
37 CFR 1.610(b)(7) requires that the request include a copy of each item of information listed in 37 CFR 1.610(b)(2), accompanied by a written English translation of all of the necessary and pertinent parts of any non-English language document. See MPEP § 609.04(a), subsection III, for more information regarding translations of non-English language documents. The requirement of 37 CFR 1.610(b)(7) is important because it allows for all materials to be available to the examiner for full consideration within the three-month statutory time period for supplemental examination. The copy of each item of information listed under 37 CFR 1.610(b)(2) must be legible, and must be otherwise in full compliance with 37 CFR 1.52. See 37 CFR 1.615 and MPEP § 2807. The request must not include a copy of any item of information that is not listed under 37 CFR 1.610(b)(2).
Items of information that form part of the discussion within the body of the request as specified in 37 CFR 1.605(b) are not required to be submitted. As discussed previously, if the information to be considered, reconsidered, or corrected is not, at least in part, contained within or based on any supporting document submitted as part of the request, the discussion within the body of the request relative to the information will be considered as the item of information, a copy of which is not required under 37 CFR 1.610(b)(7) to be separately submitted. SeeMPEP § 2809, subsection II.C.
Copies of U.S. patents and U.S. patent application publications are not required, but may be submitted.
VIII. A SUMMARY OF THE RELEVANT PORTIONS OF ANY DOCUMENT, OTHER THAN
THE REQUEST, WHICH IS OVER FIFTY PAGES IN LENGTH
37 CFR 1.610(b)(8) requires that the request include a summary of the relevant portions of any submitted document (including patent documents), other than the request, that is over fifty (50) pages in length. The summary must include citations to the particular pages containing the relevant portions. This summary may be similar to the requirement for information disclosure statements of a discussion of the relevant and pertinent parts of a non-English language document. See MPEP § 609.04(a), subsection III. This requirement will assist the Office in treating information presented in lengthy documents within the statutory three-month time period. Patent owners are encouraged to redact lengthy documents to include only the relevant portions, unless the redaction would remove context such that the examiner would not be provided with a full indication of the teachings of the item of information with respect to the claimed invention.
IX. AN IDENTIFICATION OF THE OWNER(S) OF THE ENTIRE RIGHT, TITLE, AND INTEREST IN THE PATENT REQUESTED TO BE EXAMINED, AND A SUBMISSION UNDER 37 CFR 3.73(c)
37 CFR 1.610(b) requires that the request must include an identification of the owner(s) of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner in compliance with 37 CFR 3.73(c) establishing the entirety of the ownership in the patent requested to be examined. A request for supplemental examination of a patent must be filed by the owner(s) of the entire right, title, and interest. See 37 CFR 1.601(a). This is because the scope of a patent may be changed (e.g., by cancellation or amendment of the claims) during any ex parte reexamination proceeding that may be ordered as a result of the supplemental examination proceeding, and this change must be binding on all parties having an ownership interest in the patent. Furthermore, the Office has consistently required that all parties having an interest in a patent are deemed “a patent owner” as a composite entity and must act together in proceedings before the Office. See MPEP §§ 301 and 324. This is also consistent with ex parte reexamination practice, which requires a patent owner requester of an ex parte reexamination to
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comply with the provisions of 37 CFR 3.71 and 3.73 for establishing an assignee’s right to take action when submitting a power of attorney. See MPEP § 2222.
The Office may, under rare circumstances, permit less than all of the owners to file a request for supplemental examination if a grantable petition under 37 CFR 1.183 requesting waiver of the provisions of 37 CFR 3.71 and 3.73(c) is filed. See MPEP § 2803.
An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a supplemental examination proceeding since a supplemental examination proceeding is not an “application.”
Form PTO/SB/59 should be helpful to persons filing requests for supplemental examination. The use of this form as, for example, the transmittal form, list of items of information, list of prior or concurrent post-patent Office proceedings, and cover sheet for a request for supplemental examination is encouraged. The following is a copy of form PTO/SB/59.
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2811.01 Detailed Explanation of the Relevance and Manner of Applying Each Item of Information [R-11.2013]
37 CFR 1.610 Content of request for supplemental examination
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(b) A request for supplemental examination must include:
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(5) A separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested.
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I. GENERAL
A separate, detailed explanation required by 37 CFR 1.610(b)(5) must include, for each item of information listed pursuant to 37 CFR 1.610(b)(2), an explanation of how the item of information may be applied to the claims for which supplemental examination is requested. The patent owner must explain, for each claim requested to be examined, either (1) what the item of information teaches with respect to that claim, or (2) which teachings contained in the item of information may be considered by an examiner to be important when determining the patentability of that claim.
The explanation should include citations to particular portions or figures in the item of information in which the teachings are located. Ideally, the required explanation can be provided using an appropriately detailed claim chart that compares, limitation by limitation, each claim for which supplemental examination is requested with the teachings of each item of information cited in the request.
A general statement of relevance that is not tied to any particular claim limitation is not sufficient to meet the requirement.
Patent owners are strongly encouraged to specify which claims are to be examined in light of which items of information. If the patent owner desires to request supplemental examination of all of the claims of the patent in light of all of the items of information submitted with the request, the patent owner is encouraged to specifically request, for example, supplemental examination of claims 1-10 (i.e., all
of the claims of the patent) in light of, for example, “the following items of information” (after which a list of the items of information is provided). On the other hand, if the patent owner separately lists: 1) the claims for which supplemental examination is requested; and 2) the items of information submitted with the request, but does not specify which of the claims are to be examined in light of which items of information, the request will be taken as a request for the supplemental examination of all of the claims requested in light of each item of information submitted with the request. In either case, the patent owner must provide a separate, detailed explanation of the manner of applying every item of information submitted as part of the request to each claim for which supplemental examination is requested.
The Office will assume that all of the claims identified pursuant to 37 CFR 1.610(b)(4) are requested to be considered in light of every item of information listed under 37 CFR 1.610(b)(2), unless otherwise specified. For example, if, in a request for the supplemental examination of claims 1-10, five items of information are listed, and the patent owner wishes supplemental examination of claims 1-5 based on the first two items of information and supplemental examination of claims 1-10 based on the next three items of information, the patent owner must clearly indicate which claims are requested to be examined in light of which items of information. The patent owner can provide such an indication, for example, by use of the headings in the detailed explanation as discussed below, and/or in a table of contents.
A separate, detailed explanation is also required for each dependent claim for which supplemental examination is requested. If the patent owner wishes to rely upon the explanation of the manner of applying the item of information to the independent claim as the required explanation for the dependent claim, the patent owner should so state. For example, the patent owner may state: “Because dependent claims 2-5 each include all of the limitations of independent claim 1, the patent owner relies upon the required explanation under 37 CFR 1.610(b)(5) of the manner of applying the Fisher article to independent claim 1, provided above, as the required explanation under 37 CFR 1.610(b)(5) for dependent claims 2-5.” The patent owner is reminded, however,
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that if the patent owner relies on a proper, detailed explanation of an independent claim as the detailed explanation for the dependent claims, then a review of the dependent claims may be limited to the detailed explanation of the independent claim provided by the patent owner.
If the request does not include an explicit statement incorporating the explanation for the independent claim as the required explanation for the dependent claims, or if the request fails to include separate explanations for the dependent claims, the Office may mail a notice of noncompliant request to inform the patent owner of the deficiency. See MPEP § 2812.02.
The Office does not recommend that the detailed explanation under 37 CFR 1.610(b)(5) be combined with an optional discussion, such as a discussion under 37 CFR 1.610(c)(3) of how the claims patentably distinguish over the item of information. See MPEP § 2812.02. Although the rules do not prevent the patent owner from combining such optional discussions within the detailed explanation, the Office recommends that this optional discussion be made under a separate subheading such as “Optional Explanation under 37 CFR 1.610(c).” The Office has found that requests that combine the detailed explanation with the optional discussion typically include a lengthy discussion of why the claims are patentable over the items of information, or why the items of information do not raise a SNQ, with little to no explanation as to how the item of information is applicable to the claim limitations, as required by 37 CFR 1.610(b)(5). By combining optional discussions with the required detailed explanation, the patent owner runs the risk of obscuring the “detailed explanation.” Such an obscured request could potentially result in the Office finding the “detailed explanation” was not provided, and therefore lead to a determination that the request failed to comply with the filing date requirements, and the loss of the date of the original deposit of the request as the filing date.
Use of headings and subheadings in the detailed explanation section of the supplemental examination request is encouraged. For example, headings that identify each item of information and which claims are being discussed are excellent tools to ensure
clarity in the explanations. In addition, under each heading, the Office highly recommends using separate subheadings for each independent claim and its associated dependent claims, if applicable.
For example, the patent owner may provide a series of statements which identify which claims are to be examined in light of each item of information listed under 37 CFR 1.610(b)(2). The statements do not need to take the form of a proposed rejection, but should be sufficiently clear to determine the scope of the request. These statements will NOT be construed as an admission of unpatentability. These statements would only indicate that the patent owner is requesting that the Office consider whether certain issues may be raised by each item of information with respect to specific claims. If the patent owner is aware, or is made aware, that an item of information may raise particular patentability issue(s) (e.g., anticipation, obviousness, written description, enablement, etc…), the patent owner may identify these issues in the explanation under 37 CFR 1.610(b)(5). These statements would provide a focused review on the potential issues and explicit consideration of those potential issues on the record.
The following are examples of statements that may be set forth as headings in the detailed explanation:
Supplemental examination is requested for claims 1-10 of the ‘123 patent in view of the Fisher article.
The patent owner requests the Office to consider whether the Fisher article raises a SNQ affecting claims 1, 4, 7, and 15 of the ‘123 patent.
Does Smith raise a SNQ affecting claims 1-3 and 5-7?
Does the Byrd declaration raise issues under 35 U.S.C. 101 affecting claims 1-7?
Does the Byrd declaration raise issues under 35 U.S.C. 112 affecting claims 2 and 8?
Are claims 1-5 entitled to the earlier filing date of March 5, 2008 in light of the Wolf declaration?
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Patent owners are encouraged to be as comprehensive as possible in the explanation. This allows the patent owner to frame any potential issues, and assists the examiner in focusing on these potential issues to better determine if a SNQ is, or is not, raised. See also the guidance provided in MPEP §§ 2214 and 2217 for ex parte reexamination proceedings.
Any failure to provide the required explanation for any item of information, or for any claim for which supplemental examination is requested, will be identified in a “Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d)).” See MPEP § 2812.02. Even if the request fails to strictly comply with the detailed explanation requirement, the Office may, in its sole discretion, accept the request if it is readily understood from the explanation provided in the request how the each of the items of information submitted with or as part of the request may be applied to each of the claims for which supplemental examination is requested.
II. REQUIREMENT CANNOT BE SATISFIED BY INCORPORATING BY REFERENCE A PAPER FROM ANOTHER PROCEEDING OR BY RELYING ON A PAPER BY A THIRD PARTY
The requirement for a detailed explanation may not be met by incorporating by reference a paper from another proceeding, or by relying on a paper of a third party, which is submitted with the request.
A request for supplemental examination must stand on its own. A request for supplemental examination cannot be made, and the requirements for a detailed explanation pursuant to 37 CFR 1.610(b)(5) cannot be satisfied, by incorporating by reference a paper from another proceeding. A paper filed in another proceeding must comply with the regulations and procedures set for that proceeding, and would address the issues specific to that proceeding, not to the present supplemental examination proceeding. A procedure which would require the examiner to sort through a paper filed in another proceeding and determine which issues may be raised and treated in a supplemental examination proceeding would frustrate the Office’s ability to conclude the supplemental examination proceeding within three months of the filing date of the request, as required
by 35 U.S.C. 257. For example, the patent owner cannot rely on an Office action from another proceeding as the detailed explanation required by 37 CFR 1.610(b)(5) of the manner of applying the references cited in the Office action. Incorporation by reference would require Office staff to review any incorporated papers (such as, e.g., an Office action) to see if the papers happen to include a discussion of each item of information identified in the present supplemental examination proceeding and explain, in detail, how each item of information may be applied to each claim for which supplemental examination is requested, in order to determine if the filing date requirements are met. Such a procedure would absorb a greater portion of the three-month time period for conducting the supplemental examination and reduce the time available for a full and comprehensive analysis of each item of information submitted as part of the request. For these reasons, each request must stand on its own. The requirement for a detailed explanation cannot be satisfied by incorporating by reference a paper from another proceeding.
The detailed explanation must reflect the opinion of the patent owner, and not that of a third party (including a patent examiner). 35 U.S.C. 257(a) specifies that a patent owner may request supplemental examination. The statute does not authorize the Office to accept a request for supplemental examination by a party other than the patent owner. The patent owner may not file papers on behalf of a third party and thus circumvent the intent of the legislation for supplemental examination. For this reason, the detailed explanation required under 37 CFR 1.610(b)(5) must be drafted by the patent owner, and must reflect the opinion of the patent owner, i.e., what the patent owner believes is the relevance of each item of information, and what the patent owner believes is the manner of applying each item of information to each claim of the patent for which supplemental examination is requested. The patent owner may not rely on a paper filed by a third party (including a paper drafted by a patent examiner) to provide the detailed explanation required by 37 CFR 1.610(b)(5) because the paper filed by the third party does not necessarily reflect the opinion of the patent owner.
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§ 2811.01SUPPLEMENTAL EXAMINATION
If the patent owner wishes to have the examiner consider, in a supplemental examination proceeding, an Office action from another application or proceeding, the patent owner must separately list the Office action and any documents mentioned in the Office action as items of information pursuant to 37 CFR 1.610(b)(2), and provide, when required under 37 CFR 1.610(b)(7), copies of each item of information. In addition, the patent owner must supply its own detailed explanation under 37 CFR 1.610(b)(5), of how the Office action and any documents mentioned in the Office action may be applied to the claims for which supplemental examination is requested.
III. DETAILED EXPLANATION OF INFORMATION LIMITED TO CORRECTION OF FACTUAL INFORMATION
If the request includes an item of information limited to a correction of factual information, such as a foreign priority or domestic benefit claim, or the common ownership of the claimed invention, the request should also include one or more additional item(s) of information that potentially provide evidence that the patentability of the claims depends upon the factual information to be corrected. See MPEP § 2809.01. In such a case, the request must include a detailed explanation required under 37 CFR 1.610(b) of how each of the additional item(s) of information may be applied to the claims for which supplemental examination is requested. For example, if the patent owner wishes to correct the effective filing date of the patent to be examined by claiming the benefit of an earlier filing date of, e.g., a parent patent, the request should include a copy of the parent patent as a first item of information, and a copy of an intervening reference as a second item of information. The patent owner must include in the request a detailed explanation of how the intervening reference may be applied to the claims of the patent to be examined if the effective filing date remains unchanged and is not corrected. As another example, if the patent owner wishes to delete a benefit claim, or correct an earlier-obtained (incorrect) benefit claim in order to properly claim the benefit of a later filing date of a parent patent, the request should include, as separate items of information, a copy of any parent patent document on which the later (corrected) effective filing date
is based, and a copy of an intervening reference which would pre-date the effective filing date of the patent to be examined, if the domestic benefit claim were deleted or corrected to an appropriate later date. In this case, the patent owner must include in the request a detailed explanation of how the intervening reference may be applied to the patent claims if the effective filing date of the patent to be examined is corrected to the later date.
The request must also include an explanation of how the patent owner is entitled to the corrected factual information, where appropriate. For example, if the patent owner informs the Office that the effective filing date of the patent to be examined should reflect an earlier filing date of a parent patent, then the patent owner must also include in the request a detailed explanation of how the patent owner is entitled to the earlier effective filing date, by, for example, explaining how each claim limitation is supported by the parent patent. If, however, the patent owner merely wishes to delete a foreign priority or domestic benefit claim, an explanation of how the patent owner is entitled to the (new) effective filing date, if the domestic benefit claim (or, where appropriate, the foreign priority claim) is deleted, is not required.
Example.
A request for supplemental examination includes an item of information limited to the correction of the effective filing date of the patent, such as a copy of a parent patent and a discussion within the body of the request limited to how the effective filing date should be corrected, i.e., by changing the effective filing date of the patent to be examined to the earlier filing date of the parent patent. The request also includes a second item of information, i.e., an intervening reference, which causes the patentability of the claims to depend upon the domestic benefit claim. In such a case, the patent owner must include in the request a detailed explanation of how the intervening reference may be applied to the claims for which supplemental examination is requested, if the effective filing date of the patent to be examined remains unchanged and is not corrected. The patent owner must also include a detailed explanation of how the patent owner is entitled to the earlier effective filing date, by, for example, explaining how each claim limitation is supported by the parent patent.
2811.02 Optional Content [R-11.2013]
37 CFR 1.610 Content of request for supplemental examination.
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(c) The request may also include:
(1) A cover sheet itemizing each component submitted as part of the request;
(2) A table of contents for the request;
(3) An explanation of how the claims patentably distinguish over the items of information; and
(4) An explanation of why each item of information submitted with the request does or does not raise a substantial new question of patentability.
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37 CFR 1.610(c) provides that the request may optionally include the following enumerated elements:
I. A COVER SHEET
37 CFR 1.610(c)(1) permits the request to include a cover sheet itemizing each component submitted as part of the request. A “component” may be a certificate of mailing, the request, the patent to be examined, an item of information, and any other separate document that is deposited with or as part of the request. Submission of a cover sheet will assist the Office in the review of the request for compliance with the filing date requirements. For example, the Office may readily recognize that certain components listed as submitted on the cover sheet may be missing from the file and quickly contact the patent owner for correction. The Office encourages patent owners to submit a cover sheet with a request for supplemental examination. Use of the form PTO/SB/59 as the cover sheet is particularly encouraged.
II. A TABLE OF CONTENTS
37 CFR 1.610(c)(2) permits the request to include a table of contents for the request. Submission of a table of contents will provide clarity to the record and also help ensure that the request includes all of the required elements in accordance with 37 CFR 1.610(a) and 37 CFR 1.610(b). In addition, a table of contents will also assist in the initial review of the request to determine if the filing date requirements are met and in the examiner’s analysis of the request during the supplemental examination proceeding.
III. AN EXPLANATION OF HOW THE CLAIMS PATENTABLY DISTINGUISH OVER THE ITEMS OF INFORMATION
37 CFR 1.610(c)(3) provides that the request may include an explanation of how the claims patentably distinguish over the items of information. This optional discussion should be separately made under a separate subheading such as “Optional Explanation under 37 CFR 1.610(c)(3).” The Office has found that requests that combine the detailed explanation under 37 CFR 1.610(b)(5) with the optional discussion under 37 CFR 1.610(c)(3) typically have a lengthy discussion of why the claims are patentable over the items of information with little to no explanation as to how the item of information is applicable to the claim limitations as required by 37 CFR 1.610(b)(5). By combining the optional discussion with the required detailed explanation, the patent owner runs the risk that the Office will find that the required explanation was not provided, causing the request to be noncompliant, and the loss of the date of the original deposit of the request as the filing date. See MPEP § 2812.02.
IV. AN EXPLANATION OF WHY EACH ITEM OF INFORMATION SUBMITTED WITH THE REQUEST DOES OR DOES NOT RAISE A SUBSTANTIAL NEW QUESTION OF PATENTABILITY
37 CFR 1.610(c)(4) provides that the request may include an explanation why each item of information does or does not raise a SNQ. Patent owners are encouraged to submit this explanation, which will assist the Office in analyzing the request. If the patent owner does submit this optional content, particularly where the patent owner explains why each item of information does not raise a SNQ, the Office strongly recommends that this optional discussion be separately presented, in the request, from the explanation required by 37 CFR 1.610(b)(5), under a subheading such as “Optional Explanation under 37 CFR 1.610(c)(4)”. See MPEP §§ 2811.01 and 2812.02.
An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a supplemental examination
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§ 2811.02SUPPLEMENTAL EXAMINATION
proceeding since a supplemental examination proceeding is not an “application.”
2812 Initial Processing of a Request for Supplemental Examination [R-11.2013]
All processing of requests for supplemental examination and of other papers filed in a supplemental examination proceeding and in any resulting ex parte reexamination proceeding will be performed by the staff of the Central Reexamination Unit.
2812.01 Filing Date of the Request [R-11.2013]
37 CFR 1.610 Content of request for supplemental examination.
(d) The filing date of a request for supplemental examination will not be granted if the request is not in compliance with §§ 1.605, 1.615, and this section, subject to the discretion of the Office. If the Office determines that the request, as originally submitted, is not entitled to a filing date, the patent owner will be so notified and will be given an opportunity to complete the request within a specified time. If the patent owner does not timely comply with the notice, the request for supplemental examination will not be granted a filing date and the fee for reexamination as set forth in § 1.20(k)(2) will be refunded. If the patent owner timely files a corrected request in response to the notice that properly addresses all of
the defects set forth in the notice and that otherwise complies with all of the requirements of §§ 1.605, 1.615, and this section, the filing date of the supplemental examination request will be the receipt date of the corrected request.
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The request must satisfy all the requirements of 37 CFR 1.605, 1.610 and 1.615, in order for a filing date to be granted. The Central Reexamination Unit will determine if a request for supplemental examination meets these requirements and will be granted a filing date. Even if the request is determined to be defective, the Office has the discretion under 37 CFR 1.610(d) to grant a filing date. However, the Office will not generally grant a filing date to a defective request unless the request contains only minor defects, such as minor formatting defects (e.g., improper margins, etc.).
If the request is not granted a filing date, the Office will mail a “Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d))”, detailing the defects in the request. See MPEP § 2812.02.
If the request is granted a filing date, the Office will mail a “Notice of Supplemental Examination Request Filing Date”. The following is a copy of such a notice.
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§ 2812.01SUPPLEMENTAL EXAMINATION
2812.02 Noncompliant Request for Supplemental Examination [R-11.2013]
37 CFR 1.610 Content of request for supplemental examination.
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(d) The filing date of a request for supplemental examination will not be granted if the request is not in compliance with §§ 1.605, 1.615, and this section, subject to the discretion of the Office. If the Office determines that the request, as originally submitted, is not entitled to a filing date, the patent owner will be so notified and will be given an opportunity to complete the request within a specified time. If the patent owner does not timely comply with the notice, the request for supplemental examination will not be granted a filing date and the fee for reexamination as set forth in § 1.20(k)(2) will be refunded. If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies with all of the requirements of §§ 1.605, 1.615, and this section, the filing date of the supplemental examination request will be the receipt date of the corrected request
If the Central Reexamination Unit (CRU) determines that the request, as originally submitted, does not satisfy all of the requirements of 37 CFR 1.605, 1.610 and 1.615, and all other applicable rules, and is not entitled to a filing date, the CRU will mail a Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d)) to the patent owner. The notice will be mailed to the patent owner at the correspondence address of record in the file of the patent for which supplemental examination is requested. See MPEP § 2805. The notice will specify the defects found in the request, and provide a specified time, generally 15 days, within which a corrected request may be timely filed. If further explanation is needed, an attachment to the notice will be provided specifically explaining why the request was non-compliant with the filing date requirements.
2812.03 Corrected Request [R-11.2013]
The patent owner has one opportunity to file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d)).
To be proper, a corrected request must properly address all of the defects set forth in the notice, and must otherwise comply with all of the requirements of 37 CFR 1.605, 1.610 and 1.615, and all other
applicable rules. The corrected request must include all of the components that the patent owner intends to include as part of the request, such as, for example, the request itself, copies of each of the items of information, a copy of the patent for which supplemental examination is requested, any transmittal sheet, a submission in compliance with 37 CFR 3.73(c), etc.
The patent owner must submit a complete, corrected request that will replace the originally-filed request. In other words, the patent owner must not submit a “supplemental” or corrected portion of the request, because the Office intends to expunge the entire originally-filed request once a corrected request is received. For this reason, a corrected request must contain all of the required information without reliance on any defective originally-filed request.
If all applicable fees have already been paid, these fees do not have to be resubmitted with the corrected request. Also, as discussed previously, even if the request (either the originally-filed request or the corrected request) is determined to be defective, the Office has the discretion under 37 CFR 1.610(d) to grant a filing date. See MPEP § 2812.01. For example, if the Office determines that a corrected request only contains one or more defects of minor character, the Office may, in its sole discretion, enter the defective corrected request, correct the defect(s) sua sponte, and/or request a submission from the
patent owner in order to correct the defect(s). As a specific example, if the defect in the corrected request is limited to the omission of a copy of the patent for which supplemental examination is requested, and the copy of the patent was submitted with the originally-filed request, the Office may exercise its option to sua sponte accept the original submission of the copy of the patent as part of the corrected request.
The corrected request may be submitted using the Office’s Web-based electronic filing system (EFS-Web) at www.uspto.gov, or, if filed in paper form, may be addressed to the Central Reexamination Unit (CRU), Attn: “Mail Stop Supplemental Examination”. See MPEP § 2806. A corrected request must not be facsimile-transmitted. Any corrected request may be followed up by a
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2812.02
telephone call to the Central Reexamination Unit at (571) 272-7705 to ensure receipt.
If a proper corrected request is timely filed, the filing date of the supplemental examination request will be the receipt date of the corrected request. The Office will mail a Notice of Supplemental Examination Request Filing Date to the patent owner. A copy of such a notice is provided in MPEP § 2812.01.
2812.04 Termination Due to Defective/Improper Request or Corrected Request [R-11.2013]
If, in response to a Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d)), a proper corrected request is not filed or is not timely received, or if the corrected request is defective/improper (for example, if the corrected request does not address all of the defects set forth in the notice, or introduces a new defect which was not present in the original request), the request will not be granted a filing date, and the processing of the request will be terminated.
A single failure to comply with the Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d)) will ordinarily result in the request not being granted a filing date. 37 CFR 1.610(d) provides that “[i]f the patent owner does not timely comply with the notice, the request for supplemental examination will not be granted a filing date.” Thus, absent extraordinary circumstances, the patent owner will be given only one opportunity to correct the original request.
When terminating the request, the Office will mail a Notice of Termination, which will notify the patent owner of the defects found in the corrected request, or of the lack of receipt, or timely receipt, of a corrected request. The fee for reexamination as set forth in 37 CFR 1.20(k)(2), if paid, will be refunded. The control number assigned to the request will be retained, but the request will not be granted a filing date, and will not be further considered. The request papers will not be returned, but will remain unavailable to the public. See MPEP § 2813, subsection II.
If, after receiving a Notice of Termination, the patent owner still desires to request supplemental examination of the patent, the patent owner may file a new request for supplemental examination, which is complete and includes the missing information identified by the Office in the notice.
2813 Handling of Papers, Other Than a Request, in a Supplemental Examination Proceeding [R-11.2013]
37 CFR 1.620 Conduct of supplemental examination proceeding.
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(b) The Office may hold in abeyance action on any petition or other paper filed in a supplemental examination proceeding until after the proceeding is concluded by the electronic issuance of the supplemental examination certificate as set forth in § 1.625.
(c) If an unauthorized or otherwise improper paper is filed in a supplemental examination proceeding, it will not be entered into the official file or considered, or if inadvertently entered, it will be expunged.
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I. ACTIONS ON PETITIONS OR PAPERS, OTHER THAN THE REQUEST, MAY BE HELD IN ABEYANCE
37 CFR 1.620(b) provides that the Office may hold in abeyance an action on any petition or other paper filed in a supplemental examination proceeding until after the proceeding is concluded by the electronic issuance of the supplemental examination certificate as set forth in 37 CFR 1.625. The only actions by the Office on the request for supplemental examination are:
(1) a determination of whether the request is entitled to a filing date; and
(2) a determination of whether any of the items of information submitted with the request raises a SNQ.
The only relevant type of petition that the Office anticipates will be filed in a supplemental examination proceeding would involve the filing date of the request, which is not relevant to the determination of whether any of the items of information submitted with the request raises a SNQ. Holding in abeyance a decision on such a petition will assist the Office in making the determination
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§ 2813SUPPLEMENTAL EXAMINATION
regarding a SNQ within the three-month statutory period.
II. UNAUTHORIZED OR IMPROPER PAPERS
37 CFR 1.620(c) provides that if an unauthorized or otherwise improper paper is filed in a supplemental examination proceeding, it will not be entered into the official file or considered, or if inadvertently entered, it will be expunged.
After filing a request for supplemental examination, no papers other than: (1) a corrected request filed in response to a notice of noncompliant supplemental examination request, or (2) a notice of a prior or concurrent post-patent Office proceeding pursuant to 37 CFR 1.620(d), should be filed with the Office prior to the conclusion of the supplemental examination proceeding. Any papers directed to the merits of the supplemental examination proceeding other than (1) or (2) set forth above, will not be entered into the file, and may be discarded by the CRU without consideration. If such a paper is entered prior to its discovery, it may be expunged from the record.
Where an unauthorized or otherwise improper paper has already been scanned into the Image File Wrapper (IFW) of the supplemental examination proceeding before recognizing the nature of the paper, the paper cannot be physically returned to the party that submitted it. Instead, the paper will be expunged, i.e., by marking the paper “non-public” and “closed” so it does not appear in the public record of the supplemental examination proceeding. A copy of the Office communication notifying the patent owner of the return of the paper (or its expungement) will be made of record in the patent file. However, no copy of the returned/expunged paper will be retained by the Office. If a later submission of the returned/expunged paper is appropriate, such as during any resulting ex parte reexamination proceeding, then the paper may be filed and entered by the Office at that time. The date of the later submission will be the filing date of the paper.
A. Third Party Papers
In accordance with 35 U.S.C. 257(a), any party other than the patent owner is prohibited from filing papers or otherwise participating in any manner in the supplemental examination proceeding. See 37 CFR 1.601(b). If a third party files any petition or other paper in a supplemental examination proceeding, it will not be entered into the official file or considered. If such papers are inadvertently entered, they will be expunged. See 37 CFR 1.620(c).
B. Authorized but Defective Papers
Where papers filed in a supplemental examination proceeding are defective (e.g., are not signed or fail to meet the filing date requirements), such papers may be expunged from the official file of the supplemental examination proceeding by marking the paper as “non-public” and “closed” so that it does not appear in the public record of the supplemental examination proceeding.
C. Application Data Sheet (ADS)
An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a supplemental examination proceeding since a supplemental examination proceeding is not an “application.”
2813.01 Amendments [R-11.2013]
37 CFR 1.620 Conduct of supplemental examination proceeding.
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(f) No amendment may be filed in a supplemental examination proceeding.
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37 CFR 1.620(f) provides that no amendment may be filed in a supplemental examination proceeding. Amendments are not “information believed to be relevant to the patent” under 35 U.S.C. 257(a) and a patent owner cannot file an amendment as part of a statement under 35 U.S.C. 304 because 35 U.S.C. 257(b) expressly excludes the filing of a statement pursuant to 35 U.S.C. 304 in a supplemental examination proceeding.
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Any paper containing an amendment that is filed in a supplemental examination proceeding is an unauthorized paper, and will be expunged from the file if inadvertently entered. Amendments are not items of information, and are not appropriate in a supplemental examination proceeding.
An amendment may be submitted in an ex parte reexamination proceeding ordered under 35 U.S.C. 257. Patent owners, however, are reminded that 35 U.S.C. 257(b) expressly removes the right of the patent owner to file a statement under 35 U.S.C. 304, which includes any amendment that the patent owner may wish to file prior to an initial Office action on the merits. Because the ex parte reexamination proceeding does not exist prior to the order under 35 U.S.C. 257, and because the patent owner is precluded from filing a statement under 35 U.S.C. 304, no amendment may be filed from the time the request for supplemental examination is filed, until after the issuance of an initial Office action on the merits in any ex parte reexamination proceeding ordered under 35 U.S.C. 257 .
Patent owners are reminded that a statutory disclaimer under 35 U.S.C. 253 and 37 CFR 1.321(a) may be submitted in the file of the patent prior to filing any request for supplemental examination. See MPEP § 1490. Moreover, if the patent owner merely wishes to amend the patent claims, the patent owner may file a reissue application instead of a request for supplemental examination.
2814 Interviews Are Prohibited [R-11.2013]
37 CFR 1.620 Interviews Are Prohibited *****
(e) Interviews are prohibited in a supplemental examination proceeding.
37 CFR 1.620(e) prohibits interviews in a supplemental examination proceeding. This requirement will assist the Office to process the request for supplemental examination within the three-month statutory period. Any paper requesting an interview that is filed in a supplemental examination proceeding is an unauthorized paper, and will be expunged from the file if inadvertently entered. A telephone call to the Office to confirm receipt of a request for supplemental examination,
or to discuss general procedural questions, is not considered to be an interview for the purposes of this provision. This prohibition against interviews applies only to supplemental examination proceedings. Interviews conducted in connection with any ex parte reexamination ordered under 35 U.S.C. 257 as a result of the supplemental examination proceeding are governed by the regulations governing ex parte reexamination proceedings. See, e.g., 37 CFR 1.560. Specifically, interviews are generally permitted to discuss issues of patentability, which are directly addressed during any ex parte reexamination proceeding ordered under 35 U.S.C. 257, and not during the supplemental examination proceeding.
2815 Time for Deciding Request [R-11.2013]
37 CFR 1.620 Conduct of supplemental examination proceeding.
(a) Within three months after the filing date of a request for supplemental examination, the Office will determine whether a substantial new question of patentability affecting any claim of the patent is raised by any of the items of information presented in the request. The determination will generally be limited to a review of the item(s) of information identified in the request as applied to the identified claim(s) of the patent. The determination will be based on the claims in effect at the time of the determination and will become a part of the official record of the patent.
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Within 3 months following the filing date of a request for supplemental examination, the examiner will determine whether a SNQ affecting any claim of the patent is raised by any of the items of information properly presented in the request. See 35 U.S.C. 257(a) and 37 CFR 1.620(a). A supplemental examination proceeding concludes with the issuance of a supplemental examination certificate, indicating the results of the examiner’s determination. If the three-month period ends on a Saturday, Sunday, or federal holiday within the District of Columbia, then the certificate should issue by the preceding business day.
The examiner should take up a request about 6 weeks after the request’s filing date. A determination on the supplemental examination request may be made
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§ 2815SUPPLEMENTAL EXAMINATION
at any time during the period of enforceability of a patent. See MPEP § 2808.
2816 Determination on the Request [R-07.2015]
37 CFR 1.620 Conduct of supplemental examination proceeding.
Within three months after the filing date of a request for supplemental examination, the Office will determine whether a substantial new question of patentability affecting any claim of the patent is raised by any of the items of information presented in the request. The determination will generally be limited to a review of the item(s) of information identified in the request as applied to the identified claim(s) of the patent. The determination will be based on the claims in effect at the time of the determination and will become a part of the official record of the patent.
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I. GENERAL GUIDANCE
35 U.S.C. 257(a) and 37 CFR 1.620(b) require that, within three months following the filing date of a request for supplemental examination, the Office will determine whether a SNQ affecting any claim of the patent is raised by any of the items of information properly presented in the request. The standard for determining whether an item of information properly submitted as part of the request raises a SNQ will be the same as the standard set forth in the MPEP § 2242 for ex parte reexaminations filed under 35 U.S.C. 302: i.e., whether there is a substantial likelihood that a reasonable examiner would consider the item of information important in determining patentability. See MPEP §§ 2816.02 and 2242.
The determination of whether such an item of information raises a SNQ will generally be limited to a review of the item(s) of information identified in the request with respect to the identified claim(s) of the patent. For example, a determination on a request that includes three items of information, where each item is requested to be considered with regard to claim 1, will generally be limited to whether any of the three items of information raise a SNQ with respect to claim 1. If the patent owner wishes to request consideration of an item of information with respect to multiple claims of the patent, the request for supplemental examination must include an identification of each claim in view
of which the item of information is to be considered, and the required detailed explanation with respect to each claim. For example, if the patent owner fails to request that the Office consider certain claims in view of an item of information, then the patent owner is not entitled to a determination for that item of information with respect to those claims. The determination will be based on the claims in effect at the time of the determination. See MPEP § 2816.01. The supplemental examination certificate, which contains the results of the determination of whether a SNQ was raised by one or more of the items of information submitted as part of the request, will become a part of the official record of the patent.
II. TREATMENT OF REQUEST WHEN LITIGATION IS COPENDING
The patent owner may wish to consider the provisions of 35 U.S.C. 257(c)(1) and 35 U.S.C. 257(c)(2) on the effectiveness of any supplemental examination on already pending litigation when determining whether and when to file a request for supplemental examination. The Office takes no position on this issue.
The patent owner must promptly notify the Office of any federal court decision involving the patent.
A. Litigation Search
Before making a determination on the request for supplemental examination, a litigation search from the Technical Support Staff (TSS) of the Central Reexamination Unit (CRU) or the Scientific and Technical Information Center (STIC) may be done to check to see if the patent has been, or is, involved in litigation. A copy of the litigation search is scanned into the IFW file history. In the rare instance where the record of the supplemental examination proceeding or the litigation search indicates that additional information is desirable, guidance for making an additional litigation search may be obtained from the library of the Office of the Solicitor.
If litigation has concluded or is taking place in the patent on which a request for supplemental examination has been filed, or if the examiner discovers, at any time during the supplemental
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examination proceeding, that there is litigation or that there has been a federal court decision on the patent, the request must be promptly brought to the attention of the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS), who should review the decision on the request and any examiner’s action to ensure that it conforms to current Office policy and guidelines set forth below.
B. Supplemental Examination With Concurrent Litigation Prior to Federal Court Decision
In view of the statutory mandate to make the determination on the request within three months, the determination on the request based on the record before the examiner will be made without awaiting a decision by the federal court. It is not realistic to attempt to determine what issues will be treated, or what issues will be finally decided, by the federal court prior to the court decision. Accordingly, the determination on the request will be made without considering the issues allegedly before the court. If an ex parte reexamination is ordered under 35 U.S.C. 257, the reexamination will continue until the Office becomes aware that a court decision has issued. At such time, the reexamination proceeding ordered under 35 U.S.C. 257 will be reviewed in accordance with the guidelines set forth in MPEP § 2286.
C. Federal Court Decision Issues After Request Filed But Before Supplemental Examination Certificate Issues
A non-final federal court decision concerning a patent under supplemental examination will have no binding effect on the Office’s determination whether a substantial new question of patentability has been raised in a supplemental examination proceeding. A non-final holding of claim invalidity or unenforceability (or, for that matter, a non-final holding of claim validity or enforceability) will not be controlling on the question of whether a substantial new question of patentability is present. A final federal court decision, i.e., after all appeals, which upholds the validity of one or more of the
patent claims also has no binding effect on the supplemental examination proceeding. See, e.g., Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152
(Fed. Cir. 1988), in which the court states the Office is not bound by a court’s holding of patent validity. While the Office may accord deference to factual findings made by the court, the determination of whether a substantial new question of patentability exists will be made independently of the court’s decision on validity as it is not controlling on the Office. See, e.g., In re Swanson et al., 540 F.3d 1368, 1378 (Fed. Cir. 2008), where the Federal Circuit approved of the Office’s interpretation in MPEP § 2242. See MPEP § 2286 for further guidance.
A final holding of claim invalidity or unenforceability (after all appeals) is controlling on the Office. In such cases, a substantial new question of patentability would not be present as to the claims held invalid or unenforceable. This policy tracks the Office’s policy for ex parte reexamination. See, e.g., MPEP § 2286, citing Ethicon v. Quigg. The Office will not intentionally conduct supplemental examination of patent claims which have been finally held to be invalid or unenforceable by a federal court.
If it is brought to the Office’s attention that a federal court has issued a final holding of invalidity or unenforceability, any claims which are finally held invalid or unenforceable, and for which supplemental examination has been requested, will not be examined. If only some of the claims requested to be examined have been finally held invalid or unenforceable, the examiner will indicate, in the Reasons for Substantial New Question of Patentability Determination which accompanies the supplemental examination certificate (see MPEP § 2816.03, subsection II), which requested claims were not under supplemental examination due to the final holding of invalidity or unenforceability. If all of the claims requested to be examined have been finally held invalid or unenforceable, the Office will not conduct the supplemental examination. If a filing date has been granted, it will be vacated by the Office. If it is brought to the Office’s attention that, prior to the issuance of the supplemental examination certificate, a federal court has rendered a final decision, i.e., after all appeals, holding that all of the patent claims under supplemental examination are invalid or unenforceable, and if a supplemental
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examination certificate has inadvertently issued, the supplemental examination certificate will be vacated.
If a final federal court holding of invalidity or unenforceability is rendered after the date of electronic issuance of the supplemental examination certificate in the Office’s electronic Image File Wrapper system (IFW) and in Public PAIR (see MPEP § 2817.01), the supplemental examination certificate will not be vacated. If reexamination has been ordered as a result of the supplemental examination proceeding, and if a final holding of invalidity or unenforceability is brought to the Office’s attention, claims which are held invalid or unenforceable will be withdrawn from consideration in the reexamination. If all of the claims being examined in the reexamination proceeding are finally held invalid or unenforceable, the reexamination will be terminated by the CRU or TC Director as no longer containing a substantial new question of patentability. See MPEP § 2286, subsection IV for further guidance.
2816.01 Claims Considered in Making the Determination [R-11.2013]
The claims of the patent in effect at the time of the determination will be the basis for deciding whether “a substantial new question of patentability” (SNQ) is present. See 37 CFR 1.620(a). In a supplemental examination proceeding, the determination will be limited to a review of the claim(s) for which supplemental examination is requested. The Office will generally not initiate supplemental examination of any patent claims for which supplemental examination was not requested by the patent owner.
37 CFR 1.610(b)(5) requires that the request must include “[a] separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested.” If the patent owner fails to explain how any of the items of information may be applied to a patent claim, then the patent owner is not entitled to supplemental examination of that claim. If the patent owner does not provide an explanation of how an item of information may be applied to every claim requested to be examined in view of that item, the patent owner is not entitled to a determination on claims for which
the required explanation was not provided. For example, if the patent owner requests supplemental examination of claims 1-10 in view of the Fisher article, but only provides a separate, detailed explanation of the manner of applying the Fisher article to claims 1-5, then the patent owner is not entitled to a determination on claims 6-10, for which the required explanation was not provided. In such instances, a notice of noncompliant supplemental examination request should be mailed by the Office. See MPEP § 2812.02.
If the examiner determines that a SNQ affecting a patent claim has been raised by at least one of the items of information submitted as part of the request, reexamination will be ordered under 35 U.S.C. 257. Once reexamination under 35 U.S.C. 257 is ordered, the Office may, in its sole discretion, reexamine claims other than the claims for which supplemental examination has been requested. See 35 U.S.C. 303(a).
As a general rule, the Office will analyze a claim for which supplemental examination is requested only in light of the item(s) of information identified for that claim. For example, if the patent owner requests supplemental examination of claim 1 in light of three items of information, and requests supplemental examination of claim 5 in light of two other items of information, the Office will analyze, in general, only claim 1 in light of the three items of information identified for claim 1, and only claim 5 in light of the two items of information identified for claim 5. The examiner, however, has the discretion to determine whether any of the items of information properly submitted with the request raises a SNQ affecting any of the claims for which supplemental examination is requested. Based on the facts given in the above example, the examiner has the option to determine whether any of the five items of information provided with the request raises a SNQ affecting either claim 1 or claim 5. In other words, the examiner has the option of analyzing the items of information provided with the request with respect to any of the claims for which supplemental examination is requested, in a manner other than that provided by the patent owner in the request. The patent owner, however, is not entitled to a determination on a claim for which the required
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explanation under 37 CFR 1.610(b)(5) has not been provided.
Amendments and/or new claims presented in any copending post-patent Office proceeding for the patent to be examined will not be considered nor commented upon when deciding a request for supplemental examination. However, if after reexamination of the patent under 35 U.S.C. 257 has been ordered, a certificate or reissued patent has been issued which amends the claims for which reexamination has been ordered under 35 U.S.C. 257, reexamination should be on the basis of the claims as amended by that certificate or reissued patent, because the certificate becomes part of the patent as of its issue date or the original patent is surrendered and replaced by the reissued patent as of the issue date of the reissued patent.
2816.02 Criteria for Making the Determination [R-07.2015]
The criteria for making the determination on the request for supplemental examination is whether any of the items of information submitted with or as part of the request raise a substantial new question of patentability affecting at least one claim of the patent. See 35 U.S.C. 257(a).
I. SUBSTANTIAL NEW QUESTION OF PATENTABILITY (SNQ)
The examiner will determine if a SNQ is raised by each item of information. The SNQ standard in supplemental examination proceedings is identical to the “substantial new question of patentability” standard in ex parte reexamination proceedings. The meaning and scope of the term “a substantial new question of patentability” is not defined in the statute, and must be developed on a case-by-case basis, with reference to earlier case law involving ex parte reexamination proceedings.
If an item of information raises a substantial new question of patentability (SNQ) for at least one claim of the patent, then a substantial new question of patentability as to the claim is present, unless the same question of patentability has already been: (A) decided in a final holding of invalidity by a federal court in a decision on the merits involving the claim,
after all appeals; (B) decided in an earlier concluded examination or review of the patent by the Office; or (C) raised to or by the Office in a pending reexamination or supplemental examination of the patent. Issues involving 35 U.S.C. 325(d) must be referred to the Director of the CRU. An “earlier concluded examination or review” of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent; (C) the examination of the patent in an earlier concluded reexamination or supplemental examination of the patent; (D) the review of the patent in an earlier concluded trial by the Patent Trial and Appeal Board, such as a post-grant review, inter partes review, or covered business method review of the patent; or (E) any other contested proceeding, which has been concluded and which involved the patent.
For example, the same question of patentability may already have been decided if the Office has previously considered, in an earlier concluded examination or review of the patent, the same question of patentability based on the same prior art. See In re Recreative Technologies, 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996). Prior art which has been cited or considered by the Office is referred to, for the sake of expediency, as “old art,” as coined by the Federal Circuit in its decision in In re Hiniker, 150 F.3d 1362, 1365-66, 47 USPQ2d 1523, 1526 (Fed. Cir. 1998). Reliance on old art does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art. See Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002), which expanded the scope of what qualifies for a SNQ. Determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis. For example, a SNQ may be based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier concluded examination(s) or review(s), in view of a material new argument or interpretation presented in the request.
The answer to the question of whether a substantial new question of patentability (SNQ) exists, and therefore whether reexamination may be ordered, is
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decided by the Central Reexamination Unit (CRU), under the authority delegated by the Director of the USPTO.
An item of information raises a substantial new question of patentability where there is a substantial likelihood that a reasonable examiner would consider the item of information important in deciding whether or not the claim is patentable. For example, if the supplemental examination request states and explains that there may be a potential issue under 35 U.S.C. 101 regarding claim 5, the examiner would review the supplemental examination record to decide whether there is a substantial likelihood that a reasonable examiner would find the item of information (e.g., the discussion in the request regarding claim 5 and the potential issue under 35 U.S.C. 101) important in determining the patentability of claim 5. If the item of information would be considered important, then the examiner should find a substantial new question of patentability unless the same question of patentability has already been decided as to the claim in a final holding of invalidity by a federal court, decided by the Office in an earlier concluded examination or review, or raised to or by the Office in a pending reexamination or supplemental examination of the patent. For example, the same question of patentability may have already been decided by the Office where the examiner finds that the items of information, which are newly provided prior art patents or printed publications, are merely cumulative to prior art already fully considered by the Office in an earlier concluded examination or review of the claim.
For a substantial new question of patentability (SNQ) to be present, it is only necessary that: (A) an item of information raises a SNQ regarding at least one claim, i.e., the teaching of the item of information is such that a reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable; and (B) the same question of patentability as to the claim has not been decided by the Office in an earlier concluded examination or review of the patent, decided in a final holding of invalidity (after all appeals) by a federal court in a decision on the merits involving the claim, or raised to or by the Office in a pending reexamination or supplemental examination of the patent. It is not
necessary that a “ prima facie” case of unpatentability exist as to the claim in order for “a substantial new question of patentability” to be present as to the claim. Thus, a substantial new question of patentability as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the items of information. As to the importance of the difference between a substantial new question of patentability and a “ prima facie” case of unpatentability, see generally In re Etter, 756 F.2d 852, 857 n.5, 225 USPQ 1, 4
n.5 (Fed. Cir. 1985).
Note that the clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550
U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a SNQ exists.
II. POLICY IN SPECIFIC SITUATIONS
An item of information limited to a correction of factual information, alone, may not raise a substantial new question of patentability (SNQ). For example, an item of information limited to the correction of a missing or erroneous foreign priority or domestic benefit claim, alone, generally will not raise an issue of patentability. In order for the correction of a foreign priority or domestic benefit claim to raise a SNQ, the request for supplemental examination should also include one or more additional item(s) of information, such as one or more intervening reference(s), that would cause the patentability of the claims under, e.g., 35 U.S.C. 102 or 103, to depend upon the foreign priority or domestic benefit claim. In such an instance, the item of information may raise a SNQ, depending upon whether the foreign priority or domestic benefit claim is or is not corrected. Similarly, information limited to the correction of other factual information, such as the common ownership of the claims, alone, may not raise a SNQ, in the absence of one or more additional item(s) of information that would cause the patentability of the claims to depend upon the issue of common ownership. For this reason, the Office recommends that any request for supplemental examination that includes an item of information limited to the correction of factual information,
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should also include one or more additional item(s) of information that potentially provide evidence that the patentability of the claims depends upon the factual information to be corrected. See MPEP § 2809.01.
Example of Determination on Information Directed to a Missing Domestic Benefit Claim
The patent owner informs the Office, in a request for supplemental examination, that the effective filing date of the patent to be examined should be corrected to reflect the earlier filing date of a parent patent. The request includes, as an item of information, a copy of the parent patent and a discussion within the body of the request explaining how each claim limitation of the patent to be examined is supported by the disclosure of the parent patent. The request also includes, as a second item of information, a copy of an intervening patent or printed publication that caused the patent owner to reconsider the effective filing date of the claims. In such a case, the examiner will first determine whether the second item of information, i.e., the intervening reference, would raise a substantial new question of patentability (SNQ) if the effective filing date of the patent to be examined remains unchanged and is not corrected.
If the examiner determines that a SNQ would be raised by the intervening reference if the effective filing date of the patent to be examined remains unchanged and is not corrected, the examiner may, at the examiner’s option, then make a preliminary determination of whether the patent owner is entitled to the benefit of the earlier filing date by, for example, analyzing whether the claim limitations of the patent to be examined are supported by the disclosure of the parent patent. A final determination, however, that the patent owner is entitled to the benefit of the earlier filing date will, in general, only be made during any resulting reexamination proceeding, when, for example, any appropriate amendment to the specification, and the required petition for an unintentionally delayed benefit claim under 37 CFR 1.78, may be filed. See MPEP §§ 2813–2813.01. For a discussion of the explanation under 37 CFR 1.610(b)(5) that must be provided in such a case, see MPEP § 2811.01, subsection III. Where the examiner determines that
a substantial new question of patentability is raised, reexamination will be ordered, and the domestic benefit claim may be added during the resulting reexamination proceeding. See MPEP § 2809.01 and MPEP § 2816.03, subsection II.
If the examiner determines that the intervening reference does not raise a substantial new question of patentability even if the effective filing date of the patent to be examined remains unchanged and is not corrected, then the item of information limited to the correction of the missing domestic benefit claim, i.e., the parent patent and the discussion within the body of the request showing how each claim limitation is supported by the disclosure of the parent patent, will not be further considered on the merits. The examiner will issue a supplemental examination certificate indicating that no substantial new question of patentability is raised by the request, and the domestic benefit claim will not be added to the patent. See MPEP § 2816.03, subsection II.
Example of a Determination on Information Directed to the Deletion of an Earlier-Obtained Domestic Benefit Claim
The patent owner, in a request for supplemental examination, requests the deletion of an earlier-obtained domestic benefit claim. The request includes, as an item of information, an intervening reference which caused the patent owner to reconsider the effective filing date of the claims, and which would pre-date the effective filing date of the patent to be examined, if the domestic benefit claim is deleted. The request also includes a detailed explanation of how the intervening reference may be applied to the patent claims if the domestic benefit claim is deleted. See MPEP § 2811.01, subsection III. In this case, the examiner would determine whether the intervening reference would raise a substantial new question of patentability (SNQ) affecting the identified claims of the patent if the domestic benefit claim is deleted and the effective filing date of the patent to be examined is corrected to an appropriate later filing date. If the examiner determines that the intervening reference does not raise a SNQ, then the examiner will issue a supplemental examination certificate indicating that no SNQ is raised by the request. If the examiner determines that the intervening reference raises a
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SNQ, then the examiner will issue a supplemental examination certificate indicating that a SNQ affecting at least one claim of the patent is raised in the request. Reexamination will be ordered, and the domestic benefit claim may be corrected during the resulting reexamination proceeding. Patent owners are reminded, however, that the deletion of the domestic benefit claim in this example will not operate to extend the term of the patent. See MPEP § 2809.01 and MPEP § 2816.03, subsection II.
Determination Where the Request Only Includes Information Limited to the Correction of Factual Information
If the only information provided with the request is solely directed to the correction of factual information, such as the correction of a missing or erroneous foreign priority or domestic benefit claim, or the correction of the common ownership of the claims, which does not, itself, raise a substantial new question of patentability (SNQ), then (1) the supplemental examination certificate will state that no SNQ is raised in the request for supplemental examination; and (2) the reasons for SNQ determination will indicate that the information regarding the correction of factual information did not raise a SNQ because the patent owner did not include with the request any additional items of information that caused the patentability of the claim(s) to depend upon the corrected factual information.
For example, if the request only includes one item of information, and that item of information is limited to the correction of an erroneous domestic benefit claim, such as, e.g., i.e., a copy of a parent patent and a discussion within the body of the request showing how each claim limitation is supported by the disclosure of the parent patent, then the reasons for SNQ determination should indicate that the information regarding the domestic benefit claim did not raise a SNQ because the patent owner did not include with the request any intervening art or other information that caused the patentability of the claim(s) to depend upon the domestic benefit claim. See MPEP § 2809.01.
Determination Where the Request Includes Information Limited to Correction of Factual
Information and Additional Information Unrelated to the Factual Information to be Corrected
Alternatively, the request may include one or more additional items of information which are unrelated to the factual information to be corrected, but which raise a substantial new question of patentability (SNQ). For example, the patent owner may include, in addition to information limited to the correction of a domestic benefit claim, an item of information such as a reference patent that would qualify as prior art under 35 U.S.C. 102 even if the domestic benefit claim is corrected. If the examiner determines that a SNQ is raised in the request, the examiner may, at the examiner’s option, make a preliminary determination of whether the patent owner is entitled to the benefit of the corrected benefit claim, as discussed previously. Reexamination will be ordered, and the domestic benefit claim may be corrected during the resulting reexamination proceeding. See MPEP § 2809.01 and MPEP § 2816.03, subsection II. If the examiner determines that no SNQ is raised by the additional item(s) of information, the information limited to a correction of the domestic benefit claim will not be further considered on the merits. A supplemental examination certificate, which indicates that no SNQ is raised by the request, will be issued, and the benefit claim will not be corrected.
See also MPEP § 2242, subsections II and III, for more information on how a substantial new question of patentability may be determined in specific situations.
2816.03 Content of the Determination [R-11.2013]
35 U.S.C. 257 Supplemental examinations to consider, reconsider, or correct information.
(a) REQUEST FOR SUPPLEMENTAL EXAMINATION.—A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability.
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37 CFR 1.620 Conduct of supplemental examination proceeding.
(a) Within three months after the filing date of a request for supplemental examination, the Office will determine whether a substantial new question of patentability affecting any claim of the patent is raised by any of the items of information presented in the request. The determination will generally be limited to a review of the item(s) of information identified in the request as applied to the identified claim(s) of the patent. The determination will be based on the claims in effect at the time of the determination and will become a part of the official record of the patent.
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Once a determination is made on the request as to whether the items of information raise a substantial new question of patentability (SNQ), the examiner will prepare: (1) the Supplemental Examination Certificate; and (2) the Reasons for Substantial New Question of Patentability Determination (the "reasons document").
I. THE SUPPLEMENTAL EXAMINATION CERTIFICATE
The supplemental examination certificate is prepared by utilizing a form captioned “Supplemental
Examination Certificate.” The form lists all of the items of information properly submitted as part of the supplemental examination request and states whether a SNQ affecting at least one claim of the patent is raised in the request.
Examiners should not initial, sign and date the listing of the items of information (37 CFR 1.610(b)(2)) submitted with the request. This practice is different from the current practice regarding prior art citations in applications or proceedings involving patents. There is no need to initial, sign, and date the listing submitted under 37 CFR 1.610(b)(2) because the supplemental examination certificate includes a citation to each item of information properly submitted as part of the request.
A copy of a supplemental examination certificate indicating that a SNQ affecting at least one claim of the patent is raised in the request, and a copy of a supplemental examination certificate indicating that no SNQ is raised in the request, appear below.
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II. THE REASONS FOR SUBSTANTIAL NEW QUESTION OF PATENTABILITY DETERMINATION (REASONS DOCUMENT)
The Reasons for Substantial New Question of Patentability (SNQ) Determination (or “reasons document”) will typically accompany the supplemental examination certificate. This document will explain, for each item of information, why each item does or does not raise a SNQ. Form paragraph 28.01 should be used as the heading for the reasons document.
A. Where At Least One Substantial New Question of Patentability is Found
If the request is determined to raise at least one SNQ, the supplemental examination certificate will indicate that a SNQ affecting at least one claim of the patent has been raised, and will refer to the reasons document. For each item of information, the reasons document should include:
(1) A statement that the item of information, as presented in the request, raises a SNQ, and an identification of the claims for which a SNQ is raised.
(2) Where appropriate, a statement that the item of information, as presented in the request, does not raise a SNQ, and an identification of the claims for which a SNQ is not raised.
(3) A brief statement of the basis for the determination that a SNQ affecting the identified claims was raised by the item, or was not raised by the item.
Where an item of information is determined to raise a SNQ, but the SNQ is determined to affect less than all of the claims which were requested to be examined in view of the item, the reasons document may also include, in addition to (1) above, an identification of the claims for which a SNQ was not raised by the item, and a brief statement of the basis for that determination.
For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim. The examiner may rely upon a determination that a
SNQ is raised for an independent claim as the basis that a SNQ is raised for each dependent claim that incorporates the subject matter of the independent claim, if the dependent claims were also requested to be examined by the patent owner. For example, if the examiner finds that item of information A raises a SNQ for independent claim 1, the examiner may rely upon the explanation of how item A raises a SNQ for claim 1 as the explanation of how item A raises a SNQ for dependent claims 2-10, which were also requested to be examined by the patent owner. Form paragraph 28.03 should be used to explain why an item of information raises a SNQ.
For each item of information, if the examiner determines that a substantial new question of patentability is raised by the item, the reasons document should point out:
(A) That the item of information raises a SNQ affecting specific claims of the patent (where the specific claims are listed);
(B) The recitation of the specific claim limitation(s) affected by the teaching(s) of the item of information;
(C) What the teaching(s) are, and where in the item of information the teaching(s) are to be found;
(D) Why a reasonable examiner would consider the teaching(s) to be important in determining the patentability of the specific claim(s) (where the specific claims are listed) for which supplemental examination is being requested; and
(E) Where appropriate, whether the item of information is prior art (e.g., due to its issue date or publication date) to specific patent claims (where the specific claims are listed) and, when applicable, the reasons why the item of information is deemed to be available as prior art against the patent claims.
For each item of information, if the examiner determines that a substantial new question of patentability is not raised by the item, the reasons document should point out:
(A) That the item of information does not raise a SNQ affecting specific claims of the patent (where the specific claims are listed);
(B) The recitation of the specific claim limitation(s), if any, which were discussed in the
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request with respect to the teaching(s) of the item of information;
(C) What the teaching(s) are, if any, and where in the item of information the teaching(s) are to be found;
(D) Why a reasonable examiner would not consider the teaching(s) to be important in determining the patentability of the specific claim(s) (where the specific claims are listed) for which supplemental examination is being requested (e.g., why the teaching(s) are cumulative to the teachings considered in the earlier concluded examination or review of the patent, or are not important even though the teaching(s) are not cumulative and are available against the claim);
(E) Where appropriate, whether the item of information is available as prior art (e.g., due to its issue date or publication date) against specific patent claims (where specific claims are listed) and, when applicable, the reasons why the item of information is or is not deemed to be available as prior art against the patent claims; and
(F) If the item of information is not deemed to be available as prior art against specific patent claims, a further statement, when applicable, that the item does not contain information that raises any other issues of patentability with respect to the specific claims (where the specific claims are listed). For example, a request for the supplemental examination of claims 1-3 includes, as an item of information, a copy of a foreign search report which is determined not to raise any issues of patentability under 35 U.S.C. 101, 102, 103, or 35 U.S.C. 112 affecting claims 1-3. In the reasons document, the examiner should explain why the foreign search report does not qualify as prior art (under, e.g., 35 U.S.C. 102 or 103) against any of claims 1-3, and should also state that the foreign search report does not contain information that raises any other issues of patentability with respect to claims 1-3 of the patent.
Where applicable, the examiner should also explain why an item of information that was cited in the record of the patent is barred by the guidelines set forth in MPEP § 2242, subsection II.A.
Where it is not clear from the patent file or supplemental examination record, the reasons
document may optionally include, for each item of information:
(i) An explanation that the teaching was not previously considered or addressed in any prior examination or proceeding involving the patent or a final holding of invalidity of the patent by the federal courts; or
(ii) An explanation that the teaching, if considered in a previous examination or proceeding of the patent or of the application that became the patent, is presented in a new light, or in a different way, by the arguments presented in the request.
If the examiner determines that an item of information does not raise a SNQ affecting every claim to which the item of information was applied in the request, the examiner should state the claim(s) for which the SNQ was not raised and a brief statement of the reasons why the item did not raise a SNQ affecting the identified claim(s). If the patent owner applied the item of information to an independent claim, but did not apply the item to its dependent claims, the examiner may rely upon a determination that a SNQ is not raised for the independent claim as the basis for the determination that a SNQ is not raised for each dependent claim, for which supplemental examination was also requested, and which incorporates the subject matter of the independent claim. For example, if the patent owner provided a detailed explanation of the manner of applying item of information A to independent claim 11 as required by 37 CFR 1.610(b)(5), and relied on that explanation as the only required explanation for dependent claims 12-21 (for which supplemental examination was also requested), and if the examiner finds that item of information A does not raise a SNQ for independent claim 11, then the examiner may rely upon the explanation of how item A does not raise a SNQ for claim 11 as the explanation for its dependent claims 12-21. Form paragraph 28.02 should be used to explain why an item of information does not raise a SNQ.
The examiner will not decide, and no statement should be made, as to whether the claims are rejected over the items of information. It is unnecessary for the examiner to decide questions of patentability of the claims in a supplemental examination
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proceeding. The examiner only decides whether there is a SNQ.
B. Where No Substantial New Question of Patentability is Found
If the examiner determines that none of the items of information properly submitted as part of the request raise a SNQ, the supplemental examination certificate will state that no SNQ is raised in the request for supplemental examination, and will refer to the Reasons for Substantial New Question of Patentability Determination (i.e., "the reasons document"). The reasons document should explain why each item of information did not raise a SNQ for every claim to which that item of information was applied in the supplemental examination request. See subsection II.A., above. Form paragraph 28.02 should be used to explain why each item of information does not raise a SNQ.
C. Where the Request Includes Factual Information to be Corrected
Where the request includes an item of information limited to the correction of factual information, the request should also include one or more additional item(s) of information, such as one or more intervening reference(s), that potentially provide evidence that the patentability of the claims depends upon the factual information to be corrected. In such an instance, the item of information may raise a SNQ, depending upon whether the foreign priority or domestic benefit claim is or is not corrected.
Example 1. The request includes a first item of information limited to the addition of a claim for the benefit of an earlier effective filing date, a second item of information which is an intervening reference, and a detailed explanation of how the intervening reference may be applied to the patent claims if the domestic benefit claim remains unchanged, and is not corrected. If the examiner determines that a SNQ is raised by the intervening reference, the examiner should include, in the reasons document, the reasons why the intervening reference raises a SNQ, in accordance with the general guidance set forth above in subsection II.A. If the examiner determines that no SNQ is raised by the intervening reference, the examiner should
provide, in the reasons document, the reasons for the determination that the second item of information, i.e., the intervening reference, does not raise a SNQ in accordance with the general guidance set forth above in subsection II.B., even if the domestic benefit claim remains unchanged and is not corrected. The examiner should also provide a statement to the effect that the first item of information, which is limited to the correction of a domestic benefit claim, does not raise a SNQ because the patent owner did not include with the request any additional items of information that cause the patentability of the claim(s) to depend upon the domestic benefit claim, even if the domestic benefit claim remains unchanged and is not corrected.
Example 2. The request includes a first item of information limited to the deletion of a benefit claim, a second item of information which is a reference that pre-dates the effective filing date of the patent if the benefit claim is deleted (i.e., an intervening reference), and a detailed explanation of how the intervening reference may be applied to the patent claims if the benefit claim is deleted. If the examiner determines that a SNQ is raised by the intervening reference if the benefit claim is deleted, the examiner should include, in the reasons document, the reasons why the intervening reference raises a SNQ if the domestic benefit claim is deleted, in accordance with the general guidance set forth above in subsection II.A. If the examiner determines that no SNQ is raised by the intervening reference, the examiner should provide, in the reasons document, the reasons for the determination that the second item of information, i.e., the intervening reference, does not raise a SNQ in accordance with the general guidance set forth above in subsection II.B., even if the domestic benefit claim was deleted. The examiner should also provide a statement to the effect that the first item of information, which is limited to the deletion of the domestic benefit claim, does not raise a SNQ because the patent owner did not include with the request any additional items of information that cause the patentability of the claim(s) to depend upon the domestic benefit claim, even if the domestic benefit claim were to be deleted.
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D. Panel Review
After an examiner has made a preliminary determination, the examiner will formulate a draft Supplemental Examination Certificate and a draft Reasons for Substantial New Question of Patentability Determination (i.e., a draft "reasons document"). The examiner will then inform his/her CRU Supervisory Patent Reexamination Specialist (SPRS) of his/her preliminary determination.A panel review conference will be convened, and the conference members will review the preliminary determination. See MPEP § 2271.01 for the make-up of the panel. If the conference confirms the examiner’s preliminary determination, the Supplemental Examination Certificate shall be issued by its publication in the Office’s Image File Wrapper System, IFW, which will be viewable in Public PAIR. The reasons document will be labeled "Reasons for SNQ Determination" in IFW, and it will generally be available for viewing at the same time as, or shortly after, the issuance of the certificate. The reasons document will be signed by the examiner, with the two other conferees initialing as “conferee” to indicate their presence in the conference.
If the conference does not confirm the examiner’s preliminary determination, the examiner will reevaluate and make appropriate changes to the draft Supplemental Examination Certificate and draft reasons document, in accordance with any agreement reached at the conference.
E. Form Paragraphs for the Reasons for Substantial New Question of Patentability Determination
The following are the form paragraphs that should be used in the Reasons for Substantial New Question of Patentability Determination:
¶ 28.01 Header for Statement of Reasons for Substantial New Question of Patentability Determination
REASONS FOR SUBSTANTIAL NEW QUESTION OF PATENTABILITY DETERMINATION
¶ 28.02 Reasons for Finding No Substantial New Question of Patentability
[1], as presented in the request, does not raise a substantial new question of patentability because [2].
Examiner Note:
1. In bracket 1, insert the name or description, as appropriate, for the item of information. For example, a patent or patent application publication may be designated using the name of the patentee or first-named inventor, such as “the Jones patent,” “the Jones patent application publication,” or the number of the patent or patent application publication. A non-patent literature document may be designated by the name of the author, such as the “the Sherwood publication” and the date of the publication, if desired. A sales receipt or invoice should be designated using the date of the receipt, and any appropriate descriptive information, such as “the March 11, 2011, BigBoxStore sales receipt,” or “the April 1, 2011 XYZ Corporation invoice.” An affidavit or declaration should be designated using the name of the declarant and the date of the affidavit or declaration, such as “the Schmidt declaration dated January 20, 2012.” A transcript of an audio or video recording should be designated using the title of the recording and the date of the recording, if applicable, such as “the transcript of the September 16, 2012 XYZ Corporation Marketing Video.” A discussion within the body of the request regarding a potential issue under 35 U.S.C. 101 may be designated, for example, as “the discussion on pages 7-11 of the request regarding a potential issue under 35 U.S.C. 101.”
2. In bracket 2, insert the reasons for the determination that the item of information does not raise a substantial new question of patentability.
¶ 28.03 Reasons for Finding A Substantial New Question of Patentability
[1], as presented in the request, raises a substantial new question of patentability affecting patent claim(s) [2] because [3].
Examiner Note:
1. In bracket 1, insert the name or description, as appropriate, for the item of information. For example, a patent or patent application publication may be designated using the name of the patentee or first-named inventor, such as “the Jones patent,” “the Jones patent application publication,” or the number of the patent or patent application publication. A non-patent literature document may be designated by the name of the author, such as the “the Sherwood publication” and the date of the publication, if desired. A sales receipt or invoice should be designated using the date of the receipt, and any appropriate descriptive information, such as“ the March 11, 2011, BigBoxStore sales receipt,” or “the April 1, 2011, XYZ Corporation invoice.” An affidavit or declaration should be designated using the name of the declarant and the date of the affidavit or declaration, such as “the Schmidt declaration dated January 20, 2012.” A transcript of an audio or video recording should be designated using the title of the recording and the date of the recording, if applicable, such as “the transcript of the September 16, 2012, XYZ Corporation Marketing Video.” A discussion within the body of the request regarding a potential issue under 35 U.S.C. 101 may be designated, for example, as “the discussion on pages 7-11 of the request regarding a potential issue under 35 U.S.C. 101.”
2. In bracket 2, insert the claims for which a substantial new question of patentability has been raised.
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3. In bracket 3, insert the reasons for the determination that the item of information raises a substantial new question of patentability (SNQ). If a SNQ is found for only a portion of the claims identified with respect to the item of information, then an additional statement may be included explaining why a SNQ was found with respect to some of the identified claims, and why a SNQ was not found with respect to the remainder of the identified claims. For example, if the patent owner requests supplemental examination of claims 1-10 in view of the Schmidt patent, and the examiner finds that a substantial new question of patentability affecting only patent claims 1-5 is raised by that item of information, then the form paragraph may be completed by, for example, stating “The Schmidt patent, as presented in the request, raises a substantial new question of patentability affecting patent claims 1-5 because [provide reasons]. However, the Schmidt patent, as presented in the request, does not raise a substantial new question of patentability affecting patent claims 6-10 because [provide reasons].”
2816.04 Effect of the Determination [R-11.2013]
If the examiner determines that a SNQ is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. See 37 CFR 1.625(b) and (d). See MPEP § 2818.01.
If the supplemental examination certificate indicates that no SNQ is raised by any of the items of information in the request, ex parte reexamination will not be ordered, and the fee for reexamination ordered as a result of supplemental examination, as set forth in 37 CFR 1.20(k)(2), will be refunded in accordance with 37 CFR 1.610(d). See MPEP § 2818.02.
2817 Conclusion of Supplemental Examination [R-11.2013]
37 CFR 1.625 Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.
(a) A supplemental examination proceeding will conclude with the electronic issuance of a supplemental examination certificate. The supplemental examination certificate will indicate the result of the determination whether any of the items of information presented in the request raised a substantial new question of patentability.
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35 U.S.C. 257(a) requires that supplemental examination “shall conclude with the issuance of a certificate indicating whether the information
presented in the request raises a substantial new question of patentability.” A supplemental examination proceeding is initiated by the filing of a request for supplemental examination that complies with 35 U.S.C. 257 and 37 CFR 1.601 et seq., and all other applicable rules, and ends with the electronic issuance of the supplemental examination certificate. The supplemental examination certificate will state the result of the Office’s determination whether any of the items of information submitted as part of the request raises a SNQ.
If the supplemental examination certificate states that a SNQ is raised by one or more of the items of information submitted as part of the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. In other words, if the supplemental examination certificate states that a SNQ is raised, an ex parte reexamination proceeding will be initiated after the conclusion of the supplemental examination proceeding. If, however, the supplemental examination certificate states that no substantial new question of patentability is raised in the request, then an ex parte reexamination proceeding will not be initiated at the conclusion of the supplemental examination proceeding.
2817.01 Processing and Electronic Issuance of Supplemental Examination Certificate [R-11.2013]
After the examiner has prepared the Supplemental Examination Certificate and the Reasons for Substantial New Question of Patentability Determination ("reasons document"), these documents, and the supplemental examination file, are referred to the Central Reexamination Unit (CRU) Legal Instrument Examiner (LIE) for coordinating the clerical processing carried out by the technical support staff.
The Supplemental Examination Certificate and the reasons document are made of record in the electronic file of the supplemental examination proceeding. Copies of both documents are also mailed to the patent owner.
The supplemental examination certificate will be electronically issued in the Office’s electronic Image File Wrapper system and will be visible in Public
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PAIR within three months of the filing date of the request. Electronic issuance of the supplemental examination certificate will permit the Office to issue the certificate within the three-month statutory period and will permit sufficient time to review the items of information submitted as part of the request. The certificate will be viewable by the public in Public PAIR.
The electronically issued supplemental examination certificate will display the filing date of the request. The electronically issued supplemental examination certificate will also list each of the items of information properly submitted as part of the request, and state whether the request raises a SNQ affecting at least one claim of the patent.
If the supplemental examination certificate indicates that a SNQ is raised in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. Upon the conclusion of the ex parte reexamination proceeding, an ex parte reexamination certificate, which will include a statement specifying that ex parte reexamination was ordered under 35 U.S.C. 257, will be published as an attachment to the patent by the Office’s patent publication process in accordance with established ex parte reexamination practice (see 37 CFR 1.570). The electronically issued supplemental examination certificate will also remain as part of the public record for the patent.
If the supplemental examination certificate indicates that no SNQ is raised in the request, the electronically issued supplemental examination certificate, which will remain as part of the public record for the patent, will also be published in due course by the Office’s patent publication process as an attachment to the patent. The fee for reexamination ordered as a result of supplemental examination, as set forth in 37 CFR 1.20(k)(2), will be refunded in accordance with 37 CFR 1.610(d).
2818 Procedure after Conclusion of Supplemental Examination [R-11.2013]
37 CFR 1.625 Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.
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(b) If the supplemental examination certificate states that a substantial new question of patentability is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. Upon the conclusion of the ex parte reexamination proceeding, an ex parte reexamination certificate, which will include a statement specifying that ex parte reexamination was ordered under 35 U.S.C. 257, will be published. The electronically issued supplemental examination certificate will remain as part of the public record of the patent.
(c) If the supplemental examination certificate indicates that no substantial new question of patentability is raised by any of the items of information in the request, and ex parte reexamination is not ordered under 35 U.S.C. 257, the electronically issued supplemental examination certificate will be published in due course. The fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2), will be refunded in accordance with 1.26(c).
(d) Any ex parte reexamination ordered under 35 U.S.C. 257 will be conducted in accordance with §§ 1.530 through 1.570, which govern ex parte reexamination, except that:
(1) The patent owner will not have the right to file a statement pursuant to § 1.530, and the order will not set a time period within which to file such a statement;
(2) Reexamination of any claim of the patent may be conducted on the basis of any item of information as set forth in § 1.605, and is not limited to patents and printed publications or to subject matter that has been added or deleted during the reexamination proceeding, notwithstanding § 1.552(a);
(3) Issues in addition to those raised by patents and printed publications, and by subject matter added or deleted during a reexamination proceeding, may be considered and resolved, notwithstanding § 1.552(c); and
(4) Information material to patentability will be defined by § 1.56(b), notwithstanding § 1.555(b).
Supplemental examination is concluded by the electronic publication of the certificate. The Office procedure after publication of the certificate depends on whether the Office determines that a SNQ affecting at least one claim of the patent is raised in the request.
If the supplemental examination certificate indicates that a SNQ is raised, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. See 37 CFR 1.625(b). An ex parte reexamination ordered as a result of a supplemental examination proceeding will be conducted in accordance with the existing rules governing ex parte reexamination, except that: (i) the patent owner will not have the right to file a patent owner statement; and (ii) the Office will address each SNQ without regard to whether it is
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§ 2818SUPPLEMENTAL EXAMINATION
raised by a patent or printed publication. See 37 CFR 1.625(d) and MPEP § 2818.01 .
If the supplemental examination certificate indicates that no SNQ is raised, ex parte reexamination will not be ordered under 35 U.S.C. 257. In this case, the electronically issued supplemental examination certificate will be published in due course by the Office’s patent publication process as an attachment to the patent. The fee for reexamination ordered as a result of supplemental examination, as set forth in 37 CFR 1.20(k)(2), will be refunded in accordance with 37 CFR 1.610(d). See MPEP § 2818.02.
2818.01 After Determination Finding a Substantial New Question of Patentability [R-07.2015]
37 CFR 1.625(d) provides that any ex parte reexamination ordered under 35 U.S.C. 257 will be conducted in accordance with 37 CFR 1.530 through 37 CFR 1.570, which govern ex parte reexamination, except that:
(1) the patent owner will not have the right to file a statement pursuant to 37 CFR 1.530, and the order will not set a time period within which to file such a statement;
(2) ex parte reexamination of any claim of the patent may be conducted on the basis of any item of information as set forth in 37 CFR 1.605, and is not limited to patents and printed publications or to subject matter that has been added or deleted during a reexamination proceeding, which differs from the provisions of 37 CFR 1.552(a);
(3) issues in addition to those raised by patents and printed publications and by subject matter added or deleted during an ex parte reexamination
proceeding may be considered and resolved, which differs from 37 CFR 1.552(c); and
(4) information material to patentability will be defined by 37 CFR 1.56 for the purposes of a supplemental examination proceeding and any resulting ex parte reexamination proceeding.
The material to patentability standard (37 CFR 1.56(b)) applicable to patent applications is also applicable to an ex parte reexamination proceeding under 35 U.S.C. 257 resulting from a supplemental examination proceeding because, like patent application examination, an ex parte reexamination proceeding ordered pursuant to 35 U.S.C. 257 is not limited to patents and printed publications. In contrast, the material to patentability standard under 37 CFR 1.555(b), which is applicable to ex parte reexaminations ordered pursuant to 35 U.S.C. 302, is limited to patents and printed publications. Any reference to “applicant” in 37 CFR 1.56(b) will be read as “patent owner” in the context of a supplemental examination proceeding and any resulting ex parte reexamination proceeding under 35 U.S.C. 257, because these proceedings are only available to a patent owner.
After the issuance and mailing of the supplemental examination certificate and the accompanying reasons document, the examiner will prepare an order for ex parte reexamination based on the determination made in the supplemental examination proceeding. To order reexamination under 35 U.S.C. 257, the examiner may use form PTO-2302 or include form paragraph 28.04 at the beginning of an initial Office action on the merits in the resulting reexamination proceeding. The order may refer to the reasons document that was created with the supplemental examination certificate.
The following is a copy of form PTO-2302:
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The following is a form paragraph that may be used at the beginning of an initial Office action on the merits to order reexamination under 35 U.S.C. 257:
¶ 28.04 Reexamination Ordered Pursuant to 35 U.S.C. 257
Reexamination Ordered Pursuant to 35 U.S.C. 257
The supplemental examination proceeding, filed on [1], concluded with the issuance of the supplemental examination certificate on [2]. The certificate indicated that one or more of the items of information submitted as part of the request for supplemental examination raises a substantial new question of patentability. See the Reasons for Substantial New Question of Patentability Determination in the file of this proceeding.
Accordingly, ex parte reexamination of claim(s) [3] of U.S. Patent No. [4] is ordered. See 35 U.S.C. 257(b) and 37 CFR 1.625(b). This ex parte reexamination proceeding is hereby initiated by the mailing of this order. Ex parte reexamination under 35 U.S.C. 257 will be conducted in accordance with 37 CFR 1.530 through 1.570, which govern ex parte reexamination, subject to the exceptions enumerated in 37 CFR 1.625(d), and, in addition, to the exception that a patent owner’s statement, including any amendment, under 37 CFR 1.530(a) -(c) may not be filed. See 35 U.S.C. 257(b). For this reason, no amendment in an ex parte reexamination proceeding ordered under 35 U.S.C. 257 may be filed until after the mailing of a first Office action on the merits (which appears below). This reexamination proceeding has been assigned to the art unit listed at the top of the cover page of this action. All future correspondence should be directed to the assigned art unit and should be identified by the control number, which is also listed at the top of the cover page of this action, and which is identical to the control number assigned to the now-concluded supplemental examination proceeding.
A first Office action on the merits appears below.
Examiner Note:
1. In brackets 1 and 2, insert the filing date of the supplemental examination proceeding and the issue date of the supplemental examination certificate, respectively, as they appear on the certificate.
2. In bracket 3, list the claims for which a substantial new question of patentability was found, per the Statement of Reasons for Substantial New Question of Patentability Determination.
3. In bracket 4, list the patent number as shown on the supplemental examination certificate.
See, generally, MPEP § 2254 and MPEP §§ 2260 - 2296 for a detailed discussion of ex parte reexamination procedures and processes. The guidance provided in MPEP § 2250 is applicable to amendments submitted after the first Office action in an ex parte reexamination proceeding resulting from a supplemental examination proceeding. As
stated previously, a reexamination ordered as a result of supplemental examination is subject to the regulations and procedures of ex parte reexamination, subject to the above-noted exceptions.
2818.02 After Determination Finding No Substantial New Question of Patentability [R-11.2013]
If the supplemental examination certificate indicates that no SNQ is raised in the request, the electronically issued supplemental examination certificate will be published in due course by the Office’s patent publication process as an attachment to the patent. The fee for reexamination ordered as a result of supplemental examination, as set forth in 37 CFR 1.20(k)(2), will be refunded in accordance with 37 CFR 1.610(d).
2819 Discovery of Possible Material Fraud [R-11.2013]
37 CFR 1.620 Conduct of supplemental examination proceeding.
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(g) If the Office becomes aware, during the course of supplemental examination or of any reexamination ordered under 35 U.S.C. 257 as a result of the supplemental examination proceeding, that a material fraud on the Office may have been committed in connection with the patent requested to be examined, the supplemental examination proceeding or any reexamination proceeding ordered under 35 U.S.C. 257 will continue, and the matter will be referred to the U.S. Attorney General in accordance with 35 U.S.C. 257(e).
37 CFR 1.620(g) provides that, if the Office becomes aware, during the course of a supplemental examination or of any ex parte reexamination ordered under 35 U.S.C. 257 as a result of the supplemental examination proceeding, that a material fraud on the Office may have been committed in connection with the patent requested to be examined, the supplemental examination proceeding or any ex parte reexamination proceeding ordered under 35 U.S.C. 257 will continue. The matter will be referred to the U.S. Attorney General in accordance with 35 U.S.C. 257(e).
The Office anticipates that such instances will be rare. Accordingly, the Office does not intend to
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create a unit to investigate instances of material fraud. If an employee of the Office, such as an examiner in the CRU, becomes aware, during the course of supplemental examination or any reexamination ordered under 35 U.S.C. 257, that a material fraud on the Office may have been committed in connection with the patent subject to a supplemental examination or resulting reexamination ordered under 35 U.S.C. 257, the employee would notify the supervisory official in charge of the section of the Office to which the employee is assigned, such as the Director of the CRU. The supplemental examination proceeding, or any reexamination proceeding ordered under 35 U.S.C. 257, would continue. If the supervisory official concurs, he or she would refer the matter to the Deputy Commissioner for Patent Examination Policy. If the Deputy Commissioner for Patent Examination Policy concurs, the matter would be referred to the Office’s General Counsel, who would determine if the matter should be referred to the U.S. Attorney General in accordance with 35 U.S.C. 257(e).
2820 Submission of Notification of Other Prior or Concurrent Post-Patent Office Proceedings [R-11.2013]
37 CFR 1.620 Conduct of supplemental examination proceeding.
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(d) The patent owner must, as soon as possible upon the discovery of any other prior or concurrent post-patent Office proceeding involving the patent for which the current supplemental examination is requested, file a paper limited to notifying the Office of the post-patent Office proceeding, if such notice has not been previously provided with the request. The notice shall be limited to an identification of the post-patent Office proceeding, including the type of proceeding, the identifying number of any such proceeding (e.g., a control number or reissue application number), and the filing date of any such proceeding, without any discussion of the issues of the current supplemental examination proceeding or of the identified post-patent Office proceeding(s).
*****
37 CFR 1.620(d) requires that the patent owner must, as soon as possible upon the discovery of any other prior or concurrent post-patent Office proceeding involving the patent for which the current supplemental examination is requested, file a paper limited to notifying the Office of the post-patent
Office proceeding, if such notice has not been previously provided with the request. The Office anticipates that a patent for which supplemental examination is requested may be involved in other post-patent Office proceedings, including another supplemental examination proceeding. Knowledge of other proceedings is important to ensure a quality determination. In addition, notice is required due to the statutory three-month period within which the Office must conclude the supplemental examination. The notice is limited to an identification of the post patent Office proceeding, including the type (e.g., ex parte or inter partes reexamination, reissue, supplemental examination, post-grant review, inter partes review, or covered business method patent review), an identifying number, such as a control number or reissue application number, and the filing date of the other post-patent Office proceeding. The notice may not include further arguments or information, including any discussion of the issues present in the current supplemental examination proceeding or in the identified post-patent Office proceeding(s). A notice pursuant to 37 CFR 1.620(d) must not include copies of papers filed in a prior or concurrent Office proceeding. If the paper containing the notice is not so limited, the paper will be held to be improper, and will be processed as an unauthorized paper pursuant to 37 CFR 1.620(c).
2821 Multiple Post-Patent Office Proceedings [R-07.2015]
A supplemental examination proceeding must conclude within three months from the filing date of the request. As a general rule, the Office will not merge a supplemental examination proceeding with any other supplemental examination proceeding. The Office, however, reserves its option to merge/consolidate supplemental examination proceedings as circumstances arise. The Office, likewise, does not anticipate that a supplemental examination proceeding or ex parte reexamination proceeding resulting from a supplemental examination proceeding will be merged with any other type of Office proceeding. The Office similarly reserves its option to merge reexamination proceedings that are ordered as a result of supplemental examination proceedings as circumstances arise. In such circumstances, filing a petition to merge is not necessary, since the Office
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will generally make a decision sua sponte whether to merge.
If multiple post-patent proceedings are simultaneously filed, any determination of which proceedings to initiate, and the order in which to initiate them, will be made on a case-by-case basis.
If the patent owner files a request for supplemental examination that is in compliance with 35 U.S.C. 257 and all applicable rules, the Office is required under 35 U.S.C. 257(a) to conduct the examination and conclude the proceeding within three months from the filing date of the request. Any reexamination proceeding resulting from the supplemental examination proceeding must, in accordance with 35 U.S.C. 257(b), be conducted “according to the procedures established by chapter 30,” which govern ex parte reexamination. If reexamination is ordered, the Office is required to proceed with the reexamination. 35 U.S.C. 304 requires the Office to resolve any substantial new question of patentability determined to be raised:
If... the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question (emphasis added).
In addition, 35 U.S.C. 305 expressly provides that, after the order (and after the time period set for filing a patent owner statement under 35 U.S.C. 304, which is excluded by 35 U.S.C. 257(b)), “reexamination will be conducted.” Therefore, once reexamination is ordered, the Office is required by statute to conduct the reexamination. Further, 35 U.S.C. 305 requires that an ex parte reexamination proceeding “be conducted with special dispatch within the Office.” See also, Ethicon v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988). The Office, however, reserves its option, pursuant to 35 U.S.C. 315(d) or 35 U.S.C. 325(d), to determine the manner in which a reexamination proceeding ordered under 35 U.S.C. 257 may proceed, including providing for stay, transfer, consolidation or termination, when there is a copending inter partes review, post grant review, or covered business method review. The patent owner may wish to consider the provisions of 35
U.S.C. 257(c)(1) and 35 U.S.C. 257(c)(2) on the effectiveness of any supplemental examination on already pending litigation when determining whether and when to file a request for supplemental examination.
See MPEP § 2283 for information on mergers involving an ex parte reexamination proceeding.
See the Trial Practice Guide for information involving concurrent trials.
2822 Assignment of the Supplemental Examination Proceeding [R-11.2013]
Supplemental examination requests will be assigned to the Central Reexamination Unit (CRU) in the same manner in which reexamination requests are assigned. The CRU art unit which examines the technology (Chemical, Electrical, Mechanical, etc.) in which the patent to be examined is currently classified as an original patent, will be assigned the supplemental examination request. In that art unit, the CRU Supervisory Patent Examiner (SPE) will assign the request to a primary examiner, other than the examiner who originally examined the patent application, who is most familiar with the claimed subject matter of the patent. See, generally, MPEP § 2236.
Although the number of supplemental examination requests which must be transferred to another examiner should be very small, the procedures established for transferring reexamination proceedings will be generally followed when transferring supplemental examination proceedings. See MPEP § 2237.
2823 Differences Between an Ex Parte Reexamination Proceeding Ordered Pursuant to 35 U.S.C. 257 and an Ex Parte Reexamination Proceeding Ordered Pursuant to 35 U.S.C. 302 [R-11.2013]
Ex parte reexamination ordered under 35 U.S.C. 257, i.e., as a result of a supplemental examination, will be conducted in accordance with regulations and procedures that govern ex parte reexamination
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2822
ordered pursuant to 35 U.S.C. 302 (e.g., 37 CFR 1.530 through 37 CFR 1.570), except that:
(1) the patent owner will not have the right to file a statement pursuant to 37 CFR 1.530, and the order will not set a time period within which to file such a statement;
(2) the patent owner cannot file an amendment to the patent until after supplemental examination is concluded and after the issuance of an initial Office action on the merits in any ex parte reexamination proceeding ordered under 35 U.S.C. 257;
(3) ex parte reexamination of any claim of the patent may be conducted on the basis of any item of information as set forth in 37 CFR 1.605, and is not limited to patents and printed publications or to subject matter that has been added or deleted during a reexamination proceeding, which differs from the provisions of 37 CFR 1.552(a);
(4) issues in addition to those raised by patents and printed publications and by subject matter added or deleted during an ex parte reexamination proceeding may be considered and resolved, which differs from 37 CFR 1.552(c); and
(5) information material to patentability will be defined by 37 CFR 1.56(b) for an ex parte reexamination proceeding resulting from a supplemental examination proceeding.
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§ 2823SUPPLEMENTAL EXAMINATION
Chapter 2900 International Design Applications
Basic Hague Agreement Principles2901 Definitions2902 Declarations under the Hague Agreement Made by the United States of America
2903
Who May File An International Design Application
2904
Where to File An International Design Application
2905
Filing Through the USPTO as an Office of Indirect Filing
2905.01
Filing Date Requirements2906 International Registration and Date of the International Registration
2907
Filing Date in the United States2908 Contents of the International Design Application
2909
Official Form for the Application for International Registration
2909.01
Reproductions (Drawings)2909.02 Reproductions Submitted Through EFS-Web
2909.02(a)
Annexes2909.03 International Design Application Fees2910 Representation2911 Correspondence in Respect of International Design Applications Filed
2912
With the USPTO as an Office of Indirect Filing Relief from Prescribed Time Limits2913 Conversion of an International Design Application to a Design Application Under 35 U.S.C. Chapter 16
2914
[Reserved]2915 -2919
National Processing of International Design Applications Designating the United States
2920
Inventorship2920.01 Applicant2920.02 Correspondence Address2920.03 Elements of a Nonprovisional International Design Application
2920.04
Specification2920.04(a) Reproductions (Drawings)2920.04(b) Inventor’s Oath or Declaration2920.04(c)
Examination2920.05 Notification of Refusal2920.05(a)
One Independent and Distinct Design
2920.05(b)
Considerations Under 35 U.S.C. 112
2920.05(c)
Foreign Priority2920.05(d) Benefit Claims Under 35 U.S.C. 386(c)
2920.05(e)
Information Disclosure Statement in an International Design
2920.05(f)
Application Designating the United States
Allowance2920.06 [Reserved]2921
-2929 Corrections and Other Changes in the International Register
2930
[Reserved]2931 -2939
Statement of Grant of Protection2940 [Reserved]2941
-2949 Grant of Protection Only Upon Issuance of Patent; Term of Design Patent
2950
2901 Basic Hague Agreement Principles [R-07.2015]
I. OVERVIEW
The Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, July 2, 1999 (hereinafter “Hague Agreement”) is an international agreement that enables an applicant to file a single international design application which may have the effect of an application for protection for the design(s) in countries and/or intergovernmental organizations that are parties to the Hague Agreement (the “Contracting Parties”) designated in the application. The United States is a Contracting Party to the Hague Agreement, which took effect with respect to the United States on May 13, 2015. The Hague Agreement is administered by the International Bureau of the World Intellectual Property Organization (“the International Bureau”).
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II. BASIC FLOW UNDER THE HAGUE AGREEMENT
A. Filing
An international design application may be filed by an applicant “indirectly” through the U.S. Patent and Trademark Office (“USPTO”) or “directly” with the International Bureau. If the application is filed through the USPTO, the Office will confirm that the required transmittal fee has been paid, perform a security review, and check that the required indications demonstrating applicant’s entitlement to file the application through the USPTO are present in the application submission. If the transmittal fee is paid and the application clears security review and contains the indications establishing applicant’s entitlement to file the application through the USPTO, the application will be transmitted to the International Bureau and the applicant will be notified of the transmittal. The USPTO will also notify the applicant and the International Bureau of the receipt date of the application.
B. Formal Examination by the International Bureau
Regardless of whether the application is filed indirectly through a Contracting Party or directly with the International Bureau, the International Bureau examines the application to determine whether the applicable formal requirements under the Hague Agreement and Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement have been satisfied. If the applicable requirements have been satisfied, the International Bureau will accord the application a filing date and register the industrial design in the International Register. If the International Bureau finds that the international design application does not satisfy the applicable requirements, it will invite the applicant to make the required corrections within a prescribed time limit. The failure to timely respond to the invitation may result in abandonment of the application or removal of the designation of a Contracting Party pursuant to Hague Agreement Article 8.
C. Registration and Publication
If the international design application satisfies all applicable requirements, the International Bureau will register the international design application in the International Register and accord a date of international registration. Pursuant to Hague Agreement Article 10(2), the international registration date will be either the filing date of the international design application or the date of receipt of any additional mandatory content item required under Hague Agreement Article 5(2), if such date is later than the filing date. The international registration includes all the data contained in the international design application (including any priority claim where the earlier filing is not more than six months prior to the international filing date), the reproduction(s) of the design, the registration number and registration date, and the class of the International Classification determined by the International Bureau.
The international registration is published by the International Bureau. The applicant may request that publication occur immediately after registration or that publication be deferred for up to 30 months from the filing date (or priority date, if applicable). Deferment of publication is not possible if a Contracting Party is designated that does not permit deferred publication. Absent a request for immediate publication or deferment, the registration will be published approximately six months after the date of international registration. The publication includes the data from the international registration and the reproductions of the industrial design.
D. Examination by the Offices of the Designated Contracting Parties
Following publication of the international registration by the International Bureau, the offices of the designated Contracting Parties proceed with examination if required under their respective laws. As a result of that examination, the office may notify the International Bureau of a refusal of protection for its territory. A refusal of protection, if any, must be notified to the International Bureau within six months from the date of publication of the international registration. However, any Contracting Party whose office is an examining office, or whose
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2901
law provides for the possibility of opposition to the grant of protection, may declare that the refusal period of six months is extended to 12 months.
Pursuant to 35 U.S.C. 389, the USPTO will examine international design applications designating the United States based on the published international registration received from the International Bureau. Where it appears that the applicant is not entitled to a patent under the law of the United States with respect to any industrial design that is the subject of the international registration, the Office will send a notification of refusal to the International Bureau, normally within 12 months from the publication of the international registration. The applicant may reply to such notification directly to the USPTO. Any further Office action, such as a subsequent non-final rejection, a final rejection, or an allowance, will be sent directly to the applicant.
2902 Definitions [R-07.2015]
Definitions of relevant terms are set forth in 35 U.S.C. 381, 37 CFR 1.9 and 1.1001, Article 1 of the Hague Agreement, and Rule 1 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.
As used in MPEP Chapter 2900, “Article” means an article of the Hague Agreement; “Rule,” when capitalized, means a rule under the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement; and “Administrative Instruction” means the Administrative Instruction for the Application of the Hague Agreement referred to in Rule 34.
2903 Declarations under the Hague Agreement Made by the United States of America [R-07.2015]
The Geneva Act of the Hague Agreement, and the declarations made thereto, took effect with respect to the United States on May 13, 2015.
Pursuant to Article 5(2)(a) and Rule 11(3), the United States declared that an international design application designating the United States must contain a claim and that the specific wording of the
claim shall be in formal terms to the ornamental design for the article as shown, or as shown and described. See 37 CFR 1.1021(d) and MPEP § 2909, subsection IV. Additionally, pursuant to Rule 8(1), the United States declared that an international design application designating the United States must also contain an oath or declaration of the creator and indications concerning the identity of the creator. Id.
Pursuant to Article 11(1)(b), the United States declared that where the United States is designated in an international design application, it is not possible for an applicant to request the deferment of publication of the ensuing international registration.
Pursuant to Article 13(1), the United States declared that only one independent and distinct design may be claimed in a single application. See MPEP §§ 2920.05(b) and 1504.05.
Pursuant to Rule 18(1)(b), the United States declared that it is extending the time period within which to provide a refusal (12 months) and when the international registration shall produce effect as a grant of protection. The United States provides industrial design rights through USPTO issuance of a U.S. design patent. See 35 35 U.S.C. 171-173 and 389 and MPEP §§ 2920.05(a) and 2950.
Pursuant to Article 7(2) and Rule 12(3), the United States declared that the prescribed designation fee referred to in Article 7(1) shall be replaced by an individual designation fee that is payable in a first part at filing and second part payable upon allowance of the application. SeeMPEP §§ 2910 and 2920.06. The amounts of the first and second part individual designation fees are subject to future changes. See Article 7(2).
Pursuant to Rule 13(4), the United States declared that the period of one month referred to in Rule 13(3) shall be replaced by a period of six months with respect to the United States in light of the security clearance required under United States law.
Pursuant to Article 16(2), the United States declared that changes in ownership recorded by the International Bureau pursuant to Article 16(1)(i) must be recorded with the USPTO through
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§ 2903INTERNATIONAL DESIGN APPLICATIONS
submission of documentation supporting that change in ownership to have effect. See 35 U.S.C. 261 and MPEP §§ 301-302.
Pursuant to Article 17(3), the United States declared that that the maximum duration of protection for designs is 15 years from grant. 35 U.S.C. 173.
2904 Who May File An International Design Application [R-07.2015]
Hague Article 3
Entitlement to File an International Application
Any person that is a national of a State that is a Contracting Party or of a State member of an intergovernmental organization that is a Contracting Party, or that has a domicile, a habitual residence or a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.
Pursuant to Article 3 of the Hague Agreement, to be entitled to file an international design application, a person must: (1) be a national of a Contracting Party or of a State that is a member of an intergovernmental organization that is a Contracting Party; or (2) have a domicile, habitual residence, or real and effective industrial or commercial establishment in the territory of a Contracting Party.
Article 1(ix) of the Hague Agreement defines a “person” as a natural person or a legal entity, and Article 1(xiii) defines a “Contracting Party” as a State or intergovernmental organization that is a party to the Hague Agreement.
A list of the Contracting Parties to the Hague Agreement is maintained on the website of the World Intellectual Property Organization (www.wipo.int/hague/en/members/).
2905 Where to File An International Design Application [R-07.2015]
Hague Article 4
Procedure for Filing the International Application
(1) [ Direct or Indirect Filing]
(a) The international application may be filed, at the option of the applicant, either directly with the International
Bureau or through the Office of the applicant's Contracting Party.
(b) Notwithstanding subparagraph (a), any Contracting Party may, in a declaration, notify the Director General that international applications may not be filed through its Office.
(2) [ Transmittal Fee in Case of Indirect Filing] The Office of any Contracting Party may require that the applicant pay a transmittal fee to it, for its own benefit, in respect of any international application filed through it.
Pursuant to Article 4 of the Hague Agreement, an international design application may be filed either directly with the International Bureau or indirectly through the office of the applicant’s Contracting Party. However, Contracting Parties may notify the International Bureau that applications may not be filed indirectly through their office. See Article 4(1)(b). As such, only certain offices may allow for “indirect” filing. The WIPO website provides information on which Contracting Parties permit “indirect” filing through their office. See www.wipo.int/hague/en/declarations/declarations.html.
Article 1(xiv) of the Hague Agreement defines the “applicant’s Contracting Party” as the Contracting Party from which the applicant derives its entitlement to file an international design application under Hague Agreement Article 3 or, if there is more than one such Contracting Party, the one Contracting Party among those Contracting Parties that the applicant expressly identifies as the “applicant’s Contracting Party” in the international design application.
2905.01 Filing Through the USPTO as an Office of Indirect Filing [R-07.2015]
35 U.S.C. 382 Filing international design applications.
(a) IN GENERAL.—Any person who is a national of the United States, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States, may file an international design application by submitting to the Patent and Trademark Office an application in such form, together with such fees, as may be prescribed by the Director.
(b) REQUIRED ACTION.—The Patent and Trademark Office shall perform all acts connected with the discharge of its duties under the treaty, including the collection of international fees and transmittal thereof to the International Bureau. Subject to chapter 17, international design applications shall be forwarded by the Patent and Trademark Office to the International Bureau, upon payment of a transmittal fee.
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(c) APPLICABILITY OF CHAPTER 16.—Except as otherwise provided in this chapter, the provisions of chapter 16 shall apply.
(d) APPLICATION FILED IN ANOTHER COUNTRY.—An international design application on an industrial design made in this country shall be considered to constitute the filing of an application in a foreign country within the meaning of chapter 17 if the international design application is filed—
(1) in a country other than the United States;
(2) at the International Bureau; or
(3) with an intergovernmental organization.
37 CFR 1.1002 The United States Patent and Trademark Office as an office of indirect filing.
(a) The United States Patent and Trademark Office, as an office of indirect filing, shall accept international design applications where the applicant’s Contracting Party is the United States.
(b) The major functions of the United States Patent and Trademark Office as an office of indirect filing include:
(1) Receiving and according a receipt date to international design applications;
(2) Collecting and, when required, transmitting fees due for processing international design applications;
(3) Determining compliance with applicable requirements of part 5 of this chapter; and
(4) Transmitting an international design application to the International Bureau, unless prescriptions concerning national security prevent the application from being transmitted.
37 CFR 1.1011 Applicant for international design application.
(a) Only persons who are nationals of the United States or who have a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the territory of the United States may file international design applications through the United States Patent and Trademark Office.
(b) Although the United States Patent and Trademark Office will accept international design applications filed by any person referred to in paragraph (a) of this section, an international design application designating the United States may be refused by the Office as a designated office if the applicant is not a person qualified under 35 U.S.C. chapter 11 to be an applicant.
37 CFR 1.1012 Applicant’s Contracting Party.
In order to file an international design application through the United States Patent and Trademark Office as an office of indirect filing, the United States must be applicant’s Contracting Party (Articles 4 and 1(xiv)).
37 CFR 1.1045 Procedures for transmittal of international design application to the International Bureau.
(a) Subject to paragraph (b) of this section and payment of the transmittal fee set forth in § 1.1031(a), transmittal of the international design application to the International Bureau shall
be made by the Office as provided by Rule 13(1). At the same time as it transmits the international design application to the International Bureau, the Office shall notify the International Bureau of the date on which it received the application. The Office shall also notify the applicant of the date on which it received the application and of the transmittal of the international design application to the International Bureau.
(b) No copy of an international design application may be transmitted to the International Bureau, a foreign designated office, or other foreign authority by the Office or the applicant, unless the applicable requirements of part 5 of this chapter have been satisfied.
(c) Once transmittal of the international design application has been effected under paragraph (a) of this section, except for matters properly before the United States Patent and Trademark Office as an office of indirect filing or as a designated office, all further correspondence concerning the application should be sent directly to the International Bureau. The United States Patent and Trademark Office will generally not forward communications to the International Bureau received after transmittal of the application to the International Bureau. Any reply to an invitation sent to the applicant by the International Bureau must be filed directly with the International Bureau, and not with the Office, to avoid abandonment or other loss of rights under Article 8.
Only persons who are nationals of the United States or who have a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States may file international design applications through the USPTO. See 35 U.S.C. 382(a) and 37 CFR 1.1011(a). In addition, in order to file an international design application through the USPTO, the United States must be applicant’s Contracting Party. See 37 CFR 1.1012 and Hague Agreement Article 4. Thus, an international design application may be filed through the USPTO only if: (1) the applicant, or each applicant if there is more than one applicant, is a national of the United States or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States; and (2) the United States is the applicant’s Contracting Party, or each applicant’s Contracting Party if there is more than one applicant.
The official form for presenting the international design application, “Application for International Registration” (form DM/1), includes boxes to indicate both applicant’s entitlement to file the international design application and applicant’s Contracting Party. See MPEP § 2909.01.
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§ 2905.01INTERNATIONAL DESIGN APPLICATIONS
International design applications may be filed through the USPTO as an office of indirect filing via EFS-Web, mail, or hand delivery to the Customer Service Window at the USPTO’s Alexandria headquarters. The street address is: U.S. Patent and Trademark Office, Customer Service Window, Randolph Building, 401 Dulany Street, Alexandria, VA 22314. The mailing address for delivery by the U.S. Postal Service is: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
It should be noted that the Priority Mail Express®
provisions of 37 CFR 1.10 apply to the filing of all applications and papers filed in the U.S. Patent and Trademark Office, including international design applications and related papers and fees. It should be further noted, however, that the filing of an international design application is excluded from the Certificate of Mailing or Transmission procedures under 37 CFR 1.8. Facsimile transmission may not be used for the filing of an international design application or the filing of color drawings under 37 CFR 1.1026. See 37 CFR 1.6(d)(3) and (4), 37 CFR 1.8(a)(2)(i)(K). See MPEP § 502 for more information on depositing correspondence with the USPTO.
Payment of the transmittal fee specified in 37 CFR 1.1031(a) is required for international design applications filed through the USPTO as an office of indirect filing. In addition, international design applications filed with the USPTO are subject to national security review. See 35 U.S.C. 382(b). The international design application will not be transmitted to the International Bureau if the transmittal fee has not been paid or the necessary national security clearance has not been obtained. See 37 CFR 1.1045.
Upon receipt of an international design application, the USPTO will review the application for the required indications establishing each applicant’s entitlement to file the international design application through the USPTO, payment of the transmittal fee, and national security. If the indications are not sufficient to establish each applicant’s entitlement to file the international design application through the USPTO, the transmittal fee has not been paid, or the necessary national security clearance has not been obtained, the Office will notify the applicant accordingly via Form PTO-2320, “Notification Of
ReceiptAnd Transmittal Of The International Design Application To The IB And Invitation To Pay Fee.” Form PTO-2320 does not set a time period to cure the deficiency but instead warns the applicant that an international design application that is not received by the International Bureau within six months from receipt of the application by the USPTO will receive a filing date as of the date on which the International Bureau receives the application, rather than the USPTO receipt date, subject to Hague Agreement Rule 14(2).
If the conditions for transmitting the international design application to the International Bureau have been satisfied, the application will be transmitted to the International Bureau. The applicant will be notified via Form PTO-2320 of the transmittal of the application to the International Bureau and of the receipt date of the international design application by the USPTO.
The Office will generally not forward any submission filed in an international design application to the International Bureau that is received after the application has been transmitted to the International Bureau. Applicants are cautioned that any reply to an invitation sent to the applicant by the International Bureau must be filed directly with the International Bureau, and not with the Office, to avoid abandonment or other loss of rights under Hague Agreement Article 8. See 37 CFR 1.1045(c).
2906 Filing Date Requirements [R-07.2015]
Hague Article 9
Filing Date of the International Application
(1) [ International Application Filed Directly] Where the international application is filed directly with the International Bureau, the filing date shall, subject to paragraph (3), be the date on which the International Bureau receives the international application.
(2) [ International Application Filed Indirectly] Where the international application is filed through the Office of the applicant's Contracting Party, the filing date shall be determined as prescribed.
(3) [ International Application with Certain Irregularities] Where the international application has, on the date on which it is received by the International Bureau, an irregularity which is prescribed as an irregularity entailing a postponement of the filing date of the international application, the filing date shall
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2906
be the date on which the correction of such irregularity is received by the International Bureau.
Hague Rule 14
Examination by the International Bureau
(1) [ Time Limit for Correcting Irregularities] If the International Bureau finds that the international application does not, at the time of its receipt by the International Bureau, fulfill the applicable requirements, it shall invite the applicant to make the required corrections within three months from the date of the invitation sent by the International Bureau.
(2) [ Irregularities Entailing a Postponement of the Filing Date of the International Application] Where the international application has, on the date on which it is received by the International Bureau, an irregularity which is prescribed as an irregularity entailing a postponement of the filing date of the international application, the filing date shall be the date on which the correction of such irregularity is received by the International Bureau. The irregularities which are prescribed as entailing a postponement of the filing date of the international application are the following:
(a) the international application is not in one of the prescribed languages;
(b) any of the following elements is missing from the international application:
(i) an express or implicit indication that international registration under the 1999 Act or the 1960 Act is sought;
(ii) indications allowing the identity of the applicant to be established;
(iii) indications sufficient to enable the applicant or its representative, if any, to be contacted;
(iv) a reproduction, or, in accordance with Article 5(1)(iii) of the 1999 Act, a specimen, of each industrial design that is the subject of the international application;
(v) the designation of at least one Contracting Party.
(3) [ International Application Considered Abandoned; Reimbursement of Fees] Where an irregularity, other than an irregularity referred to in Article 8(2)(b) of the 1999 Act, is not remedied within the time limit referred to in paragraph (1), the international application shall be considered abandoned and the International Bureau shall refund any fees paid in respect of that application, after deduction of an amount corresponding to the basic fee.
Hague Rule 13
International Application Filed Through an Office
*****
(3) [ Filing Date of International Application Filed Indirectly] Subject to Rule 14(2), the filing date of an international application filed through an Office shall be
(i) where the international application is governed exclusively by the 1999 Act, the date on which the international application was received by that Office, provided that it is received by the International Bureau within one month of that date;
(ii) in any other case, the date on which the International Bureau receives the international application.
(4) [ Filing Date Where Applicant’s Contracting Party Requires a Security Clearance] Notwithstanding paragraph (3), a Contracting Party whose law, at the time that it becomes party to the 1999 Act, requires security clearance may, in a declaration, notify the Director General that the period of one month referred to in that paragraph shall be replaced by a period of six months.
Hague Rule 6
Languages
(1) [ International Application] The international application shall be in English, French or Spanish.
*****
The filing date of an international design application is accorded by the International Bureau pursuant to Article 9 and Rules 14(2) and 13(3) of the Hague Agreement. The filing date of an international design application in the United States is not necessarily the same date as the filing date accorded by the International Bureau. See MPEP § 2908. The filing date accorded by the International Bureau is referred to as the international filing date.
Pursuant to Rule 14(2), the International Bureau will accord the international design application a filing date only if the application is in one of the prescribed languages. The prescribed languages, set forth in Hague Agreement Rule 6, are English, French, and Spanish. In addition, the international design application must include:
(1) an indication that international registration under the Hague Agreement is requested;
(2) a sufficient indication of the applicant’s identity;
(3) a sufficient indication to allow the applicant or its representative to be contacted;
(4) a reproduction or specimen of each industrial design that is the subject of the application; and
(5) the designation of at least one Contracting Party.
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§ 2906INTERNATIONAL DESIGN APPLICATIONS
If the international design application does not fulfill the applicable requirements, the International Bureau will invite the applicant to make the required corrections within a prescribed time limit. See Rule 14(1). If the defect concerns a missing element required under Rule 14(2) and the applicant timely provides the missing element required under Rule 14(2), the date on which the missing element is received by the International Bureau will be the filing date accorded by the International Bureau. Where the defect, other than a defect referred to in Article 8(2)(b), is not timely remedied, the international design application shall be considered abandoned. Failure to timely remedy a defect referred to in Article 8(2)(b) will result in the international design application being deemed not to contain the designation of the Contracting Party concerned. See MPEP § 2907.
With respect to an international design application filed indirectly through the office of a Contracting Party that is governed exclusively by the 1999 Geneva Act, the international filing date will be the date the international design application was received in the office of the Contracting Party, subject to Rule 14(2), and provided that the application is received by the International Bureau within the time period specified in Rule 13(3). The time period specified in Rule 13(3) is one month from the date of receipt of the application by the Contracting Party or six months from the date of receipt where the Contracting Party has notified the International Bureau that it requires security clearance before communicating the application. The United States has notified the International Bureau that it requires a security clearance. See MPEP § 2903.
2907 International Registration and Date of the International Registration [R-07.2015]
Hague Article 10
International Registration, Date of the International Registration, Publication and Confidential Copies of the
International Registration
(1) [ International Registration] The International Bureau shall register each industrial design that is the subject of an international application immediately upon receipt by it of the international application or, where corrections are invited under Article 8, immediately upon receipt of the required corrections. The registration shall be effected whether or not publication is deferred under Article 11.
(2) [ Date of the International Registration]
(a) Subject to subparagraph (b), the date of the international registration shall be the filing date of the international application.
(b) Where the international application has, on the date on which it is received by the International Bureau, an irregularity which relates to Article 5(2), the date of the international registration shall be the date on which the correction of such irregularity is received by the International Bureau or the filing date of the international application, whichever is the later.
*****
Hague Rule 15
Registration of the Industrial Design in the International Register
(1) [ Registration of the Industrial Design in the International Register] Where the International Bureau finds that the international application conforms to the applicable requirements it shall register the industrial design in the International Register and send a certificate to the holder.
(2) [ Contents of the Registration] The international registration shall contain
(i) all the data contained in the international application, except any priority claim under Rule 7(5)(c) where the date of the earlier filing is more than six months before the filing date of the international application;
(ii) any reproduction of the industrial design;
(iii) the date of the international registration;
(iv) the number of the international registration;
(v) the relevant class of the International Classification, as determined by the International Bureau.
Hague Article 5
Contents of the International Application
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(2) [ Additional Mandatory Contents of the International Application]
(a) Any Contracting Party whose Office is an Examining Office and whose law, at the time it becomes party to this Act, requires that an application for the grant of protection to an industrial design contain any of the elements specified in subparagraph (b) in order for that application to be accorded a filing date under that law may, in a declaration, notify the Director General of those elements.
(b) The elements that may be notified pursuant to subparagraph (a) are the following:
(i) indications concerning the identity of the creator of the industrial design that is the subject of that application;
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(ii) a brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application;
(iii) a claim.
(c) Where the international application contains the designation of a Contracting Party that has made a notification under subparagraph (a), it shall also contain, in the prescribed manner, any element that was the subject of that notification.
*****
If the International Bureau determines that the international design application conforms to the applicable requirements, it will register the industrial design in the International Register. See Article 10(1) and Rule 15. Pursuant to Article 10(2), the date of international registration will be the international filing date (see MPEP § 2906) unless there is an applicable requirement under Hague Agreement Article 5(2) that has not been satisfied, in which case the date of international registration will be the date that a timely correction satisfying the outstanding requirement(s) of Article 5(2) is received, or the international filing date, whichever is later.
Hague Agreement Article 5(2) sets forth additional mandatory elements of an international design application that may be required by certain Contracting Parties. Where the international design application contains the designation of a Contracting Party that has notified the International Bureau that it requires an element under Article 5(2), then the international design application must contain that element. The additional elements that may be required under Article 5(2) are: (1) an indication identifying the creator of the industrial design; (2) a brief description of the reproduction or of the characteristic features of the industrial design; and (3) a claim.
If the international design application does not comply with the applicable requirements, including any missing element required under Article 5(2), the International Bureau will invite the applicant to remedy the defect within a prescribed time limit. See Rule 14(1). Where the defect relates to a missing requirement under Article 5(2), or to a special requirement notified to the International Bureau in accordance with the Regulations under the Hague Agreement (e.g., the requirement for an oath or
declaration of the creator pursuant to Rule 8), the failure to timely comply with the invitation will result in the international design application being deemed not to contain the designation of the Contracting Party concerned. See Article 8(2)(b).
2908 Filing Date in the United States [R-07.2015]
35 U.S.C. 384 Filing date
(a) IN GENERAL.—Subject to subsection (b), the filing date of an international design application in the United States shall be the effective registration date. Notwithstanding the provisions of this part, any international design application designating the United States that otherwise meets the requirements of chapter 16 may be treated as a design application under chapter 16.
(b) REVIEW.—An applicant may request review by the Director of the filing date of the international design application in the United States. The Director may determine that the filing date of the international design application in the United States is a date other than the effective registration date. The Director may establish procedures, including the payment of a surcharge, to review the filing date under this section. Such review may result in a determination that the application has a filing date in the United States other than the effective registration date.
35 U.S.C. 381 Definitions
(a) IN GENERAL.—When used in this part, unless the context otherwise indicates—
(1) the term ‘treaty’ means the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva on July 2, 1999;
(2) the term 'regulations'—
(A) when capitalized, means the Common Regulations under the treaty; and
(B) when not capitalized, means the regulations established by the Director under this title;
(3) the terms 'designation', 'designating', and 'designate' refer to a request that an international registration have effect in a Contracting Party to the treaty;
(4) the term 'International Bureau' means the international intergovernmental organization that is recognized as the coordinating body under the treaty and the Regulations;
(5) the term 'effective registration date' means the date of international registration determined by the International Bureau under the treaty;
(6) the term 'international design application' means an application for international registration; and
(7) the term 'international registration' means the international registration of an industrial design filed under the treaty.
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(b) RULE OF CONSTRUCTION.—Terms and expressions not defined in this part are to be taken in the sense indicated by the treaty and the Regulations.
37 CFR 1.1023 Filing date of an international design application in the United States.
(a) Subject to paragraph (b) of this section, the filing date of an international design application in the United States is the date of international registration determined by the International Bureau under the Hague Agreement (35 U.S.C. 384 and 381(a)(5)).
(b) Where the applicant believes the international design application is entitled under the Hague Agreement to a filing date in the United States other than the date of international registration, the applicant may petition the Director under this paragraph to accord the international design application a filing date in the United States other than the date of international registration. Such petition must be accompanied by the fee set forth in § 1.17(f) and include a showing to the satisfaction of the Director that the international design application is entitled to such filing date.
Pursuant to 35 U.S.C. 384(a), the filing date of an international design application in the United States is the “effective registration date”, subject to review pursuant to 35 U.S.C. 384(b). The “effective registration date” means “the date of international registration determined by the International Bureau under the treaty”. See 35 U.S.C. 381(a)(5).
Pursuant to 35 U.S.C. 384(b), an applicant may request review by the Director of the filing date of the international design application in the United States. The procedure for requesting such review is set forth in 37 CFR 1.1023(b). Pursuant to 37 CFR 1.1023(b), where the applicant believes the international design application is entitled under the Hague Agreement to a filing date in the United States other than the date of international registration, the applicant may petition the Director under 37 CFR 1.1023(b) to accord the international design application a filing date in the United States other than the date of international registration. Such petition must be accompanied by the fee set forth in 37 CFR 1.17(f) and include a showing to the
satisfaction of the Director that the international design application is entitled to such filing date.
2909 Contents of the International Design Application [R-07.2015]
Hague Article 5
Contents of the International Application
(1) [ Mandatory Contents of the International Application] The international application shall be in the prescribed language or one of the prescribed languages and shall contain or be accompanied by
(i) a request for international registration under this Act;
(ii) the prescribed data concerning the applicant;
(iii) the prescribed number of copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international application, presented in the prescribed manner; however, where the industrial design is two-dimensional and a request for deferment of publication is made in accordance with paragraph (5), the international application may, instead of containing reproductions, be accompanied by the prescribed number of specimens of the industrial design;
(iv) an indication of the product or products which constitute the industrial design or in relation to which the industrial design is to be used, as prescribed;
(v) an indication of the designated Contracting Parties;
(vi) the prescribed fees;
(vii) any other prescribed particulars.
(2) [ Additional Mandatory Contents of the International Application]
(a) Any Contracting Party whose Office is an Examining Office and whose law, at the time it becomes party to this Act, requires that an application for the grant of protection to an industrial design contain any of the elements specified in subparagraph (b) in order for that application to be accorded a filing date under that law may, in a declaration, notify the Director General of those elements.
(b) The elements that may be notified pursuant to subparagraph (a) are the following:
(i) indications concerning the identity of the creator of the industrial design that is the subject of that application;
(ii) a brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application;
(iii) a claim.
(c) Where the international application contains the designation of a Contracting Party that has made a notification under subparagraph (a), it shall also contain, in the prescribed manner, any element that was the subject of that notification.
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(3) [ Other Possible Contents of the International Application] The international application may contain or be accompanied by such other elements as are specified in the Regulations.
(4) [ Several Industrial Designs in the Same International Application] Subject to such conditions as may be prescribed, an international application may include two or more industrial designs.
(5) [ Request for Deferred Publication] The international application may contain a request for deferment of publication.
Hague Rule 7
Requirements Concerning the International Application
(1) [ Form and Signature] The international application shall be presented on the official form. The international application shall be signed by the applicant.
(2) [ Fees] The prescribed fees applicable to the international application shall be paid as provided for in Rules 27 and 28.
(3) [ Mandatory Contents of the International Application] The international application shall contain or indicate
(i) the name of the applicant, given in accordance with the Administrative Instructions;
(ii) the address of the applicant, given in accordance with the Administrative Instructions;
(iii) the Contracting Party or Parties in respect of which the applicant fulfills the conditions to be the holder of an international registration;
(iv) the product or products which constitute the industrial design or in relation to which the industrial design is to be used, with an indication whether the product or products constitute the industrial design or are products in relation to which the industrial design is to be used; the product or products shall preferably be identified by using terms appearing in the list of goods of the International Classification;
(v) the number of industrial designs included in the international application, which may not exceed 100, and the number of reproductions or specimens of the industrial designs accompanying the international application in accordance with Rule 9 or 10;
(vi) the designated Contracting Parties;
(vii) the amount of the fees being paid and the method of payment, or instructions to debit the required amount of fees to an account opened with the International Bureau, and the identification of the party effecting the payment or giving the instructions.
(4) [ Additional Mandatory Contents of an International Application]
(a) With respect to Contracting Parties designated under the 1999 Act in an international application, that application shall contain, in addition to the indications referred to in paragraph (3)(iii), the indication of the applicant’s Contracting Party.
(b) Where a Contracting Party designated under the 1999 Act has notified the Director General, in accordance with Article 5(2)(a) of the 1999 Act, that its law requires one or more of the elements referred to in Article 5(2)(b) of the 1999 Act, the international application shall contain such element or elements, as prescribed in Rule 11.
(c) Where Rule 8 applies, the international application shall, as applicable, contain the indications referred to in paragraphs (2) or (3) thereof and be accompanied by any relevant statement, document, oath or declaration referred to in that Rule.
(5) [ Optional Contents of an International Application]
(a) An element referred to in item (i) or (ii) of Article 5(2)(b) of the 1999 Act or in Article 8(4)(a) of the 1960 Act may, at the option of the applicant, be included in the international application even where that element is not required in consequence of a notification in accordance with Article 5(2)(a) of the 1999 Act or in consequence of a requirement under Article 8(4)(a) of the 1960 Act.
(b) Where the applicant has a representative, the international application shall state the name and address of the representative, given in accordance with the Administrative Instructions.
(c) Where the applicant wishes, under Article 4 of the Paris Convention, to take advantage of the priority of an earlier filing, the international application shall contain a declaration claiming the priority of that earlier filing, together with an indication of the name of the Office where such filing was made and of the date and, where available, the number of that filing and, where the priority claim relates to less than all the industrial designs contained in the international application, the indication of those industrial designs to which the priority claim relates or does not relate.
(d) Where the applicant wishes to take advantage of Article 11 of the Paris Convention, the international application shall contain a declaration that the product or products which constitute the industrial design or in which the industrial design is incorporated have been shown at an official or officially recognized international exhibition, together with the place where the exhibition was held and the date on which the product or products were first exhibited there and, where less than all the industrial designs contained in the international application are concerned, the indication of those industrial designs to which the declaration relates or does not relate.
(e) Where the applicant wishes that publication of the industrial design be deferred, the international application shall contain a request for deferment of publication.
(f) The international application may also contain any declaration, statement or other relevant indication as may be specified in the Administrative Instructions.
(g) The international application may be accompanied by a statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned.
(6) [ No Additional Matter] If the international application contains any matter other than that required or permitted by the
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1999 Act, the 1960 Act, these Regulations or the Administrative Instructions, the International Bureau shall delete it ex officio. If the international application is accompanied by any document other than those required or permitted, the International Bureau may dispose of the said document.
(7) [All Products to Be in Same Class] All the products which constitute the industrial designs to which an international application relates, or in relation to which the industrial designs are to be used, shall belong to the same class of the International Classification.
35 U.S.C. 383 International design application.
In addition to any requirements pursuant to chapter 16, the international design application shall contain—
(1) a request for international registration under the treaty;
(2) an indication of the designated Contracting Parties;
(3) data concerning the applicant as prescribed in the treaty and the Regulations;
(4) copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international design application, presented in the number and manner prescribed in the treaty and the Regulations;
(5) an indication of the product or products that constitute the industrial design or in relation to which the industrial design is to be used, as prescribed in the treaty and the Regulations;
(6) the fees prescribed in the treaty and the Regulations; and
(7) any other particulars prescribed in the Regulations.
37 CFR 1.1021 Contents of the international design application.
(a) Mandatory contents. The international design application shall be in English, French, or Spanish (Rule 6(1)) and shall contain or be accompanied by:
(1) A request for international registration under the Hague Agreement (Article 5(1)(i));
(2) The prescribed data concerning the applicant (Article 5(1)(ii) and Rule 7(3)(i) and (ii));
(3) The prescribed number of copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international design application, presented in the prescribed manner; however, where the industrial design is two-dimensional and a request for deferment of publication is made in accordance with Article 5(5), the international design application may, instead of containing reproductions, be accompanied by the prescribed number of specimens of the industrial design (Article 5(1)(iii));
(4) An indication of the product or products that constitute the industrial design or in relation to which the
industrial design is to be used, as prescribed (Article 5(1)(iv) and Rule 7(3)(iv));
(5) An indication of the designated Contracting Parties (Article 5(1)(v));
(6) The prescribed fees (Article 5(1)(vi) and Rule 12(1));
(7) The Contracting Party or Parties in respect of which the applicant fulfills the conditions to be the holder of an international registration (Rule 7(3)(iii));
(8) The number of industrial designs included in the international design application, which may not exceed 100, and the number of reproductions or specimens of the industrial designs accompanying the international design application (Rule 7(3)(v));
(9) The amount of the fees being paid and the method of payment, or instructions to debit the required amount of fees to an account opened with the International Bureau, and the identification of the party effecting the payment or giving the instructions (Rule 7(3)(vii)); and
(10) An indication of applicant’s Contracting Party as required under Rule 7(4)(a).
(b) Additional mandatory contents required by certain Contracting Parties.
(1) Where the international design application contains the designation of a Contracting Party that requires, pursuant to Article 5(2), any of the following elements, then the international design application shall contain such required element(s):
(i) Indications concerning the identity of the creator of the industrial design that is the subject of that application (Rule 11(1));
(ii) A brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application (Rule 11(2));
(iii) A claim (Rule 11(3)).
(2) Where the international design application contains the designation of a Contracting Party that has made a declaration under Rule 8(1), then the international application shall contain the statement, document, oath or declaration specified in that declaration (Rule 7(4)(c)).
(c) Optional contents. The international design application may contain:
(1) Two or more industrial designs, subject to the prescribed conditions (Article 5(4) and Rule 7(7));
(2) A request for deferment of publication (Article 5(5) and Rule 7(5)(e)) or a request for immediate publication (Rule 17);
(3) An element referred to in item (i) or (ii) of Article 5(2)(b) of the Hague Agreement or in Article 8(4)(a) of the 1960 Act even where that element is not required in consequence of a notification in accordance with Article 5(2)(a) of the Hague Agreement or in consequence of a requirement under Article 8(4)(a) of the 1960 Act (Rule 7(5)(a));
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(4) The name and address of applicant’s representative, as prescribed (Rule 7(5)(b));
(5) A claim of priority of one or more earlier filed applications in accordance with Article 6 and Rule 7(5)(c);
(6) A declaration, for purposes of Article 11 of the Paris Convention, that the product or products which constitute the industrial design or in which the industrial design is incorporated have been shown at an official or officially recognized international exhibition, together with the place where the exhibition was held and the date on which the product or products were first exhibited there and, where less than all the industrial designs contained in the international design application are concerned, the indication of those industrial designs to which the declaration relates or does not relate (Rule 7(5)(d));
(7) Any declaration, statement or other relevant indication as may be specified in the Administrative Instructions (Rule 7(5)(f));
(8) A statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned (Rule 7(5)(g));
(9) A proposed translation of any text matter contained in the international design application for purposes of recording and publication (Rule 6(4)).
(d) Required contents where the United States is designated. In addition to the mandatory requirements set forth in paragraph (a) of this section, an international design application that designates the United States shall contain or be accompanied by:
(1) A claim (§§ 1.1021(b)(1)(iii) and 1.1025);
(2) Indications concerning the identity of the creator (i.e., the inventor, see § 1.9(d)) in accordance with Rule 11(1); and
(3) The inventor's oath or declaration (§§ 1.63 and 1.64). The requirements in §§ 1.63(b) and 1.64(b)(4) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, and the requirement in § 1.64(b)(2) to identify the residence and mailing address of the person signing the substitute statement, will be considered satisfied by the presentation of such information in the international design application prior to international registration
The elements of an international design application fall into three categories: (1) mandatory contents; (2) additional mandatory contents; and (3) optional contents.
I. MANDATORY CONTENTS
Mandatory contents are those items required in all international design applications. Such contents are set forth in Article 5(1) and Rule 7 of the Hague
Agreement and 37 CFR 1.1021(a). Specifically, the international design application must be in English, French, or Spanish, it must be presented on the official form (see MPEP § 2909.01) and signed by the applicant, and it must include: (1) a request for international registration under the Hague Agreement; (2) the prescribed data concerning the applicant; (3) the prescribed number of copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international design application, presented in the prescribed manner (where the industrial design is two-dimensional and a request for deferment of publication is made in accordance with Article 5(5) of the Hague Agreement, the international design application may, instead of containing reproductions, be accompanied by the prescribed number of specimens of the industrial design); (4) an indication of the product or products that constitute the industrial design or in relation to which the industrial design is to be used, as prescribed; (5) an indication of the designated Contracting Parties; (6) the prescribed fees; (7) the Contracting Party or Parties in respect of which the applicant fulfills the conditions to be the holder of an international registration; (8) the number of industrial designs included in the international application, which may not exceed 100, and the number of reproductions or specimens of the industrial designs accompanying the international application; (9) the amount of the fees being paid and the method of payment or instructions to debit the required amount of fees to an account opened with the International Bureau and the identification of the party effecting the payment or giving the instructions; and (10) an indication of applicant’s Contracting Party as required under Rule 7(4)(a).
II. ADDITIONAL MANDATORY CONTENTS
Additional mandatory contents are elements that are required by certain Contracting Parties and therefore are mandatory in any international design application that designates such Contracting Parties (see Article 5(2) and Rule 7 of the Hague Agreement and 37 CFR 1.1021(b)). Such additional mandatory contents may consist of, pursuant to Article 5(2) of the Hague Agreement, indications concerning the identity of the creator, a brief description of the reproduction or of the characteristic features of the industrial
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design, (iii) a claim, and/or, pursuant to Rule 8(1) of the Hague Agreement, a statement, document, oath, or declaration.
III. OPTIONAL CONTENTS
Optional contents are items that may be included in an international design application. Optional contents are addressed in Rule 7(5) of the Hague Agreement and 37 CFR 1.1021(c) and may include: (1) two or more industrial designs, subject to the prescribed conditions; (2) a request for deferment of publication or a request for immediate publication; (3) any of the additional mandatory elements discussed above, even if such elements are not required by any Contracting Party designated in the international design application; (4) the name and address of applicant’s representative, as prescribed; (5) a claim of priority of one or more earlier filed applications; (6) a declaration, for purposes of Article 11 of the Paris Convention, that the product or products that constitute the industrial design, or in which the industrial design is incorporated, have been shown at an official or officially recognized international exhibition, together with the place where the exhibition was held and the date on which the product or products were first exhibited there and, where less than all the industrial designs contained in the international application are concerned, the indication of those industrial designs to which the declaration relates or does not relate; (7) any declaration, statement, or other relevant indication as may be specified in the Administrative Instructions; (8) a statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned; and (9) a proposed translation of any text matter contained in the international application for purposes of recording and publication.
IV. REQUIRED CONTENTS WHERE THE UNITED STATES IS DESIGNATED
As set forth in 37 CFR 1.1021(d), in addition to the mandatory requirements otherwise required for international design applications, an international design application designating the United States must also include: (1) a claim (37 CFR 1.1021(b)(1)(iii) and 37 CFR 1.1025); (2) indications
concerning the identity of the creator (i.e., the inventor, see 37 CFR 1.9(d)) in accordance with Rule 11(1); and (3) the inventor’s oath or declaration (37 CFR 1.63 and 1.64).
A claim is a filing date requirement for design applications in the United States. See 35 U.S.C. 171. The United States has declared, pursuant to Article 5(2), that an international design application designating the United States must contain a claim. See MPEP § 2903. Consequently, an international design application designating the United States that does not contain a claim will not be registered by the International Bureau in the international register and thus will not be entitled to a filing date in the United States. See MPEP §§ 2907 and 2908. In such case, the International Bureau will invite the applicant to submit the claim within a prescribed time limit and will accord a date of international registration as of the date of receipt of the claim (assuming there are no other defects). Failure to timely submit the claim in response to the invitation by the International Bureau will result in the application being deemed not to contain the designation of the United States. See Article 8(2)(b).
Pursuant to Rule 8(1), the United States has declared that an international design application designating the United States must contain an oath or declaration of the creator and indications concerning the identity of the creator. See MPEP § 2903. The requirements for the inventor’s oath or declaration are set forth in 37 CFR 1.63 and 1.64. 37 CFR 1.1021(d) further provides that the requirements in 37 CFR 1.63(b) and 1.64(b)(4) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, and the requirement in 37 CFR 1.64(b)(2) to identify the residence and mailing address of the person signing the substitute statement will be considered satisfied by the presentation of such information in the international design application prior to international registration. If the inventor’s oath or declaration has not been filed, the International Bureau will invite the applicant to submit the inventor’s oath or declaration within a prescribed time limit. Failure to timely submit the inventor’s oath or declaration in response to the invitation by the International Bureau will result in
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the application being deemed not to contain the designation of the United States. See Article 8(2)(b).
An international design application designating the United States must include a specification as prescribed by 35 U.S.C. 112 and preferably include a brief description of the reproductions pursuant to Rule 7(5)(a) describing the view or views of the reproductions. See 37 CFR 1.1024. The Office encourages applicants filing international design applications that designate the United States to include a brief description in the application describing the views of the reproductions, as such description is helpful for examination and may, in some cases, help avoid issues concerning the scope of the claimed design or sufficiency of disclosure. Furthermore, a description of the view or views of the reproductions may be required by the Office in a nonprovisional international design application, as defined by 37 CFR 1.9(a)(3), pursuant to 37 CFR 1.1067. See MPEP § 2920.04(a), subsection II.
An international design application designating the United States may not contain a request for deferment of publication. See 37 CFR 1.1028. In addition, specimens are not permitted in international design applications designating the United States. See 37 CFR 1.1027.
2909.01 Official Form for the Application for International Registration [R-07.2015]
37 CFR 1.1022 Form and signature
(a) The international design application shall be presented on the official form (Rules 7(1) and 1(vi)).
(b) The international design application shall be signed by the applicant.
Hague Rule 7
Requirements Concerning the International Application
(1) [ Form and Signature] The international application shall be presented on the official form. The international application shall be signed by the applicant.
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Hague Rule 1
Definitions
(1) [ Abbreviated Expressions] For the purposes of these Regulations,
*****
(vi) “official form” means a form established by the International Bureau or an electronic interface made available by the International Bureau on the web site of the Organization, or any form or electronic interface having the same contents and format;
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The international design application must be presented on the “official form.” Pursuant to Hague Agreement Rule 1(vi), “official form” means a form established by the International Bureau or an electronic interface made available by the International Bureau on the website of the Organization, or any form or electronic interface having the same contents and format. The form established by the International Bureau for filing an international design application is the form DM/1, “Application for International Registration”. The DM/1 form and instructions for completing the form are currently available on the website of the I n t e r n a t i o n a l B u r e a u a t www.wipo.int/hague/en/forms/.
Proper usage of the DM/1 form will help ensure that the mandatory, additional mandatory and optional content items for an international design application are present upon filing. Form DM/1 provides applicant with specific spaces to set forth: (1) information concerning the applicant; (2) a correspondence address for the International Bureau where there are multiple applicants and no appointed representative; (3) applicant’s entitlement to file an international design application; (4) applicant’s Contracting Party; (5) the appointed representative; (6) information concerning the creator; (7) the number of industrial designs and reproductions included in the application; (8) the applicable product and Locarno classification (MPEP § 907); (9) a brief description; (10) a claim; (11) the designated Contracting Parties; (12) any priority claim; (13) information regarding any international exhibition where any of the designs was shown; (14) a request for immediate or deferred publication; and (15) the signature of the applicant or the applicant’s representative. The DM/1 form also includes a “Payment of Fees” section that allows the applicant to identity the method of payment and to instruct the International Bureau to debit the required fees to a
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current account established with the International Bureau.
2909.02 Reproductions (Drawings) [R-07.2015]
37 CFR 1.1026 Reproductions
Reproductions shall comply with the requirements of Rule 9 and Part Four of the Administrative Instructions.
Hague Rule 9
Reproductions of the Industrial Design
(1) [ Form and Number of Reproductions of the Industrial Design]
(a) Reproductions of the industrial design shall, at the option of the applicant, be in the form of photographs or other graphic representations of the industrial design itself or of the product or products which constitute the industrial design. The same product may be shown from different angles; views from different angles shall be included in different photographs or other graphic representations.
(b) Any reproduction shall be submitted in the number of copies specified in the Administrative Instructions.
(2) [ Requirements Concerning Reproductions]
(a) Reproductions shall be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication.
(b) Matter which is shown in a reproduction but for which protection is not sought may be indicated as provided for in the Administrative Instructions.
(3) [ Views Required]
(a) Subject to subparagraph (b), any Contracting Party bound by the 1999 Act which requires certain specified views of the product or products which constitute the industrial design or in relation to which the industrial design is to be used shall, in a declaration, so notify the Director General, specifying the views that are required and the circumstances in which they are required.
(b) No Contracting Party may require more than one view where the industrial design or product is two-dimensional, or more than six views where the product is three-dimensional.
(4) [ Refusal on Grounds Relating to the Reproductions of the Industrial Design] A Contracting Party may not refuse the effects of the international registration on the ground that requirements relating to the form of the reproductions of the industrial design that are additional to, or different from, those notified by that Contracting Party in accordance with paragraph (3)(a) have not been satisfied under its law. A Contracting Party may however refuse the effects of the international registration on the ground that the reproductions contained in the international registration are not sufficient to disclose fully the industrial design.
Administrative instructions concerning reproductions contained in Part Four of the Administrative Instructions for the Application of the Hague Agreement ("Administrative Instructions") are set forth below:
Hague Administrative Instructions Section 401:
Presentation of Reproductions
(a) One and the same international application may comprise both photographs and other graphic representations, in black and white or in color.
(b) Each reproduction accompanying an international application shall be submitted in a single copy.
(c) The photographs or other graphic representations accompanying an international application filed on paper shall be either pasted or printed directly onto a separate sheet of A4 paper which is white and opaque. The separate sheet of paper shall be used upright and shall not contain more than 25 reproductions.
(d) The reproductions accompanying an international application must be arranged in the orientation in which the applicant wishes them to be published. Where that application is filed on paper, a margin of at least 5 millimeters should be left around the representation of each industrial design.
(e) Each reproduction must fall within a right-angled quadrilateral containing no other reproduction or part of another reproduction and no numbering. The photographs or other graphic representations shall not be folded, stapled or marked in any way.
Hague Administrative Instructions Section 402
Representation of the Industrial Design
(a) The photographs and other graphic representations shall represent the industrial design alone, or the product in relation to which the industrial design is to be used, to the exclusion of any other object, accessory, person or animal.
(b) The dimensions of the representation of each industrial design appearing in a photograph or other graphic representation may not exceed 16 x 16 centimeters, and in respect of at least one representation of each design, one of those dimensions must be at least 3 centimeters. With respect to the filing of international applications by electronic means, the International Bureau may establish a data format, the particulars of which shall be published on the web site of the Organization, to ensure compliance with these maximum and minimum dimensions.
(c) The following shall not be accepted:
(i) technical drawings, particularly with axes and dimensions;
(ii) explanatory text or legends in the representation.
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Hague Administrative Instructions Section 403
Disclaimers and Matter That Does Not Form Part of the Industrial Design or the Product in Relation to Which the
Industrial Design is to be Used
(a) Matter which is shown in a reproduction but for which protection is not sought may be indicated
(i) in the description referred to in Rule 7(5)(a) and/or
(ii) by means of dotted or broken lines or coloring.
(b) Notwithstanding Section 402(a), matter that does not form part of the industrial design or the product in relation to which the industrial design is to be used may be shown in a reproduction if it is indicated in accordance with paragraph (a).
Hague Administrative Instructions Section 404
Requirements for Photographs and Other Graphic Representations
(a) The photographs supplied must be of professional standard and have all the edges cut at right angles. The industrial design must be shown against a neutral plain background. Photographs retouched with ink or correcting fluid shall not be allowed.
(b) Graphic representations must be of professional standard produced with drawing instruments or by electronic means and, where the application is filed on paper, must further be produced on good quality white, opaque paper, all of whose edges are cut at right angles. The industrial design represented may comprise shading and hatching to provide relief. Graphic representations executed by electronic means may be shown against a background, provided that it is neutral and plain and has only edges cut at right angles.
Hague Administrative Instructions Section 405
Numbering of Reproductions and Legends
(a) The numbering stipulated for multiple international applications shall appear in the margin of each photograph or other graphic representation. When the same industrial design is represented from different angles, the numbering shall consist of two separate figures separated by a dot (e.g., 1.1, 1.2, 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so on).
(b) The reproductions shall be submitted in ascending numerical order.
(c) Legends to indicate a specific view of the product (e.g., “front view”, “top view”, etc.) may be indicated in association with the numbering of the reproduction.
Reproductions in international design applications must comply with the requirements of Hague Agreement Rule 9 and Part Four of the Administrative Instructions. See 37 CFR 1.1026.
Pursuant to Rule 9, the reproductions of the industrial design shall, at the option of the applicant, be in the
form of photographs or other graphic representations of the industrial design itself or of the product or products which constitute the industrial design. The same product may be shown from different angles; views from different angles shall be included in different photographs or other graphic representations. Pursuant to Administrative Instruction 401, only a single copy of each reproduction should be submitted.
The reproductions must be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication. See Rule 9(2). The reproductions should represent the industrial design alone, or the product in relation to which the industrial design is to be used, without any other object, accessory, person, or animal. However, the reproduction may show matter for which protection is not sought if such matter is indicated as provided for in Administrative Instruction 403.
Pursuant to Rule 9(3)(a), a Contracting Party may require certain specified views of the product or products which constitute the industrial design or in relation to which the industrial design is to be used, if the Contracting Party has appropriately notified the International Bureau of the required views and the circumstances under which they are required. Information concerning specified views required by a Contracting Party pursuant to Rule 9(3)(a) is set forth in the section “Specific Requirements Concerning Views” of WIPO form DM/1.INF, “How to file an international application” currently avai lable a t WIPO’s websi te a t www.wipo.int/hague/en/forms/.
Additional formal requirements for the reproductions (e.g., margins, paper, backgrounds, etc.) are set forth in the Administrative Instructions. In addition, technical requirements regarding image files, such as resolution, minimum and maximum image size, border width, etc., are set forth on the website of the International Bureau at www.wipo.int/ hague/en/how_to/file/ prepare.html. Reproductions may be filed through the USPTO as an office of indirect filing via EFS-Web as PDF or JPEG files
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in accordance with the EFS-Web Legal Framework. See MPEP §§ 502.05 and 2909.02(a).
2909.02(a) Reproductions Submitted Through EFS-Web [R-07.2015]
Reproductions of industrial designs are required in international design applications and may be submitted as drawings, photographs, or a combination thereof, and may be in black and white or in color. See Rule 9 and Part Four of the Administrative Instructions for the Application of the Hague Agreement. Reproductions may be submitted through EFS-Web as PDF or JPEG files as set forth below. Technical requirements regarding image files, such as resolution, minimum and maximum image size, border width, etc., are also set forth on the website of the International Bureau at www.wipo.int/hague/en/how_to/file/ prepare.html.
Reproductions may be submitted as single page PDF or JPEG files by attaching the file(s) using the “Attach Reproductions” section of the “Attach Documents” screen. Alternatively, applicants may attach reproductions as PDFs (including multi-page PDFs) using the “Attach Documents other than Reproductions” section of the “Attach Documents” screen. Attaching compliant reproductions via the “Attach Reproductions” section, rather than the “Attach Documents other than Reproductions” section, may help to avoid incurring additional per page publication fees that might otherwise be required by the International Bureau. Each image file attached through the “Attach Reproductions” section should contain only one view of the design. The “Attach Reproductions” section will prompt the user to assign a design and view number to each file attached under this section.
In accordance with the technical requirements set forth by the International Bureau, EFS-Web will not permit submission of any PDF or JPEG file via the “Attach Reproductions” section that exceeds a file size of two megabytes. For JPEG submissions, EFS-Web will provide warnings where requirements pertaining to image resolution and minimum and maximum dimensions have not been satisfied; EFS-Web does not check color mode or border size for JPEG images. For PDF submissions via the
“Attach Reproductions” section, EFS-Web will not permit submission of any PDF file that is more than one page. In addition, EFS-Web does not check color mode, border size, resolution, or maximum or minimum dimensions of the reproduction (other than certain minimum and maximum page size dimensions) for PDF images. It is the responsibility of applicants to ensure that reproductions satisfy all applicable requirements.
Users attaching reproductions under either the “Attach Reproductions” section or the “Attach Documents other than Reproductions” section should use the document description “drawings – only black and white line drawings” or “drawing – other than black and white line drawings”, as appropriate. EFS-Web will provide a warning to users about the possibility of incurring additional per page publication fees where reproductions are attached via the “Attach Documents other than Reproductions” section. EFS-Web will also provide a warning to users where a new international design application does not contain an indication that at least one reproduction is attached. See MPEP § 502.05 for additional information on using EFS-Web.
2909.03 Annexes [R-07.2015]
Annexes to the DM/1 form are used to provide certain required or optional items relevant to a particular designated Contracting Party.Annex forms specific to particular Contracting Parties are currently available on the website of the International Bureau at www.wipo.int/hague/en/forms/.
Annex forms specific to the designation of the United States include annexes for submitting the inventor’s oath or declaration, an information disclosure statement, and a certification of micro entity status.
2910 International Design Application Fees [R-07.2015]
37 CFR 1.1031 International design application fees.
(a) International design applications filed through the Office as an office of indirect filing are subject to payment of a transmittal fee (35 U.S.C. 382(b) and Article 4(2)) in the amount of $120.
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(b) The Schedule of Fees annexed to the Regulations (Rule 27(1)), a list of individual designation fee amounts, and a fee calculator may be viewed on the Web site of the World Intellectual Property Organization, currently available at http://www.wipo.int/hague.
(c) The following fees required by the International Bureau may be paid either directly to the International Bureau or through the Office as an office of indirect filing in the amounts specified on the World Intellectual Property Organization Web site described in paragraph (b) of this section:
(1) International application fees (Rule 12(1)); and
(2) Fee for descriptions exceeding 100 words (Rule 11(2)).
(d) The fees referred to in paragraph (c) of this section may be paid as follows:
(1) Directly to the International Bureau in Swiss currency (see Administrative Instruction 801); or
(2) Through the Office as an office of indirect filing, provided such fees are paid no later than the date of payment of the transmittal fee required under paragraph (a) of this section. Any payment through the Office must be in U.S. dollars. Applicants paying the fees in paragraph (c) of this section through the Office may be subject to a requirement by the International Bureau to pay additional amounts where the conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts.
(e) Payment of the fees referred to in Article 17 and Rule 24 for renewing an international registration (“renewal fees”) is not required to maintain a U.S. patent issuing on an international design application in force. Renewal fees, if required, must be submitted directly to the International Bureau. Any renewal fee submitted to the Office will not be transmitted to the International Bureau.
Hague Agreement Rule 12
Fees Concerning the International Application
(1) [ Prescribed Fees]
(a) The international application shall be subject to the payment of the following fees:
(i) a basic fee;
(ii) a standard designation fee in respect of each designated Contracting Party that has not made a declaration under Article 7(2) of the 1999 Act or under Rule 36(1), the level of which will depend on a declaration made under subparagraph (c);
(iii) an individual designation fee in respect of each designated Contracting Party that has made a declaration under Article 7(2) of the 1999 Act or under Rule 36(1);
(iv) a publication fee.
(b) The level of the standard designation fee referred to in subparagraph (a)(ii) shall be as follows:
(i) for Contracting Parties whose office does not carry out any examination on substantive ground:………………………………….one
(ii) for Contracting Parties whose office carries out examination on substantive grounds, other than as to novelty: ………………….two
(iii) for Contracting Parties whose office carries out examination on substantive grounds, including examination as to novelty either ex officio or following opposition by third parties: ……………………………three
(c)
(i) Any Contracting Party whose legislation entitles it to the application of level two or three under subparagraph (b) may, in a declaration, notify the Director General accordingly. A Contracting Party may also, in its declaration, specify that it opts for the application of level two, even if its legislation entitles it to the application of level three.
(ii) Any declaration made under item (i) shall take effect three months after its receipt by the Director General or at any later date indicated in the declaration. It may also be withdrawn at any time by notification addressed to the Director General, in which case such withdrawal shall take effect one month after its receipt by the Director General or at any later date indicated in the notification. In the absence of such a declaration, or where a declaration has been withdrawn, level one will be deemed to be the level applicable to the standard designation fee in respect of that Contracting Party.
(2) [ When Fees to Be Paid] The fees referred to in paragraph (1) are, subject to paragraph (3), payable at the time of filing the international application, except that, where the international application contains a request for deferment of publication, the publication fee may be paid later, in accordance with Rule 16(3)(a).
(3) [ Individual Designation Fee Payable in Two Parts]
(a) A declaration under Article 7(2) of the 1999 Act or under Rule 36(1) may also specify that the individual designation fee to be paid in respect of the Contracting Party concerned comprises two parts, the first part to be paid at the time of filing the international application and the second part to be paid at a later date which is determined in accordance with the law of the Contracting Party concerned.
*****
Pursuant to Hague Agreement Rule 12, an international design application is subject to the following fees: (1) basic fee; (2) standard designation fee(s); (3) individual designation fee(s); and (4) publication fee. Also, pursuant to Hague Agreement Rule 11(2), an additional fee is required where the application contains a description that exceeds 100 words. In addition, a transmittal fee is required for
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§ 2910INTERNATIONAL DESIGN APPLICATIONS
an international design application filed through the USPTO as an office of indirect filing.
The International Bureau provides a Fee Calculator where users can input the appropriate data concerning their international design applications, and the Fee Calculator will determine the total amount of fees required (excluding any required transmittal fee) in Swiss currency. See www.wipo.int/hague/en/fees/calculator.jsp.
I. TRANSMITTAL FEE
International design applications filed through the USPTO as an office of indirect filing are subject to payment of a transmittal fee. See 37 CFR 1.1031(a). Payment of the transmittal fee must be in U.S. dollars. The USPTO will not transmit the international design application to the International Bureau if the transmittal fee has not been paid. See 37 CFR 1.1045. Applicants are cautioned that an international design application not received by the International Bureau within six months from the date the international design application is received by the USPTO will not be entitled to a filing date as of the date of receipt of the application by the USPTO. See Hague Agreement Rule 13.
II. BASIC FEE, PUBLICATION FEE, AND DESIGNATION FEES
The amount of the basic fee (Rule 12(1)(i)) is set forth in the Schedule of Fees and is dependent upon the number of designs included in the international design application. The amount of the publication fee (Rule 12(1)(iv)) is also set forth in the Schedule of Fees and is dependent upon the number of reproductions to be published and the form in which the reproductions are submitted. The Schedule of Fees is currently available on the website of the I n t e r n a t i o n a l B u r e a u a t www.wipo.int/hague/en/fees/sched.htm.
A separate designation fee applies with respect to each Contracting Party designated in an international design application. The standard designation fee (Rule 12(1)(ii)) applies with respect to the designation of any Contracting Party that has not specifically set an individual designation fee. The standard designation fee varies between levels 1-3,
depending on the form of examination performed by each designated Contracting Party and on any specific agreement between such Contracting Party and the International Bureau. The standard designation fees are set forth in the Schedule of Fees.
The individual designation fee (Rule 12(1)(iii)) applies where an application designates a Contracting Parties that has made a declaration under Article 7(2) of the Hague Agreement setting an individual designation fee.
The United States has made a declaration under Article 7(2) and requires an individual designation fee that is payable in a first part at filing and second part payable upon allowance of the application by the USPTO. See MPEP §§ 2903 and 2920.06. The first and second parts of the individual designation fee for the United States are discounted for small and micro entities. See 37 CFR 1.27 and MPEP §§ 509.02 and 509.03 for requirements for establishing small entity status, and 37 CFR 1.29 and MPEP § 509.04 for requirements for establishing micro entity status. With respect to international design applications, the payment by any party of the small entity first part of the individual designation fee for the United States to the International Bureau will be treated as a written assertion of entitlement to small entity status. See 37 CFR 1.27(c)(3). In addition, a micro entity certification may be signed by a person authorized to represent the applicant in the international design application under 37 CFR 1.1041 before the International Bureau where the micro entity certification is filed with the International Bureau. See 37 CFR 1.28(e).
Individual designation fees are set forth on the website of the International Bureau. See www.wipo.int/hague/en/fees/individ-fee.html.
The Fee Calculation Sheet included with the DM/1 form also specifies the amount of the basic fee, publication fee, designation fees, and the additional fee where the description exceeds 100 words. Also included is a listing of the level of the standard designation fee applicable to respective Contracting Parties.
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III. PAYMENT OF FEES THROUGH THE USPTO WHEN APPLICATION FILED THROUGH USPTO AS AN OFFICE OF INDIRECT FILING
Certain international fees payable to the International Bureau may be paid through the USPTO as an office of indirect filing, provided such fees are paid no later than the date of payment of the transmittal fee. See 37 CFR 1.1031(c). Applicants are not required to pay such fees through the USPTO but rather may pay such fees directly to the International Bureau. Furthermore, any payment of such fees through the USPTO must be in U.S. dollars. As all payments made to the International Bureau must be in Swiss currency, the U.S. dollar amount collected may, when converted to Swiss currency, be different than the required Swiss currency amount. Accordingly, applicants are cautioned that paying such international fees through the USPTO may still result in a requirement by the International Bureau to pay additional amounts where the conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts. Any payment in response to an invitation from the International Bureau requiring additional fees must be made directly to the International Bureau within the period set in the invitation to avoid abandonment of the application pursuant to Article 8 of the Hague Agreement. To avoid receiving an invitation from the International Bureau requiring additional fees, applicants may wish to consider including authorization in the fee payment section of the DM/1 form to allow the International Bureau to debit the required fees to a current account established with the International Bureau. See Administrative Instruction 801 and MPEP § 2909.01.
Applicant may charge international design application fees to a USPTO deposit account when filing an international design application through the USPTO as an office of indirect filing. However, a general authorization to charge such fees will only be effective with respect to the transmittal fee required under 37 CFR 1.1031(a). See 37 CFR 1.25. In addition, international design application fees may not be paid through the USPTO after the date of payment of the transmittal fee. See 37 CFR 1.1031(c). Nor may any renewal fees referred to in Hague Agreement Rule 24 for renewing an
international registration be paid through the USPTO. See 37 CFR 1.1031(e).
2911 Representation [R-07.2015]
37 CFR 1.1041 Representation in an international design application.
(a) The applicant may appoint a representative before the International Bureau in accordance with Rule 3.
(b) Applicants of international design applications may be represented before the Office as an office of indirect filing by a practitioner registered (§ 11.6) or granted limited recognition (§§ 11.9(a) or (b)) to practice before the Office in patent matters. Such practitioner may act pursuant to § 1.34 or pursuant to appointment by the applicant. The appointment must be in writing signed by the applicant, must give the practitioner power to act on behalf of the applicant, and must specify the name and registration number or limited recognition number of each practitioner. An appointment of a representative made in the international design application pursuant to Rule 3(2) that complies with the requirements of this paragraph will be effective as an appointment before the Office as an office of indirect filing.
Hague Rule 3
Representation Before the International Bureau
(1) [ Representative; Number Representatives]
(a) The applicant or the holder may have a representative before the International Bureau.
(b) Only one representative may be appointed in respect of a given international application or international registration. Where the appointment indicates several representatives, only the one indicated first shall be considered to be a representative and be recorded as such.
(c) Where a partnership or firm composed of attorneys or patent or trademark agents has been indicated as representative to the International Bureau, it shall be regarded as one representative.
(2) [ Appointment of the Representative]
(a) The appointment of a representative may be made in the international application, provided that the application is signed by the applicant.
(b) The appointment of a representative may also be made in a separate communication which may relate to one or more specified international applications or international registrations of the same applicant or holder. The said communication shall be signed by the applicant or the holder.
(c) Where the International Bureau considers that the appointment of a representative is irregular, it shall notify accordingly the applicant or holder and the purported representative.
*****
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§ 2911INTERNATIONAL DESIGN APPLICATIONS
Rule 3 of the Hague Agreement provides for the appointment by the applicant of a representative before the International Bureau. Rule 3 does not provide for any requirement as to professional qualification, nationality, or domicile regarding who may be appointed to represent the applicant before the International Bureau. The appointment may be made in the international design application or in a separate communication. See Rule 3(2).
With respect to representation before the USPTO as an office of indirect filing, 37 CFR 1.1041(b) provides that applicants of international design applications may be represented before the Office as an office of indirect filing by a practitioner registered (37 CFR 11.6) or granted limited recognition (37 CFR 11.9(a) or (b)) to practice before the Office (37 CFR 11.6). Such practitioner may act pursuant to 37 CFR 1.34 or pursuant to appointment by the applicant. The appointment must be in writing signed by the applicant, must give the practitioner power to act on behalf of the applicant, and must specify the name and registration number or limited recognition number of each practitioner. An appointment of a representative made in the international design application pursuant to Rule 3(2) that complies with the requirements of 37 CFR 1.1041(b) will be effective as an appointment before the Office as an office of indirect filing. For purposes of representation before the Office during prosecution of an international design application that became a national application (see 37 CFR 1.9(a)(1)), the regulations governing national applications shall apply. See 37 CFR 1.1061(a).
2912 Correspondence in Respect of International Design Applications Filed With the USPTO as an Office of Indirect Filing [R-07.2015]
37 CFR 1.1042 Correspondence respecting international design applications filed with the Office as an office of indirect filing.
The applicant may specify a correspondence address for correspondence sent by the Office as an office of indirect filing. Where no such address has been specified, the Office will use as the correspondence address the address of applicant’s appointed representative (§ 1.1041) or, where no representative is appointed, the address as specified in Administrative Instruction 302.
Hague Administrative Instructions Section 302
Address for Correspondence
Where there are two or more applicants or new owners with different addresses and no representative is appointed, one address for correspondence shall be indicated. Where no such address has been indicated, the address of the person named first shall be treated as the address for correspondence.
Pursuant to 37 CFR 1.1042, the applicant may specify a correspondence address for correspondence sent by the USPTO as an office of indirect filing. The official form (DM/1 form) used for filing an international design application includes boxes for specifying an address to be used for correspondence sent by the International Bureau. See MPEP § 2909.01. Applicants may specify a different address than specified on the DM/1 form for the purpose of correspondence sent by the USPTO as an office of indirect filing. Where no such address has been specified, the Office will use as the correspondence address of applicant’s appointed representative (see 37 CFR 1.1041) or, where no representative is appointed, the address as specified in section 302 of the Administrative Instructions.
2913 Relief from Prescribed Time Limits [R-07.2015]
35 U.S.C. 387 Relief from prescribed time limits.
An applicant’s failure to act within prescribed time limits in connection with requirements pertaining to an international design application may be excused as to the United States upon a showing satisfactory to the Director of unintentional delay and under such conditions, including a requirement for payment of the fee specified in section 41(a)(7), as may be prescribed by the Director.
37 CFR 1.1051 Relief from prescribed time limits.
(a) If the delay in an applicant's failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application was unintentional, a petition may be filed pursuant to this section to excuse the failure to act as to the United States. A grantable petition pursuant to this section must be accompanied by:
(1) A copy of any invitation sent from the International Bureau setting a prescribed time limit for which applicant failed to timely act;
(2) The reply required under paragraph (c) of this section, unless previously filed;
(3) The fee as set forth in § 1.17(m);
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(4) A certified copy of the originally filed international design application, unless a copy of the international design application was previously communicated to the Office from the International Bureau or the international design application was filed with the Office as an office of indirect filing, and a translation thereof into the English language if it was filed in another language;
(5) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional. The Director may require additional information where there is a question whether the delay was unintentional; and
(6) A terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section.
(b) Any request for reconsideration or review of a decision refusing to excuse the applicant’s failure to act within prescribed time limits in connection with requirements pertaining to an international design application upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to excuse or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under the provisions of § 1.136.
(c) Reply. The reply required may be:
(1) The filing of a continuing application. If the international design application has not been subject to international registration, the reply must also include a grantable petition under § 1.1023(b) to accord the international design application a filing date; or
(2) A grantable petition under § 1.1052, where the international design application was filed with the Office as an office of indirect filing.
(d) Terminal disclaimer. Any petition pursuant to this section must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period beginning on the due date for the reply for which applicant failed to timely act and ending on the date of filing of the reply required under paragraph (c) of this section and must also apply to any patent granted on a continuing design application that contains a specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to the application for which relief under this section is sought.
Pursuant to 35 U.S.C. 387, 37 CFR 1.1051 sets forth a petition procedure to excuse, with respect to the United States, an applicant’s failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application where the delay in applicant’s failure to act was unintentional. The petition must be accompanied by: (1) a copy of any invitation sent from the International Bureau setting a prescribed time limit for which applicant failed to timely act; (2) the reply required under 37 CFR 1.1051(c), unless previously filed; (3) the fee as set
forth in 37 CFR 1.17(m); (4) a certified copy of the originally filed international design application, unless a copy of the international design application was previously communicated to the Office from the International Bureau or the international design application was filed with the USPTO as an office of indirect filing; (5) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional; and (6) a terminal disclaimer (and fee as set forth in 37 CFR 1.20(d)) required pursuant to 37 CFR 1.1051(d). The Director may require additional information where there is a question whether the delay was unintentional.
Pursuant to 37 CFR 1.1051(c), the “reply” required for a grantable petition under 37 CFR 1.1051(a) may be: (1) the filing of a continuing application and, if the international design application has not been subject to international registration, a grantable petition under 37 CFR 1.1023(b) to accord the international design application a filing date; or (2) a grantable petition under 37 CFR 1.1052, where the international design application was filed with the Office as an office of indirect filing. See MPEP § 2914.
Pursuant to 37 CFR 1.1051(d), any petition under 37 CFR 1.1051(a) must be accompanied by a terminal disclaimer and fee as set forth in 37 CFR 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period beginning on the due date for the reply for which applicant failed to timely act and ending on the date of filing of the reply required and must also apply to any patent granted on a continuing design application that contains a specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to the application for which relief under 37 CFR 1.1051 is sought.
Where a petition under 37 CFR 1.1051(a) is refused by the Office, any request for reconsideration or review of the decision must be filed within two months of the decision or within such time as set in the decision. Unless the decision indicates otherwise, the two-month time period may be extended under
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the provisions of 37 CFR 1.136. See 37 CFR 1.1051(b).
2914 Conversion of an International Design Application to a Design Application Under 35 U.S.C. Chapter 16 [R-07.2015]
35 U.S.C. 384 Filing date.
(a) IN GENERAL.—Subject to subsection (b), the filing date of an international design application in the United States shall be the effective registration date. Notwithstanding the provisions of this part, any international design application designating the United States that otherwise meets the requirements of chapter 16 may be treated as a design application under chapter 16.
(b) REVIEW.—An applicant may request review by the Director of the filing date of the international design application in the United States. The Director may determine that the filing date of the international design application in the United States is a date other than the effective registration date. The Director may establish procedures, including the payment of a surcharge, to review the filing date under this section. Such review may result in a determination that the application has a filing date in the United States other than the effective registration date.
37 CFR 1.1052 Conversion to a design application under 35 U.S.C. chapter 16.
(a) An international design application designating the United States filed with the Office as an office of indirect filing and meeting the requirements under § 1.53(b) for a filing date for an application for a design patent may, on petition under this section, be converted to an application for a design patent under § 1.53(b) and accorded a filing date as provided therein. A petition under this section must be accompanied by the fee set forth in § 1.17(t) and be filed prior to publication of the international registration under Article 10(3). The conversion of an international design application to an application for a design patent under § 1.53(b) will not entitle applicant to a refund of the transmittal fee or any fee forwarded to the International Bureau, or the application of any such fee toward the filing fee, or any other fee, for the application for a design patent under § 1.53(b). The application for a design patent resulting from conversion of an international design application must also include the basic filing fee (§ 1.16(b)), the search fee (§ 1.16(l)), the examination fee (§ 1.16(p)), the inventor’s oath or declaration (§ 1.63 or 1.64), and a surcharge if required by § 1.16(f).
(b) An international design application will be converted to an application for a design patent under § 1.53(b) if a decision on petition under this section is granted prior to transmittal of the international design application to the International Bureau pursuant to § 1.1045. Otherwise, a decision granting a petition under this section will be effective to convert the international design application to an application for a design patent under § 1.53(b) only for purposes of the designation of the United States.
(c) A petition under this section will not be granted in an abandoned international design application absent a grantable petition under § 1.1051.
(d) An international design application converted under this section is subject to the regulations applicable to a design application filed under 35 U.S.C. chapter 16.
Pursuant to 35 U.S.C. 384(a), “any international design application designating the United States that otherwise meets the requirements of chapter 16 may be treated as a design application under chapter 16.” 37 CFR 1.1052 sets forth a procedure for converting an international design application designating the United States to a design application under 35 U.S.C. chapter 16. The requirements for a filing date for a design application under 35 U.S.C. chapter 16 are set forth in 37 CFR 1.53(b). 37 CFR 1.1052(a) provides that an international design application designating the United States filed with the Office as an office of indirect filing and meeting the requirements under 37 CFR 1.53(b) for a filing date for an application for a design patent may, on petition, be converted to an application for a design patent under 37 CFR 1.53(b) and accorded a filing date as provided therein.
A grantable petition to convert under 37 CFR 1.1052(a) must be accompanied by the fee set forth in 37 CFR 1.17(t) and be filed prior to publication of the international registration under Article 10(3) of the Hague Agreement. The conversion of an international design application to an application for a design patent under 37 CFR 1.53(b) will not entitle applicant to a refund of the transmittal fee or any fee forwarded to the International Bureau, and such fees will not be applied toward the filing fee, or any other fee, required for the application for a design patent under 37 CFR 1.53(b). Conversion will not be granted unless the application for a design patent resulting from conversion of an international design application includes the applicable basic filing fee, search fee, examination fee, inventor’s oath or declaration, and any required surcharge. In addition, a petition to convert under 37 CFR 1.1052(a) will not be granted in an abandoned application absent a grantable petition for relief from prescribed time limits under 37 CFR 1.1051. See 37 CFR 1.1052(c). An international design application converted under 37 CFR 1.1052 is subject to the regulations applicable to a design application filed under 35 U.S.C. chapter 16. See 37 CFR 1.1052(d).
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Pursuant to 37 CFR 1.1052(b), if a decision granting a petition to convert under 37 CFR 1.1052(a) is issued prior to transmittal of the international design application to the International Bureau under 37 CFR 1.1045, then the decision will be effective to convert the international design application to an application for a design patent under 37 CFR 1.53(b) for all purposes. In such case, the application materials will not be communicated to the International Bureau, and the USPTO will treat the international design application submission as an application for a design patent filed under 37 CFR 1.53(b). If, however, a decision granting a petition to convert under 37 CFR 1.1052(a) is issued after the application materials have been communicated to the International Bureau under 37 CFR 1.1045, then the decision will only be effective as to the United States, and the International Bureau will continue to process the international design application under the provisions of the Hague Agreement. In such case, because the international design application will have been converted to an application for a design patent under 37 CFR 1.53(b) with respect to the designation of the United States, the Office will, upon grant of the petition, treat the designation of the United States in the international design application as not being made.
2915 -2919 [Reserved]
2920 National Processing of International Design Applications Designating the United States [R-07.2015]
35 U.S.C. 389 Examination of international design application.
(a) IN GENERAL.—The Director shall cause an examination to be made pursuant to this title of an international design application designating the United States.
(b) APPLICABILITY OF CHAPTER 16.—All questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16.
(c) FEES.—The Director may prescribe fees for filing international design applications, for designating the United States, and for any other processing, services, or materials relating to international design applications, and may provide
for later payment of such fees, including surcharges for later submission of fees.
(d) ISSUANCE OF PATENT.—The Director may issue a patent based on an international design application designating the United States, in accordance with the provisions of this title. Such patent shall have the force and effect of a patent issued on an application filed under chapter 16.
37 CFR 1.9 Definitions.
(a)(1) A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the HagueAgreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
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(3) A nonprovisional application as used in this chapter means either a U.S. national application for patent which was filed in the Office under 35 U.S.C. 111(a), an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
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Hague Article 10
International Registration, Date of the International Registration, Publication and Confidential Copies of the
International Registration
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(3) [ Publication]
(a) The international registration shall be published by the International Bureau. Such publication shall be deemed in all Contracting Parties to be sufficient publicity, and no other publicity may be required of the holder.
(b) The International Bureau shall send a copy of the publication of the international registration to each designated Office.
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Hague Article 14
Effects of the International Registration
(1) [ Effect as Application Under Applicable Law] The international registration shall, from the date of the international registration, have at least the same effect in each designated Contracting Party as a regularly-filed application for the grant of protection of the industrial design under the law of that Contracting Party.
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§ 2920INTERNATIONAL DESIGN APPLICATIONS
Hague Article 12
Refusal
(1) [ Right to Refuse] The Office of any designated Contracting Party may, where the conditions for the grant of protection under the law of that Contracting Party are not met in respect of any or all of the industrial designs that are the subject of an international registration, refuse the effects, in part or in whole, of the international registration in the territory of the said Contracting Party, provided that no Office may refuse the effects, in part or in whole, of any international registration on the ground that requirements relating to the form or contents of the international application that are provided for in this Act or the Regulations or are additional to, or different from, those requirements have not been satisfied under the law of the Contracting Party concerned.
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The Office will examine an international design application designating the United States pursuant to Title 35 United States Code. See 35 U.S.C. 389(a). An applicant does not need to file any submissions with the Office to initiate examination of an international design application designating the United States. Rather, published international design registrations that designate the United States will be systematically received from the International Bureau pursuant to Hague Agreement Article 10(3) and examined in due course.
Upon receipt of the publication under Article 10(3), the Office will establish an application file for examination. Where the Office was also the office of indirect filing, the application file established as the office of indirect filing will be used as the application for examination, thus retaining the same application number. The Office will send a filing receipt to the applicant shortly after receipt of the publication under Article 10(3) indicating the U.S. application number, U.S. filing date, inventorship, applicant, and other relevant application data of record.
The U.S. application file will be made available to the public via public PAIR after publication under Article 10(3) of an international registration designating the United States. Prior to publication, access will only be provided in accordance with 37 CFR 1.14. See 37 CFR 1.14(j) .
Pursuant to 37 CFR 1.9(a)(1), the term “national application” as used in the U.S. rules includes an international design application filed under the
Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10. Pursuant to 37 CFR 1.9(a)(3), the term “nonprovisional application” as used in the U.S. rules includes an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10. An international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10 is also referred to herein as a “nonprovisional international design application”.
2920.01 Inventorship [R-07.2015]
37 CFR 1.41 Inventorship. *****
(f) The inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). Any correction of inventorship must be pursuant to § 1.48.
Pursuant to 37 CFR 1.41(f), the inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3).
Inventorship may be corrected in accordance with the provisions of 37 CFR 1.48(a). See MPEP § 602.01(c) et seq. for a detailed discussion of correction of inventorship, correcting or updating the name of an inventor, and adjusting the order of the names of joint inventors. Note that a request to correct the inventorship filed under 37 CFR 1.48(a) should identify the inventorship change and must be accompanied by a signed application data sheet (ADS) including the legal name, residence, and mailing address of the inventor or each actual joint inventor (see 37 CFR 1.76(b)(1)) and the processing fee set forth in 37 CFR 1.17(i). The application data sheet submitted with a request under 37 CFR 1.48(a) must identify the information being changed with underlining for insertions and strike-through or brackets for text removed. See MPEP § 602.01(c)(1). In addition, in accordance with 37 CFR 1.48(c), a request to correct or change the inventorship under 37 CFR 1.48(a) filed after the Office action on the
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merits has been given or mailed in the application must also be accompanied by the fee set forth in 37 CFR 1.17(d).
37 CFR 1.48(b) provides that an oath or declaration as required by 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration. Accordingly, where an inventor is added pursuant to 37 CFR 1.48(a) after publication of the international registration, an executed oath or declaration from the inventor will be required. See MPEP § 2920.04(c).
The name of an inventor may be corrected or updated and the order of the names of the joint inventors may be adjusted in accordance with the provisions of 37 CFR 1.48(f). 37 CFR 1.48(f) specifically provides that any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include: (1) an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name in the desired order (identifying the information that is being changed as required by 37 CFR 1.76(c)(2)); and (2) the processing fee set forth in 37 CFR 1.17(i). In addition to the corrected application data sheet, the request should also identify the desired inventor name change. See MPEP § 602.01(c)(2).
2920.02 Applicant [R-07.2015]
The rules governing the applicant for patent set forth in 37 CFR 1.42-1.46 are generally applicable to nonprovisional international design applications. See 37 CFR 1.1061; see also MPEP § 605.01 for a detailed discussion regarding the applicant for patent.
With respect to applicants under 37 CFR 1.46 (i.e., the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter), 37 CFR 1.46(b) provides that if a nonprovisional international design application is applied for by a person other than the inventor under 37 CFR 1.46(a) (i.e., the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter), that
person must have been identified as the applicant in the publication of the international registration under Hague Agreement Article 10(3). Thus, a 37 CFR 1.46 applicant identified as the applicant in the publication of the international registration is the applicant in the nonprovisional international design application.
Any request to change the applicant under 37 CFR 1.46 after an original applicant has been specified must include an application data sheet under 37 CFR 1.76 specifying the applicant in the applicant information section in accordance with 37 CFR 1.76(c)(2) and must comply with 37 CFR 3.71 and 3.73. See 37 CFR 1.46(c)(2). In a nonprovisional international design application, the original applicant specified is the person identified as the applicant in the publication of the international registration under Hague Agreement Article 10(3). Thus, if there is a change of applicant under 37 CFR 1.46 (e.g., from the inventor to the assignee, or from one assignee to another assignee), the new applicant must establish its ownership of the application under 37 CFR 3.71(b) and 3.73. See MPEP § 605.01, subsection II.
Any request to correct or update the name of the applicant under 37 CFR 1.46 must include an application data sheet under 37 CFR 1.76 specifying the correct or updated name of the applicant in the applicant information section. See 37 CFR 1.46(c)(1). Thus, if there is no change in the applicant itself but just the applicant’s name (due to a correction or name change), the applicant need only submit an application data sheet specifying the correct or updated name in the applicant information section. Any corrected application data sheet must identify the information being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2). A change in the name of the applicant under 37 CFR 1.46 recorded pursuant to Hague Agreement Article 16(1)(ii) will also be effective to change the name of the applicant in a nonprovisional international design application. See 37 CFR 1.46(c)(1). Hague Agreement Article 16(1)(ii) provides for recording in the International Register by the International Bureau of a change in the name of the holder. Under Article 16(2), such recording has the same effect as if made in the office of each
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§ 2920.02INTERNATIONAL DESIGN APPLICATIONS
of the designated Contracting Parties. Thus, where the applicant under 37 CFR 1.46 in a nonprovisional international design application is the holder of the international registration, correction or update of the applicant’s name may be made through the mechanism under Article 16(1)(ii).
2920.03 Correspondence Address [R-07.2015]
37 CFR 1.1066 Correspondence address for a nonprovisional international design application.
(a) Unless the correspondence address is changed in accordance with § 1.33(a), the Office will use as the correspondence address in a nonprovisional international design application the address according to the following order:
(1) The correspondence address under § 1.1042;
(2) The address of applicant’s representative identified in the publication of the international registration; and
(3) The address of the applicant identified in the publication of the international registration.
(b) Reference in the rules to the correspondence address set forth in § 1.33(a) shall be construed to include a reference to this section for a nonprovisional international design application.
37 CFR 1.1066(a) sets forth how the Office will establish the correspondence address for a nonprovisional international design application in the absence of a communication from the applicant changing the correspondence address. Specifically, 37 CFR 1.1066(a) provides that, unless the correspondence address is changed in accordance with 37 CFR 1.33(a), the Office will use as the correspondence address in a nonprovisional international design application the address according to the following order: (i) the correspondence address under 37 CFR 1.1042; (ii) the address of the applicant’s representative identified in the publication of the international registration; and (iii) the address of the applicant identified in the publication of the international registration.
See MPEP § 601.03(a) for further information regarding changing the correspondence address in an application.
2920.04 Elements of a Nonprovisional International Design Application [R-07.2015]
2920.04(a) Specification [R-07.2015]
I. TITLE
37 CFR 1.1067 Title, description, and inventor’s oath or declaration.
(a) The title of the design must designate the particular article. Where a nonprovisional international design application does not contain a title of the design, the Office may establish a title. No description, other than a reference to the drawing, is ordinarily required in a nonprovisional international design application.
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The title of the design identifies the article in which the design is embodied by the name generally known and used by the public. In general, the practice set forth in MPEP § 1503.01 with regard to titles in design applications filed under 35 U.S.C. chapter 16 applies to nonprovisional international design applications. Thus, for example, the title may be directed to the entire article embodying the design while the claimed design shown in the reproductions may be directed to only a portion of the article. However, the title may not be directed to less than the claimed design shown in the reproductions.
Since 37 CFR 1.1067 requires that the title must designate the particular article, and since the claim must be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described, the title and claim must correspond. See 37 CFR 1.1025. When the title and claim do not correspond, the title should be objected to under 37 CFR 1.1067 as not corresponding to the claim.
Form paragraphs 15.05.01 and 15.59 may be used in nonprovisional international design applications as appropriate.
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¶ 15.05.01 Title of Design Invention
The title of a design being claimed must correspond to the name of the article in which the design is embodied or applied to. See MPEP § 1503.01 and 37 CFR 1.153 or 37 CFR 1.1067.
¶ 15.59 Amend Title
For [1], the title [2] amended throughout the application, original oath or declaration excepted, to read: [3]
Examiner Note:
1. In bracket 1, insert reason.
2. In bracket 2, insert --should be-- or --has been--.
II. DESCRIPTION
37 CFR 1.1067 Title, description, and inventor’s oath or declaration.
(a) The title of the design must designate the particular article. Where a nonprovisional international design application does not contain a title of the design, the Office may establish a title. No description, other than a reference to the drawing, is ordinarily required in a nonprovisional international design application.
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No description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description. In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). However, while not required, such a description is not prohibited and may be incorporated into the specification. Descriptions of the figures are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which provides a clear and accurate description of the views.
In addition to the figure descriptions, statements that are permissible in the specification of a design application filed under 35 U.S.C. chapter 16 are permissible in the specification of a nonprovisional international design application. See MPEP § 1503.01, subsection II for a list of such permissible statements. This includes, for example, statements indicating the nature and environmental use of the claimed design, and statements indicating the purpose of broken lines in the drawing, for example, environmental structure or boundaries that form no part of the design to be patented. In addition,
Administrative Instruction 403 permits matter shown in a reproduction for which protection is not sought to be indicated in the description and/or by means of broken or dotted lines or coloring. Accordingly, the specification may include statements explaining that protection is not sought for certain features shown in the reproduction, or that protection is not sought for matter shown in a specified color in the reproduction. When protection is not sought for portions of subject matter shown in a reproduction, applicants are strongly encouraged to indicate such subject matter by means of broken lines (or coloring) and include a statement in the specification explaining the meaning of the broken lines (or coloring). See MPEP § 2920.05(c).
The specification of a nonprovisional international design application is not permitted to include statements describing matters that are directed to function or are unrelated to the design. In addition, the specification may not include statements that describe or suggest other embodiments of the claimed design which are not illustrated in the drawing disclosure, except one that is a mirror image of that shown or has a shape and appearance that would be evident from the one shown. However, such statements may be included in the design application as originally filed to provide antecedent basis for a future amendment. In addition, statements which attempt to broaden the scope of the claimed design beyond that which is shown in the drawings are not permitted.
The form paragraphs set forth in MPEP § 1503.01, subsection II, pertaining to the description may be used in nonprovisional international design applications. In addition, the following form paragraphs may be used to amend the specification by examiner’s amendment to include a description of broken lines or coloring, as appropriate:
¶ 29.22 Description of Broken Lines Added by Examiner's Amendment (International Design Application)
The following sentence has been added to the specification immediately preceding the claim:
--The broken line showing of [1] is for the purpose of illustrating [2] and forms no part of the claimed design.--
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§ 2920.04(a)INTERNATIONAL DESIGN APPLICATIONS
Examiner Note:
1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of the broken lines.
2. In bracket 1, insert name of structure.
3. In bracket 2, insert --portions of the “article”-- or --environmental structure--.
¶ 29.24 Description of Broken Lines as Boundary of Design Added by Examiner's Amendment (International Design Application)
The following sentence has been added to the specification immediately preceding the claim:
--The [1] broken line(s) define the bounds of the claimed design and form no part thereof.--
Examiner Note:
1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of the broken line(s).
2. In bracket 1, insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.
¶ 29.26 Description of Coloring Added by Examiner's Amendment (International Design Application)
The following sentence has been added to the specification immediately preceding the claim:
--The portion of the design shown in the color [1] is for the purpose of illustrating [2] and forms no part of the claimed design.--
Examiner Note:
1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of color used in the reproductions.
2. In bracket 1, identify the color indicating the matter excluded from the claim.
3. In bracket 2, insert --portions of the “article”-- or --environmental structure--.
III. CLAIM
37 CFR 1.1025 The claim.
The specific wording of the claim in an international design application designating the United States shall be in formal terms to the ornamental design for the article (specifying name of article) as shown, or as shown and described. More than one claim is neither required nor permitted for purposes of the United States.
The form and content of a claim in a nonprovisional international design application is set forth in 37 CFR 1.1025.
A design patent application may only include a single claim. The specific wording of the claim must be in formal terms to the ornamental design for the article (the article which embodies the design or to which it is applied) as shown, or as shown and described. The description of the article in the claim should be consistent in terminology with the title of the invention. See MPEP § 2920.04(a), subsection I.
When the specification includes a proper descriptive statement of the design (see MPEP § 2920.04(a), subsection II), or a proper showing of modified forms of the design or other descriptive matter has been included in the specification, the words “and described” must be added to the claim following the term “shown”; i.e., the claim must read “The ornamental design for (the article which embodies the design or to which it is applied) as shown and described.” Unless the claim was amended by the applicant pursuant to 37 CFR 1.121, the examiner should not object to the claim as to matters of form but rather should amend the claim by examiner’s amendment to include the words “and described.”
Form paragraphs 15.62, 15.63 and 15.64 may be used in international design applications as appropriate.
¶ 15.62 Amend Claim “As Shown”
For proper form (37 CFR 1.153 or 37 CFR 1.1025), the claim [1] amended to read: “[2] claim: The ornamental design for [3] as shown.”
Examiner Note:
1. In bracket 1, insert --must be-- or --has been--.
2. In bracket 2, insert --I-- or --We--.
3. In bracket 3, insert title of the article in which the design is embodied or applied.
¶ 15.63 Amend Claim “As Shown and Described”
For proper form (37 CFR 1.153 or 37 CFR 1.1025), the claim [1] amended to read: “[2] claim: The ornamental design for [3] as shown and described.”
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Examiner Note:
1. In bracket 1, insert --must be-- or --has been--.
2. In bracket 2, insert --I-- or --We--.
3. In bracket 3, insert title of the article in which the design is embodied or applied.
¶ 15.64 Addition of “And Described” to Claim
Because of [1] -- and described -- [2] added to the claim after “shown.”
Examiner Note:
1. In bracket 1, insert reason.
2. In bracket 2, insert --must be-- or --has been--.
2920.04(b) Reproductions (Drawings) [R-07.2015]
37 CFR 1.1026 Reproductions.
Reproductions shall comply with the requirements of Rule 9 and Part Four of the Administrative Instructions.
Every nonprovisional international design application must include a reproduction of the claimed design. A reproduction may be either a drawing or a photograph of the industrial design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be a clear and complete depiction of the design applied to the article designated in the title, and that nothing regarding the design sought to be patented is left to conjecture.
Formal requirements for reproductions applicable to nonprovisional international design applications are set forth in Hague Agreement Rule 9 and Part Four of the Administrative Instructions. See 37 CFR 1.1026. Rule 9 and the relevant provisions of the Administrative Instructions are reproduced in MPEP § 2909.02. Notable provisions include, for example, the ability to submit reproductions in black and white or in color (Administrative Instruction 401), numbering of reproductions by design and view number separated by a dot (Administrative Instruction 405), and the use of coloring to indicate matter shown in a reproduction for which protection is not sought (Administrative Instruction 403). Drawing requirements set forth in 37 CFR 1.84 do not apply to nonprovisional international design
applications, except for those set forth in 37 CFR 1.84(c). See 37 CFR 1.1061(b).
Reproductions published as part of the international registration have been reviewed by the International Bureau for compliance with the formal requirements of Hague Agreement Rule 9 and Part Four of the Administrative Instructions and thus should not be objected to by the examiner on such grounds. See Hague Agreement Article 12(1). Amended reproductions that are submitted directly to the Office pursuant to 37 CFR 1.121 are not subject to review by the International Bureau and thus may be objected to under 37 CFR 1.1026 as to matters of form where appropriate. Form Paragraph 29.10 may be used to object to amended reproductions that fail to comply with the formal requirements of Hague Agreement Rule 9 and Part Four of the Administrative Instructions.
¶ 29.10 Reproductions Objected to,Amended Reproductions Do Not Comply With Formal Requirements
The amended reproductions received on [1] are objected to because [2]. See 37 CFR 1.1026.
Examiner Note:
1. Use this form paragraph in an international design application to object to amended reproductions that fail to comply with the formal requirements for reproductions set forth in Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement and Part Four of the Administrative Instructions thereunder. Do not use this form paragraph to object to reproductions that were contained in the international registration published by the International Bureau.
2. In bracket 1, insert the date the amended reproductions were received.
3. In bracket 2, insert the reason for the objection, for example, --the reproductions are not of a quality permitting all the details of the industrial design to be clearly distinguished-- or --the reproductions contain explanatory text or legends--.
4. Follow this form paragraph with form paragraph 15.05.04.
When inconsistencies are found among the views, the examiner should object to the reproductions and request that the views be made consistent. Pursuant to Hague Agreement Rule 9(4), “[a] Contracting Party may however refuse the effects of the international registration on the ground that the reproductions contained in the international registration are not sufficient to disclose fully the industrial design.” When the inconsistencies are of such magnitude that the overall appearance of the
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§ 2920.04(b)INTERNATIONAL DESIGN APPLICATIONS
design is unclear, the claim should be rejected under 35 U.S.C. 112(a) and (b), as nonenabling and indefinite. See MPEP § 1504.04, subsection I.
¶ 29.11 Reproductions Objected to, Design Not Fully Disclosed in Reproductions
The reproductions are objected to for failing to fully disclose the industrial design because [1]. See 37 CFR 1.1026 and Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.
Examiner Note:
1. Use this form paragraph in an international design application where the reproductions are not sufficient to fully disclose the industrial design, but such failure does not render the claimed invention non-enabled and/or indefinite under 35 U.S.C. 112. This may occur, for example, where there are minor inconsistencies in the illustration of the design among the different views of the design. Where the failure to fully disclose the industrial design in the reproductions renders the claimed invention non-enabled and/or indefinite under 35 U.S.C. 112, use form paragraph 15.21 or 15.22, as appropriate, instead of this form paragraph.
2. In bracket 1, explain why the reproductions are not sufficient to fully disclose the industrial design.
3. Follow this form paragraph with form paragraph 15.05.04.
The practice set forth in MPEP § 1503.02 I-IV with respect to views, surface shading, broken lines, and surface treatment is generally applicable to nonprovisional international design applications.
In addition to the use of broken or dotted lines to indicate matter shown in a reproduction for which protection is not sought, Administrative Instruction 403 permits such matter to be indicated in the description and/or by coloring. See MPEP § 2920.05(c) regarding considerations under 35 U.S.C. 112 when indicating matter pursuant to Administrative Instruction 403. Form paragraph 29.20 may be used in an international design application as appropriate.
¶ 29.20 Matter Not Forming Part of Design (International Design Application)
Matter, such as environmental structure or portions of the "article," which is shown in a reproduction but for which protection is not sought may be indicated by statement in the description and/or by means of dotted or broken lines or coloring in the reproduction. See 37 CFR 1.1026 and Hague Agreement Administrative Instruction 403.
Examiner Note:
Use this form paragraph only in an international design application.
2920.04(c) Inventor’s Oath or Declaration [R-07.2015]
37 CFR 1.1021 Contents of the international design application.
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(d) Required contents where the United States is designated. In addition to the mandatory requirements set forth in paragraph (a) of this section, an international design application that designates the United States shall contain or be accompanied by:
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(3) The inventor’s oath or declaration (§§ 1.63 and 1.64). The requirements in §§ 1.63(b) and 1.64(b)(4) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, and the requirement in § 1.64(b)(2) to identify the residence and mailing address of the person signing the substitute statement will be considered satisfied by the presentation of such information in the international design application prior to international registration.
37 CFR 1.1067 Title, description, and inventor’s oath or declaration.
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(b) An international design application designating the United States must include the inventor’s oath or declaration. See § 1.1021(d). If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)).
International design applications designating the United States are required to contain the inventor’s oath or declaration (37 CFR 1.63 and 1.64). See 37 CFR 1.1021(d)(3). The International Bureau reviews international design applications designating the United States to ensure that the required inventor’s oath or declaration is provided for the inventors identified in the international design application. The inventor’s oath or declaration is communicated by the International Bureau to the Office when the published international registration is sent to the Office pursuant to Hague Agreement Article 10(3).
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Section 1.1067(b) provides for notifying the applicant in a notice of allowability of a requirement to provide the inventor’s oath or declaration. As compliance with the requirement for the inventor’s oath or declaration will have been reviewed by the International Bureau, the need to notify the applicant in a notice of allowability that an inventor’s oath or declaration is required should be rare, e.g., where an inventor is added pursuant to 37 CFR 1.48(a) after publication of the international registration and an executed oath or declaration from the inventor has not been received. See 37 CFR 1.48(b).
2920.05 Examination [R-07.2015]
35 U.S.C. 389 Examination of international design application.
(a) IN GENERAL.—The Director shall cause an examination to be made pursuant to this title of an international design application designating the United States.
(b) APPLICABILITY OF CHAPTER 16.—All questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16.
(c) FEES.—The Director may prescribe fees for filing international design applications, for designating the United States, and for any other processing, services, or materials relating to international design applications, and may provide for later payment of such fees, including surcharges for later submission of fees.
(d) ISSUANCE OF PATENT.—The Director may issue a patent based on an international design application designating the United States, in accordance with the provisions of this title. Such patent shall have the force and effect of a patent issued on an application filed under chapter 16.
37 CFR 1.1062 Examination.
(a) Examination. The Office shall make an examination pursuant to title 35, United States Code, of an international design application designating the United States.
(b) Timing. For each international design application to be examined under paragraph (a) of this section, the Office shall, subject to Rule 18(1)(c)(ii), send to the International Bureau within 12 months from the publication of the international registration under Rule 26(3) a notification of refusal (§ 1.1063) where it appears that the applicant is not entitled to a patent under the law with respect to any industrial design that is the subject of the international registration.
37 CFR 1.1063 Notification of Refusal.
(a) A notification of refusal shall contain or indicate:
(1) The number of the international registration;
(2) The grounds on which the refusal is based;
(3) A copy of a reproduction of the earlier industrial design and information concerning the earlier industrial design, where the grounds of refusal refer to similarity with an industrial design that is the subject of an earlier application or registration;
(4) Where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate; and
(5) A time period for reply under §§ 1.134 and 1.136, where a reply to the notification of refusal is required.
(b) Any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. The requirements of § 1.111 shall apply to a reply to a notification of refusal.
International design applications designating the United States are examined pursuant to title 35, United States Code. All questions of substance and, unless otherwise required by the Hague Agreement or Regulations thereunder, procedures regarding an international design application designating the United States shall be determined as in the case of design applications filed under 35 U.S.C. chapter 16. See 35 U.S.C. 389. Accordingly, the practices set forth in MPEP §§ 1504.01 (Statutory Subject Matter for Designs), 1504.02 (Novelty), 1504.03 (Nonobviousness), 1504.04 (Considerations Under 35 U.S.C. 112), 1505 (Restriction), and 1504.06 (Double Patenting) are generally applicable to international design applications designating the United States.
While there is substantial overlap in examining practices with respect to international design applications designating the United States and design applications filed under 35 U.S.C. chapter 16, there are also differences. These differences include:
(1) the Office sends a Notification of Refusal to the International Bureau for forwarding to the holder of the international registration where it is determined that the conditions for the grant of a patent are not met in respect of any or all designs that are the subject of international registration;
(2) upon issuance of a patent, the Office sends a statement of grant of protection to the International Bureau indicating that protection is granted in the United States to those designs that are the subject of the international registration and covered by the patent.
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§ 2920.05INTERNATIONAL DESIGN APPLICATIONS
Regulations concerning international design applications are set forth in 37 CFR Part 1, subpart I.
2920.05(a) Notification of Refusal [R-07.2015]
Hague Article 12
Refusal
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(2) [ Notification of Refusal]
(a) The refusal of the effects of an international registration shall be communicated by the Office to the International Bureau in a notification of refusal within the prescribed period.
(b) Any notification of refusal shall state all the grounds on which the refusal is based.
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Hague Rule 18
Notification of Refusal
(1) [Period for Notification of Refusal]
(a) The prescribed period for the notification of refusal of the effects of an international registration in accordance with Article 12(2) of the 1999 Act or Article 8(1) of the 1960 Act shall be six months from the publication of the international registration as provided for by Rule 26(3).
(b) Notwithstanding subparagraph (a), any Contracting Party whose Office is an Examining Office, or whose law provides for the possibility of opposition to the grant of protection, may, in a declaration, notify the Director General that, where it is designated under the 1999 Act, the period of six months referred to in that subparagraph shall be replaced by a period of 12 months.
(c) The declaration referred to in subparagraph (b) may also state that the international registration shall produce the effect referred to in Article 14(2)(a) of the 1999 Act at the latest
(i) at a time specified in the declaration which may be later than the date referred to in that Article but which shall not be more than six months after the said date or
(ii) at a time at which protection is granted according to the law of the Contracting Party where a decision regarding the grant of protection was unintentionally not communicated within the period applicable under subparagraph (a) or (b); in such a case, the Office of the Contracting Party concerned shall notify the International Bureau accordingly and endeavor to communicate such decision to the holder of the international registration concerned promptly thereafter.
(2) [ Notification of Refusal]
(a) The notification of any refusal shall relate to one international registration, shall be dated and shall be signed by the Office making the notification.
(b) The notification shall contain or indicate
(i) the Office making the notification,
(ii) the number of the international registration,
(iii) all the grounds on which the refusal is based together with a reference to the corresponding essential provisions of the law,
(iv) where the grounds on which the refusal is based refer to similarity with an industrial design which has been the subject of an earlier national, regional or international application or registration, the filing date and number, the priority date (if any), the registration date and number (if available), a copy of a reproduction of the earlier industrial design (if that reproduction is accessible to the public) and the name and address of the owner of the said industrial design, as provided for in the Administrative Instructions,
(v) where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate,
(vi) whether the refusal may be subject to review or appeal and, if so, the time limit, reasonable under the circumstances, for any request for review of, or appeal against, the refusal and the authority to which such request for review or appeal shall lie, with the indication, where applicable, that the request for review or the appeal has to be filed through the intermediary of a representative whose address is within the territory of the Contracting Party whose Office has pronounced the refusal, and (vii) the date on which the refusal was pronounced.
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37 CFR 1.1063 Notification of Refusal.
(a) A notification of refusal shall contain or indicate:
(1) The number of the international registration;
(2) The grounds on which the refusal is based;
(3) A copy of a reproduction of the earlier industrial design and information concerning the earlier industrial design, where the grounds of refusal refer to similarity with an industrial design that is the subject of an earlier application or registration;
(4) Where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate; and
(5) A time period for reply under §§ 1.134 and 1.136, where a reply to the notification of refusal is required.
(b) Any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. The requirements of § 1.111 shall apply to a reply to a notification of refusal.
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Under Article 12 of the Hague Agreement, “[t]he Office of any designated Contracting Party may, where the conditions for the grant of protection under the law of that Contracting Party are not met in respect of any or all of the industrial designs that are the subject of an international registration, refuse the effects, in part or in whole, of the international registration in the territory of the said Contracting Party, provided that no Office may refuse the effects, in part or in whole, of any international registration on the ground that requirements relating to the form or contents of the international design application that are provided for in this Act or the Regulations or are additional to, or different from, those requirements have not been satisfied under the law of the Contracting Party concerned.” This refusal of effect is called a “notification of refusal.” See Article 12(2). The notification of refusal is transmitted to the International Bureau who, without delay, transmits a copy of the notification to the holder of the international registration. Hague Agreement Rule 18 prescribes a time period for sending of the notification of refusal and the content of the notification.
In accordance with 37 CFR 1.1062(b), a notification of refusal is to be sent to the International Bureau within 12 months from the publication of the international registration where it appears that the applicant is not entitled to a patent under the law of the United States with respect to any industrial design that is the subject of the international registration. The notification of refusal may be sent after this 12-month period where the failure to send the notification within the 12-month period was unintentional.
The notification of refusal contains or indicates: (1) the number of the international registration; (2) the grounds on which the refusal is based; (3) a copy of a reproduction of the earlier industrial design and information concerning the earlier industrial design, where the grounds of refusal refer to similarity with an industrial design that is the subject of an earlier application or registration; (4) where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate; and (5) a time period for reply under 37 CFR 1.134 and 1.136
where a reply to the notification of refusal is required. See 37 CFR 1.1063(a).
The grounds of refusal may be in the form of a rejection based on a condition for patentability under title 35, United States Code (e.g., 35 U.S.C. 171, 102, 103, or 112), a requirement for restriction (where more than one independent and distinct design is presented in the application), and/or an objection (where not prohibited by Article 12(1) of the Hague Agreement). The grounds of refusal may also be based on applicant’s action, including cancellation of industrial designs in the international design application by amendment or by an express abandonment of the application pursuant to 37 CFR 1.138 prior to examination.
Objections based on requirements relating to the form or content of the application provided for in the Hague Agreement and Regulations thereunder are not prohibited by Article 12(1) where the International Bureau is not responsible for verifying compliance with such requirements. Such may arise, for example, where the applicant submits amended drawings directly to the Office in the course of examination that fail to comply with the formal requirements applicable to reproductions under Hague Agreement Rule 9 and Part Four of the Administrative Instructions. Nor does Article 12(1) prohibit objections based on inconsistencies among the views of the reproductions or incorrect or inaccurate statements contained in the description.
As in the case of Office actions in design applications filed under 35 U.S.C. chapter 16, copies of references cited by the examiner should be included with the notification of refusal. In addition, because Hague Agreement Rule 18(2)(b)(iv) does not distinguish references used in a ground of refusal based on where the reference originated from, the examiner should also include any U.S. patent or U.S. patent application publication used in a grounds of refusal (e.g., a rejection under 35 U.S.C. 102 or 103). See 37 CFR 1.1063(a)(3). Copies of references cited by the applicant in an information disclosure statement do not need to be included with the notification of refusal.
The notification of refusal should include a time period for reply under 37 CFR 1.134 and 1.136 to
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§ 2920.05(a)INTERNATIONAL DESIGN APPLICATIONS
avoid abandonment where a reply to the notification of refusal is required. This time period will normally be made in the Office Action Summary, Form PTOL-326, accompanying a Notification of Refusal cover sheet, Form PTO-2319. Not all notifications of refusal will require a reply. For example, where the international registration contains multiple industrial designs and all but one design is cancelled by preliminary amendment prior to examination, and the remaining design is determined by the examiner to be allowable, then a notice of allowance will be sent concurrently with a notification of refusal, refusing the effects of the international registration in the United States with respect to the industrial design or designs that have been cancelled. Such a notification of refusal, otherwise known as a “Notification of Partial Refusal,” (Form PTO-2321) will be communicated to the International Bureau but will not set a time period for reply to the notification of refusal, as no reply to the refusal is required.
Any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. See 37 CFR 1.1063(b). A reply to the notification of refusal is subject to the requirements of 37 CFR 1.111.
Any further Office action following the notification of refusal, such as a Final Rejection, will normally be sent directly to the applicant.
2920.05(b) One Independent and Distinct Design [R-07.2015]
Hague Article 13
Special Requirements Concerning Unity of Design
(1) [ Notification of Special Requirements] Any Contracting Party whose law, at the time it becomes party to this Act, requires that designs that are the subject of the same application conform to a requirement of unity of design, unity of production or unity of use, or belong to the same set or composition of items, or that only one independent and distinct design may be claimed in a single application, may, in a declaration, notify the Director General accordingly. However, no such declaration shall affect the right of an applicant to include two or more industrial designs in an international application in accordance with Article 5(4), even if the application designates the Contracting Party that has made the declaration.
(2) [ Effect of Declaration]Any such declaration shall enable the Office of the Contracting Party that has made it to refuse the effects of the international registration pursuant to
Article 12(1) pending compliance with the requirement notified by that Contracting Party.
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37 CFR 1.1064 One independent and distinct design.
(a) Only one independent and distinct design may be claimed in a nonprovisional international design application.
(b) If the requirements under paragraph (a) of this section are not satisfied, the examiner shall in the notification of refusal or other Office action require the applicant in the reply to that action to elect one independent and distinct design for which prosecution on the merits shall be restricted. Such requirement will normally be made before any action on the merits but may be made at any time before the final action. Review of any such requirement is provided under §§ 1.143 and 1.144.
Only one independent and distinct design may be claimed in a nonprovisional international design application. See 37 CFR 1.1064. Under Article 13 of the Hague Agreement, a Contracting Party whose law at the time it becomes party to the Hague Agreement requires, inter alia, that only one independent and distinct design may be claimed in a single application, can refuse the effects of the international registration on grounds of noncompliance with such requirement. U.S. law requires that only one independent and distinct design may be claimed in a single application. See In re Rubinfield, 270 F.2d 391 (CCPA 1959); In re Platner, 155 USPQ 222 (Comm’r Pat. 1967); MPEP § 1504.05. The practice set forth in MPEP § 1504.05 is generally applicable to nonprovisional international design applications. If more than one independent and distinct design is claimed in the nonprovisional international design application, the examiner should in the notification of refusal or other Office action require the applicant in the reply to that action to elect one independent and distinct design for which prosecution on the merits shall be restricted. The requirement should normally be made before any action on the merits but may be made at any time before the final action. Review of any such requirement is provided under 37 CFR 1.143 and 1.144.
2920.05(c) Considerations Under 35 U.S.C. 112 [R-07.2015]
The requirements of 35 U.S.C. 112(a) and (b) apply to nonprovisional international design applications. See 35 U.S.C. 389. Accordingly, the practice set forth in MPEP § 1504.04 regarding considerations
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under 35 U.S.C. 112 is generally applicable to nonprovisional international design applications. This section addresses certain additional considerations relevant to international design applications.
As discussed in MPEP § 2920.04(b), Administrative Instruction 403 allows matter shown in a reproduction for which protection is not sought to be indicated “(i) in the description referred to in Rule 7(5)(a) and/or (ii) by means of dotted or broken lines or coloring.” When using broken or dotted lines or coloring in a reproduction to indicate matter shown in a reproduction for which protection is not sought, applicants are encouraged to include an explanation of the purpose of the broken or dotted lines or coloring in the description. This may help to avoid uncertainty as to the scope of the claimed design. Similarly, applicants are encouraged not to simply rely on a description to indicate matter shown in a reproduction for which protection is not sought, but rather to also identify the matter for which protection is not sought through the use of broken or dotted lines or coloring.
The following form paragraphs may be used where the presence of undescribed broken lines or color renders the scope of the claimed design unclear.
¶ 29.21 Rejection, 35 U.S.C. 112(b) - Undescribed Broken Lines (International Design Application)
The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because the reproductions include, in figure(s) [1], broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
If the broken line(s) represent portions of the article or environmental structure for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132):
--The broken line showing of [2] is for the purpose of illustrating [3] and forms no part of the claimed design.--
Examiner Note:
1. Use this form paragraph in an international design application where the reproductions include broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
2. In bracket 1, insert the number(s) of the figure(s) containing the broken lines.
3. In bracket 2, insert name of structure.
4. In bracket 3, insert --portions of the “article”-- or --environmental structure--.
¶ 29.23 Rejection, 35 U.S.C. 112(b) - Undescribed Broken Lines as Boundary of Design (International Design Application)
The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because the reproductions include, in figure(s) [1], broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
If the broken line(s) represent a boundary line for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132):
--The [2] broken line(s) define the bounds of the claimed design and form no part thereof.--
Examiner Note:
1. Use this form paragraph in an international design application where the reproductions include broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
2. In bracket 1, insert the number(s) of the figure(s) containing the broken lines.
3. In bracket 2, insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.
¶ 29.25 Rejection, 35 U.S.C. 112(b) - Unclear Use of Coloring (International Design Application)
The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because the reproductions include coloring, in figure(s) [1], that is not described in the specification, and the scope of the claimed design cannot be determined.
If the coloring identifies matter for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132 ):
--The portion of the design shown in the color [2] is for the purpose of illustrating [3] and forms no part of the claimed design.--
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§ 2920.05(c)INTERNATIONAL DESIGN APPLICATIONS
Examiner Note:
1. Use this form paragraph in an international design application where the reproductions include coloring that is not described in the specification, and the scope of the claimed design cannot be determined.
2. In bracket 1, insert the number(s) of the figure(s) containing the coloring.
3. In bracket 2, identify the color indicating the matter excluded from the claim.
4. In bracket 3, insert --portions of the “article”-- or --environmental structure--.
Similar to the use of form paragraph 15.20.02 in design applications filed under 35 U.S.C. chapter 16, form paragraph 29.27 may be used in an international design application to suggest how a rejection under 35 U.S.C. 112(a) and (b) as nonenabling and indefinite due to an insufficient drawing disclosure may be overcome.
¶ 29.27 Suggestion To Overcome Rejection Under 35 U.S.C. 112(a) and (b) (International Design Application)
Applicant may indicate that protection is not sought for those portions of the reproductions which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by amending the reproductions to color those portions or convert those portions to broken lines and by amending the specification to include a statement that the portions of the [1] shown in broken lines form no part of the claimed design or a statement that the portions of the [1] shown by coloring form no part of the claimed design provided such amendments do not introduce new matter (see 35 U.S.C. 132 , 37 CFR 1.121 ).
Examiner Note:
Use this form paragraph only in an international design application.
2. In bracket 1, insert title of the article.
2920.05(d) Foreign Priority [R-07.2015]
35 U.S.C. 386 Right of priority.
(a) NATIONAL APPLICATION.—In accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172, a national application shall be entitled to the right of priority based on a prior international design application that designated at least 1 country other than the United States.
(b) PRIOR FOREIGN APPLICATION.—In accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172 and the treaty and the Regulations, an international design application designating the United States shall be entitled to the right of priority based on a prior foreign application, a prior international application as defined in section 351(c) designating at least 1 country other
than the United States, or a prior international design application designating at least 1 country other than the United States.
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37 CFR 1.55 Claim for foreign priority.
(a) In general. An applicant in a nonprovisional application may claim priority to one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 35 U.S.C. 386(a) or (b) and this section.
(b) Time for filing subsequent application. The nonprovisional application must be:
(1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or
(2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.
(c) Delayed filing of subsequent application. If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26 bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. A petition to restore the right of priority under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. Any petition to restore the right of priority under this paragraph must include:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(d) Time for filing priority claim—
(1) Application under 35 U.S.C. 111(a). The claim for priority must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application in an original application filed under 35 U.S.C. 111(a), except as provided in paragraph (e) of this section. The claim for priority must be
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presented in an application data sheet (§ 1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.
(2) Application under 35 U.S.C. 371. The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.
(e) Delayed priority claim. Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 35 U.S.C. 386(a) or (b) not presented in the manner required by paragraph (d) or (m) of this section during pendency and within the time period provided by paragraph (d) of this section (if applicable) is considered to have been waived. If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) must be accompanied by:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
(2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies;
(3) The petition fee as set forth in § 1.17(m); and
(4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(f) Time for filing certified copy of foreign application—
(1) Application under 35 U.S.C. 111(a). A certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application, or sixteen months from the filing date of the prior foreign application, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section. The time period in this paragraph does not apply in a design application.
(2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371. If a certified copy of the foreign application is not
filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
(3) If a certified copy of the foreign application is not filed within the time period specified [in] paragraph (f)(1) of this section in an application under 35 U.S.C. 111(a) or within the period specified in paragraph (f)(2) of this section in an international application entering the national stage under 35 U.S.C. 371, and an exception in paragraph (h), (i), or (j) of this section is not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).
(g) Requirement for filing priority claim, certified copy of foreign application, and translation in any application.
(1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.
(2) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in this section:
(i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
(ii) When necessary to overcome the date of a reference relied upon by the examiner; or
(iii) When deemed necessary by the examiner.
(3) An English language translation of a non-English language foreign application is not required except:
(i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
(ii) When necessary to overcome the date of a reference relied upon by the examiner; or
(iii) When specifically required by the examiner.
(4) If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.
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(h) Certified copy in another U.S. patent or application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will be considered satisfied in a reissue application if the patent for which reissue is sought satisfies the requirement of this section for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will also be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
(i) Foreign intellectual property office participating in a priority document exchange agreement. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
(1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), or a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy;
(2) The claim for priority is presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and the applicant provides the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application;
(3) The copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the period specified in paragraph (g)(1) of this section; and
(4) The applicant files in a separate document a request that the Office obtain a copy of the foreign application from a participating intellectual property office that permits the Office to obtain such a copy where, although the foreign application was not filed in a participating foreign intellectual property office, a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy. The request must identify the participating intellectual property office and the subsequent application by the application number, day, month, and year of its filing in which a copy of the foreign application was filed. The request must be filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), or four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or the request must be accompanied by a petition under paragraph (e) or (f) of this section.
(j) Interim copy. The requirement in paragraph (f) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
(1) A copy of the original foreign application clearly labeled as "Interim Copy," including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority);
(2) The copy of the foreign application and separate cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or with a petition under paragraph (e) or (f) of this section; and
(3) A certified copy of the foreign application is filed within the period specified in paragraph (g)(1) of this section.
(k) Requirements for certain applications filed on or after March 16, 2013. If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior foreign application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(l) Inventor's certificates. An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor's certificate in a country granting both inventor's certificates and patents. To claim the right of priority on the basis of an application for an inventor's certificate in such a country under 35 U.S.C. 119(d), the applicant, when submitting a claim for such right as specified in this section, must include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor’s certificate, had the option to file an application for either a patent or an inventor’s certificate as
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to the subject matter of the identified claim or claims forming the basis for the claim of priority.
(m) Time for filing priority claim and certified copy of foreign application in an international design application designating the United States. In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations. In a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.
(n) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section that any priority claim be presented in an application data sheet (§ 1.76), this requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section will be satisfied by the presentation of such priority claim in the oath or declaration under § 1.63 in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any priority claim submitted for a petition under paragraph (c) of this section to restore the right of priority to a foreign application.
(o) Priority under 35 U.S.C. 386(a) or (b). The right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
(p) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States. Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least
one country other than the United States, or a prior international design application designating at least one country other than the United States. The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o) and MPEP §§ 213 et seq. and 1504.10.
In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the HagueAgreement Regulations. See 37 CFR 1.55(m). Alternatively, in a nonprovisional international design application, the foreign priority claim may be presented in an application data sheet (37 CFR 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in 37 CFR 1.55(g).
Pursuant to 35 U.S.C. 119(a) and 172, and 37 CFR 1.55(b)(1), the nonprovisional international design application must be filed not later than six months after the date on which the foreign application was filed, or be entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of an application that was filed within this six month period. Where a nonprovisional international design application directly claims priority to a foreign application, the six month period is measured with respect to the U.S. filing date of the international design application, which may or may not be the same as the international filing date assigned by the International Bureau. See MPEP §§ 2906-2908. Where there was a delay in filing the subsequent application within this six month period, the right of priority may be restored under the conditions set forth in 37 CFR 1.55(c) and MPEP § 213.03, subsection III.
2920.05(e) Benefit Claims Under 35 U.S.C. 386(c) [R-07.2015]
35 U.S.C. 386 Right of priority.
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§ 2920.05(e)INTERNATIONAL DESIGN APPLICATIONS
(c) PRIOR NATIONAL APPLICATION.—In accordance with the conditions and requirements of section 120, an international design application designating the United States shall be entitled to the benefit of the filing date of a prior national application, a prior international application as defined in section 351(c) designating the United States, or a prior international design application designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international design application designating the United States. If any claim for the benefit of an earlier filing date is based on a prior international application as defined in section 351(c) which designated but did not originate in the United States or a prior international design application which designated but did not originate in the United States, the Director may require the filing in the Patent and Trademark Office of a certified copy of such application together with a translation thereof into the English language, if it was filed in another language.
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
(a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. An applicant in a nonprovisional application, other than for a design patent, or an international application designating the United States may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.
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(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
(1) Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed application must either be:
(i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States;
(ii) An international design application entitled to a filing date in accordance with § 1.1023 and designating the United States; or
(iii) A nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in § 1.53(b) or (d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application.
(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5) ). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
(3)
(i) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section must be submitted during the pendency of the later-filed application.
(ii) If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed application. The time periods in this paragraph do not apply if the later-filed application is:
(A) An application for a design patent;
(B) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
(C) An international application filed under 35 U.S.C. 363 before November 29, 2000.
(iii) Except as provided in paragraph (e) of this section, failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application.
(4) The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
(5) Cross-references to other related applications may be made when appropriate (see § 1.14), but cross-references to
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applications for which a benefit is not claimed under title 35, United States Code, must not be included in an application data sheet (§ 1.76(b)(5) ).
(6) If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims the benefit of the filing date of a nonprovisional application or an international application designating the United States filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application. An applicant is not required to provide such a statement if either:
(i) The application claims the benefit of a nonprovisional application in which a statement under § 1.55(k) , paragraph (a)(6) of this section, or this paragraph that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed; or
(ii) The applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the later filed application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(7) Where benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application or an international design application which designates but did not originate in the United States, the Office may require a certified copy of such application together with an English translation thereof if filed in another language.
(e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. If the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is presented after the time period provided by paragraph (d)(3) of this section, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States may be accepted if the reference required by paragraph (d)(2) of this section was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by:
(1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section to the prior-filed application, unless previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the entire delay between the date the benefit claim was due under paragraph (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
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(j) Benefit under 35 U.S.C. 386(c). Benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
(k) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, an international design application designating the United States is entitled to claim the benefit of the filing date of a prior nonprovisional application, international application (PCT) designating the United States, or international design application designating the United States, and a nonprovisional application is entitled to the benefit of a prior international design application designating the United States. See MPEP §§ 211 and 1504.20. An international design application designating the United States may not claim benefit to a provisional application. See 37 CFR 1.78(a).
An application claiming benefit under 35 U.S.C. 386(c) to an international design application designating the United States may identify the international design application by the U.S. application number or by the international registration number and U.S. filing date under 37 CFR 1.1023. See 37 CFR 1.78(d)(2). To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).
When a later-filed international design application designating the United States is claiming the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate application similarly entitled to the benefit of the filing date of the prior application. In
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determining whether an international design application designating the United States is copending with a prior-filed application, it is the U.S. filing date of the international design application that is relevant, which may or may not be the same as the international filing date assigned by the International Bureau. See MPEP §§ 2906-2908. Thus, if the international design application designating the United States has an international filing date before, but a U.S. filing date after, the date of abandonment of the prior-filed application, the benefit claim should be refused because the international design application designating the United States does not comply with the copendency requirement of 35 U.S.C. 120.
For purposes of determining the effective filing date under AIA 35 U.S.C. 100(i)(1)(B) with regard to a benefit claim under 35 U.S.C. 386(c) to a prior-filed international design application designating the United States, the U.S. filing date of the international design application rather than the international filing date, if different, should be used.
2920.05(f) Information Disclosure Statement in an International Design Application Designating the United States [R-07.2015]
An extensive discussion of Information Disclosure Statement (IDS) practice is set forth in MPEP § 609. Although not specifically stated therein, the duty to disclose information material to patentability as defined in 37 CFR 1.56 is placed on individuals associated with the filing and prosecution of an international design application designating the United States in the same manner as for a domestic national application. An international design application designating the United States has the effect of a U.S. patent application and thus is subject to 37 CFR 1.56. See 35 U.S.C. 385 (“An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16.”). See also 35 U.S.C. 389(b) (“All questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the
United States shall be determined as in the case of applications filed under chapter 16.”).
Pursuant to 37 CFR 1.56(c), individuals associated with the filing or prosecution of a patent application for purposes of 37 CFR 1.56 are: “(1) Each inventor named in the application; (2) Each attorney or agent who prepares or prosecutes the application; and (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.” For example, individuals who are neither inventors nor practitioners but who are substantively involved in the preparation or prosecution of an international design application designating the United States and who are associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application, have a duty of disclosure under 37 CFR 1.56. In addition, the requirement under 37 CFR 1.63(c) and 1.64(c) that a person may not execute the inventor’s oath or declaration for an application unless that person is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in 37 CFR 1.56 is applicable to the inventor’s oath or declaration filed in an international design application designating the United States. See 37 CFR 1.1021(d).
Applicant must adhere to the requirements set forth in 37 CFR 1.97 and 1.98 to ensure consideration of an IDS by the examiner. When filing an international design application, an applicant may submit an IDS as an annex to the international design application. See MPEP § 2909.03. The International Bureau will send the annex to the USPTO when the published international registration is sent to the Office pursuant to Hague Agreement Article 10(3). However, the Office would prefer to receive the IDS from the applicant after publication of the international registration. Pursuant to 37 CFR 1.97(b)(5), the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3). The Office may also consider an IDS filed after this three month
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period as provided in 37 CFR 1.97. See MPEP § 609 for further information.
2920.06 Allowance [R-07.2015]
A Notice of Allowability For a Design Application (form PTOL-37D) is used whenever a nonprovisional international design application has been placed in condition for allowance. See MPEP § 1302.03 for further information concerning the Notice of Allowability. In addition, a Notice of Allowance (form PTOL-85 (Hague)) is sent to the applicant requiring payment of the issue fee (i.e., second part of the U.S. designation fee). See 37 CFR 1.311 and 1.18(b). The Notice of Allowance and the Notice of Allowability are communicated to the applicant at the correspondence address of record in the application. The International Bureau is also notified of the communication of the Notice of Allowance to the applicant.
Since the Notice of Allowability is used whenever an application has been placed in a condition for allowance, the Notice of Allowability does not constitute a refusal of the effects of the international registration. However, a Notification of Partial Refusal (form PTO-2321) may be sent to the International Bureau concurrent with the sending of the Notice of Allowance to the applicant where all the designs contained in the international registration have not been allowed and were not previously the subject of a notification of refusal (e.g., all designs but the allowed design were removed by preliminary amendment prior to examination). See MPEP § 2920.05(a).
The issue fee specified in the Notice of Allowance form PTOL-85 (Hague) may be paid directly to the Office or through the International Bureau. An issue fee paid through the International Bureau shall be in the amount specified on the website of WIPO, currently available at www.wipo.int/hague, at the time the fee is paid. See 37 CFR 1.18(b)(3). The International Bureau accepts payment only in Swiss currency (see Hague Agreement Rule 28(1)) and all fee amounts specified on the WIPO website are in Swiss currency). Further, any change in entity status from that shown in the Notice of Allowance must be communicated directly to the Office in accordance
with U.S. rules, as instructed in the Notice of Allowance.
2921 -2929 [Reserved]
2930 Corrections and Other Changes in the International Register [R-07.2015]
Hague Rule 22
Corrections in the International Register
(1) [ Correction]Where the International Bureau, acting ex officio or at the request of the holder, considers that there is an error concerning an international registration in the International Register, it shall modify the Register and inform the holder accordingly.
(2) [ Refusal of Effects of Correction] The Office of any designated Contracting Party shall have the right to declare in a notification to the International Bureau that it refuses to recognize the effects of the correction. Rules 18 to 19 shall apply mutatis mutandis.
Hague Article 16
Recording of Changes and Other Matters Concerning International Registrations
(1) [Recording of Changes and Other Matters] The International Bureau shall, as prescribed, record in the International Register
(i) any change in ownership of the international registration, in respect of any or all of the designated Contracting Parties and in respect of any or all of the industrial designs that are the subject of the international registration, provided that the new owner is entitled to file an international application under Article 3,
(ii) any change in the name or address of the holder,
(iii) the appointment of a representative of the applicant or holder and any other relevant fact concerning such representative,
(iv) any renunciation, by the holder, of the international registration, in respect of any or all of the designated Contracting Parties,
(v) any limitation, by the holder, of the international registration, in respect of any or all of the designated Contracting Parties, to one or some of the industrial designs that are the subject of the international registration,
(vi) any invalidation, by the competent authorities of a designated Contracting Party, of the effects, in the territory of that Contracting Party, of the international registration in respect of any or all of the industrial designs that are the subject of the international registration,
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§ 2930INTERNATIONAL DESIGN APPLICATIONS
(vii) any other relevant fact, identified in the Regulations, concerning the rights in any or all of the industrial designs that are the subject of the international registration.
(2) [ Effect of Recording in International Register] Any recording referred to in items (i), (ii), (iv), (v), (vi) and (vii) of paragraph (1) shall have the same effect as if it had been made in the Register of the Office of each of the Contracting Parties concerned, except that a Contracting Party may, in a declaration, notify the Director General that a recording referred to in item (i) of paragraph (1) shall not have that effect in that Contracting Party until the Office of that Contracting Party has received the statements or documents specified in that declaration.
37 CFR 1.1065 Corrections and other changes in the International Register.
(a) The effects of any correction in the International Register by the International Bureau pursuant to Rule 22 in a pending nonprovisional international design application shall be decided by the Office in accordance with the merits of each situation, subject to such other requirements as may be imposed. A patent issuing from an international design application may only be corrected in accordance with the provisions of title 35, United States Code, for correcting patents. Any correction under Rule 22 recorded by the International Bureau with respect to an abandoned nonprovisional international design application will generally not be acted upon by the Office and shall not be given effect unless otherwise indicated by the Office.
(b) A recording of a partial change in ownership in the International Register pursuant to Rule 21(7) concerning a transfer of less than all designs shall not have effect in the United States.
Hague Agreement Rule 22 provides for correction of errors in the International Register by the International Bureau, acting ex officio, or at the request of the holder. Under Rule 22(2), a designated Contracting Party may refuse the effects of correction. Upon receipt of a correction under Rule 22 in a pending application, the Office will make a determination whether to give effect to the correction or to refuse the correction in accordance with the merits of each situation, subject to such other requirements as may be imposed. Corrections under Rule 22 received in abandoned applications will generally not be acted upon by the Office and will not be given effect unless otherwise indicated by the Office. U.S. patents, including U.S. patents issuing from international design applications, may only be corrected in accordance with the provisions of title 35, United States Code, for correcting patents. Such provisions are contained, for example, in 35 U.S.C. chapter 25. See, e.g., MPEP §§ 1401 et seq., 1480 and 1481.
Article 16(1) provides for the recording of certain changes in the International Register by the International Bureau. Pursuant to Article 16(2), a Contracting Party may, in a declaration, notify the International Bureau that a recording of a change in ownership of the international registration shall not have that effect in that Contracting Party until the Office of that Contracting Party has received the statements or documents specified in that declaration. The United States has made a declaration under Article 16(2). See MPEP § 2903. In addition, the recording of a partial change in ownership by the International Bureau in the International Register concerning a transfer of less than all designs shall not have effect in the United States. See 37 CFR 1.1065(b). Section 1.1065(b) does not limit the right of the owner to assign or otherwise transfer a portion of his or her interest in the application, or to record such transfer in the Office, but rather simply provides that the recording of such a transfer in the International Register will not have effect in the United States.
2931 -2939 [Reserved]
2940 Statement of Grant of Protection [R-07.2015]
Hague Rule 18 bis
Statement of Grant of Protection
(1) [ Statement of Grant of Protection Where No Notification of Refusal Has Been Communicated]
(a) An Office which has not communicated a notification of refusal may, within the period applicable under Rule 18(1)(a) or (b), send to the International Bureau a statement to the effect that protection is granted to the industrial designs, or some of the industrial designs, as the case may be, that are the subject of the international registration in the Contracting Party concerned, it being understood that, where Rule 12(3) applies, the grant of protection will be subject to the payment of the second part of the individual designation fee.
(b) The statement shall indicate
(i) the Office making the statement,
(ii) the number of the international registration,
(iii) where the statement does not relate to all the industrial designs that are the subject of the international registration, those to which it relates,
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(iv) the date on which the international registration produced or shall produce the effect as a grant of protection under the applicable law, and
(v) the date of the statement.
(c) Where the international registration was amended in a procedure before the Office, the statement shall also contain or indicate all amendments.
(d) Notwithstanding subparagraph (a), where Rule 18(1)(c)(i) or (ii) applies, as the case may be, or where protection is granted to the industrial designs following amendments in a procedure before the Office, the said Office must send to the International Bureau the statement referred to in subparagraph (a).
(e) The applicable period referred to in subparagraph (a) shall be the period allowed pursuant to Rule 18(1)(c)(i) or (ii), as the case may be, to produce the effect as a grant of protection under the applicable law, with respect to a designation of a Contracting Party having made a declaration under either of the aforementioned Rules.
(2) [Statement of Grant of Protection Following a Refusal]
(a) An Office which has communicated a notification of refusal and which has decided to either partially or totally withdraw such refusal, may, instead of notifying a withdrawal of refusal in accordance with Rule 18(4)(a), send to the International Bureau a statement to the effect that protection is granted to the industrial designs, or some of the industrial designs, as the case may be, that are the subject of the international registration in the Contracting Party concerned, it being understood that, where Rule 12(3) applies, the grant of protection will be subject to the payment of the second part of the individual designation fee.
(b) The statement shall indicate
(i) the Office making the notification,
(ii) the number of the international registration,
(iii) where the statement does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate,
(iv) the date on which the international registration produced the effect as a grant of protection under the applicable law, and
(v) the date of the statement.
(c) Where the international registration was amended in a procedure before the Office, the statement shall also contain or indicate all amendments.
(3) [Recording, Information to the Holder and Transmittal of Copies] The International Bureau shall record any statement received under this Rule in the International Register, inform the holder accordingly and, where the statement was communicated, or can be reproduced, in the form of a specific document, transmit a copy of that document to the holder.
37 CFR 1.1068 Statement of grant of protection.
Upon issuance of a patent on an international design application designating the United States, the Office may send to the International Bureau a statement to the effect that protection is granted in the United States to those industrial design or designs that are the subject of the international registration and covered by the patent.
Upon issuance of a patent on a nonprovisional international design application, the Office will send to the International Bureau a statement that protection is granted in the United States to the industrial design or designs that are the subject of the international registration and covered by the patent. See 37 CFR 1.1068. The sending of such a statement is provided for under Hague Agreement Rule 18 bis and serves the purpose of providing notice to the public and third parties through publication of the statement by the International Bureau in the International Designs Bulletin that protection for an industrial design has been granted in the United States.
2941 -2949 [Reserved]
2950 Grant of Protection Only Upon Issuance of Patent; Term of Design Patent [R-07.2015]
35 U.S.C. 389 Examination of international design application.
(a) IN GENERAL.—The Director shall cause an examination to be made pursuant to this title of an international design application designating the United States.
(b) APPLICABILITY OF CHAPTER 16.—All questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16.
(c) FEES.—The Director may prescribe fees for filing international design applications, for designating the United States, and for any other processing, services, or materials relating to international design applications, and may provide for later payment of such fees, including surcharges for later submission of fees.
(d) ISSUANCE OF PATENT.—The Director may issue a patent based on an international design application designating the United States, in accordance with the provisions of this title. Such patent shall have the force and effect of a patent issued on an application filed under chapter 16.
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§ 2950INTERNATIONAL DESIGN APPLICATIONS
35 U.S.C. 173 Term of design patent.
Patents for designs shall be granted for the term of 15 years from the date of grant.
37 CFR 1.1071 Grant of protection for an industrial design only upon issuance of a patent.
A grant of protection for an industrial design that is the subject of an international registration shall only arise in the United States through the issuance of a patent pursuant to 35 U.S.C. 389(d) or 171, and in accordance with 35 U.S.C. 153.
37 CFR 1.1031 International design application fees. *****
(e) Payment of the fees referred to in Article 17 and Rule 24 for renewing an international registration (“renewal fees”) is not required to maintain a U.S. patent issuing on an international design application in force.
*****
A grant of protection for an industrial design that is the subject of an international registration shall only arise in the United States through the issuance of a patent pursuant to 35 U.S.C. 389(d) or 171, and in accordance with 35 U.S.C. 153. See 37 CFR 1.1071. The Office does not regard the failure to send a notification of refusal within the period referenced in 37 CFR 1.1062(b) to confer patent rights or other effect under Article 14(2). The Hague Agreement is not self-executing, and title I of the Patent Law Treaties Implementation Act of 2012 (PLTIA) provides for patent rights only upon issuance of a patent. See 35 U.S.C. 389(d) added by the PLTIA, 126 Stat. at 1531; see also S. Exec. Rep. No. 110-7, at 5 (“The proposed Act makes no substantive changes in U.S. design patent law with the exception of the following: the provision of limited rights to patent applicants between the date that their international design application is published by the IB and the date on which they are granted a U.S. patent based on that application; the extension of a patent term for designs from fourteen to fifteen years from grant; and allowing the USPTO to use a published international design registration as a basis for rejecting a subsequently filed national patent application that is directed at the same or a similar subject matter.”).
U.S. patents issued from international design applications shall be effective for a term of fifteen years from the date of grant. Payment of the fees referred to in Article 17 and Rule 24 for renewing
an international registration (“renewal fees”) is not required to maintain in force a U.S. patent issuing on an international design application. See 37 CFR 1.1031(e).
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2950
Appendix I [Reserved]
........................................
October 2014A-1
Appendix II List of Decisions Cited
A, Ex parte, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) ........................ 716.02, 2131.02
Abacab Int’l Computers Ltd., In re, 21 USPQ2d 1078 (Comm’r Pat. 1987) ..... 323.01(b)
Abbott Diabetes Care Inc., In re, 696 F.3d 1142, 104 USPQ2d 1337 (Fed. Cir. 2012) ...................................................................... 2111.01
Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315, 51 USPQ2d 1307 (Fed. Cir. 1999) ..... 2112,2133.03(c)
Abbott Labs. v. Syntron Bioreseach, Inc., 334 F.3d 1343, 67 USPQ2d 1337 (Fed. Cir. 2003) ......................................................... 2286
Abbott Laboratories v. Young, 920 F.2d 984, 17 USPQ2d 1027 (D.C. Cir. 1990) ........................................................................... 2751
AbbVie Duetschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014) ..... 2163, 2163.01, 2163.05
Abele, In re, 684 F.2d 902, 214 USPQ 682 (CCPA 1982) .................................................... 2184
Ackermann, In re, 444 F.2d 1172, 170 USPQ 340 (CCPA 1971) ......................... 706.03(w)
Adler v. Kluver, 159 USPQ 511 (Bd. Pat. Inter. 1968) .................................................... 715.05
Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977) ......................... 2155.06, 2301.03
AFG Industries, Inc. v. Cardinal IG Company, Inc., 239 F.3d 1239, 57 USPQ2d 1776 (Fed. Cir. 2001) ..... 2111.03
A.F. Stoddard & Co. v. Dann, 564 F.2d 556, 195 USPQ 97 (D.C. Cir. 1977) ..... 1412.04
Affidavit Filed After Final Rejection, In re, 152 USPQ 292, 1966 C.D. 53 (Comm’r Pat. 1966) ............................................... 2265, 2665
Ahlert, In re, 424 F.2d 1088, 165 USPQ 418 (CCPA 1970) ............................................... 2144.03
Ahrens v. Grey, 1931 C.D. 9, 402 O.G. 261 (Bd. App. 1929) ............................................ 213.03
Ajinomoto Co. v. Archer-Daniels-Midland Co., 228 F.3d 1338, 56 USPQ2d 1332 (Fed. Cir. 2000), cert. denied, 121 S.Ct 1957 (2001) ...................................................... 2402
AK Steel Corp. v. Sollac, 344 F.3d 1234, 68 USPQ2d 1280 (Fed. Cir. 2003) ..... 2111.03, 2161.01,2163, 2164.08
Akron Brass Co. v. Elkhart Brass Mfg. Co., 353 F.2d 704, 147 USPQ 301 (7th Cir. 1965) .................................................. 2133.03(e)(1)
Aktiebolaget Astra v. Lehman, 71 F.3d 1578, 37 USPQ2d 1212 (Fed. Cir. 1995) ........................................................................... 2757
Akzo N.V. v. International Trade Comm’n, 808 F.2d 1471, 1 USPQ2d 1241 (Fed. Cir. 1986) .................................................... 2131.02
Alappat, In re, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994) ....................................... 2181
Albertson, In re, 332 F.2d 379, 141 USPQ 730 (CCPA 1964) ........................................ 2116.01
Albrecht, In re, 514 F.2d 1389, 185 USPQ 585 (CCPA 1975) .............................. 2144.09, 2145
Alcon Laboratories Inc., In re, 13 USPQ2d 1115 (Comm’r Pat. & Tm. 1989) ..... 2751, 2755.01
Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 110 USPQ2d 1976 (2014) ............................................ 2103, 2106
Allen, Ex parte, 2 USPQ2d 1425 (Bd. Pat. App. & Inter. 1987) .......................................... 2105
Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 63 USPQ2d 1769 (Fed. Cir. 2002) ..... 2133.03(e), 2133.03(e)(4)
Allen & Hansbury Ltd., 227 USPQ 955 (Comm’r Pat. & Tm. 1985) ............................. 2756
Aller, In re, 220 F.2d 454, 105 USPQ 233 (CCPA 1955) ............................................... 2144.05
Alpert v. Slatin, 305 F.2d 891, 134 USPQ 296 (CCPA 1962) ........................................ 2138.04
Al-Site Corp. v. VSI International Inc., 174 F.3d 1308, 50 USPQ2d 1161 (Fed. Cir. 1999) ........................................... 2181, 2183, 2184
Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 65 USPQ2d 1865 (Fed. Cir. 2003) ...................................................................... 2111.01
Alton, In re, 76 F.3d 1168, 37 USPQ2d 1578 (Fed. Cir. 1996) ..... 2145, 2163,2163.06, 2164.05
Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U.S. 477, 24 USPQ 308 (1935) ........................................................ 1490
Rev. 07.2015, November 2015II-1
ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 94 USPQ2d 1823 (Fed. Cir. 2010) ........................................................... 2161.01
Alza Corp. v. Mylan Laboratories, Inc., 464 F.3d 1286, 80 USPQ2d 1001 (Fed. Cir. 2006) ........................................................... 2143.01
Am. Acad. of Sci. Tech. Ctr., In re, 367 F.3d 1359, 70 USPQ2d 1827 (Fed. Cir. 2004) ............................................................ 2111, 2111.01
Am. Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 51 S. Ct. 328, 75 L. Ed. 801, 1931 Dec. Comm'r Pat. 711 (1931) ..... 2106
Amazon.com v. Barnesandnoble.com, 73 F. Supp. 2d 1228, 53 USPQ2d 1115 (W.D. Wash. 1999) .......................................... 2128
American Infra-Red Radiant Co. v. Lambert Indus. Inc., 360 F.2d 977, 149 USPQ 722 (8th Cir. 1966) ................................ 901.05, 2135.01
American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 220 USPQ 763 (Fed. Cir. 1984) .................................................. 410
American Seating Co. v. USSC Group, Inc., 514 F.3d 1262, 85 USPQ2d 1683 (Fed. Cir. 2008) ................................................ 2152.02(c)
Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 Fed. Cir. 1991) ..... 2138, 2138.04, 2143.02, 2163,2163.02, 2164.08, 2165.04, 2173.05(b)
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 126 F. Supp. 2d 69, 57 USPQ2d 1449 (D. Mass. 2001) .................................... 706.04
Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 92 USPQ2d 1289 (Fed. Cir. 2009) ......................................................... 2113
Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 78 USPQ2d 1147 (Fed. Cir. 2006) ..... 1504.02
Amos, In re, 953 F.2d 613, 21 USPQ2d 1271 (Fed. Cir. 1991) .................................. 1412.01
Amp, In re, 212 USPQ 826 (Comm’r Pat. 1981) ...................................................... 2225, 2625
Amphenol Corp. v. Gen’l Time Corp., 397 F.2d 431, 158 USPQ 113 (7th Cir. 1968) ............................................................ 2133.03(e)(1)
Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F. Supp 98, 183 USPQ 87 (D. Del. 1974) ................................................... 1504.06
Anderson, Ex parte, 21 USPQ2d 1241 (Bd. Pat. App. & Inter. 1991) ......................... 2173.05(b)
Anderson, In re, 471 F.2d 1237, 176 USPQ 331 (CCPA 1973) .............................. 2163.07, 2181
Anderson’s-Black Rock Inc. v. Pavement Salvage Co., 396 U.S. 57, 163 USPQ 673 (1969) .............................. 716.01(a), 2141, 2143.01
Anderson v. Crowther, 152 USPQ 504 (Bd. Pat. Inter. 1965) ........................................... 2138.06
Andresen, Ex parte, 212 USPQ 100 (Bd. App. 1981) .............................. 2004, 2137, 2141.01
Andrew Corp. v. Gabriel Electronics, 847 F.2d 819, 6 USPQ2d 2010 (Fed. Cir. 1988) ....................................................... 2173.05(b)
Angstadt, In re, 537 F.2d 498, 190 USPQ 214 (CCPA 1976) ... 2164.01, 2164.06, 2164.08(b)
Anthony, Ex parte, 230 USPQ 467 (Bd. App. 1982), aff’d 770 F.2d 182 (Fed. Cir. 1985) (table) ..................................................... 1490
Anthony, In re, 414 F. 2d 1383, 162 USPQ 594 (CCPA 1969) ......................... 2107.01, 2107.03
Antonie, In re, 559 F.2d 618, 195 USPQ 6 (CCPA 1977) ................................ 2141.02, 2144.05
Aoyama, In re, 656 F.3d 1293 (Fed. Cir. 2011) ................................................................ 2181
A&P Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) ........................................ 716.01(a)
Appeal, Decided 9/3/68, Ex parte, 866 O.G. 16 (Bd. App. 1968) ...................................... 1504.02
Appeal No. 194-38, 152 USPQ 70, 1955 C.D. 31 (Bd. App. 1965) .......................... 901.05(b)
Appeal No 239-48, 151 USPQ 711, 1966 C.D. 22, 833 O.G. 10 (Bd. App. 1965) ...................................................................... 1504.02
Appeal No. 242-47, 196 USPQ 828 (Bd. App. 1976) ................................. 901.05(b), 2135.01
Appeal No. 315-40, Ex Parte, 152 USPQ 71 (Bd. App. 1965) ...................................... 1504.05
Application Filed Nov. 16, 1945, In re, 89 USPQ 280, 1951 C.D. 1, 646 O.G. 5 (Comm’r Pat. 1951) .................................. 904.01(a)
Application of Takao, 17 USPQ2d 1155 (Comm’r Pat. 1990) .................................. 711.03(c)
Application Papers Filed Jan. 20, 1956, In re, 706 O.G. 4 (Comm’r Pat. 1956) ..... 714.07
Application Papers Filed Sept. 10, 1954, In re, 108 USPQ 340 (Comm’r Pat. 1955) ................................................................... 409.03(c)
II-2Rev. 07.2015, November 2015
LIST OF DECISIONS CITED
Applied Materials Inc. v. Gemini Research Corp., 835 F.2d 279, 15 USPQ2d 1816 (Fed. Cir. 1988) ........................................... 2136.05
Argoudelis, Ex parte, 157 USPQ 437 (Bd. App. 1967) .................................................. 1214.03
Argoudelis, In re, 434 F.2d 1390, 168 USPQ 99 (CCPA 1970) ..... 2164.06, 2164.06(a),2402
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 94 USPQ2d 1161 (Fed. Cir. 2010)(en banc) ..... 2161, 2161.01, 2163, 2163.03, 2173.05(g), 2181
Aristocrat TechnologiesAustralia PTY Ltd. v. International Game Technology, 521 F.3d 1328 (Fed. Cir. 2008) ..... 2163, 2181, 2268, 2668
Armbruster, In re, 512 F. 2d 676, 185 USPQ 152 (CCPA 1975) ..... 608.01(b), 2161,2181
Armour & Co. v. Swift & Co., 466 F.2d 767, 175 USPQ 70 (7th Cir. 1972) ..... 2001.06(b)
Armstrong, In re, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) ..................................... 716.02(e)
Arnold Partnership v. Dudas, 362 F.3d 1338, 70 USPQ2d 1311 (Fed. Cir. 2004) ........................................................................... 2751
Arnott, In re, 19 USPQ2d 1049 (Comm’r Pat. 1991) ......................................................... 1481
ArQule v. Kappos, 793 F. Supp. 2d 214 (D.D.C. 2011) ........................................ 2732, 2734
Arzberger, In re, 112 F.2d 834, 46 USPQ 32 (CCPA 1940) ............................................... 1601
Asahi/America Inc., In re, 68 F.3d 442, 37 USPQ2d 1204 (Fed. Cir. 1995) ..... 715.07
Asano, Ex parte, 201 USPQ 315 (Bd. Pat. App. & Inter. 1978) .................................... 1503.02
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985) ..... 716.01(b),716.01(c), 2145
Aslanian, In re, 590 F.2d 911, 200 USPQ 500 (CCPA 1979) ............................................. 2125
Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. _, 133 S. Ct. 2107, 106 USPQ2d 1972 (2013) ................................................................. 2103, 2106
Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 23 USPQ2d 1481
(Fed. Cir. 1992) ..... 2133.03(b), 2133.03(c)
Atlas Powder Co. v. E.I. duPont de Nemours & Co., 750 F.2d 1569, 224 USPQ 409 (Fed. Cir. 1984) ... 2111.03, 2164.01, 2164.08(b)
Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 51 USPQ2d 1943 (Fed. Cir. 1999) ............................................. 2112, 2131.01, 2131.05
Atmel Corp. v. Information Storage Devices Inc., 198 F.3d 1374, 53 USPQ2d 1225 (Fed. Cir. 1999) ..................................... 2163, 2181
Atofina v. Great Lakes Chemical Corp, 441 F.3d 991 USPQ2d 1417 (Fed. Cir. 2006) ...................................................................... 2131.03
Attig, Ex parte, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986) ................................ 2173.05(b)
Auto. Techs. Int’l, Inc. v. BMW of N. Am.,Inc., 501 F.3d 1274, 84 USPQ2d 1108 (Fed. Cir. 2007) ..... 2161.01, 2164.06(a)
Autogiro Co. of America v. United States, 384 F.2d 391,155 USPQ 697 (Ct. Cl. 1967) ............................................................... 2163
Automatic Weighing Mach. Co. v. Pneumatic Scale Corp., 166 F.2d 288, 1909 C.D. 498, 139 O.G. 991 (1st Cir. 1909) ............................................................. 715.07
Avia Group International, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988) ..... 1504.01(c), 1504.03
Ayers, Ex parte, 108 USPQ 444 (Bd. App. 1955) ......................................................... 608.04(a)
Azar v. Burns, 188 USPQ 601 (Bd. Pat. Inter. 1975) .................................................. 2138.05
Badger, Ex parte, 1901 C.D. 195, 97 O.G. 1596 (Comm’r Pat. 1901) ......................... 608.02(f)
Baird, In re, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994) ..... 2144.05, 2144.08, 2163
Baker Hughes, Inc. v. Kirk, 921 F. Supp. 801, 38 USPQ2d 1885 (D.D.C. 1995) .... 1410.01, 1412.04
Ball Corp., In re, 925 F.2d 1480, 18 USPQ2d 1491 (Fed. Cir. 1991) ........................ 2145
Ball Corp. v. United States, 729 F.2d 1429, 221 USPQ 289 (Fed. Cir. 1984) ..... 1412.02,1490
Balzarini, Ex parte, 21 USPQ2d 1892 (Bd. Pat. App. & Inter. 1991) .............................. 2107.03
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MANUAL OF PATENT EXAMINING PROCEDURE
Bandel, In re, 348 F.2d 563, 146 USPQ 389 (CCPA 1965) ...................................................... 715
Barber, Ex parte, 187 USPQ 244 (Bd. App. 1974) ....................................................... 2173.05(j)
Barber, In re, 81 F.2d 231, 28 USPQ 187 (CCPA 1936) ...................................................... 804
Barker, In re, 559 F.2d 588, 194 USPQ 470 (CCPA 1977) .......................................... 2161, 2163
Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 221 USPQ 561 (Fed. Cir. 1984) ..... 2133.03(b)
Barr, In re, 444 F.2d 588, 170 USPQ 330 (CCPA 1971) ..... 2173.05(a), 2173.05(g), 2173.05(i)
Bartfeld, Ex parte, 16 USPQ2d 1714 (Bd. Pat. App. & Inter. 1990) .............................. 2136.01
Bartfeld, In re, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991) ..... 706.02(f)(2), 706.02(i),804,804.03,2136.01,2136.05, 2141.01
Basmadjian v. Landry, 54 USPQ2d 1617, (Bd. Pat. App. & Inter. 1997) ........................... 2305
Bass, In re, 314 F.3d 575, 65 USPQ2d 1156 (Fed. Cir. 2002) ........................................... 2258.01
Bass, In re, 474 F.2d 1276, 177 USPQ 178 (CCPA 1973) ..... 715, 2004, 2138, 2138.03
Bauman, In re, 683 F.2d 405, 214 USPQ 585 (CCPA 1982) ............................................. 1451
B.E. Myers & Co. v. United States, 56 USPQ2d 1110 (US CtFedCls 2000) ..... 1412.02
Bausch & Lomb v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 230 USPQ 416 (Fed. Cir. 1986) ..... 2141.02
Baxter Diagnostics v.AVL Scientific Corp., 798 F. Supp. 612, 25 USPQ2d 1428 (C.D., Cal. 1992) ............................................. 2751
Baxter, In re, 656 F.2d 679, 210 USPQ 795 (CCPA 1987) ............................................... 2111.03
Baxter International Inc., In re, 678 F.3d 1357, 102 USPQ2d 1925 (Fed. Cir. 2012) ............................................................ 2242, 2686.04
Baxter Travenol Labs., In re, 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) ..... 2131.01, 2145
Bayer AG and Bayer Corporation v. Carlsbad Technology Inc., 298 F.3d
1377, 64 USPQ2d 1045 (Fed. Cir. 2002) ........................................................................... 2701
Bayer, In re, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978) ........................... 2128.01, 2152.02(e)
B. Braun Medical, Inc. v. Abbott Labs, 124 F.3d 1419, 43 USPQ2d 1896 (Fed. Cir. 1997) ............................................ 2163, 2181, 2182
Beattie, In re, 974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992) ..... 716.01(c), 2145
Beck, In re, 155 F.2d 398, 69 USPQ 520 (CCPA 1946) ............................................ 715.01(b)
Becket, In re, 88 F.2d 684 (CCPA 1937) .... 2144.05
Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 13 USPQ2d 1301 (Fed. Cir. 1989) ................................. 2121.01, 2158
Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 26 USPQ2d 1572 (Fed. Cir. 1993) ................................................................. 301
Beineke, In re, 690 F.3d 1344, 103 USPQ2d 1872 (Fed. Cir. 2012) ....................................... 1601
Belkin Int'l, Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012) ................................................ 2248
Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 34 USPQ2d 1816 (Fed. Cir. 1995) ............................................................ 2111.02, 2163
Bell, In re, 991 F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993) ..... 2144.08, 2144.09, 2163
Benger Labs. Ltd. v. R.K. Laros Co., 209 F. Supp. 639, 135 USPQ 11 (E.D. Pa. 1966) ................................................................ 2165
Benke, Ex parte, 1904 C.D. 63, 108 O.G. 1588 (Comm’r Pat. 1904) ............................. 811.02
Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159 (Comm’r Pat. 1876) ..... 1504.01(d)
Bennett, In re, 766 F.2d 524, 226 USPQ 413 (Fed. Cir. 1985) ..... 706.03(x), 1403, 1412.03
Benno, In re, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985) ................................. 2163, 2163.06
Benson, In re, 122 USPQ 279, 1959 C.D. 5, 744 O.G. 353 (Comm’r Pat. 1959) ..... 714.07
Berg, In re, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998) ......................................... 804
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LIST OF DECISIONS CITED
Bergen, In re, 120 F.2d 329, 49 USPQ 749 (CCPA 1941) ............................................... 2144.05
Berger, In re, 279 F.3d 975, 61 USPQ2d 1523 (Fed. Cir. 2002) .............................. 2304.02(c)
Bergstrom, In re, 427 F.2d 1394, 166 USPQ 256 (CCPA 1970) ........................................ 2144.04
Berkman, In re, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) ........................... 1504.04, 1504.20
Berman v. Housey, 291 F.3d 1345, 63 USPQ2d 1023 (Fed. Cir. 2002) ........................ 2303
Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 72 USPQ2d, 1901 (Fed. Cir. 2004) .............................. 2133.03(a)
Bernhart, In re, 417 F.2d 1395, 163 USPQ 611 (CCPA 1969) .................................... 2173.05(j)
Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997) ................................................ 1504.01(c)
Bertsch, In re, 132 F.2d 1014, 56 USPQ 379 (CCPA 1942) .............................................. 2111.03
Best, In re, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) ..... 2112, 2112.01, 2112.02, 2114
Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 100 USPQ2d 1433 (Fed. Cir. 2011) ......................................................... 2114
Bey v. Kollonitsch, 806 F.2d 1024, 231 USPQ 967 (Fed. Cir. 1986) ......................... 2138.06
BIC Leisure Prods., Inc., v. Windsurfing Int’l, Inc., 1 F.3d 1214, 27 USPQ2d 1671 (Fed. Cir. 1993) ................................................ 1460
Biesecker, Ex parte, 144 USPQ 129 (Bd. App. 1964) ....................................... 715.02, 715.03
Bigham v. Godtfredsen, 857 F.2d 1415, 8 USPQ2d 1266 (Fed. Cir. 1988) ..... 2138.01, 2138.05
Bigio, In re, 381 F.3d 1320, 72 USPQ2d 1209 (Fed. Cir. 2004) ..... 2141.01(a), 2173.01
Billottet, Ex parte, 192 USPQ 413 (Bd.App. 1976) ................................................................ 2137
Bilski, In re, 545 F.3d 943, 954, 88 USPQ2d 1835 (Fed. Cir. 2008) ....................................... 2106
Bilski v. Kappos, 561 U.S. ___, 130 S. Ct. 3218, 95 USPQ2d 1001 (2010) ..... 2103,2106
Bindra v. Kelly, 206 USPQ 570 (Bd. Pat. Inter. 1979) .................................................. 2138.05
Biomedino, LLC v. Waters Technology Corp., 490 F.3d 946, 952, 83 USPQ2d
1118, 1123 (Fed. Cir. 2007) ..... 2163, 2181, 2185
Bird Provision Co. v. Owens Country Sausage, Inc., 568 F.2d 369, 197 USPQ 134 (5th Cir. 1978) ................................. 2133.03(a)
Birmingham v. Randall, 171 F.2d 957, 80 USPQ 371 (CCPA 1948) ............................. 2138.05
Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009) ............................... 2181
Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986) ........................................................... 1504.02
Blacklight Power, Inc. v. Rogan, 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002) ................................................................. 1134, 1308
Blaisdell, In re, 242 F.2d 779, 113 USPQ 289 (CCPA 1957) ..... 2133.03(a), 2133.03(b), 2133.03(e)(3), 2133.03(e)(5)
Blake, In re, 358 F.2d 750, 149 USPQ 217 (CCPA 1966) ................................................. 715.07
Blanc, Ex parte, 13 USPQ2d 1383 (Bd. Pat. App. & Inter. 1989) ..... 716.02(c), 2143.02
Bland, Ex parte, 3 USPQ2d 1103 (Bd. Pat App. & Inter. 1986) ................................ 2141.01(a)
Blattner, Ex parte, 2 USPQ2d 2047 (Bd. Pat. App. & Inter. 1987) .............................. 2144.09
Blisscraft of Hollywood v. United Plastic Co., 189 F. Supp 333, 127 USPQ 452 (S.D.N.Y. 1960) ...................................... 1504.01(c)
Blondel, In re, 499 F.2d 1311, 182 USPQ 294 (CCPA 1974) ..................................... 716.02(b)
Blonder-Tongue Labs., Inc. v. Univ. of Ill., Foundation, 402 U.S. 313, 169 USPQ 513 (1971) ................................................... 2012.01
Blout, In re, 333 F.2d 928, 142 USPQ 173 (CCPA 1964) ...................................................... 715
Blum, In re, 374 F.2d 904, 153 USPQ 177 (CCPA 1967) ................................ 1503.01, 1503.02
Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965) ....................................................... 1504.05, 1504.06
Board of Education ex rel. Board of Trustees of Florida State Univ. v. American Bioscience Inc., 333 F.3d 1330, 67 USPQ2d 1252 (Fed. Cir. 2003) ...................................................................... 2137.01
Boeing Co. v. Comm’r Pat., 853 F.2d 878, 7 USPQ2d 1487 (Fed. Cir. 1988) ..... 2279
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Boesch, In re, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) ............................................ 716.02(b)
Bogese, In re, 303 F.3d 1362, 64 USPQ2d 1448 (Fed. Cir. 2002) ....................................... 2190
Bogoslowsky v. Huse, 142 F.2d 75, 61 USPQ 349 (CCPA 1944) ............................. 2138.03
Bolkcom v. Carborundum Co., 523 F.2d 492, 187 USPQ 446 (6th Cir. 1975) ..... 2003
Bond, In re, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990) ..... 2131, 2152.02(b), 2183, 2184
Bondiou, Ex parte, 132 USPQ 356 (Bd. App. 1961) .................................................. 2163.07
Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 9 USPQ2d 1847 (1989) .......................................................... 2133.02
Borden, In re, 90 F.3d 1570, 39 USPQ2d 1524 (Fed. Cir. 1996) .................................. 1504.03
Borkowski, In re, 422 F.2d 904, 164 USPQ 642 (CCPA 1970) ..... 707.07(l), 2164.02, 2174
Borkowski, In re, 505 F.2d 713, 184 USPQ 29 (CCPA 1974) ............................................ 715.07
Bose Corp. v. JBL, Inc., 274 F.3d 1354, 61 USPQ2d 1216 (Fed. Cir. 2001) ..... 2173.05
Bosies v. Benedict, 27 F.3d 539, 30 USPQ2d 1862 (Fed. Cir. 1994) ..... 2138.04
Bostwick, In re, 102 F.2d 886, 41 USPQ 279 (CCPA 1939) ....................................... 1449.02
Bosy, In re, 360 F.2d 972, 149 USPQ 789 (CCPA 1966) ............................................... 2165.01
Bourne v. Jones, 114 F. Supp 413, 98 USPQ 206 (S.D. Fla. 1951) .......................... 2133.03(e)(7)
Bowen, In re, 492 F.2d 859, 181 USPQ 48 (CCPA 1974) ............................................... 2164.04
Bowers, In re, 359 F.2d 886, 149 USPQ 570 (CCPA 1966) ................................ 706.02(l)(2), 804
Bowser Inc. v. United States, 388 F.2d 346, 156 USPQ 406 (Ct. Cl. 1967) .......................... 2141
Bowyer, Ex parte, 42 USPQ 526, 1939 C.D. 5, 505 O.G. 759 (Comm’r Pat. 1939) ..... 715.07(b)
Braat, In re, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 1991) ................................... 804, 1504.06
Brader v. Schaeffer, 193 USPQ 627 (Bd. Pat. Inter. 1976) ........................................... 2137.01
Braithwaite, In re, 379 F.2d 594, 154 USPQ 29 (CCPA 1967) ..... 804, 804.02, 806.04(i)
Brana, In re, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995) ..... 2107.01, 2107.03, 2164.01(c), 2107.02, 2164.02, 2164.04, 2164.07
Brandstadter, In re, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973) .... 716.01(c), 716.09, 2164.05, 2164.06(c)
Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 267 F.3d 1370, 60 USPQ2d 1482 (Fed. Cir. 2001) ........................................... 2001.06
BRCA1– and BRCA2–Based Hereditary Cancer Test Patent Litigation, In re, 774 F.3d 755, 113 USPQ2d 1241 (Fed. Cir. 2014) ................................................................ 2106
Brenner v. Manson, 383 U.S. 519, 148 USPQ 689 (1966) ..... 2103, 2107.01, 2107.02
Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968) .... 216.01, 1402, 1417, 1444
Breslow, In re, 616 F.2d 516, 205 USPQ 221 (CCPA 1980) ................................... 2164.01(b)
Brian, Ex parte, 118 USPQ 242 (Bd. App. 1958) ....................................................... 2173.05(t)
Bridgeford, In re, 357 F.2d 679, 149 USPQ 55 (CCPA 1966) ........................................ 806.05(f)
Bristol-Myers Squibb Co. v. Kappos, 891 F.Supp.2d 135 (D.D.C. 2012) .......................... 2734
Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 70 USPQ2d 1097 (Fed. Cir. 2004) ..................................... 804.01, 819
Bristol-Myers Squibb Co. v. Rhone Poulenc Rorer, Inc., 326 F.3d 1226, 66 USPQ2d 1481 (Fed. Cir. 2003) .................................. 2001.04
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 67 USPQ2d 1132 (Fed. Cir. 2003) ........................................... 2111.01
Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 24 USPQ2d 1401 (Fed. Cir. 1992) .................................. 2107.01
Broos v. Barton, 142 F.2d 690, 61 USPQ 447 (CCPA 1944) ........................................ 2138.06
Brouwer, In re, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996) ..... 706.02(n), 2116.01, 2144.08, 2158
Brower, In re, 433 F.2d 813, 167 USPQ 684 (CCPA 1970) .................................................... 2172
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LIST OF DECISIONS CITED
Brown, In re, 459 F.2d 531, 173 USPQ 685 (CCPA 1972) .......................................... 2113, 2183
Brown, In re, 477 F.2d 946, 177 USPQ 691 (CCPA 1973) ........................... 2161.01, 2164.06(c)
Brown v. 3M, 265 F.3d 1349, 60 USPQ2d 1375 (Fed. Cir. 2001) ....................................... 2131
Bruckelmyer v. Ground Heaters, Inc., 445 F. 3d 1374, 78 USPQ2d 1684 (Fed. Cir. 2006) ............................................. 2127, 2152.02(e)
Brummer, Ex parte, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989) ......................... 2173.05(b)
Bryan, In re, 323 Fed. Appx. 898 (Fed. Cir. 2009) ........................................................... 2112.01
Buchner, In re, 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991) ..... 716.09, 2107.02, 2164.01, 2164.05, 2164.05(a), 2164.08
Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 58 USPQ2d 1801 (Fed. Cir. 2001) ................................................................. 2181, 2182
Budnick, In re, 537 F.2d 535, 190 USPQ 422 (CCPA 1976) ..... 2164.05(a), 2164.06(c)
Buildex v. Kason Indus., 849 F.2d 1461, 7 USPQ2d 1325 (Fed. Cir. 1988) ..... 2133.03(b)
Bundy, In re, 642 F.2d 430, 209 USPQ 48 (CCPA 1981) ..... 2107.02, 2164.04, 2164.06(b), 2164.07, 2165.04
Burckel, In re, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979) ....................................... 716.02(e)
Burhans, In re, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) ............................................... 2144.04
Burlington Industries Inc. v. Quigg, 822 F.2d 1581, 3 USPQ2d 1436 (Fed. Cir. 1987) .............................................. 716.05, 2173.02
Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 32 USPQ2d 1915 (Fed. Cir. 1994) ................................. 2138.04, 2163
Burr v. Duryee, 68 U.S. (1 Wall.) 531, 17 L. Ed. 650 (1863) ............................................. 2106
Burrowes, Ex parte, 1904 C.D. 155, 110 O.G. 599 (Comm’r Pat. 1904) ..... 1214.01, 2682
Busse, Ex parte, 1 USPQ2d 1908 (Bd. Pat. App. & Inter. 1986) ..................................... 2107.03
Buszard, In re, 504 F.3d 1364 (Fed. Cir. 2007) ................................................. 2111, 2173.02
Butera, In re, 1 F.3d 1252, 28 USPQ2d 1399 (Fed. Cir. 1993) ....................................... 2141.01(a)
Buting, In re, 418 F.2d 540, 163 USPQ 689 (CCPA 1969) ............................................... 2107.03
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 112 USPQ2d 1093 (Fed. Cir. 2014) ........................................................................... 2106
C, Ex parte, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) ..... 716.02(b), 2133.03(a)
Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985) ..... 716.03(b), 716.06, 1504.03
Cady, Ex parte, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916) .......................... 1502, 1504.04
Caldwell, Ex parte, 1906 C.D. 58 (Comm’r Pat. 1906) ............................................... 2173.05(d)
California Research Corp. v. Ladd, 356 F.2d 813, 148 USPQ 404 (D.C. Cir. 1966) ..... 1216.02
Callicrate vs. Wadsworth Mfg., Inc., 427 F.3d 1361, 77 USPQ2d 1041 (Fed. Cir. 2005) .......................................................... 2164.01
Capon v. Eshhar, 418 F.3d 1349, 76 USPQ2d 1078 (Fed. Cir. 2005) ..... 2161.01, 2163
Card, Ex parte, 1904 C.D. 383 (Comm’r Pat. 1904) .................................................... 2301.03
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 63 USPQ2d 1725 (Fed. Cir. 2002) ...................................... 2181, 2182
Carella v. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed. Cir. 1986) ..... 2128, 2132, 2152.02(c)
Carl Zeiss Stiftung v. Renishaw PLC, 945 F.2d 1173, 20 USPQ2d 1094 (Fed. Cir. 1991) ............................................ 2107.01, 2107.02
Carletti, In re, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964) ................................... 1504.01(c)
Carlson, In re, 983 F.2d 1032, 25 USPQ2d 1207 (Fed. Cir. 1992) ..... 2126, 2152.02(a)
Carman Indus. Inc. v. Wahl, 724 F.2d 932, 220 USPQ 481 (Fed. Cir. 1983) ... 804, 1504.06
Carreira, In re, 532 F.2d 1356, 189 USPQ 461 (CCPA 1976) ........................... 716.10, 2136.05
Carroll, In re, 601 F.2d 1184, 202 USPQ 571 (CCPA 1979) ..................................... 716.01(c)
Carter, In re, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982) ............................................... 1504.03
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MANUAL OF PATENT EXAMINING PROCEDURE
Carter-Wallace, Inc. v. Riverton Labs., Inc., 433 F.2d 1034, 167 USPQ 656 (2d Cir. 1970) ........................................................... 2165.01
Case v. CPC Int’l Inc., 730 F.2d 745, 221 USPQ 196 (Fed. Cir. 1984) ......................... 2301.03
Casey, In re, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) .................................................... 2115
Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 62 USPQ2d 1781(Fed. Cir. 2002) ................................... 2111.02
Catan, Ex parte, 83 USPQ2d 1569 (Bd. Pat. App. & Int. 2007) ........................................ 2143.01
Cataphote Corp. v. Desoto Chem. Coatings, Inc., 356 F.2d 24, 148 USPQ 229 (9th Cir.) .................................................... 2133.03(e)(1)
Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000) ................................................................. 2183, 2184
Caterpillar Inc. v. Detroit Diesel Corp., 961 F. Supp. 1249, 41 USPQ2d 1876 (N.D. Ind. 1996) ......................................................... 2181
Caterpillar Tractor Co. v. Comm’r Pat., 650 F. Supp. 218, 231 USPQ 590 (E.D. Va. 1986) ................................................................ 1850
Cavanagh, In re, 436 F.2d 491, 168 USPQ 466 (CCPA 1971) .......................................... 716.04
Caveney, In re, 761 F.2d 671, 226 USPQ 1 (Fed. Cir. 1985) ...................................... 2133.03(b)
Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 47 USPQ2d 1516 (Fed. Cir. 1998) ..... 2123, 2131.05
Centocor Ortho Biotech, Inc. v. Abbott Laboratories, 636 F.3d 1341, 97 USPQ2d 1870 (Fed. Cir. 2011) ....................................... 2163
Certain Limited-Charge Cell Culture Microcarriers, 221 USPQ 1165 (Int’l Trade Comm’n 1983) ................................. 2164.01
CFMT, Inc. v. Yieldup Int ’l Corp., 349 F.3d 1333, 68 USPQ2d 1940 (Fed. Cir. 2003) ................................................................ 2164
Chandler, In re, 319 F.2d 211, 138 USPQ 138 (CCPA 1963) ................................... 2173.05(n)
Chapman, In re, 357 F.2d 418, 148 USPQ 711 (CCPA 1966) ..................................... 716.02(e)
Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 69 USPQ2d 1857 (Fed. Cir. 2004) .................................................... 2111.01
Chemcast Corp. v. Acro Indus. Corp., 913 F.2d 923, 16 USPQ2d 1033 (Fed. Cir.
1990) ..... 2107.01, 2161.01, 2165.03, 2411.01
Chemithon Corp. v. Procter & Gamble Co., 287 F. Supp 291, 159 USPQ 139 (D. Md. 1968) ...................................................... 2133.03(a)
Chevenard, In re, 139 F.2d 71, 60 USPQ 239 (CCPA 1943) ........................................ 2144.03
Chicago HistoricalAntiqueAuto. Museum, Inc., In re, 197 USPQ 289 (Comm’r Pat. 1978) .................................................................. 513
Chicago Rawhide Mfg. Co., Ex parte, 223 USPQ 351 (Bd. Pat. App. & Inter. 1984) ................................... 2144.04, 2241, 2258.01, 2642
Chicopee Mfg. Corp. v. Columbus Fiber Mills Co., 165 F. Supp. 307, 118 USPQ 53 (M.D. Ga. 1958) ............................ 2133.03(e)(1)
Chiddix, In re, 209 USPQ 78 (Comm’r Pat. 1980) ........................................................... 1205.02
Chilowski, In re, 229 F.2d 457, 108 USPQ 321 (CCPA 1956) ... 2107.01, 2107.02, 2107.03, 2164.02, 2164.07
Chilowsky, In re, 306 F.2d 908, 134 USPQ 515 (CCPA 1962) ..................................... 716.01(c)
Chiron v. Corp. v. Genentech Inc., 363 F.3d 1247, 70 USPQ2d 1321 (Fed. Cir. 2004) .................................................. 2164.03, 2164.05(a)
Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus. Inc., 145 F.3d 1303, 46 USPQ2d 1752 (Fed. Cir. 1998) ..... 2183, 2184
Chore-TimeEquipment, Inc.v.Cumberland Corp., 713 F.2d 774, 218 USPQ 673 (Fed. Cir. 1983) ........................................... 2141.03
Christensen, In re, 330 F.2d 652, 141 USPQ 295 (CCPA 1964) .......................................... 804.03
Chromalloy American Corp. v. Alloy Surfaces Co., 339 F.Supp 859, 173 USPQ 295 (D. Del. 1972) ....................... 2004, 2012, 2016
Chu, In re, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995) ..... 211.05, 716.02(f), 2145,
Chupp, In re, 816 F.2d 643, 2 USPQ2d 1437 (Fed. Cir. 1987) ..... 716.01(d), 716.02(a), 2145
Ciric v. Flanigen, 511 F.2d 1182, 185 USPQ 103 (CCPA 1975) ........................................ 2138.05
Citron, In re, 325 F.2d 248, 139 USPQ 516 (CCPA 1963) ..... 2107.01, 2107.02, 2107.03
II-8Rev. 07.2015, November 2015
LIST OF DECISIONS CITED
Clamp, In re, 151 USPQ 423 (Comm’r Pat. 1966) ............................................................ 213.03
Clapp, Ex parte, 227 USPQ 972 (Bd. Pat. App & Inter. 1985) .......................... 706.02(j), 2144
Clark, Ex parte, 174 USPQ 40 (Bd. App. 1971) ....................................................... 2173.05(o)
Clark, In re, 522 F.2d 623, 187 USPQ 209 (CCPA 1975) ........................... 2012, 2012.01, 2016
Clark, In re, 457 F.2d 1004, 173 USPQ 359 (CCPA 1972) ................................................. 715.05
Clarke, In re, 356 F.2d 987, 148 USPQ 665 (CCPA 1966) ................................................. 715.03
Clay, In re, 966 F.2d 656, 23 USPQ2d 1058 (Fed. Cir. 1992) ........................................... 2144.08
ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340 (Fed. Cir. 2012) ..... 2131.03
Clemens, In re, 622 F.2d 1029, 206 USPQ 289 (CCPA 1980) ........................... 716.02(d), 2145
Clement, In re, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997) ................................. 1412.02
Clifford, Ex parte, 49 USPQ 152 (Bd. App. 1940) ............................................................. 901.02
Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966) ............................................... 706.03(d), 2173.05(q)
Cloud v. Standard Packaging Corp., 376 F.2d 384, 153 USPQ 317 (7th Cir. 1967) ............................................................ 2133.03(e)(1)
Coca-Cola Co. v. Gemini Rising Inc., 346 F. Supp. 1183, 175 USPQ 56 (E.D.N.Y. 1972) ................................................................ 1512
Cochrane v. Deener, 94 U.S. 780, 24 L.Ed. 139, 1877 Dec. Comm'r Pat. 242 (1876) ........................................................................... 2106
Cofer, In re, 354 F.2d 664, 148 USPQ 268 (CCPA 1966) ............................................... 2144.04
Cogar v. Schuyler, 464 F.2d 747, 173 USPQ 389 (D.C. Cir. 1972) .................................. 409.03(i)
Cohn, In re, 438 F.2d 984, 169 USPQ 95 (CCPA 1971) ............................................... 2173.03
Colbert v. Lofdahl, 21 USPQ2d 1068 (Bd. Pat. App. & Inter. 1991) .............................. 2138.02
Cole, In re, 326 F.2d 769, 140 USPQ 230 (CCPA 1964) .......................................... 2164.06(c)
Cole v. Kimberly-Clark Corp., 102 F.3d 524, 41 USPQ2d 1001 (Fed. Cir. 1996) ........................................................................... 2181
Coleman v. Dines, 754 F.2d 353, 224 USPQ 857 (Fed. Cir. 1985) .................................... 2138.04
Colianni, In re, 561 F.2d 220, 195 USPQ 150 (CCPA 1977) ..... 2164.06, 2164.06(b)
Collier, In re, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968) ..... 2163, 2163.05, 2172.01, 2173.05(k)
Comstock, In re, 481 F.2d 905, 178 USPQ 616 (CCPA 1973) ................................... 2164.06(c)
Comstock, Ex parte, 1923 C.D. 82, 317 O.G. 4 (Comm’r Pat. 1923) ... 1214.01, 2682
Consolidated Aluminum Corp. v. Foseco Inc., 910 F.2d 804, 15 USPQ2d 1481 (Fed. Cir. 1990) ................................................ 2165
Consolidated Edison Co. v. NLRB , 305 U.S. 197 (1938) .......................................... 1216.01
Consolidated Fruit-Jar Co. v. Wright, 94 U.S. 92 (1876) ........................................ 2133.03(b)
Constant, In re, 827 F.2d 728, 3 USPQ2d 1479 (Fed. Cir. 1987) ....................................... 1414
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir. 1988) ..... 706.02, 2128.02, 2129, 2145, 2152.03
Construction Equipment Company, In re, 665 F.3d 1254, 100 USPQ2d 1922 (Fed. Cir. 2011) ............................................... 2259, 2659
Consumer Watchdog v. Wisconsin Alumni ResearchFoundation,111USPQ2d1241, 753 F.3d 1258 (Fed. Cir. 2014) ........................ 2683
Continental Can Co., Inc. v. Schuyler, 326 F. Supp 283, 168 USPQ 625 (D.D.C. 1970) ........................................................... 1216.01
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 20 USPQ2d 1746 (Fed. Cir. 1991) ........................................................... 2131.01
Convolve, Inc. v. Compaq Computer Corp., 527 F.App’x 910 (Fed. Cir. 2013) ..... 2161.01
Cook, In re, 439 F.2d 730, 169 USPQ 298 (CCPA 1971) ........................... 2164.03, 2164.08(b)
Cooper v. Goldfarb, 154 F.3d 1321, 47 USPQ2d 1896 (Fed. Cir. 1998) ..... 2163
Cooper v. Goldfarb, 240 F.3d 1378, 57 USPQ2d 1990 (Fed. Cir. 2001) ..... 2138.05
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Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 87 USPQ2d 1705 (Fed. Cir. 2008) ..... 2730
Copenhaver, Ex parte, 109 USPQ 118 (Bd. App. 1955) .............................................. 2173.05(b)
Corba, In re, 212 USPQ 825 (Comm’r Pat. 1981) ........................................................... 1504.20
Cordova, Ex parte, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) ......................... 2173.05(h)
Corkill, In re, 711 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985) ..... 716.02(a), 2107.02
Cormany, In re, 476 F.2d 998, 177 USPQ 450 (CCPA 1973) ............................................. 2172
Corneil, In re, 347 F.2d 563, 145 USPQ 702 (CCPA 1965) .................................................... 2124
Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 9 USPQ2d 1962 (Fed. Cir. 1989) ..... 2111.02, 2163
Corning v. Burden, 56 U.S. (15 How.) 252, 14 L.Ed. 683 (1854) ......................................... 2106
Cornwall, In re, 230 F.2d 457, 109 USPQ 57 (CCPA 1956) ........................... 1504.02, 1504.03
Correge v. Murphy, 705 F.2d 1326, 217 USPQ 753 (Fed. Cir. 1983) ......................... 2138.03
Cortright, In re, 165 F.3d 1353, 49 USPQ2d 1464 (Fed. Cir. 1999) ..... 2111, 2164.04
Costello, In re, 717 F.2d 1346, 219 USPQ 389 (Fed. Cir. 1983) ..... 716.10, 2136.05, 2137, 2138, 2138.04, 2138.05
Craig, In re, 411 F.2d 1333, 162 USPQ 157 (CCPA 1969) ........................................... 706.03(w)
Crish, In re, 393 F.3d 1253, 73 USPQ2d 1364 (Fed. Cir. 2004) ........................ 2111.03, 2112
Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 43 USPQ2d 1666 (Fed. Cir. 1997) .............................. 2001.06(c)
Crockett, In re, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) ........................................ 2144.06
Crocs Inc. v. International Trade Commission, 598 F.3d 1294, 93 USPQ2d 1777 (Fed. Cir. 2010) .................................. 1504.03
Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 76 USPQ2d 1662 (Fed. Cir. 2005) ........................ 2144
Cronyn, In re, 890 F.2d 1158, 13 USPQ2d 1070 (Fed. Cir.1989) ..... 2128.01, 2152.02(e)
Crosby, In re, 157 F.2d 198, 71 USPQ 73 (CCPA 1946) ................................................. 716.07
Cross v. Iizuka, 753 F.2d 1040, 224 USPQ 739 (Fed. Cir. 1985) ..... 2107.01, 2107.03, 2164.02
Crossman, In re, 187 USPQ 367 (PTO Solicitor 1975) ................................................... 103
Cruciferous Sprout Litig., In re, 301 F.3d 1343, 64 USPQ2d 1202 (Fed. Cir. 2002) ...................................................................... 2111.02
Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., 246 F.3d 1336, 57 USPQ2d 1953 (Fed. Cir. 2001) ...................................................................... 2111.03
CTS Corp. v. Electro Materials Corp. of America, 469 F. Supp. 801, 202 USPQ 22 (S.D. N.Y. 1979) ................................ 2133.03(b)
CTS Corp. v. Piher Int’l Corp., 593 F.2d 777, 201 USPQ 649 (7th Cir. 1979) ..... 2133.03(d)
Curtis, In re, 354 F.3d 1347, 69 USPQ2d 1274 (Fed. Cir. 2004) ........................ 2163, 2163.05
Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962, USPQ2d 1196, 1201 (Fed. Cir. 1986) .... 2141.03
Cyberfone Sys. v. CNN Interactive Grp., 558 Fed. Appx. 988 (Fed. Cir. 2014) ..... 2106
Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 99 USPQ2d 1690 (Fed. Cir. 2011) ......................................................... 2106
Dailey, In re, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) ............................................... 2144.04
Dale Electronics Inc. v. R.C.L. Electronics, 488 F.2d 382, 180 USPQ 225 (1st Cir. 1973) ................................................................ 2004
Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 203 USPQ 161 (2d Cir. 1979) ................................. 1512
Dana Corp. v. IPC Ltd. Partnership, 860 F.2d 415, 8 USPQ2d 1692 (Fed. Cir. 1988) ........................................................... 2165.04
Dance, In re, 160 F.3d 1339, 48 USPQ2d 1635 (Fed. Cir. 1998) ................................. 2143.01
Daniels, In re, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998) ..... 1503.02, 1504.04
Dann v. Johnston, 425 U.S. 219, 189 USPQ 257 (1976) ....................... 716.01(a), 2141, 2141.03
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LIST OF DECISIONS CITED
Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980) ..... 201.06(c), 211.02, 211.02(a)
Dart Indus. v. E.I. du Pont de Nemours & Co., 489 F.2d 1359, 179 USPQ 392 (7th Cir. 1973) ................................. 2133.03, 2133.03(c)
Data Line Corp. v. Micro Technologies, Inc., 813 F.2d 1196, 1 USPQ2d 2052 (Fed. Cir. 1987) ...................................... 2183, 2184
Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 75 USPQ2d 1801 (Fed. Cir. 2005) ............................ 2173.05(b), 2173.05(g)
Davis, Ex parte, 80 USPQ 448 (Bd. App. 1948) ................................................. 2111.03, 2163
Davis, Ex parte, 56 USPQ2d 1434 (Bd. Pat. App. & Inter. 2000) ........................................... 804
Davis Harvester Co., Inc. v. Long Mfg. Co., 252 F. Supp. 989, 149 USPQ 420 (E.D.N.C. 1966) ............................................... 2134
Davis v. Carrier, 81 F.2d 250, 28 USPQ 227 (CCPA 1936) ............................................... 2137.01
Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 66 USPQ2d 1801 (Fed. Cir. 2003) ................................................ 2004
Dealertrack Inc. v. Huber, 674 F.3d 1315, 101 USPQ2d 1325 (Fed. Cir. 2012) ..... 2106
DeBaun, In re, 687 F.2d 459, 214 USPQ 933 (CCPA 1982) ... 715.01(a), 716.10, 717.01(a)(1), 2136.05, 2137.01, 2155.01
De Blauwe, In re, 736 F.2d 699, 222 USPQ 191 (Fed. Cir. 1984) ........................ 716.01(c), 2145
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) ..... 2173.05(b)
Deckler, In re, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992) .... 715, 2155.06, 2308.03
Deep Welding, Inc. v. Sciaky Bros., 417 F.2d 1227, 163 USPQ 144 (7th Cir. 1969) ...................................................................... 2128.01
Defano, In re, 392 F.2d 280, 157 USPQ 192 (CCPA 1968) .................................... 715.02, 715.03
Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 75 USPQ2d 1116 (Fed. Cir. 2005) ..... 2181
De Graffenried v. United States, 16 USPQ2d 1321 (Ct. Cl. 1990) ..... 2133.02, 2181
De Lajarte, In re, 337 F.2d 870, 143 USPQ 256 (CCPA 1964) .............................. 2111.03, 2163
Delgar Inc. v. Schuyler, 172 USPQ 513 (D.D.C. 1970) ........................................... 711.03(c)
Demaco Corp. v. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988) ..... 716.01(b), 716.01(d), 716.03, 716.03(a), 716.03(b)
Dembiczak, In re, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir. 1999) ..... 1504.06, 2144.04
Deminski, In re, 796 F.2d 436, 230 USPQ 313 (Fed. Cir. 1986) ................................ 2141.01(a)
De Seversky, In re, 474 F.2d 671, 177 USPQ 144 (CCPA 1973) ... 201.06(c), 608.01(p), 1504.05
DeSeversky v. Brenner, 424 F.2d 857, 164 USPQ 495 (D.C. Cir. 1970) ........................ 1216.02
De Solms v. Schoenwald, 15 USPQ2d 1507 (Bd. Pat. App. & Inter. 1990) ..... 2138.05, 2138.06
DesOrmeaux, Ex parte, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) ..... 2136.04, 2137.01, 2137.02
Deters, In re, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975) ................................................. 715.09
Deuel, In re, 51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995) ........................ 2144.09, 2163
DH Tech. Inc. v. Synergystex Int’l Inc., 154 F.3d 1333 (Fed. Cir. 1998) ........................ 509.04(f)
Diamond v. Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980) ... 2103, 2105, 2106, 2107.01
Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981) ..... 2103, 2106, 2107.01,2111.05
Dickinson v. Zurko, 527 U.S. 150, 50 USPQ2d 1930 (1999) .................................. 1216.01
Dien, In re, 680 F.2d 151, 214 USPQ 10 (CCPA 1982) .............................................. 1449.02
Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 111 USPQ2d 1717 (Fed. Cir. 2014) ........................ 2106
Dillon, In re, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) ..... 2141, 2144, 2144.09, 2145
Dilnot, In re, 319 F.2d 188, 138 USPQ 248 (CCPA 1963) ............................................... 2144.04
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Diomed, Inc. v. Angiodynamics, 450 F.Supp.2d 130 (D. Mass. 2006) ..... 2128.01
D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 219 USPQ 13 (Fed. Cir. 1983) ....................................................... 2133.03(c)
D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 225 USPQ 236 (Fed. Cir. 1985) ..... 2184
Doll, In re, 419 F.2d 925, 164 USPQ 218 (CCPA 1970) ............................................... 1412.03
Donaldson, In re, 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994) ..... 2111.01, 2114, 2161.01, 2163.03
Donaldson, Ex parte, 26 USPQ2d 1250 (Bd. Pat. App. & Inter. 1992) .............................. 1504.01
Donohue, In re, 550 F.2d 1269, 193 USPQ 136 (CCPA 1977) ..... 2164.06, 2164.06(a)
Donohue, In re, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985) ..... 2121.01, 2121.02, 2131.01, 2152.02(b)
Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 59 USPQ2d 1472 (Fed. Cir. 2001) ........................................................... 1504.02
Dossel, In re, 115 F.3d 942, 42 USPQ2d 1881 (Fed. Cir. 1997) ............................. 2181, 2185
Dotter, Ex parte, 12 USPQ 382 (Bd. App. 1931) ....................................................... 2173.05(h)
Dow Chem. Co., In re, 837 F.2d 469, 5 USPQ2d 1529 (Fed. Cir. 1988) ..... 716.05, 2144.08
Dow Chem. Co. v. American Cyanamid Co., 816 F.2d 617, 2 USPQ2d 1350 (Fed. Cir. 1987) ...................................................... 716.06
Dow Chem. Co. v. Astro-Valcour, Inc., 267 F.3d 1334, 60 USPQ2d 1519 (Fed. Cir. 2001) ........................................................... 2138.04
Doyle, In re, 482 F.2d 1385, 179 USPQ 227 (CCPA 1973) ..................................... 1445, 2161.01
Doyle, In re, 293 F.3d 1355, 63 USPQ2d 1161 (Fed. Cir. 2002) .................................. 1412.01
Dreyfus, In re, 73 F.2d 931 (CCPA 1934) ...................................................................... 2144.05
Driscoll v. Cebalo, 5 USPQ2d 1477 (Bd. Pat. Inter. 1982) ........................................... 2137.01
Druey, In re, 319 F.2d 237, 138 USPQ 39 (CCPA 1963) ............................................... 2144.08
DSL Dynamic Sciences, Ltd. v. Union Switch & Signal, Inc., 928 F.2d 1122, 18
USPQ2d 1152 (Fed. Cir. 1991) ..... 2138.05
Dubno, In re, 12 USPQ2d 1153 (Comm’r Pat. & Tm. 1989) ............................................. 2763
Deuel, In re, 51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995) ....................................... 2143
Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 227 USPQ 977 (Fed. Cir. 1985) ............................................ 213.03
Dulberg, In re, 289 F.2d 522, 129 USPQ 348 (CCPA 1961) ........................................ 2144.04
Dunki, Ex parte, 153 USPQ 678 (Bd. App. 1967) ..................................... 706.03(d), 2173.05(q)
Dunlop Holdings, Ltd. v. Ram Golf Corp., 524 F.2d 33, 188 USPQ 481 (7th Cir. 1975) ....................................................... 2133.03(a)
Dunn, In re, 349 F.2d 433, 146 USPQ 479 (CCPA 1965) ................................................. 804.02
Dunn v. Ragin, 50 USPQ 472 (Bd. Pat. Inter. 1941) ............................................. 2217, 2617
Dunne, Ex parte, 20 USPQ2d 1479 (Bd. Pat. App. & Inter. 1991) ..... 2134, 2138.02, 2138.04
DuPont v. Phillips, 849 F.2d 1430, 7 USPQ2d 1129 (Fed. Cir. 1988) ..... 2217, 2617
Durden, In re, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985) .................................... 2116.01
Dybel, In re, 524 F.2d 1393, 187 USPQ 593 (CCPA 1975) ..... 2133.03(b), 2133.03(e)(3)
Dystar textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d 1356, 80 USPQ2d 1641 (Fed. Cir. 2006) ................................................. 2143.01, 2144
E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 67 USPQ2d 1947 (Fed. Cir. 2003) ...................................................................... 2111.01
East Chicago Machine Tool Corp. v. Stone Container Corp., 181 USPQ 744 (N.D. Ill. 1974) ........................................................... 2012
Eastwood, Ex parte, 163 USPQ 316 (Bd. App. 1968) .............................................. 2173.05(b)
Eaton v. Evans, 204 F.3d 1094, 53 USPQ2d 1696 (Fed. Cir. 2000) ................................. 2138.05
Eckel, In re, 393 F.2d 848, 157 USPQ 415 (CCPA 1968) ................................................. 804.02
Edge, In re, 359 F.2d 896, 149 USPQ 556 (CCPA 1966) ............................................... 2144.04
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LIST OF DECISIONS CITED
Edgerton v. Kingsland, 168 F.2d 121, 75 USPQ 307 (D.C. Cir. 1947) ..... 706.03(w)
Edwards, In re, 568 F.2d 1349, 196 USPQ 465 (CCPA 1978) ....................................... 2138.05
Edwards v. Strazzabosco, 58 USPQ2d 1836 (Bd. Pat. App. & Inter. 2001) .......................... 2305
Egbers, In re, 6 USPQ2d 1869 (Comm’r Pat. 1988) .................................................. 711.03(c)
Egbert v. Lippmann, 104 U.S. 333 (1881) ................................................................. 2133.03(a)
Eggan, Ex parte, 1911 C.D. 213, 172 O.G. 1091 (Comm’r Pat. 1911) ..... 403.01, 403.02
Eggert, Ex parte, 67 USPQ2d 1716 (Bd. Pat. App. & Inter. 2003) ..................................... 1412.02
Egyptian Goddess Inc. v. Swissa Inc., 543 F.3d 665, 88 USPQ2d 1658 (Fed. Cir. 2008) (en banc) ........................................... 1504.02
Ehrreich, In re, 590 F.2d 902, 200 USPQ 504 (CCPA 1979) ..... 2129, 2172, 2411.01
Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923) ..... 2173.05(b)
E.I. du Pont de Nemours & Co. v. Berkley and Co., 620 F.2d 1247, 205 USPQ 1 (8th Cir. 1980) .................................................... 2107.01
E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 7 USPQ2d 1129 (Fed. Cir. 1988) ....................................... 2138
Eickmeyer, In re, 602 F.2d 974, 202 USPQ 655 (CCPA 1979) ............................. 715.05, 715.07
Eiselstein v. Frank, 52 F.3d 1035, 34 USPQ2d 1467 (Fed. Cir. 1995) ..... 1302.01
Ekenstam, In re, 256 F.2d 321, 118 USPQ 349 (CCPA 1958) ..... 901.05, 901.05(b), 2126, 2126.01, 2132, 2152.02(a)
Elan Corp., PLC v.Andrx Pharms. Inc., 366 F.3d 1336, 70 USPQ2d 1722 (Fed. Cir. 2004) ....................................................... 2133.03(b)
Elan Pharm., Inc. v. Mayo Foundation For Medical and Education Research, 346 F.3d 1051, 68 USPQ2d 1373 (Fed. Cir. 2003) ........................................................... 2121.01
Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 75 USPQ2d 1650
(Fed. Cir. 2005) ..... 2133.03(e)(4), 2133.03(e)(5)
Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 41 USPQ 155 (1938) ..... 2133.03(b)
Eli Lilly & Co. v. Bd. of Regents of the Univ. of Wa., 334 F.3d 1264, 67 USPQ2d 1161 (Fed. Cir. 2003) ................................. 2301.03
Eli Lilly & Co. v. Barr Laboratories, Inc., 251 F.3d 955, 58 USPQ2d 1869 (Fed. Cir. 2001) ............................ 804, 2144.08, 2165.01
Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 15 USPQ2d 1121 (1990) .......................... 2750
Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 81 USPQ2d 1324 (Fed. Cir. 2006) ...................................... 2152.02(b)
Eli Lilly, In re, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) ..... 716.01(d), 716.02(b), 716.02(c), 2142, 2144, 2144.08
Elliott, Ex parte, 1904 C.D.103, 109 O.G. 1337 (Comm’r Pat. 1904) ......................... 608.02(g)
Ellis, In re, 476 F.2d 1370, 177 USPQ 526 (CCPA 1973) .......................................... 2141.01(a)
Elmwood Liquid Prod., Inc. v. Singleton Packing Corp., 328 F. Supp 974, 170 USPQ 398 (M.D. Fla. 1970) ............................ 2004
Elsner, In re,381 F.3d 1125, 72 USPQ2d 1038 (Fed. Cir. 2004) .................................. 2121.03
Eltgroth, In re, 419 F.2d 918, 164 USPQ 221 (CCPA 1970) ........................................ 2107.01
Emerson Elec. Co. v. Davoil, Inc., 88 F.3d 1051, 39 USPQ 1474 (Fed. Cir. 1996) ........................................................................... 2254
Emert, In re, 124 F.3d 1458, 44 USPQ2d 1149 (Fed. Cir. 1997) ......................................... 804
Emery v. Ronden, 188 USPQ 264 (Bd. Pat. Inter. 1974) .................................................. 2138.06
Emm, Ex parte, 118 USPQ 180 (Bd. App. 1957) ........................................................... 1207.02
Engelhardt v. Judd, 369 F.2d 408, 151 USPQ 732 (CCPA 1966) ..... 2138.03, 2138.05
Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 54 USPQ2d 1449 (Fed. Cir. 2000) ........................................................ 2181
Environ Prods., Inc. v. Total Containment, Inc., 43 USPQ2d 1288 (E.D. Pa. 1997) ................................................................. 2001.06(c)
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Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983) .......................... 716.04, 716.05, 2141.03
Envirotech Corp. v. Westech Eng’g, Inc., 904 F.2d 1571, 15 USPQ2d 1230 (Fed. Cir. 1990) ................................................ 2133.03(b)
Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 52 USPQ2d 1129 (Fed. Cir. 1999) ....................................................... 2164.06(b)
Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 63 USPQ2d 1609 (Fed. Cir. 2002) ....................................... 2161.01, 2163, 2402
Epstein, In re, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) .... 716.07, 2128, 2133.03(b), 2152.02(d)
Erlich, Ex parte, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986) ..... 2143.02, 2173.05(q)
Erlich, Ex parte, 22 USPQ 1463 (Bd. Pat. App. & Inter. 1992) ........................... 2124, 2141.03
Ernsthausen v. Nakayama, 1 USPQ2d 1539 (Bd. Pat. App. & Inter. 1985) ..... 2165.01
Estee Lauder, Inc. v. L’Oreal S.A., 129 F.3d 588, 44 USPQ2d 1610 (Fed. Cir. 1997) ............................................................ 2138.05, 2163
Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 45 USPQ2d 1545 (Fed. Cir. 1998) ................................ 2137.01, 2181
Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988) ..... 1442.02, 2242, 2286, 2642, 2686.04
Etter, In re, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985) ..... 2258, 2279, 2286, 2642, 2686.04
EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 1985) ................................................................... 716.03(b)
Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001) .... 706.07(h), 711.01, 714.01(e), 714.03
Eynde, In re, 480 F.2d 1364, 178 USPQ 470 (CCPA 1973) ............................................... 2144.03
EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 61 USPQ2d 1289 (Fed. Cir. 2002) ......................................... 2133.03(e), 2133.03(e)(4)
Facius, In re, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969) ..... 715.01(a), 715.01(c), 2132.01, 2136.04, 2136.05, 2137, 2137.01
Falkner v. Inglis, 448 F.3d 1357, 79 USPQ2d 1001 (Fed. Cir. 2006) ........................ 2163
Farrenkopf, In re, 713 F.2d 714, 219 USPQ 1 (Fed. Cir. 1983) ............................................. 2145
Fassett, 1877 C.D. 32, 11 O.G. 420 (Comm’r Pat. 1877) .................................... 1410.01
Feldman v. Aunstrup, 517 F.2d 1351, 186 USPQ 108 (CCPA 1975) ............................. 2406.01
Ferag AG v. Quipp, Inc., 45 F.3d 1562, 33 USPQ2d 1512 (Fed. Cir. 1995) ..... 2133.03(b)
Ferguson, Ex parte, 117 USPQ 229 (Bd. App. 1957) ..... 2107.02, 2107.03, 2164.07
Ferguson,In re, 558 F.3d 1359, 90 USPQ2d 1035 (Fed. Cir. 2009) ....................................... 2106
Fessmann, In re, 489 F.2d 742, 180 USPQ 324 (CCPA 1974) ............................................. 2113
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 122 S.Ct. 1831, 62 USPQ2d 1705 (2002) ..... 1302.14, 2173.02
Field v. Knowles, 183 F.2d 593, 86 USPQ 373 (CCPA 1950) ................................... 2133.03(c)
Fielder, In re, 471 F.2d 640, 176 USPQ 300 (CCPA 1973) ........................... 716.01(a), 716.03(b)
Fields v. Conover, 443 F.2d 1386, 170 USPQ 276 (CCPA 1970) ..... 2163, 2163.03
Fiers v. Revel, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993) ..... 2137.01, 2138.04, 2161.01, 2163
Fine, In re, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988) .... 707.07(f), 2143.01, 2143.03, 2144
Finley, In re, 174 F.2d 130, 81 USPQ 383 (CCPA 1949) ............................................ 716.02(e)
Fischer, In re Application of, 6 USPQ2d 1573 (Comm’r Pat. 1988) ......................... 711.03(c)
Fischer & Porter Co. v. Corning Glass Works, 61 F.R.D. 321, 181 USPQ 329 (E.D. Pa. 1974) ............................................ 1701.01
Fisher, In re, 427 F.2d 833, 166 USPQ 18 (CCPA 1970) ..... 706.03(w), 2164.01(b), 2164.03, 2164.08, 2173.05(a), 2173.05(t)
Fisher, In re, 421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir. 2005) ..... 2103, 2107.01, 2164.07
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LIST OF DECISIONS CITED
Fisons Plc. v. Quigg, 876 F.2d 99, 10 USPQ2d 1491 (Fed. Cir. 1989) ..... 2751
Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 (CCPA 1980) .... 706.02(m), 2112, 2183
Fitzgerald v. Arbib, 268 F.2d 763, 122 USPQ 530 (CCPA 1959) ..... 2138.05, 2138.06
Flint, In re, 411 F.2d 1353, 162 USPQ 228 (CCPA 1969) .......................................... 2173.05(n)
FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 5 USPQ2d 1272 (Fed. Cir. 1987) .................................................................. 410
FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 5 USPQ2d 1112 (Fed. Cir. 1987) ................................................................... 410, 2010
Folkers, In re, 344 F.2d 970, 145 USPQ 390 (CCPA 1965) ............................................... 2107.02
Fonar Corp. v. General Electric Co., 107 F.3d 1543, 41 USPQ2d 1801 (Fed. Cir. 1997) ........................................................... 2161.01
Fong, In re, 288 F.2d 932, 129 USPQ 264 (CCPA 1961) .................................... 715.02, 715.03
Fong, In re, 378 F.2d 977, 154 USPQ 25 (CCPA 1967) ...................................................... 804
Fontijn v. Okamoto, 518 F.2d 610, 622 186 USPQ97, 106 (CCPA 1975) ..... 1402, 1417
Forman, In re, 463 F.2d 1125, 175 USPQ 12 (CCPA 1972) ..................................... 2164.06(c)
Fortel Corp. v. Phone-Mate, Inc., 825 F.2d 1577, 3 USPQ2d 1771 (Fed. Cir. 1987) ................................................................. 2293, 2693
Foster, Ex parte, 1903 C.D. 213, 105 O.G. 261 (Comm’r Pat. 1903) ............................... 715.04
Foster, In re, 343 F.2d 980, 145 USPQ 166 (CCPA 1965) ..... 2132.01, 2133, 2133.02, 2133.03(c)
Fotland, In re, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985) ................................. 1403, 1412.03
Fouche, In re, 439 F.2d 1237, 169 USPQ 429 (CCPA 1971) ..... 608.01(p), 716.02(b), 2107.01, 2164.07
Fout, In re, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) ..... 2129, 2143.01, 2144.06
Fox, Ex parte, 128 USPQ 157, 1960 C.D. 28, 761 O.G. 906 (Bd. App. 1957) ..... 608.04(a)
Fox, In re, 471 F.2d 1405, 176 USPQ 340 (CCPA 1973) ............................................... 2144.03
Fredericksen, In re, 213 F.2d 547, 102 USPQ 35 (CCPA 1954) .......................... 2173.05(c)
Fredkin v. Irasek, 397 F.2d 342, 158 USPQ 280 (CCPA 1968) ........................................ 2138.05
Freeman, In re, 23 App. D.C. 226 (App. D.C. 1904) .............................. 1503.01, 2920.04(a)
Freeman, In re, 573 F.2d 1237, 197 USPQ 464 (CCPA 1978) ............................................. 2184
Freeman, In re, 30 F.3d 1459, 31 USPQ2d 1444 (Fed. Cir. 1994) ..... 706.03(w), 2250, 2666.01
Fregeau v. Mossinghoff, 776 F.2d 1034, 227 USPQ 848 (Fed. Cir. 1985) ..... 2107.01, 2107.02
Fressola, Ex parte, 27 USPQ2d 1608 (Bd. Pat. App. & Inter. 1993) .... 2173.05(r), 2173.05(s)
Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995) .......................................... 608.01(m)
Fried, In re, 312 F.2d 930, 136 USPQ 429 (CCPA 1963) ........................................... 706.03(w)
Fried, In re, 329 F.2d 323, 141 USPQ 27 (CCPA 1964) ............................................ 608.01(p)
Frilette, In re, 412 F.2d 164, 162 USPQ 163 (CCPA 1969) ............................................ 715.01(b)
Fritsch v. Lin, 21 USPQ2d 1731 (Bd. Pat. App. & Inter. 1991) ..... 2137.01, 2138.06
Fuge, In re, 272 F.2d 954, 124 USPQ 105 (CCPA 1959) .................................. 901.05, 2126.02
Fujikawa v. Wattanasin, 93 F.3d 1559, 39 USPQ2d 1895 (Fed. Cir. 1996) ..... 2163, 2163.05
Fujishiro, Ex parte, 199 USPQ 36 (Bd.App. 1977) .............................................. 901.05, 2135.01
Fulton, In re, 391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004) ..... 2123, 2141.02, 2143.01, 2145
Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 76 USPQ 280 (1948) ..... 2105, 2106
Future’s Technology Ltd. v. Quigg, 684 F. Supp. 430, 7 USPQ2d 1588 (E.D. Va. 1988) ......................................................... 711.03(c)
G, In re Application of, 11 USPQ2d 1378 (Comm’r Pat. 1989) .................................. 711.03(c)
Gallo, In re, 231 USPQ 496 (Comm’r Pat. 1986) .................................................................. 103
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Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 42 USPQ2d 1378 (Fed. Cir. 1997) ................................................ 2137
Gandy v. Main Belting Co., 143 U.S. 587 (1892) ..................................................... 2133.03(d)
Garbo, In re, 287 F.2d 192, 129 USPQ 72 (CCPA 1961) ............................................... 1504.03
Gardner, In re, 427 F.2d 786, 166 USPQ 138 (CCPA 1970) ........................................ 2173.04
Gardner, In re, 475 F.2d 1389, 177 USPQ 396 (CCPA 1973) ..... 601.01(d), 2107.01, 2107.03, 2163
Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984) ...................................................................... 2144.04
Garfinkel, In re, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971) ............................................... 715
Garnero, In re, 412 F.2d 276, 162 USPQ 221 (CCPA 1979) ............................................. 2113
Garret Corp. v. United States, 422 F.2d 874, 164 USPQ 521 (Ct. Cl. 1970) ..... 2128.01
Garrett v. Cox, 233 F.2d 343, 110 USPQ 52 (CCPA 1956) .......................................... 1302.04
Gartside, In re, 203 F.3d 1305, 53 USPQ2d 1769 (Fed. Cir. 2000) ..... 1216.01, 2144.03
Gaubert, In re, 524 F.2d 1222, 187 USPQ 664 (CCPA 1975) ........................................ 2107.03
Gaubert, In re, 530 F.2d 1402, 189 USPQ 432 (CCPA 1975) ......................... 2107.02, 2107.03
Gay, In re, 309 F.2d 769, 135 USPQ 311 (CCPA 1962) ..... 608.01(h), 2161.01, 2165.01
Gazave, In re, 379 F.2d 973, 154 USPQ 92 (CCPA 1967) ..... 2164.07, 2107.01, 2107.02, 2107.03
Gazda, In re, 219 F.2d 449, 104 USPQ 400 (CCPA 1955) ............................................... 2144.04
Gearon v. United States, 121 F. Supp. 652, 101 USPQ 460 (Ct. Cl. 1954) ..... 601.01(e)
Gebauer-Fuelnegg, In re, 121 F.2d 505, 50 USPQ 125 (CCPA 1941) .......................... 608.01(v)
Geiger, In re, 815 F.2d 686, 2 USPQ2d 1276 (Fed. Cir. 1987) .......................... 716.02(e), 2144.06
Geisler, In re, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ........................ 2144.05, 2145
Gellert v. Wanberg, 495 F.2d 779, 181 USPQ 648 (CCPA 1974) ............................. 2138.05
Gelles, Ex parte, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992) ..... 716.02, 716.02(b)
Gemveto Jewelry Co. v. Lambert Bros., Inc., 542 F. Supp. 933, 216 USPQ 976 (S.D. N.Y. 1982) ..... 2001.06(a), 2004, 2016
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 42 USPQ2d 1608 (Fed. Cir. 1997) ............................................. 2111.03, 2138.05, 2163
Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 42 USPQ2d 1001 (Fed. Cir. 1997) ........................................................... 2161.01
Genentech v. Wellcome Foundation, 29 F.3d 1555, 31 USPQ2d 1161 (Fed. Cir. 1994) ........................................................... 2164.04
General Elec. v. Brenner, 407 F.2d 1258, 159 USPQ 335 (D.C. Cir. 1968) ..... 608.01(p)
General Elec. v. United States, 206 USPQ 260 (Ct. Cl. 1979) .............................. 2133.03(e)(1)
General Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 30 USPQ2d 1149 (Fed. Cir. 1994) ......................................... 410
General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 23 USPQ2d 1839 (Fed. Cir. 1992) ......................................... 804
General Motors Corp. v. Bendix Aviation Corp., 123 F. Supp 506, 102 USPQ 58 (N.D. Ind. 1954) ................................. 2133.03(e)(6)
Genetics Institute LLC v. NovartisVaccines and Diagnostics Inc., 655 F.3d 1291, 99 USPQ2d 1713 (Fed. Cir. 2011) ........................ 2750
Geneva Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003) ..... 804.01, 814, 1504.02
Gentiluomo v. Brunswick Bowling and Billiards Corp., 36 Fed. Appx. 433 (Fed. Cir. 2002) .................................................... 2144.05
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 45 USPQ2d 1498 (Fed. Cir. 1998) ................................................ 2163, 2163.05
George, Ex parte, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991) ............................ 716.01(c)
George, In re, 2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987) ..................................... 2128.01
Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683, 16 USPQ2d 1436 (Fed. Cir. 1990) .................................... 804.01
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LIST OF DECISIONS CITED
Gershon, In re, 372 F.2d 535, 152 USPQ 602 (CCPA 1967) ........................ 716.02(c), 716.04
Ghiron, In re, 442 F.2d 985, 169 USPQ 723 (CCPA 1971) ..... 2161.01, 2164.01(b), 2164.06(c), 2164.06, 2164.06(a), 2185
Giannelli, In re, 739 F.3d 1375, 109 USPQ2d 1333 (Fed. Cir. 2014) ..... 2111.04
Gibbs, In re, 437 F.2d 486, 168 USPQ 578 (CCPA 1971) ............................................ 715, 2134
Gibson, Ex parte, 20 USPQ 249 (Bd. App. 1933) ...................................................... 1504.01(b)
Gibson, In re, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) ............................................... 2144.04
Gilead Sciences Inc. v. Lee, 778 F.3d 1341, 113 USPQ2d 1837 (Fed. Cir. 2015) ..... 2732
Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 110 USPQ2d 1551 (Fed. Cir. 2014) ........................................................... 804
Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 74 USPQ2d 1586 (Fed. Cir. 2005) ........................................................... 2111.03
Gillman v. Stern, 114 F.2d 28, 46 USPQ 430 (2d Cir. 1940) ................................... 2133.03(a)
Ginos v. Nedelec, 220 USPQ 831 (Bd. Pat. Inter. 1983) ................................... 2138.05, 2138.06
Glaser v. Strickland, 220 USPQ 446 (Bd. Pat. Inter. 1983) ............................................. 716.09
Glass, In re, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974) ..... 608.01(h), 2124, 2165.02
Glavas, In re, 230 F.2d 447, 109 USPQ 50 (CCPA 1956) ................................ 1504.02, 1504.03
Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 34 USPQ2d 1565 (Fed. Cir. 1995) ...................................................................... 2107.01
Glaxo Operations UK Ltd. v. Quigg, 706 F. Supp. 1224, 10 USPQ2d 1100 (E.D. Va. 1989) ............................................................... 2751
Gleave, In re, 560 F.3d 1331, 90 USPQ2d 1235 (Fed. Cir. 2009) ............................. 2152.02(b)
Goffe, In re, 542 F.2d 564, 191 USPQ 429 (CCPA 1976) ........................... 2164.08, 2164.08(c)
Golden Valley Microwave Food Inc. v. Weaver Popcorn Co., 837 F. Supp. 1444, 24 USPQ2d 1801 (N.D. Ind. 1992) ..... 410
Goldstein, In re, 16 USPQ2d 1963 (Dep. Assist. Comm’r Pat. 1988) ............................ 402.10
Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 69 USPQ2d 1481 (Fed. Cir. 2004) ................................................................ 2182
Good, Ex parte, 1911 C.D. 43, 164 O.G. 789 (Comm’r Pat. 1911) ........................... 608.02(d)
Goodman, In re, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993) ... 804, 806.04(i), 1504.06, 2164.06(b), 2164.08
Goodyear Tire & Rubber Co., Ex parte, 230 USPQ 357 (Bd. Pat. App. & Inter. 1985) ................................................................. 2141.01(a)
Gordon, In re, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) ..... 2143.01, 2144.08
Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall.) 511 (1871) ..... 1504.01(c), 1504.01(d), 1504.02
Gorman, In re, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) ..... 707.07(f), 2145
Gosteli, In re, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989) ..... 608.01(p), 715.03, 2131.02, 2136.05, 2163.02, 2163.03, 2163.05
Gottlieb, In re, 328 F.2d 1016, 140 USPQ 665 (CCPA 1964) ........................................ 2107.02
Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972) ................................... 2103, 2106
Gould v. Quigg, 822 F.2d 1074, 3 USPQ2d 1302 (Fed. Cir. 1987) ..... 2164.02, 2164.05(a)
Gould v. Schawlow, 363 F.2d 908, 150 USPQ 634 (CCPA 1966) ............................. 2138.06
GPAC, In re, 57 F.3d 1573, 35 USPQ2d 1116 (Fed. Cir. 1995) .......................... 716.03, 2145
Grabiak, In re, 769 F.2d 729, 226 USPQ 871 (Fed. Cir. 1985) ..... 2144.08, 2144.09
Grady, Ex parte, 59 USPQ2d 276 (Comm’r Pat. 1943) ...................................................... 607.02
Graff, In re, 111 F.3d 874, 42 USPQ2d 1471 (Fed. Cir. 1997) ..... 1403, 1412.03, 1451
Graham v. John Deere, 383 U.S. 1, 148 USPQ 459 (1966) ..... 706.02(j), 706.02(m), 716.01(a), 804, 1504.03, 1504.06, 2141, 2144.08, 2158, 2258
Gramme Elec. Co. v. Arnoux and Hochhausen Elec. Co., 17 F. 838, 1883 C.D.418 (S.D. N.Y. 1883) ..... 901.05, 2135.01
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MANUAL OF PATENT EXAMINING PROCEDURE
Grasselli, Ex parte, 231 USPQ 393 (Bd. App. 1983) ................................ 2143.03, 2173.05(i)
Grasselli, In re, 713 F.2d 731, 218 USPQ 769 (Fed. Cir. 1983) ..... 716.02(d), 2112, 2145
Graver Tank & Mfg. Co. v. Linde Air Products, 339 U.S. 605, 85 USPQ 328 (1950) ........................................... 2183, 2184, 2186
Gray, Ex parte, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989) ..... 716.01(c), 716.02(g), 2113
Gray, In re, 115 USPQ 80 (Comm’r Pat. 1956) ........................................ 409.03(d), 409.03(f)
Gray, In re, 53 F.2d 520, 11 USPQ 255 (CCPA 1931) ............................................... 2111.03
Grayson, Ex parte, 51 USPQ 413 (Bd. App. 1941) ......................................................... 706.03(a)
Grayson, Ex parte, 51 USPQ 413 (Bd. App. 1941) ......................................................... 706.03(a)
Great Atlantic & P Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 87 USPQ 303 (1950) ........................................ 2143.01
Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 39 USPQ2d 1783 (Fed. Cir. 1996) ......................................................... 2181
Greenewalt v. Stanley, 54 F.2d 195, 12 USPQ 122 (3d Cir. 1931) ..... 2133.03(e)(1)
Greenfield, In re, 40 F.2d 775, 5 USPQ 474 (CCPA 1930) ..................................... 1214.01, 2682
Greenfield, In re, 571 F.2d 1185, 197 USPQ 227 (CCPA 1978) ............................................. 2145
Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012) ........................................................... 1412.02
Greenwood v. Seiko Instruments, 8 USPQ2d 1455 (D.D.C. 1988) .......................... 2273
Greer, In re, 484 F.2d 488, 179 USPQ 301 (CCPA 1973) ................................................... 1605
Griffin v. Bertina, 283 F.3d 1029, 62 USPQ2d 1431 (Fed. Cir. 2002) ..... 2103, 2111.04
Griffith v. Kanamaru, 816 F.2d 624, 2 USPQ2d 1361 (Fed. Cir. 1987) ..... 2138.06
Griswold, In re, 365 F.2d 834, 150 USPQ 804 (CCPA 1966) .......................................... 804.02
Grose, In re, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) ..... 2144.02, 2144.03, 2145
Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 59 USPQ2d 1121 (Fed. Cir. 2001) ............................ 2133.03(b), 2152.02(e)
Grunwell, In re, 609 F.2d 486, 203 USPQ 1055 (CCPA 1979) ...................................... 2107.02
Guastavino, In re, 83 F.2d 913, 29 USPQ 532 (CCPA 1936) ....................................... 1449.02
Gulack, In re, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983) .................................... 2112.01
Gulliksen v. Halberg, 75 USPQ 252 (Bd. App. 1937) .................................................. 2128.01
Gunn, In re, 537 F.2d 1123, 190 USPQ 402 (CCPA 1976) ..... 2164.05(a), 2164.06(c), 2164.06, 2164.06(a)
Gunn v. Bosch, 181 USPQ 758 (Bd. Pat. Inter. 1973) .................................................. 2138.06
Gunter v. Stream, 573 F.2d 77, 197 USPQ 482 (CCPA 1978) ........................................ 2138.04
Gurley, In re, 27 F.3d 551, 31 USPQ2d 1130 (Fed. Cir. 1994) ............................. 2123, 2145
Gustafson, In re, 331 F.2d 905, 141 USPQ 585 (CCPA 1964) ................................... 2173.05(k)
Gustafson v. Strange, 227 USPQ 174 (Comm’r Pat. 1985) ........................................... 513
Gwinn, Ex parte, 112 USPQ 439 (Bd App. 1955) ......................................................... 706.03(a)
Haas, In re, 580 F.2d 461, 198 USPQ 334 (CCPA 1978) ................................................. 803.02
Hack, In re, 245 F.2d 246, 114 USPQ 161 (CCPA 1957) ............................................... 2112.02
Hadco Products, Inc., v. Lighting Corp. of America, Inc., 312 F.Supp 1173, 165 USPQ 496 (E.D. Pa 1970) ......................... 1503.02
Hafner, In re, 410 F.2d 1403, 161 USPQ 783 (CCPA 1969) ......................................... 211.05
Hageman, Ex parte, 179 USPQ 747 (Bd. App. 1971) ................................................... 211.05
Hahn v. Wong, 892 F.2d 1028, 13 USPQ2d 1313 (Fed. Cir. 1989) ....................................... 2305
Hale, Ex parte, 49 USPQ 209 (Bd. App. 1941) ............................................................. 715.09
Hall, Ex parte, 83 USPQ 38 (Bd.App. 1949) ............................................... 706.03(d), 2173.05(d)
Hall, In re, 208 F.2d 370, 100 USPQ 46 (CCPA 1953) ........................................... 2173.05(j)
Hall, In re, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986) ..... 2128, 2128.01, 2128.02, 2152.02(e)
II-18Rev. 07.2015, November 2015
LIST OF DECISIONS CITED
Hall v. Macneale, 107 U.S. 90 (1882) ..... 2133.03(a)
Halleck, In re, 422 F.2d 911, 164 USPQ 647 (CCPA 1970) .......................................... 2173.05(c)
Haller, Ex parte, 103 USPQ 332 (Bd. App. 1953) ................................................... 901.05, 2127
Hallmark Cards, Inc. v. Lehman, 959 F. Supp. 539, 42 USPQ2d 1134 (D.D.C. 1997) ............................................................... 1480
Hamilton, In re, 882 F.2d 1576, 11 USPQ2d 1890 (Fed. Cir. 1989) .............................. 2133.03(c)
Hammack, In re, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970) ........................................ 2173.03
Hammack, In re, 427 F.2d 1384, 166 USPQ 209 (CCPA 1970) ................................... 2173.05(e)
Hanback, Ex parte, 231 USPQ 739 (Bd. Pat. App. & Inter. 1986) ..................................... 1504.04
Hardee, In re, 223 USPQ 1122 (Comm’r Pat. 1984) .................................................... 2137.01
Hargraves, In re, 53 F.2d 900, 11 USPQ 240 (CCPA 1931) ...................................................... 804
Harito, In re, 847 F.2d 801, 6 USPQ2d 1930 (Fed. Cir. 1988) ................................................ 2010
Harley v. Lehman, 981 F. Supp. 9, 44 USPQ2d 1699 (D.D.C. 1997) .......................... 1308
Harnisch, In re, 631 F.2d 716, 206 USPQ 300 (CCPA 1980) ..... 803.02, 2173.05(h)
Harrington Mfg. Co. v. Powell Mfg. Co., 815 F.2d 1478, 2 USPQ2d 1364 (Fed. Cir. 1986) ........................................... 2133.03(e)(2)
Harris, Ex parte, 79 USPQ 439 (Comm’r Pat. 1948) .................................................. 707.05(f)
Harris, In re, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) ................................. 2144.05
Harry, In re, 333 F.2d 920, 142 USPQ 164 (CCPA 1964) .................................. 715.07, 2138.06
Hartley, Ex parte, 1908 C.D. 224 (Comm’r Pat. 1908) ...................................................... 720.05
Hartop, In re, 311 F.2d 249, 135 USPQ 419 (CCPA 1962) ................................ 2107.01, 2107.03
Harvey, In re, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993) .................................. 1504.04
Harwood, In re, 390 F.2d 985, 156 USPQ 673 (CCPA 1968) ........................................ 2107.01
Harza, In re, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) ............................................... 2144.04
Hasche, Ex parte, 86 USPQ 481 (Bd. App. 1949) ..................................... 706.03(d), 2173.05(d)
Haskell v. Colebourne, 671 F.2d 1362, 213 USPQ 192 (CCPA 1982) ............................. 2138.06
Hata, Ex parte, 6 USPQ2d 1652 (Bd Pat. App. & Int. 1987) ........................................ 2404.02
Hawkins, In re, 486 F.2d 569, 179 USPQ 157 (CCPA 1973) ..................................... 608.01(p)
Hawkins, In re, 486 F.2d 579, 179 USPQ 163 (CCPA 1973) ..................................... 608.01(p)
Hawkins, In re, 486 F.2d 577, 179 USPQ 167 (CCPA 1973) ..................................... 608.01(p)
Hayes, In re, 53 USPQ2d 1222 (Comm’r Pat. 1999) .................................................... 1412.04
Hayes Microcomputer Products, Inc., In re, 982 F.2d 1527, 25 USPQ2d 1241 (Fed. Cir. 1992) ................................................... 1414.01
Hay, In re, 534 F.2d 917, 189 USPQ 790 (CCPA 1976) ..... 608.01(h), 2165.01, 2407.02
Hays v. Sony Corp. of Am., 847 F.2d 412, 7 USPQ2d 1043 (7th. Cir. 1988) ........................ 410
Hazeltine Research Inc. v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965) ..... 2136.02, 2158
Head, Ex parte, 214 USPQ 551 (Bd. App. 1981) ....................................................... 2173.05(h)
Heany, In re, 1911 C.D. 138 (Comm’r Pat. 1911) ................................................. 2012, 2012.01
Heck, In re, 699 F.2d 1331, 216 USPQ 1038 (Fed. Cir. 1983) ................................................ 2123
Heckman, Ex parte, 135 USPQ 229 (P.O. Super. Exam. 1960) ..................................... 1504.05
Hedges, In re, 783 F.2d 1038, 228 USPQ 685 (Fed. Cir. 1986) ......................................... 2145
Hedgewick v. Akers, 497 F.2d 905, 182 USPQ 167 (CCPA 1974) .................................. 2137
Heinl v. Godici, 143 F. Supp. 2d 593 (E.D. Va. 2001) ................................. 2246, 2258.01, 2646
Hellbaum, In re, 371 F.2d 1022, 152 USPQ 571 (CCPA 1967) .................................... 706.03(w)
Hellsund, In re, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973) ............................................... 715
Hengehold, In re, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971) ..................................... 821, 2731
Henrich, Ex parte, 1913 Dec. Comm’r Pat. 139 (Comm’r Pat. 1913) ........................... 711.03(c)
Henriksen, In re, 399 F.2d 253, 158 USPQ 224 (CCPA 1968) .................................... 211.01(b)
Heritage, In re, 182 F.2d 639, 86 USPQ 160 (CCPA 1950) ................................................. 901.02
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MANUAL OF PATENT EXAMINING PROCEDURE
Herman v. Huddleston, 459 U.S. 375 (1983) ...................................................................... 2107.02
Herman v. William Brooks Shoe Co., 39 USPQ2d 1773 (S.D.N.Y. 1996) ......................... 410
Herr, In re, 377 F.2d 610, 153 USPQ 548 (CCPA 1967) ........................................... 706.03(w)
Herrmann, In re, 261 F.2d 598, 120 USPQ 182 (CCPA 1949) ...................................... 707.07(f)
Hershberger, Ex parte, 96 USPQ 54 (Bd. App. 1952) .................................................. 2128.01
Herschler, In re, 591 F.2d 693, 200 USPQ 711 (CCPA 1979) ..... 2161.01, 2163, 2163.05
Herz, In re, 537 F.2d 549, 190 USPQ 461 (CCPA 1976) ............................................... 2111.03
Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998) .......................................................... 1412.02
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 15 USPQ2d 1525 (Fed. Cir. 1990) ................................................ 2114
Hiatt v. Ziegler, 179 USPQ 757 (Bd. Pat. Inter. 1973) .................................................. 2138.04
Hibberd, Ex parte, 227 USPQ 443 (Bd. Pat. App. & Inter. 1985) ................................ 1601, 2105
Hidy, In re, 303 F.2d 954, 133 USPQ 650 (CCPA 1962) ..... 715.05, 804.02, 2308.01
High Concrete Structures Inc. v. New Enter. Stone & Lime Co., 377 F.3d 1379, 71 USPQ2d 1948 (Fed. Cir. 2004) ..... 2165.04
Hildebrand,Exparte,15USPQ2d1662(Bd. Pat. App. & Inter. 1990) ..... 2404.01, 2410.01
Hill, In re, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) ............................................ 716.02(d)
Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 54 USPQ2d 1437 (Fed. Cir. 2000) ................................................ 1302.04, 2181
Hilmer, In re, 359 F.2d 859, 149 USPQ 480 (CCPA 1966) ..... 706.02(f)(1), 715, 2136.03, 2154.01(b)
Hilton, Ex parte, 148 USPQ 356 (Bd. App. 1965) ........................................................... 2144.04
Hiniker Co., In re, 150 F.3d 1362, 47 USPQ2d 1523 (Fed. Cir. 1998) ..... 2103, 2242, 2258, 2258.01, 2642
Hirao, In re, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) .............................. 707.07(f), 2141.02
Hirschfield v. Banner, 462 F. Supp 135, 200 USPQ 276 (D.D.C. 1978) ..... 2164.06(c)
Hirschler, Ex parte, 110 USPQ 384 (Bd. App. 1952) .................................................. 2132.01
Hitchings, In re, 342 F.2d 80, 144 USPQ 637 (CCPA 1965) ................................... 2164.01(c)
Hitzeman v. Rutter, 243 F.3d 1345, 58 USPQ2d 1161 (Fed. Cir. 2001) ..... 2138.04
Hiyamizu, Ex parte, 10 USPQ2d 1393 (Bd. Pat. App. & Inter. 1988) .............................. 2141.03
Hobbs v. United States, 451 F.2d 849, 171 USPQ 713 (5th Cir. 1971) ..... 2133.03, 2133.03(b)
Hoch, In re, 428 F.2d 1341, 166 USPQ 406 (CCPA 1970) ..... 706.02(j), 1207.03, 2144.08
Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 55 USPQ2d 1487 (Fed. Cir. 2000) ............................................... 2125
Hodge v. Rostker, 501 F. Supp 332 (D.D.C. 1980) ........................................................... 1216.02
Hodosh v. Block Drug Co., Inc., 786 F.2d 1136, 229 USPQ 182 (Fed. Cir. 1986) ...................................................................... 2144.08
Hoechst Aktiengesellschaft v. Quigg, 917 F.2d 522, 16 USPQ2d 1549 (Fed. Cir. 1990) ............................................................... 2758
Hoechst-Roussel Pharmaceuticals Inc. v. Lehman, 109 F.3d 756, 42 USPQ2d 1220 (Fed. Cir. 1997) ..................................... 2158, 2751
Hoeksema, In re, 399 F.2d 269, 158 USPQ 596 (CCPA 1968) ... 2121.01, 2121.02, 2144.09, 2145
Hoeschele, In re, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) ........................................ 2144.05
Hoffer v. Microsoft Corp ., 405 F.3d 1326, 74 USPQ2d 1481 (Fed. Cir. 2005) ..... 2111.04
Hoffman, Ex parte, 12 USPQ2d 1061 (Bd. Pat. App. & Inter. 1989) .............................. 2111.03
Hoffman v. Klaus, 9 USPQ2d 1657 (Bd. Pat. App. & Inter. 1988) .............................. 2107.02
Hoffman-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 66 USPQ2d 1385 (Fed. Cir. 2003) ........................................ 608.01(p), 2004
Hogan, In re, 559 F.2d 595, 194 USPQ 527 (CCPA 1977) ................................ 2124, 2164.05(a)
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LIST OF DECISIONS CITED
Holladay, In re, 584 F.2d 384, 199 USPQ 516 (CCPA 1978) ..................................... 716.02(e)
Hollingsworth, In re, 253 F.2d 238, 117 USPQ 182 (CCPA 1958) .......................... 716.03(a)
Holmwood v. Cherpeck, 2 USPQ2d 1942 (Bd. Pat. App. & Inter. 1986) ..... 2138.03
Honeywell v. Diamond, 499 F. Supp. 924, 208 USPQ 452 (D.D.C. 1980) ..... 2165.04
Honigsbaum v. Lehman, 903 F. Supp 8, 37 USPQ2d 1799 (D.D.C. 1995) ............................ 513
Honn, In re, 364 F.2d 454, 150 USPQ 652 (CCPA 1966) ............................. 608.01(h), 2165.01
Hook, Ex parte, 102 USPQ 130 (Bd. App. 1953) ............................................................. 715.07
Hormone Research Foundation Inc. v. Genentech Inc., 904 F.2d 1558, 15 USPQ2d 1039 (Fed. Cir. 1990) ..... 2173.05(a)
Horton, Ex parte, 226 USPQ 697 (Bd. Pat. App. & Inter. 1985) .......................................... 2258
Hostettler, In re, 356 F.2d 562, 148 USPQ 514 (CCPA 1966) .......................................... 715.03
Hough, In re, 108 USPQ 89, 703 O.G.200 (Comm’r Pat. 1955) ................................... 409.03(i)
Houghton, In re, 433 F.2d 820, 167 USPQ 687 (CCPA 1970) ........................................ 2107.01
Hovlid v. Asari, 305 F.2d 747, 134 USPQ 162 (9th Cir. 1962) ..... 201.06(d), 211.01(b)
Howarth, In re, 654 F.2d 103, 210 USPQ 689 (CCPA 1981) ..... 716.09, 2164.01(b)
Hozumi, Ex parte, 3 USPQ2d 1059 (Bd. Pat. App. & Inter. 1984) ................................ 803.02
Hruby, In re, 373 F.2d 997, 153 USPQ 61 (CCPA 1967) .......................................... 1504.01(a)
Huang, In re, 100 F.3d 135, 40 USPQ2d 1685 (Fed. Cir. 1996) ..... 716.03, 716.03(b), 1504.01(c), 2145
Huber, Ex parte, 148 USPQ 447 (Bd. Pat. App. 1965) .................................................. 2172.01
Huelster v. Reiter, 168 F.2d 542, 78 USPQ 82 (CCPA 1948) .......................................... 2138.06
Hull v. Bonis, 214 USPQ 731 (Bd. Pat. Inter. 1982) .................................................. 2138.05
Hull v. Davenport, 90 F.2d 103, 33 USPQ 506 (CCPA 1937) ......................... 2138.01, 2138.06
Humber, Ex parte, 217 USPQ 265 (Bd.App. 1961) ......................................................... 716.02(e)
Humphreys, Ex parte, 24 USPQ2d 1255 (Bd. Pat. App. & Inter. 1992) ..... 2404.01, 2405
Hunt Co. v. Mallinckrodt Chem.Works, 177 F.2d 583, 83 USPQ 277 (2d Cir. 1949) ........................................................ 211.05, 1504.20
Hupp v. Siroflex of America, Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997) ...................................................................... 1504.02
Huston v. Ladner, 973 F.2d 1564, 23 USPQ2d 1910 (Fed. Cir. 1992) ..... 2305
Hyatt, In re, 211 F.3d 1367, 54 USPQ2d 1664 (Fed. Cir. 2000) ....................................... 2111
Hyatt, In re, 708 F.2d 712, 218 USPQ 195 (Fed. Cir. 1983) ............................. 2164.08(a), 2181
Hyatt v. Boone, 146 F.3d 1348, 47 USPQ2d 1128 (Fed. Cir. 1998) ..... 2138.05, 2163, 2163.03
Hyatt v. Dudas, 492 F.3d 1365, 83 USPQ2d 1373, 1376 (Fed. Cir. 2007) ..... 2163, 2163.04
Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010)(en banc), aff'd, 132 S. Ct. 1690 (2012) .......................................................... 1216.02
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986) ... 716.03(b), 2138.04, 2145, 2163, 2164.01, 2164.05(a), 2184
Hycor Corp. v. The Schlueter Co., 740 F.2d 1529, 222 USPQ 553 (Fed. Cir. 1984) ........................................................................... 2004
I.C.E. Corp. v. Armco Steel Corp., 250 F. Supp 738, 148 USPQ 537 (S.D.N.Y. 1966) ................................................................ 2128
Immersion Corp. v. HTC Corp, CivilAction No. 12-259-RGA (D.Del. Feb. 11, 2015) ................................................................... 211.01(b)
Impax Labs. Inc. v. Aventis Pharm. Inc., 468 F.3d 1366, 81 USPQ2d 1001 (Fed Cir. 2006) ............................ 2121, 2122, 2152.02(b)
IMS Technology Inc. v. Haas Automation Inc., 206 F.3d 1422, 54 USPQ2d 1129 (Fed. Cir. 2000) ........................... 2181, 2183, 2184
Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 72 USPQ2d 1001 (Fed. Cir. 2004) ..... 2173.05(g)
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Intel Corp. v. U.S. Int'l Trade Comm’n, 946 F.2d 821, 20 USPQ2d 1161 (Fed. Cir. 1991) ................................................................ 2114
Intel Corp. v. VIA Tech., Inc., 319 F.3d 1537, 65 USPQ2d 1934 (Fed. Cir. 2003) ........................................................................... 2181
Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 21 USPQ2d 1383 (Fed. Cir. 1992) ................................................. 2111.01, 2181
Intermountain Research and Eng’g Co. v. Hercules, Inc., 171 USPQ 577 (C.D. Cal. 1971) ................................................................ 2012
International Glass Co. v. United States, 408 F.2d 395, 159 USPQ 434 (Ct. Cl. 1968) ........................................................... 2138.03
International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 93 USPQ2d 1001 (Fed. Cir. 2009) ..... 1504.02
InterroyalCorp.v.SimmonsCo.,204USPQ 562 (S.D. N.Y. 1979) .... 2133.03(e)(1), 2133.03(e)(3)
Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 112 USPQ2d 1188 (Fed. Cir. 2014) ....................................................... 2173.05(b)
Intirtool, Ltd. v. Texar Corp., 369 F.3d 1289, 70 USPQ2d 1780 (Fed. Cir. 2004) ...................................................................... 2111.02
Inventio AG v. Thyssenkrupp Elevator Americas Corp., 649 F.3d 1350, 99 USPQ2d 1112 (Fed. Cir. 2011) ........................ 2181
Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 66 USPQ2d 1631 (Fed. Cir. 2003) ........................................................... 2111.03
Invitrogen Corp. v. Biocrest Manufacturing L.P., 424 F.3d 1374, 76 USPQ2d 1741 (Fed. Cir. 2005) ..... 2133.03(a), 2133.03(c), 2152.02(c)
Invitrogen Corp. v. Clontech Laboratories, Inc., 429 F.3d 1052, 77 USPQ2d 1161 (Fed. Cir. 2005) ........................................... 2138.04
Ionescu, Ex parte, 222 USPQ 537 (Bd.App. 1984) .................................. 2143.03, 2171, 2173.06
IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 77 USPQ2d 1140 (Fed. Cir. 2005) ....................................................... 2173.05(p)
Irish, In re, 433 F.2d 1342, 167 USPQ 764 (CCPA 1970) ............................................... 2136.01
Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 73 USPQ2d 1225 (Fed. Cir. 2004) ........................................... 2144.05
Irons, In re, 340 F.2d 974, 144 USPQ 351 (CCPA 1965) ................................ 2107.02, 2164.07
Isaacs, In re, 347 F.2d 889, 146 USPQ 193 (CCPA 1963) ................................ 2107.02, 2107.03
Ishida Co. v. Taylor, 221 F.3d 1310, 55 USPQ2d 1449 (Fed. Cir. 2000) ..... 2184
Ishizaka, Ex parte, 24 USPQ2d 1621 (Bd. Pat. App. & Inter. 1992) ........................... 716.02(b)
Jackson, Ex parte, 217 USPQ 804 (Bd. Pat. App. & Inter. 1982) ..... 2164.06, 2164.06(a), 2404.02
Jaffe, Ex parte, 147 USPQ 45 (Bd. of App. 1964) ................................................................ 1504
J.A. La Porte, Inc. v. Norfolk Dredging Co., 787 F.2d 1577, 229 USPQ 435 (Fed. Cir. 1986) ....................................................... 2133.03(b)
Janakirama-Rao, In re, 317 F.2d 951, 137 USPQ 893 (CCPA 1963) ..... 2111.03, 2163
Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 68 USPQ2d 1154 (Fed. Cir. 2003) ...................................................................... 2111.02
Japikse, In re, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) ............................................... 2144.04
J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124, 122 S.Ct. 593, 60 USPQ2d 1865 (2001) .................................. 2105
Jennings, In re, 182 F.2d 207, 86 USPQ 68 (CCPA 1950) ............................................... 1504.03
Jentoft, In re, 392 F.2d 633, 157 USPQ 363 (CCPA 1968) ....................................... 804.02, 1490
Jessel v. Newland, 195 USPQ 678 (Comm’r Pat. 1977) ......................................................... 1605
Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928) ................................................. 2121.04, 2125
John O. Butler Co. v. Block Drug Co. Inc., 620 F. Supp. 771, 226 USPQ 855 (D. Ill. 1985) ................................................................ 1504
Johns-ManvilleCorp.v.GuardianIndustries Corp., 586 F. Supp 1034, 221 USPQ 319 (E.D. Mich. 1983) ....................................... 2165.01
Johnson, In re, 282 F.2d 370, 127 USPQ 216 (CCPA 1960) ................................... 2164.01(c)
Johnson, In re, 558 F.2d 1008, 194 USPQ 187 (CCPA 1977) ..... 2164.08, 2173.05(i)
Johnson, In re, 589 F.2d 1070, 200 USPQ 199 (CCPA 1978) .............................. 2161.01, 2184
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LIST OF DECISIONS CITED
Johnson, In re, 747 F.2d 1456, 223 USPQ 1260 (Fed. Cir. 1984) ................................ 716.02(e)
Johnson Worldwide Associates v. Zebco Corp., 175 F.3d 985, 50 USPQ2d 1607 (Fed. Cir. 1999) ................................ 2163, 2163.05
Jolles, In re, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980) ..... 2107.01, 2107.02, 2107.03
Jolley, In re, 308 F.3d 1317, 64 USPQ2d 1901 (Fed. Cir. 2002) ..... 2138.04, 2138.06
Joly, In re, 376 F.2d 906, 153 USPQ 45 (CCPA 1967) ................................ 2107.01, 2107.02
Jones, Ex parte, 62 USPQ2d 1206, 1208 (Bd. Pat. App. & Inter. 2001) ........................ 706.02
Jones, In re, 373 F.2d 1007, 153 USPQ 77 (CCPA 1967) ............................................ 706.03(a)
Jones, In re, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992) .... 707.07(f), 2143.01, 2144, 2144.05, 2144.08
Jones v. Hardy, 727 F.2d 1524, 220 USPQ 1021 (Fed. Cir. 1984) ..... 2141.02, 2144.08
Jones v. Progress Ind., Inc., 163 F. Supp. 824, 119 USPQ 92 (D. R.I. 1958) ..... 1504.02, 1504.03
Josserand, In re, 188 F.2d 486, 89 USPQ 371 (CCPA 1951) ............................... 2133.03(e)(1)
Jovanovics, Ex parte, 211 USPQ 907 (Bd. Pat. App. & Inter. 1981) .............................. 2107.03
Joy Mfg. Co. v. National Mine Service Co., 810 F.2d 1127, 1 USPQ2d 1627 (Fed. Cir. 1987) ............................................... 2246, 2646
Joy Technologies Inc. v. Manbeck, 751 F. Supp 225, 17 USPQ2d 1257 (D.D.C. 1990) ......................................................... 716.03(a)
J. P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553, 223 USPQ 1089 (Fed. Cir. 1984) ................................................................ 2016
Judin v. United States, 110 F.3d 780, 42 USPQ2d 1300 (Fed. Cir. 1997) .......................... 410
Juicy Whip Inc. v. Orange Bang Inc., 185 F.3d 1364, 51 USPQ2d 1700 (Fed. Cir. 1999) ......................................................... 706.03(a)
Jung, In re, 637 F.3d 1356, 98 USPQ2d 1174 (Fed. Cir. 2011) ..... 1205.02 1504.01(c)
Justus v. Appenzeller, 177 USPQ 332 (Bd. Pat. Inter. 1971) ........................................... 2138.06
K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. Appx. 906 (Fed. Cir. 2014) ..... 2144.05
Kaghan, In re, 387 F.2d 398, 156 USPQ 130 (CCPA 1967) ........................................... 706.03(w)
Kahn, In re, 202 USPQ 772 (Comm’r Pat. 1979) ........................................................... 2012.01
Kahn, In re, 441 F.3d 977, 78 USPQ2d 1329 (Fed. Cir. 2006) ................................. 2143.01, 2144
Kaiser Industries Corp. v. Jones & Laughlin Steel Corp., 515 F.2d 964, 185 USPQ 343 (3d Cir. 1975) ....................................... 2012.01
KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d. 1571, 228 USPQ 32 (Fed. Cir. 1985) ................................................. 1504.20, 2004
Kanter, In re, 399 F.2d 249, 158 USPQ 331 (CCPA 1968) ............................................... 2116.01
Kao, In re, 639 F.3d 1057, 98 USPQ2d 1799 (Fed. Cir. 2011) ..... 2111.05, 2112.01, 2153.02
Kaplan, In re, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986) ........................................... 804
Kaslow, In re, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983) ..... 706.03(v), 2141.02, 2161.01, 2163.02
Kathawala, In re, 9 F.3d 942, 28 USPQ2d 1785 (Fed. Cir. 1993) ..... 2126, 2126.02, 2135.01
Katrapat, In re, 6 USPQ2d 1863 (Comm’r Pat. 1988) .................................................. 711.03(c)
Kattwinkle, Ex parte, 12 USPQ 11 (Bd. App. 1931) ................................................ 608.01(v)
Katz, In re, 467 F.2d 939, 167 USPQ 487 (CCPA 1970) ........................................... 706.03(w)
Katz, In re, 687 F.2d 450, 215 USPQ 14 (CCPA 1982) ..... 715.01(c), 716.10, 804,2132,2132.01,2133,2136.05,2137, 2138.02, 2155.01
Katz Interactive Call Processing Patent Litigation, In re, 639 F.3d 1303, 97 USPQ2d 1737 (Fed. Cir. 2011) ........................ 2163
Kaufman Co. v. Lantech, Inc., 807 F.2d 970, 1 USPQ2d 1202 (Fed. Cir. 1986) ..... 2293, 2693
Kawai v. Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973) ..... 2107.02, 2138, 2138.05, 2163.03
Keil, In re, 808 F.2d 830, 1 USPQ2d 1427 (Fed. Cir. 1987) .......................................... 1449.02
Rev. 07.2015, November 2015II-23
MANUAL OF PATENT EXAMINING PROCEDURE
Keizer v. Bradley, 270 F.2d 396, 123 USPQ 215 (CCPA 1959) ........................................ 2138.06
Keller, In re, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) ................................... 707.07(f), 2145
Kelly, In re, 200 USPQ 560 (Comm’r Pat. 1978) ........................................................... 1504.05
Kelly, In re, 305 F.2d 909, 134 USPQ 397 (CCPA 1962) .......................................... 2173.05(o)
Kemco Sales Inc. v. Control Papers Co., 208 F.3d 1352, 54 USPQ2d 1308 (Fed. Cir. 2000) .................................... 2103, 2183, 2184
Kendall v. Searles, 173 F.2d 986, 81 USPQ 363 (CCPA 1949) ........................................ 2138.06
Kerkhoven, In re, 626 F.2d 846, 205 USPQ 1069 (CCPA 1980) ...................................... 2144.06
Key Mfg. Group Inc. v. Microdot, Inc., 679 F. Supp. 648, 4 USPQ2d 1687 (E.D. Mich. 1987) ............................................ 2293, 2693
Keyes, Ex parte, 214 USPQ 579 (Bd. App. 1982) ......................................................... 716.01(c)
Keystone Driller Co. v. Gen’l Excavator Co., 290 U.S. 240, 19 USPQ 228 (1933) ........................................................................... 2012
KeyStone Retaining Wall Systems Inc. v. Westrock Inc., 997 F.2d 1444, 27 USPQ2d 1297 (Fed. Cir. 1993) ..... 1504.05
Khusid, Ex parte, 174 USPQ 59 (Bd. App. 1971) ....................................................... 2173.05(c)
Kilbey v. Thiele, 199 USPQ 290 (Bd. Pat. Inter. 1978) ....................................................... 2137
Killian v. Watson, 121 USPQ 507 (D.D.C. 1958) ........................................................... 1216.02
Kim v. Quigg, 718 F. Supp. 1280, 12 USPQ2d 1604 (E.D. Va. 1989) ..... 711.03(c)
Kimbell, Ex parte, 226 USPQ 688 (Bd.App. 1985) ................................................................ 2258
Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 223 USPQ 603 (Fed. Cir. 1984) ................................................................ 2138
Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 23 USPQ2d 1921 (Fed. Cir. 1992) ..... 602.09, 2137.01
Kimura, Ex parte, 55 USPQ2d 1537 (Bd. Pat. App. & Inter. 2000) .............................. 2308.03
King, In re, 107 F.2d 618 (CCPA 1939) .... 2106
King, In re, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir.1986) ..... 1206, 2112.02, 2131.01
King Instrument Corp. v. Otari Corp., 767 F.2d 853, 226 USPQ 402 (Fed. Cir. 1985) .................................................. 2133.03(a), 2138.05
King Pharmaceuticals Inc. v. Eon Labs Inc., 616 F.3d 1267, 95 USPQ2d 1833 (Fed. Cir. 2010) ..................................... 2111.05, 2112.01
Kirk, In re, 376 F.2d 936, 153 USPQ 48 (CCPA 1967) ................................ 2107.01, 2107.02
Kirsch, In re, 498 F.2d 1389, 182 USPQ 286 (CCPA 1974) ................................... 2173.05(c)
Kistler v. Weber, 412 F.2d 280, 162 USPQ 214 (CCPA 1969) ............................................. 2305
Klopfenstein, In re,380 F.3d 1345, 72 USPQ2d 1117 (Fed. Cir. 2004) ..... 2128.01, 2152.02(e)
Kluis, Ex parte, 70 USPQ 165 (Bd. App. 1945) ................................................................ 1604
Klumb, Ex parte, 159 USPQ 694 (Bd. App. 1967) ............................................... 706.03(d), 2181
Knapp v. Anderson, 477 F.2d 588, 177 USPQ 688 (CCPA 1973) ............................. 2107.01
Knapp Monarch Co., In re, 296 F.2d 230, 132 USPQ 6 (CCPA 1961) .......................... 2144.03
Knell v. Muller, 174 USPQ 460 (Comm’r Pat. 1971) ...................................................... 804.02
Knight, In re, 217 USPQ 294 (Comm’r Pat. 1982) .................................. 2225, 2258, 2625, 2658
Knohl, In re, 386 F.2d 476, 155 USPQ 586 (CCPA 1967) ................................................. 804.02
Knowlton, In re, 481 F.2d 1357, 178 USPQ 486 (CCPA 1973) .... 2164.06(c), 2181, 2185
Knowlton, In re, 500 F.2d 266, 183 USPQ 33 (CCPA 1974) ..................................... 2164.06(c)
Kochan, Ex parte, 131 USPQ 204 (Bd.App. 1961) ....................................................... 2173.05(n)
Kohler, Ex parte, 1905 C.D. 192, 116 O.G. 1185 (Comm’r Pat. 1905) ..... 1503.02, 1504.04
Kollar, In re, 286 F.3d 1326, 62 USPQ2d 1425 (Fed. Cir. 2002) ............................. 2133.03(b)
Koller, In re, 613 F.2d 819, 204 USPQ 702 (CCPA 1980) .......................................... 2124, 2163
Kollman, In re, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) ............................................ 716.02(d)
II-24Rev. 07.2015, November 2015
LIST OF DECISIONS CITED
Kondo v. Martel, 220 USPQ 47 (Bd. Pat. Inter. 1983) .................................................. 2138.02
Krahn v. Commissioner, 15 USPQ2d 1823 (E.D. Va. 1990) ......................................... 711.03(c)
Krepelka, Ex parte, 231 USPQ 746 (Bd. Pat. App. & Inter. 1986) ..................................... 2107.03
Krimmel, In re, 292 F.2d 948, 130 USPQ 215 (CCPA 1961) ......................... 2107.02, 2107.03
Kristensen, Ex parte, 10 USPQ2d 1701 (Bd. Pat. App. & Inter. 1989) .... 2173.05(b), 2173.05(o)
Kroekel, In re, 504 F.2d 1143, 183 USPQ 610 (CCPA 1974) ................................... 2173.05(c)
Kroekel, In re, 803 F.2d 705, 231 USPQ 640 (Fed. Cir. 1986) ........................................... 715
Kroger, Ex parte, 219 USPQ 370 (Bd. App. 1982) .. 716.10, 717.01(a)(1), 2132.01, 2155.01
Kronig, In re, 539 F.2d 1300, 190 USPQ 425 (CCPA 1976) ........................................ 1207.03
Kropa v. Robie, 187 F.2d 150, 88 USPQ 478 (CCPA 1951) ..... 707.07(f), 2111.02
KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007) ..... 2141, 2144.05, 2145, 2216, 2242, 2286, 2616, 2642, 2686.04
Kubin, Ex parte, 83 USPQ2d 1410 (Bd. Pat. App. & Int. 2007) ....................................... 2143.01
Kuehl, In re, 425 F.2d 658, 177 USPQ 250 (CCPA 1973) ............................................... 2116.01
Kuhle, In re, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) ............................................... 2144.04
Kuklo, Ex parte, 25 USPQ2d 1387 (Bd. Pat. App. & Inter. 1992) ................................ 2133.03(a)
Kulling, In re, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990) ........................ 2144.05, 2145
Kusko, Ex parte, 215 USPQ 972 (Bd. App. 1981) ................................................. 2137, 2138.01
LaBounty Mfg. Inc. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 22 USPQ2d 1025 (Fed. Cir. 1992) ..... 2004, 2133.03, 2133.03(e), 2133.03(e)(2)
Lafferty, Ex parte, 190 USPQ 202 (Bd.App. 1975) ................................................................ 1403
L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 25 USPQ2d 1913 (Fed. Cir. 1993) ................................................ 1504.01(c)
Lalu, In re, 747 F.2d 703, 223 USPQ 1257 (Fed. Cir. 1984) ........................................... 2144.09
Lamb, In re, 286 F.2d 610, 128 USPQ 539 (CCPA 1961) ............................................... 1504.03
Lamberti, In re, 545 F.2d 747, 192 USPQ 278 (CCPA 1976) ........................................ 2144.01
Lambrech, In re, 202 USPQ 620 (Comm’r Pat. 1976) .................................................... 1481.03
Lampi Corp. v. American Power Products Inc., 228 F.3d 1365, 56 USPQ2d 1445 (Fed. Cir. 2000) .......................................... 2111.03
Lancaster, Ex parte, 151 USPQ 713, 1966 C.D. 20, 833 O.G. 8 (Bd. App. 1965) ..... 1504.02
Land, In re, 368 F.2d 866, 151 USPQ 621 (CCPA 1966) ................................ 2136.04, 2136.05
Lander, Ex parte, 223 USPQ 687 (Bd. App. 1983) ........................................................... 1504.02
Lange v. Comm’r, 352 F. Supp 166, 176 USPQ 162 (D. D.C. 1972) .......................... 1701.01
Langer, In re, 465 F.2d 896, 175 USPQ 169 (CCPA 1972) ............................................... 2144.09
Langer, In re, 503 F.2d 1380, 183 USPQ 288 (CCPA 1974) ... 2107.02, 2107.03, 2124
Langer v. Kaufman, 465 F.2d 915, 175 USPQ 172 (CCPA 1972) ............................. 2138.04
Lanham, In re, 1 USPQ2d 1877 (Comm’r Pat. 1986) ......................................................... 2258
Lantech Inc. v. Kaufman Co. of Ohio, Inc., 878 F.2d 1446, 12 USPQ2d 1076 (Fed. Cir. 1989) ......................................................... 2145
Lapworth, In re, 451 F.2d 1094, 172 USPQ 129 (CCPA 1971) ............................................. 1504
Larson, In re, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) ............................................... 2144.04
Larson v. Classic Corp., 683 F. Supp. 1202, 7 USPQ2d 1747 (N.D. Ill. 1988) ..... 1504.01(c)
Lasscell, Ex parte, 1884 C.D. 66, 29 O.G. 861 (Comm’r Pat. 1884) ............................... 711.01
Lawrence, Ex parte, 70 USPQ 326, 1946 C.D. 1 (Comm’r Pat. 1946) ..... 1457, 1509
Leapfrog Enterprises, Inc. v. Fischer Price, Inc., 485 F.3d 1157, 82 USPQ2d 1687 (Fed. Cir. 2007) ................................. 2114, 2143.01
Lee, Ex parte, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993) ..... 706.02(m), 2131.03
Lee Pharmaceutical v. Kreps, 577 F.2d 610, 198 USPQ 601 (9th Cir. 1978) ......................... 2127
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Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 5 USPQ2d 1625 (Fed. Cir. 1988) ........................................................................... 1504
Lee, In re, 199 USPQ 108 (Comm’r Pat. 1978) .................................................................. 803
Leggett v. Avery, 101 U.S. 256 (1879) ..... 1490
LeGrice, In re, 301 F.2d 929, 133 USPQ 365 (CCPA 1962) ..... 2121.03, 2152.02(b)
Lemelson, In re, 397 F.2d 1006, 158 USPQ 275 (CCPA 1968) ............................................. 2123
Lemoine, Ex parte, 46 USPQ2d 1420 (Bd. Pat. App. & Inter. 1994) ................................... 1204
Le Roy v. Tatham, 55 U.S. (14 How.) 156 (1852) ..................................................... 2103, 2106
Leshin, In re, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) ............................................... 2144.07
Leslie, In re, 547 F.2d 116, 192 USPQ 427 (CCPA 1977) ................................ 1503.01, 1504.03
Levengood,Exparte,28USPQ2d1300(Bd. Pat. App. & Inter. 1993) ..... 2143.01, 2144
Levy, Ex parte, 17 USPQ2d 1461 (Bd. Pat. App. & Inter. 1990) .......................................... 2112
Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 69 USPQ2d 1801 (Fed. Cir. 2004) ........................................................... 2111.01
Lilienfeld, In re, 67 F.2d 920 (CCPA 1933) ...................................................................... 2144.05
Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 37 USPQ 1 (1938) .................................................................. 2173.05(j)
Lindberg, In re, 194 F.2d 732, 93 USPQ 23 (CCPA 1952) ............................................... 2144.04
Lindell, In re, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) ............................................ 716.01(c)
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 221 USPQ 481 (Fed. Cir. 1984) ..................................... 716.03, 2164.01, 2164.05(a)
Lindner, In re, 457 F.2d 506, 173 USPQ 356 (CCPA 1972) ..... 716.01(c), 716.02(d), 2145
Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 61 USPQ2d 1225 (Fed. Cir. 2001) ................................................................. 2133.03(b)
Links, Ex parte, 184 USPQ 429 (Bd. App. 1974) .......................................... 901.05(b), 2135.01
Lintner, In re, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) ..... 2141, 2142, 2143.01, 2144, 2144.08, 2145
Lister, In re, 583 F.3d 1307, 92 USPQ2d 1225 (Fed. Cir. 2009) .............................. 2152.02(e)
Litchfield v. Eigen, 535 F.2d 72, 190 USPQ 113 (CCPA 1976) ........................................ 2138.06
Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1984) ........................ 601.01(e), 716.03(b), 1504.03
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 76 USPQ2d 1724 (Fed. Cir. 2005) ..... 2161.01, 2163
Ljungstrom, Ex parte, 1905 C.D. 541, 119 O.G. 2335 (Comm’r Pat. 1905) .......................... 814
Lockheed Aircraft Corporation v. United States, 193 USPQ 449 (Ct. Cl. 1977) ..... 2183, 2184
Lockwood v. American Airlines, Inc., 107 F.3d 1505, 41 USPQ2d 1961 (Fed. Cir. 1997) .............................. 2133.03(a), 2163, 2163.02
Lohman, Ex parte, 1912 C.D. 336, 184 O.G. 287 (Comm’r Pat. 1912) ............................. 1503.02
Lonardo, In re, 119 F.3d 960, 43 USPQ2d 1262 (Fed. Cir. 1997) ..... 804, 2217, 2258, 2617
Longi, In re, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985) ................................... 804, 1504.06
Lopresti, In re, 333 F.2d 932, 142 USPQ 177 (CCPA 1964) ............................................... 715
Lorenz v. Finkl, 333 F.2d 885, 142 USPQ 26 (CCPA 1964) ....................................... 711.03(c)
Lowry, In re, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994) .................................. 2111.05
Luck, In re, 476 F.2d 650, 177 USPQ 523 (CCPA 1973) .......................................... 2173.05(o)
Ludtke, In re, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) ..................................... 2112.01, 2114
Lukach, In re, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) ..... 211.05, 2152.02(b), 2163, 2163.05
Lumenyte Int’l Corp. v. Cable Lite Corp., 92 F.3d 1206 (Fed. Cir. 1996) (table) .... 711.03(c)
Lund, In re, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) .... 901.01, 901.02, 2127, 2136.02
II-26Rev. 07.2015, November 2015
LIST OF DECISIONS CITED
Lundak, In re, 773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 1985) ..... 2163, 2164.06, 2164.06(a), 2406.01
Lutzker v. Plet, 843 F.2d 1364, 6 USPQ2d 1370 (Fed. Cir. 1988) .................................. 2138.03
Lyell, Ex parte, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) ................................ 2173.05(p)
Maas, Ex parte, 9 USPQ2d 1746 (Bd. Pat. App. & Inter. 1987) ..................................... 2107.03
MacKay v. Quigg, 641 F. Supp 567, 231 USPQ 90 (D.D.C. 1986) ............................. 1216.02
MacMillan v. Moffett, 432 F.2d 1237, 167 USPQ 550 (CCPA 1970) ............................. 2138.04
Mageli, In re, 470 F.2d 1380, 176 USPQ 305 (CCPA 1973) ..................................... 716.03(b)
Magerlein, In re, 602 F.2d 366, 202 USPQ 473 (CCPA 1979) ..................................... 716.02(b)
Magnetics v. Arnold Eng’g Co., 438 F.2d 72, 168 USPQ 392 (7th Cir. 1971) ..... 2133.03(e)(7)
MagSil Corp. v. Hitachi Global Storage Technologies, Inc., 687 F.3d 1377, 103 USPQ2d 1769 (Fed. Cir. 2012) ..... 2161.01, 2164.06(a)
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 38 USPQ2d 1288 (Fed. Cir. 1996) ..... 2163
Malachowski, In re, 530 F.2d 1402, 189 USPQ 432 (CCPA 1976) ..... 2107.02, 2107.03
Maldague, In re, 10 USPQ2d 1477 (Comm’r Pat. 1988) .................................................. 711.03(c)
Mancy, In re, 499 F.2d 1289, 182 USPQ 303 (CCPA 1974) ........................................ 2116.01
Mann, In re, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988) ..... 1504.02, 1504.04, 2133.03(e)(6)
Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 230 USPQ 45 (Fed. Cir. 1986) ........................... 2111.03
Mantell, In re, 454 F.2d 1398, 172 USPQ 530 (CCPA 1972) .......................................... 715.03
Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 16 USPQ2d 1587 (Fed. Cir. 1990) ........................ 2133.03, 2133.03(a)
Marden, In re, 47 F.2d 958 (CCPA 1931) ........................................................................... 2106
Margolis, In re, 785 F.2d 1029, 228 USPQ 940 (Fed. Cir. 1986) .................................. 716.01(a)
Margolis v. Banner, 599 F.2d 435, 202 USPQ 365 (CCPA 1979) ............................... 804.03
Marinissen, Ex parte, 155 USPQ 528, 842 O.G. 528 (Bd. App. 1966) ........................... 1504.02
Markush, Ex parte, 1925 C.D. 126, 340 O.G. 839 (Comm’r Pat. 1924) ..... 803.02, 2173.05(h)
Marosi, In re, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) ... 706.02(m), 2111.01, 2113, 2173.05(b)
Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 71 USPQ2d 1837 (Fed. Cir. 2004) ..... 2111.03
Marsh Eng’g Co., In re, 1913 C.D. 183 (Comm’r Pat. 1913) ........................................... 103
Martin, In re, 154 F.2d 126, 69 USPQ 75 (CCPA 1946) ............................................... 1211.03
Martin v. Johnson, 454 F.2d 746, 172 USPQ 391 (CCPA 1972) .......................... 2163, 2173.05(t)
Martin v. Mayer, 823 F.2d 500, 3 USPQ2d 1333 (Fed. Cir. 1987) ...................................... 2163
Marzocchi, In re, 439 F.2d 220, 169 USPQ 367 (CCPA 1971) ... 2107.01, 2107.02, 2124, 2163, 2163.04, 2164.03, 2164.04, 2164.08
Masco Corp. v. United States, 303 F.3d 1316, 64 USPQ2d 1182 (Fed. Cir. 2002) ........................................................................... 2181
Masham, Ex parte, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) ................................... 2114
Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 48 USPQ2d 1010 (Fed. Cir. 1998) ............................................................... 2181
Massachusetts Institute of Technology v. A.B. Fortia, 774 F.2d 1104, 227 USPQ 428 (Fed. Cir. 1985) ..... 2128.01, 2152.02(e), 2164.01
Massachusetts Institute of Technology and Electronics For Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 80 USPQ2d 1225 (Fed. Cir. 2006) ........................ 2173.01, 2181
Mathews, In re, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969) ..... 715.01(c), 2136.04, 2136.05
Mattison, In re, 509 F.2d 563, 184 USPQ 484 (CCPA 1975) ................................... 2173.05(c)
Mattor v. Coolegem, 530 F.2d 1391, 189 USPQ 201 (CCPA 1976) ............................. 2137.01
Mattson, In re, 208 USPQ 168 (Comm’r Pat. 1980) .................................................. 601.01(e)
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MANUAL OF PATENT EXAMINING PROCEDURE
Mattullath, In re, 38 App. D.C. 497 (1912) ......................................................... 711.03(c), 2734
Maucorps, In re, 609 F.2d 481, 203 USPQ 812 (CCPA 1979) ............................................. 2184
May, In re, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) ..... 716.02(c), 2112.02, 2144.08, 2144.09
Mayewsky, In re, 860 F.2d 430, 162 USPQ 86 (E.D. Va. 1969) ...................................... 1701.01
Mayhew, In re, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976) ..... 2163, 2163.05, 2164.08(c), 2172.01, 2174
Mayne, In re, 104 F.3d 1339, 41 USPQ2d 1451 (Fed. Cir. 1977) ........................ 2144.09, 2145
Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. __, 132 S.Ct. 1289, 101 USPQ2d 1961 (2012) ..... 2103, 2106
Mazer v. Stein, 347 U.S. 201, 100 USPQ 325 (1954) ........................................................ 1512
Maziere, Ex parte, 27 USPQ2d 1705 (Bd. Pat. App. & Inter. 1993) ........................... 608.01(p)
MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 94 USPQ2d 1598 (Fed. Cir. 2010) ..... 1412.02
McCulloch Gas Processing Co. v. Dept. of Energy, 650 F.2d 1216 (Temp. Emer. Ct. App. 1981) .................................................. 1701.01
McCullough, Ex parte, 7 USPQ2d 1889 (Bd. Pat. App. & Inter. 1987) ........................... 2145
McGaughey, Ex parte, 6 USPQ2d 1334 (Bd. Pat. App. & Inter. 1988) ... 2217, 2258, 2617
McGrady v. Aspenglas Corp., 487 F. Supp 859, 208 USPQ 242 (S.D. N.Y. 1981) .... 1503.01, 1504.01(a)
McGrew, In re, 120 F.3d 1236, 43 USPQ2d 1632 (Fed. Cir. 1997) ..... 715.05, 2304.02(c)
McKellin, In re, 529 F.2d 1342, 188 USPQ 428 (CCPA 1976) ............................................... 715
McKenna, In re, 203 F.2d 717, 97 USPQ 348 (CCPA 1953) ..................................... 716.01(c)
McLaughlin, In re, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971) ..... 707.07(f), 2145
Mead, In re, 581 F.2d 251, 198 USPQ 412 (CCPA 1978) ............................................... 1412.01
Mead Johnson & Co., Ex parte, 227 USPQ 78 (Bd. Pat. App. & Inter. 1985) ..... 716.02(a)
Mead Johnson Pharmaceutical Group v. Bowen, 838 F.2d 1332, 6 USPQ2d 1565 (DC Cir. 1988) ........................................... 2754.01
Medical Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 68 USPQ2d 1263 (Fed. Cir. 2003) ..... 2181, 2182
Medrad, Inc. v. Tyco Healthcare Group LP, 466 F.3d 1047, 80 USPQ2d 1526 (Fed. Cir. 2006) .......................................... 1402, 2173.02
Medtronic, Inc. v. Cardiac Pacemakers, 721 F.2d 1563, 220 USPQ 97 (Fed. Cir. 1983) ................................................................. 2141.01(a)
Meitzner v. Corte, 537 F.2d 524, 190 USPQ 407 (CCPA 1976) ........................................ 2138.05
Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 28 USPQ2d 1081 (Fed. Cir. 1993) ....................................................................... 211.05
Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 27 USPQ2d 1521 (Fed. Cir. 1993) ...................................................................... 1412.02
Merchant, In re, 575 F.2d 865, 197 USPQ 785 (CCPA 1978) ..................................... 716.02(e)
Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989) ..... 716.02(a), 2123, 2144.05, 2144.08
Merck & Co., Inc., In re, 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) ..... 707.07(f), 716.02, 2143.02, 2144.08, 2144.09, 2145
Merck & Co., Inc. v. Hi-Tech Pharmacal, Co., Inc., 482 F.3d 1317, 82 USPQ2d 1203 (Fed. Cir. 2007) ............................. 2701, 2751
Merck & Co., Inc., v. Teva Pharms. USA, Inc., 395 F.3d 1364, 73 USPQ2d 1641 (Fed. Cir. 2005) ........................................... 2111.01
Mergenthaler v. Scudder, 11 App. D.C., 1897 C.D. 724, 81 O.G. 1417 (D.C. Cir. 1897) ................................ 706.02(l)(2), 715, 715.07
Merz, Ex parte, 75 USPQ 296 (Bd. App. 1947) .................................................................. 715
Messick, Ex parte, 7 USPQ 57, 1930 C.D. 6, 400 O.G. 3 (Comm’r Pat.1930) ..... 710.01(a)
Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 71 USPQ2d 1081 (Fed. Cir. 2004) ........................ 2111.02, 2112
II-28Rev. 07.2015, November 2015
LIST OF DECISIONS CITED
Metcalfe, In re, 410 F.2d 1378, 161 USPQ 789 (CCPA 1969) ..... 608.01(v), 2404.01
Metropolitan Eng. Co. v. Coe, 78 F.2d 199, 25 USPQ 216 (D.C. Cir. 1935) ..... 716.07
Meyer, Ex parte, 6 USPQ2d 1966 (Bd. Pat. App. & Inter. 1988) .......................................... 2145
Meyer, In re, 599 F.2d 1026, 202 USPQ 175 (CCPA 1979) ............................................... 2131.02
Meyer, In re, 688 F.2d 789, 215 USPQ 193 (CCPA 1982) .......................................... 2106, 2184
Michalek, In re, 162 F.2d 229, 74 USPQ 107 (CCPA 1947) .......................................... 716.07
Micro Chemical, Inc. v. Great Plains Chemical Co., 103 F.3d 1538, 41 USPQ2d 1238 (Fed. Cir. 1997) ..... 2133.03(b)
Milburn v. Davis-Bournonville Co., 270 U.S. 390, 46 S. Ct. 324, 1926 C.D. 303, 344 O.G. 817 (1926) ................................... 2136.04
Miles Labs. Inc. v. Shandon Inc., 997 F.2d 870, 27 USPQ2d 1123 (Fed. Cir. 1993) ................................................................... 716.01(a)
Miller, In re, 418 F.2d 1392, 164 USPQ 46 (CCPA 1969) ..... 706.03(a), 2106, 2112.01
Miller, In re, 441 F.2d 689, 169 USPQ 597 (CCPA 1971) ............................................... 2173.04
Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894) ................................................................. 804
Mills, In re, 281 F.2d 218, 126 USPQ 513 (CCPA 1960) ............................................... 2144.09
Mills, In re, 916 F.2d 680, 16 USPQ2d 1430 (Fed. Cir. 1990) ........................................... 2144.08
Milton, Ex parte, 63 USPQ 132 (P.O. Super. Exam. 1938) ............................................. 710.04(a)
Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 (1916) .................................... 2144.05, 2164.01
Minton v. Natl.Ass’n. of Securities Dealers, 336 F.3d 1373, 67 USPQ2d 1614 (Fed. Cir. 2003) ..... 2106, 2111.04, 2133.03(c)
Miyazaki, Ex parte, 89 USPQ2d 1207 (BPAI 2008) ........................................... 2173.05(b)
Mlot-Fijalkowski, In re, 676 F.2d 666, 213 USPQ 713 (CCPA 1982) ........................ 2141.01(a)
MOAEC, Inc. v. MusicIP Corp., 568 F. Supp. 2d 978, 982 (W.D. Wis. 2008) ..... 211.01(b)
Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 66 USPQ2d 1429 (Fed. Cir. 2003) ......................................................... 2163
Mochel, In re, 470 F.2d 638, 176 USPQ 194 (CCPA 1974) .......................................... 2173.05(c)
Mogen David Wine Corp., In re, 328 F.2d 925, 140 USPQ 575 (CCPA 1964) ..... 1512
Mohsenzadeh v. Lee, 1:13-cv-00824 (E.D. Va 2014) ........................................................... 2732
Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986) ..... 2111.03, 2133.03(a), 2133.03(b)
Moler v. Purdy, 131 USPQ 276 (Bd. Pat. Inter. 1960) .................................................. 2137.01
Molins, In re, 368 F.2d 258, 151 USPQ 570 (CCPA 1996) .............................................. 1449.02
Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995) ..... 2004
Monks, In re, 588 F.2d 308, 200 USPQ 129 (CCPA 1978) ..... 901.05, 901.05(b), 1504, 2126.01, 2135.01
Monogram Mfg. v. F & H Mfg., 62 USPQ 409 (9th Cir. 1944) ............................. 2133.03(e)(1)
Monsanto Co. v. Kamp, 269 F. Supp 818, 154 USPQ 259 (D.D.C. 1967) ..... 602.09, 1216.02
Moore, In re, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971) ... 1504.04, 2161.01, 2164.08, 2172
Moore, In re, 444 F.2d 572, 170 USPQ 260 (CCPA 1971) ................................................. 715.07
Moore v. U.S., 194 USPQ 423 (Ct. Cl. 1977) ................................................................ 2134
Morehouse, In re, 545 F.2d 162, 192 USPQ 29 (CCPA 1976) ..................................... 2164.06(c)
Moreton, In re, 288 F.2d 708, 129 USPQ 227 (CCPA 1961) ............................................. 2121
Morgan, In re, 990 F.2d 1230, 26 USPQ2d 1392 (Fed. Cir. 1993) ........................ 1415.01, 1443
Morris, In re, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) ... 904.01, 2111, 2111.01, 2163, 2173.05(a), 2181
Morse v. Porter, 155 USPQ 280 (Bd. Pat. Inter. 1965) ................................... 2137.01, 2138.04
Morton, Ex parte, 134 USPQ 407 (Bd. App. 1961) ....................................................... 2173.05(t)
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MANUAL OF PATENT EXAMINING PROCEDURE
Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 28 USPQ2d 1190 (Fed. Cir. 1993) ........................................................... 2173.02
Morway v. Bondi, 203 F.2d 742, 97 USPQ 318 (CCPA 1953) ........................................ 2138.06
Mosher, In re, 248 F.2d 956, 115 USPQ 140 (CCPA 1957) ............................................... 1216.01
Mostafazadeh, In re, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) ..... 1412.02
Mott, In re, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976) ............................................ 804, 2181
Mowry, Ex parte, 91 USPQ 219 (Bd. App. 1950) ........................................................... 2144.09
Mowry v. Whitney, 81 U.S. (14 Wall.) 620 (1871) .......................................................... 2164.07
Mraz, In re, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972) .................................................... 2125
MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 110 USPQ2d 1235 (Fed. Cir. 2014) ........................................... 1504.03
Mulder, In re, 716 F.2d 1542, 219 USPQ 189 (Fed. Cir. 1983) .... 2138.06, 2183, 2184
Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 45 USPQ2d 1429 (Fed. Cir. 1998) .................................................... 2111.01
Multiple Litigation Involving Frost Patent, In re, 540 F.2d 601, 185 USPQ 729 (3d Cir. 1976) ......................................................... 2016
Murray, Ex parte, 1891 Dec. Comm’r Pat. 130 (1891) ................................................ 711.03(c)
Naber v. Cricchi, 567 F.2d 382, 196 USPQ 294 (CCPA 1977) ........................................ 2138.06
Nalbandian, In re, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981) ..... 1504.02, 1504.03
Napier, In re, 55 F.3d 610, 34 USPQ2d 1782 (Fed. Cir. 1995) ................................................ 2112
Naquin, In re, 398 F.2d 863, 158 USPQ 317 (CCPA 1968) ..... 2164.05(b), 2164.06(c)
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 110 USPQ2d 1688 (2014) .......................................................... 2173.02
Nazomi Communications, Inc. v. Nokia Corp., 739 F.3d 1339, 109 USPQ2d 1258 (Fed Cir. 2014) ................................................. 2114
Nehrenberg, In re, 280 F.2d 161, 126 USPQ 383 (CCPA 1960) ................................... 2173.05(b)
Nelson, In re, 280 F.2d 172, 126 USPQ 242 (CCPA 1960) .................................................... 2165
Nelson, In re, 420 F.2d 1079, 164 USPQ 458 (CCPA 1970) ..................................... 715.07(a)
Nelson v. Bowler, 626 F.2d 853, 206 USPQ 881 (CCPA 1980) ... 2107.01, 2107.02, 2107.03, 2138.05
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 88 USPQ2d 1751 (Fed. Cir. 2008) ....................................................... 2152.02(b)
New England Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 23 USPQ2d 1622 (Fed. Cir. 1992) ..... 2137.01
New Idea Farm Equip. Corp. v. Sperry Corp., 916 F.2d 1561, 16 USPQ2d 1424 (Fed. Cir. 1990) ................................................ 2138
New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 63 USPQ2d 1843 (Fed. Cir. 2002) ......................... 211.05, 2163
Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 9 USPQ2d 1417 (Fed. Cir. 1988) ...................................................... 716.01(d), 716.04
Newkirk v. Lulejian, 825 F.2d 1581, 3 USPQ2d 1793 (Fed. Cir. 1987) ..... 715.07
Newman v. Quigg, 877 F.2d 1575, 11 USPQ2d 1340 (Fed. Cir. 1989) ..... 2107.01
Newton, In re, 414 F.2d 1400, 163 USPQ 34 (CCPA 1969) ................................ 2161, 2165.02
Ngai, In re, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004) .................................. 2112.01
Nievelt, In re, 482 F.2d 965, 179 USPQ 224 (CCPA 1973) .................................................... 2145
Nilssen, In re, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988) ..... 1701.01, 2143.01, 2144
Nitinol Medical Technologies Inc., In re, 17 USPQ2d 1492 (Comm’r Pat. & Tm. 1990) ............................................................... 2751
Nitz v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976) ............................. 2301.03
Noah Systems Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) ............................. 2181
Noelle v. Lederman, 355 F.3d 1343, 69 USPQ2d 1508 (Fed. Cir. 2004) ........................ 2163
Nolan, In re, 553 F.2d 1261, 193 USPQ 641 (CCPA 1977) ........................... 716.02(b), 716.02(c)
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LIST OF DECISIONS CITED
Nolden, Ex parte, 149 USPQ 378 (Bd. Pat. App. 1965) .................................................. 2172.01
Noll, In re, 545 F.2d 141, 191 USPQ 721 (CCPA 1976) ............................... 2163, 2181, 2184
Nomiya, In re, 509 F.2d 566, 184 USPQ 607 (CCPA 1975) ................................... 2129, 2258
NOMOS Corp. v. BrainLAB USA Inc., 357 F.3d 1364, 69 USPQ2d 1853 ( Fed. Cir. 2004) ................................................................ 2184
Norco Products, Inc. v. Mecca Development, Inc., 617 F. Supp 1079, 227 USPQ 724 (D. Conn. 1985) ..... 1504.01(c)
Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 38 USPQ2d 1593 (Fed. Cir. 1996) ............................................................................. 410
Norian Corp. v. Stryker Corp., 363 F.3d 1321, 70 USPQ2d 1508 (Fed. Cir. 2004) ...................................................................... 2111.03
Norlund, Ex parte, 1913 C.D. 161, 192 O.G. 989 (Comm’r Pat. 1913) ..... 1213.01, 2681
NorthAmerican Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005) ..... 1412.02
Northam Warren Corp. v. D. F. Newfield Co., 7 F. Supp 773, 22 USPQ 313 (E.D.N.Y. 1934) .......................................... 2112.01
Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 15 USPQ2d 1321 (Fed. Cir. 1990) .................................................... 2128.01
Northern Telecom Ltd. v. Samsung Electronics Co., 215 F.3d 1281, 55 USPQ2d 1065 (Fed. Cir. 2000) ..... 2165.01
Norton v. Curtiss, 433 F.2d 779, 167 USPQ 532 (CCPA 1970) ............................................. 2012
Novak, In re, 306 F.2d 924, 134 USPQ 335 (CCPA 1962) ................................ 2107.02, 2107.03
Novartis AG v. Lee, 740 F.3d 593, 109 USPQ2d 1385 (Fed. Cir. 2014) ..... 2731, 2734
Novitski, Ex parte, 26 USPQ2d 1389 (Bd. Pat. App. & Inter. 1993) .............................. 2112.02
Novo Industries L.P. v. Micro Molds Corp., 350 F.3d 1348, 69 USPQ2d 1128 (Fed. Cir. 2003) ......................................................... 1481
Noznick, In re, 478 F.2d 1260, 178 USPQ 43 (CCPA 1973) ....................................... 716.03(b)
NTP, Inc. v Research in Motion, Ltd., 418 F.3d 1282, 1316, 75 USPQ2d 1763 (Fed. Cir. 2005) ......................................................... 2106
NTP, In re, 654 F.3d 1268, 99 USPQ2d 1500 (Fed. Cir. 2011) ............................. 2258, 2658
Nuijten, In re, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007) ........................ 2106, 2107.01
Obiaya, Ex parte, 227 USPQ 58 (Bd. Pat. App. & Inter. 1985) ... 707.07(f), 2145, 2258
Ochiai, In re, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) ..... 706.02(n), 2116.01, 2158
Ockert, In re, 245 F.2d 467, 114 USPQ 330 (CCPA 1957) ...................................................... 804
Oda, In re, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971) ..................................... 2163, 2163.07
OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 43 USPQ2d 1641 (Fed. Cir. 1997) ......................................... 706.02(l), 2004
Odetics Inc. v. Storage Tech. Corp., 185 F.3d 1259, 51 USPQ2d 1225 (Fed. Cir. 1999) ..................................................... 2183, 2184
Oelrich, In re, 579 F.2d 86, 198 USPQ 210 (CCPA 1978) ............................. 716.01(c), 2144.08
Oelrich, In re, 666 F.2d 578, 212 USPQ 323 (CCPA 1981) .................................................... 2112
Oetiker, Ex parte, 23 USPQ2d 1641 (Bd. Pat. App. & Inter. 1992) ......................... 2173.05(b)
Oetiker, In re, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992) ..... 707.07(f), 716.01(d), 1504.01(a), 2107.02, 2142, 2145, 2164.07
O’Farrell, In re, 853 F.2d 894, 7 USPQ2d 1673 (Fed. Cir. 1988) ..... 2143.01, 2143.02, 2144.08, 2145
Oguie, In re, 517 F.2d 1382, 186 USPO 227 (CCPA 1975) ........................ 706.03(u), 2304.04(b)
Ohshiro, Ex parte, 14 USPQ2d 1750 (Bd. Pat. App. & Inter. 1989) .............................. 2163.05
O.I. Corp. v. Tekmar Corp., 115 F.3d 1576, 42 USPQ2d 1777 (Fed. Cir. 1997) ..... 2181
Oka v. Youssefyeh, 849 F.2d 581, 7 USPQ2d 1169 (Fed. Cir. 1988) ..... 2138.04
Okajima v. Bourdeau, 261 F.3d 1350, 59 USPQ2d 1795 (Fed. Cir. 2001) ..... 2141.03
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Okuzawa, In re, 537 F.2d 545, 190 USPQ 464 (CCPA 1976) ........................................ 2111.01
Olah, Ex parte, 131 USPQ 41 (Bd. App. 1960) ..... 213.03, 706.02(a), 901.05, 2133, 2135.01
Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 78 USPQ2d 1705 (Fed. Cir. 2006) ..... 2111.01
Omeprazole Patent Litigation, In re, 483 F.3d 1364, 82 USPQ2d 1643 (Fed. Cir. 2007) ................................................................ 2112
Onda, In re, 229 USPQ 235 (Comm’r Pat. 1985) ............................ 706.02(l)(2), 2285, 2686.03
Opinion of Hon. Edward Bates, 10 Op.Atty. Gen. 137 (1861) ....................................... 602.08(b)
Oppenauer, In re, 143 F.2d 974, 62 USPQ 297 (CCPA 1944) .......................................... 716.09
Orbital Technologies Corporation, In re, 603 Fed. App’x 924 (Fed. Cir. 2015) ..... 706.02
O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854) ............................................. 706.03(a), 2106
Orita, In re, 550 F.2d 1277, 193 USPQ 145 (CCPA 1977) ..................................... 1412.01, 1457
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986) ....................... 2173.02, 2173.05(b)
Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007) ................................................................. 2173.05(b)
Ortho-McNeilPharmaceutical,Inc.v.Lupin Pharmaceuticals, Inc., 603 F.3d 1377, 95 USPQ2d 1246, (Fed. Cir. 2010) ..... 2751
Orthopedic Equip. Co., Inc. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983) ........................................................................ 716.04
Osmond, Ex parte, 191 USPQ 334 (Bd. App. 1973) ...................................... 711.06(a), 2136
Osmond, Ex parte, 191 USPQ 340 (Bd. App. 1976) ................................................ 711.06(a)
Osram Syvania Inc., v. America Induction Tech., 701 F.3d 698 (Fed. Cir. 2008) ..... 2131.02
Ott v. Goodpasture, 40 USPQ2d 1831 (D. N.Tex. 1996) ...................................................... 410
Otto, In re, 312 F.2d 937, 136 USPQ 458 (CCPA 1963) ..................................... 2111.02, 2115
Ovist, Ex parte, 152 USPQ 709 (Bd. App. 1963) .............................................. 901.05, 2126.02
Ovshinsky, Ex parte, 10 USPQ2d 1075 (Bd. Pat. App. & Inter. 1989) ................................ 715.07
Owens, In re, 710 F.3d 1362, 106 USPQ2d 1248 (Fed. Cir. 2013) .................................. 1503.02
Packard, In re, 751 F.3d 1307, 110 USPQ2d 1785 (Fed. Cir. 2014) ..... 2173.02, 2173.05(a), 2173.05(e), 2173.06
Pac-Tec Inc. v. Amerace Corp., 903 F.2d 796, 14 USPQ2d 1871 (Fed. Cir. 1990) ............................................................ 2111.02, 2163
Palmer, In re, 451 F.2d 1100, 172 USPQ 126 (CCPA 1971) ..................................... 716.01(a)
Panagrossi, In re, 277 F.2d 181, 125 USPQ 410 (CCPA 1960) ............................................. 2174
Pandrol USA, LP v. Airboss Railway Products, Inc., 320 F.3d 1654, 65 USPQ2d 1985 (Fed. Cir. 2003) ..... 1302.04
Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985) .................................... 716.06, 1504.03, 2134
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir. 1987) ..... 2141.01, 2141.02, 2144.08, 2158
Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001) ...................................................................... 1412.02
Pantzer, Ex parte, 176 USPQ 141 (Bd App. 1972) ....................................................... 2173.05(o)
Paperless Accounting v. Bay Area Rapid Transit System, 804 F.2d 659, 231 USPQ 649 (Fed. Cir. 1986) .................................... 2133.01
Papesch, In re, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) ..... 716.02(a), 2141.02, 2144.08, 2144.09
Pappas, Ex parte, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992) ..... 1503.01, 1504.04, 2141.01(a), 2173.05(b)
Papst-Motoren, In re, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986) ................................... 2258
Paragon Podiatry Laboratory, Inc. v. KLM Labs., Inc., 984 F.2d 1182, 25 USPQ2d 1561 (Fed. Cir. 1993) ..... 410, 2133.03(e)(2)
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LIST OF DECISIONS CITED
Parke-Davis & Co. v. H.K. Mulford Co., 189 F. 95 (S.D.N.Y. 1911) ................................ 2106
Parker v. Flook, 437 U.S. 584, 198 USPQ 193 (1978) ........................................................ 2106
Parker v. Frilette, 462 F.2d 544, 174 USPQ 321 (CCPA 1972) ........................................ 2138.05
Parks, Ex parte, 30 USPQ2d 1234 (Bd. Pat. App. & Inter. 1993) ................................. 2173.05(i)
Patent No. 4,409,763, In re, 7 USPQ2d 1798 (Comm’r Pat. 1988) ........................................ 2540
Patent Term Extension Application, U.S. Patent No. 3,849,549, In re, 226 USPQ 283 (Pat. & Tm. Office 1985) ......................... 2751
Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985) ..... 2225, 2240, 2244, 2249, 2625, 2640
Patlex Corp. v. Mossinghoff, 758 F.2d 594, 225 USPQ 243 (Fed. Cir. 1985) ..... 2211, 2611
Patlex Corp. v. Quigg, 680 F. Supp. 33, 6 USPQ2d 1296 (D. D.C. 1988) .... 2246, 2646
Paulik v. Rizkalla, 760 F.2d 1270, 226 USPQ 224 (Fed. Cir. 1985) ... 2138.01, 2138.03
Paulsen, In re, 30 F.3d 1475, 31 USPQ2d 1671 (Fed. Cir. 1994) .... 716.03, 2114, 2144.08
Payne, Ex parte, 1904 C.D. 42, 108 O.G. 1049 (Comm’r Pat. 1903) ......................... 707.07(g)
Payne, In re, 606 F.2d 303, 203 USPQ 245 (CCPA 1979) ..... 716.02(a), 716.02(e), 2144.09
Peeler v. Miller, 535 F.2d 647, 190 USPQ 117 (CCPA 1976) ........................................ 2138.03
Peck, Ex parte, 1901 C.D. 136, 96 O.G. 2409 (Comm’r Pat. 1901) ......................... 608.02(f)
PennYan Boats, Inc. v. Sea Lark Boats Inc., 354 F. Supp 948, 175 USPQ 260 (S.D. Fla. 1972) ......................................................... 2004
Pennwalt Corp. v. Akzona, Inc., 740 F.2d 1573, 222 USPQ 833 (Fed. Cir. 1984) ................................................................. 2133.03(e)
Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 4 USPQ2d 1737 (Fed. Cir. 1987) ................................................................ 2184
Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985) .................................. 716.03(b), 716.06, 2141.01(a)
Personalized Media Communications LLC v. ITC, 161 F.3d 696, 48 USPQ2d 1880 (Fed. Cir. 1998) ............................................... 2181
Petering, In re, 301 F.2d 676, 133 USPQ 275 (CCPA 1962) ... 2131.02, 2131.03, 2144.08
Peters, In re, 723 F.2d 891, 221 USPQ 952 (Fed. Cir. 1983) ........................................... 2163.05
Petersen v. Fee Int’l Ltd., 381 F. Supp 1071, 182 USPQ 264 (W.D. Okla. 1974) ..... 2134
Peterson, Ex parte, 49 USPQ 119, 1941 C.D. 8 (Comm’r Pat. 1941) ..... 710.02(b)
Peterson, Ex parte, 63 USPQ 99 (Bd. App. 1944) ............................................................. 901.02
Peterson, In re, 315 F.3d 1325, 65 USPQ2d 1379 (Fed. Cir. 2003) ..... 716.02(d), 2144.05
Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 48 USPQ2d 1641 (1998) ..... 706.02(l)(2), 2133.03(b), 2133.03(c), 2152.02(d), 2163, 2163.02
Pfizer, Inc. v. Apotex Inc., 480 F.3d 1348, 82 USPQd 1321 (Fed. Cir. 2007) ..... 2143.01, 2145
Phelan, In re, 205 F.2d 183, 98 USPQ 156 (CCPA 1953) ...................................................... 804
Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 (D. Del. 1961) ..... 1503.02, 1504.04, 2133.03(e)(1)
Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) ..... 2111, 2111.01, 2143.01, 2258
PhotoCure ASA v. Kappos, 603 F.3d 1372, 95 USPQ2d 1250 (Fed. Cir. 2010) ..... 2751
Piasecki, In re, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984) ..... 716.01(d), 2107.02, 2142, 2145
Pierce v. Allen B. DuMont Laboratories, Inc., 297 F.2d 323, 131 USPQ 340 (3d Cir. 1961) ........................................................... 804
Pierce v. Watson, 275 F.2d 890, 124 USPQ 356 (D.C. Cir. 1960) ................................. 715.01(b)
Pilkington, In re, 411 F.2d 1345, 162 USPQ 145 (CCPA 1969) ................................... 2173.05(o)
PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 64 USPQ2d 1344 (Fed. Cir. 2002) ........................................................................... 2163
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Pio, In re, 217 F.2d 956, 104 USPQ 177 (CCPA 1954) ................................................. 716.07
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 51 USPQ2d 1161 (Fed. Cir. 1999) ................................................... 2111.02
Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014) ............................ 2106
Plant Genetic Sys., N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 65 USPQ2d 1452 (Fed. Cir. 2003) ........................................... 2164.08
Plastic Contact Lens Co. v. Gottschalk, 484 F.2d 837, 179 USPQ 262 (D.C. Cir. 1973) ........................................................ 706.03(w)
Platner, In re, 155 USPQ 222 (Comm’r Pat. 1967) ......................................... 1504.05 2920.05(b)
Pleuddemann, In re, 910 F.2d 823, 15 USPQ2d 1738 (Fed. Cir. 1990) ..... 2116.01
Plumb, In re, 470 F.2d 1403, 176 USPQ 323 (CCPA 1973) ................................................. 715.03
Polumbo v. Don-Joy Co., 762 F.2d 969, 226 USPQ 5 (Fed. Cir. 1985) ........................ 2183, 2184
Poly-America LP v. GSE Lining Tech. Inc., 383 F.3d 1303, 72 USPQ2d 1685 (Fed. Cir. 2004) ................................. 2111.02, 2133.03(c)
Porter, Ex parte, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) ..... 608.01(n), 2173.05(e), 2173.05(f), 2173.05(q)
Portola Packaging, Inc., In re, 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997) ..... 2258.01
Potter v. Dann, 201 USPQ 574 (D.D.C. 1978) ......................................................... 711.03(c)
Pottier, In re, 376 F.2d 328, 153 USPQ 407 (CCPA 1967) ............................................... 2107.02
PPG Ind. v. Guardian Ind., 75 F.3d 1558, 37 USPQ2d 1618 (Fed. Cir. 1996) ..... 2164.06(b)
PPG Industries v. Guardian Industries, 156 F.3d 1351, 48 USPQ2d 1351 (Fed. Cir. 1998) ................................................. 2111.03, 2163
Prater, In re, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) ..... 2111, 2172, 2173.05(a), 2173.05(q), 2411.01
Preda, In re, 401 F.2d 825, 159 USPQ 342 (CCPA 1968) ............................................... 2144.01
President and Fellows of Harvard College v. Rea, 2013 WL 2152635 (E.D.Va. May 15, 2013) .......................................................... 1490
Price v. Symsek, 988 F.2d 1187, 26 USPQ2d 1031 (Fed. Cir. 1993) ..... 2137, 2138.01
ProcessControlCorp.v.HydReclaimCorp., 190 F.3d 1350, 52 USPQ2d 1029 (Fed. Cir. 1999) .............................. 706.03(d), 2173.05(a)
Protein Found., Inc. v. Brenner, 260 F. Supp 519, 151 USPQ 561 (D.D.C. 1966) ..... 706.02(a)
Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 56 USPQ2d 1481 (Fed. Cir. 2000) ................................................ 2163, 2163.05
Quad Environmental Technologies Corp. v. Union Sanitary District, 946 F.2d 870, 20 USPQ2d 1392 (Fed. Cir. 1991) ..... 804.02
Quadranti, Ex parte, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) .............................. 2144.06
Quayle, Ex parte, 25 USPQ 74, 1935 C.D. 11, 453 O.G. 213 (Comm’r Pat. 1935) ..... 706.07(h), 710.02(b), 714.03, 714.14, 714.15, 2266.01, 2731
Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 11 USPQ2d 1300 (Fed. Cir. 1989) .................................................... 1504.20
Rackham, Ex parte, 1923 C.D. 4 (Comm’r Pat. 1922) ...................................................... 901.05
Radio Corp. of America v. Radio Eng’g Labs., Inc., 293 U.S. 1, 21 USPQ 353 (1934) .......................................................... 2138.01
Radio Steel and Mfg. Co. v. MTD Products, Inc., 731 F.2d 840, 221 USPQ 657 (Fed. Cir. 1984) ................................................. 2173.05(j)
Rainer, In re, 305 F.2d 505, 134 USPQ 343 (CCPA 1962) .................................................... 2124
Rainer, In re, 390 F.2d 771, 156 USPQ 334 (CCPA 1968) ................................................. 715.03
Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 227 USPQ 177 (Fed. Cir. 1985) ........................................................... 2163.02
Rasmussen v. SmithKline Beecham Corp., 413 F.3d 1318, 75 USPQ2d 1297 (Fed. Cir. 2005) ................................................ 2152.02(b)
Rasmussen, In re, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981) .... 706.03(o), 1504.04, 2163, 2163.01, 2163.04, 2163.05, 2163.06
Ratny, In re, 24 USPQ2d 1713 (Comm’r Pat. 1992) ........................................................... 323
Ratti, In re, 270 F.2d 810, 123 USPQ 349 (CCPA 1959) ............................................... 2143.01
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LIST OF DECISIONS CITED
Ray v. Lehman, 55 F.3d 606, 34 USPQ2d 1786 (Fed. Cir. 1995) ....................................... 2734
Raytheon v. Roper, 724 F.2d 951, 220 USPQ 592 (Fed. Cir. 1983) ... 2107.02, 2164.08
RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 12 USPQ2d 1449 (Fed. Cir. 1989) .......................... 2133.03, 2133.03(b), 2133.03(e)(3)
Reading & Bates Construction Co. v. Baker Energy, 748 F.2d 645, 223 USPQ 1168 (Fed. Cir. 1984) ................................................ 2129
Rebstock v. Flouret, 191 USPQ 342 (Bd. Pat. Inter. 1975) ........................................... 2138.06
Reckitt & Colman Products Ltd., In re, 230 USPQ 369 (Comm’r Pat. & Tm. 1986) ...................................................................... 2755.01
Recreative Technologies, In re, 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996) ............................................. 2242, 2246, 2642, 2646
Red Cross Mfg. v. Toro Sales Co., 525 F.2d 1135, 188 USPQ 241 (7th Cir. 1975) ..... 2133.03(e)(1)
Reed v. Quigg, 110 F.R.D. 363, 230 USPQ 2 (D.D.C. 1986) ............................................... 2279
Reeves Bros., Inc. v. U.S. Laminating Corp., 282 F. Supp. 118, 157 USPQ 235 (E.D. N.Y. 1968) ..................................................... 901.05
Refac Int’l Ltd. v. Lotus Development Corp., 81 F.3d 1576, 38 USPQ2d 1665 (Fed. Cir. 1996) .................................................. 410
Refusal of Assignment Branch to Record Attorney's Lien, In re, 8 USPQ2d 1446 (Comm'r Pat. 1988) ............................................ 313
Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 43 USPQ2d 1398 (Fed. Cir. 1997) ..... 2111.03, 2161.01, 2163, 2163.02
Reid, In re, 179 F.2d 998, 84 USPQ 478 (CCPA 1950) ................................................. 716.07
Rekers, In re, 203 USPQ 1034 (Comm’r Pat. 1979) ...................................................... 804.03
Remark, Ex parte, 15 USPQ2d 1498 (Bd. Pat. App. & Inter. 1990) ..... 716.03, 716.03(b), 2144.08
Remington, Ex parte, 1905 C.D. 28, 114 O.G. 694 (Comm’r Pat. 1904) ..... 1503.01
Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 48 USPQ2d 1117 (Fed. Cir. 1998) .................................................. 804
Research Corp. Technologies v. Microsoft Corp., 677 F.3d 859, 97 USPQ2d 1274 (Fed. Cir. 2010) ................................................ 2106
Reuge, Ex parte, 115 USPQ 51 (Bd. Pat. App. & Inter. 1957) ..... 901.05, 901.05(b)
Reuter, In re, 651 F.2d 751, 210 USPQ 249 (CCPA 1981) ............................................... 1901.06
Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 105 USPQ2d 1727 (Fed. Cir. 2013) ...................................................................... 2675.01
Rey-Bellet v. Engelhardt, 493 F.2d 1380, 181 USPQ 453 (CCPA 1974) ..... 2107.02, 2138.05
Reynolds, In re, 443 F.2d 384, 170 USPQ 94 (CCPA 1971) ..................................... 2163.07(a)
Richardson v. Stanley Works Inc., 597 F.3d 1288, 93 USPQ2d 1937 (Fed. Cir. 2010) ...................................................................... 1504.02
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 9 USPQ2d 1913 (Fed. Cir. 1989) ........................................................................... 2131
Richardson-Vicks, Inc. v. The Upjohn Co., 122 F.3d 1476, 44 USPQ2d 1181 (Fed. Cir. 1997) .................................................. 716.01(d)
Richman, In re, 409 F.2d 269, 161 USPQ 359 (CCPA 1969) ........................................ 1412.02
Rieser v. Williams, 225 F.2d 419, 118 USPQ 96 (CCPA 1958) ..... 2138.06, 2307
Rijckaert, In re, 9 F.3d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993) ..... 2112, 2141.02, 2144.08
Rinehart, Ex parte, 10 USPQ2d 1719 (Bd. Pat. App. & Inter. 1985) .............................. 2404.01
Rinehart, In re, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ..... 2107.02, 2142, 2143.02, 2144.04
Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 66 USPQ2d 1331 (Fed. Cir. 2003) ..... 706.02, 2129, 2141.01, 2152.03
Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426, 178 USPQ 577 (9th Cir. 1973) ..... 2133.03(d), 2133.03(e)(1), 2133.03(e)(4)
Roberts, In re, 470 F.2d 1399, 176 USPQ 313 (CCPA 1973) ............................................. 2181
Robertson, In re, 169 F.3d 743, 49 USPQ2d 1949 (Fed. Cir. 1999) ..... 2114, 2163, 2163.07(a)
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Robins, In re, 429 F.2d 452, 166 USPQ 552 (CCPA 1970) ................................................... 2163
Roche Products v. Bolar Pharmaceuticals, 733 F.2d 858, 221 USPQ 937 (Fed. Cir. 1984) ............................................................... 2750
Rodime PLC v. Seagate Technology, Inc.,174 F.3d 1294, 50 USPQ2d 1429 (Fed. Cir. 1999) ............................................... 2181
Rohm & Haas Co. v. Crystal Chem.Co., 722 F.2d 1556, 200 USPQ 289 (Fed. Cir. 1983) .................................................................. 410
Rohm & Haas Co. v. Roberts Chem., Inc., 142 F. Supp. 499, 110 USPQ 93 (S.W. Va. 1956) .......................................................... 1403
Rose, In re, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) ............................................... 2144.04
Rosen, In re, 673 F.2d 388, 213 USPQ 347 (CCPA 1982) ..... 1503.01, 1504.03, 2141.01(a)
Rosenberg, Ex parte, 46 USPQ 393 (Bd. App. 1939) ....................................................... 1610
Rosenblum v. Hiroshima, 220 USPQ 383 (Comm’r Pat. 1983) .................................... 1205.02
Roslin Institute (Edinburgh), In re, 750 F.3d 1333, 110 USPQ2d 1668 (Fed. Cir. 2014) ................................................................. 2104, 2106
Rothermel, In re, 276 F.2d 393, 125 USPQ 328 (CCPA 1960) .......................................... 716.01
Rouffet, In re, 149 F.3d 1350, 47 USPQ2d 1453 (Fed. Cir. 1998) ................................. 1216.01
Rowand, In re, 526 F.2d 558, 187 USPQ 487 (CCPA 1975) ........................................ 1412.01
Rowe v. Dror, 112 F.3d 473, 42 USPQ2d 1550 (Fed. Cir. 1997) ........................ 2111.02, 2303
Rozbicki v. Chiang, 590 Fed.App’x 990, 996 (Fed. Cir. 2014) .................................... 2163.05
Rubin, Ex parte, 128 USPQ 440 (Bd. App. 1959) ........................................................... 2144.04
Rubinfield, In re, 270 F.2d 391, 123 USPQ 210 (CCPA 1959) ..... 1504.05 2920.05(b)
Ruff, In re, 256 F.2d 590, 118 USPQ 340 (CCPA 1958) ............................................... 2144.06
Ruiz v. A.B. Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004) ..... 2143.01, 2145
Ruscetta, In re, 255 F.2d 687, 118 USPQ 101 (CCPA 1958) ..... 211.05, 2004, 2152.02(b), 2217, 2218, 2258, 2617
Ruschig, In re, 343 F.2d 965, 145 USPQ 274 (CCPA 1965) ........................................ 2144.08
Ruschig, In re, 379 F.2d 990, 154 USPQ 118 (CCPA 1967) ............................. 2163, 2163.05
Ruskin, In re, 354 F.2d 395, 148 USPQ 221 (CCPA 1966) ............................................... 2107.01
Russell, In re, 239 F.2d 387, 112 USPQ 58 (CCPA 1956) ............................................... 1504.05
Russell, In re, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971) .................................... 706.03(w)
Rutan, In re, 231 USPQ 864 (Comm’r Pat. 1986) .................................................................. 150
Ruth, In re, 278 F.2d 729, 126 USPQ 155 (CCPA 1960) ............................................... 1412.03
Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) ..... 2144.07
Rydeen v. Quigg, 748 F. Supp 900, 16 USPQ2d 1876 (D.D.C. 1990) .......................... 2540
Ryko Manufacturing Co. v. Nu-Star, Inc., 950 F.2d 714, 21 USPQ2d 1053 (Fed. Cir. 1991) ..................................... 2141.03, 2144.08
S, In re Application of, 8 USPQ2d 1630 (Comm’r Pat. 1988) .................................. 711.03(c)
Sachs v. Wadsworth, 48 F.2d 928, 9 USPQ 252 (CCPA 1931) .......................................... 715.07
Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 44 USPQ2d 1103 (Fed. Cir. 1997) ............................................................... 2181
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1979) ........................... 716.01(a), 2141
Salazar v. Procter & Gamble Co., 414 F.3d 1342,1347,75USPQ2d1369,1373(Fed. Cir. 2005) .................................................... 1302.14
Salmon, In re, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983) ..... 1504.04, 1504.20
Salsbury, Ex parte, 38 USPQ 149 (Comm’r Pat. 1938) .................................................... 1504.04
Samour, In re, 571 F.2d 559, 197 USPQ 1 (CCPA 1978) ............................................... 2131.01
Sampson v. Ampex Corp., 463 F.2d 1042, 174 USPQ 417 (2d Cir. 1972) ..... 201.06(d)
Sampson v. Comm’r Pat., 195 USPQ 136 (D.D.C. 1976) .................................................. 1402
Sampson v. Dann, 466 F. Supp. 965, 201 USPQ 15 (D.D.C. 1978) .................................. 1308
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LIST OF DECISIONS CITED
Sanford, Ex parte, 1914 C.D. 69, 204 O.G. 1346 (Comm’r Pat. 1914) ........................... 1504.05
Sanofi-Synthelabo v. Apotex,Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008) ..... 2131.02
Sapp, In re, 324 F.2d 1021, 139 USPQ 552 (CCPA 1963) ............................................... 1504.03
Sarett, In re, 327 F.2d 1005, 140 USPQ 474 (CCPA 1964) ...................................................... 804
Sarkar, In re, 575 F.2d 870, 197 USPQ 788 (CCPA 1978) ...................................................... 724
Sasajima, Ex parte, 212 USPQ 103 (Bd. App. 1981) ................................................ 716.02(f)
Sasse, In re, 629 F.2d 675, 207 USPQ 107 (CCPA 1980) ........................ 716.07, 2121, 2121.02
Saunders, In re, 444 F.2d 599, 170 USPQ 213 (CCPA 1971) ..... 716.02(f), 2142, 2172
Scaltech, Inc. v. Retec/Tetra, L.L.C., 269 F.3d 1321, 60 USPQ2d 1687 (Fed. Cir. 2001) ....................................................... 2133.03(c)
Scarbrough, In re, 500 F.2d 560, 182 USPQ 298 (CCPA 1974) ..... 608.01(p), 2161.01, 2164.06(c), 2164.06(a)
Schaub, In re, 537 F.2d 509, 190 USPQ 324 (CCPA 1976) ................................................. 715.03
Schauman, In re, 572 F.2d 312, 197 USPQ 5 (CCPA 1978) ... 706.02(m), 2131.02, 2144.08
Schechter, In re, 205 F.2d 185, 98 USPQ 144 (CCPA 1953) ... 2144.08, 2144.09, 2173.05(i)
Scheiber, In re, 587 F.2d 59, 199 USPQ 782 (CCPA 1978) ................................. 211.05, 2163.03
Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) ..... 2141.02, 2144.04
Schering Corp. v. Amgen, Inc., 222 F.3d 1347, 55 USPQ2d 1650 (Fed. Cir. 2000) ...................................................................... 2163.07
Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 67 USPQ2d 1664 (Fed. Cir. 2003) ............................................. 2112, 2152.02(b)
Schering-Plough Corp., In re, 1 USPQ2d 1926 (Comm’r Pat. & Tm. 1986) ..... 2760
Schlittler, In re, 234 F.2d 882, 110 USPQ 304 (CCPA 1956) ........................................ 2128.02
Schnell, In re, 46 F.2d 203, 8 USPQ 19 (CCPA 1931) ............................................... 1504.01
Schneller, In re, 397 F.2d 350, 158 USPQ 210 (CCPA 1968) ..... 804, 804.01, 1504.06
Schoenwald, In re, 964 F.2d 1122, 22 USPQ2d 1671 (Fed. Cir. 1992) ..... 2122, 2152.02(b)
Schreiber, In re, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997) ..... 2111.02, 2112, 2114
Schulze, In re, 346 F.2d 600, 145 USPQ 716 (CCPA 1965) ..... 716.01(c), 2145, 2164.06(c)
Schuurs, In re, 218 USPQ 443 (Comm’r Pat. 1983) .................................................... 1481.03
SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed.Cir.2001) ............................................. 2111.01
Scott v. Brandenburger, 216 USPQ 326 (Bd. App. 1982) ....................................................... 2137
Scott v. Finney, 34 F.3d 1058, 32 USPQ2d 1115 (Fed. Cir. 1994) ..... 2107.01, 2107.03, 2138.05, 2164.05
Scott v. Koyama, 281 F.3d 1243, 61 USPQ2d 1856 (Fed. Cir. 2002) ..... 2138.06
Scragg, In re, 215 USPQ 715 (Comm’r Pat. 1982) ................................................. 2285, 2686.03
Scripps Clinic and Res. Found. v. Genentech, Inc., 927 F.2d 1565, 18 USPQ2d 1001 (Fed. Cir. 1991) ..... 2165.04
Scudder, Ex parte, 169 USPQ 814 (Bd.App. 1971) ................................................. 1402, 1412.04
Scully Signal Co. v. Electronics Corp. of America, 570 F.2d 355, 196 USPQ 657 (1st Cir. 1977) ............................................... 716.04
Seal-Flex, Inc. v. Athletic Track and Court Construction, 172 F.3d 836, 50 USPQ2d 1225 (Fed. Cir. 1999) ....................................... 2181
Searles, In re, 422 F.2d 431, 164 USPQ 623 (CCPA 1970) ............................................... 2132.01
Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984) ............................... 2173.05(b)
Seid, In re, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) ............................... 2112.01, 2144.04
Seiko Epson Corp. v. Nu-Kote Int’l, Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999) ............................................... 1504.01(c)
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Seiko Koko Kabushiki Kaisha, Ex parte, 225 USPQ 1260 (Bd. App. 1984) ..... 2258
Self, In re, 671 F.2d 1344, 213 USPQ 1 (CCPA 1982) ............................................... 2131.05
Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 54 USPQ2d 1001 (Fed. Cir. 2000) ..... 609.04(a), 609.04(b), 2004
Sernaker, In re, 702 F.2d 989, 217 USPQ 1 (Fed. Cir. 1983) ................................................ 2144
Shaffer Tool Works v. Joy Mfg. Co., 687 F. Supp 80, 167 USPQ 170 (S.D. Tex. 1970) ........................................................... 1701.01
Shaked v. Taniguchi, 21 USPQ2d 1289 (Bd. Pat. App. & Inter. 1991) .............................. 2686.02
Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985) ...................................... 2133.03(b)
Shepherd, In re, 172 F.2d 560, 80 USPQ 495 (CCPA 1949) .......................................... 716.07
Scherl, In re, 156 F.2d 72, 70 USPQ 204 (CCPA 1946) ............................................... 2144.05
Sherwood, In re, 613 F.2d 809, 204 USPQ 537 (CCPA 1980) ..... 608.01(h), 2161.01, 2165.04
Shindelar v. Holdeman, 628 F.2d 1337, 207 USPQ 112 (CCPA 1980) ............................. 2138.03
Shokal, In re, 242 F.2d 771, 113 USPQ 283 (CCPA 1957) ................................................. 715.03
Sichert, In re, 566 F.2d 1154, 196 USPQ 209 (CCPA 1977) ... 2107.01, 2107.02, 2107.03
Signtech USA Ltd. v. Vutek, Inc., 174 F.3d 1352, 50 USPQ2d 1372 (Fed. Cir. 1999) ........................................................................... 2181
Silvestri v. Grant, 496 F.2d 593, 181 USPQ 706 (CCPA 1974) ........................................ 2138.04
Simon, In re, 302 F.2d 737, 133 USPQ 524 (CCPA 1962) .................................................... 2174
Simpson, Ex parte, 218 USPQ 1020 (Bd. App. 1982) ............................ 706.03(d), 2173.05(u)
Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) .......................................................... 2144.07
Sitrick v. Dreamworks, LLC, 516 F.3d 993, 85 USPQ2d 1826 (Fed. Cir. 2008) ..... 2161.01
Sitz, In re, 331 F.2d 617, 141 USPQ 505 (CCPA 1964) .................................................... 2307
Sivaramakrishnan, In re, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982) ..... 2131.02
Sivertz, In re, 227 USPQ 255 (Comm’r Pat. 1985) ......................................................... 711.03(c)
Skil Corp. v. Lucerne Products Inc., 503
F.2d 745, 183 USPQ 396 (7th Cir. 1974) ................................................................. 2133.03(e)
Skil Corp. v. Rockwell Manufacturing Co., 358 F. Supp. 1257, 178 USPQ 562 (N.D. Ill. 1973) ............................................. 2133.03(e)(3)
Skrivan, In re, 427 F.2d 801, 166 USPQ 85 (CCPA 1970) ............................................... 2164.08
Skuballa, Ex parte, 12 USPQ2d 1570 (Bd. Pat. App. & Inter. 1989) .......................... 2173.05(c)
Sinex, In re, 309 F.2d 488, 135 USPQ 302 (CCPA 1962) .............................................. 2111.02
Slayter, In re, 276 F.2d 408, 125 USPQ 345 (CCPA 1960) .................................. 715.03, 2131.02
Slip Track Systems, Inc. v. Metal Lite, Inc., 159 F.3d 1337, 48 USPQ2d 1055 (Fed. Cir. 1998) .................................................... 1449.02
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx. 950 (Fed. Cir. 2014) ................................................................ 2106
Smernoff, Ex parte, 215 USPQ 545 (Bd. App. 1982) .................................................. 2137.01
Smith, In re, 458 F.2d 1389, 173 USPQ 679 (CCPA 1972) ..................................... 2163, 2163.05
Smith, In re, 714 F.2d 1127, 218 USPQ 976 (Fed. Cir. 1983) ..... 2133.03(a), 2133.03(e)
Smith, Ex parte, 83 USPQ2d 1509 (Bd. Pat. App. & Int. 2007) ............................................. 2143
Smith v. Diamond, 209 USPQ 1091 (D.D.C. 1981) ......................................................... 711.03(c)
Smith v. Hayashi, 209 USPQ 754 (Bd. of Pat. Inter. 1980) ........................................... 2144.06
Smith v. M & B Sales & Mfg., 13 USPQ2d 2002 (N.D. Cal. 1990) ............................ 1504.01(c)
Smith v. Mossinghoff, 671 F.2d 533, 213 USPQ 977 (D.C. Cir. 1982) ..... 711.03(c)
Smith v. Nichols, 88 U.S. 112 (1874) ..... 2144.05
Smith Davis Mfg. Co. v. Mellon, 58 F. 705 (8th Cir. 1893) .................................... 2133.03(e)(6)
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LIST OF DECISIONS CITED
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 74 USPQ2d 1398 (Fed. Cir. 2005) ................................................ 2112
Smyth, In re, 189 F.2d 982, 90 USPQ 106 (CCPA 1951) ................................................. 716.09
Smythe, In re, 480 F.2d 1376, 178 USPQ 279 (CCPA 1973) ..... 2163, 2163.05, 2163.07(a)
Sneed, In re, 710 F.2d 1544, 218 USPQ 385 (Fed. Cir. 1983) ...................................... 1445, 2145
Sobin, Ex parte, 139 USPQ 528 (Bd. App. 1962) ....................................................... 2173.05(t)
Soli, In re, 317 F.2d 941, 137 USPQ 797 (CCPA 1963) ................................ 2144.02, 2144.03
Soll, In re, 97 F.2d 623, 38 USPQ 189 (CCPA 1938) ............................................... 2164.03
Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 55 USPQ2d 1279 (Fed. Cir. 2000) ........................................................................... 2172
Soni, In re, 54 F.3d 746, 34 USPQ2d 1684 (Fed. Cir. 1995) ............................... 707.07(f), 2145
Sony Computer Entertainment America, Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va. 2006) ................................ 2240, 2640, 2686.04
Spada, In re, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Cir. 1990) .................................. 2112.01
Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 3 USPQ2d 1737 (Fed. Cir. 1987) ..... 608.01(h), 2161.01, 2164.01(b), 2165.02, 2165.04
Spencer, In re, 273 F.2d 181, 124 USPQ 175 (CCPA 1959) ........................................ 1449.02
Spiegel, Ex parte, 1919 C.D. 112, 268 O.G. 741 (Comm’r Pat. 1919) ............................ 1503.01
Spiller, In re, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974) ............................. 715.02, 715.03
Sponnoble, In re, 405 F.2d 578, 160 USPQ 237 (CCPA 1969) ........................................ 2141.02
SRI Int'l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 85 USPQ2d 1489 (Fed. Cir. 2008) ....................................................... 2152.02(e)
Staats, In re, 671 F.3d 1350, 101 USPQ2d 1930 (Fed. Cir. 2012) .................................. 1412.03
Staeger v. Commissioner, 189 USPQ 272 (D.D.C. 1976) ........................ 409.03(b), 602.08(b)
Staehelin v. Secher, 24 USPQ2d 1513 (Bd. Pat. App. & Inter. 1992) .............................. 2138.04
Stalego, Ex parte, 154 USPQ 52 (Bd. App. 1966) .................................... 901.01, 2127, 2136.02
Standard Oil Co. v. Montedison, S.p.A., 494 F. Supp 370, 206 USPQ 676 (D.Del. 1980) ........................................................... 2165.01
Standish, Ex parte, 10 USPQ2d 1454 (Bd. Pat. App. & Inter. 1988) ..... 716.03(a), 716.03(b), 2138.01
Stanley, Ex parte, 121 USPQ 621 (Bd. App. 1958) ................................................................ 2181
Star Fruits S.N.C. v. United States, 280 F.Supp.2d 512 (E.D. Va 2003) ..... 704.12(a), 2005
Star Fruits S.N.C. v. United States, 393 F.3d 1277, 73 USPQ2d 1409 (Fed. Cir. 2005) ........................................................................ 704.10
Starhome GMBH v. AT&T Mobility LLC, 743 F.3d 849, 109 USPQ2d 1885 (Fed. Cir. 2014) .................................................... 2111.01
State Contracting & Eng’g Corp. v. Condotte, Inc., 346 F.3d 1057, 68 USPQ2d 1481 (Fed. Cir. 2003) ..... 2131.05, 2141.01(a)
Steele, In re, 305 F.2d 859, 134 USPQ 292 (CCPA 1959) ................................ 2143.03, 2173.06
Steenbock, In re, 83 F.2d 912, 30 USPQ 45 (CCPA 1936) ................................................ 211.05
Steierman v. Connelly, 192 USPQ 433 (Bd. Pat. Int. 1975) ................................................... 2004
Steierman v. Connelly, 192 USPQ 446 (Bd. Pat. Int. 1976) ................................................... 2004
Steierman v. Connelly, 197 USPQ 288 (Comm’r Pat. 1976) .................................... 2138.03
Steigerwald, Ex parte, 131 USPQ 74 (Bd. App. 1961) ............................ 706.03(d), 2173.05(d)
Steinberg v. Seitz, 517 F.2d 1359, 186 USPQ 209 (CCPA 1975) ........................ 2133.03(c)
Stemniski, In re, 444 F.2d 581, 170 USPQ 343 (CCPA 1971) ......................... 2144.08, 2144.09
Stempel, In re, 241 F.2d 755, 113 USPQ 77 (CCPA 1957) ................................................. 715.03
Stencel, In re, 828 F.2d 751, 4 USPQ2d 1071 (Fed. Cir. 1987) .................................. 2111.02
Steppan, In re, 394 F.2d 1013, 156 USPQ 143 (CCPA 1967) ................................... 2173.05(o)
Stern, Ex parte, 13 USPQ2d 1379 (Bd. Pat. App. & Inter. 1987) ..................................... 2144.04
Stevens, Ex parte, 16 USPQ2d 1379 (Bd. Pat. App. & Inter. 1990) .............................. 2107.03
Stevens, In re, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949) .......................................... 1504.01(c)
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Stevens, In re, 212 F.2d 197, 101 USPQ 284 (CCPA 1954) ............................................... 2144.04
Stevenson v. International Trade Comm’n, 612 F.2d 546, 204 USPQ 276 (CCPA 1979) ....................................................... 2141.01(a)
Stewart Sys. v. Commissioner, 1 USPQ2d 1879 (E.D. Va. 1986) ....................................... 2258
Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 160 USPQ 177 (7th Cir. 1968) ............................... 201.06(d), 211.01(b)
Stoddard, In re, 213 USPQ 386 (Comm’r Pat. 1982) .......................................... 2285, 2686.03
Stored Value Solutions, Inc. v. Card Activation Technologies, 499 Fed.App’x 5, 13 (Fed. Cir. 2012) ....................................... 2163
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983) ..... 716.01(a), 2141, 2141.01(a), 2141.02, 2144.08
Strijland, Ex parte, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992) ..... 1503.01, 1504.01(a), 1504.04
Striker, In re, 182 USPQ 507 (Comm’r Pat. 1973) ....................................... 409.03(b), 602.08(b)
Strong v. General Electric Co., 434 F.2d 1042, 168 USPQ 8 (5th Cir. 1970) ..... 2012, 2016, 2133.03(b)
Stryker, In re, 435 F.2d 1340, 168 USPQ 372 (CCPA 1971) .......................................... 715.02
Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 784 F.2d 351, 228 USPQ 837 (Fed. Cir. 1986) ........................... 804.01
Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 42 USPQ2d 1674 (Fed. Cir. 1997) .......................... 211.05, 706.02(k)
STX LLC. v. Brine, 211 F.3d 588, 54 USPQ2d 1347 (Fed. Cir. 2000) ..... 2111.02, 2133.03(c)
Suh v. Hoefle, 23 USPQ2d 1321 (Bd. Pat. App. & Inter. 1992) ..................................... 2138.05
Suitco Surface, Inc., In re, 603 F.3d 1255, 1260 (Fed. Cir. 2010) ........................ 2111, 2111.01
Sun Studs v. ATA Equipment Leasing, Inc., 872 F.2d 978, 10 USPQ2d 1338 (Fed. Cir. 1989) ..................................... 2136.02, 2136.03
Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 67 USPQ2d 1438 (Fed. Cir. 2003) .................................................... 2111.01
Superguide Corp. v. Direct TV Enterprises, Inc., 358 F.3d 870, 69 USPQ2d 1865 (Fed. Cir. 2004) ........................................... 2111.01
Sus, In re, 306 F.2d 494, 134 USPQ 301(CCPA 1962) .............................. 2163, 2163.05
Susi, In re, 440 F.2d 442, 169 USPQ 423 (CCPA 1971) ..................................... 2123, 2144.08
Suska, In re, 589 F.2d 527, 200 USPQ 497 (CCPA 1979) ............................................... 2138.03
Swanson, In re, 540 F.3d 1368, 88 USPQ 2d 1196 (Fed. Cir. 2008) ..... 2242, 2642, 2686.04
Swartz, In re, 232 F.3d 862, 56 USPQ2d 1703 (Fed. Cir. 2000) ..... 2107.01, 2164.07
Sweet, In re, 136 F.2d 722, 58 USPQ 327 (CCPA 1943) ............................................... 1211.01
Swenson, In re, 132 F.2d 1020, 56 USPQ 372 (CCPA 1942) ........................................ 2144.05
Swet, In re, 145 F.2d 631, 172 USPQ 72 (CCPA 1971) ............................................... 1504.06
Swinehart, In re, 439 F.2d 210, 169 USPQ 226 (CCPA 1971) ..... 2114, 2161.01, 2173.01, 2173.05(g), 2183
Switzer, In re, 166 F.2d 827, 77 USPQ 156 (CCPA 1948) ................................................. 901.02
Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) ..... 1403, 1412.03, 2304.02(c)
Sylgab Steel & Wire Corp. v. Imoco-Gateway Corp., 357 F. Supp 657, 178 USPQ 22 (N.D. Ill. 1973) ..... 2165.01
Symbol Tech. Inc. v. Lemelson Med., Educ., & Research Found., 422 F.3d 1378, 76 USPQ2d 1354 (Fed. Cir. 2005) ........................................................................... 2190
Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991) .................................... 804.01, 2121.01, 2158
Szwarc, In re, 319 F.2d 277, 138 USPQ 208 (CCPA 1963) ........................................... 706.03(w)
Tabuchi v. Nubel, 559 F.2d 1183, 194 USPQ 521 (CCPA 1977) ............................. 2404.02
Talbott, In re, 443 F.2d 1397, 170 USPQ 281 (CCPA 1971) ........................................ 2135.01
Tanaka, In re, 640 F.3d 1246, 98 USPQ2d 1331 (Fed. Cir. 2011) ............................. 1402, 1414
Tanczyn, In re, 347 F.2d 830, 146 USPQ 298 (CCPA 1965) .......................................... 715.02
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LIST OF DECISIONS CITED
Tangsrud, In re, 184 USPQ 746 (Comm’r Pat. 1973) .................................................. 214, 215
Tansel, In re, 253 F.2d 241, 117 USPQ 188 (CCPA 1958) ........................................ 706.02(l)(2)
Tarczy-Hornoch, In re, 397 F.2d 856, 158 USPQ 141 (CCPA 1955) ........................ 2173.05(v)
Teague, In re, 254 F.2d 145, 117 USPQ 284 (CCPA 1958) .................................... 715.05, 804.02
Technicon Instruments Corp. v. Alpkem Corp., 664 F. Supp 1558, 2 USPQ2d 1729 (D. Ore 1986) ................................ 2164.05(b)
Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 109 USPQ2d 1599 (Fed. Cir. 2014) ........................................................... 2675.01
Tennant v. Hako Minuteman, 4 USPQ2d 1167 (N.D. Ill. 1987) .............................. 2293, 2693
Tenney, In re, 254 F.2d 619, 117 USPQ 348 (CCPA 1958) ............................................... 2128.01
Texas Instruments, Inc. v. Int’l Trade Comm’n, 988 F.2d 1165, 26 USPQ2d 1018 (Fed. Cir. 1993) .................................... 716.04
Theis, In re, 610 F.2d 786, 204 USPQ 188 (CCPA 1979) ..... 2133.03(b), 2133.03(e)(1), 2133.03(e)(3), 2133.03(e)(6)
The Gentry Gallery, Inc. v. The Berkline Corp., 134 F.3d 1473, 45 USPQ2d 1498 (Fed. Cir. 1998) ........................................... 2163.05
The NutraSweet Co., Ex parte, 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) ..... 716.02(a)
The Telephone Cases, 126 U.S. 1 (1888) ........................................................................... 2163
Theodor Groz & Sohne & Ernst Beckert Nadelfabrik KG v. Quigg, 10 USPQ2d 1787 (D.D.C. 1988) .. 711.03(c), 2265, 2272
Thomas D. Sykes v. Jon W. Dudas, 573 F.Supp2d 191, 89 USPQ2d 1423 (D.D.C. 2008) ................................................................ 2710
Thomson, Ex parte, 24 USPQ2d 1618 (Bd. Pat. App. & Inter. 1992) .............................. 2121.03
Thorington, In re, 418 F.2d 528, 163 USPQ 644 (CCPA 1969) ................................ 804, 1504.06
Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 101 USPQ2d 1457 (Fed. Cir. 2012) ..... 2111.01
Thorpe, In re, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985) ............................. 706.02(m), 2113
3M Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 107 USPQ2d 1717 (Fed. Cir. 2013) ........................................... 2111.01
Thumm, Ex parte, 132 USPQ 66 (Bd. App. 1961) ......................................................... 716.02(a)
Tiffin, In re, 443 F.2d 394, 170 USPQ 88 (CCPA 1971) ....................................... 716.04, 2142
Tiffin, In re, 448 F.2d 791, 171 USPQ 294 (CCPA 1971) ............................................ 716.03(a)
Tilghman v. Proctor, 102 U.S. 707 (1880) ........................................................................... 2106
Tillotson Ltd. v. Walbro Corp., 831 F.2d 1033, 4 USPQ2d 1450 (Fed. Cir. 1987) ...................................................................... 1412.03
Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) ..... 2112.01, 2131.01, 2131.03, 2144.05
Tol-O-Matic, Inc. v. Proma Produkt-Und Mktg. Gesellschaft m.b.H., 945 F.2d 1546, 20 USPQ2d 1332 (Fed. Cir. 1991) ...................................................................... 2107.02
Tomlinson, In re, 363 F.2d 928, 150 USPQ 623 (CCPA 1966) ........................................ 2112.02
Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321 (Fed. Cir. 1994) ............................................. 1504.02, 2133.03(e)(6)
Toro Co. v. Deere & Co., 355 F.3d 1313, 69 USPQ2d 1584 (Fed. Cir. 2004) ..... 2112
Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 53 USPQ2d 1065 (Fed. Cir. 1999) ................................................... 804, 2111.01
TorPharm., Inc. v. Ranbaxy Pharmaceuticals, 336 F.3d 1322, 67 USPQ2d 1511 (Fed. Cir. 2003) ..... 2116.01
Townsend, In re, 1913 C.D. 55 (Comm’r Pat. 1929) ...................................................... 720.05
Townsend v. Smith, 36 F.2d 292, 4 USPQ 269 (CCPA 1929) ........................................ 2138.04
TP Labs., Inc. v. Professional Positioners, Inc., 724 F.2d 965, 220 USPQ 577 (Fed. Cir. 1984) ................................................ 2133.03(a)
Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994) ..... 211.05, 2107.01, 2165.01
Translogic Technology Inc., In re, 504 F.3d 1249, 84 USPQ2d 1929 (Fed. Cir. 2007) .................................................. 2114, 2286, 2686.04
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Transmatic, Inc. v. Gulton Indus., Inc., 601 F.2d 904, 202 USPQ 559 (6th Cir. 1979) ...................................................................... 1504.06
Trans Texas Holdings Corp., In re, 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007) ........................................ 2259, 2286, 2659, 2686.04
Trimless Cabinets, In re, 128 USPQ 95 (Comm’r Pat. 1960) ........................................... 103
Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d 1829 (Fed. Cir. 1998) ..... 211.05, 2163, 2163.03, 2163.05
Tucker, Ex parte, 1901 C.D. 140, 47 O.G. 187 (Comm’r Pat. 1901) ............................. 1503.02
Tucker v. Naito, 188 USPQ 260 (Bd. Pat. Inter. 1975) .................................................. 2137.01
Tucker v. Natta, 171 USPQ 494 (Bd. Pat. Inter. 1971) .................................................. 2138.06
Tucker Aluminum Prods. v. Grossman, 312 F.2d 393, 136 USPQ 244 (9th Cir. 1963) ............................................................ 2133.03(e)(1)
Twin Disc, Inc. v. United States, 231 USPQ 417 (Cl. Ct. 1986) ....................................... 2131.05
Tytgat, Ex parte, 225 USPQ 907 (Bd. App. 1985) ........................................................... 2308.03
Ulead Systems, Inc. v. Lex Computer & Management Corp., 351 F.3d 1139, 69 USPQ2d 1097 (Fed. Cir. 2003) ..... 509.02
Ultramercial v. Hulu, 657 F.3d 1323, 100 USPQ2d 1140 (Fed. Cir. 2011) ........................ 2106
UMC Elecs. Co. v. United States, 816 F.2d 647, 2 USPQ2d 1465 (Fed. Cir. 1987) ................................... 2133.03(b), 2133.03(c), 2163
UnidynamicsCorp.v.AutomaticProd. Int’l, 157 F.3d 1311, 48 USPQ2d 1099 (Fed. Cir. 1998) ......................................................... 2181
Unimed, Inc. v. Quigg, 888 F.2d 826, 12 USPQ2d 1644 (Fed. Cir. 1989) ..... 2754.01
Union Carbide Corp. v. Borg-Warner Corp., 550 F.2d 355, 193 USPQ 1 (6th Cir. 1977) ................................................................ 2165
Union Oil of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 54 USPQ2d 1227 (Fed. Cir. 2000) ................................................... 2163.05
Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 57 USPQ2d 1293 (Fed. Cir. 2001) ............................. 2164.06(a)
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 5 USPQ2d 1434 (Fed. Cir. 1988) ........................................................... 2144.08
United States v. Adams, 383 U.S. 39, 148 USPQ 479 (1966) .. 716.01(b), 716.05, 2143.01, 2145
United States v. Morgan, 313 U.S. 409, 61 S. Ct. 999 (1941) ......................................... 1701.01
United States v. Telectronics, Inc., 857 F.2d 778, 8 USPQ2d 1217 (Fed. Cir. 1988) ....................................................... 2164.01, 2164.06
United States Indus. Chem., Inc. v. Carbide and Carbon Chem. Corp., 315 U.S. 668, 53 USPQ 6 (1942) ....................................... 1411.02
United States Gypsum Co. v. National Gypsum Co., 74 F3d 1209, 37 USPQ2d 1388 (Fed. Cir. 1996) ............................... 608.01(v)
University of Rochester v. G.D. Searle & Co., 358 F.3d 916, 69 USPQ2d 1886 (Fed. Cir. 2004) ................................................ 2163
Upsher-Smith Labs v. Pamlab, LLC, 412 F.3d 1319, 75 USPQ2d 1213 (Fed. Cir. 2005) ................................................. 2123, 2131.05
U.S. Industries v. Norton Co., 210 USPQ 94 (N.D. N.Y. 1980) ......................................... 2004
Ushakoff v. United States, 327 F.2d 669, 140 USPQ 341 (Ct. Cl. 1964) ..... 2133.03(e)(1)
Utschig, Ex parte, 156 USPQ 156 (Bd.App. 1966) ........................................................... 2137.01
Vaeck, In re, 947 F.2d 448, 20 USPQ2d 1438 (Fed. Cir. 1991) ..... 2107.01, 2144.08, 2164.01, 2164.01(c), 2164.03, 2164.06(b), 2164.08
Valmont Industries, Inc. v. Reinke Manufacturing Co., 983 F.2d 1039, 25 USPQ2d 1451 (Fed. Cir. 1993) ..... 2183, 2184, 2186
Vamco Machine and Tool, Inc., In re, 752 F.2d 1564, 224 USPQ 617 (Fed. Cir. 1985) ......................................................... 716.03(b)
Vandenberg v. Dairy Equipment Co., 740 F.2d 1560, 224 USPQ 195 (Fed. Cir. 1984) ............................................................. 716.06
Vander Wal, Ex parte, 109 USPQ 119, 1956 C.D. 11, 705 O.G. 5 (Bd. Pat. App. 1955) ................................................................... 608.04(a)
Van Esdonk, In re, 187 USPQ 671 (Comm’r Pat. 1975) ...................................... 216.01, 1481.03
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LIST OF DECISIONS CITED
Van Geuns, In re, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) ..... 707.07(f), 2145
Van Langenhoven, In re, 458 F.2d 132, 173 USPQ 426 (CCPA 1972) ..... 2004, 2135.01, 2152.02(b), 2217, 2258, 2617
Vanmoor v. Wal-Mart Stores, Inc ., 201 F.3d 1363, 53 USPQ2d 1377 (Fed. Cir. 2000) ...................................................... 2133.03(c)
Van Ornum, In re, 686 F.2d 937, 214 USPQ 761 (CCPA 1982) ..... 804, 804.02, 1504.06
Varga, Ex Parte, 189 USPQ 209 (Bd. App. 1973) ........................................................... 2012.01
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991) ..... 1504.20, 2152.02(b), 2161, 2161.01, 2163, 2163.02, 2164, 2181
Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 114 USPQ2d 1349 (Fed. Cir. 2015) ................................................ 2161
Vectra Fitness Inc. v. TNWK Corp., 162 F.3d 1379, 49 USPQ2d 1144 (Fed. Cir. 1998) ........................................................... 1412.03
Venezia, In re, 530 F.2d 956, 189 USPQ 149 (CCPA 1976) ..... 2163, 2163.05, 2172.01, 2173.05(g)
Venner, In re, 262 F.2d 91, 120 USPQ 193 (CCPA 1958) ............................................... 2144.04
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 2 USPQ2d 1051 (Fed. Cir. 1987) ....................................... 2131
Vickers, In re, 141 F.2d 522, 61 USPQ 122 (CCPA 1944) ............................................... 2164.03
Vincent v. Mossinghoff, 230 USPQ 621 (D.D.C. 1985) ........................................... 711.03(c)
Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 39 USPQ2d 1573 (Fed. Cir. 1996) ........................................................... 2111.01
Vogel, In re, 422 F.2d 438, 164 USPQ 619 (CCPA 1970) ..... 804, 804.01, 804.02, 1504.06
Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 104 USPQ2d 1553 (Fed. Cir. 2012) ..... 2152.02(e)
Wadlinger, In re, 496 F.2d 1200, 181 USPQ 826 (CCPA 1974) ........................................ 1412.02
Wagenhorst, In re, 62 F.2d 831, 16 USPQ 126, 20 CCPA 829 (CCPA 1933) ..... 715.05
Wagner, In re, 371 F.2d 877, 152 USPQ 552 (CCPA 1967), ......................................... 716.02
Wahl v. Rexnord, Inc., 624 F.2d 1169, 206 USPQ 865 (3rd Cir. 1980) .......................... 1504.06
Waite, In re, 168 F.2d 104, 77 USPQ 586 (CCPA 1948) ............................................... 2144.05
Wakefield, In re, 422 F.2d 897, 164 USPQ 636 (CCPA 1970) ..... 715.02, 2173.05(i)
Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 31 USPQ2d 1855 (Fed. Cir. 1994) ........................................ 706.03(o)
Walsdorf v. Commissioner, 229 USPQ 559 (D.D.C. 1986) ............................................. 1216.02
Walter, In re, 618 F.2d 758, 205 USPQ 397 (CCPA 1980) .......................................... 2183, 2184
Wands, In re, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) ..... 706.03(a), 706.03(b),2161.01,2164.01,2164.01(a), 2164.06, 2164.06(b)
Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 26 USPQ2d 1767 (Fed. Cir. 1993) ......................... 2164.01, 2163, 2164.06, 2164.06(b)
Ward, In re, 236 F.2d 428, 111 USPQ 101 (CCPA 1956) .................................... 715.05, 804.02
Warner, In re, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967) ............................................. 2142
Warner-Jenkinsen Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) ..... 2144.05, 2183, 2184, 2186
Water Technologies Corp. v. Calco Ltd., 850 F.2d 660, 7 USPQ2d 1097 (Fed. Cir. 1988) ........................................................... 2111.03
Watkinson, In re, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990) ..... 1201, 1412.01, 1457
Watson, In re, 517 F.2d 465, 186 USPQ 11 (CCPA 1975) ................................ 2107.01, 2107.03
Watson v. Allen, 254 F.2d 342, 117 USPQ 68 (D.C. Cir. 1958) ..... 2133.03(e)(3), 2133.03(e)(7)
Watts v. XL Systems, Inc., 232 F.3d 877, 56 USPQ2d 1836 (Fed. Cir. 2000) ..... 2181
Waymouth, In re, 499 F.2d 1273, 182 USPQ 290 (CCPA 1974) .......................................... 716.02
Weatherchem Corp. v. J.L. Clark, Inc., 163 F.3d 1326, 49 USPQ2d 1001 (Fed. Cir. 1998) .................................. 2133.03(b), 2133.03(c)
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Webb, Ex parte, 30 USPQ2d 1064 (Bd. Pat. App. & Inter. 1993) ................................ 1504.01(c)
Webb, In re, 916 F.2d 1553, 16 USPQ2d 1433 (Fed. Cir. 1990) .............................. 1504.01(c)
Weber, In re, 405 F.2d 1403, 160 USPQ 549 (CCPA 1969) .......................................... 716.07
Weber, In re, 580 F.2d 455, 198 USPQ 328 (CCPA 1978) ................................................. 803.02
Wells, In re, 56 F.2d 674 (CCPA 1932) ..... 2144.05
Wells v. Fremont, 177 USPQ 22 (Bd. Pat. Inter. 1972) .................................................. 2138.05
Wende v. Horine, 225 F. 501 (7th Cir. 1915) ................................................................. 2133.03(b)
Wertheim, In re, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) ..... 706.03(o), 1302.01, 2144.05, 2163, 2163.03, 2163.04, 2163.05
Wertheim, In re, 646 F.2d 527, 209 USPQ 554 (CCPA 1981) ..................................... 706.03(o)
Western Elec. Co. v. Piezo Technology, Inc., 860 F.2d 428, 8 USPQ2d 1853 (Fed. Cir 1988) ..................................................... 1701.01
Wetmore v. Quick, 536 F.2d 937, 190 USPQ 223 (CCPA 1976) ............................. 2138.05
Wetterau, In re, 356 F.2d 556, 148 USPQ 499 (CCPA 1966) ............................................... 804
White, Ex parte, 759 O.G. 783 (Bd. App. 1958) ....................................................... 2173.05(o)
White, In re, 405 F.2d 904, 160 USPQ 417 (CCPA 1969) ...................................................... 804
White Consol. Indus. v. Vega Servo-Control, Inc., 713 F.2d 788, 218 USPQ 961 (Fed. Cir. 1983) ..... 608.01(p), 2161.01, 2164.06(c)
Whitelaw, Ex parte, 1915 C.D. 18, 219 O.G. 1237 (Comm’r Pat. 1914) ..... 2173.05(n)
Whittle, In re, 454 F.2d 1193, 172 USPQ 535 (CCPA 1972) ........................................ 2136.05
Wiechert, In re, 370 F.2d 927, 152 USPQ 247 (CCPA 1967) ........................................ 2144.09
Wiesner v. Weigert, 666 F.2d 582, 212 USPQ 721 (CCPA 1981) ............................. 2138.05
Wiggins, In re, 488 F.2d 538, 179 USPQ 421 (CCPA 1973) ... 2121.02, 2131.04, 2173.02, 2173.05(b)
Wikdahl, Ex parte, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989) ..... 1412.02, 1412.03, 2258
Wilder, In re, 563 F.2d 457, 195 USPQ 426 (CCPA 1977) ..... 2144.08, 2144.09, 2163
Wilder, In re, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984) ..... 1402, 1414, 2163.05
Wilkinson, In re, 304 F.2d 673, 134 USPQ 171 (CCPA 1962) .......................................... 715.07
Williams, In re, 36 F.2d 436 (CCPA 1929) ...................................................................... 2144.05
Williamson v. Citrix Online, 792 F.3d 1339, 115 USPQ2d 1105 (Fed. Cir. 2015) ..... 2144.05, 2181
Willingham, In re, 282 F.2d 353, 127 USPQ 211 (CCPA 1960) ......................... 1302.04, 1412.02
Wilson, In re, 311 F.2d 266, 135 USPQ 442 (CCPA 1962) .................................................... 2124
Wilson, In re, 424 F.2d 1382, 165 USPQ 494, (CCPA 1970) ........................ 2143.03, 2173.06
Winkhaus, In re, 527 F.2d 637, 188 USPQ 129 (CCPA 1975) ................................... 2173.05(q)
Winter v. Fujita, 53 USPQ2d 1234 (Bd. Pat. App. & Inter. 1999) .......................................... 2203
Winkler v. Ladd, 221 F. Supp. 550, 138 USPQ 666 (D.D.C. 1963) ......................... 711.03(c)
Wise, In re, 340 F.2d 982, 144 USPQ 354 (CCPA 1965) .......................................... 1504.01(d)
Wiseman, In re, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) ..... 2141.02, 2145, 2164.06(c)
W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983) .... 2132, 2133.03(a), 2133.03(c), 2141.01, 2141.02, 2144.08, 2164.08, 2165.04, 2173.05(b)
WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 51 USPQ2d 1385 (Fed. Cir. 1999) ......................................................... 2181
Wolfensperger, In re, 302 F.2d 950, 133 USPQ 537 (CCPA 1962) ..... 2163, 2181
Wooddy, In re, 331 F.2d 636, 141 USPQ 518 (CCPA 1964) ........................................ 2107.03
Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 47 USPQ2d 1363 (Fed. Cir. 1998) ................................................ 2152.02(c)
Woodruff, In re, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) .................................. 2144.05
Wright, 1876 C.D. 217, 10 O.G. 587 (Comm’r Pat. 1876) .................................... 1410.01
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LIST OF DECISIONS CITED
Wright, In re, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977) ..... 707.07(f), 2125, 2145
Wright, In re, 866 F.2d 422, 9 USPQ2d 1649 (Fed. Cir. 1989) ........................ 2163, 2163.03
Wright, In re, 999 F.2d 1557, 27 USPQ2d 1510 (Fed. Cir. 1993) ..... 2107.01, 2161.01, 2164.03, 2164.01(a), 2164.04, 2164.05(a), 2164.06(b), 2164.08
Wu, Ex parte, 10 USPQ 2031 (Bd. Pat.App. & Inter. 1989) ..... 706.03(d), 2144.04, 2173.05(h)
Wu v. Jucker, 167 USPQ 467 (Bd. Pat. Inter. 1968) ................................... 2138.05, 2138.06
Wyer, In re, 655 F.2d 221, 210 USPQ 790 (CCPA 1981) ............................. 901.05, 2127, 2128
Wyeth v. Kappos, 591 F. 3d 1364, 93 USPQ2d 1257 (Fed. Cir. 2010) ........................ 2731
Wyeth Holdings Corp. v. Sebelius, 603 F.3d 1291, 95 USPQ2d 1233 (Fed. Cir. 2010) ........................................................................... 2757
Xiao, In re, 462 Fed. Appx. 947 (Fed. Cir. 2011) ........................................................... 2112.01
Yale, In re, 434 F.2d 66, 168 USPQ 46 (CCPA 1970) ................................................. 716.07
Yamaguchi, Ex parte, 61 USPQ2d 1043 (Bd. Pat. App. & Inter. 2001) ..... 1412.02
Yamamoto, In re, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984) .... 2111, 2173.02, 2258
Yamazaki, In re, 702 F.3d 1327, 104 USPQ2d 2024 (Fed. Cir. 2012) ........................ 1490
Yardley, In re, 493 F.2d 1389, 181 USPQ 331 (CCPA 1974) .............................. 1504.03, 1512
Yarn Processing Patent Validity Litigation, 183 USPQ 65 (5th Cir. 1974) ..... 2128.01
York Products, Inc. v. Central Tractor Farm & Family Center, 99 F.3d 1568, 40 USPQ2d 1619 (Fed. Cir. 1996) ........................ 2181
Yoshino, Ex parte, 227 USPQ 52 (Bd. Pat. App. & Inter. 1985) ..................................... 2141.01
Youman, In re, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012) .................................. 1412.02
Young, In re, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) .................................................... 2115
Young, In re, 927 F.2d 588, 18 USPQ2d 1089 (Fed. Cir. 1991) .................................. 2143.01
Young v. Dworkin, 489 F.2d 1277, 180 USPQ 388 (CCPA 1974) ............................. 2138.03
Yuasa Battery v. Comm’r, 3 USPQ2d 1143 (D.D.C. 1987) .................................................. 2279
Zahn, In re, 617 F.2d 261, 204 USPQ 988 (CCPA 1980) ..... 1502, 1503.02, 1504.04
Zechnall, Ex parte, 194 USPQ 461 (Bd. App. 1973) .............................................. 2164.05(b)
Zenith Labs., Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 30 USPQ2d 1285 (Fed. Cir. 1996) .......................................... 1302.14
Zenitz, In re, 333 F.2d 924, 142 USPQ 158 (CCPA 1964) ............................................. 716.02(f)
Zickendraht, In re, 319 F.2d 225, 138 USPQ 22 (CCPA 1963) ..... 804, 804.03, 1504.06
Ziegler, In re, 443 F.2d 1211, 170 USPQ 129 (CCPA 1971) ..... 804.01, 809.03, 821.04, 821.04(a), 821.04(b)
Ziegler, In re, 992 F.2d 1197, 26 USPQ2d 1600 (Fed. Cir. 1993) ..... 2103, 2107.01, 2107.02, 2163, 2163.03
Zimmerley, Ex parte, 153 USPQ 367 (Bd. App. 1966) ....................................................... 2181
Zletz, In re, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989) ... 715, 2111, 2111.01, 2111.03, 2138, 2171, 2173.02, 2173.05(a), 2181, 2286, 2686.04
Zurko, In re, 258 F.3d 1379, 59 USPQ2d 1693 (Fed. Cir. 2001) .................................. 2144.03
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MANUAL OF PATENT EXAMINING PROCEDURE
Appendix L Patent Laws
United States Code Title 35 - Patents
PART I — UNITED STATES PATENT AND TRADEMARK OFFICE
CHAPTER 1 — ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS
Sec.
1 Establishment.
2 Powers and duties.
3 Officers and employees.
4 Restrictions on officers and employees as to interest in patents.
5 Patent and Trademark Office Public Advisory Committees.
6 Patent Trial and Appeal Board.
6 (pre-AIA) Board of Patent Appeals and Interferences.
7 Library.
8 Classification of patents.
9 Certified copies of records.
10 Publications.
11 Exchange of copies of patents and applications with foreign countries.
12 Copies of patents and applications for public libraries.
13 Annual report to Congress.
CHAPTER 2 — PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE
21 Filing date and day for taking action.
22 Printing of papers filed.
23 Testimony in Patent and Trademark Office cases.
24 Subpoenas, witnesses.
25 Declaration in lieu of oath.
26 Effect of defective execution.
27 Revival of applications; reinstatement of reexamination proceedings.
CHAPTER 3 — PRACTICE BEFORE PATENT AND TRADEMARK OFFICE
31 [Repealed]
32 Suspension or exclusion from practice.
33 Unauthorized representation as practitioner.
CHAPTER 4 — PATENT FEES; FUNDING; SEARCH SYSTEMS
41 Patent fees; patent and trademark search systems.
42 Patent and Trademark Office funding.
PART II — PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 10 — PATENTABILITY OF INVENTIONS
100 (note) AIA First inventor to file provisions.
100 Definitions
100 (pre-AIA) Definitions.
101 Inventions patentable.
102 Conditions for patentability; novelty.
102 (pre-AIA) Conditions for patentability; novelty and loss of right to patent.
103 Conditions for patentability; non-obvious subject matter.
103 (pre-AIA) Conditions for patentability; non-obvious subject matter.
104 [Repealed]
104 (pre-AIA) Invention made abroad.
105 Inventions in outer space.
CHAPTER 11 — APPLICATION FOR PATENT
111 Application.
111 (pre-PLT (AIA)) Application.
111 (pre-AIA) Application.
112 Specification.
112 (pre-AIA) Specification.
113 Drawings.
114 Models, specimens.
115 Inventor's oath or declaration.
115 (pre-AIA) Oath of applicant.
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116 Inventors.
116 (pre-AIA) Inventors.
117 Death or incapacity of inventor.
118 Filing by other than inventor.
118 (pre-AIA) Filing by other than inventor.
119 Benefit of earlier filing date; right of priority.
119 (pre-AIA) Benefit of earlier filing date; right of priority.
120 Benefit of earlier filing date in the United States.
120 (pre-AIA) Benefit of earlier filing date in the United States.
121 Divisional applications.
121 (pre-AIA) Divisional applications.
122 Confidential status of applications; publication of patent applications.
123 Micro entity defined.
CHAPTER 12 — EXAMINATION OF APPLICATION
131 Examination of application.
132 Notice of rejection; reexamination.
133 Time for prosecuting application.
134 Appeal to the Patent Trial and Appeal Board.
134 (transitional) Appeal to the Board of Patent Appeals and Interferences.
134 (pre-AIA) Appeal to the Board of Patent Appeals and Interferences.
135 Derivation proceedings.
135 (pre-AIA) Interferences.
CHAPTER 13 — REVIEW OF PATENT AND TRADEMARK OFFICE DECISION
141 Appeal to Court of Appeals for the Federal Circuit.
141 (pre-AIA) Appeal to Court of Appeals for the Federal Circuit.
142 Notice of appeal.
143 Proceedings on appeal.
143 (pre-AIA) Proceedings on appeal.
144 Decision on appeal.
145 Civil action to obtain patent.
145 (pre-AIA) Civil action to obtain patent.
146 Civil action in case of derivation proceeding.
146 (pre-AIA) Civil action in case of interference.
CHAPTER 14 — ISSUE OF PATENT
151 Issue of patent.
152 Issue of patent to assignee.
153 How issued.
154 Contents and term of patent; provisional rights.
154 (pre-AIA) Contents and term of patent; provisional rights.
155 [Repealed.]
155A [Repealed.]
156 Extension of patent term.
157 [Repealed.]
157 (pre-AIA) Statutory invention registration.
CHAPTER 15 — PLANT PATENTS
161 Patents for plants.
162 Description, claim.
163 Grant.
164 Assistance of the Department of Agriculture.
CHAPTER 16 — DESIGNS
171 Patents for designs.
172 Right of priority.
172 (pre-AIA) Right of priority.
173 Term of design patent.
CHAPTER 17 — SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN
FOREIGN COUNTRIES
181 Secrecy of certain inventions and withholding of patent.
182 Abandonment of invention for unauthorized disclosure.
183 Right to compensation.
184 Filing of application in foreign country.
184 (pre-AIA) Filing of application in foreign country.
185 Patent barred for filing without license.
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185 (pre-AIA) Patent barred for filing without license.
186 Penalty.
187 Nonapplicability to certain persons.
188 Rules and regulations, delegation of power.
CHAPTER 18 — PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL
ASSISTANCE
200 Policy and objective.
201 Definitions.
202 Disposition of rights.
202 (pre-AIA) Disposition of rights.
203 March-in rights.
204 Preference for United States industry.
205 Confidentiality.
206 Uniform clauses and regulations.
207 Domestic and foreign protection of federally owned inventions.
208 Regulations governing Federal licensing.
209 Licensing federally owned inventions.
210 Precedence of chapter.
211 Relationship to antitrust laws.
212 Disposition of rights in educational awards.
PART III — PATENTS AND PROTECTION OF PATENT RIGHTS
CHAPTER 25 — AMENDMENT AND CORRECTION OF PATENTS
251 Reissue of defective patents.
251 (pre-AIA) Reissue of defective patents.
252 Effect of reissue.
253 Disclaimer.
253 (pre-AIA) Disclaimer.
254 Certificate of correction of Patent and Trademark Office mistake.
255 Certificate of correction of applicant’s mistake.
256 Correction of named inventor.
256 (pre-AIA) Correction of named inventor.
257 Supplemental examinations to consider, reconsider, or correct information.
CHAPTER 26 — OWNERSHIP AND ASSIGNMENT
261 Ownership; assignment.
262 Joint owners.
CHAPTER 27 — GOVERNMENT INTERESTS IN PATENTS
266 [Repealed.]
267 Time for taking action in Government applications.
CHAPTER 28 — INFRINGEMENT OF PATENTS
271 Infringement of patent.
272 Temporary presence in the United States.
273 Defense to infringement based on prior commercial use.
CHAPTER 29 — REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER
ACTIONS
281 Remedy for infringement of patent.
282 Presumption of validity; defenses.
283 Injunction.
284 Damages.
285 Attorney fees.
286 Time limitation on damages.
287 Limitation on damages and other remedies; marking and notice.
288 Action for infringement of a patent containing an invalid claim.
288 (pre-AIA) Action for infringement of a patent containing an invalid claim.
289 Additional remedy for infringement of design patent.
290 Notice of patent suits.
291 Derived patents.
291 (pre-AIA) Interfering patents.
292 False marking.
293 Nonresident patentee; service and notice.
294 Voluntary arbitration.
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PATENT LAWS
295 Presumptions: Product made by patented process.
296 Liability of States, instrumentalities of States, and State officials for infringement of patents.
297 Improper and deceptive invention promotion.
298 Advice of counsel.
299 Joinder of parties.
CHAPTER 30 — PRIOR ART CITATIONS TO OFFICE AND EX PARTE REEXAMINATION OF
PATENTS
301 Citation of prior art and written statements.
302 Request for reexamination.
303 Determination of issue by Director.
304 Reexamination order by Director.
305 Conduct of reexamination proceedings.
305 (pre-AIA) Conduct of reexamination proceedings.
306 Appeal.
307 Certificate of patentability, unpatentability, and claim cancellation.
CHAPTER 31 — INTER PARTES REVIEW
311 (note) Inter partes review applicability provisions.
311 Inter partes review.
312 Petitions.
313 Preliminary response to petition.
314 Institution of inter partes review.
315 Relation to other proceedings or actions.
316 Conduct of inter partes review.
317 Settlement.
318 Decision of the Board.
319 Appeal.
CHAPTER 31 (pre-AIA) — OPTIONAL INTER PARTES REEXAMINATION PROCEDURES
311 (pre-AIA) Request for inter partes reexamination.
312 (transitional) Determination of issue by Director.
313 (transitional) Inter partes reexamination order by Director.
314 (pre-AIA) Conduct of inter partes reexamination proceedings.
315 (pre-AIA) Appeal.
316 (pre-AIA) Certificate of patentability, unpatentability, and claim cancellation.
317 (pre-AIA) Inter partes reexamination prohibited.
318 (pre-AIA) Stay of litigation.
CHAPTER 32 — POST-GRANT REVIEW
321 (note) Post-grant review applicability.
321 Post-grant review.
322 Petitions.
323 Preliminary response to petition.
324 Institution of post-grant review.
325 Relation to other proceedings or actions.
326 Conduct of post-grant review.
327 Settlement.
328 Decision of the Board.
329 Appeal.
PART IV — PATENT COOPERATION TREATY
CHAPTER 35 — DEFINITIONS
351 Definitions.
CHAPTER 36 — INTERNATIONAL STAGE
361 Receiving Office.
362 International Searching Authority and International Preliminary ExaminingAuthority.
363 International application designating the United States: Effect.
363 (pre-AIA) International application designating the United States: Effect.
364 International stage: Procedure.
365 Right of priority; benefit of the filing date of a prior application.
366 Withdrawn international application.
367 Actions of other authorities: Review.
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368 Secrecy of certain inventions; filing international applications in foreign countries.
CHAPTER 37 — NATIONAL STAGE
371 National stage: Commencement.
372 National stage: Requirements and procedure.
373 [Repealed]
374 Publication of international application: Effect.
374 (pre-AIA) Publication of international application: Effect.
375 Patent issued on international application: Effect.
375 (pre-AIA) Patent issued on international application: Effect.
376 Fees.
PART V — THE HAGUE AGREEMENT CONCERNING INTERNATIONAL
REGISTRATION OF INDUSTRIAL DESIGNS
CHAPTER 38 — INTERNATIONAL DESIGN APPLICATIONS
381 Definitions.
382 Filing international design applications.
383 International design application.
384 Filing date.
385 Effect of international design application.
386 Right of priority.
387 Relief from prescribed time limits.
388 Withdrawn or abandoned international design application.
389 Examination of international design application.
390 Publication of international design application.
PART — SELECT PROVISIONS OF TITLE 18, UNITED STATES CODE
CHAPTER —
18 U.S.C. 1001 Statements or entries generally.
18 U.S.C. 2071 Concealment, removal, or mutilation generally.
PART — SELECT UNCODIFIED AIA PROVISIONS
CHAPTER —
AIA § 14 Tax strategies deemed within the prior art.
AIA § 18 Transitional program for covered business method patents.
AIA § 33 Limitation on issuance of patents.
United States Code Title 35 - Patents
I
UNITED STATES PATENT AND TRADEMARK OFFICE
35 U.S.C. 1 Establishment.
(a) ESTABLISHMENT.— The United States Patent and Trademark Office is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the United States Patent and Trademark Office shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law. Those operations designed to grant and issue patents and those operations which are designed to facilitate the registration of trademarks shall be treated as separate operating units within the Office.
(b) OFFICES.— The United States Patent and Trademark Office shall maintain its principal office in the metropolitan Washington, D.C., area, for the service of process and papers and for the purpose of carrying out its functions. The United States Patent and Trademark Office shall be deemed, for purposes of venue in civil actions, to be a resident of the district in which its principal office is located, except where jurisdiction is otherwise provided by law. The United States Patent and Trademark Office may establish satellite offices in such other places in the United States as it considers necessary and appropriate in the conduct of its business.
(c) REFERENCE.— For purposes of this title, the United States Patent and Trademark Office shall also be referred to as the “Office” and the “Patent and Trademark Office”.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-572 (S. 1948 sec. 4711).)
35 U.S.C. 2 Powers and duties.
(a) IN GENERAL.— The United States Patent and Trademark Office, subject to the policy direction of the Secretary of Commerce—
(1) shall be responsible for the granting and issuing of patents and the registration of trademarks; and
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§ 2PATENT LAWS
(2) shall be responsible for disseminating to the public information with respect to patents and trademarks.
(b) SPECIFIC POWERS.— The Office—
(1) shall adopt and use a seal of the Office, which shall be judicially noticed and with which letters patent, certificates of trademark registrations, and papers issued by the Office shall be authenticated;
(2) may establish regulations, not inconsistent with law, which—
(A) shall govern the conduct of proceedings in the Office;
(B) shall be made in accordance with section 553 of title 5;
(C) shall facilitate and expedite the processing of patent applications, particularly those which can be filed, stored, processed, searched, and retrieved electronically, subject to the provisions of section 122 relating to the confidential status of applications;
(D) may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office;
(E) shall recognize the public interest in continuing to safeguard broad access to the United States patent system through the reduced fee structure for small entities under section 41(h(1);
(F) provide for the development of a performance-based process that includes quantitative and qualitative measures and standards for evaluating cost-effectiveness and is consistent with the principles of impartiality and competitiveness; and
(G) may, subject to any conditions prescribed by the Director and at the request of the patent applicant, provide for prioritization of examination of applications for products, processes, or technologies that are important to the national economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization, notwithstanding section 41 or any other provision of law;
(3) may acquire, construct, purchase, lease, hold, manage, operate, improve, alter, and renovate any real, personal, or mixed property, or any interest therein, as it considers necessary to carry out its functions;
(4)(A) may make such purchases, contracts for the construction, or management and operation of facilities, and contracts for supplies or services, without regard to the provisions of subtitle I and chapter 33 of title 40, division C (except sections 3302, 3501(b), 3509, 3906, 4710, and 4711) of subtitle I of title 41, and the McKinney-Vento Homeless Assistance Act (42 U.S.C. 11301 et seq.);
(B) may enter into and perform such purchases and contracts for printing services, including the process of composition, platemaking, presswork, silk screen processes, binding, microform, and the products of such processes, as it considers necessary to carry out the functions of the Office, without regard to sections 501 through 517 and 1101 through 1123 of title 44;
(5) may use, with their consent, services, equipment, personnel, and facilities of other departments, agencies, and instrumentalities of the Federal Government, on a reimbursable basis, and cooperate with such other departments, agencies, and instrumentalities in the establishment and use of services, equipment, and facilities of the Office;
(6) may, when the Director determines that it is practicable, efficient, and cost-effective to do so, use, with the consent of the United States and the agency, instrumentality, Patent and Trademark Office, or international organization concerned, the services, records, facilities, or personnel of any State or local government agency or instrumentality or foreign patent and trademark office or international organization to perform functions on its behalf;
(7) may retain and use all of its revenues and receipts, including revenues from the sale, lease, or disposal of any real, personal, or mixed property, or any interest therein, of the Office;
(8) shall advise the President, through the Secretary of Commerce, on national and certain international intellectual property policy issues;
(9) shall advise Federal departments and agencies on matters of intellectual property policy in the United States and intellectual property protection in other countries;
(10) shall provide guidance, as appropriate, with respect to proposals by agencies to assist foreign governments and international intergovernmental organizations on matters of intellectual property protection;
(11) may conduct programs, studies, or exchanges of items or services regarding domestic and international intellectual property law and the effectiveness of intellectual property protection domestically and throughout the world, and the Office is authorized to expend funds to cover the subsistence expenses and travel-related expenses, including per diem, lodging costs, and transportation costs, of persons attending such programs who are not Federal employees;
(12)
(A) shall advise the Secretary of Commerce on programs and studies relating to intellectual property policy that are conducted, or authorized to be conducted, cooperatively with foreign intellectual property offices and international intergovernmental organizations; and
(B) may conduct programs and studies described in subparagraph (A); and
(13)
(A) in coordination with the Department of State, may conduct programs and studies cooperatively with foreign
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MANUAL OF PATENT EXAMINING PROCEDURE§ 2
intellectual property offices and international intergovernmental organizations; and
(B) with the concurrence of the Secretary of State, may authorize the transfer of not to exceed $100,000 in any year to the Department of State for the purpose of making special payments to international intergovernmental organizations for studies and programs for advancing international cooperation concerning patents, trademarks, and other matters.
(c) CLARIFICATION OF SPECIFIC POWERS.—
(1) The special payments under subsection (b)(13)(B) shall be in addition to any other payments or contributions to international organizations described in subsection (b)(13)(B) and shall not be subject to any limitations imposed by law on the amounts of such other payments or contributions by the United States Government.
(2) Nothing in subsection (b) shall derogate from the duties of the Secretary of State or from the duties of the United States Trade Representative as set forth in section 141 of the Trade Act of 1974 (19 U.S.C. 2171).
(3) Nothing in subsection (b) shall derogate from the duties and functions of the Register of Copyrights or otherwise alter current authorities relating to copyright matters.
(4) In exercising the Director’s powers under paragraphs (3) and (4)(A) of subsection (b), the Director shall consult with the Administrator of General Services.
(5) In exercising the Director’s powers and duties under this section, the Director shall consult with the Register of Copyrights on all copyright and related matters.
(d) CONSTRUCTION.— Nothing in this section shall be construed to nullify, void, cancel, or interrupt any pending request-for-proposal let or contract issued by the General Services Administration for the specific purpose of relocating or leasing space to the United States Patent and Trademark Office.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-572 (S. 1948 sec. 4712); subsection (b)(4)(A) amended Oct. 30, 2000, Public Law 106-400, sec. 2, 114 Stat. 1675; subsections (b)(2)(B) and (b)(4)(B) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904; subsection (b)(4)(A) amended Dec. 15, 2003, Public Law 108-178, sec. 4(g), 117 Stat. 2641; subsection (b)(4)(A) amended January 4, 2011, Public Law 111-350, sec. 5(i)(1), 124 Stat. 3849; subsection (b)(2)(G) added and subsections (b)(2)(E) and (b)(11) amended Sept. 16, 2011, Public Law 112-29, secs. 20(j), 21(a), and 25 (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 3 Officers and employees.
(a) UNDER SECRETARY AND DIRECTOR.—
(1) IN GENERAL.— The powers and duties of the United States Patent and Trademark Office shall be vested in an Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (in
this title referred to as the “Director”), who shall be a citizen of the United States and who shall be appointed by the President, by and with the advice and consent of the Senate. The Director shall be a person who has a professional background and experience in patent or trademark law.
(2) DUTIES.—
(A) IN GENERAL.— The Director shall be responsible for providing policy direction and management supervision for the Office and for the issuance of patents and the registration of trademarks. The Director shall perform these duties in a fair, impartial, and equitable manner.
(B) CONSULTING WITH THE PUBLIC ADVISORY COMMITTEES.— The Director shall consult with the Patent Public Advisory Committee established in section 5 on a regular basis on matters relating to the patent operations of the Office, shall consult with the Trademark Public Advisory Committee established in section 5 on a regular basis on matters relating to the trademark operations of the Office, and shall consult with the respective Public Advisory Committee before submitting budgetary proposals to the Office of Management and Budget or changing or proposing to change patent or trademark user fees or patent or trademark regulations which are subject to the requirement to provide notice and opportunity for public comment under section 553 of title 5, as the case may be.
(3) OATH.— The Director shall, before taking office, take an oath to discharge faithfully the duties of the Office.
(4) REMOVAL.— The Director may be removed from office by the President. The President shall provide notification of any such removal to both Houses of Congress.
(b) OFFICERS AND EMPLOYEES OF THE OFFICE.—
(1) DEPUTY UNDER SECRETARY AND DEPUTY DIRECTOR.— The Secretary of Commerce, upon nomination by the Director, shall appoint a Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office who shall be vested with the authority to act in the capacity of the Director in the event of the absence or incapacity of the Director. The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law.
(2) COMMISSIONERS.—
(A) APPOINTMENT AND DUTIES.— The Secretary of Commerce shall appoint a Commissioner for Patents and a Commissioner for Trademarks, without regard to chapter 33, 51, or 53 of title 5. The Commissioner for Patents shall be a citizen of the United States with demonstrated management ability and professional background and experience in patent law and serve for a term of 5 years. The Commissioner for Trademarks shall be a citizen of the United States with demonstrated management ability and professional background and experience in trademark law and serve for a term of 5 years. The Commissioner for Patents and the Commissioner for Trademarks shall serve as the chief operating officers for the operations of the Office relating to patents and trademarks,
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§ 3PATENT LAWS
respectively, and shall be responsible for the management and direction of all aspects of the activities of the Office that affect the administration of patent and trademark operations, respectively. The Secretary may reappoint a Commissioner to subsequent terms of 5 years as long as the performance of the Commissioner as set forth in the performance agreement in subparagraph (B) is satisfactory.
(B) SALARY AND PERFORMANCE AGREEMENT.— The Commissioners shall be paid an annual rate of basic pay not to exceed the maximum rate of basic pay for the Senior Executive Service established under section 5382 of title 5, including any applicable locality-based comparability payment that may be authorized under section 5304(h)(2)(C) of title 5. The compensation of the Commissioners shall be considered, for purposes of section 207(c)(2)(A) of title 18, to be the equivalent of that described under clause (ii) of section 207(c)(2)(A) of title 18. In addition, the Commissioners may receive a bonus in an amount of up to, but not in excess of, 50 percent of the Commissioners’ annual rate of basic pay, based upon an evaluation by the Secretary of Commerce, acting through the Director, of the Commissioners’ performance as defined in an annual performance agreement between the Commissioners and the Secretary. The annual performance agreements shall incorporate measurable organization and individual goals in key operational areas as delineated in an annual performance plan agreed to by the Commissioners and the Secretary. Payment of a bonus under this subparagraph may be made to the Commissioners only to the extent that such payment does not cause the Commissioners’ total aggregate compensation in a calendar year to equal or exceed the amount of the salary of the Vice President under section 104 of title 3.
(C) REMOVAL.— The Commissioners may be removed from office by the Secretary for misconduct or nonsatisfactory performance under the performance agreement described in subparagraph (B), without regard to the provisions of title 5. The Secretary shall provide notification of any such removal to both Houses of Congress.
(3) OTHER OFFICERS AND EMPLOYEES.— The Director shall—
(A) appoint such officers, employees (including attorneys), and agents of the Office as the Director considers necessary to carry out the functions of the Office; and
(B) define the title, authority, and duties of such officers and employees and delegate to them such of the powers vested in the Office as the Director may determine.
The Office shall not be subject to any administratively or statutorily imposed limitation on positions or personnel, and no positions or personnel of the Office shall be taken into account for purposes of applying any such limitation.
(4) TRAINING OF EXAMINERS.— The Office shall submit to the Congress a proposal to provide an incentive program to retain as employees patent and trademark examiners of the primary examiner grade or higher who are eligible for retirement, for the sole purpose of training patent and trademark examiners.
(5) NATIONAL SECURITY POSITIONS.— The Director, in consultation with the Director of the Office of Personnel Management, shall maintain a program for identifying national security positions and providing for appropriate security clearances, in order to maintain the secrecy of certain inventions, as described in section 181, and to prevent disclosure of sensitive and strategic information in the interest of national security.
(6) ADMINISTRATIVE PATENT JUDGES AND ADMINISTRATIVE TRADEMARK JUDGES.—The Director may fix the rate of basic pay for the administrative patent judges appointed pursuant to section 6 and the administrative trademark judges appointed pursuant to section 17 of the Trademark Act of 1946 (15 U.S.C. 1067) at not greater than the rate of basic pay payable for level III of the Executive Schedule under section 5314 of title 5. The payment of a rate of basic pay under this paragraph shall not be subject to the pay limitation under section 5306(e) or 5373 of title 5.
(c) CONTINUED APPLICABILITY OF TITLE 5. — Officers and employees of the Office shall be subject to the provisions of title 5, relating to Federal employees.
(d) ADOPTION OF EXISTING LABOR AGREEMENTS.— The Office shall adopt all labor agreements which are in effect, as of the day before the effective date of the Patent and Trademark Office Efficiency Act, with respect to such Office (as then in effect).
(e) CARRYOVER OF PERSONNEL.—
(1) FROM PTO.— Effective as of the effective date of the Patent and Trademark Office Efficiency Act, all officers and employees of the Patent and Trademark Office on the day before such effective date shall become officers and employees of the Office, without a break in service.
(2) OTHER PERSONNEL.— Any individual who, on the day before the effective date of the Patent and Trademark Office Efficiency Act, is an officer or employee of the Department of Commerce (other than an officer or employee under paragraph (1)) shall be transferred to the Office, as necessary to carry out the purposes of that Act, if—
(A) such individual serves in a position for which a major function is the performance of work reimbursed by the Patent and Trademark Office, as determined by the Secretary of Commerce;
(B) such individual serves in a position that performed work in support of the Patent and Trademark Office during at least half of the incumbent’s work time, as determined by the Secretary of Commerce; or
(C) such transfer would be in the interest of the Office, as determined by the Secretary of Commerce in consultation with the Director.
Any transfer under this paragraph shall be effective as of the same effective date as referred to in paragraph (1), and shall be made without a break in service.
(f) TRANSITION PROVISIONS.—
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(1) INTERIM APPOINTMENT OF DIRECTOR.— On or after the effective date of the Patent and Trademark Office Efficiency Act, the President shall appoint an individual to serve as the Director until the date on which a Director qualifies under subsection (a). The President shall not make more than one such appointment under this subsection.
(2) CONTINUATION IN OFFICE OF CERTAIN OFFICERS.—
(A) The individual serving as the Assistant Commissioner for Patents on the day before the effective date of the Patent and Trademark Office Efficiency Act may serve as the Commissioner for Patents until the date on which a Commissioner for Patents is appointed under subsection (b).
(B) The individual serving as the Assistant Commissioner for Trademarks on the day before the effective date of the Patent and Trademark Office Efficiency Act may serve as the Commissioner for Trademarks until the date on which a Commissioner for Trademarks is appointed under subsection (b).
(Amended Sept. 6, 1958, Public Law 85-933, sec. 1, 72 Stat. 1793; Sept. 23, 1959, Public Law 86-370, sec. 1(a), 73 Stat. 650; Aug. 14, 1964, Public Law 88-426, sec. 305(26), 78 Stat. 425; Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Jan. 2, 1975, Public Law 93-601, sec. 1, 88 Stat. 1956; Aug. 27, 1982, Public Law 97-247, sec. 4, 96 Stat. 319; Oct. 25, 1982, Public Law 97-366, sec. 4, 96 Stat. 1760; Nov. 8, 1984, Public Law 98-622, sec. 405, 98 Stat. 3392; Oct. 28, 1998, Public Law 105-304, sec. 401(a)(1), 112 Stat. 2887; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-575 (S. 1948 sec. 4713); subsections (a)(2)(B), (b)(2), and (c) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904; subsection (b)(6) added and (e)(2) amended Sept. 16, 2011, Public Law 112-29, secs. 20(i) and 21(b) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 4 Restrictions on officers and employees as to interest in patents.
Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)
35 U.S.C. 5 Patent and Trademark Office Public Advisory Committees.
(a) ESTABLISHMENT OF PUBLIC ADVISORY COMMITTEES.—
(1) APPOINTMENT.— The United States Patent and Trademark Office shall have a Patent Public Advisory Committee and a Trademark Public Advisory Committee, each
of which shall have nine voting members who shall be appointed by the Secretary of Commerce and serve at the pleasure of the Secretary of Commerce. In each year, 3 members shall be appointed to each Advisory Committee for 3-year terms that shall begin on December 1 of that year. Any vacancy on an Advisory Committee shall be filled within 90 days after it occurs. A new member who is appointed to fill a vacancy shall be appointed to serve for the remainder of the predecessor’s term.
(2) CHAIR.— The Secretary of Commerce, in consultation with the Director, shall designate a Chair and Vice Chair of each Advisory Committee from among the members appointed under paragraph (1). If the Chair resigns before the completion of his or her term, or is otherwise unable to exercise the functions of the Chair, the Vice Chair shall exercise the functions of the Chair.
(b) BASIS FOR APPOINTMENTS.— Members of each Advisory Committee—
(1) shall be citizens of the United States who shall be chosen so as to represent the interests of diverse users of the United States Patent and Trademark Office with respect to patents, in the case of the Patent Public Advisory Committee, and with respect to trademarks, in the case of the Trademark Public Advisory Committee;
(2) shall include members who represent small and large entity applicants located in the United States in proportion to the number of applications filed by such applicants, but in no case shall members who represent small entity patent applicants, including small business concerns, independent inventors, and nonprofit organizations, constitute less than 25 percent of the members of the Patent Public Advisory Committee, and such members shall include at least one independent inventor; and
(3) shall include individuals with substantial background and achievement in finance, management, labor relations, science, technology, and office automation. In addition to the voting members, each Advisory Committee shall include a representative of each labor organization recognized by the United States Patent and Trademark Office. Such representatives shall be nonvoting members of the Advisory Committee to which they are appointed.
(c) MEETINGS.— Each Advisory Committee shall meet at the call of the chair to consider an agenda set by the chair.
(d) DUTIES.— Each Advisory Committee shall—
(1) review the policies, goals, performance, budget, and user fees of the United States Patent and Trademark Office with respect to patents, in the case of the Patent Public Advisory Committee, and with respect to Trademarks, in the case of the Trademark Public Advisory Committee, and advise the Director on these matters;
(2) within 60 days after the end of each fiscal year—
(A) prepare an annual report on the matters referred to in paragraph (1);
(B) transmit the report to the Secretary of Commerce, the President, and the Committees on the Judiciary of the Senate and the House of Representatives; and
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(C) publish the report in the Official Gazette of the United States Patent and Trademark Office.
(e) COMPENSATION.— Each member of each Advisory Committee shall be compensated for each day (including travel time) during which such member is attending meetings or conferences of that Advisory Committee or otherwise engaged in the business of that Advisory Committee, at the rate which is the daily equivalent of the annual rate of basic pay in effect for level III of the Executive Schedule under section 5314 of title 5. While away from such member’s home or regular place of business such member shall be allowed travel expenses, including per diem in lieu of subsistence, as authorized by section 5703 of title 5.
(f) ACCESS TO INFORMATION.— Members of each Advisory Committee shall be provided access to records and information in the United States Patent and Trademark Office, except for personnel or other privileged information and information concerning patent applications required to be kept in confidence by section 122.
(g) APPLICABILITY OF CERTAIN ETHICS LAWS.— Members of each Advisory Committee shall be special Government employees within the meaning of section 202 of title 18.
(h) INAPPLICABILITY OF FEDERAL ADVISORY COMMITTEE ACT.— The Federal Advisory Committee Act (5 U.S.C. App.) shall not apply to each Advisory Committee.
(i) OPEN MEETINGS.— The meetings of each Advisory Committee shall be open to the public, except that each Advisory Committee may by majority vote meet in executive session when considering personnel, privileged, or other confidential information.
(j) INAPPLICABILITY OF PATENT PROHIBITION.— Section 4 shall not apply to voting members of the Advisory Committees.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-578 (S. 1948 sec. 4714); subsections (e) and (g) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904; subsection (i) amended and subsection (j) added Nov. 2, 2002, Public Law 107-273, sec. 13203, 116 Stat. 1902; subsection (a) amended Jan. 14, 2013, Public Law 112-274, sec. 1(l), 126 Stat. 2456.)
35 U.S.C. 6 Patent Trial and Appeal Board.
[Editor Note: Applicable to proceedings commenced on or after September 16, 2012.* See 35 U.S.C. 6 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—There shall be in the Office a Patent Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Secretary, in consultation with the Director. Any reference in any Federal law, Executive order,
rule, regulation, or delegation of authority, or any document of or pertaining to the Board of Patent Appeals and Interferences is deemed to refer to the Patent Trial and Appeal Board.
(b) DUTIES.—The Patent Trial and Appeal Board shall—
(1) on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a);
(2) review appeals of reexaminations pursuant to section 134(b);
(3) conduct derivation proceedings pursuant to section 135; and
(4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32.
(c) 3-MEMBER PANELS.—Each appeal, derivation proceeding, post-grant review, and inter partes review shall be heard by at least 3 members of the Patent Trial and Appeal Board, who shall be designated by the Director. Only the Patent Trial and Appeal Board may grant rehearings.
(d) TREATMENT OF PRIOR APPOINTMENTS.—The Secretary of Commerce may, in the Secretary’s discretion, deem the appointment of an administrative patent judge who, before the date of the enactment of this subsection, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administrative patent judge. It shall be a defense to a challenge to the appointment of an administrative patent judge on the basis of the judge’s having been originally appointed by the Director that the administrative patent judge so appointed was acting as a de facto officer.
(Repealed by Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4715(a).)
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(2)); subsection (a) amended Nov. 2, 2002, Public Law 107-273, sec. 13203, 116 Stat. 1902; subsection(a) amended and subsections (c) and (d) added Aug. 12, 2008, Public Law 110-313, sec. 1(a)(1), 122 Stat. 3014; amended Sept. 16, 2011, Public Law 112-29, sec. 7(a) (effective Sept. 16, 2012), 125 Stat. 284.*)
*NOTE: The provisions of this section as in effect on Sept. 15, 2012 (35 U.S.C. 6 (pre-AIA)) apply to interference proceedings that are declared after September 15, 2012 under 35 U.S.C. 135 (pre-AIA). See Public Law 112-274, sec. 1(k)(3), 126 Stat. 2456 (Jan. 14, 2013).
35 U.S.C. 6 (pre-AIA) Board of Patent Appeals and Interferences.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012.* See 35 U.S.C. 6 for the law otherwise applicable.]
(a) ESTABLISHMENT AND COMPOSITION.— There shall be in the United States Patent and Trademark Office a Board of Patent Appeals and Interferences. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent
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judges shall constitute the Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Secretary of Commerce, in consultation with the Director.
(b) DUTIES.— The Board of Patent Appeals and Interferences shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents and shall determine priority and patentability of invention in interferences declared under section 135(a). Each appeal and interference shall be heard by at least three members of the Board, who shall be designated by the Director. Only the Board of Patent Appeals and Interferences may grant rehearings.
(c) AUTHORITY OF THE SECRETARY.— The Secretary of Commerce may, in his or her discretion, deem the appointment of an administrative patent judge who, before the date of the enactment of this subsection, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administrative patent judge.
(d) DEFENSE TO CHALLENGE OFAPPOINTMENT.— It shall be a defense to a challenge to the appointment of an administrative patent judge on the basis of the judge's having been originally appointed by the Director that the administrative patent judge so appointed was acting as a de facto officer.
(Repealed by Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4715(a).)
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(2)); subsection (a) amended Nov. 2, 2002, Public Law 107-273, sec. 13203, 116 Stat. 1902; subsection(a) amended and subsections (c) and (d) added Aug. 12, 2008, Public Law 110-313, sec. 1(a)(1), 122 Stat. 3014.)
*NOTE: The provisions of this section as in effect on Sept. 15, 2012 apply to interference proceedings that are declared after September 15, 2012 under 35 U.S.C. 135 (pre-AIA). See Public Law 112-274, sec. 1(k)(3), 126 Stat. 2456 (Jan. 14, 2013).
35 U.S.C. 7 Library.
The Director shall maintain a library of scientific and other works and periodicals, both foreign and domestic, in the Patent and Trademark Office to aid the officers in the discharge of their duties.
(Repealed Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 8 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)); amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 8 Classification of patents.
The Director may revise and maintain the classification by subject matter of United States letters patent, and such other patents and printed publications as may be necessary or practicable, for the purpose of determining with readiness and accuracy the novelty of inventions for which applications for patent are filed.
(Transferred to 35 U.S.C. 7 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 9 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 9 Certified copies of records.
The Director may furnish certified copies of specifications and drawings of patents issued by the Patent and Trademark Office, and of other records available either to the public or to the person applying therefor.
(Transferred to 35 U.S.C. 8 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 10 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)); amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 10 Publications.
(a) The Director may publish in printed, typewritten, or electronic form, the following:
(1) Patents and published applications for patents, including specifications and drawings, together with copies of the same. The Patent and Trademark Office may print the headings of the drawings for patents for the purpose of photolithography.
(2) Certificates of trademark registrations, including statements and drawings, together with copies of the same.
(3) The Official Gazette of the United States Patent and Trademark Office.
(4) Annual indexes of patents and patentees, and of trademarks and registrants.
(5) Annual volumes of decisions in patent and trademark cases.
(6) Pamphlet copies of the patent laws and rules of practice, laws and rules relating to trademarks, and circulars or other publications relating to the business of the Office.
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(b) The Director may exchange any of the publications specified in items 3, 4, 5, and 6 of subsection (a) of this section for publications desirable for the use of the Patent and Trademark Office.
(Transferred to 35 U.S.C. 9 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 11 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. 4717(1)); amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-589 (S. 1948 sec. 4804(b)).)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565, 582 (S. 1948 secs. 4507(1) and 4732(a)(10)(A)).)
35 U.S.C. 11 Exchange of copies of patents and applications with foreign countries.
The Director may exchange copies of specifications and drawings of United States patents and published applications for patents for those of foreign countries. The Director shall not enter into an agreement to provide such copies of specifications and drawings of United States patents and applications to a foreign country, other than a NAFTA country or a WTO member country, without the express authorization of the Secretary of Commerce. For purposes of this section, the terms “NAFTA country” and “WTO member country” have the meanings given those terms in section 104(b).
(Transferred to 35 U.S.C. 10 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 12 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. 4717(1)); amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-591 (S. 1948 sec. 4808).)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565, 582 (S. 1948 secs. 4507(2)(A), 4507(2)(B), and 4732(a)(10)(A)).)
35 U.S.C. 12 Copies of patents and applications for public libraries.
The Director may supply copies of specifications and drawings of patents and published applications for patents in printed or electronic form to public libraries in the United States which shall maintain such copies for the use of the public, at the rate for each year’s issue established for this purpose in section 41(d).
(Transferred to 35 U.S.C. 11 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 13 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec.
4717(1)); amended Aug. 27, 1982, Public Law 97-247, sec. 15, 96 Stat. 321; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565, 566, 580, 582, and 589 (S. 1948 secs. 4507(3)(A), 4507(3)(B), 4507(4), 4717(1), 4732(a)(10)(A), and 4804(c)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat 284.)
35 U.S.C. 13 Annual report to Congress.
The Director shall report to the Congress, not later than 180 days after the end of each fiscal year, the moneys received and expended by the Office, the purposes for which the moneys were spent, the quality and quantity of the work of the Office, the nature of training provided to examiners, the evaluation of the Commissioner of Patents and the Commissioner of Trademarks by the Secretary of Commerce, the compensation of the Commissioners, and other information relating to the Office.
(Transferred to 35 U.S.C. 12 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 14 Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. 4717(1)).)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565, 581 (S. 1948 secs. 4507(2), 4718).)
35 U.S.C. 21 Filing date and day for taking action.
(a) The Director may by rule prescribe that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service or would have been deposited with the United States Postal Service but for postal service interruptions or emergencies designated by the Director.
(b) When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, the action may be taken, or fee paid, on the next succeeding secular or business day.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Aug. 27, 1982, Public Law 97-247, sec. 12, 96 Stat. 321; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 22 Printing of papers filed.
The Director may require papers filed in the Patent and Trademark Office to be printed, typewritten, or on an electronic medium.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582, 589 (S. 1948 secs. 4732(a)(10)(A), 4804(a)).)
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35 U.S.C. 23 Testimony in Patent and Trademark Office cases.
The Director may establish rules for taking affidavits and depositions required in cases in the Patent and Trademark Office. Any officer authorized by law to take depositions to be used in the courts of the United States, or of the State where he resides, may take such affidavits and depositions.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 24 Subpoenas, witnesses.
The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent and Trademark Office.
Every witness subpoenaed and in attendance shall be allowed the fees and traveling expenses allowed to witnesses attending the United States district courts.
A judge of a court whose clerk issued a subpoena may enforce obedience to the process or punish disobedience as in other like cases, on proof that a witness, served with such subpoena, neglected or refused to appear or to testify. No witness shall be deemed guilty of contempt for disobeying such subpoena unless his fees and traveling expenses in going to, and returning from, and one day’s attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena; nor for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpoena.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)
35 U.S.C. 25 Declaration in lieu of oath.
(a) The Director may by rule prescribe that any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration in such form as the Director may prescribe, such declaration to be in lieu of the oath otherwise required.
(b) Whenever such written declaration is used, the document must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001).
(Added Mar. 26, 1964, Public Law 88-292, sec. 1, 78 Stat. 171; amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949;
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 26 Effect of defective execution.
Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be executed in a specified manner may be provisionally accepted by the Director despite a defective execution, provided a properly executed document is submitted within such time as may be prescribed.
(Added Mar. 26, 1964, Public Law 88-292, sec. 1, 78 Stat. 171; amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 27 Revival of applications; reinstatement of reexamination proceedings.
The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing each patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner.
(Added Dec. 18, 2012, Public Law 112-211, sec. 201(b)(1), 126 Stat. 1534).
35 U.S.C. 31 [Repealed.]
(Repealed Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4715(b)).)
35 U.S.C. 32 Suspension or exclusion from practice.
The Director may, after notice and opportunity for a hearing, suspend or exclude, either generally or in any particular case, from further practice before the Patent and Trademark Office, any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D), or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office. The reasons for any such suspension or exclusion shall be duly recorded. The Director shall have the discretion to designate any attorney who is an officer or employee of the United States Patent and Trademark Office to conduct the hearing required by this section. A proceeding under this section shall be commenced not later than the earlier of either the date that is 10 years after the date on which the misconduct forming the basis for the proceeding occurred, or 1 year after the date on which the misconduct forming the basis for the proceeding is made known to an officer or employee of the Office as prescribed in the regulations established under section 2(b)(2)(D). The United States District Court for the Eastern District of Virginia, under such conditions and upon such proceedings as it by its rules determines, may
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review the action of the Director upon the petition of the person so refused recognition or so suspended or excluded.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580, 581, 582 (S. 1948 secs. 4715(c), 4719, 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, secs. 3(k) and 9 (effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 33 Unauthorized representation as practitioner.
Whoever, not being recognized to practice before the Patent and Trademark Office, holds himself out or permits himself to be held out as so recognized, or as being qualified to prepare or prosecute applications for patent, shall be fined not more than $1,000 for each offense.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)
35 U.S.C. 41 Patent fees; patent and trademark search systems.
(a) GENERAL FEES. — The Director shall charge the following fees:
(1) FILING AND BASIC NATIONAL FEES. —
(A) On filing each application for an original patent, except for design, plant, or provisional applications, $330.
(B) On filing each application for an original design patent, $220.
(C) On filing each application for an original plant patent, $220.
(D) On filing each provisional application for an original patent, $220.
(E) On filing each application for the reissue of a patent, $330.
(F) The basic national fee for each international application filed under the treaty defined in section 351(a) entering the national stage under section 371, $330.
(G) In addition, excluding any sequence listing or computer program listing filed in electronic medium as prescribed by the Director, for any application the specification and drawings of which exceed 100 sheets of paper (or equivalent as prescribed by the Director if filed in an electronic medium), $270 for each additional 50 sheets of paper (or equivalent as prescribed by the Director if filed in an electronic medium) or fraction thereof.
(2) EXCESS CLAIMS FEES. —
(A) IN GENERAL. — In addition to the fee specified in paragraph (1) —
(i) on filing or on presentation at any other time, $220 for each claim in independent form in excess of 3;
(ii) on filing or on presentation at any other time, $52 for each claim (whether dependent or independent) in excess of 20; and
(iii) for each application containing a multiple dependent claim, $390.
(B) MULTIPLE DEPENDENT CLAIMS.— For the purpose of computing fees under subparagraph (A), a multiple dependent claim referred to in section 112 or any claim depending therefrom shall be considered as separate dependent claims in accordance with the number of claims to which reference is made.
(C) REFUNDS; ERRORS IN PAYMENT.— The Director may by regulation provide for a refund of any part of the fee specified in subparagraph (A) for any claim that is canceled before an examination on the merits, as prescribed by the Director, has been made of the application under section 131. Errors in payment of the additional fees under this paragraph may be rectified in accordance with regulations prescribed by the Director.
(3) EXAMINATION FEES. —
(A) IN GENERAL.—
(i) For examination of each application for an original patent, except for design, plant, provisional, or international applications, $220.
(ii) For examination of each application for an original design patent, $140.
(iii) For examination of each application for an original plant patent, $170.
(iv) For examination of the national stage of each international application, $220.
(v) For examination of each application for the reissue of a patent, $650.
(B) APPLICABILITY OF OTHER FEE PROVISIONS.— The provisions of paragraphs (3) and (4) of section 111(a) relating to the payment of the fee for filing the application shall apply to the payment of the fee specified in subparagraph (A) with respect to an application filed under section 111(a). The provisions of section 371(d) relating to the payment of the national fee shall apply to the payment of the fee specified subparagraph (A) with respect to an international application.
(4) ISSUE FEES. —
(A) For issuing each original patent, except for design or plant patents, $1,510.
(B) For issuing each original design patent, $860.
(C) For issuing each original plant patent, $1,190.
(D) For issuing each reissue patent, $1,510.
(5) DISCLAIMER FEE. — On filing each disclaimer, $140.
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(6) APPEAL FEES. —
(A) On filing an appeal from the examiner to the Patent Trial and Appeal Board, $540.
(B) In addition, on filing a brief in support of the appeal, $540, and on requesting an oral hearing in the appeal before the Patent Trial and Appeal Board, $1,080.
(7) REVIVAL FEES. — On filing each petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining a patent in force, for the delayed submission of a priority or benefit claim, or for the extension of the 12-month period for filing a subsequent application, $1,700.00. The Director may refund any part of the fee specified in this paragraph, in exceptional circumstances as determined by the Director.
(8) EXTENSION FEES. — For petitions for 1-month extensions of time to take actions required by the Director in an application —
(A) on filing a first petition, $130;
(B) on filing a second petition, $360; and
(C) on filing a third or subsequent petition, $620.
(b) MAINTENANCE FEES. —
(1) IN GENERAL.— The Director shall charge the following fees for maintaining in force all patents based on applications filed on or after December 12, 1980:
(A) Three years and 6 months after grant, $980.
(B) Seven years and 6 months after grant, $2,480.
(C) Eleven years and 6 months after grant, $4,110.
(2) GRACE PERIOD; SURCHARGE.— Unless payment of the applicable maintenance fee under paragraph (1) is received in the Office on or before the date the fee is due or within a grace period of 6 months thereafter, the patent shall expire as of the end of such grace period. The Director may require the payment of a surcharge as a condition of accepting within such 6-month grace period the payment of an applicable maintenance fee.
(3) NO MAINTENANCE FEE FOR DESIGN OR PLANT PATENT.— No fee may be established for maintaining a design or plant patent in force.
(c) DELAYS IN PAYMENT OF MAINTENANCE FEES.—
(1) ACCEPTANCE.—The Director may accept the payment of any maintenance fee required by subsection (b) after the 6-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional. The Director may require the payment of the fee specified in subsection (a)(7) as a condition of accepting payment of any maintenance fee after the 6-month grace period. If the Director accepts payment of a maintenance fee after the 6-month grace period, the patent shall
be considered as not having expired at the end of the grace period.
(2) EFFECT ON RIGHTS OF OTHERS.— A patent, the term of which has been maintained as a result of the acceptance of a payment of a maintenance fee under this subsection, shall not abridge or affect the right of any person or that person’s successors in business who made, purchased, offered to sell, or used anything protected by the patent within the United States, or imported anything protected by the patent into the United States after the 6-month grace period but prior to the acceptance of a maintenance fee under this subsection, to continue the use of, to offer for sale, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported. The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, or used within the United States, or imported into the United States, as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made after the 6-month grace period but before the acceptance of a maintenance fee under this subsection, and the court may also provide for the continued practice of any process that is practiced, or for the practice of which substantial preparation was made, after the 6-month grace period but before the acceptance of a maintenance fee under this subsection, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced after the 6-month grace period but before the acceptance of a maintenance fee under this subsection.
(d) PATENT SEARCH AND OTHER FEES. —
(1) PATENT SEARCH FEES. —
(A) IN GENERAL.— The Director shall charge the fees specified under subparagraph (B) for the search of each application for a patent, except for provisional applications. The Director shall adjust the fees charged under this paragraph to ensure that the fees recover an amount not to exceed the estimated average cost to the Office of searching applications for patent by Office personnel.
(B) SPECIFIC FEES.—The fees referred to in subparagraph (A) are—
(i) $540 for each application for an original patent, except for design, plant, provisional, or international applications;
(ii) $100 for each application for an original design patent;
(iii) $330 for each application for an original plant patent;
(iv) $540 for the national stage of each international application; and
(v) $540 for each application for the reissue of a patent.
(C) APPLICABILITY OF OTHER PROVISIONS.— The provisions of paragraphs (3) and (4) of section 111(a) relating to the payment of the fee for filing the application shall apply to the payment of the fee specified in
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this paragraph with respect to an application filed under section 111(a). The provisions of section 371(d) relating to the payment of the national fee shall apply to the payment of the fee specified in this paragraph with respect to an international application.
(D) REFUNDS.— The Director may by regulation provide for a refund of any part of the fee specified in this paragraph for any applicant who files a written declaration of express abandonment as prescribed by the Director before an examination has been made of the application under section 131.
(2) OTHER FEES.—
(A) IN GENERAL.— The Director shall establish fees for all other processing, services, or materials relating to patents not specified in this section to recover the estimated average cost to the Office of such processing, services, or materials, except that the Director shall charge the following fees for the following services:
(i) For recording a document affecting title, $40 per property.
(ii) For each photocopy, $.25 per page.
(iii) For each black and white copy of a patent, $3.
(B) COPIES FOR LIBRARIES.—The yearly fee for providing a library specified in section 12 with uncertified printed copies of the specifications and drawings for all patents in that year shall be $50.
(e) WAIVER OF FEES; COPIES REGARDING NOTICE.— The Director may waive the payment of any fee for any service or material related to patents in connection with an occasional or incidental request made by a department or agency of the Government, or any officer thereof. The Director may provide any applicant issued a notice under section 132 with a copy of the specifications and drawings for all patents referred to in that notice without charge.
(f) ADJUSTMENT OF FEES.— The fees established in subsections (a) and (b) of this section may be adjusted by the Director on October 1, 1992, and every year thereafter, to reflect any fluctuations occurring during the previous 12 months in the Consumer Price Index, as determined by the Secretary of Labor. Changes of less than 1 per centum may be ignored.
(g) [Repealed.]
(h) FEES FOR SMALL ENTITIES.—
(1) REDUCTIONS IN FEES.— Subject to paragraph (3), fees charged under subsections (a), (b) and (d)(1) shall be reduced by 50 percent with respect to their application to any small business concern as defined under section 3 of the Small Business Act, and to any independent inventor or nonprofit organization as defined in regulations issued by the Director.
(2) SURCHARGES AND OTHER FEES.— With respect to its application to any entity described in paragraph (1), any surcharge or fee charged under subsection (c) or (d) shall not be higher than the surcharge or fee required of any
other entity under the same or substantially similar circumstances.
(3) REDUCTION FOR ELECTRONIC FILING.— The fee charged under subsection (a)(l)(A) shall be reduced by 75 percent with respect to its application to any entity to which paragraph (1) applies, if the application is filed by electronic means as prescribed by the Director.
(i) ELECTRONIC PATENT AND TRADEMARK DATA.—
(1) MAINTENANCE OF COLLECTIONS.— The Director shall maintain, for use by the public, paper, microform or electronic collections of United States patents, foreign patent documents, and United States trademark registrations arranged to permit search for and retrieval of information. The Director may not impose fees directly for the use of such collections, or for the use of the public patent and trademark search rooms or libraries.
(2) AVAILABILITY OF AUTOMATED SEARCH SYSTEMS.— The Director shall provide for the full deployment of the automated search systems of the Patent and Trademark Office so that such systems are available for use by the public, and shall assure full access by the public to, and dissemination of, patent and trademark information, using a variety of automated methods, including electronic bulletin boards and remote access by users to mass storage and retrieval systems.
(3) ACCESS FEES.— The Director may establish reasonable fees for access by the public to the automated search systems of the Patent and Trademark Office. If such fees are established, a limited amount of free access shall be made available to users of the systems for purposes of education and training. The Director may waive the payment by an individual of fees authorized by this subsection upon a showing of need or hardship, and if such waiver is in the public interest.
(4) ANNUAL REPORT TO CONGRESS.— The Director shall submit to the Congress an annual report on the automated search systems of the Patent and Trademark Office and the access by the public to such systems. The Director shall also publish such report in the Federal Register. The Director shall provide an opportunity for the submission of comments by interested persons on each such report.
(Amended July 24, 1965, Public Law 89-83, sec. 1, 2, 79 Stat. 259; Jan. 2, 1975, Public Law 93-596, sec. 1, Jan. 2, 1975, 88 Stat. 1949; Nov. 14, 1975, Public Law 94-131, sec. 3, 89 Stat. 690; subsection (g) amended Dec. 12, 1980, Public Law 96-517, sec. 2, 94 Stat. 3017; Aug. 27, 1982, Public Law 97-247, sec. 3(a)-(e), 96 Stat. 317; subsections (a)-(d) amended Sept. 8, 1982, Public Law 97-256, sec. 101, 96 Stat. 816; subsection (a)(6) amended Nov. 8, 1984, Public Law 98-622, sec. 204(a), 98 Stat. 3388; subsection (h) added Nov. 6, 1986, Public Law 99-607, sec. 1(b)(2), 100 Stat. 3470; subsections (a), (b), (d), (f), and (g) amended Dec. 10, 1991, Public Law 102-204, sec. 5, 105 Stat. 1637; subsections (a)(9) - (15) and (i) added Dec. 10, 1991, Public Law 102-204, sec. 5, 105 Stat. 1637; subsection (c)(1) amended Oct. 23, 1992, Public Law 102-444, sec. 1, 106 Stat. 2245; subsection (a)(1)(C) added Dec. 8, 1994, Public Law 103-465, sec. 532(b)(2), 108 Stat. 4986; subsection (c)(2)
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amended, Dec. 8, 1994, Public Law 103-465, sec. 533(b)(1), 108 Stat. 4988; subsections (a)-(b) revised Nov. 10, 1998, Public Law 105-358, sec. 3, 112 Stat. 3272.; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-554, 570, 582, 589 (S. 1948 secs. 4202, 4605(a), 4732(a)(5), 4732(a)(10)(A)) and 4804(d)); amended Sept. 16, 2011, Public Law 112-29, secs. 11 (effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284; subsections (a)(7) and (c)(1) amended Dec. 18, 2012, Public Law 112-211, sec. 202(b)(1), 126 Stat. 1535.)
35 U.S.C. 42 Patent and Trademark Office funding.
(a) All fees for services performed by or materials furnished by the Patent and Trademark Office will be payable to the Director.
(b) All fees paid to the Director and all appropriations for defraying the costs of the activities of the Patent and Trademark Office will be credited to the Patent and Trademark Office Appropriation Account in the Treasury of the United States.
(c)(1) To the extent and in the amounts provided in advance in appropriations Acts, fees authorized in this title or any other Act to be charged or established by the Director shall be collected by and shall, subject to paragraph (3), be available to the Director to carry out the activities of the Patent and Trademark Office.
(2) There is established in the Treasury a Patent and Trademark Fee Reserve Fund. If fee collections by the Patent and Trademark Office for a fiscal year exceed the amount appropriated to the Office for that fiscal year, fees collected in excess of the appropriated amount shall be deposited in the Patent and Trademark Fee Reserve Fund. To the extent and in the amounts provided in appropriations Acts, amounts in the Fund shall be made available until expended only for obligation and expenditure by the Office in accordance with paragraph (3).
(3)(A) Any fees that are collected under this title, and any surcharges on such fees, may only be used for expenses of the Office relating to the processing of patent applications and for other activities, services, and materials relating to patents and to cover a proportionate share of the administrative costs of the Office.
(B) Any fees that are collected under section 31 of the Trademark Act of 1946, and any surcharges on such fees, may only be used for expenses of the Office relating to the processing of trademark registrations and for other activities, services, and materials relating to trademarks and to cover a proportionate share of the administrative costs of the Office.
(d) The Director may refund any fee paid by mistake or any amount paid in excess of that required.
(e) The Secretary of Commerce shall, on the day each year on which the President submits the annual budget to the Congress, provide to the Committees on the Judiciary of the Senate and the House of Representatives:
(1) a list of patent and trademark fee collections by the Patent and Trademark Office during the preceding fiscal year;
(2) a list of activities of the Patent and Trademark Office during the preceding fiscal year which were supported
by patent fee expenditures, trademark fee expenditures, and appropriations;
(3) budget plans for significant programs, projects, and activities of the Office, including out-year funding estimates;
(4) any proposed disposition of surplus fees by the Office; and
(5) such other information as the committees consider necessary.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 4, 89 Stat. 690; Dec. 12, 1980, Public Law 96-517, sec. 3, 94 Stat. 3018; Aug. 27, 1982, Public Law 97-247, sec. 3(g), 96 Stat. 319; Sept. 13, 1982, Public Law 97-258, sec. 3(i), 96 Stat. 1065; subsection (c) amended Dec. 10, 1991, Public Law 102-204, sec. 5(e), 105 Stat. 1640; subsection (e) added Dec. 10, 1991, Public Law 102-204, sec. 4, 105 Stat. 1637; subsection (c) revised Nov. 10, 1998, Public Law 105-358, sec. 4, 112 Stat. 3274; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-555, 582 (S. 1948 secs. 4205 and 4732(a)(10)(A)); subsection (c) amended Sept. 16, 2011, Public Law 112-29, sec. 22, 125 Stat. 284, effective Oct. 1, 2011; subsection (c)(3) amended Jan. 14, 2013, Public Law 112-274, sec. 1(j), 126 Stat. 2456.)
II
PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
35 U.S.C. 100 (note) AIA First inventor to file provisions.
The first inventor to file provisions of the Leahy-Smith America Invents Act (AIA) apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective filing date on or after March 16, 2013 wherein the effective filing date is:
(i) if subparagraph (ii) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(ii) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120 , 121, 365(c), or 386(c); or
(B) a specific reference under section 120 , 121, 365(c), or 386(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.
(Sept. 16, 2011, Public Law 112-29, sec. 3(n)(1) (effective March 16, 2013), 125 Stat. 284; references to 35 U.S.C. 386 added Dec. 18, 2012, Public Law 112-211, sec. 102(1) (effective May 13, 2015), 126 Stat. 1531.)
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§ 100 (note)PATENT LAWS
35 U.S.C. 100 Definitions.
[Editor Note: 35 U.S.C. 100(e)-(j) as set forth below are only applicable to patent applications and patents subject to the first inventor to file provisions of the AIA (35 U.S.C. 100 (note)). See 35 U.S.C. 100(e) (pre-AIA) for subsection (e) as otherwise applicable.]
When used in this title unless the context otherwise indicates -
(a) The term “invention” means invention or discovery.
(b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
(c) The terms “United States” and “this country” mean the United States of America, its territories and possessions.
(d) The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.
(e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 who is not the patent owner.
(f) The term "inventor" means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
(g) The terms "joint inventor" and "coinventor" mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.
(h) The term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
(i)(1) The term "effective filing date" for a claimed invention in a patent or application for patent means—
(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).
(2) The effective filing date for a claimed invention in an application for reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
(j) The term "claimed invention" means the subject matter defined by a claim in a patent or an application for a patent.
(Subsection (e) added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-567 (S. 1948 sec. 4603); subsection (e) amended and subsections (f) - (j) added Sept. 16, 2011, Public Law 112-29, sec. 3(a) (effective March 16, 2013), 125 Stat. 284.); subsection (i)(1)(B) amended Dec. 18, 2012, Public
Law 112-211, sec. 102(1) (effective May 13, 2015), 126 Stat. 1531.)
35 U.S.C. 100 (pre-AIA) Definitions.
[Editor Note: pre-AIA 35 U.S.C. 100(e) as set forth below is not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 100(e)-(j) for the law otherwise applicable.]
When used in this title unless the context otherwise indicates -
*****
(e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 or inter partes reexamination under section 311 who is not the patent owner.
(Subsection (e) added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-567 (S. 1948 sec. 4603).)
35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
(Public Law 112-29, sec. 33, 125 Stat. 284 (Sept. 16, 2011) provided a limitation on the issuance of patents (see AIA § 33).)
35 U.S.C. 102 Conditions for patentability; novelty.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 102 (pre-AIA) for the law otherwise applicable.]
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
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(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c) based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
(Amended July 28, 1972, Public Law 92-358, sec. 2, 86 Stat. 501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89 Stat. 691; subsection (e) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565 (S. 1948 sec. 4505); subsection (g) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948 sec. 4806); subsection (e) amended Nov. 2, 2002, Public Law 107-273, sec. 13205, 116 Stat. 1903; amended Sept. 16, 2011, Public Law 112-29, sec. 3(b), 125 Stat. 284, effective March 16, 2013.*; subsection (d)(2) amended Dec. 18, 2012, Public Law 112-211, sec. 102(2) (effective May 13, 2015), 126 Stat. 1531.))
(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011) provided that tax strategies are deemed to be within the prior art (see AIA § 14).)
*NOTE: The provisions of 35 U.S.C. 102(g), as in effect on March 15, 2013, shall also apply to each claim of an
application for patent, and any patent issued thereon, for which the first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note)), if such application or patent contains or contained at any time a claim to a claimed invention to which is not subject to the first inventor to file provisions of the AIA.]
35 U.S.C. 102 (pre-AIA) Conditions for patentability; novelty and loss of right to patent.
[Editor Note: With the exception of subsection (g)*), not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 102 for the law otherwise applicable.]
A person shall be entitled to a patent unless —
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
(e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United
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§ 102 (pre-AIA)
PATENT LAWS
States and was published under Article 21(2) of such treaty in the English language; or
(f) he did not himself invent the subject matter sought to be patented, or
(g) (1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
(Amended July 28, 1972, Public Law 92-358, sec. 2, 86 Stat. 501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89 Stat. 691; subsection (e) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565 (S. 1948 sec. 4505); subsection (g) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948 sec. 4806); subsection (e) amended Nov. 2, 2002, Public Law 107-273, sec. 13205, 116 Stat. 1903.)
(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011) provided that tax strategies are deemed to be within the prior art (see AIA § 14).)
*NOTE: The provisions of 35 U.S.C. 102(g), as in effect on March 15, 2013, shall apply to each claim of an application
for patent, and any patent issued thereon, for which the first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note), if such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in section 100(i) of title 35, United States Code, that occurs before March 16, 2013; or
(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 103 (pre-AIA) for the law otherwise applicable.]
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the
effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
(Amended Nov. 8, 1984, Public Law 98-622, sec. 103, 98 Stat. 3384; Nov. 1, 1995, Public Law 104-41, sec.1, 109 Stat. 3511; subsection (c) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-591 (S. 1948 sec. 4807); subsection (c) amended Dec. 10, 2004, Public Law 108-453, sec. 2, 118 Stat. 3596; amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 16, 2012) and 3(c) (effective March 16, 2013), 125 Stat. 284.)
(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011) provided that tax strategies are deemed to be within the prior art (see AIA § 14).)
35 U.S.C. 103 (pre-AIA) Conditions for patentability; non-obvious subject matter.
[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 103 for the law otherwise applicable.]
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 , if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
(b)(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if-
(A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and
(B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.
(2) A patent issued on a process under paragraph (1)-
(A) shall also contain the claims to the composition of matter used in or made by that process, or
(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.
(3) For purposes of paragraph (1), the term “biotechnological process” means-
(A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to-
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(i) express an exogenous nucleotide sequence,
(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
(iii) express a specific physiological characteristic not naturally associated with said organism;
(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and
(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).
(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
(Amended Nov. 8, 1984, Public Law 98-622, sec. 103, 98 Stat. 3384; Nov. 1, 1995, Public Law 104-41, sec.1, 109 Stat. 3511; subsection (c) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-591 (S. 1948 sec. 4807); subsection (c) amended Dec. 10, 2004, Public Law 108-453, sec. 2, 118 Stat. 3596; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011) provided that tax strategies are deemed to be within the prior art (see AIA § 14).)
35 U.S.C. 104 [Repealed.]
(Repealed Sept. 16, 2011, Public Law 112-29, sec. 3(d) (effective March 16, 2013), 125 Stat. 284.)
35 U.S.C. 104 (pre-AIA) Invention made abroad.
[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). 35 U.S.C. 104 repealed with regard to such applications).]
(a) IN GENERAL.—
(1) PROCEEDINGS.—In proceedings in the Patent and Trademark Office, in the courts, and before any other competent authority, an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a foreign country other than a NAFTA country or a WTO member country, except as provided in sections 119 and 365.
(2) RIGHTS.—If an invention was made by a person, civil or military—
(A) while domiciled in the United States, and serving in any other country in connection with operations by or on behalf of the United States,
(B) while domiciled in a NAFTA country and serving in another country in connection with operations by or on behalf of that NAFTA country, or
(C) while domiciled in a WTO member country and serving in another country in connection with operations by or on behalf of that WTO member country, that person shall be entitled to the same rights of priority in the United States with respect to such invention as if such invention had been made in the United States, that NAFTA country, or that WTO member country, as the case may be.
(3) USE OF INFORMATION.—To the extent that any information in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or disproving a date of invention has not been made available for use in a proceeding in the Patent and Trademark Office, a court, or any other competent authority to the same extent as such information could be made available in the United States, the Director, court, or such other authority shall draw appropriate inferences, or take other action permitted by statute, rule, or regulation, in favor of the party that requested the information in the proceeding.
(b) DEFINITIONS.—As used in this section—
(1) The term “NAFTA country” has the meaning given that term in section 2(4) of the North American Free Trade Agreement Implementation Act; and
(2) The term “WTO member country” has the meaning given that term in section 2(10) of the Uruguay Round Agreements Act.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 14, 1975, Public Law 94-131, sec. 6, 89 Stat. 691; Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; Dec. 8, 1993, Public Law 103-182, sec. 331, 107 Stat. 2113; Dec. 8, 1994, Public Law 103-465, sec. 531(a), 108 Stat. 4982; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16,
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§ 104 (pre-AIA)
PATENT LAWS
2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.
35 U.S.C. 105 Inventions in outer space.
(a) Any invention made, used, or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States shall be considered to be made, used or sold within the United States for the purposes of this title, except with respect to any space object or component thereof that is specifically identified and otherwise provided for by an international agreement to which the United States is a party, or with respect to any space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space.
(b) Any invention made, used, or sold in outer space on a space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space, shall be considered to be made, used, or sold within the United States for the purposes of this title if specifically so agreed in an international agreement between the United States and the state of registry.
(Added Nov. 15, 1990, Public Law 101-580, sec. 1(a), 104 Stat. 2863.)
35 U.S.C. 111 Application.
[Editor Note: Applicable to any patent application filed on or after December 18, 2013. See 35 U.S.C. 111 (pre-PLT (AIA)) or 35 U.S.C. 111 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.
(3) FEE, OATH OR DECLARATION, AND CLAIMS.—The application shall be accompanied by the fee required by law. The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) FEE.—The application shall be accompanied by the fee required by law. The fee may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of a provisional application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to all the conditions in this subsection and section 119(e), and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119, 365(a), or 386(a) or to the benefit of an earlier filing date in the United States under section 120, 121, 365(c) , or 386(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
(c) PRIOR FILED APPLICATION.—Notwithstanding the provisions of subsection (a), the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure
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to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. Such application shall be treated as having never been filed, unless—
(1) the application is revived under section 27; and
(2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat. 319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108 Stat. 4986; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582, 588 (S. 1948 secs. 4732(a)(10)(A), 4801(a); Sept. 16, 2011, Public Law 112-29, secs. 4 and 20(j) (effective Sept. 16, 2012) and sec. 3(e) (effective March 16, 2013), 125 Stat. 284; Dec. 18, 2012, Public Law 112-211, sec. 201(a)(1), 126 Stat. 1531; subsection (b)(7) amended Dec. 18, 2012, Public Law 112-211, sec. 102(3) (effective May 13, 2015), 126 Stat 1531.)
35 U.S.C. 111 (pre-PLT (AIA)) Application.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012, and before December 18, 2013. See 35 U.S.C. 111 or 35 U.S.C. 111 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.
(3) FEE AND OATH OR DECLARATION.—The application must be accompanied by the fee required by law. The fee and oath or declaration may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(4) FAILURE TO SUBMIT.—Upon failure to submit the fee and oath or declaration within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath or declaration was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) FEE.—
(A) The application must be accompanied by the fee required by law.
(B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional.
(4) FILING DATE.—The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to all the conditions in this subsection and section 119(e), and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat. 319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108 Stat. 4986; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582, 588 (S. 1948 secs. 4732(a)(10)(A), 4801(a); Sept. 16, 2011, Public Law 112-29, secs. 4 and 20(j) (effective Sept. 16, 2012) and sec. 3(e) (effective March 16, 2013), 125 Stat. 284.)
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§ 111 (pre-PLT (AIA))
PATENT LAWS
35 U.S.C. 111 (pre-AIA) Application.
[Editor Note: Not applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 111 or 35 U.S.C. 111 (pre-PLT (AIA)) for the law otherwise applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by section 112 of this title;
(B) a drawing as prescribed by section 113 of this title; and
(C) an oath by the applicant as prescribed by section 115 of this title.
(3) FEE AND OATH.—The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(4) FAILURE TO SUBMIT.—Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by the first paragraph of section 112 of this title; and
(B) a drawing as prescribed by section 113 of this title.
(2) CLAIM.—A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application.
(3) FEE.—
(A) The application must be accompanied by the fee required by law.
(B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional.
(4) FILING DATE.—The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to all the conditions in this subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) of this title or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c) of this title.
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat. 319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108 Stat. 4986; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582, 588 (S. 1948 secs. 4732(a)(10)(A), 4801(a)).)
35 U.S.C. 112 Specification.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 112 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
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(c) FORM.—A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
(e) REFERENCE IN MULTIPLE DEPENDENT FORM.—A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
(Amended July 24, 1965, Public Law 89-83, sec. 9, 79 Stat. 261; Nov. 14, 1975, Public Law 94-131, sec. 7, 89 Stat. 691; amended Sept. 16, 2011, Public Law 112-29, sec. 4(c), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 112 (pre-AIA) Specification.
[Editor Note: Not applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 112 for the law otherwise applicable.]
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
(Amended July 24, 1965, Public Law 89-83, sec. 9, 79 Stat. 261; Nov. 14, 1975, Public Law 94-131, sec. 7, 89 Stat. 691.)
35 U.S.C. 113 Drawings.
The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 8, 89 Stat. 691; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 114 Models, specimens.
The Director may require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention.
When the invention relates to a composition of matter, the Director may require the applicant to furnish specimens or ingredients for the purpose of inspection or experiment.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 115 Inventor’s oath or declaration.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 115 (pre-AIA) for the law otherwise applicable.]
(a) NAMING THE INVENTOR; INVENTOR’S OATH OR DECLARATION.—An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name
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§ 115PATENT LAWS
of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.
(b) REQUIRED STATEMENTS.—An oath or declaration under subsection (a) shall contain statements that—
(1) the application was made or was authorized to be made by the affiant or declarant; and
(2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.
(c) ADDITIONAL REQUIREMENTS.—The Director may specify additional information relating to the inventor and the invention that is required to be included in an oath or declaration under subsection (a).
(d) SUBSTITUTE STATEMENT.—
(1) IN GENERAL.—In lieu of executing an oath or declaration under subsection (a), the applicant for patent may provide a substitute statement under the circumstances described in paragraph (2) and such additional circumstances that the Director may specify by regulation.
(2) PERMITTED CIRCUMSTANCES.—A substitute statement under paragraph (1) is permitted with respect to any individual who—
(A) is unable to file the oath or declaration under subsection (a) because the individual—
(i) is deceased;
(ii) is under legal incapacity; or
(iii) cannot be found or reached after diligent effort; or
(B) is under an obligation to assign the invention but has refused to make the oath or declaration required under subsection (a).
(3) CONTENTS.—A substitute statement under this subsection shall—
(A) identify the individual with respect to whom the statement applies;
(B) set forth the circumstances representing the permitted basis for the filing of the substitute statement in lieu of the oath or declaration under subsection (a); and
(C) contain any additional information, including any showing, required by the Director.
(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT OF RECORD.—An individual who is under an obligation of assignment of an application for patent may include the required statements under subsections (b) and (c) in the assignment executed by the individual, in lieu of filing such statements separately.
(f) TIME FOR FILING.—The applicant for patent shall provide each required oath or declaration under subsection (a),
substitute statement under subsection (d), or recorded assignment meeting the requirements of subsection (e) no later than the date on which the issue fee is paid.
(g) EARLIER-FILED APPLICATION CONTAINING REQUIRED STATEMENTS OR SUBSTITUTE STATEMENT.—
(1) EXCEPTION.—The requirements under this section shall not apply to an individual with respect to an application for patent in which the individual is named as the inventor or a joint inventor and that claims the benefit under section 120 , 121, 365(c), or 386(c) of the filing of an earlier-filed application, if—
(A) an oath or declaration meeting the requirements of subsection (a) was executed by the individual and was filed in connection with the earlier-filed application;
(B) a substitute statement meeting the requirements of subsection (d) was filed in connection with the earlier filed application with respect to the individual; or
(C) an assignment meeting the requirements of subsection (e) was executed with respect to the earlier-filed application by the individual and was recorded in connection with the earlier-filed application.
(2) COPIES OF OATHS, DECLARATIONS, STATEMENTS, OR ASSIGNMENTS.—Notwithstanding paragraph (1), the Director may require that a copy of the executed oath or declaration, the substitute statement, or the assignment filed in connection with the earlier-filed application be included in the later-filed application.
(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; FILING ADDITIONAL STATEMENTS.—
(1) IN GENERAL.—Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement at any time. If a change is made in the naming of the inventor requiring the filing of 1 or more additional statements under this section, the Director shall establish regulations under which such additional statements may be filed.
(2) SUPPLEMENTAL STATEMENTS NOT REQUIRED.—If an individual has executed an oath or declaration meeting the requirements of subsection (a) or an assignment meeting the requirements of subsection (e) with respect to an application for patent, the Director may not thereafter require that individual to make any additional oath, declaration, or other statement equivalent to those required by this section in connection with the application for patent or any patent issuing thereon.
(3) SAVINGS CLAUSE.—A patent shall not be invalid or unenforceable based upon the failure to comply with a requirement under this section if the failure is remedied as provided under paragraph (1).
(i) ACKNOWLEDGMENT OF PENALTIES.—Any declaration or statement filed pursuant to this section shall contain an acknowledgment that any willful false statement made in such declaration or statement is punishable under section
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1001 of title 18 by fine or imprisonment of not more than 5 years, or both.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 14(a), 96 Stat. 321; Oct. 21, 1998, Pub. L. 105-277, sec. 2222(d), 112 Stat. 2681-818; amended Sept. 16, 2011, Public Law 112-29, sec. 4(a) (effective Sept. 16, 2012), 125 Stat. 284; subsections (f) and (g)(1) amended Jan. 14, 2013, Public Law 112-274, sec. 1(f), 126 Stat. 2456; subsection (g)(1) amended Dec. 18, 2012, Public Law 112-211, sec. 102(4) (effective May 13, 2015), 126 Stat. 1531.)
35 U.S.C. 115 (pre-AIA) Oath of applicant.
[Editor Note: Not applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 115 for the law otherwise applicable.]
The applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent; and shall state of what country he is a citizen. Such oath may be made before any person within the United States authorized by law to administer oaths, or, when made in a foreign country, before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority is proved by certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. Such oath is valid if it complies with the laws of the state or country where made. When the application is made as provided in this title by a person other than the inventor, the oath may be so varied in form that it can be made by him. For purposes of this section, a consular officer shall include any United States citizen serving overseas, authorized to perform notarial functions pursuant to section 1750 of the Revised Statutes, as amended (22 U.S.C. 4221).
(Amended Aug. 27, 1982, Public Law 97-247, sec. 14(a), 96 Stat. 321; Oct. 21, 1998, Pub. L. 105-277, sec. 2222(d), 112 Stat. 2681-818.)
35 U.S.C. 116 Inventors.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16, 2012. See 35 U.S.C. 116 (pre-AIA) for the law otherwise applicable.]
(a) JOINT INVENTIONS.—When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
(b) OMITTED INVENTOR.—If a joint inventor refuses to join in an application for patent or cannot be found or reached
after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.
(c) CORRECTION OF ERRORS IN APPLICATION.—Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, the Director may permit the application to be amended accordingly, under such terms as he prescribes.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(a), 96 Stat. 320; Nov. 8, 1984, Public Law 98-622, sec. 104(a), 98 Stat. 3384; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(a), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 116 (pre-AIA) Inventors.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 116 for the law otherwise applicable.]
When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.
Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Director may permit the application to be amended accordingly, under such terms as he prescribes.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(a), 96 Stat. 320; Nov. 8, 1984, Public Law 98-622, sec. 104(a), 98 Stat. 3384; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
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PATENT LAWS
35 U.S.C. 117 Death or incapacity of inventor.
Legal representatives of deceased inventors and of those under legal incapacity may make application for patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor.
35 U.S.C. 118 Filing by other than inventor.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 118 (pre-AIA) for the law otherwise applicable.]
A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 4(b), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 118 (pre-AIA) Filing by other than inventor.
[Editor Note: Not applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 118 for the law otherwise applicable.]
Whenever an inventor refuses to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom the inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage; and the Director may grant a patent to such inventor upon such notice to him as the Director deems sufficient, and on compliance with such regulations as he prescribes.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 119 Benefit of earlier filing date; right of priority.
[Editor Note: 35 U.S.C. 119(a) as set forth below is only applicable to patent applications subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 119(a) (pre-AIA) for the law otherwise applicable.]
(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a
patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7) , pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application in this country within the 12-month period was unintentional.
(b)(1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.
(2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim under this section.
(3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.
(c) In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.
(d) Applications for inventors’certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of such filing.
(e)(1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner
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provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application under section 111(a) or section 363 within the 12-month period was unintentional. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.
(2) A provisional application filed under section 111(b) may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) has been paid.
(3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day. For an application for patent filed under section 363 in a Receiving Office other than the Patent and Trademark Office, the 12-month and additional 2-month period set forth in this subsection shall be extended as provided under the treaty and Regulations as defined in section 351.
(f) Applications for plant breeder’s rights filed in a WTO member country (or in a foreign UPOV Contracting Party) shall have the same effect for the purpose of the right of priority under subsections (a) through (c) of this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents.
(g) As used in this section—
(1) the term “WTO member country” has the same meaning as the term is defined in section 104(b)(2); and
(2) the term “UPOV Contracting Party” means a member of the International Convention for the Protection of New Varieties of Plants.
(Amended Oct. 3, 1961, Public Law 87-333, sec. 1, 75 Stat. 748; July 28, 1972, Public Law 92-358, sec. 1, 86 Stat. 501; Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(1), 108 Stat. 4985; subsection (b) amended Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.4503(a)); subsection (e) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-564, 588, 589 (S. 1948 secs. 4503(b)(2), 4801 and 4802; subsections (f) and (g) added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-589 (S. 1948 sec. 4802); subsections (e), (g) amended Sept. 16, 2011, Public Law 112-29, secs. 15(b) (effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284; subsection (a) amended Sept. 16, 2011, Public Law 112-29, sec. 3(g) (effective March 16, 2013), 125 Stat. 284; subsections (a) and (e), Dec. 18, 2012, Public Law 112-211, sec. 201(c)(1)(A), 126 Stat. 1527; subsection (b)(2), Dec. 18, 2012, Public Law 112-211, sec. 202(b)(2), 126 Stat. 1536.)
35 U.S.C. 119 (pre-AIA) Benefit of earlier filing date; right of priority.
[Editor Note: pre-AIA 35 U.S.C. 119(a) as set forth below is applicable to patent applications not subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 119(a) for the law otherwise applicable.]
(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing.
*****
(Amended Oct. 3, 1961, Public Law 87-333, sec. 1, 75 Stat. 748; July 28, 1972, Public Law 92-358, sec. 1, 86 Stat. 501; Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(1), 108 Stat. 4985; subsection (b) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.4503(a)); subsection (e) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-564, 588, 589 (S. 1948 secs. 4503(b)(2), 4801 and 4802; subsections (f) and (g) added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-589 (S. 1948 sec. 4802); subsections (e), (g) amended Sept. 16, 2011, Public Law 112-29, secs. 15(b) (effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 120 Benefit of earlier filing date in the United States.
[Editor Note: Applicable to a patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100
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(note)). See 35 U.S.C. 120 (pre-AIA) for the law otherwise applicable.]
An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 9, 89 Stat. 691; Nov. 8, 1984, Public Law 98-622, sec. 104(b), 98 Stat. 3385; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec. 4503(b)(1)); amended Sept. 16, 2011, Public Law 112-29, secs. 15(b) (effective Sept. 16, 2012), 20(j) (effective Sept. 16, 2012) and 3(f) (effective March 16, 2013), 125 Stat. 284; Dec. 18, 2012, Public Law 112-211, sec. 202(b)(3), 126 Stat. 1536; amended Dec. 18, 2012, Public Law 112-211, sec. 102(5) (effective May 13, 2015), 126 Stat. 1531.)
35 U.S.C. 120 (pre-AIA) Benefit of earlier filing date in the United States.
[Editor Note: Not applicable to patent applications subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 120 for the law otherwise applicable.]
An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The
Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 9, 89 Stat. 691; Nov. 8, 1984, Public Law 98-622, sec. 104(b), 98 Stat. 3385; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec. 4503(b)(1)); amended Sept. 16, 2011, Public Law 112-29, secs. 15(b) (effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 121 Divisional applications.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 121 (pre-AIA) for the law otherwise applicable.]
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, secs. 4(a) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 121 (pre-AIA) Divisional applications.
[Editor Note: Not applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 121 for the law otherwise applicable.]
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. If a divisional application is directed solely to subject matter described and claimed in the
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original application as filed, the Director may dispense with signing and execution by the inventor. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 122 Confidential status of applications; publication of patent applications.
(a) CONFIDENTIALITY.— Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.
(b) PUBLICATION.—
(1) IN GENERAL.—
(A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.
(B) No information concerning published patent applications shall be made available to the public except as the Director determines.
(C) Notwithstanding any other provision of law, a determination by the Director to release or not to release information concerning a published patent application shall be final and nonreviewable.
(2) EXCEPTIONS.—
(A) An application shall not be published if that application is—
(i) no longer pending;
(ii) subject to a secrecy order under section 181 ;
(iii) a provisional application filed under section 111(b); or
(iv) an application for a design patent filed under chapter 16.
(B)(i) If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, the application shall not be published as provided in paragraph (1).
(ii) An applicant may rescind a request made under clause (i) at any time.
(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned.
(iv) If an applicant rescinds a request made under clause (i) or notifies the Director that an application was filed in a foreign country or under a multilateral international agreement specified in clause (i), the application shall be published in accordance with the provisions of paragraph (1) on or as soon as is practical after the date that is specified in clause (i).
(v) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign filed applications corresponding to an application filed in the Patent and Trademark Office or the description of the invention in such foreign filed applications is less extensive than the application or description of the invention in the application filed in the Patent and Trademark Office, the applicant may submit a redacted copy of the application filed in the Patent and Trademark Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding applications filed in a foreign country. The Director may only publish the redacted copy of the application unless the redacted copy of the application is not received within 16 months after the earliest effective filing date for which a benefit is sought under this title. The provisions of section 154(d) shall not apply to a claim if the description of the invention published in the redacted application filed under this clause with respect to the claim does not enable a person skilled in the art to make and use the subject matter of the claim.
(c) PROTEST AND PRE-ISSUANCE OPPOSITION.— The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.
(d) NATIONAL SECURITY.— No application for patent shall be published under subsection (b)(1) if the publication or disclosure of such invention would be detrimental to the national security. The Director shall establish appropriate procedures to ensure that such applications are promptly identified and the secrecy of such inventions is maintained in accordance with chapter 17.
(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—
(1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the
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application, if such submission is made in writing before the earlier of—
(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
(B) the later of—
(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or
(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.
(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—
(A) set forth a concise description of the asserted relevance of each submitted document;
(B) be accompanied by such fee as the Director may prescribe; and
(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec. 4503(b)(1)); amended and subsection (e) added Sept. 16, 2011, Public Law 112-29, secs. 8 and 20(j) (effective Sept. 16, 2012), 125 Stat. 284; subsection (b)(2)(B)(iii), Dec. 18, 2012, Public Law 112-211, sec. 202(b)(4), 126 Stat. 1536.)
35 U.S.C. 123 Micro entity defined.
(a) IN GENERAL.—For purposes of this title, the term "micro entity" means an applicant who makes a certification that the applicant—
(1) qualifies as a small entity, as defined in regulations issued by the Director;
(2) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under section 111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under section 41(a) was not paid;
(3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
(4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue
Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
(b) APPLICATIONS RESULTING FROM PRIOR EMPLOYMENT.—An applicant is not considered to be named on a previously filed application for purposes of subsection (a)(2) if the applicant has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s previous employment.
(c) FOREIGN CURRENCY EXCHANGE RATE.—If an applicant’s or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s or entity’s gross income exceeds the threshold specified in paragraphs (3) or (4) of subsection (a).
(d) INSTITUTIONS OF HIGHER EDUCATION.—For purposes of this section, a micro entity shall include an applicant who certifies that—
(1) the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
(2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education.
(e) DIRECTOR’S AUTHORITY.—In addition to the limits imposed by this section, the Director may, in the Director’s discretion, impose income limits, annual filing limits, or other limits on who may qualify as a micro entity pursuant to this section if the Director determines that such additional limits are reasonably necessary to avoid an undue impact on other patent applicants or owners or are otherwise reasonably necessary and appropriate. At least 3 months before any limits proposed to be imposed pursuant to this subsection take effect, the Director shall inform the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate of any such proposed limits.
(Added Sept. 16, 2011, Public Law 112-29, sec. 10(g), 125 Stat. 284; amended Public Law 112-29, sec. 20(j), 125 Stat. 284 and corrected Jan. 14, 2013, Public Law 112-274, sec. 1(m), 126 Stat. 2456.)
35 U.S.C. 131 Examination of application.
The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
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35 U.S.C. 132 Notice of rejection; reexamination.
(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.
(b) The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1).
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-560, 582 (S. 1948 secs. 4403 and 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 133 Time for prosecuting application.
Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); Dec. 18, 2012, Public Law 12-211, sec. 202(b)(5), 126 Stat. 1536.)
35 U.S.C. 134 Appeal to the Patent Trial and Appeal Board.
[Editor Note: Applicable to proceedings commenced on or after September 16, 2012 and applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 134 (transitional) for the law applicable to proceedings commenced on or after September 16, 2012 but not applicable to any patent application subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 134 (pre-AIA) for the law applicable to proceedings commenced before September 16, 2012.]
(a) PATENT APPLICANT.— An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.
(b) PATENT OWNER.— A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.
(Amended Nov. 8, 1984, Public Law 98-622, sec. 204(b)(1), 98 Stat. 3388; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4605(b)); subsections (a)-(c)
amended Nov. 2, 2002, Public Law 107-273, secs. 13106 and 13202, 116 Stat. 1901; amended Sept. 16, 2011, Public Law 112-29, secs. 7(b) (effective Sept. 16, 2012) and 3(j) (effective March 16, 2013), 125 Stat. 284.)
35 U.S.C. 134 (transitional) Appeal to the Board of Patent Appeals and Interferences.
[Editor Note: Applicable to proceedings commenced on or after September 16, 2012, but not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 134 for the law applicable to patent applications subject to the first inventor to file provisions of the AIA.] See 35 U.S.C. 134 (pre-AIA) for the law applicable to proceedings commenced before September 16, 2012.]
(a) PATENT APPLICANT.— An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
(b) PATENT OWNER.— A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
(Amended Nov. 8, 1984, Public Law 98-622, sec. 204(b)(1), 98 Stat. 3388; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4605(b)); subsections (a)-(c) amended Nov. 2, 2002, Public Law 107-273, secs. 13106 and 13202, 116 Stat. 1901; amended Sept. 16, 2011, Public Law 112-29, sec. 7(b) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 134 (pre-AIA) Appeal to the Board of Patent Appeals and Interferences.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 134 or 35 U.S.C. 134 (transitional) for the law otherwise applicable.]
(a) PATENT APPLICANT.— An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
(b) PATENT OWNER.— A patent owner in any reexamination proceeding may appeal from the final rejection of any claim by the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
(c) THIRD-PARTY.— A third-party requester in an inter partes proceeding may appeal to the Board of Patent Appeals and Interferences from the final decision of the primary examiner favorable to the patentability of any original or proposed amended or new claim of a patent, having once paid the fee for such appeal.
(Amended Nov. 8, 1984, Public Law 98-622, sec. 204(b)(1), 98 Stat. 3388; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
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113 Stat. 1501A-570 (S. 1948 sec. 4605(b)); subsections (a)-(c) amended Nov. 2, 2002, Public Law 107-273, secs. 13106 and 13202, 116 Stat. 1901.)
35 U.S.C. 135 Derivation proceedings.
[Editor Note: Applicable to any patent application subject to the AIA first inventor to file provisions (see 35 U.S.C. 100 (note)).* See 35 U.S.C. 135 (pre-AIA) for the law otherwise applicable.]
(a) INSTITUTION OF PROCEEDING.—
(1) IN GENERAL.— An applicant for patent may file a petition with respect to an invention to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an individual named in an earlier application as the inventor or a joint inventor derived such invention from an individual named in the petitioner’s application as the inventor or a joint inventor and, without authorization, the earlier application claiming such invention was filed. Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding.
(2) TIME FOR FILING.—A petition under this section with respect to an invention that is the same or substantially the same invention as a claim contained in a patent issued on an earlier application, or contained in an earlier application when published or deemed published under section 122(b), may not be filed unless such petition is filed during the 1-year period following the date on which the patent containing such claim was granted or the earlier application containing such claim was published, whichever is earlier.
(3) EARLIER APPLICATION.—For purposes of this section, an application shall not be deemed to be an earlier application with respect to an invention, relative to another application, unless a claim to the invention was or could have been made in such application having an effective filing date that is earlier than the effective filing date of any claim to the invention that was or could have been made in such other application.
(4) NO APPEAL.—A determination by the Director whether to institute a derivation proceeding under paragraph (1) shall be final and not appealable.
(b) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD.— In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. In appropriate circumstances, the Patent Trial and Appeal Board may correct the naming of the inventor in any application or patent at issue. The Director shall prescribe regulations setting forth standards for the conduct of derivation proceedings, including requiring parties to provide sufficient evidence to prove and rebut a claim of derivation.
(c) DEFERRAL OF DECISION.—The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month period beginning
on the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant.
(d) EFFECT OF FINAL DECISION.—The final decision of the Patent Trial and Appeal Board, if adverse to claims in an application for patent, shall constitute the final refusal by the Office on those claims. The final decision of the Patent Trial and Appeal Board, if adverse to claims in a patent, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of those claims, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation.
(e) SETTLEMENT.—Parties to a proceeding instituted under subsection (a) may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventor of the claimed invention in dispute. Unless the Patent Trial and Appeal Board finds the agreement to be inconsistent with the evidence of record, if any, it shall take action consistent with the agreement. Any written settlement or understanding of the parties shall be filed with the Director. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents or applications, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause.
(f) ARBITRATION.—Parties to a proceeding instituted under subsection (a) may, within such time as may be specified by the Director by regulation, determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9, to the extent such title is not inconsistent with this section. The parties shall give notice of any arbitration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this subsection shall preclude the Director from determining the patentability of the claimed inventions involved in the proceeding.
(Subsection (c) added Oct. 15, 1962, Public Law 87-831, 76 Stat. 958; subsections (a) and (c) amended, Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; subsection (a) amended Nov. 8, 1984, Public Law 98-622, sec. 202, 98 Stat. 3386; subsection (d) added Nov. 8, 1984, Public Law 98-622, sec. 105, 98 Stat. 3385; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs. 4507(11) and 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 16, 2012) and (3)(i)(effective March 16, 2013)*, 125 Stat. 284; subsections (a) and (e) amended Jan. 14, 2013, Public Law 112-274, secs. 1(e) and (k), 126 Stat. 2456, effective March 16, 2013.*)
*NOTE: The provisions of 35 U.S.C. 135 (pre-AIA), as in effect on March 15, 2013 , shall apply to each claim of an application for patent, and any patent issued thereon, for which the first inventor to file provisions of the AIA also apply (see35 U.S.C.
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100 (note)), if such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in section 100(i), that occurs before March 16, 2013; or
(B) a specific reference under section 120 , 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
35 U.S.C. 135 (pre-AIA) Interferences.
[Editor Note: Except as noted below,*not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 135 for the law otherwise applicable.]
(a) Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared and the Director shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be. The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability. Any final decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office of the claims involved, and the Director may issue a patent to the applicant who is adjudged the prior inventor. A final judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office.
(b)(1) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.
(2) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.
(c) Any agreement or understanding between parties to an interference, including any collateral agreements referred to therein, made in connection with or in contemplation of the termination of the interference, shall be in writing and a true copy thereof filed in the Patent and Trademark Office before the termination of the interference as between the said parties to the agreement or understanding. If any party filing the same so requests, the copy shall be kept separate from the file of the interference, and made available only to Government agencies on written request, or to any person on a showing of good cause. Failure to file the copy of such agreement or understanding shall render permanently unenforceable such agreement or understanding and any patent of such parties involved in the interference or any patent subsequently issued on any application
of such parties so involved. The Director may, however, on a showing of good cause for failure to file within the time prescribed, permit the filing of the agreement or understanding during the six-month period subsequent to the termination of the interference as between the parties to the agreement or understanding.
The Director shall give notice to the parties or their attorneys of record, a reasonable time prior to said termination, of the filing requirement of this section. If the Director gives such notice at a later time, irrespective of the right to file such agreement or understanding within the six-month period on a showing of good cause, the parties may file such agreement or understanding within sixty days of the receipt of such notice.
Any discretionary action of the Director under this subsection shall be reviewable under section 10 of the Administrative Procedure Act.
(d) Parties to a patent interference, within such time as may be specified by the Director by regulation, may determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9 to the extent such title is not inconsistent with this section. The parties shall give notice of any arbitration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this subsection shall preclude the Director from determining patentability of the invention involved in the interference.
(Subsection (c) added Oct. 15, 1962, Public Law 87-831, 76 Stat. 958; subsections (a) and (c) amended, Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; subsection (a) amended Nov. 8, 1984, Public Law 98-622, sec. 202, 98 Stat. 3386; subsection (d) added Nov. 8, 1984, Public Law 98-622, sec. 105, 98 Stat. 3385; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs. 4507(11) and 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284 .
*NOTE: The provisions of 35 U.S.C. 135 (pre-AIA), as in effect on March 15, 2013 , shall apply to each claim of an application for patent, and any patent issued thereon, for which the first inventor to file provisions of the AIA also apply (see35 U.S.C. 100 (note)), if such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in section 100(i), that occurs before March 16, 2013; or
(B) a specific reference under section 120 , 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
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35 U.S.C. 141 Appeal to Court of Appeals for the Federal Circuit.
[Editor Note: Applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 141 (pre-AIA) for the law otherwise applicable.*]
(a) EXAMINATIONS.—An applicant who is dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134(a) may appeal the Board’s decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal, the applicant waives his or her right to proceed under section 145 .
(b) REEXAMINATIONS.—A patent owner who is dissatisfied with the final decision in an appeal of a reexamination to the Patent Trial and Appeal Board under section 134(a) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit.
(c) POST-GRANTAND INTER PARTES REVIEWS.—A party to an inter partes review or a post-grant review who is dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) or 328(a) (as the case may be) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit.
(d) DERIVATION PROCEEDINGS.—A party to a derivation proceeding who is dissatisfied with the final decision of the Patent Trial and Appeal Board in the proceeding may appeal the decision to the United States Court of Appeals for the Federal Circuit, but such appeal shall be dismissed if any adverse party to such derivation proceeding, within 20 days after the appellant has filed notice of appeal in accordance with section 142, files notice with the Director that the party elects to have all further proceedings conducted as provided in section 146. If the appellant does not, within 30 days after the filing of such notice by the adverse party, file a civil action under section 146, the Board’s decision shall govern the further proceedings in the case.
(Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), (b)(2), 96 Stat. 49, 50; Nov. 8, 1984, Public Law 98-622, sec. 203(a), 98 Stat. 3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(c) and 4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec. 13106, 116 Stat. 1901; amended Sept. 16, 2011, Public Law 112-29, sec. 7(c) (effective Sept. 16, 2012), 125 Stat. 284.)
*NOTE: The provisions of this section as in effect on Sept. 15, 2012 (35 U.S.C. 141 (pre-AIA)) apply to interference proceedings that are declared after September 15, 2012 under 35 U.S.C. 135 (pre-AIA). See Public Law 112-274, sec. 1(k)(3), 126 Stat. 2456 (Jan. 14, 2013).
35 U.S.C. 141 (pre-AIA) Appeal to the Court of Appeals for the Federal Circuit.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012.* See 35 U.S.C. 141 for the law otherwise applicable.]
An applicant dissatisfied with the decision in an appeal to the Board of Patent Appeals and Interferences under section 134 of this title may appeal the decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal the applicant waives his or her right to proceed under section 145 of this title. A patent owner, or a third-party requester in an inter partes reexamination proceeding, who is in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Interferences under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit. A party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences on the interference may appeal the decision to the United States Court of Appeals for the Federal Circuit, but such appeal shall be dismissed if any adverse party to such interference, within twenty days after the appellant has filed notice of appeal in accordance with section 142 of this title, files notice with the Director that the party elects to have all further proceedings conducted as provided in section 146 of this title. If the appellant does not, within thirty days after filing of such notice by the adverse party, file a civil action under section 146, the decision appealed from shall govern the further proceedings in the case.
(Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), (b)(2), 96 Stat. 49, 50; Nov. 8, 1984, Public Law 98-622, sec. 203(a), 98 Stat. 3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(c) and 4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec. 13106, 116 Stat. 1901.)
*NOTE: The provisions of 35 U.S.C. 141 (pre-AIA) as in effect on Sept. 15, 2012 apply to interference proceedings that are declared after September 15, 2012 under 35 U.S.C. 135 (pre-AIA). See Public Law 112-274, sec. 1(k)(3), 126 Stat. 2456 (Jan. 14, 2013).
35 U.S.C. 142 Notice of appeal.
When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the Patent and Trademark Office a written notice of appeal directed to the Director, within such time after the date of the decision from which the appeal is taken as the Director prescribes, but in no case less than 60 days after that date.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-620, sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 143 Proceedings on appeal.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16, 2012. See 35 U.S.C. 143 (pre-AIA) for the law otherwise applicable.]
With respect to an appeal described in section 142, the Director shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the
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record in the Patent and Trademark Office. The court may request that the Director forward the original or certified copies of such documents during the pendency of the appeal. In an ex parte case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all of the issues raised in the appeal. The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-620, sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(d) and 4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901; amended Sept. 16, 2011, Public Law 112-29, secs. 7(c) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 143 (pre-AIA) Proceedings on appeal.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 143 for the law otherwise applicable.]
With respect to an appeal described in section 142 of this title, the Director shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the Patent and Trademark Office. The court may request that the Director forward the original or certified copies of such documents during the pendency of the appeal. In an ex parte case or any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-620, sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(d) and 4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901.)
35 U.S.C. 144 Decision on appeal.
The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Director its mandate and opinion, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-620, sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 145 Civil action to obtain patent.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 145 (pre-AIA) for the law otherwise applicable.]
An applicant dissatisfied with the decision of the Patent Trial and Appeal Board in an appeal under section 134(a) may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Patent Trial and Appeal Board, as the facts in the case may appear, and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.
(Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622, sec. 203(b), 98 Stat. 3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(e) and 4732(a)(10)(A) ); amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective Sept. 16, 2011), 20(j) (effective Sept. 16, 2012), and 3(j) (effective March 16, 2013), 125 Stat. 284.)
35 U.S.C. 145 (pre-AIA) Civil action to obtain patent.
[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 145 for the law otherwise applicable.]
An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a) may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Board of Patent Appeals and Interferences, as the facts in the case may appear, and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.
(Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622, sec. 203(b), 98 Stat. 3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(e) and 4732(a)(10)(A) ); amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
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PATENT LAWS
35 U.S.C. 146 Civil action in case of derivation proceeding.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 146 (pre-AIA) for the law otherwise applicable.]
Any party to a derivation proceeding dissatisfied with the decision of the Patent Trial and Appeal Board on the derivation proceeding, may have remedy by civil action, if commenced within such time after such decision, not less than sixty days, as the Director appoints or as provided in section 141, unless he has appealed to the United States Court of Appeals for the Federal Circuit, and such appeal is pending or has been decided. In such suits the record in the Patent and Trademark Office shall be admitted on motion of either party upon the terms and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court imposes, without prejudice to the right of the parties to take further testimony. The testimony and exhibits of the record in the Patent and Trademark Office when admitted shall have the same effect as if originally taken and produced in the suit.
Such suit may be instituted against the party in interest as shown by the records of the Patent and Trademark Office at the time of the decision complained of, but any party in interest may become a party to the action. If there be adverse parties residing in a plurality of districts not embraced within the same state, or an adverse party residing in a foreign country, the United States District Court for the Eastern District of Virginia shall have jurisdiction and may issue summons against the adverse parties directed to the marshal of any district in which any adverse party resides. Summons against adverse parties residing in foreign countries may be served by publication or otherwise as the court directs. The Director shall not be a necessary party but he shall be notified of the filing of the suit by the clerk of the court in which it is filed and shall have the right to intervene. Judgment of the court in favor of the right of an applicant to a patent shall authorize the Director to issue such patent on the filing in the Patent and Trademark Office of a certified copy of the judgment and on compliance with the requirements of law.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622, sec. 203(c), 98 Stat. 3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective Sept. 16, 2011), sec. 20(j) (effective Sept. 16, 2012) and 3(j) (effective March 16, 2013), 125 Stat. 284.)
35 U.S.C. 146 (pre-AIA) Civil action in case of interference.
[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 146 for the law otherwise applicable.]
Any party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences on the interference, may have remedy by civil action, if commenced
within such time after such decision, not less than sixty days, as the Director appoints or as provided in section 141, unless he has appealed to the United States Court of Appeals for the Federal Circuit, and such appeal is pending or has been decided. In such suits the record in the Patent and Trademark Office shall be admitted on motion of either party upon the terms and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court imposes, without prejudice to the right of the parties to take further testimony. The testimony and exhibits of the record in the Patent and Trademark Office when admitted shall have the same effect as if originally taken and produced in the suit.
Such suit may be instituted against the party in interest as shown by the records of the Patent and Trademark Office at the time of the decision complained of, but any party in interest may become a party to the action. If there be adverse parties residing in a plurality of districts not embraced within the same state, or an adverse party residing in a foreign country, the United States District Court for the Eastern District of Virginia shall have jurisdiction and may issue summons against the adverse parties directed to the marshal of any district in which any adverse party resides. Summons against adverse parties residing in foreign countries may be served by publication or otherwise as the court directs. The Director shall not be a necessary party but he shall be notified of the filing of the suit by the clerk of the court in which it is filed and shall have the right to intervene. Judgment of the court in favor of the right of an applicant to a patent shall authorize the Director to issue such patent on the filing in the Patent and Trademark Office of a certified copy of the judgment and on compliance with the requirements of law.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622, sec. 203(c), 98 Stat. 3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 151 Issue of patent.
(a) IN GENERAL.—If it appears that an applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee and any required publication fee, which shall be paid within 3 months thereafter.
(b) EFFECT OF PAYMENT.—Upon payment of this sum the patent may issue, but if payment is not timely made, the application shall be regarded as abandoned.
(Amended July 24, 1965, Public Law 89-83, sec. 4, 79 Stat. 260; Jan. 2, 1975, Public Law 93-601, sec. 3, 88 Stat. 1956; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); Dec. 18, 2012, Public Law 112-211, sec. 202(b)(6), 126 Stat. 1536.)
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35 U.S.C. 152 Issue of patent to assignee.
Patents may be granted to the assignee of the inventor of record in the Patent and Trademark Office, upon the application made and the specification sworn to by the inventor, except as otherwise provided in this title.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)
35 U.S.C. 153 How issued.
Patents shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon and shall be recorded in the Patent and Trademark Office.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec. 13203, 116 Stat. 1902.)
35 U.S.C. 154 Contents and term of patent; provisional rights.
[Editor Note: 35 U.S.C. 154(b)(1) as set forth below is only applicable to patent applications subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 154(b)(1) (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—
(1) CONTENTS.—Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.
(2) TERM.—Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, 365(c), or 386(c) from the date on which the earliest such application was filed.
(3) PRIORITY.—Priority under section 119, 365(a), 365(b), 386(a), or 386(b) shall not be taken into account in determining the term of a patent.
(4) SPECIFICATION AND DRAWING.—A copy of the specification and drawing shall be annexed to the patent and be a part of such patent.
(b) ADJUSTMENT OF PATENT TERM.—
(1) PATENT TERM GUARANTEES.—
(A) GUARANTEE OF PROMPT PATENT AND TRADEMARK OFFICE RESPONSES.— Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to—
(i) provide at least one of the notifications under section 132 or a notice of allowance under section 151 not later than 14 months after—
(I) the date on which an application was filed under section 111(a); or
(II) the date of commencement of the national stage under section 371 in an international application;
(ii) respond to a reply under section 132, or to an appeal taken under section 134, within 4 months after the date on which the reply was filed or the appeal was taken;
(iii) act on an application within 4 months after the date of a decision by the Patent Trial and Appeal Board under section 134 or 135 or a decision by a Federal court under section 141, 145, or 146 in a case in which allowable claims remain in the application; or
(iv) issue a patent within 4 months after the date on which the issue fee was paid under section 151 and all outstanding requirements were satisfied,
the term of the patent shall be extended 1 day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.
(B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY.— Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application under section 111(a) in the United States or, in the case of an international application, the date of commencement of the national stage under section 371 in the international application not including—
(i) any time consumed by continued examination of the application requested by the applicant under section 132(b);
(ii) any time consumed by a proceeding under section 135(a), any time consumed by the imposition of an order under section 181, or any time consumed by appellate review by the Patent Trial and Appeal Board or by a Federal court; or
(iii) any delay in the processing of the application by the United States Patent and Trademark Office requested by the applicant except as permitted by paragraph (3)(C),
the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.
(C) GUARANTEE OR ADJUSTMENTS FOR DELAYS DUE TO DERIVATION PROCEEDINGS,
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§ 154PATENT LAWS
SECRECY ORDERS, AND APPEALS.— Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to—
(i) a proceeding under section 135(a);
(ii) the imposition of an order under section 181; or
(iii) appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability,
the term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.
(2) LIMITATIONS.—
(A) IN GENERAL.— To the extent that periods of delay attributable to grounds specified in paragraph (1) overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.
(B) DISCLAIMED TERM.— No patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.
(C) REDUCTION OF PERIOD OF ADJUSTMENT.—
(i) The period of adjustment of the term of a patent under paragraph (1) shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.
(ii) With respect to adjustments to patent term made under the authority of paragraph (1)(B), an applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of 3 months that are taken to respond to a notice from the Office making any rejection, objection, argument, or other request, measuring such 3-month period from the date the notice was given or mailed to the applicant.
(iii) The Director shall prescribe regulations establishing the circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.
(3) PROCEDURES FOR PATENT TERM ADJUSTMENT DETERMINATION.—
(A) The Director shall prescribe regulations establishing procedures for the application for and determination of patent term adjustments under this subsection.
(B) Under the procedures established under subparagraph (A), the Director shall—
(i) make a determination of the period of any patent term adjustment under this subsection, and shall transmit a notice of that determination no later than the date of issuance of the patent; and
(ii) provide the applicant one opportunity to request reconsideration of any patent term adjustment determination made by the Director.
(C) The Director shall reinstate all or part of the cumulative period of time of an adjustment under paragraph (2)(C) if the applicant, prior to the issuance of the patent, makes a showing that, in spite of all due care, the applicant was unable to respond within the 3-month period, but in no case shall more than three additional months for each such response beyond the original 3-month period be reinstated.
(D) The Director shall proceed to grant the patent after completion of the Director’s determination of a patent term adjustment under the procedures established under this subsection, notwithstanding any appeal taken by the applicant of such determination.
(4) APPEAL OF PATENT TERM ADJUSTMENT DETERMINATION.—
(A) An applicant dissatisfied with the Director's decision on the applicant's request for reconsideration under paragraph (3)(B)(ii) shall have exclusive remedy by a civil action against the Director filed in the United States District Court for the Eastern District of Virginia within 180 days after the date of the Director's decision on the applicant's request for reconsideration. Chapter 7 of title 5 shall apply to such action. Any final judgment resulting in a change to the period of adjustment of the patent term shall be served on the Director, and the Director shall thereafter alter the term of the patent to reflect such change.
(B) The determination of a patent term adjustment under this subsection shall not be subject to appeal or challenge by a third party prior to the grant of the patent.
(c) CONTINUATION.—
(1) DETERMINATION.—The term of a patent that is in force on or that results from an application filed before the date that is 6 months after the date of the enactment of the Uruguay Round Agreements Act shall be the greater of the 20-year term as provided in subsection (a), or 17 years from grant, subject to any terminal disclaimers.
(2) REMEDIES.—The remedies of sections 283, 284, and 285 shall not apply to acts which —
(A) were commenced or for which substantial investment was made before the date that is 6 months after the date of the enactment of the Uruguay Round Agreements Act; and
(B) became infringing by reason of paragraph (1).
(3) REMUNERATION.—The acts referred to in paragraph (2) may be continued only upon the payment of an equitable remuneration to the patentee that is determined in an
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action brought under chapter 28 and chapter 29 (other than those provisions excluded by paragraph (2)).
(d) PROVISIONAL RIGHTS.—
(1) IN GENERAL.— In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122(b), or in the case of an international application filed under the treaty defined in section 351(a) designating the United States under Article 21(2)(a) of such treaty, or an international design application filed under the treaty defined in section 381(a)(1) designating the United States under Article 5 of such treaty, the date of publication of the application, and ending on the date the patent is issued—
(A) (i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or
(ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application; and
(B) had actual notice of the published patent application and, in a case in which the right arising under this paragraph is based upon an international application designating the United States that is published in a language other than English, had a translation of the international application into the English language.
(2) RIGHT BASED ON SUBSTANTIALLY IDENTICAL INVENTIONS.— The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.
(3) TIME LIMITATION ON OBTAINING A REASONABLE ROYALTY.— The right under paragraph (1) to obtain a reasonable royalty shall be available only in an action brought not later than 6 years after the patent is issued. The right under paragraph (1) to obtain a reasonable royalty shall not be affected by the duration of the period described in paragraph (1).
(4) REQUIREMENTS FOR INTERNATIONAL APPLICATIONS—
(A) EFFECTIVE DATE.— The right under paragraph (1) to obtain a reasonable royalty based upon the publication under the treaty defined in section 351(a) of an international application designating the United States shall commence on the date of publication under the treaty of the international application, or, if the publication under the treaty of the international application is in a language other than English, on the date on which the Patent and Trademark Office receives a translation of the publication in the English language.
(B) COPIES.— The Director may require the applicant to provide a copy of the international application and a translation thereof.
(Amended July 24, 1965, Public Law 89-83, sec. 5, 79 Stat. 261; Dec. 12, 1980, Public Law 96-517, sec. 4, 94 Stat. 3018; Aug. 23, 1988, Public Law 100-418, sec. 9002, 102 Stat. 1563; Dec. 8, 1994, Public Law 103-465, sec. 532 (a)(1), 108 Stat. 4983; Oct. 11, 1996, Public Law 104-295, sec. 20(e)(1), 110 Stat. 3529; subsection (b) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-557 (S. 1948 sec. 4402(a)); subsection (d) added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-564 (S. 1948 sec. 4504); subsection (b)(4) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904; subsection (d)(4)(A) amended Nov. 2, 2002, Public Law 107-273, sec. 13204, 116 Stat. 1902; subsection (b)(4)(A) amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective Sept. 16, 2011), 20(j) (effective Sept. 16, 2012), and 3(j) (effective March 16, 2013), 125 Stat. 284; subsection (b) amended Jan. 14, 2013, Public Law 112-274, sec. 1(h), 126 Stat. 2456; subsections (a) and (d)(1) amended Dec. 18, 2012, Public Law 112-211, sec. 102(6) (effective May 13, 2015), 126 Stat. 1531.)
35 U.S.C. 154 (pre-AIA) Contents and term of patent; provisional rights.
[Editor Note: 35 U.S.C. 154(b)(1)(pre-AIA) as set forth below is not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 154(b)(1) for the law otherwise applicable.]
*****
(b) ADJUSTMENT OF PATENT TERM.—
(1) PATENT TERM GUARANTEES.—
(A) GUARANTEE OF PROMPT PATENT AND TRADEMARK OFFICE RESPONSES.— Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to—
(i) provide at least one of the notifications under section 132 or a notice of allowance under section 151 not later than 14 months after—
(I) the date on which an application was filed under section 111(a); or
(II) the date of commencement of the national stage under section 371 in an international application;
(ii) respond to a reply under section 132, or to an appeal taken under section 134, within 4 months after the date on which the reply was filed or the appeal was taken;
(iii) act on an application within 4 months after the date of a decision by the Board of Patent Appeals and Interferences under section 134 or 135 or a decision by a Federal court under section 141, 145, or 146 in a case in which allowable claims remain in the application; or
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PATENT LAWS
(iv) issue a patent within 4 months after the date on which the issue fee was paid under section 151 and all outstanding requirements were satisfied,
the term of the patent shall be extended 1 day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.
(B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY.— Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application under section 111(a) in the United States or, in the case of an international application, the date of commencement of the national stage under section 371 in the international application not including—
(i) any time consumed by continued examination of the application requested by the applicant under section 132(b);
(ii) any time consumed by a proceeding under section 135(a), any time consumed by the imposition of an order under section 181, or any time consumed by appellate review by the Board of Patent Appeals and Interferences or by a Federal court; or
(iii) any delay in the processing of the application by the United States Patent and Trademark Office requested by the applicant except as permitted by paragraph (3)(C),
the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.
(C) GUARANTEE OR ADJUSTMENTS FOR DELAYS DUE TO INTERFERENCES, SECRECY ORDERS, AND APPEALS.— Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to—
(i) a proceeding under section 135(a);
(ii) the imposition of an order under section 181; or
(iii) appellate review by the Board of Patent Appeals and Interferences or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability,
the term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.
*****
(Amended July 24, 1965, Public Law 89-83, sec. 5, 79 Stat. 261; Dec. 12, 1980, Public Law 96-517, sec. 4, 94 Stat. 3018; Aug. 23, 1988, Public Law 100-418, sec. 9002, 102 Stat. 1563; Dec. 8, 1994, Public Law 103-465, sec. 532 (a)(1), 108 Stat.
4983; Oct. 11, 1996, Public Law 104-295, sec. 20(e)(1), 110 Stat. 3529; subsection (b) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-557 (S. 1948 sec. 4402(a)); subsection (d) added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-564 (S. 1948 sec. 4504); subsection (b)(4) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904; subsection (d)(4)(A) amended Nov. 2, 2002, Public Law 107-273, sec. 13204, 116 Stat. 1902; subsection (b)(4)(A) amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 155 [Repealed.]
(Repealed Sept. 16, 2011, Public Law 112-29, sec. 20(k) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 155A [Repealed.]
(Repealed Sept. 16, 2011, Public Law 112-29, sec. 20(k) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 156 Extension of patent term.
(a) The term of a patent which claims a product, a method of using a product, or a method of manufacturing a product shall be extended in accordance with this section from the original expiration date of the patent, which shall include any patent term adjustment granted under section 154(b) if —
(1) the term of the patent has not expired before an application is submitted under subsection (d)(1) for its extension;
(2) the term of the patent has never been extended under subsection (e)(1) of this section;
(3) an application for extension is submitted by the owner of record of the patent or its agent and in accordance with the requirements of paragraphs (1) through (4) of subsection (d);
(4) the product has been subject to a regulatory review period before its commercial marketing or use;
(5)(A) except as provided in subparagraph (B) or (C), the permission for the commercial marketing or use of the product after such regulatory review period is the first permitted commercial marketing or use of the product under the provision of law under which such regulatory review period occurred;
(B) in the case of a patent which claims a method of manufacturing the product which primarily uses recombinant DNA technology in the manufacture of the product, the permission for the commercial marketing or use of the product after such regulatory period is the first permitted commercial marketing or use of a product manufactured under the process claimed in the patent; or
(C) for purposes of subparagraph (A), in the case of a patent which —
(i) claims a new animal drug or a veterinary biological product which (I) is not covered by the claims in any other patent which has been extended, and (II) has received permission for the commercial marketing or use in
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non-food-producing animals and in food-producing animals, and
(ii) was not extended on the basis of the regulatory review period for use in non-food-producing animals,
the permission for the commercial marketing or use of the drug or product after the regulatory review period for use in food-producing animals is the first permitted commercial marketing or use of the drug or product for administration to a food-producing animal.
The product referred to in paragraphs (4) and (5) is hereinafter in this section referred to as the “approved product.”
(b) Except as provided in subsection (d)(5)(F), the rights derived from any patent the term of which is extended under this section shall during the period during which the term of the patent is extended —
(1) in the case of a patent which claims a product, be limited to any use approved for the product —
(A) before the expiration of the term of the patent —
(i) under the provision of law under which the applicable regulatory review occurred, or
(ii) under the provision of law under which any regulatory review described in paragraph (1), (4), or (5) of subsection (g) occurred, and
(B) on or after the expiration of the regulatory review period upon which the extension of the patent was based;
(2) in the case of a patent which claims a method of using a product, be limited to any use claimed by the patent and approved for the product —
(A) before the expiration of the term of the patent —
(i) under any provision of law under which an applicable regulatory review occurred, and
(ii) under the provision of law under which any regulatory review described in paragraph (1), (4), or (5) of subsection (g) occurred, and
(B) on or after the expiration of the regulatory review period upon which the extension of the patent was based; and
(3) in the case of a patent which claims a method of manufacturing a product, be limited to the method of manufacturing as used to make —
(A) the approved product, or
(B) the product if it has been subject to a regulatory review period described in paragraph (1), (4), or (5) of subsection (g).
As used in this subsection, the term “product” includes an approved product.
(c) The term of a patent eligible for extension under subsection (a) shall be extended by the time equal to the regulatory review period for the approved product which period occurs after the date the patent is issued, except that—
(1) each period of the regulatory review period shall be reduced by any period determined under subsection (d)(2)(B) during which the applicant for the patent extension did not act with due diligence during such period of the regulatory review period;
(2) after any reduction required by paragraph (1), the period of extension shall include only one-half of the time remaining in the periods described in paragraphs (1)(B)(i), (2)(B)(i), (3)(B)(i), (4)(B)(i), and (5)(B)(i) of subsection (g);
(3) if the period remaining in the term of a patent after the date of the approval of the approved product under the provision of law under which such regulatory review occurred when added to the regulatory review period as revised under paragraphs (1) and (2) exceeds fourteen years, the period of extension shall be reduced so that the total of both such periods does not exceed fourteen years, and
(4) in no event shall more than one patent be extended under subsection (e)(i) for the same regulatory review period for any product.
(d)(1) To obtain an extension of the term of a patent under this section, the owner of record of the patent or its agent shall submit an application to the Director. Except as provided in paragraph (5), such an application may only be submitted within the sixty-day period beginning on the date the product received permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use. The application shall contain—
(A) the identity of the approved product and the Federal statute under which regulatory review occurred;
(B) the identity of the patent for which an extension is being sought and the identity of each claim of such patent which claims the approved product or a method of using or manufacturing the approved product;
(C) information to enable the Director to determine under subsections (a) and (b) the eligibility of a patent for extension and the rights that will be derived from the extension and information to enable the Director and the Secretary of Health and Human Services or the Secretary of Agriculture to determine the period of the extension under subsection (g);
(D) a brief description of the activities undertaken by the applicant during the applicable regulatory review period with respect to the approved product and the significant dates applicable to such activities; and
(E) such patent or other information as the Director may require.
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For purposes of determining the date on which a product receives permission under the second sentence of this paragraph, if such permission is transmitted after 4:30 P.M., Eastern Time, on a business day, or is transmitted on a day that is not a business day, the product shall be deemed to receive such permission on the next business day. For purposes of the preceding sentence, the term "business day" means any Monday, Tuesday, Wednesday, Thursday, or Friday, excluding any legal holiday under section 6103 of title 5.
(2)(A) Within 60 days of the submittal of an application for extension of the term of a patent under paragraph (1), the Director shall notify —
(i) the Secretary of Agriculture if the patent claims a drug product or a method of using or manufacturing a drug product and the drug product is subject to the Virus-Serum-Toxin Act, and
(ii) the Secretary of Health and Human Services if the patent claims any other drug product, a medical device, or a food additive or color additive or a method of using or manufacturing such a product, device, or additive and if the product, device, and additive are subject to the Federal Food, Drug and Cosmetic Act, of the extension application and shall submit to the Secretary who is so notified a copy of the application. Not later than 30 days after the receipt of an application from the Director, the Secretary reviewing the application shall review the dates contained in the application pursuant to paragraph (1)(C) and determine the applicable regulatory review period, shall notify the Director of the determination, and shall publish in the Federal Register a notice of such determination.
(B)(i) If a petition is submitted to the Secretary making the determination under subparagraph (A), not later than 180 days after the publication of the determination under subparagraph (A), upon which it may reasonably be determined that the applicant did not act with due diligence during the applicable regulatory review period, the Secretary making the determination shall, in accordance with regulations promulgated by the Secretary, determine if the applicant acted with due diligence during the applicable regulatory review period. The Secretary making the determination shall make such determination not later than 90 days after the receipt of such a petition. For a drug product, device, or additive subject to the Federal Food, Drug, and Cosmetic Act or the Public Health Service Act, the Secretary may not delegate the authority to make the determination prescribed by this clause to an office below the Office of the Commissioner of Food and Drugs. For a product subject to the Virus-Serum-Toxin Act, the Secretary of Agriculture may not delegate the authority to make the determination prescribed by this clause to an office below the Office of the Assistant Secretary for Marketing and Inspection Services.
(ii) The Secretary making a determination under clause (i) shall notify the Director of the determination and shall publish in the Federal Register a notice of such determination together with the factual and legal basis for such determination. Any interested person may request, within the
60-day period beginning on the publication of a determination, the Secretary making the determination to hold an informal hearing on the determination. If such a request is made within such period, such Secretary shall hold such hearing not later than 30 days after the date of the request, or at the request of the person making the request, not later than 60 days after such date. The Secretary who is holding the hearing shall provide notice of the hearing to the owner of the patent involved and to any interested person and provide the owner and any interested person an opportunity to participate in the hearing. Within 30 days after the completion of the hearing, such Secretary shall affirm or revise the determination which was the subject of the hearing and notify the Director of any revision of the determination and shall publish any such revision in the Federal Register.
(3) For the purposes of paragraph (2)(B), the term “due diligence” means that degree of attention, continuous directed effort, and timeliness as may reasonably be expected from, and are ordinarily exercised by, a person during a regulatory review period.
(4) An application for the extension of the term of a patent is subject to the disclosure requirements prescribed by the Director.
(5)(A) If the owner of record of the patent or its agent reasonably expects that the applicable regulatory review period described in paragraphs (1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection (g) that began for a product that is the subject of such patent may extend beyond the expiration of the patent term in effect, the owner or its agent may submit an application to the Director for an interim extension during the period beginning 6 months, and ending 15 days before such term is due to expire. The application shall contain—
(i) the identity of the product subject to regulating review and the Federal statute under which such review is occurring;
(ii) the identity of the patent for which interim extension is being sought and the identity of each claim of such patent which claims the product under regulatory review or a method of using or manufacturing the product;
(iii) information to enable the Director to determine under subsection (a)(1), (2), and (3) the eligibility of a patent for extension;
(iv) a brief description of the activities undertaken by the applicant during the applicable regulatory review period to date with respect to the product under review and the significant dates applicable to such activities; and
(v) such patent or other information as the Director may require.
(B) If the Director determines that, except for permission to market or use the product commercially, the patent would be eligible for an extension of the patent term under this section, the Director shall publish in the Federal Register a notice of such determination, including the identity of the product under regulatory review, and shall issue to the applicant a
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certificate of interim extension for a period of not more than 1 year.
(C) The owner of record of a patent, or its agent, for which an interim extension has been granted under subparagraph (B), may apply for not more than 4 subsequent interim extensions under this paragraph, except that, in the case of a patent subject to subsection (g)(6)(C), the owner of record of the patent, or its agent, may apply for only 1 subsequent interim extension under this paragraph. Each such subsequent application shall be made during the period beginning 60 days before, and ending 30 days before, the expiration of the preceding interim extension.
(D) Each certificate of interim extension under this paragraph shall be recorded in the official file of the patent and shall be considered part of the original patent.
(E) Any interim extension granted under this paragraph shall terminate at the end of the 60-day period beginning on the day on which the product involved receives permission for commercial marketing or use, except that, if within that 60-day period, the applicant notifies the Director of such permission and submits any additional information under paragraph (1) of this subsection not previously contained in the application for interim extension, the patent shall be further extended, in accordance with the provisions of this section—
(i) for not to exceed 5 years from the date of expiration of the original patent term; or
(ii) if the patent is subject to subsection (g)(6)(C), from the date on which the product involved receives approval for commercial marketing or use.
(F) The rights derived from any patent the term of which is extended under this paragraph shall, during the period of interim extension—
(i) in the case of a patent which claims a product, be limited to any use then under regulatory review;
(ii) in the case of a patent which claims a method of using a product, be limited to any use claimed by the patent then under regulatory review; and
(iii) in the case of a patent which claims a method of manufacturing a product, be limited to the method of manufacturing as used to make the product then under regulatory review.
(e)(1) A determination that a patent is eligible for extension may be made by the Director solely on the basis of the representations contained in the application for the extension. If the Director determines that a patent is eligible for extension under subsection (a) and that the requirements of paragraphs (1) through (4) of subsection (d) have been complied with, the Director shall issue to the applicant for the extension of the term of the patent a certificate of extension, under seal, for the period prescribed by subsection (c). Such certificate shall be recorded in the official file of the patent and shall be considered as part of the original patent.
(2) If the term of a patent for which an application has been submitted under subsection (d)(1) would expire before a certificate of extension is issued or denied under paragraph (1)
respecting the application, the Director shall extend, until such determination is made, the term of the patent for periods of up to one year if he determines that the patent is eligible for extension.
(f) For purposes of this section:
(1) The term “product” means:
(A) A drug product.
(B) Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act.
(2) The term “drug product” means the active ingredient of—
(A) a new drug, antibiotic drug, or human biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Public Health Service Act), or
(B) a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Virus-Serum-Toxin Act) which is not primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques
including any salt or ester of the active ingredient, as a single entity or in combination with another active ingredient.
(3) The term “major health or environmental effects test” means a test which is reasonably related to the evaluation of the health or environmental effects of a product, which requires at least six months to conduct, and the data from which is submitted to receive permission for commercial marketing or use. Periods of analysis or evaluation of test results are not to be included in determining if the conduct of a test required at least six months.
(4)(A) Any reference to section 351 is a reference to section 351 of the Public Health Service Act.
(B) Any reference to section 503, 505, 512, or 515 is a reference to section 503, 505, 512, or 515 of the Federal Food, Drug and Cosmetic Act.
(C) Any reference to the Virus-Serum-Toxin Act is a reference to the Act of March 4, 1913 (21 U.S.C. 151 - 158).
(5) The term “informal hearing” has the meaning prescribed for such term by section 201(y) of the Federal Food, Drug and Cosmetic Act.
(6) The term “patent” means a patent issued by the United States Patent and Trademark Office.
(7) The term “date of enactment” as used in this section means September 24, 1984, for human drug product, a medical device, food additive, or color additive.
(8) The term “date of enactment” as used in this section means the date of enactment of the Generic Animal Drug and Patent Term Restoration Act for an animal drug or a veterinary biological product.
(g) For purposes of this section, the term “regulatory review period” has the following meanings:
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(1)(A) In the case of a product which is a new drug, antibiotic drug, or human biological product, the term means the period described in subparagraph (B) to which the limitation described in paragraph (6) applies.
(B) The regulatory review period for a new drug, antibiotic drug, or human biological product is the sum of —
(i) the period beginning on the date an exemption under subsection (i) of section 505 or subsection (d) of section 507 became effective for the approved product and ending on the date an application was initially submitted for such drug product under section 351, 505, or 507, and
(ii) the period beginning on the date the application was initially submitted for the approved product under section 351, subsection (b) of section 505, or section 507 and ending on the date such application was approved under such section.
(2)(A) In the case of a product which is a food additive or color additive, the term means the period described in subparagraph (B) to which the limitation described in paragraph (6) applies.
(B) The regulatory review period for a food or color additive is the sum of —
(i) the period beginning on the date a major health or environmental effects test on the additive was initiated and ending on the date a petition was initially submitted with respect to the product under the Federal Food, Drug, and Cosmetic Act requesting the issuance of a regulation for use of the product, and
(ii) the period beginning on the date a petition was initially submitted with respect to the product under the Federal Food, Drug, and Cosmetic Act requesting the issuance of a regulation for use of the product, and ending on the date such regulation became effective or, if objections were filed to such regulation, ending on the date such objections were resolved and commercial marketing was permitted or, if commercial marketing was permitted and later revoked pending further proceedings as a result of such objections, ending on the date such proceedings were finally resolved and commercial marketing was permitted.
(3)(A) In the case of a product which is a medical device, the term means the period described in subparagraph (B) to which the limitation described in paragraph (6) applies.
(B) The regulatory review period for a medical device is the sum of —
(i) the period beginning on the date a clinical investigation on humans involving the device was begun and ending on the date an application was initially submitted with respect to the device under section 515, and
(ii) the period beginning on the date an application was initially submitted with respect to the device under section 515 and ending on the date such application was approved under such Act or the period beginning on the date a notice of completion of a product development protocol was
initially submitted under section 515(f)(5) and ending on the date the protocol was declared completed under section 515(f)(6).
(4)(A) In the case of a product which is a new animal drug, the term means the period described in subparagraph (B) to which the limitation described in paragraph (6) applies.
(B) The regulatory review period for a new animal drug product is the sum of —
(i) the period beginning on the earlier of the date a major health or environmental effects test on the drug was initiated or the date an exemption under subsection (j) of section 512 became effective for the approved new animal drug product and ending on the date an application was initially submitted for such animal drug product under section 512, and
(ii) the period beginning on the date the application was initially submitted for the approved animal drug product under subsection (b) of section 512 and ending on the date such application was approved under such section.
(5)(A) In the case of a product which is a veterinary biological product, the term means the period described in subparagraph (B) to which the limitation described in paragraph (6) applies.
(B) The regulatory period for a veterinary biological product is the sum of —
(i) the period beginning on the date the authority to prepare an experimental biological product under the Virus- Serum-Toxin Act became effective and ending on the date an application for a license was submitted under the Virus-Serum-Toxin Act, and
(ii) the period beginning on the date an application for a license was initially submitted for approval under the Virus-Serum-Toxin Act and ending on the date such license was issued.
(6) A period determined under any of the preceding paragraphs is subject to the following limitations:
(A) If the patent involved was issued after the date of the enactment of this section, the period of extension determined on the basis of the regulatory review period determined under any such paragraph may not exceed five years.
(B) If the patent involved was issued before the date of the enactment of this section and —
(i) no request for an exemption described in paragraph (1)(B) or (4)(B) was submitted and no request for the authority described in paragraph (5)(B) was submitted,
(ii) no major health or environment effects test described in paragraph (2)(B) or (4)(B) was initiated and no petition for a regulation or application for registration described in such paragraph was submitted, or
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(iii) no clinical investigation described in paragraph (3) was begun or product development protocol described in such paragraph was submitted, before such date for the approved product the period of extension determined on the basis of the regulatory review period determined under any such paragraph may not exceed five years.
(C) If the patent involved was issued before the date of the enactment of this section and if an action described in subparagraph (B) was taken before the date of enactment of this section with respect to the approved product and the commercial marketing or use of the product has not been approved before such date, the period of extension determined on the basis of the regulatory review period determined under such paragraph may not exceed two years or in the case of an approved product which is a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act or the Virus-Serum-Toxin Act), three years.
(h) The Director may establish such fees as the Director determines appropriate to cover the costs to the Office of receiving and acting upon applications under this section.
(Added Sept. 24, 1984, Public Law 98-417, sec. 201(a), 98 Stat. 1598; amended Nov. 16, 1988, Public Law 100-670, sec. 201(a)-(h), 102 Stat. 3984; Dec. 3, 1993, Public Law 103-179, secs. 5, 6, 107 Stat. 2040, 2042; Dec. 8, 1994, Public Law 103-465, sec. 532(c)(1), 108 Stat. 4987; subsection (f) amended Nov. 21, 1997, Public Law 105-115, sec. 125(b)(2)(P), 111 Stat. 2326; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-560, 582 (S. 1948 secs. 4404 and 4732(a)(10)(A)); subsections (b)(3)(B), (d)(2)(B)(i), and (g)(6)(B)(iii) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904; subsection (d)(1) amended Sept. 16, 2011, Public Law 112-29, sec. 37, 125 Stat. 284.)
35 U.S.C. 157 [Repealed.]
(Repealed Sept. 16, 2011, Public Law 112-29, sec. 3(e) (effective March 16, 2013), 125 Stat. 284.)
35 U.S.C. 157 (pre-AIA) Statutory invention registration.
[Editor Note: Not applicable to requests for statutory invention registrations filed on or after March 16, 2013. 35 U.S.C. 157 repealed with regard to such requests.]
(a) Notwithstanding any other provision, the Director is authorized to publish a statutory invention registration containing the specification and drawings of a regularly filed application for a patent without examination if the applicant —
(1) meets the requirements of section 112;
(2) has complied with the requirements for printing, as set forth in regulations of the Director;
(3) waives the right to receive a patent on the invention within such period as may be prescribed by the Director; and
(4) pays application, publication, and other processing fees established by the Director.
If an interference is declared with respect to such an application, a statutory invention registration may not be published unless the issue of priority of invention is finally determined in favor of the applicant.
(b) The waiver under subsection (a)(3) of this section by an applicant shall take effect upon publication of the statutory invention registration.
(c) A statutory invention registration published pursuant to this section shall have all of the attributes specified for patents in this title except those specified in section 183 and sections 271 through 289. A statutory invention registration shall not have any of the attributes specified for patents in any other provision of law other than this title. A statutory invention registration published pursuant to this section shall give appropriate notice to the public, pursuant to regulations which the Director shall issue, of the preceding provisions of this subsection. The invention with respect to which a statutory invention certificate is published is not a patented invention for purposes of section 292.
(d) The Director shall report to the Congress annually on the use of statutory invention registrations. Such report shall include an assessment of the degree to which agencies of the federal government are making use of the statutory invention registration system, the degree to which it aids the management of federally developed technology, and an assessment of the cost savings to the Federal Government of the uses of such procedures.
(Added Nov. 8, 1984, Public Law 98-622, sec. 102(a), 98 Stat. 3383; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582, 583 (S. 1948 secs. 4732(a)(10)(A) and 4732(a)(11)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 161 Patents for plants.
Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided.
(Amended Sept. 3, 1954, 68 Stat. 1190.)
35 U.S.C. 162 Description, claim.
No plant patent shall be declared invalid for noncompliance with section 112 if the description is as complete as is reasonably possible.
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The claim in the specification shall be in formal terms to the plant shown and described.
(Amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 163 Grant.
In the case of a plant patent, the grant shall include the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United States.
(Amended Oct. 27, 1998, Public Law 105-289, sec. 3, 112 Stat. 2781.)
35 U.S.C. 164 Assistance of the Department of Agriculture.
The President may by Executive order direct the Secretary of Agriculture, in accordance with the requests of the Director, for the purpose of carrying into effect the provisions of this title with respect to plants (1) to furnish available information of the Department of Agriculture, (2) to conduct through the appropriate bureau or division of the Department research upon special problems, or (3) to detail to the Director officers and employees of the Department.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 171 Patents for designs.
(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
(c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.
(Amended Dec. 18, 2012, Public Law 112-211, sec. 202(a), 126 Stat. 1535.)
35 U.S.C. 172 Right of priority.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 172 (pre-AIA) for the law otherwise applicable.]
The right of priority provided for by subsections (a) through (d) of section 119 shall be six months in the case of designs. The right of priority provided for by section 119(e) shall not apply to designs.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 532(c)(2), 108 Stat. 4987; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012) and sec. 3(g)(effective March 16, 2013), 125 Stat. 284.)
35 U.S.C. 172 (pre-AIA) Right of priority.
[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 172 for the law otherwise applicable.]
The right of priority provided for by subsections (a) through (d) of section 119 and the time specified in section 102(d) shall be six months in the case of designs. The right of priority provided for by section 119(e) shall not apply to designs.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 532(c)(2), 108 Stat. 4987; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 173 Term of design patent.
Patents for designs shall be granted for the term of 15 years from the date of grant.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 16, 96 Stat. 321; Dec. 8, 1994, Public Law 103-465, sec. 532(c)(3), 108 Stat. 4987; amended Dec. 18, 2012, Public Law 112-211, sec. 102(7) (effective May 13, 2015), 126 Stat. 1532.)
35 U.S.C. 181 Secrecy of certain inventions and withholding of patent.
Whenever publication or disclosure by the publication of an application or by the grant of a patent on an invention in which the Government has a property interest might, in the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of an application or the grant of a patent therefor under the conditions set forth hereinafter.
Whenever the publication or disclosure of an invention by the publication of an application or by the granting of a patent, in which the Government does not have a property interest, might, in the opinion of the Commissioner of Patents, be detrimental to the national security, he shall make the application for patent in which such invention is disclosed available for inspection to the Atomic Energy Commission, the Secretary of Defense, and the chief officer of any other department or agency of the Government designated by the President as a defense agency of the United States.
Each individual to whom the application is disclosed shall sign a dated acknowledgment thereof, which acknowledgment shall be entered in the file of the application. If, in the opinion of the Atomic Energy Commission, the Secretary of a Defense Department, or the chief officer of another department or agency so designated, the publication or disclosure of the invention by the publication of an application or by the granting of a patent
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therefor would be detrimental to the national security, the Atomic Energy Commission, the Secretary of a Defense Department, or such other chief officer shall notify the Commissioner of Patents and the Commissioner of Patents shall order that the invention be kept secret and shall withhold the publication of the application or the grant of a patent for such period as the national interest requires, and notify the applicant thereof. Upon proper showing by the head of the department or agency who caused the secrecy order to be issued that the examination of the application might jeopardize the national interest, the Commissioner of Patents shall thereupon maintain the application in a sealed condition and notify the applicant thereof. The owner of an application which has been placed under a secrecy order shall have a right to appeal from the order to the Secretary of Commerce under rules prescribed by him.
An invention shall not be ordered kept secret and the publication of an application or the grant of a patent withheld for a period of more than one year. The Commissioner of Patents shall renew the order at the end thereof, or at the end of any renewal period, for additional periods of one year upon notification by the head of the department or the chief officer of the agency who caused the order to be issued that an affirmative determination has been made that the national interest continues to so require. An order in effect, or issued, during a time when the United States is at war, shall remain in effect for the duration of hostilities and one year following cessation of hostilities. An order in effect, or issued, during a national emergency declared by the President shall remain in effect for the duration of the national emergency and six months thereafter. The Commissioner of Patents may rescind any order upon notification by the heads of the departments and the chief officers of the agencies who caused the order to be issued that the publication or disclosure of the invention is no longer deemed detrimental to the national security.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs. 4507(7) and 4732(a)(10)(B)).)
35 U.S.C. 182 Abandonment of invention for unauthorized disclosure.
The invention disclosed in an application for patent subject to an order made pursuant to section 181 may be held abandoned upon its being established by the Commissioner of Patents that in violation of said order the invention has been published or disclosed or that an application for a patent therefor has been filed in a foreign country by the inventor, his successors, assigns, or legal representatives, or anyone in privity with him or them, without the consent of the Commissioner of Patents. The abandonment shall be held to have occurred as of the time of violation. The consent of the Commissioner of Patents shall not be given without the concurrence of the heads of the departments and the chief officers of the agencies who caused the order to be issued. A holding of abandonment shall constitute forfeiture by the applicant, his successors, assigns, or legal representatives, or anyone in privity with him or them, of all claims against the United States based upon such invention.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(B)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 183 Right to compensation.
An applicant, his successors, assigns, or legal representatives, whose patent is withheld as herein provided, shall have the right, beginning at the date the applicant is notified that, except for such order, his application is otherwise in condition for allowance, or February 1, 1952, whichever is later, and ending six years after a patent is issued thereon, to apply to the head of any department or agency who caused the order to be issued for compensation for the damage caused by the order of secrecy and/or for the use of the invention by the Government, resulting from his disclosure. The right to compensation for use shall begin on the date of the first use of the invention by the Government. The head of the department or agency is authorized, upon the presentation of a claim, to enter into an agreement with the applicant, his successors, assigns, or legal representatives, in full settlement for the damage and/or use. This settlement agreement shall be conclusive for all purposes notwithstanding any other provision of law to the contrary. If full settlement of the claim cannot be effected, the head of the department or agency may award and pay to such applicant, his successors, assigns, or legal representatives, a sum not exceeding 75 per centum of the sum which the head of the department or agency considers just compensation for the damage and/or use. A claimant may bring suit against the United States in the United States Court of Federal Claims or in the District Court of the United States for the district in which such claimant is a resident for an amount which when added to the award shall constitute just compensation for the damage and/or use of the invention by the Government. The owner of any patent issued upon an application that was subject to a secrecy order issued pursuant to section 181, who did not apply for compensation as above provided, shall have the right, after the date of issuance of such patent, to bring suit in the United States Court of Federal Claims for just compensation for the damage caused by reason of the order of secrecy and/or use by the Government of the invention resulting from his disclosure. The right to compensation for use shall begin on the date of the first use of the invention by the Government. In a suit under the provisions of this section the United States may avail itself of all defenses it may plead in an action under section 1498 of title 28. This section shall not confer a right of action on anyone or his successors, assigns, or legal representatives who, while in the full-time employment or service of the United States, discovered, invented, or developed the invention on which the claim is based.
(Amended Apr. 2, 1982, Public Law 97-164, sec. 160(a)(12), 96 Stat. 48; Oct. 29, 1992, Public Law 102-572, sec. 902 (b)(1), 106 Stat. 4516; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 184 Filing of application in foreign country.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16, 2012. See 35 U.S.C. 184 (pre-AIA) for the law otherwise applicable.]
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(a) FILING IN FOREIGN COUNTRY.—Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and the application does not disclose an invention within the scope of section 181.
(b) APPLICATION.—The term “application” when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.
(c) SUBSEQUENT MODIFICATIONS,AMENDMENTS, AND SUPPLEMENTS.—The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not change the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181. In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United States application was not required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require the United States application to have been made available for inspection under such section 181.
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(1), 102 Stat. 1567; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(B)); amended Sept. 16, 2011, Public Law 112-29, secs. 20(b) and (j) (effective Sept. 16, 2012), 125 Stat. 284)
35 U.S.C. 184 (pre-AIA) Filing of application in foreign country.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 184 for the law otherwise applicable.]
Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 of this title without the concurrence of the head of the departments and the chief officers of the agencies who caused
the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and without deceptive intent and the application does not disclose an invention within the scope of section 181 of this title.
The term “application” when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.
The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under section 181 of this title and if such modifications, amendments, and supplements do not change the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181. In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United States application was not required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require the United States application to have been made available for inspection under such section 181.
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(1), 102 Stat. 1567; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(B)).)
35 U.S.C. 185 Patent barred for filing without license.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16, 2012. See 35 U.S.C. 185 (pre-AIA) for the law otherwise applicable.]
Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error, and the patent does not disclose subject matter within the scope of section 181.
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(2), 102 Stat. 1568; Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904; amended Sept. 16, 2011, Public Law 112-29, secs. 20(c) and (j) (effective Sept. 16, 2012), 125 Stat. 284.)
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35 U.S.C. 185 (pre-AIA) Patent barred for filing without license.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 185 for the law otherwise applicable.]
Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184 of this title, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error and without deceptive intent, and the patent does not disclose subject matter within the scope of section 181 of this title.
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(2), 102 Stat. 1568; Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904.)
35 U.S.C. 186 Penalty.
Whoever, during the period or periods of time an invention has been ordered to be kept secret and the grant of a patent thereon withheld pursuant to section 181, shall, with knowledge of such order and without due authorization, willfully publish or disclose or authorize or cause to be published or disclosed the invention, or material information with respect thereto, or whoever willfully, in violation of the provisions of section 184, shall file or cause or authorize to be filed in any foreign country an application for patent or for the registration of a utility model, industrial design, or model in respect of any invention made in the United States, shall, upon conviction, be fined not more than $10,000 or imprisoned for not more than two years, or both.
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(3), 102 Stat. 1568; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 187 Nonapplicability to certain persons.
The prohibitions and penalties of this chapter shall not apply to any officer or agent of the United States acting within the scope of his authority, nor to any person acting upon his written instructions or permission.
35 U.S.C. 188 Rules and regulations, delegation of power.
The Atomic Energy Commission, the Secretary of a defense department, the chief officer of any other department or agency of the Government designated by the President as a defense agency of the United States, and the Secretary of Commerce, may separately issue rules and regulations to enable the respective department or agency to carry out the provisions of this chapter, and may delegate any power conferred by this chapter.
35 U.S.C. 200 Policy and objective.
It is the policy and objective of the Congress to use the patent system to promote the utilization of inventions arising from federally supported research or development; to encourage maximum participation of small business firms in federally supported research and development efforts; to promote collaboration between commercial concerns and nonprofit organizations, including universities; to ensure that inventions made by nonprofit organizations and small business firms are used in a manner to promote free competition and enterprise without unduly encumbering future research and discovery; to promote the commercialization and public availability of inventions made in the United States by United States industry and labor; to ensure that the Government obtains sufficient rights in federally supported inventions to meet the needs of the Government and protect the public against nonuse or unreasonable use of inventions; and to minimize the costs of administering policies in this area.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3018; amended Nov. 1, 2000, Public Law 106-404, sec. 5, 114 Stat. 1745.)
35 U.S.C. 201 Definitions.
As used in this chapter —
(a) The term “Federal agency” means any executive agency as defined in section 105 of title 5, and the military departments as defined by section 102 of title 5.
(b) The term “funding agreement” means any contract, grant, or cooperative agreement entered into between any Federal agency, other than the Tennessee Valley Authority, and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the Federal Government. Such term includes any assignment, substitution of parties, or subcontract of any type entered into for the performance of experimental, developmental, or research work under a funding agreement as herein defined.
(c) The term “contractor” means any person, small business firm, or nonprofit organization that is a party to a funding agreement.
(d) The term “invention” means any invention or discovery which is or may be patentable or otherwise protectable under this title or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act (7 U.S.C. 2321, et seq.).
(e) The term “subject invention” means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement: Provided, That in the case of a variety of plant, the date of determination (as defined in section 41(d) of the Plant Variety Protection Act (7 U.S.C. 2401(d)) must also occur during the period of contract performance.
(f) The term “practical application” means to manufacture in the case of a composition or product, to practice in the case of a process or method, or to operate in the case of a machine or system; and, in each case, under such conditions as to establish that the invention is being utilized and that its benefits
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are to the extent permitted by law or Government regulations available to the public on reasonable terms.
(g) The term “made” when used in relation to any invention means the conception or first actual reduction to practice of such invention.
(h) The term “small business firm” means a small business concern as defined at section 2 of Public Law 85-536 (15 U.S.C. 632) and implementing regulations of the Administrator of the Small Business Administration.
(i) The term “nonprofit organization” means universities and other institutions of higher education or an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)) or any nonprofit scientific or educational organization qualified under a State nonprofit organization statute.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3019; subsection (d) amended Nov. 8, 1984, Public Law 98-620, sec. 501(1), 98 Stat. 3364; subsection (e) amended Nov. 8, 1984, Public Law 98-620, sec. 501(2), 98 Stat. 3364; subsection (i) amended Oct. 22, 1986, Public Law 99-514, sec. 2, 100 Stat. 2095; subsection (a) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904.)
35 U.S.C. 202 Disposition of rights.
[Editor Note: 35 U.S.C. 202(c)(2) and (c)(3) as set forth below are applicable only to patent applications subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See pre-AIA 35 U.S.C. 202 (c)(2) and (c)(3) for the law otherwise applicable.]
(a) Each nonprofit organization or small business firm may, within a reasonable time after disclosure as required by paragraph (c)(1) of this section, elect to retain title to any subject invention: Provided, however, That a funding agreement may provide otherwise (i) when the contractor is not located in the United States or does not have a place of business located in the United States or is subject to the control of a foreign government, (ii) in exceptional circumstances when it is determined by the agency that restriction or elimination of the right to retain title to any subject invention will better promote the policy and objectives of this chapter, (iii) when it is determined by a Government authority which is authorized by statute or Executive order to conduct foreign intelligence or counterintelligence activities that the restriction or elimination of the right to retain title to any subject invention is necessary to protect the security of such activities, or (iv) when the funding agreement includes the operation of a Government-owned, contractor-operated facility of the Department of Energy primarily dedicated to that Department’s naval nuclear propulsion or weapons related programs and all funding agreement limitations under this subparagraph on the contractor’s right to elect title to a subject invention are limited to inventions occurring under the above two programs of the Department of Energy. The rights of the nonprofit organization or small business firm shall be subject to the provisions of paragraph (c) of this section and the other provisions of this chapter.
(b)(1) The rights of the Government under subsection (a) shall not be exercised by a Federal agency unless it first determines that at least one of the conditions identified in clauses (i) through (iii) of subsection (a) exists. Except in the case of subsection (a)(iii), the agency shall file with the Secretary of Commerce, within thirty days after the award of the applicable funding agreement, a copy of such determination. In the case of a determination under subsection (a)(ii), the statement shall include an analysis justifying the determination. In the case of determinations applicable to funding agreements with small business firms, copies shall also be sent to the Chief Counsel for Advocacy of the Small Business Administration. If the Secretary of Commerce believes that any individual determination or pattern of determinations is contrary to the policies and objectives of this chapter or otherwise not in conformance with this chapter, the Secretary shall so advise the head of the agency concerned and the Administrator of the Office of Federal Procurement Policy, and recommend corrective actions.
(2) Whenever the Administrator of the Office of Federal Procurement Policy has determined that one or more Federal agencies are utilizing the authority of clause (i) or (ii) of subsection (a) of this section in a manner that is contrary to the policies and objectives of this chapter the Administrator is authorized to issue regulations describing classes of situations in which agencies may not exercise the authorities of those clauses.
(3) If the contractor believes that a determination is contrary to the policies and objectives of this chapter or constitutes an abuse of discretion by the agency, the determination shall be subject to section 203(b) .
(c) Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following:
(1) That the contractor disclose each subject invention to the Federal agency within a reasonable time after it becomes known to contractor personnel responsible for the administration of patent matters, and that the Federal Government may receive title to any subject invention not disclosed to it within such time.
(2) That the contractor make a written election within two years after disclosure to the Federal agency (or such additional time as may be approved by the Federal agency) whether the contractor will retain title to a subject invention: Provided, That in any case where the 1-year period referred to in section 102(b) would end before the end of that 2-year period, the period for election may be shortened by the Federal agency to a date that is not more than sixty days before the end of that 1-year period: And provided further, That the Federal Government may receive title to any subject invention in which the contractor does not elect to retain rights or fails to elect rights within such times.
(3) That a contractor electing rights in a subject invention agrees to file a patent application prior to the expiration of the 1-year period referred to in section 102(b), and shall thereafter file corresponding patent applications in other countries in which it wishes to retain title within reasonable times, and that the Federal Government may receive title to any subject inventions in the United States or other countries in
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which the contractor has not filed patent applications on the subject invention within such times.
(4) With respect to any invention in which the contractor elects rights, the Federal agency shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world: Provided, That the funding agreement may provide for such additional rights, including the right to assign or have assigned foreign patent rights in the subject invention, as are determined by the agency as necessary for meeting the obligations of the United States under any treaty, international agreement, arrangement of cooperation, memorandum of understanding, or similar arrangement, including military agreements relating to weapons development and production.
(5) The right of the Federal agency to require periodic reporting on the utilization or efforts at obtaining utilization that are being made by the contractor or his licensees or assignees: Provided, That any such information, as well as any information on utilization or efforts at obtaining utilization obtained as part of a proceeding under section 203 of this chapter shall be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5.
(6) An obligation on the part of the contractor, in the event a United States patent application is filed by or on its behalf or by any assignee of the contractor, to include within the specification of such application and any patent issuing thereon, a statement specifying that the invention was made with Government support and that the Government has certain rights in the invention.
(7) In the case of a nonprofit organization, (A) a prohibition upon the assignment of rights to a subject invention in the United States without the approval of the Federal agency, except where such assignment is made to an organization which has as one of its primary functions the management of inventions (provided that such assignee shall be subject to the same provisions as the contractor); (B) a requirement that the contractor share royalties with the inventor; (C) except with respect to a funding agreement for the operation of a Government-owned-contractor-operated facility, a requirement that the balance of any royalties or income earned by the contractor with respect to subject inventions, after payment of expenses (including payments to inventors) incidental to the administration of subject inventions, be utilized for the support of scientific research, or education; (D) a requirement that, except where it is determined to be infeasible following a reasonable inquiry, a preference in the licensing of subject inventions shall be given to small business firms; and (E) with respect to a funding agreement for the operation of a Government-owned-contractor-operator facility, requirements (i) that after payment of patenting costs, licensing costs, payments to inventors, and other expenses incidental to the administration of subject inventions, 100 percent of the balance of any royalties or income earned and retained by the contractor during any fiscal year, up to an amount equal to 5 percent of the annual budget of the facility, shall be used by the contractor for scientific research, development, and education consistent with the research and development mission and objectives of the
facility, including activities that increase the licensing potential of other inventions of the facility provided that if said balance exceeds 5 percent of the annual budget of the facility, that 15 percent of such excess shall be paid to the Treasury of the United States and the remaining 85 percent shall be used for the same purposes described above in this clause; and (ii) that, to the extent it provides the most effective technology transfer, the licensing of subject inventions shall be administered by contractor employees on location at the facility.
(8) The requirements of sections 203 and 204 of this chapter.
(d) If a contractor does not elect to retain title to a subject invention in cases subject to this section, the Federal agency may consider and after consultation with the contractor grant requests for retention of rights by the inventor subject to the provisions of this Act and regulations promulgated hereunder.
(e) In any case when a Federal employee is a coinventor of any invention made with a nonprofit organization, a small business firm, or a non-Federal inventor, the Federal agency employing such coinventor may, for the purpose of consolidating rights in the invention and if it finds that it would expedite the development of the invention—
(1) license or assign whatever rights it may acquire in the subject invention to the nonprofit organization, small business firm, or non-Federal inventor in accordance with the provisions of this chapter; or
(2) acquire any rights in the subject invention from the nonprofit organization, small business firm, or non-Federal inventor, but only to the extent the party from whom the rights are acquired voluntarily enters into the transaction and no other transaction under this chapter is conditioned on such acquisition.
(f)(1) No funding agreement with a small business firm or nonprofit organization shall contain a provision allowing a Federal agency to require the licensing to third parties of inventions owned by the contractor that are not subject inventions unless such provision has been approved by the head of the agency and a written justification has been signed by the head of the agency. Any such provision shall clearly state whether the licensing may be required in connection with the practice of a subject invention, a specifically identified work object, or both. The head of the agency may not delegate the authority to approve provisions or sign justifications required by this paragraph.
(2) A Federal agency shall not require the licensing of third parties under any such provision unless the head of the agency determines that the use of the invention by others is necessary for the practice of a subject invention or for the use of a work object of the funding agreement and that such action is necessary to achieve the practical application of the subject invention or work object. Any such determination shall be on the record after an opportunity for an agency hearing. Any action commenced for judicial review of such determination shall be brought within sixty days after notification of such determination.
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(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3020; subsection (b)(4) added and subsections (a), (b)(1), (b)(2), (c)(4), (c)(5), and (c)(7) amended Nov. 8, 1984, Public Law 98-620, sec. 501, 98 Stat. 3364; subsection (b)(3) amended Dec. 10, 1991, Public Law 102-204, sec. 10, 105 Stat. 1641; subsection (a) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-583 (S. 1948 sec. 4732(a)(12)); subsection (e) amended Nov. 1, 2000, Public Law 106-404, sec. 6(1), 114 Stat. 1745; subsections (b)(4), (c)(4), and (c)(5) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; paragraph (d)(4) redesignated as (d)(3) and former paragraph (d)(3) struck Public Law 111-8, div. G, title I, sec. 1301(h), Mar. 11, 2009, 123 Stat. 829; subsection (c)(7)(E)(i) amended Sept. 16, 2011, Public Law 112-29, sec. 13, 125 Stat. 284; subsections (b)(3) and (c)(7)(D) amended by Public Law 112-29, sec. 20(i)(effective Sept. 16, 2012), and subsections (c)(2) and (c)(3) amended by Public Law 112-29, sec. 3(g) (effective March 16, 2013), 125 Stat. 284.)
35 U.S.C. 202 (pre-AIA) Disposition of rights.
[Editor Note: pre-AIA 35 U.S.C. 202(c)(2) and (c)(3) as set forth below are not applicable to patent applications subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 202(c)(2) and (c)(3) for the law otherwise applicable.]
*****
(c) Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following:
*****
(2) That the contractor make a written election within two years after disclosure to the Federal agency (or such additional time as may be approved by the Federal agency) whether the contractor will retain title to a subject invention: Provided, That in any case where publication, on sale, or public use, has initiated the one year statutory period in which valid patent protection can still be obtained in the United States, the period for election may be shortened by the Federal agency to a date that is not more than sixty days prior to the end of the statutory period: And provided further, That the Federal Government may receive title to any subject invention in which the contractor does not elect to retain rights or fails to elect rights within such times.
(3) That a contractor electing rights in a subject invention agrees to file a patent application prior to any statutory bar date that may occur under this title due to publication, on sale, or public use, and shall thereafter file corresponding patent applications in other countries in which it wishes to retain title within reasonable times, and that the Federal Government may receive title to any subject inventions in the United States or other countries in which the contractor has not filed patent applications on the subject invention within such times.
*****
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3020; subsection (b)(4) added and subsections (a), (b)(1), (b)(2), (c)(4), (c)(5), and (c)(7) amended Nov. 8, 1984, Public Law
98-620, sec. 501, 98 Stat. 3364; subsection (b)(3) amended Dec. 10, 1991, Public Law 102-204, sec. 10, 105 Stat. 1641; subsection (a) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-583 (S. 1948 sec. 4732(a)(12)); subsection (e) amended Nov. 1, 2000, Public Law 106-404, sec. 6(1), 114 Stat. 1745; subsections (b)(4), (c)(4), and (c)(5) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; paragraph (d)(4) redesignated as (d)(3) and former paragraph (d)(3) struck Public Law 111-8, div. G, title I, sec. 1301(h), Mar. 11, 2009, 123 Stat. 829; subsection (c)(7)(E)(i) amended Sept. 16, 2011, Public Law 112-29, sec. 13, 125 Stat. 284; subsections (b)(3) and (c)(7)(D) amended by Public Law 112-29, sec. 20(i) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 203 March-in rights.
(a) With respect to any subject invention in which a small business firm or nonprofit organization has acquired title under this chapter, the Federal agency under whose funding agreement the subject invention was made shall have the right, in accordance with such procedures as are provided in regulations promulgated hereunder, to require the contractor, an assignee, or exclusive licensee of a subject invention to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant or applicants, upon terms that are reasonable under the circumstances, and if the contractor, assignee, or exclusive licensee refuses such request, to grant such a license itself, if the Federal agency determines that such —
(1) action is necessary because the contractor or assignee has not taken, or is not expected to take within a reasonable time, effective steps to achieve practical application of the subject invention in such field of use;
(2) action is necessary to alleviate health or safety needs which are not reasonably satisfied by the contractor, assignee, or their licensees;
(3) action is necessary to meet requirements for public use specified by Federal regulations and such requirements are not reasonably satisfied by the contractor, assignee, or licensees; or
(4) action is necessary because the agreement required by section 204 has not been obtained or waived or because a licensee of the exclusive right to use or sell any subject invention in the United States is in breach of its agreement obtained pursuant to section 204.
(b) A determination pursuant to this section or section 202(b)(4) shall not be subject to chapter 71 of title 41. An administrative appeals procedure shall be established by regulations promulgated in accordance with section 206. Additionally, any contractor, inventor, assignee, or exclusive licensee adversely affected by a determination under this section may, at any time within sixty days after the determination is issued, file a petition in the United States Court of Federal Claims, which shall have jurisdiction to determine the appeal on the record and to affirm, reverse, remand or modify, as appropriate, the determination of the Federal agency. In cases described in paragraphs (1) and (3) of subsection (a), the agency’s determination shall be held in abeyance pending the
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exhaustion of appeals or petitions filed under the preceding sentence.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3022; amended Nov. 8, 1984, Public Law 98-620, sec. 501(9), 98 Stat. 3367; Oct. 29, 1992, Public Law 102-572, sec. 902(b)(1), 106 Stat. 4516; amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; subsection (b) amended Jan. 4, 2011, Public Law 111-350, sec. 5(i)(2), 124 Stat. 3850.)
35 U.S.C. 204 Preference for United States industry.
Notwithstanding any other provision of this chapter, no small business firm or nonprofit organization which receives title to any subject invention and no assignee of any such small business firm or nonprofit organization shall grant to any person the exclusive right to use or sell any subject invention in the United States unless such person agrees that any products embodying the subject invention or produced through the use of the subject invention will be manufactured substantially in the United States. However, in individual cases, the requirement for such an agreement may be waived by the Federal agency under whose funding agreement the invention was made upon a showing by the small business firm, nonprofit organization, or assignee that reasonable but unsuccessful efforts have been made to grant licenses on similar terms to potential licensees that would be likely to manufacture substantially in the United States or that under the circumstances domestic manufacture is not commercially feasible.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3023.)
35 U.S.C. 205 Confidentiality.
Federal agencies are authorized to withhold from disclosure to the public information disclosing any invention in which the Federal Government owns or may own a right, title, or interest (including a nonexclusive license) for a reasonable time in order for a patent application to be filed. Furthermore, Federal agencies shall not be required to release copies of any document which is part of an application for patent filed with the United States Patent and Trademark Office or with any foreign patent office.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3023.)
35 U.S.C. 206 Uniform clauses and regulations.
The Secretary of Commerce may issue regulations which may be made applicable to Federal agencies implementing the provisions of sections 202 through 204 of this chapter and shall establish standard funding agreement provisions required under this chapter. The regulations and the standard funding agreement shall be subject to public comment before their issuance.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3023; amended Nov. 8, 1984, Public Law 98-620, sec. 501(10), 98 Stat. 3367.)
35 U.S.C. 207 Domestic and foreign protection of federally owned inventions.
(a) Each Federal agency is authorized to —
(1) apply for, obtain, and maintain patents or other forms of protection in the United States and in foreign countries on inventions in which the Federal Government owns a right, title, or interest;
(2) grant nonexclusive, exclusive, or partially exclusive licenses under federally owned inventions, royalty-free or for royalties or other consideration, and on such terms and conditions, including the grant to the licensee of the right of enforcement pursuant to the provisions of chapter 29 as determined appropriate in the public interest;
(3) undertake all other suitable and necessary steps to protect and administer rights to federally owned inventions on behalf of the Federal Government either directly or through contract, including acquiring rights for and administering royalties to the Federal Government in any invention, but only to the extent the party from whom the rights are acquired voluntarily enters into the transaction, to facilitate the licensing of a federally owned invention; and
(4) transfer custody and administration, in whole or in part, to another Federal agency, of the right, title, or interest in any federally owned invention.
(b) For the purpose of assuring the effective management of Government-owned inventions, the Secretary of Commerce authorized to -
(1) assist Federal agency efforts to promote the licensing and utilization of Government-owned inventions;
(2) assist Federal agencies in seeking protection and maintaining inventions in foreign countries, including the payment of fees and costs connected therewith; and
(3) consult with and advise Federal agencies as to areas of science and technology research and development with potential for commercial utilization.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3023; amended Nov. 8, 1984, Public Law 98-620, sec. 501(11), 98 Stat. 3367; subsections (a)(2) and (a)(3) amended Nov. 1, 2000, Public Law 106-404, sec. 6(2), 114 Stat. 1745; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 208 Regulations governing Federal licensing.
The Secretary of Commerce is authorized to promulgate regulations specifying the terms and conditions upon which any federally owned invention, other than inventions owned by the Tennessee Valley Authority, may be licensed on a nonexclusive, partially exclusive, or exclusive basis.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3024; amended Nov. 8, 1984, Public Law 98-620, sec. 501(12), 98 Stat. 3367.)
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35 U.S.C. 209 Licensing federally owned inventions.
(a) AUTHORITY.—A Federal agency may grant an exclusive or partially exclusive license on a federally owned invention under section 207(a)(2) only if—
(1) granting the license is a reasonable and necessary incentive to—
(A) call forth the investment capital and expenditures needed to bring the invention to practical application; or
(B) otherwise promote the invention’s utilization by the public;
(2) the Federal agency finds that the public will be served by the granting of the license, as indicated by the applicant’s intentions, plans, and ability to bring the invention to practical application or otherwise promote the invention’s utilization by the public, and that the proposed scope of exclusivity is not greater than reasonably necessary to provide the incentive for bringing the invention to practical application, as proposed by the applicant, or otherwise to promote the invention’s utilization by the public;
(3) the applicant makes a commitment to achieve practical application of the invention within a reasonable time, which time may be extended by the agency upon the applicant’s request and the applicant’s demonstration that the refusal of such extension would be unreasonable;
(4) granting the license will not tend to substantially lessen competition or create or maintain a violation of the Federal antitrust laws; and
(5) in the case of an invention covered by a foreign patent application or patent, the interests of the Federal Government or United States industry in foreign commerce will be enhanced.
(b) MANUFACTURE IN UNITED STATES.—A Federal agency shall normally grant a license under section 207(a)(2) to use or sell any federally owned invention in the United States only to a licensee who agrees that any products embodying the invention or produced through the use of the invention will be manufactured substantially in the United States.
(c) SMALL BUSINESS.—First preference for the granting of any exclusive or partially exclusive licenses under section 207(a)(2) shall be given to small business firms having equal or greater likelihood as other applicants to bring the invention to practical application within a reasonable time.
(d) TERMS AND CONDITIONS.—Any licenses granted under section 207(a)(2) shall contain such terms and conditions as the granting agency considers appropriate, and shall include provisions—
(1) retaining a nontransferable, irrevocable, paid-up license for any Federal agency to practice the invention or have the invention practiced throughout the world by or on behalf of the Government of the United States;
(2) requiring periodic reporting on utilization of the invention, and utilization efforts, by the licensee, but only to the extent necessary to enable the Federal agency to determine whether the terms of the license are being complied with, except
that any such report shall be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5; and
(3) empowering the Federal agency to terminate the license in whole or in part if the agency determines that—
(A) the licensee is not executing its commitment to achieve practical application of the invention, including commitments contained in any plan submitted in support of its request for a license, and the licensee cannot otherwise demonstrate to the satisfaction of the Federal agency that it has taken, or can be expected to take within a reasonable time, effective steps to achieve practical application of the invention;
(B) the licensee is in breach of an agreement described in subsection (b);
(C) termination is necessary to meet requirements for public use specified by Federal regulations issued after the date of the license, and such requirements are not reasonably satisfied by the licensee; or
(D) the licensee has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under the license agreement.
(e) PUBLIC NOTICE.—No exclusive or partially exclusive license may be granted under section 207(a)(2) unless public notice of the intention to grant an exclusive or partially exclusive license on a federally owned invention has been provided in an appropriate manner at least 15 days before the license is granted, and the Federal agency has considered all comments received before the end of the comment period in response to that public notice. This subsection shall not apply to the licensing of inventions made under a cooperative research and development agreement entered into under section 12 of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a).
(f) PLAN.—No Federal agency shall grant any license under a patent or patent application on a federally owned invention unless the person requesting the license has supplied the agency with a plan for development or marketing of the invention, except that any such plan shall be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3024; amended Nov. 1, 2000, Public Law 106-404, sec. 4, 114 Stat. 1743; subsections (d)(2) and (f) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; subsection (d)(1) amended Sept. 16, 2011, Public Law 112-29, sec. 20(i) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 210 Precedence of chapter.
(a) This chapter shall take precedence over any other Act which would require a disposition of rights in subject inventions of small business firms or nonprofit organizations contractors in a manner that is inconsistent with this chapter, including but not necessarily limited to the following:
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(1) section 10(a) of the Act of June 29, 1935, as added by title I of the Act of August 14, 1946 (7 U.S.C. 427i(a); 60 Stat. 1085);
(2) section 205(a) of the Act of August 14, 1946 (7 U.S.C. 1624(a); 60 Stat. 1090);
(3) section 501(c) of the Federal Mine Safety and Health Act of 1977 (30 U.S.C. 951(c); 83 Stat. 742);
(4) section 30168(e) of title 49;
(5) section 12 of the National Science Foundation Act of 1950 (42 U.S.C. 1871(a); 82 Stat. 360);
(6) section 152 of the Atomic Energy Act of 1954 (42 U.S.C. 2182; 68 Stat. 943);
(7) section 20135 of title 51;
(8) section 6 of the Coal Research and Development Act of 1960 (30 U.S.C. 666; 74 Stat. 337);
(9) section 4 of the Helium Act Amendments of 1960 (50 U.S.C. 167b; 74 Stat. 920);
(10) section 32 of the Arms Control and Disarmament Act of 1961 (22 U.S.C. 2572; 75 Stat. 634);
(11) section 9 of the Federal Nonnuclear Energy Research and Development Act of 1974 (42 U.S.C. 5908; 88 Stat. 1878);
(12) section 5(d) of the Consumer Product Safety Act (15 U.S.C. 2054(d); 86 Stat. 1211);
(13) section 3 of the Act of April 5, 1944 (30 U.S.C. 323; 58 Stat. 191);
(14) section 8001(c)(3) of the Solid Waste Disposal Act (42 U.S.C. 6981(c); 90 Stat. 2829);
(15) section 219 of the Foreign Assistance Act of 1961 (22 U.S.C. 2179; 83 Stat. 806);
(16) section 427(b) of the Federal Mine Health and Safety Act of 1977 (30 U.S.C. 937(b); 86 Stat. 155);
(17) section 306(d) of the Surface Mining and Reclamation Act of 1977 (30 U.S.C. 1226(d); 91 Stat. 455);
(18) section 21(d) of the Federal Fire Prevention and Control Act of 1974 (15 U.S.C. 2218(d); 88 Stat. 1548);
(19) section 6(b) of the Solar Photovoltaic Energy Research Development and Demonstration Act of 1978 (42 U.S.C. 5585(b); 92 Stat. 2516);
(20) section 12 of the Native Latex Commercialization and Economic Development Act of 1978 (7 U.S.C. 178j; 92 Stat. 2533); and
(21) section 408 of the Water Resources and Development Act of 1978 (42 U.S.C. 7879; 92 Stat. 1360).
The Act creating this chapter shall be construed to take precedence over any future Act unless that Act specifically cites this Act and provides that it shall take precedence over this Act.
(b) Nothing in this chapter is intended to alter the effect of the laws cited in paragraph (a) of this section or any other laws with respect to the disposition of rights in inventions made in
the performance of funding agreements with persons other than nonprofit organizations or small business firms.
(c) Nothing in this chapter is intended to limit the authority of agencies to agree to the disposition of rights in inventions made in the performance of work under funding agreements with persons other than nonprofit organizations or small business firms in accordance with the Statement of Government Patent Policy issued on February 18, 1983, agency regulations, or other applicable regulations or to otherwise limit the authority of agencies to allow such persons to retain ownership of inventions, except that all funding agreements, including those with other than small business firms and nonprofit organizations, shall include the requirements established in section 202(c)(4) and section 203 . Any disposition of rights in inventions made in accordance with the Statement or implementing regulations, including any disposition occurring before enactment of this section, are hereby authorized.
(d) Nothing in this chapter shall be construed to require the disclosure of intelligence sources or methods or to otherwise affect the authority granted to the Director of Central Intelligence by statute or Executive order for the protection of intelligence sources or methods.
(e) The provisions of the Stevenson-Wydler Technology Innovation Act of 1980 shall take precedence over the provisions of this chapter to the extent that they permit or require a disposition of rights in subject inventions which is inconsistent with this chapter.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3026; subsection (c) amended Nov. 8, 1984, Public Law 98-620, sec. 501(13), 98 Stat. 3367; subsection (e) added Oct. 20, 1986, Public Law 99-502, sec. 9(c), 100 Stat. 1796; subsection (a)(4) amended July 5, 1994, Public Law 103-272, sec. 5(j), 108 Stat. 1375; subsection (e) amended Mar. 7, 1996, Public Law 104-113, sec. 7, 110 Stat. 779.; subsection (a) amended Nov. 13, 1998, Public Law 105-393, sec. 220(c)(2), 112 Stat. 3625; subsections (a)(11), (a)(20), and (c) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; subsection (a)(8) amended Aug. 8, 2005, Public Law 109-58, sec. 1009(a)(2), 119 Stat. 934; subsection (a)(7) amended Dec. 18, 2010, Public Law 111-314, sec. 4(c), 124 Stat. 3440; subsection (c) amended Sept. 16, 2011, Public Law 112-29, sec. 20(j), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 211 Relationship to antitrust laws.
Nothing in this chapter shall be deemed to convey to any person immunity from civil or criminal liability, or to create any defenses to actions, under any antitrust law.
(Added Dec.12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3027.)
35 U.S.C. 212 Disposition of rights in educational awards.
No scholarship, fellowship, training grant, or other funding agreement made by a Federal agency primarily to an awardee for educational purposes will contain any provision giving the Federal agency any rights to inventions made by the awardee.
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(Added Nov. 8, 1984, Public Law 98-620, sec. 501(14), 98 Stat. 3368.)
III
PATENTS AND PROTECTION OF PATENT RIGHTS
35 U.S.C. 251 Reissue of defective patents.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 251 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, secs. 4(b) and 20(d) (effective Sept, 16, 2012), 125 Stat. 284.)
35 U.S.C. 251 (pre-AIA) Reissue of defective patents.
[Editor Note: Not applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 251 for the law otherwise applicable.]
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in
accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.
No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 252 Effect of reissue.
The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.
A reissued patent shall not abridge or affect the right of any person or that person’s successors in business who, prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported unless the making, using, offering for sale, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent. The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, used, or imported as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made before the grant of the reissue, and the court may also provide for the continued practice of any process patented by the reissue that is practiced, or for the practice of which substantial preparation was made, before the grant of the reissue, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.
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(Amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(2), 108 Stat. 4989; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 4507(8)).)
35 U.S.C. 253 Disclaimer.
[Editor Note: Applicable to all proceedings commenced on or after September 16, 2012. See 35 U.S.C. 253 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—Whenever a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing and recorded in the Patent and Trademark Office, and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.
(b) ADDITIONAL DISCLAIMER OR DEDICATION.—In the manner set forth in subsection (a), any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; amended Sept. 16, 2011, Public Law 112-29, sec. 20(e), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 253 (pre-AIA) Disclaimer.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 253 for the law otherwise applicable.]
Whenever, without any deceptive intention, a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing and recorded in the Patent and Trademark Office, and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.
In like manner any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)
35 U.S.C. 254 Certificate of correction of Patent and Trademark Office mistake.
Whenever a mistake in a patent, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office, the Director may issue a certificate of correction stating the fact and nature of such mistake, under seal, without charge, to be recorded in the records of patents. A
printed copy thereof shall be attached to each printed copy of the patent, and such certificate shall be considered as part of the original patent. Every such patent, together with such certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form. The Director may issue a corrected patent without charge in lieu of and with like effect as a certificate of correction.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 255 Certificate of correction of applicant’s mistake.
Whenever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made that such mistake occurred in good faith, the Director may, upon payment of the required fee, issue a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require reexamination. Such patent, together with the certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 256 Correction of named inventor.
[Editor Note: Applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 256 (pre-AIA) for the law otherwise applicable.]
(a) CORRECTION.—Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.
(b) PATENT VALID IF ERROR CORRECTED.— The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(b), 96 Stat. 320; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(f) (effective Sept. 16, 2012), 125 Stat. 284.)
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35 U.S.C. 256 (pre-AIA) Correction of named inventor.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 256 for the law otherwise applicable.]
Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.
The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(b), 96 Stat. 320; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 257 Supplemental examinations to consider, reconsider, or correct information.
(a) REQUEST FOR SUPPLEMENTAL EXAMINATION.—A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability.
(b) REEXAMINATION ORDERED.—If the certificate issued under subsection (a) indicates that a substantial new question of patentability is raised by 1 or more items of information in the request, the Director shall order reexamination of the patent. The reexamination shall be conducted according to procedures established by chapter 30, except that the patent owner shall not have the right to file a statement pursuant to section 304. During the reexamination, the Director shall address each substantial new question of patentability identified during the supplemental examination, notwithstanding the limitations in chapter 30 relating to patents and printed publication or any other provision of such chapter.
(c) EFFECT.—
(1) IN GENERAL.—A patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent. The making of a request under subsection (a), or the absence thereof, shall not be relevant to enforceability of the patent under section 282.
(2) EXCEPTIONS.—
(A) PRIORALLEGATIONS.—Paragraph (1) shall not apply to an allegation pled with particularity in a civil action, or set forth with particularity in a notice received by the patent owner under section 505(j) (2)(B)(iv)(II) of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355(j) (2)(B)(iv)(II)), before the date of a supplemental examination request under subsection (a) to consider, reconsider, or correct information forming the basis for the allegation.
(B) PATENT ENFORCEMENT ACTIONS.—In an action brought under section 337(a) of the Tariff Act of 1930 (19 U.S.C. 1337(a)), or section 281, paragraph (1) shall not apply to any defense raised in the action that is based upon information that was considered, reconsidered, or corrected pursuant to a supplemental examination request under subsection (a), unless the supplemental examination, and any reexamination ordered pursuant to the request, are concluded before the date on which the action is brought.
(d) FEES AND REGULATIONS.—
(1) FEES.—The Director shall, by regulation, establish fees for the submission of a request for supplemental examination of a patent, and to consider each item of information submitted in the request. If reexamination is ordered under subsection (b), fees established and applicable to ex parte reexamination proceedings under chapter 30 shall be paid, in addition to fees applicable to supplemental examination.
(2) REGULATIONS.—The Director shall issue regulations governing the form, content, and other requirements of requests for supplemental examination, and establishing procedures for reviewing information submitted in such requests.
(e) FRAUD.—If the Director becomes aware, during the course of a supplemental examination or reexamination proceeding ordered under this section, that a material fraud on the Office may have been committed in connection with the patent that is the subject of the supplemental examination, then in addition to any other actions the Director is authorized to take, including the cancellation of any claims found to be invalid under section 307 as a result of a reexamination ordered under this section, the Director shall also refer the matter to the Attorney General for such further action as the Attorney General may deem appropriate. Any such referral shall be treated as confidential, shall not be included in the file of the patent, and shall not be disclosed to the public unless the United States charges a person with a criminal offense in connection with such referral.
(f) RULE OF CONSTRUCTION.—Nothing in this section shall be construed—
(1) to preclude the imposition of sanctions based upon criminal or antitrust laws (including section 1001(a) of title 18 , the first section of the Clayton Act, and section 5 of the Federal Trade Commission Act to the extent that section relates to unfair methods of competition);
(2) to limit the authority of the Director to investigate issues of possible misconduct and impose sanctions for
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misconduct in connection with matters or proceedings before the Office; or
(3) to limit the authority of the Director to issue regulations under chapter 3 relating to sanctions for misconduct by representatives practicing before the Office.
(Added Sept. 16, 2011, Public Law 112-29, sec. 12, 125 Stat. 284; amended Sept. 16, 2011 Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 261 Ownership; assignment.
Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.
Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.
A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, shall be prima facie evidence of the execution of an assignment, grant, or conveyance of a patent or application for patent.
An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Aug. 27, 1982, Public Law 97-247, sec. 14(b), 96 Stat. 321; Dec. 18, 2012, Public Law 112-211, sec. 201(d), 126 Stat. 1535.)
35 U.S.C. 262 Joint owners.
In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(3), 108 Stat. 4989.)
35 U.S.C. 266 [Repealed.]
(Repealed July 24, 1965, Public Law 89-83, sec. 8, 79 Stat. 261.)
35 U.S.C. 267 Time for taking action in Government applications.
Notwithstanding the provisions of sections 133 and 151, the Director may extend the time for taking any action to three years, when an application has become the property of the United States and the head of the appropriate department or agency of the Government has certified to the Director that the invention disclosed therein is important to the armament or defense of the United States.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 271 Infringement of patent.
(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.
(d) No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent; (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent; (3) sought to enforce his patent rights against infringement or contributory infringement; (4) refused to license or use any rights to the patent; or (5) conditioned the license of any rights to the patent or the sale of the patented product on the acquisition of a license to rights in another patent or purchase of a separate product, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned.
(e)(1) It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention (other than a new animal drug or veterinary biological product (as those terms are used
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in the Federal Food, Drug, and Cosmetic Act and the Act of March 4, 1913) which is primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques) solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.
(2) It shall be an act of infringement to submit —
(A) an application under section 505(j) of the Federal Food, Drug, and Cosmetic Act or described in section 505(b)(2) of such Act for a drug claimed in a patent or the use of which is claimed in a patent,
(B) an application under section 512 of such Act or under the Act of March 4, 1913 (21 U.S.C. 151 - 158) for a drug or veterinary biological product which is not primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques and which is claimed in a patent or the use of which is claimed in a patent, or
(C)
(i) with respect to a patent that is identified in the list of patents described in section 351(l)(3) of the Public Health Service Act (including as provided under section 351(l)(7) of such Act), an application seeking approval of a biological product, or
(ii) if the applicant for the application fails to provide the application and information required under section 351(l)(2)(A) of such Act, an application seeking approval of a biological product for a patent that could be identified pursuant to section 351(l)(3)(A)(i) of such Act, if the purpose of such submission is to obtain approval under such Act to engage in the commercial manufacture, use, or sale of a drug, veterinary biological product, or biological product claimed in a patent or the use of which is claimed in a patent before the expiration of such patent.
(3) In any action for patent infringement brought under this section, no injunctive or other relief may be granted which would prohibit the making, using, offering to sell, or selling within the United States or importing into the United States of a patented invention under paragraph (1).
(4) For an act of infringement described in paragraph (2)—
(A) the court shall order the effective date of any approval of the drug or veterinary biological product involved in the infringement to be a date which is not earlier than the date of the expiration of the patent which has been infringed,
(B) injunctive relief may be granted against an infringer to prevent the commercial manufacture, use, offer to sell, or sale within the United States or importation into the United States of an approved drug, veterinary biological product, or biological product,
(C) damages or other monetary relief may be awarded against an infringer only if there has been commercial manufacture, use, offer to sell, or sale within the United States
or importation into the United States of an approved drug, veterinary biological product, or biological product, and
(D) the court shall order a permanent injunction prohibiting any infringement of the patent by the biological product involved in the infringement until a date which is not earlier than the date of the expiration of the patent that has been infringed under paragraph (2)(C), provided the patent is the subject of a final court decision, as defined in section 351(k)(6) of the Public Health Service Act, in an action for infringement of the patent under section 351(l)(6) of such Act, and the biological product has not yet been approved because of section 351(k)(7) of such Act.
The remedies prescribed by subparagraphs (A), (B), (C), and (D) are the only remedies which may be granted by a court for an act of infringement described in paragraph (2), except that a court may award attorney fees under section 285.
(5) Where a person has filed an application described in paragraph (2) that includes a certification under subsection (b)(2)(A)(iv) or (j) (2)(A)(vii)(IV) of section 505 of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355), and neither the owner of the patent that is the subject of the certification nor the holder of the approved application under subsection (b) of such section for the drug that is claimed by the patent or a use of which is claimed by the patent brought an action for infringement of such patent before the expiration of 45 days after the date on which the notice given under subsection (b)(3) or (j) (2)(B) of such section was received, the courts of the United States shall, to the extent consistent with the Constitution, have subject matter jurisdiction in any action brought by such person under section 2201 of title 28 for a declaratory judgment that such patent is invalid or not infringed.
(6)(A) Subparagraph (B) applies, in lieu of paragraph (4), in the case of a patent-
(i) that is identified, as applicable, in the list of patents described in section 351(l)(4) of the Public Health Service Act or the lists of patents described in section 351(l)(5)(B) of such Act with respect to a biological product; and
(ii) for which an action for infringement of the patent with respect to the biological product—
(I) was brought after the expiration of the 30-day period described in subparagraph (A) or (B), as applicable, of section 351(l)(6) of such Act; or
(II) was brought before the expiration of the 30-day period described in subclause (I), but which was dismissed without prejudice or was not prosecuted to judgment in good faith.
(B) In an action for infringement of a patent described in subparagraph (A), the sole and exclusive remedy that may be granted by a court, upon a finding that the making, using, offering to sell, selling, or importation into the United States of the biological product that is the subject of the action infringed the patent, shall be a reasonable royalty.
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(C) The owner of a patent that should have been included in the list described in section 351(l)(3)(A) of the Public Health ServiceAct, including as provided under section 351(l)(7) of such Act for a biological product, but was not timely included in such list, may not bring an action under this section for infringement of the patent with respect to the biological product.
(f)(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
(g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will, for purposes of this title, not be considered to be so made after —
(1) it is materially changed by subsequent processes; or
(2) it becomes a trivial and nonessential component of another product.
(h) As used in this section, the term “whoever” includes any State, any instrumentality of a State, any officer or employee of a State or instrumentality of a State acting in his official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity.
(i) As used in this section, an “offer for sale” or an “offer to sell” by a person other than the patentee or any assignee of the patentee, is that in which the sale will occur before the expiration of the term of the patent.
(Subsection (e) added Sept. 24, 1984, Public Law 98-417, sec. 202, 98 Stat. 1603; subsection (f) added Nov. 8, 1984, Public Law 98-622, sec. 101(a), 98 Stat. 3383; subsection (g) added Aug. 23, 1988, Public Law 100-418, sec. 9003, 102 Stat. 1564;
subsection (e) amended Nov. 16, 1988, Public Law 100-670, sec. 201(i), 102 Stat. 3988; subsection (d) amended Nov. 19, 1988, Public Law 100-703, sec. 201, 102 Stat. 4676; subsection (h) added Oct. 28, 1992, Public Law 102-560, sec. 2(a)(1), 106 Stat. 4230.; subsections (a), (c), (e), and (g) amended Dec. 8, 1994, Public Law 103-465, sec. 533(a), 108 Stat. 4988; subsection (i) added Dec. 8, 1994, Public Law 103-465, sec. 533(a), 108 Stat. 4988.; subsection (e)(5) added Dec. 8, 2003, Public Law 108-173, sec. 1101(d), 117 Stat. 2457; subsection (e) amended March 23, 2010, Public Law 111-148, title VII, sec. 7002(c)(1), 124 Stat. 815.)
35 U.S.C. 272 Temporary presence in the United States.
The use of any invention in any vessel, aircraft or vehicle of any country which affords similar privileges to vessels, aircraft, or vehicles of the United States, entering the United States temporarily or accidentally, shall not constitute infringement of any patent, if the invention is used exclusively for the needs of the vessel, aircraft, or vehicle and is not offered for sale or sold in or used for the manufacture of anything to be sold in or exported from the United States.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(4), 108 Stat. 4989.)
35 U.S.C. 273 Defense to infringement based on prior commercial use.
(a) IN GENERAL.—A person shall be entitled to a defense under section 282(b) with respect to subject matter consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe a claimed invention being asserted against the person if—
(1) such person, acting in good faith, commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use; and
(2) such commercial use occurred at least 1 year before the earlier of either—
(A) the effective filing date of the claimed invention; or
(B) the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under section 102(b).
(b) BURDEN OF PROOF.—A person asserting a defense under this section shall have the burden of establishing the defense by clear and convincing evidence.
(c) ADDITIONAL COMMERCIAL USES.—
(1) PREMARKETING REGULATORY REVIEW.— Subject matter for which commercial marketing or use is subject to a premarketing regulatory review period during which the safety or efficacy of the subject matter is established, including any period specified in section 156(g), shall be deemed to be commercially used for purposes of subsection (a)(1) during such regulatory review period.
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(2) NONPROFIT LABORATORY USE.—A use of subject matter by a nonprofit research laboratory or other nonprofit entity, such as a university or hospital, for which the public is the intended beneficiary, shall be deemed to be a commercial use for purposes of subsection (a)(1), except that a defense under this section may be asserted pursuant to this paragraph only for continued and noncommercial use by and in the laboratory or other nonprofit entity.
(d) EXHAUSTION OF RIGHTS.—Notwithstanding subsection (e)(1), the sale or other disposition of a useful end result by a person entitled to assert a defense under this section in connection with a patent with respect to that useful end result shall exhaust the patent owner’s rights under the patent to the extent that such rights would have been exhausted had such sale or other disposition been made by the patent owner.
(e) LIMITATIONS AND EXCEPTIONS.—
(1) PERSONAL DEFENSE.—
(A) IN GENERAL.—A defense under this section may be asserted only by the person who performed or directed the performance of the commercial use described in subsection (a), or by an entity that controls, is controlled by, or is under common control with such person.
(B) TRANSFER OF RIGHT.—Except for any transfer to the patent owner, the right to assert a defense under this section shall not be licensed or assigned or transferred to another person except as an ancillary and subordinate part of a good-faith assignment or transfer for other reasons of the entire enterprise or line of business to which the defense relates.
(C) RESTRICTION ON SITES.—A defense under this section, when acquired by a person as part of an assignment or transfer described in subparagraph (B), may only be asserted for uses at sites where the subject matter that would otherwise infringe a claimed invention is in use before the later of the effective filing date of the claimed invention or the date of the assignment or transfer of such enterprise or line of business.
(2) DERIVATION.—A person may not assert a defense under this section if the subject matter on which the defense is based was derived from the patentee or persons in privity with the patentee.
(3) NOT A GENERAL LICENSE.—The defense asserted by a person under this section is not a general license under all claims of the patent at issue, but extends only to the specific subject matter for which it has been established that a commercial use that qualifies under this section occurred, except that the defense shall also extend to variations in the quantity or volume of use of the claimed subject matter, and to improvements in the claimed subject matter that do not infringe additional specifically claimed subject matter of the patent.
(4) ABANDONMENT OF USE.—A person who has abandoned commercial use (that qualifies under this section) of subject matter may not rely on activities performed before the date of such abandonment in establishing a defense under this section with respect to actions taken on or after the date of such abandonment.
(5) UNIVERSITY EXCEPTION.—
(A) IN GENERAL.—A person commercially using subject matter to which subsection (a) applies may not assert a defense under this section if the claimed invention with respect to which the defense is asserted was, at the time the invention was made, owned or subject to an obligation of assignment to either an institution of higher education (as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)), or a technology transfer organization whose primary purpose is to facilitate the commercialization of technologies developed by one or more such institutions of higher education.
(B) EXCEPTION.—Subparagraph (A) shall not apply if any of the activities required to reduce to practice the subject matter of the claimed invention could not have been under taken using funds provided by the Federal Government.
(f) UNREASONABLE ASSERTION OF DEFENSE.—If the defense under this section is pleaded by a person who is found to infringe the patent and who subsequently fails to demonstrate a reasonable basis for asserting the defense, the court shall find the case exceptional for the purpose of awarding attorney fees under section 35 U.S.C. 285 .
(g) INVALIDITY.—A patent shall not be deemed to be invalid under section 102 or 103 solely because a defense is raised or established under this section.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-555 (S. 1948 sec. 4302); amended Sept. 16, 2011, Public Law 112-29, sec. 5, 125 Stat. 284.)
35 U.S.C. 281 Remedy for infringement of patent.
A patentee shall have remedy by civil action for infringement of his patent.
35 U.S.C. 282 Presumption of validity; defenses.
(a) IN GENERAL.—A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.
(b) DEFENSES.—The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:
(1) Noninfringement, absence of liability for infringement, or unenforceability.
(2) Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.
(3) Invalidity of the patent or any claim in suit for failure to comply with—
(A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable; or
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(B) any requirement of section 251.
(4) Any other fact or act made a defense by this title.
(c) NOTICE OF ACTIONS; ACTIONS DURING EXTENSION OF PATENT TERM.— In an action involving the validity or infringement of a patent the party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of the country, number, date, and name of the patentee of any patent, the title, date, and page numbers of any publication to be relied upon as anticipation of the patent in suit or, except in actions in the United States Court of Federal Claims, as showing the state of the art, and the name and address of any person who may be relied upon as the prior inventor or as having prior knowledge of or as having previously used or offered for sale the invention of the patent in suit. In the absence of such notice proof of the said matters may not be made at the trial except on such terms as the court requires.
Invalidity of the extension of a patent term or any portion thereof under section 154(b) or 156 because of the material failure—
(1) by the applicant for the extension, or
(2) by the Director,
to comply with the requirements of such section shall be a defense in any action involving the infringement of a patent during the period of the extension of its term and shall be pleaded. A due diligence determination under section 156(d)(2) is not subject to review in such an action.
(Amended July 24, 1965, Public Law 89-83, sec. 10, 79 Stat. 261; Nov. 14, 1975, Public Law 94-131, sec. 10, 89 Stat. 692; Apr. 2, 1982, Public Law 97-164, sec. 161(7), 96 Stat. 49; Sept. 24, 1984, Public Law 98-417, sec. 203, 98 Stat. 1603; Oct. 29, 1992, Public Law 102-572, sec. 902(b)(1), 106 Stat. 4516; Nov. 1, 1995, Public Law 104-41, sec. 2, 109 Stat. 352; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-560, 582 (S. 1948 secs. 4402(b)(1) and 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 15(a) (effective Sept. 16, 2011) and secs. 20(g) and (j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 283 Injunction.
The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.
35 U.S.C. 284 Damages.
Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.
When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d).
The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 4507(9)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 285 Attorney fees.
The court in exceptional cases may award reasonable attorney fees to the prevailing party.
35 U.S.C. 286 Time limitation on damages.
Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.
In the case of claims against the United States Government for use of a patented invention, the period before bringing suit, up to six years, between the date of receipt of a written claim for compensation by the department or agency of the Government having authority to settle such claim, and the date of mailing by the Government of a notice to the claimant that his claim has been denied shall not be counted as a part of the period referred to in the preceding paragraph.
35 U.S.C. 287 Limitation on damages and other remedies; marking and notice.
(a) Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.
(b)(1) An infringer under section 271(g) shall be subject to all the provisions of this title relating to damages and injunctions except to the extent those remedies are modified by
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this subsection or section 9006 of the Process Patent Amendments Act of 1988. The modifications of remedies provided in this subsection shall not be available to any person who —
(A) practiced the patented process;
(B) owns or controls, or is owned or controlled by, the person who practiced the patented process; or
(C) had knowledge before the infringement that a patented process was used to make the product the importation, use, offer for sale, or sale of which constitutes the infringement.
(2) No remedies for infringement under section 271(g) shall be available with respect to any product in the possession of, or in transit to, the person subject to liability under such section before that person had notice of infringement with respect to that product. The person subject to liability shall bear the burden of proving any such possession or transit.
(3)(A) In making a determination with respect to the remedy in an action brought for infringement under section 271(g), the court shall consider—
(i) the good faith demonstrated by the defendant with respect to a request for disclosure;
(ii) the good faith demonstrated by the plaintiff with respect to a request for disclosure, and
(iii) the need to restore the exclusive rights secured by the patent.
(B) For purposes of subparagraph (A), the following are evidence of good faith:
(i) a request for disclosure made by the defendant;
(ii) a response within a reasonable time by the person receiving the request for disclosure; and
(iii) the submission of the response by the defendant to the manufacturer, or if the manufacturer is not known, to the supplier, of the product to be purchased by the defendant, together with a request for a written statement that the process claimed in any patent disclosed in the response is not used to produce such product.
The failure to perform any acts described in the preceding sentence is evidence of absence of good faith unless there are mitigating circumstances. Mitigating circumstances include the case in which, due to the nature of the product, the number of sources for the product, or like commercial circumstances, a request for disclosure is not necessary or practicable to avoid infringement.
(4)(A) For purposes of this subsection, a “request for disclosure” means a written request made to a person then engaged in the manufacture of a product to identify all process patents owned by or licensed to that person, as of the time of the request, that the person then reasonably believes could be asserted to be infringed under section 271(g) if that product were imported into, or sold, offered for sale, or used in, the
United States by an unauthorized person. A request for disclosure is further limited to a request—
(i) which is made by a person regularly engaged in the United States in the sale of the type of products as those manufactured by the person to whom the request is directed, or which includes facts showing that the person making the request plans to engage in the sale of such products in the United States;
(ii) which is made by such person before the person’s first importation, use, offer for sale, or sale of units of the product produced by an infringing process and before the person had notice of infringement with respect to the product; and
(iii) which includes a representation by the person making the request that such person will promptly submit the patents identified pursuant to the request to the manufacturer, or if the manufacturer is not known, to the supplier, of the product to be purchased by the person making the request, and will request from that manufacturer or supplier a written statement that none of the processes claimed in those patents is used in the manufacture of the product.
(B) In the case of a request for disclosure received by a person to whom a patent is licensed, that person shall either identify the patent or promptly notify the licensor of the request for disclosure.
(C) A person who has marked, in the manner prescribed by subsection (a), the number of the process patent on all products made by the patented process which have been offered for sale or sold by that person in the United States, or imported by the person into the United States, before a request for disclosure is received is not required to respond to the request for disclosure. For purposes of the preceding sentence, the term “all products” does not include products made before the effective date of the Process Patent Amendments Act of 1988.
(5)(A) For purposes of this subsection, notice of infringement means actual knowledge, or receipt by a person of a written notification, or a combination thereof, of information sufficient to persuade a reasonable person that it is likely that a product was made by a process patented in the United States.
(B) A written notification from the patent holder charging a person with infringement shall specify the patented process alleged to have been used and the reasons for a good faith belief that such process was used. The patent holder shall include in the notification such information as is reasonably necessary to explain fairly the patent holder’s belief, except that the patent holder is not required to disclose any trade secret information.
(C) A person who receives a written notification described in subparagraph (B) or a written response to a request for disclosure described in paragraph (4) shall be deemed to have notice of infringement with respect to any patent referred to in such written notification or response unless that person, absent mitigating circumstances—
(i) promptly transmits the written notification or response to the manufacturer or, if the manufacturer is not
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known, to the supplier, of the product purchased or to be purchased by that person; and
(ii) receives a written statement from the manufacturer or supplier which on its face sets forth a well grounded factual basis for a belief that the identified patents are not infringed.
(D) For purposes of this subsection, a person who obtains a product made by a process patented in the United States in a quantity which is abnormally large in relation to the volume of business of such person or an efficient inventory level shall be rebuttably presumed to have actual knowledge that the product was made by such patented process.
(6) A person who receives a response to a request for disclosure under this subsection shall pay to the person to whom the request was made a reasonable fee to cover actual costs incurred in complying with the request, which may not exceed the cost of a commercially available automated patent search of the matter involved, but in no case more than $500.
(c)(1) With respect to a medical practitioner’s performance of a medical activity that constitutes an infringement under section 271(a) or (b), the provisions of sections 281, 283, 284, and 285 shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity.
(2) For the purposes of this subsection:
(A) the term “medical activity” means the performance of a medical or surgical procedure on a body, but shall not include (i) the use of a patented machine, manufacture, or composition of matter in violation of such patent, (ii) the practice of a patented use of a composition of matter in violation of such patent, or (iii) the practice of a process in violation of a biotechnology patent.
(B) the term “medical practitioner” means any natural person who is licensed by a State to provide the medical activity described in subsection (c)(1) or who is acting under the direction of such person in the performance of the medical activity.
(C) the term “related health care entity” shall mean an entity with which a medical practitioner has a professional affiliation under which the medical practitioner performs the medical activity, including but not limited to a nursing home, hospital, university, medical school, health maintenance organization, group medical practice, or a medical clinic.
(D) the term “professional affiliation” shall mean staff privileges, medical staff membership, employment or contractual relationship, partnership or ownership interest, academic appointment, or other affiliation under which a medical practitioner provides the medical activity on behalf of, or in association with, the health care entity.
(E) the term “body” shall mean a human body, organ or cadaver, or a nonhuman animal used in medical research or instruction directly relating to the treatment of humans.
(F) the term “patented use of a composition of matter” does not include a claim for a method of performing a medical or surgical procedure on a body that recites the use of a composition of matter where the use of that composition of matter does not directly contribute to achievement of the objective of the claimed method.
(G) the term “State” shall mean any State or territory of the United States, the District of Columbia, and the Commonwealth of Puerto Rico.
(3) This subsection does not apply to the activities of any person, or employee or agent of such person (regardless of whether such person is a tax exempt organization under section 501(c) of the Internal Revenue Code), who is engaged in the commercial development, manufacture, sale, importation, or distribution of a machine, manufacture, or composition of matter or the provision of pharmacy or clinical laboratory services (other than clinical laboratory services provided in a physician’s office), where such activities are:
(A) directly related to the commercial development, manufacture, sale, importation, or distribution of a machine, manufacture, or composition of matter or the provision of pharmacy or clinical laboratory services (other than clinical laboratory services provided in a physician’s office), and
(B) regulated under the Federal Food, Drug, and Cosmetic Act, the Public Health Service Act, or the Clinical Laboratories Improvement Act.
(4) This subsection shall not apply to any patent issued based on an application which has an effective filing date before September 30, 1996.
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9004(a), 102 Stat. 1564; Dec. 8, 1994, Public Law 103-465, sec. 533(b)(5), 108 Stat. 4989; subsection (c) added Sept. 30, 1996, Public Law 104-208, sec. 616, 110 Stat. 3009-67; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-589 (S. 1948 sec. 4803); amended Sept. 16, 2011, Public Law 112-29, sec. 16(a) (effective Sept. 16, 2011), secs. 20(i) and (j) (effective Sept. 16, 2012), and sec. 3(g) (effective March 16, 2013), 125 Stat. 284.)
35 U.S.C. 288 Action for infringement of a patent containing an invalid claim.
[Editor Note: Applicable to all proceedings commenced on or after September 16, 2012. See 35 U.S.C. 288 (pre-AIA) for the law otherwise applicable.]
Whenever a claim of a patent is invalid, an action may be maintained for the infringement of a claim of the patent which may be valid. The patentee shall recover no costs unless a disclaimer of the invalid claim has been entered at the Patent and Trademark Office before the commencement of the suit.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; amended Sept. 16, 2011, Public Law 112-29, sec. 20(h), 125 Stat. 284, effective Sept. 16, 2012.)
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35 U.S.C. 288 (pre-AIA) Action for infringement of a patent containing an invalid claim.
[Editor Note: Not applicable to to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 288 for the law otherwise applicable.]
Whenever, without deceptive intention, a claim of a patent is invalid, an action may be maintained for the infringement of a claim of the patent which may be valid. The patentee shall recover no costs unless a disclaimer of the invalid claim has been entered at the Patent and Trademark Office before the commencement of the suit.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)
35 U.S.C. 289 Additional remedy for infringement of design patent.
Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.
Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.
35 U.S.C. 290 Notice of patent suits.
The clerks of the courts of the United States, within one month after the filing of an action under this title, shall give notice thereof in writing to the Director, setting forth so far as known the names and addresses of the parties, name of the inventor, and the designating number of the patent upon which the action has been brought. If any other patent is subsequently included in the action he shall give like notice thereof. Within one month after the decision is rendered or a judgment issued the clerk of the court shall give notice thereof to the Director. The Director shall, on receipt of such notices, enter the same in the file of such patent.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 291 Derived Patents.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note))*. See 35 U.S.C. 291 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the
inventor of the invention claimed in the patent owned by the person seeking relief under this section.
(b) FILING LIMITATION.—An action under this section may be filed only before the end of the 1-year period beginning on the date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.
(Amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 16, 2012)and 3(h) (effective March 16, 2013)*, 125 Stat. 284.)
*NOTE: The provisions of 35 U.S.C. 291 (pre-AIA), as in effect on March 15, 2013, shall also apply to each claim of an application for patent, and any patent issued thereon, for which the first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note)), if such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i), that occurs before March 16, 2013; or
(B) a specific reference under 35 U.S.C. 120 , 121, or 365(c), to any patent or application that contains or contained at any time such a claim.
35 U.S.C. 291 (pre-AIA) Interfering patents.
[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)).* See 35 U.S.C. 291 for the law otherwise applicable.*]
The owner of an interfering patent may have relief against the owner of another by civil action, and the court may adjudge the question of validity of any of the interfering patents, in whole or in part. The provisions of the second paragraph of section 146 shall apply to actions brought under this section.
(Amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.
*NOTE: The provisions of 35 U.S.C. 291 (pre-AIA), as in effect on March 15, 2013, shall also apply to each claim of an application for patent, and any patent issued thereon, for which the first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note)), if such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i), that occurs before March 16, 2013; or
(B) a specific reference under 35 U.S.C. 120 , 121, or 365(c), to any patent or application that contains or contained at any time such a claim.
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35 U.S.C. 292 False marking.
(a)
Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or
Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public; or
Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public— Shall be fined not more than $500 for every such offense. Only the United States may sue for the penalty authorized by this subsection.
(b) A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury.
(c) The marking of a product, in a manner described in subsection (a), with matter relating to a patent that covered that product but has expired is not a violation of this section.
(Subsection (a) amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(6), 108 Stat. 4990; amended Sept. 16, 2011, Public Law 112-29, sec. 16(b), 125 Stat. 284.)
35 U.S.C. 293 Nonresident patentee; service and notice.
Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; amended Sept. 16, 2011, Public Law 112-29, sec. 9, 125 Stat. 284.)
35 U.S.C. 294 Voluntary arbitration.
(a) A contract involving a patent or any right under a patent may contain a provision requiring arbitration of any dispute relating to patent validity or infringement arising under the contract. In the absence of such a provision, the parties to an existing patent validity or infringement dispute may agree in writing to settle such dispute by arbitration. Any such provision or agreement shall be valid, irrevocable, and enforceable, except for any grounds that exist at law or in equity for revocation of a contract.
(b) Arbitration of such disputes, awards by arbitrators, and confirmation of awards shall be governed by title 9, to the extent such title is not inconsistent with this section. In any such arbitration proceeding, the defenses provided for under section 282 shall be considered by the arbitrator if raised by any party to the proceeding.
(c) An award by an arbitrator shall be final and binding between the parties to the arbitration but shall have no force or effect on any other person. The parties to an arbitration may agree that in the event a patent which is the subject matter of an award is subsequently determined to be invalid or unenforceable in a judgment rendered by a court of competent jurisdiction from which no appeal can or has been taken, such award may be modified by any court of competent jurisdiction upon application by any party to the arbitration. Any such modification shall govern the rights and obligations between such parties from the date of such modification.
(d) When an award is made by an arbitrator, the patentee, his assignee or licensee shall give notice thereof in writing to the Director. There shall be a separate notice prepared for each patent involved in such proceeding. Such notice shall set forth the names and addresses of the parties, the name of the inventor, and the name of the patent owner, shall designate the number of the patent, and shall contain a copy of the award. If an award is modified by a court, the party requesting such modification shall give notice of such modification to the Director. The Director shall, upon receipt of either notice, enter the same in the record of the prosecution of such patent. If the required notice is not filed with the Director, any party to the proceeding may provide such notice to the Director.
(e) The award shall be unenforceable until the notice required by subsection (d) is received by the Director.
(Added Aug. 27, 1982, Public Law 97-247, sec. 17(b)(1), 96 Stat. 322; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); subsections (b) and (c) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.
35 U.S.C. 295 Presumption: Product made by patented process.
In actions alleging infringement of a process patent based on the importation, sale, offered for sale, or use of a product which is made from a process patented in the United States, if the court finds—
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(1) that a substantial likelihood exists that the product was made by the patented process, and
(2) that the plaintiff has made a reasonable effort to determine the process actually used in the production of the product and was unable so to determine, the product shall be presumed to have been so made, and the burden of establishing that the product was not made by the process shall be on the party asserting that it was not so made.
(Added Aug. 23, 1988, Public Law 100-418, sec. 9005(a), 102 Stat. 1566; amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(7), 108 Stat. 4990.)
35 U.S.C. 296 Liability of States, instrumentalities of States, and State officials for infringement of patents.
(a) IN GENERAL.—Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State, acting in his official capacity, shall not be immune, under the eleventh amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person, including any governmental or nongovernmental entity, for infringement of a patent under section 271, or for any other violation under this title.
(b) REMEDIES.—In a suit described in subsection (a) for a violation described in that subsection, remedies (including remedies both at law and in equity) are available for the violation to the same extent as such remedies are available for such a violation in a suit against any private entity. Such remedies include damages, interest, costs, and treble damages under section 284, attorney fees under section 285, and the additional remedy for infringement of design patents under section 289.
(Added Oct. 28, 1992, Public Law 102-560, sec. 2(a)(2), 106 Stat. 4230.)
35 U.S.C. 297 Improper and deceptive invention promotion.
(a) IN GENERAL.— An invention promoter shall have a duty to disclose the following information to a customer in writing, prior to entering into a contract for invention promotion services:
(1) the total number of inventions evaluated by the invention promoter for commercial potential in the past 5 years, as well as the number of those inventions that received positive evaluations, and the number of those inventions that received negative evaluations;
(2) the total number of customers who have contracted with the invention promoter in the past 5 years, not including customers who have purchased trade show services, research, advertising, or other nonmarketing services from the invention promoter, or who have defaulted in their payment to the invention promoter;
(3) the total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by such invention promoter;
(4) the total number of customers known by the invention promoter to have received license agreements for their
inventions as a direct result of the invention promotion services provided by such invention promoter; and
(5) the names and addresses of all previous invention promotion companies with which the invention promoter or its officers have collectively or individually been affiliated in the previous 10 years.
(b) CIVIL ACTION.—
(1) Any customer who enters into a contract with an invention promoter and who is found by a court to have been injured by any material false or fraudulent statement or representation, or any omission of material fact, by that invention promoter (or any agent, employee, director, officer, partner, or independent contractor of such invention promoter), or by the failure of that invention promoter to disclose such information as required under subsection (a), may recover in a civil action against the invention promoter (or the officers, directors, or partners of such invention promoter), in addition to reasonable costs and attorneys’ fees—
(A) the amount of actual damages incurred by the customer; or
(B) at the election of the customer at any time before final judgment is rendered, statutory damages in a sum of not more than $5,000, as the court considers just.
(2) Notwithstanding paragraph (1), in a case where the customer sustains the burden of proof, and the court finds, that the invention promoter intentionally misrepresented or omitted a material fact to such customer, or willfully failed to disclose such information as required under subsection (a), with the purpose of deceiving that customer, the court may increase damages to not more than three times the amount awarded, taking into account past complaints made against the invention promoter that resulted in regulatory sanctions or other corrective actions based on those records compiled by the Commissioner of Patents under subsection (d).
(c) DEFINITIONS.— For purposes of this section—
(1) a “contract for invention promotion services” means a contract by which an invention promoter undertakes invention promotion services for a customer;
(2) a “customer” is any individual who enters into a contract with an invention promoter for invention promotion services;
(3) the term “invention promoter” means any person, firm, partnership, corporation, or other entity who offers to perform or performs invention promotion services for, or on behalf of, a customer, and who holds itself out through advertising in any mass media as providing such services, but does not include—
(A) any department or agency of the Federal Government or of a State or local government;
(B) any nonprofit, charitable, scientific, or educational organization, qualified under applicable State law or described under section 170(b)(1)(A) of the Internal Revenue Code of 1986;
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(C) any person or entity involved in the evaluation to determine commercial potential of, or offering to license or sell, a utility patent or a previously filed nonprovisional utility patent application;
(D) any party participating in a transaction involving the sale of the stock or assets of a business; or
(E) any party who directly engages in the business of retail sales of products or the distribution of products; and
(4) the term “invention promotion services” means the procurement or attempted procurement for a customer of a firm, corporation, or other entity to develop and market products or services that include the invention of the customer.
(d) RECORDS OF COMPLAINTS.—
(1) RELEASE OF COMPLAINTS.— The Commissioner of Patents shall make all complaints received by the Patent and Trademark Office involving invention promoters publicly available, together with any response of the invention promoters. The Commissioner of Patents shall notify the invention promoter of a complaint and provide a reasonable opportunity to reply prior to making such complaint publicly available.
(2) REQUEST FOR COMPLAINTS.— The Commissioner of Patents may request complaints relating to invention promotion services from any Federal or State agency and include such complaints in the records maintained under paragraph (1), together with any response of the invention promoters.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-552 (S. 1948 sec. 4102(a)).)
35 U.S.C. 298 Advice of counsel.
The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.
(Added Sept. 16, 2011, Public Law 112-29, sec. 17, 125 Stat. 284, effective as to patents issued on or after Sept. 16, 2012, effective date revised Public Law 112-274, sec. (1)(a), 126 Stat. 2456 as applicable to any civil action commenced on or after Jan. 14, 2013.)
35 U.S.C. 299 Joinder of parties.
(a) JOINDER OF ACCUSED INFRINGERS.—With respect to any civil action arising under any Act of Congress relating to patents, other than an action or trial in which an act of infringement under section 271(e)(2) has been pled, parties that are accused infringers may be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, only if—
(1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and
(2) questions of fact common to all defendants or counterclaim defendants will arise in the action.
(b) ALLEGATIONS INSUFFICIENT FOR JOINDER.— For purposes of this subsection, accused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, based solely on allegations that they each have infringed the patent or patents in suit.
(c) WAIVER.—A party that is an accused infringer may waive the limitations set forth in this section with respect to that party.
(Added Sept. 16, 2011, Public Law 112-29, sec. 19(d), 125 Stat. 284, corrected Jan. 14, 2013, Public Law 112-274, sec. 1(c), 126 Stat. 2456.)
35 U.S.C. 301 Citation of prior art and written statements.
(a) IN GENERAL.—Any person at any time may cite to the Office in writing—
(1) prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent; or
(2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.
(b) OFFICIAL FILE.—If the person citing prior art or written statements pursuant to subsection (a) explains in writing the pertinence and manner of applying the prior art or written statements to at least 1 claim of the patent, the citation of the prior art or written statements and the explanation thereof shall become a part of the official file of the patent.
(c) ADDITIONAL INFORMATION.—A party that submits a written statement pursuant to subsection (a)(2) shall include any other documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement.
(d) LIMITATIONS.—A written statement submitted pursuant to subsection (a)(2), and additional information submitted pursuant to subsection (c), shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324. If any such written statement or additional information is subject to an applicable protective order, such statement or information shall be redacted to exclude information that is subject to that order.
(e) CONFIDENTIALITY.—Upon the written request of the person citing prior art or written statements pursuant to subsection (a), that person’s identity shall be excluded from the patent file and kept confidential.
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(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3015; amended Sept. 16, 2011, Public Law 112-29, sec. 6(g) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 302 Request for reexamination.
Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301. The request must be in writing and must be accompanied by payment of a reexamination fee established by the Director pursuant to the provisions of section 41. The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested. Unless the requesting person is the owner of the patent, the Director promptly will send a copy of the request to the owner of record of the patent.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3015; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 secs. 4732(a)(8) and 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 303 Determination of issue by Director.
(a) Within three months following the filing of a request for reexamination under the provisions of section 302 , the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him or cited under the provisions of section 301 or 302. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.
(b) A record of the Director’s determination under subsection (a) of this section will be placed in the official file of the patent, and a copy promptly will be given or mailed to the owner of record of the patent and to the person requesting reexamination, if any.
(c) A determination by the Director pursuant to subsection (a) of this section that no substantial new question of patentability has been raised will be final and nonappealable. Upon such a determination, the Director may refund a portion of the reexamination fee required under section 302.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3015; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-581, 582 (S. 1948 secs. 4732(a)(9) and (4732(a)(10)(A)); subsection (a) amended Nov. 2, 2002, Public Law 107-273, sec. 13105, 116 Stat. 1900; amended Sept. 16, 2011, Public Law 112-29, secs. 6(h) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 304 Reexamination order by Director.
If, in a determination made under the provisions of subsection 303(a), the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the
determination will include an order for reexamination of the patent for resolution of the question. The patent owner will be given a reasonable period, not less than two months from the date a copy of the determination is given or mailed to him, within which he may file a statement on such question, including any amendment to his patent and new claim or claims he may wish to propose, for consideration in the reexamination. If the patent owner files such a statement, he promptly will serve a copy of it on the person who has requested reexamination under the provisions of section 302. Within a period of two months from the date of service, that person may file and have considered in the reexamination a reply to any statement filed by the patent owner. That person promptly will serve on the patent owner a copy of any reply filed.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 305 Conduct of reexamination proceedings.
[Editor Note: Applicable to any patent issuing from an application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 305 (pre-AIA) for the law otherwise applicable.]
After the times for filing the statement and reply provided for by section 304 have expired, reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited under the provisions of section 301, or in response to a decision adverse to the patentability of a claim of a patent. No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter. All reexamination proceedings under this section, including any appeal to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016; amended Nov. 8, 1984, Public Law 98-622, sec. 204(c), 98 Stat. 3388; amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 16, 2012) and 3(j) (effective March 16, 2013), 125 Stat. 284.)
35 U.S.C. 305 (pre-AIA) Conduct of reexamination proceedings.
[Editor Note: Not applicable to any patent issuing from an application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 305 for the law otherwise applicable.]
After the times for filing the statement and reply provided for by section 304 have expired, reexamination will be conducted according to the procedures established for initial examination
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under the provisions of sections 132 and 133. In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited under the provisions of section 301, or in response to a decision adverse to the patentability of a claim of a patent. No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter. All reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016; amended Nov. 8, 1984, Public Law 98-622, sec. 204(c), 98 Stat. 3388; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 306 Appeal.
The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134, and may seek court review under the provisions of sections 141 to 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016; amended Sept. 16, 2011, Public Law 112-29, secs. 6(h)(2) (effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 307 Certificate of patentability, unpatentability, and claim cancellation.
(a) In a reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Director will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.
(b) Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding will have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016; amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(8), 108 Stat. 4990; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A))amended Sept. 16, 2011, Public Law 112-29, sec. 20(j), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 311 (note) Inter partes review applicability provisions.
The post-grant review provisions of the Leahy-Smith America Invents Act (AIA) apply only to proceedings commenced on or after Sept. 16, 2012, except that— (1) the extension of jurisdiction to the United States Court of Appeals for the Federal Circuit to entertain appeals of decisions of the Patent Trial and Appeal Board in reexaminations under the amendment made by subsection (c)(2) of the AIA shall be deemed to take effect on Sept. 16, 2011 and shall extend to any decision of the Board of Patent Appeals and Interferences with respect to a reexamination that is entered before, on, or after Sept. 16, 2011;
(2) the provisions of 35 U.S.C. 6 (pre-AIA), 134 (pre-AIA), and 141 (pre-AIA) as in effect on Sept. 15, 2012 shall continue to apply to inter partes reexaminations that are requested under 35 U.S.C. 311 (pre-AIA) before Sept. 16, 2012;
(3) the Patent Trial and Appeal Board may be deemed to be the Board of Patent Appeals and Interferences for purposes of appeals of inter partes reexaminations that are requested under 35 U.S.C. 311 (pre-AIA) before Sept. 16, 2012; and
(4) the Director’s right under the fourth sentence of 35 U.S.C. 143, to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board shall be deemed to extend to inter partes reexaminations that are requested under 35 U.S.C. 311 before Sept. 16, 2012.
(Sept. 16, 2011, Public Law 112-29, sec. 7(e) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 311 Inter partes review.
(a) IN GENERAL.—Subject to the provisions of this chapter, a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent. The Director shall establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review.
(b) SCOPE.—A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.
(c) FILING DEADLINE.*—A petition for inter partes review shall be filed after the later of either—
(1) the date that is 9 months after the grant of a patent; or
(2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (c) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901; amended Sept. 16, 2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
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*NOTE:Pursuant to Public Law 112-274, sec. 1(d), 126 Stat. 2456, Jan. 14, 2013, the filing deadlines of subsection (c) do not apply to patents not subject to the first inventor to file provisions of the AIA (35 U.S.C. 100 (note)).
35 U.S.C. 312 Petitions.
(a) REQUIREMENTS OF PETITION.—A petition filed under section 311 may be considered only if—
(1) the petition is accompanied by payment of the fee established by the Director under section 311;
(2) the petition identifies all real parties in interest;
(3) the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including—
(A) copies of patents and printed publications that the petitioner relies upon in support of the petition; and
(B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions;
(4) the petition provides such other information as the Director may require by regulation; and
(5) the petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner or, if applicable, the designated representative of the patent owner.
(b) PUBLIC AVAILABILITY.—As soon as practicable after the receipt of a petition under section 311, the Director shall make the petition available to the public.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (b) amended Nov. 2, 2002, Public Law 107-273, secs. 13105 and 13202, 116 Stat.1900-1901; subsections (a) and (c) amended Sept. 16, 2011, Public Law 112-29, sec. 6(c)(3), 125 Stat. 284; amended Sept. 16, 2011, Public Law 112-29, sec. 6(a), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 313 Preliminary response to petition.
If an inter partes review petition is filed under section 311, the patent owner shall have the right to file a preliminary response to the petition, within a time period set by the Director, that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); amended Sept. 16, 2011, Public Law 112-29, sec. 6(c)(3), 125 Stat. 284 and further amended by Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 314 Institution of inter partes review.
(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines
that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.
(b) TIMING.—The Director shall determine whether to institute an inter partes review under this chapter pursuant to a petition filed under section 311 within 3 months after—
(1) receiving a preliminary response to the petition under section 313; or
(2) if no such preliminary response is filed, the last date on which such response may be filed.
(c) NOTICE.—The Director shall notify the petitioner and patent owner, in writing, of the Director’s determination under subsection (a), and shall make such notice available to the public as soon as is practicable. Such notice shall include the date on which the review shall commence.
(d) NO APPEAL.—The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b)(1) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901; amended Sept. 16, 2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 315 Relation to other proceedings or actions.
(a) INFRINGER’S CIVIL ACTION.—
(1) INTER PARTES REVIEW BARRED BY CIVIL ACTION.—An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.
(2) STAY OF CIVIL ACTION.—If the petitioner or real party in interest files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for inter partes review of the patent, that civil action shall be automatically stayed until either—
(A) the patent owner moves the court to lift the stay;
(B) the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent; or
(C) the petitioner or real party in interest moves the court to dismiss the civil action.
(3) TREATMENT OF COUNTERCLAIM.—A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection.
(b) PATENT OWNER’SACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time
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limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).
(c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.
(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a) , 251, and 252, and chapter 30, during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.
(e) ESTOPPEL.—
(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b) amended Nov. 2, 2002, Public Law 107-273, sec. 13106, 116 Stat. 1900; subsection (c) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901; amended Sept. 16, 2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 316 Conduct of inter partes review.
(a) REGULATIONS.—The Director shall prescribe regulations—
(1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion;
(2) setting forth the standards for the showing of sufficient grounds to institute a review under section 314(a);
(3) establishing procedures for the submission of supplemental information after the petition is filed;
(4) establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title;
(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to—
(A) the deposition of witnesses submitting affidavits or declarations; and
(B) what is otherwise necessary in the interest of justice;
(6) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding;
(7) providing for protective orders governing the exchange and submission of confidential information;
(8) providing for the filing by the patent owner of a response to the petition under section 313 after an inter partes review has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response;
(9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered under subsection (d) is made available to the public as part of the prosecution history of the patent;
(10) providing either party with the right to an oral hearing as part of the proceeding;
(11) requiring that the final determination in an inter partes review be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 315(c) ;
(12) setting a time period for requesting joinder under section 315(c) ; and
(13) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director.
(b) CONSIDERATIONS.—In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.
(c) PATENT TRIALANDAPPEAL BOARD.—The Patent Trial and Appeal Board shall, in accordance with section 6 , conduct each inter partes review instituted under this chapter.
(d) AMENDMENT OF THE PATENT.—
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(1) IN GENERAL.—During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:
(A) Cancel any challenged patent claim.
(B) For each challenged claim, propose a reasonable number of substitute claims.
(2) ADDITIONAL MOTIONS.—Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 317 , or as permitted by regulations prescribed by the Director.
(3) SCOPE OF CLAIMS.—An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter.
(e) EVIDENTIARY STANDARDS.—In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); amended Sept. 16, 2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 317 Settlement.
(a) IN GENERAL.—An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. If the inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that inter partes review. If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a) .
(b) AGREEMENTS IN WRITING.—Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (b) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901; amended Sept. 16, 2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 318 Decision of the Board.
(a) FINAL WRITTEN DECISION.—If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d) .
(b) CERTIFICATE.—If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.
(c) INTERVENING RIGHTS.—Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes review under this chapter shall have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, before the issuance of a certificate under subsection (b).
(d) DATA ON LENGTH OF REVIEW.—The Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each inter partes review.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); amended Sept. 16, 2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 319 Appeal.
A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) may appeal the decision pursuant to sections 141 through 144 . Any party to the inter partes review shall have the right to be a party to the appeal.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 311 (pre-AIA) Request for inter partes reexamination.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to September 16, 2012.]
(a) IN GENERAL.— Any third-party requester at any time may file a request for inter partes reexamination by the Office of a patent on the basis of any prior art cited under the provisions of section 301.
(b) REQUIREMENTS.— The request shall—
(1) be in writing, include the identity of the real party in interest, and be accompanied by payment of an inter partes
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reexamination fee established by the Director under section 41; and
(2) set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.
(c) COPY.— The Director promptly shall send a copy of the request to the owner of record of the patent.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (c) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901.)
35 U.S.C. 312 (transitional) Determination of issue by Director.
[Editor Note: Applicable to requests for inter partes reexamination filed on or after Sept. 16, 2011, but before Sept. 16, 2012.]
(a) REEXAMINATION.— Not later than 3 months after the filing of a request for inter partes reexamination under section 311, the Director shall determine whether the information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request, with or without consideration of other patents or printed publications. A showing that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.
(b) RECORD.— A record of the Director’s determination under subsection (a) shall be placed in the official file of the patent, and a copy shall be promptly given or mailed to the owner of record of the patent and to the third-party requester.
(c) FINAL DECISION.— A determination by the Director under subsection (a) shall be final and non-appealable. Upon a determination that the showing required by subsection (a) has not been made, the Director may refund a portion of the inter partes reexamination fee required under section 311.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (b) amended Nov. 2, 2002, Public Law 107-273, secs. 13105 and 13202, 116 Stat.1900-1901; amended Sept. 16, 2011, Public Law 112-29, sec. 6(c)(3), 125 Stat. 284.)
35 U.S.C. 313 (transitional) Inter partes reexamination order by Director.
[Editor Note: Applicable to requests for inter partes reexamination filed on or after Sept. 16, 2011, but before Sept. 16, 2012.]
If, in a determination made under section 312(a), the Director finds that it has been shown that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request, the determination shall include
an order for inter partes reexamination of the patent for resolution of the question. The order may be accompanied by the initial action of the Patent and Trademark Office on the merits of the inter partes reexamination conducted in accordance with section 314.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); amended Sept. 16, 2011, Public Law 112-29, sec. 6(c)(3), 125 Stat. 284.)
35 U.S.C. 314 (pre-AIA) Conduct of inter partes reexamination proceedings.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to September 16, 2012.]
(a) IN GENERAL.— Except as otherwise provided in this section, reexamination shall be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any inter partes reexamination proceeding under this chapter, the patent owner shall be permitted to propose any amendment to the patent and a new claim or claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted.
(b) RESPONSE.—
(1) With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the other party. In addition, the Office shall send to the third-party requester a copy of any communication sent by the Office to the patent owner concerning the patent subject to the inter partes reexamination proceeding.
(2) Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity to file written comments addressing issues raised by the action of the Office or the patent owner’s response thereto, if those written comments are received by the Office within 30 days after the date of service of the patent owner’s response.
(c) SPECIAL DISPATCH.— Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b)(1) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901.)
35 U.S.C. 315 (pre-AIA) Appeal.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to September 16, 2012.]
(a) PATENT OWNER.— The patent owner involved in an inter partes reexamination proceeding under this chapter—
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(1) may appeal under the provisions of section 134 and may appeal under the provisions of sections 141 through 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent; and
(2) may be a party to any appeal taken by a third-party requester under subsection (b).
(b) THIRD-PARTY REQUESTER.— A third-party requester—
(1) may appeal under the provisions of section 134, and may appeal under the provisions of sections 141 through 144, with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent; and
(2) may, subject to subsection (c), be a party to any appeal taken by the patent owner under the provisions of section 134 or sections 141 through 144.
(c) CIVIL ACTION.— A third-party requester whose request for an inter partes reexamination results in an order under section 313 is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b) amended Nov. 2, 2002, Public Law 107-273, sec. 13106, 116 Stat. 1900; subsection (c) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901.)
35 U.S.C. 316 (pre-AIA) Certificate of patentability, unpatentability and claim cancellation.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to September 16, 2012.]
(a) IN GENERAL.— In an inter partes reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.
(b) AMENDED OR NEW CLAIM.— Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes reexamination proceeding shall have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made
substantial preparation therefor, prior to issuance of a certificate under the provisions of subsection (a) of this section.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)).)
35 U.S.C. 317 (pre-AIA) Inter partes reexamination prohibited.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to September 16, 2012.]
(a) ORDER FOR REEXAMINATION.— Notwithstanding any provision of this chapter, once an order for inter partes reexamination of a patent has been issued under section 313, neither the third-party requester nor its privies may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination certificate is issued and published under section 316, unless authorized by the Director.
(b) FINAL DECISION.— Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (b) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901.)
35 U.S.C. 318 (pre-AIA) Stay of litigation.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to September 16, 2012.]
Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending determines that a stay would not serve the interests of justice.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)).)
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35 U.S.C. 321 (note) Post-grant review applicability.
(1) APPLICABILITY.—
(A) The post-grant review provisions of the Leahy-Smith America Invents Act (AIA) apply only to patents subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)), except as provided in AIA § 18 and paragraph 2 below.
(B) LIMITATION.—The Director may impose a limit on the number of post-grant reviews that may be instituted under chapter 32 of title 35, United States Code, during each of the first 4 1-year periods in which the these provisions are in effect.
(2) PENDING INTERFERENCES.—
(A) PROCEDURES IN GENERAL.—The Director shall determine, and include in the regulations issued under paragraph (1), the procedures under which an interference commenced before the effective date set forth in paragraph (2)(A) is to proceed, including whether such interference—
(i) is to be dismissed without prejudice to the filing of a petition for a post-grant review under chapter 32 of title 35, United States Code; or
(ii) is to proceed as if the AIA had not been enacted.
(B) PROCEEDINGS BY PATENT TRIAL AND APPEAL BOARD.—For purposes of an interference that is commenced before the effective date set forth in paragraph (2)(A), the Director may deem the Patent Trial and Appeal Board to be the Board of Patent Appeals and Interferences, and may allow the Patent Trial and Appeal Board to conduct any further proceedings in that interference.
(C) APPEALS.—The authorization to appeal or have remedy from derivation proceedings in sections 141(d) and 146 of title 35, United States Code, as amended by this Act, and the jurisdiction to entertain appeals from derivation proceedings in section 1295(a)(4)(A) of title 28, United States Code, as amended by this Act, shall be deemed to extend to any final decision in an interference that is commenced before the effective date set forth in paragraph (2)(A) of this subsection and that is not dismissed pursuant to this paragraph.
(Sept. 16, 2011, Public Law 112-29, sec. 6(f), 125 Stat. 284.)
35 U.S.C. 321 Post-grant review.
(a) IN GENERAL.—Subject to the provisions of this chapter, a person who is not the owner of a patent may file with the Office a petition to institute a post-grant review of the patent. The Director shall establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the post-grant review.
(b) SCOPE.—A petitioner in a post-grant review may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim).
(c) FILING DEADLINE.—A petition for a post-grant review may only be filed not later than the date that is 9 months after the date of the grant of the patent or of the issuance of a reissue patent (as the case may be).
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective Sept. 16, 2012), 125 Stat. 284.)
(Public Law 112-29, sec. 18, 125 Stat. 284 (Sept. 16, 2011) provided a transitional program for covered business method patents (see AIA § 18).)
35 U.S.C. 322 Petitions.
(a) REQUIREMENTS OF PETITION.—A petition filed under section 321 may be considered only if—
(1) the petition is accompanied by payment of the fee established by the Director under section 321;
(2) the petition identifies all real parties in interest;
(3) the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including—
(A) copies of patents and printed publications that the petitioner relies upon in support of the petition; and
(B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on other factual evidence or on expert opinions;
(4) the petition provides such other information as the Director may require by regulation; and
(5) the petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner or, if applicable, the designated representative of the patent owner.
(b) PUBLIC AVAILABILITY.—As soon as practicable after the receipt of a petition under section 321, the Director shall make the petition available to the public.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 323 Preliminary response to petition.
If a post-grant review petition is filed under section 321, the patent owner shall have the right to file a preliminary response to the petition, within a time period set by the Director, that sets forth reasons why no post-grant review should be instituted based upon the failure of the petition to meet any requirement of this chapter.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 324 Institution of post-grant review.
(a) THRESHOLD.—The Director may not authorize a post-grant review to be instituted unless the Director determines that the information presented in the petition filed under section
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321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.
(b) ADDITIONAL GROUNDS.—The determination required under subsection (a) may also be satisfied by a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.
(c) TIMING.—The Director shall determine whether to institute a post-grant review under this chapter pursuant to a petition filed under section 321 within 3 months after—
(1) receiving a preliminary response to the petition under section 323; or
(2) if no such preliminary response is filed, the last date on which such response may be filed.
(d) NOTICE.—The Director shall notify the petitioner and patent owner, in writing, of the Director’s determination under subsection (a) or (b), and shall make such notice available to the public as soon as is practicable. Such notice shall include the date on which the review shall commence.
(e) NO APPEAL.—The determination by the Director whether to institute a post-grant review under this section shall be final and nonappealable.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 325 Relation to other proceedings or actions.
(a) INFRINGER’S CIVIL ACTION.—
(1) POST-GRANT REVIEW BARRED BY CIVIL ACTION.—A post-grant review may not be instituted under this chapter if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.
(2) STAY OF CIVIL ACTION.—If the petitioner or real party in interest files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for post-grant review of the patent, that civil action shall be automatically stayed until either—
(A) the patent owner moves the court to lift the stay;
(B) the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent; or
(C) the petitioner or real party in interest moves the court to dismiss the civil action.
(3) TREATMENT OF COUNTERCLAIM.—A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection.
(b) PRELIMINARY INJUNCTIONS.—If a civil action alleging infringement of a patent is filed within 3 months after the date on which the patent is granted, the court may not stay its consideration of the patent owner’s motion for a preliminary injunction against infringement of the patent on the basis that a
petition for post-grant review has been filed under this chapter or that such a post-grant review has been instituted under this chapter.
(c) JOINDER.—If more than 1 petition for a post-grant review under this chapter is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a post-grant review under section 324 , the Director may consolidate such reviews into a single post-grant review.
(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a) , 251, and 252, and chapter 30, during the pendency of any post- grant review under this chapter, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.
(e) ESTOPPEL.—
(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a) , or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.
(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.
(f) REISSUE PATENTS.—A post-grant review may not be instituted under this chapter if the petition requests cancellation of a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued, and the time limitations in section 321(c) would bar filing a petition for a post-grant review for such original patent.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 326 Conduct of post-grant review.
(a) REGULATIONS.—The Director shall prescribe regulations—
(1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall,
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if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion;
(2) setting forth the standards for the showing of sufficient grounds to institute a review under subsections (a) and (b) of section 324;
(3) establishing procedures for the submission of supplemental information after the petition is filed;
(4) establishing and governing a post-grant review under this chapter and the relationship of such review to other proceedings under this title;
(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to evidence directly related to factual assertions advanced by either party in the proceeding;
(6) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding;
(7) providing for protective orders governing the exchange and submission of confidential information;
(8) providing for the filing by the patent owner of a response to the petition under section 323 after a post-grant review has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response;
(9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered under subsection (d) is made available to the public as part of the prosecution history of the patent;
(10) providing either party with the right to an oral hearing as part of the proceeding;
(11) requiring that the final determination in any post-grant review be issued not later than 1 year after the date on which the Director notices the institution of a proceeding under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 325(c); and
(12) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director.
(b) CONSIDERATIONS.—In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.
(c) PATENT TRIALANDAPPEAL BOARD.—The Patent Trial and Appeal Board shall, in accordance with section 6, conduct each post-grant review instituted under this chapter.
(d) AMENDMENT OF THE PATENT.—
(1) IN GENERAL.—During a post-grant review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:
(A) Cancel any challenged patent claim.
(B) For each challenged claim, propose a reasonable number of substitute claims.
(2) ADDITIONAL MOTIONS.—Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 327, or upon the request of the patent owner for good cause shown.
(3) SCOPE OF CLAIMS.—An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter.
(e) EVIDENTIARY STANDARDS.—In a post-grant review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 327 Settlement.
(a) IN GENERAL.—A post-grant review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. If the post-grant review is terminated with respect to a petitioner under this section, no estoppel under section 325(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that post-grant review. If no petitioner remains in the post-grant review, the Office may terminate the post-grant review or proceed to a final written decision under section 328(a).
(b) AGREEMENTS IN WRITING.—Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of a post-grant review under this section shall be in writing, and a true copy of such agreement or understanding shall be filed in the Office before the termination of the post-grant review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 328 Decision of the Board.
(a) FINAL WRITTEN DECISION.—If a post-grant review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with
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respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 326(d).
(b) CERTIFICATE.—If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.
(c) INTERVENING RIGHTS.—Any proposed amended or new claim determined to be patentable and incorporated into a patent following a post-grant review under this chapter shall have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, before the issuance of a certificate under subsection (b).
(d) DATA ON LENGTH OF REVIEW.—The Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each post-grant review.
(Added Sept. 16, 2011, Public Law 112-29, secs. 6(d) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 329 Appeal.
A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 328(a) may appeal the decision pursuant to sections 141 through 144. Any party to the post-grant review shall have the right to be a party to the appeal.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective Sept. 16, 2012), 125 Stat. 284.)
IV
PATENT COOPERATION TREATY
35 U.S.C. 351 Definitions.
When used in this part unless the context otherwise indicates—
(a) The term “treaty” means the Patent Cooperation Treaty done at Washington, on June 19, 1970.
(b) The term “Regulations,” when capitalized, means the Regulations under the treaty, done at Washington on the same date as the treaty. The term “regulations,” when not capitalized, means the regulations established by the Director under this title.
(c) The term “international application” means an application filed under the treaty.
(d) The term “international application originating in the United States” means an international application filed in the Patent and Trademark Office when it is acting as a Receiving Office under the treaty, irrespective of whether or not the United States has been designated in that international application.
(e) The term “international application designating the United States” means an international application specifying the United States as a country in which a patent is sought, regardless where such international application is filed.
(f) The term “Receiving Office” means a national patent office or intergovernmental organization which receives and processes international applications as prescribed by the treaty and the Regulations.
(g) The terms “International Searching Authority” and “International Preliminary Examining Authority” mean a national patent office or intergovernmental organization as appointed under the treaty which processes international applications as prescribed by the treaty and the Regulations.
(h) The term “International Bureau” means the international intergovernmental organization which is recognized as the coordinating body under the treaty and the Regulations.
(i) Terms and expressions not defined in this part are to be taken in the sense indicated by the treaty and the Regulations.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 685; amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; Nov. 6, 1986, Public Law 99-616, sec. 2 (a)-(c), 100 Stat. 3485; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 361 Receiving Office.
(a) The Patent and Trademark Office shall act as a Receiving Office for international applications filed by nationals or residents of the United States. In accordance with any agreement made between the United States and another country, the Patent and Trademark Office may also act as a Receiving Office for international applications filed by residents or nationals of such country who are entitled to file international applications.
(b) The Patent and Trademark Office shall perform all acts connected with the discharge of duties required of a Receiving Office, including the collection of international fees and their transmittal to the International Bureau.
(c) International applications filed in the Patent and Trademark Office shall be filed in the English language, or an English translation shall be filed within such later time as may be fixed by the Director.
(d) The international fee, and the transmittal and search fees prescribed under section 376(a) of this part, shall either be paid on filing of an international application or within such later time as may be fixed by the Director.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; amended Nov. 8, 1984, Public Law 98-622, sec. 401(a), 403(a), 98 Stat. 3391-3392; Nov. 6, 1986, Public Law 99-616, sec. 2(d), 100 Stat. 3485; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A))); subsection (c) amended Dec. 18, 2012, Public Law 112-211, sec. 202(b)(7), 126 Stat. 1536.)
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35 U.S.C. 362 International Searching Authority and International Preliminary Examining Authority.
(a) The Patent and Trademark Office may act as an International Searching Authority and International Preliminary Examining Authority with respect to international applications in accordance with the terms and conditions of an agreement which may be concluded with the International Bureau, and may discharge all duties required of such Authorities, including the collection of handling fees and their transmittal to the International Bureau.
(b) The handling fee, preliminary examination fee, and any additional fees due for international preliminary examination shall be paid within such time as may be fixed by the Director.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; amended Nov. 8, 1984, Public Law 98-622, sec. 403 (a), 98 Stat. 3392; Nov. 6, 1986, Public Law 99-616, sec. 4, 100 Stat. 3485; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 363 International application designating the United States: Effect.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 363 (pre-AIA) for the law otherwise applicable.]
An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 16, 2012) and 3(g) (effective March 16, 2013), 125 Stat. 284.)
35 U.S.C. 363 (pre-AIA) International application designating the United States: Effect.
[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 363 for the law otherwise applicable.]
An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office except as otherwise provided in section 102(e).
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 364 International stage: Procedure.
(a) International applications shall be processed by the Patent and Trademark Office when acting as a Receiving Office,
International Searching Authority, or International Preliminary Examining Authority, in accordance with the applicable provisions of the treaty, the Regulations, and this title.
(b) An applicant’s failure to act within prescribed time limits in connection with requirements pertaining to an international application may be excused as provided in the treaty and the Regulations.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; subsection (a) amended Nov. 6, 1986, Public Law 99-616, sec. 5, 100 Stat. 3485; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); Dec. 18, 2012, sec. 202(b)(8), 126 Stat. 1536.)
35 U.S.C. 365 Right of priority; benefit of the filing date of a prior application.
(a) In accordance with the conditions and requirements of subsections (a) through (d) of section 119, a national application shall be entitled to the right of priority based on a prior filed international application which designated at least one country other than the United States.
(b) In accordance with the conditions and requirements of section 119(a) and the treaty and the Regulations, an international application designating the United States shall be entitled to the right of priority based on a prior foreign application, or a prior international application designating at least one country other than the United States. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim for priority under the treaty and the Regulations, and to accept a priority claim that pertains to an application that was not filed within the priority period specified in the treaty and Regulations, but was filed within the additional 2-month period specified under section 119(a) or the treaty and Regulations.
(c) In accordance with the conditions and requirements of section 120, an international application designating the United States shall be entitled to the benefit of the filing date of a prior national application, a prior international application designating the United States, or a prior international design application as defined in section 381(a)(6) designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States. If any claim for the benefit of an earlier filing date is based on a prior international application which designated but did not originate in the United States, or a prior international design application as defined in section 381(a)(6)which designated but did not originate in the United States, the Director may require the filing in the Patent and Trademark Office of a certified copy of such application together with a translation thereof into the English language, if it was filed in another language.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; Dec. 8, 1994, Public Law 103-465, sec. 532(c)(4), 108 Stat. 4987; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept.
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16, 2012), 125 Stat. 284; subsection (b) amended Dec. 18, 2012, Public Law 112-211, sec. 201(c)(2), 126 Stat. 1535; subsection (c) amended Dec. 18, 2012, Public Law 112-211, sec. 102(8) (effective May 13, 2015), 126 Stat. 1532.)
35 U.S.C. 366 Withdrawn international application.
Subject to section 367 of this part, if an international application designating the United States is withdrawn or considered withdrawn, either generally or as to the United States, under the conditions of the treaty and the Regulations, before the applicant has complied with the applicable requirements prescribed by section 371(c) of this part, the designation of the United States shall have no effect after the date of withdrawal and shall be considered as not having been made, unless a claim for benefit of a prior filing date under section 365(c) of this section was made in a national application, or an international application designating the United States, or a claim for benefit under section 386(c) was made in an international design application designating the United States, filed before the date of such withdrawal. However, such withdrawn international application may serve as the basis for a claim of priority under section 365 (a) and (b), or under section 386(a) or (b), if it designated a country other than the United States.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687; amended Nov. 8, 1984, Public Law 98-622, sec. 401(b), 98 Stat. 3391; amended Dec. 18, 2012, Public Law 112-211, sec. 102(9) (effective May 13, 2015), 126 Stat. 1532.)
35 U.S.C. 367 Actions of other authorities: Review.
(a) Where a Receiving Office other than the Patent and Trademark Office has refused to accord an international filing date to an international application designating the United States or where it has held such application to be withdrawn either generally or as to the United States, the applicant may request review of the matter by the Director, on compliance with the requirements of and within the time limits specified by the treaty and the Regulations. Such review may result in a determination that such application be considered as pending in the national stage.
(b) The review under subsection (a) of this section, subject to the same requirements and conditions, may also be requested in those instances where an international application designating the United States is considered withdrawn due to a finding by the International Bureau under article 12 (3) of the treaty.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687; amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat 3392; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 368 Secrecy of certain inventions; filing international applications in foreign countries.
(a) International applications filed in the Patent and Trademark Office shall be subject to the provisions of chapter 17.
(b) In accordance with article 27 (8) of the treaty, the filing of an international application in a country other than the United States on the invention made in this country shall be considered
to constitute the filing of an application in a foreign country within the meaning of chapter 17, whether or not the United States is designated in that international application.
(c) If a license to file in a foreign country is refused or if an international application is ordered to be kept secret and a permit refused, the Patent and Trademark Office when acting as a Receiving Office, International Searching Authority, or International Preliminary ExaminingAuthority, may not disclose the contents of such application to anyone not authorized to receive such disclosure.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687; amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; Nov. 6, 1986, Public Law 99-616, sec. 6, 100 Stat. 3486; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 371 National stage: Commencement.
(a) Receipt from the International Bureau of copies of international applications with any amendments to the claims, international search reports, and international preliminary examination reports including any annexes thereto may be required in the case of international applications designating or electing the United States.
(b) Subject to subsection (f) of this section, the national stage shall commence with the expiration of the applicable time limit under article 22 (1) or (2), or under article 39 (1)(a) of the treaty.
(c) The applicant shall file in the Patent and Trademark Office—
(1) the national fee provided in section 41(a);
(2) a copy of the international application, unless not required under subsection (a) of this section or already communicated by the International Bureau, and a translation into the English language of the international application, if it was filed in another language;
(3) amendments, if any, to the claims in the international application, made under article 19 of the treaty, unless such amendments have been communicated to the Patent and Trademark Office by the International Bureau, and a translation into the English language if such amendments were made in another language;
(4) an oath or declaration of the inventor (or other person authorized under chapter 11) complying with the requirements of section 115 and with regulations prescribed for oaths or declarations of applicants;
(5) a translation into the English language of any annexes to the international preliminary examination report, if such annexes were made in another language.
(d) The requirement with respect to the national fee referred to in subsection (c)(1), the translation referred to in subsection (c)(2), and the oath or declaration referred to in subsection (c)(4) of this section shall be complied with by the date of the commencement of the national stage or by such later time as may be fixed by the Director. The copy of the international application referred to in subsection (c)(2) shall be submitted by the date of the commencement of the national stage. Failure
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to comply with these requirements shall be regarded as abandonment of the application by the parties thereof. The payment of a surcharge may be required as a condition of accepting the national fee referred to in subsection (c)(1) or the oath or declaration referred to in subsection (c)(4) of this section if these requirements are not met by the date of the commencement of the national stage. The requirements of subsection (c)(3) of this section shall be complied with by the date of the commencement of the national stage, and failure to do so shall be regarded as a cancellation of the amendments to the claims in the international application made under article 19 of the treaty. The requirement of subsection (c)(5) shall be complied with at such time as may be fixed by the Director and failure to do so shall be regarded as cancellation of the amendments made under article 34 (2)(b) of the treaty.
(e) After an international application has entered the national stage, no patent may be granted or refused thereon before the expiration of the applicable time limit under article 28 or article 41 of the treaty, except with the express consent of the applicant. The applicant may present amendments to the specification, claims, and drawings of the application after the national stage has commenced.
(f) At the express request of the applicant, the national stage of processing may be commenced at any time at which the application is in order for such purpose and the applicable requirements of subsection (c) of this section have been complied with.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 688; amended Nov. 8, 1984, Public Law 98-622, sec. 402(a)-(d), 403(a), 98 Stat. 3391, 3392; subsections (a), (b), (c), (d), and (e) amended Nov. 6, 1986, Public Law, 99-616, sec. 7, 100 Stat. 3486; subsection (c)(1) amended Dec. 10, 1991, Public Law 102-204, sec. 5(g)(2), 105 Stat. 1641; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); subsection (d) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; amended Sept. 16, 2011, Public Law 112-29, secs. 20(i) and (j) (effective Sept. 16, 2012), 125 Stat. 284; subsection (d) amended Dec. 18, 2012, Public Law 112-211, sec. 202(b)(9), 126 Stat. 1536.
35 U.S.C. 372 National stage: Requirements and procedure.
(a) All questions of substance and, within the scope of the requirements of the treaty and Regulations, procedure in an international application designating the United States shall be determined as in the case of national applications regularly filed in the Patent and Trademark Office.
(b) In case of international applications designating but not originating in, the United States—
(1) the Director may cause to be reexamined questions relating to form and contents of the application in accordance with the requirements of the treaty and the Regulations;
(2) the Director may cause the question of unity of invention to be reexamined under section 121, within the scope of the requirements of the treaty and the Regulations; and
(3) the Director may require a verification of the translation of the international application or any other document
pertaining to the application if the application or other document was filed in a language other than English.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689; amended Nov. 8, 1984, Public Law 98-622, sec. 402(e), (f), 403(a), 98 Stat. 3392; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 373 [Repealed.]
(Repealed Jan. 14, 2013, Public Law 112-274, sec. 1(i), 126 Stat. 2456.)
35 U.S.C. 374 Publication of international application.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 374 (pre-AIA) for the law otherwise applicable.]
The publication under the treaty defined in section 351(a), of an international application designating the United States shall be deemed a publication under section 122(b), except as provided in section 154(d).
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 4507(10)); amended Nov. 2, 2002, Public Law 107-273, sec.13205, 116 Stat. 1903; amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 16, 2012) and 3(g)(effective March 16, 2013), 125 Stat. 284.)
35 U.S.C. 374 (pre-AIA) Publication of international application.
[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 374 for the law otherwise applicable.]
The publication under the treaty defined in section 351(a) , of an international application designating the United States shall be deemed a publication under section 122(b) , except as provided in sections 102(e) and 154(d) .
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 4507(10)); amended Nov. 2, 2002, Public Law 107-273, sec.13205, 116 Stat. 1903; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 375 Patent issued on international application: Effect.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100
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(note)). See 35 U.S.C. 375 (pre-AIA) for the law otherwise applicable.]
(a) A patent may be issued by the Director based on an international application designating the United States, in accordance with the provisions of this title. Such patent shall have the force and effect of a patent issued on a national application filed under the provisions of chapter 11.
(b) Where due to an incorrect translation the scope of a patent granted on an international application designating the United States, which was not originally filed in the English language, exceeds the scope of the international application in its original language, a court of competent jurisdiction may retroactively limit the scope of the patent, by declaring it unenforceable to the extent that it exceeds the scope of the international application in its original language.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 16, 2012) and 3(g)(effective March 16, 2013), 125 Stat. 284. )
35 U.S.C. 375 (pre-AIA) Patent issued on international application: Effect.
[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 375 for the law otherwise applicable.]
(a) A patent may be issued by the Director based on an international application designating the United States, in accordance with the provisions of this title. Subject to section 102(e) , such patent shall have the force and effect of a patent issued on a national application filed under the provisions of chapter 11.
(b) Where due to an incorrect translation the scope of a patent granted on an international application designating the United States, which was not originally filed in the English language, exceeds the scope of the international application in its original language, a court of competent jurisdiction may retroactively limit the scope of the patent, by declaring it unenforceable to the extent that it exceeds the scope of the international application in its original language.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 376 Fees.
(a) The required payment of the international fee and the handling fee, which amounts are specified in the Regulations, shall be paid in United States currency. The Patent and Trademark Office shall charge a national fee as provided in section 41(a), and may also charge the following fees:
(1) A transmittal fee (see section 361(d)).
(2) A search fee (see section 361(d)).
(3) A supplemental search fee (to be paid when required).
(4) A preliminary examination fee and any additional fees (see section 362(b)).
(5) Such other fees as established by the Director.
(b) The amounts of fees specified in subsection (a) of this section, except the international fee and the handling fee, shall be prescribed by the Director. He may refund any sum paid by mistake or in excess of the fees so specified, or if required under the treaty and the Regulations. The Director may also refund any part of the search fee, the national fee, the preliminary examination fee and any additional fees, where he determines such refund to be warranted.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 690, amended Nov. 8, 1984, Public Law 98-622, sec. 402(g), 403(a), 98 Stat. 3392; Nov. 6, 1986, Public Law 99-616, sec. 8(a) & (b), 100 Stat. 3486; Dec. 10, 1991, Public Law 102-204, sec. 5(g)(1), 105 Stat. 1640; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501-582 (S. 1948 sec. 4732(a)(10)(A)); subsections (a)(1)-(a)(3) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905.)
V
THE HAGUE AGREEMENT CONCERNING INTERNATIONAL REGISTRATION OF INDUSTRIAL
DESIGNS
35 U.S.C. 381 Definitions.
(a) IN GENERAL.—When used in this part, unless the context otherwise indicates—
(1) the term "treaty" means the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva on July 2, 1999;
(2) the term "regulations"—
(A) when capitalized, means the Common Regulations under the treaty; and
(B) when not capitalized, means the regulations established by the Director under this title;
(3) the terms "designation", "designating", and "designate" refer to a request that an international registration have effect in a Contracting Party to the treaty;
(4) the term "International Bureau" means the international intergovernmental organization that is recognized as the coordinating body under the treaty and the Regulations;
(5) the term "effective registration date" means the date of international registration determined by the International Bureau under the treaty;
(6) the term "international design application" means an application for international registration; and
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(7) the term "international registration" means the international registration of an industrial design filed under the treaty.
(b) RULE OF CONSTRUCTION.—Terms and expressions not defined in this part are to be taken in the sense indicated by the treaty and the Regulations.
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a) (effective May 13, 2015), 126 Stat. 1527.)
35 U.S.C. 382 Filing international design applications.
(a) IN GENERAL.—Any person who is a national of the United States, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States, may file an international design application by submitting to the Patent and Trademark Office an application in such form, together with such fees, as may be prescribed by the Director.
(b) REQUIRED ACTION.—The Patent and Trademark Office shall perform all acts connected with the discharge of its duties under the treaty, including the collection of international fees and transmittal thereof to the International Bureau. Subject to chapter 17, international design applications shall be forwarded by the Patent and Trademark Office to the International Bureau, upon payment of a transmittal fee.
(c) APPLICABILITY OF CHAPTER 16.—Except as otherwise provided in this chapter, the provisions of chapter 16 shall apply.
(d) APPLICATION FILED IN ANOTHER COUNTRY.—An international design application on an industrial design made in this country shall be considered to constitute the filing of an application in a foreign country within the meaning of chapter 17 if the international design application is filed—
(1) in a country other than the United States;
(2) at the International Bureau; or
(3) with an intergovernmental organization.
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a) (effective May 13, 2015), 126 Stat. 1528.)
35 U.S.C. 383 International design application.
In addition to any requirements pursuant to chapter 16, the international design application shall contain—
(1) a request for international registration under the treaty;
(2) an indication of the designated Contracting Parties;
(3) data concerning the applicant as prescribed in the treaty and the Regulations;
(4) copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international design application, presented in the number and manner prescribed in the treaty and the Regulations;
(5) an indication of the product or products that constitute the industrial design or in relation to which the industrial design is to be used, as prescribed in the treaty and the Regulations;
(6) the fees prescribed in the treaty and the Regulations; and
(7) any other particulars prescribed in the Regulations.
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a) (effective May 13, 2015), 126 Stat. 1528.)
35 U.S.C. 384 Filing date.
(a) IN GENERAL.—Subject to subsection (b), the filing date of an international design application in the United States shall be the effective registration date. Notwithstanding the provisions of this part, any international design application designating the United States that otherwise meets the requirements of chapter 16 may be treated as a design application under chapter 16.
(b) REVIEW.—An applicant may request review by the Director of the filing date of the international design application in the United States. The Director may determine that the filing date of the international design application in the United States is a date other than the effective registration date. The Director may establish procedures, including the payment of a surcharge, to review the filing date under this section. Such review may result in a determination that the application has a filing date in the United States other than the effective registration date.
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a), 126 Stat. 1529.)
35 U.S.C. 385 Effect of international design application.
An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16.
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a) (effective May 13, 2015), 126 Stat. 1529.)
35 U.S.C. 386 Right of priority.
(a) NATIONAL APPLICATION.—In accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172, a national application shall be entitled to the right of priority based on a prior international design application that designated at least 1 country other than the United States.
(b) PRIOR FOREIGN APPLICATION.—In accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172 and the treaty and the Regulations, an international design application designating the United States shall be entitled to the right of priority based on a prior foreign application, a prior international application as defined in section 351(c) designating at least 1 country other
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than the United States, or a prior international design application designating at least 1 country other than the United States.
(c) PRIOR NATIONAL APPLICATION.—In accordance with the conditions and requirements of section 120, an international design application designating the United States shall be entitled to the benefit of the filing date of a prior national application, a prior international application as defined in section 351(c) designating the United States, or a prior international design application designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international design application designating the United States. If any claim for the benefit of an earlier filing date is based on a prior international application as defined in section 351(c) which designated but did not originate in the United States or a prior international design application which designated but did not originate in the United States, the Director may require the filing in the Patent and Trademark Office of a certified copy of such application together with a translation thereof into the English language, if it was filed in another language.
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a) (effective May 13, 2015), 126 Stat. 1529.)
35 U.S.C. 387 Relief from prescribed time limits.
An applicant’s failure to act within prescribed time limits in connection with requirements pertaining to an international design application may be excused as to the United States upon a showing satisfactory to the Director of unintentional delay and under such conditions, including a requirement for payment of the fee specified in section 41(a)(7), as may be prescribed by the Director.
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a) (effective May 13, 2015), 126 Stat. 1530.)
35 U.S.C. 388 Withdrawn or abandoned international design application.
Subject to sections 384 and 387, if an international design application designating the United States is withdrawn, renounced or canceled or considered withdrawn or abandoned, either generally or as to the United States, under the conditions of the treaty and the Regulations, the designation of the United States shall have no effect after the date of withdrawal, renunciation, cancellation, or abandonment and shall be considered as not having been made, unless a claim for benefit of a prior filing date under section 386(c) was made in a national application, or an international design application designating the United States, or a claim for benefit under section 365(c) was made in an international application designating the United States, filed before the date of such withdrawal, renunciation, cancellation, or abandonment. However, such withdrawn, renounced, canceled, or abandoned international design application may serve as the basis for a claim of priority under subsections (a) and (b) of section 386, or under subsection (a) or (b) of section 365, if it designated a country other than the United States.
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a) (effective May 13, 2015), 126 Stat. 1530.)
35 U.S.C. 389 Examination of international design application.
(a) IN GENERAL.—The Director shall cause an examination to be made pursuant to this title of an international design application designating the United States.
(b) APPLICABILITY OF CHAPTER 16.—All questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16.
(c) FEES.—The Director may prescribe fees for filing international design applications, for designating the United States, and for any other processing, services, or materials relating to international design applications, and may provide for later payment of such fees, including surcharges for later submission of fees.
(d) ISSUANCE OF PATENT.—The Director may issue a patent based on an international design application designating the United States, in accordance with the provisions of this title. Such patent shall have the force and effect of a patent issued on an application filed under chapter 16.
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a) (effective May 13, 2015), 126 Stat. 1530.)
35 U.S.C. 390 Publication of international design application.
The publication under the treaty of an international design application designating the United States shall be deemed a publication under section 122(b).
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a) (effective May 13, 2015), 126 Stat. 1530.)
SELECTED PROVISIONS OF OTHER TITLES OF THE UNITED STATES CODE
SELECT PROVISIONS OF TITLE 18, UNITED STATES CODE
18 U.S.C. 1001 Statements or entries generally.
(a) Except as otherwise provided in this section, whoever, in any matter within the jurisdiction of the executive, legislative, or judicial branch of the Government of the United States, knowingly and willfully—
(1) falsifies, conceals, or covers up by any trick, scheme, or device a material fact;
(2) makes any materially false, fictitious, or fraudulent statement or representation; or
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(3) makes or uses any false writing or document knowing the same to contain any materially false, fictitious, or fraudulent statement or entry; shall be fined under this title, imprisoned not more than 5 years or, if the offense involves international or domestic terrorism (as defined in section 2331), imprisoned not more than 8 years, or both. If the matter relates to an offense under chapter 109A, 109B, 110, or 117, or section 1591, then the term of imprisonment imposed under this section shall be not more than 8 years.
(b) Subsection (a) does not apply to a party to a judicial proceeding, or that party’s counsel, for statements, representations, writings or documents submitted by such party or counsel to a judge or magistrate in that proceeding.
(c) With respect to any matter within the jurisdiction of the legislative branch, subsection (a) shall apply only to —
(1) administrative matters, including a claim for payment, a matter related to the procurement of property or services, personnel or employment practices, or support services, or a document required by law, rule, or regulation to be submitted to the Congress or any office or officer within the legislative branch; or
(2) any investigation or review, conducted pursuant to the authority of any committee, subcommittee, commission or office of the Congress, consistent with applicable rules of the House or Senate.
(Amended Sept. 13, 1994, Public Law 103-322, sec. 330016(1)(L), 108 Stat. 2147; Oct. 11, 1996, Public Law 104-292, Sec. 2, 110 Stat. 3459.)
(Subsection (a) amended Dec. 17, 2004, Public Law 108-458, sec. 6703(a), 118 Stat. 3766; July 27, 2006, Public Law 109-248, sec. 141(c), 120 Stat. 603.)
18 U.S.C. 2071 Concealment, removal, or mutilation generally.
(a) Whoever willfully and unlawfully conceals, removes, mutilates, obliterates, or destroys, or attempts to do so, or, with intent to do so takes and carries away any record, proceeding, map, book, paper, document, or other thing, filed or deposited with any clerk or officer of any court of the United States, or in any public office, or with any judicial or public officer of the United States, shall be fined under this title or imprisoned not more than three years, or both.
(b) Whoever, having the custody of any such record, proceeding, map, book, document, paper, or other thing, willfully and unlawfully conceals, removes, mutilates, obliterates, falsifies, or destroys the same, shall be fined under this title or imprisoned not more than three years, or both; and shall forfeit his office and be disqualified from holding any office under the United States. As used in this subsection, the term “office” does not include the office held by any person as a retired officer of the Armed Forces of the United States.
(Amended Nov. 5, 1990, Public Law 101-510, sec. 552(a), 104 Stat. 1566; Sept. 13, 1994, Public Law 103-322, sec. 330016(1)(I), 108 Stat. 2147.)
UNCODIFIED LAW
SELECT UNCODIFIED AIA PROVISIONS
AIA § 14 (Related to 35 U.S.C. 102, 103) Tax strategies deemed within the prior art.
(a) IN GENERAL.—For purposes of evaluating an invention under section 102 or 103 of title 35, United States Code, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.
(b) DEFINITION.—For purposes of this section, the term ‘‘tax liability’’ refers to any liability for a tax under any Federal, State, or local law, or the law of any foreign jurisdiction, including any statute, rule, regulation, or ordinance that levies, imposes, or assesses such tax liability.
(c) EXCLUSIONS.—This section does not apply to that part of an invention that—
(1) is a method, apparatus, technology, computer program product, or system, that is used solely for preparing a tax or information return or other tax filing, including one that records, transmits, transfers, or organizes data related to such filing; or
(2) is a method, apparatus, technology, computer program product, or system used solely for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor.
(d) RULE OF CONSTRUCTION.—Nothing in this section shall be construed to imply that other business methods are patentable or that other business method patents are valid.
(e) EFFECTIVE DATE; APPLICABILITY.—This section shall take effect on [Sept. 16, 2011] and shall apply to any patent application that is pending on, or filed on or after, that date, and to any patent that is issued on or after that date.
(Sept. 16, 2011, Public Law 112-29, sec. 14, 125 Stat. 284.)
AIA § 18 (Related to 35 U.S.C. 321) Transitional program for covered business method patents.
(a) TRANSITIONAL PROGRAM.—
(1) ESTABLISHMENT.—Not later than Sept. 16, 2012, the Director shall issue regulations establishing and implementing a transitional post-grant review proceeding for review of the validity of covered business method patents. The transitional proceeding implemented pursuant to this subsection shall be regarded as, and shall employ the standards and
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procedures of, a post-grant review under chapter 32 of title 35, United States Code, subject to the following:
(A) 35 U.S.C. 321(c) and 35 U.S.C. 325(b), (e)(2), and (f), shall not apply to a transitional proceeding.
(B) A person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.
(C) A petitioner in a transitional proceeding who challenges the validity of 1 or more claims in a covered business method patent on a ground raised under 35 U.S.C. 102 or 103 as in effect on March 15, 2013 (pre-AIA 35 U.S.C. 102 or 103), may support such ground only on the basis of—
(i) prior art that is described by pre-AIA 35 U.S.C. 102(a); or
(ii) prior art that—
(I) discloses the invention more than 1 year before the date of the application for patent in the United States; and
(II) would be described by pre-AIA 35 U.S.C. 102(a) if the disclosure had been made by another before the invention thereof by the applicant for patent.
(D) The petitioner in a transitional proceeding that results in a final written decision under 35 U.S.C. 328(a), with respect to a claim in a covered business method patent, or the petitioner’s real party in interest, may not assert, either in a civil action arising in whole or in part under section 1338 of title 28, United States Code, or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), that the claim is invalid on any ground that the petitioner raised during that transitional proceeding.
(E) The Director may institute a transitional proceeding only for a patent that is a covered business method patent.
(b) REQUEST FOR STAY.—
(1) IN GENERAL.—If a party seeks a stay of a civil action alleging infringement of a patent under section 281 of title 35, United States Code, relating to a transitional proceeding for that patent, the court shall decide whether to enter a stay based on—
(A) whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial;
(B) whether discovery is complete and whether a trial date has been set;
(C) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and
(D) whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.
(2) REVIEW.—A party may take an immediate interlocutory appeal from a district court’s decision under paragraph (1). The United States Court of Appeals for the Federal Circuit shall review the district court’s decision to ensure consistent application of established precedent, and such review may be de novo.
(c) ATM EXEMPTION FOR VENUE PURPOSES.—In an action for infringement under section 281 of title 35, United States Code, of a covered business method patent, an automated teller machine shall not be deemed to be a regular and established place of business for purposes of section 1400(b) of title 28, United States Code.
(d) DEFINITION.—
(1) IN GENERAL.—For purposes of this section, the term ‘‘covered business method patent’’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.
(2) REGULATIONS.—To assist in implementing the transitional proceeding authorized by this section, the Director shall issue regulations for determining whether a patent is for a technological invention.
(e) RULE OF CONSTRUCTION.—Nothing in this section shall be construed as amending or interpreting categories of patent-eligible subject matter set forth under 35 U.S.C. 101.
(Sept. 16, 2011, Public Law 112-29, sec. 18, 125 Stat. 284, corrected Jan. 14, 2013, Public Law 112-274, sec. 1(b), 126 Stat. 2456.)
AIA § 33 (Related to 35 U.S.C. 101) —Limitation on issuance of patents.
(a) LIMITATION.—Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
(b) EFFECTIVE DATE.—
(1) IN GENERAL.— Subsection (a) shall apply to any application for patent that is pending on, or filed on or after, the date of the enactment of this Act [Sept. 16, 2011].
(2) PRIOR APPLICATIONS.—Subsection (a) shall not affect the validity of any patent issued on an application to which paragraph (1) does not apply.
(Sept. 16, 2011, Public Law 112-29, sec. 33, 125 Stat. 284.)
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INDEX OF PATENT LAWS
A
Abandoned applications, fee on petition to revive .. ............................................................. 27, 41(a)(7) Abandonment of application by failure to prosecute .................................................................. 133, 371 Abandonment of invention:
Bar to patent ............................ 102 (pre-AIA) By violation of secrecy ............................ 182
Adjustment of patent term ........................ 154(b) Administrative Patent Judges ............ ................ 6 Administrator, executor, or guardian .............. 117 Advice of counsel with respect to infringement ...... .......................................................................... 298 Affidavits and depositions in contested cases, rules for taking .......................... .............................. 23
Agreement to terminate derivation proceeding ....... .......................................................................... 135 Agreement to terminate interference ....................... ......................................................... 135 (pre-AIA) Agriculture, Secretary of, to furnish information, and detail employees to Director for plant patent ........
.......................................................................... 164 Allowance and issue of patents ...................... 153 Allowance, notice of ................. ..................... 151 Amendment:
Copying claim of issued patent ......................... ................................................... 135 (pre-AIA)
Time for .............. .................. 133, 135 (pre-AIA) Annual indexes of patents .............. .................. 10 Annual report of the Director ........... ............... 13 Apostille on assignment .............. .................. 261 Appeals to Patent Trial and Appeal Board ...... 134
Fee ............................................ 41(a)(6), 134 Hearing of .................................................... 6 Reexamination proceedings .................... 306
Appeals to Court of Appeals for the Federal Circuit .......................................................................... 141
Certificate of decision of Court recorded in the United States Patent and Trademark Office ....
.................................................................... 144 Determination of Appeal; revision of decision . .................................................................... 144 From Patent Trial and Appeal Board ........ 141 Grounds of decision to be furnished court ........ .................................................................... 143 Notice of appeal ...................................... 142 Proceedings on appeal .............................. 143
Applicant for foreign patent, license required ......... .......................................................................... 184 Applicant, notified of interference .......................... ......................................................... 135 (pre-AIA) Application:
Abandonment of, by failure to prosecute .. 133 Assignment of .......................................... 261 Confidential while pending ...................... 122 Continuing ................................................ 120 Description; specification and claim ........ 112 Divisional ................................................ 121 Drawings .................................................. 113 Effect of defective execution ...................... 26 Effective as of date of earliest foreign application in certain cases ...................................... 119
Examination of invention ........................ 131 Fee on filing .............................. 41(a)(1), 111 For deceased or legally incapacitated inventors .................................................................... 117 May be made by legal representative of deceased or legally incapacitated inventor ............ 117
Must be made within specified time after foreign application for right of priority .............. 119
Oath of inventor (See Oath in patent application) Owned by Government ............................ 267 Provisional .......................................... 111(b) Publication .......................... 102, 122(b), 181 Reissue .................................................... 251 Secrecy order ............................................ 181 What to contain ........................................ 111 When filed by other than inventor .... 118, 121
Appointments, how made ............... ................... 3 Arbitration of derivation proceeding .............. 135 Arbitration of interferences ... ....... 135 (pre-AIA) Arbitration, voluntary ................ .................... 294 Article patented marked with number of patent ...... .......................................................................... 287 Assignee: May file application in certain cases .............. 118
May file divisional application ................ 121 May file reissue application .................... 251 Patent may be issued to ............................ 152
Assignments, patent ........................................ 261 Establishing prima facie execution of ............ 261
Fees for recording ............................ 41(d)(2) Must be recorded in United States Patent and Trademark Office to issue patent to assignee ..
.................................................................... 152 Patent may issue to assignee .................... 152 Recording in Patent and Trademark Office ....... .................................................................... 261
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Attorney fees in infringement suit .................. 285 Attorneys and agents:
May be refused recognition for misconduct ..... ...................................................................... 32 Petition to District Court, Eastern District of Virginia .................................................... 32
Suspension or exclusion from practice ...... 32 Unauthorized practitioners ........................ 33
B
Bars to grant of a patent ................ 102 (pre-AIA) Benefit of earlier filing date in foreign country ....... .......................................................................... 119 Benefit of earlier filing date in United States .. 120 Best mode required .................. ...................... 112 Bill in equity (See Civil action) Board of PatentAppeals and Interferences (See Patent Trial and Appeal Board) ............... ................... 6
C
Certificate of correction: Applicant mistake .................................... 255 Office mistake .......................................... 254
Certified copies: Of drawings and specifications of patents issued ........................................................................ 9 Of records, furnished to Court of Appeals for the Federal Circuit in appeals ...................... 143
Citation of prior art in patent .......................... 301 Civil action:
Election of in case of derivation proceeding ..... .................................................................... 141 Infringement ............................................ 291 In case of derivation proceeding .............. 146 Jurisdiction, plurality of parties, foreign party .. .................................................................... 146 To obtain patent ........................................ 145
Claim of patent: Independent or dependent ........ 41(a)(2), 112 Independent or dependent, validity .......... 282 Invalid, effect of ...................................... 253 Invalid, suits on patent with .................... 288 Notice of rejection .................................... 132 Too extensive or narrow, remedy ............ 251 What to cover .......................................... 112
Classification of patents ................ .................... 8 Clerk of United States Court may summon witness in
Contested cases .......................................... 24 Must notify Director of patent suits ........ 290
Commerce, Department of, United States Patent and Trademark Office in .......................................... 1
Commerce, Secretary of: Appointments by .......................................... 3
Commissioner for Patents: How appointed and duties ............................ 3 Member of Board ........................................ 6
Commonownershipunder joint researchagreements ............................................. 102(c), 103 (pre-AIA) Compensation, right to because of secrecy order .... .......................................................................... 183 Composition of matter:
Patentable ................................................ 101 Specimens of ingredients may be required ....... .................................................................... 114
Concealment of records ................ 18 U.S.C. 2071 Confidential status of application ... ....... 122, 205 Continuing application ............... ................... 120 Contributory infringement .............................. 271 Copies of records, fees ............................ 41(d)(2) Correction of inventors in patent .................... 256 Correction of letters patent ........ ............ 254, 255
D
Damages for infringement .............................. 284 Day of taking any action or paying any fee falling on Saturday, Sunday, or holiday .......................... 21
Death or legal incapacity of inventor .............. 117 Decisions in patent cases, printing of ..... ......... 10 Declaration in lieu of oath ................................ 25 Dedication of term .......................................... 253 Defective execution of documents, effect of .... 26 Defenses in action for infringement ..... ......... 282 Definitions ...................................... 100, 201, 351 Derived patents:
Civil action ...................................... 146, 291 Jurisdiction ...................................... 146, 291 Time limit for filing for relief .................. 291
Deposit with United States Postal Service . ..... 21 Depositions, Director may establish rules for ... 23 Deputy Commissioner ........................................ 6
Member of Board ........................................ 6 Description of invention .............. .................. 112 Design patents:
Double recovery, not allowed .................. 289 Fees ............................................................ 41 For what granted ...................................... 171 Liability for infringement of .................... 289 Penalty for unauthorized use of patented design .................................................................... 289 Prior foreign applications ........................ 172
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MANUAL OF PATENT EXAMINING PROCEDURE§ 101)
Right of priority ...................................... 172 Subject to same provisions as other patents ...... .................................................................... 171 Term of .................................................... 173 Unauthorized use of ................................ 289
Designated office ..................................................... .......... 363, 366, 367, 371, 372, 381, 386, 389, 390 Determination of patent term adjustment . ..... 154 Director:
Annual report to Congress ........................ 13 Consult with Patent Public Advisory Committee ........................................................................ 3 Duties of ...................................................... 6 How appointed ............................................ 3 Intellectual Property Policy Issues, advises President, Federal Departments ................ 2
May disbar attorneys .................................. 32 May establish charges ................................ 41 May make rules for taking affidavits and depositions ................................................ 23
Member of Board ........................................ 6 Reexamination order ................................ 304 Shall cause examination to be made ........ 131 To establish regulations ................................ 3 To furnish court with grounds of decision, on appeal .................................................... 143
To prescribe rules and regulations governing recognition of attorneys and agents ............ 2
To sign patents or have name printed thereon and attested .................................................... 153
To superintend grant of patents .................... 3 Disbarment of attorneys and agents .................. 32 Disclaimer:
Fee .................................................... 41(a)(5) How filed and by whom .......................... 253 Must be filed before commencement of suit to recover costs .......................................... 288
Nature of .................................................. 253 Disclosure, inventor initiated ........ ............ 102(b) District Court for Eastern District of Virginia:
Jurisdiction .............................................. 146 Review of disbarment of attorneys and agents .. ...................................................................... 32
Division of application ............... ................... 121 Division of patent on reissue .......................... 251 Drawing:
Attached to patent .................................... 154 Part of patent ............................................ 154 Printing of .................................................. 10 When necessary ...................................... 113
Duties of Director ..................... ......................... 3
E
Effective filing date, definition ......... ............. 100 Elected office .......................................... 371, 372 Employees of United States Patent and Trademark Office .............................. .................................. 3
How appointed ............................................ 3 Restrictions on as to interest in patents ........ 4
English language .................... ........................ 361 Entry into national phase in United States .... 371 Error in naming inventors ............. ................. 116 Establishment, United States Patent and Trademark Office .............................. .................................. 1
Examination: Applicants shall be notified of rejection on ...... .................................................................... 132 To be made of application and alleged invention .................................................................... 131
Exceptions to prior art ................................ 102(b) Exchange of United States Patent and Trademark Office Publications for other publications ...... 10
Exchange of printed copies of patents and published application of patents with foreign countries ... 11
Executors, administrators or guardians .......... 117 Extension of time to reply fee ...... .......... 41(a)(8)
F
Falsely making or labeling articles as patented ....... .......................................................................... 292 Federal agency, defined .................................. 201 Federal Assistance, inventions made with:
Confidentiality ........................................ 205 Definitions ................................................ 201 Disposition of rights ................................ 202 Domestic and foreign protection of federally owned inventions .................................... 207
Educational awards .................................. 212 March-in rights ........................................ 203 Policy and objective of ............................ 200 Precedence of chapter over other Acts .... 210 Preference for United States industry ...... 204 Regulations governing Federal licensing .. 208 Relationship to antitrust laws .................. 211 Restrictions on licensing of federally owned inventions .............................................. 209
Uniform clauses and regulations .............. 206 Fees:
Amount of .................................................. 41 For attorney awarded by court ................ 285 For records, publications, and services not specified in statute .......................... 41(d)(2)
Rev. 07.2015, October 2015L-93
§ 101)PATENT LAWS
How paid and refunded .............................. 42 Independent inventor, reduction ............ 41(h) International .................................... 361, 376 Nonprofit organization, reduction ........ 41(h) Payable to Director ................................ 42(a) Small business, reduction ...................... 41(h) Small entity, reduction .................. 41(h), 133 To witness contested cases ........................ 24
Filing application by other than inventor ........ 118 Filing date requirements .............. .................. 111 Filing fee, Amount of .............................. 41(a)(1) Foreign applications:
License to file required ............................ 184 Penalty for filing without license .... 185, 186
Foreign countries, exchange of printed copies of patents and published application of patents with .
............................................................................ 11 Foreign patentee:
Jurisdiction .............................................. 293 Service ...................................................... 293
Foreign patents: Copies of, exchanged for United States patents and published application of patents ........ 11
Prior, effect on United States application for patent ...................................................... 102
Foreign priority ............ ................ 119(a)-(d), 365 Fraudulent statements ....... ........... 18 U.S.C. 1001 Funding agreement, defined ........... ............... 201
G
Government interests in patents ........ ............ 267
H
Holiday, time for action expiring on ................ 21
I
Importation of products made by a patented process .......................................................................... 295 Improvements, patents may be granted for .... 101 Indexes of patents and patentees, printing of .... 10 Infringement, patent: Action for ........ ............ 281
Attorney fees ............................................ 285 By United States, time limitation in suit for ..... .................................................................... 286 Clerk of court to notify United States Patent and Trademark Office of suit ........................ 290
Contributory ............................................ 271 Damages for ............................................ 284 Defenses in suit for .......................... 273, 282 Defined .................................................... 271 Design patent .......................................... 289
Injunction ................................................ 283 Notice of, necessary to recovery of damages .... .................................................................... 287 Pleading defense and special matters to be proved in suit ...................................................... 282
Suit for, when a claim is invalid .............. 288 Temporary presence in United States ...... 272 Time limitation ........................................ 286
Injunctions may be granted by court having jurisdiction ........................ ............................ 283
Interference, patent: Agreements, between parties, relating to termination, to be filed in Patent and Trademark Office .................................... 135 (pre-AIA)
Appeal to court ...................... 141 (pre-AIA) Arbitration .............................. 135 (pre-AIA) Determination of priority .................................. ......................... 102 (pre-AIA), 135 (pre-AIA) Parties to be notified of .......... 135 (pre-AIA) Review of decision by civil action .................... ......................... 145 (pre-AIA), 146 (pre-AIA) Rules for taking testimony ........................ 23
International application .. 351, 365, 366, 367, 375 Fees .......................................................... 376 National phase in United States .............. 371 Priority rights .......................................... 365
International Bureau ..... ......... 351, 361, 362, 371 International Design Application:
Application Requirements ...................... 383 Examination ............................................ 389 Filing ........................................................ 382 .................................................................. 384
Priority .................................................... 386 Publication .............................................. 390
International Preliminary Examining Authority ...... .......................................................... 362, 364, 368 International Searching Authority ........................... .................................................. 351, 362, 364, 368 International studies ................... ....................... 2 Inter partes review:
Appeal of .................................................. 319 Conduct of ................................................ 316 Decision of the Board .............................. 318 Notice ...................................................... 314 Petitions requirements .............................. 312 Preliminary response to petition .............. 313 Relation to other proceedings .................. 315 Request .................................................... 311 Settlement ................................................ 317
Intervening rights on reissue ........... ............... 252 Invalid patent claim disclaimer ......... ............. 288
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MANUAL OF PATENT EXAMINING PROCEDURE§ 101)
Invalidity of term extension ............................ 282 Invention, defined ................... ....................... 100 Inventions promotion, improper and deceptive ....... .......................................................................... 297 Inventions in outer space ................................ 105 Inventions patentable ...................................... 101 Inventions previously patented ......... ............. 102 Inventor:
Correction of patent ................................ 256 Death or legal incapacity .......................... 117 Definition ................................................ 100 Disclosure ............................................ 102(b) May obtain patent .................................... 101 Oath for joint ............................................ 116 Refuses to sign ........................................ 118 To make application ................................ 111
Inventors certificate priority right ....... ........... 119 Issue of patent ...................... .......................... 151 Issue fee ....................... ........................... 41(a)(4)
If not paid within three months, patent withheld .................................................................... 151 Nonpayment .................................. 41(c), 151 Payment of .............................................. 151
J
Joinder of parties in patent cases ........ ............ 299 Joint inventors .............. .................. 100, 116, 256 Joint owners .................................................... 262 Joint research agreement defined ....... ........... 100 Joint research agreement, common ownership under ...................................................................... 102(c) Jurisdiction of District Court for the Eastern District of Virginia ......... ............. 32, 145, 146, 154, 293
L
Legal representative of deceased or legally incapacitated inventor ............... ................... 117
Liability of States ................... ....................... 296 Libraries, public, copies of patents and published applications for patents for ....... ........... 12, 41(d)
Library .............................. .................................. 7 License for foreign filing ................................ 184 Limitation on damages ....... ........... 154, 286, 287
M
Machines patentable ................. ..................... 100 Maintenance fees .................. ...................... 41(b)
Late payment ........................................ 41(c) Manufactures patentable .............. .................. 101 Marking articles falsely as patented ..... ......... 292 Marking articles patented ............. ................. 287
Micro entity defined .................. ...................... 123 Misjoinder of inventor .................... 116, 202, 256 Mistake in patent, certificate thereof issued ............ .................................................................. 254, 255 Model, shall be furnished if required .... ........ 114 Money:
Paid by mistake or in excess, refunded ...... 42 Received for fees, etc. to be paid into Treasury ...................................................................... 42
Multiple dependent claim ............. ................. 112 Fee .................................................... 41(a)(2)
Mutilation of records .................... 18 U.S.C. 2071
N
National Security ............. ................. 3, 122, 181 National stage of international application .............. .................................................................. 371, 372 New matter inadmissible in reissue ................ 251 New matter, may not be introduced by amendment .......................................................................... 132 Nonjoinder of inventor ............... ................... 256 Nonobviousness .............................................. 103 Nonprofit organization, defined ........ ............ 201 Nonresident patentee ................. ..................... 293 Notice as regards patents:
As to proof in infringement suits ............ 282 Of allowance of patent ............................ 151 Of appeal to the Court of Appeals for the Federal Circuit ............................................ 142, 143
Of patent suit, decision to be given United States Patent and Trademark Office by clerk of court
.................................................................... 290 Of rejection of an application .................. 132 Of suit to be entered on file of patent ...... 290 To the public by Federal agency .............. 209 To the public that invention is patented .... 287
Novelty ........................... ............................... 102
O
Oath in patent application ......... ............. 115, 152 Before whom taken in foreign countries ........... .............................................................. 25, 115 Before whom taken in the United States ... 115 Declaration in lieu of ................................ 25 Joint inventors .......................................... 116 Made by inventor .................................... 115 Requirements of ...................................... 115 To be made by legal representative if inventor is deceased or legally incapacitated .... 115, 117
Obviousness .................................................... 103
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§ 101)PATENT LAWS
Officer of United States Patent and Trademark Office may attest patents .......................................... 153
Officers and employees: Of United States Patent and Trademark Office . ........................................................................ 3 Of United States Patent and Trademark Office, restrictions on as to interests in patents ...... 4
Official Gazette: Exchange for publications .......................... 11 Printing and distribution of ........................ 11 Public Advisory Committee Report ............ 5
Owners, joint ....................... ........................... 262 Ownership interest, recordation of ...... .......... 261
P
Paris Convention .................... ........................ 119 Patent and Trademark Office: See United States Patent and Trademark Office
Patent Cooperation Treaty: Definitions ................................................ 351
Patent fees .......................... .............................. 41 Disposition of ............................................ 42
Patent laws, printing of ................ .................... 10 Patent pending, false marking as .................... 292 Patent Public Advisory Committee ................ 3, 5
Appointment, timing and basis .................... 5 Duties .......................................................... 5 Consultation with Director ...................... 3, 5
Patent term adjustment ............... ................... 154 Patent term extension application ....... ........... 156 Patentability, conditions for .................... 102, 103 Patentable inventions ...................................... 101 Patented article, marked as such ........ ............ 287 Patent Trial and Appeal Board, how constituted ..... .............................................................................. 6 Patentee:
Defined .................................................... 100 Patents:
Application for ........................................ 111 Assignment of .......................................... 261 Based on international application .......... 375 Certified copies of ........................................ 9 Classification of .......................................... 8 Contents and duration of .......................... 154 Copies supplied to public libraries .................... ...................................................... 12, 41(d)(2) Date, duration, and form .......................... 154 Design (See Design Patents or International Design Applications)
Exchange of printed copies with foreign countries .................................................. 11
Fee on issuing ............................................ 41 Filing application in foreign country ...... 184 For what granted ...................................... 101 How issued, attested, and recorded .......... 153 May be granted to assignee ...................... 152 May be withheld in certain cases ............ 181 Obtainable by civil action ........................ 145 Personal property .................................... 261 Presumption of validity ............................ 282 Price of copies .................................. 41(d)(2) Printing of .................................................. 10 Reissuing of, when defective .................. 251 Rights of invention made with federal assistance .......................................................... 200 - 212 Restrictions on officers and employees of United States Patent and Trademark Office as to interest in ................................................................ 4
Surrender of, to take effect on reissue ...... 251 Term ................................................ 154, 156 Term adjustment ...................................... 154 Term extension ........................................ 156 Time of issue, payment of issue fee ........ 151 To be authenticated by seal of United States Patent and Trademark Office ...................... 2
When to issue .......................................... 151 Withheld for nonpayment of issue fee .... 151
Patent rights in inventions made with Federal assistance ...................... .......................... 200-212
Confidentiality ........................................ 205 Definitions ................................................ 201 Disposition of rights ................................ 202 Domestic and foreign protection of federally owned inventions .................................... 207
Educational awards .................................. 212 March-in rights ........................................ 203 Policy and objective of ............................ 200 Precedence of chapter over other Acts .... 210 Preference for United States industry ...... 204 Regulations governing federal licensing ... 208 Relationship to antitrust laws .................. 211 Restrictions on licensing of federally owned inventions .............................................. 209
Uniform clauses and regulations .............. 206 Period for response ............... ................... 21, 133 Photolithography, Headings of drawings printed .... ............................................................................ 10 Plant patents:
Claim ................................................ 162, 164 Description ...................................... 162, 163 Fees ............................................................ 41 Nature of right .......................................... 163
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MANUAL OF PATENT EXAMINING PROCEDURE§ 101)
Plants patentable ...................................... 161 Secretary of Agriculture to furnish information and detail employees .............................. 164
Pleading and proof in action for infringement ........ .......................................................................... 282 Post-grant review: Appeal of .......................... .............................. 329 Conduct of ......................... ............................. 326 Decision of the Board ................ .................... 328 Initiation of ........................ ............................ 321 Notice ............................ ................................ 324 Petitions requirements ................ .................... 322 Preliminary response to petition ........ ............ 323 Relation to other proceedings .......... .............. 325 Settlement ......................... ............................. 327 Postal Service deposit ................. ..................... 21 Practical application, defined .......... .............. 201 Pre-issuance opposition, when prohibited .... 122 Presumption of product made by patented process . .......................................................................... 295 Presumption of validity of patents .................. 282 Printed publication bar to a patent ........................... .................................................... 102(b) (pre-AIA) Printing:
Decisions in patent cases .......................... 10 Of papers filed ............................................ 22 United States Patent and Trademark Office ...... ...................................................................... 10
Printing headings of drawings by United States Patent and Trademark Office ................ .................... 10
Prior art, defined .................... ........................ 102 Prior art, citation of .................. ...................... 301 Prior commercial use as a defense to infringement . .......................................................................... 273 Priority, foreign ............. ................. 119, 365, 386 Priority, right of, under treaty or law .............. 119
For design applications .................... 172, 386 Process defined ..................... ......................... 100 Process Patent Amendment Act of 1988 ........ 287 Process patentable ................... ....................... 101 Product made by patent process ........ ............ 295 Property of United States Patent and Trademark Office .............................. .................................. 2
Provisional applications ................ 111(b), 119(e) Provisional rights ................... ....................... 154 Protest and pre-issuance opposition, when prohibited
.................................................................. 122(c) Public use or sale ............................................ 102 Publication of international application, effect ........ .......................................................................... 374 Publication of patent applications .......... 122, 181
Publications regarding patents and trademarks ....... ............................................................................ 10
R
Receiving Office .... ........ 351, 361, 364, 367, 368 Recording of assignments ............. ................. 261 Reexamination order by Director ............................ ................................................. 304, 313 (pre-AIA) Reexamination procedure:
Appeal ............................................................... ........... 134, 141, 306, 315 (pre-AIA), 319, 329 Certificate of patentability, unpatentability, and claim cancellation ........ 307, 316 (pre-AIA)
Conduct of reexamination proceedings ............. ........................................... 305, 314 (pre-AIA) Determination of issue by Director ................... ........................................... 303, 312 (pre-AIA) Determination of new question ......................... ........................................... 303, 312 (pre-AIA) Ex Parte ............................................ 302-307 Inter Partes ...... 311 (pre-AIA)-318 (pre-AIA)
When prohibited .................. 317 (pre-AIA) Reinstatement of proceedings .................... 27 Request .......................... 302, 311 (pre-AIA) Special dispatch .............. 305, 314 (pre-AIA) Stay of litigation ...................... 318 (pre-AIA)
Reexamination to be made after first rejection, if desired ........................... ............................... 132
References, to be cited on examination .......... 132 Refund of money paid by mistake or in excess ....... ............................................................................ 42 Reissue of patents:
Application fee .......................................... 41 Application may be made by assignee in certain cases ...................................................... 251
By reason of defective claims .................. 251 Effect of .................................................... 252 For unexpired term of original patent ...... 251 Intervening rights .................................... 252 Of defective patents .................................. 251 To contain no new matter ........................ 251
Rejection, applicant shall be notified of reasons for .......................................................................... 132 Remedy for infringement of patent ................ 281 Removal of records ......... ............. 18 U.S.C. 2071 Report to Congress, annual ............. ................. 13 Request for reexamination proceeding .................... ................................................. 302, 311 (pre-AIA) Restrictions on officers and employees of United States Patent and Trademark Office as to interest in patents ............................. ................................. 4
Rev. 07.2015, October 2015L-97
§ 101)PATENT LAWS
Retention of revenue ................... ....................... 2 Revival if delay unintentional .......... .............. 133 Right of foreign priority .......... .............. 365, 386 Right to compensation because of secrecy order ..... .......................................................................... 183 Rules for taking testimony, Director to establish .... ............................................................................ 23 Rules of practice:
Authority for ................................................ 2 Printing of .................................................. 10
S
Saturday, time for action expiring on ..... ......... 21 Seal of United States Patent and Trademark Office .............................................................................. 2 Secrecy of applications ............... ................... 122 Secrecy of certain inventions ................ 181 - 188 Secrecy of international application ..... ......... 368 Secrecy order .................................................. 181 Small business firm, defined ........... ............... 201 Small entity status ........... ............... 2(b)(2), 41(h) Specification(s):
Contents of .............................................. 112 If defective, reissue to correct .................. 251 Part of patent ............................................ 154 Printing of .................................. 10, 41(d)(2) Uncertified copies, price of .............. 41(d)(2)
Specimens, may be required ........... ............... 114 Subpoenas to witnesses ................ .................... 24 Suit against the United States .......... .............. 286 Suit in equity (See Civil action) Sunday, time for action expiring on .................. 21 Supplemental examination ............ ................ 257 Surcharge for later filing of fee or oath .......... 111
T
Term extension: For administrative delays ........................ 154 For delays due to derivation proceedings, secrecy orders, and/or appellate review .............. 154
Regulatory review .................................... 156 Term of patent:
Design ...................................................... 173 Disclaimer of ............................................ 253 Extension .................................................. 156 Period ...................................................... 154
Testimony, rules for taking ............. ................. 23 Time:
Expiring on Saturday, Sunday, or holiday ... 21 For payment of issue fee .......................... 151 For taking action in Government cases .... 267
Limitation on damages ............................ 286 Within which action must be taken .......... 133
Title of invention .................... ........................ 154 Trademark fees .................... ........................ 42(c) Trademarks, reference to ...................... 1, 2, 3, 10 Translation error in international application .. 375
U
Unauthorized disclosure .............. .................. 182 Unauthorized person may not lawfully assist persons in transaction of business before the Office .... 33
Under Secretary of Commerce for Intellectual Property ............................ ................................ 6
United States as designated office ........................... ........................................... 363 381, 386, 389, 390 United States, defined ................ .................... 100 United States Patent and Trademark Office:
In Department of Commerce ...................... 1 Library .......................................................... 7 Printing ...................................................... 10 Rules, authority for ...................................... 2 Seal of .......................................................... 2
Unpatented article, penalty for deceptive marking .. .......................................................................... 292
V
Verified translation requirement ........ ............ 372 Voluntary arbitration ................. ..................... 294
W
Withdrawal of international application .. ...... 366 Withdrawal of international design application ....... .......................................................................... 388 Withholding of patent ................ .................... 181 Witness:
Failing to attend or refusing to testify ........ 24 Fees of, interference cases ........................ 24 In interference summoned by clerk of United States court .............................................. 24
When in contempt, punishment ................ 24
L-98Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 101)
Appendix R Patent Rules
Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights
CHAPTER I—UNITED STATES PATENT ANDTRADEMARK OFFICE, DEPARTMENT
OF COMMERCE
SUBCHAPTER A – GENERAL
PATENTS
Part 1 RULES OF PRACTICE IN PATENT CASES 3 ASSIGNMENT, RECORDING AND RIGHTS OF
ASSIGNEE 4 COMPLAINTS REGARDING INVENTION PROMOTERS 5 SECRECY OF CERTAIN INVENTIONS AND LICENSES
TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES
INDEX I RULES RELATING TO PATENTS
PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE
10 [Reserved] 11 REPRESENTATION OF OTHERS BEFORE THE UNITED
STATES PATENT AND TRADEMARK OFFICE
INDEX II RULES RELATING TO REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE
41 PRACTICE BEFORE THE PATENT TRIALANDAPPEAL BOARD
42 TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
90 JUDICIAL REVIEW OF PATENT TRIAL AND APPEAL BOARD DECISIONS
SUBCHAPTER B – ADMINISTRATION
102 DISCLOSURE OF GOVERNMENT INFORMATION 104 LEGAL PROCESSES
SUBCHAPTER C – PROTECTION OF FOREIGN MASK WORKS
150 REQUESTS FOR PRESIDENTIAL PROCLAMATIONS PURSUANT TO 17 U.S.C. 902(a)(2)
SUBCHAPTER A — GENERAL
PATENTS
PART 1 — RULES OF PRACTICE IN PATENT CASES
General Provisions
GENERAL INFORMATION AND CORRESPONDENCE
Sec. 1.1 Addresses for non-trademark
correspondence with the United States Patent and Trademark Office.
1.2 Business to be transacted in writing. 1.3 Business to be conducted with decorum
and courtesy. 1.4 Nature of correspondence and signature
requirements. 1.5 Identification of patent, patent application,
or patent-related proceeding. 1.6 Receipt of correspondence. 1.7 Times for taking action; Expiration on
Saturday, Sunday or Federal holiday. 1.8 Certificate of mailing or transmission. 1.9 Definitions. 1.10 Filing of correspondence by Priority Mail
Express®.
RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE
1.11 Files open to the public. 1.12 Assignment records open to public
inspection. 1.12 (pre-AIA) Assignment records open to
public inspection. 1.13 Copies and certified copies. 1.14 Patent applications preserved in confidence. 1.14 (pre-AIA) Patent applications preserved in
confidence. 1.15 [Reserved]
FEES AND PAYMENT OF MONEY
Rev. 07.2015, October 2015R-1
1.16 National application filing, search, and examination fees.
1.17 Patent application and reexamination processing fees.
1.18 Patent post allowance (including issue) fees.
1.19 Document supply fees. 1.20 Post issuance fees. 1.21 Miscellaneous fees and charges. 1.22 Fees payable in advance. 1.23 Methods of payment. 1.24 [Reserved] 1.25 Deposit accounts. 1.26 Refunds. 1.27 Definition of small entities and establishing
status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.
1.27 (pre-AIA) Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.
1.28 Refunds when small entity status is later established; how errors in small entity status are excused.
1.29 Micro entity status.
National Processing Provisions
PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR AGENT
Sec. 1.31 Applicant may be represented by one or
more patent practitioners or joint inventors. 1.32 Power of attorney. 1.32 (pre-AIA) Power of attorney. 1.33 Correspondence respecting patent
applications, reexamination proceedings, and other proceedings.
1.33 (pre-AIA) Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
1.34 Acting in a representative capacity. 1.36 Revocation of power of attorney;
withdrawal of patent attorney or agent.
1.36 (pre-AIA) Revocation of power of attorney; withdrawal of patent attorney or agent.
WHO MAY APPLY FOR A PATENT
1.41 Inventorship. 1.41 (pre-AIA) Applicant for patent. 1.42 Applicant for patent. 1.42 (pre-AIA) When the inventor is dead. 1.43 Application for patent by a legal
representative of a deceased or legally incapacitated inventor.
1.43 (pre-AIA) When the inventor is insane or legally incapacitated.
1.44 [Reserved] 1.45 Application for patent by joint inventors. 1.45 (pre-AIA) Joint inventors. 1.46 Application for patent by an assignee,
obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.
1.46 (pre-AIA)Assigned inventions and patents. 1.47 [Removed and Reserved] 1.47 (pre-AIA) Filing when an inventor refuses
to sign or cannot be reached. 1.48 Correction of inventorship pursuant to 35
U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application.
THE APPLICATION
1.51 General requisites of an application. 1.52 Language, paper, writing, margins,
compact disc specifications. 1.53 Application number, filing date, and
completion of application. 1.53 (pre-PLT (AIA)) Application number,
filing date, and completion of application. 1.53 (pre-AIA) Application number, filing date,
and completion of application. 1.54 Parts of application to be filed together;
filing receipt. 1.55 Claim for foreign priority. 1.56 Duty to disclose information material to
patentability. 1.56 (pre-AIA) Duty to disclose information
material to patentability. 1.57 Incorporation by reference. 1.57 (pre-PLT) Incorporation by reference.
R-2Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
1.58 Chemical and mathematical formulae and tables.
1.59 Expungement of information or copy of papers in application file.
1.60 [Reserved] 1.61 [Reserved] 1.62 [Reserved]
OATH OR DECLARATION
1.63 Inventor's oath or declaration. 1.63 (pre-AIA) Oath or declaration. 1.64 Substitute statement in lieu of an oath or
declaration. 1.64 (pre-AIA) Person making oath or
declaration. 1.66 Statements under oath. 1.66 (pre-AIA) Officers authorized to
administer oaths. 1.67 Supplemental oath or declaration. 1.67 (pre-AIA) Supplemental oath or
declaration. 1.68 Declaration in lieu of oath. 1.69 Foreign language oaths and declarations. 1.70 [Reserved]
SPECIFICATION
1.71 Detailed description and specification of the invention.
1.72 Title and abstract. 1.73 Summary of the invention. 1.74 Reference to drawings. 1.75 Claim(s). 1.76 Application data sheet. 1.76 (2012-09-16 thru 2013-12-17) Application
data sheet. 1.76 (pre-AIA) Application data sheet. 1.77 Arrangement of application elements. 1.78 Claiming benefit of earlier filing date and
cross-references to other applications. 1.79 Reservation clauses not permitted.
THE DRAWINGS
1.81 Drawings required in patent application. 1.81 (2012-09-16 thru 2013-12-17) Drawings
required in patent application. 1.81 (pre-AIA) Drawings required in patent
application. 1.83 Content of drawing. 1.84 Standards for drawings.
1.85 Corrections to drawings. 1.88 [Reserved]
MODELS, EXHIBITS, SPECIMENS
1.91 Models or exhibits not generally admitted as part of application or patent.
1.92 [Reserved] 1.93 Specimens. 1.94 Return of models, exhibits or specimens. 1.95 Copies of exhibits. 1.96 Submission of computer program listings.
INFORMATION DISCLOSURE STATEMENT
1.97 Filing of information disclosure statement. 1.98 Content of information disclosure
statement. 1.99 [Reserved]
EXAMINATION OF APPLICATIONS
1.101 [Reserved] 1.102 Advancement of examination. 1.103 Suspension of action by the Office. 1.104 Nature of examination. 1.105 Requirements for information. 1.105 (pre-AIA) Requirements for information. 1.106 [Reserved] 1.107 [Reserved] 1.108 [Reserved] 1.109 Effective filing date of a claimed invention
under the Leahy-Smith America Invents Act.
1.110 Inventorship and date of invention of the subject matter of individual claims.
ACTION BY APPLICANT AND FURTHER CONSIDERATION
1.111 Reply by applicant or patent owner to a non-final Office action.
1.112 Reconsideration before final action. 1.113 Final rejection or action. 1.114 Request for continued examination.
AMENDMENTS
1.115 Preliminary amendments. 1.116 Amendments and affidavits or other
evidence after final action and prior to appeal.
1.117 [Reserved] 1.118 [Reserved]
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PATENT RULES
1.119 [Reserved] 1.121 Manner of making amendments in
applications. 1.122 [Reserved] 1.123 [Reserved] 1.124 [Reserved] 1.125 Substitute specification. 1.126 Numbering of claims. 1.127 Petition from refusal to admit amendment.
TRANSITIONAL PROVISIONS
1.129 Transitional procedures for limited examination after final rejection and restriction practice.
AFFIDAVITS OVERCOMING REJECTIONS
1.130 Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act.
1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.
1.132 Affidavits or declarations traversing rejections or objections.
INTERVIEWS
1.133 Interviews.
TIME FOR REPLY BY APPLICANT; ABANDONMENT OF APPLICATION
1.134 Time period for reply to an Office action. 1.135 Abandonment for failure to reply within
time period. 1.136 Extensions of time. 1.137 Revival of abandoned application, or
terminated or limited reexamination prosecution.
1.138 Express abandonment. 1.139 [Reserved]
JOINDER OF INVENTIONS IN ONE APPLICATION; RESTRICTION
1.141 Different inventions in one national application.
1.142 Requirement for restriction. 1.143 Reconsideration of requirement. 1.144 Petition from requirement for restriction. 1.145 Subsequent presentation of claims for
different invention.
1.146 Election of species.
DESIGN PATENTS
1.151 Rules applicable. 1.152 Design drawings. 1.153 Title, description and claim, oath or
declaration. 1.153 (pre-AIA) Title, description and claim, oath
or declaration. 1.154 Arrangement of application elements in a
design application. 1.155 Expedited examination of design
applications.
PLANT PATENTS
1.161 Rules applicable. 1.162 Applicant, oath or declaration. 1.162 (pre-AIA) Applicant, oath or declaration. 1.163 Specification and arrangement of
application elements in a plant application. 1.164 Claim. 1.165 Plant Drawings. 1.166 Specimens. 1.167 Examination.
REISSUES
1.171 Application for reissue. 1.172 Reissue applicant. 1.172 (pre-AIA) Applicants, assignees. 1.173 Reissue specification, drawings, and
amendments. 1.174 [Reserved] 1.175 Inventor's oath or declaration for a reissue
application. 1.175 (pre-AIA) Reissue oath or declaration. 1.176 Examination of reissue. 1.177 Issuance of multiple reissue patents. 1.178 Original patent; continuing duty of
applicant. 1.179 [Reserved]
PETITIONS AND ACTION BY THE DIRECTOR
1.181 Petition to the Director. 1.182 Questions not specifically provided for. 1.183 Suspension of rules. 1.184 [Reserved]
APPEAL TO THE PATENT TRIAL AND APPEAL BOARD
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1.191 Appeal to Patent Trial and Appeal Board. 1.192 [Reserved] 1.193 [Reserved] 1.194 [Reserved] 1.195 [Reserved] 1.196 [Reserved] 1.197 Termination of proceedings. 1.198 Reopening after a final decision of the
Patent Trial and Appeal Board.
PUBLICATION OF APPLICATIONS
1.211 Publication of applications. 1.211 (pre-AIA) Publication of applications. 1.213 Nonpublication request. 1.215 Patent application publication. 1.215 (pre-AIA) Patent application publication. 1.217 Publication of a redacted copy of an
application. 1.219 Early publication. 1.221 Voluntary publication or republication of
patent application publication.
MISCELLANEOUS PROVISIONS
1.248 Service of papers; manner of service; proof of service in cases other than interferences and trials.
1.251 Unlocatable file. 1.265 [Removed]
PREISSUANCE SUBMISSIONSAND PROTESTS BY THIRD PARTIES
1.290 Submissions by third parties in applications.
1.291 Protests by the public against pending applications.
1.292 [Reserved] 1.293 [Reserved] 1.293 (pre-2013-03-16) Statutory invention
registration. 1.294 [Reserved] 1.294 (pre-2013-03-16) Examination of request
for publication of a statutory invention registration and patent application to which the request is directed.
1.295 [Reserved] 1.295 (pre-2013-03-16) Review of decision
finally refusing to publish a statutory invention registration.
1.296 [Reserved]
1.296 (pre-2013-03-16) Withdrawal of request for publication of statutory invention registration.
1.297 [Reserved] 1.297 (pre-2013-03-16) Publication of statutory
invention registration.
REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS BY COURT
1.301 [Reserved] 1.302 [Reserved] 1.303 [Reserved] 1.304 [Reserved]
ALLOWANCE AND ISSUE OF PATENT
1.311 Notice of Allowance. 1.312 Amendments after allowance. 1.313 Withdrawal from issue. 1.314 Issuance of patent. 1.315 Delivery of patent. 1.316 Application abandoned for failure to pay
issue fee. 1.317 [Reserved] 1.318 [Reserved]
DISCLAIMER
1.321 Statutory disclaimers, including terminal disclaimers.
1.321 (pre-AIA) Statutory disclaimers, including terminal disclaimers.
CORRECTION OF ERRORS IN PATENT
1.322 Certificate of correction of Office mistake. 1.323 Certificate of correction of applicant’s
mistake. 1.324 Correction of inventorship in patent,
pursuant to 35 U.S.C. 256. 1.325 Other mistakes not corrected.
ARBITRATION AWARDS
1.331 [Reserved] 1.332 [Reserved] 1.333 [Reserved] 1.334 [Reserved] 1.335 Filing of notice of arbitration awards.
AMENDMENT OF RULES
1.351 Amendments to rules will be published.
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PATENT RULES
1.352 [Reserved]
MAINTENANCE FEES
1.362 Time for payment of maintenance fees. 1.363 Fee address for maintenance fee purposes. 1.366 Submission of maintenance fees. 1.377 Review of decision refusing to accept and
record payment of a maintenance fee filed prior to expiration of patent.
1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
International Processing Provisions
GENERAL INFORMATION
Sec. 1.401 Definitions of terms under the Patent
Cooperation Treaty. 1.412 The United States Receiving Office. 1.413 The United States International Searching
Authority. 1.414 The United States Patent and Trademark
Office as a Designated Office or Elected Office.
1.415 The International Bureau. 1.416 The United States International Preliminary
Examining Authority. 1.417 Submission of translation of international
publication. 1.419 Display of currently valid control number
under the Paperwork Reduction Act.
WHO MAY FILE AN INTERNATIONAL APPLICATION
1.421 Applicant for international application. 1.421 (pre-AIA) Applicant for international
application. 1.422 Legal representative as applicant in an
international application. 1.422 (pre-AIA) When the inventor is dead. 1.423 [Removed and Reserved] 1.423 (pre-AIA) When the inventor is insane or
legally incapacitated. 1.424 Assignee, obligated assignee, or person
having sufficient proprietary interest as applicant in an international application.
1.425 [Reserved]
THE INTERNATIONAL APPLICATION
1.431 International application requirements. 1.431 (pre-AIA) International application
requirements. 1.432 Designation of States by filing an
international application. 1.433 Physical requirements of international
application. 1.434 The request. 1.435 The description. 1.436 The claims. 1.437 The drawings. 1.438 The abstract.
FEES
1.445 International application filing, processing and search fees.
1.446 Refund of international application filing and processing fees.
PRIORITY
1.451 The priority claim and priority document in an international application.
1.452 Restoration of right of priority.
REPRESENTATION
1.455 Representation in international applications.
TRANSMITTAL OF RECORD COPY
1.461 Procedures for transmittal of record copy to the International Bureau.
TIMING
1.465 Timing of application processing based on the priority date.
1.468 Delays in meeting time limits.
AMENDMENTS
1.471 Corrections and amendments during international processing.
1.472 Changes in person, name, or address of applicants and inventors.
UNITY OF INVENTION
1.475 Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.
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MANUAL OF PATENT EXAMINING PROCEDURE
1.476 Determination of unity of invention before the International Searching Authority.
1.477 Protest to lack of unity of invention before the International Searching Authority.
INTERNATIONAL PRELIMINARY EXAMINATION
1.480 Demand for international preliminary examination.
1.481 Payment of international preliminary examination fees.
1.482 International preliminary examination fees. 1.484 Conduct of international preliminary
examination. 1.485 Amendments by applicant during
international preliminary examination. 1.488 Determination of unity of invention before
the International Preliminary Examining Authority.
1.489 Protest to lack of unity of invention before the International Preliminary Examining Authority.
NATIONAL STAGE
1.491 National stage commencement, entry, and fulfillment.
1.491 (pre-AIA) National stage commencement and entry.
1.492 National stage fees. 1.494 [Reserved] 1.495 Entering the national stage in the United
States of America. 1.495 (pre-AIA) Entering the national stage in
the United States of America. 1.496 Examination of international applications
in the national stage. 1.497 Inventor's oath or declaration under 35
U.S.C. 371(c)(4). 1.497 (pre-AIA) Oath or declaration under 35
U.S.C. 371(c)(4). 1.499 Unity of invention during the national
stage.
Ex Parte Reexamination of Patents
CITATION OF PRIOR ART AND WRITTEN STATEMENTS
Sec. 1.501 Citation of prior art and written statements
in patent files.
1.502 Processing of prior art citations during an ex parte reexamination proceeding.
REQUEST FOR EX PARTE REEXAMINATION
1.510 Request for ex parte reexamination. 1.515 Determination of the request for ex parte
reexamination. 1.520 Ex parte reexamination at the initiative of
the Director.
EX PARTE REEXAMINATION
1.525 Order for ex parte reexamination. 1.530 Statement by patent owner in ex parte
reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
1.535 Reply by third party requester in ex parte reexamination.
1.540 Consideration of responses in ex parte reexamination.
1.550 Conduct of ex parte reexamination proceedings.
1.552 Scope of reexamination in ex parte reexamination proceedings.
1.555 Information material to patentability in ex parte reexamination and inter partes reexamination proceedings.
1.560 Interviews in ex parte reexamination proceedings.
1.565 Concurrent office proceedings which include an ex parte reexamination proceeding.
CERTIFICATE
1.570 Issuance and publication of ex parte reexamination certificate concludes ex parte reexamination proceeding.
Supplemental Examination of Patents
1.601 Filing of papers in supplemental examination.
1.605 Items of information. 1.610 Content of request for supplemental
examination. 1.615 Format of papers filed in a supplemental
examination proceeding. 1.620 Conduct of supplemental examination
proceeding.
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PATENT RULES
1.625 Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.
Adjustment and Extension of Patent Term
ADJUSTMENT OF PATENT TERM DUE TO EXAMINATION DELAY
Sec. 1.701 Extension of patent term due to
examination delay under the Uruguay Round Agreements Act (original applications, other than designs, filed on or after June 8, 1995, and before May 29, 2000).
1.702 Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000).
1.702 (pre-2013-04-01) Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000).
1.703 Period of adjustment of patent term due to examination delay.
1.703 (2012-09-17 thru 2013-03-31) Period of adjustment of patent term due to examination delay.
1.703 (pre-2012-09-17) Period of adjustment of patent term due to examination delay.
1.704 Reduction of period of adjustment of patent term.
1.704 (2013-12-18 thru 2015-03-09) Reduction of period of adjustment of patent term.
1.704 (2012-09-17 thru 2013-12-17) Reduction of period of adjustment of patent term.
1.704 (pre-2013-03-31) Reduction of period of adjustment of patent term.
1.704 (pre-2012-09-17) Reduction of period of adjustment of patent term.
1.705 Patent term adjustment determination. 1.705 (pre-2013-04-01) Patent term adjustment
determination.
EXTENSION OF PATENT TERM DUE TO REGULATORY REVIEW
1.710 Patents subject to extension of the patent term.
1.720 Conditions for extension of patent term. 1.730 Applicant for extension of patent term;
signature requirements. 1.740 Formal requirements for application for
extension of patent term; correction of informalities.
1.741 Complete application given a filing date; petition procedure.
1.750 Determination of eligibility for extension of patent term.
1.760 Interim extension of patent term under 35 U.S.C. 156(e)(2).
1.765 Duty of disclosure in patent term extension proceedings.
1.770 Express withdrawal of application for extension of patent term.
1.775 Calculation of patent term extension for a human drug, antibiotic drug, or human biological product.
1.776 Calculation of patent term extension for a food additive or color additive.
1.777 Calculation of patent term extension for a medical device.
1.778 Calculation of patent term extension for an animal drug product.
1.779 Calculation of patent term extension for a veterinary biological product.
1.780 Certificate or order of extension of patent term.
1.785 Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product.
1.790 Interim extension of patent term under 35 U.S.C. 156(d)(5).
1.791 Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use.
Biotechnology Invention Disclosures
DEPOSIT OF BIOLOGICAL MATERIAL
Sec. 1.801 Biological material. 1.802 Need or opportunity to make a deposit. 1.803 Acceptable depository. 1.804 Time of making an original deposit. 1.805 Replacement or supplement of deposit. 1.806 Term of deposit. 1.807 Viability of deposit.
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MANUAL OF PATENT EXAMINING PROCEDURE
1.808 Furnishing of samples. 1.809 Examination procedures.
APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCES
1.821 Nucleotide and/or amino acid sequence disclosures in patent applications.
1.822 Symbols and format to be used for nucleotide and/or amino acid sequence data.
1.823 Requirements for nucleotide and/or amino acid sequences as part of the application.
1.824 Form and format for nucleotide and/or amino acid sequence submissions in computer readable form.
1.825 Amendments to or replacement of sequence listing and computer readable copy thereof.
Inter Partes Reexamination of Patents That Issued From an Original Application Filed in the United States on or
After November 29, 1999
PRIOR ART CITATIONS
Sec. 1.902 Processing of prior art citations during an
inter partes reexamination proceeding.
REQUIREMENTS FOR INTER PARTES REEXAMINATION PROCEEDINGS
1.903 Service of papers on parties in inter partes reexamination.
1.904 Notice of inter partes reexamination in Official Gazette.
1.905 Submission of papers by the public in inter partes reexamination.
1.906 Scope of reexamination in inter partes reexamination proceeding.
1.907 Inter partes reexamination prohibited. 1.913 Persons eligible to file, and time for filing,
a request for inter partes reexamination. 1.915 Content of request for inter partes
reexamination. 1.919 Filing date of request for inter partes
reexamination. 1.923 Examiner’s determination on the request
for inter partes reexamination. 1.925 Partial refund if request for inter partes
reexamination is not ordered.
1.927 Petition to review refusal to order inter partes reexamination.
INTER PARTES REEXAMINATION OF PATENTS
1.931 Order for inter partes reexamination.
INFORMATION DISCLOSURE IN INTER PARTES REEXAMINATION
1.933 Patent owner duty of disclosure in inter partes reexamination proceedings.
OFFICEACTIONSAND RESPONSES (BEFORE THE EXAMINER) IN INTER PARTES REEXAMINATION
1.935 Initial Office action usually accompanies order for inter partes reexamination.
1.937 Conduct of inter partes reexamination. 1.939 Unauthorized papers in inter partes
reexamination 1.941 Amendments by patent owner in inter
partes reexamination. 1.943 Requirements of responses, written
comments, and briefs in inter partes reexamination.
1.945 Response to Office action by patent owner in inter partes reexamination.
1.947 Comments by third party requester to patent owner’s response in inter partes reexamination.
1.948 Limitations on submission of prior art by third party requester following the order for inter partes reexamination.
1.949 Examiner’s Office action closing prosecution in inter partes reexamination.
1.951 Options after Office action closing prosecution in inter partes reexamination.
1.953 Examiner’s Right of Appeal Notice in inter partes reexamination.
INTERVIEWS PROHIBITED IN INTER PARTES REEXAMINATION
1.955 Interviews prohibited in inter partes reexamination proceedings.
EXTENSIONS OF TIME, TERMINATING OF REEXAMINATION PROSECUTION, AND
PETITIONS TO REVIVE IN INTER PARTES REEXAMINATION
1.956 Patent owner extensions of time in inter partes reexamination.
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PATENT RULES
1.957 Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.
1.958 Petition to revive inter partes reexamination prosecution terminated for lack of patent owner response.
APPEAL TO THE PATENT TRIAL AND APPEAL BOARD IN INTER PARTES REEXAMINATION
1.959 Appeal in inter partes reexamination. 1.961 - 1.977 [Reserved] 1.979 Return of Jurisdiction from the Patent
Trial and Appeal Board; termination of appeal proceedings.
1.981 Reopening after a final decision of the Patent Trial and Appeal Board.
APPEAL TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT IN INTER
PARTES REEXAMINATION
1.983 Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination.
CONCURRENT PROCEEDINGS INVOLVING SAME PATENT IN INTER PARTES REEXAMINATION
1.985 Notification of prior or concurrent proceedings in inter partes reexamination.
1.987 Suspension of inter partes reexamination proceeding due to litigation.
1.989 Merger of concurrent reexamination proceedings.
1.991 Merger of concurrent reissue application and inter partes reexamination proceeding.
1.993 Suspension of concurrent interference and inter partes reexamination proceeding.
1.995 Third party requester’s participation rights preserved in merged proceeding.
REEXAMINATION CERTIFICATE IN INTER PARTES REEXAMINATION
1.997 Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding.
International Design Application
General Information
Sec.
1.1001 Definitions related to international design applications.
1.1002 The United States Patent and Trademark Office as an office of indirect filing.
1.1003 The United States Patent and Trademark Office as a designated office.
1.1004 The International Bureau. 1.1005 Display of currently valid control number
under the Paperwork Reduction Act.
WHO MAY FILE AN INTERNATIONAL DESIGN APPLICATION
1.1011 Applicant for international design application.
1.1012 Applicant’s Contracting Party.
THE INTERNATIONAL DESIGN APPLICATION
1.1021 Contents of the international design application.
1.1022 Form and signature. 1.1023 Filing date of an international design
application in the United States. 1.1024 The description. 1.1025 The claim. 1.1026 Reproductions. 1.1027 Specimens. 1.1028 Deferment of publication.
FEES
1.1031 International design application fees.
REPRESENTATION
1.1041 Representation in an international design application.
1.1042 Correspondence respecting international design applications filed with the Office as an office of indirect filing.
TRANSMITTAL OF INTERNATIONAL DESIGN APPLICATION TO THE INTERNATIONAL BUREAU
1.1045 Procedures for transmittal of international design application to the International Bureau.
RELIEF FROM PRESCRIBED TIME LIMITS; CONVERSION TOA DESIGNAPPLICATION UNDER
35 U.S.C. CHAPTER 16
1.1051 Relief from prescribed time limits.
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MANUAL OF PATENT EXAMINING PROCEDURE
1.1052 Conversion to a design application under 35 U.S.C. chapter 16.
NATIONAL PROCESSING OF INTERNATIONAL DESIGN APPLICATIONS
1.1061 Rules applicable. 1.1062 Examination. 1.1063 Notification of Refusal. 1.1064 One independent and distinct design. 1.1065 Corrections and other changes in the
International Register. 1.1066 Correspondence address for a
nonprovisional international design application.
1.1067 Title, description, and inventor’s oath or declaration.
1.1068 Statement of grant of protection. 1.1070 Notification of Invalidation. 1.1071 Grant of protection for an industrial design
only upon issuance of a patent.
Subpart A — General Provisions
GENERAL INFORMATION AND CORRESPONDENCE
§ 1.1 Addresses for non-trademark correspondence with the United States Patent and Trademark Office.
(a) In general. Except as provided in paragraphs (a)(3)(i), (a)(3)(ii) and (d)(1) of this section, all correspondence intended for the United States Patent and Trademark Office must be addressed to either “Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450” or to specific areas within the Office as set out in paragraphs (a)(1), and (a)(3)(iii) of this section. When appropriate, correspondence should also be marked for the attention of a particular office or individual.
(1) Patent correspondence.
(i) In general. All correspondence concerning patent matters processed by organizations reporting to the Commissioner for Patents should be addressed to: Commissioner for Patents, PO Box 1450, Alexandria, Virginia 22313-1450.
(ii) Patent Trial and Appeal Board. See § 41.10 or § 42.6 of this title. Notices of appeal, appeal briefs, reply briefs, requests for oral hearing, as well as all other correspondence in an application or a patent involved in an appeal to the Board for which an address is not otherwise specified, should be addressed as set out in paragraph (a)(1)(i) of this section.
(2) [Reserved]
(3) Office of General Counsel correspondence.—
(i) Litigation and service. Correspondence relating to pending litigation or otherwise within the scope of part 104 of this title shall be addressed as provided in § 104.2.
(ii) Disciplinary proceedings. Correspondence to counsel for the Director of the Office of Enrollment and Discipline relating to disciplinary proceedings pending before a Hearing Officer or the Director shall be mailed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(iii) Solicitor, in general. Correspondence to the Office of the Solicitor not otherwise provided for shall be addressed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(iv) General Counsel. Correspondence to the Office of the General Counsel not otherwise provided for, including correspondence to the General Counsel relating to disciplinary proceedings, shall be addressed to: General Counsel, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450.
(v) Improper correspondence. Correspondence improperly addressed to a Post Office Box specified in paragraphs (a)(3)(i) and (a)(3)(ii) of this section will not be filed elsewhere in the United States Patent and Trademark Office, and may be returned.
(4) Office of Public Records correspondence.
(i) Assignments. All patent-related documents submitted by mail to be recorded by Assignment Services Division, except for documents filed together with a new application, should be
Rev. 07.2015, October 2015R-11
§ 1.1PATENT RULES
addressed to: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. See § 3.27.
(ii) Documents. All requests for certified or uncertified copies of patent documents should be addressed to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(5) Office of Enrollment and Discipline correspondence. All correspondence directed to the Office of Enrollment and Discipline concerning enrollment, registration, and investigation matters should be addressed to Mail Stop OED, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(b) Patent Cooperation Treaty. Letters and other communications relating to international applications during the international stage and prior to the assignment of a national serial number should be additionally marked “Mail Stop PCT.”
(c) For reexamination or supplemental examination proceedings.
(1) All correspondence concerning ex parte reexamination, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 102.04 of this chapter, should be additionally marked “Mail Stop Ex Parte Reexam.”
(2) All correspondence concerning inter partes reexamination, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 102.4 of this chapter, should be additionally marked "Mail Stop Inter Partes Reexam."
(3) Requests for supplemental examination (original and corrected request papers) and any other paper filed in a supplemental examination proceeding, should be additionally marked "Mail Stop Supplemental Examination."
(4) All correspondence concerning a reexamination proceeding ordered as a result of a supplemental reexamination proceeding, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 102.4 of this chapter should be additionally marked “Mail Stop Ex Parte Reexam.”
(d) Payments of maintenance fees in patents not submitted electronically over the Internet, and correspondence related to maintenance fees may be addressed to: Director of the United States Patent and Trademark Office, Attn: Maintenance Fee, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
(e) Patent term extension. All applications for extension of patent term under 35 U.S.C. 156 and any communications relating thereto intended for the United States Patent and Trademark Office should be additionally marked "Mail Stop Hatch-Waxman PTE." When appropriate, the communication should also be marked to the attention of a particular individual, as where a decision has been rendered.
(f) [Reserved]
[46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (e), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (f) added, 52 FR 9394, Mar. 24, 1987; para. (g) added, 53 FR 16413, May 9,1988; para. (h) added, 54 FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; para. (i) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised and para. (g) removed and reserved, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; para. (b) revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; paras. (a) and (d) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para (a)(2) corrected, 68 FR 19371, Apr. 21, 2003, effective May 1, 2003; section heading, para. (a) introductory text and para. (a)(4) revised, para. (a)(2) removed and reserved, and note following para. (f) removed, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (c) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (a)(4)(i) revised and para. (f) removed and reserved, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (a) introductory text revised and para. (a)(5) added, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (a)(1)(ii) revised and para. (a)(1)(iii) removed, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c)(1) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; para. (d) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; paras. (a)(3)(ii) and (a)(3)(iii) revised, 75 FR 36294, June 25, 2010, effective June 25, 2010; para. (a)(1)(ii) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (e) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.1
§ 1.2 Business to be transacted in writing.
All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
§ 1.3 Business to be conducted with decorum and courtesy.
Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Director and will not be entered. A notice of the non-entry of the paper will be provided. Complaints against examiners and other employees must be made in correspondence separate from other papers.
[Amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003]
§ 1.4 Nature of correspondence and signature requirements.
(a) Correspondence with the Patent and Trademark Office comprises:
(1) Correspondence relating to services and facilities of the Office, such as general inquiries, requests for publications supplied by the Office, orders for printed copies of patents, orders for copies of records, transmission of assignments for recording, and the like, and
(2) Correspondence in and relating to a particular application or other proceeding in the Office. See particularly the rules relating to the filing, processing, or other proceedings of national applications in subpart B of this part; of international applications in subpart C of this part; of ex parte reexaminations of patents in subpart D of this part; of supplemental examination of patents in subpart
E of this part; of extension of patent term in subpart F of this part; of inter partes reexaminations of patents in subpart H of this part; of international design applications in subpart I of this part; and of the Patent Trial and Appeal Board in parts 41 and 42 of this chapter.
(b) Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical. The filing of duplicate copies of correspondence in the file of an application, patent, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.
(c) Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects. Subjects provided for on a single Office or World Intellectual Property Organization form may be contained in a single paper.
(d)(1) Handwritten signature. Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (d)(4), (e) and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person’s signature, must:
(i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equivalent, by that person; or
(ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original.
(2) S-signature. An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by paragraph (d)(1) of this section. An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature as
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provided for in paragraph (d)(1) of this section. Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d), or via the Office electronic filing system as an attachment as provided in § 1.6(a)(4), for a patent application, patent, or a reexamination or supplemental examination proceeding may be S-signature signed instead of being personally signed ( i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) of this section are as follows.
(i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature ( e.g., /Dr. James T. Jones, Jr./); and
(ii) A patent practitioner (§ 1.32(a)(1)), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
(iii) The signer’s name must be:
(A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
(B) Reasonably specific enough so that the identity of the signer can be readily recognized.
(d)(3) Electronically submitted correspondence. Correspondence permitted via the Office electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the Office electronic filing system.
(4) Certifications—
(i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating)
of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
(ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
(5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms (e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.
(e) The following correspondence must be submitted with an original handwritten signature
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personally signed in permanent dark ink or its equivalent:
(1) Correspondence requiring a person's signature and relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and
(2) Payments by credit cards where the payment is not being made via the Office's electronic filing systems.
(f) When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.
(g) An applicant who has not made of record a registered attorney or agent may be required to state whether assistance was received in the preparation or prosecution of the patent application, for which any compensation or consideration was given or charged, and if so, to disclose the name or names of the person or persons providing such assistance. Assistance includes the preparation for the applicant of the specification and amendments or other papers to be filed in the Patent and Trademark Office, as well as other assistance in such matters, but does not include merely making drawings by draftsmen or stenographic services in typing papers.
(h) Ratification/confirmation/evidence of authenticity: The Office may require ratification, confirmation (which includes submission of a duplicate document but with a proper signature), or evidence of authenticity of a signature, such as when the Office has reasonable doubt as to the authenticity (veracity) of the signature, e.g., where there are variations of a signature, or where the signature and the typed or printed name, do not clearly identify the person signing.
[24 FR 10332, Dec. 22, 1959; 43 FR 20461, May 11, 1978; para. (a), 48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a)(2), 53 FR 47807, Nov. 28, 1988, effective Jan. 1, 1989; paras. (d)-(f) added, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (d) revised & para. (g) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)(2) and (d)(1) revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; paras. (b) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(2) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (d)(1)(iii)(A) amended, 67 FR 79520, Dec. 30, 2002,
effective Dec. 30, 2002; para. (d)(1)(iii)(B) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (d)(1)(iii) removed and reserved, paras. (a)(1), (a)(2), (b), (d)(1), introductory text, and (d)(1)(ii) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (a)(2) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (d) and (e) revised and para. (h) added, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; para. (d)(2) introductory text and paragraph (d)(2)(ii) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; paras. (d)(2) introductory text, (d)(3), and (d)(4)(ii) revised, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; paras. (d)(3) and (d)(4)(i) revised, para. (d)(4)(ii)(C) added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (a)(2) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (e) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (d)(4)(i) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013; paras. (a)(2), (c) and (d) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (a)(2) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.5 Identification of patent, patent application, or patent-related proceeding.
(a) No correspondence relating to an application should be filed prior to receipt of the assigned application number ( i.e., U.S. application number, international application number, or international registration number as appropriate). When correspondence directed to the Patent and Trademark Office concerns a previously filed application for a patent, it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Patent and Trademark Office, or the international application number of the international application, or the international registration number of an international design application. Any correspondence not containing such identification will be returned to the sender where a return address is available. The returned correspondence will be accompanied with a cover letter, which will indicate to the sender that if the returned correspondence is resubmitted to the Patent and Trademark Office within two weeks of the mail date on the cover letter, the original date of receipt of the correspondence will be considered by the Patent and Trademark Office as the date of receipt of the correspondence. Applicants may use either the Certificate of Mailing
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or Transmission procedure under § 1.8 or the
Priority Mail Express® procedure under § 1.10 for resubmissions of returned correspondence if they desire to have the benefit of the date of deposit in the United States Postal Service. If the returned correspondence is not resubmitted within the two-week period, the date of receipt of the resubmission will be considered to be the date of receipt of the correspondence. The two-week period to resubmit the returned correspondence will not be extended. In addition to the application number, all correspondence directed to the Patent and Trademark Office concerning applications for patent should also state the name of the first listed inventor, the title of the invention, the date of filing the same, and if known, the group art unit or other unit within the Patent and Trademark Office responsible for considering the correspondence and the name of the examiner or other person to which it has been assigned.
(b) When the letter concerns a patent other than for purposes of paying a maintenance fee, it should state the number and date of issue of the patent, the name of the patentee, and the title of the invention. For letters concerning payment of a maintenance fee in a patent, see the provisions of § 1.366(c).
(c) Correspondence relating to a trial proceeding before the Patent Trial and Appeal Board (part 42 of this title) are governed by § 42.6 of this title.
(d) A letter relating to a reexamination or supplemental examination proceeding should identify it as such by the number of the patent undergoing reexamination or supplemental examination, the request control number assigned to such proceeding, and, if known, the group art unit and name of the examiner to which it been assigned.
(e) [Reserved]
(f) When a paper concerns a provisional application, it should identify the application as such and include the application number.
[24 FR 10332, Dec. 22, 1959; 46 FR 29181, May 29, 1981; para. (a), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (a) & (b), 53 FR 47807, Nov. 28, 1988, effective Jan. 1, 1989; para. (a) revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (f) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; para. (c) revised, 64 FR
48900, Sept. 8, 1999, effective Oct. 30, 1999; section heading revised, para. (c) removed and reserved, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (e) removed and reserved, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (a) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (d) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (a) revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014; para. (a) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.6 Receipt of correspondence.
(a) Date of receipt and Priority Mail Express®
date of deposit. Correspondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:
(1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2) Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as
Priority Mail Express® with the United States Postal Service.
(3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
(4) Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
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(b) [Reserved]
(c) Correspondence delivered by hand. In addition to being mailed, correspondence may be delivered by hand during hours the Office is open to receive correspondence.
(d) Facsimile transmission. Except in the cases enumerated below, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the United States Patent and Trademark Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See paragraph (a)(3) of this section. To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the United States Patent and Trademark Office. The application number of a patent application, the control number of a reexamination or supplemental examination proceeding, the interference number of an interference proceeding, the trial number of a trial proceeding before the Board, or the patent number of a patent should be entered as a part of the sender's identification on a facsimile cover sheet. Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:
(1) Correspondence as specified in § 1.4(e), requiring an original signature;
(2) Certified documents as specified in § 1.4(f);
(3) Correspondence that cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D), (F), (I), and (K) and § 1.8(a)(2)(iii)(A), except that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;
(4) Color drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026;
(5) A request for reexamination under § 1.510 or § 1.913, or a request for supplemental examination under § 1.610;
(6) Correspondence to be filed in an application subject to a secrecy order under §§ 5.1
through 5.5 of this chapter and directly related to the secrecy order content of the application;
(7) In contested cases and trials before the Patent Trial and Appeal Board, except as the Board may expressly authorize.
(e) [Reserved]
(f) Facsimile transmission of a patent application under § 1.53(d). In the event that the Office has no evidence of receipt of an application under § 1.53(d) (a continued prosecution application) transmitted to the Office by facsimile transmission, the party who transmitted the application under § 1.53(d) may petition the Director to accord the application under § 1.53(d) a filing date as of the date the application under § 1.53(d) is shown to have been transmitted to and received in the Office,
(1) Provided that the party who transmitted such application under § 1.53(d):
(i) Informs the Office of the previous transmission of the application under § 1.53(d) promptly after becoming aware that the Office has no evidence of receipt of the application under § 1.53(d);
(ii) Supplies an additional copy of the previously transmitted application under § 1.53(d); and
(iii) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previous transmission of the application under § 1.53(d) and is accompanied by a copy of the sending unit’s report confirming transmission of the application under § 1.53(d) or evidence that came into being after the complete transmission and within one business day of the complete transmission of the application under § 1.53(d).
(2) The Office may require additional evidence to determine if the application under § 1.53(d) was transmitted to and received in the Office on the date in question.
(g) Submission of the national stage correspondence required by § 1.495 via the Office electronic filing system. In the event that the Office has no evidence of receipt of the national stage correspondence required by § 1.495, which was submitted to the Office by the Office electronic filing system, the party who submitted the
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correspondence may petition the Director to accord the national stage correspondence a receipt date as of the date the correspondence is shown to have been officially submitted to the Office.
(1) The petition of this paragraph (g) requires that the party who submitted such national stage correspondence:
(i) Informs the Office of the previous submission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence under § 1.495;
(ii) Supplies an additional copy of the previously submitted correspondence;
(iii) Includes a statement that attests on a personal knowledge basis, or to the satisfaction of the Director, that the correspondence was previously officially submitted; and
(iv) Supplies a copy of an acknowledgment receipt generated by the Office electronic filing system, or equivalent evidence, confirming the submission to support the statement of paragraph (g)(1)(iii) of this section.
(2) The Office may require additional evidence to determine if the national stage correspondence was submitted to the Office on the date in question.
[48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983; para. (a), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a) amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d)(3), (d)(6) & (e) amended, para. (f) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para (a)(1) revised and para. (a)(4) added, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; para.(d)(9) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (d)(5) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (b) removed and reserved and paras. (e), (f) & (f)(1)(iii) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (a)(4), (d)(7) and (d)(8) removed and reserved, and paras. (d), introductory text, (d)(3), and (d)(4) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (d)(9) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (d)(4) revised and para. (e) removed and reserved, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; paras. (a)(4) & (g) added, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; para. (d)(3) revised, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012; ; paras. (d) introductory text and (d)(9) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (d) revised, 78 FR 62368,
Oct. 21, 2013, effective Dec. 18, 2013; paras. (a) and (a)(2) revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014; paras. (d)(3)-(4) and (6) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.7 Times for taking action; Expiration on Saturday, Sunday or Federal holiday.
(a) Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by or under this part for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding business day which is not a Saturday, Sunday, or a Federal holiday. See § 90.3 of this chapter for time for appeal or for commencing civil action.
(b) If the day that is twelve months after the filing date of a provisional application under 35 U.S.C. 111(b) and §1.53(c) falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the period of pendency shall be extended to the next succeeding secular or business day which is not a Saturday, Sunday, or a Federal holiday.
[48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; corrected 48 FR 4285, Jan. 31, 1983; revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.8 Certificate of mailing or transmission.
(a) Except in the situations enumerated in paragraph (a)(2) of this section or as otherwise expressly excluded in this chapter, correspondence required to be filed in the U.S. Patent and Trademark Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.
(1) Correspondence will be considered as being timely filed if:
(i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being:
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(A) Addressed as set out in § 1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail;
(B) Transmitted by facsimile to the Patent and Trademark Office in accordance with § 1.6(d); or
(C) Transmitted via the Office electronic filing system in accordance with § 1.6(a)(4); and
(ii) The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
(2) The procedure described in paragraph (a)(1) of this section does not apply to, and no benefit will be given to a Certificate of Mailing or Transmission on, the following:
(i) Relative to Patents and Patent Applications—
(A) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date, including a request for a continued prosecution application under § 1.53(d);
(B) Papers filed in trials before the Patent Trial and Appeal Board, which are governed by § 42.6(b) of this title;
(C) Papers filed in contested cases before the Patent Trial and Appeal Board, which are governed by § 41.106(f) of this title;
(D) The filing of an international application for patent;
(E) The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority;
(F) The filing of a copy of the international application and the basic national fee necessary to enter the national stage, as specified in § 1.495(b).
(G) The filing of a written declaration of abandonment under § 1.138;
(H) The filing of a submission under § 1.217 for publication of a redacted copy of an application;
(I) The filing of a third-party submission under § 1.290;
(J) The calculation of any period of adjustment, as specified in § 1.703(f); and
(K) The filing of an international design application.
(ii) [Reserved]
(iii) Relative to Disciplinary Proceedings—
(A) Correspondence filed in connection with a disciplinary proceeding under part 11 of this chapter.
(B) [Reserved]
(b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence, or after the application is held to be abandoned, or after the proceeding is dismissed or decided with prejudice, or the prosecution of a reexamination proceeding is terminated pursuant to § 1.550(d) or § 1.957(b) or limited pursuant to § 1.957(c), or a requester paper is refused consideration pursuant to § 1.957(a), the correspondence will be considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
(3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission. If the correspondence was sent by facsimile transmission, a copy of the sending unit’s report confirming transmission may be used to support this statement. If the correspondence was transmitted via the Office electronic filing system, a copy of an
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acknowledgment receipt generated by the Office electronic filing system confirming submission may be used to support this statement.
(c) The Office may require additional evidence to determine if the correspondence was timely filed.
[41 FR 43721, Oct. 4, 1976; 43 FR 20461, May 11, 1978; para. (a). 47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; para. (a),48 FR 2708, Jan. 20, 1983; para. (a) 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 49 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; 52 FR 20046, May 28, 1987; subparas. (a)(2)(xiv)-(xvi), 54 FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a) revised, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (a)(2)(i)(A) & (b) revised; 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(2)(i)(F) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (b)(3) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(2)(ii) removed and reserved, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (a)(2)(i)(B) removed and reserved and para. (a)(2)(i)(C) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a) and (b) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; paras. (a)(1)(i) & (b)(3) revised, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; para. (b) introductory text revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; para. (a)(2)(iii)(A) revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; paras. (a)(2)(i)(C) revised and paras. (a)(2)(i)(B) and (a)(2)(i)(G)-(J) added, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012; paras. (a)(2)(i)(I)-(J) revised and para. (a)(2)(i)(K) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.9 Definitions.
(a)(1) A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
(2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).
(3) A nonprovisional application as used in this chapter means either a U.S. national application
for patent which was filed in the Office under 35 U.S.C. 111(a), an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
(b) An international application as used in this chapter means an international application for patent filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.
(c) A published application as used in this chapter means an application for patent which has been published under 35 U.S.C. 122(b).
(d)(1) The term inventor or inventorship as used in this chapter means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
(2) The term joint inventor or coinventor as used in this chapter means any one of the individuals who invented or discovered the subject matter of a joint invention.
(e) The term joint research agreement as used in this chapter means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
(f) The term claimed invention as used in this chapter means the subject matter defined by a claim in a patent or an application for a patent.
(g) For definitions in Patent Trial and Appeal Board proceedings, see parts 41 and 42 of this title.
(h) A Federal holiday within the District of Columbia as used in this chapter means any day, except Saturdays and Sundays, when the Patent and Trademark Office is officially closed for business for the entire day.
(i) National security classified as used in this chapter means specifically authorized under criteria established by an Act of Congress or Executive Order to be kept secret in the interest of national defense or foreign policy and, in fact, properly
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.9
classified pursuant to such Act of Congress or Executive Order.
(j) Director as used in this chapter, except for part 11 of this chapter, means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
(k) Paper as used in this chapter means a document that may exist in electronic form, or in physical form, and therefore does not necessarily imply physical sheets of paper.
(l) Hague Agreement as used in this chapter means the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and Hague Agreement Article as used in this chapter means an Article under the Hague Agreement.
(m) Hague Agreement Regulations as used in this chapter means the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, and Hague Agreement Rule as used in this chapter means one of the Hague Agreement Regulations.
(n) An international design application as used in this chapter means an application for international registration of a design filed under the Hague Agreement. Unless otherwise clear from the wording, reference to "design application" or "application for a design patent" in this chapter includes an international design application that designates the United States.
[43 FR 20461, May 11, 1978; 47 FR 40139, Sept. 10, 1982, effective Oct. 1, 1982; 47 FR 43275, Sept. 30, 1982, effective Oct. 1, 1982; para. (d), 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (g), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (d) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (h) added, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d) & (f) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (c)-(f) removed and reserved and para. (i) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (j) added, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (k) added, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (g) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (j) revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (g) revised, 77 FR 46615, Aug. 6, 2012,
effective Sept. 16, 2012; paras. (a) and (b) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (d)-(f) added, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (a)(1) and (3) revised and paras. (l)-(n) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.10 Filing of correspondence by Priority
Mail Express®.
(a)(1) Any correspondence received by the U.S. Patent and Trademark Office (USPTO) that
was delivered by the Priority Mail Express® Post Office to Addressee service of the United States Postal Service (USPS) will be considered filed with the USPTO on the date of deposit with the USPS.
(2) The date of deposit with USPS is shown
by the “date in” on the Priority Mail Express® label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the USPTO receipt date as the filing date. See § 1.6(a).
(b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a
legible copy of the Priority Mail Express® mailing label with the “date-in” clearly marked. Persons dealing indirectly with the employees of the USPS
(such as by deposit in an Priority Mail Express®
drop box) do so at the risk of not receiving a copy
of the Priority Mail Express® mailing label with the desired “date-in” clearly marked. The paper(s) or fee(s) that constitute the correspondence should
also include the Priority Mail Express® mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
(c) Any person filing correspondence under this section that was received by the Office and delivered
by the Priority Mail Express® Post Office to Addressee service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the “date-in” on the
Priority Mail Express® mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the
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§ 1.10PATENT RULES
“date-in” on the Priority Mail Express® mailing label or other official USPS notation, provided that:
(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
(2) The number of the Priority Mail
Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to
the original mailing by Priority Mail Express®; and
(3) The petition includes a true copy of the
Priority Mail Express® mailing label showing the “date-in,” and of any other official notation by the USPS relied upon to show the date of deposit.
(d) Any person filing correspondence under this section that was received by the Office and delivered
by the Priority Mail Express® Post Office to Addressee service of the USPS, who can show that
the “date-in” on the Priority Mail Express® mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
(2) The number of the Priority Mail
Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to
the original mailing by Priority Mail Express®; and
(3) The petition includes a showing which establishes, to the satisfaction of the Director, that the requested filing date was the date the correspondence was deposited in the Priority Mail
Express® Post Office to Addressee service prior to the last scheduled pickup for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or that came into being after deposit and within one business day of the deposit of the correspondence in the Priority Mail
Express® Post Office to Addressee service of the USPS.
(e) Any person mailing correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the Priority Mail
Express® Post Office to Addressee service of the USPS but not received by the Office, may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:
(1) The petition is filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
(2) The number of the Priority Mail
Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to
the original mailing by Priority Mail Express®;
(3) The petition includes a copy of the originally deposited paper(s) or fee(s) that constitute the correspondence showing the number of the
Priority Mail Express® mailing label thereon, a copy of any returned postcard receipt, a copy of the
Priority Mail Express® mailing label showing the “date-in,” a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than
the “date-in” on the Priority Mail Express® mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the requested filing date was the date the correspondence was deposited in the Priority
Mail Express® Post Office to Addressee service prior to the last scheduled pickup for that day; and
(4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the copies of the correspondence, the copy of the
Priority Mail Express® mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original Priority
Mail Express® mailing label, returned postcard receipt, and official notation entered by the USPS.
(f) The Office may require additional evidence to determine if the correspondence was deposited
as Priority Mail Express® with the USPS on the date in question.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.10
(g) Any person who mails correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the Priority Mail
Express® Post Office to Addressee service of the USPS, but has the correspondence returned by the USPS due to an interruption or emergency in
Priority Mail Express® service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
(1) The petition is filed promptly after the person becomes aware of the return of the correspondence;
(2) The number of the Priority Mail
Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to
the original mailing by Priority Mail Express®;
(3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the Priority
Mail Express® mailing label thereon and a copy of
the Priority Mail Express® mailing label showing the “date-in”; and
(4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was returned by the USPS due to an interruption or emergency in Priority Mail
Express® service.
(h) Any person who attempts to mail correspondence addressed as set out in § 1.1 (a) to the Office with sufficient postage utilizing the
Priority Mail Express® Post Office to Addressee service of the USPS, but has the correspondence refused by an employee of the USPS due to an
interruption or emergency in Priority Mail Express®
service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
(1) The petition is filed promptly after the person becomes aware of the refusal of the correspondence;
(2) The number of the Priority Mail
Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to
the attempted mailing by Priority Mail Express®;
(3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the Priority
Mail Express® mailing label thereon; and
(4) The petition includes a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS due to an interruption or emergency in
Priority Mail Express® service.
(i) Any person attempting to file correspondence under this section that was unable to be deposited with the USPS due to an interruption or emergency
in Priority Mail Express® service which has been so designated by the Director, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
(1) The petition is filed in a manner designated by the Director promptly after the person becomes aware of the designated interruption or
emergency in Priority Mail Express® service;
(2) The petition includes the original correspondence or a copy of the original correspondence; and
(3) The petition includes a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or
emergency in Priority Mail Express® service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted
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§ 1.10PATENT RULES
to be deposited with the USPS on the requested filing date.
[48 FR 2708, Jan. 20, 1983, added effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983, paras. (a) & (c), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a)-(c) revised and paras. (d) - (f) added, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d) & (e) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 67 FR 36099, May 23, 2002, effective June 24, 2002; paras. (c), (d), (d)(3), (e) & (e)(4) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(1) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; paras. (g) through (i) added, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014;]
RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE
§ 1.11 Files open to the public.
(a) The specification, drawings, and all papers relating to the file of: A published application; a patent; or a statutory invention registration are open to inspection by the public, and copies may be obtained upon the payment of the fee set forth in § 1.19(b)(2). If an application was published in redacted form pursuant to § 1.217, the complete file wrapper and contents of the patent application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; and the application is still pending. See § 2.27 of this title for trademark files.
(b) All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor. The filing of reissue applications, other than continued prosecution applications under § 1.53(d) of reissue applications, will be announced in the Official Gazette. The announcement shall include at least the filing date, reissue application and original patent numbers, title, class and subclass, name of the inventor, name of the owner of record, name of the attorney or agent of record, and examining group to which the reissue application is assigned.
(c) All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette.
Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette. The announcement shall include at least the date of the request, if any, the reexamination request control number or the Director initiated order control number, patent number, title, class and subclass, name of the inventor, name of the patent owner of record, and the examining group to which the reexamination is assigned.
(d) All papers or copies thereof relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to inspection by the general public, and copies may be furnished upon paying the fee therefor.
(e) Except as prohibited in § 41.6(b), § 42.14 or § 42.410(b), the file of any interference or trial before the Patent Trial and Appeal Board is open to public inspection and copies of the file may be obtained upon payment of the fee therefor.
[42 FR 5593, Jan. 28, 1977; 43 FR 28477, June 30, 1978; 46 FR 29181, May 29, 1981, para. (c), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (a), (b) and (e), 50 FR 9278, Mar. 7, 1985, effective May 8, 1985; para. (e) revised, 60 FR 14488, Mar. 17, 1995, effective Mar. 17, 1995; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (c) revised, 71 FR 44219, Aug. 4, 2006, effective Aug. 4, 2006; para. (e) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.12 Assignment records open to public inspection.
[Editor Note: Paras. (b) and (c)(2) below include changes applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a)(1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.11
Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records.
(2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
(b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14, are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.
(c) Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under § 1.14, or any information with respect thereto, must:
(1) Be in the form of a petition including the fee set forth in § 1.17(g); or
(2) Include written authority granting access to the member of the public to the particular assignment records from an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record.
(d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.
[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (c), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; paras. (a) and (d), 56 FR 65142,
Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1) and (d), 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (a)(2) added, 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (c) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (c)(1) amended, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(1) and (b) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)(1) and (a)(2) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (b) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (c)(1) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras. (b) and (c)(2) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes to paras. (b) and (c)(2) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.12 (pre-AIA) for paras. (b) and (c)(2) otherwise in effect.]
§ 1.12 (pre-AIA) Assignment records open to public inspection.
[Editor Note: Applicable to patent applications filed before September 16, 2012*]
(a)(1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records.
(2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
(b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14, are available to the public. Copies of any assignment records, digests, and
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§ 1.12 (pre-AIA)
PATENT RULES
indexes that are not available to the public shall be obtainable only upon written authority of the applicant or applicant’s assignee or patent attorney or patent agent or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.
(c) Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under § 1.14, or any information with respect thereto, must:
(1) Be in the form of a petition including the fee set forth in § 1.17(g); or
(2) Include written authority granting access to the member of the public to the particular assignment records from the applicant or applicant’s assignee or attorney or agent of record.
(d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.
[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (c), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; paras. (a) and (d), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1) and (d), 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (a)(2) added, 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (c) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (c)(1) amended, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(1) and (b) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)(1) and (a)(2) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (b) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (c)(1) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
[*See § 1.12 for more information and the current rule, including paras. (b) and (c)(2) applicable to applications filed on or after Sept. 16, 2012]
§ 1.13 Copies and certified copies.
(a) Non-certified copies of patents, patent application publications, and of any records, books, papers, or drawings within the jurisdiction of the United States Patent and Trademark Office and open to the public, will be furnished by the United States Patent and Trademark Office to any person, and copies of other records or papers will be furnished to persons entitled thereto, upon payment of the appropriate fee. See § 2.201 of this chapter regarding copies of trademark records.
(b) Certified copies of patents, patent application publications, and trademark registrations and of any records, books, papers, or drawings within the jurisdiction of the United States Patent and Trademark Office and open to the public or persons entitled thereto will be authenticated by the seal of the United States Patent and Trademark Office and certified by the Director, or in his or her name, upon payment of the fee for the certified copy.
[Revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (b) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004]
§ 1.14 Patent applications preserved in confidence.
[Editor Note: Applicable to patent applications filed on or after September 16, 2012*]
(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
(1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.13
(i) Patented applications and statutory invention registrations. The file of an application that has issued as a patent or published as a statutory invention registration is available to the public as set forth in § 1.11(a). A copy of the patent application-as-filed, the file contents of the application, or a specific document in the file of such an application may be provided upon request and payment of the appropriate fee set forth in § 1.19(b).
(ii) Published abandoned applications. The file of an abandoned published application is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b).
(iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (i) of this section.
(iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCTArticle 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title, and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is
not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)).
(v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed or a specific document in the file of the pending application may also be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement
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§ 1.14PATENT RULES
Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
(vii) When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (i)) or a power to inspect (see paragraph (c) of this section) is necessary to obtain the application, or a copy of the application.
(2) Information concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public ( i.e., status information) includes:
(i) Whether the application is pending, abandoned, or patented;
(ii) Whether the application has been published under 35 U.S.C. 122(b);
(iii) The application “numerical identifier” which may be:
(A) The eight-digit application number (the two-digit series code plus the six-digit serial number); or
(B) The six-digit serial number plus any one of the filing date of the national application,
the international filing date, or date of entry into the national stage; and
(iv) Whether another application claims the benefit of the application ( i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121, 365, or 386of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications ( e.g., continuation), whether the application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b).
(b) Electronic access to an application. Where a copy of the application file or access to the application may be made available pursuant to this section, the Office may at its discretion provide access to only an electronic copy of the specification, drawings, and file contents of the application.
(c) Power to inspect a pending or abandoned application. Access to an application may be provided to any person if the application file is available, and the application contains written authority ( e.g., a power to inspect) granting access to such person. The written authority must be signed by:
(1) The applicant;
(2) A patent practitioner of record;
(3) The assignee or an assignee of an undivided part interest;
(4) The inventor or a joint inventor; or
(5) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495, if a power of attorney has not been appointed under § 1.32.
(d) Applications reported to Department of Energy. Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications. Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.14
subject matter in categories specified by 42 U.S.C. 2181(c) and (d).
(e) Decisions by the Director. Any decision by the Director that would not otherwise be open to public inspection may be published or made available for public inspection if:
(1) The Director believes the decision involves an interpretation of patent laws or regulations that would be of precedential value; and
(2) The applicant is given notice and an opportunity to object in writing within two months on the ground that the decision discloses a trade secret or other confidential information. Any objection must identify the deletions in the text of the decision considered necessary to protect the information, or explain why the entire decision must be withheld from the public to protect such information. An applicant or party will be given time, not less than twenty days, to request reconsideration and seek court review before any portions of a decision are made public under this paragraph over his or her objection.
(f) Notice to inventor of the filing of an application. The Office may publish notice in the Official Gazette as to the filing of an application on behalf of an inventor by a person who otherwise shows sufficient proprietary interest in the matter.
(g) International applications.
(1) Copies of international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2), or copies of a document in such application files, will be furnished in accordance with PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3, upon written request including a showing that the publication of the application has occurred and that the U.S. was designated, and upon payment of the appropriate fee (see § 1.19(b)), if:
(i) With respect to the Home Copy (the copy of the international application kept by the Office in its capacity as the Receiving Office, see PCT Article 12(1)), the international application was filed with the U.S. Receiving Office;
(ii) With respect to the Search Copy (the copy of an international application kept by the Office in its capacity as the International Searching Authority, see PCT Article 12(1)), the U.S. acted as the International Searching Authority, except for
the written opinion of the International Searching Authority which shall not be available until the expiration of thirty months from the priority date; or
(iii) With respect to the Examination Copy (the copy of an international application kept by the Office in its capacity as the International Preliminary ExaminingAuthority), the United States acted as the International Preliminary Examining Authority, an International Preliminary Examination Report has issued, and the United States was elected.
(2) A copy of an English language translation of a publication of an international application which has been filed in the United States Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be furnished upon written request including a showing that the publication of the application in accordance with PCT Article 21(2) has occurred and that the U.S. was designated, and upon payment of the appropriate fee (§ 1.19(b)(4)).
(3) Access to international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2), or copies of a document in such application files, will be permitted in accordance with PCT Articles 30 and 38 and PCT Rules 44 ter.1, 94.2 and 94.3, upon written request including a showing that the publication of the application has occurred and that the U.S. was designated.
(4) In accordance with PCT Article 30, copies of an international application-as-filed under paragraph (a) of this section will not be provided prior to the international publication of the application pursuant to PCT Article 21(2).
(5) Access to international application files under paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be permitted with respect to the Examination Copy in accordance with PCT Article 38.
(h) Access by a Foreign Intellectual Property Office.
(1) Access to the application-as-filed may be provided to any foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), if the application contains written authority granting
Rev. 07.2015, October 2015R-29
§ 1.14PATENT RULES
such access. Written authority under this paragraph should be submitted prior to filing a subsequent foreign application with a participating intellectual property office in which priority is claimed to the patent application.
(2) Written authority provided under paragraph (h)(1) of this section must include the title of the invention (§ 1.71(a)), comply with the requirements of paragraph (c) of this section, and be submitted on a separate document (§ 1.4(c)).
(3) Written authority provided under paragraph (h)(1) of this section will be treated as authorizing the Office to provide to all participating foreign intellectual property offices indicated in the written authority in accordance with their respective agreements with the Office:
(i) A copy of the application-as-filed; and
(ii) A copy of the application-as-filed with respect to any application the filing date of which is claimed by the application in which written authority under paragraph (h)(1) of this section is filed.
(i) Access or copies in other circumstances. The Office, either sua sponte or on petition, may also provide access or copies of all or part of an application if necessary to carry out an Act of Congress or if warranted by other special circumstances. Any petition by a member of the public seeking access to, or copies of, all or part of any pending or abandoned application preserved in confidence pursuant to paragraph (a) of this section, or any related papers, must include:
(1) The fee set forth in § 1.17(g); and
(2) A showing that access to the application is necessary to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access to all or part of the application.
(j) International design applications.
(1) With respect to an international design application maintained by the Office in its capacity as a designated office (§ 1.1003) for national processing, the records associated with the international design application may be made available as provided under paragraphs (a) through (i) of this section.
(2) With respect to an international design application maintained by the Office in its capacity
as an office of indirect filing (§ 1.1002), the records of the international design application may be made available under paragraph (j)(1) of this section where contained in the file of the international design application maintained by the Office for national processing. Also, if benefit of the international design application is claimed under 35 U.S.C. 386(c) in a U.S. patent or published application, the file contents of the application may be made available to the public, or the file contents of the application, a copy of the application-as-filed, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)).
[42 FR 5593, Jan. 28, 1977; 43 FR 20462, May 11, 1978; para. (e) added, 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; para. (d), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (b), 50 FR 9378, Mar. 7, 1985, effective May 8, 1985; 53 FR 23733, June 23, 1988; para. (e), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (e) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a), (b) and (e) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) revised & para. (f) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (g) added, 63 FR 29614, June 1, 1998, effective July 1, 1998, (adopted as final, 63 FR 66040, Dec. 1, 1998); revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a), (b), (c), (e), (i) and (j) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para (h) corrected, 65 FR 78958, Dec. 18, 2000; para.(i)(2) revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001; para. (d)(4) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; paras. (g) & (g)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; paras. (g)(1)(ii) & (g)(3) revised, 68 FR 59881, Oct. 20, 2003, effective Jan. 1, 2004; para. (g)(1)(ii) corrected, 68 FR 67805, Dec., 4, 2003; para. (g)(5) revised, 68 FR 67805, Dec. 4, 2003, effective Jan. 1, 2004; para. (g)(2) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (h)(1) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras. (a)(1)(iii), (a)(1)(v), (a)(1)(vi), (a)(1)(vii), (a)(2) introductory text, & (b) revised, para. (h) redesignated as para. (i) and para. (h) added, 72 FR 1664, Jan. 16, 2007, effective Jan. 16, 2007; paras. (c) and (f) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para.(f) revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (a)(1)(ii)-(vii) and
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.14
(a)(2)(iv) revised and para. (j) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[*The changes to paras. (c) and (f) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.14 (pre-AIA) for paras. (c) and (f) otherwise in effect.]
§ 1.14 (pre-AIA) Patent applications preserved in confidence.
[Editor Note: Applicable to patent applications filed before September 16, 2012*]
* * * * *
(c) Power to inspect a pending or abandoned application. Access to an application may be provided to any person if the application file is available, and the application contains written authority ( e.g., a power to inspect) granting access to such person. The written authority must be signed by:
(1) An applicant;
(2) An attorney or agent of record;
(3) An authorized official of an assignee of record (made of record pursuant to § 3.71 of this chapter); or
(4) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495, if an executed oath or declaration pursuant to § 1.63 or § 1.497 has not been filed.
* * * * *
(f) Publication pursuant to § 1.47. Information as to the filing of an application will be published in the Official Gazette in accordance with § 1.47(c).
* * * * *
[*See § 1.14 for the current rule, including the portions of the rule not reproduced above and applicable irrespective of the filing date of the application]
§ 1.15 [Reserved]
(Editor’s note: substance supplanted by Part 102)
[32 FR 13812, Oct. 4, 1967; 34 FR 18857, Nov. 26, 1969; amended 53 FR 47685, Nov. 25, 1988, effective
Dec. 30, 1988; removed and reserved, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
FEES AND PAYMENT OF MONEY
§ 1.16 National application filing, search, and examination fees.
(a) Basic fee for filing each application under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications:
By a micro entity (§1.29) ................ $70.00
By a small entity (§ 1.27(a)) ........... 140.00
By a small entity (§ 1.27(a)) if the application issubmitted incompliancewith theOfficeelectronic filing system (§ 1.27(b)(2)) .......................... 70.00
By other than a small or micro entity .... 280.00
(b) Basic fee for filing each application under 35 U.S.C. 111 for an original design patent:
By a micro entity (§ 1.29) ............... $45.00
By a small entity (§ 1.27(a)) ............. 90.00
By other than a small or micro entity .... 180.00
(c) Basic fee for filing each application for an original plant patent:
By a micro entity (§ 1.29) ............... $45.00
By a small entity (§ 1.27(a)) ............. 90.00
By other than a small or micro entity .... 180.00
(d) Basic fee for filing each provisional application:
By a micro entity (§ 1.29) ............... $65.00
By a small entity (§ 1.27(a)) ........... 130.00
By other than a small or micro entity .... 260.00
(e) Basic fee for filing each application for the reissue of a patent:
By a micro entity (§ 1.29) ............... $70.00
By a small entity (§ 1.27(a)) ........... 140.00
By other than a small or micro entity .... 280.00
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§ 1.16PATENT RULES
(f) Surcharge for filing the basic filing fee, search fee, examination fee, or inventor's oath or declaration on a date later than the filing date of the application, an application that does not contain at least one claim on the filing date of the application, or an application filed by reference to a previously filed application under § 1.57(a), except provisional applications:
By a micro entity (§ 1.29) ............... $35.00
By a small entity (§ 1.27(a)) ............. 70.00
By other than a small or micro entity .... 140.00
(g) Surcharge for filing the basic filing fee or cover sheet (§ 1.51(c)(1)) on a date later than the filing date of the provisional application:
By a micro entity (§ 1.29) ............... $15.00
By a small entity (§ 1.27(a)) ............. 30.00
By other than a small or micro entity .... 60.00
(h) In addition to the basic filing fee in an application, other than a provisional application, for filing or later presentation at any other time of each claim in independent form in excess of 3:
By a micro entity (§ 1.29) ............. $105.00
By a small entity (§ 1.27(a)) ........... 210.00
By other than a small or micro entity .... 420.00
(i) In addition to the basic filing fee in an application, other than a provisional application, for filing or later presentation at any other time of each claim (whether dependent or independent) in excess of 20 (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes):
By a micro entity (§ 1.29) ............... $20.00
By a small entity (§ 1.27(a)) ............. 40.00
By other than a small or micro entity .... 80.00
(j) In addition to the basic filing fee in an application, other than a provisional application, that contains, or is amended to contain, a multiple dependent claim, per application:
By a micro entity (§ 1.29) ............. $195.00
By a small entity (§ 1.27(a)) ........... 390.00
By other than a small or micro entity .... 780.00
(k) Search fee for each application filed under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications:
By a micro entity (§ 1.29) ............. $150.00
By a small entity (§ 1.27(a)) ........... 300.00
By other than a small or micro entity .... 600.00
(l) Search fee for each application under 35 U.S.C. 111 for an original design patent:
By a micro entity (§ 1.29) ............... $30.00
By a small entity (§ 1.27(a)) ............. 60.00
By other than a small or micro entity .... 120.00
(m) Search fee for each application for an original plant patent:
By a micro entity (§ 1.29) ............... $95.00
By a small entity (§ 1.27(a)) ........... 190.00
By other than a small or micro entity .... 380.00
(n) Search fee for each application for the reissue of a patent:
By a micro entity (§ 1.29) ............. $150.00
By a small entity (§ 1.27(a)) ........... 300.00
By other than a small or micro entity .... 600.00
(o) Examination fee for each application filed under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications:
By a micro entity (§ 1.29) ............. $180.00
By a small entity (§ 1.27(a)) ........... 360.00
By other than a small entity ............ 720.00
(p) Examination fee for each application under 35 U.S.C. 111 for an original design patent:
By a micro entity (§ 1.29) ............. $115.00
By a small entity (§ 1.27(a)) ........... 230.00
By other than a micro or small entity .... 460.00
(q) Examination fee for each application for an original plant patent:
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.16
By a micro entity (§ 1.29) ............. $145.00
By a small entity (§ 1.27(a)) ........... 290.00
By other than a small or micro entity .... 580.00
(r) Examination fee for each application for the reissue of a patent:
By a micro entity (§ 1.29) ............. $540.00
By a small entity (§ 1.27(a)) ........ 1,080.00
By other than a small or micro entity .... 2,160.00
(s) Application size fee for any application under 35 U.S.C.111 for the specification and drawings which exceed 100 sheets of paper, for each additional 50 sheets or fraction thereof:
By a micro entity (§ 1.29) ............. $100.00
By a small entity (§ 1.27(a)) ........... 200.00
By other than a small or micro entity .... 400.00
(t) Non-electronic filing fee for any application under 35 U.S.C. 111(a) that is filed on or after November 15, 2011, other than by the Office electronic filing system, except for a reissue, design, or plant application:
By a small entity (§ 1.27(a)) ......... $200.00
By other than a small entity .......... $400.00
[Added, 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; 50 FR 31824, Aug. 6, 1985, effective date Oct. 5, 1985; paras. (a), (b), (d)-(i), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; paras. (a)-(j), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)-(d) and (f)-(j), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; paras. (a), (b), (d) and (f)-(i), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (a)-(g) amended and paras. (k) and (l) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a), (b), (d), & (f)-(i) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a), (b), (d), and (f)-(i) amended and para. (m) added, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a), (b), (d), and (f)-(i) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (d) & (l) amended, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)-(d) and (f)-(j) revised, 63 FR 6758, Dec. 8, 1998, effective Nov. 10, 1998; paras. (a) and (b) revised, 64 FR 67774, Dec. 3, 1999, effective Dec. 29, 1999; paras. (a), (b), (d), and (f)-(i) revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; paras. (a)-(l) revised, 65 FR 78958, Dec. 18, 2000; paras. (a), (b), (d), (f)-(i) and (k) revised, 66 FR 39447, July 31,
2001, effective Oct. 1, 2001; paras. (a), (g), and (h) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; paras. (a), (b), (d), and (f)-(i) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (a), (b), (d), and (f)-(i) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (f) and (s) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; paras. (a)-(e) and (h)-(s) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (a)-(e), (h)-(k), and (m)-(s) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (t) added, 76 FR 70651, Nov. 15, 2011, effective Nov. 15, 2011; para. (f) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (a)-(e), (h)-(j), and (o)-(s) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; paras. (a)-(s) revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; para. (f) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; introductory text of paras. (b), (l), and (p) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.17 Patent application and reexamination processing fees.
(a) Extension fees pursuant to § 1.136(a):
(1) For reply within first month:
By a micro entity (§ 1.29) .......... $50.00
By a small entity (§ 1.27(a)) .... $100.00
By other than a small or micro entity .... $200.00
(2) For reply within second month:
By a micro entity (§ 1.29) ........ $150.00
By a small entity (§ 1.27(a)) .... $300.00
By other than a small or micro entity .... $600.00
(3) For reply within third month:
By a micro entity (§ 1.29) ........ $350.00
By a small entity (§ 1.27(a)) .... $700.00
By other than a small or micro entity .... $1,400.00
(4) For reply within fourth month:
By a micro entity (§ 1.29) ........ $550.00
By a small entity (§ 1.27(a)) .. $1,100.00
By other than a small or micro entity .... $2,200.00
(5) For reply within fifth month:
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§ 1.17PATENT RULES
By a micro entity (§ 1.29) ........ $750.00
By a small entity (§ 1.27(a)) .. $1,500.00
By other than a small or micro entity .... $3,000.00
(b) For fees in proceedings before the Patent Trial and Appeal Board, see § 41.20 and § 42.15 of this title.
(c) For filing a request for prioritized examination under § 1.102(e):
By a micro entity (§ 1.29) .......... $1,000.00
By a small entity (§ 1.27(a)) ...... $2,000.00
By other than a small or micro entity .... $4,000.00
(d) For correction of inventorship in an application after the first action on the merits:
By a micro entity (§ 1.29) ............. $150.00
By a small entity (§ 1.27(a)) ......... $300.00
By other than a small or micro entity .... $600.00
(e) To request continued examination pursuant to § 1.114:
(1) For filing a first request for continued examination pursuant to § 1.114 in an application:
By a micro entity (§ 1.29) ........ $300.00
By a small entity (§ 1.27(a)) .... $600.00
By other than a small entity ... $1,200.00
(2) For filing a second or subsequent request for continued examination pursuant to § 1.114 in an application:
By a micro entity (§ 1.29) ........ $425.00
By a small entity (§ 1.27(a)) .... $850.00
By other than a small or micro entity .... $1,700.00
(f) For filing a petition under one of the following sections which refers to this paragraph:
By a micro entity (§ 1.29) ............. $100.00
By a small entity (§ 1.27(a)) ........... 200.00
By other than a small or micro entity .... 400.00
§ 1.36(a)—for revocation of a power of attorney by fewer than all of the applicants.
§ 1.53(e)—to accord a filing date.
§ 1.182—for decision on a question not specifically provided for in an application for patent.
§ 1.183—to suspend the rules in an application for patent.
§ 1.741(b)—to accord a filing date to an application under § 1.740 for extension of a patent term.
§ 1.1023—to review the filing date of an international design application.
(g) For filing a petition under one of the following sections which refers to this paragraph:
By a micro entity (§ 1.29) ............... $50.00
By a small entity (§ 1.27(a)) ........... 100.00
By other than a small or micro entity .... 200.00
§ 1.12—for access to an assignment record. § 1.14—for access to an application. § 1.46—for filing an application on behalf of an
inventor by a person who otherwise shows sufficient proprietary interest in the matter.
§ 1.55(f)—for filing a belated certified copy of a foreign application.
§ 1.55(g) —for filing a belated certified copy of a foreign application.
§ 1.57(a)—for filing a belated certified copy of a foreign application.
§ 1.59—for expungement of information. § 1.103(a)—to suspend action in an application. § 1.136(b)—for review of a request for extension
of time when the provisions of § 1.136(a)) are not available.
§ 1.377—for review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of a patent.
§ 1.550(c)—for patent owner requests for extension of time in ex parte reexamination proceedings.
§ 1.956—for patent owner requests for extension of time in inter partes reexamination proceedings.
§ 5.12—for expedited handling of a foreign filing license.
§ 5.15—for changing the scope of a license. § 5.25—for retroactive license.
(h) For filing a petition under one of the following sections which refers to this paragraph:
By a micro entity (§ 1.29) ............... $35.00
By a small entity (§ 1.27(a)) ........... $70.00
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.17
By other than a small or micro entity .... $140.00
§ 1.19(g)—to request documents in a form other than provided in this part.
§ 1.84—for accepting color drawings or photographs.
§ 1.91—for entry of a model or exhibit. § 1.102(d)—to make an application special. § 1.138(c)—to expressly abandon an application
to avoid publication. § 1.313—to withdraw an application from issue. § 1.314—to defer issuance of a patent.
(i) Processing fees.
(1) For taking action under one of the following sections which refers to this paragraph:
By a micro entity (§ 1.29) .......... $35.00
By a small entity (§ 1.27(a)) ........ 70.00
By other than a small or micro entity .... 140.00
§ 1.28(c)(3)—for processing a non-itemized fee deficiency based on an error in small entity status.
§ 1.29(k)(3)—for processing a non-itemized fee deficiency based on an error in micro entity status.
§ 1.41(b)—for supplying the name or names of the inventor or joint inventors in an application without either an application data sheet or the inventor's oath or declaration, except in provisional applications.
§ 1.48—for correcting inventorship, except in provisional applications.
§ 1.52(d)—for processing a nonprovisional application filed with a specification in a language other than English.
§ 1.53(c)(3)—t[sic] convert a provisional application filed under § 1.53(c) into a nonprovisional application under § 1.53(b).
§1.71(g)(2)—for processing a belated amendment under § 1.71(g).
§ 1.102(e)—for requesting prioritized examination of an application.
§ 1.103(b)—for requesting limited suspension of action, continued prosecution application for a design patent (§ 1.53(d)).
§ 1.103(c)—for requesting limited suspension of action, request for continued examination (§ 1.114).
§ 1.103(d)—for requesting deferred examination of an application.
§ 1.291(c)(5)—for processing a second or subsequent protest by the same real party in interest.
§ 3.81—for a patent to issue to assignee, assignment submitted after payment of the issue fee.
(2) For taking action under one of the following sections which refers to this paragraph: ................................................................... $130.00
§ 1.217—for processing a redacted copy of a paper submitted in the file of an application in which a redacted copy was submitted for the patent application publication.
§ 1.221—for requesting voluntary publication or republication of an application.
(j) [Reserved]
(k) For filing a request for expedited examination under § 1.155(a):
By a micro entity (§ 1.29) ............. $225.00
By a small entity (§ 1.27(a)) ......... $450.00
By other than a small or micro entity .... $900.00
(l) [Reserved]
(m) For filing a petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining a patent in force, for the delayed submission of a priority or benefit claim, for the extension of the twelve-month (six-month for designs) period for filing a subsequent application (§§ 1.55(c), 1.55(e), 1.78(b), 1.78(c), 1.78(e), 1.137, 1.378, and 1.452), or for filing a petition to excuse applicant's failure to act within prescribed time limits in an international design application (§ 1.1051):
By a small entity (§ 1.27(a)) or micro entity (§ 1.29) ..................................................... $850.00
By other than a small or micro entity .... 1,700.00
(n) [Reserved]
(o) For every ten items or fraction thereof in a third-party submission under § 1.290:
By a small entity (§ 1.27(a)) or micro entity (§ 1.29) ....................................................... $90.00
By other than a small entity .......... $180.00
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§ 1.17PATENT RULES
(p) For an information disclosure statement under § 1.97(c) or (d):
By a micro entity (§ 1.29) ............... $45.00
By a small entity (§ 1.27(a)) ........... $90.00
By other than a small or micro entity .... $180.00
(q) Processing fee for taking action under one of the following sections which refers to this paragraph .................................................... $50.00 § 1.41—to supply the name or names of the inventor or inventors after the filing date without a cover sheet as prescribed by § 1.51(c)(1) in a provisional application.
§ 1.48—for correction of inventorship in a provisional application.
§ 1.53(c)(2) —to convert a nonprovisional application filed under § 1.53(b) to a provisional application under § 1.53(c).
(r) For entry of a submission after final rejection under § 1.129(a):
By a micro entity (§ 1.29) ............. $210.00
By a small entity (§ 1.27(a)) ......... $420.00
By other than a small or micro entity .... $840.00
(s) For each additional invention requested to be examined under § 1.129(b):
By a micro entity (§ 1.29) ............. $210.00
By a small entity (§ 1.27(a)) ......... $420.00
By other than a small or micro entity .... $840.00
(t) For filing a petition to convert an international design application to a design application under 35 U.S.C. chapter 16 (§ 1.1052): ................. $180.00.
[Added 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; para. (h), 48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983; para. (h), 49 FR 13461, Apr. 4, 1984, effective June 4, 1984; para. (h), 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; paras. (e), (g), (h) and (i), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (h), (n) and (c), 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; 50 FR 31824, Aug. 6, 1985, effective Oct. 5, 1985; paras. (a)-(m), 54 FR 6893, Feb. 15, 1989, 54 FR 9431, March 7, 1989, effective Apr. 17, 1989; para. (i)(1), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(o), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; para. (i)(1), 57 FR 2021, Jan. 17, 1992, effective March 16, 1992; para. (p) added, 57
FR 2021, Jan. 17, 1992, effective March 16, 1992; para. (i)(1), 57 FR 29642, July 6, 1992, effective Sept. 4, 1992; corrected 57 FR 32439, July 22, 1992; paras. (b)-(g), (j), and (m)-(o), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (h), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. (b)-(g), (j) and (m)-(p), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (h) & (i) amended and paras. (q)-(s) added, 67 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (b)-(g), (j), (m)-(p), (r) & (s) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (b)-(g), (j), (m)-(p), (r) and (s) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (b)-(g), (j), (m)-(p), (r) & (s) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (a) - (d), (h), (i) & (q) revised, paras. (e)-(g) reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (q) corrected, 62 FR 61235, Nov. 17, 1997, effective Dec. 1, 1997; paras. (a)-(d), (l) and (m) revised, 63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; paras. (r) and (s) revised, 63 FR 67578, Dec. 8, 1998, effective Dec. 8, 1998; paras. (r) and (s) revised, 64 FR 67774, Dec. 3, 1999, effective Jan. 10, 2000; para. (e) added and para. (i) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (a)-(e), (m), (r) and (s) revised, 65 FR 49193, August 11, 2000, effective October 1, 2000; paras. (h), (i), (k), (l), (m), (p), and (q) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; heading and paras. (h), (i), (l), (m) and (p) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (t) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)-(e), (r) and (s) revised, 65 FR 78958, Dec. 18, 2000; heading and para. (h) revised, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001; paras. (a)(2)-(a)(5), (b)-(e), (m) and (r)-(t) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (a)(2)-(a)(5), (e), (m), and (r) through (t) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; para. (h) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; paras. (a)(2)-(a)(5), (b)-(e), (m), and (r)-(t) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (c) and (d) removed and reserved and paras. (b) and (h) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a)(2)-(a)(5), (e), (m), and (r)-(t) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; paras. (f) and (g) added and paras. (h) and (i) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras. (a), (l) and (m) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (i) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para. (f) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; paras. (l) & (m) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; paras. (a)(2)-(a)(5), (e), (l), (m), and (r)-(t) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (a)(4) and (a)(5) corrected, 72 FR 55055, Sept. 28, 2007, effective Sept. 30, 2007; para. (f) revised, 72 FR 46716,
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Aug. 21, 2007 (implementation enjoined and never became effective); para. (t) revised, 72 FR 51559, Sept. 10, 2007, and corrected 72 FR 57864, Oct. 11, 2007, effective Nov. 9, 2007; paras. (a), (l), and (m) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (f) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (c) added and para. (i) revised, 76 FR 18399, Apr. 4, 2011, effective date delayed until further notice, 76 FR 23876, April 29, 2011 and withdrawn effective Sept. 23, 2011, 76 FR 59050, Sept. 23, 2011; para. (c) added and para. (i) revised, 76 FR 59050, Sept. 23, 2011, effective Sept. 26, 2011; para. (j) removed and reserved and para. (p) revised, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012; para. (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (g) and (i) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (a), (l), and (m) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; paras.(g) and (i) revised and paras. (n) and (o) removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (a)-(i), (k)-(m), and (p)-(t) revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; revised, 78 FR 17102, Mar. 20, 2013, effective Mar. 20, 2013; paras. (f), (g), (m), and (p) revised, para. (o) added and paras. (l) and (t) removed and reserved, 78 FR 62368, Oct. 21, 2013, corrected 78 FR 75251, Dec. 11, 2013, effective Dec. 18, 2013; paras. (f), (g), (i)(1) and (m) revised and para. (t) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.18 Patent post allowance (including issue) fees.
(a) Issue fee for issuing each original patent, except a design or plant patent, or for issuing each reissue patent:
(1) For an issue fee paid on or after January 1, 2014:
By a micro entity (§ 1.29) ........ $240.00
By a small entity (§ 1.27(a)) ...... 480.00
By other than a small or micro entity .... 960.00
(2) For an issue fee paid before January 1, 2014:
By a micro entity (§ 1.29) ........ $445.00
By a small entity (§ 1.27(a)) ...... 890.00
By other than a small or micro entity .... $1,780.00
(b) Issue fee for issuing an original design patent:
(1) For an issue fee paid on or after January 1, 2014:
By a micro entity (§ 1.29) ........ $140.00
By a small entity (§ 1.27(a)) ...... 280.00
By other than a small or micro entity .... 560.00
(2) For an issue fee paid before January 1, 2014:
By a micro entity (§ 1.29) ........ $255.00
By a small entity (§ 1.27(a)) ...... 510.00
By other than a small or micro entity .... 1,020.00
(3) For an international design application designating the United States, where an issue fee is paid through the International Bureau (Hague Agreement Rule 12(3)(c)) as an alternative to paying the issue fee under paragraph (b)(1) of this section: The amount specified on the Web site of the World Intellectual Property Organization, currently available at http://www.wipo.int/hague , at the time the fee is paid.
(c) Issue fee for issuing an original plant patent:
(1) For an issue fee paid on or after January 1, 2014:
By a micro entity (§ 1.29) ........ $190.00
By a small entity (§ 1.27(a)) ...... 380.00
By other than a small or micro entity .... 760.00
(2) For an issue fee paid before January 1, 2014:
By a micro entity (§ 1.29) ........ $350.00
By a small entity (§ 1.27(a)) ...... 700.00
By other than a small entity .... 1,400.00
(d)
(1) Publication fee on or after January 1, 2014 .............................................................. $0.00
(2) Publication fee before January 1, 2014 ..................................................................... 300.00
(3) Republication fee (§ 1.221(a)) .... 300.00
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§ 1.18PATENT RULES
(e) For filing an application for patent term adjustment under § 1.705: ....................... $200.00.
(f) For filing a request for reinstatement of all or part of the term reduced pursuant to § 1.704(b) in an application for patent term adjustment under § 1.705: .................................................. $400.00.
[Added, 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR 31824, Aug. 6, 1985, effective Oct. 5, 1985; revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; revised, 56 FR 65142, Dec. 13. 1991, effective Dec. 16, 1991; paras. (a)-(c), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; revised, 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; amended, 63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; heading revised and paras. (d)-(f) added, 65 FR 56366, Sept. 18, 2000, effective Nov. 17, 2000; para. (d) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)-(c) revised, 65 FR 78958, Dec. 18, 2000; paras. (a)-(c) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (a)-(c) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; paras. (a)-(c) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (a)-(c) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; paras. (a)-(c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (a)-(c) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (a)-(c) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; paras. (a)-(c) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; para. (b)(3) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.19 Document supply fees.
The United States Patent and Trademark Office will supply copies of the following patent-related documents upon payment of the fees indicated. Paper copies will be in black and white unless the original document is in color, a color copy is requested and the fee for a color copy is paid.
(a) Uncertified copies of patent application publications and patents:
(1) Printed copy of the paper portion of a patent application publication or patent, including a design patent, statutory invention registration, or defensive publication document. Service includes preparation of copies by the Office within two to
three business days and delivery by United States Postal Service; and preparation of copies by the Office within one business day of receipt and delivery to an Office Box or by electronic means ( e.g., facsimile, electronic main( � ................ $3.00.
(2) Printed copy of a plant patent in color: .................................................................... $15.00.
(3) Color copy of a patent (other than a plant patent) or statutory invention registration containing a color drawing: ........................................ $25.00.
(b) Copies of Office documents to be provided in paper, or in electronic form, as determined by the Director (for other patent-related materials see § 1.21(k) ):
(1) Copy of a patent application as filed, or a patent-related file wrapper and contents, stored in paper in a paper file wrapper, in an image format in an image file wrapper, or if color documents, stored in paper in an Artifact Folder:
(i) If provided on paper:
(A) Application as filed: ..... $20.00.
(B) File wrapper and contents of 400 or fewer pages: ........................................ $200.00.
(C) Additional fee for each additional 100 pages or portion thereof of file wrapper and contents: .................................................... $40.00.
(D)Individualapplicationdocuments, other than application as filed, per document: .... $25.00.
(ii) If provided on compact disc or other physical electronic medium in single order:
(A) Application as filed: ...... $20.00.
(B) File wrapper and contents, first physical electronic medium: ..................... $55.00.
(C) Additional fee for each continuing physical electronic medium in the single order of paragraph (b)(1)(ii)(B) of this section: ...... $15.00.
(iii) If provided electronically ( e.g., by electronic transmission) other than on a physical electronic medium as specified in paragraph (b)(1)(ii) of this section:
(A) Application as filed: ...... $20.00.
(B) File wrapper and contents: .... $55.00.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.19
(iv) If provided to a foreign intellectual property office pursuant to a priority document exchange agreement (see § 1.14(h)(1) ): .... $0.00.
(2) Copy of patent-related file wrapper contents that were submitted and are stored on compact disc or other electronic form ( e.g., compact discs stored in an Artifact Folder), other than as available in paragraph (b)(1) of this section:
(i) If provided on compact disc or other physical electronic medium in a single order:
(A) First physical electronic medium in a single order: ........................................ $55.00.
(B) Additional fee for each continuing physical electronic medium in the single order of paragraph (b)(2)(i): ................................... $15.00.
(ii) If provided electronically other than on a physical electronic medium per order: .... $55.00.
(3) Copy of Office records, except copies available under paragraph (b)(1) or (2) of this section: ...................................................... $25.00.
(4) For assignment records, abstract of title and certification, per patent: ...................... $25.00.
(c) Library service (35 U.S.C. 13): For providing to libraries copies of all patents issued annually, per annum: ...................................................... $50.00.
(d) For list of all United States patents and statutory invention registrations in a subclass: .... $3.00.
(e) Uncertified statement as to status of the payment of maintenance fees due on a patent or expiration of a patent: ................................ $10.00.
(f) Uncertified copy of a non-United States patent document, per document: ............... $25.00.
(g) Petitions for documents in a form other than that provided by this part, or in a form other than that generally provided by the Director, will be decided in accordance with the merits of each situation. Any petition seeking a decision under this section must be accompanied by the petition fee set forth in § 1.17(h) and, if the petition is granted, the documents will be provided at cost.
(h) [Reserved]
[Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984, effective date Apr. 1, 1984; paras. (f) and (g) added, 49
FR 34724, Aug. 31, 1984, effective date Nov. 1, 1984; paras. (a) and (c), 50 FR 9379, Mar. 7, 1985, effective date May 8,1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; revised, 54 FR 6893, Feb. 15, 1989; 54 FR 9432, March 7, 1989, effective Apr. 17, 1989, revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (b)(4), (f) and (h),57 FR 38190, Aug. 21, 1992, effective Oct.1, 1992; para. (a)(3), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. (a)(1)(ii), (a)(1)(iii), (b)(1)(i), & (b)(1)(ii) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(2) and (a)(3) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (a)(1)(i) through (a)(1)(iii) revised, 64 FR 67486, Dec. 2, 1999, effective Dec. 2, 1999; introductory text and paras. (a) and (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (g) and (h) removed and reserved, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)(1) and (b)(1) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; introductory text and para. (b) revised and para. (g) added, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (b)(1)(iv) added, 72 FR 1664, Jan. 16, 2007, effective Jan. 16, 2007; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013]
§ 1.20 Post issuance fees.
(a) For providing a certificate of correction for applicant’s mistake (§ 1.323) ................... $100.00
(b) Processing fee for correcting inventorship in a patent (§ 1.324) ..................................... $130.00
(c) In reexamination proceedings:
(1) For filing a request for ex parte reexamination (§ 1.510(a)):
By a micro entity (§ 1.29) ..... $3,000.00
By a small entity (§ 1.27(a)) .. $6,000.00
By other than a small or micro entity .... $12,000.00
(2) [Reserved]
(3) For filing with a request for reexamination or later presentation at any other time of each claim in independent form in excess of 3 and also in excess of the number of claims in independent form in the patent under reexamination:
By a micro entity (§ 1.29) ........ $105.00
By a small entity (§ 1.27(a)) .... $210.00
By other than a small or micro entity .... $420.00
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§ 1.20PATENT RULES
(4) For filing with a request for reexamination or later presentation at any other time of each claim (whether dependent or independent) in excess of 20 and also in excess of the number of claims in the patent under reexamination (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes):
By a micro entity (§ 1.29) .......... $20.00
By a small entity (§ 1.27(a)) ...... $40.00
By other than a small or micro entity .... $80.00
(5) If the excess claims fees required by paragraphs (c)(3) and (4) of this section are not paid with the request for reexamination or on later presentation of the claims for which the excess claims fees are due, the fees required by paragraphs (c)(3) and (4) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
(6) For filing a petition in a reexamination proceeding, except for those specifically enumerated in §§ 1.550(i) and 1.937(d):
By a micro entity (§ 1.29) ........ $485.00
By a small entity (§ 1.27(a)) .... $970.00
By other than a small or micro entity .... $1,940.00
(7) For a refused request for ex parte reexamination under § 1.510 (included in the request for ex parte reexamination fee at § 1.20(c)(1))
By a micro entity (§ 1.29) ........ $900.00
By a small entity (§ 1.27(a)) .. $1,800.00
By other than a small or micro entity .... $3,600.00
(d) For filing each statutory disclaimer (§ 1.321): ................................................................... $160.00
(e) For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond four years, the fee being due by three years and six months after the original grant:
By a micro entity (§ 1.29) ............. $400.00
By a small entity (§ 1.27(a)) ......... $800.00
By other than a small or micro entity .... $1,600.00
(f) For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond eight years, the fee being due by seven years and six months after the original grant:
By a micro entity (§ 1.29) ............. $900.00
By a small entity (§ 1.27(a)) ...... $1,800.00
By other than a small or micro entity .... $3,600.00
(g) For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond twelve years, the fee being due by eleven years and six months after the original grant:
By a micro entity (§ 1.29) .......... $1,850.00
By a small entity (§ 1.27(a)) ...... $3,700.00
By other than a small or micro entity .... $7,400.00
(h) Surcharge for paying a maintenance fee during the six-month grace period following the expiration of three years and six months, seven years and six months, and eleven years and six months after the date of the original grant of a patent based on an application filed on or after December 12, 1980:
By a micro entity (§ 1.29) ............... $40.00
By a small entity (§ 1.27(a)) ........... $80.00
By other than a small or micro entity .... $160.00
(i) [Reserved]
(j) For filing an application for extension of the term of a patent.
Application for extension under § 1.740 .... $1,120.00.
Initial applicationfor interimextensionunder § 1.790 .................................................... $420.00.
Subsequent application for interim extension under § 1.790 ........................................... $220.00
(k) In supplemental examination proceedings:
(1) For processing and treating a request for supplemental examination:
By a micro entity (§ 1.29) ..... $1,100.00
By a small entity (§ 1.27(a)) .. $2,200.00
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By other than a small or micro entity .... $4,400.00
(2) For ex parte reexamination ordered as a result of a supplemental examination proceeding:
By a micro entity (§ 1.29) ..... $3,025.00
By a small entity (§ 1.27(a)) .. $6,050.00
By other than a small or micro entity .... $12,100.00
(3) For processing and treating, in a supplemental examination proceeding, a non-patent document over 20 sheets in length, per document:
(i) Between 21 and 50 sheets:
By a micro entity (§ 1.29) .... $45.00
By a small entity (§ 1.27(a)) .... $90.00
By other than a small or micro entity ................................................................... $180.00
(ii) For each additional 50 sheets or a fraction thereof:
By a micro entity (§ 1.29) .... $70.00
By a small entity (§ 1.27(a)) .... $140.00
By other than a small or micro entity ................................................................... $280.00
[Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (k), (l) and (m) added, 49 FR 34724, Aug. 31, 1984, effective date Nov. 1, 1984; paras. (c), (f), (g) and (m), 50 FR 9379, Mar. 7, 1985, effective date May 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986; 52 FR 9394, Mar. 24, 1987; paras. (a)-(n), 54 FR 6893, Feb. 15, 1989, 54 FR 8053, Feb. 24, 1989, effective Apr. 17, 1989; revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a), (c), (e)-(g) and (i), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (i), 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; paras. (c), (e)-(g), (i)(1) and (j), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; para. (j) revised, 60 FR 25615, May 12, 1995, effective July 11, 1995; paras. (c), (e)-(g), (i)(2), & (j)(1) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a), (e) -(g), (i)(1), (i)(2), and (j)(1)-(j)(3) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (c), (e) - (g), (i)(1), (i)(2), and (j)(1)-(j)(3) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (d)-(g) revised, 63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; para. (e) revised, 64 FR 67774, Dec. 3, 1999, effective Dec. 29, 1999; paras. (e)-(g) revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1,
2000; paras. (b) and (d)-(h) revised, 65 FR 78958, Dec. 18, 2000; para. (b) corrected, 65 FR 80755, Dec. 22, 2000; para. (c) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (e)-(g) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (e)-(g) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; para. (i) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (e)-(g) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (e)-(g) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; paras. (c)-(g) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (c)(3), (c)(4), and (e)-(g) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (c)(3),(c)(4), and (d)-(g) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (c)(1) revised and paras. (c)(6), (c)(7), and (k) added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012; paras. (c)(3), (c)(4), and (d)-(g) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; revised 78 FR 17102, Mar. 20, 2013, effective Mar. 20, 2013; para. (i) removed and reserved, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.21 Miscellaneous fees and charges.
(a) Registration of attorneys and agents:
(l) For admission to examination for registration to practice:
(i) Application Fee (non-refundable): .... $40.00.
(ii) Registration examination fee.
(A) For test administration by commercial entity: ................................... $200.00.
(B) For test administration by the USPTO: ................................................... $450.00.
(2) On registration to practice or grant of limited recognition under § 11.9(b) or (c): .... $100.00.
(3) [Reserved]
(4) For certificate of good standing as an attorney or agent: ....................................... $10.00.
(i) Suitable for framing ............. $20.00.
(ii) [Reserved]
(5) For review of decision:
(i) By the Director of Enrollment and Discipline under § 11.2(c) ...................... $130.00.
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(ii) Of the Director of Enrollment and Discipline under § 11.2(d) ..................... $130.00.
(6) [Reserved]
(7) [Reserved]
(8) [Reserved]
(i) Delinquency fee: ................. $50.00.
(ii) Administrative reinstatement fee: .... $100.00.
(10) On application by a person for recognition or registration after disbarment or suspension on ethical grounds, or resignation pending disciplinary proceedings in any other jurisdiction; on application by a person for recognition or registration who is asserting rehabilitation from prior conduct that resulted in an adverse decision in the Office regarding the person’s moral character; and on application by a person for recognition or registration after being convicted of a felony or crime involving moral turpitude or breach of fiduciary duty; on petition for reinstatement by a person excluded or suspended on ethical grounds, or excluded on consent from practice before the Office: .................... $1,600.00.
(b) Deposit accounts:
(1) For establishing a deposit account .... $10.00
(2) Service charge for each month when the balance at the end of the month is below $1,000 .... $25.00
(3) Service charge for each month when the balance at the end of the month is below $300 for restricted subscription deposit accounts used exclusively for subscription order of patent copies as issued ..................................................... $25.00
(c) [Reserved]
(d) [Reserved]
(e) International type search reports: For preparing an international type search report of an international type search made at the time of the first action on the merits in a national patent application: ................................................ $40.00.
(f) [Reserved]
(g) Self-service copy charge, per page: .. $0.25.
(h) For recording each assignment, agreement, or other paper relating to the property in a patent or application, per property:
(1) If submitted electronically, on or after January 1, 2014: .......................................... $0.00.
(2) If not submitted electronically: .. $40.00.
(i) Each application or patent: ............. $25.00.
(j) Labor charges for services, per hour or fraction thereof: ......................................... $40.00.
(k) For items and services that the Director finds may be supplied, for which fees are not specified by statute or by this part, such charges as may be determined by the Director with respect to each such item or service: ................................... Actual cost.
(l) [Reserved]
(m) For processing each payment refused (including a check returned “unpaid”) or charged back by a financial institution ................... $50.00
(n) For handling an application in which proceedings are terminated pursuant to § 1.53(e): .................................................................. $130.00.
(o) [Reserved]
[Added 47 FR 41274, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (b) and (l), 49 FR 553, Jan. 4, 1984, effective date Apr. 1, 1984; paras. (a)(5) and (6) added, 50 FR 5171, Feb. 6, 1985, effective date Apr. 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; paras. (a), (b)(1), (d)-(j), (l)-(m), 54 FR 6893, Feb. 15, 1989; 54 FR 8053, Feb. 24, 1989; 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; para. (n) added 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (o)-(q) added 54 FR 50942, Dec.11, 1989, effective Feb. 12, 1990; paras. (a)-(c), (e)-(h), (j)-(l) & (n) amended, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (p) and (q) deleted, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1), (a)(5), (a)(6), (b)(2), (b)(3), (e) and (i), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (p) added, 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (p) deleted, 59 FR 43736, Aug.25, 1994, effective Oct. 1, 1994; para. (l) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a)(1) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(1), (a)(3) and (a)(6) revised, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a)(1)(ii), (a)(6), and (j) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (l) & (n) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(6)(ii) revised, 63 FR 67578, Dec. 8, 1998, effective Dec. 8, 1998; para (m) revised, 65 FR 33452, May 24, 2000, effective July 24, 2000; para. (a)(6)
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revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; para. (o) removed and reserved, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; para. (k) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (l) removed and reserved, 70 FR 30360, May 26, 2005, effective July 1, 2005; para. (c) removed and reserved, 71 FR 64636, Nov. 3, 2006, effective Feb. 1, 2007; para. (a)(3) removed and reserved and paras. (a)(7), (a)(8) and (a)(9) added, 73 FR 67750, Nov. 17, 2008, effective Dec. 17, 2008; paras. (a), (e), (g)-(k) and (n) revised and para. (d) removed and reserved, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; paras. (a)(7) and (a)(8) removed and reserved, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 1.22 Fees payable in advance.
(a) Patent fees and charges payable to the United States Patent and Trademark Office are required to be paid in advance; that is, at the time of requesting any action by the Office for which a fee or charge is payable with the exception that under § 1.53 applications for patent may be assigned a filing date without payment of the basic filing fee.
(b) All fees paid to the United States Patent and Trademark Office must be itemized in each individual application, patent, or other proceeding in such a manner that it is clear for which purpose the fees are paid. The Office may return fees that are not itemized as required by this paragraph. The provisions of § 1.5(a) do not apply to the resubmission of fees returned pursuant to this paragraph.
[48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003]
§ 1.23 Methods of payment.
(a) All payments of money required for United States Patent and Trademark Office fees, including fees for the processing of international applications (§ 1.445), shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to
the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.
(b) Payments of money required for United States Patent and Trademark Office fees may also be made by credit card, except for replenishing a deposit account. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is subject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card information is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge.
(c) A fee transmittal letter may be signed by a juristic applicant or patent owner.
[43 FR 20462, May 11, 1978; revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; revised, 65 FR 33452, May 24, 2000, effective June 5, 2000; para. (b) revised, 69 FR 43751, July 22, 2004, effective Aug. 23, 2004; para. (c) added, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013 ]
§ 1.24 [Reserved]
[47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2708, Jan. 20, 1983, effective date Feb. 27, 1983; 50 FR 31825, Aug. 6, 1985, effective Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986; 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; removed and reserved, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]
§ 1.25 Deposit accounts.
(a) For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc., deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account (§ 1.21(b)(1)). A minimum deposit of $1,000 is required for paying
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any fee due or in ordering any services offered by the Office. However, a minimum deposit of $300 may be paid to establish a restricted subscription deposit account used exclusively for subscription order of patent copies as issued. At the end of each month, a deposit account statement will be rendered. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit value. An amount sufficient to cover all fees, services, copies, etc., requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§ 1.21(b)(2)) will be assessed for each month that the balance at the end of the month is below $1,000. For restricted subscription deposit accounts, a service charge (§ 1.21(b)(3)) will be assessed for each month that the balance at the end of the month is below $300.
(b) Filing, issue, appeal, international-type search report, international application processing, international design application fees, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees. A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 through 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with a particular paper filed. A general authorization to charge fees in an international design application set forth in § 1.1031 will only be effective for the transmittal fee (§ 1.1031(a)). An authorization to charge fees under § 1.16 in an international application entering the national stage under 35 U.S.C. 371 will be treated as an authorization to charge fees under § 1.492. An authorization to charge fees set forth in § 1.18 to a deposit account is subject to the provisions of § 1.311(b). An authorization to charge to a deposit account the fee for a request for reexamination pursuant to § 1.510 or 1.913 and any other fees required in a reexamination proceeding in a patent may also be filed with the request for reexamination, and an authorization to charge to a deposit account the fee for a request for supplemental examination pursuant to § 1.610 and any other fees required in a supplemental examination proceeding in a patent may also be filed with the request for supplemental examination. An authorization to charge a fee to a deposit account will not be considered payment of
the fee on the date the authorization to charge the fee is effective unless sufficient funds are present in the account to cover the fee.
(c) A deposit account holder may replenish the deposit account by submitting a payment to the United States Patent and Trademark Office. A payment to replenish a deposit account must be submitted by one of the methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of this section.
(1) A payment to replenish a deposit account may be submitted by electronic funds transfer through the Federal Reserve Fedwire System, which requires that the following information be provided to the deposit account holder’s bank or financial institution:
(i) Name of the Bank, which is Treas NYC (Treasury New York City);
(ii) Bank Routing Code, which is 021030004;
(iii) United States Patent and Trademark Office account number with the Department of the Treasury, which is 13100001; and
(iv) The deposit account holder’s company name and deposit account number.
(2) A payment to replenish a deposit account may be submitted by electronic funds transfer over the Office’s Internet Web site (www.uspto.gov).
(3) A payment to replenish a deposit account may be addressed to: Director of the United States Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
[49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; 47 FR 41274, Sept. 17, 1982, effective Oct. 1,1982; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para (b) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (b) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (c) added, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (c)(2) revised, 69 FR 43751, July 22, 2004, effective Aug. 23, 2004; para. (c)(4) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (c)(3) revised, para. (c)(4) removed, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (b) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (b) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
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§ 1.26 Refunds.
(a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
(b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph or in § 1.28(a). If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 1.25(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
(c) If the Director decides not to institute a reexamination proceeding in response to a request for reexamination or supplemental examination, fees paid with the request for reexamination or supplemental examination will be refunded or returned in accordance with paragraphs (c)(1) through (c)(3) of this section. The reexamination requester or the patent owner who requested a supplemental examination proceeding, as appropriate, should indicate the form in which any refund should be made ( e.g., by check, electronic funds transfer, credit to a deposit account). Generally, refunds will be issued in the form that the original payment was provided.
(1) For an ex parte reexamination request, the ex parte reexamination filing fee paid by the
reexamination requester, less the fee set forth in § 1.20(c)(7), will be refunded to the requester if the Director decides not to institute an ex parte reexamination proceeding.
(2) For an inter partes reexamination request, a refund of $7,970 will be made to the reexamination requester if the Director decides not to institute an inter partes reexamination proceeding.
(3) For a supplemental examination request, the fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2), will be returned to the patent owner who requested the supplemental examination proceeding if the Director decides not to institute a reexamination proceeding.
[47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR 31826 Aug. 6, 1985, effective Oct. 5, 1985; para. (c), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (c), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a) and (c), 57 FR 38190, Aug. 21, 1992, effective Oct. 1,1992; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised and para. (b) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (a) & (c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; paras. (a) and (b) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); paras. (a) and (b) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (c) revised, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.27 Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.
[Editor Note: Para. (c)(2) below include(s) changes applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) Definition of small entities. A small entity as used in this chapter means any party (person, small business concern, or nonprofit organization)
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under paragraphs (a)(1) through (a)(3) of this section.
(1) Person. A person, as used in paragraph (c) of this section, means any inventor or other individual ( e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.
(2) Small business concern. A small business concern, as used in paragraph (c) of this section, means any business concern that:
(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization; and
(ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416.
(3) Nonprofit Organization. A nonprofit organization, as used in paragraph (c) of this section, means any nonprofit organization that:
(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
(ii) Is either:
(A) A university or other institution of higher education located in any country;
(B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
(C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201(i)); or
(D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.
(4) License to a Federal agency.
(i) For persons under paragraph (a)(1) of this section, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status.
(ii) For small business concerns and nonprofit organizations under paragraphs (a)(2) and (a)(3) of this section, a license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a license for the purposes of paragraphs (a)(2)(i) and (a)(3)(i) of this section.
(5) Security Interest. A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.
(b) Establishment of small entity status permits payment of reduced fees.
(1) A small entity, as defined in paragraph (a) of this section, who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was asserted. Establishment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1).
(2) Submission of an original utility application in compliance with the Office electronic filing system by an applicant who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section in that application
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allows the payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3).
(c) Assertion of small entity status. Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
(1) Assertion by writing. Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
(i) Be clearly identifiable;
(ii) Be signed (see paragraph (c)(2) of this section); and
(iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
(2) Parties who can sign and file the written assertion. The written assertion can be signed by:
(i) The applicant (§ 1.42 or § 1.421);
(ii) A patent practitioner of record or a practitioner acting in a representative capacity under § 1.34;
(iii) The inventor or a joint inventor, if the inventor is the applicant; or
(iv) The assignee.
(3) Assertion by payment of the small entity basic filing, basic transmittal, basic national fee, international search fee, or individual designation fee in an international design application. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in § 1.16(a), (b), (c), (d), or (e), the small entity transmittal fee set forth in § 1.445(a)(1), the small entity international search fee set forth in §
1.445(a)(2) to a Receiving Office other than the United States Receiving Office in the exact amount established for that Receiving Office pursuant to PCT Rule 16, or the small entity basic national fee set forth in § 1.492(a), will be treated as a written assertion of entitlement to small entity status even if the type of basic filing, basic transmittal, or basic national fee is inadvertently selected in error. The payment, by any party, of the small entity first part of the individual designation fee for the United States to the International Bureau (§ 1.1031) will be treated as a written assertion of entitlement to small entity status.
(i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f), or § 1.16(g).
(ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.
(4) Assertion required in related, continuing, and reissue applications. Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.
(d) When small entity fees can be paid. Any fee, other than the small entity basic filing fees and the small entity national fees of paragraph (c)(3) of this section, can be paid in the small entity amount only if it is submitted with, or subsequent to, the submission of a written assertion of entitlement to
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small entity status, except when refunds are permitted by § 1.28(a).
(e) Only one assertion required.
(1) An assertion of small entity status need only be filed once in an application or patent. Small entity status, once established, remains in effect until changed pursuant to paragraph (g)(1) of this section. Where an assignment of rights or an obligation to assign rights to other parties who are small entities occurs subsequent to an assertion of small entity status, a second assertion is not required.
(2) Once small entity status is withdrawn pursuant to paragraph (g)(2) of this section, a new written assertion is required to again obtain small entity status.
(f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. The Office will generally not question any assertion of small entity status that is made in accordance with the requirements of this section, but note paragraph (h) of this section.
(g)(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
(2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not
sufficient notification that small entity status is no longer appropriate.
(h) Fraud attempted or practiced on the Office.
(1) Any attempt to fraudulently establish status as a small entity, or pay fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
(2) Improperly, and with intent to deceive, establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
[47 FR 40139, Sept. 10, 1982, added effective Oct. 1, 1982; para. (c) added, 47 FR 43276, Sept. 30, 1982; paras. (b), (c), and (d), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec.1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; paras. (b) and (c)(3) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (c)(2) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c)(3) introductory text revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; para. (c)(3) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[*The changes to para. (c)(2) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.27 (pre-AIA) for para. (c)(2) otherwise in effect.]
§ 1.27 (pre-AIA) Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.
[Editor Note: Para. (c)(2) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]
(a) Definition of small entities. A small entity as used in this chapter means any party (person, small business concern, or nonprofit organization) under paragraphs (a)(1) through (a)(3) of this section.
(1) Person. A person, as used in paragraph (c) of this section, means any inventor or other individual ( e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed,
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and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.
(2) Small business concern. A small business concern, as used in paragraph (c) of this section, means any business concern that:
(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization; and
(ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416.
(3) Nonprofit Organization. A nonprofit organization, as used in paragraph (c) of this section, means any nonprofit organization that:
(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
(ii) Is either:
(A) A university or other institution of higher education located in any country;
(B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
(C) Any nonprofit scientific or educational organization qualified under a nonprofit
organization statute of a state of this country (35 U.S.C. 201(i)); or
(D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.
(4) License to a Federal agency.
(i) For persons under paragraph (a)(1) of this section, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status.
(ii) For small business concerns and nonprofit organizations under paragraphs (a)(2) and (a)(3) of this section, a license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a license for the purposes of paragraphs (a)(2)(i) and (a)(3)(i) of this section.
(5) Security Interest. A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.
(b) Establishment of small entity status permits payment of reduced fees.
(1) A small entity, as defined in paragraph (a) of this section, who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was asserted. Establishment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1).
(2) Submission of an original utility application in compliance with the Office electronic filing system by an applicant who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section in that application allows the payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3).
(c) Assertion of small entity status. Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions
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PATENT RULES
set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
(1) Assertion by writing. Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
(i) Be clearly identifiable;
(ii) Be signed (see paragraph (c)(2) of this section); and
(iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
(2) Parties who can sign and file the written assertion. The written assertion can be signed by:
(i) One of the parties identified in § 1.33(b) (e.g., an attorney or agent registered with the Office), § 3.73(b) of this chapter notwithstanding, who can also file the written assertion;
(ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been submitted), notwithstanding § 1.33(b)(4), who can also file the written assertion pursuant to the exception under § 1.33(b) of this part; or
(iii) An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identified under § 1.33(b) of this part.
(3) Assertion by payment of the small entity basic filing or basic national fee. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in §§ 1.16(a), 1.16(b), 1.16(c), 1.16(d), 1.16(e), or the small entity basic national fee set forth in § 1.492(a), will be treated as a written assertion of entitlement to small
entity status even if the type of basic filing or basic national fee is inadvertently selected in error.
(i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f), or § 1.16(g).
(ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.
(4) Assertion required in related, continuing, and reissue applications. Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.
(d) When small entity fees can be paid. Any fee, other than the small entity basic filing fees and the small entity national fees of paragraph (c)(3) of this section, can be paid in the small entity amount only if it is submitted with, or subsequent to, the submission of a written assertion of entitlement to small entity status, except when refunds are permitted by § 1.28(a).
(e) Only one assertion required.
(1) An assertion of small entity status need only be filed once in an application or patent. Small entity status, once established, remains in effect until changed pursuant to paragraph (g)(1) of this section. Where an assignment of rights or an obligation to assign rights to other parties who are small entities occurs subsequent to an assertion of small entity status, a second assertion is not required.
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(2) Once small entity status is withdrawn pursuant to paragraph (g)(2) of this section, a new written assertion is required to again obtain small entity status.
(f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. The Office will generally not question any assertion of small entity status that is made in accordance with the requirements of this section, but note paragraph (h) of this section.
(g)(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
(2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.
(h) Fraud attempted or practiced on the Office.
(1) Any attempt to fraudulently establish status as a small entity, or pay fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
(2) Improperly, and with intent to deceive, establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
[47 FR 40139, Sept. 10, 1982, added effective Oct. 1, 1982; para. (c) added, 47 FR 43276, Sept. 30, 1982; paras. (b), (c), and (d), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec.1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; paras. (b) and (c)(3) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004]
[*See § 1.27 for more information and for para. (c)(2) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.28 Refunds when small entity status is later established; how errors in small entity status are excused.
(a) Refunds based on later establishment of small entity status. A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136. Status as a small entity is waived for any fee by the failure to establish the status prior to paying, at the time of paying, or within three months of the date of payment of, the full fee.
(b) Date of payment.
(1) The three-month period for requesting a refund, pursuant to paragraph (a) of this section, starts on the date that a full fee has been paid;
(2) The date when a deficiency payment is paid in full determines the amount of deficiency that is due, pursuant to paragraph (c) of this section.
(c) How errors in small entity status are excused. If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and
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the deficiency payment requirement of paragraph (c)(2) of this section:
(1) Separate submission required for each application or patent. Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error), required by paragraph (c)(2) of this section, for one application or one patent. Where more than one application or patent is involved, separate submissions of deficiency payments (e.g., checks) and itemizations are required for each application or patent. See § 1.4(b).
(2) Payment of deficiency owed. The deficiency owed, resulting from the previous erroneous payment of small entity fees, must be paid.
(i) Calculation of the deficiency owed. The deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current fee amount (for other than a small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously erroneously paid as a small entity. Where a fee paid in error as a small entity was subject to a fee decrease between the time the fee was paid in error and the time the deficiency is paid in full, the deficiency owed is equal to the amount (previously) paid in error;
(ii) Itemization of the deficiency payment. An itemization of the total deficiency payment is required. The itemization must include the following information:
(A) Each particular type of fee that was erroneously paid as a small entity, ( e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a non-small entity;
(B) The small entity fee actually paid, and when. This will permit the Office to differentiate, for example, between two one-month extension of time fees erroneously paid as a small entity but on different dates;
(C) The deficiency owed amount (for each fee erroneously paid); and
(D) The total deficiency payment owed, which is the sum or total of the individual
deficiency owed amounts set forth in paragraph (c)(2)(ii)(C) of this section.
(3) Failure to comply with requirements. If the requirements of paragraphs (c)(1) and (c)(2) of this section are not complied with, such failure will either: be treated as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month non-extendable time period under § 1.136(a) to avoid the return of the fee deficiency paper, at the option of the Office.
(d) Payment of deficiency operates as notification of loss of status. Any deficiency payment (based on a previous erroneous payment of a small entity fee) submitted under paragraph (c) of this section will be treated under § 1.27(g)(2) as a notification of a loss of entitlement to small entity status.
[47 FR 40140, Sept. 10, 1982, added effective Oct. 1, 1982; para. (a), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; para. (d)(2), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (c) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a) & (c) revised, 62 FR 53131, Oct. 10 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§ 1.29 Micro entity status.
(a) To establish micro entity status under this paragraph, the applicant must certify that:
(1) The applicant qualifies as a small entity as defined in § 1.27;
(2) Neither the applicant nor the inventor nor a joint inventor has been named as the inventor or a joint inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid;
(3) Neither the applicant nor the inventor nor a joint inventor, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median household
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income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
(4) Neither the applicant nor the inventor nor a joint inventor has assigned, granted, or conveyed, nor is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
(b) An applicant, inventor, or joint inventor is not considered to be named on a previously filed application for purposes of paragraph (a)(2) of this section if the applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant's, inventor's, or joint inventor's previous employment.
(c) If an applicant’s, inventor's, joint inventor's, or entity's gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant's, inventor's, joint inventor's, or entity's gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.
(d) To establish micro entity status under this paragraph, the applicant must certify that:
(1) The applicant qualifies as a small entity as defined in § 1.27; and
(2)(i) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
(ii) The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.
(e) Micro entity status is established in an application by filing a micro entity certification in writing complying with the requirements of either
paragraph (a) or (d) of this section and signed either in compliance with § 1.33(b), in an international application filed in a Receiving Office other than the United States Receiving Office by a person authorized to represent the applicant under § 1.455, or in an international design application by a person authorized to represent the applicant under § 1.1041 before the International Bureau where the micro entity certification is filed with the International Bureau. Status as a micro entity must be specifically established in each related, continuing and reissue application in which status is appropriate and desired. Status as a micro entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new certification of entitlement to micro entity status for the continuing or reissue application.
(f) A fee may be paid in the micro entity amount only if it is submitted with, or subsequent to, the submission of a certification of entitlement to micro entity status.
(g) A certification of entitlement to micro entity status need only be filed once in an application or patent. Micro entity status, once established, remains in effect until changed pursuant to paragraph (i) of this section. However, a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid. Where an assignment of rights or an obligation to assign rights to other parties who are micro entities occurs subsequent to the filing of a certification of entitlement to micro entity status, a second certification of entitlement to micro entity status is not required.
(h) Prior to submitting a certification of entitlement to micro entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of this section. It should be determined that each applicant qualifies for micro entity status under paragraph (a) or (d) of this section, and that any other party holding rights in the invention qualifies for small entity status under § 1.27. The Office will generally
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not question certification of entitlement to micro entity status that is made in accordance with the requirements of this section.
(i) Notification of a loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity as defined in paragraph (a) or (d) of this section is no longer appropriate. The notification that micro entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate. A notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also contains a notification of loss of entitlement to small entity status under § 1.27(f)(2)[1.27(g)(2)]. Once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status.
(j) Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.
(k) If status as a micro entity is established in good faith in an application or patent, and fees as a micro entity are paid in good faith in the application or patent, and it is later discovered that such micro entity status either was established in error, or that the Office was not notified of a loss of entitlement to micro entity status as required by paragraph (i) of this section through error, the error will be excused upon compliance with the separate submission and itemization requirements of paragraph (k)(1) of this section and the deficiency payment requirement of paragraph (k)(2) of this section.
(1) Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. Where more than one application or patent is involved, separate submissions of deficiency payments are required
for each application or patent (see § 1.4(b)). The paper must contain an itemization of the total deficiency payment for the single application or patent and include the following information:
(i) Each particular type of fee that was erroneously paid as a micro entity, ( e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity, as applicable;
(ii) The micro entity fee actually paid, and the date on which it was paid;
(iii) The deficiency owed amount (for each fee erroneously paid); and
(iv) The total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts as set forth in paragraph (k)(2) of this section.
(2) The deficiency owed, resulting from the previous erroneous payment of micro entity fees, must be paid. The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously and erroneously paid as a micro entity.
(3) If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.
(4) Any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under this paragraph will be treated as a notification of a loss of entitlement to micro entity status under paragraph (i) of this section.
[Added, 77 FR 75019, Dec. 19, 2012, effective Mar. 19, 2013; paras. (e) and (k)(4) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (e) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.29
Subpart B — National Processing Provisions
PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR AGENT
§ 1.31 Applicant may be represented by one or more patent practitioners or joint inventors.
An applicant for patent may file and prosecute the applicant's own case, or the applicant may give power of attorney so as to be represented by one or more patent practitioners or joint inventors, except that a juristic entity ( e.g., organizational assignee) must be represented by a patent practitioner even if the juristic entity is the applicant. The Office cannot aid in the selection of a patent practitioner.
[50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised 69 FR 35427, June 24, 2004, effective July 26, 2004; revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.32 Power of attorney.
[Editor Note: Certain* paragraphs below include changes applicable only to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012]
(a) Definitions.
(1) Patent practitioner means a registered patent attorney or registered patent agent under § 11.6.
(2) Power of attorney means a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on the principal's behalf.
(3) Principal means the applicant (§ 1.42) for an application for patent and the patent owner for a patent, including a patent in a supplemental examination or reexamination proceeding. The principal executes a power of attorney designating one or more patent practitioners or joint inventors to act on the principal's behalf.
(4) Revocation means the cancellation by the principal of the authority previously given to a
patent practitioner or joint inventor to act on the principal's behalf.
(5) Customer Number means a number that may be used to:
(i) Designate the correspondence address of a patent application or patent such that the correspondence address for the patent application, patent or other patent proceeding would be the address associated with the Customer Number;
(ii) Designate the fee address (§ 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number; and
(iii) Submit a list of patent practitioners such that those patent practitioners associated with the Customer Number would have power of attorney.
(6) Patent practitioner of record means a patent practitioner who has been granted a power of attorney in an application, patent, or other proceeding in compliance with paragraph (b) of this section. The phrases practitioner of record and attorney or agent of record also mean a patent practitioner who has been granted a power of attorney in an application, patent, or other proceeding in compliance with paragraph (b) of this section.
(b) A power of attorney must:
(1) Be in writing;
(2) Name one or more representatives in compliance with paragraph (c) of this section;
(3) Give the representative power to act on behalf of the principal; and
(4) Be signed by the applicant for patent (§ 1.42) or the patent owner. A patent owner who was not the applicant under § 1.46 must appoint any power of attorney in compliance with §§ 3.71 and 3.73 of this chapter.
(c) A power of attorney may only name as representative:
(1) One or more joint inventors (§ 1.45 );
(2) Those registered patent practitioners associated with a Customer Number;
(3) Ten or fewer patent practitioners, stating the name and registration number of each patent practitioner. Except as provided in paragraph (c)(1)
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or (c)(2) of this section, the Office will not recognize more than ten patent practitioners as being of record in an application or patent. If a power of attorney names more than ten patent practitioners, such power of attorney must be accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record in the application or patent to which the power of attorney is directed.
(d) A power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless:
(1) The power of attorney was granted by the inventor; and
(2) The continuing application names an inventor who was not named as an inventor in the prior application.
(e) If the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request. This provision does not preclude a practitioner from acting pursuant to § 1.34, if applicable.
[Added, 69 FR 29865, May 26, 2004, effective June 25, 2004; paras. (a) and (c)(3) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (d) introductory text revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[* Paras. (a)(2), (a)(3), (a)(4), (a)(6), (b), (d) and (e) above include provisions applicable only to patent applications filed on or after Sept. 16, 2012. See § 1.32 (pre-AIA) for the rule applicable to applications filed prior to Sept. 16, 2012.]
§ 1.32 (pre-AIA) Power of attorney.
[Editor Note: Certain* paragraphs below are not applicable to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after Sept. 16, 2012]
(a) Definitions.
(1) Patent practitioner means a registered patent attorney or registered patent agent under § 11.6.
(2) Power of attorney means a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on his or her behalf.
(3) Principal means either an applicant for patent (§ 1.41(b)) or an assignee of entire interest of the applicant for patent or in a reexamination proceeding, the assignee of the entirety of ownership of a patent. The principal executes a power of attorney designating one or more patent practitioners or joint inventors to act on his or her behalf.
(4) Revocation means the cancellation by the principal of the authority previously given to a patent practitioner or joint inventor to act on his or her behalf.
(5) Customer Number means a number that may be used to:
(i) Designate the correspondence address of a patent application or patent such that the correspondence address for the patent application, patent or other patent proceeding would be the address associated with the Customer Number;
(ii) Designate the fee address (§ 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number; and
(iii) Submit a list of patent practitioners such that those patent practitioners associated with the Customer Number would have power of attorney.
(b) A power of attorney must:
(1) Be in writing;
(2) Name one or more representatives in compliance with paragraph (c) of this section;
(3) Give the representative power to act on behalf of the principal; and
(4) Be signed by the applicant for patent (§ 1.41(b)) or the assignee of the entire interest of the applicant.
(c) A power of attorney may only name as representative:
(1) One or more joint inventors (§ 1.45);
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(2) Those registered patent practitioners associated with a Customer Number;
(3) Ten or fewer patent practitioners, stating the name and registration number of each patent practitioner. Except as provided in paragraph (c)(1) or (c)(2) of this section, the Office will not recognize more than ten patent practitioners as being of record in an application or patent. If a power of attorney names more than ten patent practitioners, such power of attorney must be accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record in the application or patent to which the power of attorney is directed.
[Added, 69 FR 29865, May 26, 2004, effective June 25, 2004; paras. (a) and (c)(3) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]
[*See § 1.32 for more information and for the rule applicable to patent applications filed on or after Sept. 16, 2012]
§ 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
[Editor Note: * Certain paragraphs below are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]
(a) Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(b)(2)) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office's electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address
is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed by the parties set forth in paragraph (b)(1) or (b)(3) of this section. Prior to the appointment of any power of attorney under § 1.32(b), the correspondence address may also be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of § 1.34.
(b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by:
(1) A patent practitioner of record;
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34; or
(3) The applicant (§ 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
(c) All notices, official letters, and other communications for the patent owner or owners in a reexamination or supplemental examination proceeding will be directed to the correspondence address in the patent file. Amendments filed in a reexamination proceeding, and other papers filed in a reexamination or supplemental examination proceeding, on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34. Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken.
(d) A “correspondence address” or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. The “correspondence address” will be used in any
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correspondence relating to maintenance fees unless a separate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee purposes.
(e) A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.
(f) Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
(g) A patent practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner.
[36 FR 12617, July 2, 1971; 46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (c), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; paras. (a) & (b) revised, 62 FR 53131, Oct. 10 1997, effective Dec. 1, 1997; paras. (a) and (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; (a) introductory text, (b) introductory text, and paras. (b)(1), (b)(2) and (c) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (c) revised, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (a) introductory text revised, paras. (a)(1), (b)(1), and (b)(2) revised, and para. (e) added, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (a) introductory text revised, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; para. (c) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; paras. (a) and (b) revised and paras. (f) and (g) added, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
[*The revisions to paras. (a) and (b) and new paragraphs (f) and (g) effective Sept. 16, 2012 are applicable only to patent applications filed under 35
U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.33 (pre-AIA) for the rule otherwise in effect.]
§ 1.33 (pre-AIA) Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
[Editor Note: The paragraphs below are applicable only to patent applications filed under 35 U.S.C. 111 (pre-AIA) or 363 (pre-AIA) before Sept. 16, 2012]
(a) Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76 ), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(c)(2)) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office’s electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed as follows:
(1) Prior to filing of § 1.63 oath or declaration by any of the inventors. If a § 1.63 oath or declaration has not been filed by any of the inventors, the correspondence address may be changed by the party who filed the application. If the application was filed by a patent practitioner, any other patent practitioner named in the transmittal papers may also change the correspondence address. Thus, the inventor(s), any patent practitioner named
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.33 (pre-AIA)
in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address in that application under this paragraph.
(2) Where a § 1.63 oath or declaration has been filed by any of the inventors. If a § 1.63 oath or declaration has been filed, or is filed concurrent with the filing of an application, by any of the inventors, the correspondence address may be changed by the parties set forth in paragraph (b) of this section, except for paragraph (b)(2).
(b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application must be signed by:
(1) A patent practitioner of record appointed in compliance with § 1.32(b);
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34;
(3) An assignee as provided for under § 3.71(b) of this chapter; or
(4) All of the applicants (§ 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.
*****
[*See § 1.33 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.34 Acting in a representative capacity.
When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts. In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.
[46 FR 29181, May 29, 1981; para. (a), 50 FR 5171, Feb. 6, 1985, effective Mar. 6, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]
§ 1.36 Revocation of power of attorney; withdrawal of patent attorney or agent.
[Editor Note: Para. (a) below includes changes applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) A power of attorney, pursuant to § 1.32(b), may be revoked at any stage in the proceedings of a case by the applicant or patent owner. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given. Fewer than all of the applicants (or fewer than all patent owners in a supplemental examination or reexamination proceeding) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f). A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2)), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33 ) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee may become the applicant under § 1.46(c) and revoke any previous power of attorney and grant a power of attorney as provided in § 1.32(b).
(b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners associated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given
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§ 1.36PATENT RULES
power of attorney to the patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Patent Trial and Appeal Board.
[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
[*The changes to para. (a) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.36 (pre-AIA) for the rule otherwise in effect.]
§ 1.36 (pre-AIA) Revocation of power of attorney; withdrawal of patent attorney or agent.
[Editor Note: Para. (a) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) A power of attorney, pursuant to § 1.32(b), may be revoked at any stage in the proceedings of a case by an applicant for patent (§ 1.41(b)) or an assignee of the entire interest of the applicant, or the owner of the entire interest of a patent. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given. Fewer than all of the applicants (or fewer than all of the assignees of the entire interest of the applicant or, in a reexamination proceeding, fewer than all the owners of the entire interest of a patent) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f). A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2)), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed
to the correspondence address for the application (§ 1.33) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee of the entire interest of the applicant may revoke previous powers of attorney and give another power of attorney of the assignee’s own selection as provided in § 1.32(b).
(b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners associated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given power of attorney to the patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Patent Trial and Appeal Board.
[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
[*See § 1.36 for more information and for para. (a) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
WHO MAY APPLY FOR A PATENT
§ 1.41 Inventorship.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) An application must include, or be amended to include, the name of the inventor for any invention claimed in the application.
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(b) The inventorship of a nonprovisional application under 35 U.S.C. 111(a) is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed before or concurrently with the inventor's oath or declaration. If an application data sheet is not filed before or concurrently with the inventor's oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor's oath or declaration, except as provided for in §§ 1.53(d)(4) and 1.63(d). Once an application data sheet or the inventor's oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to § 1.48. If neither an application data sheet nor the inventor's oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(b), unless the applicant files a paper, including the processing fee set forth in § 1.17(i), supplying the name or names of the inventor or joint inventors.
(c) The inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by § 1.51(c)(1). Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any correction of inventorship must be pursuant to § 1.48. If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying the name or names of the inventor or joint inventors..
(d) In a nonprovisional application under 35 U.S.C. 111(a) filed without an application data sheet or the inventor’s oath or declaration, or in a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name and residence of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
(e) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371. Unless the initial submission under 35 U.S.C. 371 is accompanied by an application data sheet in accordance with § 1.76 setting forth the
inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92 bis .
(f) The inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). Any correction of inventorship must be pursuant to § 1.48.
[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(4) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (f) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.41 (pre-AIA) for the rule otherwise in effect.]
§ 1.41 (pre-AIA) Applicant for patent.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) A patent is applied for in the name or names of the actual inventor or inventors.
(1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63, except as provided for in §§ 1.53(d)(4) and 1.63(d). If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b), unless applicant files a paper, including the processing fee set forth in § 1.17(i), supplying or changing the name or names of the inventor or inventors.
(2) The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1). If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee
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PATENT RULES
set forth in § 1.17(q), supplying or changing the name or names of the inventor or inventors.
(3) In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63 or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name, residence, and citizenship of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
(4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92 bis . See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92 bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv) (§ 1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371).
(b) Unless the contrary is indicated the word “applicant” when used in these sections refers to the inventor or joint inventors who are applying for a patent, or to the person mentioned in §§ 1.42, 1.43 or 1.47 who is applying for a patent in place of the inventor.
(c) Any person authorized by the applicant may physically or electronically deliver an application for patent to the Office on behalf of the inventor or inventors, but an oath or declaration for the application (§ 1.63) can only be made in accordance with § 1.64.
(d) A showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.
[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(4) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002]
[*See § 1.41 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.42 Applicant for patent.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.
(b) If a person is applying for a patent as provided in § 1.46, the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and not the inventor.
(c) If fewer than all joint inventors are applying for a patent as provided in § 1.45, the phrase "the applicant" means the joint inventors who are applying for the patent without the omitted inventor(s).
(d) Any person having authority may deliver an application and fees to the Office on behalf of the applicant. However, an oath or declaration, or substitute statement in lieu of an oath or declaration, may be executed only in accordance with § 1.63 or 1.64, a correspondence address may be provided only in accordance with § 1.33(a), and amendments and other papers must be signed in accordance with § 1.33(b).
(e) The Office may require additional information where there is a question concerning ownership or interest in an application, and a showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.42 (pre-AIA) for the rule otherwise in effect.]
§ 1.42 (pre-AIA) When the inventor is dead.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
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In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]
[*See §1.42 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.43 Application for patent by a legal representative of a deceased or legally incapacitated inventor.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.43 (pre-AIA)> for the rule otherwise in effect.]
§ 1.43 (pre-AIA) When the inventor is insane or legally incapacitated.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the
necessary oath or declaration, and apply for and obtain the patent.
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]
[*See § 1.43 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.44 [Reserved]
[Removed and reserved, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000]
§ 1.45 Application for patent by joint inventors.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) Joint inventors must apply for a patent jointly, and each must make an inventor's oath or declaration as required by § 1.63, except as provided for in § 1.64. If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See § 1.64 concerning the execution of a substitute statement by the other joint inventor or inventors in lieu of an oath or declaration.
(b) Inventors may apply for a patent jointly even though:
(1) They did not physically work together or at the same time;
(2) Each inventor did not make the same type or amount of contribution; or
(3) Each inventor did not make a contribution to the subject matter of every claim of the application.
(c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject
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matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.
[paras. (b) and (c), 47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; para. (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.45 (pre-AIA) for the rule otherwise in effect.]
§ 1.45 (pre-AIA) Joint inventors.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) Joint inventors must apply for a patent jointly and each must make the required oath or declaration: neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47.
(b) Inventors may apply for a patent jointly even though
(1) They did not physically work together or at the same time,
(2) Each inventor did not make the same type or amount of contribution, or
(3) Each inventor did not make a contribution to the subject matter of every claim of the application.
(c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.
[paras. (b) and (c), 47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 50 FR 9379, Mar. 7, 1985,
effective May 8, 1985; para. (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]
[*See § 1.45 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.46 Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012*]
(a) A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
(b) If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. If an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under paragraph (a) of this section, the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).
(1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership ( e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter
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no later than the date the issue fee is paid in the application.
(2) If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including:
(i) The fee set forth in § 1.17(g);
(ii) A showing that such person has sufficient proprietary interest in the matter; and
(iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
(c) Any request to correct or update the name of the applicant after an applicant has been specified under paragraph (b) of this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7)). Any request to change the applicant after an original applicant has been specified under paragraph (b) of this section must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7)) and comply with §§ 3.71 and 3.73 of this title.
(1) Correction or update in the name of the applicant. Any request to correct or update the name of the applicant under this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7)) in accordance with § 1.76(c)(2). A change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application.
(2) Change in the applicant. Any request to change the applicant under this section after an original applicant has been specified must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7)) in accordance with § 1.76(c)(2) and comply with §§ 3.71 and 3.73 of this title.
(d) Even if the whole or a part interest in the invention or in the patent to be issued is assigned or obligated to be assigned, an oath or declaration must be executed by the actual inventor or each actual joint inventor, except as provided for in §
1.64. See § 1.64 concerning the execution of a substitute statement by an assignee, person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter.
(e) If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81. Where a real party in interest has filed an application under § 1.46, the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest.
(f) The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette.
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 57 FR 29642, July 6, 1992, effective Sept. 4, 1992; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (b) introductory text and para. (c) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[*The changes effective Sept. 16, 2012 and May 13, 2015 are applicable only to patent applications filed on or after Sept. 16, 2012. See § 1.46 (pre-AIA) for the rule otherwise in effect.]
§ 1.46 (pre-AIA) Assigned inventions and patents.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012*]
In case the whole or a part interest in the invention or in the patent to be issued is assigned, the application must still be made or authorized to be made, and an oath or declaration signed, by the inventor or one of the persons mentioned in §§ 1.42, 1.43, or 1.47. However, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81.
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]
[*See § 1.46 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
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PATENT RULES
§ 1.47 [Removed and Reserved]
[Removed and reserved with respect to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012. For § 1.47 otherwise in effect, see § 1.47 (pre-AIA)]
§ 1.47 (pre-AIA) Filing when an inventor refuses to sign or cannot be reached.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts, the fee set forth in § 1.17(g), and the last known address of the nonsigning inventor. The nonsigning inventor may subsequently join in the application by filing an oath or declaration complying with § 1.63.
(b) Whenever all of the inventors refuse to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom an inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for all the inventors. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts, a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage, the fee set forth in § 1.17(g), and the last known address of all of the inventors. An inventor may subsequently join in the application by filing an oath or declaration complying with § 1.63.
(c) The Office will send notice of the filing of the application to all inventors who have not joined in the application at the address(es) provided in the petition under this section, and publish notice of the filing of the application in the Official Gazette. The Office may dispense with this notice provision in a continuation or divisional application, if notice
regarding the filing of the prior application was given to the nonsigning inventor(s).
[47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a) and (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
[*Removed and reserved with respect to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012.]
§ 1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application.
(a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41 must include:
(1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name; and
(2) The processing fee set forth in § 1.17(i) .
(b) Inventor's oath or declaration for added inventor: An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.
(c) Any request to correct or change the inventorship under paragraph (a) of this section filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in § 1.17(d), unless the request is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.
(d) Provisional application. Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any request to correct or change the inventorship must include:
(1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and
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(2) The processing fee set forth in § 1.17(q) .
(e) Additional information may be required. The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.
(f) Correcting or updating the name of an inventor: Any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include:
(1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name in the desired order; and
(2) The processing fee set forth in § 1.17(i).
(g) Reissue applications not covered. The provisions of this section do not apply to reissue applications. See §§ 1.171 and 1.175 for correction of inventorship in a patent via a reissue application.
(h) Correction of inventorship in patent. See § 1.324 for correction of inventorship in a patent.
(i) Correction of inventorship in an interference or contested case before the Patent Trial and Appeal Board. In an interference under part 41, subpart D, of this title, a request for correction of inventorship in an application must be in the form of a motion under § 41.121(a)(2) of this title. In a contested case under part 42, subpart D, of this title, a request for correction of inventorship in an application must be in the form of a motion under § 42.22 of this title. The motion under § 41.121(a)(2) or 42.22 of this title must comply with the requirements of paragraph (a) of this section.
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; para. (a), 57 FR 56446, Nov. 30, 1992, effective Jan. 4, 1993; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (f)(1) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; paras. (a)-(c) and (i) revised and para. (j) added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c) revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013]
THE APPLICATION
§ 1.51 General requisites of an application.
(a) Applications for patents must be made to the Director of the United States Patent and Trademark Office. An application transmittal letter limited to the transmittal of the documents and fees comprising a patent application under this section may be signed by a juristic applicant or patent owner.
(b) A complete application filed under § 1.53(b) or § 1.53(d) comprises:
(1) A specification as prescribed by 35 U.S.C. 112, including a claim or claims, see §§ 1.71 to 1.77;
(2) The inventor's oath or declaration, see §§ 1.63 and 1.64 ;
(3) Drawings, when necessary, see §§ 1.81 to 1.85; and
(4) The prescribed filing fee, search fee, examination fee, and application size fee, see § 1.16.
(c) A complete provisional application filed under § 1.53(c) comprises:
(1) A cover sheet identifying:
(i) The application as a provisional application,
(ii) The name or names of the inventor or inventors, (see § 1.41(a)(2)),
(iii) The residence of each named inventor,
(iv) The title of the invention,
(v) The name and registration number of the attorney or agent (if applicable),
(vi) The docket number used by the person filing the application to identify the application (if applicable),
(vii) The correspondence address, and
(viii) The name of the U.S. Government agency and Government contract number (if the invention was made by an agency of the U.S. Government or under a contract with an agency of the U.S. Government);
(2) A specification as prescribed by 35 U.S.C. 112(a), see § 1.71;
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(3) Drawings, when necessary, see §§ 1.81 to 1.85; and
(4) The prescribed filing fee and application size fee, see § 1.16.
(d) Applicants are encouraged to file an information disclosure statement in nonprovisional applications. See § 1.97 and § 1.98. No information disclosure statement may be filed in a provisional application.
[42 FR 5593, Jan. 28, 1977; paras. (a) and (c), 47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (b), 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; para. (b), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras. (a) & (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (b)(4) and (c)(4) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (c)(2) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (b)(2) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.52 Language, paper, writing, margins, compact disc specifications.
(a) Papers that are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application, or a reexamination or supplemental examination proceeding.
(1) All papers, other than drawings, that are submitted on paper or by facsimile transmission, and are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination or supplemental examination proceeding, must be on sheets of paper that are the same size, not permanently bound together, and:
(i) Flexible, strong, smooth, non-shiny, durable, and white;
(ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8 1/2 by 11 inches), with each sheet including a top margin of at least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch), and a bottom margin of at least 2.0 cm (3/4 inch);
(iii) Written on only one side in portrait orientation;
(iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent; and
(v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition.
(2) All papers that are submitted on paper or by facsimile transmission and are to become a part of the permanent records of the United States Patent and Trademark Office should have no holes in the sheets as submitted.
(3) The provisions of this paragraph and paragraph (b) of this section do not apply to the pre-printed information on paper forms provided by the Office, or to the copy of the patent submitted on paper in double column format as the specification in a reissue application or request for reexamination.
(4) See § 1.58 for chemical and mathematical formulae and tables, and § 1.84 for drawings.
(5) Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office’s electronic filing system requirements.
(b) The application (specification, including the claims, drawings, and the inventor's oath or declaration) or reexamination or supplemental examination proceeding, any amendments to the application or reexamination proceeding, or any corrections to the application, or reexamination or supplemental examination proceeding.
(1) The application or proceeding and any amendments or corrections to the application (including any translation submitted pursuant to paragraph (d) of this section) or proceeding, except as provided for in § 1.69 and paragraph (d) of this section, must:
(i) Comply with the requirements of paragraph (a) of this section; and
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(ii) Be in the English language or be accompanied by a translation of the application and a translation of any corrections or amendments into the English language together with a statement that the translation is accurate.
(2) The specification (including the abstract and claims) for other than reissue applications and reexamination or supplemental examination proceedings, and any amendments for applications (including reissue applications) and reexamination proceedings to the specification, except as provided for in §§ 1.821 through 1.825, must have:
(i) Lines that are 1 1/2 or double spaced;
(ii) Text written in a nonscript type font ( e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high ( e.g., a font size of 6); and
(iii) Only a single column of text.
(3) The claim or claims must commence on a separate physical sheet or electronic page (§ 1.75(h)).
(4) The abstract must commence on a separate physical sheet or electronic page or be submitted as the first page of the patent in a reissue application or reexamination or supplemental examination proceeding (§ 1.72(b)).
(5) Other than in a reissue application or a reexamination or supplemental examination proceeding, the pages of the specification including claims and abstract must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably, below, the text.
(6) Other than in a reissue application or reexamination or supplemental examination proceeding, the paragraphs of the specification, other than in the claims or abstract, may be numbered at the time the application is filed, and should be individually and consecutively numbered using Arabic numerals, so as to unambiguously identify each paragraph. The number should consist of at least four numerals enclosed in square brackets, including leading zeros ( e.g., [0001]). The numbers and enclosing brackets should appear to the right of the left margin as the first item in each paragraph, before the first word of the paragraph, and should be highlighted in bold. A gap, equivalent to
approximately four spaces, should follow the number. Nontext elements ( e.g., tables, mathematical or chemical formulae, chemical structures, and sequence data) are considered part of the numbered paragraph around or above the elements, and should not be independently numbered. If a nontext element extends to the left margin, it should not be numbered as a separate and independent paragraph. A list is also treated as part of the paragraph around or above the list, and should not be independently numbered. Paragraph or section headers (titles), whether abutting the left margin or centered on the page, are not considered paragraphs and should not be numbered.
(c) Interlineation, erasure, cancellation, or other alteration of the application papers may be made before or after the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers. A substitute specification (§ 1.125) may be required if the application papers do not comply with paragraphs (a) and (b) of this section.
(d) A nonprovisional or provisional application under 35 U.S.C. 111 may be in a language other than English.
(1) Nonprovisional application. If a nonprovisional application under 35 U.S.C. 111(a) is filed in a language other than English, an English language translation of the non-English language application, a statement that the translation is accurate, and the processing fee set forth in § 1.17(i) are required. If these items are not filed with the application, applicant will be notified and given a period of time within which they must be filed in order to avoid abandonment.
(2) Provisional application. If a provisional application under 35 U.S.C. 111(b) is filed in a language other than English, an English language translation of the non-English language provisional application will not be required in the provisional application. See § 1.78(a) for the requirements for claiming the benefit of such provisional application in a nonprovisional application.
(e) Electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent
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application, or reexamination or supplemental examination proceeding.
(1) The following documents may be submitted to the Office on a compact disc in compliance with this paragraph:
(i) A computer program listing (see § 1.96);
(ii) A “Sequence Listing” (submitted under § 1.821(c)); or
(iii) Any individual table (see § 1.58) if the table is more than 50 pages in length, or if the total number of pages of all the tables in an application exceeds 100 pages in length, where a table page is a page printed on paper in conformance with paragraph (b) of this section and § 1.58(c).
(2) A compact disc as used in this part means a Compact Disc-Read Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance with this paragraph. A CD-ROM is a “read-only” medium on which the data is pressed into the disc so that it cannot be changed or erased. A CD-R is a “write once” medium on which once the data is recorded, it is permanent and cannot be changed or erased.
(3)(i) Each compact disc must conform to the International Organization for Standardization (ISO) 9660 standard, and the contents of each compact disc must be in compliance with the American Standard Code for Information Interchange (ASCII).
(ii) Each compact disc must be enclosed in a hard compact disc case within an unsealed padded and protective mailing envelope and accompanied by a transmittal letter on paper in accordance with paragraph (a) of this section. The transmittal letter must list for each compact disc the machine format ( e.g., IBM-PC, Macintosh), the operating system compatibility ( e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret ( e.g., tables in landscape orientation should be identified as landscape orientation or be identified when inquired about) the information on the compact disc. Compact discs submitted to the Office will not be returned to the applicant.
(4) Any compact disc must be submitted in duplicate unless it contains only the “Sequence Listing” in computer readable form required by § 1.821(e). The compact disc and duplicate copy must be labeled “Copy 1” and “Copy 2,” respectively. The transmittal letter which accompanies the compact disc must include a statement that the two compact discs are identical. In the event that the two compact discs are not identical, the Office will use the compact disc labeled “Copy 1” for further processing. Any amendment to the information on a compact disc must be by way of a replacement compact disc in compliance with this paragraph containing the substitute information, and must be accompanied by a statement that the replacement compact disc contains no new matter. The compact disc and copy must be labeled “COPY 1 REPLACEMENT MM/DD/YYYY” (with the month, day and year of creation indicated), and “COPY 2 REPLACEMENT MM/DD/YYYY,” respectively.
(5) The specification must contain an incorporation-by-reference of the material on the compact disc in a separate paragraph (§ 1.77(b)(5)), identifying each compact disc by the names of the files contained on each of the compact discs, their date of creation and their sizes in bytes. The Office may require applicant to amend the specification to include in the paper portion any part of the specification previously submitted on compact disc.
(6) A compact disc must also be labeled with the following information:
(i) The name of each inventor (if known);
(ii) Title of the invention;
(iii) The docket number, or application number if known, used by the person filing the application to identify the application;
(iv) A creation date of the compact disc.
(v) If multiple compact discs are submitted, the label shall indicate their order ( e.g. “1 of X”); and
(vi) An indication that the disc is “Copy 1” or “Copy 2” of the submission. See paragraph (b)(4) of this section.
(7) If a file is unreadable on both copies of the disc, the unreadable file will be treated as not having been submitted. A file is unreadable if, for example, it is of a format that does not comply with
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the requirements of paragraph (e)(3) of this section, it is corrupted by a computer virus, or it is written onto a defective compact disc.
(f)(1) Any sequence listing in an electronic medium in compliance with §§ 1.52(e) and 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, will be excluded when determining the application size fee required by § 1.16(s) or § 1.492(j). For purposes of determining the application size fee required by § 1.16(s) or § 1.492(j), for an application the specification and drawings of which, excluding any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, are submitted in whole or in part on an electronic medium other than the Office electronic filing system, each three kilobytes of content submitted on an electronic medium shall be counted as a sheet of paper.
(2) Except as otherwise provided in this paragraph, the paper size equivalent of the specification and drawings of an application submitted via the Office electronic filing system will be considered to be seventy-five percent of the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of determining the application size fee required by § 1.16(s). Any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing in compliance with § 1.96, submitted via the Office electronic filing system will be excluded when determining the application size fee required by § 1.16(s) if the listing is submitted in ASCII text as part of an associated file.
[43 FR 20462, May 11, 1978; paras. (a) and (d), 47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; para. (c), 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; para. (d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (c), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras. (a) and (b) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (a), (c) & (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (e) added, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000 (effective date corrected, 65 FR 78958, Dec. 18, 2000); paras. (a), (b), and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (d) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a) and (b) revised, 68 FR 38611, June
30, 2003, effective July 30, 2003; section heading and paras. (b)(2)(ii), (e)(1)(iii) and (e)(3)(i)-(ii) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; section heading revised and para. (f) added; 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (f) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; para. (e)(5) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; paras. (a)(5), (a)(7), and (b)(7) removed and para. (a)(6) redesignated as (a)(5), 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (d)(2) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (d)(2) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (b) heading and paras. (c) and (d) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (a), (b), and (e) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.53 Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013.]
(a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.
(b) Application filing requirements— Nonprovisional application. The filing date of an application for patent filed under this section, other than an application for a design patent or a provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in the Office. The filing date of an application for a design patent filed under this section, except for a continued prosecution application under paragraph (d) of this section, is the date on which the specification as prescribed by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78.
(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
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(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
(c) Application filing requirements — Provisional application. The filing date of a provisional application is the date on which a specification, with or without claims, is received in the Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
(1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any
fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e), rather than converting the provisional application into a nonprovisional application pursuant to this paragraph. A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application ( i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119,365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a) may be made in a design application based on a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid
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sequences are not mandatory for provisional applications.
(d) Application filing requirements — Continued prosecution (nonprovisional) application.
(1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent;
(ii) The prior nonprovisional application is a design application, but not an international design application, that is complete as defined by § 1.51(b), except for the inventor’s oath or declaration if the application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in § 1.53(f)(3)(i); and
(iii) The application under this paragraph is filed before the earliest of:
(A) Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior application;
(iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and the inventor's oath or declaration from the prior application, to constitute the new application, and
will be assigned the application number of the prior application for identification purposes; and
(v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
(3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b), the search fee as set forth in § 1.16(l), and the examination fee as set forth in § 1.16(p).
(4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.
(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
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(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
(e) Failure to meet filing date requirements.
(1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to correct the filing error. If, however, a request for an application under paragraph (d) of this section does not meet the requirements of that paragraph because the application in which the request was filed is not a design application, and if the application in which the request was filed was itself filed on or after June 8, 1995, the request for an application under paragraph (d) of this section will be treated as a request for continued examination under § 1.114.
(2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f). In the absence of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.
(3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time
period or otherwise timely (§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.
(f) Completion of application subsequent to filing — Nonprovisional (including continued prosecution or reissue) application.
(1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, search fee, or examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include at least one claim or the inventor's oath or declaration (§§ 1.63, 1.64, 1.162 or 1.175), and the applicant has provided a correspondence address (§ 1.33(a) ), the applicant will be notified and given a period of time within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by § 1.16(f) to avoid abandonment.
(2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, search fee, examination fee, at least one claim, or the inventor's oath or declaration, and the applicant has not provided a correspondence address (§ 1.33(a) ), the applicant has three months from the filing date of the application within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge required by § 1.16(f) to avoid abandonment.
(3) The inventor's oath or declaration in an application under § 1.53(b) must also be filed within the period specified in paragraph (f)(1) or (f)(2) of this section, except that the filing of the inventor's oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in paragraphs (f)(3)(i) and (f)(3)(ii) of this section.
(i) The application must be an original (non-reissue) application that contains an application data sheet in accordance with § 1.76 identifying:
(A) Each inventor by his or her legal name;
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(B) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
(ii) The applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee for the patent is paid. If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)). The Office may dispense with the notice provided for in paragraph (f)(1) of this section if each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, has been filed before the application is in condition for allowance.
(4) If the excess claims fees required by § 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by § 1.16(h), (i), and (j) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s), the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
(5) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuation-in-part applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the inventor's oath or declaration from the prior application for a continuing application under paragraph (b) of this section.
(6) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
(g) Completion of application subsequent to filing — Provisional application.
(1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.
(2) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.
(3) If the application size fee required by § 1.16(s) (if any) is not paid on filing, the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
(4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
(h) Subsequent treatment of application — Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying with the rules relating thereto, are received, except that the inventor's oath or declaration may be filed when the application is otherwise in condition for allowance pursuant to paragraph (f)(3) of this section and minor informalities may be waived subject to subsequent correction whenever required.
(i) Subsequent treatment of application - Provisional application. A provisional application
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for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b) and (d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (c), 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; paras. (c) and (d), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; paras. (b) and (c), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(e) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (d) revised, 63 FR 5734, Feb. 4, 1998, effective Feb. 4, 1998 (adopted as final, 63 FR 36184, Jul. 2, 1998); paras. (c)(3), (c)(4) and (d) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (paras. (c)(4) and (d) adopted as final, 65 FR 50092, Aug. 16, 2000); para. (c)(3) revised, 65 FR 50092, Aug. 16, 2000, effective Aug. 16, 2000; paras. (c)(1), (c)(2), (d)(4), (e)(2), (f), and (g) revised and para. (d)(10) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c)(4) revised, 65 FR 78958, Dec. 18, 2000; para. (d)(9) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (d)(1), (d)(3) and (e)(1) revised, 68 FR 32376, May 30, 2003, effective July 14, 2003; para. (d)(9) deleted and para. (d)(10) redesignated as para. (d)(9), 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (e)(2) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras (c)(3), (f) and (g) revised, 70 FR 3880, Jan. 27, 2005, effective Dec., 8, 2004; paras. (d)(3) and (f)(5) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; paras. (b) and (c)(4) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); paras. (b) and (c)(4) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); introductory text of paras. (c) and (c)(3), and paras. (d)(2)(iv), (f), and (h) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para.(b) introductory text, paras. (c)(2)(ii)-(iii) and (c)(4) revised, and para.(j) removed, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (b), (c) and (f) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (d)(1)(ii) revised, 79 FR 12384, Mar. 5, 2014, effective Mar. 5, 2014(adopted as final, 79 FR 68121, Nov. 14, 2014); para. (b) introductory text and paras. (c)(4) and (d)(1)(ii) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[* Paragraphs (b), (c), (f) and (h) above include changes having limited applicability as follows:
The changes to paras. (b) and (c) effective Dec. 18, 2013 and May 13, 2015 are applicable only to patent applications filed on or after Dec. 18, 2013. See § 1.53
(pre-PLT(AIA)) for paras. (b) and (c) otherwise in effect; and
The changes to para. (f) effective Dec. 18, 2013 and the changes to para. (h) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.53 (pre-AIA) for paras. (f) and (h) otherwise in effect. ]
§ 1.53 (pre-PLT (AIA)) Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 (pre-PLT (AIA)) before December 18, 2013. ]
* * * * *
(b) Application filing requirements — Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and § 1.78(c) and (d).
(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
(c) Application filing requirements — Provisional application. The filing date of a provisional application is the date on which a specification as prescribed by 35 U.S.C. 112(a), and any drawing required by § 1.81(a) are filed in the
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Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
(1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the
benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, the inventor’s oath or declaration, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application ( i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a) may be made in a design application based on a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
* * * * *
[*See § 1.53 for the current rule, including paras. (b) and (c) containing changes applicable to patent applications filed on or after Dec. 18, 2013.]
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§ 1.53 (pre-PLT
(AIA))
PATENT RULES
§ 1.53 (pre-AIA) Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed before September 16, 2012* ]
* * * * *
(f) Completion of application subsequent to filing — Nonprovisional (including continued prosecution or reissue) application.
(1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, the search fee, or the examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include an oath or declaration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration in an application under paragraph (b) of this section, and pay the surcharge if required by § 1.16(f) to avoid abandonment.
(2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, the search fee, the examination fee, or an oath or declaration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration, and pay the surcharge required by § 1.16(f) to avoid abandonment.
(3) If the excess claims fees required by §§ 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by §§ 1.16(h), (i), and (j), must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee
under § 1.16(s), the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
(4) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuation-in-part applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the oath or declaration from the prior application for a continuation or divisional application under paragraph (b) of this section.
(5) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
* * * * *
(h) Subsequent treatment of application — Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying with the rules relating thereto, are received, except that certain minor informalities may be waived subject to subsequent correction whenever required.
[*See § 1.53 for the portions of the rule applicable irrespective of application filing date and for current paras. (f) and (h)]
§ 1.54 Parts of application to be filed together; filing receipt.
(a) It is desirable that all parts of the complete application be deposited in the Office together; otherwise, a letter must accompany each part, accurately and clearly connecting it with the other parts of the application. See § 1.53(f) and (g) with regard to completion of an application.
(b) Applicant will be informed of the application number and filing date by a filing receipt, unless the application is an application filed under § 1.53(d). A letter limited to a request for a filing receipt may be signed by a juristic applicant or patent owner.
[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; para. (b) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.53 (pre-AIA)
§ 1.55 Claim for foreign priority.
(a) In general. An applicant in a nonprovisional application may claim priority to one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b) and this section.
(b) Time for filing subsequent application. The nonprovisional application must be:
(1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or
(2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.
(c) Delayed filing of subsequent application. If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26 bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. A petition to restore the right of priority under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. Any petition to restore the right of priority under this paragraph must include:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(d) Time for filing priority claim—
(1) Application under 35 U.S.C. 111(a). The claim for priority must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application in an original application filed under 35 U.S.C. 111(a), except as provided in paragraph (e) of this section. The claim for priority must be presented in an application data sheet (§ 1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.
(2) Application under 35 U.S.C. 371. The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.
(e) Delayed priority claim. Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) not presented in the manner required by paragraph (d) or (m) of this section during pendency and within the time period provided by paragraph (d) of this section (if applicable) is considered to have been waived. If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) must be accompanied by:
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§ 1.55PATENT RULES
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f),365(a) or (b), or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
(2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies;
(3) The petition fee as set forth in § 1.17(m); and
(4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(f) Time for filing certified copy of foreign application—
(1) Application under 35 U.S.C. 111(a). A certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application, or sixteen months from the filing date of the prior foreign application, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section. The time period in this paragraph does not apply in a design application.
(2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371. If a certified copy of the foreign application is not filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application,
except as provided in paragraphs (h), (i), and (j) of this section.
(3) If a certified copy of the foreign application is not filed within the time period specified [in] paragraph (f)(1) of this section in an application under 35 U.S.C. 111(a) or within the period specified in paragraph (f)(2) of this section in an international application entering the national stage under 35 U.S.C. 371, and an exception in paragraph (h), (i), or (j) of this section is not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).
(g) Requirement for filing priority claim, certified copy of foreign application, and translation in any application.
(1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.
(2) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in this section:
(i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
(ii) When necessary to overcome the date of a reference relied upon by the examiner; or
(iii) When deemed necessary by the examiner.
(3) An English language translation of a non-English language foreign application is not required except:
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.55
(i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
(ii) When necessary to overcome the date of a reference relied upon by the examiner; or
(iii) When specifically required by the examiner.
(4) If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.
(h) Certified copy in another U.S. patent or application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will be considered satisfied in a reissue application if the patent for which reissue is sought satisfies the requirement of this section for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will also be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
(i) Foreign intellectual property office participating in a priority document exchange agreement. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
(1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), or a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy;
(2) The claim for priority is presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and
year of its filing, and the applicant provides the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application;
(3) The copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the period specified in paragraph (g)(1) of this section; and
(4) The applicant files in a separate document a request that the Office obtain a copy of the foreign application from a participating intellectual property office that permits the Office to obtain such a copy where, although the foreign application was not filed in a participating foreign intellectual property office, a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy. The request must identify the participating intellectual property office and the subsequent application by the application number, day, month, and year of its filing in which a copy of the foreign application was filed. The request must be filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), or four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or the request must be accompanied by a petition under paragraph (e) or (f) of this section.
(j) Interim copy. The requirement in paragraph (f) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
(1) A copy of the original foreign application clearly labeled as "Interim Copy," including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority);
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§ 1.55PATENT RULES
(2) The copy of the foreign application and separate cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or with a petition under paragraph (e) or (f) of this section; and
(3) A certified copy of the foreign application is filed within the period specified in paragraph (g)(1) of this section.
(k) Requirements for certain applications filed on or after March 16, 2013.If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior foreign application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(l) Inventor's certificates. An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor's certificate in a country granting both inventor's certificates and patents. To claim the right of priority on the basis of an application for an inventor's certificate in such a country under 35 U.S.C. 119(d), the applicant, when submitting a claim for such right as specified in this section, must include an affidavit or
declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor’s certificate, had the option to file an application for either a patent or an inventor’s certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority.
(m) Time for filing priority claim and certified copy of foreign application in an international design application designating the United States. In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations. In a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.
(n) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section that any priority claim be presented in an application data sheet (§ 1.76), this requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section will be satisfied by the presentation of such priority claim in the oath or declaration under § 1.63 in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any priority claim submitted for a petition under paragraph (c) of this section to restore the right of priority to a foreign application.
(o) Priority under 35 U.S.C. 386(a) or (b). The right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.55
applications filed on or after May 13, 2015, and patents issuing thereon.
(p) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
[para. (b), 47 FR 41275, Sept. 17, 1982, effective Oct. 1 1982; 48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; para. (b), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a) revised, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; para. (a), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 60 FR 20195, Apr.25, 1995, effective June 8, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised and para. (c) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a) and (c) corrected, 65 FR 66502, Nov. 6, 2000, effective Nov. 29, 2000; paras.(a)(1) and (c) revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001; para. (c)(3) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (a)(3) and (a)(4) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (d) added, 72 FR 1664, Jan. 16, 2007, effective Jan. 16, 2007; introductory text of paras. (a)(1)(i) and (c), and para. (d)(1)(ii) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; corrected 78 FR 16182, Mar. 14, 2013, effective Mar. 16, 2013; paras. (b)-(f) and (h) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.56 Duty to disclose information material to patentability.
[Editor Note: Para. (c)(3) below is applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as
defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. The Office encourages applicants to carefully examine:
(1) Prior art cited in search reports of a foreign patent office in a counterpart application, and
(2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.
(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability is established when the information compels a conclusion that a
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§ 1.56PATENT RULES
claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the application; and
(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.
(d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
(e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.
[42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i), 47 FR 21751, May 19, 1982, effective July 1, 1982; para. (c), 48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b) and (j), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (e) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c)(3) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[* The changes to para. (c)(3) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.56 (pre-AIA) for para. (c)(3) otherwise in effect.]
§ 1.56 (pre-AIA) Duty to disclose information material to patentability.
[Editor Note: Para. (c)(3) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]
*****
(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the application; and
(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.
(d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
(e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.
[42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i), 47 FR 21751, May 19, 1982, effective July 1, 1982; para. (c), 48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b) and (j), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (e) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
[*See § 1.56 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.57 Incorporation by reference.
[Editor Note: Para. (a) below is only applicable to patent applications filed under 35 U.S.C. 111(a) on or after December 18, 2013*]
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(a) Subject to the conditions and requirements of this paragraph, a reference made in the English language in an application data sheet in accordance with § 1.76 upon the filing of an application under 35 U.S.C. 111(a) to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a) for purposes of a filing date under § 1.53(b).
(1) If the applicant has provided a correspondence address (§ 1.33(a) ), the applicant will be notified and given a period of time within which to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i) if it is in a language other than English, and pay the surcharge required by § 1.16(f), to avoid abandonment. Such a notice may be combined with a notice under § 1.53(f).
(2) If the applicant has not provided a correspondence address (§ 1.33(a) ), the applicant has three months from the filing date of the application to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i) if it is in a language other than English, and pay the surcharge required by § 1.16(f), to avoid abandonment.
(3) An application abandoned under paragraph (a)(1) or (a)(2) of this section shall be treated as having never been filed, unless:
(i) The application is revived under § 1.137; and
(ii) A copy of the specification and any drawings of the previously filed application are filed in the Office.
(4) A certified copy of the previously filed application must be filed in the Office, unless the previously filed application is an application filed under 35 U.S.C. 111 or 363, or the previously filed application is a foreign priority application and the
conditions set forth in § 1.55(i) ) are satisfied with respect to such foreign priority application. The certified copy of the previously filed application, if required by this paragraph, must be filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, or be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).
(b) Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application or a claim under § 1.78 for the benefit of a prior-filed provisional, nonprovisional, international application, or international design application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or 1.78 shall also be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).
(1) The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b), or abandonment of the application, whichever occurs earlier. The applicant is also required to:
(i) Supply a copy of the prior-filed application, except where the prior-filed application is an application filed under 35 U.S.C. 111;
(ii) Supply an English language translation of any prior-filed application that is in a language other than English; and
(iii) Identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
(2) Any amendment to an international application pursuant to paragraph (b)(1) of this section shall be effective only as to the United States, and shall have no effect on the international filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an
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international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (§ 1.491) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application. Any omitted portion of the international application which applicant desires to be effective as to all designated States, subject to PCT Rule 20.8(b), must be submitted in accordance with PCT Rule 20.
(3) If an application is not otherwise entitled to a filing date under § 1.53(b), the amendment must be by way of a petition pursuant to § 1.53(e) accompanied by the fee set forth in § 1.17(f).
(4) Any amendment to an international design application pursuant to paragraph (b)(1) of this section shall be effective only as to the United States and shall have no effect on the filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international design application will be acted upon by the Office prior to the international design application becoming a nonprovisional application.
(c) Except as provided in paragraph (a) or (b) of this section, an incorporation by reference must be set forth in the specification and must:
(1) Express a clear intent to incorporate by reference by using the root words “incorporat(e)” and “reference” ( e.g., “incorporate by reference”); and
(2) Clearly identify the referenced patent, application, or publication.
(d) “Essential material” may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. “Essential material” is material that is necessary to:
(1) Provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor
of carrying out the invention as required by 35 U.S.C. 112(a);
(2) Describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b); or
(3) Describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. 112(f).
(e) Other material (“Nonessential material”) may be incorporated by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications. An incorporation by reference by hyperlink or other form of browser executable code is not permitted.
(f) The examiner may require the applicant to supply a copy of the material incorporated by reference. If the Office requires the applicant to supply a copy of material incorporated by reference, the material must be accompanied by a statement that the copy supplied consists of the same material incorporated by reference in the referencing application.
(g) Any insertion of material incorporated by reference into the specification or drawings of an application must be by way of an amendment to the specification or drawings. Such an amendment must be accompanied by a statement that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter.
(h) An incorporation of material by reference that does not comply with paragraphs (c), (d) or (e) of this section is not effective to incorporate such material unless corrected within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b), or abandonment of the application, whichever occurs earlier. In addition:
(1) A correction to comply with paragraph (c)(1) of this section is permitted only if the application as filed clearly conveys an intent to incorporate the material by reference. A mere reference to material does not convey an intent to incorporate the material by reference.
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(2) A correction to comply with paragraph (c)(2) of this section is only permitted for material that was sufficiently described to uniquely identify the document.
(i) An application transmittal letter limited to the transmittal of a copy of the specification and drawings from a previously filed application submitted under paragraph (a) or (b) of this section may be signed by a juristic applicant or patent owner.
[Added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(3) added, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (a)(2) revised, 72 FR 51559, Sept. 10, 2007, effective Sept. 10, 2007; paras. (c)(1)-(3) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (a) revised, para. (b) introductory text revised and para. (b)(4) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[* The changes to para. (a) effective Dec. 18, 2013 and May 13, 2015 are applicable only to patent applications filed on or after Dec. 18, 2013. See § 1.57 (pre-PLT) for para. (a) applicable to applications filed before Dec. 18, 2013.]
§ 1.57 (pre-PLT) Incorporation by reference.
[Editor Note: Para. (a) below is applicable to applications filed before December 18, 2013.]
(a) Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application, or a claim under § 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or § 1.78 shall also be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).
(1) The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b), or abandonment of the application, whichever occurs earlier. The applicant is also required to:
(i) Supply a copy of the prior-filed application, except where the prior-filed application is an application filed under 35 U.S.C. 111;
(ii) Supply an English language translation of any prior-filed application that is in a language other than English; and
(iii) Identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
(2) Any amendment to an international application pursuant to this paragraph shall be effective only as to the United States, and shall have no effect on the international filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (§ 1.491) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application. Any omitted portion of the international application which applicant desires to be effective as to all designated States, subject to PCT Rule 20.8(b), must be submitted in accordance with PCT Rule 20.
(3) If an application is not otherwise entitled to a filing date under § 1.53(b), the amendment must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f)
*****
[Para. (a) above is applicable to patent applications filed under 35 U.S.C. 111 (pre-PLT (AIA)) before Dec. 18, 2013. See § 1.57 for the current rule, including para. (a) applicable to patent applications filed under 35 U.S.C. 111 on or after Dec. 18, 2013.]
§ 1.58 Chemical and mathematical formulae and tables.
(a) The specification, including the claims, may contain chemical and mathematical formulae, but shall not contain drawings or flow diagrams. The description portion of the specification may contain tables, but the same tables should not be included in both the drawings and description portion of the specification. Claims may contain tables either if necessary to conform to 35 U.S.C. 112 or if otherwise found to be desirable.
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(b) Tables that are submitted in electronic form (§§ 1.96(c) and 1.821(c)) must maintain the spatial relationships ( e.g., alignment of columns and rows) of the table elements when displayed so as to visually preserve the relational information they convey. Chemical and mathematical formulae must be encoded to maintain the proper positioning of their characters when displayed in order to preserve their intended meaning.
(c) Chemical and mathematical formulae and tables must be presented in compliance with § 1.52(a) and (b), except that chemical and mathematical formulae or tables may be placed in a landscape orientation if they cannot be presented satisfactorily in a portrait orientation. Typewritten characters used in such formulae and tables must be chosen from a block (nonscript) type font or lettering style having capital letters which should be at least 0.422 cm. (0.166 inch) high ( e.g., preferably Arial, Times Roman, or Courier with a font size of 12), but may be no smaller than 0.21 cm. (0.08 inch) high ( e.g., a font size of 6). A space at least 0.64 cm. (1/4 inch) high should be provided between complex formulae and tables and the text. Tables should have the lines and columns of data closely spaced to conserve space, consistent with a high degree of legibility.
[43 FR 20463, May 11, 1978; para. (b) removed and reserved, para. (c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (b) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.59 Expungement of information or copy of papers in application file.
(a)(1) Information in an application will not be expunged, except as provided in paragraph (b) of this section or § 41.7(a) or § 42.7(a) of this title.
(2) Information forming part of the original disclosure ( i.e., written specification including the claims, drawings, and any preliminary amendment present on the filing date of the application) will not be expunged from the application file.
(b) An applicant may request that the Office expunge information, other than what is excluded by paragraph (a)(2) of this section, by filing a petition under this paragraph. Any petition to
expunge information from an application must include the fee set forth in § 1.17(g) and establish to the satisfaction of the Director that the expungement of the information is appropriate in which case a notice granting the petition for expungement will be provided.
(c) Upon request by an applicant and payment of the fee specified in § 1.19(b), the Office will furnish copies of an application, unless the application has been disposed of (see §§ 1.53(e), (f), and (g). The Office cannot provide or certify copies of an application that has been disposed of.
[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 23123, May 31, 1985, effective Feb. 11, 1985; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (a)(1) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (a)(1) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (a)(2) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.60 [Reserved]
[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; paras. (a), (b) and (c), 54 FR 47519, Nov. 15, 1989, effective Jan. 16, 1990; paras. (b) and (c) revised, para. (d) added, 57 FR 56446, Nov. 30, 1992, effective Jan. 4, 1993; para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.61 [Reserved]
(Editor’s note: Substance is now in § 1.495)
§ 1.62 [Reserved]
[47 FR 47244, Oct. 25, 1982, added effective Feb. 27, 1983; 48 FR 2710, Jan. 20, 1983, effective date Feb. 27, 1983; paras. (a) and (d), 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a), (c), and (h), 50 FR 9380, Mar. 7, 1985, effective May 8, 1985; paras. (e) and (j), 54 FR 47519, Nov. 15, 1989, effective Jan. 16, 1990;
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paras. (a) and (e) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (f) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
OATH OR DECLARATION
§ 1.63 Inventor's oath or declaration.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012*]
(a) The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided for in § 1.64. An oath or declaration under this section must:
(1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;
(2) Identify the application to which it is directed;
(3) Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and
(4) State that the application was made or was authorized to be made by the person executing the oath or declaration.
(b) Unless the following information is supplied in an application data sheet in accordance with § 1.76, the oath or declaration must also identify:
(1) Each inventor by his or her legal name; and
(2) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
(c) A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information
known to the person to be material to patentability as defined in § 1.56. There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing.
(d)(1) A newly executed oath or declaration under § 1.63, or substitute statement under § 1.64, is not required under §§ 1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.
(2) The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.
(3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64 .
(e)(1) An assignment may also serve as an oath or declaration required by this section if the assignment as executed:
(i) Includes the information and statements required under paragraphs (a) and (b) of this section; and
(ii) A copy of the assignment is recorded as provided for in part 3 of this chapter.
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(2) Any reference to an oath or declaration under this section includes an assignment as provided for in this paragraph.
(f) With respect to an application naming only one inventor, any reference to the inventor's oath or declaration in this chapter includes a substitute statement executed under § 1.64. With respect to an application naming more than one inventor, any reference to the inventor's oath or declaration in this chapter means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless otherwise clear from the context.
(g) An oath or declaration under this section, including the statement provided for in paragraph (e) of this section, must be executed (i.e., signed) in accordance either with § 1.66 or with an acknowledgment that any willful false statement made in such declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.
(h) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1) will be placed in the file record of the application or patent, but may not necessarily be reviewed by the Office. Any request for correction of the named inventorship must comply with § 1.48 in an application and § 1.324 in a patent.
[48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983; paras. (b)(3) and (d), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a) & (d) revised, para. (e) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a), (b), (c), and (e) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (d)(4) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (d)(1) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[*The changes effective Sept. 16, 2012 and May 13, 2015 are applicable only to patent applications filed on or after Sept. 16, 2012. See § 1.63 (pre-AIA) for the rule applicable to patent applications filed before Sept. 16, 2012.]
§ 1.63 (pre-AIA) Oath or declaration.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012*]
(a) An oath or declaration filed under § 1.51(b)(2) as a part of a nonprovisional application must:
(1) Be executed, i.e., signed, in accordance with either § 1.66 or § 1.68. There is no minimum age for a person to be qualified to sign, but the person must be competent to sign, i.e., understand the document that the person is signing;
(2) Identify each inventor by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial;
(3) Identify the country of citizenship of each inventor; and
(4) State that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.
(b) In addition to meeting the requirements of paragraph (a) of this section, the oath or declaration must also:
(1) Identify the application to which it is directed;
(2) State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims, as amended by any amendment specifically referred to in the oath or declaration; and
(3) State that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.
(c) Unless such information is supplied on an application data sheet in accordance with § 1.76, the oath or declaration must also identify:
(1) The mailing address, and the residence if an inventor lives at a location which is different from where the inventor customarily receives mail, of each inventor; and
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(2) Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made pursuant to § 1.55, and any foreign application having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.
(d)(1) A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
(i) The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section;
(ii) The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application;
(iii) The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and
(iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application.
(2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application.
(3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under § 1.47, the copy of the executed oath or declaration for such prior application must be accompanied by:
(i) A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under § 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and
(ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application.
(4) Where the power of attorney or correspondence address was changed during the prosecution of the prior application, the change in power of attorney or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney or correspondence address during the prosecution of the prior application.
(5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
(e) A newly executed oath or declaration must be filed in any continuation-in-part application, which application may name all, more, or fewer than all of the inventors named in the prior application.
[48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983; paras. (b)(3) and (d), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a) & (d) revised, para. (e) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a), (b), (c), and (e) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (d)(4) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
[*See § 1.63 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.64 Substitute statement in lieu of an oath or declaration.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) An applicant under § 1.43, 1.45 or 1.46 may execute a substitute statement in lieu of an oath or
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declaration under § 1.63 if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration under § 1.63, or cannot be found or reached after diligent effort.
(b) A substitute statement under this section must:
(1) Comply with the requirements of § 1.63(a), identifying the inventor or joint inventor with respect to whom a substitute statement in lieu of an oath or declaration is executed, and stating upon information and belief the facts which such inventor is required to state;
(2) Identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor with respect to whom the substitute statement is executed, and unless such information is supplied in an application data sheet in accordance with § 1.76, the residence and mailing address of the person signing the substitute statement;
(3) Identify the circumstances permitting the person to execute the substitute statement in lieu of an oath or declaration under § 1.63, namely whether the inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration under § 1.63; and
(4) Unless the following information is supplied in an application data sheet in accordance with § 1.76, also identify:
(i) Each inventor by his or her legal name; and
(ii) The last known mailing address where the inventor customarily receives mail, and last known residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor who is not deceased or under a legal incapacity.
(c) A person may not execute a substitute statement provided for in this section for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.
(d) Any reference to an inventor's oath or declaration includes a substitute statement provided for in this section.
(e) A substitute statement under this section must contain an acknowledgment that any willful false statement made in such statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.
(f) A nonsigning inventor or legal representative may subsequently join in the application by submitting an oath or declaration under § 1.63. The submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under § 1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.
[48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 1983; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.64 (pre-AIA) for the rule otherwise in effect.]
§ 1.64 (pre-AIA) Person making oath or declaration.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) The oath or declaration (§ 1.63), including any supplemental oath or declaration (§ 1.67), must be made by all of the actual inventors except as provided for in §§ 1.42, 1.43, 1.47, or § 1.67.
(b) If the person making the oath or declaration or any supplemental oath or declaration is not the inventor (§§ 1.42, 1.43, 1.47, or § 1.67), the oath or declaration shall state the relationship of the person to the inventor, and, upon information and belief, the facts which the inventor is required to state. If the person signing the oath or declaration is the legal representative of a deceased inventor, the oath or declaration shall also state that the person is a legal representative and the citizenship, residence, and mailing address of the legal representative.
[48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 1983; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
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[*See § 1.64 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.66 Statements under oath.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
An oath or affirmation may be made before any person within the United States authorized by law to administer oaths. An oath made in a foreign country may be made before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States, or by an apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. The oath shall be attested in all cases in this and other countries, by the proper official seal of the officer before whom the oath or affirmation is made. Such oath or affirmation shall be valid as to execution if it complies with the laws of the State or country where made. When the person before whom the oath or affirmation is made in this country is not provided with a seal, his official character shall be established by competent evidence, as by a certificate from a clerk of a court of record or other proper officer having a seal.
[47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.66 (pre-AIA) for the rule otherwise in effect.]
§ 1.66 (pre-AIA) Officers authorized to administer oaths.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) The oath or affirmation may be made before any person within the United States authorized by
law to administer oaths. An oath made in a foreign country may be made before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States, or by an apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. The oath shall be attested in all cases in this and other countries, by the proper official seal of the officer before whom the oath or affirmation is made. Such oath or affirmation shall be valid as to execution if it complies with the laws of the State or country where made. When the person before whom the oath or affirmation is made in this country is not provided with a seal, his official character shall be established by competent evidence, as by a certificate from a clerk of a court of record or other proper officer having a seal.
(b) When the oath is taken before an officer in a country foreign to the United States, any accompanying application papers, except the drawings, must be attached together with the oath and a ribbon passed one or more times through all the sheets of the application, except the drawings, and the ends of said ribbon brought together under the seal before the latter is affixed and impressed, or each sheet must be impressed with the official seal of the officer before whom the oath is taken. If the papers as filed are not properly ribboned or each sheet impressed with the seal, the case will be accepted for examination, but before it is allowed, duplicate papers, prepared in compliance with the foregoing sentence, must be filed.
[47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982]
[*See § 1.66 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.67 Supplemental oath or declaration.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
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(a) The applicant may submit an inventor's oath or declaration meeting the requirements of § 1.63, § 1.64, or § 1.162 to correct any deficiencies or inaccuracies present in an earlier-filed inventor's oath or declaration. Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(b) in an oath or declaration may be corrected with an application data sheet in accordance with § 1.76, except that any correction of inventorship must be pursuant to § 1.48.
(b) A supplemental inventor's oath or declaration under this section must be executed by the person whose inventor’s oath or declaration is being withdrawn, replaced, or otherwise corrected.
(c) The Office will not require a person who has executed an oath or declaration in compliance with 35 U.S.C. 115 and § 1.63 or 1.162 for an application to provide an additional inventor's oath or declaration for the application.
(d) No new matter may be introduced into a nonprovisional application after its filing date even if an inventor's oath or declaration is filed to correct deficiencies or inaccuracies present in the earlier-filed inventor's oath or declaration.
[48 FR 2711, Jan. 20, 1983, effective Feb. 27, 1983; para. (c) added, 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised and para. (c) removed and reserved, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.67 (pre-AIA) for the rule otherwise in effect.]
§ 1.67 (pre-AIA) Supplemental oath or declaration.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) The Office may require, or inventors and applicants may submit, a supplemental oath or declaration meeting the requirements of § 1.63 or § 1.162 to correct any deficiencies or inaccuracies present in the earlier filed oath or declaration.
(1) Deficiencies or inaccuracies relating to all the inventors or applicants (§§ 1.42, 1.43, or §
1.47) may be corrected with a supplemental oath or declaration signed by all the inventors or applicants.
(2) Deficiencies or inaccuracies relating to fewer than all of the inventor(s) or applicant(s) (§§ 1.42, 1.43 or § 1.47) may be corrected with a supplemental oath or declaration identifying the entire inventive entity but signed only by the inventor(s) or applicant(s) to whom the error or deficiency relates.
(3) Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(c) (e.g., to correct the omission of a mailing address of an inventor) in an oath or declaration may be corrected with an application data sheet in accordance with § 1.76.
(4) Submission of a supplemental oath or declaration or an application data sheet (§ 1.76), as opposed to who must sign the supplemental oath or declaration or an application data sheet, is governed by § 1.33(a)(2) and paragraph (b) of this section.
(b) A supplemental oath or declaration meeting the requirements of § 1.63 must be filed when a claim is presented for matter originally shown or described but not substantially embraced in the statement of invention or claims originally presented or when an oath or declaration submitted in accordance with § 1.53(f) after the filing of the specification and any required drawings specifically and improperly refers to an amendment which includes new matter. No new matter may be introduced into a nonprovisional application after its filing date even if a supplemental oath or declaration is filed. In proper situations, the oath or declaration here required may be made on information and belief by an applicant other than the inventor.
(c) [Reserved]
[48 FR 2711, Jan. 20, 1983, effective Feb. 27, 1983; para. (c) added, 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised and para. (c) removed and reserved, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
[*See § 1.67 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
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§ 1.68 Declaration in lieu of oath.
Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration. Such declaration may be used in lieu of the oath otherwise required, if, and only if, the declarant is on the same document, warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.
[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]
§ 1.69 Foreign language oaths and declarations.
(a) Whenever an individual making an oath or declaration cannot understand English, the oath or declaration must be in a language that such individual can understand and shall state that such individual understands the content of any documents to which the oath or declaration relates.
(b) Unless the text of any oath or declaration in a language other than English is in a form provided by the Patent and Trademark Office or in accordance with PCT Rule 4.17(iv), it must be accompanied by an English translation together with a statement that the translation is accurate, except that in the case of an oath or declaration filed under § 1.63, the translation may be filed in the Office no later than two months from the date applicant is notified to file the translation.
[42 FR 5594, Jan. 28, 1977; para. (b), 48 FR 2711, Jan. 20, 1983, effective Feb. 27, 1983; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (b) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004]
§ 1.70 [Reserved]
[52 FR 20046, May 28, 1987, effective July 1, 1987]
SPECIFICATION
§ 1.71 Detailed description and specification of the invention.
(a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.
(b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.
(c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.
(d) A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s). The content of the notice must be limited to only those elements provided for by law. For example, “©1983 John Doe”(17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted
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only if the authorization language set forth in paragraph (e) of this section is included at the beginning (preferably as the first paragraph) of the specification.
(e) The authorization shall read as follows:
A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever.
(f) The specification must commence on a separate sheet. Each sheet including part of the specification may not include other parts of the application or other information. The claim(s), abstract and sequence listing (if any) should not be included on a sheet including any other part of the application.
(g)(1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement as defined in § 1.9(e).
(2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth § 1.17(i) if not filed within one of the following time periods:
(i) Within three months of the filing date of a national application;
(ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
(iii) Before the mailing of a first Office action on the merits; or
(iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.
(3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include
the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.
[paras. (d) and (e), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; para. (d), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; para. (f) added, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (g) added, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; para. (g) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para. (g)(1) revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
§ 1.72 Title and abstract.
(a) The title of the invention may not exceed 500 characters in length and must be as short and specific as possible. Characters that cannot be captured and recorded in the Office’s automated information systems may not be reflected in the Office’s records in such systems or in documents created by the Office. Unless the title is supplied in an application data sheet (§ 1.76), the title of the invention should appear as a heading on the first page of the specification.
(b) A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading “Abstract” or “Abstract of the Disclosure.” The sheet or sheets presenting the abstract may not include other parts of the application or other material. The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length. The purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.
[31 FR 12922, Oct. 4, 1966; 43 FR 20464, May 11, 1978; para. (b) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (b) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (b) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.73 Summary of the invention.
A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the
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detailed description. Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.
§ 1.74 Reference to drawings.
When there are drawings, there shall be a brief description of the several views of the drawings and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures and to the different parts by use of reference letters or numerals (preferably the latter).
§ 1.75 Claim(s).
(a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
(b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.
(c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(j). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.
(d)(1) The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. (See § 1.58(a)).
(2) See §§ 1.141 to 1.146 as to claiming different inventions in one application.
(e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
(1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
(2) A phrase such as “wherein the improvement comprises,” and
(3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
(f) If there are several claims, they shall be numbered consecutively in Arabic numerals.
(g) The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.
(h) The claim or claims must commence on a separate physical sheet or electronic page. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material.
(i) Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.
[31 FR 12922, Oct. 4, 1966; 36 FR 12690, July 3, 1971; 37 FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; para. (c), 47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; para. (g) amended, paras. (h) and (i) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (h) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (h) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (b) and (c) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective);
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paras. (b) and (c) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR)]
§ 1.76 Application data sheet.
[Editor Note: Some paragraphs have limited applicability. See * below for details.]
(a) Application data sheet. An application data sheet is a sheet or sheets that may be submitted in a provisional application under 35 U.S.C. 111(b), a nonprovisional application under 35 U.S.C. 111(a), a nonprovisional international design application, or a national stage application under 35 U.S.C. 371 and must be submitted when required by § 1.55 or 1.78 to claim priority to or the benefit of a prior-filed application under 35 U.S.C. 119, 120, 121, 365, or 386. An application data sheet must be titled "Application Data Sheet." An application data sheet must contain all of the section headings listed in paragraph (b) of this section, except as provided in paragraph (c)(2) of this section, with any appropriate data for each section heading. If an application data sheet is provided, the application data sheet is part of the application for which it has been submitted.
(b) Bibliographic data. Bibliographic data as used in paragraph (a) of this section includes:
(1) Inventor information. This information includes the legal name, residence, and mailing address of the inventor or each joint inventor.
(2) Correspondence information. This information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see § 1.33(a)).
(3) Application information. This information includes the title of the invention, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, the type of application (e.g., utility, plant, design, reissue, provisional), whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to § 5.2 of this chapter (see § 5.2(c)), and, for plant applications, the Latin name of the genus and species of the plant claimed, as well as the variety denomination. When information concerning the previously filed application is required under § 1.57(a), application information
also includes the reference to the previously filed application, indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed.
(4) Representative information. This information includes the registration number of each practitioner having a power of attorney in the application (preferably by reference to a customer number). Providing this information in the application data sheet does not constitute a power of attorney in the application (see § 1.32).
(5) Domestic benefit information. This information includes the application number, the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 120, 121, 365(c), or 386(c). Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120 and § 1.78.
(6) Foreign priority information. This information includes the application number, country (or intellectual property authority), and filing date of each foreign application for which priority is claimed. Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55.
(7) Applicant information: This information includes the name (either natural person or juristic entity) and address of the legal representative, assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter who is the applicant under § 1.43 or § 1.46. Providing assignment information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
(c) Correcting and updating an application data sheet.
(1) Information in a previously submitted application data sheet, inventor's oath or declaration under § 1.63, § 1.64 or § 1.67, or otherwise of record, may be corrected or updated until payment
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of the issue fee by a new application data sheet providing corrected or updated information, except that inventorship changes must comply with the requirements of § 1.48, foreign priority and domestic benefit information changes must comply with §§ 1.55 and 1.78, and correspondence address changes are governed by § 1.33(a).
(2) An application data sheet providing corrected or updated information may include all of the sections listed in paragraph (b) of this section or only those sections containing changed or updated information. The application data sheet must include the section headings listed in paragraph (b) of this section for each section included in the application data sheet, and must identify the information that is being changed, with underlining for insertions, and strike-through or brackets for text removed, except that identification of information being changed is not required for an application data sheet included with an initial submission under 35 U.S.C. 371.
(d) Inconsistencies between application data sheet and other documents. For inconsistencies between information that is supplied by both an application data sheet under this section and other documents:
(1) The most recent submission will govern with respect to inconsistencies as between the information provided in an application data sheet, a designation of a correspondence address, or by the inventor's oath or declaration, except that:
(i) The most recent application data sheet will govern with respect to foreign priority (§ 1.55 ) or domestic benefit (§ 1.78 ) claims; and
(ii) The naming of the inventorship is governed by § 1.41 and changes to inventorship or the names of the inventors is governed by § 1.48.
(2) The information in the application data sheet will govern when inconsistent with the information supplied at the same time by a designation of correspondence address or the inventor's oath or declaration. The information in the application data sheet will govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model
International Request for Recordation of Change in Applicant or Owner Form.
(3) The Office will capture bibliographic information from the application data sheet. The Office will generally not review the inventor's oath or declaration to determine if the bibliographic information contained therein is consistent with the bibliographic information provided in an application data sheet. Incorrect bibliographic information contained in an application data sheet may be corrected as provided in paragraph (c)(1) of this section.
(e) Signature requirement. An application data sheet must be signed in compliance with § 1.33(b). An unsigned application data sheet will be treated only as a transmittal letter.
(f) Patent Law Treaty Model International Forms. The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied by the presentation of such priority or benefit claim in the Patent Law Treaty Model International Request Form, and the requirement in § 1.57(a) for a reference to the previously filed application in an application data sheet will be satisfied by the presentation of such reference to the previously filed application in the Patent Law Treaty Model International Request Form. The requirement in § 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied by the presentation of the name of the applicant in the Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, as applicable.
(g) Patent Cooperation Treaty Request Form. The requirement in § 1.78 for the presentation of a benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied in a national stage application under 35 U.S.C. 371 by the presentation of such benefit claim in the Patent Cooperation Treaty Request Form contained in the international application or the presence of such benefit claim on the front page of the publication of the international application under PCT Article 21(2). The requirement in § 1.55 or § 1.78 for the
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§ 1.76PATENT RULES
presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet and the requirement in § 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied in an application under 35 U.S.C. 111 by the presentation of such priority or benefit claim and presentation of the name of the applicant in a Patent Cooperation Treaty Request Form. If a Patent Cooperation Treaty Request Form is submitted in an application under 35 U.S.C. 111, the Patent Cooperation Treaty Request Form must be accompanied by a clear indication that treatment of the application as an application under 35 U.S.C. 111 is desired.
[Added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(7) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a), (b)(4), (c)(2) and (d) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (b)(5) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para. (b)(5) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (b)(5) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras. (a), (b)(1), (b)(3), (b)(5), (b)(7), (c), and (d) revised and para. (e) added, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (b)(5) and (b)(6) revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; para. (b)(3) and (d)(2) revised, paras. (f) and (g) added, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; paras. (a), (b)(5), and (b)(6) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[*Paragraphs (a), (b)(1), (b)(3), (b)(5), (b)(6), (b)(7), (c), (d) and (e) above include changes having limited applicability as follows:
The changes to para. 1.76(b)(3) effective Dec. 18, 2013 are applicable only to patent applications filed under 35 U.S.C. 111 on or after Dec. 18, 2013. For para. (b)(3) applicable to applications filed on or after Sept. 16, 2012 and before Dec. 18, 2013, see § 1.76 (2012-09-16 thru 2013-12-17). For para. (b)(3) applicable to applications filed before Sept. 16, 2012, see § 1.76 (pre-AIA). The changes to paras. (a), (b)(1), (b)(5), (b)(6), (b)(7), (c), (d), and (e) effective Sept. 16, 2012 and/or May 13, 2015 are applicable only to patent applications filed on or after Sept. 16, 2012. For paras. (a), (b)(1), (b)(5), (b)(6), (b)(7), (c), and (d) in effect for applications filed prior to Sept. 16, 2012, see § 1.76 (pre-AIA).]
§ 1.76 (2012-09-16 thru 2013-12-17) Application data sheet.
[Editor Note: Para. (b)(3) below is applicable to applications filed on or after September 16, 2012 and before and December 18, 2013*]
*****
(b) *****
(3) Application information. This information includes the title of the invention, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, the type of application (e.g., utility, plant, design, reissue, provisional), whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to § 5.2 of this chapter (see § 5.2(c)), and, for plant applications, the Latin name of the genus and species of the plant claimed, as well as the variety denomination.
*****
Para. (b)(3) above includes changes applicable to any application filed under 35 U.S.C. 111 or 363 on or after Sept. 16, 2012 and before Mar. 16, 2013. For para. (b)(3) applicable to applications filed on or after Mar. 16, 2013, see § 1.76. For para. (b)(3) applicable to applications filed before Sept. 16, 2012, see § 1.76 (pre-AIA).
§ 1.76 (pre-AIA) Application data sheet.
[Editor Note: Paras. (a), (b)(1), (b)(3), (b)(5), (b)(7), (c) and (d) below are applicable to patent applications filed under 35 U.S.C. 111(a) or 363 before September 16, 2012.]
(a) Application data sheet. An application data sheet is a sheet or sheets, that may be voluntarily submitted in either provisional or nonprovisional applications, which contains bibliographic data, arranged in a format specified by the Office. An application data sheet must be titled “Application Data Sheet” and must contain all of the section headings listed in paragraph (b) of this section, with any appropriate data for each section heading. If an application data sheet is provided, the application data sheet is part of the provisional or nonprovisional application for which it has been submitted.
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(b) Bibliographic data. Bibliographic data as used in paragraph (a) of this section includes:
(1) Applicant information. This information includes the name, residence, mailing address, and citizenship of each applicant (§ 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. If the applicant is not an inventor, this information also includes the applicant’s authority (§§ 1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor.
*****
(3) Application information. This information includes the title of the invention, a suggested classification, by class and subclass, the Technology Center to which the subject matter of the invention is assigned, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, the type of application (e.g., utility, plant, design, reissue, provisional), whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to § 5.2 of this chapter (see § 5.2(c)), and, for plant applications, the Latin name of the genus and species of the plant claimed, as well as the variety denomination. The suggested classification and Technology Center information should be supplied for provisional applications whether or not claims are present. If claims are not present in a provisional application, the suggested classification and Technology Center should be based upon the disclosure.
*****
(5) Domestic priority information. This information includes the application number, the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and § 1.78(a)(2) or § 1.78(a)(5), and need not otherwise be made part of the specification.
(6) Foreign priority information. This information includes the application number, country, and filing date of each foreign application
for which priority is claimed. Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55.
(7) Assignee information. This information includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application. Providing this information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
(c) Supplemental application data sheets. Supplemental application data sheets:
(1) May be subsequently supplied prior to payment of the issue fee either to correct or update information in a previously submitted application data sheet, or an oath or declaration under § 1.63 or § 1.67, except that inventorship changes are governed by § 1.48, correspondence changes are governed by § 1.33(a), and citizenship changes are governed by § 1.63 or § 1.67; and
(2) Must be titled “SupplementalApplication Data Sheet,” include all of the section headings listed in paragraph (b) of this section, include all appropriate data for each section heading, and must identify the information that is being changed, preferably with underlining for insertions, and strike-through or brackets for text removed.
(d) Inconsistencies between application data sheet and other documents. For inconsistencies between information that is supplied by both an application data sheet under this section and other documents.
(1) The latest submitted information will govern notwithstanding whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by a § 1.63 or § 1.67 oath or declaration, except as provided by paragraph (d)(3) of this section;
(2) The information in the application data sheet will govern when inconsistent with the information supplied at the same time by a designation of correspondence address or the inventor's oath or declaration. The information in the application data sheet will govern when inconsistent with the information supplied at any
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PATENT RULES
time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form.
(3) The oath or declaration under § 1.63 or § 1.67 governs inconsistencies with the application data sheet in the naming of inventors (§ 1.41(a)(1) ) and setting forth their citizenship (35 U.S.C. 115);
(4) The Office will capture bibliographic information from the application data sheet (notwithstanding whether an oath or declaration governs the information). Thus, the Office shall generally, for example, not look to an oath or declaration under § 1.63 to see if the bibliographic information contained therein is consistent with the bibliographic information captured from an application data sheet (whether the oath or declaration is submitted prior to or subsequent to the application data sheet). Captured bibliographic information derived from an application data sheet containing errors may be corrected if applicant submits a request therefor and a supplemental application data sheet.
[* Paras. (a), (b)(1), (b)(5), (b)(6), (b)(7), (c), and (d) above are applicable to applications filed before Sept. 16, 2012. For the current rule, including paras. (a), (b)(1), (b)(5), (b)(6), (b)(7), (c), and (d) applicable to applications filed on or after Sept. 16, 2012, see § 1.76.]
§ 1.77 Arrangement of application elements.
(a) The elements of the application, if applicable, should appear in the following order:
(1) Utility application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings.
(6) The inventor's oath or declaration.
(b) The specification should include the following sections in order:
(1) Title of the invention, which may be accompanied by an introductory portion stating the
name, citizenship, and residence of the applicant (unless included in the application data sheet).
(2) Cross-reference to related applications.
(3) Statement regarding federally sponsored research or development.
(4) The names of the parties to a joint research agreement.
(5) Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc (see § 1.52(e)(5)). The total number of compact discs including duplicates and the files on each compact disc shall be specified.
(6) Statement regarding prior disclosures by the inventor or a joint inventor.
(7) Background of the invention.
(8) Brief summary of the invention.
(9) Brief description of the several views of the drawing.
(10) Detailed description of the invention.
(11) A claim or claims.
(12) Abstract of the disclosure.
(13) “Sequence Listing,” if on paper (see §§ 1.821 through 1.825).
(c) The text of the specification sections defined in paragraphs (b)(1) through (b)(12) of this section, if applicable, should be preceded by a section heading in uppercase and without underlining or bold type.
[43 FR 20464, May 11, 1978; 46 FR 2612, Jan. 12, 1981; paras. (h) and (i), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (b) and (c) revised, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; para. (a)(6) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (b)(2) revised, (b)(6)-(12) redesignated as (b)(7)-(13), and para. (b)(6) added, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
§ 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
(a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. An applicant in a nonprovisional application, other than
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for a design patent, or an international application designating the United States may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.
(1) The nonprovisional application or international application designating the United States must be:
(i) Filed not later than twelve months after the date on which the provisional application was filed, subject to paragraph (b) of this section (a subsequent application); or
(ii) Entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a subsequent application that was filed within the period set forth in paragraph (a)(1)(i) of this section.
(2) Each prior-filed provisional application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(d) must have been paid for such provisional application within the time period set forth in § 1.53(g).
(3) Any nonprovisional application or international application designating the United States that claims the benefit of one or more prior-filed provisional applications must contain, or be amended to contain, a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number). If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)).
(4) The reference required by paragraph (a)(3) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on
which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed provisional application. Except as provided in paragraph (c) of this section, failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) of the prior-filed provisional application. The time periods in this paragraph do not apply if the later-filed application is:
(i) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
(ii) An international application filed under 35 U.S.C. 363 before November 29, 2000.
(5) If the prior-filed provisional application was filed in a language other than English and both an English-language translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application, the applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application, or an application data sheet (§ 1.76(b)(5)) eliminating the reference under paragraph (a)(3) of this section to the prior-filed provisional application, or the nonprovisional application will be abandoned. The translation and statement may be filed in the provisional application, even if the provisional application has become abandoned.
(6) If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed provisional
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application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(b) Delayed filing of the subsequent nonprovisional application or international application designating the United States. If the subsequent nonprovisional application or international application designating the United States has a filing date which is after the expiration of the twelve-month period set forth in paragraph (a)(1)(i) of this section but within two months from the expiration of the period set forth in paragraph (a)(1)(i) of this section, the benefit of the provisional application may be restored under PCT Rule 26 bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent nonprovisional application or international application designating the United States within the period set forth in paragraph (a)(1)(i) of this section was unintentional.
(1) A petition to restore the benefit of a provisional application under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, and any petition to restore the benefit of a provisional application under this paragraph must include:
(i) The reference required by 35 U.S.C. 119(e) to the prior-filed provisional application in an application data sheet (§ 1.76(b)(5)) identifying it by provisional application number (consisting of series code and serial number), unless previously submitted;
(ii) The petition fee as set forth in § 1.17(m); and
(iii) A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period set forth in paragraph (a)(1)(i) of this section was unintentional. The Director may require additional information
where there is a question whether the delay was unintentional.
(2) The restoration of the right of priority under PCT Rule 26 bis.3 to a provisional application does not affect the requirement to include the reference required by paragraph (a)(3) of this section to the provisional application in a national stage application under 35 U.S.C. 371 within the time period provided by paragraph (a)(4) of this section to avoid the benefit claim being considered waived.
(c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. If the reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section is presented in an application after the time period provided by paragraph (a)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application may be accepted if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application must be accompanied by:
(1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section to the prior-filed provisional application, unless previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the entire delay between the date the benefit claim was due under paragraph (a)(4) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or
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international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
(1) Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed application must either be:
(i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States;
(ii) An international design application entitled to a filing date in accordance with § 1.1023 and designating the United States; or
(iii) A nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in § 1.53(b) or (d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application.
(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
(3)
(i) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section must be submitted during the pendency of the later-filed application.
(ii) If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed application. The time periods in this paragraph do not apply if the later-filed application is:
(A) An application for a design patent;
(B) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
(C) An international application filed under 35 U.S.C. 363 before November 29, 2000.
(iii) Except as provided in paragraph (e) of this section, failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is considered a waiver of any benefit under 35 U.S.C. 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application.
(4) The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
(5) Cross-references to other related applications may be made when appropriate (see § 1.14), but cross-references to applications for which a benefit is not claimed under title 35, United States Code, must not be included in an application data sheet (§ 1.76(b)(5)).
(6) If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims the benefit
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of the filing date of a nonprovisional application or an international application designating the United States filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application. An applicant is not required to provide such a statement if either:
(i) The application claims the benefit of a nonprovisional application in which a statement under § 1.55(k), paragraph (a)(6) of this section, or this paragraph that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed; or
(ii) The applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the later filed application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(7) Where benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application or an international design application which designates but did not originate in the United States, the Office may require a certified copy of such application together with an English translation thereof if filed in another language.
(e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. If the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is presented after the time period provided by paragraph (d)(3) of this section, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States may be
accepted if the reference required by paragraph (d)(2) of this section was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121 , 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by:
(1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section to the prior-filed application, unless previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the entire delay between the date the benefit claim was due under paragraph (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(f) Applications containing patentably indistinct claims. Where two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
(g) Applications or patents under reexamination naming different inventors and containing patentably indistinct claims. If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain patentably indistinct claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the Office may require the applicant or assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on such date, and if not, indicate which named inventor is the prior inventor, as applicable. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the patentably indistinct claims may be rejected under the doctrine of double patenting in view of such
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commonly owned or assigned applications or patents under reexamination.
(h) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (a)(3) and (d)(2) of this section that any specific reference to a prior-filed application be presented in an application data sheet (§ 1.76), this requirement in paragraph (a)(3) and (d)(2) of this section will be satisfied by the presentation of such specific reference in the first sentence(s) of the specification following the title in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any specific reference submitted for a petition under paragraph (b) of this section to restore the benefit of a provisional application.
(i) Petitions required in international applications. If a petition under paragraph (b), (c), or (e) of this section is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then such petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application and will be treated as having been filed in the international application.
(j) Benefit under 35 U.S.C. 386(c). Benefit under 35 U.S.C. 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
(k) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
[36 FR 7312, Apr. 17, 1971; 49 FR 555, Jan. 4, 1984; paras. (a), (c) & (d), 50 FR 9380, Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar. 21, 1985; para. (a) revised 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. (a)(1) and (a)(2) revised and paras. (a)(3) and (a)(4) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (c) revised and para. (d) deleted, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(3) revised, 65 FR 14865, Mar. 20, 2000,
effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (a)(2), (a)(4), and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; paras. (a)(2), (a)(3), and (a)(4) revised and paras. (a)(5) and (a)(6) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (a) revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001; paras. (a)(3)(iii) & (a)(6)(iii) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para (a)(3) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; paras. (a)(1), (a)(2)(iii), (a)(5)(iii) and (c) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; para. (a)(4) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para.(a)(1)(iii) removed and para. (a)(1)(ii) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; para. (a)(5)(iv) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras. (a)(1) introductory text and (a)(4) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (a)(2)(iii), (a)(5)(iii), (a)(5)(iv), and (c) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.79 Reservation clauses not permitted.
A reservation for a future application of subject matter disclosed but not claimed in a pending application will not be permitted in the pending application, but an application disclosing unclaimed subject matter may contain a reference to a later filed application of the same applicant or owned by a common assignee disclosing and claiming that subject matter.
THE DRAWINGS
§ 1.81 Drawings required in patent application.
[Editor Note: Para. (a) below is applicable only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013*]
(a) The applicant for a patent is required to furnish a drawing of the invention where necessary for the understanding of the subject matter sought to be patented. Since corrections are the responsibility of the applicant, the original
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drawing(s) should be retained by the applicant for any necessary future correction.
(b) Drawings may include illustrations which facilitate an understanding of the invention (for example, flowsheets in cases of processes, and diagrammatic views).
(c) Whenever the nature of the subject matter sought to be patented admits of illustration by a drawing without its being necessary for the understanding of the subject matter and the applicant has not furnished such a drawing, the examiner will require its submission within a time period of not less than two months from the date of the sending of a notice thereof.
(d) Drawings submitted after the filing date of the application may not be used to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.
[43 FR 4015, Jan. 31, 1978; para. (a), 53 FR 47809, Nov. 28, 1988, effective Jan. 1, 1989; para. (a) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
[* Para. (a) above is only applicable to applications filed under 35 U.S.C. 111 on or after Dec. 18, 2013. See § 1.81 (2012-09-16 thru 2013-12-17) for para. (a) applicable to applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012 and before Dec. 18, 2013. See § 1.81 (pre-AIA) for para. (a) applicable to applications filed before Sept. 16, 2012.]
§ 1.81 (2012-09-16 thru 2013-12-17) Drawings required in patent application.
[Editor Note: Para. (a) below is applicable to patent applications filed on or after September 16, 2012 and before December 18, 2013.]
(a) The applicant for a patent is required to furnish a drawing of the invention where necessary for the understanding of the subject matter sought to be patented; this drawing, or a high quality copy thereof, must be filed with the application. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.
*****
[* Para. (a) above is applicable to applications filed under 35 U.S.C. 111 or 363 on or after Sept. 16, 2012 and before Dec. 18, 2013. See § 1.81 for the current rule, including para. (a) applicable to applications filed under 35 U.S.C. 111 on or after Dec. 18, 2013. See § 1.81 (pre-AIA) for para. (a) applicable to applications filed before Sept. 16, 2012.]
§ 1.81 (pre-AIA) Drawings required in patent application.
[Editor Note: Para. (a) below is applicable to patent applications filed before September 16, 2012*]
(a) The applicant for a patent is required to furnish a drawing of his or her invention where necessary for the understanding of the subject matter sought to be patented; this drawing, or a high quality copy thereof, must be filed with the application. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.
*****
[ * Para. (a) above is applicable to applications filed before Sept. 16, 2012. See § 1.81 for the current rule including para. (a) applicable to applications filed under 35 U.S.C. 111 on or after Dec. 18, 2013. See § 1.81 (2012-09-16 thru 2013-12-17) for para. (a) applicable to applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012 and before Dec. 18, 2013. ]
§ 1.83 Content of drawing.
(a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation ( e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that are included in sequence listings should not be duplicated in the drawings.
(b) When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
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(c) Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. Such corrections are subject to the requirements of § 1.81(d).
[31 FR 12923, Oct. 4, 1966; 43 FR 4015, Jan. 31, 1978; paras. (a) and (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.84 Standards for drawings.
(a) Drawings. There are two acceptable categories for presenting drawings in utility and design patent applications.
(1) Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings; or
(2) Color. Color drawings are permitted in design applications. Where a design application contains color drawings, the application must include the number of sets of color drawings required by paragraph (a)(2)(ii) of this section and the specification must contain the reference required by paragraph (a)(2)(iii) of this section. On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application. The color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color drawings are not permitted in international applications (see PCT Rule 11.13). The Office will accept color drawings in utility patent applications only after granting a petition filed under this paragraph explaining why the color drawings are necessary. Any such petition must include the following:
(i) The fee set forth in § 1.17(h);
(ii) One (1) set of color drawings if submitted via the Office electronic filing system or three (3) sets of color drawings if not submitted via the Office electronic filing system; and
(iii) An amendment to the specification to insert (unless the specification contains or has been previously amended to contain) the following language as the first paragraph of the brief description of the drawings:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
(b) Photographs.—
(1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots ( e.g., immunological, western, Southern, and northern), auto- radiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.
(2) Color photographs. Color photographs will be accepted in utility and design patent applications if the conditions for accepting color drawings and black and white photographs have been satisfied. See paragraphs (a)(2) and (b)(1) of this section.
(c) Identification of drawings. Identifying indicia should be provided, and if provided, should include the title of the invention, inventor’s name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet within the top margin. Each drawing sheet submitted after the filing date of an application must be identified as either “Replacement Sheet” or “New Sheet”
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pursuant to § 1.121(d). If a marked-up copy of any amended drawing figure including annotations indicating the changes made is filed, such marked-up copy must be clearly labeled as “Annotated Sheet” pursuant to § 1.121(d)(1).
(d) Graphic forms in drawings. Chemical or mathematical formulae, tables, and waveforms may be submitted as drawings and are subject to the same requirements as drawings. Each chemical or mathematical formula must be labeled as a separate figure, using brackets when necessary, to show that information is properly integrated. Each group of waveforms must be presented as a single figure, using a common vertical axis with time extending along the horizontal axis. Each individual waveform discussed in the specification must be identified with a separate letter designation adjacent to the vertical axis.
(e) Type of paper. Drawings submitted to the Office must be made on paper which is flexible, strong, white, smooth, non-shiny, and durable. All sheets must be reasonably free from cracks, creases, and folds. Only one side of the sheet may be used for the drawing. Each sheet must be reasonably free from erasures and must be free from alterations, overwritings, and interlineations. Photographs must be developed on paper meeting the sheet-size requirements of paragraph (f) of this section and the margin requirements of paragraph (g) of this section. See paragraph (b) of this section for other requirements for photographs.
(f) Size of paper. All drawing sheets in an application must be the same size. One of the shorter sides of the sheet is regarded as its top. The size of the sheets on which drawings are made must be:
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or
(2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).
(g) Margins. The sheets must not contain frames around the sight ( i.e., the usable surface), but should have scan target points ( i.e., cross-hairs) printed on two cater-corner margin corners. Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6
cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.
(h) Views. The drawing must contain as many views as necessary to show the invention. The views may be plan, elevation, section, or perspective views. Detail views of portions of elements, on a larger scale if necessary, may also be used. All views of the drawing must be grouped together and arranged on the sheet(s) without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract. Views must not be connected by projection lines and must not contain center lines. Waveforms of electrical signals may be connected by dashed lines to show the relative timing of the waveforms.
(1) Exploded views. Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.
(2) Partial views. When necessary, a view of a large machine or device in its entirety may be broken into partial views on a single sheet, or extended over several sheets if there is no loss in facility of understanding the view. Partial views drawn on separate sheets must always be capable of being linked edge to edge so that no partial view contains parts of another partial view. A smaller scale view should be included showing the whole formed by the partial views and indicating the positions of the parts shown. When a portion of a view is enlarged for magnification purposes, the view and the enlarged view must each be labeled as separate views.
(i) Where views on two or more sheets form, in effect, a single complete view, the views on the several sheets must be so arranged that the complete figure can be assembled without concealing any part of any of the views appearing on the various sheets.
(ii) A very long view may be divided into several parts placed one above the other on a single sheet. However, the relationship between the different parts must be clear and unambiguous.
(3) Sectional views. The plane upon which a sectional view is taken should be indicated on the
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view from which the section is cut by a broken line. The ends of the broken line should be designated by Arabic or Roman numerals corresponding to the view number of the sectional view, and should have arrows to indicate the direction of sight. Hatching must be used to indicate section portions of an object, and must be made by regularly spaced oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished without difficulty. Hatching should not impede the clear reading of the reference characters and lead lines. If it is not possible to place reference characters outside the hatched area, the hatching may be broken off wherever reference characters are inserted. Hatching must be at a substantial angle to the surrounding axes or principal lines, preferably 45°. A cross section must be set out and drawn to show all of the materials as they are shown in the view from which the cross section was taken. The parts in cross section must show proper material(s) by hatching with regularly spaced parallel oblique strokes, the space between strokes being chosen on the basis of the total area to be hatched. The various parts of a cross section of the same item should be hatched in the same manner and should accurately and graphically indicate the nature of the material(s) that is illustrated in cross section. The hatching of juxtaposed different elements must be angled in a different way. In the case of large areas, hatching may be confined to an edging drawn around the entire inside of the outline of the area to be hatched. Different types of hatching should have different conventional meanings as regards the nature of a material seen in cross section.
(4) Alternate position. A moved position may be shown by a broken line superimposed upon a suitable view if this can be done without crowding; otherwise, a separate view must be used for this purpose.
(5) Modified forms. Modified forms of construction must be shown in separate views.
(i) Arrangement of views . One view must not be placed upon another or within the outline of another. All views on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright position. If views wider than the width of the sheet are necessary for the clearest illustration of the invention, the sheet may be turned on its side so that the top of the sheet, with the appropriate top margin
to be used as the heading space, is on the right-hand side. Words must appear in a horizontal, left-to-right fashion when the page is either upright or turned so that the top becomes the right side, except for graphs utilizing standard scientific convention to denote the axis of abscissas (of X) and the axis of ordinates (of Y).
(j) Front page view. The drawing must contain as many views as necessary to show the invention. One of the views should be suitable for inclusion on the front page of the patent application publication and patent as the illustration of the invention. Views must not be connected by projection lines and must not contain center lines. Applicant may suggest a single view (by figure number) for inclusion on the front page of the patent application publication and patent.
(k) Scale. The scale to which a drawing is made must be large enough to show the mechanism without crowding when the drawing is reduced in size to two-thirds in reproduction. Indications such as “actual size” or “scale 1/2” on the drawings are not permitted since these lose their meaning with reproduction in a different format.
(l) Character of lines, numbers, and letters. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
(m) Shading. The use of shading in views is encouraged if it aids in understanding the invention and if it does not reduce legibility. Shading is used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object. Flat parts may also be lightly shaded. Such shading is preferred in the case of parts shown in perspective, but not for cross sections. See paragraph (h)(3) of this section. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy
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lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color.
(n) Symbols. Graphical drawing symbols may be used for conventional elements when appropriate. The elements for which such symbols and labeled representations are used must be adequately identified in the specification. Known devices should be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art. Other symbols which are not universally recognized may be used, subject to approval by the Office, if they are not likely to be confused with existing conventional symbols, and if they are readily identifiable.
(o) Legends. Suitable descriptive legends may be used subject to approval by the Office, or may be required by the examiner where necessary for understanding of the drawing. They should contain as few words as possible.
(p) Numbers, letters, and reference characters.
(1) Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g., encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference characters should be arranged to follow the profile of the object depicted.
(2) The English alphabet must be used for letters, except where another alphabet is customarily used, such as the Greek alphabet to indicate angles, wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference characters must measure at least .32 cm. (1/8 inch) in height. They should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary, such as indicating a surface or cross section, a reference character may be underlined and a blank space may be left in the hatching or shading where the character occurs so that it appears distinct.
(4) The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts.
(5) Reference characters not mentioned in the description shall not appear in the drawings. Reference characters mentioned in the description must appear in the drawings.
(q) Lead lines. Lead lines are those lines between the reference characters and the details referred to. Such lines may be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing. See paragraph (l) of this section.
(r) Arrows. Arrows may be used at the ends of lines, provided that their meaning is clear, as follows:
(1) On a lead line, a freestanding arrow to indicate the entire section towards which it points;
(2) On a lead line, an arrow touching a line to indicate the surface shown by the line looking along the direction of the arrow; or
(3) To show the direction of movement.
(s) Copyright or Mask Work Notice. A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing immediately below the figure representing the copyright or mask work material and be limited to letters having a print size of .32 cm. to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be limited to only those elements provided for by law. For example, “©1983 John Doe” (17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in § 1.71(e) is
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included at the beginning (preferably as the first paragraph) of the specification.
(t) Numbering of sheets of drawings. The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1, within the sight as defined in paragraph (g) of this section. These numbers, if present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second being the total number of sheets of drawings, with no other marking.
(u) Numbering of views.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation “FIG.” Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear.
(2) Numbers and letters identifying the views must be simple and clear and must not be used in association with brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference characters.
(v) Security markings . Authorized security markings may be placed on the drawings provided they are outside the sight, preferably centered in the top margin.
(w) Corrections. Any corrections on drawings submitted to the Office must be durable and permanent.
(x) Holes. No holes should be made by applicant in the drawing sheets.
(y) Types of drawings. See § 1.152 for design drawings, § 1.1026 for international design
reproductions, § 1.165 for plant drawings, and § 1.173(a)(2) for reissue drawings.
[24 FR 10332, Dec. 22, 1959; 31 FR 12923, Oct. 4, 1966; 36 FR 9775, May 28, 1971; 43 FR 20464, May 11, 1978; 45 FR 73657, Nov. 6,1980; paras. (a), (b), (i), (j), and (l) amended, paras. (n), (o), and (p) added, 53 FR 47809, Nov. 28, 1988, effective Jan. 1, 1989; revised, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. (c), (f), (g), and (x) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (a)(2)(i), (b), (c) & (g) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a), (b), (c), (j), (k), (o), and (x) revised, and para. (y) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(2), (e), and (j) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; para. (a)(2) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (y) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para.(a)(2) introductory text revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (a)(2) and (y) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.85 Corrections to drawings.
(a) A utility or plant application will not be placed on the files for examination until objections to the drawings have been corrected. Except as provided in § 1.215(c), any patent application publication will not include drawings filed after the application has been placed on the files for examination. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action (§ 1.135(c)). If a drawing in a design application meets the requirements of § 1.84(e), (f), and (g) and is suitable for reproduction, but is not otherwise in compliance with § 1.84, the drawing may be admitted for examination.
(b) The Office will not release drawings for purposes of correction. If corrections are necessary, new corrected drawings must be submitted within the time set by the Office.
(c) If a corrected drawing is required or if a drawing does not comply with § 1.84 or an amended drawing submitted under § 1.121(d) in a nonprovisional international design application does not comply with § 1.1026 at the time an application is allowed, the Office may notify the applicant in a
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notice of allowability and set a three-month period of time from the mail date of the notice of allowability within which the applicant must file a corrected drawing in compliance with § 1.84 or 1.1026, as applicable, to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)).
[47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (c) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (c) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.88 [Reserved]
[Deleted, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993]
MODELS, EXHIBITS, SPECIMENS
§ 1.91 Models or exhibits not generally admitted as part of application or patent.
(a) A model or exhibit will not be admitted as part of the record of an application unless it:
(1) Substantially conforms to the requirements of § 1.52 or § 1.84;
(2) Is specifically required by the Office; or
(3) Is filed with a petition under this section including:
(i) The fee set forth in § 1.17(h); and
(ii) An explanation of why entry of the model or exhibit in the file record is necessary to demonstrate patentability.
(b) Notwithstanding the provisions of paragraph (a) of this section, a model, working model, or other physical exhibit may be required by the Office if deemed necessary for any purpose in examination of the application.
(c) Unless the model or exhibit substantially conforms to the requirements of § 1.52 or § 1.84 under paragraph (a)(1) of this section, it must be accompanied by photographs that show multiple views of the material features of the model or exhibit
and that substantially conform to the requirements of § 1.84.
[Revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(3)(i) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§ 1.92 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.93 Specimens.
When the invention relates to a composition of matter, the applicant may be required to furnish specimens of the composition, or of its ingredients or intermediates, for the purpose of inspection or experiment.
§ 1.94 Return of models, exhibits or specimens.
(a) Models, exhibits, or specimens may be returned to the applicant if no longer necessary for the conduct of business before the Office. When applicant is notified that a model, exhibit, or specimen is no longer necessary for the conduct of business before the Office and will be returned, applicant must arrange for the return of the model, exhibit, or specimen at the applicant’s expense. The Office will dispose of perishables without notice to applicant unless applicant notifies the Office upon submission of the model, exhibit or specimen that a return is desired and makes arrangements for its return promptly upon notification by the Office that the model, exhibit or specimen is no longer necessary for the conduct of business before the Office.
(b) Applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from the application. The provisions of this paragraph do not apply to a model or exhibit that substantially conforms to the requirements of § 1.52 or § 1.84, where the model or exhibit has been described by photographs that substantially conform to § 1.84, or where the model, exhibit or specimen is perishable.
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(c) Where applicant is notified, pursuant to paragraph (a) of this section, of the need to arrange for return of a model, exhibit or specimen, applicant must arrange for the return within the period set in such notice, to avoid disposal of the model, exhibit or specimen by the Office. Extensions of time are available under § 1.136, except in the case of perishables. Failure to establish that the return of the item has been arranged for within the period set or failure to have the item removed from Office storage within a reasonable amount of time notwithstanding any arrangement for return, will permit the Office to dispose of the model, exhibit or specimen.
[Revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§ 1.95 Copies of exhibits.
Copies of models or other physical exhibits will not ordinarily be furnished by the Office, and any model or exhibit in an application or patent shall not be taken from the Office except in the custody of an employee of the Office specially authorized by the Director.
[Revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 1.96 Submission of computer program listings.
(a) General. Descriptions of the operation and general content of computer program listings should appear in the description portion of the specification. A computer program listing for the purpose of this section is defined as a printout that lists in appropriate sequence the instructions, routines, and other contents of a program for a computer. The program listing may be either in machine or machine-independent (object or source) language which will cause a computer to perform a desired procedure or task such as solve a problem, regulate the flow of work in a computer, or control or monitor events. Computer program listings may be submitted in patent applications as set forth in paragraphs (b) and (c) of this section.
(b) Material which will be printed in the patent: If the computer program listing is contained in 300 lines or fewer, with each line of 72 characters or
fewer, it may be submitted either as drawings or as part of the specification.
(1) Drawings. If the listing is submitted as drawings, it must be submitted in the manner and complying with the requirements for drawings as provided in § 1.84. At least one figure numeral is required on each sheet of drawing.
(2) Specification.
(i) If the listing is submitted as part of the specification, it must be submitted in accordance with the provisions of § 1.52.
(ii) Any listing having more than 60 lines of code that is submitted as part of the specification must be positioned at the end of the description but before the claims. Any amendment must be made by way of submission of a substitute sheet.
(c) As an appendix which will not be printed: Any computer program listing may, and any computer program listing having over 300 lines (up to 72 characters per line) must, be submitted on a compact disc in compliance with § 1.52(e). A compact disc containing such a computer program listing is to be referred to as a “computer program listing appendix.” The “computer program listing appendix” will not be part of the printed patent. The specification must include a reference to the “computer program listing appendix” at the location indicated in § 1.77(b)(5).
(1) Multiple computer program listings for a single application may be placed on a single compact disc. Multiple compact discs may be submitted for a single application if necessary. A separate compact disc is required for each application containing a computer program listing that must be submitted on a “computer program listing appendix.”
(2) The “computer program listing appendix” must be submitted on a compact disc that complies with § 1.52(e) and the following specifications (no other format shall be allowed):
(i) Computer Compatibility: IBM PC/XT/AT, or compatibles, or Apple Macintosh;
(ii) Operating System Compatibility: MS-DOS, MS-Windows, Unix, or Macintosh;
(iii) Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
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(iv) Control Codes: the data must not be dependent on control characters or codes which are not defined in the ASCII character set; and
(v) Compression: uncompressed data.
[46 FR 2612, Jan. 12, 1981; para. (b)(1), 54 FR 47519, Nov. 15, 1989, effective Jan. 16, 1990; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (b) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000 (effective date corrected, 65 FR 78958, Dec. 18, 2000; para. (c) introductory text revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005]
INFORMATION DISCLOSURE STATEMENT
§ 1.97 Filing of information disclosure statement.
(a) In order for an applicant for a patent or for a reissue of a patent to have an information disclosure statement in compliance with § 1.98 considered by the Office during the pendency of the application, the information disclosure statement must satisfy one of paragraphs (b), (c), or (d) of this section.
(b) An information disclosure statement shall be considered by the Office if filed by the applicant within any one of the following time periods:
(1) Within three months of the filing date of a national application other than a continued prosecution application under § 1.53(d);
(2) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
(3) Before the mailing of a first Office action on the merits;
(4) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114; or
(5) Within three months of the date of publication of the international registration under Hague Agreement Article 10(3) in an international design application.
(c) An information disclosure statement shall be considered by the Office if filed after the period specified in paragraph (b) of this section, provided that the information disclosure statement is filed before the mailing date of any of a final action under
§ 1.113, a notice of allowance under § 1.311, or an action that otherwise closes prosecution in the application, and it is accompanied by one of:
(1) The statement specified in paragraph (e) of this section; or
(2) The fee set forth in § 1.17(p).
(d) An information disclosure statement shall be considered by the Office if filed by the applicant after the period specified in paragraph (c) of this section, provided that the information disclosure statement is filed on or before payment of the issue fee and is accompanied by:
(1) The statement specified in paragraph (e) of this section; and
(2) The fee set forth in § 1.17(p).
(e) A statement under this section must state either:
(1) That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or
(2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
(f) No extensions of time for filing an information disclosure statement are permitted under § 1.136. If a bona fide attempt is made to comply with § 1.98, but part of the required content is inadvertently omitted, additional time may be given to enable full compliance.
(g) An information disclosure statement filed in accordance with this section shall not be construed as a representation that a search has been made.
(h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is
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considered to be, material to patentability as defined in § 1.56(b).
(i) If an information disclosure statement does not comply with either this section or § 1.98, it will be placed in the file but will not be considered by the Office.
[48 FR 2712, Jan. 20, 1983, effective date Feb. 27, 1983; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a)- (d) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (c)-(e) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (a) through (e) and (i) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (b)(3)-(4) revised and para. (b)(5) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.98 Content of information disclosure statement.
(a) Any information disclosure statement filed under § 1.97 shall include the items listed in paragraphs (a)(1), (a)(2) and (a)(3) of this section.
(1) A list of all patents, publications, applications, or other information submitted for consideration by the Office. U.S. patents and U.S. patent application publications must be listed in a section separately from citations of other documents. Each page of the list must include:
(i) The application number of the application in which the information disclosure statement is being submitted;
(ii) A column that provides a space, next to each document to be considered, for the examiner’s initials; and
(iii) A heading that clearly indicates that the list is an information disclosure statement.
(2) A legible copy of:
(i) Each foreign patent;
(ii) Each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
(iii) For each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the
application, or that portion of the application which caused it to be listed including any claims directed to that portion; and
(iv) All other information or that portion which caused it to be listed.
(3)(i) A concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other information listed that is not in the English language. The concise explanation may be either separate from applicant’s specification or incorporated therein.
(ii) A copy of the translation if a written English-language translation of a non-English-language document, or portion thereof, is within the possession, custody, or control of, or is readily available to any individual designated in § 1.56(c).
(b)(1) Each U.S. patent listed in an information disclosure statement must be identified by inventor, patent number, and issue date.
(2) Each U.S. patent application publication listed in an information disclosure statement shall be identified by applicant, patent application publication number, and publication date.
(3) Each U.S. application listed in an information disclosure statement must be identified by the inventor, application number, and filing date.
(4) Each foreign patent or published foreign patent application listed in an information disclosure statement must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application.
(5) Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.
(c) When the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of one of the patents or publications as specified in paragraph (a) of this section may be submitted without copies of the other patents or publications, provided that it is stated that these other patents or publications are cumulative.
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(d) A copy of any patent, publication, pending U.S. application or other information, as specified in paragraph (a) of this section, listed in an information disclosure statement is required to be provided, even if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by, the Office in an earlier application, unless:
(1) The earlier application is properly identified in the information disclosure statement and is relied on for an earlier effective filing date under 35 U.S.C. 120; and
(2) The information disclosure statement submitted in the earlier application complies with paragraphs (a) through (c) of this section.
[42 FR 5594, Jan. 28, 1977; para. (a) 48 FR 2712, Jan. 20, 1983, effective date Feb. 27, 1983; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(2) and (b) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (e) added, 68 FR 38611, June 30, 2003, effective July 30, 2003; paras. (a) and (c) revised and para. (e) removed, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§ 1.99 [Reserved]
[Removed and reserved, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012]
EXAMINATION OF APPLICATIONS
§ 1.101 [Reserved]
[29 FR 13470, Sept. 30, 1964; para. (a), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; 52 FR 20046, May 28, 1987, effective July 1, 1987; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Director to expedite the business of the Office, or upon filing of a request under paragraph (b) or (e) of this section or upon filing a petition or request under paragraph (c) or (d) of this section with a showing which, in
the opinion of the Director, will justify so advancing it.
(b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination.
(c) A petition to make an application special may be filed without a fee if the basis for the petition is:
(1) The applicant’s age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy resources; or
(iii) Contribute to countering terrorism.
(d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the fee set forth in § 1.17(h).
(e) A request for prioritized examination under this paragraph must comply with the requirements of this paragraph and be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, the publication fee set forth in § 1.18(d). An application for which prioritized examination has been requested may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim. Prioritized examination under this paragraph will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings. A request for prioritized examination must also comply with the requirements of paragraph (e)(1) or paragraph (e)(2) of this section.
(1) A request for prioritized examination may be filed with an original utility or plant nonprovisional application under 35 U.S.C. 111(a). The application must include a specification as prescribed by 35 U.S.C. 112 including at least one claim, a drawing when necessary, and the inventor’s oath or declaration on filing, except that the filing
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of an inventor’s oath or declaration may be postponed in accordance with § 1.53(f)(3) if an application data sheet meeting the conditions specified in § 1.53(f)(3)(i) is present upon filing. If the application is a utility application, it must be filed via the Office’s electronic filing system and include the filing fee under § 1.16(a), search fee under § 1.16(k), and examination fee under § 1.16(o) upon filing. If the application is a plant application, it must include the filing fee under § 1.16(c), search fee under § 1.16(m), and examination fee under § 1.16(q) upon filing. The request for prioritized examination in compliance with this paragraph must be present upon filing of the application, except that the applicant may file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, and any multiple dependent claim not later than one month from a first decision on the request for prioritized examination. This one-month time period is not extendable.
(2) A request for prioritized examination may be filed with or after a request for continued examination in compliance with § 1.114. If the application is a utility application, the request must be filed via the Office’s electronic filing system. The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114. Only a single such request for prioritized examination under this paragraph may be granted in an application.
[24 FR 10332, Dec. 22, 1959; paras. (a), (c), and (d), 47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (d) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (c) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a) revised and para. (e) added, 76 FR 18399, Apr. 4, 2011, effective date delayed until further notice, 76 FR 23876, April 29, 2011 and withdrawn effective Sept. 23, 2011, 76 FR 59050, Sept. 23, 2011; para. (a) revised and para. (e) added, 76 FR 59050, Sept. 23, 2011, effective Sept. 26, 2011; para. (e) revised, 76 FR 78566, Dec. 19, 2011, effective Dec. 19, 2011; para. (e)(1) revised, 79 FR 12386, Mar. 5, 2014, effective Mar. 5, 2014 (adopted as final, 79 FR 68124, Nov. 14, 2014)]
§ 1.103 Suspension of action by the Office.
(a) Suspension for cause. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph for good and sufficient cause. The Office will not suspend action if a reply by applicant to an Office action is outstanding. Any petition for suspension of action under this paragraph must specify a period of suspension not exceeding six months. Any petition for suspension of action under this paragraph must also include:
(1) A showing of good and sufficient cause for suspension of action; and
(2) The fee set forth in § 1.17(g), unless such cause is the fault of the Office.
(b) Limited suspension of action in a continued prosecution application (CPA) filed under § 1.53(d). On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph in a continued prosecution application filed under § 1.53(d) for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for an application filed under § 1.53(d), specify the period of suspension, and include the processing fee set forth in § 1.17(i).
(c) Limited suspension of action after a request for continued application (RCE) under § 1.114. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph after the filing of a request for continued examination in compliance with § 1.114 for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for continued examination under § 1.114, specify the period of suspension, and include the processing fee set forth in § 1.17(i).
(d) Deferral of examination. On request of the applicant, the Office may grant a deferral of examination under the conditions specified in this paragraph for a period not extending beyond three years from the earliest filing date for which a benefit is claimed under title 35, United States Code. A request for deferral of examination under this paragraph must include the publication fee set forth in § 1.18(d) and the processing fee set forth in §
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1.17(i). A request for deferral of examination under this paragraph will not be granted unless:
(1) The application is an original utility or plant application filed under § 1.53(b) or resulting from entry of an international application into the national stage after compliance with § 1.495;
(2) The applicant has not filed a nonpublication request under § 1.213(a), or has filed a request under § 1.213(b) to rescind a previously filed nonpublication request;
(3) The application is in condition for publication as provided in § 1.211(c); and
(4) The Office has not issued either an Office action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
(e) Notice of suspension on initiative of the Office. The Office will notify applicant if the Office suspends action by the Office on an application on its own initiative.
(f) Suspension of action for public safety or defense. The Office may suspend action by the Office by order of the Director if the following conditions are met:
(1) The application is owned by the United States;
(2) Publication of the invention may be detrimental to the public safety or defense; and
(3) The appropriate department or agency requests such suspension.
[24 FR 10332, Dec. 22, 1959; 33 FR 5624, Apr. 11, 1968; paras. (a) and (b), 47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (d), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; para. (a), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 50092, Aug. 16, 2000, effective Aug. 16, 2000; paras. (d) through (f) redesignated as (e) through (g) and para. (d) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (d)(1) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (f) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (g) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a)(2) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (g) removed, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
§ 1.104 Nature of examination.
(a) Examiner’s action.
(1) On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application or patent under reexamination with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.
(2) The applicant, or in the case of a reexamination proceeding, both the patent owner and the requester, will be notified of the examiner’s action. The reasons for any adverse action or any objection or requirement will be stated in an Office action and such information or references will be given as may be useful in aiding the applicant, or in the case of a reexamination proceeding the patent owner, to judge the propriety of continuing the prosecution.
(3) An international-type search will be made in all national applications filed on and after June 1, 1978.
(4) Any national application may also have an international-type search report prepared thereon at the time of the national examination on the merits, upon specific written request therefor and payment of the international-type search report fee set forth in § 1.21(e). The Patent and Trademark Office does not require that a formal report of an international-type search be prepared in order to obtain a search fee refund in a later filed international application.
(b) Completeness of examiner’s action. The examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable.
(c) Rejection of claims.
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(1) If the invention is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected.
(2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.
(3) In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section.
(4)(i) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(ii) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if:
(A) The applicant or patent owner provides a statement to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(B) The application for patent for the claimed invention discloses or is amended to
disclose the names of the parties to the joint research agreement.
(5)(i) Subject matter which qualifies as prior art under35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application filed on or after November 29, 1999, or any patent issuing thereon, in an application filed before November 29, 1999, but pending on December 10, 2004, or any patent issuing thereon, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, at the time the claimed invention was made, were owned by the same person or subject to an obligation of assignment to the same person.
(ii) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application pending on or after December 10, 2004, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect prior to March 16, 2013, if:
(A) The applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention were made by or on behalf of the parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(6) Patents issued prior to December 10, 2004, from applications filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in effect on November 28, 1999.
(d) Citation of references.
(1) If domestic patents are cited by the examiner, their numbers and dates, and the names
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of the patentees will be stated. If domestic patent application publications are cited by the examiner, their publication number, publication date, and the names of the applicants will be stated. If foreign published applications or patents are cited, their nationality or country, numbers and dates, and the names of the patentees will be stated, and such other data will be furnished as may be necessary to enable the applicant, or in the case of a reexamination proceeding, the patent owner, to identify the published applications or patents cited. In citing foreign published applications or patents, in case only a part of the document is involved, the particular pages and sheets containing the parts relied upon will be identified. If printed publications are cited, the author (if any), title, date, pages or plates, and place of publication, or place where a copy can be found, will be given.
(2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.
(e) Reasons for allowance. If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication.
[43 FR 20465, May 11, 1978; 46 FR 29182, May 29, 1981; para. (d), 47 FR 41276, Sept. 17, 1982, effective date Oct. 1, 1982; para. (e), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; para. (e), 57 FR 29642, July 6, 1992, effective Sept. 4, 1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (c)(4) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (a)(2) and (e) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(5) removed and para. (d)(1) revised, 65 FR 57024, Sept. 20, 2000, effective
Nov. 29, 2000; para. (c)(4) revised, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; para. (c)(4) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; paras. (a)(1) and (b) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); paras. (a)(1) and (b) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras.(c)(4) and (c)(5) revised and (c)(6) added, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
§ 1.105 Requirements for information.
[Editor Note: Some* paragraphs below are not applicable to patent applications filed before Sept. 16, 2012]
(a)(1) In the course of examining or treating a matter in a pending or abandoned application, in a patent, or in a reexamination proceeding, including a reexamination proceeding ordered as a result of a supplemental examination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
(i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
(ii) Search: Whether a search of the prior art was made, and if so, what was searched.
(iii) Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
(iv) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
(v) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
(vi) Improvements: Where the claimed invention is an improvement, identification of what is being improved.
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(vii) In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
(viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.
(2) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
(iii) Stipulations as to facts with which the applicant may agree or disagree.
(3) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
(b) The requirement for information of paragraph (a)(1) of this section may be included in an Office action, or sent separately.
(c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136.
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec.1, 1997; added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(3) revised and paras. (a)(1)(viii) and (a)(4) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(1)(ix) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (a)(1)(ix) removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (a)(2) removed and paras. (a)(3) and (a)(4) redesignated as (a)(2) and (a)(3), 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (a)(1) introductory text revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.105 (pre-AIA) for the rule otherwise in effect.]
§ 1.105 (pre-AIA) Requirements for information.
[Editor Note: Some* paragraphs below are not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
(a)(1) In the course of examining or treating a matter in a pending or abandoned application filed under 35 U.S.C. 111 or 371 (including a reissue application), in a patent, or in a reexamination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
(i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
(ii) Search: Whether a search of the prior art was made, and if so, what was searched.
(iii) Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
(iv) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
(v) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
(vi) Improvements : Where the claimed invention is an improvement, identification of what is being improved.
(vii) In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
(viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information
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PATENT RULES
pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.
(2) Where an assignee has asserted its right to prosecute pursuant to § 3.71(a) of this chapter, matters such as paragraphs (a)(1)(i), (iii), and (vii) of this section may also be applied to such assignee.
(3) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
(iii) Stipulations as to facts with which the applicant may agree or disagree.
(4) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
(b) The requirement for information of paragraph (a)(1) of this section may be included in an Office action, or sent separately.
(c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136.
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec.1, 1997; added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(3) revised and paras. (a)(1)(viii) and (a)(4) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(1)(ix) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (a)(1)(ix) removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR)]
[*See § 1.105 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.106 [Reserved]
[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; para. (c) added, 47 FR 21752, May 19, 1982, effective July 1, 1982; paras. (d) and (e), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.107 [Reserved]
[46 FR 29182, May 29, 1981; para. (a) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.108 [Reserved]
[50 FR 9381, Mar. 7, 1985, effective May 8, 1985; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.109 Effective filing date of a claimed invention under the Leahy-Smith America Invents Act.
(a) The effective filing date for a claimed invention in a patent or application for patent, other than in a reissue application or reissued patent, is the earliest of:
(1) The actual filing date of the patent or the application for the patent containing a claim to the invention; or
(2) The filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, 365, or 386.
(b) The effective filing date for a claimed invention in a reissue application or a reissued patent is determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
[Added 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.110 Inventorship and date of invention of the subject matter of individual claims.
When one or more joint inventors are named in an application or patent, the Office may require an applicant or patentee to identify the inventorship and ownership or obligation to assign ownership, of each claimed invention on its effective filing date (as defined in § 1.109) or on its date of invention, as applicable, when necessary for purposes of an Office proceeding. The Office may also require an
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applicant or patentee to identify the invention dates of the subject matter of each claim when necessary for purposes of an Office proceeding.
[50 FR 9381, Mar. 7, 1985, effective date May 8, 1985; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
ACTION BYAPPLICANTAND FURTHER CONSIDERATION
§ 1.111 Reply by applicant or patent owner to a non-final Office action.
(a)(1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
(2) Supplemental replies.
(i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner suggestion(s);
(C) Placement of the application in condition for allowance;
(D) Reply to an Office requirement made after the first reply was filed;
(E) Correction of informalities ( e.g., typographical errors); or
(F) Simplification of issues for appeal.
(ii) A supplemental reply will be entered if the supplemental reply is filed within the period
during which action by the Office is suspended under § 1.103(a) or (c).
(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.
[46 FR 29182, May 29, 1981; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(2) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(2) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(2)(i) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8. 2004]
§ 1.112 Reconsideration before final action.
After reply by applicant or patent owner (§ 1.111 or § 1.945) to a non-final action and any comments by an inter partes reexamination requester (§ 1.947), the application or the patent under reexamination will be reconsidered and again examined. The
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applicant, or in the case of a reexamination proceeding the patent owner and any third party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination (§ 1.104). Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111 or § 1.945, with or without amendment, unless such Office action indicates that it is made final (§ 1.113) or an appeal (§ 41.31 of this title) has been taken (§ 1.116), or in an inter partes reexamination, that it is an action closing prosecution (§ 1.949) or a right of appeal notice (§ 1.953).
[46 FR 29182, May 29, 1981; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 1.113 Final rejection or action.
(a) On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant’s, or for ex parte reexaminations filed under § 1.510, patent owner’s reply is limited to appeal in the case of rejection of any claim (§ 41.31 of this title), or to amendment as specified in § 1.114 or § 1.116. Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim (§ 1.181). Reply to a final rejection or action must comply with § 1.114 or paragraph (c) of this section. For final actions in an inter partes reexamination filed under § 1.913, see § 1.953.
(b) In making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable to the claims in the application, clearly stating the reasons in support thereof.
(c) Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form.
[24 FR 10332, Dec. 22, 1959; 46 FR 29182, May 29, 1981; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 14865, Mar. 20, 2000,
effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); para. (a) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 1.114 Request for continued examination.
(a) If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of:
(1) Payment of the issue fee, unless a petition under § 1.313 is granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.
(b) Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last Office action is a final action (§ 1.113), a notice of allowance (§ 1.311), or an action that otherwise closes prosecution in the application.
(c) A submission as used in this section includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of § 1.111.
(d) If an applicant timely files a submission and fee set forth in § 1.17(e), the Office will withdraw the finality of any Office action and the submission will be entered and considered. If an applicant files a request for continued examination under this section after appeal, but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. An appeal brief (§ 41.37 of this title) or a reply brief (§ 41.41 of this title), or related papers, will not be considered a submission under this section.
(e) The provisions of this section do not apply to:
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(1) A provisional application;
(2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
(3) An international application filed under 35 U.S.C. 363 before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371;
(4) An application for a design patent;
(5) An international design application; or
(6) A patent under reexamination.
[Added 65 FR 14865, Mar. 20, 2000, effective May 29, 2000; revised 65 FR 50092, Aug. 16, 2000; para. (d) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a) and (d) revised and (f), (g), and (h) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); paras. (a) and (d) revised and (f), (g), and (h) removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras. (e)(3)-(5) revised and para. (e)(6) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
AMENDMENTS
§ 1.115 Preliminary amendments.
(a) A preliminary amendment is an amendment that is received in the Office (§ 1.6) on or before the mail date of the first Office action under § 1.104. The patent application publication may include preliminary amendments (§ 1.215(a)).
(1) A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application.
(2) A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application.
(b) A preliminary amendment in compliance with § 1.121 will be entered unless disapproved by the Director.
(1) A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.
(2) A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. Factors that will be considered in disapproving a preliminary amendment include:
(i) The state of preparation of a first Office action as of the date of receipt (§ 1.6) of the preliminary amendment by the Office; and
(ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.
(3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than:
(i) Three months from the filing date of an application under § 1.53(b);
(ii) The filing date of a continued prosecution application under § 1.53(d); or
(iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application.
(4) The time periods specified in paragraph (b)(3) of this section are not extendable.
[46 FR 29183, May 29, 1981; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004]
§ 1.116 Amendments and affidavits or other evidence after final action and prior to appeal.
(a) An amendment after final action must comply with § 1.114 or this section.
(b) After a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913, but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title):
(1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;
(2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or
(3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient
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reasons why the amendment is necessary and was not earlier presented.
(c) The admission of, or refusal to admit, any amendment after a final rejection, a final action, an action closing prosecution, or any related proceedings will not operate to relieve the application or reexamination proceeding from its condition as subject to appeal or to save the application from abandonment under § 1.135, or the reexamination prosecution from termination under § 1.550(d) or § 1.957(b) or limitation of further prosecution under § 1.957(c).
(d)(1) Notwithstanding the provisions of paragraph (b) of this section, no amendment other than canceling claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
(2) Notwithstanding the provisions of paragraph (b) of this section, an amendment made after a final rejection or other final action (§ 1.113) in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913 may not cancel claims where such cancellation affects the scope of any other pending claim in the reexamination proceeding except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
(e) An affidavit or other evidence submitted after a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913 but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title), may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.
(f) Notwithstanding the provisions of paragraph (e) of this section, no affidavit or other evidence can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
(g) After decision on appeal, amendments, affidavits and other evidence can only be made as provided in §§ 1.198 and 1.981, or to carry into
effect a recommendation under § 41.50(c) of this title.
[24 FR 10332, Dec. 22, 1959; 46 FR 29183, May 29, 1981; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (b) and (d) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 1.117 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR)]
§ 1.118 [Reserved]
[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.119 [Reserved]
[32 FR 13583, Sept. 28, 1967; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.121 Manner of making amendments in applications.
(a) Amendments in applications, other than reissue applications. Amendments in applications, other than reissue applications, are made by filing a paper, in compliance with § 1.52, directing that specified amendments be made.
(b) Specification. Amendments to the specification, other than the claims, computer listings (§ 1.96) and sequence listings (§ 1.825), must be made by adding, deleting or replacing a paragraph, by replacing a section, or by a substitute specification, in the manner specified in this section.
(1) Amendment to delete, replace, or add a paragraph. Amendments to the specification, including amendment to a section heading or the title of the invention which are considered for amendment purposes to be an amendment of a paragraph, must be made by submitting:
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(i) An instruction, which unambiguously identifies the location, to delete one or more paragraphs of the specification, replace a paragraph with one or more replacement paragraphs, or add one or more paragraphs;
(ii) The full text of any replacement paragraph with markings to show all the changes relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strikethrough cannot be easily perceived;
(iii) The full text of any added paragraphs without any underlining; and
(iv) The text of a paragraph to be deleted must not be presented with strike-through or placed within double brackets. The instruction to delete may identify a paragraph by its paragraph number or include a few words from the beginning, and end, of the paragraph, if needed for paragraph identification purposes.
(2) Amendment by replacement section. If the sections of the specification contain section headings as provided in § 1.77(b), § 1.154(b), or § 1.163(c), amendments to the specification, other than the claims, may be made by submitting:
(i) A reference to the section heading along with an instruction, which unambiguously identifies the location, to delete that section of the specification and to replace such deleted section with a replacement section; and;
(ii) A replacement section with markings to show all changes relative to the previous version of the section. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived.
(3) Amendment by substitute specification. The specification, other than the claims, may also be amended by submitting:
(i) An instruction to replace the specification; and
(ii) A substitute specification in compliance with §§ 1.125(b) and (c).
(4) Reinstatement of previously deleted paragraph or section. A previously deleted paragraph or section may be reinstated only by a subsequent amendment adding the previously deleted paragraph or section.
(5) Presentation in subsequent amendment document. Once a paragraph or section is amended in a first amendment document, the paragraph or section shall not be represented in a subsequent amendment document unless it is amended again or a substitute specification is provided.
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes ( e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement ( e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim
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listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn— currently amended.”
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
(d) Drawings. One or more application drawings shall be amended in the following manner:
Any changes to an application drawing must be in compliance with § 1.84 or, for a nonprovisional international design application, in compliance with §§ 1.84(c) and 1.1026 and must be submitted on a replacement sheet of drawings which shall be an attachment to the amendment document and, in the top margin, labeled "Replacement Sheet." Any replacement sheet of drawings shall include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. Any new sheet of drawings containing an additional figure must be labeled in the top margin as "New Sheet." All changes to the drawings shall be explained, in detail, in either the drawing amendment or remarks section of the amendment paper.
(1) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change to the drawings.
(2) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
(e) Disclosure consistency. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(f) No new matter. No amendment may introduce new matter into the disclosure of an application.
(g) Exception for examiner’s amendments. Changes to the specification, including the claims, of an application made by the Office in an examiner’s amendment may be made by specific instructions to insert or delete subject matter set forth in the examiner’s amendment by identifying the precise point in the specification or the claim(s) where the insertion or deletion is to be made. Compliance with paragraphs (b)(1), (b)(2), or (c) of this section is not required.
(h) Amendment sections. Each section of an amendment document ( e.g., amendment to the claims, amendment to the specification, replacement
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drawings, and remarks) must begin on a separate sheet.
(i) Amendments in reissue applications. Any amendment to the description and claims in reissue applications must be made in accordance with § 1.173.
(j) Amendments in reexamination proceedings. Any proposed amendment to the description and claims in patents involved in reexamination proceedings must be made in accordance with § 1.530.
(k) Amendments in provisional applications. Amendments in provisional applications are not usually made. If an amendment is made to a provisional application, however, it must comply with the provisions of this section. Any amendments to a provisional application shall be placed in the provisional application file but may not be entered.
[32 FR 13583, Sept. 28, 1967; 46 FR 29183, May 29, 1981; para. (e), 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (i) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (d) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (d) introductory text revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.122 [Reserved]
[24 FR 10332, Dec. 22, 1959; para. (b), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.123 [Reserved]
[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; amended, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.124 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.125 Substitute specification.
(a) If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including the claims, or any part thereof, be rewritten.
(b) Subject to § 1.312, a substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes no new matter.
(c) A substitute specification submitted under this section must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown pursuant to this paragraph.
(d) A substitute specification under this section is not permitted in a reissue application or in a reexamination proceeding.
[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (b)(2) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (b) and (c) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003]
§ 1.126 Numbering of claims.
The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled the remaining claims must not be renumbered. When claims are added, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not). When the application is ready for
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allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant.
[32 FR 13583, Sept. 28, 1967; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.127 Petition from refusal to admit amendment.
From the refusal of the primary examiner to admit an amendment, in whole or in part, a petition will lie to the Director under § 1.181.
[Revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
TRANSITIONAL PROVISIONS
§ 1.129 Transitional procedures for limited examination after final rejection and restriction practice.
(a) An applicant in an application, other than for reissue or a design patent, that has been pending for at least two years as of June 8, 1995, taking into account any reference made in such application to any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is entitled to have a first submission entered and considered on the merits after final rejection under the following circumstances: The Office will consider such a submission, if the first submission and the fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in § 1.17(r). If a subsequent final rejection is made in the application, applicant is entitled to have a second submission entered and considered on the merits after the subsequent final rejection under the following circumstances: The Office will consider such a submission, if the second submission and a second fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the subsequent final rejection is automatically withdrawn upon the timely filing of the submission and payment of the second fee set forth in § 1.17(r). Any submission filed after a final rejection made in
an application subsequent to the fee set forth in § 1.17(r) having been twice paid will be treated as set forth in § 1.116. A submission as used in this paragraph includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims or drawings and a new substantive argument or new evidence in support of patentability.
(b)(1) In an application, other than for reissue or a design patent, that has been pending for at least three years as of June 8, 1995, taking into account any reference made in the application to any earlier filed application under 35 U.S.C. 120, 121 and 365(c), no requirement for restriction or for the filing of divisional applications shall be made or maintained in the application after June 8, 1995, except where:
(i) The requirement was first made in the application or any earlier filed application under 35 U.S.C. 120, 121 and 365(c) prior to April 8, 1995;
(ii) The examiner has not made a requirement for restriction in the present or parent application prior to April 8, 1995, due to actions by the applicant; or
(iii) The required fee for examination of each additional invention was not paid.
(2) If the application contains more than one independent and distinct invention and a requirement for restriction or for the filing of divisional applications cannot be made or maintained pursuant to this paragraph, applicant will be so notified and given a time period to:
(i) Elect the invention or inventions to be searched and examined, if no election has been made prior to the notice, and pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects;
(ii) Confirm an election made prior to the notice and pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in addition to the one invention which applicant previously elected; or
(iii) File a petition under this section traversing the requirement. If the required petition is filed in a timely manner, the original time period for electing and paying the fee set forth in § 1.17(s) will be deferred and any decision on the petition
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affirming or modifying the requirement will set a new time period to elect the invention or inventions to be searched and examined and to pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects.
(3) The additional inventions for which the required fee has not been paid will be withdrawn from consideration under § 1.142(b). An applicant who desires examination of an invention so withdrawn from consideration can file a divisional application under 35 U.S.C. 121.
(c) The provisions of this section shall not be applicable to any application filed after June 8, 1995.
[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]
AFFIDAVITS OVERCOMING REJECTIONS
§ 1.130 Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act.
(a) Affidavit or declaration of attribution. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
(b) Affidavit or declaration of prior public disclosure. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. An affidavit or declaration under this paragraph must identify the subject matter publicly disclosed and provide the date such subject matter was publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor.
(1) If the subject matter publicly disclosed on that date was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication.
(2) If the subject matter publicly disclosed on that date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on that date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(c) When this section is not available. The provisions of this section are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. The provisions of this section may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant's or patent owner's claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or a patent owner may file a petition for a derivation proceeding pursuant to § 42.401 et seq. of this title.
(d) Applications and patents to which this section is applicable. The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
(1) A claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013.
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[Added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; heading and para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (b) removed and reserved, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; para. (d) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.
(a) When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. The effective date of a U.S. patent, U.S. patent application publication, or international application publication under PCT Article 21(2) is the earlier of its publication date or the date that it is effective as a reference under 35 U.S.C. 102(e) as in effect on March 15, 2013. Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. Prior invention may not be established under this section if either:
(1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application naming another inventor which claims interfering subject matter as defined in § 41.203(a) of this chapter, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this chapter; or
(2) The rejection is based upon a statutory bar.
(b) The showing of facts for an oath or declaration under paragraph (a) of this section shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the
application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained.
(c) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.
(d) The provisions of this section apply to any application for patent and to any patent issuing thereon, that contains, or contained at any time:
(1) A claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013.
(e) In an application for patent to which the provisions of § 1.130 apply, and to any patent issuing thereon, the provisions of this section are applicable only with respect to a rejection under 35 U.S.C. 102(g) as in effect on March 15, 2013.
[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 50 FR 9381, Mar. 7, 1985,
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effective May 8, 1985; 50 FR 11366, Mar. 21, 1985; 53 FR 23733, June 23, 1988, effective Sept. 12, 1988; para. (a)(1) revised and para. (a)(2) added, 60 FR 21043, May 1, 1995, effective May 31, 1995; para. (a) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; heading and para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (a)(1) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a) introductory text revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (d) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.132 Affidavits or declarations traversing rejections or objections.
When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.
[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; revised 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]
INTERVIEWS
§ 1.133 Interviews.
(a)(1) Interviews with examiners concerning applications and other matters pending before the Office must be conducted on Office premises and within Office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Director.
(2) An interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application or the examiner determines that such an interview would advance prosecution of the application.
(3) The examiner may require that an interview be scheduled in advance.
(b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in §§ 1.111 and 1.135.
[Para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(2) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]
TIME FOR REPLY BY APPLICANT; ABANDONMENT OF APPLICATION
§ 1.134 Time period for reply to an Office action.
An Office action will notify the applicant of any non-statutory or shortened statutory time period set for reply to an Office action. Unless the applicant is notified in writing that a reply is required in less than six months, a maximum period of six months is allowed.
[47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.135 Abandonment for failure to reply within time period.
(a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.
(b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
(c) When reply by the applicant is a bona fide attempt to advance the application to final action,
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and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
[Paras. (a), (b), and (c), 47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; para. (d) deleted, 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.136 Extensions of time.
(a)(1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless:
(i) Applicant is notified otherwise in an Office action;
(ii) The reply is a reply brief submitted pursuant to § 41.41 of this title;
(iii) The reply is a request for an oral hearing submitted pursuant to § 41.47(a) of this title;
(iv) The reply is to a decision by the Patent Trial and Appeal Board pursuant to § 41.50 or § 41.52 of this chapter; or to § 90.3 of this chapter; or
(v) The application is involved in a contested case (§ 41.101(a) of this title) or a derivation proceeding (§ 42.4(b) of this title).
(2) The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (§ 1.135), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of paragraph (a) of this section are available.
(3) A written request may be submitted in an application that is an authorization to treat any concurrent or future reply, requiring a petition for an extension of time under this paragraph for its timely submission, as incorporating a petition for extension of time for the appropriate length of time. An authorization to charge all required fees, fees under § 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under this paragraph for its timely submission. Submission of the fee set forth in § 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission.
(b) When a reply cannot be filed within the time period set for such reply and the provisions of paragraph (a) of this section are not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under this paragraph must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension under this paragraph. In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute. Any request under this paragraph must be accompanied by the petition fee set forth in § 1.17(g).
(c) If an applicant is notified in a “Notice of Allowability” that an application is otherwise in condition for allowance, the following time periods are not extendable if set in the “Notice of Allowability” or in an Office action having a mail date on or after the mail date of the “Notice of Allowability”:
(1) The period for submitting the inventor's oath or declaration;
(2) The period for submitting formal drawings set under § 1.85(c); and
(3) The period for making a deposit set under § 1.809(c).
(d) See § 1.550(c) for extensions of time in ex parte reexamination proceedings, § 1.956 for extensions of time in inter partes reexamination proceedings; §§ 41.4(a) and 41.121(a)(3) of this chapter for extensions of time in contested cases
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before the Patent Trial and Appeal Board; § 42.5(c) of this chapter for extensions of time in trials before the Patent Trial and Appeal Board; and § 90.3 of this chapter for extensions of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action.
[47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 54 FR 29551, July 13, 1989, effective Aug. 20, 1989; para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (c) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(2) and (b) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (c) revised, 66 FR 21090, Apr. 27, 2001, effective May 29, 2001; paras. (a)(1), (a)(2), and (b) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (b) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (a)(1) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (a)(1) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras. (a)(1)(iv), (a)(1)(v), (a)(2), and (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (c)(1) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (a)(1)(iv), (a)(2) and (b) revised, para. (d) added, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.137 Revival of abandoned application, or terminated or limited reexamination prosecution.
(a) Revival on the basis of unintentional delay. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this section to revive an abandoned application or a reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited under § 1.957(c).
(b) Petition requirements. A grantable petition pursuant to this section must be accompanied by:
(1) The reply required to the outstanding Office action or notice, unless previously filed;
(2) The petition fee as set forth in § 1.17(m);
(3) Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section; and
(4) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(c) Reply. In an application abandoned under § 1.57(a), the reply must include a copy of the specification and any drawings of the previously filed application. In an application or patent abandoned for failure to pay the issue fee or any portion thereof, the required reply must include payment of the issue fee or any outstanding balance. In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In a nonprovisional utility or plant application filed on or after June 8, 1995, abandoned after the close of prosecution as defined in § 1.114(b), the required reply may also be met by the filing of a request for continued examination in compliance with § 1.114.
(d) Terminal disclaimer.
(1) Any petition to revive pursuant to this section in a design application must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. Any petition to revive pursuant to this section in either a utility or plant application filed before June 8, 1995, must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the lesser of:
(i) The period of abandonment of the application; or
(ii) The period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, 365(c), or 386(c) from the date on which the earliest such application was filed.
(2) Any terminal disclaimer pursuant to paragraph (d)(1) of this section must also apply to any patent granted on a continuing utility or plant
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application filed before June 8, 1995, or a continuing design application, that contains a specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to the application for which revival is sought.
(3) The provisions of paragraph (d)(1) of this section do not apply to applications for which revival is sought solely for purposes of copendency with a utility or plant application filed on or after June 8, 1995, to reissue applications, or to reexamination proceedings.
(e) Request for reconsideration. Any request for reconsideration or review of a decision refusing to revive an abandoned application, or a terminated or limited reexamination prosecution, upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under:
(1) The provisions of § 1.136 for an abandoned application;
(2) The provisions of § 1.550(c) for a terminated ex parte reexamination prosecution, where the ex parte reexamination was filed under § 1.510; or
(3) The provisions of § 1.956 for a terminated inter partes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the inter partes reexamination was filed under § 1.913.
(f) Abandonment for failure to notify the Office of a foreign filing. A nonprovisional application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the filing of an application in a foreign country or under a multinational treaty that requires publication of applications eighteen months after filing, may be revived pursuant to this section. The reply requirement of paragraph (c) of this section is met by the notification of such filing in a foreign country or under a multinational treaty, but the filing of a petition under this section will not operate to stay any period for reply that may be running against the application.
(g) Provisional applications. A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section. Subject to the provisions of 35 U.S.C.
119(e)(3) and § 1.7(b), a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances.
[47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; para. (b) 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; paras. (a) - (c), paras. (d) & (e) added, 58 FR 44277, Aug. 20,1993, effective Sept. 20, 1993; para. (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (c) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (d)(3) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; heading, paras. (a) introductory text, (b) introductory text, and (e) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; paras. (d)(1)(ii) and (d)(2) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.138 Express abandonment.
(a) An application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment of the application may not be recognized by the Office before the date of issue or publication unless it is actually received by appropriate officials in time to act.
(b) A written declaration of abandonment must be signed by a party authorized under § 1.33(b)(1) or (b)(3) to sign a paper in the application, except as otherwise provided in this paragraph. A registered attorney or agent, not of record, who acts in a representative capacity under the provisions of § 1.34 when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application.
(c) An applicant seeking to abandon an application to avoid publication of the application (see § 1.211(a)(1)) must submit a declaration of express abandonment by way of a petition under this paragraph including the fee set forth in § 1.17(h) in sufficient time to permit the appropriate officials to recognize the abandonment and remove the application from the publication process. Applicants should expect that the petition will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the
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appropriate officials more than four weeks prior to the projected date of publication.
(d) An applicant seeking to abandon an application filed under 35 U.S.C. 111(a) and § 1.53(b) on or after December 8, 2004, to obtain a refund of the search fee and excess claims fee paid in the application, must submit a declaration of express abandonment by way of a petition under this paragraph before an examination has been made of the application. The date indicated on any certificate of mailing or transmission under § 1.8 will not be taken into account in determining whether a petition under § 1.138(d) was filed before an examination has been made of the application. If a request for refund of the search fee and excess claims fee paid in the application is not filed with the declaration of express abandonment under this paragraph or within two months from the date on which the declaration of express abandonment under this paragraph was filed, the Office may retain the entire search fee and excess claims fee paid in the application. This two-month period is not extendable. If a petition and declaration of express abandonment under this paragraph are not filed before an examination has been made of the application, the Office will not refund any part of the search fee and excess claims fee paid in the application except as provided in § 1.26.
[47 FR 47244, Oct. 25, 1982, effective Feb. 27, 1983; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised and para. (c) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised and para. (d) added, 71 FR 12284, Mar. 10, 2006, effective Mar. 10, 2006; para. (b) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.139 [Reserved]
[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
JOINDER OF INVENTIONS IN ONE APPLICATION; RESTRICTION
§ 1.141 Different inventions in one national application.
(a) Two or more independent and distinct inventions may not be claimed in one national
application, except that more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided the application also includes an allowable claim generic to all the claimed species and all the claims to species in excess of one are written in dependent form (§ 1.75) or otherwise include all the limitations of the generic claim.
(b) Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made.
[52 FR 20046, May 28, 1987, effective July 1, 1987]
§ 1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action will require the applicant in the reply to that action to elect an invention to which the claims will be restricted, this official action being called a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action.
(b) Claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the examiner by the election, subject however to reinstatement in the event the requirement for restriction is withdrawn or overruled.
[Para (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised and (c) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (a) revised and (c) removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR)]
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§ 1.143 Reconsideration of requirement.
If the applicant disagrees with the requirement for restriction, he may request reconsideration and withdrawal or modification of the requirement, giving the reasons therefor. (See § 1.111). In requesting reconsideration the applicant must indicate a provisional election of one invention for prosecution, which invention shall be the one elected in the event the requirement becomes final. The requirement for restriction will be reconsidered on such a request. If the requirement is repeated and made final, the examiner will at the same time act on the claims to the invention elected.
§ 1.144 Petition from requirement for restriction.
After a final requirement for restriction, the applicant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested (see § 1.181).
[Revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 1.145 Subsequent presentation of claims for different invention.
If, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144.
[Revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR)]
§ 1.146 Election of species.
In the first action on an application containing a generic claim to a generic invention (genus) and claims to more than one patentably distinct species embraced thereby, the examiner may require the applicant in the reply to that action to elect a species of his or her invention to which his or her claim will be restricted if no claim to the genus is found to be allowable. However, if such application contains claims directed to more than a reasonable number of species, the examiner may require restriction of the claims to not more than a reasonable number of species before taking further action in the application.
[43 FR 20465, May 11, 1978; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
DESIGN PATENTS
§ 1.151 Rules applicable.
The rules relating to applications for patents for other inventions or discoveries are also applicable to applications for patents for designs except as otherwise provided.
§ 1.152 Design drawings.
The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose
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environmental structure but must be limited to the design claimed for the article.
[53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; amended, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000]
§ 1.153 Title, description and claim, oath or declaration.
[Editor Note: Para. (b) below is applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.
(b) The inventor's oath or declaration must comply with the requirements of § 1.63, or comply with the requirements of § 1.64 for a substitute statement.
[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964; para. (b), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; para. (b) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes to para. (b) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.153 (pre-AIA) for para. (b) otherwise in effect.]
§ 1.153 (pre-AIA) Title, description and claim, oath or declaration.
[Editor Note: Para. (b) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]
(a) The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.
(b) The oath or declaration required of the applicant must comply with § 1.63.
[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964; para. (b), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983]
[*See § 1.153 for more information and for para. (b) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.154 Arrangement of application elements in a design application.
(a) The elements of the design application, if applicable, should appear in the following order:
(1) Design application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings or photographs.
(6) The inventor's oath or declaration (see § 1.153(b)).
(b) The specification should include the following sections in order:
(1) Preamble, stating the name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.
(2) Cross-reference to related applications (unless included in the application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Description of the figure or figures of the drawing.
(5) Feature description.
(6) A single claim.
(c) The text of the specification sections defined in paragraph (b) of this section, if applicable, should be preceded by a section heading in uppercase letters without underlining or bold type.
[24 FR 10332, Dec. 22, 1959, para. (e), 48 FR 2713, Jan. 20, 1983, effective date Feb. 27, 1983; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a)(3) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(6) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
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§ 1.155 Expedited examination of design applications.
(a) The applicant may request that the Office expedite the examination of a design application. To qualify for expedited examination:
(1) The application must include drawings in compliance with § 1.84, or for an international design application that designates the United States, must have been published pursuant to Hague Agreement Article 10(3);
(2) The applicant must have conducted a preexamination search; and
(3) The applicant must file a request for expedited examination including:
(i) The fee set forth in § 1.17(k); and
(ii) A statement that a preexamination search was conducted. The statement must also indicate the field of search and include an information disclosure statement in compliance with § 1.98.
(b) The Office will not examine an application that is not in condition for examination ( e.g., missing basic filing fee) even if the applicant files a request for expedited examination under this section.
[47 FR 41277, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (b)-(d) amended, paras. (e) and (f) added, 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (a)(1) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
PLANT PATENTS
§ 1.161 Rules applicable.
The rules relating to applications for patent for other inventions or discoveries are also applicable to applications for patents for plants except as otherwise provided.
§ 1.162 Applicant, oath or declaration.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
The inventor named for a plant patent application must be the person who has invented or discovered and asexually reproduced the new and distinct variety of plant for which a patent is sought. The inventor's oath or declaration, in addition to the averments required by § 1.63 or § 1.64, must state that the inventor has asexually reproduced the plant. Where the plant is a newly found plant, the inventor's oath or declaration must also state that it was found in a cultivated area.
[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.162 (pre-AIA) for the rule otherwise in effect.]
§ 1.162 (pre-AIA) Applicant, oath or declaration.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
The applicant for a plant patent must be the person who has invented or discovered and asexually reproduced the new and distinct variety of plant for which a patent is sought (or as provided in §§ 1.42, 1.43, and 1.47). The oath or declaration required of the applicant, in addition to the averments required by § 1.63, must state that he or she has asexually reproduced the plant. Where the plant is a newly found plant the oath or declaration must also state that it was found in a cultivated area.
[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983]
[*See § 1.162 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.163 Specification and arrangement of application elements in a plant application.
(a) The specification must contain as full and complete a disclosure as possible of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, and must particularly point out where and in what manner the variety of plant has been asexually
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reproduced. For a newly found plant, the specification must particularly point out the location and character of the area where the plant was discovered.
(b) The elements of the plant application, if applicable, should appear in the following order:
(1) Plant application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings (in duplicate).
(6) The inventor's oath or declaration (§ 1.162).
(c) The specification should include the following sections in order:
(1) Title of the invention, which may include an introductory portion stating the name, citizenship, and residence of the applicant.
(2) Cross-reference to related applications (unless included in the application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Latin name of the genus and species of the plant claimed.
(5) Variety denomination.
(6) Background of the invention.
(7) Brief summary of the invention.
(8) Brief description of the drawing.
(9) Detailed botanical description.
(10) A single claim.
(11) Abstract of the disclosure.
(d) The text of the specification or sections defined in paragraph (c) of this section, if applicable, should be preceded by a section heading in upper case, without underlining or bold type.
[24 FR 10332, Dec. 22, 1959; para. (b), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; paras. (c) and (d) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(6) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.164 Claim.
The claim shall be in formal terms to the new and distinct variety of the specified plant as described and illustrated, and may also recite the principal distinguishing characteristics. More than one claim is not permitted.
§ 1.165 Plant Drawings.
(a) Plant patent drawings should be artistically and competently executed and must comply with the requirements of § 1.84. View numbers and reference characters need not be employed unless required by the examiner. The drawing must disclose all the distinctive characteristics of the plant capable of visual representation.
(b) The drawings may be in color. The drawing must be in color if color is a distinguishing characteristic of the new variety. Two copies of color drawings or photographs must be submitted.
[24 FR 10332, Dec. 22, 1959; para. (b), 47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (b) amended, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; para. (b) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§ 1.166 Specimens.
The applicant may be required to furnish specimens of the plant, or its flower or fruit, in a quantity and at a time in its stage of growth as may be designated, for study and inspection. Such specimens, properly packed, must be forwarded in conformity with instructions furnished to the applicant. When it is not possible to forward such specimens, plants must be made available for official inspection where grown.
§ 1.167 Examination.
Applications may be submitted by the Patent and Trademark Office to the Department of Agriculture for study and report.
[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
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REISSUES
§ 1.171 Application for reissue.
An application for reissue must contain the same parts required for an application for an original patent, complying with all the rules relating thereto except as otherwise provided, and in addition, must comply with the requirements of the rules relating to reissue applications.
[47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; revised, 54 FR 6893, Feb. 17, 1989, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.172 Reissue applicant.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) The reissue applicant is the original patentee, or the current patent owner if there has been an assignment. A reissue application must be accompanied by the written consent of all assignees, if any, currently owning an undivided interest in the patent. All assignees consenting to the reissue must establish their ownership in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(c) of this chapter.
(b) A reissue will be granted to the original patentee, his legal representatives or assigns as the interest may appear.
[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.172 (pre-AIA) for the rule otherwise in effect.]
§ 1.172 (pre-AIA) Applicants, assignees.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]
(a) A reissue oath must be signed and sworn to or declaration made by the inventor or inventors except as otherwise provided (see §§ 1.42, 1.43, 1.47), and must be accompanied by the written consent of all assignees, if any, owning an undivided interest in the patent, but a reissue oath may be made and sworn to or declaration made by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent. All assignees consenting to the reissue must establish their ownership interest in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(b) of this chapter.
(b) A reissue will be granted to the original patentee, his legal representatives or assigns as the interest may appear.
[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
[*See § 1.172 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.173 Reissue specification, drawings, and amendments.
(a) Contents of a reissue application. An application for reissue must contain the entire specification, including the claims, and the drawings of the patent. No new matter shall be introduced into the application. No reissue patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent, pursuant to 35 U.S.C. 251.
(1) Specification, including claims. The entire specification, including the claims, of the patent for which reissue is requested must be furnished in the form of a copy of the printed patent, in double column format, each page on only one side of a single sheet of paper. If an amendment of the reissue application is to be included, it must be made pursuant to paragraph (b) of this section. The formal requirements for papers making up the reissue application other than those set forth in this section are set out in § 1.52. Additionally, a copy of any disclaimer (§ 1.321), certificate of correction (§§ 1.322 through 1.324), or reexamination
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certificate (§ 1.570) issued in the patent must be included. (See also § 1.178).
(2) Drawings. Applicant must submit a clean copy of each drawing sheet of the printed patent at the time the reissue application is filed. If such copy complies with § 1.84, no further drawings will be required. Where a drawing of the reissue application is to include any changes relative to the patent being reissued, the changes to the drawing must be made in accordance with paragraph (b)(3) of this section. The Office will not transfer the drawings from the patent file to the reissue application.
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(1) Specification other than the claims. Changes to the specification, other than to the claims, must be made by submission of the entire text of an added or rewritten paragraph, including markings pursuant to paragraph (d) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph. The precise point in the specification must be identified where any added or rewritten paragraph is located. This paragraph applies whether the amendment is submitted on paper or compact disc (see §§ 1.52(e)(1) and 1.821(c), but not for discs submitted under § 1.821(e)).
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(3) Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event that a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.” All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
(i) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Marked-up Drawings” and must be presented in the amendment or remarks section that explains the change to the drawings.
(ii) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status ( i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with
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“<U>” and end with “</U>” to properly identify the material being added.
(e) Numbering of patent claims preserved. Patent claims may not be renumbered. The numbering of any claim added in the reissue application must follow the number of the highest numbered patent claim.
(f) Amendment of disclosure may be required. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
[Revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(3) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (b) introductory text revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§ 1.174 [Reserved]
[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; removed and reserved, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§ 1.175 Inventor's oath or declaration for a reissue application.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012*]
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the
reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
(c) The inventor, or each individual who is a joint inventor of a claimed invention, in a reissue application must execute an oath or declaration for the reissue application, except as provided for in § 1.64, and except that the inventor's oath or declaration for a reissue application may be signed by the assignee of the entire interest if:
(1) The application does not seek to enlarge the scope of the claims of the original patent; or
(2) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.
(d) If errors previously identified in the inventor's oath or declaration for a reissue application pursuant to paragraph (a) of this section are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.
(e) The inventor's oath or declaration for a reissue application required by paragraph (a) of this section may be submitted under the provisions of § 1.53(f), except that the provisions of § 1.53(f)(3) do not apply to a reissue application.
(f)(1) The requirement for the inventor’s oath or declaration for a continuing reissue application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed reissue application may be satisfied by a copy of the inventor's oath or declaration from the earlier-filed reissue application, provided that:
(i) The inventor, or each individual who is a joint inventor of a claimed invention, in the reissue application executed an inventor’s oath or declaration for the earlier-filed reissue application, except as provided for in § 1.64;
(ii) The continuing reissue application does not seek to enlarge the scope of the claims of the original patent; or
(iii) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.
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(2) If all errors identified in the inventor's oath or declaration from the earlier-filed reissue application are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.
(g) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1), will be placed in the file record of the reissue application, but may not necessarily be reviewed by the Office.
[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964; 34 FR 18857, Nov. 26, 1969; para. (a), 47 FR 21752, May 19, 1982, effective July 1,1982; para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a)(7), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (e) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (f)(1) introductory text revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[*The changes effective Sept. 16, 2012 and May 13, 2015 are applicable only to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012. See § 1.175 (pre-AIA) for the rule otherwise in effect.]
§ 1.175 (pre-AIA) Reissue oath or declaration.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after Sept. 16, 2012*]
(a) The reissue oath or declaration in addition to complying with the requirements of § 1.63, must also state that:
(1) The applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent, stating at least one error being relied upon as the basis for reissue; and
(2) All errors being corrected in the reissue application up to the time of filing of the oath or declaration under this paragraph arose without any deceptive intention on the part of the applicant.
(b)(1) For any error corrected, which is not covered by the oath or declaration submitted under paragraph (a) of this section, applicant must submit a supplemental oath or declaration stating that every
such error arose without any deceptive intention on the part of the applicant. Any supplemental oath or declaration required by this paragraph must be submitted before allowance and may be submitted:
(i) With any amendment prior to allowance; or
(ii) In order to overcome a rejection under 35 U.S.C. 251 made by the examiner where it is indicated that the submission of a supplemental oath or declaration as required by this paragraph will overcome the rejection.
(2) For any error sought to be corrected after allowance, a supplemental oath or declaration must accompany the requested correction stating that the error(s) to be corrected arose without any deceptive intention on the part of the applicant.
(c) Having once stated an error upon which the reissue is based, as set forth in paragraph (a)(1), unless all errors previously stated in the oath or declaration are no longer being corrected, a subsequent oath or declaration under paragraph (b) of this section need not specifically identify any other error or errors being corrected.
(d) The oath or declaration required by paragraph (a) of this section may be submitted under the provisions of § 1.53(f).
(e) The filing of any continuing reissue application which does not replace its parent reissue application must include an oath or declaration which, pursuant to paragraph (a)(1) of this section, identifies at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application. All other requirements relating to oaths or declarations must also be met.
[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964; 34 FR 18857, Nov. 26, 1969; para. (a), 47 FR 21752, May 19, 1982, effective July 1,1982; para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a)(7), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (e) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
[*See § 1.175 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012]
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PATENT RULES
§ 1.176 Examination of reissue.
(a) A reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications. Applications for reissue will be acted on by the examiner in advance of other applications.
(b) Restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required). If restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.
[42 FR 5595, Jan. 28, 1977; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§ 1.177 Issuance of multiple reissue patents.
(a) The Office may reissue a patent as multiple reissue patents. If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date. The Office may correct by certificate of correction under § 1.322 any reissue patent resulting from an application to which this paragraph applies that does not contain the required notice.
(b) If applicant files more than one application for the reissue of a single patent, each claim of the patent being reissued must be presented in each of the reissue applications as an amended, unamended, or canceled (shown in brackets) claim, with each such claim bearing the same number as in the patent being reissued. The same claim of the patent being reissued may not be presented in its original unamended form for examination in more than one of such multiple reissue applications. The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim.
(c) If any one of the several reissue applications by itself fails to correct an error in the original patent
as required by 35 U.S.C. 251 but is otherwise in condition for allowance, the Office may suspend action in the allowable application until all issues are resolved as to at least one of the remaining reissue applications. The Office may also merge two or more of the multiple reissue applications into a single reissue application. No reissue application containing only unamended patent claims and not correcting an error in the original patent will be passed to issue by itself.
[47 FR 41278, Sept. 17, 1982, effective date Oct. 1, 1982; revised, 54 FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§ 1.178 Original patent; continuing duty of applicant.
(a) The application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender shall take effect upon reissue of the patent. Until a reissue application is granted, the original patent shall remain in effect.
(b) In any reissue application before the Office, the applicant must call to the attention of the Office any prior or concurrent proceedings in which the patent (for which reissue is requested) is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings (see also § 1.173(a)(1)).
[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; para. (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.179 [Reserved]
[Removed and reserved, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
PETITIONS AND ACTION BY THE DIRECTOR
§ 1.181 Petition to the Director.
(a) Petition may be taken to the Director:
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(1) From any action or requirement of any examiner in the ex parte prosecution of an application, or in ex parte or inter partes prosecution of a reexamination proceeding which is not subject to appeal to the Patent Trial and Appeal Board or to the court;
(2) In cases in which a statute or the rules specify that the matter is to be determined directly by or reviewed by the Director; and
(3) To invoke the supervisory authority of the Director in appropriate circumstances. For petitions involving action of the Patent Trial and Appeal Board, see § 41.3 of this title.
(b) Any such petition must contain a statement of the facts involved and the point or points to be reviewed and the action requested. Briefs or memoranda, if any, in support thereof should accompany or be embodied in the petition; and where facts are to be proven, the proof in the form of affidavits or declarations (and exhibits, if any) must accompany the petition.
(c) When a petition is taken from an action or requirement of an examiner in the ex parte prosecution of an application, or in the ex parte or inter partes prosecution of a reexamination proceeding, it may be required that there have been a proper request for reconsideration (§ 1.111) and a repeated action by the examiner. The examiner may be directed by the Director to furnish a written statement, within a specified time, setting forth the reasons for his or her decision upon the matters averred in the petition, supplying a copy to the petitioner.
(d) Where a fee is required for a petition to the Director the appropriate section of this part will so indicate. If any required fee does not accompany the petition, the petition will be dismissed.
(e) Oral hearing will not be granted except when considered necessary by the Director.
(f) The mere filing of a petition will not stay any period for reply that may be running against the application, nor act as a stay of other proceedings. Any petition under this part not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely, except as otherwise provided. This two-month period is not extendable.
(g) The Director may delegate to appropriate Patent and Trademark Office officials the determination of petitions.
[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; paras. (d) and (g), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (f) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a) and (c) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (a), (a)(2)-(3), (c)-(e) & (g) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(3) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a)(1) and (a)(3) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.182 Questions not specifically provided for.
All situations not specifically provided for in the regulations of this part will be decided in accordance with the merits of each situation by or under the authority of the Director, subject to such other requirements as may be imposed, and such decision will be communicated to the interested parties in writing. Any petition seeking a decision under this section must be accompanied by the petition fee set forth in § 1.17(f).
[47 FR 41278, Sept. 17, 1982, effective date Oct. 1, 1982; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
§ 1.183 Suspension of rules.
In an extraordinary situation, when justice requires, any requirement of the regulations in this part which is not a requirement of the statutes may be suspended or waived by the Director or the Director’s designee, sua sponte, or on petition of the interested party, subject to such other requirements as may be imposed. Any petition under this section must be accompanied by the petition fee set forth in § 1.17(f).
[47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
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§ 1.184 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
APPEAL TO THE PATENT TRIAL AND APPEAL BOARD
§ 1.191 Appeal to Patent Trial and Appeal Board.
Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(a) and (b) are conducted according to part 41 of this title.
[46 FR 29183, May 29, 1981; para. (a), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (b) and (d) amended, para. (e) added, 54 FR 29553, July 13, 1989, effective Aug. 20, 1989; para. (d) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. (a) and (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (e) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.192 [Reserved]
[36 FR 5850, Mar. 30, 1971; para. (a), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; 53 FR 23734, June 23, 1988, effective Sept. 12, 1988; para. (a), (c), and (d) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. (a)-(c) revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; removed and reserved, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 1.193 [Reserved]
[24 FR 10332, Dec. 22, 1959; 34 FR 18858, Nov.26, 1969; para. (c), 47 FR 21752, May 19, 1982, added effective July 1, 1982; para. (b), 50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; para. (c) deleted, 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3,
1994; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b)(1) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; removed and reserved, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 1.194 [Reserved]
[42 FR 5595, Jan. 28, 1977; paras. (b) & (c), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (b) revised 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; removed and reserved, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 1.195 [Reserved]
[34 FR 18858, Nov. 26, 1969; removed and reserved, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 1.196 [Reserved]
[24 FR 10332, Dec. 12, 1959; 49 FR 29183, May 29, 1981; 49 FR 48416, Dec. 12, 1984, effective Feb. 12, 1985; para. (b) revised, 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; paras. (a), (b) & (d) amended, paras. (e) & (f) added, 54 FR 29552, July 13, 1989, effective Aug. 20, 1989; para. (f) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. (b) & (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; removed and reserved, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 1.197 Termination of proceedings.
(a) Proceedings on an application are considered terminated by the dismissal of an appeal or the failure to timely file an appeal to the court or a civil action except:
(1) Where claims stand allowed in an application; or
(2) Where the nature of the decision requires further action by the examiner.
(b) The date of termination of proceedings on an application is the date on which the appeal is dismissed or the date on which the time for appeal to the U.S. Court of Appeals for the Federal Circuit or review by civil action (§ 90.3 of this chapter) expires in the absence of further appeal or review.
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If an appeal to the U.S. Court of Appeals for the Federal Circuit or a civil action has been filed, proceedings on an application are considered terminated when the appeal or civil action is terminated. A civil action is terminated when the time to appeal the judgment expires. An appeal to the U.S. Court of Appeals for the Federal Circuit, whether from a decision of the Board or a judgment in a civil action, is terminated when the mandate is issued by the Court.
[46 FR 29184, May 29, 1981; para. (a), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a) and (b), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (b) and (c), 54 FR 29552, July 13, 1989, effective Aug. 20, 1989; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. (a) & (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (c) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; section heading revised and para. (a) removed and reserved, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012; revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013 and corrected 78 FR 75251, Dec. 11, 2013, effective Dec. 18, 2013]
§ 1.198 Reopening after a final decision of the Patent Trial and Appeal Board.
When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner except under the provisions of § 1.114 or § 41.50 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
[49 FR 48416, Dec. 12, 1984, effective date Feb. 11, 1985; revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
PUBLICATION OF APPLICATIONS
§ 1.211 Publication of applications.
[Editor Note: Para. (c) below is applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) Each U.S. national application for patent filed in the Office under 35 U.S.C. 111(a) and each international application in compliance with 35 U.S.C. 371 will be published promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under title 35, United States Code, unless:
(1) The application is recognized by the Office as no longer pending;
(2) The application is national security classified (see § 5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under national security review;
(3) The application has issued as a patent in sufficient time to be removed from the publication process; or
(4) The application was filed with a nonpublication request in compliance with § 1.213(a).
(b) Provisional applications under 35 U.S.C. 111(b) shall not be published, and design applications under 35 U.S.C. chapter 16, international design applications under 35 U.S.C. chapter 38, and reissue applications under 35 U.S.C. chapter 25 shall not be published under this section.
(c) An application filed under 35 U.S.C. 111(a) will not be published until it includes the basic filing fee (§ 1.16(a) or § 1.16(c) ) and any English translation required by § 1.52(d). The Office may delay publishing any application until it includes any application size fee required by the Office under § 1.16(s) or § 1.492(j), a specification having papers in compliance with § 1.52 and an abstract (§ 1.72(b)), drawings in compliance with § 1.84, a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), and the inventor's oath or declaration or application data sheet containing the information specified in § 1.63(b).
(d) The Office may refuse to publish an application, or to include a portion of an application
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in the patent application publication (§ 1.215), if publication of the application or portion thereof would violate Federal or state law, or if the application or portion thereof contains offensive or disparaging material.
(e) The publication fee set forth in § 1.18(d) must be paid in each application published under this section before the patent will be granted. If an application is subject to publication under this section, the sum specified in the notice of allowance under § 1.311 will also include the publication fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable. If the application is not published under this section, the publication fee (if paid) will be refunded.
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (c) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (b) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[*The revisions to para. (c) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.211 (pre-AIA) for para. (c) otherwise in effect.]
§ 1.211 (pre-AIA) Publication of applications.
[Editor Note: Para. (c) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) Each U.S. national application for patent filed in the Office under 35 U.S.C.111(a) and each international application in compliance with 35 U.S.C. 371 will be published promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under title 35, United States Code, unless:
(1) The application is recognized by the Office as no longer pending;
(2) The application is national security classified (see § 5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under national security review;
(3) The application has issued as a patent in sufficient time to be removed from the publication process; or
(4) The application was filed with a nonpublication request in compliance with § 1.213(a).
(b) Provisional applications under 35 U.S.C. 111(b) shall not be published, and design applications under 35 U.S.C. chapter 16 and reissue applications under 35 U.S.C. chapter 25 shall not be published under this section.
(c) An application filed under 35 U.S.C. 111(a) will not be published until it includes the basic filing fee (§ 1.16(a) or 1.16(c)), any English translation required by § 1.52(d), and an executed oath or declaration under § 1.63. The Office may delay publishing any application until it includes any application size fee required by the Office under § 1.16(s) or § 1.492(j), a specification having papers in compliance with § 1.52 and an abstract (§ 1.72(b)), drawings in compliance with § 1.84, and a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), and until any petition under § 1.47 is granted.
(d) The Office may refuse to publish an application, or to include a portion of an application in the patent application publication (§ 1.215), if publication of the application or portion thereof would violate Federal or state law, or if the application or portion thereof contains offensive or disparaging material.
(e) The publication fee set forth in § 1.18(d) must be paid in each application published under this section before the patent will be granted. If an application is subject to publication under this section, the sum specified in the notice of allowance under § 1.311 will also include the publication fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable. If the application is not published under this section, the publication fee (if paid) will be refunded.
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004]
[*See § 1.211 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
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§ 1.213 Nonpublication request.
(a) If the invention disclosed in an application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the application will not be published under 35 U.S.C. 122(b) and § 1.211 provided:
(1) A request (nonpublication request) is submitted with the application upon filing;
(2) The request states in a conspicuous manner that the application is not to be published under 35 U.S.C. 122(b);
(3) The request contains a certification that the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication at eighteen months after filing; and
(4) The request is signed in compliance with § 1.33(b).
(b) The applicant may rescind a nonpublication request at any time. A request to rescind a nonpublication request under paragraph (a) of this section must:
(1) Identify the application to which it is directed;
(2) State in a conspicuous manner that the request that the application is not to be published under 35 U.S.C. 122(b) is rescinded; and
(3) Be signed in compliance with § 1.33(b).
(c) If an applicant who has submitted a nonpublication request under paragraph (a) of this section subsequently files an application directed to the invention disclosed in the application in which the nonpublication request was submitted in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the applicant must notify the Office of such filing within forty-five days after the date of the filing of such foreign or international application. The failure to timely notify the Office of the filing of such foreign or international application shall result in abandonment of the application in which the nonpublication request was submitted (35 U.S.C. 122(b)(2)(B)(iii)).
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]
§ 1.215 Patent application publication.
[Editor Note: Paragraphs (a) - (c) below are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) The publication of an application under 35 U.S.C. 122(b) shall include a patent application publication. The date of publication shall be indicated on the patent application publication. The patent application publication will be based upon the specification and drawings deposited on the filing date of the application, as well as the application data sheet and/or the inventor's oath or declaration. The patent application publication may also be based upon amendments to the specification (other than the abstract or the claims) that are reflected in a substitute specification under § 1.125(b), amendments to the abstract under § 1.121(b), amendments to the claims that are reflected in a complete claim listing under § 1.121(c), and amendments to the drawings under § 1.121(d), provided that such substitute specification or amendment is submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun. Technical preparations for publication of an application generally begin four months prior to the projected date of publication. The patent application publication of an application that has entered the national stage under 35 U.S.C. 371 may also include amendments made during the international stage. See paragraph (c) of this section for publication of an application based upon a copy of the application submitted via the Office electronic filing system.
(b) The patent application publication will include the name of the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter if that information is provided in the application data sheet in an application filed under § 1.46. Assignee information may be included on the patent application publication in other applications if the assignee information is provided in an application data sheet submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication of the
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application have begun. Providing assignee information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
(c) At applicant's option, the patent application publication will be based upon the copy of the application (specification, drawings, and the application data sheet and/or the inventor's oath or declaration) as amended, provided that applicant supplies such a copy in compliance with the Office electronic filing system requirements within one month of the mailing date of the first Office communication that includes a confirmation number for the application, or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later.
(d) If the copy of the application submitted pursuant to paragraph (c) of this section does not comply with the Office electronic filing system requirements, the Office will publish the application as provided in paragraph (a) of this section. If, however, the Office has not started the publication process, the Office may use an untimely filed copy of the application supplied by the applicant under paragraph (c) of this section in creating the patent application publication.
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a) and (c) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; paras. (a)-(c) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The revisions to paras. (a)-(c) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.215 (pre-AIA) for the rule otherwise in effect.]
§ 1.215 (pre-AIA) Patent application publication.
[Editor Paragraphs (a) - (c) below are not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
(a) The publication of an application under 35 U.S.C. 122(b) shall include a patent application publication. The date of publication shall be indicated on the patent application publication. The patent application publication will be based upon the specification and drawings deposited on the filing date of the application, as well as the executed
oath or declaration submitted to complete the application. The patent application publication may also be based upon amendments to the specification (other than the abstract or the claims) that are reflected in a substitute specification under § 1.125(b), amendments to the abstract under § 1.121(b), amendments to the claims that are reflected in a complete claim listing under § 1.121(c), and amendments to the drawings under § 1.121(d), provided that such substitute specification or amendment is submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun. Technical preparations for publication of an application generally begin four months prior to the projected date of publication. The patent application publication of an application that has entered the national stage under 35 U.S.C. 371 may also include amendments made during the international stage. See paragraph (c) of this section for publication of an application based upon a copy of the application submitted via the Office electronic filing system.
(b) If applicant wants the patent application publication to include assignee information, the applicant must include the assignee information on the application transmittal sheet or the application data sheet (§ 1.76). Assignee information may not be included on the patent application publication unless this information is provided on the application transmittal sheet or application data sheet included with the application on filing. Providing this information on the application transmittal sheet or the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
(c) At applicant’s option, the patent application publication will be based upon the copy of the application (specification, drawings, and oath or declaration) as amended, provided that applicant supplies such a copy in compliance with the Office electronic filing system requirements within one month of the mailing date of the first Office communication that includes a confirmation number for the application, or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later.
(d) If the copy of the application submitted pursuant to paragraph (c) of this section does not
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comply with the Office electronic filing system requirements, the Office will publish the application as provided in paragraph (a) of this section. If, however, the Office has not started the publication process, the Office may use an untimely filed copy of the application supplied by the applicant under paragraph (c) of this section in creating the patent application publication.
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a) and (c) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
[*See § 1.215 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.217 Publication of a redacted copy of an application.
(a) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign-filed applications or the description of the invention in such foreign-filed applications is less extensive than the application or description of the invention in the application filed in the Office, the applicant may submit a redacted copy of the application filed in the Office for publication, eliminating any part or description of the invention that is not also contained in any of the corresponding applications filed in a foreign country. The Office will publish the application as provided in § 1.215(a) unless the applicant files a redacted copy of the application in compliance with this section within sixteen months after the earliest filing date for which a benefit is sought under title 35, United States Code.
(b) The redacted copy of the application must be submitted in compliance with the Office electronic filing system requirements. The title of the invention in the redacted copy of the application must correspond to the title of the application at the time the redacted copy of the application is submitted to the Office. If the redacted copy of the application does not comply with the Office electronic filing system requirements, the Office will publish the application as provided in § 1.215(a).
(c) The applicant must also concurrently submit in paper (§ 1.52(a)) to be filed in the application:
(1) A certified copy of each foreign-filed application that corresponds to the application for which a redacted copy is submitted;
(2) A translation of each such foreign-filed application that is in a language other than English, and a statement that the translation is accurate;
(3) A marked-up copy of the application showing the redactions in brackets; and
(4) A certification that the redacted copy of the application eliminates only the part or description of the invention that is not contained in any application filed in a foreign country, directly or through a multilateral international agreement, that corresponds to the application filed in the Office.
(d) The Office will provide a copy of the complete file wrapper and contents of an application for which a redacted copy was submitted under this section to any person upon written request pursuant to § 1.14(c)(2), unless applicant complies with the requirements of paragraphs (d)(1), (d)(2), and (d)(3) of this section.
(1) Applicant must accompany the submission required by paragraph (c) of this section with the following:
(i) A copy of any Office correspondence previously received by applicant including any desired redactions, and a second copy of all Office correspondence previously received by applicant showing the redacted material in brackets; and
(ii) A copy of each submission previously filed by the applicant including any desired redactions, and a second copy of each submission previously filed by the applicant showing the redacted material in brackets.
(2) In addition to providing the submission required by paragraphs (c) and (d)(1) of this section, applicant must:
(i) Within one month of the date of mailing of any correspondence from the Office, file a copy of such Office correspondence including any desired redactions, and a second copy of such Office correspondence showing the redacted material in brackets; and
(ii) With each submission by the applicant, include a copy of such submission including any desired redactions, and a second copy
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of such submission showing the redacted material in brackets.
(3) Each submission under paragraph (d)(1) or (d)(2) of this paragraph must also be accompanied by the processing fee set forth in § 1.17(i) and a certification that the redactions are limited to the elimination of material that is relevant only to the part or description of the invention that was not contained in the redacted copy of the application submitted for publication.
(e) The provisions of § 1.8 do not apply to the time periods set forth in this section.
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]
§ 1.219 Early publication.
Applications that will be published under § 1.211 may be published earlier than as set forth in § 1.211(a) at the request of the applicant. Any request for early publication must be accompanied by the publication fee set forth in § 1.18(d). If the applicant does not submit a copy of the application in compliance with the Office electronic filing system requirements pursuant to § 1.215(c), the Office will publish the application as provided in § 1.215(a). No consideration will be given to requests for publication on a certain date, and such requests will be treated as a request for publication as soon as possible.
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]
§ 1.221 Voluntary publication or republication of patent application publication.
(a) Any request for publication of an application filed before, but pending on, November 29, 2000, and any request for republication of an application previously published under § 1.211, must include a copy of the application in compliance with the Office electronic filing system requirements and be accompanied by the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i). If the request does not comply with the requirements of this paragraph or the copy of the application does not comply with the Office electronic filing system
requirements, the Office will not publish the application and will refund the publication fee.
(b) The Office will grant a request for a corrected or revised patent application publication other than as provided in paragraph (a) of this section only when the Office makes a material mistake which is apparent from Office records. Any request for a corrected or revised patent application publication other than as provided in paragraph (a) of this section must be filed within two months from the date of the patent application publication. This period is not extendable.
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]
MISCELLANEOUS PROVISIONS
§ 1.248 Service of papers; manner of service; proof of service in cases other than interferences and trials.
(a) Service of papers must be on the attorney or agent of the party if there be such or on the party if there is no attorney or agent, and may be made in any of the following ways:
(1) By delivering a copy of the paper to the person served;
(2) By leaving a copy at the usual place of business of the person served with someone in his employment;
(3) When the person served has no usual place of business, by leaving a copy at the person’s residence, with some person of suitable age and discretion who resides there;
(4) Transmission by first class mail. When service is by mail the date of mailing will be regarded as the date of service;
(5) Whenever it shall be satisfactorily shown to the Director that none of the above modes of obtaining or serving the paper is practicable, service may be by notice published in the Official Gazette.
(b) Papers filed in the Patent and Trademark Office which are required to be served shall contain proof of service. Proof of service may appear on or be affixed to papers filed. Proof of service shall include the date and manner of service. In the case of personal service, proof of service shall also include the name of any person served, certified by
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the person who made service. Proof of service may be made by:
(1) An acknowledgement of service by or on behalf of the person served or
(2) A statement signed by the attorney or agent containing the information required by this section.
(c) See § 41.106(e) or § 42.6(e) of this title for service of papers in contested cases or trials before the Patent Trial and Appeal Board.
[46 FR 29184, May 29, 1981; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a)(5) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (c) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c) revised, 69 FR 5 8260, Sept. 30, 2004, effective Sept. 30, 2004; section heading and para. (c) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.251 Unlocatable file.
(a) In the event that the Office cannot locate the file of an application, patent, or other patent-related proceeding after a reasonable search, the Office will notify the applicant or patentee and set a time period within which the applicant or patentee must comply with the notice in accordance with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section.
(1) Applicant or patentee may comply with a notice under this section by providing:
(i) A copy of the applicant’s or patentee’s record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents);
(ii) A list of such correspondence; and
(iii) A statement that the copy is a complete and accurate copy of the applicant’s or patentee’s record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records.
(2) Applicant or patentee may comply with a notice under this section by:
(i) Producing the applicant’s or patentee’s record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding for the Office to copy (except for U.S. patent documents); and
(ii) Providing a statement that the papers produced by applicant or patentee are applicant’s or patentee’s complete record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records.
(3) If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.
(b) With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.
[Added, 65 FR 69446, Nov. 17, 2000, effective Nov. 17, 2000]
§ 1.265 [Removed]
[Added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR)]
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PREISSUANCE SUBMISSIONS AND PROTESTS BY THIRD PARTIES
§ 1.290 Submissions by third parties in applications.
(a) A third party may submit, for consideration and entry in the record of a patent application, any patents, published patent applications, or other printed publications of potential relevance to the examination of the application if the submission is made in accordance with 35 U.S.C. 122(e) and this section.A third-party submission may not be entered or considered by the Office if any part of the submission is not in compliance with 35 U.S.C. 122(e) and this section.
(b) Any third-party submission under this section must be filed prior to the earlier of:
(1) The date a notice of allowance under § 1.311 is given or mailed in the application; or
(2) The later of:
(i) Six months after the date on which the application is first published by the Office under 35 U.S.C. 122(b) and § 1.211, or
(ii) The date the first rejection under § 1.104 of any claim by the examiner is given or mailed during the examination of the application.
(c) Any third-party submission under this section must be made in writing.
(d) Any third-party submission under this section must include:
(1) A document list identifying the documents, or portions of documents, being submitted in accordance with paragraph (e) of this section;
(2) A concise description of the asserted relevance of each item identified in the document list;
(3) A legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;
(4) An English language translation of any non-English language item identified in the document list; and
(5) A statement by the party making the submission that:
(i) The party is not an individual who has a duty to disclose information with respect to the application under § 1.56; and
(ii) The submission complies with the requirements of 35 U.S.C. 122(e) and this section.
(e) The document list required by paragraph (d)(1) of this section must include a heading that identifies the list as a third-party submission under § 1.290, identify on each page of the list the application number of the application in which the submission is being filed, list U.S. patents and U.S. patent application publications in a separate section from other items, and identify each:
(1) U.S. patent by patent number, first named inventor, and issue date;
(2) U.S. patent application publication by patent application publication number, first named inventor, and publication date;
(3) Foreign patent or published foreign patent application by the country or patent office that issued the patent or published the application; the applicant, patentee, or first named inventor; an appropriate document number; and the publication date indicated on the patent or published application; and
(4) Non-patent publication by author (if any), title, pages being submitted, publication date, and, where available, publisher and place of publication. If no publication date is known, the third party must provide evidence of publication.
(f) Any third-party submission under this section must be accompanied by the fee set forth in § 1.17(o) for every ten items or fraction thereof identified in the document list.
(g) The fee otherwise required by paragraph (f) of this section is not required for a submission listing three or fewer total items that is accompanied by a statement by the party making the submission that, to the knowledge of the person signing the statement after making reasonable inquiry, the submission is the first and only submission under 35 U.S.C. 122(e) filed in the application by the party or a party in privity with the party.
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(h) In the absence of a request by the Office, an applicant need not reply to a submission under this section.
(i) The provisions of § 1.8 do not apply to the time periods set forth in this section.
[Added, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012; para. (f) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.291 Protests by the public against pending applications.
(a) A protest may be filed by a member of the public against a pending application, and it will be matched with the application file if it adequately identifies the patent application. A protest submitted within the time frame of paragraph (b) of this section, which is not matched in a timely manner to permit review by the examiner during prosecution, due to inadequate identification, may not be entered and may be returned to the protestor where practical, or, if return is not practical, discarded.
(b) The protest will be entered into the record of the application if, in addition to complying with paragraph (c) of this section, the protest has been served upon the applicant in accordance with § 1.248, or filed with the Office in duplicate in the event service is not possible; and, except for paragraph (b)(1) of this section, the protest was filed prior to the date the application was published under § 1.211, or the date a notice of allowance under § 1.311 was given or mailed, whichever occurs first:
(1) If a protest is accompanied by the written consent of the applicant, the protest will be considered if the protest is filed prior to the date a notice of allowance under § 1.311 is given or mailed in the application.
(2) A statement must accompany a protest that it is the first protest submitted in the application by the real party in interest who is submitting the protest; or the protest must comply with paragraph (c)(5) of this section. This section does not apply to the first protest filed in an application.
(c) In addition to compliance with paragraphs (a) and (b) of this section, a protest must include:
(1) An information list of the documents, portions of documents, or other information being submitted, where each:
(i) U.S. patent is identified by patent number, first named inventor, and issue date;
(ii) U.S. patent application publication is identified by patent application publication number, first named inventor, and publication date;
(iii) Foreign patent or published foreign patent application is identified by the country or patent office that issued the patent or published the application; an appropriate document number; the applicant, patentee, or first named inventor; and the publication date indicated on the patent or published application;
(iv) Non-patent publication is identified by author (if any), title, pages being submitted, publication date, and, where available, publisher and place of publication; and
(v) Item of other information is identified by date, if known.
(2) A concise explanation of the relevance of each item identified in the information list pursuant to paragraph (c)(1) of this section;
(3) A legible copy of each item identified in the information list, other than U.S. patents and U.S. patent application publications;
(4) An English language translation of any non-English language item identified in the information list; and
(5) If it is a second or subsequent protest by the same party in interest, an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier and why the significantly different issue(s) were not presented earlier, and a processing fee under § 1.17(i) must be submitted.
(d) A member of the public filing a protest in an application under this section will not receive any communication from the Office relating to the protest, other than the return of a self-addressed postcard which the member of the public may include with the protest in order to receive an acknowledgement by the Office that the protest has been received. The limited involvement of the member of the public filing a protest pursuant to this section ends with the filing of the protest, and no further submission on behalf of the protestor will be considered, unless the submission is made pursuant to paragraph (c)(5) of this section.
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(e) Where a protest raising inequitable conduct issues satisfies the provisions of this section for entry, it will be entered into the application file, generally without comment on the inequitable conduct issues raised in it.
(f) In the absence of a request by the Office, an applicant need not reply to a protest.
(g) Protests that fail to comply with paragraphs (b) or (c) of this section may not be entered, and if not entered, will be returned to the protestor, or discarded, at the option of the Office.
[47 FR 21752, May 19, 1982, effective July 1, 1982; paras. (a) and (c), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras. (a) and (b) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(1) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (b) introductory text and paras. (b)(1), (c)(1)-(4), and (f) revised, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012]
§ 1.292 [Reserved]
[Removed and reserved, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012]
§ 1.293 [Reserved]
[Removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013. See § 1.293 (pre-2013-03-16) for the rule applicable to any request for a statutory invention registration filed prior to March 16, 2013.]
§ 1.293 (pre-2013-03-16) Statutory invention registration.
[Editor Note: Applies to any request for a statutory invention registration filed prior to March 16, 2013]
(a) An applicant for an original patent may request, at any time during the pendency of applicant’s pending complete application, that the specification and drawings be published as a statutory invention registration. Any such request must be signed by (1) the applicant and any assignee of record or (2) an attorney or agent of record in the application.
(b) Any request for publication of a statutory invention registration must include the following parts:
(1) A waiver of the applicant’s right to receive a patent on the invention claimed effective upon the date of publication of the statutory invention registration;
(2) The required fee for filing a request for publication of a statutory invention registration as provided for in § 1.17(n) or (o);
(3) A statement that, in the opinion of the requester, the application to which the request is directed meets the requirements of 35 U.S.C. 112; and
(4) A statement that, in the opinion of the requester, the application to which the request is directed complies with the formal requirements of this part for printing as a patent.
(c) A waiver filed with a request for a statutory invention registration will be effective, upon publication of the statutory invention registration, to waive the inventor’s right to receive a patent on the invention claimed in the statutory invention registration, in any application for an original patent which is pending on, or filed after, the date of publication of the statutory invention registration. A waiver filed with a request for a statutory invention registration will not affect the rights of any other inventor even if the subject matter of the statutory invention registration and an application of another inventor are commonly owned. A waiver filed with a request for a statutory invention registration will not affect any rights in a patent to the inventor which issued prior to the date of publication of the statutory invention registration unless a reissue application is filed seeking to enlarge the scope of the claims of the patent. See also § 1.104(c)(5).
[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
§ 1.294 [Reserved]
[Removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013. See § 1.294 (pre-2013-03-16) for the rule applicable to any request for a statutory invention registration filed prior to March 16, 2013.]
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§ 1.294 (pre-2013-03-16) Examination of request for publication of a statutory invention registration and patent application to which the request is directed.
[Editor Note: Applies to any request for a statutory invention registration filed prior to March 16, 2013]
(a) Any request for a statutory invention registration will be examined to determine if the requirements of § 1.293 have been met. The application to which the request is directed will be examined to determine (1) if the subject matter of the application is appropriate for publication, (2) if the requirements for publication are met, and (3) if the requirements of 35 U.S.C. 112 and § 1.293 of this part are met.
(b) Applicant will be notified of the results of the examination set forth in paragraph (a) of this section. If the requirements of § 1.293 and this section are not met by the request filed, the notification to applicant will set a period of time within which to comply with the requirements in order to avoid abandonment of the application. If the application does not meet the requirements of 35 U.S.C. 112, the notification to applicant will include a rejection under the appropriate provisions of 35 U.S.C. 112. The periods for reply established pursuant to this section are subject to the extension of time provisions of § 1.136. After reply by the applicant, the application will again be considered for publication of a statutory invention registration. If the requirements of § 1.293 and this section are not timely met, the refusal to publish will be made final. If the requirements of 35 U.S.C. 112 are not met, the rejection pursuant to 35 U.S.C. 112 will be made final.
(c) If the examination pursuant to this section results in approval of the request for a statutory invention registration the applicant will be notified of the intent to publish a statutory invention registration.
[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
§ 1.295 [Reserved]
[Removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013. See § 1.295 (pre-2013-03-16) for the rule applicable to any request for a statutory invention registration filed prior to March 16, 2013.]
§ 1.295 (pre-2013-03-16) Review of decision finally refusing to publish a statutory invention registration.
[Editor Note: Applies to any request for a statutory invention registration filed prior to March 16, 2013]
(a) Any requester who is dissatisfied with the final refusal to publish a statutory invention registration for reasons other than compliance with 35 U.S.C. 112 may obtain review of the refusal to publish the statutory invention registration by filing a petition to the Director accompanied by the fee set forth in § 1.17(g) within one month or such other time as is set in the decision refusing publication. Any such petition should comply with the requirements of § 1.181(b). The petition may include a request that the petition fee be refunded if the final refusal to publish a statutory invention registration for reasons other than compliance with 35 U.S.C. 112 is determined to result from an error by the Patent and Trademark Office.
(b) Any requester who is dissatisfied with a decision finally rejecting claims pursuant to 35 U.S.C. 112 may obtain review of the decision by filing an appeal to the Board of Patent Appeals and Interferences pursuant to § 41.31 of this title. If the decision rejecting claims pursuant to 35 U.S.C. 112 is reversed, the request for a statutory invention registration will be approved and the registration published if all of the other provisions of § 1.293 and this section are met.
[50 FR 9382, Mar. 7, 1985, effective May 8, 1985; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (b) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
§ 1.296 [Reserved]
[Removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013. See § 1.296
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§ 1.296PATENT RULES
(pre-2013-03-16) for the rule applicable to any request for a statutory invention registration filed prior to March 16, 2013.]
§ 1.296 (pre-2013-03-16) Withdrawal of request for publication of statutory invention registration.
[Editor Note: Applies to any request for a statutory invention registration filed prior to March 16, 2013]
A request for a statutory invention registration, which has been filed, may be withdrawn prior to the date of the notice of the intent to publish a statutory invention registration issued pursuant to § 1.294(c) by filing a request to withdraw the request for publication of a statutory invention registration. The request to withdraw may also include a request for a refund of any amount paid in excess of the application filing fee and a handling fee of $130.00 which will be retained. Any request to withdraw the request for publication of a statutory invention registration filed on or after the date of the notice of intent to publish issued pursuant to § 1.294(c) must be in the form of a petition accompanied by the fee set forth in § 1.17(g).
[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
§ 1.297 [Reserved]
[Removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013. See § 1.297 (pre-2013-03-16) for the rule applicable to any request for a statutory invention registration filed prior to March 16, 2013.]
§ 1.297 (pre-2013-03-16) Publication of statutory invention registration.
[Editor Note: Applies to any request for a statutory invention registration filed prior to March 16, 2013]
(a) If the request for a statutory invention registration is approved the statutory invention registration will be published. The statutory invention registration will be mailed to the requester at the correspondence address as provided for in § 1.33(a). A notice of the publication of each statutory
invention registration will be published in the Official Gazette.
(b) Each statutory invention registration published will include a statement relating to the attributes of a statutory invention registration. The statement will read as follows:
A statutory invention registration is not a patent. It has the defensive attributes of a patent but does not have the enforceable attributes of a patent. No article or advertisement or the like may use the term patent, or any term suggestive of a patent, when referring to a statutory invention registration. For more specific information on the rights associated with a statutory invention registration see 35 U.S.C. 157.
[50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
REVIEW OF PATENTANDTRADEMARK OFFICE DECISIONS BY COURT
§ 1.301 [Reserved]
[Removed and reserved, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.302 [Reserved]
[Removed and reserved, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.303 [Reserved]
[Removed and reserved, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.304 [Reserved]
[Removed and reserved, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
ALLOWANCE AND ISSUE OF PATENT
§ 1.311 Notice of Allowance.
(a) If, on examination, it appears that the applicant is entitled to a patent under the law, a
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notice of allowance will be sent to the applicant at the correspondence address indicated in § 1.33. The notice of allowance shall specify a sum constituting the issue fee and any required publication fee (§ 1.211(e)) which issue fee and any required publication fee must both be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable.
(b) An authorization to charge the issue fee or other post-allowance fees set forth in § 1.18 to a deposit account may be filed in an individual application only after mailing of the notice of allowance. The submission of either of the following after the mailing of a notice of allowance will operate as a request to charge the correct issue fee or any publication fee due to any deposit account identified in a previously filed authorization to charge such fees:
(1) An incorrect issue fee or publication fee; or
(2) A fee transmittal form (or letter) for payment of issue fee or publication fee.
[47 FR 41279, Sept. 17, 1982, effective Oct. 1, 1982; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (a) revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.312 Amendments after allowance.
No amendment may be made as a matter of right in an application after the mailing of the notice of allowance. Any amendment filed pursuant to this section must be filed before or with the payment of the issue fee, and may be entered on the recommendation of the primary examiner, approved by the Director, without withdrawing the application from issue.
[Para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 1.313 Withdrawal from issue.
(a) Applications may be withdrawn from issue for further action at the initiative of the Office or upon petition by the applicant. To request that the Office withdraw an application from issue, applicant must file a petition under this section including the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why withdrawal of the application from issue is necessary. A petition under this section is not required if a request for continued examination under § 1.114 is filed prior to payment of the issue fee. If the Office withdraws the application from issue, the Office will issue a new notice of allowance if the Office again allows the application.
(b) Once the issue fee has been paid, the Office will not withdraw the application from issue at its own initiative for any reason except:
(1) A mistake on the part of the Office;
(2) A violation of § 1.56 or illegality in the application;
(3) Unpatentability of one or more claims; or
(4) For an interference or derivation proceeding.
(c) Once the issue fee has been paid, the application will not be withdrawn from issue upon petition by the applicant for any reason except:
(1) Unpatentability of one of more claims, which petition must be accompanied by an unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable;
(2) Consideration of a request for continued examination in compliance with § 1.114; or
(3) Express abandonment of the application. Such express abandonment may be in favor of a continuing application.
(d) A petition under this section will not be effective to withdraw the application from issue unless it is actually received and granted by the appropriate officials before the date of issue. Withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of application information.
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[47 FR 41280, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 54 FR 6893, Feb. 15, 1989, 54 FR 9432, Mar. 7, 1989, effective Apr. 17, 1989; para. (b), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (paras. (b), (c)(1), (c)(3) and (d) adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (a) and (c)(2) revised, 65 FR 50092, Aug. 16, 2000, effective Aug. 16, 2000; para. (b)(4) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.314 Issuance of patent.
If applicant timely pays the issue fee, the Office will issue the patent in regular course unless the application is withdrawn from issue (§ 1.313) or the Office defers issuance of the patent. To request that the Office defer issuance of a patent, applicant must file a petition under this section including the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why it is necessary to defer issuance of the patent.
[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§ 1.315 Delivery of patent.
The patent will be delivered or mailed upon issuance to the correspondence address of record. See § 1.33(a).
[Revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]
§ 1.316 Application abandoned for failure to pay issue fee.
If the issue fee is not paid within three months from the date of the notice of allowance, the application will be regarded as abandoned. Such an abandoned application will not be considered as pending before the Patent and Trademark Office.
[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (b)-(d) amended, paras. (e) and (f) added, 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective
June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.317 [Reserved]
[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (a)-(d) amended, paras. (e) & (f) added, 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; para. (d) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; removed and reserved, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.318 [Reserved]
[43 FR 20465, May 11, 1978; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
DISCLAIMER
§ 1.321 Statutory disclaimers, including terminal disclaimers.
[Editor Note: Para. (b) below is applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. The disclaimer, to be recorded in the Patent and Trademark Office, must:
(1) Be signed by the patentee, or an attorney or agent of record;
(2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation;
(3) State the present extent of patentee’s ownership interest in the patent; and
(4) Be accompanied by the fee set forth in § 1.20(d).
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(b) An applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted. Such terminal disclaimer is binding upon the grantee and its successors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
(1) Be signed by the applicant or an attorney or agent of record;
(2) Specify the portion of the term of the patent being disclaimed;
(3) State the present extent of applicant's ownership interest in the patent to be granted; and
(4) Be accompanied by the fee set forth in § 1.20(d).
(c) A terminal disclaimer, when filed to obviate judicially created double patenting in a patent application or in a reexamination proceeding except as provided for in paragraph (d) of this section, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and
(3) Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting.
(d) A terminal disclaimer, when filed in a patent application or in a reexamination proceeding to obviate double patenting based upon a patent or application that is not commonly owned but was disqualified as prior art as set forth in either § 1.104(c)(4)(ii) or (c)(5)(ii) as the result of activities undertaken within the scope of a joint research agreement, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or be signed in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding;
(3) Include a provision waiving the right to separately enforce any patent granted on that application or any patent subject to the reexamination proceeding and the patent or any patent granted on the application which formed the basis for the double patenting, and that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent and the patent, or any patent granted on the application, which formed the basis for the double patenting are not separately enforced.
[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (c) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para (d) added, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; paras. (c) and (d) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para. (b) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; ; para.(d) introductory text revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
[*The revisions to para. (b) effective Sept. 16, 2012 were applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.321 (pre-AIA) for the rule otherwise in effect.]
§ 1.321 (pre-AIA) Statutory disclaimers, including terminal disclaimers.
[Editor Note: Para. (b) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]
(a) A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. The disclaimer, to be recorded in the Patent and Trademark Office, must:
(1) Be signed by the patentee, or an attorney or agent of record;
(2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation;
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§ 1.321 (pre-AIA)
PATENT RULES
(3) State the present extent of patentee’s ownership interest in the patent; and
(4) Be accompanied by the fee set forth in § 1.20(d).
(b) An applicant or assignee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted. Such terminal disclaimer is binding upon the grantee and its successors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
(1) Be signed:
(i) By the applicant, or
(ii) If there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii) If there is an assignee of record of the entire interest, by such assignee, or
(iv) By an attorney or agent of record;
(2) Specify the portion of the term of the patent being disclaimed;
(3) State the present extent of applicant’s or assignee’s ownership interest in the patent to be granted; and
(4) Be accompanied by the fee set forth in § 1.20(d).
(c) A terminal disclaimer, when filed to obviate judicially created double patenting in a patent application or in a reexamination proceeding except as provided for in paragraph (d) of this section, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and
(3) Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting.
(d) A terminal disclaimer, when filed in a patent application or in a reexamination proceeding to obviate double patenting based upon a patent or application that is not commonly owned but was disqualified as prior art as set forth in either § 1.104(c)(4)(ii) or (c)(5)(ii) as the result of activities undertaken within the scope of a joint research agreement, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or be signed in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding;
(3) Include a provision waiving the right to separately enforce any patent granted on that application or any patent subject to the reexamination proceeding and the patent or any patent granted on the application which formed the basis for the double patenting, and that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent and the patent, or any patent granted on the application, which formed the basis for the double patenting are not separately enforced.
[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (c) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para (d) added, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; paras. (c) and (d) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para.(d) introductory text revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]
[*See § 1.321 for more information and for para. (b) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
CORRECTION OF ERRORS IN PATENT
§ 1.322 Certificate of correction of Office mistake.
(a)(1) The Director may issue a certificate of correction pursuant to 35 U.S.C. 254 to correct a mistake in a patent, incurred through the fault of the Office, which mistake is clearly disclosed in the records of the Office:
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(i) At the request of the patentee or the patentee’ s assignee;
(ii) Acting sua sponte for mistakes that the Office discovers; or
(iii) Acting on information about a mistake supplied by a third party.
(2)(i) There is no obligation on the Office to act on or respond to a submission of information or request to issue a certificate of correction by a third party under paragraph (a)(1)(iii) of this section.
(ii) Papers submitted by a third party under this section will not be made of record in the file that they relate to nor be retained by the Office.
(3) If the request relates to a patent involved in an interference or trial before the Patent Trial and Appeal Board, the request must comply with the requirements of this section and be accompanied by a motion under § 41.121(a)(2), § 41.121(a)(3), or § 42.20 of this title.
(4) The Office will not issue a certificate of correction under this section without first notifying the patentee (including any assignee of record) at the correspondence address of record as specified in § 1.33(a) and affording the patentee or an assignee an opportunity to be heard.
(b) If the nature of the mistake on the part of the Office is such that a certificate of correction is deemed inappropriate in form, the Director may issue a corrected patent in lieu thereof as a more appropriate form for certificate of correction, without expense to the patentee.
[24 FR 10332, Dec. 22, 1959; 34 FR 5550, Mar. 22, 1969; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(1) & (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(3) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a)(3) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.323 Certificate of correction of applicant’s mistake.
The Office may issue a certificate of correction under the conditions specified in 35 U.S.C. 255 at the request of the patentee or the patentee’s assignee, upon payment of the fee set forth in § 1.20(a). If the request relates to a patent involved in an interference
or trial before the Patent Trial and Appeal Board, the request must comply with the requirements of this section and be accompanied by a motion under § 41.121(a)(2), § 41.121(a)(3) or § 42.20 of this title.
[34 FR 5550, Mar. 22, 1969; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256.
(a) Whenever through error a person is named in an issued patent as the inventor, or an inventor is not named in an issued patent, the Director, pursuant to 35 U.S.C. 256, may, on application of all the parties and assignees, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors.
(b) Any request to correct inventorship of a patent pursuant to paragraph (a) of this section must be accompanied by:
(1) A statement from each person who is being added as an inventor and each person who is currently named as an inventor either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change;
(2) A statement from all assignees of the parties submitting a statement under paragraph (b)(1) of this section agreeing to the change of inventorship in the patent, which statement must comply with the requirements of § 3.73(c) of this chapter; and
(3) The fee set forth in § 1.20(b).
(c) For correction of inventorship in an application, see § 1.48.
(d) In an interference under part 41, subpart D, of this title, a request for correction of inventorship in a patent must be in the form of a motion under § 41.121(a)(2) of this title. In a contested case under part 42, subpart D, of this title, a request for correction of inventorship in a patent must be in the form of a motion under § 42.22 of this title. The motion under § 41.121(a)(2) or § 42.22
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§ 1.324PATENT RULES
of this title must comply with the requirements of this section.
[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 48416, Dec. 12, 1984, 50 FR 23123, May 31, 1985, effective Feb. 11, 1985; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; heading and para. (b)(1) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (c) added, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (a) and (c) revised and para. (d) added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) and para. (b) introductory text revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.325 Other mistakes not corrected.
Mistakes other than those provided for in §§ 1.322, 1.323, 1.324, and not affording legal grounds for reissue or for reexamination, will not be corrected after the date of the patent.
[48 FR 2714, Jan. 20, 1983, effective date Feb. 27, 1983]
ARBITRATION AWARDS
§ 1.331 [Reserved]
[24 FR 10332, Dec. 22, 1959; 43 FR 20465, May 11, 1978; 47 FR 41281, Sept. 17, 1982; deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]
§ 1.332 [Reserved]
[47 FR 41281, Sept. 17, 1982; deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]
§ 1.333 [Reserved]
[Deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]
§ 1.334 [Reserved]
[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; para. (c), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]
§ 1.335 Filing of notice of arbitration awards.
(a) Written notice of any award by an arbitrator pursuant to 35 U.S.C. 294 must be filed in the Patent and Trademark Office by the patentee or the patentee’s assignee or licensee. If the award involves more than one patent a separate notice must be filed for placement in the file of each patent. The notice must set forth the patent number, the names of the inventor and patent owner, and the names and addresses of the parties to the arbitration. The notice must also include a copy of the award.
(b) If an award by an arbitrator pursuant to 35 U.S.C. 294 is modified by a court, the party requesting the modification must file in the Patent and Trademark Office, a notice of the modification for placement in the file of each patent to which the modification applies. The notice must set forth the patent number, the names of the inventor and patent owner, and the names and addresses of the parties to the arbitration. The notice must also include a copy of the court’s order modifying the award.
(c) Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be unenforceable until any notices required by paragraph (a) or (b) of this section are filed in the Patent and Trademark Office. If any required notice is not filed by the party designated in paragraph (a) or (b) of this section, any party to the arbitration proceeding may file such a notice.
[48 FR 2718, Jan. 20, 1983, effective Feb. 8, 1983]
AMENDMENT OF RULES
§ 1.351 Amendments to rules will be published.
All amendments to the regulations in this part will be published in the Official Gazette and in the Federal Register.
§ 1.352 [Reserved]
[Para. (a) amended, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
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MAINTENANCE FEES
§ 1.362 Time for payment of maintenance fees.
(a) Maintenance fees as set forth in §§ 1.20(e) through (g) are required to be paid in all patents based on applications filed on or after December 12, 1980, except as noted in paragraph (b) of this section, to maintain a patent in force beyond 4, 8 and 12 years after the date of grant.
(b) Maintenance fees are not required for any plant patents or for any design patents. Maintenance fees are not required for a reissue patent if the patent being reissued did not require maintenance fees.
(c) The application filing dates for purposes of payment of maintenance fees are as follows:
(1) For an application not claiming benefit of an earlier application, the actual United States filing date of the application.
(2) For an application claiming benefit of an earlier foreign application under 35 U.S.C. 119, the United States filing date of the application.
(3) For a continuing (continuation, division, continuation-in-part) application claiming the benefit of a prior patent application under 35 U.S.C. 120, the actual United States filing date of the continuing application.
(4) For a reissue application, including a continuing reissue application claiming the benefit of a reissue application under 35 U.S.C. 120, the United States filing date of the original non-reissue application on which the patent reissued is based.
(5) For an international application which has entered the United States as a Designated Office under 35 U.S.C. 371, the international filing date granted under Article 11(1) of the Patent Cooperation Treaty which is considered to be the United States filing date under 35 U.S.C. 363.
(d) Maintenance fees may be paid in patents without surcharge during the periods extending respectively from:
(1) 3 years through 3 years and 6 months after grant for the first maintenance fee,
(2) 7 years through 7 years and 6 months after grant for the second maintenance fee, and
(3) 11 years through 11 years and 6 months after grant for the third maintenance fee.
(e) Maintenance fees may be paid with the surcharge set forth in § 1.20(h) during the respective grace periods after:
(1) 3 years and 6 months and through the day of the 4th anniversary of the grant for the first maintenance fee.
(2) 7 years and 6 months and through the day of the 8th anniversary of the grant for the second maintenance fee, and
(3) 11 years and 6 months and through the day of the 12th anniversary of the grant for the third maintenance fee.
(f) If the last day for paying a maintenance fee without surcharge set forth in paragraph (d) of this section, or the last day for paying a maintenance fee with surcharge set forth in paragraph (e) of this section, falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, the maintenance fee and any necessary surcharge may be paid under paragraph (d) or paragraph (e) respectively on the next succeeding day which is not a Saturday, Sunday, or Federal holiday.
(g) Unless the maintenance fee and any applicable surcharge is paid within the time periods set forth in paragraphs (d), (e) or (f) of this section, the patent will expire as of the end of the grace period set forth in paragraph (e) of this section. A patent which expires for the failure to pay the maintenance fee will expire at the end of the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant.
(h) The periods specified in §§ 1.362(d) and (e) with respect to a reissue application, including a continuing reissue application thereof, are counted from the date of grant of the original non-reissue application on which the reissued patent is based.
[49 FR 34724, Aug. 31, 1984, added effective Nov. 1, 1984; paras. (a) and (e), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (c)(4) and (e) revised and para. (h) added, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994]
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§ 1.363 Fee address for maintenance fee purposes.
(a) All notices, receipts, refunds, and other communications relating to payment or refund of maintenance fees will be directed to the correspondence address used during prosecution of the application as indicated in § 1.33(a) unless:
(1) A fee address for purposes of payment of maintenance fees is set forth when submitting the issue fee, or
(2) A change in the correspondence address for all purposes is filed after payment of the issue fee, or
(3) A fee address or a change in the “fee address” is filed for purposes of receiving notices, receipts and other correspondence relating to the payment of maintenance fees after the payment of the issue fee, in which instance, the latest such address will be used.
(b) An assignment of a patent application or patent does not result in a change of the “correspondence address” or “fee address” for maintenance fee purposes.
(c) A fee address must be an address associated with a Customer Number.
[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984; para. (c) added, 69 FR 29865, May 26, 2004, effective June 25, 2004]
§ 1.366 Submission of maintenance fees.
(a) The patentee may pay maintenance fees and any necessary surcharges, or any person or organization may pay maintenance fees and any necessary surcharges on behalf of a patentee. A maintenance fee transmittal letter may be signed by a juristic applicant or patent owner. A patentee need not file authorization to enable any person or organization to pay maintenance fees and any necessary surcharges on behalf of the patentee.
(b) A maintenance fee and any necessary surcharge submitted for a patent must be submitted in the amount due on the date the maintenance fee and any necessary surcharge are paid. A maintenance fee or surcharge may be paid in the manner set forth in § 1.23 or by an authorization to charge a deposit account established pursuant to §
1.25. Payment of a maintenance fee and any necessary surcharge or the authorization to charge a deposit account must be submitted within the periods set forth in § 1.362(d), (e), or (f). Any payment or authorization of maintenance fees and surcharges filed at any other time will not be accepted and will not serve as a payment of the maintenance fee except insofar as a delayed payment of the maintenance fee is accepted by the Director in an expired patent pursuant to a petition filed under § 1.378. Any authorization to charge a deposit account must authorize the immediate charging of the maintenance fee and any necessary surcharge to the deposit account. Payment of less than the required amount, payment in a manner other than that set forth in § 1.23, or in the filing of an authorization to charge a deposit account having insufficient funds will not constitute payment of a maintenance fee or surcharge on a patent. The procedures set forth in § 1.8 or § 1.10 may be utilized in paying maintenance fees and any necessary surcharges.
(c) In submitting maintenance fees and any necessary surcharges, identification of the patents for which maintenance fees are being paid must include the patent number, and the application number of the United States application for the patent on which the maintenance fee is being paid. If the payment includes identification of only the patent number ( i.e., does not identify the application number of the United States application for the patent on which the maintenance fee is being paid), the Office may apply the payment to the patent identified by patent number in the payment or may return the payment.
(d) Payment of maintenance fees and any surcharges should identify the fee being paid for each patent as to whether it is the 3 1/2-, 7 1/2-, or 11 1/2-year fee, whether small entity status is being changed or claimed, the amount of the maintenance fee and any surcharge being paid, and any assigned customer number. If the maintenance fee and any necessary surcharge is being paid on a reissue patent, the payment must identify the reissue patent by reissue patent number and reissue application number as required by paragraph (c) of this section and should also include the original patent number.
(e) Maintenance fee payments and surcharge payments relating thereto must be submitted separate from any other payments for fees or charges,
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whether submitted in the manner set forth in § 1.23 or by an authorization to charge a deposit account. If maintenance fee and surcharge payments for more than one patent are submitted together, they should be submitted on as few sheets as possible with the patent numbers listed in increasing patent number order. If the payment submitted is insufficient to cover the maintenance fees and surcharges for all the listed patents, the payment will be applied in the order the patents are listed, beginning at the top of the listing.
(f) Notification of any change in status resulting in loss of entitlement to small entity status must be filed in a patent prior to paying, or at the time of paying, the earliest maintenance fee due after the date on which status as a small entity is no longer appropriate. See § 1.27(g).
(g) Maintenance fees and surcharges relating thereto will not be refunded except in accordance with §§ 1.26 and 1.28(a).
[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984; para. (b) amended, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; paras. (b) - (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (c) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (f) revised, 65 FR 78958, Dec. 18, 2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (a) and (b) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.377 Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.
(a) Any patentee who is dissatisfied with the refusal of the Patent and Trademark Office to accept and record a maintenance fee which was filed prior to the expiration of the patent may petition the Director to accept and record the maintenance fee.
(b) Any petition under this section must be filed within two months of the action complained of, or within such other time as may be set in the action complained of, and must be accompanied by the fee set forth in § 1.17(g). The petition may include a request that the petition fee be refunded if the refusal to accept and record the maintenance fee is determined to result from an error by the Patent and Trademark Office.
(c) Any petition filed under this section must comply with the requirements of § 1.181(b) and
must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest.
[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
§ 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
(a) The Director may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director to have been unintentional. If the Director accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired, but will be subject to the conditions set forth in 35 U.S.C. 41(c)(2).
(b) Any petition to accept an unintentionally delayed payment of a maintenance fee must include:
(1) The required maintenance fee set forth in § 1.20(e) through (g);
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the delay in payment of the maintenance fee was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(c) Any petition under this section must be signed in compliance with § 1.33(b).
(d) Reconsideration of a decision refusing to accept a delayed maintenance fee may be obtained by filing a petition for reconsideration within two months of the decision, or such other time as set in the decision refusing to accept the delayed payment of the maintenance fee.
(e) If the delayed payment of the maintenance fee is not accepted, the maintenance fee will be refunded following the decision on the petition for reconsideration, or after the expiration of the time for filing such a petition for reconsideration, if none is filed.
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§ 1.378PATENT RULES
[49 FR 34726, Aug. 31, 1984, added effective Nov. 1, 1984; para. (a), 50 FR 9383, Mar.7, 1985, effective May 8, 1985; paras. (b) and (c), 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; paras. (a) - (c) and (e), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a) - (c) and (e), 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; para. (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) & (e) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (e) revised, 69 FR 56536, Sept. 21, 2004, effective Nov. 22, 2004; revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
Subpart C — International Processing Provisions
GENERAL INFORMATION
§ 1.401 Definitions of terms under the Patent Cooperation Treaty.
(a) The abbreviation PCT and the term Treaty mean the Patent Cooperation Treaty.
(b) International Bureau means the World Intellectual Property Organization located in Geneva, Switzerland.
(c) Administrative Instructions means that body of instructions for operating under the Patent Cooperation Treaty referred to in PCT Rule 89.
(d) Request, when capitalized, means that element of the international application described in PCT Rules 3 and 4.
(e) International application, as used in this subchapter is defined in § 1.9(b).
(f) Priority date for the purpose of computing time limits under the Patent Cooperation Treaty is defined in PCT Art. 2(xi). Note also § 1.465.
(g) Demand, when capitalized, means that document filed with the International Preliminary ExaminingAuthority which requests an international preliminary examination.
(h) Annexes means amendments made to the claims, description or the drawings before the International Preliminary Examining Authority.
(i) Other terms and expressions in this subpart C not defined in this section are to be taken in the sense indicated in PCT Art. 2 and 35 U.S.C. 351.
[43 FR 20466, May 11, 1978; 52 FR 20047, May 28, 1987]
§ 1.412 The United States Receiving Office.
(a) The United States Patent and Trademark Office is a Receiving Office only for applicants who are residents or nationals of the United States of America.
(b) The Patent and Trademark Office, when acting as a Receiving Office, will be identified by the full title “United States Receiving Office” or by the abbreviation “RO/US.”
(c) The major functions of the Receiving Office include:
(1) According of international filing dates to international applications meeting the requirements of PCT Art. 11(1) and PCT Rule 20;
(2) Assuring that international applications meet the standards for format and content of PCT Art. 14(1), PCT Rule 9, 26, 29.1, 37, 38, 91, and portions of PCT Rules 3 through 11;
(3) Collecting and, when required, transmitting fees due for processing international applications (PCT Rule 14, 15, 16);
(4) Transmitting the record and search copies to the International Bureau and International Searching Authority, respectively (PCT Rules 22 and 23); and
(5) Determining compliance with applicable requirements of part 5 of this chapter.
(6) Reviewing and, unless prescriptions concerning national security prevent the application from being so transmitted (PCT Rule 19.4), transmitting the international application to the International Bureau for processing in its capacity as a Receiving Office:
(i) Where the United States Receiving Office is not the competent Receiving Office under PCT Rule 19.1 or 19.2 and § 1.421(a); or
(ii) Where the international application is not in English but is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office; or
(iii) Where there is agreement and authorization in accordance with PCT Rule 19.4(a)(iii).
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[Para. (c)(6) added, 60 FR 21438, May 2, 1995, effective June 1, 1995; para. (c)(6) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998)]
§ 1.413 The United States International Searching Authority.
(a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Searching Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with the agreement between the Patent and Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
(b) The Patent and Trademark Office, when acting as an International Searching Authority, will be identified by the full title “United States International Searching Authority” or by the abbreviation “ISA/US.”
(c) The major functions of the International Searching Authority include:
(1) Approving or establishing the title and abstract;
(2) Considering the matter of unity of invention;
(3) Conducting international and international-type searches and preparing international and international-type search reports (PCT Art. 15, 17 and 18, and PCT Rules 25, 33 to 45 and 47), and issuing declarations that no international search report will be established (PCT Article 17(2)(a));
(4) Preparing written opinions of the International Searching Authority in accordance with PCT Rule 43 bis (when necessary); and
(5) Transmitting the international search report and the written opinion of the International Searching Authority to the applicant and the International Bureau.
[Para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (a) & (c) revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004]
§ 1.414 The United States Patent and Trademark Office as a Designated Office or Elected Office.
(a) The United States Patent and Trademark Office will act as a Designated Office or Elected Office for international applications in which the United States of America has been designated or elected as a State in which patent protection is desired.
(b) The United States Patent and Trademark Office, when acting as a Designated Office or Elected Office during international processing will be identified by the full title “United States Designated Office” or by the abbreviation “DO/US” or by the full title “United States Elected Office” or by the abbreviation “EO/US.”
(c) The major functions of the United States Designated Office or Elected Office in respect to international applications in which the United States of America has been designated or elected, include:
(1) Receiving various notifications throughout the international stage and
(2) National stage processing for international applications entering the national stage under 35 U.S.C. 371.
[52 FR 20047, May 28, 1987, effective July 1, 1987; para. (c)(2) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.415 The International Bureau.
(a) The International Bureau is the World Intellectual Property Organization located at Geneva, Switzerland. It is the international intergovernmental organization which acts as the coordinating body under the Treaty and the Regulations (PCT Art. 2(xix) and 35 U.S.C. 351(h)).
(b) The major functions of the International Bureau include:
(1) Publishing of international applications and the International Gazette;
(2) Transmitting copies of international applications to Designated Offices;
(3) Storing and maintaining record copies; and
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§ 1.415PATENT RULES
(4) Transmitting information to authorities pertinent to the processing of specific international applications.
§ 1.416 The United States International Preliminary Examining Authority.
(a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Preliminary Examining Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with agreement between the Patent and Trademark Office and the International Bureau.
(b) The United States Patent and Trademark Office, when acting as an International Preliminary Examining Authority, will be identified by the full title “United States International Preliminary Examining Authority” or by the abbreviation “IPEA/US.”
(c) The major functions of the International Preliminary Examining Authority include:
(1) Receiving and checking for defects in the Demand;
(2) Forwarding Demands in accordance with PCT Rule 59.3;
(3) Collecting the handling fee for the International Bureau and the preliminary examination fee for the United States International Preliminary Examining Authority;
(4) Informing applicant of receipt of the Demand;
(5) Considering the matter of unity of invention;
(6) Providing an international preliminary examination report which is a non-binding opinion on the questions of whether the claimed invention appears: to be novel, to involve an inventive step (to be nonobvious), and to be industrially applicable; and
(7) Transmitting the international preliminary examination report to applicant and the International Bureau.
[Added 52 FR 20047, May 28, 1987; para. (c) revised, 63 FR 29614, June 1, 1998, effective July 1998
(adopted as final, 63 FR 66040, Dec. 1, 1998); para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 1.417 Submission of translation of international publication.
The submission of an English language translation of the publication of an international application pursuant to 35 U.S.C. 154(d)(4) must clearly identify the international application to which it pertains (§ 1.5(a)) and be clearly identified as a submission pursuant to 35 U.S.C. 154(d)(4). Otherwise, the submission will be treated as a filing under 35 U.S.C. 111(a). Such submissions should be marked “Mail Stop PCT.”
[Added 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; revised 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004]
§ 1.419 Display of currently valid control number under the Paperwork ReductionAct.
(a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.), the collection of information in this subpart has been reviewed and approved by the Office of Management and Budget under control number 0651-0021.
(b) Notwithstanding any other provision of law, no person is required to respond to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid Office of Management and Budget control number. This section constitutes the display required by 44 U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of information under Office of Management and Budget control number 0651-0021 (see 5 CFR 1320.5(b)(2)(ii)(D)).
[Added, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998)]
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WHO MAY FILE AN INTERNATIONAL APPLICATION
§ 1.421 Applicant for international application.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant:
(1) Has indicated a residence or nationality in a PCT Contracting State, or
(2) Has no residence or nationality indicated, applicant will be so notified and, if the international application includes a fee amount equivalent to that required by § 1.445(a)(4), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office (see also § 1.412(c)(6)).
(b) Although the United States Receiving Office will accept international applications filed by any applicant who is a resident or national of the United States of America for international processing, for the purposes of the designation of the United States, an international application will be accepted by the Patent and Trademark Office for the national stage only if the applicant is the inventor or other person as provided in § 1.422 or § 1.424. Joint inventors must jointly apply for an international application.
(c) A registered attorney or agent of the applicant may sign the international application Request and file the international application for the applicant. A separate power of attorney from each applicant may be required.
(d) Any indication of different applicants for the purpose of different Designated Offices must be shown on the Request portion of the international application.
(e) Requests for changes in the indications concerning the applicant, agent, or common representative of an international application shall
be made in accordance with PCT Rule 92 bis and may be required to be signed by all applicants.
(f) Requests for withdrawals of the international application, designations, priority claims, the Demand, or elections shall be made in accordance with PCT Rule 90 bis and must be signed by all applicants. A separate power of attorney from the applicants will be required for the purposes of any request for a withdrawal in accordance with PCT Rule 90 bis which is not signed by all applicants.
[Paras. (f) and (g), 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; para. (a) amended, 60 FR 21438, May 2, 1995, effective June 1, 1995; paras. (b)-(g) revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004; para. (a)(2) revised, 68 FR 67805, Dec. 4, 2003, effective Jan. 1, 2004; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.421 (pre-AIA) for the rule otherwise in effect.]
§ 1.421 (pre-AIA) Applicant for international application.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]
(a) Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant:
(1) Has indicated a residence or nationality in a PCT Contracting State, or
(2) Has no residence or nationality indicated, applicant will be so notified and, if the international application includes a fee amount equivalent to that required by § 1.445(a)(4), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office (see also § 1.412(c)(6)).
(b) Although the United States Receiving Office will accept international applications filed by any resident or national of the United States of America for international processing, for the purposes of the designation of the United States, an international application must be filed, and will be accepted by
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§ 1.421 (pre-AIA)
PATENT RULES
the Patent and Trademark Office for the national stage only if filed, by the inventor or as provided in §§ 1.422 or 1.423. Joint inventors must jointly apply for an international application.
(c) For the purposes of designations other than the United States, international applications may be filed by the assignee or owner.
(d) A registered attorney or agent of the applicant may sign the international application Request and file the international application for the applicant. A separate power of attorney from each applicant may be required.
(e) Any indication of different applicants for the purpose of different Designated Offices must be shown on the Request portion of the international application.
(f) Requests for changes in the indications concerning the applicant, agent, or common representative of an international application shall be made in accordance with PCT Rule 92 bis and may be required to be signed by all applicants.
(g) Requests for withdrawals of the international application, designations, priority claims, the Demand, or elections shall be made in accordance with PCT Rule 90 bis and must be signed by all applicants. A separate power of attorney from the applicants will be required for the purposes of any request for a withdrawal in accordance with PCT Rule 90 bis which is not signed by all applicants. The submission of a separate power of attorney may be excused upon the request of another applicant where one or more inventors cannot be found or reached after diligent effort. Such a request must be accompanied by a statement explaining to the satisfaction of the Director the lack of the signature concerned.
[Paras. (f) and (g), 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; para. (a) amended, 60 FR 21438, May 2, 1995, effective June 1, 1995; paras. (b)-(g) revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004; para. (a)(2) revised, 68 FR 67805, Dec. 4, 2003, effective Jan. 1, 2004]
[*See § 1.421 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.422 Legal representative as applicant in an international application.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
If an inventor is deceased or under legal incapacity, the legal representative of the inventor may be an applicant in an international application which designates the United States of America.
[Revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.422 (pre-AIA) for the rule otherwise in effect.]
§ 1.422 (pre-AIA) When the inventor is dead.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may file an international application which designates the United States of America.
[*See § 1.422 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012.]
§ 1.423 [Removed and Reserved]
[Effective Sept. 16, 2012, § 1.423 was removed and reserved with respect to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See 77 FR 48776, Aug. 14, 2012. Editor assumes "1.423" was intended instead of "1.432" in the first column of page 48776. For the rule otherwise in effect, see § 1.423 (pre-AIA).]
§ 1.423 (pre-AIA) When the inventor is insane or legally incapacitated.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
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In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may file an international application which designates the United States of America.
[*Removed and reserved with respect to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.424 Assignee, obligated assignee, or person having sufficient proprietary interest as applicant in an international application.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a)) A person to whom the inventor has assigned or is under an obligation to assign the invention may be an applicant in an international application which designates the United States of America. A person who otherwise shows sufficient proprietary interest in the matter may be an applicant in an international application which designates the United States of America on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
(b) Neither any showing required under paragraph (a) of this section nor documentary evidence of ownership or proprietary interest will be required or considered by the Office in the international stage, but will be required in the national stage in accordance with the conditions and requirements of § 1.46.
[Added, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012.]
§ 1.425 [Reserved]
[Removed and reserved, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004]
THE INTERNATIONAL APPLICATION
§ 1.431 International application requirements.
[Editor Note: Para. (b)(3)(iii) below is applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) An international application shall contain, as specified in the Treaty and the Regulations, a Request, a description, one or more claims, an abstract, and one or more drawings (where required). (PCT Art. 3(2) and Section 207 of the Administrative Instructions.)
(b) An international filing date will be accorded by the United States Receiving Office, at the time of receipt of the international application, provided that:
(1) At least one applicant is a United States resident or national and the papers filed at the time of receipt of the international application so indicate (35 U.S.C. 361(a), PCT Art. 11(1)(i)).
(2) The international application is in the English language (35 U.S.C. 361(c), PCT Art. 11(1)(ii)).
(3) The international application contains at least the following elements (PCT Art. 11(1)(iii)):
(i) An indication that it is intended as an international application (PCT Rule 4.2);
(ii) The designation of at least one Contracting State of the International Patent Cooperation Union (§ 1.432);
(iii) The name of the applicant, as prescribed (note §§ 1.421, 1.422, and 1.424);
(iv) A part which on the face of it appears to be a description; and
(v) A part which on the face of it appears to be a claim.
(c) Payment of the international filing fee (PCT Rule 15.2) and the transmittal and search fees (§ 1.445) may be made in full at the time the international application papers required by paragraph (b) of this section are deposited or within one month thereafter. The international filing, transmittal, and search fee payable is the international filing, transmittal, and search fee in
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effect on the receipt date of the international application.
(1) If the international filing, transmittal and search fees are not paid within one month from the date of receipt of the international application and prior to the sending of a notice of deficiency which imposes a late payment fee, applicant will be notified and given one month within which to pay the deficient fees plus the late payment fee. Subject to paragraph (c)(2) of this section, the late payment fee will be equal to the greater of:
(i) Fifty percent of the amount of the deficient fees; or
(ii) An amount equal to the transmittal fee.
(2) The late payment fee shall not exceed an amount equal to fifty percent of the international filing fee not taking into account any fee for each sheet of the international application in excess of thirty sheets (PCT Rule 16 bis ).
(3) The one-month time limit set pursuant to paragraph (c) of this section to pay deficient fees may not be extended.
(d) If the payment needed to cover the transmittal fee, the international filing fee, the search fee, and the late payment fee pursuant to paragraph (c) of this section is not timely made in accordance with PCT Rule 16 bis.1(e), the Receiving Office will declare the international application withdrawn under PCT Article 14(3)(a).
[43 FR 20486, May 11, 1978; paras. (b), (c), (d) and (e), 50 FR 9383, Mar. 7, 1985, effective May 8, 1985; para. (d) amended, 52 FR 20047, May 28, 1987; paras. (b)(1), (b)(3)(ii), (c) and (d) amended, para. (e) deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (c) and (d) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); paras. (b)(3), (c) & (d) revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004; para. (c)(2) corrected, 68 FR 67805, Dec. 4, 2003; para. (b)(3)(iii) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The revisions to para. (b)(3)(iii) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.431(pre-AIA) for para. (b)(3)(iii) otherwise in effect.]
§ 1.431 (pre-AIA) International application requirements.
[Editor Note: Para. (b)(3)(iii) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]
(a) An international application shall contain, as specified in the Treaty and the Regulations, a Request, a description, one or more claims, an abstract, and one or more drawings (where required). (PCT Art. 3(2) and Section 207 of the Administrative Instructions.)
(b) An international filing date will be accorded by the United States Receiving Office, at the time of receipt of the international application, provided that:
(1) At least one applicant is a United States resident or national and the papers filed at the time of receipt of the international application so indicate (35 U.S.C. 361(a), PCT Art. 11(1)(i)).
(2) The international application is in the English language (35 U.S.C. 361(c), PCT Art. 11(1)(ii)).
(3) The international application contains at least the following elements (PCT Art. 11(1)(iii)):
(i) An indication that it is intended as an international application (PCT Rule 4.2);
(ii) The designation of at least one Contracting State of the International Patent Cooperation Union (§ 1.432);
(iii) The name of the applicant, as prescribed (note §§ 1.421-1.423);
(iv) A part which on the face of it appears to be a description; and
(v) A part which on the face of it appears to be a claim.
(c) Payment of the international filing fee (PCT Rule 15.2) and the transmittal and search fees (§ 1.445) may be made in full at the time the international application papers required by paragraph (b) of this section are deposited or within one month thereafter. The international filing, transmittal, and search fee payable is the international filing, transmittal, and search fee in effect on the receipt date of the international application.
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(1) If the international filing, transmittal and search fees are not paid within one month from the date of receipt of the international application and prior to the sending of a notice of deficiency which imposes a late payment fee, applicant will be notified and given one month within which to pay the deficient fees plus the late payment fee. Subject to paragraph (c)(2) of this section, the late payment fee will be equal to the greater of:
(i) Fifty percent of the amount of the deficient fees; or
(ii) An amount equal to the transmittal fee.
(2) The late payment fee shall not exceed an amount equal to fifty percent of the international filing fee not taking into account any fee for each sheet of the international application in excess of thirty sheets (PCT Rule 16 bis ).
(3) The one-month time limit set pursuant to paragraph (c) of this section to pay deficient fees may not be extended.
(d) If the payment needed to cover the transmittal fee, the international filing fee, the search fee, and the late payment fee pursuant to paragraph (c) of this section is not timely made in accordance with PCT Rule 16 bis.1(e), the Receiving Office will declare the international application withdrawn under PCT Article 14(3)(a).
[43 FR 20486, May 11, 1978; paras. (b), (c), (d) and (e), 50 FR 9383, Mar. 7, 1985, effective May 8, 1985; para. (d) amended, 52 FR 20047, May 28, 1987; paras. (b)(1), (b)(3)(ii), (c) and (d) amended, para. (e) deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (c) and (d) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); paras. (b)(3), (c) & (d) revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004; para. (c)(2) corrected, 68 FR 67805, Dec. 4, 2003]
[*See § 1.431 for more information and for para. (b)(3)(iii) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.432 Designation of States by filing an international application.
The filing of an international application request shall constitute:
(a) The designation of all Contracting States that are bound by the Treaty on the international filing date;
(b) An indication that the international application is, in respect of each designated State to which PCT Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State; and
(c) An indication that the international application is, in respect of each designated State to which PCT Article 45(1) applies, for the grant of a regional patent and also, unless PCT Article 45(2) applies, a national patent.
[43 FR 20486, May 11, 1978; para. (b) amended 52 FR 20047, May 28, 1987; paras. (a), (b) amended and para. (c) added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (b) and (c) revised, para. (d) added, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004]
§ 1.433 Physical requirements of international application.
(a) The international application and each of the documents that may be referred to in the check list of the Request (PCT Rule 3.3(a)(ii)) shall be filed in one copy only.
(b) All sheets of the international application must be on A4 size paper (21.0 x 29.7 cm.).
(c) Other physical requirements for international applications are set forth in PCT Rule 11 and sections 201-207 of the Administrative Instructions.
§ 1.434 The request.
(a) The request shall be made on a standardized form (PCT Rules 3 and 4). Copies of printed Request forms are available from the United States Patent and Trademark Office. Letters requesting printed forms should be marked “Mail Stop PCT.”
(b) The Check List portion of the Request form should indicate each document accompanying the international application on filing.
(c) All information, for example, addresses, names of States and dates, shall be indicated in the Request as required by PCT Rule 4 and Administrative Instructions 110 and 201.
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(d) For the purposes of the designation of the United States of America, an international application shall include:
(1) The name of the inventor; and
(2) A reference to any prior-filed national application or international application designating the United States of America, if the benefit of the filing date for the prior-filed application is to be claimed.
(e) An international application may also include in the Request a declaration of the inventors as provided for in PCT Rule 4.17(iv).
[Para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (d) revised, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2001; para. (d)(2) revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001; paras. (a) & (d)(2) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (d) revised, para (e) added, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004]
§ 1.435 The description.
(a) The application must meet the requirements as to the content and form of the description set forth in PCT Rules 5, 9, 10, and 11 and sections 204 and 208 of the Administrative Instructions.
(b) In international applications designating the United States the description must contain upon filing an indication of the best mode contemplated by the inventor for carrying out the claimed invention.
[Para. (a) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998)]
§ 1.436 The claims.
The requirements as to the content and format of claims are set forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered to. The number of the claims shall be reasonable, considering the nature of the invention claimed.
§ 1.437 The drawings.
(a) Drawings are required when they are necessary for the understanding of the invention (PCT Art. 7).
(b) The physical requirements for drawings are set forth in PCT Rule 11 and shall be adhered to.
[Revised, 72 FR 51559, Sept. 10, 2007, effective Sept. 10, 2007]
§ 1.438 The abstract.
(a) Requirements as to the content and form of the abstract are set forth in PCT Rule 8, and shall be adhered to.
(b) Lack of an abstract upon filing of an international application will not affect the granting of a filing date. However, failure to furnish an abstract within one month from the date of the notification by the Receiving Office will result in the international application being declared withdrawn.
FEES
§ 1.445 International application filing, processing and search fees.
(a) The following fees and charges for international applications are established by law or by the Director under the authority of 35 U.S.C. 376:
(1) A transmittal fee ( see 35 U.S.C. 361(d) and PCT Rule 14) consisting of:
(i) A basic portion:
(A) For an international application having a receipt date that is on or after January 1, 2014:
By a micro entity (§ 1.29) .... $60.00
By a small entity (§ 1.27(a)) .... $120.00
By other than a small or micro entity ......................................................... $240.00
(B) For an international application having a receipt date that is before January 1, 2014 ................................................................... $240.00
(ii) A non-electronic filing fee portion for any international application designating the United States of America that is filed on or after November 15, 2011, other than by the Office
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electronic filing system, except for a plant application:
By a small entity (§ 1.27(a)) .... $200.00
By other than a small entity .... $400.00
(2) A search fee ( see 35 U.S.C. 361(d) and PCT Rule 16) :
(i) For an international application having a receipt date that is on or after January 1, 2014:
By a micro entity (§ 1.29) ... $520.00
By a small entity (§ 1.27(a)) .... $1,040.00
By other than a small or micro entity ................................................................ $2,080.00
(ii) For an international application having a receipt date that is before January 1, 2014 ................................................................ $2,080.00
(3) A supplemental search fee when required, per additional invention:
(i) For an international application having a receipt date that is on or after January 1, 2014:
By a micro entity (§ 1.29) ... $520.00
By a small entity (§ 1.27(a)) .... $1,040.00
By other than a small or micro entity ................................................................ $2,080.00
(ii) For an international application having a receipt date that is before January 1, 2014: ............................................................... $2,080.00.
(4) A fee equivalent to the transmittal fee in paragraph (a)(1) of this section that would apply if the USPTO was the Receiving Office for transmittal of an international application to the International Bureau for processing in its capacity as a Receiving Office (PCT Rule 19.4).
(b) The international filing fee shall be as prescribed in PCT Rule 15.
[43 FR 20466, May 11, 1978; para. (a), 47 FR 41282, Sept. 17, 1982, effective Oct. 1, 1982; para. (a)(4) - (6), 50 FR 9384, Mar. 7, 1985, effective May 8, 1985; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; para. (a) amended 52 FR 20047, May 28, 1987; paras. (a)(2) and (3), 54 FR 6893, Feb. 15, 1989, 54 FR 9432, Mar. 7, 1989, effective Apr. 17, 1989; para. (a), 56 FR 65142,
Dec. 13, 1991, effective Dec. 27, 1991; para. (a), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (a)(4) added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (a)(1)-(3), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; para. (a)(5) added, 60 FR 21438, May 2, 1995, effective June 1, 1995; para. (a) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; para. (a) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; para. (a) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; para. (a) revised, 63 FR 29614, June 1, 1998, effective July 1,1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004; para. (a)(2) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (a)(2) and (a)(3) revised, 72 FR 51559, Sept. 10, 2007, effective Nov. 9, 2007; paras. (a)(1) through (a)(3) revised, 73 FR 67754, Nov. 12, 2008, effective Jan. 12, 2009; para. (a) introductory text and (a)(1) revised, 76 FR 70651, Nov. 15, 2011, effective Nov. 15, 2011; para. (a) introductory text and paras. (a)(1)(i), (a)(2)-(4) and (b) revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; revised 78 FR 17102, Mar. 20, 2013, effective Mar. 20, 2013]
§ 1.446 Refund of international application filing and processing fees.
(a) Money paid for international application fees, where paid by actual mistake or in excess, such as a payment not required by law or treaty and its regulations, may be refunded. A mere change of purpose after the payment of a fee will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested and will not notify the payor of such amounts. If the payor or party requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer, the Office may use the banking information provided on the payment instrument to make any refund by electronic funds transfer.
(b) Any request for refund under paragraph (a) of this section must be filed within two years from the date the fee was paid. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization under § 1.25(b), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge and include a copy of that deposit account
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statement. The time periods set forth in this paragraph are not extendable.
(c) Refund of the supplemental search fees will be made if such refund is determined to be warranted by the Director or the Director’s designee acting under PCT Rule 40.2(c).
(d) The international and search fees will be refunded if no international filing date is accorded or if the application is withdrawn before transmittal of the record copy to the International Bureau (PCT Rules 15.6 and 16.2). The search fee will be refunded if the application is withdrawn before transmittal of the search copy to the International Searching Authority. The transmittal fee will not be refunded.
(e) The handling fee (§ 1.482(b)) will be refunded (PCT Rule 57.6) only if:
(1) The Demand is withdrawn before the Demand has been sent by the International Preliminary Examining Authority to the International Bureau, or
(2) The Demand is considered not to have been submitted (PCT Rule 54.4(a)).
[43 FR 20466, May 11, 1978; para. (b), 47 FR 41282, Sept. 17, 1982, effective Oct. 1, 1982; para.(b), 50 FR 9384, Mar. 7, 1985, effective May 8, 1985; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; para. (d) amended and para. (e) added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para (a) revised and para. (b) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
PRIORITY
§ 1.451 The priority claim and priority document in an international application.
(a) The claim for priority must, subject to paragraph (d) of this section, be made on the Request (PCT Rule 4.10) in a manner complying with sections 110 and 115 of the Administrative Instructions.
(b) Whenever the priority of an earlier United States national application or international application filed with the United States Receiving Office is claimed in an international application, the applicant may request in a letter of transmittal accompanying the international application upon
filing with the United States Receiving Office or in a separate letter filed in the United States Receiving Office not later than 16 months after the priority date, that the United States Patent and Trademark Office prepare a certified copy of the prior application for transmittal to the International Bureau (PCT Article 8 and PCT Rule 17). The fee for preparing a certified copy is set forth in § 1.19(b)(1).
(c) If a certified copy of the priority document is not submitted together with the international application on filing, or, if the priority application was filed in the United States and a request and appropriate payment for preparation of such a certified copy do not accompany the international application on filing or are not filed within 16 months of the priority date, the certified copy of the priority document must be furnished by the applicant to the International Bureau or to the United States Receiving Office within the time limit specified in PCT Rule 17.1(a).
(d) The applicant may correct or add a priority claim in accordance with PCT Rule 26 bis.1.
[43 FR 20466, May 11, 1978; 47 FR 40140, Sept. 10, 1982, effective Oct. 1, 1982; para. (b), 47 FR 41282, Sept. 17, 1982, effective Oct. 1, 1982; paras. (b) & (c), 50 FR 9384, Mar. 7, 1985, effective May 8, 1985; para. (b), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (a) revised, para. (d) added, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para. (b) revised, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2001]
§ 1.452 Restoration of right of priority.
(a) If the international application has an international filing date which is later than the expiration of the priority period as defined by PCT Rule 2.4 but within two months from the expiration of the priority period, the right of priority in the international application may be restored upon request if the delay in filing the international application within the priority period was unintentional.
(b) A request to restore the right of priority in an international application under paragraph (a) of this section must be filed not later than two months from the expiration of the priority period and must include:
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(1) A notice under PCT Rule 26 bis.1(a) adding the priority claim, if the priority claim in respect of the earlier application is not contained in the international application;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the delay in filing the international application within the priority period was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(c) If the applicant makes a request for early publication under PCT Article 21(2)(b), any requirement under paragraph (b) of this section filed after the technical preparations for international publication have been completed by the International Bureau shall be considered as not having been submitted in time.
[Added, 72 FR 51559 Sept. 10, 2007, effective Nov. 9, 2007; para. (b)(2) revised and para. (d) removed, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
REPRESENTATION
§ 1.455 Representation in international applications.
(a) Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 11.9). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International SearchingAuthority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier
appointment unless otherwise indicated (PCT Rule 90.6(b) and (c)).
(b) Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
(c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.
(d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions.
[43 FR 20466, May 11, 1978; 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (b) revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004; para. (a) revised, 69 FR 35427, June 24, 2004, effective July 26, 2004]
TRANSMITTAL OF RECORD COPY
§ 1.461 Procedures for transmittal of record copy to the International Bureau.
(a) Transmittal of the record copy of the international application to the International Bureau shall be made by the United States Receiving Office or as provided by PCT Rule 19.4.
(b) [Reserved]
(c) No copy of an international application may be transmitted to the International Bureau, a foreign Designated Office, or other foreign authority by the United States Receiving Office or the applicant, unless the applicable requirements of part 5 of this chapter have been satisfied.
[43 FR 20466, May 11, 1978; paras. (a) and (b), 50 FR 9384, Mar. 7, 1985, effective May 8, 1985; para. (a) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998)]
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TIMING
§ 1.465 Timing of application processing based on the priority date.
(a) For the purpose of computing time limits under the Treaty, the priority date shall be defined as in PCT Art. 2(xi).
(b) When a claimed priority date is corrected under PCT Rule 26 bis.1(a), or a priority claim is added under PCT Rule 26 bis.1(a), withdrawn under PCT Rule 90 bis.3, or considered not to have been made under PCT Rule 26 bis.2, the priority date for the purposes of computing any non-expired time limits will be the filing date of the earliest remaining priority claim under PCT Article 8 of the international application, or if none, the international filing date.
(c) When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule 20.2(a) (i) or (iii) are timely submitted, and the date of receipt of such corrections falls later than one year from the claimed priority date or dates, the Receiving Office shall proceed under PCT Rule 26 bis.2.
[Paras. (b) and (c) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para. (b) revised, 72 FR 51559, Sept. 10, 2007, effective Sept. 10, 2007]
§ 1.468 Delays in meeting time limits.
Delays in meeting time limits during international processing of international applications may only be excused as provided in PCT Rule 82. For delays in meeting time limits in a national application, see § 1.137.
AMENDMENTS
§ 1.471 Corrections and amendments during international processing.
(a) Except as otherwise provided in this paragraph, all corrections submitted to the United States Receiving Office or United States International Searching Authority must be in English, in the form of replacement sheets in compliance with PCT Rules 10 and 11, and
accompanied by a letter that draws attention to the differences between the replaced sheets and the replacement sheets. Replacement sheets are not required for the deletion of lines of text, the correction of simple typographical errors, and one addition or change of not more than five words per sheet. These changes may be stated in a letter and, if appropriate, the United States Receiving Office will make the deletion or transfer the correction to the international application, provided that such corrections do not adversely affect the clarity and direct reproducibility of the application (PCT Rule 26.4). Amendments that do not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
(b) Amendments of claims submitted to the International Bureau shall be as prescribed by PCT Rule 46.
(c) Corrections or additions to the Request of any declarations under PCT Rule 4.17 should be submitted to the International Bureau as prescribed by PCT Rule 26 ter .
[Para. (a) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para. (c) added, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2001]
§ 1.472 Changes in person, name, or address of applicants and inventors.
All requests for a change in person, name or address of applicants and inventor should be sent to the United States Receiving Office until the time of issuance of the international search report. Thereafter requests for such changes should be submitted to the International Bureau.
[43 FR 20466, May 11, 1978; redesignated at 52 FR 20047, May 28, 1987]
UNITY OF INVENTION
§ 1.475 Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.
(a) An international and a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of
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invention”). Where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
(b) An international or a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
(c) If an application contains claims to more or less than one of the combinations of categories of invention set forth in paragraph (b) of this section, unity of invention might not be present.
(d) If multiple products, processes of manufacture or uses are claimed, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the main invention in the claims, see PCT Article 17(3)(a) and § 1.476(c).
(e) The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
[Added 52 FR 20047, May 28, 1987, effective July 1, 1987; paras. (a) - (e) amended and para. (f) deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]
§ 1.476 Determination of unity of invention before the International SearchingAuthority.
(a) Before establishing the international search report, the International Searching Authority will determine whether the international application complies with the requirement of unity of invention as set forth in § 1.475.
(b) If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention, it shall inform the applicant accordingly and invite the payment of additional fees (note § 1.445 and PCT Art. 17(3)(a) and PCT Rule 40). The applicant will be given a time period in accordance with PCT Rule 40.3 to pay the additional fees due.
(c) In the case of non-compliance with unity of invention and where no additional fees are paid, the international search will be performed on the invention first mentioned (“main invention”) in the claims.
(d) Lack of unity of invention may be directly evident before considering the claims in relation to any prior art, or after taking the prior art into consideration, as where a document discovered during the search shows the invention claimed in a generic or linking claim lacks novelty or is clearly obvious, leaving two or more claims joined thereby without a common inventive concept. In such a case the International Searching Authority may raise the objection of lack of unity of invention.
[43 FR 20466, May 11, 1978; redesignated and amended at 52 FR 20047, May 28, 1987; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]
§ 1.477 Protest to lack of unity of invention before the International SearchingAuthority.
(a) If the applicant disagrees with the holding of lack of unity of invention by the International Searching Authority, additional fees may be paid under protest, accompanied by a request for refund and a statement setting forth reasons for disagreement or why the required additional fees
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are considered excessive, or both (PCT Rule 40.2(c)).
(b) Protest under paragraph (a) of this section will be examined by the Director or the Director’s designee. In the event that the applicant’s protest is determined to be justified, the additional fees or a portion thereof will be refunded.
(c) An applicant who desires that a copy of the protest and the decision thereon accompany the international search report when forwarded to the Designated Offices may notify the International Searching Authority to that effect any time prior to the issuance of the international search report. Thereafter, such notification should be directed to the International Bureau (PCT Rule 40.2(c)).
[43 FR 20466, May 11, 1978; redesignated and amended at 52 FR 20047, May 28, 1987; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
INTERNATIONAL PRELIMINARY EXAMINATION
§ 1.480 Demand for international preliminary examination.
(a) On the filing of a proper Demand in an application for which the United States International Preliminary Examining Authority is competent and for which the fees have been paid, the international application shall be the subject of an international preliminary examination. The preliminary examination fee (§ 1.482(a)(1)) and the handling fee (§ 1.482(b)) shall be due within the applicable time limit set forth in PCT Rule 57.3.
(b) The Demand shall be made on a standardized form (PCT Rule 53). Copies of the printed Demand forms are available from the United States Patent and Trademark Office. Letters requesting printed Demand forms should be marked “Mail Stop PCT.”
(c) Withdrawal of a proper Demand prior to the start of the international preliminary examination will entitle applicant to a refund of the preliminary examination fee minus the amount of the transmittal fee set forth in § 1.445(a)(1).
(d) The filing of a Demand shall constitute the election of all Contracting States which are designated and are bound by Chapter II of the Treaty on the international filing date (PCT Rule 53.7).
(e) Any Demand filed after the expiration of the applicable time limit set forth in PCT Rule 54 bis.1(a) shall be considered as if it had not been submitted (PCT Rule 54 bis.1(b)).
[52 FR 20048, May 28, 1987; para. (d), 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; para. (b) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (a) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para. (c) removed and para. (d) redesignated as para. (c), 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, paras. (d) & (e) added, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004]
§ 1.481 Payment of international preliminary examination fees.
(a) The handling and preliminary examination fees shall be paid within the time period set in PCT Rule 57.3. The handling fee or preliminary examination fee payable is the handling fee or preliminary examination fee in effect on the date of payment.
(1) If the handling and preliminary examination fees are not paid within the time period set in PCT Rule 57.3, applicant will be notified and given one month within which to pay the deficient fees plus a late payment fee equal to the greater of:
(i) Fifty percent of the amount of the deficient fees, but not exceeding an amount equal to double the handling fee; or
(ii) An amount equal to the handling fee (PCT Rule 58 bis.2).
(2) The one-month time limit set in this paragraph to pay deficient fees may not be extended.
(b) If the payment needed to cover the handling and preliminary examination fees, pursuant to paragraph (a) of this section, is not timely made in accordance with PCT Rule 58 bis.1(d), the United States International Preliminary Examination Authority will declare the Demand to be considered as if it had not been submitted.
[63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para. (a) revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004]
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§ 1.482 International preliminary examination fees.
(a) The following fees and charges for international preliminary examination are established by the Director under the authority of 35 U.S.C. 376:
(1) The following preliminary examination fee is due on filing the Demand:
(i) If an international search fee as set forth in § 1.445(a)(2) has been paid on the international application to the United States Patent and Trademark Office as an International Searching Authority:
(A) For an international preliminary examination fee paid on or after January 1, 2014:
By a micro entity (§ 1.29) .... $150.00
By a small entity (§ 1.27(a)) .... $300.00
By other than a small or micro entity ......................................................... $600.00
(B) For an international preliminary examination fee paid before January 1, 2014 .... $600.00
(ii) If the International Searching Authority for the international application was an authority other than the United States Patent and Trademark Office:
(A) For an international preliminary examination fee paid on or after January 1, 2014:
By a micro entity (§ 1.29) .... $190.00
By a small entity (§ 1.27(a)) .... $380.00
By other than a small or micro entity ......................................................... $760.00
(B) For an international preliminary examination fee paid before January 1, 2014 .... $750.00.
(2) An additional preliminary examination fee when required, per additional invention:
(i) If the international preliminary examination fee set forth in paragraph (a)(1) of this section was paid on or after January 1, 2014:
By a micro entity (§ 1.29) ... $150.00
By a small entity (§ 1.27(a)) .... $300.00
By other than a small or micro entity ................................................................... $600.00
(ii) If the international preliminary examination fee set forth in paragraph (a)(1) of this section was paid before January 1, 2014 ... $600.00
(b) The handling fee is due on filing the Demand and shall be [as] prescribed in PCT Rule 57.
[52 FR 20048, May 28, 1987; para. (a), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a), 56 FR 65142, Dec. 13, 1991, effective Dec. 27, 1991; paras. (a)(1) and (a)(2)(ii), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; paras. (a)(2)(i) and (b) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (a)(1) and (a)(2)(ii), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (a)(1)(i), (a)(1)(ii), & (a)(2)(ii) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(1)(i), (a)(1)(ii), and (a)(2)(ii) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a)(1)(i), (a)(1)(ii), and (a)(2)(ii) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; revised 78 FR 17102, Mar. 20, 2013, effective Mar. 20, 2013]
§ 1.484 Conduct of international preliminary examination.
(a) An international preliminary examination will be conducted to formulate a non-binding opinion as to whether the claimed invention has novelty, involves an inventive step (is non-obvious) and is industrially applicable.
(b) International preliminary examination will begin in accordance with PCT Rule 69.1.
(c) No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority.
(d) The International Preliminary Examining Authority will establish a written opinion if any defect exists or if the claimed invention lacks novelty, inventive step or industrial applicability and will set a non-extendable time limit in the written opinion for the applicant to reply.
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(e) The written opinion established by the International Searching Authority under PCT Rule 43 bis.1 shall be considered to be a written opinion of the United States International Preliminary Examining Authority for the purposes of paragraph (d) of this section.
(f) The International Preliminary Examining Authority may establish further written opinions under paragraph (d) of this section.
(g) If no written opinion under paragraph (d) of this section is necessary, or if no further written opinion under paragraph (f) of this section is to be established, or after any written opinion and the reply thereto or the expiration of the time limit for reply to such written opinion, an international preliminary examination report will be established by the International Preliminary Examining Authority. One copy will be submitted to the International Bureau and one copy will be submitted to the applicant.
(h) An applicant will be permitted a personal or telephone interview with the examiner, which may be requested after the filing of a Demand, and must be conducted during the period between the establishment of the written opinion and the establishment of the international preliminary examination report. Additional interviews may be conducted where the examiner determines that such additional interviews may be helpful to advancing the international preliminary examination procedure. A summary of any such personal or telephone interview must be filed by the applicant or, if not filed by applicant be made of record in the file by the examiner.
(i) If the application whose priority is claimed in the international application is in a language other than English, the United States International Preliminary Examining Authority may, where the validity of the priority claim is relevant for the formulation of the opinion referred to in Article 33(1), invite the applicant to furnish an English translation of the priority document within two months from the date of the invitation. If the translation is not furnished within that time limit, the international preliminary report may be established as if the priority had not been claimed.
[52 FR 20049, May 28, 1987; para. (b) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (d)-(f) revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997; para. (b) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para. (g) added, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2001; para. (b) & (e)-(g) revised, paras. (h) & (i) added, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004]
§ 1.485 Amendments by applicant during international preliminary examination.
The applicant may make amendments at the time of filing the Demand. The applicant may also make amendments within the time limit set by the International Preliminary Examining Authority for reply to any notification under § 1.484(b) or to any written opinion. Any such amendments must be made in accordance with PCT Rule 66.8.
[Added 52 FR 20049, May 28, 1987; amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); amended, 74 FR 31372, July 1, 2009, effective July 1, 2009]
§ 1.488 Determination of unity of invention before the International Preliminary Examining Authority.
(a) Before establishing any written opinion or the international preliminary examination report, the International Preliminary Examining Authority will determine whether the international application complies with the requirement of unity of invention as set forth in § 1.475.
(b) If the International Preliminary Examining Authority considers that the international application does not comply with the requirement of unity of invention, it may:
(1) Issue a written opinion and/or an international preliminary examination report, in respect of the entire international application and indicate that unity of invention is lacking and specify the reasons therefor without extending an invitation to restrict or pay additional fees. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority.
(2) Invite the applicant to restrict the claims or pay additional fees, pointing out the categories
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of invention found, within a set time limit which will not be extended. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority, or
(3) If applicant fails to restrict the claims or pay additional fees within the time limit set for reply, the International Preliminary Examining Authority will issue a written opinion and/or establish an international preliminary examination report on the main invention and shall indicate the relevant facts in the said report. In case of any doubt as to which invention is the main invention, the invention first mentioned in the claims and previously searched by an International Searching Authority shall be considered the main invention.
(c) Lack of unity of invention may be directly evident before considering the claims in relation to any prior art, or after taking the prior art into consideration, as where a document discovered during the search shows the invention claimed in a generic or linking claim lacks novelty or is clearly obvious, leaving two or more claims joined thereby without a common inventive concept. In such a case the International Preliminary Examining Authority may raise the objection of lack of unity of invention.
[52 FR 20049, May 28, 1987; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (b)(3) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.489 Protest to lack of unity of invention before the International Preliminary Examining Authority.
(a) If the applicant disagrees with the holding of lack of unity of invention by the International Preliminary Examining Authority, additional fees may be paid under protest, accompanied by a request for refund and a statement setting forth reasons for disagreement or why the required additional fees are considered excessive, or both.
(b) Protest under paragraph (a) of this section will be examined by the Director or the Director’s designee. In the event that the applicant’s protest is determined to be justified, the additional fees or a portion thereof will be refunded.
(c) An applicant who desires that a copy of the protest and the decision thereon accompany the
international preliminary examination report when forwarded to the Elected Offices, may notify the International Preliminary Examining Authority to that effect any time prior to the issuance of the international preliminary examination report. Thereafter, such notification should be directed to the International Bureau.
[Added 52 FR 20050, May 28, 1987, effective July 1, 1987; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
NATIONAL STAGE
§ 1.491 National stage commencement, entry, and fulfillment.
[Editor Note: Certain paragraphs below are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) Subject to 35 U.S.C. 371(f), the national stage shall commence with the expiration of the applicable time limit under PCT Article 22(1) or (2), or under PCT Article 39(1)(a).
(b) An international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c)(1) and (c)(2) within the period set in § 1.495.
(c) An international application fulfills the requirements of 35 U.S.C. 371 when the national stage has commenced under 35 U.S.C. 371(b) or (f) and all applicable requirements of 35 U.S.C. 371 have been satisfied.
[Added, 52 FR 20050, May 28, 1987; revised, 66 FR 45775, Aug. 30, 2001; revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; heading and para. (b) revised and para. (c) added, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.491 (pre-AIA) for the rule otherwise in effect.]
§ 1.491 (pre-AIA) National stage commencement and entry.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) Subject to 35 U.S.C. 371(f), the national stage shall commence with the expiration of the
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applicable time limit under PCT Article 22(1) or (2), or under PCT Article 39(1)(a).
(b) An international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c) within the period set in § 1.495.
[Added, 52 FR 20050, May 28, 1987; revised, 66 FR 45775, Aug. 30, 2001; revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002]
[*See § 1.491 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 1.492 National stage fees.
The following fees and charges are established for international applications entering the national stage under 35 U.S.C. 371:
(a) The basic national fee for an international application entering the national stage under 35 U.S.C. 371:
By a micro entity (§ 1.29) ............... $70.00
By a small entity (§ 1.27(a)) ........... 140.00
By other than a small or micro entity .... 280.00
(b) Search fee for an international application entering the national stage under 35 U.S.C. 371:
(1) If an international preliminary examination report on the international application prepared by the United States International Preliminary Examining Authority or a written opinion on the international application prepared by the United States International Searching Authority states that the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined in PCT Article 33(1) to (4) have been satisfied for all of the claims presented in the application entering the national stage:
By a micro entity (§ 1.29) ............ $0.00
By a small entity (§ 1.27(a)) .......... 0.00
By other than a small or micro entity .... 0.00
(2) If the search fee as set forth in § 1.445(a)(2) has been paid on the international application to the United States Patent and
Trademark Office as an International Searching Authority:
By a micro entity (§ 1.29) .......... $30.00
By a small entity (§ 1.27(a)) ........ 60.00
By other than a small or micro entity .... 120.00
(3) If an international search report on the international application has been prepared by an International Searching Authority other than the United States International Searching Authority and is provided, or has been previously communicated by the International Bureau, to the Office:
By a micro entity (§ 1.29) ........ $120.00
By a small entity (§ 1.27(a)) ...... 240.00
By other than a small entity ....... 480.00
(4) In all situations not provided for in paragraphs (b)(1), (2), or (3) of this section:
By a micro entity (§ 1.29) ........ $150.00
By a small entity (§ 1.27(a)) ...... 300.00
By other than a small or micro entity .... 600.00
(c) The examination fee for an international application entering the national stage under 35 U.S.C. 371:
(1) If an international preliminary examination report on the international application prepared by the United States International Preliminary Examining Authority or a written opinion on the international application prepared by the United States International Searching Authority states that the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined in PCT Article 33(1) to (4) have been satisfied for all of the claims presented in the application entering the national stage:
By a micro entity (§ 1.29) ............ $0.00
By a small entity (§ 1.27(a)) .......... 0.00
By other than a small or micro entity .... 0.00
(2) In all situations not provided for in paragraph (c)(1) of this section:
By a micro entity (§ 1.29) ....... $180.00.
By a small entity (§ 1.27(a)) .... $360.00
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By other than a small or micro entity .... 720.00
(d) In addition to the basic national fee, for filing or on later presentation at any other time of each claim in independent form in excess of 3:
By a micro entity (§ 1.29) ............. $105.00
By a small entity (§ 1.27(a)) ........... 210.00
By other than a small or micro entity .... 420.00
(e) In addition to the basic national fee, for filing or on later presentation at any other time of each claim (whether dependent or independent) in excess of 20 (note that §1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes):
By a micro entity (§ 1.29) ............... $20.00
By a small entity (§ 1.27(a)) ............. 40.00
By other than a small or micro entity .... 80.00
(f) In addition to the basic national fee, if the application contains, or is amended to contain, a multiple dependent claim, per application:
By a micro entity (§ 1.29) ............. $195.00
By a small entity (§ 1.27(a)) ........... 390.00
By other than a small or micro entity .... 780.00
(g) If the excess claims fees required by paragraphs (d) and (e) of this section and multiple dependent claim fee required by paragraph (f) of this section are not paid with the basic national fee or on later presentation of the claims for which excess claims or multiple dependent claim fees are due, the fees required by paragraphs (d), (e), and (f) of this section must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
(h) Surcharge for filing any of the search fee, the examination fee, or the oath or declaration after the date of the commencement of the national stage (§ 1.491(a) ) pursuant to § 1.495(c):
By a micro entity (§ 1.29) ............... $35.00
By a small entity (§ 1.27(a)) ............. 70.00
By other than a small entity ............ 140.00
(i) For filing an English translation of an international application or any annexes to an international preliminary examination report later than thirty months after the priority date (§ 1.495(c) and (e)):
By a micro entity (§ 1.29) ............... $35.00
By a small entity (§ 1.27(a)) ............. 70.00
By other than a small or micro entity .... 140.00
(j) Application size fee for any international application, the specification and drawings of which exceed 100 sheets of paper, for each additional 50 sheets or fraction thereof:
By a micro entity (§ 1.29) ............. $100.00
By a small entity (§ 1.27(a)) ........... 200.00
By other than a small or micro entity .... 400.00
[52 FR 20050, May 28, 1987, effective July 1, 1987; paras. (a)(1) - (3), (b), (d)- (f), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a)(5) added, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; revised, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1)-(a)(3), (a)(5) and (b)-(d), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (e) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (a), (b) and (d), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (a), (b), & (d) amended, 60 FR 41018, Aug. 11, 1995, effective, Oct. 1, 1995; paras. (a), (b), & (d) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a), (b), & (d) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; para. (g) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)-(d) revised, 63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; para. (a)(2) revised, 64 FR 67774, Dec. 3, 1999, effective Dec. 29, 1999; paras. (a), (b) and (d) revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; paras. (a)-(e) revised, 65 FR 78958, Dec. 18, 2000; paras. (a)(1)-(a)(3), (a)(5), (b) and (d) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (e) and (f) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; paras. (a)(1) through (a)(3), and (a)(5) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; paras. (a)(1) through (a)(3), (a)(5), (b), and (d) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (a)(1) through (a)(3), (a)(5), (b) and (d) revised, 69 F R 52604, Aug. 27, 2004, effective Oct. 1, 2004; revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (b) and (c) revised, 70 FR 5053, Feb. 1, 2005, effective Feb. 1, 2005; paras. (h) and (j) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; paras. (b) and (c) revised, 70 FR 35375, June 20, 2005, effective July 1, 2005; paras. (a),
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(b)(2) through (b)(4), (c)(2), (d) through (f), and (j) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (b)(2) through (b)(4) corrected, 72 FR 55055, Sept. 28, 2007, effective Sept. 30, 2007; paras. (a), (b)(3), (b)(4), (c)(2), (d) through (f) and (j) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (h) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (a), (b)(3), (b)(4), (c)(2), (d)-(f) and (j) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013]
§ 1.494 [Reserved]
[Added 52 FR 20050, May 28, 1987; paras. (a) - (d) and (g) amended and para. (h) deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para (c) revised, 63 FR 29614, June 1, 1998, effective, July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para (f) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c)(2) revised, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2000; para. (c)(2) corrected, 66 FR 28053, May 22, 2001, effective Mar. 22, 2001; removed and reserved, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002]
§ 1.495 Entering the national stage in the United States of America.
[Editor Note: Paragraphs (a), (c), and (h) below are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) The applicant in an international application must fulfill the requirements of 35 U.S.C. 371 within the time periods set forth in paragraphs (b) and (c) of this section in order to prevent the abandonment of the international application as to the United States of America. The thirty-month time period set forth in paragraphs (b), (c), (d), (e) and (h) of this section may not be extended.
(b) To avoid abandonment of the application, the applicant shall furnish to the United States Patent and Trademark Office not later than the expiration of thirty months from the priority date:
(1) A copy of the international application, unless it has been previously communicated by the International Bureau or unless it was originally filed in the United States Patent and Trademark Office; and
(2) The basic national fee (see § 1.492(a)).
(c)(1) If applicant complies with paragraph (b) of this section before expiration of thirty months from the priority date, the Office will notify the applicant if he or she has omitted any of:
(i) A translation of the international application, as filed, into the English language, if it was originally filed in another language and if any English language translation of the publication of the international application previously submitted under 35 U.S.C. 154(d) (§ 1.417) is not also a translation of the international application as filed (35 U.S.C. 371(c)(2) );
(ii) The inventor's oath or declaration (35 U.S.C. 371(c)(4) and § 1.497 ), if a declaration of inventorship in compliance with § 1.63 has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26 ter.1;
(iii) The search fee set forth in § 1.492(b);
(iv) The examination fee set forth in § 1.492(c); and
(v) Any application size fee required by § 1.492(j);
(2) A notice under paragraph (c)(1) of this section will set a time period within which applicant must provide any omitted translation, search fee set forth in § 1.492(b), examination fee set forth in § 1.492(c), and any application size fee required by § 1.492(j) in order to avoid abandonment of the application.
(3) The inventor's oath or declaration must also be filed within the period specified in paragraph (c)(2) of this section, except that the filing of the inventor's oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in paragraphs (c)(3)(i) through (c)(3)(iii) of this section.
(i) The application contains an application data sheet in accordance with § 1.76 filed prior to the expiration of the time period set in any notice under paragraph (c)(1) identifying:
(A) Each inventor by his or her legal name;
(B) A mailing address where the inventor customarily receives mail, and residence,
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if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
(ii) The applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee for the patent is paid. If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 ( see § 1.136(c)). The Office may dispense with the notice provided for in paragraph (c)(1) of this section if each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, has been filed before the application is in condition for allowance.
(iii) An international application in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid and for which an application data sheet in accordance with § 1.76 has been filed may be treated as complying with 35 U.S.C. 371 for purposes of eighteen-month publication under 35 U.S.C. 122(b) and § 1.211 et seq.
(4) The payment of the processing fee set forth in § 1.492(i) is required for acceptance of an English translation later than the expiration of thirty months after the priority date. The payment of the surcharge set forth in § 1.492(h) is required for acceptance of any of the search fee, the examination fee, or the inventor's oath or declaration after the date of the commencement of the national stage (§ 1.491(a)).
(5) A “Sequence Listing” need not be translated if the “Sequence Listing” complies with PCT Rule 12.1(d) and the description complies with PCT Rule 5.2(b).
(d) A copy of any amendments to the claims made under PCT Article 19, and a translation of those amendments into English, if they were made in another language, must be furnished not later than the expiration of thirty months from the priority date. Amendments under PCT Article 19 which are
not received by the expiration of thirty months from the priority date will be considered to be canceled.
(e) A translation into English of any annexes to an international preliminary examination report (if applicable), if the annexes were made in another language, must be furnished not later than the expiration of thirty months from the priority date. Translations of the annexes which are not received by the expiration of thirty months from the priority date may be submitted within any period set pursuant to paragraph (c) of this section accompanied by the processing fee set forth in § 1.492(f). Annexes for which translations are not timely received will be considered canceled.
(f) Verification of the translation of the international application or any other document pertaining to an international application may be required where it is considered necessary, if the international application or other document was filed in a language other than English.
(g) The documents and fees submitted under paragraphs (b) and (c) of this section must be identified as a submission to enter the national stage under 35 U.S.C. 371. If the documents and fees contain conflicting indications as between an application under 35 U.S.C. 111 and a submission to enter the national stage under 35 U.S.C. 371, the documents and fees will be treated as a submission to enter the national stage under 35 U.S.C. 371.
(h) An international application becomes abandoned as to the United States thirty months from the priority date if the requirements of paragraph (b) of this section have not been complied with within thirty months from the priority date.
[Added 52 FR 20051, May 28, 1987, effective July 1, 1987; paras. (a) -(e) & (h) amended and para. (i) deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para (c) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998), para. (g) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c)(2) revised, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2001 para. (c)(2) corrected, 66 FR 28053, May 22, 2001, effective Mar. 22, 2001; heading and paras. (a)-(e) and (h) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; paras. (c) & (g) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (c)(1)(i) and (c)(3) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; para. (g) revised, 72 FR 46716,
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Aug. 21, 2007 (implementation enjoined and never became effective); para. (g) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras. (a), (c), (g), and (h) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c)(3)(ii) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
[*The changes to paras. (a), (c), and (h) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.495 (pre-AIA) for paras. (a), (c), and (h) otherwise in effect.]
§ 1.495 (pre-AIA) Entering the national stage in the United States of America.
[Editor Note: Paragraphs (a), (c), and (h) below are not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]
(a) The applicant in an international application must fulfill the requirements of 35 U.S.C. 371 within the time periods set forth in paragraphs (b) and (c) of this section in order to prevent the abandonment of the international application as to the United States of America. The thirty-month time period set forth in paragraphs (b), (c), (d), (e) and (h) of this section may not be extended. International applications for which those requirements are timely fulfilled will enter the national stage and obtain an examination as to the patentability of the invention in the United States of America.
* * * * *
(c)(1) If applicant complies with paragraph (b) of this section before expiration of thirty months from the priority date, the Office will notify the applicant if he or she has omitted any of:
(i) A translation of the international application, as filed, into the English language, if it was originally filed in another language and if any English language translation of the publication of the international application previously submitted under 35 U.S.C. 154(d) (§ 1.417) is not also a translation of the international application as filed (35 U.S.C. 371(c)(2));
(ii) The oath or declaration of the inventor (35 U.S.C. 371(c)(4) and § 1.497), if a declaration of inventorship in compliance with § 1.497 has not been previously submitted in the international application under PCT Rule 4.17(iv)
within the time limits provided for in PCT Rule 26 ter.1;
(iii) The search fee set forth in § 1.492(b);
(iv) The examination fee set forth in § 1.492(c); and
(v) Any application size fee required by § 1.492(j);
(2) A notice under paragraph (c)(1) of this section will set a time period within which applicant must provide any omitted translation, oath or declaration of the inventor, search fee set forth in § 1.492(b), examination fee set forth in § 1.492(c), and any application size fee required by § 1.492(j) in order to avoid abandonment of the application.
(3) The payment of the processing fee set forth in § 1.492(i) is required for acceptance of an English translation later than the expiration of thirty months after the priority date. The payment of the surcharge set forth in § 1.492(h) is required for acceptance of any of the search fee, the examination fee, or the oath or declaration of the inventor after the date of the commencement of the national stage (§ 1.491(a)).
(4) A “Sequence Listing” need not be translated if the “Sequence Listing” complies with PCT Rule 12.1(d) and the description complies with PCT Rule 5.2(b).
* * * * *
(h) An international application becomes abandoned as to the United States thirty months from the priority date if the requirements of paragraph (b) of this section have not been complied with within thirty months from the priority date. If the requirements of paragraph (b) of this section are complied with within thirty months from the priority date but either of any required translation of the international application as filed or the oath or declaration are not timely filed, an international application will become abandoned as to the United States upon expiration of the time period set pursuant to paragraph (c) of this section.
[*See § 1.495 for more information and for the current rule, including the portions of the rule not reproduced above and applicable irrespective of application filing date and paras. (a), (c), and (h) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
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§ 1.496 Examination of international applications in the national stage.
National stage applications having paid therein the search fee as set forth in § 1.492(b)(1) and examination fee as set forth in § 1.492(c)(1) may be amended subsequent to the date of commencement of national stage processing only to the extent necessary to eliminate objections as to form or to cancel rejected claims. Such national stage applications will be advanced out of turn for examination.
[Added 52 FR 20051, May 28, 1987, effective July 1, 1987; para. (b) revised, 70 FR 5053, Feb. 1, 2005, effective Feb. 1, 2005; para. (b) revised, 70 FR 35375, June 20, 2005, effective July 1, 2005; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.497 Inventor's oath or declaration under 35 U.S.C. 371(c)(4).
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) When an applicant of an international application desires to enter the national stage under 35 U.S.C. 371 pursuant to § 1.495, and a declaration in compliance with § 1.63 has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26 ter.1, the applicant must file the inventor's oath or declaration. The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration in accordance with the conditions and requirements of § 1.63, except as provided for in § 1.64.
(b) An oath or declaration under § 1.63 will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the requirements of §§ 1.63(a), (c), and (g). A substitute statement under § 1.64 will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the requirements of §§ 1.64(b)(1), (c), and (e) and identifies the person executing the substitute statement. If a newly executed inventor's oath or declaration under § 1.63 or substitute statement under § 1.64 is not required pursuant to § 1.63(d), submission of the copy of the previously executed oath, declaration, or substitute statement
under § 1.63(d)(1) is required to comply with 35 U.S.C. 371(c)(4).
(c) If an oath or declaration under § 1.63, or substitute statement under § 1.64, meeting the requirements of § 1.497(b) does not also meet the requirements of § 1.63 or § 1.64, an oath, declaration, substitute statement, or application data sheet in accordance with § 1.76 to comply with § 1.63 or § 1.64 will be required.
[Added 52 FR 20052, May 28, 1987, effective July 1, 1987; paras. (a) and (b) revised and para. (c) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (b)(2) revised and paras. (d) and (e) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a), (c), and (d) revised and paras. (f) and (g) added, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2001; para. (a)(1) corrected, 66 FR 28053, May 22, 2001, effective Mar. 22, 2001; paras. (a), (c), (d), and (f) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (c) corrected, 67 FR 6075, Feb. 8, 2002; para. (f)(1), revised 72 FR 51559, Sept. 10, 2007, effective Sept. 10, 2007; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.497 (pre-AIA) for the rule otherwise in effect.]
§ 1.497 (pre-AIA) Oath or declaration under 35 U.S.C. 371(c)(4).
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) When an applicant of an international application desires to enter the national stage under 35 U.S.C. 371 pursuant to § 1.495, and a declaration in compliance with this section has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26 ter.1, he or she must file an oath or declaration that:
(1) Is executed in accordance with either §§ 1.66 or 1.68;
(2) Identifies the specification to which it is directed;
(3) Identifies each inventor and the country of citizenship of each inventor; and
(4) States that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of
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the subject matter which is claimed and for which a patent is sought.
(b)(1) The oath or declaration must be made by all of the actual inventors except as provided for in§§ 1.42, 1.43 or 1.47.
(2) If the person making the oath or declaration or any supplemental oath or declaration is not the inventor (§§ 1.42, 1.43, or § 1.47), the oath or declaration shall state the relationship of the person to the inventor, and, upon information and belief, the facts which the inventor would have been required to state. If the person signing the oath or declaration is the legal representative of a deceased inventor, the oath or declaration shall also state that the person is a legal representative and the citizenship, residence and mailing address of the legal representative.
(c) Subject to paragraph (f) of this section, if the oath or declaration meets the requirements of paragraphs (a) and (b) of this section, the oath or declaration will be accepted as complying with 35 U.S.C. 371(c)(4) and § 1.495(c). However, if the oath or declaration does not also meet the requirements of § 1.63, a supplemental oath or declaration in compliance with § 1.63 or an application data sheet will be required in accordance with § 1.67.
(d) If the oath or declaration filed pursuant to 35 U.S.C. 371(c)(4) and this section names an inventive entity different from the inventive entity set forth in the international application, or if a change to the inventive entity has been effected under PCT Rule 92 bis subsequent to the execution of any oath or declaration which was filed in the application under PCT Rule 4.17(iv) or this section and the inventive entity thus changed is different from the inventive entity identified in any such oath or declaration, applicant must submit:
(1) A statement from each person being added as an inventor and from each person being deleted as an inventor that any error in inventorship in the international application occurred without deceptive intention on his or her part;
(2) The processing fee set forth in § 1.17(i); and
(3) If an assignment has been executed by any of the original named inventors, the written
consent of the assignee (see § 3.73(b) of this chapter); and
(4) Any new oath or declaration required by paragraph (f) of this section.
(e) The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.
(f) A new oath or declaration in accordance with this section must be filed to satisfy 35 U.S.C. 371(c)(4) if the declaration was filed under PCT Rule 4.17(iv), and:
(1) There was a change in the international filing date pursuant to PCT Rule 20.5(c) after the declaration was executed; or
(2) A change in the inventive entity was effected under PCT Rule 92 bis after the declaration was executed and no declaration which sets forth and is executed by the inventive entity as so changed has been filed in the application.
(g) If a priority claim has been corrected or added pursuant to PCT Rule 26 bis during the international stage after the declaration of inventorship was executed in the international application under PCT Rule 4.17(iv), applicant will be required to submit either a new oath or declaration or an application data sheet as set forth in § 1.76 correctly identifying the application upon which priority is claimed.
[Added 52 FR 20052, May 28, 1987, effective July 1, 1987; paras. (a) and (b) revised and para. (c) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (b)(2) revised and paras. (d) and (e) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a), (c), and (d) revised and paras. (f) and (g) added, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2001; para. (a)(1) corrected, 66 FR 28053, May 22, 2001, effective Mar. 22, 2001; paras. (a), (c), (d), and (f) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (c) corrected, 67 FR 6075, Feb. 8, 2002; para. (f)(1), revised 72 FR 51559, Sept. 10, 2007, effective Sept. 10, 2007]
[*See § 1.497 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
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§ 1.499 Unity of invention during the national stage.
If the examiner finds that a national stage application lacks unity of invention under § 1.475, the examiner may in an Office action require the applicant in the response to that action to elect the invention to which the claims shall be restricted. Such requirement may be made before any action on the merits but may be made at any time before the final action at the discretion of the examiner. Review of any such requirement is provided under §§ 1.143 and 1.144.
[Added 52 FR 20052, May 28, 1987, effective July 1, 1987; amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]
Subpart D — Ex Parte Reexamination of Patents
CITATION OF PRIOR ART AND WRITTEN STATEMENTS
§ 1.501 Citation of prior art and written statements in patent files.
(a) Information content of submission: At any time during the period of enforceability of a patent, any person may file a written submission with the Office under this section, which is directed to the following information:
(1) Prior art consisting of patents or printed publications which the person making the submission believes to have a bearing on the patentability of any claim of the patent; or
(2) Statements of the patent owner filed by the patent owner in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent. Any statement submitted under this paragraph must be accompanied by any other documents, pleadings, or evidence from the proceeding in which the statement was filed that address the written statement, and such statement and accompanying information under this paragraph must be submitted in redacted form to exclude information subject to an applicable protective order.
(3) Submissions under paragraph (a)(2) of this section must identify:
(i) The forum and proceeding in which patent owner filed each statement;
(ii) The specific papers and portions of the papers submitted that contain the statements; and
(iii) How each statement submitted is a statement in which patent owner took a position on the scope of any claim in the patent.
(b) Explanation: A submission pursuant to paragraph (a) of this section:
(1) Must include an explanation in writing of the pertinence and manner of applying any prior art submitted under paragraph (a)(1) of this section and any written statement and accompanying information submitted under paragraph (a)(2) of this section to at least one claim of the patent, in order for the submission to become a part of the official file of the patent; and
(2) May, if the submission is made by the patent owner, include an explanation of how the claims differ from any prior art submitted under paragraph (a)(1) of this section or any written statements and accompanying information submitted under paragraph (a)(2) of this section.
(c) Reexamination pending: If a reexamination proceeding has been requested and is pending for the patent in which the submission is filed, entry of the submission into the official file of the patent is subject to the provisions of §§ 1.502 and 1.902.
(d) Identity: If the person making the submission wishes his or her identity to be excluded from the patent file and kept confidential, the submission papers must be submitted anonymously without any identification of the person making the submission.
(e) Certificate of Service: A submission under this section by a person other than the patent owner must include a certification that a copy of the submission was served in its entirety upon patent owner at the address as provided for in § 1.33(c). A submission by a person other than the patent owner that fails to include proper proof of service as required by § 1.248(b) will not be entered into the patent file.
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[46 FR 29185, May 29, 1981, effective July 1, 1981; para. (a) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.502 Processing of prior art citations during an ex parte reexamination proceeding.
Citations by the patent owner under § 1.555 and by an ex parte reexamination requester under either § 1.510 or § 1.535 will be entered in the reexamination file during a reexamination proceeding. The entry in the patent file of citations submitted after the date of an order to reexamine pursuant to § 1.525 by persons other than the patent owner, or an ex parte reexamination requester under either § 1.510 or § 1.535, will be delayed until the reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.902 for processing of prior art citations in patent and reexamination files during an inter partes reexamination proceeding filed under § 1.913.
[Added 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
REQUEST FOR EX PARTE REEXAMINATION
§ 1.510 Request for ex parte reexamination.
(a) Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501, unless prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). The request must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).
(b) Any request for reexamination must include the following parts:
(1) A statement pointing out each substantial new question of patentability based on prior patents and printed publications.
(2) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which
reexamination is requested. For each statement of the patent owner and accompanying information submitted pursuant to § 1.501(a)(2) which is relied upon in the detailed explanation, the request must explain how that statement is being used to determine the proper meaning of a patent claim in connection with the prior art applied to that claim and how each relevant claim is being interpreted. If appropriate, the party requesting reexamination may also point out how claims distinguish over cited prior art.
(3) A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.
(4) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.
(5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.
(6) A certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request.
(c) If the request does not include the fee for requesting ex parte reexamination required by paragraph (a) of this section and meet all the requirements by paragraph (b) of this section, then the person identified as requesting reexamination will be so notified and will generally be given an opportunity to complete the request within a specified time. Failure to comply with the notice will result in the ex parte reexamination request not being granted a filing date, and will result in placement of the request in the patent file as a citation if it complies with the requirements of § 1.501.
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(d) The filing date of the request for ex parte reexamination is the date on which the request satisfies all the requirements of this section.
(e) A request filed by the patent owner may include a proposed amendment in accordance with § 1.530.
(f) If a request is filed by an attorney or agent identifying another party on whose behalf the request is being filed, the attorney or agent must have a power of attorney from that party or be acting in a representative capacity pursuant to § 1.34.
[46 FR 29185, May 29, 1981, effective July 1, 1981; para. (a), 47 FR 41282, Sept. 17, 1982, effective Oct. 1, 1982; para. (e) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (b)(4) and (e) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; heading and para. (a) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (c) and (d) revised, 71 FR 9260, Feb. 23, 2006, effective Mar. 27, 2006; paras. (c) and (d) revised, 71 FR 44219, Aug. 4, 2006, effective Aug. 4, 2006; para. (f) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; paras. (a) and (b)(2) revised and para. (b)(6) added, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.515 Determination of the request for ex parte reexamination.
(a) Within three months following the filing date of a request for an ex parte reexamination, an examiner will consider the request and determine whether or not a substantial new question of patentability affecting any claim of the patent is raised by the request and the prior art cited therein, with or without consideration of other patents or printed publications. A statement and any accompanying information submitted pursuant to § 1.501(a)(2) will not be considered by the examiner when making a determination on the request. The examiner’s determination will be based on the claims in effect at the time of the determination, will become a part of the official file of the patent, and will be given or mailed to the patent owner at the address provided for in § 1.33(c) and to the person requesting reexamination.
(b) Where no substantial new question of patentability has been found, a refund of a portion of the fee for requesting ex parte reexamination will be made to the requester in accordance with § 1.26(c).
(c) The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.
[46 FR 29185, May 29, 1981, effective July 1, 1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.520 Ex parte reexamination at the initiative of the Director.
The Director, at any time during the period of enforceability of a patent, may determine whether or not a substantial new question of patentability is raised by patents or printed publications which have been discovered by the Director or which have been brought to the Director’s attention, even though no request for reexamination has been filed in accordance with § 1.510 or § 1.913. The Director may initiate ex parte reexamination without a request for reexamination pursuant to § 1.510 or § 1.913. Normally requests from outside the Office that the Director undertake reexamination on his own initiative will not be considered. Any determination to initiate ex parte reexamination under this section will become a part of the official file of the patent and will be mailed to the patent owner at the address as provided for in § 1.33(c).
[46 FR 29186, May 29, 1981, effective July 1, 1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
EX PARTE REEXAMINATION
§ 1.525 Order for ex parte reexamination.
(a) If a substantial new question of patentability is found pursuant to § 1.515 or § 1.520, the determination will include an order for ex parte reexamination of the patent for resolution of the question. If the order for ex parte reexamination resulted from a petition pursuant to § 1.515(c), the
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ex parte reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.515(a).
(b) The notice published in the Official Gazette under § 1.11(c) will be considered to be constructive notice and ex parte reexamination will proceed.
[46 FR 29186, May 29, 1981, effective July 1, 1981; heading and paras. (a) and (b) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
(a) Except as provided in § 1.510(e), no statement or other response by the patent owner in an ex parte reexamination proceeding shall be filed prior to the determinations made in accordance with § 1.515 or § 1.520. If a premature statement or other response is filed by the patent owner, it will not be acknowledged or considered in making the determination, and it will be returned or discarded (at the Office’s option).
(b) The order for ex parte reexamination will set a period of not less than two months from the date of the order within which the patent owner may file a statement on the new question of patentability, including any proposed amendments the patent owner wishes to make.
(c) Any statement filed by the patent owner shall clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations. Where the reexamination request was filed by a third party requester, any statement filed by the patent owner must be served upon the ex parte reexamination requester in accordance with § 1.248.
(d) Making amendments in a reexamination proceeding. A proposed amendment in an ex parte or an inter partes reexamination proceeding is made by filing a paper directing that proposed specified changes be made to the patent specification, including the claims, or to the drawings. An amendment paper directing that proposed specified changes be made in a reexamination proceeding may be submitted as an accompaniment to a request
filed by the patent owner in accordance with § 1.510(e), as part of a patent owner statement in accordance with paragraph (b) of this section, or, where permitted, during the prosecution of the reexamination proceeding pursuant to § 1.550(a) or § 1.937.
(1) Specification other than the claims. Changes to the specification, other than to the claims, must be made by submission of the entire text of an added or rewritten paragraph including markings pursuant to paragraph (f) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The precise point in the specification must be identified where any added or rewritten paragraph is located. This paragraph applies whether the amendment is submitted on paper or compact disc (see §§ 1.96 and 1.825).
(2) Claims. An amendment paper must include the entire text of each patent claim which is being proposed to be changed by such amendment paper and of each new claim being proposed to be added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each patent claim proposed to be changed and each proposed added claim must include markings pursuant to paragraph (f) of this section, except that a patent claim or proposed added claim should be canceled by a statement canceling the claim, without presentation of the text of the claim.
(3) Drawings. Any change to the patent drawings must be submitted as a sketch on a separate paper showing the proposed changes in red for approval by the examiner. Upon approval of the changes by the examiner, only new sheets of drawings including the changes and in compliance with § 1.84 must be filed. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
(4) The formal requirements for papers making up the reexamination proceeding other than those set forth in this section are set out in § 1.52.
(e) Status of claims and support for claim changes. Whenever there is an amendment to the
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claims pursuant to paragraph (d) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status ( i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes to the claims made by the amendment paper.
(f) Changes shown by markings. Any changes relative to the patent being reexamined which are made to the specification, including the claims, must include the following markings:
(1) The matter to be omitted by the reexamination proceeding must be enclosed in brackets; and
(2) The matter to be added by the reexamination proceeding must be underlined.
(g) Numbering of patent claims preserved. Patent claims may not be renumbered. The numbering of any claims added in the reexamination proceeding must follow the number of the highest numbered patent claim.
(h) Amendment of disclosure may be required. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(i) Amendments made relative to patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing the request for reexamination.
(j) No enlargement of claim scope. No amendment may enlarge the scope of the claims of the patent or introduce new matter. No amendment may be proposed for entry in an expired patent. Moreover, no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent.
(k) Amendments not effective until certificate. Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published.
(l) Correction of inventorship in an ex parte or inter partes reexamination proceeding.
(1) When it appears in a patent being reexamined that the correct inventor or inventors were not named, the Director may, on petition of all the parties set forth in § 1.324(b)(1) and (b)(2), including the assignees, and satisfactory proof of the facts and payment of the fee set forth in § 1.20(b), or on order of a court before which such matter is called in question, include in the reexamination certificate to be issued under § 1.570 or § 1.997 an amendment naming only the actual inventor or inventors. The petition must be submitted as part of the reexamination proceeding and must satisfy the requirements of § 1.324.
(2) Notwithstanding paragraph (l1(1) of this section, if a petition to correct inventorship satisfying the requirements of § 1.324 is filed in a reexamination proceeding, and the reexamination proceeding is concluded other than by a reexamination certificate under § 1.570 or § 1.997, a certificate of correction indicating the change of inventorship stated in the petition will be issued upon request by the patentee.
[46 FR 29186, May 29, 1981, effective July 1, 1981; para. (d) revised, para. (e) removed, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; heading and para. (d) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (e) through (l) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; heading, paras. (a)-(c), para. (d) introductory text and para. (l) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (l)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (a), (k), and (l) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; para. (l)(1) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.535 Reply by third party requester in ex parte reexamination.
A reply to the patent owner’s statement under § 1.530 may be filed by the ex parte reexamination requester within two months from the date of service of the patent owner’s statement. Any reply by the ex parte requester must be served upon the patent owner in accordance with § 1.248. If the patent owner does not file a statement under § 1.530, no reply or other submission from the ex parte reexamination requester will be considered.
[46 FR 29186, May 29, 1981, effective July 1, 1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
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§ 1.540 Consideration of responses in ex parte reexamination.
The failure to timely file or serve the documents set forth in § 1.530 or in § 1.535 may result in their being refused consideration. No submissions other than the statement pursuant to § 1.530 and the reply by the ex parte reexamination requester pursuant to § 1.535 will be considered prior to examination.
[46 FR 29186, May 29, 1981, effective July 1, 1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.550 Conduct of ex parte reexamination proceedings.
(a) All ex parte reexamination proceedings, including any appeals to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office. After issuance of the ex parte reexamination order and expiration of the time for submitting any responses, the examination will be conducted in accordance with §§ 1.104 through 1.116 and will result in the issuance of an ex parte reexamination certificate under § 1.570.
(b) The patent owner in an ex parte reexamination proceeding will be given at least thirty days to respond to any Office action. In response to any rejection, such response may include further statements and/or proposed amendments or new claims to place the patent in a condition where all claims, if amended as proposed, would be patentable.
(c) The time for taking any action by a patent owner in an ex parte reexamination proceeding may be extended as provided in this paragraph.
(1) Any request for such an extension must specify the requested period of extension and be accompanied by the petition fee set forth in § 1.17(g).
(2) Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of such a request for extension will not effect the extension. A request for an extension in a third party requested ex parte reexamination will not be granted in the
absence of sufficient cause or for more than a reasonable time.
(3) Any request for an extension in a patent owner requested or Director ordered ex parte reexamination for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested or Director ordered ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months from the time period set in the Office action will not effect the extension. The time for taking action in a patent owner requested or Director ordered ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.
(4) The reply or other action must in any event be filed prior to the expiration of the period of extension, but in no situation may a reply or other action be filed later than the maximum time period set by statute.
(5) See § 90.3(c) of this title for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action.
(d) If the patent owner fails to file a timely and appropriate response to any Office action or any written statement of an interview required under § 1.560(b), the prosecution in the ex parte reexamination proceeding will be a terminated prosecution, and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.570 in accordance with the last action of the Office.
(e) If a response by the patent owner is not timely filed in the Office, a petition may be filed pursuant to § 1.137 to revive a reexamination prosecution terminated under paragraph (d) of this section if the delay in response was unintentional.
(f) The reexamination requester will be sent copies of Office actions issued during the ex parte reexamination proceeding. After filing of a request for ex parte reexamination by a third party requester, any document filed by either the patent
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owner or the third party requester must be served on the other party in the reexamination proceeding in the manner provided by § 1.248. The document must reflect service or the document may be refused consideration by the Office.
(g) The active participation of the ex parte reexamination requester ends with the reply pursuant to § 1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered. Further, no submissions on behalf of any third parties will be acknowledged or considered unless such submissions are:
(1) in accordance with § 1.510 or § 1.535; or
(2) entered in the patent file prior to the date of the order for ex parte reexamination pursuant to § 1.525.
(h) Submissions by third parties, filed after the date of the order for ex parte reexamination pursuant to § 1.525, must meet the requirements of and will be treated in accordance with § 1.501(a).
(i) A petition in an ex parte reexamination proceeding must be accompanied by the fee set forth in § 1.20(c)(6), except for petitions under paragraph (c) of this section to extend the period for response by a patent owner, petitions under paragraph (e) of this section to accept a delayed response by a patent owner, petitions under § 1.78 to accept an unintentionally delayed benefit claim, and petitions under § 1.530(l) for correction of inventorship in a reexamination proceeding.
[46 FR 29186, May 29, 1981, effective July 1, 1981; para. (c), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (c), 54 FR 29553, July 13, 1989, effective Aug. 20, 1989; paras. (a), (b), & (e) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) and (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (d) & (e)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (c) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (d) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; para. (i) added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012; paras. (c) and (e) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 1.552 Scope of reexamination in ex parte reexamination proceedings.
(a) Claims in an ex parte reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112.
(b) Claims in an ex parte reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent.
(c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in a reexamination proceeding. If such issues are raised by the patent owner or third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may consider the advisability of filing a reissue application to have such issues considered and resolved.
(d) Any statement of the patent owner and any accompanying information submitted pursuant to § 1.501(a)(2) which is of record in the patent being reexamined (which includes any reexamination files for the patent) may be used after a reexamination proceeding has been ordered to determine the proper meaning of a patent claim when applying patents or printed publications.
[46 FR 29186, May 29, 1981, effective July 1, 1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (d) added, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.555 Information material to patentability in ex parte reexamination and inter partes reexamination proceedings.
(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective reexamination occurs when, at the time a reexamination proceeding is being conducted, the Office is aware of and evaluates the teachings of all information material to patentability in a reexamination proceeding. Each individual associated with the patent owner in a reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to
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disclose to the Office all information known to that individual to be material to patentability in a reexamination proceeding. The individuals who have a duty to disclose to the Office all information known to them to be material to patentability in a reexamination proceeding are the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding. The duty to disclose the information exists with respect to each claim pending in the reexamination proceeding until the claim is cancelled. Information material to the patentability of a cancelled claim need not be submitted if the information is not material to patentability of any claim remaining under consideration in the reexamination proceeding. The duty to disclose all information known to be material to patentability in a reexamination proceeding is deemed to be satisfied if all information known to be material to patentability of any claim in the patent after issuance of the reexamination certificate was cited by the Office or submitted to the Office in an information disclosure statement. However, the duties of candor, good faith, and disclosure have not been complied with if any fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct by, or on behalf of, the patent owner in the reexamination proceeding. Any information disclosure statement must be filed with the items listed in § 1.98(a) as applied to individuals associated with the patent owner in a reexamination proceeding, and should be filed within two months of the date of the order for reexamination, or as soon thereafter as possible.
(b) Under this section, information is material to patentability in a reexamination proceeding when it is not cumulative to information of record or being made of record in the reexamination proceeding, and
(1) It is a patent or printed publication that establishes, by itself or in combination with other patents or printed publications, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the patent owner takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability of a claim pending in a reexamination proceeding is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
(c) The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section and no evaluation will be made by the Office in the reexamination proceeding as to compliance with this section. If questions of compliance with this section are raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.552(c).
[46 FR 29187, May 29, 1981, effective July 1, 1981; 47 FR 21752, May 19, 1982, effective July 1, 1982; paras. (a) and (b), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; revised 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; heading and para. (c) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.560 Interviews in ex parte reexamination proceedings.
(a) Interviews in ex parte reexamination proceedings pending before the Office between examiners and the owners of such patents or their attorneys or agents of record must be conducted in the Office at such times, within Office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Director. Interviews for the discussion of the patentability of claims in patents involved in ex parte reexamination proceedings will not be conducted prior to the first official action. Interviews should be arranged in advance. Requests that reexamination requesters participate in interviews with examiners will not be granted.
(b) In every instance of an interview with an examiner in an ex parte reexamination proceeding, a complete written statement of the reasons
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presented at the interview as warranting favorable action must be filed by the patent owner. An interview does not remove the necessity for response to Office actions as specified in § 1.111. Patent owner’s response to an outstanding Office action after the interview does not remove the necessity for filing the written statement. The written statement must be filed as a separate part of a response to an Office action outstanding at the time of the interview, or as a separate paper within one month from the date of the interview, whichever is later.
[46 FR 29187, May 29, 1981, effective July 1, 1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 1.565 Concurrent office proceedings which include an ex parte reexamination proceeding.
(a) In an ex parte reexamination proceeding before the Office, the patent owner must inform the Office of any prior or concurrent proceedings in which the patent is or was involved such as interferences, reissues, ex parte reexaminations, inter partes reexaminations, or litigation and the results of such proceedings. See § 1.985 for notification of prior or concurrent proceedings in an inter partes reexamination proceeding.
(b) If a patent in the process of ex parte reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the reexamination. See § 1.987 for inter partes reexamination proceedings.
(c) If ex parte reexamination is ordered while a prior ex parte reexamination proceeding is pending and prosecution in the prior ex parte reexamination proceeding has not been terminated, the ex parte reexamination proceedings will usually be merged and result in the issuance and publication of a single certificate under § 1.570. For merger of inter partes reexamination proceedings, see § 1.989(a). For merger of ex parte reexamination and inter partes reexamination proceedings, see § 1.989(b).
(d) If a reissue application and an ex parte reexamination proceeding on which an order pursuant to § 1.525 has been mailed are pending concurrently on a patent, a decision will usually be
made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an ex parte reexamination proceeding is ordered, the merged examination will be conducted in accordance with §§ 1.171 through 1.179, and the patent owner will be required to place and maintain the same claims in the reissue application and the ex parte reexamination proceeding during the pendency of the merged proceeding. The examiner’s actions and responses by the patent owner in a merged proceeding will apply to both the reissue application and the ex parte reexamination proceeding and will be physically entered into both files. Any ex parte reexamination proceeding merged with a reissue application shall be concluded by the grant of the reissued patent. For merger of a reissue application and an inter partes reexamination, see § 1.991.
(e) If a patent in the process of ex parte reexamination is or becomes involved in an interference, the Director may suspend the reexamination or the interference. The Director will not consider a request to suspend an interference unless a motion (§ 41.121(a)(3) of this title) to suspend the interference has been presented to, and denied by, an administrative patent judge, and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set. For concurrent inter partes reexamination and interference of a patent, see § 1.993.
[46 FR 29187, May 29, 1981, effective July 1, 1981; paras. (b) and (d), 47 FR 21753, May 19, 1982, effective July 1, 1982; paras. (b) & (e), 49 FR 48416, Dec. 12, 1984, 50 FR 23123, May 31, 1985, effective Feb. 11, 1985; para (a) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (b) & (e) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (c) and (d) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
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CERTIFICATE
§ 1.570 Issuance and publication of ex parte reexamination certificate concludes ex parte reexamination proceeding.
(a) To conclude an ex parte reexamination proceeding, the Director will issue and publish an ex parte reexamination certificate in accordance
with 35 U.S.C.307 setting forth the results of the ex parte reexamination proceeding and the content of the patent following the ex parte reexamination proceeding.
(b) An ex parte reexamination certificate will be issued and published in each patent in which an ex parte reexamination proceeding has been ordered under § 1.525 and has not been merged with any inter partes reexamination proceeding pursuant to § 1.989(a). Any statutory disclaimer filed by the patent owner will be made part of the ex parte reexamination certificate.
(c) The ex parte reexamination certificate will be mailed on the day of its date to the patent owner at the address as provided for in § 1.33(c). A copy of the ex parte reexamination certificate will also be mailed to the requester of the ex parte reexamination proceeding.
(d) If an ex parte reexamination certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto.
(e) If the ex parte reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.565(d), the reissued patent will constitute the ex parte reexamination certificate required by this section and 35 U.S.C. 307.
(f) A notice of the issuance of each ex parte reexamination certificate under this section will be published in the Official Gazette on its date of issuance.
[46 FR 29187, May 29, 1981, effective July 1, 1981; para. (e), 47 FR 21753, May 19, 1982, effective July 1, 1982; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; heading and paras.
(a), (b), and (d) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
Subpart E — Supplemental Examination of Patents
§ 1.601 Filing of papers in supplemental examination.
(a) A request for supplemental examination of a patent must be filed by the owner(s) of the entire right, title, and interest in the patent.
(b) Any party other than the patent owner ( i.e., any third party) is prohibited from filing papers or otherwise participating in any manner in a supplemental examination proceeding.
(c) A request for supplemental examination of a patent may be filed at any time during the period of enforceability of the patent.
[Added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.605 Items of information.
(a) Each request for supplemental examination may include no more than twelve items of information believed to be relevant to the patent. More than one request for supplemental examination of the same patent may be filed at any time during the period of enforceability of the patent.
(b) An item of information includes a document submitted as part of the request that contains information, believed to be relevant to the patent, that the patent owner requests the Office to consider, reconsider, or correct. If the information to be considered, reconsidered, or corrected is not, at least in part, contained within or based on any document submitted as part of the request, the discussion within the body of the request relative to the information will be considered as an item of information.
(c) An item of information must be in writing in accordance with § 1.2. To be considered, any audio or video recording must be submitted in the form of a written transcript.
(d) If one item of information is combined in the request with one or more additional items of information, each item of information of the combination may be separately counted. Exceptions
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include the combination of a non-English language document and its translation, and the combination of a document that is over 50 pages in length and its summary pursuant to § 1.610(b)(8).
[Added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.610 Content of request for supplemental examination.
(a) A request for supplemental examination must be accompanied by the fee for filing a request for supplemental examination as set forth in § 1.20(k)(1), the fee for reexamination ordered as a result of a supplemental examination proceeding as set forth in § 1.20(k)(2), and any applicable document size fees as set forth in § 1.20(k)(3).
(b) A request for supplemental examination must include:
(1) An identification of the number of the patent for which supplemental examination is requested.
(2) A list of the items of information that are requested to be considered, reconsidered, or corrected. Where appropriate, the list must meet the requirements of § 1.98(b).
(3) A list identifying any other prior or concurrent post-patent Office proceedings involving the patent for which supplemental examination is being requested, including an identification of the type of proceeding, the identifying number of any such proceeding ( e.g., a control number or reissue application number), and the filing date of any such proceeding.
(4) An identification of each claim of the patent for which supplemental examination is requested.
(5) A separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested.
(6) A copy of the patent for which supplemental examination is requested and a copy of any disclaimer or certificate issued for the patent.
(7) A copy of each item of information listed in paragraph (b)(2) of this section, accompanied by a written English translation of all of the necessary and pertinent parts of any non-English language
item of information. The patent owner is not required to submit copies of items of information that form part of the discussion within the body of the request as specified in § 1.605(b), or copies of U.S. patents and U.S. patent application publications.
(8) A summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length. The summary must include citations to the particular pages containing the relevant portions.
(9) An identification of the owner(s) of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner in compliance with § 3.73(c) of this chapter establishing the entirety of the ownership in the patent requested to be examined.
(c) The request may also include:
(1) A cover sheet itemizing each component submitted as part of the request;
(2) A table of contents for the request;
(3) An explanation of how the claims patentably distinguish over the items of information; and
(4) An explanation of why each item of information submitted with the request does or does not raise a substantial new question of patentability.
(d) The filing date of a request for supplemental examination will not be granted if the request is not in compliance with §§ 1.605, 1.615, and this section, subject to the discretion of the Office. If the Office determines that the request, as originally submitted, is not entitled to a filing date, the patent owner will be so notified and will be given an opportunity to complete the request within a specified time. If the patent owner does not timely comply with the notice, the request for supplemental examination will not be granted a filing date and the fee for reexamination as set forth in § 1.20(k)(2) will be refunded. If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies with all of the requirements of §§ 1.605, 1.615, and this section, the filing date of the supplemental examination request will be the receipt date of the corrected request.
[Added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]
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§ 1.615 Format of papers filed in a supplemental examination proceeding.
(a) All papers submitted in a supplemental examination proceeding must be formatted in accordance with § 1.52.
(b) Court documents and non-patent literature may be redacted, but must otherwise be identical both in content and in format to the original documents, and, if a court document, to the document submitted in court, and must not otherwise be reduced in size or modified, particularly in terms of font type, font size, line spacing, and margins. Patents, patent application publications, and third-party-generated affidavits or declarations must not be reduced in size or otherwise modified in the manner described in this paragraph.
[Added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.620 Conduct of supplemental examination proceeding.
(a) Within three months after the filing date of a request for supplemental examination, the Office will determine whether a substantial new question of patentability affecting any claim of the patent is raised by any of the items of information presented in the request. The determination will generally be limited to a review of the item(s) of information identified in the request as applied to the identified claim(s) of the patent. The determination will be based on the claims in effect at the time of the determination and will become a part of the official record of the patent.
(b) The Office may hold in abeyance action on any petition or other paper filed in a supplemental examination proceeding until after the proceeding is concluded by the electronic issuance of the supplemental examination certificate as set forth in § 1.625.
(c) If an unauthorized or otherwise improper paper is filed in a supplemental examination proceeding, it will not be entered into the official file or considered, or if inadvertently entered, it will be expunged.
(d) The patent owner must, as soon as possible upon the discovery of any other prior or concurrent post-patent Office proceeding involving the patent
for which the current supplemental examination is requested, file a paper limited to notifying the Office of the post-patent Office proceeding, if such notice has not been previously provided with the request. The notice shall be limited to an identification of the post-patent Office proceeding, including the type of proceeding, the identifying number of any such proceeding ( e.g., a control number or reissue application number), and the filing date of any such proceeding, without any discussion of the issues of the current supplemental examination proceeding or of the identified post-patent Office proceeding(s).
(e) Interviews are prohibited in a supplemental examination proceeding.
(f) No amendment may be filed in a supplemental examination proceeding.
(g) If the Office becomes aware, during the course of supplemental examination or of any reexamination ordered under 35 U.S.C. 257 as a result of the supplemental examination proceeding, that a material fraud on the Office may have been committed in connection with the patent requested to be examined, the supplemental examination proceeding or any reexamination proceeding ordered under 35 U.S.C. 257 will continue, and the matter will be referred to the U.S. Attorney General in accordance with 35 U.S.C. 257(e).
[Added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.625 Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.
(a) A supplemental examination proceeding will conclude with the electronic issuance of a supplemental examination certificate. The supplemental examination certificate will indicate the result of the determination whether any of the items of information presented in the request raised a substantial new question of patentability.
(b) If the supplemental examination certificate states that a substantial new question of patentability is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. Upon the conclusion of the ex parte reexamination proceeding, an ex parte reexamination certificate,
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which will include a statement specifying that ex parte reexamination was ordered under 35 U.S.C. 257, will be published. The electronically issued supplemental examination certificate will remain as part of the public record of the patent.
(c) If the supplemental examination certificate indicates that no substantial new question of patentability is raised by any of the items of information in the request, and ex parte reexamination is not ordered under 35 U.S.C. 257, the electronically issued supplemental examination certificate will be published in due course. The fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2), will be refunded in accordance with § 1.26(c).
(d) Any ex parte reexamination ordered under 35 U.S.C. 257 will be conducted in accordance with §§ 1.530 through 1.570, which govern ex parte reexamination, except that:
The patent owner will not have the right to file a statement pursuant to § 1.530, and the order will not set a time period within which to file such a statement;
(2) Reexamination of any claim of the patent may be conducted on the basis of any item of information as set forth in § 1.605, and is not limited to patents and printed publications or to subject matter that has been added or deleted during the reexamination proceeding, notwithstanding § 1.552(a);
(3) Issues in addition to those raised by patents and printed publications, and by subject matter added or deleted during a reexamination proceeding, may be considered and resolved, notwithstanding § 1.552(c); and
(4) Information material to patentability will be defined by § 1.56(b), notwithstanding § 1.555(b).
[Added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]
Subpart F — Adjustment and Extension of Patent Term
ADJUSTMENT OF PATENT TERM DUE TO EXAMINATION DELAY
§ 1.701 Extension of patent term due to examination delay under the Uruguay Round Agreements Act (original applications, other than designs, filed on or after June 8, 1995, and before May 29, 2000).
(a) A patent, other than for designs, issued on an application filed on or after June 8, 1995, is entitled to extension of the patent term if the issuance of the patent was delayed due to:
(1) Interference or derivation proceedings under 35 U.S.C. 135(a); and/or
(2) The application being placed under a secrecy order under 35 U.S.C. 181; and/or
(3) Appellate review by the Patent Trial and Appeal Board or by a Federal court under 35 U.S.C. 141 or 145, if the patent was issued pursuant to a decision in the review reversing an adverse determination of patentability and if the patent is not subject to a terminal disclaimer due to the issuance of another patent claiming subject matter that is not patentably distinct from that under appellate review. If an application is remanded by a panel of the Patent Trial and Appeal Board and the remand is the last action by a panel of the Patent Trial and Appeal Board prior to the mailing of a notice of allowance under 35 U.S.C. 151 in the application, the remand shall be considered a decision in the review reversing an adverse determination of patentability as that phrase is used in 35 U.S.C. 154(b)(2) as amended by section 532(a) of the Uruguay Round Agreements Act, Public Law 103–465, 108 Stat. 4809, 4983–85 (1994), and a final decision in favor of the applicant under paragraph (c)(3) of this section. A remand by a panel of the Patent Trial and Appeal Board shall not be considered a decision in the review reversing an adverse determination of patentability as provided in this paragraph if there is filed a request for continued examination under 35 U.S.C. 132(b) that was not first preceded by the mailing, after such
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remand, of at least one of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
(b) The term of a patent entitled to extension under paragraph (a) of this section shall be extended for the sum of the periods of delay calculated under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this section, to the extent that these periods are not overlapping, up to a maximum of five years. The extension will run from the expiration date of the patent.
(c)(1) The period of delay under paragraph (a)(1) of this section for an application is the sum of the following periods, to the extent that the periods are not overlapping:
(i) With respect to each interference or derivation proceeding in which the application was involved, the number of days, if any, in the period beginning on the date the interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
(ii) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Patent and Trademark Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension.
(2) The period of delay under paragraph (a)(2) of this section for an application is the sum of the following periods, to the extent that the periods are not overlapping:
(i) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
(ii) The number of days, if any, in the period beginning on the date of mailing of an examiner’s answer under § 41.39 of this title in the application under secrecy order and ending on the date the secrecy order and any renewal thereof was removed;
(iii) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding would be instituted but for the secrecy order and ending
on the date the secrecy order and any renewal thereof was removed; and
(iv) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) and ending on the date of mailing of the notice of allowance under § 1.311.
(3) The period of delay under paragraph (a)(3) of this section is the sum of the number of days, if any, in the period beginning on the date on which an appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and ending on the date of a final decision in favor of the applicant by the Patent Trial and Appeal Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
(d) The period of delay set forth in paragraph (c)(3) shall be reduced by:
(1) Any time during the period of appellate review that occurred before three years from the filing of the first national application for patent presented for examination; and
(2) Any time during the period of appellate review, as determined by the Director, during which the applicant for patent did not act with due diligence. In determining the due diligence of an applicant, the Director may examine the facts and circumstances of the applicant’s actions during the period of appellate review to determine whether the applicant exhibited that degree of timeliness as may reasonably be expected from, and which is ordinarily exercised by, a person during a period of appellate review.
(e) The provisions of this section apply only to original patents, except for design patents, issued on applications filed on or after June 8, 1995, and before May 29, 2000.
[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (e) added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (d)(2) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(3) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004; para. (c)(2)(ii) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a)(1), (a)(3), (c)(1)(i)-(ii), (c)(2)(iii), and (c)(3) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.702 Grounds for adjustment of patent term due to examination delay under the
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Patent Term GuaranteeAct of 1999 (original applications, other than designs, filed on or after May 29, 2000).
[Editor Note: Applies to any patent granted on or after January 14, 2013*]
(a) Failure to take certain actions within specified time frames. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to:
(1) Mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application;
(2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken under 35 U.S.C. 134 not later than four months after the date on which the reply was filed or the appeal was taken;
(3) Act on an application not later than four months after the date of a decision by the Patent Trial and Appeal Board under 35 U.S.C. 134 or 135 or a decision by a Federal court under 35 U.S.C. 141, 145, or 146 where at least one allowable claim remains in the application; or
(4) Issue a patent not later than four months after the date on which the issue fee was paid under 35 U.S.C. 151 and all outstanding requirements were satisfied.
(b) Three-year pendency. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to issue a patent within three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application, but not including:
(1) Any time consumed by continued examination of the application under 35 U.S.C. 132(b);
(2) Any time consumed by an interference or derivation proceeding under 35 U.S.C. 135(a);
(3) Any time consumed by the imposition of a secrecy order under 35 U.S.C. 181;
(4) Any time consumed by review by the Patent Trial and Appeal Board or a Federal court; or
(5) Any delay in the processing of the application by the Office that was requested by the applicant.
(c) Delays caused by interference and derivation proceedings. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to interference or derivation proceedings under 35 U.S.C. 135(a).
(d) Delays caused by secrecy order. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the application being placed under a secrecy order under 35 U.S.C. 181.
(e) Delays caused by successful appellate review. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to review by the Patent Trial and Appeal Board under 35 U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, if the patent was issued under a decision in the review reversing an adverse determination of patentability. If an application is remanded by a panel of the Patent Trial and Appeal Board and the remand is the last action by a panel of the Patent Trial and Appeal Board prior to the mailing of a notice of allowance under 35 U.S.C. 151 in the application, the remand shall be considered a decision by the Patent Trial and Appeal Board as that phrase is used in 35 U.S.C. 154(b)(1)(A)(iii), a decision in the review reversing an adverse determination of patentability as that phrase is used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision in favor of the applicant under § 1.703(e). A remand by a panel of the Patent Trial and Appeal Board shall not be considered a decision in the review reversing an adverse determination of patentability as provided in this paragraph if there is filed a request for continued examination under 35 U.S.C. 132(b) that was not first preceded by the mailing, after such remand, of at least one of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
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§ 1.702PATENT RULES
(f) The provisions of this section and §§ 1.703 through 1.705 apply only to original applications, except applications for a design patent, filed on or after May 29, 2000, and patents issued on such applications.
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (e) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004; paras. (a)(3), (b)(2), (b)(4), (c), and (e) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (a)(1) and para. (b) heading revised, 78 FR 19416, Apr. 1, 2013, effective Apr. 1, 2013 (adopted as final, 79 FR 27755, May 15, 2014)]
[*The changes to para. (a)(1) and the heading of para. (b) effective Apr. 1, 2013 apply to any patent granted on or after Jan. 14, 2013]
§ 1.702 (pre-2013-04-01) Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000).
[Editor Note: Not applicable to patents granted on or after January 14, 2013*]
(a) Failure to take certain actions within specified time frames. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to:
(1) Mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 in an international application;
(2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken under 35 U.S.C. 134 not later than four months after the date on which the reply was filed or the appeal was taken;
(3) Act on an application not later than four months after the date of a decision by the Patent Trial and Appeal Board under 35 U.S.C. 134 or 135 or a decision by a Federal court under 35 U.S.C. 141, 145, or 146 where at least one allowable claim remains in the application; or
(4) Issue a patent not later than four months after the date on which the issue fee was paid under
35 U.S.C. 151 and all outstanding requirements were satisfied.
(b) Failure to issue a patent within three years of the actual filing date of the application. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to issue a patent within three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application, but not including:
(1) Any time consumed by continued examination of the application under 35 U.S.C. 132(b);
(2) Any time consumed by an interference or derivation proceeding under 35 U.S.C. 135(a);
(3) Any time consumed by the imposition of a secrecy order under 35 U.S.C. 181;
(4) Any time consumed by review by the Patent Trial and Appeal Board or a Federal court; or
(5) Any delay in the processing of the application by the Office that was requested by the applicant.
(c) Delays caused by interference and derivation proceedings. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to interference or derivation proceedings under 35 U.S.C. 135(a).
(d) Delays caused by secrecy order. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the application being placed under a secrecy order under 35 U.S.C. 181.
(e) Delays caused by successful appellate review. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to review by the Patent Trial and Appeal Board under 35 U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, if the patent was issued under a decision in the review reversing an adverse determination of patentability. If an application is remanded by a panel of the Patent
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Trial and Appeal Board and the remand is the last action by a panel of the Patent Trial and Appeal Board prior to the mailing of a notice of allowance under 35 U.S.C. 151 in the application, the remand shall be considered a decision by the Patent Trial and Appeal Board as that phrase is used in 35 U.S.C. 154(b)(1)(A)(iii), a decision in the review reversing an adverse determination of patentability as that phrase is used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision in favor of the applicant under § 1.703(e). A remand by a panel of the Patent Trial and Appeal Board shall not be considered a decision in the review reversing an adverse determination of patentability as provided in this paragraph if there is filed a request for continued examination under 35 U.S.C. 132(b) that was not first preceded by the mailing, after such remand, of at least one of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
(f) The provisions of this section and §§ 1.703 through 1.705 apply only to original applications, except applications for a design patent, filed on or after May 29, 2000, and patents issued on such applications.
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (e) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004; paras. (a)(3), (b)(2), (b)(4), (c), and (e) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
[*See § 1.702 for more recent history and the rule applicable to patents granted on or after January 14, 2013]
§ 1.703 Period of adjustment of patent term due to examination delay.
[Editor Note: Para. (a)(1) below includes amendments applicable only to patents granted on or after January 14, 2013 and paras. (b)(4) and (e) below include amendments applicable only to applications and patents in which a notice of allowance issued on or after September 17, 2012*]
(a) The period of adjustment under § 1.702(a) is the sum of the following periods:
(1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date of mailing of either an action under 35 U.S.C. 132,
or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(2) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply under § 1.111 was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(3) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply in compliance with § 1.113(c) was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(4) The number of days, if any, in the period beginning on the day after the date that is four months after the date an appeal brief in compliance with § 41.37 of this title was filed and ending on the date of mailing of any of an examiner’s answer under § 41.39 of this title, an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(5) The number of days, if any, in the period beginning on the day after the date that is four months after the date of a final decision by the Patent Trial and Appeal Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 or 146 where at least one allowable claim remains in the application and ending on the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first; and
(6) The number of days, if any, in the period beginning on the day after the date that is four months after the date the issue fee was paid and all outstanding requirements were satisfied and ending on the date a patent was issued.
(b) The period of adjustment under § 1.702(b) is the number of days, if any, in the period beginning on the day after the date that is three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date a patent was issued, but not including the sum of the following periods:
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(1) The number of days, if any, in the period beginning on the date on which a request for continued examination of the application under 35 U.S.C. 132(b) was filed and ending on the date of the mailing of the notice of allowance under 35 U.S.C. 151;
(2)(i) The number of days, if any, in the period beginning on the date an interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding under 35 U.S.C. 135(a) and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
(ii) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension;
(3)(i) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
(ii) The number of days, if any, in the period beginning on the date of mailing of an examiner’s answer under § 41.39 of this title in the application under secrecy order and ending on the date the secrecy order was removed;
(iii) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding under 35 U.S.C. 135(a) would be instituted but for the secrecy order and ending on the date the secrecy order was removed; and
(iv) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151; and,
(4) The number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Patent Trial and Appeal Board under § 41.35(a) of this chapter and ending on the date that jurisdiction by the Patent Trial and Appeal Board ends under § 41.35(b) of this chapter or the date of the last decision by a Federal court in
an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145, whichever is later.
(c) The period of adjustment under § 1.702(c) is the sum of the following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, in the period beginning on the date an interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding under 35 U.S.C. 135(a) and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
(2) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension.
(d) The period of adjustment under § 1.702(d) is the sum of the following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
(2) The number of days, if any, in the period beginning on the date of mailing of an examiner’s answer under § 41.39 of this title in the application under secrecy order and ending on the date the secrecy order was removed;
(3) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding under 35 U.S.C. 135(a) would be instituted but for the secrecy order and ending on the date the secrecy order was removed; and
(4) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151.
(e) The period of adjustment under § 1.702(e) is the sum of the number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Patent Trial and Appeal Board under § 41.35(a) of this chapter and ending on the date of a final decision in favor of the applicant by the Patent Trial and Appeal Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
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(f) The adjustment will run from the expiration date of the patent as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of delay attributable to the grounds specified in § 1.702 overlap, the period of adjustment granted under this section shall not exceed the actual number of days the issuance of the patent was delayed. The term of a patent entitled to adjustment under § 1.702 and this section shall be adjusted for the sum of the periods calculated under paragraphs (a) through (e) of this section, to the extent that such periods are not overlapping, less the sum of the periods calculated under § 1.704. The date indicated on any certificate of mailing or transmission under § 1.8 shall not be taken into account in this calculation.
(g) No patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under § 1.702 and this section beyond the expiration date specified in the disclaimer.
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (f) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004; paras. (a)(4), (b)(3)(ii), (b)(4), (d)(2), and (e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a)(5), (b)(2), (b)(3)(iii), (c)(1)-(2) and (d)(3) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (b)(4) and (e) revised, 77 FR 49354, Aug. 16, 2012, effective Sept. 17, 2012; para. (a)(1) revised, 78 FR 19416, Apr. 1, 2013, effective Apr. 1, 2013 (adopted as final, 79 FR 27755, May 15, 2014); para. (b)(1) revised, 80 FR 1346, Jan. 9, 2015, effective Jan. 9, 2015]
[*The changes to para. (a)(1) effective Apr. 1, 2013 are applicable to any patent granted on or after Jan. 14, 2013. See § 1.703 (2012-09-17 thru 2013-03-31) for para. (a)(1) applicable to patents granted before Jan. 14, 2013. The changes to paras. (b)(4) and (e) effective Sept. 17, 2012 are applicable to any application in which a notice of allowance was issued on or after Sept. 17, 2012, and any patent issuing thereon. See § 1.703 (pre-2012-09-17) for paras. (b)(4) and (e) that apply if the notice of allowance was issued before Sept. 17, 2012.]
§ 1.703 (2012-09-17 thru 2013-03-31) Period of adjustment of patent term due to examination delay.
[Editor Note: The paragraphs below include amendments applicable only to applications and patents in which a notice of allowance issued on or after September 17, 2012*]
(a) The period of adjustment under § 1.702(a) is the sum of the following periods:
(1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
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(b) The period of adjustment under § 1.702(b) is the number of days, if any, in the period beginning on the day after the date that is three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date a patent was issued, but not including the sum of the following periods:
*****
(4) The number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Patent Trial and Appeal Board under § 41.35(a) of this chapter and ending on the date that jurisdiction by the Patent Trial and Appeal Board ends under § 41.35(b) of this chapter or the date of the last decision by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145, whichever is later.
*****
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (f) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004; paras. (a)(4), (b)(3)(ii), (b)(4), (d)(2), and (e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a)(5), (b)(2), (b)(3)(iii), (c)(1)-(2) and (d)(3) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (b)(4) and (e) revised, 77 FR 49354, Aug. 16, 2012, effective Sept. 17, 2012]
[*The changes to paras. (b)(4) and (e) effective Sept. 17, 2012 are applicable to any application in which a notice of allowance was issued on or after Sept. 17, 2012, and any patent issuing thereon. See § 1.703 (pre-2012-09-17) for paras. (b)(4) and (e) otherwise in effect.]
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§ 1.703 (pre-2012-09-17) Period of adjustment of patent term due to examination delay.
[Editor Note: The paragraphs below are not applicable to applications and patents in which a notice of allowance was issued on or after September 17, 2012 or a patent was granted on or after January 14, 2013*]
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(b) The period of adjustment under § 1.702(b) is the number of days, if any, in the period beginning on the day after the date that is three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date a patent was issued, but not including the sum of the following periods:
*****
(4) The number of days, if any, in the period beginning on the date on which a notice of appeal to the Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 and § 41.31 of this title and ending on the date of the last decision by the Board of Patent Appeals and Interferences or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145, or on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first, if the appeal did not result in a decision by the Board of Patent Appeals and Interferences.
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[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (f) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004; paras. (a)(4), (b)(3)(ii), (b)(4), (d)(2), and (e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a)(5), (b)(2), (b)(3)(iii), (c)(1)-(2) and (d)(3) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
[*See § 1.703 for para. (a)(1) applicable to patents granted on or after Jan. 14, 2013 and paras. (b)(4) and (e) applicable if a notice of allowance was issued on or after Sept. 17, 2012]
§ 1.704 Reduction of period of adjustment of patent term.
[Editor Note: Some paragraphs have limited applicability. See * below for details.]
(a) The period of adjustment of the term of a patent under § 1.703(a) through (e) shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution (processing or examination) of the application.
(b) With respect to the grounds for adjustment set forth in §§ 1.702(a) through (e), and in particular the ground of adjustment set forth in § 1.702(b), an applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of three months that are taken to reply to any notice or action by the Office making any rejection, objection, argument, or other request, measuring such three-month period from the date the notice or action was mailed or given to the applicant, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is three months after the date of mailing or transmission of the Office communication notifying the applicant of the rejection, objection, argument, or other request and ending on the date the reply was filed. The period, or shortened statutory period, for reply that is set in the Office action or notice has no effect on the three-month period set forth in this paragraph.
(c) Circumstances that constitute a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application also include the following circumstances, which will result in the following reduction of the period of adjustment set forth in § 1.703 to the extent that the periods are not overlapping:
(1) Suspension of action under § 1.103 at the applicant’s request, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date a request for suspension of action under § 1.103 was filed and ending on the date of the termination of the suspension;
(2) Deferral of issuance of a patent under § 1.314, in which case the period of adjustment set
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forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date a request for deferral of issuance of a patent under § 1.314 was filed and ending on the date the patent was issued;
(3) Abandonment of the application or late payment of the issue fee, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date of abandonment or the date after the date the issue fee was due and ending on the earlier of:
(i) The date of mailing of the decision reviving the application or accepting late payment of the issue fee; or
(ii) The date that is four months after the date the grantable petition to revive the application or accept late payment of the issue fee was filed;
(4) Failure to file a petition to withdraw the holding of abandonment or to revive an application within two months from the mailing date of a notice of abandonment, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date two months from the mailing date of a notice of abandonment and ending on the date a petition to withdraw the holding of abandonment or to revive the application was filed;
(5) Conversion of a provisional application under 35 U.S.C. 111(b) to a nonprovisional application under 35 U.S.C. 111(a) pursuant to 35 U.S.C. 111(b)(5), in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date the application was filed under 35 U.S.C. 111(b) and ending on the date a request in compliance with §1.53(c)(3) to convert the provisional application into a nonprovisional application was filed;
(6) Submission of a preliminary amendment or other preliminary paper less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
(i) The number of days, if any, beginning on the day after the mailing date of the original Office action or notice of allowance and ending on
the date of mailing of the supplemental Office action or notice of allowance; or
(ii) Four months;
(7) Submission of a reply having an omission (§ 1.135(c)), in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the reply having an omission was filed and ending on the date that the reply or other paper correcting the omission was filed;
(8) Submission of a supplemental reply or other paper, other than a supplemental reply or other paper expressly requested by the examiner, after a reply has been filed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the initial reply was filed and ending on the date that the supplemental reply or other such paper was filed;
(9) Submission of an amendment or other paper after a decision by the Patent Trial and Appeal Board, other than a decision designated as containing a new ground of rejection under § 41.50(b) of this title or statement under § 41.50(c) of this title, or a decision by a Federal court, less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or supplemental notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
(i) The number of days, if any, beginning on the day after the mailing date of the original Office action or notice of allowance and ending on the mailing date of the supplemental Office action or notice of allowance; or
(ii) Four months;
(10) Submission of an amendment under § 1.312 or other paper, other than a request for continued examination in compliance with § 1.114, after a notice of allowance has been given or mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
(i) The number of days, if any, beginning on the date the amendment under § 1.312 or other paper was filed and ending on the mailing date of
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the Office action or notice in response to the amendment under § 1.312 or such other paper; or
(ii) Four months;
(11) Failure to file an appeal brief in compliance with § 41.37 of this chapter within three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and § 41.31 of this chapter, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and § 41.31 of this chapter, and ending on the date an appeal brief in compliance with § 41.37 of this chapter or a request for continued examination in compliance with § 1.114 was filed;
(12) Submission of a request for continued examination under 35 U.S.C. 132(b) after any notice of allowance under 35 U.S.C. 151 has been mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the request for continued examination under 35 U.S.C. 132(b) was filed;
(13) Failure to provide an application in condition for examination as defined in paragraph (f) of this section within eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date the application is in condition for examination as defined in paragraph (f) of this section; and
(14) Further prosecution via a continuing application, in which case the period of adjustment set forth in § 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.
(d)(1) A paper containing only an information disclosure statement in compliance with
§§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraphs (c)(6), (c)(8), (c)(9), or (c)(10) of this section, and a request for continued examination in compliance with § 1.114 with no submission other than an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraph (c)(12) of this section, if the paper or request for continued examinationis accompanied by a statement that each item of information contained in the information disclosure statement:
(i) Was first cited in any communication from a patent office in a counterpart foreign or international application or from the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement; or
(ii) Is a communication that was issued by a patent office in a counterpart foreign or international application or by the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement.
(2) The thirty-day period set forth in paragraph (d)(1) of this section is not extendable.
(e) The submission of a request under § 1.705(c) for reinstatement of reduced patent term adjustment will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraph (c)(10) of this section.
(f) An application filed under 35 U.S.C. 111(a) is in condition for examination when the application includes a specification, including at least one claim and an abstract (§ 1.72(b)), and has papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, any English translation required by § 1.52(d) or § 1.57(a), a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor’s oath or declaration or an application data sheet containing the information specified in § 1.63(b), the basic filing fee (§ 1.16(a) or § 1.16(c)), the search fee (§ 1.16(k) or § 1.16(m)), the examination fee (§ 1.16(o) or § 1.16(q)), any
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certified copy of the previously filed application required by § 1.57(a), and any application size fee required by the Office under § 1.16(s). An international application is in condition for examination when the application has entered the national stage as defined in § 1.491(b), and includes a specification, including at least one claim and an abstract (§ 1.72(b)), and has papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor’s oath or declaration or an application data sheet containing the information specified in § 1.63(b), the search fee (§ 1.492(b)), the examination fee (§ 1.492(c)), and any application size fee required by the Office under § 1.492(j). An application shall be considered as having papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, and a sequence listing in compliance with § 1.821 through § 1.825 (if applicable) for purposes of this paragraph on the filing date of the latest reply (if any) correcting the papers, drawings, or sequence listing that is prior to the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first.
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (d) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004; para. (c)(9) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c)(11) redesignated as (c)(12) and (c)(11) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (c)(11) removed and (c)(12) redesignated as (c)(11), 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (d) revised, 76 FR 74700, Dec. 1, 2011, effective Dec. 1, 2011; para. (c)(9) introductory text revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (c)(10)(ii) and (c)(11) revised and para. (c)(12) added, 77 FR 49354, Aug. 16, 2012, effective Sept. 17, 2012; para. (e) revised, 78 FR 19416, Apr. 1, 2013, effective Apr. 1, 2013 (adopted as final, 79 FR 27755, May 15, 2014); paras. (c)(11) and (c)(12) revised, paras. (c)(13) and (f) added, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; paras. (c)(10), (c)(12), (c)(13) and (d)(1) revised, para. (c)(14) added, 80 FR 1346, Jan. 9, 2015, effective Mar. 10, 2015]
[* Paragraphs (c)(10)(ii), (c)(11), (c)(12), (c)(13), (c)(14), (e), and (f) above include changes having limited applicability as follows:
Para. (c)(12) above includes changes applicable only to applications in which a request for continued
examination under 35 U.S.C. 132(b) and 37 CFR 1.114 is filed on or after Mar. 10, 2015. For para. (c)(12) in effect for applications in which all requests for continued examination were filed prior to March 10, 2015, see § 1.704 (2013-12-18 thru 2015-03-09) below. Paras. (c)(11), (c)(13), (c)(14) and (f) above include changes applicable only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and to international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013. For paras. (c)(11) and (c)(13) in effect for applications filed before (and international applications in which the national stage commenced before) December 18, 2013, and in which a notice of appeal was filed on or after Sept. 17, 2012, see § 1.704 (2012-09-17 thru 2013-12-17). For para. (c)(11) in effect for applications in which there was no notice of appeal filed on or after Sept. 17, 2012, see § 1.704 (pre-2012-09-17).
Para. (e) above includes changes applicable only to applications in which a notice of allowance was mailed on or after April 1, 2013. For para. (e) in effect for applications in which there was no notice of allowance mailed on or after April 1, 2013, see § 1.704 (pre 2013-03-31).
Para. (c)(10)(ii) above includes changes applicable only to patent applications in which a notice of appeal was filed on or after Sept. 17, 2012. For para. (c)(10)(ii) in effect for applications in which there was no notice of appeal filed on or after Sept. 17, 2012, see § 1.704 (pre-2012-09-17).]
§ 1.704 (2013-12-18 thru 2015-03-09) Reduction of period of adjustment of patent term.
[The following paragraphs have limited applicability, see * below. ]
*****
(c) Circumstances that constitute a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application also include the following circumstances, which will result in the following reduction of the period of adjustment set forth in § 1.703 to the extent that the periods are not overlapping:
*****
(12) Failure to provide an application in condition for examination as defined in paragraph (f) of this section within eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of
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the national stage under 35 U.S.C. 371(b) or (f) in an international application, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date the application is in condition for examination as defined in paragraph (f) of this section; and
(13) Further prosecution via a continuing application, in which case the period of adjustment set forth in § 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.
[*para. (c)(12) above is applicable to those applications in which all requests for continued examination under 35 U.S.C. 132(b) and 37 CFR 1.114 were filed prior to Mar. 10, 2015. See 37 CFR 1.704 above, for para. (c)(12) applicable to applications in which a request for continued examination was filed on or after Mar. 10, 2015.
§ 1.704 (2012-09-17 thru 2013-12-17) Reduction of period of adjustment of patent term.
[Editor Note: Paras. (c)(11-12) and (f) below are applicable to applications filed before (and international applications in which the national stage commenced before) December 18, 2013 in which a notice of appeal was filed on or after Sept. 17, 2012. ]
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(c) *****
(11) Failure to file an appeal brief in compliance with § 41.37 of this chapter within three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and § 41.31 of this chapter, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and § 41.31 of this chapter, and ending on the date an appeal brief in compliance with § 41.37 of this chapter or a request for continued examination in compliance with § 1.114 was filed; and
(12) Further prosecution via a continuing application, in which case the period of adjustment set forth in § 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.
*****
[* Paras. (c)(11) and (c)(12) above apply to applications filed under 35 U.S.C. 111 before Dec. 18, 2013, and international applications in which the national stage commenced under 35 U.S.C. 371 on or after Dec. 18, 2013, and in which a notice of appeal was filed on or after Sept. 17, 2012. For the current rule, including paras. (c)(11) and (c)(12) applicable to applications filed (or in which the national stage commenced) on or after Dec. 18, 2013, see § 1.704. For para. (c)(11) in effect for applications in which there was no notice of appeal filed on or after Sept. 17, 2012, see § 1.704 (pre-2012-09-17).]
§ 1.704 (pre-2013-03-31) Reduction of period of adjustment of patent term.
[Editor Note: Para. (e) below applies to applications in which no notice of allowance was mailed on or after April 1, 2013.]
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(e) Submission of an application for patent term adjustment under § 1.705(b) (with or without request under § 1.705(c) for reinstatement of reduced patent term adjustment) will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraph (c)(10) of this section.
[*See 1.704 for current para. (e).]
§ 1.704 (pre-2012-09-17) Reduction of period of adjustment of patent term.
[Editor Note: Applicable to applications in which a notice of appeal under 37 CFR 41.31 was filed before September 17, 2012*]
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(c) *****
*****
(ii) Four months; and
(11) Further prosecution via a continuing application, in which case the period of adjustment set forth in § 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.
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*****
[*See § 1.704 for the current rule, including paras. (c)(10)(ii), (c)(11), (c)(12), and (c)(13) applicable to applications filed (or in which the national stage commenced) on or after Dec. 18, 2013 and in which a notice of appeal under 37 CFR 41.31 was filed on or after Sept. 17, 2012.]
§ 1.705 Patent term adjustment determination.
[Editor Note: Paras. (a)-(d) below include amendments applicable only to patents granted on or after January 14, 2013*]
(a) The patent will include notification of any patent term adjustment under 35 U.S.C. 154(b).
(b) Any request for reconsideration of the patent term adjustment indicated on the patent must be by way of an application for patent term adjustment filed no later than two months from the date the patent was granted. This two-month time period may be extended under the provisions of § 1.136(a). An application for patent term adjustment under this section must be accompanied by:
(1) The fee set forth in § 1.18(e); and
(2) A statement of the facts involved, specifying:
(i) The correct patent term adjustment and the basis or bases under § 1.702 for the adjustment;
(ii) The relevant dates as specified in §§ 1.703(a) through (e) for which an adjustment is sought and the adjustment as specified in § 1.703(f) to which the patent is entitled;
(iii) Whether the patent is subject to a terminal disclaimer and any expiration date specified in the terminal disclaimer; and
(iv)(A) Any circumstances during the prosecution of the application resulting in the patent that constitute a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in § 1.704; or
(B) That there were no circumstances constituting a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in § 1.704.
(c) Any request for reinstatement of all or part of the period of adjustment reduced pursuant to §
1.704(b) for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request must be filed prior to the issuance of the patent. This time period is not extendable. Any request for reinstatement of all or part of the period of adjustment reduced pursuant to § 1.704(b) under this paragraph must also be accompanied by:
(1) The fee set forth in § 1.18(f); and
(2) A showing to the satisfaction of the Director that, in spite of all due care, the applicant was unable to reply to the rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request. The Office shall not grant any request for reinstatement for more than three additional months for each reply beyond three months from the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request.
(d) No submission or petition on behalf of a third party concerning patent term adjustment under 35 U.S.C. 154(b) will be considered by the Office. Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (c)(2) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (d) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004; paras. (d) and (e) removed, para. (f) redesignated as para. (d), and paras. (a), (b) introductory text, and (c) introductory text revised, 78 FR 19416, Apr. 1, 2013, effective Apr. 1, 2013 (adopted as final, 79 FR 27755, May 15, 2014)]
[*The changes to paras. (a)-(f) effective Apr. 1, 2013 are applicable to any patent granted on or after Jan. 14, 2013. See § 1.705 (pre-2013-04-01) for paras. (a)-(f) in effect with respect to applications granted prior to Jan. 14, 2013.]
§ 1.705 (pre-2013-04-01) Patent term adjustment determination.
[Editor Note: Applicable to patents granted before January 14, 2013*]
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PATENT RULES
(a) The notice of allowance will include notification of any patent term adjustment under 35 U.S.C. 154(b).
(b) Any request for reconsideration of the patent term adjustment indicated in the notice of allowance, except as provided in paragraph (d) of this section, and any request for reinstatement of all or part of the term reduced pursuant to §1.704(b) must be by way of an application for patent term adjustment. An application for patent term adjustment under this section must be filed no later than the payment of the issue fee but may not be filed earlier than the date of mailing of the notice of allowance. An application for patent term adjustment under this section must be accompanied by:
(1) The fee set forth in § 1.18(e); and
(2) A statement of the facts involved, specifying:
(i) The correct patent term adjustment and the basis or bases under § 1.702 for the adjustment;
(ii) The relevant dates as specified in §§ 1.703(a) through (e) for which an adjustment is sought and the adjustment as specified in § 1.703(f) to which the patent is entitled;
(iii) Whether the patent is subject to a terminal disclaimer and any expiration date specified in the terminal disclaimer; and
(iv)(A) Any circumstances during the prosecution of the application resulting in the patent that constitute a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in § 1.704; or
(B) That there were no circumstances constituting a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in § 1.704.
(c) Any application for patent term adjustment under this section that requests reinstatement of all or part of the period of adjustment reduced pursuant to § 1.704(b) for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request must also be accompanied by:
(1) The fee set forth in § 1.18(f); and
(2) A showing to the satisfaction of the Director that, in spite of all due care, the applicant was unable to reply to the rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request. The Office shall not grant any request for reinstatement for more than three additional months for each reply beyond three months from the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request.
(d) If there is a revision to the patent term adjustment indicated in the notice of allowance, the patent will indicate the revised patent term adjustment. If the patent indicates or should have indicated a revised patent term adjustment, any request for reconsideration of the patent term adjustment indicated in the patent must be filed within two months of the date the patent issued and must comply with the requirements of paragraphs (b)(1) and (b)(2) of this section. Any request for reconsideration under this section that raises issues that were raised, or could have been raised, in an application for patent term adjustment under paragraph (b) of this section shall be dismissed as untimely as to those issues.
(e) The periods set forth in this section are not extendable.
(f) No submission or petition on behalf of a third party concerning patent term adjustment under 35 U.S.C. 154(b) will be considered by the Office. Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000; para. (c)(2) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (d) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004]
[*See § 1.705 for the rule applicable to patents granted on or after Jan. 14, 2013.]
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EXTENSION OF PATENT TERM DUE TO REGULATORY REVIEW
§ 1.710 Patents subject to extension of the patent term.
(a) A patent is eligible for extension of the patent term if the patent claims a product as defined in paragraph (b) of this section, either alone or in combination with other ingredients that read on a composition that received permission for commercial marketing or use, or a method of using such a product, or a method of manufacturing such a product, and meets all other conditions and requirements of this subpart.
(b) The term product referred to in paragraph (a) of this section means —
(l) The active ingredient of a new human drug, antibiotic drug, or human biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Public Health Service Act) including any salt or ester of the active ingredient, as a single entity or in combination with another active ingredient; or
(2) The active ingredient of a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Virus-Serum-Toxin Act) that is not primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes including site specific genetic manipulation techniques, including any salt or ester of the active ingredient, as a single entity or in combination with another active ingredient; or
(3) Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act.
[Added 52 FR 9394, Mar. 24, 1987, effective May 26, 1987; amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]
§ 1.720 Conditions for extension of patent term.
The term of a patent may be extended if:
(a) The patent claims a product or a method of using or manufacturing a product as defined in § 1.710;
(b) The term of the patent has never been previously extended, except for extensions issued pursuant to §§ 1.701, 1.760, or 1.790;
(c) An application for extension is submitted in compliance with § 1.740;
(d) The product has been subject to a regulatory review period as defined in 35 U.S.C. 156(g) before its commercial marketing or use;
(e) The product has received permission for commercial marketing or use and —
(1) The permission for the commercial marketing or use of the product is the first received permission for commercial marketing or use under the provision of law under which the applicable regulatory review occurred, or
(2) In the case of a patent other than one directed to subject matter within § 1.710(b)(2) claiming a method of manufacturing the product that primarily uses recombinant DNA technology in the manufacture of the product, the permission for the commercial marketing or use is the first received permission for the commercial marketing or use of a product manufactured under the process claimed in the patent, or
(3) In the case of a patent claiming a new animal drug or a veterinary biological product that is not covered by the claims in any other patent that has been extended, and has received permission for the commercial marketing or use in non-food-producing animals and in food-producing animals, and was not extended on the basis of the regulatory review period for use in non-food-producing animals, the permission for the commercial marketing or use of the drug or product after the regulatory review period for use in food-producing animals is the first permitted commercial marketing or use of the drug or product for administration to a food-producing animal.
(f) The application is submitted within the sixty-day period beginning on the date the product first received permission for commercial marketing or use under the provisions of law under which the applicable regulatory review period occurred; or in the case of a patent claiming a method of manufacturing the product which primarily uses
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recombinant DNA technology in the manufacture of the product, the application for extension is submitted within the sixty-day period beginning on the date of the first permitted commercial marketing or use of a product manufactured under the process claimed in the patent; or in the case of a patent that claims a new animal drug or a veterinary biological product that is not covered by the claims in any other patent that has been extended, and said drug or product has received permission for the commercial marketing or use in non-food-producing animals, the application for extension is submitted within the sixty-day period beginning on the date of the first permitted commercial marketing or use of the drug or product for administration to a food-producing animal;
(g) The term of the patent, including any interim extension issued pursuant to § 1.790, has not expired before the submission of an application in compliance with § 1.741; and
(h) No other patent term has been extended for the same regulatory review period for the product.
[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987; paras. (e) & (f) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; paras. (b) and (g) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§ 1.730 Applicant for extension of patent term; signature requirements.
(a) Any application for extension of a patent term must be submitted by the owner of record of the patent or its agent and must comply with the requirements of § 1.740.
(b) If the application is submitted by the patent owner, the application must be signed either by:
(1) The patent owner in compliance with § 3.73(c) of this chapter; or
(2) A registered practitioner on behalf of the patent owner.
(c) If the application is submitted on behalf of the patent owner by an agent of the patent owner ( e.g., a licensee of the patent owner), the application must be signed by a registered practitioner on behalf of the agent. The Office may require proof that the agent is authorized to act on behalf of the patent owner.
(d) If the application is signed by a registered practitioner, the Office may require proof that the practitioner is authorized to act on behalf of the patent owner or agent of the patent owner.
[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(1) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.740 Formal requirements for application for extension of patent term; correction of informalities.
(a) An application for extension of patent term must be made in writing to the Director. A formal application for the extension of patent term must include:
(1) A complete identification of the approved product as by appropriate chemical and generic name, physical structure or characteristics;
(2) A complete identification of the Federal statute including the applicable provision of law under which the regulatory review occurred;
(3) An identification of the date on which the product received permission for commercial marketing or use under the provision of law under which the applicable regulatory review period occurred;
(4) In the case of a drug product, an identification of each active ingredient in the product and as to each active ingredient, a statement that it has not been previously approved for commercial marketing or use under the Federal Food, Drug, and Cosmetic Act, the Public Health Service Act, or the Virus-Serum-Toxin Act, or a statement of when the active ingredient was approved for commercial marketing or use (either alone or in combination with other active ingredients), the use for which it was approved, and the provision of law under which it was approved.
(5) A statement that the application is being submitted within the sixty day period permitted for submission pursuant to § l.720(f) and an identification of the date of the last day on which the application could be submitted;
(6) A complete identification of the patent for which an extension is being sought by the name of the inventor, the patent number, the date of issue, and the date of expiration;
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(7) A copy of the patent for which an extension is being sought, including the entire specification (including claims) and drawings;
(8) A copy of any disclaimer, certificate of correction, receipt of maintenance fee payment, or reexamination certificate issued in the patent;
(9) A statement that the patent claims the approved product, or a method of using or manufacturing the approved product, and a showing which lists each applicable patent claim and demonstrates the manner in which at least one such patent claim reads on:
(i) The approved product, if the listed claims include any claim to the approved product;
(ii) The method of using the approved product, if the listed claims include any claim to the method of using the approved product; and
(iii) The method of manufacturing the approved product, if the listed claims include any claim to the method of manufacturing the approved product;
(10) A statement beginning on a new page of the relevant dates and information pursuant to 35 U.S.C.156(g) in order to enable the Secretary of Health and Human Services or the Secretary of Agriculture, as appropriate, to determine the applicable regulatory review period as follows:
(i) For a patent claiming a human drug, antibiotic, or human biological product:
(A) The effective date of the investigational new drug (IND) application and the IND number;
(B) The date on which a new drug application (NDA) or a Product License Application (PLA) was initially submitted and the NDA or PLA number; and
(C) The date on which the NDA was approved or the Product License issued;
(ii) For a patent claiming a new animal drug:
(A) The date a major health or environmental effects test on the drug was initiated, and any available substantiation of that date, or the date of an exemption under subsection (j) of Section 512 of the Federal Food, Drug, and Cosmetic Act became effective for such animal drug;
(B) The date on which a new animal drug application (NADA) was initially submitted and the NADA number; and
(C) The date on which the NADA was approved;
(iii) For a patent claiming a veterinary biological product:
(A) The date the authority to prepare an experimental biological product under the Virus-Serum-Toxin Act became effective;
(B) The date an application for a license was submitted under the Virus-Serum-Toxin Act; and
(C) The date the license issued;
(iv) For a patent claiming a food or color additive:
(A) The date a major health or environmental effects test on the additive was initiated and any available substantiation of that date;
(B) The date on which a petition for product approval under the Federal Food, Drug and Cosmetic Act was initially submitted and the petition number; and
(C) The date on which the FDA published a Federal Register notice listing the additive for use;
(v) For a patent claiming a medical device:
(A) The effective date of the investigational device exemption (IDE) and the IDE number, if applicable, or the date on which the applicant began the first clinical investigation involving the device, if no IDE was submitted, and any available substantiation of that date;
(B) The date on which the application for product approval or notice of completion of a product development protocol under Section 515 of the Federal Food, Drug and Cosmetic Act was initially submitted and the number of the application; and
(C) The date on which the application was approved or the protocol declared to be completed;
(11) A brief description beginning on a new page of the significant activities undertaken by the
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marketing applicant during the applicable regulatory review period with respect to the approved product and the significant dates applicable to such activities;
(12) A statement beginning on a new page that in the opinion of the applicant the patent is eligible for the extension and a statement as to the length of extension claimed, including how the length of extension was determined;
(13) A statement that applicant acknowledges a duty to disclose to the Director of the United States Patent and Trademark Office and the Secretary of Health and Human Services or the Secretary of Agriculture any information which is material to the determination of entitlement to the extension sought (see § 1.765);
(14) The prescribed fee for receiving and acting upon the application for extension (see § 1.20(j)); and
(15) The name, address, and telephone number of the person to whom inquiries and correspondence relating to the application for patent term extension are to be directed.
(b) The application under this section must be accompanied by two additional copies of such application (for a total of three copies).
(c) If an application for extension of patent term is informal under this section, the Office will so notify the applicant. The applicant has two months from the mail date of the notice, or such time as is set in the notice, within which to correct the informality. Unless the notice indicates otherwise, this time period may be extended under the provisions of § 1.136.
[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987; para. (a) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; para. (a)(14), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; heading, introductory text of paragraph (a), and paras. (a)(9), (a)(10), (a)(14), (a)(15), (b) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; paras. (a)(16) and (a)(17) removed, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; paras. (a) & (a)(13) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 1.741 Complete application given a filing date; petition procedure.
(a) The filing date of an application for extension of a patent term is the date on which a
complete application is received in the Office or filed pursuant to the procedures set forth in §1.8 or § 1.10. A complete application must include:
(1) An identification of the approved product;
(2) An identification of each Federal statute under which regulatory review occurred;
(3) An identification of the patent for which an extension is being sought;
(4) An identification of each claim of the patent which claims the approved product or a method of using or manufacturing the approved product;
(5) Sufficient information to enable the Director to determine under subsections (a) and (b) of 35 U.S.C. 156 the eligibility of a patent for extension, and the rights that will be derived from the extension, and information to enable the Director and the Secretary of Health and Human Services or the Secretary of Agriculture to determine the length of the regulatory review period; and
(6) A brief description of the activities undertaken by the marketing applicant during the applicable regulatory review period with respect to the approved product and the significant dates applicable to such activities.
(b) If an application for extension of patent term is incomplete under this section, the Office will so notify the applicant. If applicant requests review of a notice that an application is incomplete, or review of the filing date accorded an application under this section, applicant must file a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f) within two months of the mail date of the notice that the application is incomplete, or the notice according the filing date complained of. Unless the notice indicates otherwise, this time period may be extended under the provisions of § 1.136.
[Added 52 FR 9396, Mar. 24, 1987, effective May 26, 1987; para. (a) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; para. (a) amended, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a) correcting amendment, 61 FR 64027, Dec. 3, 1996; heading, introductory text of paragraph (a), and paras. (a)(5) and (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(5) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
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§ 1.750 Determination of eligibility for extension of patent term.
A determination as to whether a patent is eligible for extension may be made by the Director solely on the basis of the representations contained in the application for extension filed in compliance with § 1.740 or § 1.790. This determination may be delegated to appropriate Patent and Trademark Office officials and may be made at any time before the certificate of extension is issued. The Director or other appropriate officials may require from applicant further information or make such independent inquiries as desired before a final determination is made on whether a patent is eligible for extension. In an application for extension filed in compliance with § 1.740, a notice will be mailed to applicant containing the determination as to the eligibility of the patent for extension and the period of time of the extension, if any. This notice shall constitute the final determination as to the eligibility and any period of extension of the patent. A single request for reconsideration of a final determination may be made if filed by the applicant within such time as may be set in the notice of final determination or, if no time is set, within one month from the date of the final determination. The time periods set forth herein are subject to the provisions of § 1.136.
[Added 52 FR 9396, Mar. 24, 1987, effective May 26, 1987; revised, 60 FR 25615, May 12, 1995, effective July 11, 1995; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 1.760 Interim extension of patent term under 35 U.S.C. 156(e)(2).
An applicant who has filed a formal application for extension in compliance with § 1.740 may request one or more interim extensions for periods of up to one year each pending a final determination on the application pursuant to § 1.750. Any such request should be filed at least three months prior to the expiration date of the patent. The Director may issue interim extensions, without a request by the applicant, for periods of up to one year each until a final determination is made. The patent owner or agent will be notified when an interim extension is granted and notice of the extension will be published
in the Official Gazette of the United States Patent and Trademark Office. The notice will be recorded in the official file of the patent and will be considered as part of the original patent. In no event will the interim extensions granted under this section be longer than the maximum period for extension to which the applicant would be eligible.
[Added, 52 FR 9396, Mar. 24, 1987, effective May 26, 1987; heading revised, 60 FR 25615, May 12, 1995, effective July 11, 1995; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 1.765 Duty of disclosure in patent term extension proceedings.
(a) A duty of candor and good faith toward the Patent and Trademark Office and the Secretary of Health and Human Services or the Secretary of Agriculture rests on the patent owner or its agent, on each attorney or agent who represents the patent owner and on every other individual who is substantively involved on behalf of the patent owner in a patent term extension proceeding. All such individuals who are aware, or become aware, of material information adverse to a determination of entitlement to the extension sought, which has not been previously made of record in the patent term extension proceeding must bring such information to the attention of the Office or the Secretary, as appropriate, in accordance with paragraph (b) of this section, as soon as it is practical to do so after the individual becomes aware of the information. Information is material where there is a substantial likelihood that the Office or the Secretary would consider it important in determinations to be made in the patent term extension proceeding.
(b) Disclosures pursuant to this section must be accompanied by a copy of each written document which is being disclosed. The disclosure must be made to the Office or the Secretary, as appropriate, unless the disclosure is material to determinations to be made by both the Office and the Secretary, in which case duplicate copies, certified as such, must be filed in the Office and with the Secretary. Disclosures pursuant to this section may be made to the Office or the Secretary, as appropriate, through an attorney or agent having responsibility on behalf of the patent owner or its agent for the patent term extension proceeding or through a patent
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owner acting on his or her own behalf. Disclosure to such an attorney, agent or patent owner shall satisfy the duty of any other individual. Such an attorney, agent or patent owner has no duty to transmit information which is not material to the determination of entitlement to the extension sought.
(c) No patent will be determined eligible for extension and no extension will be issued if it is determined that fraud on the Office or the Secretary was practiced or attempted or the duty of disclosure was violated through bad faith or gross negligence in connection with the patent term extension proceeding. If it is established by clear and convincing evidence that any fraud was practiced or attempted on the Office or the Secretary in connection with the patent term extension proceeding or that there was any violation of the duty of disclosure through bad faith or gross negligence in connection with the patent term extension proceeding, a final determination will be made pursuant to § 1.750 that the patent is not eligible for extension.
(d) The duty of disclosure pursuant to this section rests on the individuals identified in paragraph (a) of this section and no submission on behalf of third parties, in the form of protests or otherwise, will be considered by the Office. Any such submissions by third parties to the Office will be returned to the party making the submission, or otherwise disposed of, without consideration by the Office.
[Added, 52 FR 9396, Mar. 24 1987, effective May 26, 1987, para. (a) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; para. (a) revised, 60 FR 25615, May 12, 1995, effective July 11, 1995]
§ 1.770 Express withdrawal of application for extension of patent term.
An application for extension of patent term may be expressly withdrawn before a determination is made pursuant to § 1.750 by filing in the Office, in duplicate, a written declaration of withdrawal signed by the owner of record of the patent or its agent. An application may not be expressly withdrawn after the date permitted for reply to the final determination on the application. An express withdrawal pursuant to this section is effective when acknowledged in writing by the Office. The filing
of an express withdrawal pursuant to this section and its acceptance by the Office does not entitle applicant to a refund of the filing fee (§ 1.20(j)) or any portion thereof.
[Added 52 FR 9397, Mar. 24 1987, effective May 26, 1987; 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.775 Calculation of patent term extension for a human drug, antibiotic drug, or human biological product.
(a) If a determination is made pursuant to § 1.750 that a patent for a human drug, antibiotic drug, or human biological product is eligible for extension, the term shall be extended by the time as calculated in days in the manner indicated by this section. The patent term extension will run from the original expiration date of the patent or any earlier date set by terminal disclaimer (§ 1.321).
(b) The term of the patent for a human drug, antibiotic drug or human biological product will be extended by the length of the regulatory review period for the product as determined by the Secretary of Health and Human Services, reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period for a human drug, antibiotic drug or human biological product will be determined by the Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(1)(B), it is the sum of —
(1) The number of days in the period beginning on the date an exemption under subsection (i) of section 505 or subsection (d) of section 507 of the Federal Food, Drug, and Cosmetic Act became effective for the approved product and ending on the date an application was initially submitted for such product under those sections or under section 351 of the Public Health Service Act; and
(2) The number of days in the period beginning on the date the application was initially submitted for the approved product under section 351 of the Public Health Service Act, subsection (b) of section 505 or section 507 of the Federal Food, Drug, and Cosmetic Act and ending on the date such application was approved under such section.
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(d) The term of the patent as extended for a human drug, antibiotic drug or human biological product will be determined by—
(1) Subtracting from the number of days determined by the Secretary of Health and Human Services to be in the regulatory review period:
(i) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section which were on and before the date on which the patent issued;
(ii) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section during which it is determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of Health and Human Services that applicant did not act with due diligence;
(iii) One-half the number of days remaining in the period defined by paragraph (c)(1) of this section after that period is reduced in accordance with paragraphs (d)(1)(i) and (ii) of this section; half days will be ignored for purposes of subtraction;
(2) By adding the number of days determined in paragraph (d)(1) of this section to the original term of the patent as shortened by any terminal disclaimer;
(3) By adding 14 years to the date of approval of the application under section 351 of the Public Health Service Act, or subsection (b) of section 505 or section 507 of the Federal Food, Drug, and Cosmetic Act;
(4) By comparing the dates for the ends of the periods obtained pursuant to paragraphs (d)(2) and (d)(3) of this section with each other and selecting the earlier date;
(5) If the original patent was issued after September 24, 1984,
(i) By adding 5 years to the original expiration date of the patent or any earlier date set by terminal disclaimer; and
(ii) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i) of this section with each other and selecting the earlier date;
(6) If the original patent was issued before September 24, 1984, and
(i) If no request was submitted for an exemption under subsection (i) of section 505 or
subsection (d) of section 507 of the Federal Food, Drug, and Cosmetic Act before September 24, 1984, by—
(A) Adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
(B) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this section with each other and selecting the earlier date; or
(ii) If a request was submitted for an exemption under subsection (i) of section 505 or subsection (d) of section 507 of the Federal Food, Drug, or Cosmetic Act before September 24, 1984 and the commercial marketing or use of the product was not approved before September 24, 1984, by -
(A) Adding 2 years to the original expiration date of the patent or earlier date set by terminal disclaimer, and
(B) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this section with each other and selecting the earlier filing date.
[Added, 52 FR 9397, Mar. 24 1987, effective May 26, 1987]
§ 1.776 Calculation of patent term extension for a food additive or color additive.
(a) If a determination is made pursuant to § 1.750 that a patent for a food additive or color additive is eligible for extension, the term shall be extended by the time as calculated in days in the manner indicated by this section. The patent term extension will run from the original expiration date of the patent or earlier date set by terminal disclaimer (§ 1.321).
(b) The term of the patent for a food additive or color additive will be extended by the length of the regulatory review period for the product as determined by the Secretary of Health and Human Services, reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period for a food additive or color additive will be determined by the Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(2)(B), it is the sum of -
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§ 1.776PATENT RULES
(1) The number of days in the period beginning on the date a major health or environmental effects test on the additive was initiated and ending on the date a petition was initially submitted with respect to the approved product under the Federal Food, Drug, and Cosmetic Act requesting the issuance of a regulation for use of the product; and
(2) The number of days in the period beginning on the date a petition was initially submitted with respect to the approved product under the Federal Food, Drug and Cosmetic Act requesting the issuance of a regulation for use of the product, and ending on the date such regulation became effective or, if objections were filed to such regulation, ending on the date such objections were resolved and commercial marketing was permitted or, if commercial marketing was permitted and later revoked pending further proceedings as a result of such objections, ending on the date such proceedings were finally resolved and commercial marketing was permitted.
(d) The term of the patent as extended for a food additive or color additive will be determined by
(1) Subtracting from the number of days determined by the Secretary of Health and Human Services to be in the regulatory review period:
(i) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section which were on and before the date on which the patent issued;
(ii) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section during which it is determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of Health and Human Services that applicant did not act with due diligence;
(iii) The number of days equal to one-half the number of days remaining in the period defined by paragraph (c)(1) of this section after that period is reduced in accordance with paragraphs (d)(1) (i) and (ii) of this section; half days will be ignored for purposes of subtraction;
(2) By adding the number of days determined in paragraph (d)(1) of this section to the original term of the patent as shortened by any terminal disclaimer;
(3) By adding 14 years to the date a regulation for use of the product became effective
or, if objections were filed to such regulation, to the date such objections were resolved and commercial marketing was permitted or, if commercial marketing was permitted and later revoked pending further proceedings as a result of such objections, to the date such proceedings were finally resolved and commercial marketing was permitted;
(4) By comparing the dates for the ends of the periods obtained pursuant to paragraphs (d)(2) and (d)(3) of this section with each other and selecting the earlier date;
(5) If the original patent was issued after September 24, 1984,
(i) By adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
(ii) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i) of this section with each other and selecting the earlier date;
(6) If the original patent was issued before September 24, 1984, and
(i) If no major health or environmental effects test was initiated and no petition for a regulation or application for registration was submitted before September 24, 1984, by
(A) Adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer, and
(B) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this section with each other and selecting the earlier date; or
(ii) If a major health or environmental effects test was initiated or a petition for a regulation or application for registration was submitted by September 24, 1984, and the commercial marketing or use of the product was not approved before September 24, 1984, by —
(A) Adding 2 years to the original expiration date of the patent or earlier date set by terminal disclaimer, and
(B) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this section with each other and selecting the earlier date.
[Added, 52 FR 9397, Mar. 24, 1987, effective May 26, 1987]
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§ 1.777 Calculation of patent term extension for a medical device.
(a) If a determination is made pursuant to § 1.750 that a patent for a medical device is eligible for extension, the term shall be extended by the time as calculated in days in the manner indicated by this section. The patent term extension will run from the original expiration date of the patent or earlier date as set by terminal disclaimer (§ 1.321).
(b) The term of the patent for a medical device will be extended by the length of the regulatory review period for the product as determined by the Secretary of Health and Human Services, reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period for a medical device will be determined by the Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(3)(B), it is the sum of
(1) The number of days in the period beginning on the date a clinical investigation on humans involving the device was begun and ending on the date an application was initially submitted with respect to the device under section 515 of the Federal Food, Drug, and Cosmetic Act; and
(2) The number of days in the period beginning on the date the application was initially submitted with respect to the device under section 515 of the Federal Food, Drug, and Cosmetic Act, and ending on the date such application was approved under such Act or the period beginning on the date a notice of completion of a product development protocol was initially submitted under section 515(f)(5) of the Act and ending on the date the protocol was declared completed under section 515(f)(6) of the Act.
(d) The term of the patent as extended for a medical device will be determined by —
(1) Subtracting from the number of days determined by the Secretary of Health and Human Services to be in the regulatory review period pursuant to paragraph (c) of this section:
(i) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section which were on and before the date on which the patent issued;
(ii) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section during which it is determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of Health and Human Services that applicant did not act with due diligence;
(iii) One-half the number of days remaining in the period defined by paragraph (c)(1) of this section after that period is reduced in accordance with paragraphs (d)(1) (i) and (ii) of this section; half days will be ignored for purposes of subtraction;
(2) By adding the number of days determined in paragraph (d)(1) of this section to the original term of the patent as shortened by any terminal disclaimer;
(3) By adding 14 years to the date of approval of the application under section 515 of the Federal Food, Drug, and Cosmetic Act or the date a product development protocol was declared completed under section 515(f)(6) of the Act;
(4) By comparing the dates for the ends of the periods obtained pursuant to paragraphs (d)(2) and (d)(3) of this section with each other and selecting the earlier date;
(5) If the original patent was issued after September 24, 1984,
(i) By adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
(ii) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i) of this section with each other and selecting the earlier date;
(6) If the original patent was issued before September 24, 1984, and
(i) If no clinical investigation on humans involving the device was begun or no product development protocol was submitted under section 515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 24, 1984, by —
(A) Adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer and
(B) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this section with each other and selecting the earlier date; or
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(ii) If a clinical investigation on humans involving the device was begun or a product development protocol was submitted under section 515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 24, 1984 and the commercial marketing or use of the product was not approved before September 24, 1984, by
(A) Adding 2 years to the original expiration date of the patent or earlier date set by terminal disclaimer, and
(B) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this section with each other and selecting the earlier date.
[Added, 52 FR 9398, Mar. 24 1987, effective May 26, 1987]
§ 1.778 Calculation of patent term extension for an animal drug product.
(a) If a determination is made pursuant to § 1.750 that a patent for an animal drug is eligible for extension, the term shall be extended by the time as calculated in days in the manner indicated by this section. The patent term extension will run from the original expiration date of the patent or any earlier date set by terminal disclaimer (§ 1.321).
(b) The term of the patent for an animal drug will be extended by the length of the regulatory review period for the drug as determined by the Secretary of Health and Human Services, reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period for an animal drug will be determined by the Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(4)(B), it is the sum of —
(1) The number of days in the period beginning on the earlier of the date a major health or environmental effects test on the drug was initiated or the date an exemption under subsection (j) of section 512 of the Federal Food, Drug, and Cosmetic Act became effective for the approved animal drug and ending on the date an application was initially submitted for such animal drug under section 512 of the Federal Food, Drug, and Cosmetic Act; and
(2) The number of days in the period beginning on the date the application was initially submitted for the approved animal drug under subsection (b) of section 512 of the Federal Food, Drug, and Cosmetic Act and ending on the date such application was approved under such section.
(d) The term of the patent as extended for an animal drug will be determined by —
(1) Subtracting from the number of days determined by the Secretary of Health and Human Services to be in the regulatory review period:
(i) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section that were on and before the date on which the patent issued;
(ii) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section during which it is determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of Health and Human Services that applicant did not act with due diligence;
(iii) One-half the number of days remaining in the period defined by paragraph (c)(1) of this section after that period is reduced in accordance with paragraphs (d)(1)(i) and (ii) of this section; half days will be ignored for purposes of subtraction;
(2) By adding the number of days determined in paragraph (d)(1) of this section to the original term of the patent as shortened by any terminal disclaimer;
(3) By adding 14 years to the date of approval of the application under section 512 of the Federal Food, Drug, and Cosmetic Act;
(4) By comparing the dates for the ends of the periods obtained pursuant to paragraphs (d)(2) and (d)(3) of this section with each other and selecting the earlier date;
(5) If the original patent was issued after November 16, 1988, by —
(i) Adding 5 years to the original expiration date of the patent or any earlier date set by terminal disclaimer; and
(ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i) of this section with each other and selecting the earlier date;
(6) If the original patent was issued before November 16, 1988, and
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(i) If no major health or environmental effects test on the drug was initiated and no request was submitted for an exemption under subsection (j) of section 512 of the Federal Food, Drug, and Cosmetic Act before November 16, 1988, by —
(A) Adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
(B) Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this section with each other and selecting the earlier date; or
(ii) If a major health or environmental effects test was initiated or a request for an exemption under subsection (j) of section 512 of the Federal Food, Drug, and Cosmetic Act was submitted before November 16, 1988, and the application for commercial marketing or use of the animal drug was not approved before November 16, 1988, by —
(A) Adding 3 years to the original expiration date of the patent or earlier date set by terminal disclaimer, and
(B) Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this section with each other and selecting the earlier date.
[Added, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]
§ 1.779 Calculation of patent term extension for a veterinary biological product.
(a) If a determination is made pursuant to § 1.750 that a patent for a veterinary biological product is eligible for extension, the term shall be extended by the time as calculated in days in the manner indicated by this section. The patent term extension will run from the original expiration date of the patent or any earlier date set by terminal disclaimer (§ 1.321).
(b) The term of the patent for a veterinary biological product will be extended by the length of the regulatory review period for the product as determined by the Secretary of Agriculture, reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period for a veterinary biological product will be determined by the Secretary of Agriculture. Under 35 U.S.C. 156(g)(5)(B), it is the sum of —
(1) The number of days in the period beginning on the date the authority to prepare an experimental biological product under the Virus-Serum-ToxinAct became effective and ending on the date an application for a license was submitted under the Virus-Serum-Toxin Act; and
(2) The number of days in the period beginning on the date an application for a license was initially submitted for approval under the Virus-Serum-Toxin Act and ending on the date such license was issued.
(d) The term of the patent as extended for a veterinary biological product will be determined by —
(1) Subtracting from the number of days determined by the Secretary of Agriculture to be in the regulatory review period:
(i) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section that were on and before the date on which the patent issued;
(ii) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section during which it is determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of Agriculture that applicant did not act with due diligence;
(iii) One-half the number of days remaining in the period defined by paragraph (c)(1) of this section after that period is reduced in accordance with paragraphs (d)(1)(i) and (ii) of this section; half days will be ignored for purposes of subtraction;
(2) By adding the number of days determined in paragraph (d)(1) of this section to the original term of the patent as shortened by any terminal disclaimer;
(3) By adding 14 years to the date of the issuance of a license under the Virus-Serum-Toxin Act;
(4) By comparing the dates for the ends of the periods obtained pursuant to paragraphs (d)(2) and (d)(3) of this section with each other and selecting the earlier date;
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(5) If the original patent was issued after November 16, 1988, by —
(i) Adding 5 years to the original expiration date of the patent or any earlier date set by terminal disclaimer; and
(ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i) of this section with each other and selecting the earlier date;
(6) If the original patent was issued before November 16, 1988, and
(i) If no request for the authority to prepare an experimental biological product under the Virus-Serum-Toxin Act was submitted before November 16, 1988, by —
(A) Adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
(B) Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this section with each other and selecting the earlier date; or
(ii) If a request for the authority to prepare an experimental biological product under the Virus-Serum-Toxin Act was submitted before November 16, 1988, and the commercial marketing or use of the product was not approved before November 16, 1988, by —
(A) Adding 3 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
(B) Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this section with each other and selecting the earlier date.
[Added, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]
§ 1.780 Certificate or order of extension of patent term.
If a determination is made pursuant to § 1.750 that a patent is eligible for extension and that the term of the patent is to be extended, a certificate of extension, under seal, or an order granting interim extension under 35 U.S.C. 156(d)(5), will be issued to the applicant for the extension of the patent term. Such certificate or order will be recorded in the
official file of the patent and will be considered as part of the original patent. Notification of the issuance of the certificate or order of extension will be published in the Official Gazette of the United States Patent and Trademark Office. Notification of the issuance of the order granting an interim extension under 35 U.S.C. 156(d)(5), including the identity of the product currently under regulatory review, will be published in the Official Gazette of the United States Patent and Trademark Office and in the Federal Register. No certificate of, or order granting, an extension will be issued if the term of the patent cannot be extended, even though the patent is otherwise determined to be eligible for extension. In such situations, the final determination made pursuant to § 1.750 will indicate that no certificate or order will issue.
[Added, 52 FR 9399, Mar. 24 1987, effective May 26, 1987; para. (a) revised, 60 FR 25615, May 12, 1995, effective July 11, 1995; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§ 1.785 Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product.
(a) Only one patent may be extended for a regulatory review period for any product § 1.720(h). If more than one application for extension of the same patent is filed, the certificate of extension of patent term, if appropriate, will be issued based upon the first filed application for extension.
(b) If more than one application for extension is filed by a single applicant which seeks the extension of the term of two or more patents based upon the same regulatory review period, and the patents are otherwise eligible for extension pursuant to the requirements of this subpart, in the absence of an election by the applicant, the certificate of extension of patent term, if appropriate, will be issued upon the application for extension of the patent term having the earliest date of issuance of those patents for which extension is sought.
(c) If an application for extension is filed which seeks the extension of the term of a patent based upon the same regulatory review period as that relied upon in one or more applications for extension pursuant to the requirements of this subpart, the
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certificate of extension of patent term will be issued on the application only if the patent owner or its agent is the holder of the regulatory approval granted with respect to the regulatory review period.
(d) An application for extension shall be considered complete and formal regardless of whether it contains the identification of the holder of the regulatory approval granted with respect to the regulatory review period. When an application contains such information, or is amended to contain such information, it will be considered in determining whether an application is eligible for an extension under this section. A request may be made of any applicant to supply such information within a non-extendable period of not less than one month whenever multiple applications for extension of more than one patent are received and rely upon the same regulatory review period. Failure to provide such information within the period for reply set shall be regarded as conclusively establishing that the applicant is not the holder of the regulatory approval.
(e) Determinations made under this section shall be included in the notice of final determination of eligibility for extension of the patent term pursuant to § 1.750 and shall be regarded as part of that determination.
[Added, 52 FR 9399, Mar. 24 1987, effective May 26, 1987; para. (b) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; revised, 60 FR 25615, May 12, 1995, effective July 11, 1995; para. (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.790 Interim extension of patent term under 35 U.S.C. 156(d)(5).
(a) An owner of record of a patent or its agent who reasonably expects that the applicable regulatory review period described in paragraph (1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection (g) that began for a product that is the subject of such patent may extend beyond the expiration of the patent term in effect may submit one or more applications for interim extensions for periods of up to one year each. The initial application for interim extension must be filed during the period beginning 6 months and ending 15 days before the patent term is due to expire. Each subsequent application for interim extension must be filed during the period beginning 60 days before
and ending 30 days before the expiration of the preceding interim extension. In no event will the interim extensions granted under this section be longer than the maximum period of extension to which the applicant would be entitled under 35 U.S.C. 156(c).
(b) A complete application for interim extension under this section shall include all of the information required for a formal application under § 1.740 and a complete application under § 1.741. Sections (a)(1), (a)(2), (a)(4), and (a)(6) - (a)(17) of § 1.740 and § 1.741 shall be read in the context of a product currently undergoing regulatory review. Sections (a)(3) and (a)(5) of § 1.740 are not applicable to an application for interim extension under this section.
(c) The content of each subsequent interim extension application may be limited to a request for a subsequent interim extension along with a statement that the regulatory review period has not been completed along with any materials or information required under §§ 1.740 and 1.741 that are not present in the preceding interim extension application.
[Added, 60 FR 25615, May 12, 1995, effective July 11, 1995]
§ 1.791 Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use.
Any interim extension granted under 35 U.S.C. 156(d)(5) terminates at the end of the 60-day period beginning on the date on which the product involved receives permission for commercial marketing or use. If within that 60-day period the patent owner or its agent files an application for extension under §§ 1.740 and 1.741 including any additional information required under 35 U.S.C. 156(d)(1) not contained in the application for interim extension, the patent shall be further extended in accordance with the provisions of 35 U.S.C. 156.
[Added, 60 FR 25615, May 12, 1995, effective July 11, 1995]
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§ 1.791PATENT RULES
Subpart G — Biotechnology Invention Disclosures
DEPOSIT OF BIOLOGICAL MATERIAL
§ 1.801 Biological material.
For the purposes of these regulations pertaining to the deposit of biological material for purposes of patents for inventions under 35 U.S.C. 101, the term biological material shall include material that is capable of self-replication either directly or indirectly. Representative examples include bacteria, fungi including yeast, algae, protozoa, eukaryotic cells, cell lines, hybridomas, plasmids, viruses, plant tissue cells, lichens and seeds. Viruses, vectors, cell organelles and other non-living material existing in and reproducible from a living cell may be deposited by deposit of the host cell capable of reproducing the non-living material.
[Added, 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 1990]
§ 1.802 Need or opportunity to make a deposit.
(a) Where an invention is, or relies on, a biological material, the disclosure may include reference to a deposit of such biological material.
(b) Biological material need not be deposited unless access to such material is necessary for the satisfaction of the statutory requirements for patentability under 35 U.S.C. 112. If a deposit is necessary, it shall be acceptable if made in accordance with these regulations. Biological material need not be deposited, inter alia, if it is known and readily available to the public or can be made or isolated without undue experimentation. Once deposited in a depository complying with these regulations, a biological material will be considered to be readily available even though some requirement of law or regulation of the United States or of the country in which the depository institution is located permits access to the material only under conditions imposed for safety, public health or similar reasons.
(c) The reference to a biological material in a specification disclosure or the actual deposit of such
material by an applicant or patent owner does not create any presumption that such material is necessary to satisfy 35 U.S.C. 112 or that deposit in accordance with these regulations is or was required.
[Added, 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 1990]
§ 1.803 Acceptable depository.
(a) A deposit shall be recognized for the purposes of these regulations if made in
(1) Any International Depositary Authority (IDA) as established under the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure, or
(2) Any other depository recognized to be suitable by the Office. Suitability will be determined by the Director on the basis of the administrative and technical competence, and agreement of the depository to comply with the terms and conditions applicable to deposits for patent purposes. The Director may seek the advice of impartial consultants on the suitability of a depository. The depository must:
(i) Have a continuous existence;
(ii) Exist independent of the control of the depositor;
(iii) Possess the staff and facilities sufficient to examine the viability of a deposit and store the deposit in a manner which ensures that it is kept viable and uncontaminated;
(iv) Provide for sufficient safety measures to minimize the risk of losing biological material deposited with it;
(v) Be impartial and objective;
(vi) Furnish samples of the deposited material in an expeditious and proper manner; and
(vii) Promptly notify depositors of its inability to furnish samples, and the reasons why.
(b) A depository seeking status under paragraph (a)(2) of this section must direct a communication to the Director which shall:
(1) Indicate the name and address of the depository to which the communication relates;
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(2) Contain detailed information as to the capacity of the depository to comply with the requirements of paragraph (a)(2) of this section, including information on its legal status, scientific standing, staff, and facilities;
(3) Indicate that the depository intends to be available, for the purposes of deposit, to any depositor under these same conditions;
(4) Where the depository intends to accept for deposit only certain kinds of biological material, specify such kinds;
(5) Indicate the amount of any fees that the depository will, upon acquiring the status of suitable depository under paragraph (a)(2) of this section, charge for storage, viability statements and furnishings of samples of the deposit.
(c) A depository having status under paragraph (a)(2) of this section limited to certain kinds of biological material may extend such status to additional kinds of biological material by directing a communication to the Director in accordance with paragraph (b) of this section. If a previous communication under paragraph (b) of this section is of record, items in common with the previous communication may be incorporated by reference.
(d) Once a depository is recognized to be suitable by the Director or has defaulted or discontinued its performance under this section, notice thereof will be published in the Official Gazette of the Patent and Trademark Office.
[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 199; paras. (a)(2) & (b)-(d) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 1.804 Time of making an original deposit.
(a) Whenever a biological material is specifically identified in an application for patent as filed, an original deposit thereof may be made at any time before filing the application for patent or, subject to § 1.809, during pendency of the application for patent.
(b) When the original deposit is made after the effective filing date of an application for patent, the applicant must promptly submit a statement from a person in a position to corroborate the fact, stating that the biological material which is deposited is a biological material specifically identified in the application as filed.
[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.805 Replacement or supplement of deposit.
(a) A depositor, after receiving notice during the pendency of an application for patent, application for reissue patent or reexamination proceeding, that the depository possessing a deposit either cannot furnish samples thereof or can furnish samples thereof but the deposit has become contaminated or has lost its capability to function as described in the specification, shall notify the Office in writing, in each application for patent or patent affected. In such a case, or where the Office otherwise learns, during the pendency of an application for patent, application for reissue patent or reexamination proceeding, that the depository possessing a deposit either cannot furnish samples thereof or can furnish samples thereof but the deposit has become contaminated or has lost its capability to function as described in the specification, the need for making a replacement or supplemental deposit will be governed by the same considerations governing the need for making an original deposit under the provisions set forth in § 1.802(b). A replacement or supplemental deposit made during the pendency of an application for patent shall not be accepted unless it meets the requirements for making an original deposit under these regulations, including the requirement set forth under§ 1.804(b). A replacement or supplemental deposit made in connection with a patent, whether or not made during the pendency of an application for reissue patent or a reexamination proceeding or both, shall not be accepted unless a certificate of correction under § 1.323 is requested by the patent owner which meets the terms of paragraphs (b) and (c) of this section.
(b) A request for certificate of correction under this section shall not be granted unless the certificate identifies:
(1) The accession number for the replacement or supplemental deposit;
(2) The date of the deposit; and
(3) The name and address of the depository.
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(c) A request for a certificate of correction under this section shall not be granted unless the request is made promptly after the replacement or supplemental deposit has been made and the request:
(1) Includes a statement of the reason for making the replacement or supplemental deposit;
(2) Includes a statement from a person in a position to corroborate the fact, and stating that the replacement or supplemental deposit is of a biological material which is identical to that originally deposited;
(3) Includes a showing that the patent owner acted diligently —
(i) In the case of a replacement deposit, in making the deposit after receiving notice that samples could no longer be furnished from an earlier deposit; or
(ii) In the case of a supplemental deposit, in making the deposit after receiving notice that the earlier deposit had become contaminated or had lost its capability to function as described in the specification;
(4) Includes a statement that the term of the replacement or supplemental deposit expires no earlier than the term of the deposit being replaced or supplemented; and
(5) Otherwise establishes compliance with these regulations.
(d) A depositor’s failure to replace a deposit, or in the case of a patent, to diligently replace a deposit and promptly thereafter request a certificate of correction which meets the terms of paragraphs (b) and (c) of this section, after being notified that the depository possessing the deposit cannot furnish samples thereof, shall cause the application or patent involved to be treated in any Office proceeding as if no deposit were made.
(e) In the event a deposit is replaced according to these regulations, the Office will apply a rebuttable presumption of identity between the original and the replacement deposit where a patent making reference to the deposit is relied upon during any Office proceeding.
(f) A replacement or supplemental deposit made during the pendency of an application for patent may be made for any reason.
(g) In no case is a replacement or supplemental deposit of a biological material necessary where the biological material, in accordance with § 1.802(b), need not be deposited.
(h) No replacement deposit of a biological material is necessary where a depository can furnish samples thereof but the depository for national security, health or environmental safety reasons is unable to provide samples to requesters outside of the jurisdiction where the depository is located.
(i) The Office will not recognize in any Office proceeding a replacement deposit of a biological material made by a patent owner where the depository could furnish samples of the deposit being replaced.
[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 1.806 Term of deposit.
A deposit made before or during pendency of an application for patent shall be made for a term of at least thirty (30) years and at least five (5) years after the most recent request for the furnishing of a sample of the deposit was received by the depository. In any case, samples must be stored under agreements that would make them available beyond the enforceable life of the patent for which the deposit was made.
[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990]
§ 1.807 Viability of deposit.
(a) A deposit of biological material that is capable of self-replication either directly or indirectly must be viable at the time of deposit and during the term of deposit. Viability may be tested by the depository. The test must conclude only that the deposited material is capable of reproduction. No evidence is necessarily required regarding the ability of the deposited material to perform any function described in the patent application.
(b) A viability statement for each deposit of a biological material defined in paragraph (a) of this section not made under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent
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Procedure must be filed in the application and must contain:
(1) The name and address of the depository;
(2) The name and address of the depositor;
(3) The date of deposit;
(4) The identity of the deposit and the accession number given by the depository;
(5) The date of the viability test;
(6) The procedures used to obtain a sample if the test is not done by the depository; and
(7) A statement that the deposit is capable of reproduction.
(c) If a viability test indicates that the deposit is not viable upon receipt, or the examiner cannot, for scientific or other valid reasons, accept the statement of viability received from the applicant, the examiner shall proceed as if no deposit has been made. The examiner will accept the conclusion set forth in a viability statement issued by a depository recognized under § 1.803(a).
[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990]
§ 1.808 Furnishing of samples.
(a) A deposit must be made under conditions that assure that:
(1) Access to the deposit will be available during pendency of the patent application making reference to the deposit to one determined by the Director to be entitled thereto under § 1.14 and 35 U.S.C. 122, and
(2) Subject to paragraph (b) of this section, all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of the patent.
(b) The depositor may contract with the depository to require that samples of a deposited biological material shall be furnished only if a request for a sample, during the term of the patent:
(1) Is in writing or other tangible form and dated;
(2) Contains the name and address of the requesting party and the accession number of the deposit; and
(3) Is communicated in writing by the depository to the depositor along with the date on which the sample was furnished and the name and address of the party to whom the sample was furnished.
(c) Upon request made to the Office, the Office will certify whether a deposit has been stated to have been made under conditions which make it available to the public as of the issue date of the patent grant provided the request contains:
(1) The name and address of the depository;
(2) The accession number given to the deposit;
(3) The patent number and issue date of the patent referring to the deposit; and
(4) The name and address of the requesting party.
[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 199; para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 1.809 Examination procedures.
(a) The examiner shall determine pursuant to § 1.104 in each application for patent, application for reissue patent or reexamination proceeding if a deposit is needed, and if needed, if a deposit actually made is acceptable for patent purposes. If a deposit is needed and has not been made or replaced or supplemented in accordance with these regulations, the examiner, where appropriate, shall reject the affected claims under the appropriate provision of 35 U.S.C. 112, explaining why a deposit is needed and/or why a deposit actually made cannot be accepted.
(b) The applicant for patent or patent owner shall reply to a rejection under paragraph (a) of this section by—
(1) In the case of an applicant for patent, either making an acceptable original, replacement, or supplemental deposit, or assuring the Office in writing that an acceptable deposit will be made; or, in the case of a patent owner, requesting a certificate of correction of the patent which meets the terms of paragraphs (b) and (c) of § 1.805, or
(2) Arguing why a deposit is not needed under the circumstances of the application or patent considered and/or why a deposit actually made
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should be accepted. Other replies to the examiner’s action shall be considered nonresponsive. The rejection will be repeated until either paragraph (b)(1) of this section is satisfied or the examiner is convinced that a deposit is not needed.
(c) If an application for patent is otherwise in condition for allowance except for a needed deposit and the Office has received a written assurance that an acceptable deposit will be made, the Office may notify the applicant in a notice of allowability and set a three month period of time from the mailing date of the notice of allowability within which the deposit must be made in order to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)).
(d) For each deposit made pursuant to these regulations, the specification shall contain:
(1) The accession number for the deposit;
(2) The date of the deposit;
(3) A description of the deposited biological material sufficient to specifically identify it and to permit examination; and
(4) The name and address of the depository.
(e) Any amendment required by paragraphs (d)(1), (d)(2) or (d)(4) of this section must be filed before or with the payment of the issue fee (see § 1.312).
[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990; paras. (b) and (c) revised and para. (e) added, 66 FR 21092, Apr. 27, 2001, effective May 29, 2001; para. (c) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCES
§ 1.821 Nucleotide and/or amino acid sequence disclosures in patent applications.
(a) Nucleotide and/or amino acid sequences as used in §§ 1.821 through 1.825 are interpreted to mean an unbranched sequence of four or more amino acids or an unbranched sequence of ten or more nucleotides. Branched sequences are specifically excluded from this definition. Sequences with fewer than four specifically defined nucleotides or amino acids are specifically excluded from this
section. “Specifically defined” means those amino acids other than “Xaa” and those nucleotide bases other than “n” defined in accordance with the World Intellectual Property Organization (WIPO) Handbook on Industrial Property Information and Documentation, Standard ST.25: Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in Patent Applications (1998), including Tables 1 through 6 in Appendix 2, herein incorporated by reference. (Hereinafter “WIPO Standard ST.25 (1998)”). This incorporation by reference was approved by the Director of the Federal Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of WIPO Standard ST.25 (1998) may be obtained from the World Intellectual Property Organization; 34 chemin des Colombettes; 1211 Geneva 20 Switzerland. Copies may also be inspected at the National Archives and Records Administration (NARA). For information on the availability of this material at NARA, call 202-741-6030, or go to: http://www.archives.gov/federal_register/ code_of_federal_regulations/ ibr_locations.html . Nucleotides and amino acids are further defined as follows:
(1) Nucleotides: Nucleotides are intended to embrace only those nucleotides that can be represented using the symbols set forth in WIPO Standard ST.25 (1998), Appendix 2, Table 1. Modifications, e.g., methylated bases, may be described as set forth in WIPO Standard ST.25 (1998), Appendix 2, Table 2, but shall not be shown explicitly in the nucleotide sequence.
(2) Amino acids: Amino acids are those L-amino acids commonly found in naturally occurring proteins and are listed in WIPO Standard ST.25 (1998), Appendix 2, Table 3. Those amino acid sequences containing D-amino acids are not intended to be embraced by this definition. Any amino acid sequence that contains post-translationally modified amino acids may be described as the amino acid sequence that is initially translated using the symbols shown in WIPO Standard ST.25 (1998), Appendix 2, Table 3 with the modified positions; e.g., hydroxylations or glycosylations, being described as set forth in WIPO Standard ST.25 (1998), Appendix 2, Table 4, but these modifications shall not be shown explicitly in the amino acid sequence. Any peptide or protein that can be expressed as a sequence using the
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symbols in WIPO Standard ST.25 (1998), Appendix 2, Table 3 in conjunction with a description in the Feature section to describe, for example, modified linkages, cross links and end caps, non-peptidyl bonds, etc., is embraced by this definition.
(b) Patent applications which contain disclosures of nucleotide and/or amino acid sequences, in accordance with the definition in paragraph (a) of this section, shall, with regard to the manner in which the nucleotide and/or amino acid sequences are presented and described, conform exclusively to the requirements of §§ 1.821 through 1.825.
(c) Patent applications which contain disclosures of nucleotide and/or amino acid sequences must contain, as a separate part of the disclosure, a paper or compact disc copy (see § 1.52(e)) disclosing the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of §§ 1.822 and 1.823. This paper or compact disc copy is referred to elsewhere in this subpart as the “Sequence Listing.” Each sequence disclosed must appear separately in the “Sequence Listing.” Each sequence set forth in the “Sequence Listing” must be assigned a separate sequence identifier. The sequence identifiers must begin with 1 and increase sequentially by integers. If no sequence is present for a sequence identifier, the code “000” must be used in place of the sequence. The response for the numeric identifier <160> must include the total number of SEQ ID NOs, whether followed by a sequence or by the code “000.”
(d) Where the description or claims of a patent application discuss a sequence that is set forth in the “Sequence Listing” in accordance with paragraph (c) of this section, reference must be made to the sequence by use of the sequence identifier, preceded by “SEQ ID NO:” in the text of the description or claims, even if the sequence is also embedded in the text of the description or claims of the patent application.
(e) A copy of the “Sequence Listing” referred to in paragraph (c) of this section must also be submitted in computer readable form (CRF) in accordance with the requirements of § 1.824. The computer readable form must be a copy of the “Sequence Listing” and may not be retained as a part of the patent application file. If the computer readable form of a new application is to be identical
with the computer readable form of another application of the applicant on file in the Office, reference may be made to the other application and computer readable form in lieu of filing a duplicate computer readable form in the new application if the computer readable form in the other application was compliant with all of the requirements of this subpart. The new application must be accompanied by a letter making such reference to the other application and computer readable form, both of which shall be completely identified. In the new application, applicant must also request the use of the compliant computer readable “Sequence Listing” that is already on file for the other application and must state that the paper or compact disc copy of the “Sequence Listing” in the new application is identical to the computer readable copy filed for the other application.
(f) In addition to the paper or compact disc copy required by paragraph (c) of this section and the computer readable form required by paragraph (e) of this section, a statement that the “Sequence Listing” content of the paper or compact disc copy and the computer readable copy are the same must be submitted with the computer readable form, e.g., a statement that “the sequence listing information recorded in computer readable form is identical to the written (on paper or compact disc) sequence listing.”
(g) If any of the requirements of paragraphs (b) through (f) of this section are not satisfied at the time of filing under 35 U.S.C. 111(a) or at the time of entering the national stage under 35 U.S.C. 371, applicant will be notified and given a period of time within which to comply with such requirements in order to prevent abandonment of the application. Any submission in reply to a requirement under this paragraph must be accompanied by a statement that the submission includes no new matter.
(h) If any of the requirements of paragraphs (b) through (f) of this section are not satisfied at the time of filing an international application under the Patent Cooperation Treaty (PCT), which application is to be searched by the United States International Searching Authority or examined by the United States International Preliminary Examining Authority, applicant will be sent a notice necessitating compliance with the requirements within a prescribed time period. Any submission in reply to a requirement under this paragraph must be
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accompanied by a statement that the submission does not include matter which goes beyond the disclosure in the international application as filed. If applicant fails to timely provide the required computer readable form, the United States International Searching Authority shall search only to the extent that a meaningful search can be performed without the computer readable form and the United States International Preliminary Examining Authority shall examine only to the extent that a meaningful examination can be performed without the computer readable form.
[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990; para. (h) amended, 58 FR 9335, Jan. 14, 1993, effective May 1, 1993; revised, 63 FR 29620, June 1, 1998, effective July 1, 1998; paras. (c), (e), and (f) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000 (effective date corrected, 65 FR 78958, Dec. 18, 2000); para. (a) revised, 70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005]
§ 1.822 Symbols and format to be used for nucleotide and/or amino acid sequence data.
(a) The symbols and format to be used for nucleotide and/or amino acid sequence data shall conform to the requirements of paragraphs (b) through (e) of this section.
(b) The code for representing the nucleotide and/or amino acid sequence characters shall conform to the code set forth in the tables in WIPO Standard ST.25 (1998), Appendix 2, Tables 1 and 3. This incorporation by reference was approved by the Director of the Federal Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of ST.25 may be obtained from the World Intellectual Property Organization; 34 chemin des Colombettes; 1211 Geneva 20 Switzerland. Copies may also be inspected at the National Archives and Records Administration (NARA). For information on the availability of this material at NARA, call 202-741-6030, or go to: http://www.archives.gov/federal_register/ code_of_federal_regulations/ ibr_locations.html. No code other than that specified in these sections shall be used in nucleotide and amino acid sequences. A modified base or modified or unusual amino acid may be presented in a given sequence as the corresponding unmodified base or amino acid if the modified base or modified or unusual amino acid is one of those listed in WIPO Standard ST.25
(1998), Appendix 2, Tables 2 and 4, and the modification is also set forth in the Feature section. Otherwise, each occurrence of a base or amino acid not appearing in WIPO Standard ST.25 (1998), Appendix 2, Tables 1 and 3, shall be listed in a given sequence as “n” or “Xaa,” respectively, with further information, as appropriate, given in the Feature section, preferably by including one or more feature keys listed in WIPO Standard ST.25 (1998), Appendix 2, Tables 5 and 6.
(c) Format representation of nucleotides.
(1) A nucleotide sequence shall be listed using the lower-case letter for representing the one-letter code for the nucleotide bases set forth in WIPO Standard ST.25 (1998), Appendix 2, Table 1.
(2) The bases in a nucleotide sequence (including introns) shall be listed in groups of 10 bases except in the coding parts of the sequence. Leftover bases, fewer than 10 in number, at the end of noncoding parts of a sequence shall be grouped together and separated from adjacent groups of 10 or 3 bases by a space.
(3) The bases in the coding parts of a nucleotide sequence shall be listed as triplets (codons). The amino acids corresponding to the codons in the coding parts of a nucleotide sequence shall be typed immediately below the corresponding codons. Where a codon spans an intron, the amino acid symbol shall be typed below the portion of the codon containing two nucleotides.
(4) A nucleotide sequence shall be listed with a maximum of 16 codons or 60 bases per line, with a space provided between each codon or group of 10 bases.
(5) A nucleotide sequence shall be presented, only by a single strand, in the 5 to 3 direction, from left to right.
(6) The enumeration of nucleotide bases shall start at the first base of the sequence with number 1. The enumeration shall be continuous through the whole sequence in the direction 5 to 3. The enumeration shall be marked in the right margin, next to the line containing the one-letter codes for the bases, and giving the number of the last base of that line.
(7) For those nucleotide sequences that are circular in configuration, the enumeration method
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set forth in paragraph (c)(6) of this section remains applicable with the exception that the designation of the first base of the nucleotide sequence may be made at the option of the applicant.
(d) Representation of amino acids.
(1) The amino acids in a protein or peptide sequence shall be listed using the three-letter abbreviation with the first letter as an upper case character, as in WIPO Standard ST.25 (1998), Appendix 2, Table 3.
(2) A protein or peptide sequence shall be listed with a maximum of 16 amino acids per line, with a space provided between each amino acid.
(3) An amino acid sequence shall be presented in the amino to carboxy direction, from left to right, and the amino and carboxy groups shall not be presented in the sequence.
(4) The enumeration of amino acids may start at the first amino acid of the first mature protein, with the number 1. When presented, the amino acids preceding the mature protein, e.g., pre-sequences, pro-sequences, pre-pro-sequences and signal sequences, shall have negative numbers, counting backwards starting with the amino acid next to number 1. Otherwise, the enumeration of amino acids shall start at the first amino acid at the amino terminal as number 1. It shall be marked below the sequence every 5 amino acids. The enumeration method for amino acid sequences that is set forth in this section remains applicable for amino acid sequences that are circular in configuration, with the exception that the designation of the first amino acid of the sequence may be made at the option of the applicant.
(5) An amino acid sequence that contains internal terminator symbols ( e.g., “Ter”, “*”, or “.”, etc.) may not be represented as a single amino acid sequence, but shall be presented as separate amino acid sequences.
(e) A sequence with a gap or gaps shall be presented as a plurality of separate sequences, with separate sequence identifiers, with the number of separate sequences being equal in number to the number of continuous strings of sequence data. A sequence that is made up of one or more noncontiguous segments of a larger sequence or segments from different sequences shall be presented as a separate sequence.
[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990; revised, 63 FR 29620, June 1, 1998, effective, July 1, 1998; para. (b) revised, 70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005]
§ 1.823 Requirements for nucleotide and/or amino acid sequences as part of the application.
(a)(1) If the “Sequence Listing” required by § 1.821(c) is submitted on paper: The “Sequence Listing,” setting forth the nucleotide and/or amino acid sequence and associated information in accordance with paragraph (b) of this section, must begin on a new page and must be titled “Sequence Listing.” The pages of the “Sequence Listing” preferably should be numbered independently of the numbering of the remainder of the application. Each page of the “Sequence Listing” shall contain no more than 66 lines and each line shall contain no more than 72 characters. The sheet or sheets presenting a sequence listing may not include material other than part of the sequence listing. A fixed-width font should be used exclusively throughout the “Sequence Listing.”
(2) If the “Sequence Listing” required by § 1.821(c) is submitted on compact disc: The “Sequence Listing” must be submitted on a compact disc in compliance with § 1.52(e). The compact disc may also contain table information if the application contains table information that may be submitted on a compact disc (§ 1.52(e)(1)(iii)). The specification must contain an incorporation-by-reference of the Sequence Listing as required by § 1.52(e)(5). The presentation of the “Sequence Listing” and other materials on compact disc under § 1.821(c) does not substitute for the Computer Readable Form that must be submitted on disk, compact disc, or tape in accordance with § 1.824.
(b) The “Sequence Listing” shall, except as otherwise indicated, include the actual nucleotide and/or amino acid sequence, the numeric identifiers and their accompanying information as shown in the following table. The numeric identifier shall be used only in the “Sequence Listing.” The order and presentation of the items of information in the “Sequence Listing” shall conform to the arrangement given below. Each item of information shall begin on a new line and shall begin with the
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numeric identifier enclosed in angle brackets as shown. The submission of those items of information designated with an “M” is mandatory. The submission of those items of information designated with an “O” is optional. Numeric
identifiers <110> through <170> shall only be set forth at the beginning of the “Sequence Listing.” The following table illustrates the numeric identifiers.
Mandatory (M) or Optional (O)Comments and formatDefinitionNumeric Identifier
M.Preferably max. of 10 names; one name per line; preferable format: Surname, Other Names and/or Initials.
Applicant......................<110>
M..............................................................Title of Invention..........<120> M when filed prior to assignment or appl. number
Personal file reference.........................File Reference...............<130>
M, if available.Specify as: US 07/999,999 or PCT/US96/99999.
Current Application Number.
<140>
M, if available.Specify as: yyyy-mm-dd......................Current Filing Date.......<141> M, if applicable include priority documents under 35 U.S.C. 119 and 120
Specify as: US 07/999,999 or PCT/US96/99999.
Prior Application Number.
<150>
M, if applicableSpecify as: yyyy-mm-dd .....................Prior Application Filing Date.
<151>
M.Count includes total number of SEQ ID NOs.................................................
Number of SEQ ID NOs.
<160>
O.Name of software used to create the Sequence Listing.
Software.......................<170>
M.Response shall be an integer representing the SEQ ID NO shown.
SEQ ID NO:#:..............<210>
M.Respond with an integer expressing the number of bases or amino acid residues.
Length...........................<211>
M.Whether presented sequence molecule is DNA, RNA, or PRT (protein). If a
Type..............................<212>
nucleotide sequence contains both DNA and RNA fragments, the type shall be “DNA.” In addition, the combined DNA/ RNA molecule shall be further described in the <220> to <223> feature section.
M.Scientific name, i.e. Genus/ species, Unknown or Artificial Sequence. In
Organism......................<213>
addition, the “Unknown” or “Artificial Sequence” organisms shall be further described in the <220> to <223> feature section.
M, under the following conditions: if “n,” “Xaa,” or a modified or unusual
Leave blank after <220>. <221-223> provide for a description of points of
Feature..........................<220>
L-amino acid or modified base wasbiological significance in the sequence. used in a sequence; if ORGANISM is
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Mandatory (M) or Optional (O)Comments and formatDefinitionNumeric Identifier
“Artificial Sequence” or “Unknown”; if molecule is combined DNA/RNA. M, under the following conditions: if “n,” “Xaa,” or a modified or unusual
Provide appropriate identifier for feature, preferably from WIPO
Name/Key.....................<221>
L-amino acid or modified base was used in a sequence.
Standard ST.25 (1998), Appendix 2, Tables 5 and 6.
Mandatory (M) or Optional (O)Comments and formatDefinitionNumeric Identifier
M, under the following conditions: if “n,” “Xaa,” or a modified or unusual
Specify location within sequence; where appropriate state number of first and last bases/amino acids in feature.
Location........................<222>
L-amino acid or modified base was used in a sequence. M, under the following conditions: if “n,” “Xaa,” or a modified or unusual
Other relevant information; four lines maximum.............................................
Other Information.........<223>
L-amino acid or modified base was used in a sequence; if ORGANISM is “Artificial Sequence” or “Unknown”; if molecule is combined DNA/RNA. O.Leave blank after <300>Publication Information<300> O.Preferably max. of ten named authors
of publication; specify one name per Authors.........................<301>
line; preferable format: Surname, Other Names and/or Initials.
O..............................................................Title...............................<302> O..............................................................Journal..........................<303> O..............................................................Volume .........................<304> O..............................................................Issue .............................<305> O..............................................................Pages ............................<306> O.Journal date on which data published;
specify as yyyy- mm-dd, MMM-yyyy or Season- yyyy.
Date..............<307>
O.Accession number assigned by database including database name.
Database Accession Number.
<308>
O.Date of entry in database; specify as yyyy-mm-dd or MMM-yyyy.
Database Entry Date........
<309>
O.Document number; for patent-type citations only. Specify as, for example, US 07/ 999,999.
Patent Document Number.
<310>
O.Document filing date, for patent-type citations only; specify as yyyy-mm-dd.
Patent Filing Date..............
<311>
O.Document publication date, for patent-type citations only; specify as yyyy-mm-dd.
Publication Date................
<312>
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Mandatory (M) or Optional (O)Comments and formatDefinitionNumeric Identifier
O.FROM (position) TO (position)...........Relevant Residues............
<313>
M.SEQ ID NO should follow the numeric identifier and should appear
Sequence.......................<400>
on the line preceding the actual sequence.
[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990; revised, 63 FR 29620, June 1, 1998, effective July 1, 1998; heading and para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000 (effective date corrected, 65 FR 78958, Dec. 18, 2000); para. (a)(1) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003]
§ 1.824 Form and format for nucleotide and/or amino acid sequence submissions in computer readable form.
(a) The computer readable form required by § 1.821(e) shall meet the following requirements:
(1) The computer readable form shall contain a single “Sequence Listing” as either a diskette, series of diskettes, or other permissible media outlined in paragraph (c) of this section.
(2) The “Sequence Listing” in paragraph (a)(l) of this section shall be submitted in American Standard Code for Information Interchange (ASCII) text. No other formats shall be allowed.
(3) The computer readable form may be created by any means, such as word processors, nucleotide/amino acid sequence editors’ or other custom computer programs; however, it shall conform to all requirements detailed in this section.
(4) File compression is acceptable when using diskette media, so long as the compressed file is in a self-extracting format that will decompress on one of the systems described in paragraph (b) of this section.
(5) Page numbering must not appear within the computer readable form version of the “Sequence Listing” file.
(6) All computer readable forms must have a label permanently affixed thereto on which has been hand-printed or typed: the name of the applicant, the title of the invention, the date on which the data were recorded on the computer
readable form, the operating system used, a reference number, and an application number and filing date, if known. If multiple diskettes are submitted, the diskette labels must indicate their order ( e.g., “1 of X”).
(b) Computer readable form submissions must meet these format requirements:
(1) Computer Compatibility: IBM PC/XT/AT or Apple Macintosh;
(2) Operating System Compatibility: MS-DOS, MS-Windows, Unix or Macintosh;
(3) Line Terminator: ASCII Carriage Return plus ASCII Line Feed; and
(4) Pagination: Continuous file (no “hard page break” codes permitted).
(c) Computer readable form files submitted may be in any of the following media:
(1) Diskette: 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb storage; 5.25 inch, 1.2 Mb storage; 5.25 inch, 360 Kb storage.
(2) Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 6250 bits per inch, 9 track; Format: Unix tar command; specify blocking factor (not “block size”); Line Terminator: ASCII Carriage Return plus ASCII Line Feed.
(3) 8mm Data Cartridge: Format: Unix tar command; specify blocking factor (not “block size”); Line Terminator: ASCII Carriage Return plus ASCII Line Feed.
(4) Compact disc: Format: ISO 9660 or High Sierra Format.
(5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 640 Mb.
(d) Computer readable forms that are submitted to the Office will not be returned to the applicant.
[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990; revised, 63 FR 29620, June 1, 1998, effective
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July 1, 1998; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000 (effective date corrected, 65 FR 78958, Dec. 18, 2000)]
§ 1.825 Amendments to or replacement of sequence listing and computer readable copy thereof.
(a) Any amendment to a paper copy of the “Sequence Listing” (§ 1.821(c)) must be made by the submission of substitute sheets and include a statement that the substitute sheets include no new matter. Any amendment to a compact disc copy of the “Sequence Listing” (§ 1.821(c)) must be made by the submission of a replacement compact disc (2 copies) in compliance with § 1.52(e). Amendments must also be accompanied by a statement that indicates support for the amendment in the application, as filed, and a statement that the replacement compact disc includes no new matter.
(b) Any amendment to the paper or compact disc copy of the “Sequence Listing,” in accordance with paragraph (a) of this section, must be
accompanied by a substitute copy of the computer readable form (§ 1.821(e)) including all previously submitted data with the amendment incorporated therein, accompanied by a statement that the copy in computer readable form is the same as the substitute copy of the “Sequence Listing.”
(c) Any appropriate amendments to the “Sequence Listing” in a patent; e.g., by reason of reissue or certificate of correction, must comply with the requirements of paragraphs (a) and (b) of this section.
(d) If, upon receipt, the computer readable form is found to be damaged or unreadable, applicant must provide, within such time as set by the Director, a substitute copy of the data in computer readable form accompanied by a statement that the substitute data is identical to that originally filed.
[Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990; revised, 63 FR 29620, June 1, 1998, effective July 1, 1998; paras. (a) and (b) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000 (effective date corrected, 65 FR 78958, Dec. 18, 2000); para. (d) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.825
Subpart H — Inter Partes Reexamination of Patents That Issued From an Original Application Filed in the United States on or After November 29, 1999
PRIOR ART CITATIONS
§ 1.902 Processing of prior art citations during an inter partes reexamination proceeding.
Citations by the patent owner in accordance with § 1.933 and by an inter partes reexamination third party requester under § 1.915 or § 1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citations submitted after the date of an order for reexamination pursuant to § 1.931 by persons other than the patent owner, or the third party requester under either § 1.913 or § 1.948, will be delayed until the inter partes reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.502 for processing of prior art citations in patent and reexamination files during an ex parte reexamination proceeding filed under § 1.510.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
REQUIREMENTS FOR INTER PARTES REEXAMINATION PROCEEDINGS
§ 1.903 Service of papers on parties in inter partes reexamination.
The patent owner and the third party requester will be sent copies of Office actions issued during the inter partes reexamination proceeding. After filing of a request for inter partes reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on every other party in the reexamination proceeding in the manner provided in § 1.248. Any document must reflect service or the document may be refused consideration by the Office. The failure of the patent owner or the third party requester to serve documents may result in their being refused consideration.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.904 Notice of inter partes reexamination in Official Gazette.
A notice of the filing of an inter partes reexamination request will be published in the Official Gazette. The notice published in the Official Gazette under § 1.11(c) will be considered to be constructive notice of the inter partes reexamination
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§ 1.904PATENT RULES
proceeding and inter partes reexamination will proceed.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.905 Submission of papers by the public in inter partes reexamination.
Unless specifically provided for, no submissions on behalf of any third parties other than third party requesters as defined in 35 U.S.C. 100(e) will be considered unless such submissions are in accordance with § 1.915 or entered in the patent file prior to the date of the order for reexamination pursuant to § 1.931. Submissions by third parties, other than third party requesters, filed after the date of the order for reexamination pursuant to § 1.931, must meet the requirements of § 1.501 and will be treated in accordance with § 1.902. Submissions which do not meet the requirements of § 1.501 will be returned.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.906 Scope of reexamination in inter partes reexamination proceeding.
(a) Claims in an inter partes reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112.
(b) Claims in an inter partes reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent.
(c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in an inter partes reexamination proceeding. If such issues are raised by the patent owner or the third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may desire to consider the advisability of filing a reissue application to have such issues considered and resolved.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.907 Inter partes reexamination prohibited.
(a) Once an order to reexamine has been issued under § 1.931, neither the third party requester, nor its privies, may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination certificate is issued under § 1.997, unless authorized by the Director.
(b) Once a final decision has been entered against a party in a civil action arising in whole or in part under 28 U.S.C. 1338 that the party has not sustained its burden of proving invalidity of any patent claim-in-suit, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claim on the basis of issues which that party, or its privies, raised or could have raised in such civil action, and an inter partes reexamination requested by that party, or its privies, on the basis of such issues may not thereafter be maintained by the Office.
(c) If a final decision in an inter partes reexamination proceeding instituted by a third party requester is favorable to patentability of any original, proposed amended, or new claims of the patent, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claims on the basis of issues which that party, or its privies, raised or could have raised in such inter partes reexamination proceeding.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 1.913 Persons eligible to file, and time for filing, a request for inter partes reexamination.
(a) Except as provided for in § 1.907 and in paragraph (b) of this section, any person other than the patent owner or its privies may, at any time during the period of enforceability of a patent which issued from an original application filed in the United States on or after November 29, 1999, file a request for inter partes reexamination by the Office of any claim of the patent on the basis of
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.905
prior art patents or printed publications cited under § 1.501.
(b) Any request for inter partes reexamination submitted on or after September 16, 2012, will not be accorded a filing date, and any such request will not be granted.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; revised, 76 FR 59055, Sept. 23, 2011, effective Sept. 23, 2011]
§ 1.915 Content of request for inter partes reexamination.
(a) The request must be accompanied by the fee for requesting inter partes reexamination set forth in § 1.20(c)(2).
(b) A request for inter partes reexamination must include the following parts:
(1) An identification of the patent by patent number and every claim for which reexamination is requested.
(2) A citation of the patents and printed publications which are presented to provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request.
(3) A statement pointing out, based on the cited patents and printed publications, each showing of a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.
(4) A copy of every patent or printed publication relied upon or referred to in paragraphs (b)(1) through (3) of this section, accompanied by an English language translation of all the necessary and pertinent parts of any non-English language document.
(5) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.
(6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy of the request must be supplied to the Office.
(7) A certification by the third party requester that the estoppel provisions of § 1.907 do not prohibit the inter partes reexamination.
(8) A statement identifying the real party in interest to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy.
(c) If an inter partes request is filed by an attorney or agent identifying another party on whose behalf the request is being filed, the attorney or agent must have a power of attorney from that party or be acting in a representative capacity pursuant to § 1.34.
(d) If the inter partes request does not include the fee for requesting inter partes reexamination required by paragraph (a) of this section and meet all the requirements of paragraph (b) of this section, then the person identified as requesting inter partes reexamination will be so notified and will generally be given an opportunity to complete the request within a specified time. Failure to comply with the notice will result in the inter partes reexamination request not being granted a filing date, and will result in placement of the request in the patent file as a citation if it complies with the requirements of § 1.501.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (d) revised, 71 FR 9260, Feb. 23, 2006, effective Mar. 27, 2006; para. (d) revised, 71 FR 44219, Aug. 4, 2006, effective Aug. 4, 2006; para. (c) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; paras. (b)(2) and (b)(3) revised, 76 FR 59055, Sept. 23, 2011, effective Sept. 23, 2011]
§ 1.919 Filing date of request for inter partes reexamination.
(a) The filing date of a request for inter partes reexamination is the date on which the request satisfies all the requirements for the request set forth in § 1.915.
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§ 1.919PATENT RULES
(b) If the request is not granted a filing date, the request will be placed in the patent file as a citation of prior art if it complies with the requirements of § 1.501.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 71 FR 9260, Feb. 23, 2006, effective Mar. 27, 2006]
§ 1.923 Examiner’s determination on the request for inter partes reexamination.
Within three months following the filing date of a request for inter partes reexamination under § 1.915, the examiner will consider the request and determine whether or not the request and the prior art establish a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request. The examiner’s determination will be based on the claims in effect at the time of the determination, will become a part of the official file of the patent, and will be mailed to the patent owner at the address as provided for in § 1.33(c) and to the third party requester. If the examiner determines that the request has not established a reasonable likelihood that the requester will prevail with respect to at least one of the challenged claims, the examiner shall refuse the request and shall not order inter partes reexamination.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; revised, 76 FR 59055, Sept. 23, 2011, effective Sept. 23, 2011]
§ 1.925 Partial refund if request for inter partes reexamination is not ordered.
Where inter partes reexamination is not ordered, a refund of a portion of the fee for requesting inter partes reexamination will be made to the requester in accordance with § 1.26(c).
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.927 Petition to review refusal to order inter partes reexamination.
The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing to order inter partes reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request has not been established, the determination shall be final and nonappealable.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 76 FR 59055, Sept. 23, 2011, effective Sept. 23, 2011]
INTER PARTES REEXAMINATION OF PATENTS
§ 1.931 Order for inter partes reexamination.
(a) If it is found that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request, the determination will include an order for inter partes reexamination of the patent for resolution of the question of whether the requester will prevail.
(b) If the order for inter partes reexamination resulted from a petition pursuant to § 1.927, the inter partes reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.923.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 76 FR 59055, Sept. 23, 2011, effective Sept. 23, 2011]
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INFORMATION DISCLOSURE IN INTER PARTES REEXAMINATION
§ 1.933 Patent owner duty of disclosure in inter partes reexamination proceedings.
(a) Each individual associated with the patent owner in an inter partes reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability in a reexamination proceeding as set forth in § 1.555(a) and (b). The duty to disclose all information known to be material to patentability in an inter partes reexamination proceeding is deemed to be satisfied by filing a paper in compliance with the requirements set forth in § 1.555(a) and (b).
(b) The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section, and no evaluation will be made by the Office in the reexamination proceeding as to compliance with this section. If questions of compliance with this section are raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.906(c).
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
OFFICE ACTIONS AND RESPONSES (BEFORE THE EXAMINER) IN INTER PARTES REEXAMINATION
§ 1.935 Initial Office action usually accompanies order for inter partes reexamination.
The order for inter partes reexamination will usually be accompanied by the initial Office action on the merits of the reexamination.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.937 Conduct of inter partes reexamination.
(a) All inter partes reexamination proceedings, including any appeals to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office, unless the Director makes a determination that there is good cause for suspending the reexamination proceeding.
(b) The inter partes reexamination proceeding will be conducted in accordance with §§ 1.104 through 1.116, the sections governing the application examination process, and will result in the issuance of an inter partes reexamination certificate under § 1.997, except as otherwise provided.
(c) All communications between the Office and the parties to the inter partes reexamination which are directed to the merits of the proceeding must be in writing and filed with the Office for entry into the record of the proceeding.
(d) A petition in an inter partes reexamination proceeding must be accompanied by the fee set forth in § 1.20(c)(6), except for petitions under § 1.956 to extend the period for response by a patent owner, petitions under § 1.958 to accept a delayed response by a patent owner, petitions under § 1.78 to accept an unintentionally delayed benefit claim, and petitions under § 1.530(l) for correction of inventorship in a reexamination proceeding.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (d) added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]
§ 1.939 Unauthorized papers in inter partes reexamination
(a) If an unauthorized paper is filed by any party at any time during the inter partes reexamination proceeding it will not be considered and may be returned.
(b) Unless otherwise authorized, no paper shall be filed prior to the initial Office action on the merits of the inter partes reexamination.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
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§ 1.939PATENT RULES
§ 1.941 Amendments by patent owner in inter partes reexamination.
Amendments by patent owner in inter partes reexamination proceedings are made by filing a paper in compliance with §§ 1.530(d)-(k) and 1.943.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.943 Requirements of responses, written comments, and briefs in inter partes reexamination.
(a) The form of responses, written comments, briefs, appendices, and other papers must be in accordance with the requirements of § 1.52.
(b) Responses by the patent owner and written comments by the third party requester shall not exceed 50 pages in length, excluding amendments, appendices of claims, and reference materials such as prior art references.
(c) Appellant’s briefs filed by the patent owner and the third party requester shall not exceed thirty pages or 14,000 words in length, excluding appendices of claims and reference materials such as prior art references. All other briefs filed by any party shall not exceed fifteen pages in length or 7,000 words. If the page limit for any brief is exceeded, a certificate is required stating the number of words contained in the brief.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.945 Response to Office action by patent owner in inter partes reexamination.
(a) The patent owner will be given at least thirty days to file a response to any Office action on the merits of the inter partes reexamination.
(b) Any supplemental response to the Office action will be entered only where the supplemental response is accompanied by a showing of sufficient cause why the supplemental response should be entered. The showing of sufficient cause must include:
(1) An explanation of how the requirements of § 1.111(a)(2)(i) are satisfied;
(2) An explanation of why the supplemental response was not presented together with the original response to the Office action; and
(3) A compelling reason to enter the supplemental response.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
§ 1.947 Comments by third party requester to patent owner’s response in inter partes reexamination.
Each time the patent owner files a response to an Office action on the merits pursuant to § 1.945, a third party requester may once file written comments within a period of 30 days from the date of service of the patent owner’s response. These comments shall be limited to issues raised by the Office action or the patent owner’s response. The time for submitting comments by the third party requester may not be extended. For the purpose of filing the written comments by the third party requester, the comments will be considered as having been received in the Office as of the date of deposit specified in the certificate under § 1.8.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.948 Limitations on submission of prior art by third party requester following the order for inter partes reexamination.
(a) After the inter partes reexamination order, the third party requester may only cite additional prior art as defined under § 1.501 if it is filed as part of a comments submission under § 1.947 or § 1.951(b) and is limited to prior art:
(1) which is necessary to rebut a finding of fact by the examiner;
(2) which is necessary to rebut a response of the patent owner; or
(3) which for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination proceeding. Prior art submitted under paragraph (a)(3) of this section must be accompanied by a statement as to when the prior art first became
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.941
known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim.
(b) [Reserved]
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.949 Examiner’s Office action closing prosecution in inter partes reexamination.
Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.951 Options after Office action closing prosecution in inter partes reexamination.
(a) After an Office action closing prosecution in an inter partes reexamination, the patent owner may once file comments limited to the issues raised in the Office action closing prosecution. The comments can include a proposed amendment to the claims, which amendment will be subject to the criteria of § 1.116 as to whether or not it shall be admitted. The comments must be filed within the time set for response in the Office action closing prosecution.
(b) When the patent owner does file comments, a third party requester may once file comments responsive to the patent owner’s comments within 30 days from the date of service of patent owner’s comments on the third party requester.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 1.953 Examiner’s Right of Appeal Notice in inter partes reexamination.
(a) Upon considering the comments of the patent owner and the third party requester subsequent to the Office action closing prosecution in an inter partes reexamination, or upon expiration of the time for submitting such comments, the examiner shall issue a Right of Appeal Notice, unless the examiner reopens prosecution and issues another Office action on the merits.
(b) Expedited Right of Appeal Notice: At any time after the patent owner’s response to the initial Office action on the merits in an inter partes reexamination, the patent owner and all third party requesters may stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability, and may request the issuance of a Right of Appeal Notice. The request must have the concurrence of the patent owner and all third party requesters present in the proceeding and must identify all of the appealable issues and the positions of the patent owner and all third party requesters on those issues. If the examiner determines that no other issues are present or should be raised, a Right of Appeal Notice limited to the identified issues shall be issued.
(c) The Right of Appeal Notice shall be a final action, which comprises a final rejection setting forth each ground of rejection and/or final decision favorable to patentability including each determination not to make a proposed rejection, an identification of the status of each claim, and the reasons for decisions favorable to patentability and/or the grounds of rejection for each claim. No amendment can be made in response to the Right of Appeal Notice. The Right of Appeal Notice shall set a one-month time period for either party to appeal. If no notice of appeal is filed, prosecution in the inter partes reexamination proceeding will be terminated, and the Director will proceed to issue and publish a certificate under § 1.997 in accordance with the Right of Appeal Notice.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (b) and (c) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
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§ 1.953PATENT RULES
INTERVIEWS PROHIBITED IN INTER PARTES REEXAMINATION
§ 1.955 Interviews prohibited in inter partes reexamination proceedings.
There will be no interviews in an inter partes reexamination proceeding which discuss the merits of the proceeding.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
EXTENSIONS OF TIME, TERMINATING OF REEXAMINATION PROSECUTION, AND PETITIONS TO REVIVE IN INTER PARTES REEXAMINATION
§ 1.956 Patent owner extensions of time in inter partes reexamination.
The time for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition set forth in § 1.17(g). See § 1.304(a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
§ 1.957 Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.
(a) If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination, the paper will be refused consideration.
(b) If no claims are found patentable, and the patent owner fails to file a timely and appropriate response in an inter partes reexamination
proceeding, the prosecution in the reexamination proceeding will be a terminated prosecution and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.997 in accordance with the last action of the Office.
(c) If claims are found patentable and the patent owner fails to file a timely and appropriate response to any Office action in an inter partes reexamination proceeding, further prosecution will be limited to the claims found patentable at the time of the failure to respond, and to any claims added thereafter which do not expand the scope of the claims which were found patentable at that time.
(d) When action by the patent owner is a bona fide attempt to respond and to advance the prosecution and is substantially a complete response to the Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, an opportunity to explain and supply the omission may be given.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (b) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
§ 1.958 Petition to revive inter partes reexamination prosecution terminated for lack of patent owner response.
If a response by the patent owner is not timely filed in the Office, a petition may be filed pursuant to § 1.137 to revive a reexamination prosecution terminated under § 1.957(b) or limited under § 1.957(c) if the delay in response was unintentional.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; heading revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
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APPEAL TO THE PATENT TRIAL AND APPEAL BOARD IN INTER PARTES REEXAMINATION
§ 1.959 Appeal in inter partes reexamination.
Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(c) are conducted according to part 41 of this title.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para (f) added, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.961 -1.977 [Reserved]
§ 1.979 Return of Jurisdiction from the Patent Trial and Appeal Board; termination of appeal proceedings.
(a) Jurisdiction over an inter partes reexamination proceeding passes to the examiner after a decision by the Patent Trial and Appeal Board upon transmittal of the file to the examiner, subject to each appellant’s right of appeal or other review, for such further action as the condition of the inter partes reexamination proceeding may require, to carry into effect the decision of the Patent Trial and Appeal Board.
(b) Upon judgment in the appeal before the Patent Trial and Appeal Board, if no further appeal has been taken (§ 1.983), the prosecution in the inter partes reexamination proceeding will be terminated and the Director will issue and publish a certificate under § 1.997 concluding the proceeding. If an appeal to the U.S. Court of Appeals for the Federal Circuit has been filed, that appeal is considered terminated when the mandate is issued by the Court.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (f) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (e) & (f) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; heading and para. (b) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.981 Reopening after a final decision of the Patent Trial and Appeal Board.
When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the inter partes reexamination proceeding will not be reopened or reconsidered by the primary examiner except under the provisions of § 41.77 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
APPEAL TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT IN INTER PARTES REEXAMINATION
§ 1.983 Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination.
(a) The patent owner or third party requester in an inter partes reexamination proceeding who is a party to an appeal to the Patent Trial and Appeal Board and who is dissatisfied with the decision of the Patent Trial and Appeal Board may, subject to § 41.81, appeal to the U.S. Court of Appeals for the Federal Circuit and may be a party to any appeal thereto taken from a reexamination decision of the Patent Trial and Appeal Board.
(b) The appellant must take the following steps in such an appeal:
(1) In the U.S. Patent and Trademark Office, timely file a written notice of appeal directed to the Director in accordance with §§ 1.302 and 1.304;
(2) In the U.S. Court of Appeals for the Federal Circuit, file a copy of the notice of appeal and pay the fee, as provided for in the rules of the U.S. Court of Appeals for the Federal Circuit; and
(3) Serve a copy of the notice of appeal on every other party in the reexamination proceeding in the manner provided in § 1.248.
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§ 1.983PATENT RULES
(c) If the patent owner has filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, the third party requester may cross appeal to the U.S. Court of Appeals for the Federal Circuit if also dissatisfied with the decision of the Patent Trial and Appeal Board.
(d) If the third party requester has filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, the patent owner may cross appeal to the U.S. Court of Appeals for the Federal Circuit if also dissatisfied with the decision of the Patent Trial and Appeal Board.
(e) A party electing to participate in an appellant’s appeal must, within fourteen days of service of the appellant’s notice of appeal under paragraph (b) of this section, or notice of cross appeal under paragraphs (c) or (d) of this section, take the following steps:
(1) In the U.S. Patent and Trademark Office, timely file a written notice directed to the Director electing to participate in the appellant’s appeal to the U.S. Court of Appeals for the Federal Circuit by mail to, or hand service on, the General Counsel as provided in § 104.2;
(2) In the U.S. Court of Appeals for the Federal Circuit, file a copy of the notice electing to participate in accordance with the rules of the U.S. Court of Appeals for the Federal Circuit; and
(3) Serve a copy of the notice electing to participate on every other party in the reexamination proceeding in the manner provided in § 1.248.
(f) Notwithstanding any provision of the rules, in any reexamination proceeding commenced prior to November 2, 2002, the third party requester is precluded from appealing and cross appealing any decision of the Patent Trial and Appeal Board to the U.S. Court of Appeals for the Federal Circuit, and the third party requester is precluded from participating in any appeal taken by the patent owner to the U.S. Court of Appeals for the Federal Circuit.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (a) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; paras. (a), (c), (d), and (f) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
CONCURRENT PROCEEDINGS INVOLVING SAME PATENT IN INTER PARTES REEXAMINATION
§ 1.985 Notification of prior or concurrent proceedings in inter partes reexamination.
(a) In any inter partes reexamination proceeding, the patent owner shall call the attention of the Office to any prior or concurrent proceedings in which the patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings.
(b) Notwithstanding any provision of the rules, any person at any time may file a paper in an inter partes reexamination proceeding notifying the Office of a prior or concurrent proceeding in which the same patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings. Such paper must be limited to merely providing notice of the other proceeding without discussion of issues of the current inter partes reexamination proceeding.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.987 Suspension of inter partes reexamination proceeding due to litigation.
If a patent in the process of inter partes reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the inter partes reexamination proceeding.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.989 Merger of concurrent reexamination proceedings.
(a) If any reexamination is ordered while a prior inter partes reexamination proceeding is pending for the same patent and prosecution in the prior inter
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partes reexamination proceeding has not been terminated, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger is ordered, the merged examination will normally result in the issuance and publication of a single reexamination certificate under § 1.997.
(b) An inter partes reexamination proceeding filed under § 1.913 which is merged with an ex parte reexamination proceeding filed under § 1.510 will result in the merged proceeding being governed by §§ 1.902 through 1.997, except that the rights of any third party requester of the ex parte reexamination shall be governed by §§ 1.510 through 1.560.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
§ 1.991 Merger of concurrent reissue application and inter partes reexamination proceeding.
If a reissue application and an inter partes reexamination proceeding on which an order pursuant to § 1.931 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an inter partes reexamination proceeding is ordered, the merged proceeding will be conducted in accordance with §§ 1.171 through 1.179, and the patent owner will be required to place and maintain the same claims in the reissue application and the inter partes reexamination proceeding during the pendency of the merged proceeding. In a merged proceeding the third party requester may participate to the extent provided under §§ 1.902 through 1.997 and 41.60 through 41.81, except that such participation shall be limited to issues within the scope of inter partes reexamination. The examiner’s actions and any responses by the patent owner or third party requester in a merged proceeding will apply to both the reissue application and the inter partes reexamination proceeding and be physically entered into both files. Any inter partes reexamination proceeding merged with a reissue application shall be concluded by the grant of the reissued patent.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
§ 1.993 Suspension of concurrent interference and inter partes reexamination proceeding.
If a patent in the process of inter partes reexamination is or becomes involved in an interference or trial before the Patent Trial and Appeal Board, the Director may suspend the inter partes reexamination, interference, or trial. The Director will not consider a request to suspend an interference or trial unless a motion under § 41.121(a)(3) of this title to suspend the interference or trial has been presented to, and denied by, an administrative patent judge and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 1.995 Third party requester’s participation rights preserved in merged proceeding.
When a third party requester is involved in one or more proceedings, including an inter partes reexamination proceeding, the merger of such proceedings will be accomplished so as to preserve the third party requester’s right to participate to the extent specifically provided for in these regulations. In merged proceedings involving different requesters, any paper filed by one party in the merged proceeding shall be served on all other parties of the merged proceeding.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
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§ 1.995PATENT RULES
REEXAMINATION CERTIFICATE IN INTER PARTES REEXAMINATION
§ 1.997 Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding.
(a) To conclude an inter partes reexamination proceeding, the Director will issue and publish an inter partes reexamination certificate in accordance with 35 U.S.C.316 setting forth the results of the inter partes reexamination proceeding and the content of the patent following the inter partes reexamination proceeding.
(b) A certificate will be issued and published in each patent in which an inter partes reexamination proceeding has been ordered under § 1.931. Any statutory disclaimer filed by the patent owner will be made part of the certificate.
(c) The certificate will be sent to the patent owner at the address as provided for in § 1.33(c). A copy of the certificate will also be sent to the third party requester of the inter partes reexamination proceeding.
(d) If a certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto.
(e) If the inter partes reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.991, the reissued patent will constitute the reexamination certificate required by this section and 35 U.S.C. 316.
(f) A notice of the issuance of each certificate under this section will be published in the Official Gazette.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; heading and paras. (a), (b), and (d) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
Subpart I — International Design Application
General Information
§ 1.1001 Definitions related to international design applications.
(a) Article as used in this subpart means an article of the Hague Agreement;
(b) Regulations as used in this subpart, when capitalized, means the “Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement”;
(c) Rule as used in this subpart, when capitalized, means one of the Regulations;
(d) Administrative Instructions as used in this subpart means the Administrative Instructions referred to in Rule 34;
(e) 1960 Act as used in this subpart means the Act signed at the Hague on November 28, 1960, of the Hague Agreement;
(f) Other terms and expressions in subpart I not defined in this section are as defined in Article 1, Rule 1, and 35 U.S.C. 381.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1002 The United States Patent and Trademark Office as an office of indirect filing.
(a) The United States Patent and Trademark Office, as an office of indirect filing, shall accept international design applications where the applicant's Contracting Party is the United States.
(b) The major functions of the United States Patent and Trademark Office as an office of indirect filing include:
(1) Receiving and according a receipt date to international design applications;
(2) Collecting and, when required, transmitting fees due for processing international design applications;
(3) Determining compliance with applicable requirements of part 5 of this chapter; and
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(4) Transmitting an international design application to the International Bureau, unless prescriptions concerning national security prevent the application from being transmitted.
[Added,80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1003 The United States Patent and Trademark Office as a designated office.
(a) The United States Patent and Trademark Office will act as a designated office (“United States Designated Office”) for international design applications in which the United States has been designated as a Contracting Party in which protection is sought.
(b) The major functions of the United States Designated Office include:
(1) Accepting for national examination international design applications which satisfy the requirements of the Hague Agreement, the Regulations, and the regulations;
(2) Performing an examination of the international design application in accordance with 35 U.S.C. chapter 16; and
(3) Communicating the results of examination to the International Bureau.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1004 The International Bureau.
(a) The International Bureau is the World Intellectual Property Organization located at Geneva, Switzerland. It is the international intergovernmental organization which acts as the coordinating body under the Hague Agreement and the Regulations.
(b) The major functions of the International Bureau include:
(1) Receiving international design applications directly from applicants and indirectly from an office of indirect filing;
(2) Collecting required fees and crediting designation fees to the accounts of the Contracting Parties concerned;
(3) Reviewing international design applications for compliance with prescribed formal requirements;
(4) Translating international design applications into the required languages for recordation and publication;
(5) Registering international designs in the International Register where the international design application complies with the applicable requirements;
(6) Publishing international registrations in the International Designs Bulletin; and
(7) Sending copies of the publication of the international registration to each designated office.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1005 Display of currently valid control number under the Paperwork ReductionAct.
(a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.), the collection of information in this subpart has been reviewed and approved by the Office of Management and Budget under control number 0651-0075.
(b) Notwithstanding any other provision of law, no person is required to respond to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid Office of Management and Budget control number. This section constitutes the display required by 44 U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of information under Office of Management and Budget control number 0651-0075 ( see 5 CFR 1320.5(b)(2)(ii)(D)).
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
WHO MAY FILE AN INTERNATIONAL DESIGN APPLICATION
§ 1.1011 Applicant for international design application.
(a) Only persons who are nationals of the United States or who have a domicile, a habitual residence,
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§ 1.1011PATENT RULES
or a real and effective industrial or commercial establishment in the territory of the United States may file international design applications through the United States Patent and Trademark Office.
(b) Although the United States Patent and Trademark Office will accept international design applications filed by any person referred to in paragraph (a) of this section, an international design application designating the United States may be refused by the Office as a designated office if the applicant is not a person qualified under 35 U.S.C. chapter 11 to be an applicant.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1012 Applicant’s Contracting Party.
In order to file an international design application through the United States Patent and Trademark Office as an office of indirect filing, the United States must be applicant’s Contracting Party (Articles 4 and 1(xiv)).
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
THE INTERNATIONAL DESIGN APPLICATION
§ 1.1021 Contents of the international design application.
(a) Mandatory contents. The international design application shall be in English, French, or Spanish (Rule 6(1)) and shall contain or be accompanied by:
(1) A request for international registration under the Hague Agreement (Article 5(1)(i));
(2) The prescribed data concerning the applicant (Article 5(1)(ii) and Rule 7(3)(i) and (ii));
(3) The prescribed number of copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international design application, presented in the prescribed manner; however, where the industrial design is two-dimensional and a request for deferment of publication is made in accordance with Article 5(5), the international design application may, instead of
containing reproductions, be accompanied by the prescribed number of specimens of the industrial design (Article 5(1)(iii));
(4) An indication of the product or products that constitute the industrial design or in relation to which the industrial design is to be used, as prescribed (Article 5(1)(iv) and Rule 7(3)(iv));
(5) An indication of the designated Contracting Parties (Article 5(1)(v));
(6) The prescribed fees (Article 5(1)(vi) and Rule 12(1));
(7) The Contracting Party or Parties in respect of which the applicant fulfills the conditions to be the holder of an international registration (Rule 7(3)(iii));
(8) The number of industrial designs included in the international design application, which may not exceed 100, and the number of reproductions or specimens of the industrial designs accompanying the international design application (Rule 7(3)(v));
(9) The amount of the fees being paid and the method of payment, or instructions to debit the required amount of fees to an account opened with the International Bureau, and the identification of the party effecting the payment or giving the instructions (Rule 7(3)(vii)); and
(10) An indication of applicant's Contracting Party as required under Rule 7(4)(a).
(b) Additional mandatory contents required by certain Contracting Parties.
(1) Where the international design application contains the designation of a Contracting Party that requires, pursuant to Article 5(2), any of the following elements, then the international design application shall contain such required element(s):
(i) Indications concerning the identity of the creator of the industrial design that is the subject of that application (Rule 11(1));
(ii) A brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application (Rule 11(2));
(iii) A claim (Rule 11(3)).
(2) Where the international design application contains the designation of a Contracting
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.1012
Party that has made a declaration under Rule 8(1), then the international application shall contain the statement, document, oath or declaration specified in that declaration (Rule 7(4)(c)).
(c) Optional contents. The international design application may contain:
(1) Two or more industrial designs, subject to the prescribed conditions (Article 5(4) and Rule 7(7));
(2) A request for deferment of publication (Article 5(5) and Rule 7(5)(e)) or a request for immediate publication (Rule 17);
(3) An element referred to in item (i) or (ii) of Article 5(2)(b) of the Hague Agreement or in Article 8(4)(a) of the 1960 Act even where that element is not required in consequence of a notification in accordance with Article 5(2)(a) of the Hague Agreement or in consequence of a requirement under Article 8(4)(a) of the 1960 Act (Rule 7(5)(a));
(4) The name and address of applicant’s representative, as prescribed (Rule 7(5)(b));
(5) A claim of priority of one or more earlier filed applications in accordance with Article 6 and Rule 7(5)(c);
(6) A declaration, for purposes of Article 11 of the Paris Convention, that the product or products which constitute the industrial design or in which the industrial design is incorporated have been shown at an official or officially recognized international exhibition, together with the place where the exhibition was held and the date on which the product or products were first exhibited there and, where less than all the industrial designs contained in the international design application are concerned, the indication of those industrial designs to which the declaration relates or does not relate (Rule 7(5)(d));
(7) Any declaration, statement or other relevant indication as may be specified in the Administrative Instructions (Rule 7(5)(f));
(8) A statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned (Rule 7(5)(g));
(9) A proposed translation of any text matter contained in the international design application for purposes of recording and publication (Rule 6(4)).
(d) Required contents where the United States is designated. In addition to the mandatory requirements set forth in paragraph (a) of this section, an international design application that designates the United States shall contain or be accompanied by:
(1) A claim (§§ 1.1021(b)(1)(iii) and 1.1025);
(2) Indications concerning the identity of the creator (i.e., the inventor, see § 1.9(d)) in accordance with Rule 11(1); and
(3) The inventor's oath or declaration (§§ 1.63 and 1.64). The requirements in §§ 1.63(b) and 1.64(b)(4) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, and the requirement in § 1.64(b)(2) to identify the residence and mailing address of the person signing the substitute statement, will be considered satisfied by the presentation of such information in the international design application prior to international registration
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1022 Form and signature.
(a) The international design application shall be presented on the official form (Rules 7(1) and 1(vi)).
(b) The international design application shall be signed by the applicant.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1023 Filing date of an international design application in the United States.
(a) Subject to paragraph (b) of this section, the filing date of an international design application in the United States is the date of international registration determined by the International Bureau under the Hague Agreement (35 U.S.C. 384 and 381(a)(5)).
(b) Where the applicant believes the international design application is entitled under the
Rev. 07.2015, October 2015R-263
§ 1.1023PATENT RULES
Hague Agreement to a filing date in the United States other than the date of international registration, the applicant may petition the Director under this paragraph to accord the international design application a filing date in the United States other than the date of international registration. Such petition must be accompanied by the fee set forth in § 1.17(f) and include a showing to the satisfaction of the Director that the international design application is entitled to such filing date.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1024 The description.
An international design application designating the United States must include a specification as prescribed by 35 U.S.C. 112 and preferably include a brief description of the reproduction pursuant to Rule 7(5)(a) describing the view or views of the reproductions.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1025 The claim.
The specific wording of the claim in an international design application designating the United States shall be in formal terms to the ornamental design for the article (specifying name of article) as shown, or as shown and described. More than one claim is neither required nor permitted for purposes of the United States.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1026 Reproductions.
Reproductions shall comply with the requirements of Rule 9 and Part Four of the Administrative Instructions.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1027 Specimens.
Where a request for deferment of publication has been filed in respect of a two dimensional industrial
design, the international design application may include specimens of the design in accordance with Rule 10 and Part Four of the Administrative Instructions. Specimens are not permitted in an international design application that designates the United States or any other Contracting Party which does not permit deferment of publication.
[Added,80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1028 Deferment of publication.
The international design application may contain a request for deferment of publication, provided the application does not designate the United States or any other Contracting Party which does not permit deferment of publication.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
FEES
§ 1.1031 International design application fees.
(a) International design applications filed through the Office as an office of indirect filing are subject to payment of a transmittal fee (35 U.S.C. 382(b) and Article 4(2)) in the amount of $120.
(b) The Schedule of Fees annexed to the Regulations (Rule 27(1)), a list of individual designation fee amounts, and a fee calculator may be viewed on the Web site of the World Intellectual Property Organization, currently available at http://www.wipo.int/hague.
(c) The following fees required by the International Bureau may be paid either directly to the International Bureau or through the Office as an office of indirect filing in the amounts specified on the World Intellectual Property Organization Web site described in paragraph (b) of this section:
(1) International application fees (Rule 12(1)); and
(2) Fee for descriptions exceeding 100 words (Rule 11(2)).
(d) The fees referred to in paragraph (c) of this section may be paid as follows:
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(1) Directly to the International Bureau in Swiss currency (see Administrative Instruction 801); or
(2) Through the Office as an office of indirect filing, provided such fees are paid no later than the date of payment of the transmittal fee required under paragraph (a) of this section. Any payment through the Office must be in U.S. dollars. Applicants paying the fees in paragraph (c) of this section through the Office may be subject to a requirement by the International Bureau to pay additional amounts where the conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts.
(e) Payment of the fees referred to in Article 17 and Rule 24 for renewing an international registration (“renewal fees”) is not required to maintain a U.S. patent issuing on an international design application in force. Renewal fees, if required, must be submitted directly to the International Bureau. Any renewal fee submitted to the Office will not be transmitted to the International Bureau.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
REPRESENTATION
§ 1.1041 Representation in an international design application.
(a) The applicant may appoint a representative before the International Bureau in accordance with Rule 3.
(b) Applicants of international design applications may be represented before the Office as an office of indirect filing by a practitioner registered (§ 11.6) or granted limited recognition (§ 11.9(a) or (b)) to practice before the Office in patent matters. Such practitioner may act pursuant to § 1.34 or pursuant to appointment by the applicant. The appointment must be in writing signed by the applicant, must give the practitioner power to act on behalf of the applicant, and must specify the name and registration number or limited recognition number of each practitioner. An appointment of a representative made in the international design application pursuant to Rule 3(2) that complies with the requirements of this paragraph will be effective
as an appointment before the Office as an office of indirect filing.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1042 Correspondence respecting international design applications filed with the Office as an office of indirect filing.
The applicant may specify a correspondence address for correspondence sent by the Office as an office of indirect filing. Where no such address has been specified, the Office will use as the correspondence address the address of applicant’s appointed representative (§ 1.1041) or, where no representative is appointed, the address as specified in Administrative Instruction 302.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
TRANSMITTAL OF INTERNATIONAL DESIGN APPLICATION TO THE INTERNATIONAL BUREAU
§ 1.1045 Procedures for transmittal of international design application to the International Bureau.
(a) Subject to paragraph (b) of this section and payment of the transmittal fee set forth in § 1.1031(a), transmittal of the international design application to the International Bureau shall be made by the Office as provided by Rule 13(1). At the same time as it transmits the international design application to the International Bureau, the Office shall notify the International Bureau of the date on which it received the application. The Office shall also notify the applicant of the date on which it received the application and of the transmittal of the international design application to the International Bureau.
(b) No copy of an international design application may be transmitted to the International Bureau, a foreign designated office, or other foreign authority by the Office or the applicant, unless the applicable requirements of part 5 of this chapter have been satisfied.
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§ 1.1045PATENT RULES
(c) Once transmittal of the international design application has been effected under paragraph (a) of this section, except for matters properly before the United States Patent and Trademark Office as an office of indirect filing or as a designated office, all further correspondence concerning the application should be sent directly to the International Bureau. The United States Patent and Trademark Office will generally not forward communications to the International Bureau received after transmittal of the application to the International Bureau. Any reply to an invitation sent to the applicant by the International Bureau must be filed directly with the International Bureau, and not with the Office, to avoid abandonment or other loss of rights under Article 8.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
RELIEF FROM PRESCRIBED TIME LIMITS; CONVERSION TO A DESIGN APPLICATION UNDER 35 U.S.C. CHAPTER 16
§ 1.1051 Relief from prescribed time limits.
(a) If the delay in an applicant's failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application was unintentional, a petition may be filed pursuant to this section to excuse the failure to act as to the United States. A grantable petition pursuant to this section must be accompanied by:
(1) A copy of any invitation sent from the International Bureau setting a prescribed time limit for which applicant failed to timely act;
(2) The reply required under paragraph (c) of this section, unless previously filed;
(3) The fee as set forth in § 1.17(m);
(4) A certified copy of the originally filed international design application, unless a copy of the international design application was previously communicated to the Office from the International Bureau or the international design application was filed with the Office as an office of indirect filing, and a translation thereof into the English language if it was filed in another language;
(5) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional. The Director may require additional information where there is a question whether the delay was unintentional; and
(6) A terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section.
(b) Any request for reconsideration or review of a decision refusing to excuse the applicant’s failure to act within prescribed time limits in connection with requirements pertaining to an international design application upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to excuse or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under the provisions of § 1.136.
(c) Reply. The reply required may be:
(1) The filing of a continuing application. If the international design application has not been subject to international registration, the reply must also include a grantable petition under § 1.1023(b) to accord the international design application a filing date; or
(2) A grantable petition under § 1.1052, where the international design application was filed with the Office as an office of indirect filing.
(d) Terminal disclaimer. Any petition pursuant to this section must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period beginning on the due date for the reply for which applicant failed to timely act and ending on the date of filing of the reply required under paragraph (c) of this section and must also apply to any patent granted on a continuing design application that contains a specific reference under 35 U.S.C. 120, 121, 365(c) or 386(c) to the application for which relief under this section is sought.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
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§ 1.1052 Conversion to a design application under 35 U.S.C. chapter 16.
(a) An international design application designating the United States filed with the Office as an office of indirect filing and meeting the requirements under § 1.53(b) for a filing date for an application for a design patent may, on petition under this section, be converted to an application for a design patent under § 1.53(b) and accorded a filing date as provided therein. A petition under this section must be accompanied by the fee set forth in § 1.17(t) and be filed prior to publication of the international registration under Article 10(3). The conversion of an international design application to an application for a design patent under § 1.53(b) will not entitle applicant to a refund of the transmittal fee or any fee forwarded to the International Bureau, or the application of any such fee toward the filing fee, or any other fee, for the application for a design patent under § 1.53(b). The application for a design patent resulting from conversion of an international design application must also include the basic filing fee (§ 1.16(b)), the search fee (§ 1.16(l)), the examination fee (§ 1.16(p)), the inventor’s oath or declaration (§ 1.63 or 1.64), and a surcharge if required by § 1.16(f).
(b) An international design application will be converted to an application for a design patent under § 1.53(b) if a decision on petition under this section is granted prior to transmittal of the international design application to the International Bureau pursuant to § 1.1045. Otherwise, a decision granting a petition under this section will be effective to convert the international design application to an application for a design patent under § 1.53(b) only for purposes of the designation of the United States.
(c) A petition under this section will not be granted in an abandoned international design application absent a grantable petition under § 1.1051.
(d) An international design application converted under this section is subject to the regulations applicable to a design application filed under 35 U.S.C. chapter 16.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
NATIONAL PROCESSING OF INTERNATIONAL DESIGN APPLICATIONS
§ 1.1061 Rules applicable.
(a) The rules relating to applications for patents for other inventions or discoveries are also applicable to international design applications designating the United States, except as otherwise provided in this chapter or required by the Articles or Regulations.
(b) The provisions of § 1.74, § 1.84, except for § 1.84(c), and §§ 1.152 through 1.154 shall not apply to international design applications.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1062 Examination.
(a) Examination. The Office shall make an examination pursuant to title 35, United States Code, of an international design application designating the United States.
(b) Timing. For each international design application to be examined under paragraph (a) of this section, the Office shall, subject to Rule 18(1)(c)(ii), send to the International Bureau within 12 months from the publication of the international registration under Rule 26(3) a notification of refusal (§ 1.1063) where it appears that the applicant is not entitled to a patent under the law with respect to any industrial design that is the subject of the international registration.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1063 Notification of Refusal.
(a) A notification of refusal shall contain or indicate:
(1) The number of the international registration;
(2) The grounds on which the refusal is based;
(3) A copy of a reproduction of the earlier industrial design and information concerning the earlier industrial design, where the grounds of
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§ 1.1063PATENT RULES
refusal refer to similarity with an industrial design that is the subject of an earlier application or registration;
(4) Where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate; and
(5) A time period for reply under §§ 1.134 and 1.136, where a reply to the notification of refusal is required.
(b) Any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. The requirements of § 1.111 shall apply to a reply to a notification of refusal.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1064 One independent and distinct design.
(a) Only one independent and distinct design may be claimed in a nonprovisional international design application.
(b) If the requirements under paragraph (a) of this section are not satisfied, the examiner shall in the notification of refusal or other Office action require the applicant in the reply to that action to elect one independent and distinct design for which prosecution on the merits shall be restricted. Such requirement will normally be made before any action on the merits but may be made at any time before the final action. Review of any such requirement is provided under §§ 1.143 and 1.144.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1065 Corrections and other changes in the International Register.
(a) The effects of any correction in the International Register by the International Bureau pursuant to Rule 22 in a pending nonprovisional international design application shall be decided by the Office in accordance with the merits of each situation, subject to such other requirements as may be imposed. A patent issuing from an international design application may only be corrected in accordance with the provisions of title 35, United States Code, for correcting patents. Any correction
under Rule 22 recorded by the International Bureau with respect to an abandoned nonprovisional international design application will generally not be acted upon by the Office and shall not be given effect unless otherwise indicated by the Office.
(b) A recording of a partial change in ownership in the International Register pursuant to Rule 21(7) concerning a transfer of less than all designs shall not have effect in the United States.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1066 Correspondence address for a nonprovisional international design application.
(a) Unless the correspondence address is changed in accordance with § 1.33(a), the Office will use as the correspondence address in a nonprovisional international design application the address according to the following order:
(1) The correspondence address under § 1.1042;
(2) The address of applicant’s representative identified in the publication of the international registration; and
(3) The address of the applicant identified in the publication of the international registration.
(b) Reference in the rules to the correspondence address set forth in § 1.33(a) shall be construed to include a reference to this section for a nonprovisional international design application.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1067 Title, description, and inventor’s oath or declaration.
(a) The title of the design must designate the particular article. Where a nonprovisional international design application does not contain a title of the design, the Office may establish a title. No description, other than a reference to the drawing, is ordinarily required in a nonprovisional international design application.
(b) An international design application designating the United States must include the inventor’s oath or declaration. See § 1.1021(d). If
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the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 ( see § 1.136(c)).
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1068 Statement of grant of protection.
Upon issuance of a patent on an international design application designating the United States, the Office may send to the International Bureau a statement to the effect that protection is granted in the United States to those industrial design or designs that are the subject of the international registration and covered by the patent.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1070 Notification of Invalidation.
(a) Where a design patent that was granted from an international design application is invalidated in the United States, and the invalidation is no longer subject to any review or appeal, the patentee shall inform the Office.
(b) After receiving a notification of invalidation under paragraph (a) of this section or through other means, the Office will notify the International Bureau in accordance with Hague Rule 20.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 1.1071 Grant of protection for an industrial design only upon issuance of a patent.
A grant of protection for an industrial design that is the subject of an international registration shall only arise in the United States through the issuance of a patent pursuant to 35 U.S.C. 389(d) or 171, and in accordance with 35 U.S.C. 153.
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
PART 3 — ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
Sec. 3.1 Definitions.
DOCUMENTS ELIGIBLE FOR RECORDING
Sec. 3.11 Documents which will be recorded. 3.16 Assignability of trademarks prior to filing
an allegation of use.
REQUIREMENTS FOR RECORDING
3.21 Identification of patents and patent applications.
3.24 Requirements for documents and cover sheets relating to patents and patent applications.
3.25 Recording requirements for trademark applications and registrations.
3.26 English language requirement. 3.27 Mailing address for submitting documents
to be recorded. 3.28 Requests for recording.
COVER SHEET REQUIREMENTS
3.31 Cover sheet content. 3.34 Correction of cover sheet errors.
FEES
3.41 Recording fees.
DATE AND EFFECT OF RECORDING
3.51 Recording date. 3.54 Effect of recording. 3.56 Conditional assignments. 3.58 Governmental registers.
DOMESTIC REPRESENTATIVE
3.61 Domestic representative.
ACTION TAKEN BY ASSIGNEE
3.71 Prosecution by assignee. 3.71 (pre-AIA) Prosecution by assignee. 3.73 Establishing right of assignee to take
action.
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3.73 (pre-AIA) Establishing right of assignee to take action.
ISSUANCE TO ASSIGNEE
3.81 Issue of patent to assignee. 3.85 Issue of registration to assignee.
§ 3.1 Definitions.
For purposes of this part, the following definitions shall apply:
Application means a national application for patent, an international patent application that designates the United States of America, an international design application that designates the United States of America, or an application to register a trademark under section 1 or 44 of the Trademark Act, 15 U.S.C. 1051, or 15 U.S.C. 1126, unless otherwise indicated.
Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.
Document means a document which a party requests to be recorded in the Office pursuant to § 3.11 and which affects some interest in an application, patent, or registration.
Office means the United States Patent and Trademark Office.
Recorded document means a document which has been recorded in the Office pursuant to§ 3.11.
Registration means a trademark registration issued by the Office.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; definition of "Application" revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
DOCUMENTS ELIGIBLE FOR RECORDING
§ 3.11 Documents which will be recorded.
(a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31, will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31, affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
(b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
(c) A joint research agreement or an excerpt of a joint research agreement will also be recorded as provided in this part.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (c) added, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; para. (c) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 3.16 Assignability of trademarks prior to filing an allegation of use.
Before an allegation of use under either 15 U.S.C. 1051(c) or 15 U.S.C. 1051(d) is filed, an applicant may only assign an application to register a mark under 15 U.S.C. 1051(b) to a successor to the applicant’s business, or portion of the business to
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which the mark pertains, if that business is ongoing and existing.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999]
REQUIREMENTS FOR RECORDING
§ 3.21 Identification of patents and patent applications.
An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number; e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number; e.g., PCT/US2012/012345. An assignment relating to an international design application which designates the United States of America must identify the international design application by the international registration number or by the U.S. application number assigned to the international design application. If an assignment of a patent application filed under § 1.53(b) of this chapter is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under § 1.53(c) of this chapter is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 3.24 Requirements for documents and cover sheets relating to patents and patent applications.
(a) For electronic submissions: Either a copy of the original document or an extract of the original document may be submitted for recording. All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 cm (one-inch) margin must be present on all sides.
(b) For paper or facsimile submissions : Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used. The paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin must be present on all sides. For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable. The Office will not return recorded documents, so original documents must not be submitted for recording.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; heading revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004]
§ 3.25 Recording requirements for trademark applications and registrations.
(a) Documents affecting title. To record documents affecting title to a trademark application or registration, a legible cover sheet (see § 3.31) and one of the following must be submitted:
(1) A copy of the original document;
(2) A copy of an extract from the document evidencing the effect on title; or
(3) A statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.
(b) Name changes. Only a legible cover sheet is required (See § 3.31).
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§ 3.25PATENT RULES
(c) All documents.(1) For electronic submissions : All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1/2 by 11 inches) or 21.0 by 29.7 cm (DIN size A4), a 2.5 cm (one-inch) margin must be present on all sides.
(2) For paper or facsimile submissions : All documents should be submitted on white and non-shiny paper that is either 8 1/2 by 11 inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-inch (2.5 cm) margin on all sides in either case. Only one side of each page may be used. The Office will not return recorded documents, so original documents should not be submitted for recording.
[Added, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004]
§ 3.26 English language requirement.
The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 3.27 Mailing address for submitting documents to be recorded.
Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004]
§ 3.28 Requests for recording.
Each document submitted to the Office for recording must include a single cover sheet (as specified in § 3.31) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]
COVER SHEET REQUIREMENTS
§ 3.31 Cover sheet content.
(a) Each patent or trademark cover sheet required by § 3.28 must contain:
(1) The name of the party conveying the interest;
(2) The name and address of the party receiving the interest;
(3) A description of the interest conveyed or transaction to be recorded;
(4) Identification of the interests involved:
(i) For trademark assignments and trademark name changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the Office received the application; or
(ii) For any other document affecting title to a trademark or patent application, registration or
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patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;
(5) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
(6) The date the document was executed;
(7) The signature of the party submitting the document. For an assignment document or name change filed electronically, the person who signs the cover sheet must either:
(i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’Malley III/) in the signature block on the electronic submission; or
(ii) Sign the cover sheet using some other form of electronic signature specified by the Director.
(8) For trademark assignments, the entity and citizenship of the party receiving the interest. In addition, if the party receiving the interest is a domestic partnership or domestic joint venture, the cover sheet must set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture.
(b) A cover sheet should not refer to both patents and trademarks, since any information, including information about pending patent applications, submitted with a request for recordation of a document against a trademark application or trademark registration will become public record upon recordation.
(c) Each patent cover sheet required by § 3.28 seeking to record a governmental interest as provided by § 3.11(b) must:
(1) Indicate that the document relates to a Government interest; and
(2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see § 3.41(b)).
(d) Each trademark cover sheet required by § 3.28 seeking to record a document against a trademark application or registration should include,
in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document.
(e) Each patent or trademark cover sheet required by § 3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee.
(f) Each trademark cover sheet should include the citizenship of the party conveying the interest.
(g) The cover sheet required by § 3.28 seeking to record a joint research agreement or an excerpt of a joint research agreement as provided by § 3.11(c) must:
(1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form);
(2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form);
(3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and
(4) Indicate the date the joint research agreement was executed.
(h) The assignment cover sheet required by § 3.28 for a patent application or patent will be satisfied by the Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, Patent Law Treaty Model International Request for Recordation of a License/ Cancellation of the Recordation of a License Form, Patent Law Treaty Model Certificate of Transfer Form or Patent Law Treaty Model International Request for Recordation of a Security Interest/ Cancellation of the Recordation of a Security Interest Form, as applicable, except where the assignment is also an oath or declaration under § 1.63 of this chapter. An assignment cover sheet required by § 3.28 must contain a conspicuous indication of an intent to utilize the assignment as an oath or declaration under § 1.63 of this chapter.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; para. (c) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)-(b) revised, paras.
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§ 3.31PATENT RULES
(d)-(e) added, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; para. (a)(7) deleted and para. (a)(8) redesignated as para. (a)(7), 67 FR 79520, Dec. 30, 2002, effective Dec. 30, 2002; paras. (a)(7) & (c)(1) revised and para. (f) added, 69 FR 29865, May 26, 2004, effective June 25, 2004; para (g) added, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; para. (a)(7)(i) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (a)(8) added and para. (f) revised, 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; para. (h) added, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (h) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
§ 3.34 Correction of cover sheet errors.
(a) An error in a cover sheet recorded pursuant to § 3.11 will be corrected only if:
(1) The error is apparent when the cover sheet is compared with the recorded document to which it pertains and
(2) A corrected cover sheet is filed for recordation.
(b) The corrected cover sheet must be accompanied by a copy of the document originally submitted for recording and by the recording fee as set forth in § 3.41.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; para. (b) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004]
FEES
§ 3.41 Recording fees.
(a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for trademarks.
(b) No fee is required for each patent application and patent against which a document required by Executive Order 9424 is to be filed if:
(1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); and
(2) The document and cover sheet are either: Faxed or electronically submitted as prescribed by the Director, or mailed to the Office in compliance with § 3.27.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) amended, 63 FR 48081, Sept. 9, 1998, effective October 9, 1998; para. (a) corrected, 63 FR 52158, Sept. 10, 1998; para. (b)(2) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004]
DATE AND EFFECT OF RECORDING
§ 3.51 Recording date.
The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office. A document which does not comply with the identification requirements of § 3.21 will not be recorded. Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available. The returned papers, stamped with the original date of receipt by the Office, will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of filing of the papers as the date of recording of the document. The procedure set forth in § 1.8 or § 1.10 of this chapter may be used for resubmissions of returned papers to have the benefit of the date of deposit in the United States Postal Service. If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document. The specified period to resubmit the returned papers will not be extended.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 3.54 Effect of recording.
The recording of a document pursuant to § 3.11 is not a determination by the Office of the validity of the document or the effect that document has on the
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title to an application, a patent, or a registration. When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]
§ 3.56 Conditional assignments.
Assignments which are made conditional on the performance of certain acts or events, such as the payment of money or other condition subsequent, if recorded in the Office, are regarded as absolute assignments for Office purposes until cancelled with the written consent of all parties or by the decree of a court of competent jurisdiction. The Office does not determine whether such conditions have been fulfilled.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]
§ 3.58 Governmental registers.
(a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12.
(b) The Office will maintain a Secret Register to record governmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When
the department or agency which submitted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Register.
[Added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
DOMESTIC REPRESENTATIVE
§ 3.61 Domestic representative.
If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 67 FR 79520, Dec. 30, 2002, effective Dec. 30, 2002]
ACTION TAKEN BY ASSIGNEE
§ 3.71 Prosecution by assignee.
[Editor Note: Paras. (a) - (c) below are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]
(a) Patents—conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may conduct prosecution of a national patent application as the applicant under § 1.46 of this title, or conduct prosecution of a supplemental examination or reexamination proceeding, to the exclusion of the inventor or previous applicant or patent owner. Conflicts between purported assignees are handled in accordance with § 3.73(c)(3).
(b) Patents—assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent as the applicant under § 1.46 of this title or a supplemental examination or reexamination proceeding are:
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(1) A single assignee. An assignee of the entire right, title and interest in the application or patent, or
(2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent, who together own the entire right, title and interest in the application or patent. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent. The word "assignee" as used in this chapter means with respect to patent matters the single assignee of the entire right, title and interest in the application or patent if there is such a single assignee, or all of the partial assignees, or all of the partial assignee and inventors who have not assigned their interest in the application or patent, who together own the entire right, title and interest in the application or patent.
(c) Patents—Becoming of record. An assignee becomes of record as the applicant in a national patent application under § 1.46 of this title, and in a supplemental examination or reexamination proceeding, by filing a statement in compliance with § 3.73(c) that is signed by a party who is authorized to act on behalf of the assignee.
(d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee’s trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)-(c) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes to paras. (a)-(c) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 3.71 (pre-AIA) for the rule otherwise in effect.]
§ 3.71 (pre-AIA) Prosecution by assignee.
[Editor Note: Paras. (a) - (c) below are not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]
(a) Patents — conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may, after becoming of record pursuant to paragraph (c) of this section, conduct prosecution of a national patent application or a reexamination proceeding to the exclusion of either the inventive entity, or the assignee(s) previously entitled to conduct prosecution.
(b) Patents — assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are:
(1) A single assignee. An assignee of the entire right, title and interest in the application or patent being reexamined who is of record, or
(2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent being reexamined.
(c) Patents — Becoming of record. An assignee becomes of record either in a national patent application or a reexamination proceeding by filing a statement in compliance with § 3.73(b) that is signed by a party who is authorized to act on behalf of the assignee.
(d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee’s trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
[*See § 3.71 for more information and for paras. (a)-(c) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
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§ 3.73 Establishing right of assignee to take action.
[Editor Note:Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(1) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or
(2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office ( e.g., reel and frame number).
(c)(1) In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The submission of the documentary evidence must be accompanied
by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office ( e.g., reel and frame number).
(2) If the submission is by an assignee of less than the entire right, title and interest ( e.g., more than one assignee exists) the Office may refuse to accept the submission as an establishment of ownership unless:
(i) Each assignee establishes the extent (by percentage) of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties including inventors; or
(ii) Each assignee submits a statement identifying the parties including inventors who together own the entire right, title and interest and stating that all the identified parties own the entire right, title and interest.
(3) If two or more purported assignees file conflicting statements under paragraph (c)(1) of this section, the Director will determine which, if any, purported assignee will be permitted to control prosecution of the application.
(d) The submission establishing ownership under paragraph (b) or (c) of this section must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(1) Including a statement that the person signing the submission is authorized to act on behalf of the assignee;
(2) Being signed by a person having apparent authority to sign on behalf of the assignee; or
(3) For patent matters only, being signed by a practitioner of record.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (b)(1)(i) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
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[*The changes to § 3.73 effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 3.73 (pre-AIA) for the rule otherwise in effect.]
§ 3.73 (pre-AIA) Establishing right of assignee to take action.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]
(a) The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b)(1) In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For trademark matters only, the documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office. For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office ( e.g., reel and frame number).
(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
(c) For patent matters only:
(1) Establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.
(2) If the submission under this section is by an assignee of less than the entire right, title and interest, such assignee must indicate the extent (by percentage) of its ownership interest, or the Office may refuse to accept the submission as an establishment of ownership.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (b)(1)(i) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005.]
[*See § 3.73 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
ISSUANCE TO ASSIGNEE
§ 3.81 Issue of patent to assignee.
(a) With payment of the issue fee: An application may issue in the name of the assignee consistent with the application’s assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office. If the assignment has not been previously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11.
(b) After payment of the issue fee : Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction
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under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17(i) of this chapter.
(c) Partial assignees. (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.
(2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004]
§ 3.85 Issue of registration to assignee.
The certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, provided that the party files a written request in the trademark application by the time the application is being prepared for issuance of the certificate of registration, and the appropriate document is recorded in the Office. If the assignment or name change document has not been recorded in the Office, then the written request must state that the document has been filed for recordation. The address of the assignee must be made of record in the application file.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]
PART 4 — COMPLAINTS REGARDING INVENTION PROMOTERS
Sec. 4.1 Complaints Regarding Invention
Promoters. 4.2 Definitions. 4.3 Submitting Complaints. 4.4 Invention Promoter Reply. 4.5 Notice by Publication. 4.6 Attorneys and Agents.
§ 4.1 Complaints Regarding Invention Promoters.
These regulations govern the Patent and Trademark Office’s (Office) responsibilities under the Inventors’ Rights Act of 1999, which can be found in the U.S. Code at 35 U.S.C. 297. The Act requires the Office to provide a forum for the publication of complaints concerning invention promoters. The Office will not conduct any independent investigation of the invention promoter. Although the Act provides additional civil remedies for persons injured by invention promoters, those remedies must be pursued by the injured party without the involvement of the Office.
[Added, 65 FR 3127, Jan. 20, 2000, effective Jan. 28, 2000]
§ 4.2 Definitions.
(a) Invention Promoter means any person, firm, partnership, corporation, or other entity who offers to perform or performs invention promotion services for, or on behalf of, a customer, and who holds itself out through advertising in any mass media as providing such services, but does not include—
(1) Any department or agency of the Federal Government or of a State or local government;
(2) Any nonprofit, charitable, scientific, or educational organization qualified under applicable State law or described under section 170(b)(1)(A) of the Internal Revenue Code of 1986;
(3) Any person or entity involved in the evaluation to determine commercial potential of, or offering to license or sell, a utility patent or a previously filed nonprovisional utility patent application;
(4) Any party participating in a transaction involving the sale of the stock or assets of a business; or
(5) Any party who directly engages in the business of retail sales of products or the distribution of products.
(b) Customer means any individual who enters into a contract with an invention promoter for invention promotion services.
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(c) Contract for Invention Promotion Services means a contract by which an invention promoter undertakes invention promotion services for a customer.
(d) Invention Promotion Services means the procurement or attempted procurement for a customer of a firm, corporation, or other entity to develop and market products or services that include the invention of the customer.
[Added, 65 FR 3127, Jan. 20, 2000, effective Jan. 28, 2000]
§ 4.3 Submitting Complaints.
(a) A person may submit a complaint concerning an invention promoter with the Office. A person submitting a complaint should understand that the complaint may be forwarded to the invention promoter and may become publicly available. The Office will not accept any complaint that requests that it be kept confidential.
(b) A complaint must be clearly marked, or otherwise identified, as a complaint under these rules. The complaint must include:
(1) The name and address of the complainant;
(2) The name and address of the invention promoter;
(3) The name of the customer;
(4) The invention promotion services offered or performed by the invention promoter;
(5) The name of the mass media in which the invention promoter advertised providing such services;
(6) An explanation of the relationship between the customer and the invention promoter, and
(7) A signature of the complainant.
(c) The complaint should fairly summarize the action of the invention promoter about which the person complains. Additionally, the complaint should include names and addresses of persons believed to be associated with the invention promoter. Complaints, and any replies, must be addressed to: Mail Stop 24, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(d) Complaints that do not provide the information requested in paragraphs (b) and (c) of this section will be returned. If complainant’s address is not provided, the complaint will be destroyed.
(e) No originals of documents should be included with the complaint.
(f) A complaint can be withdrawn by the complainant or the named customer at any time prior to its publication.
[Para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 4.4 Invention Promoter Reply.
(a) If a submission appears to meet the requirements of a complaint, the invention promoter named in the complaint will be notified of the complaint and given 30 days to respond. The invention promoter’s response will be made available to the public along with the complaint. If the invention promoter fails to reply within the 30-day time period set by the Office, the complaint will be made available to the public. Replies sent after the complaint is made available to the public will also be published.
(b) A response must be clearly marked, or otherwise identified, as a response by an invention promoter. The response must contain:
(1) The name and address of the invention promoter;
(2) A reference to a complaint forwarded to the invention promoter or a complaint previously published;
(3) The name of the individual signing the response; and
(4) The title or authority of the individual signing the response.
[Added, 65 FR 3127, Jan. 20, 2000, effective Jan. 28, 2000]
§ 4.5 Notice by Publication.
If the copy of the complaint that is mailed to the invention promoter is returned undelivered, then the Office will publish a Notice of Complaint Received in the Official Gazette, the Federal Register, or on
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the Office’s Internet home page. The invention promoter will be given 30 days from such notice to submit a reply to the complaint. If the Office does not receive a reply from the invention promoter within 30 days, the complaint alone will become publicly available.
[Added, 65 FR 3127, Jan. 20, 2000, effective Jan. 28, 2000]
§ 4.6 Attorneys and Agents.
Complaints against registered patent attorneys and agents will not be treated under this section, unless a complaint fairly demonstrates that invention promotion services are involved. Persons having complaints about registered patent attorneys or agents should contact the Office of Enrollment and Discipline at Mail Stop OED, Director of the United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450, and the attorney discipline section of the attorney’s state licensing bar if an attorney is involved.
[Added, 65 FR 3127, Jan. 20, 2000, effective Jan.28, 2000; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
PART 5 — SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT
AND FILE APPLICATIONS IN FOREIGN COUNTRIES
SECRECY
Sec. 5.1 Applications and correspondence involving
national security. 5.2 Secrecy order. 5.3 Prosecution of application under secrecy
orders; withholding patent. 5.4 Petition for rescission of secrecy order. 5.5 Permit to disclose or modification of
secrecy order. 5.6 [Reserved] 5.7 [Reserved] 5.8 [Reserved]
LICENSES FOR FOREIGN EXPORTINGAND FILING
5.11 License for filing in, or exporting to, a foreign country an application on an
invention made in the United States or technical data relating thereto.
5.12 Petition for license. 5.13 Petition for license; no corresponding
application. 5.14 Petition for license; corresponding U.S.
application. 5.15 Scope of license. 5.16 [Reserved] 5.17 [Reserved] 5.18 Arms, ammunition, and implements of war. 5.19 Export of technical data. 5.20 Export of technical data relating to
sensitive nuclear technology. 5.25 Petition for retroactive license.
GENERAL
5.31 [Reserved] 5.32 [Reserved] 5.33 [Reserved]
SECRECY
§ 5.1 Applications and correspondence involving national security.
(a) All correspondence in connection with this part, including petitions, should be addressed to: Mail Stop L&R, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(b) Definitions.
(1) Application as used in this part includes provisional applications (§ 1.9(a)(2) of this chapter), nonprovisional applications (§ 1.9(a)(3)), international applications (§ 1.9(b)), or international design applications (§ 1.9(n)).
(2) Foreign application as used in this part includes, for filing in a foreign country, foreign patent office, foreign patent agency, or international agency (other than the United States Patent and Trademark Office acting as a Receiving Office for international applications (35 U.S.C. 361, § 1.412) or as an office of indirect filing for international design applications (35 U.S.C. 382, § 1.1002)) any of the following: An application for patent, international application, international design application, or application for the registration of a utility model, industrial design, or model.
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§ 5.1PATENT RULES
(c) Patent applications and documents relating thereto that are national security classified (see § 1.9(i) of this chapter) and contain authorized national security markings ( e.g., “Confidential,” “Secret” or “Top Secret”) are accepted by the Office. National security classified documents filed in the Office must be either hand-carried to Licensing and Review or mailed to the Office in compliance with paragraph (a) of this section.
(d) The applicant in a national security classified patent application must obtain a secrecy order pursuant to § 5.2(a). If a national security classified patent application is filed without a notification pursuant to § 5.2(a), the Office will set a time period within which either the application must be declassified, or the application must be placed under a secrecy order pursuant to § 5.2(a), or the applicant must submit evidence of a good faith effort to obtain a secrecy order pursuant to § 5.2(a) from the relevant department or agency in order to prevent abandonment of the application. If evidence of a good faith effort to obtain a secrecy order pursuant to § 5.2(a) from the relevant department or agency is submitted by the applicant within the time period set by the Office, but the application has not been declassified or placed under a secrecy order pursuant to § 5.2(a), the Office will again set a time period within which either the application must be declassified, or the application must be placed under a secrecy order pursuant to § 5.2(a), or the applicant must submit evidence of a good faith effort to again obtain a secrecy order pursuant to § 5.2(a) from the relevant department or agency in order to prevent abandonment of the application.
(e) An application will not be published under § 1.211 of this chapter or allowed under § 1.311 of this chapter if publication or disclosure of the application would be detrimental to national security. An application under national security review will not be published at least until six months from its filing date or three months from the date the application was referred to a defense agency, whichever is later. A national security classified patent application will not be published under § 1.211 of this chapter or allowed under § 1.311 of this chapter until the application is declassified and any secrecy order under § 5.2(a) has been rescinded.
(f) Applications on inventions made outside the United States and on inventions in which a U.S.
Government defense agency has a property interest will not be made available to defense agencies.
[43 FR 20470, May 11, 1978; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (e) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (b) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 5.2 Secrecy order.
(a) When notified by the chief officer of a defense agency that publication or disclosure of the invention by the granting of a patent would be detrimental to the national security, an order that the invention be kept secret will be issued by the Commissioner for Patents.
(b) Any request for compensation as provided in 35 U.S.C. 183 must not be made to the Patent and Trademark Office, but directly to the department or agency which caused the secrecy order to be issued.
(c) An application disclosing any significant part of the subject matter of an application under a secrecy order pursuant to paragraph (a) of this section also falls within the scope of such secrecy order. Any such application that is pending before the Office must be promptly brought to the attention of Licensing and Review, unless such application is itself under a secrecy order pursuant to paragraph (a) of this section. Any subsequently filed application containing any significant part of the subject matter of an application under a secrecy order pursuant to paragraph (a) of this section must either be hand-carried to Licensing and Review or mailed to the Office in compliance with § 5.1(a).
[24 FR 10381, Dec. 22, 1959; para. (b) revised, paras. (c) and (d) removed, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (c) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 5.3 Prosecution of application under secrecy orders; withholding patent.
Unless specifically ordered otherwise, action on the application by the Office and prosecution by the
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applicant will proceed during the time an application is under secrecy order to the point indicated in this section:
(a) National applications under secrecy order which come to a final rejection must be appealed or otherwise prosecuted to avoid abandonment. Appeals in such cases must be completed by the applicant but unless otherwise specifically ordered by the Commissioner for Patents will not be set for hearing until the secrecy order is removed.
(b) An interference or derivation will not be instituted involving a national application under secrecy order. An applicant whose application is under secrecy order may suggest an interference (§ 41.202(a) of this title), but the Office will not act on the request while the application remains under a secrecy order.
(c) When the national application is found to be in condition for allowance except for the secrecy order the applicant and the agency which caused the secrecy order to be issued will be notified. This notice (which is not a notice of allowance under § 1.311 of this chapter) does not require reply by the applicant and places the national application in a condition of suspension until the secrecy order is removed. When the secrecy order is removed the Patent and Trademark Office will issue a notice of allowance under § 1.311 of this chapter, or take such other action as may then be warranted.
(d) International applications and international design applications under secrecy order will not be mailed, delivered, or otherwise transmitted to the international authorities or the applicant. International applications under secrecy order will be processed up to the point where, if it were not for the secrecy order, record and search copies would be transmitted to the international authorities or the applicant.
[43 FR 20470, May 11, 1978; amended 43 FR 28479, June 30, 1978; para. (b) amended 53 FR 23736, June 23, 1988, effective Sept. 12, 1988; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (d) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 5.4 Petition for rescission of secrecy order.
(a) A petition for rescission or removal of a secrecy order may be filed by, or on behalf of, any principal affected thereby. Such petition may be in letter form, and it must be in duplicate.
(b) The petition must recite any and all facts that purport to render the order ineffectual or futile if this is the basis of the petition. When prior publications or patents are alleged the petition must give complete data as to such publications or patents and should be accompanied by copies thereof.
(c) The petition must identify any contract between the Government and any of the principals under which the subject matter of the application or any significant part thereof was developed or to which the subject matter is otherwise related. If there is no such contract, the petition must so state.
(d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied. Appeal must be taken within sixty days from the date of the denial, and the party appealing, as well as the department or agency which caused the order to be issued, will be notified of the time and place of hearing.
[24 FR 10381, Dec. 22, 1959; paras. (a) and (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 5.5 Permit to disclose or modification of secrecy order.
(a) Consent to disclosure, or to the filing of an application abroad, as provided in 35 U.S.C. 182, shall be made by a “permit” or “modification” of the secrecy order.
(b) Petitions for a permit or modification must fully recite the reason or purpose for the proposed disclosure. Where any proposed disclose is known to be cleared by a defense agency to receive classified information, adequate explanation of such clearance should be made in the petition including the name of the agency or department granting the clearance and the date and degree thereof. The petition must be filed in duplicate.
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§ 5.5PATENT RULES
(c) In a petition for modification of a secrecy order to permit filing abroad, all countries in which it is proposed to file must be made known, as well as all attorneys, agents and others to whom the material will be consigned prior to being lodged in the foreign patent office. The petition should include a statement vouching for the loyalty and integrity of the proposed disclosees and where their clearance status in this or the foreign country is known all details should be given.
(d) Consent to the disclosure of subject matter from one application under secrecy order may be deemed to be consent to the disclosure of common subject matter in other applications under secrecy order so long as the subject matter is not taken out of context in a manner disclosing material beyond the modification granted in the first application.
(e) Organizations requiring consent for disclosure of applications under secrecy order to persons or organizations in connection with repeated routine operation may petition for such consent in the form of a general permit. To be successful such petitions must ordinarily recite the security clearance status of the disclosees as sufficient for the highest classification of material that may be involved.
[24 FR 10381, Dec. 22, 1959; paras. (b) and (e) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 5.6 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 5.7 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 5.8 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
LICENSES FOR FOREIGN EXPORTING AND FILING
§ 5.11 License for filing in, or exporting to, a foreign country an application on an
invention made in the United States or technical data relating thereto.
(a) A license from the Commissioner for Patents under 35 U.S.C. 184 is required before filing any application for patent including any modifications, amendments, or supplements thereto or divisions thereof or for the registration of a utility model, industrial design, or model, in a foreign country, foreign patent office, foreign patent agency, or any international agency (other than the United States Patent and Trademark Office acting as a Receiving Office for international applications (35 U.S.C. 361, § 1.412) or as an office of indirect filing for international design applications (35 U.S.C. 382, § 1.1002)), if the invention was made in the United States, and:
(1) An application on the invention has been filed in the United States less than six months prior to the date on which the application is to be filed; or
(2) No application on the invention has been filed in the United States.
(b) The license from the Commissioner for Patents referred to in paragraph (a) of this section would also authorize the export of technical data abroad for purposes relating to the preparation, filing or possible filing and prosecution of a foreign application without separately complying with the regulations contained in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730 through 774 (Export Administration Regulations of the Bureau of Industry and Security, Department of Commerce), and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy).
(c) Where technical data in the form of a patent application, or in any form, are being exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign application, without the license from the Commissioner for Patents referred to in paragraphs (a) or (b) of this section, or on an invention not made in the United States, the export regulations contained in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730 through 774 (Export Administration Regulations of the Bureau of Industry and Security,
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Department of Commerce), and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy) must be complied with unless a license is not required because a United States application was on file at the time of export for at least six months without a secrecy order under § 5.2 being placed thereon. The term "exported" means export as it is defined in 22 CFR part 120, 15 CFR part 734, and activities covered by 10 CFR part 810.
(d) If a secrecy order has been issued under § 5.2, an application cannot be exported to, or filed in, a foreign country (including an international agency in a foreign country), except in accordance with § 5.5.
(e) No license pursuant to paragraph (a) of this section is required:
(1) If the invention was not made in the United States, or
(2) If the corresponding United States application is not subject to a secrecy order under § 5.2, and was filed at least six months prior to the date on which the application is filed in a foreign country, or
(3) For subsequent modifications, amendments and supplements containing additional subject matter to, or divisions of, a foreign patent application if:
(i) A license is not, or was not, required under paragraph (e)(2) of this section for the foreign application;
(ii) The corresponding United States application was not required to be made available for inspection under 35 U.S.C. 181; and
(iii) Such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181.
(f) A license pursuant to paragraph (a) of this section can be revoked at any time upon written notification by the United States Patent and Trademark Office. An authorization to file a foreign application resulting from the passage of six months from the date of filing of a United States patent application may be revoked by the imposition of a secrecy order.
[49 FR 13461, Apr. 4, 1984; paras. (a) and (e), 56 FR 1924, Jan. 18, 1991, effective Feb. 19, 1991; paras. (b), (c), and (e)(3) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)-(c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (b) and (c) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; paras. (a) through (c), (e)(3)(i) and (f) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 5.12 Petition for license.
(a) Filing of an application on an invention made in the United States will be considered to include a petition for license under 35 U.S.C. 184 for the subject matter of the application. The filing receipt or other official notice will indicate if a license is granted. If the initial automatic petition is not granted, a subsequent petition may be filed under paragraph (b) of this section.
(b) A petition for license must include the fee set forth in § 1.17(g) of this chapter, the petitioner's address, and full instructions for delivery of the requested license when it is to be delivered to other than the petitioner. The petition should be presented in letter form.
[48 FR 2714, Jan. 20, 1983; amended 49 FR 13462, Apr. 4, 1984; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (a) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 5.13 Petition for license; no corresponding application.
If no corresponding national, international design, or international application has been filed in the United States, the petition for license under § 5.12(b) must also be accompanied by a legible copy of the material upon which a license is desired. This copy will be retained as a measure of the license granted.
[43 FR 20471, May 11, 1978; 49 FR 13462, Apr. 4, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
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§ 5.14 Petition for license; corresponding U.S. application.
(a) When there is a corresponding United States application on file, a petition for license under § 5.12(b) must also identify this application by application number, filing date, inventor, and title, but a copy of the material upon which the license is desired is not required. The subject matter licensed will be measured by the disclosure of the United States application.
(b) Two or more United States applications should not be referred to in the same petition for license unless they are to be combined in the foreign or international application, in which event the petition should so state and the identification of each United States application should be in separate paragraphs.
(c) Where the application to be filed or exported abroad contains matter not disclosed in the United States application or applications, including the case where the combining of two or more United States applications introduces subject matter not disclosed in any of them, a copy of the application as it is to be filed or exported abroad, must be furnished with the petition. If, however, all new matter in the application to be filed or exported is readily identifiable, the new matter may be submitted in detail and the remainder by reference to the pertinent United States application or applications.
[43 FR 20471, May 11, 1978; 49 FR 13462, Apr. 4, 1984; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (c) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 5.15 Scope of license.
(a) Applications or other materials reviewed pursuant to §§ 5.12 through 5.14, which were not required to be made available for inspection by defense agencies under 35 U.S.C. 181, will be eligible for a license of the scope provided in this paragraph. This license permits subsequent modifications, amendments, and supplements containing additional subject matter to, or divisions of, a foreign application, if such changes to the application do not alter the general nature of the invention in a manner that would require the United States application to have been made available for inspection under 35 U.S.C. 181. Grant of this license
authorizes the export and filing of an application in a foreign country or to any foreign patent agency or international patent agency when the subject matter of the foreign application corresponds to that of the domestic application. This license includes authority:
(1) To export and file all duplicate and formal application papers in foreign countries or with international agencies;
(2) To make amendments, modifications, and supplements, including divisions, changes or supporting matter consisting of the illustration, exemplification, comparison, or explanation of subject matter disclosed in the application; and
(3) To take any action in the prosecution of the foreign application provided that the adding of subject matter or taking of any action under paragraph (a)(1) or (2) of this section does not change the general nature of the invention disclosed in the application in a manner that would require such application to have been made available for inspection under 35 U.S.C. 181 by including technical data pertaining to:
(i) Defense services or articles designated in the United States Munitions List applicable at the time of foreign filing, the unlicensed exportation of which is prohibited pursuant to the Arms Export Control Act, as amended, and 22 CFR parts 120 through 130; or
(ii) Restricted Data, sensitive nuclear technology or technology useful in the production or utilization of special nuclear material or atomic energy, dissemination of which is subject to restrictions of the Atomic Energy Act of 1954, as amended, and the Nuclear Non- Proliferation Act of 1978, as implemented by the regulations for Assistance to Foreign Atomic Energy Activities, 10 CFR part 810, in effect at the time of foreign filing.
(b) Applications or other materials which were required to be made available for inspection under 35 U.S.C. 181 will be eligible for a license of the scope provided in this paragraph. Grant of this license authorizes the export and filing of an application in a foreign country or to any foreign patent agency or international patent agency. Further, this license includes authority to export and file all duplicate and formal papers in foreign countries or with foreign and international patent agencies and to make amendments, modifications,
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and supplements to, file divisions of, and take any action in the prosecution of the foreign application, provided subject matter additional to that covered by the license is not involved.
(c) A license granted under § 5.12(b) pursuant to § 5.13 or § 5.14 shall have the scope indicated in paragraph (a) of this section, if it is so specified in the license. A petition, accompanied by the required fee (§ 1.17(g) of this chapter), may also be filed to change a license having the scope indicated in paragraph (b) of this section to a license having the scope indicated in paragraph (a) of this section. No such petition will be granted if the copy of the material filed pursuant to § 5.13 or any corresponding United States application was required to be made available for inspection under 35 U.S.C. 181. The change in the scope of a license will be effective as of the date of the grant of the petition.
(d) In those cases in which no license is required to file or export the foreign application, no license is required to file papers in connection with the prosecution of the foreign application not involving the disclosure of additional subject matter.
(e) Any paper filed abroad or transmitted to an international patent agency following the filing of a foreign application that changes the general nature of the subject matter disclosed at the time of filing in a manner that would require such application to have been made available for inspection under 35 U.S.C. 181 or that involves the disclosure of subject matter listed in paragraph (a)(3)(i) or (ii) of this section must be separately licensed in the same manner as a foreign application. Further, if no license has been granted under § 5.12(a) on filing the corresponding United States application, any paper filed abroad or with an international patent agency that involves the disclosure of additional subject matter must be licensed in the same manner as a foreign application.
(f) Licenses separately granted in connection with two or more United States applications may be exercised by combining or dividing the disclosures, as desired, provided:
(1) Subject matter which changes the general nature of the subject matter disclosed at the time of filing or which involves subject matter listed in paragraphs (a)(3) (i) or (ii) of this section is not introduced and,
(2) In the case where at least one of the licenses was obtained under § 5.12(b), additional subject matter is not introduced.
(g) A license does not apply to acts done before the license was granted. See § 5.25 for petitions for retroactive licenses.
[49 FR 13462, Apr. 4, 1984; paras. (a) - (c), (e) and (f), 56 FR 1924, Jan. 18, 1991, effective Feb. 19, 1991; paras. (a)-(c) and (e) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (c) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (a) introductory text and paras. (a)(3), (b), (d), and (e) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 5.16 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 5.17 [Reserved]
[49 FR 13463, Apr. 4, 1984; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 5.18 Arms, ammunition, and implements of war.
(a) The exportation of technical data relating to arms, ammunition, and implements of war generally is subject to the International Traffic in Arms Regulations of the Department of State (22 CFR parts 120 through 130); the articles designated as arms, ammunitions, and implements of war are enumerated in the U.S. Munitions List (22 CFR part 121). However, if a patent applicant complies with regulations issued by the Commissioner for Patents under 35 U.S.C. 184, no separate approval from the Department of State is required unless the applicant seeks to export technical data exceeding that used to support a patent application in a foreign country. This exemption from Department of State regulations is applicable regardless of whether a license from the Commissioner for Patents is required by the provisions of §§ 5.11 and 5.12 (22 CFR part 125).
(b) When a patent application containing subject matter on the Munitions List (22 CFR part 121) is subject to a secrecy order under § 5.2 and a petition is made under § 5.5 for a modification of the secrecy order to permit filing abroad, a separate request to
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§ 5.18PATENT RULES
the Department of State for authority to export classified information is not required (22 CFR part 125).
[35 FR 6430., Apr. 22, 1970; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 5.19 Export of technical data.
(a) Under regulations (15 CFR 734.3(b)(1)(v)) established by the Department of Commerce, a license is not required in any case to file a patent application or part thereof in a foreign country if the foreign filing is in accordance with the regulations (§§ 5.11 through 5.25) of the U.S. Patent and Trademark Office.
(b) An export license is not required for data contained in a patent application prepared wholly from foreign-origin technical data where such application is being sent to the foreign inventor to be executed and returned to the United States for subsequent filing in the U.S. Patent and Trademark Office (15 CFR 734.10(a)).
[45 FR 72654, Nov. 3, 1980; para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]
§ 5.20 Export of technical data relating to sensitive nuclear technology.
Under regulations (10 CFR 810.7) established by the United States Department of Energy, an application filed in accordance with the regulations (§§ 5.11 through 5.25) of the Patent and Trademark Office and eligible for foreign filing under 35 U.S.C. 184, is considered to be information available to the public in published form and a generally authorized activity for the purposes of the Department of Energy regulations.
[49 FR 13463, Apr. 4, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 5.25 Petition for retroactive license.
(a) A petition for retroactive license under 35 U.S.C. 184 shall be presented in accordance with § 5.13 or § 5.14(a), and shall include:
(1) A listing of each of the foreign countries in which the unlicensed patent application material was filed,
(2) The dates on which the material was filed in each country,
(3) A verified statement (oath or declaration) containing:
(i) An averment that the subject matter in question was not under a secrecy order at the time it was filed aboard [sic], and that it is not currently under a secrecy order,
(ii) A showing that the license has been diligently sought after discovery of the proscribed foreign filing, and
(iii) An explanation of why the material was filed abroad through error without the required license under § 5.11 first having been obtained, and
(4) The required fee (§ 1.17(g) of this chapter).
(b) The explanation in paragraph (a) of this section must include a showing of facts rather than a mere allegation of action through error. The showing of facts as to the nature of the error should include statements by those persons having personal knowledge of the acts regarding filing in a foreign country and should be accompanied by copies of any necessary supporting documents such as letters of transmittal or instructions for filing. The acts which are alleged to constitute error should cover the period leading up to and including each of the proscribed foreign filings.
(c) If a petition for a retroactive license is denied, a time period of not less than thirty days shall be set, during which the petition may be renewed. Failure to renew the petition within the set time period will result in a final denial of the petition. A final denial of a petition stands unless a petition is filed under § 1.181 within two months of the date of the denial. If the petition for a retroactive license is denied with respect to the invention of a pending application and no petition under § 1.181 has been filed, a final rejection of the application under 35 U.S.C. 185 will be made.
[49 FR 13463, Apr. 4, 1984; para. (a), 56 FR 1924, Jan. 18, 1991, effective Feb. 19, 1991; para. (c) removed, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(4) revised, para. (b) redesignated as para. (c) and para. (b) added, 69 FR 56481, Sept. 21, 2004, effective Nov.
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22, 2004; paras. (a)(3)(iii) and (b) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
GENERAL
§ 5.31 [Reserved]
[24 FR 10381, Dec. 22, 1959; Redesignated at 49 FR 13463, Apr. 4, 1984; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 5.32 [Reserved]
[24 FR 10381, Dec. 22, 1959; Redesignated at 49 FR 13463, Apr. 4, 1984; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 5.33 [Reserved]
[49 FR 13463, Apr. 4, 1984; amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
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Index I — RULES RELATING TO PATENTS
A
Abandoned applications: Abandonment by failure to reply ........ 1.135 Abandonment after judgment ............ 41.127 Abandonment for failure to pay issue fee ........ ............................................................... 1.316 Express abandonment .......................... 1.138 Processing fee .................................. 1.21(n) Referred to in issued patents ................ 1.14 Revival of ............................................ 1.137 When open to public inspection ............ 1.14
Abandonment of application. (See Abandoned applications.)
Abstract of the disclosure .... 1.72(b) 1.77 1.163 Access to pending applications (limited) .... 1.14 Action by applicant .......... .............. 1.111 1.114 Addresses for correspondence with the United States Patent and Trademark Office .......... .............. 1.1
Deposit account replenishment .... 1.25(c)(3) Director of the United States Patent and Trademark Office .............................. 1.1(a)
Disciplinary Proceedings .......... 1.1(a)(3)(ii) FOIA Officer .................. 102.1(b) 102.4(a) Generally .............................................. 1.1(a) Licensing and Review .......................... 5.1(a) Office of the General Counsel ........ 1.1(a)(3) Office of the Solicitor .............. 1.1(a)(3)(iii) Mail Stops
Mail Stop 8 .................................. 1.1(a)(3) Mail Stop 24 .................................... 4.3(c) Mail Stop Assignment Recordation Services ........................................... 1.1(a)(4)(i) 3.27 Mail Stop Congressional Relations ... 150.6 Mail Stop Document Services ....................... ................................................... 1.1(a)(4)(ii) Mail Stop Ex parte Reexam ........ 1.1(c)(1) Mail Stop Hatch-Waxman PTE ...... 1.1(e) Mail Stop Inter partes Reexam ... 1.1(c)(2) Mail Stop Interference ................ 41.10(b) Mail Stop L&R .................................... 5.1 Mail Stop OED ............................ 1.1(a)(5) Mail Stop PCT ............................................... .................. 1.1(b) 1.417 1.434(a) 1.480(b)
Maintenance fee payments .................. 1.1(d) Patent correspondence ...................... 1.1(a)(1) Patent and Trademark Appeal Board ................ ........................ 1.1(a)(1) 41.10 42.6(b)(2)(ii)
Privacy Officer ............ 102.23(a) 102.24(a) Trademark correspondence .............. 2.190(a)
Adjustment of patent term. (see Patent term adjustment due to examination delay.)
Administrator may make application and receive patent (see Legal Representative)
Admission to practice. (See Attorneys and agents.) Affidavit (See also Oath in patent application):
After appeal ........................................ 41.33 As evidence in a contested case ........ 41.154 Attribution or prior public disclosure under the AIA .................................................... 1.130
To disqualify commonly owned patent or published application as prior art .. 1.131(c)
Traversing rejections or objections ...... 1.132 Agents. (See Attorneys and agents.) Allowance and issue of patent:
Amendment after allowance ................ 1.312 Application abandoned for nonpayment of issue fee ...................................................... 1.316
Deferral of issuance ............................ 1.314 Delayed payment of issue fee .............. 1.137 Delivery of patent ................................ 1.315 Failure to pay issue fee ...... 1.137(c), 1.316 Issuance of patent ................................ 1.314 Notice of allowance ............................ 1.311 Patent to issue upon payment of issue fee ........ .................................................... 1.311 1.314 Patent to lapse if issue fee is not paid in full .... ............................................................... 1.317 Reasons for ...................................... 1.104(e) Withdrawal from issue ........................ 1.313
Amendment: Adding or substituting claims ............ 1.121 After appeal .............................. 41.33 41.63 After decision on appeal, based on new rejection by the Board ........ 41.50(b)(1) 41.77(b)(1)
After final action ................................ 1.116 After final action (transitional procedures) ...... ............................................................... 1.129 After notice of allowance .................... 1.312 Copying claim of another application for interference ...................................... 41.202
Copying claim of issued patent ........ 41.202 Deletions and insertions ...................... 1.121 Drawings ............................................ 1.121 During inter partes review .............................. ........................................... 42.107(d) 42.221 Manner of making .............................. 1.121 Not covered by original oath ................ 1.67 Numbering of claims .......................... 1.126
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Of amendments .................................. 1.121 Of claims ............................................ 1.121 Of disclosure ...................................... 1.121 Of drawing .......................................... 1.121 Of specification .................................. 1.121 Paper and writing .................................. 1.52 Petition from refusal to admit .............. 1.127 Preliminary .......................................... 1.115 Proposed during interference ............................ ................................................ 41.121 41.208 Provisional application ...................... 1.53(c) Reexamination proceedings ............................. ..................................... 1.121(j) 1.530 1.941 Reissue .................................. 1.121(i) 1.173 Requisites of ..................................................... ..................... 1.33 1.111 1.116 1.121 1.125 Right to amend .............. 1.111 1.116 1.127 Signature to .......................................... 1.33 Substitute specification ...................... 1.125 Time for .............................................. 1.134 To applications in interference .......... 41.121 To correct inaccuracies ........................ 1.121 To correspond to original drawing or specification ...................................... 1.121
To reissues. .......................................... 1.173 To save from abandonment .................. 1.135 Within appeal brief ........................................... .................................. 41.37(c)(2) 41.41(b)(1)
Amino acid sequences. (See Nucleotide and/or amino acid sequences.)
Appeals: Civil Actions under 35 U.S.C. 145 or 146 ........ ................................................................. 90.3 To Court of Appeals for the Federal Circuit:
Fee provided by rules of court ............ 90.2 From the Patent Trial and Appeal Board ....... ...................................................... 90.1 90.3 Notice and service .............................. 90.2 Time for filing notice of appeal .......... 90.3
To the Patent Trial and Appeal Board Affidavits after appeal .......... 41.33 41.63 Briefs .... 41.37 41.41 41.67 41.68 41.71 Decision/Action by Board .... 41.50 41.77
Return of jurisdiction to examiner ........... ................................ 1.979 41.54 41.81 Termination of proceedings ..................... ....................................... 1.197(b) 42.72 Ex parte appeals ............ 41.30 41.54
Examiner’s answer ................ 41.39 41.69 Fees ........................................ 41.20 41.45 Hearing of .................. 41.47 41.73 42.70
Inter partes reexamination .... 41.61 41.81 New grounds of rejection ............................... .................... 41.39(a)(2) 41.50(b) 41.69(b)
.................................. 41.71(c)(3) 41.77(b) Notice of appeal .................... 41.31 41.61 Public inspection or publication of decisions .................................................... 41.6 42.14 Rehearing ....................................................... ......... 41.50(b)(2) 41.52 41.79 41.77(b)(2) Reopening after final Board decision ............ ............................................................. 1.198 Sanctions .............................. 41.128 42.12 What may be appealed .......... 41.31 41.61 Who may appeal .................... 41.31 41.61
Applicant for patent: Assignee or obligated assignee .............. 1.46 Correspondence address ...................... 1.33 Daytime telephone number .................. 1.33 Deceased or legally incapacitated inventor ...... ...................................................... 1.43 1.422 In a continued prosecution application ............ .......................................... 1.53(b) 1.53(d)(4) In an international application .. 1.421 1.424 Informed of application number ...... 1.54(b) Inventorship in a provisional application ........ ........................................................... 41.41(c) Legal Representative .............................. 1.43 Legal Representative ............................ 1.43 Mailing address and residence of inventors may be provided in oath/declaration or in application data sheet .................................. 1.63 1.76
Must be represented by a patent practitioner if juristic entity ........................................ 1.31
Person making oath or declaration .................. ................................................ 1.64 (pre-AIA) Personal attendance unnecessary ............ 1.2 Required to conduct business with decorum and courtesy ................................................ 1.3
Required to report assistance received .... 1.4 Who may apply for a patent ........ 1.41 1.48
Application Data sheet .............. .................. 1.76 Application for patent (See also Abandoned applications, Claims, Drawing, Examination of applications, Provisional applications, Publication of application, Published application, Reissues, Specification):
Access to .............................................. 1.14 Acknowledgment of filing ................ 1.54(b) Alteration ...................... 1.52(c) 1.53(d)(5) Application number and filing date ...... 1.54 Arrangement .......................................... 1.77
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Compact disc submissions (see Electronic documents)
Confidentiality of applications .............. 1.14 Continuation or division, reexecution not required ................................................ 1.63
Continued prosecution application .... 1.53(d) Filed by facsimile .......................... 1.6 1.8
Copies of, furnished to applicants ........ 1.59 Cross-references to related applications ........... ................................................................. 1.78 Deceased or legally incapacitated inventor ...... ................................................................. 1.43 Declaration ............................................ 1.68 Duty of disclosure ................................ 1.56 Examined only when complete ........................ ....................................... 1.53 (pre-AIA) 1.53 Filed by other than inventor ............................. ............................................... 1.42 1.43 1.46 Filing date ...................... 1.53(pre-plt(AIA)) Filing requirements ........ 1.53(pre-plt(AIA)) Foreign language oath or declaration .... 1.69 Formulas and tables .............................. 1.58 General requisites .................................. 1.51 Identification required in letters concerning .... ................................................................... 1.5 Incomplete application not forwarded for examination .................. 1.53(pre-plt(AIA))
Interlineations, etc., to be indicated ...... 1.52 Involving national security .................... 5.1 Language, paper, writing, margin .......... 1.52 Later filing of oath and filing fee ..................... ................................................ 1.53 (pre-AIA) Missing pages when application filed .............. ............................................................. 1.53(e) Naming of inventors:
Application data sheet .............. 1.76(b)(1) In a continued prosecution application ......... ..................................................... 1.53(d)(4) In a provisional application .......................... ................................... 1.41(c) 1.51(c)(1)(ii) In an international application ........ 1.421
National stage ............................ 1.497 Inconsistencies between application data sheet and oath or declaration ................ 1.76(d)
Joint inventors .................................... 1.45 Oath/declaration. ............................ 1.63(a)
Non-English language .......................... 1.52 Nonpublication request ...................... 1.213 Numbering of claims .......................... 1.126 Numbering of paragraphs .......... 1.52 1.125
Original disclosure not expunged .................... ........................................................ 1.59(a)(2) Parts filed separately ............................ 1.54 Parts of application desirably filed together ..... ................................................................. 1.54 Parts of complete application ................ 1.51 Processing fees ...................................... 1.17 Provisional application .......... 1.9 1.51 1.53 Publication of .......................... 1.211 1.219 Published .................................... 1.9 1.215 Relating to atomic energy ...................... 1.14 Reservation for future application not permitted ................................................................. 1.79 Secrecy order .................................... 5.1 5.5 Status information ................................ 1.14 Tables and formulas .............................. 1.58 Third party submission in .................... 1.290 To contain but one invention unless connected ............................................................... 1.141 To whom made ...................................... 1.51 Two or more by same party with conflicting claims .................................................. 1.78
Application number ...... .......... 1.5(a) 1.53 1.54 Arbitration award filing ............ ................ 1.335 Arbitration in a contested case before the Board .... ....................................................... 41.126 42.410 Assignee:
Correspondence held with assignee(s) of entire interest ........................................ 3.71 3.73
Establishing ownership .................... 3.73(b) May conduct prosecution of application .......... ........................................................ 3.71 3.73 May make application for patent .......... 1.46 May take action in Board proceeding .... 41.9 Must consent to application for reissue of patent .................................................... 1.171 1.172 Partial assignee(s) ...... 1.46 3.71 3.73 3.81
Assignments and recording: Abstracts of title, fee for .............. 1.19(b)(5) Conditional assignments ...................... 3.56 Cover sheet required .................... 3.28 3.31
Corrections .......................................... 3.34 Date of receipt is date of record ............ 3.51 Effect of recording ................................ 3.54 Fees .................................................. 1.21(h) Formal requirements .................... 3.21 3.28 If recorded before payment of issue fee, patent may issue to assignee .......................... 3.81
Impact on entitlement to micro entity status .... ................................................................. 1.29 Impact on small entity status ................ 1.27
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Joint research agreements .... 3.11(c) 3.31(g) Mailing address for submitting documents ...... ................................................................. 3.27 May serve as inventor’s oath or declaration ..... ............................................................. 1.63(e) Must be recorded in Patent and Trademark Office to issue patent to assignee .................... 3.81
Must identify patent or application ...... 3.21 Orders for copies of .............................. 1.12 Patent may issue to assignee ................ 3.81 Recording of assignments .................... 3.11 Records open to public inspection ........ 1.12 Requirements for recording .......... 3.21 3.41 What will be accepted for recording .... 3.11
Atomic energy applications reported to Department of Energy .................................................... 1.14
Attorneys and agents: Acting in representative capacity .. 1.33 1.34 Assignment will not operate as a revocation of power .................................................. 1.36
Certificate of good standing .............. 1.21(a) Complaints .............................................. 4.6 Office cannot aid in selection of ............ 1.31 Personal interviews with examiners .... 1.133 Power of attorney ................................ 1.32 Power to inspect .................................. 1.14 Representative capacity ................ 1.33 1.34 Registration fees ................................ 1.21(a) Required to conduct business with decorum and courtesy .................................................. 1.3
Revocation of power ........................ 1.36(a) Signature and certificate of attorney ................ ........................................................ 1.4 11.18 Withdrawal of ...................... 1.36(b) 41.5(c)
Authorization of agents. (See Attorneys and agents.) Award in arbitration ............... ................... 1.335
B
Balance in deposit account .......................... 1.25 Basic filing fee .................... ........................ 1.16 Benefit of earlier application ......... ............. 1.78 Biological material. (See Deposit of biological material.)
Briefs: In petitions to Director .................... 1.181(b) On appeal to Board ........................................... ................... 41.37 41.41 41.67 41.68 41.71
Business tobeconductedwithdecorumandcourtesy .......................................................................... 1.3 Business to be transacted in writing .............. 1.2
C
Certificate of correction .................. 1.322 1.323 Fees .................................................. 1.20(a) Mistakes not corrected ........................ 1.325
Certificate of mailing (First Class) or transmission .......................................................................... 1.8 Certification effect of presentation to Office .......... .......................................................... 1.4(d) 11.18 Certified copies of records, papers, etc. .................. ............................................................. 1.4(f) 1.13
Fee for certification ...................... 1.19(b)(4) Chemical and mathematical formulae and tables ... ........................................................................ 1.58 Citation of prior art in patented file ... ....... 1.501 Citation of references ............................ 1.104(d) Civil action (time for commencing under 35 U.S.C. 145 or 146) ........................................ 90.3(a)(3)
Claims (See also Examination of applications): Amendment of ................................ 1.121(c) Commence on separate sheet or electronic page
...................................... 1.52(b)(3) 1.75(h) Conflicting, same applicant or owner ............... ....................................................... 1.78(e), (f) Dependent .............................................. 1.75 Design patent ...................................... 1.153 Effective filing date of (under AIA) .... 1.109 May be in dependent form ................ 1.75(c) More than one permitted .................. 1.75(b) Multiple dependent .......................... 1.75(c) Must conform to invention and specification ... ............................................................ 1.75(d) Notice of rejection of .......................... 1.104 Numbering of ...................................... 1.126 Part of complete application ...... 1.51(b)(1) Plant patent. ........................................ 1.164 Rejection of ........................................ 1.104 Required ............................................ 1.75(a) Separate from other parts of application .......... ............................................................ 1.75(h) Twice rejected before appeal ...... 41.31(a)(1)
Color drawing ........ ............ 1.6(d)(4) 1.84(a)(2) Commissioner of Patents and Trademarks (See Director of the USPTO.)
Common ownership, statement by assignee may be required .............................................. 1.104(c)
Compact disc submissions. (See Electronic documents.)
Complaints against examiners, how presented ....... .......................................................................... 1.3
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PATENT RULES
Complaints regarding invention promoters (See Invention promoters.)
Composition of matter, specimens of ingredients may be required .................................................. 1.93
Computer program listing appendix ............ 1.96 Concurrent office proceedings ................................ . 1.178(b) 1.565(a) 1.610(b)(3) 1.620(d) 1.985 1.995 Conflicting claims, same applicant or owner in two or more applications ........................ 1.78(e) (f)
Contested cases before the Patent Trial and Appeal Board .................. ...................... 41.100 41.158
Continued examination, request for ... ....... 1.114 Fee .................................................... 1.17(e) Suspension of action after .................. 1.103
Continued prosecution application .......... 1.53(d) Suspension of action in .................. 1.103(c)
Continuing application for invention disclosed and claimed in prior application .......... 1.53 1.63(d)
Control number, display of ........................ 1.419 Copies of patents, published applications, records, etc. ............................................ 1.11 1.12 1.13
Copies of records, fees .............. 1.19(b) 1.59(c) Copyright notice in specification ............ 1.71(d) Copyright notice on drawings .................. 1.84(s) Correction, certificate of ...... .......... 1.322 1.323 Correction of inventorship:
In a nonprovisional application ............ 1.48 Before filing oath/declaration or application data sheet ............................ 1.41 1.76(c)
By filing an application data sheet ................. ..................................................... 1.76(d)(3) When filing a continuation or divisional application .................................. 1.63(d)
When filing a continued prosecution application ................................................ 1.53(d)(4)
In a provisional application .............. 1.48(d) By filing a cover sheet .................. 1.41(c) Without filing a cover sheet .......... 1.41(c)
In a reexamination proceeding ...... 1.530(l) In an international application ............ 1.472
When entering the national stage ...... 1.497 In an issued patent .............................. 1.324 In other than a reissue application ........ 1.48 Inconsistencies between application data sheet and oath or declaration .................. 1.76(d)
Motion to correct inventorship in an interference ................................................ 41.121(a)(2)
Supplemental application data sheet(s) ........... ............................................................. 1.76(c)
Correspondence: Address:
Change of correspondence address .... 1.33 Established by the office if more than one is specified ...................................... 1.33(a)
Of the U.S. Patent and Trademark Office ...... ................................................................. 1.1
Business with the Office to be transacted by ... ................................................................... 1.2 Discourteous communications not entered ....... ................................................................... 1.3 Double, with different parties in interest not allowed ............................................ 1.33(a)
Duplicate copies disposed of .............. 1.4(b) Facsimile transmission ........................ 1.6(d) Held with attorney or agent .................. 1.33 Identification of application or patent in letter relating to .............................................. 1.5
Involving national security .................... 5.1 May be held exclusively with assignee(s) of entire interest ...................................... 3.71
Nature of .................................................. 1.4 Patent owners in reexamination ........ 1.33(c) Receipt of letters and papers .................. 1.6 Rules for conducting in general ...... 1.1 1.10 Separate letter for each subject or inquiry ........ ................................................................... 1.4 Signature requirements ...................... 1.4(d) When no attorney or agent .................... 1.33 With attorney or agent after power or authorization is filed ............................ 1.33
Court of Appeals for the Federal Circuit, appeal to. (See Appeal to Court of Appeals for the Federal Circuit.)
Covered business method patent review (See Transitional program for covered business method patent review)
Credit card payment ................................ 1.23(b) Cross-reference to related applications .................. ............................................................... 1.76 1.78 Customer Number:
Defined ........................................ 1.32(a)(5) Required to establish a Fee Address ................. ........................................................... 1.363(c)
D
Date of invention of subject matter of individual claims ......................... ............................. 1.110
Day for taking any action or paying any fee falling on Saturday, Sunday, or Federal holiday ...... 1.7
Death or incapacity of inventor .................... 1.43 In an international application ............ 1.422
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Decision by the Patent Trial and Appeal Board ...... ........................................................... 41.50 41.77
Return of jurisdiction to examiner .................... ......................................... 1.979 41.54 41.81 Termination of proceedings ............ 1.197(b)
Declaration (See also Oath in patent application): Assignment may serve as .................. 1.63(e) Foreign language .................................. 1.69 In lieu of oath ........................................ 1.68 In patent application .............................. 1.68 Substitute statement .............................. 1.64
Deferral of examination ............................ 1.103 Definitions:
Applicable to part 42 (Trial Practice Before the Board) .................................................. 42.2
Applicant .............................................. 1.42 Assignment .............................................. 3.1 Claimed invention .............................. 1.9(f) Covered business method patent ...... 42.301 Customer Number ........................ 1.32(a)(5) Director ................................................ 1.9(j) Document ................................................ 3.1 Effective filing date of a claimed invention ...... ............................................................... 1.109 Federal holiday within the District of Columbia .............................................................. 1.9(h) International application .................... 1.9(b) Inventor or inventorship ................ 1.9(d)(1) Joint inventor or coinventor ............ 1.9(d)(2) Joint research agreement .................... 1.9(e) Micro entity .......................................... 1.29 National application ............................ 1.9(a) National security classified ................ 1.9(j) Nonprofit organization ................ 1.27(a)(3) Nonprovisonal application ............ 1.9(a)(3) Paper .................................................. 1.9(k) Patent practitioner or patent practitioner of record .................................................. 1.32
Person (for small entity purposes) ................... ........................................................ 1.27(a)(1) Power of Attorney ........................ 1.32(a)(2) Principal ...................................... 1.32(a)(3) Provisional application .................. 1.9(a)(2) Published application ........................ 1.9(c) Recorded document ................................ 3.1 Revocation .................................... 1.32(a)(4) Small business concern ................ 1.27(a)(2) Small entity ...................................... 1.27(a) Technological invention .................... 42.301 Terms under Patent Cooperation Treaty ........... ............................................................... 1.401
Delivery of patent ................. ..................... 1.315 Deposit accounts .......................................... 1.25
Fees .................................................. 1.21(b) Deposit of biological material:
Acceptable depository ........................ 1.803 Biological material .............................. 1.801 Examination procedures ...................... 1.809 Furnishing of samples ........................ 1.808 Need or opportunity to make a deposit ............ ............................................................... 1.802 Replacement or supplemental deposit .. 1.805 Term of deposit .................................... 1.806 Time of making original deposit ........ 1.804 Viability of deposit .............................. 1.807
Deposit of computer program listings .................... ...................................................... 1.52(e)(i) 1.96 Depositions (See also Testimony in contested cases before the Board):
Certificate of officer to accompany .................. .................................................... 41.157(e)(6) Original filed as exhibit ............ 41.157(e)(7) Person before whom taken ............ 41.157(e) Transcripts of .................. 41.154(a) 41.157
Derivation Proceeding: Arbitration ........................................ 42.410 Common interests in the invention .... 42.411 Content of the petition ...................... 42.405 Definitions ........................................ 42.401 Fee .................................................... 42.404 Filing date .......................................... 42.407 Institution of derivation proceeding ... 42.408 Pendency .......................................... 42.400 Procedure .......................................... 42.400 Public availability of Board records ... 42.412 Service of petition ............................ 42.406 Settlement agreements ........................ 42.409 Time for filing .................................. 42.403 Who may petition .............................. 42.402
Description of invention. (See Specification.) Design Patent Applications:
Arrangement of application elements ... 1.154 Claim .............................................. 1.153(a) Drawing .............................................. 1.152 Expedited examination ...................... 1.155 Filing fee .......................................... 1.16(b) Issue fee ............................................ 1.18(b) Oath or Declaration ........................ 1.153(b) Rules applicable .................................. 1.151 Title, description and claim ................ 1.153
Determination of request for ex parte reexamination ...................................................................... 1.515
Rev. 07.2015, October 2015R-295
PATENT RULES
Director of the USPTO (See also Petition to the Director):
Address of ............................................ 1.1(a) Availability of decisions by .............. 1.14(e) Initiates ex parte reexamination ........ 1.520
Disclaimer, statutory: Fee .................................................... 1.20(d) Requirements of .................................. 1.321 Terminal .............................................. 1.321
Disclosure, amendments to add new matter not permitted ..................... ......................... 1.121(f)
Discovery in cases before the Board ....................... .......................................... 41.150 41.158 42.224 Division. (See Restriction of application.) Document supply fees .................................. 1.19 Drawing:
Amendment of .................................... 1.121 Arrangement of views ...................... 1.84(i) Arrows .............................................. 1.84(r) Character of lines .............................. 1.84(l) Color ............ 1.6(d)(4) 1.84(a)(2) 1.165(b) Content of drawing ................................ 1.83 Copyright notice ................................ 1.84(s) Correction ................ 1.84(w) 1.85(c) 1.121 Cost of copies of .................................... 1.19 Design application .............................. 1.152 Figure for front page ...... 1.76(b)(3) 1.84(j) Filed with application ............................ 1.81 Graphics ............................................ 1.84(d) Hatching and shading ...................... 1.84(m) Holes ................................................ 1.84(x) Identification .................................... 1.84(c) If of an improvement, must show connection with old structure .................................... 1.83(b)
Informal drawings ................................ 1.85 Ink ................................................ 1.84(a)(1) Lead lines .......................................... 1.84(q) Legends ............................................ 1.84(o) Letters .............................................. 1.84(p) Location of names ............................ 1.84(c) Mask work notice .............................. 1.84(s) Must be described in and referred to specification ........................................ 1.74
Must show every feature of the invention ........ ................................................................. 1.83 No return or release .......................... 1.85(b) Numbering of sheets .......................... 1.84(t) Numbering of views ........................ 1.84(u) Numbers ............................................ 1.84(p) Original should be retained by applicant .......... ............................................................. 1.81(a)
Paper ................................................ 1.84(e) Part of application papers ............ 1.51(b)(3) Photographs ...................................... 1.84(b) Plant patent application ...................... 1.165 Reference characters ................ 1.74 1.84(p) Reissue ................................................ 1.173 Release not permitted ...................... 1.85(b) Required by law when necessary for understanding ...................................... 1.81
Scale .................................................. 1.84(k) Security markings ............................ 1.84(v) Shading ............................................ 1.84(m) Size of sheet and margins .......... 1.84(f) (g) Standards for drawings .......................... 1.84 Symbols ............................................ 1.84(n) Views ................................................ 1.84(h) When necessary, part of complete application . ........................................................ 1.51(b)(3)
Duty of disclosure ............ ................ 1.56 1.555 Patent term extension .......................... 1.765
E
Effective filing date of a claimed invention ............ ...................................................................... 1.109 Election of species ................ .................... 1.146 Electronic documents:
Compact disc submissions: Amino acid sequences .................................. ....................................... 1.821 1.823 1.825 Computer program listings ................ 1.96 Incorporation by reference in specification .. .......................................................... 1.52(e) Nuclide acid sequences ................................. ....................................... 1.821 1.823 1.825 Requirements ................................ 1.52(e) Submitted as part of permanent record ......... ....... 1.52(e) 1.58 1.96 1.821 1.823 1.825 Tables ................................................ 1.58
Employee testimony. (See Testimony by Office employees.)
Establishing micro entity status ....... ........... 1.29 Establishing small entity status .......... 1.27 1.28 Evidence in contested cases before the Board ........ .................................................................... 41.154 Ex parte appeals:
Action following decision .................. 41.54 Amendments during ............................ 41.33 Appeal brief ........................................ 41.37 Decisions and other actions by the Board ........ ............................................................... 41.50 Definitions .......................................... 41.30
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Evidence .............................................. 41.33 Examiner’s answer .............................. 41.39 Extending time periods .................. 41.31(d) Fee .................................. 41.20(b)(4) 41.45 Jurisdiction .......................................... 41.35 Oral hearing ........................................ 41.47 Rehearing ............................................ 41.52 Reply brief .......................................... 41.41 Tolling of time period to file a reply brief ........ ................................................................. 41.40 Who may appeal ............................ 41.31(a)
Ex parte reexamination. (See Reexamination.) Examination of applications:
Advancement of examination .............. 1.102 As to form ............................................ 1.104 Citation of references ...................... 1.104(d) Completeness of examiner’s action .................. .......................................................... 1.104(b) Deferral of .......................................... 1.103 Examiner’s action ............................ 1.104(a) International-type search ................ 1.104(a) Nature of examination ........................ 1.104 Reasons for allowance .................... 1.104(e) Reconsideration after rejection if requested ..... ............................................................... 1.111 Reissue ................................................ 1.176 Rejection of claims ........................ 1.104(c) Request for continued examination .... 1.114 Requirements for information by examiner .... ............................................................... 1.105 Suspension of ...................................... 1.103
Examiners: Answers on appeal .................... 41.39 41.69 Complaints against .................................. 1.3 Interviews with .................................... 1.133
Executor (See Legal Representative) ... ....... 1.42 Exhibits (See Models and exhibits) Export of technical data ...................... 5.19 5.20 Express abandonment .............. .................. 1.138
Date of receipt of .................................... 1.6 Petition in regard to .............................. 1.10
Expungement ..................... ......................... 1.59 Extension of patent term (See also Patent term adjustment):
Due to examination delay under the URAA (35 U.S.C. 154) ...................................... 1.701
Due to regulatory review period (35 U.S.C. 156): Applicant for .................................... 1.730 Application for .................................. 1.740 Calculation of term:
Animal drug product .................. 1.778
Food or color additive ................ 1.776 Human drug product .................. 1.775 Medical device ............................ 1.777 Veterinary biological product .... 1.779
Certificate of extension .................... 1.780 Conditions for .................................. 1.720 Correction of informalities .............. 1.740 Determination of eligibility .............. 1.750 Duty of disclosure ............................ 1.765 Filing date of application .................. 1.741 Formal requirements ........................ 1.740 Incomplete application .................... 1.741 Interim extension under 35 U.S.C. 156(d)(5) ............................................................. 1.790 Interim extension under 35 U.S.C. 156(e)(2) ............................................................. 1.760 Multiple applications ........................ 1.785 Order granting interim extension .... 1.780 Patents subject to .............................. 1.710 Priority Mail Express .................. 1.6 1.10 Signature requirements for application ......... ............................................................. 1.730 Termination of interim extension granted under 35 U.S.C. 156(d)(5) ...................... 1.791
Withdrawal of application ................ 1.770 Extension of time ................. ..................... 1.136
Fees ........................................................ 1.17 Interference proceedings ...................... 41.4
F
Facsimile transmission ......... ............. 1.6(d) 1.8 Federal holiday within the District of Columbia .... ..................................................................... 1.9(h) Federal Register, publication of rules in .... 1.351 Fees and payment of money:
Credit card ............................................ 1.23 Deposit accounts .................................. 1.25 Document supply fees .......................... 1.19 Extension of time .................................. 1.17 Fee on appeal to the Court of Appeals for the Federal Circuit provided by rules of court ......
............................................................... 1.301 Fees payable in advance ........................ 1.22 Foreign filing license petition .......... 1.17(g) For international-type search report ... 1.21(e) Itemization required ............................ 1.22 Method of payment .............................. 1.23 Money by mail at risk of sender ............ 1.23 Money paid by mistake ........................ 1.26 Necessary for application to be complete ......... ................................................................. 1.51
Rev. 07.2015, October 2015R-297
PATENT RULES
Petition fees .................... 1.17 1.181 41.20 Post allowance ...................................... 1.18 Prioritized examination under 37 CFR 1.102(e) ................................................................. 1.17 Processing fees ...................................... 1.17 Reexamination request ...................... 1.20(c) Refunds .................................................. 1.26 Relating to international applications .............. ................ 1.25(b) 1.445 1.481 1.482 1.492 Schedule of fees and charges ........ 1.16 1.21
Files open to the public ................................ 1.11 Filing date of application ............ ................ 1.53 Filing, search, and examination fees ............ 1.16 Filing in Post Office ................ .................... 1.10 Filing of interference settlement agreements .......... .................................................................... 41.205 Final rejection:
Appeal from ........................................ 41.31 Response to .............................. 1.113 1.116 When and how given .......................... 1.113
First Class Mail (includes Priority Mail Express) .. .......................................................................... 1.8 Foreign application ................. ..................... 1.55
License to file .............................. 5.11 5.25 Foreign country:
Taking oath in ........................................ 1.66 Taking testimony in ...................... 41.156(b)
Foreign mask work protection ...... .......... Part 150 Evaluation of request .......................... 150.4 Definition ............................................ 150.1 Duration of proclamation .................... 150.5 Initiation of evaluation ........................ 150.2 Mailing address .................................. 150.6 Submission of requests ........................ 150.3
Formulas and tables in patent applications. .. 1.58 Fraud practiced or attempted on Office . ..... 1.56 Freedom of Information Act (FOIA) ..................... ......................................................... 102.1 102.11
Appeals from initial determinations or untimely delays .............................................. 102.10
Business information .......................... 102.9 Correspondence address .. 102.1(b) 102.4(a) Expedited processing .......................... 102.6 Fees .................................................. 102.11 Public reference facilities .................. 102.2 Records .............................................. 102.3 Responses to requests ........................ 102.7
Responsibility for responding .......... 102.5 Time limits ...................................... 102.6
Requirements for making requests ...... 102.4
G
Gazette. (See Official Gazette.) General authorization to charge deposit account .... .................................................... 1.25 1.136(a)(3) General information and correspondence ............... ................................................................... 1.1 1.8 Government acquisition of foreign patent rights .... ................................................................... Part 501 Government employee invention .... ........ Part 501 Government interest in patent, recording of ........... ............................................. 3.11 3.31 3.41 3.58 Governmental registers ................................ 3.58 Guardian of insane person may apply for patent .... ........................................................................ 1.43
H
Hague Agreement Hearings:
Before the Board of Patents Appeals and Interferences ...................................... 41.47
Fee for appeal hearing ........................ 41.20 Holiday, time for action expiring on ...... 1.6 1.7
I
Identification of application, patent or registration . .......................................................................... 1.5 Inconsistencies between application data sheet and oath or declaration ................................ 1.76(d)
Incorporation by reference .......... 1.57 (pre-AIA) Information disclosure statement:
At time of filing application .................. 1.51 Content of .............................................. 1.98 Not permitted in provisional applications ........ ................................................................. 1.51 Reexamination .......................... 1.555 1.902 Suspension of action to provide time for consideration of an IDS in a CPA ..................
.......................................................... 1.103(b) Third party submission of ........ 1.290 1.291 To comply with duty of disclosure ........ 1.97
Information, Public ......... ............. 102.1 102.11 Inter partes appeals:
Action following decision .................. 41.81 Amendments during ............................ 41.63 Appellant’s brief .................................. 41.67 Decisions and other actions by the Board ........ ............................................................... 41.77 Definitions .......................................... 41.60 Evidence .............................................. 41.63 Examiner’s answer .............................. 41.69
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Extending time periods .................. 41.61(e) Fee ...................................... 41.20(b) 41.61 Jurisdiction .......................................... 41.64 Notice of appeal and cross appeal to Board ..... ............................................................... 41.61 Oral hearing ........................................ 41.73 Rehearing ............................................ 41.79 Rebuttal brief ...................................... 41.71 Respondent’s brief .............................. 41.68 Time for filling briefs .......................... 41.66 Who may appeal ............................ 41.61(a)
Inter partes reexamination. (See Reexamination.) Inter partes review:
Amendment of the patent .................. 42.121 Content of the petition ...................... 42.104 Fee .................................................... 42.103 Filing date .......................................... 42.106 Filing of supplemental information .... 42.123 Institution of inter partes review ........ 42.108 Multiple proceedings and joinder ...... 42.122 Pendency .......................................... 42.100 Preliminary response to petition ........ 42.107 Procedure .......................................... 42.100 Response by patent owner ................ 42.120 Service of petition ............................ 42.105 Time for filing .................................. 42.102 Who may petition .............................. 42.101
Interferences: Abandonment of the contest ........ 41.127(b) Access to applications ...................... 1.11(e) Addition of patent or application ... 41.203(d) Amendment during .................. 41.121(a)(2) Applicant requests ............................ 41.202 Arbitration ........................................ 41.126 Burden of proof ................................ 41.207 Common interests in the invention .... 41.206 Concession of priority .............. 41.127(b)(3) Copying claims from patent ............................. ...................................... 41.121(a)(2), 41.202 Declaration of interference ................ 41.203 Definitions ........................................ 41.201 Disclaimer to avoid interference ...................... .................................................... 41.127(b)(2) Discovery .......................................... 41.150 Extension of time .................................. 41.4 In what cases declared ...................... 41.203 Junior party fails to overcome filing date of senior party ............................ 41.204(a)(3)
Jurisdiction over involved files .......... 41.103 Manner of service of papers .............. 41.106 Motions .............................................. 41.121
Notice to file civil action ...................... 90.2 Notice of declaration .................... 41.203(b) Petitions ................................................ 41.3 Presumption as to order of invention ................ .................................................... 41.207(a)(1) Priority Statement ........................ 41.204(a) Prosecution by owner of entire interest ............ ............................................................. 41.9(a) Records of, when open to public ...... 1.11(e) Requests by applicants .................. 41.202(a) Same party ........................................ 41.206 Sanctions .......................................... 41.128 Secrecy order cases ............................ 5.3(b) Service of papers .......................... 41.106(e) Statutory disclaimer by patentee during ........... ........................................................ 41.127(b) Suggestion of claims for interference ............... ............................................................. 41.202 Suspension of other proceedings ...... 41.103 Time period for completion .......... 41.200(c) Translation of document in foreign language ... ........................................................ 41.154(b)
International application. (See Patent Cooperation Treaty.)
International Design Application ............................ ............................ 37 CFR 1.1001 37 CFR 1.1071
Content Requirements ........ 37 CFR 1.1021 Definition ............................ 37 CFR 1.1001 Examination ........................ 37 CFR 1.1062 Fees ...................................... 37 CFR 1.1031 Notification of Refusal ........ 37 CFR 1.1063 Signature .............................. 37 CFR 1.1022 Who may file ...................... 37 CFR 1.1011
International Preliminary Examining Authority ..... ...................................................................... 1.416 Interviews with examiner .... 1.133 1.560 1.955 Invention promoters:
Complaints regarding ...................... 4.1 4.6 Publication of .......................... 4.1 4.3 4.5 Reply to ................................................ 4.4 Submission of ...................................... 4.3 Withdrawal of .................................. 4.3(f)
Definition ............................................ 4.2(a) Reply to complaint .................................. 4.4
Inventor (See also Applicant for patent, Application for patent):
Death or legal incapacity of inventor .... 1.43 In an international application .......... 1.421
Refuses to sign application .................... 1.45 Unavailable ............................................ 1.45
Inventor’s certificate priority benefit ... ....... 1.55
Rev. 07.2015, October 2015R-299
PATENT RULES
Inventorship and date of invention of the subject matter of individual claims ...................... 1.110
Issue fee ......................... ............................. 1.18 Issue of patent. (See Allowance and issue of patent.)
J
Joinder of inventions in one application .... 1.141 Joint inventors .............................................. 1.45 Joint patent to inventor and assignee ...................... ...................................................... 1.42 1.45 3.81 Jurisdiction:
After decision by Patent Trial and Appeal Board ......................................... 1.979 41.54 41.81 After notice of allowance .................... 1.312 Over involved files ............................ 41.103
L
Lapsed patents ............................................ 1.317 Legal representative of deceased or incapacitated inventor .............................................. 1.43 1.64
Legibility of papers .................................. 1.52(a) Letters to the Office. (See Correspondence.) Library service fee ............... ................... 1.19(c) License and assignment of government interest in patent ........................................ 3.11 3.31 3.41
License for foreign filing .................... 5.11 5.15 List of U.S. patents classified in a subclass, cost of ................................................................... 1.19(d) Lost files ........................ ............................ 1.251
M
Mail Stops: Mail Stop 8 ...................................... 1.1(a)(3) Mail Stop 24 .......................................... 4.3(c) Mail Stop Assignment Recordation Services ... ............................................... 1.1(a)(4), 3.27 Mail Stop Congressional Relations .... 150.6 Mail Stop Document Services ........ 1.1(a)(4) Mail Stop Ex parte Reexam .......... 1.1(c)(1) Mail Stop Hatch-Waxman PTE .......... 1.1(e) Mail Stop Inter partes Reexam .... 1.1(c)(2) Mail Stop Interference .................... 41.10(b) Mail Stop L&R ...................................... 5.1 Mail Stop OED ........................................ 4.6 Mail Stop Patent Ext ............................ 1.1(e) Mail Stop PCT ................................................. .................... 1.1(b) 1.417 1.434(a) 1.480(b)
Maintenance fees .................. ...................... 1.20 Acceptance of delayed payment of .... 1.378 Address for payments ........................ 1.1(d)
Address for correspondence (applicant’s) ....... ................................................................. 1.363 Review of decision refusing to accept .............. ............................................................... 1.377 Submission of ...................................... 1.366 Time for payment of ............................ 1.362
Mask work notice in specification .......... 1.71(d) Mask work notice on drawing ...... .......... 1.84(s) Mask work protection, foreign ........ 150.1 150.6 Micro entity status ................. ..................... 1.29 Microorganisms.(SeeDepositofbiologicalmaterial.) Minimum balance in deposit accounts .... 1.25(a) Missing pages when application filed .... 1.53(e) Mistake in patent, certificate thereof issued ........... ........................................................... 1.322 1.323 Models and exhibits:
Copies of .............................................. 1.95 Disposal without notice unless return arrangements made .............................. 1.94
If on examination model found necessary request therefor will be made .......................... 1.91
In contested cases .............................. 41.154 May be required ................................ 1.91(b) Model not generally admitted in application or patent .............................................. 1.91(a)
Not to be taken from the Office except in custody of sworn employee .............................. 1.95
Return of ................................................ 1.94 Working model may be required ...... 1.91(b)
Money. (See Fees and payment of money.) Motions in interferences .......................... 41.121
To take testimony in foreign country ................ ........................................................ 41.156(b)
N
Name of Applicant or Inventor (see Applicant for patent, Application for patent, Inventor)
New matter inadmissible in application .. 1.121(f) New matter inadmissible in reissue ...... 1.173(a) Non-English language specification fee ................. ............................................................... 1.17(i)(1) Nonprofit organization:
Definition .................................... 1.27(a)(3) Micro entity Status ................................ 1.29 Small entity status ................................ 1.27
Notice: Of allowance of application ................ 1.311 Of appeal to the Court of Appeals for the Federal Circuit .................................................. 90.2
Of arbitration award ............................ 1.335
R-300Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Of defective ex parte reexamination request ... ........................................................... 1.510(c) Of declaration of interference ............ 41.203 Of oral hearings before the Patent Trial and Appeal Board .............. 41.47 41.73 42.70
Of rejection of an application .............. 1.104 Of taking testimony ...................... 41.157(c)
Nucleotide and/or amino acid sequences: Amendments to .................................. 1.825 Disclosure in patent applications ........ 1.821 Form and format for computer readable form .. ............................................................... 1.824 Format for sequence data .................... 1.822 Replacement of .................................... 1.825 Requirements ...................................... 1.823 Submission on compact disc ........................... ................................ 1.52 1.821 1.823 1.825 Symbols .............................................. 1.822
O
Oath in patent application. (See also Declaration): Apostles ................................................ 1.66 Assignment may serve as inventor’s oath or declaration ...................................... 1.63(e)
Before whom taken in foreign countries .......... ................................................................. 1.66 Before whom taken in United States .... 1.66 By legal representative of deceased or legally incapacitated person .................. 1.43 1.64
Certificate of Officer administering ...... 1.66 Continuation-in-part ........................ 1.63(d) Declaration ............................................ 1.68 Foreign language .................................. 1.69 International application ...................... 1.497 Inventor’s Certificate ........................ 1.55(k) Made by inventor .......................... 1.41 1.63 Made by someone other than inventor .. 1.64 Officers authorized to administer oaths ............ ................................................................. 1.66 Part of complete application ........ 1.51(b)(2) Person making .............................. 1.63 1.64 Plant patent application ...................... 1.162 Reissue application .............................. 1.175 Requirements of .................................... 1.63 Sealed .................................................... 1.66 Signature to ........................ 1.63 1.64 1.67 Substitute statement .............................. 1.64 Supplemental ........................................ 1.67 To acknowledge duty of disclosure .... 1.63(c) When taken abroad to seal all papers .... 1.66
Object of the invention .............. .................. 1.73
Office action time for reply ......... ............. 1.134 Office fees. (See Fees and payment of money.) Official action, based exclusively upon the written record ........................... ............................... 1.2
Official business, should be transacted in writing .. .......................................................................... 1.2 Official Gazette:
Amendments to rules published in ...... 1.351 Announces request for reexamination .............. .................................................. 1.11(c) 1.904 Notice of issuance of ex parte reexamination certificate ...................................... 1.570(f)
Notice of issuance of inter partes reexamination certificate ...................................... 1.997(f)
Oral statements ..................... ......................... 1.2
P
Payment of fees, Method ............ ................ 1.23 Paper, definition of .................. ...................... 1.9 Papers (requirements to become part of Office permanent records) ................ .................... 1.52
Papers not received on Saturday, Sunday, or holidays ..................... ......................... 1.6(a)(1)
Patent application. (See Application for patent and Provisional patent applications.)
Patent application publication. (See Published application.)
Patent attorneys and agents. (See Attorneys and agents.)
Patent Cooperation Treaty: Access to international application files .......... ............................................................ 1.14(g) Amendments and corrections during international processing .......................................... 1.471
Amendments during international preliminary examination ...................................... 1.485
Applicant for international application ............. .................................................... 1.421 1.424 Assignee, obligated assignee, or person having sufficient proprietary interest ............ 1.424
Changes in person, name or address, where filed ................................................ 1.421(f) 1.472 Conduct of international preliminary examination ...................................... 1.484
Copies of international application files .......... ............................................................ 1.14(g) Definition of terms .............................. 1.401 Delays in meeting time limits .............. 1.468 Demand for international preliminary examination ...................................... 1.480
Designation of States .......................... 1.432
Rev. 07.2015, October 2015R-301
PATENT RULES
Entry into national stage .......... 1.491 1.495 Examination at national stage ............ 1.496 Fees:
Authorization to charge fees under 37 CFR 1.16 ...................................................... 1.25(b)
Due on filing of international application. ..... ........................................................ 1.431(c) Failure to pay results in withdrawal of application .................................. 1.431(d)
Filing, processing and search fees .... 1.445 International Filing Fee .................................. ........................................ 1.431(c) 1.445(b) International preliminary examination .......... .................................................. 1.481 1.482 National stage ...................... 1.25(b) 1.492 Refunds ............................................ 1.446
Filing by other than inventor .......... 1.421(b) International application requirements ............. ............................................................... 1.431
Abstract ............................................ 1.438 Claims .............................................. 1.436 Description ........................................ 1.435 Drawings .......................................... 1.437 Physical requirements ...................... 1.433 Request ............................................ 1.434
International Bureau ............................ 1.415 International Preliminary Examining Authority ............................................................... 1.416 Inventor deceased or legally incapacitated ....... ............................................................... 1.422 Inventors, joint ................ 1.421(b) 1.497(a) National stage in the United States:
Commencement ................................ 1.491 Entry ...................................... 1.491 1.495 Examination ...................................... 1.496 Fees .................................... 1.25(b) 1.492
Oath or declaration at national stage .... 1.497 Priority, claim for ............ 1.55 1.451 1.452 Record copy to International Bureau, transmittal procedures .......................................... 1.461
Representation by attorney or agent .... 1.455 Time limits for processing applications ........... .................................................... 1.465 1.468 United States as:
Designated or Elected Office ............ 1.414 International Searching Authority .... 1.413 Receiving Office .............................. 1.412
Unity of invention: Before International Searching Authority ...... .................................................. 1.475 1.476
Before International Preliminary Examining Authority ........................................ 1.488
National stage ........................ 1.475 1.499 Protest to lack of .................... 1.477 1.489
Patent term adjustment due to examination delay .. ........................................................... 1.702 1.705
Application for .................................. 1.705 Determination .................................... 1.705 Grounds for ........................................ 1.702 Period of adjustment .......................... 1.703 Reduction of period of adjustment .... 1.704
Patent term extension due to examination delay .... ...................................................................... 1.701 Patent termextensiondue to regulatory reviewperiod. (See Extension of patent term due to regulatory review period (35 U.S.C. 156).)
Patent Trial and Appeal Board. (See Appeals.) Patent Trial Practice and Procedure:
Action by patent owner ........................ 42.9 Certificate ............................................ 42.80 Citation of authority ............................ 42.13 Conduct of the proceeding .................... 42.5 Counsel ................................................ 42.10 Definitions ............................................ 42.2 Duty of Candor .................................... 42.11 Fees ...................................................... 42.15 Filing of documents, including exhibits ........... ................................................................. 42.6 Judgment ............................................ 42.73 Jurisdiction ............................................ 42.3 Management of the record .................... 42.7 Mandatory notices ................................ 42.8 Notice of trial ........................................ 42.4 Oral Argument .................................... 42.70 Petitions and Motions Practice:
Content of petitions and motions ...... 42.22 Default filing times .......................... 42.25 Decision on petitions or motions ...... 42.71 Generally .......................................... 42.20 Notice of basis for relief .................. 42.21 Oppositions and replies .................... 42.23 Page limits for petitions, motions, oppositions, and replies ...................................... 42.24
Policy .................................................... 42.1 Public Availability .............................. 42.14 Sanctions ............................................ 42.12 Service of documents ............................ 42.6 Settlement ............................................ 42.74 Testimony and Production
Admissibility .................................... 42.61
R-302Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Applicability of the Federal rules of evidence ............................................................. 42.62 Compelling testimony and production ........... ............................................................. 42.52 Confidential information in a petition ........... ............................................................. 42.55 Discovery .......................................... 42.51 Expert testimony; tests and data ...... 42.54 Expungement of confidential information ..... ............................................................. 42.56 Form of evidence .............................. 42.63 Objection; motion to exclude; motion in limine .............................................. 42.64
Protective order ................................ 42.54 Taking testimony .............................. 42.53
Termination of trial .............................. 42.72 Patents (See also Allowance and issue of patent):
Available for license or sale, publication of notice ................................................ 1.21(i)
Certified copies of ................................ 1.13 Correction of errors in .... 1.171 1.322 1.324 Delivery of .......................................... 1.315 Disclaimer .......................................... 1.321 Identification required in letters concerning .... ................................................................... 1.5 Lapsed, for nonpayment of issue fee .... 1.317 Price of copies ...................................... 1.19 Records of, open to public ............ 1.11 1.12 Reissuing of, when defective .... 1.171 1.178
Payment of fees ............................................ 1.23 Personal attendance unnecessary ....... ........... 1.2 Petition for reissue .......................... 1.171 1.172 Petition to the Director:
Fees ........................................................ 1.17 For delayed payment of issue fee ........ 1.137 For expungement of papers .................. 1.59 For extension of time .......................... 1.136 For license for foreign filing ................ 5.12 For the revival of an abandoned application ..... ............................................................... 1.137 From formal objections or requirements .......... ................................................ 1.113(a) 1.181 From requirement for restriction ...................... ..................................... 1.129(b)(2)(iii) 1.144 General requirements .......................... 1.181 In interferences ...................................... 41.3 In reexamination .................................. 1.181
If examiner refused the ex parte request ....... ........................................................ 1.515(c)
On refusal of examiner to admit amendment ... ............................................................... 1.127
Questions not specifically provided for ............ ............................................................... 1.182 Suspension of rules .............................. 1.183
Petition to accept an unintentionally delayed claim for domestic priority ..........................
............................................ 1.78(b) 1.78(d) Petition to accept an unintentionally delayed claim for foreign priority ............ 1.55(e)
To exercise supervisory authority ..................... ...................................................... 1.181(a)(3) To make special .............. 1.102(c) 1.102(d) Untimely unless filed within two months ........ ........................................................... 1.181(f)
Photographs .................................. 1.84(b) 1.152 Plant patent applications:
Applicant ............................................ 1.162 Claim .................................................. 1.164 Declaration .......................................... 1.162 Description .......................................... 1.162 Drawings ............................................ 1.165 Examination ........................................ 1.167 Fee for copies ........................................ 1.19 Filing fee .......................................... 1.16(c) Issue fee ............................................ 1.18(c) Oath .................................................... 1.162 Rules applicable .................................. 1.161 Specification and arrangement of application elements ............................................ 1.163
Specimens ............................................ 1.166 Post issuance and reexamination fees .......... 1.20 Post-grant review:
Amendment of the patent .................. 42.221 Content of the petition ...................... 42.204 Discovery .......................................... 42.224 Fee .................................................... 42.203 Filing date .......................................... 42.206 Filing of supplemental information .... 42.223 Institution of inter partes review ...... 42.208 Multiple proceedings and joinder ...... 42.222 Pendency .......................................... 42.200 Preliminary response to petition ........ 42.207 Procedure .......................................... 42.200 Response by patent owner ................ 42.220 Service of petition ............................ 42.205 Time for filing .................................. 42.202 Who may petition .............................. 42.201
Post Office receipt as filing date ........ 1.10(a)(2) Postal emergency or interruption . ..... 1.10(g)-(i) Power of attorney. (See Attorneys or agents.) Power to inspect ................ .................... 1.14(c) Preissuance submissions by third parties .... 1.290
Rev. 07.2015, October 2015R-303
PATENT RULES
Preliminary amendments .......................... 1.115 Preliminary Examining Authority, International ..... ...................................................................... 1.416 Preserved in confidence, applications .. 1.12 1.14
Exceptions (status, access or copies available) ................................................................. 1.14
Prior art citation in patented files .............. 1.501 Prior art statement:
Content of .............................................. 1.98 To comply with duty of disclosure requirement ................................................................. 1.56
Prior art submission by third party: In patent application ............................ 1.290 In patent file ........................................ 1.501 In protest against pending unpublished application ........................................ 1.291
Prior invention, affidavit or declaration of to overcome rejection ........................ 1.130 1.131
Priority, right of, under treaty or law: Domestic benefit claim:
Cross-reference to related application(s) ...... ...................................................... 1.76 1.78 Filing fee must be paid in provisional application ........................................ 1.78
Indication of whether international application was published in English ...... 1.78(a)(2)
Must be on application data sheet .................. ...................... 1.76(a) 1.78(a)(3) 1.78(c)(2) Petition to accept, unintentionally delayed .... .......................................................... 1.78(d) Translation of non-English language provisional application required .................
..................................................... 1.78(a)(5) Waived if not timely ...................................... ................................... 1.78(a)(4) 1.78(c)(3)
Foreign priority claim: Filed after issue fee has been paid ................ .......................................................... 1.55(g) Must be on application data sheet .................. ............................................ 1.55(d) 1.76(a) Petition to accept, unintentionally delayed ... ................................................. 1.55 1.78(b) Priority document .............................. 1.55 Time for claiming .............................. 1.55
Privacy Act .............. .................. 102.21 102.34 Denial of access to records .......... 102.25(g) Definitions ........................................ 102.22 Disclosure of records .......... 102.25 102.30 Exemptions .......................... 102.33 102.34 Fees .................................................... 102.31 Grant of access to records ............ 102.25(b)
Inquiries ............................................ 102.23 Medical records ................................ 102.26 Penalties ............................................ 102.32 Requests for records ........................ 102.24 Requests for correction or amendment ............ ............................................................. 102.27
Appeal of initial adverse determination ........ ........................................................... 102.29 Review of requests ........................ 102.28
Processing fees .............. .................. 1.17 1.445 Proclamation as to protection of foreign mask works ........................................................... 150.1 150.6 Protests to grants of patent .......... .............. 1.291 Provisional applications:
Claiming the benefit of .......................... 1.78 Converting a nonprovisional to a provisional ... ........................................................ 1.53(c)(2) Converting a provisional to a nonprovisional .. ........................................................ 1.53(c)(3) Cover sheet required by § 1.51(c)(1) may be a § 1.76 application data sheet ........ 1.53(c)(1)
Definition ...................................... 1.9(a)(2) Filing date ........................................ 1.53(c) Filing fee .......................................... 1.16(d) General requisites .............................. 1.51(c) Later filing of fee and cover sheet .... 1.53(g) Names of inventor(s) ........................ 1.41(a)
Application data sheet .... 1.53(c)(1) 1.76 Correction of ...................................... 1.48 Cover sheet ............ 1.51(c)(1) 1.53(c)(1) Joint inventors .................................... 1.45
No right of priority ...................... 1.53(c)(4) No examination .................................. 1.53(i) Papers concerning, should identify provisional application as such, by application number ....
............................................................... 1.5(f) Parts of complete provisional application ........ ............................................................. 1.51(c) Processing fees .................................. 1.17(q) Revival of ........................................ 1.137(g) When abandoned .............................. 1.53(i)
Provisional rights: Submission of international publication or English translation thereof pursuant to 35 U.S.C. 154(d)(4) .......................................... 1.417
Public Information ........................ 102.1 102.34 Publication of application .......... .............. 1.211
Early publication ................................ 1.219 Express abandonment to avoid publication ..... ........................................................... 1.138(c) Fee .................................................... 1.18(d)
R-304Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Nonpublication request ...................... 1.213 Publication of redacted copy .............. 1.217 Republication .................................... 1.221 Voluntary publication ........................ 1.221
Published application: Access to .................................... 1.11 1.14 Certified copies of ................................ 1.13 Contents .............................................. 1.215 Definition .......................................... 1.9(c) Preissuance submission in .................. 1.290 Records of, open to public .......... 1.11 1.12 Republication of ................................ 1.221
R
Reasons for allowance ............. ................. 1.104 Reconsideration of Office action ..... ......... 1.112 Reconstruction of lost files ........................ 1.251 Recording of assignments. (See Assignments and recording.)
Records of the Patent and Trademark Office .......... ............................................................... 1.11 1.15 Reexamination:
Announcement in Official Gazette .... 1.11(c) Correction of inventorship .................. 1.530 Correspondence address .................... 1.33(c) Ex parte proceedings: .............. 1.501 1.570 Amendments, manner of making ................... ......................................... 1.121(j) 1.530(d) Appeal to Board .................... 41.30 41.54 Concurrent with interference, reissue, other reexamination, litigation, or office proceeding(s) .................................. 1.565
Conduct of ........................................ 1.550 Duty of disclosure in ........................ 1.555 Examiner’s determination to grant or refuse request for ...................................... 1.515
Extensions of time in .................... 1.550(c) Initiated by the Director .................... 1.520 Interviews in .................................... 1.560 Issuance and publication of certificate concludes ........................................ 1.570
Order for reexamination by examiner ............ ............................................................. 1.525 Patent owner’s statement .................. 1.530 Processing of prior art citations during .......... ............................................................. 1.502 Reply to patent owner’s statement to third party requester .......................................... 1.535
Request for ........................................ 1.510 Scope of ............................................ 1.552 Service of papers .............................. 1.248
Examiner’s action. .............................. 1.104 Fee .................................................... 1.20(c) Fees may be charged to deposit account .......... ............................................................ 1.25(b) Identification in letter ........................ 1.5(d) Inter partes proceedings .......... 1.902 1.997 Amendments, manner of making ................... .............................. 1.121(j) 1.530(d) 1.941 Appeal to Board .................... 41.60 41.81 Appeal to C.A.F.C. ................ 1.983 41.81 Concurrent with interference, reissue, other reexamination, litigation, or office proceeding(s) ........................ 1.565 1.985
Conduct of ........................................ 1.937 Duty of disclosure in .............. 1.555 1.933 Examiner’s determination to grant or refuse request for ...................................... 1.923
Extensions of time in ........................ 1.956 Filing date of request for .................. 1.919 Issuance of certificate at conclusion of .......... ............................................................. 1.997 Merged with concurrent reexamination proceedings .................................... 1.989
Merged with reissue application ...... 1.991 Notice of, in the Official Gazette .... 1.904 Persons eligible to file request for .... 1.913 Processing of prior art citations during .......... ............................................................. 1.902 Scope of ............................................ 1.906 Service of papers .................... 1.248 1.903 Submission of papers by the public ... 1.905 Subsequent requests for .................... 1.907 Suspension due to concurrent interference .... ............................................................. 1.993 Suspension due to litigation .............. 1.987
Information Disclosure Statements .................. ........................................... 1.98 1.555 1.933 Open to public .................................. 1.11(d) Reconsideration before final action .... 1.112 Refund of fee ........................................ 1.26 Reply to action .................................... 1.111 Revival of terminated or limited reexamination prosecution ........................................ 1.137
Reference characters in drawings .... 1.74 1.84(p) References cited on examination ..... ......... 1.104 Reference filing ................. ..................... 1.57(a) Refund of money paid by mistake ..... ......... 1.26
International applications .................. 1.446 Later establishment of small entity status ....... ................................................................. 1.28 Time period for requesting .............. 1.26(b)
Rev. 07.2015, October 2015R-305
PATENT RULES
Register of Government interest in patents ... 3.58 Rehearing:
On appeal to Board .................. 41.52 41.79 Request for, time for appeal after action on ..... .................................................... 41.31 41.61
Reissues: Amendments ........................................ 1.173 Applicants, assignees .......................... 1.172 Application for reissue ........................ 1.171 Application made and sworn to by inventor, if living .................................................. 1.172
Continuing duty of applicant .............. 1.178 Declaration .......................................... 1.175 Drawings ............................................ 1.173 Examination of reissue ........................ 1.176 Filed during ex parte reexamination .... 1.565 Filed during inter partes reexamination .......... ............................................................... 1.985 Filing fee .............................................. 1.16 Filing of announcement in Official Gazette ... ................................................................. 1.11 Grounds for and requirements ... 1.171 1.178 Issue fee ............................................ 1.18(a) Multiple applications for reissue of a single patent ................................................ 1.177
Oath .................................................... 1.175 Open to public ...................................... 1.11 Original patent surrendered ................ 1.178 Restriction .......................................... 1.176 Specification ........................................ 1.173 Take precedence in order of examination ......... ............................................................... 1.176 To contain no new matter ................ 1.173(a) What must accompany application ................... .................................................... 1.171 1.172
Rejection: After two rejections appeal may be taken from examiner to Board ............................ 41.31
Applicant will be notified of rejection with reasons and references .............. 1.104(a)(2)
Based on commonly owned prior art, how overcome .......................................... 1.131
Examiner may rely on admissions by applicant or patent owner, or facts within examiner’s knowledge ................................ 1.104(c)(3)
Final .................................................... 1.113 Formal objections ...................... 1.104(a)(2) References will be cited .................. 1.104(d)
Reply brief ...................... .......................... 41.41 Reply to Office action:
Abandonment for failure to ................ 1.135
By applicant or patent owner .............. 1.111 Substantially complete ........................ 1.135 Supplemental .............................. 1.111(a)(2) Time for .............................................. 1.134
Representative capacity ........... ............... 1.34(a) Request for continued examination ... ....... 1.114
Fee .................................................... 1.17(e) Suspension of action after .............. 1.103(c)
Request for reconsideration ......... ............. 1.112 Request for ex parte reexamination .......... 1.510 Request for inter partes reexamination .................. ................................................ 1.903 1.913 1.927 Requirement for submission of information ........... ...................................................................... 1.105 Reservation clauses not permitted ..... ......... 1.79 Restoration of Benefit ............ ................ 1.78(b) Restoration of Right of Priority .............. 1.55(c) Restriction of application. .... 1.141 1.146 1.176
Claims to nonelected invention withdrawn ...... .......................................................... 1.142(b) Constructive election .......................... 1.145 Petition from requirements for .. 1.129 1.144 Provisional election ............................ 1.143 Reconsideration of requirement .......... 1.143 Requirement for .................................. 1.142 Subsequent presentation of claims for different invention ............................................ 1.145
Return of correspondence .......................... 1.5(a) Revival of abandoned application, terminated or limited reexamination prosecution, or lapsed patent .................................................................. 1.137
Unintentional abandonment fee ...... 1.17(m) Revocation of power of attorney or authorization of agent ......................... ............................. 1.36(a)
Rules of Practice, amendments to rules will be published ...................... .......................... 1.351
S
Saturday, when last day falls on .................... 1.7 Secrecy order .......................................... 5.1 5.5 Sequences:
Amendments to sequence listing and computer readable copy .................................... 1.825
Disclosure requirements .......... 1.821 1.823 Sequence data, symbols and format .... 1.822 Submissions in computer readable form .......... ............................................................... 1.824 Submissions on compact disc in lieu of paper . ............................. 1.52(e)(1)(ii) 1.821 1.823
Serial number of application .......................... 1.5 Service of notices in interference cases .... 41.106
R-306Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Service of papers ........................................ 1.248 Service of process .................... 15 CFR 15.1-15.3 Shortened period for reply .......... .............. 1.134 Signature:
EFS character coded ........................ 1.4(d)(3 Handwritten .................................... 1.4(d)(1) Implicit certifications .............. 1.4(d) 11.18 S-signature .................................... 1.4(d)(2) To a written assertion of small entity status .... ........................................................ 1.27(c)(2) To amendments and other papers .... 1.33(b) To an application for extension of patent term ............................................................... 1.730 To express abandonment ................ 1.138(b) To oath .................................................. 1.63 To reissue oath or declaration .............. 1.172 When copy is acceptable ........................ 1.4
Small business concern: Definition .......................................... 1.27(a) Micro entity status ................................ 1.29 Small entity status ................................ 1.27
Small entity: Definition .......................................... 1.27(a) Errors in status excused ........................ 1.28 Fraud on the office .......................... 1.27(h) License to Federal agency ............ 1.27(a)(4) Statement .......................................... 1.27(c) Statement in parent application .... 1.27(c)(4) Status establishment ................ 1.27(g) 1.28 Status update ................................ 1.27 1.28
Solicitor’s address .............. .................. 1.1(a)(3) Species of invention claimed .......... 1.141 1.146 Specification (See also Application for patent, Claims):
Abstract ............................................ 1.72(b) Amendments to ........................ 1.121 1.125 Arrangement of ................ 1.77 1.154 1.163 Best mode ........................................ 1.71(b) Claim(s) ................................................ 1.75 Commence on separate sheet ............ 1.71(f) Contents of .................................. 1.71 1.75 Copyright notice .............................. 1.71(d) Cross-references to other applications ............. ........................................................ 1.78(c)(5) Description of the invention .................. 1.71 If defective, reissue to correct ... 1.171 1.178 Mask work notice ............................ 1.71(d) Must conclude with specific and distinct claim ............................................................. 1.75(a) Must point out new improvements specifically ............................................................. 1.71(c)
Must refer by figures to drawings ........ 1.74 Must set forth the precise invention ... 1.71(b) Object of the invention .......................... 1.73 Order of arrangement in framing .......... 1.77 Paper, writing, margins .......................... 1.52 Paragraph numbering .................. 1.52(b)(6) Part of complete application ........ 1.51(b)(1) Reference to drawings .......................... 1.74 Requirements of .......................... 1.71 1.75 Reservation clauses not permitted ........ 1.79 Separate from other parts of application .......... ............................................................. 1.71(f) Substitute ............................................ 1.125 Summary of the invention .................... 1.73 Title of the invention ........................ 1.72(a) To be rewritten, if necessary ................ 1.125
Specimens. (See Models and exhibits.) Specimens of composition of matter to be furnished when required .................... ........................ 1.93
Specimens of plants ............... ................... 1.166 Statement of status as small entity ..... ......... 1.27 Status information ........................................ 1.14 Statutory disclaimer fee ........... ............... 1.20(d) Submission of international publication or English translation thereof pursuant to 35 U.S.C. 154(d)(4) .................................................................. 1.417
Sufficient funds in deposit account .............. 1.25 Summary of invention .................................. 1.73 Sunday, when last day falls on ......... ............. 1.7 Supervisory authority, petition to Director to exercise ............................................ 1.181(a)(3)
Supplemental examination of patents: Conclusion of ...................................... 1.625 Conduct of .......................................... 1.620 Content of request .............................. 1.610 Filing of papers in supplemental examination . ............................................................... 1.601 Format of papers filed ........................ 1.615 Procedure after conclusion .................. 1.625 Publication of certificate .................... 1.625
Supplemental oath /declaration ....... ........... 1.67 Surcharge for oath or basic filing fee filed after filing date ............................................ 1.16(f) 1.53(f)
Suspension of action .................................. 1.103 Suspension of rules .................................... 1.183 Symbols for drawings .............................. 1.84(n) Symbols for nucleotide and/or amino acid sequence data ........................... ............................... 1.822
T
Tables in patent applications ........................ 1.58
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Terminal disclaimer ............... ................... 1.321 Testimony by Office employees ............................. ................................................ 15 CFR 15.11-15.18 Testimony in cases before the Board ...................... ...................... 41.156 41.158 42.52 42.53 42.65
Compelling testimony and production ............. .................................................. 41.156 42.52 Expert testimony .................... 41.158 42.65 Taking testimony .................... 41.157 42.53
Third party submission in application ................... ........................................................... 1.290 1.291 Time expiring on Saturday, Sunday, or holiday ...... .......................................................................... 1.7 Time for claiming benefit of prior (domestic) application ...................... .......................... 1.78
Time for claiming foreign priority .............. 1.55 Time for filing preliminary amendment to ensure entry thereof ............... ................... 1.115(a)(3)
Time for payment of issue fee ..... ......... 1.311(a) Time for payment of publication fee .... 1.311(a) Time for reply by applicant ... 1.134 1.135 1.136 Time for reply to Office action ...... 1.134 1.136 Time for requesting a refund ....... ........... 1.26(b) Time, periods of .................... ........................ 1.7 Timely filing of correspondence ... ....... 1.8 1.10 Title of invention ................ .................... 1.72(a) Title reports, fee for ............................ 1.19(b)(4) Transitional procedures .............................. 1.129 Transitional program for covered business method patent review:
Content of petition ............................ 42.304 Definitions ........................................ 42.300 Pendency .......................................... 42.300 Procedure .......................................... 42.300 Time for filing .................................. 42.303 Who may petition .............................. 42.302
Trial practice before the Board ...... 42.1 42.412
U
Unintentional abandonment ....... ........... 1.137(b) United States as
Designated Office ................................ 1.414 Elected Office ...................................... 1.414 International Preliminary Examining Authority ............................................................... 1.416 International Searching Authority ...... 1.413 Receiving Office .................................. 1.412
Unlocatable files .................. ...................... 1.251 Unsigned continuation or divisional application .... ..................................................... 1.53 1.63(d)(1) Use of file of parent application .............. 1.53(d)
W
Waiver of confidentiality .................... 1.53(d)(6) Withdrawal from issue ............. ................. 1.313 Withdrawal of attorney or agent .............. 1.36(b)
PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE
PART 10 — [Reserved]
PART 11 — REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND
TRADEMARK OFFICE
General Provisions
GENERAL INFORMATION
Sec. 11.1 Definitions. 11.2 Director of the Office of Enrollment and
Discipline. 11.3 Suspension of rules.
Recognition To Practice Before the USPTO
PATENTS, TRADEMARKS, AND OTHER NON-PATENT LAW
Sec. 11.4 [Reserved] 11.5 Register of attorneys and agents in patent
matters; practice before the office. 11.6 Registration of attorneys and agents. 11.7 Requirements for registration. 11.8 Oath and registration fee. 11.9 Limited recognition in patent matters. 11.10 Restrictions on practice in patent matters. 11.11 Administrative suspension, inactivation,
resignation, and readmission. 11.12 - 11.13 [Reserved] 11.14 Individuals who may practice before the
Office in trademark and other non-patent matters.
11.15 Refusal to recognize a practitioner. 11.16 - 11.17 [Reserved] 11.18 Signature and certificate for
correspondence filed in the Office.
Investigations and Disciplinary Proceedings; Jurisdiction, Sanctions, Investigations, and Proceedings
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11.19 Disciplinary jurisdiction; Jurisdiction to transfer to disability inactive status.
11.20 Disciplinary sanctions; Transfer to disability inactive status.
11.21 Warnings. 11.22 Disciplinary Investigations. 11.23 Committee on Discipline. 11.24 Reciprocal discipline. 11.25 Interim suspension and discipline based
upon conviction of committing a serious crime.
11.26 Settlement. 11.27 Exclusion on consent. 11.28 Incapacitated practitioners in a disciplinary
proceeding. 11.29 Reciprocal transfer or initial transfer to
disability inactive status. 11.30 - 11.31 [Reserved] 11.32 Instituting a disciplinary proceeding. 11.33 [Reserved] 11.34 Complaint. 11.35 Service of complaint. 11.36 Answer to complaint. 11.37 [Reserved] 11.38 Contested case. 11.39 Hearing officer; appointment;
responsibilities; review of interlocutory orders; stays.
11.40 Representative for OED Director or respondent.
11.41 Filing of papers. 11.42 Service of papers. 11.43 Motions. 11.44 Hearings. 11.45 Amendment of pleadings. 11.46 - 11.48 [Reserved] 11.49 Burden of proof. 11.50 Evidence. 11.51 Depositions. 11.52 Discovery. 11.53 Proposed findings and conclusions;
post-hearing memorandum. 11.54 Initial decision of hearing officer. 11.55 Appeal to the USPTO Director. 11.56 Decision of the USPTO Director. 11.57 Review of final decision of the USPTO
Director. 11.58 Duties of disciplined or resigned
practitioner, or practitioner on disability inactive status.
11.59 Dissemination of disciplinary and other information.
11.60 Petition for reinstatement. 11.61 [Reserved] 11.62 -11.99 [Reserved]
USPTO Rules of Professional Conduct
Sec. 11.100 [Reserved]
CLIENT-PRACTITIONER RELATIONSHIP
11.101 Competence. 11.102 Scope of representation and allocation of
authority between client and practitioner. 11.103 Diligence. 11.104 Communication. 11.105 Fees. 11.106 Confidentiality of information. 11.107 Conflict of interest; Current clients. 11.108 Conflict of interest; Current clients;
Specific rules. 11.109 Duties to former clients. 11.110 Imputation of conflicts of interest; General
rule. 11.111 Former or current Federal Government
employees. 11.112 Former judge, arbitrator, mediator or other
third-party neutral. 11.113 Organization as client. 11.114 Client with diminished capacity. 11.115 Safekeeping property. 11.116 Declining or terminating representation. 11.117 Sale of law practice. 11.118 Duties to prospective client. 11.119 - 11.200 [Reserved]
COUNSELOR
11.201 Advisor. 11.202 [Reserved] 11.203 Evaluation for use by third persons. 11.204 Practitioner serving as third-party neutral. 11.205 - 11.300 [Reserved]
ADVOCATE
11.301 Meritorious claims and contentions. 11.302 Expediting proceedings. 11.303 Candor toward the tribunal. 11.304 Fairness to opposing party and counsel.
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11.305 Impartiality and decorum of the tribunal. 11.306 Trial publicity. 11.307 Practitioner as witness. 11.308 [Reserved] 11.309 Advocate in nonadjudicative proceedings. 11.310 - 11.400 [Reserved]
TRANSACTIONS WITH PERSONS OTHER THAN CLIENTS
11.401 Truthfulness in statements to others. 11.402 Communication with person represented
by a practitioner. 11.403 Dealing with unrepresented person. 11.404 Respect for rights of third persons. 11.405 - 11.500 [Reserved]
LAW FIRMS AND ASSOCIATIONS
11.501 Responsibilities of partners, managers, and supervisory practitioners.
11.502 Responsibilities of a subordinate practitioner.
11.503 Responsibilities regarding non-practitioner assistance.
11.504 Professional independence of a practitioner.
11.505 Unauthorized practice of law. 11.506 Restrictions on right to practice. 11.507 Responsibilities regarding law-related
services. 11.508 - 11.700 [Reserved]
INFORMATION ABOUT LEGAL SERVICES
11.701 Communications concerning a practitioner’s services.
11.702 Advertising. 11.703 Direct contact with prospective clients. 11.704 Communication of fields of practice and
specialization. 11.705 Firm names and letterheads. 11.706 - 11.800 [Reserved]
MAINTAINING THE INTEGRITY OF THE PROFESSION
11.801 Registration, recognition and disciplinary matters.
11.802 Judicial and legal officials. 11.803 Reporting professional misconduct. 11.804 Misconduct. 11.805 - 11.900 [Reserved]
11.901 Savings clause.
Subpart A — General Provisions
GENERAL INFORMATION
§ 11.1 Definitions.
This part governs solely the practice of patent, trademark, and other law before the United States Patent and Trademark Office. Nothing in this part shall be construed to preempt the authority of each State to regulate the practice of law, except to the extent necessary for the United States Patent and Trademark Office to accomplish its Federal objectives. Unless otherwise clear from the context, the following definitions apply to this part:
Attorney or lawyer means an individual who is a member in good standing of the highest court of any State, including an individual who is in good standing of the highest court of one State and not under an order of any court or Federal agency suspending, enjoining, restraining, disbarring or otherwise restricting the attorney from practice before the bar of another State or Federal agency. A non-lawyer means a person who is not an attorney or lawyer.
Belief or believes means that the person involved actually supposed the fact in question to be true. A person’s belief may be inferred from circumstances.
Confirmed in writing, when used in reference to the informed consent of a person, means informed consent that is given in writing by the person or a writing that a practitioner promptly transmits to the person confirming an oral informed consent. If it is not feasible to obtain or transmit the writing at the time the person gives informed consent, then the practitioner must obtain or transmit it within a reasonable time thereafter.
Conviction or convicted means any confession to a crime; a verdict or judgment finding a person guilty of a crime; any entered plea, including nolo contendre or Alford plea, to a crime; or receipt of deferred adjudication (whether judgment or sentence
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has been entered or not) for an accused or pled crime.
Crime means any offense declared to be a felony or misdemeanor by Federal or State law in the jurisdiction where the act occurs.
Data sheet means a form used to collect the name, address, and telephone information from individuals recognized to practice before the Office in patent matters.
Disqualified means any action that prohibits a practitioner from participating in or appearing before the program or agency, regardless of how long the prohibition lasts or the specific terminology used.
Federal agency means any authority of the executive branch of the Government of the United States.
Federal program means any program established by an Act of Congress or administered by a Federal agency.
Firm or law firm means a practitioner or practitioners in a law partnership, professional corporation, sole proprietorship or other association authorized to practice law; or practitioners employed in a legal services organization or the legal department of a corporation or other organization.
Fiscal year means the time period from October 1st through the ensuing September 30th.
Fraud or fraudulent means conduct that involves a misrepresentation of material fact made with intent to deceive or a state of mind so reckless respecting consequences as to be the equivalent of intent, where there is justifiable reliance on the misrepresentation by the party deceived, inducing the party to act thereon, and where there is injury to the party deceived resulting from reliance on the misrepresentation. Fraud also may be established by a purposeful omission or failure to state a material fact, which omission or failure to state makes other statements misleading, and where the other elements of justifiable reliance and injury are established.
Good moral character and reputation means the possession of honesty and truthfulness, trustworthiness and reliability, and a professional commitment to the legal process and the administration of justice, as well as the condition of being regarded as possessing such qualities.
Grievance means a written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner.
Informed consent means the agreement by a person to a proposed course of conduct after the practitioner has communicated adequate information and explanation about the material risks of and reasonably available alternatives to the proposed course of conduct.
Knowingly, known, or knows means actual knowledge of the fact in question. A person’s knowledge may be inferred from circumstances.
Law-related services means services that might reasonably be performed in conjunction with and in substance are related to the provision of legal services, and that are not prohibited as unauthorized practice of law when provided by a non-lawyer.
OED means the Office of Enrollment and Discipline.
OED Director means the Director of the Office of Enrollment and Discipline.
OED Director’s representatives means attorneys within the USPTO Office of General Counsel who act as representatives of the OED Director.
Office means the United States Patent and Trademark Office.
Partner means a member of a partnership, a shareholder in a law firm organized as a professional corporation, or a member of an association authorized to practice law.
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§ 11.1PATENT RULES
Person means an individual, a corporation, an association, a trust, a partnership, and any other organization or legal entity.
Practitioner means:
(1) An attorney or agent registered to practice before the Office in patent matters,
(2) An individual authorized under 5 U.S.C. 500(b) or otherwise as provided by § 11.14(a), (b), and (c), to practice before the Office in trademark matters or other non-patent matters, or
(3) An individual authorized to practice before the Office in a patent case or matters under § 11.9(a) or (b).
Proceeding before the Office means an application for patent, an application for reissue, a reexamination, a protest, a public use matter, an inter partes patent matter, correction of a patent,
correction of inventorship, an application to register a trademark, an inter partes trademark matter, an appeal, a petition, and any other matter that is pending before the Office.
Reasonable or reasonably when used in relation to conduct by a practitioner means the conduct of a reasonably prudent and competent practitioner.
Reasonable belief or reasonably believes when used in reference to a practitioner means that the practitioner believes the matter in question and that the circumstances are such that the belief is reasonable.
Reasonably should know when used in reference to a practitioner means that a practitioner of reasonable prudence and competence would ascertain the matter in question.
Registration means registration to practice before the Office in patent proceedings.
Roster means a list of individuals who have been registered as either a patent attorney or patent agent.
Screened means the isolation of a practitioner from any participation in a matter through the timely imposition of procedures within a firm that are
reasonably adequate under the circumstances to protect information that the isolated practitioner is obligated to protect under these USPTO Rules of Professional Conduct or other law.
Serious crime means:
(1) Any criminal offense classified as a felony under the laws of the United States, any state or any foreign country where the crime occurred; or
(2) Any crime a necessary element of which, as determined by the statutory or common law definition of such crime in the jurisdiction where the crime occurred, includes interference with the administration of justice, false swearing, misrepresentation, fraud, willful failure to file income tax returns, deceit, bribery, extortion, misappropriation, theft, or an attempt or a conspiracy or solicitation of another to commit a “serious crime.”
Significant evidence of rehabilitation means satisfactory evidence that is significantly more probable than not that there will be no recurrence in the foreseeable future of the practitioner’s prior disability or addiction.
State means any of the 50 states of the United States of America, the District of Columbia, and any Commonwealth or territory of the United States of America.
Substantial when used in reference to degree or extent means a material matter of clear and weighty importance.
Suspend or suspension means a temporary debarring from practice before the Office or other jurisdiction.
Tribunal means the Office, a court, an arbitrator in a binding arbitration proceeding or a legislative body, administrative agency or other body acting in an adjudicative capacity. A legislative body, administrative agency or other body acts in an adjudicative capacity when a neutral official, after the presentation of evidence or legal argument by a party or parties, will render a binding legal judgment directly affecting a party's interests in a particular matter.
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United States means the United States of America, and the territories and possessions the United States of America.
USPTO Director means the Director of the United States Patent and Trademark Office, or an employee of the Office delegated authority to act for the Director of the United States Patent and Trademark Office in matters arising under this part.
Writing or written means a tangible or electronic record of a communication or representation, including handwriting, typewriting, printing, photostating, photography, audio or video recording and electronic communications. A "signed" writing includes an electronic sound, symbol or process attached to or logically associated with a writing and executed or adopted by a person with the intent to sign the writing.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004; revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; definition of “grievance” added, 77 FR 45247, July 31, 2012, effective August 30, 2012; definitions of "mandatory disciplinary rule" and "matter" removed, definitions of "fraud or fraudulent" and "practitioner" revised, and definitions of "confirmed in writing," "firm or law firm," "informed consent," "law-related services," "partner," "person," "reasonable belief or reasonably believes," "reasonably should know," "screened," "tribunal," and "writing or written" added, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.2 Director of the Office of Enrollment and Discipline.
(a) Appointment. The USPTO Director shall appoint a Director of the Office of Enrollment and Discipline (OED Director). In the event of a vacancy in the office of the OED Director, the USPTO Director may designate an employee of the Office to serve as acting OED Director. The OED Director shall be an active member in good standing of the bar of the highest court of a State.
(b) Duties. The OED Director shall:
(1) Supervise staff as may be necessary for the performance of the OED Director’s duties.
(2) Receive and act upon applications for registration, prepare and grade the examination provided for in § 11.7(b), maintain the register provided for in § 11.5, and perform such other duties
in connection with enrollment and recognition of attorneys and agents as may be necessary.
(3) Conduct investigations into the moral character and reputation of any individual seeking to be registered as an attorney or agent, or of any individual seeking limited recognition, deny registration or recognition of individuals failing to demonstrate possession of good moral character and reputation, and perform such other duties in connection with enrollment matters and investigations as may be necessary.
(4) Conduct investigations of matters involving possible grounds for discipline of practitioners coming to the attention of the OED Director. Except in matters meriting summary dismissal, no disposition under § 11.22(h) shall be recommended or undertaken by the OED Director until the accused practitioner shall have been afforded an opportunity to respond to a reasonable inquiry by the OED Director.
(5) With the consent of a panel of three members of the Committee on Discipline, initiate disciplinary proceedings under § 11.32 and perform such other duties in connection with investigations and disciplinary proceedings as may be necessary.
(6) Oversee the preliminary screening of information and close investigations as provided for in § 11.22.
(7) [Reserved]
(c) Petition to OED Director regarding enrollment or recognition. Any petition from any action or requirement of the staff of OED reporting to the OED Director shall be taken to the OED Director accompanied by payment of the fee set forth in § 1.21(a)(5)(i) of this chapter. Any such petition not filed within sixty days from the mailing date of the action or notice from which relief is requested will be dismissed as untimely. The filing of a petition will neither stay the period for taking other action which may be running, nor stay other proceedings. The petitioner may file a single request for reconsideration of a decision within thirty days of the date of the decision. Filing a request for reconsideration stays the period for seeking review of the OED Director’s decision until a final decision on the request for reconsideration is issued.
(d) Review of OED Director’s decision regarding enrollment or recognition. A party
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§ 11.2PATENT RULES
dissatisfied with a final decision of the OED Director regarding enrollment or recognition shall seek review of the decision upon petition to the USPTO Director accompanied by payment of the fee set forth in§ 1.21(a)(5)(ii) of this chapter. By filing such petition to the USPTO Director, the party waives any right to seek reconsideration from the OED Director. Any petition not filed within thirty days after the final decision of the OED Director may be dismissed as untimely. Briefs or memoranda, if any, in support of the petition shall accompany the petition. The petition will be decided on the basis of the record made before the OED Director. The USPTO Director in deciding the petition will consider no new evidence. Copies of documents already of record before the OED Director shall not be submitted with the petition. An oral hearing will not be granted except when considered necessary by the USPTO Director. Any request for reconsideration of the decision of the USPTO Director may be dismissed as untimely if not filed within thirty days after the date of said decision. Only a decision of the USPTO Director regarding denial of a petition constitutes a final decision for the purpose of judicial review.
(e) Petition to USPTO Director in disciplinary matters. A party dissatisfied with any action or notice of any employee of the Office of Enrollment and Discipline during or at the conclusion of a disciplinary investigation shall seek review of the action or notice upon petition to the OED Director. A petition from any action or notice of the staff reporting to the OED Director shall be taken to the OED Director. A party dissatisfied with the OED Director's final decision shall seek review of the final decision upon petition to the USPTO Director to invoke the supervisory authority of the USPTO Director in appropriate circumstances in disciplinary matters. Any petition under this paragraph must contain a statement of the facts involved and the point or points to be reviewed and the action requested. Briefs or memoranda, if any, in support of the petition must accompany the petition. Where facts are to be proven, the proof in the form of affidavits or declarations (and exhibits, if any) must accompany the petition. The OED Director may be directed by the USPTO Director to file a reply to the petition to the USPTO Director, supplying a copy to the petitioner. An oral hearing on petition taken to the USPTO Director will not be granted except when considered necessary by the USPTO
Director. The filing of a petition under this paragraph will not stay an investigation, disciplinary proceeding, or other proceedings.Any petition under this part not filed within thirty days of the mailing date of the action or notice from which relief is requested may be dismissed as untimely. Any request for reconsideration of the decision of the OED Director or the USPTO Director may be dismissed as untimely if not filed within thirty days after the date of said decision. Only a decision of the USPTO Director regarding denial of a petition constitutes a final decision for the purpose of judicial review.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004; paras. (a), (b)(4), (c) and (d) revised, paras. (b)(5), (b)(6) and (e) added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; paras. (c), (d) and (e) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.3 Suspension of rules.
(a) In an extraordinary situation, when justice requires, any requirement of the regulations of this Part which is not a requirement of statute may be suspended or waived by the USPTO Director or the designee of the USPTO Director, sua sponte, or on petition by any party, including the OED Director or the OED Director’s representative, subject to such other requirements as may be imposed.
(b) No petition under this section shall stay a disciplinary proceeding unless ordered by the USPTO Director or a hearing officer.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004; revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
Subpart B — Recognition To Practice Before the USPTO
PATENTS, TRADEMARKS, AND OTHER NON-PATENT LAW
§ 11.4 [Reserved]
[Reserved, 69 FR 35427, June 24, 2004, effective July 26, 2004]
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§ 11.5 Register of attorneys and agents in patent matters; practice before the office.
(a) A register of attorneys and agents is kept in the Office on which are entered the names of all individuals recognized as entitled to represent applicants having prospective or immediate business before the Office in the preparation and prosecution of patent applications. Registration in the Office under the provisions of this part shall entitle the individuals so registered to practice before the Office only in patent matters.
(b) Practice before the Office. Practice before the Office includes, but is not limited to, law-related service that comprehends any matter connected with the presentation to the Office or any of its officers or employees relating to a client’s rights, privileges, duties, or responsibilities under the laws or regulations administered by the Office for the grant of a patent or registration of a trademark, or for enrollment or disciplinary matters. Such presentations include preparing necessary documents in contemplation of filing the documents with the Office, corresponding and communicating with the Office, and representing a client through documents or at interviews, hearings, and meetings, as well as communicating with and advising a client concerning matters pending or contemplated to be presented before the Office. Nothing in this section proscribes a practitioner from employing or retaining non-practitioner assistants under the supervision of the practitioner to assist the practitioner in matters pending or contemplated to be presented before the Office.
(1) Practice before the Office in patent matters. Practice before the Office in patent matters includes, but is not limited to, preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office, drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; drafting a reply to a communication from the Office regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other
proceeding. Registration to practice before the Office in patent cases sanctions the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate. The services include:
(i) Considering the advisability of relying upon alternative forms of protection which may be available under state law, and
(ii) Drafting an assignment or causing an assignment to be executed for the patent owner in contemplation of filing or prosecution of a patent application for the patent owner, where the practitioner represents the patent owner after a patent issues in a proceeding before the Office, and when drafting the assignment the practitioner does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party.
(2) Practice before the Office in trademark matters. Practice before the Office in trademark matters includes, but is not limited to, consulting with or giving advice to a client in contemplation of filing a trademark application or other document with the Office; preparing and prosecuting an application for trademark registration; preparing an amendment which may require written argument to establish the registrability of the mark; and conducting an opposition, cancellation, or concurrent use proceeding; or conducting an appeal to the Trademark Trial and Appeal Board.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004; revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (b)(1) introductory text revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 11.6 Registration of attorneys and agents.
(a) Attorneys. Any citizen of the United States who is an attorney and who fulfills the requirements of this part may be registered as a patent attorney to practice before the Office. When appropriate, any alien who is an attorney, who lawfully resides in the United States, and who fulfills the requirements of this part may be registered as a patent attorney to practice before the Office, provided that such registration is not inconsistent with the terms upon
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§ 11.6PATENT RULES
which the alien was admitted to, and resides in, the United States and further provided that the alien may remain registered only:
(1) If the alien continues to lawfully reside in the United States and registration does not become inconsistent with the terms upon which the alien continues to lawfully reside in the United States, or
(2) If the alien ceases to reside in the United States, the alien is qualified to be registered under paragraph (c) of this section. See also § 11.9(b).
(b) Agents. Any citizen of the United States who is not an attorney, and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office. When appropriate, any alien who is not an attorney, who lawfully resides in the United States, and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office, provided that such registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States, and further provided that the alien may remain registered only:
(1) If the alien continues to lawfully reside in the United States and registration does not become inconsistent with the terms upon which the alien continues to lawfully reside in the United States or
(2) If the alien ceases to reside in the United States, the alien is qualified to be registered under paragraph (c) of this section. See also § 11.9(b).
(c) Foreigners. Any foreigner not a resident of the United States who shall file proof to the satisfaction of the OED Director that he or she is registered and in good standing before the patent office of the country in which he or she resides and practices, and who is possessed of the qualifications stated in § 11.7, may be registered as a patent agent to practice before the Office for the limited purpose of presenting and prosecuting patent applications of applicants located in such country, provided that the patent office of such country allows substantially reciprocal privileges to those admitted to practice before the Office. Registration as a patent agent under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain. Upon notice by the patent office of such country that a patent agent registered under this section is no longer registered or no longer in good
standing before the patent office of such country, and absent a showing of cause why his or her name should not be removed from the register, the OED Director shall promptly remove the name of the patent agent from the register and publish the fact of removal. Upon ceasing to reside in such country, the patent agent registered under this section is no longer qualified to be registered under this section, and the OED Director shall promptly remove the name of the patent agent from the register and publish the fact of removal.
(d) Patent Trial and Appeal Board matters. For action by a person who is not registered in a proceeding before the Patent Trial and Appeal Board, see § 41.5(a) or § 42.10(c) of this title.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (d) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (d) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 11.7 Requirements for registration.
(a) No individual will be registered to practice before the Office unless he or she has:
(1) Applied to the USPTO Director in writing by completing an application for registration form supplied by the OED Director and furnishing all requested information and material; and
(2) Established to the satisfaction of the OED Director that he or she:
(i) Possesses good moral character and reputation;
(ii) Possesses the legal, scientific, and technical qualifications necessary for him or her to render applicants valuable service; and
(iii) Is competent to advise and assist patent applicants in the presentation and prosecution of their applications before the Office.
(b)(1) To enable the OED Director to determine whether an individual has the qualifications specified in paragraph (a)(2) of this section, the individual shall:
(i) File a complete application for registration each time admission to the registration examination is requested. A complete application for registration includes:
(A) An application for registration form supplied by the OED Director wherein all
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requested information and supporting documents are furnished,
(B) Payment of the fees required by § 1.21(a)(1) of this subchapter,
(C) Satisfactory proof of scientific and technical qualifications, and
(D) For aliens, provide proof that recognition is not inconsistent with the terms of their visa or entry into the United States;
(ii) Pass the registration examination, unless the taking and passing of the examination is waived as provided in paragraph (d) of this section. Unless examination is waived pursuant to paragraph (d) of this section, each individual seeking registration must take and pass the registration examination to enable the OED Director to determine whether the individual possesses the legal and competence qualifications specified in paragraphs (a)(2)(ii) and (a)(2)(iii) of this section. An individual failing the examination may, upon receipt of notice of failure from OED, reapply for admission to the examination. An individual failing the examination must wait thirty days after the date the individual last took the examination before retaking the examination. An individual reapplying shall:
(A) File a completed application for registration form wherein all requested information and supporting documents are furnished,
(B) Pay the fees required by § 1.21(a)(1) of this subchapter, and
(C) For aliens, provide proof that recognition is not inconsistent with the terms of their visa or entry into the United States; and
(iii) Provide satisfactory proof of possession of good moral character and reputation.
(2) An individual failing to file a complete application for registration will not be admitted to the examination and will be notified of the incompleteness. Applications for registration that are incomplete as originally submitted will be considered only when they have been completed and received by OED, provided that this occurs within sixty days of the mailing date of the notice of incompleteness. Thereafter, a new and complete application for registration must be filed. Only an individual approved as satisfying the requirements of paragraphs (b)(1)(i)(A), (b)(1)(i)(B), (b)(1)(i)(C)
and (b)(1)(i)(D) of this sect i on may be admitted to the examination.
(3) If an individual does not reapply until more than one year after the mailing date of a notice of failure, that individual must again comply with paragraph (b)(1)(i) of this section.
(c) Each individual seeking registration is responsible for updating all information and answers submitted in or with the application for registration based upon anything occurring between the date the application for registration is signed by the individual, and the date he or she is registered or recognized to practice before the Office in patent matters. The update shall be filed within thirty days after the date of the occasion that necessitates the update.
(d) Waiver of the Registration Examination for Former Office Employees.
(1) Former patent examiners who by July 26, 2004, had not actively served four years in the patent examining corps, and were serving in the corps at the time of their separation. The OED Director may waive the taking of a registration examination in the case of any individual meeting the requirements of paragraph (b)(1)(i)(C) of this section who is a former patent examiner but by July 26, 2004, had not served four years in the patent examining corps, if the individual demonstrates that he or she:
(i) Actively served in the patent examining corps of the Office and was serving in the corps at the time of separation from the Office;
(ii) Received a certificate of legal competency and negotiation authority;
(iii) After receiving the certificate of legal competency and negotiation authority, was rated at least fully successful in each quality performance element of his or her performance plan for the last two complete fiscal years as a patent examiner; and
(iv) Was not under an oral or written warning regarding the quality performance elements at the time of separation from the patent examining corps.
(2) Former patent examiners who on July 26, 2004, had actively served four years in the patent examining corps, and were serving in the corps at the time of their separation. The OED Director may
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waive the taking of a registration examination in the case of any individual meeting the requirements of paragraph (b)(1)(i)(C) of this section who is a former patent examiner and by July 26, 2004, had served four years in the patent examining corps, if the individual demonstrates that he or she:
(i) Actively served for at least four years in the patent examining corps of the Office by July 26, 2004, and was serving in the corps at the time of separation from the Office;
(ii) Was rated at least fully successful in each quality performance element of his or her performance plan for the last two complete fiscal years as a patent examiner in the Office; and
(iii) Was not under an oral or written warning regarding the quality performance elements at the time of separation from the patent examining corps.
(3) Certain former Office employees who were not serving in the patent examining corps upon their separation from the Office. The OED Director may waive the taking of a registration examination in the case of a former Office employee meeting the requirements of paragraph (b)(1)(i)(C) of this section who by petition demonstrates possession of the necessary legal qualifications to render to patent applicants and others valuable service and assistance in the preparation and prosecution of their applications or other business before the Office by showing that he or she has:
(i) Exhibited comprehensive knowledge of patent law equivalent to that shown by passing the registration examination as a result of having been in a position of responsibility in the Office in which he or she:
(A) Provided substantial guidance on patent examination policy, including the development of rule or procedure changes, patent examination guidelines, changes to the Manual of Patent Examining Procedure, development of training or testing materials for the patent examining corps, or development of materials for the registration examination or continuing legal education; or
(B) Represented the Office in patent cases before Federal courts; and
(ii) Was rated at least fully successful in each quality performance element of his or her
performance plan for said position for the last two complete rating periods in the Office, and was not under an oral or written warning regarding such performance elements at the time of separation from the Office.
(4) To be eligible for consideration for waiver, an individual formerly employed by the Office within the scope of one of paragraphs (d)(1), (d)(2) or (d)(3) of this section must file a complete application for registration and pay the fee required by § 1.21(a)(1)(i) of this subchapter within two years of the individual’s date of separation from the Office. All other individuals formerly employed by the Office, including former examiners, filing an application for registration or fee more than two years after separation from the Office, are required to take and pass the registration examination. The individual or former examiner must pay the examination fee required by § 1.21(a)(1)(ii) of this subchapter within thirty days after notice of non-waiver.
(e) Examination results. Notification of the examination results is final. Within sixty days of the mailing date of a notice of failure, the individual is entitled to inspect, but not copy, the questions and answers he or she incorrectly answered. Review will be under supervision. No notes may be taken during such review. Substantive review of the answers or questions may not be pursued by petition for regrade. An individual who failed the examination has the right to retake the examination an unlimited number of times upon payment of the fees required by § 1.21(a)(1)(i) and (ii) of this subchapter, and a fee charged by a commercial entity administering the examination.
(f) Application for reciprocal recognition. An individual seeking reciprocal recognition under § 11.6(c), in addition to satisfying the provisions of paragraphs (a) and (b) of this section, and the provisions of § 11.8(c), shall pay the application fee required by § 1.21(a)(1)(i) of this subchapter upon filing an application for registration.
(g) Investigation of good moral character and reputation. (1) Every individual seeking recognition shall answer all questions in the application for registration and request(s) for comments issued by OED; disclose all relevant facts, dates and information; and provide verified copies of documents relevant to his or her good moral
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character and reputation. An individual who is an attorney shall submit a certified copy of each of his or her State bar applications and moral character determinations, if available.
(2)(i) If the OED Director receives information from any source that reflects adversely on the good moral character or reputation of an individual seeking registration or recognition, the OED Director shall conduct an investigation into the good moral character and reputation of that individual. The investigation will be conducted after the individual has passed the registration examination, or after the registration examination has been waived for the individual, as applicable. An individual failing to timely answer questions or respond to an inquiry by OED shall be deemed to have withdrawn his or her application, and shall be required to reapply, pass the examination, and otherwise satisfy all the requirements of this section. No individual shall be certified for registration or recognition by the OED Director until, to the satisfaction of the OED Director, the individual demonstrates his or her possession of good moral character and reputation.
(ii) The OED Director, in considering an application for registration by an attorney, may accept a State bar’s character determination as meeting the requirements set forth in paragraph (g) of this section if, after review, the Office finds no substantial discrepancy between the information provided with his or her application for registration and the State bar application and moral character determination, provided that acceptance is not inconsistent with other rules and the requirements of 35 U.S.C. 2(b)(2)(D).
(h) Good moral character and reputation. Evidence showing lack of good moral character and reputation may include, but is not limited to, conviction of a felony or a misdemeanor identified in paragraph (h)(1) of this section, drug or alcohol abuse; lack of candor; suspension or disbarment on ethical grounds from a State bar; and resignation from a State bar while under investigation.
(1) Conviction of felony or misdemeanor. An individual who has been convicted of a felony or a misdemeanor involving moral turpitude, breach of trust, interference with the administration of justice, false swearing, misrepresentation, fraud, deceit, bribery, extortion, misappropriation, theft,
or conspiracy to commit any felony or misdemeanor, is presumed not to be of good moral character and reputation in the absence of a pardon or a satisfactory showing of reform and rehabilitation, and shall file with his or her application for registration the fees required by § 1.21(a)(1)(ii) and (a)(10) of this subchapter. The OED Director shall determine whether individuals convicted of said felony or misdemeanor provided satisfactory proof of reform and rehabilitation.
(i) An individual who has been convicted of a felony or a misdemeanor identified in paragraph (h)(1) of this section shall not be eligible to apply for registration during the time of any sentence (including confinement or commitment to imprisonment), deferred adjudication, and period of probation or parole as a result of the conviction, and for a period of two years after the date of completion of the sentence, deferred adjudication, and period of probation or parole, whichever is later.
(ii) The following presumptions apply to the determination of good moral character and reputation of an individual convicted of said felony or misdemeanor:
(A) The court record or docket entry of conviction is conclusive evidence of guilt in the absence of a pardon or a satisfactory showing of reform or rehabilitation; and
(B) An individual convicted of a felony or any misdemeanor identified in paragraph (h)(1) of this section is conclusively deemed not to have good moral character and reputation, and shall not be eligible to apply for registration for a period of two years after completion of the sentence, deferred adjudication, and period of probation or parole, whichever is later.
(iii) The individual, upon applying for registration, shall provide satisfactory evidence that he or she is of good moral character and reputation.
(iv) Upon proof that a conviction has been set aside or reversed, the individual shall be eligible to file a complete application for registration and the fee required by § 1.21(a)(1)(ii) of this subchapter and, upon passing the registration examination, have the OED Director determine, in accordance with paragraph (h)(1) of this section, whether, absent the conviction, the individual possesses good moral character and reputation.
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(2) Good moral character and reputation involving drug or alcohol abuse. An individual’s record is reviewed as a whole to see if there is a drug or alcohol abuse issue. An individual appearing to abuse drugs or alcohol may be asked to undergo an evaluation, at the individual’s expense, by a qualified professional approved by the OED Director. In instances where, before an investigation commences, there is evidence of a present abuse or an individual has not established a record of recovery, the OED Director may request the individual to withdraw his or her application, and require the individual to satisfactorily demonstrate that he or she is complying with treatment and undergoing recovery.
(3) Moral character and reputation involving lack of candor. An individual’s lack of candor in disclosing facts bearing on or relevant to issues concerning good moral character and reputation when completing the application or any time thereafter may be found to be cause to deny registration on moral character and reputation grounds.
(4) Moral character and reputation involving suspension, disbarment, or resignation from a profession.
(i) An individual who has been disbarred or suspended from practice of law or other profession, or has resigned in lieu of a disciplinary proceeding (excluded or disbarred on consent) shall be ineligible to apply for registration as follows:
(A) An individual who has been disbarred from practice of law or other profession, or has resigned in lieu of a disciplinary proceeding (excluded or disbarred on consent) shall be ineligible to apply for registration for a period of five years from the date of disbarment or resignation.
(B) An individual who has been suspended on ethical grounds from the practice of law or other profession shall be ineligible to apply for registration until expiration of the period of suspension.
(C) An individual who was not only disbarred, suspended or resigned in lieu of a disciplinary proceeding, but also convicted in a court of a felony, or of a crime involving moral turpitude or breach of trust, shall be ineligible to apply for registration until the conditions in paragraphs (h)(1) and (h)(4) of this section are fully satisfied.
(ii) An individual who has been disbarred or suspended, or who resigned in lieu of a disciplinary proceeding shall file an application for registration and the fees required by § 1.21(a)(1)(ii) and (a)(10) of this subchapter; provide a full and complete copy of the proceedings that led to the disbarment, suspension, or resignation; and provide satisfactory proof that he or she possesses good moral character and reputation. The following presumptions shall govern the determination of good moral character and reputation of an individual who has been licensed to practice law or other profession in any jurisdiction and has been disbarred, suspended on ethical grounds, or allowed to resign in lieu of discipline, in that jurisdiction.
(A) A copy of the record resulting in disbarment, suspension or resignation is prima facie evidence of the matters contained in the record, and the imposition of disbarment or suspension, or the acceptance of the resignation of the individual shall be deemed conclusive that the individual has committed professional misconduct.
(B) The individual is ineligible for registration and is deemed not to have good moral character and reputation during the period of the imposed discipline.
(iii) The only defenses available with regard to an underlying disciplinary matter resulting in disbarment, suspension on ethical grounds, or resignation in lieu of a disciplinary proceeding are set out below, and must be shown to the satisfaction of the OED Director:
(A) The procedure in the disciplinary court was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process;
(B) There was such infirmity of proof establishing the misconduct as to give rise to the clear conviction that the Office could not, consistently with its duty, accept as final the conclusion on that subject; or
(C) The finding of lack of good moral character and reputation by the Office would result in grave injustice.
(i) Factors that may be taken into consideration when evaluating rehabilitation of an individual seeking a moral character and reputation determination. The factors enumerated below are guidelines to assist the OED Director in determining
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whether an individual has demonstrated rehabilitation from an act of misconduct or moral turpitude. The factors include:
(1) The nature of the act of misconduct, including whether it involved moral turpitude, whether there were aggravating or mitigating circumstances, and whether the activity was an isolated event or part of a pattern;
(2) The age and education of the individual at the time of the misconduct and the age and education of the individual at the present time;
(3) The length of time that has passed between the misconduct and the present, absent any involvement in any further acts of moral turpitude, the amount of time and the extent of rehabilitation being dependent upon the nature and seriousness of the act of misconduct under consideration;
(4) Restitution by the individual to any person who suffered monetary losses through acts or omissions of the individual;
(5) Expungement of a conviction;
(6) Successful completion or early discharge from probation or parole;
(7) Abstinence from the use of controlled substances or alcohol for not less than two years if the specific misconduct was attributable in part to the use of a controlled substance or alcohol, where abstinence may be demonstrated by, but is not necessarily limited to, enrolling in and complying with a self-help or professional treatment program;
(8) If the specific misconduct was attributable in part to a medically recognized mental disease, disorder or illness, proof that the individual sought professional assistance, and complied with the treatment program prescribed by the professional, and submitted letters from the treating psychiatrist/psychologist verifying that the medically recognized mental disease, disorder or illness will not impede the individual’s ability to competently practice before the Office;
(9) Payment of the fine imposed in connection with any criminal conviction;
(10) Correction of behavior responsible in some degree for the misconduct;
(11) Significant and conscientious involvement in programs designed to provide social benefits or to ameliorate social problems; and
(12) Change in attitude from that which existed at the time of the act of misconduct in question as evidenced by any or all of the following:
(i) Statements of the individual;
(ii) Statements from persons familiar with the individual’s previous misconduct and with subsequent attitudes and behavioral patterns;
(iii) Statements from probation or parole officers or law enforcement officials as to the individual’s social adjustments; and
(iv) Statements from persons competent to testify with regard to neuropsychiatry or emotional disturbances.
(j) Notice to Show Cause. The OED Director shall inquire into the good moral character and reputation of an individual seeking registration, providing the individual with the opportunity to create a record on which a decision is made. If, following inquiry and consideration of the record, the OED Director is of the opinion that the individual seeking registration has not satisfactorily established that he or she possesses good moral character and reputation, the OED Director shall issue to the individual a notice to show cause why the individual’s application for registration should not be denied.
(1) The individual shall be given no less than ten days from the date of the notice to reply. The notice shall be given by certified mail at the address appearing on the application if the address is in the United States, and by any other reasonable means if the address is outside the United States.
(2) Following receipt of the individual’s response, or in the absence of a response, the OED Director shall consider the individual’s response, if any, and the record, and determine whether, in the OED Director’s opinion, the individual has sustained his or her burden of satisfactorily demonstrating that he or she possesses good moral character and reputation.
(k) Reapplication for registration. An individual who has been refused registration for lack of good moral character or reputation may reapply for registration two years after the date of the decision, unless a shorter period is otherwise ordered by the USPTO Director. An individual, who has been notified that he or she is under investigation for good moral character and reputation may elect
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to withdraw his or her application for registration, and may reapply for registration two years after the date of withdrawal. Upon reapplication for registration, the individual shall pay the fees required by § 1.21(a)(1)(ii) and (a)(10) of this subchapter, and has the burden of showing to the satisfaction of the OED Director his or her possession of good moral character and reputation as prescribed in paragraph (b) of this section. Upon reapplication for registration, the individual also shall complete successfully the examination prescribed in paragraph (b) of this section, even though the individual has previously passed a registration examination.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004]
§ 11.8 Oath and registration fee.
(a) After an individual passes the examination, or the examination is waived, the OED Director shall promptly publish a solicitation for information concerning the individual’s good moral character and reputation. The solicitation shall include the individual’s name, and business or communication postal address.
(b) An individual shall not be registered as an attorney under § 11.6(a), registered as an agent under § 11.6(b) or (c), or granted limited recognition under § 11.9(b) unless within two years of the mailing date of a notice of passing registration examination or of waiver of the examination the individual files with the OED Director a completed Data Sheet, an oath or declaration prescribed by the USPTO Director, and the registration fee set forth in § 1.21(a)(2) of this subchapter. An individual seeking registration as an attorney under § 11.6(a) must provide a certificate of good standing of the bar of the highest court of a State that is no more than six months old.
(c) An individual who does not comply with the requirements of paragraph (b) of this section within the two-year period will be required to retake the registration examination.
(d) [Reserved]
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (d) added, 73 FR 67750, Nov. 17, 2008, effective Dec. 17, 2008; para. (d) removed and reserved, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.9 Limited recognition in patent matters.
(a) Any individual not registered under § 11.6 may, upon a showing of circumstances which render it necessary or justifiable, and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications. Limited recognition under this paragraph shall not extend further than the application or applications specified. Limited recognition shall not be granted while individuals who have passed the examination or for whom the examination has been waived are awaiting registration to practice before the Office in patent matters.
(b) A nonimmigrant alien residing in the United States and fulfilling the provisions of § 11.7(a) and (b) may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application. Limited recognition shall be granted for a period consistent with the terms of authorized employment or training. Limited recognition shall not be granted or extended to a non-United States citizen residing abroad. If granted, limited recognition shall automatically expire upon the nonimmigrant alien’s departure from the United States.
(c) An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1 bis and 90.1.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (b) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
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§ 11.10 Restrictions on practice in patent matters.
(a) Only practitioners who are registered under § 11.6 or individuals given limited recognition under § 11.9(a) or (b) are permitted to prosecute patent applications of others before the Office; or represent others in any proceedings before the Office.
(b) Post employment agreement of former Office employee. No individual who has served in the patent examining corps or elsewhere in the Office may practice before the Office after termination of his or her service, unless he or she signs a written undertaking agreeing:
(1) To not knowingly act as agent or attorney for, or otherwise represent, or assist in any manner the representation of, any other person:
(i) Before the Office,
(ii) In connection with any particular patent or patent application,
(iii) In which said employee participated personally and substantially as an employee of the Office; and
(2) To not knowingly act within two years after terminating employment by the Office as agent or attorney for, or otherwise represent, or assist in any manner the representation of any other person:
(i) Before the Office,
(ii) In connection with any particular patent or patent application,
(iii) If such patent or patent application was pending under the employee’s official responsibility as an officer or employee within a period of one year prior to the termination of such responsibility.
(3) The words and phrases in paragraphs (b)(1) and (b)(2) of this section are construed as follows:
(i) Represent and representation mean acting as patent attorney or patent agent or other representative in any appearance before the Office, or communicating with an employee of the Office with intent to influence.
(ii) Assist in any manner means aid or help another person on a particular patent or patent application involving representation.
(iii) Particular patent or patent application means any patent or patent application, including, but not limited to, a provisional, substitute, international, international design, continuation, divisional, continuation-in-part, or reissue patent application, as well as any protest, reexamination, petition, appeal, interference, or trial proceeding based on the patent or patent application.
(iv) Participate personally and substantially. (A) Basic requirements. The restrictions of § 11.10(a)(1) apply only to those patents and patent applications in which a former Office employee had “personal and substantial participation,” exercised “through decision, approval, disapproval, recommendation, the rendering of advice, investigation or otherwise.” To participate personally means directly, and includes the participation of a subordinate when actually directed by the former Office employee in the patent or patent application. Substantially means that the employee’s involvement must be of significance to the matter, or form a basis for a reasonable appearance of such significance. It requires more than official responsibility, knowledge, perfunctory involvement, or involvement on an administrative or peripheral issue. A finding of substantiality should be based not only on the effort devoted to a patent or patent application, but also on the importance of the effort. While a series of peripheral involvements may be insubstantial, the single act of approving or participation in a critical step may be substantial. It is essential that the participation be related to a “particular patent or patent application.” ( See paragraph (b)(3)(iii) of this section.)
(B) Participation on ancillary matters. An Office employee’s participation on subjects not directly involving the substantive merits of a patent or patent application may not be “substantial,” even if it is time-consuming. An employee whose official responsibility is the review of a patent or patent application solely for compliance with administrative control or budgetary considerations and who reviews a particular patent or patent application for such a purpose should not be regarded as having participated substantially in the patent or patent application, except when such considerations also are the subject of the employee’s proposed representation.
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(C) Role of official responsibility in determining substantial participation. Official responsibility is defined in paragraph (b)(3)(v) of this section. “Personal and substantial participation” is different from “official responsibility.” One’s responsibility may, however, play a role in determining the “substantiality” of an Office employee’s participation.
(v) Official responsibility means the direct administrative or operating authority, whether intermediate or final, and either exercisable alone or with others, and either personally or through subordinates, to approve, disapprove, or otherwise direct Government actions.
(A) Determining official responsibility. Ordinarily, those areas assigned by statute, regulation, Executive Order, job description, or delegation of authority determine the scope of an employee’s “official responsibility”. All particular matters under consideration in the Office are under the “official responsibility” of the Director of the Office, and each is under that of any intermediate supervisor having responsibility for an employee who actually participates in the patent or patent application within the scope of his or her duties. A patent examiner would have “official responsibility” for the patent applications assigned to him or her.
(B) Ancillary matters and official responsibility. Administrative authority as used in paragraph (v) of this section means authority for planning, organizing and controlling a patent or patent application rather than authority to review or make decisions on ancillary aspects of a patent or patent application such as the regularity of budgeting procedures, public or community relations aspects, or equal employment opportunity considerations. Responsibility for such an ancillary consideration does not constitute official responsibility for the particular patent or patent application, except when such a consideration is also the subject of the employee’s proposed representation.
(C) Duty to inquire. In order for a former employee, e.g., former patent examiner, to be barred from representing or assisting in representing another as to a particular patent or patent application, he or she need not have known, while employed by the Office, that the patent or patent application was pending under his or her official responsibility. The former employee has a
reasonable duty of inquiry to learn whether the patent or patent application had been under his or her official responsibility. Ordinarily, a former employee who is asked to represent another on a patent or patent application will become aware of facts sufficient to suggest the relationship of the prior matter to his or her former office, e.g., technology center, group or art unit. If so, he or she is under a duty to make further inquiry. It would be prudent for an employee to maintain a record of only patent application numbers of the applications actually acted upon by decision or recommendation, as well as those applications under the employee’s official responsibility which he or she has not acted upon.
(D) Self-disqualification. A former employee, e.g., former patent examiner, cannot avoid the restrictions of this section through self-disqualification with respect to a patent or patent application for which he or she otherwise had official responsibility. However, an employee who through self-disqualification does not participate personally and substantially in a particular patent or patent application is not subject to the lifetime restriction of paragraph (b)(1) of this section.
(vi) Pending means that the matter was in fact referred to or under consideration by persons within the employee’s area of official responsibility.
(4) Measurement of the two-year restriction period. The two-year period under paragraph (b)(2) of this section is measured from the date when the employee’s official responsibility in a particular area ends, not from the termination of service in the Office, unless the two occur simultaneously. The prohibition applies to all particular patents or patent applications subject to such official responsibility in the one-year period before termination of such responsibility.
(c) Former employees of the Office. This section imposes restrictions generally parallel to those imposed in 18 U.S.C. 207(a) and (b)(1). This section, however, does not interpret these statutory provisions or any other post-employment restrictions that may apply to former Office employees, and such former employees should not assume that conduct not prohibited by this section is otherwise permissible. Former employees of the Office, whether or not they are practitioners, are encouraged to contact the Department of Commerce for
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information concerning applicable post-employment restrictions.
(d) An employee of the Office may not prosecute or aid in any manner in the prosecution of any patent application before the Office.
(e) Practice before the Office by Government employees is subject to any applicable conflict of interest laws, regulations or codes of professional responsibility.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (b)(3)(iii) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (b)(3)(iii) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 11.11 Administrative suspension, inactivation, resignation, and readmission.
(a) Contact information.
(1) A registered practitioner must notify the OED Director of his or her postal address for his or her office, up to three email addresses where he or she receives email, and a business telephone number, as well as every change to any of said addresses or telephone number within thirty days of the date of the change. A registered practitioner shall, in addition to any notice of change of address and telephone number filed in individual patent applications, separately file written notice of the change of address or telephone number to the OED Director. A registered practitioner who is an attorney in good standing with the bar of the highest court of one or more States shall provide the OED Director with the State bar identification number associated with each membership. The OED Director shall publish from the roster a list containing the name, postal business addresses, business telephone number, registration number, and registration status as an attorney or agent of each registered practitioner recognized to practice before the Office in patent cases.
(2) A letter may be addressed to any registered practitioner, at the address of which separate notice was last received by the OED Director, for the purpose of ascertaining whether such practitioner desires to remain on the register. Any registered practitioner failing to reply and give any information requested by the OED Director within a time limit specified will be subject to
administrative suspension under paragraph (b) of this section.
(b) Administrative suspension.
(1) Whenever it appears that a registered practitioner or a person granted limited recognition under § 11.9(b) has failed to comply with § 11.8(d) or paragraph (a)(2) of this section, the OED Director shall publish and send a notice to the registered practitioner or person granted limited recognition advising of the noncompliance, the consequence of being administratively suspended under paragraph (b)(5) of this section if noncompliance is not timely remedied, and the requirements for reinstatement under paragraph (f) of this section. The notice shall be published and sent to the registered practitioner or person granted limited recognition by mail to the last postal address furnished under paragraph (a) of this section or by email addressed to the last email addresses furnished under paragraph (a) of this section. The notice shall demand compliance and payment of a delinquency fee set forth in § 1.21(a)(9)(i) of this subchapter within sixty days after the date of such notice.
(2) In the event a registered practitioner or person granted limited recognition fails to comply with the notice of paragraph (b)(1) of this section within the time allowed, the OED Director shall publish and send in the manner provided for in paragraph (b)(1) of this section to the registered practitioner or person granted limited recognition a Rule to Show Cause why his or her registration or recognition should not be administratively suspended, and he or she no longer be permitted to practice before the Office in patent matters or in any way hold himself or herself out as being registered or authorized to practice before the Office in patent matters. The OED Director shall file a copy of the Rule to Show Cause with the USPTO Director.
(3) Within 30 days of the OED Director's sending the Rule to Show Cause identified in paragraph (b)(2) of this section, the registered practitioner or person granted limited recognition may file a response to the Rule to Show Cause with the USPTO Director. The response must set forth the factual and legal bases why the person should not be administratively suspended. The registered practitioner or person granted limited recognition shall serve the OED Director with a copy of the response at the time it is filed with the USPTO
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Director. Within ten days of receiving a copy of the response, the OED Director may file a reply with the USPTO Director that includes documents demonstrating that the notice identified in paragraph (b)(1) of this section was published and sent to the practitioner in accordance with paragraph (b)(1) of this section. A copy of the reply by the OED Director shall be served on the registered practitioner or person granted limited recognition. When acting on the Rule to Show Cause, if the USPTO Director determines that there are no genuine issues of material fact regarding the Office's compliance with the notice requirements under this section or the failure of the person to pay the requisite fees, the USPTO Director shall enter an order administratively suspending the registered practitioner or person granted limited recognition. Otherwise, the USPTO Director shall enter an appropriate order dismissing the Rule to Show Cause. Nothing herein shall permit an administratively suspended registered practitioner or person granted limited recognition to seek a stay of the administrative suspension during the pendency of any review of the USPTO Director's final decision.
(4) [Reserved]
(5) An administratively suspended registered practitioner or person granted limited recognition is subject to investigation and discipline for his or her conduct prior to, during, or after the period he or she was administratively suspended.
(6) An administratively suspended registered practitioner or person granted limited recognition is prohibited from practicing before the Office in patent cases while administratively suspended. A registered practitioner or person granted limited recognition who knows he or she has been administratively suspended under this section will be subject to discipline for failing to comply with the provisions of this paragraph (b).
(c) Administrative Inactivation.
(1) Any registered practitioner who shall become employed by the Office shall comply with § 11.116 for withdrawal from the applications, patents, and trademark matters wherein he or she represents an applicant or other person, and notify the OED Director in writing of said employment on the first day of said employment. The name of any registered practitioner employed by the Office shall
be endorsed on the roster as administratively inactive. Upon separation from the Office, the administratively inactive practitioner may request reactivation by completing and filing an application, Data Sheet, signing a written undertaking required by § 11.10, and paying the fee set forth in § 1.21(a)(1)(i) of this subchapter. An administratively inactive practitioner remains subject to the provisions of the USPTO Rules of Professional Conduct and to proceedings and sanctions under §§ 11.19 through 11.58 for conduct that violates a provision of the USPTO Rules of Professional Conduct prior to or during employment at the Office. If, within 30 days after separation from the Office, the registered practitioner does not request active status or another status, the registered practitioner will be endorsed on the roster as voluntarily inactive and be subject to the provisions of paragraph (d) of this section.
(2) Any registered practitioner who is a judge of a court of record, full-time court commissioner, U.S. bankruptcy judge, U.S. magistrate judge, or a retired judge who is eligible for temporary judicial assignment and is not engaged in the practice of law may request, in writing, that his or her name be endorsed on the roster as administratively inactive. Upon acceptance of the request, the OED Director shall endorse the name of the practitioner as administratively inactive. Following separation from the bench, the practitioner may request restoration to active status by completing and filing an application, Data Sheet, and signing a written undertaking required by§ 11.10.
(d) Voluntary Inactivation.
(1) Except as provided in paragraph (d)(4) of this section, any registered practitioner may voluntarily enter inactive status by filing a request, in writing, that his or her name be endorsed on the roster as voluntarily inactive. Upon acceptance of the request, the OED Director shall endorse the name as voluntarily inactive.
(2) [Reserved]
(3) A registered practitioner who seeks or enters into voluntary inactive status is subject to investigation and discipline for his or her conduct prior to, during, or after the period of his or her inactivation.
(4) [Reserved]
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(5) A registered practitioner in voluntary inactive status is prohibited from practicing before the Office in patent cases while in voluntary inactive status. A registered practitioner in voluntary inactive status will be subject to discipline for failing to comply with the provisions of this paragraph. Upon acceptance of the request for voluntary inactive status, the practitioner must comply with the provisions of § 11.116.
(6) Any registered practitioner whose name has been endorsed as voluntarily inactive pursuant to paragraph (d)(1) of this section and is not under investigation and not subject to a disciplinary proceeding may be restored to active status on the register as may be appropriate provided that the practitioner files a written request for restoration, a completed application for registration on a form supplied by the OED Director furnishing all requested information and material, including information and material pertaining to the practitioner's moral character and reputation under § 11.7(a)(2)(i) during the period of inactivation, a declaration or affidavit attesting to the fact that the practitioner has read the most recent revisions of the patent laws and the rules of practice before the Office, and pays the fees set forth in § 1.21(a)(7)(iii) and (iv) of this subchapter.
(e) Resignation. A registered practitioner or a practitioner recognized under § 11.14(c), who is not under investigation under § 11.22 for a possible violation of the USPTO Rules of Professional Conduct, subject to discipline under §§ 11.24 or 11.25, or a practitioner against whom probable cause has been found by a panel of the Committee on Discipline under § 11.23(b), may resign by notifying the OED Director in writing that he or she desires to resign. Upon acceptance in writing by the OED Director of such notice, that registered practitioner or practitioner under § 11.14 shall no longer be eligible to practice before the Office in patent matters but shall continue to file a change of address for five years thereafter in order that he or she may be located in the event information regarding the practitioner’s conduct comes to the attention of the OED Director or any grievance is made about his or her conduct while he or she engaged in practice before the Office. The name of any registered practitioner whose resignation is accepted shall be removed from the register, endorsed as resigned, and notice thereof published in the Official Gazette.
Upon acceptance of the resignation by the OED Director, the registered practitioner must comply with the provisions of § 11.116.
(f) Administrative reinstatement.
(1) Any registered practitioner who has been administratively suspended pursuant to paragraph (b) of this section, or who has resigned pursuant to paragraph (e) of this section, may be reinstated on the register provided the practitioner has applied for reinstatement on an application form supplied by the OED Director, demonstrated compliance with the provisions of § 11.7(a)(2)(i) and (iii), and paid the fees set forth in § 1.21(a)(9)(i) and (a)(9)(ii) of this subchapter. Any person granted limited recognition who has been administratively suspended pursuant to paragraph (b) of this section may have their recognition reactivated provided the practitioner has applied for reinstatement on an application form supplied by the OED Director, demonstrated compliance with the provisions of § 11.7(a)(2)(i) and (iii), and paid the fees set forth in § 1.21(a)(9)(i) and (a)(9)(ii) of this subchapter. A practitioner who has resigned or was administratively suspended for two or more years before the date the Office receives a completed application from the person who resigned or was administratively suspended must also pass the registration examination under § 11.7(b)(1)(ii). Any reinstated practitioner is subject to investigation and discipline for his or her conduct that occurred prior to, during, or after the period of his or her administrative suspension or resignation.
(2) Any registered practitioner whose registration has been administratively inactivated pursuant to paragraph (c) of this section may be reinstated to the register as may be appropriate provided within two years after his or her employment with the Office ceases or within two years after his or her employment in a judicial capacity ceases the following is filed with the OED Director: a request for reinstatement, a completed application for registration on a form supplied by the OED Director furnishing all requested information and material, and the fee set forth in § 1.21(a)(9)(ii) of this subchapter. Any registered practitioner inactivated or reinstated is subject to investigation and discipline for his or her conduct before, during, or after the period of his or her inactivation.
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[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004; revised, 73 FR 67750, Nov. 17, 2008, effective Dec. 17, 2008; paras. (a), (b), and (c) revised, paras. (d)(2) and (d)(4) removed and reserved, and paras. (d)(5), (d)(6), (e) and (f)(1) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.12 -11.13 [Reserved]
§ 11.14 Individuals who may practice before the Office in trademark and other non-patent matters.
(a) Attorneys. Any individual who is an attorney as defined in § 11.1 may represent others before the Office in trademark and other non-patent matters. An attorney is not required to apply for registration or recognition to practice before the Office in trademark and other non-patent matters. Registration as a patent practitioner does not itself entitle an individual to practice before the Office in trademark matters.
(b) Non-lawyers. Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent matters, except that individuals not attorneys who were recognized to practice before the Office in trademark matters under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark matters. Except as provided in the preceding sentence, registration as a patent agent does not itself entitle an individual to practice before the Office in trademark matters.
(c) Foreigners. Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided: the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph shall continue
only during the period that the conditions specified in this paragraph obtain.
(d) Recognition of any individual under this section shall not be construed as sanctioning or authorizing the performance of any act regarded in the jurisdiction where performed as the unauthorized practice of law.
(e) No individual other than those specified in paragraphs (a), (b), and (c) of this section will be permitted to practice before the Office in trademark matters on behalf of a client. Any individual may appear in a trademark or other non-patent matter in his or her own behalf. Any individual may appear in a trademark matter for:
(1) A firm of which he or she is a member,
(2) A partnership of which he or she is a partner, or
(3) A corporation or association of which he or she is an officer and which he or she is authorized to represent, if such firm, partnership, corporation, or association is a party to a trademark proceeding pending before the Office.
(f) Application for reciprocal recognition. An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by § 1.21(a)(1)(i) of this subchapter.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.15 Refusal to recognize a practitioner.
Any practitioner authorized to appear before the Office may be suspended, excluded, or reprimanded in accordance with the provisions of this Part. Any practitioner who is suspended or excluded under this Part shall not be entitled to practice before the Office in patent, trademark, or other non-patent matters while suspended or excluded.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.16
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-11.17 [Reserved]
§ 11.18 Signature and certificate for correspondence filed in the Office.
(a) For all documents filed in the Office in patent, trademark, and other non-patent matters, and all documents filed with a hearing officer in a disciplinary proceeding, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed or inserted by such practitioner, in compliance with § 1.4(d) or § 2.193(a) of this chapter.
(b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
(c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of—
(1) Striking the offending paper;
(2) Referring a practitioner’s conduct to the Director of Enrollment and Discipline for appropriate action;
(3) Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
(4) Affecting the weight given to the offending paper; or
(5) Terminating the proceedings in the Office.
(d) Any practitioner violating the provisions of this section may also be subject to disciplinary action.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
Subpart C — Investigations and Disciplinary Proceedings; Jurisdiction, Sanctions, Investigations, and Proceedings
§ 11.19 Disciplinary jurisdiction; Jurisdiction to transfer to disability inactive status.
(a) All practitioners engaged in practice before the Office; all practitioners administratively suspended; all practitioners registered to practice before the Office in patent cases; all practitioners inactivated; all practitioners authorized under § 11.6(d) to take testimony; and all practitioners
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§ 11.19PATENT RULES
transferred to disability inactive status, reprimanded, suspended, or excluded from the practice of law by a duly constituted authority, including by the USPTO Director, are subject to the disciplinary jurisdiction of the Office. Practitioners who have resigned shall also be subject to such jurisdiction with respect to conduct undertaken prior to the resignation and conduct in regard to any practice before the Office following the resignation.A person not registered or recognized to practice before the Office is also subject to the disciplinary authority of the Office if the person provides or offers to provide any legal services before the Office.
(b) Grounds for discipline; Grounds for transfer to disability inactive status. The following, whether done individually by a practitioner or in concert with any other person or persons and whether or not done in the course of providing legal services to a client, or in a matter pending before the Office, constitute grounds for discipline or grounds for transfer to disability inactive status.
(1) Grounds for discipline include:
(i) Conviction of a serious crime;
(ii) Discipline on ethical grounds imposed in another jurisdiction or disciplinary disqualification from participating in or appearing before any Federal program or agency;
(iii) Failure to comply with any order of a Court disciplining a practitioner, or any final decision of the USPTO Director in a disciplinary matter;
(iv) Violation of any USPTO Rule of Professional Conduct; or
(v) Violation of the oath or declaration taken by the practitioner. See § 11.8.
(2) Grounds for transfer to disability inactive status include:
(i) Being transferred to disability inactive status in another jurisdiction;
(ii) Being judicially declared incompetent, being judicially ordered to be involuntarily committed after a hearing on the grounds of insanity, incompetency or disability, or being placed by court order under guardianship or conservatorship; or
(iii) Filing a motion requesting a disciplinary proceeding be held in abeyance because
the practitioner is suffering from a disability or addiction that makes it impossible for the practitioner to adequately defend the charges in the disciplinary proceeding.
(c) Petitions to disqualify a practitioner in ex parte or inter partes matters in the Office are not governed by §§ 11.19 through 11.60 and will be handled on a case-by-case basis under such conditions as the USPTO Director deems appropriate.
(d) The OED Director may refer the existence of circumstances suggesting unauthorized practice of law to the authorities in the appropriate jurisdiction(s).
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; paras. (a) and (b)(1)(iv) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.20 Disciplinary sanctions; Transfer to disability inactive status.
(a) Types of discipline. The USPTO Director, after notice and opportunity for a hearing, and where grounds for discipline exist, may impose on a practitioner the following types of discipline:
(1) Exclusion from practice before the Office;
(2) Suspension from practice before the Office for an appropriate period of time;
(3) Reprimand or censure; or
(4) Probation. Probation may be imposed in lieu of or in addition to any other disciplinary sanction. Any conditions of probation shall be stated in writing in the order imposing probation. The order shall also state whether, and to what extent, the practitioner shall be required to notify clients of the probation. Violation of any condition of probation shall be cause for imposition of the disciplinary sanction. Imposition of the disciplinary sanction predicated upon violation of probation shall occur only after an order to show cause why the disciplinary sanction should not be imposed is resolved adversely to the practitioner.
(b) Conditions imposed with discipline. When imposing discipline, the USPTO Director may condition reinstatement upon the practitioner making restitution, successfully completing a professional responsibility course or examination, or any other
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condition deemed appropriate under the circumstances.
(c) Transfer to disability inactive status. The USPTO Director, after notice and opportunity for a hearing may, and where grounds exist to believe a practitioner has been transferred to disability inactive status in another jurisdiction, or has been judicially declared incompetent; judicially ordered to be involuntarily committed after a hearing on the grounds of incompetency or disability, or placed by court order under guardianship or conservatorship, transfer the practitioner to disability inactive status.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; paras. (a)(4) and (b) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.21 Warnings.
A warning is neither public nor a disciplinary sanction. The OED Director may conclude an investigation with the issuance of a warning. The warning shall contain a brief statement of facts and USPTO Rules of Professional Conduct relevant to the facts.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.22 Disciplinary Investigations.
(a) The OED Director is authorized to investigate possible grounds for discipline. An investigation may be initiated when the OED Director receives a grievance, information or evidence from any source suggesting possible grounds for discipline. Neither unwillingness nor neglect by a grievant to prosecute a charge, nor settlement, compromise, or restitution with the grievant, shall in itself justify abatement of an investigation.
(b) Any person possessing information or evidence concerning possible grounds for discipline of a practitioner may report the information or evidence to the OED Director. The OED Director may request that the report be presented in the form of an affidavit or declaration.
(c) [Reserved]
(d) Preliminary screening of information or evidence. The OED Director shall examine all
information or evidence concerning possible grounds for discipline of a practitioner.
(e) Notification of investigation. The OED Director shall notify the practitioner in writing of the initiation of an investigation into whether a practitioner has engaged in conduct constituting possible grounds for discipline.
(f) Request for information and evidence by OED Director.
(1) In the course of the investigation, the OED Director may request information and evidence regarding possible grounds for discipline of a practitioner from:
(i) The grievant,
(ii) The practitioner, or
(iii) Any person who may reasonably be expected to provide information and evidence needed in connection with the grievance or investigation.
(2) The OED Director may request information and evidence regarding possible grounds for discipline of a practitioner from a non-grieving client either after obtaining the consent of the practitioner or upon a finding by a Contact Member of the Committee on Discipline, appointed in accordance with § 11.23(d), that good cause exists to believe that the possible ground for discipline alleged has occurred with respect to non-grieving clients. Neither a request for, nor disclosure of, such information shall constitute a violation of any USPTO Rules of Professional Conduct.
(g) Where the OED Director makes a request under paragraph (f)(2) of this section to a Contact Member of the Committee on Discipline, such Contact Member shall not, with respect to the practitioner connected to the OED Director’s request, participate in the Committee on Discipline panel that renders a probable cause determination under paragraph (b)(1) of this section concerning such practitioner, and that forwards the probable cause finding and recommendation to the OED Director under paragraph (b)(2) of this section.
(h) Disposition of investigation. Upon the conclusion of an investigation, the OED Director may:
(1) Close the investigation without issuing a warning, or taking disciplinary action;
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(2) Issue a warning to the practitioner;
(3) Institute formal charges upon the approval of the Committee on Discipline; or
(4) Enter into a settlement agreement with the practitioner and submit the same for approval of the USPTO Director.
(i) Closing investigation. The OED Director shall terminate an investigation and decline to refer a matter to the Committee on Discipline if the OED Director determines that:
(1) The information or evidence is unfounded;
(2) The information or evidence relates to matters not within the jurisdiction of the Office;
(3) As a matter of law, the conduct about which information or evidence has been obtained does not constitute grounds for discipline, even if the conduct may involve a legal dispute; or
(4) The available evidence is insufficient to conclude that there is probable cause to believe that grounds exist for discipline.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (c) removed and reserved, 77 FR 45247, July 31, 2012, effective August 30, 2012; section heading, para. (f)(2), and para. (i) introductory text revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.23 Committee on Discipline.
(a) The USPTO Director shall appoint a Committee on Discipline. The Committee on Discipline shall consist of at least three employees of the Office. None of the Committee members shall report directly or indirectly to the OED Director or any employee designated by the USPTO Director to decide disciplinary matters. Each Committee member shall be a member in good standing of the bar of the highest court of a State. The Committee members shall select a Chairperson from among themselves. Three Committee members will constitute a panel of the Committee.
(b) Powers and duties of the Committee on Discipline. The Committee shall have the power and duty to:
(1) Meet in panels at the request of the OED Director and, after reviewing evidence presented by the OED Director, by majority vote of the panel,
determine whether there is probable cause to bring charges under § 11.32 against a practitioner; and
(2) Prepare and forward its own probable cause findings and recommendations to the OED Director.
(c) No discovery shall be authorized of, and no member of the Committee on Discipline shall be required to testify about deliberations of, the Committee on Discipline or of any panel.
(d) The Chairperson shall appoint the members of the panels and a Contact Member of the Committee on Discipline.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.24 Reciprocal discipline.
(a) Notification of OED Director. Within thirty days of being publicly censured, publicly reprimanded, subjected to probation, disbarred or suspended by another jurisdiction, or being disciplinarily disqualified from participating in or appearing before any Federal program or agency, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of the same. A practitioner is deemed to be disbarred if he or she is disbarred, excluded on consent, or has resigned in lieu of a disciplinary proceeding. Upon receiving notification from any source or otherwise learning that a practitioner subject to the disciplinary jurisdiction of the Office has been so publicly censured, publicly reprimanded, subjected to probation, disbarred, suspended or disciplinarily disqualified, the OED Director shall obtain a certified copy of the record or order regarding the public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification and file the same with the USPTO Director. The OED Director shall, in addition, without Committee on Discipline authorization, file with the USPTO Director a complaint complying with § 11.34 against the practitioner predicated upon the public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification. The OED Director shall request the USPTO Director to issue a notice and order as set forth in paragraph (b) of this section.
(b) Notification served on practitioner. Upon receipt of a certified copy of the record or order
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regarding the practitioner being so publicly censured, publicly reprimanded, subjected to probation, disbarred, suspended or disciplinarily disqualified together with the complaint, the USPTO Director shall issue a notice directed to the practitioner in accordance with § 11.35 and to the OED Director containing:
(1) A copy of the record or order regarding the public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification;
(2) A copy of the complaint; and
(3) An order directing the practitioner to file a response with the USPTO Director and the OED Director, within forty days of the date of the notice establishing a genuine issue of material fact predicated upon the grounds set forth in paragraphs (d)(1)(i) through (d)(1)(iv) of this section that the imposition of the identical public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification would be unwarranted and the reasons for that claim.
(c) Effect of stay in another jurisdiction. In the event the public censure, public reprimand, probation, disbarment, suspension imposed by another jurisdiction or disciplinary disqualification imposed in the Federal program or agency has been stayed, any reciprocal discipline imposed by the USPTO may be deferred until the stay expires.
(d) Hearing and discipline to be imposed.
(1) The USPTO Director shall hear the matter on the documentary record unless the USPTO Director determines that an oral hearing is necessary. After expiration of the forty days from the date of the notice pursuant to provisions of paragraph (b) of this section, the USPTO Director shall consider any timely filed response and shall impose the identical public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification unless the practitioner clearly and convincingly demonstrates, and the USPTO Director finds there is a genuine issue of material fact that:
(i) The procedure elsewhere was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process;
(ii) There was such infirmity of proof establishing the conduct as to give rise to the clear conviction that the Office could not, consistently
with its duty, accept as final the conclusion on that subject;
(iii) The imposition of the same public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification by the Office would result in grave injustice; or
(iv) Any argument that the practitioner was not publicly censured, publicly reprimanded, placed on probation, disbarred, suspended or disciplinarily disqualified.
(2) If the USPTO Director determines that there is no genuine issue of material fact, the USPTO Director shall enter an appropriate final order. If the USPTO Director is unable to make such determination because there is a genuine issue of material fact, the USPTO Director shall enter an appropriate order:
(i) Referring the complaint to a hearing officer for a formal hearing and entry of an initial decision in accordance with the other rules in this part, and
(ii) Directing the practitioner to file an answer to the complaint in accordance with § 11.36.
(e) Adjudication in another jurisdiction or Federal agency or program. In all other respects, a final adjudication in another jurisdiction or Federal agency or program that a practitioner, whether or not admitted in that jurisdiction, has been guilty of misconduct shall establish a prima facie case by clear and convincing evidence that the practitioner has engaged in misconduct under § 11.804.
(f) Reciprocal discipline —action where practice has ceased. Upon request by the practitioner, reciprocal discipline may be imposed nunc pro tunc only if the practitioner promptly notified the OED Director of his or her censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification in another jurisdiction, and establishes by clear and convincing evidence that the practitioner voluntarily ceased all activities related to practice before the Office and complied with all provisions of § 11.58. The effective date of any public censure, public reprimand, probation, suspension, disbarment or disciplinary disqualification imposed nunc pro tunc shall be the date the practitioner voluntarily ceased all activities related to practice before the Office and complied with all provisions of § 11.58.
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§ 11.24PATENT RULES
(g) Reinstatement following reciprocal discipline proceeding. A practitioner may petition for reinstatement under conditions set forth in § 11.60 no sooner than completion of the period of reciprocal discipline imposed, and compliance with all provisions of § 11.58.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (e) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.25 Interim suspension and discipline based upon conviction of committing a serious crime.
(a) Notification of OED Director. Upon being convicted of a crime in a court of the United States, any State, or a foreign country, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of the same within thirty days from the date of such conviction. Upon being advised or learning that a practitioner subject to the disciplinary jurisdiction of the Office has been convicted of a crime, the OED Director shall make a preliminary determination whether the crime constitutes a serious crime warranting interim suspension. If the crime is a serious crime, the OED Director shall file with the USPTO Director proof of the conviction and request the USPTO Director to issue a notice and order set forth in paragraph (b)(2) of this section. The OED Director shall in addition, without Committee on Discipline authorization, file with the USPTO Director a complaint against the practitioner complying with § 11.34 predicated upon the conviction of a serious crime. If the crime is not a serious crime, the OED Director shall process the matter in the same manner as any other information or evidence of a possible violation of any USPTO Rule of Professional Conduct coming to the attention of the OED Director.
(b) Interim suspension and referral for disciplinary proceeding. All proceedings under this section shall be handled as expeditiously as possible.
(1) The USPTO Director has authority to place a practitioner on interim suspension after hearing the request for interim suspension on the documentary record.
(2) Notification served on practitioner. Upon receipt of a certified copy of the court record, docket entry or judgment demonstrating that the
practitioner has been so convicted together with the complaint, the USPTO Director shall forthwith issue a notice directed to the practitioner in accordance with §§ 11.35(a), (b), or (c), and to the OED Director, containing:
(i) A copy of the court record, docket entry, or judgment of conviction;
(ii) A copy of the complaint; and
(iii) An order directing the practitioner to file a response with the USPTO Director and the OED Director, within forty days of the date of the notice, establishing that there is a genuine issue of material fact that the crime did not constitute a serious crime, the practitioner is not the individual found guilty of the crime, or that the conviction was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process.
(3) Hearing and final order on request for interim suspension. The request for interim suspension shall be heard by the USPTO Director on the documentary record unless the USPTO Director determines that the practitioner’s response establishes a genuine issue of material fact that: The crime did not constitute a serious crime, the practitioner is not the person who committed the crime, or that the conviction was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process. If the USPTO Director determines that there is no genuine issue of material fact regarding the defenses set forth in the preceding sentence, the USPTO Director shall enter an appropriate final order regarding the OED Director’s request for interim suspension regardless of the pendency of any criminal appeal. If the USPTO Director is unable to make such determination because there is a genuine issue of material fact, the USPTO Director shall enter a final order dismissing the request and enter a further order referring the complaint to a hearing officer for a hearing and entry of an initial decision in accordance with the other rules in this part and directing the practitioner to file an answer to the complaint in accordance with § 11.36.
(4) Termination. The USPTO Director has authority to terminate an interim suspension. In the interest of justice, the USPTO Director may terminate an interim suspension at any time upon a showing of extraordinary circumstances, after affording the OED Director an opportunity to
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respond to the request to terminate interim suspension.
(5) Referral for disciplinary proceeding. Upon entering a final order imposing interim suspension, the USPTO Director shall refer the complaint to a hearing officer to conduct a formal disciplinary proceeding. The formal disciplinary proceeding, however, shall be stayed by the hearing officer until all direct appeals from the conviction are concluded. Review of the initial decision of the hearing officer shall be pursuant to § 11.55.
(c) Proof of conviction and guilt—(1) Conviction in the United States. For purposes of a hearing for interim suspension and a hearing on the formal charges in a complaint filed as a consequence of the conviction, a certified copy of the court record, docket entry, or judgment of conviction in a court of the United States or any State shall establish a prima facie case by clear and convincing evidence that the practitioner was convicted of a serious crime and that the conviction was not lacking in notice or opportunity to be heard as to constitute a deprivation of due process.
(2) Conviction in a foreign country. For purposes of a hearing for interim suspension and on the formal charges filed as a result of a finding of guilt, a certified copy of the court record, docket entry, or judgment of conviction in a court of a foreign country shall establish a prima facie case by clear and convincing evidence that the practitioner was convicted of a serious crime and that the conviction was not lacking in notice or opportunity to be heard as to constitute a deprivation of due process. However, nothing in this paragraph shall preclude the practitioner from demonstrating by clear and convincing evidence in any hearing on a request for interim suspension there is a genuine issue of material fact to be considered when determining if the elements of a serious crime were committed in violating the criminal law of the foreign country and whether a disciplinary sanction should be entered.
(d) Crime determined not to be serious crime. If the USPTO Director determines that the crime is not a serious crime, the complaint shall be referred to the OED Director for investigation under § 11.22 and processing as is appropriate.
(e) Reinstatement—(1) Upon reversal or setting aside a finding of guilt or a conviction. If a
practitioner suspended solely under the provisions of paragraph (b) of this section demonstrates that the underlying finding of guilt or conviction of serious crimes has been reversed or vacated, the order for interim suspension shall be vacated and the practitioner shall be placed on active status unless the finding of guilt was reversed or the conviction was set aside with respect to less than all serious crimes for which the practitioner was found guilty or convicted. The vacating of the interim suspension will not terminate any other disciplinary proceeding then pending against the practitioner, the disposition of which shall be determined by the hearing officer before whom the matter is pending, on the basis of all available evidence other than the finding of guilt or conviction.
(2) Following conviction of a serious crime. Any practitioner convicted of a serious crime and disciplined in whole or in part in regard to that conviction, may petition for reinstatement under conditions set forth in § 11.60 no sooner than five years after being discharged following completion of service of his or her sentence, or after completion of service under probation or parole, whichever is later.
(f) Notice to clients and others of interim suspension. An interim suspension under this section shall constitute a suspension of the practitioner for the purpose of § 11.58.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (a) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.26 Settlement.
Before or after a complaint under § 11.34 is filed, a settlement conference may occur between the OED Director and the practitioner. Any offers of compromise and any statements made during the course of settlement discussions shall not be admissible in subsequent proceedings. The OED Director may recommend to the USPTO Director any settlement terms deemed appropriate, including steps taken to correct or mitigate the matter forming the basis of the action, or to prevent recurrence of the same or similar conduct. A settlement agreement shall be effective only upon entry of a final decision by the USPTO Director.
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[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.27 Exclusion on consent.
(a) Required affidavit. The OED Director may confer with a practitioner concerning possible violations by the practitioner of the Rules of Professional Conduct whether or not a disciplinary proceeding has been instituted. A practitioner who is the subject of an investigation or a pending disciplinary proceeding based on allegations of grounds for discipline, and who desires to resign, may only do so by consenting to exclusion and delivering to the OED Director an affidavit declaring the consent of the practitioner to exclusion and stating:
(1) That the practitioner’s consent is freely and voluntarily rendered, that the practitioner is not being subjected to coercion or duress, and that the practitioner is fully aware of the implications of consenting to exclusion;
(2) That the practitioner is aware that there is currently pending an investigation into, or a proceeding involving allegations of misconduct, the nature of which shall be specifically set forth in the affidavit to the satisfaction of the OED Director;
(3) That the practitioner acknowledges that, if and when he or she applies for reinstatement under § 11.60, the OED Director will conclusively presume, for the limited purpose of determining the application for reinstatement, that:
(i) The facts upon which the investigation or complaint is based are true, and
(ii) The practitioner could not have successfully defended himself or herself against the allegations in the investigation or charges in the complaint.
(b) Action by the USPTO Director. Upon receipt of the required affidavit, the OED Director shall file the affidavit and any related papers with the USPTO Director for review and approval. Upon such approval, the USPTO Director will enter an order excluding the practitioner on consent and providing other appropriate actions. Upon entry of the order, the excluded practitioner shall comply with the requirements set forth in § 11.58.
(c) When an affidavit under paragraph (a) of this section is received after a complaint under §
11.34 has been filed, the OED Director shall notify the hearing officer. The hearing officer shall enter an order transferring the disciplinary proceeding to the USPTO Director, who may enter an order excluding the practitioner on consent.
(d) Reinstatement. Any practitioner excluded on consent under this section may not petition for reinstatement for five years. A practitioner excluded on consent who intends to reapply for admission to practice before the Office must comply with the provisions of § 11.58, and apply for reinstatement in accordance with § 11.60. Failure to comply with the provisions of § 11.58 constitutes grounds for denying an application for reinstatement.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.28 Incapacitated practitioners in a disciplinary proceeding.
(a) Holding in abeyance a disciplinary proceeding because of incapacitation due to a current disability or addiction —
(1) Practitioner’s motion. In the course of a disciplinary proceeding under § 11.32, but before the date set by the hearing officer for a hearing, the practitioner may file a motion requesting the hearing officer to enter an order holding such proceeding in abeyance based on the contention that the practitioner is suffering from a disability or addiction that makes it impossible for the practitioner to adequately defend the charges in the disciplinary proceeding.
(i) Content of practitioner's motion. The practitioner’s motion shall, in addition to any other requirement of § 11.43, include or have attached thereto:
(A) A brief statement of all material facts;
(B) Affidavits, medical reports, official records, or other documents and the opinion of at least one medical expert setting forth and establishing any of the material facts on which the practitioner is relying;
(C) A statement that the practitioner acknowledges the alleged incapacity by reason of disability or addiction;
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(D) Written consent that the practitioner be transferred to disability inactive status if the motion is granted; and
(E) A written agreement by the practitioner to not practice before the Office in patent, trademark or other non-patent cases while on disability inactive status.
(ii) Response. The OED Director’s response to any motion hereunder shall be served and filed within thirty days after service of the practitioner’s motion unless such time is shortened or enlarged by the hearing officer for good cause shown, and shall set forth the following:
(A) All objections, if any, to the actions requested in the motion;
(B) An admission, denial or allegation of lack of knowledge with respect to each of the material facts in the practitioner’s motion and accompanying documents; and
(C) Affidavits, medical reports, official records, or other documents setting forth facts on which the OED Director intends to rely for purposes of disputing or denying any material fact set forth in the practitioner’s papers.
(2) Disposition of practitioner’s motion. The hearing officer shall decide the motion and any response thereto. The motion shall be granted upon a showing of good cause to believe the practitioner to be incapacitated as alleged. If the required showing is made, the hearing officer shall enter an order holding the disciplinary proceeding in abeyance. In the case of addiction to drugs or intoxicants, the order may provide that the practitioner will not be returned to active status absent satisfaction of specified conditions. Upon receipt of the order, the OED Director shall transfer the practitioner to disability inactive status, give notice to the practitioner, cause notice to be published, and give notice to appropriate authorities in the Office that the practitioner has been placed on disability inactive status. The practitioner shall comply with the provisions of § 11.58, and shall not engage in practice before the Office in patent, trademark and other non-patent law until a determination is made of the practitioner’s capability to resume practice before the Office in a proceeding under paragraph (c) or paragraph (d) of this section. A practitioner on disability inactive status must seek permission from the OED Director to engage in an
activity authorized under § 11.58(e). Permission will be granted only if the practitioner has complied with all the conditions of §§ 11.58(a) through 11.58(d) applicable to disability inactive status. In the event that permission is granted, the practitioner shall fully comply with the provisions of § 11.58(e).
(b) Motion for reactivation. Any practitioner transferred to disability inactive status in a disciplinary proceeding may file with the hearing officer a motion for reactivation once a year beginning at any time not less than one year after the initial effective date of inactivation, or once during any shorter interval provided by the order issued pursuant to paragraph (a)(2) of this section or any modification thereof. If the motion is granted, the disciplinary proceeding shall resume under such schedule as may be established by the hearing officer.
(c) Contents of motion for reactivation. A motion by the practitioner for reactivation alleging that a practitioner has recovered from a prior disability or addiction shall be accompanied by all available medical reports or similar documents relating thereto. The hearing officer may require the practitioner to present such other information as is necessary.
(d) OED Director’ s motion to resume disciplinary proceeding held in abeyance. (1) The OED Director, having good cause to believe a practitioner is no longer incapacitated, may file a motion requesting the hearing officer to terminate a prior order holding in abeyance any pending proceeding because of the practitioner’s disability or addiction. The hearing officer shall decide the matter presented by the OED Director’s motion hereunder based on the affidavits and other admissible evidence attached to the OED Director’s motion and the practitioner’s response. The OED Director bears the burden of showing by clear and convincing evidence that the practitioner is able to defend himself or herself. If there is any genuine issue as to one or more material facts, the hearing officer will hold an evidentiary hearing.
(2) The hearing officer, upon receipt of the OED Director’s motion under paragraph (d)(1) of this section, may direct the practitioner to file a response. If the hearing officer requires the practitioner to file a response, the practitioner must present clear and convincing evidence that the prior
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self-alleged disability or addiction continues to make it impossible for the practitioner to defend himself or herself in the underlying proceeding being held in abeyance.
(e) Action by the hearing officer. If, in deciding a motion under paragraph (b) or (d) of this section, the hearing officer determines that there is good cause to believe the practitioner is not incapacitated from defending himself or herself, or is not incapacitated from practicing before the Office, the hearing officer shall take such action as is deemed appropriate, including the entry of an order directing the reactivation of the practitioner and resumption of the disciplinary proceeding.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008 ]
§ 11.29 Reciprocal transfer or initial transfer to disability inactive status.
(a) Notification of OED Director.
(1) Transfer to disability inactive status in another jurisdiction as grounds for reciprocal transfer by the Office. Within thirty days of being transferred to disability inactive status in another jurisdiction, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of the transfer. Upon notification from any source that a practitioner subject to the disciplinary jurisdiction of the Office has been transferred to disability inactive status in another jurisdiction, the OED Director shall obtain a certified copy of the order. The OED Director shall file with the USPTO Director:
(i) The order;
(ii) A request that the practitioner be transferred to disability inactive status, including the specific grounds therefor; and
(iii) A request that the USPTO Director issue a notice and order as set forth in paragraph (b) of this section.
(2) Involuntary commitment, adjudication of incompetency or court ordered placement under guardianship or conservatorship as grounds for initial transfer to disability inactive status. Within thirty days of being judicially declared incompetent, being judicially ordered to be involuntarily committed after a hearing on the grounds of
incompetency or disability, or being placed by court order under guardianship or conservatorship in another jurisdiction, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of such judicial action. Upon notification from any source that a practitioner subject to the disciplinary jurisdiction of the Office has been subject to such judicial action, the OED Director shall obtain a certified copy of the order. The OED Director shall file with the USPTO Director:
(i) The order;
(ii) A request that the practitioner be transferred to disability inactive status, including the specific grounds therefor; and
(iii) A request that the USPTO Director issue a notice and order as set forth in paragraph (b) of this section.
(b) Notice served on practitioner. Upon receipt of a certified copy of an order or declaration issued by another jurisdiction demonstrating that a practitioner subject to the disciplinary jurisdiction of the Office has been transferred to disability inactive status, judicially declared incompetent, judicially ordered to be involuntarily committed after a judicial hearing on the grounds of incompetency or disability, or placed by court order under guardianship or conservatorship, together with the OED Director’s request, the USPTO Director shall issue a notice, comporting with § 11.35, directed to the practitioner containing:
(1) A copy of the order or declaration from the other jurisdiction,
(2) A copy of the OED Director’s request; and
(3) An order directing the practitioner to file a response with the USPTO Director and the OED Director, within 30 days from the date of the notice, establishing a genuine issue of material fact supported by an affidavit and predicated upon the grounds set forth in § 11.29(d)(1) through (4) that a transfer to disability inactive status would be unwarranted and the reasons therefor.
(c) Effect of stay of transfer, judicially declared incompetence, judicially ordered involuntarily commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship. In the event the
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transfer, judicially declared incompetence, judicially ordered involuntary commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship in the other jurisdiction has been stayed there, any reciprocal transfer or transfer by the Office may be deferred until the stay expires.
(d) Hearing and transfer to disability inactive status. The request for transfer to disability inactive status shall be heard by the USPTO Director on the documentary record unless the USPTO Director determines that there is a genuine issue of material fact, in which case the USPTO Director may deny the request. Upon the expiration of 30 days from the date of the notice pursuant to the provisions of paragraph (b) of this section, the USPTO Director shall consider any timely filed response and impose the identical transfer to disability inactive status based on the practitioner’s transfer to disability status in another jurisdiction, or shall transfer the practitioner to disability inactive status based on judicially declared incompetence, judicially ordered involuntary commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship, unless the practitioner demonstrates by clear and convincing evidence, or the USPTO Director finds there is a genuine issue of material fact by clear and convincing evidence that:
(1) The procedure was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process;
(2) There was such infirmity of proof establishing the transfer to disability status, judicial declaration of incompetence, judicial order for involuntary commitment on the grounds of incompetency or disability, or placement by court order under guardianship or conservatorship that the USPTO Director could not, consistent with Office’s duty, accept as final the conclusion on that subject;
(3) The imposition of the same disability status or transfer to disability status by the USPTO Director would result in grave injustice; or
(4) The practitioner is not the individual transferred to disability status, judicially declared incompetent, judicially ordered for involuntary commitment on the grounds of incompetency or
disability, or placed by court order under guardianship or conservatorship.
(5) If the USPTO Director determines that there is no genuine issue of material fact with regard to any of the elements of paragraphs (d)(1) through (4) of this section, the USPTO Director shall enter an appropriate final order. If the USPTO Director is unable to make that determination because there is a genuine issue of material fact, the USPTO Director shall enter an appropriate order dismissing the OED Director’s request for such reason.
(e) Adjudication in other jurisdiction. In all other aspects, a final adjudication in another jurisdiction that a practitioner be transferred to disability inactive status, is judicially declared incompetent, is judicially ordered to be involuntarily committed on the grounds of incompetency or disability, or is placed by court order under guardianship or conservatorship shall establish the disability for purposes of a reciprocal transfer to or transfer to disability status before the Office.
(f) A practitioner who is transferred to disability inactive status under this section shall be deemed to have been refused recognition to practice before the Office for purposes of 35 U.S.C. 32.
(g) Order imposing reciprocal transfer to disability inactive status or order imposing initial transfer to disability inactive status. An order by the USPTO Director imposing reciprocal transfer to disability inactive status, or transferring a practitioner to disability inactive status shall be effective immediately, and shall be for an indefinite period until further order of the USPTO Director. A copy of the order transferring a practitioner to disability inactive status shall be served upon the practitioner, the practitioner’s guardian, and/or the director of the institution to which the practitioner has been committed in the manner the USPTO Director may direct. A practitioner reciprocally transferred or transferred to disability inactive status shall comply with the provisions of § 11.58, and shall not engage in practice before the Office in patent, trademark and other non-patent law unless and until reinstated to active status.
(h) Confidentiality of proceeding; Orders to be public—(1) Confidentiality of proceeding. All proceedings under this section involving allegations of disability of a practitioner shall be kept confidential until and unless the USPTO Director
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enters an order reciprocally transferring or transferring the practitioner to disability inactive status.
(2) Orders to be public. The OED Director shall publicize any reciprocal transfer to disability inactive status or transfer to disability inactive status in the same manner as for the imposition of public discipline.
(i) Employment of practitioners on disability inactive status. A practitioner on disability inactive status must seek permission from the OED Director to engage in an activity authorized under § 11.58(e). Permission will be granted only if the practitioner has complied with all the conditions of §§ 11.58(a) through 11.58(d) applicable to disability inactive status. In the event that permission is granted, the practitioner shall fully comply with the provisions of § 11.58(e).
(j) Reinstatement from disability inactive status. (1) Generally. No practitioner reciprocally transferred or transferred to disability inactive status under this section may resume active status except by order of the OED Director.
(2) Petition. A practitioner reciprocally transferred or transferred to disability inactive status shall be entitled to petition the OED Director for transfer to active status once a year, or at whatever shorter intervals the USPTO Director may direct in the order transferring or reciprocally transferring the practitioner to disability inactive status or any modification thereof.
(3) Examination. Upon the filing of a petition for transfer to active status, the OED Director may take or direct whatever action is deemed necessary or proper to determine whether the incapacity has been removed, including a direction for an examination of the practitioner by qualified medical or psychological experts designated by the OED Director. The expense of the examination shall be paid and borne by the practitioner.
(4) Required disclosure, waiver of privilege. With the filing of a petition for reinstatement to active status, the practitioner shall be required to disclose the name of each psychiatrist, psychologist, physician and hospital or other institution by whom or in which the practitioner has been examined or treated for the disability since the transfer to disability inactive status. The practitioner shall
furnish to the OED Director written consent to the release of information and records relating to the incapacity if requested by the OED Director.
(5) Learning in the law, examination. The OED Director may direct that the practitioner establish proof of competence and learning in law, which proof may include passing the registration examination.
(6) Granting of petition for transfer to active status. The OED Director shall grant the petition for transfer to active status upon a showing by clear and convincing evidence that the incapacity has been removed.
(7) Reinstatement in other jurisdiction. If a practitioner is reciprocally transferred to disability inactive status on the basis of a transfer to disability inactive status in another jurisdiction, the OED Director may dispense with further evidence that the disability has been removed and may immediately direct reinstatement to active status upon such terms as are deemed proper and advisable.
(8) Judicial declaration of competency. If a practitioner is transferred to disability inactive status on the basis of a judicially declared incompetence, judicially ordered involuntary commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship has been declared to be competent, the OED Director may dispense with further evidence that the incapacity to practice law has been removed and may immediately direct reinstatement to active status.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.30 -11.31 [Reserved]
§ 11.32 Instituting a disciplinary proceeding.
If after conducting an investigation under § 11.22(a), the OED Director is of the opinion that grounds exist for discipline under § 11.19(b), the OED Director, after complying where necessary with the provisions of 5 U.S.C. 558(c), may convene a meeting of a panel of the Committee on Discipline. If convened, the panel of the Committee on Discipline shall then determine as specified in §
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11.23(b) whether there is probable cause to bring disciplinary charges. If the panel of the Committee on Discipline determines that probable cause exists to bring charges, the OED Director may institute a disciplinary proceeding by filing a complaint under § 11.34.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.33 [Reserved]
§ 11.34 Complaint.
(a) A complaint instituting a disciplinary proceeding shall:
(1) Name the person who is the subject of the complaint who may then be referred to as the "respondent";
(2) Give a plain and concise description of the respondent’s alleged grounds for discipline;
(3) State the place and time, not less than thirty days from the date the complaint is filed, for filing an answer by the respondent;
(4) State that a decision by default may be entered if an answer is not timely filed by the respondent; and
(5) Be signed by the OED Director.
(b) A complaint will be deemed sufficient if it fairly informs the respondent of any grounds for discipline, and where applicable, the USPTO Rules of Professional Conduct that form the basis for the disciplinary proceeding so that the respondent is able to adequately prepare a defense.
(c) The complaint shall be filed in the manner prescribed by the USPTO Director.
(d) Time for filing a complaint. A complaint shall be filed within one year after the date on which the OED Director receives a grievance forming the basis of the complaint. No complaint shall be filed more than ten years after the date on which the misconduct forming the basis for the proceeding occurred.
(e) Tolling agreements. The one-year period for filing a complaint under paragraph (d) of this section shall be tolled if the involved practitioner
and the OED Director agree in writing to such tolling.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; paras. (d) and (e) added, 77 FR 45247, July 31, 2012, effective August 30, 2012; para. (a) introductory text and paras. (a)(1) and (b) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.35 Service of complaint.
(a) A complaint may be served on a respondent in any of the following methods:
(1) By delivering a copy of the complaint personally to the respondent, in which case the individual who gives the complaint to the respondent shall file an affidavit with the OED Director indicating the time and place the complaint was delivered to the respondent.
(2) By mailing a copy of the complaint by
Priority Mail Express®, first-class mail, or any delivery service that provides ability to confirm delivery or attempted delivery to:
(i) A respondent who is a registered practitioner at the address provided to OED pursuant to § 11.11, or
(ii) A respondent who is not registered at the last address for the respondent known to the OED Director.
(3) By any method mutually agreeable to the OED Director and the respondent.
(4) In the case of a respondent who resides outside the United States, by sending a copy of the complaint by any delivery service that provides ability to confirm delivery or attempted delivery, to:
(i) A respondent who is a registered practitioner at the address provided to OED pursuant to § 11.11; or
(ii) A respondent who is not registered at the last address for the respondent known to the OED Director.
(b) If a copy of the complaint cannot be delivered to the respondent through any one of the procedures in paragraph (a) of this section, the OED Director shall serve the respondent by causing an appropriate notice to be published in the Official Gazette for two consecutive weeks, in which case,
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the time for filing an answer shall be thirty days from the second publication of the notice. Failure to timely file an answer will constitute an admission of the allegations in the complaint in accordance with paragraph (d) of § 11.36, and the hearing officer may enter an initial decision on default.
(c) If the respondent is known to the OED Director to be represented by an attorney under § 11.40(a), a copy of the complaint shall be served on the attorney in lieu of service on the respondent in the manner provided for in paragraph (a) or (b) of this section.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; paras. (a)(2)(ii) and (a)(4)(ii) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013; para. (a)(2) revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014]
§ 11.36 Answer to complaint.
(a) Time for answer. An answer to a complaint shall be filed within the time set in the complaint but in no event shall that time be less than thirty days from the date the complaint is filed.
(b) With whom filed. The answer shall be filed in writing with the hearing officer at the address specified in the complaint. The hearing officer may extend the time for filing an answer once for a period of no more than thirty days upon a showing of good cause, provided a motion requesting an extension of time is filed within thirty days after the date the complaint is served on respondent. A copy of the answer, and any exhibits or attachments thereto, shall be served on the OED Director.
(c) Content. The respondent shall include in the answer a statement of the facts that constitute the grounds of defense and shall specifically admit or deny each allegation set forth in the complaint. The respondent shall not deny a material allegation in the complaint that the respondent knows to be true or state that respondent is without sufficient information to form a belief as to the truth of an allegation, when in fact the respondent possesses that information. The respondent shall also state affirmatively in the answer special matters of defense and any intent to raise a disability as a mitigating factor. If respondent intends to raise a special matter of defense or disability, the answer shall specify the defense or disability, its nexus to the misconduct, and the reason it provides a defense
or mitigation. A respondent who fails to do so cannot rely on a special matter of defense or disability. The hearing officer may, for good cause, allow the respondent to file the statement late, grant additional hearing preparation time, or make other appropriate orders.
(d) Failure to deny allegations in complaint. Every allegation in the complaint that is not denied by a respondent in the answer shall be deemed to be admitted and may be considered proven. The hearing officer at any hearing need receive no further evidence with respect to that allegation.
(e) Default judgment. Failure to timely file an answer will constitute an admission of the allegations in the complaint and may result in entry of default judgment.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.37 [Reserved]
§ 11.38 Contested case.
Upon the filing of an answer by the respondent, a disciplinary proceeding shall be regarded as a contested case within the meaning of 35 U.S.C. 24. Evidence obtained by a subpoena issued under 35 U.S.C. 24 shall not be admitted into the record or considered unless leave to proceed under 35 U.S.C. 24 was previously authorized by the hearing officer.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.39 Hearing officer; appointment; responsibilities; review of interlocutory orders; stays.
(a) Appointment. A hearing officer, appointed by the USPTO Director under 5 U.S.C. 3105 or 35 U.S.C. 32, shall conduct disciplinary proceedings as provided by this Part.
(b) Independence of the Hearing Officer.
(1) A hearing officer appointed in accordance with paragraph (a) of this section shall not be subject to first level or second level supervision by either the USPTO Director or OED Director, or his or her designee.
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(2) A hearing officer appointed in accordance with paragraph (a) of this section shall not be subject to supervision of the person(s) investigating or prosecuting the case.
(3) A hearing officer appointed in accordance with paragraph (a) of this section shall be impartial, shall not be an individual who has participated in any manner in the decision to initiate the proceedings, and shall not have been employed under the immediate supervision of the practitioner.
(4) A hearing officer appointed in accordance with paragraph (a) of this section shall be admitted to practice law and have suitable experience and training conducting hearings, reaching a determination, and rendering an initial decision in an equitable manner.
(c) Responsibilities. The hearing officer shall have authority, consistent with specific provisions of these regulations, to:
(1) Administer oaths and affirmations;
(2) Make rulings upon motions and other requests;
(3) Rule upon offers of proof, receive relevant evidence, and examine witnesses;
(4) Authorize the taking of a deposition of a witness in lieu of personal appearance of the witness before the hearing officer;
(5) Determine the time and place of any hearing and regulate its course and conduct;
(6) Hold or provide for the holding of conferences to settle or simplify the issues;
(7) Receive and consider oral or written arguments on facts or law;
(8) Adopt procedures and modify procedures for the orderly disposition of proceedings;
(9) Make initial decisions under §§ 11.25 and 11.54; and
(10) Perform acts and take measures as necessary to promote the efficient, timely, and impartial conduct of any disciplinary proceeding.
(d) Time for making initial decision. The hearing officer shall set times and exercise control over a disciplinary proceeding such that an initial decision under § 11.54 is normally issued within nine months of the date a complaint is filed. The hearing officer may, however, issue an initial
decision more than nine months after a complaint is filed if there exist circumstances, in his or her opinion, that preclude issuance of an initial decision within nine months of the filing of the complaint.
(e) Review of interlocutory orders. The USPTO Director will not review an interlocutory order of a hearing officer except:
(1) When the hearing officer shall be of the opinion:
(i) That the interlocutory order involves a controlling question of procedure or law as to which there is a substantial ground for a difference of opinion, and
(ii) That an immediate decision by the USPTO Director may materially advance the ultimate termination of the disciplinary proceeding, or
(2) In an extraordinary situation where the USPTO Director deems that justice requires review.
(f) Stays pending review of interlocutory order. If the OED Director or a respondent seeks review of an interlocutory order of a hearing officer under paragraph (b)(2) of this section, any time period set by the hearing officer for taking action shall not be stayed unless ordered by the USPTO Director or the hearing officer.
(g) The hearing officer shall engage in no ex parte discussions with any party on the merits of the complaint, beginning with appointment and ending when the final agency decision is issued.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.40 Representative for OED Director or respondent.
(a) A respondent may represent himself or herself, or be represented by an attorney before the Office in connection with an investigation or disciplinary proceeding. The attorney shall file a written declaration that he or she is an attorney within the meaning of § 11.1 and shall state:
(1) The address to which the attorney wants correspondence related to the investigation or disciplinary proceeding sent, and
(2) A telephone number where the attorney may be reached during normal business hours.
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(b) The Deputy General Counsel for Intellectual Property and Solicitor, and attorneys in the Office of the Solicitor shall represent the OED Director. The attorneys representing the OED Director in disciplinary proceedings shall not consult with the USPTO Director, the General Counsel, the Deputy General Counsel for General Law, or an individual designated by the USPTO Director to decide disciplinary matters regarding the proceeding. The General Counsel and the Deputy General Counsel for General Law shall remain screened from the investigation and prosecution of all disciplinary proceedings in order that they shall be available as counsel to the USPTO Director in deciding disciplinary proceedings unless access is appropriate to perform their duties. After a final decision is entered in a disciplinary proceeding, the OED Director and attorneys representing the OED Director shall be available to counsel the USPTO Director, the General Counsel, and the Deputy General Counsel for General Law in any further proceedings.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.41 Filing of papers.
(a) The provisions of §§ 1.8 and 2.197 of this subchapter do not apply to disciplinary proceedings. All papers filed after the complaint and prior to entry of an initial decision by the hearing officer shall be filed with the hearing officer at an address or place designated by the hearing officer.
(b) All papers filed after entry of an initial decision by the hearing officer shall be filed with the USPTO Director. A copy of the paper shall be served on the OED Director. The hearing officer or the OED Director may provide for filing papers and
other matters by hand, by Priority Mail Express®, or by other means.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (b) revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014]
§ 11.42 Service of papers.
(a) All papers other than a complaint shall be served on a respondent who is represented by an attorney by:
(1) Delivering a copy of the paper to the office of the attorney; or
(2) Mailing a copy of the paper by first-class
mail, Priority Mail Express®, or other delivery service to the attorney at the address provided by the attorney under § 11.40(a)(1); or
(3) Any other method mutually agreeable to the attorney and a representative for the OED Director.
(b) All papers other than a complaint shall be served on a respondent who is not represented by an attorney by:
(1) Delivering a copy of the paper to the respondent; or
(2) Mailing a copy of the paper by first-class
mail, Priority Mail Express®, or other delivery service to the respondent at the address to which a complaint may be served or such other address as may be designated in writing by the respondent; or
(3) Any other method mutually agreeable to the respondent and a representative of the OED Director.
(c) A respondent shall serve on the representative for the OED Director one copy of each paper filed with the hearing officer or the OED Director. A paper may be served on the representative for the OED Director by:
(1) Delivering a copy of the paper to the representative; or
(2) Mailing a copy of the paper by first-class
mail, Priority Mail Express®, or other delivery service to an address designated in writing by the representative; or
(3) Any other method mutually agreeable to the respondent and the representative.
(d) Each paper filed in a disciplinary proceeding shall contain therein a certificate of service indicating:
(1) The date on which service was made; and
(2) The method by which service was made.
(e) The hearing officer or the USPTO Director may require that a paper be served by hand or by
Priority Mail Express®.
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(f) Service by mail is completed when the paper mailed in the United States is placed into the custody of the U.S. Postal Service.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014]
§ 11.43 Motions.
Motions, including all prehearing motions commonly filed under the Federal Rules of Civil Procedure, shall be filed with the hearing officer. The hearing officer will determine whether replies to responses will be authorized and the time period for filing such a response. No motion shall be filed with the hearing officer unless such motion is supported by a written statement by the moving party that the moving party or attorney for the moving party has conferred with the opposing party or attorney for the opposing party in an effort in good faith to resolve by agreement the issues raised by the motion and has been unable to reach agreement. If, prior to a decision on the motion, the parties resolve issues raised by a motion presented to the hearing officer, the parties shall promptly notify the hearing officer.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.44 Hearings.
(a) The hearing officer shall preside over hearings in disciplinary proceedings. The hearing officer shall set the time and place for the hearing. In cases involving an incarcerated respondent, any necessary oral hearing may be held at the location of incarceration. Oral hearings will be stenographically recorded and transcribed, and the testimony of witnesses will be received under oath or affirmation. The hearing officer shall conduct the hearing as if the proceeding were subject to 5 U.S.C. 556. A copy of the transcript of the hearing shall become part of the record. A copy of the transcript shall be provided to the OED Director and the respondent at the expense of the Office.
(b) If the respondent to a disciplinary proceeding fails to appear at the hearing after a notice of hearing has been given by the hearing officer, the hearing officer may deem the respondent to have waived
the right to a hearing and may proceed with the hearing in the absence of the respondent.
(c) A hearing under this section will not be open to the public except that the hearing officer may grant a request by a respondent to open his or her hearing to the public and make the record of the disciplinary proceeding available for public inspection, provided, a protective order is entered to exclude from public disclosure information which is privileged or confidential under applicable laws or regulations.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.45 Amendment of pleadings.
The OED Director may, without Committee on Discipline authorization, but with the authorization of the hearing officer, amend the complaint to include additional charges based upon conduct committed before or after the complaint was filed. If amendment of the complaint is authorized, the hearing officer shall authorize amendment of the answer. Any party who would otherwise be prejudiced by the amendment will be given reasonable opportunity to meet the allegations in the complaint or answer as amended, and the hearing officer shall make findings on any issue presented by the complaint or answer as amended.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.46 -11.48 [Reserved]
§ 11.49 Burden of proof.
In a disciplinary proceeding, the OED Director shall have the burden of proving the violation by clear and convincing evidence and a respondent shall have the burden of proving any affirmative defense by clear and convincing evidence.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
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§ 11.50 Evidence.
(a) Rules of evidence. The rules of evidence prevailing in courts of law and equity are not controlling in hearings in disciplinary proceedings. However, the hearing officer shall exclude evidence that is irrelevant, immaterial, or unduly repetitious.
(b) Depositions. Depositions of witnesses taken pursuant to § 11.51 may be admitted as evidence.
(c) Government documents. Official documents, records, and papers of the Office, including, but not limited to, all papers in the file of a disciplinary investigation, are admissible without extrinsic evidence of authenticity. These documents, records, and papers may be evidenced by a copy certified as correct by an employee of the Office.
(d) Exhibits. If any document, record, or other paper is introduced in evidence as an exhibit, the hearing officer may authorize the withdrawal of the exhibit subject to any conditions the hearing officer deems appropriate.
(e) Objections. Objections to evidence will be in short form, stating the grounds of objection. Objections and rulings on objections will be a part of the record. No exception to the ruling is necessary to preserve the rights of the parties.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.51 Depositions.
(a) Depositions for use at the hearing in lieu of personal appearance of a witness before the hearing officer may be taken by respondent or the OED Director upon a showing of good cause and with the approval of, and under such conditions as may be deemed appropriate by, the hearing officer. Depositions may be taken upon oral or written questions, upon not less than ten days’written notice to the other party, before any officer authorized to administer an oath or affirmation in the place where the deposition is to be taken. The parties may waive the requirement of ten days’ notice and depositions may then be taken of a witness at a time and place mutually agreed to by the parties. When a deposition is taken upon written questions, copies of the written questions will be served upon the other party with the notice, and copies of any written cross-questions
will be served by hand or Priority Mail Express®
not less than five days before the date of the taking of the deposition unless the parties mutually agree otherwise. A party on whose behalf a deposition is taken shall file a copy of a transcript of the deposition signed by a court reporter with the hearing officer and shall serve one copy upon the opposing party. Expenses for a court reporter and preparing, serving, and filing depositions shall be borne by the party at whose instance the deposition is taken. Depositions may not be taken to obtain discovery, except as provided for in paragraph (b) of this section.
(b) When the OED Director and the respondent agree in writing, a deposition of any witness who will appear voluntarily may be taken under such terms and conditions as may be mutually agreeable to the OED Director and the respondent. The deposition shall not be filed with the hearing officer and may not be admitted in evidence before the hearing officer unless he or she orders the deposition admitted in evidence. The admissibility of the deposition shall lie within the discretion of the hearing officer who may reject the deposition on any reasonable basis including the fact that demeanor is involved and that the witness should have been called to appear personally before the hearing officer.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (a) revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014]
§ 11.52 Discovery.
Discovery shall not be authorized except as follows:
(a) After an answer is filed under § 11.36 and when a party establishes that discovery is reasonable and relevant, the hearing officer, under such conditions as he or she deems appropriate, may order an opposing party to:
(1) Answer a reasonable number of written requests for admission or interrogatories;
(2) Produce for inspection and copying a reasonable number of documents; and
(3) Produce for inspection a reasonable number of things other than documents.
(b) Discovery shall not be authorized under paragraph (a) of this section of any matter which:
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(1) Will be used by another party solely for impeachment;
(2) Is not available to the party under 35 U.S.C. 122;
(3) Relates to any other disciplinary proceeding;
(4) Relates to experts except as the hearing officer may require under paragraph (e) of this section;
(5) Is privileged; or
(6) Relates to mental impressions, conclusions, opinions, or legal theories of any attorney or other representative of a party.
(c) The hearing officer may deny discovery requested under paragraph (a) of this section if the discovery sought:
(1) Will unduly delay the disciplinary proceeding;
(2) Will place an undue burden on the party required to produce the discovery sought; or
(3) Consists of information that is available:
(i) Generally to the public;
(ii) Equally to the parties; or
(iii) To the party seeking the discovery through another source.
(d) Prior to authorizing discovery under paragraph (a) of this section, the hearing officer shall require the party seeking discovery to file a motion (§ 11.43) and explain in detail, for each request made, how the discovery sought is reasonable and relevant to an issue actually raised in the complaint or the answer.
(e) The hearing officer may require parties to file and serve, prior to any hearing, a pre-hearing statement that contains:
(1) A list (together with a copy) of all proposed exhibits to be used in connection with a party’s case-in-chief;
(2) A list of proposed witnesses;
(3) As to each proposed expert witness:
(i) An identification of the field in which the individual will be qualified as an expert;
(ii) A statement as to the subject matter on which the expert is expected to testify; and
(iii) A statement of the substance of the facts and opinions to which the expert is expected to testify;
(4) Copies of memoranda reflecting respondent’s own statements to administrative representatives.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.53 Proposed findings and conclusions; post-hearing memorandum.
Except in cases in which the respondent has failed to answer the complaint or amended complaint, the hearing officer, prior to making an initial decision, shall afford the parties a reasonable opportunity to submit proposed findings and conclusions and a post-hearing memorandum in support of the proposed findings and conclusions.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.54 Initial decision of hearing officer.
(a) The hearing officer shall make an initial decision in the case. The decision will include:
(1) A statement of findings of fact and conclusions of law, as well as the reasons or bases for those findings and conclusions with appropriate references to the record, upon all the material issues of fact, law, or discretion presented on the record, and
(2) An order of default judgment, of suspension or exclusion from practice, of reprimand, of probation or an order dismissing the complaint. The order also may impose any conditions deemed appropriate under the circumstances. The hearing officer shall transmit a copy of the decision to the OED Director and to the respondent. After issuing the decision, the hearing officer shall transmit the entire record to the OED Director. In the absence of an appeal to the USPTO Director, the decision of the hearing officer, including a default judgment, will, without further proceedings, become the decision of the USPTO Director thirty days from the date of the decision of the hearing officer.
(b) The initial decision of the hearing officer shall explain the reason for any default judgment,
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§ 11.54PATENT RULES
reprimand, suspension, exclusion, or probation, and shall explain any conditions imposed with discipline. In determining any sanction, the following four factors must be considered if they are applicable:
(1) Whether the practitioner has violated a duty owed to a client, to the public, to the legal system, or to the profession;
(2) Whether the practitioner acted intentionally, knowingly, or negligently;
(3) The amount of the actual or potential injury caused by the practitioner’s misconduct; and
(4) The existence of any aggravating or mitigating factors.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (a)(2) and para. (b) introductory text revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.55 Appeal to the USPTO Director.
(a) Within thirty days after the date of the initial decision of the hearing officer under §§ 11.25 or 11.54, either party may appeal to the USPTO Director. The appeal shall include the appellant’s brief. If more than one appeal is filed, the party who files the appeal first is the appellant for purpose of this rule. If appeals are filed on the same day, the respondent is the appellant. If an appeal is filed, then the OED Director shall transmit the entire record to the USPTO Director. Any cross-appeal shall be filed within fourteen days after the date of service of the appeal pursuant to § 11.42, or thirty days after the date of the initial decision of the hearing officer, whichever is later. The cross-appeal shall include the cross-appellant’s brief. Any appellee or cross-appellee brief must be filed within thirty days after the date of service pursuant to § 11.42 of an appeal or cross-appeal. Any reply brief must be filed within fourteen days after the date of service of any appellee or cross-appellee brief.
(b) An appeal or cross-appeal must include exceptions to the decisions of the hearing officer and supporting reasons for those exceptions. Any exception not raised will be deemed to have been waived and will be disregarded by the USPTO Director in reviewing the initial decision.
(c) All briefs shall:
(1) Be filed with the USPTO Director at the address set forth in § 1.1(a)(3)(ii) of this subchapter and served on the opposing party;
(2) Include separate sections containing a concise statement of the disputed facts and disputed points of law; and
(3) Be typed on 8 1/2 by 11-inch paper, and comply with Rule 32(a)(4)-(6) of the Federal Rules of Appellate Procedure.
(d) An appellant’s, cross-appellant’s, appellee’s, and cross-appellee’s brief shall be no more than thirty pages in length, and comply with Rule 28(a)(2), (3), and (5) through (10) of the Federal Rules of Appellate Procedure. Any reply brief shall be no more than fifteen pages in length, and shall comply with Rule 28 (a)(2), (3), (8), and (9) of the Federal Rules of Appellate Procedure.
(e) The USPTO Director may refuse entry of a nonconforming brief.
(f) The USPTO Director will decide the appeal on the record made before the hearing officer.
(g) Unless the USPTO Director permits, no further briefs or motions shall be filed.
(h) The USPTO Director may order reopening of a disciplinary proceeding in accordance with the principles that govern the granting of new trials. Any request to reopen a disciplinary proceeding on the basis of newly discovered evidence must demonstrate that the newly discovered evidence could not have been discovered by due diligence.
(i) In the absence of an appeal by the OED Director, failure by the respondent to appeal under the provisions of this section shall result in the initial decision being final and effective thirty days from the date of the initial decision of the hearing officer.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.56 Decision of the USPTO Director.
(a) The USPTO Director shall decide an appeal from an initial decision of the hearing officer. On appeal from the initial decision, the USPTO Director has authority to conduct a de novo review of the factual record. The USPTO Director may affirm, reverse, or modify the initial decision or remand the matter to the hearing officer for such further proceedings as the USPTO Director may deem
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appropriate. In making a final decision, the USPTO Director shall review the record or the portions of the record designated by the parties. The USPTO Director shall transmit a copy of the final decision to the OED Director and to the respondent.
(b) A final decision of the USPTO Director may dismiss a disciplinary proceeding, reverse or modify the initial decision, reprimand a practitioner, or may suspend or exclude the practitioner from practice before the Office. A final decision suspending or excluding a practitioner shall require compliance with the provisions of § 11.58. The final decision may also condition the reinstatement of the practitioner upon a showing that the practitioner has taken steps to correct or mitigate the matter forming the basis of the action, or to prevent recurrence of the same or similar conduct.
(c) The respondent or the OED Director may make a single request for reconsideration or modification of the decision by the USPTO Director if filed within twenty days from the date of entry of the decision. No request for reconsideration or modification shall be granted unless the request is based on newly discovered evidence or error of law or fact, and the requestor must demonstrate that any newly discovered evidence could not have been discovered any earlier by due diligence. Such a request shall have the effect of staying the effective date of the order of discipline in the final decision. The decision by the USPTO Director is effective on its date of entry.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.57 Review of final decision of the USPTO Director.
(a) Review of the final decision by the USPTO Director in a disciplinary case may be had, subject to § 11.55(d), by a petition filed in accordance with 35 U.S.C. 32. The Respondent must serve the USPTO Director with the petition. Respondent must serve the petition in accordance with Rule 4 of the Federal Rules of Civil Procedure and § 104.2 of this Title.
(b) Except as provided for in § 11.56(c), an order for discipline in a final decision will not be stayed except on proof of exceptional circumstances.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.58 Duties of disciplined or resigned practitioner, or practitioner on disability inactive status.
(a) An excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall not engage in any practice of patent, trademark and other non-patent law before the Office. An excluded, suspended or resigned practitioner will not be automatically reinstated at the end of his or her period of exclusion or suspension. An excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status must comply with the provisions of this section and § 11.60 to be reinstated. Failure to comply with the provisions of this section may constitute both grounds for denying reinstatement or readmission; and cause for further action, including seeking further exclusion, suspension, and for revocation of any pending probation.
(b) Unless otherwise ordered by the USPTO Director, any excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall:
(1) Within thirty days after the date of entry of the order of exclusion, suspension, acceptance of resignation, or transfer to disability inactive status:
(i) File a notice of withdrawal as of the effective date of the exclusion, suspension, acceptance of resignation, or transfer to disability inactive status in each pending patent and trademark application, each pending reexamination and interference or trial proceeding, and every other matter pending in the Office, together with a copy of the notices sent pursuant to paragraphs (b) and (c) of this section;
(ii) Provide notice to all State and Federal jurisdictions and administrative agencies to which the practitioner is admitted to practice and all clients the practitioner represents having immediate or prospective business before the Office in patent, trademark and other non-patent matters of the order of exclusion, suspension, acceptance of resignation, or transferred to disability inactive status and of the practitioner’s consequent inability to act as a practitioner after the effective date of the order; and
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§ 11.58PATENT RULES
that, if not represented by another practitioner, the client should act promptly to substitute another practitioner, or to seek legal advice elsewhere, calling attention to any urgency arising from the circumstances of the case;
(iii) Provide notice to the practitioner(s) for all opposing parties (or, to the parties in the absence of a practitioner representing the parties) in matters pending before the Office of the practitioner’s exclusion, suspension, resignation, or transfer to disability inactive status and, that as a consequence, the practitioner is disqualified from acting as a practitioner regarding matters before the Office after the effective date of the suspension, exclusion, resignation or transfer to disability inactive status, and state in the notice the mailing address of each client of the excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status who is a party in the pending matter;
(iv) Deliver to all clients having immediate or prospective business before the Office in patent, trademark or other non-patent matters any papers or other property to which the clients are entitled, or shall notify the clients and any co-practitioner of a suitable time and place where the papers and other property may be obtained, calling attention to any urgency for obtaining the papers or other property;
(v) Relinquish to the client, or other practitioner designated by the client, all funds for practice before the Office, including any legal fees paid in advance that have not been earned and any advanced costs not expended;
(vi) Take any necessary and appropriate steps to remove from any telephone, legal, or other directory any advertisement, statement, or representation which would reasonably suggest that the practitioner is authorized to practice patent, trademark, or other non-patent law before the Office; and
(vii) Serve all notices required by paragraphs (b)(1)(ii) and (b)(1)(iii) of this section by certified mail, return receipt requested, unless mailed abroad. If mailed abroad, all notices shall be served with a receipt to be signed and returned to the practitioner.
(2) Within forty-five days after entry of the order of suspension, exclusion, or of acceptance of
resignation, the practitioner shall file with the OED Director an affidavit of compliance certifying that the practitioner has fully complied with the provisions of the order, this section, and with § 11.116 for withdrawal from representation. Appended to the affidavit of compliance shall be:
(i) A copy of each form of notice, the names and addresses of the clients, practitioners, courts, and agencies to which notices were sent, and all return receipts or returned mail received up to the date of the affidavit. Supplemental affidavits shall be filed covering subsequent return receipts and returned mail. Such names and addresses of clients shall remain confidential unless otherwise ordered by the USPTO Director;
(ii) A schedule showing the location, title and account number of every bank account designated as a client or trust account, deposit account in the Office, or other fiduciary account, and of every account in which the practitioner holds or held as of the entry date of the order any client, trust, or fiduciary funds for practice before the Office;
(iii) A schedule describing the practitioner’s disposition of all client and fiduciary funds for practice before the Office in the practitioner’s possession, custody or control as of the date of the order or thereafter;
(iv) Such proof of the proper distribution of said funds and the closing of such accounts as has been requested by the OED Director, including copies of checks and other instruments;
(v) A list of all other State, Federal, and administrative jurisdictions to which the practitioner is admitted to practice; and
(vi) An affidavit describing the precise nature of the steps taken to remove from any telephone, legal, or other directory any advertisement, statement, or representation which would reasonably suggest that the practitioner is authorized to practice patent, trademark, or other non-patent law before the Office. The affidavit shall also state the residence or other address of the practitioner to which communications may thereafter be directed, and list all State and Federal jurisdictions, and administrative agencies to which the practitioner is admitted to practice. The OED Director may require such additional proof as is deemed necessary. In addition, for the period of
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discipline, an excluded or suspended practitioner, or a practitioner transferred to disability inactive status shall continue to file a statement in accordance with § 11.11, regarding any change of residence or other address to which communications may thereafter be directed, so that the excluded or suspended practitioner, or practitioner transferred to disability inactive status may be located if a grievance is received regarding any conduct occurring before or after the exclusion or suspension. The practitioner shall retain copies of all notices sent and shall maintain complete records of the steps taken to comply with the notice requirements.
(3) Not hold himself or herself out as authorized to practice law before the Office.
(4) Not advertise the practitioner’s availability or ability to perform or render legal services for any person having immediate or prospective business before the Office as to that business.
(5) Not render legal advice or services to any person having immediate or prospective business before the Office as to that business.
(6) Promptly take steps to change any sign identifying the practitioner’s or the practitioner’s firm’s office and the practitioner’s or the practitioner’s firm’s stationery to delete therefrom any advertisement, statement, or representation which would reasonably suggest that the practitioner is authorized to practice law before the Office.
(c) An excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status after entry of the order of exclusion or suspension, acceptance of resignation, or transfer to disability inactive status shall not accept any new retainer regarding immediate or prospective business before the Office, or engage as a practitioner for another in any new case or legal matter regarding practice before the Office. The excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall be granted limited recognition for a period of thirty days. During the thirty-day period of limited recognition, the excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall conclude work on behalf of a client on any matters that were pending before the Office on the date of entry of the order of exclusion or suspension,
or acceptance of resignation. If such work cannot be concluded, the excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall so advise the client so that the client may make other arrangements.
(d) Required records. An excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall keep and maintain records of the various steps taken under this section, so that in any subsequent proceeding proof of compliance with this section and with the exclusion or suspension order will be available. The OED Director will require the practitioner to submit such proof as a condition precedent to the granting of any petition for reinstatement.
(e) An excluded, suspended or resigned practitioner, or practitioner on disability inactive status who aids another practitioner in any way in the other practitioner’s practice of law before the Office, may, under the direct supervision of the other practitioner, act as a paralegal for the other practitioner or perform other services for the other practitioner which are normally performed by laypersons, provided:
(1) The excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status is a salaried employee of:
(i) The other practitioner;
(ii) The other practitioner’s law firm; or
(iii) A client-employer who employs the other practitioner as a salaried employee;
(2) The other practitioner assumes full professional responsibility to any client and the Office for any work performed by the excluded, suspended or resigned practitioner for the other practitioner;
(3) The excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status does not:
(i) Communicate directly in writing, orally, or otherwise with a client of the other practitioner in regard to any immediate or prospective business before the Office;
(ii) Render any legal advice or any legal services to a client of the other practitioner in regard to any immediate or prospective business before the Office; or
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(iii) Meet in person or in the presence of the other practitioner in regard to any immediate or prospective business before the Office, with:
(A) Any Office employee in connection with the prosecution of any patent, trademark, or other case;
(B) Any client of the other practitioner, the other practitioner’s law firm, or the client-employer of the other practitioner; or
(C) Any witness or potential witness whom the other practitioner, the other practitioner’s law firm, or the other practitioner’s client-employer may or intends to call as a witness in any proceeding before the Office. The term “witness” includes individuals who will testify orally in a proceeding before, or sign an affidavit or any other document to be filed in, the Office.
(f) When an excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status acts as a paralegal or performs services under paragraph (e) of this section, the practitioner shall not thereafter be reinstated to practice before the Office unless:
(1) The practitioner shall have filed with the OED Director an affidavit which:
(i) Explains in detail the precise nature of all paralegal or other services performed by the excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status, and
(ii) Shows by clear and convincing evidence that the excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status has complied with the provisions of this section and all USPTO Rules of Professional Conduct; and
(2) The other practitioner shall have filed with the OED Director a written statement which:
(i) Shows that the other practitioner has read the affidavit required by paragraph (d)(1) of this section and that the other practitioner believes every statement in the affidavit to be true, and
(ii) States why the other practitioner believes that the excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status has complied with paragraph (c) of this section.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (b)(1)(i) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (b)(2) introductory text and para. (f)(1)(ii) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.59 Dissemination of disciplinary and other information.
(a) The OED Director shall inform the public of the disposition of each matter in which public discipline has been imposed, and of any other changes in a practitioner’s registration status. Public discipline includes exclusion, as well as exclusion on consent; suspension; and public reprimand. Unless otherwise ordered by the USPTO Director, the OED Director shall give notice of public discipline and the reasons for the discipline to disciplinary enforcement agencies in the State where the practitioner is admitted to practice, to courts where the practitioner is known to be admitted, and the public. If public discipline is imposed, the OED Director shall cause a final decision of the USPTO Director to be published. Final decisions of the USPTO Director include default judgments. See § 11.54(a)(2). If a private reprimand is imposed, the OED Director shall cause a redacted version of the final decision to be published.
(b) Records available to the public. Unless the USPTO Director orders that the proceeding or a portion of the record be kept confidential, the OED Director’s records of every disciplinary proceeding where a practitioner is reprimanded, suspended, or excluded, including when said sanction is imposed by default judgment, shall be made available to the public upon written request, except that information may be withheld as necessary to protect the privacy of third parties or as directed in a protective order issued pursuant to § 11.44(c). The record of a proceeding that results in a practitioner’s transfer to disability inactive status shall not be available to the public.
(c) Access to records of exclusion by consent. Unless the USPTO Director orders that the proceeding or a portion of the record be kept confidential, an order excluding a practitioner on consent under § 11.27 and the affidavit required under paragraph (a) of § 11.27 shall be available to the public, except that information in the order or affidavit may be withheld as necessary to protect the privacy of third parties or as directed in a
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protective order under § 11.44(c). The affidavit required under paragraph (a) of § 11.27 shall not be used in any other proceeding except by order of the USPTO Director or upon written consent of the practitioner.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.60 Petition for reinstatement.
(a) Restrictions on reinstatement. An excluded, suspended or resigned practitioner shall not resume practice of patent, trademark, or other non-patent law before the Office until reinstated by order of the OED Director or the USPTO Director.
(b) Petition for reinstatement. An excluded or suspended practitioner shall be eligible to apply for reinstatement only upon expiration of the period of suspension or exclusion and the practitioner’s full compliance with § 11.58. An excluded practitioner shall be eligible to apply for reinstatement no earlier than at least five years from the effective date of the exclusion. A resigned practitioner shall be eligible to petition for reinstatement and must show compliance with § 11.58 no earlier than at least five years from the date the practitioner’s resignation is accepted and an order is entered excluding the practitioner on consent.
(c) Review of reinstatement petition. An excluded, suspended or resigned practitioner shall file a petition for reinstatement accompanied by the fee required by § 1.21(a)(10) of this subchapter. The petition for reinstatement shall be filed with the OED Director. An excluded or suspended practitioner who has violated any provision of § 11.58 shall not be eligible for reinstatement until a continuous period of the time in compliance with § 11.58 that is equal to the period of suspension or exclusion has elapsed. A resigned practitioner shall not be eligible for reinstatement until compliance with § 11.58 is shown. If the excluded, suspended or resigned practitioner is not eligible for reinstatement, or if the OED Director determines that the petition is insufficient or defective on its face, the OED Director may dismiss the petition. Otherwise the OED Director shall consider the petition for reinstatement. The excluded, suspended or resigned practitioner seeking reinstatement shall have the burden of proof by clear and convincing
evidence. Such proof shall be included in or accompany the petition, and shall establish:
(1) That the excluded, suspended or resigned practitioner has the good moral character and reputation, competency, and learning in law required under § 11.7 for admission;
(2) That the resumption of practice before the Office will not be detrimental to the administration of justice or subversive to the public interest; and
(3) That the suspended practitioner has complied with the provisions of § 11.58 for the full period of suspension, that the excluded practitioner has complied with the provisions of § 11.58 for at least five continuous years, or that the resigned practitioner has complied with § 11.58 upon acceptance of the resignation.
(d) Petitions for reinstatement — Action by the OED Director granting reinstatement. (1) If the excluded, suspended or resigned practitioner is found to have complied with paragraphs(c)(1) through (c)(3) of this section, the OED Director shall enter an order of reinstatement, which shall be conditioned on payment of the costs of the disciplinary proceeding to the extent set forth in paragraphs (d)(2) and (3) of this section.
(2) Payment of costs of disciplinary proceedings. Prior to reinstatement to practice, the excluded or suspended practitioner shall pay the costs of the disciplinary proceeding. The costs imposed pursuant to this section include all of the following:
(i) The actual expense incurred by the OED Director or the Office for the original and copies of any reporter’s transcripts of the disciplinary proceeding, and any fee paid for the services of the reporter;
(ii) All expenses paid by the OED Director or the Office which would qualify as taxable costs recoverable in civil proceedings; and
(iii) The charges determined by the OED Director to be “reasonable costs” of investigation, hearing, and review. These amounts shall serve to defray the costs, other than fees for services of attorneys and experts, of the Office of Enrollment and Discipline in the preparation or hearing of the disciplinary proceeding, and costs incurred in the
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administrative processing of the disciplinary proceeding.
(3) An excluded or suspended practitioner may be granted relief, in whole or in part, only from an order assessing costs under this section or may be granted an extension of time to pay these costs, in the discretion of the OED Director, upon grounds of hardship, special circumstances, or other good cause.
(e) Petitions for reinstatement — Action by the OED Director denying reinstatement. If the excluded, suspended or resigned practitioner is found unfit to resume the practice of patent law before the Office, the OED Director shall first provide the excluded, suspended or resigned practitioner with an opportunity to show cause in writing why the petition should not be denied. Failure to comply with § 11.12(c) shall constitute unfitness. If unpersuaded by the showing, the OED Director shall deny the petition. The OED Director may require the excluded, suspended or resigned practitioner, in meeting the requirements of § 11.7, to take and pass an examination under § 11.7(b), ethics courses, and/or the Multistate Professional Responsibility Examination. The OED Director shall provide findings, together with the record. The findings shall include on the first page, immediately beneath the caption of the case, a separate section entitled “Prior Proceedings” which shall state the docket number of the original disciplinary proceeding in which the exclusion or suspension was ordered.
(f) Resubmission of petitions for reinstatement. If a petition for reinstatement is denied, no further petition for reinstatement may be filed until the expiration of at least one year following the denial unless the order of denial provides otherwise.
(g) Reinstatement proceedings open to public. Proceedings on any petition for reinstatement shall be open to the public. Before reinstating any excluded or suspended practitioner, the OED Director shall publish a notice of the excluded or suspended practitioner’s petition for reinstatement and shall permit the public a reasonable opportunity to comment or submit evidence with respect to the petition for reinstatement.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 11.61 [Reserved]
[Removed and reserved, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.62 -11.99 [Reserved]
Subpart D — USPTO Rules of Professional Conduct
§ 11.100 [Reserved]
CLIENT-PRACTITIONER RELATIONSHIP
§ 11.101 Competence.
A practitioner shall provide competent representation to a client. Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.102 Scope of representation and allocation of authority between client and practitioner.
(a) Subject to paragraphs (c) and (d) of this section, a practitioner shall abide by a client’s decisions concerning the objectives of representation and, as required by § 11.104, shall consult with the client as to the means by which they are to be pursued. A practitioner may take such action on behalf of the client as is impliedly authorized to carry out the representation. A practitioner shall abide by a client’s decision whether to settle a matter.
(b) [Reserved]
(c) A practitioner may limit the scope of the representation if the limitation is reasonable under the circumstances and the client gives informed consent.
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(d) A practitioner shall not counsel a client to engage, or assist a client, in conduct that the practitioner knows is criminal or fraudulent, but a practitioner may discuss the legal consequences of any proposed course of conduct with a client and may counsel or assist a client to make a good-faith effort to determine the validity, scope, meaning or application of the law.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.103 Diligence.
A practitioner shall act with reasonable diligence and promptness in representing a client.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.104 Communication.
(a) A practitioner shall:
(1) Promptly inform the client of any decision or circumstance with respect to which the client’s informed consent is required by the USPTO Rules of Professional Conduct;
(2) Reasonably consult with the client about the means by which the client’s objectives are to be accomplished;
(3) Keep the client reasonably informed about the status of the matter;
(4) Promptly comply with reasonable requests for information from the client; and
(5) Consult with the client about any relevant limitation on the practitioner’s conduct when the practitioner knows that the client expects assistance not permitted by the USPTO Rules of Professional Conduct or other law.
(b) A practitioner shall explain a matter to the extent reasonably necessary to permit the client to make informed decisions regarding the representation.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.105 Fees.
(a) A practitioner shall not make an agreement for, charge, or collect an unreasonable fee or an
unreasonable amount for expenses. The factors to be considered in determining the reasonableness of a fee include the following:
(1) The time and labor required, the novelty and difficulty of the questions involved, and the skill requisite to perform the legal service properly;
(2) The likelihood, if apparent to the client, that the acceptance of the particular employment will preclude other employment by the practitioner;
(3) The fee customarily charged in the locality for similar legal services;
(4) The amount involved and the results obtained;
(5) The time limitations imposed by the client or by the circumstances;
(6) The nature and length of the professional relationship with the client;
(7) The experience, reputation, and ability of the practitioner or practitioners performing the services; and
(8) Whether the fee is fixed or contingent.
(b) The scope of the representation and the basis or rate of the fee and expenses for which the client will be responsible shall be communicated to the client, preferably in writing, before or within a reasonable time after commencing the representation, except when the practitioner will charge a regularly represented client on the same basis or rate. Any changes in the basis or rate of the fee or expenses shall also be communicated to the client.
(c) A fee may be contingent on the outcome of the matter for which the service is rendered, except in a matter in which a contingent fee is prohibited by law. A contingent fee agreement shall be in a writing signed by the client and shall state the method by which the fee is to be determined, including the percentage or percentages that shall accrue to the practitioner in the event of settlement, trial or appeal; litigation and other expenses to be deducted from the recovery; and whether such expenses are to be deducted before or after the contingent fee is calculated. The agreement must clearly notify the client of any expenses for which the client will be liable whether or not the client is the prevailing party. Upon conclusion of a contingent fee matter, the practitioner shall provide
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§ 11.105PATENT RULES
the client with a written statement stating the outcome of the matter and, if there is a recovery, showing the remittance to the client and the method of its determination.
(d) [Reserved]
(e) A division of a fee between practitioners who are not in the same firm may be made only if:
(1) The division is in proportion to the services performed by each practitioner or each practitioner assumes joint responsibility for the representation;
(2) The client agrees to the arrangement, including the share each practitioner will receive, and the agreement is confirmed in writing; and
(3) The total fee is reasonable.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.106 Confidentiality of information.
(a) A practitioner shall not reveal information relating to the representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation, the disclosure is permitted by paragraph (b) of this section, or the disclosure is required by paragraph (c) of this section.
(b) A practitioner may reveal information relating to the representation of a client to the extent the practitioner reasonably believes necessary:
(1) To prevent reasonably certain death or substantial bodily harm;
(2) To prevent the client from engaging in inequitable conduct before the Office or from committing a crime or fraud that is reasonably certain to result in substantial injury to the financial interests or property of another and in furtherance of which the client has used or is using the practitioner’s services;
(3) To prevent, mitigate or rectify substantial injury to the financial interests or property of another that is reasonably certain to result or has resulted from the client’s commission of a crime, fraud, or inequitable conduct before the Office in furtherance of which the client has used the practitioner’s services;
(4) To secure legal advice about the practitioner’s compliance with the USPTO Rules of Professional Conduct;
(5) To establish a claim or defense on behalf of the practitioner in a controversy between the practitioner and the client, to establish a defense to a criminal charge or civil claim against the practitioner based upon conduct in which the client was involved, or to respond to allegations in any proceeding concerning the practitioner’s representation of the client; or
(6) To comply with other law or a court order.
(c) A practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.107 Conflict of interest; Current clients.
(a) Except as provided in paragraph (b) of this section, a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. A concurrent conflict of interest exists if:
(1) The representation of one client will be directly adverse to another client; or
(2) There is a significant risk that the representation of one or more clients will be materially limited by the practitioner’s responsibilities to another client, a former client or a third person or by a personal interest of the practitioner.
(b) Notwithstanding the existence of a concurrent conflict of interest under paragraph (a) of this section, a practitioner may represent a client if:
(1) The practitioner reasonably believes that the practitioner will be able to provide competent and diligent representation to each affected client;
(2) The representation is not prohibited by law;
(3) The representation does not involve the assertion of a claim by one client against another client represented by the practitioner in the same litigation or other proceeding before a tribunal; and
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(4) Each affected client gives informed consent, confirmed in writing.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.108 Conflict of interest; Current clients; Specific rules.
(a) A practitioner shall not enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client unless:
(1) The transaction and terms on which the practitioner acquires the interest are fair and reasonable to the client and are fully disclosed and transmitted in writing in a manner that can be reasonably understood by the client;
(2) The client is advised in writing of the desirability of seeking and is given a reasonable opportunity to seek the advice of independent legal counsel in the transaction; and
(3) The client gives informed consent, in a writing signed by the client, to the essential terms of the transaction and the practitioner’s role in the transaction, including whether the practitioner is representing the client in the transaction.
(b) A practitioner shall not use information relating to representation of a client to the disadvantage of the client unless the client gives informed consent, except as permitted or required by the USPTO Rules of Professional Conduct.
(c) A practitioner shall not solicit any substantial gift from a client, including a testamentary gift, or prepare on behalf of a client an instrument giving the practitioner or a person related to the practitioner any substantial gift unless the practitioner or other recipient of the gift is related to the client. For purposes of this paragraph, related persons include a spouse, child, grandchild, parent, grandparent or other relative or individual with whom the practitioner or the client maintains a close, familial relationship.
(d) Prior to the conclusion of representation of a client, a practitioner shall not make or negotiate an agreement giving the practitioner literary or media rights to a portrayal or account based in substantial part on information relating to the representation.
(e) A practitioner shall not provide financial assistance to a client in connection with pending or contemplated litigation or a proceeding before the Office, except that:
(1) A practitioner may advance court costs and expenses of litigation, the repayment of which may be contingent on the outcome of the matter;
(2) A practitioner representing an indigent client may pay court costs and expenses of litigation or a proceeding before the Office on behalf of the client;
(3) A practitioner may advance costs and expenses in connection with a proceeding before the Office provided the client remains ultimately liable for such costs and expenses; and
(4) A practitioner may also advance any fee required to prevent or remedy an abandonment of a client’s application by reason of an act or omission attributable to the practitioner and not to the client, whether or not the client is ultimately liable for such fee.
(f) A practitioner shall not accept compensation for representing a client from one other than the client unless:
(1) The client gives informed consent;
(2) There is no interference with the practitioner’s independence of professional judgment or with the client-practitioner relationship; and
(3) Information relating to representation of a client is protected as required by § 11.106.
(g) A practitioner who represents two or more clients shall not participate in making an aggregate settlement of the claims of or against the clients, unless each client gives informed consent, in a writing signed by the client. The practitioner’s disclosure shall include the existence and nature of all the claims involved and of the participation of each person in the settlement.
(h) A practitioner shall not:
(1) Make an agreement prospectively limiting the practitioner’s liability to a client for malpractice unless the client is independently represented in making the agreement; or
(2) Settle a claim or potential claim for such liability with an unrepresented client or former client
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unless that person is advised in writing of the desirability of seeking and is given a reasonable opportunity to seek the advice of independent legal counsel in connection therewith.
(i) A practitioner shall not acquire a proprietary interest in the cause of action, subject matter of litigation, or a proceeding before the Office which the practitioner is conducting for a client, except that the practitioner may, subject to the other provisions in this section:
(1) Acquire a lien authorized by law to secure the practitioner’s fee or expenses;
(2) Contract with a client for a reasonable contingent fee in a civil case; and
(3) In a patent case or a proceeding before the Office, take an interest in the patent or patent application as part or all of his or her fee.
(j) [Reserved]
(k) While practitioners are associated in a firm, a prohibition in paragraphs (a) through (i) of this section that applies to any one of them shall apply to all of them.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.109 Duties to former clients.
(a) A practitioner who has formerly represented a client in a matter shall not thereafter represent another person in the same or a substantially related matter in which that person’s interests are materially adverse to the interests of the former client unless the former client gives informed consent, confirmed in writing.
(b) A practitioner shall not knowingly represent a person in the same or a substantially related matter in which a firm with which the practitioner formerly was associated had previously represented a client:
(1) Whose interests are materially adverse to that person; and
(2) About whom the practitioner had acquired information protected by §§ 11.106 and 11.109(c) that is material to the matter; unless the former client gives informed consent, confirmed in writing.
(c) A practitioner who has formerly represented a client in a matter or whose present or former firm
has formerly represented a client in a matter shall not thereafter:
(1) Use information relating to the representation to the disadvantage of the former client except as the USPTO Rules of Professional Conduct would permit or require with respect to a client, or when the information has become generally known; or
(2) Reveal information relating to the representation except as the USPTO Rules of Professional Conduct would permit or require with respect to a client.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.110 Imputation of conflicts of interest; General rule.
(a) While practitioners are associated in a firm, none of them shall knowingly represent a client when any one of them practicing alone would be prohibited from doing so by §§ 11.107 or 11.109, unless:
(1) The prohibition is based on a personal interest of the disqualified practitioner and does not present a significant risk of materially limiting the representation of the client by the remaining practitioners in the firm; or
(2) The prohibition is based upon § 11.109(a) or (b), and arises out of the disqualified practitioner’s association with a prior firm, and
(i) The disqualified practitioner is timely screened from any participation in the matter and is apportioned no part of the fee therefrom; and
(ii) Written notice is promptly given to any affected former client to enable the former client to ascertain compliance with the provisions of this section, which shall include a description of the screening procedures employed; a statement of the firm’s and of the screened practitioner’s compliance with the USPTO Rules of Professional Conduct; a statement that review may be available before a tribunal; and an agreement by the firm to respond promptly to any written inquiries or objections by the former client about the screening procedures.
(b) When a practitioner has terminated an association with a firm, the firm is not prohibited from thereafter representing a person with interests
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materially adverse to those of a client represented by the formerly associated practitioner and not currently represented by the firm, unless:
(1) The matter is the same or substantially related to that in which the formerly associated practitioner represented the client; and
(2) Any practitioner remaining in the firm has information protected by §§ 11.106 and 11.109(c) that is material to the matter.
(c) A disqualification prescribed by this section may be waived by the affected client under the conditions stated in § 11.107.
(d) The disqualification of practitioners associated in a firm with former or current Federal Government lawyers is governed by § 11.111.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.111 Former or current Federal Government employees.
A practitioner who is a former or current Federal Government employee shall not engage in any conduct which is contrary to applicable Federal ethics law, including conflict of interest statutes and regulations of the department, agency or commission formerly or currently employing said practitioner.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.112 Former judge, arbitrator, mediator or other third-party neutral.
(a) Except as stated in paragraph (d) of this section, a practitioner shall not represent anyone in connection with a matter in which the practitioner participated personally and substantially as a judge or other adjudicative officer or law clerk to such a person or as an arbitrator, mediator or other third-party neutral, unless all parties to the proceeding give informed consent, confirmed in writing.
(b) A practitioner shall not negotiate for employment with any person who is involved as a party or as practitioner for a party in a matter in which the practitioner is participating personally and substantially as a judge or other adjudicative officer or as an arbitrator, mediator or other
third-party neutral. A practitioner serving as a law clerk to a judge or other adjudicative officer may negotiate for employment with a party or practitioner involved in a matter in which the clerk is participating personally and substantially, but only after the practitioner has notified the judge, or other adjudicative officer.
(c) If a practitioner is disqualified by paragraph (a) of this section, no practitioner in a firm with which that practitioner is associated may knowingly undertake or continue representation in the matter unless:
(1) The disqualified practitioner is timely screened from any participation in the matter and is apportioned no part of the fee therefrom; and
(2) Written notice is promptly given to the parties and any appropriate tribunal to enable them to ascertain compliance with the provisions of this section.
(d) An arbitrator selected as a partisan of a party in a multimember arbitration panel is not prohibited from subsequently representing that party.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.113 Organization as client.
(a) A practitioner employed or retained by an organization represents the organization acting through its duly authorized constituents.
(b) If a practitioner for an organization knows that an officer, employee or other person associated with the organization is engaged in action, intends to act or refuses to act in a matter related to the representation that is a violation of a legal obligation to the organization, or a violation of law that reasonably might be imputed to the organization, and that is likely to result in substantial injury to the organization, then the practitioner shall proceed as is reasonably necessary in the best interest of the organization. Unless the practitioner reasonably believes that it is not necessary in the best interest of the organization to do so, the practitioner shall refer the matter to higher authority in the organization, including, if warranted by the circumstances, to the highest authority that can act on behalf of the organization as determined by applicable law.
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§ 11.113PATENT RULES
(c) Except as provided in paragraph (d) of this section, if
(1) Despite the practitioner’s efforts in accordance with paragraph (b) of this section the highest authority that can act on behalf of the organization insists upon or fails to address in a timely and appropriate manner an action, or a refusal to act, that is clearly a violation of law, and
(2) The practitioner reasonably believes that the violation is reasonably certain to result in substantial injury to the organization, then the practitioner may reveal information relating to the representation whether or not § 11.106 permits such disclosure, but only if and to the extent the practitioner reasonably believes necessary to prevent substantial injury to the organization.
(d) Paragraph (c) of this section shall not apply with respect to information relating to a practitioner’s representation of an organization to investigate an alleged violation of law, or to defend the organization or an officer, employee or other constituent associated with the organization against a claim arising out of an alleged violation of law.
(e) A practitioner who reasonably believes that he or she has been discharged because of the practitioner’s actions taken pursuant to paragraphs (b) or (c) of this section, or who withdraws under circumstances that require or permit the practitioner to take action under either of those paragraphs, shall proceed as the practitioner reasonably believes necessary to assure that the organization’s highest authority is informed of the practitioner’s discharge or withdrawal.
(f) In dealing with an organization’s directors, officers, employees, members, shareholders, or other constituents, a practitioner shall explain the identity of the client when the practitioner knows or reasonably should know that the organization’s interests are adverse to those of the constituents with whom the practitioner is dealing.
(g) A practitioner representing an organization may also represent any of its directors, officers, employees, members, shareholders or other constituents, subject to the provisions of § 11.107. If the organization’s consent to the dual representation is required by § 11.107, the consent shall be given by an appropriate official of the organization other than the individual who is to be represented, or by the shareholders.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.114 Client with diminished capacity.
(a) When a client’s capacity to make adequately considered decisions in connection with a representation is diminished, whether because of minority, mental impairment or for some other reason, the practitioner shall, as far as reasonably possible, maintain a normal client-practitioner relationship with the client.
(b) When the practitioner reasonably believes that the client has diminished capacity, is at risk of substantial physical, financial or other harm unless action is taken and cannot adequately act in the client’s own interest, the practitioner may take reasonably necessary protective action, including consulting with individuals or entities that have the ability to take action to protect the client and, in appropriate cases, seeking the appointment of a guardian ad litem, conservator or guardian.
(c) Information relating to the representation of a client with diminished capacity is protected under § 11.106. When taking protective action pursuant to paragraph (b) of this section, the practitioner is impliedly authorized under § 11.106(a) to reveal information about the client, but only to the extent reasonably necessary to protect the client’s interests.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.115 Safekeeping property.
(a) A practitioner shall hold property of clients or third persons that is in a practitioner’s possession in connection with a representation separate from the practitioner’s own property. Funds shall be kept in a separate account maintained in the state where the practitioner’s office is situated, or elsewhere with the consent of the client or third person. Where the practitioner’s office is situated in a foreign country, funds shall be kept in a separate account maintained in that foreign country or elsewhere with the consent of the client or third person. Other property shall be identified as such and appropriately safeguarded. Complete records of such account funds and other property shall be kept by the practitioner and shall be preserved for a period of five years after termination of the representation.
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(b) A practitioner may deposit the practitioner’s own funds in a client trust account for the sole purpose of paying bank service charges on that account, but only in an amount necessary for that purpose.
(c) A practitioner shall deposit into a client trust account legal fees and expenses that have been paid in advance, to be withdrawn by the practitioner only as fees are earned or expenses incurred.
(d) Upon receiving funds or other property in which a client or third person has an interest, a practitioner shall promptly notify the client or third person. Except as stated in this section or otherwise permitted by law or by agreement with the client, a practitioner shall promptly deliver to the client or third person any funds or other property that the client or third person is entitled to receive and, upon request by the client or third person, shall promptly render a full accounting regarding such property.
(e) When in the course of representation a practitioner is in possession of property in which two or more persons (one of whom may be the practitioner) claim interests, the property shall be kept separate by the practitioner until the dispute is resolved. The practitioner shall promptly distribute all portions of the property as to which the interests are not in dispute.
(f) All separate accounts for clients or third persons kept by a practitioner must also comply with the following provisions:
(1) Required records. The records to be kept include:
(i) Receipt and disbursement journals containing a record of deposits to and withdrawals from client trust accounts, specifically identifying the date, source, and description of each item deposited, as well as the date, payee and purpose of each disbursement;
(ii) Ledger records for all client trust accounts showing, for each separate trust client or beneficiary, the source of all funds deposited, the names of all persons for whom the funds are or were held, the amount of such funds, the descriptions and amounts of charges or withdrawals, and the names of all persons or entities to whom such funds were disbursed;
(iii) Copies of retainer and compensation agreements with clients;
(iv) Copies of accountings to clients or third persons showing the disbursement of funds to them or on their behalf;
(v) Copies of bills for legal fees and expenses rendered to clients;
(vi) Copies of records showing disbursements on behalf of clients;
(vii) The physical or electronic equivalents of all checkbook registers, bank statements, records of deposit, prenumbered canceled checks, and substitute checks provided by a financial institution;
(viii) Records of all electronic transfers from client trust accounts, including the name of the person authorizing transfer, the date of transfer, the name of the recipient and confirmation from the financial institution of the trust account number from which money was withdrawn and the date and the time the transfer was completed;
(ix) Copies of monthly trial balances and quarterly reconciliations of the client trust accounts maintained by the practitioner; and
(x) Copies of those portions of client files that are reasonably related to client trust account transactions.
(2) Client trust account safeguards. With respect to client trust accounts required by paragraphs (a) through (e) of this section:
(i) Only a practitioner or a person under the direct supervision of the practitioner shall be an authorized signatory or authorize transfers from a client trust account;
(ii) Receipts shall be deposited intact and records of deposit should be sufficiently detailed to identify each item; and
(iii) Withdrawals shall be made only by check payable to a named payee and not to cash, or by authorized electronic transfer.
(3) Availability of records. Records required by paragraph (f)(1) of this section may be maintained by electronic, photographic, or other media provided that they otherwise comply with paragraphs (f)(1) and (f)(2) of this section and that printed copies can be produced. These records shall be readily accessible to the practitioner.
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(4) Lawyers. The records kept by a lawyer are deemed to be in compliance with this section if the types of records that are maintained meet the recordkeeping requirements of a state in which the lawyer is licensed and in good standing, the recordkeeping requirements of the state where the lawyer’s principal place of business is located, or the recordkeeping requirements of this section.
(5) Patent agents and persons granted limited recognition who are employed in the United States by a law firm. The records kept by a law firm employing one or more registered patent agents or persons granted limited recognition under § 11.9 are deemed to be in compliance with this section if the types of records that are maintained meet the recordkeeping requirements of the state where at least one practitioner of the law firm is licensed and in good standing, the recordkeeping requirements of the state where the law firm’s principal place of business is located, or the recordkeeping requirements of this section.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.116 Declining or terminating representation.
(a) Except as stated in paragraph (c) of this section, a practitioner shall not represent a client, or where representation has commenced, shall withdraw from the representation of a client if:
(1) The representation will result in violation of the USPTO Rules of Professional Conduct or other law;
(2) The practitioner’s physical or mental condition materially impairs the practitioner’s ability to represent the client; or
(3) The practitioner is discharged.
(b) Except as stated in paragraph (c) of this section, a practitioner may withdraw from representing a client if:
(1) Withdrawal can be accomplished without material adverse effect on the interests of the client;
(2) The client persists in a course of action involving the practitioner’s services that the practitioner reasonably believes is criminal or fraudulent;
(3) The client has used the practitioner’s services to perpetrate a crime or fraud;
(4) A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement;
(5) The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner’s services and has been given reasonable warning that the practitioner will withdraw unless the obligation is fulfilled;
(6) The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client; or
(7) Other good cause for withdrawal exists.
(c) A practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation. When ordered to do so by a tribunal, a practitioner shall continue representation notwithstanding good cause for terminating the representation.
(d) Upon termination of representation, a practitioner shall take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred. The practitioner may retain papers relating to the client to the extent permitted by other law.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.117 Sale of law practice.
A practitioner or a law firm may sell or purchase a law practice, or an area of law practice, including good will, if the following conditions are satisfied:
(a) The seller ceases to engage in the private practice of law, or in the area of practice that has been sold, in a geographic area in which the practice has been conducted;
(b)(1) Except as provided in paragraph (b)(2) of this section, the entire practice, or the entire area of practice, is sold to one or more lawyers or law firms;
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(2) To the extent the practice or the area of practice involves patent proceedings before the Office, that practice or area of practice may be sold only to one or more registered practitioners or law firms that include at least one registered practitioner;
(c)(1) The seller gives written notice to each of the seller’s clients regarding:
(i) The proposed sale;
(ii) The client’s right to retain other counsel or to take possession of the file; and
(iii) The fact that the client’s consent to the transfer of the client’s files will be presumed if the client does not take any action or does not otherwise object within ninety (90) days after receipt of the notice.
(2) If a client cannot be given notice, the representation of that client may be transferred to the purchaser only upon entry of an order so authorizing by a court having jurisdiction. The seller may disclose to the court in camera information relating to the representation only to the extent necessary to obtain an order authorizing the transfer of a file; and
(d) The fees charged clients shall not be increased by reason of the sale.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.118 Duties to prospective client.
(a) A person who discusses with a practitioner the possibility of forming a client-practitioner relationship with respect to a matter is a prospective client.
(b) Even when no client-practitioner relationship ensues, a practitioner who has had discussions with the prospective client shall not use or reveal information learned in the consultation, except as § 11.109 would permit with respect to information of a former client.
(c) A practitioner subject to paragraph (b) of this section shall not represent a client with interests materially adverse to those of a prospective client in the same or a substantially related matter if the practitioner received information from the prospective client that could be significantly harmful to that person in the matter, except as provided in paragraph (d) of this section. If a practitioner is
disqualified from representation under this paragraph, no practitioner in a firm with which that practitioner is associated may knowingly undertake or continue representation in such a matter, except as provided in paragraph (d) of this section.
(d) When the practitioner has received disqualifying information as defined in paragraph (c) of this section, representation is permissible if:
(1) Both the affected client and the prospective client have given informed consent, confirmed in writing; or
(2) The practitioner who received the information took reasonable measures to avoid exposure to more disqualifying information than was reasonably necessary to determine whether to represent the prospective client; and
(i) The disqualified practitioner is timely screened from any participation in the matter and is apportioned no part of the fee therefrom; and
(ii) Written notice is promptly given to the prospective client.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.119 -11.200 [Reserved]
COUNSELOR
§ 11.201 Advisor.
In representing a client, a practitioner shall exercise independent professional judgment and render candid advice. In rendering advice, a practitioner may refer not only to law but to other considerations such as moral, economic, social and political factors that may be relevant to the client’s situation.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.202 [Reserved]
§ 11.203 Evaluation for use by third persons.
(a) A practitioner may provide an evaluation of a matter affecting a client for the use of someone other than the client if the practitioner reasonably
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believes that making the evaluation is compatible with other aspects of the practitioner’s relationship with the client.
(b) When the practitioner knows or reasonably should know that the evaluation is likely to affect the client’s interests materially and adversely, the practitioner shall not provide the evaluation unless the client gives informed consent.
(c) Except as disclosure is authorized in connection with a report of an evaluation, information relating to the evaluation is otherwise protected by § 11.106.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.204 Practitioner serving as third-party neutral.
(a) A practitioner serves as a third-party neutral when the practitioner assists two or more persons who are not clients of the practitioner to reach a resolution of a dispute or other matter that has arisen between them. Service as a third-party neutral may include service as an arbitrator, a mediator or in such other capacity as will enable the practitioner to assist the parties to resolve the matter.
(b) A practitioner serving as a third-party neutral shall inform unrepresented parties that the practitioner is not representing them. When the practitioner knows or reasonably should know that a party does not understand the practitioner’s role in the matter, the practitioner shall explain the difference between the practitioner’s role as a third-party neutral and a practitioner’s role as one who represents a client.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.205 -11.300 [Reserved]
ADVOCATE
§ 11.301 Meritorious claims and contentions.
A practitioner shall not bring or defend a proceeding, or assert or controvert an issue therein, unless there is a basis in law and fact for doing so that is not
frivolous, which includes a good-faith argument for an extension, modification or reversal of existing law.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.302 Expediting proceedings.
A practitioner shall make reasonable efforts to expedite proceedings before a tribunal consistent with the interests of the client.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.303 Candor toward the tribunal.
(a) A practitioner shall not knowingly:
(1) Make a false statement of fact or law to a tribunal or fail to correct a false statement of material fact or law previously made to the tribunal by the practitioner;
(2) Fail to disclose to the tribunal legal authority in the controlling jurisdiction known to the practitioner to be directly adverse to the position of the client and not disclosed by opposing counsel in an inter partes proceeding, or fail to disclose such authority in an ex parte proceeding before the Office if such authority is not otherwise disclosed; or
(3) Offer evidence that the practitioner knows to be false. If a practitioner, the practitioner’s client, or a witness called by the practitioner, has offered material evidence and the practitioner comes to know of its falsity, the practitioner shall take reasonable remedial measures, including, if necessary, disclosure to the tribunal. A practitioner may refuse to offer evidence that the practitioner reasonably believes is false.
(b) A practitioner who represents a client in a proceeding before a tribunal and who knows that a person intends to engage, is engaging or has engaged in criminal or fraudulent conduct related to the proceeding shall take reasonable remedial measures, including, if necessary, disclosure to the tribunal.
(c) The duties stated in paragraphs (a) and (b) of this section continue to the conclusion of the proceeding, and apply even if compliance requires
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disclosure of information otherwise protected by § 11.106.
(d) In an ex parte proceeding, a practitioner shall inform the tribunal of all material facts known to the practitioner that will enable the tribunal to make an informed decision, whether or not the facts are adverse.
(e) In a proceeding before the Office, a practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.304 Fairness to opposing party and counsel.
A practitioner shall not:
(a) Unlawfully obstruct another party’s access to evidence or unlawfully alter, destroy or conceal a document or other material having potential evidentiary value. A practitioner shall not counsel or assist another person to do any such act;
(b) Falsify evidence, counsel or assist a witness to testify falsely, or offer an inducement to a witness that is prohibited by law;
(c) Knowingly disobey an obligation under the rules of a tribunal except for an open refusal based on an assertion that no valid obligation exists;
(d) Make a frivolous discovery request or fail to make a reasonably diligent effort to comply with a legally proper discovery request by an opposing party;
(e) In a proceeding before a tribunal, allude to any matter that the practitioner does not reasonably believe is relevant or that will not be supported by admissible evidence, assert personal knowledge of facts in issue except when testifying as a witness, or state a personal opinion as to the justness of a cause, the credibility of a witness, the culpability of a civil litigant or the guilt or innocence of an accused; or
(f) Request a person other than a client to refrain from voluntarily giving relevant information to another party unless:
(1) The person is a relative or an employee or other agent of a client; and
(2) The practitioner reasonably believes that the person’s interests will not be adversely affected by refraining from giving such information.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.305 Impartiality and decorum of the tribunal.
A practitioner shall not:
(a) Seek to influence a judge, hearing officer, administrative law judge, administrative patent judge, administrative trademark judge, juror, prospective juror, employee or officer of the Office, or other official by means prohibited by law;
(b) Communicate ex parte with such a person during the proceeding unless authorized to do so by law, rule or court order; or
(c) [Reserved]
(d) Engage in conduct intended to disrupt any proceeding before a tribunal.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.306 Trial publicity.
(a) A practitioner who is participating or has participated in the investigation or litigation of a matter shall not make an extrajudicial statement that the practitioner knows or reasonably should know will be disseminated by means of public communication and will have a substantial likelihood of materially prejudicing an adjudicative proceeding in the matter.
(b) Notwithstanding paragraph (a) of this section, a practitioner may state:
(1) The claim, offense or defense involved and, except when prohibited by law, the identity of the persons involved;
(2) Information contained in a public record;
(3) That an investigation of a matter is in progress;
(4) The scheduling or result of any step in litigation;
(5) A request for assistance in obtaining evidence and information necessary thereto; and
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(6) A warning of danger concerning the behavior of a person involved, when there is reason to believe that there exists the likelihood of substantial harm to an individual or to the public interest.
(c) Notwithstanding paragraph (a) of this section, a practitioner may make a statement that a reasonable practitioner would believe is required to protect a client from the substantial undue prejudicial effect of recent publicity not initiated by the practitioner or the practitioner's client. A statement made pursuant to this paragraph shall be limited to such information as is necessary to mitigate the recent adverse publicity.
(d) No practitioner associated in a firm or government agency with a practitioner subject to paragraph (a) of this section shall make a statement prohibited by paragraph (a).
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.307 Practitioner as witness.
(a) A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless:
(1) The testimony relates to an uncontested issue;
(2) The testimony relates to the nature and value of legal services rendered in the case; or
(3) Disqualification of the practitioner would work substantial hardship on the client.
(b) A practitioner may act as advocate in a proceeding before a tribunal in which another practitioner in the practitioner's firm is likely to be called as a witness unless precluded from doing so by §§ 11.107 or 11.109.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.308 [Reserved]
§ 11.309 Advocate in nonadjudicative proceedings.
A practitioner representing a client before a legislative body or administrative agency in a nonadjudicative proceeding shall disclose that the appearance is in a representative capacity and shall conform to the provisions of §§ 11.303(a) through (c), 11.304(a) through (c), and 11.305.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.310 -11.400 [Reserved]
TRANSACTIONS WITH PERSONS OTHER THAN CLIENTS
§ 11.401 Truthfulness in statements to others.
In the course of representing a client, a practitioner shall not knowingly:
(a) Make a false statement of material fact or law to a third person; or
(b) Fail to disclose a material fact to a third person when disclosure is necessary to avoid assisting a criminal or fraudulent act by a client, unless disclosure is prohibited by § 11.106.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.402 Communication with person represented by a practitioner.
(a) In representing a client, a practitioner shall not communicate about the subject of the representation with a person the practitioner knows to be represented by another practitioner in the matter, unless the practitioner has the consent of the other practitioner or is authorized to do so by law, rule, or a court order.
(b) This section does not prohibit communication by a practitioner with government
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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.307
officials who are otherwise represented by counsel and who have the authority to redress the grievances of the practitioner's client, provided that, if the communication relates to a matter for which the government official is represented, then prior to the communication the practitioner must disclose to such government official both the practitioner’s identity and the fact that the practitioner represents a party with a claim against the government.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.403 Dealing with unrepresented person.
In dealing on behalf of a client with a person who is not represented by a practitioner, a practitioner shall not state or imply that the practitioner is disinterested. When the practitioner knows or reasonably should know that the unrepresented person misunderstands the practitioner’s role in the matter, the practitioner shall make reasonable efforts to correct the misunderstanding. The practitioner shall not give legal advice to an unrepresented person, other than the advice to secure counsel, if the practitioner knows or reasonably should know that the interests of such a person are or have a reasonable possibility of being in conflict with the interests of the client.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.404 Respect for rights of third persons.
(a) In representing a client, a practitioner shall not use means that have no substantial purpose other than to embarrass, delay, or burden a third person, or use methods of obtaining evidence that violate the legal rights of such a person.
(b) A practitioner who receives a document or electronically stored information relating to the representation of the practitioner’s client and knows or reasonably should know that the document or electronically stored information was inadvertently sent shall promptly notify the sender.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.405
-11.500 [Reserved]
LAW FIRMS AND ASSOCIATIONS
§ 11.501 Responsibilities of partners, managers, and supervisory practitioners.
(a) A practitioner who is a partner in a law firm, and a practitioner who individually or together with other practitioners possesses comparable managerial authority in a law firm, shall make reasonable efforts to ensure that the firm has in effect measures giving reasonable assurance that all practitioners in the firm conform to the USPTO Rules of Professional Conduct.
(b) A practitioner having direct supervisory authority over another practitioner shall make reasonable efforts to ensure that the other practitioner conforms to the USPTO Rules of Professional Conduct.
(c) A practitioner shall be responsible for another practitioner's violation of the USPTO Rules of Professional Conduct if:
(1) The practitioner orders or, with knowledge of the specific conduct, ratifies the conduct involved; or
(2) The practitioner is a partner or has comparable managerial authority in the law firm in which the other practitioner practices, or has direct supervisory authority over the other practitioner, and knows of the conduct at a time when its consequences can be avoided or mitigated but fails to take reasonable remedial action.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.502 Responsibilities of a subordinate practitioner.
(a) A practitioner is bound by the USPTO Rules of Professional Conduct notwithstanding that the practitioner acted at the direction of another person.
(b) A subordinate practitioner does not violate the USPTO Rules of Professional Conduct if that practitioner acts in accordance with a supervisory practitioner’s reasonable resolution of an arguable question of professional duty.
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§ 11.502PATENT RULES
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.503 Responsibilities regarding non-practitioner assistance.
With respect to a non-practitioner assistant employed or retained by or associated with a practitioner:
(a) A practitioner who is a partner, and a practitioner who individually or together with other practitioners possesses comparable managerial authority in a law firm shall make reasonable efforts to ensure that the firm has in effect measures giving reasonable assurance that the person’s conduct is compatible with the professional obligations of the practitioner;
(b) A practitioner having direct supervisory authority over the non-practitioner assistant shall make reasonable efforts to ensure that the person’s conduct is compatible with the professional obligations of the practitioner; and
(c) A practitioner shall be responsible for conduct of such a person that would be a violation of the USPTO Rules of Professional Conduct if engaged in by a practitioner if:
(1) The practitioner orders or, with the knowledge of the specific conduct, ratifies the conduct involved; or
(2) The practitioner is a partner or has comparable managerial authority in the law firm in which the person is employed, or has direct supervisory authority over the person, and knows of the conduct at a time when its consequences can be avoided or mitigated but fails to take reasonable remedial action.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.504 Professional independence of a practitioner.
(a) A practitioner or law firm shall not share legal fees with a non-practitioner, except that:
(1) An agreement by a practitioner with the practitioner’s firm, partner, or associate may provide for the payment of money, over a reasonable period of time after the practitioner’s death, to the
practitioner’s estate or to one or more specified persons;
(2) A practitioner who purchases the practice of a deceased, disabled, or disappeared practitioner may, pursuant to the provisions of § 11.117, pay to the estate or other representative of that practitioner the agreed-upon purchase price;
(3) A practitioner or law firm may include non-practitioner employees in a compensation or retirement plan, even though the plan is based in whole or in part on a profit-sharing arrangement; and
(4) A practitioner may share legal fees, whether awarded by a tribunal or received in settlement of a matter, with a nonprofit organization that employed, retained or recommended employment of the practitioner in the matter and that qualifies under Section 501(c)(3) of the Internal Revenue Code.
(b) A practitioner shall not form a partnership with a non-practitioner if any of the activities of the partnership consist of the practice of law.
(c) A practitioner shall not permit a person who recommends, employs, or pays the practitioner to render legal services for another to direct or regulate the practitioner’s professional judgment in rendering such legal services.
(d) A practitioner shall not practice with or in the form of a professional corporation or association authorized to practice law for a profit, if:
(1) A non-practitioner owns any interest therein, except that a fiduciary representative of the estate of a practitioner may hold the stock or interest of the practitioner for a reasonable time during administration;
(2) A non-practitioner is a corporate director or officer thereof or occupies the position of similar responsibility in any form of association other than a corporation; or
(3) A non-practitioner has the right to direct or control the professional judgment of a practitioner.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.503
§ 11.505 Unauthorized practice of law.
A practitioner shall not practice law in a jurisdiction in violation of the regulation of the legal profession in that jurisdiction, or assist another in doing so.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.506 Restrictions on right to practice.
A practitioner shall not participate in offering or making:
(a) A partnership, shareholders, operating, employment, or other similar type of agreement that restricts the right of a practitioner to practice after termination of the relationship, except an agreement concerning benefits upon retirement; or
(b) An agreement in which a restriction on the practitioner’s right to practice is part of the settlement of a client controversy.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.507 Responsibilities regarding law-related services.
A practitioner shall be subject to the USPTO Rules of Professional Conduct with respect to the provision of law-related services if the law-related services are provided:
(a) By the practitioner in circumstances that are not distinct from the practitioner’s provision of legal services to clients; or
(b) In other circumstances by an entity controlled by the practitioner individually or with others if the practitioner fails to take reasonable measures to assure that a person obtaining the law-related services knows that the services are not legal services and that the protections of the client-practitioner relationship do not exist.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.508
-11.700 [Reserved]
INFORMATION ABOUT LEGAL SERVICES
§ 11.701 Communications concerning a practitioner’s services.
A practitioner shall not make a false or misleading communication about the practitioner or the practitioner’s services. A communication is false or misleading if it contains a material misrepresentation of fact or law, or omits a fact necessary to make the statement considered as a whole not materially misleading.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.702 Advertising.
(a) Subject to the requirements of §§ 11.701 and 11.703, a practitioner may advertise services through written, recorded or electronic communication, including public media.
(b) A practitioner shall not give anything of value to a person for recommending the practitioner’s services except that a practitioner may:
(1) Pay the reasonable costs of advertisements or communications permitted by this section;
(2) [Reserved]
(3) Pay for a law practice in accordance with § 11.117; and
(4) Refer clients to another practitioner or a non-practitioner professional pursuant to an agreement not otherwise prohibited under the USPTO Rules of Professional Conduct that provides for the other person to refer clients or customers to the practitioner, if:
(i) The reciprocal referral agreement is not exclusive, and
(ii) The client is informed of the existence and nature of the agreement.
(c) Any communication made pursuant to this section shall include the name and office address of
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§ 11.702PATENT RULES
at least one practitioner or law firm responsible for its content.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.703 Direct contact with prospective clients.
(a) A practitioner shall not by in-person, live telephone or real-time electronic contact solicit professional employment from a prospective client when a significant motive for the practitioner’s doing so is the practitioner’s pecuniary gain, unless the person contacted:
(1) Is a practitioner; or
(2) Has a family, close personal, or prior professional relationship with the practitioner.
(b) A practitioner shall not solicit professional employment from a prospective client by written, recorded or electronic communication or by in-person, telephone or real-time electronic contact even when not otherwise prohibited by paragraph (a) of this section, if:
(1) The prospective client has made known to the practitioner a desire not to be solicited by the practitioner; or
(2) The solicitation involves coercion, duress or harassment.
(c) Every written, recorded or electronic communication from a practitioner soliciting professional employment from a prospective client known to be in need of legal services in a particular matter shall include the words "Advertising Material" on the outside envelope, if any, and at the beginning and ending of any recorded or electronic communication, unless the recipient of the communication is a person specified in paragraphs (a)(1) or (a)(2) of this section.
(d) Notwithstanding the prohibitions in paragraph (a) of this section, a practitioner may participate with a prepaid or group legal service plan operated by an organization not owned or directed by the practitioner that uses in-person or telephone contact to solicit memberships or subscriptions for the plan from persons who are not known to need legal services in a particular matter covered by the plan.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.704 Communication of fields of practice and specialization.
(a) A practitioner may communicate the fact that the practitioner does or does not practice in particular fields of law.
(b) A registered practitioner who is an attorney may use the designation "Patents," "Patent Attorney," "Patent Lawyer," "Registered Patent Attorney," or a substantially similar designation. A registered practitioner who is not an attorney may use the designation ‘"Patents," "Patent Agent," "Registered Patent Agent," or a substantially similar designation. Unless authorized by § 11.14(b), a registered patent agent shall not hold himself or herself out as being qualified or authorized to practice before the Office in trademark matters or before a court.
(c) [Reserved]
(d) A practitioner shall not state or imply that a practitioner is certified as a specialist in a particular field of law, unless:
(1) The practitioner has been certified as a specialist by an organization that has been approved by an appropriate state authority or that has been accredited by the American Bar Association; and
(2) The name of the certifying organization is clearly identified in the communication.
(e) An individual granted limited recognition under § 11.9 may use the designation "Limited Recognition."
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.705 Firm names and letterheads.
(a) A practitioner shall not use a firm name, letterhead or other professional designation that violates § 11.701. A trade name may be used by a practitioner in private practice if it does not imply a connection with a government agency or with a public or charitable legal services organization and is not otherwise in violation of § 11.701.
(b) [Reserved]
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(c) The name of a practitioner holding a public office shall not be used in the name of a law firm, or in communications on its behalf, during any substantial period in which the practitioner is not actively and regularly practicing with the firm.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.706 -11.800 [Reserved]
MAINTAININGTHE INTEGRITY OFTHE PROFESSION
§ 11.801 Registration, recognition and disciplinary matters.
An applicant for registration or recognition to practice before the Office, or a practitioner in connection with an application for registration or recognition, or a practitioner in connection with a disciplinary or reinstatement matter, shall not:
(a) Knowingly make a false statement of material fact; or
(b) Fail to disclose a fact necessary to correct a misapprehension known by the person to have arisen in the matter, fail to cooperate with the Office of Enrollment and Discipline in an investigation of any matter before it, or knowingly fail to respond to a lawful demand or request for information from an admissions or disciplinary authority, except that the provisions of this section do not require disclosure of information otherwise protected by § 11.106.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.802 Judicial and legal officials.
(a) A practitioner shall not make a statement that the practitioner knows to be false or with reckless disregard as to its truth or falsity concerning the qualifications or integrity of a judge, adjudicatory officer or public legal officer, or of a candidate for election or appointment to judicial or legal office.
(b) A practitioner who is a candidate for judicial office shall comply with the applicable provisions of the Code of Judicial Conduct.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.803 Reporting professional misconduct.
(a) A practitioner who knows that another practitioner has committed a violation of the USPTO Rules of Professional Conduct that raises a substantial question as to that practitioner’s honesty, trustworthiness or fitness as a practitioner in other respects, shall inform the OED Director and any other appropriate professional authority.
(b) A practitioner who knows that a judge, hearing officer, administrative law judge, administrative patent judge, or administrative trademark judge has committed a violation of applicable rules of judicial conduct that raises a substantial question as to the individual’s fitness for office shall inform the appropriate authority.
(c) The provisions of this section do not require disclosure of information otherwise protected by § 11.106 or information gained while participating in an approved lawyers assistance program.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.804 Misconduct.
It is professional misconduct for a practitioner to:
(a) Violate or attempt to violate the USPTO Rules of Professional Conduct, knowingly assist or induce another to do so, or do so through the acts of another;
(b) Commit a criminal act that reflects adversely on the practitioner’s honesty, trustworthiness or fitness as a practitioner in other respects;
(c) Engage in conduct involving dishonesty, fraud, deceit or misrepresentation;
(d) Engage in conduct that is prejudicial to the administration of justice;
(e) State or imply an ability to influence improperly a government agency or official or to achieve results by means that violate the USPTO Rules of Professional Conduct or other law;
(f) Knowingly assist a judge, hearing officer, administrative law judge, administrative patent judge, administrative trademark judge, or judicial
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§ 11.804PATENT RULES
officer in conduct that is a violation of applicable rules of judicial conduct or other law;
(g) Knowingly assist an officer or employee of the Office in conduct that is a violation of applicable rules of conduct or other law;
(h) Be publicly disciplined on ethical or professional misconduct grounds by any duly constituted authority of:
(1) A State,
(2) The United States, or
(3) The country in which the practitioner resides; or
(i) Engage in other conduct that adversely reflects on the practitioner’s fitness to practice before the Office.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 11.805 -11.900 [Reserved]
§ 11.901 Savings clause.
(a) A disciplinary proceeding based on conduct engaged in prior to the effective date of these regulations may be instituted subsequent to such effective date, if such conduct would continue to justify disciplinary sanctions under the provisions of this part.
(b) No practitioner shall be subject to a disciplinary proceeding under this part based on conduct engaged in before the effective date hereof if such conduct would not have been subject to disciplinary action before such effective date.
[Added 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.805 - 11.900
Index II — RULES RELATING TO REPRESENTATION OF OTHERS BEFORE THE UNITED STATES
PATENT AND TRADEMARK OFFICE
A
Address change .............. .................. 1.33 11.11 Advertising .................................. 11.701 11.705 Agents, registration of ............ ................ 11.6(b) Agreements restricting practice ..... ......... 11.506 Aliens ................ 11.6 11.7(b) 11.9(b) 11.14(c) Applicant for patent, representation of ................... ............................................................. 1.31 11.10 Attorneys, recognition of to practice in trademark cases .......................... .............................. 11.14
Attorneys, registration of to practice in patent cases ............................................................... 11.6 11.7
B
Breach of trust .................. ...................... 11.7(h) Business transactions or relations with client ......... ............................................................... 11.108(a)
C
Candidate for judicial office .................... 11.802 Candor of practitioner toward the tribunal .............. .................................................................... 11.303 Certificate of mailing .......................... 1.8 11.18 Certification effect of signature ...... .......... 11.18 Client-Practitioner relationship:
Communication ................................ 11.104 Competence ...................................... 11.101 Confidentiality of information .......... 11.106 Conflict of interest; current clients ................... ................................................ 11.107 11.108 Declining or terminating representation ........... ............................................................. 11.116 Diligence .......................................... 11.103 Diminished capacity client ................ 11.114 Fees .................................................... 11.105 Former clients, duties to .................... 11.109 Former judge, arbitrator, mediator or other third-party neutral ............................ 11.112
Government employees .................... 11.111 Imputation of conflicts of interests .... 11.110 Organization as client ........................ 11.113 Safekeeping property ........................ 11.115 Sale of law practice .......................... 11.117
Scope of representation .................... 11.102 Committee on Discipline ........... ............... 11.23 Communications:
Concerning a practitioner’s services ... 11.701 With client ........................................ 11.104 With person represented by a practitioner ........ ............................................................. 11.402 With perspective clients .................... 11.703 With unrepresented person ................ 11.403
Compensation for legal services .......... 11.108(f) Competence .................... ........................ 11.101 Complaint instituting disciplinary proceedings ...... ...................................................................... 11.34 Concealment of material information ...... 11.304 Conduct prejudicial to the administration of justice ............................................................... 11.804(d) Confidentiality of information obtained through representation .................. ...................... 11.106
Conflict of interest ...................... 11.107 11.113 Conviction of criminal offense ................................ ................................................... 11.7(h)(1) 11.25
D
Deceit ....................... ........................... 11.804(c) Decisions of the USPTO Director .... 11.56 11.57 Declining representation .......................... 11.116 Definitions:
Agent .................................................... 11.6 Attorney or lawyer ................................ 11.1 Belief or believes .................................. 11.1 Confirmed in writing ............................ 11.1 Conviction or convicted ........................ 11.1 Crime .................................................... 11.1 Data sheet .............................................. 11.1 Disqualified .......................................... 11.1 Federal agency ...................................... 11.1 Federal program .................................... 11.1 Firm or law firm .................................... 11.1 Fraud or fraudulent ................................ 11.1 Good moral character and reputation .... 11.1 Grievance .............................................. 11.1 Knowingly, known, or knows ................ 11.1 Law-related services .............................. 11.1 OED (Office of Enrollment and Discipline) .... ................................................................. 11.1 OED Director ........................................ 11.1 OED Director's representatives ............ 11.1 Office .................................................... 11.1 Partner .................................................. 11.1 Person .................................................... 11.1 Practitioner ............................................ 11.1
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Proceeding before the Office ................ 11.1 Reasonable or reasonably ...................... 11.1 Reasonable belief or reasonably believes ......... ................................................................. 11.1 Reasonably should know ...................... 11.1 Registration .......................................... 11.1 Respondent .......................................... 11.34 Roster .................................................... 11.1 Screened ................................................ 11.1 Serious crime .......................................... 11.1 Serious evidence of rehabilitation ........ 11.1 State ...................................................... 11.1 Substantial ............................................ 11.1 Suspend or suspension .......................... 11.1 Tribunal ................................................ 11.1 United States ........................................ 11.1 USPTO Director .................................... 11.1 Writing or written .................................. 11.1
Diligence of practitioner .......................... 11.103 Diminished capacity client ......... ............. 11.114 Direct contact with prospective clients .... 11.703 Director of the Office of Enrollment and Discipline:
Appointment .................................... 11.2(a) Duties ................................................ 11.2(b) Petition regarding enrollment or recognition ... ............................................................. 11.2(c) Petition regarding disciplinary matters ............. ............................................................. 11.2(e) Review of decisions of OED Director .............. ............................................................ 11.2(d)
Discharge of attorney or agent by client ................. ............................................................... 11.116(d) Disciplinary proceedings and investigations:
Amendment of pleadings .................... 11.45 Answer to complaint .......................... 11.36 Appeal to the USPTO Director .......... 11.55 Burden of proof .................................. 11.49 Certificate of mailing .................. 1.8 11.18 Committee on Discipline .................... 11.23 Complaint ............................................ 11.34 Contested case .................................... 11.38 Decision of the USPTO Director ........ 11.57 Depositions .......................................... 11.51 Discovery ............................................ 11.52 Dissemination of disciplinary information ....... ............................................................... 11.59 Duties of disciplined or resigned practitioner .. ............................................................... 11.58 Evidence .............................................. 11.50 Exclusion on consent .......................... 11.27 Filing papers after complaint filed ...... 11.41
Hearing officer .................................... 11.39 Hearings .............................................. 11.44 Incapacitated practitioners .................. 11.28 Initial decision of hearing officer ........ 11.54 Instituting disciplinary proceeding ...... 11.32 Investigations of violations of disciplinary rules
.......................................................... 11.22 Jurisdiction .......................................... 11.19 Motions ................................................ 11.43 Petition for reinstatement .................... 11.60 Post hearing memorandum .................. 11.53 Reciprocal discipline .......................... 11.24 Reciprocal transfer .............................. 11.29 Reinstatement of suspended or excluded practitioner ........................................ 11.60
Representative for OED Director/respondent .. ............................................................... 11.40 Review of decision denying reinstatement of practitioner .......................... 11.2(d) 11.57
Review of interlocutory orders by hearing officer ................................................ 11.39
Sanctions ............................................ 11.20 Serious crime, suspension and discipline based on ...................................................... 11.25
Service of complaint ............................ 11.35 Service of papers ................................ 11.42 Settlement of complaint ...................... 11.26 Stays .................................................... 11.39 Transfer to disability inactive status .... 11.29 Warnings .............................................. 11.21
Disciplinary rule violation Disclosure of .................................................... ........... 11.25 11.501 11.503 11.801 11.803
Discovery in disciplinary proceedings: Depositions .......................................... 11.51 Discovery ............................................ 11.52 Evidence .............................................. 11.50 Motions filed with hearing officer ...... 11.43
Division of legal fees ........... ............... 11.105(e)
E
Excessive legal fees ............ ................ 11.105(a)
F
Failure to disclose material fact with regard to registration ................................ 11.7(g) 11.801
Failure to notify client .............................. 11.104 False accusations .............. .................. 11.303(a) False statements concerning officials ... 11.802(a) Fees:
Delinquency .............................. 1.21(a)(9)(i)
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Petition to review decision of Director of Enrollment and Discipline .......... 1.21(a)(5)
Registration for admission to examination ....... ........................................................ 1.21(a)(1) Registration to practice ................ 1.21(a)(2) Reinstatement .......................... 1.21(a)(9)(ii)
Fields of practice and specialization ........ 11.704 Firm name, use of .................................... 11.705 Foreigners .............. 11.6 11.7(b) 11.9(b) 11.14 Former clients, duties to ........... ............... 11.109 Former judge,arbitrator,mediatororother third-party neutral ........................ ............................ 11.112
Former Patent and Trademark Office employees ... ........................................... 11.7(d) 11.10 11.111 Fraud ............ 11.102(d) 11.401 11.801 11.804 Frivolous complaint .............. .................. 11.301 Funds of client, preserving identity of .... 11.115
G
Gift, improperly bestowing ...... .......... 11.108(c) Government employees, registration of to practice in patent cases ...................................... 11.10(e)
Government employees, representation of clients .. .................................................................... 11.111
I
Illegal fees for services ........................ 11.105(c) Impartiality of practitioner toward tribunal ............ .................................................................... 11.305 Imputation of conflicts of interests .......... 11.110 Incompetence ................... ....................... 11.101 Independent professional judgment, exercise of ..... .................................................................... 11.201 Influence by others than client ...... .......... 11.203 Integrity of the legal profession, maintaining of ..... ....................................................... 11.801 11.901
J
Judicial office, candidate for .................... 11.802
L
Law firms and associations: Professional independence of a practitioner ..... ............................................................. 11.504 Responsibilities of partners, managers and supervisory practitioners ................ 11.501
Responsibilities of a subordinate practitioner .. ............................................................. 11.502 Responsibilities regarding law-related services ............................................................. 11.507
Responsibilities regarding non-practitioner assistance ........................................ 11.503
Restrictions on right to practice ........ 11.506 Unauthorized practice of law ............ 11.505
Law-related services, responsibilities regarding ..... .................................................................... 11.507 Legal fees:
Division of .................................... 11.105(e) Sharing of .......................................... 11.504
Legal services: Advertising ........................................ 11.702 Communications concerning a practitioner’s services ............................................ 11.701
Fields of practice and specialization .. 11.704 Names and letterhead of firm ............ 11.507 Perspective clients, direct contact with ............ ............................................................. 11.703
Letterheads, use of ............... ................... 11.507 Limited recognition to practice in patent matters ... ........................................................................ 11.9
M
Malpractice, limiting client’s liability .. 11.108(h) Materially false statements in application for registration .............................................. 11.801
Misappropriation of funds ......... ............. 11.115 Misconduct ..................... ......................... 11.804 Misconduct, reporting of .......................... 11.803 Misrepresentations ...................... 11.401 11.801
N
Non-practitioner assistance, responsibilities ........... .................................................................... 11.503
O
Oath requirement .................. ...................... 11.8 Organization as client ............. ................. 11.113
P
Partners, responsibilities of ...................... 11.501 Perspective clients, direct contact with .... 11.703 Petitions:
Reinstatement ...................................... 11.60 Review of final decision of USPTO Director ... ............................................................... 11.57 Review decision of Director of Enrollment and Discipline ........................................ 11.2(d)
Suspension of rules ................................ 11.3 Practitioner acting as counselor:
Advising client .................................. 11.201 Evaluation for use by third persons .... 11.203
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Serving as neutral party .................... 11.204 Practitioner acting as advocate:
Advocate in nonadjudicative proceedings ........ ............................................................. 11.309 Candor toward the tribunal ................ 11.303 Expediting proceedings .................... 11.302 Fairness to opposing party and counsel ............ ............................................................. 11.304 Impartiality and decorum of the tribunal .......... ............................................................. 11.305 Meritorious claims and contentions ... 11.301 Practitioner as a witness .................... 11.307 Trial publicity .................................... 11.306
Preserve secrets and confidence of client ............... ....................................................... 11.106 11.109 Property of client ................ .................... 11.115 Proprietary interest in subject matter . ..... 11.108
R
Recognition to practice before the Patent and Trademark Office:
Agents ............ 11.5 11.6(b) 11.7 11.14(b) Aliens ........ 11.6 11.7(b), 11.9(b), 11.14(c) Attorneys .............. 11.5 11.6(a) 11.7 11.14 Change of address, requirement to notify Director ........................................ 11.11(a)
Examination for registration in patent cases .... ................................................................. 11.7 Examination fees .................... 1.21(a), 11.7 Foreigners .. 11.6, 11.7(b), 11.9(b) 11.14(c) Former Patent and Trademark Office employees ................................................. 11.7(d) 11.10 Government employees .................. 11.10(e) Limited recognition in patent cases ...... 11.9 Non-lawyers, recognition in trademark cases .. .......................................................... 11.14(b) Recognition for representation .... 1.34 11.14 Refusal to recognize practitioner ........ 11.15 Register of attorneys and agents in patent cases ................................................................. 11.5 Registration fee ................................ 1.21(a) Registration number .............................. 1.34 Removal of attorneys and agents from the register .............................................. 11.11
Representation by registered attorney or agent in patent cases .......................................... 1.31
Requirements for registration ................ 11.7 Review of Director’s decision refusing registration ...................................... 11.2(d)
Trademark cases .................................. 11.14
Unauthorized representation by an agent ......... ............................................................... 11.10
Records, property and funds of client, maintaining of ............................ ................................ 11.115
Reinstatement of practitioner ........ ............ 11.60 Reporting misconduct of practitioners .... 11.803
S
Safekeeping client’s property ....... ........... 11.115 Sale of law practice .................................. 11.117 Savings clause .......................................... 11.901 Sharing legal fees ................ .................... 11.504 Signature and certificate of practitioner .... 11.18 Solicitation .................................. 11.701 11.705 Statement concerning officials, making false ......... ............................................................... 11.802(a) Subordinate practitioner, responsibilities of ........... .................................................................... 11.502 Suspension of practitioner .............. 11.11 11.25 Suspension of rules ...................................... 11.3
T
Transactions with persons other than clients: Communications with person represented by a practitioner ...................................... 11.402
Respect for rights of third persons .... 11.404 Truthfulness in statements to others ... 11.402 Unrepresented persons, dealing with ................ ............................................................. 11.403
U
Unauthorized practice .............................. 11.505 Unrepresented persons, dealing with . ..... 11.403
V
Violating duty of candor .......................... 11.303 Violation of disciplinary rule, misconduct .............. .................................................................... 11.804
W
Withdrawal from representation ..... ......... 11.116 Witness, practitioner as ............................ 11.307
PART 41 — PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Sec. 41.2 Definitions. 41.3 Petitions. 41.4 Timeliness. 41.5 Counsel.
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41.6 Public availability of Board records. 41.7 Management of the record. 41.8 Mandatory notices. 41.9 Action by owner. 41.9 (pre-AIA) Action by owner. 41.10 Correspondence addresses. 41.11 Ex parte communications in inter partes
proceedings. 41.12 Citation of authority. 41.20 Fees.
General Provisions
41.1 Policy.
Ex Parte Appeals
41.30 Definitions. 41.31 Appeal to Board. 41.33 Amendments and affidavits or other
Evidence after appeal. 41.35 Jurisdiction over appeal. 41.37 Appeal brief. 41.39 Examiner’s answer. 41.40 Tolling of time period to file a reply brief. 41.41 Reply brief. 41.43 [Removed] 41.45 Appeal forwarding fee. 41.47 Oral hearing. 41.50 Decisions and other actions by the Board. 41.52 Rehearing. 41.54 Action following decision.
Inter Partes Appeals
41.60 Definitions. 41.61 Notice of appeal and cross appeal to Board. 41.63 Amendments and affidavits or other
evidence after appeal. 41.64 Jurisdiction over appeal in inter partes
reexamination. 41.66 Time for filing briefs. 41.67 Appellant’s brief. 41.68 Respondent’s brief. 41.69 Examiner’s answer. 41.71 Rebuttal brief. 41.73 Oral hearing. 41.77 Decisions and other actions by the Board. 41.79 Rehearing. 41.81 Action following decision.
Contested Cases
41.100 Definitions. 41.101 Notice of proceeding. 41.102 Completion of examination. 41.103 Jurisdiction over involved files. 41.104 Conduct of contested cases. 41.106 Filing and service. 41.108 Lead counsel. 41.109 Access to and copies of Office records. 41.110 Filing claim information. 41.120 Notice of basis for relief. 41.121 Motions. 41.122 Oppositions and replies. 41.123 Default filing times. 41.124 Oral argument. 41.125 Decision on motions. 41.126 Arbitration. 41.127 Judgment. 41.128 Sanctions. 41.150 Discovery. 41.151 Admissibility. 41.152 Applicability of the Federal Rules of
Evidence. 41.153 Records of the Office. 41.154 Form of evidence. 41.155 Objection; motion to exclude; motion in
limine. 41.156 Compelling testimony and production. 41.157 Taking testimony. 41.158 Expert testimony; tests and data.
Patent Interferences
41.200 Procedure; pendency. 41.201 Definitions. 41.202 Suggesting an interference. 41.203 Declaration. 41.204 Notice of basis for relief. 41.205 Settlement agreements. 41.206 Common interests in the invention. 41.207 Presumptions. 41.208 Content of substantive and responsive
motions.
Subpart A — General Provisions
§ 41.1 Policy.
(a) Scope. Part 41 governs appeals and interferences before the Patent Trial and Appeal Board. Sections 1.1 to 1.36 and 1.181 to 1.183 of this title also apply to practice before the Board, as
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§ 41.1PATENT RULES
do other sections of part 1 of this title that are incorporated by reference into part 41.
(b) Construction. The provisions of Part 41 shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding before the Board.
(c) Decorum. Each party must act with courtesy and decorum in all proceedings before the Board, including interactions with other parties.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000; para. (a) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 41.2 Definitions.
Unless otherwise clear from the context, the following definitions apply to proceedings under this part:
Affidavit means affidavit, declaration under § 1.68 of this title, or statutory declaration under 28 U.S.C. 1746. A transcript of an ex parte deposition may be used as an affidavit in a contested case.
Board means the Patent Trial and Appeal Board and includes:
(1) For a final Board action:
(i) In an appeal or contested case, a panel of the Board.
(ii) In a proceeding under § 41.3, the Chief Administrative Patent Judge or another official acting under an express delegation from the Chief Administrative Patent Judge.
(2) For non-final actions, a Board member or employee acting with the authority of the Board.
Board member means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges.
Contested case means a Board proceeding other than an appeal under 35 U.S.C. 134 or a petition
under § 41.3. An appeal in an inter partes reexamination is not a contested case.
Final means, with regard to a Board action, final for the purposes of judicial review. A decision is final only if:
(1) In a panel proceeding. The decision is rendered by a panel, disposes of all issues with regard to the party seeking judicial review, and does not indicate that further action is required; and
(2) In other proceedings. The decision disposes of all issues or the decision states it is final.
Hearing means consideration of the issues of record. Rehearing means reconsideration.
Office means United States Patent and Trademark Office.
Panel means at least three Board members acting in a panel proceeding.
Panel proceeding means a proceeding in which final action is reserved by statute to at least three Board members, but includes a non-final portion of such a proceeding whether administered by a panel or not.
Party, in this part, means any entity participating in a Board proceeding, other than officers and employees of the Office, including:
(1) An appellant;
(2) A participant in a contested case;
(3) A petitioner; and
(4) Counsel for any of the above, where context permits.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; introductory text of the definition of “Board” revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 41.3 Petitions.
(a) Deciding official. Petitions must be addressed to the Chief Administrative Patent Judge. A panel or an administrative patent judge may certify a question of policy to the Chief Administrative Patent Judge for decision. The Chief Administrative Patent Judge may delegate authority to decide petitions.
(b) Scope. This section covers petitions on matters pending before the Board (§§ 41.35, 41.64, 41.103, and 41.205); otherwise, see §§ 1.181 to
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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.2
1.183 of this title. The following matters are not subject to petition:
(1) Issues committed by statute to a panel, and
(2) In pending contested cases, procedural issues. See § 41.121(a)(3) and § 41.125(c).
(c) Petition fee. The fee set in § 41.20(a) must accompany any petition under this section except no fee is required for a petition under this section seeking supervisory review.
(d) Effect on proceeding. The filing of a petition does not stay the time for any other action in a Board proceeding.
(e) Time for action.
(1) Except as otherwise provided in this part or as the Board may authorize in writing, a party may:
(i) File the petition within 14 days from the date of the action from which the party is requesting relief, and
(ii) File any request for reconsideration of a petition decision within 14 days of the decision on petition or such other time as the Board may set.
(2) A party may not file an opposition or a reply to a petition without Board authorization.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (e)(1) revised, 69 FR 58260, Sept. 30, 2004, effective Sept. 30, 2004]
§ 41.4 Timeliness.
(a) Extensions of time. Extensions of time will be granted only on a showing of good cause except as otherwise provided by rule.
(b) Late filings. (1) A late filing that results in either an application becoming abandoned or a reexamination prosecution becoming terminated under §§ 1.550(d) or 1.957(b) of this title or limited under § 1.957(c) of this title may be revived as set forth in § 1.137 of this title.
(2) A late filing that does not result in either an application becoming abandoned or a reexamination prosecution becoming terminated under §§ 1.550(d) or 1.957(b) of this title or limited under § 1.957(c) of this title will be excused upon a showing of excusable neglect or a Board
determination that consideration on the merits would be in the interest of justice.
(c) Scope. This section governs all proceedings before the Board, but does not apply to filings related to Board proceedings before or after the Board has jurisdiction, such as:
(1) Extensions during prosecution (see § 1.136 of this title),
(2) Filing of a brief or request for oral hearing (see §§ 41.37, 41.41, 41.47, 41.67, 41.68, 41.71 and 41.73), or
(3) Seeking judicial review (see §§ 1.301 to 1.304 of this title).
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
§ 41.5 Counsel.
While the Board has jurisdiction:
(a) Appearance pro hac vice. The Board may authorize a person other than a registered practitioner to appear as counsel in a specific proceeding.
(b) Disqualification. (1) The Board may disqualify counsel in a specific proceeding after notice and an opportunity to be heard.
(2) A decision to disqualify is not final for the purposes of judicial review until certified by the Chief Administrative Patent Judge.
(c) Withdrawal. Counsel may not withdraw from a proceeding before the Board unless the Board authorizes such withdrawal. See § 11.116 of this subchapter regarding conditions for withdrawal.
(d) Procedure. The Board may institute a proceeding under this section on its own or a party in a contested case may request relief under this section.
(e) Referral to the Director of Enrollment and Discipline. Possible violations of the disciplinary rules in part 11 of this subchapter may be referred to the Office of Enrollment and Discipline for investigation. See § 11.22 of this subchapter.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (e) revised, 73 FR 47650, Aug. 14,
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§ 41.5PATENT RULES
2008, effective Sept. 15, 2008; para. (c) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]
§ 41.6 Public availability of Board records.
(a) Publication. (1) Generally. Any Board action is available for public inspection without a party’s permission if rendered in a file open to the public pursuant to § 1.11 of this title or in an application that has been published in accordance with §§ 1.211 to 1.221 of this title. The Office may independently publish any Board action that is available for public inspection.
(2) Determination of special circumstances. Any Board action not publishable under paragraph (a)(1) of this section may be published or made available for public inspection if the Director believes that special circumstances warrant publication and a party does not, within two months after being notified of the intention to make the action public, object in writing on the ground that the action discloses the objecting party’s trade secret or other confidential information and states with specificity that such information is not otherwise publicly available. If the action discloses such information, the party shall identify the deletions in the text of the action considered necessary to protect the information. If the affected party considers that the entire action must be withheld from the public to protect such information, the party must explain why. The party will be given time, not less than twenty days, to request reconsideration and seek court review before any contested portion of the action is made public over its objection.
(b) Record of proceeding. (1) The record of a Board proceeding is available to the public unless a patent application not otherwise available to the public is involved.
(2) Notwithstanding paragraph (b)(1) of this section, after a final Board action in or judgment in a Board proceeding, the record of the Board proceeding will be made available to the public if any involved file is or becomes open to the public under § 1.11 of this title or an involved application is or becomes published under §§ 1.211 to 1.221 of this title.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.7 Management of the record.
(a) The Board may expunge any paper directed to a Board proceeding, or filed while an application or patent is under the jurisdiction of the Board, that is not authorized under this part or in a Board order, or that is filed contrary to a Board order.
(b) A party may not file a paper previously filed in the same Board proceeding, not even as an exhibit or appendix, without Board authorization or as required by rule.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.8 Mandatory notices.
(a) In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the initiation of a contested case (§ 41.101), and within 20 days of any change during the proceeding, a party must identify:
(1) Its real party-in-interest, and
(2) Each judicial or administrative proceeding that could affect, or be affected by, the Board proceeding.
(b) For contested cases, a party seeking judicial review of a Board proceeding must file a notice with the Board of the judicial review within 20 days of the filing of the complaint or the notice of appeal. The notice to the Board must include a copy of the complaint or notice of appeal. See also §§ 1.301 to 1.304 of this title.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.9 Action by owner.
[Editor Note: Para. (a) below is applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]
(a) Entire interest. An owner of the entire interest in an application or patent involved in a Board proceeding may act in the proceeding to the exclusion of the inventor (see §§ 3.71 and 3.73 of this title).
(b) Part interest. An owner of a part interest in an application or patent involved in a Board proceeding may petition to act in the proceeding to the exclusion of an inventor or a co-owner. The
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petition must show the inability or refusal of an inventor or co-owner to prosecute the proceeding or other cause why it is in the interest of justice to permit the owner of a part interest to act in the proceeding. An order granting the petition may set conditions on the actions of the parties during the proceeding.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The revisions to para. (a) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 41.9 (pre-AIA) for the rule otherwise in effect.]
§ 41.9 (pre-AIA) Action by owner.
[Editor Note: Para. (a) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]
(a) Entire interest. An owner of the entire interest in an application or patent involved in a Board proceeding may act in the proceeding to the exclusion of the inventor (see 3.73(b) of this title).
(b) Part interest. An owner of a part interest in an application or patent involved in a Board proceeding may petition to act in the proceeding to the exclusion of an inventor or a co-owner. The petition must show the inability or refusal of an inventor or co-owner to prosecute the proceeding or other cause why it is in the interest of justice to permit the owner of a part interest to act in the proceeding. An order granting the petition may set conditions on the actions of the parties during the proceeding.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
[*See § 41.9 for more information and for § 41.9(a) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
§ 41.10 Correspondence addresses.
Except as the Board may otherwise direct,
(a) Appeals. Correspondence in an application or a patent involved in an appeal (subparts B and C of this part) during the period beginning when an appeal docketing notice is issued and ending when a decision has been rendered by the Board, as well
as any request for rehearing of a decision by the Board, shall be mailed to: Patent Trial and Appeal Board, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313–1450. Notices of appeal, appeal briefs, reply briefs, requests for oral hearing, as well as all other correspondence in an application or a patent involved in an appeal to the Board for which an address is not otherwise specified, should be addressed as set out in § 1.1(a)(1)(i) of this title.
(b) Interferences. Mailed correspondence in interference (subpart D of this part) shall be sent to Mail Stop INTERFERENCE, Patent Trial and Appeal Board, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313–1450.
(c) Trial Proceedings. Correspondence in trial proceedings (part 42 of this title) are governed by § 42.6(b) of this title.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 41.11 Ex parte communications in inter partes proceedings.
An ex parte communication about an inter partes reexamination (subpart C of this part) or about a contested case (subparts D and E of this part) with a Board member, or with a Board employee assigned to the proceeding, is not permitted.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.12 Citation of authority.
(a) For any United States Supreme Court decision, citation to the United States Reports is preferred.
(b) For any decision other than a United States Supreme Court decision, citation to the West Reporter System is preferred.
(c) Citations to authority must include pinpoint citations whenever a specific holding or portion of an authority is invoked.
(d) Non-binding authority should be used sparingly. If the authority is not an authority of the Office and is not reproduced in the United States
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§ 41.12PATENT RULES
Reports or the West Reporter System, a copy of the authority should be provided.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
§ 41.20 Fees.
(a) Petition fee. The fee for filing a petition under this part is: ..................................... $400.00.
(b) Appeal fees.
(1) For filing a notice of appeal from the examiner to the Patent Trial and Appeal Board:
By a micro entity (§ 1.29) ........ $200.00
By a small entity (§ 1.27(a)) ...... 400.00
By other than a small or micro entity .... 800.00
(2)
(i) For filing a brief in support of an appeal in an application or ex parte reexamination proceeding: .................................................. $0.00.
(ii) In addition to the fee for filing a notice of appeal, for filing a brief in support of an appeal in an inter partes reexamination proceeding:
By a micro entity (§ 1.29) ... $500.00
By a small entity (§ 1.27(a)) .... 1,000.00
By other than a small or micro entity .................................................................. 2,000.00
(3) For filing a request for an oral hearing before the Board in an appeal under 35 U.S.C. 134:
By a micro entity (§ 1.29) ........ $325.00
By a small entity (§ 1.27(a) ...... 650.00
By other than a small or micro entity .... 1,300.00
(4) In addition to the fee for filing a notice of appeal, for forwarding an appeal in an application or ex parte reexamination proceeding to the Board:
By a micro entity (§ 1.29) ........ $500.00
By a small entity (§ 1.27(a)) .... 1,000.00
By other than a small or micro entity .... 2,000.00
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (b)(1) through (b)(3) revised, 69
FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; para. (b)(3) corrected, 69 FR 55505, Sept. 15, 2004, effective Oct. 1, 2004; para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (b) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (b)(1) through (b)(3) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; para. (b) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (b) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013]
Subpart B — Ex Parte Appeals
§ 41.30 Definitions.
In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart unless otherwise clear from the context:
Applicant means either the applicant in a national application for a patent or the applicant in an application for reissue of a patent.
Evidence means something (including testimony, documents and tangible objects) that tends to prove or disprove the existence of an alleged fact, except that for the purpose of this subpart Evidence does not include dictionaries, which may be cited before the Board.
Owner means the owner of the patent undergoing ex parte reexamination under § 1.510 of this title.
Proceeding means either a national application for a patent, an application for reissue of a patent, an ex parte reexamination proceeding, or a trial before the Patent Trial and Appeal Board. Appeal to the Board in an inter partes reexamination proceeding is controlled by subpart C of this part.
Record means the items listed in the content listing of the Image File Wrapper of the official file of the application or reexamination proceeding on appeal or the official file of the Office if other than the Image File Wrapper, excluding amendments, Evidence, and other documents that were not entered. In the case of an issued patent being reissued or reexamined, the Record further includes the Record of the patent being reissued or reexamined.
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[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; definitions of “evidence” and “record” added, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012; definition of “proceeding” revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 41.31 Appeal to Board.
(a) Who may appeal and how to file an appeal. An appeal is taken to the Board by filing a notice of appeal.
(1) Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
(2) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title before November 29, 1999, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
(3) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title on or after November 29, 1999, any of whose claims has been finally (§ 1.113 of this title) rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
(b) The signature requirements of §§ 1.33 and 11.18(a) of this title do not apply to a notice of appeal filed under this section.
(c) An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal can be considered.
(d) The time periods set forth in paragraphs (a)(1) through (a)(3) of this section are extendable under the provisions of § 1.136 of this title for patent applications and § 1.550(c) of this title for ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) introductory text, para. (b), and para. (c) first sentence revised, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
§ 41.33 Amendments and affidavits or other Evidence after appeal.
(a) Amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date a brief is filed pursuant to § 41.37 may be admitted as provided in § 1.116 of this title.
(b) Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted:
(1) To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or
(2) To rewrite dependent claims into independent form.
(c) All other amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1).
(d)(1) An affidavit or other Evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date of filing a brief pursuant to § 41.37 may be admitted if the examiner determines that the affidavit or other Evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other Evidence is necessary and was not earlier presented has been made.
(2) All other affidavits or other Evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1).
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; section heading and paras. (c) and (d) revised, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
§ 41.35 Jurisdiction over appeal.
(a) Beginning of jurisdiction. Jurisdiction over the proceeding passes to the Board upon the filing of a reply brief under § 41.41 or the expiration of the time in which to file such a reply brief, whichever is earlier.
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§ 41.35PATENT RULES
(b) End of jurisdiction. The jurisdiction of the Board ends when:
(1) The Director or the Board enters a remand order (see §§ 41.35(c), 41.35(e), and 41.50(a)(1)),
(2) The Board enters a final decision (see § 41.2) and judicial review is sought or the time for seeking judicial review has expired,
(3) An express abandonment which complies with § 1.138 of this title is recognized,
(4) A request for continued examination is filed which complies with § 1.114 of this title,
(5) Appellant fails to take any required action under §§ 41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d), and the Board enters an order of dismissal, or
(6) Appellant reopens prosecution pursuant to § 41.40(b) or in response to a new ground of rejection entered in a decision of the Board (see § 41.50(b)(1)).
(c) Remand ordered by the Director. Prior to the entry of a decision on the appeal by the Board (see § 41.50), the Director may sua sponte order the proceeding remanded to the examiner.
(d) Documents filed during Board's jurisdiction. Except for petitions authorized by this part, consideration of any information disclosure statement or petition filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board's jurisdiction ends.
(e) Administrative remands ordered by the Board. If, after receipt and review of the proceeding, the Board determines that the file is not complete or is not in compliance with the requirements of this subpart, the Board may relinquish jurisdiction to the examiner or take other appropriate action to permit completion of the file.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
§ 41.37 Appeal brief.
(a) Timing. Appellant must file a brief under this section within two months from the date of filing the notice of appeal under § 41.31. The appeal brief fee in an application or ex parte reexamination
proceeding is $0.00, but if the appeal results in an examiner's answer, the appeal forwarding fee set forth in § 41.20(b)(4) must be paid within the time period specified in § 41.45 to avoid dismissal of an appeal.
(b) Failure to file a brief. On failure to file the brief within the period specified in paragraph (a) of this section, the appeal will stand dismissed.
(c) Content of appeal brief.
(1) Except as otherwise provided in this paragraph, the brief shall contain the following items under appropriate headings and in the order indicated in paragraphs (c)(1)(i) through (v) of this section, except that a brief filed by an appellant who is not represented by a registered practitioner need only substantially comply with paragraphs (c)(1)(i), (c)(1)(ii), (c)(1)(iv), and (c)(1)(v) of this section:
(i) Real party in interest. A statement identifying by name the real party in interest at the time the appeal brief is filed, except that such statement is not required if the named inventor or inventors are themselves the real party in interest. If an appeal brief does not contain a statement of the real party in interest, the Office may assume that the named inventor or inventors are the real party in interest.
(ii) Related appeals, interferences, and trials. A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences, trials before the Board, or judicial proceedings (collectively, "related cases") which satisfy all of the following conditions: involve an application or patent owned by the appellant or assignee, are known to appellant, the appellant’s legal representative, or assignee, and may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal, except that such statement is not required if there are no such related cases. If an appeal brief does not contain a statement of related cases, the Office may assume that there are no such related cases.
(iii) Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the rejected independent claims, which shall refer to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters. For each rejected independent claim, and for each dependent
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claim argued separately under the provisions of paragraph (c)(1)(iv) of this section, if the claim contains a means plus function or step plus function recitation as permitted by 35 U.S.C. 112(f), then the concise explanation must identify the structure, material, or acts described in the specification in the Record as corresponding to each claimed function with reference to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters. Reference to the patent application publication does not satisfy the requirements of this paragraph.
(iv) Argument. The arguments of appellant with respect to each ground of rejection, and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the Record relied on. The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant. Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal. Each ground of rejection contested by appellant must be argued under a separate heading, and each heading shall reasonably identify the ground of rejection being contested ( e.g., by claim number, statutory basis, and applied reference, if any). For each ground of rejection applying to two or more claims, the claims may be argued separately (claims are considered by appellant as separately patentable), as a group (all claims subject to the ground of rejection stand or fall together), or as a subgroup (a subset of the claims subject to the ground of rejection stand or fall together). When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. Under each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claim(s) by number. A statement which merely
points out what a claim recites will not be considered an argument for separate patentability of the claim.
(v) Claims appendix. An appendix containing a copy of the claims involved in the appeal.
(2) A brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 1.116 of this title for treatment of amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.33 for treatment of amendments, affidavits or other Evidence filed after the date of filing the appeal. Review of an examiner's refusal to admit an amendment or Evidence is by petition to the Director. See § 1.181 of this title.
(d) Notice of non-compliance. If a brief is filed which does not comply with all the requirements of paragraph (c) of this section, appellant will be notified of the reasons for non-compliance and given a time period within which to file an amended brief. If appellant does not, within the set time period, file an amended brief that overcomes all the reasons for non-compliance stated in the notification, the appeal will stand dismissed. Review of a determination of non-compliance is by petition to the Chief Administrative Patent Judge. See § 41.3.
(e) Extensions of time. The time periods set forth in this section are extendable under the provisions of § 1.136 of this title for patent applications and § 1.550(c) of this title for ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; headings of paragraphs (a), (b), (c), (d) and (e) revised, para. (c) revised; para. (d) second sentence revised and new third and fourth sentences added, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012; paras. (c)(1)(ii)-(iii) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (a) and (b) revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; paras. (a) and (b) revised, 78 FR 17102, Mar. 20, 2013, effective Mar. 20, 2013]
§ 41.39 Examiner’s answer.
(a) Content of examiner's answer. The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief.
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§ 41.39PATENT RULES
(1) An examiner's answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision), unless the examiner's answer expressly indicates that a ground of rejection has been withdrawn.
(2) An examiner's answer may include a new ground of rejection. For purposes of the examiner's answer, any rejection that relies upon any Evidence not relied upon in the Office action from which the appeal is taken (as modified by any advisory action) shall be designated by the primary examiner as a new ground of rejection. The examiner must obtain the approval of the Director to furnish an answer that includes a new ground of rejection.
(b) Appellant's response to new ground of rejection. If an examiner’s answer contains a rejection designated as a new ground of rejection, appellant must within two months from the date of the examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:
(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130 , 1.131 or 1.132 of this of this title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in § 41.41. Such a reply brief must address as set forth in § 41.37(c)(1)(iv) each new ground of rejection and should follow the other requirements of a brief as set forth in § 41.37(c). A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130 , 1.131 or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit
or other Evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.
(c) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, heading added to (b) introductory text, (b)(1) first two sentences revised, (b)(2) second, third and fourth sentences revised, and heading added to para.(c), 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
§ 41.40 Tolling of time period to file a reply brief.
(a) Timing. Any request to seek review of the primary examiner's failure to designate a rejection as a new ground of rejection in an examiner's answer must be by way of a petition to the Director under § 1.181 of this title filed within two months from the entry of the examiner's answer and before the filing of any reply brief. Failure of appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection.
(b) Petition granted and prosecution reopened. A decision granting a petition under § 1.181 to designate a new ground of rejection in an examiner's answer will provide a two-month time period in which appellant must file a reply under § 1.111 of this title to reopen the prosecution before the primary examiner. On failure to timely file a reply under § 1.111, the appeal will stand dismissed.
(c) Petition not granted and appeal maintained. A decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer will provide a two-month time period in which appellant may file only a single reply brief under § 41.41.
(d) Withdrawal of petition and appeal maintained. If a reply brief under § 41.41 is filed within two months from the date of the examiner's answer and on or after the filing of a petition under § 1.181 to designate a new ground of rejection in an examiner's answer, but before a decision on the
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petition, the reply brief will be treated as a request to withdraw the petition and to maintain the appeal.
(e) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
[Added, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
§ 41.41 Reply brief.
(a) Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer.
(b) Content.
(1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.33 for amendments, affidavits or other Evidence filed after the date of filing the appeal.
(2) Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.
(c) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a) and (b) revised and heading added to (c), 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
§ 41.43 [Removed]
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; removed, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
§ 41.45 Appeal forwarding fee.
(a) Timing. Appellant in an application or ex parte reexamination proceeding must pay the fee set forth in § 41.20(b)(4) within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this chapter to designate a new ground of rejection in an examiner's answer.
(b) Failure to pay appeal forwarding fee. On failure to pay the fee set forth in § 41.20(b)(4) within the period specified in paragraph (a) of this section, the appeal will stand dismissed.
(c) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
[Added, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; revised 78 FR 17102, Mar. 20, 2013, effective Mar. 20, 2013]
§ 41.47 Oral hearing.
(a) An oral hearing should be requested only in those circumstances in which appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing.
(b) If appellant desires an oral hearing, appellant must file, as a separate paper captioned "REQUEST FOR ORAL HEARING," a written request for such hearing accompanied by the fee set forth in § 41.20(b)(3) within two months from the date of the examiner's answer or on the date of filing of a reply brief, whichever is earlier.
(c) If no request and fee for oral hearing have been timely filed by appellant as required by paragraph (b) of this section, the appeal will be
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assigned for consideration and decision on the briefs without an oral hearing.
(d) If appellant has complied with all the requirements of paragraph (b) of this section, a date for the oral hearing will be set, and due notice thereof given to appellant. If an oral hearing is held, an oral argument may be presented by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board. A hearing will be held as stated in the notice, and oral argument will ordinarily be limited to twenty minutes for appellant and fifteen minutes for the primary examiner unless otherwise ordered.
(e)(1) Appellant will argue first and may reserve time for rebuttal. At the oral hearing, appellant may only rely on Evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the brief or reply brief except as permitted by paragraph (e)(2) of this section. The primary examiner may only rely on argument and Evidence relied upon in an answer except as permitted by paragraph (e)(2) of this section.
(2) Upon a showing of good cause, appellant and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.
(f) Notwithstanding the submission of a request for oral hearing complying with this rule, if the Board decides that a hearing is not necessary, the Board will so notify appellant.
(g) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised and (e)(1) second and third sentences revised, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
§ 41.50 Decisions and other actions by the Board.
(a)(1) Affirmance and reversal. The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds
and on the claims specified by the examiner. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed. The Board may also remand an application to the examiner.
(2) If a substitute examiner's answer is written in response to a remand by the Board for further consideration of a rejection pursuant to paragraph (a)(1) of this section, the appellant must within two months from the date of the substitute examiner's answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:
(i) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130 , 1.131 or 1.132 of this title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner's answer. A request that complies with this paragraph (a) will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.
(ii) Maintain appeal. Request that the appeal be maintained by filing a reply brief as provided in § 41.41. If such a reply brief is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the examiner under paragraph (a)(2)(i) of this section.
(b) New ground of rejection. Should the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, and designate such a statement as a new ground of rejection of the claim. A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two
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options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.
(c) Review of undesignated new ground of rejection. Any request to seek review of a panel's failure to designate a new ground of rejection in its decision must be raised by filing a request for rehearing as set forth in § 41.52. Failure of appellant to timely file such a request for rehearing will constitute a waiver of any arguments that a decision contains an undesignated new ground of rejection.
(d) Request for briefing and information. The Board may order appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal. Appellant will be given a time period within which to respond to such an order. Failure to timely comply with the order may result in the sua sponte dismissal of the appeal.
(e) Remand not final action. Whenever a decision of the Board includes a remand, that decision shall not be considered final for judicial review. When appropriate, upon conclusion of proceedings on remand before the examiner, the Board may enter an order otherwise making its decision final for judicial review.
(f) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not
applicable to the time periods set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
§ 41.52 Rehearing.
(a)(1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section. When a request for rehearing is made, the Board shall render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing, and is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing.
(2) Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection designated pursuant to § 41.50(b) are permitted.
(4) New arguments that the Board's decision contains an undesignated new ground of rejection are permitted.
(b) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for
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extensions of time to reply for ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; (a)(1) fourth sentence, (a)(2) and (a)(3) revised and (a)(4) added, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
§ 41.54 Action following decision.
After decision by the Board, jurisdiction over an application or patent under ex parte reexamination proceeding passes to the examiner, subject to appellant's right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the application or patent under ex parte reexamination proceeding may require, to carry into effect the decision.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
Subpart C — Inter Partes Appeals
§ 41.60 Definitions.
In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart unless otherwise clear from the context:
Appellant means any party, whether the owner or a requester, filing a notice of appeal or cross appeal under § 41.61. If more than one party appeals or cross appeals, each appealing or cross appealing party is an appellant with respect to the claims to which his or her appeal or cross appeal is directed.
Filing means filing with a certificate indicating service of the document under § 1.903 of this title.
Owner means the owner of the patent undergoing inter partes reexamination under § 1.915 of this title.
Proceeding means an inter partes reexamination proceeding. Appeal to the Board in an ex parte reexamination proceeding is controlled by subpart B of this part. An inter partes reexamination proceeding is not a contested case subject to subpart D.
Requester means each party, other than the owner, who requested that the patent undergo inter partes reexamination under § 1.915 of this title.
Respondent means any requester responding under § 41.68 to the appellant’s brief of the owner, or the owner responding under § 41.68 to the appellant’s brief of any requester. No requester may be a respondent to the appellant brief of any other requester.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.61 Notice of appeal and cross appeal to Board.
(a)(1) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the owner may appeal to the Board with respect to the final rejection of any claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1).
(2) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the requester may appeal to the Board with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1).
(b)(1) Within fourteen days of service of a requester’s notice of appeal under paragraph (a)(2) of this section and upon payment of the fee set forth in § 41.20(b)(1), an owner who has not filed a notice of appeal may file a notice of cross appeal with respect to the final rejection of any claim of the patent.
(2) Within fourteen days of service of an owner’s notice of appeal under paragraph (a)(1) of this section and upon payment of the fee set forth in § 41.20(b)(1), a requester who has not filed a notice of appeal may file a notice of cross appeal with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent.
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(c) The notice of appeal or cross appeal in the proceeding must identify the appealed claim(s) and must be signed by the owner, the requester, or a duly authorized attorney or agent.
(d) An appeal or cross appeal, when taken, must be taken from all the rejections of the claims in a Right of Appeal Notice which the patent owner proposes to contest or from all the determinations favorable to patentability, including any final determination not to make a proposed rejection, in a Right of Appeal Notice which a requester proposes to contest. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal is decided.
(e) The time periods for filing a notice of appeal or cross appeal may not be extended.
(f) If a notice of appeal or cross appeal is timely filed but does not comply with any requirement of this section, appellant will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended notice of appeal or cross appeal. If the appellant does not then file an amended notice of appeal or cross appeal within the set time period, or files a notice which does not overcome all the reasons for non-compliance stated in the notification of the reasons for non-compliance, that appellant’s appeal or cross appeal will stand dismissed.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.63 Amendments and affidavits or other evidence after appeal.
(a) Amendments filed after the date of filing an appeal pursuant to § 41.61 canceling claims may be admitted where such cancellation does not affect the scope of any other pending claim in the proceeding.
(b) All other amendments filed after the date of filing an appeal pursuant to § 41.61 will not be admitted except as permitted by § 41.77(b)(1).
(c) Affidavits or other evidence filed after the date of filing an appeal pursuant to § 41.61 will not be admitted except as permitted by reopening prosecution under § 41.77(b)(1).
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.64 Jurisdiction over appeal in inter partes reexamination.
(a) Jurisdiction over the proceeding passes to the Board upon transmittal of the file, including all briefs and examiner’s answers, to the Board.
(b) If, after receipt and review of the proceeding, the Board determines that the file is not complete or is not in compliance with the requirements of this subpart, the Board may relinquish jurisdiction to the examiner or take other appropriate action to permit completion of the file.
(c) Prior to the entry of a decision on the appeal by the Board, the Director may sua sponte order the proceeding remanded to the examiner.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.66 Time for filing briefs.
(a) An appellant’s brief must be filed no later than two months from the latest filing date of the last-filed notice of appeal or cross appeal or, if any party to the proceeding is entitled to file an appeal or cross appeal but fails to timely do so, no later than two months from the expiration of the time for filing (by the last party entitled to do so) such notice of appeal or cross appeal. The time for filing an appellant’s brief or an amended appellant’s brief may not be extended.
(b) Once an appellant’s brief has been properly filed, any brief must be filed by respondent within one month from the date of service of the appellant’s brief. The time for filing a respondent’s brief or an amended respondent’s brief may not be extended.
(c) The examiner will consider both the appellant’s and respondent’s briefs and may prepare an examiner’s answer under § 41.69.
(d) Any appellant may file a rebuttal brief under § 41.71 within one month of the date of the examiner’s answer. The time for filing a rebuttal brief or an amended rebuttal brief may not be extended.
(e) No further submission will be considered and any such submission will be treated in accordance with § 1.939 of this title.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
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§ 41.67 Appellant’s brief.
(a)(1) Appellant(s) may once, within time limits for filing set forth in § 41.66, file a brief and serve the brief on all other parties to the proceeding in accordance with § 1.903 of this title.
(2) The brief must be signed by the appellant, or the appellant’s duly authorized attorney or agent and must be accompanied by the requisite fee set forth in § 41.20(b)(2).
(b) An appellant’s appeal shall stand dismissed upon failure of that appellant to file an appellant’s brief, accompanied by the requisite fee, within the time allowed under § 41.66(a).
(c)(1) The appellant’s brief shall contain the following items under appropriate headings and in the order indicated in paragraphs (c)(1)(i) through (c)(1)(xi) of this section.
(i) Real party in interest. A statement identifying by name the real party in interest.
(ii) Related appeals, interferences, and trials. A statement identifying by application, patent, appeal or interference number all other prior and pending appeals, interferences or judicial proceedings known to appellant, the appellant’s legal representative, or assignee which may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal. Copies of any decisions rendered by a court or the Board in any proceeding identified under this paragraph must be included in an appendix as required by paragraph (c)(1)(xi) of this section.
(iii) Status of claims. A statement of the status of all the claims in the proceeding ( e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled). If the appellant is the owner, the appellant must also identify the rejected claims whose rejection is being appealed. If the appellant is a requester, the appellant must identify the claims that the examiner has made a determination favorable to patentability, which determination is being appealed.
(iv) Status of amendments. A statement of the status of any amendment filed subsequent to the close of prosecution.
(v) Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the independent claims involved in the appeal, which shall refer to the specification by column and line number, and to the drawing(s), if any, by reference characters. For each independent claim involved in the appeal and for each dependent claim argued separately under the provisions of paragraph (c)(1)(vii) of this section, every means plus function and step plus function as permitted by 35 U.S.C. 112(f), must be identified and the structure, material, or acts described in the specification as corresponding to each claimed function must be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters.
(vi) Issues to be reviewed on appeal. A concise statement of each issue presented for review. No new ground of rejection can be proposed by a third party requester appellant, unless such ground was withdrawn by the examiner during the prosecution of the proceeding, and the third party requester has not yet had an opportunity to propose it as a third party requester proposed ground of rejection.
(vii) Argument. The contentions of appellant with respect to each issue presented for review in paragraph (c)(1)(vi) of this section, and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the record relied on. Any arguments or authorities not included in the brief permitted under this section or §§ 41.68 and 41.71 will be refused consideration by the Board, unless good cause is shown. Each issue must be treated under a separate heading. If the appellant is the patent owner, for each ground of rejection in the Right of Appeal Notice which appellant contests and which applies to two or more claims, the claims may be argued separately or as a group. When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped
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claim separately. Any claim argued separately should be placed under a subheading identifying the claim by number. Claims argued as a group should be placed under a subheading identifying the claims by number. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.
(viii) Claims appendix. An appendix containing a copy of the claims to be reviewed on appeal.
(ix) Evidence appendix. An appendix containing copies of any evidence submitted pursuant to §§ 1.130, 1.131, or 1.132 of this title or of any other evidence entered by the examiner and relied upon by appellant in the appeal, along with a statement setting forth where in the record that evidence was entered in the record by the examiner. Reference to unentered evidence is not permitted in the brief. See § 41.63 for treatment of evidence submitted after appeal. This appendix may also include copies of the evidence relied upon by the examiner in any ground of rejection to be reviewed on appeal.
(x) Related proceedings appendix. An appendix containing copies of decisions rendered by a court or the Board in any proceeding identified pursuant to paragraph (c)(1)(ii) of this section.
(xi) Certificate of service. A certification that a copy of the brief has been served in its entirety on all other parties to the reexamination proceeding. The names and addresses of the parties served must be indicated.
(2) A brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence after the date of filing the appeal.
(d) If a brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (c) of this section, appellant will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If appellant does not file an amended brief within the set time period, or files an amended brief which does not overcome all the reasons for
non-compliance stated in the notification, that appellant’s appeal will stand dismissed.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (c)(1)(ii) and (c)(1)(v) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 41.68 Respondent’s brief.
(a)(1) Respondent(s) in an appeal may once, within the time limit for filing set forth in § 41.66, file a respondent brief and serve the brief on all parties in accordance with § 1.903 of this title.
(2) The brief must be signed by the party, or the party’s duly authorized attorney or agent, and must be accompanied by the requisite fee set forth in § 41.20(b)(2).
(3) The respondent brief shall be limited to issues raised in the appellant brief to which the respondent brief is directed.
(4) A requester’s respondent brief may not address any brief of any other requester.
(b)(1) The respondent brief shall contain the following items under appropriate headings and in the order here indicated, and may include an appendix containing only those portions of the record on which reliance has been made.
(i) Real Party in Interest. A statement identifying by name the real party in interest.
(ii) Related Appeals, Interferences, and trials. A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences or judicial proceedings known to respondent, the respondent’s legal representative, or assignee which may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal. Copies of any decisions rendered by a court or the Board in any proceeding identified under this paragraph must be included in an appendix as required by paragraph (b)(1)(ix) of this section.
(iii) Status of claims. A statement accepting or disputing appellant’s statement of the status of claims. If appellant’s statement of the status of claims is disputed, the errors in appellant’s statement must be specified with particularity.
(iv) Status of amendments. A statement accepting or disputing appellant’s statement of the
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status of amendments. If appellant’s statement of the status of amendments is disputed, the errors in appellant’s statement must be specified with particularity.
(v) Summary of claimed subject matter. A statement accepting or disputing appellant’s summary of the subject matter defined in each of the independent claims involved in the appeal. If appellant’s summary of the subject matter is disputed, the errors in appellant’s summary must be specified.
(vi) Issues to be reviewed on appeal. A statement accepting or disputing appellant’s statement of the issues presented for review. If appellant’s statement of the issues presented for review is disputed, the errors in appellant’s statement must be specified. A counter statement of the issues for review may be made. No new ground of rejection can be proposed by a requester respondent.
(vii) Argument. A statement accepting or disputing the contentions of appellant with each of the issues presented by the appellant for review. If a contention of the appellant is disputed, the errors in appellant’s argument must be specified, stating the basis therefor, with citations of the statutes, regulations, authorities, and parts of the record relied on. Each issue must be treated under a separate heading. An argument may be made with each of the issues stated in the counter statement of the issues, with each counter-stated issue being treated under a separate heading.
(viii) Evidence appendix. An appendix containing copies of any evidence submitted pursuant to §§ 1.130, 1.131, or 1.132 of this title or of any other evidence entered by the examiner and relied upon by respondent in the appeal, along with a statement setting forth where in the record that evidence was entered in the record by the examiner. Reference to unentered evidence is not permitted in the respondent’s brief. See § 41.63 for treatment of evidence submitted after appeal.
(ix) Related proceedings appendix. An appendix containing copies of decisions rendered by a court or the Board in any proceeding identified pursuant to paragraph (b)(1)(ii) of this section.
(x) Certificate of service. A certification that a copy of the respondent brief has been served in its entirety on all other parties to the
reexamination proceeding. The names and addresses of the parties served must be indicated.
(2) A respondent brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence filed after the date of filing the appeal.
(c) If a respondent brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (b) of this section, respondent will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If respondent does not file an amended respondent brief within the set time period, or files an amended respondent brief which does not overcome all the reasons for non-compliance stated in the notification, the respondent brief and any amended respondent brief by that respondent will not be considered.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b)(1)(ii) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 41.69 Examiner’s answer.
(a) The primary examiner may, within such time as directed by the Director, furnish a written answer to the owner’s and/or requester’s appellant brief or respondent brief including, as may be necessary, such explanation of the invention claimed and of the references relied upon, the grounds of rejection, and the reasons for patentability, including grounds for not adopting any proposed rejection. A copy of the answer shall be supplied to the owner and all requesters. If the primary examiner determines that the appeal does not comply with the provisions of §§ 41.61, 41.66, 41.67 and 41.68 or does not relate to an appealable action, the primary examiner shall make such determination of record.
(b) An examiner’s answer may not include a new ground of rejection.
(c) An examiner’s answer may not include a new determination not to make a proposed rejection of a claim.
(d) Any new ground of rejection, or any new determination not to make a proposed rejection,
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must be made in an Office action reopening prosecution.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.71 Rebuttal brief.
(a) Within one month of the examiner’s answer, any appellant may once file a rebuttal brief.
(b)(1) The rebuttal brief of the owner may be directed to the examiner’s answer and/or any respondent brief.
(2) The rebuttal brief of the owner shall not include any new or non-admitted amendment, or an affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence filed after the date of filing the appeal.
(c)(1) The rebuttal brief of any requester may be directed to the examiner’s answer and/or the respondent brief of the owner.
(2) The rebuttal brief of a requester may not be directed to the respondent brief of any other requester.
(3) No new ground of rejection can be proposed by a requester.
(4) The rebuttal brief of a requester shall not include any new or non-admitted affidavit or other evidence. See § 1.116(d) of this title for affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63(c) for affidavits or other evidence filed after the date of filing the appeal.
(d) The rebuttal brief must include a certification that a copy of the rebuttal brief has been served in its entirety on all other parties to the proceeding. The names and addresses of the parties served must be indicated.
(e) If a rebuttal brief is timely filed under paragraph (a) of this section but does not comply with all the requirements of paragraphs (a) through (d) of this section, appellant will be notified of the reasons for non-compliance and provided with a non-extendable period of one month within which to file an amended rebuttal brief. If the appellant does not file an amended rebuttal brief during the
one-month period, or files an amended rebuttal brief which does not overcome all the reasons for non-compliance stated in the notification, that appellant’s rebuttal brief and any amended rebuttal brief by that appellant will not be considered.
[Added, 69 FR 4995 9, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.73 Oral hearing.
(a) An oral hearing should be requested only in those circumstances in which an appellant or a respondent considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as an appeal decided after an oral hearing.
(b) If an appellant or a respondent desires an oral hearing, he or she must file, as a separate paper captioned “REQUEST FOR ORAL HEARING,” a written request for such hearing accompanied by the fee set forth in § 41.20(b)(3) within two months after the date of the examiner’s answer. The time for requesting an oral hearing may not be extended. The request must include a certification that a copy of the request has been served in its entirety on all other parties to the proceeding. The names and addresses of the parties served must be indicated.
(c) If no request and fee for oral hearing have been timely filed by appellant or respondent as required by paragraph (b) of this section, the appeal will be assigned for consideration and decision on the briefs without an oral hearing.
(d) If appellant or respondent has complied with all the requirements of paragraph (b) of this section, a hearing date will be set, and notice given to the owner and all requesters. If an oral hearing is held, an oral argument may be presented by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board. The notice shall set a non-extendable period within which all requests for oral hearing shall be submitted by any other party to the appeal desiring to participate in the oral hearing. A hearing will be held as stated in the notice, and oral argument will be limited to thirty minutes for each appellant or respondent who has requested an oral hearing, and twenty minutes for the primary examiner unless otherwise ordered. No appellant or respondent will be permitted to participate in an oral hearing unless he or she has
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requested an oral hearing and submitted the fee set forth in § 41.20(b)(3).
(e)(1) At the oral hearing, each appellant and respondent may only rely on evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the briefs except as permitted by paragraph (e)(2) of this section. The primary examiner may only rely on argument and evidence relied upon in an answer except as permitted by paragraph (e)(2) of this section. The Board will determine the order of the arguments presented at the oral hearing.
(2) Upon a showing of good cause, appellant, respondent and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.
(f) Notwithstanding the submission of a request for oral hearing complying with this rule, if the Board decides that a hearing is not necessary, the Board will so notify the owner and all requesters.
[Added, 69 FR 4 9959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.77 Decisions and other actions by the Board.
(a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner’s determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent Trial and Appeal Board as a new ground of rejection under paragraph (b) of this section. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.
(b) Should the Board reverse the examiner’s determination not to make a rejection proposed by a requester, the Board shall set forth in the opinion in support of its decision a new ground of rejection; or should the Board have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in its opinion a statement to
that effect with its reasons for so holding, which statement shall constitute a new ground of rejection of the claim. Any decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board makes a new ground of rejection, the owner, within one month from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal proceeding as to the rejected claim:
(1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.
(c) Where the owner has filed a response requesting reopening of prosecution under paragraph (b)(1) of this section, any requester, within one month of the date of service of the owner’s response, may once file comments on the response. Such written comments must be limited to the issues raised by the Board’s opinion reflecting its decision and the owner’s response. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply.
(d) Following any response by the owner under paragraph (b)(1) of this section and any written comments from a requester under paragraph (c) of this section, the proceeding will be remanded to the examiner. The statement of the Board shall be binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision. The examiner will consider any owner response under paragraph (b)(1) of this section and any
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written comments by a requester under paragraph (c) of this section and issue a determination that the rejection is maintained or has been overcome.
(e) Within one month of the examiner’s determination pursuant to paragraph (d) of this section, the owner or any requester may once submit comments in response to the examiner’s determination. Within one month of the date of service of comments in response to the examiner’s determination, the owner and any requesters may file a reply to the comments. No requester reply may address the comments of any other requester reply. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply.
(f) After submission of any comments and any reply pursuant to paragraph (e) of this section, or after time has expired, the proceeding will be returned to the Board which shall reconsider the matter and issue a new decision. The new decision is deemed to incorporate the earlier decision, except for those portions specifically withdrawn.
(g) The time period set forth in paragraph (b) of this section is subject to the extension of time provisions of § 1.956 of this title when the owner is responding under paragraph (b)(1) of this section. The time period set forth in paragraph (b) of this section may not be extended when the owner is responding under paragraph (b)(2) of this section. The time periods set forth in paragraphs (c) and (e) of this section may not be extended.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
§ 41.79 Rehearing.
(a) Parties to the appeal may file a request for rehearing of the decision within one month of the date of:
(1) The original decision of the Board under § 41.77(a),
(2) The original § 41.77(b) decision under the provisions of § 41.77(b)(2),
(3) The expiration of the time for the owner to take action under § 41.77(b)(2), or
(4) The new decision of the Board under § 41.77(f).
(b)(1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this section.
(2) Upon a showing of good cause, appellant and/or respondent may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection made pursuant to § 41.77(b) are permitted.
(c) Within one month of the date of service of any request for rehearing under paragraph (a) of this section, or any further request for rehearing under paragraph (d) of this section, the owner and all requesters may once file comments in opposition to the request for rehearing or the further request for rehearing. The comments in opposition must be limited to the issues raised in the request for rehearing or the further request for rehearing.
(d) If a party to an appeal files a request for rehearing under paragraph (a) of this section, or a further request for rehearing under this section, the Board shall render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing and is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing. If the Board opinion reflecting its decision on rehearing becomes, in effect, a new decision, and the Board so indicates, then any party to the appeal may, within one month of the new decision, file a further request for rehearing of the new decision under this subsection. Such further request for rehearing must comply with paragraph (b) of this section.
(e) The times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended.
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§ 41.79PATENT RULES
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.81 Action following decision.
The parties to an appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under § 1.983 of this title until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
Subpart D — Contested Cases
§ 41.100 Definitions.
In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart:
Business day means a day other than a Saturday, Sunday, or Federal holiday within the District of Columbia.
Involved means the Board has declared the patent application, patent, or claim so described to be a subject of the contested case.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.101 Notice of proceeding.
(a) Notice of a contested case will be sent to every party to the proceeding. The entry of the notice initiates the proceeding.
(b) When the Board is unable to provide actual notice of a contested case on a party through the correspondence address of record for the party, the Board may authorize other modes of notice, including:
(1) Sending notice to another address associated with the party, or
(2) Publishing the notice in the Official Gazette of the United States Patent and Trademark Office.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.102 Completion of examination.
Before a contested case is initiated, except as the Board may otherwise authorize, for each involved application and patent:
(a) Examination or reexamination must be completed, and
(b) There must be at least one claim that:
(1) Is patentable but for a judgment in the contested case, and
(2) Would be involved in the contested case.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.103 Jurisdiction over involved files.
The Board acquires jurisdiction over any involved file when the Board initiates a contested case. Other proceedings for the involved file within the Office are suspended except as the Board may order.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.104 Conduct of contested cases.
(a) The Board may determine a proper course of conduct in a proceeding for any situation not specifically covered by this part and may enter non-final orders to administer the proceeding.
(b) An administrative patent judge may waive or suspend in a proceeding the application of any rule in this subpart, subject to such conditions as the administrative patent judge may impose.
(c) Times set in this subpart are defaults. In the event of a conflict between a time set by rule and a time set by order, the time set by order is controlling. Action due on a day other than a business day may be completed on the next business day unless the Board expressly states otherwise.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.106 Filing and service.
(a) General format requirements.
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(1) The paper used for filings must be durable and white. A party must choose to file on either A4-sized paper or 8½ inch x 11 inch paper except in the case of exhibits that require a larger size in order to preserve details of the original. A party may not switch between paper sizes in a single proceeding. Only one side of the paper may be used.
(2) In papers, including affidavits, created for the proceeding:
(i) Markings must be in black ink or must otherwise provide an equivalently permanent, dark, high-contrast image on the paper. The quality of printing must be equivalent to the quality produced by a laser printer. Either a proportional or monospaced font may be used, but the proportional font must be 12-point or larger and a monospaced font must not contain more than 4 characters per centimeter (10 characters per inch). Case names must be underlined or italicized.
(ii) Double spacing must be used except in headings, tables of contents, tables of authorities, indices, signature blocks, and certificates of service. Block quotations may be single-spaced and must be indented. Margins must be at least 2.5 centimeters (1 inch) on all sides.
(b) Papers other than exhibits—
(1) Cover sheet.
(i) The cover sheet must include the caption the Board specifies for the proceeding, a header indicating the party and contact information for the party, and a title indicating the sequence and subject of the paper. For example, “JONES MOTION 2, For benefit of an earlier application”.
(ii) If the Board specifies a color other than white for the cover sheet, the cover sheet must be that color.
(2) Papers must have two 0.5 cm (¼ inch) holes with centers 1 cm (½ inch) from the top of the page and 7 cm (2¾ inch) apart, centered horizontally on the page.
(3) Incorporation by reference; combined papers. Arguments must not be incorporated by reference from one paper into another paper. Combined motions, oppositions, replies, or other combined papers are not permitted.
(4) Exhibits. Additional requirements for exhibits appear in § 41.154(c).
(c) Working copy. Every paper filed must be accompanied by a working copy marked “APJ Copy”.
(d) Specific filing forms.
(1) Filing by mail. A paper filed using the
Priority Mail Express® service of the United States Postal Service will be deemed to be filed as of
“date-in” on the Priority Mail Express® mailing label; otherwise, mail will be deemed to be filed as of the stamped date of receipt at the Board.
(2) Other modes of filing. The Board may authorize other modes of filing, including electronic filing and hand filing, and may set conditions for the use of such other modes.
(e) Service.
(1) Papers filed with the Board, if not previously served, must be served simultaneously on every opposing party except as the Board expressly directs.
(2) If a party is represented by counsel, service must be on counsel.
(3) Service must be by Priority Mail
Express® or by means at least as fast and reliable
as Priority Mail Express®. Electronic service is not permitted without Board authorization.
(4) The date of service does not count in computing the time for responding.
(f) Certificate of service.
(1) Papers other than exhibits must include a certificate of service as a separate page at the end of each paper that must be served on an opposing party.
(2) Exhibits must be accompanied by a certificate of service, but a single certificate may accompany any group of exhibits submitted together.
(3) A certificate of service must state:
(i) The date and manner of service,
(ii) The name and address of every person served, and
(iii) For exhibits filed as a group, the name and number of each exhibit served.
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§ 41.106PATENT RULES
(4) A certificate made by a person other than a registered patent practitioner must be in the form of an affidavit.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (d)(1) and (e)(3) revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014;]
§ 41.108 Lead counsel.
(a) A party may be represented by counsel. The Board may require a party to appoint a lead counsel. If counsel is not of record in a party’s involved application or patent, then a power of attorney for that counsel for the party’s involved application or patent must be filed with the notice required in paragraph (b) of this section.
(b) Within 14 days of the initiation of each contested case, each party must file a separate notice identifying its counsel, if any, and providing contact information for each counsel identified or, if the party has no counsel, then for the party. Contact information must, at a minimum, include:
(1) A mailing address;
(2) An address for courier delivery when the mailing address is not available for such delivery (for example, when the mailing address is a Post Office box);
(3) A telephone number;
(4) A facsimile number; and
(5) An electronic mail address.
(c) A party must promptly notify the Board of any change in the contact information required in paragraph (b) of this section.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.109 Access to and copies of Office records.
(a) Request for access or copies. Any request from a party for access to or copies of Office records directly related to a contested case must be filed with the Board. The request must precisely identify the records and in the case of copies include the appropriate fee set under § 1.19(b) of this title.
(b) Authorization of access and copies. Access and copies will ordinarily only be authorized for the following records:
(1) The application file for an involved patent;
(2) An involved application; and
(3) An application for which a party has been accorded benefit under subpart E of this part.
(c) Missing or incomplete copies. If a party does not receive a complete copy of a record within 21 days of the authorization, the party must promptly notify the Board.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.110 Filing claim information.
(a) Clean copy of claims. Within 14 days of the initiation of the proceeding, each party must file a clean copy of its involved claims and, if a biotechnology material sequence is a limitation, a clean copy of the sequence.
(b) Annotated copy of claims. Within 28 days of the initiation of the proceeding, each party must:
(1) For each involved claim having a limitation that is illustrated in a drawing or biotechnology material sequence, file an annotated copy of the claim indicating in bold face between braces ({}) where each limitation is shown in the drawing or sequence.
(2) For each involved claim that contains a means-plus-function or step-plus-function limitation in the form permitted under 35 U.S.C. 112(f), file an annotated copy of the claim indicating in bold face between braces ({ }) the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.
(c) Any motion to add or amend a claim must include:
(1) A clean copy of the claim,
(2) A claim chart showing where the disclosure of the patent or application provides written description of the subject matter of the claim, and
(3) Where applicable, a copy of the claims annotated according to paragraph (b) of this section.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b)(2) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
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§ 41.120 Notice of basis for relief.
(a) The Board may require a party to provide a notice stating the relief it requests and the basis for its entitlement to relief. The Board may provide for the notice to be maintained in confidence for a limited time.
(b) Effect. If a notice under paragraph (a) of this section is required, a party will be limited to filing substantive motions consistent with the notice. Ambiguities in the notice will be construed against the party. A notice is not evidence except as an admission by a party-opponent.
(c) Correction. A party may move to correct its notice. The motion should be filed promptly after the party becomes aware of the basis for the correction. A correction filed after the time set for filing notices will only be entered if entry would serve the interests of justice.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.121 Motions.
(a) Types of motions—
(1) Substantive motions. Consistent with the notice of requested relief, if any, and to the extent the Board authorizes, a party may file a motion:
(i) To redefine the scope of the contested case,
(ii) To change benefit accorded for the contested subject matter, or
(iii) For judgment in the contested case.
(2) Responsive motions. The Board may authorize a party to file a motion to amend or add a claim, to change inventorship, or otherwise to cure a defect raised in a notice of requested relief or in a substantive motion.
(3) Miscellaneous motions. Any request for relief other than a substantive or responsive motion must be filed as a miscellaneous motion.
(b) Burden of proof. The party filing the motion has the burden of proof to establish that it is entitled to the requested relief.
(c) Content of motions; oppositions and replies.
(1) Each motion must be filed as a separate paper and must include:
(i) A statement of the precise relief requested,
(ii) A statement of material facts (see paragraph (d) of this section), and
(iii) A full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence and the governing law, rules, and precedent.
(2) Compliance with rules. Where a rule in part 1 of this title ordinarily governs the relief sought, the motion must make any showings required under that rule in addition to any showings required in this part.
(3) The Board may order additional showings or explanations as a condition for filing a motion.
(d) Statement of material facts. (1) Each material fact shall be set forth as a separate numbered sentence with specific citations to the portions of the record that support the fact.
(2) The Board may require that the statement of material facts be submitted as a separate paper.
(e) Claim charts. Claim charts must be used in support of any paper requiring the comparison of a claim to something else, such as another claim, prior art, or a specification. Claim charts must accompany the paper as an appendix. Claim charts are not a substitute for appropriate argument and explanation in the paper.
(f) The Board may order briefing on any issue that could be raised by motion.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.122 Oppositions and replies.
(a) Oppositions and replies must comply with the content requirements for motions and must include a statement identifying material facts in dispute. Any material fact not specifically denied shall be considered admitted.
(b) All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition.
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§ 41.122PATENT RULES
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.123 Default filing times.
(a) A motion, other than a miscellaneous motion, may only be filed according to a schedule the Board sets. The default times for acting are:
(1) An opposition is due 30 days after service of the motion.
(2) A reply is due 30 days after service of the opposition.
(3) A responsive motion is due 30 days after the service of the motion.
(b) Miscellaneous motions.
(1) If no time for filing a specific miscellaneous motion is provided in this part or in a Board order:
(i) The opposing party must be consulted prior to filing the miscellaneous motion, and
(ii) If an opposing party plans to oppose the miscellaneous motion, the movant may not file the motion without Board authorization. Such authorization should ordinarily be obtained through a telephone conference including the Board and every other party to the proceeding. Delay in seeking relief may justify a denial of the motion.
(2) An opposition may not be filed without authorization. The default times for acting are:
(i) An opposition to a miscellaneous motion is due five business days after service of the motion.
(ii) A reply to a miscellaneous motion opposition is due three business days after service of the opposition.
(c) Exhibits. Each exhibit must be filed and served with the first paper in which it is cited except as the Board may otherwise order.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.124 Oral argument.
(a) Request for oral argument. A party may request an oral argument on an issue raised in a paper within five business days of the filing of the
paper. The request must be filed as a separate paper and must specify the issues to be considered.
(b) Copies for panel. If an oral argument is set for a panel, the movant on any issue to be argued must provide three working copies of the motion, the opposition, and the reply. Each party is responsible for providing three working copies of its exhibits relating to the motion.
(c) Length of argument. If a request for oral argument is granted, each party will have a total of 20 minutes to present its arguments, including any time for rebuttal.
(d) Demonstrative exhibits must be served at least five business days before the oral argument and filed no later than the time of the oral argument.
(e) Transcription. The Board encourages the use of a transcription service at oral arguments but, if such a service is to be used, the Board must be notified in advance to ensure adequate facilities are available and a transcript must be filed with the Board promptly after the oral argument.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.125 Decision on motions.
(a) Order of consideration. The Board may take up motions for decisions in any order, may grant, deny, or dismiss any motion, and may take such other action appropriate to secure the just, speedy, and inexpensive determination of the proceeding. A decision on a motion may include deferral of action on an issue until a later point in the proceeding.
(b) Interlocutory decisions. A decision on motions without a judgment is not final for the purposes of judicial review. A panel decision on an issue will govern further proceedings in the contested case.
(c) Rehearing—(1) Time for request. A request for rehearing of a decision on a motion must be filed within fourteen days of the decision.
(2) No tolling. The filing of a request for rehearing does not toll times for taking action.
(3) Burden on rehearing. The burden of showing a decision should be modified lies with the party attacking the decision. The request must specifically identify:
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(i) All matters the party believes to have been misapprehended or overlooked, and
(ii) The place where the matter was previously addressed in a motion, opposition, or reply.
(4) Opposition; reply. Neither an opposition nor a reply to a request for rehearing may be filed without Board authorization.
(5) Panel rehearing. If a decision is not a panel decision, the party requesting rehearing may request that a panel rehear the decision. A panel rehearing a procedural decision will review the decision for an abuse of discretion.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.126 Arbitration.
(a) Parties to a contested case may resort to binding arbitration to determine any issue in a contested case. The Office is not a party to the arbitration. The Board is not bound and may independently determine questions of patentability, jurisdiction, and Office practice.
(b) The Board will not authorize arbitration unless:
(1) It is to be conducted according to Title 9 of the United States Code.
(2) The parties notify the Board in writing of their intention to arbitrate.
(3) The agreement to arbitrate:
(i) Is in writing,
(ii) Specifies the issues to be arbitrated,
(iii) Names the arbitrator, or provides a date not more than 30 days after the execution of the agreement for the selection of the arbitrator, and
(iv) Provides that the arbitrator’s award shall be binding on the parties and that judgment thereon can be entered by the Board.
(4) A copy of the agreement is filed within 20 days after its execution.
(5) The arbitration is completed within the time the Board sets.
(c) The parties are solely responsible for the selection of the arbitrator and the conduct of proceedings before the arbitrator.
(d) Issues not disposed of by the arbitration will be resolved in accordance with the procedures established in this subpart.
(e) The Board will not consider the arbitration award unless it:
(1) Is binding on the parties,
(2) Is in writing,
(3) States in a clear and definite manner each issue arbitrated and the disposition of each issue, and
(4) Is filed within 20 days of the date of the award.
(f) Once the award is filed, the parties to the award may not take actions inconsistent with the award. If the award is dispositive of the contested subject matter for a party, the Board may enter judgment as to that party.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.127 Judgment.
(a) Effect within Office—(1) Estoppel. A judgment disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party’s failure to move, except that a losing party shall not be estopped with respect to any contested subject matter for which that party was awarded a favorable judgment.
(2) Final disposal of claim. Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently.
(b) Request for adverse judgment. A party may at any time in the proceeding request judgment against itself. Actions construed to be a request for adverse judgment include:
(1) Abandonment of an involved application such that the party no longer has an application or patent involved in the proceeding,
(2) Cancellation or disclaiming of a claim such that the party no longer has a claim involved in the proceeding,
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§ 41.127PATENT RULES
(3) Concession of priority or unpatentability of the contested subject matter, and
(4) Abandonment of the contest.
(c) Recommendation. The judgment may include a recommendation for further action by the examiner or by the Director. If the Board recommends rejection of a claim of an involved application, the examiner must enter and maintain the recommended rejection unless an amendment or showing of facts not previously of record is filed which, in the opinion of the examiner, overcomes the recommended rejection.
(d) Rehearing. A party dissatisfied with the judgment may file a request for rehearing within 30 days of the entry of the judgment The request must specifically identify all matters the party believes to have been misapprehended or overlooked, and the place where the matter was previously addressed in a motion, opposition or reply.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (d) revised, 69 FR 58260, Sept. 30, 2004, effective Sept. 30, 2004]
§ 41.128 Sanctions.
(a) The Board may impose a sanction against a party for misconduct, including:
(1) Failure to comply with an applicable rule or order in the proceeding;
(2) Advancing a misleading or frivolous request for relief or argument; or
(3) Engaging in dilatory tactics.
(b) Sanctions include entry of:
(1) An order holding certain facts to have been established in the proceeding;
(2) An order expunging, or precluding a party from filing, a paper;
(3) An order precluding a party from presenting or contesting a particular issue;
(4) An order precluding a party from requesting, obtaining, or opposing discovery;
(5) An order excluding evidence;
(6) An order awarding compensatory expenses, including attorney fees;
(7) An order requiring terminal disclaimer of patent term; or
(8) Judgment in the contested case.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.150 Discovery.
(a) Limited discovery. A party is not entitled to discovery except as authorized in this subpart. The parties may agree to discovery among themselves at any time.
(b) Automatic discovery.
(1) Within 21 days of a request by an opposing party, a party must:
(i) Serve a legible copy of every requested patent, patent application, literature reference, and test standard mentioned in the specification of the party’s involved patent or application, or application upon which the party will rely for benefit, and, if the requested material is in a language other than English, a translation, if available, and
(ii) File with the Board a notice (without copies of the requested materials) of service of the requested materials.
(2) Unless previously served, or the Board orders otherwise, any exhibit cited in a motion or in testimony must be served with the citing motion or testimony.
(c) Additional discovery. (1) A party may request additional discovery. The requesting party must show that such additional discovery is in the interests of justice. The Board may specify conditions for such additional discovery.
(2) When appropriate, a party may obtain production of documents and things during cross examination of an opponent’s witness or during testimony authorized under § 41.156.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.151 Admissibility.
Evidence that is not taken, sought, or filed in accordance with this subpart shall not be admissible.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
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§ 41.152 Applicability of the Federal Rules of Evidence.
(a) Generally. Except as otherwise provided in this subpart, the Federal Rules of Evidence shall apply to contested cases.
(b) Exclusions. Those portions of the Federal Rules of Evidence relating to criminal proceedings, juries, and other matters not relevant to proceedings under this subpart shall not apply.
(c) Modifications in terminology. Unless otherwise clear from context, the following terms of the Federal Rules of Evidence shall be construed as indicated:
Appellate court means United States Court of Appeals for the Federal Circuit or a United States district court when judicial review is under 35 U.S.C. 146.
Civil action, civil proceeding, action, and trial mean contested case.
Courts of the United States, U.S. Magistrate, court, trial court, and trier of fact mean Board.
Hearing means:
(i) In Federal Rule of Evidence 703, the time when the expert testifies.
(ii) In Federal Rule of Evidence 804(a)(5), the time for taking testimony.
Judge means the Board.
Judicial notice means official notice.
Trial or hearing means, in Federal Rule of Evidence 807, the time for taking testimony.
(d) The Board, in determining foreign law, may consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.153 Records of the Office.
Certification is not necessary as a condition to admissibility when the evidence to be submitted is a record of the Office to which all parties have access.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.154 Form of evidence.
(a) Evidence consists of affidavits, transcripts of depositions, documents, and things. All evidence must be submitted in the form of an exhibit.
(b) Translation required. When a party relies on a document or is required to produce a document in a language other than English, a translation of the document into English and an affidavit attesting to the accuracy of the translation must be filed with the document.
(c)(1) Each exhibit must have an exhibit label with a unique number in a range assigned by the Board, the names of the parties, and the proceeding number in the following format:
JONES EXHIBIT 2001
Jones v. Smith
Contested Case 104,999
(c)(2) When the exhibit is a paper:
(i) Each page must be uniquely numbered in sequence, and
(ii) The exhibit label must be affixed to the lower right corner of the first page of the exhibit without obscuring information on the first page or, if obscuring is unavoidable, affixed to a duplicate first page.
(d) Exhibit list. Each party must maintain an exhibit list with the exhibit number and a brief description of each exhibit. If the exhibit is not filed, the exhibit list should note that fact. The Board may require the filing of a current exhibit list prior to acting on a motion.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c)(1) revised, 69 FR 58260, Sept. 30, 2004, effective Sept. 30, 2004]
§ 41.155 Objection; motion to exclude; motion in limine.
(a) Deposition. Objections to deposition evidence must be made during the deposition. Evidence to cure the objection must be provided during the deposition unless the parties to the
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deposition stipulate otherwise on the deposition record.
(b) Other than deposition. For evidence other than deposition evidence:
(1) Objection. Any objection must be served within five business days of service of evidence, other than deposition evidence, to which the objection is directed.
(2) Supplemental evidence. The party relying on evidence for which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.
(c) Motion to exclude. A miscellaneous motion to exclude evidence must be filed to preserve any objection. The motion must identify the objections in the record in order and must explain the objections.
(d) Motion in limine. A party may file a miscellaneous motion in limine for a ruling on the admissibility of evidence.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 69 FR 58260, Sept. 30, 2004, effective Sept. 30, 2004]
§ 41.156 Compelling testimony and production.
(a) Authorization required. A party seeking to compel testimony or production of documents or things must file a miscellaneous motion for authorization. The miscellaneous motion must describe the general relevance of the testimony, document, or thing and must:
(1) In the case of testimony, identify the witness by name or title, and
(2) In the case of a document or thing, the general nature of the document or thing.
(b) Outside the United States. For testimony or production sought outside the United States, the motion must also:
(1) In the case of testimony. (i) Identify the foreign country and explain why the party believes the witness can be compelled to testify in the foreign country, including a description of the procedures that will be used to compel the testimony in the
foreign country and an estimate of the time it is expected to take to obtain the testimony; and
(ii) Demonstrate that the party has made reasonable efforts to secure the agreement of the witness to testify in the United States but has been unsuccessful in obtaining the agreement, even though the party has offered to pay the expenses of the witness to travel to and testify in the United States.
(2) In the case of production of a document or thing. (i) Identify the foreign country and explain why the party believes production of the document or thing can be compelled in the foreign country, including a description of the procedures that will be used to compel production of the document or thing in the foreign country and an estimate of the time it is expected to take to obtain production of the document or thing; and
(ii) Demonstrate that the party has made reasonable efforts to obtain the agreement of the individual or entity having possession, custody, or control of the document to produce the document or thing in the United States but has been unsuccessful in obtaining that agreement, even though the party has offered to pay the expenses of producing the document or thing in the United States.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.157 Taking testimony.
(a) Form. Direct testimony must be submitted in the form of an affidavit except when the testimony is compelled under 35 U.S.C. 24, in which case it may be in the form of a deposition transcript.
(b) Time and location. (1) Uncompelled direct testimony may be taken at any time; otherwise, testimony may only be taken during such time period as the Board may authorize.
(2) Other testimony. (i) Except as the Board otherwise orders, authorized testimony may be taken at any reasonable time and location within the United States before any disinterested official authorized to administer oaths at that location.
(ii) Testimony outside the United States may only be taken as the Board specifically directs.
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(c) Notice of deposition. (1) Prior to the taking of testimony, all parties to the proceeding must agree on the time and place for taking testimony. If the parties cannot agree, the party seeking the testimony must initiate a conference with the Board to set a time and place.
(2) Cross-examination should ordinarily take place after any supplemental evidence relating to the direct testimony has been filed and more than a week before the filing date for any paper in which the cross-examination testimony is expected to be used. A party requesting cross-examination testimony of more than one witness may choose the order in which the witnesses are to be cross-examined.
(3) In the case of direct testimony, at least three business days prior to the conference in paragraph (c)(1) of this section, the party seeking the direct testimony must serve:
(i) A list and copy of each document under the party’s control and on which the party intends to rely, and
(ii) A list of, and proffer of reasonable access to, any thing other than a document under the party’s control and on which the party intends to rely.
(4) Notice of the deposition must be filed at least two business days before a deposition. The notice limits the scope of the testimony and must list:
(i) The time and place of the deposition,
(ii) The name and address of the witness,
(iii) A list of the exhibits to be relied upon during the deposition, and
(iv) A general description of the scope and nature of the testimony to be elicited.
(5) Motion to quash. Objection to a defect in the notice is waived unless a miscellaneous motion to quash is promptly filed.
(d) Deposition in a foreign language. If an interpreter will be used during the deposition, the party calling the witness must initiate a conference with the Board at least five business days before the deposition.
(e) Manner of taking testimony. (1) Each witness before giving a deposition shall be duly
sworn according to law by the officer before whom the deposition is to be taken. The officer must be authorized to take testimony under 35 U.S.C. 23.
(2) The testimony shall be taken in answer to interrogatories with any questions and answers recorded in their regular order by the officer, or by some other disinterested person in the presence of the officer, unless the presence of the officer is waived on the record by agreement of all parties.
(3) Any exhibits relied upon must be numbered according to the numbering scheme assigned for the contested case and must, if not previously served, be served at the deposition.
(4) All objections made at the time of the deposition to the qualifications of the officer taking the deposition, the manner of taking it, the evidence presented, the conduct of any party, and any other objection to the proceeding shall be noted on the record by the officer. Evidence objected to shall be taken subject to a ruling on the objection.
(5) When the testimony has been transcribed, the witness shall read and sign (in the form of an affidavit) a transcript of the deposition unless:
(i) The parties otherwise agree in writing,
(ii) The parties waive reading and signature by the witness on the record at the deposition, or
(iii) The witness refuses to read or sign the transcript of the deposition.
(6) The officer shall prepare a certified transcript by attaching to the transcript of the deposition a certificate in the form of an affidavit signed and sealed by the officer. Unless the parties waive any of the following requirements, in which case the certificate shall so state, the certificate must state:
(i) The witness was duly sworn by the officer before commencement of testimony by the witness;
(ii) The transcript is a true record of the testimony given by the witness;
(iii) The name of the person who recorded the testimony and, if the officer did not record it, whether the testimony was recorded in the presence of the officer;
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(iv) The presence or absence of any opponent;
(v) The place where the deposition was taken and the day and hour when the deposition began and ended;
(vi) The officer has no disqualifying interest, personal or financial, in a party; and
(vii) If a witness refuses to read or sign the transcript, the circumstances under which the witness refused.
(7) The officer must promptly provide a copy of the transcript to all parties. The proponent of the testimony must file the original as an exhibit.
(8) Any objection to the content, form, or manner of taking the deposition, including the qualifications of the officer, is waived unless made on the record during the deposition and preserved in a timely filed miscellaneous motion to exclude.
(f) Costs. Except as the Board may order or the parties may agree in writing, the proponent of the testimony shall bear all costs associated with the testimony, including the reasonable costs associated with making the witness available for the cross-examination.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.158 Expert testimony; tests and data.
(a) Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. Testimony on United States patent law will not be admitted.
(b) If a party relies on a technical test or data from such a test, the party must provide an affidavit explaining:
(1) Why the test or data is being used,
(2) How the test was performed and the data was generated,
(3) How the data is used to determine a value,
(4) How the test is regarded in the relevant art, and
(5) Any other information necessary for the Board to evaluate the test and data.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
Subpart E — Patent Interferences
§ 41.200 Procedure; pendency.
(a) A patent interference is a contested case subject to the procedures set forth in subpart D of this part.
(b) Any reference to 35 U.S.C. 102 or 135 in this subpart refers to the statute in effect on March 15, 2013, unless otherwise expressly indicated. Any reference to 35 U.S.C. 141 or 146 in this subpart refers to the statute applicable to the involved application or patent.
(c) Patent interferences shall be administered such that pendency before the Board is normally no more than two years.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) removed and reserved, 75 FR 19958, Apr. 15, 2010, effective Apr. 15, 2010; para. (b) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 41.201 Definitions.
In addition to the definitions in §§ 41.2 and 41.100, the following definitions apply to proceedings under this subpart:
Accord benefit means Board recognition that a patent application provides a proper constructive reduction to practice under 35 U.S.C. 102(g)(1).
Constructive reduction to practice means a described and enabled anticipation under 35 U.S.C. 102(g)(1), in a patent application of the subject matter of a count. Earliest constructive reduction to practice means the first constructive reduction to practice that has been continuously disclosed through a chain of patent applications including in the involved application or patent. For the chain to be continuous, each subsequent application must comply with the requirements of 35 U.S.C. 119–121, 365, or 386.
Count means the Board’s description of the interfering subject matter that sets the scope of admissible proofs on priority. Where there is more than one count, each count must describe a patentably distinct invention.
R-408Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 41.158
Involved claim means, for the purposes of 35 U.S.C. 135(a), a claim that has been designated as corresponding to the count.
Senior party means the party entitled to the presumption under § 41.207(a)(1) that it is the prior inventor. Any other party is a junior party.
Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference. Threshold issues may include:
(1) No interference-in-fact, and
(2) In the case of an involved application claim first made after the publication of the movant’s application or issuance of the movant’s patent:
(i) Repose under 35 U.S.C. 135(b) in view of the movant’s patent or published application, or
(ii) Unpatentability for lack of written description under 35 U.S.C. 112 of an involved application claim where the applicant suggested, or could have suggested, an interference under § 41.202(a).
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (2)(ii) of the definition of “Threshold issue” revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; definition of "Constructive reduction to practice" and para. (2)(ii) of the definition of "Threshold issue" revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
§ 41.202 Suggesting an interference.
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
(1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference,
(2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
(3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
(4) Explain in detail why the applicant will prevail on priority,
(5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant’s specification, and
(6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter.
(b) Patentee. A patentee cannot suggest an interference under this section but may, to the extent permitted under § 1.291 of this title, alert the examiner of an application claiming interfering subject matter to the possibility of an interference.
(c) Examiner. An examiner may require an applicant to add a claim to provoke an interference. Failure to satisfy the requirement within a period (not less than one month) the examiner sets will operate as a concession of priority for the subject matter of the claim. If the interference would be with a patent, the applicant must also comply with paragraphs (a)(2) through (a)(6) of this section. The claim the examiner proposes to have added must, apart from the question of priority under 35 U.S.C. 102(g):
(1) Be patentable to the applicant, and
(2) Be drawn to patentable subject matter claimed by another applicant or patentee.
(d) Requirement to show priority under 35 U.S.C. 102(g).(1) When an applicant has an earliest constructive reduction to practice that is later than the apparent earliest constructive reduction to practice for a patent or published application claiming interfering subject matter, the applicant must show why it would prevail on priority.
(2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause. The Board may authorize the filing of motions to redefine the interfering
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§ 41.202PATENT RULES
subject matter or to change the benefit accorded to the parties.
(e) Sufficiency of showing. (1) A showing of priority under this section is not sufficient unless it would, if unrebutted, support a determination of priority in favor of the party making the showing.
(2) When testimony or production necessary to show priority is not available without authorization under § 41.150(c) or § 41.156(a), the showing shall include:
(i) Any necessary interrogatory, request for admission, request for production, or deposition request, and
(ii) A detailed proffer of what the response to the interrogatory or request would be expected to be and an explanation of the relevance of the response to the question of priority.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012]
§ 41.203 Declaration.
(a) Interfering subject matter. An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.
(b) Notice of declaration. An administrative patent judge declares the patent interference on behalf of the Director. A notice declaring an interference identifies:
(1) The interfering subject matter;
(2) The involved applications, patents, and claims;
(3) The accorded benefit for each count; and
(4) The claims corresponding to each count.
(c) Redeclaration. An administrative patent judge may redeclare a patent interference on behalf of the Director to change the declaration made under paragraph (b) of this section.
(d) A party may suggest the addition of a patent or application to the interference or the declaration of an additional interference. The suggestion should make the showings required under § 41.202(a) of this part.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.204 Notice of basis for relief.
(a) Priority statement. (1) A party may not submit evidence of its priority in addition to its accorded benefit unless it files a statement setting forth all bases on which the party intends to establish its entitlement to judgment on priority.
(2) The priority statement must:
(i) State the date and location of the party’s earliest corroborated conception,
(ii) State the date and location of the party’s earliest corroborated actual reduction to practice,
(iii) State the earliest corroborated date on which the party’s diligence began, and
(iv) Provide a copy of the earliest document upon which the party will rely to show conception.
(3) If a junior party fails to file a priority statement overcoming a senior party’s accorded benefit, judgment shall be entered against the junior party absent a showing of good cause.
(b) Other substantive motions. The Board may require a party to list the motions it intends to file, including sufficient detail to place the Board and the opponent on notice of the precise relief sought.
(c) Filing and service. The Board will set the times for filing and serving statements required under this section.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.205 Settlement agreements.
(a) Constructive notice; time for filing. Pursuant to 35 U.S.C. 135(c), an agreement or understanding, including collateral agreements referred to therein, made in connection with or in contemplation of the termination of an interference must be filed prior to the termination of the interference between the parties to the agreement. After a final decision is entered by the Board, an interference is considered terminated when no appeal (35 U.S.C. 141) or other review (35 U.S.C. 146 ) has been or can be taken or had. If an appeal to the U.S. Court of Appeals for
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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.203
the Federal Circuit (under 35 U.S.C. 141) or a civil action (under 35 U.S.C. 146 ) has been filed the interference is considered terminated when the appeal or civil action is terminated. A civil action is terminated when the time to appeal the judgment expires. An appeal to the U.S. Court of Appeals for the Federal Circuit, whether from a decision of the Board or a judgment in a civil action, is terminated when the mandate is issued by the Court.
(b) Untimely filing. The Chief Administrative Patent Judge may permit the filing of an agreement under paragraph (a) of this section up to six months after termination upon petition and a showing of good cause for the failure to file prior to termination.
(c) Request to keep separate. Any party to an agreement under paragraph (a) of this section may request that the agreement be kept separate from the interference file. The request must be filed with or promptly after the agreement is filed.
(d) Access to agreement. Any person, other than a representative of a Government agency, may have access to an agreement kept separate under paragraph (c) of this section only upon petition and on a showing of good cause. The agreement will be available to Government agencies on written request.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.206 Common interests in the invention.
An administrative patent judge may decline to declare, or if already declared the Board may issue judgment in, an interference between an application and another application or patent that are commonly owned.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.207 Presumptions.
(a) Priority—(1) Order of invention. Parties are presumed to have invented interfering subject matter in the order of the dates of their accorded benefit for each count. If two parties are accorded the benefit of the same earliest date of constructive reduction to practice, then neither party is entitled to a presumption of priority with respect to the other such party.
(2) Evidentiary standard. Priority may be proved by a preponderance of the evidence except a party must prove priority by clear and convincing evidence if the date of its earliest constructive reduction to practice is after the issue date of an involved patent or the publication date under 35 U.S.C. 122(b) of an involved application or patent.
(b) Claim correspondence. (1) For the purposes of determining priority and derivation, all claims of a party corresponding to the count are presumed to stand or fall together. To challenge this presumption, a party must file a timely substantive motion to have a corresponding claim designated as not corresponding to the count. No presumption based on claim correspondence regarding the grouping of claims exists for other grounds of unpatentability.
(2) A claim corresponds to a count if the subject matter of the count, treated as prior art to the claim, would have anticipated or rendered obvious the subject matter of the claim.
(c) Cross-applicability of prior art. When a motion for judgment of unpatentability against an opponent’s claim on the basis of prior art is granted, each of the movant’s claims corresponding to the same count as the opponent’s claim will be presumed to be unpatentable in view of the same prior art unless the movant in its motion rebuts this presumption.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.208 Content of substantive and responsive motions.
The general requirements for motions in contested cases are stated at § 41.121(c).
(a) In an interference, substantive motions must:
(1) Raise a threshold issue,
(2) Seek to change the scope of the definition of the interfering subject matter or the correspondence of claims to the count,
(3) Seek to change the benefit accorded for the count, or
(4) Seek judgment on derivation or on priority.
(b) To be sufficient, a motion must provide a showing, supported with appropriate evidence, such
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§ 41.208PATENT RULES
that, if unrebutted, it would justify the relief sought. The burden of proof is on the movant.
(c) Showing patentability. (1) A party moving to add or amend a claim must show the claim is patentable.
(2) A party moving to add or amend a count must show the count is patentable over prior art.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
PART 42 — TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trial Practice and Procedure
GENERAL
Sec. 42.1 Policy. 42.2 Definitions. 42.3 Jurisdiction. 42.4 Notice of trial. 42.5 Conduct of the proceeding. 42.6 Filing of documents, including exhibits;
service. 42.7 Management of the record. 42.8 Mandatory notices. 42.9 Action by patent owner. 42.10 Counsel. 42.11 Duty of candor. 42.12 Sanctions. 42.13 Citation of authority. 42.14 Public availability.
FEES
42.15 Fees.
PETITION AND MOTION PRACTICE
42.20 Generally. 42.21 Notice of basis for relief. 42.22 Content of petitions and motions. 42.23 Oppositions and replies. 42.24 Page limits for petitions, motions,
oppositions, and replies. 42.25 Default filing times.
TESTIMONY AND PRODUCTION
42.51 Discovery. 42.52 Compelling testimony and production. 42.53 Taking testimony.
42.54 Protective order. 42.55 Confidential information in a petition. 42.56 Expungement of confidential information. 42.61 Admissibility. 42.62 Applicability of the Federal rules of
evidence. 42.63 Form of evidence. 42.64 Objection; motion to exclude. 42.65 Expert testimony; tests and data.
ORALARGUMENT, DECISION,AND SETTLEMENT
42.70 Oral argument. 42.71 Decision on petitions or motions. 42.72 Termination of trial. 42.73 Judgment. 42.74 Settlement.
CERTIFICATE
42.80 Certificate.
Inter Partes Review
GENERAL
Sec. 42.100 Procedure; pendency. 42.101 Who may petition for inter partes review. 42.102 Time for filing. 42.103 Inter partes review fee. 42.104 Content of petition. 42.105 Service of petition. 42.106 Filing date. 42.107 Preliminary response to petition.
INSTITUTING INTER PARTES REVIEW
42.108 Institution of inter partes review.
AFTER INSTITUTION OF INTER PARTES REVIEW
42.120 Patent owner response. 42.121 Amendment of the patent. 42.122 Multiple proceedings and Joinder. 42.123 Filing of supplemental information.
Post-Grant Review
GENERAL
Sec. 42.200 Procedure; pendency. 42.201 Who may petition for a post-grant review. 42.202 Time for filing.
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42.203 Post-grant review fee. 42.204 Content of petition. 42.205 Service of petition. 42.206 Filing date. 42.207 Preliminary response to petition.
INSTITUTING POST-GRANT REVIEW
42.208 Institution of post-grant review.
AFTER INSTITUTION OF POST-GRANT REVIEW
42.220 Patent owner response. 42.221 Amendment of the patent. 42.222 Multiple proceedings and Joinder. 42.223 Filing of supplemental information. 42.224 Discovery.
Transitional Program for Covered Business Method Patents
42.300 Procedure; pendency. 42.301 Definitions. 42.302 Who may petition for a covered business
method patent review. 42.303 Time for filing. 42.304 Content of petition.
Derivation
GENERAL
Sec. 42.400 Procedure; pendency 42.401 Definitions. 42.402 Who may file a petition for a derivation
proceeding. 42.403 Time for filing. 42.404 Derivation fee. 42.405 Content of petition. 42.406 Service of petition. 42.407 Filing date.
INSTITUTING DERIVATION PROCEEDING
42.408 Institution of derivation proceeding.
AFTER INSTITUTION OF DERIVATION PROCEEDING
42.409 Settlement agreements. 42.410 Arbitration. 42.411 Common interests in the invention. 42.412 Public availability of Board records.
Subpart A — Trial Practice and Procedure
GENERAL
§ 42.1 Policy.
(a) Scope. Part 42 governs proceedings before the Patent Trial and Appeal Board. Sections 1.4, 1.7, 1.14, 1.16, 1.22, 1.23, 1.25, 1.26, 1.32, 1.34, and 1.36 of this chapter also apply to proceedings before the Board, as do other sections of part 1 of this chapter that are incorporated by reference into this part.
(b) Construction. This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.
(c) Decorum. Every party must act with courtesy and decorum in all proceedings before the Board, including in interactions with other parties.
(d) Evidentiary standard. The default evidentiary standard is a preponderance of the evidence.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.2 Definitions.
The following definitions apply to this part:
Affidavit means affidavit or declaration under § 1.68 of this chapter. A transcript of an ex parte deposition or a declaration under 28 U.S.C. 1746 may be used as an affidavit.
Board means the Patent Trial and Appeal Board. Board means a panel of the Board, or a member or employee acting with the authority of the Board, including:
(1) For petition decisions and interlocutory decisions, a Board member or employee acting with the authority of the Board.
(2) For final written decisions under 35 U.S.C. 135(d), 318(a) , and 328(a), a panel of the Board.
Business day means a day other than a Saturday, Sunday, or Federal holiday within the District of Columbia.
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§ 42.2PATENT RULES
Confidential information means trade secret or other confidential research, development, or commercial information.
Final means final for the purpose of judicial review to the extent available. A decision is final only if it disposes of all necessary issues with regard to the party seeking judicial review, and does not indicate that further action is required.
Hearing means consideration of the trial.
Involved means an application, patent, or claim that is the subject of the proceeding.
Judgment means a final written decision by the Board, or a termination of a proceeding.
Motion means a request for relief other than by petition.
Office means the United States Patent and Trademark Office.
Panel means at least three members of the Board.
Party means at least the petitioner and the patent owner and, in a derivation proceeding, any applicant or assignee of the involved application.
Petition is a request that a trial be instituted.
Petitioner means the party filing a petition requesting that a trial be instituted.
Preliminary Proceeding begins with the filing of a petition for instituting a trial and ends with a written decision as to whether a trial will be instituted.
Proceeding means a trial or preliminary proceeding.
Rehearing means reconsideration.
Trial means a contested case instituted by the Board based upon a petition. A trial begins with a written decision notifying the petitioner and patent owner of the institution of the trial. The term trial specifically includes a derivation proceeding under 35 U.S.C. 135; an inter partes review under Chapter 31 of title 35, United States Code; a post-grant review under Chapter 32 of title 35, United States Code; and a transitional business-method review under section 18 of the Leahy-Smith America Invents Act. Patent interferences are administered under part 41 and not under part 42 of this title, and therefore are not trials.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.3 Jurisdiction.
(a) The Board may exercise exclusive jurisdiction within the Office over every involved application and patent during the proceeding, as the Board may order.
(b) A petition to institute a trial must be filed with the Board consistent with any time period required by statute.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.4 Notice of trial.
(a) Institution of trial. The Board institutes the trial on behalf of the Director.
(b) Notice of a trial will be sent to every party to the proceeding. The entry of the notice institutes the trial.
(c) The Board may authorize additional modes of notice, including:
(1) Sending notice to another address associated with the party, or
(2) Publishing the notice in the Official Gazette of the United States Patent and Trademark Office or the Federal Register.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.5 Conduct of the proceeding.
(a) The Board may determine a proper course of conduct in a proceeding for any situation not specifically covered by this part and may enter non-final orders to administer the proceeding.
(b) The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension.
(c) Times.
(1) Setting times. The Board may set times by order. Times set by rule are default and may be modified by order. Any modification of times will take any applicable statutory pendency goal into account.
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(2) Extension of time. A request for an extension of time must be supported by a showing of good cause.
(3) Late action. A late action will be excused on a showing of good cause or upon a Board decision that consideration on the merits would be in the interests of justice.
(d) Ex parte communications. Communication regarding a specific proceeding with a Board member defined in 35 U.S.C. 6(a) is not permitted unless both parties have an opportunity to be involved in the communication.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.6 Filing of documents, including exhibits; service.
(a) General format requirements.
(1) Page size must be 81⁄2 inch × 11 inch except in the case of exhibits that require a larger size in order to preserve details of the original.
(2) In documents, including affidavits, created for the proceeding:
(i) Markings must be in black or must otherwise provide an equivalent dark, high-contrast image;
(ii) 14-point, Times New Roman proportional font, with normal spacing, must be used;
(iii) Double spacing must be used except in claim charts, headings, tables indices, signature blocks, and certificates of service. Block quotations may be 1.5 spaced, but must be indented from both the left and the right margins; and
(iv) Margins must be at least 2.5 centimeters (1 inch) on all sides.
(3) Incorporation by reference; combined documents. Arguments must not be incorporated by reference from one document into another document. Combined motions, oppositions, replies, or other combined documents are not permitted.
(4) Signature; identification. Documents must be signed in accordance with §§ 1.33 and 11.18(a) of this title, and should be identified by the trial number (where known).
(b) Modes of filing.
(1) Electronic filing. Unless otherwise authorized, submissions are to be made to the Board electronically via the Internet according to the parameters established by the Board and published on the Web site of the Office.
(2)(i) Filing by means other than electronic filing. A document filed by means other than electronic filing must:
(A) Be accompanied by a motion requesting acceptance of the submission; and
(B) Identify a date of transmission where a party seeks a filing date other than the date of receipt at the Board.
(ii) Mailed correspondence shall be sent to: Mail Stop PATENT BOARD, Patent Trial and Appeal Board, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313–1450.
(c) Exhibits. Each exhibit must be filed with the first document in which it is cited except as the Board may otherwise order.
(d) Previously filed paper. A document already in the record of the proceeding must not be filed again, not even as an exhibit or an appendix, without express Board authorization.
(e) Service.
(1) Electronic or other mode. Service may be made electronically upon agreement of the parties. Otherwise, service may be by Priority Mail
Express® or by means at least as fast and reliable
as Priority Mail Express®.
(2) Simultaneous with filing. Each document filed with the Board, if not previously served, must be served simultaneously on each opposing party.
(3) Counsel of record. If a party is represented by counsel of record in the proceeding, service must be on counsel.
(4) Certificate of service.
(i) Each document, other than an exhibit, must include a certificate of service at the end of that document. Any exhibit filed with the document may be included in the certification for the document.
(ii) For an exhibit filed separately, a transmittal letter incorporating the certificate of
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§ 42.6PATENT RULES
service must be filed. If more than one exhibit is filed at one time, a single letter should be used for all of the exhibits filed together. The letter must state the name and exhibit number for every exhibit filed with the letter.
(iii) The certificate of service must state:
(A) The date and manner of service; and
(B) The name and address of every person served.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012; para. (e)(1) revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014; para. (a)(2)(ii) revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]
§ 42.7 Management of the record.
(a) The Board may expunge any paper directed to a proceeding or filed while an application or patent is under the jurisdiction of the Board that is not authorized under this part or in a Board order or that is filed contrary to a Board order.
(b) The Board may vacate or hold in abeyance any non-Board action directed to a proceeding while an application or patent is under the jurisdiction of the Board unless the action was authorized by the Board.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.8 Mandatory notices.
(a) Each notice listed in paragraph (b) of this section must be filed with the Board:
(1) By the petitioner, as part of the petition;
(2) By the patent owner, or applicant in the case of derivation, within 21 days of service of the petition; or
(3) By either party, within 21 days of a change of the information listed in paragraph (b) of this section stated in an earlier paper.
(b) Each of the following notices must be filed:
(1) Real party-in-interest. Identify each real party-in-interest for the party.
(2) Related matters. Identify any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding.
(3) Lead and back-up counsel. If the party is represented by counsel, then counsel must be identified.
(4) Service information. Identify (if applicable):
(i) An electronic mail address;
(ii) A postal mailing address;
(iii) A hand-delivery address, if different than the postal mailing address;
(iv) A telephone number; and
(v) A facsimile number.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.9 Action by patent owner.
(a) Entire interest. An owner of the entire interest in an involved application or patent may act to the exclusion of the inventor (see § 3.71 of this title).
(b) Part interest. An owner of a part interest in the subject patent may move to act to the exclusion of an inventor or a co-owner. The motion must show the inability or refusal of an inventor or co-owner to prosecute the proceeding or other cause why it is in the interests of justice to permit the owner of a part interest to act in the trial. In granting the motion, the Board may set conditions on the actions of the parties.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.10 Counsel.
(a) If a party is represented by counsel, the party must designate a lead counsel and at least one back-up counsel who can conduct business on behalf of the lead counsel.
(b) A power of attorney must be filed with the designation of counsel, except the patent owner should not file an additional power of attorney if the designated counsel is already counsel of record in the subject patent or application.
(c) The Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, subject to the condition that lead counsel be a registered practitioner and to any other conditions
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.7
as the Board may impose. For example, where the lead counsel is a registered practitioner, a motion to appear pro hac vice by counsel who is not a registered practitioner may be granted upon showing that counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.
(d) A panel of the Board may disqualify counsel for cause after notice and opportunity for hearing. A decision to disqualify is not final for the purposes of judicial review until certified by the Chief Administrative Patent Judge.
(e) Counsel may not withdraw from a proceeding before the Board unless the Board authorizes such withdrawal.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012; para. (a) revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]
§ 42.11 Duty of candor.
Parties and individuals involved in the proceeding have a duty of candor and good faith to the Office during the course of a proceeding.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.12 Sanctions.
(a) The Board may impose a sanction against a party for misconduct, including:
(1) Failure to comply with an applicable rule or order in the proceeding;
(2) Advancing a misleading or frivolous argument or request for relief;
(3) Misrepresentation of a fact;
(4) Engaging in dilatory tactics;
(5) Abuse of discovery;
(6) Abuse of process; or
(7) Any other improper use of the proceeding, including actions that harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.
(b) Sanctions include entry of one or more of the following:
An order holding facts to have been established in the proceeding;
(2) An order expunging or precluding a party from filing a paper;
(3) An order precluding a party from presenting or contesting a particular issue;
(4) An order precluding a party from requesting, obtaining, or opposing discovery;
(5) An order excluding evidence;
(6) An order providing for compensatory expenses, including attorney fees;
(7) An order requiring terminal disclaimer of patent term; or
(8) Judgment in the trial or dismissal of the petition.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.13 Citation of authority.
(a) For any United States Supreme Court decision, citation to the United States Reports is preferred.
(b) For any decision other than a United States Supreme Court decision, citation to the West Reporter System is preferred.
(c) Citations to authority must include pinpoint citations whenever a specific holding or portion of an authority is invoked.
(d) Non-binding authority should be used sparingly. If the authority is not an authority of the Office and is not reproduced in the United States Reports or the West Reporter System, a copy of the authority should be provided.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.14 Public availability.
The record of a proceeding, including documents and things, shall be made available to the public, except as otherwise ordered. A party intending a document or thing to be sealed shall file a motion to seal concurrent with the filing of the document or thing to be sealed. The document or thing shall be provisionally sealed on receipt of the motion and
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§ 42.14PATENT RULES
remain so pending the outcome of the decision on the motion.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
FEES
§ 42.15 Fees.
(a) On filing a petition for inter partes review of a patent, payment of the following fees are due:
(1) Inter Partes Review request fee: .... $9,000.00.
(2) Inter Partes Review Post-Institution fee: ............................................................. $14,000.00.
(3) In addition to the Inter Partes Review request fee, for requesting review of each claim in excess of 20, including unchallenged claims from which a challenged claim depends: ......... $200.00.
(4) In addition to the Inter Partes Post-Institution request fee, for requesting review of each claim in excess of 15, including unchallenged claims from which a challenged claim depends: .................................................. $400.00.
(b) On filing a petition for post-grant review or covered business method patent review of a patent, payment of the following fees are due:
(1) Post-Grant or Covered Business Method Patent Review request fee: ................. $12,000.00.
(2) Post-Grant or Covered Business Method Patent Review Post-Institution fee: .... $18,000.00.
(3) In addition to the Post-Grant or Covered Business Method Patent Review request fee, for requesting review of each claim in excess of 20, including unchallenged claims from which a challenged claim depends: ...................... $250.00.
(4) In addition to the Post-Grant or Covered Business Method Patent Review Post-Institution request fee, for requesting review of each claim in excess of 15, including unchallenged claims from which a challenged claim depends: ......... $550.00.
(c) On the filing of a petition for a derivation proceeding, payment of the following fees is due:
(1) Derivation petition fee: ........... $400.00.
(d) Any request requiring payment of a fee under this part, including a written request to make a settlement agreement available: .............. $400.00.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; paras. (a)(3), (a)(4), (b)(3), and (b)(4) revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]
PETITION AND MOTION PRACTICE
§ 42.20 Generally.
(a) Relief. Relief, other than a petition requesting the institution of a trial, must be requested in the form of a motion.
(b) Prior authorization. A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding.
(c) Burden of proof. The moving party has the burden of proof to establish that it is entitled to the requested relief.
(d) Briefing. The Board may order briefing on any issue involved in the trial.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.21 Notice of basis for relief.
(a) Notice of request for relief. The Board may require a party to file a notice stating the relief it requests and the basis for its entitlement to relief. A notice must include sufficient detail to place the Board and each opponent on notice of the precise relief requested. A notice is not evidence except as an admission by a party-opponent.
(b) Filing and service. The Board may set the times and conditions for filing and serving notices required under this section. The Board may provide for the notice filed with the Board to be maintained in confidence for a limited time.
(c) Effect. If a notice under paragraph (a) of this section is required:
(1) A failure to state a sufficient basis for relief may result in a denial of the relief requested;
(2) A party will be limited to filing motions consistent with the notice; and
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.15
(3) Ambiguities in the notice will be construed against the party.
(d) Correction. A party may move to correct its notice. The motion should be filed promptly after the party becomes aware of the basis for the correction. A correction filed after the time set for filing notices will only be entered if entry would serve the interests of justice.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.22 Content of petitions and motions.
(a) Each petition or motion must be filed as a separate paper and must include:
(1) A statement of the precise relief requested; and
(2) A full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.
(b) Relief requested. Where a rule in part 1 of this title ordinarily governs the relief sought, the petition or motion must make any showings required under that rule in addition to any showings required in this part.
(c) Statement of material facts. Each petition or motion may include a statement of material fact. Each material fact preferably shall be set forth as a separately numbered sentence with specific citations to the portions of the record that support the fact.
(d) The Board may order additional showings or explanations as a condition for authorizing a motion (see § 42.20(b)).
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.23 Oppositions and replies.
(a) Oppositions and replies must comply with the content requirements for motions and, if the paper to which the opposition or reply is responding contains a statement of material fact, must include a listing of facts that are admitted, denied, or cannot be admitted or denied. Any material fact not specifically denied may be considered admitted.
(b) All arguments for the relief requested in a motion must be made in the motion. A reply may
only respond to arguments raised in the corresponding opposition or patent owner response.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012; para. (a) first sentence revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]
§ 42.24 Page limits for petitions, motions, oppositions, and replies.
(a) Petitions and motions.
(1) The following page limits for petitions and motions apply and include any statement of material facts to be admitted or denied in support of the petition or motion. The page limit does not include a table of contents, a table of authorities, a certificate of service, or appendix of exhibits or claim listing.
(i) Petition requesting inter partes review: 60 pages.
(ii) Petition requesting post-grant review: 80 pages.
(iii) Petition requesting covered business method patent review: 80 pages.
(iv) Petition requesting derivation proceeding: 60 pages.
(v) Motions (excluding Motions to Amend): 15 pages.
(vi) Motions to Amend: 25 pages.
(2) Petitions to institute a trial must comply with the stated page limits but may be accompanied by a motion to waive the page limits. The petitioner must show in the motion how a waiver of the page limits is in the interests of justice and must append a copy of proposed petition exceeding the page limit to the motion. If the motion is not granted, the proposed petition exceeding the page limit may be expunged or returned. Any other motion to waive page limits must be granted in advance of filing a motion, opposition, or reply for which the waiver is necessary.
(b) Patent owner responses and oppositions. The page limits set forth in this paragraph do not include a listing of facts which are admitted, denied, or cannot be admitted or denied.
(1) The page limits for a patent owner preliminary response to petition are the same as the page limits for the petition.
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§ 42.24PATENT RULES
(2) The page limits for a patent owner response to petition are the same as the page limits for the petition.
(3) The page limits for oppositions are the same as those for corresponding motions.
(c) Replies. The following page limits for replies apply and include any statement of facts in support of the reply. The page limits do not include a table of contents, a table of authorities, a listing of facts which are admitted, denied, or cannot be admitted or denied, a certificate of service, or appendix of exhibits.
(1) Replies to patent owner responses to petitions: 25 pages.
(2) Replies to oppositions (excluding replies to oppositions to Motions to Amend): 5 pages.
(3) Replies to oppositions to Motions to Amend: 12 pages.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012; para. (a)(1) introductory text, para. (a)(1)(v), para. (c) introductory text first sentence, and paras. (c)(1) and (c)(2) revised and paras. (a)(1)(vi) and (c)(3) added, 80 FR 28561, May 19, 2015, effective May 19, 2015]
§ 42.25 Default filing times.
(a) A motion may only be filed according to a schedule set by the Board. The default times for acting are:
(1) An opposition is due one month after service of the motion; and
(2) A reply is due one month after service of the opposition.
(b) A party should seek relief promptly after the need for relief is identified. Delay in seeking relief may justify a denial of relief sought.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
TESTIMONY AND PRODUCTION
§ 42.51 Discovery.
(a) Mandatory initial disclosures.
(1) With agreement. Parties may agree to mandatory discovery requiring the initial disclosures set forth in the Office Patent Trial Practice Guide.
(i) The parties must submit any agreement reached on initial disclosures by no later than the filing of the patent owner preliminary response or the expiration of the time period for filing such a response. The initial disclosures of the parties shall be filed as exhibits.
(ii) Upon the institution of a trial, parties may automatically take discovery of the information identified in the initial disclosures.
(2) Without agreement. Where the parties fail to agree to the mandatory discovery set forth in paragraph (a)(1), a party may seek such discovery by motion.
(b) Limited discovery. A party is not entitled to discovery except as provided in paragraph (a) of this section, or as otherwise authorized in this subpart.
(1) Routine discovery. Except as the Board may otherwise order:
(i) Unless previously served or otherwise by agreement of the parties, any exhibit cited in a paper or in testimony must be served with the citing paper or testimony.
(ii) Cross examination of affidavit testimony prepared for the proceeding is authorized within such time period as the Board may set.
(iii) Unless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency. This requirement does not make discoverable anything otherwise protected by legally recognized privileges such as attorney-client or attorney work product. This requirement extends to inventors, corporate officers, and persons involved in the preparation or filing of the documents or things.
(2) Additional discovery.
(i) The parties may agree to additional discovery between themselves. Where the parties fail to agree, a party may move for additional discovery. The moving party must show that such additional discovery is in the interests of justice, except in post-grant reviews where additional
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.25
discovery is limited to evidence directly related to factual assertions advanced by either party in the proceeding ( see § 42.224). The Board may specify conditions for such additional discovery.
(ii) When appropriate, a party may obtain production of documents and things during cross examination of an opponent's witness or during authorized compelled testimony under § 42.52.
(c) Production of documents. Except as otherwise ordered by the Board, a party producing documents and things shall either provide copies to the opposing party or make the documents and things available for inspection and copying at a reasonable time and location in the United States.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012; para. (b)(1)(ii) revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]
§ 42.52 Compelling testimony and production.
(a) Authorization required. A party seeking to compel testimony or production of documents or things must file a motion for authorization. The motion must describe the general relevance of the testimony, document, or thing, and must:
(1) In the case of testimony, identify the witness by name or title; and
(2) In the case of a document or thing, the general nature of the document or thing.
(b) Outside the United States. For testimony or production sought outside the United States, the motion must also:
(1) In the case of testimony.
(i) Identify the foreign country and explain why the party believes the witness can be compelled to testify in the foreign country, including a description of the procedures that will be used to compel the testimony in the foreign country and an estimate of the time it is expected to take to obtain the testimony; and
(ii) Demonstrate that the party has made reasonable efforts to secure the agreement of the witness to testify in the United States but has been unsuccessful in obtaining the agreement, even though the party has offered to pay the travel expenses of the witness to testify in the United States.
(2) In the case of production of a document or thing.
(i) Identify the foreign country and explain why the party believes production of the document or thing can be compelled in the foreign country, including a description of the procedures that will be used to compel production of the document or thing in the foreign country and an estimate of the time it is expected to take to obtain production of the document or thing; and
(ii) Demonstrate that the party has made reasonable efforts to obtain the agreement of the individual or entity having possession, custody, or control of the document or thing to produce the document or thing in the United States but has been unsuccessful in obtaining that agreement, even though the party has offered to pay the expenses of producing the document or thing in the United States.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.53 Taking testimony.
(a) Form. Uncompelled direct testimony must be submitted in the form of an affidavit. All other testimony, including testimony compelled under 35 U.S.C. 24, must be in the form of a deposition transcript. Parties may agree to video-recorded testimony, but may not submit such testimony without prior authorization of the Board. In addition, the Board may authorize or require live or video-recorded testimony.
(b) Time and location.
(1) Uncompelled direct testimony may be taken at any time to support a petition, motion, opposition, or reply; otherwise, testimony may only be taken during a testimony period set by the Board.
(2) Except as the Board otherwise orders, during the testimony period, deposition testimony may be taken at any reasonable time and location within the United States before any disinterested official authorized to administer oaths at that location.
(3) Uncompelled deposition testimony outside the United States may only be taken upon agreement of the parties or as the Board specifically directs.
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§ 42.53PATENT RULES
(c) Duration.
(1) Unless stipulated by the parties or ordered by the Board, direct examination, cross-examination, and redirect examination for compelled deposition testimony shall be subject to the following time limits: Seven hours for direct examination, four hours for cross-examination, and two hours for redirect examination.
(2) Unless stipulated by the parties or ordered by the Board, cross-examination, redirect examination, and re-cross examination for uncompelled direct testimony shall be subject to the follow time limits: Seven hours for cross-examination, four hours for redirect examination, and two hours for re-cross examination.
(d) Notice of deposition.
(1) Prior to the taking of deposition testimony, all parties to the proceeding must agree on the time and place for taking testimony. If the parties cannot agree, the party seeking the testimony must initiate a conference with the Board to set a time and place.
(2) Cross-examination should ordinarily take place after any supplemental evidence relating to the direct testimony has been filed and more than a week before the filing date for any paper in which the cross-examination testimony is expected to be used. A party requesting cross-examination testimony of more than one witness may choose the order in which the witnesses are to be cross-examined.
(3) In the case of direct deposition testimony, at least three business days prior to the conference in paragraph (d)(1) of this section, or if there is no conference, at least ten days prior to the deposition, the party seeking the direct testimony must serve:
(i) A list and copy of each document under the party's control and on which the party intends to rely; and
(ii) A list of, and proffer of reasonable access to, anything other than a document under the party's control and on which the party intends to rely.
(4) The party seeking the deposition must file a notice of the deposition at least ten business days before a deposition.
(5) Scope and content—
(i) For direct deposition testimony, the notice limits the scope of the testimony and must list:
(A) The time and place of the deposition;
(B) The name and address of the witness;
(C) A list of the exhibits to be relied upon during the deposition; and
(D) A general description of the scope and nature of the testimony to be elicited.
(ii) For cross-examination testimony, the scope of the examination is limited to the scope of the direct testimony.
(iii) The notice must list the time and place of the deposition.
(iv) Where an additional party seeks to take direct testimony of a third party witness at the time and place noticed in paragraph (d)(5) of this section, the additional party must provide a counter notice that lists the exhibits to be relied upon in the deposition and a general description of the scope and nature of the testimony to be elicited.
(6) Motion to quash—Objection to a defect in the notice is waived unless the objecting party promptly seeks authorization to file a motion to quash.
(e) Deposition in a foreign language. If an interpreter will be used during the deposition, the party calling the witness must initiate a conference with the Board at least five business days before the deposition.
(f) Manner of taking deposition testimony.
(1) Before giving deposition testimony, each witness shall be duly sworn according to law by the officer before whom the deposition is to be taken. The officer must be authorized to take testimony under 35 U.S.C. 23.
(2) The testimony shall be taken with any questions and answers recorded in their regular order by the officer, or by some other disinterested person in the presence of the officer, unless the presence of the officer is waived on the record by agreement of all parties.
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(3) Any exhibits used during the deposition must be numbered as required by § 42.63(c), and must, if not previously served, be served at the deposition. Exhibits objected to shall be accepted pending a decision on the objection.
(4) All objections made at the time of the deposition to the qualifications of the officer taking the deposition, the manner of taking it, the evidence presented, the conduct of any party, and any other objection to the deposition shall be noted on the record by the officer.
(5) When the testimony has been transcribed, the witness shall read and sign (in the form of an affidavit) a transcript of the deposition unless:
(i) The parties otherwise agree in writing;
(ii) The parties waive reading and signature by the witness on the record at the deposition; or
(iii) The witness refuses to read or sign the transcript of the deposition.
(6) The officer shall prepare a certified transcript by attaching a certificate in the form of an affidavit signed and sealed by the officer to the transcript of the deposition. Unless the parties waive any of the following requirements, in which case the certificate shall so state, the certificate must state:
(i) The witness was duly sworn by the officer before commencement of testimony by the witness;
(ii) The transcript is a true record of the testimony given by the witness;
(iii) The name of the person who recorded the testimony, and if the officer did not record it, whether the testimony was recorded in the presence of the officer;
(iv) The presence or absence of any opponent;
(v) The place where the deposition was taken and the day and hour when the deposition began and ended;
(vi) The officer has no disqualifying interest, personal or financial, in a party; and
(vii) If a witness refuses to read or sign the transcript, the circumstances under which the witness refused.
(7) Except where the parties agree otherwise, the proponent of the testimony must arrange for providing a copy of the transcript to all other parties. The testimony must be filed as an exhibit.
(8) Any objection to the content, form, or manner of taking the deposition, including the qualifications of the officer, is waived unless made on the record during the deposition and preserved in a timely filed motion to exclude.
(g) Costs. Except as the Board may order or the parties may agree in writing, the proponent of the direct testimony shall bear all costs associated with the testimony, including the reasonable costs associated with making the witness available for the cross-examination.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012; paras. (c)(2) and (f)(7) revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]
§ 42.54 Protective order.
(a) A party may file a motion to seal where the motion to seal contains a proposed protective order, such as the default protective order set forth in the Office Patent Trial Practice Guide. The motion must include a certification that the moving party has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute. The Board may, for good cause, issue an order to protect a party or person from disclosing confidential information, including, but not limited to, one or more of the following:
(1) Forbidding the disclosure or discovery;
(2) Specifying terms, including time and place, for the disclosure or discovery;
(3) Prescribing a discovery method other than the one selected by the party seeking discovery;
(4) Forbidding inquiry into certain matters, or limiting the scope of disclosure or discovery to certain matters;
(5) Designating the persons who may be present while the discovery is conducted;
(6) Requiring that a deposition be sealed and opened only by order of the Board;
(7) Requiring that a trade secret or other confidential research, development, or commercial
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§ 42.54PATENT RULES
information not be revealed or be revealed only in a specified way; and
(8) Requiring that the parties simultaneously file specified documents or information in sealed envelopes, to be opened as the Board directs.
(b) [Reserved].
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.55 Confidential information in a petition.
A petitioner filing confidential information with a petition may, concurrent with the filing of the petition, file a motion to seal with a proposed protective order as to the confidential information. The institution of the requested trial will constitute a grant of the motion to seal unless otherwise ordered by the Board.
(a) Default protective order. Where a motion to seal requests entry of the default protective order set forth in the Office Patent Trial Practice Guide, the petitioner must file, but need not serve, the confidential information under seal. The patent owner may only access the filed sealed information prior to the institution of the trial by agreeing to the terms of the default protective order or obtaining relief from the Board.
(b) Protective orders other than default protective order. Where a motion to seal requests entry of a protective order other than the default protective order, the petitioner must file, but need not serve, the confidential information under seal. The patent owner may only access the sealed confidential information prior to the institution of the trial by:
(1) agreeing to the terms of the protective order requested by the petitioner;
(2) agreeing to the terms of a protective order that the parties file jointly; or
(3) obtaining entry of a protective order ( e.g., the default protective order).
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.56 Expungement of confidential information.
After denial of a petition to institute a trial or after final judgment in a trial, a party may file a motion to expunge confidential information from the record.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.61 Admissibility.
(a) Evidence that is not taken, sought, or filed in accordance with this subpart is not admissible.
(b) Records of the Office. Certification is not necessary as a condition to admissibility when the evidence to be submitted is a record of the Office to which all parties have access.
(c) Specification and drawings. A specification or drawing of a United States patent application or patent is admissible as evidence only to prove what the specification or drawing describes. If there is data in the specification or a drawing upon which a party intends to rely to prove the truth of the data, an affidavit by an individual having first-hand knowledge of how the data was generated must be filed.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.62 Applicability of the Federal rules of evidence.
(a) Generally. Except as otherwise provided in this subpart, the Federal Rules of Evidence shall apply to a proceeding.
(b) Exclusions. Those portions of the Federal Rules of Evidence relating to criminal proceedings, juries, and other matters not relevant to proceedings under this subpart shall not apply.
(c) Modifications in terminology. Unless otherwise clear from context, the following terms of the Federal Rules of Evidence shall be construed as indicated:
Appellate court means United States Court of Appeals for the Federal Circuit.
Civil action, civil proceeding, and action mean a proceeding before the Board under part 42.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.55
Courts of the United States, U.S. Magistrate, court, trial court, trier of fact, and judge mean Board.
Hearing means, as defined in Federal Rule of Evidence 804(a)(5), the time for taking testimony.
Judicial notice means official notice.
Trial or hearing in Federal Rule of Evidence 807 means the time for taking testimony.
(d) In determining foreign law, the Board may consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.63 Form of evidence.
(a) Exhibits required. Evidence consists of affidavits, transcripts of depositions, documents, and things. All evidence must be filed in the form of an exhibit.
(b) Translation required. When a party relies on a document or is required to produce a document in a language other than English, a translation of the document into English and an affidavit attesting to the accuracy of the translation must be filed with the document.
(c) Exhibit numbering. Each party’s exhibits must be uniquely numbered sequentially in a range the Board specifies. For the petitioner, the range is 1001–1999, and for the patent owner, the range is 2001–2999.
(d) Exhibit format. An exhibit must conform with the requirements for papers in § 42.6 and the requirements of this paragraph.
(1) Each exhibit must have an exhibit label.
(i) An exhibit filed with the petition must include the petitioner's name followed by a unique exhibit number.
(ii) For exhibits not filed with the petition, the exhibit label must include the party's name followed by a unique exhibit number, the names of the parties, and the trial number.
(2) When the exhibit is a paper:
(i) Each page must be uniquely numbered in sequence; and
(ii) The exhibit label must be affixed to the lower right corner of the first page of the exhibit without obscuring information on the first page or, if obscuring is unavoidable, affixed to a duplicate first page.
(e) Exhibit list. Each party must maintain an exhibit list with the exhibit number and a brief description of each exhibit. If the exhibit is not filed, the exhibit list should note that fact. A current exhibit list must be served whenever evidence is served and the current exhibit list must be filed when filing exhibits.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.64 Objection; motion to exclude.
(a) Deposition evidence. An objection to the admissibility of deposition evidence must be made during the deposition. Evidence to cure the objection must be provided during the deposition, unless the parties to the deposition stipulate otherwise on the deposition record.
(b) Other evidence. For evidence other than deposition evidence:
(1) Objection. Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial. Once a trial has been instituted, any objection must be filed within five business days of service of evidence to which the objection is directed. The objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence.
(2) Supplemental evidence. The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.
(c) Motion to exclude. A motion to exclude evidence must be filed to preserve any objection. The motion must identify the objections in the record in order and must explain the objections. The motion may be filed without prior authorization from the Board.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012; section heading and first two sentences of para. (b)(1) revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]
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§ 42.65 Expert testimony; tests and data.
(a) Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. Testimony on United States patent law or patent examination practice will not be admitted.
(b) If a party relies on a technical test or data from such a test, the party must provide an affidavit explaining:
(1) Why the test or data is being used;
(2) How the test was performed and the data was generated;
(3) How the data is used to determine a value;
(4) How the test is regarded in the relevant art; and
(5) Any other information necessary for the Board to evaluate the test and data.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
ORAL ARGUMENT, DECISION, AND SETTLEMENT
§ 42.70 Oral argument.
(a) Request for oral argument. A party may request oral argument on an issue raised in a paper at a time set by the Board. The request must be filed as a separate paper and must specify the issues to be argued.
(b) Demonstrative exhibits must be served at least five business days before the oral argument and filed no later than the time of the oral argument.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.71 Decision on petitions or motions.
(a) Order of consideration. The Board may take up petitions or motions for decisions in any order, may grant, deny, or dismiss any petition or motion, and may enter any appropriate order.
(b) Interlocutory decisions. A decision on a motion without a judgment is not final for the purposes of judicial review. If a decision is not a
panel decision, the party may request that a panel rehear the decision. When rehearing a non-panel decision, a panel will review the decision for an abuse of discretion. A panel decision on an issue will govern the trial.
(c) Petition decisions. A decision by the Board on whether to institute a trial is final and nonappealable. A party may request rehearing on a decision by the Board on whether to institute a trial pursuant to paragraph (d) of this section. When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.
(d) Rehearing. A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. A request for rehearing does not toll times for taking action. Any request must be filed:
(1) Within 14 days of the entry of a non-final decision or a decision to institute a trial as to at least one ground of unpatentability asserted in the petition; or
(2) Within 30 days of the entry of a final decision or a decision not to institute a trial.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012; para. (d) first sentence revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]
§ 42.72 Termination of trial.
The Board may terminate a trial without rendering a final written decision, where appropriate, including where the trial is consolidated with another proceeding or pursuant to a joint request under 35 U.S.C. 317(a) or 327(a).
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.73 Judgment.
(a) A judgment, except in the case of a termination, disposes of all issues that were, or by motion reasonably could have been, raised and decided.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.65
(b) Request for adverse judgment. A party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include:
(1) Disclaimer of the involved application or patent;
(2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial;
(3) Concession of unpatentability or derivation of the contested subject matter; and
(4) Abandonment of the contest.
(c) Recommendation. The judgment may include a recommendation for further action by an examiner or by the Director.
(d) Estoppel.
(1) Petitioner other than in derivation proceeding. A petitioner, or the real party in interest or privy of the petitioner, is estopped in the Office from requesting or maintaining a proceeding with respect to a claim for which it has obtained a final written decision on patentability in an inter partes review, post-grant review, or a covered business method patent review, on any ground that the petitioner raised or reasonably could have raised during the trial, except that estoppel shall not apply to a petitioner, or to the real party in interest or privy of the petitioner who has settled under 35 U.S.C. 317 or 327.
(2) In a derivation, the losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party's failure to move, except that a losing party shall not be estopped with respect to any contested subject matter for which that party was awarded a favorable judgment.
(3) Patent applicant or owner. A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent:
(i) A claim that is not patentably distinct from a finally refused or canceled claim; or
(ii) An amendment of a specification or of a drawing that was denied during the trial proceeding, but this provision does not apply to an
application or patent that has a different written description.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.74 Settlement.
(a) Board role. The parties may agree to settle any issue in a proceeding, but the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice.
(b) Agreements in writing. Any agreement or understanding between the parties made in connection with, or in contemplation of, the termination of a proceeding shall be in writing and a true copy shall be filed with the Board before the termination of the trial.
(c) Request to keep separate. A party to a settlement may request that the settlement be treated as business confidential information and be kept separate from the files of an involved patent or application. The request must be filed with the settlement. If a timely request is filed, the settlement shall only be available:
(1) To a Government agency on written request to the Board; or
(2) To any other person upon written request to the Board to make the settlement agreement available, along with the fee specified in § 42.15(d) and on a showing of good cause.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
CERTIFICATE
§ 42.80 Certificate.
After the Board issues a final written decision in an inter partes review, post-grant review, or covered
business method patent review and the time for appeal has expired or any appeal has terminated, the Office will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any new or amended
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§ 42.80PATENT RULES
claim determined to be patentable by operation of the certificate.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
Subpart B — Inter Partes Review
GENERAL
§ 42.100 Procedure; pendency.
(a) An inter partes review is a trial subject to the procedures set forth in subpart A of this part.
(b) A claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.
(c) An inter partes review proceeding shall be administered such that pendency before the Board after institution is normally no more than one year. The time can be extended by up to six months for good cause by the Chief Administrative Patent Judge, or adjusted by the Board in the case of joinder.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.101 Who may petition for inter partes review.
A person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent unless:
(a) Before the date on which the petition for review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent;
(b) The petition requesting the proceeding is filed more than one year after the date on which the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent; or
(c) The petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.102 Time for filing.
(a) A petition for inter partes review of a patent must be filed after the later of the following dates, where applicable:
(1) If the patent is a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act, the date that is nine months after the date of the grant of the patent;
(2) If the patent is a patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act, the date of the grant of the patent; or
(3) If a post-grant review is instituted as set forth in subpart C of this part, the date of the termination of such post-grant review.
(b) The Director may impose a limit on the number of inter partes reviews that may be instituted during each of the first four one-year periods in which the amendment made to chapter 31 of title 35, United States Code, is in effect by providing notice in the Office's Official Gazette or Federal Register. Petitions filed after an established limit has been reached will be deemed untimely.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012; para. (a) revised, 78 FR 17873, Mar. 25, 2013, effective Mar. 25, 2013]
§ 42.103 Inter partes review fee.
(a) An inter partes review fee set forth in § 42.15(a) must accompany the petition.
(b) No filing date will be accorded to the petition until full payment is received.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.104 Content of petition.
In addition to the requirements of §§ 42.6, 42.8, 42.22, and 42.24, the petition must set forth:
(a) Grounds for standing. The petitioner must certify that the patent for which review is sought is available for inter partes review and that the petitioner is not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in the petition.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.100
(b) Identification of challenge. Provide a statement of the precise relief requested for each claim challenged. The statement must identify the following:
(1) The claim;
(2) The specific statutory grounds under 35 U.S.C. 102 or 103 on which the challenge to the claim is based and the patents or printed publications relied upon for each ground;
(3) How the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function;
(4) How the construed claim is unpatentable under the statutory grounds identified in paragraph (b)(2) of this section. The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and
(5) The exhibit number of the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.
(c) A motion may be filed that seeks to correct a clerical or typographical mistake in the petition. The grant of such a motion does not change the filing date of the petition.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.105 Service of petition.
In addition to the requirements of § 42.6, the petitioner must serve the petition and exhibits relied upon in the petition as follows:
(a) The petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent. The petitioner may additionally serve the petition and
supporting evidence on the patent owner at any other address known to the petitioner as likely to effect service.
(b) Upon agreement of the parties, service may be made electronically. Service may be by Priority
Mail Express® or by means at least as fast and
reliable as Priority Mail Express®. Personal service is not required.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012; para. (b) revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014;]
§ 42.106 Filing date.
(a) Complete petition. A petition to institute inter partes review will not be accorded a filing date until the petition satisfies all of the following requirements:
(1) Complies with § 42.104;
(2) Effects service of the petition on the correspondence address of record as provided in § 42.105(a); and
(3) Is accompanied by the fee to institute required in § 42.15(a).
(b) Incomplete petition. Where a party files an incomplete petition, no filing date will be accorded, and the Office will dismiss the petition if the deficiency in the petition is not corrected within one month from the notice of an incomplete petition.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.107 Preliminary response to petition.
(a) The patent owner may file a preliminary response to the petition. The response is limited to setting forth the reasons why no inter partes review should be instituted under 35 U.S.C. 314. The response can include evidence except as provided in paragraph (c) of this section. The preliminary response is subject to the page limits under § 42.24.
(b) Due date. The preliminary response must be filed no later than three months after the date of a notice indicating that the request to institute an inter partes review has been granted a filing date. A patent owner may expedite the proceeding by filing an election to waive the patent owner preliminary response.
Rev. 07.2015, October 2015R-429
§ 42.107PATENT RULES
(c) No new testimonial evidence. The preliminary response shall not present new testimony evidence beyond that already of record, except as authorized by the Board.
(d) No amendment. The preliminary response shall not include any amendment.
(e) Disclaim Patent Claims. The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
INSTITUTING INTER PARTES REVIEW
§ 42.108 Institution of inter partes review.
(a) When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.
(b) At any time prior to institution of inter partes review, the Board may deny some or all grounds for unpatentability for some or all of the challenged claims. Denial of a ground is a Board decision not to institute inter partes review on that ground.
(c) Sufficient grounds. Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable. The Board's decision will take into account a patent owner preliminary response where such a response is filed.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
AFTER INSTITUTION OF INTER PARTES REVIEW
§ 42.120 Patent owner response.
(a) Scope. A patent owner may file a response to the petition addressing any ground for
unpatentability not already denied. A patent owner response is filed as an opposition and is subject to the page limits provided in § 42.24.
(b) Due date for response. If no time for filing a patent owner response to a petition is provided in a Board order, the default date for filing a patent owner response is three months from the date the inter partes review was instituted.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.121 Amendment of the patent.
(a) Motion to amend. A patent owner may file one motion to amend a patent, but only after conferring with the Board.
(1) Due date. Unless a due date is provided in a Board order, a motion to amend must be filed no later than the filing of a patent owner response.
(2) Scope. A motion to amend may be denied where:
(i) The amendment does not respond to a ground of unpatentability involved in the trial; or
(ii) The amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.
(3) A reasonable number of substitute claims. A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims. The presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.
(b) Content. A motion to amend claims must include a claim listing, which claim listing may be contained in an appendix to the motion, show the changes clearly, and set forth:
(1) The support in the original disclosure of the patent for each claim that is added or amended; and
(2) The support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.
(c) Additional motion to amend. In addition to the requirements set forth in paragraphs (a) and (b) of this section, any additional motion to amend may not be filed without Board authorization. An additional motion to amend may be authorized when
R-430Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 42.108
there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement. In determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend in paragraph (a)(1) of this section.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012; para. (b) introductory text revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]
§ 42.122 Multiple proceedings and Joinder.
(a) Multiple proceedings. Where another matter involving the patent is before the Office, the Board may during the pendency of the inter partes review enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.
(b) Request for joinder. Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested. The time period set forth in § 42.101(b) shall not apply when the petition is accompanied by a request for joinder.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.123 Filing of supplemental information.
(a) Motion to submit supplemental information. Once a trial has been instituted, a party may file a motion to submit supplemental information in accordance with the following requirements:
(1) A request for the authorization to file a motion to submit supplemental information is made within one month of the date the trial is instituted.
(2) The supplemental information must be relevant to a claim for which the trial has been instituted.
(b) Late submission of supplemental information.A party seeking to submit supplemental information more than one month after the date the trial is instituted, must request authorization to file a motion to submit the information. The motion to submit supplemental information must show why
the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.
(c) Other supplemental information. A party seeking to submit supplemental information not relevant to a claim for which the trial has been instituted must request authorization to file a motion to submit the information. The motion must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
Subpart C — Post-Grant Review
GENERAL
§ 42.200 Procedure; pendency.
(a) A post-grant review is a trial subject to the procedures set forth in subpart A of this part.
(b) A claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.
(c) A post-grant review proceeding shall be administered such that pendency before the Board after institution is normally no more than one year. The time can be extended by up to six months for good cause by the Chief Administrative Patent Judge, or adjusted by the Board in the case of joinder.
(d) Interferences commenced before September 16, 2012, shall proceed under part 41 of this chapter except as the Chief Administrative Patent Judge, acting on behalf of the Director, may otherwise order in the interests-of-justice.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
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§ 42.200PATENT RULES
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.201 Who may petition for a post-grant review.
A person who is not the owner of a patent may file with the Office a petition to institute a post-grant review of the patent unless:
(a) Before the date on which the petition for review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent; or
(b) The petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.202 Time for filing.
(a) A petition for a post-grant review of a patent must be filed no later than the date that is nine months after the date of the grant of a patent or of the issuance of a reissue patent. A petition, however, may not request a post-grant review for a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued unless the petition is filed not later than the date that is nine months after the date of the grant of the original patent.
(b) The Director may impose a limit on the number of post-grant reviews that may be instituted during each of the first four one-year periods in which 35 U.S.C. 321 is in effect by providing notice in the Office's Official Gazette or Federal Register. Petitions filed after an established limit has been reached will be deemed untimely.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.203 Post-grant review fee.
(a) A post-grant review fee set forth in § 42.15(b) must accompany the petition.
(b) No filing date will be accorded to the petition until full payment is received.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.204 Content of petition.
In addition to the requirements of §§ 42.6, 42.8, 42.22, and 42.24, the petition must set forth:
(a) Grounds for standing. The petitioner must certify that the patent for which review is sought is available for post-grant review and that the petitioner is not barred or estopped from requesting a post-grant review challenging the patent claims on the grounds identified in the petition.
(b) Identification of challenge. Provide a statement of the precise relief requested for each claim challenged. The statement must identify the following:
(1) The claim;
(2) The specific statutory grounds permitted under 35 U.S.C. 282(b)(2) or (3) on which the challenge to the claim is based;
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.201
(3) How the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function;
(4) How the construed claim is unpatentable under the statutory grounds identified in paragraph (b)(2) of this section. Where the grounds for unpatentability are based on prior art, the petition must specify where each element of the claim is found in the prior art. For all other grounds of unpatentability, the petition must identify the specific part of the claim that fails to comply with the statutory grounds raised and state how the identified subject matter fails to comply with the statute; and
(5) The exhibit number of the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.
(c) A motion may be filed that seeks to correct a clerical or typographical mistake in the petition. The grant of such a motion does not change the filing date of the petition.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.205 Service of petition.
In addition to the requirements of § 42.6, the petitioner must serve the petition and exhibits relied upon in the petition as follows:
(a) The petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent. The petitioner may additionally serve the petition and supporting evidence on the patent owner at any other address known to the petitioner as likely to effect service.
(b) Upon agreement of the parties, service may be made electronically. Service may be by Priority
Mail Express® or by means at least as fast and
reliable as Priority Mail Express®. Personal service is not required.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012; para. (b) revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014;]
§ 42.206 Filing date.
(a) Complete petition. A petition to institute a post-grant review will not be accorded a filing date until the petition satisfies all of the following requirements:
(1) Complies with § 42.204 or § 42.304, as the case may be,
(2) Effects service of the petition on the correspondence address of record as provided in § 42.205(a); and
(3) Is accompanied by the filing fee in § 42.15(b).
(b) Incomplete petition. Where a party files an incomplete petition, no filing date will be accorded and the Office will dismiss the request if the
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§ 42.206PATENT RULES
deficiency in the petition is not corrected within the earlier of either one month from the notice of an incomplete petition, or the expiration of the statutory deadline in which to file a petition for post-grant review.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.207 Preliminary response to petition.
(a) The patent owner may file a preliminary response to the petition. The response is limited to setting forth the reasons why no post-grant review should be instituted under 35 U.S.C. 324. The response can include evidence except as provided in paragraph (c) of this section. The preliminary response is subject to the page limits under § 42.24.
(b) Due date. The preliminary response must be filed no later than three months after the date of a notice indicating that the request to institute a post-grant review has been granted a filing date. A patent owner may expedite the proceeding by filing an election to waive the patent owner preliminary response.
(c) No new testimonial evidence. The preliminary response shall not present new testimony evidence beyond that already of record, except as authorized by the Board.
(d) No amendment. The preliminary response shall not include any amendment.
(e) Disclaim Patent Claims. The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a), disclaiming one or more claims in the patent. No post-grant review will be instituted based on disclaimed claims.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an
interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
INSTITUTING POST-GRANT REVIEW
§ 42.208 Institution of post-grant review.
(a) When instituting post-grant review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.
(b) At any time prior to institution of post-grant review, the Board may deny some or all grounds for unpatentability for some or all of the challenged claims. Denial of a ground is a Board decision not to institute post-grant review on that ground.
(c) Sufficient grounds. Post-grant review shall not be instituted for a ground of unpatentability, unless the Board decides that the petition supporting the ground would, if unrebutted, demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The Board's decision will take into account a patent owner preliminary response where such a response is filed.
(d) Additional grounds. Sufficient grounds under § 42.208(c) may be a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.207
AFTER INSTITUTION OF POST-GRANT REVIEW
§ 42.220 Patent owner response.
(1) Scope. A patent owner may file a response to the petition addressing any ground for unpatentability not already denied. A patent owner response is filed as an opposition and is subject to the page limits provided in § 42.24.
(b) Due date for response. If no date for filing a patent owner response to a petition is provided in a Board order, the default date for filing a patent owner response is three months from the date the post-grant review is instituted.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.221 Amendment of the patent.
(a) Motion to amend. A patent owner may file one motion to amend a patent, but only after conferring with the Board.
(1) Due date. Unless a due date is provided in a Board order, a motion to amend must be filed no later than the filing of a patent owner response.
(2) Scope. A motion to amend may be denied where:
(i) The amendment does not respond to a ground of unpatentability involved in the trial; or
(ii) The amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.
(3) A reasonable number of substitute claims. A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims. The presumption is that only one substitute claim would be needed to replace each challenged
claim, and it may be rebutted by a demonstration of need.
(b) Content. A motion to amend claims must include a claim listing, which claim listing may be contained in an appendix to the motion, show the changes clearly, and set forth:
(1) The support in the original disclosure of the patent for each claim that is added or amended; and
(2) The support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.
(c) Additional motion to amend. In addition to the requirements set forth in paragraphs (a) and (b) of this section, any additional motion to amend may not be filed without Board authorization. An additional motion to amend may be authorized when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement. In determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend in paragraph (a)(1) of this section.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012; para. (b) introductory text revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]
§ 42.222 Multiple proceedings and Joinder.
(a) Multiple proceedings. Where another matter involving the patent is before the Office, the Board may during the pendency of the post-grant review enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.
(b) Request for joinder. Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under
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§ 42.222PATENT RULES
§ 42.22, no later than one month after the institution date of any post-grant review for which joinder is requested.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.223 Filing of supplemental information.
(a) Motion to submit supplemental information. Once a trial has been instituted, a party may file a motion to submit supplemental information in accordance with the following requirements:
(1) A request for the authorization to file a motion to submit supplemental information is made within one month of the date the trial is instituted.
(2) The supplemental information must be relevant to a claim for which the trial has been instituted.
(b) Late submission of supplemental information.A party seeking to submit supplemental information more than one month after the date the trial is instituted, must request authorization to file a motion to submit the information. The motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.
(c) Other supplemental information. A party seeking to submit supplemental information not relevant to a claim for which the trial has been instituted must request authorization to file a motion to submit the information. The motion must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions
of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.224 Discovery.
Notwithstanding the discovery provisions of subpart A:
(a) Requests for additional discovery may be granted upon a showing of good cause as to why the discovery is needed; and
(b) Discovery is limited to evidence directly related to factual assertions advanced by either party in the proceeding.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
Subpart D — Transitional Program for Covered Business Method Patents
§ 42.300 Procedure; pendency.
(a) A covered business method patent review is a trial subject to the procedures set forth in subpart A of this part and is also subject to the post-grant review procedures set forth in subpart C except for §§ 42.200, 42.201, 42.202, and 42.204.
(b) A claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.
(c) A covered business method patent review proceeding shall be administered such that pendency before the Board after institution is normally no
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.223
more than one year. The time can be extended by up to six months for good cause by the Chief Administrative Patent Judge, or adjusted by the Board in the case of joinder.
(d) The rules in this subpart are applicable until September 15, 2020, except that the rules shall continue to apply to any petition for a covered business method patent review filed before the date of repeal.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012; para. (c) revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]
§ 42.301 Definitions.
In addition to the definitions in § 42.2, the following definitions apply to proceedings under this subpart D:
(a) Covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.
(b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.
[Added, 77 FR 48734, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.302 Who may petition for a covered business method patent review.
(a) A petitioner may not file with the Office a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has been charged with infringement under that patent. Charged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that
the petitioner would have standing to bring a declaratory judgment action in Federal court.
(b) A petitioner may not file a petition to institute a covered business method patent review of the patent where the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.
(c) A petitioner may not file a petition to institute a covered business method patent review of the patent where, before the date on which the petition is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012; para. (c) added, 80 FR 28561, May 19, 2015, effective May 19, 2015]
§ 42.303 Time for filing.
A petition requesting a covered business method patent review may be filed any time except during the period in which a petition for a post-grant review of the patent would satisfy the requirements of 35 U.S.C. 321(c).
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
§ 42.304 Content of petition.
In addition to any other notices required by subparts A and C of this part, a petition must request judgment against one or more claims of a patent identified by patent number. In addition to the requirements of §§ 42.6, 42.8, 42.22, and 42.24 the petition must set forth:
(a) Grounds for standing. The petitioner must demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.
(b) Identification of challenge. Provide a statement of the precise relief requested for each claim challenged. The statement must identify the following:
(1) The claim;
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§ 42.304PATENT RULES
(2) The specific statutory grounds permitted under paragraph (2) or (3) of 35 U.S.C. 282(b), except as modified by section 18(a)(1)(C) of the Leahy-Smith America Invents Act (Pub. L. 112–29, 125 Stat. 284 (2011)), on which the challenge to the claim is based;
(3) How the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function;
(4) How the construed claim is unpatentable under the statutory grounds identified in paragraph (b)(2) of this section. Where the grounds for unpatentability are based on prior art, the petition must specify where each element of the claim is found in the prior art. For all other grounds of unpatentability, the petition must identify the specific part of the claim that fails to comply with the statutory grounds raised and state how the identified subject matter fails to comply with the statute; and
(5) The exhibit number of supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.
(c) A motion may be filed that seeks to correct a clerical or typographical mistake in the petition. The grant of such a motion does not change the filing date of the petition.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]
Subpart E — Derivation
GENERAL
§ 42.400 Procedure; pendency
(a) A derivation proceeding is a trial subject to the procedures set forth in subpart A of this part.
(b) The Board may for good cause authorize or direct the parties to address patentability issues that arise in the course of the derivation proceeding.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
§ 42.401 Definitions.
In addition to the definitions in § 42.2, the following definitions apply to proceedings under this subpart:
Agreement or understanding under 35 U.S.C. 135(e) means settlement for the purposes of § 42.74.
Applicant includes a reissue applicant.
Application includes both an application for an original patent and an application for a reissued patent.
First publication means either a patent or an application publication under 35 U.S.C. 122(b), including a publication of an international application designating the United States as provided by 35 U.S.C. 374.
Petitioner means a patent applicant who petitions for a determination that another party named in an earlier-filed patent application allegedly derived a claimed invention from an inventor named in the petitioner’s application and filed the earlier application without authorization.
Respondent means a party other than the petitioner.
Same or substantially the same means patentably indistinct.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
§ 42.402 Who may file a petition for a derivation proceeding.
An applicant for patent may file a petition to institute a derivation proceeding in the Office.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
§ 42.403 Time for filing.
A petition for a derivation proceeding must be filed within the one-year period beginning on the date of
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.400
the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the allegedly derived invention.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
§ 42.404 Derivation fee.
(a) A derivation fee set forth in § 42.15(c) must accompany the petition.
(b) No filing date will be accorded to the petition until payment is complete.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
§ 42.405 Content of petition.
(a) Grounds for standing. The petition must:
(1) Demonstrate compliance with §§ 42.402 and 42.403; and
(2) Show that the petitioner has at least one claim that is:
(i) The same or substantially the same as the respondent’s claimed invention; and
(ii) The same or substantially the same as the invention disclosed to the respondent.
(b) In addition to the requirements of §§ 42.8 and 42.22, the petition must:
(1) Provide sufficient information to identify the application or patent for which the petitioner seeks a derivation proceeding;
(2) Demonstrate that a claimed invention was derived from an inventor named in the petitioner’s application, and that the inventor from whom the invention was derived did not authorize the filing of the earliest application claiming such invention; and
(3) For each of the respondent’s claims to the derived invention,
(i) Show why the claimed invention is the same or substantially the same as the invention disclosed to the respondent, and
(ii) Identify how the claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function
limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.
(c) Sufficiency of showing. A derivation showing is not sufficient unless it is supported by substantial evidence, including at least one affidavit addressing communication of the derived invention and lack of authorization that, if unrebutted, would support a determination of derivation. The showing of communication must be corroborated.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
§ 42.406 Service of petition.
In addition to the requirements of § 42.6, the petitioner must serve the petition and exhibits relied upon in the petition as follows:
(a) The petition and supporting evidence must be served on the respondent at the correspondence address of record for the earlier application or subject patent. The petitioner may additionally serve the petition and supporting evidence on the respondent at any other address known to the petitioner as likely to effect service.
(b) Upon agreement of the parties, service may be made electronically. Service may be by Priority
Mail Express® or by means at least as fast and
reliable as Priority Mail Express®. Personal service is not required.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013; para. (b) revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014;]
§ 42.407 Filing date.
(a) Complete petition. A petition to institute a derivation proceeding will not be accorded a filing date until the petition satisfies all of the following requirements:
(1) Complies with §§ 42.404 and 42.405, and
(2) Service of the petition on the correspondence address of record as provided in § 42.406.
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§ 42.407PATENT RULES
(b) Incomplete petition. Where the petitioner files an incomplete petition, no filing date will be accorded, and the Office will dismiss the petition if the deficiency in the petition is not corrected within the earlier of either one month from notice of the incomplete petition, or the expiration of the statutory deadline in which to file a petition for derivation.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
INSTITUTING DERIVATION PROCEEDING
§ 42.408 Institution of derivation proceeding.
(a) An administrative patent judge institutes, and may as necessary reinstitute, the derivation proceeding on behalf of the Director.
(b) Additional derivation proceeding. The petitioner may suggest the addition of a patent or application to the derivation proceeding. The suggestion should make the showings required under § 42.405 and explain why the suggestion could not have been made in the original petition.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
AFTER INSTITUTION OF DERIVATION PROCEEDING
§ 42.409 Settlement agreements.
An agreement or understanding under 35 U.S.C. 135(e) is a settlement for the purposes of § 42.74.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
§ 42.410 Arbitration.
(a) Parties may resort to binding arbitration to determine any issue. The Office is not a party to the arbitration. The Board is not bound by, and may independently determine, any question of patentability.
(b) The Board will not set a time for, or otherwise modify the proceeding for, an arbitration unless:
(1) It is to be conducted according to Title 9 of the United States Code;
(2) The parties notify the Board in writing of their intention to arbitrate;
(3) The agreement to arbitrate:
(i) Is in writing;
(ii) Specifies the issues to be arbitrated;
(iii) Names the arbitrator, or provides a date not more than 30 days after the execution of the agreement for the selection of the arbitrator;
(iv) Provides that the arbitrator’s award shall be binding on the parties and that judgment thereon can be entered by the Board;
(v) Provides that a copy of the agreement is filed within 20 days after its execution; and
(vi) Provides that the arbitration is completed within the time the Board sets.
(c) The parties are solely responsible for the selection of the arbitrator and the conduct of the arbitration.
(d) The Board may determine issues the arbitration does not resolve.
(e) The Board will not consider the arbitration award unless it:
(1) Is binding on the parties;
(2) Is in writing;
(3) States in a clear and definite manner each issue arbitrated and the disposition of each issue; and
(4) Is filed within 20 days of the date of the award.
(f) Once the award is filed, the parties to the award may not take actions inconsistent with the award. If the award is dispositive of the contested subject matter for a party, the Board may enter judgment as to that party.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
§ 42.411 Common interests in the invention.
The Board may decline to institute, or if already instituted the Board may issue judgment in, a derivation proceeding between an application and
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.408
a patent or another application that are commonly owned.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
§ 42.412 Public availability of Board records.
(a) Publication.
(1) Generally. Any Board decision is available for public inspection without a party’s permission if rendered in a file open to the public pursuant to § 1.11 of this chapter or in an application that has been published in accordance with §§ 1.211 to 1.221 of this chapter. The Office may independently publish any Board decision that is available for public inspection.
(2) Determination of special circumstances. Any Board decision not publishable under paragraph (a)(1) of this section may be published or made available for public inspection if the Director believes that special circumstances warrant publication and a party does not petition within two months after being notified of the intention to make the decision public, objecting in writing on the ground that the decision discloses the objecting party’s trade secret or other confidential information and stating with specificity that such information is not otherwise publicly available.
(b) Record of proceeding.
(1) The record of a Board proceeding is available to the public, unless a patent application not otherwise available to the public is involved.
(2) Notwithstanding paragraph (b)(1) of this section, after a final Board decision in or judgment in a Board proceeding, the record of the Board proceeding will be made available to the public if any involved file is or becomes open to the public under § 1.11 of this chapter or an involved application is or becomes published under §§ 1.211 to 1.221 of this chapter.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
PART 90 — JUDICIAL REVIEW OF PATENT TRIAL AND APPEAL BOARD DECISIONS
Sec. 90.1 Scope.
90.2 Notice; service. 90.3 Time for appeal or civil action.
§ 90.1 Scope.
The provisions herein govern judicial review for Patent Trial and Appeal Board decisions under chapter 13 of title 35, United States Code. Judicial review of decisions arising out of inter partes reexamination proceedings that are requested under 35 U.S.C. 311, and where available, judicial review of decisions arising out of interferences declared pursuant to 35 U.S.C. 135 continue to be governed by the pertinent regulations in effect on July 1, 2012.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 90.2 Notice; service.
(a) For an appeal under 35 U.S.C. 141.
(1) In all appeals, the notice of appeal required by 35 U.S.C. 142 must be filed with the Director of the United States Patent and Trademark Office as provided in § 104.2 of this title. A copy of the notice of appeal must also be filed with the Patent Trial and Appeal Board in the appropriate manner provided in § 41.10(a), 41.10(b), or 42.6(b).
(2) In all appeals, the party initiating the appeal must comply with the requirements of the Federal Rules of Appellate Procedure and Rules for the United States Court of Appeals for the Federal Circuit, including:
(i) Serving the requisite number of copies on the Court; and
(ii) Paying the requisite fee for the appeal.
(3) Additional requirements.
(i) In appeals arising out of an ex parte reexamination proceeding ordered pursuant to § 1.525, notice of the appeal must be served as provided in § 1.550(f) of this title.
(ii) In appeals arising out of an inter partes review, a post-grant review, a covered business method patent review, or a derivation proceeding, notice of the appeal must provide sufficient information to allow the Director to determine whether to exercise the right to intervene
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in the appeal pursuant to 35 U.S.C. 143, and it must be served as provided in § 42.6(e) of this title.
(b) For a notice of election under 35 U.S.C. 141(d) to proceed under 35 U.S.C. 146.
(1) Pursuant to 35 U.S.C. 141(d), if an adverse party elects to have all further review proceedings conducted under 35 U.S.C. 146 instead of under 35 U.S.C. 141, that party must file a notice of election with the United States Patent and Trademark Office as provided in § 104.2.
(2) A copy of the notice of election must also be filed with the Patent Trial and Appeal Board in the manner provided in § 42.6(b).
(3) A copy of the notice of election must also be served where necessary pursuant to § 42.6(e).
(c) For a civil action under 35 U.S.C. 146. The party initiating an action under 35 U.S.C. 146 must file a copy of the complaint no later than five business days after filing the complaint in district court with the Patent Trial and Appeal Board in the manner provided in § 42.6(b), and the Office of the Solicitor pursuant to § 104.2. Failure to comply with this requirement can result in further action within the United States Patent and Trademark Office consistent with the final Board decision.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
§ 90.3 Time for appeal or civil action.
(a) Filing deadline.
(1) For an appeal under 35 U.S.C. 141. The notice of appeal filed pursuant to 35 U.S.C. 142 must be filed with the Director of the United States Patent and Trademark Office no later than sixty-three (63) days after the date of the final Board decision. Any notice of cross-appeal is controlled by Rule 4(a)(3) of the Federal Rules of Appellate Procedure, and any other requirement imposed by the Rules of the United States Court of Appeals for the Federal Circuit.
(2) For a notice of election under 35 U.S.C. 141(d). The time for filing a notice of election under 35 U.S.C. 141(d) is governed by 35 U.S.C. 141(d).
(3) For a civil action under 35 U.S.C. 145 or 146.
(i) A civil action must be commenced no later than sixty-three (63) days after the date of the final Board decision.
(ii) The time for commencing a civil action pursuant to a notice of election under 35 U.S.C. 141(d) is governed by 35 U.S.C. 141(d).
(b) Time computation.
(1) Rehearing. A timely request for rehearing will reset the time for appeal or civil action to no later than sixty-three (63) days after action on the request. Any subsequent request for rehearing from the same party in the same proceeding will not reset the time for seeking judicial review, unless the additional request is permitted by order of the Board.
(2) Holidays. If the last day for filing an appeal or civil action falls on a Federal holiday in the District of Columbia, the time is extended pursuant to 35 U.S.C. 21(b).
(c) Extension of time.
(1) The Director, or his designee, may extend the time for filing an appeal, or commencing a civil action, upon written request if:
(i) Requested before the expiration of the period for filing an appeal or commencing a civil action, and upon a showing of good cause; or
(ii) Requested after the expiration of the period for filing an appeal of commencing a civil action, and upon a showing that the failure to act was the result of excusable neglect.
(2) The request must be filed as provided in § 104.2 of this title.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012]
SUBCHAPTER B — ADMINISTRATION
PART 102 — DISCLOSURE OF GOVERNMENT INFORMATION
Freedom of Information Act
Sec. 102.1 General. 102.2 Public reference facilities. 102.3 Records under FOIA. 102.4 Requirements for making requests. 102.5 Responsibility for responding to requests. 102.6 Time limits and expedited processing.
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102.7 Responses to requests. 102.9 Business Information. 102.10 Appeals from initial determinations or
untimely delays. 102.11 Fees.
Privacy Act
102.21 Purpose and scope. 102.22 Definitions. 102.23 Procedures for making inquiries. 102.24 Procedures for making requests for records. 102.25 Disclosure of requested records to
individuals. 102.26 Special procedures: Medical records. 102.27 Procedures for making requests for
correction or amendment. 102.28 Review of requests for correction or
amendment. 102.29 Appeal of initial adverse determination on
correction or amendment. 102.30 Disclosure of record to person other than
the individual to whom it pertains. 102.31 Fees. 102.32 Penalties. 102.33 General exemptions. 102.34 Specific exemptions.
Subpart A — Freedom of Information Act
§ 102.1 General.
(a) The information in this part is furnished for the guidance of the public and in compliance with the requirements of the Freedom of Information Act (FOIA), as amended (5 U.S.C. 552). This part sets forth the procedures the United States Patent and Trademark Office (USPTO) follows to make publicly available the materials and indices specified in 5 U.S.C. 552(a)(2) and records requested under 5 U.S.C. 552(a)(3). Information routinely provided to the public as part of a regular USPTO activity (for example, press releases issued by the Office of Public Affairs) may be provided to the public without following this part. USPTO’s policy is to make discretionary disclosures of records or information exempt from disclosure under FOIA whenever disclosure would not foreseeably harm an interest protected by a FOIA exemption, but this policy does not create any right enforceable in court.
(b) As used in this subpart, FOIA Officer means the USPTO employee designated to administer FOIA for USPTO. To ensure prompt processing of a request, correspondence should be addressed to the FOIA Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, or delivered by hand to 10B20, Madison Building East, 600 Dulany Street, Alexandria, Virginia.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (b) revised, 70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005]
§ 102.2 Public reference facilities.
(a) USPTO maintains a public reference facility that contains the records FOIA requires to be made regularly available for public inspection and copying; furnishes information and otherwise assists the public concerning USPTO operations under FOIA; and receives and processes requests for records under FOIA. The FOIA Officer is responsible for determining which of USPTO’s records are required to be made available for public inspection and copying, and for making those records available in USPTO’s reference and records inspection facility. The FOIA Officer shall maintain and make available for public inspection and copying a current subject-matter index of USPTO’s public inspection facility records. Each index shall be updated regularly, at least quarterly, with respect to newly included records. In accordance with 5 U.S.C. 552(a)(2), USPTO has determined that it is unnecessary and impracticable to publish quarterly, or more frequently, and distribute copies of the index and supplements thereto. The public reference facility is located in the Public Search Room, Madison Building East, First Floor, 600 Dulany Street, Alexandria, Virginia.
(b) The FOIA Officer shall also make public inspection facility records created by USPTO on or after November 1, 1996, available electronically through USPTO’s World Wide Web site (http://www.uspto.gov). Information available at the site shall include:
(1) The FOIA Officer’s index of the public inspection facility records, which indicates which records are available electronically; and
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(2) The general index referred to in paragraph (c)(3) of this section.
(c) USPTO maintains and makes available for public inspection and copying:
(1) A current index providing identifying information for the public as to any matter that is issued, adopted, or promulgated after July 4, 1967, and that is retained as a record and is required to be made available or published. Copies of the index are available upon request after payment of the direct cost of duplication;
(2) Copies of records that have been released and that the FOIA Officer determines, because of their subject matter, have become or are likely to become the subject of subsequent requests for substantially the same records;
(3) A general index of the records described in paragraph (c)(2) of this section;
(4) Final opinions and orders, including concurring and dissenting opinions made in the adjudication of cases;
(5) Those statements of policy and interpretations that have been adopted by USPTO and are not published in the Federal Register ; and
(6) Administrative staff manuals and instructions to staff that affect a member of the public.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000; para. (a) revised, 75 FR 36294, June 25, 2010, effective June 25, 2010]
§ 102.3 Records under FOIA.
(a) Records under FOIA include all Government records, regardless of format, medium or physical characteristics, and include electronic records and information, audiotapes, videotapes, and photographs.
(b) There is no obligation to create, compile, or obtain from outside USPTO a record to satisfy a FOIA request. With regard to electronic data, the issue of whether records are created or merely extracted from an existing database is not always apparent. When responding to FOIA requests for electronic data where creation of a record or programming becomes an issue, USPTO shall undertake reasonable efforts to search for the information in electronic format.
(c) USPTO officials may, upon request, create and provide new information pursuant to user fee statutes, such as the first paragraph of 15 U.S.C. 1525, or in accordance with authority otherwise provided by law. This is outside the scope of FOIA.
(d) The FOIA Officer shall preserve all correspondence pertaining to the requests received under this subpart, as well as copies of all requested records, until disposition or destruction is authorized by Title 44 of the United States Code or a National Archives and Records Administration’s General Records Schedule. The FOIA Officer shall not dispose of records while they are the subject of a pending request, appeal, or lawsuit under FOIA.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.4 Requirements for making requests.
(a) A request for USPTO records that are not customarily made available to the public as part of USPTO’s regular informational services must be in writing, and shall be processed under FOIA, regardless of whether FOIA is mentioned in the request. Requests should be sent to the USPTO FOIA Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 (records FOIA requires to be made regularly available for public inspection and copying are addressed in § 102.2(c)). For the quickest handling, the request letter and envelope should be marked “Freedom of Information Act Request.” For requests for records about oneself, § 102.24 contains additional requirements. For requests for records about another individual, either a written authorization signed by that individual permitting disclosure of those records to the requester or proof that individual is deceased (for example, a copy of a death certificate or an obituary) facilitates processing the request.
(b) The records requested must be described in enough detail to enable USPTO personnel to locate them with a reasonable amount of effort. Whenever possible, a request should include specific information about each record sought, such as the date, title or name, author, recipient, and subject matter of the record, and the name and location of the office where the record is located. Also, if records about a court case are sought, the title of the case, the court in which the case was filed, and the
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nature of the case should be included. If known, any file designations or descriptions for the requested records should be included. In general, the more specifically the request describes the records sought, the greater the likelihood that USPTO will locate those records. If the FOIA Officer determines that a request does not reasonably describe records, the FOIA Officer will inform the requester what additional information is needed or why the request is otherwise insufficient. The FOIA Officer also may give the requester an opportunity to discuss the request so that it may be modified to meet the requirements of this section.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 102.5 Responsibility for responding to requests.
(a) In general. Except as stated in paragraph (b) of this section, the USPTO will process FOIA requests directed to USPTO. In determining records responsive to a request, the FOIA Officer shall include only those records within USPTO’s possession and control as of the date the FOIA Officer receives the request.
(b) Consultations and referrals. If the FOIA Officer receives a request for a record in USPTO’s possession in which another Federal agency subject to FOIA has the primary interest, the FOIA Officer shall refer the record to that agency for direct response to the requester. The FOIA Officer shall consult with another Federal agency before responding to a requester if the FOIA Officer receives a request for a record in which another Federal agency subject to FOIA has a significant interest, but not the primary interest; or another Federal agency not subject to FOIA has the primary interest or a significant interest. Ordinarily, the agency that originated a record will be presumed to have the primary interest in it.
(c) Notice of referral. Whenever a FOIA Officer refers a document to another Federal agency for direct response to the requester, the FOIA Officer will ordinarily notify the requester in writing of the referral and inform the requester of the name of the agency to which the document was referred.
(d) Timing of responses to consultations and referrals. All consultations and referrals shall be
handled according to the date the FOIA request was received by the first Federal agency.
(e) Agreements regarding consultations and referrals. The FOIA Officer may make agreements with other Federal agencies to eliminate the need for consultations or referrals for particular types of records.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.6 Time limits and expedited processing.
(a) In general. The FOIA Officer ordinarily shall respond to requests according to their order of receipt.
(b) Initial response and appeal. Subject to paragraph (c)(1) of this section, an initial response shall be made within 20 working days (i.e., excluding Saturdays, Sundays, and legal public holidays) of the receipt of a request for a record under this part by the proper FOIA Officer identified in accordance with § 102.5(a), and an appeal shall be decided within 20 working days of its receipt by the Office of the General Counsel.
(c) Unusual circumstances.
(1) In unusual circumstances as specified in paragraph (c)(2) of this section, the FOIA Officer may extend the time limits in paragraph (b) of this section by notifying the requester in writing as soon as practicable of the unusual circumstances and of the date by which processing of the request is expected to be completed. Extensions of time for the initial determination and extensions on appeal may not exceed a total of ten working days, unless the requester agrees to a longer extension, or the FOIA Officer provides the requester with an opportunity either to limit the scope of the request so that it may be processed within the applicable time limit, or to arrange an alternative time frame for processing the request or a modified request.
(2) As used in this section, unusual circumstances, means, but only to the extent reasonably necessary to properly process the particular request:
(i) The need to search for and collect the requested records from field facilities or other
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establishments separate from the office processing the request;
(ii) The need to search for, collect, and appropriately examine a voluminous amount of separate and distinct records that are the subject of a single request; or
(iii) The need for consultation, which shall be conducted with all practicable speed, with another Federal agency having a substantial interest in the determination of the request.
(3) Unusual circumstances do not include a delay that results from a predictable workload of requests, unless USPTO demonstrates reasonable progress in reducing its backlog of pending requests. Refusal to reasonably modify the scope of a request or arrange an alternate time frame may affect a requester’s ability to obtain judicial review.
(4) If the FOIA Officer reasonably believes that multiple requests submitted by a requester, or by a group of requesters acting in concert, constitute a single request that would otherwise involve unusual circumstances, and the requests involve clearly related matters, the FOIA Officer may aggregate them. Multiple requests involving unrelated matters will not be aggregated.
(d) Multitrack processing.
(1) The FOIA Officer may use two or more processing tracks by distinguishing between simple and more complex requests based on the number of pages involved, or some other measure of the amount of work and/or time needed to process the request, and whether the request qualifies for expedited processing as described in paragraph (e) of this section.
(2) The FOIA Officer may provide requesters in a slower track with an opportunity to limit the scope of their requests in order to qualify for faster processing. The FOIA Officer may contact the requester by telephone or by letter, whichever is most efficient in each case.
(e) Expedited processing.
(1) Requests and appeals shall be taken out of order and given expedited treatment whenever it is determined they involve:
(i) Circumstances in which the lack of expedited treatment could reasonably be expected
to pose an imminent threat to the life or physical safety of an individual;
(ii) The loss of substantial due process rights;
(iii) A matter of widespread and exceptional media interest in which there exist questions about the Government’s integrity that affect public confidence; or
(iv) An urgency to inform the public about an actual or alleged Federal Government activity, if made by a person primarily engaged in disseminating information.
(2) A request for expedited processing may be made at the time of the initial request for records or at any later time. For a prompt determination, a request for expedited processing should be sent to the FOIA Officer.
(3) A requester who seeks expedited processing must submit a statement, certified to be true and correct to the best of that person’s knowledge and belief, explaining in detail the basis for requesting expedited processing. For example, a requester within the category described in paragraph (e)(1)(iv) of this section, if not a full-time member of the news media, must establish that he or she is a person whose main professional activity or occupation is information dissemination, though it need not be his or her sole occupation. A requester within the category described in paragraph (e)(1)(iv) of this section must also establish a particular urgency to inform the public about the Government activity involved in the request, beyond the public’s right to know about Government activity generally. The formality of certification may be waived as a matter of administrative discretion.
(4) Within ten calendar days of receipt of a request for expedited processing, the FOIA Officer will decide whether to grant it and shall notify the requester of the decision. If a request for expedited treatment is granted, the request shall be given priority and processed as soon as practicable. If a request for expedited processing is denied, any appeal of that decision shall be acted on expeditiously.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.6
§ 102.7 Responses to requests.
(a) Grants of requests. If the FOIA Officer makes a determination to grant a request in whole or in part, the FOIA Officer will notify the requester in writing. The FOIA Officer will inform the requester in the notice of any fee charged under § 102.11 and disclose records to the requester promptly upon payment of any applicable fee. Records disclosed in part shall be marked or annotated to show each applicable FOIA exemption and the amount of information deleted, unless doing so would harm an interest protected by an applicable exemption. The location of the information deleted shall also be indicated on the record, if feasible.
(b) Adverse determinations of requests. If the FOIA Officer makes an adverse determination regarding a request, the FOIA Officer will notify the requester of that determination in writing. An adverse determination is a denial of a request in any respect, namely: A determination to withhold any requested record in whole or in part; a determination that a requested record does not exist or cannot be located; a determination that a record is not readily reproducible in the form or format sought by the requester; a determination that what has been requested is not a record subject to FOIA (except that a determination under § 102.11(j) that records are to be made available under a fee statute other than FOIA is not an adverse determination); a determination against the requester on any disputed fee matter, including a denial of a request for a fee waiver; or a denial of a request for expedited treatment. Each denial letter shall be signed by the FOIA Officer and shall include:
(1) The name and title or position of the denying official;
(2) A brief statement of the reason(s) for the denial, including applicable FOIA exemption(s);
(3) An estimate of the volume of records or information withheld, in number of pages or some other reasonable form of estimation. This estimate need not be provided if the volume is otherwise indicated through deletions on records disclosed in part, or if providing an estimate would harm an interest protected by an applicable FOIA exemption; and
(4) A statement that the denial may be appealed, and a list of the requirements for filing an appeal under § 102.10(b).
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.9 Business Information.
(a) In general. Business information obtained by USPTO from a submitter will be disclosed under FOIA only under this section.
(b) Definitions. For the purposes of this section:
(1) Business information means commercial or financial information, obtained by USPTO from a submitter, which may be protected from disclosure under FOIA exemption 4 (5 U.S.C. 552(b)(4)).
(2) Submitter means any person or entity outside the Federal Government from whom USPTO obtains business information, directly or indirectly. The term includes corporations; state, local and tribal governments; and foreign governments.
(c) Designation of business information. A submitter of business information should designate by appropriate markings, either at the time of submission or at a reasonable time thereafter, any portions of its submission that it considers to be protected from disclosure under FOIA exemption 4. These designations will expire ten years after the date of the submission unless the submitter requests, and provides justification for, a longer designation period.
(d) Notice to submitters. The FOIA Officer shall provide a submitter with prompt written notice of a FOIA request or administrative appeal that seeks its business information whenever required under paragraph (e) of this section, except as provided in paragraph (h) of this section, in order to give the submitter an opportunity under paragraph (f) of this section to object to disclosure of any specified portion of that information. Such written notice shall be sent via certified mail, return receipt requested, or similar means. The notice shall either describe the business information requested or include copies of the requested records containing the information. When notification of a large number of submitters is required, notification may be made by posting or publishing the notice in a place reasonably likely to accomplish notification.
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(e) When notice is required. Notice shall be given to the submitter whenever:
(1) The information has been designated in good faith by the submitter as protected from disclosure under FOIA exemption 4; or
(2) The FOIA Officer has reason to believe that the information may be protected from disclosure under FOIA exemption 4.
(f) Opportunity to object to disclosure. The FOIA Officer shall allow a submitter seven working days ( i.e., excluding Saturdays, Sundays, and legal public holidays) from the date of receipt of the written notice described in paragraph (d) of this section to provide the FOIA Officer with a detailed statement of any objection to disclosure. The statement must specify all grounds for withholding any portion of the information under any exemption of FOIA and, in the case of exemption 4, it must show why the information is a trade secret or commercial or financial information that is privileged or confidential. If a submitter fails to respond to the notice within the time specified, the submitter will be considered to have no objection to disclosure of the information. Information a submitter provides under this paragraph may itself be subject to disclosure under FOIA.
(g) Notice of intent to disclose. The FOIA Officer shall consider a submitter’s objections and specific grounds under FOIA for nondisclosure in deciding whether to disclose business information. If the FOIA Officer decides to disclose business information over the objection of a submitter, the FOIA Officer shall give the submitter written notice via certified mail, return receipt requested, or similar means, which shall include:
(1) A statement of reason(s) why the submitter’s objections to disclosure were not sustained;
(2) A description of the business information to be disclosed; and
(3) A statement that the FOIA Officer intends to disclose the information seven working days from the date the submitter receives the notice.
(h) Exceptions to notice requirements. The notice requirements of paragraphs (d) and (g) of this section shall not apply if:
(1) The FOIA Officer determines that the information should not be disclosed;
(2) The information has been lawfully published or has been officially made available to the public;
(3) Disclosure of the information is required by statute (other than FOIA) or by a regulation issued in accordance with Executive Order 12600; or
(4) The designation made by the submitter under paragraph (c) of this section appears obviously frivolous, in which case the FOIA Officer shall provide the submitter written notice of any final decision to disclose the information seven working days from the date the submitter receives the notice.
(i) Notice of FOIA lawsuit. Whenever a requester files a lawsuit seeking to compel the disclosure of business information, the FOIA Officer shall promptly notify the submitter.
(j) Corresponding notice to requesters. Whenever a FOIA Officer provides a submitter with notice and an opportunity to object to disclosure under paragraph (d) of this section, the FOIA Officer shall also notify the requester(s). Whenever a submitter files a lawsuit seeking to prevent the disclosure of business information, the FOIA Officer shall notify the requester(s).
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.10 Appeals from initial determinations or untimely delays.
(a) If a request for records is initially denied in whole or in part, or has not been timely determined, or if a requester receives an adverse initial determination regarding any other matter under this subpart (as described in § 102.7(b)), the requester may file a written appeal, which must be received by the Office of General Counsel within thirty calendar days of the date of the written denial or, if there has been no determination, may be submitted anytime after the due date, including the last extension under § 102.6(c), of the determination.
(b) Appeals shall be decided by a Deputy General Counsel. Appeals should be addressed to the General Counsel, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450. Both the letter and the appeal envelope should be clearly marked “Freedom of Information Appeal”. The appeal must include a
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copy of the original request and the initial denial, if any, and may include a statement of the reasons why the records requested should be made available and why the initial denial, if any, was in error. No opportunity for personal appearance, oral argument or hearing on appeal is provided.
(c) If an appeal is granted, the person making the appeal shall be immediately notified and copies of the releasable documents shall be made available promptly thereafter upon receipt of appropriate fees determined in accordance with § 102.11.
(d) If no determination of an appeal has been sent to the requester within the twenty-working-day period specified in § 102.6(b) or the last extension thereof, the requester is deemed to have exhausted his administrative remedies with respect to the request, giving rise to a right of judicial review under 5 U.S.C. 552(a)(6)(C). If the person making a request initiates a civil action against USPTO based on the provision in this paragraph, the administrative appeal process may continue.
(e) A determination on appeal shall be in writing and, when it denies records in whole or in part, the letter to the requester shall include:
(1) A brief explanation of the basis for the denial, including a list of applicable FOIA exemptions and a description of how the exemptions apply;
(2) A statement that the decision is final;
(3) Notification that judicial review of the denial is available in the United States district court for the district in which the requester resides or has its principal place of business, the United States District Court for the Eastern District of Virginia, or the District of Columbia; and
(4) The name and title or position of the official responsible for denying the appeal.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 102.11 Fees.
(a) In general. USPTO shall charge for processing requests under FOIA in accordance with paragraph (c) of this section, except when fees are limited under paragraph (d) of this section or when a waiver or reduction of fees is granted under
paragraph (k) of this section. USPTO shall collect all applicable fees before sending copies of requested records to a requester. Requesters must pay fees by check or money order made payable to the Treasury of the United States.
(b) Definitions. For purposes of this section:
(1) Commercial use request means a request from or on behalf of a person who seeks information for a use or purpose that furthers his or her commercial, trade, or profit interests, which can include furthering those interests through litigation. The FOIA Officer shall determine, whenever reasonably possible, the use to which a requester will put the requested records. When it appears that the requester will put the records to a commercial use, either because of the nature of the request itself or because the FOIA Officer has reasonable cause to doubt a requester’s stated use, the FOIA Officer shall provide the requester a reasonable opportunity to submit further clarification.
(2) Direct costs means those expenses USPTO incurs in searching for and duplicating (and, in the case of commercial use requests, reviewing) records to respond to a FOIA request. Direct costs include, for example, the labor costs of the employee performing the work (the basic rate of pay for the employee, plus 16 percent of that rate to cover benefits). Not included in direct costs are overhead expenses such as the costs of space and heating or lighting of the facility in which the records are kept.
(3) Duplication means the making of a copy of a record, or of the information contained in it, necessary to respond to a FOIA request. Copies may take the form of paper, microform, audiovisual materials, or electronic records (for example, magnetic tape or disk), among others. The FOIA Officer shall honor a requester’s specified preference of form or format of disclosure if the record is readily reproducible with reasonable efforts in the requested form or format.
(4) Educational institution means a preschool, a public or private elementary or secondary school, an institution of undergraduate higher education, an institution of graduate higher education, an institution of professional education, or an institution of vocational education, that operates a program of scholarly research. To be in this category, a requester must show that the request is authorized by and is made under the auspices of
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a qualifying institution, and that the records are sought to further scholarly research rather than for a commercial use.
(5) Noncommercial scientific institution means an institution that is not operated on a “commercial” basis, as that term is defined in paragraph (b)(1) of this section, and that is operated solely for the purpose of conducting scientific research, the results of which are not intended to promote any particular product or industry. To be in this category, a requester must show that the request is authorized by and is made under the auspices of a qualifying institution and that the records are sought to further scientific research rather than for a commercial use.
(6) Representative of the news media, or news media requester means any person actively gathering news for an entity that is organized and operated to publish or broadcast news to the public. The term “news” means information that is about current events or that would be of current interest to the public. Examples of news media entities include television or radio stations broadcasting to the public at large and publishers of periodicals (but only if they can qualify as disseminators of “news”) that make their products available for purchase or subscription by the general public. For “freelance” journalists to be regarded as working for a news organization, they must demonstrate a solid basis for expecting publication through that organization. A publication contract would be the clearest proof, but the FOIA Officer shall also look to the past publication record of a requester in making this determination. To be in this category, a requester must not be seeking the requested records for a commercial use. However, a request for records supporting the news-dissemination function of the requester shall not be considered to be for a commercial use.
(7) Review means the examination of a record located in response to a request in order to determine whether any portion of it is exempt from disclosure. It also includes processing any record for disclosure—for example, doing all that is necessary to redact it and prepare it for disclosure. Review costs are recoverable even if a record ultimately is not disclosed. Review time does not include time spent resolving general legal or policy issues regarding the application of exemptions.
(8) Search means the process of looking for and retrieving records or information responsive to a request. It includes page-by-page or line-by-line identification of information within records and also includes reasonable efforts to locate and retrieve information from records maintained in electronic form or format. The FOIA Officer shall ensure that searches are done in the most efficient and least expensive manner reasonably possible.
(c) Fees. In responding to FOIA requests, the FOIA Officer shall charge the fees summarized in chart form in paragraphs (c)(1) and (c)(2) of this section and explained in paragraphs (c)(3) through (c)(5) of this section, unless a waiver or reduction of fees has been granted under paragraph (k) of this section.
(1) The four categories and chargeable fees are:
Chargeable feesCategory Search, Review, and Duplication.
(i) Commercial Use Requesters
Duplication (excluding the cost of the first 100 pages).
(ii) Educational and Non-commercial Scientific Institution Requesters
Duplication (excluding the cost of the first 100 pages).
(iii) Representatives of the News Media
Search and Duplication (excluding the cost of the
(iv) All Other Requesters
first 2 hours of search and 100 pages).
(2) Uniform fee schedule.
RateService Actual salary rate of employee involved, plus 16 percent of salary rate.
(i) Manual search
Actual direct cost, including operator time.
(ii) Computerized search
$.15 per page Actual direct cost, including operator time
(iii) Duplication of records: (A) Paper copy reproduction (B) Other reproduction ( e.g., computer disk or printout, microfilm, microfiche, or microform)
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RateService Actual salary rate of employee conducting
(iv) Review of records (includes preparation for release, i.e. excising) review, plus 16 percent of
salary rate.
(3) Search.
(i) Search fees shall be charged for all requests—other than requests made by educational institutions, noncommercial scientific institutions, or representatives of the news media—subject to the limitations of paragraph (d) of this section. The FOIA Officer will charge for time spent searching even if no responsive records are located or if located records are entirely exempt from disclosure. Search fees shall be the direct costs of conducting the search by the involved employees
(ii) For computer searches of records, requesters will be charged the direct costs of conducting the search, although certain requesters (as provided in paragraph (d)(1) of this section) will be charged no search fee and certain other requesters (as provided in paragraph (d)(3) of this section) are entitled to the cost equivalent of two hours of manual search time without charge. These direct costs include the costs, attributable to the search, of operating a central processing unit and operator/programmer salary.
(4) Duplication. Duplication fees will be charged to all requesters, subject to the limitations of paragraph (d) of this section. For a paper photocopy of a record (no more than one copy of which need be supplied), the fee shall be $.15 cents per page. For copies produced by computer, such as tapes or printouts, the FOIA Officer shall charge the direct costs, including operator time, of producing the copy. For other forms of duplication, the FOIA Officer will charge the direct costs of that duplication.
(5) Review. Review fees shall be charged to requesters who make a commercial use request. Review fees shall be charged only for the initial record review—the review done when the FOIA Officer determines whether an exemption applies to a particular record at the initial request level. No charge will be made for review at the administrative appeal level for an exemption already applied. However, records withheld under an exemption that is subsequently determined not to apply may be
reviewed again to determine whether any other exemption not previously considered applies, and the costs of that review are chargeable. Review fees shall be the direct costs of conducting the review by the involved employees.
(d) Limitations on charging fees.
(1) No search fee will be charged for requests by educational institutions, noncommercial scientific institutions, or representatives of the news media.
(2) No search fee or review fee will be charged for a quarter-hour period unless more than half of that period is required for search or review.
(3) Except for requesters seeking records for a commercial use, the FOIA Officer will provide without charge:
(i) The first 100 pages of duplication (or the cost equivalent); and
(ii) The first two hours of search (or the cost equivalent).
(4) Whenever a total fee calculated under paragraph (c) of this section is $20.00 or less for any request, no fee will be charged.
(5) The provisions of paragraphs (d) (3) and (4) of this section work together. This means that for requesters other than those seeking records for a commercial use, no fee will be charged unless the cost of the search in excess of two hours plus the cost of duplication in excess of 100 pages totals more than $20.00.
(e) Notice of anticipated fees over $20.00. When the FOIA Officer determines or estimates that the fees to be charged under this section will be more than $20.00, the FOIA Officer shall notify the requester of the actual or estimated fees, unless the requester has indicated a willingness to pay fees as high as those anticipated. If only a portion of the fee can be estimated readily, the FOIA Officer shall advise the requester that the estimated fee may be only a portion of the total fee. If the FOIA Officer has notified a requester that actual or estimated fees are more than $20.00, the FOIA Officer shall not consider the request received or process it further until the requester agrees to pay the anticipated total fee. Any such agreement should be in writing. A notice under this paragraph shall offer the requester an opportunity to discuss the matter with USPTO
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personnel in order to reformulate the request to meet the requester’s needs at a lower cost.
(f) Charges for other services. Apart from the other provisions of this section, the FOIA Officer shall ordinarily charge the direct cost of special services. Such special services could include certifying that records are true copies or sending records by other than ordinary mail.
(g) Charging interest. The FOIA Officer shall charge interest on any unpaid bill starting on the 31st calendar day following the date of billing the requester. Interest charges shall be assessed at the rate provided in 31 U.S.C. 3717 and accrue from the date of the billing until payment is received by the FOIA Officer. The FOIA Officer shall follow the provisions of the Debt Collection Improvement Act of 1996 (Pub. L. 104-134), as amended, and its administrative procedures, including the use of consumer reporting agencies, collection agencies, and offset.
(h) Aggregating requests. If a FOIA Officer reasonably believes that a requester or a group of requesters acting together is attempting to divide a request into a series of requests for the purpose of avoiding fees, the FOIA Officer may aggregate those requests and charge accordingly. The FOIA Officer may presume that multiple requests of this type made within a 30-calendar-day period have been made in order to avoid fees. If requests are separated by a longer period, the FOIA Officer shall aggregate them only if a solid basis exists for determining that aggregation is warranted under all the circumstances involved. Multiple requests involving unrelated matters shall not be aggregated.
(i) Advance payments.
(1) For requests other than those described in paragraphs (i)(2) and (3) of this section, the FOIA Officer shall not require the requester to make an advance payment: a payment made before work is begun or continued on a request. Payment owed for work already completed ( i.e., a payment before copies are sent to a requester) is not an advance payment.
(2) If the FOIA Officer determines or estimates that a total fee to be charged under this section will be more than $250.00, the requester must pay the entire anticipated fee before beginning to process the request, unless the FOIA Officer receives a satisfactory assurance of full payment
from a requester who has a history of prompt payment.
(3) If a requester has previously failed to pay a properly charged FOIA fee to USPTO or another responsible Federal agency within 30 calendar days of the date of billing, the FOIA Officer shall require the requester to pay the full amount due, plus any applicable interest, and to make an advance payment of the full amount of any anticipated fee, before the FOIA Officer begins to process a new request or continues to process a pending request from that requester.
(4) In cases in which the FOIA Officer requires payment under paragraphs (i)(2) or (3) of this section, the request shall not be considered received and further work will not be done on it until the required payment is received.
(5) Upon the completion of processing of a request, when a specific fee is determined to be payable and appropriate notice has been given to the requester, the FOIA Officer shall make records available to the requester only upon receipt of full payment of the fee.
(j) Other statutes specifically providing for fees. The fee schedule of this section does not apply to fees charged under any statute (except for FOIA) that specifically requires USPTO or another responsible Federal agency to set and collect fees for particular types of records. If records responsive to requests are maintained for distribution by agencies operating such statutorily based fee schedule programs, the FOIA Officer shall inform requesters of how to obtain records from those sources.
(k) Requirements for waiver or reduction of fees.
(1) Records responsive to a request will be furnished without charge or at a charge reduced below that established under paragraph (c) of this section if the FOIA Officer determines, based on all available information, that the requester has demonstrated that:
(i) Disclosure of the requested information is in the public interest because it is likely to contribute significantly to public understanding of the operations or activities of the Government; and
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(ii) Disclosure of the information is not primarily in the commercial interest of the requester.
(2) To determine whether the first fee waiver requirement is met, the FOIA Officer shall consider the following factors:
(i) The subject of the request: whether the subject of the requested records concerns the operations or activities of the Government. The subject of the requested records must concern identifiable operations or activities of the Federal Government, with a connection that is direct and clear, not remote or attenuated.
(ii) The informative value of the information to be disclosed: whether the disclosure is “likely to contribute” to an understanding of Government operations or activities. The disclosable portions of the requested records must be meaningfully informative about Government operations or activities in order to be “likely to contribute” to an increased public understanding of those operations or activities. The disclosure of information that already is in the public domain, in either a duplicative or a substantially identical form, would not be likely to contribute to such understanding.
(iii) The contribution to an understanding of the subject by the public likely to result from disclosure: whether disclosure of the requested information will contribute to the understanding of a reasonably broad audience of persons interested in the subject, as opposed to the individual understanding of the requester. A requester’s expertise in the subject area and ability and intention to effectively convey information to the public shall be considered. It shall be presumed that a representative of the news media satisfies this consideration. It shall be presumed that a requester who merely provides information to media sources does not satisfy this consideration.
(iv) The significance of the contribution to public understanding: whether the disclosure is likely to contribute “significantly” to public understanding of Government operations or activities. The public’s understanding of the subject in question prior to the disclosure must be significantly enhanced by the disclosure.
(3) To determine whether the second fee waiver requirement is met, the FOIA Officer shall consider the following factors:
(i) The existence and magnitude of a commercial interest: whether the requester has a commercial interest that would be furthered by the requested disclosure. The FOIA Officer shall consider any commercial interest of the requester (with reference to the definition of “commercial use request” in paragraph (b)(1) of this section), or of any person on whose behalf the requester may be acting, that would be furthered by the requested disclosure. Requesters shall be given an opportunity to provide explanatory information regarding this consideration.
(ii) The primary interest in disclosure: whether any identified commercial interest of the requester is sufficiently large, in comparison with the public interest in disclosure, that disclosure is “primarily in the commercial interest of the requester.” A fee waiver or reduction is justified if the public interest standard (paragraph (k)(1)(i) of this section) is satisfied and the public interest is greater than any identified commercial interest in disclosure. The FOIA Officer ordinarily shall presume that if a news media requester has satisfied the public interest standard, the public interest is the primary interest served by disclosure to that requester. Disclosure to data brokers or others who merely compile and market Government information for direct economic return shall not be presumed to primarily serve the public interest.
(4) If only some of the records to be released satisfy the requirements for a fee waiver, a waiver shall be granted for those records.
(5) Requests for the waiver or reduction of fees should address the factors listed in paragraphs (k)(2) and (3) of this section, insofar as they apply to each request.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
Subpart B — Privacy Act
§ 102.21 Purpose and scope.
(a) The purpose of this subpart is to establish policies and procedures for implementing the Privacy Act of 1974, as amended (5 U.S.C. 552a) (the Act). The main objectives are to facilitate full exercise of rights conferred on individuals under the Act and to ensure the protection of privacy as
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to individuals on whom USPTO maintains records in systems of records under the Act. USPTO accepts the responsibility to act promptly and in accordance with the Act upon receipt of any inquiry, request or appeal from a citizen of the United States or an alien lawfully admitted for permanent residence into the United States, regardless of the age of the individual. Further, USPTO accepts the obligations to maintain only such information on individuals as is relevant and necessary to the performance of its lawful functions, to maintain that information with such accuracy, relevancy, timeliness, and completeness as is reasonably necessary to assure fairness in determinations made by USPTO about the individual, to obtain information from the individual to the extent practicable, and to take every reasonable step to protect that information from unwarranted disclosure. USPTO will maintain no record describing how an individual exercises rights guaranteed by the FirstAmendment unless expressly authorized by statute or by the individual about whom the record is maintained or unless pertinent to and within the scope of an authorized law enforcement activity. An individual’s name and address will not be sold or rented by USPTO unless such action is specifically authorized by law; however, this provision shall not be construed to require the withholding of names and addresses otherwise permitted to be made public.
(b) This subpart is administered by the Privacy Officer of USPTO.
(c) Matters outside the scope of this subpart include the following:
(1) Requests for records which do not pertain to the individual making the request, or to the individual about whom the request is made if the requester is the parent or guardian of the individual;
(2) Requests involving information pertaining to an individual which is in a record or file but not within the scope of a system of records notice published in the Federal Register;
(3) Requests to correct a record where a grievance procedure is available to the individual either by regulation or by provision in a collective bargaining agreement with USPTO, and the individual has initiated, or has expressed in writing the intention of initiating, such grievance procedure. An individual selecting the grievance procedure
waives the use of the procedures in this subpart to correct or amend a record; and,
(4) Requests for employee-employer services and counseling which were routinely granted prior to enactment of the Act, including, but not limited to, test calculations of retirement benefits, explanations of health and life insurance programs, and explanations of tax withholding options.
(d) Any request for records which pertains to the individual making the request, or to the individual about whom the request is made if the requester is the parent or guardian of the individual, shall be processed under the Act and this subpart and under the Freedom of Information Act and USPTO’s implementing regulations at Subpart A of this part, regardless whether the Act or the Freedom of Information Act is mentioned in the request.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.22 Definitions.
(a) All terms used in this subpart which are defined in 5 U.S.C. 552a shall have the same meaning herein.
(b) As used in this subpart:
(1) Act means the “Privacy Act of 1974, as amended (5 U.S.C. 552a)”.
(2) Appeal means a request by an individual to review and reverse an initial denial of a request by that individual for correction or amendment.
(3) USPTO means the United States Patent and Trademark Office.
(4) Inquiry means either a request for general information regarding the Act and this subpart or a request by an individual (or that individual’s parent or guardian) that USPTO determine whether it has any record in a system of records which pertains to that individual.
(5) Person means any human being and also shall include but not be limited to, corporations, associations, partnerships, trustees, receivers, personal representatives, and public or private organizations.
(6) Privacy Officer means a USPTO employee designated to administer this subpart.
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(7) Request for access means a request by an individual or an individual’s parent or guardian to see a record which is in a particular system of records and which pertains to that individual.
(8) Request for correction or amendment means the request by an individual or an individual’s parent or guardian that USPTO change (either by correction, amendment, addition or deletion) a particular record in a system of records which pertains to that individual.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.23 Procedures for making inquiries.
(a) Any individual, regardless of age, who is a citizen of the United States or an alien lawfully admitted for permanent residence into the United States may submit an inquiry to USPTO. The inquiry should be made either in person at 10B20, Madison Building East, 600 Dulany Street, Alexandria, Virginia, or by mail addressed to the Privacy Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, or to the official identified in the notification procedures paragraph of the systems of records notice published in the Federal Register. If an individual believes USPTO maintains a record pertaining to that individual but does not know which system of records might contain such a record, the USPTO Privacy Officer will provide assistance in person or by mail.
(b) Inquiries submitted by mail should include the words “PRIVACY ACT INQUIRY” in capital letters at the top of the letter and on the face of the envelope. If the inquiry is for general information regarding the Act and this subpart, no particular information is required. USPTO reserves the right to require compliance with the identification procedures appearing at § 102.24(d) where circumstances warrant. If the inquiry is a request that USPTO determine whether it has, in a given system of records, a record which pertains to the individual, the following information should be submitted:
(1) Name of individual whose record is sought;
(2) Individual whose record is sought is either a U.S. citizen or an alien lawfully admitted for permanent residence;
(3) Identifying data that will help locate the record (for example, maiden name, occupational license number, period or place of employment, etc.);
(4) Record sought, by description and by record system name, if known;
(5) Action requested (that is, sending information on how to exercise rights under the Act; determining whether requested record exists; gaining access to requested record; or obtaining copy of requested record);
(6) Copy of court guardianship order or minor’s birth certificate, as provided in § 102.24(f)(3), but only if requester is guardian or parent of individual whose record is sought;
(7) Requester’s name (printed), signature, address, and telephone number (optionan( �
(8) Date; and,
(9) Certification of request by notary or other official, but only if
(i) Request is for notification that requested record exists, for access to requested record or for copy of requested record;
(ii) Record is not available to any person under 5 U.S.C. 552; and
(iii) Requester does not appear before an employee of USPTO for verification of identity.
(c) Any inquiry which is not addressed as specified in paragraph (a) of this section or which is not marked as specified in paragraph (b) of this section will be so addressed and marked by USPTO personnel and forwarded immediately to the Privacy Officer. An inquiry which is not properly addressed by the individual will not be deemed to have been “received” for purposes of measuring the time period for response until actual receipt by the Privacy Officer. In each instance when an inquiry so forwarded is received, the Privacy Officer shall notify the individual that his or her inquiry was improperly addressed and the date the inquiry was received at the proper address.
(d)(1) Each inquiry received shall be acted upon promptly by the Privacy Officer. Every effort
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§ 102.23PATENT RULES
will be made to respond within ten working days ( i.e., excluding Saturdays, Sundays and legal public holidays) of the date of receipt. If a response cannot be made within ten working days, the Privacy Officer shall send an acknowledgment during that period providing information on the status of the inquiry and asking for such further information as may be necessary to process the inquiry. The first correspondence sent by the Privacy Officer to the requester shall contain USPTO’s control number assigned to the request, as well as a note that the requester should use that number in all future contacts in order to facilitate processing. USPTO shall use that control number in all subsequent correspondence.
(2) If the Privacy Officer fails to send an acknowledgment within ten working days, as provided above, the requester may ask the General Counsel to take corrective action. No failure of the Privacy Officer to send an acknowledgment shall confer administrative finality for purposes of judicial review.
(e) An individual shall not be required to state a reason or otherwise justify his or her inquiry.
(f) Special note should be taken of the fact that certain agencies are responsible for publishing notices of systems of records having Government-wide application to other agencies, including USPTO. The agencies known to be publishing these general notices and the types of records covered therein appear in an appendix to this part. The provisions of this section, and particularly paragraph (a) of this section, should be followed in making inquiries with respect to such records. Such records in USPTO are subject to the provisions of this part to the extent indicated in the appendix to this part. The exemptions, if any, determined by an agency publishing a general notice shall be invoked and applied by USPTO after consultation, as necessary, with that other agency.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005]
§ 102.24 Procedures for making requests for records.
(a) Any individual, regardless of age, who is a citizen of the United States or an alien lawfully
admitted for permanent residence into the United States may submit a request for access to records to USPTO. The request should be made either in person at 10B20, Madison Building East, 600 Dulany Street, Alexandria, Virginia, or by mail addressed to the Privacy Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(b) Requests submitted by mail should include the words “PRIVACY ACT REQUEST” in capital letters at the top of the letter and on the face of the envelope. Any request which is not addressed as specified in paragraph (a) of this section or which is not marked as specified in this paragraph will be so addressed and marked by USPTO personnel and forwarded immediately to the Privacy Officer. A request which is not properly addressed by the individual will not be deemed to have been “received” for purposes of measuring time periods for response until actual receipt by the Privacy Officer. In each instance when a request so forwarded is received, the Privacy Officer shall notify the individual that his or her request was improperly addressed and the date when the request was received at the proper address.
(c) If the request follows an inquiry under § 102.23 in connection with which the individual’s identity was established by USPTO, the individual need only indicate the record to which access is sought, provide the USPTO control number assigned to the request, and sign and date the request. If the request is not preceded by an inquiry under § 102.23, the procedures of this section should be followed.
(d) The requirements for identification of individuals seeking access to records are as follows:
(1) In person. Each individual making a request in person shall be required to present satisfactory proof of identity. The means of proof, in the order of preference and priority, are:
(i) A document bearing the individual’s photograph (for example, driver’s license, passport or military or civilian identification card);
(ii) A document, preferably issued for participation in a federally sponsored program, bearing the individual’s signature (for example, unemployment insurance book, employer’s identification card, national credit card, and professional, craft or union membership card); and
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(iii) A document bearing neither the photograph nor the signature of the individual, preferably issued for participation in a federally sponsored program (for example, Medicaid card). In the event the individual can provide no suitable documentation of identity, USPTO will require a signed statement asserting the individual’s identity and stipulating that the individual understands the penalty provision of 5 U.S.C. 552a(i)(3) recited in § 102.32(a). In order to avoid any unwarranted disclosure of an individual’s records, USPTO reserves the right to determine the adequacy of proof of identity offered by any individual, particularly when the request involves a sensitive record.
(2) Not in person. If the individual making a request does not appear in person before the Privacy Officer or other employee authorized to determine identity, a certification of a notary public or equivalent officer empowered to administer oaths must accompany the request under the circumstances prescribed in § 102.23(b)(9). The certification in or attached to the letter must be substantially in accordance with the following text:
City of _________________
County of ____________________:ss
(Name of individual), who affixed (his) (her) signature below in my presence, came before me, a (title), in and for the aforesaid County and State, this _______ day of _________________, 20__, and established (his) (her) identity to my satisfaction.
My commission expires _________________.
(Signature)
(3) Parents of minors and legal guardians. An individual acting as the parent of a minor or the legal guardian of the individual to whom a record pertains shall establish his or her personal identity in the same manner prescribed in either paragraph (d)(1) or (d)(2) of this section. In addition, such other individual shall establish his or her identity in the representative capacity of parent or legal guardian. In the case of the parent of a minor, the proof of identity shall be a certified or authenticated copy of the minor’s birth certificate. In the case of a legal guardian of an individual who has been declared incompetent due to physical or mental incapacity or age by a court of competent
jurisdiction, the proof of identity shall be a certified or authenticated copy of the court’s order. For purposes of the Act, a parent or legal guardian may represent only a living individual, not a decedent. A parent or legal guardian may be accompanied during personal access to a record by another individual, provided the provisions of § 102.25(f) are satisfied.
(e) When the provisions of this subpart are alleged to impede an individual in exercising his or her right to access, USPTO will consider, from an individual making a request, alternative suggestions regarding proof of identity and access to records.
(f) An individual shall not be required to state a reason or otherwise justify his or her request for access to a record.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005]
§ 102.25 Disclosure of requested records to individuals.
(a)(1) The Privacy Officer shall act promptly upon each request. Every effort will be made to respond within ten working days ( i.e., excluding Saturdays, Sundays, and legal public holidays) of the date of receipt. If a response cannot be made within ten working days due to unusual circumstances, the Privacy Officer shall send an acknowledgment during that period providing information on the status of the request and asking for any further information that may be necessary to process the request. “Unusual circumstances” shall include circumstances in which
(i) A search for and collection of requested records from inactive storage, field facilities or other establishments is required;
(ii) A voluminous amount of data is involved;
(iii) Information on other individuals must be separated or expunged from the particular record; or
(iv) Consultations with other agencies having a substantial interest in the determination of the request are necessary.
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(2) If the Privacy Officer fails to send an acknowledgment within ten working days, as provided above in paragraph (a) of this section, the requester may ask the General Counsel to take corrective action. No failure of the Privacy Officer to send an acknowledgment shall confer administrative finality for purposes of judicial review.
(b) Grant of access—
(1) Notification. An individual shall be granted access to a record pertaining to him or her, except where the provisions of paragraph (g)(1) of this section apply. The Privacy Officer will notify the individual of a determination to grant access, and provide the following information:
(i) The methods of access, as set forth in paragraph (b)(2) of this section;
(ii) The place at which the record may be inspected;
(iii) The earliest date on which the record may be inspected and the period of time that the records will remain available for inspection. In no event shall the earliest date be later than thirty calendar days from the date of notification;
(iv) The estimated date by which a copy of the record could be mailed and the estimate of fees pursuant to § 102.31. In no event shall the estimated date be later than thirty calendar days from the date of notification;
(v) The fact that the individual, if he or she wishes, may be accompanied by another individual during personal access, subject to the procedures set forth in paragraph (f) of this section; and,
(vi) Any additional requirements needed to grant access to a specific record.
(2) Methods of access. The following methods of access to records by an individual may be available depending on the circumstances of a given situation:
(i) Inspection in person may be had in a location specified by the Privacy Officer during business hours;
(ii) Transfer of records to a Federal facility more convenient to the individual may be arranged, but only if the Privacy Officer determines that a suitable facility is available, that the
individual’s access can be properly supervised at that facility, and that transmittal of the records to that facility will not unduly interfere with operations of USPTO or involve unreasonable costs, in terms of both money and manpower; and
(iii) Copies may be mailed at the request of the individual, subject to payment of the fees prescribed in § 102.31. USPTO, on its own initiative, may elect to provide a copy by mail, in which case no fee will be charged the individual.
(c) Access to medical records is governed by the provisions of § 102.26.
(d) USPTO will supply such other information and assistance at the time of access as to make the record intelligible to the individual.
(e) USPTO reserves the right to limit access to copies and abstracts of original records, rather than the original records. This election would be appropriate, for example, when the record is in an automated data media such as tape or diskette, when the record contains information on other individuals, and when deletion of information is permissible under exemptions (for example, 5 U.S.C. 552a(k)(2)). In no event shall original records of USPTO be made available to the individual except under the immediate supervision of the Privacy Officer or the Privacy Officer’s designee.
(f) Any individual who requests access to a record pertaining to that individual may be accompanied by another individual of his or her choice. “Accompanied” includes discussion of the record in the presence of the other individual. The individual to whom the record pertains shall authorize the presence of the other individual in writing. The authorization shall include the name of the other individual, a specific description of the record to which access is sought, the USPTO control number assigned to the request, the date, and the signature of the individual to whom the record pertains. The other individual shall sign the authorization in the presence of the Privacy Officer. An individual shall not be required to state a reason or otherwise justify his or her decision to be accompanied by another individual during personal access to a record.
(g) Initial denial of access—
(1) Grounds. Access by an individual to a record which pertains to that individual will be
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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.25
denied only upon a determination by the Privacy Officer that:
(i) The record is exempt under § 102.33 or § 102.34, or exempt by determination of another agency publishing notice of the system of records, as described in § 102.23(f);
(ii) The record is information compiled in reasonable anticipation of a civil action or proceeding;
(iii) The provisions of § 102.26 pertaining to medical records temporarily have been invoked; or
(iv) The individual has unreasonably failed to comply with the procedural requirements of this part.
(2) Notification. The Privacy Officer shall give notice of denial of access to records to the individual in writing and shall include the following information:
(i) The Privacy Officer’s name and title or position;
(ii) The date of the denial;
(iii) The reasons for the denial, including citation to the appropriate section of the Act and this part;
(iv) The individual’s opportunities, if any, for further administrative consideration, including the identity and address of the responsible official. If no further administrative consideration within USPTO is available, the notice shall state that the denial is administratively final; and
(v) If stated to be administratively final within USPTO, the individual’s right to judicial review provided under 5 U.S.C. 552a(g)(1), as limited by 5 U.S.C. 552a(g)(5).
(3) Administrative review. When an initial denial of a request is issued by the Privacy Officer, the individual’s opportunities for further consideration shall be as follows:
(i) As to denial under paragraph (g)(1)(i) of this section, two opportunities for further consideration are available in the alternative:
(A) If the individual contests the application of the exemption to the records, review procedures in § 102.25(g)(3)(ii) shall apply; or
(B) If the individual challenges the exemption itself, the procedure is a petition for the issuance, amendment, or repeal of a rule under 5 U.S.C. 553(e). If the exemption was determined by USPTO, such petition shall be filed with the General Counsel. If the exemption was determined by another agency (as described in § 102.23(f)), USPTO will provide the individual with the name and address of the other agency and any relief sought by the individual shall be that provided by the regulations of the other agency. Within USPTO, no such denial is administratively final until such a petition has been filed by the individual and disposed of on the merits by the General Counsel.
(ii) As to denial under paragraphs (g)(1)(ii) of this section, (g)(1)(iv) of this section or (to the limited extent provided in paragraph (g)(3)(i)(A) of this section) paragraph (g)(1)(i) of this section, the individual may file for review with the General Counsel, as indicated in the Privacy Officer’s initial denial notification. The procedures appearing in § 102.28 shall be followed by both the individual and USPTO to the maximum extent practicable.
(iii) As to denial under paragraph (g)(1)(iii) of this section, no further administrative consideration within USPTO is available because the denial is not administratively final until expiration of the time period indicated in § 102.26(a).
(h) If a request is partially granted and partially denied, the Privacy Officer shall follow the appropriate procedures of this section as to the records within the grant and the records within the denial.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.26 Special procedures: Medical records.
(a) No response to any request for access to medical records by an individual will be issued by the Privacy Officer for a period of seven working days ( i.e., excluding Saturdays, Sundays, and legal public holidays) from the date of receipt.
(b) USPTO has published as a routine use, for all systems of records containing medical records, consultations with an individual’s physician or
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§ 102.26PATENT RULES
psychologist if, in the sole judgment of USPTO, disclosure could have an adverse effect upon the individual. The mandatory waiting period set forth in paragraph (a) of this section will permit exercise of this routine use in appropriate cases. USPTO will pay no cost of any such consultation.
(c) In every case of a request by an individual for access to medical records, the Privacy Officer shall:
(1) Inform the individual of the waiting period prescribed in paragraph (a) of this section;
(2) Obtain the name and address of the individual’s physician and/or psychologist, if the individual consents to give them;
(3) Obtain specific, written consent for USPTO to consult the individual’s physician and/or psychologist in the event that USPTO believes such consultation is advisable, if the individual consents to give such authorization;
(4) Obtain specific, written consent for USPTO to provide the medical records to the individual’s physician or psychologist in the event that USPTO believes access to the record by the individual is best effected under the guidance of the individual’s physician or psychologist, if the individual consents to give such authorization; and
(5) Forward the individual’s medical record to USPTO’s medical expert for review and a determination on whether consultation with or transmittal of the medical records to the individual’s physician or psychologist is warranted. If the consultation with or transmittal of such records to the individual’s physician or psychologist is determined to be warranted, USPTO’s medical expert shall so consult or transmit. Whether or not such a consultation or transmittal occurs, USPTO’s medical officer shall provide instruction to the Privacy Officer regarding the conditions of access by the individual to his or her medical records.
(d) If an individual refuses in writing to give the names and consents set forth in paragraphs (c)(2) through (c)(4) of this section and USPTO has determined that disclosure could have an adverse effect upon the individual, USPTO shall give the individual access to said records by means of a copy, provided without cost to the requester, sent registered mail return receipt requested.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.27 Procedures for making requests for correction or amendment.
(a) Any individual, regardless of age, who is a citizen of the United States or an alien lawfully admitted for permanent residence into the United States may submit a request for correction or amendment to USPTO. The request should be made either in person or by mail addressed to the Privacy Officer who processed the individual’s request for access to the record, and to whom is delegated authority to make initial determinations on requests for correction or amendment. The office of the Privacy Officer is open to the public between the hours of 9 a.m. and 4 p.m., Monday through Friday (excluding legal public holidays).
(b) Requests submitted by mail should include the words “PRIVACY ACT REQUEST” in capital letters at the top of the letter and on the face of the envelope. Any request which is not addressed as specified in paragraph (a) of this section or which is not marked as specified in this paragraph will be so addressed and marked by USPTO personnel and forwarded immediately to the Privacy Officer. A request which is not properly addressed by the individual will not be deemed to have been “received” for purposes of measuring the time period for response until actual receipt by the Privacy Officer. In each instance when a request so forwarded is received, the Privacy Officer shall notify the individual that his or her request was improperly addressed and the date the request was received at the proper address.
(c) Since the request, in all cases, will follow a request for access under § 102.25, the individual’s identity will be established by his or her signature on the request and use of the USPTO control number assigned to the request.
(d) A request for correction or amendment should include the following:
(1) Specific identification of the record sought to be corrected or amended (for example, description, title, date, paragraph, sentence, line and words);
(2) The specific wording to be deleted, if any;
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(3) The specific wording to be inserted or added, if any, and the exact place at which to be inserted or added; and
(4) A statement of the basis for the requested correction or amendment, with all available supporting documents and materials which substantiate the statement. The statement should identify the criterion of the Act being invoked, that is, whether the information in the record is unnecessary, inaccurate, irrelevant, untimely or incomplete.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.28 Review of requests for correction or amendment.
(1)(i) Not later than ten working days (i.e., excluding Saturdays, Sundays and legal public holidays) after receipt of a request to correct or amend a record, the Privacy Officer shall send an acknowledgment providing an estimate of time within which action will be taken on the request and asking for such further information as may be necessary to process the request. The estimate of time may take into account unusual circumstances as described in § 102.25(a). No acknowledgment will be sent if the request can be reviewed, processed, and the individual notified of the results of review (either compliance or denial) within the ten working days. Requests filed in person will be acknowledged in writing at the time submitted.
(ii) If the Privacy Officer fails to send the acknowledgment within ten working days, as provided in paragraph (a)(1)(i) of this section, the requester may ask the General Counsel to take corrective action. No failure of the Privacy Officer to send an acknowledgment shall confer administrative finality for purposes of judicial review.
(2) Promptly after acknowledging receipt of a request, or after receiving such further information as might have been requested, or after arriving at a decision within the ten working days, the Privacy Officer shall either:
(i) Make the requested correction or amendment and advise the individual in writing of such action, providing either a copy of the corrected or amended record or a statement as to the means
whereby the correction or amendment was effected in cases where a copy cannot be provided (for example, erasure of information from a record maintained only in magnetically recorded computer files); or
(ii) Inform the individual in writing that his or her request is denied and provide the following information:
(A) The Privacy Officer’s name and title or position;
(B) The date of the denial;
(C) The reasons for the denial, including citation to the appropriate sections of the Act and this subpart; and
(D) The procedures for appeal of the denial as set forth in § 102.29, including the address of the General Counsel.
(3) The term promptly in this section means within thirty working days ( i.e., excluding Saturdays, Sundays, and legal public holidays). If the Privacy Officer cannot make the determination within thirty working days, the individual will be advised in writing of the reason therefor and of the estimated date by which the determination will be made.
(b) Whenever an individual’s record is corrected or amended pursuant to a request by that individual, the Privacy Officer shall be responsible for notifying all persons and agencies to which the corrected or amended portion of the record had been disclosed prior to its correction or amendment, if an accounting of such disclosure required by the Act was made. The notification shall require a recipient agency maintaining the record to acknowledge receipt of the notification, to correct or amend the record, and to apprise any agency or person to which it had disclosed the record of the substance of the correction or amendment.
(c) The following criteria will be considered by the Privacy Officer in reviewing a request for correction or amendment:
(1) The sufficiency of the evidence submitted by the individual;
(2) The factual accuracy of the information;
(3) The relevance and necessity of the information in terms of purpose for which it was collected;
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§ 102.28PATENT RULES
(4) The timeliness and currency of the information in light of the purpose for which it was collected;
(5) The completeness of the information in terms of the purpose for which it was collected;
(6) The degree of risk that denial of the request could unfairly result in determinations adverse to the individual;
(7) The character of the record sought to be corrected or amended; and
(8) The propriety and feasibility of complying with the specific means of correction or amendment requested by the individual.
(d) USPTO will not undertake to gather evidence for the individual, but does reserve the right to verify the evidence which the individual submits.
(e) Correction or amendment of a record requested by an individual will be denied only upon a determination by the Privacy Officer that:
(1) The individual has failed to establish, by a preponderance of the evidence, the propriety of the correction or amendment in light of the criteria set forth in paragraph (c) of this section;
(2) The record sought to be corrected or amended is part of the official record in a terminated judicial, quasi-judicial, or quasi-legislative proceeding to which the individual was a party or participant;
(3) The information in the record sought to be corrected or amended, or the record sought to be corrected or amended, is the subject of a pending judicial, quasi-judicial, or quasi-legislative proceeding to which the individual is a party or participant;
(4) The correction or amendment would violate a duly enacted statute or promulgated regulation; or
(5) The individual has unreasonably failed to comply with the procedural requirements of this part.
(f) If a request is partially granted and partially denied, the Privacy Officer shall follow the appropriate procedures of this section as to the records within the grant and the records within the denial.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.29 Appeal of initial adverse determination on correction or amendment.
(a) When a request for correction or amendment has been denied initially under § 102.28, the individual may submit a written appeal within thirty working days ( i.e., excluding Saturdays, Sundays and legal public holidays) after the date of the initial denial. When an appeal is submitted by mail, the postmark is conclusive as to timeliness.
(b) An appeal should be addressed to the General Counsel, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450. An appeal should include the words “PRIVACY APPEAL” in capital letters at the top of the letter and on the face of the envelope. An appeal not addressed and marked as provided herein will be so marked by USPTO personnel when it is so identified and will be forwarded immediately to the General Counsel. An appeal which is not properly addressed by the individual will not be deemed to have been “received” for purposes of measuring the time periods in this section until actual receipt by the General Counsel. In each instance when an appeal so forwarded is received, the General Counsel shall notify the individual that his or her appeal was improperly addressed and the date when the appeal was received at the proper address.
(c) The individual’s appeal shall include a statement of the reasons why the initial denial is believed to be in error and USPTO’s control number assigned to the request. The appeal shall be signed by the individual. The record which the individual requests be corrected or amended and all correspondence between the Privacy Officer and the requester will be furnished by the Privacy Officer who issued the initial denial. Although the foregoing normally will comprise the entire record on appeal, the General Counsel may seek additional information necessary to assure that the final determination is fair and equitable and, in such instances, disclose the additional information to the individual to the greatest extent possible, and provide an opportunity for comment thereon.
(d) No personal appearance or hearing on appeal will be allowed.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.29
(e) The General Counsel shall act upon the appeal and issue a final determination in writing not later than thirty working days (i.e., excluding Saturdays, Sundays and legal public holidays) from the date on which the appeal is received, except that the General Counsel may extend the thirty days upon deciding that a fair and equitable review cannot be made within that period, but only if the individual is advised in writing of the reason for the extension and the estimated date by which a final determination will issue. The estimated date should not be later than the sixtieth working day after receipt of the appeal unless unusual circumstances, as described in § 102.25(a), are met.
(f) If the appeal is determined in favor of the individual, the final determination shall include the specific corrections or amendments to be made and a copy thereof shall be transmitted promptly both to the individual and to the Privacy Officer who issued the initial denial. Upon receipt of such final determination, the Privacy Officer promptly shall take the actions set forth in § 102.28(a)(2)(i) and (b).
(g) If the appeal is denied, the final determination shall be transmitted promptly to the individual and state the reasons for the denial. The notice of final determination also shall inform the individual of the following:
(1) The right of the individual under the Act to file a concise statement of reasons for disagreeing with the final determination. The statement ordinarily should not exceed one page and USPTO reserves the right to reject a statement of excessive length. Such a statement shall be filed with the General Counsel. It should provide the USPTO control number assigned to the request, indicate the date of the final determination and be signed by the individual. The General Counsel shall acknowledge receipt of such statement and inform the individual of the date on which it was received.
(2) The facts that any such disagreement statement filed by the individual will be noted in the disputed record, that the purposes and uses to which the statement will be put are those applicable to the record in which it is noted, and that a copy of the statement will be provided to persons and agencies to which the record is disclosed subsequent to the date of receipt of such statement;
(3) The fact that USPTO will append to any such disagreement statement filed by the individual, a copy of the final determination or summary thereof which also will be provided to persons and agencies to which the disagreement statement is disclosed; and,
(4) The right of the individual to judicial review of the final determination under 5 U.S.C. 552a(g)(1)(A), as limited by 5 U.S.C. 552a(g)(5).
(h) In making the final determination, the General Counsel shall employ the criteria set forth in § 102.28(c) and shall deny an appeal only on the grounds set forth in § 102.28(e).
(i) If an appeal is partially granted and partially denied, the General Counsel shall follow the appropriate procedures of this section as to the records within the grant and the records within the denial.
(j) Although a copy of the final determination or a summary thereof will be treated as part of the individual’s record for purposes of disclosure in instances where the individual has filed a disagreement statement, it will not be subject to correction or amendment by the individual.
(k) The provisions of paragraphs (g)(1) through (g)(3) of this section satisfy the requirements of 5 U.S.C. 552a(e)(3).
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 102.30 Disclosure of record to person other than the individual to whom it pertains.
(a) USPTO may disclose a record pertaining to an individual to a person other than the individual to whom it pertains only in the following instances:
(1) Upon written request by the individual, including authorization under § 102.25(f);
(2) With the prior written consent of the individual;
(3) To a parent or legal guardian under 5 U.S.C. 552a(h);
(4) When required by the Act and not covered explicitly by the provisions of 5 U.S.C. 552a(b); and
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§ 102.30PATENT RULES
(5) When permitted under 5 U.S.C.
552a(b)(1) through (12), which read as follows: 1
(i) To those officers and employees of the agency which maintains the record who have a need for the record in the performance of their duties;
(ii) Required under 5 U.S.C. 552;
(iii) For a routine use as defined in 5 U.S.C. 552a(a)(7) and described under 5 U.S.C. 552a(e)(4)(D);
(iv) To the Bureau of the Census for purposes of planning or carrying out a census or survey or related activity pursuant to the provisions of Title 13;
(v) To a recipient who has provided the agency with advance adequate written assurance that the record will be used solely as a statistical research or reporting record, and the record is to be transferred in a form that is not individually identifiable;
(vi) To the National Archives and Records Administration as a record which has sufficient historical or other value to warrant its continued preservation by the United States Government, or for evaluation by the Archivist of the United States or the designee of the Archivist to determine whether the record has such value;
(vii) To another agency or to an instrumentality of any governmental jurisdiction within or under the control of the United States for a civil or criminal law enforcement activity if the activity is authorized by law, and if the head of the agency or instrumentality has made a written request to the agency which maintains the record specifying the particular portion desired and the law enforcement activity for which the record is sought;
(viii) To a person pursuant to a showing of compelling circumstances affecting the health or safety of an individual if upon such disclosure notification is transmitted to the last known address of such individual;
(ix) To either House of Congress, or, to the extent of matter within its jurisdiction, any committee or subcommittee thereof, any joint committee of Congress or subcommittee of any such joint committee;
(x) To the Comptroller General, or any of his authorized representatives, in the course of the performance of the duties of the General Accounting Office;
(xi) Pursuant to the order of a court of competent jurisdiction; or
(xii) To a consumer reporting agency in accordance with section 3711(e) of Title 31.
(b) The situations referred to in paragraph (a)(4) of this section include the following:
(1) 5 U.S.C. 552a(c)(4) requires dissemination of a corrected or amended record or notation of a disagreement statement by USPTO in certain circumstances;
(2) 5 U.S.C. 552a(d) requires disclosure of records to the individual to whom they pertain, upon request; and
(3) 5 U.S.C. 552a(g) authorizes civil action by an individual and requires disclosure by USPTO to the court.
(c) The Privacy Officer shall make an accounting of each disclosure by him of any record contained in a system of records in accordance with 5 U.S.C. 552a(c) (1) and (2). Except for a disclosure made under 5 U.S.C. 552a(b)(7), the Privacy Officer shall make such accounting available to any individual, insofar as it pertains to that individual, on request submitted in accordance with § 102.24. The Privacy Officer shall make reasonable efforts to notify any individual when any record in a system of records is disclosed to any person under compulsory legal process, promptly upon being informed that such process has become a matter of public record.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.31 Fees.
The only fees to be charged to or collected from an individual under the provisions of this part are for duplication of records at the request of the individual. The Privacy Officer shall charge fees for duplication of records under the Act in the same way in which they charge duplication fees under § 102.11, except as provided in this section.
1 5 U.S.C. 552a(b)(4) has no application within USPTO.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.31
(a) No fees shall be charged or collected for the following: Search for and retrieval of the records; review of the records; copying at the initiative of USPTO without a request from the individual; transportation of records and personnel; and first-class postage.
(b) It is the policy of USPTO to provide an individual with one copy of each record corrected or amended pursuant to his or her request without charge as evidence of the correction or amendment.
(c) As required by the United States Office of Personnel Management in its published regulations implementing the Act, USPTO will charge no fee for a single copy of a personnel record covered by that agency’s Government-wide published notice of systems of records.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.32 Penalties.
(a) The Act provides, in pertinent part:
Any person who knowingly and willfully requests or obtains any record concerning an individual from an agency under false pretenses shall be guilty of a misdemeanor and fined not more than $5,000. (5 U.S.C. 552a(i)(3)).
(b) A person who falsely or fraudulently attempts to obtain records under the Act also may be subject to prosecution under such other criminal statutes as 18 U.S.C. 494, 495 and 1001.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.33 General exemptions.
(a) Individuals may not have access to records maintained by USPTO but which were provided by another agency which has determined by regulation that such information is subject to general exemption under 5 U.S.C. 552a(j). If such exempt records are within a request for access, USPTO will advise the individual of their existence and of the name and address of the source agency. For any further information concerning the record and the exemption, the individual must contact that source agency.
(b) The general exemption determined to be necessary and proper with respect to systems of records maintained by USPTO, including the parts of each system to be exempted, the provisions of the Act from which they are exempted, and the justification for the exemption, is as follows: Investigative Records—Contract and Grant Frauds and Employee Criminal Misconduct—COMMERCE/DEPT.—12. Pursuant to 5 U.S.C. 552a(j)(2), these records are hereby determined to be exempt from all provisions of the Act, except 5 U.S.C. 552a (b), (c) (1) and (2), (e)(4) (A) through (F), (e) (6), (7), (9), (10), and (11), and (i). These exemptions are necessary to ensure the proper functions of the law enforcement activity, to protect confidential sources of information, to fulfill promises of confidentiality, to prevent interference with law enforcement proceedings, to avoid the disclosure of investigative techniques, to avoid the endangering of law enforcement personnel, to avoid premature disclosure of the knowledge of criminal activity and the evidentiary bases of possible enforcement actions, and to maintain the integrity of the law enforcement process.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 102.34 Specific exemptions.
(a)(1) Some systems of records under the Act which are maintained by USPTO contain, from time-to-time, material subject to the exemption appearing at 5 U.S.C. 552a(k)(1), relating to national defense and foreign policy materials. The systems of records published in the Federal Register by USPTO which are within this exemption are: COMMERCE/PAT-TM-6, COMMERCE/PAT-TM-7, COMMERCE/PAT-TM-8, COMMERCE/PAT-TM-9.
(2) USPTO hereby asserts a claim to exemption of such materials wherever they might appear in such systems of records, or any systems of records, at present or in the future. The materials would be exempt from 5 U.S.C. 552a (c)(3), (d), (e)(1), (e)(4) (G), (H), and (I), and (f) to protect materials required by Executive order to be kept secret in the interest of the national defense and foreign policy.
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§ 102.34PATENT RULES
(b) The specific exemptions determined to be necessary and proper with respect to systems of records maintained by USPTO, including the parts of each system to be exempted, the provisions of the Act from which they are exempted, and the justification for the exemption, are as follows:
(1)(i) Exempt under 5 U.S.C. 552a(k)(2). The systems of records exempt (some only conditionally), the sections of the Act from which exempted, and the reasons therefor are as follows:
(A) Investigative Records—Contract and Grant Frauds and Employee Criminal Misconduct—COMMERCE/DEPT—12, but only on condition that the general exemption claimed in § 102.33(b)(3) is held to be invalid;
(B) Investigative Records—Persons Within the Investigative Jurisdiction of USPTO—COMMERCE/DEPT-13;
(C) Litigation, Claims and Administrative Proceeding Records—COMMERCE/DEPT-14;
(D) Attorneys and Agents Registered to Practice Before the Office—COMMERCE/PAT-TM-1;
(E) Complaints, Investigations and Disciplinary Proceedings Relating to Registered Patent Attorneys and Agents—COMMERCE/PAT-TM-2; and
(F) Non-Registered Persons Rendering Assistance to Patent Applicants—COMMERCE/PAT-TM-5.
(ii) The foregoing are exempted from 5 U.S.C. 552a (c)(3), (d), (e)(1), (e)(4)(G), (H), and (I), and (f). The reasons for asserting the exemption are to prevent subjects of investigation from frustrating the investigatory process, to insure the proper functioning and integrity of law enforcement activities, to prevent disclosure of investigative techniques, to maintain the ability to obtain necessary information, to fulfill commitments made to sources to protect their identities and the
confidentiality of information and to avoid endangering these sources and law enforcement personnel. Special note is taken of the fact that the proviso clause in this exemption imports due process and procedural protections for the individual. The existence and general character of the information exempted will be made known to the individual to whom it pertains.
(2)(i) Exempt under 5 U.S.C. 552a(k)(5). The systems of records exempt (some only conditionally), the sections of the act from which exempted, and the reasons therefor are as follows:
(A) Investigative Records—Contract and Grant Frauds and Employee Criminal Misconduct—COMMERCE/DEPT-12, but only on condition that the general exemption claimed in § 102.33(b)(3) is held to be invalid;
(B) Investigative Records—Persons Within the Investigative Jurisdiction of USPTO—COMMERCE/DEPT-13; and
(C) Litigation, Claims, and Administrative Proceeding Records—COMMERCE/DEPT-14.
(ii) The foregoing are exempted from 5 U.S.C. 552a (c)(3), (d), (e)(1), (e)(4)(G), (H), and (I), and (f). The reasons for asserting the exemption are to maintain the ability to obtain candid and necessary information, to fulfill commitments made to sources to protect the confidentiality of information, to avoid endangering these sources and, ultimately, to facilitate proper selection or continuance of the best applicants or persons for a given position or contract. Special note is made of the limitation on the extent to which this exemption may be asserted. The existence and general character of the information exempted will be made known to the individual to whom it pertains.
(c) At the present time, USPTO claims no exemption under 5 U.S.C. 552a(k)(3), (4), (6) and (7).
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
Appendix to Part 102 - Systems of Records Noticed by Other Federal Agencies1 and Applicable to USPTO Records and Applicability of this Part Thereto
R-466Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 102.34
Other federal agencyCategory of records Office of Personnel
Management.2 Federal Personnel Records
Department of Labor.3Federal Employee CompensationAct Program
Equal Employment
Opportunity Commission.4 Equal Employment Opportunity Appeal Complaints
Merit Systems Protection
Board.5 Formal Complaints/Appeals of Adverse PersonnelActions 1 Other than systems of records noticed by the Department of Commerce. Where the system of records applies only to USPTO, these regulations apply. Where the system of records applies generally to components of the Department of Commerce, the regulations of that department attach at the point of any denial for access or for correction or amendment. 2 The provisions of this part do not apply to these records covered by notices of systems of records published by the Office of Personnel Management for all agencies. The regulations of OPM alone apply. 3 The provisions of this part apply only initially to these records covered by notices of systems of records published by the U.S. Department of Labor for all agencies. The regulations of that department attach at the point of any denial for access or for correction or amendment. 4 The provisions of this part do not apply to these records covered by notices of systems of records published by the Equal Employment Opportunity Commission for all agencies. The regulations of the Commission alone apply. 5 The provisions of this part do not apply to these records covered by notices of systems of records published by the Merit Systems Protection Board for all agencies. The regulations of the Board alone apply.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
PART 104 — LEGAL PROCESSES
General Provisions
Sec. 104.1 Definitions.
104.2 Address for mail and service; telephone number.
104.3 Waiver of rules. 104.4 Relationship of this Part to the Federal
Rules of Civil or Criminal Procedure.
Service of Process
104.11 Scope and purpose. 104.12 Acceptance of service of process.
Employee Testimony and Production of Documents in Legal Proceedings
104.21 Scope and purpose. 104.22 Demand for testimony or production of
documents. 104.23 Expert or opinion testimony. 104.24 Demands or requests in legal proceedings
for records protected by confidentiality statutes.
Employee Indemnification
104.31 Scope. 104.32 Procedure for requesting indemnification.
Tort Claims
104.41 Procedure for filing claims. 104.42 Finality of settlement or denial of claims.
Subpart A — General Provisions
§ 104.1 Definitions.
Demand means a request, order, or subpoena for testimony or documents for use in a legal proceeding.
Director means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (see § 1.9(j)).
Document means any record, paper, and other property held by the Office, including without limitation, official letters, telegrams, memoranda, reports, studies, calendar and diary entries, maps, graphs, pamphlets, notes, charts, tabulations, analyses, statistical or informational accumulations, any kind of summaries of meetings and
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§ 104.1PATENT RULES
conversations, film impressions, magnetic tapes, and sound or mechanical reproductions.
Employee means any current or former officer or employee of the Office.
Legal proceeding means any pretrial, trial, and posttrial stages of existing or reasonably anticipated judicial or administrative actions, hearings, investigations, or similar proceedings before courts, commissions, boards or other tribunals, foreign or domestic. This phrase includes all phases of discovery as well as responses to formal or informal requests by attorneys or others involved in legal proceedings.
Office means the United States Patent and Trademark Office, including any operating unit in the United States Patent and Trademark Office, and its predecessors, the Patent Office and the Patent and Trademark Office.
Official business means the authorized business of the Office.
General Counsel means the General Counsel of the Office.
Testimony means a statement in any form, including personal appearances before a court or other legal tribunal, interviews, depositions, telephonic, televised, or videotaped statements or any responses given during discovery or similar proceedings, which response would involve more than the production of documents, including a declaration under 35 U.S.C. 25 or 28 U.S.C. 1746.
United States means the Federal Government, its departments and agencies, individuals acting on behalf of the Federal Government, and parties to the extent they are represented by the United States.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001; second sentence revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 104.2 Address for mail and service; telephone number.
(a) Mail under this part should be addressed to the Office of the General Counsel, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(b) Service by hand should be made during business hours to the Office of the General Counsel, 10B20, Madison Building East, 600 Dulany Street, Alexandria, Virginia.
(c) The Office of the General Counsel may be reached by telephone at 571–272–7000 during business hours.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001; paras. (b) and (c) revised, 70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005; para. (a) revised, 75 FR 36294, June 25, 2010, effective June 25, 2010]
§ 104.3 Waiver of rules.
In extraordinary situations, when the interest of justice requires, the General Counsel may waive or suspend the rules of this part, sua sponte or on petition of an interested party to the Director, subject to such requirements as the General Counsel may impose. Any such petition must be accompanied by a petition fee of $130.00.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001; revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§ 104.4 Relationship of this Part to the Federal Rules of Civil or Criminal Procedure.
Nothing in this part waives or limits any requirement under the Federal Rules of Civil or Criminal Procedure.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
Subpart B — Service of Process
§ 104.11 Scope and purpose.
(a) This subpart sets forth the procedures to be followed when a summons and complaint is served
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on the Office or on the Director or an employee in his or her official capacity.
(b) This subpart is intended, and should be construed, to ensure the efficient administration of the Office and not to impede any legal proceeding.
(c) This subpart does not apply to subpoenas, the procedures for which are set out in subpart C.
(d) This subpart does not apply to service of process made on an employee personally on matters not related to official business of the Office or to the official responsibilities of the employee.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
§ 104.12 Acceptance of service of process.
(a) Any summons and complaint to be served in person or by registered or certified mail or as otherwise authorized by law on the Office, on the Director, or on an employee in his or her official capacity, shall be served as indicated in § 104.2.
(b) Any employee of the Office served with a summons and complaint shall immediately notify, and shall deliver the summons and complaint to, the Office of the General Counsel.
(c) Any employee receiving a summons and complaint shall note on the summons and complaint the date, hour, and place of service and whether service was by hand or by mail.
(d) When a legal proceeding is brought to hold an employee personally liable in connection with an action taken in the conduct of official business, rather than liable in an official capacity, the employee by law is to be served personally with process. See Fed. R. Civ. P. 4(e). An employee sued personally for an action taken in the conduct of official business shall immediately notify and deliver a copy of the summons and complaint to the General Counsel.
(e) An employee sued personally in connection with official business may be represented by the Department of Justice at its discretion (28 CFR 50.15 and 50.16).
(f) The Office will only accept service of process for an employee in the employee’s official capacity.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
Subpart C — Employee Testimony and Production of Documents in Legal Proceedings
§ 104.21 Scope and purpose.
(a) This subpart sets forth the policies and procedures of the Office regarding the testimony of employees as witnesses in legal proceedings and the production or disclosure of information contained in Office documents for use in legal proceedings pursuant to a demand.
(b) Exceptions. This subpart does not apply to any legal proceeding in which:
(1) An employee is to testify regarding facts or events that are unrelated to official business; or
(2) A former employee is to testify as an expert in connection with a particular matter in which the former employee did not participate personally while at the Office.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
§ 104.22 Demand for testimony or production of documents.
(a) Whenever a demand for testimony or for the production of documents is made upon an employee, the employee shall immediately notify the Office of the General Counsel at the telephone number or addresses in §104.2 and make arrangements to send the subpoena to the General Counsel promptly.
(b) An employee may not give testimony, produce documents, or answer inquiries from a person not employed by the Office regarding testimony or documents subject to a demand or a potential demand under the provisions of this subpart without the approval of the General Counsel. The General Counsel may authorize the provision of certified copies not otherwise available under Part 1 of this title subject to payment of applicable fees under § 1.19.
(c)(1) Demand for testimony or documents. A demand for the testimony of an employee under this subpart shall be addressed to the General Counsel as indicated in § 104.2.
(2) Subpoenas. A subpoena for employee testimony or for a document shall be served in
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§ 104.22PATENT RULES
accordance with the Federal Rules of Civil or Criminal Procedure or applicable state procedure, and a copy of the subpoena shall be sent to the General Counsel as indicated in § 104.2.
(3) Affidavits. Except when the United States is a party, every demand shall be accompanied by an affidavit or declaration under 28 U.S.C. 1746 or 35 U.S.C. 25(b) setting forth the title of the legal proceeding, the forum, the requesting party’s interest in the legal proceeding, the reason for the demand, a showing that the desired testimony or document is not reasonably available from any other source, and, if testimony is requested, the intended use of the testimony, a general summary of the desired testimony, and a showing that no document could be provided and used in lieu of testimony.
(d) Failure of the attorney to cooperate in good faith to enable the General Counsel to make an informed determination under this subpart may serve as a basis for a determination not to comply with the demand.
(e) A determination under this subpart to comply or not to comply with a demand is not a waiver or an assertion of any other ground for noncompliance, including privilege, lack of relevance, or technical deficiency.
(f) Noncompliance. If the General Counsel makes a determination not to comply, he or she will seek Department of Justice representation for the employee and will attempt to have the subpoena modified or quashed. If Department of Justice representation cannot be arranged, the employee should appear at the time and place set forth in the subpoena. In such a case, the employee should produce a copy of these rules and state that the General Counsel has advised the employee not to provide the requested testimony nor to produce the requested document. If a legal tribunal rules that the demand in the subpoena must be complied with, the employee shall respectfully decline to comply with the demand, citing United States ex rel. Touhy v. Ragen, 340 U.S. 462 (1951).
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
§ 104.23 Expert or opinion testimony.
(a)(1) If the General Counsel authorizes an employee to give testimony in a legal proceeding
not involving the United States, the testimony, if otherwise proper, shall be limited to facts within the personal knowledge of the employee. Employees, with or without compensation, shall not provide expert testimony in any legal proceedings regarding Office information, subjects, or activities except on behalf of the United States or a party represented by the United States Department of Justice.
(2) The General Counsel may authorize an employee to appear and give the expert or opinion testimony upon the requester showing, pursuant to § 104.3 of this part, that exceptional circumstances warrant such testimony and that the anticipated testimony will not be adverse to the interest of the Office or the United States.
(b)(1) If, while testifying in any legal proceeding, an employee is asked for expert or opinion testimony regarding Office information, subjects, or activities, which testimony has not been approved in advance in writing in accordance with the regulations in this subpart, the witness shall:
(i) Respectfully decline to answer on the grounds that such expert or opinion testimony is forbidden by this subpart;
(ii) Request an opportunity to consult with the General Counsel before giving such testimony; and
(iii) Explain that upon such consultation, approval for such testimony may be provided.
(2) If the tribunal conducting the proceeding then orders the employee to provide expert or opinion testimony regarding Office information, subjects, or activities without the opportunity to consult with the General Counsel, the employee shall respectfully refuse to provide such testimony, citing United States ex rel. Touhy v. Ragen, 340 U.S. 462 (1951).
(c) If an employee is unaware of the regulations in this subpart and provides expert or opinion testimony regarding Office information, subjects, or activities in a legal proceeding without the aforementioned consultation, the employee shall, as soon after testifying as possible, inform the General Counsel that such testimony was given and provide a written summary of the expert or opinion testimony provided.
(d) Proceeding where the United States is a party. In a proceeding in which the United States is
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a party or is representing a party, an employee may not testify as an expert or opinion witness for any party other than the United States.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
§ 104.24 Demands or requests in legal proceedings for records protected by confidentiality statutes.
Demands in legal proceedings for the production of records, or for the testimony of employees regarding information protected by the confidentiality provisions of the Patent Act (35 U.S.C. 122), the Privacy Act (5 U.S.C. 552a), the Trade Secrets Act (18 U.S.C. 1905), or any other confidentiality statute, must satisfy the requirements for disclosure set forth in those statutes and associated rules before the records may be provided or testimony given.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
Subpart D — Employee Indemnification
§ 104.31 Scope.
The procedure in this subpart shall be followed if a civil action or proceeding is brought, in any court, against an employee (including the employee’s estate) for personal injury, loss of property, or death, resulting from the employee’s activities while acting within the scope of the employee’s office or employment. When the employee is incapacitated or deceased, actions required of an employee should be performed by the employee’s executor, administrator, or comparable legal representative.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
§ 104.32 Procedure for requesting indemnification.
(a) After being served with process or pleadings in such an action or proceeding, the employee shall within five (5) calendar days of receipt, deliver to the General Counsel all such process and pleadings or an attested true copy thereof, together with a fully detailed report of the circumstances of the incident giving rise to the court action or proceeding.
(b)(1) An employee may request indemnification to satisfy a verdict, judgment, or award entered against that employee only if the employee has timely satisfied the requirements of paragraph (a) of this section.
(2) No request for indemnification will be considered unless the employee has submitted a written request through the employee’s supervisory chain to the General Counsel with:
(i) Appropriate documentation, including copies of the verdict, judgment, appeal bond, award, or settlement proposal;
(ii) The employee’s explanation of how the employee was acting within the scope of the employee’s employment; and;
(iii) The employee’s statement of whether the employee has insurance or any other source of indemnification.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
Subpart E — Tort Claims
§ 104.41 Procedure for filing claims.
Administrative claims against the Office filed pursuant to the administrative claims provision of the Federal Tort Claims Act (28 U.S.C. 2672) and the corresponding Department of Justice regulations (28 CFR Part 14) shall be filed with the General Counsel as indicated in §104.2.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
§ 104.42 Finality of settlement or denial of claims.
Only a decision of the Director or the General Counsel regarding settlement or denial of any claim under this subpart may be considered final for the purpose of judicial review.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
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§ 104.42PATENT RULES
SUBCHAPTER C — PROTECTION OF FOREIGN MASK WORKS
PART 150 — REQUESTS FOR PRESIDENTIAL PROCLAMATIONS PURSUANT TO 17 U.S.C.
902(a)(2)
Sec. 150.1 Definitions. 150.2 Initiation of evaluation. 150.3 Submission of requests. 150.4 Evaluation. 150.5 Duration of proclamation. 150.6 Mailing address.
§ 150.1 Definitions.
(a) Director means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (see § 1.9(j)).
(b) Foreign government means the duly-constituted executive of a foreign nation, or an international or regional intergovernmental organization which has been empowered by its member states to request issuance of Presidential proclamations on their behalf under this part.
(c) Interim order means an order issued by the Secretary of Commerce under 17 U.S.C. 914.
(d) Mask work means a series of related images, however fixed or encoded —
(1) Having or representing the predetermined, three-dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product; and
(2) In which series the relation of the images to one another is that each image has the pattern of the surface of one form of the semiconductor chip product.
(e) Presidential proclamation means an action by the President extending to foreign nationals, domiciliaries and sovereign authorities the privilege of applying for registrations for mask works pursuant to 17 U.S.C. 902.
(f) Request means a request by a foreign government for the issuance of a Presidential proclamation.
(g) Proceeding means a proceeding to issue an interim order extending protection to foreign nationals, domiciliaries and sovereign authorities under 17 U.S.C. Chapter 9.
(h) Secretary means the Secretary of Commerce.
[Added, 53 FR 24447, June 29, 1988, effective August 1, 1988; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 150.2 Initiation of evaluation.
(a) The Director independently or as directed by the Secretary, may initiate an evaluation of the propriety of recommending the issuance, revision, suspension or revocation of a section 902 proclamation.
(b) The Director shall initiate an evaluation of the propriety of recommending the issuance of a section 902 proclamation upon receipt of a request from a foreign government.
[Added, 53 FR 24447, June 29, 1988, effective August 1, 1988; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 150.3 Submission of requests.
(a) Requests for the issuance of a section 902 proclamation shall be submitted by foreign governments for review by the Director.
(b) Requests for issuance of a proclamation shall include:
(1) A copy of the foreign law or legal rulings that provide protection for U.S. mask works which provide a basis for the request.
(2) A copy of any regulations or administrative orders implementing the protection.
(3) A copy of any laws, regulations, or administrative orders establishing or regulating the registration (if any) of mask works.
(4) Any other relevant laws, regulations, or administrative orders.
(5) All copies of laws, legal rulings, regulations, or administrative orders submitted must be in unedited, full-text form, and if possible, must be reproduced from the original document.
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(6) All material submitted must be in the original language, and if not in English, must be accompanied by a certified English translation.
[Added, 53 FR 24447, June 29, 1988, effective August 1, 1988; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 150.4 Evaluation.
(a) Upon submission of a request by a foreign government for the issuance of a section 902 proclamation, if an interim order under section 914 has not been issued, the Director may initiate a section 914 proceeding if additional information is required.
(b) If an interim order under section 914 has been issued, the information obtained during the section 914 proceeding will be used in evaluating the request for a section 902 proclamation.
(c) After the Director receives the request of a foreign government for a section 902 proclamation, or after a determination is made by the Director to initiate independently an evaluation pursuant to § 150.2(a) of this part, a notice will be published in the Federal Register to request relevant and material comments on the adequacy and effectiveness of the protection afforded U.S. mask works under the system of law described in the notice. Comments should include detailed explanations of any alleged deficiencies in the foreign law or any alleged deficiencies in its implementation. If the alleged deficiencies include problems in administration such as registration, the respondent should include as specifically as possible full detailed explanations, including dates for and the nature of any alleged problems. Comments shall be submitted to the Director within sixty (60) days of the publication of the Federal Register notice.
(d) The Director shall notify the Register of Copyrights and the Committee on the Judiciary of the Senate and the House of Representatives of the initiation of an evaluation under these regulations.
(e) If the written comments submitted by any party present relevant and material reasons why a proclamation should not issue, the Director will:
(1) Contact the party raising the issue for verification and any needed additional information;
(2) Contact the requesting foreign government to determine if the issues raised by the party can be resolved; and,
(i) If the issues are resolved, continue with the evaluation; or,
(ii) If the issues cannot be resolved on this basis, hold a public hearing to gather additional information.
(f) The comments, the section 902 request, information obtained from a section 914 proceeding, if any, and information obtained in a hearing held pursuant to paragraph (e)(ii) of this section, if any, will be evaluated by the Director.
(g) The Director will forward the information to the Secretary, together with an evaluation and a draft recommendation.
(h) The Secretary will forward a recommendation regarding the issuance of a section 902 proclamation to the President.
[Added, 53 FR 24448, June 29, 1988, effective August 1, 1988; paras. (a) & (c)-(f) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 150.5 Duration of proclamation.
(a) The recommendation for the issuance of a proclamation may include terms and conditions regarding the duration of the proclamation.
(b) Requests for the revision, suspension or revocation of a proclamation may be submitted by any interested party. Requests for revision, suspension or revocation of a proclamation will be considered in substantially the same manner as requests for the issuance of a section 902 proclamation.
[Added 53 FR 24448, June 29, 1988, effective August 1, 1988]
§ 150.6 Mailing address.
Requests and all correspondence pursuant to these guidelines shall be addressed to: Mail Stop Congressional Relations, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
[Added 53 FR 24448, June 29, 1988, effective Aug. 1, 1988; revised, 68 FR 14332, Mar. 25, 2003, effective
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May 1, 2003; revised, 70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005]
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Appendix T Patent Cooperation Treaty and Regulations Under the PCT
Patent Cooperation Treaty Done at Washington on June 19, 1970, amended on September 28, 1979, modified on February
3, 1984, and October 3, 2001 (as in force from April 1, 2002)
TABLE OF CONTENTS1
Chapter : Introductory Provisions Establishment of a UnionArticle 1 DefinitionsArticle 2
Chapter I: International Application and International Search
The International ApplicationArticle 3 The RequestArticle 4 The DescriptionArticle 5 The ClaimsArticle 6 The DrawingsArticle 7 Claiming PriorityArticle 8 The ApplicantArticle 9 The Receiving OfficeArticle 10 Filing Date and Effects of the International Application
Article 11
Transmittal of the International Application to the International Bureau
Article 12
and the International Searching Authority Availability of Copy of the International Application to Designated Offices
Article 13
Certain Defects in the International Application
Article 14
The International SearchArticle 15 The International Searching AuthorityArticle 16 Procedure Before the International Searching Authority
Article 17
The International Search ReportArticle 18 Amendment of the Claims Before the International Bureau
Article 19
Communication to Designated OfficesArticle 20 International PublicationArticle 21 Copy, Translation, and Fee, to Designated Offices
Article 22
Delaying of National ProcedureArticle 23 Possible Loss of Effect in Designated States
Article 24
Review by Designated OfficesArticle 25
Opportunity to Correct Before Designated Offices
Article 26
National RequirementsArticle 27 Amendment of the Claims, the Description, and the Drawings, Before Designated Offices
Article 28
Effects of the International PublicationArticle 29 Confidential Nature of the International Application
Article 30
Chapter II: International Preliminary Examination Demand for International Preliminary Examination
Article 31
The International Preliminary Examining Authority
Article 32
The International Preliminary Examination
Article 33
Procedure Before the International Preliminary Examining Authority
Article 34
The International Preliminary Examination Report
Article 35
Transmittal, Translation, and Communication, of the International Preliminary Examination Report
Article 36
Withdrawal of Demand or ElectionArticle 37 Confidential Nature of the International Preliminary Examination
Article 38
Copy, Translation, and Fee, to Elected Offices
Article 39
Delaying of National Examination and Other Processing
Article 40
Amendment of the Claims, the Description, and the Drawings, before Elected Offices
Article 41
Results of National Examination in Elected Offices
Article 42
Chapter III: Common Provisions Seeking Certain Kinds of ProtectionArticle 43 Seeking Two Kinds of ProtectionArticle 44 Regional Patent TreatiesArticle 45 Incorrect Translation of the International Application
Article 46
Time LimitsArticle 47 Delay in Meeting Certain Time LimitsArticle 48 Right to Practice Before International Authorities
Article 49
Chapter IV: Technical Services 1 This Table of Contents is added for the convenience of the reader. It does not appear in the signed text of the Treaty.
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Patent Information ServiceArticle 50 Technical AssistanceArticle 51 Relations with Other Provisions of the Treaty
Article 52
Chapter V: Administrative Provisions AssemblyArticle 53 Executive CommitteeArticle 54 International BureauArticle 55 Committee for Technical CooperationArticle 56 FinancesArticle 57 RegulationsArticle 58
Chapter VI: Disputes DisputesArticle 59
Chapter VII: Revision and Amendments Revision of the TreatyArticle 60 Amendment of Certain Provisions of the Treaty
Article 61
Chapter VIII: Final Provisions Becoming Party to the TreatyArticle 62 Entry into Force of the TreatyArticle 63 ReservationsArticle 64 Gradual ApplicationArticle 65 DenunciationArticle 66 Signature and LanguagesArticle 67 Depositary FunctionsArticle 68 NotificationsArticle 69
Done at Washington on June 19, 1970, amended on September 28, 1979, modified on February 3, 1984, and October 3, 2001 (as in force from April 1, 2002)
TABLE OF CONTENTS 1
_________________________________________
The Contracting States,
Desiring to make a contribution to the progress of science and technology,
Desiring to perfect the legal protection of inventions,
Desiring to simplify and render more economical the obtaining of protection for inventions where protection is sought in several countries,
Desiring to facilitate and accelerate access by the public to the technical information contained in documents describing new inventions,
Desiring to foster and accelerate the economic development of developing countries through the adoption of measures designed to increase the efficiency of their legal systems, whether national or regional, instituted for the protection of inventions by providing easily accessible information on the availability of technological solutions applicable to their special needs and by facilitating access to the ever expanding volume of modern technology,
Convinced that cooperation among nations will greatly facilitate the attainment of these aims,
Have concluded the present Treaty.
Chapter Introductory Provisions [R-07.2015]
Article 1
Establishment of a Union
(1) The States party to this Treaty (hereinafter called “the Contracting States”) constitute a Union for cooperation in the filing, searching, and examination, of applications for the protection of inventions, and for rendering special technical services. The Union shall be known as the International Patent Cooperation Union.
(2) No provision of this Treaty shall be interpreted as diminishing the rights under the Paris Convention for the Protection of Industrial Property of any national or resident of any country party to that Convention.
1 Editor's Note: Table of Contents and Editor's Notes are added for the convenience of the reader; they do not appear in the signed text of the Treaty.
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PATENT COOPERATION TREATY1
Article 2
Definitions
For the purposes of this Treaty and the Regulations and unless expressly stated otherwise:
(i) “application” means an application for the protection of an invention; references to an “application” shall be construed as references to applications for patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition;
(ii) references to a “patent” shall be construed as references to patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition;
(iii) “national patent” means a patent granted by a national authority;
(iv) “regional patent” means a patent granted by a national or an intergovernmental authority having the power to grant patents effective in more than one State;
(v) “regional application” means an application for a regional patent;
(vi) references to a “national application” shall be construed as references to applications for national patents and regional patents, other than applications filed under this Treaty;
(vii) “international application” means an application filed under this Treaty;
(viii) references to an “application” shall be construed as references to international applications and national applications;
(ix) references to a “patent” shall be construed as references to national patents and regional patents;
(x) references to “national law” shall be construed as references to the national law of a Contracting State or, where a regional application or a regional patent is involved, to the treaty providing for the filing of regional applications or the granting of regional patents;
(xi) “priority date,” for the purposes of computing time limits, means:
(a) where the international application contains a priority claim under Article 8, the filing date of the application whose priority is so claimed;
(b) where the international application contains several priority claims under Article 8, the filing date of the earliest application whose priority is so claimed;
(c) where the international application does not contain any priority claim under Article 8, the international filing date of such application;
(xii) “national Office” means the government authority of a Contracting State entrusted with the granting of patents; references to a “national Office” shall be construed as referring also to any intergovernmental authority which several States have entrusted with the task of granting regional patents, provided that at least one of those States is a Contracting State, and provided that the said States have authorized that authority to assume the obligations and exercise the powers which this Treaty and the Regulations provide for in respect of national Offices;
(xiii) “designated Office” means the national Office of or acting for the State designated by the applicant under Chapter I of this Treaty;
(xiv) “elected Office” means the national Office of or acting for the State elected by the applicant under Chapter II of this Treaty;
(xv) “receiving Office” means the national Office or the intergovernmental organization with which the international application has been filed;
(xvi) “Union” means the International Patent Cooperation Union;
(xvii) “Assembly” means the Assembly of the Union;
(xviii) “Organization” means the World Intellectual Property Organization;
(xix) “International Bureau” means the International Bureau of the Organization and, as long as it subsists, the United International Bureaux for the Protection of Intellectual Property (BIRPI);
(xx) “Director General” means the Director General of the Organization and, as long as BIRPI subsists, the Director of BIRPI.
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Chapter I International Application and International Search [R-07.2015]
Article 3
The International Application
(1) Applications for the protection of inventions in any of the Contracting States may be filed as international applications under this Treaty.
(2) An international application shall contain, as specified in this Treaty and the Regulations, a request, a description, one or more claims, one or more drawings (where required), and an abstract.
(3) The abstract merely serves the purpose of technical information and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.
(4) The international application shall:
(i) be in a prescribed language;
(ii) comply with the prescribed physical requirements;
(iii) comply with the prescribed requirement of unity of invention;
(iv) be subject to the payment of the prescribed fees.
Article 4
The Request
(1) The request shall contain:
(i) a petition to the effect that the international application be processed according to this Treaty;
(ii) the designation of the Contracting State or States in which protection for the invention is desired on the basis of the international application (“designated States”); if for any designated State a regional patent is available and the applicant wishes to obtain a regional patent rather than a national patent, the request shall so indicate; if, under a treaty concerning a regional patent, the applicant cannot limit his application to certain of the States party to that treaty, designation of one of those States and
the indication of the wish to obtain the regional patent shall be treated as designation of all the States party to that treaty; if, under the national law of the designated State, the designation of that State has the effect of an application for a regional patent, the designation of the said State shall be treated as an indication of the wish to obtain the regional patent;
(iii) the name of and other prescribed data concerning the applicant and the agent (if any);
(iv) the title of the invention;
(v) the name of and other prescribed data concerning the inventor where the national law of at least one of the designated States requires that these indications be furnished at the time of filing a national application. Otherwise, the said indications may be furnished either in the request or in separate notices addressed to each designated Office whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application.
(2) Every designation shall be subject to the payment of the prescribed fee within the prescribed time limit.
(3) Unless the applicant asks for any of the other kinds of protection referred to in Article 43, designation shall mean that the desired protection consists of the grant of a patent by or for the designated State. For the purposes of this paragraph, Article 2(ii) shall not apply.
(4) Failure to indicate in the request the name and other prescribed data concerning the inventor shall have no consequence in any designated State whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application. Failure to furnish the said indications in a separate notice shall have no consequence in any designated State whose national law does not require the furnishing of the said indications.
Article 5
The Description
The description shall disclose the invention in a manner sufficiently clear and complete for the
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invention to be carried out by a person skilled in the art.
Article 6
The Claims
The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.
Article 7
The Drawings
(1) Subject to the provisions of paragraph (2)(ii), drawings shall be required when they are necessary for the understanding of the invention.
(2) Where, without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings:
(i) the applicant may include such drawings in the international application when filed,
(ii) any designated Office may require that the applicant file such drawings with it within the prescribed time limit.
Article 8
Claiming Priority
(1) The international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.
(2)
(a) Subject to the provisions of subparagraph (b), the conditions for, and the effect of, any priority claim declared under paragraph (1) shall be as provided in Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property.
(b) The international application for which the priority of one or more earlier applications filed in or for a Contracting State is claimed may contain the designation of that State. Where, in the
international application, the priority of one or more national applications filed in or for a designated State is claimed, or where the priority of an international application having designated only one State is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by the national law of that State.
Article 9
The Applicant
(1) Any resident or national of a Contracting State may file an international application.
(2) The Assembly may decide to allow the residents and the nationals of any country party to the Paris Convention for the Protection of Industrial Property which is not party to this Treaty to file international applications.
(3) The concepts of residence and nationality, and the application of those concepts in cases where there are several applicants or where the applicants are not the same for all the designated States, are defined in the Regulations.
Article 10
The Receiving Office
The international application shall be filed with the prescribed receiving Office, which will check and process it as provided in this Treaty and the Regulations.
Article 11
Filing Date and Effects of the International Application
(1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:
(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,
(ii) the international application is in the prescribed language,
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(iii) the international application contains at least the following elements:
(a) an indication that it is intended as an international application,
(b) the designation of at least one Contracting State,
(c) the name of the applicant, as prescribed,
(d) a part which on the face of it appears to be a description,
(e) a part which on the face of it appears to be a claim or claims.
(2)
(a) If the receiving Office finds that the international application did not, at the time of receipt, fulfill the requirements listed in paragraph (1), it shall, as provided in the Regulations, invite the applicant to file the required correction.
(b) If the applicant complies with the invitation, as provided in the Regulations, the receiving Office shall accord as the international filing date the date of receipt of the required correction.
(3) Subject to Article 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.
(4) Any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) shall be equivalent to a regular national filing within the meaning of the Paris Convention for the Protection of Industrial Property.
Article 12
Transmittal of the International Application to the International Bureau and the International Searching Authority
(1) One copy of the international application shall be kept by the receiving Office (“home copy”), one copy (“record copy”) shall be transmitted to the International Bureau, and another copy (“search
copy”) shall be transmitted to the competent International Searching Authority referred to in Article 16, as provided in the Regulations.
(2) The record copy shall be considered the true copy of the international application.
(3) The international application shall be considered withdrawn if the record copy has not been received by the International Bureau within the prescribed time limit.
Article 13
Availability of Copy of the International Application to Designated Offices
(1) Any designated Office may ask the International Bureau to transmit to it a copy of the international application prior to the communication provided for in Article 20, and the International Bureau shall transmit such copy to the designated Office as soon as possible after the expiration of one year from the priority date.
(2)
(a) The applicant may, at any time, transmit a copy of his international application to any designated Office.
(b) The applicant may, at any time, ask the International Bureau to transmit a copy of his international application to any designated Office, and the International Bureau shall transmit such copy to the designated Office as soon as possible.
(c) Any national Office may notify the International Bureau that it does not wish to receive copies as provided for in subparagraph (b), in which case that subparagraph shall not be applicable in respect of that Office.
Article 14
Certain Defects in the International Application
(1)
(a) The receiving Office shall check whether the international application contains any of the following defects, that is to say:
(i) it is not signed as provided in the Regulations;
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(ii) it does not contain the prescribed indications concerning the applicant;
(iii) it does not contain a title;
(iv) it does not contain an abstract;
(v) it does not comply to the extent provided in the Regulations with the prescribed physical requirements.
(b) If the receiving Office finds any of the said defects, it shall invite the applicant to correct the international application within the prescribed time limit, failing which that application shall be considered withdrawn and the receiving Office shall so declare.
(2) If the international application refers to drawings which, in fact, are not included in that application, the receiving Office shall notify the applicant accordingly and he may furnish them within the prescribed time limit and, if he does, the international filing date shall be the date on which the drawings are received by the receiving Office. Otherwise, any reference to the said drawings shall be considered non-existent
(3)
(a) If the receiving Office finds that, within the prescribed time limits, the fees prescribed under Article 3(4)(iv) have not been paid, or no fee prescribed under Article 4(2) has been paid in respect of any of the designated States, the international application shall be considered withdrawn and the receiving Office shall so declare.
(b) If the receiving Office finds that the fee prescribed under Article 4(2) has been paid in respect of one or more (but less than all) designated States within the prescribed time limit, the designation of those States in respect of which it has not been paid within the prescribed time limit shall be considered withdrawn and the receiving Office shall so declare.
(4) If, after having accorded an international filing date to the international application, the receiving Office finds, within the prescribed time limit, that any of the requirements listed in items (i) to (iii) of Article 11(1) was not complied with at that date, the said application shall be considered withdrawn and the receiving Office shall so declare.
Article 15
The International Search
(1) Each international application shall be the subject of international search.
(2) The objective of the international search is to discover relevant prior art.
(3) International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any).
(4) The International Searching Authority referred to in Article 16 shall endeavor to discover as much of the relevant prior art as its facilities permit, and shall, in any case, consult the documentation specified in the Regulations.
(5)(a) If the national law of the Contracting State so permits, the applicant who files a national application with the national Office of or acting for such State may, subject to the conditions provided for in such law, request that a search similar to an international search (international-type search) be carried out on such application.
(b) If the national law of the Contracting State so permits, the national Office of or acting for such State may subject any national application filed with it to an international-type search.
(c) The international-type search shall be carried out by the International Searching Authority referred to in Article 16 which would be competent for an international search if the national application were an international application and were filed with the Office referred to in subparagraphs (a) and (b). If the national application is in a language which the International Searching Authority considers it is not equipped to handle, the international-type search shall be carried out on a translation prepared by the applicant in a language prescribed for international applications and which the International Searching Authority has undertaken to accept for international applications. The national application and the translation, when required, shall be presented in the form prescribed for international applications.
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Article 16
The International Searching Authority
(1) International search shall be carried out by an International Searching Authority, which may be either a national Office or an intergovernmental organization, such as the International Patent Institute, whose tasks include the establishing of documentary search reports on prior art with respect to inventions which are the subject of applications.
(2) If, pending the establishment of a single International Searching Authority, there are several International Searching Authorities, each receiving Office shall, in accordance with the provisions of the applicable agreement referred to in paragraph(3)(b), specify the International Searching Authority or Authorities competent for the searching of international applications filed with such Office.
(3)(a) International Searching Authorities shall be appointed by the Assembly. Any national Office and any intergovernmental organization satisfying the requirements referred to in subparagraph (c) may be appointed as International Searching Authority.
(b) Appointment shall be conditional on the consent of the national Office or intergovernmental organization to be appointed and the conclusion of an agreement, subject to approval by the Assembly, between such Office or organization and the International Bureau. The agreement shall specify the rights and obligations of the parties, in particular, the formal undertaking by the said Office or organization to apply and observe all the common rules of international search.
(c) The Regulations prescribe the minimum requirements, particularly as to manpower and documentation, which any Office or organization must satisfy before it can be appointed and must continue to satisfy while it remains appointed.
(d) Appointment shall be for a fixed period of time and may be extended for further periods.
(e) Before the Assembly makes a decision on the appointment of any national Office or intergovernmental organization, or on the extension of its appointment, or before it allows any such appointment to lapse, the Assembly shall hear the interested Office or organization and seek the advice
of the Committee for Technical Cooperation referred to in Article 56 once that Committee has been established.
Article 17
Procedure Before the International Searching Authority
(1) Procedure before the International Searching Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.
(2)(a) If the International Searching Authority considers:
(i) that the international application relates to a subject matter which the International Searching Authority is not required, under the Regulations, to search, and in the particular case decides not to search, or
(ii) that the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out, the said Authority shall so declare and shall notify the applicant and the International Bureau that no international search report will be established.
(b) If any of the situations referred to in subparagraph (a) is found to exist in connection with certain claims only, the international search report shall so indicate in respect of such claims, whereas, for the other claims, the said report shall be established as provided in Article 18.
(3)
(a) If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it shall invite the applicant to pay additional fees. The International Searching Authority shall establish the international search report on those parts of the international application which relate to the invention first mentioned in the claims (“main invention”) and, provided the required additional fees have been paid within the prescribed time limit, on those parts of the international application which relate to
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inventions in respect of which the said fees were paid.
(b) The national law of any designated State may provide that, where the national Office of that State finds the invitation, referred to in subparagraph (a), of the International Searching Authority justified and where the applicant has not paid all additional fees, those parts of the international application which consequently have not been searched shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.
Article 18
The International Search Report
(1) The international search report shall be established within the prescribed time limit and in the prescribed form.
(2) The international search report shall, as soon as it has been established, be transmitted by the International Searching Authority to the applicant and the International Bureau.
(3) The international search report or the declaration referred to in Article 17(2)(a) shall be translated as provided in the Regulations. The translations shall be prepared by or under the responsibility of the International Bureau.
Article 19
Amendment of the Claims Before the International Bureau
(1) The applicant shall, after having received the international search report, be entitled to one opportunity to amend the claims of the international application by filing amendments with the International Bureau within the prescribed time limit. He may, at the same time, file a brief statement, as provided in the Regulations, explaining the amendments and indicating any impact that such amendments might have on the description and the drawings.
(2) The amendments shall not go beyond the disclosure in the international application as filed.
(3) If the national law of any designated State permits amendments to go beyond the said
disclosure, failure to comply with paragraph (2) shall have no consequence in that State.
Article 20
Communication to Designated Offices
(1)
(a) The international application, together with the international search report (including any indication referred to in Article 17(2)(b)) or the declaration referred to in Article 17(2)(a), shall be communicated to each designated Office, as provided in the Regulations, unless the designated Office waives such requirement in its entirety or in part.
(b) The communication shall include the translation (as prescribed) of the said report or declaration.
(2) If the claims have been amended by virtue of Article 19(1), the communication shall either contain the full text of the claims both as filed and as amended or shall contain the full text of the claims as filed and specify the amendments, and shall include the statement, if any, referred to in Article 19(1).
(3) At the request of the designated Office or the applicant, the International Searching Authority shall send to the said Office or the applicant, respectively, copies of the documents cited in the international search report, as provided in the Regulations.
Article 21
International Publication
(1) The International Bureau shall publish international applications.
(2)
(a) Subject to the exceptions provided for in subparagraph (b) and in Article 64(3), the international publication of the international application shall be effected promptly after the expiration of 18 months from the priority date of that application.
(b) The applicant may ask the International Bureau to publish his international application any time before the expiration of the time limit referred to in subparagraph (a). The International Bureau
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shall proceed accordingly, as provided in the Regulations.
(3) The international search report or the declaration referred to in Article 17(2)(a) shall be published as prescribed in the Regulations.
(4) The language and form of the international publication and other details are governed by the Regulations.
(5) There shall be no international publication if the international application is withdrawn or is considered withdrawn before the technical preparations for publication have been completed.
(6) If the international application contains expressions or drawings which, in the opinion of the International Bureau, are contrary to morality or public order, or if, in its opinion, the international application contains disparaging statements as defined in the Regulations, it may omit such expressions drawings, and statements, from its publications, indicating the place and number of words or drawings omitted, and furnishing, upon request, individual copies of the passages omitted.
Article 22
Copy, Translation, and Fee, to Designated Offices
(1) The applicant shall furnish a copy of the international application (unless the communication provided for in Article 20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each designated Office not
later than at the expiration of 30 1 months from the priority date. Where the national law of the designated State requires the indication of the name of and other prescribed data concerning the inventor but allows that these indications be furnished at a time later than that of the filing of a national
application, the applicant shall, unless they were contained in the request, furnish the said indications to the national Office of or acting for the State not
later than at the expiration of 30 2 months from the priority date.
(2) Where the International Searching Authority makes a declaration, under Article 17(2)(a), that no international search report will be established, the time limit for performing the acts referred to in paragraph (1) of this Article shall be the same as that provided for in paragraph (1).
(3) Any national law may, for performing the acts referred to in paragraphs (1) or (2), fix time limits which expire later than the time limit provided for in those paragraphs.
Article 23
Delaying of National Procedure
(1) No designated Office shall process or examine the international application prior to the expiration of the applicable time limit under Article 22.
(2) Notwithstanding the provisions of paragraph (1), any designated Office may, on the express request of the applicant, process or examine the international application at any time.
Article 24
Possible Loss of Effect in Designated States
(1) Subject, in case (ii) below, to the provisions of Article 25, the effect of the international application provided for in Article 11(3) shall cease in any designated State with the same consequences as the withdrawal of any national application in that State:
1 Editor’s Note: The 30-month time limit, as in force from April 1, 2002, does not apply in respect of any designated Office which has notified the International Bureau of incompatibility with the national law applied by that Office. The 20-month time limit, as in force until March 31, 2002, continues to apply after that date in respect of any such designated Office for as long as Article 22(1), as modified, continues not to be compatible with the applicable national law. Information received by the International Bureau concerning any such incompatibility is published in the Gazette and on the WIPO website at: www.wipo.int/pct/en/texts/reservations/res_incomp.html .
2 Editor’s Note: The 30-month time limit, as in force from April 1, 2002, does not apply in respect of any designated Office which has notified the International Bureau of incompatibility with the national law applied by that Office. The 20-month time limit, as in force until March 31, 2002, continues to apply after that date in respect of any such designated Office for as long as Article 22(1), as modified, continues not to be compatible with the applicable national law. Information received by the International Bureau concerning any such incompatibility is published in the Gazette and on the WIPO website at: www.wipo.int/pct/en/texts/reservations/res_incomp.html .
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(i) if the applicant withdraws his international application or the designation of that State;
(ii) if the international application is considered withdrawn by virtue of Articles 12(3), 14(1)(b), 14(3)(a), or 14(4), or if the designation of that State is considered withdrawn by virtue of Article 14(3)(b);
(iii) if the applicant fails to perform the acts referred to in Article 22 within the applicable time limit.
(2) Notwithstanding the provisions of paragraph (1), any designated Office may maintain the effect provided for in Article 11(3) even where such effect is not required to be maintained by virtue of Article 25(2).
Article 25
Review by Designated Offices
(1)(a) Where the receiving Office has refused to accord an international filing date or has declared that the international application is considered withdrawn, or where the International Bureau has made a finding under Article 12(3), the International Bureau shall promptly send, at the request of the applicant, copies of any document in the file to any of the designated Offices named by the applicant.
(b) Where the receiving Office has declared that the designation of any given State is considered withdrawn, the International Bureau shall promptly send, at the request of the applicant, copies of any document in the file to the national Office of such State.
(c) The request under subparagraphs (a) or (b) shall be presented within the prescribed time limit.
(2)(a) Subject to the provisions of subparagraph (b), each designated Office shall, provided that the national fee (if any) has been paid and the appropriate translation (as prescribed) has been furnished within the prescribed time limit, decide whether the refusal, declaration, or finding, referred to in paragraph (1) was justified under the provisions of this Treaty and the Regulations, and, if it finds that the refusal or declaration was the result of an error or omission on the part of the receiving Office or that the finding was the result of an error or omission on the part of the International Bureau,
it shall, as far as effects in the State of the designated Office are concerned, treat the international application as if such error or omission had not occurred.
(b) Where the record copy has reached the International Bureau after the expiration of the time limit prescribed under Article 12(3) on account of any error or omission on the part of the applicant, the provisions of subparagraph (a) shall apply only under the circumstances referred to in Article 48(2).
Article 26
Opportunity to Correct Before Designated Offices
No designated Office shall reject an international application on the grounds of non-compliance with the requirements of this Treaty and the Regulations without first giving the applicant the opportunity to correct the said application to the extent and according to the procedure provided by the national law for the same or comparable situations in respect of national applications.
Article 27
National Requirements
(1) No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations.
(2) The provisions of paragraph (1) neither affect the application of the provisions of Article 7(2) nor preclude any national law from requiring, once the processing of the international application has started in the designated Office, the furnishing:
(i) when the applicant is a legal entity, of the name of an officer entitled to represent such legal entity.
(ii) of documents not part of the international application but which constitute proof of allegations or statements made in that application, including the confirmation of the international application by the signature of the applicant when that application, as filed, was signed by his representative or agent.
(3) Where the applicant, for the purposes of any designated State, is not qualified according to the
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national law of that State to file a national application because he is not the inventor, the international application may be rejected by the designated Office.
(4) Where the national law provides, in respect of the form or contents of national applications, for requirements which, from the viewpoint of applicants, are more favorable than the requirements provided for by this Treaty and the Regulations in respect of international applications, the national Office, the courts and any other competent organs of or acting for the designated State may apply the former requirements, instead of the latter requirements, to international applications, except where the applicant insists that the requirements provided for by this Treaty and the Regulations be applied to his international application.
(5) Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires. In particular, any provision in this Treaty and the Regulations concerning the definition of prior art is exclusively for the purposes of the international procedure and, consequently, any Contracting State is free to apply, when determining the patentability of an invention claimed in an international application, the criteria of its national law in respect of prior art and other conditions of patentability not constituting requirements as to the form and contents of applications.
(6) The national law may require that the applicant furnish evidence in respect of any substantive condition of patentability prescribed by such law.
(7) Any receiving Office or, once the processing of the international application has started in the designated Office, that Office may apply the national law as far as it relates to any requirement that the applicant be represented by an agent having the right to represent applicants before the said Office and/or that the applicant have an address in the designated State for the purpose of receiving notifications.
(8) Nothing in this Treaty and the Regulations is intended to be construed as limiting the freedom of any Contracting State to apply measures deemed necessary for the preservation of its national security or to limit, for the protection of the general economic
interests of that State, the right of its own residents or nationals to file international applications.
Article 28
Amendment of the Claims, the Description, and the Drawings, Before Designated Offices
(1) The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each designated Office within the prescribed time limit. No designated Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired except with the express consent of the applicant.
(2) The amendments shall not go beyond the disclosure in the international application as filed unless the national law of the designated State permits them to go beyond the said disclosure.
(3) The amendments shall be in accordance with the national law of the designated State in all respects not provided for in this Treaty and the Regulations.
(4) Where the designated Office requires a translation of the international application, the amendments shall be in the language of the translation.
Article 29
Effects of the International Publication
(1) As far as the protection of any rights of the applicant in a designated State is concerned, the effects, in that State, of the international publication of an international application shall, subject to the provisions of paragraphs (2) to (4), be the same as those which the national law of the designated State provides for the compulsory national publication of unexamined national applications as such.
(2) If the language in which the international publication has been effected is different from the language in which publications under the national law are effected in the designated State, the said national law may provide that the effects provided for in paragraph (1) shall be applicable only from such time as:
(i) a translation into the latter language has been published as provided by the national law, or
(ii) a translation into the latter language has been made available to the public, by laying open
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for public inspection as provided by the national law, or
(iii) a translation into the latter language has been transmitted by the applicant to the actual or prospective unauthorized user of the invention claimed in the international application, or
(iv) both the acts described in (i) and (iii), or both the acts described in (ii) and (iii), have taken place.
(3) The national law of any designated State may provide that, where the international publication has been effected, on the request of the applicant, before the expiration of 18 months from the priority date, the effects provided for in paragraph (1) shall be applicable only from the expiration of 18 months from the priority date.
(4) The national law of any designated State may provide that the effects provided for in paragraph (1) shall be applicable only from the date on which a copy of the international application as published under Article 21 has been received in the national Office of or acting for such State. The said Office shall publish the date of receipt in its gazette as soon as possible.
Article 30
Confidential Nature of the International Application
(1)(a) Subject to the provisions of subparagraph (b), the International Bureau and the International Searching Authorities shall not allow access by any person or authority to the international application before the international publication of that application, unless requested or authorized by the applicant.
(b) The provisions of subparagraph (a) shall not apply to any transmittal to the competent International Searching Authority, to transmittals provided for under Article 13, and to communications provided for under Article 20.
(2)(a) No national Office shall allow access to the international application by third parties, unless requested or authorized by the applicant, before the earliest of the following dates:
(i) date of the international publication of the international application,
(ii) date of the receipt of the communication of the international application under Article 20,
(iii) date of the receipt of a copy of the international application under Article 22.
(b) The provisions of subparagraph (a) shall not prevent any national Office from informing third parties that it has been designated, or from publishing that fact. Such information or publication may, however, contain only the following data: identification of the receiving Office, name of the applicant, international filing date, international application number, and title of the invention.
(c) The provisions of subparagraph (a) shall not prevent any designated Office from allowing access to the international application for the purposes of the judicial authorities.
(3) The provisions of paragraph (2)(a) shall apply to any receiving Office except as far as transmittals provided for under Article 12(1) are concerned.
(4) For the purposes of this Article, the term “access” covers any means by which third parties may acquire cognizance, including individual communication and general publication, provided, however, that no national Office shall generally publish an international application or its translation before the international publication or, if international publication has not taken place by the expiration of 20 months from the priority date, before the expiration of 20 months from the said priority date.
Chapter II International Preliminary Examination [R-07.2015]
Article 31
Demand for International Preliminary Examination
(1) On the demand of the applicant, his international application shall be the subject of an international preliminary examination as provided in the following provisions and the Regulations.
(2)(a) Any applicant who is a resident or national, as defined in the Regulations, of a
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Contracting State bound by Chapter II, and whose international application has been filed with the receiving Office of or acting for such State, may make a demand for international preliminary examination.
(b) The Assembly may decide to allow persons entitled to file international applications to make a demand for international preliminary examination even if they are residents or nationals of a State not party to this Treaty or not bound by Chapter II.
(3) The demand for international preliminary examination shall be made separately from the international application. The demand shall contain the prescribed particulars and shall be in the prescribed language and form.
(4)(a) The demand shall indicate the Contracting State or States in which the applicant intends to use the results of the international preliminary examination (“elected States”). Additional Contracting States may be elected later. Election may relate only to Contracting States already designated under Article 4.
(b) Applicants referred to in paragraph (2)(a) may elect any Contracting State bound by Chapter II. Applicants referred to in paragraph (2)(b) may elect only such Contracting States bound by Chapter II as have declared that they are prepared to be elected by such applicants.
(5) The demand shall be subject to the payment of the prescribed fees within the prescribed time limit.
(6)(a) The demand shall be submitted to the competent International Preliminary Examining Authority referred to in Article 32.
(b) Any later election shall be submitted to the International Bureau.
(7) Each elected Office shall be notified of its election.
Article 32
The International Preliminary Examining Authority
(1) International preliminary examination shall be carried out by the International Preliminary Examining Authority.
(2) In the case of demands referred to in Article 31(2)(a), the receiving Office, and, in the case of demands referred to in Article 31(2)(b), the Assembly, shall, in accordance with the applicable agreement between the interested International Preliminary Examining Authority or Authorities and the International Bureau, specify the International Preliminary Examining Authority or Authorities competent for the preliminary examination.
(3) The provisions of Article 16(3) shall apply, mutatis mutandis, in respect of International Preliminary Examining Authorities.
Article 33
The International Preliminary Examination
(1) The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.
(2) For the purposes of the international preliminary examination, a claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations.
(3) For the purposes of the international preliminary examination, a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.
(4) For the purposes of the international preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. “Industry” shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.
(5) The criteria described above merely serve the purposes of international preliminary examination. Any Contracting State may apply additional or different criteria for the purpose of deciding whether, in that State, the claimed invention is patentable or not.
(6) The international preliminary examination shall take into consideration all the documents cited
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in the international search report. It may take into consideration any additional documents considered to be relevant in the particular case.
Article 34
Procedure Before the International Preliminary Examining Authority
(1) Procedure before the International Preliminary Examining Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.
(2)(a) The applicant shall have a right to communicate orally and in writing with the International Preliminary Examining Authority.
(b) The applicant shall have a right to amend the claims, the description, and the drawings, in the prescribed manner and within the prescribed time limit, before the international preliminary examination report is established. The amendment shall not go beyond the disclosure in the international application as filed.
(c) The applicant shall receive at least one written opinion from the International Preliminary Examining Authority unless such Authority considers that all of the following conditions are fulfilled:
(i) the invention satisfies the criteria set forth in Article 33(1),
(ii) the international application complies with the requirements of this Treaty and the Regulations in so far as checked by that Authority,
(iii) no observations are intended to be made under Article 35(2), last sentence.
(d) The applicant may respond to the written opinion.
(3)(a) If the International Preliminary Examining Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it may invite the applicant, at his option, to restrict the claims so as to comply with the requirement or to pay additional fees.
(b) The national law of any elected State may provide that, where the applicant chooses to restrict
the claims under subparagraph (a), those parts of the international application which, as a consequence of the restriction, are not to be the subject of international preliminary examination shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.
(c) If the applicant does not comply with the invitation referred to in subparagraph (a) within the prescribed time limit, the International Preliminary Examining Authority shall establish an international preliminary examination report on those parts of the international application which relate to what appears to be the main invention and shall indicate the relevant facts in the said report. The national law of any elected State may provide that, where its national Office finds the invitation of the International Preliminary Examining Authority justified, those parts of the international application which do not relate to the main invention shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to that Office.
(4)(a) If the International Preliminary Examining Authority considers
(i) that the international application relates to a subject matter on which the International Preliminary Examining Authority is not required, under the Regulations, to carry out an international preliminary examination, and in the particular case decides not to carry out such examination, or
(ii) that the description, the claims, or the drawings, are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness), or industrial applicability, of the claimed invention, the said authority shall not go into the questions referred to in Article 33(1) and shall inform the applicant of this opinion and the reasons therefor.
(b) If any of the situations referred to in subparagraph (a) is found to exist in, or in connection with, certain claims only, the provisions of that subparagraph shall apply only to the said claims.
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Article 35
The International Preliminary Examination Report
(1) The international preliminary examination report shall be established within the prescribed time limit and in the prescribed form.
(2) The international preliminary examination report shall not contain any statement on the question whether the claimed invention is or seems to be patentable or unpatentable according to any national law. It shall state, subject to the provisions of paragraph (3), in relation to each claim, whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined for the purposes of the international preliminary examination in Article 33(1) to (4). The statement shall be accompanied by the citation of the documents believed to support the stated conclusion with such explanations as the circumstances of the case may require. The statement shall also be accompanied by such other observations as the Regulations provide for.
(3)(a) If, at the time of establishing the international preliminary examination report, the International Preliminary Examining Authority considers that any of the situations referred to in Article 34(4)(a) exists, that report shall state this opinion and the reasons therefor. It shall not contain any statement as provided in paragraph (2).
(b) If a situation under Article 34(4)(b) is found to exist, the international preliminary examination report shall, in relation to the claims in question, contain the statement as provided in subparagraph (a), whereas, in relation to the other claims, it shall contain the statement as provided in paragraph (2).
Article 36
Transmittal, Translation, and Communication, of the International Preliminary Examination Report
(1) The international preliminary examination report, together with the prescribed annexes, shall be transmitted to the applicant and to the International Bureau.
(2)(a) The international preliminary examination report and its annexes shall be translated into the prescribed languages.
(b) Any translation of the said report shall be prepared by or under the responsibility of the International Bureau, whereas any translation of the said annexes shall be prepared by the applicant.
(3)(a) The international preliminary examination report, together with its translation (as prescribed) and its annexes (in the original language), shall be communicated by the International Bureau to each elected Office.
(b) The prescribed translation of the annexes shall be transmitted within the prescribed time limit by the applicant to the elected Office.
(4) The provisions of Article 20(3) shall apply, mutatis mutandis, to copies of any document which is cited in the international preliminary examination report and which was not cited in the international search report.
Article 37
Withdrawal of Demand or Election
(1) The applicant may withdraw any or all elections.
(2) If the election of all elected States is withdrawn, the demand shall be considered withdrawn.
(3)(a) Any withdrawal shall be notified to the International Bureau.
(b) The elected Offices concerned and the International Preliminary Examining Authority concerned shall be notified accordingly by the International Bureau.
(4)(a) Subject to the provisions of subparagraph (b), withdrawal of the demand or of the election of a Contracting State shall, unless the national law of that State provides otherwise, be considered to be withdrawal of the international application as far as that State is concerned.
(b) Withdrawal of the demand or of the election shall not be considered to be withdrawal of the international application if such withdrawal is effected prior to the expiration of the applicable time limit under Article 22; however, any Contracting State may provide in its national law that the
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aforesaid shall apply only if its national Office has received, within the said time limit, a copy of the international application, together with a translation (as prescribed), and the national fee.
Article 38
Confidential Nature of the International Preliminary Examination
(1) Neither the International Bureau nor the International Preliminary ExaminingAuthority shall, unless requested or authorized by the applicant, allow access within the meaning, and with the proviso, of Article 30(4) to the file of the international preliminary examination by any person or authority at any time, except by the elected Offices once the international preliminary examination report has been established.
(2) Subject to the provisions of paragraph (1) and Articles 36(1) and (3) and 37(3)(b), neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or authorized by the applicant, give information on the issuance or nonissuance of an international preliminary examination report and on the withdrawal or non-withdrawal of the demand or of any election.
Article 39
Copy, Translation, and Fee, to Elected Offices
(1)(a) If the election of any Contracting State has been effected prior to the expiration of the 19th month from the priority date, the provisions of Article 22 shall not apply to such State and the applicant shall furnish a copy of the international application (unless the communication under Article 20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each elected Office not later than at the expiration of 30 months from the priority date.
(b) Any national law may, for performing the acts referred to in subparagraph (a), fix time limits which expire later than the time limit provided for in that subparagraph.
(2) The effect provided for in Article 11(3) shall cease in the elected State with the same consequences as the withdrawal of any national application in that State if the applicant fails to
perform the acts referred to in paragraph (1)(a) within the time limit applicable under paragraph (1)(a) or (b).
(3) Any elected Office may maintain the effect provided for in Article 11(3) even where the applicant does not comply with the requirements provided for in paragraph (1)(a) or (b).
Article 40
Delaying of National Examination and Other Processing
(1) If the election of any Contracting State has been effected prior to the expiration of the 19th month from the priority date, the provisions of Article 23 shall not apply to such State and the national Office of or acting for that State shall not proceed, subject to the provisions of paragraph (2), to the examination and other processing of the international application prior to the expiration of the applicable time limit under Article 39.
(2) Notwithstanding the provisions of paragraph (1), any elected Office may, on the express request of the applicant, proceed to the examination and other processing of the international application at any time.
Article 41
Amendment of the Claims, the Description, and the Drawings, before Elected Offices
(1) The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each elected Office within the prescribed time limit. No elected Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired, except with the express consent of the applicant.
(2) The amendments shall not go beyond the disclosure in the international application as filed, unless the national law of the elected State permits them to go beyond the said disclosure.
(3) The amendments shall be in accordance with the national law of the elected State in all respects not provided for in this Treaty and the Regulations.
(4) Where an elected Office requires a translation of the international application, the
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amendments shall be in the language of the translation.
Article 42
Results of National Examination in Elected Offices
No elected Office receiving the international preliminary examination report may require that the applicant furnish copies, or information on the contents, of any papers connected with the examination relating to the same international application in any other elected Office.
Chapter III Common Provisions [R-07.2015]
Article 43
Seeking Certain Kinds of Protection
In respect of any designated or elected State whose law provides for the grant of inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, or utility certificates of addition, the applicant may indicate, as prescribed in the Regulations, that his international application is for the grant, as far as that State is concerned, of an inventor’s certificate, a utility certificate, or a utility model, rather than a patent, or that it is for the grant of a patent or certificate of addition, an inventor’s certificate of addition, or a utility certificate of addition, and the ensuing effect shall be governed by the applicant’s choice. For the purposes of this Article and any Rule thereunder, Article 2(ii) shall not apply.
Article 44
Seeking Two Kinds of Protection
In respect of any designated or elected State whose law permits an application, while being for the grant of a patent or one of the other kinds of protection referred to in Article 43, to be also for the grant of another of the said kinds of protection, the applicant may indicate, as prescribed in the Regulations, the two kinds of protection he is seeking, and the
ensuing effect shall be governed by the applicant’s indications. For the purposes of this Article, Article 2(ii) shall not apply.
Article 45
Regional Patent Treaties
(1) Any treaty providing for the grant of regional patents (“regional patent treaty”), and giving to all persons who, according to Article 9, are entitled to file international applications the right to file applications for such patents, may provide that international applications designating or electing a State party to both the regional patent treaty and the present Treaty may be filed as applications for such patents.
(2) The national law of the said designated or elected State may provide that any designation or election of such State in the international application shall have the effect of an indication of the wish to obtain a regional patent under the regional patent treaty.
Article 46
Incorrect Translation of the International Application
If, because of an incorrect translation of the international application, the scope of any patent granted on that application exceeds the scope of the international application in its original language, the competent authorities of the Contracting State concerned may accordingly and retroactively limit the scope of the patent, and declare it null and void to the extent that its scope has exceeded the scope of the international application in its original language.
Article 47
Time Limits
(1) The details for computing time limits referred to in this Treaty are governed by the Regulations.
(2)(a) All time limits fixed in Chapters I and II of this Treaty may, outside any revision under Article 60, be modified by a decision of the Contracting States.
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(b) Such decisions shall be made in the Assembly or through voting by correspondence and must be unanimous.
(c) The details of the procedure are governed by the Regulations.
Article 48
Delay in Meeting Certain Time Limits
(1) Where any time limit fixed in this Treaty or the Regulations is not met because of interruption in the mail service or unavoidable loss or delay in the mail, the time limit shall be deemed to be met in the cases and subject to the proof and other conditions prescribed in the Regulations.
(2)(a) Any Contracting State shall, as far as that State is concerned, excuse, for reasons admitted under its national law, any delay in meeting any time limit.
(b) Any Contracting State may, as far as that State is concerned, excuse, for reasons other than those referred to in subparagraph (a), any delay in meeting any time limit.
Article 49
Right to Practice Before International Authorities
Any attorney, patent agent, or other person, having the right to practice before the national Office with which the international application was filed, shall be entitled to practice before the International Bureau and the competent International Searching Authority and competent International Preliminary Examining Authority in respect of that application.
Chapter IV Technical Services [R-07.2015]
Article 50
Patent Information Service
(1) The International Bureau may furnish services by providing technical and any other pertinent information available to it on the basis of published documents, primarily patents and published applications (referred to in this Article as “the information services”).
(2) The International Bureau may provide these information services either directly or through one or more International Searching Authorities or other national or international specialized institutions, with which the International Bureau may reach agreement.
(3) The information services shall be operated in a way particularly facilitating the acquisition by Contracting States which are developing countries of technical knowledge and technology, including available published know-how.
(4) The information services shall be available to Governments of Contracting States and their nationals and residents. The Assembly may decide to make these services available also to others.
(5)(a) Any service to Governments of Contracting States shall be furnished at cost, provided that, when the Government is that of a Contracting State which is a developing country, the service shall be furnished below cost if the difference can be covered from profit made on services furnished to others than Governments of Contracting States or from the sources referred to in Article 51(4).
(b) The cost referred to in subparagraph (a) is to be understood as cost over and above costs normally incident to the performance of the services of a national Office or the obligations of an International Searching Authority.
(6) The details concerning the implementation of the provisions of this Article shall be governed by decisions of the Assembly and, within the limits to be fixed by the Assembly, such working groups as the Assembly may set up for that purpose.
(7) The Assembly shall, when it considers it necessary, recommend methods of providing financing supplementary to those referred to in paragraph (5).
Article 51
Technical Assistance
(1) The Assembly shall establish a Committee for Technical Assistance (referred to in this Article as “the Committee”).
(2)(a) The members of the Committee shall be elected among the Contracting States, with due regard to the representation of developing countries.
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(b) The Director General shall, on his own initiative or at the request of the Committee, invite representatives of intergovernmental organizations concerned with technical assistance to developing countries to participate in the work of the Committee.
(3)(a) The task of the Committee shall be to organize and supervise technical assistance for Contracting States which are developing countries in developing their patent systems individually or on a regional basis.
(b) The technical assistance shall comprise, among other things, the training of specialists, the loaning of experts, and the supply of equipment both for demonstration and for operational purposes.
(4) The International Bureau shall seek to enter into agreements, on the one hand, with international financing organizations and intergovernmental organizations, particularly the United Nations, the agencies of the United Nations, and the Specialized Agencies connected with the United Nations concerned with technical assistance, and, on the other hand, with the Governments of the States receiving the technical assistance, for the financing of projects pursuant to this Article.
(5) The details concerning the implementation of the provisions of this Article shall be governed by decisions of the Assembly and, within the limits to be fixed by the Assembly, such working groups as the Assembly may set up for that purpose.
Article 52
Relations with Other Provisions of the Treaty
Nothing in this Chapter shall affect the financial provisions contained in any other Chapter of this Treaty. Such provisions are not applicable to the present Chapter or to its implementation.
Chapter V Administrative Provisions [R-07.2015]
Article 53
Assembly
(1)(a) The Assembly shall, subject to Article 57(8), consist of the Contracting States.
(b) The Government of each Contracting State shall be represented by one delegate, who may be assisted by alternate delegates, advisors, and experts.
(2)(a) The Assembly shall:
(i) deal with all matters concerning the maintenance and development of the Union and the implementation of this Treaty;
(ii) perform such tasks as are specifically assigned to it under other provisions of this Treaty;
(iii) give directions to the International Bureau concerning the preparation for revision conferences;
(iv) review and approve the reports and activities of the Director General concerning the Union, and give him all necessary instructions concerning matters within the competence of the Union;
(v) review and approve the reports and activities of the Executive Committee established under paragraph (9), and give instructions to such Committee;
(vi) determine the program and adopt the
triennial 1 budget of the Union, and approve its final accounts;
(vii) adopt the financial regulations of the Union;
(viii) establish such committees and working groups as it deems appropriate to achieve the objectives of the Union;
(ix) determine which States other than Contracting States and, subject to the provisions of paragraph (8), which intergovernmental and international non-governmental organizations shall be admitted to its meetings as observers;
1 Editor’s Note: Since 1980, the budget of the Union has been biennial.
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(x) take any other appropriate action designed to further the objectives of the Union and perform such other functions as are appropriate under this Treaty.
(b) With respect to matters which are of interest also to other Unions administered by the Organization, the Assembly shall make its decisions after having heard the advice of the Coordination Committee of the Organization.
(3) A delegate may represent, and vote in the name of, one State only.
(4) Each Contracting State shall have one vote.
(5)(a) One-half of the Contracting States shall constitute a quorum.
(b) In the absence of the quorum, the Assembly may make decisions but, with the exception of decisions concerning its own procedure, all such decisions shall take effect only if the quorum and the required majority are attained through voting by correspondence as provided in the Regulations.
(6)(a) Subject to the provisions of Articles 47(2)(b), 58(2)(b), 58(3) and 61(2)(b), the decisions of the Assembly shall require two-thirds of the votes cast.
(b) Abstentions shall not be considered as votes.
(7) In connection with matters of exclusive interest to States bound by Chapter II, any reference to Contracting States in paragraphs (4), (5), and (6), shall be considered as applying only to States bound by Chapter II.
(8) Any intergovernmental organization appointed as International Searching or Preliminary Examining Authority shall be admitted as observer to the Assembly.
(9) When the number of Contracting States exceeds forty, the Assembly shall establish an Executive Committee. Any reference to the Executive Committee in this Treaty and the Regulations shall be construed as references to such Committee once it has been established.
(10) Until the Executive Committee has been established, the Assembly shall approve, within the
limits of the program and triennial 1 budget, the
annual programs and budgets prepared by the Director General.
(11)(a) The Assembly shall meet in every second calendar year in ordinary session upon convocation by the Director General and, in the absence of exceptional circumstances, during the same period and at the same place as the General Assembly of the Organization.
(b) The Assembly shall meet in extraordinary session upon convocation by the Director General, at the request of the Executive Committee, or at the request of one-fourth of the Contracting States.
(12) The Assembly shall adopt its own rules of procedure.
Article 54
Executive Committee
(1) When the Assembly has established an Executive Committee, that Committee shall be subject to the provisions set forth hereinafter.
(2)(a) The Executive Committee shall, subject to Article 57(8), consist of States elected by the Assembly from among States members of the Assembly.
(b) The Government of each State member of the Executive Committee shall be represented by one delegate, who may be assisted by alternate delegates, advisors, and experts.
(3) The number of States members of the Executive Committee shall correspond to one-fourth of the number of States members of the Assembly. In establishing the number of seats to be filled, remainders after division by four shall be disregarded.
(4) In electing the members of the Executive Committee, the Assembly shall have due regard to an equitable geographical distribution.
(5)(a) Each member of the Executive Committee shall serve from the close of the session of the Assembly which elected it to the close of the next ordinary session of the Assembly.
(b) Members of the Executive Committee may be re-elected but only up to a maximum of two-thirds of such members.
1 Editor’s Note: Since 1980, the budget of the Union has been biennial.
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(c) The Assembly shall establish the details of the rules governing the election and possible re-election of the members of the Executive Committee.
(6)(a) The Executive Committee shall:
(i) prepare the draft agenda of the Assembly;
(ii) submit proposals to the Assembly in respect of the draft program and biennial budget of the Union prepared by the Director General;
(iii) [deleted]
(iv) submit, with appropriate comments, to the Assembly the periodical reports of the Director General and the yearly audit reports on the accounts;
(v) take all necessary measures to ensure the execution of the program of the Union by the Director General, in accordance with the decisions of the Assembly and having regard to circumstances arising between two ordinary sessions of the Assembly;
(vi) perform such other functions as are allocated to it under this Treaty.
(b) With respect to matters which are of interest also to other Unions administered by the Organization, the Executive Committee shall make its decisions after having heard the advice of the Coordination Committee of the Organization.
(7)(a) The Executive Committee shall meet once a year in ordinary session upon convocation by the Director General, preferably during the same period and at the same place as the Coordination Committee of the Organization.
(b) The Executive Committee shall meet in extraordinary session upon convocation by the Director General, either on his own initiative or at the request of its Chairman or one-fourth of its members.
(8)(a) Each State member of the Executive Committee shall have one vote.
(b) One-half of the members of the Executive Committee shall constitute a quorum.
(c) Decisions shall be made by a simple majority of the votes cast.
(d) Abstentions shall not be considered as votes.
(e) A delegate may represent, and vote in the name of, one State only.
(9) Contracting States not members of the Executive Committee shall be admitted to its meetings as observers, as well as any intergovernmental organization appointed as International Searching or Preliminary Examining Authority.
(10) The Executive Committee shall adopt its own rules of procedure.
Article 55
International Bureau
(1) Administrative tasks concerning the Union shall be performed by the International Bureau.
(2) The International Bureau shall provide the secretariat of the various organs of the Union.
(3) The Director General shall be the chief executive of the Union and shall represent the Union.
(4) The International Bureau shall publish a Gazette and other publications provided for by the Regulations or required by the Assembly.
(5) The Regulations shall specify the services that national Offices shall perform in order to assist the International Bureau and the International Searching and Preliminary Examining Authorities in carrying out their tasks under this Treaty.
(6) The Director General and any staff member designated by him shall participate, without the right to vote, in all meetings of the Assembly, the Executive Committee and any other committee or working group established under this Treaty or the Regulations. The Director General, or a staff member designated by him, shall be ex officio secretary of these bodies.
(7)(a) The International Bureau shall, in accordance with the directions of the Assembly and in cooperation with the Executive Committee, make the preparations for the revision conferences.
(b) The International Bureau may consult with intergovernmental and international non-governmental organizations concerning preparations for revision conferences.
(c) The Director General and persons designated by him shall take part, without the right to vote, in the discussions at revision conferences.
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(8) The International Bureau shall carry out any other tasks assigned to it.
Article 56
Committee for Technical Cooperation
(1) The Assembly shall establish a Committee for Technical Cooperation (referred to in this Article as “the Committee”).
(2)(a) The Assembly shall determine the composition of the Committee and appoint its members, with due regard to an equitable representation of developing countries.
(b) The International Searching and Preliminary Examining Authorities shall be ex officio members of the Committee. In the case where such an Authority is the national Office of a Contracting State, that State shall not be additionally represented on the Committee.
(c) If the number of Contracting States so allows, the total number of members of the Committee shall be more than double the number of ex officio members.
(d) The Director General shall, on his own initiative or at the request of the Committee, invite representatives of interested organizations to participate in discussions of interest to them.
(3) The aim of the Committee shall be to contribute, by advice and recommendations:
(i) to the constant improvement of the services provided for under this Treaty,
(ii) to the securing, so long as there are several International Searching Authorities and several International Preliminary Examining Authorities, of the maximum degree of uniformity in their documentation and working methods and the maximum degree of uniformly high quality in their reports, and
(iii) on the initiative of the Assembly or the Executive Committee, to the solution of the technical problems specifically involved in the establishment of a single International Searching Authority.
(4) Any Contracting State and any interested international organization may approach the Committee in writing on questions which fall within the competence of the Committee.
(5) The Committee may address its advice and recommendations to the Director General or, through him, to the Assembly, the Executive Committee, all or some of the International Searching and Preliminary Examining Authorities, and all or some of the receiving Offices.
(6)(a) In any case, the Director General shall transmit to the Executive Committee the texts of all the advice and recommendations of the Committee. He may comment on such texts.
(b) The Executive Committee may express its views on any advice, recommendation, or other activity of the Committee, and may invite the Committee to study and report on questions falling within its competence. The Executive Committee may submit to the Assembly, with appropriate comments, the advice, recommendations and report of the Committee.
(7) Until the Executive Committee has been established, references in paragraph (6) to the Executive Committee shall be construed as references to the Assembly.
(8) The details of the procedure of the Committee shall be governed by the decisions of the Assembly.
Article 57
Finances
(1)(a) The Union shall have a budget.
(b) The budget of the Union shall include the income and expenses proper to the Union and its contribution to the budget of expenses common to the Unions administered by the Organization.
(c) Expenses not attributable exclusively to the Union but also to one or more other Unions administered by the Organization shall be considered as expenses common to the Unions. The share of the Union in such common expenses shall be in proportion to the interest the Union has in them.
(2) The budget of the Union shall be established with due regard to the requirements of coordination with the budgets of the other Unions administered by the Organization.
(3) Subject to the provisions of paragraph (5), the budget of the Union shall be financed from the following sources:
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(i) fees and charges due for services rendered by the International Bureau in relation to the Union;
(ii) sale of, or royalties on, the publications of the International Bureau concerning the Union;
(iii) gifts, bequests, and subventions;
(iv) rents, interests, and other miscellaneous income.
(4) The amounts of fees and charges due to the International Bureau and the prices of its publications shall be so fixed that they should, under normal circumstances, be sufficient to cover all the expenses of the International Bureau connected with the administration of this Treaty.
(5)(a) Should any financial year close with a deficit, the Contracting States shall, subject to the provisions of subparagraphs (b) and (c), pay contributions to cover such deficit.
(b) The amount of the contribution of each Contracting State shall be decided by the Assembly with due regard to the number of international applications which has emanated from each of them in the relevant year.
(c) If other means of provisionally covering any deficit or any part thereof are secured, the Assembly may decide that such deficit be carried forward and that the Contracting States should not be asked to pay contributions.
(d) If the financial situation of the Union so permits, the Assembly may decide that any contributions paid under subparagraph (a) be reimbursed to the Contracting States which have paid them.
(e) A Contracting State which has not paid, within two years of the due date as established by the Assembly, its contribution under subparagraph (b) may not exercise its right to vote in any of the organs of the Union. However, any organ of the Union may allow such a State to continue to exercise its right to vote in that organ so long as it is satisfied that the delay in payment is due to exceptional and unavoidable circumstances.
(6) If the budget is not adopted before the beginning of a new financial period, it shall be at the same level as the budget of the previous year, as provided in the financial regulations.
(7)(a) The Union shall have a working capital fund which shall be constituted by a single payment made by each Contracting State. If the fund becomes insufficient, the Assembly shall arrange to increase it. If part of the fund is no longer needed, it shall be reimbursed.
(b) The amount of the initial payment of each Contracting State to said fund or of its participation in the increase thereof shall be decided by the Assembly on the basis of principles similar to those provided for under paragraph (5)(b).
(c) The terms of payment shall be fixed by theAssembly on the proposal of the Director General and after it has heard the advice of the Coordination Committee of the Organization.
(d) Any reimbursement shall be proportionate to the amounts paid by each Contracting State, taking into account the dates at which they were paid.
(8)(a) In the headquarters agreement concluded with the State on the territory of which the Organization has its headquarters, it shall be provided that, whenever the working capital fund is insufficient, such State shall grant advances. The amount of these advances and the conditions on which they are granted shall be the subject of separate agreements, in each case, between such State and the Organization. As long as it remains under the obligation to grant advances, such State shall have an ex officio seat in the Assembly and on the Executive Committee.
(b) The State referred to in subparagraph (a) and the Organization shall each have the right to denounce the obligation to grant advances, by written notification. Denunciation shall take effect three years after the end of the year in which it has been notified.
(9) The auditing of the accounts shall be effected by one or more of the Contracting States or by external auditors, as provided in the financial regulations. They shall be designated, with their agreement, by the Assembly.
Article 58
Regulations
(1) The Regulations annexed to this Treaty provide Rules:
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(i) concerning matters in respect of which this Treaty expressly refers to the Regulations or expressly provides that they are or shall be prescribed,
(ii) concerning any administrative requirements, matters, or procedures,
(iii) concerning any details useful in the implementation of the provisions of this Treaty.
(2)(a) The Assembly may amend the Regulations.
(b) Subject to the provisions of paragraph (3), amendments shall require three-fourths of the votes cast.
(3)(a) The Regulations specify the Rules which may be amended
(i) only by unanimous consent, or
(ii) only if none of the Contracting States whose national Office acts as an International Searching or Preliminary Examining Authority dissents, and, where such Authority is an intergovernmental organization, if the Contracting State member of that organization authorized for that purpose by the other member States within the competent body of such organization does not dissent.
(b) Exclusion, for the future, of any such Rules from the applicable requirement shall require the fulfillment of the conditions referred to in subparagraph (a)(i) or (a)(ii), respectively.
(c) Inclusion, for the future, of any Rule in one or the other of the requirements referred to in subparagraph (a) shall require unanimous consent.
(4) The Regulations provide for the establishment, under the control of the Assembly, of Administrative Instructions by the Director General.
(5) In the case of conflict between the provisions of the Treaty and those of the Regulations, the provisions of the Treaty shall prevail.
Chapter VI Disputes [R-07.2015]
Article 59
Disputes
Subject to Article 64(5), any dispute between two or more Contracting States concerning the interpretation or application of this Treaty or the Regulations, not settled by negotiation, may, by any one of the States concerned, be brought before the International Court of Justice by application in conformity with the Statute of the Court, unless the States concerned agree on some other method of settlement. The Contracting State bringing the dispute before the Court shall inform the International Bureau; the International Bureau shall bring the matter to the attention of the other Contracting States.
Chapter VII Revision and Amendments [R-07.2015]
Article 60
Revision of the Treaty
(1) This Treaty may be revised from time to time by a special conference of the Contracting States.
(2) The convocation of any revision conference shall be decided by the Assembly.
(3) Any intergovernmental organization appointed as International Searching or Preliminary Examining Authority shall be admitted as observer to any revision conference.
(4) Articles 53(5), (9) and (11), 54, 55(4) to (8), 56, and 57, may be amended either by a revision conference or according to the provisions of Article 61.
Article 61
Amendment of Certain Provisions of the Treaty
(1)(a) Proposals for the amendment of Articles 53(5), (9) and (11), 54, 55(4) to (8), 56, and 57, may be initiated by any State member of the
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Assembly, by the Executive Committee, or by the Director General.
(b) Such proposals shall be communicated by the Director General to the Contracting States at least six months in advance of their consideration by the Assembly.
(2)(a) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly.
(b) Adoption shall require three-fourths of the votes cast.
(3)(a) Any amendment to the Articles referred to in paragraph (1) shall enter into force one month after written notifications of acceptance, effected in accordance with their respective constitutional processes, have been received by the Director General from three-fourths of the States members of the Assembly at the time it adopted the amendment.
(b) Any amendment to the said Articles thus accepted shall bind all the States which are members of the Assembly at the time the amendment enters into force, provided that any amendment increasing the financial obligations of the Contracting States shall bind only those States which have notified their acceptance of such amendment.
(c) Any amendment accepted in accordance with the provisions of subparagraph (a) shall bind all States which become members of the Assembly after the date on which the amendment entered into force in accordance with the provisions of subparagraph (a).
Chapter VIII Final Provisions [R-07.2015]
Article 62
Becoming Party to the Treaty
(1) Any State member of the International Union for the Protection of Industrial Property may become party to this Treaty by:
(i) signature followed by the deposit of an instrument of ratification, or
(ii) deposit of an instrument of accession.
(2) Instruments of ratification or accession shall be deposited with the Director General.
(3) The provisions of Article 24 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property shall apply to this Treaty.
(4) Paragraph (3) shall in no way be understood as implying the recognition or tacit acceptance by a Contracting State of the factual situation concerning a territory to which this Treaty is made applicable by another Contracting State by virtue of the said paragraph.
Article 63
Entry into Force of the Treaty
(1)(a) Subject to the provisions of paragraph (3), this Treaty shall enter into force three months after eight States have deposited their instruments of ratification or accession, provided that at least four of those States each fulfill any of the following conditions:
(i) the number of applications filed in the State has exceeded 40,000 according to the most recent annual statistics published by the International Bureau,
(ii) the nationals or residents of the State have filed at least 1,000 applications in one foreign country according to the most recent annual statistics published by the International Bureau,
(iii) the national Office of the State has received at least 10,000 applications from nationals or residents of foreign countries according to the most recent annual statistics published by the International Bureau.
(b) For the purposes of this paragraph, the term “applications” does not include applications for utility models.
(2) Subject to the provisions of paragraph (3), any State which does not become party to this Treaty upon entry into force under paragraph (1) shall become bound by this Treaty three months after the date on which such State has deposited its instrument of ratification or accession.
(3) The provisions of Chapter II and the corresponding provisions of the Regulations annexed to this Treaty shall become applicable, however, only on the date on which three States each of which fulfill at least one of the three requirements specified in paragraph (1) have become party to this Treaty
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without declaring, as provided in Article 64(1), that they do not intend to be bound by the provisions of Chapter II. That date shall not, however, be prior to that of the initial entry into force under paragraph (1).
Article 64
Reservations
(1)(a) Any State may declare that it shall not be bound by the provisions of Chapter II.
(b) States making a declaration under subparagraph (a) shall not be bound by the provisions of Chapter II and the corresponding provisions of the Regulations.
(2)(a) Any State not having made a declaration under paragraph(1)(a) may declare that:
(i) it shall not be bound by the provisions of Article 39(1) with respect to the furnishing of a copy of the international application and a translation thereof (as prescribed),
(ii) the obligation to delay national processing, as provided for under Article 40, shall not prevent publication, by or through its national Office, of the international application or a translation thereof, it being understood, however, that it is not exempted from the limitations provided for in Articles 30 and 38.
(b) States making such a declaration shall be bound accordingly.
(3)(a) Any State may declare that, as far as it is concerned, international publication of international applications is not required.
(b) Where, at the expiration of 18 months from the priority date, the international application contains the designation only of such States as have made declarations under subparagraph (a), the international application shall not be published by virtue of Article 21(2).
(c) Where the provisions of subparagraph (b) apply, the international application shall nevertheless be published by the International Bureau:
(i) at the request of the applicant, as provided in the Regulations,
(ii) when a national application or a patent based on the international application is published by or on behalf of the national Office of
any designated State having made a declaration under subparagraph (a), promptly after such publication but not before the expiration of 18 months from the priority date.
(4)(a) Any State whose national law provides for prior art effect of its patents as from a date before publication, but does not equate for prior art purposes the priority date claimed under the Paris Convention for the Protection of Industrial Property to the actual filing date in that State, may declare that the filing outside that State of an international application designating that State is not equated to an actual filing in that State for prior art purposes.
(b) Any State making a declaration under subparagraph (a) shall to that extent not be bound by the provisions of Article 11(3).
(c) Any State making a declaration under subparagraph (a) shall, at the same time, state in writing the date from which, and the conditions under which, the prior art effect of any international application designating that State becomes effective in that State. This statement may be modified at any time by notification addressed to the Director General.
(5) Each State may declare that it does not consider itself bound by Article 59. With regard to any dispute between any Contracting State having made such a declaration and any other Contracting State, the provisions of Article 59 shall not apply.
(6)(a) Any declaration made under this Article shall be made in writing. It may be made at the time of signing this Treaty, at the time of depositing the instrument of ratification or accession, or, except in the case referred to in paragraph (5), at any later time by notification addressed to the Director General. In the case of the said notification, the declaration shall take effect six months after the day on which the Director General has received the notification, and shall not affect international applications filed prior to the expiration of the said six-month period.
(b) Any declaration made under this Article may be withdrawn at any time by notification addressed to the Director General. Such withdrawal shall take effect three months after the day on which the Director General has received the notification and, in the case of the withdrawal of a declaration made under paragraph (3), shall not affect
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international applications filed prior to the expiration of the said three-month period.
(7) No reservations to this Treaty other than the reservations under paragraphs (1) to (5) are permitted.
Article 65
Gradual Application
(1) If the agreement with any International Searching or Preliminary Examining Authority provides, transitionally, for limits on the number or kind of international applications that such Authority undertakes to process, the Assembly shall adopt the measures necessary for the gradual application of this Treaty and the Regulations in respect of given categories of international applications. This provision shall also apply to requests for an international-type search under Article 15(5).
(2) The Assembly shall fix the dates from which, subject to the provision of paragraph (1), international applications may be filed and demands for international preliminary examination may be submitted. Such dates shall not be later than six months after this Treaty has entered into force according to the provisions of Article 63(1), or after Chapter II has become applicable under Article 63(3), respectively.
Article 66
Denunciation
(1) Any Contracting State may denounce this Treaty by notification addressed to the Director General.
(2) Denunciation shall take effect six months after receipt of the said notification by the Director General. It shall not affect the effects of the international application in the denouncing State if the international application was filed, and, where the denouncing State has been elected, the election was made, prior to the expiration of the said six-month period.
Article 67
Signature and Languages
(1)(a) This Treaty shall be signed in a single original in the English and French languages, both texts being equally authentic.
(b) Official texts shall be established by the Director General, after consultation with the interested Governments, in the German, Japanese, Portuguese, Russian and Spanish languages, and such other languages as theAssembly may designate.
(2) This Treaty shall remain open for signature at Washington until December 31, 1970.
Article 68
Depositary Functions
(1) The original of this Treaty, when no longer open for signature, shall be deposited with the Director General.
(2) The Director General shall transmit two copies, certified by him, of this Treaty and the Regulations annexed hereto to the Governments of all States party to the Paris Convention for the Protection of Industrial Property and, on request, to the Government of any other State.
(3) The Director General shall register this Treaty with the Secretariat of the United Nations.
(4) The Director General shall transmit two copies, certified by him, of any amendment to this Treaty and the Regulations to the Governments of all Contracting States and, on request, to the Government of any other State.
Article 69
Notifications
The Director General shall notify the Governments of all States party to the Paris Convention for the Protection of Industrial Property of:
(i) signatures under Article 62,
(ii) deposits of instruments of ratification or accession under Article 62,
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(iii) the date of entry into force of this Treaty and the date from which Chapter II is applicable in accordance with Article 63(3),
(iv) any declarations made under Article 64(1) to (5),
(v) withdrawals of any declarations made under Article 64(6)(b),
(vi) denunciations received under Article 66, and
(vii) any declarations made under Article 31(4).
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Regulations Under the Patent Cooperation Treaty
(as in force from July 1, 2015)
Adopted on June 19, 1970, and amended on April 14, 1978, October 3, 1978, May 1, 1979, June 16, 1980, September 26, 1980, July 3, 1981, September 10, 1982, October 4, 1983, February 3, 1984, September 28, 1984, October 1, 1985, July 12, 1991, October 2, 1991, September 29, 1992, September 29, 1993, October 3, 1995, October 1, 1997, September 15, 1998, September 29, 1999, March 17, 2000, October 3, 2000, October 3, 2001, October 1, 2002, October 1, 2003, October 5, 2004, October 5, 2005, October 3, 2006, November 12, 2007, May 15, 2008, September 29, 2008, October 1, 2009, September 29, 2010, October 5, 2011, October 9, 2012, October 2, 2013, and September 30, 2014.
TABLE OF CONTENTS 1
Part A: Introductory Rules
Rule 1 Abbreviated Expressions Rule 2 Interpretation of Certain Words
Part B: Rules Concerning Chapter I of the Treaty
Rule 3 The Request (Form) Rule 4 The Request (Contents) Rule 5 The Description Rule 6 The Claims Rule 7 The Drawings Rule 8 The Abstract Rule 9 Expressions, Etc., Not To Be Used Rule 10 Terminology and Signs Rule 11 Physical Requirements of the International
Application Rule 12 Language of the International Application and
Translations for the Purposes of International Search and International Publication
Rule 12 bis Copy of Results of Earlier Search and of Earlier Application; Translation
Rule 13 Unity of Invention Rule 13 bis Inventions Relating to Biological Material Rule 13 ter Nucleotide and/or Amino Acid Sequence Listings Rule 14 The Transmittal Fee Rule 15 The International Filing Fee Rule 16 The Search Fee Rule 16 bis Extension of Time Limits for Payment of Fees Rule 17 The Priority Document Rule 18 The Applicant Rule 19 The Competent Receiving Office Rule 20 International Filing Date Rule 21 Preparation of Copies Rule 22 Transmittal of the Record Copy and Translation
Rule 23 Transmittal of the Search Copy, Translation and Sequence Listing
Rule 24 Receipt of the Record Copy by the International Bureau
Rule 25 Receipt of the Search Copy by the International Searching Authority
Rule 26 Checking by, and Correcting Before, the Receiving Office of Certain Elements of the International Application
Rule 26 bis Correction or Addition of Priority Claim Rule 26 ter Correction or Addition of Declarations Under Rule
4.17 Rule 27 Lack of Payment of Fees Rule 28 Defects Noted by the International Bureau Rule 29 International Applications Considered Withdrawn Rule 30 Time Limit Under Article 14(4) Rule 31 Copies Required Under Article 13 Rule 32 Extension of Effects of International Application to
Certain Successor States Rule 32 bis [Deleted] Rule 33 Relevant Prior Art for the International Search Rule 34 Minimum Documentation Rule 35 The Competent International Searching Authority Rule 36 Minimum Requirements for International Searching
Authorities Rule 37 Missing or Defective Title Rule 38 Missing or Defective Abstract Rule 39 Subject Matter Under Article 17(2)(a)(i) Rule 40 Lack of Unity of Invention (International Search) Rule 41 Taking into Account Results of Earlier Search Rule 42 Time Limit for International Search Rule 43 The International Search Report Rule 43 bis Written Opinion of the International Searching
Authority Rule 44 Transmittal of the International Search Report,
Written Opinion, Etc. Rule 44 bis International Preliminary Report on Patentability by
the International Searching Authority Rule 45 Translation of the International Search Report Rule 45 bis Supplementary International Searches Rule 46 Amendment of Claims before the International
Bureau Rule 47 Communication to Designated Offices Rule 48 International Publication Rule 49 Copy, Translation and Fee Under Article 22 Rule 49 bis Indications as to Protection Sought for Purposes of
National Processing Rule 49 ter Effect of Restoration of Right of Priority by
Receiving Office; Restoration of Right of Priority By Designated Office
Rule 50 Faculty Under Article 22(3) Rule 51 Review by Designated Offices Rule 51 bis Certain National Requirements Allowed Under
Article 27 Rule 52 Amendment of the Claims, the Description, and the
Drawings, Before Designated Offices
Part C: Rules Concerning Chapter II of the Treaty
Rule 53 The Demand Rule 54 The Applicant Entitled to Make a Demand Rule 54 bis Time Limit for Making a Demand Rule 55 Languages (International Preliminary Examination) Rule 56 [Deleted] Rule 57 The Handling Fee Rule 58 The Preliminary Examination Fee Rule 58 bis Extension of Time Limits for Payment of Fees
1 Editor's Note: Table of Contents and Editor's Notes are added for the convenience of the reader; they do not form part of the Regulations.
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Rule 59 The Competent International Preliminary Examining Authority
Rule 60 Certain Defects in the Demand Rule 61 Notification of the Demand and Elections Rule 62 Copy of the Written Opinion by the International
Searching Authority and of Amendments under Article 19 for the International Preliminary Examining Authority
Rule 62 bis Translation for the International Preliminary Examining Authority of the Written Opinion of the International Searching Authority
Rule 63 Minimum Requirements for International Preliminary Examining Authorities
Rule 64 Prior Art for International Preliminary Examination Rule 65 Inventive Step or Non-Obviousness Rule 66 Procedure before the International Preliminary
Examining Authority Rule 67 Subject Matter Under Article 34(4)(a)(i) Rule 68 Lack of Unity of Invention (International Preliminary
Examination) Rule 69 Start of and Time Limit for International Preliminary
Examination Rule 70 International Preliminary Report on Patentability by
the International Preliminary Examining Authority (International Preliminary Examination Report)
Rule 71 Transmittal of the International Preliminary Examination Report
Rule 72 Translation of the International Preliminary Examination Report and of the Written Opinion of the International Searching Authority
Rule 73 Communication of the International Preliminary Examination Report or the Written Opinion of the International Searching Authority
Rule 74 Translations of Annexes of the International Preliminary Examination Report and Transmittal Thereof
Rule 75 [Deleted] Rule 76 Translation of Priority Document; Application of
Certain Rules to Procedures Before Elected Offices Rule 77 Faculty Under Article 39(1)(b) Rule 78 Amendment of the Claims, the Description, and the
Drawings, Before Elected Offices
Part D: Rules Concerning Chapter III of the Treaty
Rule 79 Calendar Rule 80 Computation of Time Limits Rule 81 Modification of Time Limits Fixed in the Treaty Rule 82 Irregularities in the Mail Service Rule 82 bis Excuse by the Designated or Elected State of Delays
in Meeting Certain Time Limits Rule 82 ter Rectification of Errors Made by the Receiving Office
or by the International Bureau Rule 82 quater Excuse of Delay in Meeting Time Limits Rule 83 Right to Practice Before International Authorities
Part E: Rules Concerning Chapter V of the Treaty
Rule 84 Expenses of Delegations Rule 85 Absence of Quorum in the Assembly Rule 86 The Gazette Rule 87 Communication of Publications Rule 88 Amendment of the Regulations Rule 89 Administrative Instructions
Part F: Rules Concerning Several Chapters of the Treaty
Rule 89 bis Filing, Processing and Communication of International Applications and Other Documents in Electronic Form or by Electronic Means
Rule 89 ter Copies in Electronic Form of Documents Filed on Paper
Rule 90 Agents and Common Representatives
Rule 90 bis Withdrawals Rule 91 Rectification of Obvious Mistakes in the
International Application and Other Documents Rule 92 Correspondence Rule 92 bis Recording of Changes in Certain Indications in the
Request or the Demand Rule 93 Keeping of Records and Files Rule 93 bis Manner of Communication of Documents Rule 94 Access to Files Rule 95 Availability of Translations Rule 96 The Schedule of Fees
PART A
Introductory Rules
Rule 1
Abbreviated Expressions
1.1 Meaning of Abbreviated Expressions
(a) In these Regulations, the word “Treaty” means the Patent Cooperation Treaty.
(b) In these Regulations, the words “Chapter” and “Article” refer to the specified Chapter or Article of the Treaty.
Rule 2
Interpretation of Certain Words
2.1 “Applicant”
Whenever the word “applicant” is used, it shall be construed as meaning also the agent or other representative of the applicant, except where the contrary clearly follows from the wording or the nature of the provision, or the context in which the word is used, such as, in particular, where the provision refers to the residence or nationality of the applicant.
2.2 “Agent”
Whenever the word “agent” is used, it shall be construed as meaning an agent appointed under Rule 90.1, unless the contrary clearly follows from the
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wording or the nature of the provision, or the context in which the word is used.
2.2 bis “Common Representative”
Whenever the expression “common representative” is used, it shall be construed as meaning an applicant appointed as, or considered to be, the common representative under Rule 90.2.
2.3 “Signature”
Whenever the word “signature” is used, it shall be understood that, if the national law applied by the receiving Office or the competent International Searching or Preliminary Examining Authority requires the use of a seal instead of a signature, the word, for the purposes of that Office or Authority, shall mean seal.
2.4 “Priority Period”
(a) Whenever the term “priority period” is used in relation to a priority claim, it shall be construed as meaning the period of 12 months from the filing date of the earlier application whose priority is so claimed. The day of filing of the earlier application shall not be included in that period.
(b) Rule 80.5 shall apply mutatis mutandis to the priority period.
PART B
Rules Concerning Chapter I of the Treaty
Rule 3
The Request (Form)
3.1 Form of Request
The request shall be made on a printed form or be presented as a computer print-out.
3.2 Availability of Forms
Copies of the printed form shall be furnished free of charge to the applicants by the receiving Office, or,
if the receiving Office so desires, by the International Bureau.
3.3 Check List
(a) The request shall contain a list indicating:
(i) the total number of sheets constituting the international application and the number of the sheets of each element of the international application: request, description (separately indicating the number of sheets of any sequence listing part of the description), claims, drawings, abstract;
(ii) where applicable, that the international application as filed is accompanied by a power of attorney (i.e., a document appointing an agent or a common representative), a copy of a general power of attorney, a priority document, a sequence listing in electronic form, a document relating to the payment of fees, or any other document (to be specified in the check list);
(iii) the number of that figure of the drawings which the applicant suggests should accompany the abstract when the abstract is published; in exceptional cases, the applicant may suggest more than one figure.
(b) The list shall be completed by the applicant, failing which the receiving Office shall make the necessary indications, except that the number referred to in paragraph (a)(iii) shall not be indicated by the receiving Office.
3.4 Particulars
Subject to Rule 3.3, particulars of the printed request form and of a request presented as a computer print-out shall be prescribed by the Administrative Instructions.
Rule 4
The Request (Contents)
4.1 Mandatory and Optional Contents; Signature
(a) The request shall contain:
(i) a petition,
(ii) the title of the invention,
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(iii) indications concerning the applicant and the agent, if there is an agent,
(iv) indications concerning the inventor where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application.
(b) The request shall, where applicable, contain:
(i) a priority claim,
(ii) indications relating to an earlier search as provided in Rules 4.12(i) and 12 bis.1(c) and (f),
(iii) a reference to a parent application or parent patent,
(iv) an indication of the applicant’s choice of competent International Searching Authority.
(c) The request may contain:
(i) indications concerning the inventor where the national law of none of the designated States requires that the name of the inventor be furnished at the time of filing a national application,
(ii) a request to the receiving Office to prepare and transmit the priority document to the International Bureau where the application whose priority is claimed was filed with the national Office or intergovernmental authority which is the receiving Office,
(iii) declarations as provided in Rule 4.17,
(iv) a statement as provided in Rule 4.18,
(v) a request for restoration of the right of priority,
(vi) a statement as provided in Rule 4.12(ii).
(d) The request shall be signed.
4.2 The Petition
The petition shall be to the following effect and shall preferably be worded as follows: “The undersigned requests that the present international application be
processed according to the Patent Cooperation Treaty.”
4.3 Title of the Invention
The title of the invention shall be short (preferably from two to seven words when in English or translated into English) and precise.
4.4 Names and Addresses
(a) Names of natural persons shall be indicated by the person’s family name and given name(s), the family name being indicated before the given name(s).
(b) Names of legal entities shall be indicated by their full, official designations.
(c) Addresses shall be indicated in such a way as to satisfy the customary requirements for prompt postal delivery at the indicated address and, in any case, shall consist of all the relevant administrative units up to, and including, the house number, if any. Where the national law of the designated State does not require the indication of the house number, failure to indicate such number shall have no effect in that State. In order to allow rapid communication with the applicant, it is recommended to indicate any teleprinter address, telephone and facsimile machine numbers, or corresponding data for other like means of communication, of the applicant or, where applicable, the agent or the common representative.
(d) For each applicant, inventor, or agent, only one address may be indicated, except that, if no agent has been appointed to represent the applicant, or all of them if more than one, the applicant or, if there is more than one applicant, the common representative, may indicate, in addition to any other address given in the request, an address to which notifications shall be sent.
4.5 The Applicant
(a) The request shall indicate:
(i) the name,
(ii) the address, and
(iii) the nationality and residence
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of the applicant or, if there are several applicants, of each of them.
(b) The applicant’s nationality shall be indicated by the name of the State of which he is a national.
(c) The applicant’s residence shall be indicated by the name of the State of which he is a resident.
(d) The request may, for different designated States, indicate different applicants. In such a case, the request shall indicate the applicant or applicants for each designated State or group of designated States.
(e) Where the applicant is registered with the national Office that is acting as receiving Office, the request may indicate the number or other indication under which the applicant is so registered.
4.6 The Inventor
(a) Where Rule 4.1(a)(iv) or (c)(i) applies, the request shall indicate the name and address of the inventor or, if there are several inventors, of each of them.
(b) If the applicant is the inventor, the request, in lieu of the indication under paragraph (a), shall contain a statement to that effect.
(c) The request may, for different designated States, indicate different persons as inventors where, in this respect, the requirements of the national laws of the designated States are not the same. In such a case, the request shall contain a separate statement for each designated State or group of States in which a particular person, or the same person, is to be considered the inventor, or in which particular persons, or the same persons, are to be considered the inventors.
4.7 The Agent
(a) If an agent is appointed, the request shall so indicate, and shall state the agent’s name and address.
(b) Where the agent is registered with the national Office that is acting as receiving Office, the
request may indicate the number or other indication under which the agent is so registered.
4.8 Common Representative
If a common representative is appointed, the request shall so indicate.
4.9 Designation of States; Kinds of Protection; National and Regional Patents
(a) The filing of a request shall constitute:
(i) the designation of all Contracting States that are bound by the Treaty on the international filing date;
(ii) an indication that the international application is, in respect of each designated State to which Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State;
(iii) an indication that the international application is, in respect of each designated State to which Article 45(1) applies, for the grant of a regional patent and also, unless Article 45(2) applies, a national patent.
(b) Notwithstanding paragraph (a)(i), if, on October 5, 2005, the national law of a Contracting State provides that the filing of an international application which contains the designation of that State and claims the priority of an earlier national application having effect in that State shall have the result that the earlier national application ceases to have effect with the same consequences as the withdrawal of the earlier national application, any request in which the priority of an earlier national application filed in that State is claimed may contain an indication that the designation of that State is not made, provided that the designated Office notifies the International Bureau by January 5, 2006, that this paragraph shall apply in respect of designations of that State and that the notification is still in force on the international filing date. The information received shall be promptly published by the International Bureau in the Gazette.
(c) [Deleted]
4.10 Priority Claim
(a) Any declaration referred to in Article 8(1) (“priority claim”) may claim the priority of one or
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more earlier applications filed either in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for any Member of the World Trade Organization that is not party to that Convention. Any priority claim shall be made in the request; it shall consist of a statement to the effect that the priority of an earlier application is claimed and shall indicate:
(i) the date on which the earlier application was filed;
(ii) the number of the earlier application;
(iii) where the earlier application is a national application, the country party to the Paris Convention for the Protection of Industrial Property or the Member of the World Trade Organization that is not party to that Convention in which it was filed;
(iv) where the earlier application is a regional application, the authority entrusted with the granting of regional patents under the applicable regional patent treaty;
(v) where the earlier application is an international application, the receiving Office with which it was filed.
(b) In addition to any indication required under paragraph (a)(iv) or (v):
(i) where the earlier application is a regional application or an international application, the priority claim may indicate one or more countries party to the Paris Convention for the Protection of Industrial Property for which that earlier application was filed;
(ii) where the earlier application is a regional application and at least one of the countries party to the regional patent treaty is neither party to the Paris Convention for the Protection of Industrial Property nor a Member of the World Trade Organization, the priority claim shall indicate at least one country party to that Convention or one Member of the Organization for which that earlier application was filed.
(c) For the purposes of paragraphs (a) and (b), Article 2(vi) shall not apply.
(d) If, on September 29, 1999, paragraphs (a) and (b) as amended with effect from January 1, 2000, are not compatible with the national law applied by a designated Office, those paragraphs as in force until December 31, 1999, shall continue to apply
after that date in respect of that designated Office for as long as the said paragraphs as amended continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by October 31, 1999. The information received shall be promptly published by the International Bureau in the Gazette.
4.11 Reference to Continuation or Continuation-in-Part, or Parent Application or Grant
(a) If:
(i) the applicant intends to make an indication under Rule 49 bis.1(a) or (b) of the wish that the international application be treated, in any designated State, as an application for a patent of addition, certificate of addition, inventor’s certificate of addition or utility certificate of addition; or
(ii) the applicant intends to make an indication under Rule 49 bis.1(d) of the wish that the international application be treated, in any designated State, as an application for a continuation or a continuation-in-part of an earlier application;
the request shall so indicate and shall indicate the relevant parent application or parent patent or other parent grant.
(b) The inclusion in the request of an indication under paragraph (a) shall have no effect on the operation of Rule 4.9.
4.12 Taking into Account Results of Earlier Search
If the applicant wishes the International Searching Authority to take into account, in carrying out the international search, the results of an earlier international, international-type or national search carried out by the same or another International Searching Authority or by a national Office (“earlier search”):
(i) the request shall so indicate and shall specify theAuthority or Office concerned and the application in respect of which the earlier search was carried out;
(ii) the request may, where applicable, contain a statement to the effect that the international application is the same, or substantially the same,
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as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language.
4.13 [Deleted]
4.14 [Deleted]
4.14 bis Choice of International Searching Authority
If two or more International Searching Authorities are competent for the searching of the international application, the applicant shall indicate his choice of International Searching Authority in the request.
4.15 Signature
The request shall be signed by the applicant or, if there is more than one applicant, by all of them.
4.16 Transliteration or Translation of Certain Words
(a) Where any name or address is written in characters other than those of the Latin alphabet, the same shall also be indicated in characters of the Latin alphabet either as a mere transliteration or through translation into English. The applicant shall decide which words will be merely transliterated and which words will be so translated.
(b) The name of any country written in characters other than those of the Latin alphabet shall also be indicated in English.
4.17 Declarations Relating to National Requirements Referred to in Rule 51 bis.1(a)(i) to (v)
The request may, for the purposes of the national law applicable in one or more designated States, contain one or more of the following declarations, worded as prescribed by the Administrative Instructions:
(i) a declaration as to the identity of the inventor, as referred to in Rule 51 bis.1(a)(i);
(ii) a declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent, as referred to in Rule 51 bis.1(a)(ii);
(iii) a declaration as to the applicant’s entitlement, as at the international filing date, to claim priority of the earlier application, as referred to in Rule 51 bis.1(a)(iii);
(iv) a declaration of inventorship, as referred to in Rule 51 bis.1(a)(iv), which shall be signed as prescribed by the Administrative Instructions;
(v) a declaration as to non-prejudicial disclosures or exceptions to lack of novelty, as referred to in Rule 51 bis.1(a)(v).
4.18 Statement of Incorporation by Reference
Where the international application, on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, claims the priority of an earlier application, the request may contain a statement that, where an element of the international application referred to in Article 11(1)(iii)(d) or (e) or a part of the description, claims or drawings referred to in Rule 20.5(a) is not otherwise contained in the international application but is completely contained in the earlier application, that element or part is, subject to confirmation under Rule 20.6, incorporated by reference in the international application for the purposes of Rule 20.6. Such a statement, if not contained in the request on that date, may be added to the request if, and only if, it was otherwise contained in, or submitted with, the international application on that date.
4.19 Additional Matter
(a) The request shall contain no matter other than that specified in Rules 4.1 to 4.18, provided that the Administrative Instructions may permit, but cannot make mandatory, the inclusion in the request of any additional matter specified in the Administrative Instructions.
(b) If the request contains matter other than that specified in Rules 4.1 to 4.18 or permitted under paragraph (a) by the Administrative Instructions, the receiving Office shall ex officio delete the additional matter.
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Rule 5
The Description
5.1 Manner of the Description
(a) The description shall first state the title of the invention as appearing in the request and shall:
(i) specify the technical field to which the invention relates;
(ii) indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, cite the documents reflecting such art;
(iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art;
(iv) briefly describe the figures in the drawings, if any;
(v) set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any; where the national law of the designated State does not require the description of the best mode but is satisfied with the description of any mode (whether it is the best contemplated or not), failure to describe the best mode contemplated shall have no effect in that State;
(vi) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the way in which it can be used; the term “industry” is to be understood in its broadest sense as in the Paris Convention for the Protection of Industrial Property.
(b) The manner and order specified in paragraph (a) shall be followed except when, because of the nature of the invention, a different manner or a different order would result in a better understanding and a more economic presentation.
(c) Subject to the provisions of paragraph (b), each of the parts referred to in paragraph (a) shall preferably be preceded by an appropriate heading as suggested in the Administrative Instructions.
5.2 Nucleotide and/or Amino Acid Sequence Disclosure
(a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the description shall contain a sequence listing complying with the standard provided for in the Administrative Instructions and presented as a separate part of the description in accordance with that standard.
(b) Where the sequence listing part of the description contains any free text as defined in the standard provided for in the Administrative Instructions, that free text shall also appear in the main part of the description in the language thereof.
Rule 6
The Claims
6.1 Number and Numbering of Claims
(a) The number of the claims shall be reasonable in consideration of the nature of the invention claimed.
(b) If there are several claims, they shall be numbered consecutively in Arabic numerals.
(c) The method of numbering in the case of the amendment of claims shall be governed by the Administrative Instructions.
6.2 References to Other Parts of the International Application
(a) Claims shall not, except where absolutely necessary, rely, in respect of the technical features of the invention, on references to the description or drawings. In particular, they shall not rely on such references as: “as described in part ... of the description,” or “as illustrated in figure ... of the drawings.”
(b) Where the international application contains drawings, the technical features mentioned in the claims shall preferably be followed by the reference signs relating to such features. When used, the
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reference signs shall preferably be placed between parentheses. If inclusion of reference signs does not particularly facilitate quicker understanding of a claim, it should not be made. Reference signs may be removed by a designated Office for the purposes of publication by such Office.
6.3 Manner of Claiming
(a) The definition of the matter for which protection is sought shall be in terms of the technical features of the invention.
(b) Whenever appropriate, claims shall contain:
(i) a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art,
(ii) a characterizing portion — preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect — stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect.
(c) Where the national law of the designated State does not require the manner of claiming provided for in paragraph (b), failure to use that manner of claiming shall have no effect in that State provided the manner of claiming actually used satisfies the national law of that State.
6.4 Dependent Claims
(a) Any claim which includes all the features of one or more other claims (claim in dependent form, hereinafter referred to as “dependent claim”) shall do so by a reference, if possible at the beginning, to the other claim or claims and shall then state the additional features claimed. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such claims in the alternative only. Multiple dependent claims shall not serve as a basis for any other multiple dependent claim. Where the national law of the national Office acting as International Searching Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the preceding two sentences, failure to use that manner of claiming may result in an indication under Article 17(2)(b) in the international search report. Failure to use the said manner of claiming shall have no
effect in a designated State if the manner of claiming actually used satisfies the national law of that State.
(b) Any dependent claim shall be construed as including all the limitations contained in the claim to which it refers or, if the dependent claim is a multiple dependent claim, all the limitations contained in the particular claim in relation to which it is considered.
(c) All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.
6.5 Utility Models
Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 6.1 to 6.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least two months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.
Rule 7
The Drawings
7.1 Flow Sheets and Diagrams
Flowsheets and diagrams are considered drawings.
7.2 Time Limit
The time limit referred to in Article 7(2)(ii) shall be reasonable under the circumstances of the case and shall, in no case, be shorter than two months from the date of the written invitation requiring the filing of drawings or additional drawings under the said provision.
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Rule 8
The Abstract
8.1 Contents and Form of the Abstract
(a) The abstract shall consist of the following:
(i) a summary of the disclosure as contained in the description, the claims, and any drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention;
(ii) where applicable, the chemical formula which, among all the formulae contained in the international application, best characterizes the invention.
(b) The abstract shall be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English).
(c) The abstract shall not contain statements on the alleged merits or value of the claimed invention or on its speculative application.
(d) Each main technical feature mentioned in the abstract and illustrated by a drawing in the international application shall be followed by a reference sign, placed between parentheses.
8.2 Figure
(a) If the applicant fails to make the indication referred to in Rule 3.3(a)(iii), or if the International Searching Authority finds that a figure or figures other than that figure or those figures suggested by the applicant would, among all the figures of all the drawings, better characterize the invention, it shall, subject to paragraph (b), indicate the figure or figures which should accompany the abstract when the latter is published by the International Bureau. In such case, the abstract shall be accompanied by the figure or figures so indicated by the International Searching Authority. Otherwise, the abstract shall, subject to paragraph (b), be accompanied by the figure or figures suggested by the applicant.
(b) If the International Searching Authority finds that none of the figures of the drawings is useful for the understanding of the abstract, it shall notify the
International Bureau accordingly. In such case, the abstract, when published by the International Bureau, shall not be accompanied by any figure of the drawings even where the applicant has made a suggestion under Rule 3.3(a)(iii).
8.3 Guiding Principles in Drafting
The abstract shall be so drafted that it can efficiently serve as a scanning tool for purposes of searching in the particular art, especially by assisting the scientist, engineer or researcher in formulating an opinion on whether there is a need for consulting the international application itself.
Rule 9
Expressions, Etc., Not To Be Used
9.1 Definition
The international application shall not contain:
(i) expressions or drawings contrary to morality;
(ii) expressions or drawings contrary to public order;
(iii) statements disparaging the products or processes of any particular person other than the applicant, or the merits or validity of applications or patents of any such person (mere comparisons with the prior art shall not be considered disparaging, per se);
(iv) any statement or other matter obviously irrelevant or unnecessary under the circumstances.
9.2 Noting of Lack of Compliance
The receiving Office and the International Searching Authority may note lack of compliance with the prescriptions of Rule 9.1 and may suggest to the applicant that he voluntarily correct his international application accordingly. If the lack of compliance was noted by the receiving Office, that Office shall inform the competent International Searching Authority and the International Bureau; if the lack of compliance was noted by the International
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Searching Authority, that Authority shall inform the receiving Office and the International Bureau.
9.3 Reference to Article 21(6)
“Disparaging statements,” referred to in Article 21(6), shall have the meaning as defined in Rule 9.1(iii).
Rule 10
Terminology and Signs
10.1 Terminology and Signs
(a) Units of weights and measures shall be expressed in terms of the metric system, or also expressed in such terms if first expressed in terms of a different system.
(b) Temperatures shall be expressed in degrees Celsius, or also expressed in degrees Celsius, if first expressed in a different manner.
(c) [Deleted]
(d) For indications of heat, energy, light, sound, and magnetism, as well as for mathematical formulae and electrical units, the rules of international practice shall be observed; for chemical formulae, the symbols, atomic weights, and molecular formulae, in general use, shall be employed.
(e) In general, only such technical terms, signs, and symbols should be used as are generally accepted in the art.
(f) When the international application or its translation is in Chinese, English, or Japanese, the beginning of any decimal fraction shall be marked by a period, whereas, when the international application or its translation is in a language other than Chinese, English, or Japanese, it shall be marked by a comma.
10.2 Consistency
The terminology and the signs shall be consistent throughout the international application.
Rule 11
Physical Requirements of the International Application
11.1 Number of Copies
(a) Subject to the provisions of paragraph (b), the international application and each of the documents referred to in the check list (Rule 3.3(a)(ii)) shall be filed in one copy.
(b) Any receiving Office may require that the international application and any of the documents referred to in the check list (Rule 3.3(a)(ii)), except the receipt for the fees paid or the check for the payment of the fees, be filed in two or three copies. In that case, the receiving Office shall be responsible for verifying the identity of the second and the third copies with the record copy.
11.2 Fitness for Reproduction
(a) All elements of the international application (i.e., the request, the description, the claims, the drawings, and the abstract) shall be so presented as to admit of direct reproduction by photography, electrostatic processes, photo offset, and microfilming, in any number of copies.
(b) All sheets shall be free from creases and cracks; they shall not be folded.
(c) Only one side of each sheet shall be used.
(d) Subject to Rule 11.10(d) and Rule 11.13(j), each sheet shall be used in an upright position (i.e., the short sides at the top and bottom).
11.3 Material to Be Used
All elements of the international application shall be on paper which shall be flexible, strong, white, smooth, non-shiny, and durable.
11.4 Separate Sheets, Etc.
(a) Each element (request, description, claims, drawings, abstract) of the international application shall commence on a new sheet.
(b) All sheets of the international application shall be so connected that they can be easily turned when consulted, and easily separated and joined
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again if they have been separated for reproduction purposes.
11.5 Size of Sheets
The size of the sheets shall be A4 (29.7 cm x 21 cm). However, any receiving Office may accept international applications on sheets of other sizes provided that the record copy, as transmitted to the International Bureau, and, if the competent International Searching Authority so desires, the search copy, shall be of A4 size.
11.6 Margins
(a) The minimum margins of the sheets containing the description, the claims, and the abstract, shall be as follows:
- top: 2 cm - left side: 2.5 cm - right side: 2 cm - bottom: 2 cm
(b) The recommended maximum, for the margins provided for in paragraph (a), is as follows:
- top: 4 cm - left side: 4 cm - right side: 3 cm - bottom: 3 cm
(c) On sheets containing drawings, the surface usable shall not exceed 26.2 cm x 17.0 cm. The sheets shall not contain frames around the usable or used surface. The minimum margins shall be as follows:
- top: 2.5 cm - left side: 2.5 cm - right side: 1.5 cm - bottom: 1 cm.
(d) The margins referred to in paragraphs (a) to (c) apply to A4-size sheets, so that, even if the receiving Office accepts other sizes, the A4-size record copy and, when so required, the A4-size search copy shall leave the aforesaid margins.
(e) Subject to paragraph (f) and to Rule 11.8(b), the margins of the international application, when submitted, must be completely blank.
(f) The top margin may contain in the left-hand corner an indication of the applicant’s file reference, provided that the reference appears within 1.5 cm from the top of the sheet. The number of characters in the applicant’s file reference shall not exceed the maximum fixed by the Administrative Instructions.
11.7 Numbering of Sheets
(a) All the sheets contained in the international application shall be numbered in consecutive Arabic numerals.
(b) The numbers shall be centered at the top or bottom of the sheet, but shall not be placed in the margin.
11.8 Numbering of Lines
(a) It is strongly recommended to number every fifth line of each sheet of the description, and of each sheet of claims.
(b) The numbers should appear in the right half of the left margin.
11.9 Writing of Text Matter
(a) The request, the description, the claims and the abstract shall be typed or printed.
(b) Only graphic symbols and characters, chemical or mathematical formulae, and certain characters in the Chinese or Japanese language may, when necessary, be written by hand or drawn.
(c) The typing shall be 1 1/2-spaced.
(d) All text matter shall be in characters the capital letters of which are not less than 0.28 cm high, and shall be in a dark, indelible color, satisfying the requirements specified in Rule 11.2, provided that any text matter in the request may be in characters the capital letters of which are not less than 0.21 cm high.
(e) As far as the spacing of the typing and the size of the characters are concerned, paragraphs (c) and (d) shall not apply to texts in the Chinese or Japanese languages.
11.10 Drawings, Formulae, and Tables, in Text Matter
(a) The request, the description, the claims and the abstract shall not contain drawings.
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(b) The description, the claims and the abstract may contain chemical or mathematical formulae.
(c) The description and the abstract may contain tables; any claim may contain tables only if the subject matter of the claim makes the use of tables desirable.
(d) Tables and chemical or mathematical formulae may be placed sideways on the sheet if they cannot be presented satisfactorily in an upright position thereon; sheets on which tables or chemical or mathematical formulae are presented sideways shall be so presented that the tops of the tables or formulae are at the left side of the sheet.
11.11 Words in Drawings
(a) The drawings shall not contain text matter, except a single word or words, when absolutely indispensable, such as “water,” “steam,” “open,” “closed,” “section on AB,” and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catchwords indispensable for understanding.
(b) Any words used shall be so placed that, if translated, they may be pasted over without interfering with any lines of the drawings.
11.12 Alterations, Etc.
Each sheet shall be reasonably free from erasures and shall be free from alterations, overwritings, and interlineations. Non-compliance with this Rule may be authorized if the authenticity of the content is not in question and the requirements for good reproduction are not in jeopardy.
11.13 Special Requirements for Drawings
(a) Drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without colorings.
(b) Cross-sections shall be indicated by oblique hatching which should not impede the clear reading of the reference signs and leading lines.
(c) The scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty.
(d) When, in exceptional cases, the scale is given on a drawing, it shall be represented graphically.
(e) All numbers, letters and reference lines, appearing on the drawings, shall be simple and clear. Brackets, circles or inverted commas shall not be used in association with numbers and letters.
(f) All lines in the drawings shall, ordinarily, be drawn with the aid of drafting instruments.
(g) Each element of each figure shall be in proper proportion to each of the other elements in the figure, except where the use of a different proportion is indispensable for the clarity of the figure.
(h) The height of the numbers and letters shall not be less than 0.32 cm. For the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used.
(i) The same sheet of drawings may contain several figures. Where figures on two or more sheets form in effect a single complete figure, the figures on the several sheets shall be so arranged that the complete figure can be assembled without concealing any part of any of the figures appearing on the various sheets.
(j) The different figures shall be arranged on a sheet or sheets without wasting space, preferably in an upright position, clearly separated from one another. Where the figures are not arranged in an upright position, they shall be presented sideways with the top of the figures at the left side of the sheet.
(k) The different figures shall be numbered in Arabic numerals consecutively and independently of the numbering of the sheets.
(l) Reference signs not mentioned in the description shall not appear in the drawings, and vice versa.
(m) The same features, when denoted by reference signs, shall, throughout the international application, be denoted by the same signs.
(n) If the drawings contain a large number of reference signs, it is strongly recommended to attach
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a separate sheet listing all reference signs and the features denoted by them.
11.14 Later Documents
Rules 10, and 11.1 to 11.13, also apply to any document—for example, replacement sheets, amended claims, translations—submitted after the filing of the international application.
Rule 12
Language of the International Application and Translations for the Purposes of International Search and International Publication
12.1 Languages Accepted for the Filing of International Applications
(a) An international application shall be filed in any language which the receiving Office accepts for that purpose.
(b) Each receiving Office shall, for the filing of international applications, accept at least one language which is both:
(i) a language accepted by the International Searching Authority, or, if applicable, by at least one of the International Searching Authorities, competent for the international searching of international applications filed with that receiving Office, and
(ii) a language of publication.
(iii) [Deleted]
(c) Notwithstanding paragraph (a), the request shall be filed in any language of publication which the receiving Office accepts for the purposes of this paragraph.
(d) Notwithstanding paragraph (a), any text matter contained in the sequence listing part of the description referred to in Rule 5.2(a) shall be
presented in accordance with the standard provided for in the Administrative Instructions.
12.1 bis Language of Elements and Parts Furnished under Rule 20.3, 20.5 or 20.6
An element referred to in Article 11(1)(iii)(d) or (e) furnished by the applicant under Rule 20.3(b) or 20.6(a) and a part of the description, claims or drawings furnished by the applicant under Rule 20.5(b) or 20.6(a) shall be in the language of the international application as filed or, where a translation of the application is required under Rule 12.3(a) or 12.4(a), in both the language of the application as filed and the language of that translation.
12.1ter Language of Indications Furnished under Rule 13bis.4
Any indication in relation to deposited biological material furnished under Rule 13 bis.4 shall be in the language in which the international application is filed, provided that, where a translation of the international application is required under Rule 12.3(a) or 12.4(a), any such indication shall be furnished in both the language in which the application is filed and the language of that translation.
12.2 Language of Changes in the International Application
(a) Any amendment of the international application shall, subject to Rules 46.3 and 55.3, be in the language in which the application is filed.
(b) Any rectification under Rule 91.1 of an obvious mistake in the international application shall be in the language in which the application is filed, provided that:
(i) where a translation of the international application is required under Rule 12.3(a), 12.4(a) or 55.2(a), rectifications referred to in Rule 91.1(b)(ii) and (iii) shall be filed in both the language of the application and the language of that translation;
(ii) where a translation of the request is required under Rule 26.3 ter(c), rectifications
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referred to in Rule 91.1(b)(i) need only be filed in the language of that translation.
(c) Any correction under Rule 26 of a defect in the international application shall be in the language in which the international application is filed. Any correction under Rule 26 of a defect in a translation of the international application furnished under Rule 12.3 or 12.4, any correction under Rule 55.2(c) of a defect in a translation furnished under Rule 55.2(a), or any correction of a defect in a translation of the request furnished under Rule 26.3 ter(c), shall be in the language of the translation.
12.3 Translation for the Purposes of International Search
(a) Where the language in which the international application is filed is not accepted by the International Searching Authority that is to carry out the international search, the applicant shall, within one month from the date of receipt of the international application by the receiving Office, furnish to that Office a translation of the international application into a language which is all of the following:
(i) a language accepted by that Authority, and
(ii) a language of publication, and
(iii) a language accepted by the receiving Office under Rule 12.1(a), unless the international application is filed in a language of publication.
(b) Paragraph (a) shall not apply to the request nor to any sequence listing part of the description.
(c) Where, by the time the receiving Office sends to the applicant the notification under Rule 20.2(c), the applicant has not furnished a translation required under paragraph (a), the receiving Office shall, preferably together with that notification, invite the applicant:
(i) to furnish the required translation within the time limit under paragraph (a);
(ii) in the event that the required translation is not furnished within the time limit under paragraph (a), to furnish it and to pay, where applicable, the late furnishing fee referred to in paragraph (e), within one month from the date of the invitation or two months from the date of receipt of the international
application by the receiving Office, whichever expires later.
(d) Where the receiving Office has sent to the applicant an invitation under paragraph (c) and the applicant has not, within the applicable time limit under paragraph (c)(ii), furnished the required translation and paid any required late furnishing fee, the international application shall be considered withdrawn and the receiving Office shall so declare. Any translation and any payment received by the receiving Office before that Office makes the declaration under the previous sentence and before the expiration of 15 months from the priority date shall be considered to have been received before the expiration of that time limit.
(e) The furnishing of a translation after the expiration of the time limit under paragraph (a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late furnishing fee equal to 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.
12.4 Translation for the Purposes of International Publication
(a) Where the language in which the international application is filed is not a language of publication and no translation is required under Rule 12.3(a), the applicant shall, within 14 months from the priority date, furnish to the receiving Office a translation of the international application into any language of publication which the receiving Office accepts for the purposes of this paragraph.
(b) Paragraph (a) shall not apply to the request nor to any sequence listing part of the description.
(c) Where the applicant has not, within the time limit referred to in paragraph (a), furnished a translation required under that paragraph, the receiving Office shall invite the applicant to furnish the required translation, and to pay, where applicable, the late furnishing fee required under paragraph (e), within 16 months from the priority date. Any translation received by the receiving Office before that Office sends the invitation under the previous sentence shall be considered to have
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been received before the expiration of the time limit under paragraph (a).
(d) Where the applicant has not, within the time limit under paragraph (c), furnished the required translation and paid any required late furnishing fee, the international application shall be considered withdrawn and the receiving Office shall so declare. Any translation and any payment received by the receiving Office before that Office makes the declaration under the previous sentence and before the expiration of 17 months from the priority date shall be considered to have been received before the expiration of that time limit.
(e) The furnishing of a translation after the expiration of the time limit under paragraph (a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late furnishing fee equal to 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.
Rule 12bis
Copy of Results of Earlier Search and of Earlier Application; Translation
12 bis.1 Copy of Results of Earlier Search and of Earlier Application; Translation
(a) Where the applicant has, under Rule 4.12, requested the International Searching Authority to take into account the results of an earlier search carried out by the same or another International Searching Authority or by a national Office, the applicant shall, subject to paragraphs (c) to (f), submit to the receiving Office, together with the international application, a copy of the results of the earlier search, in whatever form (for example, in the form of a search report, a listing of cited prior art or an examination report) they are presented by the Authority or Office concerned.
(b) The International Searching Authority may, subject to paragraphs (c) to (f), invite the applicant to furnish to it, within a time limit which shall be reasonable under the circumstances:
(i) a copy of the earlier application concerned;
(ii) where the earlier application is in a language which is not accepted by the International Searching Authority, a translation of the earlier application into a language which is accepted by that Authority;
(iii) where the results of the earlier search are in a language which is not accepted by the International Searching Authority, a translation of those results into a language which is accepted by that Authority;
(iv) a copy of any document cited in the results of the earlier search.
(c) Where the earlier search was carried out by the same Office as that which is acting as the receiving Office, the applicant may, instead of submitting the copies referred to in paragraphs (a) and (b)(i) and (iv), indicate the wish that the receiving Office prepare and transmit them to the International Searching Authority. Such request shall be made in the request and may be subjected by the receiving Office to the payment to it, for its own benefit, of a fee.
(d) Where the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, no copy or translation referred to in paragraphs (a) and (b) shall be required to be submitted under those paragraphs.
(e) Where the request contains a statement under Rule 4.12(ii) to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language, no copy or translation referred to in paragraphs (b)(i) and (ii) shall be required to be submitted under those paragraphs.
(f) Where a copy or translation referred to in paragraphs (a) and (b) is available to the International Searching Authority in a form and manner acceptable to it, for example, from a digital library or in the form of the priority document, and the applicant so indicates in the request, no copy or translation shall be required to be submitted under those paragraphs.
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Rule 13
Unity of Invention
13.1 Requirement
The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”).
13.2 Circumstances in Which the Requirement of Unity of Invention Is to Be Considered Fulfilled
Where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
13.3 Determination of Unity of Invention Not Affected by Manner of Claiming
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
13.4 Dependent Claims
Subject to Rule 13.1, it shall be permitted to include in the same international application a reasonable number of dependent claims, claiming specific forms of the invention claimed in an independent claim, even where the features of any dependent claim
could be considered as constituting in themselves an invention.
13.5 Utility Models
Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 13.1 to 13.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least two months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.
Rule 13bis
Inventions Relating to Biological Material
13 bis.1 Definition
For the purposes of this Rule, “reference to deposited biological material” means particulars given in an international application with respect to the deposit of biological material with a depositary institution or to the biological material so deposited.
13 bis.2 References (General)
Any reference to deposited biological material shall be made in accordance with this Rule and, if so made, shall be considered as satisfying the requirements of the national law of each designated State.
13 bis.3 References: Contents; Failure to Include Reference or Indication
(a) A reference to deposited biological material shall indicate:
(i) the name and the address of the depositary institution with which the deposit was made;
(ii) the date of deposit of the biological material with that institution;
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(iii) the accession number given to the deposit by that institution; and
(iv) any additional matter of which the International Bureau has been notified pursuant to Rule 13 bis.7(a)(i), provided that the requirement to indicate that matter was published in the Gazette in accordance with Rule 13 bis.7(c) at least two months before the filing of the international application.
(b) Failure to include a reference to deposited biological material or failure to include, in a reference to deposited biological material, an indication in accordance with paragraph (a), shall have no consequence in any designated State whose national law does not require such reference or such indication in a national application.
13 bis.4 References: Time Limit for Furnishing Indications
(a) Subject to paragraphs (b) and (c), if any of the indications referred to in Rule 13 bis.3(a) is not included in a reference to deposited biological material in the international application as filed but is furnished to the International Bureau:
(i) within 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished in time;
(ii) after the expiration of 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished on the last day of that time limit if it reaches the International Bureau before the technical preparations for international publication have been completed.
(b) If the national law applicable by a designated Office so requires in respect of national applications, that Office may require that any of the indications referred to in Rule 13 bis.3(a) be furnished earlier than 16 months from the priority date, provided that the International Bureau has been notified of such requirement pursuant to Rule 13 bis.7(a)(ii) and has published such requirement in the Gazette in accordance with Rule 13 bis.7(c) at least two months before the filing of the international application.
(c) Where the applicant makes a request for early publication under Article 21(2)(b), any designated Office may consider any indication not furnished before the technical preparations for international
publication have been completed as not having been furnished in time.
(d) The International Bureau shall notify the applicant of the date on which it received any indication furnished under paragraph (a), and:
(i) if the indication was received before the technical preparations for international publication have been completed, publish the indication furnished under paragraph (a), and an indication of the date of receipt, together with the international application;
(ii) if the indication was received after the technical preparations for international publication have been completed, notify that date and the relevant data from the indication to the designated Offices.
13 bis.5 References and Indications for the Purposes of One or More Designated States; Different Deposits for Different Designated States; Deposits with Depositary Institutions Other Than Those Notified
(a) A reference to deposited biological material shall be considered to be made for the purposes of all designated States, unless it is expressly made for the purposes of certain of the designated States only; the same applies to the indications included in the reference.
(b) References to different deposits of the biological material may be made for different designated States.
(c) Any designated Office may disregard a deposit made with a depositary institution other than one notified by it under Rule 13 bis.7(b).
13 bis.6 Furnishing of Samples
Pursuant to Articles 23 and 40, no furnishing of samples of the deposited biological material to which a reference is made in an international application shall, except with the authorization of the applicant, take place before the expiration of the applicable time limits after which national processing may start under the said Articles. However, where the applicant performs the acts referred to in Articles 22 or 39 after international publication but before the expiration of the said time limits, the furnishing of samples of the deposited biological material may
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take place, once the said acts have been performed. Notwithstanding the previous provision, the furnishing of samples of the deposited biological material may take place under the national law applicable by any designated Office as soon as, under that law, the international publication has the effects of the compulsory national publication of an unexamined national application.
13 bis.7 National Requirements: Notification and Publication
(a) Any national Office may notify the International Bureau of any requirement of the national law:
(i) that any matter specified in the notification, in addition to those referred to in Rule 13 bis.3(a)(i), (ii) and (iii), is required to be included in a reference to deposited biological material in a national application;
(ii) that one or more of the indications referred to in Rule 13 bis.3(a) are required to be included in a national application as filed or are required to be furnished at a time specified in the notification which is earlier than 16 months after the priority date.
(b) Each national Office shall notify the International Bureau of the depositary institutions with which the national law permits deposits of biological materials to be made for the purposes of patent procedure before that Office or, if the national law does not provide for or permit such deposits, of that fact.
(c) The International Bureau shall promptly publish in the Gazette requirements notified to it under paragraph (a) and information notified to it under paragraph (b).
Rule 13ter
Nucleotide and/or Amino Acid Sequence Listings
13 ter.1 Procedure Before the International Searching Authority
(a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the International SearchingAuthority
may invite the applicant to furnish to it, for the purposes of the international search, a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, unless such listing in electronic form is already available to it in a form and manner acceptable to it, and to pay to it, where applicable, the late furnishing fee referred to in paragraph (c), within a time limit fixed in the invitation.
(b) Where at least part of the international application is filed on paper and the International Searching Authority finds that the description does not comply with Rule 5.2(a), it may invite the applicant to furnish, for the purposes of the international search, a sequence listing in paper form complying with the standard provided for in the Administrative Instructions, unless such listing in paper form is already available to it in a form and manner acceptable to it, whether or not the furnishing of a sequence listing in electronic form is invited under paragraph (a), and to pay, where applicable, the late furnishing fee referred to in paragraph (c), within a time limit fixed in the invitation.
(c) The furnishing of a sequence listing in response to an invitation under paragraph (a) or (b) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a late furnishing fee whose amount shall be determined by the International Searching Authority but shall not exceed 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets, provided that a late furnishing fee may be required under either paragraph (a) or (b) but not both.
(d) If the applicant does not, within the time limit fixed in the invitation under paragraph (a) or (b), furnish the required sequence listing and pay any required late furnishing fee, the International Searching Authority shall only be required to search the international application to the extent that a meaningful search can be carried out without the sequence listing.
(e) Any sequence listing not contained in the international application as filed, whether furnished in response to an invitation under paragraph (a) or (b) or otherwise, shall not form part of the international application, but this paragraph shall not prevent the applicant from amending the
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description in relation to a sequence listing pursuant to Article 34(2)(b).
(f) Where the International Searching Authority finds that the description does not comply with Rule 5.2(b), it shall invite the applicant to submit the required correction. Rule 26.4 shall apply mutatis mutandis to any correction offered by the applicant. The International Searching Authority shall transmit the correction to the receiving Office and to the International Bureau.
13 ter.2 Procedure Before the International Preliminary Examining Authority
Rule 13 ter.1 shall apply mutatis mutandis to the procedure before the International Preliminary Examining Authority.
13 ter.3 Sequence Listing for Designated Office
No designated Office shall require the applicant to furnish to it a sequence listing other than a sequence listing complying with the standard provided for in the Administrative Instructions.
Rule 14
The Transmittal Fee
14.1 The Transmittal Fee
(a) Any receiving Office may require that the applicant pay a fee to it, for its own benefit, for receiving the international application, transmitting copies to the International Bureau and the competent International Searching Authority, and performing all the other tasks which it must perform in connection with the international application in its capacity of receiving Office (“transmittal fee”).
(b) The amount of the transmittal fee, if any, shall be fixed by the receiving Office.
(c) The transmittal fee shall be paid within one month from the date of receipt of the international application. The amount payable shall be the amount applicable on that date of receipt.
Rule 15
The International Filing Fee
15.1 The International Filing Fee
Each international application shall be subject to the payment of a fee for the benefit of the International Bureau (“international filing fee”) to be collected by the receiving Office.
15.2 Amount
(a) The amount of the international filing fee is as set out in the Schedule of Fees.
(b) The international filing fee shall be payable in the currency or one of the currencies prescribed by the receiving Office ("prescribed currency").
(c) Where the prescribed currency is the Swiss franc, the receiving Office shall promptly transfer the said fee to the International Bureau in Swiss francs.
(d) Where the prescribed currency is a currency other than the Swiss franc and that currency:
(i) is freely convertible into Swiss francs, the Director General shall establish, for each receiving Office which prescribes such a currency for the payment of the international filing fee, an equivalent amount of that fee in the prescribed currency according to directives given by the Assembly, and the amount in that currency shall promptly be transferred by the receiving Office to the International Bureau;
(ii) is not freely convertible into Swiss francs, the receiving Office shall be responsible for the conversion of the international filing fee from the prescribed currency into Swiss francs and shall promptly transfer that fee in Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau. Alternatively, if the receiving Office so wishes, it may convert the international filing fee from the prescribed currency into euros or US dollars and promptly transfer the equivalent amount of that fee in euros or US dollars, as established by the Director General according to
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directives given by the Assembly as referred to in item (i), to the International Bureau.
15.3 Time Limit for Payment; Amount Payable
The international filing fee shall be paid to the receiving Office within one month from the date of receipt of the international application. The amount payable shall be the amount applicable on that date of receipt.
15.4 Refund
The receiving Office shall refund the international filing fee to the applicant:
(i) if the determination under Article 11(1) is negative,
(ii) if, before the transmittal of the record copy to the International Bureau, the international application is withdrawn or considered withdrawn, or
(iii) if, due to prescriptions concerning national security, the international application is not treated as such.
Rule 16
The Search Fee
16.1 Right to Ask for a Fee
(a) Each International Searching Authority may require that the applicant pay a fee (“search fee”) for its own benefit for carrying out the international search and for performing all other tasks entrusted to International Searching Authorities by the Treaty and these Regulations.
(b) The search fee shall be collected by the receiving Office. The said fee shall be payable in the currency prescribed by that Office (“prescribed currency”).
(c) Where the prescribed currency is the currency in which the International Searching Authority has fixed the said fee (“fixed currency”), the receiving Office shall promptly transfer the said fee to that Authority in that currency.
(d) Where the prescribed currency is not the fixed currency and that currency:
(i) is freely convertible into the fixed currency, the Director General shall establish, for each receiving Office which prescribes such a currency for the payment of the search fee, an equivalent amount of that fee in the prescribed currency according to directives given by the Assembly, and the amount in that currency shall promptly be transferred by the receiving Office to the International Searching Authority;
(ii) is not freely convertible into the fixed currency, the receiving Office shall be responsible for the conversion of the search fee from the prescribed currency into the fixed currency and shall promptly transfer that fee in the fixed currency, in the amount fixed by the International Searching Authority, to the International Searching Authority.
(e) Where, in respect of the payment of the search fee in a prescribed currency, other than the fixed currency, the amount actually received under paragraph (d)(i) of this Rule by the International Searching Authority in the prescribed currency is, when converted by it into the fixed currency, less than that fixed by it, the difference will be paid to the International Searching Authority by the International Bureau, whereas, if the amount actually received is more, the difference will belong to the International Bureau.
(f) As to the time limit for payment of the search fee and the amount payable, the provisions of Rule 15.3 relating to the international filing fee shall apply mutatis mutandis.
16.2 Refund
The receiving Office shall refund the search fee to the applicant:
(i) if the determination under Article 11(1) is negative,
(ii) if, before the transmittal of the search copy to the International Searching Authority, the international application is withdrawn or considered withdrawn, or
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(iii) if, due to prescriptions concerning national security, the international application is not treated as such.
16.3 Partial Refund
Where the International Searching Authority takes into account, under Rule 41.1, the results of an earlier search in carrying out the international search, that Authority shall refund the search fee paid in connection with the international application to the extent and under the conditions provided for in the agreement under Article 16(3)(b).
Rule 16bis
Extension of Time Limits for Payment of Fees
16 bis.1 Invitation by the Receiving Office
(a) Where, by the time they are due under Rules 14.1(c), 15.3 and 16.1(f), the receiving Office finds that no fees were paid to it, or that the amount paid to it is insufficient to cover the transmittal fee, the international filing fee and the search fee, the receiving Office shall, subject to paragraph (d), invite the applicant to pay to it the amount required to cover those fees, together with, where applicable, the late payment fee under Rule 16 bis.2, within a time limit of one month from the date of the invitation.
(b) [Deleted]
(c) Where the receiving Office has sent to the applicant an invitation under paragraph (a) and the applicant has not, within the time limit referred to in that paragraph, paid in full the amount due, including, where applicable, the late payment fee under Rule 16 bis.2, the receiving Office shall, subject to paragraph (e):
(i) make the applicable declaration under Article 14(3), and
(ii) proceed as provided in Rule 29.
(d) Any payment received by the receiving Office before that Office sends the invitation under paragraph (a) shall be considered to have been received before the expiration of the time limit under Rule 14.1(c), 15.3 or 16.1(f), as the case may be.
(e) Any payment received by the receiving Office before that Office makes the applicable declaration under Article 14(3) shall be considered to have been received before the expiration of the time limit referred to in paragraph (a).
16 bis.2 Late Payment Fee
(a) The payment of fees in response to an invitation under Rule 16 bis.1(a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a late payment fee. The amount of that fee shall be:
(i) 50% of the amount of unpaid fees which is specified in the invitation, or,
(ii) if the amount calculated under item (i) is less than the transmittal fee, an amount equal to the transmittal fee.
(b) The amount of the late payment fee shall not, however, exceed the amount of 50% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.
Rule 17
The Priority Document
17.1 Obligation to Submit Copy of Earlier National or International Application
(a) Where the priority of an earlier national or international application is claimed under Article 8, a copy of that earlier application, certified by the authority with which it was filed (“the priority document”), shall, unless that priority document has already been filed with the receiving Office together with the international application in which the priority claim is made, and subject to paragraphs (b) and (b -bis), be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date, provided that any copy of the said earlier application which is received by the International Bureau after the expiration of that time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the date of international publication of the international application.
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(b) Where the priority document is issued by the receiving Office, the applicant may, instead of submitting the priority document, request the receiving Office to prepare and transmit the priority document to the International Bureau. Such request shall be made not later than 16 months after the priority date and may be subjected by the receiving Office to the payment of a fee.
(b-bis) Where the priority document is, in accordance with the Administrative Instructions, made available to the International Bureau from a digital library prior to the date of international publication of the international application, the applicant may, instead of submitting the priority document, request the International Bureau, prior to the date of international publication, to obtain the priority document from such digital library.
(c) If the requirements of none of the three preceding paragraphs are complied with, any designated Office may, subject to paragraph (d), disregard the priority claim, provided that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable under the circumstances.
(d) No designated Office shall disregard the priority claim under paragraph (c) if the earlier application referred to in paragraph (a) was filed with it in its capacity as national Office or if the priority document is, in accordance with the Administrative Instructions, available to it from a digital library.
17.2 Availability of Copies
(a) Where the applicant has complied with Rule 17.1(a), (b) or (b- bis), the International Bureau shall, at the specific request of the designated Office, promptly but not prior to the international publication of the international application, furnish a copy of the priority document to that Office. No such Office shall ask the applicant himself to furnish it with a copy. The applicant shall not be required to furnish a translation to the designated Office before the expiration of the applicable time limit under Article 22. Where the applicant makes an express request to the designated Office under Article 23(2) prior to the international publication of the international application, the International Bureau shall, at the specific request of the designated Office, furnish a
copy of the priority document to that Office promptly after receiving it.
(b) The International Bureau shall not make copies of the priority document available to the public prior to the international publication of the international application.
(c) Where the international application has been published under Article 21, the International Bureau shall furnish a copy of the priority document to any person upon request and subject to reimbursement of the cost unless, prior to that publication:
(i) the international application was withdrawn,
(ii) the relevant priority claim was withdrawn or considered, under Rule 26 bis.2(b), not to have been made.
(iii) [Deleted]
(d) [Deleted]
Rule 18
The Applicant
18.1 Residence and Nationality
(a) Subject to the provisions of paragraphs (b) and (c), the question whether an applicant is a resident or national of the Contracting State of which he claims to be a resident or national shall depend on the national law of that State and shall be decided by the receiving Office.
(b) In any case,
(i) possession of a real and effective industrial or commercial establishment in a Contracting State shall be considered residence in that State, and
(ii) a legal entity constituted according to the national law of a Contracting State shall be considered a national of that State.
(c) Where the international application is filed with the International Bureau as receiving Office, the International Bureau shall, in the circumstances specified in the Administrative Instructions, request the national Office of, or acting for, the Contracting State concerned to decide the question referred to in paragraph (a). The International Bureau shall inform the applicant of any such request. The applicant shall
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have an opportunity to submit arguments directly to the national Office. The national Office shall decide the said question promptly.
18.2 [Deleted]
18.3 Two or More Applicants
If there are two or more applicants, the right to file an international application shall exist if at least one of them is entitled to file an international application according to Article 9.
18.4 Information on Requirements Under National Law as to Applicants
(a) and (b) [Deleted]
(c) The International Bureau shall, from time to time, publish information on the various national laws in respect of the question who is qualified (inventor, successor in title of the inventor, owner of the invention, or other) to file a national application and shall accompany such information by a warning that the effect of the international application in any designated State may depend on whether the person designated in the international application as applicant for the purposes of that State is a person who, under the national law of that State, is qualified to file a national application.
Rule 19
The Competent Receiving Office
19.1 Where to File
(a) Subject to the provisions of paragraph (b), the international application shall be filed, at the option of the applicant,
(i) with the national Office of or acting for the Contracting State of which the applicant is a resident,
(ii) or with the national Office of or acting for the Contracting State of which the applicant is a national, or
(iii) irrespective of the Contracting State of which the applicant is a resident or national, with the International Bureau.
(b) Any Contracting State may agree with another Contracting State or any intergovernmental organization that the national Office of the latter State or the intergovernmental organization shall, for all or some purposes, act instead of the national Office of the former State as receiving Office for applicants who are residents or nationals of that former State. Notwithstanding such agreement, the national Office of the former State shall be considered the competent receiving Office for the purposes of Article 15(5).
(c) In connection with any decision made under Article 9(2), the Assembly shall appoint the national Office or the intergovernmental organization which will act as receiving Office for applications of residents or nationals of States specified by the Assembly. Such appointment shall require the previous consent of the said national Office or intergovernmental organization.
19.2 Two or More Applicants
If there are two or more applicants,
(i) the requirements of Rule 19.1 shall be considered to be met if the national Office with which the international application is filed is the national Office of or acting for a Contracting State of which at least one of the applicants is a resident or national;
(ii) the international application may be filed with the International Bureau under Rule 19.1(a)(iii) if at least one of the applicants is a resident or national of a Contracting State.
19.3 Publication of Fact of Delegation of Duties of Receiving Office
(a) Any agreement referred to in Rule 19.1(b) shall be promptly notified to the International Bureau by the Contracting State which delegates the duties of the receiving Office to the national Office of or acting for another Contracting State or an intergovernmental organization.
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(b) The International Bureau shall, promptly upon receipt, publish the notification in the Gazette.
19.4 Transmittal to the International Bureau as Receiving Office
(a) Where an international application is filed with a national Office which acts as a receiving Office under the Treaty but
(i) that national Office is not competent under Rule 19.1 or 19.2 to receive that international application, or
(ii) that international application is not in a language accepted under Rule 12.1(a) by that national Office but is in a language accepted under that Rule by the International Bureau as receiving Office, or
(iii) that national Office and the International Bureau agree, for any reason other than those specified under items (i) and (ii), and with the authorization of the applicant, that the procedure under this Rule should apply, that international application shall, subject to paragraph (b), be considered to have been received by that Office on behalf of the International Bureau as receiving Office under Rule 19.1(a)(iii).
(b) Where, pursuant to paragraph (a), an international application is received by a national Office on behalf of the International Bureau as receiving Office under Rule 19.1(a)(iii), that national Office shall, unless prescriptions concerning national security prevent the international application from being so transmitted, promptly transmit it to the International Bureau. Such transmittal may be subjected by the national Office to the payment of a fee, for its own benefit, equal to the transmittal fee charged by that Office under Rule 14. The international application so transmitted shall be considered to have been received by the International Bureau as receiving Office under Rule 19.1(a)(iii) on the date of receipt of the international application by that national Office.
(c) For the purposes of Rules 14.1(c), 15.3 and 16.1(f), where the international application was transmitted to the International Bureau under paragraph (b), the date of receipt of the international application shall be considered to be the date on which the international application was actually received by the International Bureau. For the
purposes of this paragraph, the last sentence of paragraph (b) shall not apply.
Rule 20
International Filing Date
20.1 Determination Under Article 11(1)
(a) Promptly after receipt of the papers purporting to be an international application, the receiving Office shall determine whether the papers fulfill the requirements of Article 11(1).
(b) For the purposes of Article 11(1)(iii)(c), it shall be sufficient to indicate the name of the applicant in a way which allows the identity of the applicant to be established even if the name is misspelled, the given names are not fully indicated, or, in the case of legal entities, the indication of the name is abbreviated or incomplete.
(c) For the purposes of Article 11(1)(ii), it shall be sufficient that the part which appears to be a description (other than any sequence listing part thereof) and the part which appears to be a claim or claims be in a language accepted by the receiving Office under Rule 12.1(a).
(d) If, on October 1, 1997, paragraph (c) is not compatible with the national law applied by the receiving Office, paragraph (c) shall not apply to that receiving Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1997. The information received shall be promptly published by the International Bureau in the Gazette.
20.2 Positive Determination Under Article 11(1)
(a) If the receiving Office determines that, at the time of receipt of the papers purporting to be an international application, the requirements of Article 11(1) were fulfilled, the receiving Office shall accord as the international filing date the date of receipt of the international application.
(b) The receiving Office shall stamp the request of the international application which it has accorded an international filing date as prescribed by the Administrative Instructions. The copy whose request
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has been so stamped shall be the record copy of the international application.
(c) The receiving Office shall promptly notify the applicant of the international application number and the international filing date. At the same time, it shall send to the International Bureau a copy of the notification sent to the applicant, except where it has already sent, or is sending at the same time, the record copy to the International Bureau under Rule 22.1(a).
20.3 Defects Under Article 11(1)
(a) Where, in determining whether the papers purporting to be an international application fulfill the requirements of Article 11(1), the receiving Office finds that any of the requirements of Article 11(1) are not, or appear not to be, fulfilled, it shall promptly invite the applicant, at the applicant’s option:
(i) to furnish the required correction under Article 11(2); or
(ii) where the requirements concerned are those relating to an element referred to in Article 11(1)(iii)(d) or (e), to confirm in accordance with Rule 20.6(a) that the element is incorporated by reference under Rule 4.18;
and to make observations, if any, within the applicable time limit under Rule 20.7. If that time limit expires after the expiration of 12 months from the filing date of any application whose priority is claimed, the receiving Office shall call that circumstance to the attention of the applicant.
(b) Where, following an invitation under paragraph (a) or otherwise:
(i) the applicant furnishes to the receiving Office the required correction under Article 11(2) after the date of receipt of the purported international application but on a later date falling within the applicable time limit under Rule 20.7, the receiving Office shall accord that later date as the international filing date and proceed as provided in Rule 20.2(b) and (c);
(ii) an element referred to in Article 11(1)(iii)(d) or (e) is, under Rule 20.6(b), considered to have been contained in the international application on the date on which one or more elements referred to in Article 11(1)(iii)
were first received by the receiving Office, the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2(b) and (c).
(c) If the receiving Office later discovers, or on the basis of the applicant’s reply realizes, that it has erred in issuing an invitation under paragraph (a) since the requirements of Article 11(1) were fulfilled when the papers were received, it shall proceed as provided in Rule 20.2.
20.4 Negative Determination Under Article 11(1)
If the receiving Office does not receive, within the applicable time limit under Rule 20.7, a correction or confirmation referred to in Rule 20.3(a), or if a correction or confirmation has been received but the application still does not fulfill the requirements of Article 11(1), the receiving Office shall:
(i) promptly notify the applicant that the application is not and will not be treated as an international application and shall indicate the reasons therefor;
(ii) notify the International Bureau that the number it has marked on the papers will not be used as an international application number;
(iii) keep the papers constituting the purported international application and any correspondence relating thereto as provided in Rule 93.1; and
(iv) send a copy of the said papers to the International Bureau where, pursuant to a request by the applicant under Article 25(1), the International Bureau needs such a copy and specially asks for it.
20.5 Missing Parts
(a) Where, in determining whether the papers purporting to be an international application fulfill the requirements of Article 11(1), the receiving Office finds that a part of the description, claims or drawings is or appears to be missing, including the case where all of the drawings are or appear to be missing but not including the case where an entire element referred to in Article 11(1)(iii)(d) or (e) is or appears to be missing, it shall promptly invite the applicant, at the applicant’s option:
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(i) to complete the purported international application by furnishing the missing part; or
(ii) to confirm, in accordance with Rule 20.6(a), that the part was incorporated by reference under Rule 4.18;
and to make observations, if any, within the applicable time limit under Rule 20.7. If that time limit expires after the expiration of 12 months from the filing date of any application whose priority is claimed, the receiving Office shall call that circumstance to the attention of the applicant.
(b) Where, following an invitation under paragraph (a) or otherwise, the applicant furnishes to the receiving Office, on or before the date on which all of the requirements of Article 11(1) are fulfilled but within the applicable time limit under Rule 20.7, a missing part referred to in paragraph (a) so as to complete the international application, that part shall be included in the application and the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2(b) and (c).
(c) Where, following an invitation under paragraph (a) or otherwise, the applicant furnishes to the receiving Office, after the date on which all of the requirements of Article 11(1) were fulfilled but within the applicable time limit under Rule 20.7, a missing part referred to in paragraph (a) so as to complete the international application, that part shall be included in the application, and the receiving Office shall correct the international filing date to the date on which the receiving Office received that part, notify the applicant accordingly and proceed as provided for in the Administrative Instructions.
(d) Where, following an invitation under paragraph (a) or otherwise, a part referred to in paragraph (a) is, under Rule 20.6(b), considered to have been contained in the purported international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2(b) and (c).
(e) Where the international filing date has been corrected under paragraph (c), the applicant may, in
a notice submitted to the receiving Office within one month from the date of the notification under paragraph (c), request that the missing part concerned be disregarded, in which case the missing part shall be considered not to have been furnished and the correction of the international filing date under that paragraph shall be considered not to have been made, and the receiving Office shall proceed as provided for in the Administrative Instructions.
20.6 Confirmation of Incorporation by Reference of Elements and Parts
(a) The applicant may submit to the receiving Office, within the applicable time limit under Rule 20.7, a written notice confirming that an element or part is incorporated by reference in the international application under Rule 4.18, accompanied by:
(i) a sheet or sheets embodying the entire element as contained in the earlier application or embodying the part concerned;
(ii) where the applicant has not already complied with Rule 17.1(a), (b) or (b- bis) in relation to the priority document, a copy of the earlier application as filed;
(iii) where the earlier application is not in the language in which the international application is filed, a translation of the earlier application into that language or, where a translation of the international application is required under Rule 12.3(a) or 12.4(a), a translation of the earlier application into both the language in which the international application is filed and the language of that translation; and
(iv) in the case of a part of the description, claims or drawings, an indication as to where that part is contained in the earlier application and, where applicable, in any translation referred to in item (iii).
(b) Where the receiving Office finds that the requirements of Rule 4.18 and paragraph (a) have been complied with and that the element or part referred to in paragraph (a) is completely contained in the earlier application concerned, that element or part shall be considered to have been contained in the purported international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office.
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(c) Where the receiving Office finds that a requirement under Rule 4.18 or paragraph (a) has not been complied with or that the element or part referred to in paragraph (a) is not completely contained in the earlier application concerned, the receiving Office shall proceed as provided for in Rule 20.3(b)(i), 20.5(b) or 20.5(c), as the case may be.
20.7 Time Limit
(a) The applicable time limit referred to in Rules 20.3(a) and (b), 20.4, 20.5(a), (b) and (c), and 20.6(a) shall be:
(i) where an invitation under Rule 20.3(a) or 20.5(a), as applicable, was sent to the applicant, two months from the date of the invitation;
(ii) where no such invitation was sent to the applicant, two months from the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office.
(b) Where neither a correction under Article 11(2) nor a notice under Rule 20.6(a) confirming the incorporation by reference of an element referred to in Article 11(1)(iii)(d) or (e) is received by the receiving Office prior to the expiration of the applicable time limit under paragraph (a), any such correction or notice received by that Office after the expiration of that time limit but before it sends a notification to the applicant under Rule 20.4(i) shall be considered to have been received within that time limit.
20.8 Incompatibility With National Laws
(a) If, on October 5, 2005, any of Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 are not compatible with the national law applied by the receiving Office, the Rules concerned shall not apply to an international application filed with that receiving Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.
(a-bis) Where a missing element or part cannot be incorporated by reference in the international application under Rules 4.18 and 20.6 because of the operation of paragraph (a) of this Rule, the
receiving Office shall proceed as provided for in Rule 20.3(b)(i), 20.5(b) or 20.5(c), as the case may be. Where the receiving Office proceeds as provided for in Rule 20.5(c), the applicant may proceed as provided for in Rule 20.5(e).
(b) If, on October 5, 2005, any of Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 are not compatible with the national law applied by the designated Office, the Rules concerned shall not apply in respect of that Office in relation to an international application in respect of which the acts referred to in Article 22 have been performed before that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.
(c) Where an element or part is considered to have been incorporated by reference in the international application by virtue of a finding of the receiving Office under Rule 20.6(b), but that incorporation by reference does not apply to the international application for the purposes of the procedure before a designated Office because of the operation of paragraph (b) of this Rule, the designated Office may treat the application as if the international filing date had been accorded under Rule 20.3(b)(i) or 20.5(b), or corrected under Rule 20.5(c), as the case may be, provided that Rule 82 ter .1(c) and (d) shall apply mutatis mutandis.
Rule 21
Preparation of Copies
21.1 Responsibility of the Receiving Office
(a) Where the international application is required to be filed in one copy, the receiving Office shall be responsible for preparing the home copy and the search copy required under Article 12(1).
(b) Where the international application is required to be filed in two copies, the receiving Office shall be responsible for preparing the home copy.
(c) If the international application is filed in less than the number of copies required under Rule 11.1(b), the receiving Office shall be responsible for the prompt preparation of the number of copies
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required, and shall have the right to fix a fee for performing that task and to collect such fee from the applicant.
21.2 Certified Copy for the Applicant
Against payment of a fee, the receiving Office shall furnish to the applicant, on request, certified copies of the international application as filed and of any corrections thereto.
Rule 22
Transmittal of the Record Copy and Translation
22.1 Procedure
(a) If the determination under Article 11(1) is positive, and unless prescriptions concerning national security prevent the international application from being treated as such, the receiving Office shall transmit the record copy to the International Bureau. Such transmittal shall be effected promptly after receipt of the international application or, if a check to preserve national security must be performed, as soon as the necessary clearance has been obtained. In any case, the receiving Office shall transmit the record copy in time for it to reach the International Bureau by the expiration of the 13th month from the priority date. If the transmittal is effected by mail, the receiving Office shall mail the record copy not later than five days prior to the expiration of the 13th month from the priority date.
(b) If the International Bureau has received a copy of the notification under Rule 20.2(c) but is not, by the expiration of 13 months from the priority date, in possession of the record copy, it shall remind the receiving Office that it should transmit the record copy to the International Bureau promptly.
(c) If the International Bureau has received a copy of the notification under Rule 20.2(c) but is not, by the expiration of 14 months from the priority date, in possession of the record copy, it shall notify the applicant and the receiving Office accordingly.
(d) After the expiration of 14 months from the priority date, the applicant may request the receiving Office to certify a copy of his international application as being identical with the international
application as filed and may transmit such certified copy to the International Bureau.
(e) Any certification under paragraph (d) shall be free of charge and may be refused only on any of the following grounds:
(i) the copy which the receiving Office has been requested to certify is not identical with the international application as filed;
(ii) prescriptions concerning national security prevent the international application from being treated as such;
(iii) the receiving Office has already transmitted the record copy to the International Bureau and that Bureau has informed the receiving Office that it has received the record copy.
(f) Unless the International Bureau has received the record copy, or until it receives the record copy, the copy certified under paragraph (e) and received by the International Bureau shall be considered to be the record copy.
(g) If, by the expiration of the time limit applicable under Article 22, the applicant has performed the acts referred to in that Article but the designated Office has not been informed by the International Bureau of the receipt of the record copy, the designated Office shall inform the International Bureau. If the International Bureau is not in possession of the record copy, it shall promptly notify the applicant and the receiving Office unless it has already notified them under paragraph (c).
(h) Where the international application is to be published in the language of a translation furnished under Rule 12.3 or 12.4, that translation shall be transmitted by the receiving Office to the International Bureau together with the record copy under paragraph (a) or, if the receiving Office has already transmitted the record copy to the International Bureau under that paragraph, promptly after receipt of the translation.
22.2 [Deleted]
22.3 Time Limit Under Article 12(3)
The time limit referred to in Article 12(3) shall be three months from the date of the notification sent
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by the International Bureau to the applicant under Rule 22.1(c) or (g).
Rule 23
Transmittal of the Search Copy, Translation and Sequence Listing
23.1 Procedure
(a) Where no translation of the international application is required under Rule 12.3(a), the search copy shall be transmitted by the receiving Office to the International Searching Authority at the latest on the same day as the record copy is transmitted to the International Bureau unless no search fee has been paid. In the latter case, it shall be transmitted promptly after payment of the search fee.
(b) Where a translation of the international application is furnished under Rule 12.3, a copy of that translation and of the request, which together shall be considered to be the search copy under Article 12(1), shall be transmitted by the receiving Office to the International Searching Authority, unless no search fee has been paid. In the latter case, a copy of the said translation and of the request shall be transmitted promptly after payment of the search fee.
(c) Any sequence listing in electronic form which is furnished for the purposes of Rule 13 ter but submitted to the receiving Office instead of the International Searching Authority shall be promptly transmitted by that Office to that Authority.
Rule 24
Receipt of the Record Copy by the International Bureau
24.1 [Deleted]
24.2 Notification of Receipt of the Record Copy
(a) The International Bureau shall promptly notify:
(i) the applicant,
(ii) the receiving Office, and
(iii) the International Searching Authority (unless it has informed the International Bureau that it wishes not to be so notified), of the fact and the date of receipt of the record copy. The notification shall identify the international application by its number, the international filing date and the name of the applicant, and shall indicate the filing date of any earlier application whose priority is claimed. The notification sent to the applicant shall also contain a list of the designated Offices and, in the case of a designated Office which is responsible for granting regional patents, of the Contracting States designated for such regional patent.
(b) [Deleted]
(c) If the record copy is received after the expiration of the time limit fixed in Rule 22.3, the International Bureau shall promptly notify the applicant, the receiving Office, and the International Searching Authority, accordingly.
Rule 25
Receipt of the Search Copy by the International Searching Authority
25.1 Notification of Receipt of the Search Copy
The International SearchingAuthority shall promptly notify the International Bureau, the applicant, and - unless the International Searching Authority is the same as the receiving Office - the receiving Office, of the fact and the date of receipt of the search copy.
Rule 26
Checking by, and Correcting Before, the Receiving Office of Certain Elements of the International Application
26.1 Invitation under Article 14(1)(b) to Correct
The receiving Office shall issue the invitation to correct provided for in Article 14(1)(b) as soon as possible, preferably within one month from the receipt of the international application. In the invitation, the receiving Office shall invite the
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applicant to furnish the required correction, and give the applicant the opportunity to make observations, within the time limit under Rule 26.2.
26.2 Time Limit for Correction
The time limit referred to in Rule 26.1 shall be two months from the date of the invitation to correct. It may be extended by the receiving Office at any time before a decision is taken.
26.2 bis Checking of Requirements under Article 14(1)(a)(i) and (ii)
(a) For the purposes of Article 14(1)(a)(i), if there is more than one applicant, it shall be sufficient that the request be signed by one of them.
(b) For the purposes of Article 14(1)(a)(ii), if there is more than one applicant, it shall be sufficient that the indications required under Rule 4.5(a)(ii) and (iii) be provided in respect of one of them who is entitled according to Rule 19.1 to file the international application with the receiving Office.
26.3 Checking of Physical Requirements under Article 14(1)(a)(v)
(a) Where the international application is filed in a language of publication, the receiving Office shall check:
(i) the international application for compliance with the physical requirements referred to in Rule 11 only to the extent that compliance therewith is necessary for the purpose of reasonably uniform international publication;
(ii) any translation furnished under Rule 12.3 for compliance with the physical requirements referred to in Rule 11 to the extent that compliance therewith is necessary for the purpose of satisfactory reproduction.
(b) Where the international application is filed in a language which is not a language of publication, the receiving Office shall check:
(i) the international application for compliance with the physical requirements referred to in Rule 11 only to the extent that compliance therewith is necessary for the purpose of satisfactory reproduction;
(ii) any translation furnished under Rule 12.3 or 12.4 and the drawings for compliance with the physical requirements referred to in Rule 11 to the extent that compliance therewith is necessary for the purpose of reasonably uniform international publication.
26.3 bis Invitation under Article 14(1)(b) to Correct Defects Under Rule 11
The receiving Office shall not be required to issue the invitation under Article 14(1)(b) to correct a defect under Rule 11 where the physical requirements referred to in that Rule are complied with to the extent required under Rule 26.3.
26.3 ter Invitation to Correct Defects under Article 3(4)(i)
(a) Where the abstract or any text matter of the drawings is filed in a language which is different from the language of the description and the claims, the receiving Office shall, unless
(i) a translation of the international application is required under Rule 12.3(a), or
(ii) the abstract or the text matter of the drawings is in the language in which the international application is to be published, invite the applicant to furnish a translation of the abstract or the text matter of the drawings into the language in which the international application is to be published. Rules 26.1, 26.2, 26.3, 26.3 bis , 26.5 and 29.1 shall apply mutatis mutandis.
(b) If, on October 1, 1997, paragraph (a) is not compatible with the national law applied by the receiving Office, paragraph (a) shall not apply to that receiving Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1997. The information received shall be promptly published by the International Bureau in the Gazette.
(c) Where the request does not comply with Rule 12.1(c), the receiving Office shall invite the applicant to file a translation so as to comply with that Rule. Rules 3, 26.1, 26.2, 26.5 and 29.1 shall apply mutatis mutandis.
(d) If, on October 1, 1997, paragraph (c) is not compatible with the national law applied by the
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receiving Office, paragraph (c) shall not apply to that receiving Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31,1997. The information received shall be promptly published by the International Bureau in the Gazette.
26.4 Procedure
A correction of the request offered to the receiving Office may be stated in a letter addressed to that Office if the correction is of such a nature that it can be transferred from the letter to the request without adversely affecting the clarity and the direct reproducibility of the sheet on to which the correction is to be transferred; otherwise, and in the case of a correction of any element of the international application other than the request, the applicant shall be required to submit a replacement sheet embodying the correction and the letter accompanying the replacement sheet shall draw attention to the differences between the replaced sheet and the replacement sheet.
26.5 Decision of the Receiving Office
The receiving Office shall decide whether the applicant has submitted the correction within the applicable time limit under Rule 26.2, and, if the correction has been submitted within that time limit, whether the international application so corrected is or is not to be considered withdrawn, provided that no international application shall be considered withdrawn for lack of compliance with the physical requirements referred to in Rule 11 if it complies with those requirements to the extent necessary for the purpose of reasonably uniform international publication.
Rule 26bis
Correction or Addition of Priority Claim
26 bis.1 Correction or Addition of Priority Claim
(a) The applicant may correct a priority claim or add a priority claim to the request by a notice submitted to the receiving Office or the International
Bureau within a time limit of 16 months from the priority date or, where the correction or addition would cause a change in the priority date, 16 months from the priority date as so changed, whichever 16-month period expires first, provided that such a notice may be submitted until the expiration of four months from the international filing date. The correction of a priority claim may include the addition of any indication referred to in Rule 4.10.
(b) Any notice referred to in paragraph (a) received by the receiving Office or the International Bureau after the applicant has made a request for early publication under Article 21(2)(b) shall be considered not to have been submitted, unless that request is withdrawn before the technical preparations for international publication have been completed.
(c) Where the correction or addition of a priority claim causes a change in the priority date, any time limit which is computed from the previously applicable priority date and which has not already expired shall be computed from the priority date as so changed.
26 bis.2 Defects in Priority Claims
(a) Where the receiving Office or, if the receiving Office fails to do so, the International Bureau, finds in relation to a priority claim:
(i) that the international application has an international filing date which is later than the date on which the priority period expired and that a request for restoration of the right of priority under Rule 26 bis.3 has not been submitted;
(ii) that the priority claim does not comply with the requirements of Rule 4.10; or
(iii) that any indication in the priority claim is inconsistent with the corresponding indication appearing in the priority document;
the receiving Office or the International Bureau, as the case may be, shall invite the applicant to correct the priority claim. In the case referred to in item (i), where the international filing date is within two months from the date on which the priority period expired, the receiving Office or the International Bureau, as the case may be, shall also notify the applicant of the possibility of submitting a request for the restoration of the right of priority in
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accordance with Rule 26 bis.3, unless the receiving Office has notified the International Bureau under Rule 26 bis.3(j) of the incompatibility of Rule 26 bis.3(a) to (i) with the national law applied by that Office.
(b) If the applicant does not, before the expiration of the time limit under Rule 26 bis.1(a), submit a notice correcting the priority claim, that priority claim shall, subject to paragraph (c), for the purposes of the procedure under the Treaty, be considered not to have been made (“considered void”) and the receiving Office or the International Bureau, as the case may be, shall so declare and shall inform the applicant accordingly. Any notice correcting the priority claim which is received before the receiving Office or the International Bureau, as the case may be, so declares and not later than one month after the expiration of that time limit shall be considered to have been received before the expiration of that time limit.
(c) A priority claim shall not be considered void only because:
(i) the indication of the number of the earlier application referred to in Rule 4.10(a)(ii) is missing;
(ii) an indication in the priority claim is inconsistent with the corresponding indication appearing in the priority document; or
(iii) the international application has an international filing date which is later than the date on which the priority period expired, provided that the international filing date is within the period of two months from that date.
(d) Where the receiving Office or the International Bureau has made a declaration under paragraph (b) or where the priority claim has not been considered void only because paragraph (c) applies, the International Bureau shall publish, together with the international application, information concerning the priority claim as prescribed by the Administrative Instructions, as well as any information submitted by the applicant concerning such priority claim which is received by the International Bureau prior to the completion of the technical preparations for international publication. Such information shall be included in the communication under Article 20 where the international application is not published by virtue of Article 64(3).
(e) Where the applicant wishes to correct or add a priority claim but the time limit under Rule 26 bis.1 has expired, the applicant may, prior to the expiration of 30 months from the priority date and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, request the International Bureau to publish information concerning the matter, and the International Bureau shall promptly publish such information.
26 bis.3 Restoration of Right of Priority by Receiving Office
(a) Where the international application has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the receiving Office shall, on the request of the applicant, and subject to paragraphs (b) to (g) of this Rule, restore the right of priority if the Office finds that a criterion applied by it (“criterion for restoration”) is satisfied, namely, that the failure to file the international application within the priority period:
(i) occurred in spite of due care required by the circumstances having been taken; or
(ii) was unintentional.
Each receiving Office shall apply at least one of those criteria and may apply both of them.
(b) A request under paragraph (a) shall:
(i) be filed with the receiving Office within the time limit applicable under paragraph (e);
(ii) state the reasons for the failure to file the international application within the priority period; and
(iii) preferably be accompanied by any declaration or other evidence required under paragraph (f).
(c) Where a priority claim in respect of the earlier application is not contained in the international application, the applicant shall submit, within the time limit applicable under paragraph (e), a notice under Rule 26 bis.1(a) adding the priority claim.
(d) The submission of a request under paragraph (a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a fee for requesting restoration, payable within the time limit
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applicable under paragraph (e). The amount of that fee, if any, shall be fixed by the receiving Office. The time limit for payment of the fee may be extended, at the option of the receiving Office, for a period of up to two months from the expiration of the time limit applicable under paragraph (e).
(e) The time limit referred to in paragraphs (b)(i), (c) and (d) shall be two months from the date on which the priority period expired, provided that, where the applicant makes a request for early publication under Article 21(2)(b), any request under paragraph (a) or any notice referred to in paragraph (c) submitted, or any fee referred to in paragraph (d) paid, after the technical preparations for international publication have been completed shall be considered as not having been submitted or paid in time.
(f) The receiving Office may require that a declaration or other evidence in support of the statement of reasons referred to in paragraph (b)(iii) be filed with it within a time limit which shall be reasonable under the circumstances. The applicant may furnish to the International Bureau a copy of any such declaration or other evidence filed with the receiving Office, in which case the International Bureau shall include such copy in its files.
(g) The receiving Office shall not refuse, totally or in part, a request under paragraph (a) without giving the applicant the opportunity to make observations on the intended refusal within a time limit which shall be reasonable under the circumstances. Such notice of intended refusal by the receiving Office may be sent to the applicant together with any invitation to file a declaration or other evidence under paragraph (f).
(h) The receiving Office shall promptly:
(i) notify the International Bureau of the receipt of a request under paragraph (a);
(ii) make a decision upon the request;
(iii) notify the applicant and the International Bureau of its decision and the criterion for restoration upon which the decision was based.
(i) Each receiving Office shall inform the International Bureau of which of the criteria for restoration it applies and of any subsequent changes in that respect. The International Bureau shall promptly publish such information in the Gazette.
(j) If, on October 5, 2005, paragraphs (a) to (i) are not compatible with the national law applied by the receiving Office, those paragraphs shall not apply in respect of that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.
Rule 26ter
Correction orAddition of Declarations Under Rule 4.17
26 ter.1 Correction or Addition of Declarations
The applicant may correct or add to the request any declaration referred to in Rule 4.17 by a notice submitted to the International Bureau within a time limit of 16 months from the priority date, provided that any notice which is received by the International Bureau after the expiration of that time limit shall be considered to have been received on the last day of that time limit if it reaches it before the technical preparations for international publication have been completed.
26 ter.2 Processing of Declarations
(a) Where the receiving Office or the International Bureau finds that any declaration referred to in Rule 4.17 is not worded as required or, in the case of the declaration of inventorship referred to in Rule 4.17(iv), is not signed as required, the receiving Office or the International Bureau, as the case may be, may invite the applicant to correct the declaration within a time limit of 16 months from the priority date.
(b) Where the International Bureau receives any declaration or correction under Rule 26 ter.1 after the expiration of the time limit under Rule 26 ter.1, the International Bureau shall notify the applicant accordingly and shall proceed as provided for in the Administrative Instructions.
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Rule 27
Lack of Payment of Fees
27.1 Fees
(a) For the purposes of Article 14(3)(a), “fees prescribed under Article 3(4)(iv)” means: the transmittal fee (Rule 14), the international filing fee (Rule 15.1), the search fee (Rule 16), and, where required, the late payment fee (Rule 16 bis.2).
(b) For the purposes of Article 14(3)(a) and (b), “the fee prescribed under Article 4(2)” means the international filing fee (Rule 15.1) and, where required, the late payment fee (Rule 16 bis.2).
Rule 28
Defects Noted by the International Bureau
28.1 Note on Certain Defects
(a) If, in the opinion of the International Bureau, the international application contains any of the defects referred to in Article 14(1)(a)(i), (ii), or (v), the International Bureau shall bring such defects to the attention of the receiving Office.
(b) The receiving Office shall, unless it disagrees with the said opinion, proceed as provided in Article 14(1)(b) and Rule 26.
Rule 29
International Applications Considered Withdrawn
29.1 Finding by Receiving Office
If the receiving Office declares, under Article 14(1)(b) and Rule 26.5 (failure to correct certain defects), or under Article 14(3)(a) (failure to pay the prescribed fees under Rule 27.1(a)), or under Article 14(4) (later finding of non-compliance with the requirements listed in items (i) to (iii) of Article 11(1)), or under Rule 12.3(d) or 12.4(d) (failure to furnish a required translation or, where applicable, to pay a late furnishing fee), or under Rule 92.4(g)(i) (failure to furnish the original of a document), that
the international application is considered withdrawn:
(i) the receiving Office shall transmit the record copy (unless already transmitted), and any correction offered by the applicant, to the International Bureau;
(ii) the receiving Office shall promptly notify both the applicant and the International Bureau of the said declaration, and the International Bureau shall in turn notify each designated Office which has already been notified of its designation;
(iii) the receiving Office shall not transmit the search copy as provided in Rule 23, or, if such copy has already been transmitted, it shall notify the International Searching Authority of the said declaration;
(iv) the International Bureau shall not be required to notify the applicant of the receipt of the record copy;
(v) no international publication of the international application shall be effected if the notification of the said declaration transmitted by the receiving Office reaches the International Bureau before the technical preparations for international publication have been completed.
(b) [Deleted]
29.2 [Deleted]
29.3 Calling Certain Facts to the Attention of the Receiving Office
If the International Bureau or the International Searching Authority considers that the receiving Office should make a finding under Article 14(4), it shall call the relevant facts to the attention of the receiving Office.
29.4 Notification of Intent to Make Declaration Under Article 14(4)
(a) Before the receiving Office issues any declaration under Article 14(4), it shall notify the applicant of its intent to issue such declaration and the reasons therefor. The applicant may, if he disagrees with the tentative finding of the receiving Office, submit arguments to that effect within two months from the date of the notification.
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(b) Where the receiving Office intends to issue a declaration under Article 14(4) in respect of an element mentioned in Article 11(1)(iii)(d) or (e), the receiving Office shall, in the notification referred to in paragraph (a) of this Rule, invite the applicant to confirm in accordance with Rule 20.6(a) that the element is incorporated by reference under Rule 4.18. For the purposes of Rule 20.7(a)(i), the invitation sent to the applicant under this paragraph shall be considered to be an invitation under Rule 20.3(a)(ii).
(c) Paragraph (b) shall not apply where the receiving Office has informed the International Bureau in accordance with Rule 20.8(a) of the incompatibility of Rules 20.3(a)(ii) and (b)(ii) and 20.6 with the national law applied by that Office.
Rule 30
Time Limit Under Article 14(4)
30.1 Time Limit
The time limit referred to in Article 14(4) shall be four months from the international filing date.
Rule 31
Copies Required Under Article 13
31.1 Request for Copies
(a) Requests under Article 13(1) may relate to all, some kinds of, or individual international applications in which the national Office making the request is designated. Requests for all or some kinds of such international applications must be renewed for each year by means of a notification addressed by that Office before November 30 of the preceding year to the International Bureau.
(b) Requests under Article 13(2)(b) shall be subject to the payment of a fee covering the cost of preparing and mailing the copy.
31.2 Preparation of Copies
The preparation of copies required under Article 13 shall be the responsibility of the International Bureau.
Rule 32
Extension of Effects of International Application to Certain Successor States
32.1 Extension of International Application to Successor State
(a) The effects of any international application whose international filing date falls in the period defined in paragraph (b) are extended to a State (“the successor State”) whose territory was, before the independence of that State, part of the territory of a Contracting State designated in the international application which subsequently ceased to exist (“the predecessor State”), provided that the successor State has become a Contracting State through the deposit, with the Director General, of a declaration of continuation the effect of which is that the Treaty is applied by the successor State.
(b) The period referred to in paragraph (a) starts on the day following the last day of the existence of the predecessor State and ends two months after the date on which the declaration referred to in paragraph (a) was notified by the Director General to the Governments of the States party to the Paris Convention for the Protection of Industrial Property. However, where the date of independence of the successor State is earlier than the date of the day following the last day of the existence of the predecessor State, the successor State may declare that the said period starts on the date of its independence; such a declaration shall be made together with the declaration referred to in paragraph (a) and shall specify the date of independence.
(c) Information on any international application whose filing date falls within the applicable period under paragraph (b) and whose effect is extended to the successor State shall be published by the International Bureau in the Gazette.
(d) [Deleted]
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Rule 32bis
[Deleted]
Rule 33
Relevant Prior Art for the International Search
33.1 Relevant Prior Art for the International Search
(a) For the purposes of Article 15(2), relevant prior art shall consist of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) and which is capable of being of assistance in determining that the claimed invention is or is not new and that it does or does not involve an inventive step (i.e., that it is or is not obvious), provided that the making available to the public occurred prior to the international filing date.
(b) When any written disclosure refers to an oral disclosure, use, exhibition, or other means whereby the contents of the written disclosure were made available to the public, and such making available to the public occurred on a date prior to the international filing date, the international search report shall separately mention that fact and the date on which it occurred if the making available to the public of the written disclosure occurred on a date which is the same as, or later than, the international filing date.
(c) Any published application or any patent whose publication date is the same as, or later than, but whose filing date, or, where applicable, claimed priority date, is earlier than the international filing date of the international application searched, and which would constitute relevant prior art for the purposes of Article 15(2) had it been published prior to the international filing date, shall be specially mentioned in the international search report.
33.2 Fields to Be Covered by the International Search
(a) The international search shall cover all those technical fields, and shall be carried out on the basis
of all those search files, which may contain material pertinent to the invention.
(b) Consequently, not only shall the art in which the invention is classifiable be searched but also analogous arts regardless of where classified.
(c) The question what arts are, in any given case, to be regarded as analogous shall be considered in the light of what appears to be the necessary essential function or use of the invention and not only the specific functions expressly indicated in the international application.
(d) The international search shall embrace all subject matter that is generally recognized as equivalent to the subject matter of the claimed invention for all or certain of its features, even though, in its specifics, the invention as described in the international application is different.
33.3 Orientation of the International Search
(a) International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any) and with particular emphasis on the inventive concept towards which the claims are directed.
(b) In so far as possible and reasonable, the international search shall cover the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended.
Rule 34
Minimum Documentation
34.1 Definition
(a) The definitions contained in Article 2(i) and (ii) shall not apply for the purposes of this Rule.
(b) The documentation referred to in Article 15(4) (“minimum documentation”) shall consist of:
(i) the “national patent documents” as specified in paragraph (c),
(ii) the published international (PCT) applications, the published regional applications for patents and inventors’ certificates, and the published regional patents and inventors’ certificates,
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(iii) such other published items of non-patent literature as the International Searching Authorities shall agree upon and which shall be published in a list by the International Bureau when agreed upon for the first time and whenever changed.
(c) Subject to paragraphs (d) and (e), the “national patent documents” shall be the following:
(i) the patents issued in and after 1920 by France, the former Reichspatentamt of Germany, Japan, the former Soviet Union, Switzerland (in the French and German languages only), the United Kingdom, and the United States of America,
(ii) the patents issued by the Federal Republic of Germany, the People’s Republic of China, the Republic of Korea and the Russian Federation,
(iii) the patent applications, if any, published in and after 1920 in the countries referred to in items (i) and (ii),
(iv) the inventors’ certificates issued by the former Soviet Union,
(v) the utility certificates issued by, and the published applications for utility certificates of, France,
(vi) such patents issued by, and such patent applications published in, any other country after 1920 as are in the English, French, German, or Spanish language and in which no priority is claimed, provided that the national Office of the interested country sorts out these documents and places them at the disposal of each International Searching Authority.
(d) Where an application is republished once (for example, an Offenlegungsschrift as an Auslegeschrift) or more than once, no International Searching Authority shall be obliged to keep all versions in its documentation; consequently, each such Authority shall be entitled not to keep more than one version. Furthermore, where an application is granted and is issued in the form of a patent or a utility certificate (France), no International Searching Authority shall be obliged to keep both the application and the patent or utility certificate (France) in its documentation; consequently, each such Authority shall be entitled to keep either the application only or the patent or utility certificate (France) only.
(e) Any International Searching Authority whose official language, or one of whose official languages, is not Chinese, Japanese, Korean, Russian or Spanish is entitled not to include in its documentation those patent documents of the People's Republic of China, Japan, the Republic of Korea, the Russian Federation and the former Soviet Union as well as those patent documents in the Spanish language, respectively, for which no abstracts in the English language are generally available. English abstracts becoming generally available after the date of entry into force of these Regulations shall require the inclusion of the patent documents to which the abstracts refer no later than six months after such abstracts become generally available. In case of the interruption of abstracting services in English in technical fields in which English abstracts were formerly generally available, the Assembly shall take appropriate measures to provide for the prompt restoration of such services in the said fields.
(f) For the purposes of this Rule, applications which have only been laid open for public inspection are not considered published applications.
Rule 35
The Competent International Searching Authority
35.1 When Only One International Searching Authority Is Competent
Each receiving Office shall, in accordance with the terms of the applicable agreement referred to in Article 16(3)(b), inform the International Bureau which International Searching Authority is competent for the searching of the international applications filed with it, and the International Bureau shall promptly publish such information.
35.2 When Several International Searching Authorities Are Competent
(a) Any receiving Office may, in accordance with the terms of the applicable agreement referred to in Article 16(3)(b), specify several International Searching Authorities:
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(i) by declaring all of them competent for any international application filed with it, and leaving the choice to the applicant, or
(ii) by declaring one or more competent for certain kinds of international applications filed with it, and declaring one or more others competent for other kinds of international applications filed with it, provided that, for those kinds of international applications for which several International Searching Authorities are declared to be competent, the choice shall be left to the applicant.
(b) Any receiving Office availing itself of the faculty provided in paragraph (a) shall promptly inform the International Bureau, and the International Bureau shall promptly publish such information.
35.3 When the International Bureau Is Receiving Office Under Rule 19.1 (a)(iii)
(a) Where the international application is filed with the International Bureau as receiving Office under Rule 19.1(a)(iii), an International Searching Authority shall be competent for the searching of that international application if it would have been competent had that international application been filed with a receiving Office competent under Rule 19.1(a)(i) or (ii), (b) or (c), or Rule 19.2(i).
(b) Where two or more International Searching Authorities are competent under paragraph (a), the choice shall be left to the applicant.
(c) Rules 35.1 and 35.2 shall not apply to the International Bureau as receiving Office under Rule 19.1(a)(iii).
Rule 36
Minimum Requirements for International Searching Authorities
36.1 Definition of Minimum Requirements
The minimum requirements referred to in Article 16(3)(c) shall be the following:
(i) the national Office or intergovernmental organization must have at least 100 full-time employees with sufficient technical qualifications to carry out searches;
(ii) that Office or organization must have in its possession, or have access to, at least the minimum documentation referred to in Rule 34, properly arranged for search purposes, on paper, in microform or stored on electronic media;
(iii) that Office or organization must have a staff which is capable of searching the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated;
(iv) that Office or organization must have in place a quality management system and internal review arrangements in accordance with the common rules of international search;
(v) that Office or organization must hold an appointment as an International Preliminary Examining Authority.
Rule 37
Missing or Defective Title
37.1 Lack of Title
If the international application does not contain a title and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.
37.2 Establishment of Title
If the international application does not contain a title and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish a title, or if the said Authority finds that the title does not comply with Rule 4.3, it shall itself establish a title. Such title shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, in the language of that translation.
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Rule 38
Missing or Defective Abstract
38.1 Lack of Abstract
If the international application does not contain an abstract and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.
38.2 Establishment of Abstract
If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall itself establish an abstract. Such abstract shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, in the language of that translation.
38.3 Modification of Abstract
The applicant may, until the expiration of one month from the date of mailing of the international search report, submit to the International Searching Authority:
(i) proposed modifications of the abstract; or
(ii) where the abstract has been established by the Authority, proposed modifications of, or comments on, that abstract, or both modifications and comments;
and the Authority shall decide whether to modify the abstract accordingly. Where the Authority modifies the abstract, it shall notify the modification to the International Bureau.
Rule 39
Subject Matter Under Article 17(2)(a)(i)
39.1 Definition
No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following:
(i) scientific and mathematical theories,
(ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
(iii) schemes, rules, or methods of doing business, performing purely mental acts or playing games,
(iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
(v) mere presentations of information,
(vi) computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs.
Rule 40
Lack of Unity of Invention (International Search)
40.1 Invitation to Pay Additional Fees; Time Limit
The invitation to pay additional fees provided for in Article 17(3)(a) shall:
(i) specify the reasons for which the international application is not considered as complying with the requirement of unity of invention;
(ii) invite the applicant to pay the additional fees within one month from the date of the invitation, and indicate the amount of those fees to be paid; and
(iii) invite the applicant to pay, where applicable, the protest fee referred to in Rule 40.2(e) within one
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month from the date of the invitation, and indicate the amount to be paid.
40.2 Additional Fees
(a) The amount of the additional fees due for searching under Article 17(3)(a) shall be determined by the competent International Searching Authority.
(b) The additional fees due for searching under Article 17(3)(a) shall be payable direct to the International Searching Authority.
(c) Any applicant may pay the additional fees under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the amount of the required additional fees is excessive. Such protest shall be examined by a review body constituted in the framework of the International Searching Authority, which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fees. On the request of the applicant, the text of both the protest and the decision thereon shall be notified to the designated Offices together with the international search report. The applicant shall submit any translation thereof with the furnishing of the translation of the international application required under Article 22.
(d) The membership of the review body referred to in paragraph (c) may include, but shall not be limited to, the person who made the decision which is the subject of the protest.
(e) The examination of a protest referred to in paragraph (c) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a protest fee. Where the applicant has not, within the time limit under Rule 40.1(iii), paid any required protest fee, the protest shall be considered not to have been made and the International Searching Authority shall so declare. The protest fee shall be refunded to the applicant where the review
body referred to in paragraph (c) finds that the protest was entirely justified.
40.3 [Deleted]
Rule 41
Taking into Account Results of Earlier Search
41.1 Taking into Account Results of Earlier Search
Where the applicant has, under Rule 4.12, requested the International Searching Authority to take into account the results of an earlier search and has complied with Rule 12 bis.1 and:
(i) the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, the International Searching Authority shall, to the extent possible, take those results into account in carrying out the international search;
(ii) the earlier search was carried out by another International Searching Authority, or by an Office other than that which is acting as the International Searching Authority, the International Searching Authority may take those results into account in carrying out the international search.
Rule 42
Time Limit for International Search
42.1 Time Limit for International Search
The time limit for establishing the international search report or the declaration referred to in Article 17(2)(a) shall be three months from the receipt of the search copy by the International Searching Authority, or nine months from the priority date, whichever time limit expires later.
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Rule 43
The International Search Report
43.1 Identifications
The international search report shall identify the International Searching Authority which established it by indicating the name of such Authority, and the international application by indicating the international application number, the name of the applicant, and the international filing date.
43.2 Dates
The international search report shall be dated and shall indicate the date on which the international search was actually completed. It shall also indicate the filing date of any earlier application whose priority is claimed or, if the priority of more than one earlier application is claimed, the filing date of the earliest among them.
43.3 Classification
(a) The international search report shall contain the classification of the subject matter at least according to the International Patent Classification.
(b) Such classification shall be effected by the International Searching Authority.
43.4 Language
Every international search report and any declaration made under Article 17(2)(a) shall be in the language in which the international application to which it relates is to be published, provided that:
(i) if a translation of the international application into another language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, the international search report and any declaration made under Article 17(2)(a) may be in the language of that translation;
(ii) if the international application is to be published in the language of a translation furnished under Rule 12.4 which is not accepted by the International Searching Authority and that Authority so wishes, the international search report and any
declaration made under Article 17(2)(a) may be in a language which is both a language accepted by that Authority and a language of publication referred to in Rule 48.3(a).
43.5 Citations
(a) The international search report shall contain the citations of the documents considered to be relevant.
(b) The method of identifying any cited document shall be regulated by the Administrative Instructions.
(c) Citations of particular relevance shall be specially indicated.
(d) Citations which are not relevant to all the claims shall be cited in relation to the claim or claims to which they are relevant.
(e) If only certain passages of the cited document are relevant or particularly relevant, they shall be identified, for example, by indicating the page, the column, or the lines, where the passage appears. If the entire document is relevant but some passages are of particular relevance, such passages shall be identified unless such identification is not practicable.
43.6 Fields Searched
(a) The international search report shall list the classification identification of the fields searched. If that identification is effected on the basis of a classification other than the International Patent Classification, the International Searching Authority shall publish the classification used.
(b) If the international search extended to patents, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, utility certificates of addition, or published applications for any of those kinds of protection, of States, periods, or languages, not included in the minimum documentation as defined in Rule 34, the international search report shall, when practicable, identify the kinds of documents, the States, the periods, and the languages to which it extended. For the purposes of this paragraph, Article 2(ii) shall not apply.
(c) If the international search was based on, or was extended to, any electronic data base, the international search report may indicate the name of
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the data base and, where considered useful to others and practicable, the search terms used.
43.6 bis Consideration of Rectifications of Obvious Mistakes
(a) A rectification of an obvious mistake that is authorized under Rule 91.1 shall, subject to paragraph (b), be taken into account by the International Searching Authority for the purposes of the international search and the international search report shall so indicate.
(b) A rectification of an obvious mistake need not be taken into account by the International Searching Authority for the purposes of the international search if it is authorized by or notified to that Authority, as applicable, after it has begun to draw up the international search report, in which case the report shall, if possible, so indicate, failing which the International Searching Authority shall notify the International Bureau accordingly and the International Bureau shall proceed as provided for in the Administrative Instructions.
43.7 Remarks Concerning Unity of Invention
If the applicant paid additional fees for the international search, the international search report shall so indicate. Furthermore, where the international search was made on the main invention only or on less than all the inventions (Article 17(3)(a)), the international search report shall indicate what parts of the international application were and what parts were not searched.
43.8 Authorized Officer
The international search report shall indicate the name of the officer of the International Searching Authority responsible for that report.
43.9 Additional Matter
The international search report shall contain no matter other than that specified in Rules 33.1(b) and (c), 43.1 to 43.3, 43.5 to 43.8, and 44.2, and the indication referred to in Article 17(2)(b), provided that the Administrative Instructions may permit the inclusion in the international search report of any additional matter specified in the Administrative
Instructions. The international search report shall not contain, and the Administrative Instructions shall not permit the inclusion of, any expressions of opinion, reasoning, arguments, or explanations.
43.10 Form
The physical requirements as to the form of the international search report shall be prescribed by the Administrative Instructions.
Rule 43bis
Written Opinion of the International Searching Authority
43 bis.1 Written Opinion
(a) Subject to Rule 69.1(b -bis), the International Searching Authority shall, at the same time as it establishes the international search report or the declaration referred to in Article 17(2)(a), establish a written opinion as to:
(i) whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable;
(ii) whether the international application complies with the requirements of the Treaty and these Regulations in so far as checked by the International Searching Authority.
The written opinion shall also be accompanied by such other observations as these Regulations provide for.
(b) For the purposes of establishing the written opinion, Articles 33(2) to (6) and 35(2) and (3) and Rules 43.4, 43.6 bis , 64, 65, 66.1(e), 66.7, 67, 70.2(b) and (d), 70.3, 70.4(ii), 70.5(a), 70.6 to 70.10, 70.12, 70.14 and 70.15(a) shall apply mutatis mutandis.
(c) The written opinion shall contain a notification informing the applicant that, if a demand for international preliminary examination is made, the written opinion shall, under Rule 66.1 bis(a) but subject to Rule 66.1 bis(b), be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a), in which case the applicant is invited to
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submit to that Authority, before the expiration of the time limit under Rule 54 bis.1(a), a written reply together, where appropriate, with amendments.
Rule 44
Transmittal of the International Search Report, Written Opinion, Etc.
44.1 Copies of Report or Declaration and Written Opinion
The International Searching Authority shall, on the same day, transmit one copy of the international search report or of the declaration referred to in Article 17(2)(a), and one copy of the written opinion established under Rule 43 bis.1 to the International Bureau and one copy to the applicant.
44.2 Title or Abstract
The international search report shall either state that the International Searching Authority approves the title and the abstract as submitted by the applicant or be accompanied by the text of the title and/or abstract as established by the International Searching Authority under Rules 37 and 38.
44.3 Copies of Cited Documents
(a) The request referred to in Article 20(3) may be presented any time during seven years from the international filing date of the international application to which the international search report relates.
(b) The International Searching Authority may require that the party (applicant or designated Office) presenting the request pay to it the cost of preparing and mailing the copies. The level of the cost of preparing copies shall be provided for in the agreements referred to in Article 16(3)(b) between the International Searching Authorities and the International Bureau.
(c) [ Deleted]
(d) Any International Searching Authority may perform the obligations referred to in paragraphs (a) and (b) through another agency responsible to it.
Rule 44bis
International Preliminary Report on Patentability by the International Searching Authority
44 bis.1 Issuance of Report; Transmittal to the Applicant
(a) Unless an international preliminary examination report has been or is to be established, the International Bureau shall issue a report on behalf of the International Searching Authority (in this Rule referred to as “the report”) as to the matters referred to in Rule 43 bis.1(a). The report shall have the same contents as the written opinion established under Rule 43 bis.1.
(b) The report shall bear the title “international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty)” together with an indication that it is issued under this Rule by the International Bureau on behalf of the International Searching Authority.
(c) The International Bureau shall promptly transmit one copy of the report issued under paragraph (a) to the applicant.
44 bis.2 Communication to Designated Offices
(a) Where a report has been issued under Rule 44 bis.1, the International Bureau shall communicate it to each designated Office in accordance with Rule 93 bis.1 but not before the expiration of 30 months from the priority date.
(b) Where the applicant makes an express request to a designated Office under Article 23(2), the International Bureau shall communicate a copy of the written opinion established by the International Searching Authority under Rule 43 bis.1 to that Office promptly upon the request of that Office or of the applicant.
44 bis.3 Translation for Designated Offices
(a) Any designated State may, where a report has been issued under Rule 44 bis.1 in a language other than the official language, or one of the official languages, of its national Office, require a translation of the report into English. Any such requirement
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shall be notified to the International Bureau, which shall promptly publish it in the Gazette.
(b) If a translation is required under paragraph (a), it shall be prepared by or under the responsibility of the International Bureau.
(c) The International Bureau shall transmit a copy of the translation to any interested designated Office and to the applicant at the same time as it communicates the report to that Office.
(d) In the case referred to in Rule 44 bis.2(b), the written opinion established under Rule 43 bis.1 shall, upon request of the designated Office concerned, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to the designated Office concerned within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.
44 bis.4 Observations on the Translation
The applicant may make written observations as to the correctness of the translation referred to in Rule 44 bis.3(b) or (d) and shall send a copy of the observations to each of the interested designated Offices and to the International Bureau.
Rule 45
Translation of the International Search Report
45.1 Languages
International search reports and declarations referred to in Article 17(2)(a) shall, when not in English, be translated into English.
Rule 45bis
Supplementary International Searches
45 bis.1 Supplementary Search Request
(a) The applicant may, at any time prior to the expiration of 19 months from the priority date, request that a supplementary international search be carried out in respect of the international application
by an International Searching Authority that is competent to do so under Rule 45 bis.9. Such requests may be made in respect of more than one such Authority.
(b) A request under paragraph (a) (“supplementary search request”) shall be submitted to the International Bureau and shall indicate:
(i) the name and address of the applicant and of the agent (if any), the title of the invention, the international filing date and the international application number;
(ii) the International Searching Authority that is requested to carry out the supplementary international search (“Authority specified for supplementary search”); and
(iii) where the international application was filed in a language which is not accepted by that Authority, whether any translation furnished to the receiving Office under Rule 12.3 or 12.4 is to form the basis of the supplementary international search.
(c) The supplementary search request shall, where applicable, be accompanied by:
(i) where neither the language in which the international application was filed nor that in which a translation (if any) has been furnished under Rule 12.3 or 12.4 is accepted by the Authority specified for supplementary search, a translation of the international application into a language which is accepted by that Authority;
(ii) preferably, a copy of a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, if required by the Authority specified for supplementary search.
(d) Where the International Searching Authority has found that the international application does not comply with the requirement of unity of invention, the supplementary search request may contain an indication of the wish of the applicant to restrict the supplementary international search to one of the inventions as identified by the International Searching Authority other than the main invention referred to in Article 17(3)(a).
(e) The supplementary search request shall be considered not to have been submitted, and the International Bureau shall so declare:
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(i) if it is received after the expiration of the time limit referred to in paragraph (a); or
(ii) if the Authority specified for supplementary search has not stated, in the applicable agreement under Article 16(3)(b), its preparedness to carry out such searches or is not competent to do so under Rule 45 bis.9(b).
45 bis.2 Supplementary Search Handling Fee
(a) The supplementary search request shall be subject to the payment of a fee for the benefit of the International Bureau ("supplementary search handling fee") as set out in the Schedule of Fees.
(b) The supplementary search handling fee shall be paid in the currency in which the fee is set out in the Schedule of Fees or in any other currency prescribed by the International Bureau. The amount in such other currency shall be the equivalent, in round figures, as established by the International Bureau, of the amount as set out in the Schedule of Fees, and shall be published in the Gazette.
(c) The supplementary search handling fee shall be paid to the International Bureau within one month from the date of receipt of the supplementary search request. The amount payable shall be the amount applicable on the date of payment.
(d) The International Bureau shall refund the supplementary search handling fee to the applicant if, before the documents referred to in Rule 45 bis.4(e)(i) to (iv) are transmitted to the Authority specified for supplementary search, the international application is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or is considered not to have been submitted under Rule 45 bis.1(e).
45 bis.3 Supplementary Search Fee
(a) Each International Searching Authority carrying out supplementary international searches may require that the applicant pay a fee (“supplementary search fee”) for its own benefit for carrying out such a search.
(b) The supplementary search fee shall be collected by the International Bureau. Rule 16.1(b) to (e) shall apply mutatis mutandis.
(c) As to the time limit for payment of the supplementary search fee and the amount payable,
the provisions of Rule 45 bis.2(c) shall apply mutatis mutandis.
(d) The International Bureau shall refund the supplementary search fee to the applicant if, before the documents referred to in Rule 45 bis.4(e)(i) to (iv) are transmitted to the Authority specified for supplementary search, the international application is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or is considered not to have been submitted under Rule 45 bis.1(e) or Rule 45 bis.4(d).
(e) The Authority specified for supplementary search shall, to the extent and under the conditions provided for in the applicable agreement under Article 16(3)(b), refund the supplementary search fee if, before it has started the supplementary international search in accordance with Rule 45 bis.5(a), the supplementary search request is considered not to have been submitted under Rule 45 bis.5(g).
45 bis.4 Checking of Supplementary Search Request; Correction of Defects; Late Payment of Fees; Transmittal to Authority Specified for Supplementary Search
(a) Promptly after receipt of a supplementary search request, the International Bureau shall check whether it complies with the requirements of Rule 45 bis.1(b) and (c)(i) and shall invite the applicant to correct any defects within a time limit of one month from the date of the invitation.
(b) Where, by the time they are due under Rules 45 bis.2(c) and 45 bis.3(c), the International Bureau finds that the supplementary search handling fee and the supplementary search fee have not been paid in full, it shall invite the applicant to pay to it the amount required to cover those fees, together with the late payment fee under paragraph (c), within a time limit of one month from the date of the invitation.
(c) The payment of fees in response to an invitation under paragraph (b) shall be subject to the payment to the International Bureau, for its own benefit, of a late payment fee whose amount shall be 50% of the supplementary search handling fee.
(d) If the applicant does not furnish the required correction or does not pay the amount in full of the fees due, including the late payment fee, before the
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expiration of the time limit applicable under paragraph (a) or (b), respectively, the supplementary search request shall be considered not to have been submitted and the International Bureau shall so declare and shall inform the applicant accordingly.
(e) On finding that the requirements of Rule 45 bis.1(b) and (c)(i), 45 bis.2(c) and 45 bis.3(c) have been complied with, the International Bureau shall promptly, but not before the date of receipt by it of the international search report or the expiration of 17 months from the priority date, whichever occurs first, transmit to the Authority specified for supplementary search a copy of each of the following:
(i) the supplementary search request;
(ii) the international application;
(iii) any sequence listing furnished under Rule 45 bis.1(c)(ii); and
(iv) any translation furnished under Rule 12.3, 12.4 or 45 bis.1(c)(i) which is to be used as the basis of the supplementary international search; and, at the same time, or promptly after their later receipt by the International Bureau:
(v) the international search report and the written opinion established under Rule 43 bis.1;
(vi) any invitation by the International Searching Authority to pay additional fees referred to in Article 17(3)(a); and
(vii) any protest by the applicant under Rule 40.2(c) and the decision thereon by the review body constituted in the framework of the International Searching Authority.
(f) Upon request of the Authority specified for supplementary search, the written opinion referred to in paragraph (e)(v) shall, when not in English or in a language accepted by that Authority, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to that Authority within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.
45 bis.5 Start, Basis and Scope of Supplementary International Search
(a) The Authority specified for supplementary search shall start the supplementary international
search promptly after receipt of the documents specified in Rule 45 bis.4(e)(i) to (iv), provided that the Authority may, at its option, delay the start of the search until it has also received the documents specified in Rule 45 bis.4(e)(v) or until the expiration of 22 months from the priority date, whichever occurs first.
(b) The supplementary international search shall be carried out on the basis of the international application as filed or of a translation referred to in Rule 45 bis.1(b)(iii) or 45 bis.1(c)(i), taking due account of the international search report and the written opinion established under Rule 43 bis.1 where they are available to the Authority specified for supplementary search before it starts the search. Where the supplementary search request contains an indication under Rule 45 bis.1(d), the supplementary international search may be restricted to the invention specified by the applicant under Rule 45 bis.1(d) and those parts of the international application which relate to that invention.
(c) For the purposes of the supplementary international search, Article 17(2) and Rules 13 ter.1, 33 and 39 shall apply mutatis mutandis.
(d) Where the international search report is available to the Authority specified for supplementary search before it starts the search under paragraph (a), that Authority may exclude from the supplementary search any claims which were not the subject of the international search.
(e) Where the International Searching Authority has made the declaration referred to in Article 17(2)(a) and that declaration is available to the Authority specified for supplementary search before it starts the search under paragraph (a), that Authority may decide not to establish a supplementary international search report, in which case it shall so declare and promptly notify the applicant and the International Bureau accordingly.
(f) The supplementary international search shall cover at least the documentation indicated for that purpose in the applicable agreement under Article 16(3)(b).
(g) If the Authority specified for supplementary search finds that carrying out the search is entirely excluded by a limitation or condition referred to in Rule 45 bis.9(a), other than a limitation under Article 17(2) as applicable by virtue of Rule 45 bis.5(c), the supplementary search request shall be considered
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not to have been submitted, and the Authority shall so declare and shall promptly notify the applicant and the International Bureau accordingly.
(h) The Authority specified for supplementary search may, in accordance with a limitation or condition referred to in Rule 45 bis.9(a), decide to restrict the search to certain claims only, in which case the supplementary international search report shall so indicate.
45 bis.6 Unity of Invention
(a) If the Authority specified for supplementary search finds that the international application does not comply with the requirement of unity of invention, it shall:
(i) establish the supplementary international search report on those parts of the international application which relate to the invention first mentioned in the claims ("main invention");
(ii) notify the applicant of its opinion that the international application does not comply with the requirement of unity of invention and specify the reasons for that opinion; and
(iii) inform the applicant of the possibility of requesting, within the time limit referred to in paragraph (c), a review of the opinion.
(b) In considering whether the international application complies with the requirement of unity of invention, the Authority shall take due account of any documents received by it under PCT Rule 45 bis.4(e)(vi) and (vii) before it starts the supplementary international search.
(c) The applicant may, within one month from the date of the notification under paragraph (a)(ii), request the Authority to review the opinion referred to in paragraph (a). The request for review may be subjected by the Authority to the payment to it, for its own benefit, of a review fee whose amount shall be fixed by it.
(d) If the applicant, within the time limit under paragraph (c), requests a review of the opinion by the Authority and pays any required review fee, the opinion shall be reviewed by the Authority. The review shall not be carried out only by the person who made the decision which is the subject of the review. Where the Authority:
(i) finds that the opinion was entirely justified, it shall notify the applicant accordingly;
(ii) finds that the opinion was partially unjustified but still considers that the international application does not comply with the requirement of unity of invention, it shall notify the applicant accordingly and, where necessary, proceed as provided for in paragraph (a)(i);
(iii) finds that the opinion was entirely unjustified, it shall notify the applicant accordingly, establish the supplementary international search report on all parts of the international application and refund the review fee to the applicant.
(e) On the request of the applicant, the text of both the request for review and the decision thereon shall be communicated to the designated Offices together with the supplementary international search report. The applicant shall submit any translation thereof with the furnishing of the translation of the international application required under Article 22.
(f) Paragraphs (a) to (e) shall apply mutatis mutandis where the Authority specified for supplementary search decides to restrict the supplementary international search in accordance with the second sentence of Rule 45 bis.5(b) or with Rule 45 bis.5(h), provided that any reference in the said paragraphs to the "international application" shall be construed as a reference to those parts of the international application which relate to the invention specified by the applicant under Rule 45 bis.1(d) or which relate to the claims and those parts of the international application for which the Authority will carry out a supplementary international search, respectively.
45 bis.7 Supplementary International Search Report
(a) The Authority specified for supplementary search shall, within 28 months from the priority date, establish the supplementary international search report, or make the declaration referred to in Article 17(2)(a) as applicable by virtue of Rule 45 bis.5(c) that no supplementary international search report will be established.
(b) Every supplementary international search report, any declaration referred to in Article 17(2)(a) as applicable by virtue of Rule 45 bis.5(c) and any
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declaration under Rule 45 bis.5(e) shall be in a language of publication.
(c) For the purposes of establishing the supplementary international search report, Rules 43.1, 43.2, 43.5, 43.6, 43.6 bis , 43.8 and 43.10 shall, subject to paragraphs (d) and (e), apply mutatis mutandis. Rule 43.9 shall apply mutatis mutandis, except that the references therein to Rules 43.3, 43.7 and 44.2 shall be considered non-existent. Article 20(3) and Rule 44.3 shall apply mutatis mutandis.
(d) The supplementary international search report need not contain the citation of any document cited in the international search report, except where the document needs to be cited in conjunction with other documents that were not cited in the international search report.
(e) The supplementary international search report may contain explanations:
(i) with regard to the citations of the documents considered to be relevant;
(ii) with regard to the scope of the supplementary international search.
45 bis.8 Transmittal and Effect of the Supplementary International Search Report
(a) The Authority specified for supplementary search shall, on the same day, transmit one copy of the supplementary international search report or the declaration that no supplementary international search report shall be established, as applicable, to the International Bureau and one copy to the applicant.
(b) Subject to paragraph (c), Article 20(1) and Rules 45.1, 47.1(d) and 70.7(a) shall apply as if the supplementary international search report were part of the international search report.
(c) A supplementary international search report need not be taken into account by the International Preliminary Examining Authority for the purposes of a written opinion or the international preliminary
examination report if it is received by that Authority after it has begun to draw up that opinion or report.
45 bis.9 International Searching Authorities Competent to Carry Out Supplementary International Search
(a) An International Searching Authority shall be competent to carry out supplementary international searches if its preparedness to do so is stated in the applicable agreement under Article 16(3)(b), subject to any limitations and conditions set out in that agreement.
(b) The International Searching Authority carrying out the international search under Article 16(1) in respect of an international application shall not be competent to carry out a supplementary international search in respect of that application.
(c) The limitations referred to in paragraph (a) may, for example, include limitations as to the subject matter for which supplementary international searches will be carried out, other than limitations under Article 17(2) as applicable by virtue of Rule 45 bis.5(c), limitations as to the total number of supplementary international searches which will be carried out in a given period, and limitations to the effect that the supplementary international searches will not extend to any claim beyond a certain number of claims. --------------------------------------------------------------------------------
Rule 46
Amendment of Claims before the International Bureau
46.1 Time Limit
The time limit referred to in Article 19 shall be two months from the date of transmittal of the international search report to the International Bureau and to the applicant by the International Searching Authority or 16 months from the priority date, whichever time limit expires later, provided that any amendment made under Article 19 which is received by the International Bureau after the expiration of the applicable time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before
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the technical preparations for international publication have been completed.
46.2 Where to File
Amendments made under Article 19 shall be filed directly with the International Bureau.
46.3 Language of Amendments
If the international application has been filed in a language other than the language in which it is published, any amendment made under Article 19 shall be in the language of publication.
46.4 Statement
(a) The statement referred to in Article 19(1) shall be in the language in which the international application is published and shall not exceed 500 words if in the English language or if translated into that language. The statement shall be identified as such by a heading, preferably by using the words “Statement under Article 19(1)” or their equivalent in the language of the statement.
(b) The statement shall contain no disparaging comments on the international search report or the relevance of citations contained in that report. Reference to citations, relevant to a given claim, contained in the international search report may be made only in connection with an amendment of that claim.
46.5 Form of Amendments
(a) The applicant, when making amendments under Article 19, shall be required to submit a replacement sheet or sheets containing a complete set of claims in replacement of all the claims originally filed.
(b) The replacement sheet or sheets shall be accompanied by a letter which:
(i) shall identify the claims which, on account of the amendments, differ from the claims originally filed, and shall draw attention to the differences between the claims originally filed and the claims as amended;
(ii) shall identify the claims originally filed which, on account of the amendments, are cancelled.
(iii) shall indicate the basis for the amendments in the application as filed.
Rule 47
Communication to Designated Offices
47.1 Procedure
(a) The communication provided for in Article 20 shall be effected by the International Bureau to each designated Office in accordance with Rule 93 bis.1 but, subject to Rule 47.4, not prior to the international publication of the international application.
(a-bis) The International Bureau shall notify each designated Office, in accordance with Rule 93 bis.1, of the fact and date of receipt of the record copy and of the fact and date of receipt of any priority document.
(b) Any amendment received by the International Bureau within the time limit under Rule 46.1 which was not included in the communication provided for in Article 20 shall be communicated promptly to the designated Offices by the International Bureau, and the latter shall notify the applicant accordingly.
(c) The International Bureau shall, promptly after the expiration of 28 months from the priority date, send a notice to the applicant indicating:
(i) the designated Offices which have requested that the communication provided for in Article 20 be effected under Rule 93 bis.1 and the date of such communication to those Offices; and
(ii) the designated Offices which have not requested that the communication provided for in Article 20 be effected under Rule 93 bis.1.
(c-bis) The notice referred to in paragraph (c) shall be accepted by designated Offices:
(i) in the case of a designated Office referred to in paragraph (c)(i), as conclusive evidence that the communication provided for in Article 20 was effected on the date specified in the notice;
(ii) in the case of a designated Office referred to in paragraph (c)(ii), as conclusive evidence that the Contracting State for which that Office acts as designated Office does not require the furnishing, under Article 22, by the applicant of a copy of the international application.
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(d) Each designated Office shall, when it so requires, receive the international search reports and the declarations referred to in Article 17(2)(a) also in the translation referred to in Rule 45.1.
(e) Where any designated Office has not, before the expiration of 28 months from the priority date, requested the International Bureau to effect the communication provided for in Article 20 in accordance with Rule 93 bis.1, the Contracting State for which that Office acts as designated Office shall be considered to have notified the International Bureau, under Rule 49.1(a- bis), that it does not require the furnishing, under Article 22, by the applicant of a copy of the international application.
47.2 Copies
The copies required for communication shall be prepared by the International Bureau. Further details concerning the copies required for communication may be provided for in the Administrative Instructions.
(b) [Deleted]
(c) [Deleted]
47.3 Languages
(a) The international application communicated under Article 20 shall be in the language in which it is published.
(b) Where the language in which the international application is published is different from the language in which it was filed, the International Bureau shall furnish to any designated Office, upon the request of that Office, a copy of that application in the language in which it was filed.
47.4 Express Request Under Article 23(2) Prior to International Publication
Where the applicant makes an express request to a designated Office under Article 23(2) prior to the international publication of the international application, the International Bureau shall, upon request of the applicant or the designated Office, promptly effect the communication provided for in Article 20 to that Office.
Rule 48
International Publication
48.1 Form and Means
The form in which and the means by which international applications are published shall be governed by the Administrative Instructions.
48.2 Contents
(a) The publication of the international application shall contain:
(i) a standardized front page;
(ii) the description;
(iii) the claims;
(iv) the drawings, if any;
(v) subject to paragraph (g), the international search report or the declaration under Article 17(2)(a);
(vi) any statement filed under Article 19(1), unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4;
(vii) where the request for publication under Rule 91.3(d) was received by the International Bureau before the completion of the technical preparations for international publication, any request for rectification of an obvious mistake, any reasons and any comments referred to in Rule 91.3(d);
(viii) the indications in relation to deposited biological material furnished under Rule 13 bis separately from the description, together with an indication of the date on which the International Bureau received such indications;
(ix) any information concerning a priority claim referred to in Rule 26 bis .2(d);
(x) any declaration referred to in Rule 4.17, and any correction thereof under Rule 26 ter.1, which was received by the International Bureau before the expiration of the time limit under Rule 26 ter.1;
(xi) any information concerning a request under Rule 26 bis.3 for restoration of the right of
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priority and the decision of the receiving Office upon such request, including information as to the criterion for restoration upon which the decision was based.
(b) Subject to paragraph (c), the front page shall include:
(i) data taken from the request sheet and such other data as are prescribed by the Administrative Instructions;
(ii) a figure or figures where the international application contains drawings, unless Rule 8.2(b) applies;
(iii) the abstract; if the abstract is both in English and in another language, the English text shall appear first;
(iv) where applicable, an indication that the request contains a declaration referred to in Rule 4.17 which was received by the International Bureau before the expiration of the time limit under Rule 26 ter.1;
(v) where the international filing date has been accorded by the receiving Office under Rule 20.3(b)(ii) or 20.5(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part, an indication to that effect, together with an indication as to whether the applicant, for the purposes of Rule 20.6(a)(ii), relied on compliance with Rule 17.1(a), (b) or (b- bis) in relation to the priority document or on a separately submitted copy of the earlier application concerned;
(vi) where applicable, an indication that the published international application contains information under Rule 26 bis.2 (d);
(vii) where applicable, an indication that the published international application contains information concerning a request under Rule 26 bis.3 for restoration of the right of priority and the decision of the receiving Office upon such request;
(viii) where applicable, an indication that the applicant has, under Rule 26 bis.3(f), furnished copies of any declaration or other evidence to the International Bureau.
(c) Where a declaration under Article 17(2)(a) has issued, the front page shall conspicuously refer to that fact and need include neither a drawing nor an abstract.
(d) The figure or figures referred to in paragraph (b)(ii) shall be selected as provided in Rule 8.2. Reproduction of such figure or figures on the front page may be in a reduced form.
(e) If there is not enough room on the front page for the totality of the abstract referred to in paragraph (b)(iii), the said abstract shall appear on the back of the front page. The same shall apply to the translation of the abstract when such translation is required to be published under Rule 48.3(c).
(f) If the claims have been amended under Article 19, the publication of the international application shall contain the full text of the claims both as filed and as amended. Any statement referred to in Article 19(1) shall be included as well, unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4. The date of receipt of the amended claims by the International Bureau shall be indicated.
(g) If, at the time of the completion of the technical preparations for international publication, the international search report is not yet available, the front page shall contain an indication to the effect that that report was not available and that the international search report (when it becomes available) will be separately published together with a revised front page.
(h) If, at the time of the completion of the technical preparations for international publication, the time limit for amending the claims under Article 19 has not expired, the front page shall refer to that fact and indicate that, should the claims be amended under Article 19, then, promptly after receipt by the International Bureau of such amendments within the time limit under Rule 46.1, the full text of the claims as amended will be published together with a revised front page. If a statement under Article 19(1) has been filed, that statement shall be published as well, unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4.
(i) If the authorization by the receiving Office, the International Searching Authority or the International Bureau of a rectification of an obvious mistake in the international application under Rule 91.1 is received by or, where applicable, given by the International Bureau after completion of the technical preparations for international publication, a statement reflecting all the rectifications shall be
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published, together with the sheets containing the rectifications, or the replacement sheets and the letter furnished under Rule 91.2, as the case may be, and the front page shall be republished.
(j) If, at the time of completion of the technical preparations for international publication, a request under Rule 26 bis.3 for restoration of the right of priority is still pending, the published international application shall contain, in place of the decision by the receiving Office upon that request, an indication to the effect that such decision was not available and that the decision, when it becomes available, will be separately published.
(k) If a request for publication under Rule 91.3(d) was received by the International Bureau after the completion of the technical preparations for international publication, the request for rectification, any reasons and any comments referred to in that Rule shall be promptly published after the receipt of such request for publication, and the front page shall be republished.
48.3 Languages of Publication
(a) If the international application is filed in Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish (“languages of publication”), that application shall be published in the language in which it was filed.
(b) If the international application is not filed in a language of publication and a translation into a language of publication has been furnished under Rule 12.3 or 12.4, that application shall be published in the language of that translation.
(c) If the international application is published in a language other than English, the international search report to the extent that it is published under Rule 48.2(a)(v), or the declaration referred to in Article 17(2)(a), the title of the invention, the abstract and any text matter pertaining to the figure or figures accompanying the abstract shall be published both in that language and in English. The translations, if not furnished by the applicant under
Rule 12.3, shall be prepared under the responsibility of the International Bureau.
48.4 Earlier Publication on the Applicant’s Request
(a) Where the applicant asks for publication under Articles 21(2)(b) and 64(3)(c)(i) and the international search report, or the declaration referred to in Article 17(2)(a), is not yet available for publication together with the international application, the International Bureau shall collect a special publication fee whose amount shall be fixed in the Administrative Instructions.
(b) Publication under Articles 21(2)(b) and 64(3)(c)(i) shall be effected by the International Bureau promptly after the applicant has asked for it and, where a special fee is due under paragraph (a), after receipt of such fee.
48.5 Notification of National Publication
Where the publication of the international application by the International Bureau is governed by Article 64(3)(c)(ii), the national Office concerned shall, promptly after effecting the national publication referred to in the said provision, notify the International Bureau of the fact of such national publication.
48.6 Announcing of Certain Facts
(a) If any notification under Rule 29.1(ii) reaches the International Bureau at a time later than that at which it was able to prevent the international publication of the international application, the International Bureau shall promptly publish a notice in the Gazette reproducing the essence of such notification.
(b) [ Deleted]
(c) If the international application, the designation of any designated State or the priority claim is withdrawn under Rule 90 bis after the technical preparations for international publication have been completed, notice of the withdrawal shall be published in the Gazette.
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Rule 49
Copy, Translation and Fee Under Article 22
49.1 Notification
(a) Any Contracting State requiring the furnishing of a translation or the payment of a national fee, or both, under Article 22, shall notify the International Bureau of:
(i) the languages from which and the language into which it requires translation,
(ii) the amount of the national fee.
(a-bis) Any Contracting State not requiring the furnishing, under Article 22, by the applicant of a copy of the international application (even though the communication of the copy of the international application by the International Bureau under Rule 47 has not taken place by the expiration of the time limit applicable under Article 22) shall notify the International Bureau accordingly.
(a-ter) Any Contracting State which, pursuant to Article 24(2), maintains, if it is a designated State, the effect provided for in Article 11(3) even though a copy of the international application is not furnished by the applicant by the expiration of the time limit applicable under Article 22 shall notify the International Bureau accordingly.
(b) Any notification received by the International Bureau under paragraphs (a), (a- bis) or (a- ter) shall be promptly published by the International Bureau in the Gazette.
(c) If the requirements under paragraph (a) change later, such changes shall be notified by the Contracting State to the International Bureau and that Bureau shall promptly publish the notification in the Gazette. If the change means that translation is required into a language which, before the change, was not required, such change shall be effective only with respect to international applications filed later than two months after the publication of the notification in the Gazette. Otherwise, the effective
date of any change shall be determined by the Contracting State.
49.2 Languages
The language into which translation may be required must be an official language of the designated Office. If there are several of such languages, no translation may be required if the international application is in one of them. If there are several official languages and a translation must be furnished, the applicant may choose any of those languages. Notwithstanding the foregoing provisions of this paragraph, if there are several official languages but the national law prescribes the use of one such language for foreigners, a translation into that language may be required.
49.3 Statements Under Article 19; Indications Under Rule 13 bis.4
For the purposes of Article 22 and the present Rule, any statement made under Article 19(1) and any indication furnished under Rule 13 bis .4 shall, subject to Rule 49.5(c) and (h), be considered part of the international application.
49.4 Use of National Form
No applicant shall be required to use a national form when performing the acts referred to in Article 22.
49.5 Contents of and Physical Requirements for the Translation
(a) For the purposes of Article 22, the translation of the international application shall contain the description (subject to paragraph (a- bis)), the claims, any text matter of the drawings and the abstract. If required by the designated Office, the translation shall also, subject to paragraphs (b), (c -bis) and (e),
(i) contain the request,
(ii) if the claims have been amended under Article 19, contain both the claims as filed and the claims as amended (the claims as amended shall be furnished in the form of a translation of the complete set of claims furnished under Rule 46.5(a) in replacement of all the claims originally filed), and
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(iii) be accompanied by a copy of the drawings.
(a-bis) No designated Office shall require the applicant to furnish to it a translation of any text matter contained in the sequence listing part of the description if such sequence listing part complies with Rule 12.1(d) and if the description complies with Rule 5.2(b).
(b) Any designated Office requiring the furnishing of a translation of the request shall furnish copies of the request form in the language of the translation free of charge to the applicants. The form and contents of the request form in the language of the translation shall not be different from those of the request under Rules 3 and 4; in particular, the request form in the language of the translation shall not ask for any information that is not in the request as filed. The use of the request form in the language of the translation shall be optional.
(c) Where the applicant did not furnish a translation of any statement made under Article 19(1), the designated Office may disregard such statement.
(c-bis) Where the applicant furnishes, to a designated Office which requires under paragraph (a)(ii) a translation of both the claims as filed and the claims as amended, only one of the required two translations, the designated Office may disregard the claims of which a translation has not been furnished or invite the applicant to furnish the missing translation within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation. Where the designated Office chooses to invite the applicant to furnish the missing translation and the latter is not furnished within the time limit fixed in the invitation, the designated Office may disregard those claims of which a translation has not been furnished or consider the international application withdrawn.
(d) If any drawing contains text matter, the translation of that text matter shall be furnished either in the form of a copy of the original drawing with the translation pasted on the original text matter or in the form of a drawing executed anew.
(e) Any designated Office requiring under paragraph (a) the furnishing of a copy of the drawings shall, where the applicant failed to furnish such copy within the time limit applicable under
Article 22, invite the applicant to furnish such copy within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
(f) The expression “Fig.” does not require translation into any language.
(g) Where any copy of the drawings or any drawing executed anew which has been furnished under paragraph (d) or (e) does not comply with the physical requirements referred to in Rule 11, the designated Office may invite the applicant to correct the defect within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
(h) Where the applicant did not furnish a translation of the abstract or of any indication furnished under Rule 13 bis.4, the designated Office shall invite the applicant to furnish such translation, if it deems it to be necessary, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
(i) Information on any requirement and practice of designated Offices under the second sentence of paragraph (a) shall be published by the International Bureau in the Gazette.
(j) No designated Office shall require that the translation of the international application comply with physical requirements other than those prescribed for the international application as filed.
(k) Where a title has been established by the International Searching Authority pursuant to Rule 37.2, the translation shall contain the title as established by that Authority.
(l) If, on July 12, 1991, paragraph (c- bis) or paragraph (k) is not compatible with the national law applied by the designated Office, the paragraph concerned shall not apply to that designated Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1991. The information received shall be promptly published by the International Bureau in the Gazette.
49.6 Reinstatement of Rights After Failure to Perform the Acts Referred to in Article 22
(a) Where the effect of the international application provided for in Article 11(3) has ceased because the applicant failed to perform the acts referred to in Article 22 within the applicable time
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limit, the designated Office shall, upon request of the applicant, and subject to paragraphs (b) to (e) of this Rule, reinstate the rights of the applicant with respect to that international application if it finds that any delay in meeting that time limit was unintentional or, at the option of the designated Office, that the failure to meet that time limit occurred in spite of due care required by the circumstances having been taken.
(b) The request under paragraph (a) shall be submitted to the designated Office, and the acts referred to in Article 22 shall be performed, within whichever of the following periods expires first:
(i) two months from the date of removal of the cause of the failure to meet the applicable time limit under Article 22; or
(ii) 12 months from the date of the expiration of the applicable time limit under Article 22;
provided that the applicant may submit the request at any later time if so permitted by the national law applicable by the designated Office.
(c) The request under paragraph (a) shall state the reasons for the failure to comply with the applicable time limit under Article 22.
(d) The national law applicable by the designated Office may require:
(i) that a fee be paid in respect of a request under paragraph (a);
(ii) that a declaration or other evidence in support of the reasons referred to in paragraph (c) be filed.
(e) The designated Office shall not refuse a request under paragraph (a) without giving the applicant the opportunity to make observations on the intended refusal within a time limit which shall be reasonable under the circumstances.
(f) If, on October 1, 2002, paragraphs (a) to (e) are not compatible with the national law applied by the designated Office, those paragraphs shall not apply in respect of that designated Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by January 1, 2003. The information received shall be promptly published by the International Bureau in the Gazette.
Rule 49bis
Indications as to Protection Sought for Purposes of National Processing
49 bis.1 Choice of Certain Kinds of Protection
(a) If the applicant wishes the international application to be treated, in a designated State in respect of which Article 43 applies, as an application not for the grant of a patent but for the grant of another kind of protection referred to in that Article, the applicant, when performing the acts referred to in Article 22, shall so indicate to the designated Office.
(b) If the applicant wishes the international application to be treated, in a designated State in respect of which Article 44 applies, as an application for the grant of more than one kind of protection referred to in Article 43, the applicant, when performing the acts referred to in Article 22, shall so indicate to the designated Office and shall indicate, if applicable, which kind of protection is sought primarily and which kind is sought subsidiarily.
(c) In the cases referred to in paragraphs (a) and (b), if the applicant wishes the international application to be treated, in a designated State, as an application for a patent of addition, certificate of addition, inventor’s certificate of addition or utility certificate of addition, the applicant, when performing the acts referred to in Article 22, shall indicate the relevant parent application, parent patent or other parent grant.
(d) If the applicant wishes the international application to be treated, in a designated State, as an application for a continuation or a continuation-in-part of an earlier application, the applicant, when performing the acts referred to in Article 22, shall so indicate to the designated Office and shall indicate the relevant parent application.
(e) Where no express indication under paragraph (a) is made by the applicant when performing the acts referred to in Article 22 but the national fee referred to in Article 22 paid by the applicant corresponds to the national fee for a particular kind of protection, the payment of that fee shall be considered to be an indication of the wish of the
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applicant that the international application is to be treated as an application for that kind of protection and the designated Office shall inform the applicant accordingly.
49 bis.2 Time of Furnishing Indications
(a) No designated Office shall require the applicant to furnish, before performing the acts referred to in Article 22, any indication referred to in Rule 49 bis.1 or, where applicable, any indication as to whether the applicant seeks the grant of a national patent or a regional patent.
(b) The applicant may, if so permitted by the national law applicable by the designated Office concerned, furnish such indication or, if applicable, convert from one kind of protection to another, at any later time.
Rule 49ter
Effect of Restoration of Right of Priority by Receiving Office; Restoration of Right of Priority By Designated Office
49 ter.1 Effect of Restoration of Right of Priority by Receiving Office; Restoration of Right of Priority by Designated Office
(a) Where the receiving Office has restored a right of priority under Rule 26 bis.3 based on a finding by it that the failure to file the international application within the priority period occurred in spite of due care required by the circumstances having been taken, that restoration shall, subject to paragraph (c), be effective in each designated State.
(b) Where the receiving Office has restored a right of priority under Rule 26 bis.3 based on a finding by it that the failure to file the international application within the priority period was unintentional, that restoration shall, subject to paragraph (c), be effective in any designated State whose applicable national law provides for restoration of the right of priority based on that criterion or on a criterion which, from the viewpoint of applicants, is more favorable than that criterion.
(c) A decision by the receiving Office to restore a right of priority under Rule 26 bis.3 shall not be effective in a designated State where the designated Office, a court or any other competent organ of or
acting for that designated State finds that a requirement under Rule 26 bis.3(a), (b)(i) or (c) was not complied with, taking into account the reasons stated in the request submitted to the receiving Office under Rule 26 bis.3(a) and any declaration or other evidence filed with the receiving Office under Rule 26 bis.3(b)(iii).
(d) A designated Office shall not review the decision of the receiving Office unless it may reasonably doubt that a requirement referred to in paragraph (c) was complied with, in which case the designated Office shall notify the applicant accordingly, indicating the reasons for that doubt and giving the applicant an opportunity to make observations within a reasonable time limit.
(e) No designated State shall be bound by a decision of the receiving Office refusing a request under Rule 26 bis.3 for restoration of the right of priority.
(f) Where the receiving Office has refused a request for the restoration of the right of priority, any designated Office may consider that request to be a request for restoration submitted to that designated Office under Rule 49 ter.2(a) within the time limit under that Rule.
(g) If, on October 5, 2005, paragraphs (a) to (d) are not compatible with the national law applied by the designated Office, those paragraphs shall not apply in respect of that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.
49 ter.2 Restoration of Right of Priority by Designated Office
(a) Where the international application claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the designated Office shall, on the request of the applicant in accordance with paragraph (b), restore the right of priority if the Office finds that a criterion applied by it (“criterion for restoration”) is satisfied, namely, that the failure to file the international application within the priority period:
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(i) occurred in spite of due care required by the circumstances having been taken; or
(ii) was unintentional.
Each designated Office shall apply at least one of those criteria and may apply both of them.
(b) A request under paragraph (a) shall:
(i) be filed with the designated Office within a time limit of one month from the applicable time limit under Article 22 or, where the applicant makes an express request to the designated Office under Article 23(2), within a time limit of one month from the date of receipt of that request by the designated Office;
(ii) state the reasons for the failure to file the international application within the priority period and preferably be accompanied by any declaration or other evidence required under paragraph (c); and
(iii) be accompanied by any fee for requesting restoration required under paragraph (d).
(c) The designated Office may require that a declaration or other evidence in support of the statement of reasons referred to in paragraph (b)(ii) be filed with it within a time limit which shall be reasonable under the circumstances.
(d) The submission of a request under paragraph (a) may be subjected by the designated Office to the payment to it, for its own benefit, of a fee for requesting restoration.
(e) The designated Office shall not refuse, totally or in part, a request under paragraph (a) without giving the applicant the opportunity to make observations on the intended refusal within a time limit which shall be reasonable under the circumstances. Such notice of intended refusal may be sent by the designated Office to the applicant together with any invitation to file a declaration or other evidence under paragraph (c).
(f) Where the national law applicable by the designated Office provides, in respect of the restoration of the right of priority, for requirements which, from the viewpoint of applicants, are more favorable than the requirements provided for under paragraphs (a) and (b), the designated Office may, when determining the right of priority, apply the requirements under the applicable national law instead of the requirements under those paragraphs.
(g) Each designated Office shall inform the International Bureau of which of the criteria for restoration it applies, of the requirements, where applicable, of the national law applicable in accordance with paragraph (f), and of any subsequent changes in that respect. The International Bureau shall promptly publish such information in the Gazette.
(h) If, on October 5, 2005, paragraphs (a) to (g) are not compatible with the national law applied by the designated Office, those paragraphs shall not apply in respect of that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.
Rule 50
Faculty Under Article 22(3)
50.1 Exercise of Faculty
(a) Any Contracting State allowing a time limit expiring later than the time limits provided for in Article 22(1) or (2) shall notify the International Bureau of the time limits so fixed.
(b) Any notification received by the International Bureau under paragraph (a) shall be promptly published by the International Bureau in the Gazette.
(c) Notifications concerning the shortening of the previously fixed time limit shall be effective in relation to international applications filed after the expiration of three months computed from the date on which the notification was published by the International Bureau.
(d) Notifications concerning the lengthening of the previously fixed time limit shall become effective upon publication by the International Bureau in the Gazette in respect of international applications pending at the time or filed after the date of such publication, or, if the Contracting State effecting the notification fixes some later date, as from the latter date.
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Rule 51
Review by Designated Offices
51.1 Time Limit for Presenting the Request to Send Copies
The time limit referred to in Article 25(1)(c) shall be two months computed from the date of the notification sent to the applicant under Rule 20.4(i), 24.2(c) or 29.1(ii).
51.2 Copy of the Notification
Where the applicant, after having received a negative determination under Article 11(1), requests the International Bureau, under Article 25(1), to send copies of the file of the purported international application to any of the named Offices he has attempted to designate, he shall attach to his request a copy of the notification referred to in Rule 20.4(i).
51.3 Time Limit for Paying National Fee and Furnishing Translation
The time limit referred to in Article 25(2)(a) shall expire at the same time as the time limit prescribed in Rule 51.1.
Rule 51bis
Certain National Requirements Allowed Under Article 27
51 bis.1 Certain National Requirements Allowed
(a) Subject to Rule 51 bis.2, the national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish, in particular:
(i) any document relating to the identity of the inventor,
(ii) any document relating to the applicant’s entitlement to apply for or be granted a patent,
(iii) any document containing any proof of the applicant’s entitlement to claim priority of an earlier application where the applicant is not the
applicant who filed the earlier application or where the applicant’s name has changed since the date on which the earlier application was filed,
(iv) where the international application designates a State whose national law requires, on October 9, 2012, the furnishing of an oath or declaration of inventorship, any document containing an oath or declaration of inventorship,
(v) any evidence concerning non-prejudicial disclosures or exceptions to lack of novelty, such as disclosures resulting from abuse, disclosures at certain exhibitions and disclosures by the applicant during a certain period of time;
(vi) the confirmation of the international application by the signature of any applicant for the designated State who has not signed the request;
(vii) any missing indication required under Rule 4.5(a)(ii) and (iii) in respect of any applicant for the designated State.
(d) The national law applicable by the designated Office may, in accordance with Article 27(2)(ii), require that the translation of the international application furnished by the applicant under Article 22 be:
(i) verified by the applicant or the person having translated the international application in a statement to the effect that, to the best of his knowledge, the translation is complete and faithful;
(ii) certified by a public authority or sworn translator, but only where the designated Office may reasonably doubt the accuracy of the translation.
(e) The national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish a translation of the priority document, provided that such a translation may only be required:
(i) where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable; or
(ii) where the international filing date has been accorded by the receiving Office under Rule 20.3(b)(ii) or 20.5(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part, for the purposes of determining under Rule 82 ter.1(b) whether that element or part is completely contained in the priority document concerned, in which case the national law applicable
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by the designated Office may also require the applicant to furnish, in the case of a part of the description, claims or drawings, an indication as to where that part is contained in the translation of the priority document.
(f) If, on March 17, 2000, the proviso in paragraph (e) is not compatible with the national law applied by the designated Office, that proviso shall not apply in respect of that Office for as long as that proviso continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.
51 bis.2 Certain Circumstances in Which Documents or Evidence May Not Be Required
The designated Office shall not, unless it may reasonably doubt the veracity of the indications or declaration concerned, require any document or evidence:
(i) relating to the identity of the inventor (Rule 51 bis.1(a)(i)) (other than a document containing an oath or declaration of inventorship (Rule 51 bis.1(a)(iv)), if indications concerning the inventor, in accordance with Rule 4.6, are contained in the request or if a declaration as to the identity of the inventor, in accordance with Rule 4.17(i), is contained in the request or is submitted directly to the designated Office;
(ii) relating to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent (Rule 51 bis.1(a)(ii)), if a declaration as to that matter, in accordance with Rule 4.17(ii), is contained in the request or is submitted directly to the designated Office;
(iii) relating to the applicant’s entitlement, as at the international filing date, to claim priority of an earlier application (Rule 51 bis.1(a)(iii)), if a declaration as to that matter, in accordance with Rule 4.17(iii), is contained in the request or is submitted directly to the designated Office;
(iv) containing an oath or declaration of inventorship (Rule 51 bis.1(a)(iv)), if a declaration of inventorship, in accordance with Rule 4.17(iv),
is contained in the request or is submitted directly to the designated Office.
(b) Where the applicable national law requires that national applications be filed by the inventor, the designated Office shall not, unless it may reasonably doubt the veracity of the indications or declaration concerned, require any document or evidence:
(i) relating to the identity of the inventor (Rule 51 bis.1(a)(i)) (other than a document containing an oath or declaration of inventorship (Rule 51 bis.1(a)(iv)), if indications concerning the inventor, in accordance with Rule 4.6, are contained in the request;
(ii) relating to the applicant’s entitlement, as at the international filing date, to claim priority of an earlier application (Rule 51 bis.1(a)(iii)), if a declaration as to that matter, in accordance with Rule 4.17(iii), is contained in the request or is submitted directly to the designated Office;
(iii) containing an oath or declaration of inventorship (Rule 51 bis.1(a)(iv)), if a declaration of inventorship, in accordance with Rule 4.17(iv), is contained in the request or is submitted directly to the designated Office.
(c) If, on March 17, 2000, paragraph (a) is not compatible, in relation to any item of that paragraph, with the national law applied by the designated Office, paragraph (a) shall not apply in respect of that Office in relation to that item for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.
51 bis.3 Opportunity to Comply with National Requirements
(a) Where any of the requirements referred to in Rule 51 bis.1(a)(i) to (iv) and (c) to (e), or any other requirement of the national law applicable by the designated Office which that Office may apply in accordance with Article 27(1) or (2), is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the designated Office shall invite the applicant to comply with the requirement within a time limit which shall not be less than two months from the
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date of the invitation. Each designated Office may require that the applicant pay a fee for complying with national requirements in response to the invitation.
(b) Where any requirement of the national law applicable by the designated Office which that Office may apply in accordance with Article 27(6) or (7) is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the applicant shall have an opportunity to comply with the requirement after the expiration of that period.
(c) If, on March 17, 2000, paragraph (a) is not compatible with the national law applied by the designated Office in relation to the time limit referred to in that paragraph, the said paragraph shall not apply in respect of that Office in relation to that time limit for as long as the said paragraph continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.
Rule 52
Amendment of the Claims, the Description, and the Drawings, Before Designated Offices
52.1 Time Limit
(a) In any designated State in which processing or examination starts without special request, the applicant shall, if he so wishes, exercise the right under Article 28 within one month from the fulfillment of the requirements under Article 22, provided that, if the communication under Rule 47.1 has not been effected by the expiration of the time limit applicable under Article 22, he shall exercise the said right not later than four months after such expiration date. In either case, the applicant may exercise the said right at any later time if so permitted by the national law of the said State.
(b) In any designated State in which the national law provides that examination starts only on special request, the time limit within or the time at which the applicant may exercise the right under Article 28 shall be the same as that provided by the national law for the filing of amendments in the case of the examination, on special request, of national
applications, provided that such time limit shall not expire prior to, or such time shall not come before, the expiration of the time limit applicable under paragraph (a).
PART C
Rules Concerning Chapter II of the Treaty
Rule 53
The Demand
53.1 Form
(a) The demand shall be made on a printed form or be presented as a computer print-out. The particulars of the printed form and of a demand presented as a computer printout shall be prescribed by the Administrative Instructions.
(b) Copies of printed demand forms shall be furnished free of charge by the receiving Office or by the International Preliminary Examining Authority.
(c) [Deleted]
53.2 Contents
(a) The demand shall contain:
(i) a petition,
(ii) indications concerning the applicant and the agent if there is an agent,
(iii) indications concerning the international application to which it relates,
(iv) where applicable, a statement concerning amendments.
(b) The demand shall be signed.
53.3 The Petition
The petition shall be to the following effect and shall preferably be worded as follows: “Demand under Article 31 of the Patent Cooperation Treaty: The undersigned requests that the international application specified below be the subject of
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international preliminary examination according to the Patent Cooperation Treaty.”
53.4 The Applicant
As to the indications concerning the applicant, Rules 4.4 and 4.16 shall apply, and Rule 4.5 shall apply mutatis mutandis.
53.5 Agent or Common Representative
If an agent or common representative is appointed, the demand shall so indicate. Rules 4.4 and 4.16 shall apply, and Rule 4.7 shall apply mutatis mutandis.
53.6 Identification of the International Application
The international application shall be identified by the name and address of the applicant, the title of the invention, the international filing date (if known to the applicant) and the international application number or, where such number is not known to the applicant, the name of the receiving Office with which the international application was filed.
53.7 Election of States
The filing of a demand shall constitute the election of all Contracting States which are designated and are bound by Chapter II of the Treaty.
53.8 Signature
The demand shall be signed by the applicant or, if there is more than one applicant, by all applicants making the demand.
53.9 Statement Concerning Amendments
(a) If amendments under Article 19 have been made, the statement concerning amendments shall indicate whether, for the purposes of the international preliminary examination, the applicant wishes those amendments:
(i) to be taken into account, in which case a copy of the amendments and of the letter required
under Rule 46.5(b) shall preferably be submitted with the demand; or
(ii) to be considered as reversed by an amendment under Article 34.
(b) If no amendments under Article 19 have been made and the time limit for filing such amendments has not expired, the statement may indicate that, should the International Preliminary Examining Authority wish to start the international preliminary examination at the same time as the international search in accordance with Rule 69.1(b), the applicant wishes the start of the international preliminary examination to be postponed in accordance with Rule 69.1(d).
(c) If any amendments under Article 34 are submitted with the demand, the statement shall so indicate.
Rule 54
The Applicant Entitled to Make a Demand
54.1 Residence and Nationality
(a) Subject to the provisions of paragraph (b), the residence or nationality of the applicant shall, for the purposes of Article 31(2), be determined according to Rule 18.1(a) and (b).
(b) The International Preliminary Examining Authority shall, in the circumstances specified in the Administrative Instructions, request the receiving Office or, where the international application was filed with the International Bureau as receiving Office, the national Office of, or acting for, the Contracting State concerned to decide the question whether the applicant is a resident or national of the Contracting State of which he claims to be a resident or national. The International Preliminary Examining Authority shall inform the applicant of any such request. The applicant shall have an opportunity to submit arguments directly to the Office concerned. The Office concerned shall decide the said question promptly.
54.2 Right to Make a Demand
The right to make a demand under Article 31(2) shall exist if the applicant making the demand or, if there are two or more applicants, at least one of them is a
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resident or national of a Contracting State bound by Chapter II and the international application has been filed with a receiving Office of or acting for a Contracting State bound by Chapter II.
(i) [Deleted]
(ii) [Deleted]
54.3 International Applications Filed with the International Bureau as Receiving Office
Where the international application is filed with the International Bureau as receiving Office under Rule 19.1(a)(iii), the International Bureau shall, for the purposes of Article 31(2)(a), be considered to be acting for the Contracting State of which the applicant is a resident or national.
54.4 Applicant Not Entitled to Make a Demand
If the applicant does not have the right to make a demand or, in the case of two or more applicants, if none of them has the right to make a demand under Rule 54.2, the demand shall be considered not to have been submitted.
Rule 54bis
Time Limit for Making a Demand
54 bis.1 Time Limit for Making a Demand
(a) A demand may be made at any time prior to the expiration of whichever of the following periods expires later:
(i) three months from the date of transmittal to the applicant of the international search report or the declaration referred to in Article 17(2)(a), and of the written opinion established under Rule 43 bis.1; or
(ii) 22 months from the priority date.
(b) Any demand made after the expiration of the time limit applicable under paragraph (a) shall be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.
Rule 55
Languages (International Preliminary Examination)
55.1 Language of Demand
The demand shall be in the language of the international application or, if the international application has been filed in a language other than the language in which it is published, in the language of publication. However, if a translation of the international application is required under Rule 55.2, the demand shall be in the language of that translation.
55.2 Translation of International Application
(a) Where neither the language in which the international application is filed nor the language in which the international application is published is accepted by the International Preliminary Examining Authority that is to carry out the international preliminary examination, the applicant shall, subject to paragraph (b), furnish with the demand a translation of the international application into a language which is both:
(i) a language accepted by that Authority, and
(ii) a language of publication.
(a-bis) A translation of the international application into a language referred to in paragraph (a) shall include any element referred to in Article 11(1)(iii)(d) or (e) furnished by the applicant under Rule 20.3(b) or 20.6(a) and any part of the description, claims or drawings furnished by the applicant under Rule 20.5(b) or 20.6(a) which is considered to have been contained in the international application under Rule 20.6(b).
(a-ter) The International Preliminary Examining Authority shall check any translation furnished under paragraph (a) for compliance with the physical requirements referred to in Rule 11 to the extent that compliance therewith is necessary for the purposes of the international preliminary examination.
(b) Where a translation of the international application into a language referred to in paragraph (a) was transmitted to the International Searching
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Authority under Rule 23.1(b) and the International Preliminary Examining Authority is part of the same national Office or intergovernmental organization as the International Searching Authority, the applicant need not furnish a translation under paragraph (a). In such a case, unless the applicant furnishes a translation under paragraph (a), the international preliminary examination shall be carried out on the basis of the translation transmitted under Rule 23.1(b).
(c) If a requirement referred to in paragraphs (a), (a- bis ) and (a- ter ) is not complied with and paragraph (b) does not apply, the International Preliminary Examining Authority shall invite the applicant to furnish the required translation or the required correction, as the case may be, within a time limit which shall be reasonable under the circumstances. That time limit shall not be less than one month from the date of the invitation. It may be extended by the International Preliminary Examining Authority at any time before a decision is taken.
(d) If the applicant complies with the invitation within the time limit under paragraph (c), the said requirement shall be considered to have been complied with. If the applicant fails to do so, the demand shall be considered not to have been submitted and the International Preliminary Examining Authority shall so declare.
55.3 Language and Translation of Amendments and Letters
(a) Subject to paragraph (b), if the international application has been filed in a language other than the language in which it is published, any amendment under Article 34, as well as any letter referred to in Rule 66.8(a), Rule 66.8(b) and Rule 46.5(b) as applicable by virtue of Rule 66.8(c), shall be submitted in the language of publication.
(b) Where a translation of the international application is required under Rule 55.2:
(i) any amendment and any letter referred to in paragraph (a); and
(ii) any amendment under Article 19 which is to be taken into account under Rule 66.1(c) or (d) and any letter referred to in Rule 46.5(b);
shall be in the language of that translation. Where such amendments or letters have been or are
submitted in another language, a translation shall also be submitted.
(c) If an amendment or letter is not submitted in a language as required under paragraph (a) or (b), the International Preliminary Examining Authority shall invite the applicant to submit the amendment or letter in the required language within a time limit which shall be reasonable under the circumstances. That time limit shall not be less than one month from the date of the invitation. It may be extended by the International Preliminary Examining Authority at any time before a decision is taken.
(d) If the applicant fails to comply, within the time limit under paragraph (c), with the invitation to furnish an amendment in the required language, the amendment shall not be taken into account for the purposes of the international preliminary examination. If the applicant fails to comply, within the time limit under paragraph (c), with the invitation to furnish a letter referred to in paragraph (a) in the required language, the amendment concerned need not be taken into account for the purposes of the international preliminary examination.
Rule 56
[Deleted]
Rule 57
The Handling Fee
57.1 Requirement to Pay
Each demand for international preliminary examination shall be subject to the payment of a fee for the benefit of the International Bureau (“handling fee”) to be collected by the International Preliminary Examining Authority to which the demand is submitted.
57.2 Amount
(a) The amount of the handling fee is as set out in the Schedule of Fees.
(b) The handling fee shall be payable in the currency or one of the currencies prescribed by the International Preliminary Examining Authority ("prescribed currency").
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(c) Where the prescribed currency is the Swiss franc, the Authority shall promptly transfer the said fee to the International Bureau in Swiss francs.
(d) Where the prescribed currency is a currency other than the Swiss franc and that currency:
(i) is freely convertible into Swiss francs, the Director General shall establish, for each Authority which prescribes such a currency for the payment of the handling fee, an equivalent amount of that fee in the prescribed currency according to directives given by the Assembly, and the amount in that currency shall promptly be transferred by the Authority to the International Bureau;
(ii) is not freely convertible into Swiss francs, the Authority shall be responsible for the conversion of the handling fee from the prescribed currency into Swiss francs and shall promptly transfer that fee in Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau. Alternatively, if the Authority so wishes, it may convert the handling fee from the prescribed currency into euros or US dollars and promptly transfer the equivalent amount of that fee in euros or US dollars, as established by the Director General according to directives given by the Assembly as referred to in item (i), to the International Bureau.
57.3 Time Limit for Payment; Amount Payable
(a) Subject to paragraphs (b) and (c), the handling fee shall be paid within one month from the date on which the demand was submitted or 22 months from the priority date, whichever expires later.
(b) Subject to paragraph (c), where the demand was transmitted to the International Preliminary Examining Authority under Rule 59.3, the handling fee shall be paid within one month from the date of receipt by that Authority or 22 months from the priority date, whichever expires later.
(c) Where, in accordance with Rule 69.1(b), the International Preliminary Examining Authority wishes to start the international preliminary examination at the same time as the international search, that Authority shall invite the applicant to pay the handling fee within one month from the date of the invitation.
(d) The amount of the handling fee payable shall be the amount applicable on the date of payment.
57.4 Refund
The International Preliminary Examining Authority shall refund the handling fee to the applicant:
(i) if the demand is withdrawn before the demand has been sent by that Authority to the International Bureau, or
(ii) if the demand is considered, under Rule 54.4 or 54 bis.1(b), not to have been submitted.
57.5 [Deleted]
57.6 Refund
The International Preliminary Examining Authority shall refund the handling fee to the applicant:
(i) if the demand is withdrawn before the demand has been sent by that Authority to the International Bureau, or
(ii) if the demand is considered, under Rule 54.4 or 54 bis.1(b), not to have been submitted.
Rule 58
The Preliminary Examination Fee
58.1 Right to Ask for a Fee
(a) Each International Preliminary Examining Authority may require that the applicant pay a fee (“preliminary examination fee”) for its own benefit for carrying out the international preliminary examination and for performing all other tasks entrusted to International Preliminary Examining Authorities under the Treaty and these Regulations.
(b) The amount of the preliminary examination fee, if any, shall be fixed by the International Preliminary Examining Authority. As to the time limit for payment of the preliminary examination fee and the amount payable, the provisions of Rule 57.3 relating to the handling fee shall apply mutatis mutandis.
(c) The preliminary examination fee shall be payable directly to the International Preliminary Examining Authority. Where that Authority is a
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national Office, it shall be payable in the currency prescribed by that Office, and where the Authority is an intergovernmental organization, it shall be payable in the currency of the State in which the intergovernmental organization is located or in any other currency which is freely convertible into the currency of the said State.
58.2 [Deleted]
58.3 Refund
The International Preliminary ExaminingAuthorities shall inform the International Bureau of the extent, if any, to which, and the conditions, if any, under which, they will refund any amount paid as a preliminary examination fee where the demand is considered as if it had not been submitted, and the International Bureau shall promptly publish such information.
Rule 58bis
Extension of Time Limits for Payment of Fees
58 bis.1 Invitation by the International Preliminary Examining Authority
(a) Where the International Preliminary Examining Authority finds:
(i) that the amount paid to it is insufficient to cover the handling fee and the preliminary examination fee; or
(ii) by the time they are due under Rules 57.3 and 58.1(b), that no fees were paid to it; the Authority shall invite the applicant to pay to it the amount required to cover those fees, together with, where applicable, the late payment fee under Rule 58 bis.2, within a time limit of one month from the date of the invitation.
(b) Where the International Preliminary Examining Authority has sent an invitation under paragraph (a) and the applicant has not, within the time limit referred to in that paragraph, paid in full the amount due, including, where applicable, the late payment fee under Rule 58 bis.2, the demand shall, subject to paragraph (c), be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.
(c) Any payment received by the International Preliminary Examining Authority before that Authority sends the invitation under paragraph (a) shall be considered to have been received before the expiration of the time limit under Rule 57.3 or 58.1(b), as the case may be.
(d) Any payment received by the International Preliminary Examining Authority before that Authority proceeds under paragraph (b) shall be considered to have been received before the expiration of the time limit under paragraph (a).
58 bis.2 Late Payment Fee
(a) The payment of fees in response to an invitation under Rule 58 bis.1(a) may be subjected by the International Preliminary Examining Authority to the payment to it, for its own benefit, of a late payment fee. The amount of that fee shall be:
(i) 50% of the amount of unpaid fees which is specified in the invitation, or,
(ii) if the amount calculated under item (i) is less than the handling fee, an amount equal to the handling fee.
(b) The amount of the late payment fee shall not, however, exceed double the amount of the handling fee.
Rule 59
The Competent International Preliminary Examining Authority
59.1 Demands Under Article 31(2)(a)
(a) For demands made under Article 31(2)(a), each receiving Office of or acting for a Contracting State bound by the provisions of Chapter II shall, in accordance with the terms of the applicable agreement referred to in Article 32(2) and (3), inform the International Bureau which International Preliminary Examining Authority is or which International Preliminary Examining Authorities are competent for the international preliminary examination of international applications filed with it. The International Bureau shall promptly publish such information. Where several International Preliminary Examining Authorities are competent,
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the provisions of Rule 35.2 shall apply mutatis mutandis.
(b) Where the international application was filed with the International Bureau as receiving Office under Rule 19.1(a)(iii), Rule 35.3(a) and (b) shall apply mutatis mutandis. Paragraph (a) of this Rule shall not apply to the International Bureau as receiving Office under Rule 19.1(a)(iii).
59.2 Demands Under Article 31(2)(b)
As to demands made under Article 31(2)(b), the Assembly, in specifying the International Preliminary Examining Authority competent for international applications filed with a national Office which is an International Preliminary Examining Authority, shall give preference to that Authority; if the national Office is not an International Preliminary Examining Authority, the Assembly shall give preference to the International Preliminary Examining Authority recommended by that Office.
59.3 Transmittal of the Demand to the Competent International Preliminary Examining Authority
(a) If the demand is submitted to a receiving Office, an International Searching Authority, or an International Preliminary Examining Authority which is not competent for the international preliminary examination of the international application, that Office or Authority shall mark the date of receipt on the demand and, unless it decides to proceed under paragraph (f), transmit the demand promptly to the International Bureau.
(b) If the demand is submitted to the International Bureau, the International Bureau shall mark the date of receipt on the demand.
(c) Where the demand is transmitted to the International Bureau under paragraph (a) or submitted to it under paragraph (b), the International Bureau shall promptly:
(i) if there is only one competent International Preliminary Examining Authority, transmit the demand to that Authority and inform the applicant accordingly, or
(ii) if two or more International Preliminary Examining Authorities are competent, invite the applicant to indicate, within the time limit applicable
under Rule 54 bis.1(a) or 15 days from the date of the invitation, whichever is later, the competent International Preliminary Examining Authority to which the demand should be transmitted.
(d) Where an indication is furnished as required under paragraph (c)(ii), the International Bureau shall promptly transmit the demand to the competent International Preliminary Examining Authority indicated by the applicant. Where no indication is so furnished, the demand shall be considered not to have been submitted and the International Bureau shall so declare.
(e) Where the demand is transmitted to a competent International Preliminary Examining Authority under paragraph (c), it shall be considered to have been received on behalf of that Authority on the date marked on it under paragraph (a) or (b), as applicable, and the demand so transmitted shall be considered to have been received by that Authority on that date.
(f) Where an Office or Authority to which the demand is submitted under paragraph (a) decides to transmit that demand directly to the competent International Preliminary Examining Authority, paragraphs (c) to (e) shall apply mutatis mutandis.
Rule 60
Certain Defects in the Demand
60.1 Defects in the Demand
(a) Subject to paragraphs (a -bis) and (a- ter), if the demand does not comply with the requirements specified in Rules 53.1, 53.2(a)(i) to (iii), 53.2(b), 53.3 to 53.8 and 55.1, the International Preliminary Examining Authority shall invite the applicant to correct the defects within a time limit which shall be reasonable under the circumstances. That time limit shall not be less than one month from the date of the invitation. It may be extended by the International Preliminary Examining Authority at any time before a decision is taken.
(a-bis) For the purposes of Rule 53.4, if there are two or more applicants, it shall be sufficient that the indications referred to in Rule 4.5(a)(ii) and (iii) be provided in respect of one of them who has the right according to Rule 54.2 to make a demand.
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(a-ter) For the purposes of Rule 53.8, if there are two or more applicants, it shall be sufficient that the demand be signed by one of them.
(b) If the applicant complies with the invitation within the time limit under paragraph (a), the demand shall be considered as if it had been received on the actual filing date, provided that the demand as submitted permitted the international application to be identified; otherwise, the demand shall be considered as if it had been received on the date on which the International Preliminary Examining Authority receives the correction.
(c) If the applicant does not comply with the invitation within the time limit under paragraph (a), the demand shall be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare.
(d) [Deleted]
(e) If the defect is noticed by the International Bureau, it shall bring the defect to the attention of the International Preliminary Examining Authority, which shall then proceed as provided in paragraphs (a) to (c).
(f) If the demand does not contain a statement concerning amendments, the International Preliminary Examining Authority shall proceed as provided for in Rules 66.1 and 69.1(a) or (b).
(g) Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand (Rule 53.9(c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Authority shall invite the applicant to submit the amendments within a time limit fixed in the invitation and shall proceed as provided for in Rule 69.1(e).
60.2 [Deleted]
Rule 61
Notification of the Demand and Elections
61.1 Notification to the International Bureau and the Applicant
(a) The International Preliminary Examining Authority shall indicate on the demand the date of receipt or, where applicable, the date referred to in
Rule 60.1(b). The International Preliminary Examining Authority shall promptly either send the demand to the International Bureau and keep a copy in its files or send a copy to the International Bureau and keep the demand in its files.
(b) The International Preliminary Examining Authority shall promptly notify the applicant of the date of receipt of the demand. Where the demand has been considered under Rules 54.4, 55.2(d), 58 bis.1(b) or 60.1(c) as if it had not been submitted, the International Preliminary Examining Authority shall notify the applicant and the International Bureau accordingly.
(c) [Deleted]
61.2 Notification to the Elected Offices
(a) The notification provided for in Article 31(7) shall be effected by the International Bureau.
(b) The notification shall indicate the number and filing date of the international application, the name of the applicant, the filing date of the application whose priority is claimed (where priority is claimed) and the date of receipt by the International Preliminary Examining Authority of the demand.
(c) The notification shall be sent to the elected Office together with the communication provided for in Article 20. Elections effected after such communication shall be notified promptly after they have been made.
(d) Where the applicant makes an express request to an elected Office under Article 40(2) prior to the international publication of the international application, the International Bureau shall, upon request of the applicant or the elected Office, promptly effect the communication provided for in Article 20 to that Office.
61.3 Information for the Applicant
The International Bureau shall inform the applicant in writing of the notification referred to in Rule 61.2
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and of the elected Offices notified under Article 31(7).
61.4 Publication in the Gazette
The International Bureau shall, promptly after the filing of the demand but not before the international publication of the international application, publish in the Gazette information on the demand and the elected States concerned, as provided in the Administrative Instructions.
Rule 62
Copy of the Written Opinion by the International Searching Authority and of Amendments under Article 19 for the International Preliminary Examining Authority
62.1 Copy of Written Opinion by International Searching Authority and of Amendments Made before the Demand Is Filed
Upon receipt of a demand, or a copy thereof, from the International Preliminary Examining Authority, the International Bureau shall promptly transmit to that Authority:
(i) a copy of the written opinion established under Rule 43 bis.1, unless the national Office or intergovernmental organization that acted as International Searching Authority is also acting as International Preliminary Examining Authority; and
(ii) a copy of any amendment under Article 19, any statement referred to in that Article, and the letter required under Rule 46.5(b), unless that Authority has indicated that it has already received such a copy.
62.2 Amendments Made after the Demand Is Filed
If, at the time of filing any amendments under Article 19, a demand has already been submitted, the applicant shall preferably, at the same time as he files the amendments with the International Bureau, also file with the International Preliminary
Examining Authority a copy of such amendments, any statement referred to in that Article and the letter required under Rule 46.5(b). In any case, the International Bureau shall promptly transmit a copy of such amendment, statement and letter to that Authority.
Rule 62bis
Translation for the International Preliminary Examining Authority of the Written Opinion of the International Searching Authority
62 bis.1 Translation and Observations
(a) Upon request of the International Preliminary Examining Authority, the written opinion established under Rule 43 bis.1 shall, when not in English or in a language accepted by that Authority, be translated into English by or under the responsibility of the International Bureau.
(b) The International Bureau shall transmit a copy of the translation to the International Preliminary ExaminingAuthority within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.
(c) The applicant may make written observations as to the correctness of the translation and shall send a copy of the observations to the International Preliminary Examining Authority and to the International Bureau.
Rule 63
Minimum Requirements for International Preliminary Examining Authorities
63.1 Definition of Minimum Requirements
The minimum requirements referred to in Article 32(3) shall be the following:
(i) the national Office or intergovernmental organization must have at least 100 full-time employees with sufficient technical qualifications to carry out examinations;
(ii) that Office or organization must have at its ready disposal at least the minimum documentation
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referred to in Rule 34, properly arranged for examination purposes;
(iii) that Office or organization must have a staff which is capable of examining in the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated;
(iv) that Office or organization must have in place a quality management system and internal review arrangements in accordance with the common rules of international preliminary examination;
(v) that Office or organization must hold an appointment as an International Searching Authority.
Rule 64
Prior Art for International Preliminary Examination
64.1 Prior Art
(a) For the purposes of Article 33(2) and (3), everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) shall be considered prior art provided that such making available occurred prior to the relevant date.
(b) For the purposes of paragraph (a), the relevant date shall be:
(i) subject to items (ii) and (iii), the international filing date of the international application under international preliminary examination;
(ii) where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is within the priority period, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid;
(iii) where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the filing date
of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid for reasons other than the fact that the international application has an international filing date which is later than the date on which the priority period expired.
64.2 Non-Written Disclosures
In cases where the making available to the public occurred by means of an oral disclosure, use, exhibition or other non-written means (“non-written disclosure”) before the relevant date as defined in Rule 64.1(b) and the date of such non-written disclosure is indicated in a written disclosure which has been made available to the public on a date which is the same as, or later than, the relevant date, the non-written disclosure shall not be considered part of the prior art for the purposes of Article 33(2) and (3). Nevertheless, the international preliminary examination report shall call attention to such non-written disclosure in the manner provided for in Rule 70.9.
64.3 Certain Published Documents
In cases where any application or any patent which would constitute prior art for the purposes of Article 33(2) and (3) had it been published prior to the relevant date referred to in Rule 64.1 was published on a date which is the same as, or later than, the relevant date but was filed earlier than the relevant date or claimed the priority of an earlier application which had been filed prior to the relevant date, such published application or patent shall not be considered part of the prior art for the purposes of Article 33(2) and (3). Nevertheless, the international preliminary examination report shall call attention to such application or patent in the manner provided for in Rule 70.10.
Rule 65
Inventive Step or Non-Obviousness
65.1 Approach to Prior Art
For the purposes of Article 33(3), the international preliminary examination shall take into consideration
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the relation of any particular claim to the prior art as a whole. It shall take into consideration the claim's relation not only to individual documents or parts thereof taken separately but also its relation to combinations of such documents or parts of documents, where such combinations are obvious to a person skilled in the art.
65.2 Relevant Date
For the purposes of Article 33(3), the relevant date for the consideration of inventive step (non-obviousness) is the date prescribed in Rule 64.1.
Rule 66
Procedure before the International Preliminary Examining Authority
66.1 Basis of the International Preliminary Examination
(a) Subject to paragraphs (b) to (d), the international preliminary examination shall be based on the international application as filed.
(b) The applicant may submit amendments under Article 34 at the time of filing the demand or, subject to Rule 66.4 bis , until the international preliminary examination report is established.
(c) Any amendments under Article 19 made before the demand was filed shall be taken into account for the purposes of the international preliminary examination unless superseded, or considered as reversed, by an amendment under Article 34.
(d) Any amendments under Article 19 made after the demand was filed and any amendments under Article 34 submitted to the International Preliminary Examining Authority shall, subject to Rule 66.4 bis , be taken into account for the purposes of the international preliminary examination.
(d- bis) A rectification of an obvious mistake that is authorized under Rule 91.1 shall, subject to Rule 66.4 bis , be taken into account by the International Preliminary Examining Authority for the purposes of the international preliminary examination.
(e) Claims relating to inventions in respect of which no international search report has been established need not be the subject of international preliminary examination.
66.1 bis Written Opinion of the International Searching Authority
(a) Subject to paragraph (b), the written opinion established by the International Searching Authority under Rule 43 bis.1 shall be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a).
(b) An International Preliminary Examining Authority may notify the International Bureau that paragraph (a) shall not apply to the procedure before it in respect of written opinions established under Rule 43 bis.1 by the International Searching Authority or Authorities specified in the notification, provided that such a notification shall not apply to cases where the national Office or intergovernmental organization that acted as International Searching Authority is also acting as International Preliminary Examining Authority. The International Bureau shall promptly publish any such notification in the Gazette.
(c) Where the written opinion established by the International Searching Authority under Rule 43 bis.1 is not, by virtue of a notification under paragraph (b), considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a), the International Preliminary Examining Authority shall notify the applicant accordingly in writing.
(d) A written opinion established by the International Searching Authority under Rule 43 bis.1 which is not, by virtue of a notification under paragraph (b), considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a) shall nevertheless be taken into account by the International Preliminary Examining Authority in proceeding under Rule 66.2(a).
66.1 ter Top-up Searches
The International Preliminary Examining Authority shall conduct a search (“top-up search”) to discover documents referred to in Rule 64 which have been
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published or have become available to the said Authority for search subsequent to the date on which the international search report was established, unless it considers that such a search would serve no useful purpose. If the Authority finds that any of the situations referred to in Article 34(3) or (4) or Rule 66.1(e) exists, the top-up search shall cover only those parts of the international application that are the subject of international preliminary examination.
66.2 Written Opinion of the International Preliminary Examining Authority
(a) If the International Preliminary Examining Authority
(i) considers that any of the situations referred to in Article 34(4) exists,
(ii) considers that the international preliminary examination report should be negative in respect of any of the claims because the invention claimed therein does not appear to be novel, does not appear to involve an inventive step (does not appear to be non-obvious), or does not appear to be industrially applicable,
(iii) notices that there is some defect in the form or contents of the international application under the Treaty or these Regulations,
(iv) considers that any amendment goes beyond the disclosure in the international application as filed,
(v) wishes to accompany the international preliminary examination report by observations on the clarity of the claims, the description, and the drawings, or the question whether the claims are fully supported by the description,
(vi) considers that a claim relates to an invention in respect of which no international search report has been established and has decided not to carry out the international preliminary examination in respect of that claim, or
(vii) considers that a nucleotide and/or amino acid sequence listing is not available to it in such a form that a meaningful international preliminary examination can be carried out, the said Authority shall notify the applicant accordingly in writing. Where the national law of the national Office acting as International Preliminary Examining Authority does not allow multiple dependent claims to be
drafted in a manner different from that provided for in the second and third sentences of Rule 6.4(a), the International Preliminary Examining Authority may, in case of failure to use that manner of claiming, apply Article 34(4)(b). In such case, it shall notify the applicant accordingly in writing.
(b) The notification shall fully state the reasons for the opinion of the International Preliminary Examining Authority.
(c) The notification shall invite the applicant to submit a written reply together, where appropriate, with amendments.
(d) The notification shall fix a time limit for the reply. The time limit shall be reasonable under the circumstances. It shall normally be two months after the date of notification. In no case shall it be shorter than one month after the said date. It shall be at least two months after the said date where the international search report is transmitted at the same time as the notification. It shall, subject to paragraph (e), not be more than three months after the said date.
(e) The time limit for replying to the notification may be extended if the applicant so requests before its expiration.
66.3 Formal Response to the International Preliminary Examining Authority
(a) The applicant may respond to the invitation referred to in Rule 66.2(c) of the International Preliminary Examining Authority by making amendments or - if he disagrees with the opinion of that Authority - by submitting arguments, as the case may be, or do both.
(b) Any response shall be submitted directly to the International Preliminary Examining Authority.
66.4 Additional Opportunity for Submitting Amendments or Arguments
(a) If the International Preliminary Examining Authority wishes to issue one or more additional written opinions, it may do so, and Rules 66.2 and 66.3 shall apply.
(b) On the request of the applicant, the International Preliminary Examining Authority may
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give him one or more additional opportunities to submit amendments or arguments.
66.4 bis Consideration of Amendments, Arguments and Rectifications of Obvious Mistakes
Amendments, arguments and rectifications of obvious mistakes need not be taken into account by the International Preliminary Examining Authority for the purposes of a written opinion or the international preliminary examination report if they are received by, authorized by or notified to that Authority, as applicable, after it has begun to draw up that opinion or report.
66.5 Amendment
Any change, other than the rectification of an obvious mistake, in the claims, the description, or the drawings, including cancellation of claims, omission of passages in the description, or omission of certain drawings, shall be considered an amendment.
66.6 Informal Communications with the Applicant
The International Preliminary Examining Authority may, at any time, communicate informally, over the telephone, in writing, or through personal interviews, with the applicant. The said Authority shall, at its discretion, decide whether it wishes to grant more than one personal interview if so requested by the applicant, or whether it wishes to reply to any informal written communication from the applicant.
66.7 Copy and Translation of Earlier Application Whose Priority is Claimed
(a) If the International Preliminary Examining Authority needs a copy of the earlier application whose priority is claimed in the international application, the International Bureau shall, on request, promptly furnish such copy. If that copy is not furnished to the International Preliminary Examining Authority because the applicant failed to comply with the requirements of Rule 17.1, and if that earlier application was not filed with that Authority in its capacity as a national Office or the
priority document is not available to that Authority from a digital library in accordance with the Administrative Instructions, the international preliminary examination report may be established as if the priority had not been claimed.
(b) If the application whose priority is claimed in the international application is in a language other than the language or one of the languages of the International Preliminary Examining Authority, that Authority may, where the validity of the priority claim is relevant for the formulation of the opinion referred to in Article 33(1), invite the applicant to furnish a translation in the said language or one of the said languages within two months from the date of the invitation. If the translation is not furnished within that time limit, the international preliminary examination report may be established as if the priority had not been claimed.
66.8 Form of Amendments
(a) Subject to paragraph (b), when amending the description or the drawings, the applicant shall be required to submit a replacement sheet for every sheet of the international application which, on account of an amendment, differs from the sheet previously filed. The replacement sheet or sheets shall be accompanied by a letter which shall draw attention to the differences between the replaced sheets and the replacement sheets, shall indicate the basis for the amendment in the application as filed and shall preferably also explain the reasons for the amendment.
(b) Where the amendment consists in the deletion of passages or in minor alterations or additions, the replacement sheet referred to in paragraph (a) may be a copy of the relevant sheet of the international application containing the alterations or additions, provided that the clarity and direct reproducibility of that sheet are not adversely affected. To the extent that any amendment results in the cancellation of an entire sheet, that amendment shall be communicated in a letter which shall preferably also explain the reasons for the amendment.
(c) When amending the claims, Rule 46.5 shall apply mutatis mutandis. The set of claims submitted under Rule 46.5 as applicable by virtue of this paragraph shall replace all the claims originally filed
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or previously amended under Articles 19 or 34, as the case may be.
Rule 67
Subject Matter Under Article 34(4)(a)(i)
67.1 Definition
No International Preliminary Examining Authority shall be required to carry out an international preliminary examination on an international application if, and to the extent to which, its subject matter is any of the following:
(i) scientific and mathematical theories,
(ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
(iii) schemes, rules, or methods of doing business, performing purely mental acts, or playing games,
(iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
(v) mere presentations of information,
(vi) computer programs to the extent that the International Preliminary Examining Authority is not equipped to carry out an international preliminary examination concerning such programs.
Rule 68
Lack of Unity of Invention (International Preliminary Examination)
68.1 No Invitation to Restrict or Pay
Where the International Preliminary Examining Authority finds that the requirement of unity of invention is not complied with and chooses not to invite the applicant to restrict the claims or to pay additional fees, it shall proceed with the international preliminary examination, subject to Article 34(4)(b) and Rule 66.1(e), in respect of the entire international application, but shall indicate, in any written opinion and in the international preliminary examination
report, that it considers that the requirement of unity of invention is not fulfilled and it shall specify the reasons therefor.
68.2 Invitation to Restrict or Pay
Where the International Preliminary Examining Authority finds that the requirement of unity of invention is not complied with and chooses to invite the applicant, at his option, to restrict the claims or to pay additional fees, the invitation shall:
(i) specify at least one possibility of restriction which, in the opinion of the International Preliminary Examining Authority, would be in compliance with the applicable requirement;
(ii) specify the reasons for which the international application is not considered as complying with the requirement of unity of invention;
(iii) invite the applicant to comply with the invitation within one month from the date of the invitation;
(iv) indicate the amount of the required additional fees to be paid in case the applicant so chooses; and
(v) invite the applicant to pay, where applicable, the protest fee referred to in Rule 68.3(c) within one month from the date of the invitation, and indicate the amount to be paid.
68.3 Additional Fees
(a) The amount of the additional fees due for international preliminary examination under Article 34(3)(a) shall be determined by the competent International Preliminary Examining Authority.
(b) The additional fees due for international preliminary examination under Article 34(3)(a) shall be payable direct to the International Preliminary Examining Authority.
(c) Any applicant may pay the additional fees under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the amount of the required additional fees is excessive. Such protest shall be examined by a review body constituted in the framework of the International Preliminary
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Examining Authority which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fees. On the request of the applicant, the text of both the protest and the decision thereon shall be notified to the elected Offices as an annex to the international preliminary examination report.
(d) The membership of the review body referred to in paragraph (c) may include, but shall not be limited to, the person who made the decision which is the subject of the protest.
(e) The examination of a protest referred to in paragraph (c) may be subjected by the International Preliminary Examining Authority to the payment to it, for its own benefit, of a protest fee. Where the applicant has not, within the time limit under Rule 68.2(v), paid any required protest fee, the protest shall be considered not to have been made and the International Preliminary Examining Authority shall so declare. The protest fee shall be refunded to the applicant where the review body referred to in paragraph (c) finds that the protest was entirely justified.
68.4 Procedure in the Case of Insufficient Restriction of the Claims
If the applicant restricts the claims but not sufficiently to comply with the requirement of unity of invention, the International Preliminary Examining Authority shall proceed as provided in Article 34(3)(c).
68.5 Main Invention
In case of doubt which invention is the main invention for the purposes of Article 34(3)(c), the invention first mentioned in the claims shall be considered the main invention.
Rule 69
Start of and Time Limit for International Preliminary Examination
69.1 Start of International Preliminary Examination
(a) Subject to paragraphs (b) to (e), the International Preliminary Examining Authority shall start the international preliminary examination when it is in possession of all of the following:
(i) the demand;
(ii) the amount due (in full) for the handling fee and the preliminary examination fee, including where applicable, the late payment fee under Rule 58 bis.2; and
(iii) either the international search report or the declaration by the International Searching Authority under Article 17(2)(a) that no international search report will be established, and the written opinion established under Rule 43 bis.1;
provided that the International Preliminary Examining Authority shall not start the international preliminary examination before the expiration of the applicable time limit under Rule 54 bis.1(a) unless the applicant expressly requests an earlier start.
(b) If the national Office or intergovernmental organization that acts as International Searching Authority also acts as International Preliminary Examining Authority, the international preliminary examination may, if that national Office or intergovernmental organization so wishes and subject to paragraphs (d) and (e), start at the same time as the international search.
(b-bis) Where, in accordance with paragraph (b), the national Office or intergovernmental organization that acts as both International Searching Authority and International Preliminary Examining Authority wishes to start the international preliminary examination at the same time as the international search and considers that all of the conditions referred to in Article 34(2)(c)(i) to (iii) are fulfilled, that national Office or intergovernmental organization need not, in its capacity as International Searching Authority, establish a written opinion under Rule 43 bis.1.
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(c) Where the statement concerning amendments contains an indication that amendments under Article 19 are to be taken into account (Rule 53.9(a)(i)), the International Preliminary Examining Authority shall not start the international preliminary examination before it has received a copy of the amendments concerned.
(d) Where the statement concerning amendments contains an indication that the start of the international preliminary examination is to be postponed (Rule 53.9(b)), the International Preliminary Examining Authority shall not start the international preliminary examination before whichever of the following occurs first:
(i) it has received a copy of any amendments made under Article 19;
(ii) it has received a notice from the applicant that he does not wish to make amendments under Article 19; or
(iii) the expiration of the applicable time limit under Rule 46.1.
(e) Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand (Rule 53.9(c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Authority shall not start the international preliminary examination before it has received the amendments or before the time limit fixed in the invitation referred to in Rule 60.1(g) has expired, whichever occurs first.
69.2 Time Limit for International Preliminary Examination
The time limit for establishing the international preliminary examination report shall be whichever of the following periods expires last:
(i) 28 months from the priority date; or
(ii) six months from the time provided under Rule 69.1 for the start of the international preliminary examination; or
(iii) six months from the date of receipt by the International Preliminary Examining Authority of the translation furnished under Rule 55.2.
Rule 70
International Preliminary Report on Patentability by the International Preliminary Examining Authority (International Preliminary Examination Report)
70.1 Definition
For the purposes of this Rule, “report” shall mean international preliminary examination report.
70.2 Basis of the Report
(a) If the claims have been amended, the report shall issue on the claims as amended.
(b) If, pursuant to Rule 66.7(a) or (b), the report is established as if the priority had not been claimed, the report shall so indicate.
(c) If the International Preliminary Examining Authority considers that any amendment goes beyond the disclosure in the international application as filed, the report shall be established as if such amendment had not been made, and the report shall so indicate. It shall also indicate the reasons why it considers that the amendment goes beyond the said disclosure.
(c-bis) If the claims, description or drawings have been amended but the replacement sheet or sheets were not accompanied by a letter indicating the basis for the amendment in the application as filed, as required under Rule 46.5(b)(iii), Rule 46.5(b)(iii) being applicable by virtue of Rule 66.8(c), or Rule 66.8(a), as applicable, the report may be established as if the amendment had not been made, in which case the report shall so indicate.
(d) Where claims relate to inventions in respect of which no international search report has been established and have therefore not been the subject of international preliminary examination, the international preliminary examination report shall so indicate.
(e) If a rectification of an obvious mistake is taken into account under Rule 66.1, the report shall so indicate. If a rectification of an obvious mistake is not taken into account pursuant to Rule 66.4 bis , the report shall, if possible, so indicate, failing which
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the International Preliminary Examining Authority shall notify the International Bureau accordingly and the International Bureau shall proceed as provided for in the Administrative Instructions.
(f) The report shall indicate the date on which a top-up search under Rule 66.1 ter was made, or else state that no top-up search was made.
70.3 Identifications
The report shall identify the International Preliminary Examining Authority which established it by indicating the name of such Authority, and the international application by indicating the international application number, the name of the applicant, and the international filing date.
70.4 Dates
The report shall indicate:
(i) the date on which the demand was submitted, and
(ii) the date of the report; that date shall be the date on which the report is completed.
70.5 Classification
(a) The report shall repeat the classification given under Rule 43.3 if the International Preliminary Examining Authority agrees with such classification.
(b) Otherwise, the International Preliminary Examining Authority shall indicate in the report the classification, at least according to the International Patent Classification, which it considers correct.
70.6 Statement Under Article 35(2)
(a) The statement referred to in Article 35(2) shall consist of the words “YES” or “NO,” or their equivalent in the language of the report, or some appropriate sign provided for in the Administrative Instructions, and shall be accompanied by the citations, explanations, and observations, if any, referred to in the last sentence of Article 35(2).
(b) If any of the three criteria referred to in Article 35(2) (that is, novelty, inventive step (non- obviousness), industrial applicability) is not satisfied, the statement shall be negative. If, in such a case,
any of the criteria, taken separately, is satisfied, the report shall specify the criterion or criteria so satisfied.
70.7 Citations Under Article 35(2)
(a) The report shall cite the documents considered to be relevant for supporting the statements made under Article 35(2), whether or not such documents are cited in the international search report. Documents cited in the international search report need only be cited in the report when they are considered by the International Preliminary Examining Authority to be relevant.
(b) The provisions of Rule 43.5(b) and (e) shall apply also to the report.
70.8 Explanations Under Article 35(2)
The Administrative Instructions shall contain guidelines for cases in which the explanations referred to in Article 35(2) should or should not be given and the form of such explanations. Such guidelines shall be based on the following principles:
(i) explanations shall be given whenever the statement in relation to any claim is negative;
(ii) explanations shall be given whenever the statement is positive unless the reason for citing any document is easy to imagine on the basis of consultation of the cited document;
(iii) generally, explanations shall be given if the case provided for in the last sentence of Rule 70.6(b) obtains.
70.9 Non-Written Disclosures
Any non-written disclosure referred to in the report by virtue of Rule 64.2 shall be mentioned by indicating its kind, the date on which the written disclosure referring to the non-written disclosure was made available to the public, and the date on which the non-written disclosure occurred in public.
70.10 Certain Published Documents
Any published application or any patent referred to in the report by virtue of Rule 64.3 shall be mentioned as such and shall be accompanied by an indication of its date of publication, of its filing date,
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and its claimed priority date (if any). In respect of the priority date of any such document, the report may indicate that, in the opinion of the International Preliminary Examining Authority, such date has not been validly claimed.
70.11 Mention of Amendments
If, before the International Preliminary Examining Authority, amendments have been made, this fact shall be indicated in the report. Where any amendment has resulted in the cancellation of an entire sheet, this fact shall also be specified in the report.
70.12 Mention of Certain Defects and Other Matters
If the International Preliminary Examining Authority considers that, at the time it prepares the report:
(i) the international application contains any of the defects referred to in Rule 66.2(a)(iii), it shall include this opinion and the reasons therefor in the report;
(ii) the international application calls for any of the observations referred to in Rule 66.2(a)(v), it may include this opinion in the report and, if it does, it shall also indicate in the report the reasons for such opinion;
(iii) any of the situations referred to in Article 34(4) exists, it shall state this opinion and the reasons therefor in the report;
(iv) a nucleotide and/or amino acid sequence listing is not available to it in such a form that a meaningful international preliminary examination can be carried out, it shall so state in the report.
70.13 Remarks Concerning Unity of Invention
If the applicant paid additional fees for the international preliminary examination, or if the international application or the international preliminary examination was restricted under Article 34(3), the report shall so indicate. Furthermore, where the international preliminary examination was carried out on restricted claims (Article 34(3)(a)), or on the main invention only (Article 34(3)(c)), the
report shall indicate what parts of the international application were and what parts were not the subject of international preliminary examination. The report shall contain the indications provided for in Rule 68.1, where the International Preliminary Examining Authority chose not to invite the applicant to restrict the claims or to pay additional fees.
70.14 Authorized Officer
The report shall indicate the name of the officer of the International Preliminary Examining Authority responsible for that report.
70.15 Form; Title
(a) The physical requirements as to the form of the report shall be prescribed by the Administrative Instructions.
(b) The report shall bear the title “international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)” together with an indication that it is the international preliminary examination report established by the International Preliminary Examining Authority.
70.16 Annexes to the Report
(a) The following replacement sheets and letters shall be annexed to the report:
(i) each replacement sheet under Rule 66.8 containing amendments under Article 34 and each letter under Rule 66.8(a), Rule 66.8(b) and Rule 46.5(b) as applicable by virtue of Rule 66.8(c);
(ii) each replacement sheet under Rule 46.5 containing amendments under Article 19 and each letter under Rule 46.5; and
(iii) each replacement sheet under Rule 26.4 as applicable by virtue of Rule 91.2 containing a rectification of an obvious mistake authorized by that Authority under Rule 91.1(b)(iii) and each letter under Rule 26.4 as applicable by virtue of Rule 91.2;
unless any such replacement sheet has been superseded or considered reversed by a later replacement sheet or an amendment resulting in the cancellation of an entire sheet under Rule 66.8(b); and
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(iv) where the report contains an indication referred to in Rule 70.2(e), any sheet and letter relating to a rectification of an obvious mistake which is not taken into account pursuant to Rule 66.4 bis .
(b) Notwithstanding paragraph (a), each superseded or reversed replacement sheet referred to in that paragraph and any letter referred to in that paragraph relating to such superseded or reversed sheet shall also be annexed to the report where:
(i) the International Preliminary Examining Authority considers that the relevant superseding or reversing amendment goes beyond the disclosure in the international application as filed and the report contains an indication referred to in Rule 70.2(c) ;
(ii) the relevant superseding or reversing amendment was not accompanied by a letter indicating the basis for the amendment in the application as filed and the report is established as if the amendment had not been made and contains an indication referred to in Rule 70.2(c- bis ).
In such a case, the superseded or reversed replacement sheet shall be marked as provided by the Administrative Instructions.
70.17 Languages of the Report and the Annexes
The report and any annex shall be in the language in which the international application to which they relate is published, or, if the international preliminary examination is carried out, pursuant to Rule 55.2, on the basis of a translation of the international application, in the language of that translation.
Rule 71
Transmittal of the International Preliminary Examination Report
71.1 Recipients
The International Preliminary Examining Authority shall, on the same day, transmit one copy of the international preliminary examination report and its
annexes, if any, to the International Bureau, and one copy to the applicant.
71.2 Copies of Cited Documents
(a) The request under Article 36(4) may be presented any time during seven years from the international filing date of the international application to which the report relates.
(b) The International Preliminary Examining Authority may require that the party (applicant or elected Office) presenting the request pay to it the cost of preparing and mailing the copies. The level of the cost of preparing copies shall be provided for in the agreements referred to in Article 32(2) between the International Preliminary Examining Authorities and the International Bureau.
(c) [Deleted]
(d) Any International Preliminary Examining Authority may perform the obligations referred to in paragraphs (a) and (b) through another agency responsible to it.
Rule 72
Translation of the International Preliminary Examination Report and of the Written Opinion of the International Searching Authority
72.1 Languages
(a) Any elected State may require that the international preliminary examination report, established in any language other than the official language, or one of the official languages, of its national Office, be translated into English.
(b) Any such requirement shall be notified to the International Bureau, which shall promptly publish it in the Gazette.
72.2 Copy of Translation for the Applicant
The International Bureau shall transmit a copy of the translation referred to in Rule 72.1(a) of the international preliminary examination report to the
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applicant at the same time as it communicates such translation to the interested elected Office or Offices.
72.2 bis Translation of the Written Opinion of the International Searching Authority Established Under Rule 43bis.1
In the case referred to in Rule 73.2(b)(ii), the written opinion established by the International Searching Authority under Rule 43 bis.1 shall, upon request of the elected Office concerned, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to the elected Office concerned within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.
72.3 Observations on the Translation
The applicant may make written observations as to the correctness of the translation of the international preliminary examination report or of the written opinion established by the International Searching Authority under Rule 43 bis.1 and shall send a copy of the observations to each of the interested elected Offices and to the International Bureau.
Rule 73
Communication of the International Preliminary Examination Report or the Written Opinion of the International Searching Authority
73.1 Preparation of Copies
The International Bureau shall prepare the copies of the documents to be communicated under Article 36(3)(a).
73.2 Communication to Elected Offices
(a) The International Bureau shall effect the communication provided for in Article 36(3)(a) to each elected Office in accordance with Rule 93 bis.1 but not before the expiration of 30 months from the priority date.
(b) Where the applicant makes an express request to an elected Office under Article 40(2), the International Bureau shall, upon the request of that Office or of the applicant,
(i) if the international preliminary examination report has already been transmitted to the International Bureau under Rule 71.1, promptly effect the communication provided for in Article 36(3)(a) to that Office;
(ii) if the international preliminary examination report has not been transmitted to the International Bureau under Rule 71.1, promptly communicate a copy of the written opinion established by the International Searching Authority under Rule 43 bis.1 to that Office.
(c) Where the applicant has withdrawn the demand or any or all elections, the communication provided for in paragraph (a) shall nevertheless be effected, if the International Bureau has received the international preliminary examination report, to the elected Office or Offices affected by the withdrawal.
Rule 74
Translations of Annexes of the International Preliminary Examination Report and Transmittal Thereof
74.1 Contents of Translation and Time Limit for Transmittal Thereof
(a) Where the furnishing of a translation of the international application is required by the elected Office under Article 39(1), the applicant shall, within the time limit applicable under Article 39(1), transmit a translation of any replacement sheet referred to in Rule 70.16 which is annexed to the international preliminary examination report unless such sheet is in the language of the required translation of the international application. The same time limit shall apply where the furnishing of a translation of the international application to the elected Office must, because of a declaration made under Article 64(2)(a)(i), be effected within the time limit applicable under Article 22.
(b) Where the furnishing under Article 39(1) of a translation of the international application is not required by the elected Office, that Office may require the applicant to furnish, within the time limit
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applicable under that Article, a translation into the language in which the international application was published of any replacement sheet referred to in Rule 70.16 which is annexed to the international preliminary examination report and is not in that language.
Rule 75
[Deleted]
Rule 76
Translation of Priority Document; Application of Certain Rules to Procedures Before Elected Offices
76.1 [Deleted]
76.2 [Deleted]
76.3 [Deleted]
76.4 Time Limit for Translation of Priority Document
The applicant shall not be required to furnish to any elected Office a translation of the priority document before the expiration of the applicable time limit under Article 39.
76.5 Application of Certain Rules to Procedures before Elected Offices
Rules 13 ter.3, 20.8(c), 22.1(g), 47.1, 49, 49 bis , 49 ter and 51 bis shall apply, provided that:
(i) any reference in the said Rules to the designated Office or to the designated State shall be construed as a reference to the elected Office or to the elected State, respectively;
(ii) any reference in the said Rules to Article 22, Article 23(2) or Article 24(2) shall be construed as a reference to Article 39(1), Article 40(2) or Article 39(3), respectively;
(iii) the words “international applications filed” in Rule 49.1(c) shall be replaced by the words “a demand submitted;”
(iv) for the purposes of Article 39(1), where an international preliminary examination report has been established, a translation of any amendment under Article 19 shall only be required if that amendment is annexed to that report;
(v) the reference in Rule 47.1(a) to Rule 47.4 shall be construed as a reference to Rule 61.2(d).
76.6 [Deleted]
Rule 77
Faculty Under Article 39(1)(b)
77.1 Exercise of Faculty
(a) Any Contracting State allowing a time limit expiring later than the time limit provided for in Article 39(1)(a) shall notify the International Bureau of the time limit so fixed.
(b) Any notification received by the International Bureau under paragraph (a) shall be promptly published by the International Bureau in the Gazette.
(c) Notifications concerning the shortening of the previously fixed time limit shall be effective in relation to demands submitted after the expiration of three months computed from the date on which the notification was published by the International Bureau.
(d) Notifications concerning the lengthening of the previously fixed time limit shall become effective upon publication by the International Bureau in the Gazette in respect of demands pending at the time or submitted after the date of such publication, or, if the Contracting State effecting the notification fixes some later date, as from the latter date.
Rule 78
Amendment of the Claims, the Description, and the Drawings, Before Elected Offices
78.1 Time Limit
(a) The applicant shall, if he so wishes, exercise the right under Article 41 to amend the claims, the description and the drawings, before the elected Office concerned within one month from the fulfillment of the requirements under Article
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39(1)(a), provided that, if the transmittal of the international preliminary examination report under Article 36(1) has not taken place by the expiration of the time limit applicable under Article 39, he shall exercise the said right not later than four months after such expiration date. In either case, the applicant may exercise the said right at any later time if so permitted by the national law of the said State.
(b) In any elected State in which the national law provides that examination starts only on special request, the national law may provide that the time limit within or the time at which the applicant may exercise the right under Article 41 shall be the same as that provided by the national law for the filing of amendments in the case of the examination, on special request, of national applications, provided that such time limit shall not expire prior to, or such time shall not come before, the expiration of the time limit applicable under paragraph (a).
78.2 [Deleted]
78.3 Utility Models
The provisions of Rules 6.5 and 13.5 shall apply, mutatis mutandis, before elected Offices. If the
election was made before the expiration of the 19th month from the priority date, the reference to the time limit applicable under Article 22 is replaced by a reference to the time limit applicable under Article 39.
PART D
Rules Concerning Chapter III of the Treaty
Rule 79
Calendar
79.1 Expressing Dates
Applicants, national Offices, receiving Offices, International Searching and Preliminary Examining Authorities, and the International Bureau, shall, for the purposes of the Treaty and the Regulations, express any date in terms of the Christian era and the Gregorian calendar, or, if they use other eras and
calendars, they shall also express any date in terms of the Christian era and the Gregorian calendar.
Rule 80
Computation of Time Limits
80.1 Periods Expressed in Years
When a period is expressed as one year or a certain number of years, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent year in the month having the same name and on the day having the same number as the month and the day on which the said event occurred, provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.
80.2 Periods Expressed in Months
When a period is expressed as one month or a certain number of months, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent month on the day which has the same number as the day on which the said event occurred, provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.
80.3 Periods Expressed in Days
When a period is expressed as a certain number of days, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire on the day on which the last day of the count has been reached.
80.4 Local Dates
(a) The date which is taken into consideration as the starting date of the computation of any period shall be the date which prevails in the locality at the time when the relevant event occurred.
(b) The date on which any period expires shall be the date which prevails in the locality in which
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the required document must be filed or the required fee must be paid.
80.5 Expiration on a Non-Working Day or Official Holiday
If the expiration of any period during which any document or fee must reach a national Office or intergovernmental organization falls on a day:
(i) on which such Office or organization is not open to the public for the purposes of the transaction of official business;
(ii) on which ordinary mail is not delivered in the locality in which such Office or organization is situated;
(iii) which, where such Office or organization is situated in more than one locality, is an official holiday in at least one of the localities in which such Office or organization is situated, and in circumstances where the national law applicable by that Office or organization provides, in respect of national applications, that, in such a case, such period shall expire on a subsequent day; or
(iv) which, where such Office is the government authority of a Contracting State entrusted with the granting of patents, is an official holiday in part of that Contracting State, and in circumstances where the national law applicable by that Office provides, in respect of national applications, that, in such a case, such period shall expire on a subsequent day; the period shall expire on the next subsequent day on which none of the said four circumstances exists.
80.6 Date of Documents
Where a period starts on the day of the date of a document or letter emanating from a national Office or intergovernmental organization, any interested party may prove that the said document or letter was mailed on a day later than the date it bears, in which case the date of actual mailing shall, for the purposes of computing the period, be considered to be the date on which the period starts. Irrespective of the date on which such a document or letter was mailed, if the applicant offers to the national Office or intergovernmental organization evidence which satisfies the national Office or intergovernmental organization that the document or letter was received more than seven days after the date it bears, the
national Office or intergovernmental organization shall treat the period starting from the date of the document or letter as expiring later by an additional number of days which is equal to the number of days which the document or letter was received later than seven days after the date it bears.
80.7 End of Working Day
(a) A period expiring on a given day shall expire at the moment the national Office or intergovernmental organization with which the document must be filed or to which the fee must be paid closes for business on that day.
(b) Any Office or organization may depart from the provisions of paragraph (a) up to midnight on the relevant day.
(c) [Deleted]
Rule 81
Modification of Time Limits Fixed in the Treaty
81.1 Proposal
(a) Any Contracting State or the Director General may propose a modification under Article 47(2).
(b) Proposals made by a Contracting State shall be presented to the Director General.
81.2 Decision by the Assembly
(a) When the proposal is made to the Assembly, its text shall be sent by the Director General to all Contracting States at least two months in advance of that session of the Assembly whose agenda includes the proposal.
(b) During the discussion of the proposal in the Assembly, the proposal may be amended or consequential amendments proposed.
(c) The proposal shall be considered adopted if none of the Contracting States present at the time of voting votes against the proposal.
81.3 Voting by Correspondence
(a) When voting by correspondence is chosen, the proposal shall be included in a written
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communication from the Director General to the Contracting States, inviting them to express their vote in writing.
(b) The invitation shall fix the time limit within which the reply containing the vote expressed in writing must reach the International Bureau. That time limit shall not be less than three months from the date of the invitation.
(c) Replies must be either positive or negative. Proposals for amendments or mere observations shall not be regarded as votes.
(d) The proposal shall be considered adopted if none of the Contracting States opposes the amendment and if at least one-half of the Contracting States express either approval or indifference or abstention.
Rule 82
Irregularities in the Mail Service
82.1 Delay or Loss in Mail
(a) Any interested party may offer evidence that he has mailed the document or letter five days prior to the expiration of the time limit. Except in cases where surface mail normally arrives at its destination within two days of mailing, or where no airmail service is available, such evidence may be offered only if the mailing was by airmail. In any case, evidence may be offered only if the mailing was by mail registered by the postal authorities.
(b) If the mailing, in accordance with paragraph (a), of a document or letter is proven to the satisfaction of the national Office or intergovernmental organization which is the addressee, delay in arrival shall be excused, or, if the document or letter is lost in the mail, substitution for it of a new copy shall be permitted, provided that the interested party proves to the satisfaction of the said Office or organization that the document or letter offered in substitution is identical with the document or letter lost.
(c) In the cases provided for in paragraph (b), evidence of mailing within the prescribed time limit, and, where the document or letter was lost, the substitute document or letter as well as the evidence concerning its identity with the document or letter lost shall be submitted within one month after the
date on which the interested party noticed - or with due diligence should have noticed - the delay or the loss, and in no case later than six months after the expiration of the time limit applicable in the given case.
(d) Any national Office or intergovernmental organization which has notified the International Bureau that it will do so shall, where a delivery service other than the postal authorities is used to mail a document or letter, apply the provisions of paragraphs (a) to (c) as if the delivery service was a postal authority. In such a case, the last sentence of paragraph (a) shall not apply but evidence may be offered only if details of the mailing were recorded by the delivery service at the time of mailing. The notification may contain an indication that it applies only to mailings using specified delivery services or delivery services which satisfy specified criteria. The International Bureau shall publish the information so notified in the Gazette.
(e) Any national Office or intergovernmental organization may proceed under paragraph (d):
(i) even if, where applicable, the delivery service used was not one of those specified, or did not satisfy the criteria specified, in the relevant notification under paragraph (d), or
(ii) even if that Office or organization has not sent to the International Bureau a notification under paragraph (d).
Rule 82bis
Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits
82 bis.1 Meaning of “Time Limit” in Article 48(2)
The reference to “any time limit” in Article 48(2) shall be construed as comprising a reference:
(i) to any time limit fixed in the Treaty or these Regulations;
(ii) to any time limit fixed by the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau or applicable by the receiving Office under its national law;
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(iii) to any time limit fixed by, or in the national law applicable by, the designated or elected Office, for the performance of any act by the applicant before that Office.
82 bis.2 Reinstatement of Rights and Other Provisions to Which Article 48(2) Applies
The provisions of the national law which is referred to in Article 48(2) concerning the excusing, by the designated or elected State, of any delay in meeting any time limit are those provisions which provide for reinstatement of rights, restoration, restitutio in integrum or further processing in spite of non-compliance with a time limit, and any other provision providing for the extension of time limits or for excusing delays in meeting time limits.
Rule 82ter
Rectification of Errors Made by the Receiving Office or by the International Bureau
82 ter.1 Errors Concerning the International Filing Date and the Priority Claim
(a) If the applicant proves to the satisfaction of any designated or elected Office that the international filing date is incorrect due to an error made by the receiving Office or that the priority claim has been erroneously considered void by the receiving Office or the International Bureau, and if the error is an error such that, had it been made by the designated or elected Office itself, that Office would rectify it under the national law or national practice, the said Office shall rectify the error and shall treat the international application as if it had been accorded the rectified international filing date or as if the priority claim had not been considered void.
(b) Where the international filing date has been accorded by the receiving Office under Rule 20.3(b)(ii) or 20.5(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part but the designated or elected Office finds that:
(i) the applicant has not complied with Rule 17.1(a), (b) or (b- bis) in relation to the priority document;
(ii) a requirement under Rule 4.18, 20.6(a)(i) or 51 bis.1(e)(ii) has not been complied with; or
(iii) the element or part is not completely contained in the priority document concerned;
the designated or elected Office may, subject to paragraph (c), treat the international application as if the international filing date had been accorded under Rule 20.3(b)(i) or 20.5(b), or corrected under Rule 20.5(c), as applicable, provided that Rule 17.1(c) shall apply mutatis mutandis.
(c) The designated or elected Office shall not treat the international application under paragraph (b) as if the international filing date had been accorded under Rule 20.3(b)(i) or 20.5(b), or corrected under Rule 20.5(c), without giving the applicant the opportunity to make observations on the intended treatment, or to make a request under paragraph (d), within a time limit which shall be reasonable under the circumstances.
(d) Where the designated or elected Office, in accordance with paragraph (c), has notified the applicant that it intends to treat the international application as if the international filing date had been corrected under Rule 20.5(c), the applicant may, in a notice submitted to that Office within the time limit referred to in paragraph (c), request that the missing part concerned be disregarded for the purposes of national processing before that Office, in which case that part shall be considered not to have been furnished and that Office shall not treat the international application as if the international filing date had been corrected.
Rule 82quater
Excuse of Delay in Meeting Time Limits
82 quater.1 Excuse of Delay in Meeting Time Limits
(a) Any interested party may offer evidence that a time limit fixed in the Regulations for performing an action before the receiving Office, the International Searching Authority, the Authority specified for supplementary search, the International Preliminary ExaminingAuthority or the International Bureau was not met due to war, revolution, civil disorder, strike, natural calamity or other like reason
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in the locality where the interested party resides, has his place of business or is staying, and that the relevant action was taken as soon as reasonably possible.
(b) Any such evidence shall be addressed to the Office, Authority or the International Bureau, as the case may be, not later than six months after the expiration of the time limit applicable in the given case. If such circumstances are proven to the satisfaction of the addressee, delay in meeting the time limit shall be excused.
(c) The excuse of a delay need not be taken into account by any designated or elected Office before which the applicant, at the time the decision to excuse the delay is taken, has already performed the acts referred to in Article 22 or Article 39. --------------------------------------------------------------------------------
Rule 83
Right to Practice Before International Authorities
83.1 Proof of Right
The International Bureau, the competent International Searching Authority, and the competent International Preliminary Examining Authority may require the production of proof of the right to practice referred to in Article 49.
83.1 bis Where the International Bureau Is the Receiving Office
(a) Any person who has the right to practice before the national Office of, or acting for, a Contracting state of which the applicant or, if there are two or more applicants, any of the applicants is a resident or national shall be entitled to practice in respect of the international application before the International Bureau in its capacity as receiving Office under Rule 19.1(a)(iii).
(b) Any person having the right to practice before the International Bureau in its capacity as receiving Office in respect of an international application shall be entitled to practice in respect of that application before the International Bureau in any other capacity and before the competent
International Searching Authority and competent International Preliminary Examining Authority.
83.2 Information
(a) The national Office or the intergovernmental organization which the interested person is alleged to have a right to practice before shall, upon request, inform the International Bureau, the competent International Searching Authority, or the competent International Preliminary Examining Authority, whether such person has the right to practice before it.
(b) Such information shall be binding upon the International Bureau, the International Searching Authority, or the International Preliminary Examining Authority, as the case may be.
PART E
Rules Concerning Chapter V of the Treaty
Rule 84
Expenses of Delegations
84.1 Expenses Borne by Governments
The expenses of each Delegation participating in any organ established by or under the Treaty shall be borne by the Government which has appointed it.
Rule 85
Absence of Quorum in the Assembly
85.1 Voting by Correspondence
In the case provided for in Article 53(5)(b), the International Bureau shall communicate the decisions of the Assembly (other than those concerning the Assembly's own procedure) to the Contracting States which were not represented and shall invite them to express in writing their vote or abstention within a period of three months from the date of the communication. If, at the expiration of that period, the number of Contracting States having thus expressed their vote or abstention attains the number of Contracting States which was lacking for attaining
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the quorum in the session itself, such decisions shall take effect provided that at the same time the required majority still obtains.
Rule 86
The Gazette
86.1 Contents
The Gazette referred to in Article 55(4) shall contain:
(i) for each published international application, the data specified by the Administrative Instructions taken from the front page of the publication of the international application, the drawing (if any) appearing on the said front page, and the abstract;
(ii) the schedule of all fees payable to the receiving Offices, the International Bureau, and the International Searching and Preliminary Examining Authorities;
(iii) notices the publication of which is required under the Treaty or these Regulations;
(iv) information, if and to the extent furnished to the International Bureau by the designated or elected Offices, on the question whether the requirements provided for in Articles 22 or 39 have been complied with in respect of the international applications designating or electing the Office concerned;
(v) any other useful information prescribed by the Administrative Instructions, provided access to such information is not prohibited under the Treaty or these Regulations.
(b) [Deleted]
86.2 Languages; Form and Means of Publication; Timing
(a) The Gazette shall be published in English and French at the same time. The translations shall be ensured by the International Bureau in English and French.
(b) The Assembly may order the publication of the Gazette in languages other than those referred to in paragraph (a).
(c) The form in which and the means by which the Gazette is published shall be governed by the Administrative Instructions.
(d) The International Bureau shall ensure that, for each published international application, the information referred to in Rule 86.1(i) is published in the Gazette on, or as soon as possible after, the date of publication of the international application.
86.3 Frequency
The frequency of publication of the Gazette shall be determined by the Director General.
86.4 Sale
The subscription and other sale prices of the Gazette shall be determined by the Director General.
86.5 Title
The title of the Gazette shall be determined by the Director General.
86.6 Further Details
Further details concerning the Gazette may be provided for in the Administrative Instructions.
Rule 87
Communication of Publications
87.1 Communication of Publications on Request
The International Bureau shall communicate, free of charge, every published international application, the Gazette and any other publication of general interest published by the International Bureau in connection with the Treaty or these Regulations, to International Searching Authorities, International Preliminary Examining Authorities and national Offices upon request by the Authority or Office concerned. Further details concerning the form in which and the means by which publications are
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communicated shall be governed by the Administrative Instructions.
87.2 [Deleted]
Rule 88
Amendment of the Regulations
88.1 Requirement of Unanimity
Amendment of the following provisions of these Regulations shall require that no State having the right to vote in the Assembly vote against the proposed amendment:
(i) Rule 14.1 (Transmittal Fee),
(ii) [Deleted]
(iii) Rule 22.3 (Time Limit under Article 12(3)),
(iv) Rule 33 (Relevant Prior Art for International Search),
(v) Rule 64 (Prior Art for International Preliminary Examination),
(vi) Rule 81 (Modification of Time Limits Fixed in the Treaty),
(vii) the present paragraph (i.e., Rule 88.1).
88.2 [Deleted]
88.3 Requirement of Absence of Opposition by Certain States
Amendment of the following provisions of these Regulations shall require that no State referred to in Article 58(3)(a)(ii) and having the right to vote in the Assembly vote against the proposed amendment:
(i) Rule 34 (Minimum Documentation),
(ii) Rule 39 (Subject Matter under Article 17(2)(a)(i)),
(iii) Rule 67 (Subject Matter under Article 34(4)(a)(i)),
(iv) the present paragraph (i.e., Rule 88.3).
88.4 Procedure
Any proposal for amending a provision referred to in Rules 88.1 or 88.3 shall, if the proposal is to be decided upon in the Assembly, be communicated to all Contracting States at least two months prior to the opening of that session of the Assembly which is called upon to make a decision on the proposal.
Rule 89
Administrative Instructions
89.1 Scope
(a) The Administrative Instructions shall contain provisions:
(i) concerning matters in respect of which these Regulations expressly refer to such Instructions,
(ii) concerning any details in respect of the application of these Regulations.
(b) The Administrative Instructions shall not be in conflict with the provisions of the Treaty, these Regulations, or any agreement concluded by the International Bureau with an International Searching Authority, or an International Preliminary Examining Authority.
89.2 Source
(a) The Administrative Instructions shall be drawn up and promulgated by the Director General after consultation with the receiving Offices and the International Searching and Preliminary Examining Authorities.
(b) They may be modified by the Director General after consultation with the Offices or Authorities which have a direct interest in the proposed modification.
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(c) The Assembly may invite the Director General to modify the Administrative Instructions, and the Director General shall proceed accordingly.
89.3 Publication and Entry into Force
(a) The Administrative Instructions and any modification thereof shall be published in the Gazette.
(b) Each publication shall specify the date on which the published provisions come into effect. The dates may be different for different provisions, provided that no provision may be declared effective prior to its publication in the Gazette.
PART F
Rules Concerning Several Chapters of the Treaty
Rule 89bis
Filing, Processing and Communication of International Applications and Other Documents in Electronic Form or by Electronic Means
89 bis.1 International Applications
(a) International applications may, subject to paragraphs (b) to (e), be filed and processed in electronic form or by electronic means, in accordance with the Administrative Instructions, provided that any receiving Office shall permit the filing of international applications on paper.
(b) These Regulations shall apply mutatis mutandis to international applications filed in electronic form or by electronic means, subject to any special provisions of the Administrative Instructions.
(c) The Administrative Instructions shall set out the provisions and requirements in relation to the filing and processing of international applications filed, in whole or in part, in electronic form or by electronic means, including but not limited to, provisions and requirements in relation to acknowledgment of receipt, procedures relating to the according of an international filing date, physical requirements and the consequences of non-compliance with those requirements, signature
of documents, means of authentication of documents and of the identity of parties communicating with Offices and authorities, and the operation of Article 12 in relation to the home copy, the record copy and the search copy, and may contain different provisions and requirements in relation to international applications filed in different languages.
(d) No national Office or intergovernmental organization shall be obliged to receive or process international applications filed in electronic form or by electronic means unless it has notified the International Bureau that it is prepared to do so in compliance with the applicable provisions of the Administrative Instructions. The International Bureau shall publish the information so notified in the Gazette.
(e) No receiving Office which has given the International Bureau a notification under paragraph (d) may refuse to process an international application filed in electronic form or by electronic means which complies with the applicable requirements under the Administrative Instructions.
89 bis.2 Other Documents
Rule 89 bis.1 shall apply mutatis mutandis to other documents and correspondence relating to international applications.
89 bis.3 Communication Between Offices
Where the Treaty, these Regulations or the Administrative Instructions provide for the communication, notification or transmittal (“communication”) of an international application, notification, communication, correspondence or other document by one national Office or intergovernmental organization to another, such communication may, where so agreed by both the sender and the receiver, be effected in electronic form or by electronic means.
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Rule 89ter
Copies in Electronic Form of Documents Filed on Paper
89 ter.1 Copies in Electronic Form of Documents Filed on Paper
Any national Office or intergovernmental organization may provide that, where an international application or other document relating to an international application is filed on paper, a copy thereof in electronic form, in accordance with the Administrative Instructions, may be furnished by the applicant.
Rule 90
Agents and Common Representatives
90.1 Appointment as Agent
(a) A person having the right to practice before the national Office with which the international application is filed or, where the international application is filed with the International Bureau, having the right to practice in respect of the international application before the International Bureau as receiving Office may be appointed by the applicant as his agent to represent him before the receiving Office, the International Bureau, the International Searching Authority, any Authority specified for supplementary search and the International Preliminary Examining Authority.
(b) A person having the right to practice before the national Office or intergovernmental organization which acts as the International Searching Authority may be appointed by the applicant as his agent to represent him specifically before that Authority.
(b-bis) A person having the right to practice before the national Office or intergovernmental organization which acts as the Authority specified for supplementary search may be appointed by the applicant as his agent to represent him specifically before that Authority.
(c) A person having the right to practice before the national Office or intergovernmental organization which acts as the International Preliminary
Examining Authority may be appointed by the applicant as his agent to represent him specifically before that Authority.
(d) An agent appointed under paragraph (a) may, unless otherwise indicated in the document appointing him, appoint one or more sub-agents to represent the applicant as the applicant's agent:
(i) before the receiving Office, the International Bureau, the International Searching Authority, anyAuthority specified for supplementary search and the International Preliminary Examining Authority, provided that any person so appointed as sub-agent has the right to practice before the national Office with which the international application was filed or to practice in respect of the international application before the International Bureau as receiving Office, as the case may be;
(ii) specifically before the International Searching Authority, any Authority specified for supplementary search or the International Preliminary Examining Authority, provided that any person so appointed as sub-agent has the right to practice before the national Office or intergovernmental organization which acts as the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, as the case may be.
90.2 Common Representative
(a) Where there are two or more applicants and the applicants have not appointed an agent representing all of them (a “common agent”) under Rule 90.1(a), one of the applicants who is entitled to file an international application according to Article 9 may be appointed by the other applicants as their common representative.
(b) Where there are two or more applicants and all the applicants have not appointed a common agent under Rule 90.1(a) or a common representative under paragraph (a), the applicant first named in the request who is entitled according to Rule 19.1 to file an international application with the receiving Office
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shall be considered to be the common representative of all the applicants.
90.3 Effects of Acts by or in Relation to Agents and Common Representatives
(a) Any act by or in relation to an agent shall have the effect of an act by or in relation to the applicant or applicants concerned.
(b) If there are two or more agents representing the same applicant or applicants, any act by or in relation to any of those agents shall have the effect of an act by or in relation to the said applicant or applicants.
(c) Subject to Rule 90 bis.5, second sentence, any act by or in relation to a common representative or his agent shall have the effect of an act by or in relation to all the applicants.
90.4 Manner of Appointment of Agent or Common Representative
(a) The appointment of an agent shall be effected by the applicant signing the request, the demand, or a separate power of attorney. Where there are two or more applicants, the appointment of a common agent or common representative shall be effected by each applicant signing, at his choice, the request, the demand or a separate power of attorney.
(b) Subject to Rule 90.5, a separate power of attorney shall be submitted to either the receiving Office or the International Bureau, provided that, where a power of attorney appoints an agent under Rule 90.1(b), (b- bis), (c) or (d)(ii), it shall be submitted to the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, as the case may be.
(c) If the separate power of attorney is not signed, or if the required separate power of attorney is missing, or if the indication of the name or address of the appointed person does not comply with Rule 4.4, the power of attorney shall be considered non-existent unless the defect is corrected.
(d) Subject to paragraph (e), any receiving Office, any International Searching Authority, any Authority competent to carry out supplementary searches, any International Preliminary Examining Authority and the International Bureau may waive the requirement under paragraph (b) that a separate
power of attorney be submitted to it, in which case paragraph (c) shall not apply.
(e) Where the agent or the common representative submits any notice of withdrawal referred to in Rules 90 bis.1 to 90 bis.4, the requirement under paragraph (b) for a separate power of attorney shall not be waived under paragraph (d).
90.5 General Power of Attorney
(a) Appointment of an agent in relation to a particular international application may be effected by referring in the request, the demand, or a separate notice to an existing separate power of attorney appointing that agent to represent the applicant in relation to any international application which may be filed by that applicant (i.e., a “general power of attorney”), provided that:
(i) the general power of attorney has been deposited in accordance with paragraph (b), and
(ii) a copy of it is attached to the request, the demand or the separate notice, as the case may be; that copy need not be signed.
(b) The general power of attorney shall be deposited with the receiving Office, provided that, where it appoints an agent under Rule 90.1(b), (b- bis), (c), or (d)(ii), it shall be deposited with the International Searching Authority, the Authority specified for supplementary search or the International Preliminary Examining Authority, as the case may be.
(c) Any receiving Office, any International Searching Authority, any Authority competent to carry out supplementary searches and any International Preliminary Examining Authority may waive the requirement under paragraph (a)(ii) that a copy of the general power of attorney is attached to the request, the demand or the separate notice, as the case may be.
(d) Notwithstanding paragraph (c), where the agent submits any notice of withdrawal referred to in Rules 90 bis.1 to 90 bis.4 to the receiving Office, the Authority specified for supplementary search, the International Preliminary Examining Authority or the International Bureau, as the case may be, a
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copy of the general power of attorney shall be submitted to that Office, Authority or Bureau.
90.6 Revocation and Renunciation
(a) Any appointment of an agent or common representative may be revoked by the persons who made the appointment or by their successors in title, in which case any appointment of a sub-agent under Rule 90.1(d) by that agent shall also be considered as revoked. Any appointment of a subagent under Rule 90.1(d) may also be revoked by the applicant concerned.
(b) The appointment of an agent under Rule 90.1(a) shall, unless otherwise indicated, have the effect of revoking any earlier appointment of an agent made under that Rule.
(c) The appointment of a common representative shall, unless otherwise indicated, have the effect of revoking any earlier appointment of a common representative.
(d) An agent or a common representative may renounce his appointment by a notification signed by him.
(e) Rule 90.4(b) and (c) shall apply, mutatis mutandis, to a document containing a revocation or renunciation under this Rule.
Rule 90bis
Withdrawals
90 bis.1 Withdrawal of the International Application
(a) The applicant may withdraw the international application at any time prior to the expiration of 30 months from the priority date.
(b) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
(c) No international publication of the international application shall be effected if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical
preparations for international publication have been completed.
90 bis.2 Withdrawal of Designations
(a) The applicant may withdraw the designation of any designated State at any time prior to the expiration of 30 months from the priority date. Withdrawal of the designation of a State which has been elected shall entail withdrawal of the corresponding election under Rule 90 bis.4.
(b) Where a State has been designated for the purpose of obtaining both a national patent and a regional patent, withdrawal of the designation of that State shall be taken to mean withdrawal of only the designation for the purpose of obtaining a national patent, except where otherwise indicated.
(c) Withdrawal of the designations of all designated States shall be treated as withdrawal of the international application under Rule 90 bis.1.
(d) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
(e) No international publication of the designation shall be effected if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.
90 bis.3 Withdrawal of Priority Claims
(a) The applicant may withdraw a priority claim, made in the international application under Article 8(1), at any time prior to the expiration of 30 months from the priority date.
(b) Where the international application contains more than one priority claim, the applicant may exercise the right provided for in paragraph (a) in respect of one or more or all of the priority claims.
(c) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
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(d) Where the withdrawal of a priority claim causes a change in the priority date, any time limit which is computed from the original priority date and which has not already expired shall, subject to paragraph (e), be computed from the priority date resulting from that change.
(e) In the case of the time limit referred to in Article 21(2)(a), the International Bureau may nevertheless proceed with the international publication on the basis of the said time limit as computed from the original priority date if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau after the completion of the technical preparations for international publication.
90 bis.3 bis Withdrawal of Supplementary Search Request
(a) The applicant may withdraw a supplementary search request at any time prior to the date of transmittal to the applicant and to the International Bureau, under Rule 45 bis.8(a), of the supplementary international search report or the declaration that no such report will be established.
(b) Withdrawal shall be effective on receipt, within the time limit under paragraph (a), of a notice addressed by the applicant, at his option, to the Authority specified for supplementary search or to the International Bureau, provided that, where the notice does not reach the Authority specified for supplementary search in sufficient time to prevent the transmittal of the report or declaration referred to in paragraph (a), the communication of that report or declaration under Article 20(1), as applicable by virtue of Rule 45 bis.8(b), shall nevertheless be effected.
90 bis.4 Withdrawal of the Demand, or of Elections
(a) The applicant may withdraw the demand or any or all elections at any time prior to the expiration of 30 months from the priority date.
(b) Withdrawal shall be effective upon receipt of a notice addressed by the applicant to the International Bureau.
(c) If the notice of withdrawal is submitted by the applicant to the International Preliminary
Examining Authority, that Authority shall mark the date of receipt on the notice and transmit it promptly to the International Bureau. The notice shall be considered to have been submitted to the International Bureau on the date marked.
90 bis.5 Signature
Any notice of withdrawal referred to in Rules 90 bis.1 to PCT Rule 90 bis.4 shall be signed by the applicant or, if there are two or more applicants, by all of them. An applicant who is considered to be the common representative under Rule 90.2(b) shall not be entitled to sign such a notice on behalf of the other applicants.
90 bis.6 Effect of Withdrawal
(a) Withdrawal under Rule 90 bis of the international application, any designation, any priority claim, the demand or any election shall have no effect in any designated or elected Office where the processing or examination of the international application has already started under Article 23(2) or Article 40(2).
(b) Where the international application is withdrawn under Rule 90 bis.1, the international processing of the international application shall be discontinued.
(b-bis) Where a supplementary search request is withdrawn under Rule 90 bis.3 bis , the supplementary international search by the Authority concerned shall be discontinued.
(c) Where the demand or all elections are withdrawn under Rule 90 bis.4, the processing of the international application by the International Preliminary Examining Authority shall be discontinued.
90 bis.7 Faculty Under Article 37(4)(b)
(a) Any Contracting State whose national law provides for what is described in the second part of Article 37(4)(b) shall notify the International Bureau in writing.
(b) The notification referred to in paragraph (a) shall be promptly published by the International Bureau in the Gazette, and shall have effect in respect of international applications filed more than one month after the date of such publication.
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Rule 91
Rectification of Obvious Mistakes in the International Application and Other Documents
91.1 Rectification of Obvious Mistakes
(a) An obvious mistake in the international application or another document submitted by the applicant may be rectified in accordance with this Rule if the applicant so requests.
(b) The rectification of a mistake shall be subject to authorization by the “competent authority”, that is to say:
(i) in the case of a mistake in the request part of the international application or in a correction thereof—by the receiving Office;
(ii) in the case of a mistake in the description, claims or drawings or in a correction thereof, unless the International Preliminary Examining Authority is competent under item (iii)—by the International Searching Authority;
(iii) in the case of a mistake in the description, claims or drawings or in a correction thereof, or in an amendment under Article 19 or 34, where a demand for international preliminary examination has been made and has not been withdrawn and the date on which international preliminary examination shall start in accordance with Rule 69.1 has passed—by the International Preliminary Examining Authority;
(iv) in the case of a mistake in a document not referred to in items (i) to (iii) submitted to the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau, other than a mistake in the abstract or in an amendment under Article 19—by that Office, Authority or Bureau, as the case may be.
(c) The competent authority shall authorize the rectification under this Rule of a mistake if, and only if, it is obvious to the competent authority that, as at the applicable date under paragraph (f), something else was intended than what appears in the document concerned and that nothing else could have been intended than the proposed rectification.
(d) In the case of a mistake in the description, claims or drawings or in a correction or amendment thereof, the competent authority shall, for the purposes of paragraph (c), only take into account the contents of the description, claims and drawings and, where applicable, the correction or amendment concerned.
(e) In the case of a mistake in the request part of the international application or a correction thereof, or in a document referred to in paragraph (b)(iv), the competent authority shall, for the purposes of paragraph (c), only take into account the contents of the international application itself and, where applicable, the correction concerned, or the document referred to in paragraph (b)(iv), together with any other document submitted with the request, correction or document, as the case may be, any priority document in respect of the international application that is available to the authority in accordance with the Administrative Instructions, and any other document contained in the authority’s international application file at the applicable date under paragraph (f).
(f) The applicable date for the purposes of paragraphs (c) and (e) shall be:
(i) in the case of a mistake in a part of the international application as filed—the international filing date;
(ii) in the case of a mistake in a document other than the international application as filed, including a mistake in a correction or an amendment of the international application—the date on which the document was submitted.
(g) A mistake shall not be rectifiable under this Rule if:
(i) the mistake lies in the omission of one or more entire elements of the international application referred to in Article 3(2) or one or more entire sheets of the international application;
(ii) the mistake is in the abstract;
(iii) the mistake is in an amendment under Article 19, unless the International Preliminary Examining Authority is competent to authorize the rectification of such mistake under paragraph (b)(iii); or
(iv) the mistake is in a priority claim or in a notice correcting or adding a priority claim under
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Rule 26 bis.1(a), where the rectification of the mistake would cause a change in the priority date;
provided that this paragraph shall not affect the operation of Rules 20.4, 20.5, 26 bis and 38.3.
(h) Where the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau discovers what appears to be a rectifiable obvious mistake in the international application or another document, it may invite the applicant to request rectification under this Rule.
91.2 Requests for Rectification
A request for rectification under Rule 91.1 shall be submitted to the competent authority within 26 months from the priority date. It shall specify the mistake to be rectified and the proposed rectification, and may, at the option of the applicant, contain a brief explanation. Rule 26.4 shall apply mutatis mutandis as to the manner in which the proposed rectification shall be indicated.
91.3 Authorization and Effect of Rectifications
(a) The competent authority shall promptly decide whether to authorize or refuse to authorize a rectification under Rule 91.1 and shall promptly notify the applicant and the International Bureau of the authorization or refusal and, in the case of refusal, of the reasons therefor. The International Bureau shall proceed as provided for in the Administrative Instructions, including, as required, notifying the receiving Office, the International Searching Authority, the International Preliminary Examining Authority and the designated and elected Offices of the authorization or refusal.
(b) Where the rectification of an obvious mistake has been authorized under Rule 91.1, the document concerned shall be rectified in accordance with the Administrative Instructions.
(c) Where the rectification of an obvious mistake has been authorized, it shall be effective:
(i) in the case of a mistake in the international application as filed, from the international filing date;
(ii) in the case of a mistake in a document other than the international application as filed, including a mistake in a correction or an amendment of the international application, from the date on which that document was submitted.
(d) Where the competent authority refuses to authorize a rectification under Rule 91.1, the International Bureau shall, upon request submitted to it by the applicant within two months from the date of the refusal, and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, publish the request for rectification, the reasons for refusal by the authority and any further brief comments that may be submitted by the applicant, if possible together with the international application. A copy of the request, reasons and comments (if any) shall if possible be included in the communication under Article 20 where the international application is not published by virtue of Article 64(3).
(e) The rectification of an obvious mistake need not be taken into account by any designated Office in which the processing or examination of the international application has already started prior to the date on which that Office is notified under Rule 91.3(a) of the authorization of the rectification by the competent authority.
(f) A designated Office may disregard a rectification that was authorized under Rule 91.1 only if it finds that it would not have authorized the rectification under Rule 91.1 if it had been the competent authority, provided that no designated Office shall disregard any rectification that was authorized under Rule 91.1 without giving the applicant the opportunity to make observations, within a time limit which shall be reasonable under the circumstances, on the Office’s intention to disregard the rectification.
Rule 92
Correspondence
92.1 Need for Letter and for Signature
(a) Any paper submitted by the applicant in the course of the international procedure provided for in the Treaty and these Regulations, other than the international application itself, shall, if not itself in the form of a letter, be accompanied by a letter
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identifying the international application to which it relates. The letter shall be signed by the applicant.
(b) If the requirements provided for in paragraph (a) are not complied with, the applicant shall be informed as to the non-compliance and invited to remedy the omission within a time limit fixed in the invitation. The time limit so fixed shall be reasonable in the circumstances; even where the time limit so fixed expires later than the time limit applying to the furnishing of the paper (or even if the latter time limit has already expired), it shall not be less than 10 days and not more than one month from the mailing of the invitation. If the omission is remedied within the time limit fixed in the invitation, the omission shall be disregarded; otherwise, the applicant shall be informed that the paper has been disregarded.
(c) Where non-compliance with the requirements provided for in paragraph (a) has been overlooked and the paper taken into account in the international procedure, the non-compliance shall be disregarded.
92.2 Languages
(a) Subject to Rules 55.1 and 55.3 and to paragraph (b) of this Rule, any letter or document submitted by the applicant to the International Searching Authority or the International Preliminary Examining Authority shall be in the same language as the international application to which it relates. However, where a translation of the international application has been transmitted under Rule 23.1(b) or furnished under Rule 55.2, the language of such translation shall be used.
(b) Any letter from the applicant to the International SearchingAuthority or the International Preliminary Examining Authority may be in a language other than that of the international application, provided the said Authority authorizes the use of such language.
(c) [Deleted]
(d) Any letter from the applicant to the International Bureau shall be in English or French.
(e) Any letter or notification from the International Bureau to the applicant or to any national Office shall be in English or French.
92.3 Mailings by National Offices and Intergovernmental Organizations
Any document or letter emanating from or transmitted by a national Office or an intergovernmental organization and constituting an event from the date of which any time limit under the Treaty or these Regulations commences to run shall be sent by air mail, provided that surface mail may be used instead of air mail in cases where surface mail normally arrives at its destination within two days from mailing or where air mail service is not available.
92.4 Use of Telegraph, Teleprinter, Facsimile Machine, Etc.
(a) A document making up the international application, and any later document or correspondence relating thereto, may, notwithstanding the provisions of Rules 11.14 and 92.1(a), but subject to paragraph (h), be transmitted, to the extent feasible, by telegraph, teleprinter, facsimile machine or other like means of communication resulting in the filing of a printed or written document.
(b) A signature appearing on a document transmitted by facsimile machine shall be recognized for the purposes of the Treaty and these Regulations as a proper signature.
(c) Where the applicant has attempted to transmit a document by any of the means referred to in paragraph (a) but part or all of the received document is illegible or part of the document is not received, the document shall be treated as not having been received to the extent that the received document is illegible or that the attempted transmission failed. The national Office or intergovernmental organization shall promptly notify the applicant accordingly.
(d) Any national Office or intergovernmental organization may require that the original of any document transmitted by any of the means referred to in paragraph (a) and an accompanying letter identifying that earlier transmission be furnished within 14 days from the date of the transmission,
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provided that such requirement has been notified to the International Bureau and the International Bureau has published information thereon in the Gazette. The notification shall specify whether such requirement concerns all or only certain kinds of documents.
(e) Where the applicant fails to furnish the original of a document as required under paragraph (d), the national Office or intergovernmental organization concerned may, depending on the kind of document transmitted and having regard to Rules 11 and 26.3,
(i) waive the requirement under paragraph (d), or
(ii) invite the applicant to furnish, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation, the original of the document transmitted, provided that, where the document transmitted contains defects, or shows that the original contains defects, in respect of which the national Office or intergovernmental organization may issue an invitation to correct, that Office or organization may issue such an invitation in addition to, or instead of, proceeding under item (i) or (ii).
(f) Where the furnishing of the original of a document is not required under paragraph (d) but the national Office or intergovernmental organization considers it necessary to receive the original of the said document, it may issue an invitation as provided for under paragraph (e)(ii).
(g) If the applicant fails to comply with an invitation under paragraph (e)(ii) or (f):
(i) where the document concerned is the international application, the latter shall be considered withdrawn and the receiving Office shall so declare;
(ii) where the document concerned is a document subsequent to the international application, the document shall be considered as not having been submitted.
(h) No national Office or intergovernmental organization shall be obliged to receive any document submitted by a means referred to in paragraph (a) unless it has notified the International Bureau that it is prepared to receive such a document by that means and the International Bureau has published information thereon in the Gazette.
Rule 92bis
Recording of Changes in Certain Indications in the Request or the Demand
92 bis.1 Recording of Changes by the International Bureau
(a) The International Bureau shall, on the request of the applicant or the receiving Office, record changes in the following indications appearing in the request or demand:
(i) person, name, residence, nationality, or address of the applicant,
(ii) person, name, or address of the agent, the common representative, or the inventor.
(b) The International Bureau shall not record the requested change if the request for recording is received by it after the expiration of 30 months from the priority date.
Rule 93
Keeping of Records and Files
93.1 The Receiving Office
Each receiving Office shall keep the records relating to each international application or purported international application, including the home copy, for at least 10 years from the international filing date or, where no international filing date is accorded, from the date of receipt.
93.2 The International Bureau
(a) The International Bureau shall keep the file, including the record copy, of any international application for at least 30 years from the date of receipt of the record copy.
(b) The basic records of the International Bureau shall be kept indefinitely.
93.3 The International Searching and Preliminary Examining Authorities
Each International Searching Authority and each International Preliminary Examining Authority shall
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keep the file of each international application it receives for at least 10 years from the international filing date.
93.4 Reproductions
For the purposes of this Rule, records, copies and files may be kept as photographic, electronic or other reproductions, provided that the reproductions are such that the obligations to keep records, copies and files under Rules 93.1 to 93.3 are met.
Rule 93bis
Manner of Communication of Documents
93 bis.1 Communication on Request; Communication via Digital Library
(a) Where the Treaty, these Regulations or the Administrative Instructions provide for the communication, notification or transmittal (“communication”) of an international application, notification, communication, correspondence or other document (“document”) by the International Bureau to any designated or elected Office, such communication shall be effected only upon request by the Office concerned and at the time specified by that Office. Such request may be made in relation to individually specified documents or a specified class or classes of documents.
(b) A communication under paragraph (a) shall, where so agreed by the International Bureau and the designated or elected Office concerned, be considered to be effected at the time when the International Bureau makes the document available to that Office in electronic form in a digital library, in accordance with the Administrative Instructions, from which that Office is entitled to retrieve that document.
Rule 94
Access to Files
94.1 Access to the File Held by the International Bureau
(a) At the request of the applicant or any person authorized by the applicant, the International Bureau
shall furnish, subject to reimbursement of the cost of the service, copies of any document contained in its file.
(b) The International Bureau shall, at the request of any person but not before the international publication of the international application and subject to Article 38, furnish, subject to the reimbursement of the cost of the service, copies of any document contained in its file.
(c) The International Bureau shall, if so requested by an elected Office, furnish copies of the international preliminary examination report under paragraph (b) on behalf of that Office. The International Bureau shall promptly publish details of any such request in the Gazette.
94.2 Access to the File Held by the International Preliminary Examining Authority
At the request of the applicant or any person authorized by the applicant, or, once the international preliminary examination report has been established, of any elected Office, the International Preliminary Examining Authority shall furnish, subject to reimbursement of the cost of the service, copies of any document contained in its file.
94.3 Access to the File Held by the Elected Office
If the national law applicable by any elected Office allows access by third parties to the file of a national application, that Office may allow access to any documents relating to the international application, including any document relating to the international preliminary examination, contained in its file, to the same extent as provided by the national law for access to the file of a national application, but not before the international publication of the international application. The furnishing of copies of documents may be subject to reimbursement of the cost of the service.
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Rule 95
Availability of Translations
95.1 Furnishing of Copies of Translations
(a) At the request of the International Bureau, any designated or elected Office shall provide it with a copy of the translation of the international application furnished by the applicant to that Office.
(b) The International Bureau may, upon request and subject to reimbursement of the cost, furnish to any person copies of the translations received under paragraph (a).
Rule 96
The Schedule of Fees
96.1 Schedule of Fees Annexed to Regulations
The amounts of the fees referred to in Rules 15, 45 bis.2 and 57 shall be expressed in Swiss currency. They shall be specified in the Schedule of Fees which is annexed to these Regulations and forms an integral part thereof.
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SCHEDULE OF FEES
(applicable to any international application received by the receiving Office on or after July 1, 2015)
AmountsFees 1,330 Swiss francs plus 15 Swiss francs for each sheet of the international application in excess of 30 sheets
International filing fee: (Rule 15.2)
1.
200 Swiss francsSupplementary search handling fee: (Rule 45 bis.2)
2.
200 Swiss francsHandling Fee: (Rule 57.2)
3.
Reductions 4. The international filing fee is reduced by the following amount if the international application is, as provided for in the Administrative Instructions, filed:
in electronic form, the request not being in character coded format: 100 Swiss francs(a) in electronic form, the request being in character coded format: 200 Swiss francs(b) in electronic form, the request, description, claims and abstract being in character coded format: 300 Swiss francs
(c)
5. The international filing fee under item 1 (where applicable, as reduced under item 4), the supplementary search handling fee under item 2 and the handling fee under item 3 are reduced by 90% if the international application is filed by:
an applicant who is a natural person and who is a national of and resides in a State that is listed as being a State whose per capita gross domestic product is below US$25,000 (according to the most recent
(a)
10-year average per capita gross domestic product figures at constant 2005 US$ values published by the United Nations), and whose nationals and residents who are natural persons have filed less than 10 international applications per year (per million population) or less than 50 international applications per year (in absolute numbers) according to the most recent five-year average yearly filing figures published by the International Bureau; or an applicant, whether a natural person or not, who is a national of and resides in a State that is listed as being classified by the United Nations as a least developed country;
(b)
provided that, if there are several applicants, each must satisfy the criteria set out in either sub-item (a) or (b). The
lists of States referred to in sub-items (a) and (b) 1 shall be updated by the Director General at least every five years according to directives given by the Assembly. The criteria set out in sub-items (a) and (b) shall be reviewed by the Assembly at least every five years.
_______________________
1 Editor’s Note: The first lists of States were published in the Gazette of February 12, 2015, page 32 (see www.wipo.int/pct/en/official_notices/index.html).
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PCT INDEX
LEGEND
MeaningAcronym/Term Patent Cooperation Treaty ArticleArt. Patent Cooperation Treaty Administrative InstructionA.I. U.S. Code of Federal RegulationsCFR Designated OfficeDO Elected OfficeEO Home Copy of International ApplicationHC International ApplicationIA International BureauIB International Preliminary ExaminationIPE International Preliminary Examining AuthorityIPEA International Preliminary Examination ReportIPER International PublicationIpub International SearchIS International Searching AuthorityISA International Search ReportISR Patent Cooperation TreatyPCT Priority Date of Earlier Filed National ApplicationPD Record Copy of International ApplicationRC Receiving OfficeRO Patent Cooperation Treaty RuleRule Search Copy of International ApplicationSC United States CodeU.S.C. United States Patent and Trademark OfficeUSPTO
A
Abandonment of IA as to USPTO ........................... .................................................... 37 CFR 1.495(h) Abbreviated expressions used in IA
Meaning of .............. A.I. 101 37 CFR 1.401 Codes/Indications ............................ A.I. 115
Abstract ...................................................... Rule 8 Amendment by ISA in response to applicant’s comments ........................................ A.I. 515
Missing or defective .......................... Rule 38 U.S. Rule regarding ................ 37 CFR 1.438
Absence of quorum in assembly, voting ... Rule 85 Access to files .................. Rule 94 37 CFR 1.14 Additional (new) matter in request, deletion of ....... ................................................................... A.I. 303 Addresses of applicants, inventors and agents ........ ................................................................... Rule 4.4
Administrative instructions - scope, source, entry into force ........................................................ Rule 89
Administrative provisions of the PCT Assembly ............................................ Art. 53 Committee for technical cooperation .. Art. 56 Executive committee .......................... Art. 54 Finances .............................................. Art. 57 International Bureau .......................... Art. 55 Regulations ........................................ Art. 58
Agent See also Common representative See also Representative “Applicant” encompasses the term “agent” in certain situations ............................ Rule 2.1
Appointment of .............................. Rule 90.1 Changes, recording of by IB .... Rule 92 bis.1 In general ............ Rule 2.2, Rule 4.7, Rule 90 Indications concerning,
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In demand ................ Rule 53.2 , Rule 53.5 In request ............ Art. 4, Rule 4.1, Rule 4.7
National law requirements ................................ .................................... Art. 27, Rule 51 bis.1b Notice of change of agent sent to IB ................. ............................................................. A.I. 328 Notice of change of agent sent from IB to RO, ISA and IPEA ................................ A.I. 425
Notice of change of agent sent from ISA to IB. ............................................................. A.I. 512 Notice of change of agent sent from IPEA to IB ............................................................. A.I. 608 Right of agent to practice before international authorities .......................................... Art. 49
Amendment Copy of amendment under Article 19 for IPEA ............................................................ Rule 62 Copy of amendment under Article 19 sent (communicated) to DO ....................................
........................................ Art. 20, Rule 47.1(b) Definition of, before IPEA ............ Rule 66.5 Form of, before IPEA .................... Rule 66.8 Language of amendments to the IA .................. .......................................................... Rule 12.2 Processing of Article 19 amendment by IB ...... ............................................................. A.I. 417 Processing of by IPEA ...................... A.I. 602 Of abstract by ISA ............................ A.I. 515 Of claims before DO ............ Art. 28, Rule 52 Of claims before IB .............. Art. 19, Rule 46 Of claims before IPEA ...................................... ................... Art. 34 Rule 66.3 37 CFR 1.485 Of claims before EO ............ Art. 41, Rule 78 Of claims Numbering and identification in amendment ...................................... A.I. 205
Of description before IPEA .............................. ................... Art. 34 Rule 66.3 37 CFR 1.485 Of description before DO .... Art. 28, Rule 52 Of description before EO .... Art. 41, Rule 78 Of drawings before DO ........ Art. 28, Rule 52 Of drawing before EO .......... Art. 41, Rule 78 Of drawing before IPEA ................................... ..................................... Art. 34 37 CFR 1.485 Of certain PCT provisions .................. Art. 61 See also Revision of PCT Of PCT regulations .............. Rule 88, Art. 58 Sheet(s) later submitted for incorporation by reference .......................................... A.I. 309
Applicant Changes before RO/US .......... 37 CFR 1.472
Different applicants for different designated states .......................... Rule 4.5(d), A.I. 203
Entitled to make a demand ................................ ........................................... Art. 31(2), Rule 54 First named used to identify IA ........ A.I. 105 In general .......................................................... .............. Art. 9, Rule 2.1 , Rule 4.5 , Rule 18 Recording by IB of changes regarding applicant ....................................................... Rule 92 bis U.S. regulations regarding ...... 37 CFR 1.421
Application - See International application Assembly of PCT contracting states .. ...... Art. 53
Executive committee established by .... Art. 54 Assignment
Of IA, possible requirement to furnish to a national Office ........................ Rule 51 bis.1
Recording by USPTO if U.S. is a designated country in the IA .................... 37 CFR 3.21
Authorized officer ................................................... ............... Rule 43.8, Rule 70.14, A.I. 514, A.I. 612 Availability of translation of IA to IB ...... Rule 95
B
Biological material invention, ............ Rule 13 bis Deposited, Indications as to .............. A.I. 209
See also Nucleotide or amino acid sequence listing Sequence listing
C
Calendar (Gregorian to express dates) .... Rule 79 See also Dates
Changes in person, name or address of applicants and inventors (international phase) .... 37 CFR 1.472
National stage inventorship ............................... ......................... 37 CFR 1.41(e) 37 CFR 1.48
Check list (In request) Re documents filed with IA .............. Rule 3.3 Necessary annotations by RO .......... A.I. 313
Citations (proper) of documents in the ISR ............. ................................................................... A.I. 503 Claims
Amendment before DO ........ Art. 28, Rule 52 Amendment before EO ........ Art. 41, Rule 78 Amendment before IB .......... Art. 19, Rule 46 Amendment before IPEA .................................. ........................... Art. 34, Rule 66.4, Rule 66.8 In general .................................. Art. 6, Rule 6 Numbering and identification upon amendment ............................................................. A.I. 205 U.S. regulation regarding ........ 37 CFR 1.436
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Classification of IA subject matter .......... A.I. 504 Committee established by assembly of states ......... ..................................................................... Art. 56 Common representative .... Rule 2.2 bis, Rule 90.2
Change of .......................................... A.I. 106 Notice of change sent from RO to IB and ISA . ............................................................. A.I. 328 Notice of change sent from IB to RO, ISA, & IPEA ................................................ A.I. 425
Notice of change sent by ISA to IB ... A.I. 512 Notice of change sent by IPEA to IB ................ ............................................................. A.I. 608
Communication From IB, of IA, ISR, or any Article 17(2)(a) determination and indication that no search will be established, to each DO .. Art. 20, Rule 47
Communication transmitted electronically .............. .............. Rule 89 bis , A.I. 701 - 714, A.I. Annex F Competent IPEA ...................................... Rule 59 Competent ISA ........... ............... Art. 16, Rule 35 Competent RO .................... Art. 11(1)(i), Rule 19 Confidential nature
Of IA .................................................. Art. 30 Of IPE ................................................ Art. 38
Confirmation copy of facsimile transmission (N/A in U.S.) ................ .................... Rule 92.4, A.I. 331
Continuation or continuation-in-part, IA treated as in any designated state .. ...... Rule 4.11, 49 bis.1(d)
Copies In electronic form
Of documents filed on paper .... Rule 89 ter Of international application in pre-conversion format .......................................... A.I. 706
Making home copy and search copy from original IA by RO ............................ Art. 12, Rule 21 Identifying RC, SC, and HC by RO .............. ...................................... A.I. 305, A.I. 804(d)
Correction of request by RO ex officio .. A.I. 327 Corrections and amendments during international processing. ............. ................. Rule 26, Rule 46
Correspondence For applicant, to whom sent .............. A.I. 108 In general .......................................... Rule 92
D
Dates (using Gregorian calendar) ............ Rule 79 Format of, in IA ................................ A.I. 110
Deadlines (See also Time limit) Applicable to Applicants
(1) Before the RO
After which applicant can request RO to certify copy of IA as identical with IA as filed and applicant can send certified copy to IB (14 months from PD) ... Rule 22.1
To correct Article 14(1) defects in IA ...... ............................................ Art. 14(1)(b) Extensions of time available ... Rule 26.2 To correct defects under Article 11 to obtain an international filing date ......................
.................................. Art. 11(2), Rule 20 To provide missing drawings (two months) ...... Art. 14(2) Rule 20.7 37 CFR 1.437 To pay deficiencies in transmittal fee ( Rule 14 ), international filing fee ( Rule 15.1 ), search fee ( Rule 16 ), late payment fee ( Rule 16 bis.2 ) ........................................
... Art. 14(3) Rule 16 bis 37 CFR 1.431 Extension of time - One month set by RO when RO finds deficiency ......................
............................................ Rule 16 bis.1 To pay deficiencies when RO finds discrepancies before fees are due ...........
.................................................... A.I. 304 (2) Before the ISA
To amend claims under Article 19 before IB ........................................ Rule 46.1
To submit priority document .................... ................................................. Rule 17.1 Where lack of unity of invention is held .. ......... Art. 17(3) Rule 40 37 CFR 1.476
(3) Before the IPEA To amend claims, description, or drawings under Article 34 before the IPE ..............
........................... Rule 66 37 CFR 1.485 To amend claims, description, or drawings under Article 34 before the IPEA ...........
.......................... Rule 66.1, Rule 66.4 bis To correct defects in demand ................... ................................................. Rule 60.1 To file a demand .................. Rule 54 bis To provide translation of priority document upon invitation by IPEA ...... Rule 66.7
To respond (including Article 34 amendments) to a written opinion within time set therein .................... Rule 66.2
Time for reply set in written opinion is non-extendable ........ 37 CFR 1.484(d)
Where lack of unity of invention is held by IPEA .......................................................
...... Art. 34(3) Rule 68.2 37 CFR 1.488
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When filing a demand for IPE, must pay handling fee ............................ Rule 57
When seeking IPE, preliminary examination fee ...................................... Rule 58 bis
(4) Before the DO/EO To enter the National Stage under 35 U.S.C. 371 .............................. 37 CFR 1.495
To amend claims description, or drawing under Article 28 before the DO ..............
.................................................... Rule 52 To amend claims, description, or drawings before EO (varies) .................. Rule 78
Applicable to the RO For RO to check certain elements of IA ......... ........................................................ Rule 26.1 For RO to hold IA withdrawn for lack of compliance with Article 11(1), items (i) to (iii) after IA has already been accorded a filing date .............................. Art. 14(4), Rule 30
For RO to transmit record copy to IB ............. ........................................................... Rule 22 For RO to transmit search copy to ISA .......... ........................................................... Rule 23
Applicable to the IB For IB to notify applicant, RO, ISA and DO of fact and date receipt of record copy of IA ....
........................................................... Rule 24 International publication of IA promptly after expiration of 18 months from PD, unless earlier publication requested under Articles 21(2)(b) and 64(3)(c)(i) .... Art. 21, Rule 48
Applicable to the ISA For ISA to establish the ISR .......... Rule 42
Applicable to the IPEA For IPEA to establish the IPER ... Rule 69.2 For IPEA to start IPE .................. Rule 69.1 IPEA shall promptly notify applicant of receipt of the demand ............................ Rule 61.1
Deceased inventor (U.S. Rule) ........ 37 CFR 1.43 Declarations relating to national requirements ........ ..... Rule 4.17, Rule 51 bis.1(a), A.I. 211 - A.I. 215
Correction of or addition of .............................. ...................... Rule 26 ter.1, A.I. 216, A.I. 317
Ex officio corrections are not to be made by RO .................................. A.I. 327(d) by IB .................................... A.I. 419(c)
Invitation for, by IB or RO ............................. .............................................. Rule 26 ter.2(a) Processing by IB ............................................. ............................... Rule 26 ter.2(b), A.I. 419
Entitlement to apply for a patent ....................... ...... Rule 4.17(ii), Rule 51 bis.1(a)(ii), A.I. 212 Entitlement to claim priority ............................. .... Rule 4.17(iii), Rule 51 bis.1(a)(iii), A.I. 213 Exceptions to lack of novelty ........................... ...... Rule 4.17(v), Rule 51 bis.1(a)(v), A.I. 215 Identity of inventor ........................................... ........ Rule 4.17(i), Rule 51 bis.1(a)(i), A.I. 211 Inventorship ....................................................... .... Rule 4.17(iv), Rule 51 bis.1(a)(iv), A.I. 214 Non-prejudicial disclosures ............................. ...... Rule 4.17(v), Rule 51 bis.1(a)(v), A.I. 215 Processing by IB ...... Rule 26 ter.2, A.I. 419
Defects Correction
Of indications re applicant’s residence or nationality .................................... A.I. 329
Of obvious defects, by RO ............ A.I. 325 Of request, ex officio, by RO ........ A.I. 327 Processing by IB ............................ A.I. 413
IA held withdrawn because of failure to correct certain defects .............................. Rule 29.1
In abstract .......................................... Rule 38 In certain original documents submitted to national Office .............................. Rule 92.4
In demand ...................................... Rule 60.1 In drawings furnished to DO under Rule 49.5, possibly permitting correction by invitation ...
...................................................... Rule 49.5(g) In power of attorney - consequences ................. ...................................................... Rule 90.4(c) In the title .......................................... Rule 37 Invitation to correct Article 14(1)(b) defects .... ..................................................... Rule 26.3 bis Invitation to correct Article 3(4)(i) defects ....... ..................................................... Rule 26.3 ter Noted by IB ...................................... Rule 28
Definition of PCT terms .... Art. 2 37 CFR 1.401 Delays in meeting time limits, excuse of ................. .......................................... Rule 82 37 CFR 1.468 Demand for international preliminary examination (IPE)
Applicant entitled to make demand .... Rule 54 Copy sent by IPEA to IB ................ Rule 61.1 Defects in ........................................ Rule 60.1 Evidence of right to file demand ...... A.I. 614 Filed with other than a competent IPEA, treatment of .......................................................... 59.3
In general .............................. Art. 31, Rule 53 Not considered to have been made: Notification by IB to EOs .................................... A.I. 418
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Notice sent by IPEA re filing after 19 months from PD .......................................... A.I. 601
Publication of notice of demand .... Rule 61.4 Recording by IB of changes: ...... Rule 92 bis
Notifications regarding this sent by IB ........... .......................................................... A.I. 422
Time limit for making .................. Rule 54 bis U.S. regulation regarding ........ 37 CFR 1.480
Deposited microorganism Indications on separate sheet ............................ ....................................... Rule 13 bis , A.I. 209
Description Amendment before DO ........ Art. 28, Rule 52 Amendment before EO ........ Art. 41, Rule 78 Amendment before IPEA .................. Art. 34 Headings for parts of ........................ A.I. 204 In general .................................. Art. 5, Rule 5 Of nucleotide/amino acid sequence .................. ..................................... Rule 5.2, A.I. Annex C U.S. regulation regarding ........ 37 CFR 1.435
Design - not mentioned as subject matter for IA ..... ................................................................... Art. 2(i) Designated Office (DO)
Amendment of claims, description, and drawings before DO .......................... Art. 28, Rule 52
Communication of IA, ISR, or declaration under Article 17(2)(a) .................. Art. 20, Rule 47
Not accepting sequence listings in electronic form ................................................ Rule 13 ter.3
Notification by DO to IB of number of IAs that did not enter the national stage timely ............
............................................................. A.I. 112 Opportunity to correct IA before DO .. Art. 26 Review by .......................................... Art. 25 U.S. regulation regarding ........ 37 CFR 1.414
Designated states Possible loss of effect in .................... Art. 24 Withdrawal of/held withdrawn .......................... ......................... Art. 24, Rule 29, Rule 90 bis.2
Designation of States Cancellation, ex officio, by IB ........ A.I. 423 Cancellation of designations of noncontracting States by RO, ex officio ................ A.I. 318
U.S. regulation regarding ........ 37 CFR 1.432 Diagrams, considered as drawings .......... Rule 7.1 Disputes ........................ ............................ Art. 59 Docket reference (applicant’s IA file reference) ..... ................................................................... A.I. 109 Documents cited in ISR ........... ............... A.I. 503 Documents filed with IA
Manner of marking necessary annotations in checklist sent to IB by RO with RC of IA .......
............................................................. A.I. 313 Drawing(s)
Amendment of, before DO .... Art. 28, Rule 52 Amendment of, before EO .... Art. 41, Rule 78 Amendment of, before IPEA .............. Art. 34 Flowsheets and diagrams considered as ............ ............................................................ Rule 7.1 In general .................................. Art. 7, Rule 7 Missing - RO procedure concerning ................. ........................................... Rule 20.5, A.I. 310 Time set to file where not necessary to understanding of invention ............ Rule 7.2
Referred to, but not included in IA ................... .......................................................... Art. 14(2) U.S. regulation regarding ........ 37 CFR 1.437
E
Elected Office (EO) Notification to IB of number of applications filed after national stage deadline ............ A.I. 112
U.S. as .................................... 37 CFR 1.414 Election(s)
Cancellation of ex officio by IB ... A.I. 423(b) Cancellation of ex officio by IPEA .................. ............................................................ A.I. 606
Errors By RO or IB, rectification of ........ Rule 82 ter
Ex Officio correction of request by RO ... A.I. 327 Expenses of delegations ........... ............... Rule 84 Expressions and language, not to be used ... Rule 9
See also Language prohibited Correction of .................................... A.I. 501
Extension of time Before IPEA ................................ Rule 58 bis to pay international filing fee, search fee, and transmittal fee - under Rules 14, 15, and 16 .......................................... Rule 16 bis
F
Fee(s) Additional fees per invention where lack of unity is found by IPEA/US ......................................................... ...... Art. 34(3) Rule 68 37 CFR 1.482(a)(2) ISA/US ........................................................... ...... Art. 17(3) Rule 40 37 CFR 1.445(a)(3)
Application of money received by RO in certain cases ................................................ A.I. 321
Associated with demand
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Handling fee ................................................... ......... Rule 57, Rule 96.1 37 CFR 1.482(b)
Late payment fees .......... Rule 58 bis.2 Time limit for payment ........................... .......................... Rule 57.3, Rule 58 bis.1
Preliminary examination fee .......................... ............................. Rule 58 37 CFR 1.482(a)
Late payment fees .......... Rule 58 bis.2 Time limit for payment ........................... ..................... Rule 58.1(b), Rule 58 bis.1
Associated with request Extension of time to pay international filing fee, search fee, and transmittal fee - under Rules 14, 15, and 16 .......................... Rule 16 bis
International filing fees .................. Rule 15 International filing fee ............................. ................................... Rule 15, Rule 96.1
PCT search fee ................................ Rule 16 U.S. regulation regarding. ........................ ..................................... 37 CFR 1.445(b)
Transmittal fee ................................ Rule 14 U.S. rule ................ 37 CFR 1.445(a)(1)
Invitation by RO to pay before date due ........... ............................................................. A.I. 304 Invitation by RO to request search fee refund. . ............................................................. A.I. 322 Invitation to pay fees ........................ A.I. 320 Invitation to request refund of fees before IPEA ............................................................. A.I. 613 Lack of payment of ............................ Rule 27 Late payment fee re international filing fee, search fee, and transmittal fee - under Rules 14, 15, and 16 ............................................ Rule 16 bis.2
National stage fee to DO .................... Art. 22 U.S. statute regarding .......... 35 U.S.C. 376 U.S. regulation regarding .... 37 CFR 1.492
National stage fee to EO .................... Art. 39 U.S. statute regarding .......... 35 U.S.C. 376 U.S. regulation regarding .... 37 CFR 1.492
Preliminary examination fee .............. Rule 58 Refund of IA filing and processing fees ........... .................. Rule 15.4, Rule 16.2, Rule 40.2(c)
U.S. regulation regarding .... 37 CFR 1.446 Schedule of fees ................................ Rule 96 Special fees for publication, payable to the IB . ............................................................. A.I. 113 Surcharge for filing oath or declaration later than 30 months from PD under 37 CFR 1.495(c) ..
.............................................. 37 CFR 1.492(h) Transmittal fee .................................................. ........................... Rule 14 37 CFR 1.445(a)(1)
File (IA) reference (IA docket no. of applicant) ..... ................................................................... A.I. 109
On IA sheets .............................. Rule 11.6(f) Filing date
Certificate of U.S. Postal Service Express Mail .................................. Rule 20 37 CFR 1.10
Of IA .......................... Art. 11, 35 U.S.C. 363 Finances (budget) of union of PCT states .. Art. 57 Flowsheets, considered as drawings . ..... Rule 7.1 Form(s)
Computer generated ............ A.I. 102(h) & (i) Request ............................................ Rule 3.1 Demand ...................................... Rule 53.1(a) PCT .......................................... A.I. Annex A PCT, use of ........................................ A.I. 102
G
Gazette, PCT ............................................................ .............. Rule 86 , A.I. 407, A.I. Annexes D and E
Free communication of, to ISA, IPEA, national Office .............................................. Rule 87
H
Handling fee for IPE (re demand) ........................... .................... Rule 57 Rule 96.1 37 CFR 1.482(b) Home Copy (HC) of IA, preparation of ................. ............................................... Rule 21, A.I. 305 bis
I
Identification Of copies of the IA .......................... A.I. 305 Of DO .............................................. A.I. 107 Of EO ................................................ A.I. 107 Of IA having two or more applicants ................ ............................................................. A.I. 105 Of IA file (docket reference by applicant) ........ ............................................................. A.I. 109 Of international authorities .............. A.I. 107
Incorporation by reference ...................................... .................... Rule 4.18, Rule 20.6, Rule 82 ter.1(b) Indications (two letter codes identifying countries and other entities) .................. ...................... A.I. 115
Industrial applicability ............................................. . Art.33(4),Art.34(4),Article35(2),Rule66.2,PCTRule70.6 Intellectual property protected under PCT .............. ................................................................... Art. 2(i) International application (IA)
Application no. ................................ A.I. 307 Indelibly marked on each sheet of IA ............ .......................................................... A.I. 308
Arrangement of contents/elements .... A.I. 207
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Availability of, to DO ........................ Art. 13 Certain defects in ................................ Art. 14 Checking by RO and correcting parts of before RO .................................................... Rule 26
Communicated (sent) to each DO by IB ........... ................................................ Art. 20, Rule 47 Considered withdrawn ...................................... . Rule 12.2, Rule 15.4, Rule 16.2, Rule 26.5, Rule 29 Copy of IA sent from IB to IPEA .... A.I. 420 Copy, translation and national fee to EO .......... .............................................................. Art. 39 Effect of IA designation of U.S ........................ ................................................... 35 U.S.C. 363 Filing date and effects of ...... Art. 11, Rule 20 Filing in electronic form ................................... . Rule 89 bis , A.I. 701 - A.I. 713, A.I. Annex F In general .............................................. Art. 3 Ipub number of ................................ A.I. 404 Language of ...................................... Rule 12 Numbering - three sets: one for request, another for description, and a third for drawings .........
............................................................. A.I. 207 Numbering system of IA. ................ .A.I. 307
Copy of notification of IA number and IA filing and PD(s) sent to IB .................... A.I. 324
Marking each sheet of IA with ...... A.I. 308 Physical requirements of ................................... ................................... Rule 11, 37 CFR 1.433 Publication of .................................... Rule 48 Purported IA, notification of receipt of, by RO ............................................................. A.I. 301 Requirements, U.S. regulation regarding .......... .................................................. 37 CFR 1.431 Sheet numbering (separate sets for request, description, and drawings) .............. A.I. 207
For Ipub ............................................ A.I. 410 Sheet(s)
Cancellation, substitution, addition, renumbering by RO ...................... A.I. 311
Translation of IA sent by applicant to DO ........ .............................................................. Art. 22 Transmittal of IA to IB and ISA ........ Art. 12 Transmittal of IA to IB as RO ........................... ........................................... Rule 19.4, A.I. 333 Transmittal of Priority Documents to IB .......... ............................................................. A.I. 323 Treated as continuation or continuation-in-part ..................... Rule 4.11(a)(ii), Rule 49 bis.1(d) Withdrawn IA, U.S. statute regarding ............... ................................................... 35 U.S.C. 366
International Bureau (IB)
In general ............................................ Art. 55 Patent information services provided by ........... .............................................................. Art. 50 U.S. regulation regarding ........ 37 CFR 1.415
International filing fee .............................. Rule 15 International filing date ............................ Rule 20 International preliminary examination (IPE)
Conduct of, in U.S. ................ 37 CFR 1.484 Confidential nature of ........................ Art. 38 Copy, translation and fee for, furnished to EO .. .............................................................. Art. 39 Delay to enter national stage ............................. ........................................ Art. 39(1)(a), Art. 40 Demand for ........................................ Art. 31
Withdrawal of .................................. Art. 37 In general ............................................ Art. 33 Inventive step .................. Rule 65, Art. 33(3) IPEA .................................................. Art. 32 Top-up search performed by .... Rule 66.1 ter IPER .................................... Art. 35, Rule 70
Communication of IPER ................ Rule 73 Guidelines for explanations in ...... A.I. 604 Method of identifying documents cited in ..... .......................................................... A.I. 611 Translation of .................................. Rule 72 Translation of annexes and transmittal ........... ........................................................... Rule 74
Prior art for ........................................ Rule 64 Start of, and time limit for ................ Rule 69 Transmittal, translation, and communication of IPER to applicant and IB .. Art. 36, Rule 71 Use of same file for ISA and IPEA ... A.I. 605 Written opinion by IPEA .... Art. 34 , Rule 66
Amendment of claims, description, and drawing under Article 34 in response to ......
........................................................... Art. 34 International Preliminary Examining Authority (IPEA)
Competent IPEA ................................ Rule 59 In general ............................................ Art. 32 Lack of unity determination .............. Rule 68 Minimum requirements for .............. Rule 63 Nonexaminable subject matter .......... Rule 67 Notification by IPEA of date of receipt of demand and of election to IB and applicant ................
.......................................................... Rule 61.1 Procedure before .................. Art. 34, Rule 66 U.S. regulation regarding ........ 37 CFR 1.416 U.S. statute regarding .............. 35 U.S.C. 362
International preliminary report on patentability By the IPEA ...................................... Rule 70
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By the ISA .................................. Rule 44 bis International publication
By IB of IA ....................................................... ................. Art. 21, Rule 48, A.I. 406, A.I. 805 Communication of publications to ISA, IPEA, national offices ................................ Rule 87
Effect of, in United States ...... 35 U.S.C. 374 Number ............................................ A.I. 404 Of IA, effects of .................................. Art. 29 Provisional Rights (in U.S.) .............................. .............................................. 35 U.S.C. 154(d) Publication number (WO) ................ A.I. 404
International search (IS) ............................ Art. 15 Time limit for accomplishing ............ Rule 42
International Searching Authority (ISA) .... Art. 16 Competent ........................................ Rule 35 Minimum requirements .................... Rule 36 Procedure before ................................ Art. 17 U.S. statute regarding .............. 35 U.S.C. 362 U.S. regulation regarding ........ 37 CFR 1.413
International search fee ............................ Rule 16 International search report (ISR)
Communicated (sent) from IB to DO ............... ................................................ Art. 20, Rule 47 Copy of IA provided by IB for ISA ... A.I. 420 Indication of citations of relevance in ............... ............................................................. A.I. 505 Indications of special categories of documents cited in ............................................ A.I. 507
Indication of claims to which documents are relevant ............................................ A.I. 508
In general ............................................ Art. 18 Method of identifying documents cited in ........ ............................................................. A.I. 503 Subject matter not required to be searched ....... ............................................................. Rule 39 Time limit for establishing ................ Rule 42 Transmittal of, from ISA to IB .......... Rule 44 Translation of ISR ............................ Rule 45
International-type search ......................................... ......................... Art. 15(5)(a), Rule 4.12, Rule 41.1 Inventive step .......... .............. Rule 65, Art. 33(3) Inventions
Protection available under PCT ....................... ................................................. Art. 43, Art. 44
Indications of kinds of protection ... Rule 4.9 Inventor(s)
Correction of ................................ Rule 92 bis Deceased or legally incapacitated ..................... .................................................... 37 CFR 1.43 Joint ............ 37 CFR 1.45 37 CFR 1.421(b)
L
Lack of unity of invention In IPE ................................................................ ........... Rule 68 37 CFR 1.475 37 CFR 1.488 In IS ................................................................... . Rule 40 37 CFR 1.475 37 CFR 1.476 37 CFR 1.477 In national stage ................................................ .......................... 37 CFR 1.475 37 CFR 1.499 Unity of invention in IA, in general .................. ................................ Rule 13, Rule 40, Rule 68
Language Of correspondence by applicant to IB and RO . ............................................................. A.I. 104 Of demand for IPE ............................ Rule 55 Of forms used by international authorities ........ ............................................................. A.I. 103 Of IA .......................... Art. 11(1)(ii), Rule 12
Of Ipub of IA .............................. Rule 48.3 Of IPER ............................................ Rule 72 Of ISA ............................................ Rule 43.4 Of translation of IA ...... Rule 12.3, Rule 49.2 Prohibited expressions ........................ Rule 9 Correction of .................................... A.I. 501
Later elections (elections submitted after the demand) Later submitted sheets, RO procedure ..................... .................................................... A.I. 309, A.I. 310 Loss of effect of IA in designated states .... Art. 24
(Same consequences as withdrawal of IA)
M
Mail service Irregularities in .................................. Rule 82
Microbiological inventions See Biological material inventions Nucleotide/amino acid sequence listings
Minimum documentation in ISA ............................. .................................................. Art. 15(4), Rule 34 Missing drawings, RO procedure ........................... ................................ Art. 14(2), Rule 20.5, A.I. 310 Mistakes
Rectification of obvious Authorization of by IPEA ............................... .......................................... Rule 91.1, A.I. 607 Authorization of by ISA ................................. .......................................... Rule 91.1, A.I. 511 Authorization of by RO .. Rule 91.1, A.I. 325 Processing by IB ............................................. ....................... Rule 91, A.I. 413, A.I. 413 bis
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N
National Office Right to practice before ..................................... .............................. Art. 49, Rule 83, Rule 90.1
National stage Amendment of claims, description, and drawings before DOs ........................ Art. 28, Rule 52
Before EOs .......................... Art. 41, Rule 78 Certain national requirements allowed under Article 27(1),(2),(6),(7) ...................................
.......................................... Art. 27, Rule 51 bis Copy of IA, translation and fee to DO .............. .............................................................. Art. 22 Copy of IA, translation and fee to DO .............. .............................................................. Art. 39 Express request for early entry into .................. .................... Art. 23, Art. 40, 35 U.S.C. 371(f) Protection available
As well as patent protection ............ Art. 44 Other than patent protection ............ Art. 43
Requirements ...................................... Art. 27 Results of national examination in different countries ............................................ Art. 42
United States Commencement in .............. 37 CFR 1.491 Entry into U.S., requirements ......................... ................................................ 37 CFR 1.495 Entry into U.S., time of ........ 37 CFR 1.491 Examination in .................... 37 CFR 1.496 National U.S. patent issued on IA, effect ....... ................................................ 35 U.S.C. 375
National security prescriptions ................................ ........................................ Art. 27(8), 35 U.S.C. 368
Delay or prevention of transmittal of RC to IB . ............................................................. A.I. 330
Nationality Qualifications ................................ Rule 18.2 In demand ...................................... Rule 54.1 Recording of changes to by the IB .................... ..................................................... Rule 92 bis.1
Nationality or residence of applicant, correction of .................................................... A.I. 329, A.I. 614 New (additional) matter
In request, deletion of ex officio ...... A.I. 303 Nomenclature - See also Terminology and signs .... .................................................................... Rule 10 Notification by IPEA of date of receipt of demand to IB and applicant ................ .................... Rule 61
Nucleotide and/or amino acid sequence listings ..... ...................................... Rule 13 ter , A.I. Annex C
Transmitted by RO to ISA ............ A.I. 313(c) Number and numbering of claims .......... Rule 6.1 Number of (accorded to) IA ........ ............ Rule 20 Number of copies of IA to be filed ...... Rule 11.1 Numbering of amendments ..................................... ..................... Rule 6.1, A.I. 205, A.I. 207, A.I. 311 Numbering of lines on a page of IA ...... Rule 11.8 Numbering of sheets of IA .................... Rule 11.7 Numbering of sheets for Ipub .................. A.I. 410
O
Oath or declaration in U.S. national stage application ......................................................... 37 CFR 1.497 Obvious mistakes in documents ..... ......... Rule 91
Rectification of ................ Rule 91.1, A.I. 511 Obviousness/nonobviousness .. Art. 33(3), Rule 65
See also Inventive step Opportunity to correct IA before DO ........ Art. 26
P
Patent Cooperation Treaty (PCT) Administrative provisions .......... Arts. 53 - 58 Amendment of certain provisions ...... Art. 61 Assembly of contracting states .......... Art. 53 Becoming a party to ............................ Art. 62 Committee for technical cooperation .. Art. 56 Denunciation ...................................... Art. 66 Depositary functions .......................... Art. 68 Disputes .............................................. Art. 59 Entry into force of PCT ...................... Art. 63 Executive committee of assembly ...... Art. 54
Final provisions (becoming party to treaty, entry into force of treaty, reservations, gradual application, denunciation, signature and languages, depositary functions, notifications) ........... ............... Art. 62
Finances .............................................. Art. 57 Gradual application of PCT in a state .. Art. 65 International Bureau (IB) .................... Art. 55 Notifications to states/governments re PCT issues ................................................ Art. 69
Reservations by any state re Application of PCT provisions .......................................... Art. 64
Revision of PCT ................................ Art. 60 Patent information services furnished by IB ........... ..................................................................... Art. 50 Physical requirements of IA ........ ............ Rule 11 Power of attorney
Definition ................................ Rule 3.3(a)(ii) General .......................................... Rule 90.5
Practice before international authorities Right to do so ........ Art. 49, Rule 83, Rule 90
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Preliminary examination fee .................... Rule 58 Prior art
Citation of (proper method) .............. A.I. 503 For IPE .............................................. Rule 64 Indications ........................................ A.I. 505 Of special categories of documents ... A.I. 507 Relevant to IS ................................ Rule 33.1
Priority application number ........ ............ A.I. 408 Later indication of re: undesignated State ........ ........................................ Rule 4.9(b), A.I. 319
Priority claim in IA ............. ................. Rule 4.10 Correction or addition processed by RO ........... ..................................... Rule 26 bis.2, A.I. 314 Correction or addition processed by IB ............ ..................................... Rule 26 bis.2, A.I. 402 Invitation to correct defects in ........................ Not considered to have been made .................... ....................... Rule 66.7, A.I. 302, A.I. 323(b) Notice to that effect by IB, if not by RO ........... ............................................................. A.I. 409 Restoration of right
By DO .................................... Rule 49 ter.2 By RO .............. Rule 26 bis.3, Rule 49 ter.1
U.S. regulation regarding ........ 37 CFR 1.451 Withdrawal of, by applicant ...... Rule 90 bis.3
Priority, right of (in U.S.) .............. 35 U.S.C. 365 Benefit of filing date of a prior application ...... ............................ , 37 CFR 1.55 37 CFR 1.78
Priority document ................ .................... Rule 17 Benefit of filing date of a prior application ...... ............................. 37 CFR 1.55 37 CFR 1.78 Fee for certified copy of, from USPTO ............ ........................................... 37 CFR 1.19(b)(1) In proceedings before IPEA .......... Rule 66.7 Invitation by IB to furnish ................ A.I. 421 Receipt of by IB ................................ A.I. 411 Translation and time limit to furnish to EO ...... .......................................................... Rule 76.4 Translation and time limit to furnish to IPEA ... .......................................................... Rule 66.7 Transmittal by RO to IB .................... A.I. 323 U.S. regulation regarding ........ 37 CFR 1.451
Protection available under PCT ............................... ..................................... Art. 43 , Art. 44 , Art. 45
Indications of kinds of protection in request ..... ................................................ Rule 4.11(a)(iii)
Protest against payment of additional fees re holding of lack of unity .......................................................
....................... Rule 68, Rule 40, A.I. 403, A.I. 502 Before U.S. IPEA ................ 37 CFR 1.489 Before U.S. ISA .................... 37 CFR 1.477
Publication - See International publication
Q
Quorum, absence of Voting by correspondence ................ Rule 85
R
Receipt of IA by RO ................................ Rule 20 Notification of by RO to IB .............. Rule 20 Notification of by RO to applicant .... A.I. 301
Receiving Office (RO) Competent ........................................ Rule 19 In general ............................................ Art. 10 U.S. RO .................................. 37 CFR 1.412
Record copy (RC) (originally filed IA) Definition ............................................ Art. 12 Transmittal to IB by RO .................................... .................................... Rule 22 37 CFR 1.461
Marking sheets of, by IB ................ A.I. 401 Receipt by IB .................................. Rule 24
Rectification of obvious mistakes ............ Rule 91 Authorized by IPEA ........................ A.I. 607 Authorized or not by the ISA ............ A.I. 511 Handling of, by RO .......................... A.I. 325
Refund If international search takes into account an earlier search ................................ Rule 16.3
Invitation by RO to request search fee refund ... ............................................................. A.I. 322 Invitation to request refund of fees before IPEA ............................................................. A.I. 613 Of handling fee .............................. Rule 57.6 Of international filing fee .............. Rule 15.4 Of IPE fee ...................................... Rule 58.3 Of IS fee ............................................ Rule 16
Regional patent treaties ............ ................ Art. 45 Regulations of the PCT ............ ................ Art. 58 Representation/representative
See also Common representative Appointment of .............................. Rule 90.4
Notice by IB to RO, ISA and IPEA ................ .......................................................... A.I. 425 Notice by IPEA to IB .................... A.I. 608 Notice by ISA to IB ........................ A.I. 512 Notice by RO to IB ........................ A.I. 328
Common (definition) .................. Rule 2.2 bis General power of attorney .............. Rule 90.5 Limited recognition in patent cases .................. .................................................... 37 CFR 11.9 Revocation and renunciation of representative . .......................................................... Rule 90.6
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U.S. regulation regarding ........ 37 CFR 1.455 Request (part of IA)
Contents .................................. Art. 4, Rule 4 Declaration relating to national requirements ... ............................... Rule 4.17, Rule 51 bis.1(a) Deletion of additional material ........ A.I. 303 Form .................................................... Rule 3 In general .............................................. Art. 4 Recording of changes in, by IB .... Rule 92 bis Notification of changes recorded by IB ............ ............................................................. A.I. 422 Rectification of, including limitations on ability to rectify ........................................ Rule 91.1
U.S. regulation regarding ........ 37 CFR 1.434 Residence:
Corrections to Invitation by RO ............................ A.I. 329
In demand ...................................... Rule 54.1 Qualifications .................................... Rule 18 Recording of changes to by the IB .................... ..................................................... Rule 92 bis.1
Restriction: See Lack of unity of invention See Unity of invention
Results of national examination in EO ...... Art. 42 Revival of U.S. national stage application ............... ....................................................... 37 CFR 1.137 Review of RO determinations by other international authorities re
Declaration that an IA is to be withdrawn ........ .............................................................. Art. 25
Review by USPTO ................ 35 U.S.C. 367 Designation of a state considered withdrawn ... .............................................................. Art. 25
Review by USPTO ................ 35 U.S.C. 367 Failure to accord an international filing date .... .............................................................. Art. 25
Review by USPTO ................ 35 U.S.C. 367 Review by DOs of
Declaration that an IA is withdrawn .... Art. 25 IB decided the IA is withdrawn under Article 12(3) .................................................. Art. 25
Refusal to accord filing date to IA ...... Art. 25 Revision of PCT ........................................ Art. 60
See also Amendment of PCT provisions Right to practice before international authorities .... ...................................................... Rule 83, Art. 49
S
Search - See also international search report Search Copy (SC) of IA
Preparation of by RO ........................ Rule 21 Transmittal of to IB .......................... Rule 23 Receipt of by ISA .......................... Rule 25.1 Notification of lack of transmittal of SC by IB . ............................................................. A.I. 412
Search other than IS .............. .................. Rule 41 Search, Top-up .............. .................. Rule 66.1 ter Security measures of national Office delaying or preventing transmittal of RC to IB ........ A.I. 330
U.S. statute regarding .............. 35 U.S.C. 368 Sequence listings in electronic form ........................ ......... Rule 13 ter ,A.I. 513, A.I. 610, A.I. Annex C
Considered by ISA ............................ A.I. 513 Transmittal of .................... Rule 23, A.I. 610
Sheets Deletion, addition, substitution, and renumbering of by RO .......................................... A.I. 311
Later submitted -RO handling of ...... A.I. 309 Size of IA ........................................ Rule 11.5
Signature By parties to the PCT .......................... Art. 62
Notification by director general re .... Art. 69 Defective, in IA .............................. Art.14(1)
IA lacking prescribed signature - RO procedure ...................................... A.I. 316
Definition (includes “seal”) .............. Rule 2.3 Lacking, in demand .................. Rule 60.1(d) National requirements ........................ Art. 27 Of PCT in English and French .......... Art. 67 Requirements re correspondence ...... Rule 92 Requirements re demand ................ Rule 53.8 Requirements re request ................ Rule 4.15 Requirements re withdrawals .... Rule 90 bis.5
Signs (terminology) .............. .................. Rule 10 Size of IA sheets ............... ................... Rule 11.5 Subject matter that is proper in IA .......... Rule 67 Successor states ........................................ Rule 32 Surcharge - See also Fees: Late payment fee
T
Technical Services Patent information services furnished by IB ..... .............................................................. Art. 50 Relation to other PCT provisions ...... Art. 52 Technical assistance committee .......... Art. 51
Terminology and signs ............ ................ Rule 10 Time limit
Computation of .................................. Rule 80 Delay in meeting certain .................... Art. 48 Delays due to mail service ................ Rule 82
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Excuse by the designated or elected state of delays in meeting certain time limits ..............
........................................................ Rule 82 bis Extended beyond or shortened with respect to Article 39 deadline for copy, translation, and fee filed with EO .................................. Rule 77
Extensions of, for payment of fees For amendments before DO .............. Rule 52 For amendments before EO .............. Rule 78 For amendment of claims before the IB ............ ............................................. Art. 19, Rule 46.1 For amendment of claims, description, and drawings before DO ...................... Rule 52.1
For applicant to request IB to send files to any DO pursuant to Article 25(1)(c) so DO can review adverse holding by RO or IB ...............
.......................................................... Rule 51.1 For check by RO of certain defects in the IA .... .......................................................... Rule 26.2 For communication by the IB of IPER translation and annexes to each EO) .............. Rule 73.2
For considering IA withdrawn re Article 12(3) .......................................................... Rule 22.3 For considering IA withdrawn re Article 14(4) ............................................................. Rule 30 For correcting priority claim ........ Rule 26 bis For correction by applicant of certain defects found by and invited by RO to correct ............
.......................................................... Rule 26.2 For establishing the ISR .................... Rule 42 For establishing the IPER .............. Rule 69.2 For paying national fee and furnishing translation before DO pursuant to Article 25(2)(a) so DO can review adverse holding by RO or IB ........
.......................................................... Rule 51.3 For presenting request by applicant for IB to send copies of IA to DO after receiving determination that IA is withdrawn ........................ Rule 51
For start of, and establishment of, IPE .............. ............................................................. Rule 69 For submitting priority document ...... Rule 17 For translation of priority document before EO .......................................................... Rule 76.4 For transmittal by applicant of translation of any replacement sheet referred to in Rule 70.16 that is attached to the IPER .................. Rule 74.1
In general ............................................ Art. 47 Meaning of term “Time Limit” in Article 48(2) ........................................................ Rule 82 bis Modification of time limit fixed in PCT ........... ............................................................. Rule 81
Of application processing based on PD ............ ................................. Rule 4.10 37 CFR 1.465 To furnish drawings which are not necessary for the understanding of the invention ..................
............................................. Art. 7.2, Rule 7.2 To furnish IA copy, translation, and fee to DO beyond time limit allowed by Article 22 ........
............................................................. Rule 50 To pay fees before ISA in response to a holding of lack of unity of invention ........ Rule 40.1
To request review by DO of failure to accord international filing date .................... Art. 25
Utility models .................................. Rule 6.5 Title of invention in IA
Content ............................................ Rule 4.3 Missing or defective .......................... Rule 37
Top-up search ............... ................... Rule 66.1 ter Translation
Availability of translations ................ Rule 95 By applicant, IS based on .................. Art. 15 Defective/incorrect of IA .................... Art. 46 For purpose of international search ................... .......................................................... Rule 12.3 Of certain words not in Latin alphabet, in request .......................................................... Rule 4.16 Of IA, availability to IB .................... Rule 95 Of IA, transmittal by IB to DOs ........ Art. 22 Of IA, transmittal by IB to EOs .......... Art. 39 Of IA, requirement for verified or certified ...... ................................................ Rule 51 bis.1(d) Of IPER ................................ Art. 36, Rule 72 Of IPER annexes, and transmittal of, to EOs by applicant .......................................... Rule 74
Of Ipub, affecting protection of rights in any designated state ................................ Art. 29
Of ISR .................................. Art. 18, Rule 45 Of priority document before EO ...... Rule 76 Of priority document before IPEA .. Rule 66.7 Transmitted to ISA ............................ Rule 23
Transmittal Fee .................................................... Rule 14 In electronic form .............................................. . Rule 89 bis , Rule 89 ter , A.I. 701 - 703, A.I. Annex F
Sequence Listings and/or tables relating thereto ............................. Rule 13 ter , A.I. Annex C
Of RC to IB by RO ............................................ .................................. Rule 22 37 CFR 1.461 Of SC to ISA by RO .......................... Rule 23
Delayed .......................................... A.I. 306 Treaty - See also Patent Cooperation Treaty
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U
Unity of invention Compliance with Rule 13 .............. A.I. 206 During U.S. national stage .... 37 CFR 1.499 Guidelines ................................ A.I. Annex B In general ................ Rule 13 37 CFR 1.475 Lack of unity before IPEA ................................ . Art. 34(3) Rule 68 37 CFR 1.488 37 CFR 1.489 Lack of unity before ISA .................................. . Art. 17(3) Rule 40 37 CFR 1.476 37 CFR 1.477 Transmittal of protest to pay fees for additional claimed inventions Transmittal by IB .......................... A.I. 403 Transmittal by IPEA ...................... A.I. 603 Transmittal by ISA ........................ A.I. 502
W
WO - See also International publication number Withdrawals (by applicant), in general ................... .............................................. Rule 90 bis , A.I. 326
Of demand or election .. Art. 37, Rule 90 bis.4 Withdrawn
Application, U.S. statute regarding ................... .................................................. 35 U.S.C. 366 Determination by RO re IA .............. Rule 29
Decision by RO not to hold withdrawn after notifying applicant of intent to so hold .........
.......................................................... A.I. 312 Notification to IPEA by IB ............ A.I. 414 Review of by DO .............. Art. 25, Rule 51
Determination by IB under Article 12(3) Review by DO .................. Art. 25, Rule 51
Written opinion by IPEA ............ Art. 34, Rule 66 Amendment of claims, description, and drawing under Article 34 in response to
Written opinion by ISA ........ Art. 34, Rule 43 bis
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Appendix AI Administrative Instructions Under the PCT
(as in force from July 1, 2015) TABLE OF CONTENTS 1
Part 1 INSTRUCTIONS RELATING TO GENERAL MATTERS
Section 101 Abbreviated Expressions and Interpretation
Section 102 Use of the Forms Section 102 bis [Deleted] Section 103 Languages of the Forms Used
by International Authorities Section 104 Language of Correspondence in
Cases Not Covered by Rule 92.2 Section 105 Identification of International
Application with Two or More Applicants
Section 106 Change of Common Representative
Section 107 Identification of International Authorities and of Designated and Elected Offices
Section 108 Correspondence Intended for the Applicant
Section 109 File Reference Section 110 Dates Section 111 Procedure in the Case of Excuse
of the Delay in Meeting Certain Time Limits under Rule 82 quater
Section 112 Ceasing of Effect under Articles 24(1)(iii) and 39(2), Review under Article 25(2) and Maintaining of Effect under Articles 24(2) and 39(3)
Section 113 Special Fees Payable to the International Bureau
Section 114 [Deleted] Section 115 Indications of States, Territories
and Intergovernmental Organizations
Part 2 INSTRUCTIONS RELATING TO THE INTERNATIONAL APPLICATION
Section 201 Language of the International Application
Section 202 [Deleted] Section 203 Different Applicants for
Different Designated States
Section 204 Headings of the Parts of the Description
Section 204 bis Numbering of Claims Section 205 Numbering and Identification of
Claims upon Amendment Section 206 Unity of Invention Section 207 Arrangement of Elements and
Numbering of Sheets of the International Application
Section 208 Sequence Listings Section 209 Indications as to Deposited
Biological Material on a Separate Sheet
Section 210 [Deleted] Section 211 Declaration as to the Identity of
the Inventor Section 212 Declaration as to the Applicant’s
Entitlement to Apply for and Be Granted a Patent
Section 213 Declaration as to the Applicant’s Entitlement to Claim Priority of Earlier Application
Section 214 Declaration of Inventorship Section 215 Declaration as to
Non-Prejudicial Disclosures or Exceptions to Lack of Novelty
Section 216 Notice of Correction orAddition of a Declaration under Rule 26ter
Part 3 INSTRUCTIONS RELATING TO THE RECEIVING OFFICE
Section 301 Notification of Receipt of Purported International Application
Section 302 Priority Claim Considered Not to Have Been Made
Section 303 Deletion of Additional Matter in the Request
Section 304 Invitation to Pay Fees Before Date on Which They Are Due
Section 305 Identifying the Copies of the International Application
Section 305 bis Preparation, Identification and Transmittal of the Copies of the
1 Table of Contents and Editor's Notes are added for the convenience of the reader; they do not form part of the Administrative Instructions.
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Section 305 ter Identification and Transmittal of the Translation of an Earlier Application Furnished under Rule 20.6(a)(iii)
Section 306 Delayed Transmittal of Search Copy
Section 307 System of Numbering International Applications
Section 308 Marking of the Sheets of the International Application and of the Translation Thereof
Section 308 bis Marking of Later Submitted Sheets
Section 309 Procedure in the Case of Later Submitted Sheets Furnished for the Purposes of Incorporation by Reference
Section 310 Procedure in the Case of Later Submitted Sheets Not Furnished for the Purposes of Incorporation by Reference
Section 310 bis Procedure in the Case of Later Submitted Sheets Resulting in the Correction of the International Filing Date under Rule 20.5(c)
Section 310 ter Procedure in the Case of Later Submitted Sheets Furnished after the Expiration of the Applicable Time Limit Referred to in Rule 20.7
Section 311 Renumbering in the Case of Deletion, Substitution or Addition of Sheets of the International Application and of the Translation Thereof
Section 312 Notification of Decision Not to Issue Declaration that the International Application Is Considered Withdrawn
Section 313 Documents Filed with the International Application; Manner of Marking the Necessary Annotations in the Check List
Section 314 Correction or Addition of a Priority Claim Under Rule 26 bis
Section 315 [Deleted]
Section 316 Procedure in the Case Where the International Application Lacks the Prescribed Signature
Section 317 Transmittal of a Notice of Correction or Addition of a Declaration under Rule 26ter.1
Section 318 Cancellation of Designations of Non-Contracting States
Section 319 Procedure under Rule 4.9(b) Section 320 Invitation to Pay Fees under
Rule 16 bis.1(a) Section 321 Application of Moneys
Received by the Receiving Office in Certain Cases
Section 322 Invitation to Submit a Request for Refund of the Search Fee
Section 323 Transmittal of Priority Documents to International Bureau
Section 324 Copy of Notification of the International Application Number and the International Filing Date under Rule 20.2(c)
Section 325 Corrections of Defects under Rule 26.4, Rectifications of Obvious Mistakes under Rule 91, and Corrections under Rule 9.2
Section 326 Withdrawal by Applicant under Rule 90 bis.1, 90 bis.2 or 90 bis.3
Section 327 Ex Officio Correction of Request by the Receiving Office
Section 328 Notifications Concerning Representation
Section 329 Correction of Indications Concerning the Applicant’s Residence or Nationality
Section 330 Transmittal of Record Copy Prevented or Delayed by National Security Prescriptions
Section 331 Receipt of Confirmation Copy Section 332 Notification of Languages
Accepted by the Receiving Office under Rules 12.1(a) and (c) and 12.4(a)
Section 333 Transmittal of International Application to the International Bureau as Receiving Office
Section 334 Notification to Applicant of Submission of Demand after the
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Expiration of 19 Months from the Priority Date
Section 335 [Deleted] Section 336 Waivers under Rules 90.4(d)
and 90.5(c) Section 337 Transmittal of copy of results of
earlier search
Part 4 INSTRUCTIONS RELATING TO THE INTERNATIONAL BUREAU
Section 401 Marking of the Sheets of the Record Copy
Section 402 Correction or Addition of a Priority Claim under Rule 26 bis
Section 403 Transmittal of Protest Against Payment of Additional Fees and Decision Thereon Where International Application Is Considered to Lack Unity of Invention
Section 404 International Publication Number of International Application
Section 405 Publication of Notifications of Languages Accepted by the receiving Office under Rules 12.1(a) and (c) and 12.4(a)
Section 406 Publication of International Applications
Section 407 The Gazette Section 408 Priority Application Number Section 409 Priority Claim Considered Not
to Have Been Made Section 410 Numbering of Sheets for the
Purposes of International Publication; Procedure in Case of Missing Sheets
Section 411 Receipt of Priority Document Section 411 bis Receipt of Translation of Earlier
Application under Rule 20.6(a)(iii)
Section 412 Notification of Lack of Transmittal of Search Copy
Section 413 Incorporations by Reference under Rule 20, Corrections of Defects under Rule 26.4, Rectifications of Obvious Mistakes under Rule 91, and Corrections under Rule 9.2
Section 413 bis Rectifications of Obvious Mistakes under Rule 91
Section 414 Notification to the International Preliminary Examining Authority Where the International Application is Considered Withdrawn
Section 415 Notification of Withdrawal Under Rule 90 bis.1, 90 bis.2, 90 bis.3, 90 bis.3 bis or 90 bis.4
Section 416 Correction of Request in Record Copy
Section 417 Processing of Amendments Under Article 19
Section 418 Notifications to Elected Offices Where the Demand Is Considered Not to Have Been Submitted or Made
Section 419 Processing of a Declaration under Rule 26 ter
Section 420 Copy of International Application, International Search Report and Supplementary International Search Report for the International Preliminary Examining Authority
Section 421 Invitation to Furnish a Copy of the Priority Document
Section 422 Notifications Concerning Changes Recorded Under Rule 92 bis.1
Section 422 bis Objections Concerning Changes in the Person of the Applicant Recorded under Rule 92 bis.1(a)
Section 423 Cancellation of Designations and Elections
Section 424 Procedure under Rule 4.9(b) Section 425 Notifications Concerning
Representation Section 426-429 [Deleted] Section 430 Notification of Designations
under Rule 32 Section 431 Publication of Notice of
Submission of Demand Section 432 Notification to Applicant of
Submission of Demand after the Expiration of 19 Months from the Priority Date
Section 433 Waivers under Rule 90.4(d) Section 434 Publication of Information
Concerning Waivers under Rules 90.4(d) and 90.5(c)
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Section 435 Communication of Publications and Documents
Section 436 Preparation, Identification and Transmittal of the Copies of the Translation of the International Application
Part 5 INSTRUCTIONS RELATING TO THE INTERNATIONAL SEARCHING AUTHORITY
Section 501 Corrections Submitted to the International Searching Authority Concerning Expressions, Etc., Not to Be Used in the International Application
Section 502 Transmittal of Protest against Payment of Additional Fees and Decision Thereon Where International Application Is Considered to Lack Unity of Invention
Section 503 Method of Identifying Documents Cited in the International Search Report and the Written Opinion of the International Searching Authority
Section 504 Classification of the Subject Matter of the International Application
Section 505 Indication of Citations of Particular Relevance in the International Search Report
Section 506 [Deleted] Section 507 Manner of Indicating Certain
Special Categories of Documents Cited in the International Search Report
Section 508 Manner of Indicating the Claims to Which the Documents Cited in the International Search Report Are Relevant
Section 509 International Search and Written Opinion of the International Searching Authority on the Basis of a Translation of the International Application
Section 510 Refund of Search Fee in Case of Withdrawal of International Application
Section 511 Rectifications of Obvious Mistakes under Rule 91
Section 512 Notifications Concerning Representation
Section 513 Sequence Listings Section 514 Authorized Officer Section 515 Modification of Abstract in
Response to Applicant’s Comments
Section 516 Notification to Applicant of Submission of Demand after the Expiration of 19 Months from the Priority Date
Section 517 Waivers under Rules 90.4(d) and 90.5(c)
Section 518 Guidelines for Explanations Contained in the Written opinion of the International Searching Authority
Section 519 Notification of Receipt of Copy of International Application for the Purposes of Supplementary International Search
Section 520 Withdrawal by Applicant under Rule 90 bis.3 bis
Part 6 INSTRUCTIONS RELATING TO THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
Section 601 Notification to Applicant of Submission of Demand after the Expiration of 19 Months from the Priority Date
Section 602 Processing of Amendments by the International Preliminary Examining Authority
Section 603 Transmittal of Protest against Payment of Additional Fees and Decision Thereon Where International Application Is Considered to Lack Unity of Invention
Section 604 Guidelines for Explanations Contained in the International Preliminary Examination Report
Section 605 File to Be Used for International Preliminary Examination
Section 606 Cancellation of Elections Section 607 Rectifications of Obvious
Mistakes under Rule 91
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Section 608 Notifications Concerning Representation
Section 609 Withdrawal by Applicant under Rules 90 bis. 1, 90 bis. 2 or 90 bis. 3
Section 610 Sequence Listings Section 611 Method of Identification of
Documents in the International Preliminary Examination Report
Section 612 Authorized Officer Section 613 Invitation to Submit a Request
for Refund of Fees under Rule 57.4 or 58.3
Section 614 Evidence of Right to File Demand
Section 615 Invitation to Pay Fees before Date on Which They Are Due
Section 616 International Preliminary Examination on the Basis of a Translation of the International Application
Section 617 Waivers under Rules 90.4(d) and 90.5(c)
Part 7 INSTRUCTIONS RELATING TO THE FILING AND PROCESSING IN ELECTRONIC FORM OF INTERNATIONAL APPLICATIONS
Section 701 Abbreviated Expressions Section 702 Filing, Processing and
Communication in Electronic Form of International Applications
Section 703 Filing Requirements; Basic Common Standard
Section 704 Receipt; International Filing Date; Signature; Physical Requirements
Section 705 Home Copy, Record Copy and Search Copy Where International Application is Filed in Electronic Form
Section 705 bis Processing in Electronic Form of International Applications Filed on Paper; Home Copy, Record Copy and Search Copy
Section 706 Documents in Pre-Conversion Format
Section 707 Calculation of International Filing Fee and Fee Reduction
Section 708 Special Provisions Concerning Legibility, Completeness, Infection by Viruses, Etc.
Section 709 Means of Communication with the Receiving Office
Section 710 Notification and Publication of Receiving Offices’ Requirements and Practices
Section 711 Electronic Records Management Section 712 Access to Electronic Records Section 713 Application of Provisions to
International Authorities and the International Bureau, and to Notifications, Communications, Correspondence and Other Documents
Section 714 Furnishing by the International Bureau of Copies of Documents Kept in Electronic Form; Designated Offices’ Signature Requirements
Section 715 Availability of Priority Documents from Digital Libraries
Section 716 Request that Priority Document Be Obtained from a Digital Library under Rule 17.1(b- bis)
Part 8 INSTRUCTIONS RELATING TO OBSERVATIONS BY THIRD PARTIES
Section 801 Third Party Observation System Section 802 Filing of a Third Party
Observation Section 803 Availability of an Observation
and Related Information Section 804 Notification of Receipt of an
Observation to the Applicant and Comments by theApplicant in Response to an Observation
Section 805 Communication of Observations and Comments to International Authorities and Designated Offices
Annex A FORMS Annex B UNITY OF INVENTION Annex C STANDARD FOR THE
PRESENTATION OF NUCLEOTIDE AND AMINO ACID SEQUENCE LISTINGS IN INTERNATIONAL PATENT
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APPLICATIONS UNDER THE PCT
Annex D INFORMATION FROM FRONT PAGE OF PUBLISHED INTERNATIONAL APPLICATION TO BE INCLUDED IN THE GAZETTE UNDER RULE 86.1(i)
Annex E INFORMATION TO BE PUBLISHED INTHE GAZETTE UNDER RULE 86.1(v)
Annex F STANDARD FOR THE ELECTRONIC FILING AND PROCESSING OF INTERNATIONAL APPLICATIONS
AI Administrative Instructions Under the PCT [R-07.2015]
PART 1
INSTRUCTIONS RELATING TO GENERAL MATTERS
101 Abbreviated Expressions and Interpretation
(a) In these Administrative Instructions:
(i) “Treaty” means the Patent Cooperation Treaty;
(ii) “Regulations” means the Regulations under the Treaty;
(iii) “Article” means an Article of the Treaty;
(iv) “Rule” means a Rule of the Regulations;
(v) “International Bureau” means the International Bureau as defined in Article 2(xix) of the Treaty;
(vi) “International Authorities” means the receiving Offices, the International Searching Authorities, the International Preliminary Examining Authorities, and the International Bureau;
(vii) “Annex” means an Annex to these Administrative Instructions, unless the contrary clearly follows from the wording or the nature of the provision, or the context in which the word is used;
(viii) “Form” means a Form contained in
Annex A; 1
(ix) “WIPO Standard” means a Standard established by the World Intellectual Property Organization;
(x) “Director General” means the Director General as defined in Article 2(xx) of the Treaty;
(xi) “electronic” technology includes that having electrical, digital, magnetic, optical or electromagnetic capabilities;
(xii) the expressions “sequence listing”, “sequence listing forming part of the international application” and “sequence listing not forming part of the international application” have the same meaning as in Annex C.
(b) The Annexes are part of these Administrative Instructions.
102 Use of the Forms
(a) Subject to paragraphs (b) to (i) and Section 103, the International Authorities shall use, or require the use of, the mandatory Forms specified below:
(i) Forms for use by the applicant:
PCT/IPEA/401 (demand Form)
PCT/RO/101 (request Form)
(ii) Forms for use by the receiving Offices:
PCT/RO/152PCT/RO/115PCT/RO/103 PCT/RO/153PCT/RO/117PCT/RO/104 PCT/RO/154PCT/RO/118PCT/RO/105 PCT/RO/155PCT/RO/123PCT/RO/106 PCT/RO/156PCT/RO/126PCT/RO/107 PCT/RO/157PCT/RO/133PCT/RO/109 PCT/RO/158PCT/RO/136PCT/RO/110 PCT/RO/159PCT/RO/143PCT/RO/111
PCT/RO/147PCT/RO/112
1 Editor's Note: Annex A is published separately by the World Intellectual Property Organization.
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PCT/RO/150PCT/RO/113 PCT/RO/151PCT/RO/114
(iii) Forms for use by the International Searching Authorities:
PCT/ISA/234PCT/ISA/212PCT/ISA/201 PCT/ISA/235PCT/ISA/217PCT/ISA/202 PCT/ISA/236PCT/ISA/218PCT/ISA/203 PCT/ISA/237PCT/ISA/219PCT/ISA/205
PCT/ISA/220PCT/ISA/206 PCT/ISA/225PCT/ISA/209 PCT/ISA/233PCT/ISA/210
PCT/SISA/507PCT/SISA/504PCT/SISA/501 PCT/SISA/510PCT/SISA/505PCT/SISA/502
PCT/SISA/506PCT/SISA/503
(iv) Forms for use by the International Bureau:
PCT/IB/357PCT/IB/325PCT/IB/301 PCT/IB/358PCT/IB/326PCT/IB/304 PCT/IB/360PCT/IB/331PCT/IB/305 PCT/IB/366PCT/IB/332PCT/IB/306 PCT/IB/367PCT/IB/335PCT/IB/307 PCT/IB/368PCT/IB/336PCT/IB/308 PCT/IB/369PCT/IB/337PCT/IB/310 PCT/IB/370PCT/IB/338PCT/IB/311 PCT/IB/371PCT/IB/339PCT/IB/313 PCT/IB/373PCT/IB/344PCT/IB/314 PCT/IB/374PCT/IB/345PCT/IB/315 PCT/IB/376PCT/IB/346PCT/IB/316 PCT/IB/377PCT/IB/349PCT/IB/317 PCT/IB/378PCT/IB/350PCT/IB/318 PCT/IB/379PCT/IB/351PCT/IB/319 PCT/IB/399PCT/IB/353PCT/IB/320
PCT/IB/354PCT/IB/321 PCT/IB/356PCT/IB/323
(v) Forms for use by the International Preliminary Examining Authorities:
PCT/IPEA/440PCT/IPEA/414PCT/IPEA/402 PCT/IPEA/441PCT/IPEA/415PCT/IPEA/404 PCT/IPEA/442PCT/IPEA/416PCT/IPEA/405 PCT/IPEA/443PCT/IPEA/420PCT/IPEA/407
PCT/IPEA/444PCT/IPEA/425PCT/IPEA/408 PCT/IPEA/431PCT/IPEA/409 PCT/IPEA/436PCT/IPEA/412
(b) Slight variations in layout necessary in view of the printing of the Forms referred to in paragraph (a) in various languages are permitted.
(c) Slight variations in layout in the Forms referred to in paragraph (a)(ii) to (v) are permitted to the extent necessary to meet the particular office requirements of the International Authorities, in particular in view of the production of the Forms by computer or of the use of window envelopes.
(d) Where the receiving Office, the International Searching Authority and/or the International Preliminary Examining Authority are each part of the same Office, the obligation to use the Forms referred to in paragraph (a) does not extend to communications within that same Office.
(e) The annexes to Forms PCT/RO/106, PCT/RO/118, PCT/ISA/201, PCT/ISA/205, PCT/ISA/206, PCT/ISA/210, PCT/ISA/219, PCT/IB/313, PCT/IB/336, PCT/IPEA/404, PCT/IPEA/405 and PCT/IPEA/415 may be omitted in cases where they are not used.
(f) The notes attached to Forms PCT/RO/101 (request Form), PCT/IB/375 (supplementary search request Form) and PCT/IPEA/401 (demand Form) shall be distributed by the International Authorities concerned together with the printed versions of those Forms. The notes attached to Form PCT/ISA/220 shall accompany the Form when sent to the applicant.
(g) The use of Forms other than those referred to in paragraph (a) is optional.
(h) Where the request or the demand is presented as a computer print-out, such print-out shall be prepared as follows:
(i) the layout and contents of the request and the demand when presented as computer print-outs shall correspond to the format of Forms PCT/RO/101 (request Form) and PCT/IPEA/401 (demand Form) (“the printed Forms”), with the same information being presented on the corresponding pages;
(ii) all boxes shall be drawn by solid lines; double lines may be presented as single lines;
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(iii) the box numbers and box titles shall be included even where no information is supplied therein;
(iv) the boxes for use by the International Authorities shall be at least as large as those on the printed Forms;
(v) all other boxes shall be within one cm in size of those on the printed Forms;
(vi) all text shall be 9 points or larger in size;
(vii) titles and other information shall be clearly distinguished;
(viii) explanatory notes presented in italics on the printed Forms may be omitted.
(i) Other formats permitted for the presentation of the request and the demand as computer print-outs may be determined by the Director General. Any such format shall be published in the Gazette.
102 bis [Deleted]
103 Languages of the Forms Used by International Authorities
(a) The language of the Forms used by any receiving Office shall be the same as the language in which the international application is filed, provided that:
(i) where the international application is to be published in the language of a translation required under Rule 12.3(a) or 12.4(a), the receiving Office shall use the Forms in such language;
(ii) the receiving Office may, in its communications to the applicant, use the Forms in any other language being one of its official languages.
(b) Subject to Section 104(b), the language or languages of the Forms to be used by any International Searching Authority shall be specified in the applicable agreement referred to in Article 16(3)(b).
(c) Subject to Section 104(b), the language or languages of the Forms to be used by any International Preliminary Examining Authority shall be specified in the applicable agreement referred to in Article 32(3).
(d) The language of any Form used by the International Bureau shall be English where the
language of the international application is English, and it shall be French where the language of the international application is French. Where the language of the international application is neither English nor French, the language of any Form used by the International Bureau in its communications to any other International Authority shall be English or French according to the wishes of such Authority, and in its communications to the applicant it shall be English or French according to the wishes of the applicant.
104 Language of Correspondence in Cases Not Covered by Rule 92.2
(a) The language of any letter from the applicant to the receiving Office shall be the same as the language of the international application to which such letter relates, provided that, where the international application is to be published in the language of a translation required under Rule 12.3(a) or 12.4(a), any letter shall be in such language. However, the receiving Office may expressly authorize the use of any other language.
(b) The language of any letter to the International Bureau shall be English where the language of the international application is English, and it shall be French where the language of the international application is French. Where the language of the international application is neither English nor French, the language of any letter to the International Bureau shall be English or French, provided that any copy, sent to the International Bureau as a notification addressed to it, of a Form sent to the applicant by the receiving Office, the International Searching Authority or the International Preliminary Examining Authority, does not require translation into English or French.
105 Identification of International Application with Two or More Applicants
Where any international application indicates two or more applicants, it shall be sufficient, for the purpose of identifying that application, to indicate, in any Form or correspondence relating to such application, the name of the applicant first named
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in the request. The provisions of the first sentence of this Section do not apply to the demand.
106 Change of Common Representative
Where a change is recorded under Rule 92 bis.1(a) in the person of an applicant who was considered to be the common representative under Rule 90.2(b), the new applicant shall be considered to be the common representative under Rule 90.2(b) if he is entitled according to Rule 19.1 to file an international application with the receiving Office.
107 Identification of International Authorities and of Designated and Elected Offices
(a) Whenever the nature of any communication from or to the applicant, from or to any International Authority or, before national processing or examination has started, from or to any designated or elected Office so permits, any International Authority or any designated or elected Office may be indicated in the communication by the two-letter code referred to in Section 115.
(b) The indication of a receiving Office, an International Searching Authority, an International Preliminary Examining Authority or a designated or elected Office shall be preceded by the letters “RO,” “ISA,” “IPEA,” “DO,” or “EO,” respectively, followed by a slant (e.g., “RO/JP,” “ISA/US,” “IPEA/SE,” “DO/EP,” “EO/AU”).
108 Correspondence Intended for the Applicant
(a) For the purpose of this Section, where there are two or more agents whose appointments are in force, “first mentioned agent” means the agent first mentioned in the document containing the appointments or, where the appointments are contained in two or more documents, in that which was filed first.
(b) Where a sole applicant has appointed an agent or agents under Rule 90.1(a), correspondence intended for the applicant from the International Authorities shall, subject to paragraph (d), be addressed to the agent or, where applicable, to the first mentioned agent.
(c) Where there are two or more applicants, correspondence intended for the applicants from the International Authorities shall, subject to paragraph (d), be addressed:
(i) if no common agent has been appointed under Rule 90.1 —to the common representative or, where applicable, to his agent or first mentioned agent; or
(ii) if the applicants have appointed a common agent or common agents under Rule 90.1(a)—to that common agent or, where applicable, to the first mentioned common agent.
(d) Where an agent has or agents have been appointed under Rule 90.1(b), (c) or (d)(ii), paragraphs (b) and (c) shall apply to correspondence intended for the applicant relating to the procedure before the International Searching Authority or the International Preliminary Examining Authority, as the case may be, as if those paragraphs referred to the agent or agents so appointed.
(e) Where, in accordance with paragraph (c), correspondence intended for the applicants from the International Authorities is to be addressed to the common representative but the indication required under Rule 4.5(a)(ii) has not been provided for the common representative, correspondence shall be addressed:
(i) to the first applicant named in the request who is entitled according to Rule 19.1 to file an international application with the receiving Office and in respect of whom the indication required under Rule 4.5(a)(ii) has been provided; or, if there is no such applicant,
(ii) to the applicant first named in the request who is entitled according to Article 9 to file an international application and in respect of, whom the indication required under Rule 4.5(a)(ii) has been provided; or, if there is no such applicant,
(iii) to the applicant first named in the request in respect of whom the indication required under Rule 4.5(a)(ii) has been provided.
109 File Reference
(a) Where any document submitted by the applicant contains an indication of a file reference, that reference shall not exceed 12 characters in length and may be composed of either letters of the Latin alphabet or Arabic numerals, or both.
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(b) Correspondence from International Authorities intended for the applicant shall indicate any such file reference.
110 Dates
Any date in the international application, or used in any correspondence emanating from International Authorities relating to the international application, shall be indicated by the Arabic number of the day, by the name of the month, and by the Arabic number of the year. The receiving Office, where the applicant has not done so, or the International Bureau, where the applicant has not done so and the receiving Office fails to do so, shall, after, above, or below any date indicated by the applicant in the request, repeat the date, in parentheses, by indicating it by two-digit Arabic numerals each for the number of the day and for the number of the month followed by the number of the year in four digits, in that order and with a period, slant or hyphen after the digit pairs of the day and of the month (for example, “20 March 2004 (20.03.2004),” “20 March 2004 (20/03/2004),” or “20 March 2004 (20-03-2004)”).
111 Procedure in the Case of Excuse of the Delay in Meeting Certain Time Limits under Rule 82 quater
Where an Office in its capacity as a receiving Office, an International Searching Authority, an Authority specified for supplementary search or an International Preliminary Examining Authority receives a request under Rule 82 quater for the excuse of a delay in meeting a time limit, it shall promptly:
(i) communicate its decision whether or not to excuse such a delay to the interested party; and
(ii) transmit a copy of such a request, a copy of any evidence furnished and of its decision to the International Bureau.
112 Ceasing of Effect under Articles 24(1)(iii) and 39(2), Review under Article 25(2) and Maintaining of Effect under Articles 24(2) and 39(3)
(a) Each national Office shall, in its capacity as designated Office, notify the International Bureau once a year of:
(i) the number of international applications in respect of which, during the preceding calendar year, the time limit applicable under Article 22 has expired;
(ii) the number of international applications in respect of which, during the preceding calendar year, the requirements provided for in Article 22 have not been complied with before the expiration of the time limit applicable under that Article, with the consequence that the effects of the international applications concerned have ceased under Article 24(1)(iii).
(b) Each national Office shall, in its capacity as elected Office, notify the International Bureau once a year of:
(i) the number of international applications in respect of which, during the preceding calendar year, the time limit applicable under Article 39(1) has expired;
(ii) the number of international applications in respect of which, during the preceding calendar year, the requirements provided for in Article 39(1) have not been complied with before the expiration of the time limit applicable under that Article, with the consequence that the effects of the international applications concerned have ceased under Article 39(3).
(c) Where, under Article 25(2), the designated Office decides that the refusal, declaration or finding referred to in Article 25(1) was not justified, it shall promptly notify the International Bureau that it will treat the international application as if the error or omission referred to in Article 25(2) had not occurred. The notification shall preferably contain the reasons for the decision of the designated Office.
(d) Where, under Article 24(2) or under Article 39(3), the designated or elected Office maintains the effect provided for in Article 11(3), it shall promptly notify the International Bureau accordingly. The notification shall preferably contain the reasons for the decision of the designated or elected Office.
113 Special Fees Payable to the International Bureau
(a) The special publication fee provided for in Rule 48.4 shall be 200 Swiss francs.
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(b) The special fee provided for in Rule 91.3(d) shall be payable to the International Bureau and shall be 50 Swiss francs plus 12 Swiss francs for each sheet in excess of one. Where that fee has not been paid prior to the expiration of the time limit under Rule 91.3(d), the request for rectification, the reasons for refusal by the authority and any further brief comments submitted by the applicant shall not be published. Where the last sentence of Rule 91.3(d) applies and the said fee has not been paid before the time of the communication of the international application under Article 20, a copy of the request for rectification shall not be included in that communication.
(c) The special fee provided for in Rule 26 bis.2(e) shall be payable to the International
Bureau and shall be 50 Swiss francs plus 12 Swiss francs for each sheet in excess of one.
114 [Deleted]
115 Indications of States, Territories and Intergovernmental Organizations
The indication of a State, territory, or intergovernmental organization shall be made either by its full name, by a generally accepted short title which, if the indications are in English or French, shall be as appears in WIPO Standard ST.3 (Recommended Standard Two-Letter Code for the Representation of Countries, and of Other Entities and International Organizations Issuing or Registering Industrial Property Titles), or by the
two-letter code as appears in that Standard. 1
PART 2
INSTRUCTIONS RELATING TO THE INTERNATIONAL APPLICATION
201 Language of the International Application
The language in which the international application is filed shall preferably be indicated in the request.
202 [Deleted]
203 Different Applicants for Different Designated States
(a) Different applicants may be indicated for different States designated for a regional patent.
(b) Where a particular State has been designated for both a national patent and a regional patent, the same applicant or applicants shall be indicated for both designations.
204 Headings of the Parts of the Description
(a) The headings of the parts of the description shall preferably be as follows:
(i) for matter referred to in Rule 5.1(a)(i), “Technical Field”;
(ii) for matter referred to in Rule 5.1(a)(ii), “Background Art”;
(iii) for matter referred to in Rule 5.1(a)(iii), “Disclosure of Invention” or “Summary of Invention”;
(iv) for matter referred to in Rule 5.1(a)(iv), “Brief Description of Drawings”;
(v) for matter referred to in Rule 5.1(a)(v), “Best Mode for Carrying out the Invention,” or, where appropriate, “Mode(s) for Carrying Out the Invention” or “Description of Embodiments”;
(vi) for matter referred to in Rule 5.1(a)(vi), “Industrial Applicability”;
(vii) for matter referred to in Rule 5.2(a), “Sequence Listing”;
(viii) for matter referred to in Rule 5.2(b), “Sequence Listing Free Text.”
1 Editor's Note: Published in the WIPO Handbook on Industrial Property Information and Documentation.
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(b) The heading “Title of Invention” shall preferably precede the title of the invention.
204 bis Numbering of Claims
The number of each claim referred to in Rule 6.1(b) shall preferably be preceded by the expression “Claim” (for example, “Claim 1”, “Claim 2”, “Claim 3”).
205 Numbering and Identification of Claims upon Amendment
(a) Amendments to the claims under Article 19 or Article 34(2)(b) may be made either by cancelling one or more entire claims, by adding one or more new claims or by amending the text of one or more of the claims as filed. Where a claim is cancelled, no renumbering of the other claims shall be required. In all cases where claims are renumbered, they shall be renumbered consecutively in Arabic numerals.
(b) The applicant shall, in the letter referred to in Rule 46.5(b) or Rule 66.8(c), indicate the differences between the claims as filed and the claims as amended or, as the case may be, differences between the claims as previously amended and currently amended. He shall, in particular, indicate in the said letter, in connection with each claim appearing in the international application (it being understood that identical indications concerning several claims may be grouped), whether:
(i) the claim is unchanged;
(ii) the claim is cancelled;
(iii) the claim is new;
(iv) the claim replaces one or more claims as filed;
(v) the claim is the result of the division of a claim as filed;
(vi) the claim replaces one or more claims as previously amended;
(vii) the claim is the result of the division of a claim as previously amended.
206 Unity of Invention
The determination by the International Searching Authority, the International Preliminary Examining
Authority and the designated and elected Offices whether an international application complies with the requirement of unity of invention under Rule 13 shall be made in accordance with Annex B.
207 Arrangement of Elements and Numbering of Sheets of the International Application
(a) In effecting the sequential numbering of the sheets of the international application in accordance with Rule 11.7, the elements of the international application shall be placed in the following order:
(i) the request;
(ii) the description (if applicable, including the sequence listing free text referred to in Rule 5.2(b) but excluding the sequence listing part of the description referred to in item (vi) of this paragraph):
(iii) the claims;
(iv) the abstract;
(v) if applicable, the drawings;
(vi) if applicable, the sequence listing part of the description.
(b) The sequential numbering of the sheets shall be effected by using the following separate series of numbering:
(i) the first series applying to the request only and commencing with the first sheet of the request;
(ii) the second series commencing with the first sheet of the description (as referred to in paragraph (a)(ii)) and continuing through the claims until the last sheet of the abstract;
(iii) if applicable, a further series applying to the sheets of the drawings only and commencing with the first sheet of the drawings; the number of each sheet of the drawings shall consist of two Arabic numerals separated by a slant, the first being the sheet number and the second being the total number of sheets of drawings (for example, 1/3, 2/3, 3/3);
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(iv) if applicable, a further series applying to the sequence listing part of the description, commencing with the first sheet of that part.
208 Sequence Listings
Any sequence listing, whether on paper or in electronic form, whether forming part of the international application or not forming part of the international application, shall comply with Annex C.
209 Indications as to Deposited Biological Material on a Separate Sheet
(a) To the extent that any indication with respect to deposited biological material is not contained in the description, it may be given on a separate sheet. Where any such indication is so given, it shall preferably be on Form PCT/RO/134 and, if furnished at the time of filing, the said Form shall, subject to paragraph (b), preferably be attached to the request and referred to in the check list referred to in Rule 3.3(a)(ii).
(b) For the purposes of designated Offices, which have so notified the International Bureau under Rule 13 bis.7(a), paragraph (a) applies only if the said Form or sheet is included as one of the sheets of the description of the international application at the time of filing.
210 [Deleted]
211 Declaration as to the Identity of the Inventor
(a) Any declaration as to the identity of the inventor, referred to in Rule 4.17(i), shall be worded as follows:
“Declaration as to the identity of the inventor (Rules 4.17(i) and 51 bis.1(a)(i)):
in relation to [this] international application [No. PCT/…], … (name) of … (address) is the inventor of the subject matter for which protection is sought by way of [the] [this] international application”
(b) This declaration need not be made if the name and address of the inventor are otherwise indicated in the request.
(c) This declaration may, where applicable, be combined, in accordance with Section 212(b), with the declaration referred to in Section 212(a).
212 Declaration as to the Applicant’s Entitlement to Apply for and Be Granted a Patent
(a) Any declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent, referred to in Rule 4.17(ii), shall be worded as follows, with such inclusion, omission, repetition and re-ordering of the matters listed as items (i) to (viii) as is necessary to explain the applicant’s entitlement:
“Declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent (Rules 4.17(ii) and 51 bis.1(a)(ii)), in a case where the declaration under Rule 4.17(iv) is not appropriate:
in relation to [this] international application [No. PCT/…],
… (name) is entitled to apply for and be granted a patent by virtue of the following:
(i) ... (name) of ... (address) … is the inventor of the subject matter for which protection is sought by way of [the] [this] international application
(ii) … (name) [is] [was] entitled as employer of the inventor, … (inventor’s name)
(iii) an agreement between … (name) and … (name), dated …
(iv) an assignment from … (name) to … (name), dated …
(v) consent from … (name) in favor of … (name), dated …
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(vi) a court order issued by … (name of court), effecting a transfer from … (name) to … (name), dated …
(vii) transfer of entitlement from … (name) to … (name) by way of … (specify kind of transfer), dated ...
(viii) the applicant’s name changed from … (name) to … (name) on … (date)”
(b) The declaration referred to in paragraph (a) may, where applicable, be combined with the declaration referred to in Section 211(a), in which case the introductory phrase shall be worded as follows and the remainder of the combined declaration shall be worded as prescribed in paragraph (a):
“Combined declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent (Rules 4.17(ii) and 51 bis.1(a)(ii)) and as to the identity of the inventor (Rules 4.17(i) and 51 bis.1(a)(i)), in a case where the declaration under Rule 4.17(iv) is not appropriate:”
213 Declaration as to the Applicant’s Entitlement to Claim Priority of Earlier Application
Any declaration as to the applicant’s entitlement, as at the international filing date, to claim priority of the earlier application, referred to in Rule 4.17(iii) , shall be worded as follows, with such inclusion, omission, repetition and re-ordering of the matters listed as items (i) to (viii) as is necessary to explain the applicant’s entitlement:
“Declaration as to the applicant’s entitlement, as at the international filing date, to claim the priority of the earlier application specified below, where the applicant is not the applicant who filed the earlier application or where the applicant’s name has changed since the filing of the earlier application (Rules 4.17(iii) and 51 bis.1(a)(iii)):
in relation to [this] international application [No. PCT/…],
... (name) is entitled to claim priority of earlier application No. … by virtue of the following:
(i) the applicant is the inventor of the subject matter for which protection was sought by way of the earlier application
(ii) … (name) [is] [was] entitled as employer of the inventor, … (inventor’s name)
(iii) an agreement between … (name) and … (name), dated …
(iv) an assignment from … (name) to … (name), dated …
(v) consent from … (name) in favor of … (name), dated …
(vi) a court order, issued by …. (name of court), effecting a transfer from … (name) to … (name), dated …
(vii) transfer of entitlement from … (name) to … (name) by way of … (specify kind of transfer), dated …
(viii) the applicant’s name changed from … (name) to … (name) on … (date)”
214 Declaration of Inventorship
(a) A declaration of inventorship, referred to in Rule 4.17(iv), that is made for the purposes of the designation of the United States of America shall be worded as follows:
“Declaration of inventorship (Rules 4.17(iv) and 51 bis.1(a)(iv) ) for the purposes of the designation of the United States of America:
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I hereby declare that I believe I am the original inventor or an original joint inventor of a claimed invention in the application.
This declaration is directed to the international application of which it forms a part (if filing declaration with application).
This declaration is directed to international application No. PCT/… (if furnishing declaration pursuant to Rule 26 ter ).
I hereby declare that the above-identified international application was made or authorized to be made by me.
I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.
Name: …
Residence: … (city and either US state, if applicable, or country)
Mailing Address: …
Inventor’s Signature: … (The signature must be that of the inventor, not that of the agent)
Date: …”
(b) Where there is more than one inventor and all inventors do not sign the same declaration referred to in paragraph (a), each declaration shall indicate the names of all the inventors.
(c) Any correction or addition under Rule 26 ter.1 of a declaration referred to in paragraph (a) shall take the form of a declaration referred to in that paragraph and be signed by the inventor. In addition, any such correction shall be entitled “Supplemental
declaration of inventorship (Rules 4.17(iv) and 51 bis.1(a)(iv))”.
215 Declaration as to Non-Prejudicial Disclosures or Exceptions to Lack of Novelty
Any declaration as to non-prejudicial disclosures or exceptions to lack of novelty shall be worded as follows, with such inclusion, omission, repetition and re-ordering of the matters listed as items (i) to (iv) as is necessary:
“Declaration as to non-prejudicial disclosures or exceptions to lack of novelty (Rules 4.17(v) and 51 bis.1(a)(v)):
in relation to [this] international application [No. PCT/…],
… (name) declares that the subject matter claimed in [the] [this] international application was disclosed as follows:
(i) kind of disclosure (include as applicable):
(a) international exhibition
(b) publication
(c) abuse
(d) other: ... (specify)
(ii) date of disclosure: ...
(iii) title of disclosure ( if applicable): ...
(iv) place of disclosure ( if applicable): ...”
216 Notice of Correction or Addition of a Declaration under Rule 26ter
Any notice referred to in Rule 26 ter.1 shall consist of a replacement sheet containing a corrected declaration, or of an additional sheet containing a
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declaration, and an accompanying letter explaining the correction or addition.
PART 3
INSTRUCTIONS RELATING TO THE RECEIVING OFFICE
301 Notification of Receipt of Purported International Application
Before the determination under Article 11(1), the receiving Office may notify the applicant of the receipt of the purported international application. The notification should indicate the date of actual receipt and the international application number of the purported international application referred to in Section 307 as well as, where useful for purposes of identification, the title of the invention.
302 Priority Claim Considered Not to Have Been Made
Where the receiving Office declares, under Rule 26 bis.2(b), that a priority claim is considered not to have been made, that Office shall enclose the priority claim concerned within square brackets, draw a line between the square brackets, while still leaving legible the indications concerned, and enter, in the margin, the words “NOT TO BE CONSIDERED FOR PCT PROCEDURE (RO)” or their equivalent in the language of publication of the international application, and shall notify the applicant accordingly. If copies of the international application have already been sent to the International Bureau and the International Searching Authority, the receiving Office shall also notify that Bureau and that Authority.
303 Deletion of Additional Matter in the Request
(a) Where, under Rule 4.19(b), the receiving Office deletes ex officio any matter contained in the request, it shall do so by enclosing such matter within square brackets and entering, in the margin, the words “DELETED BY RO” or their equivalent in the language of publication of the international application, and shall notify the applicant accordingly. If copies of the international application have already been sent to the International Bureau
and the International Searching Authority, the receiving Office shall also notify that Bureau and that Authority.
(b) The receiving Office shall not delete ex officio any indication made in declarations referred to in Rule 4.17 which are contained in the request.
304 Invitation to Pay Fees Before Date on Which They Are Due
If the receiving Office finds, before the date on which they are due, that the transmittal fee, the international filing fee (including any supplement per sheet over 30) or the search fee are lacking in whole or in part, it may invite the applicant to pay the missing amounts within one month from the date of receipt of the international application.
305 Identifying the Copies of the International Application
(a) Where, under Rule 11.1(a), the international application has been filed in one copy, the receiving Office shall, after preparing under Rule 21.1(a) the additional copies required under Article 12(1), mark,
(i) the words “RECORD COPY” in the upper left-hand corner of the first page of the original copy,
(ii) in the same space on one additional copy, the words “SEARCH COPY,” and
(iii) in the same space on the other such copy, the words “HOME COPY,” or their equivalent in the language of publication of the international application.
(b) Where, under Rule 11.1(b), the international application has been filed in more than one copy, the receiving Office shall choose the copy most suitable for reproduction purposes, and mark the words “RECORD COPY,” or their equivalent in the language of publication of the international application, in the upper left-hand corner of its first page. After verifying the identity of any additional copies and, if applicable, preparing under Rule
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21.1(b) the home copy, it shall mark, in the upper left-hand corner of the first page of one such copy, the words “SEARCH COPY,” and, in the same space on the other such copy, the words “HOME COPY,” or their equivalent in the language of publication of the international application.
305 bis Preparation, Identification and Transmittal of the Copies of the Translation of the International Application
(a) Where a translation of the international application is furnished under Rule 12.3, the receiving Office shall:
(i) be responsible for the prompt preparation of any additional copies required where the translation is furnished in less than the number of copies required for the purposes of this paragraph, and shall have the right to fix a fee for performing that task and to collect such fee from the applicant;
(ii) mark the words “RECORD COPY - TRANSLATION (RULE 12.3)” in the upper left-hand corner of the first page of the original copy of the translation and transmit that copy to the International Bureau;
(iii) mark the words “SEARCH COPY - TRANSLATION (RULE 12.3)” in the same space on one additional copy of the translation which, together with a copy of the request marked “SEARCH COPY” under Section 305(a)(ii), is considered pursuant to Rule 23.1(b) to be the search copy, and transmit such search copy to the International Searching Authority; and
(iv) mark the words “HOME COPY- TRANSLATION (RULE 12.3)” in the same space on the other such copy of the translation, and keep that copy in its files.
(b) The receiving Office may, when marking the copies of the translation under paragraph (a), use, instead of the words referred to in that paragraph, the equivalent of those words in the language of publication of the international application.
(c) Where a translation of the international application is furnished under Rule 12.4, the receiving Office shall:
(i) be responsible for the prompt preparation of any additional copies required where the translation is furnished in less than the number of copies required for the purposes of this paragraph,
and shall have the right to fix a fee for performing that task and to collect such fee from the applicant;
(ii) mark the words “RECORD COPY – TRANSLATION (RULE 12.4)” in the upper left-hand corner of the first page of the original copy of the translation and transmit that copy to the International Bureau; and
(iii) mark the words “HOME COPY – TRANSLATION (RULE 12.4)” in the same space on the other such copy of the translation, and keep that copy in its files.
305 ter Identification and Transmittal of the Translation of an Earlier Application Furnished under Rule 20.6(a)(iii)
Where a translation of an earlier application is furnished under Rule 20.6(a)(iii), the receiving Office shall mark the words “TRANSLATION OF EARLIER APPLICATION (RULE 20.6(a)(iii))” in the upper left-hand corner of the first page of the translation and, after having made a finding under Rule 20.6(b) or (c), transmit the translation to the International Bureau.
306 Delayed Transmittal of Search Copy
Where the search copy will be transmitted to the International Searching Authority after the date on which the record copy is transmitted to the International Bureau, the receiving Office shall notify the International Bureau. The notification may be made by marking a check-box provided for this purpose on the request.
307 System of Numbering International Applications
Papers purporting to be an international application under Rule 20.1(a) shall be allocated an international application number, consisting of the letters “PCT,” a slant, the two-letter code referred to in Section 115, indicating the receiving Office, a four-digit indication of the year in which such papers were first received, a slant and a six-digit number, allotted in sequential order corresponding to the order in which the international applications are received (e.g., “PCT/SE2004/000001”). Where the International
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Bureau acts as receiving Office, the two-letter code “IB” shall be used.
308 Marking of the Sheets of the International Application and of the Translation Thereof
(a) Upon receipt of papers purporting to be an international application, the receiving Office shall indelibly mark the date of actual receipt on the request of each copy received.
(b) The receiving Office shall indelibly mark the international application number referred to in Section 307 in the upper right-hand corner of each sheet of each copy of the purported international application and of any translation of the international application furnished under Rules 12.3 or 12.4.
(c) If a positive determination is made under Rule 20.2, the receiving Office shall mark on the request the name of the receiving Office and the words “PCT InternationalApplication” or “Demande internationale PCT”. If the official language of the receiving Office is neither English nor French, the words “International Application” or “Demande internationale” may be accompanied by a translation of these words in the official language of the receiving Office.
(d) If a negative determination is made under Rule 20.4 or a declaration is made under Article 14(4), the letters “PCT” shall be deleted by the receiving Office from the indication of the international application number on any papers marked previously with that number, and the said number shall be used without such letters in any future correspondence relating to the purported international application.
308 bis Marking of Later Submitted Sheets
The receiving Office shall indelibly mark any sheet containing an element referred to in Article 11(1)(iii)(d) or (e), or a part referred to in Rule 20.5(a), received on a date later than the date on which sheets were first received (“later submitted sheet”), in the upper right-hand corner of each sheet, with the international application number referred
to in Section 307 and the date of actual receipt of that sheet.
309 Procedure in the Case of Later Submitted Sheets Furnished for the Purposes of Incorporation by Reference
(a) This Section applies, subject to paragraph (f), to later submitted sheets which accompany a notice confirming under Rule 20.6 that an element or part embodied in those sheets was incorporated by reference.
(b) Where later submitted sheets as referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 and the receiving Office makes a finding under Rule 20.6(b), the receiving Office shall:
(i) indelibly mark, in the middle of the bottom margin of each later submitted sheet, the words “INCORPORATED BY REFERENCE (RULE 20.6)”, or their equivalent in the language of publication of the international application;
(ii) notify the applicant that the element or part contained in the later submitted sheets is considered to have been contained in the international application or purported international application on the date when sheets were first received and that that date has been accorded or retained, as the case may be, as the international filing date;
(iii) keep in its files a copy of the later submitted sheets marked under item (i) and of the notice under Rule 20.6(a);
(iv) where transmittals under Article 12(1) have already been made, notify the International Bureau and the International Searching Authority accordingly, and transmit the later submitted sheets marked under item (i) to the said Bureau and a copy thereof to the said Authority;
(v) where transmittals under Article 12(1) have not yet been made, attach the later submitted sheets marked under item (i) and the notice under Rule 20.6(a) to the record copy and a copy thereof to the search copy.
(c) Where later submitted sheets referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 and the receiving Office
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makes a finding under Rule 20.6(c), the receiving Office shall, subject to Section 310 bis :
(i) effect the required correction of the international filing date or accord as the international filing date the date of receipt of the later submitted sheets;
(ii) notify the applicant that the content of the later submitted sheets is not considered to have been contained in the international application or purported international application on the date when sheets were first received and that the international filing date has been accorded as, or corrected to, as the case may be, the date on which the new sheets were received;
(iii) keep in its files a copy of the later submitted sheets and of the notice under Rule 20.6(a);
(iv) where transmittals under Article 12(1) have already been made, notify the International Bureau and the International Searching Authority accordingly and transmit a copy of the corrected first and last sheets of the request, the later submitted sheets and the notice under Rule 20.6(a) to the said Bureau and a copy thereof to the said Authority;
(v) where transmittals under Article 12(1) have not yet been made, attach the later submitted sheets and the notice under Rule 20.6(a) to the record copy and a copy thereof to the search copy.
(d) Where later submitted sheets referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 but the purported international application still does not fulfill the requirements of Article 11(1), the receiving Office shall proceed as provided in Rule 20.4, but not before the expiration of the time limit under Rule 20.7.
(e) Where later submitted sheets referred to in paragraph (a) are received after the expiration of the applicable time limit referred to in Rule 20.7, the receiving Office shall proceed as provided in Section 310 ter .
(f) Where later submitted sheets referred to in paragraph (a) are received but a missing element or part contained in those sheets cannot be incorporated by reference in the international application under Rules 4.18 and 20.6 because of the operation of Rule 20.8(a), the receiving Office shall:
(i) inform the applicant that the notice under Rule 20.6(a) confirming the incorporation by
reference of the missing element or part has been disregarded:
(ii) proceed in accordance with Section 310(b), which shall apply mutatis mutandis, as if the notice under Rule 20.6(a) were a correction furnished under Rule 20.3(b)(i), or a missing part furnished under Rules 20.5(b) or (c), as the case may be; and
(iii) proceed in accordance with Section 310 bis(b) where the applicant requests, within the time limit under Rule 20.5(e), that the missing part concerned be disregarded.
310 Procedure in the Case of Later Submitted Sheets Not Furnished for the Purposes of Incorporation by Reference
(a) This Section applies to later submitted sheets which do not accompany a notice confirming under Rule 20.6 that an element or part embodied in those sheets was incorporated by reference.
(b) Where later submitted sheets as referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 and where the international filing date is to be accorded under Rules 20.3(b)(i) or 20.5(b), or corrected under Rule 20.5(c), the receiving Office shall, subject to Section 310 bis :
(i) accord the international filing date in accordance with Rules 20.3(b)(i) or 20.5(b), or effect the required correction of the international filing date in accordance with Rule 20.5(c), as the case may be;
(ii) notify the applicant of the correction or the according of the international filing date effected under item (i);
(iii) keep in its files a copy of the later submitted sheets;
(iv) where transmittals under Article 12(1) have already been made, notify the International Bureau and the International Searching Authority accordingly and transmit a copy of the corrected first and last sheets of the request and the later submitted sheets to the said Bureau and a copy thereof to the said Authority;
(v) where transmittals under Article 12(1) have not yet been made, attach the later submitted
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sheets to the record copy and a copy thereof to the search copy.
(c) Where later submitted sheets referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 but the purported international application still does not fulfill the requirements of Article 11(1), the receiving Office shall proceed as provided in Rule 20.4.
(d) Where later submitted sheets referred to in paragraph (a) are received after the expiration of the applicable time limit referred to in Rule 20.7, the receiving Office shall proceed as provided in Section 310 ter .
310 bis Procedure in the Case of Later Submitted Sheets Resulting in the Correction of the International Filing Date under Rule 20.5(c)
(a) Where, following the receipt of later submitted sheets referred to in Sections 309(a) or 310(a) within the applicable time limit referred to in Rule 20.7, the international filing date has been corrected under Rule 20.5(c), the receiving Office shall, in addition to proceeding under Sections 309(c)(i) to (iii), or 310(b)(i) to (iii), as the case may be:
(i) draw the attention of the applicant to the procedure available under Rule 20.5(e);
(ii) proceed under Sections 309(c)(iv) or (v), or 310(b)(iv) or (v), as the case may be, but only after the expiration of the time limit under Rule 20.5(e) and only where the applicant has not made a request under that Rule.
(b) Where the applicant requests within the time limit under Rule 20.5(e) that the missing part concerned be disregarded, the receiving Office shall:
(i) restore the international filing date to that which had applied prior to its correction under Rule 20.5(c);
(ii) indelibly mark, in the middle of the bottom margin of each sheet containing the missing part concerned, the words “NOT TO BE CONSIDERED (RULE 20.5(e))”, or their equivalent in the language of publication of the international application;
(iii) notify the applicant that the missing part is considered not to have been furnished and that the
international filing date has been restored to that which had applied prior to its correction under Rule 20.5(c);
(iv) keep in its files a copy of the later submitted sheets marked under item (ii) and of the request made under Rule 20.5(e);
(v) where transmittals under Article 12(1) have already been made, notify the International Bureau and the International Searching Authority accordingly, and transmit a copy of the corrected first and last sheets of the request, the later submitted sheets marked under item (ii) and the request made under Rule 20.5(e) to the said Bureau and a copy thereof to the said Authority;
(vi) where transmittals under Article 12(1) have not yet been made, notify the International Bureau accordingly and attach the later submitted sheets marked under item (ii), the notice under Rule 20.6(a) and the request under Rule 20.5(e) to the record copy.
310 ter Procedure in the Case of Later Submitted Sheets Furnished after the Expiration of the Applicable Time Limit Referred to in Rule 20.7
Where later submitted sheets referred to in Sections 309(a) or 310(a) are received after the expiration of the applicable time limit referred to in Rule 20.7, the receiving Office shall:
(i) notify the applicant of the fact and of the date of receipt of the later submitted sheets, and of the fact that they will not be considered for the PCT procedure;
(ii) indelibly mark, in the middle of the bottom margin of each sheet containing the missing element or part concerned, the words “NOT TO BE CONSIDERED (RULE 20.7)”, or their equivalent in the language of publication of the international application;
(iii) keep in its files a copy of the later submitted sheets marked under item (ii) and, where applicable, of the notice under Rule 20.6(a);
(iv) where transmittals under Article 12(1) have already been made, notify the International Bureau accordingly, and transmit the later submitted sheets
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marked under item (ii) and, where applicable, the notice under Rule 20.6(a) to the said Bureau;
(v) where transmittals under Article 12(1) have not yet been made, notify the International Bureau accordingly, and attach the later submitted sheets marked under item (ii) and, where applicable, the notice under Rule 20.6(a) to the record copy.
311 Renumbering in the Case of Deletion, Substitution or Addition of Sheets of the International Application and of the Translation Thereof
(a) The receiving Office shall, subject to Section 207, sequentially renumber the sheets of the international application when necessitated by the addition of any new sheet, the deletion of entire sheets, a change in the order of the sheets or any other reason.
(b) The sheets of the international application shall be provisionally renumbered in the following manner:
(i) when a sheet is deleted, the receiving Office shall either include a blank sheet with the same number and with the word “DELETED,” or its equivalent in the language of publication of the international application, below the number, or insert, in brackets, below the number of the following sheet, the number of the deleted sheet with the word “DELETED” or its equivalent in the language of publication of the international application;
(ii) when one or more sheets are added, each sheet shall be identified by the number of the preceding sheet followed by a slant and then by another Arabic numeral such that the additional sheets are numbered consecutively, starting always with number one for the first sheet added after an unchanged sheet (e.g., 10/1, 15/1, 15/2, 15/3, etc.); when later additions of sheets to an existing series of added sheets are necessary, an extra numeral shall be used for identifying the further additions (e.g., 15/1, 15/1/1, 15/1/2, 15/2, etc.).
(c) In the cases mentioned in paragraph (b), it is recommended that the receiving Office should write, below the number of the last sheet, the total number of the sheets of the international application followed by the words “TOTAL OF SHEETS” or their equivalent in the language of publication of the
international application. It is further recommended that, at the bottom of any last sheet added, the words “LAST ADDED SHEET” or their equivalent in the language of publication of the international application should be inserted.
(d) Paragraphs (a) to (c) shall apply mutatis mutandis to any translation of the international application furnished under Rule 12.3 or 12.4.
312 Notification of Decision Not to Issue Declaration that the International Application Is Considered Withdrawn
Where the receiving Office, after having notified the applicant under Rule 29.4(a) of its intent to issue a declaration under Article 14(4), decides not to issue such a declaration, it shall notify the applicant accordingly.
313 Documents Filed with the International Application; Manner of Marking the Necessary Annotations in the Check List
(a) Any power of attorney, any priority document, any fee calculation sheet and any separate sheet referred to in Section 209(a) containing indications as to deposited biological material, filed with the international application shall accompany the record copy; any other document referred to in Rule 3.3(a)(ii) shall be sent only at the specific request of the International Bureau. If any document which is indicated in the check list as accompanying the international application is not, in fact, filed at the latest by the time the record copy leaves the receiving Office, that Office shall so note on the check list and the said indication shall be considered as if it had not been made.
(b) Where, under Rule 3.3(b), the receiving Office itself completes the check list, that Office shall enter, in the margin, the words “COMPLETED BY RO” or their equivalent in the language of publication of the international application. Where only some of the indications are completed by the receiving Office, the said words and each indication completed by that Office shall be identified by an asterisk.
(c) Any sequence listing not forming part of the international application, whether on paper or in electronic form, that is furnished for the purposes of the international search to the receiving Office
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together with the international application or subsequent to the filing of the international application, shall be transmitted to the International Searching Authority together with the search copy. Where such a sequence listing is received by the receiving Office after the transmittal of the search copy, that sequence listing shall be promptly transmitted to the International Searching Authority.
314 Correction or Addition of a Priority Claim Under Rule 26 bis
(a) Where the applicant, in a notice submitted to the receiving Office, corrects or adds a priority claim under Rule 26 bis , that Office shall enter the correction or addition in the request, draw a line through, while still leaving legible, any indication deleted as a result of the correction, and enter, in the margin, the letters “RO.”
(b) The applicant and, if copies of the international application have already been sent to the International Bureau and the International Searching Authority, that Bureau and that Authority shall be promptly notified by the receiving Office of any correction or addition of a priority claim under Rule 26 bis and of the date on which it received such correction or addition.
315 [Deleted]
316 Procedure in the Case Where the International Application Lacks the Prescribed Signature
Where, under Article 14(1)(a)(i), the receiving Office finds that the international application is defective in that it lacks the prescribed signature, that Office shall send to the applicant, together with the invitation to correct under Article 14(1)(b), a copy of the relevant sheet of the request part of the international application. The applicant shall, within the prescribed time limit, return said copy after affixing thereto the prescribed signature.
317 Transmittal of a Notice of Correction or Addition of a Declaration under Rule 26ter.1
If a notice under Rule 26 ter.1 is submitted by the applicant to the receiving Office, that Office shall mark the date of receipt on the notice and transmit
it promptly to the International Bureau. The notice shall be considered to have been received by the International Bureau on the date marked.
318 Cancellation of Designations of Non-Contracting States
The receiving Office shall cancel ex officio the designation of any State which is not a Contracting State, shall enclose that designation within square brackets, shall draw a line between the square brackets while still leaving the designation legible, shall enter, in the margin, the words “CANCELLED EX OFFICIO BY RO” or their equivalent in the language of publication of the international application, and shall promptly notify the applicant accordingly. If the record copy has already been sent to the International Bureau, the receiving Office shall also notify that Bureau.
319 Procedure under Rule 4.9(b)
(a) Where the receiving Office finds that the request contains an indication under Rule 4.9(b) that the designation of a State is not made but the request does not contain a priority claim to an earlier national application filed in that State, the receiving Office shall promptly notify the applicant accordingly and shall draw the applicant’s attention to Rule 26 bis .
(b) If the receiving Office does not, before the expiration of the time limit under Rule 26 bis.1(a), receive a notice correcting or adding a priority claim to an earlier national application filed in the State, the designation of which is not made, it shall cancel ex officio the indication under Rule 4.9(b), shall enclose that indication in square brackets, draw a line between the square brackets while still leaving the indication legible, enter, in the margin, the words “CANCELLED EX OFFICIO BY RO” or their equivalent in the language of publication of the international application, and promptly notify the applicant accordingly. If the record copy has already been sent to the International Bureau, the receiving Office shall also notify that Bureau.
320 Invitation to Pay Fees under Rule 16 bis.1(a)
When issuing an invitation under Rule 16 bis.1(a), the receiving Office shall, if it received moneys from
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the applicant before the due date, inform the applicant of the fees to which those moneys have been applied.
321 Application of Moneys Received by the Receiving Office in Certain Cases
(a) The receiving Office shall, to the extent that it has received instructions from the applicant as to the fees to which it shall apply moneys received by it from the applicant, apply those moneys accordingly.
(b) Where the receiving Office receives moneys from the applicant which, together with any other moneys so received, are not sufficient to cover in full the transmittal fee (if any), the international filing fee and the search fee (if any), the receiving Office shall, to the extent that it has not received instructions from the applicant as to the fees to which it shall apply the moneys which are available for the purpose, apply those moneys in payment, successively, of the fees set out below to the extent that they are due and unpaid and in the order in which they appear below:
(i) the transmittal fee;
(ii) the international filing fee;
(iii) the search fee.
322 Invitation to Submit a Request for Refund of the Search Fee
The receiving Office may, before making a refund of the search fee under Rule 16.2, first invite the applicant to submit a request for the refund.
323 Transmittal of Priority Documents to International Bureau
(a) Any priority document which is submitted to the receiving Office under Rule 17.1(a) shall be transmitted by that Office to the International Bureau together with the record copy or, if received after the record copy has been sent to the International Bureau, promptly after having been received by that Office.
(b) Where the priority document is issued by the receiving Office and the applicant has, not later than 16 months after the priority date, requested the receiving Office under Rule 17.1(b) to prepare and
transmit it to the International Bureau, the receiving Office shall, promptly after receipt of such request (“request for priority document”) and, where applicable, the payment of the fee referred to in that Rule, transmit the priority document to the International Bureau. Where such request for priority document has been made but the required fee has not been paid, the receiving Office shall promptly notify the applicant that the request for priority document will be considered not to have been made unless the fee is paid not later than 16 months after the priority date or, in the case referred to in Article 23(2), not later than at the time the processing or examination of the international application is requested.
(c) When transmitting a priority document, the receiving Office shall notify the International Bureau of the date on which it received the priority document or the request for priority document.
(d) Where a request for priority document has, under paragraph (b), been considered not to have been made, the receiving Office shall promptly notify the International Bureau. Where the receiving Office fails to notify the International Bureau accordingly within 17 months from the priority date, the receiving Office shall prepare and transmit the priority document to the International Bureau even though the required fee has not been paid by the applicant.
(e) Where a request for priority document has been received by the receiving Office later than 16 months after the priority date, or where such request has, under paragraph (b), been considered not to have been made, the receiving Office shall promptly notify the applicant accordingly, directing attention to the requirements of Rule 17.1(a).
324 Copy of Notification of the International Application Number and the International Filing Date under Rule 20.2(c)
The copy, sent to the International Bureau, of the notification of the international application number and the international filing date under Rule 20.2(c) shall also include, if the priority of an earlier application is claimed in the international application, the date of filing – as indicated in the international application – of that earlier application.
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If the priority of several earlier applications is claimed, the earliest filing date shall be indicated.
325 Corrections of Defects under Rule 26.4, Rectifications of Obvious Mistakes under Rule 91, and Corrections under Rule 9.2
(a) Where the receiving Office receives a correction of defects under Rule 26.4 or authorizes a rectification of an obvious mistake under Rule 91, it shall:
(i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
(ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “SUBSTITUTE SHEET (RULE 26)” (where the replacement sheet contains a correction of defects under Rule 26) or “RECTIFIED SHEET (RULE 91)” (where the replacement sheet contains the rectification of an obvious mistake under Rule 91) or their equivalent in the language of publication of the international application;
(iii) indelibly mark on the letter containing the correction or rectification, or accompanying any replacement sheet, the date on which that letter was received;
(iv) keep in its files a copy of the letter containing the correction or rectification or, when the correction or rectification is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet, and a copy of the replacement sheet;
(v) subject to item (vi), promptly transmit any letter and any replacement sheet to the International Bureau, and a copy thereof to the International Searching Authority;
(vi) where transmittals under Article 12(1) have not yet been made, transmit any letter and any replacement sheet to the International Bureau together with the record copy and, except where the international application is considered withdrawn and Rule 29.1(iii) applies, a copy of the said letter or replacement sheet to the International Searching Authority together with the search copy. The record copy and the search copy shall contain any replaced sheet.
(b) Where the receiving Office refuses to authorize the rectification of an obvious mistake under Rule 91, it shall proceed as indicated under paragraph (a)(i), (iii) and (iv) and promptly transmit any letter and any proposed replacement sheet to the International Bureau. If the record copy has not yet been sent to the International Bureau, any letter and any proposed replacement sheet shall be transmitted together with the record copy.
(c) Where the receiving Office receives corrections aimed at complying with Rule 9.1, paragraphs (a) and (b) shall apply mutatis mutandis, provided that, where a sheet is marked as indicated in paragraph (a)(ii), the words “SUBSTITUTE SHEET (RULE 9.2)” shall be used.
326 Withdrawal by Applicant under Rule 90 bis.1, 90 bis.2 or 90 bis.3
(a) The receiving Office shall promptly transmit to the International Bureau any notice from the applicant effecting withdrawal of the international application under Rule 90 bis.1, of a designation under Rule 90 bis.2 or of a priority claim under Rule 90 bis.3 which has been filed with it together with an indication of the date of receipt of the notice. If the record copy has not yet been sent to the International Bureau, the receiving Office shall transmit the said notice together with the record copy.
(b) If the search copy has already been sent to the International Searching Authority and the international application is withdrawn under Rule 90 bis.1 or a priority claim is withdrawn under Rule 90 bis.3, the receiving Office shall promptly transmit a copy of the notice effecting withdrawal to the International Searching Authority.
(c) If the search copy has not yet been sent to the International Searching Authority and the international application is withdrawn under Rule 90 bis.1, the receiving Office shall not send the search copy to the International Searching Authority and shall, subject to Section 322, refund the search fee to the applicant unless it has already been transferred to the International Searching Authority. If the search fee has already been transferred to the International Searching Authority, the receiving Office shall send a copy of the request and of the notice effecting withdrawal to that Authority.
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(d) If the search copy has not yet been sent to the International Searching Authority and a priority claim is withdrawn under Rule 90 bis.3, the receiving Office shall transmit a copy of the notice effecting withdrawal to the International Searching Authority together with the search copy.
327 Ex Officio Correction of Request by the Receiving Office
(a) Subject to paragraph (d), where the record copy has not yet been sent to the International Bureau and the request requires correction because it contains an inconsistency or a minor defect such as non-compliance with the requirement for indications under Section 115, the receiving Office may correct the request ex officio. If the receiving Office does so, it shall notify the applicant accordingly.
(b) When making a correction under paragraph (a), the receiving Office shall enter, in the margin, the letters “RO.” Where any matter is to be deleted, the receiving Office shall enclose such matter within square brackets and shall draw a line between the square brackets while still leaving the deleted matter legible. Where any matter is to be replaced, both the first and second sentences of this paragraph shall apply.
(c) The receiving Office shall check the number of characters of the file reference, if any, and shall delete any characters beyond the number permitted by Section 109.
(d) The receiving Office shall not make any ex officio correction to declarations referred to in Rule 4.17 which are contained in the request.
328 Notifications Concerning Representation
(a) Where a power of attorney or a document containing the revocation or renunciation of an appointment is submitted to the receiving Office and the record and search copies have already been transmitted, the receiving Office shall immediately notify the International Bureau and the International Searching Authority by sending them a copy of the power of attorney or document and request the International Bureau to record a change in the indications concerning the agent or common representative under Rule 92 bis.1(a)(ii).
(b) If the record copy and/or search copy have not yet been transmitted by the receiving Office, a copy of the power of attorney or document containing the revocation or renunciation of an appointment shall be transmitted by the receiving Office with the record copy and/or search copy.
329 Correction of Indications Concerning the Applicant’s Residence or Nationality
Where, in response to an invitation to correct a defect under Article 11(1)(i), evidence is submitted indicating to the satisfaction of the receiving Office that, in fact, the applicant had, on the date on which the international application was actually received, the right to file an international application with that receiving Office, the invitation shall be considered to be an invitation to correct a defect under Article 14(1)(a)(ii) and Rule 4.5 in the prescribed indications concerning the applicant’s residence and/or nationality, and the applicant may correct those indications accordingly. If such correction is made, no defect shall be considered to exist under Article 11(1)(i).
330 Transmittal of Record Copy Prevented or Delayed by National Security Prescriptions
(a) Where prescriptions concerning national security prevent the transmittal of the record copy by the receiving Office to the International Bureau under Rule 22.1(a), the receiving Office shall notify the applicant and the International Bureau accordingly.
(b) The notifications under paragraph (a) shall be sent before the expiration of 13 months from the priority date. Where the receiving Office believes that national security clearance is imminent, it may postpone the sending of the notifications, but shall send them before the expiration of 17 months from the priority date if no clearance has been given by that time.
331 Receipt of Confirmation Copy
Where, subject to Rule 92.4, the receiving Office receives an international application by facsimile machine transmission and subsequently receives the original of that international application, it shall mark such original with the words “CONFIRMATION
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COPY” or their equivalent in the language of publication of the international application on the bottom of the first page of the request and on the first page of the description. The marking under Section 325 is not required in such a case. The international application as received by facsimile machine transmission shall constitute the record copy. The confirmation copy shall be transmitted to the International Bureau in addition to the record copy.
332 Notification of Languages Accepted by the Receiving Office under Rules 12.1(a) and (c) and 12.4(a)
(a) Each receiving Office shall notify the International Bureau of the language or languages which, having regard to Rule 12.1(b), it is prepared to accept under Rule 12.1(a) for the filing of international applications.
(b) Each receiving Office shall notify the International Bureau of any change to the information notified under paragraphs (a), (d) and (e). If the change means that
(i) the receiving Office is no longer prepared to accept the filing of international applications in a language that it had previously notified the International Bureau that it was prepared to accept; or
(ii) the receiving Office is no longer prepared to accept the translation of international applications into a language of publication that it had previously notified the International Bureau that it was prepared to accept; or
(iii) the receiving Office is no longer prepared to accept the filing of requests in a language that it had previously notified the International Bureau that it was prepared to accept,
the effective date of such change shall be two months after the date of publication of the notification of the change in the Gazette pursuant to Section 405 or such later date as may be determined by the receiving Office.
(c) Nothing in paragraph (a), (b), (d) or (e) prevents any receiving Office from accepting, in a particular case,
(i) the filing of an international application in a language that it has not notified the International Bureau that it is prepared to accept; or
(ii) the translation of an international application into a language of publication that it has not notified the International Bureau that it is prepared to accept; or
(iii) the filing of a request in a language that it has not notified the International Bureau that it is prepared to accept.
(d) Each receiving Office concerned shall notify the International Bureau of the language or languages which it is prepared to accept under Rule 12.4(a) for the translation of international applications into a language of publication.
(e) Each receiving Office shall notify the International Bureau of the language or languages which it is prepared to accept under Rule 12.1(c) for the filing of requests.
333 Transmittal of International Application to the International Bureau as Receiving Office
(a) Where a national Office intends to proceed under Rule 19.4(b) having regard to Rule 19.4(a)(i) or (ii), it shall, if it requires payment of the fee referred to in Rule 19.4(b) and that fee has not already been paid, promptly invite the applicant to pay that fee within a time limit of 15 days from the date of the invitation.
(b) Where a national Office intends to proceed under Rule 19.4(b) having regard to Rule 19.4(a)(iii), it shall promptly request the International Bureau as receiving Office to agree to the transmittal of the international application. The International Bureau as receiving Office shall promptly respond to that request. If the International Bureau as receiving Office agrees to the transmittal, the national Office shall promptly invite the applicant:
(i) if the transmittal has not already been authorized by the applicant, to submit to that Office, within a time limit of 15 days from the date of the invitation, an authorization of the transmittal, and,
(ii) if the Office requires payment of the fee referred to in Rule 19.4(b) and that fee has not already been paid, to pay that fee within the time limit referred to in item (i).
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(c) The national Office:
(i) need not proceed under Rule 19.4(b) having regard to Rule 19.4(a)(i) to (iii) if the Office requires payment of the fee referred to in Rule 19.4(b) and the applicant does not pay that fee;
(ii) shall not proceed under Rule 19.4(b) having regard to Rule 19.4(a)(iii) if the International Bureau as receiving Office does not agree to, or if the applicant does not authorize, the transmittal of the international application under Rule 19.4(a)(iii).
334 Notification to Applicant of Submission of Demand after the Expiration of 19 Months from the Priority Date
Where the demand is submitted after the expiration of 19 months from the priority date to a receiving Office and the time limit under Article 22(1), as in force from April 1, 2002, does not apply in respect of all designated Offices, the receiving Office shall:
(i) promptly notify the applicant accordingly, directing attention to the fact that the time limit under Article 39(1)(a) does not apply, and that Article 22(1), as in force until March 31, 2002, continues to apply in respect of any such designated Office, and
(ii) proceed under Rule 59.3.
335 [Deleted]
336 Waivers under Rules 90.4(d) and 90.5(c)
(a) Where, in accordance with Rule 90.4(d), a receiving Office waives the requirement under Rule 90.4(b) that a separate power of attorney be
submitted to it, the receiving Office shall notify the International Bureau accordingly.
(b) Where, in accordance with Rule 90.5(c), a receiving Office waives the requirement under Rule 90.5(a)(ii) that a copy of a general power of attorney be attached to the request or any separate notice, the receiving Office shall notify the International Bureau accordingly.
(c) A receiving Office may require a separate power of attorney, or a copy of a general power of attorney, in particular instances even if the receiving Office has waived the requirement in general.
(d) A receiving Office which has notified the International Bureau under paragraph (a) or (b) shall notify the International Bureau of any change to the information notified under those paragraphs.
337 Transmittal of copy of results of earlier search
Where the applicant has
(i) submitted a copy of the results of an earlier search to the receiving Office under Rule 12 bis.1(a) together with the international application; or
(ii) requested the receiving Office under Rule 12 bis.1(c) to prepare and transmit a copy of the results of the earlier search, a copy of the earlier application concerned and/or a copy of any document cited in the results of the earlier search;
the receiving Office shall promptly transmit any such copy to the International Searching Authority, preferably together with the search copy.
PART 4
INSTRUCTIONS RELATING TO THE INTERNATIONAL BUREAU
401 Marking of the Sheets of the Record Copy
(a) The International Bureau shall, upon receipt of the record copy, mark the date of receipt of the record copy in the appropriate space on the request.
(b) If the receiving Office has failed to mark any sheet as provided in Sections 311 and 325, the
marking which has not been made may be inserted by the International Bureau.
402 Correction or Addition of a Priority Claim under Rule 26 bis
(a) Where the applicant, in a notice submitted to the International Bureau, corrects or adds a priority claim under Rule 26 bis , that Bureau shall
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enter the correction or addition in the request, draw a line through, while still leaving legible, any indication deleted as a result of the correction, and enter, in the margin, the letters “IB”.
(b) [Deleted]
(c) The applicant, the receiving Office and the International Searching Authority shall be promptly notified by the International Bureau of any correction or addition of a priority claim under Rule 26 bis and of the date on which it received such correction or addition.
403 Transmittal of Protest Against Payment of Additional Fees and Decision Thereon Where International Application Is Considered to Lack Unity of Invention
Where, under Rules 40.2(c) or 68.3(c), the International Bureau receives a request from the applicant to forward to any designated or elected Office the texts of both the protest against payment of additional fees as provided for in Articles 17(3)(a) and 34(3)(a) where the international application is considered to lack unity of invention and the decision thereon by the International Searching Authority or the International Preliminary Examining Authority, as the case may be, it shall proceed according to such request.
404 International Publication Number of International Application
The International Bureau shall assign to each published international application an international publication number which shall be different from the international application number. The international publication number shall be used on the published international application and in the Gazette entry. It shall consist of the two-letter code “WO” followed by a four-digit indication of the year
of publication, a slant, and a serial number consisting of six digits (e.g., “WO 2004/123456”).
405 Publication of Notifications of Languages Accepted by the receiving Office under Rules 12.1(a) and (c) and 12.4(a)
The International Bureau shall promptly publish in the Gazette any notification under Section 332(a), (b), (d) or (e).
406 Publication of InternationalApplications
(a) International applications shall be published on a given day of the week.
(b) International applications may be published, for the purposes of Article 21, on paper or wholly or partly in electronic form.
(c) Details concerning the publication of international applications, and the form and particulars of the front page of each published international application, shall be decided by the Director General, after consultation with the Offices or Authorities which have a direct interest in those details.
407 The Gazette
(a) The Gazette referred to in Rule 86.1 shall be published in electronic form on the Internet. It may be made available by any other electronic means as determined by the Director General after consultation with the Offices and Authorities which have a direct interest in the means by which the Gazette is published.
(b) In addition to the contents specified in Rule 86.1, the Gazette shall contain, in respect of each published international application, the data indicated in Annex D.
(c) The information referred to in Rule 86.1(v) shall be that which is indicated in Annex E.
(d) Details concerning the form and further particular content of the Gazette shall be decided by the Director General after consultation with Offices
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and Authorities which have a direct interest in those details.
408 Priority Application Number
(a) [Deleted]
(b) If the number of the earlier application referred to in Rule 4.10(a)(ii) (“priority application number”) is furnished after the expiration of the prescribed time limit, the International Bureau shall inform the applicant and the designated Offices of the date on which the said number was furnished. It shall indicate the said date in the international publication by including on the front page of the published international application next to the priority application number the words “FURNISHED LATE ON... (date),” and the equivalent of such words in the language in which the international application is published if that language is other than English.
(c) If the priority application number has not been furnished at the time of the completion of the technical preparations for international publication, the International Bureau shall indicate that fact by including on the front page of the published international application in the space provided for the priority application number the words “NOT FURNISHED” and the equivalent of such words in the language in which the international application is published if that language is other than English.
409 Priority Claim Considered Not to Have Been Made
Where the International Bureau declares, under Rule 26 bis.2(b), that a priority claim is considered not to have been made, that Bureau shall enclose the priority claim concerned within square brackets, draw a line between the square brackets, while still leaving legible the indications concerned, and enter, in the margin, the words “NOT TO BE CONSIDERED FOR PCT PROCEDURE (IB)” or their equivalent in the language of publication of the international application, and shall notify the applicant accordingly. The International Bureau shall
also notify the receiving Office and the International Searching Authority.
410 Numbering of Sheets for the Purposes of International Publication; Procedure in Case of Missing Sheets
(a) In the course of preparing the international application for international publication, the International Bureau shall sequentially renumber the sheets to be published only when necessitated by the addition of any new sheet, the deletion of entire sheets or a change in the order of the sheets. Otherwise, the numbering provided under Section 207 shall be maintained.
(b) Where a sheet has not been filed or is not to be taken into consideration for the purposes of international processing under Section 310 bis or 310 ter , the International Bureau shall include an indication to that effect in the published international application.
411 Receipt of Priority Document
(a) The International Bureau shall, in respect of any priority document received or obtained by it, record the date on which the priority document has been received or obtained by it, and notify the applicant and the designated Offices accordingly. The notification should indicate whether the priority document was or was not submitted, transmitted, or obtained in compliance with Rule 17.1(a), (b) or (b- bis), and with respect to the designated Offices, should preferably be made together with the notification under Rule 47.1(a- bis ).
(b) Where the priority document has been submitted, transmitted, or obtained but not in compliance with Rule 17.1(a), (b) or (b- bis), the International Bureau shall, in the notification under paragraph (a) of this Section, direct the attention of the applicant and the designated Offices to the provisions of Rule 17.1(c).
411 bis Receipt of Translation of Earlier Application under Rule 20.6(a)(iii)
The International Bureau shall indicate the words “TRANSLATION (RULE 20.6(a)(iii))”, or their
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equivalent in French, on any translation received under Rule 20.6(a)(iii).
412 Notification of Lack of Transmittal of Search Copy
If the International Bureau does not receive from the International Searching Authority a notification under Rule 25.1 within two months from the date of receipt of the record copy, the International Bureau shall remind the receiving Office to transmit the search copy to the International Searching Authority. A copy of the reminder shall be sent to the International Searching Authority.
413 Incorporations by Reference under Rule 20, Corrections of Defects under Rule 26.4, Rectifications of Obvious Mistakes under Rule 91, and Corrections under Rule 9.2
(a) Where the International Bureau receives from the receiving Office a letter containing a correction of any defects under Rule 26.4, or a replacement sheet and the letter accompanying it, the International Bureau shall transfer the correction to the record copy, together with the indication of the date on which the receiving Office received the letter, or shall insert the replacement sheet in the record copy. Any letter and any replaced sheet shall be kept in the file of the international application.
(b) Paragraph (a) shall apply mutatis mutandis to rectifications of obvious mistakes under Rule 91 authorized by the receiving Office, by the International Searching Authority or, where a demand has been made, by the International Preliminary Examining Authority and to corrections submitted by the applicant to the receiving Office or the International Searching Authority aimed at complying with the prescription of Rule 9.1 concerning certain expressions, drawings, statements or other matter.
(b- bis) Where the International Bureau receives from the receiving Office, under Sections 309(c)(iv), 310(b)(iv), or 310 bis(b)(v), corrected sheets of the request or later submitted sheets, the International Bureau shall transfer any correction to the record copy and insert any later submitted sheets in the record copy.
(c) Where the International Bureau is notified by the International Searching Authority under Rule 43.6 bis(b) that the rectification of an obvious mistake authorized under Rule 91 has not been taken into account for the purposes of the international search, the International Bureau shall notify the applicant, the designated Offices and, where a demand has been made, the International Preliminary Examining Authority accordingly.
(d) Where the International Bureau is notified by the International Preliminary Examining Authority under Rule 70.2(e) that the rectification of an obvious mistake authorized under Rule 91 has not been taken into account for the purposes of the international preliminary examination, the International Bureau shall notify the applicant and the elected Offices accordingly.
413 bis Rectifications of Obvious Mistakes under Rule 91
(a) Where the International Bureau authorizes a rectification under Rule 91, it shall:
(i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
(ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “RECTIFIED SHEET (RULE 91)” or their equivalent in the language of publication of the international application;
(iii) indelibly mark on the letter containing the rectification or accompanying any replacement sheet the date on which that letter was received;
(iv) keep in its files a copy of the letter containing the rectification or, when the rectification is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet, and a copy of the replacement sheet.
(b) Where the International Bureau refuses to authorize a rectification under Rule 91, it shall proceed as indicated under paragraph (a)(i), (iii) and (iv).
(c) Where the International Bureau authorizes or refuses to authorize the rectification of an obvious mistake under Rule 91, it shall notify the applicant, the International Searching Authority, where a
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demand has been made, the International Preliminary Examining Authority, as well as the designated or elected Offices accordingly and, where the International Bureau refuses to authorize a rectification, the notification shall also include the reasons for the refusal.
414 Notification to the International Preliminary Examining Authority Where the International Application is Considered Withdrawn
If a demand has been submitted and the international application is considered withdrawn under Article 14(1), (3) or (4), the International Bureau shall promptly notify the International Preliminary Examining Authority, unless the international preliminary examination report has already issued.
415 Notification of Withdrawal Under Rule 90 bis.1, 90 bis.2, 90 bis.3, 90 bis.3 bis or 90 bis.4
(a) The fact of withdrawal by the applicant of the international application under Rule 90 bis.1, of designations under Rule 90 bis.2, or of a priority claim under Rule 90 bis.3, together with the date on which the notice effecting withdrawal reached the International Bureau, the International Preliminary Examining Authority or the receiving Office, shall be recorded by the International Bureau and promptly notified by it to the receiving Office, the applicant, the designated Offices affected by the withdrawal and, where the withdrawal concerns the international application or a priority claim and where the international search report, or the declaration referred to in Article 17(2)(a), and the written opinion of the International Searching Authority have not yet issued, the International SearchingAuthority. However, where the withdrawal concerns the international application and where the notice effecting withdrawal was filed with the receiving Office before the sending of the record copy to the International Bureau, that Bureau shall send the notifications referred to in the preceding sentence and in Rule 24.2(a) to the receiving Office and the applicant only.
(b) If, at the time of the withdrawal of the international application under Rule 90 bis.1, or of a priority claim under Rule 90 bis.3, a demand has
already been submitted and the international preliminary examination report has not yet issued, the International Bureau shall, unless the notice effecting withdrawal was submitted to the International Preliminary Examining Authority, promptly notify the fact of withdrawal to that Authority, together with the date on which the notice effecting withdrawal has reached the International Bureau or the receiving Office.
(c) If, at the time of the withdrawal of the international application under Rule 90 bis.1, or of a priority claim under Rule 90 bis.3, a supplementary search request has already been submitted and the supplementary international search report has not yet been established, the International Bureau shall promptly notify the fact of withdrawal to the Authority specified for supplementary search, together with the date on which the notice effecting withdrawal has reached the International Bureau or the receiving Office.
(d) The fact of withdrawal by the applicant of the supplementary search request under Rule 90 bis.3 bis, together with the date on which the notice effecting withdrawal was, or was considered to have been, submitted to the International Bureau, shall be promptly notified by that Bureau:
(i) to the applicant, and
(ii) to the Authority specified for supplementary search, unless the notice effecting withdrawal was submitted to that Authority.
(e) The fact of withdrawal by the applicant of the demand or of one or more elections under Rule 90 bis.4, together with the date on which the notice effecting withdrawal was, or was considered to have been, submitted to the International Bureau, shall be promptly notified by that Bureau:
(i) to the applicant,
(ii) to each elected Office affected by the withdrawal, except where it has not yet been notified of its election, and
(iii) in the case of withdrawal of the demand or of all elections, to the International Preliminary
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Examining Authority, unless the notice effecting withdrawal was submitted to that Authority.
416 Correction of Request in Record Copy
(a) Where the request requires correction as a consequence of the withdrawal of a designation or of a change made under Rule 92 bis , the International Bureau shall make the necessary correction in the record copy and shall notify the applicant and the receiving Office accordingly.
(b) When making a correction under paragraph (a), the International Bureau shall enter, in the margin, the letters “IB.” Where the correction involves the deletion or replacement of some matter, the International Bureau shall enclose such matter within square brackets and shall draw a line between the square brackets while still leaving the deleted or replaced matter legible.
417 Processing of Amendments Under Article 19
(a) The International Bureau shall record the date on which, under Rule 46.1, any amendment made under Article 19 was received, shall notify the applicant of that date and indicate it in any publication or copy issued by it.
(b) The International Bureau shall mark, in the upper right-hand corner of each replacement sheet submitted under Rule 46.5(a), the international application number, the date on which that sheet was received under Rule 46.1 and, in the middle of the bottom margin, the words “AMENDED SHEET (ARTICLE 19).” It shall keep in its files any replaced sheet and the letter accompanying the replacement sheet or sheets.
(c) The International Bureau shall insert any replacement sheet or sheets in the record copy.
(d) If, at the time when the demand is received by the International Bureau, the international search report and the written opinion of the International Searching Authority have been established and no amendments under Article 19 have been made, the International Bureau shall inform the International Preliminary ExaminingAuthority accordingly, unless
the Authority has informed the International Bureau that it wishes not to be so notified.
418 Notifications to Elected Offices Where the Demand Is Considered Not to Have Been Submitted or Made
Where, after any elected Office has been notified of its election under Article 31(7), the demand is considered not to have been submitted or made, the International Bureau shall notify the said Office accordingly.
419 Processing of a Declaration under Rule 26 ter
(a) Where any declaration referred to in Rule 4.17, or any correction thereof under Rule 26 ter.1, is submitted to the International Bureau within the time limit under Rule 26 ter.1, the International Bureau shall indicate the date on which it received the declaration or correction and insert the additional sheet or replacement sheet in the record copy.
(b) The International Bureau shall promptly notify the applicant, the receiving Office and the International Searching Authority of any declaration corrected or added under Rule 26 ter.1.
(c) The International Bureau shall not make any ex officio correction to declarations referred to in Rule 4.17 which are contained in the request.
(d) Where any declaration referred to in Rule 4.17, or any correction thereof under Rule 26 ter .1, is submitted to the International Bureau after the expiration of the time limit under Rule 26 ter.1, the International Bureau shall notify the applicant accordingly and inform the applicant that such a declaration or correction should be submitted directly to the designated Office or Offices concerned. Any declaration referred to in Rule 4.17(iv), signed as prescribed in Section 214, which is submitted to the International Bureau after the expiration of the time limit under Rule 26 ter.1 shall be returned to the applicant.
420 Copy of International Application, International Search Report and Supplementary International Search Report
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for the International Preliminary Examining Authority
(a) Where the International Preliminary Examining Authority is not part of the same national Office or intergovernmental organization as the International Searching Authority, the International Bureau shall, promptly upon receipt of the international search report or, if the demand was received after the international search report, promptly upon receipt of the demand, send a copy of the international application, the international search report and, where applicable, a copy of the English translation of the said report to the International Preliminary Examining Authority. In cases where, instead of the international search report, a declaration under Article 17(2)(a) was issued, references in the preceding sentence to the international search report shall be considered references to the said declaration.
(b) Where an Authority specified for supplementary search has established a supplementary international search report under Rule 45 bis.7, and the International Preliminary Examining Authority is not part of the same national Office or intergovernmental organization as the Authority specified for supplementary search, the International Bureau shall, promptly upon receipt of the supplementary international search report, send a copy of the supplementary international search report and, where applicable, a copy of the English translation of the said report to the International Preliminary Examining Authority (Rule 45 bis.8(c)). In cases where, instead of the supplementary international search report, a declaration under Article 17(2)(a) was issued, references in the preceding sentence to the supplementary international search report shall be considered references to the said declaration.
421 Invitation to Furnish a Copy of the Priority Document
Where a request for a copy of the application whose priority is claimed in the international application is made under Rule 43 bis.1(b) by the International Searching Authority or, under Rule 66.7(a), by either the International Searching Authority, or the International Preliminary Examining Authority before the International Bureau has received the
priority document under Rule 17.1, the International Bureau shall, unless the applicable time limit referred to in Rule 17.1(a) has already expired, inform the applicant of such request and remind him of the requirements of Rule 17.1.
422 Notifications Concerning Changes Recorded Under Rule 92 bis.1
(a) The International Bureau shall give notifications concerning changes recorded by it under Rule 92 bis.1(a), except changes which are the subject of notifications under Section 425:
(i) to the receiving Office;
(ii) as long as the international search report, or the declaration referred to in Article 17(2)(a), and the written opinion of the International Searching Authority have not been established, to the International Searching Authority;
(iii) to the designated Offices unless the change can be duly reflected in the published international application used for the purposes of the communication under Article 20;
(iv) as long as the international preliminary examination report has not been established, to the International Preliminary Examining Authority;
(v) to the elected Offices, unless the change can be duly reflected in the published international application used for the purposes of the communication under Article 20;
(vi) to the applicant; where the change consists of a change in the person of the applicant, the notification shall be sent to the earlier applicant and the new applicant, provided that, where the earlier applicant and the new applicant are represented by the same agent, one notification only shall be sent to the said agent.
(b) Where Rule 92 bis.1(b) applies, the International Bureau shall notify the applicant accordingly and, if the change was requested by the receiving Office, that Office.
422 bis Objections Concerning Changes in the Person of the Applicant Recorded under Rule 92 bis.1(a)
(a) Where a change recorded by the International Bureau under Rule 92 bis.1(a):
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(i) consists of a change in the person of the applicant, and
(ii) the request under Rule 92 bis.1(a) was not signed by or on behalf of both the earlier and the new applicant, and
(iii) the earlier applicant objects to the change in writing,
the change under Rule 92 bis.1(a) shall be considered as if it had not been recorded.
(b) Where paragraph (a) applies, the International Bureau shall notify all those who received a notification under Section 422(a) accordingly.
423 Cancellation of Designations and Elections
(a) The International Bureau shall, if the receiving Office has failed to do so, cancel ex officio the designation of any State which is not a Contracting State, shall enclose that designation within square brackets, draw a line between the square brackets while still leaving the designation legible, enter, in the margin, the words “CANCELLED EX OFFICIO BY IB” or their equivalent in French, and notify the applicant and the receiving Office accordingly.
(b) The International Bureau shall cancel ex officio:
(i) the election of any State which is not a designated State;
(ii) the election of any State not bound by Chapter II of the Treaty, if the International Preliminary Examining Authority has failed to do so.
(c) The International Bureau shall enclose the cancelled election within square brackets, draw a line between the square brackets while still leaving the election legible, enter, in the margin, the words “CANCELLED EX OFFICIO BY IB” or their equivalent in French, and notify the applicant and, if the election is in the demand, the International Preliminary Examining Authority accordingly.
424 Procedure under Rule 4.9(b)
(a) Where the International Bureau finds, if the Receiving Office has failed to do so, that the request
contains an indication under Rule 4.9(b) that the designation of a State is not made but the request does not contain a priority claim to an earlier national application filed in that State, the International Bureau shall promptly notify the applicant accordingly and shall draw the applicant’s attention to Rule 26 bis .
(b) If the International Bureau does not, before the expiration of the time limit under Rule 26 bis.1(a), receive a notice correcting or adding a priority claim to an earlier national application filed in the State, the designation of which is not made, it shall cancel ex officio the indication under Rule 4.9(b), shall enclose that indication in square brackets, draw a line between the square brackets while still leaving the indication legible, enter, in the margin, the words “CANCELLED EX OFFICIO BY IB” or their equivalent in French, and notify the applicant and the receiving Office accordingly.
425 Notifications Concerning Representation
Where a power of attorney or a document containing the revocation or renunciation of an appointment is submitted to the International Bureau, the International Bureau shall immediately notify the receiving Office, the International Searching Authority, the Authority specified for supplementary search and the International Preliminary Examining Authority by sending them a copy of the power of attorney or document and shall record a change in the indications concerning the agent or common representative under Rule 92 bis . In the case of a renunciation of an appointment, the International Bureau shall also notify the applicant. Where the International Bureau receives a notification concerning representation under Section 328, it shall immediately notify the Authority specified for supplementary search and the International Preliminary Examining Authority accordingly.
426-429 [Deleted]
430 Notification of Designations under Rule 32
Where the effects of any international application are extended to a successor State under Rule 32.1(a), the International Bureau shall promptly, but not before the international publication of the
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international application, effect the communication under Article 20 to the designated Office concerned, and notify that Office under Rule 47.1(a- bis )
431 Publication of Notice of Submission of Demand
(a) For international applications in respect of which a demand is filed before January 1, 2004, the publication in the Gazette of information on the demand and the elected States concerned, as referred to in Rule 61.4, as in force until December 31, 2003, shall consist of a notice indicating that a demand has been submitted prior to the expiration of 19 months from the priority date and, as applicable, indicating that all eligible States have been elected or, where not all eligible States have been elected, indicating those eligible States which have not been elected.
(b) For international applications in respect of which a demand is filed on or after January 1, 2004, the publication in the Gazette of information on the demand and the elected States concerned, as referred to in Rule 61.4, as in force from January 1, 2004, shall consist of a notice indicating that a demand has been submitted prior to the expiration of the applicable time limit under Rule 54 bis.1(a) and that all Contracting States which were designated and were bound by Chapter II of the Treaty have been elected. Where the demand is made subsequent to the expiration of 19 months from the priority date and the time limit under Article 22(1), as in force from April 1, 2002, does not apply in respect of all designated Offices, the notice shall also indicate that fact.
432 Notification to Applicant of Submission of Demand after the Expiration of 19 Months from the Priority Date
Where the demand is submitted after the expiration of 19 months from the priority date and subsequently transmitted to the International Bureau under Rule 59.3(a), or is submitted after the expiration of 19 months from the priority date to the International Bureau, and the time limit under Article 22(1), as in force from April 1, 2002, does not apply in respect of all designated Offices, the International Bureau shall, together with the notification sent to the applicant under Rule 59.3(c)(i) or the invitation sent
to the applicant under Rule 59.3(c)(ii), as the case may be:
(i) promptly notify the applicant accordingly, directing attention to the fact that the time limit under Article 39(1)(a) does not apply, and that Article 22(1), as in force until March 31, 2002, continues to apply in respect of any such designated Office,
(ii) proceed under Rule 59.3.
433 Waivers under Rule 90.4(d)
(a) Where, in accordance with Rule 90.4(d), the International Bureau waives the requirement under Rule 90.4(b) that a separate power of attorney be submitted to it, the International Bureau shall publish a notice of this fact in the Gazette.
(b) The International Bureau may require a separate power of attorney in particular instances even if the International Bureau has waived the requirement in general.
434 Publication of Information Concerning Waivers under Rules 90.4(d) and 90.5(c)
(a) Any waivers of the requirement under Rule 90.4(b) that a separate power of attorney be submitted, or any changes to the information, notified to the International Bureau under Sections 336(a), 517(a), or 617(a) shall be promptly published in the Gazette. The effective date of any change shall be two months after the date of publication of the change in the Gazette, or such later date as may be determined by the International Bureau.
(b) Any waivers of the requirement under Rule 90.5(a)(ii) that a copy of a general power of attorney be attached to the request, the demand or any separate notice, or any changes to the information, notified to the International Bureau under Sections 336(b), 517(b), or 617(b) shall be promptly published in the Gazette. The effective date of any change shall be two months after the date of publication of the change in the Gazette, or such later date as may be determined by the International Bureau.
435 Communication of Publications and Documents
(a) Subject to paragraph (b), publications under Rule 87.1 and documents under Rule 93 bis.1 shall be communicated in electronic form via the
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International Bureau’s electronic data exchange services.
(b) Where so agreed between the International Bureau and the Authority or Office concerned, publications under Rule 87.1 and documents under Rule 93 bis.1 may be communicated in other forms and by other means.
(c) Pursuant to Rule 93 bis.1(b), where so agreed between the International Bureau and the Office concerned, the communication of documents under Rule 93 bis.1 shall be considered to be effected at the time when the International Bureau makes the document available to that Office in electronic form via the International Bureau’s electronic data exchange services.
(d) Technical details concerning the communication of publications under Rule 87.1 and
of documents under Rule 93 bis.1 shall be agreed between the International Bureau and the Authority or Office concerned.
436 Preparation, Identification and Transmittal of the Copies of the Translation of the International Application
Where, for the purposes of a supplementary international search, a translation of the international application is furnished under Rule 45 bis.1(c)(i), the International Bureau shall mark the words “TRANSLATION (RULE 45 bis.1(c)(i))” in the upper left-hand corner of the first page of the translation and transmit a copy of that translation to the Authority specified for the supplementary search.
PART 5
INSTRUCTIONS RELATING TO THE INTERNATIONAL SEARCHING AUTHORITY
501 Corrections Submitted to the International Searching Authority Concerning Expressions, Etc., Not to Be Used in the International Application
Where the International SearchingAuthority receives corrections aimed at complying with Rule 9.1, Section 511 shall apply mutatis mutandis, provided that, where a sheet is marked as indicated in Section 511(a)(ii), the words “SUBSTITUTE SHEET (RULE 9.2)” shall be used.
502 Transmittal of Protest against Payment of Additional Fees and Decision Thereon Where International Application Is Considered to Lack Unity of Invention
The International Searching Authority shall transmit to the applicant, preferably at the latest together with the international search report, any decision which it has taken under Rule 40.2(c) on the protest of the applicant against payment of additional fees where the international application is considered to lack
unity of invention. At the same time, it shall transmit to the International Bureau a copy of both the protest and the decision thereon, as well as any request by the applicant to forward the texts of both the protest and the decision thereon to the designated Offices.
503 Method of Identifying Documents Cited in the International Search Report and the Written Opinion of the International Searching Authority
Identification of any document cited in the international search report shall be as provided in WIPO Standard ST.14 (Recommendation for the
Inclusion of References Cited in Patent Documents). 1 Any document cited in the international search report may be referred to in a shortened form in the written opinion of the International Searching
1 Editor’s Note: Published in the WIPO Handbook on Industrial Property Information and Documentation.
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Authority, provided that the reference to the document is unambiguous.
504 Classification of the Subject Matter of the International Application
(a) Where the subject matter of the international application is such that classification thereof requires more than one classification symbol according to the principles to be followed in the application of the International Patent Classification to any given patent document, the international search report shall indicate all such symbols.
(b) Where any national classification system is used, the international search report may indicate all the applicable classification symbols also according to that system.
(c) Where the subject matter of the international application is classified both according to the International Patent Classification and to any national classification system, the international search report shall, wherever possible, indicate the corresponding symbols of both classifications opposite each other.
(d) The version of the International Patent Classification applicable at the time the international application is published under Article 21 shall be used whenever feasible.
505 Indication of Citations of Particular Relevance in the International Search Report
(a) Where any document cited in the international search report is of particular relevance, the special indication required by Rule 43.5(c) shall consist of the letter(s) “X” and/or “Y” placed next to the citation of the said document.
(b) Category “X” is applicable where a document is such that when taken alone, a claimed invention cannot be considered novel or cannot be considered to involve an inventive step.
(c) Category “Y” is applicable where a document is such that a claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents,
such combination being obvious to a person skilled in the art.
506 [Deleted]
507 Manner of Indicating Certain Special Categories of Documents Cited in the International Search Report
(a) Where any document cited in the international search report refers to an oral disclosure, use, exhibition, or other means referred to in Rule 33.1(b), the separate indication required by that Rule shall consist of the letter “O” placed next to the citation of the said document.
(b) Where any document cited in the international search report is a published application or patent as defined in Rule 33.1(c), the special mention required by that Rule shall consist of the letter “E” placed next to the citation of the said document.
(c) Where any document cited in the international search report is not considered to be of particular relevance requiring the use of categories “X” and/or “Y” as provided in Section 505 but defines the general state of the art, it shall be indicated by the letter “A” placed next to the citation of the said document.
(d) Where any document cited in the international search report is a document whose publication date occurred earlier than the international filing date of the international application, but later than the priority date claimed in that application, it shall be indicated by the letter “P” next to the citation of the said document.
(e) Where any document cited in the international search report is a document whose publication date occurred after the filing date or the priority date of the international application and is not in conflict with the said application, but is cited for the principle or theory underlying the invention, which may be useful for a better understanding of the invention, or is cited to show that the reasoning or the facts underlying the invention are incorrect, it shall be indicated by the letter “T” next to the citation of the document.
(f) Where in the international search report any document is cited for reasons other than those referred to in paragraphs (a) to (e), for example:
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— a document which may throw doubt on a priority claim,
— a document cited to establish the publication date of another citation,
such document shall be indicated by the letter “L” next to the citation of the document and the reason for citing the document shall be given.
(g) Where a document is a member of a patent family, it shall, whenever feasible, be mentioned in the international search report in addition to the one cited belonging as well to this family and should be preceded by the sign ampersand (&). Members of a patent family may also be mentioned on a separate sheet, provided that the family to which they belong shall be clearly identified and that any text matter on that sheet, if not in the English language, shall also be furnished to the International Bureau in English translation.
(h) A document whose contents have not been verified by the search examiner but are believed to be substantially identical with those of another document which the search examiner has inspected, may be cited in the international search report in the manner indicated for patent family members in the first sentence of paragraph (g).
508 Manner of Indicating the Claims to Which the Documents Cited in the International Search Report Are Relevant
(a) The claims to which cited documents are relevant shall be indicated by placing in the appropriate column of the international search report:
(i) where the cited document is relevant to one claim, the number of that claim; for example, “2” or “17”;
(ii) where the cited document is relevant to two or more claims numbered in consecutive order, the number of the first and last claims of the series connected by a hyphen; for example, “1-15” or “2-3”;
(iii) where the cited document is relevant to two or more claims that are not numbered in consecutive order, the number of each claim placed in ascending order and separated by a comma or commas; for example, “1, 6” or “1, 7, 10”;
(iv) where the cited document is relevant to more than one series of claims under (ii), above, or to claims of both categories (ii) and (iii), above, the series or individual claim numbers and series placed in ascending order using commas to separate the several series, or to separate the numbers of individual claims and each series of claims; for example, “1-6, 9-10, 12-15” or “1, 3-4, 6, 9-11.”
(b) Where different categories apply to the same document cited in an international search report in respect of different claims or groups of claims, each relevant claim or group of claims shall be listed separately opposite each indicated category of relevance. Each category and each relevant claim or group of claims may be separated by a line.
The following example illustrates the situation where a document is of particular relevance under Section 505(b) as to claims 1 to 3 and under Section 505(c) as to claim 4, and indicates the general state of the art under Section 507(c) as to claims 11 and 12:
509 International Search and Written Opinion of the International Searching Authority on the Basis of a Translation of the International Application
Where the International Searching Authority has carried out the international search and established the written opinion on the basis of a translation of the international application transmitted to that Authority under Rule 23.1(b), the international
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search report and the written opinion of the International Searching Authority shall so indicate.
510 Refund of Search Fee in Case of Withdrawal of International Application
(a) Where the international application is withdrawn or is considered withdrawn before the International Searching Authority has started the international search, that Authority shall, subject to paragraphs (b) and (c), refund the search fee to the applicant.
(b) If the refund referred to in paragraph (a) is not compatible with the national law of the national Office acting as International Searching Authority and as long as it continues to be not compatible with that law, the International Searching Authority may abstain from refunding the search fee.
(c) The International Searching Authority may, before making a refund under paragraph (a), first invite the applicant to submit a request for the refund.
511 Rectifications of Obvious Mistakes under Rule 91
(a) Where the International Searching Authority authorizes a rectification under Rule 91, it shall:
(i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
(ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “RECTIFIED SHEET (RULE 91)” or their equivalent in the language of publication of the international application as well as an indication of the International Searching Authority as provided for in Section 107(b);
(iii) indelibly mark on the letter containing the rectification or accompanying any replacement sheet the date on which that letter was received;
(iv) keep in its files a copy of the letter containing the rectification or, when the rectification is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet, and a copy of the replacement sheet;
(v) promptly transmit any letter and any replacement sheet to the International Bureau and a copy thereof to the receiving Office.
(b) Where the International Searching Authority refuses to authorize a rectification under Rule 91, it shall proceed as indicated under paragraph (a)(i), (iii), and (iv) and promptly transmit any letter and any proposed replacement sheet to the International Bureau.
512 Notifications Concerning Representation
Where a power of attorney or a document containing the revocation or renunciation of an appointment is submitted to the International Searching Authority, that Authority shall immediately notify the International Bureau by sending it a copy of the power of attorney or document and request the International Bureau to record a change in the indications concerning the agent or common representative under Rule 92 bis.1(a)(ii).
513 Sequence Listings
(a) Where the International Searching Authority receives a correction of a defect under Rule 13 ter.1(f), it shall:
(i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
(ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “SUBSTITUTE SHEET (RULE 13 ter.1(f))” or their equivalent in the language of publication of the international application;
(iii) indelibly mark on the letter containing the correction, or accompanying any replacement sheet, the date on which that letter was received;
(iv) keep in its files a copy of the letter containing the correction or, when the correction is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet, and a copy of the replacement sheet;
(v) promptly transmit any letter and any replacement sheet to the International Bureau, and a copy thereof to the receiving Office.
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(b) Where the international search report and the written opinion of the International Searching Authority are based on a sequence listing not forming part of the international application but furnished for the purposes of the international search, the international search report and the written opinion of the International Searching Authority shall so indicate.
(c) Where a meaningful international search cannot be carried out and a meaningful written opinion, as to whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious) and to be industrially applicable, cannot be established because a sequence listing is not available to the International Searching Authority in the required form, that Authority shall so state in the international search report or declaration referred to in Article 17(2)(a), and in the written opinion.
(d) The International Searching Authority shall indelibly mark, on the first sheet of any sequence listing on paper which does not form part of the international application but was furnished for the purposes of the international search, the words “SEQUENCE LISTING NOT FORMING PART OF THE INTERNATIONAL APPLICATION” or their equivalent in the language of publication of the international application. Where such sequence listing is furnished in electronic form on a physical medium, that Authority shall physically label that medium accordingly.
(e) The International Searching Authority shall:
(i) keep in its files one copy of any sequence listing, whether on paper or in electronic form, which does not form part of the international application but was furnished for the purposes of the international search; and
(ii) where the sequence listing which does not form part of the international application but was furnished for the purposes of the international search is in electronic form, transmit one copy thereof to the International Bureau together with the copy of the international search report. If that listing in electronic form is filed on a physical medium in less than the number of copies required by the International Searching Authority, that Authority shall be responsible for the preparation of the additional copy and shall have the right to fix a fee
for performing that task and to collect such fee from the applicant.
(f) Any International Searching Authority which requires, for the purposes of the international search, the furnishing of a sequence listing in electronic form shall notify the International Bureau accordingly. In that notification, the Authority shall specify the means of transmittal of the sequence listing in electronic form accepted by it in accordance with Annex F. The International Bureau shall promptly publish details of the notification in the Gazette.
514 Authorized Officer
The officer of the International Searching Authority responsible for the international search report, as referred to in Rule 43.8, and for the written opinion of the International Searching Authority, as referred to in Rule 43 bis.1(b), means the person who actually performed the search work and prepared the search report and the written opinion of the International Searching Authority, or another person who was responsible for supervising the search and the establishment of the written opinion.
515 Modification of Abstract in Response to Applicant’s Comments
The International Searching Authority shall inform the applicant and the International Bureau of any modifications made by it to an abstract under Rule 38.3.
516 Notification to Applicant of Submission of Demand after the Expiration of 19 Months from the Priority Date
Where the demand is submitted after the expiration of 19 months from the priority date to an International Searching Authority and the time limit under Article 22(1), as in force from April 1, 2002, does not apply in respect of all designated Offices, that Authority shall:
(i) promptly notify the applicant accordingly, directing attention to the fact that the time limit under Article 39(1)(a) does not apply, and that Article 22(1), as in force until March 31, 2002, continues to apply in respect of any such designated Office,
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(ii) proceed under Rule 59.3.
517 Waivers under Rules 90.4(d) and 90.5(c)
(a) Where, in accordance with Rule 90.4(d), an International Searching Authority waives the requirement under Rule 90.4(b) that a separate power of attorney be submitted to it, the International Searching Authority shall notify the International Bureau accordingly.
(b) Where, in accordance with Rule 90.5(c), an International Searching Authority waives the requirement under Rule 90.5(a)(ii) that a copy of a general power of attorney be attached to any separate notice, it shall notify the International Bureau accordingly.
(c) An International Searching Authority may require a separate power of attorney, or a copy of a general power of attorney, in particular instances even if the International Searching Authority has waived the requirement in general.
(d) An International Searching Authority which has notified the International Bureau under paragraph (a) or (b) shall notify the International Bureau of any
change to the information notified under those paragraphs.
518 Guidelines for Explanations Contained in the Written opinion of the International Searching Authority
For the purposes of establishing the written opinion of the International Searching Authority, Section 604shall apply mutatis mutandis.
519 Notification of Receipt of Copy of International Application for the Purposes of Supplementary International Search
The Authority specified for supplementary search shall promptly notify the International Bureau and the applicant of the fact and the date of receipt of the copy of the international application for the purposes of the supplementary international search.
520 Withdrawal by Applicant under Rule 90 bis.3 bis
The Authority specified for supplementary search shall promptly transmit to the International Bureau any notice from the applicant effecting withdrawal of the supplementary search request under Rule 90 bis.3 bis which has been filed with it. The Authority specified for supplementary search shall mark the notice with the date on which it was received.
PART 6
INSTRUCTIONS RELATING TO THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
601 Notification to Applicant of Submission of Demand after the Expiration of 19 Months from the Priority Date
(a) Where the demand is submitted after the expiration of 19 months from the priority date and the time limit under Article 22(1), as in force from April 1, 2002, does not apply in respect of all designated Offices, the International Preliminary Examining Authority shall promptly notify the applicant accordingly, directing attention to the fact
that the time limit under Article 39(1)(a) does not apply, and that Article 22(1), as in force until March 31, 2002, continues to apply in respect of any such designated Office.
(b) Where the demand is submitted after the expiration of 19 months from the priority date to an International Preliminary Examining Authority which is not competent for the international preliminary examination of the international application, and the time limit under Article 22(1),
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as in force from April 1, 2002, does not apply in respect of all designated Offices, that Authority shall:
(i) promptly notify the applicant accordingly, directing attention to the fact that the time limit under Article 39(1)(a) does not apply, and that Article 22(1), as in force until March 31, 2002, continues to apply in respect of any such designated Office,
(ii) proceed under Rule 59.3.
602 Processing of Amendments by the International Preliminary Examining Authority
(a) The International Preliminary Examining Authority shall:
(i) indelibly mark, in the upper right-hand corner of each replacement sheet submitted under Rule 66.8, the international application number and the date on which that sheet was received;
(ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “AMENDED SHEET” or their equivalent in the language of the demand as well as an indication of the International Preliminary Examining Authority as provided for in Section 107(b);
(iii) keep in its files any replaced sheet, any replacement sheet, whether or not superseded, any letter accompanying such sheets and any letter referred to in the last sentence of Rule 66.8(b);
(iv) where any superseded replacement sheet and letter relating to such superseded replacement sheet are to be annexed to the international preliminary examination report under Rule 70.16(b), indelibly mark, in addition to the markings referred to in items (i) and (ii), in the middle of the bottom margin of each superseded replacement sheet and of each letter relating to a superseded replacement sheet, without obscuring the marking made under item (ii), the words “SUPERSEDED REPLACEMENT SHEET (RULE 70.16(b))” or, as applicable, the words “ACCOMPANYING LETTER (RULE 70.16(b))”;
(v) annex to the copy of the international preliminary examination report which is transmitted to the International Bureau any replacement sheet and letter as provided for under Rule 70.16;
(vi) annex to the copy of the international preliminary examination report which is transmitted to the applicant a copy of each replacement sheet and letter as provided for under Rule 70.16.
(b) Section 311(b)(ii) relating to the numbering of replacement sheets shall apply when one or more sheets are added under Rule 66.8.
(c) Where the International Preliminary Examining Authority receives from the applicant a copy of a purported amendment under Article 19 submitted after the time limit set forth in Rule 46.1, the International Preliminary Examining Authority may consider such an amendment as an amendment under Article 34 in which case it shall inform the applicant accordingly.
(d) Where the International Preliminary Examining Authority receives a copy of an amendment under Article 19, paragraphs (a) and (b) shall apply mutatis mutandis.
603 Transmittal of Protest against Payment of Additional Fees and Decision Thereon Where International Application Is Considered to Lack Unity of Invention
The International Preliminary Examining Authority shall transmit to the applicant, preferably at the latest together with the international preliminary examination report, any decision which it has taken under Rule 68.3(c) on the protest of the applicant against payment of additional fees where the international application is considered to lack unity of invention. At the same time, it shall transmit to the International Bureau a copy of both the protest and the decision thereon, as well as any request by the applicant to forward the texts of both the protest and the decision thereon to the elected Offices.
604 Guidelines for Explanations Contained in the International Preliminary Examination Report
(a) Explanations under Rule 70.8 shall clearly point out to which of the three criteria of novelty, inventive step (non-obviousness) and industrial applicability referred to in Article 35(2), taken separately, any cited document is applicable and shall clearly describe, with reference to the cited
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documents, the reasons supporting the conclusion that any of the said criteria is or is not satisfied.
(b) Explanations under Article 35(2) shall be concise and preferably in the form of short sentences.
605 File to Be Used for International Preliminary Examination
Where the International Preliminary Examining Authority is part of the same national Office or intergovernmental organization as the International Searching Authority, the same file shall serve the purposes of international search and international preliminary examination.
606 Cancellation of Elections
(a) The International Preliminary Examining Authority shall cancel ex officio:
(i) the election of any State which is not a designated State;
(ii) the election of any State not bound by Chapter II of the Treaty.
(b) The International Preliminary Examining Authority shall enclose that election within square brackets, shall draw a line between the square brackets while still leaving the election legible and shall enter, in the margin, the words “CANCELLED EX OFFICIO BY IPEA” or their equivalent in the language of the demand, and shall notify the applicant accordingly.
607 Rectifications of Obvious Mistakes under Rule 91
(a) Where the International Preliminary Examining Authority authorizes a rectification of an obvious mistake under Rule 91, it shall:
(i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
(ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “RECTIFIED SHEET (RULE 91)” or their equivalent in the language of the demand as well as an indication of the International Preliminary Examining Authority as provided for in Section 107(b);
(iii) indelibly mark on the letter containing the rectification or accompanying any replacement sheet the date on which that letter was received;
(iv) keep in its files a copy of the letter containing the rectification or, when the rectification is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet and a copy of the replacement sheet;
(v) annex to the copy of the international preliminary examination report which is transmitted to the International Bureau any replacement sheet and any letter as provided for under Rule 70.16;
(vi) annex to the copy of the international preliminary examination report which is transmitted to the applicant a copy of each replacement sheet and any letter as provided for under Rule 70.16.
(b) Where the rectification of an obvious mistake is not taken into account by the International Preliminary Examining Authority pursuant to Rule 66.4 bis , and the Authority so indicates in the international preliminary examination report in accordance with Rule 70.2(e), it shall proceed as indicated under paragraph (a), provided that the words “RECTIFIED SHEET (RULE 91) – NOT CONSIDERED FOR REPORT (RULE 66.4 bis)” shall be used when marking in accordance with paragraph (a)(ii).
(c) Where the rectification of an obvious mistake is not taken into account by the International Preliminary Examining Authority pursuant to Rule 66.4 bis , and the Authority is not able to so indicate in the international preliminary examination report in accordance with the second sentence of Rule 70.2(e), it shall proceed as indicated under paragraph (a)(i) to (iv) and forward any replacement sheet and any letter containing the rectification or accompanying any replacement sheet to the International Bureau. The International Bureau will promptly notify the elected Offices accordingly.
608 Notifications Concerning Representation
Where a power of attorney or a document containing the revocation or renunciation of an appointment is submitted to the International Preliminary Examining Authority, that Authority shall immediately notify the International Bureau by sending it a copy of the
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power of attorney or document and request the International Bureau to record a change in the indications concerning the agent or common representative under Rule 92 bis.1(a)(ii).
609 Withdrawal by Applicant under Rules 90 bis. 1, 90 bis. 2 or 90 bis. 3
The International Preliminary Examining Authority shall promptly transmit to the International Bureau any notice from the applicant effecting withdrawal of the international application under Rule 90 bis.1(b), of a designation under Rule 90 bis.2(d), or of a priority claim under Rule 90 bis.3(c) which has been filed with it. The International Preliminary Examining Authority shall mark the notice with the date on which it was received.
610 Sequence Listings
(a) Where the written opinion of the International Preliminary Examining Authority or the international preliminary examination report is based on a sequence listing not forming part of the international application but furnished for the purposes of the international preliminary examination, the written opinion and the international preliminary examination report of the International Preliminary Examining Authority shall so indicate.
(b) Where a meaningful written opinion of the International Preliminary Examining Authority cannot be established, or a meaningful international preliminary examination cannot be carried out, as to whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious) and to be industrially applicable, because a sequence listing is not available to the International Preliminary Examining Authority in the required form, that Authority shall so state in the written opinion and in the international preliminary examination report.
(c) The International Preliminary Examining Authority shall indelibly mark, on the first sheet of any sequence listing on paper which does not form part of the international application but was furnished for the purposes of the international preliminary examination, the words “SEQUENCE LISTING NOT FORMING PART OF THE INTERNATIONAL APPLICATION” or their
equivalent in the language of publication of the international application. Where such sequence listing is furnished in electronic form on a physical medium, that Authority shall physically label that medium accordingly.
(d) The International Preliminary Examining Authority shall keep in its files one copy of any sequence listing, whether on paper or in electronic form, which does not form part of the international application but was furnished for the purposes of the international preliminary examination.
(e) Any International Preliminary Examining Authority which requires, for the purposes of the international preliminary examination, the furnishing of a sequence listing in electronic form shall notify the International Bureau accordingly. In that notification, the Authority shall specify the means of transmittal of the sequence listing in electronic form accepted by it in accordance with Annex F. The International Bureau shall promptly publish details of the notification in the Gazette.
(f) Where the national Office or intergovernmental organization that acted as the International Searching Authority also acts as the International Preliminary Examining Authority, any sequence listing not forming part of the international application but furnished to that Office or organization for the purposes of the international search shall be considered to have been furnished to it also for the purposes of the international preliminary examination.
611 Method of Identification of Documents in the International Preliminary Examination Report
Any document cited in the international preliminary examination report which was not cited in the international search report shall be cited in the same form as required under Section 503 for international search reports. Any document cited in the international preliminary examination report which was previously cited in the international search report
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may be cited in a shortened form, provided that the reference to the document is unambiguous.
612 Authorized Officer
The officer of the International Preliminary Examining Authority responsible for the international preliminary examination report, as referred to in Rule 70.14, means the person who actually performed the examination work and prepared the international preliminary examination report or another person who was responsible for supervising the examination.
613 Invitation to Submit a Request for Refund of Fees under Rule 57.4 or 58.3
The International Preliminary Examining Authority may, before making a refund under Rule 57.4 or 58.3, first invite the applicant to submit a request for the refund.
614 Evidence of Right to File Demand
Where a demand is considered as not having been made under Rule 61.1(b) by the International Preliminary Examining Authority because the applicant appeared, on the basis of the indication made in the demand, not to have the right to file a demand with that Authority under Rule 54 but evidence is submitted indicating to the satisfaction of the International Preliminary ExaminingAuthority that in fact, an applicant had, on the date on which the demand was received, the right to file the demand with that Authority, the International Preliminary Examining Authority shall regard the requirements under Article 31(2)(a) as having been fulfilled on the date of actual receipt of the demand.
615 Invitation to Pay Fees before Date on Which They Are Due
If the International Preliminary Examining Authority finds, before the date on which they are due, that the
handling fee or the international preliminary examination fee are lacking in whole or in part, it may invite the applicant to pay the missing amounts within the time limit under Rule 57.3 or 58.1(b), as the case may be.
616 International Preliminary Examination on the Basis of a Translation of the International Application
Where the International Preliminary Examining Authority has carried out international preliminary examination on the basis of a translation of the international application furnished to that Authority under Rule 55.2(a) or, in the case referred to in Rule 55.2(b), transmitted, under Rule 23.1(b), to the national Office or intergovernmental organization of which that Authority is part, the international preliminary examination report shall so indicate.
617 Waivers under Rules 90.4(d) and 90.5(c)
(a) Where, in accordance with Rule 90.4(d), an International Preliminary Examining Authority waives the requirement under Rule 90.4(b) that a separate power of attorney be submitted to it, the International Preliminary Examining Authority shall notify the International Bureau accordingly.
(b) Where, in accordance with Rule 90.5(c), an International Preliminary Examining Authority waives the requirement under Rule 90.5(a)(ii) that a copy of a general power of attorney be attached to the demand or any separate notice, it shall notify the International Bureau accordingly.
(c) An International Preliminary Examining Authority may require a separate power of attorney, or a copy of a general power of attorney, in particular instances even if the International Preliminary Examining Authority has waived the requirement in general.
(d) An International Preliminary Examining Authority which has notified the International Bureau under paragraph (a) or (b) shall notify the International Bureau of any change to the information notified under those paragraphs.
PART 7
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INSTRUCTIONS RELATING TO THE FILING AND PROCESSING IN ELECTRONIC FORM OF INTERNATIONAL APPLICATIONS
701 Abbreviated Expressions
For the purposes of this Part and Annex F, unless the contrary clearly follows from the wording, the nature of the provision or the context:
(i) “electronic package” means a package of one or more electronic files assembled for the purposes of transmission of one or more documents in electronic form;
(ii) “electronic document format” means the presentation or arrangement of the information in a document in electronic form;
(iii) “means of transmittal,” in connection with a document in electronic form, means the manner in which a document is transmitted, for example, by electronic means or physical means;
(iv) “electronic signature” means information in electronic form which is attached to, or logically associated with, a document in electronic form, which may be used to identify the signer and which indicates the signer’s approval of the content of the document;
(v) “basic common standard” means the basic common standard for electronic filing of international applications provided for in Annex F;
(vi) “communication” of an international application or other document has the same meaning as in Rule 89 bis.3;
(vii) words and expressions whose meanings are explained in Annex F have the same meanings in this Part.
702 Filing, Processing and Communication in Electronic Form of International Applications
(a) The filing, processing and communication of international applications filed in electronic form, and the processing and communication in electronic form of international applications filed on paper, shall be in accordance with this Part and Annex F.
(b) Subject to this Part, an international application that is filed, processed or communicated
in electronic form shall not be denied legal effect merely because it is in electronic form.
(c) [Deleted]
703 Filing Requirements; Basic Common Standard
(a) An international application may, subject to this Part, be filed in electronic form if the receiving Office has notified the International Bureau in accordance with Rule 89 bis.1(d) that it is prepared to receive international applications in such form.
(b) An international application filed in electronic form shall be:
(i) in an electronic document format that has been specified by the receiving Office in accordance with Annex F or that complies with the basic common standard;
(ii) filed by a means of transmittal that has been specified by the receiving Office in accordance with Annex F or that complies with the basic common standard;
(iii) in the form of an electronic package, appropriate to the means of transmittal, that has been specified by the receiving Office in accordance with Annex F or that complies with the basic common standard;
(iv) prepared and filed using electronic filing software that has been specified by the receiving Office in accordance with Annex F or that complies with the basic common standard; and
(v) free of viruses and other forms of malicious logic in accordance with Annex F or that complies with the basic common standard.
(c) An international application filed in electronic form shall, for the purposes of Article 14(1)(a)(i), be signed by the applicant using a type of electronic signature that has been specified by the receiving Office in accordance with Annex F or, subject to Section 704(g), that complies with the basic common standard.
(d) A receiving Office which has not notified the International Bureau in accordance with Rule 89 bis.1(d) that it is prepared to receive international
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applications in electronic form may nevertheless decide in a particular case to receive an international application submitted to it in such form, in which case this Part shall apply accordingly.
(e) Any receiving Office may refuse to receive an international application submitted to it in electronic form if the application does not comply with paragraph (b), or may decide to receive the application.
(f) If, on 7 January 2002, the applicable national law and the technical systems of a national Office provide for the filing with it of national applications in electronic form according to requirements which are incompatible with any of items (ii) to (iv) of paragraph (b):
(i) the provisions concerned shall not apply in respect of the Office in its capacity as a receiving Office for as long as the incompatibility continues; and
(ii) the Office may instead provide for the filing with it of international applications in electronic form according to that national law and those technical systems; provided that the Office informs the International Bureau accordingly by the date on which the Office sends the International Bureau a notification under Rule 89 bis.1(d) and in any case no later than 7 April 2002. The information received shall be promptly published by the International Bureau in the Gazette.
704 Receipt; International Filing Date; Signature; Physical Requirements
(a) The receiving Office shall promptly notify the applicant of, or otherwise enable the applicant to obtain confirmation of, the receipt of any purported international application filed with it in electronic form. The notification or confirmation shall indicate or contain:
(i) the identity of the Office;
(ii) the date of receipt;
(iii) any reference number or application number assigned to the purported application by the Office; and
(iv) a message digest, generated by the Office, of the purported application as received; and may, at the option of the Office, also indicate or contain other information such as:
(v) the names and sizes of the electronic files received;
(vi) the dates of creation of the electronic files received; and
(vii) a copy of the purported application as received.
(b) Where the receiving Office refuses in accordance with Rule 89 bis.1(d) or Section 703(e) to receive a purported international application submitted to it in electronic form, it shall, if practicable having regard to the indications furnished by the applicant, promptly notify the applicant accordingly.
(c) Promptly after receiving a purported international application in electronic form, the receiving Office shall determine whether the purported application complies with the requirements of Article 11(1) and shall proceed accordingly.
(d) Where an international application filed in electronic form is not signed in compliance with Section 703(c), the application shall be considered not to comply with the requirements of Article 14(1)(a)(i) and the receiving Office shall proceed accordingly.
(e) Where an international application filed in electronic form does not comply with Section 703(b) but the receiving Office decides, under Section 703(e), to receive it, that non-compliance shall be considered to be non-compliance with the physical requirements referred to in Article 14(1)(a)(v) and the receiving Office shall proceed accordingly, having regard to whether compliance is necessary for the purpose of reasonably uniform international publication (Rule 26.3) and satisfactory electronic communications.
(f) An international application filed in electronic form may, in accordance with the provisions of Rule 19.4, be transmitted by the Office with which the application was filed to the International Bureau as receiving Office.
(g) Where an international application filed in electronic form was signed using a type of electronic signature that complies with the basic common standard but that has not been specified by the receiving Office under Section 703(c), the Office may require that any subsequent document or correspondence submitted to it in electronic form be signed using a type of electronic signature that has
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been so specified. If that requirement is not complied with, Rule 92.1(b) and (c) shall apply mutatis mutandis.
705 Home Copy, Record Copy and Search Copy Where International Application is Filed in Electronic Form
(a) Where an international application is filed in electronic form as a wrapped and signed package in accordance with Annex F, the home copy and the record copy in relation to that application for the purposes of Article 12 shall each consist of a copy in electronic form of that package.
(b) Where an international application is filed in electronic form but is not filed as a wrapped and signed package in accordance with Annex F, the home copy and the record copy in relation to that application for the purposes of Article 12 shall each consist of a copy in electronic form of the application as filed. If the application as filed was encrypted, the home copy and the record copy shall consist of the decrypted version. If the application as filed was infected by a virus or other form of malicious logic, the home copy and the record copy shall consist of the disinfected version.
(c) Where the international application is filed in electronic form on a physical medium, the home copy and the record copy shall not include the physical medium, but the receiving Office shall, for the purposes of Rule 93.1, retain the application as originally filed, together with the physical medium.
(d) Where the International Searching Authority has notified the International Bureau in accordance with Rule 89 bis.1(d) that it is prepared to process international applications in electronic form, paragraphs (a) and (b) apply mutatis mutandis to the search copy; otherwise, the search copy shall consist of a copy of the application printed on paper by the receiving Office.
705 bis Processing in Electronic Form of International Applications Filed on Paper; Home Copy, Record Copy and Search Copy
(a) Where an international application is filed on paper, it may, subject to this Part, be processed and kept as a complete and accurate copy in electronic form prepared by the receiving Office, the International Searching Authority, the
International Preliminary Examining Authority or the International Bureau. Any receiving Office, International Searching Authority or International Preliminary Examining Authority which proceeds under this paragraph shall notify the International Bureau accordingly.
(b) Pursuant to paragraph (a) and for the purposes of Article 12, where an international application is filed on paper:
(i) the receiving Office may keep a copy in electronic form referred to in that paragraph as the home copy;
(ii) the International Bureau may keep a copy in electronic form referred to in that paragraph as the record copy;
(iii) the International Searching Authority may keep a copy in electronic form referred to in that paragraph as the search copy.
(c) Where a copy in electronic form is kept as the record copy under paragraph (b)(ii), the original of the international application as filed on paper shall be kept, for a period of at least 10 years from the international filing date, by the International Bureau or, where so agreed by the receiving Office and the International Bureau, by the receiving Office on behalf of the International Bureau. The original shall be marked with the words “INTERNATIONAL APPLICATION— ORIGINAL AS FILED ON PAPER (SECTION 705 bis )” or their equivalent in the language of publication of the international application on the bottom of the first page of the request and of the first page of the description.
(d) Where, before the expiration of the period referred to in paragraph (c), the International Bureau finds, upon request for correction made by the applicant or otherwise, that a copy in electronic form kept as the record copy under paragraph (b)(ii) is not in fact a complete and accurate copy of the original kept under paragraph (c), it shall correct the record copy so as to bring it into conformity with the original. If the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or a designated or elected Office considers that the International Bureau should make a finding under the first sentence of this paragraph, it shall call the relevant facts to the attention of the International Bureau.
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(e) Where the International Bureau has corrected the record copy in accordance with paragraph (d), it shall promptly notify the applicant, publish the corrected international application together with a revised front page, and publish a notice of this fact in the Gazette. Section 422(a)(i) to (v) shall apply mutatis mutandis with regard to the notification of
the receiving Office, the International Searching Authority, the International Preliminary Examining Authority and the designated and elected Offices.
706 Documents in Pre-Conversion Format
(a) Where, for the purposes of filing the international application in electronic form, the document making up the international application has been prepared by conversion from a different electronic document format (“pre-conversion format”), the applicant may, if the receiving Office so permits and the pre-conversion format is accepted for that purpose by that Office, submit, together with the international application, the document in the pre-conversion format, in which case:
(i) the document in the pre-conversion format shall be identified as such and shall be accompanied by a statement by the applicant that the international application as filed in electronic form is a complete and accurate copy of the document in the pre-conversion format;
(ii) the request shall preferably contain an indication that the document in the pre-conversion format is submitted under Section 706 together with the international application.
(b) Where it is found that the international application as filed in electronic form is not in fact a complete and accurate copy of the document in the pre-conversion format submitted under paragraph (a), the applicant may, within 30 months from the priority date, request the receiving Office to correct the international application so as to bring it into conformity with the document in the pre-conversion format. Rule 26.4 shall apply mutatis mutandis to the manner in which corrections under paragraph (b) shall be requested.
(c) Where the receiving Office, the International Searching Authority, the International Preliminary
Examining Authority or the International Bureau discover what appears to be a correctable defect under paragraph (b), that Office, Authority or Bureau, as the case may be, may bring such defect to the attention of the applicant, drawing attention to the correction procedure under paragraph (b).
(d) The applicant and, if copies of the international application have already been sent to the International Bureau and the International Searching Authority, that Bureau and that Authority shall be promptly notified by the receiving Office of any correction under paragraph (b). If required, the International Bureau shall notify the International Preliminary Examining Authority accordingly. Where a correction is made after the completion of the technical preparations for international publication, the International Bureau shall promptly publish any international application as so corrected together with a revised front page.
(e) A correction under paragraph (b) shall be taken into account by the International Searching Authority for the purposes of the international search and the establishment of the written opinion, and by the International Preliminary Examining Authority for the purposes of international preliminary examination, if it is notified to that Authority before it has begun to draw up the international search report, the written opinion or the international preliminary examination report, as applicable, in which case the said report or opinion shall so indicate.
(f) Paragraphs (a) to (e) shall apply mutatis mutandis to any document making up any element of the international application referred to in Article 3(2).
707 Calculation of International Filing Fee and Fee Reduction
(a) Where an international application is filed in electronic form, the international filing fee shall, subject to paragraph (a- bis), be calculated on the basis of the number of sheets that the application would contain if presented as a print-out complying with the physical requirements prescribed in Rule
11. 1
1 Editor's Note: Rule 11 leaves some flexibility as to the margins of the sheets (see Rule 11.6) and the size of the characters (see Rule 11.9(d)). The international filing fee should be calculated on the basis of the number of sheets that the application would
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(a-bis) Where a sequence listing is contained in an international application filed in electronic form, the calculation of the international filing fee shall not take into account any sheet of the sequence listing if that listing is presented as a separate part of the description in accordance with Rule 5.2(a) and is in the electronic document format specified in paragraph 40 of Annex C.
(b) Item 4(b), (c), and (d) of the Schedule of Fees annexed to the Regulations shall apply to reduce the fees payable in respect of an international application filed in electronic form with a receiving Office which has notified the International Bureau under Section 710(a) that it is prepared to receive international applications in electronic form or which has decided to receive such an application in accordance with Section 703(d).
708 Special Provisions Concerning Legibility, Completeness, Infection by Viruses, Etc.
(a) Where an international application is filed in electronic form, the receiving Office shall promptly check whether the application is legible and whether it appears to have been fully received. Where the Office finds that all or part of the international application is illegible or that part of the application appears not to have been received, the international application shall be treated as not having been received to the extent that it is illegible or, where transmitted by electronic means, that the attempted transmission failed, and the Office shall, if practicable having regard to the indications furnished by the applicant, promptly notify the applicant accordingly.
(b) Where a purported international application is received in electronic form, the receiving Office shall promptly check it for infection by viruses and other forms of malicious logic. Where the Office finds that the purported application is so infected:
(i) the Office is not required to disinfect the purported application and may, under Section 703(e), refuse to receive it;
(ii) if the Office decides under Section 703(e) to receive the purported application, the Office shall use means reasonably available under the circumstances to read it, for example, by disinfecting
it or preparing a backup copy under Section 706, and to store it in such a way that its contents may be ascertained if necessary;
(iii) if the Office finds that it is able to read and store the purported application as mentioned in item (ii), it shall determine whether an international filing date should be accorded;
(iv) if the Office accords an international filing date to the application, it shall, if possible having regard to the indications furnished by the applicant, promptly notify the applicant and, if necessary, invite the applicant to submit a substitute copy of the application free of infection;
(v) if the Office accords an international filing date to the application, it shall prepare the home copy, the record copy and the search copy on the basis of the disinfected application, the backup copy or the substitute copy referred to in items (ii) or (iv), as applicable, provided that the application shall be stored by the Office, as referred to in item (ii), for the purposes of Rule 93.1.
709 Means of Communication with the Receiving Office
(a) Where an international application is filed in electronic form and by electronic means of transmittal, the receiving Office shall, if practicable, send any notifications, invitations and other correspondence to the applicant by electronic means of transmittal in accordance with Annex F, or by such other means indicated by the applicant from among those offered by the Office.
(b) Where it appears to the receiving Office that a notification, invitation or other correspondence sent to the applicant by electronic means of transmittal was not successfully transmitted, the Office shall, if practicable, promptly retransmit the notification, invitation or other correspondence by the same or another means.
(c) At times when the electronic systems of the receiving Office are not available for the filing of documents in electronic form or by electronic means of transmittal, the Office shall, if possible, promptly publish information to that effect by means reasonably available to it under the circumstances,
contain if presented as a print-out complying with the minimum margin and character size requirements. In practice, however, the receiving Office should not print-out the international application but rather rely on the number of pages of the international application as calculated by the electronic filing software and indicated in the request.
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for example, by including a notice on the Office’s Internet site, if any.
710 Notification and Publication of Receiving Offices’ Requirements and Practices
(a) A notification by a receiving Office to the International Bureau under Rule 89 bis.1(d) and Section 703(a) that it is prepared to receive international applications in electronic form shall indicate, where applicable:
(i) the electronic document formats (including, where applicable, the versions of such electronic document formats), means of transmittal, types of electronic packages, electronic filing software and types of electronic signature specified by it under Section 703(b)(i) to (iv) and (c), and any options specified by it under the basic common standard;
(ii) the conditions, rules and procedures relating to electronic receipt, including hours of operation, choices for processes to verify or acknowledge receipt, choices for electronic communication of invitations and notifications, any methods of online payment, details concerning any help desks, electronic and software requirements and other administrative matters related to the filing in electronic form of international applications and related documents;
(iii) the kinds of documents which may be transmitted to or by the Office in electronic form;
(iv) whether and under what conditions the Office accepts the filing, under Section 706(a) and (f), of documents in pre-conversion formats and the electronic document format(s) (including, where applicable, the versions of such electronic document format(s)) accepted by it under that Section;
(v) procedures for notification of applicants and procedures which applicants may follow as alternatives when the electronic systems of the Office are not available;
(vi) the certification authorities that are accepted by the Office, and the electronic addresses of the certificate policies under which certificates are issued;
(vii) the procedures relating to access to the files of international applications filed or stored in electronic form.
(b) The receiving Office shall notify the International Bureau of any change in the matters previously indicated by it in a notification under Section 705 bis(a) or paragraph (a) of this Section.
(c) The International Bureau shall promptly publish in the Gazette any notification received by it under Section 705 bis(a) or paragraph (a) or (b) of this Section.
(d) The effective date of any change notified under paragraph (b) shall be as specified by the receiving Office in the notification, provided that any change which restricts filing options shall not be effective earlier than two months after the date of publication of the notification of the change in the Gazette.
711 Electronic Records Management
(a) Records, copies and files in electronic form in relation to international applications shall be processed and, for the purposes of Rule 93, kept in accordance with the requirements of authentication, integrity, confidentiality and non-repudiation, and having due regard to the principles of electronic records management, set out in Annex F.
(b) Upon request by the applicant or other interested party in relation to a particular international application, the receiving Office shall, subject to any restrictions applicable under the Treaty
as to access by third parties, 1 certify that any electronic records relating to that application are maintained and stored by it in accordance with paragraph (a).
712 Access to Electronic Records
Access permitted by the Treaty, the Regulations or these Administrative Instructions to documents contained in the file of an international application filed, processed or kept in electronic form may, at the option of the national Office or intergovernmental organization concerned, be provided by electronic means or in electronic form, having due regard to the need to ensure the integrity and where applicable confidentiality of data, the
1 Editor's Note: Articles 30 and 38 and Rule 94 restrict access.
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principles of electronic records management set out in Annex F, and the need to ensure security of the electronic networks, systems and applications of the Office or organization.
713 Application of Provisions to International Authorities and the International Bureau, and to Notifications, Communications, Correspondence and Other Documents
(a) The provisions of this Part, other than Sections 703(c), 704(c) to (g), 706, 707, 708(b)(iii) to (v), 710(a)(iv) and 714(b), shall, if they are capable of applying but do not expressly apply to the International Searching Authorities, the International Preliminary Examining Authorities and the International Bureau, apply mutatis mutandis to those Authorities and that Bureau.
(b) The provisions of this Part, other than Sections 703(c), 704(c) to (f), 705, 705 bis(b) to (e), 706, 707, 708(b)(iii) to (v) and 710(a)(iv), shall, if they are capable of applying but do not expressly apply to notifications, communications, correspondence or other documents relating to international applications that are filed, processed or communicated in electronic form, apply mutatis mutandis to such notifications, communications, correspondence or other documents relating to international applications.
714 Furnishing by the International Bureau of Copies of Documents Kept in Electronic Form; Designated Offices’ Signature Requirements
(a) Where any International Searching Authority, International Preliminary Examining Authority or designated Office has not notified the International Bureau in accordance with Rule 89 bis.1(d) or Section 705 bis(a) that it is prepared to process international applications in electronic form, the International Bureau shall furnish to that Office or Authority a copy on paper of any document which is kept by the International Bureau in electronic form and which that Office or Authority is entitled to receive. The International Bureau may also, upon
request by the Authority or Office concerned, furnish such copy in electronic form.
(b) Any designated Office may require that any document or correspondence submitted to it by the applicant in electronic form be signed by the applicant using a type of electronic signature specified by it in accordance with Annex F.
715 Availability of Priority Documents from Digital Libraries
(a) For the purposes of Rules 17.1(b- bis), 17.1(d) (where appropriate, as applicable by virtue of Rules 17.1(c) and 82 ter.1(b)), 66.7(a) (where appropriate, as applicable by virtue of Rule 43 bis.1(b)) and 91.1(e), a priority document shall be considered to be available from a digital library to the International Bureau, a designated Office, the International SearchingAuthority or the International Preliminary Examining Authority, as the case may be:
(i) if the Office or Authority concerned has notified the International Bureau, or the International Bureau has declared, as the case may be, that it is prepared to obtain priority documents from that digital library; and
(ii) the priority document concerned is held in that digital library and the applicant has, to the extent required by the procedures for accessing the relevant digital library, authorized the Office or Authority concerned or the International Bureau, as the case may be, to access that priority document.
(b) A notification to the International Bureau under paragraph 12 of the Framework Provisions for the Digital Access Service for Priority
Documents 1 by
(i) the International Bureau; or
(ii) an Office in its capacity as designated Office, International Searching Authority or International Preliminary Examining Authority,
that it is prepared to obtain priority documents via the Digital Access Service shall be taken as a declaration or notification under paragraph (a)(i) that the International Bureau or Office acting in the relevant capacity will obtain priority documents
1 Editor’s Note : Established by the International Bureau on 31 March 2009 and available from the WIPO website at: www.wipo.int/export/sites/www/das/en/pdf/framework_of_march_31_2009.pdf.
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through the Digital Access Service from any digital library which has been the subject of a notification in accordance with paragraph 10 of the Framework Provisions, including libraries for which such a notification is subsequently made with effect prior to the date on which the Office or Bureau is requested to retrieve the priority document.
(c) An Office or Authority which has given a notification to the International Bureau under paragraph (a)(i) or (b) shall notify the International Bureau of any change in the information so notified.
(d) The International Bureau shall promptly publish in the Gazette any notification received by it under paragraph (a)(i) or (b) of this Section, any declaration made by it under paragraph (a)(i) or (b), and any change in the information so declared.
(e) The effective date of any change published under paragraph (d) shall be as specified by the Office or Authority concerned or by the International Bureau, as the case may be, provided that any change which restricts the ability of the applicant to request the Office, the Authority or the International Bureau to obtain a priority document from the digital library shall, except in the case where priority documents are no longer held in the digital library, not be effective earlier than two months after the date of publication of the change in the Gazette.
716 Request that Priority Document Be Obtained from a Digital Library under Rule 17.1(b- bis)
(a) Any request under Rule 17.1(b- bis ):
(i) shall identify the priority document concerned in accordance with Rule 4.10(a); and
(ii) shall, where required, include the access code provided to the applicant by the International Bureau or by the Office with which the earlier application was filed.
(b) Where the applicant, in accordance with Rule 17.1(b- bis ) and paragraph (a) of this Section, requests the International Bureau to obtain a priority document which, in accordance with Section 715(a), is considered to be available from a digital library to it, but the International Bureau finds that the priority document is in fact not available to it, the International Bureau, shall notify the applicant, giving the opportunity to furnish the priority document to it, or to ensure that the document is made available to it from a digital library, within a time limit of not less than two months from the date of the notification or within the time limit specified in Rule 17.1(a), whichever time limit expires later. Where the priority document is furnished or becomes available to the International Bureau within that time limit, the requirements of Rule 17.1(b- bis ) shall be considered to have been met. If the priority document is not so furnished or does not become available within that time limit, the request that the document be obtained from a digital library shall be considered not to have been made.
(c) Where the applicant requests the International Bureau under Rule 17.1(b- bis ) to obtain a priority document from a digital library but that request does not comply with the requirements of that Rule and paragraph (a) of this Section, or the priority document concerned is not considered to be available to it in accordance with Section 715(a), the International Bureau shall promptly inform the applicant accordingly.
PART 8
INSTRUCTIONS RELATING TO OBSERVATIONS BY THIRD PARTIES
801 Third Party Observation System
(a) The International Bureau shall provide an electronic system for third parties to make observations referring to prior art which they believe to be relevant to the question of whether the invention claimed in the international application is new and/or involves an inventive step (“third party observation system”).
(b) The third party observation system:
(i) shall provide a third party with the option to remain anonymous;
(ii) shall allow observations to include a brief explanation of the relevance of each prior art document referred to in the observation and to include a copy of the prior art document;
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(iii) may limit the number of prior art documents which may be referred to in one observation; and
(iv) may limit the number of observations permitted to be made in relation to one international application, per third party and in total.
(c) The International Bureau shall take technical steps to prevent abuse of the third party observation system.
(d) The International Bureau may temporarily or indefinitely suspend the use of the third party observation system if it considers it necessary to do so.
802 Filing of a Third Party Observation
(a) An observation by a third party made in relation to an international application shall:
(i) be submitted to the International Bureau through the third party observation system as provided in Section 801;
(ii) be submitted between the date of international publication and 28 months from the priority date of the international application indicated;
(iii) be in a language of publication, with the exception that copies of submitted prior art documents may be in any language;
(iv) relate to the international application indicated;
(v) refer to prior art;
(vi) be free of viruses or other forms of malicious logic;
(vii) be free of comments or other matter not relevant to the question of novelty or inventive step of the invention claimed in the international application; and
(viii) be free of comments or other matter which are an abuse of the third party observation system.
(b) Any purported observation by a third party which, in the view of the International Bureau, appears not to be in compliance with paragraph (a) shall not be treated as a third party observation. The International Bureau shall inform the third party accordingly, unless the purported observation
appears to be a clear attempt at abuse of the system. The purported observation shall not be open to public inspection and shall not be communicated to the applicant, any International Authority or any designated Office.
803 Availability of an Observation and Related Information
(a) Any third party observation shall be promptly made available for public inspection, with the exception that copies of prior art documents uploaded through the system shall be made available only to the applicant, competent International Authorities and designated Offices.
(b) Where the third party requests the International Bureau to remain anonymous as provided in Section 801(b), the International Bureau shall not reveal any details of the third party to the public, the applicant, any International Authority or any designated Office.
804 Notification of Receipt of an Observation to the Applicant and Comments by the Applicant in Response to an Observation
(a) The International Bureau shall notify the applicant when the first third party observation is received in relation to an international application. If further observations are received, the International Bureau shall notify the applicant of the receipt of all further observations promptly after the expiration of 28 months from the priority date.
(b) The applicant may, within 30 months from the priority date, submit comments in response to any third party observation which has been received. The comments shall be submitted in English, French or the language of publication of the international application, at the choice of the applicant, and shall be promptly made available for public inspection.
805 Communication of Observations and Comments to International Authorities and Designated Offices
(a) The International Bureau shall communicate any third party observation and any comment by the applicant promptly to the International Searching Authority specified to carry out the international search, the International Searching Authority specified to carry out the supplementary international
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search and the International Preliminary Examining Authority specified to carry out the international preliminary examination, unless the international search report, the supplementary international search report or the international preliminary examination report, respectively, has already been received by the International Bureau.
(b) Promptly after the expiration of 30 months from the priority date, the International Bureau shall
communicate any third party observation and any comment by the applicant to all designated Offices, subject to PCT Rule 93 bis . The designated Offices shall not be obliged to take either the observations or any comments into account during national processing.
[Annexes follow]
Annex A
FORMS
[Editor's Note: This Annex, which is not reproduced here, contains Forms for use by applicants and by the International Authorities, including those referred to in Section 102 of the Administrative Instructions. It consists of five Parts, as follows:
Part I: Forms Relating to the Receiving Office;
Part II: Forms Relating to the International Searching Authority and to Authority Specified for Supplementary Search;
Part III: Forms Relating to the International Bureau;
Part IV: Forms Relating to the International Preliminary Examining Authority;
Part V: Request and Demand Forms.
These forms are available from the WIPO website at: www.wipo.int/pct/en/forms .]
[Annex B follows]
Annex B
UNITY OF INVENTION
(a) Unity of Invention. Rule 13.1 deals with the requirement of unity of invention and states the principle that an international application should relate to only one invention or, if there is more than one invention, that the inclusion of those inventions in one international application is only permitted if all inventions are so linked as to form a single general inventive concept.
(b) Technical Relationship. Rule 13.2 defines the method for determining whether the requirement of unity of invention is satisfied in respect of a group of inventions claimed in an international application. Unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding “special technical features”. The expression “special technical features” is defined in Rule 13.2 as meaning those technical features that define a contribution which each of the inventions, considered
as a whole, makes over the prior art. The determination is made on the contents of the claims as interpreted in light of the description and drawings (if any).
(c) Independent and Dependent Claims. Unity of invention has to be considered in the first place only in relation to the independent claims in an international application and not the dependent claims. By “dependent” claim is meant a claim which contains all the features of another claim and is in the same category of claim as that other claim (the expression “category of claim” referring to the classification of claims according to the subject matter of the invention claimed for example, product, process, use or apparatus or means, etc.).
(i) If the independent claims avoid the prior art and satisfy the requirement of unity of invention, no problem of lack of unity arises in respect of any
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claims that depend on the independent claims. In particular, it does not matter if a dependent claim itself contains a further invention. Equally, no problem arises in the case of a genus/species situation where the genus claim avoids the prior art. Moreover, no problem arises in the case of a combination/subcombination situation where the subcombination claim avoids the prior art and the combination claim includes all the features of the subcombination.
(ii) If, however, an independent claim does not avoid the prior art, then the question whether there is still an inventive link between all the claims dependent on that claim needs to be carefully considered. If there is no link remaining, an objection of lack of unity a posteriori (that is, arising only after assessment of the prior art) may be raised. Similar considerations apply in the case of a genus/species or combination/subcombination situation.
(iii) This method for determining whether unity of invention exists is intended to be applied even before the commencement of the international search. Where a search of the prior art is made, an initial determination of unity of invention, based on the assumption that the claims avoid the prior art, may be reconsidered on the basis of the results of the search of the prior art.
(d) Illustrations of Particular Situations. There are three particular situations for which the method for determining unity of invention contained in Rule 13.2 is explained in greater detail:
(i) combinations of different categories of claims;
(ii) so-called “Markush practice”; and
(iii) intermediate and final products.
Principles for the interpretation of the method contained in Rule 13.2, in the context of each of those situations are set out below. It is understood that the principles set out below are, in all instances, interpretations of and not exceptions to the requirements of Rule 13.2.
Examples to assist in understanding the interpretation on the three areas of special concern referred to in the preceding paragraph are set out below.
(e) Combinations of Different Categories of Claims. The method for determining unity of invention under Rule 13.2 shall be construed as permitting, in particular, the inclusion of any one of the following combinations of claims of different categories in the same international application:
(i) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product, and an independent claim for a use of the said product, or
(ii) in addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out the said process, or
(iii) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product and an independent claim for an apparatus or means specifically designed for carrying out the said process,
it being understood that a process is specially adapted for the manufacture of a product if it inherently results in the product and that an apparatus or means is specifically designed for carrying out a process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art.
Thus, a process shall be considered to be specially adapted for the manufacture of a product if the claimed process inherently results in the claimed product with the technical relationship being present between the claimed product and claimed process. The words “specially adapted” are not intended to imply that the product could not also be manufactured by a different process.
Also an apparatus or means shall be considered to be “specifically designed for carrying out” a claimed process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art. Consequently, it would not be sufficient that the apparatus or means is merely capable of being used in carrying out the claimed process. However, the expression “specifically designed” does not imply that the apparatus or means could not be used for carrying out another process, nor that the process could not
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be carried out using an alternative apparatus or means.
(f) “Markush Practice.” The situation involving the so-called “Markush practice” wherein a single claim defines alternatives (chemical or non-chemical) is also governed by Rule 13.2. In this special situation, the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2, shall be considered to be met when the alternatives are of a similar nature.
(i) When the Markush grouping is for alternatives of chemical compounds, they shall be regarded as being of a similar nature where the following criteria are fulfilled:
(A) all alternatives have a common property or activity, and
(B)(1) a common structure is present, i.e., a significant structural element is shared by all of the alternatives, or
(B)(2) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.
(ii) In paragraph (f)(i)(B)(1), above, the words “significant structural element is shared by all of the alternatives” refer to cases where the compounds share a common chemical structure which occupies a large portion of their structures, or in case the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion in view of existing prior art, and the common structure is essential to the common property or activity. The structural element may be a single component or a combination of individual components linked together.
(iii) In paragraph (f)(i)(B)(2), above, the words “recognized class of chemical compounds” mean that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. In other words, each member could be substituted one for the other, with the expectation that the same intended result would be achieved.
(iv) The fact that the alternatives of a Markush grouping can be differently classified shall
not, taken alone, be considered to be justification for a finding of a lack of unity of invention.
(v) When dealing with alternatives, if it can be shown that at least one Markush alternative is not novel over the prior art, the question of unity of invention shall be reconsidered by the examiner. Reconsideration does not necessarily imply that an objection of lack of unity shall be raised.
(g) Intermediate and Final Products. The situation involving intermediate and final products is also governed by Rule 13.2.
(i) The term “intermediate” is intended to mean intermediate or starting products. Such products have the ability to be used to produce final products through a physical or chemical change in which the intermediate loses its identity.
(ii) Unity of invention shall be considered to be present in the context of intermediate and final products where the following two conditions are fulfilled:
(A) the intermediate and final products have the same essential structural element, in that:
(1) the basic chemical structures of the intermediate and the final products are the same, or
(2) the chemical structures of the two products are technically closely interrelated, the intermediate incorporating an essential structural element into the final product, and
(B) the intermediate and final products are technically interrelated, this meaning that the final product is manufactured directly from the intermediate or is separated from it by a small number of intermediates all containing the same essential structural element.
(iii) Unity of invention may also be considered to be present between intermediate and final products of which the structures are not known — for example, as between an intermediate having a known structure and a final product the structure of which is not known, or as between an intermediate of unknown structure and a final product of unknown structure. In order to satisfy unity in such cases, there shall be sufficient evidence to lead one to conclude that the intermediate and final products are technically closely interrelated as, for example, when the intermediate contains the same essential element
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as the final product or incorporates an essential element into the final product.
(iv) It is possible to accept in a single international application different intermediate products used in different processes for the preparation of the final product, provided that they have the same essential structural element.
(v) The intermediate and final products shall not be separated, in the process leading from one to the other, by an intermediate which is not new.
(vi) If the same international application claims different intermediates for different structural parts of the final product, unity shall not be regarded as being present between the intermediates.
(vii) If the intermediate and final products are families of compounds, each intermediate compound shall correspond to a compound claimed in the family of the final products. However, some of the final products may have no corresponding compound in the family of the intermediate products so that the two families need not be absolutely congruent.
(h) As long as unity of invention can be recognized applying the above interpretations, the fact that, besides the ability to be used to produce final products, the intermediates also exhibit other
possible effects or activities shall not affect the decision on unity of invention.
(i) Rule 13.3 requires that the determination of the existence of unity of invention be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
(j) Rule 13.3 is not intended to constitute an encouragement to the use of alternatives within a single claim, but is intended to clarify that the criterion for the determination of unity of invention (namely, the method contained in Rule 13.2) remains the same regardless of the form of claim used.
(k) Rule 13.3 does not prevent an International Searching or Preliminary Examining Authority or an Office from objecting to alternatives being contained within a single claim on the basis of considerations such as clarity, the conciseness of claims or the claims fee system applicable in that Authority or Office.
(l) Examples giving guidance on how these principles may be interpreted in particular cases are set out in the PCT International Search and Preliminary Examination Guidelines.
[Annex C follows]
Annex C
STANDARD FOR THE PRESENTATION OF NUCLEOTIDE AND AMINO ACID SEQUENCE LISTINGS IN INTERNATIONAL PATENT APPLICATIONS UNDER THE
PCT
INTRODUCTION
1. This Standard has been elaborated so as to provide standardization of the presentation of nucleotide and amino acid sequence listings in international patent applications. The Standard is intended to allow the applicant to draw up a single sequence listing which is acceptable to all receiving Offices, International Searching and Preliminary Examining Authorities for the purposes of the international phase, and to all designated and elected Offices for the purposes of the national phase. It is intended to enhance the accuracy and quality of presentations of nucleotide and amino acid sequences given in international applications, to make for easier presentation and dissemination of sequences for the
benefit of applicants, the public and examiners, to facilitate searching of sequence data and to allow the exchange of sequence data in electronic form and the introduction of sequence data onto computerized databases.
DEFINITIONS
2. For the purposes of this Standard:
(i) the expression “sequence listing” means a nucleotide and/or amino acid sequence listing which gives a detailed disclosure of the nucleotide and/or amino acid sequences and other available information;
(i-bis) the expression “sequence listing forming part of the international application” means
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a sequence listing contained in the international application as filed (as referred to in paragraph 3), including any sequence listing or part thereof which is included in the international application under Rule 20.5(b) or (c), which is considered to have been contained in the international application under Rule 20.6(b), or which has been corrected under Rule 26, rectified under Rule 91 or amended under Article 34(2); or a sequence listing included in the international application by way of an amendment under Article 34(2)(b) of the description in relation to sequences contained in the international application as filed (as referred to in paragraphs 3 bis and 3 ter);
(i-ter) the expression “sequence listing not forming part of the international application” means a sequence listing which does not form part of the international application but is furnished for the purposes of the international search or international preliminary examination (as referred to in paragraphs 4 and 4 bis);
(ii) sequences which are included are any unbranched sequences of four or more amino acids or unbranched sequences of ten or more nucleotides. Branched sequences, sequences with fewer than four specifically defined nucleotides or amino acids as well as sequences comprising nucleotides or amino acids other than those listed in Appendix 2, Tables 1, 2, 3 and 4, are specifically excluded from this definition;
(iii) “nucleotides” embrace only those nucleotides that can be represented using the symbols set forth in Appendix 2, Table 1. Modifications, for example, methylated bases, may be described as set forth in Appendix 2, Table 2, but shall not be shown explicitly in the nucleotide sequence;
(iv) “amino acids” are those L-amino acids commonly found in naturally occurring proteins and are listed in Appendix 2, Table 3. Those amino acid sequences containing at least one D-amino acid are not intended to be embraced by this definition. Any amino acid sequence that contains post-translationally modified amino acids may be described as the amino acid sequence that is initially translated using the symbols shown in Appendix 2, Table 3, with the modified positions, for example, hydroxylations or glycosylations, being described as set forth in Appendix 2, Table 4, but these modifications shall not be shown explicitly in the
amino acid sequence. Any peptide or protein that can be expressed as a sequence using the symbols in Appendix 2, Table 3, in conjunction with a description elsewhere to describe, for example, abnormal linkages, cross-links (for example, disulfide bridge) and end caps, non-peptidyl bonds, etc., is embraced by this definition;
(v) “sequence identifier” is a unique integer that corresponds to the SEQ ID NO assigned to each sequence in the listing;
(vi) “numeric identifier” is a three-digit number which represents a specific data element;
(vii) “language-neutral vocabulary” is a controlled vocabulary used in the sequence listing that represents scientific terms as prescribed by sequence database providers (including scientific names, qualifiers and their controlled-vocabulary values, the symbols appearing in Appendix 2, Tables 1, 2, 3 and 4, and the feature keys appearing in Appendix 2, Tables 5 and 6);
(viii) “competent Authority” is the International Searching Authority that is to carry out the international search and to establish the written opinion of the International Searching Authority on the international application, or the International Preliminary Examining Authority that is to carry out the international preliminary examination on the international application.
SEQUENCE LISTINGS
Sequence Listing Forming Part of the International Application
3. A sequence listing which is contained in the international application as filed:
(i) shall be presented as a separate part of the description, be placed at the end of the application, preferably be entitled “Sequence Listing”, begin on a new page and have independent page numbering; preferably, the sequence listing shall not be reproduced in any other part of the application; subject to paragraph 36, it is unnecessary to describe the sequences elsewhere in the description;
(ii) shall present the sequences represented in the sequence listing and other available information in the sequence listing in accordance with paragraphs 5 to 35;
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(iii) if contained in an international application filed in electronic form, shall be in an electronic document format and filed by a means of transmittal in accordance with paragraph 37.
3bis. Any correction under Rule 26, rectification under Rule 91 or amendment under PCT Article 34(2) of the description submitted in relation to a sequence listing contained in the international application filed on paper and any sequence listing included in the international application by way of an amendment under Article 34(2)(b) of the description in relation to sequences contained in the international application filed on paper shall be submitted in accordance with Rule 26.4, Rule 91 or Rule 66.8, respectively.
3ter. Any correction under Rule 26, rectification under Rule 91 or amendment under Article 34(2)(b) of the description submitted in relation to a sequence listing contained in the international application filed in electronic form and any sequence listing included in the international application by way of an amendment under Article 34(2)(b) of the description in relation to sequences contained in the international application filed in electronic form shall be submitted in the form of a sequence listing in electronic form comprising the entire listing with the relevant correction, rectification or amendment. Any such sequence listing:
(i) shall preferably be entitled “Sequence Listing – Correction”, “Sequence Listing – Rectification” or “Sequence Listing – Amendment”, as the case may be, and have independent page numbering;
(ii) shall present the sequences represented in the sequence listing and other available information in the sequence listing in accordance with paragraphs 5 to 35; where applicable, the original numbering of the sequences in the international application as filed (as referred to in paragraph 5) shall be maintained; otherwise, the sequences shall be numbered in accordance with paragraph 5;
(iii) shall be in an electronic document format and filed by a means of transmittal in accordance with paragraph 38.
Sequence Listing Not Forming Part of the International Application
4. A sequence listing furnished under Rule 13 ter for the purposes of the international search or international preliminary examination:
(i) shall preferably be entitled “Sequence Listing – Rule 13 ter”;
(ii) shall present the sequences represented in the sequence listing and other available information in the sequence listing in accordance with paragraphs 5 to 35; where applicable, the original numbering of the sequences in the international application as filed (as referred to in paragraph 5) shall be maintained; otherwise, the sequences shall be numbered in accordance with paragraph 5;
(iii) if furnished on paper in accordance with Rule 13 ter.1(b), shall have independent page numbering;
(iv) if furnished in electronic form, shall be in an electronic document format and filed by a means of transmittal in accordance with paragraph 39;
(v) if furnished in electronic form together with the international application, shall be identical to the sequence listing as contained in the application and be accompanied by a statement that “the information recorded in electronic form furnished under Rule 13 ter is identical to the sequence listing as contained in the international application”;
(vi) if furnished subsequently to the filing of the international application, shall not go beyond the disclosure in the international application as filed and be accompanied by a statement to that effect; any such sequence listing shall contain only those sequences that were disclosed in the international application as filed.
4bis. Any correction under Rule 26, rectification under Rule 91 or amendment under Article 34(2)(b) of the description submitted in relation to a sequence listing contained in the international application as filed and any sequence listing included in the international application by way of an amendment under Article 34(2)(b) of the description in relation to sequences contained in the international application as filed shall be accompanied, for the purposes of the international search or international
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preliminary examination, by a sequence listing in electronic form in an electronic document format in accordance with paragraph 39, comprising the entire listing including any such correction, rectification or amendment, whenever this is required by the competent authority, unless such listing in electronic form is already available to that authority in a form and manner acceptable to it. Any such sequence listing in electronic form:
(i) shall preferably be entitled “Sequence Listing – Correction – Rule 13 ter”, “Sequence Listing – Rectification – Rule 13 ter” or “Sequence Listing – Amendment – Rule 13 ter”, as the case may be;
(ii) shall present the sequences represented in the sequence listing and other available information in the sequence listing in accordance with paragraphs 5 to 35; where applicable, the original numbering of the sequences in the international application as filed (as referred to in paragraph 5) shall be maintained; otherwise, the sequences shall be numbered in accordance with paragraph 5;
(iii) shall be filed by a means of transmittal in accordance with paragraph 39;
(iv) shall be identical to the corrected or amended sequence listing and be accompanied by a statement that “the information recorded in electronic form furnished under Rule 13 ter is identical to the corrected sequence listing” (or to the “amended sequence listing”, as the case may be).
Where such sequence listing in electronic form and, where applicable, such statement is not available to the competent authority, any such correction, rectification or amendment need only be taken into account by that authority for the purposes of the international search or preliminary examination to the extent that a meaningful search or preliminary examination can be carried out without such sequence listing in electronic form.
PRESENTATION OF SEQUENCES
5. Each sequence shall be assigned a separate sequence identifier. The sequence identifiers shall begin with 1 and increase sequentially by integers. If no sequence is present for a sequence identifier, the code 000 should appear under numeric identifier <400>, beginning on the next line following the SEQ
ID NO. The response for numeric identifier <160> shall include the total number of SEQ ID NOs, whether followed by a sequence or by the code 000.
6. In the description, claims or drawings of the application, the sequences represented in the sequence listing shall be referred to by the sequence identifier and preceded by “SEQ ID NO:”.
7. Nucleotide and amino acid sequences should be represented by at least one of the following three possibilities:
(i) a pure nucleotide sequence;
(ii) a pure amino acid sequence;
(iii) a nucleotide sequence together with its corresponding amino acid sequence.
For those sequences disclosed in the format specified in option (iii), above, the amino acid sequence must be disclosed separately in the sequence listing as a pure amino acid sequence with a separate integer sequence identifier.
Nucleotide Sequences
Symbols to Be Used
8. A nucleotide sequence shall be presented only by a single strand, in the 5’-end to 3’-end direction from left to right. The terms 3’ and 5’ shall not be represented in the sequence.
9. The bases of a nucleotide sequence shall be represented using the one-letter code for nucleotide sequence characters. Only lower case letters in conformity with the list given in Appendix 2, Table 1, shall be used.
10. Modified bases shall be represented as the corresponding unmodified bases or as “n” in the sequence itself if the modified base is one of those listed in Appendix 2, Table 2, and the modification shall be further described in the feature section of the sequence listing, using the codes given in Appendix 2, Table 2. These codes may be used in the description or the feature section of the sequence listing but not in the sequence itself (see also paragraph 32). The symbol “n” is the equivalent of only one unknown or modified nucleotide.
Format to Be Used
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11. A nucleotide sequence shall be listed with a maximum of 60 bases per line, with a space between each group of 10 bases.
12. The bases of a nucleotide sequence (including introns) shall be listed in groups of 10 bases, except in the coding parts of the sequence. Leftover bases, fewer than 10 in number at the end of non-coding parts of a sequence, should be grouped together and separated from adjacent groups by a space.
13. The bases of the coding parts of a nucleotide sequence shall be listed as triplets (codons).
14. The enumeration of the nucleotide shall start at the first base of the sequence with number 1. It shall be continuous through the whole sequence in the direction 5’ to 3’. It shall be marked in the right margin, next to the line containing the one-letter codes for the bases, and giving the number of the last base of that line. The enumeration method for nucleotide sequences set forth above remains applicable to nucleotide sequences that are circular in configuration, with the exception that the designation of the first nucleotide of the sequence may be made at the option of the applicant.
15. A nucleotide sequence that is made up of one or more non-contiguous segments of a larger sequence or of segments from different sequences shall be numbered as a separate sequence, with a separate sequence identifier. A sequence with a gap or gaps shall be numbered as a plurality of separate sequences with separate sequence identifiers, with the number of separate sequences being equal in number to the number of continuous strings of sequence data.
Amino Acid Sequences
Symbols to Be Used
16. The amino acids in a protein or peptide sequence shall be listed in the amino to carboxy direction from left to right. The amino and carboxy groups shall not be represented in the sequence.
17. The amino acids shall be represented using the three-letter code with the first letter as a capital and shall conform to the list given in Appendix 2, Table 3. An amino acid sequence that contains a blank or internal terminator symbols (for example, “Ter” or “*” or “.”) may not be represented as a single amino acid sequence, but shall be presented
as separate amino acid sequences (see paragraph 22).
18. Modified and unusual amino acids shall be represented as the corresponding unmodified amino acids or as “Xaa” in the sequence itself if the modified amino acid is one of those listed in Appendix 2, Table 4, and the modification shall be further described in the feature section of the sequence listing, using the codes given in Appendix 2, Table 4. These codes may be used in the description or the feature section of the sequence listing but not in the sequence itself (see also paragraph 32). The symbol “Xaa” is the equivalent of only one unknown or modified amino acid.
Format to Be Used
19. A protein or peptide sequence shall be listed with a maximum of 16 amino acids per line, with a space provided between each amino acid.
20. Amino acids corresponding to the codons in the coding parts of a nucleotide sequence shall be placed immediately under the corresponding codons. Where a codon is split by an intron, the amino acid symbol should be given below the portion of the codon containing two nucleotides.
21. The enumeration of amino acids shall start at the first amino acid of the sequence, with number 1. Optionally, the amino acids preceding the mature protein, for example pre-sequences, pro-sequences, pre-pro-sequences and signal sequences, when present, may have negative numbers, counting backwards starting with the amino acid next to number 1. Zero (0) is not used when the numbering of amino acids uses negative numbers to distinguish the mature protein. It shall be marked under the sequence every five amino acids. The enumeration method for amino acid sequences set forth above remains applicable for amino acid sequences that are circular in configuration, with the exception that the designation of the first amino acid of the sequence may be made at the option of the applicant.
22. An amino acid sequence that is made up of one or more non-contiguous segments of a larger sequence or of segments from different sequences shall be numbered as a separate sequence, with a separate sequence identifier. A sequence with a gap or gaps shall be numbered as a plurality of separate sequences with separate sequence identifiers, with the number of separate sequences being equal in
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number to the number of continuous strings of sequence data.
OTHER AVAILABLE INFORMATION IN THE SEQUENCE LISTING
23. The order of the items of information in the sequence listings shall follow the order in which those items are listed in the list of numeric identifiers of data elements as defined in Appendix 1.
24. Only numeric identifiers of data elements as defined in Appendix 1 shall be used for the presentation of the items of information in the sequence listing. The corresponding numeric identifier descriptions shall not be used. The provided information shall follow immediately after the numeric identifier while only those numeric identifiers for which information is given need appear on the sequence listing. Two exceptions to this requirement are numeric identifiers <220> and <300>, which serve as headers for “Feature” and “Publication Information,” respectively, and are associated with information in numeric identifiers <221> to <223> and <301> to <313>, respectively. When feature and publication information is provided in the sequence listing under those numeric identifiers, numeric identifiers <220> and <300>, respectively, should be included, but left blank. Generally, a blank line shall be inserted between numeric identifiers when the digit in the first or second position of the numeric identifier changes. An exception to this general rule is that no blank line should appear preceding numeric identifier <310>. Additionally, a blank line shall precede any repeated numeric identifier.
Mandatory Data Elements
25. The sequence listing shall include, in addition to and immediately preceding the actual nucleotide and/or amino acid sequence, the following items of information defined in Appendix 1 (mandatory data elements):
Applicant name<110> Title of invention<120> Number of SEQ ID NOs<160> SEQ ID NO: x<210> Length<211> Type<212> Organism<213>
Sequence<400>
Where the name of the applicant (numeric identifier <110>) is written in characters other than those of the Latin alphabet, it shall also be indicated in characters of the Latin alphabet either as a mere transliteration or through translation into English.
The data elements, except those under numeric identifiers <110>, <120> and <160>, shall be repeated for each sequence included in the sequence listing. Only the data elements under numeric identifiers <210> and <400> are mandatory if no sequence is present for a sequence identifier (see paragraph 5, above, and SEQ ID NO: 4 in the example depicted in Appendix 3 of this Standard).
26. In addition to the data elements identified in paragraph 25, above, when a sequence listing is furnished at any time prior to the assignment of an application number, the following data element shall be included in the sequence listing:
File reference<130>
27. In addition to the data elements identified in paragraph 25, above, when a sequence listing is furnished at any time following the assignment of an application number, the following data elements shall be included in the sequence listing:
Current patent application<140> Current filing date<141>
28. In addition to the data elements identified in paragraph 25, above, when a sequence listing is filed relating to an application which claims the priority of an earlier application, the following data elements shall be included in the sequence listing:
Earlier patent application<150> Earlier application filing date<151>
29. If “n” or “Xaa” or a modified base or modified/unusual L-amino acid is used in the sequence, the following data elements are mandatory:
Feature<220> Name/key<221> Location<222>
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Other information<223>
30. If the organism (numeric identifier <213>) is “Artificial Sequence” or “Unknown,” the following data elements are mandatory:
Feature<220> Other information<223>
Optional Data Elements
31. All data elements defined in Appendix 1, not mentioned in paragraphs 25 to 30, above, are optional (optional data elements).
Presentation of Features
32. When features of sequences are presented (that is, numeric identifier <220>), they shall be described by the “feature keys” set out in Appendix 2, Tables 5 and 6.
Free Text
33. “Free text” is a wording describing characteristics of the sequence under numeric identifier <223> (Other information) which does not use language-neutral vocabulary as referred to in paragraph 2(vii).
34. The use of free text shall be limited to a few short terms indispensable for the understanding of the sequence. It shall not exceed four lines with a maximum of 65 characters per line for each given data element, when written in English. Any further information shall be included in the main part of the description in the language thereof.
35. Any free text should preferably be in the English language.
REPETITION OF FREE TEXT IN MAIN PART OF DESCRIPTION
36. Where the sequence listing forming part of the international application contains free text, any such free text shall be repeated in the main part of the description in the language thereof. It is recommended that the free text in the language of the main part of the description be put in a specific section of the description called “Sequence Listing Free Text”.
SEQUENCE LISTINGS IN ELECTRONIC FORM
37. Any sequence listing referred to in paragraph 3 contained in an international application filed in electronic form shall be in an electronic document format and be filed by a means of transmittal that has been specified by the receiving Office for the purposes of filing of international applications in electronic form, provided that any such sequence listing shall preferably be in the electronic document format specified in paragraph 40 and be filed, if possible, by a means of transmittal which has been specified by both the receiving Office and the competent authority.
38. Any sequence listing in electronic form referred to in paragraph 3ter shall be in an electronic document format that has been specified by the receiving Office (in the case of a correction) or by the competent authority (in the case of a rectification or an amendment) for the purposes of filing of international applications in electronic form, provided that any such listing shall preferably be in the electronic document format specified in paragraph 40. Any such listing shall be filed by a means of transmittal which has been specified by the receiving Office or the competent authority, as applicable, for the purposes of this paragraph; if possible, it shall preferably be filed by a means of transmittal which has been specified by both the receiving Office and the competent authority.
39. Any sequence listing in electronic form referred to in paragraphs 4 and 4 bis furnished for the purposes of the international search or international preliminary examination shall be in the electronic document format specified in paragraph 40 and be filed by a means of transmittal which has been specified by the competent authority for the purposes of this paragraph.
40. For the purposes of the international search and international preliminary examination, any sequence listing in electronic form shall be contained within one electronic file encoded using IBM Code Page 437, IBM Code Page 932 or a compatible code page to represent the sequence listing as set out in paragraphs 5 to 36 with no other codes included. A compatible code page, as would be required for, for example, Japanese, Chinese, Cyrillic, Arabic, Greek or Hebrew characters, is one that assigns the Roman alphabet and numerals to the same hexadecimal positions as do the specified code pages.
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41. Any sequence listing in the electronic document format specified in paragraph 40 shall preferably be created by dedicated software such as PatentIn.
PROCEDURE BEFORE DESIGNATED AND ELECTED OFFICES
42. For the purposes of the procedure before a designated or elected Office before which the processing of an international application which contains the disclosure of one or more nucleotide and/or amino acid sequences has started (see Rule 13 ter.3):
(i) any reference to the receiving Office or the competent authority shall be construed as a reference to the designated or elected Office concerned;
(ii) any reference to a sequence listing which is included in the international application by way of a rectification under Rule 91 or an amendment under Article 34(2)(b) of the description in relation to sequences contained in the application as filed shall be construed to also include any sequence listing included in the application, under the national law applied by the designated or elected Office concerned, by way of a rectification (of an obvious mistake) or amendment of the description in relation to sequences contained in the application as filed;
(iii) any reference to a sequence listing furnished for the purposes of international search or international preliminary examination shall be construed to also include any such listing furnished to the designated or elected Office concerned for the purposes of national search or examination by that Office;
(iv) the designated or elected Office concerned may invite the applicant to furnish to it, within a time limit which shall be reasonable under the circumstances, for the purposes of national search and/or examination, a sequence listing in electronic form complying with this Standard, unless such listing in electronic form is already available to that Office in a form and manner acceptable to it.
Appendices
Appendix 1: Numeric Identifiers
Appendix 2: Nucleotide and Amino Acid Symbols and Feature Table
Table 1: List of Nucelotides
Table 2: List of Modified Nucleotides
Table 3: List of Amino Acids
Table 4: List of Modified and Unusual Amino Acids
Table 5: List of Feature Keys Related to Nucleotide Sequences
Table 6: List of Feature Keys Related to Protein Sequences
Appendix 3: Specimen Sequence Listing
[Appendices 1 to 3 to Annex C follow]
Annex C, Appendix 1 Numeric Identifiers
Only numeric identifiers as defined below may be used in sequence listings submitted in applications. The text of the data element headings given below shall not be included in the sequence listings.
Numeric identifiers of mandatory data elements, that is, data elements which must be included in all sequence listings (see paragraph 25 of this Standard: items 110, 120, 160, 210, 211, 212, 213 and 400) and numeric identifiers of data elements which must be included in circumstances specified in this Standard (see paragraphs 26, 27, 28, 29 and 30 of this Standard: items 130, 140, 141, 150 and 151, and 220 to 223) are marked by the symbol “M.”
Numeric identifiers of optional data elements (see paragraph 31 of this Standard) are marked by the symbol “O.”
CommentMandatory (M) or Optional (O)
Numeric Identifier Description
Numeric Identifier
where the name of the applicant is written in characters other than those of the Latin alphabet, the
MApplicant name<110>
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CommentMandatory (M) or Optional (O)
Numeric Identifier Description
Numeric Identifier
same shall also be indicated in characters of the Latin alphabet either as a mere transliteration or through translation into English
MTitle of Invention
<120>
see paragraph 26 of this StandardM, in the circumstances specified in paragraph 26 of this Standard
File Reference<130>
see paragraph 27 of this Standard; the current patent application shall be identified, in the following order,
M, in the circumstances specified in paragraph 27 of this Standard
Current patent application
<140>
by the two-letter code indicated in accordance with WIPO Standard ST.3 and the application number (in the format used by the industrial property Office with which the current patent application is filed) or, for an international application, by the international application number see paragraph 27 of this Standard; the date shall be indicated in accordance with WIPO Standard ST.2 (CCYY MM DD)
M, in the circumstances specified in paragraph 27 of this Standard
Current filing date
<141>
see paragraph 28 of this Standard; the earlier patent application shall be identified, in the following order,
M, in the circumstances specified in paragraph 28 of this Standard
Earlier patent application
<150>
by the two-letter code indicated in accordance with WIPO Standard ST.3 and the application number (in the format used by the industrial property Office with which the earlier patent application was filed) or, for an international application, by the international application number see paragraph 28 of this Standard; the date shall be indicated in accordance with WIPO Standard ST.2 (CCYY MM DD)
M, in the circumstances specified in paragraph 28 of this Standard
Earlier application filing date
<151>
MNumber of SEQ ID NOs
<160>
OSoftware<170> response shall be an integer representing the SEQ ID NO shown
MInformation for SEQ ID NO: x
<210>
sequence length expressed in number of base pairs or amino acids
MLength<211>
type of molecule sequenced in SEQ ID NO: x, either DNA, RNA or PRT; if a nucleotide sequence contains
MType<212>
both DNA and RNA fragments, the value shall be “DNA”; in addition, the combined DNA/RNA molecule shall be further described in the <220> to <223> feature section Genus Species (that is, scientific name) or “Artificial Sequence” or “Unknown”
MOrganism<213>
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CommentMandatory (M) or Optional (O)
Numeric Identifier Description
Numeric Identifier
leave blank; see paragraphs 29 and 30 of this Standard; description of points of biological
M, in the circumstances specified in paragraph 29 and 30 of this Standard
Feature<220>
significance in the sequence in SEQ ID NO: x) (may be repeated depending on the number of features indicated) see paragraph 29 of this Standard; only those keys as described in Table 5 or 6 of Appendix 2 shall be used
M in the circumstances specified in paragraph 29 of this Standard
Name/key<221>
see paragraph 29 of this Standard; - from (number of first base/amino acid in the feature) - to (number of
M, in the circumstances specified in paragraph 29 of this Standard
Location<222>
last base/amino acid in the feature) - base pairs (numbers refer to positions of base pairs in a nucleotide sequence) - amino acids (numbers refer to positions of amino acid residues in an amino acid sequence) - whether feature is located on the complementary strand to that filed in the sequence listing see paragraphs 29 and 30 of this Standard; any other relevant information, using language neutral
M, in the circumstances specified in paragraphs 29 and 30 of this Standard
Other information:
<223>
vocabulary, or free text (preferably in English); any free text is to be repeated in the main part of the description in the language thereof (see paragraph 36 of this Standard); where any modified base or modified/unusual L-amino acid appearing in Appendix 2, Tables 2 and 4, is in the sequence, the symbol associated with that base or amino acid from Appendix 2, Tables 2 and 4, should be used leave blank; repeat section for each relevant publication
OPublication information
<300>
OAuthors<301> title of publicationOTitle<302> journal name in which data publishedOJournal<303> journal volume in which data publishedOVolume<304> journal issue number in which data publishedOIssue<305> journal page numbers on which data publishedOPages<306> journal date on which data published; if possible, the date shall be indicated in accordance with WIPO Standard ST.2 (CCYY MM DD)
ODate<307>
accession number assigned by database including database name
ODatabase accession number
<308>
date of entry in database; the date shall be indicated in accordance with WIPO Standard ST.2 (CCYY MM DD)
ODatabase entry date
<309>
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CommentMandatory (M) or Optional (O)
Numeric Identifier Description
Numeric Identifier
document number, for patent type citations only; the full document shall specify, in the following order,
ODocument number
<310>
the two-letter code indicated in accordance with WIPO Standard ST.3, the publication number indicated in accordance with WIPO Standard ST.6, and the kind-of-document code indicated in accordance with WIPO Standard ST.16 document filing date, for patent-type citations only; the date shall be indicated in accordance with WIPO Standard ST.2 (CCYY MM DD)
OFiling date<311>
document publication date; for patent-type citations only; the date shall be indicated in accordance with WIPO Standard ST.2 (CCYY MM DD)
OPublication date<312>
ORelevant residues in SEQ
<313>
ID NO: x: from to
SEQ ID NO: x should follow the numeric identifier and should appear on the line preceding the sequence (see Appendix 3)
MSequence<400>
Annex C, Appendix 2 Nucleotide and Amino Acid Symbols and Feature Table
Table 1: List of Nucleotides
Origin of designationMeaningSymbol adenineaa guaninegg cytosinecc thyminett uraciluu purineg or ar pyrimidinet/u or cy aminoa or cm ketog or t/uk strong interactions 3H-bondsg or cs weak interactions 2H-bondsa or t/uw not ag or c or t/ub not ca or g or t/ud not ga or c or t/uh not t, not ua or g or cv anya or g or c or t/u, unknown, or
other n
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Table 2: List of Modified Nucleotides
MeaningSymbol 4-acetylcytidineac4c 5-(carboxyhydroxymethyl)uridinechm5u 2'-O-methylcytidinecm 5-carboxymethylaminomethyl-2-thiouridinecmnm5s2u 5-carboxymethylaminomethyluridinecmnm5u dihydrouridined 2'-O-methylpseudouridinefm beta, D-galactosylqueuosinegal q 2'-O-methylguanosinegm inosinei N6-isopentenyladenosinei6a 1-methyladenosinem1a 1-methylpseudouridinem1f 1-methylguanosinem1g 1-methylinosinem1i 2,2-dimethylguanosinem22g 2-methyladenosinem2a 2-methylguanosinem2g 3-methylcytidinem3c 5-methylcytidinem5c N6-methyladenosinem6a 7-methylguanosinem7g 5-methylaminomethyluridinemam5u 5-methoxyaminomethyl-2-thiouridinemam5s2u beta, D-mannosylqueuosineman q 5-methoxycarbonylmethyl-2-thiouridinemcm5s2u 5-methoxycarbonylmethyluridinemcm5u 5-methoxyuridinemo5u 2-methylthio-N6-isopentenyladenosinems2i6a N-((9-beta-D-ribofuranosyl-2-methylthiopurine-6-yl)carbamoyl)threoninems2t6a N-((9-beta-D-ribofuranosylpurine-6-yn( �-methylcarbamoyl)threoninemt6a uridine-5-oxyacetic acid-methylestermv uridine-5-oxyacetic acido5u wybutoxosineosyw pseudouridinep queuosineq 2-thiocytidines2c 5-methyl-2-thiouridines2t 2-thiouridines2u 4-thiouridines4u 5-methyluridinet
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MeaningSymbol N-((9-beta-D-ribofuranosylpurine-6-yl)-carbamoyl)threoninet6a 2'-O-methyl-5-methyluridinetm 2'-O-methyluridineum wybutosineyw 3-(3-amino-3-carboxy-propyl)uridine, (acp3)ux
Table 3: List of Amino Acids
MeaningSymbol AlanineAla CysteineCys Aspartic AcidAsp Glutamic AcidGlu PhenylalaninePhe GlycineGly HistidineHis IsoleucineIle LysineLys LeucineLeu MethionineMet AsparagineAsn ProlinePro GlutamineGln ArginineArg SerineSer ThreonineThr ValineVal TryptophanTrp TyrosineTyr Asp or AsnAsx Glu or GlnGlx unknown or otherXaa
Table 4: List of Modified and Unusual Amino Acids
MeaningSymbol 2-Aminoadipic acidAad 3-Aminoadipic acidbAad beta-Alanine, beta-Aminopropionic acidbAla 2-Aminobutyric acidAbu 4-Aminobutyric acid, piperidinic acid4Abu 6-Aminocaproic acidAcp 2-Aminoheptanoic acidAhe 2-Aminoisobutyric acidAib
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MeaningSymbol 3-Aminoisobutyric acidbAib 2-Aminopimelic acidApm 2,4 Diaminobutyric acidDbu DesmosineDes 2,2'-Diaminopimelic acidDpm 2,3-Diaminopropionic acidDpr N-EthylglycineEtGly N-EthylasparagineEtAsn HydroxylysineHyl allo-HydroxylysineaHyl 3-Hydroxyproline3Hyp 4-Hydroxyproline4Hyp IsodesmosineIde allo-IsoleucineaIle N-Methylglycine, sarcosineMeGly N-MethylisoleucineMeIle 6-N-MethyllysineMeLys N-MethylvalineMeVal NorvalineNva NorleucineNle OrnithineOrn
Table 5: List of Feature Keys Related to Nucleotide Sequences
DescriptionKey a related individual or strain contains stable, alternative forms of the same gene which differs from the presented sequence at this location (and perhaps others)
allele
(1) region of DNA at which regulation of termination of transcription occurs, which controls the expression of some bacterial operons; (2) sequence segment located
attenuator
between the promoter and the first structural gene that causes partial termination of transcription constant region of immunoglobulin light and heavy chains, and T-cell receptor alpha, beta, and gamma chains; includes one or more exons depending on the particular chain
C_region
CAAT box; part of a conserved sequence located about 75 bp up-stream of the start point of eukaryotic transcription units which may be involved in RNA polymerase binding; consensus=GG (C or T) CAATCT
CAAT_signal
coding sequence; sequence of nucleotides that corresponds with the sequence of amino acids in a protein (location includes stop codon); feature includes amino acid conceptual translation
CDS
independent determinations of the “same” sequence differ at this site or regionconflict displacement loop; a region within mitochondrial DNA in which a short stretch of RNA is paired with one strand of DNA, displacing the original partner DNA strand
D-loop
in this region; also used to describe the displacement of a region of one strand of duplex DNA by a single stranded invader in the reaction catalyzed by RecA protein
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DescriptionKey diversity segment of immunoglobulin heavy chain, and T-cell receptor beta chainD-segment a cis-acting sequence that increases the utilization of (some) eukaryotic promoters, and can function in either orientation and in any location (upstream or downstream) relative to the promoter
enhancer
region of genome that codes for portion of spliced mRNA; may contain 5'UTR all CDSs, and 3'UTR
exon
GC box; a conserved GC-rich region located upstream of the start point of eukaryotic transcription units which may occur in multiple copies or in either orientation; consensus=GGGCGG
GC_signal
region of biological interest identified as a gene and for which a name has been assigned
gene
intervening DNA; DNA which is eliminated through any of several kinds of recombination
iDNA
a segment of DNA that is transcribed, but removed from within the transcript by splicing together the sequences (exons) on either side of it
intron
joining segment of immunoglobulin light and heavy chains, and T-cell receptor alpha, beta, and gamma chains
J_segment
long terminal repeat, a sequence directly repeated at both ends of a defined sequence, of the sort typically found in retroviruses
LTR
mature peptide or protein coding sequence; coding sequence for the mature or final peptide or protein product following post-translational modification; the location does not include the stop codon (unlike the corresponding CDS)
mat_peptide
site in nucleic acid which covalently or non-covalently binds another moiety that cannot be described by any other Binding key (primer_bind or protein_bind)
misc_binding
feature sequence is different from that presented in the entry and cannot be described by any other Difference key (conflict, unsure, old_sequence, mutation, variation, allele, or modified_base)
misc_difference
region of biological interest which cannot be described by any other feature key; a new or rare feature
misc_feature
site of any generalized, site-specific or replicative recombination event where there is a breakage and reunion of duplex DNA that cannot be described by other
misc_recomb
recombination keys (iDNA and virion) or qualifiers of source key (/insertion_seq, /transposon, /proviral) any transcript or RNA product that cannot be defined by other RNA keys (prim_transcript, precursor_RNA, mRNA, 5'clip, 3'clip, 5'UTR, 3'UTR, exon,
misc_RNA
CDS, sig_peptide, transit_peptide, mat_peptide, intron, polyA_site, rRNA, tRNA, scRNA, and snRNA) any region containing a signal controlling or altering gene function or expression that cannot be described by other Signal keys (promoter, CAAT_signal,
misc_signal
TATA_signal, -35_signal, -10_signal, GC_signal, RBS, polyA_signal, enhancer, attenuator, terminator, and rep_origin) any secondary or tertiary structure or conformation that cannot be described by other Structure keys (stem_loop and D-loop)
misc_structure
the indicated nucleotide is a modified nucleotide and should be substituted for by the indicated molecule (given in the mod_base qualifier value)
modified_base
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DescriptionKey messenger RNA; includes 5' untranslated region (5'UTR), coding sequences (CDS, exon) and 3' untranslated region (3'UTR)
mRNA
a related strain has an abrupt, inheritable change in the sequence at this locationmutation extra nucleotides inserted between rearranged immunoglobulin segmentsN_region the presented sequence revises a previous version of the sequence at this locationold_sequence recognition region necessary for endonuclease cleavage of an RNA transcript that is followed by polyadenylation; consensus=AATAAA
polyA_signal
site on an RNA transcript to which will be added adenine residues by post-transcriptional polyadenylation
polyA_site
any RNA species that is not yet the mature RNA product; may include 5' clipped region (5'clip), 5' untranslated region (5'UTR), coding sequences (CDS, exon),
precursor_RNA
intervening sequences (intron), 3' untranslated region (3'UTR), and 3' clipped region (3'clip) primary (initial, unprocessed) transcript; includes 5' clipped region (5'clip), 5' untranslated region (5'UTR), coding sequences (CDS, exon), intervening sequences (intron), 3' untranslated region (3'UTR), and 3' clipped region (3' clip)
prim_transcript
non-covalent primer binding site for initiation of replication, transcription, or reverse transcription; includes site(s) for synthetic, for example, PCR primer elements
primer_bind
region on a DNA molecule involved in RNA polymerase binding to initiate transcription
promoter
non-covalent protein binding site on nucleic acidprotein_bind ribosome binding siteRBS region of genome containing repeating unitsrepeat_region single repeat elementrepeat_unit origin of replication; starting site for duplication of nucleic acid to give two identical copies
rep_origin
mature ribosomal RNA; the RNA component of the ribonucleoprotein particle (ribosome) which assembles amino acids into proteins
rRNA
switch region of immunoglobulin heavy chains; involved in the rearrangement of heavy chain DNA leading to the expression of a different immunoglobulin class from the same B-cell
S_region
many tandem repeats (identical or related) of a short basic repeating unit; many have a base composition or other property different from the genome average that allows them to be separated from the bulk (main band) genomic DNA
satellite
small cytoplasmic RNA; any one of several small cytoplasmic RNA molecules present in the cytoplasm and (sometimes) nucleus of a eukaryote
scRNA
signal peptide coding sequence; coding sequence for an N-terminal domain of a secreted protein; this domain is involved in attaching nascent polypeptide to the membrane; leader sequence
sig_peptide
small nuclear RNA; any one of many small RNA species confined to the nucleus; several of the snRNAs are involved in splicing or other RNA processing reactions
snRNA
identifies the biological source of the specified span of the sequence; this key is mandatory; every entry will have, as a minimum, a single source key spanning the entire sequence; more than one source key per sequence is permissable
source
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DescriptionKey hairpin; a double-helical region formed by base-pairing between adjacent (inverted) complementary sequences in a single strand of RNA or DNA
stem_loop
Sequence Tagged Site; short, single-copy DNA sequence that characterizes a mapping landmark on the genome and can be detected by PCR; a region of the genome can be mapped by determining the order of a series of STSs
STS
TATA box; Goldberg-Hogness box; a conserved AT-rich septamer found about 25 bp before the start point of each eukaryotic RNA polymerase II transcript unit
TATA_signal
which may be involved in positioning the enzyme for correct initiation; consensus=TATA(A or T)A(A or T) sequence of DNA located either at the end of the transcript or adjacent to a promoter region that causes RNA polymerase to terminate transcription; may also be site of binding of repressor protein
terminator
transit peptide coding sequence; coding sequence for an N-terminal domain of a nuclear-encoded organellar protein; this domain is involved in post-translational import of the protein into the organelle
transit_peptide
mature transfer RNA, a small RNA molecule (75-85 bases long) that mediates the translation of a nucleic acid sequence into an amino acid sequence
tRNA
author is unsure of exact sequence in this regionunsure variable region of immunoglobulin light and heavy chains, and T-cell receptor alpha, beta, and gamma chains; codes for the variable amino terminal portion; can be made up from V_segments, D_segments, N_regions, and J_segments
V_region
variable segment of immunoglobulin light and heavy chains, and T-cell receptor alpha, beta, and gamma chains; codes for most of the variable region (V_region) and the last few amino acids of the leader peptide
V_segment
a related strain contains stable mutations from the same gene (for example, RFLPs, polymorphisms, etc.) which differ from the presented sequence at this location (and possibly others)
variation
3'-most region of a precursor transcript that is clipped off during processing3'clip region at the 3 end of a mature transcript (following the stop codon) that is not translated into a protein
3'UTR
5'-most region of a precursor transcript that is clipped off during processing5'clip region at the 5' end of a mature transcript (preceding the initiation codon) that is not translated into a protein
5'UTR
pribnow box; a conserved region about 10 bp upstream of the start point of bacterial transcription units which may be involved in binding RNA polymerase; consensus=TAtAaT
-10_signal
a conserved hexamer about 35 bp upstream of the start point of bacterial transcription units; consensus=TTGACa [ ] or TGTTGACA [ ]
-35_signal
Table 6: List of Feature Keys Related to Protein Sequences
DescriptionKey different papers report differing sequencesCONFLICT authors report that sequence variants existVARIANT description of sequence variants produced by alternative splicing
VARSPLIC
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DescriptionKey site which has been experimentally alteredMUTAGEN post-translational modification of a residueMOD_RES N-terminal or otherACETYLATION generally at the C-terminal of a mature active peptideAMIDATION undetermined N- or C-terminal blocking groupBLOCKED of the N-terminal methionineFORMYLATION of asparagine, aspartic acid, proline or lysineGAMMA-CARBOXYGLUTAMIC
ACID HYDROXYLATION generally of lysine or arginineMETHYLATION of serine, threonine, tyrosine, aspartic acid or histidinePHOSPHORYLATION N-terminal glutamate which has formed an internal cyclic lactam
PYRROLIDONE CARBOXYLICACID
generally of tyrosineSULFATATION covalent binding of a lipidic moietyLIPID myristate group attached through an amide bond to the N-terminal glycine residue of the mature form of a protein or to an internal lysine residue
MYRISTATE
palmitate group attached through a thioether bond to a cysteine residue or through an ester bond to a serine or threonine residue
PALMITATE
farnesyl group attached through a thioether bond to a cysteine residue
FARNESYL
geranyl-geranyl group attached through a thioether bond to a cysteine residue
GERANYL-GERANYL
glycosyl-phosphatidylinositol (GPI) group linked to the alpha-carboxyl group of the C-terminal residue of the mature form of a protein
GPI-ANCHOR
N-terminal cysteine of the mature form of a prokaryotic lipoprotein with an amide-linked fatty acid and a glyceryl group to which two fatty acids are linked by ester linkages
N-ACYL DIGLYCERIDE
disulfide bond; the ‘FROM’ and ‘TO’ endpoints represent the two residues which are linked by an intra-chain
DISULFID
disulfide bond; if the ‘FROM’ and ‘TO’ endpoints are identical, the disulfide bond is an interchain one and the description field indicates the nature of the cross-link thiolester bond; the ‘FROM’and ‘TO’endpoints represent the two residues which are linked by the thiolester bond
THIOLEST
thioether bond; the ‘FROM’ and ‘TO’endpoints represent the two residues which are linked by the thioether bond
THIOETH
glycosylation site; the nature of the carbohydrate (if known) is given in the description field
CARBOHYD
binding site for a metal ion; the description field indicates the nature of the metal
METAL
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DescriptionKey binding site for any chemical group (co-enzyme, prosthetic group, etc.); the chemical nature of the group is given in the description field
BINDING
extent of a signal sequence (prepeptide)SIGNAL extent of a transit peptide (mitochondrial, chloroplastic, or for a microbody)
TRANSIT
extent of a propeptidePROPEP extent of a polypeptide chain in the mature proteinCHAIN extent of a released active peptidePEPTIDE extent of a domain of interest on the sequence; the nature of that domain is given in the description field
DOMAIN
extent of a calcium-binding regionCA_BIND extent of a DNA-binding regionDNA_BIND extent of a nucleotide phosphate binding region; the nature of the nucleotide phosphate is indicated in the description field
NP_BIND
extent of a transmembrane regionTRANSMEM extent of a zinc finger regionZN_FING extent of a similarity with another protein sequence; precise information, relative to that sequence is given in the description field
SIMILAR
extent of an internal sequence repetitionREPEAT secondary structure: Helices, for example, Alpha-helix, 3(10) helix, or Pi-helix
HELIX
secondary structure: Beta-strand, for example, Hydrogen bonded beta-strand, or Residue in an isolated beta-bridge
STRAND
secondary structure Turns, for example, H-bonded turn (3-turn, 4-turn or 5-turn)
TURN
amino acid(s) involved in the activity of an enzymeACT_SITE any other interesting site on the sequenceSITE the sequence is known to start with an initiator methionineINIT_MET the residue at an extremity of the sequence is not the terminal residue; if applied to position 1, this signifies that
NON_TER
the first position is not the N-terminus of the complete molecule; if applied to the last position, it signifies that this position is not the C-terminus of the complete molecule; there is no description field for this key non consecutive residues; indicates that two residues in a sequence are not consecutive and that there are a number of unsequenced residues between them
NON_CONS
uncertainties in the sequence; used to describe region(s) of a sequence for which the authors are unsure about the sequence assignment
UNSURE
[Annex C, Appendix 3, follows] Annex C,Appendix 3 Specimen Sequence Listing
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[Annex D follows]
Annex D
INFORMATION FROM FRONT PAGE OF PUBLISHED INTERNATIONAL APPLICATION TO BE INCLUDED IN THE GAZETTE UNDER RULE 86.1(i)
The following information shall be extracted from the front page of the publication of the international publication for each published international application and shall, in accordance with Rule 86.1(i), appear in the corresponding entry of the Gazette:
1. as to the international publication:
1.1 the international publication number
1.2 the date of the international publication
1.3 an indication whether the following items were published in the published international application:
1.31 international search report
1.32 declaration under Article 17(2)
1.33 claims amended under Article 19(1)
1.34 statement under Article 19(1)
1.35 [ Deleted]
1.36 request for rectification under the first sentence of Rule 91.3(d)
1.37 information concerning the incorporation by reference of an element or part as referred to in Rule 48.2(b)(v)
1.38 information concerning a priority claim under Rule 26 bis.2(d)
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1.39 information concerning a request under Rule 26 bis.3 for restoration of the right of priority
1.40 information on copies of any declaration or other evidence furnished under Rule 26bis.3(f)
1.4 the language in which the international application was filed
1.5 the language of publication of the international application
2. as to the international application:
2.1 the title of the invention
2.2 the symbol(s) of the International Patent Classification (IPC)
2.3 the international application number
2.4 the international filing date
3. as to any priority claim:
3.1 the application number of the earlier application
3.2 the date on which the earlier application was filed
3.3 where the earlier application is:
3.31 a national application: the country in which the earlier application was filed
3.32 a regional application: the authority entrusted with the granting of regional patents under the applicable regional patent treaty and, in the case referred to in Rule 4.10(b)(ii), a country party to the Paris Convention for the Protection of Industrial Property for which that earlier application was filed
3.33 an international application: the receiving Office with which it was filed
4. as to the applicant, inventor and agent:
4.1 their name(s)
4.2 their mailing address(es)
5. as to the designated States:
5.1 their names
5.2 the indication of any wish for a regional patent
5.3 the indication that every kind of protection available is sought, unless otherwise indicated
6. as to a statement concerning non-prejudicial disclosure or exception to lack of novelty:
6.1 the date of the disclosure
6.2 the place of the disclosure
6.3 the kind of the disclosure (e.g., exhibition, scientific publication, conference reports, etc.)
6.4 the title of the exhibition, publication or conference
7. as to any indication in relation to deposited biological material furnished under Rule 13 bis separately from the description:
7.1 the fact that such indication is published
7.2 the date on which the International Bureau received such indication
8. as to any declaration referred to in Rule 4.17 which was received by the International Bureau before the expiration of the time limit under Rule 26 ter.1:
8.1 the fact that such a declaration was made and a reference to the applicable item in Rule 4.17 under which it was made
[Annex E follows]
Annex E
INFORMATION TO BE PUBLISHED IN THE GAZETTE UNDER RULE 86.1(v)
1. The time limits applicable under Articles 22 and 39 in respect of each Contracting State.
2. The list of the non-patent literature agreed upon by the International Searching Authorities for inclusion in the minimum documentation.
3. The names of the national Offices which do not wish to receive copies under Article 13(2)(c).
4. The provisions of the national laws of Contracting States concerning international-type search.
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5. The text of the agreements entered into between the International Bureau and the International Searching Authorities or the International Preliminary Examining Authorities.
6. The names of the national Offices which entirely or in part waived their rights to any communication under Article 20.
7. The names of the Contracting States which are bound by Chapter II of the PCT.
8. Index of concordance of international application numbers and international publication numbers, listed according to international application numbers.
9. Index of applicants’ names giving, for each name, the corresponding international publication number(s).
10. Index of international publication numbers, grouped according to the International Patent Classification symbols.
11. Indication of any subject matter that will not be searched or examined by the various International Searching and Preliminary Examining Authorities under Rules 39 and 67.
12. Requirements of designated and elected Offices under Rules 49.5 and 76.5 in relation to the furnishing of translations.
13. The dates defining the period referred to in Rule 32.1(b) during which the international application, whose effects may be extended to a successor State under Rule 32.1, must have been filed.
14. The criteria for restoration of the right of priority applied by receiving Offices under Rule 26 bis.3 or designated Offices under Rule 49 ter.2, and any subsequent changes in that respect.
[Annex F follows]
Annex F
STANDARD FORTHE ELECTRONIC FILINGAND PROCESSING OF INTERNATIONAL APPLICATIONS
[Editor's Note: Annex F consists of nine main sections and four appendices, the titles of which are reproduced below. The full text of Annex F and its Appendices are set out in two separate documents available from the WIPO Web site at: http://www.wipo.int/pct/en/texts/index.html.]
1. Introduction
2. The E-PCT standard: Overview and vision
3. E-PCT submission structure and format
4. IA documents packaging
5. Transmission
6. Electronic filing software
7. [Deleted]
8. Principles of electronic records management
9. Abbreviated expressions, interpretation and glossary
Appendix I XML DTDs for the E-PCT Standard
Appendix II PKI Architecture for the E-PCT Standard
Appendix III Basic Common Standard for Electronic Filing
Appendix IV Use of Physical Media for the E-PCT Standard
[End of Appendix, Annex and document]
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Appendix P Paris Convention
Paris Convention for the Protection of Industrial Property of March 20, 1883
as revised
at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, and as amended on October 2, 1979. [Articles have been given titles to facilitate their identification. There are no titles in the signed (French) text.]
Article 1
[Establishment of the Union; Scope of Industrial Property]
(1) The countries to which this Convention applies constitute a Union for the protection of industrial property.
(2) The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition.
(3) Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce proper, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour.
(4) Patents shall include the various kinds of industrial patents recognized by the laws of the countries of the Union, such as patents of importation, patents of improvement, patents and certificates of addition, etc.
Article 2
[National Treatment for Nationals of Countries of the Union]
(1) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention.
Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.
(2) However, no requirement as to domicile or establishment in the country where protection is claimed may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property rights.
(3) The provisions of the laws of each of the countries of the Union relating to judicial and administrative procedure and to jurisdiction, and to the designation of an address for service or the appointment of an agent, which may be required by the laws on industrial property are expressly reserved.
Article 3
[Same Treatment for Certain Categories of Persons as for Nationals of Countries of the Union]
Nationals of countries outside the Union who are domiciled or who have real and effective industrial or commercial establishments in the territory of one of the countries of the Union shall be treated in the same manner as nationals of the countries of the Union.
Article 4
[A. to I. Patents, Utility Models, Industrial Designs, Marks, Inventors Certificates; Right of Priority. — G. Patents: Division of the Application]
A. — (1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.
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(2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.
(3) By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application.
B. — Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right or any right of personal possession. Rights acquired by third parties before the date of the first application that serves as the basis for the right of priority are reserved in accordance with the domestic legislation of each country of the Union.
C. — (1) The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.
(2) These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period.
(3) If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.
(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union. shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous
application may not thereafter serve as a basis for claiming a right of priority.
D. — (1) Any person desiring to take advantage of the priority of a previous filing shall be required to make a declaration indicating the date of such filing and the country in which it was made. Each country shall determine the latest date on which such declaration must be made.
(2) These particulars shall be mentioned in the publications issued by the competent authority, and in particular in the patents and the specifications relating thereto.
(3) The countries of the Union may require any person making a declaration of priority to produce a copy of the application (description, drawings, etc.) previously filed. The copy, certified as correct by the authority which received such application, shall not require any authentication, and may in any case be filed, without fee, at any time within three months of the filing of the subsequent application. They may require it to be accompanied by a certificate from the same authority showing the date of filing, and by a translation.
(4) No other formalities may be required for the declaration of priority at the time of filing the application. Each country of the Union shall determine the consequences of failure to comply with the formalities prescribed by this Article, but such consequences shall in no case go beyond the loss of the right of priority.
(5) Subsequently, further proof may be required.
Any person who avails himself of the priority of a previous application shall be required to specify the number of that application; this number shall be published as provided for by paragraph (2), above.
E. — (1) Where an industrial design is filed in a country by virtue of a right of priority based on the filing of a utility model, the period of priority shall be the same as that fixed for industrial designs.
(2) Furthermore, it is permissible to file a utility model in a country by virtue of a right of priority based on the filing of a patent application, and vice versa.
F. — No country of the Union may refuse a priority or a patent application on the ground that the applicant claims multiple priorities, even if they
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originate in different countries, or on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed, provided that, in both cases, there is unity of invention within the meaning of the law of the country.
With respect to the elements not included in the application or applications whose priority is claimed, the filing of the subsequent application shall give rise to a right of priority under ordinary conditions.
G. — (1) If the examination reveals that an application for a patent contains more than one invention, the applicant may divide the application into a certain number of divisional applications and preserve as the date of each the date of the initial application and the benefit of the right of priority, if any.
(2) The applicant may also, on his own initiative, divide a patent application and preserve as the date of each divisional application the date of the initial application and the benefit of the right of priority, if any. Each country of the Union shall have the right to determine the conditions under which such division shall be authorized.
H. — Priority may not be refused on the ground that certain elements of the invention for which priority is claimed do not appear among the claims formulated in the application in the country of origin, provided that the application documents as a whole specifically disclose such elements.
I. — (1) Applications for inventors' certificates filed in a country in which applicants have the right to apply at their own option either for a patent or for an inventor's certificate shall give rise to the right of priority provided for by this Article, under the same conditions and with the same effects as applications for patents.
(2) In a country in which applicants have the right to apply at their own option either for a patent or for an inventor's certificate, an applicant for an inventor's certificate shall, in accordance with the provisions of this Article relating to patent applications, enjoy a right of priority based on an application for a patent, a utility model, or an inventor's certificate.
Article 4bis
[Patents: Independence of Patents Obtained for the Same Invention in Different Countries]
(1) Patents applied for in the various countries of the Union by nationals of countries of the Union shall be independent of patents obtained for the same invention in other countries, whether members of the Union or not.
(2) The foregoing provision is to be understood in an unrestricted sense, in particular, in the sense that patents applied for during the period of priority are independent, both as regards the grounds for nullity and forfeiture, and as regards their normal duration.
(3) The provision shall apply to all patents existing at the time when it comes into effect.
(4) Similarly, it shall apply, in the case of the accession of new countries, to patents in existence on either side at the time of accession.
(5) Patents obtained with the benefit of priority shall, in the various countries of the Union, have a duration equal to that which they would have, had they been applied for or granted without the benefit of priority.
Article 4ter
[Patents: Mention of the Inventor in the Patent]
The inventor shall have the right to be mentioned as such in the patent.
Article 4quater
[Patents: Patentability in Case of Restrictions of Sale by Law]
The grant of a patent shall not be refused and a patent shall not be invalidated on the ground that the sale of the patented product or of a product obtained by means of a patented process is subject to restrictions or limitations resulting from the domestic law.
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PARIS CONVENTION
Article 5
[A. Patents: Importation of Articles; Failure to Work or Insufficient Working; Compulsory Licenses. — B. Industrial Designs: Failure to Work; Importation of Articles. — C. Marks: Failure to Use; Different Forms; Use by Co-proprietors. — D. Patents, Utility Models, Marks, Industrial Designs: Marking]
A. — (1) Importation by the patentee into the country where the patent has been granted of articles manufactured in any of the countries of the Union shall not entail forfeiture of the patent.
(2) Each country of the Union shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent, for example, failure to work.
(3) Forfeiture of the patent shall not be provided for except in cases where the grant of compulsory licenses would not have been sufficient to prevent the said abuses. No proceedings for the forfeiture or revocation of a patent may be instituted before the expiration of two years from the grant of the first compulsory license.
(4) A compulsory license may not be applied for on the ground of failure to work or insufficient working before the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last; it shall be refused if the patentee justifies his inaction by legitimate reasons. Such a compulsory license shall be non-exclusive and shall not be transferable, even in the form of the grant of a sub-license, except with that part of the enterprise or goodwill which exploits such license.
(5) The foregoing provisions shall be applicable, mutatis mutandis, to utility models.
B. — The protection of industrial design shall not, under any circumstance, be subject to any forfeiture, either by reason of failure to work or by reason of the importation of articles corresponding to those which are protected.
C. — (1) If, in any country, use of the registered mark is compulsory, the registration may
be cancelled only after a reasonable period, and then only if the person concerned does not justify his inaction.
(2) Use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark.
(3) Concurrent use of the same mark on identical or similar goods by industrial or commercial establishments considered as co-proprietors of the mark according to the provisions of the domestic law of the country where protection is claimed shall not prevent registration or diminish in any way the protection granted to the said mark in any country of the Union, provided that such use does not result in misleading the public and is not contrary to the public interest.
D. — No indication or mention of the patent, of the utility model, of the registration of the trademark, or of the deposit of the industrial design, shall be required upon the goods as a condition of recognition of the right to protection.
Article 5bis
[All Industrial Property Rights: Period of Grace for the Payment of Fees for the Maintenance of Rights; Patents: Restoration]
(1) A period of grace of not less than six months shall be allowed for the payment of the fees prescribed for the maintenance of industrial property rights, subject, if the domestic legislation so provides, to the payment of a surcharge.
(2) The countries of the Union shall have the right to provide for the restoration of patents which have lapsed by reason of non-payment of fees.
Article 5ter
[Patents: Patented Devices Forming Part of Vessels, Aircraft, or Land Vehicles]
In any country of the Union the following shall not be considered as infringements of the rights of a patentee:
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(1) the use on board vessels of other countries of the Union of devices forming the subject of his patent in the body of the vessel, in the machinery, tackle, gear and other accessories, when such vessels temporarily or accidentally enter the waters of the said country, provided that such devices are used there exclusively for the needs of the vessel;
(2) the use of devices forming the subject of the patent in the construction or operation of aircraft or land vehicles of other countries of the Union, or of accessories of such aircraft or land vehicles, when those aircraft or land vehicles temporarily or accidentally enter the said country.
Article 5quater
[Patents: Importation of Products Manufactured by a Process Patented in the Importing Country]
When a product is imported into a country of the Union where there exists a patent protecting a process of manufacture of the said product, the patentee shall have all the rights, with regard to the imported product, that are accorded to him by the legislation of the country of importation, on the basis of the process patent, with respect to products manufactured in that country.
Article 5quinquies
[Industrial Designs]
Industrial designs shall be protected in all the countries of the Union.
Article 6
[Marks: Conditions of Registration; Independence of Protection of Same Mark in Different Countries]
(1) The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation.
(2) However, an application for the registration of a mark filed by a national of a country of the Union in any country of the Union may not be refused, nor may a registration be invalidated, on
the ground that filing, registration, or renewal, has not been effected in the country of origin.
(3) A mark duly registered in a country of the Union shall be regarded as independent of marks registered in the other countries of the Union, including the country of origin.
Article 6bis
[Marks: Well Known Marks]
(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.
(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.
(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.
Article 6ter
[Marks: Prohibitions concerning State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations]
(1)(a) The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view.
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(b) The provisions of subparagraph (a), above, shall apply equally to armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations of which one or more countries of the Union are members, with the exception of armorial bearings, flags, other emblems, abbreviations, and names, that are already the subject of international agreements in force, intended to ensure their protection.
(c) No country of the Union shall be required to apply the provisions of subparagraph (b), above, to the prejudice of the owners of rights acquired in good faith before the entry into force, in that country, of this Convention. The countries of the Union shall not be required to apply the said provisions when the use or registration referred to in subparagraph (a), above, is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization.
(2) Prohibition of the use of official signs and hallmarks indicating control and warranty shall apply solely in cases where the marks in which they are incorporated are intended to be used on goods of the same or a similar kind.
(3)(a) For the application of these provisions, the countries of the Union agree to communicate reciprocally, through the intermediary of the International Bureau, the list of State emblems, and official signs and hallmarks indicating control and warranty, which they desire, or may hereafter desire, to place wholly or within certain limits under the protection of this Article, and all subsequent modifications of such list. Each country of the Union shall in due course make available to the public the lists so communicated. Nevertheless such communication is not obligatory in respect of flags of States.
(b) The provisions of subparagraph (b) of paragraph (1) of this Article shall apply only to such armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations as the latter have communicated to the countries of the Union through the intermediary of the International Bureau.
(4) Any country of the Union may, within a period of twelve months from the receipt of the notification, transmit its objections, if any, through the intermediary of the International Bureau, to the country or international intergovernmental organization concerned.
(5) In the case of State flags, the measures prescribed by paragraph (1), above, shall apply solely to marks registered after November 6, 1925.
(6) In the case of State emblems other than flags, and of official signs and hallmarks of the countries of the Union, and in the case of armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations, these provisions shall apply only to marks registered more than two months after receipt of the communication provided for in paragraph (3), above.
(7) In cases of bad faith, the countries shall have the right to cancel even those marks incorporating State emblems, signs, and hallmarks, which were registered before November 6, 1925.
(8) Nationals of any country who are authorized to make use of the State emblems, signs, and hallmarks, of their country may use them even if they are similar to those of another country.
(9) The countries of the Union undertake to prohibit the unauthorized use in trade of the State armorial bearings of the other countries of the Union, when the use is of such a nature as to be misleading as to the origin of the goods.
(10) The above provisions shall not prevent the countries from exercising the right given in
paragraph (3) of Article 6quinquies, Section B, to refuse or to invalidate the registration of marks incorporating, without authorization, armorial hearings, flags, other State emblems, or official signs and hallmarks adopted by a country of the Union, as well as the distinctive signs of international intergovernmental organizations referred to in paragraph (1), above.
Article 6quater
[Marks: Assignment of Marks]
(1) When, in accordance with the law of a country of the Union, the assignment of a mark is valid only if it takes place at the same time as the
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transfer of the business or goodwill to which the mark belongs, it shall suffice for the recognition of such validity that the portion of the business or goodwill located in that country be transferred to the assignee, together with the exclusive right to manufacture in the said country, or to sell therein, the goods bearing the mark assigned.
(2) The foregoing provision does not impose upon the countries of the Union any obligation to regard as valid the assignment of any mark the use of which by the assignee would, in fact, be of such a nature as to mislead the public, particularly as regards the origin, nature, or essential qualities, of the goods to which the mark is applied.
Article 6quinquies
[Marks: Protection of Marks Registered in One Country of the Union in the Other Countries of the Union]
A. — (1) Every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicated in this Article. Such countries may, before proceeding to final registration, require the production of a certificate of registration in the country of origin, issued by the competent authority. No authentication shall be required for this certificate.
(2) Shall be considered the country of origin the country of the Union where the applicant has a real and effective industrial or commercial establishment, or, if he has no such establishment within the Union, the country of the Union where he has his domicile, or, if he has no domicile within the Union but is a national of a country of the Union, the country of which he is a national.
B. — Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases:
1. when they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed;
2. when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of
production, or have become customary. in the current language or in the bona fide and established practices of the trade of the country where protection is claimed;
3. when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order.
This provision is subject, however, to the application
of Article 10bis.
C. — (1) In determining whether a mark is eligible for protection, all the factual circumstances must be taken into consideration, particularly the length of time the mark has been in use.
(2) No trademark shall be refused in the other countries of the Union for the sole reason that it differs from the mark protected in the country of origin only in respect of elements that do not alter its distinctive character and do not affect its identity in the form in which it has been registered in the said country of origin.
D. — No person may benefit from the provisions of this Article if the mark for which he claims protection is not registered in the country of origin.
E. — However, in no case shall the renewal of the registration of the mark in the country of origin involve an obligation to renew the registration in the other countries of the Union in which the mark has been registered.
F. — The benefit of priority shall remain unaffected for applications for the registration of marks filed within the period fixed by Article 4, even if registration in the country of origin is effected after the expiration of such period.
Article 6sexies
[Marks: Service Marks]
The countries of the Union undertake to protect service marks. They shall not be required to provide for the registration of such marks.
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Article 6septies
[Marks: Registration in the Name of the Agent or Representative of the Proprietor Without the Latter's Authorization]
(1) If the agent or representative of the person who is the proprietor of a mark in one of the countries of the Union applies, without such proprietor's authorization, for the registration of the mark in his own name, in one or more countries of the Union, the proprietor shall be entitled to oppose the registration applied for or demand its cancellation or, if the law of the country so allows, the assignment in his favor of the said registration, unless such agent or representative justifies his action.
(2) The proprietor of the mark shall, subject to the provisions of paragraph (1), above, be entitled to oppose the use of his mark by his agent or representative if he has not authorized such use.
(3) Domestic legislation may provide an equitable time limit within which the proprietor of a mark must exercise the rights provided for in this Article.
Article 7
[Marks: Nature of the Goods to which the Mark is Applied]
The nature of the goods to which a trademark is to be applied shall in no case form an obstacle to the registration of the mark.
Article 7bis
[Marks: Collective Marks]
(1) The countries of the Union undertake to accept for filing and to protect collective marks belonging to associations the existence of which is not contrary to the law of the country of origin even if such associations do not possess an industrial or commercial establishment.
(2) Each country shall be the judge of the particular conditions under which a collective mark shall be protected and may refuse protection if the mark is contrary to the public interest.
(3) Nevertheless, the protection of these marks shall not be refused to any association the existence of which is not contrary to the law of the country of origin, on the ground that such association is not established in the country where protection is sought or is not constituted according to the law of the latter country.
Article 8
[Trade Names]
A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark.
Article 9
[Marks, Trade Names: Seizure, on Importation, etc., of Goods Unlawfully Bearing a Mark or Trade Name]
(1) All goods unlawfully bearing a trademark or trade name shall be seized on importation into those countries of the Union where such mark or trade name is entitled to legal protection.
(2) Seizure shall likewise be effected in the country where the unlawful affixation occurred or in the country in to which the goods were imported.
(3) Seizure shall take place at the request of the public prosecutor, or any other competent authority, or any interested party, whether a natural person or a legal entity, in conformity with the domestic legislation of each country.
(4) The authorities shall not be bound to effect seizure of goods in transit.
(5) If the legislation of a country does not permit seizure on importation, seizure shall be replaced by prohibition of importation or by seizure inside the country.
(6) If the legislation of a country permits neither seizure on importation nor prohibition of importation nor seizure inside the country, then, until such time as the legislation is modified accordingly, these measures shall be replaced by the actions and remedies available in such cases to nationals under the law of such country.
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Article 10
[False Indications: Seizure, on Importation, etc., of Goods Bearing False Indications as to their Source or the Identity of the Producer]
(1) The provisions of the preceding Article shall apply in cases of direct or indirect use of a false indication of the source of the goods or the identity of the producer, manufacturer, or merchant.
(2) Any producer, manufacturer, or merchant, whether a natural person or a legal entity, engaged in the production or manufacture of or trade in such goods and established either in the locality falsely indicated as the source, or in the region where such locality is situated, or in the country falsely indicated, or in the country where the false indication of source is used, shall in any case be deemed an interested party.
Article 10bis
[Unfair Competition]
(1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition.
(2) Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.
(3) The following in particular shall be prohibited:
l. all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;
2. false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;
3. indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.
Article 10ter
[Marks, Trade Names, False Indications, Unfair Competition: Remedies, Right to Sue]
(1) The countries of the Union undertake to assure to nationals of the other countries of the Union appropriate legal remedies effectively to repress all
the acts referred to in Articles 9, 10, and 10bis.
(2) They undertake, further, to provide measures to permit federations and associations representing interested industrialists, producers, or merchants, provided that the existence of such federations and associations is not contrary to the laws of their countries, to take action in the courts or before the administrative authorities, with a view to the repression of the acts referred to in Articles 9, 10,
and 10bis, in so far as the law of the country in which protection is claimed allows such action by federations and associations of that country.
Article 11
[Inventions, Utility Models, Industrial Designs, Marks: Temporary Protection at Certain International Exhibitions]
(1) The countries of the Union shall, in conformity with their domestic legislation, grant temporary protection to patentable inventions, utility models, industrial designs, and trademarks, in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them.
(2) Such temporary protection shall not extend the periods provided by Article 4. If, later, the right of priority is invoked, the authorities of any country may provide that the period shall start from the date of introduction of the goods into the exhibition.
(3) Each country may require, as proof of the identity of the article exhibited and of the date of its introduction, such documentary evidence as it considers necessary.
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Article 12
[Special National Industrial Property Services]
(1) Each country of the Union undertakes to establish a special industrial property service and a central office for the communication to the public of patents, utility models, industrial designs, and trademarks.
(2) This service shall publish an official periodical journal. It shall publish regularly:
(a) the names of the proprietors of patents granted, with a brief designation of the inventions patented;
(b) the reproductions of registered trademarks.
Article 13
[Assembly of the Union]
(1)(a) The Union shall have an Assembly consisting of those countries of the Union which are bound by Articles 13 to 17.
(b) The Government of each country shall be represented by one delegate, who may be assisted by alternate delegates, advisors, and experts.
(c) The expenses of each delegation shall be borne by the Government which has appointed it.
(2)(a) The Assembly shall:
(i) deal with all matters concerning the maintenance and development of the Union and the implementation of this Convention;
(ii) give directions concerning the preparation for conferences of revision to the International Bureau of Intellectual Property (hereinafter designated as the International Bureau) referred to in the Convention establishing the World Intellectual Property Organization (hereinafter designated as the Organization), due account being taken of any comments made by those countries of the Union which are not bound by Articles 13 to 17;
(iii) review and approve the reports and activities of the Director General of the Organization concerning the Union, and give him all necessary instructions concerning matters with in the competence of the Union;
(iv) elect the members of the Executive Committee of the Assembly;
(v) review and approve the reports and activities of its Executive Committee, and give instructions to such Committee;
(vi) determine the program and adopt the biennial budget of the Union, and approve its final accounts;
(vii) adopt the financial regulations of the Union;
(viii) establish such committees of experts and working groups as it deems appropriate to achieve the objectives of the Union;
(ix) determine which countries not members of the Union and which intergovernmental and international nongovernmental organizations shall be admitted to its meetings as observers;
(x) adopt amendments to Articles 13 to 17;
(xi) take any other appropriate action designed to further the objectives of the Union;
(xii) perform such other functions as are appropriate under this Convention;
(xiii) subject to its acceptance, exercise such rights as are given to it in the Convention establishing the Organization.
(b) With respect to matters which are of interest also to other Unions administered by the Organization, the Assembly shall make its decisions after having heard the advice of the Coordination Committee of the Organization.
(3)(a) Subject to the provisions of subparagraph (b), a delegate may represent one country only.
(b) Countries of the Union grouped under the terms of a special agreement in a common office possessing for each of them the character of a special national service of industrial property as referred to in Article 12 may be jointly represented during discussions by one of their number.
(4)(a) Each country member of the Assembly shall have one vote.
(b) One-half of the countries members of the Assembly shall constitute a quorum.
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(c) Notwithstanding the provisions of subparagraph (b), if, in any session, the number of countries represented is less than one-half but equal to or more than one-third of the countries members of the Assembly, the Assembly may make decisions but, with the exception of decisions concerning its own procedure, all such decisions shall take effect only if the conditions set forth hereinafter are fulfilled. The International Bureau shall communicate the said decisions to the countries members of the Assembly which were not represented and shall invite them to express in writing their vote or abstention within a period of three months from the date of the communication. If, at the expiration of this period, the number of countries having thus expressed their vote or abstention attains the number of countries which was lacking for attaining the quorum in the session itself, such decisions shall take effect provided that at the same time the required majority still obtains.
(d) Subject to the provisions of Article 17(2), the decisions of the Assembly shall require two-thirds of the votes cast.
(e) Abstentions shall not be considered as votes.
(5)(a) Subject to the provisions of subparagraph (b), a delegate may vote in the name of one country only.
(b) The countries of the Union referred to in paragraph (3) (b) shall, as a general rule, endeavor to send their own delegations to the sessions of the Assembly. If, however, for exceptional reasons, any such country cannot send its own delegation, it may give to the delegation of another such country the power to vote in its name, provided that each delegation may vote by proxy for one country only. Such power to vote shall be granted in a document signed by the Head of State or the competent Minister.
(6) Countries of the Union not members of the Assembly shall be admitted to the meetings of the latter as observers.
(7)(a) The Assembly shall meet once in every second calendar year in ordinary session upon convocation by the Director General and, in the absence of exceptional circumstances, during the same period and at the same place as the General Assembly of the Organization.
(b) The Assembly shall meet in extraordinary session upon convocation by the Director General, at the request of the Executive Committee or at the request of one-fourth of the countries members of the Assembly.
(8) The Assembly shall adopt its own rules of procedure.
Article 14
[Executive Committee]
(1) The Assembly shall have an Executive Committee.
(2)(a) The Executive Committee shall consist of countries elected by the Assembly from among countries members of the Assembly. Furthermore, the country on whose territory the Organization has its headquarters shall, subject to the provisions of Article 16 (7)(b), have an ex officio seat on the Committee.
(b) The Government of each country member of the Executive Committee shall be represented by one delegate, who may be assisted by alternate delegates, advisors, and experts.
(c) The expenses of each delegation shall be borne by the Government which has appointed it.
(3) The number of countries members of the Executive Committee shall correspond to one-fourth of the number of countries members of the Assembly. In establishing the number of seats to be filled, remainders after division by four shall be disregarded.
(4) In electing the members of the Executive Committee, the Assembly shall have due regard to an equitable geographical distribution and to the need for countries party to the Special Agreements established in relation with the Union to be among the countries constituting the Executive Committee.
(5)(a) Each member of the Executive Committee shall serve from the close of the session of the Assembly which elected it to the close of the next ordinary session of the Assembly.
(b) Members of the Executive Committee may be reelected but only up to a maximum of two-thirds of such members.
(c) The Assembly shall establish the details of the rules governing the election and possible
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reelection of the members of the Executive Committee.
(6)(a) The Executive Committee shall:
(i) prepare the draft agenda of the Assembly;
(ii) submit proposals to the Assembly in respect of the draft program and biennial budget of the Union prepared by the Director General;
(iii) [deleted]
(iv) submit, with appropriate comments, to the Assembly the periodical reports of the Director General and the yearly audit reports on the accounts;
(v) take all necessary measures to ensure the execution of the program of the Union by the Director General, in accordance with the decisions of the Assembly and having regard to circumstances arising between two ordinary sessions of the Assembly;
(vi) perform such other functions as are allocated to it under this Convention.
(b) With respect to matters which are of interest also to other Unions administered by the Organization, the Executive Committee shall make its decisions after having heard the advice of the Coordination Committee of the Organization.
(7)(a) The Executive Committee shall meet once a year in ordinary session upon convocation by the Director General, preferably during the same period and at the same place as the Coordination Committee of the Organization.
(b) The Executive Committee shall meet in extraordinary session upon convocation by the Director General, either on his own initiative, or at the request of its Chairman or one-fourth of its members.
(8)(a) Each country member of the Executive Committee shall have one vote.
(b) One-half of the members of the Executive Committee shall constitute a quorum.
(c) Decisions shall be made by a simple majority of the votes cast.
(d) Abstentions shall not be considered as votes.
(e) A delegate may represent, and vote in the name of, one country only.
(9) Countries of the Union not members of the Executive Committee shall be admitted to its meetings as observers.
(10) The Executive Committee shall adopt its own rules of procedure.
Article 15
[International Bureau]
(1)(a) Administrative tasks concerning the Union shall be performed by the International Bureau, which is a continuation of the Bureau of the Union united with the Bureau of the Union established by the International Convention for the Protection of Literary and Artistic Works.
(b) In particular, the International Bureau shall provide the secretariat of the various organs of the Union.
(c) The Director General of the Organization shall be the chief executive of the Union and shall represent the Union.
(2) The International Bureau shall assemble and publish information concerning the protection of industrial property. Each country of the Union shall promptly communicate to the International Bureau all new laws and official texts concerning the protection of industrial property. Furthermore, it shall furnish the International Bureau with all the publications of its industrial property service of direct concern to the protection of industrial property which the International Bureau may find useful in its work.
(3) The International Bureau shall publish a monthly periodical.
(4) The International Bureau shall, on request, furnish any country of the Union with information on matters concerning the protection of industrial property.
(5) The International Bureau shall conduct studies, and shall provide services, designed to facilitate the protection of industrial property.
(6) The Director General and any staff member designated by him shall participate, without the right to vote, in all meetings of the Assembly, the Executive Committee, and any other committee of experts or working group. The Director General, or
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a staff member designated by him, shall be ex officio secretary of these bodies.
(7)(a) The International Bureau shall, in accordance with the directions of the Assembly and in cooperation with the Executive Committee, make the preparations for the conferences of revision of the provisions of the Convention other than Articles 13 to 17.
(b) The International Bureau may consult with intergovernmental and international non-governmental organizations concerning preparations for conferences of revision.
(c) The Director General and persons designated by him shall take part, without the right to vote, in the discussions at these conferences.
(8) The International Bureau shall carry out any other tasks assigned to it.
Article 16
[Finances]
(1)(a) The Union shall have a budget.
(b) The budget of the Union shall include the income and expenses proper to the Union, its contribution to the budget of expenses common to the Unions, and, where applicable, the sum made available to the budget of the Conference of the Organization.
(c) Expenses not attributable exclusively to the Union but also to one or more other Unions administered by the Organization shall be considered as expenses common to the Unions. The share of the Union in such common expenses shall be in proportion to the interest the Union has in them.
(2) The budget of the Union shall be established with due regard to the requirements of coordination with the budgets of the other Unions administered by the Organization.
(3) The budget of the Union shall be financed from the following sources:
(i) contributions of the countries of the Union;
(ii) fees and charges due for services rendered by the International Bureau in relation to the Union;
(iii) sale of, or royalties on, the publications of the International Bureau concerning the Union;
(iv) gifts, bequests, and subventions;
(v) rents, interests, and other miscellaneous income.
(4)(a) For the purpose of establishing its contribution towards the budget, each country of the Union shall belong to a class, and shall pay its annual contributions on the basis of a number of units fixed as follows:
25Class I 15Class II 15Class III 10Class IV 5Class V 3Class VI 1Class VII
(b) Unless it has already done so, each country shall indicate, concurrently with depositing its instrument of ratification or accession, the class to which it wishes to belong. Any country may change class. If it chooses a lower class, the country must announce such change to the Assembly at one of its ordinary sessions. Any such change shall take effect at the beginning of the calendar year following the said session.
(c) The annual contribution of each country shall be an amount in the same proportion to the total sum to be contributed to the budget of the Union by all countries as the number of its units is to the total of the units of all contributing countries.
(d) Contributions shall become due on the first of January of each year.
(e) A country which is in arrears in the payment of its contributions may not exercise its right to vote in any of the organs of the Union of which it is a member if the amount of its arrears equals or exceeds the amount of the contributions due from it for the preceding two full years. However, any organ of the Union may allow such a country to continue to exercise its right to vote in that organ if, and as long as, it is satisfied that the delay in payment is due to exceptional and unavoidable circumstances.
(f) If the budget is not adopted before the beginning of a new financial period, it shall be at
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the same level as the budget of the previous year, as provided in the financial regulations.
(5) The amount of the fees and charges due for services rendered by the International Bureau in relation to the Union shall be established, and shall be reported to the Assembly and the Executive Committee, by the Director General.
(6)(a) The Union shall have a working capital fund which shall be constituted by a single payment made by each country of the Union. If the fund becomes insufficient, the Assembly shall decide to increase it.
(b) The amount of the initial payment of each country to the said fund or of its participation in the increase thereof shall be a proportion of the contribution of that country for the year in which the fund is established or the decision to increase it is made.
(c) The proportion and the terms of payment shall be fixed by the Assembly on the proposal of the Director General and after it has heard the advice of the Coordination Committee of the organization.
(7)(a) In the headquarters agreement concluded with the country on the territory of which the Organization has its headquarters, it shall be provided that, whenever the working capital fund is insufficient, such country shall grant advances. The amount of these advances and the conditions on which they are granted shall be the subject of separate agreements, in each case, between such country and the Organization. As long as it remains under the obligation to grant advances, such country shall have an ex officio seat on the Executive Committee.
(b) The country referred to in subparagraph(a) and the Organization shall each have the right to denounce the obligation to grant advances, by written notification. Denunciation shall take effect three years after the end of the year in which it has been notified.
(8) The auditing of the accounts shall be effected by one or more of the countries of the Union or by external auditors, as provided in the financial regulations. They shall be designated, with their agreement, by the Assembly.
Article 17
[Amendment of Articles 13 to 17]
(1) Proposals for the amendment of Articles 13, 14, 15, 16, and the present Article, may be initiated by any country member of the Assembly, by the Executive Committee, or by the Director General. Such proposals shall be communicated by the Director General to the member countries of the Assembly at least six months in advance of their consideration by the Assembly.
(2) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly. Adoption shall require three-fourths of the votes cast, provided that any amendment to Article 13, and to the present paragraph, shall require four-fifths of the votes cast.
(3) Any amendment to the Articles referred to in paragraph (1) shall enter into force one month after written notifications of acceptance, effected in accordance with their respective constitutional processes, have been received by the Director General from three-fourths of the countries members of the Assembly at the time it adopted the amendment. Any amendment to the said Articles thus accepted shall bind all the countries which are members of the Assembly at the time the amendment enters into force, or which become members thereof at a subsequent date, provided that any amendment increasing the financial obligations of countries of the Union shall bind only those countries which have notified their acceptance of such amendment.
Article 18
[Revision of Articles 1 to 12 and 18 to 30]
(1) This Convention shall be submitted to revision with a view to the introduction of amendments designed to improve the system of the Union.
(2) For that purpose, conferences shall be held successively in one of the countries of the Union among the delegates of the said countries.
(3) Amendments to Articles 13 to 17 are governed by the provisions of Article 17.
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Article 19
[Special Agreements]
It is understood that the countries of the Union reserve the right to make separately between themselves special agreements for the protection of industrial property, in so far as these agreements do not contravene the provisions of this Convention.
Article 20
[Ratification or Accession by Countries of the Union; Entry Into Force]
(1)(a) Any country of the Union which has signed this Act may ratify it, and, if it has not signed it, may accede to it. Instruments of ratification and accession shall be deposited with the Director General.
(b) Any country of the Union may declare in its instrument of ratification or accession that its ratification or accession shall not apply:
(i) to Articles 1 to 12, or
(ii) to Articles 13 to 17.
(c) Any country of the Union which, in accordance with subparagraph (b), has excluded from the effects of its ratification or accession one of the two groups of Articles referred to in that subparagraph may at any later time declare that it extends the effects of its ratification or accession to that group of Articles. Such declaration shall be deposited with the Director General.
(2)(a) Articles 1 to 12 shall enter into force, with respect to the first ten countries of the Union which have deposited instruments of ratification or accession without making the declaration permitted under paragraph (1)(b)(i), three months after the deposit of the tenth such instrument of ratification or accession.
(b) Articles 13 to 17 shall enter into force, with respect to the first ten countries of the Union which have deposited instruments of ratification or accession without making the declaration permitted under paragraph (1) (b)(ii), three months after the deposit of the tenth such instrument of ratification or accession.
(c) Subject to the initial entry into force, pursuant to the provisions of subparagraphs (a) and (b), of each of the two groups of Articles referred to in paragraph (1 )(b)(i) and (ii), and subject to the provisions of paragraph (1)(b), Articles 1 to 17 shall, with respect to any country of the Union, other than those referred to in subparagraphs (a) and (b), which deposits an instrument of ratification or accession or any country of the Union which deposits a declaration pursuant to paragraph (1) (c), enter into force three months after the date of notification by the Director General of such deposit, unless a subsequent date has been indicated in the instrument or declaration deposited. In the latter case, this Act shall enter into force with respect to that country on the date thus indicated.
(3) With respect to any country of the Union which deposits an instrument of ratification or accession, Articles 18 to 30 shall enter into force on the earlier of the dates on which any of the groups of Articles referred to in paragraph (1) (b) enters into force with respect to that country pursuant to paragraph (2) (a), (b), or (c).
Article 21
[Accession by Countries Outside the Union; Entry Into Force]
(1) Any country outside the Union may accede to this Act and thereby become a member of the Union. Instruments of accession shall be deposited with the Director General.
(2)(a) With respect to any country outside the Union which deposits its instrument of accession one month or more before the date of entry into force of any provisions of the present Act, this Act shall enter into force, unless a subsequent date has been indicated in the instrument of accession, on the date upon which provisions first enter into force pursuant to Article 20(2)(a) or (b); provided that:
(i) if Articles 1 to 12 do not enter into force on that date, such country shall, during the interim period before the entry into force of such provisions, and in substitution therefor, be bound by Articles 1 to 12 of the Lisbon Act,
(ii) if Articles 13 to 17 do not enter into force on that date, such country shall, during the interim period before the entry into force of such provisions, and in substitution there for, be bound
March 2014P-15
PARIS CONVENTION
by Articles 13 and 14(3), (4), and (5), of the Lisbon Act.
If a country indicates a subsequent date in its instrument of accession, this Act shall enter into force with respect to that country on the date thus indicated.
(b) With respect to any country outside the Union which deposits its instrument of accession on a date which is subsequent to, or precedes by less than one month, the entry into force of one group of Articles of the present Act, this Act shall, subject to the proviso of subparagraph (a), enter into force three months after the date on which its accession has been notified by the Director General, unless a subsequent date has been indicated in the instrument of accession. In the latter case, this Act shall enter into force with respect to that country on the date thus indicated.
(3) With respect to any country outside the Union which deposits its instrument of accession after the date of entry into force of the present Act in its entirety, or less than one month before such date, this Act shall enter into force three months after the date on which its accession has been notified by the Director General, unless a subsequent date has been indicated in the instrument of accession. In the latter case, this Act shall enter into force with respect to that country on the date thus indicated.
Article 22
[Consequences of Ratification or Accession]
Subject to the possibilities of exceptions provided for in Articles 20(1) (b) and 28(2), ratification or accession shall automatically entail acceptance of all the clauses and admission to all the advantages of this Act.
Article 23
[Accession to Earlier Acts]
After the entry into force of this Act in its entirety, a country may not accede to earlier Acts of this Convention.
Article 24
[Territories]
(1) Any country may declare in its instrument of ratification or accession, or may inform the Director General by written notification any time thereafter, that this Convention shall be applicable to all or part of those territories, designated in the declaration or notification, for the external relations of which it is responsible.
(2) Any country which has made such a declaration or given such a notification may, at any time, notify the Director General that this Convention shall cease to be applicable to all or part of such territories.
(3)(a) Any declaration made under paragraph (1) shall take effect on the same date as the ratification or accession in the instrument of which it was included, and any notification given under such paragraph shall take effect three months after its notification by the Director General.
(b) Any notification given under paragraph (2) shall take effect twelve months after its receipt by the Director General.
Article 25
[Implementation of the Convention on the Domestic Level]
(1) Any country party to this Convention undertakes to adopt, in accordance with its constitution, the measures necessary to ensure the application of this Convention.
(2) It is understood that, at the time a country deposits its instrument of ratification or accession, it will be in a position under its domestic law to give effect to the provisions of this Convention.
Article 26
[Denunciation]
(1) This Convention shall remain in force without limitation as to time.
(2) Any country may denounce this Act by notification addressed to the Director General. Such denunciation shall constitute also denunciation of all earlier Acts and shall affect only the country
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MANUAL OF PATENT EXAMINING PROCEDURE
making it, the Convention remaining in full force and effect as regards the other countries of the Union.
(3) Denunciation shall take effect one year after the day on which the Director General has received the notification.
(4) The right of denunciation provided by this Article shall not be exercised by any country before the expiration of five years from the date upon which it becomes a member of the Union.
Article 27
[Application of Earlier Acts]
(1) The present Act shall, as regards the relations between the countries to which it applies, and to the extent that it applies, replace the Convention of Paris of March 20, 1883, and the subsequent Acts of revision.
(2)(a) As regards the countries to which the present Act does not apply, or does not apply in its entirety, but to which the Lisbon Act of October 31, 1958, applies, the latter shall remain in force in its entirety or to the extent that the present Act does not replace it by virtue of paragraph (1).
(b) Similarly, as regards the countries to which neither the present Act, nor portions thereof, nor the Lisbon Act applies, the London Act of June 2, 1934, shall remain in force in its entirety or to the extent that the present Act does not replace it by virtue of paragraph (1).
(c) Similarly, as regards the countries to which neither the present Act, nor portions thereof, nor the Lisbon Act, nor the London Act applies, The Hague Act of November 6, 1925, shall remain in force in its entirety or to the extent that the present Act does not replace it by virtue of paragraph (1).
(3) Countries outside the Union which become party to this Act shall apply it with respect to any country of the Union not party to this Act or which, although party to this Act, has made a declaration pursuant to Article 20(1)(b)(i). Such countries recognize that the said country of the Union may apply, in its relations with them, the provisions of the most recent Act to which it is party.
Article 28
[Disputes]
(1) Any dispute between two or more countries of the Union concerning the interpretation or application of this Convention, not settled by negotiation, may, by any one of the countries concerned, be brought before the International Court of Justice by application in conformity with the Statute of the Court, unless the countries concerned agree on some other method of settlement. The country bringing the dispute before the Court shall inform the International Bureau; the International Bureau shall bring the matter to the attention of the other countries of the Union.
(2) Each country may, at the time it signs this Act or deposits its instrument of ratification or accession, declare that it does not consider itself bound by the provisions of paragraph (1). With regard to any dispute between such country and any other country of the Union, the provisions of paragraph (1) shall not apply.
(3) Any country having made a declaration in accordance with the provisions of paragraph (2) may, at any time, withdraw its declaration by notification addressed to the Director General.
Article 29
[Signature, Languages, Depositary Functions]
(1)(a) This Act shall be signed in a single copy in the French language and shall be deposited with the Government of Sweden.
(b) Official texts shall be established by the Director General, after consultation with the interested Governments, in the English, German, Italian, Portuguese, Russian and Spanish languages, and such other languages as the Assembly may designate.
(c) In case of differences of opinion on the interpretation of the various texts, the French text shall prevail.
(2) This Act shall remain open for signature at Stockholm until January 13, 1968.
(3) The Director General shall transmit two copies, certified by the Government of Sweden, of the signed text of this Act to the Governments of all
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PARIS CONVENTION
countries of the Union and, on request, to the government of any other country.
(4) The Director General shall register this Act with the Secretariat of the United Nations.
(5) The Director General shall notify the Governments of all countries of the Union of signatures, deposits of instruments of ratification or accession and any declarations included in such instruments or made pursuant to Article 20(1)(c), entry into force of any provisions of this Act, notifications of denunciation, and notifications pursuant to Article 24.
Article 30
[Transitional Provisions]
(1) Until the first Director General assumes office, references in this Act to the International Bureau of the Organization or to the Director General shall be deemed to be references to the Bureau of the Union or its Director, respectively.
(2) Countries of the Union not bound by Articles 13 to 17 may, until five years after the entry into force of the Convention establishing the Organization, exercise, if they so desire, the rights provided under Articles 13 to 17 of this Act as if they were bound by those Articles. Any country desiring to exercise such rights shall give written notification to that effect to the Director General; such notification shall be effective from the date of its receipt. Such countries shall be deemed to be members of the Assembly until the expiration of the said period.
(3) As long as all the countries of the Union have not become Members of the Organization, the International Bureau of the Organization shall also function as the Bureau of the Union, and the Director General as the Director of the said Bureau.
(4) Once all the countries of the Union have become Members of the Organization, the rights, obligations, and property, of the Bureau of the Union shall devolve on the International Bureau of the Organization.
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MANUAL OF PATENT EXAMINING PROCEDURE
A
A4 size paper (See also: Paper size )..... 608.01, 608.02, 1825 A.I. series of patents (See also: Patent )........ 901.04 Abandoned application (See also: Abandonment )
Accessibility to public.......................... 103, 711.04 Counting, when processed....................... 711.04(a) Definition......................................................... 203.05 Failure to provide timely notice of foreign filing when nonpublication requested................................. 1124 Fee on petition to revive............................ 711.03(c) Issue fee, failure to pay.............................. 711.03(c) Ordering....................................... 711.04(b), 905.03 Papers received, handling............................. 508.02 Provisional application............... 201.04, 211.01(a) Reference use..................................... 901.02, 2127 Referred to in issued patent............................... 103 Revival........................................ 711.03(c), 1893.02
Provisional application.......................... 711.03(c) Storage........................................................ 711.04(b) When open to the public..................................... 103
Abandoned file (See also: Abandoned application Abandonment ) Abandoned files repository...... 711.04(b), 901.01(a) Abandonment (See also: Abandoned application ).... 711
After allowance............................................... 711.05 After payment of issue fee............................. 711.01 Amendment late............................... 711.02, 714.17 Appeal dismissal.......................................... 1215.04 Appeal withdrawal.................... 1215.01 to 1215.03 Assignee must consent...................................... 711 Change of address..................................... 711.03(c) Counted as a disposal...................................... 1705 Date of......................................................... 711.04(a) Destroys continuity..................... 211.01, 211.01(b) Express.................................................. 711, 711.01
Continued prosecution application (CPA)..... 201.06(d) Issue fee not paid.................................. 711.03(c) Issue fee paid............................... 711.01, 711.05
Failure to file property rights statement............ 150 Failure to pay issue fee.............................. 711.03(c) Failure to prosecute....................................... 711.02 Failure to provide timely notice of foreign filing after non-publication request.................................... 1124 Formal.................................................... 711, 711.01 Forwarding.................................................. 711.04(a) Incomplete reply......................................... 711.03(a) Invention abandoned..... 706.02(d), 2134, 2138.03 No reply................................................. 711, 711.02
Notification of.............................. 711.02, 711.04(c) Of appeal............................................................ 1210 Of invention................... 706.02(d), 2134, 2138.03 Papers received after..................................... 508.02 Petition to revive..... 711.03(c), 711.04(c), 1002.02(c), 1002.02(q), 1002.02(r) Petition to withdraw holding of examiner’s statement................................. 711.03(c), 711.03(d) Prior application......................................... 201.06(c) Provisional application............... 201.04, 211.01(a) Pulling......................................................... 711.04(a) Reconsideration.......................... 711.03, 711.03(c)
Failure to respond................................. 711.03(b) Insufficiency of response..................... 711.03(a)
Reissue Return of surrendered patent...................... 1416
Revival.......................................... 711.03, 711.03(c) Shortened statutory period expired..... 710.02(d), 711.04(a) Special situations...................................... 711.02(b) Termination of proceedings... 211.01(a), 211.01(b), 711.02(c) Undelivered action......................................... 707.13 Unintentional (See also: Petition )..... 711.03(c), 1124 Withdrawal of holding................................ 711.03(c)
Abbreviation, periodical citation................. 707.05(e) Abbreviature and abstract publication............ 711.06
Citation........................................................ 711.06(a) Abstract for defensive publication.................. 711.06 Abstract of international application.................. 1826 Abstract of the disclosure........... 608.01(b), 1302.04 Abstract publication.......................................... 711.06 Accelerated examination.................................. 708.02 Access (See also: Inspection Power of attorney )
Attorney not of record............................... 402, 405 Authoritiy to grant access to an application..... 104 Authorized by Director........................................ 104 Continued Prosecution Application (CPA)........ 103 Ex parte reexamination file.............................. 2232
Excluded attorney or agent................................ 105 Inter partesreexamination file......... 2609, 2632.01 Image file wrapper application........................... 103 International application..................................... 110 Pending application..... 101, 103, 104, 106, 724.04, 724.04(a), 1128, 1132 Petition................................................................. 103 Protested application.................. 1901.05, 1901.07 Provisional application............................. 103, 104 Published application...... 103, 1128, 1130, 1132 Reissue application......................... 103, 724.04(b)
Rev. 07.2015, October 2015Index-1
INDEX
A4 size paper — Access
Sec. No.Sec. No.
Supplemental examination.......................... 2803.02 Suspended attorney or agent............................. 103 Unpublished, Abandoned, and pending applications.......................................................... 105
Accounts, Deposit (See also: Deposit account ) Acknowledgment of protest........................... 1901.05 Act (See also: Statutes ) Action (See also: Letter, Examiner’s )
Advisory action............................ 706.07(f), 714.13 After another examiner’s action.................... 706.04 After Board decision..... 1214.01, 1214.03 to 1214.07 After Board decision reversing examiner... 1214.04 After Board decision sustaining examiner.. 1214.06 After interference............................................... 2308 Amendment after final rejection..... 706.07(f), 714.12, 714.13 Citation of references...................... 707.05, 710.06 Claim summary........................................... 707.07(i) Claims in excess of number of claims previously paid for............................................................ 714.10 Closing prosecution in inter partes reexamination (See also: Reexamination, Inter partes: Action closing prosecution ) Completeness.............................. 707.07, 707.07(a) Copy to applicant........................................... 707.12 Copies of references.................................. 707.05(a) Correctness, Period for reply........................ 710.06 Counted.............................................................. 1705 Crosses amendment...................................... 714.05 Date.................................................................. 707.11 Entry................................................................ 707.01 Examiner’s............................................................ 707 Final rejection............ 706.07 to 706.07(f), 713.09
In reissue applications...................... 1444, 1453 Foreign priority determination.............. 210 to 217 Formal matter..... 707.07(a), 707.07(e), 707.07(j), 714.02 Forms used.......................................................... 707 Incorrect citation of references..................... 710.06 Informal application....................................... 702.01 Mailing............................................................. 707.12 Original in image file wrapper....................... 707.12 Patentability report........................... 705, 705.01(c) Piecemeal examination............................. 707.07(g) Primary examiner’s personal attention..... 707.01, 1004 Priority determination, foreign.............. 210 to 217 Reissue application file..................................... 1430 Reply time computation.............. 710.01(a), 710.05 Restriction requirement...................................... 800 Returned.......................................................... 707.13
Shortened statutory period........ 710.02, 710.02(b) SPE’s personal attention............................... 707.02 Supplemental................................... 710.06, 714.05 Suspension (See also: Suspension )................ 709 Suspension, primary examiner’s attention..... 1004 Suspension, TC Director’s attention................ 1003 Third, SPE reviews......................................... 707.02 Time limit...................................... 710.02, 710.02(c)
Address, Change of correspondence..... 601.03(a), 601.03(b), 711.03(c)
After Allowance...................................... 2501, 2542 Address, Correspondence (See also: Mail Stop )..... 403, 403.01(a), 403.01(b), 2542 Address, Fee......................................................... 2540 Address of applicant......................................... 605.01 Address of U.S. Patent and Trademark Office..... 501, 502 Address of patent owner.............. 2222, 2622, 2805 Address of unavailable inventor.................. 409.03(e) Administration, Letters of............................ 409.01(b) Administrative instructions, PCT............................ AI Administrative Patent Judges (See also: Patent Trial and Appeal Board (PTAB) ) Administrator or executor................................ 409.01
Allowance and issue.................................. 409.01(b) Application by, After discharge................ 409.01(b) Assigned application, Inventor dies......... 409.01(b) Authority..................................................... 409.01(b) Consular certificate................................... 409.01(b) Foreign country.......................................... 409.01(b) Heir............................ 409.01, 409.01(a), 409.01(b)
Prosecution by.................... 409.01(a), 409.01(b) Intervention not required.......................... 409.01(b) Refuses to sign........ 409.03, 409.03(b), 409.03(c)
Admissions by applicant..... 706.02(c), 2129, 2133.03(c)
Jepson claim...................................................... 2129 Admissions in reexamination
Ex Parte ................................................ 2217, 2258 Advantages over prior art............................. 707.07(f) Adverse recommendation under 37 CFR 1.312..... 714.16(d), 714.16(e), 714.19 Advisory action............................... 706.07(f), 714.13 Affidavit (See also: Oath Declaration ) Affidavit, disqualifying commonly owned patent or patent application publication as prior art to overcome a pre-AIA 35 U.S.C. 102 or 103 rejection (37 CFR 1.131)....................................................................... 718 Affidavit of attribution or prior disclosure to overcome a 35 U.S.C. 102 or 103 rejection (37 CFR 1.130..... 717.01 to 717.01(f), 2155
Enablement................................................... 2155.04
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MANUAL OF PATENT EXAMINING PROCEDURE
Access — Affidavit of attribution or prior disclosure to overcome a 35 U.S.C. 102 or 103 rejection (37 CFR 1.130
Sec. No.Sec. No.
Evaluation of..... 717.01(a)(1), 717.01(b)(1), 717.01(e) Formal requirements................................. 717.01(c) Showing Disclosure was made by inventor..... 717.01(a), 2155.01 Showing Prior disclosure was subject matter by inventor...................................... 717.01(b), 2155.02 Showing disclosure was subject matter obtained from inventor......................... 717.01(b)(2), 2155.03 Timely presentation.................................... 717.01(f) When available............................... 717.01, 2155.06 When not required.......................................... 717.01 When unavailable.......................... 717.01, 2155.06 Who may file.............................. 717.01(c), 2155.05
Affidavit of prior invention to overcome a pre-AIA 35 U.S.C. 102 or 103 rejection (37 CFR 1.131(a))..... 715, 2132.01, 2136.05
Acts relied upon, NAFTA/WTO/U.S...... 706.02(c)(2), 715.07(c) Best mode, failure to disclose....................... 715.10 Co-authorship............................................. 715.01(c) Common assignee, reference and application..... 715.01(b), 718 Compared to Rule 1.132 affidavit.................. 715.01 Completion of invention...................................... 715 Conception (See also: Conception ) Continuing application........... 201.06(c), 201.06(d) Copies from prior applications................. 201.06(c) Dedication to public............................................ 715 Derivation.................................................... 715.07(c) Diligence (See also: Diligence ) Effective filing date.............................................. 715 Exhibit, Disposition.................................... 715.07(d) Formal requirements...................................... 715.04
Facts and documentary evidence............. 715.07 Timely presented........................................ 715.09
Genus-species................................................ 715.03 Generic claim.................................................. 715.02 Interference testimony used..................... 715.07(b) Overcome patent or publication........................ 715 Petition regarding sufficiency................. 1002.02(c) Prior public use/sale...................................... 715.10 Priority time charts....................................... 2138.01 Proper use of....................................................... 715 Reduction to practice (See also: Reduction to practice ) Reexamination,, ex parte ................................ 2258 Reexamination, inter partes ............................ 2658 Reference date to be overcome......................... 715 Reference is
Common assignee........ 715.01(b), 717.02, 718
Joint patent or published application to applicant and another............................................ 715.01(a) Patent or application publication claiming same invention..................................... 715.05, 2138.01 Publication of applicant’s own invention..... 715.01(c)
Sufficiency of................................. 715.08, 2136.05 When used..... 706.02(b)(2), 706.02(l)(3), 715, 2132.01 Who may make affidavit............. 706.02(b), 715.04 Withdrawn rejection............................................ 715
Affidavits, traversing rejections (37 CFR 1.132)... 716 Attorney arguments................................... 716.01(c)
Inoperability of references............ 716.07, 2145 Reference attributed to applicant............. 716.10
Attribution, of reference to applicant............ 716.10 Commercial success, evidence..................... 716.03
Commensurate in scope with claimed invention.. 716.03(a) Derived from claimed invention........... 716.03(b) Design applications.............. 716.03(b), 1504.03 Sales figures.......................................... 716.03(b)
Commonly owned patent.................................... 718 Commonly owned patent application publication..... 718 Comparison with closest prior art............ 716.02(e) Computer programming cases............... 2164.06(c) Continuing application........... 201.06(c), 201.06(d) Copying, evidence......................... 716.06, 1504.03 Disclosure, sufficiency................................... 716.09 Disclosure, utility and operability................. 716.08 Evidence
Consideration of......................................... 716.01 Publications...................................... 716.02(g)
Objective................................................. 716.01(a) Compared to opinion evidence....... 716.01(c) Probative value................................. 716.01(c) Weighing against prima facie case..... 716.01(d), 716.05
Secondary.............................................. 716.01(b) Timeliness................................................... 716.01
Long-felt need................................................. 716.04 Petition regarding sufficiency................. 1002.02(c) Reexamination, ex parte ................................. 2258 Reexamination, inter partes ............................ 2658 Reference attributed to applicant................. 716.10 Sufficiency of.................................................. 716.09 Synergism................................................... 716.02(a) Skepticism of experts.................................... 716.05 Timeliness....................................................... 716.01 Unexpected results, allegations.................... 716.02
Rev. 07.2015, October 2015Index-3
INDEX
Affidavit of attribution or prior disclosure to overcome a 35 U.S.C. 102 or 103 rejection (37 CFR 1.130 — Affidavits, traversing rejections (37 CFR 1.132)
Sec. No.Sec. No.
Unexpected results, evidence................... 716.02(a) Advantages not disclosed or inherent.. 716.02(f) Burden on applicant.............................. 716.02(b) Commensurate in scope with claimed invention.. 716.02(d) Genus or species................................... 716.02(d) Range, claimed...................................... 716.02(d) Weighing evidence of............................ 716.02(c)
Affidavits submitted with prior art under 35 U.S.C. 301 in patented files.................................................... 2205 Affirmation (See also: Oath Declaration ) After final practice......................................... 706.07(f)
In transitional application......................... 706.07(g) In ex parte reexamination................................ 2272
Agent (See also: Attorney or agent Power of attorney ) Agent for international application..... 1807, 1864.04 Aggregation................................................. 2173.05(k) Agriculture, Department of, Plant patents..... 1608, 1609 Agricultural Research Service................ 1608, 1609 Algorithms........................... 2106, 2164.06(c), 2181 Alien Property Custodian (A.P.C.) publications (See also: Citation of prior art )........................... 901.06(c) Allowance and issue (See also: Allowed application ).............................................................................. 1300
Abandonment after......................................... 711.05 All claims allowed, shortened statutory period..... 710.02(b) Amendment, Examiner’s.............................. 1302.04 Amendment, Examiner’s, Rule 1.312............... 1305 Amendment after (See also: Amendment: After allowance ) Amendment after allowance of all claims.... 714.14, 1303.01 Amendment after D-10 notice............................. 130 Amendment at time of.................................... 714.15 Amendment crossing in mail........................ 714.15 Assignment Division................................. 409.01(b) Cancellation of claims after appeal..... 1214.05, 1214.06, 1215.03 Cancellation of nonelected claim by examiner’s amendment....................................... 821.01, 821.02 Citation of prior art....................................... 1302.12 Claim for Official Gazette ........................... 1302.09 Claim renumbering..... 608.01(j), 1302.01, 1302.04(g) Claim renumbering, dependent claim..... 608.01(n), 1302.01 Classification.................................................. 903.07 Classification change after allowance.......... 903.07 Cooperative Patent Classification Notation.. 905.01 Copending application
File wrapper/history notations...... 202, 1302.09 Parent application data............................ 1302.04
Correction of error after allowance............... 714.16 Cross-reference.......................................... 903.07(a) D-10 notice........................................................... 130 Deceased inventor, notice of allowance..... 1303.03 Drawing correction.... 608.02(z), 1302.04, 1303.01 Drawing in patented file............................. 901.01(a) Examiner’s amendment (See also: Examiner’s amendment ) File wrapper notation................................... 1302.09 Final review........................................................ 1302 Formal matters............................... 714.16, 1302.01 Formal matters, examiner’s amendment and changes.......................................... 714.16, 1302.04 Formal matters, specification rewritten...... 1302.02 General review.............................................. 1302.01 Interference................................................... 2303.01 Interference search................. 1302.08, 2304.01(a) International classification................................. 906 Intervention by executor........................... 409.01(b) Issue classification notations..................... 1302.10 Issue to applicant................................................ 308 Issue to a non-applicant assignee..................... 307 Jurisdiction of application................................ 1305 Listing of references.................................... 1302.12 Locarno classification designations................. 907 Non-compliant amendment, treatment of..... 714, 1302.04 Nonelected claims canceled by examiner’s amendment....................................... 821.01, 821.02 Nonelected claims eligible for rejoinder..... 821 to 821.02 Notice of Allowability................................... 1302.03 Notice of allowance (See also: Form letters and forms: Notice of allowance ) Patentability report, print disposal........... 608.02(n) Plant application................................................ 1611 Printer Rush.................................................. 1309.02 Pro se ......................................................... 707.07(j)
Protest against issue........................................ 1901 Reasons for allowance (See also: Reasons for allowance ) Record room............................................... 901.01(a) Reference listing........................................... 1302.12 Reissue application........................................... 1455 Rejection after allowance..... 706.04, 706.05, 1308.01 Rejoinder of claims................... 821.04, 1302.04(h) Related applications, file wrapper/history notations.............................................. 202, 1302.09 Reopening prosecution............................... 1308.01
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MANUAL OF PATENT EXAMINING PROCEDURE
Affidavits, traversing rejections (37 CFR 1.132) — Allowance and issue
Sec. No.Sec. No.
Review by examiner..................................... 1302.01 Review by primary examiner......................... 903.07 Rewritten specification requirement.......... 1302.02 Secret application............................... 130, 1304.01 Signing file wrapper..................................... 1302.13 Special.............................. 708.01, 710.02(b), 1301 Specification, clean copy required............. 1302.02 Statement of invention................................. 1302.01 Supplemental oath after................................. 603.01 Terminology correspondence of specification and claims............................................................ 1302.01 Title of invention........................................... 1302.01 Title change by examiner............................... 606.01 Title search, continuing application.................. 306 Transfer........................................................... 903.08 Undelivered notice of allowance................. 1303.02 Withdrawal from issue (See also: Withdrawal from issue ) Withholding from issue, secrecy order application.. 130, 1304.01
Allowance, Reasons for (See also: Reasons for allowance ) Allowed application (See also: Allowance and issue )
Definition......................................................... 203.04 Express abandonment of............................... 711.01 File wrapper data.......................................... 1302.09 Rejection....................................................... 1308.01 Suggesting claim for interference.................... 1003
Allowed claim, rejection.................................... 706.04 By Patent Trial and Appeal Board............... 1213.02
Alpha subclass.................................................. 903.07 Alteration of application........................................ 506
After execution prohibited............................. 608.01 Before execution of oath or declaration.. 601.01(a), 602, 714.21
Alternative phrase in claim (See also: Indefinite claim )..................................................................... 2173.05(h) Amended application........................................ 203.03 Amended application, inspection for transfer..... 903.08(c) Amendment (See also: Reply )............................. 714
Accidental entry.............................................. 714.21 Adding excess claims.................................... 714.10 After abandonment.......................... 711.02, 714.17 After all claims allowed.................................. 714.14 After allowance
Approval................................ 714.16, 1002.02(d) Canceling claim.......................................... 714.16 Entry in part............................................ 714.16(e) Examiner’s action..... 714.16, 714.16(d), 714.16(e)
Excess claims........................................ 714.16(c) Formal matters........................ 714.16, 714.16(d) Handling................................................. 714.16(d) Mailed before allowance............................ 714.15 Motion under Rule 41.208(c)(2) (formerly under Rule 1.633(c)(2))..................................... 714.16(b) Patentability pointed out........................... 714.16 Reason for adverse action..... 714.16, 714.16(d) Renumbering claims.............................. 714.16(e) Secrecy order application.............. 130, 1304.01
After examiner’s answer................................... 1210 After appeal, before examiner’s answer..... 714, 1206 After Board decision..... 1002.02(d), 1214.01, 1214.06, 1214.07 After death of attorney or agent......................... 406 After final rejection....... 706.07(f), 714.12, 714.13
Examiner determines compliance with..... 1.121, 714.18 Non-compliant amendment, treatment of..... 714
After final rejection, entered in part.............. 714.20 Applicants must sign................................. 714.01(a) At allowance.................................................... 714.15 Attorney not of record... 402, 405, 408, 714.01(c) Basis in disclosure..... 608, 706.03(c), 2163.03, 2163.07 Before first action................... 608.04(b), 714.01(e) Board rejection avoided............................... 1214.01 By replacement paragraph or section............... 714 By substitute specification................................. 714 Canceled matter restored................ 608.01(s), 714 Canceling all claims..... 706.07(h), 711.01, 714.19 Canceling appealed claims..... 1215.01 to 1215.03 Claim added, terminology basis..... 608.01(o), 2163.03, 2163.07 Claim numbering.... 608.01(j), 1302.01, 1302.04(g) Claims
Added in excess of number of claims previously paid for........................... 607, 714.10, 714.16(c) Clean version..................... 714, 714.13, 714.16 Marked-up version.......................................... 714 Status Identifiers............................................. 714
Complete reply required................. 714.02, 714.04 Consolidating pending claims..... 714, 714.13, 714.16 Copier copies.................................................. 714.07 Copying patent claim (See also: Claim presented corresponding to claim of patent ) Crossing mailing of allowance...................... 714.15 D-10 notice preceding......................................... 130 Date of receipt................... 505, 710.01(a), 714.18 Date of receipt stamp
Rev. 07.2015, October 2015Index-5
INDEX
Allowance and issue — Amendment
Sec. No.Sec. No.
Office date...................... 505, 710.01(a), 714.18 Declaration........................................................... 602 Defective, directions for entry....................... 714.20 Discharged attorney or agent........................ 714.19 Disapproval of preliminary amendment... 714.01(e), 1002.02(d) Disapproval of second or subsequent reply..... 714.03(a) Discourteous.................................... 714.19, 714.25 Drawing..................... 608.02(p), 1302.05, 1303.01
In reissue application................................... 1413 Drawing, disposition.................................. 608.02(x) Drawing, new matter................... 608.04(a), 714.19 Easily erasable paper forbidden................... 714.07 Entered in part................................................ 714.20 Entered in part, after allowance, 37 CFR 1.312..... 714.16(e) Entry............................................. 714.18, 719.01(a) Entry denied...................... 714.17, 714.19, 714.21
Appeal case.................................. 1206, 1214.07 Drawing correction................................ 608.02(x) Drawing new matter................................... 608.04 List............................................................... 714.19 Paper number............................................. 714.21 Period for reply expired............................. 714.17 Preliminary amendment........................ 714.01(e) Second (or subsequent) supplemental reply..... 714.03(a) Substitute specification unnecessary..... 714.19, 714.20 Unduly interferes with preparation of Office action...................................................... 714.03(a)
Entry directions................................................... 714 Defective.......................................................... 714
Entry inadvertent............................................ 714.21 Entry in ex parte reexamination...................... 2234 Entry in inter partes reexamination................ 2670 Examiner’s (See also: Examiner’s amendment ) Excess claims added.................. 714.10, 714.16(c) Facsimile......................................................... 502.01 Fees, additional.......................................... 710.02(c) File wrapper endorsement............................. 714.21 Filed with application................................. 601.01(a) Formal matters, compliance with.................. 714.02 Fully responsive............................................. 714.02 Heading................................................................ 502 Immediate inspection..................................... 714.05 Improper signature..... 714.01(a), 714.01(c), 714.01(d)
Ratification............................................. 714.01(a) Inaccurate................................................... 707.07(h)
Incomplete reply..... 711.02(a), 711.03(a), 714.02 to 714.04, 2266.01, 2666.30, 2671
Time for completing..... 710.02(c), 714.03, 2266.01, 2666.30
Increasing claims in excess of number of claims previously paid for...................... 714.10, 714.16(c) Ink, not permanent.......................................... 714.07 Inspection by examiner.................................. 714.05 Inventorship (See also: Correction of inventorship ) Jurisdiction of application not with examiner..... 714.16, 714.19, 1305 Late..................................... 710.02(d), 711, 714.17 Literature citation in specification........... 608.01(p) Manner of making................................................ 714 Motion under 37 CFR 41.208(c)(2), Application in issue............................................................ 714.16(b) New matter.................. 608.04, 706.03(o), 2163.06 Non-compliant amendment, treatment of..... 714, 1302.04 Nonentry (See also: Amendment: Entry denied )..... 714.19 Not entered....................................... 714.19, 714.21 Not fully responsive.... 714.02 to 714.04, 2266.01, 2666.30, 2671 Not fully responsive, time to perfect reply..... 710.02(c), 714.03, 2266.01, 2666.30 Oath, Original....................................................... 602 Objectionable remarks.................... 714.19, 714.25 Of claims.............................................................. 714 Of specification.................................................... 714 Office date stamp.............. 505, 710.01(a), 714.18 Paper number.................................................. 714.18 Patentability pointed out................. 714.02, 714.04 Period for reply ends Sunday or holiday..... 505, 513, 710.01(a), 710.05 Permanent ink required................................. 714.07 Petition non-entry.................................... 1002.02(c) Plant application................................................ 1610 Post Office address, Applicant................. 602.08(a) Preliminary........................................ 506, 714.01(e)
Canceling all claims................ 601.01(e), 711.01 Denial of entry........................................ 714.01(e) Excess claims................................... 506, 714.10 Filed with application............................ 714.01(e) Manner of making.................................. 714.01(e) New matter added..... 601.01(a), 608.04(b), 702.01 Non-compliant amendment, treatment of..... 714 PG-Pub application....................................... 1121 To lessen filing fee.......................................... 607
Ratification
Index-6Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Amendment — Amendment
Sec. No.Sec. No.
Signature defective................................ 714.01(a) Receipt................................ 501 to 505, 511, 512 Received after allowance.............. 714.15, 1303.01 Reexamination...................... 2250, 2666.01, 2672 Reissue..................................................... 714, 1453 Requirements of............................................. 714.02 Residence change............................................... 719 Responsive....................................... 714.02, 714.04 Return, after entry in file wrapper................. 719.01 Rule 1.312 (See also: Amendment: After allowance ) Second (or subsequent) supplemental reply..... 714.03(a) Several filed on same day.............................. 714.18 Signature improper..... 714.01(a), 714.01(c), 714.01(d) Signature missing...................................... 714.01(a) Signature required..................................... 714.01(a) Signed by applicant, not by attorney or agent of record.......................................................... 714.01(d) Signed by attorney or agent not of record..... 402, 402.03, 714.01(c) Statement of allowability by Board............. 1213.01 Supervisory primary examiner..... 714.13, 714.16, 714.16(e) Supplemental.............................................. 714.03(a) Support by claims present on the filing date..... 608.01(l) Telephone number.......................................... 714.01 Unduly interferes with preparation of Office action.. 714.03(a) Unsigned..................................................... 714.01(a)
Ratification of...................... 710.02(c), 714.01(a) America Invents Act (AIP) (See also: Statutes: Public Law 112-129 ) American Inventors Protection Act (AIPA) (See also: Statutes: Public Law 106-113 ) American National Standards Institute (ANSI)..... 608.02 Amino acid sequence (See also: Biotechnology Nucleotide sequences ) Analogous Art..... 904.01(c), 1302.14, 1504.02, 1504.03, 2131.05, 2141.01(a) Analysis of claims............................................. 904.01 Answer, Examiner’s (See also: Examiner’s answer ) Answer all matters traversed........................ 707.07(f) Antecedent lacking (See also: Indefinite claim )..... 706.03(d), 1302.01, 2173.05(e) Anticipation rejection..... 706.02(a), 1504.02, 2131, 2132, 2133, 2136, 2152, 2154
Affidavit to overcome a pre-AIA 35 U.S.C. 102(a) or (e) rejection........................ 715, 2132.01, 2136.05 Analogous art.............................. 1504.03, 2131.05
Definition of............................................ 2131, 2152 Exceptions to.................................... 2153, 2154.02 Genus-species.............................................. 2131.02 Generic chemical formula............................ 2131.02 Grace Period.......................... 2133, 2153, 2153.01 Meaning of
“By others”................................... 2132, 2154.02 “In this country”............................................ 2132 “Known or used”..................... 2132, 2133.03(a) “Patented in this or a foreign country”..... 2132, 2152.02(a)
Multiple references, when permitted.......... 2131.01 On sale (See also: On sale ) Ranges claimed............................................ 2131.03 Rejections based on publications and patents..... 2133.02, 2152.02(a), 2152.02(b) Prima facie case............................... 2132.01, 2152 Public use (See also: Public use ) Secondary considerations, evidence of..... 2131.04
A.P.C. publications (See also: Alien Property Custodian (A.P.C.) publications ) Apostille (See also: Oath Declaration )..... 301, 409.01(b), 409.03(a), 409.03(d), 602.04 Apparatus, Process or product and..... 806.05(e) to 806.05(g) Appeal................................................................... 1200
Abandonment.................................................... 1210 Actions subsequent to examiner’s answer..... 1210 Administrative handling.................................... 1203 Affidavit after appeal............ 1206, 1208, 1211.03 Amendment after examiner’s answer..... 1210, 1211.01 Amendment before examiner’s answer........... 1206 Amendment for purpose of............. 714.12, 714.13 Amendment makes application allowable...... 1206 Answer, Examiner’s (See also: Examiner’s answer ) Brief.................................................................... 1206
In ex parte reexamination............................ 2274 In inter partes reexamination..... 2675, 2675.01 In reissue....................................................... 1454
By patent owner................................................. 1204 Cancellation of withdrawn claims............... 1214.05 Civil litigation................................................ 1216.02 Claims copied from patent, time limit...... 710.02(c) Claims included.................... 1204, 1205, 1205.02 Claims not appealled..... 711.02(b), 1215.01, 1215.02
Partial....................................... 1214.05, 1215.03 Composition of the Board................................ 1202 Concurrently with interference........................ 1210
Rev. 07.2015, October 2015Index-7
INDEX
Amendment — Appeal
Sec. No.Sec. No.
Concurrently with prosecution before examiner..... 1210 Conference................................... 1207.01, 1302.14
In inter partes reexamination.......... 2676, 2677 Correspondence address for litigation..... 501, 1216.01 Court................................................................... 1216 Court, Federal Circuit................................... 1216.01
Of an inter partes reexamination..... 2682, 2683 Decision by Board............................................. 1213
Of an inter partes reexamination..... 2681, 2682 Dismissal....................................................... 1215.04 Examiner reversed....................................... 1214.04 Examiner sustained...................................... 1214.06 Examiner’s answer............................................ 1207 Failure to prosecute appeal......................... 1215.04 Fee (See also: Fee )..... 1204, 1204.01, 1205, 1208.01 Fowarding fee............................................... 1208.01 From Board decision.................... 1216 to 1216.02 Inter partes Reexamination.............. 2674 to 2680
Flowcharts................................................ 2601.01 Interview after appeal................................... 1204.03 Introduction........................................................ 1201 Jurisdiction....................................... 1205.03, 1210 Matter subject to............................. , 706.01, 1201 Multiplicity rejection................................ 2173.05(n) New ground of rejection by Board.............. 1214.01 New ground of rejection by examiner in examiner’s answer.... 1207.01, 1207.02, 1207.03, 1207.03(a), 1207.03(b), 1207.03(c), 1208 New matter affecting claim........................ 608.04(c) Notice of............................................................. 1204 Oral hearing....................................................... 1209
Reexamination, ex parte ............................. 2276 Reexamination, inter partes ....................... 2680
Order for compliance....................... 1205.03, 1210 Patentability report case........................... 705.01(a) Pre-appeal brief conference pilot program..... 1204.02 Primary examiner’s attention........................... 1004 Procedure after Board decision..... 1214, 1214.01, 1214.03 to 1214.07 Protestor participation................................. 1901.07 Publication of Board decision..................... 1213.03 Real party in interest................... 1205.02, 1207.02 Record on appeal......................................... 1204.04 Rehearing by Board..................... 1214.01, 1214.03 Reexamination, ex parte ................................. 2273 Reexamination, inter partes ............ 2674 to 2680
Remand by Board..... 1208, 1210, 1211, 1211.01, 1211.02, 1211.03, 1212, 1213, 1213.02, 1214.01, 1302.14, 2143.03, 2274, 2275, 2681, 2682 Remand by Federal Circuit.......................... 1216.01 Remanded application made special............ 708.01 Reopening of prosecution..... 1207.05, 1208, 1214.07, 1211.01, 1213, 1213.02, 1214.01, 1214.04, 1214.07 Reply brief to examiner’s answer..................... 1208 Requirement by board to address matter....... 1212 Secrecy order application.................. 130, 1304.01 Statement of allowability by Board............. 1213.01 Substitute appeal brief................................. 1207.02 Substitute examiner’s answer..... 1207.05, 1211, 1211.01 Suspension pending civil action or federal circuit appeal in related case....................................... 1213 Time for filing brief....................................... 1205.01 Withdrawal of final rejection............................. 1207 Withdrawal, partial....................... 1214.05, 1215.03
Appealable matter not petitionable......... 1002, 1201 Appendix, computer program listing.... 608.05, 1121 Appendix, multiple claim sets............................. 1121 Applicant (See also: Inventor Pro se applicant )..... 605
Abandonment notification......................... 711.04(c) Administrator or executor......................... 409.01(b) Age, special status......................................... 708.02 Citizenship..... 601, 601.05(b), 602.08(a), 602.08(b), 608.01 Common, at least one..... 211.01, 706.02(f)(2), 706.02(k) to 706.02(l)(3) Comments on statement of reasons for allowance... 1302.14 Discourtesy...................................... 714.19, 714.25 Health, special status..................................... 708.02 Heir........................................... 409.01(a), 409.01(b) International application........... 1806, 1820, 1821 Joint.................................... 201.02, 2137.01, 2151 Mailing address..... 601.01, 601.01(a), 601.03(a), 601.03(b), 601.05(a), 601.05(b), 602.01(b), 602.01(c)(1), 602.08(b), 603, 604 Micro Entity Status......................................... 509.04 Name change............................... 602.01(c), 605.01 Other than inventor................ 409.01(b), 409.03(b) Post Office address.................................... 602.08(a) Power to inspect........................................ 104, 106 Reply (See also: Amendment Reply ) Requirements.................................... 2137.01, 2151 Self prosecuted application........ 707.07(j), 713.01 Signature.................................................... 602.08(b) Small entity status.......................................... 509.02
Index-8Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Appeal — Applicant
Sec. No.Sec. No.
Sole.................................................................. 201.02 Application
Abandoned (See also: Abandoned application ) Abstract of the disclosure......................... 608.01(b) Acceptance of 37 CFR 1.47..... 409.03(h), 409.03(j) Acknowledgment.................................. 502.05, 503 Address missing.................................................. 403 Allowable except as to form............ 706, 710.02(b) Allowed
Definition..................................................... 203.04 File wrapper data...................................... 1302.09 Rejection.................................... 706.05, 1308.01
Amended definition........................................ 203.03 Arrangement..................................... 601, 608.01(a)
Design application....... 1503, 1503.01, 1503.02 Assigned (See also: Assignee Assignment )
Access.............................................................. 106 Allowance
(Non-Applicant........................................... 307 Applicant.................................................... 308
Conflicting subject matter............. 822, 2304.05 Inventor deceased..... 409, 409.01(a), 409.01(b)
Assignment for examination Office of Patent Application Processing)...... 504
Assignment to examiner for examination..... 903.08(b) Assignment to Technology Center for examination.. 504, 903.08, 903.08(e) Background of the invention..................... 608.01(c) Best mode............................... 608.01(h), 706.03(c) Brief description of the drawings.............. 608.01(f) Brief summary of the invention................ 608.01(d) British English spellings................................ 608.01 Certified copy.................................................. 608.01 Claim omitted................ 601.01(a), 601.01(e), 702 Claim terminology...................................... 608.01(o) Claims................ 608.01(i) to 608.01(n), 706.03(k) Clarity and completeness, examiner’s action..... 707.07 Classification in Technology Center........ 903.08(b) Common ownership..... 324, 325, 706.02(f)(2), 706.02(k), 706.02(l) to 706.02(l)(3), 709.01, 822 Completeness..... 201.06(c), 506, 601.01 to 608.01(p) Conflicting, same applicant....... 709.01, 804, 822 Content................................................................. 600 Continuation (See also: Continuation )....... 201.07 Continuation-in-part (Seealso: Continuation-in-part )........................................................................ 201.08
Design....................................................... 1504.20 Continued prosecution (CPA) (See also: Continued prosecution application (CPA) )
Design.................................... 201.06(d), 1502.01 Continuity between applications.............. 211.01(b) Control of access............................. 101, 103, 106 Copendency............................................... 211.01(b) Copending, Design....................................... 1504.20 Correction of inventorship........................ 602.01(c) Cross-noting
Data of parent application in file wrapper or PALM bib-data sheet or PALM database.. 202, 1302.09 Data of related application, updating.... 211.02(a) Foreign application, file wrapper/history notation............................................................ 202 Foreign application, oath................. 202, 214.03
Description of the related art.................... 608.01(c) Design (See also: Design application ) Detailed description................................... 608.01(g) Distribution.......................................................... 508 Divisional (See also: Divisional application )..... 201.06
Design....................................................... 1504.20 Drawings............................. 601.01(f), 608.02, 702
Missing figures...................................... 601.01(g) Effective filing date..... 706.02, 706.02(a), 2152.01 Electronic submission of (EFS-Web)..... 502.05, 2422.03(a) English language............................................ 608.01 Examination......................................................... 700 Examples..................................................... 707.07(l) Facsimile transmission.................................. 608.01 Fee, filing (See also: Fee ).................................. 607 Field of the invention................................. 608.01(c) File wrapper continuing (FWC)................. 201.06(b) Filing date.......................... 211.02, 503, 505, 511
EFS-Web...................................................... 502.05 Filing receipt (See also: Postcard, self-addressed )............................................................................. 503 Filing requirements.......................... 601.01(a), 702 Five year pendency......................... 707.02, 708.01 Font.................................................................. 608.01 Foreign (See also: Foreign application )..... 210 to 217 Form...................................................................... 600 Government-owned
Special......................................................... 708.01 Incomplete..... 203.06, 506, 601.01(d), 601.01(e), 601.01(f), 601.01(g)
Definition........................................... 203.06, 506 Informal.................................................. 506, 702.01
Definition.......................................................... 506 Primary examiner’s attention required........ 1004 Special......................................................... 708.01
Rev. 07.2015, October 2015Index-9
INDEX
Applicant — Application
Sec. No.Sec. No.
Inspection............................................................. 103 International (See also: International application ) International Convention (35 U.S.C. 119)........... 213 Invalid oath...................................................... 602.03 Issue fee not paid (abandoned)................ 711.03(c) Issue simultaneously with another application..... 1306.02 Jurisdiction........................................................ 1305 Mode of operation...................................... 608.01(h) National application............................................ 201 National stage application.................................. 201 New, definition................................................ 203.01 Nonprovisional..... 506, 601, 601.01, 601.01(a), 601.01(c) Number............................................. 502, 503, 506
Status of application using.................. 101, 102 Omitted items..... 217, 601.01(d), 601.01(f), 601.01(g) Ordered examination............................ 708, 708.01 Overlapping
Common ownership..... 706.02(f)(2), 706.02(k), 706.02(l) to 706.02(l)(3), 709.01, 715.01(b), 804.03, 822 Same applicant....................... 709.01, 804, 822 Subject to joint research agreement..... 706.02(l)(1) to 706.02(l)(3), 804, 804.02, 804.03, 2136.01, 2141.01, 2146, 2156
Pages missing............................................ 601.01(d) Parent................................................................... 904 Parts...................................................................... 600 Pending five years.......................................... 707.02 Plant (See also: Plant patent )......................... 1600 Prior art............ 2121 to 2129, 2152, 2154, 2158 Prior art effect of international publication..... 706.02(a)(1), 706.02(a)(2), 2136.03, 2154.01(a) Priority
Foreign application..... 213, 214, 214.01, 706.02, 706.02(b)(1), 706.02(b)(2), 1402, 1504.02, 1504.10
Protest................................................................ 1901 Provisional (See also: Provisional application )..... 201.04, 601, 601.01, 601.01(b), 601.01(c), 602, 702, 706.02 Public inspection................................................. 103 Publication (See also: Pre-Grant Publication (PG-Pub) ) Publication of abstract................ 711.06, 711.06(a) Receipt and handling.......................................... 500 Reconstruction............................................... 508.04 Recording and tracking in Technology Center..... 1704 Reference Filing......................................... 601.01(a)
Reissue (See also: Reissue application )..... 1401 to 1470 Rejected definition......................................... 203.02 Relating to atomic energy............... 115, 150, 151 Review.................................................................. 506 Right to inspect................................................... 103 Right of priority, foreign application.................. 213 Rule 1.60..................................................... 201.06(a) Rule 1.62..................................................... 201.06(b) Secrecy order................................... 120, 121, 130 Serial number............................................. 502, 503 Size fee..... 502.05, 506, 509, 607, 1415, 1893.01(c)
calculations for EFS-Web submissions... 502.05, 2422.03(a)
Special (See also: Special application )..... 707.02, 708 to 708.03
List............................................................... 708.01 Priority in patent printing............................. 1308
Status.............................................. 102, 203, 1730 Inquiries...................................................... 203.08
Substitute Does not carry ownership from parent......... 306 File wrapper/history notation......................... 202
Table submitted on compact disc or via EFS-Web as ASCII text file.... 608.05(b), 2422.03, 2422.03(a) Terminology, Claim.................................... 608.01(o) Title of invention.................................................. 606 Title of invention, change..... 606.01, 1302.01, 1302.04 Transfer procedure.................................... 903.08(d) Types (See also: Patent )................................... 201 Utility (See also: Patent ).................................... 201
Application Data Sheet (ADS)..... 211.02, 601, 601.01(a), 601.01(b), 601.03(a), 601.03(b), 601.05, 602.01, 605.01, 606, 608.01, 608.01(a), 706.02(b)(1), 706.02(b)(2), 1130, 2214, 2266, 2666
Supplemental ADS......................................... 601.05 Application Division (See also: Office of Initial Patent Examination (Office of Patent Application Processing) ) Application publication..................................... 901.03
Citation of................................................... 707.05(e) Disqualifying as prior art, commonly owned..... 717.02 to 717.02(c), 718, 2154.02(c), 2156 Prior art effect..... 706.02(a), 901.03, 2136, 2136.03, 2152.02(b), 2154.01
Arbitration awards notice...................................... 311 Argument for allowability lacking in amendment..... 714.04 Arrangement of application............... 601, 608.01(a) Arrangement of art in Technology Centers..... 901.07 Art unit number on papers.................................... 502
Index-10Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Application — Art unit number on papers
Sec. No.Sec. No.
Artifacts in IFW application.............................. 608.02 Asexual plants (See also: Plant patent )........... 1600 Assigned application
Allowance Non-Applicant.................................................. 307 Applicant.......................................................... 308
Conflicting subject matter............... 706.03(k), 822 Inventor deceased...................................... 409.01(b) Nonprovisional application claiming benefit of provisional application................................... 306.01 Provisional application.................................. 302.03 Title report............................................................ 320
Assignee (See also: Assigned application Assignment )
Access to an application............ 104, 106, 301.01 Address........................................................... 302.05 Affidavits under 37 CFR 1.130..... 717.01 to 717.01(f), 2155 Affidavits under 37 CFR 1.131....................... 715.04 Can appoint new power of attorney.............. 402.07 Certificate of correction........... 307, 1480 to 1485 Change of inventorship, consent..... 602.01(c), 1412.04 Common..... 706.02(f)(2), 706.02(k), 706.02(l) to 706.02(l)(3), 709.01, 822 Consent in reissue..... 1410.01, 1410.02, 1412.04, 1443, 1451 Double patenting, same assignee... 706.02(k), 804, 822 Duty of disclosure........................................ 2001.01 Employees, property interest in patent.. 309, 1702 Entire interest, control..... 106, 301, 324, 325, 402, 402.02, 402.05, 402.07 Establishing right to take action in applications..... 324, 325 Foreign............................................................ 302.04 Interfering applications, same assignee...... 709.01 Intervention..... 106, 324, 325, 409.01(a), 409.01(b) Micro entity status.......................................... 509.04 Multiple Assignees.................................... 324, 325 o Obligated assignee or person who otherwise shows sufficient proprietary interest .......... 409.05 Part interest..................................................... 106.01 Patent issues to
Non-Applicant.................................................. 307 Applicant.......................................................... 308
Permitted to take action under 37 CFR 3.73(b)..... 324, 325 Power to inspect.................................................. 104 Printed on PG-Pub............................................. 1121 Revocation of power of attorney..... 324, 325, 402.05, 402.07
Showing sufficient propietary interest......... 409.05 Small entity..................................................... 509.02
Assignment............................................................. 300 Access................................................. 301.01, 1730 Allowance of application........................... 307, 308 Assignment identification requirements...... 302.03 Automated Patent and Trademark Assignment System............................................................. 502.01 Change of name................................................... 314 Conflicting statements of ownership under 37 CFR 3.73(b)......................................................... 324, 325 Continuing application.................... 306, 324, 325 Copy.................................................. 301.01, 302.01 Corrections in recorded assignment..... 307, 323, 323.01, 323.01(b), 323.01(c), 323.01(d) Cover sheet..................................................... 302.07
Corrections..... 317.02, 323.01, 323.01(a), 323.01(c)
Date of recording............................................ 317.01 Effect of recording.......................................... 317.03 Electronic submission of (EPAS)... 302.10, 502.01, 502.05, 1730 Employees, property interest in patent............. 309 Expungement of assignment records..... 323, 323.01(d) Facsimile submission.......... 302.09, 502.01, 1730 Foreign language translation........................ 302.02 Indexing................................................................ 315 International application..................................... 301 Licenses..................................................... 301, 313 Mailing address...................... 302.05, 302.08, 501 Mergers.................................................. 302.07, 314 Multiple assignees..................................... 324, 325 Nonprovisional claiming benefit of provisional..... 306.01 Not endorsed on pending applications............. 303 One of several overlapping applications..... 709.01, 715.01(b) Parent application............................................... 306 Part interest..... 106.01, 301.01, 706.02(l)(2), 717.02(a) Patent...................................... 301, 301.01, 302.03 Patent and trademark assignment system.. 302.09, 302.10 Pending applications..... 301.01, 302.07, 303, 706.02(l)(2), 706.02(l)(3), 717.02(a) Plural items..................................................... 301.01 Printing on patent.................................... 307, 1309 Proof of................................. 706.02(l)(2), 717.02(a) Provisional application................... 302.03, 306.01 Recording..................... 301, 302, 313, 314, 315 Recording fee.................................................. 302.06
Rev. 07.2015, October 2015Index-11
INDEX
Artifacts in IFW application — Assignment
Sec. No.Sec. No.
Records not kept in application file......... 303, 320 Search facilities................................................. 1730 Security interests.................................. 302.07, 313 Title reports................................................ 303, 320 Transfer of rights from/to small entity.......... 509.02 Translation...................................................... 302.02
Assignment Division.. 320, 602.08(b)), 1121, 1730 Administrator and executor authority checked..... 409.01(b) Certified Abstract of Title.................................... 320 Contact information.......................................... 1730 Information available from PALM....................... 320 Mailing address................................................... 501 Title report............................................................ 320
Assignment of application for examination......... 504 Assignment of reexamination to examiner
Ex parte ..................................... 2236, 2285, 2822 Inter partes ............................... 2636, 2648, 2655
Assignment to examiner for examination... 903.08(b) Assistant Commissioner for Patents (See also: Commissioner for Patents ) Assistant Commissioner for Trademarks (See also: Commissioner for Trademarks ) Assistant examiner (See also: Examiner ) Associate attorney............................................ 402.02 Atomic Energy Act of 1954..... 120, 706.03(a), 706.03(b) Atomic energy application..................................... 150 Attorney or agent
Appointment by assignee of entire interest...... 106 Associate......................................................... 402.02 Compliance with duty of disclosure................ 2004 Continuing application.............................. 201.06(c) Change of correspondence address............ 601.03 Correspondence with.... 403, 403.01(a), 403.01(b) Death..................................................................... 406 Discourtesy..................................................... 714.25 Duty of disclosure....................... 2001.01, 2002.01 Duty to inform patent owner of inter partes reexamination.................................................... 2622 Excluded from practice....................................... 105 Inspection............................................................. 104 Interfering applications.................................. 402.08 International application..... 402.09, 1807, 1808, 1820 Interview........ 405, 408, 713 to 713.10, 1302.14 Limited recognition......................... 402.01, 402.09 More than one for same applicant................ 403.02 Name on patent.................................................. 1309 Name on reexamination certificate.................. 2287 Not of record.............................................. 402, 405
Notarizing oath.................................................... 602 Office cannot aid in selection of........................ 401 Petition to reinstate................................ 1002.02(m) Post Office address........................................ 601.02 Power of (See also: Power of attorney )..... 402, 406, 407, 2501
In ex parte reexamination................ 2213, 2222 In inter partes reexamination.......... 2613, 2622 In supplemental examination....................... 2804
Proof of authority in inter partes reexamination..... 2613 Reexamination, ex parte ................................. 2213 Reexamination, inter partes ................ 2622, 2623 Registered.................................................. 401, 402 Request for limited recognition............. 1002.02(m) Roster of attorneys and agents......... 601.03, 1730 Selection............................................................... 401 Signature of.......................................................... 402 Substitute............................................................. 406 Suspended or excluded..... 105, 407, 714.01(a), 714.19
Communication with....................................... 105 Inspection by................................................... 105 Interview............................................ 105, 713.05
Telephone number on letters........................ 714.01 Telephoned by examiner..... 408, 713.01, 1302.14 Unregistered........................................................ 402 Washington, D.C. area representative............... 408 Withdrawal..... 402.06, 1002.02(s), 1808, 2804.01 Withdrawal after patent granted..... 2223, 2560, 2623
Australian Patent Office (IP Australia)..... 1840, 1840.03, 1860, 1865 Authentication of oath...................................... 602.04 Authentication of e-mail sender....................... 502.03 AuthorIn program (See also: Sequence rules )..... 2430 Authority of administrator or executor....... 409.01(b) Authority of Director, Delegation of............... 1001.01 Authority of Director, Statutory........................... 1001 Authority to inspect pending application............. 103 Authorization
Credit card payments.......................................... 509 Deposit accounts................................ 509.01, 1730 Internet electronic mail (e-mail).................... 502.03 Power of attorney................................................ 402
Authorship...................................... 715.01(c), 716.10 Automated Patent and Trademark Assignment System................................................. 502.01, 502.05 Avoiding double patenting rejection..... 706.02(k), 804.02, 1490, 2129
Index-12Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Assignment — Avoiding double patenting rejection
Sec. No.Sec. No.
B
Background of the invention (See also: Specification ).................................................................... 608.01(c) Bacteria............................................................... 1601 Bar, Statutory (See also: Statutory bar ) Base claim canceled.................................... 608.01(n) Base claim rejected...................................... 608.01(n) Benefit of domestic priority (See also: Cross-noting )... 211.01(a), 211.01(b)
Adding benefit claim after filing................. 211.02(a) Correcting benefit claim after filing............ 211.02(a) Correcting benefit claim after patenting............ 1405 Deleting benefit claim after filing............... 211.01(a)
Benefit of foreign priority (See also: Foreign application )........................................................................ 213.01
Correcting benefit claim after patenting..... 1402, 1417
Benelux Designs Convention (See also: Treaties )..... 213.01, 1504.10 Best mode.................... 608.01(h), 2165 to 2165.04
Affidavit or declaration................................... 715.10 Compared to enablement............................ 2165.02 Computer cases.......................................... 2161.01 Considerations relevant to........................... 2165.01 Evidence of concealment................ 2165, 2165.04 Form paragraphs used to reject................ 706.03(c) Requirements for rejection for lack of.......... 2165.03
Bibliographic Information.................................. 601.05 Biological material.............. 2164.06(a), 2402, 2403 Biotechnology (See also: Nucleotide sequences )..... 2400
Deposit of biological material............................ 2403 Deposit rules..................................................... 2402 Deposit term..................................................... 2408 Enablement................................. 2164.06(a), 2402 Examination of applications............. 2411, 2411.01 Patent In computer program............................. 2430 Process claims under pre-AIA 35 U.S.C. 103(b)..... 706.02(n) Samples............................................................ 2410 Sequence rules (See also: Sequence rules ).. 2420, 2421
Written description................................... 2163, 2402 Blue slip (See also: Form letters and forms: Issue Classification (Blue slip) PTO-270 ) Board of Patent Appeals and Interferences (See also: Patent Trial and Appeal Board (PTAB) ) Books in library............................................ 901.06(a) Borrowed publications............... 901.06(a), 901.06(b)
Box, Mail (See also: Correspondence Mail Stop ) Breadth, Undue (See also: Undue breadth rejection ) Brief, filed on appeal............................................ 1205
Ex parte reexamination.................................... 2274 Inter partes reexamination....... 2662, 2665, 2675
Defective...................................... 2675, 2675.02 Brief description of the drawings (See also: Specification )..................................................................... 608.01(f) Brief summary of invention.......... 608.01(d), 1302.01 British English spelling...................................... 608.01 British specification, provisional........................ 214.03 Broadening claims in reissue.......................... 1412.03 Browser executable code in specification..... 608.01, 608.01(p) Budapest Treaty (See also: Microorganisms Treaties )... 901.05(b), 2402, 2404.01, 2405, 2408, 2409, 2410.01, 2410.02, 2411.01
Depositories...................................................... 2405 Bulletin, Classification (See also: Classification Orders ) Burden of proof..... 2107.02, 2112, 2112.01, 2113, 2163.04, 2164.04 Business hours of USPTO..................................... 510
C
CAFC (See also: Court of Appeals for the Federal Circuit (CAFC) ) Canceled matter, before papers executed.... 602.08(b) Canceled matter, cannot be recaptured in reissue..... 1412.02 Canceled matter, Restoring.......................... 608.01(s) Canceled matter in patented file....................... 901.01 Canceling claim after issue............................... 714.16 Canceling claims not appealed....................... 1214.05 Canceling drawing......................................... 608.02(t) Cancellation of drawing figures..................... 608.02(t) Candor, Duty of (See also: Duty of candor and good faith )................................................... 2001, 2001.03 Carbon copy, application papers...................... 608.01 Carbon copy of amendment............................. 714.07 Card catalog in library.................................. 901.06(a) Caricatures, Offensive...................... 608, 1504.01(e) Catalog and circulars................................... 901.06(a) Central Facsimile Number...................... 502, 502.01
Rev. 07.2015, October 2015Index-13
INDEX
Background of the invention — Central Facsimile Number
Sec. No.Sec. No.
Central Reexamination Unit (CRU) (See also: Office of Patent Legal Administration (OPLA) )..... 103, 1002.02(c)(4), 2212.01, 2224, 2227, 2229, 2231, 2233, 2235 to 2237, 2239, 2240, 2242, 2245 to 2249, 2258.01, 2262, 2265, 2267, 2270, 2271.01, 2274, 2281, 2283 to 2287, 2289, 2294, 2295, 2624, 2634 to 2636, 2646, 2647, 2647.01, 2648, 2660, 2662, 2664, 2666.06, 2667, 2670, 2671, 2671.01, 2671.02, 2671.03, 2674 to 2679, 2682, 2686.01, 2686.03, 2686.04, 2687, 2687.01, 2689, 2694, 2812 Certificate effect of signature.................. 402.03, 410 Certificate, Ex parte Reexamination................... 2288
Format.............................................................. 2290 Certificate, Inter partes Reexamination.. 2688, 2690, 2694
Distribution........................................................ 2692 Format.............................................................. 2690 Reissue patent as................................. 2688, 2694
Certificate of correction........................ 1480 to 1485 Applicant’s mistake........................................... 1481 Assignee’s name............................... 307, 1481.01 Branch...................................................... 1002.02(l) Copy required in reexamination
Ex parte ...................................................... 2214 Date of issuance............................................... 1485 Domestic priority..... 211.01(a), 211.01(b), 1003, 1481 Electronic publication........................................ 1485 Expedited issuance..................................... 1480.01 Foreign priority................................... 216.01, 1481 Form PTO-1050................... 1480, 1480.01, 1485 Form PTO/SB/44................. 1480, 1480.01, 1485 Handling of request for..................................... 1485 International application priority................... 1481.03 Inventorship..................................... 1412.04, 1481 Matters requiring TC Director’s attention.......... 1003 Office’s mistake................................ 1480, 1480.01 Official Gazette listing.......................... 1480, 1485
Patent in litigation............................................. 1003 Patent involved in interference................ 1002.02(g) Petition of refusal to issue....................... 1002.02(c) Reissue application......................... 1411.01, 1443 Report by examiner.......................................... 1485 Third party standing.......................................... 1480
Certificate of mailing or transmission (37 CFR 1.8)..... 502.01, 511, 512, 513
Ex parte reexamination............ 2224, 2265, 2266 Information disclosure statement........................ 609 Inter partes reexamination... 2624, 2666, 2666.05
International application..... 1805, 1834, 1865, 1893.01(a)(1) Maintenance fee............................................... 2510 Overcoming abandonment..... 711.03(c), 711.04(c) Period for reply............................................... 714.17
Certificate of service Ex parte reexamination.................................... 2220 Inter partes reexamination.......................... 2666.06
Supplemental examination..... 2816.03, 2817, 2817.01
Certification Division.............................................. 103 Certified copies
Abstract of Title................................................... 320 Appeal to federal circuit............................... 1216.01 Application as filed............................. 608.01, 1730 Civil litigation..................................................... 1216 Facsimile submission not permitted............... 502.02 Facsimile requests for....................................... 1730 Foreign application... 213.04, 215, 502.02, 1417, 1504.10, 1893.03(c), 2138.06 MPEP........................................................... , 1730 Orders for.......................................................... 1730 Patent copies.................................................... 1730 Patent related file wrappers.............................. 1730 PCT application..... 1801, 1828, 1893.03(c), 1895.01, 1896 Photocopies not permitted............................. 502.02 Provisional application.............................. 103, 104 Reexamination file
Ex parte ...................................................... 2232 Inter partes ................................................. 2632
Change from small entity status (See also: Small entity status ).............................................................. 509.03 Change of correspondence address..... 601.03, 711.03(c) Characteristic feature in design applications.. 1503.01, 1504.01(a) Chemical compound.................................... 608.01(b) Chemical practice
Enablement............................................. 2164.06(b) Generic chemical formula........... 2131.02, 2144.08 Markush............................. 2173.05(h), 2173.05(o)
Chief Administrative Patent Judge.............. 1002.02(f) Circulars (See also: Publication ).................................. Citation of prior art
A.P.C. publications..................................... 901.06(c) Abbreviatures............................. 711.06, 711.06(a) Abstract....................... 706.02, 711.06, 711.06(a) Allowance, Listing at.................................... 1302.12
Index-14Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Central Reexamination Unit (CRU) — Citation of prior art
Sec. No.Sec. No.
Applicant’s............. 707.05(b), 707.05(d), 1302.12 Complete data........................................... 707.05(e) Copies furnished....................................... 707.05(a) Correction.................................................. 707.05(g) Correction, period for reply............................ 710.06 Cross references....................................... 707.05(e) Data used.................................................. 707.05(e) Decisions, orders, notices, memoranda......... 707.06 Defensive publications................ 711.06, 711.06(a) Electronic Resources................................ 707.05(e) Examiner’s answer............................................ 1207 Foreign language documents........................ 706.02 Foreign patent data................ 707.05(e), 901.05(a) Foreign printed applications...................... 901.05(b) Form PTO-892 reproduced....................... 707.05(a) Incorrect..................................... 707.05(g), 710.06 Literature, in specification.......................... 608.01(p) Mailing copy to patent owner................ 2206, 2208 Memorandum................................................. 707.06 Notices........................................................... 707.06 Order of listing........................................... 707.05(c) Orders............................................................ 707.06 Patents series, U.S. (See also: Patent )........ 901.04 Periodical.................................... 707.05(e), 901.06 Prior art effect of international application..... 706.02(a)(1), 706.02(a)(2), 2136.03, 2154.01(a) Prior art in application.............. 707.05(b), 1302.12 Prior art in patent.................................. 1920, 2200
Confidentiality................................... 2202, 2203 Content......................................................... 2205 Court decision.............................................. 2207 Handling....................................................... 2206 Parties who may cite.................................... 2203 Service on patent owner............................... 2208 Time for filing................................................ 2204
Publications............................................... 707.05(e) References.................................................... 707.05
Allowance in first action........................... 1302.12 From applicant..................... 707.05(b), 1302.12
Citizenship of applicant..................................... 601.05 Civil action under 35 U.S.C. 145..... 1214.07, 1216, 1216.02 Civil action under 35 U.S.C. 146.......................... 1216 Claim.......................................... 608.01(i), 608.01(k)
“Adapted for” clauses in................... 2106, 2111.04 “Adapted to” clauses in.................... 2106, 2111.04 Added by amendment............................... 608.01(o)
Results in change of inventorship.............. 602.09
Added in excess of number of claims previously paid for................................................................... 714.10 After prosecution closed................. 714.16, 714.19 After prosecution closed, near end of time period..... 714.20 Aggregation............................................. 2173.05(k) All allowed................................................. 710.02(b) All canceled................................................... 711.01 Allowable except as to form..... 706, 707.07(a), 707.07(j) Allowed, Rejection of...................... 706.04, 706.05 Allowed, Withdrawn appeal.......................... 1215.02 Alternative phrase (See also: Indefinite claim )..... 2173.01, 2173.05(h) Amendment of (See also: Amendment )............ 714 Analysis......................................................... 904.01 Antecedent basis (See also: Indefinite claim )..... 2173.05(e) Basis in description....................... 608.01(o), 2171 Basis in disclosure............................. 608, 2163.03 Breadth...................... 2163.05, 2164.08, 2173.04 Broadening in reissue application..... 1412.02, 1412.03
Dependent claim..................................... 1412.03 Cancellation by examiner after appeal........ 1214.05 Cancellation results in change of inventorship..... 602.01(c) Change after Board statement of allowability..... 1213.01 Combination, old...................................... 2173.05(j) Combination and subcombination............. 806.05(a) Combination Sets.......................................... 905.03 Comprising............................. 2111.03, 2173.05(h) Considered in deciding reexamination request..... 2243, 2643 Consisting essentially of.............................. 2111.03 Consisting of.......................... 2111.03, 2173.05(h) Construed in light of specification... 608.01(o), 804, 2106, 2111.01, 2111.03, 2129, 2145, 2164.08, 2173.05(a), 2181, 2184 Copied from patent (See also: Claim presented corresponding to claim of patent ) Correspondence with disclosure. 1302.01, 2173.03 Defined by specification, term..................... 2111.01 Dependent................................................. 608.01(n) Dependent, objected to when improper.... 608.01(n), 706.01 Dependent on canceled or rejected claim..... 608.01(n), 706.01, 707.07(j), 1214.06 Design application........................... 1503, 1503.01
Rev. 07.2015, October 2015Index-15
INDEX
Citation of prior art — Claim
Sec. No.Sec. No.
Differing only by functional statement..... 2114, 2173.05(g) Diminishing scope................................... 2173.05(h) Disclaimer.............................. 706.03(u), 710.02(d) Double inclusion...................................... 2173.05(o) Duplicate.............................. 706.03(k), 2173.05(o) Each mentioned in letter............................. 707.07(i) Equivalence...................................................... 2183 Excess added by preliminary amendment over number of claims previously paid for........................... 714.10 Excess over fee after notice of allowance.. 714.16(c) Fees, dependent....................................... 608.01(n) File wrapper notation................................... 1302.09 Foreign priority (See also: Foreign application )..... 210 to 217 Form......................................................... 608.01(m) Function of machine................................ 2173.05(v) Functional.................................... 2114, 2173.05(g) Generic (See also: Generic claim )..... 806.04(d), 2173.05(h) Illustrated by drawing........... 608.02(d), 2173.05(s) Improvement (i.e., Jepson claim)...................... 2129 Inaccurate.................................................... 2173.03 Incomplete................................................... 2172.01 Indefinite........................................ 706.03(d), 2173 Independent.............................................. 608.01(n) Index.............................................................. 719.04 Informal.......................................................... 702.01 International application.................................... 1824 Interpretation.. 2111, 2111.01, 2111.02, 2111.03 Jepson.............................................................. 2129 Linking..... 806.04, 806.05(c), 809, 809.03, 821.04(a) Linking, Generic......................... 806.04, 821.04(a) Markush............................. 2173.05(h), 2173.05(o)
Generic...................................................... 803.02 Subgenus............................................ 2173.05(h) Support................................................. 608.01(p)
Means (See also: Means )............................... 2181 Missing...................................................... 601.01(e) Multiple dependent.................................... 608.01(n) Multiplicity.......................... 2173.05(h), 2173.05(n) Negative limitation.................................... 2173.05(i) New matter................ 608.04, 706.03(o), 2163.06
Reissue application................................. 1411.02 Nonelected invention.. 706.03(m), 821.01, 821.02, 821.04(a) Nonelected invention, Added......................... 821.03 Nonstatutory................... 706.03(a), 2105 to 2107
Numbering.................................................. 608.01(j) Objection contrasted with rejection................ 706.01 Official Gazette(O.G.)................................. 1302.09
Omnibus claim......................................... 2173.05(r) Ordinary and customary meaning.... 2106, 2111.01 Patentably distinct...................................... 706.03(k) Plain meaning of claim term........................ 2111.01 Plant application................................... 1605, 1610 Present on Filing Date................................ 608.01(l) Priority (See also: Foreign application )..... 210 to 217 Product, Functional........................................... 2114 Product by process...................... 2113, 2173.05(p) Prolix (See also: Indefinite claim )......... 2173.05(m) Ranges....................................... 2131.03, 2144.05 Reference numerals included..... 608.01(m), 2173.05(s) Reissue application
Numbering........................................ 1453, 1455 Original claim subject to reexamination........ 1440 Printed in Official Gazette ........................... 1455 Same invention as original patent........... 1412.01 Underlining and bracketing............... 1453, 1455
Rejection.................................. 706, 2121 to 2186 Relative terminology................................ 2173.05(b) Renumbering at issue............... 608.01(j), 1302.01 Renumbering dependent.......... 608.01(n), 1302.01 Single means.............................. 2164.08(a), 2181 Single sentence........................................ 608.01(m) Species, how recognized........ 806.04(e), 806.04(f) Species (plural) added.............................. 818.02(b) Statutory requirement................................ 608.01(k) Subgenus (Markush type)....................... 2173.05(h) Subject matter eligibility................ 706.03(a), 2106 Suggested for interference... 2304.03 to 2304.04(b)
Failure to make..................................... 706.03(u) Time limit............................................... 710.02(c)
Summary of invention, consistent............. 608.01(d) Terminology basis in description..... 608.01(o), 2173.01, 2173.05(a) Unsupported............................... 2163.01, 2173.03 Use claims............................................... 2173.05(q) Vague (See also: Indefinite claim ).... 706.03, 2171 to 2173 Varying scope........................................... 608.01(m) “Whereby” clauses in....................... 2106, 2111.04 “Wherein” clauses in........................ 2106, 2111.04 With motion granted in part........................... 714.20
Index-16Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Claim — Claim
Sec. No.Sec. No.
Withdrawal of appealed claim by cancellation..... 1214.05, 1215.03
Claim presented corresponding to claim of patent (See also: Interference ).................... 710.04(a), 2304.4(a)
Appeal of rejection............................................ 1200 Disclaimer rejection................................... 706.03(u) Late amendment............................................ 714.19 Not a reply to Office action........................ 711.02(b) Patent in different Technology Center...... 2304.01(b) Period for reply....................... 710.02(c), 710.04(a) Prosecution closed........................................ 714.19 Rejection........................................................... 2303
TC Director’s attention.................................. 1003 Rejection, Failure to reply to...................... 706.03(u) Special........................................................... 708.01 TC Director’s attention required........................ 1003 Time limit for reply..................................... 710.02(c)
Claiming same invention..... 706.02(f)(2), 706.02(k), 706.02(l) to 706.02(l)(3), 715, 715.05 Class, scope................................................. 903.02(b) Class, transfer................................................... 903.05 Class definitions............................................... 902.02 Classification (See also: Patent classification )..... 900
Application (See also: Classification of application ) Basis.............................................................. 903.02 Cooperative Patent Classification Systeam (See also: Cooperative Patent Classification )...... 902, 905.02
Definitions For CPC............................................... 905.02 For USPC......................... 902.02, 902.02(a)
Design............................................... 907, 1503.01 Examiner (See also: Classification examiner ) Foreign patents.............................................. 903.03 Harmonized subclasses................................ 903.06 Index to U.S. Patent Classification...................... 906
Classification, International Indices........................................................... 902.03 Information................................................ 902.03(a) International........................................................ 906 Issue classification form/sheet/slip..... 903.07, 907, 1302.09, 1302.10, 1302.13 Locarno International.......................................... 907 Mandatory...................................................... 903.07 Manual for USPC........................................... 902.01 Patent classification Home Page on the Internet..... 902.03(a) Nonpatent literature....................................... 901.06 Patent, Change of.......................................... 903.05
Patent Classification Home Page on the USPTO Intranet...................................................... 902.03(b) Principles....................................................... 903.02 Revision..................................................... 903.02(b) Rules governing applications.................... 903.08(e) Statutory authority......................................... 903.01
Classification examiner Decision on classification..... 903.08(d) to 903.08(e) Patentability report.................................... 705.01(a)
Classification of application................................... 900 Allowed application........... 903.07, 1004, 1302.10 Amendment affecting................................. 903.08(c) Borderline.................................................. 903.08(a) By applicant........................................................ 601 Cross-referencing...................................... 903.07(a) Disputed................................. 903.08(a), 903.08(d) File wrapper data........................................... 719.03 Improperly classified................................. 903.08(a)
In another Technology Center at allowance..... 903.08(a) New application, by Office of Patent Application Processing)........................ 903.08(a), 903.08(e)
New application, by SPE........................... 903.08(b) Post classifier.............................. 903.08(e), 903.10 Preliminary.......................................................... 601 Rules governing........................................ 903.08(e) Transfer to another Technology Center..... 903.08(a), 903.08(d)
Classifier, Post................................ 903.08(e), 903.10 Clean copy of specification......... 608.01(q), 1302.02 Clearance for new law interpretation... 1003, 1207.02 Closed prosecution except for formal matters..... 707.07(j), 710.02(b), 714.14
Prosecution not closed............................... 707.07(j) Closing of U.S. Patent and Trademark Office.... 213.03, 510 Code of Federal Regulations (CFR) (See also: Rules, Patent (Code of Federal Regulations) ) Coinventor, Power of attorney........................... 402.10 Collateral estoppel (See also: Estoppel )....... 2012.01
Ex-parte reexamination................................... 2259 Inter partes reexamination............................... 2659
Combination and aggregation..... 2173.05(j), 2173.05(k) Combination and subcombination..... 806.05(a), 806.05(c), 903.02(b) Comments on tests or examples................... 707.07(l) Commercial activity as on sale (See also: On sale )..... 706.02(c), 2133.03 to 2133.03(e), 2152.02(d)
Rev. 07.2015, October 2015Index-17
INDEX
Claim — Commercial activity as on sale
Sec. No.Sec. No.
Commercial exploitation as on sale (See also: On sale )..................... 706.02(c), 2133.03(e)(1), 2152.02(d) Commercial success of invention, affidavit alleging (See also: Affidavits, traversing rejections (37 CFR 1.132) )....................................................... 716.03, 1504.03 Commissioner for Patents (See also: Office of the Commissioner for Patents )............... 409.03, 708.01
Duty of Disclosure to................................... 2001.03 Mailing address.................................................. 501 Statutory basis.................................................. 1001
Commissioner initiated reexamination (See also: Director initiated Reexamination ) Commissioner for Trademarks
Petitions decided by.................................. 1002.02(i) Commodity Control List (CCL)............................... 120 Common applicants..... 715.01(a), 706.02(f)(2), 706.02(k), 706.02(l) to 706.02(l)(3), 709.01, 717.02 to 717.02(d), 2137 Common knowledge, use in rejections........... 2144.03 Common ownership..... 706.02(k), 706.02(l) to 706.02(l)(3), 717.02 to 717.02(d), 717.02, 2137, 2146, 2154.01(c), 2156
Conflicting claims..... 303, 706.02(f)(2), 706.03(k), 709.01, 804, 822, 2304.05 Evidence required for establishing..... 706.02(l)(2), 717.02(a), 717.02(b)
Common representative for international application..... 402.09, 1807 Communication with suspended or excluded attorney or agent................................................................. 105 Communications, official mailing address for........ 501 Communication via Internet e-mail................... 502.03 Comparative tests (See also: Affidavits, traversing rejections (37 CFR 1.132) ).......................... 716.02(b) Complete application........ 506, 601.01 to 601.01(g) Complete British specification.......................... 214.03 “Comprising” as transitional phrase................ 2111.03 “Comprising” in Markush claim................... 2173.05(h) Compact disc submissions..... 608.05, 2422.03, 2422.03(a), 2425
Amendments to................................. 608.05, 2426 Computer programs...................... 608.05(a), 2425 Requirements................................................ 608.05 Sequence Listings...................... 2422.03, 2424.01 Tables....................................... 608.05(b), 2424.01
Computer generated icons......................... 1504.01(a) Computer programs or software
Adequate disclosure................................ 2164.06(c) Affidavit practice...................................... 2164.06(c) Best mode................................................... 2161.01
Deposit of listings....................... 608.05, 608.05(a) Enablement............................ 2161.01, 2164.06(c) Patentable subject matter................................. 2106 Printed in PG-Pub............................................. 1121 Undue experimentation........................... 2164.06(c) Written description....................................... 2161.01
Concealment............................... 608.01(h), 2138.03 Conception......... 715.07, 2138, 2138.01, 2138.04 Concordance, International and United States classification.......................................................... 906 Concurrent Office proceedings..... 2282 to 2286.01, 2820 Conduct in public information facilities................... 510 Conduct of ex parte reexamination proceedings..... 2254 Conduct of inter partes reexamination proceedings..... 2654 Confidential material.................. 121, 724 to 724.05 Confidential material submission............ 121, 724.02 Confidential party of interest.................... 2202, 2203 Confidential status of application..... 101, 706.02(f)(2)
Same applicant..... 706.02, 706.02(c), 706.03(k), 709.01, 804, 822 Rule 1.53(d).............................................. 201.06(d)
Confidential submission of prior art and section 301 written statements................................... 2202, 2203 Confidentiality, pending applications...................... 100 Confidentiality of international applications........... 110 Confirmation number............................................. 503 Conflicting applications, same assignee... 706.02(f)(2), 706.02(k), 709.01, 715.01(b), 804.03, 822 Conflicting oaths or declarations.................. 602.01(c) Congress, Inquiry on status of application by member of.................................................................. 203.08(a) Conservator, unavailable joint inventor............. 409.02 “Consisting essentially of” as transitional phrase..... 2111.03 “Consisting of” as transitional phrase............. 2111.03 “Consisting of” in Markush claim................ 2173.05(h) Constitutional basis for patents..................................... Constructive election (See also: Election of species )... 818.02(a), 818.02(c) Constructive notice to patent owner of request for reexamination.......................................... 2230, 2654 Constructive reduction to practice.................... 715.07 Consular certificate........................................... 602.04 Consular certificate, Foreign executor or administrator.. 409.01(b) Consular certificate, Omission of...................... 602.04 Consular officer................................................ 602.04
Index-18Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Commercial exploitation as on sale — Consular officer
Sec. No.Sec. No.
Content of ex-parte reexamination request........ 2214 Continuation............... 201.06(c), 201.07, 601.01(a)
Abandonment of prior nonprovisional application ..... 201.06(c) Affidavits, copies of.................................... 201.06(c) Assignment carried from parent......................... 306 Change of attorney/correspondence address..... 201.06(c) Continued prosecution application (CPA)... 201.06(d) Copendency.............................................. 211.01(b) Cross-reference to prior application.......... 202, 211 Definition........................................................ 201.07 Design......................................................... 1504.20 Effective filing date......................................... 211.02 Examination............................................... 201.06(c) Extension of time....................................... 201.06(c) File wrapper continuing (FWC).................. 201.06(b) File wrapper/history notation.............................. 202 Final rejection on first action..................... 706.07(b) Incorporation by reference......................... 201.06(c) Identification on letter of transmittal.................... 506 Inspection of parent............................................ 103 International application............................... 1828.02 International application as parent..... 211.01(c), 1895 Inventor, at least one in common................... 211.01 Inventorship............................................... 201.06(c) New matter................................. 201.07, 608.04(b) Oath.................... 201.06(c), 602.05(a), 602.05(b) Parent application data noted in file history/wrapper... 202, 1302.04 Reference to parent application................ 202, 211 Reference to parent application inadvertently omitted......................................................... 1302.04 Reissue..................................... 1414, 1441, 1451 Restriction........................................................... 819 Rule 1.53(b)............................................... 201.06(c) Rule 1.53(d).............................................. 201.06(d) Rule 1.60 application, Former................... 201.06(a) Rule 1.62 application, Former................... 201.06(b) Small or micro entity status....................... 201.06(c) Specification and drawings........................ 201.06(c) Substitute statement under 37 CFR 1.64... 201.06(c) Terminal disclaimer, effect in............................. 1490 Time for filing................................................. 211.03 When patented, opens parent application to public inspection........................................................... 103 Written description requirement..................... 211.05
Continuation-in-part...................... 201.08, 601.01(a)
Assignment from parent does not apply............. 306 Copendency.............................................. 211.01(b) Cross reference to parent application....... 202, 211 Definition........................................................ 201.08 Design application....................................... 1504.20 Effective date..... 211.02, 706.02, 2133.01, 2151, 2152.01 File wrapper continuing procedure............ 201.06(b) File wrapper/history notation.............................. 202 Filed by assignee................................................ 324 Identification on letter of transmittal.................... 506 Inspection of parent............................................ 103 International application used as mechanism to file.... 1828.02 International application as parent............ 211.01(c) Inventor, at least one in common................... 211.01 Ownership.......................................................... 306 Reference to parent application..................... 211.02 Rejection over published priority document..... 2133.01, 2154.01(b) Rule 1.53(b)............................................... 201.06(c) Rule 1.62, Former..................................... 201.06(b) Time for filing................................................. 211.03 When patented, opens parent application to public inspection........................................................... 103
Continued Prosecution Application (CPA)..... 201.01, 201.06, 201.06(d)
Amendments before first Office action...... 714.01(e) Application number............................................. 503 Assignee right to take action..................... 324, 325 Certificate of mailing or transmission.................. 512 Complete non-provisional application..... 601.01, 601.01(a) Continuation-in-part not permitted................. 201.08 Continuity with parent................................ 211.01(b) Correspondence.................................. 502, 502.01 Cross reference to previous application.............. 202 Design application.................... 201.06(d), 1502.01 Eliminated for utility and plant applications..... 201.06(d) Express abandonment of prior application.... 711.01, 711.02(b) Extension of time....................................... 201.06(d) Fees
Reissue application...................................... 1415 Filing date.................................................. 201.06(d) Improper CPA treated as RCE... 201.6(d), 706.07(h) Information disclosure statement in parent.... 609.02, 707.05
Rev. 07.2015, October 2015Index-19
INDEX
Content of ex-parte reexamination request — Continued Prosecution Application (CPA)
Sec. No.Sec. No.
Inventorship............................................... 201.06(d) Patent term........................................... 1303, 2701 Plant application, no longer available........ 201.06(d) Priority......................................................... 1302.04 Public access to........................................ 201.06(d) Published as PG-Pub....................................... 1120 Reissue............................................................. 1430 Restriction requirement in prior application........ 819 Signature Requirements........................... 201.06(d) Small or micro entity status....................... 201.06(d) Suspension of action.......................................... 709 Terminal disclaimer, effect in............................. 1490 Utility application, no longer available....... 201.06(d)
Continuing application..... 210, 211, 1302.12, 1302.04
Specific reference..................................... 202, 211 Continuing data (See also: Cross-noting )............ 202 Continuity between applications................... 211.01(b) Control of inspection by assignee................ 104, 106 Convention, International (See also: Treaties )..... 213.03 Converting nonprovisional and provisional applications................................... 201.04, 601.01(c) Cooperative Patent Classification System (CPC)..... 902, 905
Classification in.......................... 905.03, 905.04(b) Combination Sets.......................................... 905.03 Definition........................................................ 905.02 References in Definitions...................... 905.01(a)(1) Scheme......................................................... 905.01 Warnings in Definitions......................... 905.01(a)(3)
Copendency................................................. 211.01(b) Copending U.S. application
Common ownership..... 706.02(k), 706.02(l)(2), 717.02(a) Design application....................................... 1504.20 Different inventive entities... 706.02(f)(2), 706.02(k), 706.02(l)(3), 717.02(a) Duty of disclosure in................................ 2001.06(b) Terminal disclaimer practice............................. 1490
Copied patent claim (See also: Claim presented corresponding to claim of patent ) Copier copies.................................................... 714.07 Copies of prior art with reexamination request
Ex parte .......................................................... 2218 Copies of published applications......................... 1128 Copy of foreign application, certified..................... 215 Copy of printed patent in reexamination
Ex parte .......................................................... 2219
Copying ex-parte reexamination file by public..... 2232 Copying inter partes reexamination file by public..... 2632 Copyrights.................................................... 608.01(v)
Relationship to design patents......................... 1512 Correction of drawing.................. 608.02(p), 1302.05
Annotated sheets...................................... 608.02(v) Approval by examiner................................ 608.02(x)
Deferrable................................. 608.02(b), 608.02(p) Marked-up copy............................................ 608.02(v) New matter....................................................... 608.04 Not approved................................................ 608.02(x) Order for....................................................... 608.02(x) Replacement sheets...................... 1302.05, 1303.01 Correction of inventorship
Application..... 601.01(d) to 601.01(g), 602.01(c), 605.04(g) Consent of assignee.................................. 602.01(c) Continuing application............................... 602.01(c) During ex parte reexamination.................... 2250.02 During inter partes reexamination... 2658, 2666.03 In a patent
By a certificate of correction...... 602.01(c), 1481 By filing a reissue application...... 1402, 1412.04
Misjoinder.................................................... 1412.04 Correction of name................... 602.01(c), 602.08(b) Correction of patent............................................. 1400
By reexamination (See also: Reexamination, Ex parte Reexamination, Inter partes ) By reissue (See also: Reissue application )..... 1401 to 1470 Bysupplementalexamination(Seealso: Supplemental examination )............................................... 2809.01 Certificate of correction...................... 1480 to 1485 Statutory disclaimer (See also: Disclaimer Terminal disclaimer )....................................................... 1490
Correction of PG-Pub.......................................... 1130 Correction of reference citation..... 707.05(g), 710.06 Correspondence (See also: Mail stop )
Address of PTO........................................ 501, 502 Address in secrecy order applications................ 120 Address of patent owner....................... 2622, 2805 Address, official mailing...................................... 501 Address of an attorney.. 403, 403.01(a), 403.01(b) Boxes (See also: Mail stop ) Continuing application............................... 201.06(c) Crossing in mail............................................. 714.05 Duplicate filings.. 402.10, 403, 502.04, 714.01(a) Electronic mail....... 502.03, 713, 713.01, 713.04
Index-20Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Continued Prosecution Application (CPA) — Correspondence
Sec. No.Sec. No.
Facsimile transmission........... 502.01, 2510, 2515 Identifying with issue batch number (no longer required)...................................................... 1303.01 Maintenance fee....................... 2510, 2515, 2542 Plural attorneys............................... 402.10, 403.02 Post Allowance....................................... 502, 1306 Published application........................................ 1134 Receipt and handling.......................................... 500 Reexamination, ex parte ................................. 2224 Reexamination, inter partes ............................ 2624 Signature requirements................................. 502.02 Third party, application published..................... 1134 With whom held.................................................. 403
Counter-terrorism inventions, special status..... 708.02 Counting actions.................................................. 1705 Countries for foreign priority............................. 213.01 Country codes..................................................... 1851 Coupons........................................................................ Court decision
Citation of...................................................... 707.06 Dissemination of............................................... 1720 Entry in patent file............................................. 2207 Treatment of...................................................... 1721 Unpublished decisions...................................... 2677
Court of Appeals for the Federal Circuit (CAFC)..... 711.02(b), 1002.02(k)(1), 1002.02(k)(3), 1214.06, 1216, 1216.01
Appeal to, from an ex parte reexamination...... 2279 Appeal to, in an inter partes reexamination..... 2682, 2683
Court ordered inter partes reexamination...... 2686.04 Court papers, service on Director........................ 1216 Cover sheet — provisional application............. 201.04 CREATE Act (See also: Joint Research Agreement ) Credit Card Payment Form PTO-2038 reproduced..... 509 Criteria for deciding ex parte reexamination request..... 2242 Criteria for deciding inter partes reexamination request................................................................. 2642 Cross appeal to the Patent Trial and Appeal Board in inter partes reexamination.................................. 2674
Cross appeal to the Federal Circuit in inter partes reexamination...................................................... 2683 Cross-noting
Data of parent application on file wrapper/history..... 202, 1302.09 Data of provisional application in specification..... 1302.04
Data of provisional application on file wrapper/history................................................... 202 Data of related application in application data sheet... 211.02, 1302.04 Foreign application cited in an application oath..... 202, 214.03 Foreign application, file wrapper/history............. 202 In original patent file of reissue application......... 202 Reissue applications............................. 1451, 1455 Specific reference..................................... 202, 211
Cross-reference Another application (See also: Cross-noting )..... 608.01(p), 1302.04 At allowance................................. 903.07, 1302.04 Citing......................................................... 707.05(e) Noted during examination......................... 903.07(a) Required for all claimed disclosure........... 903.07(a)
Crossed mailings.............................................. 714.05 Current Employee Restrictions............................ 1702 Customary meaning of claim term...... 2106, 2111.01 Customer Numbers..... 402, 403, 711.04(c), 1807, 2515, 2540
Change of address........................................ 601.03 Correspondence relating to................................ 403
Customer Service Center..... 104, 508.04, 714.13, 1730 Customer Service Window..... 101, 103, 501, 502, 505, 710.02(e), 714.13, 2422.09
D
D-10 notice........................................... 130, 1304.01 Damage, Proof of irreparable....................... 409.03(g) Databases (See also: Electronic databases ) Date
Amendment.. 505, 511, 512, 710.01(a), 710.05, 714.18 Citation of foreign patent........ 901.05(a), 901.05(b) Convention..................................................... 213.01 Filing..... 211.02, 502, 503, 505, 506, 506.02, 1002.02(b)
of EFS-Web transmissions........................ 502.05 Filing, Refusal to accord.................... 506.02, 2133 Foreign application (priority).................. 210 to 217 Invention............................................... 2137, 2138
Rev. 07.2015, October 2015Index-21
INDEX
Correspondence — Date
Sec. No.Sec. No.
Maintenance fees due...................................... 2506 Office action................................................... 707.11 Office stamp.......... 502, 505, 506, 512, 714.18 Reference..... 706.02, 707.05(e), 715, 715.01, 715.01(c)
Date of execution of oath.................................. 602.03 Death of attorney................................................... 406 Death of inventor (See also: Administrator or executor )....................................... 409, 409.01(a), 409.01(b) Deceased inventor
Allowance not withdrawn............................. 1303.03 Legal representative as applicant..... 409.01(a), 409.01(b), 1806
Proof of authority of............................... 409.01(b) Legal representative refuses to sign.......... 409.03(c)
Deceptive intent (See also: Fraud Inequitable conduct )
Foreign filing licenses......................................... 140 Inventorship............................................... 602.01(c) Reissue..... 1401, 1412.02, 1412.03, 1412.04, 1414, 1414.02, 1414.03, 1444, 1448, 1451, 1457, 1481.02, 1490, 2012
Decision By Patent Trial and Appeal Board..... 1213, 1302.14
Dissemination of........................................... 1720 Ex-parte reexamination............................... 2277 Inter partesreexamination................ 2681, 2682
Reconsideration of.................................. 1214.03 Treatment of................................................. 1721
Citation.......................................................... 707.06 Denying ex parte reexamination request......... 2247 Ex-parte reexamination review petition............ 2240
Governs examiner’s action......................................... Listed...................................................................... II Ordering ex-parte reexamination..................... 2246 Ordering inter partes reexamination (See also: Reexamination, Inter partes: Decision on the request for reexamination ) Public availability................................................. 103 Publication of................................................. 707.06
Declaration (See also: Oath )............................... 602 Amendment................................................... 602.01 Attached to specification................. 602, 602.08(c) Change of inventorship.............................. 602.01(c) Copies, filing of................................................... 602 Copies from prior application..................... 201.06(c) Date of execution........................................... 602.03 Defective........................................................ 602.03 Delayed filing................................... 506, 601.01(a)
Executed before alterations made............. 602.08(b) Facsimile transmission......................... 502.01, 602 Foreign priority applications listed............ 202, 214 International application..... 1820, 1893.01, 1893.01(a), 1893.01(a)(1), 1893.01(a)(2), 1893.01(a)(3), 1893.01(e), 1893.03(a), 1893.03(b), 1893.03(g), 1895 Inventor refuses to sign or cannot be found..... 602.08(b) Minor, by............................................................. 409 Non-English................................................... 602.06 Plant patent application.................................... 1604 Refers to preliminary amendment..... 601.01(a), 602.01(b) Reissue application..... 706.03(x), 1414, 1414.01, 1444, 1455 Signed before alteration................................. 602.08 Substitute....................................................... 602.02
Declarations, conflicting............................... 602.01(c) Dedication to the public............................. 715, 1490 Defective oath................................................... 602.03
In reissue application........................................ 1414 Defects, correction of, in request for ex parte reexamination.......................................... 2227, 2231 Defense, applications affecting..... 115, 120, 130, 140 Defensive publication citation....................... 711.06(a) Defensive publication program......................... 711.06 Deferral of examination.......................................... 709 Definition of class............................................. 902.02 Delegation of Director’s authority..... 1001.01, 1002, 1002.02 Demonstration at interview............................... 713.08 Denial of request for reexamination.... 2247, 2247.01, 2647, 2647.01 Department of Energy (DOE).. 115, 140, 150, 151, 706.03(b) Dependent claim.......................................... 608.01(n)
Objected to when base claim is canceled..... 608.01(n), 707.07(j) Reissue............................................................. 1455 Treatment in inter partes reexamination..... 2660.03
Dependent claim, objected to when improper..... 608.01(n), 706.01 Deposit account................................................ 509.01
Authorizations............................... 509.01, 1302.04 Extensions of time...................................... 706.07(f) International applications................. 1850, 1875.01 Issue fee.............................. 1303, 1306, 1308.01 Maintenance fee....................... 2510, 2515, 2522
Index-22Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Date — Deposit account
Sec. No.Sec. No.
Overdrawn..................................................... 509.01 Petition fee................................................. 711.03(c) Refunds................................ 509, 509.01, 607.02 Replenishment................................... 509.01, 1730
Mailing address.............................................. 501 Deposit Account Division.................................. 509.01 Deposit of microorganisms (See also: Biotechnology ).......................... 1605, 1823.01, 2402 to 2411.05 Deposit of correspondence.................................... 502 Depositions
Evidence.......................................... 1901.02, 2013 Of examiner................................................. 1701.01
Deposit rules (See also: Biotechnology )............ 2400 Acceptable depository...................................... 2405 Biological material, definition................ 2402, 2403 Biological material, made or isolated without undue experimentation........................................... 2404.02 Budapest Treaty (See also: Treaties ).............. 2402 Budapest Treaty depositories........................... 2405 Depositories, Current list of Budapest Treaty..... 2405 Examination procedures.................. 2411, 2411.01
After grant................................................ 2407.02 Application in condition for allowance except for deposit..................................................... 2411.03 Certificate of correction........................... 2407.02 Content of application regarding deposited material.................................................... 2411.05 Need for 37 CFR 1.312 amendment....... 2411.03 Reissue................................................... 2407.02 Rejections based on deposit issue.......... 2411.01 Responses from applicant....................... 2411.02
Furnishing of samples...................................... 2410 Access to deposits.................................. 2410.01 Certification of availability of deposit....... 2410.02 Conditions of deposit............................... 2410.01 Exception to removal of restrictions........ 2410.01 Restrictions removed upon grant............. 2410.01
Known and readily available biological material..... 2404.01
Budapest Treaty deposit.......................... 2404.01 Continuity of access................................ 2404.01 Deposits certified as available..... 2404.01, 2410.02 Health, safety restrictions........................ 2404.01 Indicia of “known and readily available”.... 2404.01
Material capable of self-replication.............. 2403.01 Direct self-replication............................... 2403.01 Indirect self-replication............................ 2403.01
Need for a deposit.................... 2402, 2403, 2404
Non-Budapest Treaty deposit....................... 2404.01 Plant material............................................... 2403.02 Plant Patent Act, Relation to........................ 2403.02 Reference to deposit in application... 2404, 2404.03
Implication, presumption............. 2404, 2404.03 Requirements of 35 U.S.C. 112... 2164.06, 2404, 2404.03
Replacement or supplement of deposit............ 2407 After a patent has issued......................... 2407.02 Exemption from replacement.................. 2407.05 Failure to replace..................................... 2407.03 In a pending application.......................... 2407.01 Reason for replacement.......................... 2407.04 Replacement not recognized................... 2407.06 Request for certificate of correction......... 2407.02 Treatment of replacement, presumption of identity..................................................... 2407.04
Seeds.......................................................... 2403.02 Term of deposit................................................. 2408
Budapest Treaty term................................... 2408 Enforceable life of patent.............................. 2408
Time for making original deposit....................... 2406 Assurance regarding deposit before payment of issue fee...................................... 2406, 2411.03 Corroboration.......................................... 2406.02 Description in application specification..... 2406.01 During application pendency........................ 2406 Loss of U.S. filing date in other countries..... 2406, 2406.03 New matter.............................................. 2406.01 Patent Cooperation Treaty applications.... 1823.01 Post-issuance deposits................................. 2406 Viability of deposit........................................ 2409 Viability statement........................................ 2409
35 U.S.C. 112 requirements...... 2402, 2403, 2404 Deputy Director of Patents and Trademarks..... 1002.02(o), 1202 Derogatory remark regarding prior art.......... 608.01(r) Description
Basis for claim..... 608.01(o), 706.03(c), 2161, 2163 Computer programming............................... 2161.01 Detailed..................................................... 608.01(g) International application.................................... 1823
Design application............................................... 1500 Analogous art............................. 1504.02, 1504.03 Anticipation.................................................. 1504.02 Application, elements of................................... 1503 Articles, design comprising multiple........ 1504.01(b)
Rev. 07.2015, October 2015Index-23
INDEX
Deposit account — Design application
Sec. No.Sec. No.
“Average observer” test............................... 1504.02 Benelux Designs Convention (See also: Treaties )..... 213.01, 1504.10 Characteristic feature............. 1503.01, 1504.01(a) Claim............................................... 1503, 1503.01 Combining references.................................. 1504.03 Commercial success................................... 1504.03 Computer generated icons...................... 1504.01(a) Continuation application.............................. 1504.20 Continuation-in-part (CIP) application......... 1504.20 Continued Prosecution Application (CPA).... 1502.01 Convention, International.............. 213.01, 1504.10 Copending applications.............. 1504.06, 1504.20 Copying, evidence of, to rebut obviousness..... 1504.03 Copyright, Relationship to................................. 1512 Definition........................................................... 1502 Description....................................... 1503, 1503.01 Disclaimer.................. 1503.01, 1503.02, 1504.04 Disclosure.................. 1503.01, 1503.02, 1504.04 Divisional application.................... 201.06, 1504.20 Double patenting................................ 804, 1504.06 Drawing.......... 1503, 1503.01, 1503.02, 1504.04
Broken lines........... 1503.01, 1503.02, 1504.04 Color........................................................ 1503.02 Trademarks................................................... 1512
EFS-Web........................................... 502.05, 1730 Embodiments, alternate or multiple..... 1503.01, 1504.01(b), 1504.05 Enablement................................. 1503.02, 1504.04 European Community Design treaty............ 1504.10 Examination... 1504, 1504.01, 1504.02, 1504.03, 1504.04 Expedited Examination..... 501, 1002.02(c)(3), 1504.30
Reissue........................................................ 1457 Expert testimony.......................................... 1504.03 Feature emphasized.................................... 1503.01 Fee, filing............................................................ 607
Reissue........................................................ 1457 Fee, issue......................................................... 1306 Font, type................................................ 1504.01(a) Foreign priority..... 211 to 213, 215, 1504.02, 1504.10
More than six months before U.S. filing.... 1504.02 Functionality............................................ 1504.01(c)
Obviousness and..................................... 1504.03 Hague Agreement (See also: Treaties )..... 213.01, 1504.10, 2901
Hidden end use....................................... 1504.01(c) Hidden feature........... 1504.02, 1504.03, 1504.04 Icon, computer generated....................... 1504.01(a) International (See also: Internation Design Application )
Publication.................................................... 1120 Status Information for................................... 1128
Indefiniteness............ 1503.01, 1503.02, 1504.04 Library collections relating to..................... 901.06(a) Modification, description.............................. 1503.01 Multiple embodiments.................................. 1504.05 Multiple parts of article............................ 1504.01(b) New matter..... 1503.01, 1503.02, 1504.01(a), 1504.04 Object, Design for............................................. 1502 Obviousness................................................ 1504.03 Obviousness-type double patenting (ODP).. 1504.06 Offensive subject matter.......................... 1504.01(e) Ornamentality lacking.............................. 1504.01(c) Patent Cooperation Treaty............... 1501, 1502.01 Patentability... 1504.01, 1504.01(a) to 1504.01(e), 1504.02, 1504.03, 1504.04 Petition, Special Status................. 708.02, 1504.30 Petition to accept color drawings or photographs..... 608.02, 1503.02 Photographs............................... 1503.02, 1504.04 Preamble..................................................... 1503.01 Priority under 35 U.S.C. 119.... 210, 215, 1504.02, 1504.10 Priority under 35 U.S.C. 120.. 211.01(a), 211.01(b), 1504.20 References supplied...................... 707.05(a), 1513 Quayle action.................................................... 1504 Registration abroad.................... 1504.02, 1504.10 Reissue................................................. 1457, 1509 Request for Continued Examination (RCE).. 1502.01 Request for Expedited Examination............ 1504.30 Restriction.................................................... 1504.05
Reissue........................................................ 1457 Rules applicable............................................... 1501 Scope of claim..... 1503.01, 1504.04, 1504.05, 1504.06 Search............................ 1504, 1504.02, 1504.03 Secondary considerations........................... 1504.03 Simulation................................................ 1504.01(d) Specification................................................ 1503.01
Use of Copyrights in..................................... 1512 Use of Trademarks in.................................... 1512
Statutory subject matter................... 1502, 1504.01
Index-24Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Design application — Design application
Sec. No.Sec. No.
Surface ornamentation... 1502, 1502.01, 1503.02, 1504.01, 1504.01(a), 1504.01(c), 1504.03 Surface treatment or indicia......................... 1503.02 Term of................................. 1457, 1502.01, 1505 Title........................................ 1503.01, 1504.01(a)
Amendment of......................................... 1503.01 Use of Trademarks in.................................... 1512
Trademark, relationship to................................ 1512 Type fonts................................................ 1504.01(a) Utility patent, relationship to........................ 1502.01 Visual characteristics........................................ 1502 Written description lacking..... 1503.01, 1503.02, 1504.01(a), 1504.04
Design patent series (See also: Patent )......... 901.04 Designated office............... 1801, 1803, 1893.01(a) Designation of states........................................... 1821 Detailed description (See also: Specification ) Determination of public use or on sale..... 706.02(c), 2133.03, 2152.02(c), 2152.02(d) Determining if a Reexamination Was Filed for a Patent............................................................. 2632.01 Determining whether an application is subject to first to invent provisions of AIA....................................... 2159 Digest (See also: Cross-reference: Art collection ) Dictionary as a source for the ordinary and customary meaning of a claim term............ 2111.01, 2173.05(a) Diligence
Charts for priority......................................... 2138.01 Filing application.......................................... 2138.06 Filing reissue.................................................... 1403 Interference practice.................................... 2138.01 Of actions during regulatory review............. 2757.01 Reasonable.................................................. 2138.06 Shown in 37 CFR 1.131 affidavit..... 715.07, 715.07(a) To overcome a rejection............................... 2136.05
Director of Technology Center..... 714.13, 714.14, 714.16, 714.25, 715.08, 804.04, 1002.02, 1002.02(c), 1207.01, 1207.02, 1207.03, 1207.05, 1208, 1214.04, 1308, 1308.01, 1901.06, 2242, 2258.01, 2265, 2267, 2274, 2284 to 2286, 2648, 2667, 2682, 2686.01
Functions..................................... 1002.02(c), 1003 TC 1600.............................................. 1002.02(c)(2) TC 2900.............................................. 1002.02(c)(3) TC 3640.................................... 710, 1002.02(c)(1)
Director of the USPTO Authority and functions..... 706.03(b), 708.01, 709, 711.02, 714, 719.01, 1001, 1002, 2209, 2212,
2239, 2240, 2242, 2244, 2246, 2258.01, 2258.02, 2265, 2266, 2284, 2286.01
Publication of confidential decisions............... 103 Withdrawal from issue.................................. 1308
Decisions.................................................................... Mailing address.................................................. 501 Notices (See also: Publication )................ , 707.06 Orders (See also: Publication )................. , 707.06
Director initiated reexamination............... 2212, 2239 Disbarred attorney (See also: Attorney or agent: Suspended or excluded ) Disciplinary proceedings............................. 402, 410
Mailing address.................................................. 501 Disclaimer (See also: Terminal disclaimer )
Co-author of publication............................ 715.01(c) Copy required in reexamination
Ex parte ...................................................... 2214 Defensive publication..................................... 711.06 Design application..... 1503.01, 1503.02, 1504.04 Forms................................................................ 1490 Processing........................................................ 1490 Rejection................................ 706.02(k), 710.02(d) Statutory........................................................... 1490 Terminal................ 706.02(k), 804, 804.02, 1490
Disclosure (See also: Duty of disclosure Specification )
Abstract..................................................... 608.01(b) Amendment.................................. 608.04, 1302.02 Amendment, Preliminary........................... 608.04(b) Best Mode (See also: Best Mode )..... 608.01(h), 2165 Chemical compound................................. 608.01(p) Claim Present on Filing Date..... 608.01(l), 2163.01 Claimed......................................................... 901.03 Common, parent and continuing applications..... 211.05 Completeness............................... 608.01(p), 2164 Computer programming cases..... 2164.06(c), 2161.01 Correspondence with claims...... 2163.05, 2173.03 Design application........................... 1503, 1503.01 Detailed description................................... 608.01(g) Duty of.............................................................. 2000 Enablement (See also: Enablement ).............. 2164 Foreign application........................................ 211.05 Implicit......................................................... 2144.01 Incomplete... 608.01(p), 706.03(d), 2161 to 2165 Incomprehensible.......................................... 702.01
Rev. 07.2015, October 2015Index-25
INDEX
Design application — Disclosure
Sec. No.Sec. No.
Incorporation by reference (See also: Incorporation by reference ).................................. 217, 608.01(p) Insufficient............... 608.01(p), 702.01, 706.03(d) Later filed application................................ 608.01(p) Operability................................ 716.07, 2164.08(b) Preliminary amendment............................ 608.04(b) Related applications................. 608.01(p), 1302.04 Requirements for.............................................. 2161 Reservation clause.................................... 608.01(e) Secrecy order, Material subject to...................... 120 Specification (See also: Specification )......... 608.01 Sufficiency for continuity................................ 211.05 Sufficiency of....................................... 716, 716.09 Support for claims........................................ 2163.01 Trade name................................................ 608.01(v) Trademark.................................................. 608.01(v) Utility...................................... 608.01(p), 706.03(a) Written (See also: Written description )........... 2163
Discourtesy........................................ 714.19, 714.25 Dismissal of appeal........................................ 1215.04 Disposals counted............................................... 1705 Distinct, definition............................................. 802.01 Distinct inventions.......... 802, 802.01, 803, 806.05
Apparatus and product made.................... 806.05(g) Distinct processes...................................... 806.05(j) Distinct products......................................... 806.05(j) Process and apparatus for its practice...... 806.05(e) Process and product made........................ 806.05(f)
Divisional application..................... 201.06, 601.01(a) Abandonment of prior nonprovisional application..... 201.06(c) Assignment carried from parent application....... 306 Change of attorney/correspondence address..... 201.06(c) Continued prosecution application (CPA)... 201.06(d) Copendency.............................................. 211.01(b) Design application........................ 201.06, 1504.20 Drawing, Transfer of.................................... 608.02(i) Effective date...................................................... 211 Examination............................................... 201.06(c) Extensions of time..................................... 201.06(c) Filed by assignee...................................... 324, 325 File wrapper continuation (FWC)............... 201.06(b) File wrapper/history notation............. 202, 1302.04 Incorporation by reference......................... 201.06(c) Inspection of parent application.......................... 103 Inventor, at least one in common................... 211.01 Inventorship............................................... 201.06(c)
New matter.................................................... 201.06 Oath............................................ 201.06(c), 602.05 Patented, Opens parent application to inspection..... 103 Reference to parent application..... 211.02, 1302.04 Reissue......................... 1414, 1440, 1450, 1451 Rule 1.53(b)............................................... 201.06(c) Rule 1.53(d).............................................. 201.06(d) Rule 1.60, Former..................................... 201.06(a) Rule 1.62, Former..................................... 201.06(b) Signature................................................... 201.06(d) Small or micro entity status....................... 201.06(c) Specification and drawings........................ 201.06(c) Substitute statement under 37 CFR 1.64... 201.06(c) Time for filing................................................. 211.03 Written description requirement..................... 211.05
DNA (See also: Biotechnology Nucleotide sequences )........................................................................... 2400
Enablement.................................................. 2164.08 Searching.................................................. 901.06(a) Sequence listing....................... 2422, 2424, 2431
Docket report....................................................... 1704 Doctrine of collateral estoppel (See also: Estoppel ) Doctrine of dedication to the public....................... 715 Doctrine of equivalents... 2138.05, 2173.05(b), 2186 Doctrine of segregable parts.......................... 1504.05 Doctrine of unclean hands................................... 2010 Document, Disclosure.......................................... 1706
Electronic (See also: Electronic publications )..... 707.05(e)
DoD Directive 5230.25.......................................... 120 DoD Security Agreement....................................... 120 Domestic representative................................... 302.04 Double correspondence........................................ 403 Double inclusion in claim............................ 2173.05(o) Double patenting................................................... 800
Avoiding rejection.. 706.02(k), 706.02(l)(3), 804.02 Basis................................................................... 804 Between one or more applications and a published application that has not been abandoned........... 804 Claimed subject matter.................................. 806.01 Commonly owned cases, treatment..... 717.02(c), 804.03 Copending applications................... 706.02(k), 804 Definition............................................................. 804 Design applications/patents............... 804, 1504.06 Different inventive entities........... 706.02(k), 804.03 Distinct and independent inventions.............. 804.01 Domination......................................................... 804
Index-26Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Disclosure — Double patenting
Sec. No.Sec. No.
International applications.................................... 804 Obviousness type (ODP).................................... 804
Design application................................... 1504.06 Plant applications............................................. 1601 Reexamination............................ 804, 2217, 2258 Rejection............................................................. 804
Nonstatutory................................................... 804 Obvious.......................................................... 804 Prohibition, 35 U.S.C. 121...... 804.01, 821.04(b) Provisional............ 706.02(k), 706.02(l)(3), 804 Specification, use of....................................... 804 Statutory.......................................... 804, 804.03
Rejection nullification..................................... 804.01 Restriction previously required.......... 804.04, 1003 Same assignee................. 706.02(k), 804.03, 822 Same inventor..... 806.04(h), 806.04(i), 806.05, 822 Species and genus.................. 806.04(h), 806.04(i) Subject matter not patentably distinct................. 804 Subject to joint research agreement.... 804, 804.02, 804.03 Submissions to TC director............................ 804.04 Terminal disclaimer effect..... 706.02(k), 804, 804.02, 1451, 1490
In a reissue application................................. 1451 Drawings................................................. 507, 608.02
Amendment.................... 608.02(p), 714, 1302.04 In ex parte reexamination....................... 2250.01 In inter partes reexamination.................. 2666.02 In reissue application.................................... 1413 Prior to publication of PG-Pub...................... 1121
Amendment, Disposition of orders for....... 608.02(x) Amendment support by claim present on filing date.... 608.04(a) Annotated sheets.................. 608.02(v), 608.02(w) Brief description......................................... 608.01(f) Canceled figure.......................................... 608.02(t) Canceled sheet.......................................... 608.02(t) Canceled sheet, patent.............................. 608.02(t) Canceled sheet, transfer............................ 608.02(i) Color........................... 608.01(f), 608.02, 1503.02 Colored plant.................................................... 1606 Complete illustration.................................. 608.02(d) Completeness........................................... 608.02(e) Computer lists................................................ 608.05 Consistency............................................... 608.02(e) Content of.................................................. 608.02(d) Correction (See also: Correction of drawing )..... 608.02(p), 1302.05
Incorporated into PG-Pub................ 1120, 1121 Reversed figure numbers........................ 1302.04
Design application..... 1503, 1503.01, 1503.02, 1504.04 Disclosure........................................................... 608 Divisional application................... 608.02, 608.02(i) EFS-Web....................................................... 502.05 Examiner determines completeness......... 608.02(e) Illustrates claim.......................................... 608.02(e) Informal............................................................... 507 International application.................................... 1825 Kept in application..................................... 608.02(c) Location..................................................... 608.02(c) Modification illustrated................................ 608.02(f) Marked-up copy.. 608.02(b), 608.02(v), 608.02(w) Necessary for filing date............ 506, 608.02, 702 New drawings required.............................. 608.02(a) New, handling............................................ 608.02(a) New matter................................. 608.04, 706.03(o) New, when required................................... 608.02(a) Not received.................................. 608.02(h), 1825 Not required................................................... 608.02 Not returned.............................................. 608.02(y) Objection..... 608.02, 608.02(a), 608.02(b), 608.02(d) to 608.02(f), 706.03(o), 1503.02, 1504.04 Official Gazette figure................................. 1302.09
Omitted drawings...................................... 601.01(g) Patented file.............................................. 901.01(a) Petition to transfer from another application..... 608.02(i) Photographs..... 502.05, 507, 608.01(f), 608.02, 1503.02 Plant application................................... 1603, 1606 Prior art......................................... 608.02(g), 2125 Provisional application........................................ 601 Reference characters................. 608.02, 608.02(e) Reference characters, change.................. 608.02(w) Reissue application.............................. 1411, 1413
No longer transferred from original patent..... 1413 Replacement drawings for publication in PG-Pub..... 1121 Replacement............................ 608.02(h), 1302.05 Reversed figure numbers............................. 1302.04 Review by Office of Patent Application Processing (OPAP)................................................................ 507 Required by examiner.................................... 608.02 Requirements................................................ 608.02 Return........................................................ 608.02(y)
Rev. 07.2015, October 2015Index-27
INDEX
Double patenting — Drawings
Sec. No.Sec. No.
Section lines.............................. 608.01, 608.02(w) Security markings............................................... 121 Substitute......................... 502, 608.02, 608.02(h) Sufficiency, determined by examiner......... 608.02(e) Symbols......................................................... 608.02 Trademarks....................................................... 1512 Unacceptable for publication...... 608.02, 608.02(b)
Drawing correction............................. 507, 608.02(p) Annotated sheets.................. 608.02(v), 608.02(w) Approval by examiner................................ 608.02(x) Marked-up copy.. 608.02(b), 608.02(v), 608.02(w) New matter.................................................... 608.04 Order for.................................................... 608.02(x) PG-Pub................................................. 1120, 1121 Replacement sheets...... 502, 608.02(h), 1302.05 Required.......................................... 507, 707.07(a)
Dual correspondence............................. 402.10, 403 Due Care Showing.............................................. 2734 Duplicate claims........................................... 706.03(k) Duplicate foreign patents.................................. 903.03 Duplicate papers for plant applications.... 1603, 1605, 1606, 1609 Duty of candor and good faith..... 2001, 2001.03, 2733, 2762
Compared to duty to disclose material information..... 2001.04 Information disclosure......................................... 609 Reexamination.................................................. 2280
Duty of disclosure................................................ 2000 After patent grant......................................... 2003.01 Aids to compliance........................................... 2004 Checklist........................................................... 2004 Compared to requirement for information. 704.12(a), 2005 Compliance with............................................... 2004 Continuing applications.................... 2001.04, 2004 Copending applications............... 2001.06(b), 2004 Copied claims.......................................... 2001.06(d) Duration of.................................. 2001.04, 2003.01 Foreign applications................................ 2001.06(a) Information material to patentability..... 2001.04, 2001.05 Litigation information............................... 2001.06(c) Questionnaire................................................... 2004 Reexamination
Ex parte .......................................... 2014, 2280 Inter partes ................................ 2003.01, 2684
Reissue application..... 1406, 1418, 1448, 2001.06(c), 2003
Sources of information................................. 2001.06 To whom owed............................................. 2001.03 Violation of........................................................ 2010
Claims invalidated........................................ 2016 Protest.......................................................... 2013 Reexamination............................................. 2014 Reissue........................................................ 2012 Rejection of claims in reissue application..... 1448
Who has...................................................... 2001.01
E
Easily erasable paper........................ 608.01, 714.07 Effective date of reference patent. 706.02, 706.02(a), 707.05(e), 715, 901.05(b) Effective filing date
Claimed invention........................................ 2152.01 Continuing application.......... 211.02, 706.02, 708 Continuation-in-part.................... 2133.01, 2159.02 Foreign priority effect..................................... 706.02 Internationalconvention (Seealso: Foreignapplication Treaties )........................................................ 213.01 Provisional application................................... 706.02 Publication................................................. 715.01(c)
Eighteen-month publication (See also: Pre-Grant Publication (PG-Pub) ) Election (See also: Restriction Election of species ).... 800
Action on nonelected claims............................... 819 After multiplicity rejection......................... 2173.05(n) After restriction................................................... 818 Between applications, Conflicting claims... 804, 822 Constructive........................... 818.02(a), 818.02(c)
In reissue application.................................... 1450 Fixed by action on merits........... 818.01, 818.02(a) Implied................................... 818.02(a), 818.02(c) Interference......................................................... 819 Optional cancellation................................. 818.02(c) Original presentation................................. 818.02(a) Shift.................................................................... 819 Treatment of nonelected claims..... 706.03(m), 821 to 821.03
In reissue application.................................... 1450 With traverse........................................ 818, 821.01 Without traverse............................................. 821.02
Index-28Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Drawings — Election
Sec. No.Sec. No.
Election of species Allowable generic claim lacking................. 809.02(a) Basis.......................................... 806.04, 808.01(a) Canceling species claims..... 818.02(c), 821.01, 821.02 Design application....................................... 1504.05 Implied................................... 818.02(a), 818.02(c) Reissue application.......................................... 1450 Requirement............................... 806.01, 809.02(a) Requirement, prior to search..................... 808.01(a) Species claims lacking............... 806.01, 818.02(b)
Electronic access to published applications........ 1128 Electronic databases (See also: PALM PAIR )..... 707.05(e), 719.05, 901.06(a), 902.03(e), 1730
Chemical abstracts services........... 901.05, 901.07 Derwent’s World Patents Index (WPI)..... 901.05, 901.07 Dialog............................................. 719.05, 901.07 e- Official Gazette – Patents (eOG:P).............. 1703 EAST.......................................... 719.05, 902.03(e) Full-text and full-page images of U.S. patent related databases......................................................... 1730 International Patent Documentation Center (INPADOC)..................................... 901.05, 901.07 Lexis-Nexis.................................................... 719.05 Official Gazette Notices .................................. 1703
Patent Grants Database....................... 1703, 1730 Questel-Orbit.................................. 719.05, 901.07 TESS (Trademark Electronic Search System).. 1703, 1730 WEST......................................... 719.05, 902.03(e)
Electronic Business Center (EBC)....................... 1730 Electronic document..................................... 707.05(e) Electronic filing system-Web (EFS-Web)..... 502.05, 503
Actions permitted by registered users........... 502.05 Actions permitted by unregistered users....... 502.05 Alternatives to using EFS-Web...................... 502.05
During unscheduled outages (EFS-Web Contingency Option).................................. 502.05
Certificate of Transmission.................................. 512 Document description codes......................... 502.05 Document formats......................................... 502.05 Electronic Acknowledgement Receipt........... 502.05 Ex parte reexamination request and follow-on papers................................................ 502.05, 2224 Inter partesreexamination request and follow-on
papers................................................ 502.05, 2624 Petition to accept unintentionally delayed payment of maintenance fee................................ 502.05, 2590
Pre-grant (eighteen month) publication submissions via...... 502.05, 1121, 1129, 1130, 1132, 1133 Reissue application and follow-on papers..... 502.05, 1410 Sequence listing submissions via..... 2421.01, 2422.03, 2422.03(a), 2422.04, 2422.07
Electronic funds transfer to replenish deposit account... 509.01 Electronic Information Disclosure Statement (e-IDS)..... 609.07 Electronic mail..... 502.03, 713, 713.01, 713.04, 713.05 Electronic patent assignment system (EPAS).. 302.10, 502.01, 502.05 Electronic Priority Document Exchange (See also: PDX )..................................................... 215.01, 215.02(a) Electronic Processing of Information Disclosure Statement......................................................... 609.08 Electronic publications
Availability as prior art....................................... 2128 Citation of.................................................. 707.05(e) Hyperlinks to.............................. 608.01, 608.01(p) Search for.................................................. 904.02(c)
Employee number..................... 711.04(b), 901.01(a) Employees of U.S. Patent and Trademark Office, property interest in patent...................................... 309 Enablement...................................... 706.03(c), 2164
Burden on the examiner.............................. 2164.04 Commensurate in scope with claims........... 2164.08
Critical feature not claimed.................. 2164.08(c) Inoperative subject matter................... 2164.08(b) Single means claim............................. 2164.08(a)
Compared to utility....................................... 2164.07 Design patent application........... 1503.02, 1504.04 Duty or disclosure of information relevant to..... 2001.04 Evidence of.................................................. 2164.05 Examples of enablement issues.................. 2164.06 Form paragraphs used to reject................ 706.03(c) Reduction to practice................................... 2164.02 Relationship of predictability........................ 2164.03 Specification must be enabling
As of the filing date............................. 2164.05(a) To persons of ordinary skill................. 2164.05(b)
Test of enablement...................................... 2164.01 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitations............................ 2181, 2185
Energy, Department of....................... 115, 706.03(b) Energy, related applications, special status...... 708.02 English language faulty, new specification.... 608.01(q)
Rev. 07.2015, October 2015Index-29
INDEX
Election of species — English language faulty, new specification
Sec. No.Sec. No.
English language required................. 302.02, 608.01 Enrollment and Discipline, Office of (See also: Office of Enrollment and Discipline ) Entity, micro, claiming status as (See also: Micro entity status ) Entity, small, claiming status as (See also: Small entity status ) Entry of amendment (See also: Amendment ). 714.18 Environmental Quality Program........................ 708.02 Equity (civil action)
Under 35 U.S.C. 145........................ 1216, 1216.02 Under 35 U.S.C. 146......................................... 1216
Equivalents in art......................... 904.01(b), 2144.06 Erasable (specially coated) paper.................... 608.01 Erasure in specification, before execution........ 608.01 Errors (See also: Correction of patent )
Correction of patents........................................ 1400 Deceptive intent..... 1401, 1412.02, 1412.03, 1412.04, 1414, 1414.02, 1414.03, 1444, 1448, 1451, 1457, 1481.02, 1490, 2022.05 Reissue.............................................. 1401 to 1470 Title documents.................................................. 323 Withdrawal from issue...................................... 1308
Essential material......................................... 608.01(p) Establishing right of assignee to take action in application................................................... 324, 325 Estoppel
Abandonment............................................ 711.03(c) Collateral...................................................... 2012.01
In ex parte reexamination............................ 2259 In inter partes reexamination....................... 2659
Defensive publications................................... 711.06 Different inventive entities and commonly owned applications.................................................... 804.03 Interference........................................ 715, 2138.01 Reasons for allowance................................. 1302.14 Reissue proceedings................................... 2012.01 Terminal disclaimer.............................. 804, 804.02
European Community Design treaty (See also: Treaties ) European Patent Convention (See also: Treaties ) European Patent Office (EPO)..... 120, 609, 901.05, 901.07, 1801, 1840, 1840.01, 1850, 1860, 1865, 2422.04
As a PCT Chapter I international searching authority. 1840.01
Evidence, of public use or on sale..... 2133.03 to 2133.03(b), 2152.02(c), 2152.02(d) Evidence submitted with protest..................... 1901.02
Examination guidelines for AIA 35 U.S.C. 102 and 103....................................................................... 2150 Examination guidelines for applying reference under pre-AIA 35 U.S.C. 102(e).......................... 706.02(f)(1) Examination of application..................................... 700
Accelerated Examination........................... 708.02(a) Confidentiality during.......................................... 101 Deferral of...................................... 709, 1002.02(d) Order of............................................ 708 to 708.03 Piecemeal................................................. 707.07(g) Purpose.............................................................. 701 Reissue..................................... 1440, 1443, 1445 Secrecy order application................................... 130 Statutory authority.............................................. 701 Suspension of..................................................... 709
Examiner Action.................................................................. 707 Action counted.................................................. 1705 Affidavit........................................................ 2144.03 Assignment of application for examination..... 903.08(b) Assignment of ex-parte reexamination............ 2236 Assignment of inter partes reexamination....... 2636 Assistant......................................... 707.01, 707.02 Citing prior art in an issued patent inappropriate..... 2203 Classification (See also: Classification examiner )..... 903 Disposals.......................................................... 1705 Duty of candor and good faith to.................. 2001.03 Employee number..... 711.04(b), 901.01(a), 905.05 Expressing opinion of validity........................... 1701 Name.................................. 502, 707.09, 1302.13 New action indicated by primary.................... 707.01 Previous action by another examiner
Allowed claims........................................... 706.04 Interview.................................................... 713.01 Search....................................................... 704.10
Primary Actions requiring personal attention..... 707.01, 714.16, 715.08, 1004 Name on file wrapper.............................. 1302.13
Pursuit of bounties prohibited........................... 1701 Reasons for allowance................................. 1302.14 Resigns, old cases special............................ 708.03 Suggestion of allowable claims.................. 707.07(j) Supervisory (See also: Supervisory patent examiner ) Telephoning attorney......................... 408, 1302.14
Index-30Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
English language required — Examiner
Sec. No.Sec. No.
Testimony as patent expert.......................... 1701.01 Time and Activity Report...................... 1704, 1705 Time reporting for ex parte reexamination....... 2238 Time reporting for inter partes reexamination... 2638 Treatment of protest..................................... 1901.06
Examiner docket, time, and activity recording..... 1704, 1705 Examiner Reissue Guide and Checklist.............. 1443 Examiner’s action (See also: Action Letter, Examiner’s )............................................................................. 707 Examiner’s amendment.................................. 1302.04
Abstract changed by..... 608.01(b), 1302.01, 1302.04 By initialing.................................................. 1302.04 Claim, antecedent basis in description...... 608.01(o) Claim lost in interference.................................. 2308 Claim, numbers identifying..... 1302.01, 1302.04(g) Claims, nonelected invention, canceled..... 821.01, 821.02 Defensive publication..................................... 711.06 Deposit account charge................... 1302.04, 1730 Drawing correction................... 608.02(w), 1302.04 Extension of time required for.................... 706.07(f) Formal matters............................ 1302.01, 1302.04 IFW applications.......................................... 1302.04 Informalities corrected................................. 1302.04 Non-compliant amendment, treatment of..... 714, 1302.04 No new matter........................................... 608.01(o) Plant patent application practice....................... 1610 Reexamination
Ex parte .......................................... 2281, 2287 Inter-partes
Canceling rejected claims........... 2671, 2687 Correcting formal matters...... 2687, 2687.01 In merged reissue/reexamination...... 2686.03 Not permitted if approval required..... 2687.01 To the Title............ 2660.02, 2686.03, 2687
Reference citation corrected..................... 707.05(g) Title of application.......................................... 606.01
Examiner’s Answer Appeal conference not held............. 1003, 1207.01 Counted as a disposal...................................... 1705 New ground of rejection............................... 1207.03 New interpretation of law............................. 1207.02
TC Director’s attention required.................... 1003 Reexamination
Ex parte ...................................................... 2275 Inter-partes ................................................. 2677
Reply brief........................................................ 1208 Special status................................................ 708.01
Examiner’s letter (See also: Action )..................... 707 Abandonment................................................ 711.02 Advisory action............................ 706.07(f), 714.13 Amendment after final rejection..................... 714.13 Arguments answered................................. 707.07(f) Cancellation of nonelected claim..... 821.01, 821.02 Claim allowable except as to form..... 707.07(a), 707.07(j), 710.02(b), 714.15 Claim summary.......................................... 707.07(i) Complete and clear....................................... 707.07 Copies of references................................. 707.05(a) Copy to applicant........................................... 707.12 Correction, period for reply......... 707.05(g), 710.06 Correction of citation................................. 707.05(g) Date stamped................................................ 707.11 Decisions, cited.............................................. 707.06 Election of species required, concluding paragraph.... 809.02(a) Examiner signature at end of letter................ 707.09 Examiner’s amendments........... 706.07(f), 1302.04 File wrapper entry........................... 707.10, 719.01 Final rejection, clearly stated......................... 706.07 Final rejection, concluding statement............ 706.07 Final rejection, patentability report............ 705.01(a) Formal matters..... 707.07(a), 707.07(e), 707.07(j), 714.02 Informal application........................................ 702.01 Initialed by examiner...................................... 707.08 Language in rejecting................................ 707.07(d) Mailing........................................................... 707.12 Memorandum cited........................................ 707.06 New drawing required............................... 608.02(b) New examiner, primary examiner indicates.... 707.01 Notices cited.................................................. 707.06 Numbering of paragraphs.......................... 707.07(k) Omnibus rejection..................................... 706.03(e) Orders cited................................................... 707.06 Outstanding requirements......................... 707.07(e) Personal matter excluded.......................... 707.07(d) Piecemeal prosecution.............................. 707.07(g) Power of attorney invalid or lacking.................... 402 Preliminary amendment in new case..... 709, 714.01(e) Primary examiner’s attention required, list........ 1004 References, citation.. 707.05 to 707.05(g), 901.04, 901.05(a)
Rev. 07.2015, October 2015Index-31
INDEX
Examiner — Examiner’s letter
Sec. No.Sec. No.
Refusing entry of amendment after Board decision.... 1214.07 Rejection of claim corresponding to claim of patent.... 2302 Remailing........................................ 707.13, 710.06 Requirement for information....... 704.10, 706.02(c) Restriction requirement............................ 803, 817 Returned........................................................ 707.13 Reviewed by examiner................................... 707.08 Shortened time for reply................................ 710.02 Signature....................... 707.09, 707.10, 1302.13 Statement of rejection............................... 707.07(d) Status letter reply........................................... 203.08 Statutory basis.......................................... 707.07(d) Summary.................................................... 707.07(i) Supplemental................................................. 710.06 Undelivered.................................................... 707.13
Examiner’s search facilities, use regulations......... 510 Example, Comments on................................ 707.07(l) Example, Operative..................... 608.01(p), 2164.02 Example, Prophetic, simulated or predicted.. 608.01(p) Excess number of claims for fee, after notice of allowance..................................................... 714.16(c) Excess number of claims over number of claims previously paid for......................... 714.01(e), 714.10 Excluded attorney or agent..... 105, 407, 713.05, 714.19 Execution of oath......................................... 602.08(b) Executive Order
No. 5464........................................................... 1608 No. 9424............................... 302, 302.06, 302.08 No 10,096...................................................... 509.02 No. 10,358..................................................... 710.05 No. 12,598...................................... 115, 120, 121 No. 13,292................................................ 115, 121
Executor or administrator............................. 409.01(b) Allowance and issue.................................. 409.01(b) Application by, after discharge................... 409.01(b) Assigned application, inventor dies........... 409.01(b) Authority.................................................... 409.01(b) Consular certificate......................... 409.01(b), 410 Foreign country......................................... 409.01(b) Heir......................... 409.01, 409.01(a), 409.01(b) Intervention not required........................... 409.01(b) Joint inventors, inventor dies..................... 409.01(b)
Exhibit............................................................... 608.03 Exhibit, Affidavit under 37 CFR 1.131..... 715.07, 715.07(d) Exhibit at interview............................................ 713.08
Exhibit, handling........................................... 608.03(a) Ex parte questions........................................... 713.06
Expedited Right of Appeal Notice....... 2671, 2673.02 Experimental use (See also: Public use )..... 2133.03, 2133.03(e), 2152.02(c), 2152.02(d)
Commercial exploitation..... 2133.03(e)(1), 2152.02(c), 2152.02(d) Completeness of the invention............ 2133.03(e)(3) Factors indicative of... 2133.03(e)(4), 2133.03(e)(5) Intent to experiment............................ 2133.03(e)(2) Reduction to practice.......................... 2133.03(e)(3) Testing by third party.. 2133.03(e)(5), 2133.03(e)(7) Testing, developmental....................... 2133.03(e)(6) When experimental use ends............. 2133.03(e)(3)
Expert testimony............................................. 1504.03 Expiration date of patent (See also: Term, Patent )
Adjustment under 35 U.S.C. 154..... 2710, 2720, 2730 Design............................................. 1502.01, 1505 Extension under 35 U.S.C. 156.......... 2750 to 2764 Plant................................................................. 2701 Utility................................................................. 2701
Export control of patent applications..................... 120 Exposure of papers during interviews..... 101, 713.07 Expounding patent law..................................... 713.02 Express abandonment............................ 711, 711.01
To avoid publication of application..... 711.01, 1125 Express Mail service (See also: Priority Express Mail service ) Expunge information in application file..... 724.05, 724.06, 1002.02(b), 1002.02(c), 2267, 2269 Extension of shortened reply period............ 710.02(e) Extension of time... 706.07(f), 710.02(e), 1002.02(c)
For filing brief..... 1203, 1205.01, 1206, 1208, 1215.04 For filing continuing application................. 201.06(c) General fee authorization.......................... 710.02(e) Reexamination
Ex parte ................................. 1002.02(c), 2265 Inter partes ............. 2648, 2665, 2672, 2682
Request................................ 710.02(e), 1002.02(c) Extension, patent term (See also: Term, Patent ) Extraordinary situations
Abandonment, revival................................ 711.03(c) Deferring issue............................................. 1306.01 Interview after issue....................................... 713.10 Reexamination, ex parte ..... 2227, 2265, 2274, 2283 Reply period reset......................................... 710.06
Index-32Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Examiner’s letter — Extraordinary situations
Sec. No.Sec. No.
Suspension of rules.......................................... 1002 Time to file................................................... 1205.01 Withdrawal from issue................................... 711.01
F
Facsimile transmission Assignment documents.................. 302.09, 502.01 Central Number................................... 502, 502.01 Correspondence............................................ 502.01 Declaration or oath........................................ 502.01 PCT international application..... 1805, 1834.01, 1865, 1893.01(a)(1) Maintenance fees............................................. 2510 Permitted types of correspondence............... 502.01 Prohibited types of correspondence.............. 502.01 Reexamination
Ex parte ...................................................... 2224 Inter partes ................................................. 2624
Secrecy order application, not permitted..... 120, 502.01 Supplemental examination............................... 2806
Federal Circuit (See also: Court of Appeals for the Federal Circuit (CAFC) ) Federal holiday
Abandonment date.................................... 711.03(c) Appeal brief..................................... 1205.01, 2274 Civil action........................................................ 1216 Continuity between applications................ 211.01(b) Effect on Mail Express Service........................... 513 Effect on reference.................................... 706.02(a) Filing date..... 502, 502.01, 502.05, 505, 512, 513 Foreign application copendency......................... 213 Foreign patent.................................. 2135, 2135.01 Maintenance fees................................. 2504, 2506 Papers not received.................................. 502, 503 Period for reply ending on.................... 505, 710.05 Prior art effective date............................... 706.02(a) Provisional application copendency............... 201.04 PTO business hours........................................... 510 Reply period.................................................. 710.05 Statutory bar..... 2133, 2152.02 , 2153.01 to 2153.02 Statutory period......................................... 710.01(a)
Unscheduled closings.................................... 213.03 Federal license rights............................................ 310 Federal Rules of Civil Procedure
Rule 8(b) cited.................................................... 410 Rule 11(b)
Cited................................................ 402.03, 410 Reproduced.................................................... 410
Fee (See also: Refunds ) Address............................................................ 2540 Appeal.............................................................. 1204 Appeal forwarding fee.................................. 1208.01 Assignment recording.................................... 302.06 Credit card payment of..................... 509, 706.07(f) Current amounts available on USPTO Web site..... 509, 1730 Document size............................................. 2810.01 Electronic copy of sequence listing................... 2435 Examiner’s amendment.............................. 706.07(f) Extensions of time...................................... 706.07(f) Filing......................................................... 509, 607
Claims in excess of........................................ 607 Dependent claims................................. 608.01(n) Deposit account......................................... 509.01 Inadequate..................................................... 509 International application....... 1805, 1810, 1827
Basic national fee for national stage entry..... 502.01, 502.05, 509.03, 512, 1834.01, 1893.01(a), 1893.01(a)(1), 1893.01(c), 1893.02
Micro entity status..................................... 509.04 Non-electronic................................................ 607 Nonprovisional application.................... 601.01(a) Provisional application.......................... 601.01(b) Reduction for micro entities....................... 509.04 Reduction for small entities....................... 509.02 Reexamination
Ex parte ................................................ 2215 Reissue........................................................ 1415 Return Postcard Receipt................. 503, 607.02 Small entity................................................ 509.03
Issue (See also: Issue fee ) Maintenance (See also: Maintenance fees ) Payment.............................................................. 509
by EFS-Web.............................................. 502.05 Petition to revive........................................ 711.03(c) Publication fee..... 1126, 1133, 1303, 1306, 1306.03 Reduction for micro entities........................... 509.04 Reduction for small entities............................ 509.02
Rev. 07.2015, October 2015Index-33
INDEX
Extraordinary situations — Fee
Sec. No.Sec. No.
Supplemental examination.......................... 2810.01 Field of search......... 904, 904.02, 904.02(a), 1701
Notation in file...................................... 719.05, 904 Field of search, notation by examiner..... 705.01(a), 719.05, 904, 904.02(a) Figures (See also: Drawings ) File Information Unit (Record Room)..... 102, 103, 711.03(d), 711.06, 1730 File wrapper/history (See also: Image File Wrapper (IFW) )................................................................... 719
Action entered............................................... 707.10 Allowed case data entered.......................... 1302.09 Amendment endorsed................................... 710.05 Assignment endorsement................................... 303 Civil action disposition................................. 1216.02 Classification data......................................... 719.03 Classification history...................................... 719.03 Completeness................................................ 724.01 Continuation, Former Rule 1.62 (FWC)
Public access................................................. 103 Restriction...................................................... 819
Data entered on............................ 710.05, 1302.09 Field of search............................................... 719.05 Field of search, patentability report........... 705.01(a) Foreign application cross-noting.... 202, 1893.03(c), 1895.01 Foreign filing date entered on....... 719.06, 1302.06 Index of claims............................................... 719.04 Licensing and Review stamp.............................. 140 Notes to application of another party.................. 101 Papers in........................................................ 719.01 Parent application notation on........... 202, 1302.09 Printout of search history............................... 719.05 Relation of application noted on......................... 202 Residence changed....................................... 719.02 Return of paper entered on........................... 719.01 “Searched” box entries.................................. 719.05 “Searched notes” box entries......................... 719.05 Signing by primary examiner....................... 1302.13 Statutory period ends on nonworking day..... 710.05
Files Repository........................................... 711.04(b) Filing date..... 201.06(c), 502, 503, 505, 506, 506.02
Continued prosecution application (CPA)... 201.06(d) Effective, prior application..... 211.02, 706.02, 2133.01, 2152.01, 2154.01(b) EFS-Web....................................................... 502.05 Foreign application, Convention date (See also: Foreign application )...................................... 214.03
International application.................................... 1810 Later filed application as disclosure.......... 608.01(p) Patent Cooperation Treaty (PCT)...................... 1810 Petition..... 506.02, 513, 601.01(b), 601.01(c), 601.01(f), 601.01(g) Priority Express Mailing date............... 506.02, 513 Refusal to accord........................................... 506.02 Review of refusal to accord........................... 506.02 Subsequent publication as disclosure....... 608.01(p)
Filing date of reexamination request Ex parte .............................................. 2214, 2215
Filing date of request for supplemenatal examination.... 2812.01 Filing fee (See also: Fee Refunds ).................... 607
Continued prosecution application (CPA)... 201.06(d) Of a reissue application................................ 1415
Deposit account............................................. 509.01 Inadequate.......................................................... 509 Reduction for micro entity.............................. 509.04 Reduction for small entities............................ 509.02 Reexamination
Ex parte ...................................................... 2215 Reissue application.......................................... 1415 Return.................................................. 503, 607.02
Filing receipt (See also: Postcard, self-addressed )..... 503 Final action (See also: Final rejection ) Final Board decision in inter partes reexamination..... 2681, 2682 Final data capture................................................ 1309 Final rejection................................................... 706.07
Amendment after............................ 714.12, 714.13 Amendment after, entered in part.................. 714.20 First action................................................. 706.07(b) Interview........................................................ 713.09 Letter............................................................. 706.07 Patentability report.................................... 705.01(a) Petition to vacate..................................... 1002.02(c) Premature.................................................. 706.07(c) Premature, Withdrawal of.......................... 706.07(d) Primary examiner’s attention required.............. 1004 Request for continued examination (RCE)..... 706.07(h) Reexamination, ex parte ................................. 2271 Reexamination, inter partes (See also: Action:Closing Prosecution in inter partes reexamination ) Secrecy order application................................... 130 Special........................................................... 708.01 Time for reply............................................. 706.07(f)
Index-34Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Fee — Final rejection
Sec. No.Sec. No.
Transitional procedure............................... 706.07(g) When proper........... 706.07, 706.07(a), 706.07(b) Withdrawal................................................. 706.07(e) Withdrawal, Primary examiner’s attention..... 1004, 1005 Withdrawal of premature........................... 706.07(d)
First action final rejection............................. 706.07(b) In an RCE.............................. 706.07(b), 706.07(h)
First inventor to file provisions of the Leahy Smith America Invents Act (AIA)
Affidavits or declarations under 37 CFR 1.130..... 717.01 to 717.01(f), 2155
Claiming same invention....................... 717.01(d) Enablement............................................. 2155.04 Evaluation of..... 717.01(a)(1), 717.01(b)(1), 717.01(e) Formal requirements............................. 717.01(c) Showing disclosure was made by inventor..... 717.01(a), 2155.01 Showing prior disclosure of subject matter by inventor................................ 717.01(b), 2155.02 Showing disclosure was subject matter obtained from inventor.................... 717.01(b)(2), 2155.03 When available......................... 717.01, 2155.06 When not required..................................... 717.01 When unavailable..................... 717.01, 2155.06 Who may file........................ 717.01(c), 2155.05
Determining whether application is subject to first inventor to file provisions
Applications filed before March 16, 2013..... 2159.01 Applications filed on or after March 16, 2013..... 2159.02 Applications subject to both pre-AIA 35 U.S.C. 102(g) and AIA 35 U.S.C. 102 and 103.... 2159.03 Transition application............................... 2159.04
Effective filing date of claimed invention...... 2152.01 Improper naming of inventors........................... 2157 Joint research agreements............................... 2156 Prior art
Under AIA 35 U.S.C. 102(a)(1)..... 2152.02 to 2152.04 Under AIA 35 U.S.C. 102(a)(2)..... 2154 to 2154.01(c) Under AIA 35 U.S.C. 102(d)................ 2154.01(b) Under AIA 35 U.S.C. 103.............................. 2158
Prior art excpetions under AIA 35 U.S.C. 102..... 717 to 717.02(d), 2153, 2154.02 to 2154.02(c), 2156
Commonly owned or under obligation of assignment......... 717 to 717.02(d), 2154.02(c)
Grace period inventor or inventor-originated disclosure..... 717 to 717.01(f), 2153.01, 2153.02, 2154.02 to 2154.02(b) Joint Research Agreements......................... 2156
Overview........................................................... 2151 First Office action form.......................................... 707 First action on the merits (FAOM) (See also: Letter, Examiner’s ) Five year pendency........................... 707.02, 708.01 Flowchart for
Effective date under pre-AIA 35 U.S.C. 102(e)..... 706.02(f)(1) Examination of computer-related inventions..... 2106 Genus-Species guidelines........................... 2144.08 Determining the Meaning of a claim term not invoking 112(f)........................................................... 2111.01 Reexamination provisions, ex parte ................ 2201 Reexamination provisions, inter partes ...... 2601.01 Reformed PCT System..................................... 1842 Supplemental examination............................... 2801 Transitional after-final procedures (37 CFR 1.129(a)).................................................... 706.07(g) Treatment of applications having conflicting claims..... 804
Flow sheet........................................................ 608.02 FOIA (See also: Freedom of Information Act (FOIA) ) Font, type.................................... 608.01, 1504.01(a) Foreclosure (See also: Assignment: Security interests ) Foreign application (See also: International application )
As prior art......................................... 706.02, 2127 Certificate of correction to perfect priority..... 216.01, 1481, 1481.03 Certified copy to avoid reference..... 213, 706.02(b)(1), 706.02(b)(2) Certified copy not filed............................. 214.03(VI) Cross-noting on file wrapper/history................... 202 Date entitled to................................................... 213 Design patents............................ 1504.02, 1504.10 Determination of priority........................... 213, 216 Disclosure........................................................... 216 Duty of disclosure of information cited..... 2001.06(a) English language translation for benefit of date..... 213, 213.06, 216, 706.02(b)(1), 706.02(b)(2) Ex parte reexamination to perfect priority.... 2258.02 Filed more than a year before U.S. application... 213, 214.03 Filing in foreign country...................................... 140 First................................................................ 213.03
Rev. 07.2015, October 2015Index-35
INDEX
Final rejection — Foreign application
Sec. No.Sec. No.
Great Britain........................................ 213.03, 216 Identification.................................................. 214.04 Incorporation by reference in U.S. application..... 217 Inter partes reexamination to perfect priority.... 2658 License to file.................................. 140, 706.03(s) Listed on oath/declaration.................... 213.02, 214 No claim for priority........................................ 214.02 No reference made in declaration.................. 214.03 Notice to Office after nonpublication request..... 1124 Noting earliest date in file history/wrapper.......... 202 Ordering copies......................................... 901.05(c) Overcoming reference which is................ 216, 715 Prior art cited in related........................... 2001.06(a) Priority................................................................ 213 Papers not filed.............................................. 214.03 Petition for unintentionally delayed claim for priority.... 214.02, 215.02, 1002.02(b), 1402, 2258.02, 2658 Priority document in parent application..... 214.03, 215 Reissue application claiming foreign priority..... 1402, 1417 Ribboned....................................................... 608.01 Same invention................................................... 213 Seal.................................................................... 602 Statutory bar............................. 706.02(e), 2135.01 Time limits to submission..................... 213.06, 214
Certificate of correction............................. 216.01 Reissue................................. 214, 215, 216.01
Translation required.... 213, 213.04, 213.06, 214, 215.03, 216, 217
Foreign countries recognized for priority.......... 213.01 Foreign executed oath...................................... 602.04 Foreign filing, Proving priority... 213.02, 214, 706.02 Foreign filing date
Entitled to............................................................ 216 On file wrapper/history........................................ 202
Foreign filing license.................................... 115, 140 For PCT.................................................. 115, 1832
Foreign language Application.................................. 608.01, 609.04(a) Oath or declaration........................................ 602.06
Foreign patent Art collection.................................................. 901.07 Citation................................... 707.05(e), 901.05(a) Citation dates and information..... 901.05(a), 901.05(b), 1851 Classification....................................... 903, 903.03 Country codes.................................................. 1851
Database search....................................... 706.02(e) Document citation, in PCT................................ 1851 Duplicates...................................................... 903.03 Effective date............................................. 901.05(b) Family of (INPADOC)................................. 901.06(a) In prior art statement........................... 609, 609.01 Individual country overview........................... 901.05 Journals..................................................... 901.06(a) Law overview................................................. 901.05 Library....................................................... 901.06(a) Listing at allowance..................................... 1302.12 Oppositions.................................................... 901.05 Ordering copies......................................... 901.05(c) Print of, where obtained............................. 901.05(c) Reference....................................... 706.02, 901.05 Transfer.......................................................... 903.05 Translation of.............................. 706.02, 901.05(d) Unlicensed, same applicant...................... 706.03(s)
Foreign priority (See also: Foreign application ).... 210 to 217
Design patent applications..... 213, 1504.02, 1504.10 U.S. effective filing date computed..... 213.01, 706.02, 2136.03, 2154.01(a), 2154.01(b)
Formal matter Allowance and issue... 1302.01, 1302.02, 1302.04 Amendment of application in issue................ 714.16 Claim allowable except for................ 706, 707.07(j) Review of action involving........................................... Right of priority
Prior foreign application..... 210 to 217, 1402, 1417 Prior U.S. application................ 210, 211, 1405
Specification format....................................... 608.01 When taken up..... 707.07(a), 707.07(e), 707.07(j), 714.02
Former employee restrictions.............................. 1702 Form letters and forms
Abandonment............................................ 711.04(c) Action Closing Prosecution PTOL-2065..... 2671.02, 2696 Advisory Action........................... 706.07(f), 714.13 Advisory Action – Ex-parte Reexamination PTOL-467..... 2250, 2265, 2266.01, 2266.02, 2266.03, 2272, 2296 Allowability................................................... 1302.03 Amendment received after allowance..... 608.02(z), 714.16(d), 714.16(e)
Index-36Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Foreign application — Form letters and forms
Sec. No.Sec. No.
Amendment after Board decision, refused entry..... 1214.07 Amendment not fully responsive.................... 714.03 Amendment unsigned............................... 714.01(a) Certification of Micro Entity Status (Gross Income Basis) PTO/SB/15A .................................. 509.04(a) Certification of Micro Entity Status (Institution of Higher Education Basis) ...................................... 509.04(b) Certificate of Correction form PTO/SB/44 or PTO 1050...................................................... 1480, 1485 Certificate under 37 CFR 3.73(b) PTO/SB/96..... 324 Certificate under 37 CFR 3.73(b) PTO/AIA/96.... 325 Change of Correspondence Address, Application PTO/SB/122............................................ 403, 2542 Change of Correspondence Address, Patent PTO/SB/123............................................ 403, 2542 Cover sheet, assignment document.............. 302.07 Cover sheet, provisional application
Cited................................................ 201.04, 601 Reproduced............................................... 201.04
Credit Card Payment Form PTO-2038 Cited...................... 509, 1302.04, 1306, 2510 Reproduced.................................................... 509
D-10................................................... 130, 1304.01 DD Form 441...................................................... 120 Death of Attorney, Application ready for allowance..... 406 Declaration for Plant Patent Application PTO/AIA/09.. 1604 Declaration for Utility or Design Patent Application PTO/SB/01................................................ 602.01(b) Declaration for Utility or Design Patent Application PTO/SB/01A.............................................. 602.01(b) EFS-Web....................................................... 502.05 Election of species.................................... 809.02(a) Examiner Checklist – Reexamination PTOL-1516..... 2287, 2295, 2296, 2687, 2696 Examiner’s action PTOL-326.............................. 707 Examiner’s answer............................................ 1207 Examiner’s Biweekly Time Worksheet PTO-690E..... 2638 Fee Address Indication PTO/SB/47
Cited................................................. 2540, 2595 Reproduced.................................................. 2595
Final rejection................................................ 706.07 For Design Applications Only: Continued Prosecution Application (CPA) Request Transmittal PTO/SB/29..... 201.06(d) For Design Applications Only: Receipt For Facsimile Transmitted CPA PTO/SB/29A.................. 201.06(d)
45-day Letter....................................................... 150 General Office Action, Ex Parte Reexamination PTOL-466............................................. 2262, 2296 General(Ex-Parte)ReexamCommunicationPTOL-473 (with SSP)............................ 2250, 2266.03, 2296 Incorrect citation of references, Correction..... 707.05(g) Information disclosure statement (IDS) PTO/SB/08
Cited..... 609, 609.02, 609.03, 609.04(a), 609.05(a), 609.05(b), 609.05(c), 609.06, 609.07, 609.08, 1893.03(g), 1901.03, 2001.04, 2003, 2004, 2214, 2246, 2256, 2257, 2258.01, 2287 Reproduced.................................................... 609
Interference Initial Memorandum..... 2302, 2304.02, 2304.04(a) Interfering Subject Matter, Secrecy order applications....................................................... 2306 International application transmittal (PTO-1382)..... 1830 InterPartesReexaminationCommunication(WithSSP) PTOL-2071....................................................... 2696 Inter PartesReexamination Communication (Without
SSP) PTOL-2072.............................................. 2696 Inter PartesReexamination Notification Re Appeal
PTOL-2067............................... 2662, 2674, 2696 Inter PartesReexamination Transmittal PTOL-2070.... 2646, 2647, 2647.02, 2670, 2677, 2696 Interview Request, Applicant Initiated PTOL-413A..... 713.01, 713.04 Interview Summary, Examiner Initiated PTOL-413B... 713.04, 714.13 Interview Summary PTOL-474, Reexamination..... 2281, 2296 Issue Classification Slip (Blue slip) PTO-328, PTO-270
Cited............................................................. 1611 Issue Classification, Designs PTO-328..... 903.07, 907 Issue Classification Form/Sheet/Slip... 903.07, 907, 1302.09, 1302.10, 1302.13, 2287
Digests...................................................... 903.07 Issue Fee Transmittal PTOL-85B.... 307, 308, 324, 325, 512, 605.01, 1306.01, 1306.02, 1309, 1481.01 Maintenance Fee Transmittal PTO/SB/45
Cited................................................. 2515, 2595 Reproduced.................................................. 2595
Nonpublication Request Under 35 USC 122(b)(2)(B)(i) PTO/SB/35
Cited..................................... 1121, 1122, 1135 Reproduced.................................................. 1135
Rev. 07.2015, October 2015Index-37
INDEX
Form letters and forms — Form letters and forms
Sec. No.Sec. No.
Notice of Abandonment PTOL-1432..... 711.02, 711.04(c) Notice of Abandonment under 37 CFR 1.53(f) (CPA) For Design Applications PTO-2019........... 201.06(d) Notice of Allowability PTOL-37... 601.01(a), 602.03, 608.02(b), 608.02(z), 609.05(b), 710.02(e), 714.13, 812.01, 1302.03, 1302.04, 1455 Notice of Allowance and Issue Fee Due PTOL-85..... 115, 203.08, 509.03, 605.01, 710.02(e), 711.01, 711.03(c), 714.15, 714.16, 714.16(a), 714.16(d), 1126, 1303, 1303.03, 1304.01, 1305, 1306, 1306.02, 1306.03, 1308.01, 1308.03, 1309, 1512, 2001.04, 2406, 2411, 2411.03, 2575
Undelivered............................................. 1303.02 Notice of allowance, Secrecy order applications D-10....................................... 130, 1304, 1304.01 Notice of Appeal from the Examiner to the Patent Trial and Appeal Board PTO/SB/31.......................... 1204 Notice of Defective Paper – Ex Parte Reexamination PTOL-475..... 2250, 2266.02, 2266.03, 2272, 2273, 2295, 2296 Notice of Defective Paper – Inter Partes Reexamination PTOL-2069..... 2666, 2666.01, 2666.04, 2666.06, 2666.50, 2666.60, 2696 Notice of Failure to Comply with Ex Partes Reexamination Request Filing Requirements PTOL-2077........................................... 2218, 2227 Notice of Improper CPA (or FWC) Filing For Utility or PlantApplicationsFiledBeforeJune8,1995PTO-2011 Reproduced............................................... 201.06(d) Notice of Improper CPA For Design Applications PTO-2012 Reproduced............................. 201.06(d) Noticeof ImproperRequest forContinuedExamination (RCE) PTO-2051................... 201.06(d), 706.07(h) Notice of Incomplete Nonprovisional Application..... 506, 601.01(d), 601.01(e), 601.01(f), 601.01(g), 2731, 2732 Notice of Incomplete Reply (CPA) for Design Applications PTO-2018 Reproduced......... 201.06(d) Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) PTOL-469..... 2234, 2250, 2250.01, 2256, 2262, 2266, 2273, 2274, 2283, 2285, 2287, 2287.01, 2288, 2296 Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) PTOL-2068.............. 2687, 2696 Notice of Non-Acceptance of Patent Maintenance Fee, PTO-2142......................................................... 2531 Notice of Non-Acceptance of Small Entity Patent Maintenance Fee, PTO-2140................ 2531, 2550 Notice of Non-Compliant Amendment..... 714, 714.01(e), 714.03 Notice of Non-Compliant Supplemental Examination Request....................................................... 2812.01
Notice of Non-Recordation............................ 302.09 NoticeofOmitted Items inaNonprovisionalApplication PTO-1669..... 201.06(c), 601.01(d), 601.01(g), 2731, 2732 Notice of Overpayment of Patent Maintenance Fee, PTO-211........................................................... 2550 Notice of Recordation.................................... 302.09 Notice of References Cited PTO-892..... 608.01, 609.02, 609.03, 609.04(a), 609.05(a), 609.05(c), 609.06, 707, 707.05(a), 707.05(c), 707.05(d), 707.05(e), 2246, 2257, 2646, 2657, 2687 Notice of Special Acceptance of Patent Maintenance Fee, PTO-2143................................................. 2530 Notice of Withdrawal from Issue under 37 CFR 1.313(b)............................................................ 1308 Notice re Appeal and re Defective Brief – Ex Parte Reexamination PTOL-468........ 2273, 2274, 2296 Notice to Comply With Requirements
Applications For Patent Containing Nucleotide Sequence and/or Amino Acid Sequence Disclosures...................... 2421.03, 2731, 2732
Notice To File Missing Parts of Application..... 601.01(a), 601.01(c), 602.05(b), 607, 710.02(d), 2731, 2732
CPA for Design Applications PTO-2021 Reproduced.......................................... 201.06(d)
Notice Requiring Inventor’s Oath or Declaration, PTOL-2306................................................ 710.02(e) Notification of Non-Compliant Brief (use of PTOL-462 discontinued)............................................... 1205.03 Office Action – Ex Parte Reexamination PTOL-466... 2262, 2296 Office Action - Inter Partes Reexamination PTOL-2064
Cited............... 2647.02, 2660, 2671.01, 2696 Reproduced.................................................. 2660
Office Action Summary PTOL-326............ 608.02(h) Order Granting/Denying Request for Ex-parte Reexamination PTOL-471.................... 2247, 2296
Reproduced............................................. 2247.01 Order Granting/Denying Request for Inter Partes Reexamination PTOL 2063
Cited............................................ 2646, 2647.02 Reproduced............................................. 2647.01
PCT forms (See also: Patent Cooperation Treaty (PCT) ) Petition for express abandonment to Avoid Publication under 37 CFR 1.138(c) Reproduced................ 1135 Petition for Revival of an Application
For Application Abandoned for Failure to Notify the Office of a Foreign or International Filing PTO/SB/64a
Index-38Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Form letters and forms — Form letters and forms
Sec. No.Sec. No.
Cited........................ 711.03(c), 1124, 1135 Reproduced......................... 711.03(c), 1135
For Application international application abandoned Unintentionally PTO/SB/64/PCT........... 711.03(c) For Application Abandoned Unintentionally PTO/SB/64............................................ 711.03(c)
Plant Patent Application (35 U.S.C. 161) Declaration (37 CFR 1.63) PTO/SB/03................................ 1604 Power of Attorney
For applications filed before 09/16/2012 Power of Attorney or Revocation of Power of
Attorney With a New Power of Attorney and ChangeofCorrespondenceAddressPTO/SB/81 ........................................................ 402.05(b) Power of Attorney to Prosecute Applications before the USPTO PTO/SB/80............ 402.07
For applications filed after 09/16/2012 Power of Attorney to Prosecute Applications before the USPTO PTO/SB/80........ 402.02(a) Transmittal for Power of Attorney to One or More Registered Practitioners PTO/AIA/82 ..... 402.02(a)
Provisional application for patent Cover sheet PTO/SB/16..................................................... 201.04 PTO-211........................................................... 2550 PTO-270 (Blue Slip)....................................... 903.07 PTO-328........................................................ 903.07 PTO-447A........... 903.08(a), 903.08(d), 903.08(e) PTO-690E.......................................... 903.03, 2638 PTO-850
Cited.. 1002.02(d), 2302, 2304.02, 2304.04(a) Reproduced.................................................. 2302
PTO-892 Cited..... 608.01, 609.02, 609.03, 609.04(a), 609.05(a), 609.05(c), 609.06, 707, 707.05, 707.05(a), 707.05(c), 707.05(d), 707.05(e), 707.05(g), 901.06, 1302.04, 1302.12, 1406, 1901.06, 2246, 2257, 2646, 2657, 2687 Reproduced.......................................... 707.05(a)
PTO-1050............................ 1480, 1480.01, 1485 PTO-1382............................................. 1830, 1832 PTO-1516................................. 2287, 2295, 2296 PTO-1517................................. 2287, 2295, 2296 PTO-1595...................................................... 302.07 PTO-2011.................................................. 201.06(d) PTO-2038
Cited...................... 509, 1302.04, 1306, 2510 Reproduced.................................................... 509
PTO-2051.................................................. 706.07(h) PTO-2142......................................................... 2531
PTO-2143......................................................... 2530 PTO-2293......................................................... 2296 PTO-2302.................................................... 2818.01 PTO-2311..... 2250.03, 2266.02, 2272, 2273, 2295, 2296 PTO/SB/08A and 08B..... 608.01, 609, 609.02, 609.03, 609.04(a), 609.05(a), 609.05(b), 609.05(c), 609.06, 609.07, 609.08, 707.05(d), 1406, 1901.03, 1901.06, 2214, 2246, 2256, 2257, 2258.01, 2287, 2646, 2657, 2687
Reproduced.................................................... 609 PTOL-37
Cited..... 203.08, 601.01(a), 608.02(b), 608.02(z), 609.05(b), 707.05(g), 710.02(e), 714.13, 812.01, 1302.03, 1302.04, 1302.12, 1302.14 Reproduced............................................. 1302.03
PTOL-85 Cited..... 203.08, 1303, 1306, 1306.02, 1308, 1308.03 Reproduced.................................................. 1303
PTOL-85B Cited..... 307, 308, 324, 325, 509.03, 512, 605.01, 1303, 1306, 1306.01, 1306.02, 1309, 1481.01 Reproduced.................................................. 1303
PTOL-85C Reproduced.................................... 1303 PTOL-90..... 608.02, 608.02(b), 609.04(b), 707, 714.16, 1207.05, 1208, 1209, 1210 PTO-271.......................................... 714, 714.16(d) PTOL-303................. 706.07(f), 711.03(c), 714.13 PTOL-324........................................................... 714 PTOL-326
Cited.... 214.03, 215, 608.02(h), 706.07, 707, 710.02(b), 812.01 Reproduced.................................................... 707
PTOL-404......................................................... 1485 PTOL-413A..................................... 713.01, 713.04 PTOL-413B..................................... 713.04, 714.13 PTOL-461.................................................... 1215.04 PTOL-462 (discontinued)............................. 1205.03 PTOL-462R (discontinued)............................... 2274 PTOL-465..................... 2246, 2262, 2264, 2296 PTOL-466............................................. 2262, 2296 PTOL-467..... 2250, 2265, 2266.01, 2266.02, 2266.03, 2272, 2296 PTOL-467A...................................... 2266.02, 2296 PTOL-468................................. 2273, 2274, 2296 PTOL-469.... 2234, 2250, 2250.01, 2256, 2262, 2273, 2274, 2283, 2285, 2287, 2288, 2296
Rev. 07.2015, October 2015Index-39
INDEX
Form letters and forms — Form letters and forms
Sec. No.Sec. No.
PTOL-471........................................ 2247.01, 2296 PTOL-473............................ 2250, 2266.03, 2296 PTOL-474............................................. 2281, 2296 PTOL-475..... 2250, 2266.02, 2266.03, 2272, 2273, 2295, 2296 PTOL-476................................. 2296, 2687, 2696 PTOL-1432................................. 711.02, 711.04(c) PTOL-1516....... 2287, 2296, 2687, 2695, 2696 PTOL-1517....... 2287, 2295, 2296, 2687, 2696 PTOL-2063
Cited........................... 2646, 2647.01, 2647.02 Reproduced............................................. 2647.01
PTOL-2064 Cited............... 2647.02, 2660, 2671.01, 2696 Reproduced.................................................. 2660
PTOL-2065...................................... 2671.02, 2696 PTOL-2066...................................... 2673.02, 2696 PTOL-2067............................... 2662, 2674, 2696 PTOL-2068........................................... 2687, 2696 PTOL-2069
Cited..... 2666, 2666.01, 2666.04, 2666.06, 2666.50, 2666.60, 2696 Reproduced............................................. 2666.50
PTOL 2070.. 2647, 2647.02, 2664, 2670, 2677, 2686.01, 2696 PTOL-2071...................................... 2666.06, 2696 PTOL-2072....................................................... 2696
PTOL-2073.............................................. 2674, 2696 PTOL-2077.............................................. 2218, 2227 PTOL-2306................................................... 710.02(e) PTO/AIA/05
Cited............................... 1410.01, 1414, 1414.01 Reproduced................................................. 1414.01
PTO/AIA/06 Cited............................... 1410.01, 1414, 1414.01 Reproduced................................................. 1414.01
PTO/AIA/14................ 402.02(a), 601.05, 601.05(a) PTO/AIA/25.......................................................... 1490 PTO/AIA/26.......................................................... 1490 PTO/AIA/50
Cited........................ 1410, 1410.02, 1415, 1451 Reproduced...................................................... 1410
PTO/AIA/80.................................................. 402.02(a) PTO/AIA/81B (reproduced)...................... 2222, 2622 PTO/AIA/82...................................... 402.02(a), 2223 PTO/AIA/83........................................... 402.06, 2223 PTO/AIA/96........................................ 325, 402.02(a) PTO/SB/01 Reproduced............................... 602.01(b)
PTO/SB/01A Reproduced............................ 602.01(b) PTO/SB/03........................................................ 1604 PTO/SB/08... 608.01, 609.02, 609.03, 609.04(a), 609.05(a), 609.05(b), 609.06, 609.08, 707.05(d), 1302.12 PTO/SB/08A
Cited..... 609, 609.03, 609.04(a), 609.05(a), 609.05(b), 609.05(c), 609.06, 609.07, 2214, 2246, 2256, 2257, 2258.01, 2287, 2646, 2657, 2687 Reproduced.................................................... 609
PTO/SB/08B Cited..... 609, 609.03, 609.04(a), 609.05(a), 609.05(b), 609.05(c), 609.06, 609.07, 2214, 2246, 2256, 2257, 2258.01, 2287, 2290, 2646, 2657, 2687 Reproduced.................................................... 609
PTO/SB/14..................................................... 601.05 PTO/SB/15A.............................................. 509.04(a) PTO/SB/15B.............................................. 509.04(b) PTO/SB/16..................................................... 201.04 PTO/SB/24 reproduced................................. 711.01 PTO/SB/24A
Cited.................................. 711.01, 1125, 1135 Reproduced................................... 711.01, 1135
PTO/SB/24B reproduced............................... 711.01 PTO/SB/25........................................................ 1490 PTO/SB/26........................................................ 1490 PTO/SB/27................................................... 1504.30 PTO/SB/29
Cited............................................ 201.06(d), 709 PTO/SB/29A Reproduced......................... 201.06(d) PTO/SB/30 Reproduced............................ 706.07(h) PTO/SB/31........................................................ 1204 PTO/SB/35
Cited................................................. 1122, 1135 Reproduced.................................................. 1135
PTO/SB/36 Cited..................................... 1123, 1124, 1135 Reproduced.................................................. 1135
PTO/SB/37.......................................................... 709 PTO/SB/42... 2214, 2246, 2257, 2258.01, 2287, 2646, 2657, 2687 PTO/SB/44
Cited............. 602.01(c), 1480, 1480.01, 1485 Reproduced.................................................. 1485
PTO/SB/45 Cited................................................. 2515, 2595 Reproduced.................................................. 2595
Index-40Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Form letters and forms — PTO/SB/01A Reproduced
Sec. No.Sec. No.
PTO/SB/47 Cited................................................. 2540, 2595 Reproduced.................................................. 2595
PTO/SB/51 Cited............................................ 1410.01, 1414
PTO/SB/52 Cited............................................ 1410.01, 1414
PTO/SB/56 ....................................................... 1415 PTO/SB/57
Cited..................................... 2214, 2215, 2296 Reproduced.................................................. 2214
PTO/SB/64 reproduced............................. 711.03(c) PTO/SB/64a Reproduced.............. 711.03(c), 1135 PTO/SB/64/PCT reproduced..................... 711.03(c) PTO/SB/66
Cited................................................. 2590, 2595 Reproduced.................................................. 2595
PTO/SB/66, EFS-Web auto processing version..... 2590 PTO/SB/67 Cited................................................ 104 PTO/SB/68
Cited................................................ 103, 711.04 Reproduced.................................................... 103
PTO/SB/80 Reproduced................................ 402.07 PTO/SB/81
Cited................................................... 402, 1604 PTO/SB/81B..................................................... 2805 PTO/SB/81C Reproduced................................ 2622 PTO/SB/82 Reproduced................................ 402.05 PTO/SB/83
Cited.......................................................... 402.06 PTO/AIA/83 Reproduced............... 402.06, 2223 PTO/SB/83 Reproduced............................... 2623
PTO/SB/84 Reproduced..................................... 405 PTO/SB/122............................................ 403, 2542 PTO/SB/123............................................ 403, 2542 PTO/SB/124........................................................ 403 PTO/SB/125
Cited....................................... 403, 2540, 2595 Reproduced.................................................. 2595
PTO/SB/429................................................. 1134.01 Reasons for Patentability and/or Confirmation PTOL 476.................................................................... 2687 Recordation Form Cover Sheet PTO-1595.... 302.07, 323 Reexamination and processing forms listed..... 2296, 2696 Reexamination Clerk Checklist PTOL-1517..... 2287, 2295, 2296, 2687, 2696
Reissue Application Declaration by the Assignee (See also: Form letters and forms: PTO/SB/52 Form letters and forms: PTO/AIA/06 )........................................... 1410.01 Declaration by the Inventor (See also: Form letters and forms: PTO/SB/51 Form letters and forms: PTO/AIA/05 )........................................... 1410.01 Fee Transmittal Form 1415 (See also: Form letters and forms: PTO/SB/56 Form letters and forms: PTO/AIA/50 ) Transmittal (See also: Form letters and forms: PTO/AIA/50 )................................................ 1410
Request for Customer Number PTO/SB/125..... 403, 2540 Request for Customer Number Data Change PTO/SB/124........................................................ 403 Request for Deferral of Examination 37 CFR 1.103(d) PTO/SB/37.......................................................... 709 Request for Ex Parte Reexamination Transmittal PTO/SB/57................................ 2214, 2215, 2296 Request for Withdrawal as Attorney or Agent PTO/SB/83..................................................... 402.06 Request for Withdrawal as Attorney or Agent PTO/SB/83......................................... 402.06, 2623 Rescission of Previous Nonpublication Request (35 U.S.C. 122(b)(2)(B)(ii)) and if Applicable, Notice of Foreign Filing (35 U.S.C. (b)(B)(iii)) PTO/SB/36
Cited..................................... 1123, 1124, 1135 Reproduced.................................................. 1135
Response to Rule 1.312 Communication PTOL-271... 714, 714.16(d) Restriction requirement...................................... 817 Right of Appeal Notice PTOL-2066.. 2673.02, 2696 Statements to DOE or NASA.............................. 151 Subject matter admits of illustration.......... 608.02(a) Terminal Disclaimer to Obviate a Double Patenting Rejection over a Prior Patent, PTO/SB/25 or PTO/AIA/26....................................................... 1490 Terminal Disclaimer to Obviate a Provisional Double Patenting Rejection over a Pending Second Application, PTO/SB/25 or PTO/AIA/25............ 1490 Third-Party Submission Under 37 CFR 1.290 PTO/SB/429................................................. 1134.01 Transmittal ofCommunication toThirdPartyRequester – Ex Parte Reexamination – PTOL – 465..... 2246, 2247, 2262, 2264, 2283, 2296
Form paragraphs (Reproduced) 2.01................................................................ 201.06 2.03........................................................... 201.06(c) 2.05................................................................ 201.07 2.06................................................................ 201.08
Rev. 07.2015, October 2015Index-41
INDEX
PTO/SB/01A Reproduced — Form paragraphs (Reproduced)
Sec. No.Sec. No.
2.09................................................................ 211.05 2.10................................................................ 211.05 2.10.01........................................................... 211.05 2.11............................................ 211.01(b), 211.05 2.11.01...................................................... 211.01(a) 2.13....................................................... 602.01(c)(3) 2.13a..................................................... 602.01(c)(3) 2.13b..................................................... 602.01(c)(3) 2.13c..................................................... 602.01(c)(3) 2.13d..................................................... 602.01(c)(3) 2.13e..................................................... 602.01(c)(3) 2.13f...................................................... 602.01(c)(3) 2.13g..................................................... 602.01(c)(3) 2.13h..................................................... 602.01(c)(3) 2.13.01.................................................. 602.01(c)(3) 2.13.02.................................................. 602.01(c)(3) 2.14....................................................... 602.01(c)(3) 2.14.01.................................................. 602.01(c)(3) 2.15................................................................ 211.02 2.18..................................................................... 213 2.19..................................................................... 216 2.20..................................................................... 215 2.21.01........................................................... 214.03 2.22................................................................ 214.03 2.23................................................................ 214.03 2.25................................................................ 214.03 2.26................................................................ 214.03 2.27................................................................ 214.03 2.28................................................................ 215.02 2.30........................................................... 201.06(d) 2.31........................................................... 201.06(d) 2.32........................................................... 201.06(d) 2.33........................................................... 201.06(d) 2.34........................................................... 201.06(d) 2.35........................................................... 201.06(d) 2.38........................................................... 211.01(a) 2.39................................................................ 211.03 2.40................................................................ 211.01 4.01..................................................................... 403 4.03..................................................................... 406 4.07..................................................................... 407 4.08..................................................................... 407 4.09..................................................................... 402 4.10..................................................................... 402 5.01..................................................................... 502 5.01.01................................................................ 501 5.02..................................................................... 512 5.04..................................................................... 512
5.05................................................................ 509.03 6.01........................................................... 608.01(a) 6.02........................................................... 608.01(a) 6.11................................................................ 606.01 6.11.01........................................................... 606.01 6.12........................................................... 608.01(b) 6.13........................................................... 608.01(b) 6.14........................................................... 608.01(b) 6.15........................................................... 608.01(b) 6.16........................................................... 608.01(b) 6.16.01...................................................... 608.01(b) 6.17............................................................ 608.01(j) 6.18........................................................... 608.01(n) 6.18.01..................................................... 608.01(m) 6.19........................................................... 608.01(p) 6.19.01...................................................... 608.01(p) 6.19.02................................................................ 217 6.19.03...................................................... 608.01(p) 6.20........................................................... 608.01(v) 6.21........................................................... 608.02(b) 6.22........................................................... 608.02(b) 6.22.01................................... 608.02(d), 608.02(e) 6.22.02...................................................... 608.02(e) 6.22.03...................................................... 608.02(e) 6.22.04...................................................... 608.02(d) 6.22.05....................................................... 608.02(f) 6.22.06...................................................... 608.02(e) 6.22.07...................................................... 608.02(e) 6.23................................................................ 608.02 6.23.01........................................................... 608.02 6.24.01........................................................... 608.02 6.26........................................................... 608.02(b) 6.27........................................................... 608.02(b) 6.28........................................................... 608.01(q) 6.28.01...................................................... 608.01(q) 6.28.02...................................................... 608.01(q) 6.29................................................................ 608.01 6.30................................................................ 608.01 6.31................................................................ 608.01 6.32................................................................ 608.01 6.32.01........................................................... 608.01 6.36........................................................... 608.02(d) 6.36.01...................................................... 608.02(g) 6.37........................................................... 608.02(h) 6.39........................................................... 608.02(p) 6.40........................................................... 608.02(p) 6.41........................................................... 608.02(p) 6.42........................................................... 608.02(p)
Index-42Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Form paragraphs (Reproduced) — Form paragraphs (Reproduced)
Sec. No.Sec. No.
6.43........................................................... 608.02(p) 6.47........................................................... 608.02(p) 6.48........................................................... 608.03(a) 6.49........................................................... 609.05(a) 6.49.01...................................................... 609.05(a) 6.49.02...................................................... 609.05(a) 6.49.03...................................................... 609.05(a) 6.49.05...................................................... 609.05(a) 6.49.06...................................................... 609.05(a) 6.49.07...................................................... 609.05(a) 6.49.08...................................................... 609.05(a) 6.49.09...................................................... 609.05(a) 6.49.10...................................................... 609.05(a) 6.51........................................................... 609.05(a) 6.52........................................................... 609.04(b) 6.53................................................................ 609.03 6.54................................................................ 609.03 6.55................................................................ 609.03 6.57................................................................... 1134 6.60.01........................................................... 608.05 6.60.02........................................................... 608.05 6.61.01........................................................... 608.05 6.61.02........................................................... 608.05 6.62................................................................ 608.05 6.63.01...................................................... 608.05(b) 6.63.02...................................................... 608.05(b) 6.64.01...................................................... 608.05(a) 6.64.04...................................................... 608.05(a) 6.70.01........................................................... 608.05 6.70.02........................................................... 608.05 6.71.01........................................................... 608.05 6.71.02........................................................... 608.05 6.72.01........................................................... 608.05 6.72.02........................................................... 608.05 6.72.03........................................................... 608.05 6.72.04........................................................... 608.05 6.72.05........................................................... 608.05 7.01................................................................ 702.01 7.02................................................................ 702.01 7.03.aia..................................................... 706.02(a) 7.03.fti....................................................... 706.02(a) 7.04.01...................................................... 706.03(a) 7.04.02.aia................................................ 706.03(a) 7.04.03...................................................... 706.03(a) 7.04.101.aia.............................................. 706.03(a) 7.04.102.aia.............................................. 706.03(a) 7.05........................................................... 706.03(a) 7.05.01...................................................... 706.03(a)
7.05.015.................................................... 706.03(a) 7.05.02...................................................... 706.03(a) 7.05.03...................................................... 706.03(a) 7.05.04...................................................... 706.03(a) 7.05.05...................................................... 706.03(k) 7.05.06...................................................... 706.03(k) 7.06........................................ 706.02(i), 706.02(m) 7.06.01..................................................... 706.02(m) 7.07.aia....................................................... 706.02(i) 7.07.fti......................................................... 706.02(i) 7.08.aia....................................................... 706.02(i) 7.08.fti......................................................... 706.02(i) 7.09.fti......................................................... 706.02(i) 7.10.fti......................................................... 706.02(i) 7.11.fti......................................................... 706.02(i) 7.12aia........................................................ 706.02(i) 7.12.fti......................................................... 706.02(i) 7.12.01.fti.................................................... 706.02(i) 7.13.fti......................................................... 706.02(i) 7.14.aia....................................................... 706.02(i) 7.14.fti......................................................... 706.02(i) 7.15.aia........................................ 706.02(i), 804.03 7.15.fti.......................................... 706.02(i), 804.03 7.15.01.aia........................... 706.02(f)(2), 706.02(i) 7.15.01.fti.............. 706.02(f)(2), 706.02(i), 804.03 7.15.02.aia................................... 706.02(i), 804.03 7.15.02.fti..................................... 706.02(i), 804.03 7.15.03.aia.................................................. 706.02(i) 7.15.03.fti.................................................... 706.02(i) 7.16.aia....................................................... 706.02(i) 7.16.fti......................................................... 706.02(i) 7.17.aia....................................................... 706.02(i) 7.17.fti......................................................... 706.02(i) 7.18.aia....................................................... 706.02(i) 7.18.fti......................................................... 706.02(i) 7.19.fti.......................................... 706.02(i), 804.03 7.20.aia.................................................... 706.02(m) 7.20.fti...................................................... 706.02(m) 7.20.01.aia............................ 706.02(m), 717.02(d) 7.20.01.fti................................................. 706.02(m) 7.20.02.aia............................ 706.02(m), 717.02(d) 7.20.02.fti................................................. 706.02(m) 7.20.04.aia............................ 706.02(m), 717.02(d) 7.20.04.fti................................................. 706.02(m) 7.20.05.aia............................ 706.02(m), 717.02(d) 7.20.05.fti................................................. 706.02(m) 7.21.aia..................................... 706.02(m), 804.03 7.21.fti....................................... 706.02(m), 804.03
Rev. 07.2015, October 2015Index-43
INDEX
Form paragraphs (Reproduced) — Form paragraphs (Reproduced)
Sec. No.Sec. No.
7.21.01.aia................................ 706.02(m), 804.03 7.21.01.fti.................................. 706.02(m), 804.03 7.21.02.aia................................ 706.02(m), 804.03 7.21.02.fti.................................. 706.02(m), 804.03 7.22.aia..................................... 706.02(m), 804.03 7.22.fti...................................................... 706.02(m) 7.23.aia.................................................... 706.02(m) 7.23.fti...................................................... 706.02(m) 7.27.aia.................................................... 706.02(m) 7.27.fti...................................................... 706.02(m) 7.28........................................................... 706.03(o) 7.29................................................................ 608.01 7.29.01..................................................... 608.01(m) 7.29.02..................................................... 608.01(m) 7.29.03..................................................... 608.01(m) 7.29.04........................................................... 608.01 7.30.01...................................................... 706.03(c) 7.30.02...................................................... 706.03(d) 7.30.03...................................................... 706.03(e) 7.30.03.h................................................... 706.03(e) 7.30.04...................................................... 706.03(e) 7.31.01...................................................... 706.03(c) 7.31.02...................................................... 706.03(c) 7.31.03...................................................... 706.03(c) 7.31.04...................................................... 706.03(c) 7.33.01...................................................... 706.03(c) 7.34........................................................... 706.03(d) 7.34.01...................................................... 706.03(d) 7.34.02...................................................... 706.03(d) 7.34.03...................................................... 706.03(d) 7.34.04...................................................... 706.03(d) 7.34.05...................................................... 706.03(d) 7.34.06...................................................... 706.03(d) 7.34.07...................................................... 706.03(d) 7.34.08...................................................... 706.03(d) 7.34.09...................................................... 706.03(d) 7.34.10...................................................... 706.03(d) 7.34.11...................................................... 706.03(d) 7.34.12...................................................... 706.03(d) 7.34.13...................................................... 706.03(d) 7.34.14...................................................... 706.03(d) 7.34.15...................................................... 706.03(d) 7.34.16...................................................... 706.03(d) 7.34.17...................................................... 706.03(d) 7.34.18...................................................... 706.03(d) 7.34.19...................................................... 706.03(d) 7.34.20...................................................... 706.03(e) 7.34.21...................................................... 706.03(e)
7.34.22...................................................... 706.03(e) 7.35........................................................... 706.03(d) 7.35.01...................................................... 706.03(d) 7.36........................................................... 608.01(n) 7.36.01...................................................... 608.01(n) 7.37............................................................ 707.07(f) 7.37.01....................................................... 707.07(f) 7.37.02....................................................... 707.07(f) 7.37.03....................................................... 707.07(f) 7.37.04....................................................... 707.07(f) 7.37.05....................................................... 707.07(f) 7.37.06....................................................... 707.07(f) 7.37.07....................................................... 707.07(f) 7.37.08....................................................... 707.07(f) 7.37.09....................................................... 707.07(f) 7.37.10....................................................... 707.07(f) 7.37.11....................................................... 707.07(f) 7.37.12....................................................... 707.07(f) 7.37.13....................................................... 707.07(f) 7.38............................................................ 707.07(f) 7.38.01....................................................... 707.07(f) 7.38.02....................................................... 707.07(f) 7.39................................................................ 706.07 7.39.01........................................................... 706.07 7.40........................................................... 706.07(a) 7.40.01...................................................... 706.07(a) 7.40.02.aia................................................ 706.07(a) 7.40.02.fti.................................................. 706.07(a) 7.41........................................................... 706.07(b) 7.41.01.fti.................................................. 706.07(g) 7.41.02.fti.................................................. 706.07(g) 7.41.03...................................................... 706.07(b) 7.42........................................................... 706.07(d) 7.42.01.fti.................................................. 706.07(g) 7.42.02.fti.................................................. 706.07(g) 7.42.03.fti.................................................. 706.07(g) 7.42.031.fti................................................ 706.07(g) 7.42.04...................................................... 706.07(h) 7.42.05...................................................... 706.07(h) 7.42.06...................................................... 706.07(h) 7.42.07...................................................... 706.07(h) 7.42.08...................................................... 706.07(h) 7.42.08.AE................................................ 708.02(a) 7.42.09................................... 706.07(b), 706.07(h) 7.42.10...................................................... 706.07(h) 7.42.11...................................................... 706.07(h) 7.42.12...................................................... 706.07(h) 7.42.13...................................................... 706.07(h)
Index-44Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Form paragraphs (Reproduced) — Form paragraphs (Reproduced)
Sec. No.Sec. No.
7.42.14...................................................... 706.07(h) 7.42.15...................................................... 706.07(h) 7.42.16...................................................... 706.07(h) 7.43......................................... 608.01(n), 707.07(j) 7.43.01....................................................... 707.07(j) 7.43.02....................................................... 707.07(j) 7.43.03...................................................... 707.07(a) 7.43.04....................................................... 707.07(j) 7.44........................................................... 608.01(o) 7.45........................................................... 608.01(n) 7.46........................................................... 714.01(e) 7.48.aia..................................................... 706.03(u) 7.48.fti....................................................... 706.03(u) 7.49........................................................... 706.03(u) 7.50................................................................ 706.04 7.51................................................................ 714.14 7.51.AE..................................................... 708.02(a) 7.52..................................................................... 709 7.53..................................................................... 709 7.54..................................................................... 709 7.54.01................................................................ 709 7.54.02................................................................ 709 7.56..................................................................... 709 7.56.01................................................................ 709 7.56.02................................................................ 709 7.57.fti................................................................. 715 7.58.fti................................................................. 715 7.59.fti................................................................. 715 7.60.fti................................................................. 715 7.61.fti................................................................. 715 7.62.fti................................................................. 715 7.63.fti................................................................. 715 7.64.fti................................................................. 715 7.65..................................................................... 716 7.66..................................................................... 716 7.66.01................................................................ 716 7.66.02................................................................ 716 7.66.03................................................................ 716 7.66.04................................................................ 716 7.66.05................................................................ 716 7.67.aia.......................................................... 717.01 7.68.aia.......................................................... 717.01 7.70.AE..................................................... 708.02(a) 7.71.AE..................................................... 708.02(a) 7.81........................................................... 707.05(g) 7.82........................................................... 707.05(g) 7.82.01...................................................... 707.05(g) 7.82.03...................................................... 707.05(a)
7.83........................................................... 707.05(g) 7.84................................................................ 713.04 7.84.AE..................................................... 708.02(a) 7.84.01...................................................... 714.01(a) 7.84.01.AE................................................ 708.02(a) 7.85........................................................... 714.16(d) 7.86........................................................... 714.16(e) 7.87........................................................... 714.16(d) 7.90................................................................ 711.02 7.91........................................................... 711.02(a) 7.95............................................ 704.12(c), 714.03 7.95.AE..................................................... 708.02(a) 7.95.01........................................................... 714.03 7.96................................................................ 707.05 7.97............................................................ 707.07(j) 7.98........................................................... 710.02(e) 7.98.01...................................................... 710.02(e) 7.98.02........................................................... 711.02 7.100.................................................... 707, 707.08 7.101.................................................... 707, 707.08 7.102.................................................... 707, 707.08 7.103................................................................... 707 7.104.aia.................................................... 706.02(c) 7.104.fti...................................................... 706.02(c) 7.104.02.................................................... 704.14(a) 7.105......................................................... 704.14(a) 7.105.01.................................................... 704.14(a) 7.105.02.................................................... 704.14(a) 7.106......................................................... 704.14(a) 7.107......................................................... 704.14(a) 7.108......................................................... 704.14(a) 7.109......................................................... 704.14(a) 7.110......................................................... 704.14(a) 7.111......................................................... 704.14(a) 7.112......................................................... 704.14(a) 7.113......................................................... 704.14(a) 7.114......................................................... 704.14(a) 7.115......................................................... 704.14(a) 7.116......................................................... 704.14(a) 7.117......................................................... 704.14(a) 7.118......................................................... 704.14(a) 7.119......................................................... 704.14(a) 7.120......................................................... 704.14(a) 7.121......................................................... 704.14(a) 7.122......................................................... 704.14(a) 7.123......................................................... 704.14(a) 7.124......................................................... 704.14(a) 7.125......................................................... 704.14(a)
Rev. 07.2015, October 2015Index-45
INDEX
Form paragraphs (Reproduced) — Form paragraphs (Reproduced)
Sec. No.Sec. No.
7.126......................................................... 704.14(a) 7.126.AE................................................... 708.02(a) 7.127......................................................... 704.14(a) 7.147......................................................... 714.03(a) 7.169.............................................................. 714.13 7.204.............................................................. 724.06 7.205.............................................................. 724.06 7.206.............................................................. 724.06 7.207.............................................................. 724.06 7.208.............................................................. 724.06 7.209.............................................................. 724.06 7.210.............................................................. 724.06 7.211.............................................................. 724.06 7.212.............................................................. 724.06 7.213.............................................................. 724.06 7.214.............................................................. 719.01 8.01........................................................... 809.02(a) 8.02........................................................... 809.02(a) 8.03............................................ 821.01, 821.04(a) 8.04................................................................ 821.03 8.05................................................................ 821.01 8.06................................................................ 821.02 8.07................................................................ 821.02 8.08..................................................................... 817 8.09..................................................................... 817 8.10..................................................................... 817 8.11..................................................................... 817 8.12................................................................ 809.03 8.13..................................................................... 817 8.14............................................................ 806.05(j) 8.14.01....................................................... 806.05(j) 8.15........................................................... 806.05(c) 8.16......................................... 806.05(d), 806.05(j) 8.17........................................................... 806.05(e) 8.18............................................................ 806.05(f) 8.19........................................................... 806.05(g) 8.20........................................................... 806.05(h) 8.20.02........................................................... 806.06 8.20.03........................................................... 806.06 8.21..................................................................... 817 8.21.04..... 806.05(f), 806.05(h), 817, 1893.03(d) 8.23................................................................ 812.01 8.23.01........................................................... 812.01 8.23.02................................................................ 817 8.25................................................................ 821.01 8.25.01........................................................... 821.02 8.25.02....................................... 818.01(c), 821.02 8.26................................................................ 821.03
8.26.AE..................................................... 708.02(a) 8.27.aia................................................ 804.03, 817 8.27.fti............................................................ 804.03 8.28.aia................................................ 804.03, 817 8.28.fti............................................................ 804.03 8.28.01.aia..................................................... 804.03 8.28.01.fti....................................................... 804.03 8.29..................................................................... 822 8.30..................................................................... 804 8.31..................................................................... 804 8.32..................................................................... 804 8.33..................................................................... 804 8.34..................................................................... 804 8.35..................................................................... 804 8.36..................................................................... 804 8.37..................................................................... 804 8.38..................................................................... 804 8.39..................................................................... 804 8.41................................................................ 803.03 8.42........................................................... 821.04(b) 8.43........................................................... 821.04(b) 8.45........................................................... 821.04(a) 8.46........................................................... 821.04(a) 8.47........................................................... 821.04(a) 8.47.01...................................................... 821.04(a) 8.49........................................................... 821.04(a) 8.50........................................................... 821.04(a) 10.01................................................................. 1308 10.13............................................................ 1481.02 10.14............................................................ 1481.02 10.15............................................................ 1481.02 10.16.fti........................................................ 1481.02 10.16.01....................................................... 1481.02 10.17............................................................ 1481.02 10.18............................................................ 1481.02 10.19................................................................. 1451 10.20................................................................. 1002 10.30................................................................. 1002 12.186.......................................................... 1207.05 12.209.01.................................... 1205.01, 1215.04 12.210.......................................................... 1205.01 12.211.......................................................... 1205.01 12.298.......................................................... 1214.07 12.219.......................................................... 1214.06 12.292.......................................................... 1214.06 12.297.......................................................... 1214.06 12.249.......................................................... 1207.02 12.254.......................................................... 1207.02
Index-46Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Form paragraphs (Reproduced) — Form paragraphs (Reproduced)
Sec. No.Sec. No.
12.254.01..................................................... 1207.02 12.254.02..................................................... 1207.02 12.255.......................................................... 1207.02 12.256.......................................................... 1207.02 12.257.......................................................... 1207.02 12.261.......................................................... 1207.02 12.279.03.......................................................... 1209 12.279.......................................................... 1207.02 12.279.01..................................................... 1207.02 12.279.02..................................................... 1207.02 12.285......................................... 1207.05, 1211.01 12.239.......................................................... 1207.04 13.01............................................................ 1302.02 13.02............................................................ 1302.04 13.02.01....................................................... 1302.04 13.02.02.................................... 706.07(f), 1302.04 13.03............................................................ 1302.14 13.03.01....................................................... 1302.14 13.04............................................................ 1308.03 13.05............................................................ 1308.03 13.06............................................................ 1302.04 13.09......................................................... 609.04(b) 13.10.............................................................. 714.16 14.01................................................................. 1401 14.01.01............................................................ 1414 14.01.02............................................................ 1414 14.01.03............................................................ 1414 14.01.04.fti................................................... 1414.02 14.01.05............................................................ 1414 14.01.06............................................................ 1414 14.05.02.fti........................................................ 1444 14.06............................................................ 1442.01 14.07............................................................ 1442.03 14.08............................................................ 1442.02 14.09............................................................ 1442.02 14.10............................................................ 1442.02 14.11............................................................ 1442.02 14.11.01............................................................ 1418 14.12............................................................ 1412.03 14.13............................................................ 1412.03 14.14................................................................. 1444 14.15............................................................ 1410.02 14.16............................................................ 1410.02 14.16.01....................................................... 1410.02 14.16.02....................................................... 1410.02 14.16.03....................................................... 1410.02 14.16.04.fti................................................... 1410.02 14.16.06....................................................... 1410.02
14.17............................................................ 1412.02 14.20.01............................................................ 1453 14.21.01............................................................ 1453 14.21.09.fti........................................................ 1448 14.22.fti............................................................. 1448 14.22.01....................................................... 1411.02 14.23................................................................. 1490 14.23.01............................................................ 1490 14.24................................................................. 1490 14.25................................................................. 1490 14.26................................................................. 1490 14.26.01............................................................ 1490 14.26.02............................................................ 1490 14.26.03............................................................ 1490 14.26.04............................................................ 1490 14.26.05............................................................ 1490 14.26.06.fti........................................................ 1490 14.26.07............................................................ 1490 14.26.08............................................................ 1490 14.26.09............................................................ 1490 14.26.10............................................................ 1490 14.27.01............................................................ 1490 14.27.011.......................................................... 1490 14.27.02............................................................ 1490 14.27.03............................................................ 1490 14.27.04.fti........................................................ 1490 14.27.04.1......................................................... 1490 14.27.06............................................................ 1490 14.27.07.fti........................................................ 1490 14.27.07.1......................................................... 1490 14.27.08............................................................ 1490 14.28.fti............................................................. 1490 14.29.fti............................................................. 1490 14.29.02.fti........................................................ 1490 14.30.fti............................................................. 1490 14.30.01............................................................ 1490 14.30.02............................................................ 1490 14.32................................................................. 1490 14.33................................................................. 1490 14.34................................................................. 1490 14.35................................................................. 1490 14.35.01............................................................ 1490 14.36................................................................. 1490 14.36.01............................................................ 1490 14.37................................................................. 1490 14.38................................................................. 1490 14.39................................................................. 1490 15.01............................................................ 1504.10
Rev. 07.2015, October 2015Index-47
INDEX
Form paragraphs (Reproduced) — Form paragraphs (Reproduced)
Sec. No.Sec. No.
15.01.01....................................................... 1504.10 15.02............................................................ 1504.10 15.03............................................................ 1504.10 15.03.01.fti................................................... 1504.02 15.04............................................................ 1504.10 15.05............................................................ 1503.01 15.05.01................................. 1503.01, 2920.04(a) 15.05.03....................................................... 1503.02 15.05.04....................................................... 1503.02 15.05.041..................................................... 1503.02 15.05.05....................................................... 1503.02 15.07............................................................ 1503.02 15.07.01....................................................... 1504.01 15.08....................................................... 1504.01(c) 15.08.01.................................................. 1504.01(c) 15.08.02.................................................. 1504.01(d) 15.08.03.................................................. 1504.01(d) 15.09............................................................ 1504.01 15.09.01.................................................. 1504.01(e) 15.09.02.aia ................................................ 1504.02 15.09.03.aia................................................. 1504.02 15.10.aia...................................................... 1504.02 15.10.fti........................................................ 1504.02 15.10.15....................................................... 1504.02 15.11.aia...................................................... 1504.02 15.11.fti........................................................ 1504.02 15.12.fti........................................................ 1504.02 15.13.fti........................................................ 1504.02 15.14.fti........................................................ 1504.02 15.15.aia...................................................... 1504.02 15.15.fti........................................................ 1504.02 15.15.01.aia................................................. 1504.02 15.15.01.fti................................................... 1504.02 15.15.02.aia................................................. 1504.02 15.15.02.fti................................................... 1504.02 15.15.03.fti................................................... 1504.02 15.15.04.aia................................................. 1504.02 15.15.04.fti................................................... 1504.02 15.16.fti........................................................ 1504.02 15.17.aia...................................................... 1504.02 15.17.fti........................................................ 1504.02 15.18.aia...................................................... 1504.03 15.18.fti........................................................ 1504.03 15.19.aia...................................................... 1504.03 15.19.fti........................................................ 1504.03 15.19.01............................................................ 1504 15.19.02.aia................................................. 1504.03 15.19.02.fti................................................... 1504.03
15.19.03.aia................................................. 1504.03 15.19.03.fti................................................... 1504.03 15.19.04.fti................................................... 1504.03 15.19.05.aia................................................. 1504.03 15.19.05.fti................................................... 1504.03 15.19.06.fti................................................... 1504.03 15.19.07.fti................................................... 1504.03 15.20.02....................................................... 1504.04 15.21............................................................ 1504.04 15.21.01....................................................... 1504.04 15.22............................................................ 1504.04 15.22.02....................................................... 1504.04 15.22.03....................................................... 1504.04 15.23............................................................ 1504.06 15.23.01....................................................... 1504.06 15.23.02....................................................... 1504.06 15.24............................................................ 1504.06 15.24.03....................................................... 1504.06 15.24.04....................................................... 1504.06 15.24.05.fti................................................... 1504.02 15.24.06....................................................... 1504.06 15.24.07....................................................... 1504.06 15.24.08....................................................... 1504.06 15.25............................................................ 1504.06 15.26............................................................ 1504.20 15.27............................................................ 1504.05 15.27.01....................................................... 1504.05 15.27.02....................................................... 1504.05 15.27.03....................................................... 1504.05 15.27.04....................................................... 1504.05 15.27.05....................................................... 1504.05 15.27.06....................................................... 1504.05 15.27.07....................................................... 1504.05 15.27.08....................................................... 1504.05 15.28............................................................ 1504.05 15.28.01....................................................... 1504.05 15.28.02....................................................... 1504.05 15.29............................................................ 1504.05 15.30............................................................ 1504.05 15.31............................................................ 1504.05 15.33............................................................ 1504.05 15.34............................................................ 1504.05 15.35............................................................ 1504.05 15.36............................................................ 1504.05 15.37............................................................ 1504.05 15.38........................................... 1504.02, 1504.03 15.39.02.aia................................................. 1504.03 15.39.02.fti................................................... 1504.03
Index-48Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Form paragraphs (Reproduced) — Form paragraphs (Reproduced)
Sec. No.Sec. No.
15.40.aia...................................................... 1504.03 15.40.fti........................................................ 1504.03 15.40.01...................................... 1504.02, 1504.03 15.41............................................................ 1503.01 15.42............................................................ 1504.01 15.43............................................................ 1504.01 15.44............................................................ 1504.01 15.46.01....................................................... 1503.01 15.47............................................................ 1503.01 15.47.01....................................................... 1503.01 15.48............................................................ 1503.02 15.50............................................................ 1503.02 15.50.01....................................................... 1503.02 15.50.02....................................................... 1503.02 15.50.04....................................................... 1503.02 15.50.05....................................................... 1503.02 15.51............................................................ 1504.04 15.51.01....................................................... 1504.04 15.55................................................................. 1512 15.55.01............................................................ 1512 15.58................................................................. 1504 15.58.01....................................................... 1504.04 15.59...................................... 1503.01, 2920.04(a) 15.60............................................................ 1503.01 15.61............................................................ 1503.01 15.61.01...................................... 1503.01, 1503.02 15.62...................................... 1503.01, 2920.04(a) 15.63...................................... 1503.01, 2920.04(a) 15.64...................................... 1503.01, 2920.04(a) 15.65............................................................ 1504.04 15.66................................................................. 1504 15.67........................................... 1504.03, 1504.06 15.68........................................... 1504.03, 1504.06 15.69.01....................................................... 1504.04 15.70.aia...................................................... 1504.03 15.70.fti........................................................ 1504.03 15.72................................................................. 1504 15.73............................................................ 1504.04 15.74............................................................ 1504.20 15.74.01....................................................... 1504.20 15.75.fti........................................................ 1504.20 15.75.01.fti................................................... 1504.20 15.76................................................................. 1512 15.85............................................................ 1504.04 15.90................................................................. 1504 16.01................................................................. 1605 16.02................................................................. 1605 16.03................................................................. 1605
16.04................................................................. 1610 16.05................................................................. 1612 16.05.01............................................................ 1612 16.06................................................................. 1606 16.07................................................................. 1606 16.08................................................................. 1610 16.09................................................................. 1605 16.10................................................................. 1605 16.11................................................................. 1606 16.12................................................................. 1610 16.13................................................................. 1607 18.01............................................................ 1845.01 18.02............................................................ 1845.01 18.02.01....................................................... 1845.01 18.02.02....................................................... 1845.01 18.03............................................................ 1845.01 18.04............................................................ 1845.01 18.04.01....................................................... 1845.01 18.05................................................................. 1850 18.06................................................................. 1850 18.06.01............................................................ 1850 18.06.02............................................................ 1850 18.07................................................................. 1850 18.07.01............................................................ 1850 18.07.02............................................................ 1850 18.07.03............................................................ 1850 18.07.03a.......................................................... 1850 18.07.03b.......................................................... 1850 18.07.03c.......................................................... 1850 18.08............................................................ 1845.01 18.08.01....................................................... 1845.01 18.09............................................................ 1845.01 18.10............................................................ 1845.01 18.11............................................................ 1845.01 18.12.01....................................................... 1845.01 18.13.01....................................................... 1845.01 18.14.01....................................................... 1845.01 18.15............................................................ 1845.01 18.18........................................... 1850, 1893.03(d) 18.19....................................................... 1893.03(d) 18.20....................................................... 1893.03(d) 18.21....................................................... 1893.03(d) 18.22....................................................... 1893.03(d) 19.01............................................................ 1901.06 19.02............................................................ 1901.06 19.02.AE................................................... 708.02(a) 22.01................................................................. 2246 22.01.01............................... 2242, 2258.01, 2642
Rev. 07.2015, October 2015Index-49
INDEX
Form paragraphs (Reproduced) — Form paragraphs (Reproduced)
Sec. No.Sec. No.
22.02................................................................. 2247 22.03................................................................. 2258 22.04................................................................. 2260 22.04.01............................................................ 2265 22.05................................................ 2285, 2686.03 22.06................................................................. 2287 22.07................................................................. 2282 22.08................................................................. 2282 22.09................................................................. 2271 22.10................................................................. 2271 22.11................................................................. 2258 22.12................................................ 2250, 2666.01 22.13................................................................. 2250 22.14............................................................ 2266.01 22.15............................................................ 2266.03 22.16................................................................. 2287 22.20................................................................. 2286 22.73................................................................. 2246 23.01................................................................. 2302 23.02................................................................. 2308 23.04....................................................... 2304.04(b) 23.06............................................................ 2304.02 23.06.01....................................................... 2304.02 23.06.02....................................................... 2304.02 23.06.03....................................................... 2304.02 23.06.04....................................................... 2304.02 23.06.05....................................................... 2304.02 23.06.06....................................................... 2304.02 23.14........................................ 715.05, 2304.02(c) 23.14.01................................... 715.05, 2304.02(c) 23.19....................................................... 2304.01(c) 26.01................................................................. 2646 26.02................................................................. 2647 26.03................................................ 2658, 2671.02 26.03.01............................................................ 2658 26.04................................................................. 2660 26.05................................................ 2660, 2671.01 26.05.01....................................................... 2666.01 26.06............................................................ 2666.30 26.07............................................................ 2671.02 26.08............................................................ 2673.02 26.67................................................................. 2678 26.67.01............................................................ 2682 26.68............................................................ 2666.06 26.69................................................................. 2687 26.70................................................................. 2687 26.73................... 2646, 2660, 2671.01, 2673.02 26.75................................................................. 2682
26.80............................................................ 2686.04 29.10....................................................... 2920.04(b) 29.11....................................................... 2920.04(b) 29.20....................................................... 2920.04(b) 29.21....................................................... 2920.05(c) 29.22....................................................... 2920.04(a) 29.23....................................................... 2920.05(c) 29.24....................................................... 2920.04(a) 29.25....................................................... 2920.05(c) 29.26....................................................... 2920.04(a) 29.27....................................................... 2920.05(c)
Fraud (See also: Duty of disclosure Inequitable conduct Deceptive intent )
Avoiding charge of............................................ 2004 Civil litigation.......................... 1216.02, 2001.06(c) Claims invalidated............................................. 2016 Inventorship................................... 602.01(c), 2157 Micro entity status.......................................... 509.04 On the U.S. Patent and Trademark Office..... 509.03, 1448 Protest................ 1901, 1901.02, 1901.06, 2013 Reexamination
Ex parte ...... 2014, 2216, 2217, 2258, 2280 Inter partes ......................... 2014, 2658, 2684
Reissue................................................. 1448, 2012 Supplemental examination............................... 2819 Small entity status......................................... 509.03
Fraudulent.................................................... 706.03(a) Freedom of Information Act (FOIA)..... 103, 1002.02(k)(2) Frivolous invention........................................ 706.03(a) Full faith and credit in prior Examiner’s action
Allowed claims............................................... 706.04 Interview........................................................ 713.01 Search........................................................... 704.10
Full name of applicant............... 602.01(b), 602.08(b) Full signatory authority........................................ 1004 Function of machine rejection.................... 2173.05(v) Functional claim, rejection.............. 2114, 2173.05(g) Functional equivalents........................ 2144.06, 2183 Functionality in design patent applications.. 1504.01(c)
G
Index-50Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Form paragraphs (Reproduced) — Functionality in design patent applications
Sec. No.Sec. No.
Gazette, Official (See also: Official Gazette (O.G. ) ) Gazette, PCT..... Chapter 1800 Introduction, 1801, 1823.01, 1857 Gebrauchsmuster......................................... 901.05(b) General Counsel
Hand-delivery of papers to................................. 502 Mailing address.................................................. 501 Petitions and matters decided by........ 1002.02(k)(1)
General information............................................. 1730 General power of attorney for international application.. 1807 Generic claim
Allowable................................ 808.01(a), 821.04(a) Transitional application.......................... 803.03(b)
Definition................................................... 806.04(d) Markush group......................... 803.02, 2173.05(h) Patentably distinct over other species....... 806.04(h) Presented after issue of patent.................. 806.04(i) Rejection................................................... 809.02(a) Species claims lacking............... 806.01, 818.02(b) Support for scope of................. 706.03(c), 2164.08
Generic placeholder............................................ 2181 Genetic sequence (See also: Biotechnology Nucleotide sequences Sequence rules ) Genus and species..... 806.01, 806.04, 806.04(b), 806.04(d), 806.04(e), 806.04(f), 806.04(h), 806.04(i), 808.01(a), 809.02(a)
Anticipation of............................. 2131.02, 2153.02 Obviousness of............................................ 2144.08
German priority document................................ 901.05 Global Patent Search Network............................ 1730 Good faith (See also: Duty of candor and good faith ) Government registers............................. 302, 302.07 Government license clause................................... 310 Government-owned application, special........... 708.01 Graphic symbols............................................... 608.02 Great Britain, complete specification................ 214.03 Great Britain, provisional specification............. 214.03 Group director (See also: Director of Technology Center ) Group, International classification......................... 906 Guardian of unavailable joint inventor..... 409.01(b), 409.02 Guidelines
Drafting an application........................................ 601 Drug disclosures......................... 2107.01, 2107.03 Effective date under pre-AIA 35 U.S.C. 102(e)..... 706.02(f)(1) Electronic mail............................................... 502.03
Examination of computer-related inventions..... 2106 Inventorship................................................... 602.01 Genus-species............................................. 2144.08 Grant of reexamination request............ 2242, 2246 Handling of citation in patent............................ 1920 Internet Usage............................ 502.03, 904.02(c) Means/step plus function.................................. 2181 Utility................................................................. 2107
Legal precedent........................ 2107 to 2107.03 Written Description........................................... 2163
H
Hague Agreement (See also: Treaties )..... 213.01, 1504.10, 2701, 2901
Administrative Instructions 302 Reproduced........................................... 2911 401 Reproduced...................................... 2909.02 402 Reproduced...................................... 2909.02 403 Reproduced...................................... 2909.02 404 Reproduced...................................... 2909.02 405 Reproduced...................................... 2909.02
Articles 3, Reproduced.............................................. 2904 4, Reproduced.............................................. 2905 5 Reproduced................................... 2907, 2909 9 Reproduced............................................... 2906 10..................................................... 2907, 2920
12..................................................... 2920, 2920.05 13 Reproduced........................................ 2920.05(b) 14...................................................................... 2920 16 Reproduced................................................. 2930 Rules
1.............................................................. 2920.01 3 Reproduced............................................... 2911 6................................................................... 2906 7.................................................. 2909, 2920.01 9.............................................................. 2920.02 12 Reproduced........................................ 2909.03 13................................................................. 2906 14 Reproduced............................................. 2906 15 Reproduced............................................. 2907 18 Reproduced........................................ 2920.05 18bis Reproduced........................................ 2940
Rev. 07.2015, October 2015Index-51
INDEX
Gazette, Official — Hague Agreement
Sec. No.Sec. No.
22 Reproduced............................................. 2930 Hague Convention Apostille............................. 602.04
Filing.............................................................. 502.05 Hand delivery of papers..... 501, 502, 710.02(e), 714.13, 2422.09 Handling of mail and papers.................................. 500
In ex-parte reexamination................................ 2270 In inter-partes reexamination........................... 2670
Handling of submission of prior art and section 301 written statements............................................... 2206 Handling of protest......................................... 1901.05 Hatch-Waxman Act.............................................. 2750 Hearing on appeal............................................... 1209 Heir as applicant (See also: Administrator or executor )................................................... 409.01(b), 1303.03 Help line (telephone number).............................. 1730 Hidden end use in design applications....... 1504.01(c) Hidden feature in design applications
Anticipation.................................................. 1504.02 Enablement.................................................. 1504.04 Obviousness................................................ 1504.03
Hours of operation................................................. 510 Holiday, federal (See also: Federal Holiday ) Hyperlinks in specification............. 608.01, 608.01(p)
I
Icon, computer generated.......................... 1504.01(a) Identification of papers................................ 502, 503 Identification of priority application................... 214.04 Identity of inventors under 35 U.S.C. 119.............. 216 Idiomatic English.......................................... 608.01(q) Illustration (See also: Drawings ) Image File Wrapper (IFW)
Artifact........................................................... 608.02 Paper scanning................................................... 508 Power to inspect not accepted............................ 104 Public access.......................................... 103, 1730
Image File Wrapper (IFW) forms Issue Classification Form/Sheet/Slip, reproduced..... 1302.09 Cited.................. 903.07, 906, 1302.10, 1302.13
Implied election.......... 818.02, 818.02(a), 818.02(c)
Improper comments, inter partes reexamination..... 2667 Improper joinder, effect on patent.......................... 805 Improper naming of inventors.............................. 2157 Improper multiple dependent claim.............. 608.01(n) Improvement (Jepson claim)............................... 2129 Inaccurate claim............................................. 2173.03 Inappropriate papers in inter partes reexamination..... 2667 Incoming-Mail Section (See also: Office of Patent Application Processing )........................................ 501 Incomplete amendments, time for completing..... 710.02(c), 714.03 Incomplete application.. 506, 601.01(d) to 601.01(g)
Claims omitted.......................................... 601.01(e) Definition........................................................ 203.06 Drawing............................................ 506, 601.01(f) Invalid oath.................................................... 602.03 Return of filing fee............................................... 506 Using again................................................ 608.01(t)
Incomplete claim, rejection..... 706.03(c), 706.03(d), 2172.01 Incomplete protest.......................................... 1901.03 Incomplete requests for ex parte reexamination..... 2227 Incomplete response..................... 711.03(a), 714.03
Time for completing.......... 710.02(c), 711, 714.03 Incorporation by reference.. 103, 201.06(c), 211.02, 211.02(a), 217, 608.01(p), 2163.07, 2163.07(b), 2173.05(s)
Foreign priority application.. 213.02, 217, 2163.07 In an Examiner’s Answer during inter partes reexamination................................................... 2677 Public access to incorporated application.......... 103
Incorrect citation of reference........ 707.05(g), 710.06 Indefinite claim.................. 706.03(d), 2171 to 2174
Alternative phrase.................. 2173.01, 2173.05(h) Antecedent basis..................................... 2173.05(e) Breadth compared....................................... 2173.04 Comparing 35 U.S.C.112(a) or pre-AIA 35 U.S.C.112, first paragraph with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.............. 2174, 2185 Design applications.... 1503.01, 1503.02, 1504.04 International application................... 1845.01, 1874 Multiplicity................................................ 2173.05(n) Must be considered..................................... 2143.03 Nonelected claims.............................................. 821 Numerical ranges.................................... 2173.05(c) Prolix...................................................... 2173.05(m) Rejections................................................. 706.03(d)
Index-52Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Hague Agreement — Indefinite claim
Sec. No.Sec. No.
35 U.S.C. 112(6) or pre-AIA 35 U.S.C. 112, sixth paragraph limitations............................ 2181, 2185
Independent claim........................................ 608.01(n) Independent, definition..................................... 802.01 Independent inventions.. 802, 802.01, 803, 803.02, 806, 806.04(b), 806.06, 808.01(a) Independent inventor (See also: Applicant Inventor Pro Se applicant )
Micro entity status.......................................... 509.04 Small entity status......................................... 509.02
Index of claims............................... 707.07(i), 719.04 Index of patents, Classification, Numerical... 902.03(a) Index to the U.S. Patent Classification......... 902.01(a) Industrial Security Manual (ISM)........................... 120 Inequitable conduct (See also: Duty of disclosure, Violation of )................................... 2001.06(c), 2010
Best mode........................................................ 2165 Claims invalidated............................................. 2016 Finding affects all claims................................... 2016 Protest................................. 1901, 1901.06, 2013 Reexamination.................................................. 2014 Reissue................................................. 1448, 2012
Informal application................................ 506, 702.01 Primary examiner’s attention required.............. 1004 Search............................................ 702.01, 704.01
Informal drawing (no longer applies).. 507, 608.02(b), 608.02(i) Informality, Action calling attention to..... 707.07(a), 707.07(j), 710.02(b), 714.14 Information Center (See also: Scientific and Technical Information Center (STIC) ) Information Disclosure Statements (See also: Prior art ).............................................. 201.06(d), 609, 1406
Electronic Processing of................................ 609.08 Relationship to requirement for information..... 704.14(d)
Information material to patentability ) (See also: Duty of disclosure )................................ 2001.04, 2001.05
Copending application............................. 2001.06(b) Copied claims.......................................... 2001.06(d) Foreign application.................................. 2001.06(a) Litigation.................................................. 2001.06(c)
Information reasonably necessary for finding prior art... 704.11 Information submitted with protest.................. 1901.02 Infringement action
Statute of limitations......................................... 2204 INID codes or numbers..... 901.04, 901.05(b), 2290 Initial data capture for printing............................. 1309
Initial examiner review of reissue......................... 1443 Ink
Permanent...................................... 608.01, 714.07 Inoperativeness......................... 2164.07, 2164.08(b)
Affidavit.......................................................... 716.07 INPADOC............................ 901, 901.06(a), 901.07 Inquiries, Official and Congressional............ 203.08(a) Inquiries regarding patent search, examination, or validity.................................................................. 1701 Inquiry as to status of application........... 102, 203.08
Application published............................ 1128, 1134 Insanity......................................................... 409.01(b) Inspection
Amendment................................................... 714.05 Application................................................ 103, 104 Approval of power............................................... 104 Assignment.................................................... 301.01 Authority to grant................................................ 104 Authorization..................................... 402, 409.03(i) By assignee............................... 104, 106, 106.01 By excluded or suspended attorney or agent..... 105 By inventor.......................................................... 106 By licensee.................................................... 106.01 Control of, By assignee....................................... 106 File Information Unit (Record room)................... 103 International application...................................... 110 Patent file............................................................ 103 Petition................................................................ 103 Record room....................................................... 103 Reissue application............................................ 103 Right of........................................... 103, 104, 106
Insufficient disclosure..... 608.01(p), 706.03(c), 2161 Insufficient reply..... 710.02(c), 711.02(a), 711.03(a), 714.03, 2266.01, 2666.30, 2671 Int Cl (International Patent Classification)............. 906 Intellectual property compared............................ 1512 Intellectual Property and High Technology Technical Amendments Act of 2002 (Pub. L. 107-273)..... 706.02(a) Intent to claim........................................................ 706 Interference......................................................... 2300
Abandonment, suppression or concealment, notice.... 2138 Access to files........................ 104, 2306, 2307.02 Action after....................................................... 2308 Action after ex-parte reexamination................. 2284 Action after inter partes reexamination....... 2686.02 Action suggesting claims............................. 2304.04 Administrative patent judge handles................. 2301
Rev. 07.2015, October 2015Index-53
INDEX
Indefinite claim — Interference
Sec. No.Sec. No.
Allowance of losing party’s application (Estoppel)..... 2308.03 Applicant suggests interference with patent..... 2304.02 Applications in different Technology Centers..... 2304.01(b) Basis of practice......................... 2138.01, 2301.03 Between application and patent................... 2301.03 Between applications................................... 2301.03 Cancellation of losing party’s claims....... 2308.03(a) Claim of foreign priority............................ 2304.01(c) Claim interpretation..................................... 2301.03 Claim presented corresponding to patent claim..... 2301.03 to 2304.05 Claims, overlapping in two applications of same party............................................................. 2304.05 Claims, suggesting...................... 1003, 2304.04(b) Claims corresponding to count support in specification................................................. 2163.03 Common ownership..................................... 2304.05 Conception................................. 2138.01, 2138.04 Concurrent with appeal................................ 2307.05 Copending ex parte reexamination.................. 2284 Copending inter partes reexamination..... 2686, 2686.02 Count, defined............................................. 2301.02 Counts, formulation of.................................. 2301.01 Dates, difference in effective filing.................... 2303
TC Director’s attention required.................... 1003 Declaration........................................................ 2301 Definitions.................................................... 2301.02 Determining priority..................................... 2138.01 Diligence, reasonable................. 2138.01, 2138.06 Disclaimer, statutory.............. 706.03(u), 710.02(d) Disposal credit.................................................. 1705 Election of invention not affected........................ 819 Entry of amendment filed in connection with motion... 2308.02 Estoppel............................ 715, 2138.01, 2308.03 Evidence.................................. 2138.04 to 2138.06 Examination, Completion of.............................. 2303 Examiner suggestion................................... 2304.04 Final disposal of claims............................... 2308.01 Fraud................................................................ 2010 Generic claims........................................ 2304.04(b) Identification of patent, corresponding claims presented................................................ 2304.02(a) Inequitable conduct........................................... 2010
Inter partes questions not to be discussed ex parte ..................................................................... 2307.01 Interference Practice Specialist..... 2301, 2302, 2303, 2304.04(a), 2304.04(b), 2307.04, 2308.03 Interference-in fact, no............................. 2308.03(b) Interfering Subject Matter............................ 2301.03 Judicial review.................................. 1216, 1216.01 Jurisdiction over interference................ 2307, 2308 Losing party, may obtain copy of opponent’s application............................................... 2308.03(a) Losing party, treatment of........................ 2308.03(a) Lost counts......................................................... 715 Motions
Decision................................................... 2308.02 Stay......................................................... 2686.02 Suspend.................................................. 2686.02
National Aeronautics and Space Administration or Department of Energy Ownership.................... 2309 Order to show cause......................................... 2305 Patent in different Technology Center...... 2304.01(b) Patentee suggestion.................................... 2304.03 Petition refusal to initiate......................... 1002.02(c) Power of attorney filed................................... 402.08 Preparation of papers by examiner................... 2302 Priority time charts....................................... 2138.01 Provoking
In ex parte reexamination............................ 2284 In inter partes reexamination.................. 2686.02
Public use proceeding............................... 706.03(v) Reduction to practice.................. 2138.01, 2138.05 Reexamination
Ex parte, copending with interference......... 2284 Inter partes, copending with interference.... 2686, 2686.02
References pertinent to motions, made of record..... 1302.12 Referring an Interference to the Board, Preliminaries to.................................................................. 2304.01 Reissue application.................... 1449.02, 2303.02 Reissue application copending with interference on original patent.............................................. 1449.01 Reply to suggestion for claims..... 710.02(c), 2304.04(b) Requirements for interference.......................... 2302 Requiring a claim.................................... 2304.04(b) Requiring a priority showing............................. 2305 Revocation of power of attorney.................... 402.08 Search.................................... 1302.08, 2304.01(a) Second Interference, no.......................... 2308.03(c)
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MANUAL OF PATENT EXAMINING PROCEDURE
Interference — Interference
Sec. No.Sec. No.
Secrecy order application....................... 130, 2306 Special dispatch................................ 708.01, 2301 Statutory basis.............................. 708.01, 2301.01 Suggestion of claims........... 2304.03 to 2304.04(b) Suggestion of claims, time limit................. 710.02(c) Suspension of action pending outcome of reexamination.................................. 2284, 2686.02 Suspension of ex parte prosecution.... 709, 709.01 Suspension of related applications.............. 2307.03 Terminated open to public................................... 103 Testimony.................................................. 715.07(b) Transfer of application............................. 2304.01(b) Winning party................................ 710.02(b), 2308 Written Description, Adequate................ 2304.02(d)
Interference practice specialist(s)..... 2301, 2302, 2304, 2304.04(a), 2304.04(b), 2307.04, 2308.03 Interlibrary loans.......................................... 901.06(a) Interlineation in specification before execution.. 608.01 Intermediate-final product.......... 806.04(b), 806.05(j) International application (See also: Foreign application Patent Cooperation Treaty (PCT) )
Abstract............................................................. 1826 Access...................................................... 101, 110 Agent............................................... 1807, 1864.04 Amendment before the designated office..... 1893.01(a)(2), 1893.01(a)(3) Amendment of claims before International Bureau..... 1853 Amino acid sequence.. 1823.02, 2422, 2422.03(a) Applicant............................................... 1806, 1810 Assignment document........................................ 301 Attorney............................................................ 1807 Attorney file reference number......................... 1821 Claims............................................................... 1824 Common representative.................... 402.09, 1807 Confidential status.................................... 101, 110 Content............................................................. 1812 Continuation................................................. 1828.02 Continuation of.............................. 211.01(c), 1895 Continuation-in-part..................................... 1828.02 Correspondence............................................... 1834 Definition............................................................. 201 Deposit accounts........................................... 509.01 Description........................................................ 1823 Designation of states........................................ 1821 Drawings...................................... 1825, 1893.03(f) Drawings missing.............................................. 1825 Early national stage entry under 35 U.S.C. 371(f)..... 1893.01, 1893.01(a)(2), 1893.03(b)
EFS-Web filing............................................... 502.05 Elements........................................................... 1812 Errors, rectification of........................................ 1836 Fees................................. 1827, 1893.01(c), 1896 Filing date......................................................... 1810 Foreign filing license......................................... 1832 Formal requirements......................................... 1810 Forms (See also: Patent Cooperation Treaty (PCT): Forms ) Home copy....................................... 1801, 1879.04 International preliminary examination............... 1860 International search.......................................... 1843 International searching authority... 1840 to 1840.06 Inventor........................... 1806, 1821, 1893.01(e) Kinds of protection........................... 1821, 1828.02 Mail service...................................... 1834, 1834.02 Member states.................................................. 1817 Microorganism deposit................................ 1823.01 National stage.................................... 1893 to 1896
Submission via EFS-Web.......................... 502.05 Numbering of sheets........................................ 1812 Oath........................................................ 1893.01(e) Parent to national application........ 211.01(c), 1895 Power of attorney.............................................. 1807 Prior art effect............. 2127, 2136.03, 2154.01(a) Priority....................................... 210 to 217, 1828
Restoration of.......................................... 1828.01 Priority document.................................... 215, 1828 Publication........................................................ 1857 Record copy............. 1801, 1827.01, 1828, 1832 Rectification of obvious errors.......................... 1836 Refund of fees..... 1827.01, 1850, 1852, 1875.02 Representation.............................................. 402.09 Request............................................................ 1821 Search copy........ 1801, 1827.01, 1840, 1840.01 Search fee........................................................ 1827 Search report..................................... 707.05, 1844 Secrecy order............................... 115, 120, 1832 Signature of applicant....................................... 1820 Term, Adjustment of...... 2730, 2731, 2732, 2734 Time limits.......... 1836, 1842, 1843.05, 1879.01 Title................................................................... 1821 Translation for U.S. national stage........... 1893.01(d) Transmittal fee.................................................. 1827 Transmittal letter............................................... 1830 Unity of invention.... 823, 1850, 1875, 1893.03(d) Withdrawal............................................ 1859, 1880
International classification..................................... 906
Rev. 07.2015, October 2015Index-55
INDEX
Interference — International classification
Sec. No.Sec. No.
International design application.... 201.01, 211.01(d), 1501
Access...................................................... 102, 103 Claiming Priority............................................ 213.07 Foreign filing license................................. 115, 140 Filing date.................................................. 601.01(a) Information disclosure statement................... 609.04 Naming of inventors............................................ 604 Non Publication of.......................................... 901.03 Secrecy Order.................................................... 120
International patent classification........... 719.05, 906 International Patent Legal Administration.... 102, 103, 110, 602.01(c)(3), 1730 International searching authority......................... 1840 International Trade Commission............................ 724 International-type search........................... 707, 1852 Internet................................................. 502.03, 1730
Address............................................................ 1730 Database collections........................................ 1730 Electronic mail....... 502.03, 713, 713.01, 713.04 Kids Pages........................................................ 1730 “PatentIn” computer software (See also: Sequence rules )................................................................ 2430 Payment of maintenance fees by..... 1730, 2510, 2522 Publication of Board Decisions.................... 1213.03 Publication of the Official Gazette ................... 1703 Searching.................................................. 904.02(c) Usage Policy............................... 502.03, 904.02(c) World Intellectual Property Office (WIPO).... , 1801, 1851
Inter partes questions...................................... 713.06 Interpretation of law, new................................ 1207.02 Intervening rights
In reexamination Ex parte ...................................................... 2293 Inter partes ................................................. 2693
In reinstated patents......................................... 2591 In reissue.......................................................... 1460
Intervention by assignee.................... 106, 324, 325 Interviews.............................................................. 713
Advance indication of issues to be discussed..... 713.01 Allowed application......................... 713.05, 713.10 Appointment in advance................................ 713.01 Attorney not of record...... 101, 402.03, 405, 408 Authority to conduct....................................... 713.05 Before filing.................................................... 713.02
Before filing amendment under 37 CFR 1.312..... 713.10 Before first action........ 706.07(b), 713.01, 713.02 Demonstration............................................... 713.08 During working days only............................... 713.01 Electronic mail....... 502.03, 713, 713.01, 713.04 Excluded or suspended attorney or agent..... 105, 713.05 Exhibit............................................................ 713.08 Exposure of other cases during........... 101, 713.07 Field of search............................................... 713.02 Finally rejected application.......... 706.07(f), 713.09 How conducted.............................................. 713.01 Inter partes questions................................... 713.06
Interview summary form.................... 713.04, 2281 Local attorney................................. 713.03, 713.05 Made of record............................... 713.01, 713.04 Merged reissue/ inter partes reexamination. 2686.03 Model............................................................. 713.08 Oral agreement not binding........................... 713.04 Patentability report cases.............................. 713.01 Prior to first Office action............ 706.07(b), 713.02 Prohibited...................................................... 713.05 Protestor participation.................................. 1901.07 Question of patent validity................................ 1701 Record of substance required........ 713.01, 713.04 Reexamination
Ex parte ...................................................... 2281 Inter partes .... 2666.30, 2685, 2686.03, 2687
Refused............ 713.01, 713.02, 713.05, 713.10 Requested in continuing application.......... 706.07(b) Requested in Office action................................. 707 Sounding out................................................. 713.03 Special situations........................................... 713.05 Substance made of record............. 713.04, 714.13 Supplemental examination, prohibited in.......... 2814 Telephone..... 101, 408, 713.01, 713.05, 812.01 Time allowed.................................................. 713.01 Video conference............. 713.01, 713.04, 713.05 Videotape showing........................................ 713.01 Where held.................................................... 713.01
Invention (See also: Patent Rejection ) Brief summary........................................... 608.01(d) Detailed description................................... 608.01(g) Made in this country.................................... 2138.02 Mode of operation..................................... 608.01(h)
Inventive entity, Different..... 706.02(k), 706.02(l) to 706.02(l)(3)
Index-56Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
International design application — Inventive entity, Different
Sec. No.Sec. No.
Inventive entity, Same(overlapping subject matter)..... 804, 804.03, 822 Inventor (See also: Applicant Pro se applicant )..... 602.01
Common, at least one..... 211.01, 706.02(k), 2137.01 Continuing application............................... 201.06(c) Correction (See also: Correction of inventorship ) Deceased......... 409, 409.01(a), 409.01(b), 1806
Execution of oath/declaration by legal representative....................................... 602.08(b) Government property rights statement........... 151
Duty of disclosure by.................. 2001.01, 2002.01 Foreign priority..... 210 to 217, 2133.01, 2152.01 Full first or middle name required..... 602.01(b), 602.08(b) Heirs...................................... 409.01(a), 409.01(b) Improper naming.............................................. 2157 Initials as a given name............................. 602.08(b) Insane....................................................... 409.01(b) International application.................................... 1806 Legally incapacitated................................. 409.01(b) Micro entity status.......................................... 509.04 Name change....................... 602.01(c), 602.08b(b)
Correction......... 201.05, 602.01(c), 602.08b(b) Order................................ 602.01(c), 602.08b(b) Petition.............................................. 602.01(c)(3) Typographical, translation error... 602, 602.01(c), 602.08(b)
None available..... 409, 409.02, 409.03(b), 602.08(b)
Proof............... 409.03(a), 409.03(b), 409.03(d) Proof of irreparable damage................. 409.03(g) Proof of proprietary interest..... 409.03(f), 409.05
Order of................................ 602.01(c), 602.08b(b) Pro se ........................................ 707.07(j), 713.01
Refuses to sign..... 402.03, 409.03, 409.03(d), 602.08(b)
Execution of oath..... 602.01(c), 602.08(b), 604 Representative of................................................ 400 Requirements.............................................. 2137.01 Residence................................................. 602.08(b) Rule 1.53(b)............................................... 201.06(c) Rule 1.53(d).............................................. 201.06(d) Self-prosecuted case................... 707.07(j), 713.01 Small entity status......................................... 509.02 Unavailable........ 409, 409.02, 409.03, 602.08(b)
At least one joint inventor available....... 409.03(a) Last known address.............................. 409.03(e)
Proof..................................................... 409.03(d) Proof of irreparable damage................. 409.03(g) Proof of proprietary interest..... 409.03(f), 409.05
Inventor’s certificate Priority benefit................................................ 213.05 Rejection based on................................... 706.02(e)
Inventors Assistance Center................................ 1730 IPS (Interference Practice Specialist).................. 2302 Irreparable damage, Proof of....................... 409.03(g) Issue (See also: Allowance and issue ) Issue batch number (no longer used)............. 1303.01 Issue Classification Form/Sheet/Slip (See also: Form letters and forms )..... 903.07, 906, 907, 1302.09, 1302.10, 1302.13 Issue fee.............................................................. 1306
After payment.............................................. 1306.03 Credit card payment......................................... 1306 Deposit account.................................... 1303, 1306 Failure to pay................................. 711.03(c), 1306 Late payment............................................. 711.03(c) Petition to accept late fee.......................... 711.03(c) Reissue application.......................................... 1415 Who may file..................................................... 1306
Israel Patent Office (ILPO)..... 1840, 1840.05, 1860, 1865 Issue of patent..................................................... 1309
Deferred....................................................... 1306.01 Request for simultaneous issuance............. 1306.02
Issue of patent to applicant.................................... 308 Issue of patent to non-applicant assignee............. 307 Item of information in supplemental examination..... 2809
J
Jacket (See also: File wrapper/history ) Japan Patent Office (JPO)..... 1840, 1840.06, 1860, 1865 Japanese year system................................. 901.05(a) Jepson claim........................................................ 2129 Joinder, Improper................................................... 805 Joinder, generic or linking claim allowable.... 821.04(a) Joinder, product claim allowable.................. 821.04(b) Joinder of inventors....................................... 409.03(j)
Rev. 07.2015, October 2015Index-57
INDEX
Inventive entity, Same(overlapping subject matter) — Joinder of inventors
Sec. No.Sec. No.
Joint application, definition............................... 201.02 Joint application, original oath........... 602.01, 602.09 Joint inventor
Oath................................................ 602.01, 602.09 Power of attorney to.............. 402, 402.01, 402.02 Refuses to sign application..... 409.02, 409.03, 409.03(a) Rights of nonsigning................................... 409.03(i)
Joint inventors......... 201.02, 602.09, 609, 2137.01 Change in order of names......................... 602.01(c) Correction.................................................. 602.01(c) Provisional application................................... 602.09
Joint owners........................................... 301, 301.01 Joint research agreement..... 302, 302.07, 2146 , 2156
Common ownership. 706.02(k), 2146 , 2154.02(c) Double patenting rejection based on disqualified prior art................... 706.02(l)(3), 804, 804.02, 804.03 Evidence required for establishing..... 706.02(l)(2), 717.02(a), 717.02(b), 2146 , 2156 Prior art disqualification under pre-AIA 35 U.S.C. 103(c)..... 706.02(l)(1), 706.02(l)(2), 706.02(l)(3), 2136.01, 2141.01 Prior art disqualification under 35 U.S.C. 102(b)(2)(C)..... 717.02 to 717.02(d), 2154.02(c), 2156 Statutory basis under pre-AIA 35 U.S.C. 103(c)..... 706.02
Joint venture.......................... 706.02(l)(2), 717.02(a) Judicial notice................................................. 2144.03 Judicial review
Ex parte reexamination proceedings............... 1216 Patent applications........................................... 1216 Standards of review by the Federal Circuit... 1216.01
Jurisdiction Allowed application............................ 714.16, 1305 Appealed application............................ 1203, 1210 Application before court.................................... 1216 Interference...................................... 2307.02, 2308
K
Kind Codes................................................... 901.04(a) Kinds of patent documents.................................. 1851 Korean Intellectual Property Office (KIPO)..... 1840, 1840.02, 1860, 1865
L
Laches................................................................. 2190 Lack of unity of invention..... 823, 1844.01, 1845.01, 1850 Lack of utility............................. 608.01(p), 706.03(a) Language, Offensive........................ 608, 1504.01(e) Language of papers.......................................... 608.01 Late payment of issue fee............................ 711.03(c) Law, new interpretation of.................................... 1207 Laws, Patent (See also: Statutes ) Legal representative refuses to sign............ 409.03(c) Letter (See also: Action Form letters and forms Letter, Examiner’s )
Abandoned after allowance........................... 711.05 Congressional inquiry................................ 203.08(a) Drawing transfer......................................... 608.02(i) Official inquiry............................................ 203.08(a) Status............................................................ 203.08
Letter, Examiner’s (See also: Examiner’s Letter ) Letters, receipt and handling................................. 500 Letters of administration............................... 409.01(b) Letters testamentary.................................... 409.01(b) Library, Scientific (See also: Scientific and Technical Information Center (STIC) ) Library services............................................ 901.06(a) License agreements under patent......................... 301
Recording of............................................. 310, 313 License rights clause............................................. 310 License to file foreign application..... 115, 140, 706.03(s) License to file international application...... 140, 1832 Licensee, access.............................................. 106.01 Licensing and Review section..... 115, 120, 140, 150, 502, 502.01, 706.03(b), 706.03(s) Linking claim..... 806.04, 806.05(c), 809, 809.03, 821.04(a)
Transitional application.............................. 803.03(a) List of countries giving right of priority.............. 213.01 List of decisions......................................................... II List of prior art in reexamination.............. 2257, 2657 Literature citation in specification................. 608.01(p) Litigation information, Duty to disclose....... 2001.06(c) Litigation not stayed in reissue....................... 1442.02 Litigation, reexamination copending
Ex parte .......................................................... 2286 Inter partes ............ 2640, 2681, 2686, 2686.04
Litigation related reissue.. 1404, 1442.01 to 1442.05 Litigation, stays............. 1442.03, 1442.05, 2686.04 Living matter (See also: Biotechnology )............ 2105
Index-58Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Joint application, definition — Living matter
Sec. No.Sec. No.
Local representative of attorneys.......................... 408 Locarno international classification designation..... 907
M
Machine, process or product..... 806.05(e), 806.05(f), 806.05(g) Machine Translation...................... 706.02, 901.05(d) Mail (See also: Mail Stop )
Address.............................................................. 501 Depositing correspondence................................ 502 Distribution................................................ 501, 508 Express................................. 502, 513, 711.03(c) Identification............................................. 502, 503 Receipt and handling.......................................... 500 Undelivered................................... 707.13, 1303.02 Zip code.............................................................. 502
Mail date as filing date........................................... 513 Mail stop................................................................ 501
Mail Stop 8 (Solicitor)............ 501, 1216, 1216.01 Mail Stop 10....................................................... 1232 Mail Stop 16 (Refunds).................................. 509.03 Mail Stop AF.................................................. 714.13 Mail Stop Assignment Recordation..... 501, 302.08 Mail Stop Conversion................................ 601.01(c) Mail Stop Document Services..... 103, 501, 601.01(c), 2222, 2232, 2501, 2622, 2632, 2803.02 Mail Stop EBC.................................................... 403 Mail Stop Ex Parte Reexam..... 501, 2222, 2224, 2226, 2231, 2246 Mail Stop Expedited Design........................ 1504.30 Mail Stop Express Abandonment.. 1002.02(r), 1125 Mail Stop Hatch-Waxmen PTE..... 501, 1002.02(b), 2754, 2754 Mail Stop Inter partes Reexam... 501, 2622, 2624 Mail Stop Issue Fee............... 502, 1306, 1306.02 Mail Stop L&R..................................................... 120 Mail Stop Maintenance Fee.................... 501, 2510 Mail Stop MPEP......................................................... Mail Stop OED.......................................... 402, 407 Mail Stop PCT..... 501, 1808, 1821, 1864, 1865 Mail Stop Petitions..... 1002.02(b), 1308, 1901.03, 2580, 2590, 2720 Mail Stop PGPUB............................................. 1126
Mail Stop Reissue............................................. 1410 Mail Stop Sequence (Box SEQUENCE)..... 2422.09, 2429 Mail Stop supplemental examination..... 2806, 2812.03
Mailing action.................................................... 707.12 In ex parte reexamination................................ 2264 In inter parte reexamination............................. 2664
Mailing, Certificate of (See also: Certificate of mailing or transmission (37 CFR 1.8) ) Maintenance Fee Branch..................................... 2501
Contact information........................................... 1730 Maintenance fees (See also: Fee Refunds )..... 1730, 2500
Attorney or agent Handling of requests to withdraw................. 2560 Revocation of power of attorney....... 2501, 2560
Change of correspondence address..... 2501, 2542 Credit card used for payment of............ 2510, 2522 Due dates for payment...................................... 2506 Duplicate Payment............................................ 2532 Facsimile submission............................ 2510, 2515 Fee address.......................................... 2540, 2542 Fee amounts......................................... 2501, 2520 Forms................................................................ 2595 Information available from Maintenance Fee Branch... 2501, 2570 Information required with payment....... 2515, 2530 Insufficient........................................................ 2531 Internet submission.............................. 2510, 2522 Intervening rights in reinstated patents............. 2591 Late................................................................... 2531 Mailing address for maintenance fee documents..... 501, 2501, 2510 Mailing address for payments..... 501, 2501, 2510 Maintenance Fee Branch...................... 2501, 2510 Method of payment........................................... 2522 Micro entity status requirement........................ 2550 Notices – Expiration, Receipt, Reminder.......... 2575 Obligation to pay while reissue is pending... 1415.01, 2504, 2506, 2515 Overpayment.................................................... 2550 Patents subject to payment of........................... 2504 Payment informalities........................................ 2530 Petition to accept..... 2515, 2530, 2531, 2550, 2590 Reexamination.................................................. 2506 Refusal to accept and record payments, Review of..... 2580
Rev. 07.2015, October 2015Index-59
INDEX
Local representative of attorneys — Maintenance fees
Sec. No.Sec. No.
Reinstatement, delayed payment..................... 2590 Reissue patents....... 1415.01, 1443, 2504, 2506 Saturday, Sunday or Federal holiday, due on... 2504, 2506 Small entity status requirements...................... 2550 Special Acceptance.......................................... 2530 Status requests..................................... 1730, 2570
Mandatory Classification.................................. 903.07 Manual, authority of....................................................... Manual of Classification for USPC................ , 902.01 Manuscript decision.......................................... 707.06 Margin, application papers............................... 608.01 Mark of applicant.......................................... 602.08(b) Marking, Security................................................... 121 Markush claim............................. 803.02, 2173.05(h)
Antedating reference for................................ 715.03 Supporting disclosure................. 2163.05, 2164.03
Master classification file (MCF).................... 902.03(a) Material mistake by Office in published PG-Pub.. 1130 Materiality of information regarding patentability (See also: Duty of disclosure ) Mathematical algorithms...... 706.03(a), 2106, 2181 Matter not in original disclosure................... 608.04(a) Means.................................................................. 2181
Broadest reasonable interpretation.................. 2181 Equivalent compared to Doctrine of Equivalents..... 2186 Obviousness..................................................... 2183 Prima facie case of equivalence.......... 2183, 2184
Related issues under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first or second paragraphs..... 2181, 2185 Scope of the identification of prior art............... 2182 Single means claim..................... 2164.08(a), 2181
Means plus function limitations..... 706.02(m), 2106, 2111.01, 2114, 2181 to 2186 Memorandum, citation...................................... 707.06 Merger of ex parte reexamination and reissue.... 2285 Merger of inter partes reexamination and reissue..... 2686.03 Merger of supplemental examination.................. 2821 Method of making and apparatus or product..... 806.05(e), 806.05(f) Metric (S.I.) system usage................................ 608.01 Micro entity status
Application filing limit................................. 509.04(a) Continued obligation to determine micro entity qualification............................................... 509.04(d) Correcting errors in micro entity status....... 509.04(f)
Gross income basis................................... 509.04(a) Institution of higher education basis.......... 509.04(b) .................................................................. 509.04(c) Previously filed patent application exclusion..... 509.04(a) Notification of loss of entitlement to micro entity status......................................................... 509.04(e) ....................................................................... 509.04 ............................................... 509.04(a), 509.04(b)
Microorganisms (See also: Biotechnology ) Microorganisms, deposit of..... 1823.01, 2402 to 2411.05 Microorganisms, patentability of..... 706.03(a), 2105, 2164.06 Militarily Critical Technology List (MCTL)............... 120 Military officer notary........................................ 602.04 Minor, inventor....................................................... 409 Misjoinder, Effect on patent................................... 805 Misjoinder of inventors..... 602.01(c), 1402, 1412.04 Mistake (See also: Correction of patent Errors ) Mistake by Office in Pre-Grant Publication.......... 1130 Mode, Best (See also: Best Mode ) Mode of operation........................................ 608.01(h) Model................................................................ 608.03 Model, return................................................ 608.03(a) Model at interview............................................. 713.08 Motions in interferences (Seealso: Interference:Motions ) Multiple dependent claims
Fee calculation................................ 607, 608.01(n) Handling.................................................... 608.01(n) Restriction practice.................................... 608.01(n)
Multiple papers on same issue in protest.... 1901.07(a) Multiplicity of claims..... 707.07(g), 714.16, 2173.05(h), 2173.05(n) Multiplicity of species.................... 806.01, 808.01(a) Munitions Lists of the International Traffic Arms Regulation (ITAR).................................................. 120
N
NAFTA.......................................................... 715.07(c) Name (See also: Applicant Inventor )
Change.................................. 602.01(c), 602.08(b) Correction.......................... 602.01(c), 602.08(b)
Index-60Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Maintenance fees — Name
Sec. No.Sec. No.
Order.................................. 602.01(c), 602.08(b) Petition........................... 605.04(c), 602.01(c)(3) Translation, typographical error... 602.01(c), 602, 602.08(b)
Change, file sent to Office of Patent Application Processing (OPAP)).................................. 602.08(b) Full first or middle required........................ 602.08(b) Order...................................... 602.08(b), 602.01(c) Signature (See also: Signature ) Uniformity with signature........................... 602.08(b)
Names used in trade.................................... 608.01(v) National Aeronautics and Space Administration (NASA).............................................. 115, 150, 151 National application............................................... 201 National security, application affecting..... 115, 120, 121, 130, 140 National stage application (35 U.S.C. 371)..... 201.01, 1893 to 1896
Compared with national application.................. 1896 Continuation or continuation-in-part..... 1895, 1895.01, 1896 Drawings.................................................. 1893.03(f) Filing date................................................ 1893.03(b) Information disclosure statement..... 609.03, 1893.03(g) Order of examination......................... 708, 1893.03 Petitions related to................................... 1002.02(p) Priority..................................................... 1893.03(c) Unity of invention..................................... 1893.03(d)
Naturally occurring article............................ 706.03(a) Negative limitation....................................... 2173.05(i) Negotiation authority......................................... 713.05 New application (definition).............................. 203.01
Assignment to examiner for examination... 903.08(b) Assignment to examiner in TC for examination..... 903.08, 903.08(a), 903.08(e) Examiner review for completeness..................... 702 Inspection.................................................. 903.08(a) Transfer..................................................... 903.08(a) Transfer refused........................................ 903.08(d)
New examiner, action by................................... 707.01 New ground of rejection by the Patent Trial and Appeal Board.............................................................. 1214.01
In inter partes reexamination............... 2681, 2682 New ground of rejection in inter partes reexamination.. 2671.01 New ground of rejection on appeal................. 1207.03 New matter.................................. 706.03(o), 2163.06
Amendment of disclosure..... 608.04, 2163.03, 2163.04, 2163.07 Claim......................... 608.04, 706.03(o), 2163.03
Appealable............................................ 608.04(c) Claim terminology..................................... 608.01(o) Continued prosecution application (CPA)... 201.06(d) Continuing application.................. 201.07, 2163.03 Design application..... 1503.01, 1503.02, 1504.01(a), 1504.04 Disclosure..................................... 608.04, 2163.06 Divisional application..................................... 201.06 Drawing...................................... 608.04, 706.03(o) Inherent characteristics........ 608.04(a), 2163.07(a) Objection.................................. 706.03(o), 2163.07 Petitionable............................... 608.04(c), 2163.06 Preliminary amendment......... 608.04(b), 714.01(e) Priority........................................ 2163.03, 2163.05 Reexamination, inter partes ...... 2671.01, 2671.02 Reissue application..................................... 1411.02 Rejection................... 608.04, 706.03(o), 2163.06 Specification, petitionable.......................... 608.04(c) Substitute specification............................. 608.01(q) Trademark definition.................................. 608.01(v) When entered................................. 714.19, 714.20
NIRC (See also: Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) PTOL-469 Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) PTOL-2068 ) Nonanalogous art..... 904.01(c), 1302.14, 2131.05, 2141.01(a)
Design applications.................... 1504.02, 1504.03 Nonelected invention
Claims to Added........................................................ 821.03 Canceled.................................... 821.01, 821.02 Eligible for rejoinder........................................ 821 Withdrawn.................................. 821.01, 821.02
Nonelected species Claims to
Canceled.................................... 821.01, 821.02 Eligible for rejoinder........................................ 821 Withdrawn.................................. 821.01, 821.02
Non-English oath or declaration....................... 602.06 Nonnaturally occurring manufacture or composition of matter.................................................................. 2105 Nonpatent literature.......................................... 901.06 Nonprofit organization, claiming status as........ 509.03 Nonprofit organizations..................................... 509.02
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INDEX
Name — Nonprofit organizations
Sec. No.Sec. No.
Nonprovisional application (See also: Application )..... 506, 601 Nonpublication request, Application.................... 1122 Nonpublication Request Under 35 USC 122(b)(2)(B)(i), form PTO/SB/35
Cited..................................................... 1121, 1122 Reproduced...................................................... 1135
Nonreceipt of Office letter............................. 711.03(c) Nonsigning inventor’s rights.......................... 409.03(i) Nonstatutory claim...................... 706.03(a), 2107.01 Nonstatutory subject matter..... 706.03(a), 2105 to 2107.01 Not fully responsive amendment..... 714.02, 2266.01, 2666.30, 2671 Notary jurisdiction.................................................. 602 Notary jurisdiction, military officer.......................... 602 Notary jurisdiction, venue agreement.................... 602 Notary seal............................................................ 602 Notation on file wrapper/history
Foreign application............................................. 202 Parent application........................... 202, 211, 202
Notice, citation.................................................. 707.06 Notice of allowability....................................... 1302.03 Notice of allowance (See also: Allowance and issue Form letters and forms: Notice of Allowance and Issue Fee Due PTOL-85 )............................................. 1303
Assigned application................................. 307, 308 Deceased inventor....................................... 1303.03 Reissue application.................. 1444, 1456, 1457 Secrecy order application......................... 115, 130 Undelivered.................................................. 1303.02
Notice of appeal................................................... 1204 Ex parte reexamination.................................... 2273 Inter partes reexamination....... 2662, 2667, 2674
Notice of cross appeal............ 2662, 2674, 2674.01 Notice of Ex Parte Reexamination Certificate Issuance in the Official Gazette ........................................ 2291 Notice of Ex Parte Request for Reexamination in the Official Gazette .................................................. 2229
Notice of foreign filing after nonpublication request..... 1124 Notice of informal patent application form..... 707.07(a) Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) PTOL-469.. 2234, 2250, 2250.01, 2256, 2262, 2266, 2273, 2274, 2283, 2285, 2287, 2287.01, 2288, 2289, 2296 Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) PTOL-2068..... 2656, 2660.02, 2666, 2666.10, 2666.20, 2671, 2671.01, 2673.01,
2673.02, 2674, 2675, 2682, 2686.01, 2687, 2687.01, 2694, 2696 Notice of Inter Partes Reexamination Certificate Issuance in the Official Gazette ............. 2688, 2691 Notice of New or Revised Pre-Grant Publication.. 1127 Notice of Non-Compliant amendment..... 714, 714.01(e), 714.03 Notice of Pre-Grant Publication........................... 1127 Notice of references cited form (PTO-892)..... 609.02, 609.03, 609.04(a), 609.05(a), 609.05(c), 609.06, 707.05, 707.05(a) to 707.05(e), 707.05(g), 2687 Notices (See also: Publication )................... , 707.06 Notices, maintenance fees...................... 2501, 2575 Nuclear material application......................... 706.03(b) Nucleotide sequences (See also: Biotechnology Sequence rules )..... 803.04, 1823.02, 1848, 1850, 1877, 2400
Publication on web for PG-Pubs....................... 1121 Restriction practice................ 803.04, 1850, 2434
Nullification of double patenting rejection......... 804.01 Number, Application.................................... 503, 506 Number, Drawing reference character......... 608.01(g) Number, Serial............................................. 503, 506 Numbering paragraphs of letter.................... 707.07(k)
O
Oath (See also: Declaration ) Antedating reference (See also: Affidavit, of prior invention to overcome a pre-AIA 35 U.S.C. 102 or 103 rejection(37 CFR 1.131) ) Non-English................................................... 602.06 Original (See also: Oath, Original, Rule 1.63 )..... 602.01(a), 602.01(b), 602.01(c) Plant application (Rule 1.162).......................... 1604 Reissue (Rule 1.175)......... 706.03(x), 1414, 1444
Supplemental.......................................... 1414.02 Substitute....................................................... 602.02 Supplemental.................................. 601.05(b), 603 Supplemental and allowance......................... 603.01 Traversing rejection (Rule 1.132)........................ 716
Oath, Antedating reference (See also: Affidavit, of prior invention to overcome a pre-AIA 35 U.S.C. 102 or 103 rejection (37 CFR 1.131) )..................................... 715 Oath, International application................... 1893.01(e)
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Nonprovisional application — Oath, International application
Sec. No.Sec. No.
Oath, Original, Rule 1.63..... 602.01(a), 602.01(b), 602.01(c)
Administering...................................................... 602 Amendment............................................... 602.01(c) Attorney administers........................................... 602 Consular certificate........................................ 602.04 Continuing application................ 602.01(c), 602.05 Copies, filing of................................................... 602 Date of execution........................................... 602.05 Declaration in lieu of, Rule 1.68........... 602, 602.01 Defective........... 602, 602.01(b), 602.02, 602.03 Delayed filing...................................................... 506 Divisional application............. 602.05(a), 602.05(b) Executed before alteration of specification..... 602.02 Execution............................................................ 602 Facsimile............................................................. 602 Foreign execution.......................................... 602.04 Foreign-filed applications listed..... 214, 214.03, 602.01(b) Invalid, By attorney in case................................. 602 Jurisdiction of notary............................ 602, 602.03 New required.................................. 602.01, 602.02 Notary................ 602, 602.03, 602.04, 602.08(b) Notary certificate................................. 602, 602.03 Notary jurisdiction............................................... 602 Refers to preliminary amendment............. 602.01(c) Seal.................................................................... 602 Seal, Foreign application............................... 602.04 Seal, Not required............................................... 602 Signed before alteration of specification.... 602.08(b) Substitute............................................. 602.02, 604 Venue.................................................................. 602
Oath, Supplemental, Rule 1.67............................. 603 After allowance............................... 603.01, 714.16 Change of inventorship.................... 602, 602.01(c)
Oaths, Conflicting.......................... 201.03, 602.01(c) Object of invention........................................ 608.01(d) Objection contrasted with rejection................... 706.01 Objection, Dependent claims....................... 608.01(n) Objection to formal matters, When made..... 707.07(a), 707.07(j), 710.02(b), 714.14 Obvious error, correction.................... 1302.04, 1305 Obviously informal application.......................... 702.01 Obviousness..... 706.02, 706.02(j), 2141 to 2146, 2158
Age of reference............................................... 2145 Analogous prior art..... 1504.03, 2141.01(a), 2145 Design applications..................................... 1504.03 Form paragraphs used for rejection......... 706.02(m)
Number of references....................................... 2145 Ordinary skill, level of................................... 2141.03 Prima facie case... 2142 to 2143.03, 2144, 2158
Predictability............................................ 2143.02 Rebuttal against........................................... 2145
Process claims, nonobvious product........... 2116.01 Provisional rejection.................................. 706.02(k) Ranges........................................................ 2144.05 Rationale for................................. 2144 to 2144.09
Adjustable, making.................................. 2144.04 Aesthetic design changes....................... 2144.04 Automating manual activity...................... 2144.04 Duplication of parts................................. 2144.04 Elimination of element or step................. 2144.04 Equivalence, art-recognized.................... 2144.06 Genus-species........................................ 2144.08 Integral, making....................................... 2144.04 Omission of element or step.................... 2144.04 Portable, making...................................... 2144.04 Proportion changes................................. 2144.04 Purifying old product................................ 2144.04 Ranges.................................................... 2144.05 Rearrangement of parts.......................... 2144.04 Reversal of parts..................................... 2144.04 Separable, making................................... 2144.04 Sequence, change in............................... 2144.04 Shape changes....................................... 2144.04 Size changes........................................... 2144.04 Species-genus......................................... 2144.08
Rebuttal arguments by applicant...................... 2145 Teaching away in prior art................ 2141.02, 2145
Offenlegungsshriften.................................... 901.05(b) Offensive language.......................... 608, 1504.01(e)
Redacted in Pre-Grant Publication................... 1132 Offensive subject matter................. 1003, 1504.01(e) Offer to sell........ 706.02(c), 2133.03(b), 2152.02(d) Offer to surrender original patent (not required)... 1416 Office action (See also: Action ) Office action in ex parte reexamination... 2260, 2262 Office action in inter partes reexamination..... 2660, 2671
Not closing prosecution............................... 2671.01 Reopening prosecution after ACP.... 2673, 2673.01 Reopening prosecution after Examiner’s Answer..... 2679 Reopening prosecution after RAN........ 2676, 2677
Office date stamp...... 505, 506, 710.01(a), 714.18 Office hours........................................................... 510
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INDEX
Oath, Original, Rule 1.63 — Office hours
Sec. No.Sec. No.
Office of Congressional Relations................ 203.08(a) Office of Electronic Information Products........ , 1730 Office of Enrollment and Discipline..... 402, 402.01, 407, 410, 502, 510, 601.03, 602, 714.01(a), 1002.02(k)(1), 1002.02(m)
Mailing address.................................................. 501 Office of General Law............................ 1002.02(k)(2) Office of Initial Patent Examination (See also: Office of Patent Application Processing )
Office of Patent Application Processing (See also: Incoming-Mail Section )..... 201.03, 201.06(c), 201.06(d), 202, 203.08, 402, 402.01, 409.03, 501, 502, 503, 506, 601, 601.01(d), 601.01(f), 601.01(g), 602.01, 602.01(c), 602.01(c)(1), 602.01(c)(3), 602.03, 602.05(b), 602.08(b), 608.01, 608.01(b), 608.01(f), 608.01(n), 608.02, 608.02(a), 608.02(b), 608.05, 609.07, 714.16(d), 903.08(a), 1306, 1414, 2501
Application Assistance Unit.......................... 1730 Contact information...................................... 1730 Petitions handled................................. 1002.02(q)
Office of Patent Classification....... 903, 903.05, 906 Office of Patent Legal Administration (OPLA) (See also: Central Reexamination Unit (CRU) )..... 103, 506.02, 1002.02(b), 1449.01, 1457, 2227, 2236, 2239, 2284, 2285, 2287, 2642, 2667, 2668, 2686.01 to 2687 Office of Patent Publications (Office of Data Management)..... 104, 502, 502.01, 603.01, 608.01(m), 608.02(z), 711.01, 714.16(d), 724.05, 903.07, 1120, 1121, 1122, 1125, 1126, 1302.05, 1302.12, 1303.01, 1308, 1309, 1309.02, 1611, 2229, 2283, 2287, 2295, 2686.01, 2687
Hand-delivery of papers to................................. 502 Petitions decided...................................... 1002.02(r) Pre-Grant Publications Division..... 502, 502.01, 1125, 1126, 1730
Telephone number........................................ 1730 Office of Patent Quality Assurance..... 1302.04, 1308.03 Office of Petitions. 106, 201.03, 201.06(c), 211.04, 502, 601.01(d), 601.01(g), 601.02, 602.01(c)(3), 609.04(b), 1002.02(b), 1308
Location and phone number............................. 1730 Office of Policy and External Affairs................. 213.01 Office of Public Records..... 103, 104, 711.03(d), 1128, 1309, 1730
Hand-delivery of papers to................................. 502 Office of Solicitor..... 311, 1002.02(k)(3), 1216.01, 1216.02, 1701.01, 1720, 1721, 2207, 2240, 2681
Mailing address.................................................. 501
Office of the Commissioner for Patents..... 1721, 1901.03, 1902.01
Duty of disclosure to.................................... 2001.03 Office of the Deputy Commissioner (Associate Commissioner) for Patent Examination Policy.. 502.03, 1002.02(b), 1721, 2677
Petitions decided by................................ 1002.02(b) Official action......................................................... 707 Official Gazette(O.G.)..... , 403, 409.03, 409.03(h), 1703
Claim published........................................... 1302.09 Reissue application...................................... 1455 From ex parte reexamination certificate...... 2287 From inter partes reexamination certificate.. 2691
Copies and Subscriptions................................. 1703 Defensive publications............................... 711.06(a) Designating classification............................ 1302.09 Drawing figure.............................................. 1302.09 eOG:P............................................................... 1703 Issuing as U.S. patent.................................... 901.05 Notice of ex parte reexamination certificate.... 2288, 2291 Notice of inter partes reexamination certificate..... 2688, 2691 Notice of Certificate of Correction......... 1480, 1485 Notices ............................................................ 1703
Notices of maintenance fees due......... 2501, 2575 Notice of ex parte reexamination request........ 2229 Online............................................................... 1703 Patents ............................................................ 1703
Published electronically.................................... 1703 Publishing disclaimers...................................... 1490 Reissue application filing notice..... 1430, 1441, 1441.01, 1443, 1457, 1470, 1703 Statutory Invention Registration (SIR).............. 1111 Trademarks ..................................................... 1703
Official inquiries............................................ 203.08(a) Official Notice................................................. 2144.03 OIPE (See also: Office of Initial Patent Examination (Office of Patent Application Processing) ) “Old art” use in deciding request for reexamination..... 2242, 2642 Old combination.......................................... 2173.05(j) Omission in reply, inadvertent..... 710.02(c), 2266.01, 2666.30 Omnibus claim......................... 706.03(d), 2173.05(r) On-line search (See also: Electronic databases )..... 706.02(e), 901.06(a), 902.03(e) On sale (See also: Public Use ).. 706.02(c), 2133.03, 2133.03(b), 2152.02(d)
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Office of Congressional Relations — On sale
Sec. No.Sec. No.
Affidavit or declaration................................... 715.10 Anticipation rejection.......... 2133.03(b), 2152.02(d) Buyer....................................................... 2133.03(b) Commercial activities..... 2133.03, 2133.03(c), 2133.03(e), 2133.03(e)(1), 2152.02(d) Completion of the invention.... 2133.03, 2133.03(b), 2133.03(c), 2133.03(e)(1), 2133.03(e)(3)
Admission of completion by 37 CFR 1.131 affidavit................................................ 2133.03(c)
Definition of........................ 2133.03(b), 2152.02(d) Conditional sale.................................. 2133.03(b) Nonprofit sale...................................... 2133.03(b) Sale of rights....................................... 2133.03(b) Single sale.......................................... 2133.03(b)
Delivery of offered goods........................ 2133.03(b) Device embodying process.......................... 2111.02 Evidence of (prior art publications).......... 2133.03(b) Experimental use (See also: Experimental use )..... 2133.03, 2133.03(e), 2152.02(d) Goods “on hand”..................................... 2133.03(b) “In this country”....................................... 2133.03(d) Invention.................................................. 2133.03(c) Intent to sell................... 2133.03(b), 2133.03(e)(2) Offer for sale............................................ 2133.03(b) Policy considerations................................... 2133.03 “Ready for patenting”................................ 2111.03(c) Reduction to practice......... 2133.03(c), 2133.03(e) Sale by inventor or associate.................. 2133.03(b) Sale by third party................................... 2133.03(b)
Testing by third party..... 2133.03(e)(5), 2133.03(e)(7)
Sale of a process..................................... 2133.03(c) Sale of “rights”......................................... 2133.03(b) Secrecy.................................. 2133.03, 2133.03(b) Supervision and control over invention..... 2133.03(e)(5), 2133.03(e)(7) Test for determining if impermissible sale occurred..... 2133.03(b)
Operating hours (See also: Hours of operation ) Operative................................... 2164.07, 2164.08(b) Operative example....................................... 608.01(p) Operative, Showing................................ 608.03, 716 Opposition to issue of patent (See also: Protest ) Oral hearing in reexamination
Ex parte .......................................................... 2276 Inter partes ................. 2662, 2675, 2677, 2680
Open to public.............................................. 2680 Oral hearing on appeal........................................ 1209 Order, citation of............................................... 707.06
Order granting ex parte reexamination............... 2246 Order granting inter partes reexamination..... 2646, 2660
Returned as undelivered.................................. 2654 Order of examination........................... 708 to 708.03
Patentability report.................................... 705.01(b) Order for compliance....................................... 1210.01 Ordering
Abandoned file....................... 711.04(b), 901.01(a) Foreign patent........................................... 901.05(c) Patented file........................... 711.04(b), 901.01(a) Publication................................................. 901.06(b) Reexamination, decision
Ex parte ......................... 2246, 2247, 2247.01 Inter partes ................................................. 2646
Orders (See also: Publication ).................... , 707.06 Ordinary and customary meaning of claim term. 2106, 2111.01
Evidence of.................................................. 2111.01 Original application (See also: Nonprovisional application ) Original disclosure, inherent characteristics..... 608.04(a), 716.02(f) Ornamentality lacking in design applications..... 1504.01(c) Outstanding requirements............................ 707.07(e) Overcoming a reference, Right of priority..... 216, 706.02(b)(1) Overlapping applications
Same applicant. 709.01, 715.01(a), 804, 804.02, 822 Same assignee.. 706.02(f)(2), 706.02(k), 706.02(l) to 706.02(l)(3), 709.01, 715.01(b), 822 Subject to joint research agreement..... 706.02(l)(1) to 706.02(l)(3), 804, 804.02, 804.03, 2136.01, 2141.01, 2156
Overlapping claims........................................... 804.02 Oversight of inter partes reexamination.............. 2689 Owner’s representative.......................................... 400 Ownership and assignment..... 300, 706.02(l)(2), 706.02(l)(3), 717.02(a) Ownership at time invention made..... 706.02(k), 706.02(l) to 706.02(l)(3), 717.02(a) Ownership of applications filed subsequent to recording of assignment........................................................ 306
Rev. 07.2015, October 2015Index-65
INDEX
On sale — Ownership of applications filed subsequent to recording of assignment
Sec. No.Sec. No.
P
PAIR..... 102, 104, 203.08, 1121, 1128, 1730, 2206, 2209, 2232, 2232.01, 2257, 2264, 2290, 2632 PALM..... 101, 102, 711.04(b), 1704, 1705, 1845.02, 1893, 1893.03(a), 1893.03(b), 1895.01, 2229, 2232.01, 2235, 2246, 2247, 2287, 2294, 2632, 2635, 2647.02, 2648, 2660, 2664, 2670, 2687, 2689
Application location........................................... 2635 Application records and reports........................ 1704 Application status............................................... 102 Examiner Docket, Time, and Activity Reports... 1704, 1705 “Flag” in reissue application.............................. 1456
Panel Review in ex parte Reexamination..... 2236, 2246, 2247, 2262, 2271, 2271.01, 2275, 2281, 2287, 2289 Paper, easily erasable....................... 608.01, 714.07 Paper number.................................... 714.18, 714.21 Paper size (See also: A4 size paper )
Application papers......................................... 608.01 Drawings........................................................ 608.02 Photographs.................................................. 608.02 Substitute drawings................................... 608.02(h)
Papers (See also: Return of Papers ) Depositing........................................................... 502 Distribution.......................................................... 508 File wrapper................................................... 719.01 Identification............................................. 502, 503 Receipt and handling.......................................... 500 Received after patenting or abandonment..... 508.02 Signature required.............................................. 402 Submitted in reissue litigation........................... 1404
Parent application data, Cross-noting.......... 202, 211 Parent application review..... 707.05, 719.05, 904, 2001.06(b) Paris Convention (See also: Treaties )............. 213.01
Article 4 Cited.... 213.01, 213.03, 213.06, 215.03 Partial signatory authority.................................... 1005 Patent
1836 (present) series..................................... 901.04 A.I. series....................................................... 901.04 Allowance and issue......................................... 1300 Application publication....................... 1120 to 1135 Arrangement in Examiner’s Search Files....... 901.07 Assignment......................................................... 301 Citation handling............................................... 1920 Citation of prior art in............................ 1920, 2202
Claim copied (See also: Claim presented corresponding to claim of patent ) Classification change..................................... 903.05 Classification indices.................. 902.03, 902.03(a) Classification Home Page on the Internet.. 902.03(a) Classification Home Page on the USPTO Intranet..... 902.03(b) Copy in ex parte reexamination request.......... 2219
Double column format...................... 2214, 2219 Copy Orders..................................................... 1730 Correction of..................................................... 1400 Definition.................................................. , 2135.01 Design.............................................................. 1500 Design series................................................. 901.04 Design vs Utility........................................... 1502.01 Effective date..... 706.02(a), 715, 715.01, 2126, 2133.01, 2152.02(a), 2154.01(b) Extension (See also: Term, Patent ) File reconstruction......................................... 508.04 Files........................................................... 901.01(a) Foreign (See also: Foreign patent ) General Information About, booklet.................... 703 Issue................................................................. 1300 Issue Notification form................................. 1306.03 Index.......................................................... 902.03(b) Interference................................... 2304 to 2304.05 Inventorship................................................. 2137.01 Jurisdiction........................................................ 1305 Law, opinions not given................................. 713.02 Laws (See also: Statutes ) Licensing............................................................ 301 Litigation relating to reissue......................... 1442.04 Ordering electronic copy of sequence listing..... 2435 Ordering soft copy.......................................... 905.02 Owner, appeal by.............................................. 1204 Owner, service of citation on............................ 2208 Owner’s address in reexamination........ 2222, 2622 Ownership.......................................................... 301 Plant series........................................ 901.04, 1600 Post-issuance information updating.................. 2501 Prior art citation in....................................... 2003.01 Printing priority.................................................. 1309 Publication of application................... 1120 to 1135 Reconstruction of file..................................... 508.04 Reference (See also: Reference ) Reissue series............................................... 901.04 Reissued, effect of............................................ 1460
Index-66Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
PAIR — Patent
Sec. No.Sec. No.
Right to exclude others..... 509.02, 1111, 1601, 2162 Rules (See also: Rules, Patent (Code of Federal Regulations) ) Simultaneous issue...................................... 1306.02 Statutory subject matter..... 706.03(a), 2104, 2107 Surrender of original in reissue (not required)... 1416 Statutes (See also: Statutes ) System, Constitutional basis for................................. Term adjustment................................ 2710 to 2736 Terms (See also: Term, Patent ) Transfer.......................................................... 903.05 Transfer of rights in........................................ 509.02 Type, Design vs utility.................................. 1502.01 Utility series.................................. 901.04, 1502.01 Utility vs design............................................ 1502.01 X series.......................................................... 901.04
Patent and Trademark Assignment System..... 302.09, 302.10 Patent and Trademark Office (PTO or USPTO)
Address.................................................... 501, 502 Business hours................................................... 510 Employees, property interest in patent............... 309 Employees, unavailable to sign oath or declaration as inventors............................................................. 409 Matters decided by various officials.................. 1000 Publications................................................................
Attorneys and Agents Registered to Practice Before the United States Patent and Trademark Office..... 401 Development and Use of U.S. Patent Classification Systems..................................................... 903.02 Official Gazette of the United States Patent and Trademark Office (See also: Official Gazette (O.G. ) )
Receipt and handling of mail.............................. 500 Telephone numbers.......................................... 1730 Web site............................................................ 1730
Patent Assistance Center (See also: Inventors Assistance Center ) Patent attorney or agent (See also: Attorney or agent ) Patent classification in USPC (See also: Classification Prior Art )............................................................... 900
Classes..... 707.05(e), 902.01, 902.02, 903.02(b) Cross references........................ 903.07, 903.07(a) Digests........................................................... 903.07 Issue slip........................................................ 903.07 Manual of Classification for USPC............. , 902.01 Master classification file (MCF)................. 902.03(a)
Post classifier (See also: Post classifier ) Shoes........................... 901.05(c), 901.07, 905.04 Statutory authority......................................... 903.01 Subclasses.................. 707.05(e), 902.01, 902.02
Patent Cooperation Treaty (PCT) (See also: International application Treaties )............... 1800, T
Administrative Instructions.................................... AI Agent................................................................ 1807 Amendment before the designated office..... 1893.01(a)(2), 1893.01(a)(3) Amendment of claims before the International Bureau.............................................................. 1853 Applicant............................................... 1806, 1821 Applicant for United States Receiving Office.... 1805, 1810, 1820 Basic flow timeline............................................ 1842 Classification of application....................... 903.08(b) Classification of subject matter........ 1844.01, 1879 Common representative................................... 1807 Concepts, major................................................ 1801 Country codes.................................................. 1851 Definitions......................................................... 1802 Design patents............................. 1501.01, 1503.01 Designated office.................................... 1893.01(a) Designation of states........................................ 1821 Fees............................................. 1827, 1893.01(c) Filing date requirements.................... 502.05, 1810 Foreign filing license......................................... 1832 Foreign patent citation codes............................ 1851 Forms
IB/307.................................................. 1893.03(e) IB/308............................................. 1893.01(a)(1) PCT/DO/EO/903..... 1893.01(a)(3), 1893.03(a), 1893.03(b), 1893.03(e), 1893.03(g), 1895.01 PCT/DO/EO/905..... 905, 1893.01(a)(1), 1893.01(d), 1893.01(e), 1893.03(b) PCT/ISA/203........................................... 1843.04 PCT/ISA/206................................................ 1850 PCT/ISA/210..... 1843.04, 1844, 1844.01, 1845.01, 1845.02, 1893.03(e) PCT/ISA/217............................... 1836, 1844.01 PCT/ISA/220............................... 1844, 1845.02 PCT/ISA/237..... 1843.04, 1844, 1845.01, 1845.02 PCT/IPEA/401.................................. 1864, 1865 PCT/IPEA/405............................. 1875, 1875.01 PCT/IPEA/408..... 1860, 1874, 1876, 1878, 1879
Rev. 07.2015, October 2015Index-67
INDEX
Patent — Patent Cooperation Treaty (PCT)
Sec. No.Sec. No.
PCT/IPEA/409..... 1871, 1874, 1878, 1878.01(a), 1879, 1893.03(e) PCT/IPEA/410......................................... 1864.04 PCT/IPEA/411.............................................. 1876 PCT/IPEA/412............................. 1836, 1876.01 PCT/IPEA/416............................. 1879, 1879.02 PCT/IPEA/420......................................... 1875.02 PCT/IPEA/428......................................... 1878.02 PCT/RO/101..... 1801, 1812, 1821, 1828, 1844.01 PCT/RO/117....................................... 1893.03(e) PCT/RO/136....................................... 1893.03(e) PTO-1382......................................... 1830, 1832 PTO-1390.................. 1893.01(a)(2), 1893.03(a) USPTO/299.................................................. 1850 USPTO/499................................. 1875, 1875.01
Gazette.... 1801, 1821, 1823.01, 1857, 1879.02 Help Desk......................................................... 1730 Information sources.......................................... 1730 International Bureau......................................... 1801 International Patent Legal Administration..... 103, 602.01(c)(3), 1730 International preliminary examination............... 1860 International preliminary examination report..... 1879 International preliminary report on patentability..... 1801, 1845, 1879.03, 1893.03(e) International publication.................................... 1857
Prior art effect.................... 2136.03, 2154.01(a) International search report............................... 1844 International searching authority...................... 1840 Member countries............................................. 1817 National procedure........................................... 1893 National stage (See also: National stage application (35 U.S.C. 371) ) Numbering of sheets... 1812, 1893.03(a), 1895.01 Priority................... 213, 1828, 1893.03(c), 1895
Restoration of.......................................... 1828.01 Priority document.................................... 213, 1828 Publication........................................................ 1857 Receiving office................................................ 1801 Receiving office procedure............................... 1801 Record copy transmittal.................................... 1801 Reply to invitation concerning lack of unity of invention..................... 1850, 1875.02, 1893.03(d) Reply to written opinion............................... 1878.02 Representation before the designated office...... 402 Revocation of agent.......................................... 1808 Schedule of fees............................................... 1827 Search report.................... 707.05, 1302.14, 1844
Secrecy order......................................... 120, 1832 Sequence listings..... 1823.02, 1848, 2422, 2422.03(a)
Transmitted via EFS-Web..... 502.05, 2422.03(a) Signature missing............................................. 1820 Unity of invention.... 823, 1850, 1875, 1893.03(d) Written opinion, preparation................. 1845, 1878 Written opinion, time to reply to....... 1845.01, 1878
Patent Cooperation Treaty Administrative Instructions... Appendix AI
105 Reproduced............................................... 1834 204 Reproduced............................................... 1823 205 Reproduced................................... 1824, 1853 208 Reproduced.......................................... 1823.02 209 Reproduced............................................... 1823 404 Reproduced............................................... 1857 502 Reproduced............................................... 1850 513 Reproduced............................................... 1848 603 Reproduced.......................................... 1875.02 604 Reproduced............................................... 1879 605 Reproduced............................................... 1872 606 Reproduced............................................... 1880 607 Reproduced............................................... 1876
Patent Cooperation Treaty Articles............................ T 3 Reproduced................................................... 1812 5 Reproduced................................................... 1823 6 Reproduced................................................... 1824 7 Reproduced................................................... 1825 11 Reproduced............................ 1810, 1893.03(b) 17 Reproduced................................................. 1843 18 Reproduced................................................. 1844 19 Reproduced................................................. 1853 21 Reproduced................................................. 1857 29 Reproduced................................................. 1857 30 Reproduced................................................... 110 31 Reproduced.... 1864.02, 1864.03, 1865, 1869 32 Reproduced................................................. 1862 33 Reproduced..... 1878.01(a), 1878.01(a)(1), 1878.01(a)(3) 34 Reproduced..... 1862, 1864.01, 1874, 1875, 1878, 1878.02 35 Reproduced................................................. 1879 36 Reproduced........................... 1879.02, 1879.03 37 Reproduced................................................. 1880 38 Reproduced............................................ 1879.04
Patent Cooperation Treaty Rules 4.3 Reproduced........................................... 1844.01 4.9 Reproduced................................................ 1821
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Patent Cooperation Treaty (PCT) — Patent Cooperation Treaty Rules
Sec. No.Sec. No.
4.11 Reproduced......................................... 1828.02 4.12 Reproduced.............................................. 1819 4.15 Reproduced.............................................. 1820 5.1 Reproduced................................................ 1823 5.2 Reproduced........................................... 1823.02 6 Reproduced................................................... 1824 7 Reproduced................................................... 1825 8 Reproduced................................................... 1826 8.1 Reproduced............................... 1826, 1844.01 8.2 Reproduced............................... 1826, 1844.01 11.5 Reproduced.............................................. 1825 11.6 Reproduced.............................................. 1825 11.11 Reproduced............................................ 1825 11.13 Reproduced............................................ 1825 12 bis Reproduced.......................................... 1819 13 Reproduced................................................. 1850 13bis Reproduced....................................... 1823.01 13terReproduced........................................ 1823.02
17 Reproduced.............................................. 213.06 33 Reproduced............................................ 1843.01 37 Reproduced............................................ 1844.01 38 Reproduced............................................ 1844.01 39 Reproduced............................................ 1843.02 40 Reproduced................................................. 1850 41 Reproduced................................................. 1852 43 bis Reproduced............................... 1843, 1845 46 Reproduced................................................. 1853 54 Reproduced............................................ 1864.02 60 Reproduced................................................. 1868 61.2 Reproduced.............................................. 1881 61.3 Reproduced.............................................. 1881 62 Reproduced................................................. 1871 62 bis Reproduced........................................... 1871 64 Reproduced........................................ 1878.01(a) 65 Reproduced................................... 1878.01(a)(2) 66.1 Reproduced......................................... 1843.02 66.1 bis Reproduced........................................ 1878 66.1 ter Reproduced......................................... 1878 66.3 Reproduced......................................... 1878.02 66.4 Reproduced.............................................. 1878 66.4 bis Reproduced................................... 1878.02 66.5 Reproduced......................................... 1878.02 66.6 Reproduced......................................... 1878.02 66.7 Reproduced.............................................. 1870 66.8 Reproduced........................ 1864.01, 1878.02 69 Reproduced............................................ 1879.01 70.17 Reproduced....................................... 1879.03 71 Reproduced............................................ 1879.02
72 Reproduced............................................ 1879.03 82 Reproduced............................................ 1834.02 90.4 Reproduced.............................................. 1807 90.5 Reproduced.............................................. 1807 90.6 Reproduced.............................................. 1808 90 bis.1 Reproduced........................................ 1859 90 bis.2 Reproduced........................................ 1859 90 bis.3 Reproduced........................................ 1859 90 bis.4 Reproduced........................................ 1880 90 bis.5 Reproduced........................................ 1859 90 bis.6 Reproduced........................................ 1859 90 bis.7 Reproduced........................................ 1859 91 Reproduced................................................. 1836 92 Reproduced................................................. 1834
Patent application publication (See also: Pre-Grant Publication (PG-Pub) ) Patent search facility.............................................. 103
Hours...................................................... 510, 1730 Regulations for public use.................................. 510
Patent Law Treaty.................................................. 702 Patent Law Treaties Implementation Act of 2012 (PLTIA)................................................................... 702 Patent term extension/adjustments (See also: Term,Patent )... 1303, 2211, 2250, 2666.01, 2700 PatentTrial and Appeal Board (PTAB) (See also: Appeal Interference )..... 706.03(w), 707.06, 707.07(f), 708.01, 711.02(b), 1201, 1202, 2201, 2242, 2246, 2258, 2261, 2265, 2273 to 2279, 2282, 2284, 2285, 2286, 2286.01, 2287, 2301
Appeal from.................................. 1216 to 1216.02 In ex parte reexamination............................ 2279 In inter partes reexamination........... 2682, 2683
Constitution and duties..................................... 1202 Decision
Dissemination of........................................... 1720 Generally...................................................... 1213 Publication of............................... 1213.03, 2681 Treatment of................................................. 1721
Duty of disclosure to.................................... 2001.03 Hearing............................................................. 1209 Interference
Declaration of............................................... 2301 Return of Jurisdiction to Examiner............... 2308
Jurisdiction..... 706.01, 706.07(c), 1210, 2301, 2308 May require appellant to address matter.......... 1212 New ground of rejection by.......................... 1214.01
In inter partes reexamination........... 2681, 2682
Rev. 07.2015, October 2015Index-69
INDEX
Patent Cooperation Treaty Rules — Patent Trial and Appeal Board (PTAB)
Sec. No.Sec. No.
Non-final decision in inter partes reexamination..... 2681 Petitions.............................. 1002.02(g), 1002.02(j) Rehearing by.......... 1002.02(f), 1214.01, 1214.03
Inter partes reexamination............... 2682, 2683 Service Branch................................................... 104 Statement of allowability by......................... 1213.01
Patentability (See also: Reasons for Allowance Rejection )........................................................... 2100 Patentability report................................................. 705
Appeal....................................................... 705.01(a) Count......................................................... 705.01(c) Date status................................................ 705.01(c) Dispute between examiners...................... 705.01(a) Final action................................................ 705.01(a) Improper.................................................... 705.01(e) Initiate............................................................ 705.01 Interviews.................................... 705.01(f), 713.01 Limitation as to use................................... 705.01(e) Practice used only in extraordinary situations..... 705 Purpose..................................................... 705.01(e) Recording.................................................. 705.01(c) Restriction, Effect on........................................... 807 Search................................... 705.01(a), 705.01(b) Sequence of examination.......................... 705.01(b) Submitted to TC Director........................ 705, 1003 Transfer of jurisdiction of application on appeal..... 705.01(a)
Panel review in inter partes reexamination..... 2671.03 Patentability statement................................... 1302.14 Patentable novelty, pointed out......................... 714.04 Patentable subject matter
Computer programs.......................................... 2106 Disclosed but not claimed................................... 706 Law of nature.................................................... 2106 Living subject matter............................. 1601, 2105 Mathematical algorithms................................... 2106 Plants.................................................... 1601, 2105
Patented file................................................. 901.01(a) Patented file, ordering.................................. 711.04(b) “Patent In” computer program (See also: Sequence rules )....................................................... 1730, 2430 Patents of addition, foreign........................... 901.05(b) Payment of fees..................................................... 509 Payor number (See also: Customer numbers ) PCT (See also: Patent Cooperation Treaty (PCT) ) Pending application as prior art (See also: Application publication )............ 706.02(f)(2), 706.02(k), 901.03 Pending application preserved in confidence........ 101
Pending applications as references (See also: Application Publication )..... 706.02(f)(1), 706.02(f)(2), 706.02(k), 901.03 Period for reply...................................................... 710
After Board decision.................................... 1214.01 After final.................................................... 706.07(f)
In transitional application...................... 706.07(g) After interference....................................... 710.02(b) Amendment after........................................... 714.17 Claim copied from patent.......................... 710.04(a) Claims all allowed.... 707.07(a), 710.02(b), 714.14 Computed................................... 710.01(a), 710.05 Copying claim from patent does not extend statutory period........................................................ 710.04(a) Correction of citation.................. 707.05(g), 710.06 Date of receipt of amendment..... 710.01(a), 710.05 Defective Office action............... 707.05(g), 710.06 Difference between shortened statutory period and time limit.................................................... 710.02(d) Extension............................... 710.02(d), 710.02(e) Extension of time to commence civil action..... 1002.02(k)(1) Extension of time to file notice of appeal at CAFC..... 1002.02(k)(1) Full statutory period for reply.............................. 130 Holiday, Saturday, or Sunday expiration of time..... 505, 513, 710.05, 710.01(a) Incomplete reply..... 710.02(c), 711.02(a), 714.03, 2266.01, 2666.30 Less than six months..... 710.02, 710.02(b), 710.02(c), 710.02(d), 710.02(e) Miscellaneous factors.................................... 710.06 Petition.............................................................. 1002 Pilot programs, some................................ 710.02(b) Property rights under AEC and NASA Acts........ 150 Remailing........................................ 707.13, 710.06 Restarting...................................................... 710.06 Saturday, Expiration of time..... 505, 710.01(a), 710.05 Secrecy order application................................... 130 Shortened, Extension............ 710.02(d), 710.02(e) Shortened statutory period..... 710.02, 710.02(b), 710.02(e) Shortened statutory period, Distinguished from time limit............................................................ 710.02(d) Shortened statutory period, When used..... 710.02(b) Statutory period............................................. 710.01
How computed...................................... 710.01(a) Suggesting claims..................................... 710.02(c)
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Patent Trial and Appeal Board (PTAB) — Period for reply
Sec. No.Sec. No.
Sunday, Expiration of time..... 505, 710.01(a), 710.05 Supplemental action...................................... 710.06 Time computation....................... 710.01(a), 710.05 Time limit action............................................. 710.02 Time limit action, When used.................... 710.02(c) Two periods running................... 710.04, 710.04(a) Withdrawal of attorney or agent during.......... 402.06
Periodicals..................................... 901.06, 901.06(a) Period of enforceability..... 2204, 2211, 2686.02, 2808 Permanent ink................................... 608.01, 714.07 Perpetual motion..... 608.03, 706.03(a), 707.07(g), 2107.01 Persons who may cite prior art relating to an issued patent................................................................... 2203 Pertinent prior art.............................................. 904.02 Petition
Abandonment holding..... 711.02, 711.03(c), 711.03(d), 1002.02(c), 1002.02(p), 1002.02(q), 1002.02(r) Abandonment holding, examiner’s statement..... 711.03(d) Abandonment holding for failure to provide timely notice of foreign filing........................................ 1124 Accept color drawings or photographs..... 507, 1002.02(d), 1503.02 Accepting late issue fee............................. 711.03(c) Accept omitted pages.............................. 1002.02(p) Access to application..... 103, 1002.02(b), 1002.02(p) Access to interference agreement............ 1002.02(f) Access to interference application............ 1002.02(f) Access to unopened preliminary statements..... 1002.02(g) Add inventor in provisional application..... 1002.02(q) Admit model............................................ 1002.02(c) Attorney withdrawal..... 1002.02(b), 1002.02(c), 1002.02(p) Biotechnology processes under pre-AIA 35 U.S.C. 103(b)........................................................ 706.02(n) Board decision in inter partes reexamination... 2681 Board involved..... 1002.02(f), 1002.02(g), 1002.02(j) Certificate of Correction..... 1002.02(d), 1002.02(g), 1002.02(l) Change in inventorship..... 1002.02(d), 1002.02(l), 1002.02(p), 1002.02(q), 1004, 1481 Change inventor’s name........ 602.01(c), 602.08(b) Change in order of inventors names......... 602.01(c)
Color drawings or photographs..... 507, 1002.02(d), 1503.02 Common ownership situation.................... 706.02(k) Concurrent ex parte and inter partes prosecution..... 1002.02(g) Consideration of submission after NIRC in inter partes reexamination.............................................. 2687.01 Converting a 111(a) application to a 371 application... 1002.02(p) Converting a 371 application to 111(a) application..... 1002.02(p) Converting a nonprovisional to provisional..... 1002.02(b), 1002.02(c), 1002.02(p), 1002.02(q) Correct filing date..... 506.02, 513, 601.01(b), 1002.02(b) Correction of inventorship..... 201.03, 1002.02(d), 1002.02(l), 1002.02(p), 1002.02(q), 1004
In ex parte reexamination....................... 2250.02 In inter partes reexamination...... 2658, 2666.03
Counter-terrorism inventions..... 708.02, 1002.02(s) Defer issuance....................... 1002.02(b), 1306.01 Delegation of Director’s authority................. 1001.01 Denial.......................................................... 1002.02 Denial of request for reexamination......... 1002.02(c)
Ex parte ..... 2240, 2246, 2247, 2247.01, 2248, 2255, 2265 Inter partes ..................................... 2647, 2648
Director’s duties............................................ , 1002 Dismissed.................................................... 1002.02 Dismissed without prejudice........................ 1002.02 Divisional reissue.................................... 1002.02(b) Entry of amendment................................ 1002.02(d) Entry of amendment after RAN in inter partes reexamination...................... 2672, 2673.02, 2675 Entry of late paper for revival of ex parte reexamination.............................. 1002.02(b), 2268 Entry of late papers for revival of inter partes reexamination proceeding........... 1002.02(b), 2668 Expedited examination of design applications.... 501, 1002.02(c)(3) Express abandonment after payment of issue fee..... 1002.02(b) Express abandonment to avoid pre-grant publication.. 502, 1125, 1135
Facsimile submission................................ 502.01 Expunge papers from file.... 1002.02(b), 1002.02(c) Expunge information................. 724.05, 1002.02(c) Extension of time... 710.02(e), 714.17, 1002.02(q)
Application before Office of Patent Legal Administration..................................... 1002.02(b)
Rev. 07.2015, October 2015Index-71
INDEX
Period for reply — Petition
Sec. No.Sec. No.
Application before Office of Petition..... 1002.02(b) Filing date..... 506.02, 513, 601.01(b), 601.01(d), 601.01(f), 601.01(g), 1002.02(b) Final rejection.......................................... 1002.02(c) Foreign filing license................. 140, 1002.02(c)(1)
Facsimile submission................................ 502.01 Inspection........................................................... 103 Interference..... 1002.02(c), 1002.02(f), 1002.02(g) Interview in merged reissue/ inter partes reexamination.............................................. 2686.03 Late foreign priority claim........................ 1002.02(b) Maintenance fees, accept and record..... 1002.02(b), 2580 Maintenance fees, delayed payment/reinstatement..... 1002.02(b), 2515, 2531, 2590 Make special (See also: Special application )..... 708.02, 1002.02(s), 1504.30 Matter subject to............................ , 706.01, 1002 Merge reexaminations................. 1002.02(b), 2283 Merge reissue and ex parte reexamination..... 1002.02(b), 2285 Merge reissue and inter partes reexamination..... 1002.02(b), 2667, 2686.03 Modification of secrecy order.............................. 120 New matter........................... 608.04(c), 1002.02(c) Nonsigning inventor..... 409.03, 409.03(d), 1002.02(b), 1002.02(p) Objection by examiner............................. 1002.02(c) Patent term extension..... 1002.02(b), 2720, 2754 Period for filing.................................................. 1002 Premature Action Closing Prosecution (ACP) in inter partes reexamination........................................ 2672 Premature final rejection...... 706.07(c), 1002.02(c) Preliminary amendment as part of original disclosure.................................................. 608.04(b) Procedure.................................................... 1002.01 Public use proceedings........................... 1002.02(b) Publication Division.................................. 1002.02(r) Reconsideration of denied petition ( ex parte reexamination)...................................... 2248, 2268 Rescission of secrecy order......... 120, 1002.02(c)(1) Refused assignment................................. 313, 317 Refusal to enter amendment................... 1002.02(c) Refusal to initiate interference................. 1002.02(c) Refusal to issue Certificate of Correction..... 1002.02(c) Registration to practice........................... 1002.02(m) Reinstate rejection after Board decision... 1002.02(c) Reinstatement........................................ 1002.02(m)
Relating to PCT international application and/or national stage application........................ 1002.02(p) Relating to reexamination or reissue....... 1002.02(b) Reopen prosecution after Board decision..... 1002.02(c) Reopen prosecution after Board decision in inter partes reexamination........................................ 2682 Requirement for information.................... 1002.02(c) Resetting period for reply........................ 1002.02(c) Restriction requirement holding..... 821.01, 1002.02(c) Retroactive foreign filing license......................... 140 Return model........................................... 1002.02(c) Return original oath................................. 1002.02(c) Revival..................... 711.03(c), 1002.02(b), 1124 Revive PCT application........................... 1002.02(p) Rule 1.48 (inventorship)................................. 201.03 Secrecy order...................................... 1002.02(c)(1) Sequence rules................................... 1002.02(c)(2) Special status.......... 708.02, 1002.02(s), 1504.30 Stay ex parte reexamination proceedings..... 2283, 2284, 2285, 2286, 2286.01 Stay inter partes reexamination proceedings.. 2667, 2686.02, 2686.03 Sufficiency of an affidavit......................... 1002.02(c) Supervisory authority of Director of the USPTO..... 1002.02(b), 1002.02(c) Suspend action – public safety or defense..... 1002.02(c)(1) Suspend rules......................................... 1002.02(b) Suspension of second or subsequent inter partes reexamination requests.................................... 2640 Time for filing.................................................... 1002 Trademark related..................................... 1002.02(i) Transfer from another application..... 608.02(i), 608.02(t) Unintentional delay, withdraw abandonment..... 711.03(c), 1002.02(b), 1002.02(c)(3), 1306
Failure to provide timely notice of foreign filing..... 1124
Unintentionally delayed claim for foreign priority..... 214.02, 216, 1002.02(b), 1402, 2258.02, 2658 Unintentionally delayed claim for priority to a U.S. application..... 201.06(c), 211.04, 1002.02(b), 2258.02, 2658 Vacate order granting request for ex parte reexamination................................................... 2246 Vacate an order granting inter partes reexamination.. 2646 Waive rules.............................................. 1002.02(b)
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MANUAL OF PATENT EXAMINING PROCEDURE
Petition — Petition
Sec. No.Sec. No.
Waive time provisions in ex parte reexamination..... 2265 Waive time provisions in inter partes reexamination... 2648, 2668, 2672 Withdrawal of lapsed patent..................... 1002.02(r) Withdrawal from issue, after issue fee paid..... 502, 1002.02(b), 1308 Withdrawal from issue, issue fee not paid..... 1002.02(c), 1308 Withdrawal of a terminal disclaimer.................. 1490 Withdrawal of abandonment.................... 1002.02(b) Withdrawal of attorney............................. 1002.02(s)
In interference..................................... 1002.02(g) Withhold from issue, before issue fee paid..... 1002.02(c)
Petition for Express Abandonment to Avoid Publication Under 37 CFR 1.138(a) PTO/SB/24A
Cited................................................................. 1125 Reproduced...................................................... 1135
Petition for Revival of an Application For Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing PTO/SB/64a
Cited................................................................. 1124 Reproduced...................................................... 1135
Petitionable matter............................................ 706.01 PG-Pub (See also: Pre-Grant Publication (PG-Pub) ) Pharmaceutical subject matter
Safety review by FDA................................... 2107.03 Utility............................................................ 2107.01
Photograph as drawing.......... 507, 608.02, 1503.02 Piecemeal prosecution................................. 707.07(g) Plant Breeder’s Rights......................................... 1613 Plant Convention, UPOV..................................... 1612 Plant patent......................................................... 1600
Action................................................................ 1610 Advertising........................................................ 1610 Affidavit............................................................. 1610 Agricultural Research Service (ARS).... 1608, 1609 Allowance......................................................... 1611 Application publication....................... 1120 to 1135 Asexual reproduction............................ 1601, 1605 Bacteria............................................................ 1601 Claim.................................................... 1605, 1610 Color drawing........................................ 1603, 1606 Color identified.................................................. 1605 Declaration........................................................ 1604 Definitions......................................................... 1601 Department of Agriculture..................... 1608, 1609 Deposit............................................................. 1605
Duplicate papers....................... 1603, 1605, 1609 Elements of application.................................... 1603 Examination...................................................... 1608 Examiner’s amendment.................................... 1610 Executive Order................................................ 1608 Filing not permitted via EFS-Web.................. 502.05 Issue................................................................. 1611 Laudatory expressions..................................... 1610 Method claim improper..................................... 1605 Oath.................................................................. 1604 Parts................................................................. 1603 Plant varieties excluded.................................... 1601 Priority claim..................................................... 1613 Publication of application................... 1120 to 1135 Report of Agricultural Research Service..... 1608, 1609 Rules applicable............................................... 1602 Signature.......................................................... 1603 Specification......................................... 1605, 1610 Specimens........................................................ 1607 Statutory basis.................................................. 1601 Term.................................................................. 2701 Tubers............................................................... 1601 UPOV Convention............................................. 1612
Plant patent series............................................ 901.04 P.O. Box (See also: Mail stop ) Post classifier....................... 903.08(e), 903.10, 906
Requesting consideration by..................... 903.08(d) Post employment agreement of former Office employee............................................................. 1702 Post Office, Depositing papers in.......................... 502 Post Office address (See also: Correspondence Mail Stop )
Applicant................................................... 409.03(e) Attorney......................................................... 601.02
Postal Service interruptions and emergencies...... 511 Postcard, self-addressed..... 203.08, 503, 601.01(d), 601.01(f), 608.01, 1204, 1901, 1901.05 Power of attorney................................................... 402
Actng in a representative capacity................. 402.03 Application in interference............................. 402.08 Application oath or declaration includes........ 601.02 Application filed before 09/16/2012........... 402.02(b) Application filed after 09/16/2012.............. 402.02(a) Assignee appoints......................................... 402.07 Assignee revokes........................................... 402.07 Associate attorney......................................... 402.02 Attorney not of record............ 402, 405, 714.01(c)
Rev. 07.2015, October 2015Index-73
INDEX
Petition — Power of attorney
Sec. No.Sec. No.
Change in plurality of applications or patents..... 402 Coinventor.......................................................... 403 Customer Number.................................. 402, 1807 Death of applicant........................ 409 to 409.01(b) Death of principal attorney.................................. 406 Exception as to registration............ 402.01, 402.09 General, for international application.. 402.09, 1807 General requirement................................. 402.02(b) Ineffective........................................................... 402 Joint applicant................................................ 402.01 Limited recognition........................................ 402.01 Naming representative........................................ 402 Notice of revocation....................................... 402.05 Post Office address....................................... 601.02 Provisional application........................................ 103 Registered practitioner........................................ 402 Reexamination, inter partes ................ 2613, 2622 Revocation........ 402.05, 402.07, 402.08, 402.10
After Allowance................................ 2501, 2560 Secrecy order applications................................. 120 Signature requirement................................... 402.03 Unregistered attorney or agent............ 402, 402.01 Withdrawal of attorney or agent..... 402.06, 1808, 2560 Withdrawn in patent.............................. 2223, 2560
Power to inspect..... 103, 104, 324, 325, 402, 713.05 Power to inspect, approval..................................... 104 Power to inspect, suspended attorney................... 105 Practitioner (See also: Attorney or agent ) Practitioner’s names on patents.......................... 1309 Pre-Grant Publication (PG-Pub)........... 1120 to 1135
Amendments prior to publication...................... 1121 Appendices not published................................. 1121 Application in a foreign language................... 608.01 Assignee information published........................ 1121 Certification as to intent to file counterpart applications....................................................... 1122 Claim sets, multiple........................................... 1121 Computer programs.......................................... 1121 Content................................................. 1120, 1121 Conversion to provisional to avoid publication..... 601.01(c) Complete application required.......................... 1120 Copies of published application files................. 1128 Correction of errors in the PG-Pub................... 1130 Correspondence address................................. 1121 Correspondence regarding published application..... 1134
Disparaging remarks not published.................. 1120 Disparaging prior art.................................... 2131.05 Drawings..................................... 507, 1120, 1121 Early publication............................................... 1129 Express abandonment to avoid publication..... 502, 1125, 1135
Facsimile submission................................ 502.01 Fee, publication..... 1126, 1133, 1303, 1306, 1306.03 Forms................................................................ 1135 Inappropriate nonpublication request............... 1122 Material mistake by the Office.......................... 1130 Nonpublication request..................................... 1122 Notice of foreign filing....................................... 1124 Notice of Publication......................................... 1127 Notice of New or Revised Publication............... 1127 Offensive language not published..................... 1120 Public access to published application... 103, 1128, 1132 Publication date, projected................... 1120, 1122 Publication fee.......................... 1126, 1133, 1303 RCEs not published.......................................... 1120 Redacted publication........................................ 1132 Refund of publication fee.................................. 1126 Replacement drawings prior to publication..... 507, 1120, 1121 Republication.................................................... 1130 Request for early publication............................ 1129 Request for nonpublication............................... 1122 Request for redacted publication...................... 1132 Rescission of nonpublication request.... 1123, 1124 Residence changed....................................... 719.02 Sequences published on Internet..................... 1121 Status information of published application...... 1128 Substitute specification required....................... 1120 Tables, large.............................................. 608.05(b) Third party inquiries.......................................... 1134 Voluntary publication......................................... 1133 When published................................................ 1120 Which applications............................................ 1120
Preamble, design application......................... 1503.01 Preamble, effect of.......................................... 2111.02 Preamble, Jepson claim...................................... 2129 Predicted tests in specification..................... 608.01(p) Preliminary amendment............................... 714.01(e)
Entry denied.............................................. 714.01(e) Excess claims.................. 506, 714.01(e), 714.10 New matter............................. 608.04(b), 714.01(e)
Index-74Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Power of attorney — Preliminary amendment
Sec. No.Sec. No.
Non-compliant amendment, treatment of........... 714 Preliminary handling of public use or on sale..... 2133.03, 2152.02(c), 2152.02(d) Premature final rejection.............................. 706.07(c) Premature response in inter partes reexamination..... 2667 Primary examiner..... 705.01(a), 706.04, 706.07(c), 706.07(d), 707.01, 710.02(b), 710.02(e), 711.03(a), 713.01, 713.02, 713.10, 714.16, 714.16(d), 714.19, 715.08, 716, 2236, 2248, 2265, 2271, 2271.01, 2636, 2648, 2660, 2671.01 to 2671.03
Actions requiring personal attention..... 705.01(a), 707.01, 707.09, 713.04, 714.16(d), 1004 Name on file wrapper................................... 1302.13
Print of drawing (See also: Drawings )............. 608.02 Additional....................................................... 608.02 Alteration................................................... 608.02(w) Colored.......................................................... 608.02 Examiner’s notation on.................................. 608.02 Kept in Technology Center......................... 608.02(c) Marked-up..... 608.02(b), 608.02(p), 608.02(t), 608.02(v) Marking.......................................................... 608.02 Returned drawing...................................... 608.02(y)
Printed matter nonstatutory.......................... 706.03(a) Printer waiting...................... 708.01, 1305, 1309.02 Printing practitioners names on patents.............. 1309 Printing priority.................................................... 1309 Prior art (See also: Reference )............................ 900
Admissions as................................... 706.02, 2129 Analogous............................................... 2141.01(a) Disqualification under pre-AIA 35 U.S.C. 103(c)..... 706.02(l)(1), 706.02(l)(2), 706.02(l)(3), 2136.01, 2141.01, 2146 Duty of disclosure of.................................... 2001.04 Effects of international application publication.. 1857, 1895.01 Equivalents...................................... 2144.06, 2183 Electronic Information Disclosure Statement.. 609.07 Filed on Saturday Sunday or a Federal holiday..... 609.04(b) Foreign application as.................................. 2135.01 Information reasonably necessary for finding..... 704.11 International application publication..... 706.02(a)(2), 2163, 2163.03 Kind codes................................................ 901.04(a) Level of ordinary skill................................... 2141.03 Patents as..... 706.02(a), 2126, 2132, 2133, 2136, 2141, 2152, 2154, 2158
Publications under 35 U.S.C. 122(b)..... 1895.01, 2136, 2136.03, 2154.01 Scope and content of................................... 2141.01
Means limitations.......................................... 2182 Search (See also: Search )................................ 900 Statutory Invention Registrations as... 901.02, 2136 Suitability of................................................. 2144.07 Third party submissions..................... 609, 1134.01 Used in deciding request for reexamination..... 2242, 2642 Well-known in the art................................... 2144.03
Prior art copies in reexamination Ex parte .......................................................... 2218
Prior art filed by protestor.............. 1901.02, 1901.03 Prior art on drawing.......................... 608.02(g), 2125 Prior art submissions in reexamination proceedings
Ex parte .......................................................... 2202 Content......................................................... 2205 Copies of prior art......................................... 2205 English translations...................................... 2205 Explanation of pertinence............................. 2205 Handling....................................................... 2206 Sample letter................................................ 2205 Service on patent owner............................... 2208 Time for filing................................................ 2204
Inter partes ..... 2602, 2646, 2654, 2656, 2657 After the order to reexamine............. 2602, 2667 After a Notice of Intent to Issue Inter Partes reexamination Certificate issues............. 2687.01 Before the first Office action......................... 2625 Before the order to reexamine.......... 2602, 2654 By another requestor........................ 2602, 2656 By the patent owner......................... 2602, 2656 With the Request.......................................... 2656 With third party’s comments........ 2666.05, 2667
Prior art statement........................... 609, 1893.03(g) Provisional application........................................ 609 Reissue application.......................................... 1418
Prior art, statement applying (reexamination)..... 2217 Prior art used in determining reexamination request
Ex parte .......................................................... 2244 Inter partes ..................................................... 2644
Prior examiner’s action....... 704.01, 706.04, 713.01 Prioritized examination
in new application (Track I)........................ 708.02(b) in RCE (PE-RCE)...................................... 708.02(b)
Priority
Rev. 07.2015, October 2015Index-75
INDEX
Preliminary amendment — Priority
Sec. No.Sec. No.
Claiming in continued prosecution application..... 201.06(d), 1302.04 Claiming in ex parte reexamination............ 2258.02 Claiming in inter partes reexamination............ 2658 Claiming in reissue application.. 1402, 1405, 1417 Entitlement to...................................................... 216 Foreign application (See also: Foreign application )... 210 to 217
Corrected by Certificate of Correction.......... 1481 Design applications................ 1504.02, 1504.10 Ex parte reexamination.......................... 2258.02
Incorporation by reference.......... 217, 608.01(p) Inter partes reexamination........................... 2658
Proper identification................................... 214.04 Formal requirements.......... 210, 211, 706.02(f)(1) Incorporation by reference to earlier application..... 201.06(c), 217, 608.01(p) International application..... 211.01(c), 1828, 1893.03(c)
Corrected by Certificate of Correction.......... 1481 Inventor’s certificate....................................... 213.05 Patent printing................................................... 1309 Petition for unintentionally delayed claim to benefit of prior U.S. application....................... 211.04, 214.02 Prior U.S. application.......................................... 211
Corrected by Certificate of Correction..... 216.01, 1481 Design application................................... 1504.20 In ex parte reexamination....................... 2258.02 In inter partes reexamination....................... 2658 Provisional application............................... 706.02
Time charts.................................................. 2138.01 Time for filing.................................. 211.03, 214.01
Priority document (See also: Foreign application ) Priority Express Mail deposit................................. 513 Priority Mail Express procedure in ex parte reexamination...................................................... 2224 Priority Mail Express procedure in inter partes reexamination............. 2624, 2665, 2666, 2666.05 Priority Mail Express service..... 502, 506.02, 511, 513, 711.03(c), 1216.01, 2510 Priority practice (See also: Foreign application ) Private use (See also: Public use )..... 2133.03(a), 2152.02(c) Proceedings, Termination of......................... 711.02(c) Process of making and product made........... 806.05(f) Processing fee............................... 601.01, 601.01(c) Processing of reexamination in Technology Center
Ex parte .......................................................... 2233
Product and process of using.. 806.05(h), 2173.05(p) Product by process........................ 2113, 2173.05(p) Product of human ingenuity................................. 2105 Product of nature.......................................... 706.03(a) Programs, Computer (See also: Computer programs or software ) Prolix claim................................................ 2173.05(m) Proof, burden of..... 2112, 2112.01, 2113, 2131, 2141, 2150, 2163.04, 2164.04, 2183 Proof of authority of administrator or executor..... 409.01(b) Proof of foreign filing......................................... 214.04 Proof of irreparable damage........................ 409.03(g) Proof of ownership, reissue application.......... 1410.01 Proof of unavailability or refusal to sign........ 409.03(d) Proper multiple dependent claim.................. 608.01(n) Property rights statement...................................... 150
Contents of......................................................... 151 Property rights under AEC and NASA Acts..... 115, 150, 151 Prophetic examples in the specification....... 608.01(p) Proprietary interest, Proof of.......... 409.03(f), 409.05 Proprietary materials (See also: Protective order material Trade secret material ) Pro se applicant (See also: Applicant Inventor ) Appeal brief...................................................... 1205 Certificate of mailing........................................... 512 Change of address........................................ 601.03 Death......................................................... 409.01(b) Duty of disclosure........................................ 2002.01 Examination of application......................... 707.07(j) Examiner’s action............................................... 707 Interview........................................................ 713.01 Legal representation........................................... 401 Telephone restriction practice........................ 812.01
Prosecution Closed, application allowable except for formal matters..................... 707.07(j), 710.02(b), 714.14 Closed, secrecy order cases.............................. 130
Prosecution after appeal................................. 1207.04 Piecemeal................................................. 707.07(g) Reopening after allowance.......................... 1308.01 Reopening after Board decision.................. 1214.07
Prosecution laches.............................................. 2190 Prosecution of Secrecy Order application............. 130 Prosecution reopened after court decision..... 1216.01 Protective order material (See also: Trade secret material ).............................................. 724 to 724.06
Submission.................................................... 724.02
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MANUAL OF PATENT EXAMINING PROCEDURE
Priority — Protective order material
Sec. No.Sec. No.
Protest................................................................. 1900 Access by protestor.................... 1901.05, 1901.07 Acknowledgment of protest......................... 1901.05 Certificate of service.................................... 1901.03 Comments of applicant................................ 1901.06 Complete..................................................... 1901.03 Copies of documents................................... 1901.03 Express consent of applicant required............. 1134 Filed in reissue where patent is in interference..... 1449, 1901.06 Handling...................................................... 1901.05 Improper protest.............................. 1134, 1901.03 Information which can be relied on.............. 1901.02 Involving fraud, lack of good faith or candor, or violation of duty of disclosure......................... 1901.06, 2013 Multiple papers on same issue................ 1901.07(a) Reissue application.................... 1441.01, 1901.04 Reissue litigation........................ 1901.03, 1901.04 Requirement for information............................. 1901 Review of adverse decision.............................. 1906 Service on patentee or applicant................. 1901.03 TC Director’s attention required........................ 1003 Timeliness of protest................................... 1901.04 Trade secret information.................... 724, 1901.02 Treatment by examiner................................ 1901.06 Under Rule 1.291............................................. 1901 Who can file................................................. 1901.01
Protestor participation.................................... 1901.07 Provisional application...................................... 201.04
Abandonment.......... 201.04, 211.01(a), 711.03(c) Access...................................................... 103, 104 Assignment of................................................ 302.03 Assignment of application claiming benefits of..... 306.01 Completeness................................. 506, 601.01(b) Conversion to............................. 201.04, 601.01(c) Correction of inventorship.............................. 201.03 Cover sheet for.............................................. 201.04 Data, on file wrapper/history of.......... 202, 1302.09 Data, in specification of............................... 1302.04 Drawing...................................... 601.01(b), 608.02 Effective filing date..................... 601.01(b), 706.02 EFS-Web filing of........................................... 502.05 English language translation for benefit of date..... 211.01 Filing receipt....................................................... 503 Guidelines for drafting......................................... 601 Information disclosure statement........................ 609 Joint inventors in............................................ 602.01
Last day of pendency..................................... 201.04 Micro entity status.......................................... 509.04 Ordering of abandoned............................. 901.01(a) Priority........................................ 201.04, 211.01(a)
Error in, as reissue grounds......................... 1402 Request to convert to nonprovisional..... 1002.02(b), 1002.02(q) Revival....................................................... 711.03(c) Small entity status......................................... 509.03 Specification.................................................. 601.01
PTO employee restrictions, assignment................ 309 Public access to ex parte reexamination file....... 2232 Public access to inter partes reexamination file.. 2632 Public domain (See also: Public use On sale Disclaimer )... 2121.03, 2133.03, 2133.03(a), 2145
Dedication to public................................ 715, 1490 Public inspection, Application file.............. 103, 1128
Ex parte reexamination.......................... 103, 2232 Inter partes reexamination......... 103, 2609, 2632
Redacted application publication............ 103, 1132 Reissue....................................... 103, 1430, 1470
Public inspection of assignments......... 301.01, 1730 Public key infrastructure (PKI) certificate..... 502.05, 707.05(a) Public Law (See also: Statutes ) Public policy................................................. 706.03(a) Public right to inspect files......................... 103, 1128
In ex parte reexamination...................... 103, 2232 In inter partes reexamination..... 103, 2609, 2632
Public sale (See also: On sale Public use )..... 2133.03, 2152.02(d) Public search facility (See also: Patent search facility ) Public searchers.................................................... 101 Public use (See also: On sale ).. 706.02(c), 2133.03, 2133.03(a), 2152.02(c)
Affidavit or declaration................................... 715.10 Anticipation........................ 2133.03(a), 2152.02(c) Commercial exploitation. 2133.03(e)(1), 2152.02(c) Commercial use................. 2133.03(a), 2152.02(c) Completion of the invention.... 2133.03, 2133.03(c), 2133.03(e)(1), 2133.03(e)(3) Definition of............................................. 2133.03(a) Evidence.................................................... 706.02(c) Experimental use (See also: Experimental use )..... 2133.03, 2133.03(e) In this country.................. 706.02(c)(2), 2133.03(d) Intent to experiment... 2133.03(e)(2), 2133.03(e)(3) Invention.................................................. 2133.03(c) Policy considerations................................... 2133.03
Rev. 07.2015, October 2015Index-77
INDEX
Protest — Public use
Sec. No.Sec. No.
Public knowledge or on display............... 2133.03(a) Secrecy................................................... 2133.03(a) Single use............................................... 2133.03(a)
Control over invention..... 2133.03(a), 2133.03(e)(5), 2133.03(e)(7)
Testing by third party.. 2133.03(e)(5), 2133.03(e)(7) Use with expectation of privacy............... 2133.03(a) Use by inventor or associates................. 2133.03(a) Use by independent third parties............ 2133.03(a)
Public use proceedings......................................... 720 Publication, Defensive....... 711.06, 711.06(a), 1111 Publication of Statutory Invention Registration..... 1111 Publication date............................................ 706.02(a) Publication fee..... 1126, 1133, 1303, 1306, 1306.03 Publication of abstracts................. 711.06, 711.06(a) Publication
Board decisions........................................... 1213.03 Citing........................... 706.02, 707.05(e), 901.06 Date of....................................................... 706.02(a) Notices........................................... , 707.06, 1703 Official Gazette(O.G.)...................................... 1703
Orders............................................ , 707.06, 1703 Own, as reference..... 715.01(c), 2132.01, 2152.02(f), 2153.01, 2154.02 Pre-Grant (See also: Pre-Grant Publication (PG-Pub) ) Prior art effect of international.. 706.02(a), 2136.03, 2154.01(a) Rules changes.................................................. 1703 Under 35 U.S.C. 122(b) as references..... 2136, 2136.03, 2154.01 Voluntary........................................................... 1133
Publishing Division (See also: Office of Patent Publications (Office of Data Management) ) Pulling abandonments.................................. 711.04(a)
Q
Quality Assurance............. 1302.04, 1308.03, 1720 In reexamination................................... 2289, 2689
Quality Assurance Specialist (QAS)..... 1415.01, 1442.03, 1443, 1448, 1449.01, 1451, 1455, 1456, 1490, 2212.01, 2233, 2270, 2281, 2285, 2286, 2287, 2289, 2294, 2295, 2636, 2664, 2670,
2671, 2671.02, 2676, 2677, 2686.03, 2687, 2687.01, 2689 Quality control program.................................. 1308.03 Quayle practice............................. 710.02(b), 714.14
Action recording................................................ 1705 After final rejection..................................... 706.07(f) Allowance action......... 707.05(a), 714.14, 714.15 Claims later added......................................... 714.20 Copies of references................................. 707.05(a) Design application............................................ 1504 Examiner’s amendment used instead of.... 608.01(b) Formal matters corrected............ 706.07(f), 812.01 Information disclosure statement..... 609.01, 609.04(b) Primary examiner signature required............... 1005 Reexamination, ex parte ........... 2250.01, 2266.01 Reissue............................................................. 1444 Shortened statutory period....... 710.02(b), 2250.01
Query Printer Rush......................................... 1306.03
R
Ranges Anticipation of.............................................. 2131.03 Obviousness of............................................ 2144.05
Ratification of papers filed Death of attorney................................................ 406 Death of inventor.................... 409.01(a), 409.01(b) Signature improper or lacking................... 714.01(a)
Real party in interest.......................... 1205, 1207.02 In ex parte reexamination................................ 2202 In inter partes reexamination........................... 2677
Reasons for allowance................................... 1302.14 Amendments after final rejection................... 714.13 Appeal record................................................... 1213 Applicant’s comments on............................. 1302.14 Claim narrowing........................................... 1302.14 Comments on, ex parte reexamination............ 2287 Comments on, inter partes reexamination... 2687.01 Estoppel effect............................................. 1302.14 Failure of applicant to comment on.............. 1302.14 Patent Cooperation Treaty application......... 1845.01 Presumption of acquiescence by applicant.. 1302.14 Reexamination
Index-78Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Public use — Reasons for allowance
Sec. No.Sec. No.
Ex parte .......................................... 2262, 2287 Inter partes ................................................. 2687
Rebuttal brief in inter partes reexamination appeal..... 2678, 2679
Refused entry................................................... 2679 Recapture
Claimed subject matter......... 706.02(l)(1), 1412.02 Matter in reissue.......................................... 1412.02 Of patent rights
Disclaimed by filing a disclaimer.................. 1490 Waived when SIR published......................... 1111
Receipt of mail and papers.................................... 500 Depositing correspondence................................ 502 Entry of amendments.................................... 714.18 Filing receipt....................................................... 503 Office date stamp............................................... 505 Period for reply.......................................... 710.01(a)
Receiving Office PCT procedure......................... 1801 International Bureau......................................... 1805
Reciprocal security agreements............................ 120 Reclassification
Patents.................................................. 905.01(a)(3) Reconsideration in ex parte reexamination........ 2269 Reconsideration of abandonment.. 711.03, 711.03(c)
Based on insufficient reply........................ 711.03(a) Based on failure to reply within period...... 711.03(b)
Record of interview............................ 713.01, 713.04 Record room (See also: File Information Unit (Record Room) ) Record system for reexamination
Ex parte .......................................................... 2235 Inter partes ..................................................... 2635
Recording assignment....................... 301, 302, 317 Recording change of business name.................... 314 Recording government interests............. 302, 302.07 Recording of joint research agreement... 302, 302.07 Recording license agreement................. 302.07, 313 Recording of other documents................. 313 to 317 Recording security interest.................................... 313 Redacted publication of an application.. 502.05, 1132 Reduction to practice..... 715.07, 2133.03(c), 2133.03(e)(3), 2138.01, 2138.05 Reexamination, Ex parte ................................... 2200
Access to file........... 103, 724.04(c), 2209, 2232 Action following Board decision........................ 2278 Address of patent owner................................... 2222 Admissions........................................... 2217, 2258 Affidavits........... 2205, 2216, 2217, 2258, 2265
After final practice............................................. 2272 Amendment.................... 714, 2234, 2250, 2295
Abstract........................................................ 2287 After final rejection........................................ 2272 Examiner’s.................................................... 2287 Filed with request......................................... 2221 Improper....................................................... 2250 In a merged reissue/ ex parte reexamination..... 2285 Prior reexamination certificate issued..... 2250, 2295 Provisions of Rule 1.312 do not apply.......... 2287 Reissue patent issued.................................. 2250
Ancillary issues..................................... 2217, 2258 Appeal.............................................................. 2273 Appeal brief...................................................... 2274 Appeals to courts................. 1216, 1216.01, 2279 Application data sheet......... 2214, 2258.02, 2266 Application file location..................................... 2235 Assignment......................................................... 301
To an examiner......... 2236, 2248, 2255, 2285 Attorney or agent.................................. 2213, 2222
Name on certificate...................................... 2287 Basic characteristics......................................... 2209 Certificate of......................................... 2288, 2294
Reissue patent as............................. 2290, 2294 Certificate attached to patent copy................... 2292 Certificate distribution....................................... 2292 Certificate format.............................................. 2290 Certificate of mailing or transmission................ 2224 Certificate of prior reexamination in later request..... 2214, 2219 Certificate of service......................................... 2220 Certified copy.................................................... 2232 Citation of prior art............................................ 2202
After first office action................................... 2271 Claim for Official Gazette ................................ 2287 Claim, multiple dependent, preparation for publishing.......................................................... 2287 Claim numbering.............................................. 2250 Claims considered................................ 2243, 2258 Claims invalid/unenforceable............................ 2286 Claims presented for interference..... 2284, 2304.02 Clerical handling............................................... 2270 Collateral estoppel............................................ 2259 Comments on “Statement of Reasons for Patentability and/or Confirmation”......................................... 2287 Conclusion........................................................ 2287 Concurrent proceedings.................... 2282 to 2286
Rev. 07.2015, October 2015Index-79
INDEX
Reasons for allowance — Reexamination, Ex parte
Sec. No.Sec. No.
Conduct of proceedings.................................... 2254 Consideration of responses..... 2252, 2253, 2271, 2272 Consolidated proceedings................................ 2283 Constructive notice to patent owner................. 2230 Content of request............................................ 2214 Copending proceedings..................... 2283 to 2286 Copy of patent in request.................................. 2219
Double column format...................... 2214, 2219 Copying of file................................................... 2232 Correction of inventorship................ 2250.02, 2258 Correction of request........................................ 2231 Correspondence............................................... 2224 Criteria for deciding request............................. 2242 Decision of Patent Trial and Appeal Board....... 2277 Decision on request.......................................... 2240 Decision ordering reexamination...................... 2246 Decision processing......................................... 2245 Defective submission................................... 2266.02 Denied................................. 2240, 2247, 2247.01 Dependent claim treatment......................... 2260.01 Director’s initiative................................. 2212, 2239 Domestic priority.......................................... 2258.02 Double correspondence.................................... 2224 Double patenting......................... 804, 2217, 2258 Drawing correction....................................... 2250.01 Duty of candor and good faith........................... 2280 Duty of disclosure............................ 2003.01, 2280 Electronic copy..................................... 2209, 2232 Entry of amendments........................... 2234, 2270 Entry of court decisions in patent file................ 2207 Examiner.................................. 2236, 2248, 2255
Deposition............................................... 1701.01 Examiner’s amendment..... 2234, 2250, 2262, 2287 Examiner’s answer............................................ 2275 Expiration of patent............................... 2211, 2250 Explanation of prior art..................................... 2217 Extension of time.............................................. 2265
After final rejection........................................ 2272 For filing appeal brief.................................... 2274
Failure to timely reply to Office action............... 2266 Fees............. 2215, 2233, 2250.03, 2283, 2285 Final action........................ 706.07(a), 2265, 2271 Flowchart.......................................................... 2201 Following supplemental examination..... 2201, 2818.01 Foreign priority............................................. 2258.02
Forms................................................................ 2296 Granted............................................ 2246, 2247.01 Grounds of rejection......................................... 2217 Identity of requester.......................................... 2212 Inappropriate papers........................................ 2267
Return of papers.......................................... 2267 Incomplete reques............................................ 2227 Informal submission..................................... 2266.02 Initial processing............................................... 2226 Inquiries from persons other than the Patent Owner... 2212.01 Interference copending..................................... 2284 Intervening rights.............................................. 2293 Interviews in...................................................... 2281 Introduction....................................................... 2201 Listing of prior art.............................................. 2257 Litigation copending.......................................... 2286 Litigation review.................................... 2240, 2287 Mailing of Office actions................................... 2264 Merger.. 2236, 2237, 2241, 2250, 2283, 2285, 2686.01 Merger with reissue proceedings..... 1449.01, 2285 Multiple dependent claim handling, preparation for publishing.......................................................... 2287 New matter............................... 2250, 2258, 2270 NIRC (See also: Form letters and forms: Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) PTOL-469 ) Notification of Concurrent Proceedings..... 2282, 2286.01 Of a reexamination........................................... 2295 Office action.......................................... 2260, 2262
Official Gazette Notice of certificate....................................... 2291 Notice of request.......................................... 2229
“Old art” (i.e., previously considered/cited)..... 2242, 2258.01 Oral hearing...................................................... 2276 Orders for copies of.......................................... 2232 Ordered after supplemental examination..... 2201, 2265, 2268, 2280, 2290, 2291, 2818, 2823 Patent copy in request...................................... 2219
Double column format...................... 2214, 2219 Patent owner’s address.................................... 2222 Patent owner’s statement................................. 2249 Patent owner’s statement of interview.............. 2281 Patentability review conference..... 2236, 2246, 2247, 2262, 2271, 2271.01, 2287 Petition.................................................... 1002.02(b)
Index-80Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Reexamination, Ex parte — Reexamination, Ex parte
Sec. No.Sec. No.
Correct inventorship................................ 2250.02 Denial of request......... 1002.02(c), 2248, 2265 For entry of late papers (revival of terminated proceedings)................................................. 2268 Merge proceedings........................... 2283, 2285 Reconsideration of refusal to revive............. 2268 Stay proceedings pending interference........ 2284 Stay proceedings pending reissue............... 2285 Unintentional delay....................................... 2268 Vacate order granting request...................... 2246 Waive time provisions................................... 2265
Power of attorney, withdrawal........................... 2223 Preprocessing staff................... 2226, 2229, 2239 Printing of certificate......................................... 2288 Prior art copies................................................. 2218 Prior art considered.............................. 2244, 2256 Prior art previously cited/considered..... 2242, 2258.01 Prior art, statement applying............................ 2217 Proceedings...................................................... 2209 Processing in Central Reexamination Unit and Technology Center................................ 2233, 2245
Clerical handling........................................... 2270 Project code...................................................... 2238 Public access.......................................... 103, 2232 Quality Assurance Specialist (QAS)..... 2212.01, 2233, 2270, 2281, 2285, 2286, 2287, 2289, 2294, 2295 Quality review................................................... 2289 Real party in interest......................................... 2202 Reasons for patentability and/or confirmation.. 2262, 2287 Reconsideration of Office action....................... 2269 Record system.................................................. 2235 Refund if request denied..... 2215, 2247, 2248, 2294 Reissue copending.......................... 1449.01, 2285 Rejections..... 2242, 2258, 2259, 2260, 2262, 2271
Using “old art”.......................................... 2258.01 Reminders........................................................ 2287 Reply by third party requester.............. 2251, 2253
Period for reply cannot be extended............. 2265 Reports............................................................. 2235 Representative of requester............................. 2213 Request............................................................ 2210
After reissue patent issues... 2240, 2242, 2243, 2258, 2285 After first reexamination certificate issues..... 2294
Content......................................................... 2214 Correction processing.................................. 2231 Decision....................................... 2240, 2247.01 Decision criteria............................................ 2242 Denied......................................... 2247, 2247.01
After reissue patent issues..................... 2240 During interference....................................... 2284 Facsimile submission not permitted..... 502.01, 2224 Filing address............................................... 2224 Granted....................................... 2246, 2247.01 Guidelines.................................................... 2242 “Old art” (previously considered art) involved..... 2242, 2258.01
Response to Office action................................ 2266 Restriction improper......................................... 2258 Review.............................................................. 2289 Sample letter requesting reexamination........... 2214 Scope............................................................... 2258 Search............................................. 2244, 2258.01 Second or subsequent request............. 2240, 2283
Prior art considered.......................... 2240, 2242 Service by patent owner on requestor of patent owner statement.......................................................... 2249 Service of papers..... 2220, 2266, 2266.02, 2266.03 Special status for action.................................... 2261 Statement applying prior art............................. 2217 Statement by owner.......................................... 2249 Statement of Reasons for Patentability and/or Confirmation......................................... 2262, 2287 Statutory basis.................................................. 2201 Stay............................... 2283, 2284, 2285, 2286 Submission defective or informal................. 2266.02
After final...................................................... 2272 Submission not fully responsive.................. 2266.01
After final...................................................... 2272 Substantial new question of patentability..... 2201, 2214, 2216, 2240, 2242, 2244, 2246, 2247, 2258, 2816
Using “old art”.............................. 2242, 2258.01 “Sufficient cause” for extension of time............. 2265 Suspension........................................... 2283, 2285 Terminated........................................................ 2294 Terminated files................................................ 2294 Tickler reports................................................... 2235 Time for request decision................................. 2241 Time for requesting........................................... 2211 Time for response to actions............................ 2263
Rev. 07.2015, October 2015Index-81
INDEX
Reexamination, Ex parte — Reexamination, Ex parte
Sec. No.Sec. No.
Time reporting.................................................. 2238 Title report.............................................. 320, 2287 Transfer............................................................. 2237 Translation required.................. 2205, 2214, 2218 Untimely filed paper prior to order.................... 2225 Untimely filed papers........................................ 2267 Untimely replies................................................ 2252 Use of transmittal form (PTOL-465)..... 2246, 2247, 2262, 2264 Vacated..... 2210, 2215, 2242, 2246, 2250.02, 2286, 2294 Vacated, claims invalid/unenforceable... 2210, 2286 Who may file request for................................... 2212 Withdrawal of attorney during............ 402.06, 2223 Withdrawal of power of attorney....................... 2223
Reexamination, Inter partes (See also: Reexamination, Ex Parte )............................................................ 2600
Access by public...... 103, 724.04(c), 2609, 2632 Action closing prosecution (ACP).... 2660, 2666.05, 2666.10, 2667, 2660, 2666.05, 2671.03, 2673.02, 2682
Content.................................................... 2671.02 Premature..................................................... 2672 Response to................................................. 2672
Affidavits....................... 2658, 2666, 2675, 2677 Amendment by patent owner
After a new ground of rejection is issued by the Board............................................................ 2682 After Action Closing Prosecution (ACP)..... 2671, 2672, 2673 After expiration of the patent................... 2666.01 After Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC)........... 2687.01 After Right of Appeal Notice (RAN)..... 2673, 2673.02, 2675 Claims..................................................... 2666.01 Defective..................... 2666.50, 2666.60, 2667 Dependent claim..................................... 2660.03 Drawings................................................. 2666.02 Entry............................................................. 2670 In a merged reexamination proceedings..... 2670, 2686.01, 2686.03 Of a reissued patent................................ 2686.03 Title.......................................................... 2660.02 To provoke an interference...................... 2686.02 Unsigned................................................. 2666.50
Appeal (i.e., Appellant) Brief............................. 2675 Defective...................................... 2675, 2675.02
Appeal Conference............................... 2676, 2677
Appeal to the Patent Trial and Appeal Board..... 2674 to 2680
Flowchart................................................. 2601.01 Appeal to the Court of Appeals for the Federal Circuit................................................... 2682, 2683 Appeal to the U.S. District Court for the District of Columbia not available...................................... 2683 Appellant defined.............................................. 2674 Assignment to examiner........... 2636, 2648, 2655 Certificate of inter partes reexamination..... 2688, 2690, 2694
Distribution................................................... 2692 Format.......................................................... 2690 Reissue patent as............................. 2688, 2694
Certificate of service.................................... 2666.06 Certificate of mailing or transmission.... 2624, 2665, 2666, 2666.05 Certificate of prior reexamination in later request..... 2214, 2219 Clerical handling............................................... 2670 Collateral estoppel............................................ 2659 Comments on Statement of Reasons for Patentability and/or Confirmation..................................... 2687.01 Comments by third party (See also: Reexamination, Inter partes: Response by third party ) Concurrent proceedings................................... 2686 Consolidated proceedings........................... 2686.05 Constructive notice of....................................... 2654 Copending proceedings.................................... 2686 Copying of the file by the public........................ 2632 Correction of inventorship................ 2658, 2666.03 Correspondence............................................... 2624 Court of Appeals for the Federal Circuit..... 2682, 2683 Court ordered.............................................. 2686.04 Cross appeal to the Patent Trial and Appeal Board..... 2674 Cross appeal to the Federal Circuit.................. 2683 Decision by the Patent Trial and Appeal Board..... 2681, 2682 Decision on the request for inter partes reexamination................................................... 2640
After Court decision................................. 2686.04 Content......................................................... 2646 Criteria for deciding...................................... 2642 Denial...... 2640, 2647, 2647.01, 2648, 2694 Grant............................................................ 2640 “Old art” (previously considered art) used..... 2642 Processing....................... 2647, 2647.01, 2648 Prior art available......................................... 2644
Index-82Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Reexamination, Ex parte — Reexamination, Inter partes
Sec. No.Sec. No.
Reissue about to issue............................ 2686.03 Dependent claim treatment......................... 2660.03 Determining if a reexamination was filed for a patent.. 2632.01 Domestic priority............................................... 2658 Drawings...................................................... 2666.02 Duty of disclosure............................ 2003.01, 2684 Electronic copy..................................... 2609, 2632 Enlarging claim scope prohibited..... 2658, 2666.01 Estoppel, Collateral........................................... 2659 Examination scope......... 2658, 2671.01, 2671.02 Examiner consultation
After response by parties............................. 2671 Before appeal............................................... 2676 In merged reexamination proceedings..... 2686.01 Regarding multiple reexamination requests..... 2686.01 Review of Rebuttal Briefs............................. 2679
Examiner’s Amendment Canceling rejected claims................ 2671, 2687 Correcting formal matters............ 2687, 2687.01 In merged reissue/reexamination............ 2686.03 Not permitted if approval required........... 2687.01 To the Title.................. 2660.02, 2686.03, 2687
Examiner’s Answer........................................... 2677 Expedited Right of Appeal Notice..... 2671, 2673.02 Extensions of time............................................ 2665
After Action Closing Prosecution.................. 2672 To amend the claims after a Board decision containing a new ground of rejection............ 2682 To appeal to the Court of Appeals for the Federal Circuit........................................................... 2682 To complete a reply held non-responsive..... 2660.30 To petition denial of the Request...... 2648, 2665
Facsimile transmission, correspondence by..... 2624 Fees.................................................................. 2634
For a copy of the file on CD.......................... 2632 Refund.............................................. 2647, 2648
Final Board decision............................. 2681, 2682 Flowcharts................................................... 2601.01 Foreign priority.................................................. 2658 Forms listed...................................................... 2696 Fraud................................................................ 2684 Improper comments.......................................... 2667 Inappropriate papers........................................ 2667 Incorporation by reference in Examiner’s Answer..... 2677 Interference copending.................... 2686, 2686.02
Intervening rights.............................................. 2693 Interviews in a merged reexamination/reissue..... 2686.03 Interviews not permitted...... 2666.30, 2685, 2687 Litigation concurrent..... 2640, 2681, 2686, 2686.04 Litigation search.......................................... 2686.04 Litigation stayed........................................... 2686.04 Merger of multiple requests for reexamination..... 2686.01 Merger of reissue and inter partes reexamination..... 2686.03 Multiple requests for reexamination filed..... 2640, 2686, 2686.01, 2695 New grounds for rejection............................ 2671.01
By the Board of Appeals................... 2681, 2682 New matter................................. 2671.01, 2671.02 NIRC (See also: Form letters and forms: Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) PTOL 2068 ) Non-final Board decision.................................. 2681 Non-responsive reply by patent owner/third party..... 2666.30, 2666.50 Notice of appeal................... 2662, 2674, 2674.01
Premature..................................................... 2667 Notice of cross appeal......... 2662, 2674, 2674.01 Notice of Inter Partes Reexamination Certificate Issuance in the Official Gazette .......... 2688, 2691 Office action.......................................... 2660, 2671
Not closing prosecution........................... 2671.01 Reopening prosecution after ACP..... 2673, 2673.01 Reopening prosecution after Examiner’s Answer.... 2679 Reopening prosecution after RAN..... 2676, 2677
Oral hearing.................. 2662, 2675, 2677, 2680 Open to public.............................................. 2680
Order granting inter partes reexamination..... 2646, 2660
Returned as undelivered.............................. 2654 Oversight.......................................................... 2689 Panel Review............................................... 2671.03 Petition.................................................... 1002.02(b)
Board decision.............................................. 2681 Consideration of submissions after NIRC..... 2687.01 Correct inventorship.................... 2658, 2666.03 Denial of request for inter partes reexamination.... 1002.02(c), 2647, 2648
Rev. 07.2015, October 2015Index-83
INDEX
Reexamination, Inter partes — Reexamination, Inter partes
Sec. No.Sec. No.
Entry of late papers for revival of reexamination proceeding.................................................... 2668 Enter an amendment after RAN.. 2672, 2673.02, 2675 For an interview in a merged reexamination/reissue............................. 2686.03 Merge inter partes reexamination and reissue..... 1002.02(b), 2667, 2686.03 Premature Action Closing Prosecution......... 2672 Reopen prosecution after Board decision..... 2682 Suspend second or subsequent requests..... 2640 Stay reexamination..... 2667, 2686.02, 2686.03 Unintentional delay....................................... 2668 Vacate order granting inter partes reexamination.. 2646 Waive time provisions........... 2648, 2668, 2672
Premature response/comments........... 2625, 2667 Prior art citation..... 2602, 2646, 2654, 2656, 2657
After the order to reexamine............. 2602, 2667 After a Notice of Intent to Issue Inter Partes Reexamination Certificate issues............ 2687.01 Before the first Office action......................... 2625 Before the order to reexamine.......... 2602, 2654 By another requestor.................................... 2656 By the patent owner..................................... 2656 Storage area................................................. 2667 With the Request.......................................... 2656 With third party’s comments........ 2666.05, 2667
Priority Mail Express procedure..... 2624, 2665, 2666, 2666.05 Processing........................................................ 2670
After a decision by the Board....................... 2682 Amendment..................... 2666.01, 2670, 2687 Clerical......................................................... 2670 Examiner’s Answer....................................... 2677 Inappropriate papers.................................... 2667 Merger of multiple reexamination requests..... 2686.01 Merger of reissue and inter partes reexamination.. 2686.03 Terminated inter partes reexamination........ 2694
Proof of service (See also: Reexamination, Inter partes: Service of papers ) Public access.............................. 103, 2609, 2632 Publication........................................................ 2687 Publication of Board decision........................... 2681 RAN (See also: Reexamination, Inter partes: Right of Appeal Notice (RAN) )
Real party in interest identification.................... 2677 Reasons for Patentability and/or Confirmation.. 2687 Rebuttal Brief........................................ 2678, 2679
Refused entry............................................... 2679 Records............................................................ 2635 Reissue copending..... 1449.01, 2643, 2686, 2686.03 Reissue previously issued.................... 2640, 2686 Remand by the Board of Appeals......... 2681, 2682 Reopening prosecution after an Action Closing Prosecution (ACP)........................... 2673, 2673.01 Reopening prosecution after a Board decision.. 2682 Representative of requestor............................. 2613 Request for extension of time........................... 2665 Request for reconsideration by patent owner.... 2666 Request for inter partes reexamination
Claims considered........................................ 2643 Denied.............................................. 2640, 2647 Facsimile transmission not permitted..... 502.01, 2624 Filed after reissue issued............................. 2658 Filed while interference pending.............. 2686.02 Filing address............................................... 2624 Granted........................................................ 2640 Second or subsequent filed......... 2640, 2686.01
Request for Rehearing by the Board..... 2682, 2683 Res judicata ........................................ 2259, 2659
Respondent Brief......................................... 2675.01 Defective................................. 2675.01, 2675.02
Respondent defined......................................... 2674 Response by patent owner............................... 2666
After Action Closing Prosecution...... 2671, 2672 Defective..................... 2666.30, 2666.40, 2667 Improper comments..................................... 2667 Late (See also: Reexamination, Inter partes: Time periods for response )...................... 2667, 2668 No proof of service....................................... 2667 No response filed..... 2666.10, 2671, 2671.01, 2671.02 Not fully responsive..................... 2666.30, 2671 Person not of record................................ 2666.50 Premature......................................... 2625, 2667 To Notice of Defective Paper... 2666.40, 2666.60 To Office action............................ 2666, 2666.30 Too long........................................................ 2667 Unsigned..................................... 2666.50, 2667
Response by third party After Action Closing Prosecution...... 2671, 2672 After patent owner corrects defect........... 2666.40
Index-84Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Reexamination, Inter partes — Reexamination, Inter partes
Sec. No.Sec. No.
Comments regarding response by patent owner..... 2666.05, 2666.20, 2666.30 Defective...................................... 2666.50, 2667 Improper comments........ 2666.05, 2667, 2671 Late (See also: Reexamination, Inter partes: Time periods for response )...................... 2667, 2668 No proof of service....................................... 2667 No response filed........................ 2666.20, 2671 Other than third party requester................... 2667 Period for response................ 2666.05, 2666.20 Person not of record................................ 2666.50 Premature comments....................... 2625, 2667 Premature appeal......................................... 2667 Prior art submission with............. 2666.05, 2667 Too long........................................................ 2667 Unsigned..................................... 2666.50, 2667
Review.............................................................. 2689 Right of Appeal Notice (RAN)..... 2666.05, 2666.10, 2667, 2671 to 2674, 2677
Content.................................................... 2673.02 Scanning........................................................... 2632 Scope of examination..... 2658, 2671.01, 2671.02 Service of papers......................................... 2666.06
Certificate of............................................ 2666.06 Proof of service.......... 2666.06, 2666.50, 2667 To patent owner........................... 2654, 2666.05 To third party requestor.... 2654, 2666, 2666.05
Special Status................................................... 2661 Stayed pending litigation outcome............... 2686.04 Stayed pending reissue outcome................ 2686.03 Submissions prior to the first Office action....... 2625 Substantial new question of patentability..... 2640, 2642 to 2647, 2648, 2658, 2686.01, 2686.04 ‘Sufficient cause’ for extension of time.............. 2665 Suspension of requests for inter partes reexamination.................................. 2640, 2686.01 Terminated........................................................ 2694 Third party requestor (See also: Reexamination, Inter partes: Response by third party ) Time periods after appeal for filing:
Amendment after Board decision containing a new ground for rejection....................................... 2682 Notice of Appeal in the Federal Circuit......... 2682 Notice of Cross Appeal in the Federal Circuit..... 2683 Request for Rehearing................................. 2682
Time periods during appeal for filing: Appeal (i.e., Appellant) Brief......................... 2675
Corrected/Supplemental Appellant Brief..... 2675, 2675.02 Corrected/Supplemental Respondent Brief..... 2675.01, 2675.02 Corrected/Supplemental Rebuttal Brief........ 2679 Notice of Appeal........................................... 2674 Notice of Cross Appeal................ 2674, 2674.01 Rebuttal Brief................................................ 2678 Request for Oral Hearing............................. 2680 Respondent Brief..................................... 2675.01
Time periods for response................................ 2662 After Action Closing Prosecution.................. 2672 After defective submission..... 2666.30, 2666.50, 2666.60 After Office action................. 2662, 2665, 2667 To make claims the same in each concurrent reexamination.......................................... 2686.01
Time reporting by Office personnel.................. 2638 For a Panel Review................................. 2671.03
Title.............................................................. 2660.02 Unpublished legal opinions............................... 2677
Reference (See also: Prior art ) A.I. Series patent........................................... 901.04 A.P.C. publication....................................... 901.06(c) Abandoned application.......... 901.02, 2127, 2134 Abbreviatures............................................ 901.06(d) Abstracts.................................... 706.02, 901.06(d) Additional.................................................. 707.05(d) Admissions....................................................... 2129 Analogous art..... 904.01(c), 2141.01(a), 2143.01, 2145 Antedating (See also: Affidavit of prior invention to overcome a pre-AIA 35 U.S.C. 102 or 103 rejection (37 CFR 1.131) ) Applications, domestic and foreign................... 2127 Applying reference under AIA 35 U.S.C. 102(a) and (b)..................................................................... 2152 Applying reference under pre-AIA 35 U.S.C. 102(e).... 706.02(f)(1) Arrangement in Examiner’s Search files........ 901.07 As evidence of inherency............................. 2131.01 As evidence in multiple reference, pre-AIA 35 U.S.C. 102 rejection................................................ 2131.01 Assigned application as................................. 804.03 Availability......................................................... 2128 Between applicant’s priority date and U.S. filing date.. 216, 706.02(b) Citation... 707.05 to 707.05(g), 901.04, 901.05(a)
After allowance....................... 1302.12, 1308.01
Rev. 07.2015, October 2015Index-85
INDEX
Reexamination, Inter partes — Reference
Sec. No.Sec. No.
After appeal........... 1207.02, 1207.03, 1207.04 By applicant...... 707.05(b), 707.05(c), 1302.12 Correction............................................. 707.05(g)
Period for reply.................................... 710.06 Claims foreign date........................................ 715.01 Combination of references....... 706.02(j), 707.07(f) Copending..... 706.02(f)(2), 706.02(k), 706.02(l) to 706.02(l)(3), 709.01 Copies....................................................... 707.05(a) Cross, how cited........................................ 707.05(e) Cross reference addition................................. 905.02 Date, determination of..... 2124, 2126, 2128 to 2128.02, 2152, 2154.01(b) Date, exception to the rule................................ 2124 Defensive publications............................... 901.06(d) Design application..................................... 707.05(a) Disclosure, broad.............................................. 2123 Disqualification under pre-AIA 35 U.S.C. 103(c)..... 706.02(l)(1), 706.02(l)(3) Drawings as prior art........................................ 2125 Effects of international application publication... 1857 Effective date
Patent..... 706.02, 706.02(a), 707.05(e), 715, 2152, 2154.01(b) Publication..... 706.02(a), 715.01(c), 2128.02, 2152
Electronic publications..... 707.05(e), 904.02(c), 2128 Enabled disclosure...................................... 2131.01 Enabling, plant genetics............................... 2121.03 Enabling, compounds and compositions..... 2121.02 Enabling, apparatus and articles................. 2121.04 Equivalents................................................ 904.01(b) Every element rule for anticipation....... 2131, 2150 Evidencing the meaning of a term used in the primary reference...................................................... 2131.01 Foreign patent..... 706.02, 707.05(e), 901.05(a), 901.05(b) Forfeited application....................................... 901.02 From derivation............................................ 1302.12 From interference......................................... 1302.12 Incorrect citation........ 707.05(g), 710.06, 1302.12 Inoperability......................................... 716, 716.07 Internal documents, confidential.................. 2128.01 Intervening.................................. 216, 706.02(b)(2) Joint patent to applicant and another..... 715.01(a), 715.01(c) Listing at allowance......................... 1302.12, 1455 Lost counts in interference........................... 2138.01
Multiple reference rejections under 35 USC 102..... 2131.01 Newly discovered after allowance................ 1308.01 Nonanalogous art (See also: Reference: Analogous art )......................................... 2131.05, 2141.01(a) None cited by examiner.............. 707.05, 707.05(a) Operability......................................................... 2121 Ordering official cross.................................... 903.06 Overcome
Under Rule 1.130..... 717.01 to 717.01(f), 2155 Under Rule 1.131 (See also: Affidavit, swearing back of reference (37 CFR 1.131) ).. 706.02(b)(2), 706.02(f)(2), 706.02(k), 715, 1302.14, 2132.01, 2136.05 Under Rule 1.131(c)....................................... 718 Under Rule 1.132..... 706.02(b)(2), 706.02(f)(2), 706.02(i), 706.02(k), 706.02(m), 716, 2132.01, 2136.05
Overcoming under 35 U.S.C. 119....................... 216 Paper, orally presented.......... 2128.01, 2152.02(e) Patent................................................ 901.04, 2126 Patent, date available.................................. 2126.01 Patent, Foreign (See also: Foreign patent ) Patent, official number lacking....................... 901.04 Patent claiming same invention..... 715.05, 2301.03 Pending application (See also: Application ).. 901.03 Publication of applicant’s invention..... 715.01(a), 715.01(c), 2132.01, 2133.01, 2153, 2154.02 Publication, date available........................... 2128.02 Publication, printed........................................... 2128 Publications..... 706.02, 707.05(e), 901.06, 2131.01, 2132.01, 2133.01, 2152.02(b) Published abstracts of application..... 706.02, 711.06(a), 2131.01, 2133.01 Rejection over broad disclosure instead of preferred embodiments.................................................... 2123 Replacement of missing................................. 901.09 Same assignee.. 706.02(f)(2), 706.02(k), 706.02(l) to 706.02(l)(3), 709.01, 715.01(b) Selection of pertinent..................................... 904.02 Statutory bar............ 706.02(a)(2), 2133.02, 2152 Statutory section to use........................ 706.02(a)(2) Supply procedure..... 707.05(a), 707.05(g), 710.06 Swearing back (See also: Affidavit of prior invention to overcome a pre-AIA 35 U.S.C. 102 or 103 rejection (37 CFR 1.131) )..... 706.02(k), 715, 2132.01, 2133.02 Thesis..................................... 2128.01, 2152.02(e) Utility................................................................. 2122 “Well known in the art,” supported by........... 2144.03
Index-86Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
Reference — Reference
Sec. No.Sec. No.
Reference characters................................... 608.01(g) Reference to foreign application............. 202, 901.03 Reference to prior patent..... 608.01(p), 608.01(r), 901.03 Reference to related application (See also: Cross-noting ) Reference to related application for disclosure..... 608.01(p) Refile application (See also: Application Substitute application ) Refunds (See also: Fee Deposit account )..... 502, 502.05, 503, 506, 506.02, 509, 509.01, 509.03, 607.02
Additional invention or species..... 803.03(a), 803.03(b) Canceled claims................................................. 506 Correspondence address..... 502, 502.05, 503, 506, 506.02, 511, 512, 513, 2540, 2542 Filing fee................. 201.04, 503, 506, 601.01(a) International applications..... 1002.02(p), 1827.01, 1850, 1864 International search fee......... 707, 1827.01, 1852 Issue fee..................................... 1308.01, 1308.03 Maintenance fee..... 2520, 2540, 2550, 2580, 2590 Oral hearing...................................................... 1209 Publication fee.................................................. 1126 Reexamination
Ex parte .............................. 2215, 2247, 2248 Inter partes ..................................... 2647, 2648
Refund Section, Office of Finance... 509.03, 607.02 Petition fee.................................. 506.02, 711.03(c) Small entity fee.................................. 509.03, 2550
Registration, Attorney or agent.................. 402, 1702 Regulations, Technology Center (TC) facilities...... 510 Regulations, office premises................................. 510 Rehearing by Patent Trial and Appeal Board..... 1002.02(j), 1214.01, 1214.03, 1214.04 Reissue application.............................. 1401 to 1470
Absolute intervening rights............................... 1460 Access to................. 103, 724.04(b), 1430, 1470 Acknowledgment of protest......................... 1901.05 Additional information required.... 1442.01, 1442.04 Adjudication of original patent..................... 1442.01 Allowance......................................................... 1455 Amendment................................ 714, 1411, 1453
Examiner’s.................................................... 1455 Of drawings...................................... 1413, 1453 So that reissue can be merged with ex parte reexamination............................................... 2285
So that reissue can be merged with inter partes reexamination.......................................... 2686.03
Amends or corrects original patent... 1400.01, 1402 Appeal brief...................................................... 1454 Assignee consent................ 1410.01, 1443, 1451 Broadened................................ 706.03(x), 1412.03 Cannot be used to remove terminal disclaimer..... 1490 Certificate of correction... 1411.01, 1412.04, 1443, 1480 to 1485 Claim
Broadening............................. 1412.02, 1412.03 Dependent............................................... 1412.03 Format.............................................. 1411, 1453 Numbering........................................ 1451, 1455 Oath requirement......................................... 1414 Printed in Official Gazette ........................... 1455 Same invention as original patent........... 1412.01 Too narrow.................................................... 1402
Collateral estoppel..... 2012.01, 2138.01, 2138.02 Consent by assignee........... 1410.01, 1443, 1451 Content............................................................. 1410 Continuation......................... 1410.01, 1414, 1451 Copending application reference...................... 1402 Copending ex parte reexamination proceedings..... 2285 Copending inter partes reexamination proceedings... 2686.03 Correct inadequacies........................................ 1402 Court decision involving original patent....... 1442.01 Court ordered.............................................. 1442.05 Cross noting......................................... 1451, 1455 Deceptive intention..... 1401, 1412.02, 1412.03, 1412.04, 1414, 1414.02, 1414.03, 1444, 1448, 1451, 1457, 1481.02, 1490 Declaration.......... 1410.01, 1414, 1414.01, 1444
Supplemental.................. 1414.01, 1444, 1455 Defective oath, ground for rejection..... 706.03(x), 1414 Dependent claim............................................... 1455 Design.............................................................. 1457 Diligence........................................................... 1403 Disclaimer............................ 1411.01, 1450, 1490 Divisional... 1002.02(b), 1410.01, 1412.01, 1414, 1450, 1451, 1457 Domestic priority, delayed claim.................... 211.04 Double patenting............................................... 1451 Drawings................................... 1413, 1414, 1453
Rev. 07.2015, October 2015Index-87
INDEX
Reference characters — Reissue application
Sec. No.Sec. No.
Duty of disclosure..... 1406, 1418, 1448, 2001.06(c), 2003 EFS-Web filing of............................... 502.05, 1410 Election of species............................................ 1450 Equitable intervening rights.............................. 1460 Error correction after allowance....... 1414.01, 1444 Error in original patent..... 1401, 1402, 1414, 1414.01 Examination.............................. 1440, 1443, 1445
Review of Oath/Declaration.......................... 1444 Examiner Reissue Guide and Checklist........... 1443 Expedited examination..... 708.01, 1441, 1442, 1442.03
Design.......................................................... 1457 Expired patent............................................. 1415.01 Filing fee........................................................... 1415 Final Office action............................................. 1444 Foreign priority claim..... 214, 215, 216.01, 1402, 1417 Format................................. 1410, 1411, 1411.01 Fraud.................................................... 1448, 2012 Grounds for filing.............................................. 1402 Inequitable conduct............................... 1448, 2010 Information disclosure statement...................... 2003 Initial examiner review...................................... 1443 Inoperative or invalid, Oath requirement........... 1414 Inspection........................................................... 103 Interference.................................................. 1449.02 Interference on original patent concurrent with..... 1449.01 Intervening rights.............................................. 1460 Inventorship error............................. 1402, 1412.04 List of references.............................................. 1455 Litigation involved..... 1404, 1442.01 to 1442.05, 1443
Marking envelope......................................... 1404 Litigation protest.......................................... 1901.03 Maintenance fees on original patent............ 1415.01 Merger of reissue applications after restriction.. 1450 Merger of reissue application with ex parte reexamination................................................... 2285 Merger of reissue application with inter partes reexamination.............................................. 2686.03 Multiple filings................................................... 1451 New matter.................................................. 1411.02 Numbering of claims............................. 1451, 1453 Notice in original file....................................... 202.05 Oath..................................... 1414, 1414.01, 1444
Primary examiner’s decision......................... 1004
Supplemental.................. 1414.01, 1444, 1455 Offer to surrender patent (not required)............ 1416
Official Gazette Claim to be printed in................................... 1455 Filing notice in..... 1430, 1441, 1441.01, 1443, 1452, 1457, 1470
Omission of feature...................................... 1411.02 Open to public............................. 103, 1430, 1470 Ordering copies of papers in file....................... 1430 Ownership....................................... 1410.01, 1443 Patent series.................................................. 901.04 Patent term, affect on....................................... 1405 Petition to merge reissue and ex parte reexamination.............................. 1002.02(b), 2285 Petition to merge reissue and inter partes reexamination......................... 1002.02(b), 2686.03 Petition to stay reissue pending ex parte reexamination................................................... 2285 Petition to stay reissue pending inter partes reexamination.............................................. 2686.03 Print of drawing.............................................. 608.02 Prior art consideration...................................... 1402 Prior art statement............................................ 1418 Priority correction..... 214, 216.01, 1402, 1405, 1417 Protest................................. 1441.01, 1443, 1901 Protest filed in reissue where patent is in interference........................................... 1443, 1449 Public access.............................. 103, 1430, 1470 Recapture of matter.............. 706.02(l)(1), 1412.02 Reexamination proceedings copending....... 1449.01
Ex parte ...................................................... 2285 Inter partes ........ 2643, 2686, 2686.03, 2695
Rejection................................................... 706.03(x) Request for Continued Examination (RCE)...... 1451 Requirement for information........................ 1442.04 Restriction............................................. 1450, 1451
Design.......................................................... 1457 Return of original patent................................... 1416 Review.............................................................. 1456 Same invention as original patent................ 1412.01 Special for examination..... 708.01, 1441, 1442, 1442.03
Design........................................................... 1557 Specification..... 1410, 1411, 1411.01, 1453, 1455 Status................................................... 1430, 1470 Statutory basis.................................................. 1401 Statutory disclaimer.......................................... 1490
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Reissue application — Reissue application
Sec. No.Sec. No.
Stayed pending ex parte reexamination..... 2686.03 Stayed pending inter partes reexamination..... 2686.03 Submission of papers in................................... 1404 Suit on original patent.................................. 1442.01 Surrendered patent returned to applicant......... 1416 Suspension....................................................... 1450 Terminal disclaimer... 1410.01, 1411, 1451, 1490 Transfer of original drawing (prior practice)..... 608.02(i), 1413 Treatment of protest..................................... 1901.06 Twice reissued.................................................. 1411 Two month delay period................... 1441, 1441.01
Rejected application......................................... 203.02 Rejection (See also: Anticipation rejection Indefinite claim Obviousness )............................................ 706
Abandonment of invention..... 706.02(d), 706.03(s) Admission by applicant..... 706.02(c), 2133.03(c), 2152.03 After allowance of application..... 706.04, 706.05, 1308.01 After allowance of claim................................. 706.04 After allowance, primary examiner review of..... 1004 After appeal, new rejection......... 1207.03, 1207.04 After termination of interference....................... 2308 Against public policy.................................. 706.03(a) Aggregation............................................. 2173.05(k) All valid grounds........................................ 707.07(g) Allowed claim by Patent Trial and Appeal Board..... 1213.02 Alternative phrases.................................. 2173.05(h) Anticipation (See also: Anticipation rejection )..... 706.02(a), 2131, 2132, 2133, 2136, 2152, 2154 Art (See also: Prior art )................................ 706.02 Assigned applications, Same applicant......... 804.03 Atomic Energy Act..................................... 706.03(b) Authorship......................................................... 2137 Backup rejections.......................................... 706.02 Bar, Statutory.... 706.02(a), 2133 to 2133.03(e)(7), 2152
Overcoming........................................... 706.02(b) Board introduces......................................... 1214.01 Board statement on allowed claim............... 1213.02 Breadth........................................................ 2173.04 Broadening in reissue application................ 1412.03 Broader than the disclosure......................... 2173.03 Chemical practice
Markush......................... 2173.05(h), 2173.05(o) Undue breadth... 2163.05, 2173.04, 2173.05(h)
Claim presented corresponding to claim of patent..... 706.06 Claim presented corresponding to claim of patent, failure to reply............................................ 706.03(u) Claims................................................................. 706 Combination of references........ 706.02(j), 2131.01 Common knowledge.................................... 2144.03 Commonly assigned.. 706.02(k), 2146, 2154.02(c) Computer programming cases........ 2106, 2161.01 Conflicting applications..... 706.02(f)(2), 706.02(k), 706.02(l) to 706.02(l)(3), 709.01, 715.01(b), 804, 804.01, 804.02, 822 Contrasted to objection.................................. 706.01 Copending applications, different inventive entities..... 706.02(k), 706.02(l) to 706.02(l)(3) Cumulative................................. 706.02, 706.07(e) Dedication............................................... 715, 1490 Defective reissue oath................... 706.03(x), 1444 Dependent claim....................................... 608.01(n) Derivation of invention...................................... 2137 Disclaimer.............................. 706.02(u), 710.02(d) Double patenting (See also: Double patenting ) Duplicate claims........................................ 706.03(k) Estoppel, defensive publication..................... 711.06 Estoppel, interference.................................. 2308.03 Final (See also: Final rejection )..... 706.07 to 706.07(h) Foreign application, statutory bar.............. 706.02(e) Form paragraphs used........... 706.02(i), 706.02(m) Form used........................................................... 707 Fraud upon public...................................... 706.03(a) Frivolous invention..................................... 706.03(a) Full anticipation, expression recommended..... 706.02(i) Function of machine................................ 2173.05(v) Functional claim.......................... 2114, 2173.05(g) Functional equivalents................................. 2144.06 Generic claim.............. 715.02, 806.04, 809.02(a) Genus and species..... 806.04(h), 806.04(i), 2131.02, 2144.08 Ground clearly stated.............. 706.02(j), 707.07(d) Inaccurate.................................................... 2173.03 Incomplete.............................. 706.03(d), 707.07(j) Indefinite.................................................... 706.03(d) Inoperativeness....................................... 2164.08(b) Insufficient disclosure................................ 706.03(c) Insufficient disclosure, trademark.............. 608.01(v) Interference, estoppel.................................. 2308.03 Interference terminated................. 710.02(b), 2308
Rev. 07.2015, October 2015Index-89
INDEX
Reissue application — Rejection
Sec. No.Sec. No.
International publication as prior art..... 706.02(a), 2136.03, 2154.01(a) Judicial notice.............................................. 2144.03 Language used....................... 706.02(j), 707.07(d) Linking claim...... 806.04, 806.05(c), 809, 809.03 Markush, improper............. 2173.05(h), 2173.05(o) Multiplicity................................................ 2173.05(n) Negative limitation.................................... 2173.05(i) New, after appeal......................................... 1207.03 New, after final rejection............................ 706.07(e) New matter............................... 706.03(o), 2163.06 Nonelected invention................................ 706.03(m) Nonstatutory claim........................ 706.03(a), 2107 Nonstatutory subject matter...................... 706.03(a) Not based on prior art.................................... 706.03 Not inventor............................................... 706.02(g) Not readable on disclosure.......................... 2173.03 Oath, defective reissue.................. 706.03(x), 1444 Objection distinguished................................. 706.01 Obviousness (See also: Obviousness )..... 706.02, 706.02(j) Official notice............................................... 2144.03 Old combination....................................... 2173.05(j) Omnibus claim...................... 706.03(d), 2173.05(r) Overcoming pre-AIA 35 U.S.C. 102 rejection..... 706.02(b) Overlapping applications.... 706.02(f)(2), 706.02(k), 709.01, 715.01(b), 804, 804.01, 804.02, 822 Perpetual motion....................................... 706.03(a) Personal remarks avoided......................... 707.07(d) Previously allowed claim.................... 706.04, 1004 Prima facie case of obviousness............... 706.02(j)
Printed matter............................................ 706.03(a) Prior art.......................................................... 706.02 Prior art between applicant’s foreign priority date and U.S. filing date................................. 216, 706.02(b) Product by process...................... 2113, 2173.05(p) Product of nature....................................... 706.03(a) Prolix...................................................... 2173.05(m) Provisional rejection..... 706.02(f)(2), 706.02(k), 706.02(l)(3) Public sale (See also: On sale )................ 706.02(c) Public use (See also: Public use )............ 706.02(c) Public use proceeding............................... 706.03(v) Ranges................... 706.02(m), 2131.03, 2144.05 Recapture in reissue application................. 1412.02 Reissue application
Broadened claims..... 706.03(x), 1412.03, 2163.05
Defective oath........................... 706.03(x), 1444 Recapture................................................ 1412.02
Res judicata ............................................ 706.03(w) Scientific principle..................................... 706.03(a) Secondary considerations............... 2131.04, 2145 Single means claim................................. 2164.08(a) Species and genus..... 806.04(h), 806.04(i), 2131.02, 2144.08 Statement of.............................................. 707.07(d) Statutory bar..... 706.02(a), 2133 to 2133.03(e)(7) Suggested claims not made...................... 706.03(u) Technical........................................................ 706.03 Trademark or trade name.......................... 608.01(v) Undue breadth............................ 2163.05, 2173.04 Utility............................................. 706.03(a), 2107 Vague........................................................ 706.03(d) Well known in the art................................... 2144.03
Rejoinder..... 806.05(c), 806.05(f), 806.05(h), 806.05(i), 809, 812.01, 821, 821.01, 821.02, 821.04, 821.04(a), 821.04(b), 1302.04(h) Related inventions..... 802.01, 806.04(b), 806.05, 806.05(j), 808.02, 809.03
Rejoinder of, generic or linking claim allowable..... 821.04(a) Rejoinder of, product claim allowable........ 821.04(b)
Related inventions, species.......................... 806.04(b) Remailing Office action...................... 707.13, 710.06 Remand by Board
Affidavit........................................................ 1211.03 Amendment................................................. 1211.01 Further search............................................. 1211.04 In general.......................................................... 1211 Inter partes reexamination....... 2677, 2681, 2682
Special........................................................... 708.01 Removal of application from Office........................ 101 Renumbering claims....................................... 1302.01 Reopening after allowance............................. 1308.01 Reopening after court decision....................... 1216.01 Reopening prosecution after Action Closing Prosecution in inter partes reexamination............. 2673, 2673.01 Reopening prosecution after Board decision in inter partes reexamination........................................... 2682 Replenishment of deposit accounts (See also: Deposit account: Replenishment ) Reply (See also: Amendment Period for reply )
After abandonment........................................ 714.17 After Board decision................... 1214.01, 1214.06 After final rejection.......................... 714.12, 714.13
By filing RCE......................................... 706.07(h)
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MANUAL OF PATENT EXAMINING PROCEDURE
Rejection — Reply
Sec. No.Sec. No.
Within 2 months..................................... 706.07(f) Attorney arguments....................... 716.01(c), 2145 By patent owner in inter partes reexamination (See also: Reexamination, Inter partes:Response by patent owner ) By third party in inter partes reexamination (See also: Reexamination, Inter partes: Response by third party ) Complete..................................... 714.02 to 714.04 Copying claim from patent not a reply....... 711.02(b) Election requirement................................. 809.02(a) Formal matters............................................... 714.02 Incomplete..... 710.02(c), 711.02, 711.02(a), 711.03(a), 714.02 to 714.05, 2266.01 In ex parte reexamination................................ 2266 Incomplete, election of species lacking..... 809.02(a) Incomplete, proceedings not stayed by petition..... 1002 Incomplete, time for completing..... 710.02(c), 711, 714.03, 2266.01 Late...................................................... 711, 711.02 Late, excused............................................ 710.02(d) Patentability pointed out..... 706.02(b)(2), 714.02, 714.04 Restart period for........................................... 710.06 Restoration of canceled matter.................. 608.01(s) Restriction requirement......................... 818 to 819 Signed by all applicants............................. 714.01(a) Statutory period............................................. 710.01
Reply brief........................................................... 1208 Representative capacity...... 402.03, 405, 714.01(c)
Cannot expressly abandon.................. 711, 711.01 Cannot sign terminal disclaimer....................... 1490 Interviews........................................................... 405
Representative of foreign assignee.................. 302.04 Representative of inventor or owner...................... 400 Representative of requester................................ 2213 Representatives of out-of-town attorneys.............. 408 Republication of PG-Pub...................... 502.05, 1130 Request for Continued Examination (RCE)... 706.07(h)
After allowance................................................. 1308 Conditions for filing.................................... 706.07(h) Design application....................................... 1502.01 Improper CPA treated as........................... 201.06(d) Submission requirement........................... 706.07(h) Suspension of action in...................................... 709 Terminal disclaimer, effect in............................. 1490
Request for ex parte reexamination (See also: Reexamination, Ex Parte )
Request for inter partes reexamination (See also: Reexamination, Inter partes: Request Reexamination, Inter partes: Decision on the request for reexamination ) Request form (PCT/RO/101)..... 1801, 1812, 1821, 1828, 1844.01 Request for reconsideration of patent term adjustment.. 1002.02(b) Request for rehearing of Board decision.... 1002.02(b), 1214.01, 1214.03, 1214.04
Inter partes reexamination................... 2682, 2683 Request for reinstatement of period of patent term adjustment.................................................. 1002.02(b) Request to convert provisional application to nonprovisional application.......................... 1002.02(b) Request to issue patent in name of assignee after issue fee paid....................................................... 1002.02(r) Request for supplemental examination..... 2811 to 2811.02 Requirement for information..... 704.10 to 704.14(d), 706.02(c), 1901.06, 2122, 2123
After the first action on the merits............. 704.11(b) Authority for requirement............................... 704.10 Consideration of information submitted..... 704.14(b), 707.05(b) Format of requirement............................... 704.14(a) Relation to duty of disclosure........ 704.12(a), 2005 Relationship to information disclosure statements ….. 704.14(d) Reply to......................................................... 704.12
Elements of a complete reply................ 704.12(b) Time periods for........................................ 704.13 Treatment of an incomplete reply.......... 704.12(c)
What information may be required..... 704.11, 704.11(a) When requirement may be made.............. 704.11(b)
Requirements must be repeated.................. 707.07(e) Requisites of the application.................................. 702 Res judicata .... 706.03(w), 707.07(g), 2259, 2659 Rescission of nonpublication request...... 1123, 1124 Rescission of Previous Nonpublication Request (35 U.S.C. 122(b)(2)(B)(ii)) and if Applicable, Notice of Foreign Filing (35 U.S.C. (b)(B)(iii)) form PTO/SB/36
Cited..................................................... 1123, 1124 Reproduced...................................................... 1135
Reservation clause in application..... 608.01(e), 608.01(t) Residence, Applicant’s.................. 602.08(a), 719.02 Resignation of examiner, old cases special...... 708.03 Respondent Brief in appeal of inter partes reexamination................................ 2675.01, 2675.02
Rev. 07.2015, October 2015Index-91
INDEX
Reply — Respondent Brief in appeal of inter partes reexamination
Sec. No.Sec. No.
Response (See also: Reply ) Restriction (See also: Election Election of species ).... 800
Action, examiner’s.................................. 814 to 817 Action after, special....................................... 708.01 Action on the merits............................................ 810 Apparatus and process or product..... 806.05(e) to 806.05(g) Application referred to second examiner............ 815 Basis................................................................... 802 Burden, without serious...................................... 803 Claimed subject matter.................................. 806.01 Claims to divisible inventions added before action..... 818.02(a) Combination and subcombination..... 806.05(a), 806.05(c) Continuation........................................................ 819 Design application....................................... 1504.05 Definition........................................................ 802.02 Distinct invention................... 802.01, 806, 806.05 Distinct processes...................................... 806.05(j) Distinct products......................................... 806.05(j) Election other than express........................... 818.02 Election fixed by action on claim.................... 818.01 Final requirement........................................... 821.01 Grouped in parent application....................... 811.04 Improper.................................... 803, 806, 808.02 Independent embodiments..... 802.01, 806.04(b), 806.06 Independent inventions..... 802.01, 803, 806, 806.06, 808.01(a) Intermediate-final product....... 806.04(b), 806.05(j) Introduction......................................................... 801 Linking claim..... 806.04, 806.05(c), 809, 809.03, 821.04(a) Markush type claims............................ 803, 803.02 Nonelected claims, treatment of....... 821 to 821.03
Eligible for rejoinder........................................ 821 Reissue application...................................... 1450
Nonelected invention............ 706.03(m), 821.04(a) Nucleotide sequences....................... 803.04, 2434 Patentability over prior art.................... 809, 809.03 Patentability report, effect................................... 807 Process and product or apparatus..... 806.05(e), 806.05(g) Product and process of using.................... 806.05(h) Product, process of making and using....... 806.05(i) Reasons for holding of independence or distinctness.................................................... 808.01
Reissue application.............................. 1450, 1451 Rejection of nonelected claims......... 821 to 821.03 Rejoinder..... 806.05(c), 806.05(f), 806.05(h), 806.05(i), 809, 812.01, 821, 821.01, 821.02, 821.04, 821.04(a), 821.04(b), 1302.04(h) Related inventions.. 802.01, 803, 806, 806.04(b), 806.05, 808.02, 809.03
Rejoinder of, generic or linking claim allowable..... 821.04(a) Rejoinder of, product claim allowable.... 821.04(b)
Requirement................................ 812, 814 to 817 Additional................................................... 811.02 After election.................................................. 818
With traverse........................................ 821.01 Without traverse................................... 821.02
By group where examinable........................... 812 Clear and detailed record............................... 814 Completeness................................................ 815 Concluding paragraph.................................... 817 Consult other group......................... 812.01, 815 Final................................................................ 810 First action...................................................... 811 Patentability.................................................... 810 Reasons for insisting upon.............. 808, 808.02 Rejection on double patenting following..... 804.01 Repeated after withdrawal......................... 811.03 Reply to.................................... 818 to 818.02(d) Review by examiner with at least partial signatory authority..................................................... 803.01 Submission to TC director......................... 804.04 Second requirement.................................. 811.02 Sequences.................................... 803.04, 2434 Single claim.................................................... 803 Single embodiment.................................... 806.03 Species may be independent or related inventions.............................................. 806.04(b) Species of unclaimed genus................. 808.01(a) Subcombination, Combination..... 806.05(a), 806.05(c) When made..................................... 811, 811.02 Withdrawal...................................................... 819
Subcombinations usable together..... 806.05(d), 806.05(j) Telephone...................................................... 812.01 Transitional application.................................. 803.03 Traverse of requirement....................... 818, 821.01
Restrictions on employees of Office.......... 309, 1702 Restrictions on former employees of Office......... 1702 Restoration of Priority..... 201.04, 211.01(a), 213.03
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MANUAL OF PATENT EXAMINING PROCEDURE
Response — Restoration of Priority
Sec. No.Sec. No.
Retroactive foreign filing license............................ 140 Return of Papers
Discourteous matter........... 714.19, 714.25, 1003 Entered in the file................ 214.03, 719.01, 1003 Return of drawing...................................... 608.02(y) Return of filing fee.......................................... 607.02 Return of patent................................................ 1416 Return of post card (sometimes postcard or post-card).......................................... 503, 1901.05
Returned Office action...................................... 707.13 Review at allowance....................................... 1302.01 Review for national security................................... 115 Review for Government property rights................. 115 Revised statutes (See also: Statutes ) Revival of abandoned application.. 711.03, 711.03(c), 1002.02(b) Revocation of agent under PCT.......................... 1808 Revocation of power of attorney........ 402.05, 402.07
After Allowance................................................. 2501 Rewritten specification................................. 608.01(q) Right of Appeal Notice (RAN)..... 2666.05, 2666.10, 2667, 2671 to 2674, 2677
Content........................................................ 2673.02 Right of priority (See also: Foreign application )
Foreign application................................ 210 to 217 Form paragraphs................................................ 213 Formal requirements........................................... 214 Overcoming a reference.. 213, 213.04, 215, 216, 706.02(b)(2) Papers required.................................................. 215 Time for filing papers..................................... 215.03 U.S. application...................... 211.01(a), 211.01(b)
Right to exclude others.. 509.02, 1111, 1601, 2162 Rights, Transfer of patent or application........... 509.02 RNA (See also: Biotechnology Nucleotide sequences ) Roster of attorneys or agents............... 601.03, 1730 Rospatent (Federal Service for Intellectual Property (Russian Federation)... 1840, 1840.04, 1860, 1865 Rules, 21 CFR 60.3(b)......................................... 2751 Rules, Patent (Code of Federal Regulations)........ , R
10 CFR 810 Cited............................................... 140 21 CFR 312.80-312.88 Cited....................... 2107.03 37 CFR:
1.1 Reproduced.............................................. 501 1.2 Reproduced........................ 713.04, 2002.02 1.3 Reproduced......................................... 714.25 1.4 Reproduced..... 501, 502.02, 502.04, 509.03, 2002.02
1.5 Reproduced.............................................. 502 1.6 Reproduced........... 502, 502.01, 505, 513 1.7 Reproduced......................................... 710.05 1.8 Reproduced.............................................. 512 1.9 (pre-AIA) Reproduced............... 201, 201.04 1.9 Reproduced... 201.01, 201.04, 1893, 2920 1.10 Reproduced.................................. 511, 513 1.11 Reproduced............... 103, 1430, 1879.04 1.12 Reproduced....................................... 301.01 1.14 (pre-AIA) Reproduced............................ 104 1.14 Reproduced.... 101, 102, 103, 104, 110, 150, 1128, 1879.04 1.20 Reproduced..................................... 2666.04 1.22 Reproduced............................................ 509 1.23 Reproduced............................................ 509 1.25 Reproduced....................................... 509.01 1.26 Reproduced............................. 509, 607.02 1.27 Reproduced........................ 509.02, 509.03 1.28 Reproduced....................................... 509.03 1.29 Reproduced..... 509.04(a), 509.04(b), 509.04(d), 509.04(e), 509.04(f) 1.31 Reproduced............................................ 401 1.32 Reproduced........................ 402, 402.02(a) 1.32 (pre-AIA) Reproduced................... 402.02(b) 1.33 (pre-AIA) Reproduced.... 403.01(b), 601.03, 714.01(a) 1.33 Reproduced.... 403.01, 601.03, 714.01(a), 2222, 2622 1.34 Reproduced....................................... 402.03 1.36 (pre-AIA) Reproduced................... 402.05(b) 1.36 Reproduced................... 402.05(a), 402.06 1.41 Reproduced...................... 605.02, 2920.01 1.42 (pre-AIA) Reproduced................... 409.01(b) 1.42 Reproduced.................................. 409.01(a) 1.43 (pre-AIA) Reproduced................... 409.01(b) 1.43 Reproduced.................................. 409.01(a) 1.45 Reproduced....................................... 409.02 1.46 Reproduced............................. 308, 409.05 1.47 (pre-AIA) Reproduced....................... 409.03 1.48 Reproduced....................................... 201.03 1.51 Reproduced............................................ 601 1.52 Reproduced........................... 608.01, 2250 1.53 (pre-AIA) Reproduced.... 201.04, 201.06(d), 601.01 1.53 pre-PLT (AIA) Reproduce.................. 601.01 1.53 Reproduced..... 201.04, 201.06(c), 201.06(d), 506, 601.01, 601.01(c) 1.54 Reproduced............................................ 503
Rev. 07.2015, October 2015Index-93
INDEX
Retroactive foreign filing license — Rules, Patent (Code of Federal Regulations)
Sec. No.Sec. No.
1.55 Reproduced..... 213, 213.04, 213.05, 215.02, 2920.05(d) 1.56 Reproduced..... 2001, 2001.01, 2001.04, 2001.05, 2002 1.57 Reproduced........................ 217, 608.01(p) 1.58 Reproduced................... 608.01, 608.05(b) 1.59 Reproduced....................................... 724.06 1.63 (pre-AIA) Reproduced................... 201.06(c) 1.63 Reproduced............... 201.06(c), 602.01(a) 1.64 Reproduced............................. 409.05, 604 1.66 Reproduced............................. 602, 602.04 1.67 Reproduced............................................ 603 1.69 Reproduced........................... 602.06, 2004 1.71 Reproduced..... 608.01, 608.01(w), 717.02(b) 1.72 Reproduced........................ 606, 608.01(b) 1.73 Reproduced.................................. 608.01(d) 1.74 Reproduced................................... 608.01(f) 1.75 Reproduced..... 608.01(i), 608.01(n), 2173.05(n) 1.76 Reproduced............... 601.05(a), 601.05(b) 1.77 Reproduced................... 608.01(a), 608.05 1.78 in effect on November 29, 2000, Reproduced............................................... 804.03 1.79 Reproduced.................................. 608.01(e) 1.81 (pre-PLT) Reproduced....................... 608.02 1.81 Reproduced....................................... 608.02 1.83 Reproduced.................................. 608.02(d) 1.84 Reproduced..... 608.01(f), 608.01(w), 608.02, 1606 1.85 Reproduced............... 608.02(b), 608.02(p) 1.91 Reproduced....................................... 608.03 1.93 Reproduced....................................... 608.03 1.94 Reproduced.................................. 608.03(a) 1.95 Reproduced.................................. 608.03(a) 1.96 Reproduced.................................. 608.05(a) 1.97 Reproduced............................................ 609 1.98 Reproduced............................................ 609 1.102 Reproduced...................... 708.01, 708.02 1.103 Reproduced.......................................... 709 1.104 Reproduced.... 706.02(l)(2), 707, 707.05, 707.07, 717.02(b), 1302.14, 1852 1.105 Reproduced..................................... 704.10 1.111 Reproduced.. 201.04, 714.02, 714.03(a), 2266, 2666 1.112 Reproduced.......................................... 706 1.113 Reproduced..................................... 706.07 1.114 Reproduced................................ 706.07(h) 1.115 Reproduced................................ 714.01(e)
1.116 Reproduced..................................... 714.12 1.121 Reproduced..... 608.02(p), 608.04, 714, 1453, 2234, 2250, 2666.01 1.125 Reproduced................................ 608.01(q) 1.126 Reproduced.................................. 608.01(j) 1.129 Reproduced................. 706.07(g), 803.03 1.130 Reproduced.......... 717.01, 804.03, 2155 1.131 Reproduced................................ 715, 718 1.132 Reproduced.......................................... 716 1.133 Reproduced...................... 713.01, 713.04 1.135 Reproduced..... 710.01, 711, 711.03(c), 714.03 1.136 Reproduced................. 710.02, 710.02(e) 1.137 Reproduced..... 711.03(c), 1124, 2268, 2668 1.138 Reproduced............... 711, 711.01, 1125 1.141 Reproduced........................ 802, 806.05(i) 1.142 Reproduced.......................................... 802 1.143 Reproduced..................................... 818.01 1.144 Reproduced................................. 818.01(c) 1.145 Reproduced..................................... 821.03 1.146 Reproduced..................................... 806.04 1.151 Reproduced........................................ 1501 1.152 Reproduced................................... 1503.02 1.153 Reproduced................................... 1503.01 1.154 Reproduced................................... 1503.01 1.155 Reproduced................................... 1504.30 1.161 Reproduced........................................ 1602 1.162 (pre-AIA) Reproduced........................ 1604 1.162 Reproduced............................ 1604, 1605 1.163 Reproduced............................ 1603, 1605 1.164 Reproduced........................................ 1605 1.165 Reproduced........................................ 1606 1.166 Reproduced........................................ 1607 1.167 Reproduced........................................ 1609 1.171 Reproduced........................................ 1410 1.172 Reproduced................................... 1410.01 1.173 Reproduced..... 1410, 1411, 1413, 1453 1.175 Reproduced........................................ 1414 1.176 Reproduced........... 1440, 1450, 2686.03 1.177 Reproduced........................................ 1451 1.178 Reproduced........... 1416, 1418, 1442.04 1.181 Reproduced..................... 711.03(c), 1002 1.182 Reproduced........................................ 1002 1.183 Reproduced........................................ 1002 1.197 Reproduced................................... 1214.06 1.198 Reproduced................................... 1214.07 1.211 (pre-AIA) Reproduced........................ 1120
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Sec. No.Sec. No.
1.211 Reproduced............................ 1120, 1126 1.213 Reproduced................ 1122, 1123, 1124 1.215 (pre-AIA) Reproduced........................ 1121 1.215 Reproduced........................................ 1121 1.217 Reproduced........................................ 1132 1.219 Reproduced........................................ 1129 1.221 Reproduced............................ 1130, 1133 1.248 Reproduced........................................ 1901 1.251 Reproduced..................................... 508.04 1.290 Reproduced................................... 1134.01 1.291 Reproduced........................................ 1901 1.297 (pre-AIA) Reproduced........................ 1111 1.301 Reproduced........................................ 1216 1.302 Reproduced....................... 1216.01, 2683 1.303 Reproduced........................................ 1216 1.304 Reproduced............................ 1216, 2683 1.311 Reproduced........................................ 1303 1.312 Reproduced..................................... 714.16 1.313 Reproduced........................................ 1308 1.314 Reproduced................................... 1306.01 1.321 Reproduced........................................ 1490 1.322 Reproduced........................................ 1480 1.323 Reproduced........................................ 1481 1.324 Reproduced................................... 1481.02 1.335 Reproduced.......................................... 311 1.362 Reproduced........................................ 2504 1.363 Reproduced........................................ 2540 1.366 Reproduced........................................ 2515 1.377 Reproduced........................................ 2580 1.378 Reproduced........................................ 2590 1.413 Reproduced........................................ 1840 1.414 Reproduced.............................. 1893.01(a) 1.416 Reproduced........................................ 1862 1.422 Reproduced........................................ 1806 1.431 Reproduced........................................ 1810 1.432 Reproduced........................................ 1821 1.434 Reproduced........................................ 1821 1.435 Reproduced........................................ 1823 1.436 Reproduced........................................ 1824 1.437 Reproduced........................................ 1825 1.438 Reproduced........................................ 1826 1.446 Reproduced................................... 1827.01 1.451 Reproduced..................................... 213.06 1.455 Reproduced............. 402.09, 1807, 1808 1.475 Reproduced........................................ 1850 1.477 Reproduced........................................ 1850 1.480 Reproduced........................................ 1864 1.481 Reproduced........................................ 1867
1.484 Reproduced........................................ 1878 1.485 Reproduced.................. 1864.01, 1878.02 1.488 Reproduced........................................ 1875 1.489 Reproduced................................... 1875.02 1.491 Reproduced................................... 1893.01 1.495 Reproduced................ 709, 1893.01(a)(1) 1.496 Reproduced................................... 1893.03 1.497 Reproduced.............................. 1893.01(e) 1.499 Reproduced.............................. 1893.03(d) 1.501 Reproduced........................................ 2202 1.502 Reproduced........................................ 2202 1.510 Reproduced.... 2210, 2212, 2213, 2214, 2215, 2227, 2266.03 1.515 Reproduced............................ 2240, 2248 1.520 Reproduced........................................ 2239 1.525 Reproduced........................................ 2246 1.530 Reproduced..... 2234, 2249, 2250, 2250.01, 2250.02, 2666.01, 2666.02 1.535 Reproduced........................................ 2251 1.540 Reproduced........................................ 2252 1.550 Reproduced..... 2254, 2265, 2266, 2266.03 1.552 Reproduced........................................ 2258 1.555 Reproduced........................................ 2280 1.560 Reproduced........................................ 2281 1.565 Reproduced.... 2282, 2283, 2284, 2285, 2286 1.570 Reproduced........................................ 2288 1.601 Reproduced..... 2803, 2803.01, 2808, 2812.02 1.605 Reproduced........................................ 2809 1.610 Reproduced..... 2810, 2811, 2811.02, 2812.01 1.615 Reproduced........................................ 2807 1.620 Reproduced..... 2813, 2813.01, 2814, 2815, 2816, 2819, 2820 1.625 Reproduced............................ 2258, 2818 1.701 Reproduced........................................ 2720 1.702 Reproduced........................................ 2730 1.703 Reproduced............................ 2730, 2731 1.704 Reproduced............................ 2730, 2732 1.705 Reproduced..... 2730, 2733, 2734, 2736 1.710 Reproduced........................................ 2751 1.720 Reproduced........................................ 2751 1.730 Reproduced........................................ 2752 1.740 Reproduced............................ 2753, 2754 1.741 Reproduced........................................ 2754 1.750 Reproduced........................................ 2755 1.760 Reproduced................................... 2755.01
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INDEX
Rules, Patent (Code of Federal Regulations) — Rules, Patent (Code of Federal Regulations)
Sec. No.Sec. No.
1.765 Reproduced............................ 2762, 2763 1.770 Reproduced........................................ 2764 1.780 Reproduced........................................ 2759 1.785 Reproduced........................................ 2761 1.790 Reproduced................................... 2755.02 1.791 Reproduced................................... 2755.02 1.801 Reproduced........................................ 2402 1.802 Reproduced........................................ 2404 1.803 Reproduced........................................ 2405 1.804 Reproduced........................................ 2406 1.805 Reproduced........................................ 2407 1.806 Reproduced........................................ 2408 1.807 Reproduced........................................ 2409 1.808 Reproduced........................................ 2410 1.809 Reproduced........................................ 2411 1.821 Reproduced........................................ 2422 1.822 Reproduced........................................ 2423 1.823 Reproduced........................................ 2424 1.824 Reproduced........................................ 2425 1.825 Reproduced........................................ 2426 1.902 Reproduced................ 2202, 2602, 2625 1.903 Reproduced................................... 2666.06 1.906 Reproduced........................................ 2658 1.907 Reproduced....................... 2612, 2686.04 1.915 Reproduced....................... 2613, 2666.06 1.923 (In effect for a request filed prior to September 16, 2011)Reproduced................................... 2640 1.923 Reproduced........................................ 2640 1.925 Reproduced........................................ 2640 1.927 (pre-AIA) Reproduced............ 2640, 2648 1.927 Reproduced............................ 2640, 2648 1.931 (In effect for a request filed prior to September 16,2011) Reproduced................................... 2646 1.931 Reproduced........................................ 2646 1.933 Reproduced........................................ 2684 1.935 Reproduced........................................ 2660 1.937 Reproduced....................... 2654, 2686.03 1.939 Reproduced............................ 2625, 2667 1.941 Reproduced.................. 2666.01, 2666.02 1.945 Reproduced........................................ 2666 1.947 Reproduced................................... 2666.05 1.948 Reproduced................................... 2666.05 1.949 Reproduced.................. 2671.01, 2671.02 1.951 Reproduced........................................ 2672 1.953 Reproduced................................... 2673.02 1.955 Reproduced........................................ 2685 1.956 Reproduced........................................ 2665 1.957 Reproduced.. 2666.10, 2666.20, 2666.30
1.959 Reproduced........................................ 2674 1.981 Reproduced........................................ 2682 1.985 Reproduced........................................ 2686 1.987 Reproduced................................... 2686.04 1.989 Reproduced................................... 2686.01 1.991 Reproduced................................... 2686.03 1.993 Reproduced................................... 2686.02 1.995 Reproduced................................... 2686.03 1.997 Reproduced....................... 2686.03, 2688 1.1061 Reproduced...................................... 1501 1.1002 Reproduced................................. 2905.01 1.1011 Reproduced................................. 2905.01 1.1012 Reproduced................................. 2905.01 1.1021 Reproduced................. 2909, 2920.04(c) 1.1022 Reproduced................................. 2909.01 1.1023 Reproduced...................................... 2908 1.1025 Reproduced............................ 2920.04(a) 1.1026 Reproduced........... 2909.02, 2920.04(b) 1.1031 Reproduced.......................... 2910, 2950 1.1041 Reproduced...................................... 2911 1.1042 Reproduced...................................... 2912 1.1045 Reproduced................................. 2905.01 1.1051 Reproduced...................................... 2913 1.1052 Reproduced...................................... 2914 1.1062 Reproduced................................. 2920.05 1.1063 Reproduced........... 2920.05, 2920.05(a) 1.1065 Reproduced...................................... 2930 1.1066 Reproduced................................. 2920.03 1.1067 Reproduced....... 2920.04(a), 2920.04(c) 1.1068 Reproduced...................................... 2940 1.1071 Reproduced...................................... 2950 3.1 Reproduced.............................................. 301 3.11 Reproduced............................................ 302 3.21 Reproduced....................................... 302.03 3.24 Reproduced....................................... 302.01 3.26 Reproduced....................................... 302.02 3.27 Reproduced....................................... 302.08 3.28 Reproduced....................................... 302.07 3.31 Reproduced........................ 302.07, 302.10 3.34 Reproduced....................................... 323.01 3.41 Reproduced....................................... 302.06 3.51 Reproduced....................................... 317.01 3.54 Reproduced....................................... 317.03 3.56 Reproduced....................................... 317.03 3.58 Reproduced............................................ 302 3.61 Reproduced....................................... 302.04 3.71 (pre-AIA) Reproduced............. 324, 402.07 3.71 Reproduced............................................ 325
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Rules, Patent (Code of Federal Regulations) — Rules, Patent (Code of Federal Regulations)
Sec. No.Sec. No.
3.73 (pre-AIA) Reproduced........... 324, 1410.01 3.73 Reproduced............................................ 325 3.81 Reproduced............................................ 307 5.1 Reproduced.............................................. 120 5.2 Reproduced.............................................. 120 5.3 Reproduced.................................. 120, 2306 5.4 Reproduced.............................................. 120 5.5 Reproduced.............................................. 120 5.11 Reproduced............................................ 140 5.12 Reproduced............................................ 140 5.13 Reproduced............................................ 140 5.14 Reproduced............................................ 140 5.15 Reproduced............................................ 140 5.18 Reproduced............................................ 140 5.19 Reproduced............................................ 140 5.20 Reproduced............................................ 140 5.25 Reproduced............................................ 140 11.9 Reproduced........................ 402.01, 402.09 11.10 Reproduced........................................ 1702 11.18 Reproduced..... 402.03, 410, 509.03, 2203 11.116 Reproduced................................... 402.06 41.2 Reproduced..................................... 2301.02 41.6 Reproduced..................................... 1213.03 41.11 Reproduced................................... 2307.01 41.31 Reproduced........................................ 1204 41.33 Reproduced........................................ 1206 41.37 Reproduced........................................ 1205 41.39 Reproduced............................ 1207, 2275 41.41 Reproduced........................................ 1208 41.43 Reproduced....................... 1207.05, 1208 41.50 Reproduced................................... 1207.05 41.52 Reproduced................................... 1214.03 41.54 Reproduced........................................ 1214 41.61 Reproduced....................... 2674, 2674.01 41.66 Reproduced........... 2675, 2675.01, 2678 41.67 Reproduced....................... 2675, 2675.02 41.68 Reproduced.................. 2675.01, 2675.02 41.69 Reproduced........................................ 2677 41.71 Reproduced........................................ 2678 41.73 Reproduced........................................ 2680 41.77 Reproduced........................................ 2681 41.79 Reproduced........................................ 2682 41.8 Reproduced......................... 2284, 2686.02 41.81 Reproduced........................................ 2682 41.100 Reproduced................................. 2301.02 41.102 Reproduced......... 2284, 2303, 2686.02 41.103 Reproduced......... 2284, 2307, 2686.02
41.109 Reproduced................................. 2307.02 41.127 Reproduced...................................... 2308 41.200 Reproduced................................. 2301.02 41.201 Reproduced................................. 2301.02 41.202 Reproduced..... 2304.02, 2304.02(a), 2304.02(b), 2304.02(c), 2304.02(d), 2304.03, 2305 41.203 Reproduced................................. 2301.03 41.206 Reproduced................................. 2304.05 90.1 Reproduced.......................................... 2683 102.4 Reproduced.......................................... 103
S
Sale, On (See also: On sale ) Sample letter on submission of prior art in patent..... 2205 Sanctions............................................................... 410 Saturday, effect on time for reply..... 502, 502.01, 502.05, 505, 506.02, 510, 513, 710.05, 2504, 2506 Scientific and Technical Information Center (STIC)..... 901.06(a)
Biotechnology sequence listings..... 2421.03, 2429 Foreign patents..... 706.02(e), 901.05, 901.05(c), 903.03, 901.07 Hours................................................................ 1730 Litigation search...... 2240, 2287, 2640, 2686.04 Literature collection.................... 719.05, 901.06(a) Location and telephone number....................... 1730 Translation assistance............ 901.05(d), 901.06(a)
Scientific principle not patentable................. 706.03(a) Scope of claims.......... 904.01(a), 2163.05, 2164.08
Design application..... 1503.01, 1504.04, 1504.05, 1504.06
Scope of class.............................................. 903.02(b) Scope of reexamination
Ex parte .......................................................... 2258 Inter partes ..................................................... 2658
Screening new application for security review..... 115, 706.03(b) Seal....................................................................... 602
Not required........................................................ 602 Venue.................................................................. 602
Search................................................................... 900
Rev. 07.2015, October 2015Index-97
INDEX
Rules, Patent (Code of Federal Regulations) — Search
Sec. No.Sec. No.
After reversal by Patent Trial and Appeal Board ..... 1214.04 Aids in Scientific and Technical Information Center (STIC)........................................................ 901.06(a) Analogous art areas.................................. 904.01(c) Claim analysis............................................... 904.01 Computer....................................................... 719.05 Databases (See also: Electronic databases ) Electronic documents............. 707.05(e), 904.02(c) Fee, PCT.......................................................... 1827 Field of....................................... 904.02, 904.02(a)
Not to be given for patented inventions........ 1701 File wrapper notation........................... 719.05, 904 Incomprehensible disclosure......................... 702.01 In Technology Center, by member of public.... 713.02 Informal application......................... 702.01, 704.01 INPADOC.................................................. 901.06(a) Interference............................................. 2304.01(a) Internet................................... 707.05(e), 904.02(c) Notes in classification definitions..... 902.02(a), 905.01(a)(2) Notes in file wrapper..... 705.01(a), 719.05, 903.07(a) Online database (See also: Electronic databases ).... 901.06(a), 902.03(e) Outlining.................................................... 904.02(a) Patentability report................. 705.01(a), 705.01(b) Prior examiner’s............................................. 704.01 Procedure............................................ 704.01, 904 References in classification definition.... 905.01(a)(1) Requirements for information..... 704.11, 704.11(a) Restriction requirement................................. 808.02 Scope............................................................... 2112 Selecting pertinent references....................... 904.03 Title..................................................................... 306 Unduly extensive and burdensome..... 806.01, 808.01(a), 818.02(b)
Search notes page (OACS)..... 704.14(b), 705.01(a), 719.05 Search facility hours.................................. 510, 1730 Search tools, automated.............................. 902.03(e) Searched box entries........................................ 719.05 Secrecy, in general................................................ 101 Secrecy of international applications..................... 120 “Secrecy Order” application............... 115, 120, 130
After declassification........................................... 130 Allowance........................................................... 130 Commodity Control List...................................... 120 Correspondence................................................. 120
Facsimile transmission of correspondence not permitted............................................................. 120 Final rejection..................................................... 130 Interference............................................. 130, 2306 Petition for rescission or modification................. 120 Prosecution......................................................... 130 Review...................................................... 115, 140 Security, Application affecting..... 120, 121, 130, 140
Secret sale (See also: On sale ) Security interest in patent, recording (See also: Assignment ).......................................................... 313 Security markings.................... 121, 130, 140, 724 Security screening of new applications....... 115, 140 Security Working Group 3640, applications submitted... 121, 130, 706.03(b), 1002.02(c)(1) Self-addressed postcard (See also: Postcard, self-addressed )..................................................... 503 Sequence listing (See also: Sequence rules )..... 2422.01
Database (See also: Sequence rules ) EFS-Web submission............... 502.05, 2422.03(a) Hand delivery............................................... 2422.09 Pre-Grant Publications (PG-Pub)..................... 1121 Statements................................. 2422.06, 2422.07
Sequence rules (See also: Biotechnology )........ 2400 Amendments to sequence listing and computer readable form................................... 2422.07, 2426 Amino acid definition................................... 2422.01 AuthorIn............................................................ 2430 Changes to rules......................................... 2421.04 Coding regions, depiction of........................ 2423.02 Compliance requirement................. 2422.07, 2429 Computer readable format requirement..... 502.05, 2421.01, 2422.04, 2425 Database.. 2422.01, 2422.03, 2422.04, 2423.02, 2424.02, 2424.02, 2425, 2429, 2430 Definitions for nucleotides/amino acids....... 2422.01 Definition of "Sequence Listing" and "CRF".. 2421.01 Exclusive conformance requirement............ 2422.02 Extensions of time....................................... 2421.03 Format and symbols........................ 2423, 2423.01 Form paragraphs.............................................. 2427 Hand-delivery of sequence listings and computer readable forms............................................. 2422.09 Helpful hints for compliance.............................. 2429 Informational requirements for sequence listings..... 2424, 2424.01, 2424.02 Mandatory information items........... 2424, 2424.02
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Search — Sequence rules
Sec. No.Sec. No.
Minor errors...................................................... 2427 Miscellaneous requirements, information..... 2424.03 Notice to comply.......................................... 2421.03 Nucleotide definition.................................... 2422.01 Numbering of sequences............................. 2423.02 Numeric identifiers........................... 2424, 2424.02 Official copy of sequence listing.................. 2422.04 PatentIn information.............................. 1730, 2430 Presumptions regarding compliance........... 2422.08 Previously filed identical computer readable form, transfer request............................................ 2422.05 Replacement of sequence listing and computer readable form................................... 2422.07, 2426 Sample sequence listing................................... 2431 Sanctions for failure to comply..................... 2422.07 Sequence identifier requirement.................. 2422.01 Sequence listing requirement...................... 2422.01
Patent Cooperation Treaty (PCT)..... 1823.02, 1848, 2422, 2422.03(a), 2430
Sequence presentation................................ 2423.03 Sequences embedded in application text.... 2422.01, 2423.02 Sequences in drawings................................ 2422.02 Sequence listing transfer request................ 2422.05 Statement regarding content of paper and computer readable copies................ 502.05, 2422.06, 2428 Statement regarding new matter..... 2422.07, 2428 Summary of requirements........................... 2421.02 Variants of a presented sequence............... 2422.01 Voluntary compliance.................................. 2422.01 WIPO Standard ST. 25, Appendix 2 Tables
Reproduced.................................................. 2422 Cited........................... 2422.01, 2423, 2423.01
Sequences, restriction.......................... 803.04, 2434 Series codes.......................................................... 503 Series of dependent claims.......................... 608.01(n) Series, Patent (See also: Patent ) Service, proof of, in a petition for access............... 103 Service of citation in patent................................. 1901 Service of court papers on Director..................... 1216 Service of patent owner statement on requestor in ex parte reexamination............................ 2249, 2266.03 Service of papers in inter partes reexamination..... 2666.06
Certificate of................................................ 2666.06 Proof of service............... 2666.06, 2666.50, 2667 To patent owner............................... 2654, 2666.05 To third party requestor........ 2654, 2666, 2666.05
Shift of election...................................................... 819
Shoes (See also: Search )............................... 901.07 Shortened statutory period (See also: Period for reply Statutory period ).......................... 710.02, 710.02(b)
Appeal............................ 1205, 1214.06, 1215.04 Date of abandonment................................ 711.04(a) Drawings................................ 608.02(p), 608.02(x) Extension of time................. 710.02(e), 1002.02(c) Final rejection..... 706.07, 706.07(b), 706.07(f), 706.07(g), 714.13 Informal application........................................ 702.01 Information disclosure statement.............. 609.04(b) Quayle........................................................... 714.14 Reexamination, ex parte .... 2250.01, 2263, 2265, 2272, 2273, 2285, 2286 Time limits compared................................ 710.02(d)
Signatory Authority, Full....................................... 1004 Signatory Authority, Partial.................................. 1005 Signature
Alteration in specification signed................... 608.01 Amendment................................................... 714.01
Signature improper..... 714.01(a), 714.01(c), 714.01(d) Signature missing................................. 714.01(a) Signed by applicant, not by attorney of record..... 714.01(d) Signed by attorney not of record........... 403.01(b)
Applicant................................................... 602.08(b) Applicant changes name................ 201.03, 605.01 Applicant, international application................... 1820 Applicant unable to write........................... 602.08(b) Application papers..................................... 602.08(b) Attorney or agent not of record...................... 402.03 Certification, effect of................. 401, 402.03, 410 Continued prosecution application............ 201.06(d) Correction of name.................................... 602.08(b) Express abandonment......................... 711, 711.01 Facsimile........... 502.01, 502.02, 505, 511, 512 Full, first or middle name........................... 602.08(b) Required on every paper..................... 402, 402.03 Title with.................................................... 602.08(b) Uniformity with name................................. 602.08(b)
Signing, continued prosecution application... 201.06(d) Signing examiner’s letter..... 706.07, 707.08, 707.09 Signing file wrapper........................................ 1302.13 Simulated tests in the specification.............. 608.01(p) Simultaneous issue of patents........................ 1306.02 Single means claim........................ 2164.08(a), 2181 Size of paper (See also: A4 size paper Paper size ) Sketch of subject matter of claims............... 904.01(a)
Rev. 07.2015, October 2015Index-99
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Sequence rules — Sketch of subject matter of claims
Sec. No.Sec. No.
Small Business Act........................................... 509.02 Small Business Administration......................... 509.02 Small entity status (See also: Fee )
Change of status........................................... 509.03 Claiming status.............................................. 509.03 Correcting status........................................... 509.03 Definition........................................................ 509.02 Established in parent application............... 201.06(c) Fees............................................................... 509.02 Government organizations............................. 509.02 Improper payment.......................................... 509.03 Independent inventor..................................... 509.02 Maintenance fees...... 509.03, 2515, 2531, 2550 Nonprofit organization.................... 509.02, 509.03 Refund............................................ 509.03, 607.02 Small business concern................................. 509.02 Statement verified.......................................... 509.03 Transfer of invention rights..... 509.02, 509.04(a), 509.04(b)
Solicitor’s Office (See also: Office of Solicitor ) Sources of information to disclose.................. 2001.06 Special application............................... 708 to 708.03
Accelerated examination............................... 708.02 Allowable application, except for form..... 707.07(j), 710.02(b), 714.14, 1301 Appealed application........................................ 1204 Applicant’s age, health.............. 708.02, 1002.02(s) Cancer..................................................... 1002.02(s) Counter-terrorism inventions..... 708.02, 1002.02(s) Energy........................................................... 708.02 Environmental Quality Program............... 1002.02(s) Five year pendency....................................... 707.02 HIV/AIDS................................................. 1002.02(s) Infringement............................. 708.02, 1002.02(s) List................................................................. 708.01 Manufacture.............................. 708.02, 1002.02(s) Patent printing priority....................................... 1309 Petition to make........................ 708.02, 1002.02(s) Reexamination
Ex parte ...................................................... 2261 Inter partes ................................................. 2661
Reissue application....................... 706.03(x), 1442 Remanded by Board...................................... 708.01 Revived applications.................................. 711.03(c)
Special examining procedure........................... 708.02 Special Program Examiner (SPRE)..... 103, 1415.01, 1825, 1845.01, 1851
Petitions decided..................................... 1002.02(s)
Species..... 806.01, 806.04, 806.04(b), 806.04(d), 806.04(e), 806.04(f), 806.04(h), 806.04(i), 808.01(a), 809.02(a)
Anticipation by a generic chemical formula.. 2131.02 Anticipation of a genus by the species........ 2131.02 Cancellation of species claims....... 821.01, 821.02 Claims restricted to................................... 806.04(e) Election of (See also: Election of species ) How recognized.......................................... 806.04(f) Independent inventions.............. 802.01, 808.01(a) Mutually exclusive characteristics.............. 806.04(f) Obviousness of............................................ 2144.08 Patentably distinct..................................... 806.04(h) Patentability over genus............................ 806.04(h) Plural....................... 706.03(k), 806.04, 808.01(a) Reissue............................................................. 1450 Rejection.................................. 806.04(h), 2131.02 Related...................................................... 806.04(b) Withdrawal of species claim........... 821.01, 821.02
Specification (See also: Disclosure ).... 608.01, 2161 Amendment, manner of making......................... 714 Arrangement.............................................. 608.01(a) Background of the invention...................... 608.01(c) Best mode (See also: Best mode ).................. 2165 Brief description of drawings...................... 608.01(f) Brief summary of invention........................ 608.01(d) British English spellings in............................. 608.01 British provisional and complete.................... 214.03 Changes prior to filing..................... 601.01, 608.01 Completeness..... 608.01(p), 2161, 2163 to 2165 Computer lists................................................ 608.05 Confused by amendments....... 608.01(q), 1302.02 Content of.................................................. 608.01(a) Continued prosecution application............ 201.06(d) Copyrights in..................................................... 1512 Correction by examiner’s amendment..... 1302.04 to 1302.04(g) Correction by initialing................................. 1302.04 Cross-noting of related applications............ 1302.04 Defines claim term....................................... 2111.01 Derogatory remarks prohibited.................. 608.01(r) Description................... 608.01(g), 2163, 2163.02 Design application....................................... 1503.01 Detailed description of invention............... 608.01(g) Enablement (See also: Enablement ).............. 2164 English language........................................... 608.01 Facsimile transmission................................... 608.01 Font................................................................ 608.01
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Small Business Act — Specification
Sec. No.Sec. No.
Format....................................................... 608.01(a) Illustrations in................................................. 608.01 Incorporation by reference........................... 2163.07 Interlineation prior to filing............................. 608.01 Language faulty.......................... 608.01, 608.01(g) Missing pages........................................... 601.01(d) New matter................ 608.04, 706.03(o), 2163.06 Omitted pages................................. 217, 601.01(d) Paragraph numbering....... 608.01, 608.01(g), 714 Parts.......................................................... 608.01(a) Provisional application............................... 601.01(b) Reference characters corrected.................. 1302.04 Reissue application.......................................... 1411 Requirements for.............................................. 2161 Return............................................................ 608.01 Rewritten.................................. 608.01(q), 1302.02 Signature................................................... 602.08(b) Substitute, amendment including..... 714.19, 714.20 Substitute specification..... 608.01(q), 714.19, 714.20
Pre-Grant Publication.................... 502.05, 1120 Summary of invention................................ 608.01(d) Table submission on compact disc or via EFS-Web as ASCII text file.................. 608.05(b), 2422.03(a) Terminology basis for claims..... 608.01(o), 2163.07 Title of invention.................................................. 606 Title of invention changed.............................. 606.01 Trademarks in................................................... 1512 Transfer to another application................... 608.01(t) Written description (See also: Written description ).... 2163
Specimen, Composition of matter.................... 608.03 Specimen, Handling..................................... 608.03(a) Specimen, Plant application................................ 1607 Stamp
Office date..... 502, 505, 506, 710.01(a), 714.18 Statement applying the prior art in an ex parte reexamination...................................................... 2217 Statement, Examiner’s (See also: Action ) Statement by inventors when changing inventorship..... 201.03 Statement by owner in ex parte reexamination... 2249 Statement of allowability by Board.................. 1213.01 Statement of invention, coextensive with claims..... 608.01(d) Statement of invention, reviewed on allowance..... 1302.01 Statement, Prior art (See also: Prior art ).... 201.06(d), 609
Status inquiries....................................... 102, 203.08 Congressional........................................... 203.08(a) Maintenance fees............................................. 2570 White House.............................................. 203.08(a)
Status letter...................................................... 203.08 Status letter database....................................... 203.08 Status of application.................................... 102, 203
Abandoned.................................................... 203.05 Allowed or in issue......................................... 203.04 Amended....................................................... 203.03 Incomplete..................................................... 203.06 New................................................................ 203.01 Parent patent application................. 102, 211.01(b) Priority claims..................................................... 102 Published application........................................ 1128 Referred to in foreign patent............................... 102 Rejected........................................................ 203.02
Statute of limitations Citation of prior art............................................ 2204 Term of biological material deposit................... 2408 Time for requesting ex parte reexamination..... 2211
Statutes Atomic Energy Act Cited.. 120, 140, 150, 706.03, 706.03(a) to 706.03(b) Freedom of Information Act................. 1002.02(k)(2) Public Law 96-517................. 509.02, 2201, 2209 Public Law 97-247....... 509.02, 509.03, 711.03(c) Public Law 98-622........................... 706.02(k), 804 Public Law 103-182............................................ 715 Public Law 103-465..... 706.07(g), 707.05, 715, 715.07(c), 803.03, 804.02, 2132, 2138.02 Public Law 106-113..... 706.02(k), 706.02(l)(1), 2201, 2273, 2279, 2601 Public Law 107-273 Cited... 706.02(f)(1), 706.02(k), 706.07(a), 2201, 2242, 2258.01, 2273, 2279, 2601, 2642, 2683 Public Law 108-453 Cited... 706.02(k), 706.02(l)(1), 706.02(l)(3), 804.03, 2136.01, 2146 Public Law 112-29 Cited..... 210, 509.02, 509.04, 607, 2105, 2106, 2124.01, 2150, 2151, 2165, 2201, 2279, 2601, 2602, 2801 Public Law 112-211......................... 702, 711.03(c) Revised Statute of........................................... 1874, 5 U.S.C. 552(a)..................................... 2422, 2423 5 U.S.C. 6103(a) Cited................................... 710.05 7 U.S.C. 2321.................................................... 1612 10 U.S.C. 140(c) Cited........................................ 120 15 U.S.C. 15(b) Cited.......................................... 101 15 U.S.C. 1127 Cited................................. 608.01(v)
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INDEX
Specification — Statutes
Sec. No.Sec. No.
17 U.S.C. 401 Cited.......................................... 1512 17 U.S.C. 909 Cited................... 608.01, 608.01(w) 18 U.S.C. 1001
Cited.... 402.03, 410, 602.01, 602.01(a), 604, 715.04, 716.02(g), 2428 Reproduced.................................................... 602
18 U.S.C. 1905 Cited.......................................... 101 18 U.S.C. 2071 Reproduced............................... 101 18 U.S.C. 2331............................................... 708.02 20 U.S.C. 1000 Cited..................................... 509.02 26 U.S.C. 501 Cited....................................... 509.02 28 U.S.C. 1745 Cited..................................... 901.05 28 U.S.C. 1746
Cited............................................................... 602 35 U.S.C. 2 Reproduced................................... 1001 35 U.S.C. 3 Reproduced................................... 1001 35 U.S.C. 4 Reproduced................................... 1702 35 U.S.C. 6 Reproduced................................... 1202 35 U.S.C. 7 Reproduced............................ 901.06(a) 35 U.S.C. 8 Reproduced................................ 903.01 35 U.S.C. 21 Reproduced.......... 511, 513, 710.05 35 U.S.C. 22 Reproduced.............................. 608.01 35 U.S.C. 25 Reproduced................................... 602 35 U.S.C. 26 Reproduced................................... 602 35 U.S.C. 27 Reproduced... 711.03(c), 2268, 2668 35 U.S.C. 41 Reproduced......... 2268, 2501, 2668 35 U.S.C. 42 Reproduced.............................. 607.02 35 U.S.C. 100 Reproduced................................. 701 35 U.S.C. 101 Reproduced..... 201, 701, 804, 2107.01 35 U.S.C. 102 (pre-AIA) Reproduced..... 706.02, 1504.02, 2132, 2133, 2133.03(c), 2134, 2135, 2136, 2137, 2138, 2217, 2258, 2301.01 35 U.S.C. 102 Reproduced................... 2152, 2156 35 U.S.C. 102(e), former Reproduced......... 2136.03 35 U.S.C. 103 (pre-AIA) Reproduced.... 2141, 2146 35 U.S.C. 103 Reproduced..... 706.02, 706.02(l), 706.02(l)(1), 706.02(n), 804.03, 1504.03, 2141 35 U.S.C. 104 Reproduced....... 715.07(c), 2301.01 35 U.S.C. 111 (pre-AIA) Reproduced............ 201.04 35 U.S.C. 111 pre-PLT (AIA) Reproduced.......... 601 35 U.S.C. 111 Reproduced........ 201, 201.04, 601 35 U.S.C. 112 (pre-AIA) Reproduced.... 2161, 2171 35 U.S.C. 112 Reproduced... 1504.04, 2161, 2171 35 U.S.C. 113 Reproduced............................ 608.02 35 U.S.C. 114 Reproduced............................ 608.03 35 U.S.C. 115 (pre-AIA) Reproduced........ 602.01(b) 35 U.S.C. 115 Reproduced........................ 602.01(a)
35 U.S.C. 116 (pre-AIA) Reproduced..... 409.03, 602.09 35 U.S.C. 116 Reproduced............................ 602.09 35 U.S.C. 117 Reproduced..... 409.01(a), 409.01(b) 35 U.S.C. 118 (pre-AIA) Reproduced............ 409.03 35 U.S.C. 118 Reproduced................................. 308 35 U.S.C. 119 Reproduced....................... 211, 213 35 U.S.C. 120 Reproduced................................. 211 35 U.S.C. 121 Reproduced....................... 802, 804 35 U.S.C. 122 Reproduced..... 101, 1120, 1122, 1123, 1124, 1132, 1134 35 U.S.C. 131 Reproduced................................. 701 35 U.S.C. 132 Reproduced.... 706.03(o), 706.07(h), 2304.04(b) 35 U.S.C. 133 Reproduced......... 710, 2268, 2668 35 U.S.C. 134 Reproduced............................... 1204 35 U.S.C. 135 Reproduced.......................... 2301.01 35 U.S.C. 141 Reproduced................... 1216, 2683 35 U.S.C. 142 Reproduced.......................... 1216.01 35 U.S.C. 143 Reproduced.......................... 1216.01 35 U.S.C. 144 Reproduced.......................... 1216.01 35 U.S.C. 145 Reproduced............................... 1216 35 U.S.C. 146 Reproduced............................... 1216 35 U.S.C. 152 Reproduced................................. 307 35 U.S.C. 153 Reproduced............................... 1309 35 U.S.C. 154 Reproduced............................... 2701 35 U.S.C. 154, former, Reproduced.................. 2720 35 U.S.C. 156 Reproduced.. 2751, 2752, 2755.01, 2758, 2759 35 U.S.C. 161 Reproduced..................... 201, 1601 35 U.S.C. 162 Reproduced..................... 804, 1605 35 U.S.C. 163 Reproduced............................... 1601 35 U.S.C. 164 Reproduced............................... 1609 35 U.S.C. 171 Reproduced..... 201, 1501, 1504.01 35 U.S.C. 172 Reproduced......... 1504.02, 1504.10 35 U.S.C. 173 Reproduced................... 1505, 2950 35 U.S.C. 181 Reproduced................................. 115 35 U.S.C. 182 Reproduced........................ 706.03(s) 35 U.S.C. 184 Reproduced.............. 140, 706.03(s) 35 U.S.C. 185 Reproduced.............. 140, 706.03(s) 35 U.S.C. 186 Reproduced................................. 140 35 U.S.C. 187 Reproduced................................. 140 35 U.S.C. 188 Reproduced................................. 140 35 U.S.C. 251 Reproduced.. 1401, 1403, 1410.01, 1412.03, 1451 35 U.S.C. 252 Reproduced............................... 1460 35 U.S.C. 253 Reproduced............................... 1490 35 U.S.C. 254 Reproduced............................... 1480 35 U.S.C. 255 Reproduced............................... 1481
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Statutes — Statutes
Sec. No.Sec. No.
35 U.S.C. 256 Reproduced.......................... 1481.02 35 U.S.C. 257 Reproduced............................... 2802 35 U.S.C. 261 Reproduced................................. 301 35 U.S.C. 262 Reproduced................................. 301 35 U.S.C. 267 Reproduced................................. 710 35 U.S.C. 293 Reproduced............................ 302.04 35 U.S.C. 294 Reproduced................................. 311 35 U.S.C. 301 Reproduced............................... 2202 35 U.S.C. 302 Reproduced............................... 2210 35 U.S.C. 303 Reproduced............................... 2240 35 U.S.C. 304 Reproduced............................... 2246 35 U.S.C. 305 Reproduced................... 2254, 2261 35 U.S.C. 306 Reproduced................... 1216, 2273 35 U.S.C. 307 Reproduced................... 2288, 2293 35 U.S.C. 312 (In effect for requests filed prior to September 16, 2011) Reproduced................... 2640 35 U.S.C. 312 Reproduced............................... 2640 35 U.S.C. 313 Reproduced............................... 2646 35 U.S.C. 314 Reproduced... 2654, 2661, 2686.04 35 U.S.C. 315 Reproduced............................... 2674 35 U.S.C. 316 Reproduced................... 2688, 2693 35 U.S.C. 317 Reproduced.......................... 2686.04 35 U.S.C. 318 Reproduced.......................... 2686.04 35 U.S.C. 361 Reproduced............................... 1805 35 U.S.C. 362 Reproduced............................... 1840 35 U.S.C. 363 Reproduced................ 201.01, 1810 35 U.S.C. 365 Reproduced............................ 213.06 35 U.S.C. 371 Reproduced.......................... 1893.01 35 U.S.C. 373 Reproduced............................... 1810 35 U.S.C. 374 Reproduced............................... 1857 35 U.S.C. 381 reproduced................................ 2908 35 U.S.C. 382, reproduced.......................... 2905.01 35 U.S.C 383 Reproduced................................ 2909 35 U.S.C. 384, reproduced................... 2908, 2914 35 U.S.C. 386 Reproduced..... 2920.05(d), 2920.05(e) 35 U.S.C. 387 Reproduced............................... 2913 35 U.S.C. 389 Reproduced... 2920, 2920.05, 2950 42 U.S.C. 141 Cited............................................ 120 42 U.S.C. 181 Cited............................................ 120 42 U.S.C. 2182 Reproduced............................... 150 51 U.S.C. 20135 Reproduced............................. 150
Statutory authority of Director.............................. 1001 Statutory bar..... 706.02(a), 2133 to 2133.03(e)(7), 2152
Foreign application...................................... 1504.02 Overcoming............................................... 706.02(b) Rule 1.131 not available........................... 715, 718
Statutory classes of invention, utility............ 706.03(a) Statutory disclaimer (See also: Disclaimer Terminal disclaimer ) Statutory Invention Registration (SIR)..... 409.03(j), 1100
Defensive publication compared.................... 711.06 Effect of............................................................. 1111 Publication of.................................................... 1111 Rejections using................................ 901.02, 2136
Statutory period (See also: Period for reply: Shortened statutory period )........................... 710.01, 710.01(a)
Abandonment for failure to reply..... 711.02, 711.02(a) Appeal.............................................................. 1205 Broadening claims in a reissue application... 1412.03 Computed.................................................. 710.01(a) Date from which period runs.......................... 710.06 Date of abandonment................................ 711.04(a) Full statutory period............................................ 130 Not extendible........................................... 710.02(e) Postal service emergency................................... 511 Property rights statement................................... 150 Reexamination, ex parte ..................... 2265, 2272 Reexamination, inter partes ................ 2662, 2665 Secrecy order application................................... 130 Shortened statutory period (See also: Shortened statutory period ) Two periods for reply set............ 710.04, 710.04(a)
Stay of reexamination Ex parte ..... 2283, 2284, 2285, 2286, 2286.01 Inter partes ............................... 2686.03, 2686.04
Stay of reissue.................................... 1442.02, 2285 Stockholm Revision, Paris Convention (See also: Treaties ).................................. 213, 213.01, 213.05 Strasbourg Agreement (See also: Treaties )......... 906 STIC (See also: Scientific and Technical Information Center (STIC) ).................................................... 1730 Subcombination
Aggregation and........................................ 806.05(a) Combination and........................................... 802.01 Species..................................................... 806.04(b)
Subgeneric Markush claims....................... 2173.05(h) Subject matter, design patent............. 1502, 1504.01 Subject matter, nonstatutory........................ 706.03(a) Subject matter combinations........................ 903.02(b) Submission of amendment or showing of facts after Board decision................................................ 1214.01 Submission of patents or publications, third party..... 1134.01
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INDEX
Statutes — Submission of patents or publications, third party
Sec. No.Sec. No.
Submission to classification unit Classification of application..... 903.08(d), 903.08(e) Patentability report.................................... 705.01(a)
Submission of prior art by applicant............. 707.05(b) Submission of information by applicant..... 704.12(b), 704.14(b), 707.05(b) Subpoena by court, Application file................ 1216.02 Subpoena of examiner................................... 1701.01 Substantial new question of patentability
In ex parte reexamination..... 2201, 2214, 2216, 2240, 2242, 2244, 2246, 2247, 2258, 2258.01, 2809.01, 2816 In inter partes reexamination............... 2640, 2642
Substitute application (See also: Application ) Assignment......................................................... 306 Does not carry ownership from parent............... 306 File wrapper/history notation.............................. 202
Substitute attorney or agent.................................. 406 Substitute oath.................................................. 602.02 Substitute page................................................. 714.20 Substitute specification.. 608.01, 608.01(q), 714.19, 714.20
Amendment incorporating..... 714, 714.19, 714.20 New matter................................................ 608.01(q)
Sufficiency of disclosure affidavit............ 716, 716.09 ‘Sufficient cause’ for extension of time in ex parte reexamination...................................................... 2265 ‘Sufficient cause’ for extension of time in inter partes reexamination...................................................... 2665 Suggested claims, Failure to make.............. 706.03(u) Suggestion of allowable claims by examiner..... 707.07(j), 713.01 Suggestion of claims for interference..... 2304.03 to 2304.04(b) Suggestion of claims for interference, time limit..... 710.02(c) Summary of action PTOL-326............................... 707 Summary of interview........................ 713.01, 713.04 Summary of invention.................................. 608.01(d) Sunday or holiday, effect on time for reply..... 502, 502.01, 502.05, 505, 506.02, 510, 513, 710.05 Sunday or holiday, effect on reference..... 706.02(a)(2) Supervisory applications examiner................... 714.13 Supervisory patent examiner... 705.01, 707, 707.02, 708.03, 713.08, 714.05, 714.13, 714.16, 714.16(d), 714.16(e), 812.01, 903.08(b), 1207, 1207.01, 1207.02, 1207.03, 1211.01, 1214.07
Petitions decided by................................ 1002.02(d) Supervisory patent reexamination specialist.. 2212.01, 2227, 2233, 2236, 2237, 2240, 2246, 2248,
2265, 2267, 2270, 2274, 2281, 2283, 2285, 2286, 2286.01, 2287, 2289, 2294, 2295, 2636, 2640, 2646, 2648, 2664, 2665, 2667, 2670, 2671, 2671.02, 2673.02, 2676, 2677, 2682, 2686.01, 2686.03, 2686.04, 2686.05, 2687, 2687.01, 2689 Supervisory review, Rule 1 181.................... 711.03(d) Supplemental action.......................... 710.06, 714.05 Supplemental Amendment........................... 714.03(a) Supplemental Application Data Sheet (ADS).... 601.05 Supplemental Examination.................................. 2800
Assignment of................................................... 2822 Consideration of request............. 2816.01, 2816.02 Contents of determination........................... 2816.03 Contents of request...................... 2811 to 2811.02 Correspondence address........ 502, 502.05, 2805 Ex parte reexamination ordered................. 2816.04
Fees.................................. 509.01, 2810, 2810.01 Filing date.................................................... 2812.01 Format of papers.............................................. 2807 Handling of papers other than a request.......... 2813 How to file......................................................... 2806 Inquiries from persons other than patent owner..... 2803.01, 2813 Item of information relied upon in the request... 2809 Merger.............................................................. 2821 Multiple............................................................. 2821 Procedures after conclusion............................. 2818 Public access to........................................... 2803.02 Representative of patent owner....... 2804, 2804.01 Time for filing.................................................... 2808 Who may file..................................................... 2803
Supplemental Examination Certificate.... 2802, 2817, 2817.01, 2818.02 Substitute examiner’s answer..... 1207.05, 1211, 1211.01 Supplemental oath or declaration.......................... 603
After allowance............................... 603.01, 714.16 Reissue............................................ 1414.03, 1451
Surface ornamentation..... 1502, 1502.01, 1503.02, 1504.01, 1504.01(a), 1504.01(c), 1504.03 Surrender of patent (not required)....................... 1416 Suspension
Applicant’s request for........................................ 709 Decided by......................... 709, 1002.02(c), 1004 Deferral of examination....................................... 709 Ex parte prosecution during interference..... 2307.03 Not permitted if outstanding Office action........... 709 Of action, because of litigation......................... 1213
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Submission to classification unit — Suspension
Sec. No.Sec. No.
Of action, by Office............................................. 709 Overlapping application................................. 709.01 Reexamination
Ex parte .............................. 2283, 2284, 2285 Inter partes ................................ 2640, 2686.01
Request for, in CPA............................................. 709 Request for, in RCE............................................ 709 Rules................................................................ 1002 Secrecy order application................................. 2306 Supplemental Reply........................................... 709
Swearing back of reference (See also: Affidavit or prior invention to overcome a pre-AIA 35 U.S.C. 102 or 103 rejection(37 CFR 1.131) ) Symbols, Drawing............................................. 608.02
T
Tables submitted on compact disc or via EFS-Web as ASCII text file......... 608.05(b), 2422.03, 2422.03(a) Technical documents.................................... 901.06(a) Technical rejections.......................................... 706.02 Technology Center Director (See also: Director of Technology Center ) Technology Center Working Group 3640 (security group)................................. 121, 130, 1002.02(c)(1) Telephone call, multiplicity rejection........... 2173.05(n) Telephone numbers............................................. 1730
Attorney................................ 408, 713.01, 714.01 Examiner....................................................... 707.08 General information.......................................... 1730
Telephoning of attorney to examiner...... 408, 713.01 Term, Patent......................................... 707.05, 2701
Adjustment of.... 2701, 2710, 2730, 2731, 2732, 2733, 2734, 2736
Determination of........................................... 2733 Due care showing......................................... 2734 Grounds for.................................................. 2730 Period of....................................................... 2731 Reductions to............................................... 2732 Request for reconsideration or reinstatement..... 2730, 2732, 2734 Third party papers........................................ 2736
Continued prosecution application.................... 2701 Deposit of biological material............................ 2408 Design............................................. 1502.01, 1505
Divisional....................................................... 201.06 Extension under 35 U.S.C. 156
FDA regulatory review and............ 2750 to 2758 Deadline........................ 2754.01 to 2754.03 Duty of disclosure and............................ 2762 Interim extension.............. 2755.01, 2755.02 Specific Products
Animal drugs........... 2750, 2751, 2758 Antibiotic drugs.................... 2751, 2758 Color additives …..... 2750, 2751, 2754.01, 2758 Food additives.... 2750, 2751, 2754.01, 2758 Medical devices..... 2750, 2751, 2753, 2758 Veterinary Biological Products..... 2750, 2751, 2756, 2758
Third party papers.................................. 2736 Withdrawal.................................. 2761, 2764
USPTO delays and....................................... 2710 Foreign........................................................... 901.05 Transitional practice.................... 706.07(g), 803.03 Utility................................................................. 2701
Terminal disclaimer (See also: Disclaimer )........ 1490 Avoiding double patenting rejection..... 706.02(k), 706.02(l)(3), 804.02, 806.04(i), 1490 Certificate of correction and.................. 2701, 2720 Continued Prosecution Application (CPA)........ 1490 Continuing applications..................................... 1490 Copending applications procedure................... 1490 Informal memo.................................................. 1490 Request for Continued Examination (RCE)...... 1490 Reissue................................ 1410.02, 1451, 1490 Required for revival.................................... 711.03(c) Routing............................................................. 1490 Signature in.................... 402.03, 403.01(a), 1490 Situations where not applicable..................... 804.03 Withdrawal of.................................................... 1490
Terminology in application..... 608.01(g), 608.01(o), 706.03(d), 1302.01 Termination of proceedings..... 211.01(a), 211.01(b), 711.02(c)
Ex parte reexamination..... 2265, 2266.01, 2268, 2271, 2281, 2285, 2286.01, 2294 Inter partes reexamination............................... 2694
TESS (Trademark Electronic Search System)..... 1703 Test comments.............................................. 707.07(l) Testamentary, Letters (See also: Administrator or executor )..................................................... 409.01(b)
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INDEX
Suspension — Testamentary, Letters
Sec. No.Sec. No.
Testimony, examiner....................................... 1701.01 Tests, comparative (See also: Affidavits, traversing rejections (37 CFR 1.132) ) Third action cases............................................ 707.02 Third party reply in inter partes reexamination (See also: Reexamination, Inter partes: Response by third party ) Third party requestor (See also: Reexamination, Inter partes: Response by third party ) Third party submissions/inquiries/correspondence in published applications........................ 1134, 1134.01 Time and Activity Report......................... 1704, 1705 Time for claiming benefit of earlier application.. 211.03 Time for deciding Director initiated reexamination..... 2211, 2239 Time for deciding reexamination request............. 2241 Time for filing papers, right of priority..... 214.01, 215.02, 215.03 Time for filing petitions......................................... 1002 Time for requesting reexamination
Ex parte .............................................. 2210, 2211 Time for reply (See also: Period for reply )..... 702.01, 710 Time for reply to action in reexamination
Ex parte .......................................................... 2263 Inter partes ..................................................... 2662
Time limit....................................... 710.02, 710.02(c) For making suggested claims.................... 710.02(c) International preliminary examination report (IPER)... 1879.01 International search report (ISR)................. 1843.05 Period for reply.................................................... 710 Permanent ink copy....................................... 714.07 Prior art filing.................................................... 2204 Reply to final rejection................................ 706.07(f) Restriction requirement...................................... 811 Rewrite claims following Board decision...... 1214.06 Shortened statutory period compared to..... 710.02, 710.02(b), 710.02(d) Statutory period.......................... 710.01, 710.01(a) Transfer of application............................... 903.08(d) Two periods running...................................... 710.04
Time period for owner’s statement...................... 2249 Time reporting......................................... 2238, 2638 Time to pay maintenance fees............................. 2506 Timely submission of protest.......................... 1901.04 Title conveyed by assignment................................ 300 Title documents, handling...................................... 317 Title of invention........................... 606, 1893.03(e)(1)
Change by examiner................... 2660.02, 2686.03
Design application.................. 1503.01, 1504.01(a) Amendment of......................................... 1503.01 Use of Trademarks in.................................... 1512
International application.................................... 1821 Plant patent application.................................... 1610 Reviewed at issue......................... 606.01, 1302.01
Title report................................................. 320, 2287 Titles of USPTO Officials............................................... Title with signature....................................... 602.08(b) Trade secret material........................... 724 to 724.05
Completeness of file wrapper........................ 724.01 Materials submitted covered by 35 U.S.C. 122..... 724.04(a) Method of submitting..................................... 724.02 Office treatment and handling........ 724.04, 724.06
After publication.................................... 724.04(a) Petition to expunge materials......................... 724.05 Reexamination under 37 CFR 1.11(d)....... 724.04(c) Reissue under 37 CFR 1.11(b)................. 724.04(b) Types of......................................................... 724.03
Trade secret submission label.......................... 724.02 Trademark and trade name..... 608.01(v), 706.03(d), 2173.05(u), I
Design patent, relationship to........................... 1512 Misuse in patent specification................... 608.01(v)
Trademark Manual of Examining Procedure................. Trademarks, Partial list of........................................... I Transfer of application
After amendment....................................... 903.08(c) After classification decision....................... 903.08(d) Allowable application........................................ 1305 Decision of classification examiner........... 903.08(d) Divisible inventions............................................. 812 Interference............................................. 2304.01(b) New........................................................... 903.08(a) Outside Technology Center....................... 903.08(d) Primary examiner’s authority......................... 903.08 Procedure.............................. 903.08(a), 903.08(d) Secrecy order application................................... 130 Submitted to classification examiner......... 903.08(d) Within Technology Center.......................... 903.08(d)
Transfer of class or subclass............................ 903.05 Transfer of drawing........................................ 608.02(i) Transfer of reexamination
Ex parte .......................................................... 2237 Transfer of rights to patent or application..... 509.02, 509.04(a), 509.04(b) Transfer of specification prohibited................ 608.01(t)
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MANUAL OF PATENT EXAMINING PROCEDURE
Testimony, examiner — Transfer of specification prohibited
Sec. No.Sec. No.
Transfer of U.S. patent...................................... 903.05 Transitional application (See also: Application )
After final practice...................................... 706.07(g) Generic claim allowable............................ 803.03(b) Linking claim allowable.............................. 803.03(a) Patent term....................................................... 2701 Restriction practice........................................ 803.03
Transitional phrases........................................ 2111.03 “Characterized by”....................................... 2111.03 “Composed of”............................................. 2111.03 “Comprising”........................... 2111.03, 2173.05(h) “Consisting essentially of”........................... 2111.03 “Consisting of”........................ 2111.03, 2173.05(h) “Containing”................................................. 2111.03
Translation, foreign application or foreign priority document........................................... 214, 215, 216 Translations index in STIC............................ 901.06(a) Translators in the U.S. Patent and Trademark Office..... 901.05(d), 901.06(a) Transmission, certificate of (See also: Certificate of mailing or transmission (37 CFR 1.8) ) Transmittal Fee, PCT........................................... 1827 Traverse, answer all matters.......................... 707.07(f) Traverse, division or species requirement..... 818, 821.01, 821.02 Traverse, rejection of linking claim............... 818.01(d) Treaties
Benelux Designs Convention (See also: Design application ).................................. 213.01, 1504.10 Budapest Treaty (See also: Biotechnology Microorganisms )..... 901.05(b), 2402, 2404.01, 2405, 2407.05, 2408, 2409, 2410.01, 2410.02, 2411.01 European Community Design...................... 1504.10 European Patent Convention......................... 901.05 GATT............................................................ 2138.02 Hague Agreement (See also: Design application )..... 213.01, 1504.10, 2901 Hague Convention................. 409.01(b), 602.04(a) NAFTA.. 201.04, 715, 715.07(c), 2132, 2138.02 Paris Convention................................ 213, 1502.01 Patent Cooperation Treaty (PCT)..... 1502.01, 1800, AI, T Patent Law.......................................................... 702 Strasbourg Agreement........................................ 906 UPOV Convention (See also: Plant patent ).... 1612, 1613 Uruguay Round Agreements Act (URAA)..... 201.04, 715, 715.07(c), 2701, 2132
TRIPSAgreement (Trade-RelatedAspectsof Intellectual Property).............................................................. 1801 Tubers.................................................................. 1601 Twenty year term (See also: Term, Patent ) Two month delay period in reissues.................... 1441 Two periods for reply running........................... 710.04 Type font...................................... 608.01, 1504.01(a)
U
Unavailable inventor................ 409, 409.02, 409.03 Unclaimed disclosure, reservation............... 608.01(e) Undelivered mail.............................. 707.13, 1303.02 Undue breadth rejection..... 706.03(c), 2164.08(a), 2173.04, 2173.05(h) Unexpected results (See also: Affidavits, traversing rejections (37 CFR 1.132) )........ 716.02 to 716.02(g) Unintentional abandonment (See also: Abandonment ) United Kingdom priority document......... 213.03, 216 United States Code (See also: Statutes ) Unity of invention..... 803, 823, 1850, 1875, 1893.03(d) University or other institution of higher learning..... 509.02, 509.04(b) Unlocatable Patent or Application Files............ 508.04 Unscheduled closing........................................ 213.03 Unsigned amendment........................ 711, 714.01(a) Untimely filed (premature) paper prior to order for ex parte reexamination............................................. 2225 Untimely filed (premature) paper prior to order for inter partes reexamination........................................... 2625 Untimely response to ex parte reexamination..... 2267 Untimely response to inter partes reexamination..... 2667 UPOV Convention (See also: Plant patent Treaties )............................................................... 1612, 1613 Uruguay Round Agreements Act (See also: Treaties )................... 201.04, 715, 715.07(c), 2701, 2132 Use claims.................................................. 2173.05(q) Use, Public (See also: Public use ) User pass.............................................................. 510 USPTO Contact Center....................................... 1730 Utility classes.................................................... 902.02 Utility, disclosure in drug cases..... 2164.06, 2164.07 Utility requirement guidelines.............................. 2107
Rev. 07.2015, October 2015Index-107
INDEX
Transfer of U.S. patent — Utility requirement guidelines
Sec. No.Sec. No.
Legal precedent for....................... 2107 to 2107.03 Relationship of enablement to..................... 2164.07
Utility lacking, rejection..................... 706.03(a), 2107 Utility model.................................................. 901.05(b) Utility patent (See also: Design application Patent Plant patent )................................... 901.04, 1502.01
Application publication....................... 1120 to 1135 Copies of................................................... 707.05(a) Copyrighted material in............................. 608.01(w) Design patent compared to......................... 1502.01 Double patenting................................................. 804 Drawings / Photographs.............. 608.01(f), 608.02 Elements of......................................................... 600 Expiration date or term......................... 2211, 2250 Maintenance fees............................................. 2506 Period of enforceability......................... 2204, 2211 Specification.................................................. 608.01
Utility required..... 608.01(p), 706.03(a), 2107, 2164.07
V
Vague and indefinite rejection (See also: Indefinite claim ) Validity of patent, examiner comments................ 1701 Venue............................................................... 602.01 Video conference center................................... 713.01 Violation of duty of disclosure (See also: Duty of disclosure )
Argued in protest........................ 1901.02, 1901.06 Visitors to Office.................................................... 510 Voluntary publication............................ 502.05, 1133
W
Waiver Of confidentiality..... 103, 201.06(d), 1002.02(k)(1) Of patent owner's statement................. 2246, 2249 Of deficiencies in oath or declaration.... 602.01(c)(3), 602.03 Of patent rights.................................. 711.06, 1111
Of rules..... 201.03, 402.10, 602.01(c), 711.03(c), 724.06, 803.04, 1002, 1002.02(b), 2248, 2265, 2288, 2425, 2434
Walk-up customer window.......... 501, 502, 2422.09 Washington D.C. representatives of attorneys....... 408 WebEx (See also: Interviews )......................... 502.03 When disclosure is made.................................... 2003 White House inquiry..................................... 203.08(a) Who has duty to disclose................................ 2001.01 WIPO...................... 213.01, 214.04, 901.04, 1801 WIPO Standards
ST. 3.............................................. 901.05(b), 1851 ST. 10........................................................ 901.05(b) ST. 14..................................... 707.05(e), 901.05(b) ST. 16........................... 901.05(b), 1851, 2424.03 ST. 25, Appendix 2
Tables reproduced........................................ 2422 Cited........................... 2422.01, 2423, 2423.01
ST. 34........................................................ 901.05(b) Withdrawal from appeal after remand by Board..... 1002.02(d) Withdrawal from issue........................ 1303.01, 1308
Amendment crossing allowance.................... 714.15 Director’s approval................................ 1003, 1308 Petition for.............. 1002.02(b), 1002.02(c), 1308 Quality Review............................................. 1308.03 Refund of fee............................................... 1308.01 Rejection....................................... 706.04, 1308.01
Withdrawal of abandonment (See also: Abandonment Petition ) Withdrawal of appeal...................................... 1215.01 Withdrawal of appeal by cancelling a claim.... 1214.05, 1215.03 Withdrawal of attorney (See also: Attorney or agent Power of attorney )..... 402.06, 1002.02(s), 1808, 2223, 2560 Withdrawal of claims
To nonelected invention.... 821.01, 821.02, 821.03 To nonelected species.................... 821.01, 821.02
Withdrawal of final rejection......................... 706.07(e) Premature final.......................................... 706.07(d) Primary decides................................................ 1004
Withdrawal of holding of abandonment (See also: Abandonment Petition )........... 711.03(c), 711.04(c) Withdrawal of power of attorney in patent..... 2223, 2623 Withdrawal of terminal disclaimer........................ 1490 Withhold from issue petition....................... 1002.02(c) Witness, Examiner as..................................... 1701.01
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MANUAL OF PATENT EXAMINING PROCEDURE
Utility requirement guidelines — Witness, Examiner as
Sec. No.Sec. No.
World Trade Organization member countries.... 213.01 World Wide Web address.................................... 1730 Writing, Disclosures must be in...................... 2002.02 Written description (See also: Specification )..... 706.03(c), 2163
Amendments supported by original description..... 2163.07
Inherent function, theory or advantage..... 2163.07(a) Incorporation by reference..... 217, 608.01(p), 2163.07(b)
Burden on the examiner.............................. 2163.04 Changes to scope of claims........................ 2163.05 Circumstances when issues arise............... 2163.03 Design application..... 1503.01, 1503.02, 1504.01(a), 1504.04 Form paragraphs used to reject................ 706.03(c) Guidelines for compliance................................ 2163 New matter.................................................. 2163.06 Requirements for compliance...................... 2163.02 Support for claimed subject matter..... 211.05, 2163.01 Corresponding to count in interference........ 2163.03
X
X series of patents (See also: Patent )............ 901.04
Y
(No Entry)
Z
(No Entry)
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INDEX
World Trade Organization member countries — (No Entry)
Sec. No.Sec. No.
Chapter FPC Form Paragraphs Consolidated
[Reserved]100 Form Paragraphs 2.01 - 2.40200 [Reserved]300 Form Paragraphs 4.01 - 4.10400 Form Paragraphs 5.01 - 5.05500 Form Paragraphs 6.01 - 6.72.05600 Form Paragraphs 7.01 - 7.214700 Form Paragraphs 8.01 - 8.50800 [Reserved]900 Form Paragraphs 10.01 - 10.301000 [Reserved]1100 Form Paragraphs 12.209 - 12.2981200 Form Paragraphs 13.01 - 13.101300 Form Paragraphs 14.01 - 14.381400 Form Paragraphs 15.01 - 15.901500 Form Paragraphs 16.01 - 16.131600 [Reserved]1700 Form Paragraphs 18.01 - 18.221800 Form Paragraphs 19.01 - 19.021900 [Reserved]2000 [Reserved]2100 Form Paragraphs 22.01 - 22.732200 Form Paragraphs 23.01 - 23.192300 [Reserved]2400 [Reserved]2500 Form Paragraphs 26.01 - 26.802600 [Reserved]2700 Form Paragraphs 28.01 - 28.042800 Form Paragraphs 29.10 - 29.272900
100 [Reserved]
There are currently no form paragraphs numbered “1.xx....”
200 Form Paragraphs 2.01 - 2.40
¶ 2.01 Possible Status as Divisional
This application, which discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], appears to claim only subject matter directed to an invention that is independent and distinct from that claimed in the prior application, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a divisional application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq .
Examiner Note:
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may be a divisional, but a benefit claim has not been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "divisional" of the prior application.
¶ 2.03 Affidavits or Declarations in Prior Application
Applicant refers to an affidavit or declaration filed in the prior application. Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application. Where it is desired to rely on an earlier-filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior application.
Examiner Note:
This form paragraph is to be used in applications filed under 37 CFR 1.53(b). Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.
¶ 2.05 Possible Status as Continuation
This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq .
Examiner Note:
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may be a continuation, but a benefit claim has not been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation" of the prior application.
¶ 2.06 Possible Status as Continuation-in-Part
This application repeats a substantial portion of prior Application No. [1], filed [2], and adds additional disclosure not presented in the prior application. Because this application names the
Rev. 07.2015, November 2015FPC-1
inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq .
Examiner Note:
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation-in-part" of the prior application.
¶ 2.07 Definition of a Substitute
Applicant refers to this application as a “substitute” of Application No. [1], filed [2]. The term “substitute” is used to designate an application which is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. A “substitute” does not obtain the benefit of the filing date of the prior application.
¶ 2.09 Heading for Conditions for Benefit Claims Under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c)
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. [1] as follows:
Examiner Note:
1. In bracket 1, insert the appropriate statutory section(s).
2. One or more of form paragraphs 2.10 to 2.11.01 or 2.38 to 2.40 must follow depending upon the circumstances.
¶ 2.10 Disclosure of Prior-Filed Application Does Not Provide Support for Claimed Subject Matter
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. [1], fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. [2]
Examiner Note:
1. This form paragraph must be preceded by heading form paragraph 2.09.
2. This form paragraph may be used when there is lack of support or enablement in the prior-filed application for the claims in the application that is claiming the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) or under 35 U.S.C. 119(e). The prior-filed application can be a provisional application, a nonprovisional application, an international application (PCT) that designates the United States, or an international design application that designates the United States.
3. In bracket 1, insert the application number of the prior-filed application.
4. In bracket 2, provide an explanation of lack of support or enablement. If only some of the claims are not entitled to the benefit of the filing date of the prior application, the examiner should include a list of those claims after the explanation (e.g., “Accordingly, claims 1-10 are not entitled to the benefit of the prior application.”).
¶ 2.10.01 Continuation or Divisional Application Contains New Matter Relative to the Prior-Filed Application
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application: [1].
Examiner Note:
1. This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a “continuation,” “division,” or “divisional application” of the prior-filed application. Do not use this form paragraph if the applicant is claiming the benefit of a provisional application under 35 U.S.C. 119(e).
2. In bracket 1, provide an example of the matter not disclosed in the prior-filed application.
¶ 2.11 Application Must Be Copending With Parent
This application is claiming the benefit of prior-filed application No. [1] under 35 U.S.C. 120, 121, 365(c), or 386(c). Copendency between the current application and the prior application is required. Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.
Examiner Note:
1. This form paragraph must be preceded by heading form paragraph 2.09.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 200
2. Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.
3. In bracket 1, insert the application number of the prior-filed application.
¶ 2.11.01 Application Must Be Filed Within 12 Months From the Provisional Application Unless Petition Granted
This application is claiming the benefit of provisional application No. [1] under 35 U.S.C. 119(e). However, this application was not filed within twelve months from the filing date of the provisional application, and there is no indication of an intermediate nonprovisional application or international application designating the United States that is directly claiming the benefit of the provisional application and filed within 12 months of the filing date of the provisional application. In addition, no petition under 37 CFR 1.78(b) or request under PCT Rule 26 bis.3 to restore the benefit of the provisional application has been granted.
Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application or international application designating the United States, was filed within 12 months of the filing date of the provisional application. See 35 U.S.C. 119(e)(3). Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional. A petition under 37 CFR 1.78(b) to restore the benefit of the provisional application must include: (1) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional. A petition to restore the benefit of a provisional application must be filed in the subsequent application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Examiner Note:
1. This form paragraph must be preceded by heading form paragraph 2.09.
2. In bracket 1, insert the application number of the prior-filed provisional application.
¶ 2.13 Correction of Inventorship Under 37 CFR 1.48(a), Insufficient
The request to correct the inventorship of this nonprovisional application under 37 CFR 1.48(a) is deficient because:
Examiner Note:
1. This form paragraph should only be used in response to requests to correct an error in the naming of the prior inventors in nonprovisional applications. If the request is merely to delete an inventor because claims were canceled or amended such that the deleted inventor is no longer an actual inventor of any claim in the application, use form paragraph 2.13.01 instead of this form paragraph.
Potential rejections
A rejection under pre-AIA 35 U.S.C. 102(f) or (g) must be considered if the request is denied.
The grant or denial of the request may result in the loss of inventorship overlap between a parent application and a continuing application and an inability to claim benefit in the continuing application of the parent application’s filing date under 35 U.S.C. 120. Intervening references must then be considered.
2. A primary examiner may not decide the request if the request is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.48(a) (typically a refusal of one of the inventors to be added or deleted to execute the required statement of facts) – the request for correction of inventorship and request for waiver of the rules should be forwarded to the Office of Petitions.
3. One or more of form paragraphs 2.13a - 2.13e should follow this form paragraph, as applicable.
4. Where it appears that: 1) the inventor(s) to be added or deleted may be hostile and will not execute a required statement of facts; and 2) the actual inventorship would overlap the original inventorship (37 CFR 1.78), follow this form paragraph with form paragraph 2.13f.
5. Requests under 37 CFR 1.41 to change inventorship where an executed oath or declaration has not been filed are to be acted upon by OPAP.
6. Where there is a correction in a person’s name, e.g., due to misspelling, or marriage, a request under 37 CFR 1.48 is inappropriate. SeeMPEP § 602.08(b) for name changes.
7. An initial executed oath or declaration under 37 CFR 1.63 may change the inventorship as originally set forth when the application is filed without an executed oath or declaration without request for correction of inventorship (37 CFR 1.48(f)).
8. This form paragraph should only be used if the request to correct inventorship was filed before September 16, 2012. Requests under 37 CFR 1.48 filed on or after September 16, 2012, are handled by the Office of Patent Application Processing.
Rev. 07.2015, November 2015FPC-3
§ 200FORM PARAGRAPHS CONSOLIDATED
¶ 2.13.01 Correction of Inventorship Under 37 CFR 1.48(b), Insufficient
The request for the deletion of an inventor in this nonprovisional application under 37 CFR 1.48(b) is deficient because:
Examiner Note:
1. This form paragraph should only be used when the inventorship was previously correct when originally executed but an inventor is being deleted because claims have been amended or canceled such that he or she is no longer an inventor of any remaining claim in the non-provisional application. If the inventorship is being corrected because of an error in naming the correct inventors, use form paragraph 2.13 instead of this form paragraph.
2. Follow this form paragraph with one or both of form paragraphs 2.13c and 2.13g.
3. See note 1 of form paragraph 2.13, Potential rejections.
¶ 2.13.02 Correction of Inventorship Under 37 CFR 1.48(c), Insufficient
The request to correct the inventorship in this nonprovisional application under 37 CFR 1.48(c) requesting addition of an inventor(s) is deficient because:
Examiner Note:
1. This form paragraph should only be used when the inventorship was previously correct when the application was originally executed, but the inventorship now needs to be changed due to subsequent addition of subject matter from the specification to the claims, which subject matter was contributed by a party not originally named as an inventor.
2. See note 2 of form paragraph 2.13.
3. Follow this form paragraph with any of form paragraphs 2.13b-2.13e or 2.13h.
4. See note 1 of form paragraph 2.13, Potential rejections.
5. See notes 4-7 of form paragraph 2.13.
¶ 2.13a Statement of Facts Problem (for Use Following FP 2.13, If Applicable)
The statement of facts by an inventor or inventors to be added or deleted does not explicitly state that the inventorship error occurred without deceptive intent on his or her part or cannot be construed to so state.
¶ 2.13b No New Oath or Declaration (for Use Following FP 2.13 or 2.13.02, If Applicable)
An oath or declaration by each actual inventor or inventors listing the entire inventive entity has not been submitted.
¶ 2.13c Required Fee Not Submitted (for Use Following FP 2.13, 2.13.01 or 2.13.02, If Applicable)
It lacks the required fee under 37 CFR 1.17(i).
¶ 2.13d Written Consent Missing (for Use Following FP 2.13 or 2.13.02, If Applicable)
It lacks the written consent of any assignee of one of the originally named inventors.
¶ 2.13e 37 CFR 3.73(b) Submission (for Use Following FP 2.13 or 2.13.02, If Applicable)
A 37 CFR 3.73(b) submission has not been received to support action by the assignee.
¶ 2.13f Hostile Inventor(s)/Inventorship Overlap (for Use Following FP 2.13, If Applicable)
As it appears that a party required by 37 CFR 1.48(a)(2) to submit a statement of facts may not be willing to submit such statement, applicant should consider either: a) submission of a petition under 37 CFR 1.183 to waive that requirement if the original named inventor(s) has assigned the entire right and interest to an assignee who has given its consent to the requested inventorship correction, MPEP § 602.01(c)(3), subsection III.A., or b) refiling the application (where addition is needed) under 37 CFR 1.53(b) with a new oath or declaration and any necessary petition under 37 CFR 1.47, or where only deletion is needed, either under 37 CFR 1.53(b) utilizing a copy of a prior oath or declaration under 37 CFR 1.63(d)(1)(iv), or under 37 CFR 1.53(d)) (design applications only), thereby eliminating the need for a 37 CFR 1.48 request.
¶ 2.13g Statement Under 37 CFR 1.48(b)(2) Problem (for Use Following FP 2.13.01, If Applicable)
The request was not accompanied by the statement required under 37 CFR 1.48(b)(2).
¶ 2.13h Statement of Facts, Added Inventor (for Use Following FP 2.13.02, If Applicable)
The statement of facts by the inventor(s) to be added does not explicitly state that the amendment of the inventorship is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intent on the part of the inventor(s) to be added, or cannot be construed to so state.
¶ 2.14 Correction of Inventorship Under 37 CFR 1.48(a) or (c) Filed Before Sept. 16, 2012, Sufficient
In view of the request to correct inventorship under 37 CFR 1.48 and the accompanying papers filed before September 16, 2012, it has been found that this nonprovisional application, as filed, through error and without deceptive intent, improperly set forth the inventorship, and accordingly, this application has been corrected in compliance with 37 CFR 1.48 ([1]). The inventorship of this application has been changed by [2].
The application will be forwarded to the Office of Patent Application Processing (OPAP) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as corrected.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 200
Examiner Note:
1. In bracket 1, insert --a-- or --c--, as appropriate.
2. In bracket 2, insert explanation of correction made, including addition or deletion of appropriate names.
3. This form paragraph should only be used if the request to correct inventorship was filed before September 16, 2012. Requests under 37 CFR 1.48 filed on or after September 16, 2012, are handled by the Office of Patent Application Processing.
¶ 2.14.01 Correction of Inventorship Under 37 CFR 1.48(b) Filed Before Sept. 16, 2012, Sufficient
In view of the request to correct inventorship under 37 CFR 1.48(b) and accompanying papers filed before September 16, 2012, the inventorship of this nonprovisional application has been changed by the deletion of [1].
The application will be forwarded to the Office of Patent Application Processing (OPAP) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as corrected.
Examiner Note:
1. This form paragraph is to be used only for 37 CFR 1.48(b) corrections.
2. In bracket 1, insert the names of the deleted inventor(s).
3. This form paragraph should only be used if the request to correct inventorship was filed before September 16, 2012. Requests under 37 CFR 1.48 filed on or after September 16, 2012, are handled by the Office of Patent Application Processing.
¶ 2.15 Reference to Prior Application, 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) Benefit
This application makes reference to or appears to claim subject matter disclosed in Application No. [1], filed [2]. If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.
If the instant application is a utility or plant application filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a national stage application under 35 U.S.C. 371, the specific reference must be submitted during the
pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(4) for benefit claims under 35 U.S.C. 119(e) and 37 CFR 1.78(d)(3) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c). A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)). The petition must be accompanied by (1) the reference required by 35 U.S.C. 120 or 119(e) and by 37 CFR 1.78 to the prior application (unless previously submitted), (2) the petition fee under 37 CFR 1.17(m), and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an ADS with the reference (or, if the application was filed before September 16, 2012, by filing either an amendment to the first sentence(s) of the specification or an ADS with the reference. See MPEP § 211.02.
Examiner Note:
1. Use this paragraph when an application does not claim the benefit of a prior-filed application, but makes a reference to, or appears to claim subject matter disclosed in, the prior-filed application.
2. In bracket 1, insert the application number of the prior-filed application.
3. In bracket 2, insert the filing date of the prior-filed application.
4. In a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the first sentence(s) of the specification, or in an application data sheet, to the prior application is not required and may not be made. The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA. 37 CFR 1.53(d)(2)(iv) and 1.53(d)(7).
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¶ 2.18 Right of Priority Under 35 U.S.C. 119(a)-(d) and (f)
Applicant is advised of possible benefits under 35 U.S.C. 119(a)-(d) and (f), wherein an application for patent filed in the United States may be entitled to claim priority to an application filed in a foreign country.
¶ 2.19 Overcome Rejection by Translation
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. See MPEP §§ 215 and 216.
Examiner Note:
This paragraph should follow a rejection based on an intervening reference.
¶ 2.20 Certified Copies of Priority Papers in Parent or Related (Reissue Situation) - Application
Applicant is reminded that in order for a patent issuing on the instant application to obtain priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b), based on priority papers filed in a parent or related Application No. [1] (to which the present application claims the benefit under 35 U.S.C. 120, 121, 365(c)), or 386(c) or is a reissue application of a patent issued on the related application), a claim for such foreign priority must be timely made in this application. To satisfy the requirement of 37 CFR 1.55 for a certified copy of the foreign application, applicant may simply identify the parent nonprovisional application or patent for which reissue is sought containing the certified copy.
¶ 2.21.01 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) Foreign Priority Claim is Untimely
The foreign priority claim filed on [1] was not entered because the foreign priority claim was not filed during the time period set forth in 37 CFR 1.55. For original applications filed under 35 U.S.C. 111(a) (other than a design application) on or after November 29, 2000, the time period is during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. In addition, if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet. See 37 CFR 1.55(d)(1). For national stage applications under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT. See 37 CFR 1.55(d)(2). If applicant desires priority under 35 U.S.C. 119(a)-(d), (f), 365(a) or (b), or 386(a) based upon a prior foreign application, applicant must file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e). The petition must be accompanied by (1) the priority claim under 35 U.S.C. 119(a)-(d), (f), 365(a) or (b), or 386(a) in accordance with 37 CFR 1.55 identifying the prior foreign application to which priority is claimed, unless previously submitted; (2) a certified copy of the foreign application, unless previously submitted or an exception under 37 CFR 1.55 applies; (3) the petition fee under 37 CFR 1.17(m); and (4) a statement
that the entire delay between the date the claim was due under 37 CFR 1.55 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Examiner Note:
1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
2. In bracket 1, insert the date the amendment or paper containing the foreign priority claim was filed.
¶ 2.22 Certified Copy Filed, But Proper Claim Not Made
Receipt is acknowledged of a certified copy of foreign application [1], however the present application does not properly claim priority to the submitted foreign application. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a), applicant must also file a claim for such priority as required by 35 U.S.C. 119(b) or 365(b), and 37 CFR 1.55. If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.
If the application being examined is an original application filed under 35 U.S.C. 111(a) (other than a design application), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1). If the application being examined is a national stage application under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2). Any claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) not presented within the time period set forth in 37 CFR 1.55 is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55, the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority.
Examiner Note:
1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
2. In bracket 1, insert the application number of the foreign application.
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¶ 2.23 Foreign Filing More Than 12 Months Earlier, No Petition to Restore Priority Granted
Acknowledgment is made of applicant's claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) based upon an application filed in [1] on [2]. The claim for priority cannot be based on said application, because the subsequent nonprovisional or international application designating the United States was filed more than twelve months thereafter and no petition under 37 CFR 1.55 or request under PCT Rule 26 bis.3 to restore the right of priority has been granted.
Applicant may wish to file a petition under 37 CFR 1.55(c) to restore the right of priority if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional. A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional. The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Examiner Note:
1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
2. In bracket 1, insert the country name.
3. In bracket 2, insert the filing date of the foreign application.
¶ 2.25 Claimed Foreign Priority, No Papers Certified Copy Filed
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in [1] on [2]. It is noted, however, that applicant has not filed a certified copy of the [3] application as required by 37 CFR 1.55.
Examiner Note:
1. In bracket 1, insert the country name.
2. In bracket 2, insert the filing date of the foreign application.
3. In bracket 3, insert the application number of the foreign application.
¶ 2.26 Claimed Foreign Priority - Certified Copy Filed
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
¶ 2.27 Acknowledge Certified Copy of Foreign Priority Paper in Parent
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119(a) -(d). The certified copy has been filed in parent Application No. [1], filed on [2].
Examiner Note:
1. For problems with foreign priority, see form paragraphs 2.18 to 2.24.
2. In bracket 1, insert series code and serial no. of parent.
¶ 2.30 CPA Status Acceptable (for Design Applications)
The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.
Examiner Note:
1. Use this form paragraph in the first Office action of a CPA to advise the applicant that a request for a CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA. If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).
2. In bracket 1 insert the filing date of the request for a CPA.
3. In bracket 2 insert the Application Number of the parent application.
¶ 2.31 CPA Status NotAcceptable - Request Not on Separate Paper (for Design Applications)
Receipt is acknowledged of the request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on Application No. [2]. However, because the request was not submitted on a separate paper as required by 37 CFR 1.53(d)(2) , the request is not acceptable and no CPA has been established.
Examiner Note:
1. Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.
2. In bracket 1 insert the filing date of the paper containing the request for a CPA.
3. In bracket 2 insert the Application Number identified in the CPA request.
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§ 200FORM PARAGRAPHS CONSOLIDATED
¶ 2.32 Request To Delete a Named Inventor in CPA (for Design Applications)
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.
Examiner Note:
1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.
2. In bracket 1 insert the name or names of the inventor(s) requested to be deleted.
3. In bracket 2 insert the filing date of the CPA.
¶ 2.33 New Inventor Identified in CPA (for Design Applications)
It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship. Any request to add an inventor must be in the form of a request under 37 CFR 1.48. Otherwise, the inventorship in the CPA shall be the same as in the prior application.
Examiner Note:
1. Use this form paragraph where a request for a Continued Prosecution Application (CPA) identifies one or more inventors who were not named as inventors in the prior application on the filing date of the CPA.
2. In bracket 1 insert the name or names of the inventor(s) requested to be added followed by either --was-- or --were--, as appropriate.
3. In bracket 2 insert the filing date of the CPA.
¶ 2.34 Reference in CPA to Prior Application (by Amendment to the Specification; for Design Applications)
The amendment filed [1] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [2] application of Application No. [3] has not been entered. As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.
Examiner Note:
1. Use this form paragraph to inform the applicant that an amendment to the first sentence(s) of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again.
2. In bracket 1, insert the filing date of the amendment.
3. In bracket 2, insert either --continuation-- or --divisional--.
4. In bracket 3, insert the Application Number of the prior nonprovisional application.
¶ 2.35 CPA Status Acceptable - Conditional Request (for Design Applications)
Receipt is acknowledged of the “conditional” request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on prior Application No. [2]. Any “conditional” request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA. Accordingly, the request for a CPA application is acceptable and a CPA has been established. An action on the CPA follows.
Examiner Note:
1. Use this form paragraph in the first Office action of a CPA to advise the applicant that a “conditional” request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA. If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).
2. In bracket 1 insert the filing date of the request for a CPA.
3. In bracket 2 insert the Application Number identified in the CPA request.
¶ 2.38 Claiming Benefit to a Non-English Language Provisional Application
This application claims benefit to provisional application No. [1], filed on [2], in a language other than English. An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No. [3]. See 37 CFR 1.78. The [4] required by 37 CFR 1.78 is missing. Accordingly, applicant must supply 1) the missing [5] in provisional application No. [6] and 2) in the present application, a confirmation that the translation and statement were filed in the provisional application. If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78.
Examiner Note:
1. Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required. Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.
2. In brackets 1 and 3, insert the application number of the non-English language provisional application.
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3. In bracket 2, insert the filing date of the prior provisional application.
4. In brackets 4 and 5, insert --English translation and a statement that the translation is accurate-- or --statement that the translation is accurate--, where appropriate.
¶ 2.39 35 U.S.C. 119(e), 120, 121, or 365(c), or 386(c) Benefit Claim is Untimely
The benefit claim filed on [1] was not entered because the required reference was not timely filed within the time period set forth in 37 CFR 1.78. If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application. If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications. See 37 CFR 1.78(a) for benefit claims under 35 U.S.C. 119(e) and 37 CFR 1.78(d) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).
If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). The petition must be accompanied by: (1) the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted); (2) a petition fee under 37 CFR 1.17(m); and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Examiner Note:
1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
2. In bracket 1, insert the filing date of the amendment or paper containing the benefit claim.
3. Do not use this form paragraph if the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78, but not in the location of the application as required by 37 CFR 1.78 (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt. In this situation, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an amendment to the first sentence(s) of the specification (only if the application was filed before September 16, 2012) or an ADS. The reference is required in the ADS if the application was filed on or after September 16, 2012. See MPEP § 210, subsection I and MPEP § 211.03.
¶ 2.40 Prior-Filed Application Not Entitled to a Filing Date or Basic Filing Fee Was Not Paid
This application claims the benefit of prior-filed application No. [1] under 120, 121, 365(c), or 386(c) or under 35 U.S.C. 119(e). If the prior-filed application is an international application designating the United States, it must be entitled to a filing date in accordance with PCT Article 11; if the prior-filed application is an international design application designating the United States, it must be entitled to a filing date in accordance with 37 CFR 1.1023; and if the prior-filed application is a nonprovisional application under 35 U.S.C. 111(a), the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(b) or 1.53(d) and include the basic filing fee set forth in 37 CFR 1.16. See 37 CFR 1.78(d)(1). If the prior-filed application is a provisional application, the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(c) and the basic filing fee must be paid within the time period set forth in 37 CFR 1.53(g). See 37 CFR 1.78(a)(2).
This application is not entitled to the benefit of the prior-filed application because the prior-filed application [2]. Applicant is required to delete the benefit claim to the prior-filed application from the Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the ADS or the first sentence(s) of the specification as appropriate.
Examiner Note:
1. Use this form paragraph to notify applicant that the application is not entitled to the benefit of the prior-filed application because the prior-filed application was not entitled to a filing date and/or did not include the basic filing fee.
2. In bracket 1, insert the application number of the prior-filed application.
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§ 200FORM PARAGRAPHS CONSOLIDATED
3. In bracket 2, insert “was not entitled to a filing date”; “did not include the basic filing fee”; or “was not entitled to a filing date and did not include the basic filing fee”.
300 [Reserved]
There are currently no form paragraphs numbered “3.xx....”
400 Form Paragraphs 4.01 - 4.10
¶ 4.01 Dual Correspondence
Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant's attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.
Examiner Note:
1. The first time a reply is received directly from applicant, include this paragraph in the Office action and send a copy of the action to the applicant. See MPEP §§ 403 and 714.01.
2. Should applicant file additional replies, do not send copies of subsequent Office actions to the applicant.
3. Status letters from the applicant may be acknowledged in isolated instances.
¶ 4.03 Death of Patent Practitioner
Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.
¶ 4.07 Attorney/Agent Suspended (Sole Practitioner)
The instant application contains a power of attorney to [1] who has been [2] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice. Accordingly, the Office action is being mailed to the address of the applicant first named in the application. Applicant(s) may file a new power of attorney in the application to have a registered attorney or agent represent them before the Office.
In the absence of an attorney or agent of record, for applications filed before September 16, 2012, all papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a
registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34.
For applications filed on or after September 16, 2012, all papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.
Applicants may obtain a list of registered patent attorneys and agents located in their area by consulting the USPTO website, https://oedci.uspto.gov/OEDCI/, or by calling the Office of Enrollment and Discipline at (571) 272-4097.
Examiner Note:
1. In bracket 1, insert the name of the suspended or excluded practitioner.
2. In bracket 2, insert either --suspended-- or --excluded--.
3. This form paragraph should be used when the suspended or excluded practitioner is the only practitioner of record.
4. The Office action is to be mailed only to the applicant first named in the application at that applicant’s current address of record.
¶ 4.08 Attorney/Agent Suspended (Plural Practitioners)
The present application was filed containing a power of attorney to [1] and [2]. A correspondence address was supplied for [3]. No address was supplied for [4].
[5] was [6] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.
As a correspondence address, other than to [7], is not of record, this Office action is being mailed to [8] at his/her last known address as listed on the register of patent attorneys and agents. To ensure that a copy of this Office action is received in a timely manner to allow for a timely reply, a copy of the Office action is being mailed directly to the address of the applicant first named in the application. Any reply by applicant(s) should be by way of the remaining practitioner(s) of record and should include a new correspondence address.
Examiner Note:
1. In brackets 1, 3, 5 and 7 insert the name of the suspended or excluded practitioner.
2. In brackets 2, 4 and 8, insert the name of the first named unsuspended (unexcluded) registered practitioner of record.
3. In bracket 6, insert either --suspended-- or --excluded--.
4. This form paragraph should be used when there is at least one registered practitioner still of record who has not been suspended or excluded from practice. Use form paragraph 4.07 if there are no remaining registered attorneys or agents of record.
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5. The Office action is to be mailed both to the first named registered attorney or agent of record (who is not suspended or excluded) at the address currently listed in the Attorney’s Roster, and to the applicant first named in the application at that applicant’s current address of record.
¶ 4.09 Unregistered Attorney or Agent
An examination of this application reveals that applicant has attempted to appoint an attorney or agent who is neither registered to practice before the U.S. Patent and Trademark Office in patent matters nor named as an inventor in the application, contrary to the Code of Federal Regulations, 37 CFR 1.31 and 1.32. Therefore, the appointment is void, ab initio, and the Office will not recognize the appointment. All communications from the Office will be addressed to the first named applicant, unless specific instructions to the contrary are supplied by the applicant(s) for patent or owner(s).
For applications filed before September 16, 2012, in the absence of the appointment of a registered practitioner, all papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
For applications filed on or after September 16, 2012, all papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.
While an applicant (other than a juristic entity) may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is, therefore, encouraged to secure the services of a registered patent attorney or agent (i.e., registered to practice before the U.S. Patent and Trademark Office) to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecution.
The Office cannot aid you in selecting a registered attorney or agent, however, a list of attorneys and agents registered to practice before the U.S. Patent and Trademark Office is available at https://oedci.uspto.gov/OEDCI/. For assistance locating this information, contact the Office of Enrollment and Discipline at (571) 272-4097 or call the Inventors Assistance Center toll-free number, 1(800)786-9199.
Examiner Note:
This form paragraph is to be used ONLY after ensuring that the named representative is not registered with the Office. A PALM inquiry should be first made and if no listing is given, the Office of Enrollment and Discipline should be contacted to determine
the current “recognition” status of the individual named by the applicant in a “power of attorney.” If the named individual is NOT registered or otherwise recognized by the Office, the correspondence address of record should be promptly changed to that of the first named applicant unless applicant specifically provides a different “correspondence address.” A copy of the Office communication incorporating this form paragraph should also be mailed to the unregistered individual named by the applicant in the “power of attorney.”
¶ 4.10 Employ Services of Attorney or Agent
An examination of this application reveals that applicant is unfamiliar with patent prosecution procedure. While an applicant may prosecute the application (except that a juristic entity must be represented by a patent practitioner, 37 CFR 1.31), lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting an attorney or agent.
A listing of registered patent attorneys and agents is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent attorneys and agents located in their area by writing to the Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Examiner Note:
The examiner should not suggest that applicant employ an attorney or agent if the application appears to contain no patentable subject matter.
500 Form Paragraphs 5.01 - 5.05
¶ 5.01 Proper Heading for Incoming Papers
It would be of great assistance to the Office if all incoming papers pertaining to a filed application carried the following items:
1. Application number (checked for accuracy, including series code and serial no.).
2. Art Unit number (copied from most recent Office communication).
3. Filing date.
4. Name of the examiner who prepared the most recent Office action.
5. Title of invention.
6. Confirmation number (seeMPEP § 503).
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¶ 5.01.01 Separate Paper Required
The [1] submitted [2] should have been submitted as a separate paper as required by 37 CFR 1.4(c). The paper has been entered. However, all future correspondence must comply with 37 CFR 1.4.
Examiner Note:
1. In bracket 1, indicate the item required to be separately submitted, such as an affidavit, petition, or other appropriate document.
2. If the applicant is a pro se inventor, include a copy of the rule.
¶ 5.02 Format of Certificate of Mailing or Transmission
The following are suggested formats for either a Certificate of Mailing or Certificate of Transmission under 37 CFR 1.8(a). The certification may be included with all correspondence concerning this application or proceeding to establish a date of mailing or transmission under 37 CFR 1.8(a). Proper use of this procedure will result in such communication being considered as timely if the established date is within the required period for reply. The Certificate should be signed by the individual actually depositing or transmitting the correspondence or by an individual who, upon information and belief, expects the correspondence to be mailed or transmitted in the normal course of business by another no later than the date indicated.
Certificate of Mailing
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:
Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 on ___________. (Date) Typed or printed name of person signing this certificate: _____________________________________________ Signature: ________________________________________ Registration Number: ______________________________
Certificate of Transmission
I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office, Fax No. (___)_____ -_________ on _____________. (Date)
Typed or printed name of person signing this certificate: _________________________________________ Signature: ________________________________________ Registration Number: ______________________________
Certificate of EFS-Web Transmission
I hereby certify that this correspondence is being transmitted via the U.S. Patent and Trademark Office (USPTO) electronic filing system (EFS-Web) to the USPTO on _____________. (Date)
Typed or printed name of person signing this certificate: _________________________________________ Signature: ________________________________________ Registration Number: ______________________________
Please refer to 37 CFR 1.6(a)(4), 1.6(d) and 1.8(a)(2) for filing limitations concerning transmissions via EFS-Web, facsimile transmissions and mailing, respectively.
¶ 5.04 Benefit of Certificate of Mailing Denied
The [1] filed [2] is not entitled to the benefits of 37 CFR 1.[3] since it was not deposited with the U. S. Postal Service for delivery to the U.S. Patent and Trademark Office. Therefore, the date of receipt in the U.S. Patent and Trademark Office has been used to determine the timeliness of the paper.
Examiner Note:
1. This form paragraph is to be used in those situations where correspondence contains a Certificate of Mailing under 37 CFR
1.8 or requests the benefit of Priority Mail Express® under 37 CFR 1.10, but the correspondence was not actually deposited with the U. S. Postal Service.
2. In bracket 3, insert --8-- or --10--, as appropriate.
¶ 5.05 Small Entity Status
This application may qualify for “Small Entity Status” and, therefore, applicant may be entitled to the payment of reduced fees. In order to establish small entity status for the purpose of paying small entity fees, applicant must make a determination of entitlement to small entity status under 37 CFR 1.27(f) and make an assertion of entitlement to small entity status in the manner set forth in 37 CFR 1.27(c)(1) or 37 CFR 1.27(c)(3). Accordingly, if applicant meets the requirements of 37 CFR 1.27(a), applicant must submit a written assertion of entitlement to small entity status under 37 CFR 1.27(c) before fees can be paid in the small entity amount. See 37 CFR 1.27(d). The assertion must be signed, clearly identifiable, and convey the concept of entitlement to small entity status. See 37 CFR 1.27(c)(1). No particular form is required. If applicant qualifies as a small entity under 37 CFR 1.27, applicant may also qualify for “Micro Entity Status” under 35 U.S.C. 123. See 37 CFR 1.29 for the requirements to establish micro entity status for the purpose of paying micro entity fees.
600 Form Paragraphs 6.01 - 6.72.05
¶ 6.01 Arrangement of the Sections of the Specification in a Utility Application
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows
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the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TOA JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A COMPACT DISC OR AS A TEXT FILE VIA THE OFFICE ELECTRONIC FILING SYSTEM (EFS-WEB).
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821-1.825. A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on compact disc or as a text file via the Office electronic filing system (EFS-Web.)
Examiner Note:
For the arrangement of the sections of the specification in a design application, see 37 CFR 1.154(b). Form paragraph 15.05 may be used for a design application. For the arrangement of the sections of the specification in a plant application, see 37 CFR 1.163(c). For the requirements of the specification in a reissue application, see 37 CFR 1.173(a)(1).
¶ 6.02 Content of Specification
Content of Specification
(a) TITLE OF THE INVENTION: See 37 CFR 1.72(a) and MPEP § 606. The title of the invention should be placed at the top of the first page of the specification unless the title is provided in an application data sheet. The title of the invention should be brief but technically accurate and descriptive, preferably from two to seven words. It may not contain more than 500 characters.
(b) CROSS-REFERENCES TO RELATED APPLICATIONS: See 37 CFR 1.78 and MPEP § 211 et seq.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT: See MPEP § 310.
(d) THE NAMES OF THE PARTIES TOA JOINT RESEARCH AGREEMENT. See 37 CFR 1.71(g).
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A COMPACT DISC OR AS A TEXT FILE VIA THE OFFICE ELECTRONIC FILING SYSTEM (EFS-WEB): The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application. See 37 CFR 1.52(e) and MPEP § 608.05. See also the Legal Framework for EFS-Web posted on the USPTO website ( w w w. u s p t o . g o v / p a t e n t s - a p p l i c a t i o n - p ro c e s s / applying-online/legal-framework-efs-web-06april11) and MPEP § 502.05
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR. See 35 U.S.C. 102(b)and 37 CFR 1.77.
(g) BACKGROUND OF THE INVENTION: See MPEP § 608.01(c). The specification should set forth the Background of the Invention in two parts:
(1) Field of the Invention: A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions of the subject matter of the claimed invention. This item may also be titled “Technical Field.”
(2) Description of the Related Art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98: A description of the related art known to the applicant and including, if applicable, references to specific related art and problems involved in the prior art which are solved by the applicant’s invention. This item may also be titled “Background Art.”
(h) BRIEF SUMMARY OF THE INVENTION: See MPEP § 608.01(d). A brief summary or general statement of the invention as set forth in 37 CFR 1.73. The summary is separate and distinct from the abstract and is directed toward the invention rather than the disclosure as a whole. The summary may point out the advantages of the invention or how it solves problems previously existent in the prior art (and preferably indicated in the Background of the Invention). In chemical cases it should point out in general terms the utility of the invention. If possible, the
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nature and gist of the invention or the inventive concept should be set forth. Objects of the invention should be treated briefly and only to the extent that they contribute to an understanding of the invention.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S): See MPEP § 608.01(f). A reference to and brief description of the drawing(s) as set forth in 37 CFR 1.74.
(j) DETAILED DESCRIPTION OF THE INVENTION: See MPEP § 608.01(g).A description of the preferred embodiment(s) of the invention as required in 37 CFR 1.71. The description should be as short and specific as is necessary to describe the invention adequately and accurately. Where elements or groups of elements, compounds, and processes, which are conventional and generally widely known in the field of the invention described, and their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art, they should not be described in detail. However, where particularly complicated subject matter is involved or where the elements, compounds, or processes may not be commonly or widely known in the field, the specification should refer to another patent or readily available publication which adequately describes the subject matter.
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
(l) ABSTRACT OF THE DISCLOSURE: See 37 CFR 1.72(b) and MPEP § 608.01(b). The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, commencing on a separate sheet following the claims. In an international application which has entered the national stage (37 CFR 1.491(b)), the applicant need not submit an abstract commencing on a separate sheet if an abstract was published with the international application under PCT Article 21. The abstract that appears on the cover page of the pamphlet published by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) is the abstract that will be used by the USPTO. See MPEP § 1893.03(e).
(m) SEQUENCE LISTING: See 37 CFR 1.821-1.825 and MPEP §§ 2421-2431. The requirement for a sequence listing applies to all sequences disclosed in a given application, whether the sequences are claimed or not. See MPEP § 2422.01.
Examiner Note:
In this paragraph an introductory sentence will be necessary. This paragraph is intended primarily for use in pro se applications.
¶ 6.11 Title of Invention Is Not Descriptive
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Examiner Note:
If a change in the title of the invention is being suggested by the examiner, follow with form paragraph 6.11.01.
¶ 6.11.01 Title of Invention, Suggested Change
The following title is suggested: “[1]”
¶ 6.12 Abstract Missing (Background)
This application does not contain an abstract of the disclosure as required by 37 CFR 1.72(b). An abstract on a separate sheet is required.
Examiner Note:
1. For a pro se applicant, consider following this paragraph with form paragraphs 6.14 to 6.16 as applicable.
2. This form paragraph should not be used during the national stage prosecution of international applications (“371 applications”) if an abstract was published with the international application under PCT Article 21.
¶ 6.13 Abstract Objected To
The abstract of the disclosure is objected to because [1]. Correction is required. See MPEP § 608.01(b).
Examiner Note:
1. In bracket 1, indicate the informalities that require correction such as the inclusion of legal phraseology, undue length, etc.
2. For a pro se applicant, this paragraph should be followed by form paragraphs 6.14 to 6.16 as applicable.
¶ 6.14 Abstract of the Disclosure: Content
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
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Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps. Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Examiner Note:
See form paragraph 6.16
¶ 6.15 Abstract of the Disclosure: Chemical Cases
Applicant is reminded of the proper content of an abstract of the disclosure.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
Examiner Note:
See also form paragraphs 6.12 – 6.14 and 6.16.
¶ 6.16 Abstract of the Disclosure: Language
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet preferably within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Examiner Note:
See also form paragraph 6.12 - 6.15.
¶ 6.16.01 Abstract of the Disclosure: Placement
The abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR 1.52(b)(4) and 1.72(b). A new
abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.
Examiner Note:
1. 37 CFR 1.72(b) requires that the abstract be set forth on a separate sheet. This requirement applies to amendments to the abstract as well as to the initial filing of the application.
2. This form paragraph should not be used during the national stage prosecution of international applications (“371 applications”) if an abstract was published with the international application under PCT Article 21.
¶ 6.17 Numbering of Claims, 37 CFR 1.126
The numbering of claims is not accordance with 37 CFR 1.126, which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claim [1] been renumbered [2].
Examiner Note:
1. In bracket 1, insert appropriate claim number(s) and --has-- or -- have --.
2. In bracket 2, insert correct claim number(s) and --, respectively -- if more than one claim is involved.
¶ 6.18 Series of Singular Dependent Claims
A series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim.
A claim which depends from a dependent claim should not be separated by any claim which does not also depend from said dependent claim. It should be kept in mind that a dependent claim may refer to any preceding independent claim. In general, applicant’s sequence will not be changed. See MPEP § 608.01(n).
¶ 6.18.01 Claims: Placement
The claims in this application do not commence on a separate sheet or electronic page in accordance with 37 CFR 1.52(b)(3) and 1.75(h). Appropriate correction is required in response to this action.
¶ 6.19 Incorporation by Reference, Unpublished U.S. Application, Foreign Patent or Application, Publication
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any
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objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
Examiner Note:
Since the material that applicant is attempting to incorporate in the specification is considered to be essential material, an appropriate objection to the specification under 35 U.S.C. 132 and/or rejection of the claim(s) under 35 U.S.C. 112, should be made. One or more of form paragraphs 7.31.01 to 7.31.04, as for example, should be used following this form paragraph.
¶ 6.19.01 Ineffective Incorporation by Reference, General
The attempt to incorporate subject matter into this application by reference to [1] is ineffective because [2].
Examiner Note:
1. In bracket 1, identify the document such as an application or patent number or other identification.
2. In bracket 2, give reason(s) why it is ineffective (e.g., the root words “incorporate” and/or “reference” have been omitted, see 37 CFR 1.57(c)(1); the reference document is not clearly identified as required by 37 CFR 1.57(c)(2)).
3. This form paragraph should be followed by form paragraph 6.19.03.
¶ 6.19.02 Amendment Not in Compliance with 37 CFR 1.57(b)
The amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(b) filed [1] is not in compliance with 37 CFR 1.57(b) because [2].
Examiner Note:
1. In bracket 1, insert the date the amendment was filed.
2. In bracket 2, insert the reason why the amendment has not been entered. For example: (1) the present application was filed before September 21, 2004, the effective date of the provisions now in 37 CFR 1.57(b) (the provisions were formerly in 37 CFR 1.57(a)); (2) the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application; (3) the inadvertently omitted portion is not completely contained in the prior-filed application; (4) a copy of the prior-filed application (except where the prior-filed application is an application filed under 35 U.S.C. 111) was not submitted; (5) an English language translation of the prior-filed non-English language application was not submitted; or (6) applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
3. This form paragraph must be followed by form paragraph 7.28, where the amendment is made to the specification and/or drawings and introduces new matter into the disclosure, and/or
form paragraph 7.31.01, where the amendment adds new matter to the claims or affects the claims.
4. If the amendment is an after-final amendment, an advisory action should be issued indicating that the amendment raises new issues because it is not in compliance with 37 CFR 1.57(b).
5. This form paragraph should not be used if there is an express incorporation by reference since applicant would not need to comply with the requirements of 37 CFR 1.57(b).
¶ 6.19.03 Correction of Ineffective Incorporation by Reference
The incorporation by reference will not be effective until correction is made to comply with 37 CFR 1.57(c), (d), or (e). If the incorporated material is relied upon to meet any outstanding objection, rejection, or other requirement imposed by the Office, the correction must be made within any time period set by the Office for responding to the objection, rejection, or other requirement for the incorporation to be effective. Compliance will not be held in abeyance with respect to responding to the objection, rejection, or other requirement for the incorporation to be effective. In no case may the correction be made later than the close of prosecution as defined in 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.
Any correction inserting material by amendment that was previously incorporated by reference must be accompanied by a statement that the material being inserted is the material incorporated by reference and the amendment contains no new matter. 37 CFR 1.57(g).
¶ 6.20 Trade Names, Trademarks, and Other Marks Used in Commerce
The use of the term [1], which is a trade name or a mark used in commerce, has been noted in this application. It should be capitalized wherever it appears and be accompanied by the generic terminology.
Although the use of trade names and marks used in commerce (i.e., trade marks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Examiner Note:
1. Capitalize each letter of the word in the bracket or, where appropriate, include a proper symbol indicating use in commerce
such as ™, SM, or ® following the word.
2. Examiners may conduct a search for registered marks by using the Trademark Electronic Search System (TESS) which is available on the USPTO website to determine whether a mark identified in the patent application is a registered mark or not.
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¶ 6.21 New Drawings, Competent Draftsperson
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because [1]. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office does not prepare new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
¶ 6.22 Drawings Objected To
The drawings are objected to because [1]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, insert the reason for the objection, for example, --the drawings do not show every feature of the invention specified in the claims-- or --the unlabeled rectangular box(es) shown in the drawings should be provided with descriptive text labels--.
2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.22.01 Drawings Objected To, Details Not Shown
The drawings are objected to under 37 CFR 1.83(a) because they fail to show [1] as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the
immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, identify the structural details not shown in the drawings.
2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.22.02 Drawings Objected to, Different Numbers Refer to Same Part
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters “[1]” and [2] have both been used to designate [3]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In brackets 1 and 2, identify the numbers which refer to the same part.
2. In bracket 3, identify the part which is referred to by different numbers.
3. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
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4. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.22.03 Drawings Objected to, Different Parts Referred to by Same Number
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “[1]” has been used to designate both [2] and [3]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet ” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, identify the number which refers to the different parts.
2. In brackets 2 and 3, identify the parts which are referred to by the same number.
3. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
4. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.22.04 Drawings Objected to, Incomplete
The drawings are objected to under 37 CFR 1.83(b) because they are incomplete. 37 CFR 1.83(b) reads as follows:
When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the
replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. Supply a full explanation, if it is not readily apparent how the drawings are incomplete.
2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.22.05 Drawings Objected to, Modifications in Same Figure
The drawings are objected to under 37 CFR 1.84(h)(5) because Figure [1] show(s) modified forms of construction in the same view. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, insert the appropriate Figure number(s).
2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
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3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.22.06 Drawings Objected to, Reference Numbers Not in Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: [1]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, specify the reference characters which are not found in the drawings, including the page and line number where they first occur in the specification.
2. This form paragraph may be modified to require or allow the applicant to delete the reference character(s) from the description instead of adding them to the drawing(s).
3. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
4. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.22.07 Drawings Objected to, Reference Numbers Not in Specification
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: [1]. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d) If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective
action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
1. In bracket 1, specify the reference characters which are not found in the specification, including the figure in which they occur.
2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.
¶ 6.23 Subject Matter Admits of Illustration
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
Examiner Note:
When requiring drawings before examination use form paragraph 6.23.01 with a PTOL-90 or PTO-90C form as a cover sheet.
¶ 6.23.01 Subject Matter Admits of Illustration (No Examination of Claims)
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81. No new matter may be introduced in the required drawing.
Applicant is given a TWO MONTH time period to submit a drawing in compliance with 37 CFR 1.81. Extensions of time may be obtained under the provisions of 37 CFR 1.136(a). Failure to timely submit a drawing will result in ABANDONMENT of the application.
Examiner Note:
1. Use of this form paragraph should be extremely rare and limited to those instances where no examination can be performed due to lack of an illustration of the invention resulting in a lack of understanding of the claimed subject matter.
2. Use a PTOL-90 or PTO-90C form as a cover sheet for this communication.
¶ 6.24.01 Color Photographs and Color Drawings, Petition Required
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is
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granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via EFS-Web or three sets of color drawings or color photographs, as appropriate, if not submitted via EFS-Web, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Examiner Note:
1. This form paragraph should be used only if the application contains color photographs or color drawings as the drawings required by 37 CFR 1.81.
2. This form paragraph should not be used in design applications.
¶ 6.26 Drawings Do Not Permit Examination
The drawings are not of sufficient quality to permit examination. Accordingly, replacement drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to this Office action. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
Applicant is given a TWO MONTH time period to submit new drawings in compliance with 37 CFR 1.81. Extensions of time may be obtained under the provisions of 37 CFR 1.136(a). Failure to timely submit replacement drawing sheets will result in ABANDONMENT of the application.
Examiner Note:
1. Use of this form paragraph should be extremely rare and limited to those instances where no examination can be performed due to the poor quality of the drawings resulting in a lack of understanding of the claimed subject matter.
2. Use a PTOL-90 or PTO-90C form as a cover sheet for this communication.
¶ 6.27 Requirement for Marked-up Copy of Drawing Corrections
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating
the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the corrected drawing and marked-up copy will result in the abandonment of the application.
Examiner Note:
1. When this form paragraph is used by the examiner, the applicant must provide a marked-up copy of any amended drawing figure, including annotations indicating the changes made in the drawing replacement sheets. See 37 CFR 1.121(d)(2).
2. Applicants should be encouraged to submit corrected drawings before allowance in order to avoid having any term adjustment reduced pursuant to 37 CFR 1.704(c)(10).
¶ 6.28 Idiomatic English
A substitute specification in proper idiomatic English and in compliance with 37 CFR 1.52(a) and (b) is required. The substitute specification filed must be accompanied by a statement that it contains no new matter.
¶ 6.28.01 Substitute Specification Required by Examiner
A substitute specification [1] the claims is required pursuant to 37 CFR 1.125(a) because [2].
A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strikethrough except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strikethrough cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
Examiner Note:
1. In bracket 1, insert either --excluding-- or --including--.
2. In bracket 2, insert clear and concise examples of why a new specification is required.
3. A new specification is required if the number or nature of the amendments render it difficult to consider the application or to arrange the papers for printing or copying, 37 CFR 1.125.
4. See also form paragraph 13.01 for partial rewritten specification.
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¶ 6.28.02 Substitute Specification Filed Under 37 CFR 1.125(b) and (c) Not Entered.
The substitute specification filed [1] has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because: [2]
Examiner Note:
1. In bracket 2, insert statement of why the substitute specification is improper, for example: -- the statement as to a lack of new matter under 37 CFR 1.125(b) is missing--, -- a marked-up copy of the substitute specification has not been supplied (in addition to the clean copy)--; -- a clean copy of the substitute specification has not been supplied (in addition to the marked-up copy)--; or, -- the substitute specification has been filed: - in a reissue application or in a reexamination proceeding, 37 CFR 1.125(d)-, or - after payment of the issue fee-, or - containing claims (to be amended)- --.
2. A substitute specification filed after final action or appeal (prior to the date an appeal brief is filed pursuant to 37 CFR 41.37, see 37 CFR 41.33(a)) is governed by 37 CFR 1.116. A substitute specification filed after the mailing of a notice of allowance is governed by 37 CFR 1.312.
¶ 6.29 Specification, Spacing of Lines
The spacing of the lines of the specification is such as to make reading difficult. New application papers with lines 1 1/2 or double spaced on good quality paper are required.
¶ 6.30 Numerous Errors in Specification
35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA). Examples of some unclear, inexact or verbose terms used in the specification are: [1].
¶ 6.31 Lengthy Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
¶ 6.32.01 Application Papers Must Be Legible
The specification (including the abstract and claims), and any amendments for applications, except as provided for in 37 CFR 1.821 through 1.825, must have text written plainly and legibly either by a typewriter or machine printer in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g. , a font size of 6) in portrait orientation and presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming
processes and electronic capture by use of digital imaging and optical character recognition; and only a single column of text. See 37 CFR 1.52(a) and (b).
The application papers are objected to because [1].
A legible substitute specification in compliance with 37 CFR 1.52(a) and (b) and 1.125 is required.
Examiner Note:
1. In bracket 1, identify the part of the specification that is illegible: all of the specification; or certain pages of the specification.
2. Do not use this form paragraph for reissue applications or reexamination proceedings.
¶ 6.36 Drawings Do Not Show Claimed Subject Matter
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the [1] must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner Note:
In bracket 1, insert the features that must be shown.
¶ 6.36.01 Illustration of “Prior Art”
Figure [1] should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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¶ 6.37 Acknowledgment of Replacement Drawing Sheets
The drawings were received on [1]. These drawings are [2].
Examiner Note:
1. In bracket 2, insert either --acceptable-- or --unacceptable--.
2. If unacceptable because of noncompliance with 37 CFR 1.121(d), an explanation must be provided. Form PTOL-324 may be used instead of this form paragraph to provide the explanation.
¶ 6.39 USPTO Does Not Make Drawing Changes
The United States Patent and Trademark Office does not make drawing changes. It is applicant’s responsibility to ensure that the drawings are corrected. Corrections must be made in accordance with the instructions below.
Examiner Note:
This form paragraph is to be used whenever the applicant has filed a request for the Office to make drawing changes. Form paragraph 6.40 must follow.
¶ 6.40 Information on How To Effect Drawing Changes
INFORMATION ON HOW TO EFFECT DRAWING CHANGES
Replacement Drawing Sheets
Drawing changes must be made by presenting replacement sheets which incorporate the desired changes and which comply with 37 CFR 1.84. An explanation of the changes made must be presented either in the drawing amendments section, or remarks, section of the amendment paper. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). A replacement sheet must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of the amended drawing(s) must not be labeled as “amended.” If the changes to the drawing figure(s) are not accepted by the examiner, applicant will be notified of any required corrective action in the next Office action. No further drawing submission will be required, unless applicant is notified.
Identifying indicia, if provided, should include the title of the invention, inventor’s name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet and within the top margin.
Annotated Drawing Sheets
A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be submitted or required by the examiner. The annotated drawing sheets must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change(s) to the drawings.
Timing of Corrections
Applicant is required to submit acceptable corrected drawings within the time period set in the Office action. See 37 CFR 1.85(a). Failure to take corrective action within the set period will result in ABANDONMENT of the application.
If corrected drawings are required in a Notice of Allowability (PTOL-37), the new drawings MUST be filed within the THREE MONTH shortened statutory period set for reply in the “Notice of Allowability.” Extensions of time may NOT be obtained under the provisions of 37 CFR 1.136 for filing the corrected drawings after the mailing of a Notice of Allowability.
¶ 6.41 Reminder That USPTO Does Not Make Drawing Changes
Applicant is reminded that the U.S. Patent and Trademark Office does not make drawing changes and that it is applicant’s responsibility to ensure that the drawings are corrected in accordance with the instructions set forth in the paper mailed on [1].
Examiner Note:
This form paragraph is to be used when the applicant has been previously provided with information on how to effect drawing changes.
¶ 6.42 Reminder That Applicant Must Make Drawing Changes
Applicant is reminded that in order to avoid an abandonment of this application, the drawings must be corrected in accordance with the instructions set forth in the paper mailed on [1].
Examiner Note:
This form paragraph is to be used when allowing the application and when applicant has previously been provided with information on how to effect drawing changes.
¶ 6.43 Drawings Contain Informalities, Application Allowed
The drawings filed on [1] are acceptable subject to correction of the informalities indicated below. In order to avoid abandonment of this application, correction is required in reply to the Office action. The correction will not be held in abeyance.
Examiner Note:
1. Use this form paragraph when allowing the application, particularly at time of first action issue. Supply an explanation of drawings informalities (see MPEP § 608.02(b), § 608.02(d) - § 608.02(h) and § 608.02(p)).
2. Form paragraph 6.40 or 6.41 must follow.
¶ 6.47 Examiner’s Amendment Involving Drawing Changes
The following changes to the drawings have been approved by the examiner and agreed upon by applicant: [1]. In order to avoid abandonment of the application, applicant must make these agreed upon drawing changes.
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Examiner Note:
1. In bracket 1, insert the agreed upon drawing changes.
2. Form paragraphs 6.39 and 6.40 must follow.
¶ 6.48 Model, Exhibit, or Specimen - Applicant Must Make Arrangements for Return
The [1] is no longer necessary for the conduct of business before the Office. Applicant must arrange for the return of the model, exhibit or specimen at the applicant’s expense in accordance with 37 CFR 1.94(a).
Applicant is given TWO MONTHS from the mailing date of this letter to make arrangements for return of the above-identified model, exhibit, or specimen to avoid its disposal in accordance with 37 CFR 1.94(c). Extensions of time are available under 37 CFR 1.136, except in the case of perishables.
Applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from the application unless one of the exceptions set forth in 37 CFR 1.94(b) applies.
Examiner Note:
1. In bracket 1, identify the model, exhibit, or specimen that is no longer needed by the Office.
2. The Office will dispose of perishables without notice to Applicant unless applicant notifies the Office upon submission of the model, exhibit or specimen that a return is desired and makes arrangements for its return promptly upon notification by the Office that the model, exhibit or specimen is no longer necessary for the conduct of business before the Office.
¶ 6.49 Information Disclosure Statement Not Considered
The information disclosure statement filed [1] fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because [2]. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any resubmission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Examiner Note:
See MPEP § 609.05(a) for situations where the use of this form paragraph would be appropriate.
¶ 6.49.01 Information Disclosure Statement Not Considered, After First Action, But Before the Prosecution of the Application Closes, No Statement
The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(c) because it lacks a statement as specified
in 37 CFR 1.97(e). It has been placed in the application file, but the information referred to therein has not been considered.
¶ 6.49.02 Information Disclosure Statement Not Considered, After First Action, But Before the Prosecution of the Application Closes, No Fee
The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(c) because it lacks the fee set forth in 37 CFR 1.17(p). It has been placed in the application file, but the information referred to therein has not been considered.
¶ 6.49.03 Information Disclosure Statement Not Considered, After the Prosecution of the Application Closes, Issue Fee Not Paid, No Statement
The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(d) because it lacks a statement as specified in 37 CFR 1.97(e). It has been placed in the application file, but the information referred to therein has not been considered.
¶ 6.49.05 Information Disclosure Statement Not Considered, After the Prosecution of the Application Closes, Issue Fee Not Paid, No Fee
The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(d) because it lacks the fee set forth in 37 CFR 1.17(p). It has been placed in the application file, but the information referred to therein has not been considered.
¶ 6.49.06 Information Disclosure Statement Not Considered, References Listed in Specification
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, applications, or other information submitted for consideration by the Office, and MPEP § 609.04(a), subsection I. states, “the list may not be incorporated into the specification but must be submitted in a separate paper.” Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
¶ 6.49.07 Information Disclosure Statement Not Considered, No Copy of References
The information disclosure statement filed [1] fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Examiner Note:
Do not use this form paragraph when the missing reference(s) are U.S. patents, U.S. patent application publications, or U.S. pending applications (limited to the specification, including claims, and drawings) stored in IFW.
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¶ 6.49.08 Information Disclosure Statement Not Considered, Non-Compliant List of References
The information disclosure statement filed [1] fails to comply with 37 CFR 1.98(a)(1), which requires the following: (1) a list of all patents, publications, applications, or other information submitted for consideration by the Office; (2) U.S. patents and U.S. patent application publications listed in a section separately from citations of other documents; (3) the application number of the application in which the information disclosure statement is being submitted on each page of the list; (4) a column that provides a blank space next to each document to be considered, for the examiner’s initials; and (5) a heading that clearly indicates that the list is an information disclosure statement. The information disclosure statement has been placed in the application file, but the information referred to therein has not been considered.
Examiner Note:
If an IDS listing includes a copy of an initialed IDS listing from another application, the IDS listing would not comply with the requirements under 37 CFR 1.98(a)(1). This form paragraph is applicable for such an IDS submission.
¶ 6.49.09 Information Disclosure Statement Not Considered, No Explanation of Relevance of Non-English Language Information
The information disclosure statement filed [1] fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
¶ 6.49.10 Information Disclosure Statement Not Considered, Non-acceptable Electronic Medium
The information disclosure statement filed [1] was submitted on an electronic medium that was not acceptable. It has been placed in the application file, but the information referred to therein has not been considered. Note that U.S. patents, U.S. application publications, foreign patent documents and non-patent literature cited in an information disclosure statement may be electronically submitted in compliance with the Office Electronic Filing System (EFS) requirements.
Examiner Note:
This form paragraph may be used when the IDS that includes patents and non-patent literature documents is submitted on compact discs or any other electronic medium, except via EFS. Only tables, sequence listings, and program listings may be submitted on CDs. See 37 CFR 1.52(a) and (e).
¶ 6.51 Time for Completing Information Disclosure Statement
The information disclosure statement filed on [1] does not fully comply with the requirements of 37 CFR 1.98(b) because: [2]. Since the submission appears to be bona fide , applicant is given ONE (1) MONTH from the date of this notice to supply the above-mentioned omissions or corrections in the information disclosure statement. NO EXTENSION OF THIS TIME LIMIT MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b). Failure to timely comply with this notice will result in the above-mentioned information disclosure statement being placed in the application file with the non-complying information not being considered. See 37 CFR 1.97(i).
Examiner Note:
Use this form paragraph if an IDS complies with the timing requirements of 37 CFR 1.97 but part of the content requirements of 37 CFR 1.98(b) has been inadvertently omitted.
This practice does not apply where there has been a deliberate omission of some necessary part of an Information Disclosure Statement or where the requirements based on the time of filing the statement, as set forth in 37 CFR 1.97, have not been complied with.
¶ 6.52 Information Disclosure Statement Filed After Prosecution Has Been Closed
The information disclosure statement (IDS) submitted on [1] was filed after the mailing date of the [2] on [3]. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Examiner Note:
1. In bracket 1, insert the date the IDS was filed.
2. In bracket 2, insert --final Office action--, --Notice of Allowance--, or an -- Ex parte Quayle action-- as appropriate.
¶ 6.53 References Considered in 35 U.S.C. 371 Application Based Upon Search Report - Prior to Allowance
The references cited in the PCT international search report by the [1] have been considered, but will not be listed on any patent resulting from this application because they were not provided on a separate list in compliance with 37 CFR 1.98(a)(1). In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08A and 08B form, must be filed within the set period for reply to this Office action.
Examiner Note:
1. In bracket [1], identify the office (e.g., JPO, EPO, etc.) that issued the international search report and the date it issued.
2. This form paragraph may be used for national stage applications under 35 U.S.C. 371 where the examiner has obtained copies of the cited references or where copies of such references are not required under 37 CFR 1.98. If receipt of copies of references required under 37 CFR 1.98 is not indicated
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on the PCT/DO/EO/903 form in the file, burden is on the applicant to supply such copies for consideration. See MPEP § 1893.03(g).
3. Instead of using this form paragraph, the examiner may list the references on a PTO-892, thereby notifying the applicant that the references have been considered and will be printed on any patent resulting from this application.
4. This form paragraph should only be used prior to allowance when a statutory period for reply is being set in the Office action.
5. If the application is being allowed, form paragraph 6.54 should be used with the Notice of Allowability instead of this form paragraph.
¶ 6.54 References Considered in 35 U.S.C. 371 Application Based Upon Search Report - Ready for Allowance
The references cited in the PCT international search report by the [1] have been considered, but will not be listed on any patent resulting from this application because they were not provided on a separate list in compliance with 37 CFR 1.98(a)(1). In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08A and 08B form, must be filed within ONE MONTH of the mailing date of this communication. NO EXTENSION OF TIME WILL BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b) to comply with this requirement.
Examiner Note:
1. In bracket [1], identify the office (e.g., JPO, EPO, etc.) that issued the international search report and the date it issued.
2. This form paragraph may be used for national stage applications under 35 U.S.C. 371 where the examiner has obtained copies of the cited references or where copies of such references are not required under 37 CFR 1.98. If receipt of copies of references required under 37 CFR 1.98 is not indicated on the PCT/DO/EO/903 form in the file, burden is on the applicant to supply such copies for consideration. See MPEP § 1893.03(g).
3. Instead of using this form paragraph, the examiner may list the references on a PTO-892, thereby notifying the applicant that the references have been considered and will be printed on any patent resulting from this application.
¶ 6.55 References Not Considered in 35 U.S.C. 371 Application Based Upon Search Report
The listing of references in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98. 37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed; (3) for each cited pending U.S. application, the application specification including claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system; and (4) all other information, or that portion which caused it to be listed. In addition, each IDS must include a list of all patents,
publications, applications, or other information submitted for consideration by the Office (see 37 CFR 1.98(a)(1) and (b)), and MPEP § 609.04(a), subsection I. states, “the list ... must be submitted on a separate paper.” Therefore, the references cited in the international search report have not been considered. Applicant is advised that the date of submission of any item of information or any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the IDS, including all “statement” requirements of 37 CFR 1.97(e). See MPEP § 609.05(a).
Examiner Note:
1. This form paragraph may be used in national stage applications under 35 U.S.C. 371.
2. Do not use this form paragraph when the missing references are U.S. patents, U.S. patent application publications, or U.S. pending applications that are stored in IFW.
¶ 6.60.01 CD-ROM/CD-R Requirements (No Statement that CDs are Identical)
This application is objected to under 37 CFR 1.52(e)(4) because it does not contain a statement in the transmittal letter that the two compact discs are identical. Correction is required.
¶ 6.60.02 CD-ROM/CD-R Requirements (No Listing in Transmittal Letter)
This application is objected to because it contains a data file on CD-ROM/CD-R, however, the transmittal letter does not list for each compact disc, the machine format, the operating system compatibility, a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret the information on the compact disc as required by 37 CFR 1.52(e)(3). A statement listing the required information is required.
¶ 6.61.01 Specification Lacking List of Compact Disc(s) and /or Associated Files
Portions of this application are contained on compact disc(s). When portions of an application are contained on a compact disc, the paper portion of the specification must identify the compact disc(s) and list the files including name, file size, and creation date on each of the compact discs. See 37 CFR 1.52(e). Compact disc labeled[1] is not identified in the paper portion of the specification with a listing of all of the files contained on the disc. Applicant is required to amend the specification to identify each disc and the files contained on each disc including the file name, file size, and file creation date.
Examiner Note:
In bracket 1, insert the name on the label of the compact disc.
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¶ 6.61.02 Specification Lacking An Incorporation By Reference Statement for Compact Disc or Text File Submitted Via EFS-Web
This application contains compact disc(s) or text file(s) submitted via EFS-Web as part of the originally filed subject matter, but does not contain an incorporation by reference statement for the compact discs or text files. See 37 CFR 1.77(b)(5) and MPEP § 502.05. Applicant(s) are required to insert in the specification an appropriate incorporation-by-reference statement.
¶ 6.62 Data File on CD-ROM/CD-R Not in ASCII File Format
This application contains a data file on CD-ROM/CD-R that is not in an ASCII file format. See 37 CFR 1.52(e). File [1] is not in an ASCII format. Applicant is required to resubmit file(s) in ASCII format. No new matter may be introduced in presenting the file(s) in ASCII format.
Examiner Note:
1. This form paragraph must be used to indicate whenever a data file (table, computer program listing or Sequence Listing) is submitted in a non-ASCII file format. The file may be in a file format that is proprietary, e.g., a Microsoft Word, Excel or Word Perfect file format; and/or the file may contain non-ASCII characters.
2. In bracket 1, insert the name of the file and whether the file is a non-text proprietary file format and/or contains non-ASCII characters.
¶ 6.63.01 Table Less Than 51 Pages Submitted Only as Text File
The description portion of this application contains a table consisting of less than fifty one (51) pages only in ASCII text format submitted either via EFS-Web or on compact disc. In accordance with 37 CFR 1.52(e), only a table of at least fifty one (51) pages may be submitted as an ASCII text file. Accordingly, applicant is required to cancel the references to the table in text format appearing in the specification on pages [1], file a paper version of the table in compliance with 37 CFR 1.52 or file a PDF version via EFS-Web, and change all appropriate references to the former table in text format to the newly added paper or PDF version of the table in the remainder of the specification.
Examiner Note:
1. This form paragraph must be used whenever a table on a compact disc or submitted as a text file via EFS-Web consisting of less than fifty one (51) pages as part of the descriptive portion of the specification is filed on or after September 8, 2000. See MPEP § 608.05(b).
2. In bracket 1, insert the range of page numbers of the specification which reference the table.
¶ 6.63.02 Table Column/Row Relationship Not Maintained
This application contains a table in ASCII text format submitted either via EFS-Web or on compact disc. Tables submitted as an ASCII text file in compliance with 37 CFR 1.58 must maintain the spatial orientation of the cell entries. The table submitted does not maintain the data within each table cell in its proper row/column alignment. The data is misaligned in the table as follows: [1]. Applicant is required to submit a replacement text file via EFS-Web or on compact disc with the table data properly aligned.
Examiner Note:
1. This form paragraph must be used whenever the data in a table cannot be accurately read because the data in the table cells do not maintain their row and column alignments.
2. In bracket 1, insert the area of the table that does not maintain the row and column alignments.
¶ 6.64.01 Computer Program Listing Appendix of More Than 300 Lines in Specification
The specification of this application contains a computer program listing consisting of more than three hundred (300) lines. In accordance with 37 CFR 1.96(c), a computer program listing of more than three hundred lines must be submitted as an appendix in text format. The computer program listing appendix may be submitted as a text file via EFS-Web or on compact disc conforming to the standards set forth in 37 CFR 1.96(c)(2). The computer program listing must be appropriately referenced in the specification (see 37 CFR 1.77(b)(5)). Accordingly, applicant is required to cancel the current computer program listing, file a computer program listing appendix as a text file via EFS-Web or on compact disc in compliance with 37 CFR 1.96(c), and insert an appropriate reference to the newly added computer program listing appendix at the beginning of the specification.
Examiner Note:
1. This form paragraph must be used whenever a computer program listing consisting of more than three hundred lines is included as part of the descriptive portion of the specification if the computer program listing was filed on or after September 8, 2000. See MPEP § 608.05(a).
2. In bracket 1, insert the range of page numbers of the specification which include the computer program listing.
¶ 6.64.02 Computer Program Listing as Printout Within the Specification (More Than 60 Lines And Not More Than Three Hundred Lines)
This application contains a computer program listing of over sixty (60) lines and less than three hundred and one (301) lines within the written specification. In accordance with 37 CFR 1.96(b), a computer program listing contained on over sixty (60) lines and less than three hundred-one (301) lines must, if submitted as part of the specification, be positioned at the end of the specification and before the claims. Accordingly, applicant is required to cancel the computer program listing and either incorporate such listing in a text file submitted via EFS-Web or
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on compact disc in compliance with 37 CFR 1.96, or insert the computer program listing after the detailed description of the invention but before the claims.
Examiner Note:
This form paragraph must be used whenever a computer program listing consisting of a paper printout of more than 60 lines and no more than three hundred lines is included as part of the descriptive portion of the specification and the computer program listing was filed on or after September 8, 2000. See MPEP § 608.05(a).
¶ 6.64.04 “Microfiche Appendix” Unacceptable
The computer program listing filed on [1] as a “microfiche appendix” is unacceptable. A computer program listing conforming to the requirements of 37 CFR 1.96 is required.
Examiner Note:
1. This form paragraph should be used if a “microfiche appendix” was filed after March 1, 2001 or if a “microfiche appendix” filed on or before March 1, 2001 was not in compliance with former rule 37 CFR 1.96(c). See MPEP § 608.05(a).
2. In bracket 1, insert the date the “microfiche appendix” was filed.
¶ 6.70.01 CD-ROM/CD-R Requirements (Amendment Does Not Include Statement that CDs are Identical)
The amendment filed [1] is objected to under 37 CFR 1.52(e)(4) because it does not contain a statement in the transmittal letter that the two compact discs are identical. Correction is required.
¶ 6.70.02 CD-ROM/CD-R Requirements (No Listing in Transmittal Letter Submitted With Amendment)
The amendment filed [1] contains data on compact disc(s). Compact disc labeled [2] is not identified in the transmittal letter and/or the transmittal letter does not list for each compact disc, the machine format, the operating system compatibility, a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret the information on the compact disc as required by 37 CFR 1.52(e)(3). A statement listing the required information is required.
Examiner Note:
1. Use this form paragraph when the transmittal letter does not include a listing of the files and required information.
2. In bracket 1, insert the date of the amendment.
3. In bracket 2, insert the name on the label of the compact disc.
¶ 6.71.01 Specification Lacking List of Compact Disc(s) and/or Associated Files (Amendment Filed With Compact Disc(s))
The amendment filed [1] contains data on compact disc(s). Compact disc labeled [2] is not identified in the paper portion of the specification with a listing of all of the files contained on the disc. Applicant is required to amend the specification to identify each disc and the files contained on each disc including the file name, file size, and file creation date. See 37 CFR 1.52(e).
Examiner Note:
1. In bracket 1, insert the date of the amendment.
2. In bracket 2, insert the name on the label of the compact disc.
¶ 6.71.02 Specification Lacking Incorporation By Reference Statement for Amended or Added Compact Disc or Text File
The amendment filed [1] amends or adds compact disc(s) or text file(s) submitted via EFS-Web. Applicant is required to update or insert an appropriate incorporation-by-reference statement in the specification. See 37 CFR 1.77(b)(5) and 1.52(e)(5).
Examiner Note:
1. Use this form paragraph when a CD-ROM/CD-R or text file submitted via EFS-Web is filed with an amendment, but the required incorporation-by-reference statement is neither amended nor added to the specification.
2. In bracket 1, insert the date of the amendment.
¶ 6.72.01 CD-ROM/CD-R Requirements (CDs Not Identical)
The amendment filed [1] is objected to under 37 CFR 1.52(e)(4) because the two compact discs are not identical. Correction is required.
Examiner Note:
1. Use this form paragraph when the two compact discs are not identical.
2. See also form paragraph 6.70.01 where the transmittal letter does not include a statement that the two compact discs are identical.
¶ 6.72.02 Data File, Submitted With Amendment, on CD-ROM/CD-R Not in ASCII File Format
The amendment filed [1] contains a data file on CD-ROM/CD-R that is not in an ASCII file format. File [2] is not in an ASCII format. Applicant is required to resubmit file(s) in ASCII format as required by 37 CFR 1.52(e)(3). No new matter may be introduced in presenting the file(s) in ASCII format.
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§ 600FORM PARAGRAPHS CONSOLIDATED
Examiner Note:
1. This form paragraph must be used whenever a data file (table, computer program listing or Sequence Listing) is submitted in a non-ASCII file format. The file may be in a file format that is proprietary, e.g., a Microsoft Word, Excel or Word Perfect file format; and/or the file contains non-ASCII characters.
2. In bracket 1, insert the date of the amendment.
3. In bracket 2, insert the name of the file and whether the file is a non-text proprietary file format and/or contains non-ASCII characters.
¶ 6.72.03 CD-ROM/CD-R Are Not Readable
The amendment filed [1] contains a data file on CD-ROM/CD-R that is unreadable. Applicant is required to resubmit the file(s) in International Organization for Standardization (ISO) 9660 standard and American Standard Code for Information Interchange (ASCII) format as required by 37 CFR 1.52(e)(3). No new matter may be introduced in presenting the file in ISO 9660 and ASCII format.
¶ 6.72.04 CD-ROM/CD-R Contains Viruses
The amendment filed [1] is objected to because the compact disc contains at least one virus. Correction is required.
¶ 6.72.05 CD-ROM/CD-R Requirements (Missing Files On Amended Compact Disc)
The amendment to the application filed [1] is objected to because the newly submitted compact disc(s) do not contain all of the unamended data file(s) together with the amended data file(s) that were on the CD-ROM/CD-R. Since amendments to a compact disc can only be made by providing a replacement compact disc, the replacement disc must include all of the files, both amended and unamended, to be a complete replacement.
Examiner Note:
Use this form paragraph when a replacement compact disc is submitted that fails to include all of the files on the original compact disc(s) that have not been cancelled by amendment.
700 Form Paragraphs 7.01 - 7.214
¶ 7.01 Use of Unconventional Terminology, Cannot Be Examined
A preliminary examination of this application reveals that it includes terminology which is so different from that which is generally accepted in the art to which this invention pertains that a proper search of the prior art cannot be made. For example: [1]
Applicant is required to provide a clarification of these matters or correlation with art-accepted terminology so that a proper comparison with the prior art can be made. Applicant should be careful not to introduce any new matter into the disclosure (i.e.,
matter which is not supported by the disclosure as originally filed).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
Examiner Note:
1. Use this or form paragraph 7.02 when a proper search cannot be made. However, see MPEP § 702.01 which requires a reasonable search.
2. In bracket 1, fill in an appropriate indication of the terminology, properties, units of data, etc. that are the problem as well as the pages of the specification involved.
3. For the procedure to be followed when the drawing is not acceptable, see MPEP §§ 608.02(a) and 608.02(b).
¶ 7.02 Disclosure Is Incomprehensible
The disclosure is objected to under 37 CFR 1.71, as being so incomprehensible as to preclude a reasonable search of the prior art by the examiner. For example, the following items are not understood: [1]
Applicant is required to submit an amendment which clarifies the disclosure so that the examiner may make a proper comparison of the invention with the prior art.
Applicant should be careful not to introduce any new matter into the disclosure ( i.e., matter which is not supported by the disclosure as originally filed).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
Examiner Note:
1. Use this form paragraph when a search cannot be made.
2. In bracket 1, indicate the page numbers and features which are not understood.
3. See form paragraphs 6.28 and 6.30 for improper idiomatic English.
4. Use form paragraphs 7.31.01 – 7.31.04, as appropriate, for a rejection of claims (when necessary) based on the deficiencies set forth in this form paragraph.
¶ 7.03.aia Application Examined Under AIA First Inventor to File Provisions
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA.
Examiner Note:
This form paragraph should be used in any application subject to the first inventor to file provisions of the AIA.
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¶ 7.03.fti Application Examined Under First to Invent provisions
The present application, filed on or after March 16, 2013, is being examined under the pre-AIA first to invent provisions.
Examiner Note:
This form paragraph should be used in any application filed on or after March 16, 2013 that is subject to the pre-AIA prior art provisions.
¶ 7.04.01 Statement of Statutory Basis, 35 U.S.C. 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Examiner Note:
This form paragraph must precede the first use of 35 U.S.C. 101 in all first actions on the merits and final rejections.
¶ 7.04.02.aia Rejection, 35 U.S.C. 101/115
Claim [1] rejected under 35 U.S.C. 101 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.
Examiner Note:
1. In bracket 1, pluralize “Claim” if necessary, insert “is” or “are” as appropriate, and insert the claim number(s) which are under rejection.
2. This rejection must be preceded by either form paragraph 7.04.101.aia or 7.04.102.aia.
¶ 7.04.03 Human Organism
Section 33(a) of the America Invents Act reads as follows
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim [1] rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). [2]
Examiner Note:
1. This paragraph must be preceded by form paragraph 7.04.01 which quotes 35 U.S.C. 101.
2. In bracket 1, pluralize “Claim” if necessary, insert claim number(s), and insert “is” or “are” as appropriate.
3. In bracket 2, explain why the claim is interpreted to read on a human organism.
¶ 7.04.101.aia Statement of Statutory Bases, 35 U.S.C. 101 and 35 U.S.C. 115— Improper Inventorship
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 115(a) reads as follows (in part):
An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.
The present application sets forth the incorrect inventorship because [1].
Examiner Note:
1. If form paragraph 7.04.01 is already being used for a rejection that is not based on improper inventorship, then in lieu of this form paragraph, use form paragraph 7.04.102.aia with form paragraph 7.04.01 for a rejection based on improper inventorship.
2. In bracket 1, insert the basis for concluding that the inventorship is incorrect.
3. This form paragraph must be followed by form paragraph 7.04.02.aia.
¶ 7.04.102.aia Statement of Statutory Basis, 35 U.S.C. 115— Improper Inventorship
35 U.S.C. 115(a) reads as follows (in part):
An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.
The present application sets forth the incorrect inventorship because [1].
Examiner Note:
1. This form paragraph is to be used ONLY when a rejection under 35 U.S.C. 101 on another basis has been made and the statutory text thereof is already present.
2. This form paragraph must be preceded by form paragraph 7.04.01 for a rejection based on improper inventorship.
3. In bracket 1, insert an explanation of the supporting evidence establishing that an improper inventor is named.
¶ 7.05 Rejection, 35 U.S.C. 101, -Heading Only- (Utility, Nonstatutory, Inoperative)
Claim [1] rejected under 35 U.S.C. 101 because
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Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.04.01 in first actions and final rejections.
2. This form paragraph must be followed by a detailed explanation of the grounds of rejection using one or more of form paragraphs 7.05.01, 7.05.015, 7.05.02, 7.05.03, or another appropriate reason.
3. See MPEP §§ 706.03(a) and 2105 - 2107.03 for additional guidance.
¶ 7.05.01 Rejection, 35 U.S.C. 101, Nonstatutory (Not One of the Four Statutory Categories)
the claimed invention is directed to nonstatutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because [1]
Examiner Note:
1. This form paragraph should be preceded by form paragraph 7.05.
2. In bracket 1, explain why the claimed invention is not patent eligible subject matter by identifying what the claim(s) is/are directed to and explain why it does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (process, machine, manufacture, or composition of matter), e.g., the claim(s) is/are directed to a signal per se, mere information in the form of data, a contract between two parties, or a human being (see MPEP § 2106, subsection I).
3. For a claim that is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) and is nonstatutory, use form paragraph 7.05.015.
¶ 7.05.015 Rejection, 35 U.S.C. 101, Nonstatutory (Directed to a Judicial Exception without Significantly More)
the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim(s) [1] is/are directed to [2]. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because [3].
Examiner Note:
1. This form paragraph should be preceded by form paragraph 7.05.
2. This form paragraph is for use with all claims, including product (machine, manufacture, and composition of matter) and process claims, and for any type of judicial exception.
3. In bracket 1, identify the claim or claims that recite the judicial exception.
4. In bracket 2, identify the exception by referring to how it is recited (set forth or described) in the claim and explain why it is considered an exception. For example, “the Arrhenius equation, which is a law of nature in the form of a mathematical algorithm” or “the series of steps instructing how to hedge risk, which is a fundamental economic practice and thus an abstract
idea.” For products of nature, explain how the characteristics are not markedly different from the product’s naturally occurring counterpart in its natural state. For example, “the naturally occurring DNA segment, which is not markedly different from its naturally occurring counterpart because it conveys the same genetic information.” Provide additional explanation regarding the exception and how it has been identified when appropriate.
5. In bracket 3, identify the additional elements and explain why, when considered separately and in combination, they do not add significantly more to the exception. For example, if the claim is directed to an abstract idea with additional generic computer elements explain that the generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation, or if the claim is directed to a method of using a naturally occurring correlation explain that steps for routine data gathering in order to test for the correlation do not add a meaningful limitation to the method as they would be routinely used by those of ordinary skill in the art in order to apply the correlation.
¶ 7.05.02 Rejection, 35 U.S.C. 101, Utility Lacking
the claimed invention lacks patentable utility. [1]
Examiner Note:
In bracket 1, provide explanation of lack of utility. See MPEP §§ 706.03(a) and 2105 - 2107.03.
¶ 7.05.03 Rejection, 35 U.S.C. 101, Inoperative
the disclosed invention is inoperative and therefore lacks utility. [1]
Examiner Note:
In bracket 1, explain why invention is inoperative.
¶ 7.05.04 Utility Rejections Under 35 U.S.C. 101 and 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), First Paragraph
Claim [1] rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a [2] asserted utility or a well established utility.
[3]
Claim [4] also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a [5] asserted utility or a well established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
Examiner Note:
1. Where the specification would not enable one skilled in the art to make the claimed invention, or where alternative reasons support the enablement rejection, a separate rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, enablement should be made using the factors set
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forth in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) and an undue experimentation analysis. See MPEP §§ 2164 - 2164.08(c).
2. Use Format A, B, or C below as appropriate.
Format A:
(a) Insert the same claim numbers in brackets 1 and 4.
(b) Insert --specific and substantial-- in inserts 2 and 5.
(c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility or a well established utility.
(d) Format A is to be used when there is no asserted utility and when there is an asserted utility but that utility is not specific and substantial.
Format B:
(a) Insert the same claim numbers in brackets 1 and 4.
(b) Insert --credible-- in inserts 2 and 5.
(c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a credible asserted utility or a well established utility.
Format C:
For claims that have multiple utilities, some of which are not specific and substantial, some of which are not credible, but none of which are specific, substantial and credible:
(a) Insert the same claim numbers in brackets 1 and 4.
(b) Insert --specific and substantial asserted utility, a credible-- in inserts 2 and 5.
(c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility, a credible asserted utility or a well established utility. Each utility should be addressed.
¶ 7.05.05 Duplicate Claims, Warning
Applicant is advised that should claim [1] be found allowable, claim [2] will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).
Examiner Note:
1. Use this form paragraph whenever two claims are found to be substantial duplicates, but they are not allowable. This will
give the applicant an opportunity to correct the problem and avoid a later objection.
2. If the claims are allowable, use form paragraph 7.05.06.
¶ 7.05.06 Duplicate Claims, Objection
Claim [1] objected under 37 CFR 1.75 as being a substantial duplicate of claim [2]. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).
Examiner Note:
If the duplicate claims are not allowable, use form paragraph 7.05.05.
¶ 7.06 Notice re prior art available under both pre-AIA and AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Examiner Note:
1. This form paragraph must be used in all Office Actions when a prior art rejection is made in an application with an actual filing date on or after March 16, 2013, that claims priority to, or the benefit of, an application filed before March 16, 2013.
2. This form paragraph should only be used ONCE in an Office action.
¶ 7.06.01 Claim Limitation Relating to a Tax Strategy Deemed To Be Within the Prior Art under 35 U.S.C. 102 and/or 103
Claim limitation “[1]” has been interpreted as a strategy for reducing, avoiding, or deferring tax liability (“tax strategy”) pursuant to Section 14 of the Leahy-Smith America Invents Act. Accordingly, this claim limitation is being treated as being within the prior art and is insufficient to differentiate the invention of claim [2] from the prior art.
Examiner Note:
1. In bracket 1, recite the claim limitation that relates to a tax strategy. For more information see MPEP § 2124.01.
2. In bracket 2, insert claim number(s), pluralize “claim” as appropriate.
¶ 7.07.aia Statement of Statutory Basis, 35 U.S.C. 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
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A person shall be entitled to a patent unless—
Examiner Note:
1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use form paragraph 7.103.
2. Form paragraphs 7.07.aia, 7.08.aia, 7.12.aia and 7.14.aia are to be used ONLY ONCE in a given Office action.
3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.07.fti Statement of Statutory Basis, pre-AIA 35 U.S.C. 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless—
Examiner Note:
1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use form paragraph 7.103.
2. Form paragraphs 7.07.fti to 7.14.fti are to be used ONLY ONCE in a given Office action.
3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.08.aia 102(a)(1), Activity Before the Effective Filing Date of Claimed Invention
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act.
2. This form paragraph must be preceded by form paragraphs 7.03.aia and 7.07.aia.
¶ 7.08.fti Pre-AIA 102(a), Activity by Another Before Invention by Applicant
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.fti.
¶ 7.09.fti Pre-AIA 102(b), Activity More Than One Year Prior to Filing
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by form paragraph 7.08.fti.
¶ 7.10.fti Pre-AIA 102(c), Invention Abandoned
(c) he has abandoned the invention.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti and 7.09.fti.
¶ 7.11.fti Pre-AIA 102(d), Foreign Patenting
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.10.fti.
¶ 7.12.aia 102(a)(2), U.S. Patent, U.S. Patent Application Publication or WIPO Published Application That Names Another Inventor and Has an Earlier Effectively Filed Date
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act.
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2. This form paragraph must be preceded by form paragraphs 7.03.aia and 7.07.aia and may be preceded by 7.08.aia.
3. This form paragraph should only be used if the reference is one of the following:
(a) a U.S. patent granted under 35 U.S.C. 151 having an effectively filed date earlier than the application;
(b) a U.S. Patent Application Publication published under 35 U.S.C. 122(b) having an effectively filed date earlier than the application; or
(c) a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the application.
If any of these three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claims under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
¶ 7.12.fti Pre-AIA 35 U.S.C 102(e), Patent Application Publication or Patent to Another with Earlier Filing Date, in view of the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Examiner Note:
1. This form paragraph should only be used if the reference is one of the following:
(a) a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
(b) a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (i.e., a PCT application) if the international application has an international filing date on or after November 29, 2000;
(c) a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
2. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate
application(s)). Do NOT consider foreign priority claims under 35 U.S.C. 119(a) - (d), 365(a) or (b), or 386(a) or (b).
3. In order to rely on an international filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e), the international application (PCT) must have been filed on or after November 29, 2000, it must have designated the U.S., and the international publication under PCT Article 21(2) by WIPO must have been in English. If any one of the conditions is not met, the international filing date is not a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
4. If an international application (PCT) was published by WIPO in a language other than English, or did not designate the U.S., the international application’s publication by WIPO, the U.S. publication of the national stage application (35 U.S.C. 371) of the international application and a U.S. patent issued from the national stage of the international application may not be applied as a reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
5. If an international application (PCT) was published by WIPO in a language other than English, the U.S. publication of, or a U.S. patent issued from, a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to such an international application, has a pre-AIA 35 U.S.C. 102(e) date as of the earliest U.S. filing date after the international filing date.
6. If the reference is a U.S. patent issued directly, or indirectly, from an international application (PCT) that has an international filing date prior to November 29, 2000, use form paragraph 7.12.01.fti. In that situation, pre-AIPA 35 U.S.C. 102(e) is applicable in the determination of the prior art date of the patent issued from such an international application.
7. If the reference is a publication of an international application (PCT), including the U.S. publication of a national stage (35 U.S.C. 371), that has an international filing date prior to November 29, 2000, do not use this form paragraph. Such a reference may not be applied as a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
8. This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.11.fti.
¶ 7.12.01.fti Pre-AIPA 35 U.S.C. 102(e), Patent to Another with Earlier Filing Date, Reference is a U.S. Patent Issued Directly or Indirectly From a National Stage of, or a ContinuingApplication Claiming Benefit to, an International Application Having an International Filing Date Prior to November 29, 2000
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c)
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of this title before the invention thereof by the applicant for patent.
The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)).
Examiner Note:
1. This form paragraph should only be used if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit to an international application having an international filing date prior to November 29, 2000.
2. If the reference is a U.S. patent issued directly from a national stage of such an international application, the reference’s pre-AIPA 35 U.S.C. 102(e) date is the date that the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. The language of WIPO publication (PCT) is not relevant in this situation. Caution: the international publication of the international application (PCT) by WIPO may have an earlier prior art date under pre-AIA 35 U.S.C. 102(a) or pre-AIA 102(b).
3. If the reference is a U.S. patent issued directly from a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to such an international application (which had not entered the national stage prior to the continuing application’s filing date, otherwise see note 4), the prior art reference’s pre-AIPA 35 U.S.C. 102(e) date is the actual U.S. filing date of the continuing application. Caution: the international publication of the international application (PCT) by WIPO may have an earlier prior art date under pre-AIA 35 U.S.C. 102(a) or pre-AIA 102(b).
4. In determining the pre-AIPA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) only if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application. Do NOT consider foreign priority claims under 35 U.S.C. 119(a)-(d), 365(a) or (b), or 386(a) or (b).
5. This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.11.fti.
¶ 7.13.fti Pre-AIA 102(f), Applicant Not the Inventor
(f) he did not himself invent the subject matter sought to be patented.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.12.fti.
¶ 7.14.aia Pre-AIA 102(g), Priority of Invention
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.aia.
¶ 7.14.fti Pre-AIA 102(g), Priority of Invention
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.13.fti.
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¶ 7.15.aia Rejection, 35 U.S.C. 102(a)(1)/102(a)(2)
Claim(s) [1] is/are rejected under 35 U.S.C. 102 [2] as being [3] by [4].
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. In bracket 1, insert the claim numbers which are under rejection.
3. In bracket 2, insert either “(a)(1)” or “(a)(2)” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia, 7.15.02.aia or 7.15.03.aia where applicable.
4. In bracket 3, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
5. In bracket 4, insert the prior art relied upon.
6. This rejection must be preceded either by form paragraph 7.07.aia and form paragraphs 7.08.aia, and 7.12.aia as appropriate, or by form paragraph 7.103.
7. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.fti Rejection, Pre-AIA 35 U.S.C. 102(a), (b) Patent or Publication, and (g)
Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102 [2] as being [3] by [4].
Examiner Note:
1. In bracket 2, insert the appropriate paragraph letter or letters of pre-AIA 35 U.S.C. 102 in parentheses. If paragraph (e) of pre-AIA 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.
2. In bracket 3, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
3. In bracket 4, insert the prior art relied upon.
4. This rejection must be preceded either by form paragraph 7.07.fti and form paragraphs 7.08.fti, 7.09.fti, and 7.14.fti as appropriate, or by form paragraph 7.103.
5. If pre-AIA 35 U.S.C. 102(e) is also being applied, this form paragraph must be followed by either form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.
6. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.01.aia Provisional Rejection, 35 U.S.C. 102(a)(2) - Common Assignee, Common Applicant, or At Least One Common Joint Inventor
Claim(s) [1] is/are provisionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.
Based upon the earlier effective filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(a)(2), if published under 35 U.S.C. 122(b) or patented under 35 U.S.C. 151. This provisional rejection under 35 U.S.C. 102(a)(2) is based upon a presumption of future publication or patenting of the copending application. [4].
This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph is used to provisionally reject over a copending application with an earlier effective filing date that discloses the claimed invention and has not been published under 35 U.S.C. 122. The copending application must have either a common assignee, common applicant (35 U.S.C. 118) or at least one common joint inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
a. a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the application;
b. a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the application; or
c. a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date
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earlier than the effective filing date of the application. If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) issued or was published before the effective filing date of the application under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
4. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.aia.
5. In bracket 1, insert claim number(s) under rejection.
6. In bracket 2, insert the application number.
7. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
8. In bracket 4, provide an appropriate explanation of the examiner’s position on anticipation.
9. If the claims of the copending application are directed to the same invention as the claims of the instant application, a provisional double patenting rejection should also be made using form paragraphs 8.30 and 8.32.
10. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 102(e) - Common Assignee, Common Applicant, or At Least One Common Joint Inventor
Claim(s) [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.
Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e), if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future publication or patenting of the copending application. [4].
This provisional rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention “by another,” or by an appropriate showing under 37 CFR 1.131(a).
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph is used to provisionally reject over a copending application with an earlier filing date that discloses the claimed invention which has not been published under 35 U.S.C. 122. The copending application must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor.
2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) to determine the copending application’s prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti). See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
3. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.fti.
4. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
5. In bracket 4, an appropriate explanation may be provided in support of the examiner’s position on anticipation, if necessary.
6. If the claims of the copending application are directed to the same invention as the claims of the instant application, a provisional double patenting rejection should also be made using form paragraphs 8.30 and 8.32.
7. If evidence is additionally of record to show that either invention is prior art to the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection using form paragraphs 7.13.fti and/or 7.14.fti should also be made.
8. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.02.aia Rejection, 35 U.S.C. 102(a)(2), Common Assignee, Applicant, or Joint Inventor(s)
Claim(s) [1] is/are rejected under 35 U.S.C. 102(a)(2) as being [2] by [3].
The applied reference has a common [4] with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention were either owned by the
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same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph is used to reject claims under 35 U.S.C. 102(a)(2) over a U.S. patent, U.S. patent application publication, or WIPO publication with an earlier effectively filed date. These references must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
a. a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the effective filing date of the claimed invention;
b. a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
c. a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.
If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
4. In bracket 1, insert the claim numbers which are under rejection.
5. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
6. In bracket 3, insert the prior art relied upon.
7. In bracket 4, insert --assignee--, --applicant--, or --joint inventor--.
8. This form paragraph must be preceded by form paragraph 7.12.aia.
9. If the claims of the copending application are directed to the same invention as the claims of the instant application, a provisional double patenting rejection should also be made using form paragraphs 8.30 and 8.32, and applicant should be required to amend or cancel patentably indistinct claims using form paragraph 8.27.aia.
10. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.02.fti Rejection, Pre-AIA 35 U.S.C. 102(e), Common Assignee, Applicant, or Joint Inventor
Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by [2].
The applied reference has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e). This rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or if the same invention is not being claimed, by an appropriate showing under 37 CFR 1.131(a).
Examiner Note:
1. This form paragraph is used to reject over a patent or patent application publication with an earlier effective filing date. The patent or patent application publication must have either a common assignee, a common applicant (35 U.S.C. 118), or a common joint inventor.
2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) must be applied if the reference is by another and is one of the following:
a. a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
b. a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
c. a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.
3. Pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any
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benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) - (d), 365(a) or (b), or 386(a) or (b).
5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO PCT publication, that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. This form paragraph must be preceded by either of form paragraphs 7.12.fti or 7.12.01.fti.
8. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12.fti.
9. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
10. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) using form paragraphs 8.30 - 8.32. Additionally, the applicant should be required to resolve any issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) using form paragraph 8.27.fti. See MPEP § 804, subsection II.A.
¶ 7.15.03.aia Rejection, 35 U.S.C. 102(a)(2), No Common Assignee or Inventor(s)
Claim(s) [1] is/are rejected under 35 U.S.C. 102(a)(2) as being [2] by [3].
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph is used to reject a claim over a U.S. patent, U.S. patent application publication or WIPO patent application publication with an earlier effective filing date. The reference is not required to have a common assignee or inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference is one of the following:
a. a U.S. patent granted under 35 U.S.C. 151 that has an effective filing date earlier than the application;
b. a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effective filing date earlier than the application; or
c. a WIPO publication of an international application where the WIPO publication has an effective filing date earlier than the application.
If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the application under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
4. In bracket 1, insert the claim numbers which are under rejection.
5. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
6. In bracket 3, insert the prior art relied upon.
7. This form paragraph must be preceded by form paragraph 7.12.aia.
¶ 7.15.03.fti Rejection, pre-AIA 35 U.S.C. 102(e), No Common Assignee or Inventor(s)
Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102(e) as being [2] by [3].
Examiner Note:
1. This form paragraph is used to reject over a patent or patent application publication with an earlier filing date. The patent or patent application publication is not required to have a common assignee or a common inventor.
2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) must be applied if the reference is one of the following:
a. a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
b. a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
c. a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.
3. Pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under
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35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) - (d), 365(a) or (b), or 35 U.S.C. 386(a) or (b).
5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO (PCT) publication, that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
6. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
7. In bracket 3, insert the prior art relied upon.
8. This form paragraph must be preceded by either of form paragraphs 7.12.fti or 7.12.01.fti.
9. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12.fti.
¶ 7.16.aia Rejection, 35 U.S.C. 102(a)(1), Public Use, On Sale, or Otherwise Publicly Available
Claim [1] rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. [2]
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be preceded either by form paragraphs 7.07.aia and 7.08.aia or by form paragraph 7.103.
3. In bracket 1, insert the claim numbers which are under rejection.
4. A full explanation of the evidence establishing a public use or sale or other public availability must be provided in bracket 2.
¶ 7.16.fti Rejection, pre-AIA 35 U.S.C. 102(b), Public Use or on Sale
Claim [1] rejected under pre-AIA 35 U.S.C. 102(b) based upon a public use or sale of the invention. [2]
Examiner Note:
1. This form paragraph must be preceded either by form paragraphs 7.07.fti and 7.09.fti or by form paragraph 7.103.
2. A full explanation of the evidence establishing a public use or sale must be provided in bracket 2.
¶ 7.17.aia 102(a)(1) Rejection Using Prior Art Excepted under 102(b)(2)(C)
Applicant has provided evidence in this file showing that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, although reference [2] has been disqualified as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be disqualified under 35 U.S.C. 102(b)(2)(C).
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be included following form paragraph 7.20.aia or 7.15.aia where the anticipation rejection is based on a reference that has been disqualified under 35 U.S.C. 102(b)(2)(C) but still qualifies as prior art under 35 U.S.C. 102(a)(1).
3. In bracket 1, identify the common assignee.
4. In bracket 2, identify the reference which has been disqualified.
¶ 7.17.fti Rejection, pre-AIA 35 U.S.C. 102(c), Abandonment of Invention
Claim [1] rejected under pre-AIA 35 U.S.C. 102(c) because the invention has been abandoned. [2]
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Examiner Note:
1. This form paragraph must be preceded either by form paragraph 7.07.fti and 7.10.fti or by form paragraph 7.103.
2. In bracket 2, insert a full explanation of the evidence establishing abandonment of the invention. See MPEP § 2134.
¶ 7.18.aia Rejection, Pre-AIA 35 U.S.C. 102(g)
Claim [1] rejected under pre-AIA 35 U.S.C. 102 (g) as being [2] by [3].
Examiner Note:
1. This form paragraph should only be used for an application or a patent that is being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act (must be preceded by form paragraph 7.03.aia) and MUST contain or have contained a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained such a claim.
2. In bracket 1, insert the claim numbers which are under rejection.
3. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
4. In bracket 3, insert the prior art relied upon.
5. This rejection must be preceded either by form paragraph 7.14.aia, or by form paragraph 7.103.
¶ 7.18.fti Rejection, pre-AIA 35 U.S.C. 102(d), Foreign Patenting
Claim [1] rejected under pre-AIA 35 U.S.C. 102(d) as being barred by applicants [2]. [3]
Examiner Note:
1. This form paragraph must be preceded either by form paragraphs 7.07.fti and 7.11.fti or by form paragraph 7.103.
2. In bracket 3, insert an explanation of this rejection which must include appropriate dates and how they make the foreign patent available under pre-AIA 35 U.S.C. 102(d).
3. Refer to MPEP § 2135 for applicable pre-AIA 35 U.S.C. 102(d) prior art.
¶ 7.19.fti Rejection, pre-AIA 35 U.S.C. 102(f), Applicant Not the Inventor
Claim [1] is/are rejected under pre-AIA 35 U.S.C. 102(f) because the applicant did not invent the claimed subject matter. [2]
Examiner Note:
1. This paragraph must be preceded either by paragraphs 7.07.fti and 7.13.fti or by paragraph 7.103.
2. In bracket 2, insert an explanation of the supporting evidence establishing that applicant was not the inventor. See MPEP § 2137.
¶ 7.20.aia Statement of Statutory Basis, 35 U.S.C. 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. The statute is not to be cited in all Office actions. It is only required in first actions on the merits employing 35 U.S.C. 103 and final rejections. Where the statute is being applied, but is not cited in an action on the merits, use paragraph 7.103.
3. This form paragraph should only be used ONCE in a given Office action.
4. This form paragraph must precede any of form paragraphs 7.20.01.aia, 7.20.02.aia, 7.20.04.aia, 7.20.05.aia, 7.21.aia, 7.21.01.aia, 7.21.02.aia, and 7.22.aia when this form paragraph is used to cite the statute in first actions and final rejections.
¶ 7.20.fti Statement of Statutory Basis, Pre-AIA 35 U.S.C. 103(a)
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Examiner Note:
1. The statute is not to be cited in all Office actions. It is only required in first actions on the merits employing pre-AIA 35 U.S.C. 103(a) and final rejections. Where the statute is being applied, but is not cited in an action on the merits, use paragraph 7.103.
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2. This form paragraph should only be used ONCE in a given Office action.
3. This form paragraph must precede form paragraphs 7.20.01.fti - 7.22.fti when this form paragraph is used to cite the statute in first actions and final rejections.
¶ 7.20.01.aia 103 Rejection Using Prior Art Excepted Under 102(b)(2)(C) Because Reference is Prior Art Under 102(a)(1)
Applicant has provided evidence in this file showing that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement not later than the effective filing date of the claimed invention. However, although reference [2] has been disqualified as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be disqualified under 35 U.S.C. 102(b)(2)(C).
Applicant may overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art as set forth in 35 U.S.C. 102(b)(1)(A). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be included following form paragraph 7.20.aia or 7.15.aia where the 103 rejection is based on a reference that has since been disqualified under 102(b)(2)(C), but still qualifies as prior art under 35 U.S.C. 102(a)(1).
3. In bracket 1, identify the common assignee.
4. In bracket 2, identify the reference which has been disqualified.
¶ 7.20.01.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Not Disqualified Under Pre-AIA 35 U.S.C. 103(c) Because Reference Is Prior Art Under Another Subsection of Pre-AIA 35 U.S.C. 102
Applicant has provided evidence in this file showing that the invention was owned by, or subject to an obligation of assignment to, the same entity as [1] at the time this invention was made, or was subject to a joint research agreement at the time this invention was made. However, reference [2] qualifies as prior art under another subsection of pre-AIA 35 U.S.C. 102,
and therefore is not disqualified as prior art under pre-AIA 35 U.S.C. 103(c).
Applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore, not the invention “by another,” or by antedating the applied art under 37 CFR 1.131(a).
Examiner Note:
1. This form paragraph must be included following form paragraph 7.20.fti in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) using art that is disqualified under pre-AIA 103(c) using pre-AIA 102(e), (f), or (g), but which qualifies under another section of pre-AIA 35 U.S.C. 102.
2. In bracket 1, identify the common assignee.
3. In bracket 2, identify the reference which has been disqualified.
¶ 7.20.02.aia Joint Inventors, Common Ownership Presumed
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were effectively filed absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).
¶ 7.20.02.fti Joint Inventors, Common Ownership Presumed
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
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Examiner Note:
This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).
¶ 7.20.04.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Disqualified Under 35 U.S.C. 102(b)(2)(C) Using the Common Ownership or Assignment Provision
Applicant has attempted to disqualify reference [1] under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time the claimed invention was effectively filed. However, applicant has failed to provide a statement that the claimed invention and the subject matter disclosed were owned by, or subject to an obligation of assignment to, the same person no later than the effective filing date of the claimed invention in a conspicuous manner, and therefore, the reference is not disqualified as prior art under 35 U.S.C. 102(a)(2). Applicant must file the required evidence in order to properly disqualify the reference under 35 U.S.C. 102(b)(2)(C). See generally MPEP § 706.02(l).
In addition, applicant may rely upon the exception under 35 U.S.C. 102(b)(2)(A)to overcome the rejection under 35 U.S.C. 102(a)(2) either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph should be included in all actions containing rejections using 35 U.S.C. 102(a)(2) prior art, whether anticipation or obviousness rejections, where an attempt has been made to disqualify the reference under 35 U.S.C. 102(b)(2)(C), but where the applicant has not provided a proper statement indicating common ownership or assignment not later than the effective filing date of the claimed invention.
3. In bracket 1, identify the commonly owned applied art (e.g., patent or co-pending application).
4. In bracket 2, identify the common assignee.
¶ 7.20.04.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Attempted To Be
Disqualified Under pre-AIA 35 U.S.C. 103(c) Using the Common Ownership or Assignment Provision
Applicant has attempted to disqualify reference [1] under pre-AIA 35 U.S.C. 103(c) by showing that the invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time this invention was made. However, applicant has failed to provide a statement that the application and the reference were owned by, or subject to an obligation of assignment to, the same person at the time the invention was made in a conspicuous manner, and therefore, is not disqualified as prior art under pre-AIA 35 U.S.C. 103(a). Applicant must file the required evidence in order to properly disqualify the reference under pre-AIA 35 U.S.C. 103(c). See MPEP § 706.02(l).
In addition, applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore not the invention “by another,” or by antedating the applied art under 37 CFR 1.131(a).
Examiner Note:
1. This form paragraph must be included in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) where an attempt has been made to disqualify the reference under pre-AIA 35 U.S.C. 103(c), but where the applicant has not provided a proper statement indicating common ownership or assignment at the time the invention was made.
2. In brackets 1 and 2, identify the commonly owned applied art (e.g., patent or co-pending application).
¶ 7.20.05.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Disqualified Under 35 U.S.C. 102(b)(2)(C) Using the Joint Research Agreement Provisions of 35 U.S.C. 102(c)
Applicant has attempted to disqualify reference [1] under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was subject to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly disqualify the reference under 35 U.S.C. 102(b)(2)(C). See 37 CFR 1.71(g)(1) and1.104(c)(4)(ii).
In addition, applicant may overcome the rejection either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained, either directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
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2. This form paragraph must be included in all actions containing obviousness or anticipation rejections where an attempt has been made to disqualify the 35 U.S.C. 102(a)(2) prior art reference under 35 U.S.C. 102(b)(2)(C) using the joint research agreement provisions but the disqualification attempt is ineffective.
3. In bracket 1, identify the reference which is sought to be disqualified via 35 U.S.C. 102(b)(2)(C).
4. In bracket 2, identify the reason(s) why the disqualification attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of 35 U.S.C. 102(b)(2)(C) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii).
¶ 7.20.05.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Attempted To Be Disqualified Under Pre-AIA 35 U.S.C. 103(c) Using the Joint Research Agreement Provisions
Applicant has attempted to disqualify reference [1] under pre-AIA 35 U.S.C. 103(c) by showing that the invention was subject to a joint research agreement at the time this invention was made. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly disqualify the reference under pre-AIA 35 U.S.C. 103(c). See 37 CFR 1.71(g) and 1.104(c) and MPEP § 706.02(l).
In addition, applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore, not the invention “by another,” or by antedating the applied art under 37 CFR 1.131(a).
Examiner Note:
1. This form paragraph must be included in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) where an attempt has been made to disqualify the reference under pre-AIA 35 U.S.C. 103(c) using the joint research agreement provisions but the disqualification attempt is ineffective.
2. In bracket 1, identify the reference which is sought to be disqualified under pre-AIA 35 U.S.C. 103(c).
3. In bracket 2, identify the reason(s) why the disqualification attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of pre-AIA 35 U.S.C. 103(c) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.104(c)(5)(ii).
¶ 7.21.aia Rejection, 35 U.S.C. 103
Claim [1] is/are rejected under 35 U.S.C. 103 as being unpatentable over [2].
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be preceded by either form paragraph 7.20.aia or form paragraph 7.103.
3. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
4. If this rejection is a provisional 35 U.S.C. 103 rejection based upon a copending application that would constitute prior art under 35 U.S.C. 102(a)(2) if patented or published, use form paragraph 7.21.01.aia instead of this paragraph.
5. In bracket 1, insert the claim numbers which are under rejection.
6. In bracket 2, insert the prior art relied upon.
7. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.21.fti Rejection, Pre-AIA 35 U.S.C. 103(a)
Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2].
Examiner Note:
1. This paragraph must be preceded by either form paragraph 7.20.fti or form paragraph 7.103.
2. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
4. If the applicability of this rejection (e.g., the availability of the prior art as a reference under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b)) prevents the reference from being disqualified under pre-AIA 35 U.S.C. 103(c), form paragraph 7.20.01.fti must follow this form paragraph.
5. If this rejection is a provisional pre-AIA 35 U.S.C. 103(a) rejection based upon a copending application that would comprise prior art under pre-AIA 35 U.S.C. 102(e) if patented
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or published, use form paragraph 7.21.01.fti instead of this paragraph.
6. In bracket 1, insert the claim numbers which are under rejection.
7. In bracket 2, insert the prior art relied upon.
¶ 7.21.01.aia Provisional Rejection, 35 U.S.C. 103, Common Assignee, Common Applicant, or at Least One Common Joint Inventor
Claim [1] is/are provisionally rejected under 35 U.S.C. 103 as being obvious over copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effectively filed date of the copending application, it would constitute prior art under 35 U.S.C. 102(a)(2) if published or patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption of future publication or patenting of the copending application. [4]
This provisional rejection might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention either were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier effectively filed date and also having either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor.
3. If the claimed invention is fully disclosed in the copending application, use form paragraph 7.15.01.aia.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the application number.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional
nonstatutory double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.
¶ 7.21.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common Joint Inventor
Claim [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future publication or patenting of the copending application. [4]
This provisional rejection might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the copending application under 37 CFR 1.131(a). This rejection might also be overcome by showing that the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a rejection under pre-AIA 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Examiner Note:
1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier U.S. filing date and also having either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor. This form paragraph should not be used when the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(3).
2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) to determine the copending application's prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) to determine the copending application’s prior art date. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
3. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01.fti.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the application number.
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6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.
9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the copending application is also prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
b. the copending application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
¶ 7.21.02.aia Rejection, 35 U.S.C. 103, Common Assignee, CommonApplicant, or at Least One Common Joint Inventor
Claim [1] is/are rejected under 35 U.S.C. 103 as being obvious over [2].
The applied reference has a common [3] with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). [4]
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This paragraph is used to reject over a reference (patent or published application) with an earlier effectively filed date that discloses the claimed invention, and that ONLY qualifies as prior art under 35 U.S.C. 102(a)(2). If the reference qualifies as prior art under 35 U.S.C. 102(a)(1), then this form paragraph should not be used (form paragraph 7.21.aia should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118 ), or at least one common joint inventor. This form paragraph should not be used in
applications when the reference is not prior art in view of the 35 U.S.C. 102(b)(2)(C) exception.
3. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
4. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
¶ 7.21.02.fti Rejection, pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common Joint Inventor
Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over [2].
The applied reference has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e). This rejection under pre-AIA 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a); or (3) an oath or declaration under 37 CFR 1.131(c) stating that the application and reference are currently owned by the same party and that the inventor or joint inventors (i.e., the inventive entity) named in the application is the prior inventor under pre-AIA 35 U.S.C. 104 as in effect on March 15, 2013, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a rejection under pre-AIA 35 U.S.C. 103(a). See MPEP §§ 706.02(l)(1) and 706.02(l)(2). [4]
Examiner Note:
1. This paragraph is used to reject over a reference (patent or published application) with an earlier filing date that discloses the claimed invention, and that only qualifies as prior art under pre-AIA 35 U.S.C. 102(e). If the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or (b), then this form paragraph should not be used (form paragraph 7.21.fti should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor. This form paragraph should not be used in applications when the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(3).
2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) must be applied if the reference is by another and is one of the following:
a. a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
b. a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
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c. a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.
3. Pre-AIPA 35 U.S.C. 102(e) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the prior art reference(s) relied upon for the obviousness rejection.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
¶ 7.22.aia Rejection, 35 U.S.C. 103, Further in View Of
Claim [1] is/are rejected under 35 U.S.C. 103 as being unpatentable over [2] as applied to claim [3] above, and further in view of [4].
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be preceded by form paragraph 7.21.aia.
3. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
¶ 7.22.fti Rejection, pre-AIA 35 U.S.C. 103(a), Further in View Of
Claim [1] rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2] as applied to claim [3] above, and further in view of [4].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.21.fti.
2. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29,
2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c) or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
¶ 7.23.aia Graham v. Deere, Test for Obviousness
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph may be used, if appropriate, in response to an argument regarding the applicability of the Graham v. Deere factors.
¶ 7.23.fti Graham v. Deere, Test for Obviousness
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Examiner Note:
This form paragraph may be used, if appropriate, in response to an argument regarding the applicability of the Graham v. Deere factors.
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¶ 7.27.aia Rejection, 35 U.S.C. 102 or 103
Claim(s) [1] is/are rejected under 35 U.S.C. 102([2]) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over [3].
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph is NOT intended to be commonly used as a substitute for a rejection under 35 U.S.C. 102. In other words, a single rejection under either 35 U.S.C. 102 or 35 U.S.C. 103 should be made whenever possible. Examples of circumstances where this paragraph may be used are as follows:
a. When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under 35 U.S.C. 102 is appropriate and given another interpretation, a rejection under 35 U.S.C. 103 is appropriate. See MPEP §§ 2111 - 2116.01 for guidelines on claim interpretation.
b. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
c. When the reference teaches a small genus which places a claimed species in the possession of the public as in In re Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would have been obvious even if the genus were not sufficiently small to justify a rejection under 35 U.S.C. 102. See MPEP §§ 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus.
d. When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
e. When the reference teaches all claim limitations except a means plus function limitation and the examiner is not certain whether the element disclosed in the reference is an equivalent of the claimed element and therefore anticipatory, or whether the prior art element is an obvious variant of the claimed element. See MPEP §§ 2183 - 2184.
f. When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range. See the concurring opinion in Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See MPEP § 2131.03.
3. If the interpretation of the claim(s) renders the claim(s) indefinite, a rejection under 35 U.S.C. 112(b) may be appropriate.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the appropriate paragraph letter(s) in parenthesis.
6. In bracket 3, insert the prior art reference relied upon for the rejection.
7. A full explanation must follow this form paragraph, i.e., the examiner must provide an explanation of how the claims at issue could be considered to be anticipated, as well as how they could be considered to be obvious.
8. This form paragraph must be preceded by 7.07.aia and 7.08.aia and/or 7.12.aia or by form paragraph 7.103.
9. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.27.fti Rejection, pre-AIA 35 U.S.C. 102 or pre-AIA 103(a)
Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102([2]) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over [3].
Examiner Note:
1. This form paragraph is NOT intended to be commonly used as a substitute for a rejection under pre-AIA 35 U.S.C. 102. In other words, a single rejection under either pre-AIA 35 U.S.C. 102 or pre-AIA 35 U.S.C. 103(a) should be made whenever possible using appropriate form paragraphs 7.15.fti to 7.19.fti, 7.21.fti and 7.22.fti. Examples of circumstances where this paragraph may be used are as follows:
a. When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under pre-AIA 35 U.S.C. 102 is appropriate and given another interpretation, a rejection under pre-AIA 35 U.S.C. 103(a) is appropriate. See MPEP §§ 2111 - 2116.01 for guidelines on claim interpretation.
b. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
c. When the reference teaches a small genus which places a claimed species in the possession of the public as in In re Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would have been obvious even if the genus were not sufficiently small to justify a rejection under 35 U.S.C. 102. See MPEP §§ 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus.
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d. When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
e. When the reference teaches all claim limitations except a means plus function limitation and the examiner is not certain whether the element disclosed in the reference is an equivalent of the claimed element and therefore anticipatory, or whether the prior art element is an obvious variant of the claimed element. See MPEP §§ 2183 - 2184.
f. When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range. See the concurring opinion in Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See MPEP § 2131.03.
2. If the interpretation of the claim(s) renders the claim(s) indefinite, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, may be appropriate.
3. In bracket 1, insert the claim number(s) which is/are under rejection.
4. In bracket 2, insert the appropriate paragraph letter(s) in parenthesis.
5. In bracket 3, insert the prior art reference relied upon for the rejection.
6. A full explanation should follow this form paragraph.
7. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120 , 121 or 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
8. This form paragraph must be preceded by 7.07.fti, one or more of form paragraphs 7.08.fti to 7.14.fti as appropriate, and form paragraph 7.20.fti or by form paragraph 7.103.
9. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.28 Objection to New Matter Added to Specification
The amendment filed [1] is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: [2].
Applicant is required to cancel the new matter in the reply to this Office action.
Examiner Note:
1. This form paragraph is not to be used in reissue applications; use form paragraph 14.22.01 instead.
2. In bracket 2, identify the new matter by page and the line numbers and/or drawing figures and provide an appropriate explanation of your position. This explanation should address any statement by applicant to support the position that the subject matter is described in the specification as filed. It should further include any unresolved questions which raise a doubt as to the possession of the claimed invention at the time of filing.
3. If new matter is added to the claims, or affects the claims, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, using form paragraph 7.31.01 should also be made. If new matter is added only to a claim, an objection using this paragraph should not be made, but the claim should be rejected using form paragraph 7.31.01. As to any other appropriate prior art or 35 U.S.C. 112 rejection, the new matter must be considered as part of the claimed subject matter and cannot be ignored.
¶ 7.29 Disclosure Objected to, Minor Informalities
The disclosure is objected to because of the following informalities: [1]. Appropriate correction is required.
Examiner Note:
Use this paragraph to point out minor informalities such as spelling errors, inconsistent terminology, numbering of elements, etc., which should be corrected. See form paragraphs 6.28 to 6.31 for specific informalities.
¶ 7.29.01 Claims Objected to, Minor Informalities
Claim[1] objected to because of the following informalities: [2]. Appropriate correction is required.
Examiner Note:
1. Use this form paragraph to point out minor informalities such as spelling errors, inconsistent terminology, etc., which should be corrected.
2. If the informalities render the claim(s) indefinite, use form paragraph 7.34.01 instead to reject the claim(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph.
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¶ 7.29.02 Claims Objected to, Reference Characters Not Enclosed Within Parentheses
The claims are objected to because they include reference characters which are not enclosed within parentheses.
Reference characters corresponding to elements recited in the detailed description of the drawings and used in conjunction with the recitation of the same element or group of elements in the claims should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. See MPEP § 608.01(m).
Examiner Note:
1. If the lack of parentheses renders the claim(s) indefinite, use form paragraph 7.34.01 instead to reject the claim(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph.
¶ 7.29.03 Claims Objected to, Spacing of Lines
The claims are objected to because the lines are crowded too closely together, making reading difficult. Substitute claims with lines one and one-half or double spaced on good quality paper are required. See 37 CFR 1.52(b).
¶ 7.29.04 Disclosure Objected To, Embedded Hyperlinks or Other Forms of Browser-Executable Code
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Examiner Note:
1. Examples of a hyperlink or a browser-executable code are a URL placed between these symbols “< >” and “http://” followed by a URL address. Nucleotide and/or amino acid sequence data placed between the symbols “< >” are not considered to be hyperlinks and/or browser-executable code.
2. If the application attempts to incorporate essential or nonessential subject matter into the patent application by reference to the contents of the site to which a hyperlink and/or other form of browser-executable code is directed, use form paragraph 6.19 or 6.19.01 instead. See also MPEP § 608.01(p).
3. The requirement to delete an embedded hyperlink or other form of browser-executable code does not apply to electronic documents listed on forms PTO-892 and PTO/SB/08B where the electronic document is identified by reference to a URL.
4. Examiners should not object to hyperlinks where the hyperlinks and/or browser-executable codes themselves (rather than the contents of the site to which the hyperlinks are directed) are necessary to be included in the patent application in order to meet the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, and applicant does not intend to have those hyperlinks be active links.
¶ 7.30.01 Statement of Statutory Basis, 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Examiner Note:
1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.
2. Form paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action.
¶ 7.30.02 Statement of Statutory Basis, 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, Second Paragraph
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of pre-AIA 35 U.S.C. 112, second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Examiner Note:
1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.
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2. Paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action.
¶ 7.30.03 Statement of Statutory Basis, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph
The following is a quotation of 35 U.S.C. 112(f):
(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Examiner Note:
1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.
2. Use this paragraph ONLY ONCE in a given Office action when claim elements use “means” (or “step for”) or otherwise invoke treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
3. This form paragraph must be followed with form paragraph 7.30.04.
¶ 7.30.03.h Header for Claim Interpretation
CLAIM INTERPRETATION
Examiner Note:
This form paragraph may precede form paragraph 7.30.03.
¶ 7.30.04 Use of “Means” (or “Step for”) in Claim Drafting and Rebuttable Presumptions Raised
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
Examiner Note:
1. Use this paragraph ONLY ONCE in a given Office action when claim elements use “means” (or “step for”) or otherwise invoke treatment under 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) by using a substitute term for “means” that serves as a generic placeholder.
2. This paragraph must be preceded with form paragraph 7.30.03 unless already cited in a previous Office action.
3. An explanation should be provided when the presumptions raised are rebutted by the claim language, for example by using “means” in a claim element along with definite structure that performs the function or by not using “means” and failing to recite structure that performs the function.
4. This paragraph may be followed by form paragraphs 7.34.11, 7.34.16, 7.34.18, 7.34.19, 7.34.20, 7.34.21, as appropriate.
¶ 7.31.01 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Description Requirement, Including New Matter Situations
Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. [2]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.
2. In bracket 2, identify (by suitable reference to page and line numbers and/or drawing figures) the subject matter not properly described in the application as filed, and provide an explanation of your position. The explanation should include any questions the examiner asked which were not satisfactorily resolved and consequently raise doubt as to possession of the claimed invention at the time of filing.
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¶ 7.31.02 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Enablement
Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. [2]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.
2. If the problem is one of scope, form paragraph 7.31.03 should be used.
3. In bracket 2, identify the claimed subject matter for which the specification is not enabling. Also explain why the specification is not enabling, applying the factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP §§ 2164.01(a) and 2164.04. The explanation should include any questions the examiner may have asked which were not satisfactorily resolved and consequently raise doubt as to enablement.
4. Where an essential component or step of the invention is not recited in the claims, use form paragraph 7.33.01.
¶ 7.31.03 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph: Scope of Enablement
Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the specification, while being enabling for [2], does not reasonably provide enablement for [3]. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to [4] the invention commensurate in scope with these claims. [5]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.
2. This form paragraph is to be used when the scope of the claims is not commensurate with the scope of the enabling disclosure.
3. In bracket 2, identify the claimed subject matter for which the specification is enabling. This may be by reference to specific portions of the specification.
4. In bracket 3, identify aspect(s) of the claim(s) for which the specification is not enabling.
5. In bracket 4, fill in only the appropriate portion of the statute, i.e., one of the following: --make--, --use--, or --make and use--.
6. In bracket 5, identify the claimed subject matter for which the specification is not enabling. Also explain why the specification is not enabling, applying the factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP §§ 2164.01(a) and 2164.04. The explanation should include any questions posed
by the examiner which were not satisfactorily resolved and consequently raise doubt as to enablement.
¶ 7.31.04 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph: Best Mode Requirement
Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the best mode contemplated by the inventor or a joint inventor, or for pre-AIA the inventor(s) has not been disclosed. Evidence of concealment of the best mode is based upon [2].
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.
2. In bracket 2, insert the basis for holding that the best mode has been concealed, e.g., the quality of applicant’s disclosure is so poor as to effectively result in concealment.
3. Use of this form paragraph should be rare. See MPEP §§ 2165- 2165.04.
¶ 7.33.01 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Essential Subject Matter Missing From Claims (Enablement)
Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without [2], which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). [3]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.
2. In bracket 2, recite the subject matter omitted from the claims.
3. In bracket 3, give the rationale for considering the omitted subject matter critical or essential.
4. The examiner shall cite the statement, argument, date, drawing, or other evidence which demonstrates that a particular feature was considered essential by the applicant, is not reflected in the claims which are rejected.
¶ 7.34 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Claim Inventor’s Invention
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as their invention. Evidence that claim [2] fail(s) to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as the invention can be found in the reply filed [3]. In that paper, the inventor or a joint inventor, or for pre-AIA the applicant has stated [4], and this statement indicates that the invention is different from what is defined in the claim(s) because [5].
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Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. This paragraph is to be used only where inventor or applicant has stated, somewhere other than in the application, as filed, that the invention is something different from what is defined in the claim(s).
3. In bracket 3, identify the submission by inventor or applicant (which is not the application, as filed, but may be in the remarks by applicant, in the brief, in an affidavit, etc.) by the date the paper was filed in the USPTO.
4. In bracket 4, set forth what inventor or applicant has stated in the submission to indicate a different invention.
5. In bracket 5, explain how the statement indicates an invention other than what is being claimed.
¶ 7.34.01 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point out and Distinctly Claim (Indefinite)
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. This form paragraph should be followed by one or more of the following form paragraphs 7.34.02 - 7.34.11, as applicable. If none of these form paragraphs are appropriate, a full explanation of the deficiency of the claims should be supplied. Whenever possible, identify the particular term(s) or limitation(s) which render the claim(s) indefinite and state why such term or limitation renders the claim indefinite. If the scope of the claimed subject matter can be determined by one having ordinary skill in the art, a rejection using this form paragraph would not be appropriate. See MPEP §§ 2171 - 2174 for guidance. See also form paragraph 7.34.15 for pro se applicants.
¶ 7.34.02 Terminology Used Inconsistent with Accepted Meaning
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “[1]” in claim [2] is used by the claim to mean “[3],” while the accepted meaning is “[4].” The term is indefinite because the specification does not clearly redefine the term.
Examiner Note:
1. In bracket 3, point out the meaning that is assigned to the term by applicant’s claims, taking into account the entire disclosure.
2. In bracket 4, point out the accepted meaning of the term. Support for the examiner’s stated accepted meaning should be provided through the citation of an appropriate reference source, e.g., textbook or dictionary. See MPEP § 2173.05(a).
3. This paragraph must be preceded by form paragraph 7.34.01.
4. This paragraph should only be used where the specification does not clearly redefine the claim term at issue.
¶ 7.34.03 Relative Term - Term of Degree Rendering Claim Indefinite
The term “[1]” in claim [2] is a relative term which renders the claim indefinite. The term “[1]” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. [3]
Examiner Note:
1. In bracket 3, explain which parameter, quantity, or other limitation in the claim has been rendered indefinite by the use of the term appearing in bracket 1.
2. This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.04 Broader Range/Limitation And Narrow Range/Limitation in Same Claim
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by “such as” and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). In the present instance, claim [1] recites the broad recitation [2], and the claim also recites [3] which is the narrower statement of the range/limitation.
Examiner Note:
1. In bracket 2, insert the broader range/limitation and where it appears in the claim; in bracket 3, insert the narrow range/limitation and where it appears. This form paragraph may be modified to fit other instances of indefiniteness in the claims.
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2. This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.05 Lack of Antecedent Basis in the Claims
Claim [1] recites the limitation [2] in [3]. There is insufficient antecedent basis for this limitation in the claim.
Examiner Note:
1. In bracket 2, insert the limitation which lacks antecedent basis, for example --said lever-- or --the lever--.
2. In bracket 3, identify where in the claim(s) the limitation
appears, for example, --line 3--, --the 3rd paragraph of the claim--, --the last 2 lines of the claim--, etc.
3. This form paragraph should ONLY be used in aggravated situations where the lack of antecedent basis makes the scope of the claim indeterminate. It must be preceded by form paragraph 7.34.01.
¶ 7.34.06 Use Claims
Claim [1] provides for the use of [2], but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claim [3] is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Examiner Note:
1. In bracket 2, insert what is being used. For example, insert --the monoclonal antibodies of claim 4--, where the claim recites “a method for using monoclonal antibodies of claim 4 to purify interferon.”
2. See MPEP § 2173.05(q).
3. This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.07 Claims Are a Literal Translation
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.08 Indefinite Claim Language: “For Example”
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.09 Indefinite Claim Language: “Or The Like”
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.10 Indefinite Claim Language: “Such As”
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.11 Modifier of “Means” Lacks Function
Claim [1] uses the word “means” or a generic placeholder as a substitute for “means” and is preceded by the word(s) “[2].” It is unclear whether these words convey function or structure. A limitation construed under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph must not recite the structure for performing the function. Since no clear function is specified by the word(s) preceding “means,” it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967).
Examiner Note:
1. This paragraph should be used when words precede the term “means” or a substitute for “means” and it cannot be determined from the specification whether those words connote function or structure. Therefore, it is unclear whether the presumption is rebutted that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is being invoked. If the claim element recites structure for performing the function, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph will not be invoked. It is necessary for the words which precede “means” to convey a function to be performed and not recite structure to
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invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
2. This form paragraph must be preceded by form paragraph 7.34.01.
¶ 7.34.12 Essential Steps Omitted
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. In bracket 2, recite the steps omitted from the claims.
3. Give the rationale for considering the omitted steps critical or essential.
¶ 7.34.13 Essential Elements Omitted
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. In bracket 2, recite the elements omitted from the claims.
3. Give the rationale for considering the omitted elements critical or essential.
¶ 7.34.14 Essential Cooperative Relationships Omitted
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: [2]
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. In bracket 2, recite the structural cooperative relationships of elements omitted from the claims.
3. Give the rationale for considering the omitted structural cooperative relationships of elements being critical or essential.
¶ 7.34.15 Rejection Under 35 U.S.C. 112, Pro Se
Claim [1] rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
¶ 7.34.16 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Unclear Whether the Recited Structure, Material, or Acts in the Claim Preclude Application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph
The claim limitation “[1]” uses the phrase “means for” or “step for” or a generic placeholder coupled with functional language, but it is modified by some structure, material, or acts recited in the claim. It is unclear whether the recited structure, material, or acts are sufficient for performing the claimed function because [2].
If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that the phrase “means for” or “step for” or the generic placeholder is clearly not modified by sufficient structure, material, or acts for performing the claimed function, or may present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function.
If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph
Examiner Note:
1. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
2. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., why it is unclear whether the limitation recites sufficient structure, material, or acts to preclude the application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.)
3. This form paragraph may be used when the phrase “means for” or “step for” is used in the claim limitation and it is unclear to one of ordinary skill in the art whether the recited structure, material, or acts in the claim are sufficient for performing the claimed function.
4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.
¶ 7.34.17 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Applicant Asserts that Claim Limitation Is Invoking 35 U.S.C. 112(f) or pre-AIA 35 US.C.
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112, Sixth Paragraph, but the Phrase “Means for” or “Step for” Is Not Used
Applicant asserts that the claim element “[1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because [2]. If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
(a) Amend the claim to include the phrase “means for” or “step for”. The phrase “means for” or “step for” must be modified by functional language, and the phrase or term must not be modified by sufficient structure, material, or acts for performing the claimed function; or
(b) Present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.
Examiner Note:
1. This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation is invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, even though the phrase “means for” or “step for” is not used in the claim limitation. See MPEP § 707.07(a) for guidance on when the second action may be made final.
2. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
3. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function or it is unclear whether the corresponding structure is sufficiently disclosed in the written description of the specification.
4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.
¶ 7.34.18 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, No Disclosure or Insufficient Disclosure of the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112, Sixth Paragraph
Claim element “[1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. [2]
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Examiner Note:
1. In bracket 1, recite the limitation that invokes 35 U.S.C. 112, sixth paragraph.
2. In bracket 2, explain why there is insufficient disclosure of the corresponding structure, material, or acts for performing the claimed function.
3. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.
¶ 7.34.19 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Fails To Clearly Link or Associate the Disclosed Structure, Material, or Acts to the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph
Claim element “[1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function. [2]
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it clearly links or associates the corresponding structure,
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material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function. For more information, see 37 CFR 1.175(d) and MPEP §§ 608.01(o) and 2181 .
Examiner Note:
1. In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
2. In bracket 2, explain why the written description of the specification fails to clearly link or associate the structure, material, or acts to the claimed function.
3. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.
¶ 7.34.20 The Specification Is Objected To; the Written Description Only Implicitly or Inherently Discloses the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph
Claim element “[1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The written description only implicitly or inherently sets forth the corresponding structure, material, or acts that perform the claimed function.
Pursuant to 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181, applicant should:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites the corresponding structure, material, or acts that perform the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) State on the record what corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function.
Examiner Note:
In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
¶ 7.34.21 Claim Limitation Interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph
Claim limitation(s) “[1]” has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “[2]” coupled with functional language “[3]” without reciting sufficient
structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. [4].
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) [5] has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: [6].
If applicant wishes to provide further explanation or dispute the examiner's interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining
Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Examiner Note:
1. Use this form paragraph ONLY when additional explanation regarding treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is necessary. For example, use this paragraph if clarification is needed when a claim element does not use the word “means” but no structure for performing the function is recited in the claim itself or when the associated structure in the specification for performing the function is needs explanation. If the claim element clearly invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph and the corresponding structure is easily identified in the specification for performing the claimed function, it is not necessary to use this form paragraph.
2. This paragraph may be used to explain more than one claim when multiple claims recite similar language or raise similar issues.
3. In bracket 1, recite the claim limitation that has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
4. In bracket 2, recite the generic placeholder that is merely a substitute for the term “means.”
5. In bracket 3, recite the functional language.
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6. In bracket 4, provide an explanation, if appropriate, why the generic placeholder is not recognized as the name of a structure but is merely a substitute for the term “means.”
7. In bracket 5, recite the claim number(s) of the claim(s) that contains/contain the claim limitation.
8. In bracket 6, recite the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters.
¶ 7.34.22 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, Applicant Asserts that Claim Limitation Does Not Invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th Paragraph, but No Structure is Recited to Perform the Claimed Function
Applicant asserts that the claim element “[1]” is a limitation that does not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th paragraph because [2]. If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th Paragraph applicant may:
(a) Amend the claim to add structure, material or acts that are sufficient to perform the claimed function; or
(b) Present a sufficient showing that the claim limitation recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.
Examiner Note:
1. This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation does not invoke 35 U.S.C. 112(f), even though no structure is provided in the claim limitation for performing the function. See MPEP § 706.07(a) for guidance on when the second action may be made final.
2. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
3. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function.
4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.
¶ 7.35 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point out and Distinctly Claim - Omnibus Claim
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. Use this paragraph to reject an “omnibus” type claim. No further explanation is necessary.
3. See MPEP § 1302.04(b) for cancellation of such a claim by examiner’s amendment upon allowance.
4. An example of an omnibus claim is: “A device substantially as shown and described.”
¶ 7.35.01 Trademark or Trade Name as a Limitation in the Claim
Claim [1] contains the trademark/trade name [2]. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/description is indefinite.
Examiner Note:
1. In bracket 2, insert the trademark/trade name and where it is used in the claim.
2. In bracket 3, specify the material or product which is identified or described in the claim by the trademark/trade name.
¶ 7.36 Statement of Statutory Basis, 35 U.S.C. 112(d) and Pre-AIA 35 U.S.C. 112, Fourth Paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
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Examiner Note:
1. The statute is no longer being recited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.
2. Form paragraph 7.36 is to be used ONLY ONCE in a given Office action.
¶ 7.36.01 Rejection under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th Paragraph, Improper Dependent Claim
Claim [1] rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. [2]. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Examiner Note:
1. In bracket 2, insert an explanation of what is in the claim and why it does not constitute a further limitation.
2. The U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of pre-AIA 35 U.S.C. 112, 4th paragraph, are related to matters of form, non-compliance with pre-AIA 35 U.S.C. 112, 4th paragraph, renders the claim unpatentable just as non-compliance with other paragraphs of 35 U.S.C. 112 would. See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92, 79 USPQ2d 1583, 1589-90 (Fed. Cir. 2006) (holding a dependent claim in a patent invalid for failure to comply with pre-AIA 35 U.S.C. 112, 4th paragraph). Therefore, if a dependent claim does not comply with the requirements of 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, the dependent claim should be rejected under pre-AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as unpatentable rather than objecting to the claim. See also MPEP § 608.01(n), subsection III, “Infringement Test” for dependent claims.
3. This form paragraph must be preceded by form paragraph 7.36.
¶ 7.37 Arguments Are Not Persuasive
Applicant’s arguments filed [1] have been fully considered but they are not persuasive. [2]
Examiner Note:
1. The examiner must address all arguments which have not already been responded to in the statement of the rejection.
2. In bracket 2, provide explanation as to non-persuasiveness.
¶ 7.37.01 Unpersuasive Argument: Age of Reference(s)
In response to applicant’s argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve
the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.02 Unpersuasive Argument: Bodily Incorporation
In response to applicant’s argument that [1], the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Examiner Note:
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of bodily incorporation.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.03 Unpersuasive Argument: Hindsight Reasoning
In response to applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.04 UnpersuasiveArgument: No Teaching, Suggestion, or Motivation To Combine
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, [1].
Examiner Note:
1. In bracket 1, explain where the teaching, suggestion, or motivation for the rejection is found, either in the references,
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or in the knowledge generally available to one of ordinary skill in the art.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.05 Unpersuasive Argument: Nonanalogous Art
In response to applicant’s argument that [1] is nonanalogous art, it has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, [2].
Examiner Note:
1. In bracket 1, enter the name of the reference which applicant alleges is nonanalogous.
2. In bracket 2, explain why the reference is analogous art.
3. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.06 Unpersuasive Argument: Number of References
In response to applicant’s argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.07 UnpersuasiveArgument:Applicant Obtains Result Not Contemplated by Prior Art
In response to applicant’s argument that [1], the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Examiner Note:
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of results not contemplated by the prior art.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.08 Unpersuasive Argument: Arguing Limitations Which Are Not Claimed
In response to applicant’s argument that the references fail to show certain features of applicant’s invention, it is noted that the features upon which applicant relies (i.e., [1]) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are
not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Examiner Note:
1. In bracket 1, recite the features upon which applicant relies, but which are not recited in the claim(s).
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.09 Unpersuasive Argument: Intended Use
In response to applicant’s argument that [1], a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Examiner Note:
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of intended use.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.10 Unpersuasive Argument: Limitation(s) in Preamble
In response to applicant’s arguments, the recitation [1] has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Examiner Note:
1. In bracket 1, briefly restate the recitation about which applicant is arguing.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.11 Unpersuasive Argument: General Allegation of Patentability
Applicant’s arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
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¶ 7.37.12 Unpersuasive Argument: Novelty Not Clearly Pointed Out
Applicant’s arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.13 Unpersuasive Argument: Arguing Against References Individually
In response to applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.38 Arguments Are Moot Because of New Ground(s) of Rejection
Applicant’s arguments with respect to claim [1] have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Examiner Note:
The examiner must, however, address any arguments presented by the applicant which are still relevant to any references being applied.
¶ 7.38.01 Arguments Persuasive, Previous Rejection/Objection Withdrawn
Applicant’s arguments, see [1], filed [2], with respect to [3] have been fully considered and are persuasive. The [4] of [5] has been withdrawn.
Examiner Note:
1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous rejection/objection.
2. In bracket 3, insert claim number, figure number, the specification, the abstract, etc.
3. In bracket 4, insert rejection or objection.
4. In bracket 5, insert claim number, figure number, the specification, the abstract, etc.
¶ 7.38.02 Arguments Persuasive, New Ground(s) of Rejection
Applicant’s arguments, see [1], filed [2], with respect to the rejection(s) of claim(s) [3] under [4] have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of [5].
Examiner Note:
1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous rejection.
2. In bracket 3, insert the claim number(s).
3. In bracket 4, insert the statutory basis for the previous rejection.
4. In bracket 5, insert the new ground(s) of rejection, e.g., different interpretation of the previously applied reference, newly found prior art reference(s), and provide an explanation of the rejection.
¶ 7.39 Action Is Final
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).
2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
¶ 7.39.01 Final Rejection, Options for Applicant, Pro Se
This action is a final rejection and is intended to close the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited either to an appeal to the Patent Trial and Appeal Board or to an amendment complying with the requirements set forth below.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee of $[1].
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If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing a good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b), the application will become abandoned.
Examiner Note:
The form paragraph must be preceded by any one of form paragraphs 7.39, 7.40, 7.40.01, 7.41, 7.42.03.fti, or 7.42.09.
¶ 7.40 Action Is Final, Necessitated by Amendment
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).
2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
¶ 7.40.01 Action Is Final, Necessitated by IDS With Fee
Applicant’s submission of an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) on [1] prompted the new ground(s) of rejection presented in this Office action.Accordingly, THISACTION IS MADE FINAL. See MPEP § 609.04(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should not be used and a final rejection is improper where there is another new ground of rejection introduced by the examiner which was not necessitated by amendment to the claims.
2. In bracket 1, insert the filing date of the information disclosure statement containing the identification of the item of information used in the new ground of rejection.
¶ 7.40.02.aia Action Is Final, Necessitated by Invoking the Joint Research Agreement Prior Art Exclusion Under 35 U.S.C. 102(b)(2)(C)
Applicant’s submission of the requirements for the joint research agreement prior art exclusion under 35 U.S.C. 102(b)(2)(C) on [1] prompted the new double patenting rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 2156. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph should not be used, and a final rejection is improper, where there is another new ground of rejection introduced by the examiner which was not necessitated by amendment to the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).
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3. In bracket 1, insert the filing date of the submission of the requirements for the joint research agreement prior art exclusion as defined under 35 U.S.C. 102(c).
¶ 7.40.02.fti Action Is Final, Necessitated by Invoking the Joint Research Agreement Prior Art Exclusion Under Pre-AIA 35 U.S.C. 103(c)
Applicant’s submission of the requirements for the joint research agreement prior art exclusion under pre-AIA 35 U.S.C. 103(c) on [1] prompted the new double patenting rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.02(l)(3). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should not be used and a final rejection is improper where there is another new ground of rejection introduced by the examiner which was not necessitated by amendment to the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17.
2. In bracket 1, insert the filing date of the submission of the requirements for the joint research agreement prior art exclusion under pre-AIA 35 U.S.C. 103(c).
¶ 7.41 Action Is Final, First Action
This is a [1] of applicant’s earlier Application No. [2]. All claims are drawn to the same invention claimed in the earlier application and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the
statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. In bracket 1, insert either --continuation-- or --substitute--, as appropriate.
2. If an amendment was refused entry in the parent case on the grounds that it raised new issues or new matter, this form paragraph cannot be used. See MPEP § 706.07(b).
3. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP-1 or 2 months).
4. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
¶ 7.41.01.fti Transitional After Final Practice, First Submission (37 CFR 1.129(a))
This application is subject to the provisions of Public Law 103-465, effective June 8, 1995. Accordingly, since this application has been pending for at least two years as of June 8, 1995, taking into account any reference to an earlier-filed application under 35 U.S.C. 120, 121 or 365(c), applicant, under 37 CFR 1.129(a), is entitled to have a first submission entered and considered on the merits if, prior to abandonment, the submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 41.37. Upon the timely filing of a first submission and the appropriate fee of $[1] for a [2] entity under 37 CFR 1.17(r), the finality of the previous Office action will be withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant will be construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). In view of 35 U.S.C. 132, no amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application.
If applicant has filed multiple proposed amendments which, when entered, would conflict with one another, specific instructions for entry or non-entry of each such amendment should be provided upon payment of any fee under 37 CFR 1.17(r).
Examiner Note:
1. This form paragraph may follow any of form paragraphs 7.39 - 7.41 in any application filed prior to June 9, 1995, which has been pending for at least two years as of June 8, 1995, taking into account any reference under 35 U.S.C. 120, 121 or 365(c) to a previously filed application and no previous fee has been paid under 37 CFR 1.17(r).
2. This form paragraph should NOT be used in a design or reissue application, or in a reexamination proceeding.
3. In bracket 1, insert the current fee for a large or small entity, as appropriate.
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4. In bracket 2, insert --small-- or --large--, depending on the current status of the application.
¶ 7.41.02.fti Transitional After Final Practice, Second Submission (37 CFR 1.129(a))
Since the fee set forth in 37 CFR 1.17(r) for a first submission subsequent to a final rejection has been previously paid, applicant, under 37 CFR 1.129(a), is entitled to have a second submission entered and considered on the merits if, prior to abandonment, the second submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 41.37. Upon the timely filing of a second submission and the appropriate fee of $[1] for a [2] entity under 37 CFR 1.17(r), the finality of the previous Office action will be withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant will be construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). In view of 35 U.S.C. 132, no amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application.
Examiner Note:
1. This form paragraph is to follow any of form paragraphs 7.39 - 7.41 in any application filed prior to June 9, 1995, which has been pending for at least two years as of June 8, 1995, taking into account any reference under 35 U.S.C. 120, 121 or 365(c) to a previously filed application and a first submission fee has been previously paid under 37 CFR 1.17(r).
2. This form paragraph should NOT be used in a design or reissue application or in a reexamination proceeding.
3. In bracket 1, insert the current fee for a large or small entity, as appropriate.
4. In bracket 2, insert --small-- or --large--, depending on the current status of the application.
5. If the fee set forth in 37 CFR 1.17(r) has been twice paid, the provisions of 37 CFR 1.129(a) are no longer available.
¶ 7.41.03 Action Is Final, First Action Following Submission Under 37 CFR 1.53(d), Continued Prosecution Application (CPA) in a Design Application
All claims are drawn to the same invention claimed in the parent application prior to the filing of this Continued Prosecution Application under 37 CFR 1.53(d) and could have been finally rejected on the grounds and art of record in the next Office action. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing under 37 CFR 1.53(d). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire
on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph is for a first action final rejection in a Continued Prosecution Application filed under 37 CFR 1.53(d) (design applications only).
2. This form paragraph must be preceded by one of form paragraphs 2.30 or 2.35, as appropriate.
¶ 7.42 Withdrawal of Finality of Last Office Action
Applicant’s request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.
¶ 7.42.01.fti Withdrawal of Finality of Last Office Action - Transitional Application Under 37 CFR 1.129(a)
Since this application is eligible for the transitional procedure of 37 CFR 1.129(a), and the fee set forth in 37 CFR 1.17(r) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.129(a). Applicant’s [1] submission after final filed on [2] has been entered.
Examiner Note:
Insert --first-- or --second-- in bracket 1.
¶ 7.42.02.fti Nonresponsive Submission Filed Under 37 CFR 1.129(a)
The timely submission under 37 CFR 1.129(a) filed on [1] is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of TWO MONTHS from the mailing date of this letter to submit a complete reply. This shortened statutory period supersedes the time period set in the prior Office action. This time period may be extended pursuant to 37 CFR 1.136(a). If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant is construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). The appeal stands dismissed.
Examiner Note:
The reasons why the examiner considers the submission not to be fully responsive must be set forth in bracket 2.
¶ 7.42.03.fti Action Is Final, First Action Following Submission Under 37 CFR 1.129(a) Filed Prior to June 8, 2005
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR
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1.129(a) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.129(a). Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the submission under 37 CFR 1.129(a). See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
Also use form paragraph 7.41.02.fti if this is a final rejection following a first submission under 37 CFR 1.129(a).
¶ 7.42.031.fti Action Is Final, Action Following Submission Under 37 CFR 1.129(a) Filed On or After June 8, 2005
Under the final action practice for Office actions following a submission under 37 CFR 1.129(a) filed on or after June 8, 2005, the next Office action following timely filing of a submission under 37 CFR 1.129(a) will be equivalent to the next Office action following a reply to a non-final Office action. Under existing Office second action final practice, such an Office action on the merits will be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
In this Office action, there is no new ground of rejection that was not necessitated by applicant’s amendment of the claims or based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). Accordingly, THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
Also use form paragraph 7.41.02.fti if this is a final rejection following a first submission under 37 CFR 1.129(a)
¶ 7.42.04 Continued Examination under 37 CFR 1.114 after Final Rejection
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.
Examiner Note:
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a final rejection.
2. In bracket 1, insert the date(s) of receipt of the submission. The submission may be a previously filed amendment(s) after final rejection and/or an amendment accompanying the RCE. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If a reply to the Office action is outstanding the submission must meet the reply requirements of 37 CFR 1.111. Use instead form paragraph 7.42.08 if the submission does not comply with 37 CFR 1.111. Arguments which were previously submitted in a reply after final rejection, which were entered but not found persuasive, may be considered a submission under 37 CFR 1.114 if the arguments are responsive within the meaning of 37 CFR 1.111 to the outstanding Office action. If the last sentence of this form paragraph does not apply (e.g., the submission consists of previously entered arguments), it may be deleted or modified as necessary.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.05 Continued Examination Under 37 CFR 1.114 After Allowance or Quayle Action
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle , 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.
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Examiner Note:
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a notice of allowance (or notice of allowability) or Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
2. In bracket 1 insert the date(s) of receipt of the submission. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
4. If the RCE was filed after the issue fee was paid, a petition under 37 CFR 1.313 to withdraw the application from issue must have been filed and granted.
¶ 7.42.06 Continued Examination Under 37 CFR 1.114 After Appeal But Before A Board Decision
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.
Examiner Note:
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a Notice of Appeal or an appeal brief, but there has not been a decision on the appeal. Note that it is not necessary for an appeal brief to have been filed.
2. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. The submission may consist of arguments in a previously filed appeal brief or reply brief, or an incorporation of such arguments in the transmittal letter or other paper accompanying the RCE.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.07 Continued Examination under 37 CFR 1.114 after Board Decision but Before Further Appeal or Civil Action
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.
Examiner Note:
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was timely filed after a decision by the Patent Trial and Appeal Board but before further appeal or civil action. Generally, the deadline for filing a notice of appeal to the Federal Circuit or for commencing a civil action is sixty-three (63) days after the date of the final Board decision. See MPEP § 1216 and 37 CFR 90.3.
2. A Patent Trial and Appeal Board decision in an application has res judicata effect and is the “law of the case” and is thus controlling in that application and any subsequent, related application. Therefore, a submission containing arguments without either an amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such rejection. See MPEP §§ 706.03(w) and 1214.01.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.08 Request For Continued Examination With Submission Filed Under 37 CFR 1.114 Which is Not Fully Responsive
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on [1]. The submission, however, is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of TWO MONTHS from the mailing date of this letter to submit a complete reply. This shortened statutory period for reply supersedes the time period set in the prior Office action. This time period may be extended pursuant to 37 CFR 1.136(a).
Examiner Note:
1. Use this form paragraph to acknowledge an RCE filed with the fee and a submission where the submission is not fully responsive to the prior Office action. This form paragraph may be used for any RCE filed with a submission which is not fully responsive, i.e., an RCE filed after final rejection, after
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allowance, after an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or after appeal.
2. In bracket 2, identify the reasons why the examiner considers the submission not to be fully responsive.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.08.AE Request for Continued Examination With Submission Filed Under 37 CFR 1.114 Which Is Not Fully Responsive - Application Under Accelerated Examination
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on [1]. The submission, however, is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this letter, to submit a complete reply. This shortened statutory period for reply supersedes the time period set in the prior Office action. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. Use this form paragraph to acknowledge an RCE filed with the fee and a submission where the submission is not fully responsive to the prior Office action. This form paragraph may be used for any RCE filed with a submission which is not fully responsive, i.e., an RCE filed after final rejection, after allowance, after an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or after appeal.
2. In bracket 2, identify the reasons why the examiner considers the submission not to be fully responsive.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
4. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special
status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
5. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.42.09 Action Is Final, First Action Following Request for Continued Examination under 37 CFR 1.114
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
This form paragraph is for a first action final rejection following a Request for Continued Examination filed under 37 CFR 1.114.
¶ 7.42.10 Application On Appeal, Request For Continued Examination Under 37 CFR 1.114 Without Submission/Fee; No Claims Allowed
A request for continued examination under 37 CFR 1.114 was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e) and/or the submission required by 37 CFR 1.114. Since the proceedings as to the rejected claims are considered terminated, and no claim is allowed, the application is abandoned. See MPEP § 1215.01.
Examiner Note:
1. If a request for continued examination was filed after a Notice of Appeal or after an appeal brief, but before a decision on the appeal, and the request lacks the fee set forth in 37 CFR 1.17(e) or a submission or both, use this form paragraph to withdraw the appeal and hold the application abandoned if there are no allowed claims.
2. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed
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under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.11 Application On Appeal, Request For Continued Examination Under 37 CFR 1.114 Without Submission; Claim Allowed
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the submission required by 37 CFR 1.114. Since the proceedings as to the rejected claims are considered terminated, the application will be passed to issue on allowed claim[2] . Claim[3] been canceled. See MPEP § 1215.01.
Examiner Note:
1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or after an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.
2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01.
3. This form paragraph should be used with the mailing of a Notice of Allowability.
4. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.12 Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Submission; Claim Allowed with Formal Matters Outstanding
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) , was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the submission required by 37 CFR 1.114. The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01. Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire TWO MONTHS from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136.
Examiner Note:
1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.
2. In bracket 3, explain the formal matters which must be corrected.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.13 Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Fee; Claim Allowed
A request for continued examination under 37 CFR 1.114, including a submission, was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e). Therefore, the submission has not been entered. See 37 CFR 1.116(c). Since the proceedings as to the rejected claims are considered terminated, the application will be passed to issue on allowed claim[2]. Claim[3] been canceled. See MPEP § 1215.01.
Examiner Note:
1. If a request for continued examination, including the submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required fee, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.
2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01.
3. This form paragraph should be used with the mailing of a Notice of Allowability.
4. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
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¶ 7.42.14 Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Fee; Claim Allowed With Formal Matters Outstanding
A request for continued examination under 37 CFR 1.114, including a submission, was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e). Therefore, the submission has not been entered. See 37 CFR 1.116(c). The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim[2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01. Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire TWO MONTHS from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136.
Examiner Note:
1. If a request for continued examination, including a submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the fee required by 37 CFR 1.17(e), use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.
2. In bracket 3, explain the formal matters that must be corrected.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.15 Continued Prosecution Application Treated as Continued Examination under 37 CFR 1.114
The request for a continued prosecution application (CPA) under 37 CFR 1.53(d) filed on [1] is acknowledged. A CPA may only be filed in a design application filed under 35 U.S.C. chapter 16. See 37 CFR 1.53(d)(1). Since a CPA of this application is not permitted under 37 CFR 1.53(d)(1), the improper request for a CPA is being treated as a request for continued examination of this application under 37 CFR 1.114.
Examiner Note:
1. Use this form paragraph to advise the applicant that a CPA is being treated as an RCE.
2. Also use form paragraph 7.42.04, 7.42.05, 7.42.06, or 7.42.07 as applicable, to acknowledge entry of applicant’s submission if the fee set forth in 37 CFR 1.17(e) has been timely paid.
3. If the fee set forth in 37 CFR 1.17(e) and/or a submission as required by 37 CFR 1.114 is/are missing and the application is not under appeal, a Notice of Improper Request for Continued Examination should be mailed. If the application is under appeal and the fee set forth in 37 CFR 1.17(e) and/or submission is/are
missing, this form paragraph should be followed with one of form paragraphs 7.42.10 - 7.42.14, as applicable.
¶ 7.42.16 After Board Decision But Before Further Appeal Or Civil Action, Request for Continued Examination Under 37 CFR 1.114 Without Submission and/or Fee
A request for continued examination (RCE) under 37 CFR 1.114 was filed in this application on [1] after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. The request, however, lacks the fee required by 37 CFR 1.17(e) and/or the submission required by 37 CFR 1.114. Accordingly, the RCE is improper and any time period running was not tolled by the filing of the improper request.
Examiner Note:
1. This form paragraph should be used with the mailing of a Notice of Allowability or a Notice of Abandonment, as appropriate, if the time for seeking court review has passed without such review being sought, or it should be used on a PTOL-90 if time still remains.
2. This form paragraph should not be used if the application is not a utility application or a plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. In that situation, a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, should be prepared and mailed by the technical support personnel to notify applicant that continued examination does not apply to the application.
3. In general, if a submission was filed with the improper RCE in this situation, it should not be entered. An exception exists for an amendment which obviously places the application in condition for allowance. See MPEP § 1214.07. The examiner should also include a statement as to whether or not any such submission has been entered (e.g., “The submission filed with the improper RCE has not been entered.”).
¶ 7.43 Objection to Claims, Allowable Subject Matter
Claim [1] objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
¶ 7.43.01Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Independent Claim/Dependent Claim
Claim [1] would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in this Office action.
Examiner Note:
This form paragraph is to be used when (1) the noted independent claim(s) or (2) the noted dependent claim(s), which depend from an allowable claim, have been rejected solely on
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the basis of35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and would be allowable if amended to overcome the rejection.
¶ 7.43.02Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Dependent Claim
Claim [1] would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Examiner Note:
This form paragraph is to be used only when the noted dependent claim(s), which depend from a claim that is rejected based on prior art, have been rejected solely on the basis of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and would be allowable if amended as indicated.
¶ 7.43.03 Allowable Subject Matter, Formal Requirements Outstanding
As allowable subject matter has been indicated, applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Examiner Note:
This form paragraph would be appropriate when changes (for example, drawing corrections or corrections to the specification) must be made prior to allowance.
¶ 7.43.04 Suggestion of Allowable Drafted Claim(s), Pro Se
The following claim [1] drafted by the examiner and considered to distinguish patentably over the art of record in this application, [2] presented to applicant for consideration:
[3].
Examiner Note:
1. In bracket 2, insert --is-- or --are--.
2. In bracket 3, insert complete text of suggested claim(s).
¶ 7.44 Claimed Subject Matter Not in Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: [1]
¶ 7.45 Improper Multiple Dependent Claims
Claim [1] objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim [2]. See MPEP §
608.01(n). Accordingly, the claim [3] not been further treated on the merits.
Examiner Note:
1. In bracket 2, insert --should refer to other claims in the alternative only--, and/or, --cannot depend from any other multiple dependent claim--.
2. Use this paragraph rather than 35 U.S.C. 112(e) or 35 U.S.C. 112 (pre-AIA), fifth paragraph.
3. In bracket 3, insert --has-- or --s have--.
¶ 7.46 Preliminary Amendment Unduly Interferes with the Preparation of an Office Action
The preliminary amendment filed on [1] was not entered because entry of the amendment would unduly interfere with the preparation of the Office action. See 37 CFR 1.115(b)(2). The examiner spent a significant amount of time on the preparation of an Office action before the preliminary amendment was received. On the date of receipt of the amendment, the examiner had completed [2].
Furthermore, entry of the preliminary amendment would require significant additional time on the preparation of the Office action. Specifically, entry of the preliminary amendment would require the examiner to [3].
A responsive reply (under 37 CFR 1.111 or 37 CFR 1.113 as appropriate) to this Office action must be timely filed to avoid abandonment.
If this is not a final Office action, applicant may wish to resubmit the amendment along with a responsive reply under 37 CFR 1.111 to ensure proper entry of the amendment.
Examiner Note:
1. In bracket 1, provide the date that the Office received the preliminary amendment (use the date of receipt under 37 CFR 1.6, not the certificate of mailing date under 37 CFR 1.8).
2. In bracket 2, provide an explanation on the state of preparation of the Office action as of the receipt date of the preliminary amendment. For example, where appropriate insert --the claim analysis and the search of prior art of all pending claims-- or --the drafting of the Office action and was waiting for the supervisory patent examiner’s approval--.
3. In bracket 3, provide a brief explanation of how entry of the preliminary amendment would require the examiner to spend significant additional time in the preparation of the Office action. For example, where appropriate insert --conduct prior art search in another classification area that was not previously searched and required-- or --revise the Office action extensively to address the new issues raised and the new claims added in the preliminary amendment--.
¶ 7.48.aia Failure To Present Claims for Interference
Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].
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Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act, and the application also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013, or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
2. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.
3. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.
4. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 102(g)/103(a), the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.
5. This form paragraph must be preceded by form paragraph 7.14.aia, or by form paragraph 7.103.
¶ 7.48.fti Failure To Present Claims for Interference
Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].
Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).
Examiner Note:
1. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.
2. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.
3. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 103(a), the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.
¶ 7.49 Rejection, Disclaimer, Failure To Appeal
An adverse judgment against claim [1] has been entered by the Board. Claim [2] stand(s) finally disposed of for failure to reply to or appeal from the examiner’s rejection of such claim(s) presented for interference within the time for appeal or civil action specified in 37 CFR 90.3. Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently. See 37 CFR 41.127(a)(2).
¶ 7.50 Claims Previously Allowed, Now Rejected, New Art
The indicated allowability of claim [1] is withdrawn in view of the newly discovered reference(s) to [2]. Rejection(s) based on the newly cited reference(s) follow.
Examiner Note:
1. In bracket 2, insert the name(s) of the newly discovered reference.
2. Any action including this form paragraph requires the signature of a Primary Examiner. MPEP § 1004.
¶ 7.51 Quayle Action
This application is in condition for allowance except for the following formal matters: [1].
Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
Examiner Note:
Explain the formal matters which must be corrected in bracket 1.
¶ 7.51.AE Quayle Action - Application Under Accelerated Examination
This application is in condition for allowance except for the following formal matters: [1].
Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
Since this application has been granted special status under the accelerated examination program, a shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months
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from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. Explain the formal matters which must be corrected in bracket 1.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.52 Suspension of Action, Awaiting New Reference
A reference relevant to the examination of this application may soon become available. Ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application.
Examiner Note:
1. Maximum period for suspension is six months.
2. The TC Director must approve all second or subsequent suspensions, see MPEP § 1003.
3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.
¶ 7.53 Suspension of Action, Possible Interference
All claims are allowable. However, due to a potential interference, ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application.
Examiner Note:
1. Maximum period for suspension is six months.
2. The TC Director must approve all second or subsequent suspensions, see MPEP § 1003.
3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.
¶ 7.54 Suspension of Action, Applicant’s Request
Pursuant to applicant’s request filed on [1], action by the Office is suspended on this application under 37 CFR 1.103(a) for a period of [2] months. At the end of this period, applicant is required to notify the examiner and request continuance of prosecution or a further suspension. See MPEP § 709.
Examiner Note:
1. Maximum period for suspension is 6 months.
2. Only the Technology Center Director can grant second or subsequent suspensions. See MPEP § 1003. Such approval must appear on the Office letter.
¶ 7.54.01 Request for Deferral of Examination under 37 CFR 1.103(d), Granted
Applicant’s request filed on [1], for deferral of examination under 37 CFR 1.103(d) in the application has been approved. The examination of the application will be deferred for a period of [2] months.
Examiner Note:
1. In bracket 1, insert the filing date of the request for deferral of examination.
2. In bracket 2, insert the number of months for the deferral.
¶ 7.54.02 Request for Termination of a Suspension of Action, Granted
Applicant’s request filed on [1], for termination of a suspension of action under 37 CFR 1.103, has been approved. The suspension of action has been terminated on the date of mailing this notice.
Examiner Note:
In bracket 1, insert the filing date of the request for termination of the suspension of action.
¶ 7.56 Request for Suspension, Denied, Outstanding Office Action
Applicant’s request filed [1], for suspension of action in this application under 37 CFR 1.103(a), is denied as being improper. Action cannot be suspended in an application awaiting a reply by the applicant. See MPEP § 709.
¶ 7.56.01 Request for Suspension of Action under 37 CFR 1.103, Denied
Applicant’s request filed [1], for suspension of action in this application under 37 CFR 1.103(b) or (c) is denied as being improper. The request was (1) not filed at the time of filing a CPA or RCE, and/or (2) not accompanied by the requisite fee as set forth in 37 CFR 1.17(i). See MPEP § 709.
Examiner Note:
In bracket 1, insert the filing date of the request for suspension of action.
¶ 7.56.02 Request for Deferral of Examination under 37 CFR 1.103(d), Denied
Applicant’s request filed on [1], for deferral of examination under 37 CFR 1.103(d) in the application is denied as being improper. [2]
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See MPEP § 709.
Examiner Note:
1. In bracket 1, insert the filing date of the request for deferral of examination.
2. In bracket 2, insert the reason(s) for denying the request. For example, if appropriate insert --The applicant has not filed a request under 37 CFR 1.213(b) to rescind the previously filed nonpublication request--; --A first Office action has been issued in the application--; or --Applicant has not submitted a request for voluntary publication under 37 CFR 1.221--.
¶ 7.57.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective- Heading
The [1] filed on [2] under 37 CFR 1.131(a) has been considered but is ineffective to overcome the [3] reference.
Examiner Note:
1. In bracket 1, insert either --affidavit-- or --declaration--.
2. This form paragraph must be followed by one or more of form paragraphs 7.58.fti to 7.63.fti or a paragraph setting forth proper basis for the insufficiency, such as failure to establish acts performed in this country, or that the scope of the declaration or affidavit is not commensurate with the scope of the claim(s).
¶ 7.58.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Claiming Same Invention
The [1] reference is a U.S. patent or U.S. patent application publication of a pending or patented application that claims the rejected invention. An affidavit or declaration is inappropriate under 37 CFR 1.131(a) when the reference is claiming interfering subject matter as defined in 37 CFR 41.203(a), see MPEP Chapter 2300. If the reference and this application are not commonly owned, the reference can only be overcome by establishing priority of invention through interference proceedings. See MPEP Chapter 2300 for information on initiating interference proceedings. If the reference and this application are commonly owned, the reference may be disqualified as prior art by an affidavit or declaration under 37 CFR 1.131(c). See MPEP § 718.
Examiner Note:
1. If used to respond to the submission of an affidavit under 37 CFR 1.131(a), this paragraph must be preceded by paragraph 7.57.fti.
2. This form paragraph may be used without form paragraph 7.57.fti when an affidavit has not yet been filed, and the examiner desires to notify applicant that the submission of an affidavit under 37 CFR 1.131(a) would be inappropriate.
¶ 7.59.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Reduction to Practice Before Reference Date
The evidence submitted is insufficient to establish a reduction to practice of the invention in this country or a NAFTA or WTO
member country prior to the effective date of the [1] reference. [2]
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.57.fti.
2. An explanation of the lack of showing of the alleged reduction to practice must be provided in bracket 2.
¶ 7.60.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Reference Is a Statutory Bar
The [1] reference is a statutory bar under pre-AIA 35 U.S.C. 102(b) and thus cannot be overcome by an affidavit or declaration under 37 CFR 1.131(a).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.57.fti.
¶ 7.61.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Conception
The evidence submitted is insufficient to establish a conception of the invention prior to the effective date of the [1] reference. While conception is the mental part of the inventive act, it must be capable of proof, such as by demonstrative evidence or by a complete disclosure to another. Conception is more than a vague idea of how to solve a problem. The requisite means themselves and their interaction must also be comprehended. See Mergenthaler v. Scudder, 1897 C.D. 724, 81 OG 1417 (D.C.
Cir. 1897). [2]
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.57.fti.
2. An explanation of the deficiency in the showing of conception must be presented in bracket 2.
3. If the affidavit additionally fails to establish either diligence or a subsequent reduction to practice, this form paragraph should be followed by form paragraph 7.62.fti and/or 7.63.fti. If either diligence or a reduction to practice is established, a statement to that effect should follow this paragraph.
¶ 7.62.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Diligence Lacking
The evidence submitted is insufficient to establish diligence from a date prior to the date of reduction to practice of the [1] reference to either a constructive reduction to practice or an actual reduction to practice. [2]
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.57.fti.
2. If the affidavit additionally fails to establish conception, this paragraph must also be preceded by form paragraph 7.61.fti.
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If the affidavit establishes conception, a statement to that effect should be added to this paragraph.
3. If the affidavit additionally fails to establish an alleged reduction to practice prior to the application filing date, this paragraph must be followed by form paragraph 7.63.fti. If such an alleged reduction to practice is established, a statement to that effect should be added to this paragraph.
4. An explanation of the reasons for a holding of non-diligence must be provided in bracket 2.
5. See MPEP § 715.07(a) which explains that diligence is not required after reduction to practice.
¶ 7.63.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Actual Reduction to Practice
The evidence submitted is insufficient to establish applicant’s alleged actual reduction to practice of the invention in this country or a NAFTA or WTO member country after the effective date of the [1] reference. [2].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.57.fti.
2. If the alleged reduction to practice is prior to the effective date of the reference, do not use this paragraph. See form paragraph 7.59.fti.
3. If the affidavit additionally fails to establish either conception or diligence, form paragraphs 7.61.fti and/or 7.62.fti should precede this paragraph. If either conception or diligence is established, a statement to that effect should be included after this paragraph.
4. An explanation of the lack of showing of the alleged reduction to practice must be given in bracket 2.
¶ 7.64.fti Affidavit or Declaration Under 37 CFR 1.131(a): Effective To Overcome Reference
The [1] filed on [2] under 37 CFR 1.31(a) is sufficient to overcome the [3] reference.
Examiner Note:
1. In bracket 1, insert either --affidavit-- or --declaration--.
2. In bracket 2, insert the filing date of the affidavit or declaration.
3. In bracket 3, insert the name of the reference.
¶ 7.65 Affidavit or Declaration Under 37 CFR 1.132: Effective To Withdraw Rejection
The [1] under 37 CFR 1.132 filed [2] is sufficient to overcome the rejection of claim [3] based upon [4].
Examiner Note:
1. In bracket 1, insert either --affidavit-- or --declaration--.
2. In bracket 2, insert the filing date of the affidavit or declaration.
3. In bracket 3, insert the affected claim or claims.
4. In bracket 4, indicate the rejection that has been overcome, including the statutory grounds, e.g.: insufficiency of disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; lack of utility under 35 U.S.C. 101; inoperativeness under 35 U.S.C. 101; a specific reference applied under 35 U.S.C. 103; etc. See MPEP § 716.
¶ 7.66 Affidavit or Declaration Under 37 CFR 1.132: Insufficient
The [1] under 37 CFR 1.132 filed [2] is insufficient to overcome the rejection of claim [3] based upon [4] as set forth in the last Office action because:
Examiner Note:
1. In bracket 1, insert either --affidavit-- or --declaration--.
2. In bracket 2, insert the filing date of the affidavit or declaration.
3. In bracket 3, insert the claim or claims affected.
4. In bracket 4, indicate the rejection that has not been overcome, including the statutory grounds, i.e.: insufficiency of disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; lack of utility and/or inoperativeness under 35 U.S.C. 101; a specific reference applied under 35 U.S.C. 103; etc. See MPEP § 716.
5. Following this form paragraph, set forth the reasons for the insufficiency; e.g., categories include: --untimely--; --fails to set forth facts--; --facts presented are not germane to the rejection at issue--;--showing is not commensurate in scope with the claims--; etc. See MPEP § 716. Also include a detailed explanation of the reasons why the affidavit or declaration is insufficient. Any of form paragraphs 7.66.01 - 7.66.05 may be used, as appropriate.
¶ 7.66.01 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient:Affiant Has Never Seen Invention Before
It includes statements which amount to an affirmation that the affiant has never seen the claimed subject matter before. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.66.
2. A full explanation must be provided, if appropriate.
¶ 7.66.02 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Invention Works as Intended
It includes statements which amount to an affirmation that the claimed subject matter functions as it was intended to function.
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This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.66.
2. A full explanation must be provided, if appropriate.
¶ 7.66.03 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Refers Only to Invention, Not to Claims
It refers only to the system described in the above referenced application and not to the individual claims of the application. As such the declaration does not show that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.66.
2. A full explanation must be provided, if appropriate.
¶ 7.66.04 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: No Evidence of Long-Felt Need
It states that the claimed subject matter solved a problem that was long standing in the art. However, there is no showing that others of ordinary skill in the art were working on the problem and if so, for how long. In addition, there is no evidence that if persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem. See MPEP § 716.04.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.66.
2. A full explanation must be provided, if appropriate.
¶ 7.66.05 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Conclusion
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Examiner Note:
This form paragraph should be presented as a conclusion to your explanation of why the affidavit or declaration under 37 CFR 1.132 is insufficient, and it must be preceded by form paragraph 7.66.
¶ 7.67.aia Affidavit or Declaration Under 37 CFR 1.130: Effective to Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)
The [1] under 37 CFR 1.130 [2] filed on [3] is sufficient to overcome the rejection of claim [4] based on [5]. [6]
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. In bracket 1, insert either --affidavit-- or --declaration--.
3. In bracket 2, insert either --(a)-- or --(b)--.
4. In bracket 3, insert the filing date of the affidavit or declaration
5. In bracket 4, insert the affected claim or claims.
6. In bracket 5, insert the specific reference applied under 35 U.S.C. 102 or 103 that the affidavit or declaration has disqualified as prior art.
7. In bracket 6, insert the explanation of how the affidavit/declaration provides evidence of reliance on one of the exception provisions of 35 U.S.C. 102(b)(1) or 102(b)(2).
¶ 7.68.aia Affidavit or Declaration Under 37 CFR 1.130: Ineffective to Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)
The [1] under 37 CFR 1.130 [2] filed [3] is insufficient to overcome the rejection of claim [4] based upon [5] as set forth in the last Office action because [6]:
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia .
2. In bracket 1, insert either --affidavit-- or --declaration--.
3. In bracket 2, insert either --(a)-- or --(b)--.
4. In bracket 3, insert the filing date of the affidavit or declaration.
5. In bracket 4, insert the affected claim or claims.
6. In bracket 5, insert the rejection that has not been overcome, including statutory grounds.
7. In bracket 6, insert the explanation of how the affidavit or declaration fails to provide evidence of reliance on one of the exception provisions of 35 U.S.C. 102(b)(1) or 102(b)(2).
¶ 7.70.AE Updated Accelerated Examination Support Document Required for Claim Amendments Not
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Encompassed by PreviousAccelerated Examination Support Document(s) – Application Under Accelerated Examination
Applicant is reminded that for any amendments to the claims (including any new claim) that is not encompassed by the preexamination search and accelerated examination support documents previously filed, applicant is required to provide updated preexamination search and accelerated examination support documents that encompass the amended or new claims at the time of filing the amendment. Failure to provide such updated preexamination search and accelerated examination support documents at the time of filing the amendment will cause the amendment to be treated as not fully responsive and not to be entered. See MPEP § 708.02(a), subsection VIII.D. for more information.
If the reply is not fully responsive, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. This form paragraph and form paragraph 7.71.AE must be included in every Office action, other than a notice of allowance, in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway Program (pilot and permanent).
¶ 7.71.AE Use Of Proper Document and Fee Codes When Filing A Reply Electronically Via EFS-Web – Application Under Accelerated Examination
Any reply or other papers must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the papers are not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Any reply to this communication filed via EFS-Web must include a document that is filed using the document description of “Accelerated Exam - Transmittal amendment/reply.” Applicant is reminded to use proper indexing for documents to avoid any delay in processing of follow on papers. Currently document indexing is not automated in EFS-Web and applicant must select a particular document description for each attached file. An incorrect document description for a particular file may potentially delay processing of the application. A complete listing of all document codes currently supported in EFS-Web i s a v a i l a b l e a t www.uspto.gov/ebc/portal/efs/efsweb_document_descriptions.xls.
Any payment of fees via EFS-Web must be accompanied by selection of a proper fee code. An improper fee code may potentially delay processing of the application. Instructions on payment of fees via EFS-Web are available at www.uspto.gov/ebc/portal/efs/quick-start.pdf.
Examiner Note:
1. This form paragraph and form paragraph 7.70.AE must be included in every Office action, other than a notice of allowance, in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway Program (pilot and permanent).
¶ 7.81 Correction Letter Re Last Office Action
In response to applicant’s [1] regarding the last Office action, the following corrective action is taken.
The period for reply of [2] MONTHS set in said Office action is restarted to begin with the mailing date of this letter.
Examiner Note:
1. In bracket 1, insert --telephone inquiry of _____-- or --communication dated ______--.
2. In bracket 2, insert new period for reply.
3. This form paragraph must be followed by one or more of form paragraphs 7.82, 7.82.01 or 7.83.
4. Before restarting the period, the SPE should be consulted.
¶ 7.82 Correction of Reference Citation
The reference [1] was not correctly cited in the last Office action. The correct citation is shown on the attached PTO-892.
Examiner Note:
1. Every correction MUST be reflected on a corrected or new PTO-892.
2. This form paragraph must follow form paragraph 7.81.
3. If a copy of the PTO-892 is being provided without correction, use form paragraph 7.83 instead of this form paragraph.
4. Also use form paragraph 7.82.01 if reference copies are being supplied.
¶ 7.82.01 Copy of Reference(s) Furnished
Copies of the following references not previously supplied are enclosed:
Examiner Note:
1. The USPTO ceased mailing paper copies of U.S. patents and U.S. application publications cited in Office Actions in nonprovisional applications beginning in June 2004. See the phase-in schedule of the E-Patent Reference program provided in “USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies,” 1282 OG 109 (May 18, 2004). Therefore, this form
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paragraph should only be used for foreign patent documents, non-patent literature, pending applications that are not stored in the image file wrapper (IFW) system, and other information not previously supplied.
2. The reference copies being supplied must be listed following this form paragraph.
3. This form paragraph must be preceded by form paragraph 7.81 and may also be used with form paragraphs 7.82 or 7.83.
¶ 7.82.03 How To Obtain Copies of U.S. Patents and U.S. Patent Application Publications
In June 2004, the USPTO ceased mailing paper copies of cited U.S. patents and U.S. patent application publications with all Office actions. See “USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies,” 1282 OG 109 (May 18, 2004). Foreign patent documents and non-patent literature will continue to be provided to the applicant on paper.
All U.S. patents and U.S. patent application publications are available free of charge from the USPTO website (www.uspto.gov/patft/index.html), for a fee from the Office of Public Records (http://ebiz1.uspto.gov/oems25p/index.html), and from commercial sources. Copies are also available at the Patent and Trademark Resource Centers (PTRCs). A list of the PTRCs may be found on the USPTO website (www.uspto.gov/products/library/ptdl/locations/index.jsp). Additionally, a simple new feature in the Office’s Private Patent Application Information Retrieval system (PAIR), E-Patent Reference, is available for downloading and printing of U.S. patents and U.S. patent application publications cited in U.S. Office Actions.
STEPS TO USE THE E-PATENT REFERENCE FEATURE
Access to Private PAIR is required to utilize E-Patent Reference. If you do not already have access to Private PAIR, the Office urges practitioners and applicants not represented by a practitioner to: (1) obtain a no-cost USPTO Public Key Infrastructure (PKI) digital certificate; (2) obtain a USPTO customer number; (3) associate all of their pending and new application filings with their customer number; (4) install free software (supplied by the Office) required to access Private PAIR and the E-Patent Reference; and (5) make appropriate arrangements for Internet access.
Instructions for performing the 5 steps:
Step 1: Full instructions for obtaining a PKI digital certificate are available at the Office’s Electronic Business Center (EBC) web page (www.uspto.gov/ebc/downloads.html). Note that a notarized signature will be required to obtain a digital certificate.
Step 2: To get a Customer Number, download and complete the Customer Number Request form, PTO/SB/125, from the USPTO website (www.uspto.gov/web/forms/sb0125.pdf). The completed form can be transmitted by facsimile to the Patent Electronic Business Center at (571) 273-0177, or mailed to the address on the form. If you are a registered attorney or agent, your registration number must be associated with your customer
number. This association is accomplished by adding your registration number to the Customer Number Request form.
Step 3: A description of associating a customer number with the correspondence address of an application is described at the EBC Web page (www.uspto.gov/ebc/registration_pair.html).
Step 4: The software for electronic filing is available for downloading at www.uspto.gov/ebc. Users can also contact the EFS Help Desk at (571) 272-4100 and request a copy of the software on compact disc. Users will also need Adobe Acrobat Reader, which is available through a link from the USPTO website.
Step 5: Internet access will be required which applicants may obtain through a supplier of their own choice. As images of large documents must be downloaded, high-speed Internet access is recommended.
The E-Patent Reference feature is accessed using a button on the Private PAIR screen. Ordinarily all of the cited U.S. patent and U.S. patent application publication references will be available over the Internet using the Office’s new E-Patent Reference feature. The size of the references to be downloaded will be displayed by E-Patent Reference so the download time can be estimated. Applicants and registered practitioners can select to download all of the references or any combination of cited references. Selected references will be downloaded as complete documents in Portable Document Format (PDF). The downloaded documents can be viewed and printed using commercially available software, such asADOBE® READER®. ADOBE® READER® is available free of charge from Adobe S y s t e m s I n c o r p o r a t e d (www.adobe.com/products/acrobat/readermain.html).
Examiner Note:
This form paragraph is recommended for use in Office actions citing U.S. patents or U.S. patent application publications when the applicant is not represented by a registered patent attorney or a registered patent agent.
¶ 7.83 Copy of Office Action Supplied
[1] of the last Office action is enclosed.
Examiner Note:
1. In bracket 1, explain what is enclosed. For example:
a. “A corrected copy”
b. “A complete copy”
c. A specific page or pages, e.g., “Pages 3-5”
d. “A Notice of References Cited, Form PTO-892”
2. This form paragraph should follow form paragraph 7.81 and may follow form paragraphs 7.82 and 7.82.01.
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¶ 7.84 Amendment Is Non-Responsive to Interview
The reply filed on [1] is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the [2] interview. [3] Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).
Examiner Note:
1. In bracket 2, insert the date of the interview.
2. In bracket 3, explain the deficiencies.
¶ 7.84.AE Amendment Is Non-Responsive to Interview – Application Under Accelerated Examination
The reply filed on [1] is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the [2] interview. [3] Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. In bracket 2, insert the date of the interview.
2. In bracket 3, explain the deficiencies.
3. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
4. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.84.01 Paper Is Unsigned
The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide , applicant is given a TIME PERIOD of TWO (2) MONTHS within which to supply the omission or correction
in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).
¶ 7.84.01.AE Paper Is Unsigned – Application Under Accelerated Examination
The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of TWO (2) MONTHS within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. Examiner should first try to contact applicant by telephone and ask for a properly signed reply or ratification of the reply. If attempts to contact applicant are unsuccessful, examiner may use this form paragraph in a letter requiring a properly signed reply or ratification if the reply is to a non-final Office action.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.85 Amendment Under 37 CFR 1.312 Entered
The amendment filed on [1] under 37 CFR 1.312 has been entered.
Examiner Note:
Use this form paragraph both for amendments under 37 CFR 1.312 that do not affect the scope of the claims (may be signed by primary examiner) and for amendments being entered under 37 CFR 1.312 which do affect the scope of the claims (requires signature of supervisory patent examiner). See MPEP § 714.16.
¶ 7.86 Amendment Under 37 CFR 1. 312 Entered in Part
The amendment filed on [1] under 37 CFR 1.312 has been entered-in-part. [2]
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Examiner Note:
When an amendment under 37 CFR 1.312 is proposed containing plural changes, some of which may be acceptable and some not, the acceptable changes should be entered.An indication of which changes have and have not been entered with appropriate explanation should follow in bracket 2.
¶ 7.87 Amendment Under 37 CFR 1.312 Not Entered
The proposed amendment filed on [1] under 37 CFR 1.132 has not been entered. [2]
Examiner Note:
The reasons for non-entry should be specified in bracket 2, for example:
--The amendment changes the scope of the claims.--
¶ 7.90 Abandonment, Failure to Reply
This application is abandoned in view of applicant’s failure to submit a proper reply to the Office action mailed on [1] within the required period for reply.
Examiner Note:
1. A letter of abandonment should not be mailed until after the period for requesting an extension of time under 37 CFR 1.136(a) has expired.
2. In pro se cases see form paragraph 7.98.02.
¶ 7.91 Reply Is Not Fully Responsive, Extension of Time Suggested
The reply filed on [1] is not fully responsive to the prior Office action because: [2]. Since the period for reply set forth in the prior Office action has expired, this application will become abandoned unless applicant corrects the deficiency and obtains an extension of time under 37 CFR 1.136(a).
The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. In no case may an applicant reply outside the SIX (6) MONTH statutory period or obtain an extension for more than FIVE (5) MONTHS beyond the date for reply set forth in an Office action. A fully responsive reply must be timely filed to avoid abandonment of this application.
Examiner Note:
1. In bracket 2, set forth why the examiner considers there to be a failure to take “complete and proper action” within the statutory period.
2. If the reply appears to be a bona fide attempt to respond with an inadvertent omission, do not use this form paragraph; instead use form paragraph 7.95.
¶ 7.95 Bona Fide, Non-Responsive Amendments
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).
Examiner Note:
This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.
¶ 7.95.AE Bona Fide, Non-Responsive Amendments – Application Under Accelerated Examination
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
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¶ 7.95.01 Lack of Arguments in Response
Applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.95.
2. This form paragraph is intended primarily for use in pro se applications.
¶ 7.96 Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. [1]
Examiner Note:
When such prior art is cited, its relevance should be explained in bracket 1 in accordance with MPEP § 707.05.
¶ 7.97 Claims Allowed
Claim [1] allowed.
¶ 7.98 Reply Is Late, Extension of Time Suggested
Applicant’s reply was received in the Office on [1], which is after the expiration of the period for reply set in the last Office action mailed on [2]. This application will become abandoned unless applicant obtains an extension of time to reply to the last Office action under 37 CFR 1.136(a).
Examiner Note:
Since the provisions of 37 CFR 1.136(a) do not apply to reexamination proceedings or to litigation related reissue applications, do not use this form paragraph in these cases.
¶ 7.98.01 Reply Is Late, Extension of Time Suggested, Pro Se
Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the above noted Office action. The application will become abandoned unless applicant obtains an extension of the period for reply set in the above noted Office action. An extension of the reply period may be obtained by filing a petition under 37 CFR 1.136(a). The petition must be accompanied by the appropriate fee as set forth in 37 CFR 1.17(a) (copy of current fee schedule attached). The date on which the reply, the petition, and the fee have been filed is the date of the reply and also the date for purposes of determining the period of extension and the corresponding amount of the fee due. The expiration of the time period is determined by the amount of the fee paid. Applicant is advised that in no case can any extension carry the date for reply to an Office action beyond the maximum period of SIX MONTHS
set by statute. Additionally, extensions may not be granted under 37 CFR 1.136(a) for more than FIVE MONTHS beyond the time period set in an Office action.
Examiner Note:
Enclose a photocopy of current fee schedule with action so that applicant can determine the required fee.
¶ 7.98.02 Reply Is Late, Petition To Revive Suggested, Pro Se
Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the last Office Action. Since no time remains for applicant to obtain an extension of the period for reply by filing a petition under 37 CFR 1.136(a), this application is abandoned. Applicant is advised that the abandonment of this application may only be overcome by filing a petition to revive under 37 CFR 1.137. A petition to revive may be appropriate if applicant’s failure to reply was unintentional, as set forth below.
Failure to reply was unintentional.
A petition to revive an abandoned application on the grounds that the failure to reply was unintentional (37 CFR 1.137) must be accompanied by: (1) the required reply (which has been filed); (2) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137 was unintentional; (3) any terminal disclaimer required pursuant to 37 CFR 1.137(d); and (4) the $[3] petition fee as set forth in 37 CFR 1.17(m). No consideration to the substance of a petition will be given until this fee is received. The Director may require additional information where there is a question whether the delay was unintentional.
The required items and fees must be submitted promptly under a cover letter entitled “Petition to Revive.”
Further correspondence with respect to this matter should be addressed as follows:
By mail:
Mail Stop Petition Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
By FAX:
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571-273-8300 Attn: Office of Petitions
Telephone inquiries with respect to this matter should be directed to the Office of Petitions Staff at (571) 272-3282. For more detailed information, see MPEP § 711.03(c).
¶ 7.100 Name And Number of Examiner To Be Contacted
Any inquiry concerning this communication should be directed to [1] at telephone number [2].
Examiner Note:
1. This form paragraph, form paragraph 7.101, or form paragraph 7.102 should be used at the conclusion of all actions.
2. In bracket 1, insert the name of the examiner designated to be contacted first regarding inquiries about the Office action. This could be either the non-signatory examiner preparing the action or the signatory examiner.
3. In bracket 2, insert the individual area code and phone number of the examiner to be contacted.
¶ 7.101 Telephone Inquiry Contacts- Non 5/4/9 Schedule
Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [6], can be reached on [7]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner Note:
1. In bracket 1, insert your name.
2. In bracket 2, insert your individual area code and phone number.
3. In bracket 3, insert the days that you work every week, e.g. “Monday-Thursday” for an examiner off every Friday.
4. In brackets 4 and 5, insert your normal duty hours, e.g. “6:30 AM - 5:00 PM.”
5. In bracket 6, insert your SPE’s name.
6. In bracket 7, insert your SPE’s area code and phone number.
¶ 7.102 Telephone Inquiry Contacts- 5/4/9 Schedule
Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5]. The examiner can also be reached on alternate [6].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [7], can be reached on [8]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner Note:
1. In bracket 1, insert your name.
2. In bracket 2, insert your individual area code and phone number.
3. In bracket 3, insert the days that you work every week, e.g. “Monday-Thursday” for an examiner off on alternate Fridays.
4. In brackets 4 and 5, insert your normal duty hours, e.g. “6:30 AM - 4:00 PM.”
5. In bracket 6, insert the day in each pay-period that is your compressed day off, e.g. “Fridays” for an examiner on a 5/4/9 work schedule with the first Friday off.
6. In bracket 7, insert your SPE’s name.
7. In bracket 8, insert your SPE’s area code and phone number.
¶ 7.103 Statute Cited in Prior Office Action
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
¶ 7.104.aia Requirement for Information, Public Use or Sale or Other Public Availability
An issue of public use, on sale activity, or other public availability has been raised in this application. In order for the examiner to properly consider patentability of the claimed invention under 35 U.S.C. 102(a)(1), additional information regarding this issue is required as follows: [1]
Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.
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Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
3. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. See MPEP § 2133.03.
4. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having a shortened statutory period (SSP), in which case the period for reply will apply also to the requirement.
5. If sufficient evidence already exists to establish a prima facie case of public use, sale, or other public availability use form paragraph 7.16.aia to make a rejection under 35 U.S.C. 102(a)(1). See MPEP § 2133.03.
¶ 7.104.fti Requirement for Information, Public Use or Sale
An issue of public use or on sale activity has been raised in this application. In order for the examiner to properly consider patentability of the claimed invention under pre-AIA 35 U.S.C. 102(b), additional information regarding this issue is required as follows: [1]
Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 –7.126 as appropriate.
2. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. See MPEP § 2133.03.
3. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having an SSP, in which case the SSP will apply also to the requirement.
4. If sufficient evidence already exists to establish a prima facie case of public use or on sale, use form paragraph 7.16.fti to make a rejection under pre-AIA 35 U.S.C. 102(b). See MPEP § 2133.03.
¶ 7.104.02 Requirement for Information, Rescission of Statement Under 37 CFR 1.55 or 1.78
Applicant submitted a rescission of the prior-filed 1.55/1.78 statement which indicated that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013. In order for the examiner to properly consider patentability of the claimed
invention, additional information regarding this issue is required as follows: [1]
Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This form paragraph should only be used in an application filed on or after March 16, 2013, where the applicant rescinded a statement pursuant to 37 CFR 1.55 or 1.78 and clarification on the reasoning why pre-AIA law applies is needed.
3. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability.
4. In bracket 1, insert the information that is sought from the applicant.
5. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having a shortened statutory period (SSP), in which case the period for reply will apply also to the requirement.
¶ 7.105 Requirement for Information, Heading
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
Examiner Note:
1. This form paragraph should appear at the beginning of any requirement for information under 37 CFR 1.105, and should be followed by an explanation of why the required information is necessary for examination. Form paragraph 7.104.aia, 7.104.fti, 7.104.02 or 7.106 – 7.121 may be used as appropriate.
2. The requirement for information should conclude with form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.105.01 Stipulations of Facts Known to Applicant
In response to this requirement, please agree or disagree to the stipulation of each of the following assertions of facts:
[1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 –7.126 as appropriate.
2. In bracket 1, specify each factual assertion, in the form of a separate, numbered sentence, that the applicant is to either agree or disagree to so stipulate. It is suggested that at the end of each assertion, the parenthetical phrase “(agree/disagree)”
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be appended to facilitate a reply by way of applicant marking up a copy of the requested stipulations.
¶ 7.105.02 Interrogatories of Facts Known to Applicant
In response to this requirement, please provide answers to each of the following interrogatories eliciting factual information:
[1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 –7.126 as appropriate.
2. In bracket 1, specify each interrogatory question, in the form of a separate, numbered sentence, that the applicant is to answer. The scope of each query must be clearly set forth and the content of the expected reply is to be characterized as factual information.
¶ 7.106 Domain of Search
The information is required to extend the domain of search for prior art. Limited amounts of art related to the claimed subject matter are available within the Office, and are generally found in class [1] and subclasses [2], which describe [3]. A broader range of art to search is necessary to establish the level of knowledge of those of ordinary skill in the claimed subject matter art of [4].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 4, insert a description of the art claimed but not found in the classification system.
¶ 7.107 Level of Skill and Knowledge in the Art
The information is required to document the level of skill and knowledge in the art of [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.108 Background Description
The information is required to complete the background description in the disclosure by documenting [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.109 Products and Services Embodying Invention
The information is required to identify products and services embodying the disclosed subject matter of [1] and identify the properties of similar products and services found in the prior art.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.110 Art Suggested as Relevant
The information is required to enter in the record the art suggested by the applicant as relevant to this examination in [1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 1, describe where in the application file applicant suggests that the art is relevant, e.g., the specification and the relevant page thereof, or a paper received in the Office on a specified date and the relevant page thereof.
¶ 7.111 List of Keywords
In response to this requirement, please provide a list of keywords that are particularly helpful in locating publications related to the disclosed art of [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.112 Citations for Electronically Searchable Databases or Other Indexed Collections
In response to this requirement, please provide a list of citations to electronically searchable databases or other indexed collections containing publications that document the knowledge within the disclosed art of [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.113 Copy of Art Referred to in the Disclosure, But Not Submitted
In response to this requirement, please provide a copy of each of the following items of art referred to in the [1].
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Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 1, describe where in the application file applicant refers to art that has not been previously submitted, e.g., the specification and the relevant page thereof, or a paper received in the Office on a specified date and the relevant page thereof.
¶ 7.114 Copies of Publications Authored by Inventor(s)
In response to this requirement, please provide copies of each publication which any of the applicants authored or co-authored and which describe the disclosed subject matter of [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.115 Art Relied Upon for Description of Prior Art
In response to this requirement, please provide the title, citation and copy of each publication that is a source used for the description of the prior art in the disclosure. For each publication, please provide a concise explanation of that publication’s contribution to the description of the prior art.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.
¶ 7.116 Art Relied Upon for Development of Invention
In response to this requirement, please provide the title, citation and copy of each publication that any of the applicants relied upon to develop the disclosed subject matter that describes the applicant’s invention, particularly as to developing [1]. For each publication, please provide a concise explanation of the reliance placed on that publication in the development of the disclosed subject matter.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.
3. In bracket 1, insert a description of the most important inventive elements.
¶ 7.117 Art Relied Upon for Drafting Claimed Subject Matter
In response to this requirement, please provide the title, citation and copy of each publication that was relied upon to draft the claimed subject matter. For each publication, please provide a concise explanation of the reliance placed on that publication in distinguishing the claimed subject matter from the prior art.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.
¶ 7.118 Results of Applicant’s Prior Art Search
In response to this requirement, please state whether any search of prior art was performed. If a search was performed, please state the citation for each prior art collection searched. If any art retrieved from the search was considered material to demonstrating the knowledge of a person having ordinary skill in the art to the disclosed [1], please provide the citation for each piece of art considered and a copy of the art.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 1, describe the subject matter for which art is required.
¶ 7.119 Names of Products or Services Incorporating Claimed Invention
In response to this requirement, please provide the names of any products or services that have incorporated the claimed subject matter.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.120 Names of Products or Services Incorporating Disclosed Prior Art
In response to this requirement, please provide the names of any products or services that have incorporated the disclosed prior art [1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
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2. In bracket 1, specify the attributes of the prior art that most closely approximate the claimed subject matter to narrow the focus of the reply.
¶ 7.121 Details of Improvement Over the Prior Art
In response to this requirement, please state the specific improvements of the subject matter in claims [1] over the disclosed prior art and indicate the specific elements in the claimed subject matter that provide those improvements. For those claims expressed as means or steps plus function, please provide the specific page and line numbers within the disclosure which describe the claimed structure and acts.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.122 Submission of Only Pertinent Pages Where Document is Large
In responding to those requirements that require copies of documents, where the document is a bound text or a single article over 50 pages, the requirement may be met by providing copies of those pages that provide the particular subject matter indicated in the requirement, or where such subject matter is not indicated, the subject matter found in applicant’s disclosure.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. Use this form paragraph where the scope of the requirement for information specifically includes copies of publications.
¶ 7.123 Waiver of Fee and Statement Requirements for Certain Information Disclosures
The fee and certification requirements of 37 CFR 1.97 are waived for those documents submitted in reply to this requirement. This waiver extends only to those documents within the scope of the requirement under 37 CFR 1.105 that are included in the applicant’s first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR 1.105 are subject to the fee and certification requirements of 37 CFR 1.97 where appropriate.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraph 7.124 and either form paragraph 7.125 or 7.126 as appropriate.
2. Use this form paragraph where the scope of the requirement for information specifically includes citations to and/or copies of publications.
¶ 7.124 Contents of Good Faith Reply
The applicant is reminded that the reply to this requirement must be made with candor and good faith under 37 CFR 1.56. Where the applicant does not have or cannot readily obtain an item of required information, a statement that the item is unknown or cannot be readily obtained may be accepted as a complete reply to the requirement for that item.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraph 7.125 or 7.126 as appropriate.
2. This form paragraph should appear in the conclusion of any requirement for information.
¶ 7.125 Conclusion of Requirement That Accompanies Office Action
This requirement is an attachment of the enclosed Office action. A complete reply to the enclosed Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should appear at the conclusion of any requirement for information that accompanies an Office action. If the requirement for information is mailed without any other Office action, use form paragraph 7.126 instead.
2. Form paragraph 7.127 should appear at the end of any Office action that includes an attached requirement for information.
¶ 7.126 Conclusion Of Requirement Mailed Without Any Other Office Action
This requirement is subject to the provisions of 37 CFR 1.134, 1.135 and 1.136 and has a shortened statutory period of [1] months. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should appear at the conclusion of any requirement for information mailed without any other Office action. If the requirement for information is mailed with an Office action, use form paragraph 7.125 instead.
2. The period for reply is ordinarily set for 2 months.
¶ 7.126.AE Conclusion of Requirement Mailed Without Any Other Office Action – Application Under Accelerated Examination
This requirement is subject to the provisions of 37 CFR 1.134, 1.135 and 1.136 and has a shortened statutory period of TWO (2) MONTHS. This application has been granted special status under the accelerated examination program. Extensions of time
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period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. Any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should appear at the conclusion of any requirement for information mailed without any other Office action. If the requirement for information is mailed with an Office action, use form paragraph 7.125 instead.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.127 Conclusion of Office Action That Includes Requirement
This Office action has an attached requirement for information under 37 CFR 1.105. A complete reply to this Office action must include a complete reply to the attached requirement for information. The time period for reply to the attached requirement coincides with the time period for reply to this Office action.
Examiner Note:
This form paragraph should appear at the end of any Office action that includes an attached requirement for information.
¶ 7.147 Supplemental Reply Not Approved for Entry
The supplemental reply filed on [1] was not entered because supplemental replies are not entered as a matter of right except as provided in 37 CFR 1.111(a)(2)(ii). [2].
Examiner Note:
1. Use this form paragraph to notify applicant that the supplemental reply filed on or after October 21, 2004 is not approved for entry.
2. Do not use this form paragraph if the supplemental reply has been entered. Use the Office Action Summary (PTOL-326) or the Notice of Allowability (PTOL-37), whichever is appropriate, to indicate that the Office action is responsive to the reply filed in compliance with 37 CFR 1.111(b) and the supplemental reply.
3. Do not use this form paragraph if the supplemental reply was filed within the period during which action is suspended by the Office under 37 CFR 1.103(a) or (c). Such supplemental reply must be entered. If the supplemental reply filed during the suspended period is not in compliance with 37 CFR 1.121, a notice of non-compliant amendment (PTOL-324) should be mailed to the applicant.
4. In bracket 1, provide the date that the Office received the supplemental reply (use the date of receipt under 37 CFR 1.6, not the certificate of mailing date under 37 CFR 1.8).
5. In bracket 2, insert a reason for non-entry as noted in 37 CFR 1.111(a)(2)(i). For example, “The supplemental reply is clearly not limited to placement of the application in condition for allowance.”
¶ 7.169 Advisory Action, Proposed Rejection of Claims, Before Appeal Brief
For purposes of appeal, the proposed amendment(s) will be entered and the proposed rejection(s) detailed below will be included in the Examiner’s Answer. To be complete, such rejection(s) must be addressed in any brief on appeal.
Upon entry of the amendment(s) for purposes of appeal:
Claim(s) [1] would be rejected for the reasons set forth in [2] of the final Office action mailed [3].
Examiner Note:
1. In bracket 1, identify all the new or amended claim(s) that would be grouped together in a single rejection.
2. In bracket 2, identify the rejection by referring to either the paragraph number or the statement of the rejection (e.g., the rejection under 35 U.S.C. 103 based upon A in view of B) in the final Office action under which the claims would be rejected on appeal.
3. Repeat this form paragraph for each group of claims subject to the same rejection(s).
4. Use this form paragraph if item 7 of the Advisory Action form, PTOL-303 (Rev. 9-04 or later) has been checked to indicate that the proposed amendment(s) will be entered upon appeal.
¶ 7.204 Petition Under 37 CFR 1.59(b) To Expunge Information: Decision Held in Abeyance
In re Application of [1]: Appl. No.: [2]: RESPONSE TO PETITION Filed: [3] : UNDER 37 CFR 1.59 For: [4]:
This is a response to the petition under 37 CFR 1.59(b), filed [5], to expunge information from the above identified application.
The decision on the petition will be held in abeyance until allowance of the application or mailing of an Ex parte Quayle action or a Notice of Abandonment, at which time the petition will be decided.
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Petitioner requests that a document entitled [6], filed [7], be expunged from the record. Petitioner states either: (A) that the information contains trade secret material, proprietary material and/or material that is subject to a protective order which has not been made public; or (B) that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted, and the information has not otherwise been made public. The petition fee set forth in 37 CFR 1.17(g) has been paid.
The decision on the petition is held in abeyance because prosecution on the merits is not closed. Accordingly, it is not appropriate to make a final determination of whether or not the material requested to be expunged is “material,” with “materiality” being defined as any information which the examiner considers as being important to a determination of patentability of the claims. Thus, the decision on the petition to expunge must be held in abeyance at this time.
During prosecution on the merits, the examiner will determine whether or not the identified document is considered to be “material.” If the information is not considered by the examiner to be material, the information will be removed from the official file.
Examiner Note:
1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement.
2. The petition should be sent to the Office of Petitions for decision if:
(a) the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment present on the filing date of the application) cannot be expunged under 37 CFR 1.59. Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or
(b) the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).
3. This decision is printed with the USPTO letterhead.
4. In bracket 6, clearly identify the document which petitioner requests to expunge. For example, refer to the author and title of the document.
5. Mail with PTO-90C cover sheet.
¶ 7.205 Petition Under 37 CFR 1.59(b) To Expunge Information Granted
In re Application of [1]: Appl. No.: [2]: DECISION ON PETITION Filed: [3]: UNDER 37 CFR 1.59 For: [4]:
This is a decision on the petition under 37 CFR 1.59(b), filed [5], to expunge information from the above identified application.
The petition is granted.
Petitioner requests that a document entitled [6], filed [7], be expunged from the record. Petitioner states that either (A) that the information contains trade secret material, proprietary material and/or material that is subject to a protective order which has not been made public; or (B) that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted, and the information has not otherwise been made public. The petition fee set forth in 37 CFR 1.17(g) has been paid.
The information in question has been determined by the undersigned to not be material to the examination of the instant application.
Applicant is required to retain the expunged material(s) for the life of any patent which issues on the above-identified application.
The expunged material has been removed from the official file.
Enclosure: [8]
Examiner Note:
1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Furthermore, a petition to expunge may not be granted unless the application has been allowed or is abandoned, or an Ex Parte Quayle action has been mailed.
2. The petition should be sent to the Office of Petitions for decision if:
(a) the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment present on the filing date of the application) cannot be expunged under 37 CFR 1.59. Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or
(b) the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).
3. This decision is printed with the USPTO letterhead.
4. In brackets 6 and 8, clearly identify the expunged document. For example, refer to the author and title of the document.
5. Mail with PTO-90C cover sheet.
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¶ 7.206 Petition Under 37 CFR 1.59(b) To Expunge Information Dismissed
In re Application of [1]: Appl. No.: [2]: DECISION ON PETITION Filed: [3]: UNDER 37 CFR 1.59 For: [4]:
This is a decision on the petition under 37 CFR 1.59(b), filed [5], to expunge information from the above identified application.
The petition is dismissed.
Petitioner requests that a document entitled [6], filed [7], be expunged from the record.
“Materiality” is defined as any information which the examiner considers as being important to a determination of patentability of the claims.
The petition is deficient because: [8]
Examiner Note:
1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. However, the petition should not be granted until the application has been allowed or abandoned, or an Ex parte Quayle action has been mailed.
2. The petition should be sent to the Office of Petitions for decision if:
(a) the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment present on the filing date of the application) cannot be expunged under 37 CFR 1.59. Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or
(b) the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).
3. This decision is printed with the USPTO letterhead.
4. In bracket 6, clearly identify the document which petitioner requests to expunge. For example, refer to the author and title of the document.
5. This form paragraph must be followed with one or more of form paragraphs 7.207 through 7.213.
¶ 7.207 Petition To Expunge, Conclusion, Lacks Fee
the petition was not accompanied by the required fee under 37 CFR1.17(g).
¶ 7.208 Petition to Expunge, Conclusion, Material to Determination of Patentability
the information that petitioner requests to expunge is considered to be material to the determination of patentability because [1].
Examiner Note:
In bracket 1, provide an explanation of basis for conclusion that information is material to the determination of patentability.
¶ 7.209 Petition To Expunge, Conclusion, Information Made Public
the information has been made public. [1]
Examiner Note:
In bracket 1, provide explanation of basis for conclusion that information has been made public.
¶ 7.210 Petition to Expunge, Conclusion, No Commitment to Retain Information
the petition does not contain a commitment on the part of petitioner to retain the information to be expunged for the period of any patent with regard to which such information is submitted.
¶ 7.211 Petition to Expunge, Conclusion, No Clear Statement That Information is Trade Secret, Proprietary, and/or Subject to Protective Order, or that Submission Was Unintentional
the petition does not contain a clear statement that the information requested to be expunged is either: (1) a trade secret, proprietary, and/or subject to a protective order; or (2) was unintentionally submitted and failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted. [1]
Examiner Note:
In bracket 1, indicate whether any such statement was provided and, if so, explain why such statement is not clear.
¶ 7.212 Petition to Expunge, Conclusion, No Clear Identification of Information to be Expunged
the petition does not clearly identify the information requested to be expunged. [1]
Examiner Note:
In bracket 1, explain why the identification of the information requested to be expunged is not clear.
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¶ 7.213 Petition to Expunge, Conclusion, No Statement That Petition Is Submitted By, or on Behalf of, Party in Interest Who Originally Submitted the Information
the petition does not contain a statement that the petition is being submitted by, or on behalf of, the party in interest who originally submitted the information.
¶ 7.214 Papers Not Returned, Pro Se
Papers in an application that has received a filing date pursuant to 37 CFR 1.53 ordinarily will not be returned. If applicant has not preserved copies of the papers, the Office will furnish copies at applicant’s expense. See 37 CFR 1.19 for a list of the current fees. See MPEP § 724.05 for information pertaining to petitions to expunge information.
800 Form Paragraphs 8.01 - 8.50
¶ 8.01 Election of Species; Species Claim(s) Present
This application contains claims directed to the following patentably distinct species [1]. The species are independent or distinct because [2].
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, [3] generic.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4].
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the
species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Examiner Note:
1. In bracket 1, identify the species and/or grouping(s) of patentably indistinct species from which an election is to be made. The species may be identified as the species of figures 1, 2, and 3, for example, or the species of examples I, II, and III, respectively. Where the election requirement identifies a grouping of patentably indistinct species, applicant should not be required to elect a specific species within that grouping.
2. In bracket 2 insert the reason(s) why the species or grouping(s) of species are independent or distinct. See MPEP § 806.04(b), § 806.04(f) and § 806.04(h). For example, insert --the claims to the different species recite the mutually exclusive characteristics of such species--, and provide a description of the mutually exclusive characteristics of each species or grouping of species.
3. In bracket 3 insert the appropriate generic claim information.
4. In bracket 4 insert the applicable reason(s) why there is a search and/or examination burden:
--the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification
--the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter
--the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
5. This form paragraph does not need to be followed by form paragraph 8.21.
¶ 8.02 Requiring an Election of Species; No Species Claim Present
Claim(s) [1] is/are generic to the following disclosed patentably distinct species: [2]. The species are independent or distinct because [3]. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4]
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Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Examiner Note:
1. This form paragraph should be used for the election of species requirement described in MPEP § 803.02 (Markush group) and MPEP § 808.01(a) where only generic claims are presented.
2. In bracket 1, insert the claim number(s).
3. In bracket 2, clearly identify the species and/or grouping(s) of patentably indistinct species from which an election is to be made. The species may be identified as the species of figures 1, 2, and 3, for example, or the species of examples I, II, and III, respectively. Where the election requirement identifies a grouping of patentably indistinct species, applicant should not be required to elect a specific species within that grouping.
4. In bracket 3 insert the reason(s) why the species or groupings of species as disclosed are independent or distinct. See MPEP § 806.04(b), § 806.04(f) and MPEP § 806.04(h). For example, insert --as disclosed the different species have mutually exclusive characteristics for each identified species--, and provide a description of the mutually exclusive characteristics of each species or grouping of species.
5. In bracket 4 insert the applicable reason(s) why there is a search and/or examination burden:
--the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification
--the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter
--the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
6. This form paragraph does not need to be followed by form paragraph 8.21.
¶ 8.03 In Condition for Allowance, Non-elected Claims Withdrawn with Traverse
This application is in condition for allowance except for the presence of claim [1] directed to an invention non-elected with traverse in the reply filed on [2]. Applicant is given TWO MONTHS from the date of this letter to cancel the noted claims or take other appropriate action (37 CFR 1.144). Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner’s Amendment and pass the case to issue. Extensions of time under 37 CFR 1.136(a) will not be permitted since this application will be passed to issue.
The prosecution of this case is closed except for consideration of the above matter.
¶ 8.04 Election by Original Presentation
Newly submitted claim [1] directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: [2]
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
¶ 8.05 Claims Stand Withdrawn With Traverse
Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected [2], there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on [3].
Examiner Note:
In bracket 2, insert --invention-- or --species--.
¶ 8.06 Claims Stand Withdrawn Without Traverse
Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected [2], there being
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no allowable generic or linking claim. Election was made without traverse in the reply filed on [3].
Examiner Note:
In bracket 2, insert --invention--, or --species--.
¶ 8.07 Ready for Allowance, Non-elected Claims Withdrawn Without Traverse
This application is in condition for allowance except for the presence of claim [1] directed to [2] nonelected without traverse. Accordingly, claim [3] been canceled.
Examiner Note:
In bracket 2, insert --an invention--, --inventions--, --a species--, or --species--.
¶ 8.08 Restriction, Two Groupings
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claim [1], drawn to [2], classified in [3].
II. Claim [4], drawn to [5], classified [6].
Examiner Note:
In brackets 3 and 6, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.
¶ 8.09 Restriction, 3rd Grouping
III. Claim [1], drawn to [2], classified in [3].
Examiner Note:
In bracket 3, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.
¶ 8.10 Restriction, 4th Grouping
IV. Claim [1], drawn to [2], classified in [3].
Examiner Note:
In bracket 3, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.
¶ 8.11 Restriction, Additional Groupings
[1]. Claim [2], drawn to [3], classified in [4].
Examiner Note:
1. In bracket 1, insert the appropriate roman numeral, e.g., --V--, --VI--, etc.
2. In bracket 4, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.
¶ 8.12 Restriction, Linking Claims
Claim [1] link(s) inventions [2] and [3]. The restriction requirement [4] the linked inventions is subject to the nonallowance of the linking claim(s), claim [5]. Upon the indication of allowability of the linking claim(s), the restriction requirement as to the linked inventions shall be withdrawn and any claim(s) depending from or otherwise requiring all the limitations of the allowable linking claim(s) will be rejoined and fully examined for patentability in accordance with 37 CFR 1.104. Claims that require all the limitations of an allowable linking claim will be entered as a matter of right if the amendment is presented prior to final rejection or allowance, whichever is earlier. Amendments submitted after final rejection are governed by 37 CFR 1.116; amendments submitted after allowance are governed by 37 CFR 1.312.
Applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, the allowable linking claim, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. This form paragraph must be included in any restriction requirement with at least one linking claim present.
2. In bracket 4, insert either --between-- or --among--.
3. In bracket 5, insert the claim number(s) of the linking claims.
4. See related form paragraphs 8.45, 8.46 and 8.47.
¶ 8.13 Distinctness (Heading)
The inventions are independent or distinct, each from the other because:
Examiner Note:
This form paragraph should be followed by one of form paragraphs 8.14-8.20.02 to show independence or distinctness.
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¶ 8.14 Intermediate-Final Product
Inventions [1] and [2] are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as [3] and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Examiner Note:
1. This form paragraph is to be used when claims are presented to both an intermediate and final product (MPEP § 806.05(j)).
2. Conclude restriction requirement with form paragraph 8.21.
¶ 8.14.01 Distinct Products or Distinct Processes
Inventions [1] and [2] are directed to related [3]. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed [4]. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Examiner Note:
1. This form paragraph may be used when claims are presented to two or more related product inventions, or two or more related process inventions, wherein the inventions as claimed are mutually exclusive, i.e., there is no product (or process) that would infringe both of the identified inventions. Use form paragraph 8.15 to restrict between combination(s) and subcombination(s).
2. If a generic claim or claim linking multiple product inventions or multiple process inventions is present, see MPEP § 809 - § 809.03.
3. In bracket 3, insert --products -- or --processes--.
4. In bracket 4, explain why the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect.
5. Conclude restriction requirement with form paragraph 8.21.
¶ 8.15 Combination-Subcombination
Inventions [1] and [2] are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because [3]. The subcombination has separate utility such as [4].
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Examiner Note:
1. This form paragraph is to be used when claims are presented to both combination(s) and subcombination(s) (MPEP § 806.05(c)).
2. In bracket 3, specify the limitations of the claimed subcombination that are not required by the claimed combination, or the evidence that supports the conclusion that the combination does not rely upon the specific details of the subcombination for patentability. See MPEP § 806.05(c), subsection II and § 806.05(d).
3. In bracket 4, suggest utility other than used in the combination.
4. Conclude restriction requirement with form paragraph 8.21.
¶ 8.16 Subcombinations, Usable Together
Inventions [1] and [2] are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case subcombination [3] has separate utility such as [4]. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Examiner Note:
1. This form paragraph is to be used when claims are presented to subcombinations usable together (MPEP § 806.05(d)).
2. In bracket 3, insert the appropriate group number or identify the subcombination.
3. In bracket 4, suggest utility other than with the other subcombination.
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4. Conclude restriction requirement with form paragraph 8.21.
¶ 8.17 Process and Apparatus
Inventions [1] and [2] are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another materially different process. (MPEP § 806.05(e)). In this case [3].
Examiner Note:
1. This form paragraph is to be used when claims are presented to both a process and apparatus for its practice (MPEP § 806.05(e)).
2. In bracket 3, use one or more of the following reasons:
(a) --the process as claimed can be practiced by another materially different apparatus such as......--,
(b) --the process as claimed can be practiced by hand--,
(c) --the apparatus as claimed can be used to practice another materially different process such as......--.
3. A process can be practiced by hand if it can be performed without using any apparatus.
4. Conclude restriction requirement with form paragraph 8.21.
5. All restriction requirements between a process and an apparatus (or product) for practicing the process should be followed by form paragraph 8.21.04 to notify the applicant that if an apparatus claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable apparatus may be rejoined.
¶ 8.18 Product and Process of Making
Inventions [1] and [2] are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another materially different product or (2) that the product as claimed can be made by another materially different process (MPEP § 806.05(f)). In the instant case [3].
Examiner Note:
1. This form paragraph is to be used when claims are presented to both a product and the process of making the product (MPEP § 806.05(f)).
2. In bracket 3, use one or more of the following reasons:
(a) --the process as claimed can be used to make a materially different product such as......--,
(b) --the product as claimed can be made by a materially different process such as......--.
3. Conclude the basis for the restriction requirement with form paragraph 8.21.
4. All restriction requirements between a product and a process of making the product should be followed by form
paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable product may be rejoined.
¶ 8.19 Apparatus and Product Made
Inventions [1] and [2] are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another materially different apparatus (MPEP § 806.05(g)). In this case [3].
Examiner Note:
1. This form paragraph is to be used when claims are presented to both the apparatus and product made (MPEP § 806.05(g)).
2. In bracket 3, use one or more of the following reasons:
(a) --the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make a different product such as......--,
(b) --the product can be made by a materially different apparatus such as......--.
3. Conclude restriction requirement with form paragraph 8.21.
¶ 8.20 Product and Process of Using
Inventions [1] and [2] are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case [3].
Examiner Note:
1. This form paragraph is to be used when claims are presented to both the product and process of using the product (MPEP § 806.05(h). If claims to a process specially adapted for (i.e., not patentably distinct from) making the product are also presented such process of making claims should be grouped with the product invention. See MPEP § 806.05(i).
2. In bracket 3, use one or more of the following reasons:
(a) --the process as claimed can be practiced with another materially different product such as......--,
(b) --the product as claimed can be used in a materially different process such as......--.
3. Conclude the basis for the restriction requirement with form paragraph 8.21.
4. All restriction requirements between a product and a process of using the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim
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is found allowable, process claims that depend from or otherwise require all the limitations of the patentable product may be rejoined.
¶ 8.20.02 Unrelated Inventions
Inventions [1] and [2] are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together, and they have different designs, modes of operation, and effects. (MPEP § 802.01 and MPEP § 806.06). In the instant case, the different inventions [3] .
Examiner Note:
1. This form paragraph is to be used only when claims are presented to unrelated inventions, e. g., a necktie and a locomotive bearing not disclosed as capable of use together.
2. In bracket 3, insert reasons for concluding that the inventions are unrelated.
3. This form paragraph must be followed by form paragraph 8.21.
¶ 8.20.03 Unrelated Product and Process Inventions
Inventions [1] and [2] are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06. In the instant case, [3] .
Examiner Note:
1. In bracket 3, insert reasons for concluding that the inventions are unrelated.
2. This form paragraph must be followed by form paragraph 8.21.
¶ 8.21 To Establish Burden AND Requirement for Election and Means for Traversal for all Restrictions, other than an Election of Species
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
[1].
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be
considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Examiner Note:
1. THIS FORM PARAGRAPH MUST BE ADDED TO ALL RESTRICTION REQUIREMENTS other than those containing only election of species, with or without an action on the merits. This form paragraph only needs to be used once, after all restriction requirements are set out.
2. In bracket 1 insert the applicable reason(s) why there is a search and/or examination burden:
--the inventions have acquired a separate status in the art in view of their different classification
--the inventions have acquired a separate status in the art due to their recognized divergent subject matter
--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
¶ 8.21.04 Notice of Potential Rejoinder of Process Claims
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further,
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note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Examiner Note:
This form paragraph should appear at the end of any requirement for restriction between a process and a product/apparatus for practicing the process (see form paragraph 8.17), a product/apparatus and a process of making the product/apparatus (see form paragraph 8.18) or between a product/apparatus and a process of using the product/apparatus (see form paragraph 8.20). See MPEP § 821.04 for rejoinder practice.
¶ 8.23 Requirement, When Elected by Telephone
During a telephone conversation with [1] on [2] a provisional election was made [3] traverse to prosecute the invention of [4], claim [5]. Affirmation of this election must be made by applicant in replying to this Office action. Claim [6] withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Examiner Note:
1. In bracket 3, insert --with-- or --without--, whichever is applicable.
2. In bracket 4, insert either the elected group or species.
3. An action on the merits of the claims to the elected invention should follow.
¶ 8.23.01 Requirement, No Election by Telephone
A telephone call was made to [1] on [2] to request an oral election to the above restriction requirement, but did not result in an election being made.
Examiner Note:
1. In bracket 1, insert the name of the applicant or attorney or agent contacted.
2. In bracket 2, insert the date(s) of the telephone contact(s).
3. This form paragraph should be used in all instances where a telephone election was attempted and the applicant’s representative did not or would not make an election.
4. This form paragraph should not be used if no contact was made with applicant or applicant’s representative.
¶ 8.23.02 Joint Inventors, Correction of Inventorship
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Examiner Note:
This form paragraph must be included in all restriction requirements for applications having joint inventors.
¶ 8.25 Answer to Arguments With Traverse
Applicant’s election with traverse of [1] in the reply filed on [2] is acknowledged. The traversal is on the ground(s) that [3]. This is not found persuasive because [4].
The requirement is still deemed proper and is therefore made FINAL.
Examiner Note:
1. In bracket 1, insert the invention elected.
2. In bracket 3, insert in summary form, the ground(s) on which traversal is based.
3. In bracket 4, insert the reasons why the traversal was not found to be persuasive.
¶ 8.25.01 Election Without Traverse
Applicant’s election without traverse of [1] in the reply filed on [2] is acknowledged.
¶ 8.25.02 Election Without Traverse Based on Incomplete Reply
Applicant’s election of [1] in the reply filed on [2] is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
¶ 8.26 Canceled Elected Claims, Non-Responsive
The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive (MPEP § 821.03). The remaining claims are not readable on the elected invention because [2].
Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a TIME PERIOD of TWO MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD UNDER 37 CFR 1.136(a) ARE AVAILABLE.
Examiner Note:
This form paragraph should not be used for an application filed on or after August 25, 2006 that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d). Form paragraph 8.26.AE should be used instead. See MPEP § 708.02, subsection IX.
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¶ 8.26.AE Canceled Elected Claims, Non-Responsive – Application Under Accelerated Examination
The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive (MPEP § 821.03). The remaining claims are not readable on the elected invention because [2].
Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a TIME PERIOD of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of time under 37 CFR 1.136(a) are available. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 8.27.aia Different Inventors, Common Assignee, Same Invention, Examined under First Inventor To File (FITF) Provisions of the AIA
Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. Under 35 U.S.C. 101, more than one patent may not be issued on the same invention.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). The applicant should amend or cancel claims such that the applications no longer contain claims directed to the same invention.
Examiner Note:
1. Form paragraph 7.03.aia must be included in any Office action that contains this paragraph.
2. In bracket 3, insert the U.S. patent number or the copending application number.
3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.aia.
4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.
5. If the commonly assigned application or patent has an earlier effective filing date in accordance with 35 U.S.C. 100(i), a rejection under 35 U.S.C. 102(a)(2) may also be made using form paragraph 7.15.01.aia or 7.15.02.aia.
¶ 8.27.fti Different Inventors, Common Assignee, Same Invention, Examined Under Pre-AIA (First to Invent) Provisions
Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. The issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) of this single invention must be resolved.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application having common ownership (see MPEP Chapter 2300). Either the applicant must amend or cancel the claims directed to the same invention, or the assignee must state which entity is the prior inventor of the commonly claimed subject matter. A terminal disclaimer has no effect in this situation since the basis for refusing more than one patent is priority of invention under pre-AIA 35 U.S.C. 102(f) or (g) and not an extension of monopoly.
Failure to comply with this requirement will result in a holding of abandonment of this application.
Examiner Note:
1. Form paragraph 7.03.fti must be included in any Office action that contains this paragraph.
2. In bracket 3, insert the U.S. patent number or the copending application number.
3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.fti.
4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.
5. If the commonly assigned application or patent has an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) may also be made using form paragraph 7.15.01.fti or 7.15.02.fti.
¶ 8.28.aia Different Inventors, CommonAssignee, Inventions Not Patentably Distinct, No Evidence of Common Ownership as of the Effective Filing Date of the Claimed Invention,
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Examined Under First Inventor to File (FITF) Provisions of the AIA
Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].
Examiner Note:
1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but it has not been established that they were commonly owned or deemed to have been commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention. See 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c).
2. A rejection under 35 U.S.C. 102(a)(2)/103 using form paragraph 7.21.aia, 7.21.01.aia or 7.21.02.aia also should be made, as appropriate.
3. In bracket 3, insert the number of the patent or application that includes claims patentably indistinct from those in the present application.
4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37.
5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.
6. Form paragraph 8.28.01.aia MUST follow this paragraph.
¶ 8.28.fti Different Inventors, Common Assignee, Inventions Not Patentably Distinct, No Evidence of Common Ownership at Time of Invention, Examined Under Pre-AIA (First To Invent) Provisions
Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].
Examiner Note:
1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but there is no indication that they were commonly assigned at the time the invention was made.
2. A rejection under pre-AIA 35 U.S.C. 102(e)/103(a) using form paragraph 7.21.fti, 7.21.01.fti or 7.21.02.fti also should be made, as appropriate. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
3. In bracket 3, insert the number of the reference patent or application.
4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37.
5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.
6. Form paragraph 8.28.01.fti MUST follow this paragraph.
¶ 8.28.01.aia Advisory Information Relating to Form Paragraph 8.28.aia
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned [1], discussed above, would be prior art to the noted claims under 35 U.S.C. 102(a)(2) if the patentably indistinct inventions were not commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Examiner Note:
This form paragraph should follow form paragraph 8.28.aia and should only be used ONCE in an Office action.
¶ 8.28.01.fti Advisory Information Relating to Form Paragraph 8.28.fti
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP Chapter 2300). Commonly assigned [1], discussed above, may form the basis for a rejection of the noted claims under pre-AIA 35 U.S.C. 102 or 103(a) if the commonly assigned case qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) and the patentably indistinct inventions were not commonly owned at the time the claimed invention in this application was made. In order for the examiner to resolve this issue the assignee can, under pre-AIA 35 U.S.C. 103(c) and 37 CFR 1.78(g), either show that the patentably indistinct inventions were commonly owned at the time the claimed invention in this application was made, or name the prior inventor of the subject matter at issue.
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A showing that the inventions were commonly owned at the time the claimed invention in this application was made will preclude a rejection under pre-AIA 35 U.S.C. 103(a) based upon the commonly assigned application that qualifies as a reference under pre-AIA 35 U.S.C. 102(e), (f) or (g). Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Examiner Note:
This form paragraph should follow form paragraph 8.28.fti and should only be used ONCE in an Office action.
¶ 8.29 Patentably Indistinct Claims, CopendingApplications
Claim [1] of this application is patentably indistinct from claim [2] of Application No. [3]. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
¶ 8.30 35 U.S.C. 101, Statutory Basis for Double Patenting “Heading” Only
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Examiner Note:
The above form paragraph must be used as a heading for all subsequent double patenting rejections of the statutory (same invention) type using either of form paragraphs 8.31 or 8.32.
¶ 8.31 Rejection, 35 U.S.C. 101, Double Patenting
Claim [1] is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of prior U.S. Patent No. [3]. This is a statutory double patenting rejection.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 8.30 and is used only for double patenting rejections of the same
invention claimed in an earlier patent; that is, the “scope” of the inventions claimed is identical.
2. If the claims directed to the same invention are in another copending application, do not use this form paragraph. A provisional double patenting rejection should be made using form paragraph 8.32.
3. Do not use this form paragraph for nonstatutory-type double patenting rejections. If nonstatutory type, use appropriate form paragraphs 8.33 to 8.39.
4. This form paragraph may be used where the patent and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but name at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) for applications examined under pre-AIA (first to invent) law, or
f. claim patentably indistinct inventions and the claimed invention and the patent were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
5. In bracket 3, insert the number of the patent.
6. For applications being examined under pre-AIA (first to invent) law: If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.
7. If evidence is of record to indicate that the patent is prior art under either pre-AIA 35 U.S.C. 102(f) or (g), a rejection should also be made using form paragraphs 7.15.fti and/or 7.19.fti, if applicable, in addition to this double patenting rejection.
8. For applications being examined under pre-AIA (first to invent) law: If the patent is to a different inventive entity from the application and the effective U.S. filing date of the patent antedates the effective filing date of the application, a rejection under pre-AIA 35 U.S.C. 102(e) should additionally be made using form paragraph 7.15.02.fti.
9. For applications being examined under the first inventor to file (FITF) provisions of the AIA: If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the application no longer contains claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) should also be made if appropriate.
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¶ 8.32 Provisional Rejection, 35 U.S.C. 101, Double Patenting
Claim [1] provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of copending Application No. [3] (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 8.30 and is used only for double patenting rejections of the same invention claimed in another copending application; that is, the scope of the claimed inventions is identical.
2. If the claims directed to the same invention are in an issued patent, do not use this paragraph. See form paragraph 8.31.
3. Do not use this paragraph for nonstatutory-type double patenting rejections. See form paragraphs 8.33 to 8.39.
4. This form paragraph may be used where the reference application and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but name at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), for applications examined under pre-AIA (first to invent) law, or
f. claim patentably indistinct inventions and the claimed invention and the reference application were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
5. Form paragraph 8.28.fti or 8.28.aia, as appropriate, should also be used.
6. In bracket 3, insert the number of the reference application.
7. A provisional double patenting rejection should also be made in the reference application.
8. For applications being examined under pre-AIA (first to invent) law: If the reference application is by a different inventive entity and is commonly assigned, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.
9. If evidence is also of record to show that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection should also be made in the reference application using form paragraphs 7.15.fti and/or 7.19.fti, if applicable, in addition to this provisional double patenting rejection.
10. For applications being examined under pre-AIA (first to invent) law: If the applications do not have the same inventive entity and effective U.S. filing date, a provisional pre-AIA 35 U.S.C. 102(e) rejection should additionally be made in the later-filed application using form paragraph 7.15.01.fti. If the earlier-filed application has been published, use form paragraph 7.15.02.fti instead.
11. For applications being examined under first inventor to file (FITF) provisions of the AIA: If the reference application is to a different inventive entity and is commonly assigned with the instant application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the applications no longer contain claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) should also be made if appropriate.
¶ 8.33 Basis for Nonstatutory Double Patenting, “Heading” Only
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/ patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal D i s c l a i m e r s , r e f e r t o
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www.uspto.gov/patents/process/file/efs/guidance/ eTD-info-I.jsp.
Examiner Note:
This form paragraph is to be used as a heading before a nonstatutory double patenting rejection using any of form paragraphs 8.34 - 8.39. Although nonstatutory double patenting is sometimes called obviousness-type double patenting (“ODP”), an obviousness analysis is required only if the examined application claim(s) is not anticipated by the reference claim(s).
¶ 8.34 Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)
Claim [1] rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of U.S. Patent No. [3]. Although the claims at issue are not identical, they are not patentably distinct from each other because [4].
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
2. This form paragraph is used for nonstatutory double patenting rejections based upon a patent.
3. If the nonstatutory double patenting rejection is based upon another application, do not use this form paragraph. A provisional double patenting rejection should be made using form paragraph 8.33 and either form paragraph 8.35 or 8.37.
4. This form paragraph may be used where the patent and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but name at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103, for applications examined under pre-AIA (first to invent) law, or
f. claim patentably indistinct inventions and the claimed invention and the patent were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
5. In bracket 3, insert the number of the patent.
6. In bracket 4, provide appropriate explanation for anticipation or rationale for obviousness of the claims being rejected over the claims of the cited patent.
7. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the patent is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
b. the patent has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
8. For applications being examined under pre-AIA (first to invent) law: If the patent is to a different inventive entity and has an earlier effective U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
9. For applications being examined under the first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
¶ 8.35 Provisional Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)
Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because [4].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
2. This form paragraph should be used when the patentably indistinct claims are in another copending application.
3. If the patentably indistinct claims are in a patent, do not use this form paragraph. Use form paragraphs 8.33 and 8.34.
4. This form paragraph may be used where the reference application and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but name at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research
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agreement under pre-AIA 35 U.S.C. 103(c), for applications examined under pre-AIA (first to invent) law, or
f. claim patentably indistinct inventions and the claimed invention and the reference application were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
5. If the reference application is currently commonly assigned but the file does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).
6. In bracket 3, insert the number of the reference application.
7. A provisional nonstatutory double patenting rejection should also be made in the reference application.
8. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the reference application is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
b. the reference application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
9. For applications being examined under pre-AIA (first to invent) law: If the applications have different inventive entities and different U.S. filing dates, and the disclosure of the earlier-filed application may be used to support a rejection of the later-filed application, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) in the later-filed application. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
10. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.
11. For applications being examined under the first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
12. In bracket 4, provide appropriate explanation for anticipation or rationale for obviousness of the claims being rejected over the claims of the cited application.
¶ 8.36 Rejection, Nonstatutory Double Patenting - With Secondary Reference(s)
Claim [1] rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim [2] of U.S. Patent No. [3] in view of [4]. [5]
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
2. This form paragraph is used for nonstatutory double patenting rejections where the primary reference is a patent that includes claims patentably indistinct from those in the application under examination.
3. If the nonstatutory double patenting rejection is based on another application, do not use this form paragraph. A provisional nonstatutory double patenting rejection should be made using form paragraphs 8.33 and either 8.35 or 8.37.
4. This form paragraph may be used where the patentably indistinct invention is claimed in a patent where the patent and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but have at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), for applications examined under pre-AIA (first to invent) law, or
f. claim patentably indistinct inventions and the claimed invention and the patent were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
5. In bracket 3, insert the number of the primary reference patent.
6. In bracket 4, insert the secondary reference.
7. In bracket 5, insert an explanation of the obviousness analysis.
8. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the primary reference patent is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
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b. the primary reference patent has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
9. For applications being examined under pre-AIA (first to invent) law: If the primary reference patent issued to a different inventive entity and has an earlier effective U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
10. For applications being examined under first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
¶ 8.37 Provisional Rejection, Nonstatutory Double Patenting - With Secondary Reference(s)
Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] in view of [4]. [5]
This is a provisional nonstatutory double patenting rejection.
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
2. This form paragraph is used for nonstatutory double patenting rejections requiring an obviousness analysis where the primary reference is a copending application.
3. If the patentably indistinct claims are in a patent, do not use this form paragraph, use form paragraph 8.36.
4. This form paragraph may be used where the patentably indistinct claims are in a copending application where the copending application and the application under examination:
a. name the same inventive entity, or
b. name different inventive entities but are commonly assigned, or
c. are not commonly assigned but name at least one joint inventor in common, or
d. are filed by a common applicant (35 U.S.C. 118), or
e. claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c), for applications examined under pre-AIA (first to invent) law, or
f. claim patentably indistinct inventions and the claimed invention and the primary reference application were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications
examined under the first inventor to file (FITF) provisions of the AIA.
5. If the application under examination and primary reference application are currently commonly assigned but the application under examination does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to also resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).
6. For applications being examined under first inventor to file (FITF) provisions of the AIA: If the primary reference application is to a different inventive entity and is commonly assigned with the application under examination, form paragraph 8.28.aia should additionally be used if there is no evidence of common ownership as of the effective filing date of the invention claimed in the examined application. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
7. In bracket 3, insert the number of the primary reference application.
8. In bracket 4, insert the secondary reference.
9. In bracket 5, insert an explanation of the obviousness analysis.
10. A provisional nonstatutory double patenting rejection should also be made in the primary reference application.
11. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the primary reference application is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti) ; and
b. the primary reference application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
12. For applications being examined under pre-AIA (first to invent) law: If the disclosure of one application may be used to support a rejection of the other and the applications have different inventive entities and different U.S. filing dates, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) in the application with the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the primary reference application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
13. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.
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¶ 8.38 Double Patenting - Nonstatutory (Based Solely on Improper Timewise Extension of Patent Rights) With a Patent
Claim [1] rejected on the ground of nonstatutory double patenting over claim [2] of U.S. Patent No. [3] since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: [4]
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
2. This form paragraph should only be used where approval from the TC Director to make a nonstatutory double patenting rejection based on In re Schneller has been obtained.
3. Use this form paragraph only when the subject matter of the claim(s) is fully disclosed in, and covered by at least one claim of, an issued U.S. Patent which is commonly owned or where there is at least one joint inventor in common or a common applicant (35 U.S.C. 118).
4. In bracket 3, insert the number of the patent.
5. In bracket 4, insert a description of the subject matter being claimed which is covered in the patent.
6. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
a. evidence indicates that the patent is also prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
b. the patent has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
7. For applications being examined under pre-AIA (first to invent) law: If the patent is to another inventive entity and has an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
8. For applications being examined under first inventor to file (FITF) provisions of the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
¶ 8.39 Double Patenting - Nonstatutory (Based Solely on Improper Timewise Extension of Patent Rights) With Another Application
Claim [1] provisionally rejected on the ground of nonstatutory double patenting over claim [2] of copending Application No. [3]. This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.
The subject matter claimed in the instant application is fully disclosed in the referenced copending application and would be covered by any patent granted on that copending application since the referenced copending application and the instant application are claiming common subject matter, as follows: [4]
Furthermore, there is no apparent reason why applicant would be prevented from presenting claims corresponding to those of the instant application in the other copending application. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).
See also MPEP § 804.
Examiner Note:
1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
2. This form paragraph should only be used where approval from the TC Director to make a nonstatutory double patenting rejection based on In re Schneller has been obtained.
3. Use this form paragraph only when the subject matter of the claim(s) is fully disclosed in, and covered by at least one claim of, another copending application (reference application) which is commonly owned, or where there is at least one joint inventor in common or a common applicant (35 U.S.C. 118).
4. In bracket 3, insert the number of the reference application.
5. In bracket 4, insert a description of the subject matter being claimed which is covered in the reference application.
6. If the reference application is currently commonly assigned but the prosecution file of the application under examination does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g).
7. For applications being examined under first inventor to file (FITF) provisions of the AIA: If the reference application is to a different inventive entity and is commonly assigned with the application under examination, form paragraph 8.28.aia should additionally be used if there is no evidence of common ownership as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
8. A provisional double patenting rejection should also be made in the reference application.
9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
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a. evidence indicates that the reference application is prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
b. the reference application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).
10. For applications being examined under pre-AIA (first to invent) law: If the disclosure of one application may be used to support a rejection of the other and the applications have different inventive entities and different U.S. filing dates, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e)/103(a) in the application with the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the reference application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
11. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.
¶ 8.41 Transitional Restriction or Election of Species Requirement – pre-GATT Filing
This application is subject to the transitional restriction provisions of Public Law 103-465, which became effective on June 8, 1995, because:
1. the application was filed on or before June 8, 1995, and has an effective U.S. filing date of June 8, 1992, or earlier;
2. a requirement for restriction was not made in the present or a parent application prior to April 8, 1995; and
3. the examiner was not prevented from making a requirement for restriction in the present or a parent application prior to April 8, 1995, due to actions by the applicant.
The transitional restriction provisions permit applicant to have more than one independent and distinct invention examined in the same application by paying a fee for each invention in excess of one.
Final rules concerning the transition restriction provisions were published in the Federal Register at 60 FR 20195 (April 25, 1995) and in the Official Gazette at 1174 OG 15 (May 2, 1995). The final rules at 37 CFR 1.17(s) include the fee amount required to be paid for each additional invention as set forth in the following requirement for restriction. See the current fee schedule for the proper amount of the fee.
Applicant must either: (1) elect the invention or inventions to be searched and examined and pay the fee set forth in 37 CFR 1.17(s) for each independent and distinct invention in excess of one which applicant elects; or (2) file a petition under 37 CFR 1.129(b) traversing the requirement.
Examiner Note:
1. This form paragraph should be used in all restriction or election of species requirements made in applications subject to the transition restriction provisions set forth in 37 CFR 1.129(b). The procedure is NOT applicable to any design or reissue application.
¶ 8.42 Allowable Product, Rejoinder of at Least One Process Claim, Less Than All Claims
Claim [1] directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b), claim [2], directed to the process of making or using the allowable product, previously withdrawn from consideration as a result of a restriction requirement, [3] hereby rejoined and fully examined for patentability under 37 CFR 1.104. Claim [4], directed to the invention(s) of [5] require all the limitations of an allowable product claim, and [6] NOT been rejoined.
Because a claimed invention previously withdrawn from consideration under 37 CFR 1.142 has been rejoined, the restriction requirement [7] groups [8] as set forth in the Office action mailed on [9] is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. If ALL previously withdrawn process claims are being rejoined, then form paragraph 8.43 should be used instead of this form paragraph. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined. See MPEP § 821.04(b).
2. In bracket 1, insert the claim number(s) of the allowable product claims followed by either -- is-- or -- are--.
3. In bracket 2, insert the claim number(s) of ALL the rejoined process claims.
4. In bracket 3, insert either --is-- or --are--.
5. In bracket 4, insert the number(s) of the claims NOT being rejoined followed by either -- is-- or -- are--.
6. In bracket 5, insert the group(s) or subject matter of the invention(s) to which the claims NOT being rejoined are directed, followed by either --, do not all-- or --, does not--.
7. In bracket 6, insert --has-- or --have--.
8. In bracket 7, insert either -- among -- or -- between--.
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§ 800FORM PARAGRAPHS CONSOLIDATED
9. In bracket 8, insert group numbers of the elected product and rejoined process.
¶ 8.43 Allowable Product, Rejoinder of All Previously Withdrawn Process Claims
Claim [1] directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b), claim [2] , directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, [3] hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on [4] is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. If LESS THAN ALL previously withdrawn claims are being rejoined, then form paragraph 8.42 should be used instead of this form paragraph. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined. See MPEP § 821.04(b).
2. In bracket 1, insert the claim number(s) of the allowable product claim(s) followed by either -- is-- or -- are--.
3. In bracket 2, insert the claim number(s) of the process claim(s) previously withdrawn from consideration.
4. In bracket 3, insert either --is-- or --are--.
5. If rejoinder occurs after the first Office action on the merits and if any of the rejoined claims are unpatentable, e.g., if a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph is made, then the next Office action may be made final if proper under MPEP § 706.07(a).
¶ 8.45 Elected Invention Allowable, Rejoinder of All Previously Withdrawn Claims
Claim [1] allowable. Claim [2 ], previously withdrawn from consideration as a result of a restriction requirement, [3] all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement [4] inventions [5], as set forth in the Office action mailed on [6], is hereby withdrawn and claim [7] hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are
advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. Where the elected invention is directed to a product and previously nonelected process claims are rejoined, form paragraph 8.43 should be used instead of this paragraph.
2. This form paragraph should be used whenever ALL previously withdrawn claims depend from or otherwise require all the limitations of an allowable claim (e.g., a generic claim, linking claim, or subcombination claim) and wherein the non-elected claims have NOT been canceled. Use form paragraph 8.46, 8.47, or 8.47.01 as appropriate where the nonelected claims HAVE BEEN canceled. Use form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.
3. In bracket 2, insert the number(s) of the rejoined claim(s) followed by either -- is-- or -- are--.
4. In bracket 3 insert-- requires-- or -- require--.
5. In bracket 4, insert either --between-- or --among--.
6. In bracket 5, insert the group(s), species, or subject matter of the invention(s) being rejoined.
7. In bracket 7, insert the number(s) of the rejoined claim(s) followed by either --is-- or --are--.
¶ 8.46 Elected Invention Allowable, Non-elected Claims Canceled, Other Issues Remain Outstanding
Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. Claim [7], which required all the limitations of an allowable claim, previously withdrawn from consideration as a result of the restriction requirement, [8] canceled by applicant in the reply filed on [9]. The canceled, nonelected claim(s) may be reinstated by applicant if submitted in a timely filed amendment in reply to this action. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104.
In view of the withdrawal of the restriction requirement as set forth above, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the
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present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a).
2. This form paragraph (or form paragraph 8.47 or 8.47.01) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.
3. If no issues remain outstanding and application is otherwise ready for allowance, use form paragraph 8.47 or 8.47.01 instead of this form paragraph.
4. In bracket 2, insert either --between-- or --among--.
5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.
6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.
7. In bracket 6, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
8. In bracket 7, insert the number of each claim that required all the limitations of an allowable claim but was canceled as a result of the restriction requirement.
9. In bracket 8, insert either --was-- or --were--.
¶ 8.47 Elected Invention Allowable, Non-elected Claims Canceled, Before Final Rejection, No Outstanding Issues Remaining
Claim [1] allowable. The restriction requirement [2] inventions [3] , as set forth in the Office action mailed on [4] , has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. Claim [7], which required all the limitations of an allowable claim, previously withdrawn from consideration as a result of the restriction
requirement, [8] canceled by applicant in the reply filed on [9]. The canceled, nonelected claim(s) may be reinstated by applicant if submitted in an amendment, limited to the addition of such claim(s), filed within a time period of TWO MONTHS from the mailing date of this letter. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104. If NO such amendment is submitted within the set time period, the application will be passed to issue. PROSECUTION ON THE MERITS IS OTHERWISE CLOSED.
In view of the withdrawal of the restriction requirement as to the linked inventions, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions and the application has not been finally rejected. See MPEP §§ 806.05(j) and 821.04(a). After final rejection, use form paragraph 8.47.01 instead of this form paragraph.
2. This form paragraph (or form paragraph 8.46 or 8.47.01) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.
3. This form paragraph should be used only when there are no outstanding issues remaining and is to be used with only a PTO-90C cover sheet.
4. In bracket 2, insert either --between-- or --among--.
5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.
6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.
7. In bracket 6, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
8. In bracket 7, insert the number of each claim that required all the limitations of an allowable claim but was canceled as a result of the restriction requirement.
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§ 800FORM PARAGRAPHS CONSOLIDATED
9. In bracket 8, insert either --was-- or --were--.
¶ 8.47.01 Elected Invention Allowable, Non-elected Claims Canceled, After Final Rejection, No Outstanding Issues Remaining
Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. In view of the withdrawal of the restriction requirement as set forth above, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions and the application has been finally rejected. See MPEP §§ 806.05(j) and 821.04(a). Before final rejection, use form paragraph 8.47 instead of this form paragraph.
2. This form paragraph (or form paragraph 8.46) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.49 or 8.50 as appropriate when the elected invention is allowable and the restriction requirement is withdrawn at least in part.
3. This form paragraph should be used only when there are no outstanding issues remaining and is to be used with only a PTO-90C cover sheet.
4. In bracket 2, insert either --between-- or --among--.
5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.
6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.
7. In bracket 6, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
¶ 8.49 Elected Invention Allowable, Claims Stand Withdrawn as Not In Required Form
Claim [1] allowable. The restriction requirement [2], as set forth in the Office action mailed on [3], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [4] is [5]. Claim [6], directed to [7] withdrawn from further consideration because [8] require all the limitations of an allowable generic linking claim as required by 37 CFR 1.141.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a).
2. This form paragraph (or form paragraph 8.50) should be used upon the allowance of a linking claim, generic claim, or subcombination claim when none of the nonelected claims require all the limitations of an allowable claim.
3. In bracket 2, insert -- between-- or --among-- followed by identification of the inventions (i.e., groups or species) restricted.
4. In bracket 4, insert the date of the restriction requirement being fully or partially withdrawn.
5. In bracket 5, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
6. In bracket 7, insert the subject matter of the claimed invention or species not being rejoined followed by -- remains-- or --remain--.
7. In bracket 8, insert --it does not-- or --they do not all--.
¶ 8.50 Elected Invention Allowable, Some Claims No Longer Considered Withdrawn
Claim [1] allowable. The restriction requirement [2], as set forth in the Office action mailed on [3], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations
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of an allowable claim. Specifically, the restriction requirement of [4] is [5]. Claim [6], directed to [7] no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim. However, claim [8], directed to [9] withdrawn from consideration because [10] require all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Examiner Note:
1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a).
2. This form paragraph should be used upon the allowance of a linking claim, generic claim, or subcombination claim when, some, but not all, of the nonelected claims require all the limitations of an allowable claim.
3. In bracket 2, insert -- between-- or --among-- followed by identification of the inventions (i.e., groups or species) restricted.
4. In bracket 4, insert the date of the restriction requirement being fully or partially withdrawn.
5. In bracket 5, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
6. In bracket 7, insert the subject matter of the claimed invention or species being rejoined followed by either -- is-- or -- are--.
7. In bracket 9, insert the subject matter of the claimed invention or species not being rejoined followed by -- remains-- or --remain--.
8. In bracket 10, insert --it does not-- or --they do not all--.
9. If all of the claims are in proper form, i.e., they include all the limitations of an allowable claim, one of form paragraphs 8.45, 8.46 or 8.47must be used.
900 [Reserved]
There are currently no form paragraphs numbered “9.xx....”
1000 Form Paragraphs 10.01 - 10.30
¶ 10.01 Withdrawal From Issue, Fee Not Paid
In re Application of [1]: Appl. No.: [2]:: WITHDRAWAL FROM ISSUE Filed: [3]: 37 CFR 1.313 For: [4]:
The purpose of this communication is to inform you that the above identified application is being withdrawn from issue pursuant to 37 CFR 1.313.
The application is being withdrawn to permit reopening of prosecution. The reasons therefor will be communicated to you by the examiner.
U.S. Patent and Trademark Office records reveal that the issue fee and the publication fee have not been paid. If the issue fee and the publication fee have been submitted, the applicant may request a refund, or may request that the fee be credited to a deposit account. However, applicant may wait until the application is either again found allowable or held abandoned. If the application is allowed, upon receipt of a new Notice of Allowance and Fee(s) Due, applicant may request that the previously submitted issue fee and publication fee be applied toward payment of the issue fee and publication fee in the amount identified on the new Notice of Allowance and Fee(s) Due. If the application is abandoned, applicant may request either a refund or a credit to a specified Deposit Account.
The application is being forwarded to the examiner for action.
______________________
[5]
Director,
Technology Center [6]
[7]
Examiner Note:
1. This letter is printed with the USPTO letterhead and must be signed by the TC Director.
2. DO NOT use this form letter if the issue fee and publication fee have been paid.
3. In bracket 7, insert the correspondence address of record.
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§ 1000FORM PARAGRAPHS CONSOLIDATED
¶ 10.13 Petition Under 37 CFR 1.324, Granted
In re Patent No. [1] : Issue Date: [2] : DECISION Appl. No.: [3] : GRANTING Filed: [4] : PETITION For: [5] : 37 CFR 1.324
This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.
The petition is granted.
The patented file is being forwarded to Certificate of Corrections Branch for issuance of a certificate naming only the actual inventor or inventors.
_______________________
[7]
Supervisory Patent Examiner,
Art Unit [8],
Technology Center [9]
[10]
Examiner Note:
1. Petitions to correct inventorship of an issued patent are decided by the Supervisory Patent Examiner, as set forth in the Commissioner’s memorandum dated June 2, 1989.
2. In bracket 10, insert the correspondence address of record.
3. This form paragraph is printed with the USPTO letterhead.
4. Prepare Certificate using form paragraph 10.15.
¶ 10.14 Treatment of Request Under 37 CFR 1.48 Petition Under 37 CFR 1.324, Petition Granted
In re Patent No. [1] : Issue Date: [2] : DECISION Appl. No.: [3] : GRANTING Filed: [4] : PETITION For: [5] : 37 CFR 1.324
This is a decision on the request under 37 CFR 1.48, filed [6]. In view of the fact that the patent has already issued, the request under 37 CFR 1.48 has been treated as a petition to correct inventorship under 37 CFR 1.324.
The petition is granted.
The patented file is being forwarded to Certificate of Corrections Branch for issuance of a certificate naming only the actual inventor or inventors.
_______________________
[7]
Supervisory Patent Examiner,
Art Unit [8],
Technology Center [9]
[10]
Examiner Note:
1. Petitions to correct inventorship of an issued patent are decided by the Supervisory Patent Examiner, as set forth in the Commissioner’s memorandum dated June 2, 1989.
2. This form paragraph is printed with the USPTO letterhead.
3. Prepare Certificate using form paragraph 10.15.
4. In bracket 10, insert the correspondence address of record.
¶ 10.15 Memorandum - Certificate of Correction (Inventorship)
DATE: [1]TO: Certificates of Correction BranchFROM: [2], SPE, Art Unit [3]SUBJECT: Request for Certificate of Correction
Please issue a Certificate of Correction in U. S. Letters Patent No. [4] as specified on the attached Certificate.
______________________
[5], SPE
Art Unit [6]
UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE Patent No. [7]Patented: [8]
On petition requesting issuance of a certificate for correction of inventorship pursuant to 35 U.S.C. 256, it has been found that the above identified patent improperly sets forth the inventorship. Accordingly, it is hereby certified that the correct inventorship of this patent is:
[9]
_________________________
[10], Supervisory Patent Examiner
Art Unit [11]
Examiner Note:
1. In bracket 9, insert the full name and residence (City, State) of each actual inventor.
2. This is an internal memo, not to be mailed to applicant, which accompanies the patented file to Certificates of Correction Branch as noted in form paragraphs 10.13 and 10.14.
3. In brackets 5 and 10, insert name of SPE; in brackets 6 and 11 the Art Unit and sign above each line.
4. Two separate pages of USPTO letterhead will be printed when using this form paragraph.
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¶ 10.16.fti Petition Under 37 CFR 1.324 filed prior to September 16, 2012, Dismissed
In re Patent No. [1] : Issue Date: [2] : DECISION Appl. No.: [3] : DISMISSING Filed: [4] : PETITION For: [5] : 37 CFR 1.324
This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.
The petition is dismissed.
A petition to correct inventorship under 37 CFR 1.324 filed before September 16, 2012, requires (1) a statement from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on their part, (2) a statement from the current named inventors (including any “inventor” being deleted) who have not submitted a statement as per “(1)” either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change, (3) a statement in compliance with 3.73(b) from all assignees of the parties submitting a statement under “(1)” and “(2)” agreeing to the change of inventorship in the patent; and (4) the fee set forth in 37 CFR 1.20(b).This petition lacks item(s) [7].
_______________________
[8]
Supervisory Patent Examiner,
Art Unit [9],
Technology Center [10]
[11]
Examiner Note:
1. If each of the four specified items has been submitted but one or more is insufficient, the petition should be denied. See form paragraph 10.17. However, if the above noted deficiency can be cured by the submission of a renewed petition, a dismissal would be appropriate.
2. If the petition includes a request for suspension of the rules (37 CFR 1.183) of one or more provisions of 37 CFR 1.324 that are required by the statute (35 U.S.C. 256), form paragraph 10.18 should follow this form paragraph.
3. In bracket 7, pluralize as necessary and insert the item number(s) which are missing.
4. In bracket 11, insert correspondence address of record.
5. This form paragraph is printed with the USPTO letterhead.
6 This form paragraph should only be used if the petition under 37 CFR 1.324 was filed before September 16, 2012. If the petition was filed on or after September 16, 2012, use form paragraph 10.16.01.
¶ 10.16.01 Petition Under 37 CFR 1.324 filed on or after September 16, 2012, Dismissed
In re Patent No. [1] :
Issue Date: [2] : DECISION
Appl. No.: [3] : DISMISSING
Filed: [4] : PETITION
For: [5] : 37 CFR 1.324
This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.
The petition is dismissed.
A petition to correct inventorship under 37 CFR 1.324 filed on or after September 16, 2012, requires (1) a statement from each person who is being added as an inventor and each person who is currently named as an inventor (including any “inventor” being deleted) either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change, (2) a statement in compliance with 37 CFR 3.73(c) from all assignees of the parties submitting a statement under “(1)” agreeing to the change of inventorship in the patent; and (3) the fee set forth in 37 CFR 1.20(b). This petition lacks item(s) [7].
_______________________
[8]
Supervisory Patent Examiner,
Art Unit [9],
Technology Center [10]
[11]
Examiner Note:
1. If each of the three specified items has been submitted but one or more is insufficient, the petition should be denied. See form paragraph 10.17. However, if the above noted deficiency can be cured by the submission of a renewed petition, a dismissal would be appropriate.
2. If the petition includes a request for suspension of the rules (37 CFR 1.183) of one or more provisions of 37 CFR 1.324 that are required by the statute (35 U.S.C. 256), form paragraph 10.18 should follow this form paragraph.
3. In bracket 7, pluralize as necessary and insert the item number(s) which are missing.
4. In bracket 11, insert correspondence address of record.
5. This form paragraph is printed with the USPTO letterhead.
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§ 1000FORM PARAGRAPHS CONSOLIDATED
¶ 10.17 Petition Under 37 CFR 1.324, Denied
In re Patent No. [1]: Issue Date: [2]:DECISION DENYING PETITIONAppl. No.: [3]: 37 CFR 1.324 Filed: [4]: For: [5]:
This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.
The petition is denied.
[7]
_______________________
[8]
Supervisory Patent Examiner,
Art Unit [9],
Technology Center [10]
[11]
Examiner Note:
1. In bracket 7, a full explanation of the deficiency must be provided.
2. If the petition lacks one or more of the required parts set forth in 37 CFR 1.324, it should be dismissed using form paragraph 10.14 or 10.20, rather than being denied.
3. In bracket 11, insert correspondence address of record.
4. This form paragraph is printed with the USPTO letterhead.
¶ 10.18 Waiver of Requirements of 37 CFR 1.324 Under 37 CFR 1.183, Dismissed
Suspension of the rules under 37 CFR 1.183 may be granted for any requirement of the regulations which is not a requirement of the statutes. In this instance, 35 U.S.C. 256 requires [1]. Accordingly, the petition under 37 CFR 1.183 is dismissed.
Examiner Note:
1. This form paragraph should follow form paragraph 10.16 whenever the petition requests waiver of one or more of the provisions of 37 CFR 1.324 that are also requirements of 35 U.S.C. 256.
2. If the petition requests waiver of requirements of 37 CFR 1.324 that are not specific requirements of the statute (i.e., the fee or the oath or declaration by all inventors), the application must be forwarded to a petitions attorney in the Office of the Deputy Commissioner for Patent Examination Policy for decision.
¶ 10.19 Memorandum - Certificate of Correction (Cross-Reference to Other Reissues in Family)
DATE: [1]
TO: Certificates of Correction Branch
FROM: [2], SPE, Art Unit [3]
SUBJECT: Request for Certificate of Correction
Please issue a Certificate of Correction in U. S. Letters Patent No. [4] as specified on the attached Certificate.
______________________
[5], SPE
Art Unit [6]
UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE
Patent No. [7]
Patented: [8]
The present reissue patent issued from an application that is one of a family of divisional reissue applications resulting from Patent No. [9]. The present reissue patent has issued without the cross reference to the other reissue application(s) of the family which is required pursuant to 37 CFR 1.177(a). Accordingly, insert in the first sentence of the specification as follows:
Notice: More than one reissue application has been filed for the reissue of patent [9]. The reissue applications are [10].
_________________________
[11], Supervisory Patent Examiner
Art Unit [12]
Examiner Note:
1 In bracket 9, insert the patent number of the patent for which multiple reissue divisional applications have been filed.
2 This is an internal memo and must not be mailed to the applicant. This memo should accompany the patented file to the Certificates of Correction Branch as noted in form paragraphs 10.13 and 10.14.
3. In brackets 5 and 11, insert the name of SPE and provide the signature of the SPE above each line.
4. In brackets 6 and 12, insert the Art Unit number.
5. Two separate pages of USPTO letterhead will be printed when using this form paragraph.
6. In bracket 10, identify each of the reissue applications (including the present application) and their relationship within the family of reissue applications, and to the original patent.
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¶ 10.20 Petition or Request Dismissed, Proper Fee Not Submitted
Applicant’s petition or request under 37 CFR [1] filed [2] is DISMISSED because the proper petition or processing fee of [3] required under 37 CFR 1.17 has not been submitted.
Examiner Note:
1. Requests under 37 CFR 1.48 for correcting inventorship require a fee as set forth in 37 CFR 1.17(i).
2. Petitions to suspend action under 37 CFR 1.103(a) require a fee as set forth in 37 CFR 1.17(g).
3. Petitions to withdraw an application from issue under 37 CFR 1.313 require a fee as set forth in 37 CFR 1.17(h).
4. Petitions for an extension of time under 37 CFR 1.136(a) require varying fees. See 37 CFR 1.17(a)(1)-(5).
5. Requests to suspend action under 37 CFR 1.103(b) or (c) require a fee set forth in 37 CFR 1.17(i).
6. Requests to defer examination under 37 CFR 1.103(d) require a fee set forth in 37 CFR 1.17(i) and publication fee set forth in 37 CFR 1.18(d).
¶ 10.30 Petition Header Information
In re Application of: [1] : Appl. No.: [2] : DECISION ON PETITION Filed: [3] : [5] For: [4] :
1100 [Reserved]
There are currently no form paragraphs numbered “11.xx....”
1200 Form Paragraphs 12.209 - 12.298
¶ 12.209 Appeal Dismissed - Allowed Claims, Formal Matters Remaining
In view of applicant’s failure to file a brief within the time prescribed by 37 CFR 41.37(a), the appeal stands dismissed and the proceedings as to the rejected claims are considered terminated. See 37 CFR 1.197(b).
This application will be passed to issue on allowed claim [1] provided the following formal matters are corrected. Prosecution is otherwise closed.
[2]
Applicant is required to make the necessary corrections within a shortened statutory period set to expire TWO MONTHS from the mailing date of this letter to avoid ABANDONMENT of the application. Extensions of time may be granted under 37 CFR 1.136.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. This form paragraph should only be used if the formal matters cannot be handled by examiner’s amendment. See MPEP § 1215.04.
3. In bracket 2, insert a description of the formal matters to be corrected.
4. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected. See MPEP § 1215.04.
¶ 12.210 Extension To File Brief - Granted
The request for an extension of time under 37 CFR 1.136(b) for filing the appeal brief under 37 CFR 41.37 filed on [1] has been approved for [2].
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 2, insert the amount of time the extension of time has been approved for.
3. This form paragraph should only be used when 37 CFR 1.136(a) is not available or has been exhausted, such as in litigation reissues or when appellant requests to reopen prosecution or file a reply brief as set forth in 37 CFR 41.39(b) and 37 CFR 41.50(a)(2).
¶ 12.211 Extension To File Brief - Denied
The request for an extension of time under 37 CFR 1.136(b) for filing the appeal brief under 37 CFR 41.37 filed on [1] has been disapproved because no sufficient cause for the extension has been shown.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. This form paragraph should only be used when 37 CFR 1.136(a) is not available or has been exhausted, such as in litigation reissues or when appellant requests to reopen prosecution or file a reply brief as set forth in 37 CFR 41.39(b) and 37 CFR 41.50(a)(2) .
¶ 12.239 Reopening of Prosecution After Appeal Brief
In view of the [1] filed on [2], PROSECUTION IS HEREBY REOPENED. [3] set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is finan( � or,
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(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
[4]
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert --appeal brief-- or --amended appeal brief--.
3. In bracket 2, insert the date on which the brief was filed.
4. In bracket 3, insert --A new ground of rejection is-- or --New grounds of rejection are--.
5. In bracket 4, insert the SPE’s signature. Approval of the SPE is required to reopen prosecution after an appeal. See MPEP §§ 1002.02(d) and 1207.04.
6. Use this form paragraph to reopen prosecution in order to make a new ground of rejection of claims. The Office action following a reopening of prosecution may be made final if all new grounds of rejection were either (A) necessitated by amendment or (B) based on information presented in an information disclosure statement under 37 CFR 1.97(c) where no statement under 37 CFR 1.97(e) was filed. See MPEP § 706.07(a).
¶ 12.249 Examiner’s Answer Cover Sheet
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Application Number: [1]
Filing Date: [2]
Appellant(s): [3]
__________________
[4]
For Appellant
EXAMINER’S ANSWER
This is in response to the appeal brief filed [5].
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. This form paragraph is printed with the USPTO letterhead.
3. In bracket 1, insert the application number of the appealed application.
4. In bracket 2, insert the filing date of the appealed application.
5. In bracket 3, insert the name(s) of the appellant.
6. In bracket 4, insert the name of the registered representative of the appellant.
7. In bracket 5, indicate the date on which the brief was filed.
¶ 12.254 Grounds of Rejection to be Reviewed on Appeal
(1) Grounds of Rejection to be Reviewed on Appeal
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. Follow this form paragraph with form paragraph 12.254.01 or 12.254.02.
¶ 12.254.01 Statement of Grounds of Rejection, not modified
Every ground of rejection set forth in the Office action dated [1] from which the appeal is taken is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.” New grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF REJECTION.”
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the mailing date of the Office action from which the appeal is being taken.
3. Use form paragraph 12.255 to restate the grounds of rejection and supporting rationale for each rejection involved in the appeal, when needed.
4. Use form paragraph 12.256 to introduce any new grounds of rejection.
5. Use form paragraph 12.257 to withdraw a ground of rejection previously made in the final Office action or last Office action.
6. Use this form paragraph when there was no modification made to the grounds of rejection in an advisory action or pre-appeal conference decision.
¶ 12.254.02 Statement of Grounds of Rejection, modified
The ground(s) of rejection set forth in the Office action dated [1] from which the appeal is taken have been modified by the [2] dated [3]. A list of rejections withdrawn by the examiner (if any) is included under the subheading “WITHDRAWN REJECTIONS.” New grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF REJECTION.”
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Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the mailing date of the Office action from which the appeal is being taken.
3. In bracket 2, insert --advisory action-- and/or --pre-appeal brief conference decision--.
4. In bracket 3, insert the mailing date of the advisory action and/or pre-appeal brief conference decision--.
5. Use form paragraph 12.255 to restate the grounds of rejection and supporting rationale for each rejection involved in the appeal, when needed.
6. Use form paragraph 12.256 to introduce any new grounds of rejection.
7. Use form paragraph 12.257 to withdraw a ground of rejection previously made in the final Office action or last Office action.
8. Use this form paragraph when the grounds of rejection were modified in an advisory action or pre-appeal brief conference decision.
¶ 12.255 Restatement of Rejection
The following ground(s) of rejection are applicable to the appealed claims.
[1]
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. Precede this form paragraph with either 12.254.01 or 12.254.02.
3. Use this form paragraph to optionally include a statement of rejection and/or supporting rationale for every ground of rejection involved in the appeal.
4. Only use this form paragraph when the restatement of the rejection does not include any new ground(s) of rejection.
5. In bracket 1, explain each ground of rejection maintained by the examiner.
¶ 12.256 New Grounds of Rejection - Heading
NEW GROUNDS OF REJECTION
[1]
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. Any new ground(s) of rejection in the examiner’s answer must be prominently identified (e.g., using this form paragraph).
3. Provide a concise statement of each new ground of rejection presented for review in bracket 1; and
4. Conclude an examiner’s answer raising new grounds of rejection with form paragraph 12.279.01: (1) to notify applicant of the reply period and options following the new grounds of rejection; and (2) to include the required approval of the TC Director or his/her designee.
¶ 12.257 Withdrawn Rejections
WITHDRAWN REJECTIONS
The following grounds of rejection are not presented for review on appeal because they have been withdrawn by the examiner. [1].
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the grounds of rejection that have been withdrawn.
¶ 12.261 Response to Argument
(2) Response to Argument
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. If an issue raised by appellant was fully responded to under the “Grounds of Rejection to be Reviewed on Appeal” portion, no additional response is required here.
3. If an issue has been raised by appellant that was not fully responded to under “Grounds of Rejection to be Reviewed on Appeal,” a full response must be provided after this form paragraph.
¶ 12.279 Conclusion to Examiner’s Answer, No New Grounds of Rejection
For the above reasons, it is believed that the rejections should be sustained.
Respectfully submitted,
[1]
Conferees:
[2]
[3]
Requirement to pay appeal forwarding fee. In order to avoid dismissal of the instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment of
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an appeal forwarding fee within the time permitted by 37 CFR 41.45(a), unless appellant had timely paid the fee for filing a brief required by 37 CFR 41.20(b) in effect on March 18, 2013.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert initials of the examiner and the date.
3. In bracket 2, insert names of the conferees. The conferees must also place their initials next to their names.
4. In bracket 3, insert correspondence address of record.
5. If the examiner’s answer includes a new ground of rejection, use form paragraph 12.279.01 instead of this form paragraph.
¶ 12.279.01 Conclusion to Examiner’s Answer Raising New Grounds of Rejection
For the above reasons, it is believed that the rejections should be sustained.
This examiner’s answer contains a new ground of rejection set forth in section (1) above. Accordingly, appellant must within TWO MONTHS from the date of this answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:
(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit or other evidence. Any amendment, affidavit or other evidence must be relevant to the new grounds of rejection. A request that complies with 37 CFR 41.39(b)(1) will be entered and considered. Any request that prosecution be reopened will be treated as a request to withdraw the appeal.
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41. Such a reply brief must address each new ground of rejection as set forth in 37 CFR 41.37(c)(1) and should be in compliance with the other requirements of 37 CFR 41.37(c). If a reply brief filed pursuant to 37 CFR 41.39(b)(2) is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under 37 CFR 41.39(b)(1).
Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.
Respectfully submitted,
[1]
A Technology Center Director or designee must personally approve the new ground(s) of rejection set forth in section (1) above by signing below:
[2]
Conferees:
[3]
[4]
Requirement to pay appeal forwarding fee. In order to avoid dismissal of the instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment of an appeal forwarding fee within the time permitted by 37 CFR 41.45(a), unless appellant had timely paid the fee for filing a brief required by 37 CFR 41.20(b) in effect on March 18, 2013.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert initials of the examiner and the date.
3. In bracket 2, insert TC Director’s or designee’s signature. All new grounds of rejection must be approved by a TC Director or designee.
4. In bracket 3, insert names of the conferees. The conferees must also place their initials next to their names.
5. In bracket 4, insert correspondence address of record.
¶ 12.279.02 Dismissal Following New Ground(s) of Rejection in Examiner’s Answer
Appellant failed to timely respond to the examiner’s answer mailed on [1] that included a new ground of rejection. Under 37 CFR 41.39(b) , if an examiner’s answer contains a rejection designated as a new ground of rejection, appellant must, within two months from the date of the examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, addressing each new ground of rejection, to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. In view of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.39, the appeal as to claims [2] is dismissed, and these claims are canceled.
Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
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2. In bracket 1, insert the mailing date of the examiner’s answer.
3. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
4. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.
¶ 12.279.03 Request to Present Oral Arguments
The examiner requests the opportunity to present arguments at the oral hearing.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. Use this form paragraph only if an oral hearing has been requested by appellant and the primary examiner intends to present an oral argument.
3. This form paragraph must be included as a separate letter on a form PTOL-90.
¶ 12.285 Substitute Examiner’s Answer - On Remand FOR FURTHER CONSIDERATION OF A REJECTION
Pursuant to the remand under 37 CFR 41.50(a)(1) by the Patent Trial and Appeal Board on [1] for further consideration of a rejection, a substitute Examiner’s Answer under 37 CFR 41.50(a)(2) is set forth below: [2].
The appellant must within TWO MONTHS from the date of the substitute examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:
(1) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit, or other evidence. Any amendment, affidavit, or other evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner’s answer. Any request that prosecution be reopened will be treated as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i).
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened under 37 CFR 41.50(a)(2)(i). See 37 CFR 41.50(a)(2)(ii) .
Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.
A Technology Center Director or designee has approved this substitute examiner’s answer by signing below:
[3]
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the date of the remand.
3. In bracket 2, provide reasons supporting the rejections set forth in the substitute Examiner’s Answer.
4. In bracket 3, insert the TC Director’s or designee’s signature. A TC Director or designee must approve every substitute examiner’s answer.
¶ 12.286 Dismissal Following A Substitute Examiner’s Answer Written in Response to a Remand for Further Consideration of a Rejection
Appellant failed to timely respond to the substitute examiner’s answer mailed on [1] that was written in response to a remand by the Board for further consideration of a rejection. Under 37 CFR 41.50(a)(2), appellant must, within two months from the date of the substitute examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. In view of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.50(a)(2), the appeal as to claims [2] is dismissed, and these claims are canceled.
Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the mailing date of the substitute examiner’s answer.
3. In bracket 2, insert the claim numbers of the claims subject to the rejection for which the Board has remanded the proceeding.
4. In bracket 3, insert the claim numbers of the claims that are not subject to the rejection.
¶ 12.291 Examiner Sustained in Part - Requirement of Rewriting Dependent Claims (No Allowed Claim)
The Patent Trial Appeal Board affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. There are no allowed claims in the application. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06. Applicant is given a TWO MONTH TIME PERIOD from the mailing date
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of this letter in which to present the dependent claim(s) in independent form to avoidABANDONMENT of the application. EXTENSIONS OF TIME UNDER 37 CFR 1.136(a) ARE AVAILABLE. Prosecution is otherwise closed.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, enter the independent claim number(s) for which the Board affirmed the rejection(s).
3. In bracket 2, enter the dependent claim number(s) for which the Board reversed the rejection(s).
¶ 12.292 Examiner Sustained in Part - Requirement of Rewriting Dependent Claims (At Least OneAllowed Claim)
The Patent Trial and Appeal Board affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06. Applicant is given a ONE MONTH TIME PERIOD from the mailing date of this letter in which to present the dependent claim(s) in independent form. NO EXTENSIONS OF TIME UNDER 37 CFR 1.136 WILL BE GRANTED. Failure to comply will result in cancellation of the dependent claims and the application will be allowed with claim(s) [3]. Prosecution is otherwise closed.
Examiner Note:
1 For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, enter the independent claim number(s) for which the Board affirmed the rejection(s).
3. In bracket 2, enter the dependent claim number(s) for which the Board reversed the rejection(s).
4. In bracket 3, enter the claim number(s) of the allowed claims.
¶ 12.297 Period For Seeking Court Review Has Lapsed
The period under 37 CFR 90.3 for seeking court review of the decision by the Patent Trial and Appeal Board rendered [1] has expired and no further action has been taken by appellant. The proceedings as to the rejected claims are considered terminated; see 37 CFR 1.197(b).
The application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed.
Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire TWO MONTHS from the mailing date of this letter to avoid ABANDONMENT of the application. Extensions of time may be granted under 37 CFR 1.136.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, enter the mailing date of the decision (or notification date of the decision if electronic mail notification was sent to the appellant under the e-Office Action program).
3. In bracket 2, identify the allowed claims.
4. In bracket 3, identify the formal matters that need correction.
¶ 12.298 Amendment After Board Decision, Entry Refused
The amendment filed [1] after a decision by the Patent Trial and Appeal Board is not entered because prosecution is closed. As provided in 37 CFR 1.198, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner after a final decision of the Board except under the provisions of 37 CFR 1.114 (request for continued examination) or 37 CFR 41.50 without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
Examiner Note:
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the date the amendment was filed.
3. This form paragraph is not to be used where a 37 CFR 41.50(b) rejection has been made by the Board.
1300 Form Paragraphs 13.01 - 13.10
¶ 13.01 Requirement for Rewritten Specification
The interlineations or cancellations made in the specification or amendments to the claims could lead to confusion and mistake during the issue and printing processes. Accordingly, the portion of the specification or claims as identified below is required to be rewritten before passing the case to issue. See 37 CFR 1.125 and MPEP § 608.01(q).
Examiner Note:
1. Specific discussion of the sections of the specification or claims required to be rewritten must be set forth.
2. See form paragraph 6.28.01 for a substitute specification.
¶ 13.02 Examiner’s Amendment
An examiner’s amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
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Examiner Note:
This form paragraph is NOT to be used in a reexamination proceeding (use form paragraph 22.06 instead).
¶ 13.02.01 Examiner’s Amendment Authorized
Authorization for this examiner's amendment was given in an interview with [1] on [2].
¶ 13.02.02 Extension of Time and Examiner’s Amendment Authorized
An extension of time under 37 CFR 1.136(a) is required in order to make an examiner’s amendment which places this application in condition for allowance. During a conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension and authorized the following examiner’s amendment. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
Examiner Note:
See MPEP § 706.07(f) which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance.
¶ 13.03 Reasons for Allowance
The following is an examiner’s statement of reasons for allowance: [1]
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Examiner Note:
1. Do not use this form paragraph in reexamination proceedings, see form paragraph 22.16.
2. In bracket 1, provide a detailed statement of the reason(s) certain claim(s) have been indicated as being allowable or as containing allowable subject matter.
¶ 13.03.01 Reasons for Indication of Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: [1]
Examiner Note:
1. This form paragraph is for use in an Office action prior to allowance of the application. Use form paragraph 13.03 in the Notice of Allowability.
2. In bracket 1, provide a detailed statement of the reason(s) certain claim(s) have been indicated as being allowable or as containing allowable subject matter.
¶ 13.04 Reopen Prosecution - After Notice of Allowance
Prosecution on the merits of this application is reopened on claim [1] considered unpatentable for the reasons indicated below:
[2]
Examiner Note:
1. This paragraph should be used when a rejection is made on any previously allowed claim(s) which for one reason or another is considered unpatentable after the Notice of Allowance (PTOL-85) has been mailed.
2. Make appropriate rejection(s) as in any other action.
3. In bracket 1, identify claim(s) that are considered unpatentable.
4. In bracket 2, state all appropriate rejections for each claim considered unpatentable.
¶ 13.05 Reopen Prosecution - Vacate Notice of Allowance
Applicant is advised that the Notice of Allowance mailed [1] is vacated. If the issue fee has already been paid, applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied. If abandoned, applicant may request refund or credit to a specified Deposit Account.
Examiner Note:
1. This form paragraph must be used when the prosecution is reopened after the mailing of the Notice of Allowance.
2. In bracket 1, insert date of the Notice of Allowance.
¶ 13.06 Extension of Time by Examiner’s Amendment
An extension of time under 37 CFR 1.136(a) is required to place this application in condition for allowance. During a telephone conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension.
Examiner Note:
1. See MPEP § 706.07(f), item J which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance.
2. When an examiner’s amendment is also authorized, use form paragraph 13.02.02 instead.
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§ 1300FORM PARAGRAPHS CONSOLIDATED
¶ 13.09 Information Disclosure Statement, Issue Fee Paid
Applicant’s information disclosure statement of [1] was filed after the issue fee was paid. Information disclosure statements filed after payment of the issue fee will not be considered, but will be placed in the file. However, the application may be withdrawn from issue in order to file a request for continued examination (RCE) under 37 CFR 1.114 upon the grant of a petition under 37 CFR 1.313(c)(2), or a continuing application under 37 CFR 1.53(b) (or a continued prosecution application (CPA) under 37 CFR 1.53(d) if the CPA is for a design patent and the prior application of the CPA is a design application filed under 35 U.S.C. chapter 16) upon the grant of a petition filed under the provisions of 37 CFR 1.313(c)(3). Alternatively, the other provisions of 37 CFR 1.313 may apply, e.g., a petition to withdraw the application from issue under the provisions of 37 CFR 1.313(c)(1) may be filed together with an unequivocal statement by the applicant that one or more claims are unpatentable over the information contained in the statement. The information disclosure statement would then be considered upon withdrawal of the application from issue under 37 CFR 1.313(c)(1).
Examiner Note:
1. For information disclosure statements submitted after the issue fee has been paid, use this form paragraph with form PTOL-90 or PTO-90C.
2. In bracket 1, insert the filing date of the IDS.
¶ 13.10 Amendment Filed After the Payment of Issue Fee, Not Entered
Applicant’s amendment filed on [1] will not be entered because the amendment was filed after the issue fee was paid. 37 CFR 1.312 no longer permits filing an amendment after the date the issue fee has been paid.
Examiner Note:
1. Use this paragraph with form PTOL-90 or PTO-90C.
2. In bracket 1, insert the date of the amendment.
1400 Form Paragraphs 14.01 - 14.38
¶ 14.01 Reissue Application, Applicable Laws and Rules Heading
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Examiner Note:
This paragraph must be used as a heading in all Office actions in reissue applications.
¶ 14.01.01 Defective Reissue Oath/Declaration, 37 CFR 1.175 - No Statement of a Specific Error
The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
Examiner Note:
1. Use this form paragraph when the reissue oath or declaration does not contain any statement of an error which is relied upon to support the reissue application.
2. This form paragraph can be used where the reissue oath or declaration does not even mention error. It can also be used where the reissue oath or declaration contains some discussion of the concept of error but never in fact identifies a specific error to be relied upon. For example, it is not sufficient for an oath or declaration to merely state “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.”
3. Form paragraph 14.14 must follow this form paragraph.
¶ 14.01.02 Defective Reissue Oath/Declaration, 37 CFR 1.175 - The Identified “Error” Is Not Appropriate Error
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.
Examiner Note:
1. Use this form paragraph when the reissue oath/declaration identifies only one error which is relied upon to support the reissue application, and that one error is not an appropriate error upon which a reissue can be based.
2. Form paragraph 14.14 must follow this form paragraph.
¶ 14.01.03 Defective Reissue Oath/Declaration, 37 CFR 1.175 - Multiple Identified “Errors” Not Appropriate Errors
The reissue oath/declaration filed with this application is defective because none of the errors which are relied upon to support the reissue application are errors upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.
Examiner Note:
1. Use this form paragraph when the reissue oath/declaration identifies more than one error relied upon to support the reissue application, and none of the errors are appropriate errors upon which a reissue can be based.
2. Note that if the reissue oath/declaration identifies more than one error relied upon, and at least one of the errors is an error upon which reissue can be based, this form paragraph should not be used, despite the additional reliance by applicant on “errors” which do not support the reissue. Only one appropriate error is needed to support a reissue.
3. Form paragraph 14.14 must follow this form paragraph.
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¶ 14.01.04.fti Defective Reissue Oath/Declaration in Application Filed Before Sept. 16, 2012, 37 CFR 1.175- Lack of Statement of “Without Any Deceptive Intention”
The reissue oath/declaration filed with this application, which has a filing date before September 16, 2012, is defective because it fails to contain a statement that all errors which are being corrected in the reissue application up to the time of filing of the oath/declaration arose without any deceptive intention on the part of the applicant. See pre-AIA 37 CFR 1.175 and MPEP § 1414.
Examiner Note:
1. For reissue applications filed before September 16, 2012, use this form paragraph when the reissue oath/declaration does not contain the statement required by pre-AIA 37 CFR 1.175 that all errors being corrected in the reissue application arose without any deceptive intention on the part of the applicant.
2. This form paragraph is appropriate to use for a failure by applicant to comply with the requirement, as to any of pre-AIA 37 CFR 1.175(a)(2), 37 CFR 1.175(b)(1), or 37 CFR 1.175(b)(2).
3. Form paragraph 14.14 must follow.
¶ 14.01.05 Defective Reissue Oath/Declaration, 37 CFR 1.175 - No Statement of Defect in the Patent
The reissue oath/declaration filed with this application is defective because it fails to contain the statement(s) required under 37 CFR 1.175 as to applicant’s belief that the original patent is wholly or partly inoperative or invalid. [1]
Examiner Note:
1. Use this form paragraph when applicant: (a) fails to allege that the original patent is inoperative or invalid and/or (b) fails to state the reason of a defective specification or drawing, or of patentee claiming more or less than patentee had the right to claim in the patent. In bracket 1, point out the specific defect to applicant by using the language of (a) and/or (b), as it is appropriate.
2. Form paragraph 14.14 must follow this form paragraph.
¶ 14.01.06 Defective Reissue Oath/Declaration, 37 CFR 1.175 - General
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
Examiner Note:
1. Use this form paragraph when the reissue oath/declaration does not comply with 37 CFR 1.175, and none of form paragraphs 14.01.01 - 14.01.05 or 14.05.02 apply.
2. This form paragraph must be followed by an explanation of why the reissue oath/declaration is defective.
3. Form paragraph 14.14 must follow the explanation of the defect.
¶ 14.05.02.fti Supplemental Oath or Declaration Required Prior to Allowance - Application Filed Before Sept. 16, 2012
In accordance with pre-AIA 37 CFR 1.175(b)(1), for applications filed before September 16, 2012, a supplemental reissue oath/declaration must be received before this reissue application can be allowed.
Claim [1] rejected as being based upon a defective reissue [2] under 35 U.S.C. 251. See 37 CFR 1.175. The nature of the defect is set forth above.
Receipt of an appropriate supplemental oath/declaration will overcome this rejection. An example of acceptable language to be used in the supplemental oath/declaration is as follows:
“Every error in the patent which was corrected in the present reissue application, and is not covered by a prior oath/declaration submitted in this application, arose without any deceptive intention on the part of the applicant.”
See MPEP § 1414.01.
Examiner Note:
1. In bracket 1, list all claims in the reissue application.
2. In bracket 2, insert either --oath-- or --declaration--.
3. This form paragraph is used in an Office action to: (a) remind applicant of the requirement for submission of the supplemental reissue oath/declaration under pre-AIA 37 CFR 1.175(b)(1) before allowance and (b) at the same time, reject all the claims since the reissue application is defective until the supplemental oath/declaration is submitted.
4. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.
5. Do not use this form paragraph if no amendments (or other corrections of the patent) have been made subsequent to the last oath/declaration filed in the case; instead allow the case.
6. This form paragraph cannot be used in an Ex parte Quayle action to require the supplemental oath/declaration, because the rejection under 35 U.S.C. 251 is more than a matter of form.
7. Do not use this form paragraph in an examiner’s amendment. The supplemental oath/declaration must be filed prior to mailing of the Notice of Allowability.
¶ 14.06 Litigation-Related Reissue
The patent sought to be reissued by this application [1] involved in litigation. Any documents and/or materials which would be material to patentability of this reissue application are required to be made of record in response to this action.
Due to the related litigation status of this application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED DURING THE PROSECUTION OF THIS APPLICATION.
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Examiner Note:
In bracket 1, insert either —is— or —has been—.
¶ 14.07 Action in Reissue Not Stayed or Suspended — Related Litigation Stayed
While there is a stay of the concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed or suspended because a stay of that litigation is in effect for the purpose of awaiting the outcome of these reissue proceedings. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
¶ 14.08 Action in Reissue Not Stayed — Related Litigation Terminated
Since the litigation related to this reissue application is terminated and final, action in this reissue application will NOT be stayed. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
¶ 14.09 Action in Reissue Not Stayed — Related Litigation Not Overlapping
While there is concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed because there are no significant overlapping issues between the application and that litigation. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
¶ 14.10 Action in Reissue Not Stayed — Applicant’s Request
While there is concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed because of applicant’s request that the application be examined at this time. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.
¶ 14.11 Action in Reissue Stayed - Related Litigation
In view of concurrent litigation, and in order to avoid duplication of effort between the two proceedings, action in this reissue application is STAYED until such time as it is evident to the examiner that (1) a stay of the litigation is in effect, (2) the litigation has been terminated, (3) there are no significant overlapping issues between the application and the litigation, or (4) applicant requests that the application be examined.
¶ 14.11.01 Reminder of Duties Imposed by 37 CFR 1.178(b) and 37 CFR 1.56
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or
concurrent proceeding in which Patent No. [1] is or was involved. These proceedings would include any trial at the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Examiner Note:
1. This form paragraph is to be used in the first action in a reissue application.
2. In bracket 1, insert the patent number of the original patent for which reissue is requested.
¶ 14.12 Rejection, 35 U.S.C. 251, Broadened Claims After Two Years
Claim [1] rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. [2] A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Examiner Note:
The claim limitations that broaden the scope should be identified and explained in bracket 2. See MPEP §§ 706.03(x) and 1412.03.
¶ 14.13 Rejection, 35 U.S.C. 251, Broadened Claims Filed by Assignee
Claim [1] rejected under 35 U.S.C. 251 as being improperly broadened in a reissue application made and sworn to by the assignee. The application for reissue may be made and sworn to by the assignee of the entire interest only if the application does not seek to enlarge the scope of the claims of the original patent or, for reissue applications filed on or after September 16, 2012, the application for the original patent was filed by the assignee of the entire interest under 37 CFR 1.46.
[2] A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Examiner Note:
The claim limitations that broaden the scope should be identified and explained in bracket 2. See MPEP §§ 706.03(x) and 1412.03.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1400
¶ 14.14 Rejection, Defective Reissue Oath or Declaration
Claim [1] rejected as being based upon a defective reissue [2] under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the [3] is set forth in the discussion above in this Office action.
Examiner Note:
1. In bracket 1, list all claims in the reissue application. See MPEP § 706.03(x).
2. This paragraph must be preceded by form paragraph 14.01 and should be preceded by form paragraphs 14.01.01 to 14.01.06 as appropriate
3. In brackets 2 and 3, insert either --oath-- or --declaration--.
¶ 14.15 Consent of Assignee to Reissue Lacking
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
Examiner Note:
1. This form paragraph may be used in an Office action which rejects any of the claims on other grounds.
2. If a consent document/statement has been submitted but is insufficient (e.g., not by all the assignees) or is otherwise ineffective (e.g., a conditional consent, or a copy of the consent from the parent reissue application was filed in this continuation reissue application and the parent reissue application is not being abandoned), an explanation of such is to be included following this form paragraph.
3. If the case is otherwise ready for allowance, this form paragraph should be followed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 of form paragraph 7.51).
¶ 14.16 Failure of Assignee To Establish Ownership
This application is objected to under 37 CFR 1.172(a) as the assignee has not established its ownership interest in the patent for which reissue is being requested. An assignee must establish its ownership interest in order to support the consent to a reissue application required by 37 CFR 1.172(a) . The assignee’s ownership interest is established by:
(a) filing in the reissue application evidence of a chain of title from the original owner to the assignee, or
(b) specifying in the record of the reissue application where such evidence is recorded in the Office (e.g., reel and frame number, etc.).
The submission with respect to (a) and (b) to establish ownership must be signed by a party authorized to act on behalf of the assignee. See MPEP § 1410.01.
An appropriate paper satisfying the requirements of 37 CFR 3.73 must be submitted in reply to this Office action.
Examiner Note:
1. This form paragraph may be used in an Office action which rejects any of the claims on other grounds.
2. If otherwise ready for allowance, this form paragraph should be followed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 of form paragraph 7.51).
¶ 14.16.01 Establishment of Ownership Not Signed by Appropriate Party
This application is objected to under 37 CFR 1.172(a) as the assignee has not established its ownership interest in the patent for which reissue is being requested. An assignee must establish its ownership interest in order to support the consent to a reissue application required by 37 CFR 1.172(a). The submission establishing the ownership interest of the assignee is informal. There is no indication of record that the party who signed the submission is an appropriate party to sign on behalf of the assignee. See 37 CFR 3.73.
A proper submission establishing ownership interest in the patent, pursuant to 37 CFR 1.172(a), is required in response to this action.
Examiner Note:
1. This form paragraph should be followed: by one of form paragraphs 14.16.02 through 14.16.04.fti, and then optionally by form paragraph 14.16.06.
2. See MPEP § 1410.02.
¶ 14.16.02 Failure To State Capacity To Sign
The person who signed the submission establishing ownership interest has failed to state his/her capacity to sign for the corporation or other business entity, and he/she has not been established as being authorized to act on behalf of the assignee. For reissue applications filed on or after September 16, 2012, the submission establishing ownership may be signed by a patent practitioner of record. See 37 CFR 3.73; MPEP § 325.
Examiner Note:
1. This form paragraph is to be used when the person signing the submission establishing ownership interest does not state his/her capacity (e.g., as a recognized officer) to sign for the assignee, and is not established as being authorized to act on behalf of the assignee. For reissue applications filed on or after September 16, 2012, the submission establishing ownership may be signed by a patent practitioner of record (i.e., who has been given power in a power of attorney document in the file).
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§ 1400FORM PARAGRAPHS CONSOLIDATED
2. Use form paragraph 14.16.06 to explain how an official, other than a recognized officer, may properly sign a submission establishing ownership interest.
¶ 14.16.03 Lack of Capacity To Sign
The person who signed the submission establishing ownership interest is not recognized as an officer of the assignee, and he/she has not been established as being authorized to act on behalf of the assignee. See MPEP § 324 (for applications filed before September 16, 2012) and § 325 (for applications filed on or after September 16, 2012).
¶ 14.16.04.fti Attorney/Agent of Record Signs - Application Filed Before Sept. 16, 2012
The submission establishing ownership interest was signed by applicant’s [1]. For reissue applications filed before September 16, 2012, an attorney or agent of record is not authorized to sign a submission establishing ownership interest, unless he/she has been established as being authorized to act on behalf of the assignee. See MPEP § 324.
Examiner Note:
1. This form paragraph is to be used in reissue applications filed before September 16, 2012, when the person signing the submission establishing ownership interest is an attorney or agent of record who is not an authorized officer as defined in MPEP § 324 and has not been established as being authorized to act on behalf of the assignee. For reissue applications filed on or after September 16, 2012, the submission may be signed by a patent practitioner of record. See 37 CFR 3.73(d)(3).
2. Use form paragraph 14.16.06 to explain how an official, other than a recognized officer, may properly sign a submission establishing ownership interest.
3. In bracket 1, insert either --attorney-- or --agent--.
¶ 14.16.06 Criteria To Accept When Signed by a Non-Recognized Officer
It would be acceptable for a person, other than a recognized officer, to sign a submission establishing ownership interest, provided the record for the application includes a duly signed statement that the person is empowered to sign a submission establishing ownership interest and/or act on behalf of the assignee.
Accordingly, a new submission establishing ownership interest which includes such a statement above, will be considered to be signed by an appropriate official of the assignee. A separately filed paper referencing the previously filed submission establishing ownership interest and containing a proper empowerment statement would also be acceptable.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraphs 14.16.02, 14.16.03 or 14.16.04.fti.
2. When one of form paragraphs 14.16.02, 14.16.03 or 14.16.04.fti is used to indicate that a submission establishing
ownership interest is not proper because it was not signed by a recognized officer, this form paragraph should be used to point out one way to correct the problem.
3. While an indication of the person’s title is desirable, its inclusion is not mandatory when this option is employed.
¶ 14.17 Rejection, 35 U.S.C. 251, Recapture
Claim[1] rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
[2]
Examiner Note:
In bracket 2, the examiner should explain the specifics of why recapture exists, including an identification of the omitted/broadened claim limitations in the reissue which provide the “broadening aspect” to the claim(s), and where in the original application the narrowed claim scope was presented/argued to obviate a rejection/objection. See MPEP § 1412.02.
¶ 14.20.01 Amendments To Reissue-37 CFR 1.173(b)
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b). In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01.
Examiner Note:
This form paragraph may be used in the first Office action to advise applicant of the proper manner of making amendments, and to notify applicant of the need to file a supplemental oath/declaration before the application can be allowed.
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¶ 14.21.01 Improper Amendment To Reissue - 37 CFR 1.173(b)
The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.173(b), which sets forth the manner of making amendments in reissue applications. A supplemental paper correctly amending the reissue application is required.
A shortened statutory period for reply to this letter is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter.
Examiner Note:
1. This form paragraph may be used for any 37 CFR 1.173(b) informality as to an amendment submitted in a reissue application prior to final rejection. After final rejection, applicant should be informed that the amendment will not be entered by way of an Advisory Office action.
2. In bracket 2, specify the proposed amendments that are not in compliance.
¶ 14.21.09.fti Rejection, Pre-AIA 35 U.S.C. 251, No Error Without Deceptive Intention - Application filed Before Sept. 16, 2012, External Knowledge
Claims [1] rejected under pre-AIA 35 U.S.C. 251 because this application was filed before September 16, 2012 and error “without any deceptive intention” has not been established. In view of the judicial determination in [2] of [3] on the part of applicant, a conclusion that any error was “without deceptive intention” cannot be supported. [4]
Examiner Note:
1. In bracket 1, list all claims in the reissue application.
2. In bracket 2, list the Court or administrative body which made the determination of fraud or inequitable conduct on the part of applicant.
3. In bracket 3, insert --fraud--, --inequitable conduct-- and/or --violation of duty of disclosure--.
4. In bracket 4, point out where in the opinion (or holding) of the Court or administrative body the determination of fraud, inequitable conduct or violation of duty of disclosure is set forth. Page number, column number, and paragraph information should be given as to the opinion (or holding) of the Court or administrative body. The examiner may add explanatory comments.
5. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.
¶ 14.22.fti Rejection, Pre-AIA 35 U.S.C. 251, No Error Without Deceptive Intention — Application filed Before Sept. 16, 2012, Evidence in the Application
Claims [1] rejected under pre-AIA 35 U.S.C. 251 because this application was filed before September 16, 2012 and error “without any deceptive intention” has not been established. In view of the reply filed on [2], a conclusion that any error was “without deceptive intention” cannot be supported. [3]
Examiner Note:
1. In bracket 1, list all claims in the reissue application.
2. In bracket 2, insert the filing date of the reply which provides an admission of fraud, inequitable conduct or violation of duty of disclosure, or that there was a judicial determination of same.
3. In bracket 3, insert a statement that there has been an admission or a judicial determination of fraud, inequitable conduct or violation of duty of disclosure which provide circumstances why applicant’s statement in the oath or declaration of lack of deceptive intent should not be taken as dispositive. Any admission of fraud, inequitable conduct or violation of duty of disclosure must be explicit, unequivocal, and not subject to other interpretation.
4. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.
¶ 14.22.01 Rejection, 35 U.S.C. 251, New Matter
Claim [1] rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows: [2]
Examiner Note:
1. In bracket 2, fill in the applicable page and line numbers and provide an explanation of your position, as appropriate.
2. A rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, should also be made if the new matter is added to the claims or is added to the specification and affects the claims. If new matter is added to the specification and does not affect the claims, an objection should be made based upon 35 U.S.C. 132 using form paragraph 7.28.
¶ 14.23 Terminal Disclaimer Proper
The terminal disclaimer filed on [1] disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of [2] has been reviewed and is accepted. The terminal disclaimer has been recorded.
Examiner Note:
1. In bracket 1, insert the date the terminal disclaimer was filed.
2. In bracket 2, list the Patent Number and/or Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
3. See MPEP § 1490 for discussion of requirements for a proper terminal disclaimer.
4. Use form paragraph 14.23.01 for reexamination proceedings.
5. For improper terminal disclaimers, see form paragraphs 14.24 et seq.
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¶ 14.23.01 Terminal Disclaimer Proper (Reexamination Only)
The terminal disclaimer filed on [1] disclaiming the terminal portion of the patent being reexamined which would extend beyond the expiration date of [2] has been reviewed and is accepted. The terminal disclaimer has been recorded.
Examiner Note:
1. In bracket 1, insert the date the terminal disclaimer was filed.
2. In bracket 2, list the Patent Number and/or Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
3. See MPEP § 1490 for discussion of requirements for a proper terminal disclaimer.
4. For improper terminal disclaimers, see the form paragraphs which follow.
¶ 14.24 Terminal Disclaimer Not Proper - Introductory Paragraph
The terminal disclaimer filed on [1] disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of [2] has been reviewed and is NOT accepted.
Examiner Note:
1. In bracket 1, insert the date the terminal disclaimer was filed.
2. In bracket 2, list the Patent Number and/or Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
3. One or more of the appropriate form paragraphs 14.26 to 14.32 MUST follow this form paragraph to indicate why the terminal disclaimer is not accepted.
4. Form paragraph 14.35 may be used to inform applicant that an additional disclaimer fee will not be required for the submission of a replacement or supplemental terminal disclaimer.
5. Do not use in reexamination proceedings, use form paragraph 14.25 instead.
¶ 14.25 Terminal Disclaimer Not Proper - Introductory Paragraph (Reexamination Only)
The terminal disclaimer filed on [1] disclaiming the terminal portion of the patent being reexamined which would extend beyond the expiration date of [2] has been reviewed and is NOT accepted.
Examiner Note:
1. In bracket 1, insert the date the terminal disclaimer was filed.
2. In bracket 2, list the Patent Number and/or the Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
3. One or more of the appropriate form paragraphs 14.26 to 14.32 MUST follow this form paragraph to indicate why the terminal disclaimer is not accepted.
4. Form paragraph 14.35 may be used to inform applicant that an additional disclaimer fee will not be required for the submission of a replacement or supplemental terminal disclaimer.
¶ 14.26 Does Not Comply With 37 CFR 1.321 “Sub-Heading” Only
The terminal disclaimer does not comply with 37 CFR 1.321 because:
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 and followed by one or more of the appropriate form paragraphs 14.26.01 to 14.27.03.
¶ 14.26.01 Extent of Interest Not Stated
The person who has signed the disclaimer has not stated the extent of his/her interest, or the business entity’s interest, in the application/patent. See 37 CFR 1.321(b)(3).
Examiner Note:
This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
¶ 14.26.02 Directed to Particular Claim(s)
It is directed to a particular claim or claims, which is not acceptable, since “the disclaimer must be of a terminal portion of the term of the entire [patent or] patent to be granted.” See MPEP § 1490.
Examiner Note:
This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
¶ 14.26.03 Not Signed
The terminal disclaimer was not signed.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
¶ 14.26.04 Application/Patent Not Identified
The application/patent being disclaimed has not been identified.
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Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
¶ 14.26.05 Application/Patent Improperly Identified
The application/patent being disclaimed has been improperly identified since the number used to identify the [1] being disclaimed is incorrect. The correct number is [2].
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. In bracket 1, insert --application-- or --patent--.
3. In bracket 2, insert the correct Application Number (including series code and serial no.) or the correct Patent Number being disclaimed.
4. A terminal disclaimer is acceptable if it includes the correct Patent Number or the correct Application Number or the serial number together with the proper filing date or the proper series code.
¶ 14.26.06.fti Not Signed by All Owners - Application Filed Before Sept. 16, 2012
This application was filed before September 16, 2012. The terminal disclaimer was not signed by all owners and, therefore, supplemental terminal disclaimers are required from the remaining owners.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed on or after September 16, 2012.
¶ 14.26.07 No Disclaimer Fee Submitted
The disclaimer fee of $ [1] in accordance with 37 CFR 1.20(d) has not been submitted, nor is there any authorization in the application file to charge a specified Deposit Account or credit card.
Examiner Note:
1. In bracket 1, insert the fee for a disclaimer.
2. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26. If the disclaimer fee was paid for a terminal disclaimer which was not accepted, applicant does not have to pay another disclaimer fee when submitting a replacement or supplemental terminal disclaimer, and this form paragraph should not be used.
¶ 14.26.08 Terminal Disclaimer Not Properly Signed - Application Filed On or After Sept. 16, 2012
This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant,
the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b).
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed before September 16, 2012.
¶ 14.26.09 Failure To State Capacity To Sign - Application Filed On or After Sept. 16, 2012
This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer has failed to state his/her capacity to sign for the juristic entity, and he/she has not been established as being authorized to act on behalf of the applicant.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed before September 16, 2012.
¶ 14.26.10 Terminal Disclaimer Identifies Party Who Is Not The Applicant - Application Filed On or After Sept. 16, 2012
This application was filed on or after September 16, 2012. The party identified in the terminal disclaimer is not the applicant of record. A request to change the applicant under 37 CFR 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR 1.46(c).
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed before September 16, 2012.
¶ 14.27.01 Lacks Clause of Enforceable Only During Period of Common Ownership
It does not include a recitation that any patent granted shall be enforceable only for and during such period that said patent is commonly owned with the application(s) or patent(s) which formed the basis for the double patenting rejection. See 37 CFR 1.321(c)(3) .
Examiner Note:
This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND 14.26.
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¶ 14.27.011 Lacks 37 CFR 1.321(d) statement for joint research agreement under 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2)&(3)
It does not include the waiver and enforceability provisions of 37 CFR 1.321(d). The terminal disclaimer must include a provision:
(1) waiving the right to separately enforce (a) any patent granted on that application or the patent being reexamined and (b) the reference patent, or any patent granted on the reference application which formed the basis for the double patenting rejection; and
(2) agreeing that any patent granted on that application or patent being reexamined shall be enforceable only for and during such period that said patent and the reference patent, or any patent granted on the reference application, which formed the basis for the double patenting are not separately enforced.
See 37 CFR 1.321(d)(3).
Examiner Note:
1. For applications filed before September 16, 2012, this form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26, and should be followed by either form paragraph 14.27.07.fti or form paragraph 14.27.08.
2. For applications filed on or after September 16, 2012, this form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26, and should be followed by either form paragraph 14.27.07.1 or form paragraph 14.27.08.
¶ 14.27.02 Fails To Disclaim Terminal Portion of Any Patent Granted On Subject Application
It fails to disclaim the terminal portion of any patent granted on the subject application.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Use this form paragraph when the period disclaimed is not the correct period or when no period is specified at all.
3. When using this form paragraph, give an example of proper terminal disclaimer language using form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012) following this or the series of statements concerning the defective terminal disclaimer.
¶ 14.27.03 Fails To Disclaim Terminal Portion of Subject Patent
It fails to disclaim the terminal portion of the subject patent.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Use this form paragraph in a reissue application or reexamination proceeding when the period disclaimed is not the correct period or when no period is specified at all.
¶ 14.27.04.fti Examples of Acceptable Terminal Disclaimer Language in Patent To Be Granted -Application Filed Before Sept. 16, 2012
This application was filed before September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:
I. If a Provisional Obviousness-Type Double Patenting Rejection Over A Pending Application was made, use:
The owner, _________________, of _____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number ________________, filed on _____________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and any patent granted on the reference application are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
II. If an Obviousness-Type Double Patenting Rejection Over A Prior Patent was made, use:
The owner, _________________, of _____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of prior patent No. ________________ as the term of said prior patent is presently shortened by any terminal disclaimer. The owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and the prior patent are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
Alternatively, Form PTO/SB/25 may be used for situation I, and Form PTO/SB/26 may be used for situation II.
Examiner Note:
1. This form paragraph may be used in an application filed before September 16, 2012.
2. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation), other than for a terminal disclaimer based on activities undertaken
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within the scope of a joint research agreement, use form paragraph 14.27.06.
3. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.07.fti for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.08 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).
¶ 14.27.04.1 Examples of Acceptable Terminal Disclaimer Language in Patent To Be Granted – Application Filed On or After Sept. 16, 2012
This application was filed on or after September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:
I. If a Provisional Obviousness-Type Double Patenting Rejection Over A Pending Application was made, use:
The applicant, ________________, owner of ____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number ______________, filed on ____________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The applicant hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and any patent granted on the reference application are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
II. If an Obviousness-Type Double Patenting Rejection Over A Prior Patent was made, use:
The applicant, ________________, owner of ____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of prior patent No. ________________ as the term of said prior patent is presently shortened by any terminal disclaimer. The applicant hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and the prior patent are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
Alternatively, Form PTO/AIA/25 may be used for situation I, and Form PTO/AIA/26 may be used for situation II.
Examiner Note:
1. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation), other than for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.06.
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.07.1 for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.08 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).
¶ 14.27.06 Examples of Acceptable Terminal Disclaimer Language in Patent (Reexamination Situation)
Examples of acceptable language for making the disclaimer of the terminal portion of the patent being reexamined (or otherwise for an existing patent) follow:
I. If a Provisional Obviousness-Type Double Patenting Rejection Over A Pending Application was made, or is otherwise believed to be applicable to the patent, use:
The patentee, ___________, owner of __________ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application No. ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The patentee hereby agrees that the instant patent shall be enforceable only for and during such period that the instant patent and any patent granted on the reference application are commonly owned. This agreement is binding upon the patentee, its successors, or assigns.
II. If an Obviousness-Type Double Patenting Rejection Over A Reference Patent was made, or is otherwise believed to be applicable to the instant patent, use:
The patentee, ___________, owner of ________ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of reference patent No. ______________ as the term of said reference patent is presently shortened by any terminal disclaimer. The patentee hereby agrees that the instant patent shall be enforceable only for and during such period that the instant patent and the reference patent are commonly owned. This agreement is binding upon the patentee, its successors, or assigns.
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Alternatively, Form PTO/AIA/25a may be used for situation I, and Form PTO/AIA/26a may be used for situation II.
Examiner Note:
1. To provide examples of acceptable terminal disclaimer language in a patent to be granted on an application (generally, an application being examined), other than for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012).
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.07.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012) for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.08 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).
¶ 14.27.07.fti Examples of Acceptable Terminal Disclaimer Language – Application Filed Before Sept. 16, 2012, Activities Undertaken Within the Scope of a Joint Research Agreement
This application was filed before September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:
I. If a Provisional Obviousness-Type Double Patenting Rejection Over A Pending Application was made, use:
The owner, __________________, of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application.
The owner of the instant application waives the right to separately enforce any patent granted on the instant application and any patent granted on the reference application. The owner of the instant application hereby agrees that any patent granted on the instant application and any patent granted on the reference application shall be enforceable only for and during such period that any patent granted on the instant application and any patent granted on the reference application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and any patent granted on the reference application, and are binding upon the owner of the instant application, its successors, or assigns.
II. If an Obviousness-Type Double Patenting Rejection Over A Prior Patent was made, use:
The owner, __________________, of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of prior patent No. _________________, as the term of said prior patent is presently shortened by any terminal disclaimer.
The owner of the instant application waives the right to separately enforce the prior patent and any patent granted on the instant application. The owner of the instant application hereby agrees that the prior patent and any patent granted on the instant application shall be enforceable only for and during such period that the prior patent and any patent granted on the instant application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and are binding upon the owner of the instant application, its successors, or assigns.
Examiner Note:
1. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation) for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.08.
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer in a situation other than one based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.04.fti for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.06 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).
¶ 14.27.07.1 Examples of Acceptable Terminal Disclaimer Language – Application Filed On or After Sept. 16, 2012, Activities Undertaken Within the Scope of a Joint Research Agreement
This application was filed on or after September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:
I. If a Provisional Obviousness-Type Double Patenting Rejection Over A Pending Application was made, use:
The applicant, __________________, owner of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number ______________, filed on
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______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application.
The applicant of the instant application waives the right to separately enforce any patent granted on the instant application and any patent granted on the reference application. The applicant of the instant application hereby agrees that any patent granted on the instant application and any patent granted on the reference application shall be enforceable only for and during such period that any patent granted on the instant application and any patent granted on the reference application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and any patent granted on the reference application, and are binding upon the applicant of the instant application, its successors, or assigns.
II. If an Obviousness-Type Double Patenting Rejection Over A Prior Patent was made, use:
The applicant, __________________, owner of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of prior patent No. _________________, as the term of said prior patent is presently shortened by any terminal disclaimer.
The applicant of the instant application waives the right to separately enforce the prior patent and any patent granted on the instant application. The applicant of the instant application hereby agrees that the prior patent and any patent granted on the instant application shall be enforceable only for and during such period that the prior patent and any patent granted on the instant application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and are binding upon the applicant of the instant application, its successors, or assigns.
Examiner Note:
1. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation) for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.08.
2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer in a situation other than one based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.04.1 for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.06 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).
¶ 14.27.08 Examples of Acceptable Terminal Disclaimer Language in Patent (Reexamination Situation; activities undertaken within the scope of a joint research agreement)
Examples of acceptable language for making the disclaimer of the terminal portion of the patent being reexamined (or otherwise for an existing patent) follow:
I. If a provisional obviousness-type double patenting rejection over a Pending Application was made, or is otherwise believed to be applicable to the patent, use:
The patentee, ______________, owner of _______ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application.
The patentee waives the right to separately enforce the instant patent and any patent granted on the pending reference application. The patentee agrees that the instant patent and any patent granted on the pending reference application shall be enforceable only for and during such period that the instant patent and the patent granted on the pending reference application are not separately enforced. The waiver, and this agreement, run with any patent granted on the pending reference application, and are binding upon the patentee, its successors, or assigns.
II. If an obviousness-type double patenting rejection over a Reference Patent was made, or is otherwise believed to be applicable to the instant patent, use:
The patentee, owner of _______ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of reference patent No. _________________, as the term of said reference patent is presently shortened by any terminal disclaimer.
The patentee waives the right to separately enforce the instant patent and the reference patent. The patentee agrees that the instant patent and the reference patent shall be enforceable only for and during such period that the instant patent and the reference patent are not separately enforced. The waiver, and this agreement, are binding upon the patentee, its successors, or assigns.
Examiner Note:
1. To provide examples of acceptable terminal disclaimer language in a patent to be granted on an application (generally, an application being examined) for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.07.fti (for applications filed before September 16, 2012) or form paragraph 14.27.07.1 (for applications filed on or after September 16, 2012).
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2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer in a situation other than one based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012) for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.06 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).
¶ 14.28.fti Failure To State Capacity To Sign – Application Filed Before Sept. 16, 2012
This application was filed before September 16, 2012. The person who signed the terminal disclaimer has failed to state his/her capacity to sign for the corporation, or other business entity or organization, and he/she has not been established as being authorized to act on behalf of the assignee.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26.
2. Do not use this form paragraph in an application filed on or after September 16, 2012.
¶ 14.29.fti Not Recognized as Officer of Assignee – Application Filed Before Sept. 16, 2012, “Sub-Heading” Only
This application was filed before September 16, 2012. The person who signed the terminal disclaimer is not an attorney or agent of record, is not recognized as an officer of the assignee, and has not been established as being authorized to act on behalf of the assignee. See MPEP § 324.
Examiner Note:
1. This form paragraph is to be used ONLY in applications filed before September 16, 2012 when the person signing the terminal disclaimer is not an authorized officer as defined in MPEP § 324 or is an attorney or agent not of record (e.g., acting in a representative capacity under 37 CFR 1.34).
2. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 and followed by form paragraph 14.29.02.fti when appropriate. An attorney or agent of record is always authorized to sign the terminal disclaimer, even though there is no indication that he or she is an officer of the assignee.
3. Use form paragraph 14.29.02.fti to explain how an official, other than a recognized officer, may properly sign a terminal disclaimer.
¶ 14.29.02.fti Criteria To Accept Terminal Disclaimer When Signed by a Non-Recognized Officer – Application Filed Before September 16, 2012
This application was filed before September 16, 2012. It would be acceptable for a person, other than a recognized officer, to sign a terminal disclaimer, provided the record for the
application includes a statement that the person is empowered to sign terminal disclaimers and/or act on behalf of the assignee.
Accordingly, a new terminal disclaimer which includes the above empowerment statement will be considered to be signed by an appropriate official of the assignee. A separately filed paper referencing the previously filed terminal disclaimer and containing a proper empowerment statement would also be acceptable, if filed with another copy of the previously filed terminal disclaimer.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.29.fti.
2. When form paragraph 14.29.fti is used to indicate that a terminal disclaimer is denied because it was not signed by a recognized officer nor by an attorney or agent of record, this form paragraph should be used to point out one way to correct the problem.
3. While an indication of the person’s title is desirable, its inclusion is not mandatory when this option is employed.
4. A sample terminal disclaimer should be sent with the Office action.
¶ 14.30.fti No Evidence of Chain of Title to Assignee - Application Filed Before Sept. 16, 2012
This application was filed before September 16, 2012. The assignee has not established its ownership interest in the application, in order to support the terminal disclaimer. There is no submission in the record establishing the ownership interest by either (a) providing documentary evidence of a chain of title from the original inventor(s) to the assignee and a statement affirming that the documentary evidence of the chain of title form the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11, or (b) specifying (by reel and frame number) where such documentary evidence is recorded in the Office (37 CFR 3.73).
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25.
2. Where an attorney or agent of record signs a terminal disclaimer, there is no need to provide a statement under 37 CFR 3.73. Thus, this form paragraph should not be used.
3. It should be noted that the documentary evidence or the specifying of reel and frame number may be found in the terminal disclaimer itself or in a separate paper.
¶ 14.30.01 No Evidence of Chain of Title to Assignee (Reexamination Situations)
The assignee has not established its ownership interest in the patent, in order to support the terminal disclaimer. There is no submission in the record establishing the ownership interest by either: (a) providing documentary evidence of a chain of title from the original inventor(s) to the assignee and a statement affirming that the documentary evidence of the chain of title
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from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11; or (b) specifying (by reel and frame number) where such documentary evidence is recorded in the Office (37 CFR 3.73).
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph or 14.25.
2. Where an attorney or agent of record signs a terminal disclaimer, there is no need to provide a statement under 37 CFR 3.73. Thus, this form paragraph should not be used.
3. It should be noted that the documentary evidence or the specifying of reel and frame number may be found in the terminal disclaimer itself or in a separate paper in the application.
¶ 14.30.02.fti Evidence of Chain of Title to Assignee - Submission Not Signed by Appropriate Party – Application Filed Before Sept. 16, 2012, Terminal Disclaimer Is Thus Not Entered
This application was filed before September 16, 2012. The submission establishing the ownership interest of the assignee is informal. There is no indication of record that the party who signed the submission establishing the ownership interest is authorized to sign the submission (37 CFR 3.73).
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25.
2. Where an attorney or agent of record signs a terminal disclaimer, there is no need to provide any statement under 37 CFR 3.73. Thus, this form paragraph should not be used.
3. This form paragraph should be followed by one of form paragraphs 14.16.02 or 14.16.03. In rare situations where BOTH form paragraphs 14.16.02 and 14.16.03 do not apply and thus cannot be used, the examiner should instead follow this form paragraph with a detailed statement of why there is no authorization to sign.
4. Use form paragraph 14.16.06 to point out one way to correct the problem.
5. Do not use this form paragraph in an application filed on or after September 16, 2012.
¶ 14.32 Application/Patent Which Forms Basis for Rejection Not Identified
The application/patent which forms the basis for the double patenting rejection is not identified in the terminal disclaimer.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25.
2. Use this form paragraph when no information is presented. If incorrect information is contained in the terminal disclaimer, use form paragraphs 14.26 and 14.26.05.
¶ 14.33 37 CFR 3.73 - Establishing Right of Assignee To Take Action
The following is a statement of 37 CFR 3.73 as applicable to applications filed on or after September 16, 2012:
37 CFR 3.73 Establishing right of assignee to take action.
(a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(1) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or
(2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
(c)
(1) In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
(2) If the submission is by an assignee of less than the entire right, title and interest (e.g., more than one
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assignee exists) the Office may refuse to accept the submission as an establishment of ownership unless:
(i) Each assignee establishes the extent (by percentage) of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties including inventors; or
(ii) Each assignee submits a statement identifying the parties including inventors who together own the entire right, title and interest and stating that all the identified parties owns the entire right, title and interest.
(3) If two or more purported assignees file conflicting statements under paragraph (c)(1) of this section, the Director will determine while, if any, purported assignees will be permitted to control prosecution of the application.
(d) The submission establishing ownership under paragraph (b) or (c) of this section must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(1) Including a statement that the person is authorized to act on behalf of the assignee;
(2) Being signed by a person having apparent authority to sign on behalf of the assignee; or
(3) For patent matters only, being signed by a practitioner of record.
The following is a statement of pre-AIA 37 CFR 3.73 as applicable to applications filed before September 16, 2012:
Pre-AIA 37 CFR 3.73 Establishing right of assignee to take action.
(a) The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b)
(1) In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g. , copy of an executed assignment). For trademark matters only, the
documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office. For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office ( e.g., reel and frame number).
(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
(c) For patent matters only:
(1) Establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.
(2) If the submission under this section is by an assignee of less than the entire right, title and interest, such assignee must indicate the extent (by percentage) of its ownership interest, or the Office may refuse to accept the submission as an establishment of ownership.
¶ 14.34 Requirement for Statement To Record Assignment Submitted With Terminal Disclaimer
The assignment document filed on [1] is not acceptable as the documentary evidence required by 37 CFR 3.73. The submission of the documentary evidence was not accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11. See 37 CFR 3.11 and MPEP § 302.
Examiner Note:
1. In bracket 1, insert the date the assignment document was filed.
2. This form paragraph should be used when an assignment document (an original, facsimile, or copy) is submitted to satisfy 37 CFR 3.73 was not accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being,
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submitted for recordation, and the documentary evidence has not been recorded among the assignment records of the Office.
¶ 14.35 Disclaimer Fee Not Required Twice - Applicant
It should be noted that applicant is not required to pay another disclaimer fee as set forth in 37 CFR 1.20(d) when submitting a replacement or supplemental terminal disclaimer.
Examiner Note:
1. This form paragraph can be used to notify an applicant that another disclaimer fee will not be required when a replacement or supplemental terminal disclaimer is submitted.
2. Use form paragraph 14.35.01 for providing notification to patent owner, rather than an applicant.
¶ 14.35.01 Disclaimer Fee Not Required Twice - Patent Owner
It should be noted that patent owner is not required to pay another disclaimer fee as set forth in 37 CFR 1.20(d) when submitting a replacement or supplemental terminal disclaimer.
Examiner Note:
This form paragraph can be used to notify a patent owner that another disclaimer fee will not be required when a replacement or supplemental terminal disclaimer is submitted.
¶ 14.36 Suggestion That “Applicant” Request a Refund
Since the required fee for the terminal disclaimer was previously paid, applicant’s payment of an additional terminal disclaimer fee is not required. Applicant may request a refund of this additional terminal disclaimer fee by submitting a written request for a refund and a copy of this Office action to: Mail Stop 16, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Examiner Note:
1. This form paragraph should be used to notify applicant that a refund can be obtained if another terminal disclaimer fee was paid when a replacement or supplemental terminal disclaimer was submitted.
2. Note - If applicant has authorized or requested a fee refund to be credited to a specific Deposit Account or credit card, then an appropriate credit should be made to that Deposit Account or credit card and this paragraph should NOT be used.
3. Use form paragraph 14.36.01 for providing notification to patent owner, rather than an applicant.
¶ 14.36.01 Suggestion That “Patent Owner” Request a Refund
Since the required fee for the terminal disclaimer was previously paid, patent owner’s payment of an additional terminal disclaimer fee is not required. Patent owner may request a refund of this additional terminal disclaimer fee by submitting a written request for a refund and a copy of this Office action to: Mail
Stop 16, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Examiner Note:
1. This form paragraph should be used to notify patent owner that a refund can be obtained if another terminal disclaimer fee was paid when a replacement or supplemental terminal disclaimer was submitted.
2. Note - If patent owner has authorized or requested a fee refund to be credited to a specific Deposit Account or credit card, then an appropriate credit should be made to that Deposit Account or credit card and this form paragraph should NOT be used.
¶ 14.37 Information about a Terminal Disclaimer Over a Pending Application
A terminal disclaimer may be effective to overcome a provisional obviousness-type double patenting rejection over a pending application (37 CFR 1.321(b) and (c)).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e T e r m i n a l D i s c l a i m e r s , r e f e r t o www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Examiner Note:
This form paragraph can be used to provide applicant information regarding the terminal disclaimer forms available on the USPTO web site that may be used to overcome a provisional obviousness-type double patenting rejection over a pending application.
¶ 14.38 Information about a Terminal Disclaimer Over a Prior Patent
A terminal disclaimer may be effective to overcome an obviousness-type double patenting rejection over a prior patent (37 CFR 1.321(b) and (c)).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e T e r m i n a l D i s c l a i m e r s , r e f e r t o www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Examiner Note:
This form paragraph can be used to provide applicant information regarding the terminal disclaimer forms available
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on the USPTO web site that may be used to overcome an obviousness-type double patenting rejection over a prior patent.
1500 Form Paragraphs 15.01 - 15.90
¶ 15.01 Conditions Under 35 U.S.C. 119(a)-(d), 172, 386(a) and (b)
Applicant is advised of conditions as specified in 35 U.S.C. 119(a)-(d), 172, 386(a) and (b). An application for a design patent for an invention filed in this country by any person who has, or whose legal representatives have previously filed an application for a design patent, or equivalent protection for the same design in a foreign country which offers similar privileges in the case of applications filed in the United States or in a WTO member country, or to citizens of the United States, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within six (6) months from the earliest date on which such foreign application was filed. If the design application is filed within two months from the expiration of the six-month period and the delay was unintentional, the right of priority in the design application may be restored by filing a petition under 37 CFR 1.55(c).
¶ 15.01.01 Conditions Under 35 U.S.C. 172 Not Met
The claim for priority under 35 U.S.C. 119(a)-(d), 386(a) or (b) to the [1] application is acknowledged, however, the claim for priority cannot be based on such application since it was filed more than six (6) months before the filing date of the subsequent application in the United States and no petition to restore the right of priority under 37 CFR 1.55(c) has been granted. 35 U.S.C 172.
Applicant may wish to file a petition under 37 CFR 1.55(c) to restore the right of priority if the subsequent application was filed within two months from the expiration of the six-month period and the delay was unintentional. A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a) - (d), 386(a) or (b) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the six-month period was unintentional. The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia, 22313-1450.
Examiner Note:
In bracket 1, insert the name of the foreign country.
¶ 15.02 Claimed Foreign Priority, No Certified Copy Filed
Acknowledgment is made of applicant’s claim for foreign priority based on an application filed in [1] on [2]. It is noted, however, that applicant has not filed a certified copy of the [3] application as required by 37 CFR 1.55. In the case of a design application, the certified copy must be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(g) together with the fee set forth in 37 CFR 1.17(g), that includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application. If the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
Examiner Note:
1. In bracket 1, insert the name of the country or intellectual property authority.
2. In bracket 2, insert the filing date of the foreign application.
3. In bracket 3, insert the application number of the foreign application.
¶ 15.03 Certified Copy Filed, But Proper Claim Not Made
Receipt is acknowledged of a certified copy of foreign application [1]. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d), 386(a) or (b), applicant should also file a claim for such priority as required by 35 U.S.C. 119(b). If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.
In the case of a design application, the claim for priority must be presented during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e). If the claim for priority is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
Examiner Note:
In bracket 1, insert the application number of the foreign application.
¶ 15.03.01.fti Foreign Filing More Than 6 Months Before U.S. Filing, Application Filed Before March 16, 2013
Acknowledgment is made of the [1] application identified in the oath or declaration or application data sheet which was filed more than six months prior to the filing date of the present application. Applicant is reminded that if the [2] application matured into a form of patent protection before the filing date
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of the present application it would constitute a statutory bar to the issuance of a design patent in the United States under pre-AIA 35 U.S.C. 102(d) in view of pre-AIA 35 U.S.C. 172.
Examiner Note:
In brackets 1 and 2, insert the name of country where application was filed.
¶ 15.04 Priority Under Bilateral or Multilateral Treaties
The United States will recognize claims for the right of priority under 35 U.S.C. 119(a)-(d) based on applications filed under such bilateral or multilateral treaties as the Hague Agreement Concerning the International Deposit of Industrial Designs, the Benelux Designs Convention and European Community Design. In filing a claim for priority of a foreign application previously filed under such a treaty, certain information must be supplied to the United States Patent and Trademark Office. The required information is (1) the application number: (2) the date of filing of the application, and (3) the name and location of the national or international governmental authority which received such application.
¶ 15.05 Design Patent Specification Arrangement (Ch. 16 Design Application)
The following order or arrangement should be observed in framing a design patent specification:
(1) Preamble, stating name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.
(2) Cross-reference to related applications.
(3) Statement regarding federally sponsored research or development.
(4) Description of the figure or figures of the drawing.
(5) Feature description.
(6) A single claim.
Examiner Note:
Do not use this form paragraph in an international design application.
¶ 15.05.01 Title of Design Invention
The title of a design being claimed must correspond to the name of the article in which the design is embodied or applied to. See MPEP § 1503.01 and 37 CFR 1.153 or 37 CFR 1.1067.
¶ 15.05.03 Drawing/Photograph Disclosure Objected To
The drawing/photograph disclosure is objected to because [1].
Examiner Note:
In bracket 1, insert the reason for the objection.
¶ 15.05.04 Replacement Drawing Sheets Required
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as amended. If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy of the drawing sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d) . If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
¶ 15.05.041 Color Drawing(s)/Photograph(s) Submitted
Color photographs or drawings have been submitted in this application. If replacement drawings are submitted, any showing of color in a black and white drawing is limited to the symbols used to line a surface to show color (MPEP § 608.02) and must comply with the written description requirements of 35 U.S.C. 112. Additionally, lining entire surfaces of a design to show color(s) may interfere with a clear showing of the design as required by 35 U.S.C. 112 because surface shading cannot be used simultaneously to define the contours of those surfaces. However, a surface may be partially lined for color with a description that the color extends across the entire surface; this technique would allow for the use of shading on the rest of the surface showing the contours of the design (37 CFR 1.152). In the alternative, a separate view, properly shaded to show the contours of the design but omitting the color(s), may be submitted if identified as shown only for clarity of illustration. Photographs and ink drawings are not permitted to be combined as formal drawings in one application.
In any drawing lined for color, the following descriptive statement must be inserted in the specification (the specific colors may be identified for clarity):
--The drawing is lined for color.--
However, some designs disclosed in color photographs/drawings cannot be depicted in black and white drawings lined for color. For example, a design may include multiple shades of a single color which cannot be accurately represented by the single symbol for a specific color. Or, the color may be a shade other than a true primary or secondary color as represented by the drafting symbols and lining the drawing with one of the drafting
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symbols would not be an exact representation of the design as originally disclosed.
Examiner Note:
Use this form paragraph when color drawing(s) or photograph(s) have been submitted in an application.
¶ 15.05.05 Drawing Correction Required Prior to Appeal
Any appeal of the design claim must include the correction of the drawings approved by the examiner in accordance with Ex parte Bevan, 142 USPQ 284 (Bd. App. 1964).
Examiner Note:
This form paragraph can be used in a FINAL rejection where an outstanding requirement for a drawing correction has not been satisfied.
¶ 15.07 Avoidance of New Matter
When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
¶ 15.07.01 Statutory Basis, 35 U.S.C. 171
The following is a quotation of 35 U.S.C. 171:
(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
(c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.
¶ 15.08 Lack of Ornamentality (Article Visible in End Use)
The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that it lacks ornamentality. To be patentable, a design must be “created for the purpose of ornamenting” the article in which it is embodied. See In re Carletti, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964).
The following evidence establishes a prima facie case of a lack of ornamentality: [1]
Evidence that demonstrates the design is ornamental may be submitted from the applicant in the form of an affidavit or declaration under 37 CFR 1.132:
(a) stating the ornamental considerations which entered into the design of the article; and
(b) identifying what aspects of the design meet those considerations.
An affidavit or declaration under 37 CFR 1.132 may also be submitted from a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design.
Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Inter. 1993).
Examiner Note:
In bracket 1, insert source of evidence of lack of ornamentality, for example, a utility patent, a brochure, a response to a letter of inquiry, etc.
¶ 15.08.01 Lack of Ornamentality (Article Not Visible in its Normal and Intended Use)
The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that the design lacks ornamentality since it appears there is no period in the commercial life of applicant’s [1] when its ornamentality may be a matter of concern. In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990); In re Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949).
The following evidence establishes a prima facie case of lack of ornamentality: [2]
In order to overcome this rejection, two types of evidence are needed:
(1) Evidence to demonstrate there is some period in the commercial life of the article embodying the claimed design when its ornamentality is a matter of concern. Such evidence may include a showing of a period in the life of the design when the ornamentality of the article may be a matter of concern to a purchaser during the process of sale. An example of this type of evidence is a sample of sales literature such as an advertisement or a catalog sheet which presents the appearance of the article as ornamental and not merely as a means of identification or instruction; and
(2) Evidence to demonstrate the design is ornamental. This type of evidence should demonstrate “thought of ornament” in the design and should be presented in the form of an affidavit or declaration under 37 CFR 1.132 from the applicant:
(a) stating the ornamental considerations which entered into the design of the article; and
(b) identifying what aspects of the design meet those considerations.
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An affidavit or declaration under 37 CFR 1.132 may also be submitted from a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design.
Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. See Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Inter. 1993).
Examiner Note:
1. In bracket 1, insert the name of the article in which the design is embodied.
2. In bracket 2, insert source of evidence of the article’s design being of no concern, for example, an analysis of a corresponding utility patent, a brochure, a response to a letter of inquiry, etc.
¶ 15.08.02 Simulation (Entire Article)
The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that the design lacks originality. The design is merely simulating [1] which applicant himself did not invent. See In re Smith, 25 USPQ 359, 1935 C.D. 565 (CCPA 1935); In re Smith, 25 USPQ 360, 1935 C.D. 573 (CCPA 1935); and Bennage v. Phillippi, 1876 C.D. 135, 9 OG 1159.
Examiner Note:
1. In bracket 1, insert the name of the article or person being simulated, e.g., the White House, Marilyn Monroe, an animal which is not stylized or caricatured in any way, a rock or shell to be used as paperweight, etc.
2. This form paragraph should be followed by form paragraph 15.08.03 when evidence has been cited to show the article or person being simulated.
¶ 15.08.03 Explanation of evidence cited in support of simulation rejection
Applicant’s design has in no way departed from the natural appearance of [1]. This reference is not relied on in this rejection but is supplied merely as representative of the usual or typical appearance of [2] in order that the claim may be compared to that which it is simulating.
Examiner Note:
1. In bracket 1, insert name of article or person being simulated and source (patent, publication, etc.).
2. In bracket 2, insert name of article or person being simulated.
¶ 15.09 35 U.S.C. 171 Rejection
The claim is rejected under 35 U.S.C. 171 as directed to nonstatutory subject matter because the design is not shown embodied in or applied to an article.
Examiner Note:
This rejection should be used when the claim is directed to surface treatment which is not shown with an article in either full or broken lines.
¶ 15.09.01 Offensive Subject Matter
The disclosure, and therefore the claim in this application, is rejected as being offensive and therefore improper subject matter for design patent protection under 35 U.S.C. 171. Such subject matter does not meet the statutory requirements of 35 U.S.C. 171. Moreover, since 37 CFR 1.3 proscribes the presentation of papers which are lacking in decorum and courtesy, and this includes depictions of caricatures in the disclosure, drawings, and/or a claim which might reasonably be considered offensive, such subject matter as presented herein is deemed to be clearly contrary to 37 CFR 1.3. See MPEP § 608.
¶ 15.09.02.aia Statement of Statutory Bases, 35 U.S.C. 171 and 35 U.S.C. 115-Improper Inventorship
The following is a quotation of 35 U.S.C. 171:
(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
(c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.
35 U.S.C. 115(a) reads as follows (in part):
An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.
The present application sets forth incorrect inventorship because [1].
The claim is rejected under 35 U.S.C. 171 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.
Examiner Note:
In bracket 1, insert the basis for concluding that the inventorship is incorrect.
¶ 15.09.03.aia Statement of Statutory Basis, 35 U.S.C. 115-Improper Inventorship
35 U.S.C. 115(a) reads as follows (in part):
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An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.
The present application sets forth incorrect inventorship because [1].
The claim is rejected under 35 U.S.C. 171 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.
Examiner Note:
1. This form paragraph is to be used ONLY when a rejection under 35 U.S.C. 171 on another basis has been made and the statutory text thereof is already present.
2. This form paragraph must be preceded by form paragraph 15.07.01 for a rejection based on improper inventorship.
3. In bracket 1, insert an explanation of the supporting evidence establishing that an improper inventor is named.
¶ 15.10.aia Application Examined UnderAIA First Inventor to File Provisions
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA.
Examiner Note:
This form paragraph should be used in any application subject to the first inventor to file provisions of the AIA.
¶ 15.10.fti Application Examined Under First Inventor to File Provisions
The present application, filed on or after March 16, 2013, is being examined under the pre-AIA first to invent provisions.
Examiner Note:
This form paragraph should be used in any application filed on or after March 16, 2013, that is subject to the pre-AIA prior art provisions.
¶ 15.10.15 Notice re prior art available under both pre-AIA and AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Examiner Note:
1. This form paragraph must be used in all Office Actions when a prior art rejection is made in an application with an
actual filing date on or after March 16, 2013 that claims priority to, or the benefit of, an application filed before March 16, 2013.
2. This form paragraph should only be used ONCE in an Office action.
¶ 15.11.aia 35 U.S.C. 102(a)(1) Rejection
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by [1] because the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Examiner Note:
1. In bracket 1, identify the reference applied against the claimed design.
2. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
¶ 15.11.fti Pre-AIA 35 U.S.C. 102(a) Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by [1] because the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country before the invention thereof by the applicant for patent.
Examiner Note:
1. In bracket 1, identify the reference applied against the claimed design.
2. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.12.fti Pre-AIA 35 U.S.C. 102(b) Rejection
The claim is rejected under 35 U.S.C. 102(b) as being anticipated by [1] because the invention was patented or described in a printed publication in this or a foreign country, or in public use or on sale in this country more than one (1) year prior to the application for patent in the United States.
Examiner Note:
1. In bracket 1, identify the reference applied against the claimed design.
2. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.13.fti Pre-AIA 35 U.S.C. 102(c) Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102(c) because the invention has been abandoned.
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¶ 15.14.fti Pre-AIA 35 U.S.C. 102(d)/35 U.S.C. 172 Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102(d), as modified by pre-AIA 35 U.S.C. 172, as being anticipated by [1] because the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate by the applicant, or his/her legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than six (6) months before the filing of the application in the United States.
Examiner Note:
In bracket 1, identify the reference applied against the claimed design.
¶ 15.15.aia 35 U.S.C. 102(a)(2) Rejection
The claim is rejected under 35 U.S.C. 102(a)(2) as being anticipated by [1] because the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Examiner Note:
1. In bracket 1, identify the reference applied against the claimed design.
2. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
3. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the AIA.
¶ 15.15.fti Pre-AIA 135 U.S.C. 102(e) Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by [1] because the invention was described in a patented or published application for patent by another filed in the United States before the invention thereof by the applicant for patent.
Examiner Note:
1. In bracket 1, identify the reference applied against the claimed design.
2. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.15.01.aia Explanation of rejection under 35 U.S.C. 102(a)(1) or 102(a)(2)
The appearance of [1] is substantially the same as that of the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
Examiner Note:
1. This paragraph should be included after paragraph 15.11.aia or 15.15.aia to explain the basis of the rejection.
2. In bracket 1, identify the reference applied against the claimed design.
¶ 15.15.01.fti Explanation of rejection under Pre-AIA 35 U.S.C. 102(a), (b), (d), or (e)
The appearance of [1] is substantially the same as that of the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
Examiner Note:
1. This paragraph should be included after paragraph 15.11.fti, 15.12.fti, 15.14.fti or 15.15.fti to explain the basis of the rejection.
2. In bracket 1, identify the reference applied against the claimed design.
3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.15.02.aia 35 U.S.C. 102(a)(2) Provisional rejection - design disclosed in another application with common inventor and/or assignee
The claim is provisionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by copending Application No. [1] which has a common [2] with the instant application.
Because the copending application names another inventor and has an earlier effective filing date, it would constitute prior art under 35 U.S.C. 102(a)(2), if published under 35 U.S.C. 122(b) or patented. This provisional rejection under 35 U.S.C. 102(a)(2) is based upon a presumption of future publication or patenting of the copending application.
This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the design in the reference was obtained directly or indirectly from the inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject
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to an obligation of assignment to the same person or subject to a joint research agreement.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph is used to provisionally reject over a copending application (utility or design) with an earlier filing date that discloses the claimed invention which has not been patented or published under 35 U.S.C. 122. The copending application must have either a common assignee or at least one common inventor.
2. In bracket 2, insert inventor or assignee.
3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
4. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the AIA.
¶ 15.15.02.fti Provisional Pre-AIA 35 U.S.C. 102(e) rejection - design disclosed but not claimed in another application with common inventor and/or assignee
The claim is provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by copending Application No. [1] which has a common [2] with the instant application.
Based upon the different inventive entity and the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e), if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future publication or patenting of the copending application.
Since the design claimed in the present application is not the same invention claimed in the [3] application, the examiner suggests overcoming this provisional rejection in one of the following ways: (A) a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “by another;” (B) a showing of a date of invention for the instant application prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a); (C) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; or (D) perfecting the benefit claim under 35 U.S.C. 120 by adding a specific reference to the prior filed application in compliance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after
September 16, 2012, the specific reference must be included in an application data sheet.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph is used to provisionally reject over a copending application (utility or design) with an earlier filing date that discloses (but does not claim) the claimed invention which has not been patented or published under 35 U.S.C. 122. The copending application must have either a common assignee or at least one common inventor.
2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) (form paragraph 7.12.fti) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) (form paragraph7.12.01.fti) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA or pre-AIPA 35 U.S.C. 102(e) date.
3. In bracket 2, insert inventor or assignee.
4. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.15.03.fti Pre-AIA 35 U.S.C. 102(e) provisional rejection - design claimed in an earlier-filed design patent application with common inventor and/or assignee
The claim is provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by the claim in copending Design Patent Application No. [1] which has a common [2] with the instant application.
Based upon the different inventive entity and the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e), if patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future patenting of the copending application. The rejection may be overcome by abandoning the earlier-filed copending application.
Examiner Note:
1. In bracket 2, insert inventor or assignee.
2. This form paragraph must be preceded by form paragraph 15.24.05.fti to notify the applicant that the question of patentability under pre-AIA 35 U.S.C. 102(f)/(g) also exists.
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3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.15.04.aia 35 U.S.C. 102(a)(2) rejection - design disclosed in a patent
The claim is rejected under 35 U.S.C. 102(a)(2) as being anticipated by patent [1].
Because the patent names another inventor and has an earlier effective filing date, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the disclosure in the reference was obtained directly or indirectly from the inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is disclosed in the drawings of an earlier-filed design or utility patent. When the design claimed in the application being examined is disclosed in the drawings of an earlier-filed design patent, it would most often be in the form of subcombination subject matter, (part or portion of an article), that is patentably distinct from the claim for the design embodied by the combination or whole article. It may also be unclaimed subject matter depicted in broken lines in the earlier-filed application.
2. In bracket 1, insert number of patent.
3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
¶ 15.15.04.fti Pre-AIA 35 U.S.C. 102(e) rejection - design disclosed but not claimed in a patent
The claim is rejected under pre-AIA 35 U.S.C. 102 as being anticipated by patent [1].
Based upon the different inventive entity and the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102.
Since the design claimed in the present application is not the same invention claimed in patent [2], the examiner suggests overcoming this rejection in one of the following ways: (A) a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “by another;” (B) a showing of a date of invention for the instant application prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a); (C) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; or (D) perfecting the benefit claim 35 U.S.C. 120 by adding a specific reference to the prior filed application in compliance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is disclosed in the drawings of an earlier-filed design or utility patent but is not claimed therein. When the design claimed in the application being examined is disclosed in the drawings of an earlier-filed design patent, it would most often be in the form of subcombination subject matter, (part or portion of an article), that is patentably distinct from the claim for the design embodied by the combination or whole article. It may also be unclaimed subject matter depicted in broken lines in the earlier-filed application.
2. In brackets 1 and 2, insert number of patent.
3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.16.fti Pre-AIA 35 U.S.C. 102(f) Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102 because applicant did not himself invent the subject matter sought to be patented.
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¶ 15.17.aia Pre-AIA 35 U.S.C. 102(g) Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102 because, before the applicant’s invention thereof, the invention was made in this country by another who had not abandoned, suppressed or concealed it.
A rejection based on this statutory basis can be made in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013, or (2) a specific reference under 35 U.S.C. 120, 35 U.S.C. 121, or 35 U.S.C. 365(c) to any patent or application that contains or contained at any time such a claim.
Examiner Note:
For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
¶ 15.17.fti Pre-AIA 35 U.S.C. 102(g) Rejection
The claim is rejected under pre-AIA 35 U.S.C. 102(g) because, before the applicant’s invention thereof, the invention was made in this country by another who had not abandoned, suppressed or concealed it.
Examiner Note:
For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.fti and 15.10.15.
¶ 15.18.aia 35 U.S.C. 103 Rejection (Single Reference)
The claim is rejected under 35 U.S.C. 103 as being unpatentable over [1]. Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
Examiner Note:
For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
¶ 15.18.fti Pre-AIA 35 U.S.C. 103(a) Rejection (Single Reference)
The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [1]. Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
Examiner Note:
1. In bracket 1, insert the reference citation.
2. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.aia 35 U.S.C. 103 Rejection (Multiple Reference)
The claim is rejected under 35 U.S.C. 103 as being unpatentable over [1] in view of [2].
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
Examiner Note:
For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.aia and 15.10.15.
¶ 15.19.fti Pre-AIA 35 U.S.C. 103(a) Rejection (Multiple References)
The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [1] in view of [2].
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer of ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
Examiner Note:
For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.01 Summary Statement of Rejections
The claim stands rejected under [1].
Examiner Note:
1. Use as summary statement of rejection(s) in Office action.
2. In bracket 1, insert appropriate basis for rejection, i.e., statutory provisions, etc.
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¶ 15.19.02.aia Preface 35 U.S.C. 102(a)(2)/103 rejection - Different inventors, common assignee, obvious designs, no evidence of common ownership not later than effective filing date of claimed design
The claim is directed to a design not patentably distinct from the design of commonly assigned [1]. Specifically, the claimed design is different from the one in [2] in that [3]. These differences are considered obvious and do not patentably distinguish the overall appearance of the claimed design over the design in [4].
The commonly assigned [5], discussed above, names another inventor and was effectively filed before the present application. Therefore, it qualifies as prior art under 35 U.S.C. 102(a)(2) and would form the basis for a rejection of the claimed design in the present application under 35 U.S.C. 103 if the claimed design and the designed disclosed were not commonly owned not later than the effective filing date of the claimed design under examination.
This rejection under 35 U.S.C. 102(a)(2)/103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the design in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the design disclosed and the claimed design, not later than the effective filing date of the claimed design, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Examiner Note:
1. An obviousness double patenting rejection may also be included in the action.
2. In brackets 1, 2, 4 and 5, insert "patent" and number, or "copending application" and serial number.
3. In bracket 3, identify differences between design claimed in present application and that claimed in earlier-filed patent or copending application.
4. This form paragraph should only be used ONCE in an Office action.
5. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
¶ 15.19.02.fti Preface pre-AIA 35 U.S.C. 102(e)/103(a) rejection - Different inventors, common assignee, obvious
designs, no evidence of common ownership at time later design was made
The claim is directed to a design not patentably distinct from the design of commonly assigned [1]. Specifically, the claimed design is different from the one in [2] in that [3]. These differences are considered obvious and do not patentably distinguish the overall appearance of the claimed design over the design in [4].
The commonly assigned [5], discussed above, has a different inventive entity from the present application. Therefore, it qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) and forms the basis for a rejection of the claim in the present application under pre-AIA 35 U.S.C. 103(a) if the conflicting design claims were not commonly owned at the time the design in this application was made. In order to resolve this issue, the applicant, assignee or attorney of record can state that the conflicting designs were commonly owned at the time the design in this application was made, or the assignee can name the prior inventor of the conflicting subject matter.
A showing that the designs were commonly owned at the time the design in this application was made will overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under pre-AIA 35 U.S.C. 102(f) or 35 U.S.C. 102(g), or pre-AIA 35 U.S.C. 102(e) for applications filed on or after November 29, 1999.
Examiner Note:
1. This form paragraph should be used when the application being examined is commonly assigned with a conflicting application or patent, but there is no indication that they were commonly assigned at the time the invention was actually made.
2. If the conflicting claim is in a patent with an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e)/35 U.S.C. 103(a) should be made.
3. If the conflicting claim is in a commonly assigned, copending application with an earlier filing date, a provisional rejection under pre-AIA 35 U.S.C. 102(e)/35 U.S.C. 103(a) should be made.
4. An obviousness double patenting rejection may also be included in the action.
5. In brackets 1, 2, 4 and 5, insert patent and number, or copending application and serial number.
6. In bracket 3, identify differences between design claimed in present application and that claimed in earlier filed patent or copending application.
7. This form paragraph should only be used ONCE in an Office action.
8. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is
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a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
9. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.03.aia 35 U.S.C. 102(a)(2)/103 Provisional Rejection - design disclosed in another application with common inventor and/or assignee
The claim is provisionally rejected under 35 U.S.C. 103 as being obvious over copending Application No. [1] which has a common [2] with the instant application. Because the copending application names another inventor and has an earlier effective filing date, it would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122(b) or patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption of future publication or patenting of the conflicting application.
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
[3]
This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the design in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.
2. In brackets 1 and 4 insert serial number of copending application.
3. In bracket 2, insert inventor or assignee.
4. In bracket 3, provide explanation of obviousness including differences.
5. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.03.fti Provisional Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design disclosed but not claimed in another application with common inventor and/or assignee
The claim is provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over copending Application No. [1] which has a common [2] with the instant application. Based upon the different inventive entity and the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future publication or patenting of the conflicting application.
Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
[3]
Since the design claimed in the present application is not the same invention claimed in the [4] application, this provisional rejection may be overcome by a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “by another,” or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a). For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 706.02(l)(1) and § 706.02(l)(2).
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Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.
2. In brackets 1 and 4 insert serial number of copending application.
3. In bracket 2, insert inventor or assignee.
4. In bracket 3, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70.fti and 15.67 or 15.68.
5. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102 only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120 , 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
6. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.04.fti Pre-AIA 35 U.S.C. 102(e)/103(a) Provisional Rejection - design claimed in an earlier-filed design patent application with common inventor and/or assignee
The claim is provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over the claim in copending Design Patent Application No. [1] which has a common [2] with the instant application. Based upon the different inventive entity and the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e) if patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future patenting of the conflicting application.
Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
[3]
Since the design claimed in the present application is not patentably distinct from the design claimed in the [4] application, this provisional rejection may be overcome by merging the two applications into a single continuation-in-part and abandoning the separate parent applications. For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in an earlier-filed copending application.
2. A provisional obviousness-type double patenting rejection must also be included in the action.
3. In brackets 1 and 4, insert serial number of copending application.
4. In bracket 2, insert inventor or assignee.
5. In bracket 3, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70.fti and 15.67 or 15.68.
6. This form paragraph must be preceded by form paragraph 15.19.02.fti.
7. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.05.aia 35 U.S.C. 102(a)(2)/103 rejection - design disclosed, no common inventors or common assignees
The claim is rejected under 35 U.S.C. 103 as being obvious over [1].
Because the upon the reference names another inventor and has an earlier effective filing date, it constitutes prior art under 35 U.S.C. 102(a)(2).
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
[2]
This rejection under 35 U.S.C. 102(a)(2)/103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application
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and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) or (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B).
Examiner Note:
1. In bracket 1, insert document number that qualifies as prior art under 35 U.S.C. 102(a)(2).
2. In bracket 2, provide explanation of obviousness including differences.
3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.
¶ 15.19.05.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design disclosed but not claimed
The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over [1].
Based upon the different inventive entity and the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e).
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
[2]
Since the design claimed in the present application is not the same invention claimed in the [3] patent, this rejection may be overcome by a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “ by another,” or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a). For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP §§ 706.02(l)(1) and 706.02(l)(2).
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject
matter disclosed in the drawings of an earlier filed design or utility patent, or application publication, but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.
2. In brackets 1 and 3, insert number of the U.S. patent, U.S. patent application publication, or the WIPO publication of an international application that qualifies as prior art under pre-AIA 35 U.S.C. 102(e). See note 4 below.
3. In bracket 2, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70.fti and 15.67 or 15.68.
4. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102 (e) date.
5. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.06.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design claimed in a design patent with an earlier effective filing date and common assignee
The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over the claim in design patent [1].
Based upon the different inventive entity and the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e).
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
[2]
Since the design claimed in the present application is not patentably distinct from the design claimed in the [3] patent,
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this rejection may be overcome by submitting an oath or declaration under 37 CFR 1.131(c) stating that this application and the reference are currently owned by the same party and that the inventor named in this application is the prior inventor of the subject matter in the reference under 35 U.S.C. 104 as in effect on March 15, 2013. In addition, a terminal disclaimer in accordance with 37 CFR 1.321(c) is also required. For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP §§ 706.02(l)(1) and 706.02(l)(2).
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in a design patent having an earlier effective date and a common assignee.
2. An obviousness-type double patenting rejection must also be included in the action.
3. In brackets 1 and 3, insert number of patent.
4. In bracket 2, provide explanation of obviousness including differences and follow the explanation by form paragraphs 15.70.fti and 15.67 or 15.68.
5. This form paragraph must be preceded by form paragraph 15.19.02.fti.
6. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.19.07.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design claimed in a design patent having an earlier effective filing date and no common assignee
The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over the claim in design patent [1].
Based upon the different inventive entity and the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e).
Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.
[2]
Examiner Note:
1. This form paragraph should be used when the claimed design in the application being examined is obvious over the
design claimed in a design patent having an earlier effective filing date.
2. In bracket 2, provide explanation of obviousness including differences and follow explanation with form paragraphs 15.70.fti and 15.67 or 15.68.
3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.
¶ 15.20.02 Suggestion To Overcome Rejection Under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, First and Second Paragraphs (Ch. 16 Design Application)
Applicant may disclaim the areas or portions of the design which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by converting them to broken lines and amend the specification to include a statement that the portions of the [1] shown in broken lines form no part of the claimed design.
Examiner Note:
1. For international design applications, use form paragraph 29.27 instead.
2. In bracket 1, insert title of the article.
¶ 15.21 Rejection, 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, First And Second Paragraphs
The claim is rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The claim is indefinite and nonenabling [1].
Examiner Note:
1. This form paragraph should not be used when it is appropriate to make one or more separate rejections under 35 U.S.C. 112(a) and/or (b) or pre-AIA 35 U.S.C. 112, first and/or second paragraph(s).
2. In bracket 1, a complete explanation of the basis for the rejection should be provided.
¶ 15.21.01 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, (Second Paragraph) (Additional Information Requested)
The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The title of the article in which the design is embodied or applied is too ambiguous and therefore indefinite for the examiner to make a proper examination of the claim under 37 CFR 1.104.
Applicant is therefore requested to provide a sufficient explanation of the nature and intended use of the article in which
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the claimed design is embodied or applied. See MPEP § 1503.01. Additional information, if available, regarding analogous fields of search, pertinent prior art, advertising brochures and the filing of copending utility applications would also prove helpful. If a utility application has been filed, please furnish its application number.
This information should be submitted in the form of a separate paper, and should not be inserted in the specification (37 CFR 1.56). See also 37 CFR 1.97 and 1.98.
¶ 15.22 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph
The claim is rejected under 35 U.S.C. 112(b) or (pre-AIA) 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The claim is indefinite [1].
Examiner Note:
1. Use this form paragraph when the scope of the claimed design cannot be determined.
2. In bracket 1, provide a full explanation of the basis for the rejection.
¶ 15.22.02 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph (“Or the Like” In Claim)
The claim is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The claim is indefinite because of the use of the phrase “[1]” following the title. Cancellation of said phrase in the claim and each occurrence of the title throughout the papers, except the oath or declaration, will overcome the rejection. See Ex parte Pappas , 23 USPQ2d 1636 (Bd. App. & Inter. 1992) and 37 CFR 1.153.
Examiner Note:
1. This rejection should be used where there is another rejection in the Office action. For issue with an examiner’s amendment, see form paragraph 15.69.01.
2. In bracket 1, insert --or the like-- or --or similar article--.
3. This form paragraph should not be used when “or the like” or “or similar article” in the title is directed to the environment of the article embodying the design.
¶ 15.22.03 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph (Title Fails to Specify a Known Article of Manufacture)
The claim is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as indefinite in that the title, as set forth in the claim, fails to identify an article of manufacture and the drawing disclosure does not inherently identify the article in which the design is embodied. Ex parte Strijland , 26 USPQ2d 1259, 1263 (Bd. Pat. App. & Int. 1992). Therefore, any attempt
to clarify the title by specifying the article in which the design is embodied may introduce new matter. See 35 U.S.C. 132 and 37 CFR 1.121.
¶ 15.23 35 U.S.C. 171 Double Patenting Rejection (Design-Design)
The claim is rejected under 35 U.S.C. 171 on the ground of double patenting since it is claiming the same design as that claimed in United States Design Patent No. [1].
Examiner Note:
Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.
¶ 15.23.01 35 U.S.C. 171 Provisional Double Patenting Rejection (Design-Design)
The claim is provisionally rejected under 35 U.S.C. 171 on the ground of double patenting since it is claiming the same design as that claimed in copending Application No. [1]. This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Examiner Note:
Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.
¶ 15.23.02 Summary for “Same Invention” – Type Double Patenting Rejections
Applicant is advised that a terminal disclaimer may not be used to overcome a “same invention” type double patenting rejection. In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969);
MPEP § 804.02.
Examiner Note:
This form paragraph should follow all “same invention” type double patenting rejections.
¶ 15.24 Nonstatutory Double Patenting Rejection (Single Reference)
The claim is rejected on the ground of nonstatutory double patenting of the claim in United States Patent No. [1]. Although the conflicting claims are not identical, they are not patentably distinct from each other because [2].
Examiner Note:
1. In bracket 1, insert prior U.S. Patent Number.
2. In bracket 2, the differences between the conflicting claims must be identified and indicated as being minor and not distinguishing the overall appearance of one over the other.
3. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.67.
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¶ 15.24.03 Provisional Nonstatutory Double Patenting Rejection (Single Reference)
The claim is provisionally rejected on the grounds of nonstatutory double patenting of the claim of copending Application No. [1]. Although the conflicting claims are not identical, they are not patentably distinct from each other because [2]. This is a provisional nonstatutory double patenting rejection because the conflicting claims have not in fact been patented.
Examiner Note:
1. In bracket 1, insert conflicting application number.
2. In bracket 2, the differences between the conflicting claims must be identified and indicated as being minor and not distinguishing the overall appearance of one over the other.
3. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.67.
¶ 15.24.04 Provisional Nonstatutory Double Patenting Rejection (Multiple References)
The claim is provisionally rejected on the grounds of nonstatutory double patenting of the claim of copending Application No. [1] in view of [2]. At the time applicant made the design, it would have been obvious to a designer of ordinary skill in the art to [3] as demonstrated by [4]. This is a provisional nonstatutory double patenting rejection because the conflicting claims have not in fact been patented.
Examiner Note:
1. In bracket 1, insert conflicting application number.
2. In bracket 2, insert secondary reference(s).
3. In bracket 3, insert an explanation of how the conflicting claim in the copending application is modified.
4. In bracket 4, identify the secondary reference(s) teaching the modification(s).
5. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.68.
¶ 15.24.05.fti Identical Claim: Common Assignee
The claim is directed to the same invention as that of the claim of commonly assigned copending Application No. [1]. The issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) of this single invention must be resolved. Since the U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP § 2302), the assignee is required to state which entity is the prior inventor of the conflicting subject matter. A terminal disclaimer has no effect in this situation since the basis for refusing more than one patent is priority of invention under pre-AIA 35 U.S.C.102(f) or (g) and not an extension of monopoly. Failure to comply with this requirement will result in a holding of abandonment of this application.
¶ 15.24.06 Basis for Nonstatutory Double Patenting, “Heading Only”
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.131(c). A registered attorney or agent of record may sign a terminal disclaimer.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e T e r m i n a l D i s c l a i m e r s , r e f e r t o www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Examiner Note:
This form paragraph must precede all nonstatutory double patenting rejections as a heading, except “same invention” type.
¶ 15.24.07 Double Patenting Rejection (Design-Utility)
The claim is rejected under the judicially created doctrine of double patenting as being directed to the same invention as that set forth in claim [1] of United States Patent No. [2]. See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).
Examiner Note:
Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.
¶ 15.24.08 Provisional Double Patenting Rejection (Design-Utility)
The claim is provisionally rejected under the judicially created doctrine of double patenting as being directed to the same invention as that set forth in claim [1] of copending Application No. [2]. See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).
This is a provisional double patenting rejection because the claims have not in fact been patented.
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Examiner Note:
Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.
¶ 15.25 Nonstatutory Double Patenting Rejection (Multiple References)
The claim is rejected on the grounds of nonstatutory double patenting of the claim(s) in United States Patent No. [1] in view of [2]. At the time applicant made the design, it would have been obvious to a designer of ordinary skill in the art to [3] as demonstrated by [4].
Examiner Note:
1. In bracket 1, insert conflicting patent number.
2. In bracket 2, insert secondary reference(s).
3. In bracket 3, insert an explanation of how the conflicting claim in the patent is modified.
4. In bracket 4, identify the secondary reference(s) teaching the modification(s).
5. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.68.
¶ 15.26 Identification of Prior Application(s) in Nonprovisional Applications - Benefit Claimed
Applicant is reminded of the following requirement:
To claim the benefit of a prior-filed application, a continuation or divisional application (other than a continued prosecution application filed under 37 CFR 1.53(d)), must include a specific reference to the prior-filed application in compliance with 37 CFR 1.78. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.
¶ 15.27 Restriction Under 35 U.S.C. 121
This application discloses the following embodiments:
Embodiment 1 - Figs. [1]
Embodiment 2 - Figs. [2]
[3]
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably
distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The [4] create(s) patentably distinct designs.
Because of the differences identified, the embodiments are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
The above embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment [5]
Group II: Embodiment [6]
[7]
Restriction is required under 35 U.S.C. 121 to one of the above identified patentably distinct groups of designs.
A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement is traversed, 37 CFR 1.143. Any reply that does not include election of a single group will be held nonresponsive. Applicant is also requested to direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.
Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art will apply equally to all other embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered once the groups have been determined to comprise a single inventive concept.
In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).
Examiner Note:
1. In bracket 3, add embodiments as necessary.
2. In bracket 4, insert an explanation of the difference(s) between the embodiments.
3. In bracket 7, add groups as necessary.
¶ 15.27.01 Restriction Under 35 U.S.C. 121 (Obvious Variations Within Group)
This application discloses the following embodiments:
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Embodiment 1 - Figs. [1]
Embodiment 2 - Figs. [2]
[3]
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
The above embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment [4]
Group II: Embodiment [5]
[6]
The embodiments disclosed within each group have overall appearances that are basically the same. Furthermore, the differences between them are considered minor and patentably indistinct, or are shown to be obvious in view analogous prior art cited. Therefore, they are considered by the examiner to be obvious variations of one another within the group. These embodiments thus comprise a single inventive concept and are grouped together. However, the [7] patentably distinguishes each group from the other(s).
Because of the differences identified, the embodiments of each Group are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of the designs.
A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement is traversed, 37 CFR 1.143. Any reply that does not include election of a single group will be held nonresponsive. Applicant is also requested to direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.
Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art will apply equally to all other groups. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will
be considered once the groups have been determined to comprise a single inventive concept.
In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).
Examiner Note:
1. In bracket 3, add embodiments as necessary.
2. In bracket 6, add groups as necessary.
3. In bracket 7, insert an explanation of the difference(s) between the groups.
¶ 15.27.02 Restriction Not Required - Change In Appearance (First Action - Non Issue)
This application discloses the following embodiments:
Embodiment 1 - Figs. [1]
Embodiment 2 - Figs. [2]
[3]
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. Any rejection of one embodiment over prior art will apply equally to all other embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this action will be considered an admission of lack of patentable distinction between the above identified embodiments.
Examiner Note:
In bracket 3, add embodiments as necessary.
¶ 15.27.03 Restriction Not Required - Change In Appearance (First Action Issue)
This application discloses the following embodiments:
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Embodiment 1 - Figs. [1]
Embodiment 2 - Figs. [2]
[3]
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application.
Examiner Note:
In bracket 3, add embodiments as necessary.
¶ 15.27.04 Restriction Not Required – Change In Scope (First Action – Non Issue)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1]
Embodiment 2 – Figs. [2]
[3]
Designs which involve a change in scope may be included in the same design application only if they are patentably indistinct. However, design patent protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the difference in scope between embodiments is considered minor and patentably indistinct. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. Any rejection of one embodiment over prior art will apply equally to all other embodiments. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this Office action will be
considered an admission of lack of patentable distinction between the embodiments.
Examiner Note:
In bracket 3, add embodiments as necessary.
¶ 15.27.05 Restriction Not Required – Change In Scope (First Action Issue)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1]
Embodiment 2 – Figs. [2]
[3]
Designs which involve a change in scope may be included in the same design application only if they are patentably indistinct. However, design patent protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the difference in scope between embodiments is considered minor and patentably indistinct. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application.
Examiner Note:
In bracket 3, add embodiments as necessary.
¶ 15.27.06 Restriction Not Required (Change in Appearance and Scope – First Action Non Issue)
This application discloses the following embodiments:
Embodiment 1 - Figs. [1] drawn to a [2].
Embodiment 2 - Figs. [3] drawn to a [4].
[5]
Embodiments [6] involve a difference in appearance. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
Embodiment(s) [7] directed to the combination(s) in relation to Embodiment(s) [8] directed to the subcombination(s)/element(s). Designs which involve a change in scope may be included in
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the same design application only if they are patentably indistinct. However, design protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. Any rejection of one embodiment over prior art will apply equally to all other embodiments. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this action will be considered an admission of lack of patentable distinction between the embodiments.
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. Insert an explanation of the differences between the designs in the explanations of the embodiments; for example, Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.
3. It is possible and proper that embodiments may be listed in both explanatory paragraphs.
¶ 15.27.07 Restriction Not Required (Change in Appearance and Scope – First Action Issue)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1] drawn to a [2].
Embodiment 2 – Figs. [3] drawn to a [4].
[5]
Embodiment(s) [6] involve a difference in appearance. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
Embodiment(s) [7] directed to the combination(s) in relation to Embodiment(s) [8] directed to the subcombination(s)/element(s). Designs which involve a change in scope may be included in the same design application only if they are patentably indistinct. However, design protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they were deemed to be obvious variations and are being retained and examined in the same application. Accordingly, they were deemed to comprise a single inventive concept and have been examined together.
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. Insert an explanation of the differences between the designs in the explanations of the embodiments; for example, Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.
3. It is possible and proper that embodiments may be listed in both explanatory paragraphs.
¶ 15.27.08 Restriction with Differences in Appearance and Scope
This application discloses the following embodiments:
Embodiment 1: Figs. [1] drawn to a [2].
Embodiment 2: Figs. [3] drawn to a [4].
[5]
The above embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment [6]
Group II: Embodiment [7]
[8]
Group(s) [9] involve a difference in appearance. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The [10] creates patentably distinct designs.
Because of the differences identified, the embodiments are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
Group(s) [11] directed to the combination(s) in relation to Group(s) [12] directed to the subcombination(s)/element(s). The designs as grouped are distinct from each other since under the law a design patent covers only the design disclosed as an
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entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965). It is further noted that combination/subcombination subject matter, if patentably distinct, must be supported by separate claims, whereas only a single claim is permissible in a design patent application. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
In any groups that include multiple embodiments, the embodiments are considered by the examiner to be obvious variations of one another within the group and, therefore, patentably indistinct. These embodiments thus comprise a single inventive concept and are grouped together.
Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.
A reply to this requirement must include an election of a single group for prosecution on the merits even if this requirement is traversed. 37 CFR 1.143. Any reply that does not include an election of a single group will be held nonresponsive. Applicant is also requested to direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.
Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art will apply equally to all other groups. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered once the groups have been determined to comprise a single inventive concept.
In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. In bracket 8, add embodiments as necessary.
3. Insert an explanation of the differences between the designs in the explanations of the embodiments; for example, Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.
4. It is possible and proper that embodiments may be listed in both explanatory paragraphs.
5. In bracket 10, insert an explanation of the differences between the designs.
¶ 15.28 Telephone Restriction Under 35 U.S.C. 121
This application discloses the following embodiments:
Embodiment 1 - Figs. [1]
Embodiment 2 - Figs. [2]
[3]
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The [4]
create(s) patentably distinct designs. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
Because of the differences identified, the embodiments of each Group are considered to either have overall appearances that are not basically the same, or, if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
The above disclosed embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment [5]
Group II: Embodiment [6]
[7]
Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.
During a telephone discussion with [8] on [9], a provisional election was made [10] traverse to prosecute the design(s) of group [11]. Affirmation of this election should be made by applicant in replying to this Office action.
Group [12] is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for a nonelected design(s).
Examiner Note:
1. In bracket 3, add embodiments as necessary.
2. In bracket 4, insert an explanation of the difference(s) between the embodiments.
3. In bracket 7, add groups as necessary.
4. In bracket 10, insert --with-- or --without--.
¶ 15.28.01 Telephone Restriction Under 35 U.S.C.121 (Obvious Variations Within Group)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1]
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Embodiment 2 – Figs. [2]
[3]
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
The above embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment [4]
Group II: Embodiment [5]
[6]
The embodiments disclosed within each group have overall appearances that are basically the same. Furthermore, the differences between them are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Therefore, they are considered by the examiner to be obvious variations of one another within the group. These embodiments thus comprise a single inventive concept and are grouped together. However, the [7] patentably distinguishes each group from the other(s).
Because of the differences identified, the embodiments of each Group are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.
During a telephone discussion with [8] on [9], a provisional election was made [10] traverse to prosecute the design(s) of group [11]. Affirmation of this election should be made by applicant in replying to this Office action.
Group [12] is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for a nonelected design(s).
Examiner Note:
1. In bracket 3, add embodiments as necessary.
2. In bracket 6, add groups as necessary.
3. In bracket 7, insert an explanation of the differences between the groups.
4. In bracket 10, insert --with--or --without--.
¶ 15.28.02 Telephone Restriction with Differences in Appearance and Scope
This application discloses the following embodiments:
Embodiment 1: Figs. [1] drawn to a [2].
Embodiment 2: Figs. [3] drawn to a [4].
[5]
The above embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment [6]
Group II: Embodiment [7]
[8]
Group(s) [9] involve a difference in appearance. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The [10] creates patentably distinct designs.
Because of the differences identified, the embodiments are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
Group(s) [11] directed to the combination(s) in relation to Group(s) [12] directed to the subcombination(s)/element(s). The designs as grouped are distinct from each other since under the law a design patent covers only the design disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburg v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965). It is further noted that combination/subcombination subject matter, if patentably distinct, must be supported by separate claims, whereas only a single claim is permissible in a design patent application. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
In any groups that include multiple embodiments, the embodiments are considered by the examiner to be obvious variations of one another within the group and, therefore, patentably indistinct. These embodiments thus comprise a single inventive concept and are grouped together.
Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.
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During a telephone discussion with [13] on [14], a provisional election was made [15] traverse to prosecute the invention of Group [16]. Affirmation of this election should be made by applicant in replying to this Office action.
Group [17] is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for a nonelected invention.
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. In bracket 8, add groups as necessary.
3. Insert an explanation of the differences between the designs in the explanations of the embodiments; for example, Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.
4. It is possible and proper that embodiments may be listed in both explanatory paragraphs.
5. In bracket 10, insert an explanation of the differences between the designs.
6. In bracket 15, insert --with-- or --without--.
¶ 15.29 Restriction Under 35 U.S.C. 121 (Segregable Parts or Combination/Subcombination)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1] drawn to a [2].
Embodiment 2 – Figs. [3] drawn to a [4].
[5]
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I – Embodiment [6]
Group II – Embodiment [7]
[8]
The designs as grouped are distinct from each other since under the law a design patent covers only the invention disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. See Ex parte Sanford, 1914 CD 69, 204 OG 1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965). It is
fu r ther no ted tha t pa ten tab ly d is t inc t combination/subcombination subject matter must be supported by separate claims, whereas only a single claim is permissible in a design patent application. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
[9]
Because the designs are distinct for the reason(s) given above, and have acquired separate status in the art, restriction for examination purposes as indicated is proper (35 U.S.C. 121).
A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement is traversed. 37 CFR 1.143. Any reply that does not include an election of a single group will be held nonresponsive. Applicant is also requested to direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.
Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over the prior art will apply equally to all other groups. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered once the groups have been determined to comprise a single inventive concept.
In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. In bracket 8, add groups as necessary.
3. In bracket 9, add comments, if necessary.
¶ 15.30 Telephone Restriction Under 35 U.S.C. 121 (Segregable Parts or Combination/Subcombination)
This application discloses the following embodiments:
Embodiment 1 – Figs. [1] drawn to a [2].
Embodiment 2 – Figs. [3] drawn to a [4].
[5]
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I – Embodiment [6]
Group II – Embodiment [7]
[8]
The designs as grouped are distinct from each other since under the law a design patent covers only the invention disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. See Ex parte Sanford, 1914 CD 69, 204
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OG 1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965). It is
fu r ther no ted tha t pa ten tab ly d is t inc t combination/subcombination subject matter must be supported by separate claims, whereas only a single claim is permissible in a design patent application. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
[9]
During a telephone discussion with [10] on [11], a provisional election was made [12] traverse to prosecute the invention of Group [13]. Affirmation of this election should be made by applicant in replying to this Office action.
Group [14] withdrawn from further consideration by the examiner, 37 CFR 1.142(b) as being for a nonelected invention.
Examiner Note:
1. In bracket 5, add embodiments as necessary.
2. In bracket 8, add groups as necessary.
3. In bracket 9, insert additional comments, if necessary.
¶ 15.31 Provisional Election Required (37 CFR 1.143)
Applicant is advised that the reply to be complete must include a provisional election of one of the enumerated designs, even though the requirement may be traversed (37 CFR 1.143).
¶ 15.33 Qualifying Statement To Be Used In Restriction When A Common Embodiment Is Included In More Than One Group
The common embodiment is included in more than a single group as it is patentably indistinct from the other embodiment(s) in those groups and to give applicant the broadest possible choices in his or her election. If the common embodiment is elected in this application, then applicant is advised that the common embodiment should not be included in any continuing application to avoid a rejection on the ground of double patenting under 35 U.S.C. 171 in the new application.
¶ 15.34 Groups Withdrawn From Consideration After Traverse
Group [1] withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for a nonelected design, the requirement having been traversed in the reply filed on [2].
¶ 15.35 Cancel Nonelected Design (Traverse)
The restriction requirement maintained in this application is or has been made final. Applicant must cancel Group [1] directed to the design(s) nonelected with traverse in the reply filed on [2], or take other timely appropriate action (37 CFR 1.144).
¶ 15.36 Groups Withdrawn From Consideration Without Traverse
Group [1] withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for the nonelected design. Election was made without traverse in the reply filed on [2].
¶ 15.37 Cancellation of Nonelected Groups, No Traverse
In view of the fact that this application is in condition for allowance except for the presence of Group [1] directed to a design or designs nonelected without traverse in the reply filed on [2], and without the right to petition, such Group(s) have been canceled.
¶ 15.38 Rejection Maintained
The arguments presented have been carefully considered, but are not persuasive that the rejection of the claim under [1] should be withdrawn.
Examiner Note:
In bracket 1, insert basis of rejection.
¶ 15.39.02.aia Final Rejection Under 35 U.S.C. 103 (Single Reference)
The claim is FINALLY REJECTED under 35 U.S.C. 103 over [1].
Examiner Note:
1. In bracket 1, insert reference citation.
2. See form paragraphs in MPEP Chapter 700, for “Action is Final” and “Advisory after Final” paragraphs.
¶ 15.39.02.fti Final Rejection Under pre-AIA 35 U.S.C. 103(a) (Single Reference)
The claim is FINALLY REJECTED under pre-AIA 35 U.S.C. 103(a) over [1].
Examiner Note:
See form paragraphs in MPEP Chapter 700, for “Action is Final” and “Advisory after Final” paragraphs.
¶ 15.40.aia Final Rejection Under 35 U.S.C. 103 (Multiple References)
The claim is FINALLY REJECTED under 35 U.S.C. 103 as being unpatentable over [1] in view of [2].
Examiner Note:
See form paragraphs in MPEP Chapter 700 for “Action is Final” and “Advisory after Final” paragraphs.
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¶ 15.40.fti Final Rejection Under pre-AIA 35 U.S.C. 103(a) (Multiple References)
The claim is FINALLY REJECTED under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [1] in view of [2].
Examiner Note:
See form paragraphs in MPEP Chapter 700 for “Action is Final” and “Advisory after Final” paragraphs.
¶ 15.40.01 Final Rejection Under Other Statutory Provisions
The claim is FINALLY REJECTED under [1] as [2].
Examiner Note:
1. In bracket 1, insert statutory basis.
2. In bracket 2, insert reasons for rejection.
3. See paragraphs in MPEP Chapter 700, for “Action is Final” and “Advisory after Final” paragraphs.
¶ 15.41 Functional, Structural Features Not Considered
Attention is directed to the fact that design patent applications are concerned solely with the ornamental appearance of an article of manufacture. The functional and/or structural features stressed by applicant in the papers are of no concern in design cases, and are neither permitted nor required. Function and structure fall under the realm of utility patent applications.
¶ 15.42 Visual Characteristics
The design for an article consists of the visual characteristics or aspect displayed by the article. It is the appearance presented by the article which creates an impression through the eye upon the mind of the observer.
¶ 15.43 Subject Matter of Design Patent
Since a design is manifested in appearance, the subject matter of a Design Patent may relate to the configuration or shape of an article, to the surface ornamentation on an article, or to both.
¶ 15.44 Design Inseparable From Article to Which Applied
Design is inseparable from the article to which it is applied, and cannot exist alone merely as a scheme of ornamentation. It must be a definite preconceived thing, capable of reproduction, and not merely the chance result of a method or of a combination of functional elements (35 U.S.C. 171; 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs). See Blisscraft of Hollywood v. United Plastics Co., 189 F. Supp.
333, 127 USPQ 452 (S.D.N.Y. 1960), 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961).
¶ 15.46.01 Impermissible Descriptive Statement
The descriptive statement included in the specification is impermissible because [1]. See MPEP § 1503.01, subsection II. Therefore, the description should be canceled as any description of the design in the specification, other than a brief description
of the drawing, is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description.
Examiner Note:
In bracket 1, insert the reason why the descriptive statement is improper.
¶ 15.47 Characteristic Feature Statement
A “characteristic features” statement describing a particular feature of novelty or nonobviousness in the claimed design may be permissible in the specification. Such a statement should be in terms such as “The characteristic feature of the design resides in [1],” or if combined with one of the Figure descriptions, in terms such as “the characteristic feature of which resides in [2].” While consideration of the claim goes to the total or overall appearance, the use of a “characteristic feature” statement may serve later to limit the claim ( McGrady v. Aspenglas Corp., 487 F. Supp. 859, 208 USPQ 242 (S.D.N.Y. 1980)).
Examiner Note:
In brackets 1 and 2, insert brief but accurate description of the feature of novelty or nonobviousness of the claimed design.
¶ 15.47.01 Feature Statement Caution
The inclusion of a feature statement in the specification is noted. However, the patentability of the claimed design is not based on the specified feature but rather on a comparison of the overall appearance of the design with the prior art. In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977).
¶ 15.48 Necessity for Good Drawings
The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.
¶ 15.50 Use of Broken Lines for Indicating Unimportant Features Not Permitted
The ornamental design which is being claimed must be shown in solid lines in the drawing. Broken lines for the purpose of indicating unimportant or immaterial features of the design are not permitted. There are no portions of a claimed design which are immaterial or unimportant. See In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967) and In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).
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¶ 15.50.01 Use of Broken Lines in Drawing (Ch. 16 Design Application)
Environmental structure may be illustrated by broken lines in the drawing if clearly designated as environment in the specification. See 37 CFR 1.152 and MPEP § 1503.02, subsection III.
Examiner Note:
Do not use this form paragraph in an international design application.
¶ 15.50.02 Description of Broken Lines (Ch. 16 Design Application)
A statement similar to the following should be used to describe the broken lines on the drawing (MPEP § 1503.02, subsection III):
-- The broken line showing of [1] is for the purpose of illustrating [2] and forms no part of the claimed design. --
A statement similar to the one above [3] inserted in the specification preceding the claim.
Examiner Note:
1. Do not use this form paragraph in an international design application.
2. In bracket 1, insert name of structure.
3. In bracket 2, insert --portions of the “article”-- or --environmental structure--.
4. In bracket 3, insert --must be-- or --has been--.
¶ 15.50.04 Proper Drawing Disclosure With Use of Broken Lines
Where superimposed broken lines showing environmental structure obscure the full line disclosure of the claimed design, a separate figure showing the broken lines must be included in the drawing in addition to the figures showing only claimed subject matter, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
¶ 15.50.05 Description of Broken Lines as Boundary of Design (Ch. 16 Design Application)
The following statement must be used to describe the broken line boundary of a design (MPEP § 1503.02, subsection III):
--The [1] broken line(s) define the bounds of the claimed design and form no part thereof.--
Examiner Note:
1. Do not use this form paragraph in an international design application.
2. In bracket 1 insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.
¶ 15.51 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, First Paragraph Rejection (New Matter)
The claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph as failing to comply with the description requirement thereof since the [1] introduces new matter not supported by the original disclosure. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the design now claimed at the time the application was filed. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
Specifically, there is no support in the original disclosure [2].
To overcome this rejection, applicant may attempt to demonstrate that the original disclosure establishes that he or she was in possession of the amended claim or [3].
Examiner Note:
1. In bracket 1, specify whether new drawing or amendment to the drawing, title or specification.
2. In bracket 2, specifically identify what is new matter so that the basis for the rejection is clear.
3. In bracket 3, insert specific suggestion how rejection may be overcome depending on the basis; such as, “the bracket in figures 3 and 4 of the new drawing may be corrected to correspond to the original drawing” or “the specification may be amended by deleting the descriptive statement.”
¶ 15.51.01 Amendment to Disclosure Not Affecting Claim - 35 U.S.C. 132 Objection (New Matter)
The [1] is objected to under 35 U.S.C. 132 and 37 CFR 1.121 as introducing new matter not supported by the original disclosure. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the amended subject matter at the time the application was filed. See In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
Specifically, there is no support in the original disclosure [2].
To overcome this objection, applicant may attempt to demonstrate that the original disclosure establishes that he or she was in possession of the amended subject matter or [3].
Examiner Note:
1. In bracket 1, specify whether new drawing or amendment to the drawing, title or specification.
2. In bracket 2, specifically identify what is new matter so that the basis for the objection is clear.
3. In bracket 3, insert specific suggestion how the objection may be overcome depending on the basis; such as, “the broken line showing of environmental structure in Fig. 1 of the new drawing may be omitted to correspond to the original drawing” or “the title may be amended by deleting the reference to environmental structure”.
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¶ 15.55 Design Patent-Copyright Overlap
There is an area of overlap between Copyright and Design Patent Statutes where an author/inventor can secure both a Copyright and a Design Patent. Thus, an ornamental design may be copyrighted as a work of art and may also be the subject matter of a Design Patent. The author/inventor may not be required to elect between securing a copyright or a design patent. See In re Yardley, 493 F. 2d 1389, 181 USPQ 331 (CCPA 1974). In Mazer v. Stein, 347 U.S. 201, 100 USPQ 325 (U.S. 1954), the
Supreme Court noted the election of protection doctrine but did not express any view on it since a Design Patent had been secured in the case and the issue was not before the Court.
It is the policy of the Patent and Trademark Office to permit the inclusion of a copyright notice in a Design Patent application, and thereby any patent issuing therefrom, under the following conditions:
(1) A copyright notice must be placed adjacent to the copyright material and, therefore, may appear at any appropriate portion of the patent application disclosure including the drawing. However, if appearing on the drawing, the notice must be limited in print size from 1/8 inch to 1/4 inch and must be placed within the “sight” of the drawing immediately below the figure representing the copyright material. If placed on a drawing in conformance with these provisions, the examiner will not object to the notice as extraneous matter under 37 CFR 1.84.
(2) The content of the copyright notice must be limited to only those elements required by law. For example, “© 1983 John Doe” would be legally sufficient under 17 U.S.C. 401 and properly limited.
(3) Inclusion of a copyright notice will be permitted only if the following waiver is included at the beginning (preferably as the first paragraph) of the specification to be printed for the patent:
A portion of the disclosure of this patent document contains material to which a claim for copyright is made. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but reserves all other copyrights whatsoever.
(4) Inclusion of a copyright notice after a Notice of Allowance has been mailed will be permitted only if the criteria of 37 CFR 1.312 have been satisfied.
Any departure from these conditions may result in a refusal to permit the desired inclusion. If the waiver required under condition (3) above does not include the specific language “(t)he copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records...,” the examiner will object to the copyright notice as improper.
¶ 15.55.01 Design Patent - Trademark Overlap
A design patent and a trademark may be obtained on the same subject matter. The Court of Customs and Patent Appeals, in In re Mogen David Wine Corp., 328 F.2d 925, 140 USPQ 575
(CCPA 1964), later reaffirmed by the same court at 372 F.2d 539, 152 USPQ 593 (CCPA 1967), has held that the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks, and that no right accruing from the one is dependent upon or conditioned by any right concomitant to the other.
¶ 15.58 Claimed Design Is Patentable (Ex parte Quayle Actions)
The claimed design is patentable over the references cited.
¶ 15.58.01 Claimed Design Is Patentable (35 U.S.C. 112 Rejections)
The claimed design is patentable over the references cited. However, a final determination of patentability will be made upon resolution of the above rejection.
¶ 15.59 Amend Title
For [1], the title [2] amended throughout the application, original oath or declaration excepted, to read: [3]
Examiner Note:
1. In bracket 1, insert reason.
2. In bracket 2, insert --should be-- or --has been--.
¶ 15.60 Amend All Figure Descriptions
For [1], the figure descriptions [2] amended to read: [3]
Examiner Note:
1. In bracket 1, insert reason.
2. In bracket 2, insert --should be-- or --have been-.
3. In bracket 3, insert amended text.
¶ 15.61 Amend Selected Figure Descriptions
For [1], the description(s) of Fig(s). [2] [3] amended to read: [4]
Examiner Note:
1. In bracket 1, insert reason.
2. In bracket 2, insert selected Figure descriptions.
3. In bracket 3, insert --should be-- or --have been-.
4. In bracket 4, insert amended text.
¶ 15.61.01 Amend Specification to Add Reference to Color Drawing(s)/ Photograph(s) (Ch. 16 Design Application)
The application contains at least one color drawing or color photograph. To comply with the provisions of 37 CFR 1.84 for
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color drawings/photographs in design applications, the specification [1] amended to include the following language as the first paragraph of the brief description of the drawings section:
The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.
Examiner Note:
1. Do not use this form paragraph in an international design application.
2. In bracket 1, insert --must be-- or --has been--.
¶ 15.62 Amend Claim “As Shown”
For proper form (37 CFR 1.153 or 37 CFR 1.1025), the claim [1] amended to read: “[2] claim: The ornamental design for [3] as shown.”
Examiner Note:
1. In bracket 1, insert --must be-- or --has been--.
2. In bracket 2, insert --I-- or --We--.
3. In bracket 3, insert title of the article in which the design is embodied or applied.
¶ 15.63 Amend Claim “As Shown and Described”
For proper form (37 CFR 1.153 or 37 CFR 1.1025), the claim [1] amended to read: “[2] claim: The ornamental design for [3] as shown and described.”
Examiner Note:
1. In bracket 1, insert --must be-- or --has been--.
2. In bracket 2, insert --I-- or --We--.
3. In bracket 3, insert title of the article in which the design is embodied or applied.
¶ 15.64 Addition of “And Described” to Claim
Because of [1] -- and described -- [2] added to the claim after “shown.”
Examiner Note:
1. In bracket 1, insert reason.
2. In bracket 2, insert --must be-- or --has been--.
¶ 15.65 Amendment May Not Be Possible
The claim might be fatally defective; that is, it might not be possible to [1] without introducing new matter (35 U.S.C. 132, 37 CFR 1.121).
Examiner Note:
In bracket 1, identify portion of the claimed design which is insufficiently disclosed.
¶ 15.66 Employ Services of Patent Attorney or Agent (Design Application Only)
As the value of a design patent is largely dependent upon the skillful preparation of the drawings and specification, applicant might consider it desirable to employ the services of a registered patent attorney or agent. The U.S. Patent and Trademark Office cannot aid in the selection of an attorney or agent.
A listing of registered patent attorneys and agents is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent attorneys and agents located in their area by writing to the Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
¶ 15.67 Rationale for 35 U.S.C. 103 Rejection (Single Reference)
It is well settled that it is unobviousness in the overall appearance of the claimed design, when compared with the prior art, rather than minute details or small variations in design as appears to be the case here, that constitutes the test of design patentability. See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
¶ 15.68 Rationale for 35 U.S.C. 103 Rejection (Multiple References)
This modification of the primary reference in light of the secondary reference is proper because the applied references are so related that the appearance of features shown in one would suggest the application of those features to the other. See In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982), and In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956). Further, it is noted that case law has held that a designer skilled in the art is charged with knowledge of the related art; therefore, the combination of old elements, herein, would have been well within the level of ordinary skill. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).
¶ 15.69.01 Remove Indefinite Language (“Or The Like”) by Examiner’s Amendment
The phrase [1] in the claim following the title renders the claim indefinite. By authorization of [2] in a telephone interview on [3], the phrase has been cancelled from the claim and at each occurrence of the title throughout the papers, except the oath or declaration 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and 37 CFR 1.153). See Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992).
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Examiner Note:
In bracket 1, insert objectionable phrase, e.g., --or the like--, --or similar article--, etc.
¶ 15.70.aia Preface, 35 U.S.C. 103 Rejection
It would have been obvious to a designer of ordinary skill not later than the effective filing date of the present claimed invention to [1].
Examiner Note:
Insert explanation of the use of the reference applied in bracket 1.
¶ 15.70.fti Preface, Pre-AIA 35 U.S.C. 103(a) Rejection
It would have been obvious to a designer of ordinary skill in the art at the time the invention was made to [1].
Examiner Note:
Insert explanation of the use of the reference applied in bracket 1.
¶ 15.72 Quayle Action
This application is in condition for allowance except for the following formal matters: [1].
Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm'r Pat. 1935).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
¶ 15.73 Corrected Drawing Sheets Required
Failure to submit replacement correction sheets overcoming all of the deficiencies in the drawing disclosure set forth above, or an explanation why the drawing corrections or additional drawing views are not necessary will result in the rejection of the claim under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, being made FINAL in the next Office action.
¶ 15.74 Continuation-In-Part
Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Unless the filing date of the earlier application is actually needed, such as to avoid intervening prior art, the entitlement to priority in this CIP application will not be considered. See In re Corba, 212 USPQ 825 (Comm’r Pat. 1981).
Examiner Note:
This form paragraph should be used to notify applicant that the C-I-P application is not entitled to the benefit of the parent application under 35 U.S.C. 120.
¶ 15.74.01 Continuation-In-Part – Not Entitled To Benefit of Earlier Filing Date
Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design claimed in the present application is not disclosed in the parent application. Therefore, the parent application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 for the design claimed in the present application and the present application is not entitled to the benefit of the earlier filing date. Because the present application is not entitled to the benefit of the earlier filing date of the parent application, the parent application is available as prior art under 35 U.S.C. 102 .
Examiner Note:
This form paragraph should be used to notify applicant that the C-I-P application is not entitled to the benefit of the parent application under 35 U.S.C. 120.
¶ 15.75.fti Preface to Rejection in CIP Based on pre-AIA 35 U.S.C. 102(d)/35 U.S.C.172
Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design disclosed in the parent application is not the same design as the design disclosed in this application. Therefore, this application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not entitled to benefit of the earlier filing date.
The parent application claimed foreign priority under 35 U.S.C. 119(a) -(d), however, the present application is not entitled to the benefit of the earlier filing date of the parent application. The foreign application that the parent application has claimed priority to has matured into a patent/registration before the filing date of the present application and was filed more than six months before the filing date of the present application. Therefore, the foreign patent/registration qualifies as prior art under pre-AIA 35 U.S.C. 102(d)/35 U.S.C. 172.
Examiner Note:
This form paragraph should be followed with a rejection under pre-AIA 35 U.S.C. 102(d)/ pre-AIA 35 U.S.C. 103(a) depending on the difference(s) between this claim and the design shown in the priority papers.
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¶ 15.75.01.fti C-I-P Caution, Claim to Foreign Priority in Earlier Filed Application - Status of Foreign Application Unknown
Reference to this application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design disclosed in the parent application is not the same design as the design disclosed in this application. Therefore, this application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not entitled to benefit of the earlier filing date.
The parent application claimed foreign priority under 35 U.S.C. 119(a)-(d). Applicant is reminded that if the foreign application to which priority was claimed matured into a patent/registration before the filing of the present application and was filed more than six months before the filing date of the present application, the foreign patent/registration qualifies as prior art under pre-AIA 35 U.S.C. 102(d)/35 U.S.C. 172.
Therefore, Applicant is requested to inform the Office of the status of the foreign application to which priority is claimed.
¶ 15.76 Trademark in Drawing
The [1] forming part of the claimed design is a registered trademark of [2]. The specification must be amended to include a statement preceding the claim identifying the trademark material forming part of the claimed design and the name of the owner of the trademark.
Examiner Note:
1. In bracket 1, identify the trademark material.
2. In bracket 2, identify the trademark owner.
¶ 15.85 Undisclosed visible surface(s)/portion(s) of article not forming part of the claimed design
The [1] of the article [2] not shown in the drawing or described in the specification. It is understood that the appearance of any part of the article not shown in the drawing or described in the specification forms no part of the claimed design. In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Therefore, the determination of patentability is based on the design for the article shown and described.
Examiner Note:
1. In bracket 1, insert surface or surfaces which are not shown.
2. In bracket 2, insert “is” or “are”.
¶ 15.90 Indication of allowability withdrawn
The indication of allowability set forth in the previous action is withdrawn and prosecution is reopened in view of the following new ground of rejection.
1600 Form Paragraphs 16.01 - 16.13
¶ 16.01 Specification, Manner of Asexually Reproducing
The application is objected to under 37 CFR 1.163(a) because the specification does not “particularly point out where and in what manner the variety of plant has been asexually reproduced.” Correction is required.
¶ 16.02 Colors Specified Do Not Correspond With Those Shown
The disclosure is objected to under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the [1] colors specified fail to correspond with those shown.
¶ 16.03 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Non-Support for Colors
The claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as being unsupported by a clear and complete disclosure with regard to [1] colors, for the following reasons: [2].
¶ 16.04 Rejection, 35 U.S.C. 102
The claim is rejected under 35 U.S.C. 102 as failing to patentably distinguish over [1].
¶ 16.05 Name or Denomination for Plant Missing
The disclosure is objected to under 37 CFR 1.121(e) because no “variety denomination” of the instant plant has been set forth in the disclosure. 37 CFR 1.163(c)(4). Correction by adding such a name is required.
¶ 16.05.01 Latin Name of Genus and Species of the Plant Claimed Missing
The disclosure is objected to under 37 CFR 1.121(e) because the Latin name of the genus and species of the instant plant has not been set forth in the disclosure. 37 CFR 1.163(c)(4). Correction by adding such a name is required.
¶ 16.06 Color Drawings Must Be in Duplicate
The disclosure is objected to under 37 CFR 1.165(b) because applicant has not provided copies of the color drawing in duplicate. Correction is required.
¶ 16.07 Drawing Figures Not Competently Executed
The disclosure is objected to under 37 CFR 1.165(a) because Fig. [1] not artistically and/or competently executed.
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¶ 16.08 Rejection, 35 U.S.C. 112
The claim is rejected under 35 U.S.C. 112 [1] because [2].
¶ 16.09 Specification, Less Than Complete Description
The disclosure is objected to under 37 CFR 1.163(a) because the specification presents less than a full and complete botanical description and the characteristics which distinguish over related known varieties. More specifically: [1].
¶ 16.10 Specification, Location of Plant Not Disclosed
The disclosure is objected to under 37 CFR 1.163(a) because the specification does not particularly point out the location and character of the area where the plant was discovered.
¶ 16.11 Drawings in Improper Scale
The disclosure is objected to under 37 CFR 1.165(a) because the drawings are of an inadequate scale to show the distinguishing features of the plant.
¶ 16.12 Report From U.S. Dept. of Agriculture
This application has been submitted to the U.S. Department of Agriculture for a report. Pertinent portions follow: [1]
¶ 16.13 Specimens Are Required
Applicant [1] required to submit [2] in accordance with 37 CFR 1.166.
1700 [Reserved]
There are currently no form paragraphs numbered “17.xx....”
1800 Form Paragraphs 18.01 - 18.22
¶ 18.01 Lacks Novelty
Claim [1] novelty under PCT Article 33(2) as being anticipated by [2].
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
2. In bracket 2, insert name of prior art relied upon.
¶ 18.02 Lacks Inventive Step - One Reference
Claim [1] an inventive step under PCT Article 33(3) as being obvious over [2]. [3]
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
2. In bracket 2, insert name of prior art relied upon.
3. In bracket 3, add reasoning.
¶ 18.02.01 Lacks Inventive Step - Two References
Claim [1] an inventive step under PCT Article 33(3) as being obvious over [2] in view of [3]. [4]
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
2. In bracket 2, insert name of PRIMARY prior art relied upon.
3. In bracket 3, insert name of SECONDARY prior art relied upon.
4. In bracket 4, add reasoning.
¶ 18.02.02 Lacks Inventive Step - Additional Reference
Claim [1] an inventive step under PCT Article 33(3) as being obvious over the prior art as applied in the immediately preceding paragraph and further in view of [2]. [3]
Examiner Note:
1. This form paragraph may follow either 18.02 or 18.02.01.
2. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
3. In bracket 2, insert name of additional prior art relied upon.
4. In bracket 3, add reasoning.
¶ 18.03 Lacks Industrial Applicability
Claim [1] industrial applicability as defined by PCT Article 33(4). [2]
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
2. In bracket 2, add reasoning.
¶ 18.04 Meets Novelty and Inventive Step
Claim [1] the criteria set out in PCT Article 33(2)-(3), because the prior art does not teach or fairly suggest [2].
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and insert the verb --meet-- or --meets--, as appropriate.
2. In bracket 2, insert the details of the claimed subject matter that render it unobvious over the prior art.
3. If the claims also meet the industrial applicability criteria set out in PCT Article 33(4), this form paragraph should be followed by form paragraph 18.04.01.
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4. If the claims do not meet the industrial applicability criteria set out in PCT Article 33(4), this form paragraph should be followed by form paragraph 18.03.
¶ 18.04.01 Meets Industrial Applicability
Claim [1] the criteria set out in PCT Article 33(4), and thus [2] industrial applicability because the subject matter claimed can be made or used in industry.
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --meet-- or -- meets--, as appropriate.
2. In bracket 2, insert --have-- or --has--, as appropriate.
3. If the claims meet all of the requirements of PCT Article 33(2)-(4), use form paragraph 18.04 before this form paragraph to provide positive statements for novelty and inventive step under PCT Article 33(2)-(3).
4. If the claims have industrial applicability but lack novelty and inventive step, use this form paragraph and additionally use form paragraph 18.01.
5. If the claims have industrial applicability and novelty but lack inventive step, use this form paragraph and additionally use one or more of form paragraphs 18.02, 18.02.01 and 18.02.02, as appropriate.
6. If the claims do not have industrial applicability, use form paragraph 18.03 instead of this form paragraph.
¶ 18.05 Heading for Lack of Unity Action for PCT Applications During the International Phase (Including Species)
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), an international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in an international application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Processes, Products, and/or Apparatuses:
Products, processes of manufacture, processes of use, and apparatuses are different categories of invention. When an application includes claims to more than one product, process,
or apparatus, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the “main invention” in the claims. In the case of non-compliance with unity of invention and where no additional fees are timely paid, the international search and/or international preliminary examination, as appropriate, will be based on the main invention in the claims. See PCT Article 17(3)(a), 37 CFR 1.475(d), 37 CFR 1.476(c) and 37 CFR 1.488(b)(3).
As provided in 37 CFR 1.475(b), an international application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Examiner Note:
1. Begin all Lack of Unity actions for PCT applications during the international phase (including species) with this heading.
2. Follow with form paragraphs 18.06 - 18.06.02, 18.07 - 18.07.03, as appropriate.
3. Use form paragraph 18.18 for lack of unity in U.S. national stage applications submitted under 35 U.S.C. 371 .
¶ 18.06 Lack of Unity - Three Groups of Claims
Group [1], claim(s) [2], drawn to [3].
Group [4], claim(s) [5], drawn to [6].
Group [7], claim(s) [8], drawn to [9].
Examiner Note:
1. In brackets 1, 4 and 7, insert Roman numerals for each Group.
2. In brackets 2, 5 and 8, insert respective claim numbers.
3. In brackets 3, 6 and 9, insert respective names of grouped inventions.
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¶ 18.06.01 Lack of Unity - Two (or Additional) Groups of Claims
Group [1], claim(s) [2], drawn to [3].
Group [4], claim(s) [5], drawn to [6].
Examiner Note:
This form paragraph may be used alone or following form paragraph 18.06.
¶ 18.06.02 Lack of Unity - One Additional Group of Claims
Group [1], claim(s) [2], drawn to [3].
Examiner Note:
This form paragraph may be used following either form paragraph 18.06 or 18.06.01.
¶ 18.07 Lack of Unity - Reasons Why Inventions Lack Unity
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Examiner Note:
Follow with form paragraphs 18.07.01 through 18.07.03, as appropriate.
¶ 18.07.01 Same or Corresponding Technical Feature Lacking Among Groups
[1] lack unity of invention because the groups do not share the same or corresponding technical feature.
Examiner Note:
1. This form paragraph may be used, for example, where the claims of Group I are directed to A + B, whereas the claims of Group II are directed to C + D, and thus the groups do not share a technical feature.
2. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the groups involved by Roman numerals (e.g., “Groups I and II”) where inventions have been grouped using form paragraphs 18.06 - 18.06.02, or identify the species involved where species have been listed using form paragraph 18.20.
¶ 18.07.02 Shared Technical Feature Does Not Make a Contribution Over the Prior Art
[1] lack unity of invention because even though the inventions of these groups require the technical feature of [2], this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of [3]. [4]
Examiner Note:
1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the groups involved by Roman numerals (e.g., “Groups I and II”) where inventions have been grouped using form paragraphs 18.06 - 18.06.02, or identify the species involved where species have been listed using form paragraph 18.20.
2. In bracket 2, identify the technical feature shared by the groups.
3. In bracket 3, insert citation of prior art reference(s) demonstrating the shared technical feature does not make a contribution over the prior art. Whether a particular technical feature makes a “contribution” over the prior art, and, therefore, constitutes a “special technical feature,” is considered with respect to novelty and inventive step.
4. In bracket 4, explain how the shared technical feature lacks novelty or inventive step in view of the reference(s).
¶ 18.07.03 Heading – Chemical Compound Alternatives of Markush Group Are Not of a Similar Nature
Where a single claim defines alternatives of a Markush group, the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2, is considered met when the alternatives are of a similar nature. When the Markush grouping is for alternatives of chemical compounds, the alternatives are regarded as being of a similar nature where the following criteria are fulfilled:
(A) all alternatives have a common property or activity; AND
(B)
(1) a common structure is present, that is, a significant structural element is shared by all of the alternatives; OR
(B)
(2) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.
The phrase “significant structural element is shared by all of the alternatives” refers to cases where the compounds share a common chemical structure which occupies a large portion of their structures, or in case the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion in view of existing prior art, and the common structure is essential to the common property or activity.
The phrase “recognized class of chemical compounds” means that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention, i.e. each member could be substituted
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one for the other, with the expectation that the same intended result would be achieved.
Examiner Note:
1. This heading should be used when the chemical alternatives of a Markush group are determined to lack unity of invention.
2. Follow with form paragraphs listed using form paragraphs 18.07.03a - 18.07.03c, as appropriate.
¶ 18.07.03a Alternatives Lack Common Property or Activity
The chemical compounds of [1] are not regarded as being of similar nature because all of the alternatives do not share a common property or activity. [2]
Examiner Note:
1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the species involved where species have been listed using form paragraph 18.20.
2. In bracket 2, insert reasoning.
¶ 18.07.03b Alternatives Share a Common Structure - However, the Common Structure is Not a Significant Structural Element and the Alternatives Do Not Belong to a Recognized Class
Although the chemical compounds of [1] share a common structure of [2], the common structure is not a significant structural element because it represents only a small portion of the compound structures and does not constitute a structurally distinctive portion in view of [3]. Further, the compounds of these groups do not belong to a recognized class of chemical compounds. [4]
Examiner Note:
1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the species involved where species have been listed using form paragraph 18.20.
2. In bracket 2, identify common structure.
3. In bracket 3, insert citation of prior art reference(s) relied upon to demonstrate the commonly shared structure is not distinctive.
4. In bracket 4, explain why the compounds do not belong to a recognized class of chemical compounds.
¶ 18.07.03cAlternatives Do Not Share a Common Structure or Belong to Recognized Class
The chemical compounds of [1] are not regarded as being of similar nature because: (1) all the alternatives do not share a common structure and (2) the alternatives do not all belong to a recognized class of chemical compounds. [2]
Examiner Note:
1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the species involved where species have been listed using form paragraph 18.20.
2. In bracket 2, insert reasoning.
¶ 18.08 Drawing - Defect in Form or Contents Thereof
The drawings contain the following defect(s) in the form or content thereof: [1]
Examiner Note:
In bracket 1, insert identification of defects in drawings.
¶ 18.08.01 Drawing Is Required
The subject matter of this application admits of illustration by drawing to facilitate understanding of the invention. Applicant is required under PCT Article 7(1) to furnish a drawing.
¶ 18.09 Description - Defect in Form or Contents Thereof
The description contains the following defect(s) in the form or contents thereof: [1]
Examiner Note:
In bracket 1, insert the technical problem, e.g., misspelled word.
¶ 18.10 Claims - Defect in Form or Contents Thereof
Claim [1] contain(s) the following defect(s) in the form or contents thereof: [2]
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, and insert claim no.(s).
2. In bracket 2, identify the technical deficiency.
¶ 18.11 Drawing Objections - Lack Clarity
The drawings are objected to under PCT Article 7 as lacking clarity under PCT Article 7 because: [1]
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Examiner Note:
In bracket 1, insert reasons why the drawings lack clarity, e.g., inaccurate showing.
¶ 18.12.01 Claims Objectionable - Inadequate Written Description
Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The application, as originally filed, did not describe: [3]
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --is-- or --are--, as appropriate.
2. In bracket 2, pluralize “claim” if needed, and insert the verb --is-- or --are--.
3. In bracket 3, identify subject matter not described in the application as filed.
¶ 18.13.01 Claims Objectionable - Non-Enabling Disclosure
Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The description does not disclose the claimed invention in a manner sufficiently clear and complete for the claimed invention to be carried out by a person skilled in the art as required by PCT Article 5 because: [3]
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--.
2. In bracket 2, pluralize “claim” if needed, insert the verb --is-- or --are--.
3. In bracket 3, identify the claimed subject matter that is not enabled and explain why it is not enabled.
¶ 18.14.01 Claims Objectionable - Lack of Best Mode
Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The description fails to set forth the best mode contemplated by the applicant for carrying out the claimed invention as required by PCT Rule 5.1(a)(v) because: [3].
Examiner Note:
1. In bracket 1, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--.
2. In bracket 2, pluralize “claim” if needed, and insert the appropriate verb --is-- or --are--.
3. In bracket 3, insert the objection and reasons.
¶ 18.15 Claims Objectionable - Indefiniteness
Claim [1] objected to under PCT Article 6 as lacking clarity because claim [2] indefinite for the following reason(s): [3]
Examiner Note:
1. In brackets 1 and 2, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--.
2. In bracket 3, insert reasons.
¶ 18.18 Heading for Lack of Unity Action in National Stage Applications Submitted Under 35 U.S.C. 371 (Including Species)
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Examiner Note:
1. Begin all Lack of Unity actions in national stage applications submitted under 35 U.S.C. 371 (including species) with this heading.
2. Follow with form paragraph 18.19 or 18.20, as appropriate.
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3. For lack of unity during the international phase, use form paragraph 18.05 instead of this form paragraph.
¶ 18.19 Restriction Requirement in National Stage Applications Submitted Under 35 U.S.C. 371
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Examiner Note:
1. This form paragraph is to be used when making a restriction requirement in a national stage application submitted under 35 U.S.C. 371.
2. This form paragraph is to be followed by form paragraphs 18.06 - 18.06.02, as appropriate, and by form paragraphs 18.07 - 18.07.02, as appropriate.
3. All restriction requirements between a product/apparatus and a process of making the product/apparatus or between a product and a process of using the product should be followed by form paragraph 8.21.04 to notify the applicant that if all product/apparatus claims are found allowable, process claims that require all the limitations of the patentable product/apparatus should be considered for rejoinder.
4. When all of the claims directed to the elected invention are in condition for allowance, the propriety of the restriction requirement should be reconsidered to verify that the non-elected claims do not share a same or corresponding technical feature with the allowable claims.
¶ 18.20 Election of Species in National Stage Applications Submitted Under 35 U.S.C. 371
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
[1]
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an
allowed generic claim. Currently, the following claim(s) are generic: [2].
Examiner Note:
1. This form paragraph is to be used when making an election of species requirement in a national stage application submitted under 35 U.S.C. 371.
2. In bracket 1, identify the species from which an election is to be made.
3. In bracket 2, identify each generic claim by number or insert the word --NONE--.
4. This form paragraph is to be followed by form paragraphs 18.07 - 18.07.03, as appropriate.
¶ 18.21 Election by Original Presentation in National Stage Applications Submitted Under 35 U.S.C. 371
Newly submitted claim [1] directed to an invention that lacks unity with the invention originally claimed for the following reasons: [2]
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a nonelected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
¶ 18.22 Requirement for Election and Means for Traversal in National Stage Applications Submitted Under 35 U.S.C. 371
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may
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be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Examiner Note:
1. This form paragraph should be used when requiring restriction (including an election of species) in an application that entered the national stage under 35 U.S.C. 371.
2. This form paragraph should follow form paragraph 8.23.01 when a telephone call was made that did not result in an election being made.
1900 Form Paragraphs 19.01 - 19.02
¶ 19.01 Period for Comments on Protest by Applicant
A protest against issuance of a patent based upon this application has been filed under 37 CFR 1.291(a) on [1], and a copy [2]. Any comments or reply applicant desires to file before consideration of the protest must be filed by [3].
Examiner Note:
1. Applicant is normally given one month to submit any comments, unless circumstances in the case would warrant a longer period.
2. A copy of this Office action is NOT sent to the protestor. See 37 CFR 1.291(d).
3. In bracket 2, insert either-- has been served on applicant-- or-- is attached hereto--.
¶ 19.02 Requirement for Information
The protest under 37 CFR 1.291 filed on [1] has been considered. In order to reach a full and proper consideration of the issues raised therein, it is necessary to obtain additional information from applicant regarding these issues. In particular [2]. The failure to reply to this requirement for information within ONE MONTH or THIRTY DAYS, whichever is longer, of the mailing date of this requirement will result in abandonment of the application. This time period may be extended under the provisions of 37 CFR 1.136.
Examiner Note:
While the examiner normally should not need further information from applicant, this form paragraph may be used to request specific additional information from the applicant.
¶ 19.02.AE Requirement for Information – Application Under Accelerated Examination
The protest under 37 CFR 1.291 filed on [1] has been considered. In order to reach a full and proper consideration of the issues raised therein, it is necessary to obtain additional information from applicant regarding these issues. In particular [2]. The failure to reply to this requirement for information within ONE (1) MONTH or THIRTY (30) DAYS, whichever is longer, of the mailing date of this requirement will result in abandonment of the application. Since this application has been granted special
status under the accelerated examination program, NO extensions of time under 37 CFR 1.136(a) will be permitted.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. While the examiner normally should not need further information from applicant, this form paragraph may be used to request specific additional information from the applicant.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
2000 [Reserved]
There are currently no form paragraphs numbered “20.xx....”
2100 [Reserved]
There are currently no form paragraphs numbered “21.xx....”
2200 Form Paragraphs 22.01 - 22.73
¶ 22.01 New Question of Patentability
A substantial new question of patentability affecting claim [1] of United States Patent Number [2] is raised by the request for ex parte reexamination.
Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that ex parte reexamination proceedings “will be conducted with special dispatch” (37 CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).
¶ 22.01.01 Criteria for Applying Old Art as Sole Basis for Reexamination
The above [1] is based solely on patents and/or printed publications already cited/considered in an earlier concluded
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examination or review of the patent being reexamined, or has been raised to or by the Office in a pending reexamination or supplemental examination of the patent. On November 2, 2002, Public Law 107-273 was enacted. Title III, Subtitle A, Section 13105, part (a) of the Act revised the reexamination statute by adding the following new last sentence to 35 U.S.C. 303(a) and 312(a):
"The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office."
For any reexamination ordered on or after November 2, 2002, the effective date of the statutory revision, reliance on previously cited/considered art, i.e., “old art,” does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art. Rather, determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis.
In the present instance, there exists a SNQ based solely on [2]. A discussion of the specifics now follows:
[3]
Examiner Note:
1. In bracket 1, insert “substantial new question of patentability” if the present form paragraph is used in an order granting reexamination (or a TC or CRU Director’s decision on petition of the denial of reexamination). If this form paragraph is used in an Office action, insert “ground of rejection.”
2. In bracket 2, insert the old art that is being applied as the sole basis of the SNQ. For example, “the patent to J. Doe” or “the patent to J. Doe when taken with the Jones publication” or “the combination of the patent to J. Doe and the Smith publication” could be inserted. Where more than one SNQ is presented based solely on old art, the examiner would insert all such bases for SNQ.
3. In bracket 3, for each basis identified in bracket 2, explain how and why that fact situation applies in the proceeding being acted on. The explanation could be for example that the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier examination(s), in view of a material new argument or interpretation presented in the request. See Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351 (Bd. Pat. App. & Inter. 1984).
4. This form paragraph is only used the first time the “already cited/considered” art is applied, and is not repeated for the same art in subsequent Office actions.
¶ 22.02 No New Question of Patentability
No substantial new question of patentability is raised by the request for reexamination and prior art cited therein for the reasons set forth below.
¶ 22.03 Issue Not Within Scope of Ex Parte Reexamination
An issue has been raised in the present reexamination proceeding that is not within the scope of an ex parte reexamination ordered under 35 U.S.C. 304. [1]. This issue will not be considered in the present proceeding. 37 CFR 1.552(c).
Examiner Note:
1. In bracket 1, identify the issues.
2. This paragraph may be used either when the patent owner or third party requester raises issues such as public use or on sale, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.
¶ 22.04 Papers To Be Submitted in Response to Action - Ex Parte Reexamination
In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidence of patentability, such documents must be submitted in response to this Office action. Submissions after the next Office action, which is intended to be a final action, will be governed by the requirements of 37 CFR 1.116 after final rejection and 37 CFR 41.33 after appeal, which will be strictly enforced.
¶ 22.04.01 Extension of Time in Reexamination
Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings “will be conducted with special dispatch” ( 37 CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).
¶ 22.05 Reexamination (Ex Parte or Inter Partes) Based on Reissue Claims
In view of the surrender of original Patent No. [1] and the granting of Reissue Patent No. [2] which issued on [3], all subsequent proceedings in this reexamination will be based on the reissue patent claims.
¶ 22.06 Examiner’s Amendment Accompanying Notice of Intent To Issue Ex Parte Reexamination Certificate
An examiner’s amendment to the record appears below. The changes made by this examiner’s amendment will be reflected in the reexamination certificate to issue in due course.
[1]
¶ 22.07 Litigation Reminder (Patent Owner Request or Director Ordered Reexamination)
The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent No. [1] throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282 and 2286.
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Examiner Note:
This form paragraph is to be used when granting an ex parte reexamination request filed by a patent owner and in the first action in a Director Ordered reexamination or reexamination ordered under 35 U.S.C. 257.
¶ 22.08 Litigation Reminder (Third Party Requester)
The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent No. [1] throughout the course of this reexamination proceeding. The third party requester is also reminded of the ability to similarly apprise the Office of any such activity or proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282 and 2286.
Examiner Note:
This form paragraph is to be used when granting an ex parte reexamination request filed by a third party requester.
¶ 22.09 Ex Parte Reexamination - Action Is Final
THIS ACTION IS MADE FINAL.
A shortened statutory period for response to this action is set to expire [1] from the mailing date of this action.
Extensions of time under 37 CFR 1.136(a) do not apply in reexamination proceedings. The provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(a), it is required that reexamination proceedings “will be conducted with special dispatch within the Office.”
Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c) . A request for extension of time must specify the requested period of extension and it must be accompanied by the petition fee set forth in 37 CFR 1.17(g). Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request will not effect any extension of time. A request for an extension of time in a third party requested ex parte reexamination will be granted only for sufficient cause, and for a reasonable time specified. Any request for extension in a patent owner requested ex parte reexamination (including reexamination ordered under 35 U.S.C. 257) for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months will not effect the extension. The time for taking action in a patent owner requested ex parte reexamination will not be extended for more than two months from the time period set in the Office action
in the absence of sufficient cause or for more than a reasonable time.
The filing of a timely first response to this final rejection will be construed as including a request to extend the shortened statutory period for an additional two months. In no event, however, will the statutory period for response expire later than SIX MONTHS from the mailing date of the final action. See MPEP § 2265.
Examiner Note:
1. This form paragraph may be used only in reexamination proceedings.
2. In bracket 1, insert the appropriate period for response, which is normally TWO (2) MONTHS.
¶ 22.10 Ex Parte Reexamination - Action Is Final, Necessitated by Amendment
Patent owner’s amendment filed [1] necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
A shortened statutory period for response to this action is set to expire [2] from the mailing date of this action.
Extensions of time under 37 CFR 1.136(a) do not apply in reexamination proceedings. The provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(a), it is required that reexamination proceedings “will be conducted with special dispatch within the Office.”
Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c). A request for extension of time must specify the requested period of extension and it must be accompanied by the petition fee set forth in 37 CFR 1.17(g). Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request will not effect any extension of time. A request for an extension of time in a third party requested ex parte reexamination will be granted only for sufficient cause, and for a reasonable time specified. Any request for extension in a patent owner requested ex parte reexamination (including reexamination ordered under 35 U.S.C. 257) for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months will not effect the extension. The time for taking action in a patent owner requested ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.
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The filing of a timely first response to this final rejection will be construed as including a request to extend the shortened statutory period for an additional two months. In no event, however, will the statutory period for response expire later than SIX MONTHS from the mailing date of the final action. See MPEP § 2265.
Examiner Note:
1. This form paragraph may be used only in reexamination proceedings.
2. In bracket 1, insert filing date of amendment.
3. In bracket 2, insert the appropriate period for response, which is normally TWO (2) MONTHS.
4. As with all other Office correspondence on the merits in a reexamination proceeding, the final Office action must be signed by a primary examiner.
¶ 22.11 Rejection, 35 U.S.C. 305, Claim Enlarges Scope of Patent - Ex Parte Reexamination
Claim [1] rejected under 35 U.S.C. 305 as enlarging the scope of the claim(s) of the patent being reexamined. In 35 U.S.C. 305, it is stated that “[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding....” A claim presented in a reexamination “enlarges the scope” of the patent claim(s) where the claim is broader than any claim of the patent. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect, even though it may be narrower in other respects.
[2]
Examiner Note:
The claim limitations which are considered to broaden the scope should be identified and explained in bracket 2. See MPEP § 2258.
¶ 22.12 Amendments Proposed in a Reexamination - 37 CFR 1.530(d)-(j)
Patent owner is notified that any proposed amendment to the specification and/or claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be formally presented pursuant to 37 CFR 1.52(a) and (b), and must contain any fees required by 37 CFR 1.20(c).
Examiner Note:
This paragraph may be used in the order granting reexamination and/or in the first Office action to advise patent owner of the proper manner of making amendments in a reexamination proceeding.
¶ 22.13 Improper Amendment in an Ex Parte Reexamination - 37 CFR 1.530(d)-(j)
The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.530(d)-(j), which sets forth the manner of making amendments in reexamination proceedings. A supplemental paper correctly proposing amendments in the present ex parte reexamination proceeding is required.
A shortened statutory period for response to this letter is set to expire [3] from the mailing date of this letter. If patent owner fails to timely correct this informality, the amendment will be held not to be an appropriate response, prosecution of the present ex parte reexamination proceeding will be terminated, and a reexamination certificate will issue. 37 CFR 1.550(d).
Examiner Note:
1. This paragraph may be used for any 37 CFR 1.530(d)-(j) informality as to a proposed amendment submitted in a reexamination proceeding prior to final rejection. After final rejection, the amendment should not be entered and patent owner informed of such in an advisory Office action using Form PTOL 467.
2. In bracket 3, if the reexamination was requested by a third party requester, the examiner should insert “ONE MONTH or thirty days, whichever is longer”. If the reexamination was requested by the patent owner, if the reexamination was ordered under 35 U.S.C. 257, or if it is a Director ordered reexamination, the examiner should insert “TWO MONTHS.”
¶ 22.14 Submission Not Fully Responsive to Non-Final Office Action - Ex Parte Reexamination
The communication filed on [1] is not fully responsive to the prior Office action. [2]. The response appears to be bona fide, but through an apparent oversight or inadvertence, consideration of some matter or compliance with some requirement has been omitted. Patent owner is required to deal with the omission to thereby provide a full response to the prior Office action.
A shortened statutory period for response to this letter is set to expire [3] from the mailing date of this letter. If patent owner fails to timely deal with the omission and thereby provide a full response to the prior Office action, prosecution of the present reexamination proceeding will be terminated. 37 CFR 1.550(d).
Examiner Note:
1. In bracket 2, the examiner should explain the nature of the omitted point necessary to complete the response, i.e., what part of the Office action was not responded to. The examiner should also make it clear what is needed to deal with the omitted point.
2. In bracket 3, if the reexamination was requested by a third party requester, the examiner should insert “ONE MONTH or thirty days, whichever is longer”. If the reexamination was requested by the patent owner, if the reexamination was ordered under 35 U.S.C. 257, or if it is a Director-ordered reexamination, the examiner should insert “TWO MONTHS”.
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3. This paragraph may be used for a patent owner communication that is not completely responsive to the outstanding (i.e., prior) Office action. See MPEP § 2266.01.
4. This practice does not apply where there has been a deliberate omission of some necessary part of a complete response.
5. This paragraph is only used for a response made prior to final rejection. After final rejection, an advisory Office action and Form PTOL 467 should be used, and the patent owner informed of any non-entry of the amendment.
¶ 22.15 Lack of Service - 37 CFR 1.550(f)
The submission filed on [1] is defective because it appears that the submission was not served on the [2]. After the filing of a request for reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party (or parties where two or more third party requester proceedings are merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248. See 37 CFR 1.550(f).
It is required that service of the submission be made, and a certificate of service be provided to the Office within a shortened statutory period of ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If service of the submission is not timely made, the submission may be denied consideration.
Examiner Note:
1. This paragraph may be used where a submission to the Office was not served as required in a third party requester reexamination proceeding.
2. In bracket 2, insert --patent owner-- or --third party requester--, whichever is appropriate.
¶ 22.16 Reasons For Patentability and/or Confirmation
STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
The following is an examiner’s statement of reasons for patentability and/or confirmation of the claims found patentable in this reexamination proceeding: [1]
Any comments considered necessary by PATENT OWNER regarding the above statement must be submitted promptly to avoid processing delays. Such submission by the patent owner should be labeled: “Comments on Statement of Reasons for Patentability and/or Confirmation” and will be placed in the reexamination file.
Examiner Note:
This form paragraph may be used as an attachment to the Notice of Intent to Issue Ex Parte Reexamination Certificate, PTOL-469 (item number 2).
¶ 22.20 Claims Held Invalid By Court, No Longer Being Reexamined
Claims [1] of the [2] patent are not being reexamined in view of the final decision of [3]. Claim(s) [1] was/were held invalid/unenforceable by the [4].
Examiner Note:
1. In bracket 1, insert the claim(s) held invalid.
2. In bracket 2, insert the patentee (e.g., Rosenthal, J. Doe et al).
3. In bracket 3, insert the decision (e.g., ABC Corp. v. Smith, 888 F. 3d 88, 999 USPQ2d 99 (Fed. Cir. 1999) or XYZ Corp. v. Jones, 888 F. Supp. 2d 88, 999 USPQ2d 1024 (N.D. Cal. 1999)).
4. In bracket 4, insert the name of the court (e.g., the Court of Appeals for the Federal Circuit, or the Federal District Court).
¶ 22.73 Correspondence and Inquiry as to Office Actions
All correspondence relating to this ex parte reexamination proceeding should be directed:
By EFS: Registered users may submit via the electronic filing s y s t e m E F S - W e b , a t https://efs.uspto.gov/efile/myportal/efs-registered.
By Mail to: Mail Stop Ex Parte Reexam
Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date
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of transmission, which is prior to the expiration of the set period of time in the Office action.
Any inquiry concerning this communication should be directed to [1] at telephone number [2].
Examiner Note:
1. This form paragraph is used at the end of ex parte reexamination communications.
2. In bracket 1, insert the name of the examiner having charge of the proceeding.
3. In bracket 2, insert the examiner’s telephone number.
2300 Form Paragraphs 23.01 - 23.19
¶ 23.01 Request for Interference Premature; Examination Not Completed
The request for interference filed [1] is acknowledged. However, examination of this application has not been completed as required by 37 CFR 41.102(a). Consideration of a potential interference is premature. See MPEP § 2303.
¶ 23.02 Ex Parte Prosecution Is Resumed
Interference No. [1] has been terminated by a decision [2] to applicant. Ex parte prosecution is resumed.
Examiner Note:
1. In bracket 1, insert the interference number.
2. In bracket 2, insert whether favorable or unfavorable.
¶ 23.04 Requiring Applicant to Add Claim to Provoke Interference
The following allowable claim from [1] is required to be added for the purpose of an interference:
[2]
The claim must be copied exactly.
Applicant is given TWO MONTHS from the mailing date of this communication to add the claim. Refusal to add a required claim will operate as a concession of priority for the subject matter of the required claim, but will not result in abandonment of this application. See 37 CFR 41.202(c) and MPEP § 2304.04(b). EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a). If the interference would be with a patent, applicant must also comply with 37 CFR 41.202(a)(2) to (a)(6).
Examiner Note:
1. In bracket 1, insert the published application number if the claim is an allowed claim from a U.S. application publication or the patent number if the claim is from a U.S. patent.
2. In bracket 2, insert the claim which applicant is required to add to provoke an interference.
¶ 23.06 Applicant Suggesting an Interference
Applicant has suggested an interference pursuant to 37 CFR 41.202(a) in a communication filed [1].
Examiner Note:
1. Use this form paragraph if applicant has suggested an interference under 37 CFR 41.202(a) and applicant has failed to comply with one or more of paragraphs (a)(1) to (a)(6) of 37 CFR 41.202.
2. In bracket 1, insert the date of applicant’s communication.
3. This form paragraph must be followed by one or more of form paragraphs 23.06.01 to 23.06.03 and end with form paragraph 23.06.04.
¶ 23.06.01 Failure to Identify the Other Application or Patent
Applicant failed to provide sufficient information to identify the application or patent with which the applicant seeks an interference. See 37 CFR 41.202(a)(1) and MPEP § 2304.02(a).
¶ 23.06.02 Failure to Identify the Counts and Corresponding Claims
Applicant failed to (1) identify all claims the applicant believes interfere, and/or (2) propose one or more counts, and/or (3) show how the claims correspond to one or more counts. See 37 CFR 41.202(a)(2) and MPEP § 2304.02(b).
¶ 23.06.03 Failure to Provide Claim Chart Comparing At Least One Claim
Applicant failed to provide a claim chart comparing at least one claim of each party corresponding to the count. See 37 CFR 41.202(a)(3) and MPEP § 2304.02(c).
¶ 23.06.04 Failure to Explain in Detail Why Applicant Will Prevail on Priority
Applicant failed to provide a detailed explanation as to why applicant will prevail on priority. See 37 CFR 41.202(a)(4), (a)(6), (d) and MPEP § 2304.02(c).
¶ 23.06.05 ClaimAdded/Amended; Failure to Provide Claim Chart Showing Written Description
Claim [1] has been added or amended in a communication filed on [2] to provoke an interference. Applicant failed to provide a claim chart showing the written description for each claim in the applicant’s specification. See 37 CFR 41.202(a)(5) and MPEP § 2304.02(d).
¶ 23.06.06 Time Period for Reply
Applicant is given TWO MONTHS from the mailing date of this communication to correct the deficiency(ies).
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EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).
¶ 23.14 Claims Not Copied Within OneYear of Patent Issue Date
Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(1) as not being made prior to one year from the date on which U.S. Patent No. [2] was granted. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.
¶ 23.14.01 Claims Not Copied Within One Year Of Application Publication Date
Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(2) as not being made prior to one year from the date on which [2] was published under 35 U.S.C. 122(b). See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.
Examiner Note:
1. In bracket 2, insert the publication number of the published application.
2. This form paragraph should only be used if the application being examined was filed after the publication date of the published application.
¶ 23.19 Foreign Priority Not Substantiated
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action, 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
2400 [Reserved]
There are currently no form paragraphs numbered “24.xx....”
2500 [Reserved]
There are currently no form paragraphs numbered “25.xx....”
2600 Form Paragraphs 26.01 - 26.80
¶ 26.01 Reasonable likelihood established
The present request for inter partes reexamination establishes a reasonable likelihood that requester will prevail with respect to claim [1] of United States Patent Number [2].
Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes reexamination proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c) requires that inter partes reexamination proceedings “will be conducted with special dispatch” (37 CFR 1.937). Patent owner extensions of time in inter partes reexamination proceedings are provided for in 37 CFR 1.956. Extensions of time are not available for third party requester comments, because a comment period of 30 days from service of patent owner’s response is set by statute. 35 U.S.C. 314(b)(2).
¶ 26.02 No reasonable likelihood established
For the reasons set forth below, the present request for inter partes reexamination fails to establish a reasonable likelihood that requester will prevail with respect to at least one of the challenged claims of United States Patent Number [1].
¶ 26.03 Issue Not Within Scope of Inter Partes Reexamination
An issue has been raised in the present reexamination proceeding that is not within the scope of inter partes reexamination proceedings. [1]. This issue will not be considered in the present proceeding. 37 CFR 1.906(c).
Examiner Note:
1. In bracket 1, identify the issues.
2. This paragraph may be used either when the patent owner or the third party requester raises issues such as (but not limited to) public use or on sale, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.
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¶ 26.03.01 Rejection, 35 U.S.C. 314(a), Claim Enlarges Scope of Patent
Claim [1] rejected under 35 U.S.C. 314(a) as enlarging the scope of the claims of the patent being reexamined. 35 U.S.C. 314(a) states that “no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted” in an inter partes reexamination proceeding. A claim presented in a
reexamination “enlarges the scope” of the patent claims where the claim is broader than the claims of the patent. A claim is broadened if it is broader in any one respect, even though it may be narrower in other respects. [2].
Examiner Note:
The claim limitations which are considered to broaden the scope should be identified and explained in bracket 2. See MPEP § 2658.
¶ 26.04 First Action Not Mailed With Order
An Office action on the merits does not accompany this order for inter partes reexamination. An Office action on the merits will be provided in due course.
¶ 26.05 Papers To Be Submitted in Response to Action
In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidence of patentability, such documents must be submitted in response to this Office action. Submissions after the next Office action, which is intended to be an Action Closing Prosecution (ACP), will be governed by 37 CFR 1.116(b) and (d), which will be strictly enforced.
¶ 26.05.01 Improper Amendment in an Inter Partes Reexamination - 37 CFR 1.530(d)-(j)
The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.530(d)-(j), which sets forth the manner of making amendments in reexamination proceedings. A supplemental paper correctly proposing amendments in the present inter partes reexamination proceeding is required.
A shortened statutory period for response to this letter is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If the patent owner fails to timely correct this informality, the amendment will be held not to be an appropriate response, and the consequences set forth in 37 CFR 1.957(b) or (c) will result. See MPEP § 2666.10
Examiner Note:
This paragraph may be used for any 37 CFR 1.530(d)-(j) informality as to a proposed amendment submitted in a reexamination proceeding.
¶ 26.06 Submission Not Fully Responsive to Office Action
The communication filed on [1] is not fully responsive to the prior Office action. [2]. The response appears to be bona fide, but through an apparent oversight or inadvertence, consideration
of some matter or compliance with some requirement has been omitted. Patent owner is required to supply the omission or correction to thereby provide a full response to the prior Office action.
A shortened statutory period for response to this letter is set to expire (a) ONE MONTH, or THIRTY DAYS (whichever is longer), from the mailing date of this letter, or (b) after the due date for response to the last Office action, whichever of (a) or (b) is longer. THE PERIOD FOR RESPONSE SET IN THIS LETTER MAY BE EXTENDED UNDER 37 CFR 1.956.
If patent owner fails to timely supply the omission or correction and thereby provide a full response to the prior Office action, the consequences set forth in 37 CFR 1.957(b) or (c) will result. See MPEP § 2666.10.
Examiner Note:
1. In bracket 2, the examiner should explain the nature of the omitted point necessary to complete the response, i.e., what part of the Office action was not responded to. The examiner should also clearly indicate what is needed to correct the omission.
2. This paragraph may be used for a patent owner communication that is not completely responsive to the outstanding (i.e., prior) Office action. See MPEP § 2666.30.
3. This practice does not apply where there has been a deliberate omission of some necessary part of a complete response. See MPEP § 2666.30.
¶ 26.07 Action Closing Prosecution
This is an ACTION CLOSING PROSECUTION (ACP); see MPEP § 2671.02.
(1) Pursuant to 37 CFR 1.951(a), the patent owner may once file written comments limited to the issues raised in the reexamination proceeding and/or present a proposed amendment to the claims which amendment will be subject to the criteria of 37 CFR 1.116 as to whether it shall be entered and considered. Such comments and/or proposed amendments must be filed within a time period of 30 days or one month, whichever is longer, from the mailing date of this action. Where the patent owner files such comments and/or a proposed amendment, the third party requester may once file comments under 37 CFR 1.951(b) responding to the patent owner’s submission within 30 days from the date of service of the patent owner’s submission on the third party requester
(2) If the patent owner does not timely file comments and/or a proposed amendment pursuant to 37 CFR 1.951(a), then the third party requester is precluded from filing comments under 37 CFR 1.951(b).
(3) Appeal cannot be taken from this action, since it is not a final Office action.
¶ 26.08 Right of Appeal Notice
This is a RIGHT OF APPEAL NOTICE (RAN); see MPEP § 2673.02 and § 2674. The decision in this Office action as to the patentability or unpatentability of any original patent claim,
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any proposed amended claim and any new claim in this proceeding is a FINAL DECISION.
No amendment can be made in response to the Right of Appeal Notice in an inter partes reexamination. 37 CFR 1.953(c). Further, no affidavit or other evidence can be submitted in an inter partes reexamination proceeding after the right of appeal notice, except as provided in 37 CFR 1.981 or as permitted by 37 CFR 41.77(b)(1). 37 CFR 1.116(f).
Each party has a thirty-day or one-month time period, whichever is longer, to file a notice of appeal. The patent owner may appeal to the Board with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent by filing a notice of appeal and paying the fee set forth in 37 CFR 41.20(b)(1). The third party requester may appeal to the Board with respect to any decision favorable to the patentability of any original or proposed amended or new claim of the patent by filing a notice of appeal and paying the fee set forth in 37 CFR 41.20(b)(1).
In addition, a patent owner who has not filed a notice of appeal may file a notice of cross appeal within fourteen days of service of a third party requester’s timely filed notice of appeal and pay the fee set forth in 37 CFR 41.20(b)(1). A third party requester who has not filed a notice of appeal may file a notice of cross appeal within fourteen days of service of a patent owner’s timely filed notice of appeal and pay the fee set forth in 37 CFR 41.20(b)(1).
Any appeal in this proceeding must identify the claim(s) appealed, and must be signed by the patent owner (for a patent owner appeal) or the third party requester (for a third party requester appeal), or their duly authorized attorney or agent.
Any party that does not file a timely notice of appeal or a timely notice of cross appeal will lose the right to appeal from any decision adverse to that party, but will not lose the right to file a respondent brief and fee where it is appropriate for that party to do so. If no party files a timely appeal, the reexamination prosecution will be terminated, and the Director will proceed to issue and publish a certificate under 37 CFR 1.997 in accordance with this Office action.
¶ 26.67 No Receipt of Rebuttal Brief(s)
Appellant(s) was given a period of one month from the mailing date of the examiner’s answer within which to file a rebuttal brief in response to the examiner’s answer. No rebuttal brief has been received within that time period. Accordingly, the reexamination proceeding is being forwarded to the Board for decision on the appeal(s).
Prosecution remains closed. Any further reply/comments by any party will not be considered, and may be returned to the party that submitted it.
__________________________
Central Reexamination Unit
¶ 26.67.01 Periods for Seeking Court Review or Rehearing Have Lapsed
The periods for seeking court review of, or a rehearing of, the decision of the Board rendered [1] have expired and no further action has been taken by any party to the appeal. Accordingly, the appeal in this reexamination proceeding is considered terminated; see 37 CFR 1.979(b). The present Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) is issued in accordance with MPEP § 2687 in order to terminate the present reexamination prosecution.
Examiner Note:
In bracket 1, enter the date of the Board decision.
¶ 26.68 Lack of Service in inter partes examination-37 CFR 1.903
The submission filed [1] is defective because it appears that the submission was not served on [2]. After the filing of a request for inter partes reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party (or parties where two third party requester proceedings are merged) in the inter partes reexamination proceeding in the manner provided in 37 CFR 1.248. See 37 CFR 1.903.
It is required that service of the submission be made, and a certificate of service be provided to the Office, within ONE MONTH from the date of this letter or within the time remaining in the response period of the last Office action (if applicable), whichever is longer.
Examiner Note:
1. This paragraph may be used where a submission to the Office was not served as required in an inter partes reexamination proceeding.
2. In bracket 2, insert “patent owner” or “third party requester,” whichever is appropriate.
¶ 26.69 Examiner’s Amendment Accompanying Notice of Intent to Issue Reexamination Certificate
An examiner’s amendment to the record appears below. The changes made by this examiner’s amendment will be reflected in the reexamination certificate to issue in due course.
[1]
¶ 26.70 Reasons for Patentability and/or Confirmation in Inter Partes Reexamination
STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
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The following is an examiner’s statement of reasons for patentability and/or confirmation of the claims found patentable in this reexamination proceeding: [1]
Any comments considered necessary by the PATENT OWNER regarding the above statement must be submitted promptly to avoid processing delays. Such submission by the patent owner should be labeled: “Comments on Statement of Reasons for Patentability and/or Confirmation” and will be placed in the reexamination file.
Examiner Note:
This form paragraph may be used as an attachment to the Notice of Intent to Issue Inter Partes Reexamination Certificate, PTOL-2068 (item number 3).
¶ 26.73 Correspondence and Inquiry as to Office Actions
All correspondence relating to this inter partes reexamination proceeding should be directed:
By EFS: Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/ myportal/efs-registered.
By Mail to: Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance
with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.
Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
Examiner Note:
1. This form paragraph is used at the end of inter partes reexamination communications.
2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.
¶ 26.75 Time Period for Response under 37 CFR 41.77(e)
Periods for response to this determination are identified in 37 CFR 41.77(e). Following expiration of those time periods, the proceeding will be returned to the Board for reconsideration under 37 CFR 41.77(f). Note that under 37 CFR 41.77(e), patent owner and third party requester responsive comments are due one month from the mailing date of this determination, and both third party requester and patent owner replies to those comments are then due one month from date of service of the comments. These time periods cannot be extended. See 37 CFR 41.77(g).
¶ 26.80 Claims Held Invalid by Court, No Longer Being Reexamined
Claims [1] of the [2] patent are not being reexamined in view of the final decision of [3]. Claims [1] were held invalid by the [4].
Examiner Note:
1. In bracket 1, insert the claims held invalid.
2. In bracket 2, insert the patentee (e.g., Rosenthal, J. Doe et al).
3. In bracket 3, insert the decision (e.g., ABC Corp. v. John Doe, 888 F. 3d 88, 999 USPQ2d 99 (Fed. Cir. 1999) or XYZ Corp. v. Jones, 888 F. Supp. 2d 88, 999 USPQ2d 1024 (N.D. Cal. 1999)).
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4. In bracket 4, insert the name of the court (e.g., the Court of Appeals for the Federal Circuit, or the Federal District Court).
2700 [Reserved]
There are currently no form paragraphs numbered “27.xx....”
2800 Form Paragraphs 28.01 - 28.04
¶ 28.01 Header for Statement of Reasons for Substantial New Question of Patentability Determination
REASONS FOR SUBSTANTIAL NEW QUESTION OF PATENTABILITY DETERMINATION
¶ 28.02 Reasons for Finding No Substantial New Question of Patentability
[1], as presented in the request, does not raise a substantial new question of patentability because [2].
Examiner Note:
1. In bracket 1, insert the name or description, as appropriate, for the item of information. For example, a patent or patent application publication may be designated using the name of the patentee or first-named inventor, such as “the Jones patent,” “the Jones patent application publication,” or the number of the patent or patent application publication. A non-patent literature document may be designated by the name of the author, such as the “the Sherwood publication” and the date of the publication, if desired. A sales receipt or invoice should be designated using the date of the receipt, and any appropriate descriptive information, such as “the March 11, 2011, BigBoxStore sales receipt,” or “the April 1, 2011 XYZ Corporation invoice.” An affidavit or declaration should be designated using the name of the declarant and the date of the affidavit or declaration, such as “the Schmidt declaration dated January 20, 2012.” A transcript of an audio or video recording should be designated using the title of the recording and the date of the recording, if applicable, such as “the transcript of the September 16, 2012 XYZ Corporation Marketing Video.” A discussion within the body of the request regarding a potential issue under 35 U.S.C. 101 may be designated, for example, as “the discussion on pages 7-11 of the request regarding a potential issue under 35 U.S.C. 101.”
2. In bracket 2, insert the reasons for the determination that the item of information does not raise a substantial new question of patentability.
¶ 28.03 Reasons for Finding A Substantial New Question of Patentability
[1], as presented in the request, raises a substantial new question of patentability affecting patent claim(s) [2] because [3].
Examiner Note:
1. In bracket 1, insert the name or description, as appropriate, for the item of information. For example, a patent or patent
application publication may be designated using the name of the patentee or first-named inventor, such as “the Jones patent,” “the Jones patent application publication,” or the number of the patent or patent application publication. A non-patent literature document may be designated by the name of the author, such as the “the Sherwood publication” and the date of the publication, if desired. A sales receipt or invoice should be designated using the date of the receipt, and any appropriate descriptive information, such as“ the March 11, 2011, BigBoxStore sales receipt,” or “the April 1, 2011, XYZ Corporation invoice.” An affidavit or declaration should be designated using the name of the declarant and the date of the affidavit or declaration, such as “the Schmidt declaration dated January 20, 2012.” A transcript of an audio or video recording should be designated using the title of the recording and the date of the recording, if applicable, such as “the transcript of the September 16, 2012, XYZ Corporation Marketing Video.” A discussion within the body of the request regarding a potential issue under 35 U.S.C. 101 may be designated, for example, as “the discussion on pages 7-11 of the request regarding a potential issue under 35 U.S.C. 101.”
2. In bracket 2, insert the claims for which a substantial new question of patentability has been raised.
3. In bracket 3, insert the reasons for the determination that the item of information raises a substantial new question of patentability (SNQ). If a SNQ is found for only a portion of the claims identified with respect to the item of information, then an additional statement may be included explaining why a SNQ was found with respect to some of the identified claims, and why a SNQ was not found with respect to the remainder of the identified claims. For example, if the patent owner requests supplemental examination of claims 1-10 in view of the Schmidt patent, and the examiner finds that a substantial new question of patentability affecting only patent claims 1-5 is raised by that item of information, then the form paragraph may be completed by, for example, stating “The Schmidt patent, as presented in the request, raises a substantial new question of patentability affecting patent claims 1-5 because [provide reasons]. However, the Schmidt patent, as presented in the request, does not raise a substantial new question of patentability affecting patent claims 6-10 because [provide reasons].”
¶ 28.04 Reexamination Ordered Pursuant to 35 U.S.C. 257
Reexamination Ordered Pursuant to 35 U.S.C. 257
The supplemental examination proceeding, filed on [1], concluded with the issuance of the supplemental examination certificate on [2]. The certificate indicated that one or more of the items of information submitted as part of the request for supplemental examination raises a substantial new question of patentability. See the Reasons for Substantial New Question of Patentability Determination in the file of this proceeding.
Accordingly, ex parte reexamination of claim(s) [3] of U.S. Patent No. [4] is ordered. See 35 U.S.C. 257(b) and 37 CFR 1.625(b). This ex parte reexamination proceeding is hereby initiated by the mailing of this order. Ex parte reexamination under 35 U.S.C. 257 will be conducted in accordance with 37 CFR 1.530 through 1.570, which govern ex parte reexamination, subject to the exceptions enumerated in 37 CFR 1.625(d), and,
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in addition, to the exception that a patent owner’s statement, including any amendment, under 37 CFR 1.530(a) -(c) may not be filed. See 35 U.S.C. 257(b). For this reason, no amendment in an ex parte reexamination proceeding ordered under 35 U.S.C. 257 may be filed until after the mailing of a first Office action on the merits (which appears below). This reexamination proceeding has been assigned to the art unit listed at the top of the cover page of this action. All future correspondence should be directed to the assigned art unit and should be identified by the control number, which is also listed at the top of the cover page of this action, and which is identical to the control number assigned to the now-concluded supplemental examination proceeding.
A first Office action on the merits appears below.
Examiner Note:
1. In brackets 1 and 2, insert the filing date of the supplemental examination proceeding and the issue date of the supplemental examination certificate, respectively, as they appear on the certificate.
2. In bracket 3, list the claims for which a substantial new question of patentability was found, per the Statement of Reasons for Substantial New Question of Patentability Determination.
3. In bracket 4, list the patent number as shown on the supplemental examination certificate.
2900 Form Paragraphs 29.10 - 29.27
¶ 29.10 Reproductions Objected to,Amended Reproductions Do Not Comply With Formal Requirements
The amended reproductions received on [1] are objected to because [2]. See 37 CFR 1.1026.
Examiner Note:
1. Use this form paragraph in an international design application to object to amended reproductions that fail to comply with the formal requirements for reproductions set forth in Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement and Part Four of the Administrative Instructions thereunder. Do not use this form paragraph to object to reproductions that were contained in the international registration published by the International Bureau.
2. In bracket 1, insert the date the amended reproductions were received.
3. In bracket 2, insert the reason for the objection, for example, --the reproductions are not of a quality permitting all the details of the industrial design to be clearly distinguished-- or --the reproductions contain explanatory text or legends--.
4. Follow this form paragraph with form paragraph 15.05.04.
¶ 29.11 Reproductions Objected to, Design Not Fully Disclosed in Reproductions
The reproductions are objected to for failing to fully disclose the industrial design because [1]. See 37 CFR 1.1026 and Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.
Examiner Note:
1. Use this form paragraph in an international design application where the reproductions are not sufficient to fully disclose the industrial design, but such failure does not render the claimed invention non-enabled and/or indefinite under 35 U.S.C. 112. This may occur, for example, where there are minor inconsistencies in the illustration of the design among the different views of the design. Where the failure to fully disclose the industrial design in the reproductions renders the claimed invention non-enabled and/or indefinite under 35 U.S.C. 112, use form paragraph 15.21 or 15.22, as appropriate, instead of this form paragraph.
2. In bracket 1, explain why the reproductions are not sufficient to fully disclose the industrial design.
3. Follow this form paragraph with form paragraph 15.05.04.
¶ 29.20 Matter Not Forming Part of Design (International Design Application)
Matter, such as environmental structure or portions of the "article," which is shown in a reproduction but for which protection is not sought may be indicated by statement in the description and/or by means of dotted or broken lines or coloring in the reproduction. See 37 CFR 1.1026 and Hague Agreement Administrative Instruction 403.
Examiner Note:
Use this form paragraph only in an international design application.
¶ 29.21 Rejection, 35 U.S.C. 112(b) - Undescribed Broken Lines (International Design Application)
The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because the reproductions include, in figure(s) [1], broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
If the broken line(s) represent portions of the article or environmental structure for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132):
--The broken line showing of [2] is for the purpose of illustrating [3] and forms no part of the claimed design.--
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Examiner Note:
1. Use this form paragraph in an international design application where the reproductions include broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
2. In bracket 1, insert the number(s) of the figure(s) containing the broken lines.
3. In bracket 2, insert name of structure.
4. In bracket 3, insert --portions of the “article”-- or --environmental structure--.
¶ 29.22 Description of Broken Lines Added by Examiner's Amendment (International Design Application)
The following sentence has been added to the specification immediately preceding the claim:
--The broken line showing of [1] is for the purpose of illustrating [2] and forms no part of the claimed design.--
Examiner Note:
1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of the broken lines.
2. In bracket 1, insert name of structure.
3. In bracket 2, insert --portions of the “article”-- or --environmental structure--.
¶ 29.23 Rejection, 35 U.S.C. 112(b) - Undescribed Broken Lines as Boundary of Design (International Design Application)
The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because the reproductions include, in figure(s) [1], broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
If the broken line(s) represent a boundary line for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132):
--The [2] broken line(s) define the bounds of the claimed design and form no part thereof.--
Examiner Note:
1. Use this form paragraph in an international design application where the reproductions include broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
2. In bracket 1, insert the number(s) of the figure(s) containing the broken lines.
3. In bracket 2, insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.
¶ 29.24 Description of Broken Lines as Boundary of Design Added by Examiner's Amendment (International Design Application)
The following sentence has been added to the specification immediately preceding the claim:
--The [1] broken line(s) define the bounds of the claimed design and form no part thereof.--
Examiner Note:
1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of the broken line(s).
2. In bracket 1, insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.
¶ 29.25 Rejection, 35 U.S.C. 112(b) - Unclear Use of Coloring (International Design Application)
The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because the reproductions include coloring, in figure(s) [1], that is not described in the specification, and the scope of the claimed design cannot be determined.
If the coloring identifies matter for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132 ):
--The portion of the design shown in the color [2] is for the purpose of illustrating [3] and forms no part of the claimed design.--
Examiner Note:
1. Use this form paragraph in an international design application where the reproductions include coloring that is not described in the specification, and the scope of the claimed design cannot be determined.
2. In bracket 1, insert the number(s) of the figure(s) containing the coloring.
3. In bracket 2, identify the color indicating the matter excluded from the claim.
4. In bracket 3, insert --portions of the “article”-- or --environmental structure--.
¶ 29.26 Description of Coloring Added by Examiner's Amendment (International Design Application)
The following sentence has been added to the specification immediately preceding the claim:
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--The portion of the design shown in the color [1] is for the purpose of illustrating [2] and forms no part of the claimed design.--
Examiner Note:
1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of color used in the reproductions.
2. In bracket 1, identify the color indicating the matter excluded from the claim.
3. In bracket 2, insert --portions of the “article”-- or --environmental structure--.
¶ 29.27 Suggestion To Overcome Rejection Under 35 U.S.C. 112(a) and (b) (International Design Application)
Applicant may indicate that protection is not sought for those portions of the reproductions which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by amending the reproductions to color those portions or convert those portions to broken lines and by amending the specification to include a statement that the portions of the [1] shown in broken lines form no part of the claimed design or a statement that the portions of the [1] shown by coloring form no part of the claimed design provided such amendments do not introduce new matter (see 35 U.S.C. 132 , 37 CFR 1.121 ).
Examiner Note:
Use this form paragraph only in an international design application.
2. In bracket 1, insert title of the article.
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